Category: Intellectual Property

Slants Trademark Decision May Have Other IP Implications

In 2010, the Oregon-based, Asian-American band had its application for a trademark in the name The Slants rejected by the US Patent and Trademark Office. The denial was based on a statute in the 1946 Lanham Act prohibiting registration of marks “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.”  In other words, the USPTO rejected The Slants because the word slant can be used as a pejorative to disparage Asian people, which is precisely why the band adopted the name in the first place.  (Readers may have seen headlines stating that the Supreme Court ruled in favor of the trademark status of the much-debated offensiveness of the Washington Redskins name; but in fact, the Redskins matter is settled by virtue of the holding in this case Matal v. Tam.)

When artists or other speakers, who represent particular ethnic groups, reclaim disparaging terms, it usually serves as a very powerful way to diminish the harmful force of the words themselves.  For instance, as important as it is to respect the serious history of the ultimate pejorative for African Americans, the way in which a comedian like Richard Pryor weaponized the N-Word* (or for that matter how Mel Brooks satirized it in Blazing Saddles) cannot be overstated for the capacity of those expressions to alleviate social barriers by transposing genuine animosity into self-reflective satire.

The Slants are presumably following in this tradition, which does not mean that some people still won’t be offended by the name; but as Monday’s Supreme Court ruling affirms, an agency like the PTO may not consider the prospect of offense when registering a trademark without violating the First Amendment. As a result of this case, the disparagement clause (§1052(a)), which has been part of the Lanham Act since its passage 71 years ago, has now been declared unconstitutional.  Whether this has further implications for other clauses in the act remains to be seen.

The outcome in Tam has reasonably been viewed as a First Amendment victory, a reminder that the government has no business making judgments about private speech, and also a recognition that a trademark can absolutely be a form of expressive speech.  In past cases, the courts have held that the denial of a trademark is not a violation of speech because the lack of registration does not prevent a party from using a desired mark as expression.  A key difference in this case is that the government sought to argue that registering trademarks is analogous to government subsidies (e.g. grants from the NEA), and, therefore, the reistration of trademarks is a form of government speech.  All eight justices disagreed (Justice Gorsuch was not part of the ruling).

In circumstances like federal or state grants, the parties responsible for administering those subsidies may impose judgments regarding potential disparagement; and in fact, we would generally hope that they do so.  It is also not a violation of law for the government to spend public dollars to communicate a one-sided message, like an anti-drug or consumer safety campaign.  In fact the Court observes in this decision that demanding neutrality of government in speech would render it dysfunctional.  And although most of us wouldn’t want to see public dollars spent with the purpose of ridiculing or provoking bigotry against a particular race, culture, religion, nationality, etc., it cannot be denied that government officials and agencies have done all of these things at various times in our history.

Regardless, the PTO’s argument in Tam that the registration of a trademark is tantamount to government speech by way of subsidy was first rejected by the District Court and then upheld by the Supreme Court. From the decision …

“Contrary to the Government’s contention, trademarks are private, not government speech.… for if private speech could be passed off as government speech by simply affixing a government seal of approval, government could silence or muffle the expression of disfavored viewpoints.”

Or as it was stated in a slightly more amusing fashion …

“It is thus farfetched to suggest that the content of a registered mark is government speech, especially given the fact that if trademarks become government speech when they are registered, the Federal Government is babbling prodigiously and incoherently.”

There’s probably a website somewhere insisting that the government is speaking in the coded language of Cheetos®, Tide®, and Red Bull®; but tinfoil hats aside, the decision in this case may have broader implications for other IP, particularly copyright. Specifically, the Court seems to have indirectly weighed in on a somewhat novel proposal from the libertarian right that intellectual property is a government subsidy.  In fact, the District Court in this case, made a direct comparison to copyright law in stating, “…the government would be free, under this logic, to prohibit the copyright registration of any work deemed immoral, scandalous, or disparaging to others.”

In other words, arguing that the registration of trademarks is a form of government speech through subsidy would, by extension, empower the government to censor speech through the copyright registration process.  Nevertheless, it has been in vogue for a few years now to describe copyright as a government-granted subsidy to authors; and then, by logic of the straw man, to assail the regime as a “federal regulation” that is holding back “innovation.”  It is an idea that appears to convene allies among the anti-corporate left and the anti-regulatory right; and lately, when I see that kind of agreement between ideological opposites, I tend not to conclude “strange bedfellows” so much as to assume that both sides are just wildly misinformed and not considering the implications of their position.

Of course, this “government subsidy” idea goes back to that larger debate over IP as natural right vs. IP as a purely utilitarian legal framework.  For now, though, in upholding Simon Tam and his friends’ right to trademark their band name (offensive or not to some people), the Supreme Court has provided an important lesson in the nature of American free speech and placed the government in its proper role as neutral provider of public services available to all citizens on equal terms.

See also:  Terry Hart’s Copyhype post from 2016.

*On a side note, the rap band N.W.A trademarked its name.

EU Court of Justice Ruling – A New Chapter?

Photo by alexskopje Pond5

This week, the Court of Justice of the European Union concluded what any rational observer would conclude about websites that make large volumes of unlicensed copyrighted works available to the public — that their owners know exactly what they’re doing and why they’re doing it.  A Netherlands-based foundation that protects copyright interests argued in the nation’s Supreme Court that two ISPs could be ordered to block access to The Pirate Bay.  That court referred the case to the EU Court of Justice for interpretation under the EU Copyright Directive.

Among the long-standing defenses employed by pirate site owners attempting to thread their operations through statutory imperfection, is the claim that they do not upload infringing copies of works to their servers. Their users upload the files.  Even if you’re the most pro-piracy individual in the world, there is nothing about that kind of reasoning that should pass the smell test, and now the EU has wrinkled its nose and declared that making works available in the manner that The Pirate Bay does “may constitute an infringement of copyright.” A decision published two days ago states the following:

“Whilst it accepts that the works in question are placed online by the users, the Court highlights the fact that the operators of the platform play an essential role in making those works available. In that context, the Court notes that the operators of the platform index the torrent files so that the works to which those files refer can be easily located and downloaded by users. ‘The Pirate Bay’ also offers — in addition to a search engine — categories based on the type of the works, their genre or their popularity. Furthermore, the operators delete obsolete or faulty torrent files and actively filter some content.”

If it walks, talks, and looks like an infringing enterprise, it’s probably an infringing enterprise.  Further, the EU Court decision offers a statement that may have considerable ramifications for site owners who have consistently sought to appeal to safe harbor provisions, based on the assumption that they are ignorant about what users do on their platforms.

“… it is clear from the Hoge Raad’s [Supreme Court of the Netherlands] decision that the operators of ‘The Pirate Bay’ cannot be unaware that this platform provides access to works published without the consent of the rightholders. [sic]”

Not only does this have implications for sites like TPB that are dedicated to piracy, but also to service providers and search engines that provide access to those sites as well as legal platforms that earn “unintentional” revenue from infringement. Most prominently, of course, I’m referring to YouTube, which has unquestionably profited from hosting unlicensed material while remaining shielded by safe harbors. The EU Court’s rational conclusion that site owners cannot be nearly so deaf, dumb, and blind as they claim, may prove to be a major threshold moment for counter-piracy efforts around the world.

In fact, the day before that decision was published, a new global initiative was announced by 30 major content creators, including old names like MGM and new names like Hulu.  The Alliance for Creativity and Entertainment (ACE) calls itself a “new global coalition dedicated to protecting the dynamic legal market for creative content and reducing online piracy.”

Stressing the importance of legal frameworks to foster the growth and maintenance of new platforms for accessing a diverse range of filmed entertainment, the Alliance states in its press release that it will “conduct research, work closely with law enforcement to curtail illegal pirate enterprises, file civil litigation, forge cooperative relationships with existing national content protection organizations, and pursue voluntary agreements with responsible parties across the internet ecosystem.”

While piracy advocates continue to claim (and not without precedent) that they will always find a way to keep infringing, 2017 may prove to be the year when we start to see much better cooperation among major rights holders and the major online platforms. It has certainly been the year when many parties (e.g. advertisers) have finally rejected the traditional claim by the internet industry that the web operates best as a self-governing universe.  And it seems that many users are coming to realize that platforms are already governed plenty by their owners in the service of their own financial interests.

Not Just About Piracy

Google and other platforms have strongly resisted demoting, removing, or de-indexing links to content that is defamatory, illegal, or otherwise harmful—even when courts have ordered companies to do so. “Digital rights” organizations have consistently taken what can be described as a maximalist position in blindly defending liability shields in both the DMCA and the CDA—even to the extent that the EFF apparently saw no reason for exception in the face of evidence that Backpage.com may have been supporting the trafficking of minors in the sex trade.

As levels of violence and extremism continue to grow, both American and European leaders have already indicated a desire to make online platforms more responsible for policing their sites; and this pendulum can absolutely swing too far in the wrong direction. As technologist Jaron Lanier warned this week on NPR, we do not want to give private corporations like Google too much power to “police” the web because they are not subject to oversight as government agencies are.  This is a much larger topic for future posts, but at the same time, it is known that enterprise-scale piracy intersects with other forms of criminal activity—particularly the malware trade.

Historically, whenever trends like those we’re seeing this year begin to write a new narrative, government turns to the industry in question with an ultimatum—that they can clean up their own act or Congress will do it for them. Given the present chaos in Washington, including specifically at the Department of Justice, predicting where exactly U.S. policy on countering illegal online activity is heading is a murky prospect at best.  Nevertheless, this EU Court decision; the recent mood of major advertisers toward Google; this new ACE coalition; and a perceptible shift in sensibility among users who feel that platforms need to be more proactive to counter hate crime, harassment, and violence all suggest that the internet industry may be about to become better partners in addressing some of the negative effects their business models have created.

Artists Making Merch Should Avoid Copyright Confusion

Photo by vlad_star

Ars Technica posted an article last month about copyright and tee shirt design that, in my view, jumps past the real story and may confuse a few independent artists out there that they’re operating in some new realm of IP law.

The internet industry sells a message of opportunity, and it is absolutely true that the combination of e-commerce platforms and on-demand production does create new avenues for creators to earn revenue from their work.  Willie Clark’s article describes a network of artists who are currently making at least a portion—if not the lion’s share—of their living from the sale of tee shirts that feature their original designs.  All good.

But in a world without copyright protection, there is not much to stop either a sole actor or a predatory website from appropriating the artists’ designs and selling tee shirts or other merchandise by leveraging exactly the same tools available to the artists.  Clark cites a few artists who are quite sensitive to this issue; and in my view, this is one of the major challenges of internet economics:  it assumes everyone will behave ethically, and when they don’t, the tools easily enable cannibalization of the very same opportunities they create.

Clark’s real focus is on the legal status of sites and/or artists in cases where high-profile, corporate-owned IP may be involved. He asks, “If big media has legal muscle, why can you buy Link racing Harley Quinn on a shirt?” Okay, that’s a sub-head, and Clark can be forgiven for not quite answering the question—especially because there isn’t a general answer other than to say that if you go printing merch with copyrighted material belonging to major rights holders, be careful.  Clark writes the following:

“While there hasn’t been a high-profile case involving a big pop culture IP and an online T-shirt company yet, there have been similar situations. Mitch Stoltz, senior staff attorney with the Electronic Frontier Foundation, pointed to one court case where T-shirts overall had been tested. And in Kienitz v. Sconnie Nation, LLC, the court ruled in favor of a shirt that used another photographer’s photo as the basis for the design.”

The indie artist should not be confused by this statement into thinking that the internet-spawned tee shirt trade has entered some new gray area of copyright law. For one thing, in the Keinitz case cited, the tee shirts are barely relevant. The appellate court refers to the substantial amount of alteration made to an original photograph and to the lack of potential market harm to the original in affirming fair use. The image at issue could have been fixed onto any medium, and the legal considerations would have been almost identical.  But, if the tees had served as a substitute for the rights holder’s licensed—or potentially licensed—merchandise, that would be a very different story, which brings me to the next quote.

“Stoltz also mentioned one other reason companies may be OK with leaving such sites operational: free advertising. ‘This is free marketing for them, and they know it,’ Stoltz said. ’It’s not really good marketing strategy to go suing your fans and the websites that they like to use.’”

This is a familiar refrain from the EFF, and from the larger community of copyright skeptics and outright antagonists. This idea that appropriation serves as free advertising is, for instance, a common rationalization for large-scale piracy. But it’s not an argument that actually carries much weight with most rights holders, least of all the majors. So, if you’re an independent artist, considering making a tee with a Harley Quinn-based design on it, I would not take this “free marketing” message to heart because it almost certainly is not how rights holder DC Comics will consider the use.

A fair use of an illustrated character really has to comment upon the work in a way that goes beyond mere re-interpretation.  Otherwise the use on a tee shirt will very likely be seen in court as counterfeit merchandise—an unlicensed “display” of a protected work. Moreover, characters are very often covered by trademark and copyright, which gets into a whole other set of motivations for the owner to consider enforcement. For instance, trademarks must be enforced or they can be lost, which is not true of copyright.

Likewise, the discussion of the DMCA in the Ars Technica article can be confusing because the DMCA has no bearing whatsoever in the trademark universe and, as Stoltz is correctly cited, has no authority in the world of infringements beyond cyberspace. Tee shirts and other merch are physical media, so the artist, the site, and/or the manufacturer could be liable in a context that has nothing to do with the digital market.

It is certainly true that fair use exists in order to allow artists to comment upon copyrighted works without the rights holder’s permission, and commentary is a critical part of creativity, social discourse, advocacy, etc.  But merch can be tricky, and unless artists want to spend more time thinking about fair use doctrine than making art, it’s probably better to focus on creating original expressions.  And apropos of the top of this post, it would be far more beneficial to the creative community—and society—to figure out how independents can better protect their rights in the digital market than it would be to keep looking for ways to use works belonging to other rights holders.