1
00:00:15,316 --> 00:00:20,596
Speaker 1: Pushkin. Hey, it's Jacob Goldstein and this is the feed

2
00:00:20,676 --> 00:00:24,076
Speaker 1: where you normally hear what's your problem, But today we're

3
00:00:24,076 --> 00:00:26,756
Speaker 1: playing a preview from another podcast. The show is called

4
00:00:26,956 --> 00:00:30,836
Speaker 1: Slate Money. It's made by Slate and it's about wait

5
00:00:30,876 --> 00:00:35,676
Speaker 1: for it money. Every week, Felix Salmon and Emily Peck

6
00:00:35,796 --> 00:00:40,436
Speaker 1: of Axios and Slate Paydirt columnist Elizabeth Spires chat about

7
00:00:40,436 --> 00:00:43,236
Speaker 1: things like Bitcoin and the possible sale of Twitter, and

8
00:00:43,316 --> 00:00:46,436
Speaker 1: the standoff between Disney and the State of Florida. Also,

9
00:00:46,756 --> 00:00:50,756
Speaker 1: they interview smart, interesting people. In the episode You're about

10
00:00:50,756 --> 00:00:54,876
Speaker 1: to Hear, Felix and Emily sit down with Alexandra Roberts,

11
00:00:55,116 --> 00:00:58,636
Speaker 1: a law professor who was an expert in trademarks. Truly

12
00:00:58,716 --> 00:01:01,996
Speaker 1: an underrated subject trademarks. On the show, they talk about

13
00:01:02,036 --> 00:01:04,876
Speaker 1: everything from counterfeits to parodies to the story of what

14
00:01:04,956 --> 00:01:09,476
Speaker 1: happened when MasterCard tried to change its logo. Okay, here

15
00:01:09,556 --> 00:01:25,196
Speaker 1: is the preview of Slate Money. Hello, Welcome to the

16
00:01:25,396 --> 00:01:30,236
Speaker 1: ip Lisnia episode of Slate Money, your guy to the

17
00:01:30,276 --> 00:01:33,236
Speaker 1: business and finance news of the week. I'm Felix Amon

18
00:01:33,316 --> 00:01:37,436
Speaker 1: of Axios. I'm here with Emily Peck, also of Axios. Hello,

19
00:01:37,916 --> 00:01:40,756
Speaker 1: and Emily, how excited you are you about this week's show.

20
00:01:41,276 --> 00:01:44,076
Speaker 1: I am so excited. It's all coming back to me.

21
00:01:44,196 --> 00:01:48,796
Speaker 1: Everything I thought I forgot about IP I remembered. We

22
00:01:48,876 --> 00:01:53,556
Speaker 1: have the one and only Alexandrew Roberts aka Lex Lanham

23
00:01:53,596 --> 00:01:57,396
Speaker 1: on Twitter. Alex, introduce yourself. Who are you? I am

24
00:01:57,476 --> 00:02:01,196
Speaker 1: an Intellectual Property and trademark law professor at the University

25
00:02:01,196 --> 00:02:04,676
Speaker 1: of New Hampshire School of Law. You are everyone's favorite

26
00:02:04,996 --> 00:02:07,916
Speaker 1: IP expert. You are going to talk to us about

27
00:02:08,236 --> 00:02:12,076
Speaker 1: so many amazing bits and pieces of trademarks. We're going

28
00:02:12,116 --> 00:02:15,196
Speaker 1: to talk about social media. We're going to talk about

29
00:02:15,356 --> 00:02:17,476
Speaker 1: rights of publicity. We're going to talk about brands. We're

30
00:02:17,476 --> 00:02:20,396
Speaker 1: going to talk about counterfeits. We're going to talk about parodies.

31
00:02:20,396 --> 00:02:23,396
Speaker 1: We're going to talk about mischief. We're going to have

32
00:02:23,436 --> 00:02:26,556
Speaker 1: a Slate Plus segment about Felix the Cat and whether

33
00:02:26,596 --> 00:02:29,556
Speaker 1: I can use it as my Twitter avator. It's so

34
00:02:29,636 --> 00:02:31,956
Speaker 1: much fun. Honestly, this is the best show about IP

35
00:02:32,116 --> 00:02:34,676
Speaker 1: law you will listen to all months. I can guarantee it.

36
00:02:34,676 --> 00:02:40,196
Speaker 1: It's all coming up on Slate Money. The one thing

37
00:02:40,236 --> 00:02:42,556
Speaker 1: that Emily loves more than anything else on this show

38
00:02:42,636 --> 00:02:44,956
Speaker 1: is when I remind everyone that she used to work

39
00:02:44,956 --> 00:02:48,596
Speaker 1: at IP Law and Business magazine. He used to run it. Indeed,

40
00:02:48,676 --> 00:02:51,716
Speaker 1: I was the executive editor. So this is your show, Emily.

41
00:02:52,156 --> 00:02:54,276
Speaker 1: I'm turning the reins over to you for this one.

42
00:02:54,636 --> 00:02:58,636
Speaker 1: So man at you. Okay? Well, yes, I was on

43
00:02:58,796 --> 00:03:02,236
Speaker 1: the intellectual property beat from two thousand and one to

44
00:03:02,756 --> 00:03:06,876
Speaker 1: two thousand and six and then I really dropped off.

45
00:03:06,996 --> 00:03:09,356
Speaker 1: I was doing the reading preparing for this episod it

46
00:03:09,396 --> 00:03:12,676
Speaker 1: and I remember a trademark conference I went to in Toronto,

47
00:03:12,716 --> 00:03:16,036
Speaker 1: and then I was like, what even was a trademark conference?

48
00:03:16,036 --> 00:03:20,556
Speaker 1: Like I couldn't conceive of how that was anything, Like

49
00:03:21,956 --> 00:03:24,436
Speaker 1: that's really my favorite. Actually, I can't think of anything

50
00:03:24,436 --> 00:03:27,756
Speaker 1: more fun than the trade. Oh yeah, I mean wow,

51
00:03:27,796 --> 00:03:31,956
Speaker 1: people go crazy those IP lawyers. Alex, you sent us

52
00:03:31,956 --> 00:03:36,556
Speaker 1: a thing on You gave us some like reading because

53
00:03:36,556 --> 00:03:39,796
Speaker 1: you're a good university professor. One of the pieces of

54
00:03:39,836 --> 00:03:44,236
Speaker 1: reading you sent us included the sentence the ninth Circuit

55
00:03:44,356 --> 00:03:48,076
Speaker 1: sited hot digity dog in support if It's decision. And

56
00:03:48,196 --> 00:03:50,996
Speaker 1: now I just love IP law because it's like one

57
00:03:51,036 --> 00:03:53,636
Speaker 1: of my favorite sentences of all time. The main reason

58
00:03:53,716 --> 00:03:55,996
Speaker 1: I love IP law is because I follow you on Twitter.

59
00:03:56,036 --> 00:04:01,196
Speaker 1: You must follow on Twitter. You're at Lex Lanham, which

60
00:04:01,596 --> 00:04:04,716
Speaker 1: is what reading the LANDOM Act is that what it means?

61
00:04:05,156 --> 00:04:07,876
Speaker 1: Tell us what the Landom Act is. Sure, the landom

62
00:04:07,956 --> 00:04:12,916
Speaker 1: Act is the Trademark Act, and it covers trademark registration

63
00:04:12,996 --> 00:04:16,876
Speaker 1: and trademark infringement and dilution and even false advertising passing

64
00:04:16,876 --> 00:04:19,476
Speaker 1: off things like that. So everything that I study is

65
00:04:19,516 --> 00:04:24,236
Speaker 1: in this federal statute. Is it huge? No, it's not

66
00:04:24,316 --> 00:04:28,316
Speaker 1: huge at all. But it's this one relatively not huge

67
00:04:28,316 --> 00:04:32,596
Speaker 1: act which has spawned an entire industry basically exactly. So

68
00:04:32,836 --> 00:04:36,236
Speaker 1: you get many hundreds or thousands of cases applying and

69
00:04:36,316 --> 00:04:39,636
Speaker 1: interpreting it, and people get a trademark confused with copyright.

70
00:04:39,676 --> 00:04:42,796
Speaker 1: But trademark and copyright are not the same. That is

71
00:04:42,876 --> 00:04:45,036
Speaker 1: correct lane to us, and I think this is a

72
00:04:45,116 --> 00:04:51,076
Speaker 1: distinction people often mess up. Sure, Okay, So trademarks are

73
00:04:51,156 --> 00:04:54,676
Speaker 1: brand names. They protect the use of a name or

74
00:04:54,716 --> 00:04:57,116
Speaker 1: a logo or trade dress or something like that in

75
00:04:57,156 --> 00:05:01,196
Speaker 1: connection with the sale of goods or services in commerce. Right,

76
00:05:01,676 --> 00:05:07,276
Speaker 1: Copyright is something that protects expressive works, so original works

77
00:05:07,276 --> 00:05:09,836
Speaker 1: of authorship fixed in tangible medium. So if you're thinking

78
00:05:09,876 --> 00:05:13,356
Speaker 1: about you know, a painting of film, a television show

79
00:05:13,436 --> 00:05:16,756
Speaker 1: the actual content of it, then you're thinking about copyright.

80
00:05:17,396 --> 00:05:19,836
Speaker 1: And if you're thinking about the brand name or the

81
00:05:19,876 --> 00:05:22,876
Speaker 1: logo or something like that, then you're thinking about trademark law.

82
00:05:22,956 --> 00:05:25,676
Speaker 1: They are not synonymous. Then they are not at all interchangeable,

83
00:05:25,876 --> 00:05:29,396
Speaker 1: although often they intersect. The right of publicity is like

84
00:05:29,516 --> 00:05:31,836
Speaker 1: another thing entirely, which is neither of those two things.

85
00:05:31,996 --> 00:05:36,316
Speaker 1: That's right. Right of publicity is a way to protect

86
00:05:36,716 --> 00:05:41,996
Speaker 1: the use of somebody's name, image, or likeness, the commercial

87
00:05:42,076 --> 00:05:44,836
Speaker 1: use right. So if you're a celebrity, or even if

88
00:05:44,876 --> 00:05:48,396
Speaker 1: you're a regular person and your face gets used in

89
00:05:48,436 --> 00:05:51,476
Speaker 1: an advertisement or your name gets used or something like that,

90
00:05:52,316 --> 00:05:54,156
Speaker 1: then you might have a right a publicity cause of

91
00:05:54,156 --> 00:05:57,876
Speaker 1: action that's actually covered by state law. So almost every

92
00:05:57,916 --> 00:06:01,756
Speaker 1: state has either a statute, not almost every but more

93
00:06:01,796 --> 00:06:05,276
Speaker 1: than half of states have either a statute or common

94
00:06:05,356 --> 00:06:08,356
Speaker 1: law protection or both for wright a publicity. But if

95
00:06:08,396 --> 00:06:13,716
Speaker 1: someone someone put my photograph in a ad on Twitter, say,

96
00:06:13,756 --> 00:06:17,036
Speaker 1: and started using it to sell cat food, then I

97
00:06:17,036 --> 00:06:21,396
Speaker 1: could probably sue that person in many states, absolutely, And

98
00:06:21,636 --> 00:06:23,316
Speaker 1: that's going to be a place also where a couple

99
00:06:23,356 --> 00:06:26,356
Speaker 1: of these things intersect and overlap, right, because you might

100
00:06:26,396 --> 00:06:28,756
Speaker 1: have a right publicity claim based on the use of

101
00:06:28,796 --> 00:06:33,116
Speaker 1: your image in connection with commercial advertising, and you might

102
00:06:33,116 --> 00:06:35,036
Speaker 1: also have a copyright claim or the owner of the

103
00:06:35,076 --> 00:06:37,676
Speaker 1: photo that they're using might have a copyright claim. And

104
00:06:37,756 --> 00:06:40,556
Speaker 1: what's interesting to me about the difference between trademark and

105
00:06:40,756 --> 00:06:44,396
Speaker 1: copyright or one of the interesting things is that trademarks

106
00:06:44,436 --> 00:06:47,516
Speaker 1: are forever if you keep using them and you keep

107
00:06:47,516 --> 00:06:49,156
Speaker 1: them alive. You have to kind of like tend to

108
00:06:49,236 --> 00:06:51,596
Speaker 1: it like a little fire, but then it could be

109
00:06:51,796 --> 00:06:54,836
Speaker 1: it could be a flame and perpetuity. Whereas the copyright

110
00:06:55,396 --> 00:06:58,076
Speaker 1: you have it, you don't have to tend to it.

111
00:06:58,076 --> 00:07:02,596
Speaker 1: It's yours, but ultimately it will expire, although the time

112
00:07:02,596 --> 00:07:05,556
Speaker 1: it takes to expire is past your lifetime and keeps

113
00:07:05,556 --> 00:07:10,036
Speaker 1: getting extended by big corporations. That's right, and write a publicity.

114
00:07:10,036 --> 00:07:13,436
Speaker 1: It depends on the state. So some state protections extend

115
00:07:13,516 --> 00:07:16,516
Speaker 1: past death. Some states have posthumous protection for like a

116
00:07:16,636 --> 00:07:18,476
Speaker 1: hundred years, some have it form more like twenty years.

117
00:07:18,476 --> 00:07:20,556
Speaker 1: And some states say no, this is something that you

118
00:07:20,636 --> 00:07:24,396
Speaker 1: can protect while you're alive, and when you're dead, others

119
00:07:24,396 --> 00:07:27,916
Speaker 1: can go ahead and use your name or image. Yeah,

120
00:07:27,916 --> 00:07:30,196
Speaker 1: we were we were just talking on Twitter about this

121
00:07:30,196 --> 00:07:32,716
Speaker 1: whether Freda Carlo, who is dead, has a right of

122
00:07:32,756 --> 00:07:35,916
Speaker 1: publicity and it looks like she doesn't in Mexico, but

123
00:07:35,996 --> 00:07:40,156
Speaker 1: she does in California. And her photograph was being used

124
00:07:40,156 --> 00:07:44,596
Speaker 1: by our favorite alternative investment platform, master Works and one

125
00:07:44,636 --> 00:07:46,556
Speaker 1: of their ads on Twitter, and I'm like, are they

126
00:07:46,596 --> 00:07:48,556
Speaker 1: allowed to do this? And it kind of seemed like

127
00:07:48,796 --> 00:07:52,036
Speaker 1: probably not that they were doing it anyway, but this

128
00:07:52,116 --> 00:07:54,676
Speaker 1: is something which is big on Twitter. Like Twitter is

129
00:07:54,796 --> 00:08:01,036
Speaker 1: just the world's biggest trademark and copyright infringement machine. Like

130
00:08:01,436 --> 00:08:04,916
Speaker 1: everything you see on Twitter is like people are tweeting

131
00:08:04,916 --> 00:08:07,396
Speaker 1: out photographs that they don't have rights too. They're using

132
00:08:07,436 --> 00:08:10,476
Speaker 1: trademarks they don't have rights to, and that seems to

133
00:08:10,476 --> 00:08:14,836
Speaker 1: be fine, Like is that damaging anyone? It kind of

134
00:08:14,876 --> 00:08:18,636
Speaker 1: depends who's the speaker, who's the user, right, So a

135
00:08:18,756 --> 00:08:20,996
Speaker 1: lot of the kinds of uses that you're thinking about

136
00:08:21,036 --> 00:08:22,676
Speaker 1: are going to be fair uses. We have fair use

137
00:08:22,756 --> 00:08:26,916
Speaker 1: doctrines in all three of those areas. And when you

138
00:08:26,956 --> 00:08:29,556
Speaker 1: are just a regular person with a regular sized following,

139
00:08:30,436 --> 00:08:33,436
Speaker 1: you can always reference trademarks. For example, that's always going

140
00:08:33,436 --> 00:08:35,076
Speaker 1: to be a fair use to say I got new

141
00:08:35,156 --> 00:08:37,636
Speaker 1: Nike issues. I'm so excited about them stuff like that.

142
00:08:38,076 --> 00:08:41,436
Speaker 1: I think there's some interesting copyright questions around fair use

143
00:08:41,556 --> 00:08:44,396
Speaker 1: when we see use on social media, whether something is

144
00:08:44,476 --> 00:08:47,436
Speaker 1: transformative what you're kind of adding to it. But the

145
00:08:47,556 --> 00:08:50,316
Speaker 1: rules are very different when you are a commercial entity,

146
00:08:50,396 --> 00:08:53,996
Speaker 1: and when what you're doing looks more like advertising, or

147
00:08:54,076 --> 00:08:57,236
Speaker 1: when it's like specifically an ad, a promoted tweet, than

148
00:08:57,396 --> 00:09:01,196
Speaker 1: presumably the bar is much loa I guess not quite

149
00:09:01,836 --> 00:09:04,356
Speaker 1: around it would be. But but you're you're much more

150
00:09:04,396 --> 00:09:07,276
Speaker 1: likely to be infringing that way because that is an

151
00:09:07,356 --> 00:09:11,156
Speaker 1: explicitly commercial activity. You're engaging it, that's right. But if

152
00:09:11,196 --> 00:09:14,636
Speaker 1: you are a brand with millions of followers, whether you

153
00:09:14,756 --> 00:09:17,116
Speaker 1: label something an AD and whether it gets becomes a

154
00:09:17,116 --> 00:09:19,556
Speaker 1: promoted tweet or whether you just kind of push it

155
00:09:19,596 --> 00:09:21,596
Speaker 1: out to your millions of followers, I don't think makes

156
00:09:21,596 --> 00:09:24,796
Speaker 1: a huge difference from an infringement perspective. I thought there

157
00:09:24,836 --> 00:09:28,916
Speaker 1: was an interesting case where this was blurry recently, the

158
00:09:28,996 --> 00:09:32,396
Speaker 1: comedian Leslie Jones. She tweets out like videos of herself

159
00:09:32,916 --> 00:09:35,916
Speaker 1: watching the Olympics, and she did it during the election

160
00:09:35,956 --> 00:09:40,796
Speaker 1: watching Steve Cornaki and it's always hilarious and funny, and

161
00:09:40,836 --> 00:09:42,636
Speaker 1: I guess she was doing this with the Olympics, and

162
00:09:42,836 --> 00:09:46,676
Speaker 1: NBC was upset about it and told her to stop,

163
00:09:47,076 --> 00:09:49,716
Speaker 1: which I thought was just I mean, I guess it's

164
00:09:49,756 --> 00:09:52,956
Speaker 1: their right to tell her to stop, but was dumb

165
00:09:53,116 --> 00:09:58,116
Speaker 1: because she is making the Olympics interesting which NBC would

166
00:09:58,236 --> 00:10:02,196
Speaker 1: benefit only benefit from. So that seemed like like it

167
00:10:02,196 --> 00:10:04,276
Speaker 1: seems like a lot of the time the issues that

168
00:10:04,316 --> 00:10:07,676
Speaker 1: arise are because companies are overly protective of their ip

169
00:10:08,076 --> 00:10:11,476
Speaker 1: IP and their brand ends, and sometimes they overstep the

170
00:10:11,516 --> 00:10:14,436
Speaker 1: protection where it could be to their benefit. Yeah, I

171
00:10:14,516 --> 00:10:18,396
Speaker 1: have a question about that, which is when this kind

172
00:10:18,436 --> 00:10:20,076
Speaker 1: of thing happens, and you see like the New York

173
00:10:20,116 --> 00:10:22,156
Speaker 1: Times do it a lot. When people like quote New

174
00:10:22,236 --> 00:10:24,996
Speaker 1: York Times headlines and stuff, there's something which you hear

175
00:10:25,036 --> 00:10:29,716
Speaker 1: which is basically, it's not you, we don't particularly mind

176
00:10:29,876 --> 00:10:33,876
Speaker 1: you doing this, but if we just allow people to

177
00:10:33,956 --> 00:10:38,196
Speaker 1: do this, then that would set a precedent, and then

178
00:10:38,236 --> 00:10:41,116
Speaker 1: if someone did something that actually did damage us or

179
00:10:41,156 --> 00:10:43,116
Speaker 1: that we didn't want them to do, it would be

180
00:10:43,156 --> 00:10:46,636
Speaker 1: harder for us to enforce it. Is that true, That's

181
00:10:46,676 --> 00:10:49,996
Speaker 1: not particularly true, at least from a trademark perspective. So

182
00:10:50,076 --> 00:10:53,676
Speaker 1: the kind of duty to police gets really overblown when

183
00:10:53,836 --> 00:10:56,676
Speaker 1: companies make that argument, you know, we have to enforce

184
00:10:56,756 --> 00:10:58,876
Speaker 1: this consistently or else we'll lose it. We won't be

185
00:10:58,916 --> 00:11:03,156
Speaker 1: able to enforce it. That is typically a justification for

186
00:11:03,316 --> 00:11:07,636
Speaker 1: unnecessary over enforcement or bullying. So you don't lose trademark

187
00:11:07,716 --> 00:11:10,956
Speaker 1: rights unless you really have stepped away and are doing

188
00:11:10,996 --> 00:11:15,036
Speaker 1: absolutely nothing to control use by licensees or to police

189
00:11:15,516 --> 00:11:21,396
Speaker 1: lots of really infringing harmful uses. What about like trademarks

190
00:11:21,436 --> 00:11:26,036
Speaker 1: like Kleenex or Google or Xerox, things that become like

191
00:11:26,156 --> 00:11:29,036
Speaker 1: generic in the language, Like, what can a company do

192
00:11:29,156 --> 00:11:32,316
Speaker 1: about that? Do they still have their trademark? Right? Yeah,

193
00:11:32,356 --> 00:11:36,396
Speaker 1: So what matters with genero side is really what consumers understand,

194
00:11:36,476 --> 00:11:38,996
Speaker 1: and it's not how consumers use the term. So we

195
00:11:39,036 --> 00:11:42,036
Speaker 1: could survey a bunch of people and they could all say, Yeah,

196
00:11:42,116 --> 00:11:45,396
Speaker 1: I use Kleenex, but but I know it to be

197
00:11:45,436 --> 00:11:47,396
Speaker 1: a brand. I use Kleenex to refer to puffs or

198
00:11:47,436 --> 00:11:50,196
Speaker 1: any brand of tissues that I'm using. But I know

199
00:11:50,356 --> 00:11:54,196
Speaker 1: that Kleenex is a trademark and when it's used, it

200
00:11:54,236 --> 00:11:56,756
Speaker 1: means that the product comes from one particular company. So

201
00:11:56,916 --> 00:11:59,436
Speaker 1: we wouldn't have genero side in a case like that.

202
00:12:00,396 --> 00:12:03,036
Speaker 1: What companies do when they're concerned about losing their marks.

203
00:12:03,076 --> 00:12:05,076
Speaker 1: To genero side is they'll kind of do like an

204
00:12:05,236 --> 00:12:08,956
Speaker 1: campaign to raise awareness, which can feel really silly. Right,

205
00:12:09,156 --> 00:12:14,076
Speaker 1: So we've seen Xerox duties and Nintendo and Tater Tots

206
00:12:14,116 --> 00:12:16,956
Speaker 1: and all kinds of brands have like taken out colorful

207
00:12:16,996 --> 00:12:19,716
Speaker 1: ads saying, hey, we just want to remind you we

208
00:12:19,836 --> 00:12:22,556
Speaker 1: are the only company that can make Tater Tots or

209
00:12:22,596 --> 00:12:25,756
Speaker 1: that can make Kleenex. And I think sometimes to consumers

210
00:12:25,756 --> 00:12:29,156
Speaker 1: that feels like, are you policing my language and telling

211
00:12:29,196 --> 00:12:31,436
Speaker 1: me what to say? But what they're really focused on

212
00:12:31,556 --> 00:12:34,156
Speaker 1: is we just need you to have that information. We

213
00:12:34,236 --> 00:12:37,676
Speaker 1: need you to be aware that not all tissues are Kleenex,

214
00:12:37,716 --> 00:12:39,196
Speaker 1: and as long as we can get that, we can

215
00:12:39,236 --> 00:12:42,036
Speaker 1: probably hang onto our mark. And that came up in

216
00:12:42,036 --> 00:12:45,116
Speaker 1: the Google case too, Right, everybody uses Google as a verb,

217
00:12:45,276 --> 00:12:47,556
Speaker 1: as a noun, as an adjective in every way to

218
00:12:47,636 --> 00:12:49,556
Speaker 1: me and I look something up on the Internet. But

219
00:12:49,596 --> 00:12:51,796
Speaker 1: if you ask them, they're like, no, no, Google is

220
00:12:51,836 --> 00:12:54,396
Speaker 1: a brand. I know. Yeah, so it's both desirable and

221
00:12:54,556 --> 00:12:57,756
Speaker 1: undesirable kind of thing to happen. Brand. But also, like,

222
00:12:57,956 --> 00:13:01,876
Speaker 1: is this part of the jurisprudence that if people stop

223
00:13:02,036 --> 00:13:06,276
Speaker 1: knowing that it's a company and the trademark, Like the

224
00:13:06,356 --> 00:13:08,396
Speaker 1: judge will go out and sort of take an opinion

225
00:13:08,436 --> 00:13:10,596
Speaker 1: poll basically and say do you know this? And then

226
00:13:10,596 --> 00:13:14,396
Speaker 1: if they if people go, I didn't know that. Like,

227
00:13:14,676 --> 00:13:18,476
Speaker 1: what's a good example of actual genericide where something became

228
00:13:18,556 --> 00:13:20,596
Speaker 1: so much a part of the language that it stopped

229
00:13:20,596 --> 00:13:24,956
Speaker 1: being a trademark. Murphy Bad sing or sewing machines, Yeah,

230
00:13:25,076 --> 00:13:29,956
Speaker 1: shredded wheat. So things that were once marks that no

231
00:13:29,996 --> 00:13:32,276
Speaker 1: longer function as marks because people use them as like

232
00:13:32,316 --> 00:13:35,116
Speaker 1: a whole category term, which again, like you kind of

233
00:13:35,156 --> 00:13:38,796
Speaker 1: want as a brand the marketer like nothing better than

234
00:13:38,876 --> 00:13:43,036
Speaker 1: like everyone's saying, oh, go google it, Like that's desirable, right,

235
00:13:43,076 --> 00:13:46,316
Speaker 1: It shows you've saturated the market, you are the name

236
00:13:46,396 --> 00:13:48,996
Speaker 1: of the thing you make. That's that's not right, but

237
00:13:49,036 --> 00:13:52,116
Speaker 1: it's risky, right. So there was a recent case over

238
00:13:52,196 --> 00:13:54,916
Speaker 1: Comic Con that was kind of a close call. When

239
00:13:54,956 --> 00:13:56,836
Speaker 1: we've talked about in my class is popsicle. So you

240
00:13:56,836 --> 00:14:00,556
Speaker 1: see popsicle using like original brand popsicle. A lot of

241
00:14:00,556 --> 00:14:03,396
Speaker 1: these marks are right on the margin and we're not

242
00:14:03,436 --> 00:14:05,516
Speaker 1: going to have cases about them because they don't want

243
00:14:05,556 --> 00:14:08,836
Speaker 1: to enforce in a way that gets another party to say, actually,

244
00:14:08,916 --> 00:14:12,156
Speaker 1: you're registration should be canceled because your mark has become generic.

245
00:14:12,436 --> 00:14:15,516
Speaker 1: We're going to prove it with survey data. So those

246
00:14:16,236 --> 00:14:20,276
Speaker 1: mark owners really have to proceed with caution. So is

247
00:14:20,316 --> 00:14:24,116
Speaker 1: this also why so many brands slap that little TM

248
00:14:24,156 --> 00:14:27,636
Speaker 1: symbol all over everything? It's that part of just reminding

249
00:14:27,636 --> 00:14:30,276
Speaker 1: people that brand is a trademark. Is there some other

250
00:14:30,316 --> 00:14:32,756
Speaker 1: reason to do that? Yeah, So the circle R is

251
00:14:32,756 --> 00:14:35,316
Speaker 1: what you use when you have a registration, and that

252
00:14:35,516 --> 00:14:37,676
Speaker 1: does I mean, I think consumers A lot of consumers

253
00:14:37,756 --> 00:14:40,436
Speaker 1: know what that means. So that helps send that message

254
00:14:40,556 --> 00:14:44,436
Speaker 1: this is a trademark, right. The TM actually just about

255
00:14:44,436 --> 00:14:46,996
Speaker 1: anybody can use and it signals like we think this

256
00:14:47,076 --> 00:14:50,196
Speaker 1: is our trademark and we're working on getting making it

257
00:14:50,276 --> 00:14:53,156
Speaker 1: our trademark and conditioning consumers to understand that this is

258
00:14:53,156 --> 00:14:55,676
Speaker 1: a source indicator for our brand. So the TM is

259
00:14:55,676 --> 00:15:00,596
Speaker 1: a little bit less meaningful, but both of them serves

260
00:15:00,676 --> 00:15:03,596
Speaker 1: like in terms of the utility, the reason why they

261
00:15:03,636 --> 00:15:09,876
Speaker 1: appear everywhere is precisely just to protect against scenariosite. There's

262
00:15:09,916 --> 00:15:12,556
Speaker 1: no other reason to do it to protect against used

263
00:15:12,556 --> 00:15:16,196
Speaker 1: by others. So if a competitor sees something on packaging

264
00:15:16,236 --> 00:15:18,516
Speaker 1: and says, hey, that's a great descriptive term for our product,

265
00:15:18,556 --> 00:15:21,156
Speaker 1: and we use that too. Looks like we can't because

266
00:15:21,156 --> 00:15:23,156
Speaker 1: this company is using it as a trademark and not

267
00:15:23,196 --> 00:15:28,076
Speaker 1: just as a descriptive phrase. My favorite example of this

268
00:15:28,236 --> 00:15:31,276
Speaker 1: was when master Card decided to change its logo. It

269
00:15:31,396 --> 00:15:34,116
Speaker 1: used to be an orange circle in the yellow circle

270
00:15:34,156 --> 00:15:37,156
Speaker 1: overlapping them in the said master Card underneath it. And

271
00:15:37,236 --> 00:15:41,916
Speaker 1: then they decided that this was so universally recognizable that

272
00:15:41,956 --> 00:15:44,276
Speaker 1: he didn't need to use the word master card anymore,

273
00:15:44,356 --> 00:15:46,236
Speaker 1: and they would just have two circles and it would

274
00:15:46,236 --> 00:15:52,316
Speaker 1: be this beautiful, clean, perfect simple logo. And then it

275
00:15:52,396 --> 00:15:57,396
Speaker 1: was it was released into the world, and every time

276
00:15:57,436 --> 00:15:59,796
Speaker 1: you saw that logo, it had this little buzzing bee

277
00:15:59,916 --> 00:16:02,316
Speaker 1: to the top right of it saying like registered trademark

278
00:16:02,316 --> 00:16:05,836
Speaker 1: because they couldn't get rid of it. Yeah, I think

279
00:16:05,836 --> 00:16:07,756
Speaker 1: we see that a lot. So we get a kind

280
00:16:07,796 --> 00:16:11,236
Speaker 1: of combo composite at mark and then the brand says, hey,

281
00:16:11,316 --> 00:16:15,476
Speaker 1: let's condition consumers to understand like, just this really basic

282
00:16:15,516 --> 00:16:19,916
Speaker 1: representation also indicates that it's a MasterCard product or whatever.

283
00:16:20,236 --> 00:16:22,836
Speaker 1: So we're working up to being able to use that

284
00:16:22,876 --> 00:16:25,316
Speaker 1: by itself. So Snickers a couple years ago did a

285
00:16:25,316 --> 00:16:27,636
Speaker 1: promo where they had the regular packaging, but they put

286
00:16:27,636 --> 00:16:30,116
Speaker 1: different words instead of Snickers, So the bars didn't say

287
00:16:30,116 --> 00:16:33,116
Speaker 1: Snickers at all. They said like angry or whatever, you know,

288
00:16:33,156 --> 00:16:36,876
Speaker 1: some cutes terms that we're supposed to reference their ad campaign.

289
00:16:37,596 --> 00:16:40,836
Speaker 1: And I think what that does is like reinforce consumers

290
00:16:40,836 --> 00:16:44,756
Speaker 1: recognize our trade dress, like our packaging colors and font

291
00:16:44,796 --> 00:16:48,236
Speaker 1: and things like that, even without the words Snickers. So

292
00:16:48,356 --> 00:16:51,276
Speaker 1: now if somebody else tries to use something really similar,

293
00:16:51,316 --> 00:16:53,276
Speaker 1: we can go to court and say, look, we don't

294
00:16:53,316 --> 00:16:56,116
Speaker 1: even need to have the word Snickers on the packaging

295
00:16:56,316 --> 00:17:00,556
Speaker 1: for consumers to get this. Sometimes companies let these trademarks

296
00:17:01,116 --> 00:17:05,636
Speaker 1: die and there's a whole business in reviving them. Hey,

297
00:17:05,676 --> 00:17:09,036
Speaker 1: there's a business in reviving them. B this is coming

298
00:17:09,396 --> 00:17:12,596
Speaker 1: now because like the Washington football team changed its name.

299
00:17:12,796 --> 00:17:16,156
Speaker 1: What are they called, oh, Commanders, the Commanders. Yeah. So

300
00:17:16,196 --> 00:17:18,916
Speaker 1: now the question is like what happens to that trademark

301
00:17:18,916 --> 00:17:21,716
Speaker 1: because not only is it not being used and dead,

302
00:17:21,756 --> 00:17:24,876
Speaker 1: but it's offensive to many people. And this holds for

303
00:17:24,996 --> 00:17:28,796
Speaker 1: like the ant Jemima trademark and what was it Uncle

304
00:17:28,836 --> 00:17:31,156
Speaker 1: Ben's right, So this is like a whole new issue

305
00:17:31,236 --> 00:17:34,716
Speaker 1: kind of cropping up now. Yeah, and so like, I

306
00:17:34,756 --> 00:17:38,556
Speaker 1: guess two questions, Like, first is if I stop using

307
00:17:38,596 --> 00:17:42,236
Speaker 1: my trademark, then obviously, given the whole like use it

308
00:17:42,316 --> 00:17:46,476
Speaker 1: or lose it thing, it's no longer mine. But then

309
00:17:46,796 --> 00:17:52,316
Speaker 1: what's the mechanism whereby the legal system works out who

310
00:17:52,436 --> 00:17:55,436
Speaker 1: gets to have it next? Like, and then like, is

311
00:17:55,436 --> 00:17:59,276
Speaker 1: there a mechanism where the legal systems can say, well, actually,

312
00:17:59,356 --> 00:18:02,596
Speaker 1: no one can get it next because it's offensive, not

313
00:18:02,676 --> 00:18:06,076
Speaker 1: because it's offensive, but potentially because it still creates a

314
00:18:06,116 --> 00:18:09,036
Speaker 1: likelihood of confusion with the prior owner right. So, trade

315
00:18:09,156 --> 00:18:12,116
Speaker 1: mark rats in the United States are based on use

316
00:18:12,156 --> 00:18:14,796
Speaker 1: in commerce. That's how you acquire rights, and when you

317
00:18:14,796 --> 00:18:16,916
Speaker 1: get a registration, that's just supposed to be kind of

318
00:18:16,956 --> 00:18:21,196
Speaker 1: a formal recognition of the rights that you get through use.

319
00:18:22,436 --> 00:18:24,996
Speaker 1: So when somebody stops using a mark for a couple

320
00:18:25,036 --> 00:18:26,876
Speaker 1: of years and they don't show that they have an

321
00:18:26,876 --> 00:18:29,436
Speaker 1: intent to resume use in the near future, they don't

322
00:18:29,436 --> 00:18:32,316
Speaker 1: have a specific excuse like we're waiting for this component

323
00:18:32,316 --> 00:18:34,636
Speaker 1: to be available, or there's an embargo with this country

324
00:18:34,716 --> 00:18:38,396
Speaker 1: or something like that, then that mark is deemed abandoned.

325
00:18:38,756 --> 00:18:41,756
Speaker 1: They won't have any more rights, and somebody else can

326
00:18:41,796 --> 00:18:46,556
Speaker 1: come along and start using it and seek protection for it. Right,

327
00:18:46,596 --> 00:18:48,596
Speaker 1: So the question about who gets it is really like

328
00:18:49,316 --> 00:18:53,636
Speaker 1: whoever gets there first. But there's a doctrine called residual

329
00:18:53,636 --> 00:18:57,676
Speaker 1: goodwill that says, like, listen, this mark is famous in

330
00:18:57,716 --> 00:19:00,756
Speaker 1: this country. And maybe not everybody knows about the abandonment,

331
00:19:00,756 --> 00:19:02,916
Speaker 1: but everybody knows this mark. And so if you come

332
00:19:02,916 --> 00:19:08,276
Speaker 1: along and start using it for something that's related but different,

333
00:19:09,276 --> 00:19:11,436
Speaker 1: you're going to be free riding on that goodwill that exists,

334
00:19:11,436 --> 00:19:14,156
Speaker 1: and you're potentially going to deceive consumers. Right. So if

335
00:19:14,156 --> 00:19:17,796
Speaker 1: a Jemima, if that brand announces we're not using this

336
00:19:17,876 --> 00:19:21,316
Speaker 1: mark anymore because we've come to understand that it's really problematic,

337
00:19:21,596 --> 00:19:23,596
Speaker 1: and then a week later somebody picks it up and

338
00:19:23,596 --> 00:19:27,716
Speaker 1: starts using it for maple syrup or some other breakfast food,

339
00:19:27,876 --> 00:19:29,996
Speaker 1: then we can expect a good amount of consumers to

340
00:19:30,116 --> 00:19:33,396
Speaker 1: think that it still comes from the old brand. Right.

341
00:19:33,716 --> 00:19:36,476
Speaker 1: But then the question is who's going to stop them,

342
00:19:36,796 --> 00:19:40,716
Speaker 1: because it might not be the USPTO. USPTO might say, well,

343
00:19:40,996 --> 00:19:44,236
Speaker 1: nobody else currently has trademark rights, so you can have them.

344
00:19:44,836 --> 00:19:47,956
Speaker 1: So most of the case law comes from the prior

345
00:19:48,036 --> 00:19:52,996
Speaker 1: owner suing for infringement based on those rights that come

346
00:19:53,036 --> 00:19:55,836
Speaker 1: from residual goodwill. But if you're a mark owner who's

347
00:19:55,876 --> 00:19:59,356
Speaker 1: like just announced to the world we are stepping away

348
00:19:59,356 --> 00:20:02,356
Speaker 1: from this mark, we know it to be harmful, then

349
00:20:02,396 --> 00:20:05,836
Speaker 1: it feels like kind of tricky to enforce those rights.

350
00:20:06,276 --> 00:20:08,156
Speaker 1: So I think we've seen brands do a couple of

351
00:20:08,156 --> 00:20:11,596
Speaker 1: different things, Like the Cleveland Indians they said they weren't

352
00:20:11,596 --> 00:20:15,036
Speaker 1: going to use Chief wah Who anymore that mascot based

353
00:20:15,036 --> 00:20:18,196
Speaker 1: on some harmful stereotypes on the uniforms, but they were

354
00:20:18,276 --> 00:20:21,916
Speaker 1: kind of low key still using it for merchandise right

355
00:20:22,876 --> 00:20:24,916
Speaker 1: and an Jemima's I think is still using in some

356
00:20:24,956 --> 00:20:28,356
Speaker 1: other countries or using on the back of the products.

357
00:20:28,716 --> 00:20:31,476
Speaker 1: And then Uncle Ben's they changed it to Ben's original,

358
00:20:31,476 --> 00:20:33,876
Speaker 1: which is still similar enough that they can probably enforce

359
00:20:33,916 --> 00:20:36,836
Speaker 1: those rights. So they're kind of we're seeing some ways

360
00:20:36,876 --> 00:20:40,356
Speaker 1: that those who are stepping away from a mark are

361
00:20:40,436 --> 00:20:43,716
Speaker 1: still trying to hang on to some rights. One thing

362
00:20:43,756 --> 00:20:45,876
Speaker 1: that was interesting to me in doing the reading catching

363
00:20:45,916 --> 00:20:49,516
Speaker 1: up from two thousand and five was the Washington football

364
00:20:49,556 --> 00:20:52,476
Speaker 1: team name, because when I was covering IP there was

365
00:20:52,676 --> 00:20:57,036
Speaker 1: a lawsuit over the trademark because some Native American groups

366
00:20:57,076 --> 00:21:00,076
Speaker 1: said you can't trademark something offensive, which I guess is

367
00:21:00,116 --> 00:21:02,716
Speaker 1: in the land I'm act, But when I was reading

368
00:21:02,996 --> 00:21:05,676
Speaker 1: last night, was that that went away because of some

369
00:21:05,756 --> 00:21:08,316
Speaker 1: other case where they said, oh, yeah, you can actually

370
00:21:08,836 --> 00:21:11,076
Speaker 1: trade mark things that are offensive, so can you? You

371
00:21:11,076 --> 00:21:14,636
Speaker 1: can trademark things that are offensive now? Absolutely So. The

372
00:21:14,716 --> 00:21:17,596
Speaker 1: landmark used to contain a bar on registration of offensive

373
00:21:17,716 --> 00:21:22,116
Speaker 1: or scandalous or marks that disparage a particular group. And

374
00:21:22,196 --> 00:21:24,036
Speaker 1: so for a long time, like you know, the band

375
00:21:24,036 --> 00:21:27,156
Speaker 1: Buttle Servers, they didn't have a registration for their trademark,

376
00:21:27,196 --> 00:21:30,996
Speaker 1: even though that's a pretty well known mark, right. Um So,

377
00:21:31,196 --> 00:21:35,276
Speaker 1: in a pair of cases, the Supreme Court overturned that

378
00:21:35,316 --> 00:21:39,236
Speaker 1: bar on registration essentially based on the First Amendment, based

379
00:21:39,276 --> 00:21:42,516
Speaker 1: on the idea that this is speech in addition to

380
00:21:42,636 --> 00:21:47,756
Speaker 1: being commercial, and we can't regulate that speech in these

381
00:21:47,836 --> 00:21:51,156
Speaker 1: kind of specific ways that we've been doing. That's an

382
00:21:51,196 --> 00:21:54,156
Speaker 1: anti cancel culture ruling. I feel like people don't know

383
00:21:54,236 --> 00:21:56,836
Speaker 1: that this is amazing. This went all the way to

384
00:21:56,876 --> 00:22:00,636
Speaker 1: the Supreme Court, who which mark was being instigated in

385
00:22:00,676 --> 00:22:03,756
Speaker 1: front of scouts. Yeah. So the first one was the Slants,

386
00:22:04,156 --> 00:22:07,876
Speaker 1: which is a band made up of Asian American artists,

387
00:22:08,196 --> 00:22:11,396
Speaker 1: and they shows that mark as kind of a reclaiming

388
00:22:11,436 --> 00:22:13,836
Speaker 1: of a slur, you know, something that was tongue in cheek.

389
00:22:14,116 --> 00:22:17,676
Speaker 1: So it wasn't about a bunch of white people using

390
00:22:17,716 --> 00:22:21,116
Speaker 1: a mark that is disparaging to a group that has

391
00:22:21,116 --> 00:22:23,796
Speaker 1: been marginalized. In said, it was members of that marginalized

392
00:22:23,796 --> 00:22:25,996
Speaker 1: group trying to take it back. And when they applied

393
00:22:26,036 --> 00:22:29,716
Speaker 1: to register at the USPTO said, we think that is

394
00:22:29,796 --> 00:22:33,196
Speaker 1: an offensive term. And here's some Urban Dictionary entries and

395
00:22:33,276 --> 00:22:36,476
Speaker 1: here's one time that Miley Cyrus said something offensive. So

396
00:22:36,516 --> 00:22:38,996
Speaker 1: the band appealed that. They appealed it all the way

397
00:22:39,116 --> 00:22:41,196
Speaker 1: up and they were able to succeed on this First

398
00:22:41,196 --> 00:22:48,716
Speaker 1: Amendment based argument with some strange bad fellows. Alexandrew Roberts,

399
00:22:48,716 --> 00:22:50,796
Speaker 1: thank you for coming on this, Joe, this is so

400
00:22:50,916 --> 00:22:53,116
Speaker 1: much fun. It was I've been looking forward to this

401
00:22:53,196 --> 00:22:56,516
Speaker 1: for so long and it totally lived up to all expectations.

402
00:22:56,556 --> 00:23:00,116
Speaker 1: You are a superstar. My pleasure. And yet, thank you

403
00:23:00,156 --> 00:23:02,396
Speaker 1: for listening for Slate Money and we will be back

404
00:23:03,036 --> 00:23:11,276
Speaker 1: next week with even more Slate Money. M h. That

405
00:23:11,476 --> 00:23:15,236
Speaker 1: was the Slight Money podcast. You can find it wherever,