LegalMatch: Intellectual Property

Tiffany Diamonds and Trademark Genericide: Protecting Your Trademarks From your Own Success

If you run a business, hearing that your brand name is so ubiquitous in your industry that people use it interchangeably for the product you sell would likely leave you looking for a bottle of champagne to uncork. You certainly wouldn’t think that your tremendous success would leave the intellectual property protection on your brand in jeopardy. However, this is just the predicament Tiffany—the famous purveyor of diamonds and jewelry—has found themselves in through an ongoing lawsuit they have brought against Costco.

Tiffany long-running legal dispute with Costco is over Costco selling rings labeled "Tiffany" at their warehouses.  As you might imagine, as a particularly high end brand, Tiffany is not pleased with being associated with a bulk retail line and brought a trademark infringement lawsuit. Costco's argument in response to Tiffany’s allegations was that the term and trademark Tiffany has become interchangeable in the minds of the public with a specific style of ring.  This would render the trademark generic when used on a particular style of ring--a concept known colloquially in trademark law as genericide--because becoming generic kills all the protection on the mark.

Just a few months ago, the court came out in favor of Tiffany on this argument—saving Tiffany’s trademark generic for now. Tiffany was awarded a whopping $8.25M in punitive damages, in addition to the $5.5M in normal damages. 

Although Costco has lost for now, they have made it clear they will appeal the judgment.  Once they do, Tiffany’s trademark will again be in jeopardy. So how exactly can a mark be so well known that it loses protection and what steps can you take to protect against your mark becoming generic?

What is Genericide

Trademark law itself provides protection to registered words or symbols used to represent a brand of good or service—guarding against others using the mark in a way that could confuse consumers as to source or sponsorship. It does this through trademarks, service marks, and a few other types of mark protection. Genericide, however, is an issue of the strength and registrability of a trademark.

The strength of a trademark is judged by its distinctiveness, the more distinctive the mark the greater protection it receives. A mark with an arbitrary relationship to the good it represents (such as Apple computers) or a totally made up word as a mark (such as Kodak) would receive the strongest protection and can always be registered with the Patent and Trademark Office (PTO).  A mark that suggests a quality of the good it is a mark for, such as Greyhound describing a swift form of transportation, can always receive trademark protection but have less strength than a fanciful or arbitrary mark.

Below these types of marks on the protection totem pole are descriptive marks—marks that actually describe some part of the good or service.  A good example of a descriptive trademark is All-Bran brand cereal, the brand actually describes the type of cereal sold. Descriptive marks may only receive protection so long as the mark is associated with the product or service in the eyes of the public. This is known as acquiring secondary meaning and generally takes some serious marketing and several years in the marketplace.  Five years is a pretty common number to see in relation to acquiring secondary meaning, but it has more to do with the thoughts of the public than any hard and fast period of time.

Finally, the very bottom of heap when it comes to trademarks is—you guessed it—generic trademarks. Generic trademarks are marks that are actually the common name for the product or service sold.  For example, Bread brand bread would be generic.  Generic marks are can never be registered as protected trademarks in the first place.

This brings us to genericide. When a brand name becomes so well known that it is used interchangeably as a name for a class of product or service, so much so that they have lost their initial distinctiveness from that or service, that brand name has become generic.  This kills the trademark, even if it started out as a totally arbitrary or fanciful term, because it means that the average consumer doesn’t think of your brand when they think of your brand name—they think of an entire class of product or service.

There have been several well-known brands that have fallen victim to their own success in this way. Aspirin, Band-Aids, Xerox, Linoleum and others have all been ruled generic even though they started out as brand names. Just a few years ago, Google narrowly avoided its own genericide case after a trademark case led to claims that Google had become a verb interchangeable with searching for something on the internet regardless of search engine.

Protecting Your Mark Against Genericide

Fortunately, there are a number of steps you can take to ensure your trademark avoids the fate of Band-Aids and the lawsuit headaches of Google and Tiffany. From your marketing to your legal strategies, avoiding genericide is all about preventative steps.

First, always use the type of product in conjunction with your name in describing your product. For example, Orowheat would describe itself as “Orowheat bread.”  Second, always capitalize your trademark and try to use distinctive fonts, colors, and more to distinguish the mark.  Third, never use your mark as a noun or verb, always as an adjective describing a type of product.  Fourth, never describe your product in plural—you buy two Orowheat breads not two Orowheats.  Finally, it is crucial to be vigilant of people using your trademark interchangeably with the class of product or service you provide and be prepared to object strenuously to such use.  There is obviously a certain amount of word of mouth advertising that you get that encourages allowing people to discuss your product as the standard of your industry.  However, it is important to strike a balance that errs in favor of keeping the protection on your mark alive. 

This last point becomes especially important when you see competitors using your trademark to describe their product. This type use needs to be quickly addressed, first through communication demanding they cease and desist and then potentially through legal recourse.

Tiffany seems to be winning their argument against genericide. However, carefully monitoring how your mark is used can avoid the problem in the first place.  Your trademark can be worth more than any diamonds, but you need to make sure that it keeps its distinctive shine.

Authored by Jonathan Lurie, LegalMatch Legal Writer and Attorney at Law

“Trump TV” Trademark

In the midst of the heated presidential campaign, a public health physician has filed for a trademark on the phrase “Trump TV.” This is a recurring and oft used phrase by the presidential candidate himself. This makes things difficult for Trump. He is known for holding various trademarks and this would be no exception. If he were to file a trademark on this particular expression, the USPTO might deny him. USPTO, the governing body of trademark registrations, regularly turns down countless trademark applications.

Grabowsky, a health doctor, decided to file a mark on the phrase. He did it on a whim. He is the first to apply for the mark. This would technically mean that if the USPTO approves registration, then he could have rightful ownership on the mark before Trump does. Of course, USPTO takes a number of factors into consideration. For one, Grabowsky has no real commercial purpose for filing the mark. This might tip the scale in favor of Trump.

Trademark Law

Lanham Act and common law govern trademark law. Trademark examiners look over the application, and then proceed to determine if any preexisting marks of the same kind exist. If so, the application is rejected. Once an application is approved, the trademark is registered and becomes public information. However, there are exceptions to registration. Under Lanham Act, even an unregistered trademark can receive protection. Moreover, some states follow a first use rule policy. This means that an unregistered mark may receive priority over a registered mark if it can be shown that the registered mark was used commercially first. Trademark law is all about commercial use of the mark. If someone registers the mark but “abandons” it, then it will become invalid.

Trump has a solid claim due to the simple fact that he has made use of the phrase in promoting his campaign. He could very likely have used it for commercial purposes too. If USPTO determines that Trump has commercially made use of the phrase, then he will have ownership over the mark. Grabowsky has admitted that he has done hardly anything with the mark. This makes his case for the mark harder. He has not made commercial use of the mark. There is much to trademark law but the core principle is the preservation of the product’s business value that is reflected in the mark. A public health doctor like Grabowsky has no real use for the mark and has filed an application on a mere whim. Trump, on the other hand, has made full use of the mark in the public domain and there most certainly can be commercial value found in his usage of the mark.

Priority System

Trademark is a unique animal. Trademark application is a multi-level process that requires careful scrutiny by trademark examiners. At times, coexistence of the same mark is a possibility. However, as mentioned above, registration of the mark is not as essential as making commercial use of the mark. Priority will be given to whoever can show that they had made full commercial use of the mark first. Some states might have a first to file system where they give priority to the party that files for an application first. If this were the standard applied to this case, then Trump would receive the short end of the stick. But this approach is hardly used and Trump has a stronger showing for use of the mark. 

Authored by Sam Behbehani, LegalMatch Legal Writer

Mimicked Memes: Penguins and Intellectual Property

The internet has allowed us to communicate and share knowledge on an unprecedented scale, ushering in a new era of access to information. It has also provided an unprecedented ability to share funny captioned cat pictures—memes.  From “Good Guy Greg” to “Philosoraptor” memes, memes are a cultural phenomenon.

While exactly what constitutes a meme can be a bit hard to define, they are generally thought of as a cultural touchstone which spreads from person to person throughout a culture. While the concept of a meme preexists the modern internet, the internet has allowed memes to spread to the world with incredible speed.

As you might expect from something so widespread, common memes have given rise to lawsuits and questions of law—especially when it comes to ownership of a meme. About a year ago there was a bit of a kerfuffle over the copyright status of the popular meme "socially awkward penguin."  The original photo was taken by a photographer working with National Geographic.  However, the rights in the photo have since been purchased by well-known photo aggregator Getty Images.

Getty Images went after a German company, Get Digital, for using the photo as part of an advertisement featuring the penguin meme on their website.  Getty forced a twice as high as the norm licensing agreement out of Get Digital for their use. They also demanded confidentiality for the agreement, but Get Digital refused and went public to the media.

Memes have also led to lawsuits in the U.S. For instance, in 2013, the creator of the Nyan Cat meme sued the creators of the video game Scribblenauts for copyright and trademark infringement over their use of the image of “Nyan Cat”—a cat with a toaster strudel for a body.

While it’s not likely you’re going to be sued for the memes you post to Facebook, it is far from impossible to get in hot water over violating the intellectual property rights in a meme. So, with this in mind, what intellectual rights can somebody have in a meme?

Where Meme Meets Copyright

Copyright protection applies to original works fixed in a tangible medium and prevents others from—among other things—copying, distributing, or creating derivative works (works based off the original work). Memes are often superimposed on copyrighted pictures taken from material such as movies or videogames. The creators of many common memes—such as “Nyan Cat,” “Grumpy Cat,” and “Keyboard Cat”—have applied for and registered a copyright in the pictures underlying the memes.

Where a person simply applies a caption over the top of an existing picture, it is extremely likely that this use infringes a copyright by making a derivative work. So why aren’t copyright lawsuits against people posting memes more common? There are three main reasons.

The first two reasons are purely practical. One, it just doesn’t make sense from a fiscal standpoint.  It takes quite a bit of time and expense to identify a person posting a meme on the internet, if identification is even possible.  Even if you can identify them, it seems unlikely that the damages would be sufficient to cover the costs of a lawsuit or that they would have the money to pay such damages.  It’s much more cost-efficient to just make a DMCA takedown request. Two, the public backlash against copyright lawsuits against single persons tends to be a bit of a PR nightmare. There have even been incidents of death threats after a copyright claim was brought regarding the meme Nyan Cat.

Finally, the most common deterrent to suits is purely legal—the fair use defense. Fair use provides a defense to certain limited, transformative uses of a copyrighted work. The defense is extremely fact specific, so much so as to make it nearly impossible to declare something fair use without knowing the exact circumstances of the particular use.  In making the determination, courts balance four quite complicated factors: (1) the purpose and character of the use (was it commercial, educational, transformative?); (2) the nature of the work (eg. fictional v. non-fictional); (3) how much of the work was used and how important was the part used; and (4) how the use effects the market for the copyrighted work. 

Whether a work is considered transformative, a fact that makes the first factor of a fair use analysis weigh particularly heavily in favor of fair use, look to a number of things. First, where the changes add new expression or meaning they are more likely to be transformative.  Second, where the changes add new value by creating new information, aesthetics, insights or understandings—most notably through parody or criticism—this also weighs in favor of the use being transformative.

Before we get into the fair use treatment of memes, be aware that this is arguably the most complex area of intellectual property law. Treatise have been written on each of the four factors mentioned above.  What’s more, no one factor is determinative.  While a commercial use weighs heavily against fair use, it isn’t enough to definitively bar something from fair use or vice versa.

The meme you post on Facebook is likely not making money; this means that the work is not commercial. This doesn’t mean your use is outright fair use, it just means that this factor does not cut against your use being fair use.  In circumstances where a party is making money using a meme containing a copyrighted image, such as the Scribblenauts case discussed above, fair use is much less likely.

Most memes use the entirety of the copyrighted image, meaning that they take all or most of the copyrighted work. This means the third factor of the test will generally cut against a use.  The effect on the market for the work is an odd factor in that the viral nature of memes creates much of the market for the work.  The majority of the market is likely in licensing the meme photo to would be advertisers.  Thus, this factor would likely go hand in hand with the commercial factor.

Finally, one must look to how transformative the meme is compared to the copyrighted picture. So important is the factor of transformativeness that courts have held that the more transformative a use is, the less significant other factors such as commercialism become.  A meme usually simply adds captioned text over the top of the copyrighted work.  This certainly adds meaning beyond the original picture.  However, only in a very minimal way.  Thus, while most memes are arguably transformative, the factor does not weigh so substantially as to overshadow other elements to be considered.

Overall, a non-commercial use of a meme is likely to qualify as fair use. However, as is becoming more and more common, where a meme is used in advertisement or as part of a commercial product the fair use argument becomes much weaker.

Where Meme Meets the Rest of Intellectual Property

Be aware that many owners of meme photos have sought and received trademark protection as well as copyright. This means that using a meme on a product or for advertising could confuse a consumer as to source or sponsorship of a good—opening you up to a claim of trademark infringement.

What’s more, where a meme includes a picture of a person, the right of publicity—the right of a person to not have their name or likeness used commercially without their permission—is also implicated and could lead to lawsuits.

Viral memes are here to stay and their very nature makes them extremely attractive as a way to increase visibility for a product. However, be careful with how you wield the power of the meme.  It’s a fine line between a fun Facebook post and a Facebook post promoting a blog that could open you up to a lawsuit.

Authored by Jonathan Lurie, LegalMatch Legal Writer and Attorney at Law

Copyright Claim Over Old Beatles Footage

A Ron Howard directed film showing a live performance of the Beatles is now the target of a lawsuit. Sid Bernstein had a big involvement in the production of the performance. Numerous sources claim that it was his idea for a live performance and that his team was responsible for the recording of the performance. Now Sid Bernstein Presents, a company which represents the now deceased Bernstein, seeks a lawsuit against the Ron Howard production and other companies for making use of the recorded performance. They claim it is a copyright infringement.

Copyright Implications

It will be quite difficult for Bernstein Presents to win on this lawsuit. For starters, although Bernstein played a huge role in the production process and had creative input, the courts have said that he was not the copyright holder. Simply being involved in the creative process of a work, whatever it may be, does not guarantee that the individual is the rightful owner of the work. There are many different key players in the production of such an event but there typically is one individual who is pegged as the copyright holder.

It’s not just about the ‘sweat of the brow’ or to put in plain terms, the amount of work one has put into it. Other factors including the amount of money poured into the project, as well as contracts that explicitly lay out the terms. Contract language holds the most weight because it is final in most instances. Other times, a contract will claim an involved party as a ‘work-for-hire’, which means that the individual is an employee, and will receive recognition for their work but will not be considered rightful owner of the copyright. If Bernstein was acting as independent contractor at the time, an argument can be made that he is the copyright holder. As this was not the case, it will not be further discussed.

It is important to note that providing creative input will not suffice in giving way to copyright ownership. Although copyright law is predicated on creative contribution, there are legal restrictions in place that will counter this notion. In the case of Bernstein, whether or not he had creative insight and assisted in the management and production of the work, other factors must be factored in as well.

To make matters worse, the Copyright office rejected Bernstein’s copyright registration application. Although registration is not a key ingredient in pursuing an infringement, it provides insight as to its copyright status. Ron Howard and others have used the recognizable Beatles live performance recording in their works and if Bernstein hopes to win on infringement grounds, he must make a strong showing that he was the rightful owner. This will be close to impossible to show, considering the reasons mentioned above. One more problem, at least according to one source, is that Bernstein never held himself out to be the exclusive owner. He acted as an employee, not as an employer who has ‘direct’ control and supervision over the working giving them full control over the work.

Statute of Limitations

The Statute of limitations creates a time frame in which the plaintiff can initiate a lawsuit. Statute of limitations functions a bit differently in the context of copyright infringement. In this context, the clock starts running when the copyright holder becomes aware of the infringement, not the moment in which the infringement first occurs. The time frame to bring lawsuit upon discovery of the infringement is three years. Whether or not Bernstein is within this scope hardly makes a difference. The bottom line is that he will have a hard time convincing the courts that he is the rightful owner.

Reworking the System

There are many out there who have been rather outspoken about the issue-they would like the copyright landscape to be altered to become more considerate of the players involved in the creative decision-making. Like mentioned before, most of these relationships are handled in the form of contracts but there can be a compromise of sorts for the creative minds of the work. These conglomerates should not own the business and IP rights. There should be a balance that exceeds the employer-employee relationship that gives more consideration to the individual contribution and investment.

Authored by Sam Behbehani, LegalMatch Legal Writer

Student Group Forbidden From Using 'Trump' By Penn. State

Election day is right around the corner and a group of Penn State students seek to endorse Trump by forming a club with the label “We are for Trump.” Penn. State University has requested that they use a different name, due to trademark issues with the label. The presidential candidate has a number of trademark applications on his own name and in light of this, the University does not want to have an infringement case on its hands. The student group, in response, has changed its moniker.

Trademark Law

Trademark law is prevalent everywhere. Public figures, and more so, celebrities have a number of trademarks on their names. It is easily identifiable if a trademark exists or not. USPTO has a registry of all registered trademarks to date and this is all public information. There are no excuses around infringement. Yet at the same time, there are times when someone can use a trademark without permission. For one, there is a fair use doctrine in trademark law just as there is with copyrights. Under this commonly invoked doctrine, if the defendant uses the mark for educational, nonprofit, or non-commercial reasons, then they might have a strong defense against infringement.

The purpose of trademarks is to prevent consumer confusion from occurring—this confusion would hurt the marketability of the product that the mark is associated with. Being able to trace the product to its source is the key reason why individuals and corporations seek trademarks. For example, if someone sells a low-quality shoe and they stick the famous Nike “Swoosh” logo onto their products, and consumers come to associate these inferior shoes as part of the Nike product line, it could potentially hurt business for Nike. Trademark law will permit Nike to file a claim against this counterfeiter. The less it impacts the commercial value of the mark, the more likely a fair use defense can be made.

First Amendment and Political Discourse

Aside from the fair use doctrine, First Amendment implications are in play as well. Election season is in full swing and these student groups just want to show their support for one of the candidates. There is no commercial value to their campaign. All they want to do is spread the word. Placing a lid on this could, as many constitutional law experts like to call it, have a “chilling effect.” First Amendment grants basic fundamental rights such as freedom of speech and assembly. Both speech and assembly are in full force here. Political discourse should not be inhibited. Trademark law should not inhibit speech. Many different sources have made use of the word “Trump” as part of their political campaign and this is no exception. The Founding Fathers carved out the Bill of Rights for one reason—it was to ensure that every citizen of the U.S. would be given certain inherent rights and speech is one of them.

The University has promptly responded because it does not want a lawsuit on its hands. The University seeks to avoid a lawsuit from the Trump Foundation but by doing so, it is impeding on the students’ rights to speech and assembly. Similar cases have worked their way up to the U.S. Supreme Court, and although a number of them act as precedent, issues like this are still very much up in the air. Trademark is an interesting area of the law because it walks a fine line. It grants rights to commercial enterprises, but also impacts long held constitutional values all the same. It is walking on thin ice. There is ground to make up when it comes to trademark law, especially with regards to political discourse.

Authored by Sam Behbehani, LegalMatch Legal Writer

Cleveland Indian Name and Logo In Ontario Court

As the Cleveland Indians gear up for their playoff game against the Toronto Bluejays, they have been hit with an injunction. Indigenous activist Douglas Cardinal filed an injunction in Ontario court against the Indians, claiming that the Indians logo and the red-faced Chief Wahoo have racial undertones. This is not the first time that the organization has had to deal with such accusations. The Indians logo does present a problem due to its inherent representation of indigenous folk. Of course, imposing an injunction would be equally troubling. This would inhibit the Cleveland organization from advertising and merchandising, which would hurt sales and the businesses that make a living through advertising and merchandise.

Trademark Disparagement

Obviously, at the heart of it, this case is based on trademark law. Although this case was heard on Canadian soil, a similar set of laws could be applied if the case was heard in the U.S. The Lanham Act guides U.S. trademark law. Trademark law is constantly being reworked to meet new standards. The Indians organization holds a number of trademarks over the Indians logo and similar marks. There is even a mark on the mascot itself. The question is: can the mark be invalidated for potential racial connotations?

The answer is yes. Under a doctrine known as disparagement, a party may petition the Trademark Trial and Appeal Board to cancel a trademark registration that may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols. This doctrine is not so much about whether a trademark exists on the mark but rather whether the trademark can be invalidated on certain grounds. Examples of when a trademark was invalidated on such grounds include a depiction of Buddha in beachwear and using the name of a Muslim group that forbids smoking as a cigarette brand name.

Here, the Native American population has had a history of discrimination. Although the organization means no ill will with the use of such marks, there are still some overt racial tones to the marks that could prove to be derogatory for this group. Eventually, these marks might be invalidated on such grounds; however the Ontario court reasoned that because the injunction is coming at a crucial time in the baseball season, that it should not be enforced. At some later point, the court could rule otherwise. Also, if the case is held in the U.S., this disparagement could invalidate the mark.

A History of Abuse

Disparagement doctrine was created to prevent certain groups from feeling abuse. It is not the first time that the Natives have protested against such marks either. The Stanford Cardinals were once known as the “Indians” and it took student protest for them to remove the mark. Washington Redskins have been under attack too for the same reasons. Hence, it is not a new problem. It does not start and end with the indigenous population either. Individuals with disabilities, people of color, and the LGBTQ community have all brought claims against marks that have portrayed them negatively.

At the end of the day, there are means for these protected groups to be given the proper treatment. Brands and logos that disparage such groups can be taken down if there is justification for it. There are of other avenues that these groups can seek as well. Defamation, although more attenuated, is a legitimate cause of action in certain circumstances as well.  

Authored by Sam Behbehani, LegalMatch Legal Writer

Trump Jr. Forced to Take Down Skittles Photo

Donald Trump Jr., who has been on the campaign trail in support of his father, has received backlash over a statement he made about the Syrian refugee crisis. In his statement, he compared a bag of Skittles to the Syrian refugees who are desperately trying to flee their war-torn country. This has caused uproar among many and now Trump is being forced to take down the Skittles photo that he used in making his remark. The owner of the photo wants to have no part in this. Legally speaking, as the copyright holder of the photo, he can force Trump to take down the photo without a moment’s notice. However, there are other factors that need to be considered in determining if Trump can make use of the work without permission.

Copyright Regulations

Under Copyright law, the photographer or whomever the photo was commissioned for is the rightful owner of the photo. Here, Trump Jr. has made use of a photo without permission from the copyright holder. The copyright holder can seek a mandatory injunction forcing Trump to take down the photo. Moreover, they can seek damages for copyright infringement. The only way Trump Jr. can maintain the photo is under the fair use doctrine. Whenever a copyrighted work is used for any purpose without the owner’s permission, there are grounds for infringement.

Fair Use

Fair use is a defense to infringement in certain situations. For example, Trump Jr. can claim that the photo was being used as a political message and was for a public purpose. Although fair use does not have clear boundaries as to when the defense will be triggered, if the use is used for a non-commercial, educational, or scholarly purpose, then there is a great likelihood of coming out on top.

Although his analogy is borderline absurd, it is intending to send the message that we should be more wary of allowing in more refugees. Once again, the content of the message should be looked at in determining if there is some educational or non-commercial purpose to it. Here, a claim can be made for this, yet the absurdity of it might dampen Trump’s case. Politicians have been using copyrighted material in promoting their agenda for some time now. This is not the first time in this particular campaign either. Trump has sampled music from different artists without permission. Sometimes, compulsory licenses will allow politicians to get away with this. With this particular photo, this will not work and unless fair use can be raised, then Trump Jr. will have to take down the photo.

Moral Rights

One of the reasons why the photographer wants to prevent use of the photo is in accordance with a concept known as moral rights. Moral rights, although not widely considered in the U.S. Copyright system, gives the right of integrity to someone’s work. Right of integrity protects the ‘dignity’ of the work. Here, Trump Jr. is sending a message that is both controversial and inflammatory which could leave a blemish on the photo itself. The photo might come to be associated with the outrageous comment that Trump is making and the copyright holder does not want this. Hence, this is the justification for taking down the photo.

Authored by Sam Behbehani, LegalMatch Legal Writer

Justice Department Defends Existence of Copyright Law

The U.S. Department of Justice seeks to end a lawsuit that challenges one of the key provisions of the Digital Millennium Copyright Act (“DMCA”). The plaintiff is the Electronic Frontier Foundation, a reputable SF based nonprofit organization that tackles digital access rights. EFF claims that the anti-circumvention provision of the DMCA inhibits free speech under the U.S. Constitution. DOJ seeks to dismiss the case as meritless.

DMCA

The DMCA is one of the most compressive governing copyright laws in existence. One of its provisions, 1201, prohibits use or dissemination of technology that circumvents measures that safeguard access to copyrighted works. In plain English, there are tools that can gain access to copyrighted material without the owner’s permission. For example, a majority of vehicles today are run on software. These pieces of software will have safeguards that prevent access to them. The obvious reason for this is that the owners don’t want others to make use of their software. This is rightfully justified and is the basis for all of copyright law. Now, EFF is claiming that not having access to such material is infringing on free speech.

Who Has the Better Claim?

DOJ is all for the DMCA. EFF strongly believes that free speech is being inhibited here. DOJ argues that the DMCA provision is not a violation of free speech, but rather is a protection of copyrighted works. Of course, there is a good amount of case law that has tackled this issue before. In most instances, the Courts have found the DMCA to be constitutional. 1201 also includes a clause that allows for a triennial review where every three years the Librarian of Congress grants exceptions to this anti-circumvention. In one case, the government made it legal to hack into a smart TV to achieve interoperability. The point is that circumvention is not completely off limits.

The first amendment argument seems a bit inflated. I understand why EFF and others would claim that anti-circumvention is undercutting free speech. However, this argument does not have enough meat on it to undermine the DMCA. There are far more impressing concerns at hand if anti-circumvention was not in effect. Copyright protection is an essential aim of the DMCA. Without these safeguards and measures in place, the copyright world would be in disarray. Practically everything today is run on software and they all come with some form of safeguard. If anyone could just “jailbreak” into the software and do as they pleased, copyright law would cease to exist. There is a balancing act here. This is a battle between free speech constraints and basic copyright principles. However, as mentioned before, the free speech claims do not hold water. The DMCA was created for the purpose of giving extensive protection to copyright holders. It was not meant to curb expression or free speech.

At the end of the day, DMCA serves a purpose that allows a great degree of protection over copyrighted material. There might one day be a ruling that shows free speech being inhibited, but until that day comes, the benefit of the doubt should be and will be given to the DMCA and Copyright law.

Authored by Sam Behbehani, LegalMatch Legal Writer

Chicago Cubs Going After Counterfeiters

As the baseball season winds down, the Chicago Cubs are lining up to pursue legal action against vendors who have been making use of the Cubs brand without permission. The Cubs own a number of trademarks over their brand imaging and logos. Vendors have been selling counterfeit merchandise that makes use of the Cubs branding. The Chicago based franchise is suing these vendors for lost profits and other related damages.

Trademark Law

Trademark law controls brand rights. Unless permission is given through a license or other assignment of rights, the trademark belongs to the registered owner. Trademark infringement, or in other words, the use of the brand without permission is grounds for a lawsuit. Generally, damages will be awarded to the owner in sizable amounts. Here, certain vendors have been selling all kinds of merchandise, such as jerseys and baseball caps without explicit permission from the Cubs organization. This is without a doubt trademark infringement.

Counterfeiting is a prevalent issue not only in regards to the Cubs, but sports franchises across the board. Vendors will seek to sell off their goods, but will use the respective sports logo on their products in order to attract more customers. At its core, trademark law is about source identity. For example, customers associate the ubiquitous iPhone with Apple Company. This association is made through the overall look of the product, the Apple logo, and other such things. Everyone knows that the MacBook line of computers has a distinct cosmetic appearance that many customers will be able to identify. This is the source identity.

However, infringement is put into question when a vendor or merchant sells a similar looking product that the consumer believes comes from Apple. This is ground for infringement for a number of reasons. For one, this “consumer confusion” can lead to a loss of profits from sale of the products for the company that owns the trademark. It is a zero sum game. A gain for the vendor is a loss for the trademark owner. This is why there are safeguards in place that will allow for recovery for the trademark owner. Here, the vendors are clearly using Cubs brands to sell products and they are making a profit off it. This warrants a trademark infringement lawsuit.

Any Defenses?

Fair use doctrine, although predominantly a copyright device, can be used in trademark infringement suits as well. The difference, however, is that in the context of copyrights, there are clearly defined grounds of fair use defense. Under trademark law, it is not as clear and much harder for the defendant to make a successful claim. It will be quite difficult for these vendors to show that the use of the brand is for reasons other than profit. Moreover, there is no indication that the fair use is of the nature of an educational or scholarly purpose. Hence, this defense is insubstantial.

Laches is a non action defense that will drop the suit if a substantial amount of time has passed between the cause of action and the complaint filed. This can arise in the form of impossibility; that is, defendant will not be able to stage a proper defense. Laches does not seem viable either because the Cubs organization, as the complainant, seems to have brought a timely complaint.

Other than the two aforementioned forms of defense, First Amendment issues do come up when trademark infringement is at the center of the debate. Yet, once again, this is not the kind of case and as a result First Amendment matters would not be applicable. At the end of the day, vendors should resist from engaging in such devious practices and should request for trademark use through the legal mechanisms that are available. Otherwise it will be an uphill battle.

Authored by Sam Behbehani, LegalMatch Legal Writer

Oakland Raiders Trademark Application

Oakland Raiders, the long-time Bay Area football franchise, might soon be moving. As it turns out, the Raiders organization is turning its attention to Sin City as its new home. Of course, this potential move is not without legal ramifications. Raiders are not only a professional sports team, but carry with it an image that resonates among the Bay and across the nation. The raw pirate emblem streaked with the black and silver is recognizable to millions of football aficionados and others alike.

As a market, the Raiders regularly generate millions through merchandise and brand advertising. These are but the few points worth noting. Raiders are a constant reminder of a franchise that has brought joy and excitement to millions over the years. The common theme here is brand perception and recognition. In the legal world, this is known as a trademark. Trademark is the pinnacle of branding and image protection.

Who Does the Trademark belong to?

The United States Patent and Trademark Office decides all matters relating to trademarks. A trademark application is looked over by numerous trademark examiners before a decision is made as to its validity. Trademarks can be granted to anything ranging from logos, designs, and expressions. The key to trademarks is brand protection. Consumers come to associate products with a certain brand and if they are not able to do so, this is problematic from a socio-economic standpoint. This is better known as “consumer confusion.”

More than anything else, the Oakland Raiders is a business. It generates profit through its brand. The Raiders brand is what drives consumers to buy and be a part of the experience. This brand requires trademark protection; otherwise some third party can come in and use that very same brand with no legal ramifications. This is where trademark law comes into the picture.

The USPTO webpage lists all registered trademarks and all pending trademark applications, and having taken a glance, it looks like the Raiders logo and product packaging that is involved shows the trademark(s) belonging wholly to the Oakland Raiders organization. However, there is a catch to this. The NFL is the national association that regulates all 32 of the football teams, including the Raiders.

Although the NFL does not own the intellectual property rights of these individual franchises, it does have the power to license out such rights. In other words, the Raiders may hold the trademark, but the NFL can rightfully control and distribute the trademark. For example, the NFL can legally grant vendors the right to use the trademark. This concept is a bit murky. There is case law discussing it but it is not entirely clear what the extent of the NFL is when it comes to controlling the trademarks. Ultimately, the trademark belongs to the team to do what it likes with it.

Preventing the Move!

As of right now, it seems that if the Raiders want to relocate to Vegas or any other destination, it is their right to do so as an independent body. NFL might have something to say about this. City of Oakland values the team as well so they might try to prevent such a transfer from happening. Unless there is an existing lease between City of Oakland and the Raiders, then Raiders will be able to relocate with no problem. City of Oakland, as much as it would like to hold on to the team, does not have much authority when it comes to such matters.

A funny story to this is that the City of Oakland actually tried to exercise eminent domain over the Raiders as a way to keep the team in the city. An eminent domain gives a public entity, which in this case is the city, control over certain property (this can include property that is privately owned), but only if it is done so for a public use. The court ruled in favor of the Raiders. There were no real grounds for the City having control over the Raiders franchise and there certainly were no valid grounds for public use either.

As for the NFL preventing the move, it has more influence in this regard. NFL can prevent the Raiders’ move if three-fourths of the existing member clubs of the League vote against it. This is a mechanism that has been actuated many times in the past. It can be quite difficult for a team to actually relocate because of this potential barrier.

Also, there will likely be a relocation fee if the transfer comes to pass. These fees tend to be very burdensome and might give the franchise a reason to stay put in the Bay. Las Vegas is already setting into motion a new tax that would go towards building of a stadium if the deal comes to pass. If however, Vegas was opposed to the move, it could possibly prevent it through zoning and other municipal regulations.

Authored by Sam Behbehani, LegalMatch Legal Writer