David Stankiewicz and Dr. William Eggington, Linguistics

One of the most important areas of legal dispute today is internet trademark law. This has become an increasingly greater concern as more and more web pages grab for consumer attention. Many legal questions remain unanswered, and perhaps the most important of these is “Do we apply the old laws directly to cyberspace?” This question became a practical concern with “Kelley Blue Book v. Primdedia, Inc.”

Kelley Blue Book claims exclusive rights to the term “Blue Book” as used to refer to a price guide for used cars. However, Primedia Inc. believes that that phrase has now become well known enough to have turned generic, and they began running a website for used car valuation called “bluebookvalues.com”. This is in direct competition with Kelley’s website, kbb.com, which is an online version of their “Kelley Blue Book.” Under U.S. trademark law, a generic phrase is not protectable under copyright. If Primeida is right, then Kelley loses its trademark rights to the phrase, greatly affecting the 80 billion dollars worth of cars that are price-checked online.

The key legal question in the case is what the buying public thinks of when they hear the phrase “Blue Book.” If the majority of them understand this phrase as referring solely to “Kelley Blue Book,” then the phrase is specific to Kelley, and Primedia loses. However, if the majority of the buying public feels that the phrase refers to any and all types of valuation guides for used cars, then Primedia wins. I found that the entire question rested on the linguistic analysis of “blue book,” and therefore I studied this phrase using the legal framework as a guide.

Legally, genericness rests upon five points: 1. Generic use by competitors which has not been contested by plaintiff. 2. Generic usage by plaintiff. 3. Dictionary definitions. 4. Generic usage in the media, such as in trade journals and newspapers. 5. Consumer surveys (McCarthy Vol 1, 528-29).

Kelley was found to be doing a good job protecting its interests legally, at least in the real world. They have already brought successful suits against other companies attempting to use the phrase “blue book.” However, several internet searches revealed many different kinds of websites based on the idea of a “blue book” for used cars that had nothing to do with Kelley. It appears that the corporation could do a better job of protecting their mark online.

If Kelley itself uses “blue book” generically, this is strong evidence of genericness. A visit to their website shows them encouraging customers to ask question such as “What’s the blue book on my car?” This usage was no different from newspaper articles I found that did not mention Kelley at all. By dropping their trademark from the phrase, Kelley is encouraging generic usage, a strong point against them legally.

Dictionaries are not legally binding documents, but they can give us an idea of how the general public feels about a word. The dictionaries that I looked at in this case seem to show that, for the most part, the phrase “blue book” refers to any type of price guide for any product. However, in a legal sense, the phrase is only important as it refers specifically to used cars, so the dictionaries are not very helpful in this case.

Consumer surveys have been the gold standard by which trademark cases are generally decided, and a survey was performed in this case. Unfortunately, it is highly flawed, and I spent some time showing why, with some help from Professor Eggington’s. The survey contained biased language that affects the results enough to make them suspect. For example, customers were asked “Have you heard of the Blue Book for used cars?” This question uses the article “the,” which implies that there is only one blue book for used cars, when the real issue at stake is what the consumer originally believes about the phrase. Flaws like this made the survey practically worthless.

Media surveys are used to see if the word or phrase is being used generically in the media. A writer will tend to use a word only if their readers tend to understand the usage of it. Although these have not been used very extensively in the past, I performed a new type of media survey on the advice of Dr. Eggington (Personal Interview). I believe that this new type of survey could become a very useful tool to linguists in the future.

The survey used two types of programs. I accesses Lexis-Nexis® online, which is an extremely large database of printed material. I asked this database to search for the phrase “blue book.” I also searched for the words “Coke,” “Pilates” and “Aspirin” in order to provide controls for “blue book.” These words are all trademarks that have been disputed or declared generic. Lexis usually returned about 1500 occurrences of the different marks in a vast array of print media covering thousands of pages. I then downloaded these articles into WordCruncher®. This enabled me to search for each usage of each word, and also the context in which it was used. I eventually obtained some very interesting results from this study, which would be of use to any linguist studying these or any other generic terms. I found that a combination of various factors in the corpus could lead one to a fairly sound judgment as to whether a word was being used generically in print media. In the case of “blue book,” I found that the term was still specific, and therefore worthy of protection. However, I found that it was showing signs of becoming weaker.

In summation, I decided that the phrase “Blue Book,” especially because of the print media survey, was still specific, and worthy of protection from the courts. However, I do not think that this will last long without some very definite steps by Kelley to protect their mark better.

Overall I found this research challenging, intriguing, and helpful to my understanding as I prepare for law school. I have submitted the above analysis as my honors thesis, and will probably defend it in September of 2002.

References

• McCarthy, Thomas. Trademarks and Unfair Competition, 2nd ed. 2 vols. Rochester: The Lawyers Co-Operative Publishing Company, 1984.
• Eggington, William. Personal interview. 15, Feb 2002.