Generic Fair Use

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Trademarks vs. Disparagement

September 30, 2016

On September 29, 2016, the United States Supreme Court granted certiorari in the matter of Lee v. Tam, regarding whether the disparagement provision of the Lanham Act is facially invalid under the First Amendment, particularly whether it restricts free speech. This is the appeal from the same case I wrote about last December. I am curious to see how the Supreme Court tackles this issue, and what I consider substantive errors in analysis made by the Federal Circuit last fall.

Nevertheless, while the legal issues are heavily nuanced and regard convoluted topics such as “chilling effects,” “government speech” versus “commercial speech,” “disparagement,” and what constitutes “use in commerce,” it appears the layperson is confused by the scope of the case. Particularly, after the news broke yesterday, the common theme was “why is a musical group not allowed to call itself the Slants?” – which is not only wholly irrelevant to the issue but is also a dangerous interpretation of what I consider to be an important trademark matter.

In short, you can name your rock band whatever you want. You can also name your professional football team whatever you want (looking at you, Washington Redskins). No one is going to stop you. The United States Patent and Trademark Office, however, may refuse to grant you a trademark registration for such a name. Not that the name cannot be a trademark – it can be – but “registration” confers additional benefits that may or may not extend to marks that the USPTO considers to be “disparaging” of people or groups. This is the entirety of what the Supreme Court is going to address.

Instead, here I will try to address the distinction between free speech, trademarks, and trademark registrations in general terms.

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Olympic Trademarks are Sacred. And Easily Infringed.

August 4, 2016

The 2016 Olympic Games® in Rio are set to officially open this Friday, August 5, 2016.[1] Every four years, for a glorious 16 days, the world gathers in unison to watch athletes compete for the gold medal in a multitude of games in varying degrees of popularity. The world also gathers to sell you things. Lots and lots of goods and services will be offered through fancy advertising. Many of these ads will exploit the famous Olympic rings and pictures of the Games in association with certain products. “Official sponsor of the Olympic Games” being a key phrase.

Why is this? It is because the Olympic Games are serious business. Not surprisingly, the use of Olympic-themed trademarks is equally serious business. Even in the United States, these trademark rights supersede U.S. trademark law in many areas and are granted a “privileged status.”[2] The International Olympic Committee (IOC) owns most of these trademarks and it is hyper-vigilant in its enforcement of the uses of these marks.

What constitutes an Olympic trademark? Why are they given special privileges? Let’s explore!

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What’s in a name? Houston area law schools now in a trademark dispute

June 29, 2016

On June 22, 2016, South Texas College of Law announced that it was changing the name of the school to “Houston College of Law.” The school also introduced a new color scheme on its website[1] that is predominantly red and white, with shades of gray. As a bookend to the public announcement, it appears the school also filed a trademark application for the word and design mark HOUSTON COLLEGE OF LAW EST. 1923, with a filing date of May 12, 2016.[2] The trademark application also asserts a date of first use of April 6, 2016.

Name changes can be a good thing. Typically. A rebranding can assist in drawing attention to a stale mark or product. It can attract new customers. It can introduce a product or service into a previously under-represented industry. In essence, this is what trademarks are for: to assist the consuming public in identifying the source of goods and services. The only problem is that “Houston College of Law” looks and sounds like “University of Houston Law Center,” which has been in existence in the same geographical area since approximately 1947.[3] The University of Houston has also embraced a red-and-white color scheme since the late 1930s.

As you can imagine, this name change and color scheme did not sit well with the other local law school. On Monday, June 27, 2016, the Board of Regents of the University of Houston System filed a lawsuit in the Southern District of Texas, Houston Division against South Texas College of Law.[4] The Complaint asserts causes of action for trademark infringement, unfair competition and false designation of origin, false advertising, dilution by blurring or tarnishment, and related state and common law claims.[5]

Now that this matter is in the court system, what can be expected and how should this play out?

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How do I avoid copyright infringement as a songwriter?

It has long been a running joke that if you only know how to play the G, C and D chords on a guitar, then you already know how to play hundreds of different popular songs. Many musical acts have been ridiculed for only playing the same three chords over and over. “Three-chord” rock music is practically its own genre. The I-IV-V major key chord progression is even considered the “standard” blues progression. Within that construct, there are only 12 basic “notes” or tones in the musical spectrum: A, Bb, B, C, C#, D, Eb, E, F, F#, G, and G#. From there it is just a matter of octaves to achieve different ranges of an “A” note. In short, there is a finite amount of discrete notes along with a relatively limited amount of chord progressions that are available to a songwriter.

Copyright law, meanwhile, only protects “original works of authorship” in musical works and sound recordings.[1] It is right there in the statute: the song or sound recording must be original. Without the element of originality, there is nothing protectable under the law.

Knowing this, and with hundreds of years of the history of songwriting, are there any songs that are truly “original” anymore? Is there any progression or riff that is so unique as to stand apart from every song that has been previously written? If not, how are musical works still subject to claims of copyright infringement and why should we care?

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Hey, Stop Using My Song For Your Campaign!

Can musicians and artists legally demand that politicians not use their works?

Recently, the Rolling Stones sent a notice to Donald Trump demanding that he cease using their songs at his campaign events across the country. This is not the first time an artist has objected to a politician using certain songs or related works in conjunction with a political campaign. It is practically a rite of passage for a high-profile politician to anger a musician with a particular choice of campaign theme song. This is an American trend that dates back at least to the early 1980s, when Bruce Springsteen upbraided President Ronald Reagan for using “Born in the U.S.A.” as part of his re-election efforts.[1]

Of course, the Rolling Stones are not an American band. Plus, by now we all know that Donald Trump is not exactly the type of person to back down to what may be a toothless demand. Trump might all too willing to cite 250 years of American history by telling the Rolling Stones to take their demand and shove it. He thrives on this type of attention after all. But that is not the question. The real question is this:

Can Donald Trump (or most any politician) use any song they want for a campaign without obtaining the musician’s permission?
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Lady Gaga is not famous – according to the Trademark Office

Lady Gaga is an American recording artist.[1] She is a singer, a songwriter, and a performer. She recently won a Golden Globe® for her work on the American Horror Story television show. She also was nominated for an Oscar® in 2016.[2] As of 2016, she has sold over 27 million albums worldwide. She also owns registrations for her “Lady Gaga” stage name.[3] I feel confident in stating that Lady Gaga is famous.

Yet in an opinion dated March 30, 2016,[4] the Trademark Trial and Appeal Board determined that “the evidence in the record does not rise to the level needed to show that LADY GAGA has achieved true fame among consumers…”[5] Apparently, not even Lady Gaga’s trademarks are commercially recognizable enough to be deemed legally famous in certain areas.

If LADY GAGA is not famous, then how does one reach the level of “fame” in the context of trademarks? This appears to be an absurdly high standard of proof. How do we explain a legal opinion that seems so entirely disconnected from reality?

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Stairway to Infringement? Led Zeppelin facing copyright claims

On May 31, 2014, the estate of Randy Craig Wolfe filed a lawsuit in the Eastern District of Pennsylvania against James Patrick Page, Robert Anthony Plant, and John Paul Jones, among others.[1] The primary cause of action is copyright infringement. There does not appear to be anything special about such a lawsuit until you realize that the Defendants are famous musicians that performed under the name “Led Zeppelin” and the “among others” includes Warner Music Group. The alleged basis for copyright infringement? Stairway to Heaven. Yes, the 1971 song that continues to be a staple at every middle school dance. Suddenly this lawsuit seems like kind of a big deal.

How is such an iconic song subject to a copyright infringement lawsuit 45 years after its initial release? How was this suit not dismissed as frivolous right away? Does the judge not know about this little thing called a ‘statute of limitations’? This all seems highly unfair, right?

Well, a jury gets to decide all of these issues as early as next month. On April 8, 2016, the district court judge denied the relevant parts of Led Zeppelin’s Motion for Summary Judgment and the lawsuit is set to proceed to trial.[2] In the meantime, a quick overview of this case and how 1970s copyright laws are still relevant today.

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When Keeping it Real Goes Wrong? The Supreme Court declines to hear the “Madden NFL” appeal.

In January 2015, in Davis v. Electronic Arts Inc., the United States Court of Appeals for the Ninth Circuit held that the makers of the extremely popular Madden NFL video game series could not overcome former players’ claims for violation of publicity rights by claiming First Amendment protections.[1] Electronic Arts Inc., the Defendant and the maker of the game, eventually appealed to the United States Supreme Court on grounds that they are essentially being penalized for making a game that is “too realistic” and life-like.[2] An emboldened use of the “we are just too good at our jobs” defense, perhaps?

On Monday, March 21, 2016, without any further commentary, the Supreme Court denied EA Sports’ petition to hear the appeal. Procedurally, this is called a denial of certiorari, and it means that the Ninth Circuit’s verdict remains the final judicial determination on the issues presented. Colloquially speaking, and while maintaining the proper sports metaphors, this means the Supreme Court punted.

But what really is the issue here? Where do publicity rights end and the First Amendment begins? Why does EA Sports contend that it has no obligation to pay retired professional athletes for the use of their images and likeness rights?

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“Easter” is a registered trademark. Cease-and-desist all uses?

Today is Good Friday, the legal and Christian religious holiday of sorts commemorating the crucifixion of Jesus Christ. Sunday is Easter, celebrating the resurrection, concluding Holy Week, and also culminating in the end of the religious period known as Lent. These events have been recognized throughout the Christian and secular world for over 2,000 years.

Easter is also big business. From “Easter eggs,” to chocolate bunnies, to special pastel-colored clothing for Sunday church services, the holiday has been commercialized. Not surprisingly, there are multiple registered trademarks that are Easter-themed. Here are just a few:

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In the poker game of life, the USPTO is the rake.

No new card games are patent-eligible without the invention of a new deck

On October 26, 2010, two enterprising individuals from New Jersey filed a patent application with the United States Patent and Trademark Office for a “Blackjack Variation.”[1] The Smiths sought to acquire patent rights to a new casino game they called “Pacific Rim Blackjack.” It appears that these inventors created a card game variant that merges the concepts of blackjack with Baccarat. The application claims that “casinos are in constant need of new games of chance to retain and attract patrons.” Additionally, the patent application asserts that existing games of chance such as blackjack, Three-Card Poker™, Baccarat, and Pai Gow are “popular” but “suffer from drawbacks.”

Due to the applicants’ unprovoked attack on the greatness that is Pai Gow poker, the USPTO rejected the patent application in whole. Well, okay, the patent examiner and later the Patent Trial and Appeal Board (PTAB) actually rejected the application on grounds that the alleged invention is “abstract” and therefore not patent eligible subject matter. The inventors appealed this decision and on March 10, 2016, the Federal Circuit affirmed.[2] Though the interesting part of the decision is not the rejection of the application itself – it was the Federal Circuit’s rationale and hints at the types of card games that might actually be patentable.

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