In the Courts: Johnson & Johnson vs the American Red Cross

• Author: Lisa A. Iverson
• Position: Member, Neal & McDevitt, LLC, and Anuradha Swaminathan,WIPO Communications and Public Outreach Division

Red Cross organizations use as their symbol a reversal of the colors of the Swiss national flag, in tribute to Henri Dunant and the other founders of the original organization in Geneva. It is an evocative symbol: medical aid on a basis of neutrality to warring sides on battlefields, visits to and monitoring of prisoners in camps and jails, distribution of parcels and letters to prisoners, exchange of prisoners and special missions bringing medical, nutritional and other emergency aid to both combatants and civilian populations in war zones, are some of the things that come to mind. The symbol suggests a humanitarian, non-profit-making image.

But it can also be a profit-making trademark, as for the company Johnson & Johnson (J&J). In the U.S. the company filed a lawsuit against the American Red Cross in August 2007, alleging trademark infringement. How was it possible for both parties to have used the same symbol from the late nineteenth century to 2007, apparently without effective challenge?

J&J began using the symbol in 1887, after it was first formally adopted in Switzerland in 1864. The American Red Cross was founded in 1881, receiving a Congressional Charter in 1900 which prohibited use of the symbol by others. Since J&J had been using it for thirteen years before this prohibition, the company was allowed to retain it, and claimed that in 1895 Clara Barton, founder of the American Red Cross, had agreed to the company's exclusive right to its use for its products (the "promissory estoppel" claim).

What changed the situation for J&J was that the Red Cross came to use the symbol on products it sold to consumers and that in 2004 it began to license other companies to use the symbol for products such as hand sanitizers, emergency and first aid kits which were in direct competition with J&J products. The objectives of the lawsuit were to prevent the Red Cross from using and licensing the symbol on first aid kits, safety gear and related products, to ensure the destruction of such products still in existence, and to obtain punitive damages and payment of J&J's legal costs.

U.S. District Judge J. Rakoff dismissed the "promissory estoppel" claim in November 2007, by ruling that the Red Cross never agreed to refrain from using the symbol for first aid, health, safety and emergency preparedness products. What remained was J&J's claim that the Red Cross violated federal law by licensing the symbol to...