Mariah Carey and the risk of legal overreach on trademarks

When Mariah Carey tried to trademark the term “Queen of Christmas” she hadn’t reckoned with 81-year-old Los Angeles singer Darlene Love who has been singing Christmas songs since the 1960s.

Responding to Carey’s trademark application last month, Love said: “David Letterman officially declared me the Queen of Christmas 29 years ago, a year before she released All I want For Christmas Is You, and at 81 years of age I’m NOT changing anything.”

Of course, the American chanteuse isn’t the first celebrity to run into trademark problem.

Young fashion billionaire Kylie Jenner decided it would be a great idea to copyright the name Kylie. Unfortunately, she had failed to allow for another Kylie, namely pop princess Kylie Minogue, who sold more than 70 million records and won a Grammy almost before Jenner was old enough to go to school.

After a slew of legal proceedings and unhelpful publicity, the case was settled in Minogue’s favour.

While such cases likely cause little reputational damage to celebrities — and may even boost their profile — overzealous trademark actions can cause real embarrassment for some of the world’s biggest brands.

Like when KFC sent a threatening letter to the publican of a small country hotel in the Yorkshire Dales demanding that she cease advertising her once-a-year traditional Christmas dinner as a “Family Feast”.

Or when McDonald’s spent eight years of failed legal action against a single Indian restaurant in Kuala Lumpur called McCurry. (The husband and wife owners of the small business claimed the “Mc” in their name stood for Malaysian Chicken).

Yet beyond the amusement and head-scratching, trademark over-reach can also create serious issues and financial risk.

Consider the case of the Utah-based online outdoor gear seller Backcountry.com, which launched legal action against dozens of small brands for alleged trademark infringement of the word backcountry.

Media reports said Backcountry eBikes and Backcountry Denim had already been forced to change their names, and identified the ongoing legal threat to Michigan entrepreneur David Ollila over a short ski he developed for climbing snowy hills.

The result was an eruption of anger on Twitter, Instagram and Reddit. A Facebook boycott group soon had more than 20,000 members and activists created an online legal defense fund to help fight the lawsuit.

Within days, in the face of consumer outcry, company founder and CEO Jonathan Nielsen dropped legal actions, fired his law firm, and issued a public apology.

The outcome was not much better, though more prolonged, for Quebec-based drinks giant Lassonde Industries, known for its Oasis brand fruit juices.

The company chose to turn their legal blowtorch on Deborah Kudzman, who produced a line of boutique soap under the brand Olivia’s Oasis, named for her daughter Olivia and because her products contained olive oil.

Lassonde’s trademark lawyers demanded she immediately stop using the name, recall all her merchandise from stores, and hand over any profits she had made.

What followed was a see-sawing seven-year legal saga, eventually appealed in favour of the drinks company, leaving Ms Kudzman with a massive legal bill.

We can only imagine Lassonde’s lawyers were pretty pleased with themselves, until the verdict unleashed a storm of indignation on traditional and social media.

Then popular TV host Guy Lepage tweeted to his 100,000 followers that he would boycott Oasis drinks to protest the company’s treatment of the small entrepreneur.

Within 48 hours, to her surprise, she received a visit on Easter Sunday from a Lassonde senior executive offering an undisclosed settlement, sufficient to cover all her legal costs. Lassonde later explained, rather lamely: “We didn’t like our consumers to be angry with us.”

Let’s never forget that legal advisors serve an important role in every organisation.

Yet sometimes the executive and their communication managers need to ask: “This may be legal, but have we thought it through? Is it really such a smart idea?”

Tony Jaques is an expert on issue and crisis management and risk communication. He is CEO of Melbourne-based consultancy Issue Outcomes and his latest book is Crisis Counsel: Navigating Legal and Communication Conflict.