A California-based maritime news website, gCaptain (which also happens to sell T-shirts with the 150-year-old shipping icon known as the Plimsoll Line) has been threatened with a strange trademark lawsuit by another website known as Plimsoll Gear.
The owner of gCaptain, John Konrad, told Ars that this proposed litigation is “crazy.”
“This mark has been the hallmark of safety of the maritime industry since the 1860s; a lot of people died and a lot of mariners have been saved,” he said, describing his website as the world’s “largest maritime publication.”
“Our T-shirt was to honor the memory of Plimsoll, the man who fought to put this on ships, and now it’s on every single ship,” he continued, noting that his t-shirts have been for sale since before Christmas 2017. “It just seemed crazy that someone could trademark this.”
Ars contacted multiple trademark law experts, who nearly resoundingly agreed that Plimsoll Gear was overreaching.
Barton Beebe, a law professor at New York University, emailed Ars: “Crazy case. Trademark bullying.”
“What makes this case ridiculous is Plimsoll Gear’s claim that gCaptain is infringing Plimsoll Gear’s marks,” he wrote.
“First, gCaptain’s design isn’t anything like Plimsoll Gear’s. There’s not enough similarity, especially in light of how ubiquitous the Plimsoll indicator is. Second and related, the trademark doctrine of descriptive fair use holds that third parties have every right to describe their goods through good faith uses of terms or symbols that happen to be similar or even identical to somebody else’s mark. So when gCaptain uses the term ‘Plimsoll’ to describe its posters, shirts, and mugs that incorporate a Plimsoll Line design, this is clearly not trademark infringement.”
Or put another way, as Eric Goldman, a law professor at Santa Clara University, emailed: “The more that gCaptain’s depiction reflects standard waterline notation, the more likely that Plimsoll’s claims are overreaching.”
“A risk of consumer confusion”
For well over a century, ships around the world have had the small circular icon emblazoned on their hulls.
The graphic, designed by Samuel Plimsoll, is designed to show whether a ship is overloaded and is at risk of sinking. If someone looking at a ship can see the horizontal line, the ship isn’t overloaded. Otherwise, there might be a problem. Additional horizontal lines are sometimes added to account for variability across different oceans.
Under the United Kingdom Merchant Shipping Act of 1876, the mark became mandatory on British ships, and in the ensuing decades it became standard worldwide.
In 2008, a North Carolina couple, one of whom included Charles Leeuwenburg, a retired merchant mariner, founded a company called “Plimsoll Gear,” inspired by Plimsoll’s story.
The company registered a trademark with the United States Patent and Trademark Office, seemingly claiming the Plimsoll Line as its own, for the purposes of emblazoning it on clothing, coffee mugs, and other items.
Plimsoll Gear, through its attorney, recently sent gCaptain an informal email telling him to stop selling the Plimsoll items and then followed up with a cease-and-desist letter.
“Your use of the Plimsoll name and symbol in connection with the offering for sale of items identical and similar to those sold by our client and protected by Plimsoll Gear’s trademark registrations creates a risk of consumer confusion regarding the source and sponsorship of those items and potential affiliations between gCaptain and Plimsoll Gear,” E. Eric Mills wrote.
“While the version of the Plimsoll symbol which you are using is not identical to the one shown in our client’s registration, the designs are similar enough that a purchaser could confuse one version for the other or assume that one company sells products that display the two variations. The end result in either case is purchaser confusion as to the source of the goods. Consequently, your use of the Trademarks is in violation of our client’s rights under federal and state trademark and unfair competition laws.”
However, according to other legal experts that Ars contacted, this line of argument is a bit of a stretch.
“It is far from clear how this symbol is operating as a trademark,” Daniel Nazer, an attorney with the Electronic Frontier Foundation, emailed Ars.
Simply taking a well-known symbol and registering it as a mark for clothing doesn’t automatically give you rights to it. To be a legitimate trademark, it must have “secondary meaning”—this means that consumers in the relevant industry associate the mark with the company. In this case, it would mean someone seeing a plimsoll on a T-shirt thinks “that’s Plimsoll Gear clothing’ not just ‘that’s a maritime-themed shirt.” I doubt there is any secondary meaning here. It seems to me that Plimsoll Gear is just using the trademark system to claim ownership over a public symbol.
Similarly, Annemarie Bridy, a law professor at the University of Idaho, in an email, called this a “classic case of trademark overreach.”
Bridy went on:
Unless consumers who see the Plimsoll icon on gCaptain merch would be likely to mistakenly think that merch comes from Plimsoll Gear, there’s no viable trademark claim. The Plimsoll symbol has meaning to the public and within the shipping industry that predates and exceeds any meaning it has in connection with Plimsoll Gear’s brand. Plimsoll Gear’s trademark registration doesn’t give it the exclusive right to use the historic symbol. A trademark isn’t a patent, even though a lot of trademark rights holders would like that to be the case.
One professor, however, left the door open for Plimsoll Gear.
“The mark is undoubtedly generic in the nautical context and is being used in that capacity functionally to identify seaworthy ships and distinguish them from dangerous ones,” Jennifer Rothman, a professor at Loyola Law School in Los Angeles, emailed.
“However, it might not be generic in a different context, for example, on clothing. Although the registration is not determinative, it gives a thumb on the scale regarding the validity of the mark—which looks a little different from the mark that appears on ships.”
UPDATE 9:05am ET: Roman Mars, the celebrated host of the design podcast, 99% Invisible, which once did an episode on the Plimsoll line and later sold t-shirts with the image, said that Plimsoll Gear targeted him in a similar fashion.
The first @99pi Kickstarter featured a Plimsoll Line tshirt and these same creeps came after me.
— Roman Mars (@romanmars) May 15, 2018
More Info: arstechnica.com