Category Archives: Publicity Rights

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 (afrawley@eatonpeabody.com)

WHY IP? WHY THINK IP?

Why Intellectual Property? It’s a question I get a lot, from people who know that IP issues are on the top of my professional mind.

(Fortunately, that’s not all that’s on my mind, but the question of why The Infamous Stringdusters are not as lauded as Beyonce is a question for another day.)

Well, let’s start here: ” intellectual property accounts for 20% of U.S. GDP, and nearly 40% of economic growth. Furthermore, IP industries account for 74% of the county’s exports, amounting to $1 trillion.”  Think that one over. We don’t make things here, much, anymore. We develop ideas and neat, efficient implementations of ideas. Even where we would seem to be leaders in manufacturing, such as the automotive industry, not a car would be made without parts outsourced from Mexico, China, Japan , you name it. The Chevy Aero has 98% of its parts sourced outside the U.S. The Ford Expedition? 50/50.  That’s where we are going. So, that is “Why IP?”

I recently rebranded this blog and my Twitter feed to THINKINGIP for that very reason. The kinds of knowledge based solutions (and problems) that arise in everyday life, and most certainly in the life of an IP attorney such as me are mind-numbing. Yet, they must be attended to. There is a burgeoning industry of court actions by “trolls” (more benignly known as Non-Practicing Entities)  who seek damages for new implementations of existing exclusively-protected rights (whether patent or copyright). One might conclude that we are essentially eating our young, but that’s what happens when things are built elsewhere.

To review the kinds of things I’ve discussed, or Tweeted about over the last few weeks:

Chuck Shumer promotes fashion design copyright now that Sandy is not a problem. http://dld.bz/bSCbm 

North Face tries to stop trademark parodies. http://dld.bz/bSBZZ 

Audi doesn’t get http://Audicity.com . No bad faith. http://dld.bz/bSuFG 

IP protection for aboriginal cultures. http://dld.bz/bSuEV 

Some gruel, please, sir? Copyright Office wants to hear what you think about “the state of play of orphaned works” http://dld.bz/bSuE2 

Easter Egg in iOs6 privacy policy? http://dld.bz/bSuEv  

Copyright trumps state law claims. http://dld.bz/bSuEg  

When a customer list can be a trade secret. In Cali. http://dld.bz/bRXV4 

How to brand your baby, PTO-sssstyle. http://dld.bz/bRXUu  #THINKINGIP

Three words. Cloud. Security. Nightmares. http://dld.bz/bRKFQ 

Republicans Retreat On Copyright Reform? http://shar.es/G95RM  via@sharethis

Updated post on GOP’s pulling Copyright Report for lack of “balance”https://frawleylegal.wordpress.com/2012/11/18/copyright-reform-just-dont-tell-mickey/ …

Wow, who saw this coming? (everybody) digital borrowers of book also buy books, a lot. http://dld.bz/bRKFh 

Twinkies to fold. http://dld.bz/bRKMu  Lots of sweet IP http://dld.bz/bRKMC 

Cy pres award to advocacy groups disfavored in some class action settlements. http://dld.bz/bRKE2  Plaintiff’s counsel still eat well.

And on and on.  So, that’s WHY IP? Please follow me @#THINKINGIP on Twitter. There are no discernible prizes (yet), but you might get a chuckle.

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When Planets Collide

My two avocations are intellectual property law and bluegrass music. Imagine my excitement, then, when I read that there is a trademark problem with the Father of Bluegrass, Bill Monroe. The details are sketchy, and most every article starts out with an “I-can-see-it-coming-a-mile-away-strap-in-kids” pun about there being a sour note in the legacy of Mr. Monroe.

Campbell “Doc” Mercer can’t use Monroe’s likeness or name to promote The Jerusalem Ridge Bluegrass Music Festival, which he puts on annually to honor the “Father of Bluegrass.Ohio (Kentucky) County and the county industrial foundation lay legal claim to Monroe’s name and image, having bought the usage rights from the musician’s son 13 years ago.

Ooops. Hold on. There’s where my ears perk up. Taking off my bluegrass hat, I know that the right to publicity is state law dependent, and can be an amalgam of common and statutory law. It also depends on the domicile of the deceased at the time of death. Any assignment (again this is State law specific) probably needs to be in writing. Who was the administrator of Mr. Monroe’s estate? He is reported to have lived in Springfield Tennnesse (near Nashville) at the time of his death.

In other words things are not as simple as they seem.