Currently, the US District Court is considering an appeal of the decision by the US Patent and Trademark Office (USPTO) to cancel six federal trademark registrations for the mark “Washington Redskins”. One of the by PFI is that the  (15 U.S.C. §1052), which allow the USPTO to decline to register a mark, are an infringement of their First Amendment rights.  Recently, a SCOTUS case involving the Confederate flag on licence plates was added into the mix when the two sides in Blackhorse v Pro Football, Inc. argued whether a trademark registration is a form of government speech.

On June 18th (less than a week before a hearing for Blackhorse), the Supreme Court of the United States decided . The Sons of the Confederate Veterans (SCV) wanted the Confederate flag on their licence plates and applied to a Texas program that allowed community groups to request the creation of specialty licence plates. Texas denied their request on the grounds that many people find the Confederate flag offensive. SCV sued, arguing that the government’s rejection of their licence plate was an infringement of their First Amendment rights. In response, Texas argued that licence plates were a form of government speech rather than private speech, and that the First Amendment did not require the government to perform any speech that members of the public might wish them to perform. SCOTUS sided with the government, holding that Texas is not obligated to issue licence plate designs that it feels are inappropriate.

USA Today reported that in the hearing on June 23rd, District Court Judge Gerald Lee asked the parties .

The SCV case resembles arguments the . The Department of Justice did not address the specific content of PFI’s marks, nor did it address whether or not the marks are disparaging, but it did address the constitutionality of the Lanham Act provisions. The Department argued that refusing to register the mark did not preclude the owner from using the mark. Additionally, it argued that the act of registering the mark would imbue it with the government’s authority, making the registration a form of government speech rather than strictly private or commercial speech. Thus, the government would not be infringing the First Amendment rights of the mark owner by refusing to register it, but rather protecting the government's own right to choose which speech to perform.

The news report states that PFI’s lawyer attempted to distinguish Blackhorse from Walker on the grounds that licence plates are more obviously government speech than trademark registrations, that is, issuing a licence plate bearing a state’s name and a Confederate flag together can appear to be a government endorsement of the owner's appreciation of the flag, while registering a trademark would not confer the same endorsement.  "No one looks at a Coke can and sees the federal government speaking”, stated PFI's lawyer.

The lawyer for Blackhorse lawyer on the other hand, is reported to have argued that the reason for disallowing the licence plates and the reason for disallowing the trademark are strikingly similar. He also noted that a registered trademark allows the use of the circle-R, which does attach a level of government expression to the mark.

The fight to have PFI’s marks declared disparaging has been long and difficult, and it has taken multiple sets of Native American complainants to bring the case to this point. Regardless of the outcome of this hearing, it is likely that further appeals will follow, making the fight far from over. But current events suggest that Americans are particularly attuned to issues of race and symbols of disparagement at the present time. Hopefully American courts will prove to be as well.

The post They-Who-Must-not-be-Named-or-at-Least-Must-not-be-Named-THAT appeared first on IPOsgoode.

Appropriation of Name or Likeness

The couple argued that the defendants' use of their engagement photo constituted the tort of appropriation of name or likeness. To in such a claim, the plaintiffs must demonstrate that the defendants used the plaintiffs' names or likenesses, the use was for the defendant's own purposes or benefit, commercially or otherwise, and the plaintiffs suffered damages due to the defendant's actions. However, a claim of appropriation of name or likeness cannot succeed if the use in question is protected under the which states that "Congress shall make no law...abridging the freedom of speech." In , the Supreme Court of the United States held that the Free Speech Clause can be used as a defence in state tort claims.

Invoking the First Amendment: Noncommercial Purpose

A for invoking the First Amendment defence is that the message must have a noncommercial purpose. As the purpose of the First Amendment is disseminating information regarding matters of public concern, scholars argue that commercial messages should be given the least protection as they offer the lowest amount of information, in contrast to political, informational, and entertainment works [1].

Judge Daniel ruled that the defendants met this requirement as the purpose of their messages was to express disapproval of political candidates who support homosexual marriage. The Court disagreed with the plaintiffs' argument that messages which solicit donations (as in this case) are automatically commercial. In , the Court held that a political message may be noncommercial even if it has "commercial undertones". What is necessary is that the donations are not a prerequisite for viewing the message. As these criteria are satisfied, the defendants are eligible for protection under the First Amendment.

In my opinion, the emphasis on the commercial or noncommercial nature of the message when invoking a defence under the First Amendment shows how little the plaintiff's personal losses factor into the equation. Although the definition for the tort of appropriation of likeness states that the benefit derived by the defendants can be commercial or otherwise, it seems that the focus is largely on commercial gain. The damages suffered by the plaintiffs are more easily proven if they experienced economic loss (compared to emotional harm) and a defence under the First Amendment would not be available to the defendants.

Invoking the First Amendment: Newsworthy or Legitimate Public Concern

���� when arguing a First Amendment defence is that the use must reasonably relate to a publication concerning a matter that is newsworthy or of legitimate public concern. The defendants' argument was successful as their use of the photos was to address a legitimate public concern. Judge Daniel citing , stated that the issue of same-sex marriage is a legitimate public concern and is widely discussed in the media.

The First Amendment gives the greatest protection to newsworthy content because it promotes a "free marketplace of ideas", which is necessary for public debate, clarity of thought and informed decision making [2]. The public should have access to all relevant information, not just the selective content offered by the government.

Fair Use Argument

Although the plaintiffs lost their case, they did succeed in proving that the defendant's use of the photo was not protected under the fair use exception. In fact, the Court found that the defendant failed to meet many of the criteria required for establishing fair use as listed in (Limitations on exclusive rights: fair use). Most interestingly, the Court ruled against the defendant's argument that by using only 20% of the original photo, they had not taken a substantial portion of the content from the original work. The Court stated that "the quantity of a taking does not necessarily determine the quality of the taking". Since the portion that was taken was the focus of the photo and contains significant creative content from the photographer, the taking was still substantial.

The defendant's success in this case, despite the Court ruling against their fair use argument, demonstrates to me the minor role that fair use plays in the conflict between appropriation of name or likeness and freedom of speech.

Conclusion

In my opinion, this case marks a win for the press and anyone who seeks to use private individuals' information to promote a newsworthy message, and a loss for privacy and individual rights. Until the Courts come up with a new precedent, I think users would be wise to refrain from putting anything in the public domain they do not want to see featured in the next political ad campaign.

[1] Roberta Rosenthal Kwall, "Right of Publicity vs the First Amendment: A Property and Liability Rule Analysis" (1995) 70 Ind LJ 52 at 63.

[2] Supra, note 2 at 63.

Sabrina Ding is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

The post Privacy rights out of focus as Colorado court zooms in on First Amendment appeared first on IPOsgoode.