Editor’s Note: This week, TLNT is counting down the most popular posts of 2010. This is No. 3 in our Top 25. We’ll continue to do this through New Year’s Eve. Our regular content will return on Monday January 3, 2011.
They say that no good deed goes unpunished. Perhaps they should say that no controversial news story goes legally unchallenged, either.
An attorney working for SHRM has sent a letter to TLNT’s parent company, ERE Media, demanding that we stop using the SHRM logo on the TLNT website. Despite the fact that the SHRM logo can be found in use on numerous websites all over the Internet, and that TLNT has used it on a number of other occasions (more on that later), SHRM has never made such a demand until we wrote about a new group of agitated SHRM members that the world’s largest HR organization probably wishes would just go away — SHRM Members for Transparency.
Two weeks ago, I wrote here about the controversy surrounding the Society for Human Resource Management Board of Directors and SHRM Members for Transparency over concerns with what the group (made up of former SHRM executives, former Board members, and other prominent SHRM members) believes is the current Board’s lack of transparency on a number of issues.
This group was planning to launch a website to air their concerns publicly (it was supposed to be called improveshrm.org), but pulled back after receiving an e-mail from SHRM’s general counsel warning of possible legal action if they went ahead with the website as is. TLNT wrote about all of that, including a memo from Board Chair Robb Van Cleave to state council directors and chapter presidents questioning the actions of the Transparency group.
Well, the legal e-mail from SHRM seemed to do the trick, because SHRM Members for Transparency backed off and is rethinking its next step. SHRM’s legal maneuverings didn’t stop there, however, because that’s when it also fired off a legal rocket at TLNT and ERE Media.
What’s the main issue SHRM is upset about? It’s that TLNT displayed “the federally protected SHRM SOCIETY FOR HUMAN RESOURCE MANAGEMENT… (logo) mark in an unauthorized manner.”
The legal demand letter was addressed to David Manaster, CEO of ERE Media, and came from Pamela C. Gavin, an attorney in Richmond, VA, and it came after phone calls to both me and Manaster from Henry Hart, SHRM’s chief legal counsel. Hart made the same demands on the phone that Gavin did in her letter:
SHRM has not authorized this use of its mark and is concerned that such use of its mark will mislead consumers into believing that SHRM is the source of, or has sponsored, approved or is affiliated with the content of the site. … We must insist that you immediately remove the SHRM logo from your website and confirm in writing that you have done so upon your receipt of this letter. Otherwise, we will be forced to advise SHRM to consider taking such additional legal measures as may be required to effect your compliance. Continued use of the SHRM Logo hereafter shall constitute willful infringement and may subject you to treble damages and attorneys fees.”
You can find the full letter from attorney Pamela Gavin, representing SHRM, here:
I’ve discussed this issue with David, and we have had other attorneys take a look at it, too, because we know that SHRM has invested a lot in its trademark and we are sensitive to that.
But it seems pretty clear to us that, despite SHRM’s legal objections, we utilized SHRM’s trademark on TLNT in a way that would invoke the “categorical exemption” that exists for all forms of news reporting and news commentary.
This post from the Citizen Media Law Project http://www.citmedialaw.org/legal-guide/using-trademarks-others spells it out:
Trademark law does not let a trademark owner exert its trademark rights to stop news reporting about it or its products or services. You see proof of this everyday on the front pages of newspapers, the homepages of news websites, and countless blogs. Mainstream reporters and non-traditional journalists routinely report on earnings announcements, job lay-offs, and accounting scandals without worrying that they are infringing or diluting the trademarks of the companies and organizations they report on. There are several legal bases for this result: there is no risk of confusion between the news source and the trademark owner; nominative fair use protects this use of the trademark owner’s mark; and the federal dilution statute expressly exempts “news reporting and news commentary” from a dilution claim. See 15 U.S.C. § 1125(c)(3)(B). As noted above, one court has held that a blogger’s critical commentary on a company qualified as “news reporting and news commentary.
Trademark law does not permit a trademark owner to use its trademark rights to silence commentary and criticism. As with news reporting, courts recognize the important First Amendment values at stake and usually deny efforts by trademark owners to encroach on legitimate commentary and criticism. There are several legal bases for this result: there is no risk of confusion between the commentator and the trademark owner, and nominative fair use may protect this use of the trademark owner’s mark. Additionally, courts are likely to find that your use of a trademark in commentary or criticism is “not in connection with a good or service” and “noncommercial” (the argument is especially strong for the latter category). But note that some courts may find your use of a trademark for criticism and commentary to be commercial if you host advertising or link to commercial websites. In any event, to defeat a trademark dilution claim, you do not even need to show that your use is noncommercial. The federal dilution statute creates a categorical exemption for “criticizing . . . or commenting upon the famous mark owner or the goods or services of the famous mark owner.” 15 U.S.C. § 1125(c)(3)(A)(ii).”
You can find the SHRM logo being used in a great many websites that are not officially affiliated with SHRM all over the Internet, as we did in about 15 minutes on Google (including here, and also here and here, on this one and on that one, by this website and this other one, on popular ones and lesser ones, by websites you probably know of, and probably some here and here and here that you don’t). Some of these websites claim membership in SHRM, but many of us here at TLNT and ERE Media (including both me and David Manaster) are SHRM members, too.
In fact, the SHRM logo has been used several times earlier this year on TLNT and ERE (including during the SHRM annual conference in San Diego) without any legal objections from SHRM (you can find those here, and here, and here, and here, and here, and here). Why make this demand now, after so many uses of the logo, without incident, on TLNT over so many months? And why does SHRM make this legal demand of just TLNT/ERE Media and not the many other websites using their logo in a similar manner?
We think the answer is simple: SHRM doesn’t want us writing about (and therefore giving legitimacy to) SHRM Members for Transparency. We believe that this legal demand from SHRM, like the e-mail that was sent from SHRM’s chief legal counsel to the group SHRM Members for Transparency, to be an attempt at legal intimidation through potential litigation, pure and simple. It’s an obvious and somewhat heavy-handed attempt to chill the debate (and any news coverage and commentary on TLNT) about the SHRM Board, its lack of transparency, and any attempts by outside groups to force a public discussion.
SHRM, like most large, bureaucratic organizations, is full of a lot of people who do many things — some good, some bad, some shortsighted. The SHRM Board mirrors this as well, and the internal debate that is going on within the organization is largely being led by people who used to have a great deal to say about how the organization operated: former SHRM executives, former Board members, former committee chairs, and others.
And one more thing: the notion that SHRM is concerned that the use of its logo in a news post on TLNT “will mislead consumers into believing that SHRM is the source of, or has sponsored, approved of or is affiliated with the content of the site,” as its lawyer claims, is ridiculous and laughable on its face — as anyone who has read news and commentary about SHRM on TLNT probably knows all too well.
Whether the SHRM Board likes it or not, the Board’s actions have fueled this debate. The lack of transparency and open discussion about what the Board is doing is the root cause, and it is not going to quietly go away because many of those in SHRM Members for Transparency seem to view it as a fight for the soul of the organization that they have invested so much in for so many years.
TLNT and ERE Media are now part of that debate as well, and we have chosen to stay the course and continue to use the SHRM logo in the news reporting and commentary of this story, as is our legal and First Amendment right. We decline SHRM’s legal request because we believe that SHRM has overreached in its legal demand to try to intimidate us and stop our ongoing reporting and commentary on this issue.
As I said before, David Manaster and I are both longtime SHRM members. We are not rabid SHRM haters, just people publishing information, news, and commentary about what is going on with the organization. We feel strongly that this is the right thing to do, and we will continue to do so.
We will also continue to use the SHRM logo in a manner consistent with fair use to publish news and commentary about the organization, both on TLNT.com and ERE.net, unless we are ordered by a court to stop doing so.