US Supreme Court takes up case dealing with the use of public figures’ names and likenesses in trademarks; Jurist.org, June 5, 2023

 Rebekah Yeager-Malkin | U. Pittsburgh School of Law, US, Jurist.org; US Supreme Court takes up case dealing with the use of public figures’ names and likenesses in trademarks

"The US Supreme Court announced Monday it will take up the trademark case Vidal v. Elster, to determine whether the application of Section 2(c) of the Lanham Act to political figures violates the First Amendment. 

The case surrounds the trademark application by Steve Elster for the phrase “Trump Too Small,” which Elster attempted to trademark for use on t-shirts. Elster’s application was denied by the US Patents and Trademarks Office and the denial was upheld by the Trademark Trial and Appeal Board for violating Section 2(c) of the Lanham Act, which bars a trademark that “Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent…”"

Jack Daniel's tells Supreme Court its brand is harmed by dog toy Bad Spaniels; NPR, March 22, 2023

Nina Totenberg, NPR ; Jack Daniel's tells Supreme Court its brand is harmed by dog toy Bad Spaniels

"This case involves the federal trademark statutes and whether and when parody is protected speech. The whiskey company claims that the imitation Bad Spaniels bottle has appropriated the iconic Jack Daniel's design for just one purpose, to sell a chewy dog toy. And by doing that, the company claims, Jack's property rights have been infringed, even if the chewy dog toy is expressive."

Bad Spaniel's: barking the line between permitted parody and trademark infringement; Reuters, February 15, 2023

Deirdre M. Wells, William H. Milliken, and Kristina Caggiano Kelly, Reuters; Bad Spaniel's: barking the line between permitted parody and trademark infringement

"The 9th Circuit ultimately vacated the district court's judgment on trademark infringement, based on the two-part Rogers test. The Rogers test was established in the 1989 2nd U.S. Circuit Court of Appeals decision in Rogers v. Grimaldi, and balances trademark and free speech rights. Under this test, a trademark can be used without authorization as long as it meets a minimal level of artistic expression and does not explicitly mislead consumers.

To overcome VIP's First Amendment right to humorous expression, Jack Daniel's was required to show that VIP's use of its trademarks is either (1) not artistically relevant to the underlying work, or (2) explicitly misleads consumers as to the source or content of the work. The trial court did not apply the Rogers test as part of its analysis...

The 9th Circuit's application of the Rogers test — which has traditionally been used for expressive works like movies, music, and books — to the commercial setting has garnered the attention of attorneys and brand owners alike. The outcome of this case has far-reaching implications for gag gifts, novelty T-shirts, and even subtler fashion products."

Here’s How the Supreme Court Could Impact Creative Trademark Use; Bloomberg Law, December 29, 2022

Dorothy Auth, Cadwalader, Wickersham & Taft, Howard Wizenfeld, Cadwalader, Wickersham & Taft, Bloomberg Law; Here’s How the Supreme Court Could Impact Creative Trademark Use

"The upcoming term for the US Supreme Court includes an ambitious schedule of intellectual property cases, spanning patent, trademark, and copyright law...

Jack Daniel’s

Jack Daniel’s Properties, Inc. v. VIP Products LLC addresses creative works in the context of trademark law, asking whether humorous use of another’s trademark is protected by the First Amendment. 

Under normal circumstances, a trademark infringement is determined based on whether the use of another’s mark is “likely to cause confusion” with that of the trademark owner.

However, when a mark is used in an artistic manner, courts instead use the Rogers test, which is intended to protect the free speech. Unlike the likelihood-of-confusion test in the Lanham Act (Trademark Act of 1946), the Rogers test allows use of another’s mark as an expressive work unless the use contains no artistic relevance or explicitly misleads about the source or content of the work.

As a result, the Rogers test narrows the scope of protection for the mark. Here, VIP created a squeaky toy named “Bad Spaniels,” closely resembling Jack Daniel’s famous whiskey bottle and label.

While the original bottle has the words “Old No. 7 brand” and “Tennessee Sour Mash Whiskey,” the toy humorously proclaims, “The Old No. 2 on Your Tennessee Carpet” which is “43% Poo by Vol” and “100% Smelly.” 

Should the court affirm the squeaky toy is an expressive work, for being humorous, under the Rogers test, or should a traditional Lanham Act analysis be applied? The court’s answer may have significant implications for companies that sell items with a humorous message based on another’s trademark."

Any Way You Slice It, D.C. Circuit Holds That &Pizza Can’t Get Piece of @Pizza; Lexology, July 23, 2020

Finnegan, Henderson, Farabow, Garrett & Dunner, LLP - Jessica L. Hannah and Margaret A. Esquenet, Lexology; Any Way You Slice It, D.C. Circuit Holds That &Pizza Can’t Get Piece of @Pizza

"IMAPizza LLC operates the &pizza chain in the United States. IMAPizza alleged that At Pizza Ltd., an Edinburgh, Scotland company, operating under the name @Pizza, created an unauthorized copycat version of IMAPizza’s &pizza restaurant. The Court of Appeals for the D.C. Circuit recently affirmed the dismissal of IMAPizza’s copyright and trademark infringement claims against At Pizza. The D.C. Circuit agreed with the district court’s conclusions that IMAPizza failed to allege any domestic copyright infringement or that At Pizza’s actions created any effect on U.S. commerce that could justify extraterritorial application of the Lanham Act."

After a long legal struggle, Seattle band Thunderpussy is granted a U.S. trademark; The Seattle Times, April 5, 2020

Brendan Kiley, The Seattle Times; After a long legal struggle, Seattle band Thunderpussy is granted a U.S. trademark

"“There are a great many immoral and scandalous ideas in the world (even more than there are swearwords), and the Lanham Act covers them all,” Justice Elena Kagan wrote in the court’s opinion. “It therefore violates the First Amendment.” She also noted a lack of consistency in how the USPTO interpreted the Lanham Act, approving some trademarks and rejecting others that used the same potentially offensive language.

Kerr, Thunderpussy’s attorney, had argued the same point in his appeal to the USPTO.

“I mentioned over 40 trademark applications that had been accepted that included the word ‘pussy,’ ” he said. “Human discretion enters into the process, which is one person forming an opinion based on an internet search — but the implications for the band are enormous.”

The wheels of bureaucracy turned and, on April 4, Kerr finally received a letter from the USPTO granting Thunderpussy registered trademark number 6,021,338."

Iancu v. Brunetti Oral Argument; C-SPAN, April 15, 2019

April 15, 2019, C-SPAN; 

"Iancu v. Brunetti Oral Argument

The Supreme Court heard oral argument for Iancu v. Brunetti, a case concerning trademark law and the ban of “scandalous” and “immoral” trademarks. Erik Brunetti founded a streetwear brand called “FUCT” back in 1990. Since then, he’s attempted to trademark it but with no success. Under the Lanham Act, the U.S. Patent and Trade Office (USPTO) can refuse an application if it considers it to be “immoral” or “scandalous” and that’s exactly what happened here. The USPTO Trademark Trial and Appeal Board also reviewed the application and they too agreed that the mark was “scandalous” and very similar to the word “fucked.” The board also cited that “FUCT” was used on products with sexual imagery and public interpretation of it was “an unmistakable aura of negative sexual connotations.” Mr. Brunetti’s legal team argued that this is in direct violation of his first amendment rights to free speech and private expression. Furthermore, they said speech should be protected under the First Amendment even if one is in disagreement with it. This case eventually came before the U.S. Court of Appeals for the Federal Circuit. They ruled in favor of Mr. Brunetti. The federal government then filed an appeal with the Supreme Court. The justices will now decide whether the Lanham Act banning “immoral” or “scandalous” trademarks is unconstitutional."

Appeals court vacates decisions that canceled Redskins trademark registrations; USA Today, January 18, 2018

Erik Brady, USA Today; Appeals court vacates decisions that canceled Redskins trademark registrations

"The U.S. Court of Appeals for the Fourth Circuit on Thursday vacated decisions that had canceled the Washington NFL team’s federal trademark registrations, officially ending a legal fight that lasted more than 25 years.

Legally speaking, the team won. Culturally speaking, Native American petitioners believe they did."

LeVar Burton sued in 'Reading Rainbow' copyright infringement lawsuit; Philly.com, August 9, 2017

Nick Vadala, Philly.com; LeVar Burton sued in 'Reading Rainbow' copyright infringement lawsuit

"WNED makes a number of allegations against Burton and RRKidz in the suit, including “copyright infringement, conversion, cybersquatting, violations of the Lanham Act, breach of contract, and interference with customer relations,” according to the Hollywood Reporter.

Take a look, it’s in a book — you can read the Reading Rainbow lawsuit here."

Free Speech at the Supreme Court; New York Times, June 19, 2017

Editorial Board, New York Times; Free Speech at the Supreme Court

"The Supreme Court reaffirmed core free-speech principles in two cases on Monday, both decided without dissent...

"The Patent and Trademark Office rejected the name under a provision in a 70-year-old federal law prohibiting the registration of trademarks that “disparage” any “persons, living or dead, institutions, beliefs, or national symbols.”

Writing for the majority, Justice Samuel Alito said the law violates a “bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.” That’s the right call. The First Amendment bars the government from discriminating among speakers based on their viewpoints. In this case, the Trademark Office did that by blocking only registrations for trademarks it determined to have negative connotations. The free-speech clause doesn’t apply to the government’s own speech, but registered trademarks can’t be put in that category — otherwise the government would have to argue that it endorses each of the more than two million trademarks it has already registered.

The decision is likely to help the Washington Redskins, who lost their trademark protections in 2014 after years of complaints from Native American groups. At the time, this page supported the Trademark Office’s decision, and we still regard the Redskins name as offensive. Based on this case, however, we’ve since reconsidered our underlying position."

The Supreme Court gives the country some necessary guidance on free speech; Washington Post, June 19, 2017

Editorial Board, Washington Post; The Supreme Court gives the country some necessary guidance on free speech

"THE UNITED STATES is engaged just now in a freewheeling debate about — freewheeling debate. Or, to put it more precisely, about how freewheeling debate should normally be. The struggle is being waged across various battlegrounds — college campuses, social media, New York theater, even the air-conditioned offices in which federal employees decide whether to protect trademarks, such as that of Washington’s National Football League franchise.

Now comes the Supreme Court with a strong statement in favor of free speech, to include speech that many find offensive. With the support of all eight justices who participated in the case (new Justice Neil M. Gorsuch being the exception), the court struck down a 71-year-old law requiring the Patent and Trademark Office to deny registration to brands that may “disparage” people or bring them “into contemp[t] or disrepute.” The ruling means that a dance-rock band may henceforth call itself “the Slants” on the same legal basis that, say, Mick Jagger’s bunch uses “the Rolling Stones” — even though many Asian Americans find the term derogatory and demeaning...

As the court’s decision reminds us, constitutional and decent are not the same thing."

The Slants Win Supreme Court Battle Over Band's Name In Trademark Dispute; NPR, June 19, 2017

Bill Chappell, NPR; The Slants Win Supreme Court Battle Over Band's Name In Trademark Dispute

[Kip Currier: A big 8-0 U.S. Supreme Court decision for Asian American rock band The Slants today. I met The Slants at an April 27, 2017 event, hosted by Duquesne University's School of Law and Mary Pappert School of Music, discussing conflicting aspects of U.S. trademark law (specifically, the Lanham Act's provision addressing "disparaging trademarks") and the 1st Amendment and freedom of expression. Some photos I took at that event:]

"Members of the Asian-American rock band The Slants have the right to call themselves by a disparaging name, the Supreme Court says, in a ruling that could have broad impact on how the First Amendment is applied in other trademark cases."

April 27, 2017 Panel: A Name Worth Fighting For? The Slants, Trademark Law, and Free Expression; Duquesne University, Pittsburgh, Pennsylvania

[Kip Currier: Looking forward to attending this panel--addressing very interesting IP and free speech issues--and hearing the band play afterwards]

A Name Worth Fighting For? The Slants, Trademark Law, and Free Expression

Event Date: 

Thursday, April 27, 2017 - 4:30pm to 7:00pm

Event Location:

• Union Africa Room (3rd Fl.)

Event Audience:

• Alumni
• Current Students
• General Public

Cost: 

$60.00 
$60 or $50 for CLE Program, Reception, and Music

Continuing Legal Education

A Name Worth Fighting For? The Slants, Trademark Law, and Free Expression 

Join Duquesne Law, the Pittsburgh Intellectual Property Association, and the Federal Bar Association’s Pittsburgh chapter for a special program about the rock band that is the subject of a current U.S. Supreme Court case. 

The continuing legal education (CLE) course focuses The Slants, an Asian-American musical group whose trademark application was denied for its use of a term deemed derogatory, and the case Lee v. Tam. 

The program features Simon Tam, the band’s founder and bassist, Hon. Cathy Bissoon of U.S. District Court, Western District of Pennsylvania, and Christine Haight Farley, a law professor from American University. Associate Dean Jacob H Rooksby, an intellectual property professor at Duquesne, will moderate a discussion about trademark law, including whether the band’s choice to claim the name should be protected by the First Amendment.

The CLE will review Section 2(a) of the Lanham Act of 1946, which the U.S. Patent and Trademark Office used to deny the band’s trademark application; the U.S. Court of Appeals for the Federal Circuit’s decision reversing the trademark office’s determination; and freedom of expression issues. 

The U.S. Supreme Court heard oral argument on Lee v. Tam in January. The ongoing legal battle has been covered by the New York Times, NPR, and other media outlets. This CLE will offer insight into the fight by the band’s founder as well as an opportunity to hear the group’s music. A 45-minute concert and light reception will follow the CLE program.

4:30 p.m. – 6 p.m. CLE

6:15 p.m. – 7 p.m. Concert 

U.S. Supreme Court justices fret over offensive trademarks; Reuters, 1/18/17

Andrew Chung, Reuters; 

U.S. Supreme Court justices fret over offensive trademarks

"The justices during the arguments seemed to agree with the band that the government was favoring some trademarks while disapproving others, a kind of discrimination based on viewpoint traditionally forbidden by the First Amendment of the U.S. Constitution, which guarantees free speech.

But the justices appeared to struggle over whether banning offensive slurs is reasonable in the trademark system, which is used to promote commerce.

Conservative Justice Anthony Kennedy asked the band's attorney, John Connell, whether a group of non-Asians using the name The Slants to mock Asians could be denied a trademark. Connell said they could not.

Kennedy questioned whether the trademark system should be considered like a public park "where you can say anything you want.

In rejecting The Slants' trademark, government officials relied on a provision of the 1946 Lanham Act that prevents the registration of marks that may disparage certain people."

U.S. top court refuses to hear Redskins trademark appeal; Reuters, 10/3/16

Lawrence Hurley, Reuters; U.S. top court refuses to hear Redskins trademark appeal:

"The U.S. Supreme Court on Monday declined to hear an appeal by the Washington Redskins challenging a federal agency's decision to cancel the National Football League team's trademarks after finding the name disparaging to Native Americans.

While the justices refused to hear the team's appeal, the issues it raises are part of another case that the court last week agreed to hear involving the Oregon-based Asian-American rock band The Slants whose bid for trademark protection of its name was denied by the U.S. Patent and Trademark Office.

Both the band and the team have argued that a 1946 federal law barring trademarks on racial slurs violates free speech rights under the U.S. Constitution's First Amendment.

The Supreme Court opted not to hear the Redskins' appeal of a federal judge's ruling in July 2015 that upheld the Patent and Trademark Office's 2014 decision to cancel six trademarks held by the team and provided another victory for Native American activists pressing the franchise to change its name."

Warning: This article on trademarks may include language deemed ‘scandalous, immoral or disparaging’; Washington Post, 9/30/16

Fred Barbash, Washington Post; Warning: This article on trademarks may include language deemed ‘scandalous, immoral or disparaging’ :

"It is a law called the Lanham Act that gives the federal government the power to refuse to register or to cancel trademarks deemed scandalous, immoral or disparaging — let’s call it SIOD for short.

On the basis of that law, the United States Patent and Trademark Office, for example, determined that Redskins, as in Washington Redskins, was SIOD and canceled its trademark...

The primary purpose of the 1905 Trade Mark Act, later reenacted as the Lanham Act in 1946, is twofold, as Carpenter and Murphy wrote in their law review article, “including lessening of consumer search costs and encouraging producers of goods and services ‘to invest in quality by ensuring that they, and not their competitors, reap the reputation-related rewards of that investment,’ thereby protecting consumers from deceptive practices.”...

What is SIOD?

“It is always going to be just a matter of the personal opinion of the individual parties as to whether they think it is disparaging,” said the PTO’s assistant commissioner in 1939, as he explained his own discomfort."

Supreme Court Takes Up Case That Could Affect Redskins Trademark; NPR, 9/29/16

Eyder Peralta, NPR; Supreme Court Takes Up Case That Could Affect Redskins Trademark:

"The Supreme Court has decided to hear a case that might decide whether the government can deny Washington's NFL team a trademark because it has deemed the team name is offensive.

The court granted certiorari on Lee V. Tam. If you remember, The Slants, an Asian-American rock band, sued the U.S. Patent and Trademark Office because it refused to trademark their name saying it proved offensive.

In December of last year, the Court of Appeals for the Federal Circuit decided that the band's name was private speech and therefore protected by the First Amendment."

Government Can't Deny Trademarks Over Offensive Names, Appeals Court Rules; NPR, 12/23/15

Eyder Peralta, NPR; Government Can't Deny Trademarks Over Offensive Names, Appeals Court Rules:

"The court ruled that their name — The Slants — is private speech and therefore protected by the First Amendment. The government, the court writes, has no business trying to regulate it by denying the band a trademark.

At issue in the case was Section 2(a) of the Lanham Act, which allows the U.S. Patent and Trademark Office (PTO) to deny or cancel a trademark if it is "disparaging" of persons, institutions or national symbols.

In a 10-2 decision, the court decided parts of that section were unconstitutional. Conferring a trademark, the court argues, does not make the band's name government speech.

Here's the comparison the majority uses: "The PTO's processing of trademark registrations no more transforms private speech into government speech than when the government issues permits for street parades, copyright registration certificates, or, for that matter, grants medical, hunting, fishing, or drivers licenses, or records property titles, birth certificates, or articles of incorporation.""

Why It's So Hard to Get the Law to Protect a Good Joke (Guest Column); Hollywood Reporter, 6/8/14

James J.S. Holmes and Kanika D. Corley, Hollywood Reporter; Why It's So Hard to Get the Law to Protect a Good Joke (Guest Column) :

"Comedians work hard to refine their craft, which often results in the creation of an intangible asset — a signature style of comedy. Such assets are deserving of intellectual property rights protection — but which one(s)?

Under the Copyright Act, protection extends to original works of authorship fixed in any tangible medium of expression, now known or later developed. It follows that artistic content in tangible form, such as a comic's written jokes performed to an audience (or recorded), is entitled to protection. Taken to its logical conclusion, if comedic works are copyrightable, then those who engage in "joke thievery" should find themselves subject to suit for copyright infringement, thereby entitling the complainant to the Copyright Act's statutory damages and attorneys' fees.

Not so fast! A thorough review of the tenets of the Copyright Act when viewed in the context of professional comedians raises a problem."