Intellectual Property

Pain, Pitbull, & Personal Injury Lawyers

Pitbull lyrics as proof supporting a claim of trademark infringement.

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(Photo by Larry Busacca/Getty Images for Songwriters Hall Of Fame)

The title of this column could be a calling card for those considering a career as an IP lawyer. Where else can you find all of these disparate elements wrapped up in a single dispute?

First, some background. Growing up, the only law firm I could name was Jacoby & Meyers (see below for an example of their mid-80’s advertising) — whose ubiquitous ads blanketed WPIX 11’s daytime airings of cartoons and talk shows. While I personally never developed an interest in personal injury law, there was something comforting about the fact that there were lawyers at Jacoby & Meyers who were interested in representing the common man or woman when a legal issue arose. From a branding perspective, their advertising campaign was surely money well spent. More importantly, I am sure I was not the only one who thought Jacoby & Meyers were the greatest lawyers ever. They were on tv, after all.

While I am aware of some advertising by IP and Biglaw general practice firms, there is no dispute that personal injury firms are the perennial leader in terms of annual legal advertising expenditure. Since IP is by-and-large not a “foot traffic” practice area, most of the advertising I have seen in the area is more focused on building the brand awareness of the firm — particularly with the large corporate clients most willing to pay premium hourly rates. In contrast, personal injury advertising, whether on the subway, tv, or by propeller plane flying over a crowded beach, is more focused on making sure that regular people think of the firm when they get into an accident, or their podiatrist mistakenly removes a toe rather than a bunion. Alternatively, personal injury firms will often advertise for other lawyers, in hopes of securing referrals. Either way, branding is serious business in the personal injury legal world.

Just how much personal injury firms will invest in advertising was always a bit opaque to me, even as I continued to see (what must be successful) firms of that ilk blanket the airwaves with catchy jingles.

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It was interesting, therefore, to see a recently filed IP dispute that lifted the curtain a bit on a part of the legal industry that most IP lawyers never encounter. As part of my regular review of newly-filed complaints — a practice I have maintained for business development reasons, but also because it can provide insights into hot areas for further study and focus — I came across a complaint filed by I.P. Holdings, a Florida based owner of numerous trademarks. Their marks, such as 1-800-411-PAIN, and “After 911, Call 411,” are generally directed towards personal injury lawyer advertising and services. They had taken issue with a Georgia-based personal injury firm that had run Google adwords advertisements for searches that contained the term 411 Pain.

That activity got the Georgia firm a cease and desist letter from the trademark owner. While the Georgia firm moved away from that advertising, its redesigned website contained phrases like “Call Us to Get the 411 on your Pain or Injury Lawyer.” The lawsuit by the trademark owner followed (from what I can now tell, the website was changed again to take away the offending statements after the complaint was filed). Putting aside the merits of the dispute, I found the filed complaint interesting for a few reasons that are applicable to a broader swath of trademark disputes.

First, the investment that goes into creating famous marks can be significant. At least some neophyte trademark owners fail to appreciate that fact. They think that just because they thought of a cool name for their product or service that it will necessarily have resonance in the marketplace. That is not always so. It was eye opening to see that the owner of the 411 Marks had spent “tens of millions of dollars advertising and promoting the 411-PAIN Marks” as part of the process of creating customer awareness of their brand. Sure, personal injury is a crowded field, but so are many other areas of endeavor. The lesson for trademark owners is that they often need patience and significant investment in order to build the brand and source recognition that is the foundation for strong trademark rights.

Second, it is always interesting to consider the sources of proof brand owners rely on to demonstrate that their marks have acquired secondary meaning as source identifiers. In an unexpected twist, the complaint mentions the popular singer Pitbull, and in particular his reference to “411 Pain” in one of his hit songs, “Shake Senora” (it is not Haydn’s Violin Concerto in G, but feel free to listen below at around the 55-60 second mark for the lyric). In short, plaintiff alleged that their 411 Pain marks were famous in the field of personal injury attorney advertising, based at least in part on a pop culture reference. Again, it is perhaps debatable as to how persuasively the evidence supports their argument. Nevertheless, this usage illustrates the creativity and market awareness IP lawyers and their clients need to have when it comes to putting forward their best case.

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Ultimately, trademark disputes, like all IP disputes, call for real-world evidence gathering that sometimes leads IP lawyers far afield in the search for persuasive information or material to help their cause. When a dispute is worth it, as it apparently is when it comes to trademarks used in personal injury law advertising, then even going so far as to cite a Pitbull lyric is worthwhile. His music may be painful for some, but to the owners of the 411 Pain marks, it was a fireball of proof supporting their claims of trademark infringement.

Please feel free to send comments or questions to me at gkroub@kskiplaw.com or via Twitter: @gkroub. Any topic suggestions or thoughts are most welcome.

Gaston Kroub lives in Brooklyn and is a founding partner of Kroub, Silbersher & Kolmykov PLLC, an intellectual property litigation boutique, and Markman Advisors LLC, a leading consultancy on patent issues for the investment community. Gaston’s practice focuses on intellectual property litigation and related counseling, with a strong focus on patent matters. You can reach him at gkroub@kskiplaw.com or follow him on Twitter: @gkroub.

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