It's funny: now that I'm out of law school, I enjoy reading Supreme Court cases.
Anyway, the day of reckoning is finally upon us. Matal v. Tam (formerly Lee v. Tam) has just been decided by the Supreme Court of the United States: the disparagement clause of the Lanham Act, 15 U.S.C. § 1052(a), is unconstitutional under the Free Speech Clause of the First Amendment. I’m not too surprised by this outcome and, personally, I think the Court came to the right decision.
First, by way of background for those who aren’t familiar with this case, The Slants are an all Asian-American dance rock band based in Portland, Oregon. Their name is partially derived from the anti-Asian slur referring to the shape of their eyes. Simon Tam, the founder and bassist for the band, applied to register the “The Slants” at the U.S. Patent and Trademark Office. The examining attorney refused to register the mark on the basis that it disparaged Asian people in violation of section 2(a). Tam appealed to the Trademark Trial and Appeal Board, which affirmed the decision of the examining attorney. Tam further appealed to the U.S. Court of Appeals for the Federal Circuit, which heard the case en banc, meaning that the entire court heard the case, rather than the three-judge panel typical of hearings before U.S. Courts of Appeals. The Federal Circuit ruled in Tam’s favor, finding that the disparagement clause is unconstitutional under the Free Speech Clause of the First Amendment. Finally, then-Director of the USPTO, Michelle Lee, petitioned the Supreme Court, and the Court granted cert.
In short, the Supreme Court agreed that the disparagement clause is unconstitutional because it isn’t “viewpoint-neutral.” The Courts are very reluctant to uphold a law that restricts speech based on its content. This includes laws that favor or discourage a particular viewpoint. In Tam’s case, the Court concluded that “The Slants” and similar offensive or hateful language is a viewpoint, and by refusing to register it, the government took a side. The Court rejected the government’s arguments that (1) trademarks are government speech (they aren’t); (2) trademarks are a form of government subsidy (they aren’t); and (3) that the Court should adopt a new test to determine the constitutionality of the disparagement clause (it shouldn’t).
So The Slants will likely get their trademark registration, provided there are no further substantive problems with the mark.
As I said, I think the Court made the right decision. Like it or not, we have a longstanding legal tradition of protecting even offensive speech:
[T]he proudest boast of our free speech jurisprudence is that we protect the freedom to express “the thought that we hate.” Lee v. Tam, 582 U.S. _ (2017) (quoting United States v. Schwimmer, 279 U. S. 644, 655 (1929) (Holmes, J., dissenting)).
It isn’t the government’s place to police unpopular, offensive, or hateful ideas – it’s the people’s. Those of us who abhor hateful speech have to counter it with our own speech, and hope that when it all shakes out, the majority of people are well-meaning, rational, and on our side. I get it, though. It's 2017. Simon Tam might be a special case – not everyone who adopts an ethnic slur is a marginalized minority doing so with the intention of co-opting it. Did the Supreme Court just open the floodgates and permit the U.S. Trademark Register to become a wretched hive of scum and villany?
I don’t think so.
Here’s the thing: first, Brandenburg v. Ohio has been on the books for almost 50 years now. National Socialist Party of America v. Village of Skokie, 40 years (40 years last Wednesday – spooky). People know that protected free speech includes hate speech. Have you read YouTube comments before? People know.
Second, I’m going to assume that the small number of opportunists who, inspired by this decision, decide to apply to register a hateful mark solely for the purpose of being hateful probably don’t understand federal trademark registration procedure. It’s a legitimate legal proceeding not unlike filing a lawsuit. U.S. trademark registrations and applications are public record, including the applicant’s name and address. Even if someone pays the $225-600 filing fee, fully expecting to abandon the application, the record is permanent. For the even smaller number of folks who intend for their marks to register, they have to show use in commerce, meaning that at some point they have to transact business using that mark and submit proof, which also becomes public record. If someone really wants their name or business to be permanently associated with a hateful mark, fair enough. For most, though, I imagine it isn’t preferable.
It’ll be interesting to see where trademark law goes from here (if anywhere). I believe the Redskins appeal was stayed pending the outcome of this lawsuit, so that case might be decided soon now that there's guidance from the Court.
As always, if you have any questions about trademarks, contact me!
You can read the full Supreme Court Opinion here!
For more legal scholarship regarding the Tam case, SCOTUSBlog has some solid coverage, as well as all of the amicus briefs if you're a real Constitutional law junkie.
On Thursday I had the privilege of giving a presentation on intellectual property law along with my friend, Michael Gu, to some of the small business owners at Boston SCORE. We covered patents, trademarks, copyrights, and trade secrets. Here’s a quick recap of some of the main takeaways.
Use it or Lose it
Trademark rights arise from use, whether your mark is registered or not. If you’re using your trademark on a "common law" basis (using it without registering it), your rights cease when your use ends. Even if you have a registered trademark, your registration will be cancelled if you fail to show proof of continued during your renewal period.
U.S. Registration is a Legal Proceeding – Get Assistance
Applying for a federal trademark registration is a process involving substantive legal analysis and adherence to strict deadlines. It isn’t as straightforward as applying for a business certificate or filing to create a new entity. For example, responding to an examining attorney’s refusal to register a trademark requires legal argumentation similar to that of a motion in litigation. To that end, it’s strongly recommended that you hire an attorney. Even the USPTO recommends retaining a lawyer. *cough*
Use your Mark Properly
You threaten your trademark rights when you don’t use your mark properly. Some tips for proper use include
- Using the trademark consistently
- Using the trademark as an adjective, not a noun or a verb
- Using trademark notices (TM/SM if it isn’t registered, ® if it is)
Check out my AIGA presentation recap for an overview of basic copyright law.
Patentable Subject Matter
“Anything under the sun that is made by man” may be patentable. However, patents don’t protect abstract ideas, laws of nature, and natural phenomena. Moreover, the invention must be useful, novel, and non-obvious.
Patents grant the exclusive right to exclude others from making and using your patented invention. The right must be affirmatively asserted, it isn’t automatic. The right is also limited in geographic scope: a U.S. patent cannot be enforced outside of the U.S.
Visit www.uspto.gov/patent or contact a licensed patent agent or patent attorney for more information.
What is a Trade Secret?
A trade secret is information that (1) derives independent economic value from its not being generally know and not being readily ascertainable by other persons; and (2) is subject of reasonable efforts to maintain its secrecy.
The Law Varies from State to State
While many states have adopted the Uniform Trade Secrets Act in some form, a number of states, including Massachusetts, have not. Some protect trade secrets by separate statute, and others protect them under common law.
This was another fun presentation with a very active audience. My Kevin James joke bombed – I guess even I can’t make Paul Blart funny, but you can’t win ‘em all. Thanks again to Boston SCORE for letting us give the presentation, and thanks to Harvard Ed Portal for letting us use their cool location.
As always, if you have any questions about copyright or trademark, don’t hesitate to contact me!
Let’s talk about hashtags. Can I register one as a trademark? Do they even work as a trademark? What should I do? #help
Believe it or not, the USPTO actually has guidance on hashtag marks – section 1202.18 of the Trademark Manual of Examining Procedure (or “TMEP”), if you’re curious. #blessed
Trademarks are identifiers of the source of goods or services. They’re adjectives: Nike sneakers, Skullcandy headphones, Jif peanut butter, etc. That is why “descriptive” or “generic” marks are considered “weak” as trademarks: they identify the product, not the source. To that end, marks containing the word “hashtag” or the “#” symbol are only registrable as a trademark if they can serve to identify the source of goods or services. #foundationsoftrademarklaw
What this means is that, generally, the words following “hashtag” or “#” have to be registrable as a trademark. Here are a couple of examples of registered hashtag marks from the USPTO: #VISIONISCOOL (optometry and ophthalmology services); #WERUNTOGETHER (charitable fundraising and athletic event promotion); #WHITEANDWOKE (clothes); #INSTAREADY (cosmetics); #GOBOWLSDEEP (juice bar).
“Hashtag” or “#” by itself typically does not function as a trademark unless it is distinctly stylized or designed, or if the goods and services are not related to social networking. For example:
Because the practical function of a hashtag is to make data searchable on a social network, applying to register a hashtag mark used in connection with any social networking or related services will likely result in a refusal by the USPTO on the basis of “mere descriptiveness” (also known as a “§ 2(e)(1) refusal”). Moreover, adding “hashtag” or “#” to an otherwise unregistrable mark will not make it registrable. #realitycheck
Sometimes the USPTO will also ask applicants to disclaim the “hashtag” or “#” portion of the mark, meaning that applicants cannot claim the exclusive right to use that part of the mark. #noclaimismadetotheexclusiverighttousehashtagapartfromthemarkasshown
In short, hashtag marks can function as trademarks and can potentially be registered at the USPTO. Personally, given that technology changes so frequently and that social networks come and go along with it, I wonder if registering hashtag marks is worth the expense. I would venture a guess that in 5-10 years, Twitter and Instagram will be replaced by yet another service, possibly one not using hashtags, and when those hashtag marks are up for renewal at the USPTO, the $300+ per class maintenance fees won’t be #worthit.
Continuing with the theme of copyright law, let’s dive right into everybody’s favorite topic: infringement. First of all,
What exactly is copyright infringement?
You’ll remember from my last post that copyright grants the owner six exclusive rights:
- creation of derivative works
- public performance
- public display
- public performance of sound recordings via digital audio transmission
Violating any of these rights – in other words, exploiting any of these rights without permission or a license from the owner – constitutes copyright infringement. Attribution and intent don’t matter. You’ve seen it before: somebody uploads a copyright-protected song to YouTube and in the caption they write something to the effect of “Music © Owner. No copyright infringement intended.” Well, that’s all fine and good of you to acknowledge the owner, but unfortunately you committed copyright infringement whether you intended to do so or not.
Absent an agreement or license requiring it, that kind of CYA attribution has about as much legal force as those phony Facebook privacy notices that make the rounds every year.
So what can you do if your work is infringed?
The Copyright Act gives a copyright owner the right to sue for infringement in federal court. However, you may recall that one of the prerequisites for initiating suit is copyright registration. To enjoy the maximum benefits of copyright registration, your work will need to be registered before or within three months of publication (distribution of copies to the public) or before the infringement occurs.
Registering within these time periods provides two important benefits: first, it allows you to seek to recover attorney’s fees from the infringer. This is a big deal. Litigation isn’t cheap – between legal research, preparing court documents, and taking and defending depositions, it can easily cost five figures for even an inexpensive attorney to take a lawsuit to trial. Being able to recoup those costs is invaluable. Second, registration gives you the option to sue for statutory damages rather than actual damages and profits. The latter can be challenging to prove – they consist of your actual damage and the infringer’s profits resulting from the infringement. Moreover, statutory damages can be higher than actual damages and profits: the allowable range under the copyright act is between $750 and $30,000 per work, at the court’s discretion. If you’re able to prove that the infringement was committed willfully, that maximum increases to $150,000, again, subject to the court’s discretion.
If your work isn’t registered at the time of the infringement, then you’ll need to register before filing a complaint. You can still sue if you registered your work after the infringement occurred, but you won’t be able to seek attorney’s fees and you’ll be limited to recovering only actual damages and profits.
Also, bear in mind that the statute of limitations for copyright infringement is three years.
How do you prove copyright infringement?
In order to prove copyright infringement, you must show:
- ownership of a valid copyright; and
Seems easy, right? Well, not quite. Typically, you won’t have eyewitness evidence of actual copying, so copying is often proven by circumstantial evidence showing access and substantial similarity. Access is fairly straightforward: the infringer needs to have had a reasonable opportunity to copy the work. Substantial similarity is harder, and unfortunately, there isn’t a bright line test. Courts have tried to craft an objective analysis, but there doesn't seem to be a solid consensus -- it’s still a somewhat subjective question. Ultimately, though, the answer hinges on whether the original and the infringement have the same "overall look and feel."
Moreover, it's also entirely possible for two separate authors to independently and inadvertently create identical works without having committed an infringement.
Litigation isn't the only option
Just because the Copyright Act gives you the right to pursue infringement litigation doesn’t necessarily mean it’s the course of action you wish to take. Fortunately, litigation is but one option. There’s doing nothing, there’s going to court, and there’s everything in between. Maybe the infringement isn’t worth your time or resources, and doing nothing is actually a legitimate strategy. Maybe the infringer is a well-meaning admirer and simply wishes to share your work. That situation might call for a kind yet sternly-worded letter or email. In the digital space, you may want to file a Digital Millennium Copyright Act report, which we’ll cover in a later post. Ultimately, how you handle infringement is a business decision on your part.
Next time we discuss copyright, we’ll talk about fair use!
As always, if you have any questions about copyright law, feel free to leave a comment or contact me!
P.S. Fine. His name is Dennis the Hedgehog, he's counsel for Team Chaotix, and "it's complicated" between him and Rouge the Bat IF YOU MUST KNOW.
Last Friday, I was lucky enough to have the Boston chapter of AIGA let me give a presentation on copyright law. During the event, we covered copyright basics, a smidgen of trademark law, and a dash of Massachusetts right of publicity law, which I’ve covered here before. I thought it might be fitting to give a quick recap of the highlights of the presentation.
Your Work is Protected the Moment You Create It
That’s right, the subject matter of copyright is an “original work of authorship fixed in any tangible medium of expression.” As soon as you commit your original work to a “tangible medium” – a writing, drawing, photograph, digital painting, etc. – you have a copyright.
Additionally, the bar for originality is low. You don’t need to come up with a brand new, never-before-seen artistic expression. Rather, your work need only be independently created (meaning not copied) and possess at least some “minimal degree of originality.” There's a lawyer joke in there somewhere...
What doesn’t copyright protect?
- methods of operation
- names and titles
- slogans and short phrases
- useful articles
The Crown Jewels: The Six Exclusive Rights
That’s why we’re all here, right? Copyright owners possess six exclusive rights: the right to
- reproduce the work;
- prepare derivative works;
- distribute reproductions of the work;
- publicly perform the work;
- publicly display the work; and
- publicly perform sound recordings via digital audio transmission.
The copyright owner has the exclusive right to exercise, exploit, and license these rights as he or she desires.
Copyright Ownership (Usually) Vests in the Author(s)
Copyright ownership typically belongs to the author(s) of the work. If the work is created as a work-for-hire, however, the employer or person for whom the work is created is deemed the author and is therefore the copyright owner.
The simplest work-for-hire case is when a work is created by an employee within the scope of his or her employment. However, sometimes it isn’t clear whether a work was created by an employee or an independent contractor. Fortunately, the Supreme Court of the United States has given us some guidance. Ultimately, the question depends on how much control the employer or client exerts over the means by which the work is created. There are a dozen or so factors we can weigh in order to determine the extent of this control:
- the skill required to create the work;
- the source of the instruments or tools;
- the location of the work;
- the duration of the relationship between the parties;
- whether the hiring party has the right to assign additional projects to the hired party;
- the extent of the hired party’s discretion over when and how long to work;
- the method of payment;
- the hired party’s role in hiring and paying assistants;
- whether the work is part of the regular business of the hiring party;
- whether the hiring party is in business;
- the provision of employee benefits; and
- the tax treatment of the hired party.
No one of these factors is determinative.
With respect to transferring copyright ownership, you cannot inadvertently transfer your copyright. Sale or transfer or copyright ownership must be memorialized by a written instrument signed by the copyright owner.
Copyright Protection Lasts a REALLY Long Time
For works created on or after January 1, 1978 (the effective date of the Copyright Act of 1976, the current iteration of the copyright statute), the copyright term is the life of the author + 70 years. For works jointly created by two or more authors, the term is the life of the last surviving author + 70 years. For anonymous works, pseudonymous works, and works-for-hire, the term is the first of either 95 years from publication or 120 years from creation.
Once the copyright term expires, the work enters the public domain, where it may be used by anyone for any purpose. Be careful, though: even if a work enters the public domain, it may still be protected by other intellectual property rights. For example, Mickey Mouse’s debut animated short “Steamboat Willie” is currently expected to enter the public domain in 2024. Even if the copyright protection for it ends as scheduled, Disney still has 20 registered trademarks for various versions of the name “Mickey Mouse:”
Copyright Registration: Required if You Want to Sue for Infringement
While we also discussed infringement (and fair use) during the program, it is such a significant part of copyright law that I think it would be more appropriate for me to cover it in a separate post at a later date. Nevertheless, copyright infringement enforcement is a big motivator for registration. Ideally, you will have registered your copyright prior to any incidents of infringement. Better yet, the work will be registered prior to publication of the work. However, this isn’t always how things go. In the event that your unregistered work is infringed:
- you may only pursue litigation after you apply for registration;
- you may not collect attorney’s fees; and
- you may not elect to sue for statutory damages.
The choice to register a copyright is ultimately a business decision on your part. If you expect a work to be commercially successful, widely disseminated, or a target for infringement, it might be in your best interest to register it. Registration is straightforward and fairly cheap: the current filing fee for online applications is only $35 - $55.
Overall, it was a fun program to deliver and the participants had a lot of fantastic questions. In fact, I plan to dig more deeply into some of their questions and post about them here, so expect some content about fair use, creative commons licensing, and a follow up to right of publicity in the future!
As always, comments are welcome, and if you have any questions about copyright law, please contact me!
In the spirit of Thanksgiving tomorrow, I thought it would be amusing to search the U.S. Patent and Trademark Office's database for holiday-themed trademark applications and registrations. I was not disappointed. So without further ado, here are five of my favorite finds:
Registration No. 4905568. Goods and services: "Pajama bottoms; pajamas." From the product site, it looks like they're more or less what you'd expect: pants with a stretch waistband allowing you to comfortably gorge yourself at dinner. What could be more American? Well...
Registration No. 4657888. Goods and services: "Prepared entrees consisting primarily of mashed potatoes with turkey meat and stuffing that is breaded and fried." Ball jokes and your Thanksgiving staples rolled together into one conveniently-shaped, fried appetizer. That's good old fashioned American efficiency at its best.
Registration No. 3263417. Goods and services: "Calendars; Greeting cards; Paper party decorations; Postcards." Tragically, this mark was cancelled in 2014 for failure to "file an acceptable declaration [of use] under Section 8." Maybe Hallowthanksmas didn't catch on, unlike...
Registration Nos. 4371793, for "Greeting cards; Paper party decorations; Wrapping paper," and 4379381 for "Clothing, namely, t-shirts, one piece garments for babies, and baby bibs not of paper." Created and owned by a Bostonian, no less. Who knew? And last but not least...
Serial No. 78200511. This is probably my favorite one solely because of the claimed goods and services: simply "cake." What kind of cake? Was it a meat pie kind of thing? Maybe it was a union between the holiest of desserts: pumpkin pie and pecan pie. We'll never know because the mark was abandoned on November 26, 2004 -- literally the day after Thanksgiving.
On that note, I hope you have a happy and safe holiday. Remember, when that uncle (you know the one) starts talking politics, you can always "help with the turkey" (hide in the bathroom on Twitter until dinner is ready), "check on that pie [you] left in the oven" (play with the family pet in the guest room), or "help with the dishes" (run--just keep running and never look back).
I’ll be honest: when I first saw there was a case involving a trademark for “LORD OF THE WINGS,” I thought it’d be worthy of a silly tweet at best. Then I saw that the Trademark Trial and Appeal Board (the TTAB) issued a 37-page opinion cancelling the mark. There was no way I wasn't going to give it a look, and it actually had some interesting discussion. So let’s dive into a case about swords, sorcery, and spicy chicken wings.
In late September, the TTAB decided The Saul Zaentz Company v. Al Moudabber Food Concepts SAL, Cancellation No. 92056828 (Sept. 30, 2016) (non-precedential). The respondent, Al Moudabber Food Concepts SAL, secured registration for the below composite mark (a mark featuring both text and design elements) for “LORD OF THE WINGS” in 2009 for the “Providing of food and drink; Restaurant services; Snack bars.”
The petitioner, the Saul Zaentz Company, owns the film, stage, and merchandising rights to – you guessed it – The Hobbit and the Lord of the Rings trilogy. As you might expect, the petitioner wasn’t particularly amused with the respondent's mark, and consequently petitioned the U.S. Patent and Trademark Office to cancel the registration. The petitioner raised four bases for cancellation: (1) likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d); (2) dilution by blurring under Section 43(c) of the Trademark Act, 15 U.S.C. § 1125(c); (3) false suggestion of a connection under Section 2(a) of the Trademark Act, 15 U.S.C. § 1052(a); and (4) abandonment. The TTAB ultimately concluded that the LORD OF THE WINGS mark would indeed cause confusion under section 2(d), and saw it unnecessary to address the three remaining arguments.
Trademark Act Section 2(d) Likelihood of Confusion
More than anything else, trademarks are consumer protection tools. They indicate the source of goods or services, allowing us to make (somewhat) informed purchasing decisions. To that end, when registering a trademark, the last thing an applicant wants is for its mark to be deemed “confusing.” A confusing mark is a mark that may cause a consumer to misattribute the source of the goods or services. In the case here, the petitioner was concerned that patrons of the Lord of the Wings restaurants might inaccurately assume that the restaurants are associated with official Lord of the Rings brands.
In determining whether a mark is likely to cause confusion under section 2(d) of the Trademark Act, courts and the USPTO consider a set of factors called “the du Pont factors,” named for case, In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1362 (C.C.P.A. 1973). There are thirteen du Pont factors in total, but in this particular case, the TTAB only saw need to analyze six: (1) the fame of the LORD OF THE RINGS marks; (2) the similarity or dissimilarity of the opposing marks; (3) the number and nature of similar marks in use on similar goods; (3) the variety of goods and services on which a mark is or is not used; (4) the relatedness of the goods and services; (5) the similarity of trade channels and classes of purchasers; and (6) the nature and extent of any actual confusion.
The Fame of the LORD OF THE RINGS Marks
Relying on the sales and advertising figures, as well as critical acclaim received by the Lord of the Rings books, films, and video games, the TTAB determined that the LORD OF THE RINGS mark is famous. This isn’t simply an accolade -– here, “fame” extends the scope of trademark protection to “a vast array of collateral or merchandising goods and services that are purchased because they bear the LORD OF THE RINGS trademark . . .” That seemingly unrelated merchandise? You know, the board games, costumes, action figures, coffee mugs, etc.? Fame allows the petitioner here to extend trademark protection to those "collateral" goods bearing the mark.
The Similarity of Dissimilarity of the Marks
The TTAB also found the standard character (non stylized) LORD OF THE RINGS mark to be substantially similar to the LORD OF THE WINGS mark. They look and sound virtually the same, and consumers may overlook the one letter difference. Moreover, the stylized element in THE LORD OF THE WINGS mark, the two wings, fails to distinguish it. The TTAB held that the words are more likely to make an impression upon purchasers, be remembered by them, and be used by them. Additionally, because the LORD OF THE RINGS mark is a standard character mark, it can be displayed in any font or style, including the style of the respondent's mark.
The Number and Nature of Similar Marks in use on Similar Goods
The respondent tried to argue that cancellation of its mark would foreclose registration of similar marks, such as “Lord of the Swings” or “Lord of the Stings.” The TTAB found the argument lacking, as it was based on purely hypothetical marks.
The respondent's argument that other third-party marks bear the phrase “Lord of the . . .” was similarly rejected. The marks – “Lord of the Flies,” “Lord of the Dance,” “Lord of the World,” and “Lord of the Fries” – are not as similar to the LORD OF THE RINGS mark, and four marks don't exactly suggest widespread and significant use of the “Lord of the . . .” construction.
The Variety of Goods and Services on which a mark is or is not used
The TTAB found that this factor weighed heavily in favor of the petitioner, because THE LORD OF THE RINGS marks had been licensed on a wide variety of products and services.
The Relatedness of the Goods and Services
This is the factor in which the respondent must have believed its mark would shine. The LORD OF THE WINGS mark was only registered for use in connection with food and food service, and the LORD OF THE RINGS marks had, allegedly, never been registered for such use. The petitioner, however, argued that it owns several Lord of the Rings-related marks used in connection with food and restaurant services and has licensed many more.
The TTAB found that the goods and services are in fact sufficiently related. The petitioner had already licensed a number of other marks from the Lord of the Rings universe for food and restaurant services. More importantly, at the end of the day, customers dining at Lord of the Wings locations would probably assume that the restaurant was officially licensed.
The Similarity of Trade Channels and Classes of Purchasers
Here, the TTAB found that both the petitioner’s and the respondent’s goods and services move in some of the same channels and are marketed to the same consumers, particularly because they use the same advertising channels: the internet, including sites like Facebook,, Twitter, YouTube, and Instagram.
The Nature and Extent of any Actual Confusion
The respondent also asserted that it has used its LORD OF THE WINGS mark internationally since 2006 without encountering any confusion. This could have weighed in its favor, but the TTAB found that there wasn’t ever any significant opportunity for actual confusion. The respondent's mark was originally issued in Lebanon, and it had been used in a number of middle-eastern countries. The mark "arguably" had not yet been used in the U.S. To that end, the TTAB found that the lack of any reported actual confusion favors neither side.
Bonus: Bad Faith Adoption of the Mark
The petitioner also attempted to argue that the respondent acted in bad faith, intentionally hoping to create an association with the famous LORD OF THE RINGS marks. The TTAB, perhaps surprisingly, rejected this argument. In deposition, Marc Moudabber testified that he chose the name “Lord of the Wings” from a shortlist of names. His criteria were only that “wings” had to be in the name and the name had to indicate quality such that the restaurant would be distinct from fast food establishments. “King of the Wings” and “Prince of the Wings” were too similar to Burger King, which already had a strong middle-eastern presence, and “House of the Wings” failed to convey excellent quality. Mr. Moudabber further testified that, though he was aware of the Lord of the Rings films, he hadn’t considered them when he chose with the name.
It probably isn’t much of a surprise that the TTAB granted the cancellation petition. Between the fame and the expansive licensing network, the LORD OF THE RINGS marks have very broad coverage. The decision, though non-precedential, contains some pretty helpful takeaways:
- Use caution when leaning close to famous marks, even distinct goods and services might not help you.
- Don’t rely solely on stylization to distinguish your mark. Here, the TTAB essentially ignored the design elements.
If you have any questions, feel free to leave a comment below or contact me!
In case you needed any more reminders that it's an election year, the internets are rife with political cartoons, caricatures, comics, and, of course, memes depicting our much beloved candidates. Have you ever wondered if such depictions are legal? No? Oh... Well, in any case, before you set off to illustrate the next great comic, consider the "right of publicity."
Many states, including Massachusetts, recognize a right of publicity. Generally, the right protects individuals against the unauthorized use of their likeness for another's commercial gain. Some states, like New York, include the right of publicity under a broader right to privacy. Here in Massachusetts, the two interests are kept separate.
Massachusetts provides a statutory right of publicity under Chapter 214, section 3A of the General Laws. Section 3A protects a person from the use of his or her "name, portrait, or picture within the commonwealth for advertising purposes or of the purpose of trade without his written consent." The statute allows a person to enforce their right of publicity by filing a civil lawsuit for injunctive relief (preventing and restraining the use) and for monetary damages. If the defendant knowingly used the plaintiff's name, portrait, or picture without authorization, the court may award the plaintiff treble (triple) damages. It's worth noting that the statute makes no distinctions or exceptions for celebrities or public figures; "any person" may assert the right.
Does this mean that you have to secure written consent any time you want to use a person's likeness in your creative work? Not necessarily (though it probably couldn't hurt). First, consider the nature of your use of the person’s name, portrait, or photo:
[T]he interest which is protected by G.L.c. 214 s. 3A is the interest in not having the commercial value of one's name, portrait or picture appropriated to the benefit of another. The value of one's name, portrait or picture is not appropriated "when it is published for purposes other than taking advantage of his reputation, prestige, or other value associated with him, for purposes of publicity." Tropeano v. Atlantic Monthly Co., 379 Mass. 745, 749 (1980) (quoting Restatement (Second) of Torts s 652C, Comment d (1977)).
The key is that section 3A protects against the appropriation of "the commercial value" of a person's name, portrait, or picture. It isn’t a broad privacy statute – in fact, the Massachusetts Supreme Judicial Court declined to enforce section 3A broadly:
"New York courts have . . . construed [the New York right of publicity statute] to operate much more broadly . . . . Specifically, it has been held in some circumstances to authorize a remedy against the press and other communications media which publish the names, pictures, or portraits of people without their consent." We decline to apply such a broad interpretation to G.L.c. 214, s. 3A. Id. at 747.
What this means is that if the purpose of your use of the person's name or likeness isn't to advertise or peddle merchandise, then you're probably safe. In Tropeano v. Atlantic Monthly Co., the seminal case on the matter, the Supreme Judicial Court held that The Atlantic Monthly magazine's unauthorized publication of the plaintiff's photo in an article didn’t violate the statute: "The article or story involved, whether it be viewed as an effort to inform or entertain the readership, is a legitimate, noncommercial use." Id. at 751.
That all sounds fine and good, but suppose you’re a freelance illustrator and drawing satirical comics and cartoons is your business. Surely that must be considered a commercial use. Again, not necessarily: the Court further held that "The fact that the defendant is engaged in the business of publishing The Atlantic Monthly magazine for profit does not by itself transform the incidental publication of the plaintiff’s picture into an appropriation for advertising or trade purposes." Id. If I were to venture a guess, the main purpose of your comics is to entertain, not to sell a product.
Additionally, Massachusetts recognizes a "newsworthiness" defense to claims for violation of the right of publicity. The defense applies when the publication "touches upon a matter of 'legitimate public concern.'" Peckham v. New England Newspapers, Inc., 865 F. Supp. 2d 127, 130 (D. Mass. 2012). The defense is still a legal work-in-progress with loosely defined limits – "the 'line is to be drawn when the publicity ceases to be the giving of information to which the public is entitled and becomes a morbid and sensational prying into private lives for its own sake'" Id. at 131 – but it may be available if you find yourself in trouble.
Here are some of the things to consider before publishing a work featuring someone's name, portrait, or picture:
- Is it possible to acquire written consent?
- What is the ultimate purpose of the use of the person's name or likeness?
- Does the use have any newsworthiness?
If you have any questions about the right of publicity, please feel free to contact me!