Scandalous Material

On December 22, 2015, The United States Court of Appeals for the Federal Circuit weighed in on the question of politically correct speech in the context of trademark registrations. In In Re Tam, an applicant for a trademark challenged the U.S. Patent and Trademark Office’s rejection of his application on the grounds that the proposed mark was “scandalous” under Section 2(a) of the Lanham Act.


The mark in question,  THE SLANTS, is the name for a musical group based in the Pacific Northwest comprised of musicians of Asian-American background. The trademark application was submitted by Simon Tam, an Asian-American, who serves as lead singer for the band. Mr. Tam chose the name ironically and adopted it as an opportunity to take control of the term.


The Federal Circuit heard the dispute en banc and concluded that use of a trademark term is private commercial speech and therefore protected by the First Amendment. The government, the court writes, has no business trying to regulate it by denying the band a trademark.


In upholding Mr. Tam’s right to obtain Federal registration for his band name, the Federal Circuit determined unconstitutional that portion of Section 2(a) of the Lanham Act which bars the registration of “scandalous” words. In doing this, the Federal Circuit Court of Appeals overruled its own thirty year-old holding and struck down a portion of the Federal trademark law that has been unquestioned since adopted in 1946.


The Federal Circuit reasoned that First Amendment jurisprudence had matured in 2015 to the point where the Patent and Trademark Office should not be accepting or rejecting marks for registration based upon a subjective contextual determination of offensiveness. Suffice to say, without repeating them here, that the Trademark Office pattern in disapproving some trademark applications and approving others has been highly situational.  Indeed, there are countless trademark registrations incorporating the word “slant” which the Trademark Office has found to be not objectionable, applying their analysis subjectively.


The decision in In re Tam found that the Trademark Office’s application or Section 2(a) “does more than discriminate on the basis of topic. It also discriminates on the basis of message conveyed…” (Opinion at 19). In summary, the anti-disparagement provision of Section 2(a) was found to be “viewpoint discriminatory on its face” (Opinion at 21).


The Federal Circuit also rejected positions arguing that issuance of a Federal registration was somehow approval or certification by the U.S. Government for the views expressed in the trademark.


In re Tam may not be the final word on this matter, since the U.S. Supreme Court is unlikely to avoid taking a look at the issue, given the sixty years that the statute remained unchallenged and the implications for First Amendment law.


For more information about this or any trademark or IP issues, please contact Fred Frawley (


Trademark Office Reduces Fees for Application


Whilst counterintuitive, the United States Patent and Trademark Office has issued a new fee schedule, effective Jauary7 17, 2015, which actually has the effect of–in most cases–reducing the fees to be paid for applying for trademark protection. The new fees can be found here.

This restructuring of fees is driven by the Trademark Office’s desire to encourage electronic filing applications and follow-on communication with Trademark Office personnel . The new fees are designed to incent paperless filing and simple, well thought out choices in trademark applications.

TEAS is the electronic filing system of the U.S. Trademark Office and the new fees encourage greater use of the TEAS system.

  • $50 fee reduction for filing a trademark application using the regular TEAS application form (dropping from $325 per class to $275 per class)
  • $50 fee reduction for a TEAS Plus application (dropping from $275 per class to $225 per class)
  • $100 fee reduction per class for a TEAS renewal application (dropping from $400 per class to $300 per class)
  • In addition, there is a new fee/application category, TEAS-RF, which allows for extension of protection to the United States for marks under the Madrid Protocol (for international marks) into a U.S. trademark application will be reduced to $275, which is $50 less than the regular TEAS application fee.


Paper applications are still accepted, but they are not favored.  Paper applications require submission of a fee of $375.

The Trademark Office relies greatly on telecommuting professional to handle its workflow. As reported in 2013:

Today the agency has almost 8,000 employees who work remotely from one to five days per week, including 4,100 who do so four to five days per week and more than 1,000 who work far outside the commuting range of USPTO’s Alexandria, Va., headquarters. And although there are undoubtedly still papers in some employees’ briefcases, the agency’s telecommute-friendly workflows are now entirely electronic.

So, the new fees not only save trademark owners money, they also encourage them to use the electronic system which works best for the Trademark Office’s workflow.


Trademark Usage: Tacking is A Jury Question

It has been a decade since the United States Supreme Court took and decided a case on substantive trademark law. So, it’s worth noting when it does. On January 21, 2015, the Court issued a unanimous decision in Hana Financial, Inc. vs. Hana Bank, et. al.The question presented, and answered was whether a judge or jury should determine if “tacking” is available to prove trademark priority in a given case.

Trademark rights generally arise from actual use of a mark in commerce in connection with particular goods or services. Trademark usage may change over time, but where each iteration of a trademark is the legal equivalent of its predecessor, then prior use may be “tack on” to determine who used the trademark first. Various circuits have determined that a trademark owner may claim priority in a mark based on the first use date of a similar but technically distinct mark, if the previously used mark is the “legal equivalent” of the current version of the trademark, such that consumers would consider both versions of the trademark to be indistinguishable. But, who (the presiding judge or the jury) decides whether different uses are legal equivalents?

Justice Sotomayor authored the Supreme Court’s opinion, which stated that “because the tacking inquiry operates from the perspective of the ordinary purchaser or consumer, we hold that a jury should make this determination.”

Therefore, because the applicable test is dependent upon an “ordinary consumer’s” impression of a trademark, the Supreme Court stated that the application of such a test “falls comfortably within the ken of a jury,” as is the case in other areas of law when the relevant question is how an ordinary person would make an assessment of a fact-intensive answer.

One outcome of this decision is that cases in which tacking is an issue also will likely be more expensive to litigate, since parties are more likely to rely on survey evidence.

The full case may be found here:

Why Garcia Matters: The Unraveling Of An Uneasy Bargain

It’s been a few days since Hon. Alex Kozinski, Chief Judge of the Ninth Circuit (Federal) Court of Appeals, issued his decision in Garcia v. Google et al, relating to whether or not an actress whose image and actions were used in an anti-Islam film polemic could insist that YouTube (owned by Google) take down the film. Hon. Kozinski decided that she could, finding, in an unusual procedural position (review of a denial of a motion for a preliminary injunction) that she likely has a cognizable copyright interest in her performance. The significance of her having a colorable copyright interest is that Google/YouTube is arguably liable for copyright infringement if it ignores her request to remove the infringing material. This exposure arises under the Digital Millenium Copyright Act, which provides a “safe-harbor” for companies hosting infringing materials, provided that they acted to remove the materials after notice. This is generally referred to as the DMCA takedown procedure.

So, to summarize, Google did not remove the video after her take-down requests (8 of them, in fact) because Google did not believe that she, as an actor in the film, had a protectible copyright interest. Hon. Kozinski found she did have such an interest. Thus, then, ergo, the film should be removed from Google’s service.

Many estimable scholars have written in the succeeding days about how wrong-headed this decision is, strictly on copyright grounds. I tend to agree. True, there is a mystifying (to me, at least) discussion about express and implied licenses which looks to be little more than a mechanism for allowing the Court to make the case that Ms. Garcia was taken advantage of, lied to, and is otherwise not at fault. I’ll leave that to scholars.

Under the facts set out by both the majority and minority decisions, Ms. Garcia has suffered a wrong. She was paid $500 for a part in a film that was never released. Instead her footage was repurposed into the objectionable work, and words she never spoke were overdubbed onto her performance. Because the film is ill-liked by certain interests, her participation resulted in death threats and other attacks that none of us sign up for.

What, then, was the wrong?

That’s the slippery problem here. Google harbored no demonstrable ill-will toward her: it was simply the platform by which the film was displayed. Ms. Garcia was duped by the people who filmed her and they carried out the ruse. She sued them. According to the 9th Circuit Opinion, they never answered. They have gone to ground. In common parlance, they are judgment proof, or at least aren’t willing to answer to Ms. Garcia in court. see footnote 1: ” Although Garcia’s suit also named the film’s producers, only Google,which owns YouTube, answered the complaint.”

Google answered. Google is unlikely to be legally responsible for bad things that happened to Ms. Garcia, because of section 230 of the Communications Decency Act which  says that “No provider or user of an interactive computer service shall be treated as the publisher or speaker of any information provided by another information content provider” (47 U.S.C. § 230). (emphasis supplied).

In other words, and to paint the strokes very broadly, Google can’t be responsible to Ms. Garcia for simply hosting the film on YouTube under theories of tort which she might have available for the doubtless personal anguish she has suffered. For example, she might have claims of misappropriation of her likeness, false light, libel (a stretch) or some other theory that would get at how she has suffered at the hands of the producers and filmmakers who put her in this position.

But not Google, thanks to section 230.

As the Electronic Frontier Foundation states:

 In other words, online intermediaries that host or republish speech are protected against a range of laws that might otherwise be used to hold them legally responsible for what others say and do. The protected intermediaries include not only regular Internet Service Providers (ISPs), but also a range of “interactive computer service providers,” including basically any online service that publishes third-party content. Though there are important exceptions for certain criminal and intellectual property-based claims, CDA 230 creates a broad protection that has allowed innovation and free speech online to flourish.

Can’t argue with that either… Section 230 has provided a means for all manner of hosted material, including some pretty heinous stuff (no, I refuse to link it) to be distributed without the hosts (YouTube, Twitter,  you name it) having legal exposure.

Except. Now look back at the EFF commentary above: “there are important exceptions for certain criminal and intellectual property-based claims”

Boom. Enter Hon. Kozinski, and Garcia’s counsel. It was necessary to carve out an identifiable copyright interest that Garcia could assert, so that Google would not enjoy the protections of Section 230.

Most would say that section 230 allowed the Modern Internet to grow, expand, and flourish. Back in the Internet Stone Age, there were cases litigated against Prodigy (look it up), Compuserve, and other hosts, and their flexibility in offering services was likely hindered by uncertainty of when and under what circumstances they could get tagged for allowing someone else to use their service to post, let’s say, libelous material. The story (allegedly) goes that the guy on whom Jonah Hill’s character was based in “Wolf of Wall Street” was incensed at a posting on Prodigy and sued Prodigy for libel in a third party post. Stratton Oakmont, Inc. et al. v. Prodigy Services Company, et al. 1995 N.Y. Misc. Lexis 229, (N.Y. Sup. Ct. Nassau Co., 1995) motion for renewal denied 1995 WL 805178 (Dec. 11, 1995).That was the environment before Section 230.

So, between section 230, and the DMCA copyright safe harbor, it seems there was an uneasy bargain struck (see the title of this post) to say, essentially, that people enabling internet services would not be responsible for “soft” injuries to persona, bad feelings, hurt feelings, harm to reputation, the kind of things that tort law covers. On the other hand, economic injuries, like copyright infringement, were fair game–but only if the DMCA safe harbor rules were ignored.

But, Hon. Kozinski has thrown a wrench into the works. Ms. Garcia’s harm is real, but is it economic? It is now, so long as Garcia stands. For years, the on-line world operated by the bargain struck above, but now a personal interest not to be duped or mis-presented has been characterized as an economic/copyright interest (“Garcia may assert a copyright interest only in the portion of “Innocence of Muslims” that represents her individual creativity“).

That’s what the fuss is about.

Transformative Use Won’t Be Reviewed by the US Supreme Court

The Supreme Court has declined to accept review of a case from a photographer, Patrick Cariou who said that painter Richard Prince violated his copyrights with paintings and collages based on the photographer’s published works.

The November 12 decision not to accept certiorari on Tuesday refused to hear an appeal from a decision of the US Court of Appeals for the Second Circuit. Cariou, the plaintiff,  said Prince used pictures that were taken by Cariou for his book “Yes, Rasta.”

Cariou took the pictures during six years he lived with Rastafarians in Jamaica. Prince altered and incorporated several of the photographs in a series of paintings and collages titled “Canal Zone,” exhibited in 2007 and 2008.

But the federal courts said Prince transformed most of the pictures enough so that Prince’s art could be considered a “fair use” of Cariou’s work. The Supreme Court refused to reconsider that decision.

The Second Circuit said that the standard for determining fair use depended on whether an observer would find the new use transformative of the original. It said that Prince’s manipulations of Cariou’s photographs met that test in the majority of the paintings because they presented a “crude” aesthetic that was different from Cariou’s “serene” work.

It also said that Prince’s paintings did not need to comment on Cariou’s in order to be transformative. Prince had previously testified that he did not intend to comment on the photographs, and that testimony played a large part in the district court’s decision, which had ruled in favor of Cariou.

Some have criticized The Second Circuit’s decision has been criticized by many lawyers who assert that it does not provide them with clear guidance in copyright questions. These criticisms fall into the trap often seen in fair use cases where there is a perceived need to quantify what can and cannot be appropriated before deciding whether an infringement has occurred. Cariou’s lawyer had asked the Supreme Court to review the appellate court’s standard, which he characterzed as an “I know it when I see it” approach that is “necessarily subjective, arbitrary and unworkable”

The 2nd Circuit opinion is a thoughtful approach to fair use and transformation, and it makes sense for the Supreme Court to let it stand.  Little to be gained from a High Court review.