SHRM Threatens TLNT With Legal Action for Using the SHRM Logo

They say that no good deed goes unpunished. Perhaps they should say that no controversial news story goes legally unchallenged, either.

An attorney working for SHRM has sent a letter to TLNT’s parent company, ERE Media, demanding that we stop using the SHRM logo on the TLNT website. Despite the fact that the SHRM logo can be found in use on numerous websites all over the Internet, and that TLNT has used it on a number of other occasions (more on that later), SHRM has never made such a demand until we wrote about a new group of agitated SHRM members that the world’s largest HR organization probably wishes would just go away —  SHRM Members for Transparency.

Two weeks ago, I wrote here about the controversy surrounding the Society for Human Resource Management Board of Directors and SHRM Members for Transparency over concerns with what the group (made up of former SHRM executives, former Board members, and other prominent SHRM members) believes is the current Board’s lack of transparency on a number of issues.

This group was planning to launch a website to air their concerns publicly (it was supposed to be called improveshrm.org), but pulled back after receiving an e-mail from SHRM’s general counsel warning of possible legal action if they went ahead with the website as is. TLNT wrote about all of that, including a memo from Board Chair Robb Van Cleave to state council directors and chapter presidents questioning the actions of the Transparency group.

Well, the legal e-mail from SHRM seemed to do the trick, because SHRM Members for Transparency backed off and is rethinking its next step. SHRM’s legal maneuverings didn’t stop there, however, because that’s when it also fired off a legal rocket at TLNT and ERE Media.

SHRM’s claim: SHRM logo in TLNT articles is ‘misleading’ consumers

What’s the main issue SHRM is upset about? It’s that TLNT displayed “the federally protected SHRM SOCIETY FOR HUMAN RESOURCE MANAGEMENT… (logo) mark in an unauthorized manner.”

The legal demand letter was addressed to David Manaster, CEO of ERE Media, and came from Pamela C. Gavin, an attorney in Richmond, VA, and it came after phone calls to both me and Manaster from Henry Hart, SHRM’s chief legal counsel. Hart made the same demands on the phone that Gavin did in her letter:

SHRM has not authorized this use of its mark and is concerned that such use of its mark will mislead consumers into believing that SHRM is the source of, or has sponsored, approved or is affiliated with the content of the site. … We must insist that you immediately remove the SHRM logo from your website and confirm in writing that you have done so upon your receipt of this letter. Otherwise, we will be forced to advise SHRM to consider taking such additional legal measures as may be required to effect your compliance. Continued use of the SHRM Logo hereafter shall constitute willful infringement and may subject you to treble damages and attorneys fees.”

You can find the full letter from attorney Pamela Gavin, representing SHRM, here:

I’ve discussed this issue with David, and we have had other attorneys take a look at it, too, because we know that SHRM has invested a lot in its trademark and we are sensitive to that.

But it seems pretty clear to us that, despite SHRM’s legal objections, we utilized SHRM’s trademark on TLNT in a way that would invoke the “categorical exemption” that exists for all forms of news reporting and news commentary.

This post from the Citizen Media Law Project http://www.citmedialaw.org/legal-guide/using-trademarks-others spells it out:

Trademark law does not let a trademark owner exert its trademark rights to stop news reporting about it or its products or services. You see proof of this everyday on the front pages of newspapers, the homepages of news websites, and countless blogs. Mainstream reporters and non-traditional journalists routinely report on earnings announcements, job lay-offs, and accounting scandals without worrying that they are infringing or diluting the trademarks of the companies and organizations they report on. There are several legal bases for this result: there is no risk of confusion between the news source and the trademark owner; nominative fair use protects this use of the trademark owner’s mark; and the federal dilution statute expressly exempts “news reporting and news commentary” from a dilution claim. See 15 U.S.C. § 1125(c)(3)(B). As noted above, one court has held that a blogger’s critical commentary on a company qualified as “news reporting and news commentary.

Trademark law does not permit a trademark owner to use its trademark rights to silence commentary and criticism. As with news reporting, courts recognize the important First Amendment values at stake and usually deny efforts by trademark owners to encroach on legitimate commentary and criticism. There are several legal bases for this result: there is no risk of confusion between the commentator and the trademark owner, and nominative fair use may protect this use of the trademark owner’s mark. Additionally, courts are likely to find that your use of a trademark in commentary or criticism is “not in connection with a good or service” and “noncommercial” (the argument is especially strong for the latter category). But note that some courts may find your use of a trademark for criticism and commentary to be commercial if you host advertising or link to commercial websites. In any event, to defeat a trademark dilution claim, you do not even need to show that your use is noncommercial. The federal dilution statute creates a categorical exemption for “criticizing . . . or commenting upon the famous mark owner or the goods or services of the famous mark owner.” 15 U.S.C. § 1125(c)(3)(A)(ii).”

Logo is used by websites all over the Internet

You can find the SHRM logo being used in a great many websites that are not officially affiliated with SHRM all over the Internet, as we did in about 15 minutes on Google (including here, and also here and here, on this one and on that one, by this website and this other one, on popular ones and lesser ones, by websites you probably know of, and probably some here and here and here that you don’t). Some of these websites claim membership in SHRM, but many of us here at TLNT and ERE Media (including both me and David Manaster) are SHRM members, too.

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In fact, the SHRM logo has been used several times earlier this year on TLNT and ERE (including during the SHRM annual conference in San Diego) without any legal objections from SHRM (you can find those here, and here, and here, and here, and here, and here). Why make this demand now, after so many uses of the logo, without incident, on TLNT over so many months? And why does SHRM make this legal demand of just TLNT/ERE Media and not the many other websites using their logo in a similar manner?

We think the answer is simple: SHRM doesn’t want us writing about (and therefore giving legitimacy to) SHRM Members for Transparency. We believe that this legal demand from SHRM, like the e-mail that was sent from SHRM’s chief legal counsel to the group SHRM Members for Transparency, to be an attempt at legal intimidation through potential litigation, pure and simple. It’s an obvious and somewhat heavy-handed attempt to chill the debate (and any news coverage and commentary on TLNT) about the SHRM Board, its lack of transparency, and any attempts by outside groups to force a public discussion.

SHRM, like most large, bureaucratic organizations, is full of a lot of people who do many things — some good, some bad, some shortsighted. The SHRM Board mirrors this as well, and the internal debate that is going on within the organization is largely being led by people who used to have a great deal to say about how the organization operated: former SHRM executives, former Board members, former committee chairs, and others.

And one more thing: the notion that SHRM is concerned that the use of its logo in a news post on TLNT “will mislead consumers into believing that SHRM is the source of, or has sponsored, approved of or is affiliated with the content of the site,” as its lawyer claims, is ridiculous and laughable on its face — as anyone who has read news and commentary about SHRM on TLNT probably knows all too well.

TLNT declines SHRM’s legal request

Whether the SHRM Board likes it or not, the Board’s actions have fueled this debate. The lack of transparency and open discussion about what the Board is doing is the root cause, and it is not going to quietly go away because many of those in SHRM Members for Transparency seem to view it as a fight for the soul of the organization that they have invested so much in for so many years.

TLNT and ERE Media are now part of that debate as well, and we have chosen to stay the course and continue to use the SHRM logo in the news reporting and commentary of this story, as is our legal and First Amendment right. We decline SHRM’s legal request because we believe that SHRM has overreached in its legal demand to try to intimidate us and stop our ongoing reporting and commentary on this issue.

As I said before, David Manaster and I are both longtime SHRM members. We are not rabid SHRM haters, just people publishing information, news, and commentary about what is going on with the organization. We feel strongly that this is the right thing to do, and we will continue to do so.

We will also continue to use the SHRM logo in a manner consistent with fair use to publish news and commentary about the organization, both on TLNT.com and ERE.net, unless we are ordered by a court to stop doing so.

John Hollon is Editor-at-Large at ERE Media and was the founding Editor of TLNT.com. A longtime newspaper, magazine, and business journal editor, John has deep roots in the talent management space. He's the former Editor of Workforce Management magazine and workforce.com, served as Editor of RecruitingDaily, and was Vice President for Content at HR technology firm Checkster. An award-winning journalist, John has written extensively about HR, talent management, leadership, and smart business practices, including for the popular Fistful of Talent blog. Contact him at johnhollon@ere.net, connect with him on LinkedIn, or follow him on Twitter @johnhollon.

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19 Comments on “SHRM Threatens TLNT With Legal Action for Using the SHRM Logo

  1. If I was David I would clearly ignore the letter since I’m sure they don’t have a David Manister working there at ERE! Great use of SHRM funds (legal threats) and one reason why I will never become a SHRM member!

  2. For the sake of transparency, HR Bartender used the SHRM Logo with permission in my interview with then COO China Gorman. In no way did I use it simply because of my SHRM membership or any other affiliation with the organization. The logo was provided to me by SHRM just as the ERE.net and TLNT logos were provided by ERE in my interview with David Manaster. John, I think it would have been a “good deed” if TLNT had contacted me to confirm such prior to implying impropriety on my part. Needless to say, I’m very disappointed.

    1. That’s fair, Sharlyn. Our intent was not to show impropriety on your part, but to demonstrate that with a 15 minute google search we were able to find dozens of sites using the SHRM logo that were not affiliated with the organization and that SHRM is selectively threatening TLNT.

      In your case, you received the SHRM logo directly from them, but I highly doubt that all of the sites that we linked to are in a similar position.

    2. Sharlyn: I would certainly call you if there was any hint of impropriety surrounding your use of the SHRM logo, but there’s not. As David Manaster pointed out, the point wasn’t to take issue with any of the websites using the SHRM logo, but rather, to show how it is easily found on many different websites all over the Internet. My guess is that none of them have received a threatening letter from SHRM, and it shows just how selective SHRM is in enforcing and protecting their trademark. We believe SHRM is singling out TLNT because we are really the only one writing about the controversy and issues surrounding the group SHRM Members for Transparency. It is a pretty open and obvious attempt on the part of SHRM to silence us.

  3. Hey TLNT gang… I’m glad you’re around. I’m a longtime SHRM member, I don’t have a problem with your usage of the logo. I’ve used the logo on the HR Capitalist as well (one of your links), and it’s nice to know if I receive a cease and desist letter, I can simply say, “what Manaster/Hollon/ERE said” related to the legalities.

    Seriously, I won’t go on a rant about the silliness of the request. Instead, I’m going to focus on the positive and simply say that I’m glad that guys (and gals not noted here) like Manaster and Hollon are involved and reporting on our industry. We’re all better off for having you doing what you do, and that includes SHRM as well….

    Thanks – KD

  4. Bravo! Way to leverage social media in such an intelligent manner! Way to be fair and honest and transparent! Way to rally supporters to stand for what’s right and what’s just. Way to take a stand that you believe in and way to have lots of great suppporting evidence!!!

    I’ll say it again – BRAVO!!! I stand in support of you and your efforts!!

  5. The entire thing leaves me speechless, and frankly neither SHRM or the SHRM Transparency group are accomplishing a lot with the various and sundry threats of litigation and exposure…kinda feels like Washington beltway politics and discord have crept into the halls of Alexandria. It is disheartening and disappointing.

  6. Just a side note – “nominative use” certainly has a colorful legal history. The two main cases appear to involve New Kids on the Block and Playboy. Why didn’t I go to law school again?

  7. Good grief. Nice response.

    That can’t be the only story. What else did you guys do to get SHRM’s knickers in a bunch?

    1. They’ve certainly been unhappy with our coverage before:

      https://staging.tlnt.com/2010/07/27/shrm-ceo-lon-o%E2%80%99neil-is-departing/
      https://staging.tlnt.com/2010/08/30/shrm-board-quietly-and-secretly-votes-to-hike-pay-for-board-members/
      https://staging.tlnt.com/2010/09/02/shrm-raises-dues-on-the-heels-of-increase-in-board-pay/

      That being said, none of these issues warrant any sort of legal response (and you’ll notice in two of them, we used the trademarked logo).

  8. As others have rightly pointed out, I find the allocation of precious member dollars to external counsel another example of the obtuse and disconnected nature of this ongoing debate. Why not ship fuel canisters in your envelope as a means of igniting an already spreading fire into a raging and uncontrollable burn? What’s more, by hiding behind lawyers this organization continues to play wizard in their land of HR Oz without any obvious intent to pull back the curtain and answer the reasonable requests for complete and utter transparency. I post this comment as a soon-to-be-former member. Until new leadership emerges I am done with this organization.

  9. Jim Collins’ (Good to Great) newest book, How the Mighty Fall, suggests that organizations peak at the point where their leaders become arrogant. I think ‘Hubris’ is the proper word I’m searching for here. A word each member of SHRM’s board would benefit by looking up and using in a sentence.

  10. The tireless Logo Cop is supposed to be the protector of a brand. In this case it appears to be a hired gun whose actions can actually have the opposite effect. You can’t protect a body by blowing off limbs. ERE.com? TLNT.com? Maybe not “affiliated” in the legal sense but how many SHRM members are community members of all of the above. Or am I the only one?

  11. SHRM did the same thing to us a couple years ago when we posted associations that we belonged to on our website, despite the fact the logo was being used all over the internet. I applaud you for taking a stand and look forward to seeing how this plays out.

  12. The funniest thing happened to me over Thanksgiving.. I started to focus on petty things instead of the important ones like… focusing on relevant issues!
    Why do waste time on things that waste time? 🙁

  13. Being a competitor of one of SHRM’s products, we received a cease and desist letter from their attorney as well. The letter was delivered on Dec. 21st giving us 10 days to respond. Nice Christmas present! They insisted we remove all mention of SHRM from our website. We refused to do so.

    As an exhibitor at the SHRM Annual Conference we were given an opportunity to advertise in one of their publications. After entering into contract to run an ad, we’ve now been denied the advertising space. SHRM seems to be using scare tactics and membership dues to bully others.

    Having met several of SMFT members and knowing of their devotion to SHRM, it is unsettling to hear of their concerns and SHRM lack of response to this group.

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