Category Archives: Social Media

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)

Crowd-Sourcing Trademark Rights -The Strange Case of ” Baseball’s Evil Empire”

Oftentimes, those of us who dwell in the world of trademark law are perplexed by public understanding of our field, and, more specifically, consumer press reporting about trademarks. In fact, I’d have little to talk about here were it not for that.

For the last week or so, I have, however, been ruminating about how trademark specialists approached the question of the New York Yankees’ rights to block someone else from using the term BASEBALL’S EVIL EMPIRE. You, fair reader, are doubtless saying: “Sir, why not develop a new hobby, or find some other way to occupy your time?” But yet, the decision raises an interesting dynamic about whether “crowd-sourced” source identifiers can become protectible marks.

To review things: in 2008, an outfit filed an application with the US Patent and Trademark Office to register the mark BASEBALL’S EVIL EMPIRE in Class 25 for “clothing, namely, shirts, t-shirts, sweatshirts, jackets, pants, shorts and hats”. It’s not a new tact: clever (or not so) marketers latch onto something in the consumer consciousness and want to register a phrase or a word and leverage off whatever traction the notion has in the collective consciousness. Many times, the traction is lost before any gain is realized ( see e.g. IT’S TRIBE TIME and ROCKTOBER, for short-lived excursions by the Cleveland Indians and the Colorado Rockies, respectively, into post-season baseball).

This time, partly because the Yankees are, well, evil, the fight was on, and the Yankees opposed the issuance of a registration for the mark in (Opposition No. 91192764).  The Trademark Trial and Appeals Board in a non-precedential decision, upheld the opposition on February 8, 2013. The curious thing here is that the Yankees do not use the mark as a source identifier, which is the usual purpose of trademark protection. The TTAB wrote:

The Yankees have
“implicitly embraced” the nickname EVIL EMPIRE, including
playing ominous music from the soundtrack of the STAR WARS
movies at baseball games.[The Yankee club], however, does not own
an application or registration for the term EVIL EMPIRE.
Nor has opposer used the mark itself in connection with any
goods or services.

So that’s what makes this one so interesting. According to this reasoning, I cannot adopt and register a mark which someone else has “implicitly embraced”.  And, the “embrace” may be a subtle and delicate as playing a John Williams musical piece to a ballpark full of people? Is something amiss?

Of course, the non-precedential decision is just one panel’s opinion. And, like any Red Sox fan, I am happy to see headlines like “”NY Yankees admit their evilness to secure ‘Evil Empire’ trademark” and “Even judges say Yankees are ‘Evil Empire”. But, I am concerned about the bar that has been set for someone like the Yankees to block the trademark applicant. In fact, rather than being the object or ridicule, at its heart, the TTAB panel’s decision gives special weight to the fact that it’s the Yankees. Perhaps it is the applicant’s fault. Their promotion of t-shirts containing the phrase BASEBALL’S EVIL EMPIRE made no secret that they were referring to the Yankees, even directing prospective customers for legitimate Yankees gear to the Yankees’ website. It seems like the TTAB panel could not get past that, first finding the Yankees had standing to assert the opposition , on 2 bases [so to speak]:  1) The Yankees showed that their house registrations are valid and subsisting. Further, opposer has demonstrated that applicant “was aware that the NEW YORK YANKEES baseball team has been referred to and known as the ‘Evil Empire’ by the press, fans, media and/or public prior to filing [its]Application Serial No. 76/691,096…”

The TTAB then goes on to say that the Yankees have priority over the applied-for mark (a key requirement in trademark jurisprudence) because the applicant “knew” that “that the NEW YORK YANKEES baseball team has been referred to and known as the ‘Evil Empire’” prior to applicant’s filing date of July 7, 2008.

Whoa. The Yankees had (and have) no trademark usage of the term and their priority was established by others referring to them as the EVIL EMPIRE.

Which leads us to “the public use doctrine”, which allows a trademark owner to claims rights in uses or modifications of its trademark by the public. It’s a peculiar doctrine. which confers trademark rights based upon others’ use of the mark. “The Public Use doctrine . . states that abbreviations or nicknames used only by the public can give rise to protectable trademark rights to the owner of a mark which the public has modified.”) George & Co. LLC v. Imagination Entertainment Ltd., 575 F.3d 383, 403, 91 USPQ2d 1786, 1798
(4th Cir. 2009). However, the cases cited by the TTAB panel all properly apply the doctrine to the public’s adoption of shorthand or abbreviations for a trademark owner’s mark. The public use doctrine, up until this point, has generally been applied to those limited situations.

One could argue that prominence, the so-called “fame” of the mark has a lot to do with this dynamic as well. The TTAB panel certainly threw that into the mix.

Effectively, the TTAB has said (but not as precedent) that a crowd-sourced appellation can create trademark rights,  when 1) it is not a derivation or abbreviation of an existing mark and 2) where the mark “”owner” has implicitly adopted it. That may be the right decision, and it may be fueled by the notoriety of the New York Yankees, but it is enough to give trademark practitioners pause. This is especially so if asked to give an opinion on registrability. Do now crowd-sourced common law usages have to be taken into account?

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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Social Media In The Workplace: The NLRB Takes Another Whack At It: This One Is Likely to Stick

The NLRB has been noodling aropund in the sphere of social media for over a year now, as it should, given it’s staturory authority to monitor employees’ (union and non-union) Section 7 of the National Labor Relations Act (NLRA) rights to engage in “concerted activities for the purpose of collective bargaining or other mutual aid or protection.”

Social media communications continue to be a hot topic for the National Labor Relations Board (NLRB), employees and employers. On May 30, 2012, the Acting General Counsel (AGC) of the NLRB issued his third report in less than a year on the topic, discussing seven recent cases handled by the agency and providing an example of a revised policy that the AGC considered “lawful.” The latest reports on social media cases can be accessed by clicking the dates below:

Generally, two or more employees acting together to address a collective employee concern about terms and conditions of employment is considered protected concerted activity. A single employee acting on behalf of others, or who is initiating, inducing or preparing for group action, or who has discussed the matter with co-workers, can also be engaged in protected concerted activity. On the other hand, comments made solely by and on behalf of the employee himself or herself that are related to his or her employment but do not arise out of, or call for, concerted activity by other employees, are not concerted.

The AGC’s most recent memorandum includes a copy of Walmart’s revised social media policy, which the NLRB deemed lawful. In reviewing Walmart’s policy, the AGC noted:

  • Walmart’s prohibition on social media postings that may include “discriminatory remarks, harassment and threats of violence” is lawful because it is focused on “plainly egregious conduct” and there was no evidence that such a prohibition has been used to hinder Section 7 activity.
  • Walmart’s policy to be respectful and “fair and courteous” in social media postings could be overly broad under certain circumstances, but is not because the policy provides examples of plainly egregious conduct so employees would not reasonably construe the policy to prohibit Section 7 conduct (e.g., the policy instructs employees to avoid posts that “could be viewed as malicious, obscene, threatening or intimidating”; examples include “offensive posts meant to intentionally harm someone’s reputation or posts that could contribute to a hostile work environment on the basis of” a protected status).
  • Walmart’s policy of requiring employees to maintain the confidentiality of its trade secrets and private and confidential is lawful because it contains examples of prohibited disclosures for employees to understand that it does not include protected communications about working conditions.

Employers should review their policies to determine if they run afoul of the NLRA. But one size does not fit all. A social media policy used by a large retailer like Walmart may not be applicable to a medical device company or a manufacturing facility or a restaurant chain.

Social Media In Court

Not such a good idea.

Recently, the  Judicial Conference of the United States  surveyed all 952 federal judges to see if jurors had used or misused scoail media during jury trials.

Most said they had not, or that if they did, it was to contact fellow jurors. Read more here.

Then again, maybe the Federal Courts have some catching up to do, since there is at least one documented case of a juror trying to “friend” a defendant during trial.