Today in Copyright History: 5/31

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225 years ago, on May 31, 1790, the first federal copyright law was enacted under Article I, Section 8, Clause 8 (the Copyright Clause) of the new U.S. Constitution, which empowers Congress “[t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”  The Copyright Act of 1790 protected books, maps, and charts for a term of 14 years, with the privilege of renewal for another 14 years.  Because the U.S. Copyright Office did not yet exist, copyright registration was made in the U.S. district court where the author or proprietor resided.  Reposted from the History of Copyright Timeline at the U.S. Copyright Office.

Public domain, via the U.S. Copyright Office (http://copyright.gov/about/1790-copyright-act.html).

Public domain, via the U.S. Copyright Office (http://copyright.gov/about/1790-copyright-act.html).

Kris Jenner: Mom, Manager, MOMAGER®

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The Hollywood Reporter reports today that celebrity manager and mother of six Kris Jenner “is proud of her role as combined mom and manager and is filing to trademark the ‘momager’ nickname she coined.”  The article further notes that, “[i]f the filed trademark is approved, Jenner would be entitled to sue anyone who uses the phrase without her permission.”  Efforts to secure federal trademark protection for a professional name, assumed title, or catchphrase are common in the entertainment industry (see earlier posts on this subject here, here, here, here, here, and here), so Jenner’s similar efforts are unremarkable.  What is remarkable, however, is the prevalence of what World Trademark Review has called “the confused and inaccurate reporting of trademark law in the media” (see earlier posts on this subject here and here).

In the instant case, the trouble begins in the very first sentence of the article, which states that Jenner is “filing to trademark the ‘momager’ nickname she coined.”  The phrase “filing to trademark” suggests that Jenner is seeking formal protection of the term MOMAGER for the first time, thus making it newsworthy, when in fact, she already owns two federal registrations, dating back to 2011, for the MOMAGER mark for a variety of management and entertainment-related services (see here and here).  Moreover, it is unclear whether the term MOMAGER was actually coined by Jenner, as the term has been registered by a different (and apparently unrelated) party since 2007.  The most consequential error, though, is the assertion that “[i]f the filed trademark is approved, Jenner would be entitled to sue anyone who uses the phrase without her permission.”  One of the more common misconceptions about U.S. trademark law is the notion that the use and registration of a word or phrase entitles the user/registrant to block all other usage of the term, regardless of how the term is used.  In reality, U.S. trademark rights are generally limited to the goods and/or services with which the mark is actually used in commerce, which is why Taylor Swift’s trademark application for THIS SICK BEAT cannot be used to stop the young folk from using that phrase in their daily discourse.  Also, since MOMAGER has already been registered by another party, it is very unlikely that Jenner would be able to stop the other party’s continued use and registration of the mark.  On the plus side, the article at least did not refer to Jenner’s MOMAGER mark as a patent or copyright.  Read the full article and pick your own nits here.  Reposted from The Hollywood Reporter.

How About the “Washington Red-gistrations”?

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The Washington Post reports that a Virginia man named Martin McCaulay and his company, Washington Warriors LLC, have applied to federally register dozens of trademarks for possible new names for the Washington Redskins football team, such as the Washington AMERICANS, BRAVEHEARTS, FEDERALS, FORCES, FOUNDERS, GENERALS, GLADIATORS, MONUMENTS, NATIVES, PANDAS, RED-TAILED HAWKS, TRIBE, VETERANS, and WARRIORS.  According to the article, McCaulay’s hope is that if the team changes its name as a result of the cancellation of the REDSKINS trademarks and the surrounding controversy (see prior posts on the subject here, here, here, here, here, and here), one of his applied-for names will appeal to the team’s owner, and the team will pay handsomely to obtain the rights to it.  This strategy, known as trademark squatting, is considerably more difficult than the related practice of cyberquatting, which basically only requires the purchase of an Internet domain name that trades on the goodwill of another person, business, or entity.  Because trademark registration in the U.S. requires actual use of the mark in commerce in connection with all of the goods/services recited in the application, trademark squatting can be a substantial undertaking.  McCaulay is reported to have already spent more than $20,000 on his efforts to register the names, and has had to create and sell merchandise bearing the fictional team names in order to prove use of the marks.  While McCaulay has successfully registered at least six of the fictional team names to date, it remains to be seen whether his expensive gamble will pay off with the real team—and its real team of lawyers.  Read the full article here.  Reposted from The Washington Post.

What’s More Objectionable: the Words or the Policy?

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World Intellectual Property Review recently conducted a survey of its readers on the question of whether they supported the U.S. Patent and Trademark Office (USPTO) policy of denying the registration of “disparaging” trademarks, and found that fifty-eight percent of respondents agreed with the USPTO policy.  The survey specifically addressed the USPTO’s recent, high-profile decisions to cancel six registrations incorporating the term REDSKINS, and to refuse registration of the mark THE SLANTS by an Asian-American band of the same name (see prior posts on the subject of disparaging marks here, here, here, here, and here).  Both decisions were based on § 2(a) of the Trademark Act (15 U.S.C. § 1052(a)), which provides, in pertinent part, that “[n]o trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it (a) [c]onsists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national  symbols,  or  bring  them  into  contempt,  or  disrepute.”  Finding that the terms REDSKINS and SLANTS are disparaging to Native Americans and Asian Americans, respectively, the USPTO held both terms to be unregistrable under § 2(a).

From public commentary, it appears that the principal substantive objection to, and source of much of the controversy about, the disparagement provision of § 2(a) is that it denies registration based on the content of the mark, which some view as a violation of the First Amendment.  Regardless of one’s own views regarding the propriety of the terms REDSKINS and SLANTS, there is an argument to be made that the differential treatment of such terms under federal law constitutes both a restriction of free speech and a judgment by the government of the relative value of certain speech.  On the other hand, a refusal by the USPTO to register a trademark does not prevent one from using and enforcing the mark as a trademark for one’s products and services—it merely prevents federal registration of the mark.  It thus can be argued that § 2(a) places no actual restrictions on free speech, since people are still free to use terms that others find disparaging, disreputable, or otherwise offensive—although the government is still making a judgment of the value of certain speech.  In any event, the refusals of both marks are still being litigated, and it remains to be seen whether the constitutional arguments in favor of registration will prove more persuasive to the courts than they apparently were to the survey respondents.  Read the full article here.  Reposted from World Intellectual Property Review.

For SKYPE Trademark, the SKY is the Limit

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BBC News reports that software giant Microsoft has just lost a legal battle in Europe over its SKYPE™ trademark.  The General Court of the European Union held this week that Microsoft’s SKYPE mark is confusingly similar to UK-based broadcaster Sky plc’s SKY® mark, upholding a refusal to register the SKYPE mark by the EU’s Office for Harmonization in the Internal Market.  According to the court, “the figurative element [of the SKYPE mark] conveys no concept, except perhaps that of a cloud,” which “would further increase the likelihood of the element ‘Sky’ being recognised within the word element ‘Skype,’ for clouds are to be found ‘in the sky’ and thus may readily be associated with the word ‘sky.’”  The court’s judgment follows an earlier, high-profile dispute between the two companies—Microsoft’s SKYDRIVE cloud storage service was changed to ONEDRIVE in 2014 following a British court’s ruling that the SKYDRIVE mark was confusingly similar to Sky’s SKY mark for similar services.  Read the full article here.  Reposted from BBC News.