By Gergana Miteva
Last week, one of MTV's Latin America distributors, Sam Panama Trading Co. (SPT), sued the network and its parent company Viacom in New York federal court for not registering MTV trademarks in Latin America where SPT had contracted to exploit them. Apparently, SPT was selling merchandise carrying MTV branding in Latin America, and while those trademarks are registered in the United States, they are allegedly not registered in the various countries in which SPT was operating, which prompted it to file a complaint seeking $30 million in damages.
Reportedly, SPT struck a deal with MTV Networks to distribute various clothing and luggage goods carrying MTV branding in 30 countries in Latin America and the Caribbean and only recently discovered that MTV had licensed out rights it had not registered, after getting in hot water with the local authorities. (http://www.hollywoodreporter.com/thr-esq/mtv-sued-30-million-allegedly-logo-latin-america-372929). According to the complaint, the merchandise was "seized by authorities as infringing upon the trademark, copyright and proprietary rights of third parties." This lawsuit has embarked upon the very hairy waters of international trademark protection, so hopefully it will have its day in court and the legal community will get the benefit of a federal judge entangling it.
MTV/Viacom is an unusual suspect to get into this kind of trouble over failing to secure international trademark rights. Small companies are more commonly seen finding themselves in this position because they do not have budgets to hire attorneys to do due diligence, and certainly not to hire in-house counsel. Further, there is then the cost of securing international trademark rights, which can run into the millions of dollars when adding up the filing fees for each country and local counsel for policing the marks. While the Madrid Protocol (http://www.wipo.int/madrid/en/, an international treaty allowing registration of marks in multiple countries with one filing), alleviates significantly the administrative burden of registration, the cost of the filing fees and policing are still substantial. Granting trademark rights is essentially granting a monopoly over the use of a certain name, image, and/or slogan in the marketplace of that country, so it is not surprising that nations place a high price to granting these rights, in particular to foreign companies.
Another point worth mentioning is that not registering the marks may have been a calculated risk for MTV, and the network may still pull out of this one with only a few bruises on its wallet. It is a bit hard to believe that this was merely an oversight on the part of MTV's savvy army of lawyers; it is more likely that the burden of cost and process of registering the marks outweighed the fear of getting sued. In the United States, the entity that first uses a mark in commerce obtains the rights to that mark, in most other countries, the mark belongs to the first to register it. It may well be the case that MTV's legal team did its research and determined that a brand as famous as MTV need not be registered in every country it is used, and MTV, as I am sure, does a good job excluding local entities with substantial public exposure from using it. However, most "first to use" countries tend to have a background in the British legal tradition, so there is a high likelihood that the Latin American countries, where SPT had problems, follow the "first to register" doctrine, vesting all rights to a mark in the entity which first registered it in that country, rather than the one which first used it in commerce.
Even if SPT has a chance of winning this or of getting a sweet settlement, a better route for asserting its rights might have been the preventive one - due diligence and indemnification. It is quite standard for the licensee to ensure that the intellectual property rights being assigned exist before signing a contract, especially as large as this one. In addition, every licensing agreement should obligate the licensor to warrant that it owns all the rights it is bestowing, and failing that, the indemnification clause would save the day for the licensee and MTV would have had to pick the tab contractually for SPT's legal troubles in Latin America.