Posts Tagged: "first amendment"

The U.S. Supreme Court heard oral argument this morning in Vidal v. Elster, the latest in a line of recent cases probing the intersection of the First Amendment and trademark law, following 2017’s Matal v. Tam, 2019’s Iancu v. Brunetti, and this year’s Jack Daniel’s v. VIP Products.  As in Tam and Brunetti, the Justices are being asked in Elster to review the constitutionality of a restriction on federal trademark registrations—this time, the prohibition under Section 1052(c) of the Lanham Act on the registration of living persons’ names without their consent, sometimes called the “Name Clause.”

The U.S. Supreme Court held today in Jack Daniel’s Properties v. VIP Products that the Rogers test, used to “protect First Amendment interests in the trademark context,” is not relevant “when an alleged infringer uses a trademark as a designation of source for the infringer’s own goods.” The Court therefore vacated the U.S. Court of Appeals for the Ninth Circuit’s ruling that said VIP’s dog toy mimicking a Jack Daniel’s whiskey bottle was an expressive work entitled to First Amendment protection. Justice Kagan authored the unanimous opinion for the Court, while Justice Sotomayor, joined by Justice Alito, and Justice Gorsuch, joined by Justices Thomas and Barrett, each filed concurring opinions.

The U.S. Court of Appeals for the Eleventh Circuit earlier this week ruled in favor of Viacom in a trademark fight over the media conglomerate’s Floribama Shore reality television show. MGFB, the company that filed the appeal, owns the “FLORA-BAMA” trademark and owns and operates the Flora-Bama Lounge on the border of Florida and Alabama. The company filed a cease-and-desist letter in 2017 when Viacom first aired Floribama Shore in 2017. The appeals court judges cited the First Amendment as protecting Viacom’s right to artistic use of “Floribama”. “Creative works of artistic expression are firmly ensconced within the protections of the First Amendment,” wrote the judges.

The U.S. Court of Appeals for the Federal Circuit (CAFC) yesterday denied a request for panel rehearing or rehearing en banc by U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal of a February CAFC decision that held the Office’s application of Section 2(c) of the Lanham Act to reject the mark TRUMP TOO SMALL was unconstitutional. In its February decision, the CAFC held that “applying section 2(c) to bar registration of [Steve] Elster’s mark unconstitutionally restricts free speech in violation of the First Amendment.” Elster attempted to register the trademark TRUMP TOO SMALL for use on T-shirts, but an examiner refused the application, saying that section 2(c) bars registration of a mark that “[c]onsists of or comprises a name . . . identifying a particular living individual” without the individual’s “written consent.”

Though the parties have quickly settled their case, the question remains open: was Lil Nas X’s “Satan Shoe” an exercise of free speech or a trademark violation? What we do know is that sneaker giant Nike’s complaint filed in the Eastern District of New York on March 29, 2021 alleged a dispute of biblical proportions against Brooklyn art collective MSCHF Product Studio, Inc. Nike targeted its own Air Max 97 shoe, which it claimed MSCHF and its collaborator Lil Nas X (who was not named in the lawsuit) materially altered to feature an upside down cross, a pentagram, and an injection of human blood into the sole to create the “Satan Shoe” – 666 of them to be exact. The Satan Shoe still displays Nike’s famous Swoosh, which inspired calls to boycott the brand for its alleged association with the controversial shoes. Nike asserted claims of trademark infringement, trademark dilution, false designation of origin, and unfair competition, and sought a temporary restraining order, a permanent injunction, and damages.

Twitter officials recently announced they’ll begin placing a notice over tweets that violate their standards regarding abusive or bullying behavior, but that they still deem to have some public value.  Users will have to click through the notice in order to view the original tweet, and also see a link to the following message: “The Twitter rules about abusive behavior apply to this Tweet. However, Twitter has determined that it may be in the public’s interest for the Tweet to remain available.” On the surface, this may not seem significantly different from the motion picture industry’s rating system or the advisory notices posted prior to most on-demand programming.  But dig a little deeper and what makes Twitter’s proposed flagging policy particularly unsettling is their intention to apply it very selectively.

The Lanham Act’s ban on federal registration of “immoral or scandalous” trademarks is unconstitutional under the First Amendment.  So held the United States Supreme Court on Monday, resoundingly, if a bit uneasily, in Iancu v. Brunetti.  It’s a good result, and one that the trademark bar and the free speech community had broadly urged, including Debevoise’s client, the International Trademark Association (INTA), in an amicus brief that we had the privilege of writing. 

A Final Rule issued by the Centers for Medicare and Medicaid Services (CMS) on May 8 (the “Final Rule”) that requires direct-to-consumer (DTC) television advertisements for a prescription drug or biologic covered by the Medicare or Medicaid programs to disclose the product’s “list price,” will become effective on July 9, 2019. The Final Rule mandates price disclosures for any covered drug that is $35 or more for a one-month supply or the usual course of therapy, and includes a unique enforcement mechanism whereby CMS would rely for enforcement on private lawsuits filed pursuant to Section 43(a) of the Lanham Act. In a conference call with reporters, Department of Health and Human Services (HHS) Secretary Alex M. Azar II analogized the new requirement to mandatory price disclosures required for the automobile industry—despite the fact that cars are not reimbursed by the government, subject to co-pays, prescribed by third parties who function as gatekeepers, or subject to complex arrangements with prescription benefit managers (PBMs) and other healthcare providers. The strained analogy to automobile price disclosures reflects the legal complexities implicated by this requirement and the absence of relevant precedent.

Following our visit to the Supreme Court for Monday’s entertaining oral argument in Iancu v. Brunetti, we can report that the Court seems likely to strike down, on First Amendment grounds, the statutory restriction on federal registration of trademarks that are “immoral or scandalous.”  It seems less likely that the case will generate a clear and ringing statement of First Amendment principles. Rather, the justices’ comments at argument seem to presage a limited, cautious opinion. The Court’s main legal concerns appear to be the facial overbreadth of the existing statute and its history of inconsistent application. Congress and the U.S. Patent and Trademark Office (USPTO) may  therefore be left with room to try again, seeking a narrower and more predictable approach to limiting the federal registration of dirty words as trademarks (especially given the Court’s main practical concern of the loss of civility represented by the proliferation of such marks).

Deepfake technology has made headlines recently for its use in creating fake portrayals of celebrities, but the long term implications could be much more sinister than phony renderings of Scarlett Johansson appearing in porn videos or President Barack Obama calling Trump a profanity. While the California bill is chiefly aimed at criminalizing this particular type of technological deception, it has implications for IP in that it reaches conduct that may not be easily addressed by the enforcement of existing IP law.

The U.S. Supreme Court on January 4th granted certiorari to take up Iancu v. Brunetti on appeal from the Court of Appeals for the Federal Circuit. The case asks the nation’s highest court to answer the question of whether the Lanham Act’s prohibition on the federal registration of “immoral” or “scandalous” trademarks is facially invalid under the First Amendment’s free speech clause.

The Solicitor General is arguing that Erik Brunetti has no right to require the government to register a scandalous mark or to inscribe the term on the Federal Register. Brunetti’s reply pushes back, pointing to instances where the USPTO approved trademark registrations for profane, excretory or sexual terms.

Whatever the Court decides, practitioners will welcome further clarity on the issue, since the Tam ruling was a 4 to 4 split decision with no real agreement on the rationale for the holding. “IP lawyers like certainty, and this case has created a lot of uncertainty,” said Monica Riva Talley. “There are a lot of applications on hold at the trademark office right now.”

Secure cloud communications provider Ribbon Communications announced it would continue to enforce its intellectual property rights in the face of what it called “baseless attacks” by its UK-based cloud competitor Metaswitch Networks. Ribbon decried a recent antitrust lawsuit filed against it by Metaswitch and charged its competitor with continuing to infringe upon Ribbon’s patent claims despite earlier jury verdicts in district court which found that Metaswitch was infringing upon those asserted claims. Ribbon Communications’ announcement follows a lawsuit filed by Metaswitch Networks on November 19th in the Southern District of New York. “It is disappointing that Metaswitch is attempting to relitigate claims that it already lost in federal court,” said Ribbon CEO Franklin “Fritz” Hobbs. “Ribbon will not be deterred by these actions, and we look forward to having Ribbon’s intellectual property rights vindicated and Metaswitch finally paying for its misappropriation of Ribbon technology.”