A Lesson from Tom Terrific™ on Building Good Fences
I was part of a panel discussion a few years ago, in a redwood campground in the hills of Mendocino County, California. That area has become one of my favorite places partly because of the beauty of the natural setting, one of the few locations where the truly awesome Giant Redwoods can be found. Another reason I love that area so much is that it is one of the places that old-school Cannabis people have made their living and continue to do so. The panel included some industry vets who have been through many more battles than I will probably ever face. It was educational and exciting to be on this outdoor stage with them, and I learned some new things. That was enough to make any day a good day. But there was one topic we touched on in this panel discussion that still stuck with me as I was driving away from that beautiful retreat.
I have several vices but maybe only one outright addiction: NFL football. I listen to NFL talk on satellite radio year-round. It’s something most of my friends and family seem to think is a combination of obsessive and tedious but I don’t mind being a minority of one among my dear ones when it comes to this addiction. So why am I confessing my tedious NFL-radio addiction after leading this blog with the grandeur of the redwoods and weed people? It’s because, as I was driving to my next stop on this idyllic road trip, I heard Tom Brady’s explanation for why he was trying to register a federal trademark on the nickname “Tom Terrific,” and it completely CLICKED with the topic from the panel discussion that was still in my head. So I want to figuratively bring Mr. Brady onto that stage to illustrate an incredibly important point about intellectual property in general and patents in particular. Here goes:
Brady was taking a lot of heat in the media for trying to trademark the nickname, partly because it hadn’t even originated with him. Before he was Tom Terrific TM the nickname was applied to a truly great baseball pitcher, Tom Seaver. Some people were up in arms that Brady, who has ALL the money and who pretty much has the rest of the world in his hands as well, would be arrogant or greedy enough to try to go get more by trademarking a second-hand nickname.
His comeback from being in this particular public-relations tempest was not as impressive as his comeback against the Falcons in Super Bowl LI, but it was effective. He explained that he actually kind of hates that nickname, knew of people selling Tom TerrificTM merchandise, and wanted to be able to stop them. He said he’s not interested in making money from the nickname—he just wants the trademark registration so that he can have a way to control (or shut down) its use.
I’m benching Tom for a minute while we go back to the panel in the redwoods. In our discussion, we were kicking around some deep philosophical questions about who really “owns” things like the land and plants. The Cannabis plant is truly one of nature’s greatest gifts to humankind, given all of the medicines and great genetic potential it promises. So who can “own” Cannabis? And the land on which it grows was there before people arrived in California. It was there even before the ancient Giant Redwoods evolved. So who can “own” the land?
Being the lawyer on the panel, I kind of dropped an imaginary wet cow pie on that question (respectfully of course). I pointed out that however we feel about the sacred nature of the land we have purchased and therefore hold legal title to, if someone tried to build a road through that land, we would certainly exercise our right to stop them. If desired, we could stop other unwelcome trespasses by building a fence around the land and then decide when and for whom and for what kind of activity we would open our gates and permit passage. A fence around land marks the property owner’s boundary of exclusion—it functions as a way of distinguishing between trespassers and invited guests, based on who or what is kept out and who or what is allowed in. Some property owners will be more welcoming than others. Some may even grant a public easement so that all can pass. We are all pretty familiar with land and fences, guests and trespassers; we understand from experience how that system works.
It is much the same with patents. Nobody can “own” Cannabis, but plant breeders certainly have a right to protect their own work—the unique cultivars developed with their skill and effort—from being taken, copied, and commercialized by others. A patent is the legal equivalent of a fence around the work of the inventor. It doesn’t force the inventor to adopt any particular behavior with respect to how to use that fence. Some may keep everyone out and exclusively control and commercialize their cultivars or other inventions. Others may grant licenses, welcoming selected guests within their fence, so to speak. And still others may decide to generously grant access to most, while keeping the “patent fence” as a form of insurance to have legal recourse against some extreme trespasser from doing the equivalent of building a road through their property.
This was exactly TB12’s stated goal in trademarking Tom TerrificTM. It’s not that he was planning to build a giant business on that piece of property. Instead, he was trying to build a fence to keep some annoying trespassers out. A trademark examining attorney at the USPTO will have to decide whether he’s entitled to build that fence. The trademark examiner’s role is, more or less, to survey that land and define the applicant’s property boundaries based upon established principles of trademark law.
So it is with patents on plant genetics or any other invention. The patenting process is very much one of defining boundaries within which the owner has a right of exclusion and beyond which she or he does not. And it is an entirely separate question what the owner chooses to do with the property right thus obtained.
Of course, not all property needs a fence, and in some cases the fence that would be effective is too costly to build or maintain. I knew someone who joked about building a $5000 fence around a $500 dog. But of course the dog’s safety and room to roam meant much more to him than the price of the dog OR the price of the fence. Likewise, it is for each inventor, and each owner of common-law trademark rights, to decide whether it is worth seeking federal endorsement and protection of their inventions with patents and/or protection of their trademarks with a federal registration. And by the way, if Tom Brady gets his federal registration he will go from Tom TerrificTM to Tom Terrific®. Those superscripts distinguish between one’s own assertion of a common-law trademark right and a federal trademark registration.
One other thing that is tricky about “patent fences” and that comes as a big surprise to most people: having a patent does not give you any automatic rights to use your own invention. It only gives you rights to exclude others. Depending on the nature of your invention, if you want to actually use your invention, you still may have to resolve issues of safety with the FDA or EPO or others, and deal with the DEA or FBI or local police on issues of legality. In addition, your patented product could infringe someone else’s patent rights. This is roughly analogous to buying land that is subject to someone else’s mineral rights or water rights, or buying land that is encumbered with an existing easement or zoning or code restrictions. Just because you own land doesn’t mean you can do absolutely anything with it, without respect to any restrictions. These issues are tricky enough for at least a few sessions of a law school course and for some heart-to-heart talks with a well qualified attorney before you launch a product. So I won’t do more than just flag those complications here, except to point out that plant patents (as opposed to utility patents) are so narrowly focused on one single cultivar that one patented cultivar literally cannot infringe the patent of a different cultivar. Those fences, at least, are very clear and simple to navigate.
So as I was driving through those beautiful woods, listening to discussion of draft picks and passer ratings and torn ACLs, and still pondering the great philosophical discussion we’d had on the stage in the wonderful redwood amphitheater, the voice in my head changed from Tom Brady’s to two imagined voices from a famous poem conversation. One voice was Robert Frost’s, as though speaking for the industry vet who raised the philosophical issue of who can own what; the other voice was that of his neighboring landowner:
Before I built a wall I’d ask to know
What I was walling in or walling out,
And to whom I was like to give offence.
Something there is that doesn’t love a wall,
That wants it down.
And as to the other voice:
And he likes having thought of it so well
He says again, “Good fences make good neighbors.”
We can be good neighbors to our good neighbors, do business with them, build partnerships, welcome the opportunity to work with them through licensing our IP, and help each other succeed. The patent fences don’t prevent that potential. In many ways they enhance it. And we can also keep out the trespassers who would disrespect and destroy what we have worked to build. The fences we establish just give us choices we wouldn’t otherwise have.