Legal Geek No. 177: Supreme Court strikes down Offensive TM Bans

Hi, and welcome back to Legal Geek.  This week, we review this week's decision of the Supreme Court striking down the U.S. law banning registration of offensive trademarks.

https://archive.org/details/legalgeekep177 

Just about two months ago, this segment covered the oral arguments in this case, in which the Supreme Court considered whether the ban on trademark registrations for so called immoral and scandalous marks was constitutional.  This appeared to be a direct follow up to the 2017 decision in which a similar ban on disparaging marks was stricken as unconstitutional by the Court.  The court appeared to be struggling to distinguish these two types of bans from one another during oral arguments, and that indeed played out in the final written decision this week.

Justice Kagan wrote for a 6-3 majority and started with a blunt assessment of this case and how it relates to the 2017 disparaging marks case.  She stated that the Court holds that this provision banning immoral and scandalous marks infringes the First Amendment free speech rights for the same reason as the disparaging marks ban, more specifically, that it is a law disfavoring ideas that offend, which discriminates based on viewpoint, and that type of speech restriction is nearly impossible to uphold under First Amendment law.  So as many legal scholars expected when the disparaging ban went down two years ago, the ban on immoral and scandalous marks fell quickly behind that.

The particular challenger to the law is Erik Brunetti, who owns a streetwear brand called F-U-C-T.  So he will benefit much like the band The Slants and the Redskins football team did when the disparaging ban was stricken as unconstitutional two years ago, as he will be able to proceed to register his trademark at the U.S. Trademark Office.  But this decision also signaled that the floodgates may not be open to all offensive marks forever. 

To this end, the dissenting justices made it clear that they favored a more narrow reading of the law to make the scandalous part of the trademark ban viewpoint neutral and constitutional.  The U.S. government had argued that this scandalous ban could be maintained if it was narrowly applied only to marks that are obscene, vulgar, or profane in their mode of expression, and Justice Sotomayor indicated that such a narrower ban would likely be constitutional if presented that way.

The majority opinion did not strongly dispute this point of the dissent, but simply made the points that the law is written broadly now and has to be evaluated in that sense, making it clearly unconstitutional.  Justice Kagan wrote that the majority's decision says nothing at all about a future law limited to banning merely a smaller set of problematic marks like lewd, sexually explicit, and profane marks.  Justice Alito in a concurring opinion specifically observed that Congress could now write a more carefully focused narrow law that precludes registration of marks containing vulgar terms that play no real part in the expression of ideas.  

So while it's clear the Lanham Act's prior broad bans on disparaging, immoral, and scandalous trademarks is finally dead, it will be interesting to see if Congress picks up the issue to rewrite the scandalous ban to be narrower and perhaps OK under the constitution's First Amendment protections.  The Court has certainly opened that door in this decision.

The Bottom Line is: while this Court decision is a win for consistency in the laws and a win for those who seek to register marks deemed more risqué or scandalous, the door may not remain open for truly lewd, obscene, and profane marks if Congress responds to the Court's seeming invitation to present a law with a more narrowly tailored ban.  So long term, this may only be a temporary victory for marks like Erik Brunetti's F-U-C-T clothing brand.

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Legal Geek No. 176: Arnold Palmer, the drink brand rights

Hi, and welcome back to Legal Geek.  This week, we review the interesting case of Arnold Palmer as a brand covering the half iced-tea, half lemonade drink, following up on the discussion and inquiry from last week's main Current Geek show. 

https://archive.org/details/LegalGeekEp176 

There's nothing more refreshing in the summertime than iced tea and lemonade, and Arnold Palmer has been personally ordering a mix of these drinks since his golf-playing heyday in the 1960s. Indeed, as Scott and Tom pointed out on the last Current Geek, his name has become synonymous with this drink in many places.  He even licensed his likeness and signature to Arizona brewing company to bring out a line of tea/lemonade drinks.  But how enforceable are any branding rights Arnold Palmer may have in this drink, and can he enforce them against another drink company or against your local restaurant or bar putting this drink on the menu?

The short answer, as always, is that this is complicated.  There are two sets of rights at play here, one being traditional trademark rights and the other being rights of publicity, also known as personality rights.  There's of course no patent rights blocking companies from offering half tea half lemonade drinks on the market, like the competitor Lipton has done to Scott's delight, so long as there's no association made with the name Arnold Palmer.

Turning first to trademark rights, Arnold Palmer's company registered his signature as a U.S. trademark for tea beverages over 10 years ago and this is what was licensed to make the Arizona drink that's still available in stores today.  Interestingly, his company has also recently filed a couple of trademark applications on tea beverages covering his name as the trademark, rather than the more narrow and specific signature.  One of these applications from early 2019 has already been granted.  So Palmer's company is certainly trying to protect whatever trademark rights exist in this name.

However, one potential problem that Palmer will always face is genericization.  Enforceable trademarks cannot be merely descriptive or generic terms for a good or service, and former brand names like Kleenex, Velcro, and escalator are examples of prior marks that became generic terms and thus enforceable as trademarks.  While Arnold Palmer as the identifier for this tea lemonade drink probably has not yet become widespread enough to truly be generic, that line could shift with time and could undermine any potential attempt by his company to enforce this as a trademark right.  

Turning to rights of publicity, individuals have rights mostly under state law in the U.S. to prevent or control the commercial use of his name, image, or likeness.  This can also overlap with rights granted by the U.S. federal Lanham Act that stop false designations of origin to prevent consumer confusion as to the source or sponsorship of goods on the marketplace.  In short, Arnold Palmer has the right to control the use of his name and likeness on products in the marketplace, including tea lemonade drinks, especially where he has not sponsored or authorized the use of his name or likeness.

So how's this play out in the examples Scott and Tom presented?  If Lipton or another drink company launched a bottled tea lemonade drink and put it in stores with Arnold Palmer's name or picture on it, such a company would almost certainly be sued for trademark infringement and for infringing Palmer's rights of publicity.  Such a company would probably lose on at least one of the claims, making it risky to enter the marketplace in such a bold manner. 

However, relative to local bars and restaurants identifying a drink as an Arnold Palmer or something similar like a Shirley Temple, there's a stronger argument to be made that this use is in a descriptive sense and is not falsely associating Palmer as the source of the drinks being served. Without consumer confusion as to the source of goods or a false designation of origin, the only right Palmer could probably assert in such a context is the right of publicity, and that's not likely to be enforced against every small restaurant or bar that chooses to identify the tea lemonade drink this way on a menu.  

The Bottom Line is: Arnold Palmer has made a better living off promoting his name as a brand for various products after his golf retirement than he ever did playing professional golf, and he has taken steps to protect whatever interest he has in the tea lemonade drink market.  So while he does have some enforceable rights in the name Arnold Palmer on drinks, and will continue to do so even after his death when that occurs, it's more likely such rights would only ever be used to stop the very largest infringements, such as a bottled drink in stores directly competing with his licensed products sold by the Arizona brewing company.  Pragmatically, as long as some company is willing to pay to license his rights, Palmer will be able to make revenue off his name even if eventually he doesn't have much legal right to enforce, but that's not the case currently.

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Legal Geek No. 175: Pirate Ship (Copyright) heads to Supreme Court

Hi, and welcome back to Legal Geek.  This week, we preview a notable case that the Supreme Court granted certiorari to last week, specifically involving copyright law and a pirate ship. Ma'hoy!

https://archive.org/details/LegalGeekEp175 

In 1990, the U.S. copyright law was amended in a bill by Congress entitled the Copyright Remedy Clarification Act, or the "CRCA." This law has a provision that allows copyright owners to sue states for infringement, when any state of the union commits such infringement. That is precisely the case at hand, as a videographer Frederick Allen is trying to sue the state of North Carolina for copyright infringement over unauthorized use of his video footage of a pirate shipwreck which is known to have wrecked on the coast of that state.

However, there's just one big problem for Mr. Allen, and that's the Eleventh Amendment to the U.S. Constitution. The 11th Amendment grants states and state officials broad sovereign immunity from being sued in federal court. The CRCA aimed to create an exception to this broad immunity in the case of copyright infringement. That has not flown well in lower federal courts, which have consistently stricken down this law as unconstitutional since its passage in 1990. Indeed, the U.S. Department of Justice, which normally defends constitutionality of Congress's laws, no longer defends this statute in court.

Allen's case was similarly thrown out by the lower court and the Fourth Circuit court of appeal, yet in a surprise, the Supreme Court chose to hear this case for the next year's term. So the pirate ship case will sail into the port of the 9 justices next fall, taking direct aim at this conflict between the 11th Amendment and the CRCA. If the Supreme Court also deems this law unconstitutional, then that will officially be the final death blow for this 30-year old law. 

If, on the other hand, the CRCA is deemed OK in spite of the 11th Amendment, then Allen will be able to proceed with his copyright infringement case against North Carolina. If that occurs, you can expect several other cases to also appear against states that have not complied with copyright laws and rights. It's an interesting gap in copyright protection which is only available in the federal setting, so this may be a rare case where sovereign immunity will not win the day.

The Bottom Line is: sometimes the most silly things like Pirate Ships come before the Supreme Court, this time in the guise of a constitutional question about copyright law. One hopes that as with superheroes and other relatively fun topics, the justices will take this opportunity to throw some levity into the oral arguments and the final written opinion, perhaps even by scheduling the argument on Talk Like a Pirate Day.  OK, so that latter part won't happen, but we can hope for some fun when this case fires the cannons next fall.

POSTNOTE - Just an FYI, the Legal Geek will be appearing at Origins in Columbus in June and at GenCon in Indianapolis in August with educational seminars on IP law for game designers.  Please come out and say hello if you'll be at those conventions!

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Legal Geek No. 174: SuperAwesome generates tech for Detecting Children Online

Hi, and welcome back to Legal Geek.  This week, we check out a new piece of tech being tested by the SuperAwesome company in the effort to make compliance with child protection privacy laws like COPPA easier for online websites and companies. 

https://archive.org/details/LegalGeekEp174 

COPPA, or the Children's Online Privacy Protection Act, was passed into law in 1998 and governs online collection of personal information by persons or companies under U.S. jurisdiction, specifically about children under 13 years of age.  Operators of websites and services that cater to this audience must follow certain guidelines to protect children's privacy and data online, and restrictions are placed on marketing to these consumers.

It can be quite difficult to properly comply with the law, so many online services disallow any users under the age of 13.  Of course, this is typically verified with just a question when setting up an account, and a simple lie about a birthdate can circumvent such systems.  Failing to comply with the law can bring actions against you by the Federal Trade Commission, with fines of hundreds of thousands to millions of dollars. 

We can save a more detailed review of COPPA for another day, but suffice it to say, online game companies and similar services must always be concerned about compliance with this law, else they risk a very damaging fine and judgment against them.  So any technology that can help online services detect when a child is using the service would be helpful to allowing them to filter the necessary protections to those users only when it is appropriate.

Enter SuperAwesome, a company that is designed to make brands and content owners working online fully compliant with the various local privacy laws, most notably COPPA and the recently-enacted European GDPR.  The latest tech from this company is an artificial intelligence which can tell if a user browsing a site is a child or an adult, based on 300 indicators trained into the system including things like nature of the content, how interactions are being done, where the screen is being tapped, etc. Thus, instead of relying solely on the good word of users putting in an accurate birthdate, online companies can automatically detect likely child users with this tech and then trigger the additional protections needed to comply with privacy laws. 

As someone who has children on locked down Pokémon Go accounts that Niantic never fixes because compliance with these laws is apparently too hard, this type of tech would be welcome in actually improving protection of children online without being too burdensome or a waste of time for everyone else.  Plus it's yet another field where AI is making a big impact for the future of law and our online existence.

The Bottom Line is: as privacy laws change and we interact more and more online, expect companies with cutting edge tech in this field like SuperAwesome to become new giants of industry.  Indeed, this company is already valued in 2018 at over $100 million dollars, so we will keep our eyes on this company for further interesting developments as we move forward. 

POSTNOTE - Just an FYI, the Legal Geek will be appearing at Origins in Columbus in June and at GenCon in Indianapolis in August with educational seminars on IP law for game designers.  Please come out and say hello if you'll be at those conventions!

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Do you have a question? Send it in!

Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy