Comedian changes name to Hugo Boss to challenge trademark law | Hacker News Reader

Comedian changes name to Hugo Boss to challenge trademark law

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There have been some insanely aggressive trademark cases in the US too. The University of Kentucky sued a small moonshine distiller for selling t-shirts that had the word ‘Kentucky’ printed on them.[0] That’s it, having the name of the state they resided in was enough to trigger Kentucky athletics.

The shirts weren’t trying to knock off or reference Kentucky Athletics in any way, but that didn’t stop UK from putting legal resources behind their effort. Yet another example of how the legal system is built for the rich.

0: https://www.nytimes.com/2016/04/10/us/-legal-moonshiner-and-...

I really hope this got laughed out of court as hard as possible. It should only be a trademark issue when they're likely to be confused. That's not remotely likely here.

UK will likely lose, but what will it change though? The little guy has to spend time and money defending themselves and go through the stress that comes along with it. UK probably will write the costs off and sue someone else.

This is why the American rule is really dumb.

https://en.wikipedia.org/wiki/American_rule_(attorney%27s_fe...

Agreed.

In cases like this, I wish we had legislation that required trademark holders to defend all alleged violations unilaterally or something, because selectively going after certain cases creates a terrible power imbalance.

If the university feels so strongly about protecting their trademark with regard to apparel, they should have to file cases against everyone who violates it, nor just certain individuals or organizations.

That's exactly why I want this thrown out of court as hard as possible, rather than an expensive court case, even if it can be won. This stuff is just harassment by the big corporations and showing off their power.

Perhaps the United Kingdom will sue University of Kentucky for using "UK"; let the university know what it feels like to be the little guy.

1. It's a trademark issue, not copyright.

2. Don't companies have an obligation to defend their trademark or risk not being able to defend them in the future?

His accusation is that Hugo Boss are going well beyond reasonable defense of their trademark, by suing businesses in entirely unrelated industries that use either 'Hugo' or 'Boss' in their names or their product names. One example he cited was Boss Brewing, a Welsh brewery who said they spent about £30,000 / 38,200 USD on legal costs and rebranding after being targeted by Hugo Boss. They're also alleged to have sent cease and desists about surfboards, speakers, knives, and treadmills for having 'boss' in the name. It's hard to argue that those weaken the Hugo Boss trademark.

He has a show about consumer rights ("Joe Lycett's Got Your Back", which I suppose will be "Hugo Boss's Got Your Back" next season) so it's in his wheelhouse.

> His accusation is that Hugo Boss are going well beyond reasonable defense of their trademark

The problem is that this question ultimately hinges on a court's judgment, and they can't know in advance what evidence of "reasonable defense of their trademark" will satisfy all the judges in all the cases where this issue is examined.

So from the trademark-holder's point of view, the approach has to be to do everything they can to be seen by the courts to be doing anything necessary to defend their brand; particularly for such a big/valuable brand like Hugo Boss, it's too risky to do anything less.

When you talk to people in these kinds of companies privately, they don't personally care at all if some largely-unrelated small business somewhere has a name that is vaguely reminiscent of theirs, and they'd rather not have to waste time and money taking action against them.

These indignant reactions always happen when a big corporate is seen to be bullying small, defenceless companies over trademarks, but on this topic it's a case of "don't hate the player, hate the game".

You have a much less aggressive option:

"Hey, we think your use of <x> is a bit too close for comfort. We recognize it's not actually problem but it's in both our interest to avoid trademark dilution issues; let's discuss some minor changes and nail down an agreement".

Then both sides can point to the agreement if someone else tries to use that usage as a defense.

The real issue is not that they're communicating with people to ensure a clear delineation of uses, but that they're doing so in a very aggressive and hostile way and costing companies they do it to a lot of money.

I don’t know anything about the specific cases.

But how does any of us know there’s a way the could handle this in a less hostile way and still be safe before the courts?

Are there examples of other companies doing it substantially better?

There is no requirement to be hostile. They can always go for the hostile option if the friendlier approach doesn't work.

All they need is to be able to demonstrate that they take action to protect their mark. If they do so by agreeing license terms that covers reasonable uses that is sufficient.

As for examples: Pretty much any company you don't see in the media harassing companies with similar names. Hugo Boss are being exceptionally aggressive here.

Ref 2, it's often explained as "you didn't defend it against X last year, so now you cannot attack me for using it", but I think it's wrong. You don't have to defend it every time. But if you let it slide too many times, the trademark can become dilluted with other meanings/uses over time, making it a common word you cannot defend. Or so.

Yes but..

There was a time when McDonald's was being a major jerk about trademark lawsuits. Then THE MCDONALD of the the clan MCDONALD had a talk with them about being reasonable. Haven't been as many stupid lawsuits since then . . .

wrt #2, you are right.

but i have read and learned crazy things like you can't have part of their name in your own products or company names. or again, you can't use their main colors for branding.

ridiculous!

I would like to bring everyone's attention on his top notch new signature

Similar to Gavin Belsons

https://i.ytimg.com/vi/6KbRA2RjhgQ/maxresdefault.jpg

On a tangent here, a bit over 20 years ago I used to work for a guy who registered "boss.com.xx" (where xx is a country TLD I won't detail) because that was the name of his publishing company here. This was still dialup/ISDN days for most small companies over here.

He held on to it for a long time, but I noticed in the last couple of years that it now redirects to www.hugoboss.com. Knowing this particular person I am fairly sure that he would have sold it to them for a pretty penny.

I'm not sure the list of countries that use com.xx is particularly long. And the the list of those with that redirect is even shorter (one?!)

Perhaps there's opportunity to bag the few others and drop them an offer. =)

If you do that, you’ll be facing a UDRP. You’ll be out a domain plus legal fees.

Chill out Hugo, it was a joke.

Fair enough. ;) But if it wasn't obvious to me, it probably wasn't obvious to other readers; a disclaimer can't hurt.

A lot of large companies I've worked with do not care to overtake domains with matching names, and sometimes do not even contact the owners to get a quote.

I wonder if he can then license his likeness and name for a nominal cost to anyone who wants to use it.

This has nothing to do with copyright.

He did it because Hugo boss is suing tons of small business with a name including "BOSS" in order to hurt them financially.

I think GP means that it's a (probably registered) trademark, which is distinct from 'copyright'.

And, at the very least, it means that Hugo can't get a passport using his new name:

https://assets.publishing.service.gov.uk/government/uploads/...

It should also be pointed out that the Deed Poll pictured isn't an official document in any meaningful sense. In the UK, you pretty much change your name by starting to use a new name and telling all the official bodies that you have done so - and asking for new paperwork in that name (including passports etc).

These Deed Poll forms are produced by any number of paralegal-esque companies and are useful to include when writing to your bank/utility conpany, but that's about it.

There does appear to be a central process for doing it in Scotland:

https://www.nrscotland.gov.uk/registration/recording-change-...

Edit: Being married to Scots law lawyer I feel obliged to point these things out any time I see a mention of a "UK" legal system... ;-)

As an English person, I would like to both apologise and thank you for pointing out the difference and challenging my default assumption.

To be precise: You will need a Deed Poll, which is a piece of paper with certain words on it, and it needs to be signed and witnessed, but you can make one yourself and you dont need an official body or lawyer to do it.

Correct - and here are the certain words. https://www.gov.uk/change-name-deed-poll/make-an-adult-deed-...

“I [old name] of [your address] have given up my name [old name] and have adopted for all purposes the name [new name].

“Signed as a deed on [date] as [old name] and [new name] in the presence of [witness 1 name] of [witness 1 address], and [witness 2 name] of [witness 2 address].

“[your new signature], [your old signature]

“[witness 1 signature], [witness 2 signature]”

That's a strange rule! It's the definite article in "the owner of that trademark" that confuses me. The same word could be a registered trademark in each of about 45 classes, with a different owner for each mark.

Perhaps the next logical step for this comedian is to find a class in which Hugo Boss is not registered and register his own trademark in that class. Then he can give himself permission to use his own name. Or something. I actually have no idea how the rule in the the linked document would be applied in practice. Perhaps in practice they don't care about trademarks if the name is an ordinary name, like "John Smith", for example. Which is almost certainly also a trademark ... I've just checked (https://trademarks.ipo.gov.uk/ipo-tmtext): JOHN SMITH matches a bunch of different trademarks, and if you include JOHN SMITH'S then there are even more of them.

Good point, though it does make me wonder what happens if your name (say, from birth, or even if not) predates the trademark. Does trademark registration similarly check against registered births? And deaths (to allow them again, if no new births)?

I thought I read somewhere that they were suing charities (?), which if true leaves me feeling it’s not so much of a bad thing that he’s doing.

Yes. It is about trademarks. They tend to get bundled together with patents and sometimes even trade secrets and named "intellectual property", but a trademark is a very different thing.

Duplicate

https://news.ycombinator.com/item?id=22466552

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