academia agriculture art books business models cities commons strategies conferences copyright law digital commons economics education enclosure enclosures environment finance free culture free software Germany government Great Britain history India international Internet land law localism market culture music ontology patents politics privatization public domain water
Who Owns the Prefix "Mc"?
Wed, 09/16/2009 - 23:00
In a rare setback for McDonald’s, a court has ruled that the fast-food chain does NOT have a trademark monopoly on the prefix "Mc." Congratulations are in order for McCurry Restaurant of Kuala Lumpur, Malaysia ("Home Food, Away From Home, Tasty and So Goood!") The eatery spent eight years trying to establish that the San Diego-based purveyor of fast food, with over 30,000 outlets in 100 countries, does not legally own the Irish prefix "Mc."
It’s sound crazy that anyone would have to go to court to be able to use a common prefix from the English language, albeit one that derived from the kilt-wearing cousins of English people. Still, given the drift of trademark law in the past few decades, this is a real accomplishment. It is relief to know that there is now a precedent for using "Mc" without inciting the wrath of McDonald’s lawyers. I was starting to worry that McDonald’s would soon start to enforce it trademark over the phrase, "I’m lovin’ it!"among the dozens of other marketing taglines that it "owns."
In a wide number of cases over the past twenty years, McDonald’s has sued or threatened lawsuits against restaurants named "McVegan," "McSushi" and "McMuffin," among others. It even sued a motel chain known as "McSleep" for trademark infringement, arguing that the hotel was trading on its name and potentially confusing customers about its corporate affiliation. This last case actually went to a federal court in 1988 (McDonald’s won), but in many if not most instances the mere threat of a lawsuit is enough to persuade mom-and-pop eateries to surrender, save on lawyers’ bills and change their names. Resistance is futile!
Now, in a remarkable turn-about that should cheer anyone who believes that language should be a commons, available to all so long as no commercial deceit is occurring, a Malaysian court has upheld the right of a Kuala Lumpur to retain its name and use "Mc" as a prefix.
The restaurant, which serves Indian and Malaysian food, argued that McDonald’s can’t own "Mc" because it didn’t create the prefix and that thousands of people around the world use the prefix in their surnames. The restaurant explained to the court that its name stands for "Malaysian Chicken Curry."
In upholding the restaurant’s claims, Judge Sri Ram said "the defendant’s presentation of its business is in a style and getup which is distinctly different from that of the plaintiff. It would have been different if McCurry Restaurant had offered to its customers, items that were labeled either the same as or similar to those sold by McDonald’s, for example McFish or McLamb."
According to its website, McCurry’s is "a 24 hour restaurant which serves authentic Malaysian and Indian dishes. It serves traditional dishes like teh tarik, roti canai, nasi lemak, nasi briyani, fish head curry, chicken tandoori, naan bread, tosai, chapaati and various chicken and mutton curry dishes."
It’s always gratifying when a brand name bully gets its come-uppance — and when our elemental rights to use our own language are vindicated. Now if only American courts will come to recognize such common sense. Currently U.S. courts sanction monopolies over words like "polo" (Ralph Lauren, which sued the U.S. Polo Association) and acronyms such as WWJD ("What Would Jesus Do?"), WWF (World Wildlife Fund, which sued the World Wrestling Federation), U2 (the band, which appropriated the name from the US military) and even the letter "O" (Oprah magazine, which sued a European soft-porn magazine that had the audacity to use the same letter).
Meanwhile, mega-corporations that can afford to retain small armies of litigators that then intimidate individuals and small businesses to surrender their claims over phrases, words and letters, claiming trademark violations even if the law would not uphold such a finding (such as the Village Voice’s attempts to force name changes of newspapers using the word "Voice.")
In this context, it’s important to celebrate what victories we can. All hail McCurry’s for its tenacity and ultimate triumph! And kudos to its use of the Web, our communications commons, as a way to announce its victory. If you’re ever in Kuala Lumpur, here’s a YouTube video of McCurry’s to guide your way.