EMI has aggressively gone after numerous other web sites and publications since 1999, including Carnegie Mellon University for their newsletter "The Entrepreneur", Entrepreneurs.com, Ernst & Young's Entrepreneur Of The Year program, Entrepreneur Network, Entrepreneur Books, Young Entrepreneur (now Y&E), Asian Entrepreneur (now Asian Enterprise), and Publishing Entrepreneur (now Independent Publisher). Several backed down, rather than facing long and costly legal battles, but Smith and others have stood their ground. Smith's case is the first one to come to trial.
At the outset of the case, EMI requested a summary judgment, which was granted. Smith appealed, and an extensive, detailed ruling by the appeals court remanded the case to the lower court for trial. In that ruling, the appeals court stated that EMI's mark is weak, as it is a word in common usage, with no synonym, and is descriptive of both the content and the target readership of the magazine. In spite of the clear ruling of the appellate court, Judge Cooper stated in her decision that the Entrepreneur Magazine mark was a strong one. This flies in the face of precedents in the magazine industry, in which the topic is usually a key part of the name. For example, "Golf" and "Golf Illustrated" peacefully co-exist, as do "Games" and "Computer Games".
The appellate court's ruling on the initial appeal of the summary judgment states: "Although EMI has the exclusive right to use the trademark "ENTREPRENEUR" to identify the products described in its registration, trademark law does not allow EMI to appropriate the word "entrepreneur" for its exclusive use. The descriptive nature and common, necessary uses of the word "entrepreneur" require that courts exercise caution in extending the scope of protection to which the mark is entitled."
Because a trademark only protects against use for similar products and services, two key factors in EMI's case are their claim that they now provide similar services to EntrepreneurPR, and that Smith produced a publication called "Entrepreneur Illustrated" that was likely to be confused with Entrepreneur Magazine. Regarding the claim of similarity of service offerings, EMI's claim hinges on the fact that PRNewsWire.com an online wire service, is now a major advertiser, and that there could therefore be confusion with EntrepreneurPR, a public relations firm. An advertiser!?! Regarding "Entrepreneur Illustrated" -- this publication was not a magazine, but a promotional piece on several of EntrepreneurPR's clients that was sent in limited distribution to various media. Again, difficult to confuse with Entrepreneur Magazine, and again, well within the established acceptable naming practices in the the magazine industry.
Smith is not overly surprised about the outcome. "It's the same judge the U.S. Court of Appeals unanimously overturned on this case before, so I wasn't all that surprised by her latest ruling. Although it was fairly surprising how completely she ignored the U.S. Court of Appeals ruling, especially since it so clearly instructed her on how she was supposed to have ruled on this case."
The great irony in all of this? As a result of the backlash from the small business community, EMI, who has spent in the "high six figures" on this case, has probably done far more damage than that plus the awarded damages to themselves in terms of bad PR for them, while Smith, who has spent over $100,000 on the case to date, has received well in excess of that value in press coverage and other good publicity.