You may have heard of a little movie called Star Wars. If you haven’t, well, I’ve got some movies for you to borrow. The film was released in 1977, and soon spawned a trilogy of movies that are among the most popular film franchises in the world. Fast forward forty years and eight of the nine triple-trilogy movies have been released, along with spin off movies such as Rogue One and the soon-to-be released Solo. However, the new Solo movie has created a spin-off of its own: a lawsuit filed by a U.K. gamemaker claiming that Lucasfilm’s movie and subsequent advertising infringes on his trademark rights in the mark SABACC.

The complaint was filed by Ren Ventures (“RV”) and its licensee Sabacc Creative Industries and the main issue involved is which party owns rights in the SABACC name and trademark. From the best I can tell, the name Sabacc was coined by George Lucas (the creator of Star Wars) or one of his co-writers at Lucasfilm. The game is mentioned in the original 1977 Star Wars movie and is referenced throughout the Star Wars universe of books and movies. For example, Han Solo “famously” won his spaceship the Millennium Falcon in a Sabacc game. That story likely plays out in the plot of the new Solo movie, which likely explains why Sabacc is prominently featured in advertising related to the movie, like this Denny’s commercial.

But does Lucasfilm’s use of SABACC as a fictional card game in movies and books create enforceable trademark rights? I haven’t seen any current use of SABACC with any specific goods or services, so there doesn’t appear to be any traditional trademark usage (affixed to goods or their packaging). However, Lucasfilms has sought and obtained registration for a number of similar features of the Star Wars universe, as you may recall from this Handy List of Star Wars References that Might Get You Sued. These registered marks include LIGHTSABER, THE FORCE, JEDI, and others. Of course, these marks are used with toys and other merchandise, making Lucasfilm’s claim to trademark rights a bit easier.

In fact, Lucasfilms distributed a licensed Sabacc card game in 1989. An image of the rules are below, but it appears this was a limited distribution.

Given that SABACC is a term coined by Lucasfilm and used only in the Star Wars universe, what type of Jedi mind tricks is RV using to assert its own rights in the SABACC name? Surprisingly, they’re relying on some ancient dark magic – a trademark registration. According to the complaint, RV sought to adopt a trademark for a game that mixed the rules of poker and blackjack. The complaint alleges that RV “searched the public domain for names” for such games, and the search revealed the names Pojack, 727, 727 Poker, Home Card, and Sabaac (ed note: one of these names is not like the other…). It’s unclear what RV meant by searching the “public domain,” as that phrase is normally used for copyright protected works that have lost their protection. Nonetheless, RV filed an application to register the SABACC mark for various computer game software and entertainment services. The application was published for opposition on June 7, 2016 and, after no third-party opposed, a registration issued on Aug. 23, 2016.

Although Lucasfilm actively enforces its rights at the U.S. Patent and Trademark Office, likely with the assistance of numerous watch services, its hard to fault Lucasfilm for not opposing. After all, even with all that Disney money, it might be difficult to justify a watch notice for each every made up element from the Star Wars universe. Regardless, Lucasfilm eventually learned of the registration and filed a Petition for Cancellation on May 1, 2017 with the Trademark Trial and Appeal Board (“TTAB”). Lucasfilm filed a Motion for Summary Judgment and, shortly thereafter, RV filed an infringement action and requested suspension of the cancellation proceeding at the TTAB.

RV has begun use of the SABACC game to promote online games, including at the iTunes store. A screenshot of the store is shown below:

You’ll notice that there are a number of word choices in the description that reference the Star Wars universe. This includes the reference to a “Cantina” (the Mos Eisley Cantina plays a major role in the original Star Wars movie), the word “galaxy” and the phrase “far, far away” (A reference to the films’ opening credits), and a reference to Cloud City, which plays a major role in the Empire Strikes Back. The use of a single one of these might not be concerning, but all of them in combination with Sabacc? Coincidence, I’m sure…

Setting aside Lucasfilm’s potential claims for trademark and copyright infringement, the facts strongly suggest that Luasfilm has a claim of unfair competition against RV. Based on all of these “coincidences,” the facts strongly suggest RV is attempting to capitalize on the goodwill and popularity of Star Wars. RV has essentially created the exact same game from the movies and books, is promoting the game utilizing similar imagery of robots, and utilizing words and phrasing uniquely associated with the Star Wars franchise to promote the game.

RV seems to be placing all of its eggs in the basket of “Lucasfilm didn’t use the mark in commerce and therefore we established valid trademark rights.” Unfortunately, there is at least one allegation in RV’s complaint that they might break a few of those eggs:

when consumers encounter Plaintiff’s pre-existing SABACC brand video playing-card game in the marketplace, they are likely to mistakenly believe that Defendants are the source of, and/or sponsor or endorse, Plaintiff’s SABACC brand video playing-card game, and/or that Defendants, the upcoming Solo Film, and/or Defendants’ Hand of Sabacc Commercial is/are otherwise associated or connected with Plaintiffs, Plaintiff RV’s SABACC Mark, and/or Plaintiff SCI’s pre-existing SABACC brand video playing-card game

The allegation arguably eliminates any need for Lucasfilm to establish use in commerce of the SABACC mark. The allegation suggests that the mere use of playing a Sabacc game in the movie or a in a commercial creates a likelihood of confusion with RV’s video game. If that’s all that it takes to create a likelihood of confusion, it makes it pretty easy for Lucasfilm to agree and simply gather the evidence of Lucasfilm’s use of Sabacc games in its films, moves, books, and related merchandise since 1977, and assert its counterclaim for infringement based on these prior rights.

With an upcoming premiere date of May 15 at the Cannes Film Festival, and a U.S. release date of May 25, there isn’t much time for the parties to work out a settlement. I’m not one with the Force and certainly can’t read minds, but I have a feeling this lawsuit won’t change Lucasfilm’s timeline.

— Jessica Gutierrez Alm, Attorney

 

WWE wrestler Randy Orton has some unique ink on his arms and back, created by tattoo artist Catherine Alexander.  Orton—and his tattoos—are featured in the WWE 2K video games.  Alexander claims ownership of copyright in the tattoos, and is suing WWE and the makers of the video games for their depiction of the original tattoos.

This case is one in a string of lawsuits alleging copyright infringement based upon celebrity or athlete tattoos.  In 2017, tattoo artist James Hayden sued the makers of an NBA video game for depicting several tattoos he’d created for LeBron James.  And remember that Mike Tyson-like tattoo on Ed Helm’s face in The Hangover 2?  In 2011, tattoo artist S. Victor Whitmill brought a copyright infringement suit against Warner Brothers Entertainment in an attempt to block the release of the movie.

 

 

Nonetheless, the copyrightability of tattoos remains in question.  These cases frequently settle out of court, and thus we do not yet have a clear judicial determination of whether tattoos on skin constitute copyrightable works of art.

Much ink has been spilled over the legal merits of whether a tattoo is copyrightable.  But legal theory aside for a moment, should tattoos be copyrightable?  Do we want our copyright jurisprudence to venture down a path of allowing one person or entity to have a property right in another person’s skin?

The artistic nature of tattoos makes it difficult to square the tattoo artist’s creative rights with with the tattoo bearer’s bodily autonomy.  Under copyright law, the mere act of displaying a copyrighted work can be an infringement.

Nimmer on Copyright is likely the most widely used treatise on American copyright law.  David Nimmer himself submitted a lengthy declaration for the defendant in the Hangover case.  In his declaration, Nimmer described some of the bizarre outcomes we might see if we decide tattoos are indeed copyrightable:

  1. With particular respect to celebrity and athlete tattoos, magazines, TV networks, documentary film makers and others could be required to obtain licenses from tattoo artists behind the celebrity’s or athlete’s tattoos.  If those licenses are not obtained, the celebrity or athlete herself could be liable for contributory infringement.
  2. An adjacent or overlapping tattoo might constitute a derivative work, which could itself be an infringement of the original artist’s rights.  Nimmer suggests this could lead to a court order to have the offending work laser removed.
  3. The Visual Artists Rights Act allows certain works of art to be granted “recognized stature,” which allows an artist to prohibit intentional or grossly negligent destruction of a work.  Under this Act, if a tattoo were granted “recognized stature,” the artist could obtain a court order barring removal or destruction of the tattoo.
  4. Even if the tattooed person goes so far as to obtain an exclusive license of all rights from the artist, that does not necessarily solve the issues described above.  Some copyright licenses can be subject to an inalienable right of the artist to terminate the license 35 years after grant.  As Nimmer explained, “For example, a 20-year old actress might get a tattoo from X, subject to his agreement (negotiated by her counsel) to assign to her all copyright interests in the image and never to terminate the grant.  When she turned 55, she might nonetheless be shocked to learn that X now has the right to block merchandising of her image.”

These may be extreme examples, but they serve to illustrate the difficult intersection of tattoo artistry with existing copyright jurisprudence. Accordingly, Nimmer suggests the best solution might be legislative.  When courts could not square the realities of computer software with existing copyright laws, the Computer Software Copyright Act of 1980 was passed.

Eventually, a tattoo copyright case is bound to reach a court decision.  Until then, the uncertain legal grounds will continue to rest on selective enforcement and out of court settlements.

This is the question a court in the Southern District of New York will be dealing with in a recent lawsuit filed against Destiny Hope, a/k/a Miley Cyrus and others.  Does Miley’s chart topping 2013 hit song “We Can’t Stop” infringe on a song written by Michael May?

Jamaican songwriter and deejay Michael May goes by the stage name “Flourgon.”  This name was given to him because of his love of dumplings.  Specifically, Flourgon alleges that Miley and others, including her co-songwriters and record company, infringed on the copyright he has for the song “We Run Things.”  In the complaint, Flourgon alleges that  Miley’s co-writers acknowledge the Caribbean musical influence behind Miley’s song.

Trying to shake her sweet Disney image (i.e., Hannah Montana), Miley came out with her fourth album with the edgy song “We Can’t Stop.”  The sexy star in the racy video for the song stands in stark contrast with her wholesome Disney image.

The lawsuit highlights Miley’s lyrics “We run things/ Things don’t run we.”   Flourgon asserts that his “unique, original and creative lyrical phrasing ‘We run things, Things no run we’ is not syntactically correct, and is a conspicuous departure from proper English grammar with its improper sentence construction such that it is noticeably unique, creative and original thereby mandating further inquiry, which should have been conducted by Defendants . . .”

In addition to damages, Flourgon seeks injunctive relief to prevent Miley from selling or performing the song. Miley and the others will be filing an answer denying the allegations or another pleading in the coming weeks.

You can compare the lyrics of Miley’s song by looking at the lyrics here versus Flourgon’s song here. What do you think?

— Jessica Gutierrez Alm, Attorney

For anyone unfamiliar with internet cat personalities, Grumpy Cat is a well-known feline whose dwarfism and underbite culminate in a perpetual—and adorable—sour expression.  Grumpy Cat’s real name is Tardar Sauce.  In 2012, when Tardar Sauce was only a few months old, she became an internet sensation after a photo of her endearing scowl was posted on Reddit.  Since that time, Tardar Sauce has made several public appearances, and was named to Forbes’ list of Top Pet Influencers.

Tardar Sauce’s owner, Tabatha Bundesen, formed Grumpy Cat Limited to handle licensing and merchandising of the Grumpy Cat brand.  Grumpy Cat Limited holds eight federal trademark registrations, including five registrations for the standard character mark GRUMPY CAT, and three registrations for this design mark:

Grumpy Cat Limited also owns multiple copyright registrations, including these:

 

In 2013, Grumpy Cat Limited entered into a licensing agreement with Grenade Beverage LLC.  Under the agreement, Grumpy Cat Limited licensed the Grumpy Cat trademarks and copyrights to Grenade in connection with a line of iced coffee products (appropriately named Grumppuccinos).

Three flavors of Grumppuccino

The licensing agreement additionally permitted Grenade to develop other Grumpy Cat beverage products, but only with the permission of Grumpy Cat Limited for each new product.  Under this provision, Grenade sought approval from Grumpy Cat Limited for a new line of Grumpy Cat-branded coffee beans.  Grumpy Cat Limited withheld approval for the coffee beans.  Grenade nonetheless moved forward with the new product.  Grenade also began selling unauthorized Grumppuccino t-shirts.

The offending beans

In late 2015, Grumpy Cat Limited sued Grenade for breach of contract, copyright infringement, and trademark infringement.  Namely, Grumpy Cat Limited asserted that Grenade’s use of the Grumpy Cat name and likeness on the coffee bean products and unauthorized Grumppuccino t-shirts was outside the permissible scope of the licensing agreement.

After a week-long trial, during which Tardar Sauce herself made an appearance, a jury decided in favor of Grumpy Cat Limited.  The jury awarded $710,001 to Grumpy Cat Limited: $230,000 in statutory damages for copyright infringement, $480,000 in statutory damages for trademark infringement, and $1 for breach of contract.  Presumably, the statutory damages awarded to Grumpy Cat Limited equal more than any actual damages the company could have obtained–a reminder of the value of statutory damages in trademark and copyright infringement suits.

The City of Portland is known as a hub for craft beer, and its local government couldn’t be prouder. The Travel Portland website proudly proclaims that Portland is “home to more breweries than any other city on earth.” Yet the city’s relationship with the local craft beer scene is not so bubbly at the moment, as trademark dispute between the city and local Old Town Brewing has gone public.

The dispute revolves around Old Town Brewing’s logo and a large lighted sign owned by the city, both shown below.

 

This isn’t the first time the city hasn’t gotten into a dispute with a brewery over the sign. The city previously objected to Pabst’s use of a logo derived from the sign back in 2015.  Our 2015 article contains a good back story as to the city’s purchase of the sign as well as the city’s claimed trademark rights in the sign (and for our regular readers, the investigation into Portland’s unicorn burial ground is ongoing). However, for our purposes, a TLDR history will suffice. The sign is known as the “White Stag” sign and was built in 1940. The text has changed numerous times along with the ownership. The City of Portland purchased the sign in 2010 and has since begun licensing reproductions of the sign to third-parties.

Most recently, Portland sought to license production of the sign to AB InBev, the parent company to Budweiser and a whole host of other big and small names in the alcohol business. Jeff Alworth at the Beervana Blog has a great write up regarding the dispute that is worth a read. As you might expect, the small, local craft brewery is not pleased with Portland’s attempt to permit a direct competitor to use a similar logo. The fact that the competitor is Budweiser certainly can’t help.

Luckily for Old Town, they recognized the benefits of obtaining a registration for their design logo at the U.S. Trademark Office. Even better, the registration is now more than 5 years old and can no longer be challenged on a number of grounds, like confusion with a senior user’s mark.

The City of Portland also recognized the importance of registrations and applied to register the image of the sign for a wide variety of goods and services, including alcoholic products. The Trademark Office has refused registration based on a likelihood of confusion with Old Town’s prior registration.

The situation is a twist on the more common David versus Goliath of Big Beer versus Craft Beer, and not simply because the City of Portland is involved. In fact, the city is claiming that David, aka, Old Town Brewing, is the bad guy. The City is arguing that “it is Old Town Brewing that is trying to prevent the City from using its own logo.”

The city isn’t entirely off base. It’s true that the City isn’t telling Old Town to stop using the logo. But the City’s argument makes a lot of assumptions that may not hold water (or other beverages, for that matter).

The city seems to assume that because the City bought the sign, they own the right to use the component images of that sign for any and all purposes. That’s wrong. For a lot of reasons. Owning a sign doesn’t create trademark rights, use does. And if Old Town began using a portion of that sign as a trademark before any other third-party, then Old Town is the senior user. Also, even if the City owns some trademark rights, the law is clear that a trademark does not provide a right in gross. Trademark rights are defined by the goods or services sold under the mark, with protection against goods and services that are sufficiently related to owner’s goods or services.

Also, the City’s white hat isn’t so white. I’m not even sure it’s a hat. Old Town isn’t the bad guy here. The brewery isn’t telling the City not to use the logo derived from the sign design.  I’m not a politician or a mayor, but I can’t think of any reason why a city needs to be able to use its logo to sell beer. If Minneapolis were doing this, I’d kindly ask that they fix the potholes or finish construction on the bridges over 35W first.

At the moment, it seems that public opinion seems to be in Old Town’s favor, at least based on the limited (and biased) sampling of Old Town’s Facebook Page.  From the legal standpoint, it seems that Old Town has an upper hand, but from all public statements it seems that Portland is committed to moving forward with its own applications and a license. But is a deal with Budweiser important enough to risk the bad press and the alienation of the craft beer industry? The City has until March 15 to appeal the Trademark Office’s last Office Action. By then, we’ll at least know whether Portland wants to continue the fight. In the meantime, I’ll be looking to see how far Old Town distributes its products. Their SHANGHAI’D IPA sounds delicious, not to mention, it has an excellent name.

 

Recently, I attended the University of Minnesota’s celebration of “40 Years of Gopher Justice,” an event honoring the institution’s University Student Legal Service (“USLS”), a non-profit organization that provides UMN students with free legal services. The celebration included a panel on a contemporary topic in student advocacy: “revenge porn.” The topic isn’t relevant just for students, though. One may recall that just last year Hulk Hogan successfully sued the now-defunct gossip news site Gawker for its dissemination of a sex tape depicting him and another woman. Hulk Hogan eventually settled the case with Gawker for $31M.

Hulk Hogan testifies in his suit against Gawker. Image credit: Slate.

The USLS celebration panel hosted three experts on revenge porn, including two attorneys knowledgeable about Minnesota’s new suite of civil and criminal remedies that went into effect in late-summer 2016. See Minn. Stat. §§ 604.31 (civil), 617.261 (criminal). In response to my question about the civil action, one of the attorneys remarked that he believed the Minnesota law created a “copyright” to one’s image, enabling that person to prevent unwanted dissemination and exploitation of pictures and recordings depicting the person in a sexual way. For the sake of persons hoping to prevent and recover damages for unwanted dissemination under Minnesota’s new law, I hope he’s incorrect; after all, the Copyright Act preempts all state laws that overlap with federal protections over the subject matter of copyright, see 17 U.S.C. § 301(a)—which includes photographs and videos, see 17 U.S.C. § 102(a)(5)-(6).

In order to bring a civil action for non-consensual dissemination of private images (the “revenge porn civil action”) in Minnesota, (1) the defendant must have disseminated a private image without the plaintiff’s consent, (2) the image must have been of a sexual character, (3) the plaintiff must have been identifiable in the image, and (4) the image must have been obtained or created under circumstances in which the plaintiff had a reasonable expectation of privacy. See § 604.31, subd. 1. If these four elements are shown, the plaintiff may recover general and special damages, including financial losses resulting from the dissemination of an image and damages for mental anguish, disgorgement of profits made from dissemination, civil penalties, and attorneys’ fees. See § 604.31, subd. 3. See the Minnesota Senate’s overview of this law for more general information about the revenge porn civil action.

What’s interesting about this cause of action is that it’s a blend of both (1) the right to privacy and (2) an intellectual property right called the right of publicity. Right to privacy claims (for invasion of privacy) typically remedy the unjustified exploitation of one’s personality and injury to privacy interests that are emotive or reputational. Right of publicity claims, on the other hand, combat the unauthorized use of one’s identity in commercial advertising and compensate persons for the value of the commercial use of that identity and/or reductions in the value of the cultivated identity. Minnesota’s revenge porn civil action appears to be a specific hybrid of both kinds of claims; it protects both privacy and property interests in a person’s identity and provides relief in the form of both reputational and economic damages, as well as injunctive relief.

Coincidentally, when Minnesota passed its revenge porn bill in 2016, it was also considering the codification of the right of publicity under a bill entitled the “Personal Rights In Names Can Endure” (“PRINCE”) Act. But the bill’s sponsor later pulled his draft after critics expressed concerns about the bill’s broad language. One commentator questioned whether such a bill was necessary in light of Hulk Hogan’s victory. Minnesota’s revenge porn civil action arguably combined two separate claims into one, but it also expanded the scope of recovery under either claim so as to now include multiple forms of relief.

Whether the revenge porn civil action will be utilized to any significant degree is as of yet uncertain. The USLS celebration panelists noted—and a brief case search confirms—that courts have yet to extensively apply and interpret the law. From the face of the law, though, it appears that Minnesota is now a hospitable forum for victims of revenge porn, especially celebrities with economically-valuable identities. And due to the state’s broad remedial scheme, I would not be surprised if we eventually see large cases like Hulk Hogan’s in Minnesota courts.

— Jessica Gutierrez Alm, Attorney

There is an entire gaming sub-culture developed around watching others play video games.  I’m not talking about gathering around the Game Cube in your friend’s basement and passing the only controller.  “Let’s Play” videos are game play videos made by players and posted or streamed online.  The videos usually include the players’ own running commentary, which typically offers sarcasm, loud noises, bad jokes, profanity, and occasionally helpful tips.

The concept of Let’s Play videos has been around, in various forms, as long as recording devices and screen captures have allowed gameplay documentation.  Today, some players make a sizeable living from Let’s Play video ad revenues.  Felix Kjellberg, whose YouTube name is PewDiePie, is easily the most well-known Let’s Play vlogger.  With over 50 million YouTube subscribers, PewDiePie was named the highest-earning YouTuber in both 2015 and 2016.

A screenshot from PewDiePie’s Let’s Play video for the game Dark Souls

Despite their popularity, however, the legality of Let’s Play videos is on shaky ground.  Each video features a reproduction of copyright-protected images from a video game.  The videos also typically feature the player’s voiceover and a small window showing the player’s reactions (see above example).  If not a pure reproduction of copyright-protected material, the videos are at least a derivative work.

Some have argued that Let’s Play videos are protected fair use.  Statutory examples of fair use include criticism, comment, news reporting, and a few others.  Arguably, the gaming videos may be a form of commentary, as at least some of the videos do include commentary on the copyright-protected images themselves.  However, these statutory categories are only examples, and fair use is decided on a case-by-case consideration of six factors.  The transformative nature of the videos may weigh in favor of fair use.  That is, rather than a video game, Let’s Play videos provide video playback of one user’s gameplay with added commentary.  At this point, it is largely unclear whether these videos constitute fair use, and will likely remain so until a court has the opportunity to give guidance.

Whether Let’s Play videos are rampant infringement or protected fair use, video game developers have largely chosen a hands-off response. PewDiePie’s videos provide free advertising for the game developers to 50 million subscribers.  The videos give potential players an opportunity to preview gameplay and graphics before purchasing.  Because the draw of a video game is in active play, this likely does not take away from the game developers’ bottom lines.

This week, however, one video game developer reminded PewDiePie of the unstable footing on which his vlogging fame rests. A recent PewDiePie video included some racist commentary.  Unfortunately, it isn’t PewDiePie’s first misstep of this type.  Though this particular incident ruffled the wrong game developer’s feathers.  In a series of tweets, a co-founder of Campo Santo—developer of the game Firewatch—condemned PewDiePie’s statements and vowed to file DMCA takedown notices for PewDiePie’s Firewatch videos.

The Firewatch creator stated “I am sick of this child getting more and more chances to make money off of what we make.”  In apparent reference to the legalities, he said “[t]here is a bit of leeway you have to have with the internet when [you] wake up every day and make video games. There’s also a breaking point.”

This game developer’s response illustrates developers’ power with respect to the success of Let’s Play videos, and more generally highlights the power afforded copyright holders by the DMCA. The Firewatch creator’s takedown threat was an apparent result of his personal disgust at PewDiePie’s racist remarks, and did not relate to any new discovery of infringement.  Like other game developers, Campo Santo was well aware of Let’s Play videos.  Instead of using takedown notices to eliminate infringing content, the developer here is using the DMCA to dictate how PewDiePie infringes its content.  With the help of DMCA takedown notices, developers like Campo Santo can stand back in acquiescence, striking only when the infringement becomes inconvenient.  I wonder if the DMCA drafters anticipated this type of selective enforcement by copyright holders.  In a litigation setting, this practice may even raise the possibility of equitable defenses to infringement.

–James Mahoney, Razor’s Edge Communications

Recently violinists Rhett Price and Shiva Chaitoo got two very different lessons on the downside of posting performances on the Internet.

According to an article in The Boston Globe, a fan of Price alerted him to a video of Chaitoo’s playing. Turns out, Chaitoo was pulling a Milli Vanilli, fingering his violin over a sound-track of Price’s recordings. And he’d been doing it for at least a couple of years, and getting paid gigs from people who’ve seen the vids or his “live” performances.

Long story short: Price isn’t looking for anything more than for Chaitoo to stop his “tribute.”

What’s really interesting about the situation, though, is the copyright aspect of it, and the apparent lack of legal remedies available to Price.

According to Paul Litwin, a partner of Shames & Litwin entertainment lawyers, when Price posted his videos on YouTube and offered free downloads in exchange for email addresses, he essentially granted some use-rights. YouTube’s terms of service include “a worldwide, non-exclusive, royalty-free, sub-licenseable and transferable license to use.”

Litwin says, “If you buy and download a song, you can pretend to play and sing along with it. By posting his music on YouTube, Rhett is allowing the YouTube community to use it. [Chaitoo] isn’t saying he’s Rhett, so from a legal standpoint, he does not appear to be infringing copyright laws.”

Really? The YouTube T&S notwithstanding, it seems to me that this would usually come under fair-use category. Since Chaitoo used it for a marketing tool (and probably also “performed” the tracks at his paid gigs), I think he hit some very sour copyright notes. There’s a world of difference between playing air-violin in your living room and what Chaitoo did.

As I’ve mentioned often before, I’m no lawyer (though I play one in the living room by reading aloud Steve Baird postings as if they were my own), so what do you knowledgeable folks think about both the situation and Lawyer Litwin’s assessment?

And one final factor to consider: Chaitoo lives and works in Trinidad and Tobago, which may complicate the copyright issue and Price’s available recourse.

As the drum roll proceeds to the upcoming Midwest IP Institute in Minneapolis and sharing the podium with Joel MacMull of the Archer firm (and Simon Tam fame) on Thursday September 28, in a few days, I’ll be making a stop south of the border, at the University of Iowa College of Law, where it all started for me in the law, to share some thoughts on this topic with the Iowa Intellectual Property Law Society on Friday September 15, here are the details to attend.

In the meantime, here is my second installment on the important topic of Federal Trademark Registration, the First Amendment, and Freedom of Speech: Part II.

I’ll call it part of a continued, controlled Tam catharsis, with more food for thought and discussion of where the law is heading, especially with forthcoming Part III, exploring the implications of the Supreme Court’s Tam decision, especially the future of federal trademark dilution law.

As you may recall, Part I questioned the Supreme Court’s characterization of Section 2(a) as banning speech and the Court’s conflation of the federal government’s issuance of a trademark registration (and corresponding meaning of the resulting Certificate of Registration, issued in the name of “The United States of America,” and corresponding meaning of the federal registration symbol — ® — which cannot be used lawfully unless granted federal registration unlike © and ™) with the meaning of the underlying trademark subject matter sought to be registered.

As it turns out, the learned Professor Christine Haight Farley of American University Washington College of Law similarly recognized: “A broader critique is that the [Tam] court seems often to be speaking of trademarks when the issue before it is limited to the registration of trademarks.”

With Part II, while admittedly not having all the answers, I thought it might be productive to ask some probing questions about the Court’s decision to provoke further discussion and guidance:

  • Why didn’t the Tam Court acknowledge that the normal and historical operation of trademark law actually facilitates the complete suppression of certain speech, perhaps justifying special treatment and a unique approach from its typical First Amendment and Free Speech cases?
  • Why didn’t the Tam Court acknowledge the material difference in kind struck by Congress between denying registration on the one hand and enjoining and/or punishing trademark use on the other hand, as only the latter truly qualifies as a ban on speech?
  • Why didn’t the Tam Court acknowledge that our entire federal trademark law flows from the U.S. Constitution too? In particular, the Commerce Clause (Article I, Section 8, Clause 3), granting Congress the power: “To regulate Commerce with foreign Nations, and among the several States, and with the Indian Tribes.”
  • Why did the Tam Court not acknowledge that a Certificate of Registration is issued by the USPTO, under authority of the Department of Commerce, “in the name of the United States of America,” under Section 7 of the Lanham Act, and instead proceed to mock the governmental speech argument without addressing or attempting to explain away this difficult fact?
  • Did the Tam Court gloss over the language in Walker v. Texas Division, Sons of Confederate Veterans, Inc., noting “government statements (and government actions and programs that take the form of speech) do not normally trigger the First Amendment rules designed to protect the marketplace of ideas”?
  • Why did the Tam Court not feel compelled to explain how and why the government actions of approving or disapproving marks for registration somehow does not take the form of speech?
  • Was it disingenuous for the Tam Court to say “trademarks are private, not government speech,” when it was apparently unwilling to specifically and directly say that the government’s act of registering a trademark, issuing a Certificate of Registration (in “the name of the United State of America”), and placing a trademark on the Principal Register, is not government speech?
  • Isn’t the proper comparison in Walker and Tam, the state government’s direct control over specialty license plates and the federal government’s direct control over Certificates of Registration and the Principal Register, so isn’t it a red herring to emphasize that the federal government doesn’t “dream up” the applied-for marks, since Texas didn’t “dream up” the multitude of specialty license plate designs either?
  • Doesn’t the federal government, through the USPTO, edit, modify, and amend applied-for marks (through required disclaimers, description of goods/services changes, description of the mark changes, and drawing changes, etc.), at times, to place them in proper condition for approval, making the Tam Court’s attempt at distinguishing Walker v. Texas less compelling?
  • Why was the Tam Court more willing to limit Walker v. Texas to its facts than upholding the disparagement bar in Tam as facially constitutional, and then limiting Tam to its facts, in the unlikely event the hypothetical concern of Congress attempting to amend the Copyright Act to refuse similar matter ever would arise in the future?
  • In other words, why was the Tam Court so willing to embrace the hypothetical concerns of the false Copyright comparison with a multitude of ways to fairly distinguish from trademark?
  • As to the concern of chilling speech by denying federal registration, isn’t it telling that during the entire more than 100 year history of federal registration in the U.S., only some 5 million federal registrations have issued, which most certainly is a drop in the bucket to the number of eligible unregistered marks in use throughout the same period of time?
  • The Tam Court relied, in part, upon a perceived “haphazard record of enforcement” of the disparagement bar, how difficult would it be to develop evidence showing a similar “haphazard record” in applying other statutory bars found in federal trademark law?
  • How can the Tam Court actually resist saying that trademarks are a form of commercial speech, when it previously held in Friedman v. Rogers that the use of trade names “is a form of commercial speech”?
  • Why didn’t the Tam Court ever once mention “public policy” or the “unconstitutional conditions” doctrine in its decision?
  • Did the Tam Court focus its sights on “viewpoint” as a way to avoid implicating too many other content based restrictions in the Lanham Act as becoming vulnerable to First Amendment challenges?

Stay tuned for Part III, as the Tam Court’s focus on “viewpoint” is the likely key to unlocking what additional portions of federal trademark law are vulnerable to future First Amendment challenges.

— Jessica Gutierrez Alm, Attorney

New ideas, creations, and business ventures are often the product of collaboration.  If lawyers had their way, a written agreement would precede every creative collaboration.  Of course, this is not the case.  Collaborators often do not seek advice of counsel, or see the need for an agreement, until after the new idea, creation, or venture is well underway.  As a result, statutes and case law operate to define the joint ownership rights.  Each type of IP affords slightly different rights to joint owners.

Patent

A patent, whether design or utility, provides the patent holder with the right to exclude others from making, using, selling, offering to sell, and importing the patented invention.  Where a patent is owned by multiple entities, each joint owner has the right to independently license any of these rights.  Moreover, patent joint owners do not have a duty to account to one another.  This means that joint owners do not have to share profits with one another.  However, the consent of all owners is generally needed to sue to enforce the patent.  In practice, this means that one joint owner can block others from suing.  Consent of all owners is also needed to exclusively license the patent.

Copyright

A copyright holder has a set of rights, including the rights to reproduce, distribute, make derivative works of, perform, and display, the copyrighted material.  Similar to patents, each joint owner of a copyright may individually exercise these rights without consent of other joint owners.  Each joint owner may additionally license these rights.  However, there is one notable difference from patent law: the duty to account.  Each joint copyright owner has a duty to share profits obtained from the copyright with all joint owner.  Another distinction from patent law is that joint copyright owners may each sue to enforce the copyright without consent of other owners.  However, consent of all owners is also needed to exclusively license the copyright.

Trade Secret

Due to the nature of trade secrecy, the law of joint ownership of trade secrets is not as well defined as with patents and copyrights.  In general, case law suggests that joint owners of a trade secret may each use the trade secret for their individual business purposes.  However, it is unclear whether joint owners have a duty to account.  While consent of all joint owners is likely not needed to sue for misappropriation of the trade secret, the owners must consent to exclusively license the trade secret.

Trademark

The prospect of a jointly owned trademark is something of a different nature.  By definition, a trademark is an identifier of a single source.  While multiple parties can own a trademark, if each party is permitted to use the mark independently in the marketplace, by definition, the mark is no longer designating a single source.  Additionally, the law is unclear on whether joint trademark owners have a duty to account, or whether they must consent for an infringement suit.  In many cases, a co-branding agreement may be a good alternative to a jointly owned trademark registration.  Alternatively, multiple parties may want to jointly own a single entity, which in turn owns the mark.

Consider that SUPER HEROES is often used in conjunction with DC COMICS or MARVEL, which are source designators. What do you think? Are DC and Marvel asking for a genericness battle?

Jointly owned trademarks are rare, but not unheard of.  Arguably the most famous jointly owned trademark is owned and maintained by two competitors.  DC Comics and Marvel Comics have co-owned the mark SUPER HEROES for decades.  This seems a strange duo since the two companies are not only direct competitors, but also the only major players in the comic book realm.  Nonetheless, the two entities have jointly owned the mark since 1979, and are known for diligently enforcing itSome wonder if this is an example of trademark misuse, as SUPER HEROES does not designate a single source.  A consumer might identify a product with SUPER HEROES as being from either DC Comics or Marvel Comics.  The companies’ fierce enforcement efforts may be an attempt to head off an inevitable genericness fight.