1 00:00:00,840 --> 00:00:03,640 Speaker 1: Because I've always been an adventure at heart. That's where 2 00:00:03,640 --> 00:00:06,960 Speaker 1: I can't wait to be a Scout. Scouting will show 3 00:00:07,000 --> 00:00:11,200 Speaker 1: me how to use bravery, trust, readiness, loyalty, and kindness 4 00:00:11,720 --> 00:00:14,400 Speaker 1: to become a first Meant Scout to be because there's 5 00:00:14,440 --> 00:00:17,120 Speaker 1: no one way to explore the world in my way 6 00:00:17,320 --> 00:00:20,800 Speaker 1: is in the Scouts to scout me in. It became 7 00:00:21,079 --> 00:00:24,599 Speaker 1: just about Scouts and scouting for the Boy Scouts in 8 00:00:25,200 --> 00:00:29,520 Speaker 1: seventeen when the organization decided to accept girls. So where 9 00:00:29,520 --> 00:00:32,720 Speaker 1: did that leave the Girl Scouts in court where they 10 00:00:32,720 --> 00:00:36,000 Speaker 1: sued the Boy Scouts for so in confusion and violating 11 00:00:36,040 --> 00:00:39,479 Speaker 1: their trademark. A New York federal judge has dismissed the 12 00:00:39,479 --> 00:00:43,360 Speaker 1: Girl Scouts lawsuit, but they say they'll appeal. Joining me 13 00:00:43,440 --> 00:00:47,360 Speaker 1: is Tyler o'choa, a professor at Santa Clara University School 14 00:00:47,360 --> 00:00:50,159 Speaker 1: of Law. Tyler tell us about the allegations and the 15 00:00:50,159 --> 00:00:54,160 Speaker 1: Girl Scouts lawsuit. So the Boy Scouts and the Girl 16 00:00:54,280 --> 00:00:59,280 Speaker 1: Scouts have coexisted peacefully for over a hundred years. The 17 00:00:59,360 --> 00:01:04,679 Speaker 1: trouble began in when the Boy Scouts announced that they 18 00:01:04,680 --> 00:01:08,640 Speaker 1: were opening the Boy Scouts and the Cub Scouts two girls. 19 00:01:08,680 --> 00:01:11,680 Speaker 1: So the Boy Scouts announced that they were going to 20 00:01:11,880 --> 00:01:17,640 Speaker 1: change the primary brand to Scouting d s A. And 21 00:01:18,040 --> 00:01:21,920 Speaker 1: they started using the slogan Scout Me in and the 22 00:01:21,959 --> 00:01:25,800 Speaker 1: Girl Scouts claimed that the use of the words Scout 23 00:01:26,040 --> 00:01:30,760 Speaker 1: or Scouting without the qualifier Boy Scout or Boy Scouting 24 00:01:31,240 --> 00:01:34,600 Speaker 1: would create a likelihood of confusion with their pre existing 25 00:01:34,640 --> 00:01:39,280 Speaker 1: trademarks on the words Girl Scouts, so they filed a 26 00:01:39,480 --> 00:01:43,520 Speaker 1: lawsuit asking the court to require that the Boy Scouts 27 00:01:43,560 --> 00:01:46,959 Speaker 1: always used the word boy in their name to distinguish 28 00:01:47,000 --> 00:01:50,560 Speaker 1: them from the Girl Scouts. In a century, I'm sure 29 00:01:50,880 --> 00:01:53,160 Speaker 1: or I think the Boy Scouts would have used the 30 00:01:53,280 --> 00:01:58,920 Speaker 1: term Scouting by itself at some point. Sure, both organizations 31 00:01:58,960 --> 00:02:03,920 Speaker 1: have used the term scouting, but their brand requirements or 32 00:02:03,920 --> 00:02:08,120 Speaker 1: their brand suggestions were that it always be used with 33 00:02:08,280 --> 00:02:13,760 Speaker 1: the qualifier Boy Scouts or Girl Scouts, and in that 34 00:02:13,880 --> 00:02:17,600 Speaker 1: manner they were not able to prevent all confusion between 35 00:02:17,600 --> 00:02:22,680 Speaker 1: the organizations. Many people already thought that they were associated 36 00:02:22,760 --> 00:02:28,040 Speaker 1: or affiliated in some way, but prior to it was 37 00:02:28,120 --> 00:02:32,760 Speaker 1: routined for both organizations to use the qualifier boy Scouts 38 00:02:32,840 --> 00:02:35,560 Speaker 1: or Girl Scouts, and the Girl Scouts are complaining that 39 00:02:35,639 --> 00:02:40,120 Speaker 1: without the qualifier there may be greater likelihood of confusion. 40 00:02:40,560 --> 00:02:43,600 Speaker 1: The judge tossed out the Girl Scouts lawsuit. Tell us 41 00:02:43,639 --> 00:02:49,240 Speaker 1: why so? The judge said that the terms Scout or 42 00:02:49,400 --> 00:02:54,040 Speaker 1: Scouting are either generic, and a generic term cannot be 43 00:02:54,120 --> 00:02:57,359 Speaker 1: protected by trademark law, or the very least, they are 44 00:02:57,440 --> 00:03:01,000 Speaker 1: descriptive of what the two organizations to do, and a 45 00:03:01,040 --> 00:03:05,080 Speaker 1: descriptive term can only be protected if it has come 46 00:03:05,160 --> 00:03:08,480 Speaker 1: to have secondary meaning, if it has come to be 47 00:03:08,600 --> 00:03:12,320 Speaker 1: thought of as a brand of a particular producer rather 48 00:03:12,400 --> 00:03:15,440 Speaker 1: than a description of the type of organization that it is. 49 00:03:15,680 --> 00:03:18,919 Speaker 1: And the judge ruled that even though the Girl Scouts 50 00:03:18,960 --> 00:03:22,639 Speaker 1: have a valid trademark in the name Girl Scouts, they 51 00:03:22,680 --> 00:03:26,200 Speaker 1: do not have any exclusive rights in the terms Scout 52 00:03:26,400 --> 00:03:30,080 Speaker 1: or Scouts or Scouting, that those terms are common to 53 00:03:30,160 --> 00:03:34,000 Speaker 1: both organizations. They essentially describe what it is that the 54 00:03:34,120 --> 00:03:37,960 Speaker 1: organizations do, and so the Girl Scouts cannot prevent the 55 00:03:38,000 --> 00:03:41,480 Speaker 1: Boy Scouts from using the term scouting without a qualifier. 56 00:03:41,800 --> 00:03:45,120 Speaker 1: He said that there was not a likelihood of confusion, 57 00:03:45,520 --> 00:03:48,440 Speaker 1: and he said the Girl Scouts lawsuit was not based 58 00:03:48,520 --> 00:03:51,800 Speaker 1: on trademark concerns, but out of fear for their competitive 59 00:03:51,840 --> 00:03:56,000 Speaker 1: position in a market with gender neutral options For scouting. 60 00:03:57,200 --> 00:04:02,040 Speaker 1: That's correct, right. He's saying, well, they're worried that girls 61 00:04:02,280 --> 00:04:06,840 Speaker 1: aren't going to want to be in all girls scouting organizations, 62 00:04:06,840 --> 00:04:08,960 Speaker 1: that they might prefer to be in a co ed 63 00:04:09,040 --> 00:04:13,600 Speaker 1: scouting organization, so that the Girls Scouts now face competition 64 00:04:14,520 --> 00:04:19,560 Speaker 1: for girls in the scouting type of activities, whereas before 65 00:04:20,160 --> 00:04:24,640 Speaker 1: they had the market to themselves, essentially for scouting type 66 00:04:24,640 --> 00:04:29,640 Speaker 1: activity for girls. He described the suit as serious, contentious, 67 00:04:29,720 --> 00:04:35,200 Speaker 1: and expensive litigation. Is this kind of litigation particularly expensive 68 00:04:35,279 --> 00:04:40,280 Speaker 1: compared to others? It's not necessarily expensive compared to other 69 00:04:41,160 --> 00:04:45,760 Speaker 1: business disputes. I would say that that patent litigation is 70 00:04:45,920 --> 00:04:50,200 Speaker 1: much more expensive than trademark litigation in general. But I 71 00:04:50,240 --> 00:04:53,320 Speaker 1: think he was commenting more on the fact that it 72 00:04:53,440 --> 00:04:58,760 Speaker 1: was contentious, that the two organizations don't seem to get 73 00:04:58,760 --> 00:05:02,400 Speaker 1: along very well and don't seem to like each other 74 00:05:02,520 --> 00:05:06,120 Speaker 1: very much, at least in court. The situation does seem 75 00:05:06,200 --> 00:05:09,120 Speaker 1: confusing to me, I mean, to the girls and the 76 00:05:09,160 --> 00:05:13,120 Speaker 1: boy Scouts also called themselves Girl Scouts, and doesn't this 77 00:05:13,240 --> 00:05:16,240 Speaker 1: erode the Girl Scouts brand. Do you think the judge 78 00:05:16,279 --> 00:05:19,880 Speaker 1: was right here? It's difficult to say. I think the 79 00:05:19,960 --> 00:05:23,359 Speaker 1: judge's basic point is valid that the words Scouts and 80 00:05:23,520 --> 00:05:27,880 Speaker 1: Scouting are not associated uniquely with the Girl Scouts, they 81 00:05:27,880 --> 00:05:32,599 Speaker 1: are associated with both organizations. The judge acknowledged that there 82 00:05:32,880 --> 00:05:36,400 Speaker 1: has been confusion, but he said that that confusion was 83 00:05:36,440 --> 00:05:40,320 Speaker 1: pre existing, that even before the Boy Scouts started using 84 00:05:40,360 --> 00:05:44,600 Speaker 1: Scouting as its own term, that people were confused about 85 00:05:44,640 --> 00:05:47,400 Speaker 1: the relationships between the Boy Scouts and the Girl Scouts, 86 00:05:47,440 --> 00:05:50,600 Speaker 1: So that pre existing confusion wasn't made any worse in 87 00:05:50,720 --> 00:05:54,440 Speaker 1: ten when the Boy Scouts went co ed. But I 88 00:05:54,480 --> 00:05:58,640 Speaker 1: do think the judge gave little consideration to a couple 89 00:05:58,720 --> 00:06:02,400 Speaker 1: of theories that might have deserved more scrutiny. One of 90 00:06:02,400 --> 00:06:06,440 Speaker 1: them is something called initial interest confusion. That is, if 91 00:06:06,480 --> 00:06:11,280 Speaker 1: confusion leads you to consider one organization thinking that it's 92 00:06:11,320 --> 00:06:14,720 Speaker 1: associated with the other, even if that confusion is dispelled 93 00:06:14,760 --> 00:06:17,680 Speaker 1: by the time that you actually fork over any money 94 00:06:17,800 --> 00:06:21,359 Speaker 1: or decide to join the organization. There are some courts 95 00:06:21,440 --> 00:06:25,360 Speaker 1: that recognize this theory of initial interest confusion. You're not 96 00:06:25,440 --> 00:06:28,520 Speaker 1: allowed to do something that would confuse consumers at the outset, 97 00:06:28,880 --> 00:06:32,120 Speaker 1: even if by the time they've purchased something, they understand 98 00:06:32,120 --> 00:06:35,760 Speaker 1: what's going on, and the court is implicitly dismissing that 99 00:06:35,920 --> 00:06:39,800 Speaker 1: he says, Look, people are careful here. They investigate which 100 00:06:39,920 --> 00:06:43,120 Speaker 1: organization they're joining before they actually joined, so that even 101 00:06:43,160 --> 00:06:45,280 Speaker 1: if they're confused at the outset, by the time they 102 00:06:45,360 --> 00:06:48,240 Speaker 1: join an organization, they know who they're dealing with. And 103 00:06:48,320 --> 00:06:52,080 Speaker 1: that might be true, but he hasn't really acknowledged this 104 00:06:52,200 --> 00:06:57,120 Speaker 1: theory of initial interest confusion any other theories that he missed. 105 00:06:58,839 --> 00:07:04,640 Speaker 1: So the Girl Scouts argued that several of the local 106 00:07:05,800 --> 00:07:10,920 Speaker 1: Boy Scout organizations have been using the term girls in 107 00:07:11,000 --> 00:07:13,760 Speaker 1: connection with Scouting in a way that might be confusing. 108 00:07:14,560 --> 00:07:18,640 Speaker 1: So they talk about boys and girl Scouts who are 109 00:07:18,680 --> 00:07:22,360 Speaker 1: invited to join, so that the phrase girl Scouts appears 110 00:07:22,400 --> 00:07:25,840 Speaker 1: in the advertisement. And there were several examples of these 111 00:07:26,240 --> 00:07:30,520 Speaker 1: potentially confusing advertisements in the complaint, and the judge held 112 00:07:30,680 --> 00:07:35,880 Speaker 1: that the Boy Scout National Organization was not liable for 113 00:07:36,040 --> 00:07:39,600 Speaker 1: any advertisements that might have been placed by some of 114 00:07:39,640 --> 00:07:44,880 Speaker 1: the local Scout troops. And it strikes me that the 115 00:07:44,920 --> 00:07:49,280 Speaker 1: discussion of whether the national organization should be held responsible 116 00:07:49,320 --> 00:07:52,200 Speaker 1: for what the local troops do was a little thin. 117 00:07:52,640 --> 00:07:55,760 Speaker 1: I agree that they're not necessarily a partnership, that's sort 118 00:07:55,800 --> 00:07:59,560 Speaker 1: of more of a franchise relationship, but one could imagine 119 00:07:59,560 --> 00:08:03,280 Speaker 1: a court saying there should be some vicarious liability here. 120 00:08:03,920 --> 00:08:08,040 Speaker 1: You should try to exercise more control over what your 121 00:08:08,160 --> 00:08:11,480 Speaker 1: local troops are saying and how they are using the 122 00:08:11,600 --> 00:08:15,320 Speaker 1: term scouting when they are recruiting girls. That's my question. 123 00:08:15,880 --> 00:08:19,080 Speaker 1: So are the Boy Scouts suppose in their you know, 124 00:08:19,120 --> 00:08:22,600 Speaker 1: their literature from the national organization to use the word 125 00:08:22,640 --> 00:08:26,160 Speaker 1: girl Scouts? Are they allowed to do that? Now? No, 126 00:08:26,960 --> 00:08:32,040 Speaker 1: Girl Scouts is still exclusive property of the Girl Scouts organization, 127 00:08:32,720 --> 00:08:35,600 Speaker 1: So the Boy Scouts should not be using the term 128 00:08:35,679 --> 00:08:40,320 Speaker 1: girls just before scouts in the phrase girl Scouts. But 129 00:08:40,400 --> 00:08:43,400 Speaker 1: they can refer to scouting, and they can refer to 130 00:08:43,520 --> 00:08:46,240 Speaker 1: girls so long as they do not combine them in 131 00:08:46,240 --> 00:08:50,439 Speaker 1: a way that suggests they are affiliated with the Girl Scouts. Now, 132 00:08:50,559 --> 00:08:53,240 Speaker 1: the court did not issue a court order to that effect. 133 00:08:53,720 --> 00:08:56,880 Speaker 1: The Girl Scouts have lost this lawsuit, But what they 134 00:08:56,880 --> 00:08:59,960 Speaker 1: were complaining about was the use of the word Scouting 135 00:09:00,040 --> 00:09:05,000 Speaker 1: by itself, so that claim is god. I'm sure that 136 00:09:05,080 --> 00:09:09,840 Speaker 1: if individual troops are still using girl Scouts together as 137 00:09:09,880 --> 00:09:15,040 Speaker 1: a phrase, they will find themselves in legal trouble. But 138 00:09:15,160 --> 00:09:19,120 Speaker 1: the national organization has been discouraging that practice. And what 139 00:09:19,200 --> 00:09:24,960 Speaker 1: about the Girl Scouts claim? Of trademark delution. Delution is 140 00:09:25,000 --> 00:09:27,240 Speaker 1: about harm to the mark owner. Will your mark be 141 00:09:27,320 --> 00:09:33,960 Speaker 1: tarnished by a potential association with another similar mark. There 142 00:09:34,000 --> 00:09:37,240 Speaker 1: are two problems here. The Boy Scouts as an organization 143 00:09:37,280 --> 00:09:40,360 Speaker 1: has existed for a long time, and delution requires that 144 00:09:40,440 --> 00:09:44,360 Speaker 1: they begin using a mark after the other mark has 145 00:09:44,400 --> 00:09:49,160 Speaker 1: become famous, which isn't the case here. However, the judge 146 00:09:49,760 --> 00:09:53,040 Speaker 1: used the wrong test for analyzing whether there was a 147 00:09:53,120 --> 00:09:56,960 Speaker 1: likelihood of delution. He used the six factor tests that's 148 00:09:57,080 --> 00:10:00,520 Speaker 1: used in New York law instead of looking at the 149 00:10:00,640 --> 00:10:04,760 Speaker 1: different six factor test that's used in federal law, so 150 00:10:05,840 --> 00:10:09,880 Speaker 1: that portion of the analysis, again is rather weak. Might 151 00:10:09,960 --> 00:10:15,320 Speaker 1: provide a ground for remanding reconsider the delustion claim, but 152 00:10:15,440 --> 00:10:19,640 Speaker 1: you still have the same basic problem of Girl Scouts 153 00:10:19,840 --> 00:10:24,120 Speaker 1: is a distinctive term, but scouting by itself is not. 154 00:10:25,000 --> 00:10:27,320 Speaker 1: Do you think that this should have gone to a 155 00:10:27,440 --> 00:10:30,720 Speaker 1: jury to decide this instead of the judge deciding it. 156 00:10:31,360 --> 00:10:33,840 Speaker 1: I think it is a plausible claim that a jury 157 00:10:33,920 --> 00:10:37,640 Speaker 1: should have decided this. The difficulty would be in instructing 158 00:10:37,640 --> 00:10:41,000 Speaker 1: the jury that the Boy Scouts are entitled to use 159 00:10:41,000 --> 00:10:44,240 Speaker 1: the word scouting by itself, and then one would be 160 00:10:44,280 --> 00:10:48,560 Speaker 1: asking in the instances in which girls and Scouts have 161 00:10:48,640 --> 00:10:53,640 Speaker 1: been used together? Was the national organization responsible for that? 162 00:10:53,640 --> 00:10:58,560 Speaker 1: That's a very tricky jury instruction to craft, But it 163 00:10:58,640 --> 00:11:03,439 Speaker 1: strikes me that on appeal this isn't a slam dunk. 164 00:11:04,160 --> 00:11:06,200 Speaker 1: It may very well be that the Girl Scouts are 165 00:11:06,240 --> 00:11:09,439 Speaker 1: still going to lose because of the release they were seeking. 166 00:11:09,559 --> 00:11:12,240 Speaker 1: They didn't want boy Scouts to use the word Scouts 167 00:11:12,280 --> 00:11:15,760 Speaker 1: at all without the word boy, and I think that's 168 00:11:15,760 --> 00:11:20,200 Speaker 1: a weak claim. But the claim that the national organization 169 00:11:20,240 --> 00:11:24,400 Speaker 1: should be responsible when the local clubs use Girl Scouts 170 00:11:24,440 --> 00:11:30,040 Speaker 1: together as a phrase strikes me as having greater purchase. 171 00:11:30,880 --> 00:11:34,680 Speaker 1: The Boy Scouts are in Delaware right now, I think 172 00:11:35,440 --> 00:11:39,920 Speaker 1: filing for bankruptcy protection does that play into this anyway? 173 00:11:39,960 --> 00:11:42,560 Speaker 1: Does that mean they'll have less money for appeals or 174 00:11:43,200 --> 00:11:47,839 Speaker 1: anything like that. So the lawsuit was actually delayed by 175 00:11:47,880 --> 00:11:53,280 Speaker 1: bankruptcy protection. When an organization files for bankruptcy, any lawsuits 176 00:11:53,320 --> 00:11:57,160 Speaker 1: that they are involved in our automatically stayed until you 177 00:11:57,200 --> 00:12:00,520 Speaker 1: can get the bankruptcy court to declare that it okay 178 00:12:00,520 --> 00:12:03,960 Speaker 1: for the lawsuit to proceed. So there was a delay 179 00:12:04,080 --> 00:12:07,560 Speaker 1: because of the bankruptcy, but the bankruptcy court allowed this 180 00:12:07,640 --> 00:12:11,640 Speaker 1: to go ahead, so I imagine the appeals we prosecuted 181 00:12:11,679 --> 00:12:16,680 Speaker 1: in the ordinary course. Thanks Tyler. That's Professor Tyler Ochoa 182 00:12:16,720 --> 00:12:20,600 Speaker 1: of Santa Clara University School of Law. Coming up next, 183 00:12:21,040 --> 00:12:26,840 Speaker 1: the surgeon Seizures of Cryptocurrencies has investigators hunting for passwords. 184 00:12:27,200 --> 00:12:30,840 Speaker 1: I'm June Grosso and you're listening to Bloomberg. Thanks Tyler. 185 00:12:31,120 --> 00:12:35,120 Speaker 1: That's Professor Tyler o'choa of Santa Clara University Law School. 186 00:12:35,440 --> 00:12:37,720 Speaker 1: And that's it for this edition of The Bloomberg Law Show. 187 00:12:38,080 --> 00:12:40,560 Speaker 1: Remember you can always get the latest legal news honor 188 00:12:40,600 --> 00:12:44,720 Speaker 1: Bloomberg Law Podcast. You can find them on Apple Podcasts, Spotify, 189 00:12:44,960 --> 00:12:50,000 Speaker 1: and at www Dot Bloomberg dot com, slash podcast Slash Law, 190 00:12:50,400 --> 00:12:53,000 Speaker 1: and remember to tune into The Bloomberg Law Show every 191 00:12:53,040 --> 00:12:56,480 Speaker 1: week night at ten BM Wall Street Time. I'm June 192 00:12:56,480 --> 00:13:01,240 Speaker 1: Grosso and you're listening to Bloomberg fo