New Online Registration Requirements for Designated Agents Under the Digital Millennium Copyright Act

The U.S. Copyright Office has developed a new electronic system for registering your designated agent under the Digital Millennium Copyright Act (“DMCA”).  As of December 2016, the U.S. Copyright Office has begun transitioning to an online registration system which allows online service providers to register a designated DMCA agent in a centralized public directory.  Any new registrations must be completed through this online system.  Most importantly, even if a service provider has previously registered its designated DMCA agent with the Copyright Office through the previous paper filing system, the service provider must re-register through the Copyright Office’s new online system before December 31, 2017.

Registering and maintaining a designated agent with the Copyright Office for copyright infringement takedown requests is necessary to obtain safe harbor protection under the DMCA.  Safe harbor protection can help shelter online service providers from potential copyright liability for any third party content posted on or transmitted via their websites.  In order to qualify for safe harbor protection under the DMCA, any online service provider that has a website or application which allows users to post, share, transmit, or comment on content must designate a Copyright agent.  To designate an agent, an online service provider must not only provide the contact information for the agent to the Copyright Office as part of its online public directory, but also make the contact information for the agent available to the public on the online service provider’s website so that users can notify the service provider of allegedly infringing material.

On the Copyright Office’s online registration system, online service providers must create an account and provide all necessary information regarding the service provider itself, the designated agent, and the associated websites.  Registration costs $6 per online service provider submission.

While the registration forms seem relatively simple, they raise additional issues that need to be considered carefully.  For example, related companies that are separate legal entities (parents, subsidiaries, etc.) and own related but separate websites must register separately.  An online service provider must also provide all alternate names under which the service provider is doing business, such as any of its associated website names and/or domains, software application names, or any other commonly used name that the public would be likely to use to search for the service provider’s designated agent.  In many cases a website owner can submit multiple websites/alternate names in one submission, but it depends on the specific circumstances.  The DMCA must be strictly complied with in order to receive full safe harbor protection, so it is essential that the registration forms are properly and fully completed.

Once the DMCA agent has been designated through the Copyright Office’s online system, online service providers must ensure that all of the registered information remains up to date.  Any failure to maintain accuracy in this information could result in losing the protection of the DMCA safe harbor provisions.  For example, if an online service provider’s designated agent changes, the service provider must make sure that the agent registration information is updated not only with the Copyright Office, but also in all places on the service provider’s website where the designated agent is identified.

Online service providers can amend their registrations at any time for an additional $6 per submission.  Additionally, the Copyright Offices requires online service providers to renew their agent designation at least every 3 years.  To do this, service providers must resubmit their registration before it expires, either with the same information if still accurate or with any updated information.  Renewals are also $6 per submission.  Any amendment filed will begin a new 3-year period before a renewal is due.

All online service providers should carefully review their current DMCA policies and materials and determine whether they may need assistance with drafting online DMCA policies for consumers, establishing and maintaining a designated agent with the Copyright Office, and/or drafting internal policies and procedures on reviewing and addressing DMCA takedown notices.  Online service providers do not want to miss out on compliance with the DMCA’s safe harbor provisions and potentially face copyright infringement liability for user content.  — Rina Van Orden

Secrets to a Successful Privacy Policy

Privacy policies may seem like a snooze, but they can actually be a key tool in protecting your business and communicating with customers.  A privacy policy explains your entity’s views and procedures regarding privacy and provides information about how you will use a website user’s personal information and/or data.  It also details the steps you take to maintain user information securely.

Privacy policies must:

  • Be specifically tailored to your industry, business, and circumstances
  • Have clear and accessible explanations understandable to the average consumer
  • Provide enough information that users have informed consent
  • Be strictly adhered to once published
  • Be updated to reflect any changes

A recent case underlines the importance of a well-crafted privacy policy.  In Carlsen v. GameStop, Inc., the plaintiff brought a lawsuit against GameStop regarding the video game retailer’s information sharing practices.[1]  The appeals court dismissed the plaintiff’s claims and proposed class action because of GameStop’s privacy policy.

The plaintiff subscribed to GameStop’s monthly publication Game Informer magazine, including both print and online versions.  GameStop provides a feature that allows subscribers to log in to the magazine content through their personal Facebook accounts.  The plaintiff filed suit because once he logged in to the magazine through Facebook, his Personal Facebook ID and Game Informer browsing history were transmitted to Facebook.

In order to access the online content of Game Informer, a subscriber must agree to the site’s terms and conditions, which includes GameStop’s privacy policy.  GameStop’s policy stated that “Game Informer does not share personal information with anyone.”

The court held that the transmission of Game Informer subscribers’ Facebook IDs and browsing history did not constitute “personal information” under GameStop’s privacy policy because these items were not included in the explicit list in the privacy policy detailing “personal information” and because the information at issue was not specifically solicited by Game Informer or voluntarily submitted in response to such a solicitation, as specified in the privacy policy.  Because the Facebook IDs and browsing history were not included in the privacy policy as protected personal information, GameStop did not act wrongly in sharing that information, and thus there was no breach of contract.  GamerStop’s clear and well-written policy was key in extricating GameStop from this lawsuit.

Privacy policies have become a common business practice for many websites.  These days, website users are keenly aware of privacy concerns and protective of their personal information.  The prevailing view is that a credible website will operate with at least minimal privacy standards in place.  Privacy policies are especially necessary when you are engaged in e-commerce or data collection.  If your prospective and current clients are likely to have concerns about privacy, then they will expect you to have a policy that details the various protections and procedures that you have in place.

Every website will have different elements to cover, and some websites will need more comprehensive policies than others. This is likely dependent on what kind of user information is collected and how much/to what extent it will be shared with third parties.

Regulated industries, like banking, medical, and others, are required by law to maintain a privacy policy that applies both on and off the internet.  Entities in these industries should address all issues covered under industry regulations in an online privacy policy as well.

We advise against copying a policy from another business, even if that business is similar to yours.  A poorly written or inapplicable policy taken from another website can expose you to liability.  You want to make sure that your privacy policy specifically covers the individual needs of your business.

Often websites will have full terms and conditions with a separate privacy policy integrated into the terms.  A privacy policy needs to be easy to understand even though it is a legal document.  Your policy should be also clearly and prominently displayed on your site and accessible from key pages like the homepage and shopping cart, if not every page.

You want to make sure that as your business or technology evolves (say you launch a related app or pair with a social media platform), your privacy policy is updated to address the same.  Anytime a change to your policy is made, you should provide clear notice to users and in some cases obtain consent from users for material changes.

Privacy policies typically include sections that address:

  • user information that is collected
  • method of collection
  • how that information is shared and/or stored

A policy should address not only the required personal information that a user enters into the website but also any data logged automatically by your website, application, servers, etc.  A privacy policy should also address any use of cookies.

Once you have a policy in place, it is essential that you abide it and make sure that your practices actually match the statements in your policy. Your policy creates a contract with your users. If your policy and practices do not align, you open yourself up to liability, both from lawsuits by users and actions by regulators like the FTC, who scrutinize unfair or deceptive trade practices.

If your website is directed toward children under the age of 13, additional requirements apply to your website under the Children’s Online Privacy Protection Act and should be detailed in your privacy policy.

As demonstrated by the GameStop case, a clear privacy policy drafted to meet your needs and circumstances can not only provide your users with a transparent explanation of your privacy practices, but also protect your entity from liability. — Rina Van Orden

[1] 833 F.3d 903 (8th Cir. 2016).

Using New Domain Extensions to Your Brand’s Advantage

Registrations for new generic Top Level Domains (“gTLDs”) have topped 13 million.  As the use of new domain extensions becomes more prevalent, questions commonly arise about how search engines treat them and how large brands and marketing companies are using them.  Some misconceptions about the power of a new domain extension to improve SEO and ranking in search engine results have developed, but new domain extensions can be put to valuable use.

In a frequently re-posted blog post, Google has detailed how it handles new domain extensions. The search engine treats “new gTLDs like other gTLDs (like .com & .org)” and has no current plans to change its algorithm in order to favor new domain extensions.  The good news is that Google will return search results with new domain extensions just as readily as .com, .net, etc.  Google looks at new domain extensions more like additional options, and thus, an entity should register whatever domains fit its own specific long-term needs.  Over time, the algorithm will begin to recognize shifts in gTLDs, as it has previously.  For example, .co was once the country code for Colombia. Now .co is commonly used around the world to signify company or commerce and thus Google’s algorithm has evolved to no longer treat .co as specific to Colombia.  Even though Google’s algorithm does not explicitly favor anything to the right of the dot, use of a new domain extension can help increase reliability for your site and those searching for it, send a specific message to consumers, and develop your brand’s web presence.

More Names to Go Around

For the most part, the release of the new domain extensions has not resulted in a “land grab” targeting companies with well-known domains, perhaps simply because there are too many possible domain names.  It’s impractical for cybersquatters to buy and lock up all possible similar domains with the intent of selling them later.  This means that an entity looking for its name has a much higher probability of finding an available option using a new domain extension.

New domain extensions may be most appealing where the .com of the brand’s company name or acronym is already taken or the brand’s name is a common word with multiple meanings. One article cites ‘Lily,’ the world’s first self-flying camera drone, as a prime example.[1]  When the drone was created, Lily.com had already been registered by Lily Transportation Corp. Plus, the term ‘Lily’ has numerous meanings, including as a first name, the flower, or even a town. That’s why the robotics team responsible for Lily opted to secure lily.camera — both to differentiate its domain name from others and to provide a clear message of what the site is all about.

If you plan on communicating with your customers primarily through an app interface and your desired .com is already taken, selecting a relevant domain using a new domain extension can be just as effective.  For example, social networking app Whisper could not get its corresponding .com, so instead uses Whisper.sh. Even without the .com, a simple Google search for Whisper ranks it at the top of the results.

ccTLDs & Local Geo-Targeting

Notably, one type of domain extension that may have some effect on search results is country-code top level domains (ccTLDs) because they are used in geo-targeting. Google uses most ccTLDs to geo-target the website because the website is probably more relevant in the appropriate country.  For small businesses concerned with generating a more local reach, taking advantage of local domain extensions may be very valuable.  A ccTLDs shows search engines and users where the website originates, and this will likely have an effect on search rankings.  Thus, if all else is equal, the website travel.nz will most likely rank higher in the search engine results for a user in New Zealand than travel.com or travel.us. Notably, new domain extensions have been created for cities like Las Vegas, New York, Boston, and Miami (as well as cities abroad like London, Paris, Istanbul, Tokyo, and Sydney). Though the city extensions are currently treated as gTLDs, these kinds of domain extensions may become the best way to target local consumers in the future if they also become geo-targeted, especially in the U.S., where the .us extension has not caught on.

If you are looking into country code or city domain extensions, you need to research the meaning of the domain extension that you think applies. For example, .ca is commonly mistaken as meaning California, but it is actually the country code for Canada. Thus, if a California company purchases a .ca domain with the mistaken belief that it represents California, it may be a wasted investment because Google will not geo-target the website correctly.  Another example is .de which signifies Germany, not Delaware.

Familiarity & Reliability

Trustworthiness is a key factor in search engine optimization (SEO). So in the future, once the majority of the websites using the extensions .architect or .accountant are in fact members of those professions, those domain names will become a signal to consumers that those domain extensions can be trusted, similar to the familiarity with and trust of .org and .edu. The same goes for custom brand name domains. If .HBO becomes the primary domain extension for the premium cable channel, then consumers will know that any .HBO site is put forth by .HBO, thus increasing its trustworthiness. To demonstrate this point, a number of highly-regulated domain extensions already exist.  If you want a domain that uses .bank, .dentist, or .law, for example, you must provide authorizations, licenses, and/or other necessary credentials required to be part of that industry or sector when registering that domain. Thus, a website using .law must have been registered by a licensed attorney.

Some commentators still believe that the .com is the “Holy Grail” for a company’s domain in the U.S., primarily because non-savvy Internet users know and trust .com as a website extension.  For many, .com adds legitimacy to sites, while an unknown or not readily recognized domain may raise concerns about spam, malware, viruses, privacy, identity theft, etc.  Consumers don’t inherently trust sites with unusual TLDs more than ones with more recognizable endings.  As an example, one study asked users if, based solely on the domain name, they were more likely to trust an insurance quote from a website ending in .insurance. 62 percent of Americans, 53 percent of Australians, and 67 percent of marketers said they were unlikely to trust the quote based on the domain alone.[2]  But as use of the new domain names spreads, users will become more comfortable with them.

New domain extensions may also cause concern where they indicate the website itself is new. While for some sites appearing less established can be a disadvantage, perception likely depends on the extension itself.  For example, extensions like .name, .rocks, and .cc have received bad press as being commonly used for spam.  But other new extensions have earned credibility with particular industries and types of entities and consumers.  For example, .io has gained a lot of traction for websites about computing and technology startups.[3]  In general, steer away from very generic new extensions such as .website, .company, and .country, and instead select something specific that directly relates to your brand.

Brand Management

Signals to ConsumersIn many cases, the new domain extensions can tell consumers what your site is about before they even click on it.  For example, a website that uses .pizza is probably all about pizza, and the .pizza will signal to consumers who are looking for where to order their next delicious pie that your site focuses on pizza before they even click on your link in the search results. Even celebrities are taking advantage of the new domain extensions for their causes and brands. Lady Gaga has registered bornthisway.foundation and Oprah has wherearetheynow.buzz.

The new domain extensions also allow companies with lengthy .com domain names to obtain a shortened version using a different gTLD.  Short domains can be useful for clients, marketing, and for platforms like Twitter.

Securing .[BRAND]Large companies that secure their names as a domain extension (e.g., .mcdonalds, .nike, .cocacola) can use them to create extremely targeted and specific websites for different consumer experiences, based on what the consumer is seeking.  For example, the National Football League can establish domains for specific teams, cities, or events using .NFL.  Macy’s could tailor specific pages to certain interests, such as Home.Macys, Shoes.Macys, or WeddingRegistry.Macys.  Securing a brand domain extension will also allow companies to determine if users are searching for a domain that does not yet exist and signal them to create one.  For example, if Disney has Shop.Disney and Movies.Disney but discovers that users are searching for Frozen.Disney and that page has not yet been developed, Disney can determine whether to create such a page in order to capture those users’ interest.

Brand domain extensions will also likely have the ability to offer greater security that is controlled by the company itself.  As one commentator stated, “[f]or financial institutions, insurance companies and pharmaceuticals, this will have great value if it’s executed properly. For everyone else, it offers something more to consumers in a security-conscious society.”[4]

URL Shorteners — URL shorteners are commonly used for branding purposes in social media. However, these shorteners are typically owned by another brand.  One of the most well-known and well-trusted is bit.ly.  But consider instead creating a consistent brand message by instead using a custom URL shortener through the new domain extensions.  A commonly used extension as a shortenter is .link. So, instead of employing an unbranded bit.ly link, HBO could use got.link for posts about Game of Thrones. For brand builders, these custom URL shorteners offer an inexpensive solution for maintaining brand consistency. Both generic extensions like .help and .link and targeted extensions like .food and .style can help brands specifically target the audience they are looking for.

Careful consideration and planning when deciding on new domain extensions to invest in can set you up for online marketing success. As the frontier of Internet marketing continues to develop, new domain extensions are likely to become an ever-more-present force tapped to spread a brand’s message. So make sure you settle on the right one(s) for your brand and keep an eye out for new possibilities in the future. — Rina Van Orden

 

[1] http://thenextweb.com/entrepreneur/2015/06/14/how-to-name-your-startup/.

[2] http://www.inc.com/peter-roesler/will-new-top-level-domains-matter-in-2015.html.

[3] https://iwantmyname.com/blog/2015/06/how-to-pick-the-right-domain-extension.html.

[4] https://searchenginewatch.com/sew/opinion/2429047/5-things-your-cmo-should-know-about-generic-top-level-domains-and-dot-brands.

Trademark: A Rose By Any Other Name…

As published in the April 2016 issue of Virginia Lawyer.

It’s not often that trademark law faces a direct conflict with constitutional law. Yet recent cases have turned a bright spotlight on the tension between federal registration of disparaging marks and the First Amendment.

The Lanham Act provides for federal registration of trademarks that identify the source of goods or services. Trademark examiners at the United States Patent and Trademark Office (USPTO) review trademark applications and determine whether a mark is registrable. Section 2(a) of the act prohibits registration of immoral, scandalous, or disparaging marks. The disparagement provision states that a mark can be refused registration or cancelled if it may disparage “persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute.”[1]

Uneven application of the disparagement provision has been particularly problematic. For example, the USPTO allowed the mark “The Devil Is A Democrat” to register, but rejected “Have You Heard That Satan Is A Republican” as disparaging. “F*A*G Fabulous And Gay” was permitted to register, while “FAG Forever A Genius!” and “Marriage Is For Fags” were denied as disparaging. Other marks deemed disparaging include “The Christian Prostitute,” “Heeb,” “Amishhomo,” “Ride Hard Retard,” and “2 Dyke Minimum.” Compare these to the registered marks “Off-White Trash,” “Celebretards,” and “Dykes On Bikes.”

Though cancellation of the Washington Redskins’ trademarks may have dominated the discussion of disparaging trademarks among Virginians, recent major strides for deeming Section 2(a) of the Lanham Act unconstitutional have come from a groundbreaking case in the US Court of Appeals for the Federal Circuit involving the trademark “The Slants.”[2] After an arduous process, the Asian-American rock band The Slants succeeded in defeating the disparagement provision so the band can register its trademark.[3]

Initially, the USPTO rejected “The Slants” because the name was “offensive to people of Asian descent” and therefore disparaging under Section 2(a). The 2010 application included a specimen showing use of the mark that referenced Asian themes and culture, potentially adding to the trademark examiner’s impression of possible disparagement. The band abandoned the original application after receiving an initial rejection on this basis and refiled for the trademark using different specimens that did not reference the band members’ Asian descent. The application was once again denied under the disparagement provision.

Trademark registration provides important legal rights including presumptions of ownership and validity, nationwide constructive notice, and the ability to obtain US Customs assistance in combatting infringing or counterfeit imports, among others. Although a disparagement refusal does not ban use of a mark, the mark holder loses the benefits associated with federal registration and may therefore be discouraged from using such a mark. Throughout In re Tam, the court repeatedly underscored the numerous valuable benefits that federal registration bestows.

When examining potentially disparaging marks, the USPTO examiners consider two factors: (1) The likely meaning of the mark, considering not only dictionary definitions, but also the word in relation to other elements in the mark, the nature of the goods or services, and how the mark is used in the marketplace; and (2) Whether that meaning refers to identifiable persons, institutions, beliefs, or national symbols.[4] Once an examiner makes a prima facie showing under these factors, the applicant must successfully rebut the finding or the examiner will refuse to register the mark.

Disparaging mark refusals were fairly uncommon until the last several decades.[5] Notably, examiners who determine that a mark is disparaging do not have to consult a supervisor or take steps to ensure consistent application, as is required for marks deemed immoral or scandalous.[6]  Thus, one single examiner can determine the fate of an ostensibly disparaging mark. The potential for arbitrary application clearly exists.

In The Slants’ case, the examining attorney stated that the term “has long been a derogatory term directed towards those of Asian descent.”[7] The refusal also pointed out that an applicant’s intent to disparage the referenced group is not required. Thus, it is irrelevant that the band is attempting to “take the term back” and transform it into something positive.

On April 20, 2015, the appeals court upheld the denial of registration, following the precedent of In re McGinley.[8] McGinley permitted refusal of disparaging marks because the denial of federal registration does not prevent someone from using the mark. Thus, the court held that the First Amendment is not violated because “no conduct is proscribed, and no tangible form of expression is suppressed.” The court failed to cite legal authority for its rationale.

A persuasive dissent by Circuit Judge Kimberly Ann Moore questioned McGinley’s precedent and whether refusal of disparaging trademarks does in fact violate the First Amendment. Subsequently and apparently persuaded by Judge Moore, the US Court of Appeals for the Federal Circuit (CAFC) issued a sua sponte order vacating its own April opinion. On December 22, 2015, the court held in a 9-3 decision that precluding disparaging trademarks from federal registration violates the First Amendment.[9] Emphasizing that “the First Amendment protects even hurtful speech,” the court laid out its findings as detailed below, stating that, “Whatever our personal feelings about the mark at issue here, or other disparaging marks, the First Amendment forbids government regulators to deny registration because they find the speech likely to offend others.”[10]

Trademarks have an expressive character that is precisely what the First Amendment protects. The CAFC explained that the ban on marks that may disparage is based on the expressive nature of the mark. Government regulations that ban or burden private speech based on viewpoint discrimination are subject to strict scrutiny. The court noted that the basis for refusal of a disparaging mark “is always [the] mark’s expressive character, not its ability to serve as a source identifier,” and thus the disparagement provision does not govern commercial speech.[11] The disparagement provision not only regulates private speech based on the nature of a trademark’s message, but also discriminates based on the viewpoint of that message. To demonstrate the facial discrimination of the provision, the court cited previously registered marks that refer to particular groups in positive or neutral ways: “Celebrasians,” “Asian Efficiency,” “New Muslim Cool,” “Jewishstar,” and even “NAACP.” Moreover, marks that may seem disparaging can be registered if the applicant can show that the referenced group perceives the term in a positive way. For example, “Dykes On Bikes” registered after the applicant provided evidence that the relevant population uses the term with pride. The court held that such viewpoint discrimination based on the expressive aspect of a trademark is not permissible under the First Amendment. Furthermore, in light of the application of strict scrutiny, the court found that the government does not have a sufficiently “compelling interest in fostering racial tolerance.”[12]

Rather than harkening back to the misguided approach applied in McGinley — that refusal of a disparaging mark does not prohibit any speech — the CAFC highlighted the significant chilling effect that the disparagement provision has on private speech. Laws that burden speech, even indirectly, are just as problematic as laws that censor outright. Emphasizing the value of federal registration, the court explained that “[d]enial of these benefits created a serious disincentive to adopt a mark which the government may deem offensive or disparaging.”[13] The court expressed concerns that a disparagement refusal is dependent on the subjective view of a particular group, and that usage or meaning of terms may change over time or in different areas of society. Thus, a mark that has been registered for decades could later be cancelled after substantial investment (e.g., Redskins). Faced with this potentially severe penalty, applicants are unwise to select a mark that may become problematic in the future, contributing to the chilling effect. Most applicants denied registration under the disparagement provision abandon the application and change their name rather than forego federal registration or challenge the rejection.[14]

As support for its right to refuse to register disparaging marks, the USPTO argued that trademark registration (not the trademark itself) constitutes government speech.[15] The court disagreed, finding that trademark registration is merely a regulatory activity that does not transform a trademark into government speech. The court repeatedly pointed out that following the USPTO’s logic, copyrights registered with the federal government would convert the underlying works into government speech. The government could therefore censor copyrighted works that contain immoral, scandalous, or disparaging material — a clearly untenable idea.

In considering the argument that a trademark amounts to government speech, the court distinguished trademarks from the recent Supreme Court decision which found that specialty license plate designs constitute government speech.[16] The Sons of Confederate Veterans sought to sponsor a specialty plate that depicted the Confederate flag, which the Texas DMV denied as offensive.[17] License plates bear the state name, and the state requires and issues license plates, along with controlling their messages, design, and disposal.[18] Thus, the Supreme Court held that license plate designs are government speech, and that prohibiting certain messages is not a violation of a private citizen’s First Amendment rights.[19] While the Supreme Court found that “license plate designs are often closely identified in the public mind with the state,”[20] the court in In re Tam found that trademarks do not convey the same connection. Indeed, the court cited numerous marks which clearly have no government affiliation — religious and drug-related marks, as well as marks like “Capitalism Sucks Donkey Balls,” “Murder 4 Hire,” and “Take Yo Panties Off.” Moreover, the USPTO makes clear that federal registration is not an endorsement of any mark, product, or service. As the court stated, “There is simply no meaningful basis for finding that consumers associate registered private trademarks with the government.”[21]

The CAFC’s opinion was loud and clear. “It is a bedrock principle underlying the First Amendment that the government may not penalize private [nongovernment] speech merely because it disapproves of the message it conveys.”[22] For these reasons, the court found the disparagement provision unconstitutional, in violation of the First Amendment.[23]

The USPTO can appeal the CAFC’s decision to the US Supreme Court within ninety days after issuance. Commentators agree that the Supreme Court would likely consider the case.

Meanwhile, the battle rages on. The Slants band has asked the USPTO to proceed with federal registration of its mark. The USPTO has refused this request, stating in a letter to the band’s attorney that registration will be suspended until either the agency forgoes the appeal or the Supreme Court decides the case, as is consistent with USPTO policy following a federal circuit ruling.[24] Furthermore, the USPTO has stated it will generally suspend consideration of potentially disparaging marks until final resolution of these proceedings.[25] The USPTO has not sought a stay in enforcing the Federal Circuit’s determination that the disparagement provision is unconstitutional — only a thirty-day extension to file a petition of certiorari.[26] In light of the extension request, an appeal by the USPTO seems highly likely and could potentially block the registration of disparaging marks until a Supreme Court ruling. As of March 15, 2016, The Slants filed a petition for a writ of mandamus with the Federal Circuit, calling for an order that would require the USPTO to proceed with registration.[27] The court reacted within hours, ordering that the USPTO respond to the petition within one week and answer The Slants’s accusation that the agency has ignored the court’s ruling.[28]

As football fever slowly amps up again before the NFL draft at the end of April, the Redskins’ lawyers are also gearing up for the Fourth Circuit appeal centered on the cancellation of the team’s marks under the disparagement provision.[29] While The Slants’ case was based on First Amendment arguments for a trademark application, the Redskins’ case is based on both First Amendment[30] and Fifth Amendment arguments fighting the cancellation of six marks.

The Redskins team has been battling cancellation of its marks for a long time.[31] In 2014, the Trademark Trial and Appeal Board (TTAB) found the Redskins’ marks disparaging to Native Americans and canceled the registrations. The Redskins then appealed to a federal court in Virginia, claiming that the marks’ cancellation violated First and Fifth Amendment protections. On July 8, 2015, the district judge upheld the TTAB’s earlier decision, finding the disparagement provision constitutional. The opinion deemed trademark registrations government speech similar to the license plates in Walker, thus exempting them from First Amendment protections. Notably, this decision did not consider the seeming conflict between this interpretation and the problems that parallel application to copyright registration entail.

In November 2015, the Redskins appealed to the Fourth Circuit, which is not bound by the Federal Circuit’s ruling in The Slants’ case. In the meantime, the Redskins can still use the name, and claim extensive common law rights in the trademarks, but the marks no longer have the benefits of federal registration. Final briefs were due mid-March 2016. If the Redskins can make the crucial distinction between its case and Walker, the team may be able to obtain a reversal and resume its federal trademark registration rights.

If the Fourth Circuit’s decision emulates the Federal Circuit’s holding in In re Tam, the USPTO may see a flood of applications for marks that would have once been deemed disparaging. Moreover, such findings open the door for the parallel statutory provisions forbidding immoral and scandalous marks to be challenged as unconstitutional. Even with these cases, markholders with potentially disparaging marks may not get definitive answers for quite some time — until the US Supreme Court makes its determination on whether the disparagement provision is constitutional. — Pamela C. Gavin and Rina Van Orden

To view the full April 2016 issue of Virginia Lawyer, please click here.

 

[1] Lanham Act § 2(a).

[2] In re Tam (Fed. Cir. 2015).

[3] Id.

[4] TMEP § 1203.03(b)(i).

[5] Tam at 8.

[6] Compare TMEP § 1203.03 (including no further protocol to follow if examiner finds mark disparaging) with TMEP § 1203.1 (requiring examiners to consult a supervisor after deeming a mark immoral or scandalous).

[7] Office Action, THE SLANTS App. Ser. No. 85/472044 (January 6, 2012).

[8] 660 F.2d 481 (1981).

[9] Tam at 62. Two of the judges in the majority wrote a separate opinion that found the disparagement provision to be impermissibly vague as well, citing examples of inconsistent application. Id at 63-73.

[10] Tam at 4, 61.

[11] Id. at 23-24. The court also determined that even if the disparagement provision was found to address commercial speech, it would fail the applicable intermediate scrutiny test. Id. at 56-61.

[12]The court found that Bob Jones University v. United States addressed racially discriminatory conduct, not speech. Thus, the government has “an interest in combating ‘racial discrimination in education,’ not a more general interest in fostering racial tolerance that would justify preventing disparaging speech.”

[13] Tam at 29.

[14] See Id. at 33-34.

[15] The USPTO argued that the markholder’s use of the (R) symbol, the mark’s placement on the Principal Register, and Certificates of Registration issued to markholders are government speech.

[16] Walker v. Texas Division, Sons of Confederate Veterans, Inc., 135 S. Ct. 2239 (2015). The court considered only license plate designs, typically sponsored by organizations, and not license plate letters/numbers.

[17] The offensiveness standard applied to the license plates stems from a different area of law than the disparagement provision of § 2(a) of the Lanham Act.

[18] Id. at 2248.

[19] Id.

[20] Tam at 40 (quoting Walker at 2248) (internal quotes omitted).

[21] Id. at 41.

[22] Tam at 4.

[23] It is important to note that the holding applies only to the disparagement provision and not the rest of Section 2(a), which also forbids registration of immoral and scandalous marks.

[24] Bill Donohue, ‘Slants’ Trademark Suspended For Now, USPTO Says, Law360 (March 14, 2016, 3:58 PM), available at http://www.law360.com/articles/771166/slants-trademark-suspended-for-now-uspto-says.

[25] Id.

[26] Id.

[27] Bill Donohue, Fed. Circ. Orders USPTO To Explain ‘Disparaging’ TM Delay, Law360 (March 15, 2016, 11:28 AM), available at http://www.law360.com/articles/771742/the-slants-ask-court-to-make-uspto-comply-with-tm-ruling.

[28] Id.

[29] Pro-Football, Inc. v. Amanda Blackhorse, Case. No. 15-1874 (Fourth Circuit).

[30] The Redskins’ First Amendment arguments include a claim that the disparagement provision is impermissibly vague.

[31] In 2009, after 17 years of litigation, the Supreme Court of the United States denied certiorari, upholding a ruling that the Native American plaintiffs in that case did not have standing because they waited too long before attempting to have the Redskins’ trademarks canceled. See Pro-Football, Inc. v. Harjo, 415 F.3d 44 (D.C. Cir. 2005). A group of younger Native Americans brought the most recent case. See Pro-Football, Inc. v. Blackhorse, Case No. 1:14-cv-01043 (E.D. Va. 2015).

What Can You Protect with Copyright?

On first thought, copyright protection may seem fairly easy to understand. Put simply, creative works can receive protection from being copied. But copyright law has many nuances that are important to consider when seeking federal copyright protection. The first of these is determining whether and what aspects of a work can be protected.

Copyright protects “original works of authorship fixed in any tangible medium of expression.”[1] Fixation means that it is somehow captured in a way that can be perceived by others. For example, if you make up a song and sing it in your shower, you have not fixed the work in a tangible medium. However, if you write down the lyrics or notes to the song, or record yourself singing it, you have met the fixation requirement. The originality requirement demands both independent creation by the author and at least some minimal degree of creativity.  Independent creation is fairly self-explanatory — you must have created the work. As for creativity, the more creative the work is, the stronger your claim to copyright protection will be. But a very low level of creativity in a work is all that is required for copyright protection — you do not have to be a master of high art to receive protection.

One of the first things we typically tell clients interested in copyright protection is that ideas cannot be protected — only your individual expression of those ideas can be protected. The Copyright Act makes it clear that ideas, procedures, processes, systems, methods of operation, concepts, principles, or discoveries cannot receive copyright protection, “regardless of the form in which [they are] described, explained, illustrated, or embodied in such work.”[2] The doctrine of the idea/expression dichotomy provides that ideas must be separated out from expression, and the expression is the only protectable part of the work.

Though the line between ideas and expression can at times be murky in works with a lower level of creativity, many instances regarding creative content are evident. For example, copyright would not protect the idea for a story about an innocent man who is sent to prison and later escapes. However, copyright does protect the specific expression of that story idea as Stephen King wrote it in the short story “Rita Hayworth and the Shawshank Redemption” and as it was later depicted in the acclaimed film The Shawshank Redemption. This extends to facts as well. While the compilation of information that comprises the non-fiction book The Devil in the White City receives protection as a literary work, the fascinating individual facts that author Erik Larson uncovered about the 1893 World’s Fair in Chicago and serial killer H.H. Holmes do not, by themselves, receive copyright protection. This keeps any one person from owning ideas and facts so that knowledge can spread and such ideas and facts can form the basis for other original works.

The Copyright Act defines numerous examples of original works of authorship, including literary works; musical works, including any accompanying words; dramatic works, including any accompanying music; pantomimes and choreographic works; pictorial, graphic, and sculptural works; motion pictures and other audiovisual works; sound recordings; and architectural works. Though this list specifically details the categories of registrable works, this is not a complete list of works that can receive copyright protection.

Notably, while the Copyright Act does not specifically refer to works associated with computers and the Internet, a number of computerized creations constitute original works. For example, copyright protects the computer code written for software for a video game like Pac-Man as well as the creative visual aspects of the video game displayed on screen during game play. Copyright also protects works in digital form, such as digital photographs, YouTube videos, and songs in mp3 format.

Additionally, the types of works described above can be combined in various ways to create copyrightable works. Take websites for example. A website typically contains a variety of elements such as articles and other written content, photographs, or videos, and the webpage design itself, not to mention underlying coding and software. While each piece may be eligible to receive federal copyright protection individually, certain circumstances will allow for multiple pieces to receive combined protection or for registration of the website as a whole. Developing the right strategy for protection of works individually or combined together will depend on a variety of factors, including authorship, potential damages, and budgetary considerations.

So what kind of works remain uncopyrightable? A range of works have been deemed uncopyrightable, typically because of their primarily factual nature or because of the limited ways to express them. When an idea and its expression are inseparable, one person cannot claim an exclusive copyright in the expression of that idea (often called the “Merger Doctrine”). For example, calendars themselves are not copyrightable because the calendar year can only be expressed in limited ways that are useful. However, the photographs used for a calendar can be protected. Other works found to have little to no protectability include phone books (comprised of facts and utility requires them to be alphabetized in some fashion), sweepstakes agreements (similar rules can only be stated in a few ways), and recipes (the identification of required ingredients is both a statement of facts and a functional process/procedure).

Sometimes simply tweaking a work may make it protectable.  For example, you may be able to increase protection for a recipe by incorporating original images of the final dish, writing text to introduce it, and/or including it within a larger work.  Additionally, any works deemed uncopyrightable may be able to gain protection through other channels like trademark or trade dress. While you are in the process of creating copyrightable material that you hope to monetize, it is worthwhile to consult an intellectual property attorney to develop strategies to increase your work’s protectability from the start.  Sorting through these often complex issues early on in the process can secure your rights in your work and ensure viable remedies if someone else infringes on your copyrighted material. — Rina Van Orden


[1] 17 U.S.C. § 102(a).

[2] 17 U.S.C. § 102(b).