Speaker 1: Pushkin. Hey, it's Jacob Goldstein and this is the feed
Speaker 1: where you normally hear what's your problem, But today we're
Speaker 1: playing a preview from another podcast. The show is called
Speaker 1: Slate Money. It's made by Slate and it's about wait
Speaker 1: for it money. Every week, Felix Salmon and Emily Peck
Speaker 1: of Axios and Slate Paydirt columnist Elizabeth Spires chat about
Speaker 1: things like Bitcoin and the possible sale of Twitter, and
Speaker 1: the standoff between Disney and the State of Florida. Also,
Speaker 1: they interview smart, interesting people. In the episode You're about
Speaker 1: to Hear, Felix and Emily sit down with Alexandra Roberts,
Speaker 1: a law professor who was an expert in trademarks. Truly
Speaker 1: an underrated subject trademarks. On the show, they talk about
Speaker 1: everything from counterfeits to parodies to the story of what
Speaker 1: happened when MasterCard tried to change its logo. Okay, here
Speaker 1: is the preview of Slate Money. Hello, Welcome to the
Speaker 1: ip Lisnia episode of Slate Money, your guy to the
Speaker 1: business and finance news of the week. I'm Felix Amon
Speaker 1: of Axios. I'm here with Emily Peck, also of Axios. Hello,
Speaker 1: and Emily, how excited you are you about this week's show.
Speaker 1: I am so excited. It's all coming back to me.
Speaker 1: Everything I thought I forgot about IP I remembered. We
Speaker 1: have the one and only Alexandrew Roberts aka Lex Lanham
Speaker 1: on Twitter. Alex, introduce yourself. Who are you? I am
Speaker 1: an Intellectual Property and trademark law professor at the University
Speaker 1: of New Hampshire School of Law. You are everyone's favorite
Speaker 1: IP expert. You are going to talk to us about
Speaker 1: so many amazing bits and pieces of trademarks. We're going
Speaker 1: to talk about social media. We're going to talk about
Speaker 1: rights of publicity. We're going to talk about brands. We're
Speaker 1: going to talk about counterfeits. We're going to talk about parodies.
Speaker 1: We're going to talk about mischief. We're going to have
Speaker 1: a Slate Plus segment about Felix the Cat and whether
Speaker 1: I can use it as my Twitter avator. It's so
Speaker 1: much fun. Honestly, this is the best show about IP
Speaker 1: law you will listen to all months. I can guarantee it.
Speaker 1: It's all coming up on Slate Money. The one thing
Speaker 1: that Emily loves more than anything else on this show
Speaker 1: is when I remind everyone that she used to work
Speaker 1: at IP Law and Business magazine. He used to run it. Indeed,
Speaker 1: I was the executive editor. So this is your show, Emily.
Speaker 1: I'm turning the reins over to you for this one.
Speaker 1: So man at you. Okay? Well, yes, I was on
Speaker 1: the intellectual property beat from two thousand and one to
Speaker 1: two thousand and six and then I really dropped off.
Speaker 1: I was doing the reading preparing for this episod it
Speaker 1: and I remember a trademark conference I went to in Toronto,
Speaker 1: and then I was like, what even was a trademark conference?
Speaker 1: Like I couldn't conceive of how that was anything, Like
Speaker 1: that's really my favorite. Actually, I can't think of anything
Speaker 1: more fun than the trade. Oh yeah, I mean wow,
Speaker 1: people go crazy those IP lawyers. Alex, you sent us
Speaker 1: a thing on You gave us some like reading because
Speaker 1: you're a good university professor. One of the pieces of
Speaker 1: reading you sent us included the sentence the ninth Circuit
Speaker 1: sited hot digity dog in support if It's decision. And
Speaker 1: now I just love IP law because it's like one
Speaker 1: of my favorite sentences of all time. The main reason
Speaker 1: I love IP law is because I follow you on Twitter.
Speaker 1: You must follow on Twitter. You're at Lex Lanham, which
Speaker 1: is what reading the LANDOM Act is that what it means?
Speaker 1: Tell us what the Landom Act is. Sure, the landom
Speaker 1: Act is the Trademark Act, and it covers trademark registration
Speaker 1: and trademark infringement and dilution and even false advertising passing
Speaker 1: off things like that. So everything that I study is
Speaker 1: in this federal statute. Is it huge? No, it's not
Speaker 1: huge at all. But it's this one relatively not huge
Speaker 1: act which has spawned an entire industry basically exactly. So
Speaker 1: you get many hundreds or thousands of cases applying and
Speaker 1: interpreting it, and people get a trademark confused with copyright.
Speaker 1: But trademark and copyright are not the same. That is
Speaker 1: correct lane to us, and I think this is a
Speaker 1: distinction people often mess up. Sure, Okay, So trademarks are
Speaker 1: brand names. They protect the use of a name or
Speaker 1: a logo or trade dress or something like that in
Speaker 1: connection with the sale of goods or services in commerce. Right,
Speaker 1: Copyright is something that protects expressive works, so original works
Speaker 1: of authorship fixed in tangible medium. So if you're thinking
Speaker 1: about you know, a painting of film, a television show
Speaker 1: the actual content of it, then you're thinking about copyright.
Speaker 1: And if you're thinking about the brand name or the
Speaker 1: logo or something like that, then you're thinking about trademark law.
Speaker 1: They are not synonymous. Then they are not at all interchangeable,
Speaker 1: although often they intersect. The right of publicity is like
Speaker 1: another thing entirely, which is neither of those two things.
Speaker 1: That's right. Right of publicity is a way to protect
Speaker 1: the use of somebody's name, image, or likeness, the commercial
Speaker 1: use right. So if you're a celebrity, or even if
Speaker 1: you're a regular person and your face gets used in
Speaker 1: an advertisement or your name gets used or something like that,
Speaker 1: then you might have a right a publicity cause of
Speaker 1: action that's actually covered by state law. So almost every
Speaker 1: state has either a statute, not almost every but more
Speaker 1: than half of states have either a statute or common
Speaker 1: law protection or both for wright a publicity. But if
Speaker 1: someone someone put my photograph in a ad on Twitter, say,
Speaker 1: and started using it to sell cat food, then I
Speaker 1: could probably sue that person in many states, absolutely, And
Speaker 1: that's going to be a place also where a couple
Speaker 1: of these things intersect and overlap, right, because you might
Speaker 1: have a right publicity claim based on the use of
Speaker 1: your image in connection with commercial advertising, and you might
Speaker 1: also have a copyright claim or the owner of the
Speaker 1: photo that they're using might have a copyright claim. And
Speaker 1: what's interesting to me about the difference between trademark and
Speaker 1: copyright or one of the interesting things is that trademarks
Speaker 1: are forever if you keep using them and you keep
Speaker 1: them alive. You have to kind of like tend to
Speaker 1: it like a little fire, but then it could be
Speaker 1: it could be a flame and perpetuity. Whereas the copyright
Speaker 1: you have it, you don't have to tend to it.
Speaker 1: It's yours, but ultimately it will expire, although the time
Speaker 1: it takes to expire is past your lifetime and keeps
Speaker 1: getting extended by big corporations. That's right, and write a publicity.
Speaker 1: It depends on the state. So some state protections extend
Speaker 1: past death. Some states have posthumous protection for like a
Speaker 1: hundred years, some have it form more like twenty years.
Speaker 1: And some states say no, this is something that you
Speaker 1: can protect while you're alive, and when you're dead, others
Speaker 1: can go ahead and use your name or image. Yeah,
Speaker 1: we were we were just talking on Twitter about this
Speaker 1: whether Freda Carlo, who is dead, has a right of
Speaker 1: publicity and it looks like she doesn't in Mexico, but
Speaker 1: she does in California. And her photograph was being used
Speaker 1: by our favorite alternative investment platform, master Works and one
Speaker 1: of their ads on Twitter, and I'm like, are they
Speaker 1: allowed to do this? And it kind of seemed like
Speaker 1: probably not that they were doing it anyway, but this
Speaker 1: is something which is big on Twitter. Like Twitter is
Speaker 1: just the world's biggest trademark and copyright infringement machine. Like
Speaker 1: everything you see on Twitter is like people are tweeting
Speaker 1: out photographs that they don't have rights too. They're using
Speaker 1: trademarks they don't have rights to, and that seems to
Speaker 1: be fine, Like is that damaging anyone? It kind of
Speaker 1: depends who's the speaker, who's the user, right, So a
Speaker 1: lot of the kinds of uses that you're thinking about
Speaker 1: are going to be fair uses. We have fair use
Speaker 1: doctrines in all three of those areas. And when you
Speaker 1: are just a regular person with a regular sized following,
Speaker 1: you can always reference trademarks. For example, that's always going
Speaker 1: to be a fair use to say I got new
Speaker 1: Nike issues. I'm so excited about them stuff like that.
Speaker 1: I think there's some interesting copyright questions around fair use
Speaker 1: when we see use on social media, whether something is
Speaker 1: transformative what you're kind of adding to it. But the
Speaker 1: rules are very different when you are a commercial entity,
Speaker 1: and when what you're doing looks more like advertising, or
Speaker 1: when it's like specifically an ad, a promoted tweet, than
Speaker 1: presumably the bar is much loa I guess not quite
Speaker 1: around it would be. But but you're you're much more
Speaker 1: likely to be infringing that way because that is an
Speaker 1: explicitly commercial activity. You're engaging it, that's right. But if
Speaker 1: you are a brand with millions of followers, whether you
Speaker 1: label something an AD and whether it gets becomes a
Speaker 1: promoted tweet or whether you just kind of push it
Speaker 1: out to your millions of followers, I don't think makes
Speaker 1: a huge difference from an infringement perspective. I thought there
Speaker 1: was an interesting case where this was blurry recently, the
Speaker 1: comedian Leslie Jones. She tweets out like videos of herself
Speaker 1: watching the Olympics, and she did it during the election
Speaker 1: watching Steve Cornaki and it's always hilarious and funny, and
Speaker 1: I guess she was doing this with the Olympics, and
Speaker 1: NBC was upset about it and told her to stop,
Speaker 1: which I thought was just I mean, I guess it's
Speaker 1: their right to tell her to stop, but was dumb
Speaker 1: because she is making the Olympics interesting which NBC would
Speaker 1: benefit only benefit from. So that seemed like like it
Speaker 1: seems like a lot of the time the issues that
Speaker 1: arise are because companies are overly protective of their ip
Speaker 1: IP and their brand ends, and sometimes they overstep the
Speaker 1: protection where it could be to their benefit. Yeah, I
Speaker 1: have a question about that, which is when this kind
Speaker 1: of thing happens, and you see like the New York
Speaker 1: Times do it a lot. When people like quote New
Speaker 1: York Times headlines and stuff, there's something which you hear
Speaker 1: which is basically, it's not you, we don't particularly mind
Speaker 1: you doing this, but if we just allow people to
Speaker 1: do this, then that would set a precedent, and then
Speaker 1: if someone did something that actually did damage us or
Speaker 1: that we didn't want them to do, it would be
Speaker 1: harder for us to enforce it. Is that true, That's
Speaker 1: not particularly true, at least from a trademark perspective. So
Speaker 1: the kind of duty to police gets really overblown when
Speaker 1: companies make that argument, you know, we have to enforce
Speaker 1: this consistently or else we'll lose it. We won't be
Speaker 1: able to enforce it. That is typically a justification for
Speaker 1: unnecessary over enforcement or bullying. So you don't lose trademark
Speaker 1: rights unless you really have stepped away and are doing
Speaker 1: absolutely nothing to control use by licensees or to police
Speaker 1: lots of really infringing harmful uses. What about like trademarks
Speaker 1: like Kleenex or Google or Xerox, things that become like
Speaker 1: generic in the language, Like, what can a company do
Speaker 1: about that? Do they still have their trademark? Right? Yeah,
Speaker 1: So what matters with genero side is really what consumers understand,
Speaker 1: and it's not how consumers use the term. So we
Speaker 1: could survey a bunch of people and they could all say, Yeah,
Speaker 1: I use Kleenex, but but I know it to be
Speaker 1: a brand. I use Kleenex to refer to puffs or
Speaker 1: any brand of tissues that I'm using. But I know
Speaker 1: that Kleenex is a trademark and when it's used, it
Speaker 1: means that the product comes from one particular company. So
Speaker 1: we wouldn't have genero side in a case like that.
Speaker 1: What companies do when they're concerned about losing their marks.
Speaker 1: To genero side is they'll kind of do like an
Speaker 1: campaign to raise awareness, which can feel really silly. Right,
Speaker 1: So we've seen Xerox duties and Nintendo and Tater Tots
Speaker 1: and all kinds of brands have like taken out colorful
Speaker 1: ads saying, hey, we just want to remind you we
Speaker 1: are the only company that can make Tater Tots or
Speaker 1: that can make Kleenex. And I think sometimes to consumers
Speaker 1: that feels like, are you policing my language and telling
Speaker 1: me what to say? But what they're really focused on
Speaker 1: is we just need you to have that information. We
Speaker 1: need you to be aware that not all tissues are Kleenex,
Speaker 1: and as long as we can get that, we can
Speaker 1: probably hang onto our mark. And that came up in
Speaker 1: the Google case too, Right, everybody uses Google as a verb,
Speaker 1: as a noun, as an adjective in every way to
Speaker 1: me and I look something up on the Internet. But
Speaker 1: if you ask them, they're like, no, no, Google is
Speaker 1: a brand. I know. Yeah, so it's both desirable and
Speaker 1: undesirable kind of thing to happen. Brand. But also, like,
Speaker 1: is this part of the jurisprudence that if people stop
Speaker 1: knowing that it's a company and the trademark, Like the
Speaker 1: judge will go out and sort of take an opinion
Speaker 1: poll basically and say do you know this? And then
Speaker 1: if they if people go, I didn't know that. Like,
Speaker 1: what's a good example of actual genericide where something became
Speaker 1: so much a part of the language that it stopped
Speaker 1: being a trademark. Murphy Bad sing or sewing machines, Yeah,
Speaker 1: shredded wheat. So things that were once marks that no
Speaker 1: longer function as marks because people use them as like
Speaker 1: a whole category term, which again, like you kind of
Speaker 1: want as a brand the marketer like nothing better than
Speaker 1: like everyone's saying, oh, go google it, Like that's desirable, right,
Speaker 1: It shows you've saturated the market, you are the name
Speaker 1: of the thing you make. That's that's not right, but
Speaker 1: it's risky, right. So there was a recent case over
Speaker 1: Comic Con that was kind of a close call. When
Speaker 1: we've talked about in my class is popsicle. So you
Speaker 1: see popsicle using like original brand popsicle. A lot of
Speaker 1: these marks are right on the margin and we're not
Speaker 1: going to have cases about them because they don't want
Speaker 1: to enforce in a way that gets another party to say, actually,
Speaker 1: you're registration should be canceled because your mark has become generic.
Speaker 1: We're going to prove it with survey data. So those
Speaker 1: mark owners really have to proceed with caution. So is
Speaker 1: this also why so many brands slap that little TM
Speaker 1: symbol all over everything? It's that part of just reminding
Speaker 1: people that brand is a trademark. Is there some other
Speaker 1: reason to do that? Yeah, So the circle R is
Speaker 1: what you use when you have a registration, and that
Speaker 1: does I mean, I think consumers A lot of consumers
Speaker 1: know what that means. So that helps send that message
Speaker 1: this is a trademark, right. The TM actually just about
Speaker 1: anybody can use and it signals like we think this
Speaker 1: is our trademark and we're working on getting making it
Speaker 1: our trademark and conditioning consumers to understand that this is
Speaker 1: a source indicator for our brand. So the TM is
Speaker 1: a little bit less meaningful, but both of them serves
Speaker 1: like in terms of the utility, the reason why they
Speaker 1: appear everywhere is precisely just to protect against scenariosite. There's
Speaker 1: no other reason to do it to protect against used
Speaker 1: by others. So if a competitor sees something on packaging
Speaker 1: and says, hey, that's a great descriptive term for our product,
Speaker 1: and we use that too. Looks like we can't because
Speaker 1: this company is using it as a trademark and not
Speaker 1: just as a descriptive phrase. My favorite example of this
Speaker 1: was when master Card decided to change its logo. It
Speaker 1: used to be an orange circle in the yellow circle
Speaker 1: overlapping them in the said master Card underneath it. And
Speaker 1: then they decided that this was so universally recognizable that
Speaker 1: he didn't need to use the word master card anymore,
Speaker 1: and they would just have two circles and it would
Speaker 1: be this beautiful, clean, perfect simple logo. And then it
Speaker 1: was it was released into the world, and every time
Speaker 1: you saw that logo, it had this little buzzing bee
Speaker 1: to the top right of it saying like registered trademark
Speaker 1: because they couldn't get rid of it. Yeah, I think
Speaker 1: we see that a lot. So we get a kind
Speaker 1: of combo composite at mark and then the brand says, hey,
Speaker 1: let's condition consumers to understand like, just this really basic
Speaker 1: representation also indicates that it's a MasterCard product or whatever.
Speaker 1: So we're working up to being able to use that
Speaker 1: by itself. So Snickers a couple years ago did a
Speaker 1: promo where they had the regular packaging, but they put
Speaker 1: different words instead of Snickers, So the bars didn't say
Speaker 1: Snickers at all. They said like angry or whatever, you know,
Speaker 1: some cutes terms that we're supposed to reference their ad campaign.
Speaker 1: And I think what that does is like reinforce consumers
Speaker 1: recognize our trade dress, like our packaging colors and font
Speaker 1: and things like that, even without the words Snickers. So
Speaker 1: now if somebody else tries to use something really similar,
Speaker 1: we can go to court and say, look, we don't
Speaker 1: even need to have the word Snickers on the packaging
Speaker 1: for consumers to get this. Sometimes companies let these trademarks
Speaker 1: die and there's a whole business in reviving them. Hey,
Speaker 1: there's a business in reviving them. B this is coming
Speaker 1: now because like the Washington football team changed its name.
Speaker 1: What are they called, oh, Commanders, the Commanders. Yeah. So
Speaker 1: now the question is like what happens to that trademark
Speaker 1: because not only is it not being used and dead,
Speaker 1: but it's offensive to many people. And this holds for
Speaker 1: like the ant Jemima trademark and what was it Uncle
Speaker 1: Ben's right, So this is like a whole new issue
Speaker 1: kind of cropping up now. Yeah, and so like, I
Speaker 1: guess two questions, Like, first is if I stop using
Speaker 1: my trademark, then obviously, given the whole like use it
Speaker 1: or lose it thing, it's no longer mine. But then
Speaker 1: what's the mechanism whereby the legal system works out who
Speaker 1: gets to have it next? Like, and then like, is
Speaker 1: there a mechanism where the legal systems can say, well, actually,
Speaker 1: no one can get it next because it's offensive, not
Speaker 1: because it's offensive, but potentially because it still creates a
Speaker 1: likelihood of confusion with the prior owner right. So, trade
Speaker 1: mark rats in the United States are based on use
Speaker 1: in commerce. That's how you acquire rights, and when you
Speaker 1: get a registration, that's just supposed to be kind of
Speaker 1: a formal recognition of the rights that you get through use.
Speaker 1: So when somebody stops using a mark for a couple
Speaker 1: of years and they don't show that they have an
Speaker 1: intent to resume use in the near future, they don't
Speaker 1: have a specific excuse like we're waiting for this component
Speaker 1: to be available, or there's an embargo with this country
Speaker 1: or something like that, then that mark is deemed abandoned.
Speaker 1: They won't have any more rights, and somebody else can
Speaker 1: come along and start using it and seek protection for it. Right,
Speaker 1: So the question about who gets it is really like
Speaker 1: whoever gets there first. But there's a doctrine called residual
Speaker 1: goodwill that says, like, listen, this mark is famous in
Speaker 1: this country. And maybe not everybody knows about the abandonment,
Speaker 1: but everybody knows this mark. And so if you come
Speaker 1: along and start using it for something that's related but different,
Speaker 1: you're going to be free riding on that goodwill that exists,
Speaker 1: and you're potentially going to deceive consumers. Right. So if
Speaker 1: a Jemima, if that brand announces we're not using this
Speaker 1: mark anymore because we've come to understand that it's really problematic,
Speaker 1: and then a week later somebody picks it up and
Speaker 1: starts using it for maple syrup or some other breakfast food,
Speaker 1: then we can expect a good amount of consumers to
Speaker 1: think that it still comes from the old brand. Right.
Speaker 1: But then the question is who's going to stop them,
Speaker 1: because it might not be the USPTO. USPTO might say, well,
Speaker 1: nobody else currently has trademark rights, so you can have them.
Speaker 1: So most of the case law comes from the prior
Speaker 1: owner suing for infringement based on those rights that come
Speaker 1: from residual goodwill. But if you're a mark owner who's
Speaker 1: like just announced to the world we are stepping away
Speaker 1: from this mark, we know it to be harmful, then
Speaker 1: it feels like kind of tricky to enforce those rights.
Speaker 1: So I think we've seen brands do a couple of
Speaker 1: different things, Like the Cleveland Indians they said they weren't
Speaker 1: going to use Chief wah Who anymore that mascot based
Speaker 1: on some harmful stereotypes on the uniforms, but they were
Speaker 1: kind of low key still using it for merchandise right
Speaker 1: and an Jemima's I think is still using in some
Speaker 1: other countries or using on the back of the products.
Speaker 1: And then Uncle Ben's they changed it to Ben's original,
Speaker 1: which is still similar enough that they can probably enforce
Speaker 1: those rights. So they're kind of we're seeing some ways
Speaker 1: that those who are stepping away from a mark are
Speaker 1: still trying to hang on to some rights. One thing
Speaker 1: that was interesting to me in doing the reading catching
Speaker 1: up from two thousand and five was the Washington football
Speaker 1: team name, because when I was covering IP there was
Speaker 1: a lawsuit over the trademark because some Native American groups
Speaker 1: said you can't trademark something offensive, which I guess is
Speaker 1: in the land I'm act, But when I was reading
Speaker 1: last night, was that that went away because of some
Speaker 1: other case where they said, oh, yeah, you can actually
Speaker 1: trade mark things that are offensive, so can you? You
Speaker 1: can trademark things that are offensive now? Absolutely So. The
Speaker 1: landmark used to contain a bar on registration of offensive
Speaker 1: or scandalous or marks that disparage a particular group. And
Speaker 1: so for a long time, like you know, the band
Speaker 1: Buttle Servers, they didn't have a registration for their trademark,
Speaker 1: even though that's a pretty well known mark, right. Um So,
Speaker 1: in a pair of cases, the Supreme Court overturned that
Speaker 1: bar on registration essentially based on the First Amendment, based
Speaker 1: on the idea that this is speech in addition to
Speaker 1: being commercial, and we can't regulate that speech in these
Speaker 1: kind of specific ways that we've been doing. That's an
Speaker 1: anti cancel culture ruling. I feel like people don't know
Speaker 1: that this is amazing. This went all the way to
Speaker 1: the Supreme Court, who which mark was being instigated in
Speaker 1: front of scouts. Yeah. So the first one was the Slants,
Speaker 1: which is a band made up of Asian American artists,
Speaker 1: and they shows that mark as kind of a reclaiming
Speaker 1: of a slur, you know, something that was tongue in cheek.
Speaker 1: So it wasn't about a bunch of white people using
Speaker 1: a mark that is disparaging to a group that has
Speaker 1: been marginalized. In said, it was members of that marginalized
Speaker 1: group trying to take it back. And when they applied
Speaker 1: to register at the USPTO said, we think that is
Speaker 1: an offensive term. And here's some Urban Dictionary entries and
Speaker 1: here's one time that Miley Cyrus said something offensive. So
Speaker 1: the band appealed that. They appealed it all the way
Speaker 1: up and they were able to succeed on this First
Speaker 1: Amendment based argument with some strange bad fellows. Alexandrew Roberts,
Speaker 1: thank you for coming on this, Joe, this is so
Speaker 1: much fun. It was I've been looking forward to this
Speaker 1: for so long and it totally lived up to all expectations.
Speaker 1: You are a superstar. My pleasure. And yet, thank you
Speaker 1: for listening for Slate Money and we will be back
Speaker 1: next week with even more Slate Money. M h. That
Speaker 1: was the Slight Money podcast. You can find it wherever,