Because Casey’s not a Lawyer…

People who don’t care about Circle K or Intellectual Property Law can just skip this post.

Well, some new folks are now in charge of UnofficialCKI — Manny is one of them. So when the new Admins got an email from the assistant lawyer wannabe, otherwise known as Casey Keller (uh oh, I linked them without permission! Think they’ll try to kick me out again? snicker), he IMed it to me. The first part was sad… she was disappointed that they weren’t wanting to do what was in the best interests of CKI by changing the name! Cry! Me! A river! But then she got serious… apparently she questions the legality of the name “UnofficialCKI”. I decided to post to clear up any confusion for those of you who think she might have the first clue what she’s talking about. She doesn’t. She obviously doesn’t know the first clue about IP Law or, if she does, this is a scare tactic. Observe…

In order to successfully get an injunction for a trademark, a few things must be true. First, you must have a trademark. This is the first problem for staff. “CKI” is not a registered trademark of ANYONE. The logo is trademarked, and one MIGHT be able to claim that the solid white circle with the script “K” in it causes dilution of CKI’s trademarked logo, but we’ll get to that later.

So once you HAVE a trademark there are two illegal things that can be done to it. There can be “trademark infringement” or “trademark dilution.” Infringement is generally relatively straightforward and narrow, while dilution is a little more abstract and broad.

Trademark Infringement is only an issue if the exact trademark is being used on similar goods or services. So if you have a trademark for the word “Thingamajig” to sell apples, the use of the word “thingamajig” as a brand of automobile is perfectly legal. Kiwanis sells membership in a service organization and they sell supplies bearing those same trademarks. UnofficialCKI sells… NOTHING. They provide information free of charge. Nothing commercial about that. Further, since CKI is not selling information if UnofficialCKI STARTED charging for membership, it would still not be an issue. It’d be more murky then, but still not an issue. At present UnofficialCKI.org is not a commercial entity.

The most serious claim is that of Trademark Dilution. Allow me to act smart and quote United States Code. The Trademark Dilution Act requires that a plaintiff prove that:

(1) the mark is famous; (2) the defendant is making a commercial use of the mark in commerce; (3) the defendant’s use began after the mark became famous; and (4) the defendant’s use of the mark dilutes the quality of the mark by diminishing the capacity of the mark to identify and distinguish goods and services. Toeppen, 141 F.3d at 1324; 15 U.S.C. § 1125(c).
(found via findlaw)

Now, you can see that there are four points, all of which must be true in order for the claim to be valid. The first of them might seem like a foregone conclusion — that the Circle K logo is famous. In this context, it would probably be accepted as true, but it would still be up for debate, I think. The second point is the kicker here… once again we find that dilution doesn’t matter unless the defendant is engaged in commercial acts, which we’ve already established as not being the case. Third is a no brainer. The fourth one would also be a problem for CKI. They would have to prove that UnofficialCKI causes fewer people to join or buy their products out of confusion.

Though I am not (yet) a lawyer, I would imagine that an approach to this would be to show that within the subset of people for which the mark can be considered “famous” (mainly Kiwanis Family members) there is no chance of confusion by a REASONABLE PERSON. The reasonable person test is one frequently used in law because no matter what the issue is you can always find someone smart enough suit one side and stupid enough to suit the other. No reasonable person would be confused that UnofficialCKI and Circlek.org are the same thing or run by the same people.

Now trustees who like to act like they know a thing or two about law (Nick and Daisy, for example) would probably come here, get all worked up, and try to pass off some sort of lame excuse as to why the aforementioned legal standards aren’t correct, but don’t worry… they’d be terribly wrong. We did our research before we ever registered that domain name, and we’ve done more research virtually every time we were accused. Now that other folks are being accused, I did even more research. To date, I’ve found exactly zero “gotchas”.

I had a long discussion with Nick about this a while back, and regardless of my ability to site case precedent and actual US Code, he disagreed though he was only able to use his own perception of what the law is (or should be). I’d probably take him more serious if he’d do a little research. Maybe. Ok, not really.

Also, though I’ve not gone looking for legal precedent here let’s make an assumption, if Microsoft doesn’t have the ability to get an injunction for MicrosoftSucks.com (which uses a trademark they actually own) CKI will not be capable of getting any sort of injunction for UnofficialCKI.org. Any thought to the contrary is not just deluded — it’s stupid.

Thank you for playing.