Ariel Goldberg is a 1L JD Candidate at Osgoode Hall Law School.

Usually, a dog toy’s squeak echoes throughout a home. A Jack Daniel’s bottle-shaped dog toy called “Bad Spaniels” will be heard at the U. S. Supreme Court and could bark for trademark use in expressive works. Will it bite?

Jack Daniel’s Properties, Inc.’s (“Jack Daniel’s”) petition to the U. S. Supreme Court explains that the case addresses a significant reoccurring tension in trademark and trade dress protection under the U. S.’s Lanham Act: VIP Products LLC (“VIP Products”) runs the e-commerce website . Under the shopping category “”, VIP Products sells an array of dog toys that parody existing brands’ trademarks and trade dress including a Mountain Dew bottle that reads “”, a Baileys bottle called “” and, the toy at issue, a nearly identical Jack Daniel’s Old No. 7 Brand Tennessee Sour Mash Whiskey bottle altered to say “.”

Image from .

Initially, that the “Bad Spaniels” dog toy likely causes consumer confusion and tarnishes Jack Daniel’s marks. On appeal, the decision holding that the likelihood-of-confusion test would not apply because the toy is an expressive work with First Amendment protection of freedom of speech. The Ninth Circuit applied the Rogers Test from the Second Circuit’s (1989) decision. free speech and trademark protection by allowing the use of trademarks in expressive works if artistically relevant and not explicitly misleading. Here, the trademark use was artistically relevant to the , the toy was not explicitly misleading because VIP Products altered the trade dress. The toy had a disclaimer on the back of the toy that stated that Jack Daniel’s was not affiliated.

Jack Daniel’s petition argues that the Ninth Circuit’s “” decision allowing for companies similar to VIP Products to tarnish trademarks and create mass marketplace confusion. Jack Daniel’s that the courts of appeal are divided on this issue, specifically that the Ninth Circuit’s use of heightened First Amendment Protection for humorous trademark use conflicts with the decisions of other Circuit courts. . These circuits have not used the First Amendment and instead applied the traditional likelihood-of-confusion test with consideration towards the humor or parody as a factor against the mark holder. For example, in , the Fourth Circuit held that Haute Diggity Dog’s “ successfully parodied Louis Vuitton’s handbags through applying the likelihood-of-confusion test with humour as a factor.

Essentially, Jack Daniel’s wants the U. S. Supreme Court to create a higher bar for parody works which would create more ease for mark holders to address consumer confusion and dilution from parodies. The main concern is the use of humour to gain immunity. , the academic director of Fordham University Fashion Law Institute, that “every brand with a beloved trademark is worried about seeing cheesy versions of its primary corporate asset used to sell not only dog toys, but also  a vast range of other novelties that, over time, could cheapen the perception of the brand.” In addition, that dog toys are expressive works because its purpose is to be played with by dogs.

However, the argument to raise the bar for parody works is contentious. , a professor at Harvard Law School and author of a brief opposing Jack Daniel’s , highlights that trademark law exists to protect consumers from fraudulent products rather than clear humorous uses of existing trademarks and trade dress. expressions on a canvas are not meaningfully legally distinctive from expressions on a dog toy.

The U. S. Supreme Court decision will be a significant precedent. In Mason Rothschild claimed his fur-covered Birkin bag NFTs, MetaBirkins, satisfied the Rogers Test by being artistically relevant and not explicitly misleading. Clearly, the humorous use and reworking of existing trademarks and trade dress is here to stay making Jack Daniel’s shot at heightened First Amendment protection highly relevant. Time will tell if Jack Daniel’s is barking up the wrong tree.

The post Jack Daniel’s Marks its Territory appeared first on IPOsgoode.

Nikita Munjal is the IPilogue Content Manager, an IP Innovation Clinic Fellow, and a third-year JD/MBA Candidate at Osgoode Hall Law School.

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In January 2021, the then-acting president of the United States, Donald Trump, from Facebook for statements he had made in the immediate aftermath of the violent insurrection which took place at Capitol Hill. Trump’s comments were seemingly the last straw for the social media giant who had repeatedly cited its commitment to upholding free speech in defending its stance on Trump’s use of inflammatory language on the platform.

However, Facebook’s decision in January was not final. When accounts are banned or posts are removed from Facebook or its subsidiary, Instagram, users can appeal the decision to the quasi-judicial body, Alternatively, Facebook can refer cases to FOB to determine whether its decision had been fair, as was the case here.

FOB’s Decision

In early May 2021, the that Facebook was justified in suspending Trump’s accounts. However, they stated that it was “not appropriate” for Facebook to impose an indefinite suspension, which contravened Facebook’s standard operating procedure. Facebook’s penalties usually pertain “removing the violating content, imposing a time-bound period of suspension, or permanently disabling the page and account” (at p.1). FOB gave Facebook six months to reexamine its arbitrary penalty and give an appropriate penalty based on the gravity of the violation and the prospects of future harm.

Facebook’s Response

In June 2021, approximately a month after FOB’s decision and within the six-month time period, Facebook : Trump’s suspension from Facebook and Instagram will last for two years, effective from the initial suspension date. However, at the end of the two-year period, Facebook will reassess whether the risk to public safety has receded.

Unsurprisingly, this set of decisions has garnered mixed reactions. Some writers have stated that this is a victory for Trump, who could return to the social media platform in time for a potential 2024 presidential run. Others have argued that this is a victory for Facebook since it could decide whether to continue to the suspension or allow Trump back on its platforms ��based on the political landscape at the time while hiding their rationale behind the risk posed to public safety.

Broader Implications for Free Speech on Social Media

Trump’s social media presence during his presidency exacerbated the discourse around regulation and moderation of content posted on social media. Specifically, questions have arisen as to whether corporations or governments are better positioned to regulate content on social media.

Some industry members including FOB member and former prime minister of Denmark, Helle Thorning-Schmidt, are calling for . These proponents cite its funding, autonomy from Facebook, and diverse membership as reasons for its potential success in regulating the space. However, not everyone agrees with that position. For one, FOB seems powerless in for its role leading up to the insurrection. This is not to suggest that Facebook is the only social media platform grappling with finding an appropriate balance between promoting free speech and preventing harm; however, its role cannot be understated.

Critics argue that FOB’s decisions by focusing too much on corporate oversight. Instead, the focus should be placed on passing legislation that curtails Big Tech’s business models and protects users from their voraciousness.

Currently, the Canadian federal government is preparing to unveil legislation regulating social media content. The legislation to be modeled after Germany’s NetzDG law, which requires social media platforms to remove illegal content under tight deadlines or face severe fines.

warn that following Germany’s precedent could be problematic for two reasons. First, it won’t effectively deal with content that is “lawful but awful”, that is, content that is legal but is known to create real-world harm. Given the Charter of Rights and Freedoms’ broad protections for freedom of expression in Canada, it will be difficult for the government to curb the expression of harmful ideas in public spaces. Second, the legislation could set a bad example for countries that criminalize forms of expression protected under international human rights law. Laws that impose severe penalties on social media companies for failing to remove illegal content under a nation’s laws could increase the criminalization of political dissenters and minority communities. To address these concerns, scholars suggest Canada adopt a multilateral approach by working with other rights-respecting democracies to prevent the internet from “splintering into a series of national networks.”

Ultimately, until the federal government unveils the legislation and holds consultations, it is difficult to predict its effectiveness. However, online content requires regulation, whether that be from corporate entities, governments, or something in between.

The post Facebook Bans Donald Trump for Two Years, but the Discussion on Regulating Free Speech on the Internet is Just Beginning appeared first on IPOsgoode.

Many jurisdictions have provisions that prohibit the registration of offensive marks in accordance with moral and public policy concerns. For example, section 9(1)(j) of Trade-marks Act prohibits the registration of “any scandalous, obscene or immoral word or device.”�� and Australia[1] also enforce similar clauses. Therefore, while the decision in Matal has direct implications for US trademark law, it also raises a host of questions for trademark law around the world.

The amicus briefs filed in Matal present illuminating insights on how the Court may have taken a step too far. The ��submitted by the American Bar Association (ABA) is a logical place to begin this analysis, given the foundational issue that was the focus of the submission. The ABA sought to correct the Court of Appeals for the Federal Circuit on the distinction between trademark validity and trademark registrability. In addition to the Court confusing validity and registrability, a finding that section 2(a) of the Lanham Act violates the First Amendment would lead to uncertainty about the consequences of a finding of “unregistrability”. The ABA correctly pointed out that the Court of Appeals in Matal seems to have treated trademark validity and trademark registrability interchangeably, which may have had a compound effect on the final decision. The court did, however, state that the unregistrability on the Principal Register does not prevent a trademark from being used legitimately in commerce. However, the Court of Appeals seems to have also erroneously implied that a determination of unregistrability makes an otherwise valid mark ineligible for protection under the Lanham Act, which, according to the ABA, is incorrect. This means that Simon Tam’s proposed mark THE SLANTS may have been ineligible for registration prior to the ruling in this case, a finding of unregistrability is not determinative of whether or not a mark can be used in commerce

In the event of an infringement or unfair competition claims under the previous law, Tam could have protected his mark through the common law. Furthermore, the Court of Appeals stated that “[w]ithout federal registration, a trademark user cannot stop importation of goods bearing the mark …” While this was not directly relevant to Tam’s situation, it certainly has broad implications for cases to come. Regardless, it is inaccurate. Owners of unregistered trademarks have other federal causes of action at their disposal. Indeed, the ABA gave the example of the possibility of “filing a complaint pursuant to Section 337 of the Tariff Act before the International Trade Commission (“ITC”) to stop the importation of goods bearing the mark that violate those common-law rights.”[2] Moreover, valid yet unregistered marks may also enjoy protection against cybersquatting, according to the Anti-Cybersquatting Consumer Protection Act.[3] In addition, state law causes of action—such as likelihood-of-confusion-based causes of action for infringement, unfair competition, and deceptive trade practices—present other avenues for the owners of unregistered trademarks to enforce their intellectual property rights.

An interesting in support of the USPTO is that any decision the government makes in circumstances such as those giving rise to the dispute in Matal is not necessarily neutral because speech will be inevitably supressed. The brief states that “...a trademark registration is a government-issued document that makes it easier for its owner to suppress the speech of others...” because it is a right to exclude, contrary to the opinion of the Tenth Circuit in . This means that, in trademark law, the government is necessarily interfering with ���dz���DzԱ�’s speech; whether it be the trademark owner’s in the case of a refusal, or competitors’ in the case of a trademark registration. This, according to the professors behind the brief, would “wreak havoc on trademark law”, but can be remedied by a decision in favour of the USPTO. This is because trademark law is content-based rather than viewpoint-based. Prior to this case, anyone could be caught under the disparagement clause, regardless of viewpoint. Disparagement is judged based on the content of the mark. Therefore, the law professors present a valid point when they state that “[u]nder the appropriate analytic framework, the bars of Section 2 reflect acceptable judgments about which symbols should receive legal protection as source identifiers, not penalties imposed on an actor doing business independently of the government.” In essence, the Court of Appeals erred in viewing the Lanham Act’s regulatory scheme as being presumptively unconstitutional because a trademark registration denial is seen as a ban on free speech.

The implications for trademark law are not the only concern with respect to the expansion of free speech when it comes to offensive marks. The of Native American Organizations agrees with the perspective of the law professors above in the sense that “[t]rademarks can function as instruments of speech-suppression precisely because they regulate commercial speech.” In this way, the government plays an important role in the operation of commerce, which facilitates the filtration of disparaging and racist marks. When the government exercised this role with respect to offensive marks prior to Matal, it did not strip the owner of the use of a trademark as a whole, but simply withheld the benefits that registration carries. Therefore, from this perspective, this case confirms the “longstanding use of derogatory Native American imagery”, which also alludes to the attention captured by the Washington Redskins case.

As such, concerns regarding freedom of speech became real in light of Matal, which may be a reason to think that the ruling in this case pushed the boundaries of free speech too far, despite the advantages that it carried for trademark owners. This, in conjunction with the wide range of international uncertainty that Matal has caused, is a factor that makes the decision slightly unsettling and casts doubt as to whether the step taken by the U.S. Supreme Court swung the balance too far in favour of free speech. The full range of these impacts, however, has yet to be seen given the recent issuance of this decision.

Saba Samanian is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

[1] Vicki Huang, “Comparative Analysis of US and Australian Trade Mark Applications for THE SLANTS” (2017), Eur IP Rev at 6[Huang].

[2] Tariff Act, 19 USC § 1337 (2012). See In re Certain Digital Multimeters, & Prods With Multimeter Functionality, Inv No 337-TA-588, USITC Pub 4210, 2010 ITC LEXIS 2867.

[3] Consumer Protection Act, 15 USC § 1125(d).

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In particular, Laidlaw highlighted a lack of accountability, predictability and transparency in the current handling of online speech issues. Despite the great power they wield, technology companies are understandably reluctant to face greater government regulation. They flourished in an era of light restrictions and do not welcome rigid, unresponsive policies imposed from outside. Leaving it all up to self-governance has its own problems.

In her research, she found that the technology industry has government regulation and many of the broader working groups addressing free speech, privacy and other governance issues. Tech companies prefer to band with other tech companies to create their own industry working groups. With few exceptions, those groups are voluntary. Corporations are not required to join the groups, nor are they required to comply with any recommendations issued by the groups. The result is that these corporations are not actually accountable to any outside groups for their actions or inaction.

Laidlaw also criticized the way that tech companies address complaints. When users file complaints, or have complaints filed against them, there is often little information available on the progress of issues or the potential outcome. Decisions are usually final and often opaque, leaving no opportunity for appeal. Without any information on how past complaints have been handled, there's little room for users to learn from the process -- at best, they can look to the densely written, ever-changing terms of service and privacy policies to figure out what is and isn't appropriate on a given platform.
Even aggregate information is rarely made available to the public or to researchers, so there is no information to study for trends or to spot problems in how complaints are handled. The issues that get addressed may be subjected to the whims of publicity or corporate public relations goals, rather than any systematic understanding of what is appropriate or important to take action on.

She offered a few examples of what these corporate practices look like in action:

First, she pointed to past occurrences where Facebook hosted groups dedicated to sharing rape jokes. People reported those groups to Facebook asking that they be removed as hate speech. But is a rape joke hate speech? Or is it simply a joke? Facebook’s initial stance was that these groups did not violate any of their terms of service, and they were allowed to stay. After a much greater public protest, Facebook reversed that decision, removed the groups and updated their terms of service to disallow that type of group. The new policy is a shift in how these specific complaints are dealt with, but does not alter the overall process which is complaint based and opaque. You can file a complaint, but you have no path to appeal Facebook’s decision.

Another of her examples concerned the Internet Watch Foundation (IWF), a group created by the UK ISP industry to respond to concerns about child sexual abuse photos. The group was created under threat of government regulation — if the industry did not self-regulate to the satisfaction of the government, they would be regulated externally. The IWF responds to complaints about child porn and manages a block list for UK ISPs to ensure they do not allow access to known repositories. While the IWF was created as a self-governance mechanism, it has limited oversight. Remedies for incorrectly blocked sites are minimal, and there is no notification that a site even has been blocked. She also raised concerns that the tools IWF has developed for addressing child sexual abuse photos could be expanded into other areas like copyright enforcement where the lines between what's acceptable and what's criminal or infringing are less clearly drawn.

In place of ad-hoc, inadequate mechanisms, Laidlaw proposes a new model for corporate social responsibility and governance. In this new model, governments would mandate that corporations have policies and procedures for handling free speech and human rights issues. They would have to include complaint mechanisms that are transparent, predictable and accountable. The government regulations would stop short of specifying what those processes would actually look like, leaving it up to individual corporations to develop procedures that met both their internal requirements and the government requirements.

Without a specific procedure dictated by the government, corporations would require additional support in implementing these procedures. Laidlaw suggests that support could range from sample policies to assist in drafting policies to audit tools that would allow corporations to ensure they were properly executing their procedures. With greater transparency built into the new processes, additional data would be available for research and education. Researchers could assess various policies to determine best practices, and to hold corporations accountable to their own procedures. The information could also be used to educate the public, raising their expectations about how corporations should be acting when faced with complaints.

With the history of pushback from the tech industry, getting corporate buy-in is key to the success of any initiative. Laidlaw’s model may well offer enough flexibility that corporations will accept it, without so much flexibility that they can continue to escape responsibility altogether.

Jacquilynne Schlesier is an IPilogue Editor and a JD candidate at Osgoode Hall Law School.

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A full Federal Circuit hearing for October 2015 to hear oral arguments.

The provision the courts are referring to is , which prohibits registrations of marks that are scandalous or immoral. The U.S. Patent and Trademark Office (PTO) uses a two-prong test to test if a mark is disparaging. First it examines what the likely meaning of the mark is. Then it determines if that meaning refers to an identifiable group and whether it is disparaging to a substantial composite of that group.

The Lanham Act has allowed for the definition of scandalous, immoral or disparaging trademarks to be left up for debate. However, the statute is not unconstitutionally vague: .

The reopening of The Slants’ case has ignited debate regarding how far governments can go in restricting an individual’s’ right to free speech with regards to trademarks. How the courts proceed in this case will have far reaching implications for the future and could result in a fundamental change of practice regarding the treatment of disparaging marks.

The band for a trademark in 2010�� in their explanation of why “The Slants” is derogatory. Originally, the group’s lead singer Simon Tam said the band’s name was not a reference to it’s members’ Asian-American ethnicity, but rather to musical chords. In with TIME magazine, Tam argued that naming the band "The Slants" was reclaiming the word from any derogatory meaning.

As a part of the defense’s argument, Tam’s lawyers ��conducted by professors from Illinois’ North Central College and New 91��ɫ which��polled members of the Asian/Pacific Islander community. This survey was done in support of Tam’s trademark registration and in it the statement “I find the name of the group The Slants to be disparaging” was posed. 16 percent of participants agreed with the statement��while 46 percent disagreed��(the remaining 38 percent��stated they neither agreed nor disagreed). When participants were asked��to answer the question under the presumption that��membership��of the band was exclusively Asian-American, a majority of respondents agreed��they did not think��the name is��disparaging.

to refuse a trademark registration writing in her ruling that “The Slants would be perceived as offensive by a substantial fraction of Asians”.

However, ��Justice Moore attacked a precedential 1981 ruling which allows individuals the right to use their mark despite PTO’s refusal to register it. ��there were constitutional reasons to re-examine whether PTO should refuse disparaging marks and arguably harm free speech. This “additional views” section holds no legal weight, but points to a possible shift in the courts’ opinions on disparaging marks.

With the possibility for a shift in the way the U.S. deals with disparaging trademarks, over whether��this could change rulings of��similar cases, including the Washington Redskins' trademark dispute. Earlier this month a by the federal Trademark Trial and Appeal Board cancelling the team's trademark registrations after its��name was deemed disparaging to Native Americans. However, until this new��Federal Circuit hearing��has taken place, the influence The Slants' case��will have is still unclear.

Would The Slants’ fate be any different if they had registered their trademark in Canada? Unlike American law, which allows applicants to continue using their mark even if it is rejected by the trademark office, .

Setting the benchmark for what is perceived as offensive “by a substantial fraction of an identifiable group” is difficult in countries as diverse as the United States and Canada. Of course there are instances where it is obvious whether a term or word is offensive to the majority of a group. However, there are many situations where it is not quite as��clear.

As both countries continue to become more diverse, the idea of what is offensive and what is not will blur even further. This raises the question of whether governments should still tightly oversee whether a mark is disparaging. The time and place for governments to closely dictate what is offensive may no longer be needed. In today’s world, individuals turn to online channels to express their disdain for something they deem offensive or rally the masses to boycott a company and/or product. Could the same not work for trademarks? Sure, we can grant a person protection to their mark but it is only useful if individuals are willing to buy goods or services bearing that mark. As Moore J suggested, maybe it is time we re-examine the extent to which a government has the ability to refuse a mark and allow the citizens themselves to decide whether it is truly offensive.

Samantha Sim��is an��IPilogue Editor and��a graduate of Ryerson University's School of Journalism.

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Background

The Sutherland Institute is a conservative think tank based in Utah. Their website is based at SutherlandInstitute.org. The respondent is a gay rights activist who set up a critical website at SutherlandInstitute.com. The respondent's website looks very nearly identical to the complainant's except for the background color and the text. Understandably, the Sutherland Institute was unhappy when a large donor confused the two and voiced their concern over the content on the Sutherland Institute's website. The Uniform Domain Name Dispute Resolution Policy (UDRP) requires the complainant show three things: (i) the domain is identical or confusingly similar to the complainant's mark, (ii) the respondent has no legitimate rights in the name, and (iii) the domain was registered and used in bad faith. For a much more detailed discussion of these elements, see "" on this website. Despite the confusion being generated and no defense being presented by the respondent, the arbitrator denied the Institute's request for transfer of the domain on the grounds that the complainant had not shown it was held in bad faith.

Free Speech and Domains

This dispute can be viewed as being about the limits of trademark's ability to infringe on free expression. Does the right to free speech give a person the legitimate right to use a trademark in a domain name? In copyright, fair use helps define this limit by protecting academic research, news reporting, and (in the US, anyway) parody. "Nominative fair use" of trademarks is recognized in US case law. You can use a trademark in speaking about the trademark owner subject to two conditions: you use the trademark only as necessary for your purpose and you do not imply that the trademark owner endorses your use. This was not the case here as the purpose of the respondent's website was to (initially at least) confuse visitors. Could the usage be considered a parody? The issue in UDRP cases is the domain name---the use of the mark---not the website. The mark itself is reproduced in the domain name in its entirety and in isolation.��A parody cannot be a mere copy and, as such, the panel determined that the Respondent's use��does not constitute parody.

However, despite finding no legitimate right to use the mark, the panel refused to say that the use of the domain was in bad faith---the third element the complainant must prove. The purpose of the UDRP is, primarily, to prevent the commercial exploitation of trademarks in domain names: to prevent companies from tricking users into visiting their site for monetary gain. In this case, however, the respondent was using the complainant's trademark to trick people into listening to opposing political speech. The panel could have found this to be bad faith usage but instead said this:

Because this proceeding involves political speech that is strongly protected under the U.S. Constitution, the Panel will not in these proceedings involving two U.S. parties attempt to identify bad faith elements that are not specifically enumerated in the Policy. If the right of political speech is to be interfered with based upon Complainant’s service mark incorporated in Respondent’s disputed domain name, it is preferable that a federal or state court make that application of the concept of "bad faith".

This statement can be viewed in two ways. It has been criticized as : by bringing local laws into the arbitration process they are moving away from the goal of uniformity and bringing complex choice of law issues into the mix. On the other hand, I believe it reflects the role of the UDRP. The UDRP provides an expedited arbitration process for quickly addressing the most common types of domain abuse. It was never intended to balance intellectual property rights against civil rights. The panel does not say that they are upholding the respondent's right to the domain based on the US Constitution, rather they simply say that the issue is beyond their competency. I think that that is a fair stance for them to take.

So, does free speech protect domain squatters? I guess it's an issue for the courts to decide.

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