First posted August 25, 2017.
From Variety and really, all over your Internets:
The VidAngel filtering service will remain shut down, following a ruling Thursday from a three-judge panel upholding an injunction against the service.
VidAngel was forced to shutter its service in December, after U.S. District Judge André Birotte Jr. ruled that several studios were likely to succeed in their lawsuit claiming that the service violated their copyrights. The family-friendly streaming service filters out offensive language, nudity, and other objectionable content from mainstream movies. It does so without a license, contending that its service is exempt from copyright claims under the federal Family Movie Act.
Birotte disagreed, and on Thursday a Ninth Circuit Court of Appeals panel upheld his injunction. The Family Movie Act requires that a filtering service use an “authorized” copy of the work in question. VidAngel argues that because it begins with lawfully purchased DVD copies — which it then decrypts and copies to a server — its service begins with “authorized” copies. Writing for the panel, Judge Andrew David Hurwitz made quick work of that argument.
“VidAngel’s interpretation would create a giant loophole in copyright law, sanctioning infringement so long as it filters some content and a copy of the work was lawfully purchased at some point,” Hurwitz wrote. “But, virtually all piracy of movies originates in some way from a legitimate copy. If the mere purchase of an authorized copy alone precluded infringement liability under the FMA, the statute would severely erode the commercial value of the public performance right in the digital context, permitting, for example, unlicensed streams which filter out only a movie’s credits.”
I have been troubled by the idea that you can’t buy a commercially-distributed video and run it through whatever the heck filter you want for your private viewing since I first wrote about the ClearPlay case way, way back in August of 2005. (At right is a charming souvenir of what that post looked like in ancient times, courtesy of the Wayback Machine.)
This appears to be a cultural battle and not a legal one: Creators are insisting that they have the last word about how the particular widgets with they part in exchange for money
will be enjoyed and consumers are, so far, kind of stuck with that. Because widgets by artists (and software companies) are not to be confused with other things you can buy and then you own, no matter what the seller thinks.
And I admit there are a lot of moving parts here, even if they sometimes appear frozen solid:
As “Fearless Girl” was heralded by many as a symbol for female empowerment, Di Modica doled out sharp criticism, casting the statue as not art, but a publicity stunt by the gender-oriented company that commissioned it.
He forcefully advocated against a global campaign to make “Fearless Girl” a permanent fixture, but fans persevered, persuading New York City Mayor Bill de Blasio to extend the statue’s permit through April 2018.
On behalf of his bull, Di Modica won’t back down.
The artist will hold a news conference Wednesday with attorney Norman Siegel, the former director of the New York Civil Liberties Union, to explain his plans to challenge the city officials who let “Fearless Girl” happen without asking his permission.
“We’re all for gender equality,” Siegel told The Washington Post Tuesday night. “But the questions are because there are other issues.”
Yeah, bull statue artist guy, life comes at you fast, huh?
I admit it’s complicated. After all, aren’t I against censorship?
Well, I’m certainly against you censoring me.
— Gab (@getongab) August 23, 2017
But me censoring me? What — once I buy your stuff, I have to watch it your way? Really? Because art?
Maybe, actually. I said it’s complicated.
Anyway, I lost track of what happened with ClearPlay. Evidently there was also something else in between it and VidAngel — quite a few things, as it turns out, with names such as CleanFlix, Clean Films, Flix Club, Movie Mask and Cougar Video. When I saw this tweet by Bill Donahue about the VidAngel decision and decided to do this post, however, I was quite surprised to see that ClearPlay was still, or had until very recently had been still, doing something with something involving something. This Variety story from February 2017 explains it, and brings the story charmingly full circle, actually:
The battle to offer clean versions of Hollywood movies to faith-driven consumers is getting even messier. ClearPlay, a Salt Lake City-based company, disclosed on Tuesday that it is no longer offering filtered versions of new releases through its streaming site.
A rival company, VidAngel, first noticed that the company had quietly stopped offering new releases, and drew attention to it in a news release. VidAngel has been fighting against the Hollywood studios, which claim that its service violates their copyrights. ClearPlay, which won a similar battle with Hollywood more than a decade ago, has been offering filtered versions of new movies through Google Play.
In December, the studios won an injunction ordering VidAngel to shut down. In that order, Judge Andre Birotte steered affected customers to ClearPlay, noting that the site operates with the studios’ blessing. Neal Harmon, the CEO of Provo-based VidAngel, said the discovery that ClearPlay is no longer offering new releases demonstrates that the industry is not open to filtering.
“There’s a federal law that says you can stream filtered movies,” Harmon said in an interview. “But today, there’s absolutely no way to do so. The studios got what they wanted.”
Yes, that happens. A lot, in fact.
As I asked in that post, “Who says that just because Hollywood wants it, it should get it? Who says just because the logic is not all that bad, maybe even arguably linear, that Hollywood should get it?”
Question was rhetorical. But now that I think about it, framing it that way makes me realize that it’s not really so complicated after all.
First published July 24, 2017.
I was recently, and very briefly, the toast of whatever for my efforts in making the world safe for nasty trademark registrations under the banner of the First Amendment.
But today I got a result, along with my colleague Bruce Godfrey of Jezic & Moyse LLC, in a First Amendment case that got — and will get — a lot less attention, but which is arguably of greater significance — not just with respect to free speech, but for the dismal truth it tells us about the state of the civil legal system and the bar. Start here:
— BeleaguredPopehat (@Popehat) July 24, 2017
I don’t have to explain why it’s important that the courts not let themselves become instruments to silence commentary on issues of public significance, or to enforce the whims of serial “lawfare” litigators. I am happy to have made a contribution to prevention of such a state of affairs, of course.
But I am writing here about baking that free-speech cake that everyone will continue enjoying. I am doing so because I really wanted to write this blog post the day the Supreme Court ruled in Simon Tam’s favor. I didn’t because I’m already enough of a sourpuss as it is. But today I can’t help but note, bitterly, the contrast, and yet a certain commonality, between certain moments in my pro bono work concerning the trademark for THE SLANTS, and my experience representing fellow blogger Patterico — Patrick Frey — in his defense of the litigation brought by Brett Kimberlin.
I have hinted at this before. For the first time, however, in order to make this important point, I am going to tell you what happened when the Federal Circuit, en banc — after reversing itself sua sponte and vacating its affirmance of the PTO in In re Tam — ruled in our favor in December of 2015, invalidating the “disparagement” clause of Section 2(a) of the Lanham Act.
The vultures were calling. Circling. They smelled fresh kill.
Because at this point, anyone not blinded by ideology knew what was happening: The CAFC (“Court of Appeals for the Federal Circuit”) had set up In re Tam to kill Section 2(a) of the Lanham Act before the Redskins could reach the Supreme Court. with their messy, unattractive but constitutionally sound case.
Yes, the Redskins’ constitutional attack on Section2(a) was sound, of course. But booting a 70-year-old feel-good law in favor of the dumb old First Amendment threatened to be awkward and embarrassing (except for the ACLU, which is shameless). In contrast, Simon Tam’s case — where the trademark at issue was being “reappropriated” by a member of the putatively affected group — would be a much easier pill for everyone to swallow to get to the only result seriously conceivable under present First Amendment jurisprudence.
That is why, of course, the CAFC panel rubber-stamped the TTAB’s decision, which should readily have been overturned on administrative law grounds, not constitutional ones. It’s why, sitting en banc, the CAFC affirmed the finding of disparagement again: it had to do so to reach the constitutional issue. Which is fine; I have since then written many times that a First Amendment challenge indeed the only way to kill the beast.
But back to the vultures. I promise to return to Patterico. But you need to see the whole thing.
After the decision in In Re Tam, experienced federal appellate lawyers knew very clearly what was happening before their eyes: In re Tam was going to be a winner. And now after six years of wretched anonymous work by others, from the trademark registration application through the TTAB appeal, the panel appeal in the CAFC and the en banc appeal — now the vultures wanted in on it.
I got calls. Simon Tam got calls. And they all went more or less like this:
You guys were simply delightful in the Federal Circuit, coming out of New Jersey and all that. Charming country lawyers. But now it’s you against the Solicitor General, the Justice Department. And, really, the justices themselves. They don’t like strangers, and they don’t like amateurs poking around at the First Amendment. So you need us.
The Redskins lawyers told us it was time to hand over our case to them, because we couldn’t win it the way they could win it. We could keep our names on the brief if we wanted, but it was time to get out of the way. This could only be handled by Supreme Court Elite — the SCOTUS regulars, former SCOTUS clerks who knew how to play the justices the way no Jersey bumpkins ever could.
To his credit, as I have mentioned before, Simon Tam stuck with us — even after he was personally squeezed by one of the pretty boys of the SCOTUS Elite, who pounded him with the message that without his name on the brief, his years of waiting and sacrifice would be wasted by the amateurs from the Garden State.
The Redskins, meanwhile, tried to do an end-run into the SCOTUS zone around us — and were prepared to pretty much stop at nothing to get there. Following which Pretty Boy told me, personally, on the phone that the Redskins’ move was, far from the Hail Mary that it looked like, really a “slam dunk” unless we put him or one of his fellow superstars on our brief and in the drivers’ seat. The Justices, he said, would not be able to resist the invitation to get rid of us and avoid addressing this incredibly complex question without guidance from a SCOTUS elite superstar.
He got a bucket of sand too. And, as they say in the appellate law business, his supposed prediction was error. But good try, guys. Hope you like the scent, vultures. We’re good.
And, with God’s help, ultimately, we were. Without them.
— Ali ???? (@ali) March 17, 2015
Not that it was an easy ride, unanimous decision notwithstanding. Oh, sure, now we know that. But the ankle-biters were in full bloom after the argument. One wag (I can’t find the quote now) reported on the oral argument along the lines of “the justices seemed to wish they could rule against both sides.” We heard all kinds of speculation, second-guessing. Eight justices — how about a tie? What then?
But when it came out our way, 8-0, and people asked me if I was surprised, I said I was not. Because while the justices asked both sides hard questions, they weren’t the same hard questions. They asked us probing, Socratic questions to test how far we thought our argument could go. Whereas — all you have to do is read the transcript to see this — the questions the justices asked the government were almost all different versions of, “Are you nuts?”
The Pretty Boys, the SCOTUS Superstars, knew this from go. That’s why they wanted a share of the cake we baked. After all, we gave it away free to Simon Tam — and, ultimately, the Redskins. Why not share a little of the glory with the people who need it the least?
Now fast forward a few months to Ken White’s post embedded above and our victory, on behalf of Patterico, in another pro bono case for free speech (which I anticipate will be appealed).
Unlike in the The Slants’ case, in which we never asked for help (except, ultimately, from UCLA’s First Amendment Law Clinic), help was needed to defend Patterico against the extremist “lawfare” that was being openly waged against him. Ken White and I had worked together on Naffe v. Frey in California and, ultimately, the Ninth Circuit. Ken, of course, is a California lawyer.
But for the Kimberlin lawsuit, we needed help in Maryland. I was quite confident we could get it, for all the reasons you’d expect — all the friends Popehat, Patterico and LIKELIHOOD OF CONFUSION® have among lawyers; my own professional network; and all the things. Here we were asking for help, and although it didn’t have the odor of easy pickings the way In re Tam did after the Federal Circuit opinion — much less after the Supreme Court granted cert — well, we had just done pretty well in the Naffe case, and this seemed like a similar chip shot.
We only needed a friendly, well-appointed law firm with federal court expertise in Maryland. We were ready to share a little First Amendment glory. Just help us bake the cake a little!
It wasn’t a chip shot. And until Bruce Godfrey stepped up, our attempt to get help was responded to pathetically.
You Can Help
Are you happy that our system allows people like Kimberlin to wage lawfare to suppress speech?
You shouldn’t be. You shouldn’t be even if you approve of Kimberlin’s progressive views (or, more accurately, the progressive views he mouths to fluff the gullible and the vapid) and can’t stand the conservative views of his targets. In fact, lawfare is more likely to be used by the rich and powerful and (in many cases) the conservative. You’re a fool if you applaud it because this time it targets people you don’t like.
You can help. But will you?
You can help if you’re a lawyer or law student by providing pro bono assistance to the defendants who can’t afford their own attorneys. Even if you can’t be a local counsel or an attorney of record — and it would be great if you could — you can be part of the team. (One of Kimberlin’s tactical errors is suing in federal court. It’s much easier for out-of-state attorneys to appear in Maryland’s federal courts than in its state courts.) . . .
Postscript: A Hope, And A Pointed Question
. . .
I have to ask a question. Conservative media is awash with power, influence, money, and contacts with giant and utterly merciless law firms. It’s not entirely clear to me why, when a domestic terrorist posing as a “progressive activist” is employing lawfare to silence conservative citizen journalists, it falls to an anti-War-on-Drugs, security-state-condemning, War-on-Terror-questioning, 2008-Obama-voting, Fox-News-ridiculing criminal defense attorney from Los Angeles to do so much of the legwork looking for pro bono help for the victims. Why is that?
I can guess a few reasons.
By the way, is there a pro sports team that would benefit from the First Amendment being saved from Brett Kimberlin — immediately, that is?
The “Popehat Signal” had gone up. But despite Popehat’s phenomenal reach, we got nothing from nobody to help with this case until Bruce Godfrey, a lawyer in a small law firm — not the ideal profile, in terms of resources or time available for volunteer work, but the ideal man — stepped up. (Ironically, Bruce is, like me, a Princeton alumnus. But he wasn’t on the email list.)
Big firms with offices in every city? Nothing. Friends of friends in Maryland? Nothing. First Amendment loudmouths from anywhere? Crickets.
Here’s how pathetic it got. At one point, I put an inquiry for help up on a Princeton alumni mailing list called Princeton-Lawyers. I got a couple of suggestions — hey, try this guy — which went nowhere. And one possible bite, from a list member at a well-respected larger firm in Baltimore. He promised to run it by his pro bono committee.
I never heard back from him.
I don’t mean he came back and told me, no, they’re not comfortable with this. No, it’s not what we do. No, we’re over our pro bono allocation for this year.
He just never got back to me. Of course I asked. Of course more than once.
Was he embarrassed? He should have been.
He should be.
Funny story: During the Naffe case, I was on an email chain with Ken and Eugene Volokh, discussing the case. Eugene, of course, has a great deal of interest in the First Amendment, and had even written about Section 2(a) quite some time ago. As a member of the UCLA First Amendment Clinic, Eugene worked with us on the our brief for The Slants, in fact, and his name is on it; we’re grateful for both of those things. It was a pleasure working with him, especially not least because he is a voracious law blogger.
Turns out that, during that email discussion involving Naffe v. Frey, I mentioned this cool trademark case I was working on involving an Asian band that was trying to get past Section 2(a) to Eugene, hoping to stoke his interest in it. He is very influential as a blogger and thinker on the constitution.
He didn’t get back to me.
Well, ultimately Bruce and I got the job done for Pat Frey, with a bit of occasional help from some other friends. Bruce did all the hard work whereas I, as is my wont, stood astride the commanding heights and wrote pretty words. No, it didn’t involve the half a million dollars, plus, in donated fees that it took to save your First Amendment for you via THE SLANTS, but was it six figures worth of pro bono time? Between Bruce and me, it certainly was.
Patterico’s Pontifications isn’t for everyone. Neither is THE SLANTS trademark.
But the First Amendment is. And once again, a handful of suckers, working for free and maybe a little bit of SEO love, have saved it.
Thanks to pretty much no one.
Would you like some cake?
Words are almost everything in a trademark registration, notwithstanding that one drawing. Stick with me. It’s going to get a little esoteric — not to say woolly — but hey, it’s a blog post. And you have my word that when we’re through, there won’t be any more.
So, it may sound obvious, but it is as clear as the pixels on the page you are perusing that the words (and the drawing!) on a trademark registration are, or should be, the only things that (besides the Lanham Act) define the rights granted by that registration. Other facts, “context,” intentions are (or should be, as we will see) irrelevant as far as the registration goes. This is true for both a word mark or a “design mark” (what most people think of as logos) or hybrids of trademarks that merely include words. (The difference between a design mark and a word-plus-design mark matters in all kinds of ways, and the taxonomy of trademarks itself would make a great blog post except that it already makes a great blog post, and Eric Waltmire wrote it.)
There are innumerable ways word choices that reflect legal principles affect trademark rights during the registration process. For one, as I wrote in my 2011 “don’t do it yourself” post, every registration is limited to the goods and services recited in that registration. There is no LIKELIHOOD OF CONFUSION, after all, between goods that do not and probably never will compete. Failure to recite goods and services properly can doom an application or, worse, result in a registration that provides false comfort because it does not protect what it should.
On the other hand, a well-tempered trademark registration can make a virtue out of the seeming vice of a vague goods description, as Steve Baird notes in a fascinating post putatively concerning beef jerky:
[T]here can be a fair amount of legal strategy in selecting to use the best generic name for a brand that is broad in scope, but is still bite size, memorable, and easily embraced by consumers. Similar strategy is required when seeking federal registration at the USPTO.
For example, if your brand is only currently being offered in connection with “tie tacks,” why not seek federal registration in connection with “jewelry” too, combining broad and narrow?
The far narrower “tie tack” description is a type of “jewelry” so use of the brand name in connection with “tie tacks” also supports use of the more expansive “jewelry” category.
Moreover, both terms are allowed and listed within the USPTO’s Acceptable Identification of Goods and Services Manual (ID Manual), allowing for this broader claim of rights.
Beyond an enhanced scope of rights, doing so would give the brand owner some comfort over time while expanding the offerings to commercially grow into the broader description, subject to any Section 18 challenges, of course.
Of course! The right choice of words, Steve explains, can be used to stake out the semiotic space around a trademark to the extent permitted by the law and regulations concerning trademark registration.
But, of course, there is again and above all the mark itself, which, once its existence is established, is defined by two dimensions: what we might call space (what is the mark?) and time (how — with what goods or services — is it used?). Steve’s beef jerky post demonstrates how insightful consideration of both dimensions, and the right choice of words to reflect that analysis, maximizes the grant of rights in a trademark registration.
Indeed, even the form of the drawing submitted with the application and displayed in the registration hangs on appropriate understanding of the verbal components in the application. The value of proper formulation is most urgently appreciated when that call comes from an Examining Attorney saying, hey, you’re pretty much good to go here — we’ll just need this little tiny disclaimer and we’ll send you right through…
Words matter a lot. In prosecuting a registration, a knowledgeable practitioner sweats over them, gives and takes with the Examining Attorney and, as Steve demonstrates, appreciates that they provide the framework that defines the mark in form and in action.
These two dimensions are not always unrelated, as demonstrated by a post John Welch wrote, in 2016, about the TTAB’s affirmance of a refusal to register a mark based on a consent agreement (a concept explained here by Erik Pelton) that the TTAB found sliced the onion too thin. The idea of the agreement was to allow a pair of competitors to use and register the marks TIME TRAVELER BLONDE and TIME TRAVELER for beer at the same time. The suggested difference between these two names reflects a concept trademark lawyers have a hard time communicating to clients, namely that distinctions in wording between two marks don’t matter as much as the marks’ overall commercial impressions.
The lawyers that drafted this agreement knew that there wasn’t much difference and that, in trademark law, there was none. So they cleverly hedged the two “different marks” with a set of subsidiary conditions of use — not, as defined above, with respect to identifying the goods and services, but in an entirely different sense: providing a consumer-perception “context.”
The hope was to shape the way the PTO perceived the overall commercial impression of the two marks so the new mark would not be deemed likely to be confused with the old one. Thus the agreement included well-delineated visual distinctions in how each company would use its version of the mark. These would vastly affect how the respective marks would, assuming the agreement was performed, be perceived in the market. What the applicant was doing, in other words, was urging the PTO to incorporate this “context of use” in a way that would transform the marks themselves and turn presumptively identical marks into mere fraternal siblings:
The agreement required that each party use its mark in connection with its house mark, that applicant use TIME TRAVELER or the word TRAVELER only in the mark TIME TRAVELER BLONDE, that the word BLONDE be displayed in at least equal prominence with TIME TRAVELER, and that each party use a trade dress not confusingly similar to the trade dress of the other.
A brilliant idea. But, said the TTAB, not happening. Because while the bells and whistles in the coexistence agreement might differentiate the way the parties intended the marks to be used — different trade dress, maybe different territories — from on board the registration train, TIME TRAVELER and TIME TRAVELER BLONDE look like signs for the same station. A coexistence agreement can’t change that.
But wait! Aren’t parties free to draw private boundaries to avoid bilateral conflict?
Of course! When they do, a rainbow is born!
If we could peer into the souls or bylaws of the would-be registrants at the moment the applicant sought to register its new mark based on this coexistence agreement, we would doubtless observe nothing but the best of intentions sitting together over a game of checkers, steaming mugs of cocoa at their sides.
And that’s fine for them. But the PTO’s primary duty is to the Primary Register, not the applicants. And as a matter of law the PTO can’t register two marks that are likely to be confused. It can’t do that because trademark registrations are very important things.
One thing that makes registrations important is that they are a presumptive legal determination of a mark’s validity under trademark law — not based on private negotiations. (Which is to say, they are supposed to be that.) Thus the PTO is duty-bound to, and did, reckon that notwithstanding the parties’ concord on the matter, these two marks were still likely to be confused with each other by the rest of the world, which was not invited to the parties’ party.
The TTAB explained this while also implicitly addressing the mistaken notion that trademarks are just assets and registration is a vault. No, the TTAB reminded the applicant: trademark registration is not just about you:
[W]hen marks are being searched and cleared, there is a presumption by searchers and attorneys afforded to an unrestricted registration that Applicant’s registration would not and should not be entitled to. . . .
[The agreement’s] promises . . . represent . . . [a] deviation from the parameters of the application and registration, and thus would result in a failure of the public notice function of registrations.
In short, there are no side deals to trademark registration. Extraneous “context” supplied by a contract is inherently foreign to the trademark registration regime. That system is premised on submission, confirmation and publication of a small set of specific empirical facts. These facts are published, mainly in words, on the face of a certificate of registration, by which the world is apprised of the registrant’s claim of right. Relying on this, the world makes its call, as the world will do.
In this calculus, the registrant’s intentions concerning use of that mark — even if embodied in an enforceable contract — are not relevant to the registration inquiry, and thus cannot supplement or shape the verbal description of the mark. TSDR notwithstanding, documents such as coexistence agreements (much less their interpretation) are not among the signals the PTO ultimately distills into the registration. The TTAB may not always be able to resist “enhancing” the bundle-o-rights seemingly delineated in trademark registrations, but in the TIME TRAVELER decision it drew a line around endorsement in the Register of private trademark law.
Superheroes are always different, though. In the real world, trademark law’s rejection of “context” is not a matter of doctrine but of pragmatism. A written contract setting out terms pursuant to which the applicant legally binds himself to use a mark a certain way is context all right — a meeting of the minds, a formal manifestation of mutual intent. A formal bilateral obligation may tell us more, provide us more context, concerning an applicant’s use of the mark than the applicant’s unilateral promise, or other evidence of use. Or it may not.
Either way, other than to confirm, in the examination process, the validity of the applicant’s representations concerning use of the mark, how can registration charge the world with notice of “context” when the only information found on the certificate of registration is a description of the mark, a recitation of goods and services, the dates of first use (whatever, um, that means), the identity of the registrant and the address of his Mailboxes Etc.?
And even if it could communicate “context” or intent as of the “time of registration,” how could the certificate do so a half millisecond after the registration were issued? And another four seconds later? And… now? Now? The certificate is static, but contexts, or intentions, or bilateral commitments concerning use can and very often do change. This is even true when intentions are memorialized in Times New Roman and saved as secure PDF’s. Like trademark goodwill itself, contracts are assignable, revised, replaced, amended and — happily for we who feed from such discord — breached. The train of use-intent is every minute leaving the station, and — even worse — who knows what we are seeing once it departs or even if we’re all seeing it at the same time.
So is it too regarding offensiveness, incipient civil unrest, and other qualities ascribed to trademarks, all qualities neither examined nor examinable. These are things revealed only in the hearts of men — and, sometimes, their expert scriveners, if hearts they can be said to have at all.
In trademarks, none of these things, but the word — accompanied, when appropriate, by drawings in JPG format, 5 MB or smaller with a filename less than 256 characters long (including the .jpg extension!) — endures.
Originally published May 30, 2017.
I’ve got trademark use on the brain!
Maybe it’s the Belmora effect — the result of living in a world in which use of a trademark in a country that is not the U.S. gets you a Lanham Act claim under 43(a) in the U.S.
Who can blame me? It’s boggling my mind and making it soft, this trademark-use business. As I mentioned in my brief appearance at INTA last week in Barcelona —
— Erik Pelton® (@tm4smallbiz) May 18, 2017
— er, thanks, Erik — it’s not just that the erosion of use as the sine qua non of trademark rights in the U.S. is (mainly) a judicial, not legislative, phenomenon. Never mind that it’s part of a trend that’s been accelerating since the New Deal. And don’t pay any attention to the Fourth Circuit’s odd place at the center of decisions that cut away at traditional notions of standing. For the purposes of an INTA talk, the point is that these changes are affecting how trademarks are made, kept and enforced in the U.S.
And now I’m starting to think I see this trademark-use erosion everywhere, like a ghostly companion I can’t shake. Once you remove use from the equation of what is a trademark — or permit gauzy definitions and fill-in-the-blank formulations — you also elide the distinction between “defining” a trademark and “using” it. And this can present quite a challenge when assessing the metes of bounds of trademark claims, both for an existing “user” or a prospective one.
Let’s consider, first, “phantom marks” — strictly defined, as we shall see.
The case comes via John Welch, who, even on the eve of his departure to Barcelona — where, as usual, he killed it — published this post about phantom marks, his spirit hovering over the TTABlog even as he and and his better half were hovering safe and dry above the Atlantic. The case is In re Construction Research & Technology GmbH, Serial Nos. 86433989 and 86434029 (May 17, 2017), a happy rejection of what the Board saw as an attempt to register a phantom mark:
The Board affirmed refusals to register the marks NP— and SL — for “sealant compounds for joints,” finding them to be “phantom” marks and thus ineligible for registration. The “variable designation —” in each mark “represents up to three numeric digits.” . . .
Under the Trademark Act, an application may seek registration of only one mark. “A mark that contains a changeable or phantom element resulting in possibly more than one mark is generally refused registration.” In re Primo Water Corp. 87 USPQ2d 1376, 1378 (TTAB 2008). The CAFC explained the reasoning for this rule:
[T]he mark, as registered must accurately reflect the way it is used in commerce so that someone who searches the registry for the mark, or a similar mark, will locate the registered mark. ‘Phantom’ marks . . . encompass too many combinations and permutations to make a thorough and effective search possible. The registration of such marks does not provide proper notice to other trademark users, thus failing to help bring order to the marketplace and defeating one of the vital purposes of federal trademark registration. In re Int’l Flavors & Fragrances Inc., 51 USPQ2d 1513, 1517-18 (Fed. Cir. 1999).
John discusses the matter with his usual sober thoroughness at the post, and as usual I leave it to him and his learned commenters to flesh out how this “precedential” decision did or did not change the understanding of phantom would-be markery. The point for my purposes is, yes, the line holds: No phantom marks, because “the mark, as registered must accurately reflect the way it is used in commerce.” Use is the word!
But let’s not get too excited. Because, after all, how different, really, are phantom marks from “families of marks“? Properly utilizing the TTABlog as a definitive reference guide to trademark law, we can say yes, they are not conceptually unrelated, for a family-of-marks claim will fail if it looks too too much phantom-like, to wit (citations etc. omitted this time and emphasis added):
Mere ownership of a series of similar marks does not suffice to establish a family of marks. To prove the existence of a family of marks, [an applicant is] required to show that the purported family (1) has a recognizable common characteristic, (2) that is distinctive, and (3) that has been promoted in such a way as to create recognition among the purchasing public that the common characteristic is indicative of a common origin of the goods or services….
[A]lthough it is theoretically possible that a common structure could be the common element of a family of marks, [a] structure [that is] “is too abstract to constitute a common characteristic that could give rise to a family of similarly-structured marks” . . . would pave the way for [for an applicant] to “enforce almost any descriptive word in the dictionary [with the same structure]. This would create and unacceptable risk to competition, and would be analogous to a phantom mark.
So, ok. No family of mark marks allowed if they they’re so swiss-cheesy that they’re holely incoherent.
But the TTAB has made it clear that on sufficient proof of the other components, that’s an outlying limitation. Alternatively, then, if you enunciate your family values artfully enough, you can reserve a place at the table for unborn lives not in being. Right: not only can you register trademarks you’ve never used, you can stop others from using them — um, “them” — if they encroach closely enough on the family plot.
That sounds like warehousing, though, which we know is not allowed. So let’s not go there. Besides, warehousing involves some use. Here, the unborn little runt of a mark isn’t even a gleam in the marketing department’s eye.
So aren’t these unused, not-even-aspirational family-of-marks children not…
OK, maybe there’s something here. Did you hear something in the attic?
No, that was just the wind. Tell me a story. Okay, um, does this have anything to do with something else we’ve read about in trademark chatter called a “phantom tag”?
Not quite. I told you I could use the TTABlog as a reference tool for trademark law — not that you could use LIKELIHOOD OF CONFUSION® that way. That’s a serious trademark law blog. This is a fun blog! But you’re presumably thinking of this post, in which I referred to “the TTAB’s phantom tag” in a post that also (like, um, a large percentage) launched from one of John’s clear academic analyses about a situation where the TTAB bestowed on a term never used as a trademark what we might call a long tail as grounds to prevent its registration by a stranger:
Applicant conceded that the phrase THE HOUSE THE RUTH BUILT, as used by the press and public, is famous as referring to Yankee Stadium, but it contended that the phrase is not famous as a trademark. . . .The Board found that opposer’s “use of its stadium, which Applicant admits had been known by the nickname THE HOUSE THAT RUTH BUILT since the 1920s, has resulted in widespread recognition of that mark [sic] in association with Opposer’s baseball services.” Extensive media coverage confirmed the fame of the mark.
Does that sound right to you? This strikes me as a sort of sub rosa trademark-tacking, or perhaps fame-tacking, business. The TTAB’s argument doesn’t actually address the Applicant’s point: Is THE HOUSE THAT RUTH BUILT famous as a trademark, such that Applicant’s proposed registered trademark would dilute its famous secondary meaning? . . .
It appears . . . that if you’re famous (as the Yankees are), and you’ve got famous trademarks (such as the Yankees do), that’s close enough to include your not-so-famous-trademarks as famous, too, when you want the benefits afforded famous marks. And that includes refusal to register by the PTO on grounds of likelihood of dilution.
In baseball they call that a “phantom tag.”
Is this phantom tagging, a snarky way to express something analogous to trademark tacking, so different from phantom trademarks? Well, of course, tacking involves a change in the mark itself over time. That certainly involves use. In contrast, what the TTAB did with the HOUSE THAT RUTH BUILT non-trademark was grant it trademark status via use as a … something else. Nickname. Associational concept. Something.
Sounds phantomy to me. Scared yet?
Is there more of this?
How about zombie marks? Wasn’t there something about zombie marks?
Yes, there was, not quite the same problem, but, yeah, related:
Says Pamela Chestek, of the Property, intangible® blog:
I haven’t written about “zombie” or “heritage” marks in a long time. . . .
Defendant Strategic Marks is in the business of trying to revive “zombie” brands, or brands that have been abandoned but still have name recognition with consumers. It filed trademark applications for the department store names and started a “Retro Department Stores” website, selling T-shirts with the retro branding on them. Macy’s sued in two different lawsuits. . . .
Macy’s successfully defended the validity of the marks on a theory of “secondary source,” explained this way:
It is a matter of common knowledge that T-shirts are “ornamented” with various insignia, including college insignias, or “ornamented” with various sayings such as “Swallow Your Leader”. In that sense what is sought to be registered could be construed to be ornamental. If such ornamentation is without any meaning other than as mere ornamentation it is apparent that the ornamentation could not and would not serve as an indicia of source. Thus, to use our own example, “Swallow Your Leader” probably would not be considered as an indication of source.
The “ornamentation” of a T-shirt can be of a special nature which inherently tells the purchasing public the source of the T-shirt, not the source of manufacture but the secondary source. . . .
If the department store doesn’t exist anymore (putting aside for the moment that there wasn’t an abandonment theory before the court), meaning there is no primary use of the mark, how can the secondary source justification for the validity of the mark on promotional goods still apply?
Pamela then explains how “secondary source” protection works. Registrations for the marks were granted when the respective department stores were still in business, then renewed for additional “secondary” uses with the examining attorney “expressly relying” on the mark already having achieved distinction “for the same or related services.”
So, zombie marks, see, are another scary way non-corporeal trademark “use” — not use of this world (i.e., not use as trademark law has traditionally defined it) — has been invoked dubiously to award a legacy stakeholder a right in gross in a trademark with respect to goods for which it has no legitimate use-based claim.
Let’s face it, the “secondary source rule” is trademark dilution for un-famous, but still big, trademark claimants.
Which, you may notice, tend to be the winners in these different varieties of phantom trademark contests. In trademark law, it seems “too big to fail” is the rule.
In sum, if you’re big enough, non-use is use enough to stake out trademark claims and prevent competition — via use in another country, or through gauzily-conceived “fame,” or family “planning,” or “secondary use” on garbagio goods that (properly) wouldn’t be accepted as “trademark use” by a little guy.
At the end of the day, the PTO, the TTAB and even federal district judges seem not to be all that concerned about how you went about using a trademark when evaluating the parameters of your trademark rights as long as your mark is the one they’ve heard of.
So are “phantom marks” allowed, or not? Is this a “big” problem?
Or am I just seeing things?
Originally posted on April 16, 2017.
Thank God for small favors. Like being far away from the Seventh Circuit these days if you or your client want to rely on the words of a statute to determine what the law is.
Simon Tam and the Slants do. An important argument in Respondent Simon Tam’s merits brief submitted in the U.S. Supreme Court review of In Re Tam, 808 F.3d 1321 (Fed. Cir. 2015) was, as was observed by a select few, premised on statutory, not constitutional interpretation. And that argument obviously relies on the words of the Lanham Act and their likely meaning based on the time and place of its passage:
The history of the disparagement clause confirms that it was not intended to protect racial and ethnic groups. The clause was added in 1939 to one of the bills that eventually became the Lanham Act in 1946. H.R. 4744, 76th Cong., 1st Sess. (1939), § 2(a). It is very unlikely that members of Congress were concerned about trademarks that were disparaging to racial or ethnic groups in a period when much worse forms of discrimination were still common and civil rights legislation was not yet on the horizon. . . .
The purpose of the disparagement clause was not to protect minority groups. Rather, the purpose was to bring American trademark law into conformity with American treaty obligations. . . .
As enacted, section 2(a) of the Lanham Act slightly reworded the Inter-American Convention provision without any loss in meaning. It barred the registration of marks that “disparage” or “bring … into contempt, or disrepute” (rather than “expose … to ridicule or contempt”) the same list of plural nouns as in the Convention—persons, institutions, beliefs, and national symbols. The history of the disparagement clause thus confirms that the clause was not intended to protect minority groups against trademarks that use derogatory words.
This is the kind of argument that used to be considered as something you put in an appellate brief because, well, obviously. You would expect pushback from your adversary based on his understanding of the words and the legislative context in which they were chosen, or of course your analysis. But no one in his right mind would come right out and suggest words and context don’t make a damned bit of difference at all.
Where I practice law, that is still true. And it’s a good thing for Simon Tam that the Supreme Court isn’t the Seventh Circuit after its astonishing en banc decision in Hively v. Ivy Tech Community College of Indiana, 2017 U.S. App. LEXIS 5839, (7th Cir., April 4, 2017). As Josh Blackman put it on Twitter:
Judge Posner invents a new form of statutory interpretation: “judicial interpretive updating.” pic.twitter.com/yhFsOmx9aF
— Josh Blackman (@JoshMBlackman) April 4, 2017
What’s the fuss about? Plenty. From Josh’s blog:
[Statutory] interpretation can mean giving a fresh meaning to a statement (which can be a statement found in a constitutional or statutory text)—a meaning that infuses the statement with vitality and significance today. An example of this last form of interpretation—the form that in my mind is most clearly applicable to the present case—is the Sherman Antitrust Act, enacted in 1890, long before there was a sophisticated understanding of the economics of monopoly and competition.
Times have changed; and for more than thirty years the Act has been interpreted in conformity to the modern, not the nineteenth-century, understanding of the relevant economics. The Act has thus been updated by, or in the name of, judicial interpretation—the form of interpretation that consists of making old law satisfy modern needs and understandings. And a common form of interpretation it is, despite its flouting “original meaning.” Statutes and constitutional provisions frequently are interpreted on the basis of present need and present understanding rather than original meaning—constitutional provisions even more frequently, because most of them are older than most statutes.
Every judge a dictator.
WHEN APPROACHING A CASE, JUDGES SHOULD FIRST ASK: “WHAT WOULD POSNER DO?” #WWPD
— POSNER THOUGHTS (@Posner_Thoughts) April 12, 2017
I recently praised the Seventh Circuit, and Judge Posner, for their common sense reading of the Lanham Act’s dilution provisions. But as Josh notes, correctly, on his blog, “Nonsense is an apt way to describe Posner’s opinion” and the frightening concept of “judicial interpretive updating” he enunciated in Hively.
It’s good to be the king. For the rest of us, however — and certainly for The Slants — it’s good not to be in the Seventh Circuit.
UPDATE: Goodbye, Judge Posner.
Originally posted 2015-04-20 10:31:02. Republished by Blog Post Promoter
Update on the the Tulsa World silliness: Michael Bates reports, citing to the blog Tulsa Topics, that the World has wisely decided that it will deal with criticism of its editorial and political deeds by disabling its own Internet capability, not only to Michael and his critical blog but to the rest of humanity — including its own paid customers! Now no one can get PDF’s off their site.
That’s the best way to protect your copyright: Just publish for your friends and family. This way if any of them crosses the line — WHAM! You ground ’em, or don’t invite them to the cousin’s club meeting, or disinherit them. Good thing is you keep the mess away from those Article III judges and their pesky technicalities.
Another victory for self help. Is anyone at Overlawyered going to compliment the World on this? Don’t count on it!