fledge capable of flying, from Middle English flegge, from Old English -flycge; akin to Old High German flucki capable of flying,
Old English flEogan to fly -- more at FLY
intransitive verb, of a young bird : to acquire the feathers necessary for flight or independent activity

Monday, October 19, 2009

Reason to "paws"...

Edit 22. Okt 2009: Chris, die liebe Chris, hat dies hier unten übersetzt und auf ihrem Blog gepostet. ((Chris))

There is a certain wolf, a big predator, who has found some small and weak prey. This wolf is howling intellectual property theft, when common sense tells us they've got jack, legally, to stand on. A sheep in wolfskin clothing.

This blogger has given a good overview in English of the issue at hand.

In a nutshell, Jack Wolfskin is a manufacturer of clothing, shoes and gear with an emphasis on outdoor recreation. This firm uses a representation of a gold wolf paw print on a black background as a company logo. Jack Wolfskin applied for and received registered trademark status for this image in Germany for apparel (and laundry detergent...whatever). I think that extends throughout the European Union. Jack Wolfskin is demanding that DaWanda sellers (the German Etsy equivalent) making anything textile-related--anything--with a paw print to cease and desist. That's right: DaWanda sellers. Those sellers that have made several items depicting paw prints have been sent in effect invoices of about $1500 to pay for all the trouble and expense Jack Wolfskin has had to go through to send them their cease and desist letters. I know some ladies, who have received such letters. Pretty scarey-looking things, let me tell you. If the sellers don't pony up, next step straight to court.

Let's start with a little 411 on trademarks: You can put a little ™ next to any little logo thingie or name you make up on your own. On my Mac, that's Option Key-2. That's your way of saying to the world, "Hey, everybody, I'm using this identifier to identify my stuff in commerce." A registered trademark (Option R on the Mac ®) is when you apply to the trademark office of your country to solidify this mark as yours exclusively within the commercial zone it regulates and for (and this is important) a particular category of goods. And the trademark office more often than not says, "No." My experience in the United States has been, that the hurdle is pretty high. You cannot register simple, common shapes and images, like plain hearts or stars. If you use a pumpkin or Christmas tree, it better be a very, very specific representation of a pumpkin or a Christmas tree. I have registered trademarks. They only apply to clothing. I suppose somebody could use the same marks and use them to identify completely unrelated products, tire jacks or foot powder, as long as the examining attorney does not see any chance of confusion in the marketplace. FYI: There are about 3,400 registered trademarks in the United States with paw prints and, for the most part, these firms do business just fine in this marketplace without much confusion for the consumer.

It appears Germany is a little stricter with the use of trademarks. Jack Wolfskin was by no means the first to use a paw print as an organizational identifier. There is a German newspaper "taz," which had been using a paw print for years before. Alas, they never registered the paw print trademark, because, well, it's a paw print. So, some years ago, Jack Wolfskin took the newspaper to court and now, well, the taz cannot use a paw print on shirts of other textiles. How outdoor equipment could be confused with a newspaper is beyond me, but greater minds than mine made the judgement.

What keeps going through my little head is, why? Why on earth would a global company go after home crafters? Are they that bored? As a firm in the worst economy since the 1930s, this is not a boring time. So, I did a little research on Jack Wolfskin.

Jack Wolfskin was founded in 1981 in Idstein/Taunus, a suburb community of Frankfurt am Main. The goal of many a good young entrepreneur is get in and get out. Sell the company, grab some gear from the warehouse and go live the good life. Jack Wolfskin was sold and became a subsidiary of Johnson Outdoor Inc., which is owned again by Johnson Wax. Not such a bad marriage, really. Johnson Outdoor Inc. is a firm with a focus on and culture in outdoor recreation. It's parentage of the product innovator Johnson Wax permitted development in new technologies and materials. Jack Wolfskin owns some nifty patents. In 2002, Jack Wolfskin was sold again to Bain Capital. Boston-based Bain Capital is just a private equity firm. That's the same year, Jack Wolfskin took the daily newspaper "taz" to town for using a pawprint in its paper's logo. Here we already see a change in focus from innovation to branding. Private equity, in a nutshell, means it's not about products--ever--it's about money--always. Private equity firms buy what they see to be undervalued assets and fix them up to sell again. It's sort of like flipping real estate. There's usually not a lot of love in these relationships. Bain investment bankers are more likely to be found in a limousine than on a mountain bike. And Bain did a nice job: For their 42 million Euro investment, they found a buyer in Russian Quadriga Capital for 93 million Euro. And, at the time, Jack Wolfskin was enjoying growth rates of 45% annually. Okay, then, Barclay Private Equity went ahead and bought Quadriga, so now Jack Wolfskin is with another private equity firm, which had to recently perform a debt recapitalization (that's like refinancing your mortgage). Long story: This wolf puppy is an investment vehicle only. Jack Wolfskin is pretty far removed from it's backpacking and bird-watching roots. Private equity firms understand three-piece-suit things like branding, and not so much lab-coat things like product development and innovation. Private equity guys prefer to spend time with Mad Men, rather than mad scientists or rad cyclists. They also prefer to traverse the loopholes and interpretations of laws than the footholds of a cliff face. Their job is to look for ways to improve their assets to make them attractive to buyers. So, among other things, brand strengthening with a batch of cease and desist letters to all the infringers in the apparel and sporting goods industry would be a pretty standard play from the private equity playbook. "Leveraging its strong brand" is what Barclay's has written for the future of the company.

But why DaWanda sellers? I'd like to look the judge in the eye that would think that a kitty cat paw print appliquéed on a pillow and sold to maybe 10 or 20 individuals would dilute the brand of Jack Wolfskin, a firm that had sales of about $227 million world wide in 2007. (Look through the little slide show here of the items that are accused of infringement). I'd like to know the name of any judge, who would think that a paw print--a very general definition of a paw print--would not be within the public domain (as opposed to, say, the Nike swoosh or the Milka purple cow, the tracks of carnivorous, quadrupedal mammals have been in the human cognizance since, frankly, human cognizance. Animal tracks show up in the Sanilac Petroglyphs in Michigan, the Twyfelfontein engravings in Namibia and wolves are depicted in the Ice Age Caves of Lascaux and Font-de-Gaume). I can't imagine anyone with one ounce of experience in intellectual property law who would say that any one entity can own the commercial use of all and any representations of a very common thing. Otherwise, following this logic, any motif would be permitted in commerce for but one organization only (hearts for Hostess, apples for Apple Computer, any stripes for Adidas, all lions for MGM and so forth). That is market foreclosure of an unprecedented sort with which, I think, even the competition-averse German regulatory bodies would have to disagree. Have to. Companies like market foreclosure. Consumers, not so much. So it doesn't make sense. Unless the slim hope of collecting a thousand dollars here and there is part of the business plan. Hey, Jack, if that's the case, seriously: Get a better business plan.

So why, Jack? If you ain't got jack? Are a bunch of hausfraus with DaWanda shops some kind of easy prey for you? Why not hunt bigger game? Will this increase brand recognition at all? Well, yes, it will. But it won't improve brand image: it will improve brand recognition among only those you have threatened and those of us who have taken offense. I'm certain this brand recognition will play out only negatively when we choose which snowboarding jacket to put under the Christmas tree this year. That has to be a pretty stupid PR move right before the holiday season (see the comment below from the owner of an IT company that had to destroy their Jack Wolfskin corporate swag after hearing from outraged employees and customers).

One reason, however, could be part of the mechanics of protecting trademarks. Whenever there is trademark infringement, the rights holder is obligated to go after the offenders. Otherwise, it could be ruled that, because a rights holder did not perform his due diligence to go after the infringers, the rights holder doesn't really care about protecting his property. It's akin to leaving your door wide open, witnessing robbers march through your house and take your tv and laptop without calling the cops. The robbers can say arguably, hey, this guy didn't want his stuff, so we took it. So, Jack Wolfskin needs to perform a little due diligence every once in awhile to protect its trademark. Which means going after, well, for starters, The Pink Panther, Iams pet foods, probably thousands of veteranarians and anyone else in the European Union with a paw print logo... It's a long list. And most of the people on that list would have the resources to fight and win this, because, like I said, it's a paw print. Face it, even just a couple thousand dollars in legal fees is too much for a home-based crafter, who very likely does not have any liability insurance. Easy prey.

So here's my suspicion: Jack Wolfskin, in Germany, successfully prevented the taz newspaper from ever selling anything with a paw print on it. Because the hundreds of DaWanda sellers will likely not take any action against the cease and desist, because they simply are intimidated and do not possess the resources, this will put Jack Wolfskin ipso facto in the right. And, as a result, Jack Wolfskin--get this--will have enough precedence to own exclusively the intellectual property use of paw print images in the European Union. Holy smokes.

Not following my logic? Again: If I yell, "You're a thief! That's mine. And you're a thief! That's mine," enough times and you don't do anything about it or deny that you are a thief, well, it's not just crying wolf. What it means is, you are a thief. But more importantly, through your lack of denial, whatever was "stolen" was in fact "mine". I think that is what Jack Wolfskin is after. They probably won't mind getting that $1500 check from you, but I'll bet they aren't exactly holding their breath. Jack Wolfskin just wants to add to its assets the exclusive right to any kind of paw print image. And this is how they are going about it. At the end of the day, they will have a file folder this thick of cease and desist notices with no one denying that the paw print is Jack Wolfskin's. Even the paw prints without claws. Even the paw prints that are pink. Even the kitty cat paw prints. Even the more stylized graphical paw prints. Once they have that file folder, there's not much holding them back from going after Iams and The Pink Panther and anyone else who uses a paw print. That's the bigger game. Imagine, if you will, because I have a trademark with a heart and the word "love" that I would own the exclusive right to all images of hearts and the word "love". I'd be pretty lucky. Valentine's Day would not only be my birthday--ca-ching!--it would be my pay day! I'd get a percentage of everything with a heart on it or else. Any kind of paw print image is an intellectual property asset that is probably worth hundreds of times the value of any of Jack Wolfskin's textile or tent patents. That's what the Barclay folks have to be after. It's a long shot. A really long shot. I mean, even Disney doesn't go so far as to forbid any mice whatsoever from showing up on apparel. Just a certain mouse with big black ears. But that taz ruling may have given Barclay the guts to go for it. Otherwise, it makes no sense. No sense at all.

And look here: This hasn't gone unnoticed stateside--Advertising Age.

And read what this commenter to the Advertising Age article wrote:

We are a German IT Company (ip-profis.de) our customers are mostly related to Linux, Web2.0 and Pirate Party. We bought Jack Wolfskin Jackets with our Logo on it for the whole Company and we give Jackets to good customers. Until Sunday we get more then hundret mails from our customers. We had to decide to destroy all Jack Wolfskin products and give advise our people that nobody gets in contact wearing Jack Wolfskin products. Also we have to send mail to our customers that we are very sorry and that we do not have any business cotact to Jack Wolfskin anymore because of what happened.

For our brand it was a desaster and i guess a lot of other companys which bought Jack Wolfskin Merchedaising Products have the same problem. Our Merchedaising Company also remarked why Jack WUlskin does not atac Shakira wich is a famous brand which indeed uses a similar Logo on Jackets and T-Shirts. http://www.shakira.com

Sorry for my bad English but i thought ich should write this to give a idea that this effects a lot of other companys.



nic [luzia pimpinella] said...

BRAVO! *chapeau*

and thank you, nancy...
nic :)

Chris said...

Thanks for all these background information !! I knew I could count on you :O)
Hope it's okay that I set a link to your report ...

XOXO, Chris

Amy Badskirt said...

I haven't mentioned it before, because I've been a bit of a lurker. I really love your educational posts.

I love how you give background information, historical accounts and explain the modern relevance of the issues you talk about. I know I'm often silent, but I am lurking and quietly contemplating the enormity of the issues you bring up. Thank you for sharing them with us.

katrina said...

got here through badskirt, and found a very interesting post. a similar discussion is going on regarding apply. they ARE trying to own the apple symbol worldwide.

seemownay said...

That is a great post. I linked you - thanks.

mooi hoor... said...

Love your story.
Once a journalist always a journalist ;) Well done!

Unknown said...

wow, thanks for your extensive research, nancy! you definitely have a point there. i'm just trying to wreck my brain about how we could help these people to stand up for themselves. I, for one, don't want to let jw get away with this!!
but how much fundraising would be needed to take it up against the mighty wolves...? yikes...!
Ok, thinking cap back on and a link to your report for starters...

Margina said...

Is there any possibility of collectively hiring one very good legal lawyer that is able to hopefully win the first lawsuit. After that it would be easy to win the following ones. Maybe with the help of fundraising all around the world the dawanda crafsters are able to hire such a person!
(I'm writing it here, because my German writing skills are worse than my English writing skills),

Greetings from the Netherlands,

*Sweet*Caroline* said...

Wonderful, Nancy!


Mussipitz said...

Great post, Nancy!!!

Hopefully Jack doesn't win this time...

Liebe Grüße


Lola Nova said...

Oh dear, just think of all the folks with paw print tattoos, and the paw prints 'The Buddha Cat' left in paint on our front porch.

Thank you for the well written and researched information. I will indeed pass it on.

Fledgling said...

@Andrea: My personal opinion, formed from my limited knowledge of U.S. trademark law (which does have treaties of reciprocity in this area with Germany, however), is that the JW logo is too far into the realm of public domain. Seriously: A paw print in one of the earliest motifs in human art. That JW could register the mark, gold on black with the gold frame, okay, that looks like a unique identifier enough to me. But that they had a ruling in their favor against the taz newspaper? Huh? That's a mystery to me.

I don't doubt that JW has to stomp out trademark piracy like so many cockroaches in the night. I imagine there are quite a few jackets with gold paw prints ("Jack Wolffin," anybody?) manufactured very likely in the very same third-party factories in China as their own goods are made. Teeny tiny Farbenmix knows first hand what is involved in catching these cockroaches. But I think the problem, because the logo is so close to the public domain, is of their own making. They needed a more differentiated identifier right from the get-go, something that doesn't yet exist in such a representation in normal association for the average consumer. What do I think of, when I see a certain swoosh? Shoes! What do I think of when I see a puppy dog paw print? A puppy dog! Wrong answer? Darnit. I should have thought of hiking boots designed in Frankfurt...? Um, well, okaaaaay...

For FUN, I'd like to whip up the creative talents of our community to offer JW an alternative logo. One that is much further from the public domain. I think the community is best served by communicating with the firm directly. Go all Kevin Kostner/Dances with Wolves on 'em. It is a consumer goods firm, after all. They are people like you and me and often possess common sense. Law firms, on the other hand, I'm not so sure about.

For reals, however, if this wolfbeast is going to bare his teeth and really go for the jugular, class action is the way to go. Class action law firms will take their pay from the winning judgement. Very little pay out ends up going to the members of the class. But that's not the point, is it? It's about taming the wolf.

willow and moo said...

You claim to be a hausfrau from Redondo Beach, but you are so much more. ;-) You always amaze me with your thorough and in-depth essays on these topics!

Thanks Nancy! I always like reading what you have to say.

Astridka said...

Liebe Nancy,
ich fand deine Analyse zu unserem Wolfsproblem hier in Deutschland grandios und habe in vielen Foren darauf hingewiesen. Bisher habe ich hier in deutschen Medien kaum so fundierte Hintergrundinformationen bekommen wie bei dir. Du bist nicht nur ein tolles Mitglied der "Nähkultur", sondern auch ein politisch- sachverständiger Mensch.
aus Cologne

Hannie said...

BIG APPLAUSE for you!! No Jack products for us here, pffff.

Gila said...

Thanks for the more complete summary than what I provided! :)

Some remarks: Iams owns the paw in the pet food class. So JW won't be able to produce pet food, but Iams cannot make merchandising/ shirts.

In Germany, you can register classes that you aren't even using yet - other countries expect a proof of product if you want to register a certain class. JW also owns the paw for detergent, by the way.

There is no real validity process when registering. People have a certain time frame in which they can complain. And they can later ask for deletion of registration. But you can register almost anything - and if no-one notices, you are in.

You are in because once you have the registration, you basically determine law without a court. Your cease & desist letter means that YOUR view of thing is right. You determine the value, the verdict, and the money to be paid. And the other party either pays up or takes you to court - which they need to pay for.

Which is another main point: We all have commercial liability insurance. But - no way to have cease & desist covered. By ANY insurance.

For the insurance company, any cease & desist is deemed your own fault, so they won't cover it. Which automatically creates unfair treatment of large vs small companis - small companies do not have lawyers on retainer or can even pay for the court proceedings up front, with only a slight chance of ever winning.

We'll see. I'll keep http://freiepfote.de up in the air, follow what happens next... And hope for a dramatic change in trademark and copyright law within Germany.

dickespaulinchen said...

Toller Artikel, vielen Dank!! Macht ja leider nicht wirklich viel Hoffnung...
LG, Katharina

Kunterbunt said...

Thanks for writing that very interesting report (I read the German translation).

Unknown said...
This comment has been removed by a blog administrator.
Unknown said...

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