The line had to be drawn somewhere. Now that the Jeremy Lin madness has cooled off a bit, it’s time for cease-and-desist letters to be delivered. What better place to start than the weed shops? As you probably know, some medical marijuana dispensaries have been offering a strain of herb called the “Linsanity OG” for the past few weeks. According to the Huffington Post, Lin’s lawyers have sent cease-and-desist letters to the shops that are selling the weed.
“Their enthusiasm for Jeremy Lin got ahead of their understanding of the law,” Pamela Deese from the Washington, D.C. firm Arent Fox said.
Several shops have already complied. Josh Lebowitz, the owner of 420 Specialists of Moreno Valley, says he stopped selling the product but that Lin’s lawyers also requested a written letter of apology, which he has not put together. Why the letter of apology would be necessary, I have no idea.
Of the roughly 1,000 legalized marijuana shops in California, Lin’s lawyers say there are five or six who are violating Jeremy’s rights. Does this also mean the Shake Shack in New York City is violating his rights with the Jeremy Lin-mint milkshake? Fair is fair, right?
In legal terms, that is the case. LBS spoke with Benjamin J. Smith, an associate at Krane & Smith, a Los Angeles law firm specializing in intellectual property and business litigation, about the case. He says Jeremy Lin has a legal obligation to “police” or go after anyone who uses terms confusingly similar to Lin’s trademarks. Lin may also have the right to prohibit certain unauthorized uses of his name and likenessfor commercial purposes without permission.
“In order to protect your trademark, you use it or you lose it. Similarly, you have an affirmative duty to police others from using your mark or a confusingly similar mark that is likely to cause confusion amongst your consumers,” Smith says. “This is not only necessary to preserve your rights and prevent the weakening or dilution of your mark by allowing the ‘field’ to become crowded, but also to increase the strength of the mark (and associated goodwill) by protecting its exclusivity. In that regard, you can’t be selective about who you go after if it is a potential competitor using a confusingly similar mark in the same or similar class of goods and services. In that sense, you have to enforce it equally.
“In the case of the marijuana shops and Shake Shack, these uses may not be trademark infringement or what is called ‘palming off.’ That is especially so if these stores can demonstrate ‘first use’ in that they were using the alleged infringing marks in connection with marijuana or shakes before Lin was, which seems very unlikely. Lin may also have a claim for trademark dilution since, although marijuana and T-shirts are, for example, in different classes, trademark dilution is based on the theory that the use by marijuana dispensaries tarnishes the goodwill of Lin’s trademark.
“Lin may have an alternative remedy, however, if he can show that these stores are capitalizing off of his name and likeness,” Smith explains. “If these stores are using Lin’s name and likeness for commercial purposes and are making a profit, they could be in trouble if they do not cease the uses. They may also have to disgorge profits earned in connection with the uses.”
Smith believes Lin’s lawyers sent cease and desist letters to many other violators, but he cautions that weprobably won’t hear much about the other cases because they’re not as appealingas one concerning a marijuana shop.
How far would Lin go to enforce his trademark? That’s another question.
“Lin’s legal team has to do a cost-benefit analysis to justify each target of his cease and desist campaign. Policing your trademark, especially if you are Jeremy Lin, is going to be costly. Lin must strategically go after the right targets and consider all associated legal, commercial and financial implications of doing so. From a P.R. standpoint, Lin probably won’t do much more than a cease and desist letter in the case of small shops that most likely aren’t selling goods or services that Lin is desirous of distributing. In other words, I don’t see Lin opening up a marijuana distribution chain any time soon. But for those outlets that are using any similar mark in connection with goods and services that may cause confusion in the marketplace where he intends on selling similar goods and services, or may lessen the value of Lin’s name, Lin must police those infringers to maintain and strengthen his trademark rights.”
