MLB is urging itunes to pull team-related podcasts

DJnVa

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No league more to stop people from getting info on their teams than MLB.
 

Stevie1der

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The last update on that initial link indicate that MLB is attempting to get the pulled podcasts reinstated.
 
 
As we have done in the past, yesterday we notified Apple (see below) about certain podcasts on the iTunes Store whose titles and/or thumbnails include infringing uses of trademarks of Major League Baseball and certain Clubs. And, as we have done in the past, we asked Apple to have these trademarks removed from the podcast titles and thumbnails. Although we did not ask for or seek to have any podcast removed from the Store, it has come to our attention that Apple removed them. Given our many years of experience in notifying Apple about trademark issues on the Store, we trust that removing the podcasts was an oversight, and ask that you please look into this matter as soon as possible.
 
So basically either MLB requested some standard trademark enforcement and somebody at iTunes got overzealous, or MLB realized what an idiotic decision they made and are in full-on damage control.
 

Average Reds

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Stevie1der said:
So basically either MLB requested some standard trademark enforcement and somebody at iTunes got overzealous, or MLB realized what an idiotic decision they made and are in full-on damage control.
 
Seems pretty clear that this is what happened.
 

trekfan55

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So this is the equivalent of Disney asking day care centers and child friendly places to not use their images and characters in order to preserve their copyright?
 

SumnerH

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trekfan55 said:
So this is the equivalent of Disney asking day care centers and child friendly places to not use their images and characters in order to preserve their copyright?
 
Copyrights don't need to be defended to remain under their control.  This is all about trademarks.
 

trekfan55

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SumnerH said:
 
Copyrights don't need to be defended to remain under their control.  This is all about trademarks.
 
Sorry, so substitute trademarks with copyrights in my question then.
 

SumnerH

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Yeah, MLB can't let other people use their trademarks without risk of forfeiting them.  If they're clearly marked as MLB property it's a different story (hence why you often see disclaimers like "Boston Red Sox is a trademark of blah blah blah.")
 

lambolt

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SumnerH said:
Yeah, MLB can't let other people use their trademarks without risk of forfeiting them.  If they're clearly marked as MLB property it's a different story (hence why you often see disclaimers like "Boston Red Sox is a trademark of blah blah blah.")
I've seen this written before but can you give examples of where fan based content in a non trivial area has led to a company "forfeiting" their trademarks because they didn't send in the lawyers with the takedown tazers? Are you saying that if a company does not enforce this on every single occasion, there's some weird law that somehow negates ownership of the trademark? What happens with use of the trademark that doesn't come to the company's attention, does that also cause them to "forfeit" the trademark?
 

Average Reds

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lambolt said:
I've seen this written before but can you give examples of where fan based content in a non trivial area has led to a company "forfeiting" their trademarks because they didn't send in the lawyers with the takedown tazers? Are you saying that if a company does not enforce this on every single occasion, there's some weird law that somehow negates ownership of the trademark? What happens with use of the trademark that doesn't come to the company's attention, does that also cause them to "forfeit" the trademark?
 
You are asking two very different and distinct questions.  And I'll give you my non-lawyer understanding of the answers in colloquial terms.  (Not a lawyer but I've been the marketing representative in a couple of trademark cases.)
 
If a company knows about trademark infringement and does nothing about it they are at risk of having a future court declare that their trademarks have become part of the public domain.  And the only way to avoid even the possibility of giving this argument any traction is to vigorously defend your marks every time you are aware of an infringement. 
 
Generally speaking, a company cannot be penalized for not enforcing their trademarks if they are unaware of the infringement unless the infringement is so profound as to make the claim of ignorance unreasonable.
 
To bring it back to this case, once MLB becomes aware of the infringement they have no choice but to take action.
 

SumnerH

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lambolt said:
I've seen this written before but can you give examples of where fan based content in a non trivial area has led to a company "forfeiting" their trademarks because they didn't send in the lawyers with the takedown tazers? Are you saying that if a company does not enforce this on every single occasion, there's some weird law that somehow negates ownership of the trademark? What happens with use of the trademark that doesn't come to the company's attention, does that also cause them to "forfeit" the trademark?
 
I'm not sure about "fan-based", but many trademarks have been lost when the company who owned them failed to defend them from general use by the public.  Aspirin, laundromat, dry ice, kerosene, and zipper are some well-known examples of former trademarks that were lost in this manner.  This is why Google periodically publishes stuff objecting to the use of "google" as a verb meaning "to search on the web", why Lego sends nastygrams to kids saying "please refer to them as Lego brand building blocks, not as Legos", and why the sport formerly called Ultimate frisbee was asked to switch to just Ultimate by the Wham-O corporation.
 


Are you saying that if a company does not enforce this on every single occasion, there's some weird law that somehow negates ownership of the trademark?
 
No, a single instance isn't going to be enough to comprise dilution, and a single failure isn't enough to say that the company wasn't making a good faith effort to defend the brand.
 


What happens with use of the trademark that doesn't come to the company's attention, does that also cause them to "forfeit" the trademark?
 
Probably not.  There might be a grey area to argue about if they were willfully or negligently ignorant of something that they should have known.
 

lambolt

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Thanks for the replies, interesting, I did not know that - I'm assuming it's a worldwide general principle and not only confined to the US. I know Games Workshop in the UK take a lot of shit for their totalitarian stance on takedowns of pretty much any and all fan content.
 

epraz

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I'm a trademark lawyer.  There are two major risks in not consistently enforcing your trademark rights: (1) your trademark becomes the generic term to refer to the class of product or service and (2) when you do try to enforce them, the defendant points to all the other unauthorized uses you permit and argue that your rights are weaker as a result.  
 
With regard to #1, it's pretty rare that a trademark becomes generic.  Google isn't yet becoming genericized, because nobody goes to run a search on Bing or Twitter or Yelp and calls it "Googling" something.  We use "Google" as a verb a lot, but generally people are talking about using Google's service when they do so.  MLB's marks weren't at risk of becoming generic just because they were being used in the titles of podcasts about the teams.  
 
#2 is somewhat legitimate, but it's hard to quantify how necessary it is to enforce against all unauthorized users.  I work in-house for an organization whose marks are used without permission all the time and we don't have the resources to enforce our rights against all the random internet uses.  But when a potential competitor uses our marks, or an unauthorized use that could damage our reputation comes to our attention, we enforce.
 
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MentalDisabldLst

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MLB could solve its risk in this regard by licensing the right for podcasts to mention them, their teams and players on iTunes for a very nominal sum, though, couldn't they?  Like, quick agreement with Apple that they'll receive $1 per year?  Risk gone.
 

SumnerH

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MentalDisabldLst said:
MLB could solve its risk in this regard by licensing the right for podcasts to mention them, their teams and players on iTunes for a very nominal sum, though, couldn't they?  Like, quick agreement with Apple that they'll receive $1 per year?  Risk gone.
 
Also other people can refer to them by trademark as long as they're not implying they're sanctioned by the team or confusing the public about it or the like.  You can have "MDL's Boston Baseball Report" that talks about the Red Sox by name, no problem, without needing to license it--using trademarks as identifiers is their entire reason for existing, so saying "The Red Sox beat the Yankees", which is using the trademarks to identify the product, is generally protected.  You can also use them to describe an aspect of their product accurately.  As long as these aren't diluting the brand or otherwise challenging the mark, the team doesn't need to (and indeed, can't) challenge their use.
 
But if you call your podcast the "Red Sox Report" or something where it's arguably confusing about whether the podcast is officially endorsed by the team (or otherwise confuses consumers, or trades on their fame unacceptably) then you get into more trouble.  And the Sox might (rightly) not want to sanction names that are misleading or confusing.