What is an Amicus Curiae Brief often called an Amicus Brief?
Amicus Curiae (Latin) is defined by Webster’s Dictionary as “a person, not a party to the litigation, who volunteers or is invited by the court to give advice upon some matter pending before it”; also called “friend of the court”.

After 8 weeks of work in consultation with counsel, the appellant, and other advisors, MHEA President Ron P. Wacks initiated the filing of an Amicus Curiae Brief on behalf of MHEA. The Brief was filed by David Barry of Barry & Associates, San Francisco, CA on January 9, 2004 to the United States Court of Appeals for the Ninth Circuit (Central District of California) in case No. 03-56431, Entrepreneur Media, Inc, a California Corporation, Appellee vs. Scott Smith, dba EntrepreneurPR, Appellant, in support of the Appellant’s position. This was the only Amicus Curiae Brief filed in this appeal to date.

The Case
One of the most prominent national trademark cases and currently the biggest case over the word "entrepreneur" is EMI vs. Scott Smith (dba EntrepreneurPR). EMI sued Smith, in a battle that now spans over six years, to prevent him from using the word "entrepreneur" in the name of his Sacramento-based PR company (in any commercial manner, including our firm's name, website address or booklet of our client's press releases). Smith continues his fight to use the word "entrepreneur" for himself and for the rest of America as he claims no infringement by him of a commonly used term - one with no synonym which is used by hundreds of other entities. Smith's legal fees are in excess of $100,000, but EMI has spent around $1 million so far, outspending Smith by about 10-to-1.

This case involves the claim by EMI, publisher of Entrepreneur Magazine, of trademark infringement by EntrepreneurPR. Essentially, EMI apparently feels strongly that it has the right to monopolize and control the use of the word “entrepreneur” as it has received a trademark of the word. With this trademark, EMI also apparently feels that it deserves a high degree of protection against others who may use the word “entrepreneur” for any purpose - especially in a name or title in a business name, website address or publication name).. It is well known in the IP (intellectual property) world that it is fairly easy to obtain a trademark but it can be extremely difficult to defend it as in this case. Numerous sources cite that this is especially true in the case of the trademark protection of a word in common usage such as “entrepreneur” - a word for which there is no synonym.

EMI has also received trademark rights for the word "entrepreneur" in several areas outside of magazine publishing, including the areas of "computer programs," "educational services," "tradeshows," "seminars," "business services," and even for uses on the internet.

Others Attacked For Using “Entrepreneur”
There are numerous other entities which contain the word "entrepreneur" in their name many of which have been threatened or intimidated by EMI and/or been asked by EMI to “cease and desist” using the word "entrepreneur" in their name. These include:
• Female Entrepreneur Magazine who has recently changed its name to “Fempreneur” although it still uses the FemaleEntrepreneur.com domain
• Young Entrepreneur (YoungBiz, and no longer available by subscription)
• Asian Entrepreneur (now Asian Enterprise)
• Publishing Entrepreneur (now Independent Publisher)
• “Entrepreneur” (the Game), a great game to learn about business, was forced to stop distribution
Additional listings can be found at: http://www.entrepreneur.net/history1.html

Timeline
EMI and Scott Smith are now in the 4th round of the trial having heard three decisions previously. Essentially, EMI won round #1 in District Court; Scott Smith won round #2 on a unanimous ruling by a three judge panel on appeal; the matter was returned to (the original) District Court with instructions; EMI won round #3 as the District Court judge affirmed her earlier ruling and ignored the Appeals Court; round #4 is pending back in the U.S. Court of Appeals for the Ninth Circuit.

1) EMI initially filed suit against Scott Smith in United States District Court in 1998
2) the case was heard and the court ruled for EMI on August 29, 2000
3) Scott Smith filed for appeal on September 11, 2000
4) on September 23, 2000, the court denied Smith’s emergency motion to stay the judgment pending appeal
5) The appeal began when Smith filed Notice of Appeal on Sept. 11, 2000; oral arguments were on Sept 11, 2001 in the United States Court of Appeals for the Ninth Circuit
6) An Amicus Curiae brief was filed on November 20, 2000 by the California Small Business Association and California Small Business Roundtable in support of the Appellant’s (Scott Smith) position
7) MHEA filed a letter in support of the Amicus Curiae Brief In September 2001 just prior to the appeals case being heard; numerous other letters from around the U.S. were also filed in support
8) The Court of Appeals’ decision was filed on February 11, 2002; a three judge panel unanimously overturned the District Court’s ruling and sent the case back for retrial with instructions
9) on June 23, 2003, the United States District Court (with the same judge as in the first trial) ignored (in the opinion of many, including MHEA) the instructions of the U.S. Appeals Court and ruled in favor of EMI with in our opinion, an even worse decision as was found in the first trial
10) a Notice of Appeal was filed on August 15, 2003; the case will again be heard on (second) appeal in the United States Court of Appeals for the Ninth Circuit
11) on January 9, 2004 an Amicus Curiae Brief was filed in the United States Court of Appeals for the Ninth Circuit by the Minnesota Homebased Entrepreneurs Association in support of the Appellant’s position

The case will again be heard by the United States Court of Appeals for the Ninth Circuit later in 2004. There are several possible outcomes and it is possible that the case could eventually be heard by the United States Supreme Court. Numerous attorneys have indicated that the Supreme Court may hear the case (if petitioned to do so) as trademark law is weak in the areas of words and terms with common usage and the high court may want to make or clarify law.

Taking a Stand
Since MHEA was the only entity who filed an Amicus Brief in the second appeals case as of now, MHEA is effectively speaking on behalf of all businesses, organizations, and publications in the United States (and worldwide) which contain the word “entrepreneur” in their name as MHEA does. Since the District Court in the opinion of many, including MHEA has ignored the first Appeals Court decision and ruled in favor of EMI earlier in 2003, it puts all such entitles in jeopardy. In short, unless this case is overturned on appeal, as it was in February 2002, and the decision remains favorable to the Appellant, Scott Smith, any entity using the word “entrepreneur” is vulnerable to a cease and desist demand or other pressure from EMI to discontinue the use of the word and paying enormous damage awards, such as the $1.4 million damages award the judge ruled EntrepreneurPR must pay EMI.

Profile
There has been nationwide news coverage on the nearly six year old trial. Here is an excerpt from a March 2000 article from Forbes Magazine and Forbes.com at http://www.forbes.com/forbes/2000/0320/6507272a_print.html
“For the past six years Entrepreneur Media, the Irvine, Calif.-based parent of Entrepreneur, has protected its trademark name by going after small businesses that use the word "entrepreneur" in publications and on web sites. Smart business, no doubt. But crippling to some of the very people it purports to help.”

There are numerous other articles that have appeared in national magazines and major newspapers. Much of the trial information and background can be found at http://www.entrepreneur.net

Representation
In the preparation and filing of the Amicus Curiae Brief, MHEA obtained both Minnesota and California counsel. Serving as Minnesota counsel for MHEA was M. Gregory Simpson of Siegel, Brill, Greupner, Duffy & Foster, P.A., Minneapolis, MN. Mr. Simpson’s firm specializes in numerous areas including small business issues. Serving as California (and Ninth Circuit) counsel for MHEA was David Barry of Barry & Associates, San Francisco, CA. It is required by the court that an attorney must be admitted to practice in the Ninth Circuit in order to file documents or serve as counsel in an official capacity. Mr. Barry is currently involved in a similarly controversial case over the trademark cancellation of the word “realtor”. Both of these attorneys served MHEA extremely well and essentially pro bono. The finalization of the Brief language and much of the consultation occurred during the 3rd and 4th weeks of December. We are grateful.

Scott Smith at Expo 2004
Scott Smith, founder of EntrepreneurPR (now Bizstarz) and one of the top small business public relations professionals in the U.S. will join us as one of four featured speakers at the 6th annual Minnesota Small Business Expo & Conference at the Minneapolis Convention Center on March 31st. You will have the opportunity to hear him talk about small business PR and learn how you can improve yours. Scott will also update us on the case and answer questions. See his profile along with those of the other featured presenters at http://www.smallbusinessexpo.org

By Ron P. Wacks
President, Minnesota Homebased Entrepreneurs Association
http://www.mnhomebiz.org
Co-chair, Minnesota Small Business Expo & Conference
http://www.smallbusinessexpo.org
2003 US SBA Home-based Business Advocate of the Year for the Midwest Region