EntrepreneurPR's Viewpoint
Last week, we included an editorial about Entrepreneur Magazine winning a
judgment against Scott Smith and his company, EntrepreneurPR. After reading the
story, Mr. Smith contacted us and asked for the chance to express his thoughts
on the lawsuit. His comments follow.
Judge Rules 'Entrepreneur'
No Longer Part of Public Domain
Does your company use commonly-used words as part of any trademarks or
websites? If so, you may find yourself at the wrong end of a very costly
trademark infringement lawsuit. I know what you're thinking, "you can't
trademark commonly-used words such as 'money,' 'teacher,' and 'entrepreneur'"!
Believe it or not, it can happen, and on June 25th, 2003, federal judge
Florence-Marie Cooper ruled that
Entrepreneur Magazine's "entrepreneur"
trademark, "is a strong distinctive mark, deserving of significant protection."
In other words, when hearing or seeing the word "entrepreneur," Judge Cooper
believes most people first think of Entrepreneur Magazine, and not of its
widely-accepted dictionary definition of being, "a person who organizes,
operates, and assumes the risk of a business venture." Judge Cooper's strange
ruling defies common sense, evidence presented at trial, and contradicts U.S.
intellectual property laws. Companies are not supposed to be able to so easily
gain ownership of commonly-used words or phrases. What's next, Golf magazine
suing Golf Illustrated, Hispanic magazine suing Hispanic PR Wire, or
Money
magazine suing Money.net?
This ruling could give Entrepreneur Magazine the strongest trademark rights
ever granted to a magazine named after a very commonly-used word. In fact,
anyone using "entrepreneur" as part of a trademark or website, is now at
tremendous risk of being sued and ordered to pay substantial damages to
Entrepreneur Magazine -- even though there is no synonym for the word
"entrepreneur." For example, Judge Cooper ruled that
EntrepreneurPR must pay
Entrepreneur Magazine a whopping $669,656 in damages, plus attorneys fees that
may be in the "high six figures."
How could one company be granted control of such a commonly-used word as
"entrepreneur"? This was a judge trial, not a jury trial, and as stated by a
leading intellectual property attorney, "the judge seems biased and may have
distorted the evidence presented." Indeed, in February 2002, a three judge panel
of the higher ranking Ninth Circuit U.S. Court of Appeals, unanimously
overturned Judge Cooper's earlier June 2000 ruling on this same case. The
appellate court's ruling stated that, "[Entrepreneur Magazine's] mark is weak --
descriptive of both its subject matter and intended audience…the common and
necessary uses of the word 'entrepreneur' provide strong evidence that
[Entrepreneur Magazine] cannot have the exclusive right to use the word
'entrepreneur'…there is also a broad societal interest in preserving common,
useful words for the public domain. We do not want to prevent the commercial use
of descriptive words to name products, as straightforward names are often the
most useful identifiers."
Judge Cooper continuously ignores evidence against Entrepreneur Magazine's
claims of having extensive trademark rights to the word "entrepreneur."
Countless companies use "entrepreneur" as part of their trademarks, websites and
publications -- people from Entrepreneur Magazine even freely admitted under
oath to this indisputable fact (i.e.
Ernst & Young's "Entrepreneur of the Year"
awards, The Entrepreneur's Source, Minority Business Entrepreneurmagazine,
etc).
This ruling is additionally troubling because Judge Cooper also relies on
testimony from a handful of former EntrepreneurPR clients who all admitted to
having a history of significant payment problems with EntrepreneurPR. The
appellate court already ruled that payment disputes are a credibility issue, and
some of these companies admitted that other courts have already granted
EntrepreneurPR large default judgments against them, some for in excess of
$10,000. We don't know what incentives, if any, Entrepreneur Magazine may have
offered these companies, however, we do know that Entrepreneur Magazine is
increasingly desperate to win its first protracted legal battle over the word
"entrepreneur." We also know that none of these companies could explain why they never
mentioned their supposedly long-held confusion between EntrepreneurPR and
Entrepreneur Magazine -- until after years of being relentlessly pursued by
Entrepreneur Magazine's attorneys (Entrepreneur Magazine's attorneys also went
after EntrepreneurPR's thousands of media contacts, and every staff member they
could find, but none testified to any confusion between EntrepreneurPR and
Entrepreneur Magazine).
What's next for "entrepreneur"? Although it has already cost in excess of
$100,000, and over five years, we are not about to give up. In fact, we have
already started working on again appealing this judge. We have also started an
Entrepreneur Legal Defense Fund, so all "entrepreneurs" can help stop
Entrepreneur Magazine's efforts to hijack the word "entrepreneur" (for
additional information, email me at: scott@entrepreneurpr.com).
~ Scott Smith
Resources: U.S. Patent & Trademark Office: search trademark section to see how many
companies besides Entrepreneur Magazine have trademarks that incorporate the
word "entrepreneur." Also see if any of your company's trademarks might be
similar to other trademarks. Whois.net: use "search by domain name or keyword" function to see how many
domain names include the word "entrepreneur." Female Entrepreneur magazine: new magazine Entrepreneur Magazine has also
threatened for using "entrepreneur" as part of its name. Entrepreneurs.com:
somewhat outdated site, but good for reviewing Entrepreneur
Magazine's efforts to own the word "entrepreneur." The MicroEnterprise Journal: a weekly business news periodical that has written
several articles about Entrepreneur Magazine's lawsuits over the word
entrepreneur. YouMayBeNext.com: website by several small companies that have been attacked by Pangea Intellectual Properties, LLC (PanIP), a company that has been filing
patent infringement lawsuits against several small businesses around the
country, claiming licensing fees of $30,000 a year from each of them for their
use of their allegedly patented e-commerce system (source:
microenterprisejournal.com).
Scott Smith is the founder and president of EntrepreneurPR,
a firm that provides national public relations services for newsworthy
entrepreneurs. Scott's clients and services have been featured by a number of
leading media organizations, including Businessweek, The Wall Street
Journal, and CNN.
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