Washington Redskins’ Trademark Cancelled – Deja Vu?

So reports the NYT on a decision by the Trademark Trial and Appeal Board (TTAB, in trademark lingo). Some Native American groups filed a lawsuit to cancel the NFL team’s long standing trademark (dating to 1967 and 1990) by alleging that the mark disparages people, or brings them into contempt or disrepute. And that Court said yes, the trademark is disparaging to Native Americans, so it should be cancelled.

Trademark Law 101

By way of background, U.S. law grants trademark protection to marks (e.g. logos, slogans, pictures, or phrases) used continuously in the stream of commerce in a particular context by someone in a distinctive way. So if you have a logo or slogan that you use on your website, business card, letterhead, company shirts or hats, or other items, you can get a limited monopoly (a trademark) to use that logo or slogan, and prevent others from using it in the same context or other contexts where it would be confusingly similar to an average person. (Note confusingly similar is different from the parallel copyright and patent law infringement standards.) Protected trademarks are labelled “TM” or “®” and service marks (usually slogans) are labelled “SM.” International trademark protection arises under a different, but related legal regime. Individual states also offer trademark protection, for substantially less cost than U.S. trademarks, but state protection only applies within the state’s borders.

No Trademark Protection/Canceling Trademarks

But trademark protection can’t be granted for marks that are immoral or scandalous, that disparage people, or that bring people into contempt or disrepute. IP lawyers have read the (amusing) cases and seen the pictures of various logos and slogans that didn’t make the cut. This decision indicates that the controversy over the NFL team’s name and alleged disparagement of Native Americans may be percolating into making race or ethnic background into a category of banned trademarks (the previous challenge of the Redskins’ trademark appears to be the first trademark cancellation for race or ethnic background). That may be a positive trend – Americans probably don’t want someone trademarking a neo-Nazi logo or a racial slur. It may also reflect a new legal cause célèbre (over other, less worthy or socially sympathetic causes) – one can’t easily imagine a group of pirates winning a disparagement lawsuit to cancel the Captain Morgan’s Rum trademark. The Founding Fathers (or modern politicians) couldn’t trademark mud slinging logos or slogans attacking their opponents. But how far do we go? Canceling a trademark is a step towards curtailing or banning products or manifestations of people’s free speech and press. And the Courts (and American people) have traditionally taken a broad, liberal view on free speech and press.

Stare decisis

Canceling a trademark 24-47 years after the U.S. trademark protection was granted raises a precedent or reliance question. Was the mark always disparaging or scandalous or casting a bad light on people? If it was originally ok, when did it go bad? Have people come to recognize and rely on the mark as a sign of bona fide goods or services (e.g. authentic NFL apparel, a professional football team, etc)? Canceling a trademark a generation after the fact begs the stare decisis question – Latin/legalese for “let the decision stand,” respect for precedent. Courts are reluctant to overrule previous decisions just because a party says (or even proves) they got the law wrong before. Law requires stability and order, which you don’t get if you reverse or change every bad legal decision ever made. In several high profile cases, the Supreme Court has refused to overrule a decision that was admittedly bad law because people had come to rely on it. Other times, the Court will overrule a case because things have changed or the old case burdens rights or liberties. Does a similar principle apply to trademarks and consumers? Should it?

Déjà Vu and Appeal

As the article notes, the Washington Redskins’ trademark lawyer anticipates appealing the ruling, and he says this is déjà vu – they’ve been there, done that on trademark cancellation some years ago. And even if the trademark is cancelled, the team could still use the name, logo, and other manifestations of the mark – they just wouldn’t be protected under federal law from infringement (e.g. unauthorized use by others), which could cause confusion for consumers.

This KC Business Journal article explores the implications for the Chiefs, our hometown NFL team. Forbes has this article. KCUR, KC’s NPR affiliate, had this report. UCLA Law Prof. Eugene Volokh had this analysis. And The Wall Street Journal and NYT have dueling editorials – NYT and WSJ.

My law firm, Johnson Law KC LLC, has experience working with individuals, companies, and nonprofits on state and federal trademarks. If I can help you navigate the waters of trademark law, give me a call (913-707-9220) or email me (steve@johnsonlawkc.com) for a free, convenient consultation.

(c) 2014, Stephen M. Johnson, Esq.

Supreme Court: Settlement Risk Ideas Not Patentable

The U.S. Supreme Court today continued its recent interest in reviewing patent cases, ruling unanimously (9-0) (by Justice Clarence Thomas) that software designs for using computers to mitigate settlement risk in financial transactions are not patentable because they embody only abstract ideas (Alice Corp v. CLS Bank Int’l). The Supreme Court affirmed the Federal Circuit’s denial of the patent (the Federal Circuit is a specialized federal court of appeals based in Washington, D.C., which handles patent cases). As the Court explains, for an idea or invention or process to be eligible for a patent, it must move beyond the abstract stage to the practical application stage – is it novel, does it instruct another person learned in the art, it is non-obvious, etc? So no settlement risk patent. Additional coverage and analysis from the Patently-O and How Appealing blogs.

Chief Justice John Roberts expressed interest in technology cases early in his tenure on the Court,  and sure enough, the Court has been taking on numerous patent cases from the Federal Circuit. None of the Justices have the technical, scientific, or engineering background usually associated with patent law, so why the interest? One reason may be the rise of software patents like the one at issue in today’s case, with increasingly complicated code and algorithms. Traditionally, a patent was awarded for an inventor’s ingenuity in producing the proverbial better mousetrap. But since the 1990s, with the rise of computers and the digital age, more patents are being issued for computer driven processes, methods, and software – things that might traditionally been the dominion of the copyright law. In today’s case, the patent didn’t involve any people – just computers sending data back and forth, to lower risk in financial transaction, semi akin to some hedge funds, high frequency trading, or other electronic-only financial innovations. If the patent bar believes the rise of software patents is a bad thing or weakens the quality and rigor of patents generally, and they’ve won some allies in the judiciary, the Court may be stepping in more often to send a signal to the USPTO, Congress, and people seeking these patents that they’re not eligible under America’s patent law. A sort of “nice try, but no cigar, go back to the drawing board.” In being the final interpreter of U.S. law, the Supreme Court’s job includes resolving lower court conflicts (so federal law is uniform on the books and in application); checking and balancing excesses in lower courts (e.g. reversing the Ninth Circuit or others when they misread or misapply the law); ensuring rights, liberties, federalism, and separation of powers are respected when politicians get bad ideas; striking down laws that violate the Constitution; and sometimes sending signals to Congress or Governmental agencies (e.g. this statute has a hole, so fix it; or don’t grant patents to inventions like this).

If my firm, Johnson Law KC LLC, can help you, your business, or your nonprofit with IP or patent litigation, call me (913-707-9220) or email me to schedule a free, convenient consultation.

(c) 2014, Stephen M. Johnson, Esq.

The Public Domain: “Elementary, My Dear Watson”

#FreeSherlock, indeed. From CNBC and the NY Times‘ Arts blog comes news that some Sherlock Holmes story elements are now in the public domain for American audiences and authors to remix and use royalty-free, thanks to a ruling from an Illinois federal court. Under America’s copyright law, a work (whether literary, musical, or artistic) enters the public domain once copyright protection expires. Copyright terms can be complicated, depending on when the work was first published, so be sure to consult with an IP attorney before using something you think is in the public domain or before publishing your work to ensure your work’s well protected.

If my firm can help you with your copyright, trademark, or other IP needs, call me (913-707-9220) or email me (steve@johnsonlawkc.com) for a convenient, free consultation.

(c) 2013, Stephen M. Johnson, Esq.

Opening the Song Vault

Drumroll please … The BBC has this story (a version of which I heard on KC’s local NPR affiliate, KCUR, Tuesday morning) about the iTunes release of 59 Beatles tracks from 1963. While a song’s “official release” doesn’t matter under U.S. copyright law (and the Kansas and Missouri corollaries) for length of copyright protection, European law does. (U.S. copyright law is driven by “publication.”) EU copyright law protects songs for 70 years if they’re officially released, but only for 50 years if they’re not officially released. So while the 59 Beatles tracks would be protected under U.S. law, they’d go into that royalty-free zone we call the public domain in the European Union if they weren’t officially released. Voila! Songs officially released and copyright lapse problem solved. The new release is called The 50th Anniversary Collection and ironically (yet honestly) subtitled The Copyright Extension Collection. On the bright side, at least in Europe, artists (or their estates) release material to obtain copyright protection; in America, Congress often just tweaks the copyright law term, the most recent example being the Copyright Term Extension Act (CTEA) (1998), which allowed Mickey Mouse, Gone with the Wind, and other landmark works to remain in copyright and not become public domain IP to be remixed or enjoyed gratis.

If my law firm can help you or your company protect your songs, photos, art, or other creative work, call (913-707-9220) or email me (steve@johnsonlawkc.com) for a convenient, free consultationMy firm is experienced helping clients navigate the IP law, while adding value to clients’ creative arts and IP, and provides friendly, affordable counsel for your legal needs.

(c) 2013, Stephen M. Johnson, Esq.

Photographer Wins Copyright Lawsuit

The NY Times Lens blog has this report of a Haitian photographer (Daniel Morel)’s victory in a copyright lawsuit for willful copyright infringement of 8 pictures Mr Morel took during the Haiti earthquake and published over social media. 4 years ago, Morel sued Agence France-Presse and Getty Images for copyright infringement. Mr Morel said he pursued his case “because someone had to fight for photographers.” Mickey Osterreicher, the National Press Photographers Association’s general counsel praised the jury verdict and damage award ($1.22 million) as a victory for “photographers’ rights in the era of social media.” “Like anything of value, people need to ask permission, give credit and pay fair compensation for those images,” he said. “And when they don’t, photographers need to be able to stand up for their rights.” And he added: “far too often we find that photographers don’t have the power to stand up to those that infringe with impunity. I hope that this sends a message, but in reality we need a cultural change so that once again photographs are valued.”

If my law firm, Johnson Law KC LLC, can help you or your company protect your photos, art, or other creative work, call (913-707-9220) or email me (steve@johnsonlawkc.com) for a convenient, free consultation. My firm is experienced at helping clients navigate the complex twists and turns of IP law, while adding value to clients’ creative arts and IP, and provides friendly, affordable counsel for your legal needs.

(c) 2013, Stephen M. Johnson, Esq.

Judge Posner on Patent and IP Litigation

I’ve always had a fondness for patent and IP law, as my late grandfather, Don Johnson (1921-1992), was a patent attorney and partner for many years with a boutique IP law firm (now Hovey Williams LLP) in Kansas City. (While I read history instead of electrical engineering in college, I enjoyed pursuing my IP passion with numerous IP, copyright, music, and digital IP classes at KU Law.)

Judge Posner (7th Circuit Court of Appeals in Chicago) recently gave this interview on patent and IP litigation, focusing on patent damage and remedy issues. While Judge Posner doesn’t have a technical background (he read English at Yale, graduating Phi Beta Kappa), he often has keen legal insights. Many areas of law have benefited or been clarified from the information tsunami flowing from his prodigious pen. Judge Posner’s interview showcases his formidable intellect, his common sense/pragmatic approach, and his seamless interweaving of real life examples and abstract legal ideas.

About the time my grandfather retired from his law firm, Congress authorized the Federal Circuit (sitting in Washington D.C.), to hear patent law appeals. Patents (and copyrights and trademarks) are governed primarily by federal law, with some state law counterparts for copyrights and trademarks, and international components in our increasingly globalized world. The U.S. Patent and Trademark Office handles all trademark registrations and patent applications. When litigation arises, the case goes to federal court. Most federal cases go to a (regional) federal court of appeals – so Kansas cases go to the 10th Circuit (in Denver), while Missouri cases go to the 8th Circuit (in St. Louis) – but patent law often hinges on technical scientific and engineering issues (prior art adds a dimension of complexity to precedents) and is rapidly evolving as the state of the art advances, so Congress set up the Federal Circuit (made up exclusively of patent attorneys) to hear these complex appeals. Every year or two, a Federal Circuit case arrives at the U.S. Supreme Court for the Justices to analyze an IP issue with constitutional implications (e.g. can you patent a human gene?). Posner’s remarks touch on a wide range of questions running the gamut of the patent law process, from the early stages – R&D, what should be patentable, etc – and the later stages – patent appeals, enforcement and exploitation of patent portfolios, varying degrees of vigorousness in prosecuting infringement, etc.

If my law firm, Johnson Law KC LLC, can help you or your company with your IP needs – copyrights, trademarks, related litigation, or patent litigation, call (913-707-9220) or email me (steve@johnsonlawkc.com) for a convenient, free consultation. My firm is experienced at helping clients navigate the complex twists and turns of IP law, while adding value to clients’ creative arts and IP, and provides friendly, affordable counsel for your legal needs.

(c) 2013, Stephen M. Johnson, Esq.

Dickens’ London Lives

The Daily Mail brings this fascinating glimpse of a rare collection of Victorian-era photographs from 1877, taken near the dawn of photography, and affords us a vivid and intimate, if stark, look at the London of Charles Dickens, that great city that so many have grown to know and love through Dickens’ masterpieces and other literature. Photography was invented around the time of the American Civil War (1861-1865), and these early pictures give us a window into the gritty real life that Dickens observed strolling down the cobble stone streets around Britain’s capital and so memorably evoked in his classic novels.

If my law firm, Johnson Law KC LLC, can help you or your company protect your photography or other creative artistic expression – with copyrights, trademarks, or related litigation – call (913-707-9220) or email me (steve@johnsonlawkc.com) for a convenient, free consultation. My firm is experienced at helping clients navigate the complex twists and turns of IP law, while adding value to clients’ creative arts and IP, and provides friendly, affordable counsel for your legal needs.

(c) 2013, Stephen M. Johnson, Esq.