Judge scouts answer to infringement case

[Kudu]

When Baden-Powell first wrote Scouting for Boys in 1908, his program was designed to be distributed freely for use by existing youth organizations like the YMCA and the Boys' Brigade.

 

By 1910 a half-dozen such organizations were already taking steps to establish national Scouting associations in the United States, including William R. Hearst's "American Boy Scout" (later the "United States Boy Scout"); the National Highway Protection Association's "Boy Scouts of the United States;" "The Peace Scouts of California;" the "National Scouts of America," formed by a military school in Manlius, NY; and "The YMCA Scouts"

 

Thus words such as "Scouts," "Scouting," "Tenderfoot," "Second Class," "First Class," etc. that had first appeared in Scouting for Boys were already in the public domain and commonly used in the context of Scouting by other American Scouting associations BEFORE the BSA first discovered them.

 

On the other hand, terms such as "Star," "Life," "Eagle," etc. invented by the BSA after 1910 are understood by the YouthScouts and other competitors to be protected trademarks.

 

The YouthScout's challenge is to the interpretation of the BSA's Congressional Charter, which is commonly believed to protect the BSA's program against competition in the marketplace by international groups like the UK's Baden-Powell Scouts Association that seek to establish an American Scouting program based on Baden-Powell's significantly more demanding program.

 

The BSA did attempt to sue the GSUSA to prevent girls from using the term "Scouts," but apparently abandoned this effort. See:

 

http://www.inquiry.net/adult/bsa_vs_gsusa.htm

 

For those who are interested in the history of the interpretation of the BSA's Congressional Charter (beyond the moralistic reasoning that is typical of Internet discussions such as these), some of the pdf files at the following YouthScouts URL contain a surprisingly detailed history of Scouting in the United States:

 

http://www.youthscouts.org/districtcourt.html

 

Kudu

 

 

 

[Beavah]

Yah, I'm a believer in da BSA's right to set their own membership standards, eh? And I'm quite content with the standards we have set. I'd be strongly opposed to a misguided judicial ruling trying to force the organization to change its membership standards.

 

That havin' been said, Mr. Wrenn is on the right side in this suit, though it's a bit of a David v. Goliath endeavor. BSA can enjoy trademark protection for Eagle Scout, eh? But not for "scout" or "scouting". Those are, if we are at all honest about things, generic terms that were invented offshore, in common use by a number of countries with whom we have copyright and trademark treaties which are legally enforceable, and which were never licensed by the progenitors to da BSA.

 

The court seems to be relyin' on da BSA's charter as an exclusive monopoly grant, not on trademark or copyright law, eh? In that case, every true conservative and Republican should be appalled! Da notion that the government is going to "pick winners and losers" in the private sector by givin' exclusive rights to one organization is a dangerous one, eh?

 

Because, yeh see, it's unlikely there are goin' to be many Republicans left in da next congress, eh? What happens when a new congress votes to give a monopoly charter to some other Scouting Organization in da U.S. ... like Youth Scouts? Lots of good reason for it, eh? Like encouraging youth patriotic programs in the public schools.

 

Da court should rule in favor of Wrenn, and save us from ourselves. He made a weaker argument in his pleadings (didn't have millions to spend), but he's on da right side of the issue.

 

Beavah

 

[Novice_Cubmaster]

Question, isn't a Cub Scout somebody from Chicago that looks for baseball players?

 

NC

PS - Go Dodgers!

 

 

[Mr. Boyce]

Much of the new legal pressures against Boy Scouts just seem like vindictiveness and a desire to punish the Boy Scouts of America for having a moral code as part of its member requirements.

 

The organizations fighting the Boy Scouts are simply fighting another battle in the broader culture war. . . they really don't care about the Boy Scouts itself as an entity. They're willing to burn down the village in order to "save" it.

[nolesrule]

The thing about trademarks is that while they don't allow you to have a monopoly on all usage (with the exception of "super brands", they allow you to have a monopoly on usage within your specified market segment. There is also the issue of trade dress, which goes beyond just words and into appearance (uniform, program, etc.). Trademark secondary meaning probably also applies to the terms "scout" and "scouting" as well. So, the BSA does have a solid case involving "scouts" as a youth organization (regardless of the charter). Basically, trademark law under the Lanham Act can apply to "imitating a little too much" (registration of trademarks is not required, though it helps), and this has nothing to do with a Congressional charter.

[Gold Winger]

"registration of trademarks is not required, though it helps,"

 

According to the US PTO, registration is required to bring action in a Federal court regarding the mark.

[nolesrule]

Yeah, I meant to change that when I was doing my final edit before posting. I meant to apply that to concepts covered by "trade dress", which don't have a mechanism for registration.

 

You know how that is. You re-write a post once or twice before hitting the submit button but forget to change one of the points. :-)

[Beavah]

Yah, nolesrule, dat's true, eh? But in the case, PTO had already ruled in favor of Wrenn, finding no reasonable basis for not grantin' a trademark to YouthScouts. And Wrenn is right, eh? Scout and scouting are generic terms when used to describe a youth outdoor education and citizenship program. BSA in its own materials even uses the terms generically. Da BSA can keep its trademark on Scouting Magazine, perhaps, but not on the movement.

 

I believe da issue in the ruling will be the congressional charter, same as it has been in occasional past rulings. That's a dangerous precedent IMO. Too easy for congress to say "well, gee, you guys aren't serving public schools anymore, lets give this to someone else." Like, perhaps, GSUSA gone co-ed . That would be quite a coup for them - bolster their membership, make 'em look like da real American scouting movement, increase their donations. Given our behavior in WOSM, I reckon they'd welcome GSUSA as da replacement for the BSA for WOSM membership.

 

Maybe I'm just an old conservative fuddy-duddy, but I don't much care for da notion of a government-protected monopoly. Especially on educatin' and trainin' young citizens. And practically speakin', maintainin' that monopoly isn't good for da BSA or the country. Competition from da likes of YouthScouts is nothin' to fear.

 

Beavah

 

[Kudu]

nolesrule writes:

 

'So, the BSA does have a solid case involving "scouts" as a youth organization.'

 

As I understand it, the YouthScouts' point is that OTHER American youth organizations based on Baden-Powell's program were ALREADY using the generic term "Scouts" BEFORE the BSA was invented.

 

The BSA's interpretation (the Charter does not actually specify a monopoly on the word "Scout") is like saying that Congress can decide which cab company is the best cab company and then grant it a monopoly on generic words such as "Taxi" and "Cab" already in common use.

 

Kudu

 

 

[Bob White]

"Da BSA can keep its trademark on Scouting Magazine, perhaps, but not on the movement."

 

The fact that the BSA has already recieved copyright and trademark protections from the ferderal government on over 70 words and images including "Scouting", and has had these protections for years, immediatley disproves your claim that they cannot do it.

 

The Chicago Cubs have trademark protection on the teams name even though the word cubs has been around far longer than the team, and is still used corrrectly in many other situations. The trademark protection simply keeps other baseball teams from using the same name and images.

 

The BSA's protection of Cub Scouts is no different.

 

You can open a McDonalds Tire store, you just cannot open a McDonalds restaurant unless you are paying McDonalds for the rights to the name as a franchisee.

 

The BSA has not gained sole use of the word "Scouts" only the sole use of it when referring to a youth organization.

 

We are volunteers in the BSA not the owners of it. The product, its name and imaqges belong to the BSA coroporation not to the volunteers. They have a right, and an obligation, to protect their name and images from being used by others in a similar or competetive way.

 

 

 

 

 

 

 

 

(This message has been edited by Bob White)

[nolesrule]

Beavah and Kudu, I'm not disagreeing with you, just pointing out that the BSA does have a case. Having recently learned about trade dress and secondary meaning, I think it can arguably be applied in the BSA's favor.

 

In addition, since the BSA is relying on the charter, I just took a look at excerpts from the charter, and there is a section on exclusivity rights, and here's what it says ("the corporation" referring to BSA)...

 

"The corporation has the exclusive right to use emblems, badges, descriptive or designating marks, and words or phrases the corporation adopts."

 

It seems the charter may indeed trump regular trademark law, since it's a Congressional charter and only Congress can make laws regarding copyrights, patents and trademarks. It's up to the judicial system to resolve this conflict. If Congress had the power to exempt Major League Baseball from the Sherman Antitrust Act, it can exempt the BSA from certain limitations of trademark law.

 

Mini slightly off topic rant time...

 

As for the USPTO, they get things wrong all the time. Their mission is no longer to apply the law properly to determine validity of applications, but collect as many application FEES as possible (I mean process as many applications as possible) and let the courts later determine if they made a mistake. You see it more in patent cases, but it happens with trademarks too.

 

Rant off...

 

That said, I have personally filed and hold two registered trademarks through the USPTO.

 

 

[Beavah]

The fact that the BSA has already recieved copyright and trademark protections from the ferderal government on over 70 words and images including "Scouting", and has had these protections for years, immediatley disproves your claim that they cannot do it.

 

Yah, BobWhite, I've gotta agree with nolesrule here, eh?

 

Plenty of patents and some trademarks get tossed every year by da courts. That is the issue being litigated in Wrenn v. BSA, eh? Wrenn's application is to have the court cancel the BSA's trademark protection on "scout" and "scouting" and related words as applied to youth programs, on the grounds that those protections were granted contrary to law.

 

Yeh must remember, the PTO approved the trademark application for YouthScouts, eh? So da BSA at the TTAB was arguin' the same case in reverse, eh? That PTO was issuin' a trademark improperly.

 

By and large, PTO is no longer doin' their job in screenin' applications for the public welfare, they're grantin' every application possible for da sake of the fees. We've seen all kinds of violations of the intent of patent and trademark law, largely used by large, well-financed corporations to prevent innovation and competition. Doin' considerable harm to the U.S. economically, but it's a great welfare program for lawyers.

 

Another example of why government-granted monopolies are a bad idea in most cases.

 

Readin' the charter language (thanks, nolesrule), I have to believe da charter has a constitutionality problem as well. Recall that the constitution allows congress to grant exclusive rights only for a limited time, eh? If the district court ruling goes against Wrenn based on da charter, that would be an interestin' cause for appeal, with a fairly recent SCOTUS case on point in Wrenn's favor.

 

Beavah

 

[OldGreyEagle]

So, in the Movie "Bushwacked" with Daniel Stern, the term "Ranger Scouts" is ok but if I wanted to start a real youth group and call them "Ranger Scouts" then I would be inviting BSA legal action?

 

 

BTW I aspire to be Brad Sullivan's "Jack Erickson"

[nolesrule]

"Readin' the charter language (thanks, nolesrule), I have to believe da charter has a constitutionality problem as well. Recall that the constitution allows congress to grant exclusive rights only for a limited time, eh? If the district court ruling goes against Wrenn based on da charter, that would be an interestin' cause for appeal, with a fairly recent SCOTUS case on point in Wrenn's favor. "

 

Actually, "limited time" applies only to patents (currently about 20 years) and copyrights (something like 90 years past the death of the creator...thank you Disney). The time limits do not apply to trademarks, due to their nature as an identity.

 

For example, "Mickey Mouse", whether the name or a character drawing is an identity belonging to WDC. A Mickey Mouse animated film is a copyrighted work. The process or process used in creating an animated film are patentable.

 

 

Edited to add this point...trademarks can be lost through not defending them when they are infringed. That does not occur with patents or copyrights, which can be defended in court any time before they expire.(This message has been edited by nolesrule)

[epalmer84]

The case in point is not about the BSA's discriminatory practices, but about the defense of a trademark.

 

If Wrenn had called it by any other name and used a similar program, I doubt there would have been any issues. Rather intriguing that a trademark attorney would register a trademark like this. Also interesting to note that YouthScouts has not been a registered company in California in over a year.

 

The documents at the YouthScouts site are intriguing, but pages are missing from the PDF files, so it makes it hard to follow.

http://www.youthscouts.org/districtcourt.html

 

What really amazed me from some of the transcripts is the lack of historical knowledge on the part of some of our professionals, such as the editor of Scouting.

 

A partial list of BSA trademarks are at:

http://www.bsalicensing.org/trademarklisting.htm

 

No one has made much fuss over the BSA protecting their trademark on terms such as pinewood derby, jamboree, Scout Gear and the like.

 

Ed(This message has been edited by epalmer84)