©2018. Published in Landslide, Vol. 10, No. 3, January/February 2018, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.
Ron Coleman is currently a member of Mandelbaum Salsburg PC’s intellectual property and commercial and corporate litigation practice groups. He is a commercial litigator focusing on torts of competition who has shaped the law relating to the use and abuse of intellectual property as a tool of competition and free speech in the last two decades. An experienced first-chair litigator and appellate advocate, he has also been recognized for his pioneering use of social media in his legal role. He also started the Likelihood of Confusion® blog in 2005 and continues to blog regularly about trademark, copyright, and free speech. Likelihood of Confusion is one of the most widely read intellectual property law blogs in the world. His recent successful argument before the US Court of Appeals for the Federal Circuit, sitting en banc, and subsequent appearance before the United States Supreme Court on behalf of his client, Simon Tam of The Slants rock band, resulted in the Supreme Court striking down a portion of the Lanham Act on free speech grounds.
Mr. Tam and his Archer team are the 2018 Mark T. Banner Award honorees and will receive the award during ABA-IPL’s 33rd Annual Intellectual Property Law Conference in April.
How did you first become interested in intellectual property law?
My mother was a legal secretary for the Cities Service Corporation, which used to have a technical research center in central New Jersey, near where we lived. I visited her from time to time when I was in high school and encountered the old bound volumes of the Trademark Official Gazette, which I found mesmerizing. That was my first experience with trademark law.
How did you get involved in blogging?
I was always someone who liked to read public interest/public policy-type magazines, but I never felt like I could get into the conversation, and I did feel like I had something to say. I studied economics and political science in college and had been very interested in issues and debate, and it frustrated me that there were tremendous barriers, it seemed, to getting into the conversation. Blogs had discussion forums and comments, and you could earn your way into the conversation on the merits, which I did.
Soon I developed relationships with some of the bloggers where I was advertising, and one of them encouraged me to start my own blog a little bit after I started the Coleman Law Firm. At this point, I had also gotten involved with working on behalf of bloggers, usually on a pro bono basis, on free speech issues. These two paths became more and more intertwined and built on each other, so that in a short time I was the “go-to guy” in certain pockets of the blogging world for almost any legal issue faced by bloggers.
I was convinced that if people would find their way to my website, it would be a way for clients to find out about me, which was, strange as it seems, not all that common for lawyers in the relatively early days of the Internet.
What do you attribute to the success of your blog? How have you been able to grow your readership?
Through my law firm website, even before the blog began, I came to represent a company called S&L Vitamins that was getting cease and desist letters from the companies that made the Australian Gold and Designer Skin tanning lotions, and a number of others. These companies ended up going after my client in a series of “unauthorized distribution” cases throughout the country premised on trademark infringement. My client threatened these companies’ existing price level and distribution mechanism, but what my client was doing was completely legal. We ended up litigating more or less the same case against several companies over the course of several years around the country.
Several things happened to my practice during the course of this litigation: I had stepped up my trademark game; I was able to get more experience doing first seat trial work, which I really enjoyed; I was getting the opportunity to litigate all over the country; and I was experimenting with sharing these experiences on my blog.
A little bit later, after I had moved my practice to another firm, one of the bloggers I represented, Bob Cox, ran what was then a very popular blog called The National Debate. He had been writing for a while about how frustrated he was that the New York Times never issued corrections of factual errors that were contained in op-ed pieces. The Times’ view was that if it was news, they would make a correction, but if it was an op-ed, they would not. Bob argued that there were very substantial errors on the op-ed pages as a result, and the pages themselves were extremely influential and it was objectionable in his view. He put together a parody of the corrections page as he would imagine it would look like if the New York Times made op-ed corrections, and posted the parody on his website.
Next thing he knew, he received a DMCA takedown order for this parody, and he ended up finding me based on my prior work for other bloggers on a pro bono basis. In return for my representation, he posted links to my blog to tell his readers that I was helping him, which raised my online profile tremendously. We did get the Times to retract its takedown notice, which started to generate a lot more interest in what I was doing. Blogging became something that was very fundamental to my professional identity after that representation.
You were among the first group of lawyers to start blogging about intellectual property. How were you able to find your voice?
When I initially started the blog, I thought that because there was already a blog on trademark law—Marty Schwimmer’s Trademark Blog—what is the sense in doing another one? That’s how small the world looked at the time. I had met Marty at the end of 2000, when I was on a panel for INTA’s Trademarks in Cyberspace program, arising out of my work on Jews for Jesus v. Brodsky, an early domain name trademark case. I came to realize, though, that we had different perspectives, and I could write from my own perspective. Marty encouraged me and gave me some important links, which was of great value in terms of my credibility. It turned out to be a very good investment.
Do you have any advice for lawyers who would like to get into blogging today?
It’s not for everyone, frankly. Because I’m also fundamentally a writer—I wrote for a student lawyer magazine while I was in law school—and I’ve just always been a writer, it was a very good match for me and a great way for me to develop my practice and have fun, too. But if you’re intellectually curious and you have something to say, even if you’re just starting your career and not necessarily billing time every minute of the day the way you would like to be, why not take your creative inclinations and thinking or the stuff you’ve put into briefs, or perhaps the lines of inquiry that end up on the cutting-room floor, and turn them into blog posts? Through your posts, you can keep generating interest and SEO (search engine optimization) and a reputation.
Your representation of bloggers was one way you got into the practice of Internet law. How did you get involved with First Amendment law?
As I mentioned before, before starting my own firm I had been at a firm called Pitney Hardin, which is now part of Day Pitney, where I represented a young man named Steven Brodsky in a fairly high-profile case against a missionary group called Jews for Jesus. That case came my way because of my blogging. Many observers shared my view that in the Brodsky litigation, which was filed before the anticybersquatting provisions were added to the Lanham Act, trademark claims were employed to restrict free expression on a controversial topic, namely Brodsky’s opposition to the group. That case was the first one to sort of put me on the map in trademark litigation, though the outcome was disappointing. Later, when I got involved with the S&L tanning lotion cases as well as claims against review sites and online directories and cases involving network advertising, I came to see this pattern continue—“unauthorized use of a trademark” was becoming a way to shut down communication, commercial or otherwise, on the Internet, even where there was no meaningful proof of a likelihood of confusion.
That theme—the use of trademark claims as a form of anticompetitive conduct—came to a head when I spent several years representing a gripe site called PissedConsumer.com in a series of cases where people tried to sue them for unauthorized trademark use in reviews or in URLs generated by consumers and where, again, the fundamental requirement of an infringement claim—a likelihood of confusion—was consistently absent, but the lawsuits were used as anticompetitive tools. We got very good results on their behalf, and I became more and more attuned to this phenomenon of the misuse of trademark law on the Internet.
What I found really gratifying was that as time went on, judges became much savvier about how trademark law was being abused in this way than they had been previously, and that I could say I had some small part in that. Ultimately the First Amendment work we did for the Slants brought that process full circle and made me feel some small personal vindication, though the issues were not closely related, for the outcome in the Brodsky case almost 20 years earlier.