The Case Formerly Known As Lee v. Tam

Trademark Law

Today, the Supreme Court of the United States issued its long-anticipated opinion in the case of Matal v. Tam (no longer Lee v. Tam since the recent resignation of Michelle Lee from her position as Director of the USPTO), after holding oral argument in the case in January of this year. For more background on my thoughts on the case and some of its prior procedural history, see my previous posts here and here.

The ultimate question that Tam raised was whether the clause of section 2(a) of the Lanham Act which prohibits federal registration to trademarks “which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute,” violates the Free Speech Clause of the Constitution.

Today, SCOTUS answered that question with a resounding yes.

The majority opinion, authored by Justice Alito, held that the disparagement clause of section 2(a) is unconstitutional as it “offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.” (Note that some commentators are likely to take issue with use of the word offend. This is fair, as ‘disparagement’ and ‘offense’ are distinct concepts here.)

The majority first dismissed the rather weak argument asserted by Tam that the disparagement clause does not extend to marks that disparage racial or ethnic groups, and The Slants are therefore exempt from the provision.

The Court then went on to explain that trademarks are private speech, not government speech, with the quite memorable line “if the federal registration of a trademark makes the mark government speech, the Federal Government is babbling prodigiously and incoherently.” No, the Federal Government is not telling you to “Just Do It”.*

Additionally, in the majority view, trademarks are not a form of government subsidy, nor should they be subjected to their own “government program doctrine”.

In what I expect to be a point of contention with many, the Court’s opinion fails to answer the question of whether trademarks are commercial speech. The Court reasons that even if trademarks are commercial speech, the disparagement clause would still not survive the “relaxed scrutiny outlined in Central Hudson. . .”. This is because the clause is easily classified as viewpoint discrimination and seeks to regulate trademarks far more broadly than necessary.

In a concurring opinion, Justice Kennedy (joined by Justices Ginsburg, Sotomayor, and Kagan), further explains that the disparagement provision constitutes viewpoint discrimination. Justice Kennedy explains that “The central purpose of trademark registration is to facilitate source identification.” And that “whether a mark is disparaging bears no plausible relation to that goal.”

Justice Thomas also wrote a concurrence in which he asserts that strict scrutiny ought to apply in any instance where “the government seeks to restrict truthful speech in order to suppress the ideas it conveys.”

As for my thoughts, having spent well over two years now researching and debating the issue with anyone willing to listen, I am quite pleased with the ultimate decision of the Court. However, I find at least one key question went unanswered: the “no-use barred” argument. Past challenges to the Constitutionality of 2(a) have failed because courts have reasoned that a denial of registration is not a denial of use. Trademark owners are still very much entitled to use their unregistered trademarks. While I firmly believe that a denial of registration creates a financial disincentive that makes speech more difficult though not barring it outright, I would have liked to see some guidance from the highest court on this issue.

In the aftermath of Tam, perhaps we will see more disparaging trademarks making their way into the streams of commerce. Perhaps we will see future litigation over the related “scandalous” and “immoral” provisions. But I believe that the most important thing to remember is that just because the First Amendment prevents government restrictions on speech does not relieve citizens of their responsibility to consider the effects of their words. Just because something can be said does not necessarily mean that it should be said. I’m looking at you, Washington Redskins.

* You can read the full opinion here.


March (TM) Madness

Trademark Law

This week I filled out my bracket for the NCAA’s Men’s Basketball Tournament based entirely on my incredibly limited knowledge of basketball and my incredible love for a certain school where I got my law degree (Go Nova!). As is only fitting, I shall present my Final Four predictions via registered trademarks that the universities either now own or have since abandoned.

Drum roll please. . .



Any guesses on who I have winning the whole thing?

Note: The United States Patent and Trademark Office appreciates being credited with content gleaned from their site (and rightly so). So, thank you, USPTO!

SCOTUS & The Slants 

Trademark Law

On September 29, 2016, the Supreme Court of the United States granted certiorari in the case of Lee v. Tam – the appeal from the CAFC decision in In Re Tam, which struck down the disparagement provision of Section 2(a) of the Lanham Act as violating the First Amendment. The Supreme Court declined to hear the Washington Redskins’ (procedurally unorthodox) appeal as well, despite the football team’s insistence that they were better situated to argue the case.
The two cases present slightly different issues (the Redskins had their previously-registered mark cancelled while The Slants were denied registration at the outset) but are nevertheless linked. Should The Slants prevail and should the disparagement provision be deemed unconstitutional, the result will be a victory for the Redskins as well.
The granting of certiorari reignited debate amongst trademark commentators as to the merits of the case. In observing this, I can discern two primary issues that seem to become blurred as they are debated.
The first issue is the constitutional issue, the legal issue. Does the disparagement provision violate the First Amendment by denying trademark registration to marks which may disparage others? What is the proper legal test or framework to analyze the issue? Are trademarks purely commercial speech? What are the purposes of constricting the protection of commercial speech?
The second issue is the social, cultural, policy issue. Should the government be placing a seal of approval by way of the ® symbol on disparaging marks? What is the intent of the mark owner? What does it mean to reclaim a racial slur? What is the context of the mark? Is it right to name a band after a racial slur? Is it right to use Native Americans and a racial slur as branding for a football team?
It’s my contention that the issues are separate. I firmly believe that the first issue and the questions of constitutionality are all that may be properly considered by the Supreme Court here. However, the second issue should not be ignored. The social impact of words and phrases is an issue that the public should debate and that consumers should consider when deciding whether to attend concerts or football games.
First Amendment cases will almost always concern controversial speech by nature, but the legal and social issues can still be extricated from each other and the answer to one does not necessarily influence the answer to another. The conclusions that the Redskins mark is disparaging to Native Americans and that Section 2(a) is unconstitutional are not in conflict with each other. Should the disparagement provision be upheld, the social issue will continue to be blended with the legal issue in the Patent & Trademark Office. However, for now, the intentions of mark owners ought to be irrelevant in the Supreme Court, but openly discussed by the public.

Tweets & Trademarks & Team USA

Trademark Law

While the 2016 Summer Olympics in Rio came to a close at the end of last month, intellectual property conflicts arising out of the Games may just be beginning.

The United States Olympic Committee (USOC) has been reported as having been strictly enforcing their trademark rights via cease and desist letters. These C&Ds are warning non-sponsor companies to refrain from posting about the Olympics on their social media accounts – even when non-sponsors companies are simply tweeting out good luck to athletes or commenting on the Trials’ or Games’ results. Many of the tweets USOC would like to find actionable include hashtags such as “#RIO2016”, “#TEAMUSA”, and “#RIOREADY”.*

The USOC’s trademark rights are governed by the Ted Stevens Olympic and Amateur Sports Act, codified at 36 U.S. Code Section 220506. Under this act, the USOC has the exclusive rights to use the name “United States Olympic Committee”, the symbols of the committee’s events, the emblem of the committee, and the words “Olympic” and “Olympiad” (among others). See the USOC’s brand usage guidelines for more information. The act provides a cause of action against anyone who – without consent – uses these protected marks “for the purpose of trade, to induce the sale of goods or services” in such a way that the use tends to cause confusion or mistake, to deceive, or to falsely suggest a connection with the corporation or the corporation’s events.

Companies targeted by the USOC may dispute the elements of the claim – by claiming that the use was not for the purpose of trade, for example. Companies may also raise the defense of fair use.

There are two primary fair use defenses in trademark law: descriptive fair use and nominative fair use. Descriptive fair use is the defendant’s use of a plaintiff’s trademark in a non-trademark way. Nominative fair use arises where a defendant uses a plaintiff’s trademark to refer to the plaintiff’s goods or services – usually for the purpose of comparative advertising – and the defendant does nothing to suggest endorsement or sponsorship by the plaintiff.**

While it would be naive to think that companies tweet about current events with no expectation that their words will result in increased sales or, at the very least, good will of the company, the line between noncommercial comment and advertising seems hard to discern. In today’s social media driven world, the Internet is a valuable marketplace quite unlike storefronts or print advertising. As such, courts will have to evaluate claims of confusion as to source or endorsement with careful consideration of the context of the Internet and social media. While I believe companies should surely be allowed to comment upon current events without fear of an infringement lawsuit, I also recognize that speech by companies seems necessarily commercial and such comment has the potential to undermine the right of trademark owners to license their marks and receive sponsorship revenue.

Whether the C&Ds issued by USOC will evolve into lawsuits remains to be seen (at the time  I’m writing this post, anyway). However, it seems inevitable that the same issues will arise again in February 2017 when #superbowlLI tweets start making their way onto Twitter feeds.

*The protectable nature of hashtags as trademarks is a separate but related issue that I hope to write about soon.

**The full nominative fair use test provides that: (i) the product or service in question must be one not readily identifiable without use of the trademark, (ii) only so much of the mark or marks may be used as is reasonably necessary to identify the product or service, and (iii) the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.

Apparently it’s National Rollercoaster Day

Patent Law

I think it is safe to say that my utter lack of a science or technical background forecloses me from being as interested in patents as I am in trademarks and copyrights. That’s not to say that patent specifications can’t be intriguing or even amusing – particularly when they detail early concepts for inventions that have long since been vastly improved upon.
As my calendar (which includes many holidays of questionable validity) informs me, today is “National Rollercoaster Day”. So please enjoy these excerpts from two early rollercoaster patents – No. 307,942 for a “Gravity Pleasure Road” and No. 310,966 for a “Roller Coasting Structure”.




Note: Patent drawings and accompanying text are typically not subject to copyright restrictions (and I am otherwise confident that my use of them here is fair). However, the United States Patent and Trademark Office appreciates being credited with content gleaned from their site (and rightly so). So, thank you, USPTO!

I Do Not Own This Content

Copyright Law

It is probably nearly impossible to search for a video clip (or, I supposed, anything) online without coming across some content that infringes another’s copyright. This is unsurprising, given the ease with which copyrighted material can be reproduced and uploaded. What is surprising is just how often infringers blatantly identify the content as violating copyright law while – presumably – believing that they are shielding themselves from any liability. You’ve seen it – YouTube videos of popular songs and video clips with captions that say some variation of “I do not own anything” or “All rights to the owners.” These “disclaimers” are nothing if not pervasive.

The Digital Millennium Copyright Act (DMCA) provides a “safe harbor” for online service providers (“OSPs”) such as YouTube. This safe harbor frees OSPs from copyright infringement liability for content posted by third party users provided the OSP complies with the DMCA’s provisions. The DMCA recognizes the enormous task that OSPs would face if they were required to completely eliminate any and all infringing content. As such, the DMCA encourages the removal of infringing material while not making OSPs absolutely liable in all instances. *

Now back to those “disclaimers”. I find myself wondering just what percentage of infringing material could be quickly and easily identified and removed from YouTube if the OSP simply took down every video with a caption such as “I own nothing” or “This ain’t mine” (my personal favorite). These “disclaimers” are virtually meaningless as anything but outright admissions of infringement. The idea that disclaimers such as these are legally relevant likely stems from two inter-related misconceptions in copyright law: that the law recognizes the moral right of attribution and that copyright infringement and plagiarism are interchangeable concepts.

In general, and contrary to common belief, the Copyright Act does not confer any moral rights.** The term “moral rights” is the designation given to rights in expressive works that recognize those works as an extension of an author’s personality. One such moral right that is not generally recognized in U.S. copyright law is the right of attribution, which relates to the author’s right to be acknowledged as the creator of the work. The high number of consumers of expressive works who mistakenly believe that attribution is an enforceable aspect of U.S. copyright law is likely due to the widespread confusion between plagiarism and copyright infringement, as well as general intuitions that authors ought to be credited for their work.

“Copyright infringement” encompasses legally actionable violations of an author’s exclusive rights granted by the Copyright Act. As attribution is not a right granted by U.S. copyright law, a potential infringer cannot avoid liability for reproductions or distributions merely by eschewing personal ownership of the work or including the actual author’s name.

On the other hand, plagiarism is an unethical – not necessarily illegal – use of a work that violates academic or professional standards. Plagiarism is not always clearly defined and guidelines may vary depending upon the relevant academic or professional field. However, quite often the user of a work may avoid plagiarizing that work by providing proper attribution and citation. For further discussion of the differences between infringement and plagiarism, I recommend this article from PlagiarismToday.

So those disclaimers? While it is certainly always a good idea to give credit where credit is due, they won’t insulate against a potential infringement suit if the content is being used in violation of United States copyright law.


*Admittedly, this may be an overly simplified view of the DMCA, which can be a rather controversial act and is worthy of several blog posts in and of itself. 

** The Visual Artists Rights Act is a narrow exception to this general rule but is not relevant in the context of audiovisual works posted online.

Copyright & the Creative Process

Copyright Law

I am currently in the process of writing my master’s thesis for my intellectual property LL.M. program. I have decided to research the ways in which copyright law affects (or doesn’t affect, be that the case) the creative process. While I am interested in learning about the ways in which the law interacts with all art forms, the focus of my thesis will be songwriting. Music presents unique copyright law considerations. Music is pervasive in our lives, copyright disputes among popular performers receive increased media attention, and in this digital age music can be reproduced and distributed with little effort.

I am hoping that my research will reveal ways in which songwriters learn about copyright law, and whether their understanding of the law affects the music that they create. I am also hoping to find out if there are any persistent misconceptions about the law that may affect the creative process.

While reading law review articles and case law may be sufficient research for some topics, I believe this topic would benefit from anecdotal evidence. I am still searching for more songwriters and entertainment/intellectual property attorneys to interview for this project. If you are interested or know someone who might be, please contact me! Even if you don’t fit in one of these categories, but have questions or comments about this topic, still feel free to contact me – I believe my thesis can only benefit by addressing a wide range of perspectives and opinions.

The Freedom of (Disparaging) Speech

Copyright Law

On December 22, 2015, the U.S. Court of Appeals for the Federal Circuit (CAFC) announced its decision in the trademark dispute of In re Tam. I must admit that I was extremely pleased to see the In re Tam result, because it confirmed something that I had long suspected: That the disparagement provision of Section 2(a) of the Lanham Act is an unconstitutional restriction on the freedom of speech.

Section 2(a) of the Lanham Act, codified at 15 U.S.C. §1052(a), provides that a trademark shall be refused registration on the Principal Register if it “consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage . . .persons, living or dead . . .or bring them into contempt or disrepute . . .” This provision is in direct conflict with the U.S. Constitution. The First Amendment commands that “Congress shall make no law . . .abridging the freedom of speech, or of the press.” The freedom of speech is by no means an unlimited freedom – for example, the government may regulate commercial speech. However, the CAFC decision reasons that the government cannot proscribe disparaging trademarks by arguing that to do so is a permissible restriction placed upon commercial speech. When trademarks are not being used to confuse or deceive consumers, they are perhaps better categorized as forms of expressive – not commercial – speech. Prohibitions on scandalous and immoral marks are forms of content-based restrictions on speech. The prohibition on disparaging marks takes it one step further as a viewpoint-based restriction on speech. In permitting one viewpoint on a topic, but disallowing another, the restriction skews public debate by granting one side an advantage at the expense of the opposing view. Disparaging marks are denied registration on the Principal Register while marks that serve to extol or glorify the same composite of the population may obtain registration.

Speaking of registration, registering a trademark on the Principal Register is not a prerequisite to use that mark. The cancellation or denial of registration does not prevent a mark owner from using the mark. This is perhaps the greatest hurdle to finding Section 2(a) unconstitutional. Past court decisions have held that the denial of registration does not suppress the expression in question. However, the CAFC correctly recognizes that registration of a trademark provides the mark owner with economic incentives and advantages. The owner of a registered trademark has the ability to bring additional causes of action against alleged infringers and has the possibility of recovering higher damages following litigation. Therefore, the economic burden of having an unregistered mark, or having a mark’s registration cancelled, effectively chills speech, if not preventing it outright.

The CAFC opinion makes it quite clear that its declaration of unconstitutionality applies only to the disparagement provision of Section 2(a), but the court predicts that the “immoral” and “scandalous” provisions are likely unconstitutional as well. The mandate that registered marks not be disparaging, immoral, or scandalous is completely unrelated to the consumer protection purpose of trademark law. For a discussion of the effect that these provisions have on trademarks representing the LGBT community, I recommend the article “Semiotics of the Scandalous and the Immoral and the Disparaging: Section 2(A) Trademark Law After Lawrence v. Texas” by Professor Llewellyn Gibbons.

Any discussion of disparaging trademarks would be incomplete without mention of the infamous Washington Redskins mark. The Redskins mark was found to be disparaging to Native Americans and was subsequently cancelled. Under Section 2(a)’s disparagement provision and relevant case law, this was undoubtedly the proper result – the Redskins mark is quite blatantly disparaging. The only problem is the glaring unconstitutionality of the disparagement provision.

The World Trademark Review recently reported that Simon Tam (founder of the rock band “The Slants” whose “disparaging” trademark was at issue in In re Tam) resents that the landmark decision immediately prompted comparisons to the Washington Redskins case. I don’t believe legal commentators are in the wrong in making these comparisons as the two cases are in similar legal situations and present similar legal issues. However, the two cases do present very different social and cultural issues. Tam is seeking to use “The Slants” mark to “reclaim” the disparaging phrase. Meanwhile, I don’t pretend to understand why the Washington Redskins continue to use their trademark, particularly in the face of fierce opposition.

Now do not misunderstand me – I don’t necessarily condone the use of disparaging trademarks. I imagine it’s not the best business decision to choose a trademark that offends and alienates a significant portion of the population. However, if the First Amendment is to have any meaning at all, it must protect a wide range of expressive speech – it must protect both the prejudice and the profound, and let public opinion have the final say.

Hello, Adele. Goodbye, Spotify.

Copyright Law

Last Thursday, before the release of her third studio album, recording artist Adele announced that her album, “25”, would not be made available on the streaming service Spotify.

Adele is not the first, or by any means the only, artist to pull their music from streaming services. Taylor Swift pulled her catalogue from Spotify last October. The Beatles and Bob Seger are also nowhere to be found on the streaming service. Some have predicted that Tidal artists such as Jay Z and Jason Aldean may also pull their music from competing streaming services. Garth Brooks takes his independence as a recording artist one step further and does not even offer his music for paid download via iTunes.

One place you will find these artists, however, is Pandora. This is because, under Section 114 of the Copyright Act, “non-interactive” digital music services can obtain compulsory licenses to transmit sound recordings. Non-interactive streaming services do not need the permission of the copyright owner to use their sound recordings – they need only comply with the statutory requirements. These requirements include limiting the number of plays from a specific album within any given three-hour time block and paying the royalty rate set forth by the Copyright Royalty Board. “Interactive” services will have to negotiate privately with the copyright owner, and may be denied a license to use the sound recording in question.

“Interactive” services are defined by the statute as services that either allow a user to receive a program specially created for that recipient, or one that delivers a specific sound recording upon request. It would appear at first glance that Pandora is absolutely interactive under the first prong of the definition. Pandora does not deliver specific songs on demand, but users can create programs specially tailored to their tastes. Pandora users can pick artists, songs, and genres and stream stations based on those choices. However, in 2009, a Second Circuit court held that a service quite similar to Pandora was “non-interactive” and therefore could take advantage of statutory licensing. This decision has been criticized as focusing less on the statutory definition and more on the consideration that this kind of streaming is less likely to replace actual album sales. Bolstered by this decision, a “non-interactive” service such as Pandora can pay lower royalty rates and maintain a larger catalogue than other music streaming services.

Responses to artists pulling their music from Spotify has been mixed. Some believe music should be freely accessible. Some believe streaming services do not appropriately value music and fail to fairly compensate artists. An incredibly popular artist such as Adele may wish to remove their albums from streaming in order to encourage customers to instead pay to own copies of the artist’s music. Newer and unknown artists may wish to license their sound recordings to streaming services in order to take advantage of the increased exposure to listeners who may not otherwise have heard of them.

At the end of the day, I believe the decision to stream or not to stream should lie with the artist. One could extensively list the pros and cons of music streaming, but perhaps the debate would be futile so long as the Copyright Act relies upon compulsory licensing. Compulsory licenses under Section 114 take the decision out of the artists’ hands when it comes to so-called “non-interactive” services such as Pandora. Perhaps these artists who have removed their music from Spotify wouldn’t do the same with Pandora. But the Copyright Act doesn’t even give them the option.

So About That Taylor Swift Lawsuit. . .

Copyright Law

By now I am certain everyone has heard about the recent copyright infringement suit filed against Taylor Swift over her song “Shake It Off“. I am even more certain that everyone has heard “Shake It Off” – probably too many times. Even though the complaint was dismissed last week by the district judge presiding over the case, I still find it worth mentioning.

On October 28, 2015, Jessie Braham (who also goes by “Jesse Graham”) filed a complaint in the Central District of California against Taylor Swift (and Sony, ATV Music Publishing, Big Machine, Shellback, and Matt Martin). Braham was not represented by an attorney. In his complaint, Braham accused Swift of infringing his intellectual property rights in his 2013 song “Haters Gone Hate.” The complaint stated that if Braham had not written his song, “Taylor Swift would not have written the song Shake It Off”. Braham requested 42 million dollars in damages and asked to receive songwriting credit on “any new copies being printed”. Exhibit A to the complaint was text from the website, in which Swift explains her inspiration for Shake It Off. This has the unintended effect of undermining Braham’s allegations that Swift stole the song from him. Braham also included in the complaint a copy of his copyright registration for “Haters Gone Hate”, which was filed with the U.S. Copyright Office in February 2013.

It is a testament to Swift’s considerable fame that this pro se lawsuit, which really had no likelihood of success on the merits, garnered as much media attention as it did. Indeed, the suit was short lived. On November 10, a judge for the Central District of California dismissed the complaint for failure to state a claim upon which relief may be granted.

To recover for copyright infringement, a plaintiff must show that he has ownership of a valid copyright, and that the defendant copied protected material from that work, violating one of the exclusive rights granted by the copyright act. Without direct evidence of copying, the plaintiff can establish that copying occurred by showing that the defendant plausibly had access to the copyrighted work and that the two works are substantially similar.

The court here found that Braham’s complaint was factually deficient and did not adequately state exactly which lyrics he claims Swift “stole”. However, it seems clear that Braham is suing over Swift’s use of the phrases “Players gonna play”, “Haters gonna hate” and “Fakers gonna fake”. Admittedly, these phrases do appear in both songs in some form. However, as the court notes, even if Braham were able to show copying by Swift, “copying of something is not enough.” The copying must be of some protected material. Given the widespread use of the phrases in questions – both before and after Braham released his song – it would be difficult for Braham to show valid copyright ownership in these phrases in isolation.

Indeed, the phrase seems to transcend musical genre. In 2000, R&B group 3LW released their song “Playas Gon’ Play”. In 2014, country artist Eric Church used the phrases in his song “The Outsiders”. And of course, Taylor Swift used them in her pop song “Shake It Off”.

The court here did not dismiss the lawsuit with prejudice – Braham can still re-write and re-file the complaint and try again. However, the court warns that given the history of the phrases in question, he should reconsider claiming that they are original to him, or risk being subject to Rule 11 sanctions for making baseless claims.

When I look at Braham’s complaint in this case, I have to wonder what his intentions were in pursuing legal action. Was this a nuisance lawsuit filed in hopes of receiving some form of settlement or increased exposure? Or was this a case of an artist unfamiliar with copyright law who genuinely believed he had a cause of action but could not afford legal counsel to advise him otherwise? From what I have read, public opinion seems to suggest that the former. But I would like to keep an open mind.