Belated ‘Pi Day’! (Which did not fall on a Friday!)
This post deals with the lately baked trademark issue of ‘π’ versus ‘π.’ (pi day is celebrated on March 14 (3/14)
The trademark at issue in this case was the symbol pi followed by a full stop: “π.” (U.S. trademark registration 4,473,631). This registration was issued to Paul Ingrisano, aka “Pi Productions Corp” (a Brooklyn based apparel artist). π. is used by Pi Productions Corp to brand T shirts etc. (here and here)
Another individual who designs t shirts, mugs etc. used this design (picture below) on his products:
He sold his products on an online market place called Zazzle. After products bearing this design were put up, Zazzle received a trademark infringement notice from ‘Pi Productions Corp’ asking Zazzle to take down those items from the website as they claimed that they infringed their registered trademark. Following this, Zazzle took down this individual’s products. This enraged the individual and he responded claiming that he had not infringed anyone’s trademark. However, Zazzle replied saying “Once Zazzle received the notice, as a service provider we are required to remove the design from Zazzle’s marketplace to avoid the risk of any willful infringement on the mark.” (After many such responses, Zazzle seems to have restored some products).
This case throws up various issues. First, it makes us question the real function of a trademark. The real function of a trademark is to communicate a particular product (assuring its quality) to consumers. A trademark is therefore a ‘brand’ that helps consumers remember the product. Likewise, “π.” when used to ‘brand’ T shirts functions as a trademark. However, when only the symbol ‘pi’ is used, by someone else, not as a brand but merely as an expression in a sentence, picture, etc. then a trademark infringement claim may not seem reasonable. This is due to a variety of reasons. First, unlike Nike’s ‘tick’, ‘pi’ in itself is not a ‘well known’ mark and consumers are not likely to associate the symbol ‘pi’ with only the t shirts of ‘Pi Production Corporation’. Moreover, ‘pi’ is a generic word/part of everyday language and is a ‘pun loving’ Greek alphabet! All this makes deception and confusion less likely.
This case also brings out the dangers of a ‘notice and take down regime’ for regulating content on the internet. This regime is based on the rationale that intermediaries are not liable for third party content so long as they have no knowledge of the same. However, once notice of infringing content is provided to the intermediary it must take action to remove such content. If not, the intermediary may also be held liable for infringement. Though such a regime is a middle path for intermediary liability (between no liability and full liability), it certainly has adverse consequences on essential freedoms like the freedom of speech and expression and also on business for e commerce sites. However, the regime itself may not be the problem, but how the law is drafted and actually applied may cause problems. For example, in the Indian context, the Centre for Internet and Society, Bangalore sent frivolous “take down” requests to seven prominent intermediaries (here). It was found that six of them ‘over complied’ with these notices, probably out of fear of prosecution and penalties. Some argue (here) that the current law does not provide enough time for intermediaries to seek legal opinion on whether to actually comply with the notice or not and this again leads to over compliance. Even in the present case, a successful trademark infringement claim seems unlikely but fear of liability clearly made the website remove these products.
Given that intermediaries are likely to comply with take down notices, trademark lawyers may aggressively start enforcing trademarks (even when claims are frivolous) and this may lead to a situation of unfair competition. Trademarks, in themselves, are used to ensure fair competition (competitors not being allowed to free ride on the reputation/quality of goods/services built by a particular manufacturer), but if over used, they transform into tools that will lead to unfair competition which will affect the market adversely. Therefore, some have argued that such practices should be penalized.