McDonald’s Loses Its “Big Mac” Trademark Across Europe

On January 11, 2019, in a landmark ruling, the European Union Intellectual Property Office (EUIPO) revoked McDonald’s International Property Company, Ltd., (McDonald’s) European Union trademark registration No 62 638 for the trademark “BIG MAC.” Citing as the reason for the revocation, the EUIPO pointed to McDonald’s failure to prove that it had used the “BIG MAC” trademark in the European Union for a continuous period of five years.

Trademark rights are not like patent rights or copyrights. Patent and copyright owners can obtain those rights without ever selling a single item, and maintain those rights even if the owners never put those rights to use. Conversely, to obtain and maintain trademark rights, the trademark owner must actually use the trademark in association with the sale of goods or services. Failure to continuously use a trademark will result in those trademark rights being lost.

So what happened in this case? McDonald’s did register a European Union trademark (EUTM) (formerly Community Trade Mark (CTM)) for the “BIG MAC” trademark on December 12, 1998. Thereafter, an Irish company, Supermac’s (Holdings) Ltd, (Supermacs) began using the “SUPERMACS” trademark in association with its restaurants. McDonalds then took issue with this use, arguing that the use of “SUPERMACS” in association with restaurants infringed its “BIG MAC” trademark. Supermacs fought McDonald’s over the use and eventually prevailed. Thereafter, Supermacs went a step further and applied to have McDonald’s “BIG MAC” trademark revoked. Supermacs filed the revocation request on April 11, 2017.

In response to the trademark revocation application, McDonald’s provided affidavits, brochures, website printouts, and a even a printout from Wikipedia. While the EUIPO gave some weight to this evidence, the EUIPO concluded that “[t]aking into account the submitted evidence as a whole, it is concluded that the documents do not provide conclusive information that the products marked with the EUTM are offered for actual sale, as there is no confirmation of any commercial transactions, either online, or via brick-and-mortar operations.”

In defending its revocation, the EUIPO pointed to McDonald’s failure to provide sufficient evidence of continuous use of the “BIG MAC” trademark. “The methods and means of proving genuine use of a mark are unlimited. The finding that genuine use has not been proven in the present case is due not to an excessively high standard of proof, but to the fact that [McDonald’s] chose to restrict the evidence submitted.”

McDonald’s has two months from the date of the revocation to file an appeal.

Brett Trout

Posted in General.

By Brett Trout

January 16, 2019

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1 Million Cups Des Moines – Thaddeus Medical Systems

Come join like-minded Des Moines, Iowa area entrepreneurs at the 1 Million Cups events tomorrow. January 16, 2019. at 8a.m. at the Science Center of Iowa (which also graciously provides a ticket for free parking in the Science Center Parking Ramp during the event).

Share some free coffee with local startup community members and then take part in a presentation by Thaddeus Medical Systems as they detail their road to creating their smart packaging technology solution for storing and transporting temperature sensitive therapeutics and specimens. After the talk feel free to ask questions and share insight about the company’s journey from idea to realization.

I’ll be there, so be sure to say “Hi” and introduce yourself if you plan to stop by.

Brett Trout

Posted in Des Moines, Iowa Law.

By Brett Trout

January 15, 2019

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Jury Verdict Stripping Mongols Motorcycle Club of Its Trademarks Raises More Questions Than It Answers

Background

The Mongols Nation Motorcycle Club is an outlaw biker club formed in Montebello, California in 1969. The Club is estimated to have up to 1,500 “full patched” members in fourteen states and ten countries, including former member and former Minnesota governor Jesse Venturea. The Bureau of Alcohol Tobacco and Firearms (BATF) has infiltrated the club multiple times, resulting in many arrests and convictions of various club members for various crimes.

In addition to trying to imprison its members, the BATF and Department of Justice (DOJ) have engaged in lengthy legal battles to strip the Club of its trademark rights in the “Mongols Nation” name and logo. Since 2008 prosecutors have tried over and over again, in various courts, to obtain forfeiture of the trademarks. The trademarks at issue include the words “Mongols Nation” and the logo at the right showing a Genghis Khan-type caricature riding a cruiser.

The Club originally registered the “Mongols Nation” service mark in 2005 and filed a federal trademark on the collective membership logo in 2013. The registration was cancelled in 2012 and the application abandoned in 2014. New registrations covering the service mark and the collective membership logo were filed and registrations obtained in 2013 and 2015 respectively.

Courts have attempted to strip the Club of its trademark rights in the past. In 2008, Judge Florence-Marie Cooper, of Federal District Court in Los Angeles, granted an injunction prohibiting gang members and their associates from wearing the logo and authorizing law enforcement seizure of “products, clothing, vehicles, motorcycles, books, posters, merchandise, stationery, or other materials bearing the Mongols trademark.” In 2009, a Mongols Nation member, Ramon Rivera, along with the help of the American Civil Liberties Union, filed a lawsuit, demanding law enforcement not be allowed to confiscate his property. Mr. Rivera eventually prevailed, the judge’s ruling was overturned, and the court awarded Mr. Rivera $252,466 in lawyers’ fees.

The Verdict

Since 2009, the rights in the trademarks have been transferred multiple times, avoiding confiscation when it appeared whomever the then-current owner was might run into a situation requiring forfeiture of the trademark rights. On December 14, 2018 a federal Santa Ana jury found the Club guilty of the charges of conspiracy and racketeering. On January 11, 2019, that same jury that found the Mongols Nation Motorcycle Club guilty of conspiracy and racketeering charges, handing down a verdict that the Mongol Nation has to forfeit its trademark rights to the federal government. Unfortunately, neither the redacted jury notes, nor the redacted verdict form provide much insight as to the basis of the jury’s verdict.

The Aftermath

Just what the jury’s decision means for the future of the trademark rights in “Mongols Nation” and the Genghis Khan logo remains unclear. Even prosecutors are surprisingly mum about what might happen next. It was the intention of some members of law enforcement that the ruling would allow them to stop anyone wearing the trademarks and confiscate all items bearing the trademarks. This does not appear to be what is going to happen, especially since some members of the Club have the trademarks tattooed on their bodies. Confiscation, especially in those cases, could prove difficult.

To anyone with a background in trademark law, this verdict should raise a lot of questions. Most importantly, what statute or common law allows a jury to take trademark rights away from an entity and give them to the federal government? Also, does this verdict force the federal government to start using the trademarks to prevent their abandonment? This verdict seems to be the first of its kind where a jury tried to permanently deprive one particular entity from ever obtaining trademark rights in a name or logo. While the verdict may be well-intentioned, it does not appear to be supported by existing law.

The main problem with the verdict is that trademark rights are not like most other property rights. Unlike other property rights, trademark rights do not exist in the abstract. One cannot simply acquire trademark rights, lock them away in a box for twenty years, and then sell them. Trademark rights are harder to maintain than even other intellectual property rights. Unlike patents and copyrights, trademark rights exist only in association with a good or service being offered for sale in commerce, or to identify members in an organization. If a trademarks, such as those owned by the Mongols Nation, are forfeited to the federal government, and the federal government has no intention of offering any goods or service under the trademarks, and intends that the trademarks specifically not be used to identify members of an organization, those trademark rights will go abandoned.

Once the trademark rights go abandoned (ignoring for the moment that the logo might still be protected by copyright) anyone can use them. For these particular trademarks however, it seems unlikely that anyone would be willing to risk physical assault for wearing the former trademarks of a 1%er motorcycle club. Once the trademarks go abandoned, if no one is using them to sell a good or a service, or to identify members of an association, it seems that, pursuant to federal trademark law, someone, perhaps a member of the Mongols Nation can start using the words again in association with a good or a service, or as a membership identifier, thereby obtain trademark rights in the words, and then register them with the federal government again.

About the only thing that does seem clear is that the First Amendment stops the government from preventing anyone from ever using the logo or the words “Mongols Nation” to identify a group of people. It will be interesting to see how this case develops. If someone does start using the Mongols Nation trademark or the logo, since this would not violate any criminal statute, it appears the government would have to fight that fight in civil, rather than criminal, court. That means the federal government would again subject itself to the possibility of having to pay the defendant’s attorneys’ fees if the court finds the case to be “exceptional.” Far from bringing this case to a decades-old conclusion, this recent jury verdict seems like just the beginning of a very long trademark fight with a very persistent group of bikers.

Brett Trout

Posted in General, Trademark Law.

By Brett Trout

January 14, 2019

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The Patent Office Offers Some Guidance on Patent Subject Matter Eligibility

The 2019 Guidance

The United States Patent and Trademark Office (USPTO) has just issued its 2019 Revised Patent Subject Matter Eligibility Guidance for use by USPTO personnel, which took effect January 7, 2019. The Guidance changes the procedures patent examiners use to determine under Alice/Mayo whether a patent claim directed to a judicial exception to patentability i.e. (laws of nature, natural phenomena, and abstract ideas) is patentable or not. The Guidance outlines a new two-part Step 2A and a new Step 2B process patent examiners must undertake under Alice/Mayo in determining whether a patent claim is unpatentable as a judicial exception to patentability.

Step 1

Step 1 of the Alice/Mayo test, determining if the claim is to a process, machine, manufacture, or composition of matter, remains unchanged.

Step 2A

Step 2A has been revised to be a two-part analysis. First, patent examiners must now reference specifically outlined categories (see below) of subject matter that constitute “abstract ideas.” Second, if a patent examiner determines that a patent claim contains an abstract idea, the patent examiner must now determine if the claim, as a whole, incorporates the judicial exception into a practical application. If the claim does not recite a judicial exception from one of the new categories, or if the claim does recite a judicial exception, but incorporates the judicial exception into a practical application, the claim is not “directed to” a judicial exception. Under newly revised Step 2A, it does not matter if the non-judicial exception elements of the claim are “well-understood, routine, conventional activity.” The only consideration under Step 2A is whether the claim incorporates the judicial exception into a practical application.

Step 2B

Only if the claim does recite a judicial exception from one of the new categories and does not incorporate the judicial exception into a practical application, may a patent examiner proceed to evaluate the patent eligibility of the claim under Step 2B. Step 2B under Alice/Mayo has been revised as well. Under new Step 2B, the examiner may consider whether the non-judicial exception elements of the claim are “well-understood, routine, conventional activity.” If the non-judicial exception element(s) of the claim are unconventional or otherwise more than what is well-understood, routine, conventional activity in the field, the claim is patent eligible. Similarly, if the examiner determines that the element(s) amounts to significantly more than the exception itself the claim is patent eligible.

The New Groupings of Abstract Ideas

The groupings of subject matter under Step 2A that are considered “abstract ideas” are as follows:

(a) Mathematical concepts—mathematical relationships, mathematical formulas or equations, mathematical calculations;
(b) Certain methods of organizing human activity—fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions);
(c) Mental processes—concepts performed in the human mind?(including an observation, evaluation, judgment, opinion).

Except under rare circumstances, that require special approval by the Technology Center Director, if the claims do not recite matter within one of the foregoing categories, patent examiners are not to treat the claims as reciting abstract ideas.

Examples of Integrating a Judicial Exception Into a Practical Application

The following is a non-exclusive list of examples of considerations that indicate an additional element(s) may have integrated a judicial exception into a patentable practical application:

The additional element(s) reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field;

The additional element(s) applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition;

The additional element(s) implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim;

The additional element(s) effects a transformation or reduction of a particular article to a different state or thing; and

The additional element(s) applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.

Examples of Not Integrating a Judicial Exception Into a Practical Application

Some examples in which a judicial exception has not been integrated into a practical application include the following:

The additional element(s) merely recites the words ‘‘apply it’’ (or an equivalent) with the judicial exception, or merely includes instructions to
implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea;

The additional element(s) adds insignificant extra-solution activity to the judicial exception; and

The additional element(s) does no more than generally link the use of a judicial exception to a particular technological environment or field of use.

Only time will tell whether the foregoing will add much-needed consistency to the judicial exception issue, but this Guidance appears to be a step in the right direction.

Posted in Patent Law.

By Brett Trout

January 11, 2019

No comments

Disparaging Trademarks are So 2018. The New Hotness? Scandalous and Immoral Trademarks

Disparaging Trademarks

Back in 2017 the United States Supreme Court ruled that the Section 2(a) of the Lanham Act, barring the federal registration of “disparging” trademarks was an unconstitutional violation of the First Amendment. In that case, an Asian American musician, Simon Tam, attempted to register the trademark “The Slants” for his band. Citing both Section 2(a) of the Lanham Act and Urban Dictionary, the United States Patent and Trademark Office (“USPTO”) refused Mr. Tam’s trademark application on the grounds that the term “may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” Mr. Tam appealed the USPTO decision to the Court of Appeals for the Federal Circuit, which ruled against the USPTO, finding “When the government discriminates against speech because it disapproves of the message conveyed by the speech, it discriminates on the basis of viewpoint.” The Federal Circuit also held that this section of The Lanham Act constituted unconstitutional content-based discrimination.

The Supreme Court’s Ruling

The USPTO then appealed the Federal Circuit decision to the Supreme Court. In Matal v. Tam, 137 S.Ct. 1744 (2017), The Supreme Court unanimously upheld the Federal Circuit opinion, ruling that “The disparagement clause violates the First Amendment’s Free Speech Clause. Contrary to the Government’s contention, trademarks are private, not government speech.” In the opinion, the Supreme Court included the words of Justice Oliver Wendell Holmes “Speech that demeans on the basis of race, ethnicity, gender, religion, age, disability, or any other similar ground is hateful; but the proudest boast of our free speech jurisprudence is that we protect the freedom to express “the thought that we hate.”

Immoral and Scandalous Trademarks

In addition to barring disparaging trademarks, The Lanham Act also bars the federal registration of trademarks that consist of or comprise “immoral, deceptive, or scandalous matter.” In 2011 an intent-to-use trademark application was filed for the trademark “FUCT.” Erik Brunetti had been using the trademark in association with his clothing line since 1990, so he obtained an assignment of the intent-to-use trademark application and amended it to allege use. The USPTO refused the registration, finding it comprised immoral or scandalous mater. In refusing the registration, the examining attorney “reasoned that FUCT is the past tense of the verb ‘fuck,’ a vulgar word, and is therefore scandalous” and unregistrable.

The Trademark Trial and Appeal Board

Mr. Brunetti appealed the USPTO refusal to the Trademark Trial and Appeal Board (“TTAB”) which upheld the examining attorney’s decision. As noted by the Federal Circuit, the TTAB “noted that the word ‘fuct’ is defined by Urban Dictionary as the past tense of the verb ‘fuck’ and pronounced the same as the word ‘fucked,’ and therefore found it is ‘recognized as a slang and literal equivalent of the word ‘fucked,’ with ‘the same vulgar meaning.'” J.A. 6–7 & n.6. Finding the word vulgar, the TTAB upheld the refusal to register the trademark under §2(a) of the Lanham Act.

The Federal Circuit

Mr. Brunetti then appealed the TTAB ruling to the Federal Circuit. The Federal Circuit did not dispute that the trademark was vulgar. Instead, the Federal Circuit determined five things. First, that federal trademark registration is not a government subsidy program, meaning the government has no authority to regulate the content of the speech. Second, that federal trademark registration is not a limited public forum, meaning the government cannot more freely restrict this type of speech. Third, that the prohibition on the federal registration of immoral or scandalous trademarks targets expressive content of speech and any such prohibitions should be subject to strict scrutiny to see if they meet constitutional muster. Fourth, that the Lanham Act’s bar on the federal registration of immoral or scandalous trademarks does not pass even intermediate scrutiny. Fifth, that there is no reasonable definition (even on Urban Dictionary I presume) that would preserve the constitutionality of the Lanham Act’s bar on the federal registration of immoral or scandalous trademarks. In light of those findings, the Federal Circuit reversed the TTAB, and found the Lanham Act’s bar on the federal registration of immoral or scandalous trademark to be unconstitutional.

The Supreme Court

The USPTO appealed the Federal Circuit decision in In re: Brunetti, 877 F.3d 1330 (Fed. Cir. 2017) to the Supreme Court, arguing that Section 2(a) of the Lanham Act does not restrict speech, but merely establishes permissible viewpoint-neutral eligibility requirements for a federal trademark registration. The Supreme Court accepted certiorari on this case and appears prepared to hear arguments and make a ruling in short order (at least short order as the Supreme Court goes). If the Supreme Court’s ruling in In Matal v. Tam is any indication, it appears likely that the Supreme Court will pare down the Lanham Act even further in this case and rule the Lanham Act’s bar on the federal registration of immoral or scandalous trademark is unconstitutional. So gather all of those immoral and scandalous trademarks you have been hoarding and put your trademark attorney on speed dial. 2019 could be your year.

Brett Trout

Posted in Trademark Law.

By Brett Trout

January 11, 2019

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First 1 Million Cups of 2019

If you have not been to a 1 Million Cups event, you are missing out. Des Moines 1 Million Cups events introduce and showcase different individuals involved with the Des Moines entrepreneurial ecosystem. Each week an entrepreneur gives a brief presentation on their latest project, before fielding questions and extracting insight from an audience of other entrepreneurs, professionals, and interested community members.

Des Moines’ 1 Million Cups events are held almost every Wednesday morning at 8a.m. at the Science Center of Iowa (which also kindly provides a ticket for free parking in the Science Center Parking Ramp during the event). The talks usually start between 8:30a.m. and 9a.m., but be sure to get there early to network with like-minded individuals over complimentary coffee.

This week’s presentation is from RackHouse Whiskey Club, a subscription service that curates and ships hard-to-find craft whiskeys to its club members in 40 states. I’ll be there, so be sure to say “Hi” if you stop by.

Brett Trout

Posted in General.

By Brett Trout

January 8, 2019

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Top 5 Legal Issues for Podcasters – Number 1: Copyright Infringement

In this five-part series, we examine each of five potential intellectual property pitfalls podcasters can face and the steps you can take to reduce the likelihood of having one of these issues be the centerpiece of a lawsuit with your podcast’s name on it.

1. Copyright Infringement

Copyright law is probably the most well known and the least well understood intellectual property concept among podcasters, and the most likely to get you sued for infringement. So what is copyright? Copyright is the exclusive right to reproduce or distribute an original work of authorship. There is no requirement that you be the first author of the work in question, or that the work be unique. For instance, if you were rescued from a desert island after 50 years and had with you a story you had written, you could obtain copyright protection for that story, even if the story was a word-for-word version of David Foster Wallace’s 1996 classic Infinite Jest.

While there is no requirement your copyrighted work be unique, there is a requirement that you not simply take someone else’s work and claim it as your own. So even if you created a copyrightable work yourself, if the work you created on your desert island was indeed a word-for-word version of the David Foster Wallace novel, it may be difficult to convince a jury this was simply a case of lawful parallel thinking, rather than a case of unlawful copyright infringement. The point is that unlike patents and trademarks, in the case of copyrights, it is theoretically possible for two people to own a copyright in the exact same work, assuming they can prove they had no access to the other’s work.

So what does a copyright do? Copyright gives the owner of the copyright the following exclusive rights:

The right to reproduce the copyrighted work;
The right to prepare derivative works based on the copyrighted work;
The right to publicly distribute copies of the work;
The right to publicly perform the copyrighted work; and
The right to publicly display the copyrighted work

If someone violates one of more of your exclusive rights in your copyrighted work, they are infringing your copyright. How do you know if something is protected by copyright? Since copyright protection attaches as soon as a work is fixed in a tangible medium, such as when you record your podcast and store it on a computer hard, it is a good rule of thumb to assume that every work created after 1923 is protected by copyright. While registration is not required to obtain copyright protection, registration with the Copyright Office is required before you sue anyone for copyright infringement. You can always register your copyright after someone infringes your work, but if you wait to register, you could diminish the damages you are allowed to collect from the infringer.

To avoid copyright infringement it is important that you obtain permission to use every piece of copyrightable material you use on your podcast. From your logo, to your intro music, to sound bites, to pieces you may read from a text, or play off of YouTube, be sure that you have written permission before you publish any copyrightable work to your podcast. Best practices dictate that for works like your logo and music, that you obtain a legally enforceable assignment or license of copyright of those works, from their authors, before you use them. Simply paying someone to create a logo or piece of music for you is not enough. Paying an author to create a copyrightable work for you gives you only a limited license in that work. The author still owns that work. If you want to own that copyrightable work, you need to obtain a specific written assignment of copyright.

But what about fair use? Although fair use may allow you to use third-party copyrighted works in your podcasts, the rules surrounding fair use are complex and constrained to very limited circumstances. Never rely on fair use to use third-party copyrighted works without getting written approval from your intellectual property attorney before you use third-party works.

If you are found by a judge or jury to have infringed someone else’s copyright, in addition to the court ordering you to stop infringing and pay monetary damages to the copyright owner, the Copyright Statute also allows a court, under certain circumstances, to force you to pay punitive damages and the copyright owner’s attorneys’ fees. In egregious cases, there may even be criminal penalties, including fines and imprisonment. Infringing someone else’s copyright is definitely not a case where it is easier to ask forgiveness than it is to get permission. Always ask for permission first, and always get it in writing. If the copyright owner denies you permission to use the copyrighted work and you still want to use it, contact an intellectual property attorney to see if some type of fair use may apply. In no circumstances however, should you use someone else’s copyrighted material without permission.

Be sure to check out the other posts in this Top 5 Legal Issues for Podcasters series:

Number 2: Trademark Infringement
Number 3: Defamation
Number 4: Rights of Privacy and Publicity
Number 5: Patents

Brett Trout

Posted in Choosing the Best Lawyer, Copyright Law, General, Internet Law.

By Brett Trout

January 7, 2019

3 comments

Top 5 Legal Issues for Podcasters – Number 2: Trademark Infringement

2. Trademark Infringement

A trademark is something that identifies goods or services as coming from a particular source. A trademark can be a word, a logo, a sound, or even a scent. If your podcast has a name, you need to be concerned about whether that name infringes someone else’s trademark rights. Unfortunately, given that trademarks, like copyrights, do not require registration, there is no central repository to determine definitively whether or not the name of your podcast infringes someone else’s trademark. The United States Patent and Trademark Office website contains a definitive list of all federally registered trademarks, but does not include a list of state and common law trademarks.

In the United States, you obtain trademark rights not from filing paperwork, but from actually using the trademark in association with a good or a service. The minute you begin using a trademark (assuming the trademark is not generic or merely descriptive and no one else has superior rights to that trademark), you obtain what are known as “common law” trademark rights. The first person to use the trademark in association with a good or a service in commerce is the “senior” user of the trademark. The senior user has priority over any subsequent, or “junior,” users of that trademark. While common law trademark rights are real and enforceable, they only extend to the actual geographic area into which your trademark has penetrated. It is therefore entirely possible to have two distinct companies, both having valid common law trademark rights to the same trademark in different geographic areas.

One of the many benefits of federal trademark registration is that federal registration extends the owner’s trademark rights to the entire country, regardless of their actual market penetration. However, since a senior user of a trademark has priority over a junior user, even if a junior user obtains a federal trademark registration, a non-registered senior user of the trademark may still have superior trademark rights to the extent of their actual market penetration. As podcasts are rarely geographically restricted however, it is unlikely that the owner of a podcast trademark would not be able to demonstrate use throughout most, if not all, of the country.

It is important to note that not all word are protectable as trademarks. Merely descriptive terms like “red” for apples, or generic terms like “apple” itself are not protectable as trademarks for apples. As a general rule, any words your competition would normally use in its identification or description of its products or services are not protectable as trademarks. Those terms are in public domain and outside the purview of trademark protection. So while “podcasting” may not be protectable as a trademark for podcasting, it may be protectable as a trademark for a board game, or other good or service where podcasting does not have a descriptive or generic connotation. Similarly, while “bananas” would not be a protectable trademark as applied to bananas, it might be protectable as a trademark for podcasting.

Trademarks do not exist in a vacuum. Trademarks only exist in association with their particular goods and/or services. Therefore, if someone has a trademark for “bananas” as used in association with medical syringes, your use of the same exact trademark for your podcast may not infringe the trademark as applied to medical syringes. To figure out whether your use of a particular trademark infringes the rights of another particular trademark owner you must determine the likelihood of confusion. It is not enough to simply change one letter in the trademark, or combine two words into one, you must avoid the likelihood that consumers may assume your podcast is affiliated with the owner of the other trademark. If it is likely that a consumer would be confused by the name of your podcast into thinking that your podcast is affiliated with another business with a similar trademark you may find yourself with a trademark infringement lawsuit on your hands.

To determine is if there is or is not a likelihood of confusion, it is important to examine what are called The Polaroid Factors. The Polaroid Factors act as a guide to help judges and juries determine whether one trademark use infringes another. The Polaroid Factors examine the following eight criteria:

1. the strength of senior mark;
2. the degree of similarity between the two marks;
3. the proximity of the users’ products;
4. the likelihood of the senior user entering the junior user’s market;
5. actual confusion;
6. the junior user’s good faith in adopting its mark;
7. the quality of the junior user’s product; and
8. the sophistication of the buyers.

Determining the extent to which the foregoing factors apply in a particular case can be a daunting task. Moreover, there is no guarantee that every judge and jury will apply the factors in the same way. There is a distinct possibility that one judge or jury could apply the factors differently than another judge or jury and come up with a completely different determination as to whether there has been a trademark infringement or not.

Trademark is a complex area of the law. About the only way to select a non-infringing trademark without going through a trademark lawyer is to pick a long, random alphanumeric string of characters. As long, random alphanumeric strings of characters do not typically roll off the tongue, if you want a memorable trademark for your podcast with a reduced chance of infringing a third-party trademark, it is probably best to go through a trademark lawyer.

A trademark lawyer can conduct a trademark search and give you a legal opinion as to whether the trademark you want for your podcast is likely to infringe anyone else’s trademark rights. While you can search Google and the United States Patent and Trademark Office website for similar trademarks, using these sources to search synonyms and homonyms across different classes of goods and services is difficult and time consuming. Even if you elect to go through a trademark lawyer to obtain a federal trademark registration for your podcast, your registration is still susceptible to attack for the first five years. During that first five years, before your registration is made “incontestable,” it is important to stay alert and bring any accusations of trademark infringement immediately to your trademark attorney.

Be sure to check out the other posts in this Top 5 Legal Issues for Podcasters series:

Number 1: Copyright Infringement
Number 3: Defamation
Number 4: Rights of Privacy and Publicity
Number 5: Patents

Brett Trout

Posted in Internet Law, Podcasting, social media, Trademark Law.

By Brett Trout

January 2, 2019

1 comment

Top 5 Legal Issues for Podcasters – Number 3: Defamation

3. Defamation

Defamation is one of those few areas of law where someone will spend more money suing you than they know they can reasonably expect to collect. Defamation lawsuits are often more about hurt feelings than collecting money. The last thing you, as a podcaster, want to see on the other side of a lawsuit is a deep pocket with even deeper emotions.

Making things even more difficult when your podcast gets sued for defamation is the fact that defamation is defined differently in different states. Although statements on your podcast may be perfectly fine in one state, they may constitute actionable defamation in another. Generally, defamation involves four things: 1) a statement, either written (libel) or spoken (slander) that is; 2) false; 3) published; and 4) harmful to someone’s reputation.

The best way to reduce the odds of seeing your podcast on the receiving end of a defamation lawsuit is to only put things on your podcast that are true. While the truth is an absolute defense to a claim of defamation, as you might imagine, proving the truth in court is easier said than done. Even if what you say is true, that is no guarantee that a vindictive, or emotionally fragile, third-party, workign more on emotion than logic, will not sue you anyway, even if their lawyer has advised them against it. And once you are in a defamation lawsuit, it may be very difficult to get out.

As you may have already gathered, defamation lawsuits are more likely than most other types of lawsuits to be driven by angry people with more money than reason. So unless your podcast is generating a large excess cash flow you want to start redirecting to your intellectual property lawyer, it is important that you consider more than simply the truth and legality of what you include in your podcast. From a staying out of court perspective, it is also important that you also constantly consider the likelihood that what you and your guests say on your podcast might make someone so furious that they sue your podcast for defamation, regardless of whether such a lawsuit has merit or not. When you or your podcast editor notice something in one of your shows that might cause an issue, strongly consider snipping out that entire portion of the podcast before posting it for public consumption.

It is also a good business practice to remind your guests of these issues surrounding defamation before they take to your microphone. Remind them that in addition to sticking to the truth, there is no reason to go out of their way to anger anyone. Let them know that if they ever find themselves on the fence as to whether a statement about someone may get them (and your podcast) sued, discretion is the better part of valor, at least until they have enough extra cash laying around to go halvsies on a new vacation home for your intellectual property lawyer.

Be sure to check out the other posts in this Top 5 Legal Issues for Podcasters series:

Number 1: Copyright Infringement
Number 2: Trademark Infringement
Number 4: Rights of Privacy and Publicity
Number 5: Patents

Posted in Internet Law, Podcasting, social media.

By Brett Trout

December 26, 2018

1 comment

Top 5 Legal Issues for Podcasters – Number 4: Rights of Privacy and Publicity

4. Right of Publicity and Right of Privacy

The Right of Privacy

In 1928, United States Supreme Court Justice Louis Brandeis noted in his dissent in Olmstead v. United States, 277 U.S. 438 (1928), that the right of privacy is “the right to be let alone,” and is “the most comprehensive of rights and the right most valued by civilized men.” Ninety years later, a majority of the United States Supreme Court affirmatively cited Justice Brandeis’ dissent in defense of the proposition that as “subtler and more far-reaching means of invading privacy… become available to the Government,” the “progress of science” must not erode protections guaranteed American citizens under the Fourth Amendment to the United States Constitution. The Fourth Amendment deals with restricting the government from invading the privacy of American citizens, through eavesdropping, video surveillance, improper searches, etc.

Federal protections of the right of privacy are broader than merely restrictions on the government. Federal law 18 U.S.C. § 2511(2)(d) prohibits anyone from intentionally disclosing, or endeavoring to disclose, to any other person the contents of any wire, oral, or electronic communication intercepted without the parties’ knowledge. Under federal law, it is not illegal to disclose the contents of an intercepted communication, as long as you are one of the parties to whom the communication was delivered. So under federal law, it would not be a violation of the right of privacy to disclose on your podcast the contents of an email if you are a party copied in on that email. It would also not be a violation of this federal law to publish a portion of a podcast conversation recorded before or after the guest believed the recording had started or stopped. It may be unethical to publish such a conversation, and it may violate other laws, and it may dissuade future guests from coming on your podcast, but it is not a violation of 18 U.S.C. § 2511.

While federal law only requires the consent of at least one party to a conversation to allow the conversation to be recorded and published, many states require the consent of all parties. At the time of this writing, thirty-eight (38) states and the District of Columbia have only a “one-party” consent requirement. Eleven states require all parties to the conversation consent before a recording of the conversation can be published. Nevada is kind of odd. While under Nevada law, the consent of only one party is required, Nevada’s Supreme Court has held that the consent of all parties is required.

Avoiding Lawsuits Over the Violation of Someone’s Privacy Rights

The right of privacy is one of those things that evokes deep emotion. If a guest or someone you discuss on your podcast feels you have invaded their right of privacy, they may sue you regardless of the strength of their case. For new podcasters and/or podcasters without the financial resources to defend a lawsuit, it is best to avoid disclosing private information of third-parties without their written consent. If you want to use recordings of guests before or after the official start of the podcast, be sure to obtain the guest’s written acknowledgement before the podcast, preferably in the form of a signed release, and remind them again in person when they arrive, that everything is being recorded and that those recordings may or may not be be edited into the podcast.

The Right of Publicity

The right of publicity is of a much more recent vintage (just the last 100 years or so), than the much, much older right of privacy from which it developed. Unlike the right of privacy, the right of publicity is a person’s right to control the commercial exploitation of their name, image, likeness, etc. The right of publicity often comes into play in situations where a celebrity’s likeness is used to market third-party goods or services without their consent. Unlike the right of privacy, which is protected by the Constitution and specific federal statutes, the right of publicity is a patchwork of state and common law. Without knowing which state law applies to your activities, it is impossible to know which laws relating to the right of publicity apply to your podcast. Even if what you want to do is legal in one state, it may not be legal in another. It is therefor important to check the laws of the applicable state, and have those laws applied to the facts of your proposed actions by a lawyer who has experience dealing with right of publicity cases.

As of this writing, twenty-eight states protect the right of publicity in some form or another. Seventeen states have actual statutes protecting the right of publicity. The remaining eleven states rely on common law, rather than statutes, to protect the right of publicity, which ironically often creates broader protection for the individual’s right of publicity than states with actual statutes. Throughout the country, the duration of the right of publicity varies widely from state to state. The duration can be as short as the life of the individual or as long as commercial exploitation of the persona continues. Although right of publicity laws vary from state to state, several states include some common concepts in their right of publicity laws. The following is a synthesis of various state right of publicity laws that may, or may not, be applicable to your podcast:

While state laws protecting the right of publicity ostensibly protect everyone’s right of publicity, more and more often the right of publicity is being asserted by celebrities interested less in stopping the use of their likeness, and more in promoting the “right” kind of publicity. It is these celebrities who are driving, and will continue to drive, how the right of publicity is, and will be, interpreted by courts far into the future. The key to avoiding getting your podcast embroiled in a lawsuit over violating a celebrity’s right of publicity is to avoid any promotion of your goods or services or the services of your sponsors that is identifiable by the public with a particular individual. If the public identifies such usage on your podcast with a celebrity’s image, avatar, voice, video, or movements, such usage may violate that celebrity’s right of publicity.

The primary defense to a claim that a podcast violates an individual’s right of publicity is that the podcast did not use the likeness in a commercial context. If your podcast does not generate any money, it is easier, in theory, to defend against a claim that you violated someone’s right of publicity. In reality, however, if your podcast is not generating any income, you are less likely to have the financial resources to hire a lawyer and even get to a point where a judge or jury determines whether or not you have violated someone’s right of publicity. Other defenses to claims your podcast violated someone else’s right of publicity include your usage being used for critical commentary, news reporting, social commentary, parody of the individual, etc. These are allowable usages of a person’s likeness that trump their right of publicity. But again, these defenses may be difficult to prove in court. For instance in a podcast about a celebrity’s recent drunken escapades, you would legally be able to use the celebrity’s name and relevant quotes in association with the podcast under a claim that the newsworthiness of the story and the use of the podcast as a media outlet overrides the celebrity’s right of publicity. That does not, however, mean you will not get sued, or that you would have the financial resources to defend the case long enough to get it in front of a judge or jury, or that no jury would ever find you liable for violating the celebrity’s right of publicity.

The typical relief sought in a right of publicity case is an injunction from the court preventing the podcast from continued use of the individual’s name or likeness to commercially promote goods or services without authorization. Additionally, an individual may collect from a podcast the estimated value of an appropriate licensing agreement for the alleged usage, damages for deceptive marketing, and injury to emotion or reputation, which may total seven figures or more. Some states afford greater protection for the right of publicity, while some afford none. As a result, if you get sued by someone for violating their right of publicity, you can expect that they will do everything they can to sue you in a state that affords their right of publicity the maximum amount of protection and affords you the fewest set of potential defenses.

Avoiding Lawsuits Over the Violation of Someone’s Right of Publicity

The right of publicity not only strikes at the heart of a person’s identification, it also strikes at their pocketbook. If someone’s likeness is valuable enough for you to want to use it to promote your podcast’s goods or services, their likeness is probably valuable enough for them to defend in court. Because right of publicity cases are complex, if your podcast gets sued for violating someone’s right of publicity, it is unlikely you will will be able to get a court to determine, with any alacrity, whether you did or did not violate the plaintiff’s right of publicity. This means that unless you are sitting on a pile of cash, there is a good chance you will run out of money before a court even determines whether you were right or wrong. This typically leads to a default judgment, that includes not only an injunction, but a monetary award large enough to shut down your podcast. Discretion is therefore the better part of valor. If you are unsure whether the use of a person’s likeness on your podcast is a violation of their right of publicity, do not use their likeness. As for guests on your podcast, be sure that the release you have them sign includes a release for their right of publicity as it relates to their appearance.

Conclusion

The right of privacy and the right of publicity are ever-changing minefields that can easily land your podcast on the costly end of a lawsuit. What constitutes the right of privacy and the right of publicity today may be different tomorrow. As the use and consumption of social media changes, so do the expectations of the public regarding the protection of their likeness and private information. To avoid third-party lawsuits and ill-will from third-parties, it is important to educate yourself not only as to what the law protects in terms of privacy and publicity, but also as to the reasonable expectations of third-parties. Even if something does not technically violate anyone’s right of privacy or publicity, that will be of little solace if your podcast goes bankrupt halfway through a lawsuit brought against you and your podcast for allegedly violating someone’s right of privacy or right of publicity lawsuit. It is therefore important to keep yourself updated as to not only what you can do in terms of avoiding violating a third-party’s right of privacy or right of publicity, but also what you should do.

Be sure to check out the other posts in this Top 5 Legal Issues for Podcasters series:

Number 1: Copyright Infringement
Number 2: Trademark Infringement
Number 3: Defamation
Number 5: Patents

Posted in Choosing the Best Lawyer, General, Internet Law, Podcasting, social media.

By Brett Trout

December 17, 2018

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