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Pfizer Tries to Take the Joy Out of ViagraErecting a solid caseby Sean Carter Imitation is not only the most sincere form of flattery but it’s also the most expensive. Just ask Philip Jegede, the owner of Joytime Herbs, who now runs the risk of going bankrupt for naming his latest brand of herbal tea “Joyagra.” Last month, drug giant Pfizer, the maker of Viagra, sued Joytime Herbs for trademark infringement and dilution. For now, Jegede isn’t backing down. He vows to continue marketing Joyagra, which has become one of his best sellers. Of course, Jegede probably hasn’t received his first legal bill yet. When he learns that he will spend more on his legal defense than the rest of us spend on national defense, he may decide that some things just aren’t worth fighting for. And this would be a shame because Jegede has a strong case. Pfizer claims that the similarity in the two names may confuse customers into thinking that Joyagra is a substitute for Viagra. Obviously, someone in Pfizer’s legal department has been dipping into some of Pfizer’s more potent drugs. Now, I understand that the primary function of Viagra is to divert oxygen away from the brain to other parts of the male anatomy but even a man in a coma wouldn’t confuse a tea bag with a little blue pill. Besides, even he did, his physician would straighten him out since Viagra can only be obtained with a prescription while Joyagra tea can be purchased anywhere. In addition, it’s highly unlikely that anyone will think that Joyagra is the tea-equivalent to Viagra. After all, most consumers don’t usually associate Pfizer with its tasty beverages. For instance, I’ve never overheard anyone at Starbucks asking for a “Pfizer Latte.” In addition, even if Pfizer was intending to produce a line of beverages, it would quickly price itself out of the market. For instance, those little blue pills that revitalized the Dole marriage can cost as much as $16.00 each. Can you imagine what Pfizer would attempt to charge for a 64-ounce “Big Gulp” type drink? “One tall Pfizerccino with sprinkles? That will be $643.29. Would you like a bran muffin with that?” Nevertheless, Pfizer is arguing that even if there is no risk of confusion to consumers, Joytime Herbs is diluting the value of Pfizer’s famous trademark. According to Pfizer, under the Federal Trademark Dilution Act (FTDA), this type of activity is prohibited even if consumers are not confused. The purpose of the FTDA is to prevent copycats from cheapening a famous trademark. For instance, let’s suppose I were to open a strip club called “Barbie’s Playhouse.” In addition to receiving hourly death threats from my wife, I could also expect to receive a call from Mattel. Even though, no one would ever think that my strip club was in any way affiliated with Mattel, the toy maker would have a strong case under the FTDA that I was diluting its world famous trademark. In fact, the Supreme Court heard arguments in a similar case during its last term. In that case, Victoria’s Secret sued a Kentucky sex toy shop called “Victor’s Little Secret.” The lingerie chain claimed that Victor’s Little Secret was diluting its trademark. The Supreme Court conceded that this “might” be true but ruled that Victoria’s Secret must prove actual harm at trial anyway. This precedent doesn’t bode well for Pfizer in its battle against Joyagra. Proving actual harm in these cases usually requires market surveys, economic forecasts, two Ouija boards, and a psychic. In short, this isn’t easy or inexpensive. Given this, you might wonder why Pfizer is going after Joytime Herbs in the first place. After all, just how much Joyagra was Jegede going to sell anyway? Joytime Herbs is a small company with a work force that fluctuates between two and seven employees. On the other hand, Pfizer is a $270 billion public company with in excess of $30 billion in annual sales. So why then is Pfizer suing Jegede and putting him in the poor house? The sad answer is that our wacky trademark law requires Pfizer to do so. To fully protect a trademark, the holder must detect and prosecute all known infringers. Failure to do so could result in a loss of trademark protection. Last year, Pfizer sold $1.7 billion worth of little blue pills. Obviously, it’s very interested in keeping a tight grip on the erectile dysfunction market. To prevent the other drug giants from marketing ED drugs under names like “Miagra,” “Fliagra,” etc., Pfizer must come down hard on mom and pop operators like Jegede. Therefore, here we have another instance in which our legal system actually encourages conflict. Of course, this must be unintentional. After all, our lawmakers, most of whom are lawyers, wouldn’t intentionally set up a system that encourages litigation and creates more work for lawyers. Or would they? ________________________________ Sean is a practicing attorney who writes a weekly humor column on current legal events called "Lawpsided." Lawpsided pieces appear in a growing number of general circulation papers across the country, including The Los Angeles Times. Moreover, his musings on the law appear on nationally recognized websites, such as jewishworldreview.com, findlaw.com, newsmax.com and etherzone.com, and legal publications, such as The National Law Journal and The Los Angeles Daily Journal. Lastly, he is a regular contributor to national magazines like Razor and Tirade. If you would be interested in publishing this piece or seeing other samples of his work, please feel free to contact him by e-mail, by phone at (626) 786-2095, or through his website at: |