Posts tagged with "First Amendment Rights"


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Push pin on trademark textSection 2 (a) of the Lanham Act, 1946, 15 U.S.C. Sec. 2 (a), which restricts the registration of trademarks found by the USPTO to be scandalous or disparaging, was determined to be unconstitutional on the basis of the First Amendment by  the Court of Appeals for the Federal Circuit in a case (In re Simon Shiao Tam-2014-1203), brought by “The Slants,” an Asian-American rock band.  [Background]

Mr. Simon Shiao Tam, as the owner of the mark, filed in 2011 a registration application for  “The Slants” (Serial No. 85-472044).  The USPTO examiner rejected the application on the basis that the applied for mark was disparaging under Section 2 (a)  because the word had a long history of being used in a derogatory way for people of Asian decent.  The examining attorney believed that people of Asian decent would take offense from the use of the applied for mark.  The rejection was upheld by the Trademark Trial and Appeal Board (TTAB.) Continue reading

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InBasketball  earlier blogs, I raised the alarm about improperly using a famous personality in the advertising of a business.  If you need a clearer example of how even a large urban supermarket chain can stir up a hornet’s nest when they try to coast on the fame of a celebrity, consider the debacle encountered by Jewel Food Stores (“Jewel”) when it placed a full-page ad in Sports Illustrated congratulating Michael Jordan for his induction into the Naismith Memorial Basketball Hall of Fame.  The “Michael” was not amused and sued them for $5 million for misappropriation of his identity under the Illinois Right of Publicity Act, the Illinois Consumer Fraud and Deceptive Business Practices Act and the Lanham Act (the principal federal trademark law).

The Seventh Circuit Court of Appeals concluded that the ad was commercial speech, not noncommercial speech which would be fully protected by the First Amendment as alleged by Jewel and, therefore, the trial can proceed on the merits, doubtless arriving at a decision in favor of actual and possibly punitive damages for Mr. Jordan, if a settlement is not reached sooner.

To understand why it is not a good idea to try to hitch your business to a “star” by including the name, image or likeness of a celebrity in any of your products (i.e., website, domain name, T shirts) or marketing materials, it is important to recognize that famous people, even deceased ones, can own rights in the commercial exploitation of their own celebrity status.  Moreover, this right is not limited to the United States, but is recognized in other countries, an important consideration if you are doing business over the Internet.  (See list of states and countries protecting the Right of Publicity.)

Basically, celebrities have property rights in their fame and, therefore, they decide how to exploit it commercially.  Jewel argued that it was not trying to benefit commercially from the advertisement, but rather were exercising its First Amendment Right to congratulate Michael Jordan.  The Seventh Circuit was not persuaded given that Jewel’s logo and marketing slogan were conspicuously linked to Mr. Jordan in the text of it’s ad’s congratulatory message. (See the Seventh Circuit’s opinion for full factual details and analysis.)

                While it is true that commercial speech is entitled to protection under the First Amendment, nonetheless, it can be subjected to governmental restriction unlike the more favored full protection accorded to noncommercial expression.  That is why in this instance, because the Seventh Circuit has concluded that Jewel’s ad was commercial speech, the company finds itself in the unhappy position of getting more than it bargained for.

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Blue Tick Circled Shows Checked and Verified

One good method for a trade association, charitable organization or for-profit entity to expand its mission while simultaneously generating additional revenues is to establish a certification program. 

The entity wishing to set up a certification program (the “certifier”) would require an “applicant” wishing to acquire new skills to demonstrate competence in a particular field by meeting the standards set by the certifier.  Once a course or test was successfully completed, the certifier would then allow the applicant to use the certifier’s certification mark, in other words its “seal of approval.” (Think of the quintessential “Good Housekeeping Seal of Approval.”)   

By adopting a certification program, the certifier has taken steps not only to improve the standards of performance within its area of interest but also to create a new source of revenue generated from any training or monitoring it requires to maintain quality controls.

The breadth of activity that lends itself to the adoption of a certification program is huge.   Based on a recent review of the records of the United States Patent and Trademark Office (“USPTO”), there were more than 10,000 live records for applications and registrations of certification marks.  (Examples of certification marks) This suggests that many organizations recognize the value of running such programs.

If your company is considering incorporating a certification program into your general mission, a critical element is the selection of the designation (i.e., the certification mark itself), which a successful applicant may use to show its level of competence. 

So. . . what exactly is a certification mark?  It can be any word, name, symbol, device or combination of same which is used by a person other than the owner of the mark to certify (a) to regional or other origin; (b) to the material, mode of manufacture, quality, accuracy or other characteristics of such person’s good or services; or (c) that the work or labor on goods or services was performed by members of a union or other organization. . . . .” (Applicable USPTO regulations.) 

A distinct message is conveyed by a certification mark which differs from that of an identification mark that informs the consuming public of the source of the goods or services which they are buying (GM versus Ford; Apple versus Samsung).  When the consumer sees a certification mark, the mark signifies that the goods or services have been examined, tested or inspected by someone other than the entity displaying the mark and that the independent standards of the marks’ owner have been met.

In my next blog, I will cover some basics principals to aid in the design and protection of your organization’s certification mark.


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     If you plan to create a work that will include references to famous people, you may well ask will you run into challenges for using such references. A recent 9th Circuit decision offers guidance as to whether your use will withstand the challenge by a famous person who claims you are violating his or her trademark-related rights.

            Brown v. Electronic Arts, Inc., involves James “Jim” Brown (“Brown”), the famous football player, who sued Electronic Arts (“EA”), the manufacturer distributor and seller of the Madden NFL series of football video games.  The video games allow users to control avatars representing professional players, and to participate in simulated games.  Some versions of the games included likenesses of Brown.

            Brown’s claims under the Lanham Act, the main federal trademark law, are of particular interest here.  Generally with trademarks, the basic test a mark’s owner is asked to show is whether use of the competing mark is likely to cause confusion in the public’s mind, and Brown’s basic argument was that EA’s use of his likeness without his permission was likely to cause confusion in the mind of the public as to whether he endorsed the video games. 

            However, there is always the understanding that granting exclusive use of marks limits constitutionally protected free speech.  In evaluating the competing interests of protecting the public from deception and protecting freedom of expression, when the identifying material in question appears in an expressive work, Courts tend to shift the balance toward First Amendment considerations.

            Because EA’s videos are considered expressive works, the Court considered whether EA’s use of Brown’s likeness in the videos was relevant.  Given EA’s professed interest in creating a high level of realism for the various football teams portrayed, inclusion of Brown’s likeness in the recreation of the ’65 Cleveland Browns team was relevant.

            While the takeaway from the Brown v. EA decision is that if inclusion of a famous person’s likeness in an expressive work is relevant, you are likely to withstand a challenge to such use under federal law.  However, it is important to keep in mind, despite the dismissal of Brown’s case in federal court, Brown was not foreclosed from pursuing claims under California law for invasion of privacy and unfair businesses practices.  

Do Anti-SLAPP Laws Offer Any Useful Protection to Creators of IP Content?
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If you are in the business of communicating ideas which, needless to say, you hope are of general interest to the public, you could find yourself on the wrong end of a lawsuit.  This is because in the course of “doing your job” you also may be stepping on the toes of others, whether they be famous or infamous.  Keep in mind, depending on who is the subject of your article or whose likeness appears on your product, they could object under the legal theories of defamation, invasion of the right of privacy or the right of publicity, intentional infliction of emotional distress, or tortuous interference with contract.

Because of the perceived threat that a costly lawsuit could have on those asserting their First  Amendment rights to express their ideas or participate in public debate, twenty-eight states have passed laws that offer varying levels of protection in what has come to be called “Anti-SLAPP Statues.”  SLAPP, shorthand for the objectionable lawsuits, stands for “strategic litigation against public participation.”  (See for a list of state laws.)

Generally, where such laws exist, a defendant faced with what she believes is a SLAPP suit, namely trying to discourage her from speaking her mind, could file with the court a motion to strike the lawsuit.  If she then shows that the lawsuit arose due to speech or actions that were protected under the Anti-SLAPP act, mainly First Amendment expressions of idea, then the plaintiff is suddenly placed in a defensive posture.  To overcome the Anti-SLAPP motion, the plaintiff must show the probability that he will prevail on the merits.  However, because under some of these laws, discovery is frozen, the plaintiff is not necessarily in a good position to make such a showing.

While the principal reason for the enactment of Anti-SLAPP laws was in reaction to lawsuits brought to discourage public discourse about legislative, executive or judicial proceedings, their breadth, especially in the case of California’s statute, could offer some protections to those who operate in the commercial arena.  In order to put some meat on the bones, consider the following real life cases:

Hallmark Cards adopted a birthday card showing a caricature of Britney Spears as a waitress based on her appearance in a reality show and quoting her USPTO trademarked phrase, “That’s hot.”  While Hallmark was able to meet the qualifications that its activity was “speech” and was addressing a “public issue,” its motion to strike was denied.  This was because Ms. Spears was able to show the likelihood of success to her claim that Hallmark violated her right of publicity and Hallmark could not overcome this with any affirmative defense.  So, in this case the “right of publicity” trumped caricature.

Another situation involved ABC’s 20/20 Show which broadcast a story questioning the transparency of certain Christian ministries.  In the piece, ABC used a film clip of televangelist Dr. Frederick Price, who preaches “prosperity gospel.”  In the clip Dr. Price made the following statements, “I live in a 25-room mansion. I have my own $6 million yacht.”  While these were Dr. Price’s actual words, it turns out that he said them in the context of telling a parable.  He later sued ABC for defamation.  ABC’s Anti-SLAPP motion to strike was unsuccessful because, while it was true that Dr. Price was rich and had made similar statements about himself, the quotation that ABC used was taken out of context.  In this case, ABC would have been better served if it had found a quote from Dr. Price speaking about himself.

These cases illustrate that while it is important that the First Amendment Right encouraging public discourse be protected, there is another important competing interest, namely to allow people to bring their good faith grievances to court.  If you are aware of this balance of interests, you will be in a better position to speak out, even if your speech has a for-profit element to it as in the Hallmark case.