By: Hope Hill
The first trademark associated with Aunt Jemima was registered in the principal register by the Quaker Oats Company, (Quaker Oats) in 1890 after they purchased The Aunt Jemima Milling Company. The company was founded and named by Chris Rutt and Charles Underwood, who developed the self-rising flour mix. Rutt attended a minstrel show featuring the character “Aunt Jemima” and used the name and image of the character for his company, that he ultimately sold. Quaker Oats hired a formerly enslaved woman by the name of Nancy Green, who entered into a lifetime contract, that required her to travel on promotional tours across the country telling the story of a mammy who made and served her secret family recipe to her loving white family.
Because of Nancy Green, and later Anna Robinson who replaced her after she died, we are all familiar with the infamous Aunt Jemima brand. The Lanham Act protects all distinctive marks unless it “consists of or comprises immoral, deceptive, or scandalous matter.” 15 U.S.C. §1052(a). In determining whether a mark is scandalous or immoral, the examining attorney gives consideration to the moral values and conduct which “contemporary society has deemed to be appropriate and acceptable.” Attorneys look to the relevant marketplace for the goods and services identified in the application and must ascertain from the standpoint of a “substantial composite of the general public.”
On its face, the “Aunt Jemima” brand is not immoral or scandalous. However, the Supreme Court has noted, that the word "comprises,” in the statute, meant "includes" and thus Congress extended the prohibition not only to marks that consist of scandalous matter but also to marks that include scandalous matter. Scandalous has been defined as “shocking to the sense of propriety, offensive to the conscience or moral feelings or calling out for condemnation.” Here, the Aunt Jemima brand includes scandalous matter because (1) the mark is derived from a minstrel show where white people performed in blackface, (2) the brand tells a story of a happy “slave Mammy.” For these very reasons alone, the Aunt Jemima brand can be deemed scandalous by definition.
Although the company has since tried to hide its dark and oppressive past, this not automatically eliminate the racism that exists in its long-standing mark. Aunt Jemima was historically shown as a dark-skinned, heavy-set woman, who was supposed to be undesirable, and happy to serve her “secret” pancake recipe to her white owners. This image and story was promoted to across the country to (1) dispel the notion that white men found Black women desirable and (2) to give every American household wanted at that time; a slave. However, it is well known that household females, who were enslaved, were often biracial daughters of rape, desired by white men, abused by both white men and woman, and extremely unhappy. The Aunt Jemima fable formed a foundation for decades of advertising that created a recognizable image that gave people a social status that came with owning an enslaved person. Hence, The Aunt Jemima Milling Company has never merely sold pancakes, they have always sold this image and story. A story that is deemed to satisfy the immoral and scandalous standard set out in section 2(a) of the Lanham Act to bar registration of the mark.
Over the years, Aunt Jemima’s image has changed and is less depicted in commercials and restaurants as a traditional mammy figure. However, that doesn’t change the very real connotation that the brand represents and displays just because it has a water-downed version today. After learning the history, it is clear what this company is selling and how it feels about people who share a common ancestry with this so-called Aunt Jemima caricature. I hope you don’t forget this the next time you have some of Aunt Jemima’s pancake and syrup for breakfast.
By: Anthony Williams
In December 2018, American video game and software development company Epic Games, Inc., was sued by rapper 2 Milly (Terrence Ferguson), Carlton from The Fresh Prince of Bel-Air(Alfonso Ribeiro), and Backpack Kid (Russell Horning) for right of publicity claims, stemming from what they consider Epic Games unauthorized use of their signature dance moves in the video game Fortnite Battle Royale (“Fortnite”).
What is the Right of Publicity?
The right of publicity grants an individual control over their likeness or persona for commercial purposes.Currently, there is no federal statue protecting the right of publicity, leading to diverging state statutory and case law.Pierce Bainbridge Beck Price & Hecht LLP likely brought suit on behalf of Ferguson, Riberio, and Horning in the state of California because it is a state that recognizes both a statutory and common law right of publicity.Additionally, the transformative use test expressed by the California Supreme Court in Comedy III Prods., Inc. v. Saderupis the leading and most recognized test to determine misappropriation of publicity rights.
Transformative Use Test
The transformative use test balances the First Amendment right of expression against an individual’s proprietary interest in their likeness or persona.To qualify for First Amendment protection, new works must add meaningful creative components so as to “transform the work into something more than a celebrity likeness or imitation.”The transformative uses test is essentially a spectrum, where at one end there are works that are highly transformational, which creates “fanciful characters, placed amidst a fanciful setting, that draw inspiration from celebrities.”At the opposing end are works that are unvarying which are “mere literal depictions of celebrities recreated in a different medium.”
Social Justice and the Right of Publicity
The right of publicity is a great tool to ensure entertainers are compensated for the labor and capital used to develop a popular image or persona. Individuals from marginalized communities are more susceptible to misappropriation of publicity rights due to the lack of uniformity in the law. Hopefully the claims asserted by Ferguson, Ribeiro, and Horning will spur a federal right of publicity statue.
Meagan Flynn, Is Fortnite stealing black dance culture? The creator of the ‘Milly Rock’ argues yes in a new lawsuit, The Washington Post (December 6, 2018), https://www.washingtonpost.com/nation/2018/12/06/is-fortnite-stealing-black-dance-culture-creator-milly-rock-argues-yes-new-lawsuit/?utm_term=.bda592d4c757.
See Lateef Mtima, What's Mine is Mine but What's Yours is Ours: IP Imperialism, the Right of Publicity, and Intellectual Property Social Justice in the Digital Information Age, 15 SMU Sci. & Tech. L. Rev. 323, 341 (2012).
See Kevin L. Vick and Jean-Paul Jassy, Why a Federal Right of Publicity Statute Is Necessary, 28 Comm. Law. 14 (2011).
Cal. Civ. Code § 3344. Protects a person's: name, voice, signature, photograph, and likeness.
SeeLateef Mtima, So Many Waters Under This Troubled Bridge: Navigating Right of Publicity Jurisprudence, 50 IDEA 213 (2018).
Comedy III Prods., Inc. v. Gary Saderup, Inc., 25 Cal. 4th 387, 404 (2001).
Hart v. Elec. Arts, Inc., 717 F.3d 141, 161 (3rd Cir. 2013).
By: Eric St. Bernard
Colin Kaepernick –
Former football player, or activist? Social justice, or jersey sales? Are Colin Kaepernick’s courageous stance against police brutality, a Nike commercial featuring the former NFL quarterback, and a subsequent application to trademark his face each mutually exclusive, or do they coincide with each other? Better yet, I posit, and any reasonable person can deduct, that the commercials and media attention are direct catalysts of Kaepernick’s metaphoric trip to the United States Trademark and Patent Office. This realization raises additional, perhaps more prodding questions: Will Kaepernick’s immersion into the commercial space, by way of establishing his own Intellectual Property rights, make progressive supporters question his motives? Is Kaepernick just one example of consumers’ social perspectives and political viewpoints playing a part in our purchasing decisions? Are activism, social justice, and human rights moral vehicles to “distinguish[ing] the source of the goods of one party from those of others,” a necessary requisite for Trademark registration?
Colin Kaepernick was drafted in 2011 by the San Francisco 49ers and led the team to Super Bowl 47 in 2013 as their starting quarterback. Notwithstanding their loss to the Baltimore Ravens, the second-year quarterback had an impressive game on one of the sports world’s biggest stages, throwing for 302 yards and a touchdown, and running for an additional 62 yards and a touchdown. In fact, Kaepernick’s statistics were so impressive that he joined Hall of Famer Joe Montana as the only two quarterbacks to throw for more than 300 yards and run for more than 50 yards in a Super Bowl. However, Kaepernick’s meteoric rise to social relevance was not sparked by what he did on the on the football field, but instead, what he did on the sideline.
With three years standing between Kaepernick and his highly publicized Super Bowl appearance, the quarterback sat down during an NFL pre-season game while the National Anthem was playing. Asked for his reasoning behind an act deemed unpatriotic by nationalists, Kaepernick rebutted with the following: “I am not going to stand up to show pride in a flag for a country that oppresses black people and people of color. To me, this is bigger than football, and it would be selfish on my part to look the other way. There are bodies in the street and people getting paid leave and getting away with murder.” Kaepernick went on to kneel while the National Anthem played for the remainder of the 2016 season. Since that day in August of 2016, Kaepernick has received support, intense media coverage, and his fair share of backlash for his continued form of protest. For the 2019 Super Bowl, prominent music artists like Cardi B, Rihanna, and Jay-Z reportedly declined invitations to perform at the Super Bowl halftime show in response to Kaepernick’s exile from the NFL. In addition, in the days leading up to the big game, athletes, entertainers, and social activists such as LeBron James and Angela Davis were donned in Colin Kaepernick Nike jerseys as an ode to his courageousness.
When Nike released a conversation-sparking commercial featuring Kaepernick in September 2018, the former 49er, albeit involuntarily, was far removed from his athletic prowess. Instead, he stood as a personification of racial inequality and resistance against oppression. Perhaps in that vein, Kaepernick (through his company Inked Flash) filed a trademark application with the United States Patent and Trademark Office on October 5th, 2018 – nearly a half-decade after his first and only Super Bowl appearance. The trademark, you ask? An image of Kaepernick’s face, to be used on hairspray, jewelry, cell phone cases, and clothing. Moreover, Kaepernick intends to use the image to host classes, workshops, and seminars for self-empowerment.
With the context provided, I opened up clinic class discussion to critique the following: does Kaepernick’s trademark application, with intent to commercialize his face, deride his stance on social justice? Can the worlds of capitalism and social consciousness coexist? If so, are there additional ‘social rules’ that Kaepernick must overcome under these circumstances?