Why Take a Stand?
Please refer to the related article in this edition: “MHEA
Files Amicus Curiae Brief”
“Stand up and be counted”. “The world belongs
to those who show up”. “Either you are part of
the problem or part of the solution”. And one of my personal
favorites by Edmund Burke, “all that is necessary for
the forces of evil to win the world is for enough good men
to do nothing”.
That said, MHEA decided to let its voice be heard on the EMI
vs. Scott Smith (EntrepreneurPR) matter which is back on appeal
for the 2nd time in United States Court of Appeals for the
Ninth Circuit. This case is essentially about the trademark,
usage, and potential monopoly of the word “entrepreneur”.
This case is important for at least two reasons:
1) It could affect any business, organization, or publication
which uses the word “entrepreneur” in its name
or title including MHEA and many others around the country
and around the world.
2) It could affect or influence the outcomes of future cases,
laws, or regulations on the granting, use or defense of trademarks
on “words in common usage” such as the word “entrepreneur”.
I refer to a recent quote from the Wall Street Journal and
When [intellectual property rights] are too easy to get and
hold onto, they become a weapon for would-be monopolists and
their well-paid lawyers to increase profits rather than a reward
for innovation. People get [intellectual property rights] who
don't deserve them, and then others wield those [intellectual
property rights] in what is close to legalized extortion."
Deputy Bureau Chief
The Wall Street Journal, Dec 11, 2003
“Somebody claims to own the trademark to "entrepreneur." What's
next, copyrighting the alphabet? Patenting sex?”
Tongue Tied, Forbes Magazine
March 20, 2002
“Be careful if you use the word "entrepreneur." You
might get sued.” “So you can call yourself an entrepreneur,
but if you want to include the word in the name of your business
-- particularly one in publishing -- look out.”
Christine Van Dusen
The Atlanta Journal-Constitution, August 20, 2003
“Think twice before telling anyone you're an entrepreneur — you
just might get sued.” “Entrepreneur Media Inc.,
the Irvine, Calif.-based publisher of Entrepreneur magazine,
owns a trademark on "entrepreneur" and has been enforcing
it against firms using the word in periodical and website titles.
Targets have included Asian Entrepreneur, Publishing Entrepreneur
and The Entrepreneur, a newsletter produced by Carnegie Mellon
Who won? At press time the decision was pending. But the real
question for other ... er, entrepreneurs ... is whether their
innocent moniker could attract legal attention. Could Gardening
Joe trademark "gardening" and then sue Jim's Gardening?
Could Shingle Depot sue Shingle Land?”
Profit Magazine, June 2003
Very powerful words from reputable sources. This is a real
issue which has and continues to affect real entrepreneurs
and those who support them.
I spent eight weeks of intensive work from mid November -
mid January becoming acquainted with the case; with the previous
court decisions; with the previous Amicus Curiae Brief filed
by the California Small Business Association and the California
Small Business Roundtable in 2000; with the pertinent trademark
law; with related issues such as differentiation and levels
of protection; and how this decision has affected numerous
parties who have (or had) the word “entrepreneur” in
their name or title. I also obtained Minnesota and California
counsel essentially pro bono to work on this case on an expedited
basis on behalf of MHEA.
With all of this involvement, I have learned a few things.
I know I don’t want to be an attorney when I grow up.
I did learn how very serious this case is and how it may affect
MHEA and many hundreds - perhaps thousands of other entities.
I also learned how relatively easy it can be to gain a trademark
and how relatively difficult it can be to defend it. Another
lesson also became clear - a lesson many of us have read about
or observed in the business world. Often times, the victor
or the victory is not based on merit, fairness, logic, common
sense, or the best interests of the many. Often times, it is
based on how much money, how many lawyers, and how much ego
an entity has with regard to an issue or case. We have all
heard the term “the 800 lb. gorilla”...and the
joke, “what do you feed an 800 lb. Gorilla? Whatever
So, why take a stand?
To date, MHEA is the only entity who has filed an Amicus Brief
in this, the fourth round of the case. So, if MHEA did not
take steps to be heard in the 2nd appeals case, who would
have? Who knows what the outcome will be? Who knows where
it may go from here? I’m told that the case may eventually
be heard by the United States Supreme Court. Perhaps this
case may address the (apparent) weakness and lack of clarity
in trademark law especially with regard to the use of “words
in common usage” in names or titles.
I plan to submit an article which contains much of the research
and background I obtained with this issue that did not find
its way into the Amicus Brief. The Brief itself will soon be
submitted for posting on a web site which is tracking the case.
I hope the MHEA Amicus Curiae Brief and the article are accepted
and posted for public review. Please visit http://www.entrepreneur.net
for copies of official court documents and background on the
case. Let’s see what happens and whether MHEA’s
Brief assists the Court of Appeals in its decision.
We owe our deepest gratitude to MHEA’s Minnesota counsel,
M. Gregory Simpson of Siegel, Brill, Greupner, Duffy & Foster,
P.A., Minneapolis, MN. and to MHEA’s California (and
Ninth Circuit) counsel, David Barry of Barry & Associates,
San Francisco, CA.
This commentary are my personal opinions and observations accumulated
since my initial involvement with this case on behalf of
MHEA in mid 2001.
Ron P. Wacks
President, Minnesota Homebased Entrepreneurs Association
Co-chair, Minnesota Small Business Expo & Conference
2003 US SBA Home-based Business Advocate of the Year for the