Nonprofit Sues Journalist Nicholas Kristof

MANHATTAN (CN) - A charity for Chinese orphans sued Pulitzer Prize-winning New York Times journalist Nicholas Kristof, claiming he and his wife and others infringed on their Half the Sky trademark after agreeing not to do so.

Half The Sky Foundation is a nonprofit that provides training for caregivers and other services to help orphaned children in China. It claims that in 2008, "defendants embarked upon a course of conduct to appropriate plaintiff's mark and name Half The Sky in disregard of plaintiff's long-established rights [and] despite having previous knowledge of plaintiff and its use of its Half The Sky mark and name."

The foundation sued Half The Sky Movement LLC, Show of Force LLC, Force Film Foundation Inc., Fugitive Films LLC, Games For Change Inc., Kristof and his wife, Sheryl WuDunn.

Kristof is known for his work reporting from the Third World, including a series of articles in which he showed how easy it was to buy a slave in Sudan by doing it - and then releasing him.

Half The Sky Foundation claims that the defendants' use of its trademark will dilute its message and hurt its fund-raising and its work to raise public awareness of the treatment of Chinese orphans.

The complaint describes Kristof's group as a cross-media project to raise awareness of women's issues and improve the condition of women and girls.

The complaint states: "On February 13, 2008, a documentary producer purporting to work with defendants Kristof and WuDunn requested plaintiff to assign to defendants the domain names halfthesky.com and halfthesky.net for use in connection with an upcoming book by defendants Kristof and WuDunn, and for a series of short documentary films to be based on that book, both of which would be entitled Half The Sky."

The foundation says it denied that request and provided the defendants with information about its mission, its longstanding use of the trademark and name "Half The Sky," and the services provided under that mark.

"Despite plaintiff having informed defendants of plaintiff's longstanding and continuing use of its mark and name Half The Sky, upon information and belief, on or about July 21, 2008, more than five months after being told of plaintiff's rights in Half The Sky, defendants formed a New York limited Liability company under the name Half the Sky LLC," the complaint states.

In September 2009, the defendants published a book titled "Half The Sky."

Then, the foundation says, "On June 26, 2012, defendant, Show of Force, claiming to be working with defendants, Kristof and WuDunn, requested plaintiff's consent to use the name Half The Sky as the title of a two-part documentary, which Show of Force represented was scheduled to be shown on PBS, based on the book Kristof and WuDunn. Show of Force claimed that it could not get insurance coverage for airing the program with the title Half The Sky unless plaintiff consented to the used of that name in the broadcast series and supporting content."

The two side engaged in lengthy negotiations in which they agreed on a strict set of guidelines for defendants' use of the Half the Sky Mark and name to enable the title of the documentary to be chosen before the PBS deadline, the foundation says in the complaint.

Among other things, the foundation says, Kristof and his associates agreed to amend the name of their organization.

In addition, "plaintiff explicitly informed defendants that plaintiff did not approve defendants' use of the term Half The Sky in any other platform or materials apart from the one-time broadcast of the Documentary and defendant's website, or in any manner other than the specific uses" agreed upon during the negotiations, according to the complaint.

Despite this agreement, "Defendants ignored plaintiff's narrowly tailored consent to their use of the term Half The Sky ... and implemented a multi-platform marketing campaign centered on the Half The Sky mark and name," the complaint states.

The foundation claims the defendants solicited donations for numerous charities using the Half The Sky mark, displayed it prominently on their website, and used it for branding on flyers and on social media platforms, including Facebook, Twitter, Tumblr, Pinterest, Google+ and You Tube.

Finally, despite assurances the documentary would be shown on PBS only once, defendants "caused the documentary to be rebroadcast on PBS, on non-PBS television stations and other non U.S. television stations ... and continue to sell through their website and through amazon.com, newvideo.com, iTunes and other outlets version of the Documentary in DVD and electronic downloadable formats," according to the complaint.

The foundation want Kristof et al. enjoined from using the Half The Sky trademark beyond what the parties agreed in negotiations; to compel Kristof's group to change its name and disable its websites; to scrap all advertising and marketing efforts using the trademark, and compensatory, punitive and treble damages for trademark infringement and dilution.

The foundation is represented by Susan Progoff with Dorsey & Whitney.

(The plaintiffs may have a problem with the public domain on this one. Mao Zedong is believed to have coined the phrase "Women Hold Up Half the Sky" decades ago, and the phrase has appeared on lapel buttons, posters and other media since at least the 1970s.)

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