The Eleventh Circuit has held a commercial landlord liable for its tenant’s sales of counterfeit sunglasses when it knew of those sales and failed to stop them. Luxottica Group, S.p.A. v. Airport Mini Mall LLC, 2019 U.S. App. LEXIS 23555 (11th Cir. 2019). The claim was for contributory trademark infringement under the Lanham Act, 15 U.S.C. §1114.
The Supreme Court held that the First Amendment prohibits enforcement of a provision of the Lanham Act that purports to deny the benefits of trademark registration to names or marks that “disparage” a person or “bring [them] into contempt or disrepute.” Matal v. Tam,2017 WL 2621315 (U.S. 2017); 15 U.S.C. §1502(a) (Lanham Act). The Court held that “this provision violates the Free Speech Clause of the First Amendment. It offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.” The case involved a band called “The Slants” who sought to reclaim an offensive term for persons of Asian descent. Because the Court’s analysis focused on the idea that speech cannot be regulated because of its offensive content, it would appear that this ruling would equally apply to those who use a term about themselves (the members of the Slants are Asian-Americans) …
In In re Tam, 808 F.3d 1321 (Fed. Cir. 2015), the Federal Circuit held the government could not withhold trademark registration because the name was disparaging. In re Tam involved a band called The Slants and the Patent and Trademark Office had determined that the name represented a racial slur that was disparaging to people of Asian descent and thus could not be registered as a trademark under the Lanham Act, and its ruling was upheld by the federal District Court. Band leader Simon Shiao Tam had argued that he was trying to reclaim the word just as the previously derogatory word “queer” had been reclaimed by LGBTQ persons. The Federal Circuit reversed the trial court’s ruling, finding Tam’s expressive speech to be protected by the first amendment even if the name was disparaging and its use a violation of the Lanham Act. The court did not address the question of how to deal …
Federal Circuit holds that first amendment protects right to use disparaging trademarks Read More »
In the well-known case of Martin Luther King, Jr. Center for Social Change v. American Heritage Products, 296 S.E.2d 697 (Ga. 1982), plaintiffs Coretta Scott King, administrator of Dr. King’s estate and Martin Luther King, Jr. Center for Social Change, and Motown Records, an assignee of the rights to several of Dr. King’s recorded speeches, sued defendants to stop them from manufacturing and selling plastic busts of Dr. Martin Luther King, Jr. The Georgia Supreme Court recognized a “celebrity’s right to the exclusive use of his or her name and likeness” and rejected defendant’s contention that the First Amendment protected the right to manufacture and sell busts of public figures. In contrast, the Sixth Circuit held in ETW Corp. v. Jireh Publishing, Inc., 332 F.3d 915 (6th Cir. 2003), that the First Amendment protected an artist’s right to sell prints of his painting that depicted Tiger Woods’s victory at the 1997 Masters Tournament. In a similar …
Publicity rights limited by free speech guarantees Read More »
In a well-known case, the Georgia Supreme Court upheld a publicity rights claim brought by the estate of Martin Luther King. Martin Luther King Jr. for Social Change v. American Heritage Products, 296 S.E.2d 697 (Ga. 1982). The court enabled the estate to prevent the sale of plastic busts of Dr. King by a seller who had not been authorized to do so by the estate. However, in Rosa and Raymond Parks Inst. for Self-Development v. Target Corp., 2016 WL 25495, the Eleventh Circuit found that the Michigan Constitution’s guarantee of free speech rights prevented recognition of publicity rights in the estate of Rosa Parks. The seller in that case marketed various items adorned with images of Rosa Parks or which concerned her life, including a plaque showing Parks with Dr. Martin Luther King, Jr., six books, and a movie. The court found that Michigan’s state constitutional protections for free speech included …
Eleventh Circuit rejects publicity rights claim for Rosa Parks Read More »
A federal court has ordered cancellation of the R-skins trademark registration on the grounds that it “may disparage a substantial composite of Native Americans and bring them into contempt or disrepute” in violation of §2(a) of the Lanham Act, 15 U.S.C. §1052(1), at the time of their registrations. Pro-Football, Inc. v. Blackhorse (E.D. Va. 2015).
Judge Jed Rakoff of the Southern Districit in New York held that legal publishers West and Lexis did not violate copyright law by publishing searchable versions of lawyers briefs. Their conduct was a protected “fair use” because it was transformative, changing the purpose and character of the works. White v. West Publ’g Corp., 2014 WL 3057885 (S.D. N.Y. 2014).
In another case in a long-running saga, the Patent and Trademark Office cancelled the federal registration for the “Washington Redskins” on the ground that the name is disparaging in violation of Section 2(a) of the Trademark Act of 1946, 15 U.S.C. §1052(a). Blackhorse v. Pro-Football, Inc., U.S. P.T.O. Canc. No. 92046185 (June 18, 2014).
A federal district court has upheld Google’s library book project as an authorized fair use under the federal Copyright Act, 17 U.S.C. §101 et esq., Authors Guild, Inc. v. Google, Inc., 2013 WL 6017130 (S.D.N.Y. 2013). The court upheld the power of Google to scan copyrighted books held by libraries and to give those libraries digital copies of those scans. It also upheld Google’s power to make the text of those books searchable so that researchers could view snippets of those books and could search the books for particular phrases, words or concepts. The court ruled both practices to constitute a fair use, 17 U.S.C. §107. In determining that the ability to search the digital copies and to view snippets was a fair use, the court found that the use was transformative, did not supplant or supersede the originals, and was not designed to make a profit.
The Trademark Trial and Appeal Board refused to register “the Slants” as the name of an Asian-American band, despite its attempt to turn the name from an ethnic slur into a mark of pride. In re Tam, No. 85472044, 9/26/13. The federal trademark law prohibits registration of any mark that “may disparage or bring into contempt or disrepute persons, institutions, beliefs or national symbols.” 15 U.S.C. §1052(a). Even though the band sought to “take back” the ethnic slur by appropriating it (as happened with the term “queer” for gay people), the board refused registration because the derogatory meaning of the name was clear in context. The mere fact that the ones using the term were themselves East Asians did not automatically convert the term into one that was not disparaging. Note that the decision merely prohibits federal registration of the mark; it does not prevent the band from continuing to use the …
