By: Edwin Paillant
The right of publicity has been recognized by statute and/or case law in the majority of the 50 individual states. Publicity laws grant individuals the right to control the commercial exploitation of certain aspects of their identity, such as their name, likeness, voice, signature, image, distinctive appearance, gestures, mannerisms, photograph or other indicia of identity or persona. See White v. Samsung Elecs. Am. Inc., 971 F.2d 1395, 1396 (9th Cir. 1992); Lohan v. Take-Two Interactive Software, Inc., 97 N.E.3d 389 (2018); Comedy III Productions, Inc. v. Gary Saderup, 21 P.3d 797 (2001); Sarver v. Chartier, 813 F. 3d 891 (2016). The realm of publicity rights in intellectual property is rather new and as such the Supreme Court has deferred to the states as how the rules should be governed. Thus, the states have differed on the following issues: (1) whether the right survives posthumously; and (2) whether the right of publicity is descendible and assignable.
The above mentioned lack of uniformity over this issue has led to only 24 states recognizing the baseline right of publicity to individuals. Of those 24 states, not all have recognized the right of publicity after death. There is a profound detriment towards individuals, primarily celebrities, for lack of a clear federal ruling. In recent years, for example, Prince’s estate has no say in whether individuals can use his likeness in advertisements because Minnesota, the place he was domiciled before his death, has refused to weigh in on this law. Compare that to California, who has a vast number of celebrities and has chosen to weigh in. Pursuant to Cal. Civ. Code § 3344.1, postmortem rights are available for seventy (70) years after death and expires after 2 years if the use becomes inactive. This favors the many celebrities that have passed that were domiciled in California when they die—Most notably Michael Jackson and Tupac Shakur. Legislation on this matter needs to be addressed as the lack of a federal rule that recognizes postmortem publicity rights with a specified period of years after the individual’s death is detrimental to the vast majority of creatives. Creatives that just so happen to be black.
By: Briana Seaton-Adams
A social movement is essentially a sustained campaign in support of a social goal which implements or prevents a change in society’s structure or values. From the Civil Rights Movement, to the waves of feminism, Black Lives Matter, and #MeToo, social movements have been integral in America’s history and progress. In 2017, Actor Alyssa Milano urged survivors of sexual assault to use the words “Me Too” on Twitter, with no idea of where it came from. In just a few weeks, the hashtag was used over 12 million times. Soon after, those two words burst into the spotlight of social media with #metoo, a hashtag promoted by Milano. Recognizing the virality of the hashtag, women of color hurriedly pointed out that the true creator of the “me too” movement was by Ms. Tarana Burke, who is black, had not received support over the years from prominent white feminists.
The USPTO has not been receptive to trademark registrations of phrases arising from social movements. The main reason for this opposition is that the purpose of a trademark is to preserve the ability of consumers to identify and distinguish a particular source of goods or services. In contrast, if the proposed trademark is merely an informational, social, political, or religious message, it fails to function as a trademark. As an example, of the 15 trademarks to register Black Lives Matter, 7 were refused, 6 are awaiting examination, and 2 were approved but are not registered (Black Lives Matter Too; Black Lives Matter To Me).
This matters because individuals and businesses seek to capitalize on the social movements they create, especially when these movements have become “viral”. Others, like 17-year-old Greta Thunberg, seek to protect their movement to prevent people who may try to use the mark for purposes not in line with what the movement stands for. While social movements are generally difficult to trademark, Sybrina Fulton, mother of slain teen Trayvon Martin, trademarked “I am Trayvon” in 2014 for a foundation in his honor which lives to this day.
By: Christian Bonner
Almost every month there is a new dance hitting the internet, most frequently through social media platforms like Instagram, Tik Tok, or Triller. These dances spread like wildfire and before the original creator knows it, others are learning the moves, recording themselves doing the choreography, and posting it to their personal social media accounts to generate more views. And what’s wrong with that? The dances are fun, and everyone is doing them! But what happens when someone who did not create the dance gets a sponsorship deal for thousands of dollars, merely for doing someone else’s moves? Or when the original creator of the newest viral dance attempts to claim credit and capitalize off her choreography’s success, but someone else beats her to it and there is nothing she can do about it? That is the current reality for most of today’s internet choreographers.
Full copyright protection in the United States was finally extended to choreographic works in 1976, but there are still many types of choreography that will not qualify. Of critical importance to today’s social media choreographers are individual movements/simple routines and social dances. So the Milly Rock? The courts are likely to rule that rapper 2 Milly’s widely recognized dance is not protectable choreography, because it constitutes simple movements. Because of the lack of protection provided to 2 Milly’s Milly Rock, the free video game Fortnite was able to profit off 2 Milly’s moves. Fortnite players can purchase “emotes” for their game avatars to allow them to do popular dance moves and routines, of which includes an almost identical dance to the Milly Rock. So, while Fortnite is making millions from these dances, 2 Milly and other dance creators (“Backpack Kid” Russell Horning and Alfonso Ribeiro have filed similar suits against the makers of Fortnite for misappropriating their popular dances) have received zero compensation.
While simple routines and movements may be an uphill battle for courts to provide copyright protection, what can we do about other choreographers who create work that would otherwise be protectable if they filed for copyright protection? I am thinking of fourteen-year-old Jalaiah Harmon, who created the popular “Renegade” choreography on Instagram. The Renegade involves a series of fast and complex moves and could likely qualify as a “choreography” under the U.S. Copyright’s Office’s definition. But someone else was able to learn Jalaiah’s choreography and capitalize off it before Jalaiah and gave Jalaiah no credit. While Jalaiah’s story has since been discovered and she has now received her proper recognition, a copyright protection could have taken her even further with legal rights to the choreography she worked hard to create. We must encourage choreographers to protect their work by filing for copyright protection to ensure that what has happened to Jalaiah will not happen to others. Additionally, we must hope that the courts involved in current choreography litigation will acknowledge the rapidly-changing worlds of dance and media, and expand legal protection to better serve the current needs of the creative community.
By: Billy Davis
Black athletes have been severely let down by the media and news outlets when racism has presented itself in sports. For decades black athletes here in the United States and abroad have been subjected to ridicule. This disgusting behavior ranges from being labeled “nappy headed hoes” on a nationally broadcasted radio program to having bananas thrown at them. The “Kick It Out” Organization, which is funded by FIFA and UEFA, is tasked with keeping track of racist incidents in soccer. They reported last year that reports of racist incidents rose from 319 in the 2017-2018 season to 422 incidents in the 2018-2019 season. Unfortunately, the trend seems to be heading the wrong direction.
This is a publicity rights problem because the athlete’s reaction to racists chants is often what’s publicized. The athletes are seen as aggressive when they attack fans, see Ron Artest and Stephen Jackson, or seen as quitters when they leave the field prior to the game ending, see Mario Balotelli. These narratives hurt legacies which in-turn impacts the profitability of said athletes.
For too long the focus has been on how black athletes react and not what they were reacting to. Myles Garret is a football player who was suspended for swinging his helmet and hitting another player. Garrett explained later that he was called a racial slur however there was no further punishment for the other player involved after an investigation. This is all too common in sports, when black athletes react, they get harsher punishments and their explanations fall on deaf ears. Juxtapose that with how players in the MLB and NHL, predominately white leagues, violence is encouraged as a part of the game, the injustice is evident.
When fans act irresponsibly, they are simply banned from a stadium, however players lose their most opportune chance to make a living. This is the problem that should have been solved long ago with harsher penalties for perpetrators and responsible media coverage.
By: Morgan Sills
My social justice presentation explored the latest developments in the never-ending battle between Free Speech and TTAB’s ban on “scandalous” and “offensive” marks. On June 24, 2019, the Supreme Court of the United States held that the Lanham Act’s prohibition on the registration of “immoral” or “scandalous” trademarks violated the First Amendment guarantee of Free Speech. Icanu v. Brunetti, 588 _______ (2019). This was the end of a case concerning the controversial clothing line “FUCT,” which had previously been denied trademark protection from the USPTO for its play on words.
In my opinion, this prohibition was applied in a duplicitous fashion. While certain marks were rejected for being offensive, other marks depicting racial stereotypes have earned long-standing recognition and commercial protection as trademarks. Images such as the mammy character of Aunt Jemima (which was originally inspired by a minstrel show), the servile Uncle Ben, and the infamous slur embodies by the Redskin’s football logo were all approved.
And yet, recent events have shown that creators can use marks to reclaim identities and turn stereotypes on their heads. In pop culture, women have been able to reclaim “b***h,” lesbians have reclaimed the word “d**e,” and in what is likely the most famous case of reclamation, rappers Ice Cube, Dr. Dre, Eazy-E came to fame when their group appropriated the word “n***a” for the name NWA, using the word as a powerful platform to speak about the lives of Black men in America.
The Brunetti case was immediately preceded by Matal v. Tam, where a Chinese-American rock band from California was denied the use of the name “The Slants,” because the words are a slur commonly used to degrade against people of Asian descent. Aiming to disarm of the word of its negative connotation, the band eventually won their battle in November of 2017.
Since that decision and the Brunetti holding, the number of previously offensive marks has dramatically increased. Interestingly enough, Justice Sonia Sotomayor predicted this increase when she concurred in part and dissented in part against the Brunetti holding, warning that government would have no statutory basis to refuse the “obscene” marks and images in a “coming rush” of applications. Currently, there are 1,338 marks associated with the word “b***h”, 39 for the word “n***a”, and 69 for the word “d***e”, and 328 for the word “p***y.”
For sure, stereotypes and slurs can be turned inside out, especially when this process is initiated and controlled by the very people that had to endure their negative effects. Every person and group of people deserve the opportunity to claim power through their names, and if they choose to trademark these words, so be it. But I do think Justice Sotomayor made a valuable observation: once the floodgates have opened for offensive marks, any person will be able to use the words for any reason they see fit.
My social justice presentation was about women of color not being able to get into the Intellectual Property (hereinafter referred to as “IP”) world of law. IP Law is dominated by white men. Women of color have literally no seat at the table. We have been discriminated against from an intersectional trichotomy of being woman, being minority, and being a minority woman. We are not given equal opportunity to enter the IP industry. In fact, most of the major IP law firms that claim to champion diversity are not inclusive of women of color. They target Asian males or White women to meet their diversity mantras. Well, what about women of color? Why is it so hard for us to break into the world of law that needs us the most? We are often overlooked for positions in IP law. This is a problem because IP is an expanding field, however with that growth we do not see a growth in the number of women of color attorneys entering the industry. IP law needs women of color because the clientele is changing. People of color are opening, operating and representing businesses. These clients either want people who represent them and their interests or want to retain a firm that has a representation of the real world. Women of color can also bring in fresh ideas and perspectives unique to their culture and environment. This allows for a more effective work atmosphere. It also gives a firm the opportunity to hear all different aspects when seeking a solution or a pitch to secure a client. The best way to break this chain of excluding women of color is to implement a mentorship program and professional development program. Mentors are the key to entering IP firms. By having a mentor, you are given the opportunity to not only learn about the industry, but you have someone to shadow. Mentors can open doors that otherwise may exclude you. Professional development is also another huge factor to help women of color enter the industry. Networking events are a major way of being introduced to the industry leaders in the IP field. Also, big businesses, who rely on major IP firms to handle their needs, can also help women of color by requiring that firms ensure true diversity and inclusivity by hiring a truly diverse field, which includes women of color. If we can get these businesses to demand that these firms include women of color in their “diversity” dynamic, then the firms would be obligated to hire women of color. Women of color deserve a seat at the table in the world of IP law. We have so much to offer, yet few opportunities to prove ourselves.
Resources are the following articles: American Bar Association: Diversifying Intellectual Property Law, Minority Women are Disappearing from Big Law, Women Make up Majority of U.S. Law School
By: Drew Emerson
What are Soundmarks? According to the T.E.M.P 1202.15, A soundmark is used to identify and distinguish a product of service through audio and must assume a definitive shape or arrangement and create in the hearer’s mind an association of the sound. The method in filing an application for sound marks is first making sure that the mark Commonplace and functional. Commonplace means that the sound mark must be distinguishable and not a sound associated with every day life. Functional means that the sound cannot be a functional aspect of the market in that issuing of the mark would be unfair to other members of the market. For example, Harley Davidson’s unique engine sound was not accepted due to the dispute from Kawasaki and Honda that the mark was functional and too similar to their motorcycle’s engine sound. Additionally, the application must select the sound mark as a sound mark. There needs to be a submission of a digital file as well as a specimen of the mark. Also, there must be a detailed description of the mark.
In 2019 soundmarks are more important than ever in areas like the music industry. Producers in the music industry, especially in the hip-hop segment, uses sound identifiers called taglines. Taglines serve two purposes. First, it protects the producer’s instrumental from being assumed by another producer and sold as their product. Secondly, it serves as an identifier of the quality of the instrumental and subsequently the quality of the overall production of the song. Whether it’s “Daytrip took it to ten” or “Zaytoven”, when you hear these tags at the beginning of songs you know that there are high chances that you are listening to a hit. Record labels and studios alike have recently began to include clauses in contracts with producers that give permissive use to any sounds fonts or wav. Files that are used by the producers in their establishment. These clauses create a glaring problem for producers who use taglines. Producers who use any unique indication to identify their product could be copied and used to perpetuate the quality of their brand on products that are not theirs. It is for this reason why education about soundmarks is imperative, especially in the music industry.
Pursuing the usual enforcement techniques can be difficult on social media, particularly when the identity of the infringer is unclear or unknown. There are many methods that people use to infringe on trademarks online. One way is competitors on social media sites will change logos or brand names just slightly to pass them as their own. And will profit off of it. For example, people will create accounts that use another person’s image and pictures, but be almost like a catfish. The longer the pages go undetected, the more the person can profit from it with ads or even accepting endorsements. Cybersquatting is another area where trademark rights can be infringed on the web or social media. “Cybersquatting is the bad faith registration of famous brand names as internet domain names in order to force the rightful owners of the marks to pay for the right to engage in e-commerce under their own trademark.” Cybersquatters will use a variation of the trademark that is only slightly different to gain revenue from people who land on the wrong website. Citigroup versus Citygroup raised this very concern. The real trademark owner was able to show they had lost 100,000 in just click bait revenue. Other times, the harm may actually be inflicted on consumers where they are confused into online scams. Enforcing trademark rights on social media can be difficult because infringers are often unknown or disappear quickly. Leaving marginalized communities without a person to go after legally. In addition, damage to their brand may have already happened through instagram scam pages or fake websites looking for clickbait. While social media trademark policies may be a start to helping solve some trademark infringement, much of the task is left to the trademark holder themselves. Thus, it is imperative that one constantly searches their mark on google and social media platforms to ensure others are not infringing.
Here is the link to the presentation:
Hashtags got their start on Twitter over a decade ago as a way of making it easier for people to find, follow, and contribute to a conversation, but considering their influence, questions on whether they can be trademarked are prevalent. If you do not know, hashtags serve 3 major purposes. (1) Hashtags help you get found by your target audience; (2) improve your clickthrough rates; and (3) are a great tool for research. As seen with #blacklivesmatter. With its origins in one heartfelt Facebook post, following the 2012 shooting of 17-year-old Trayvon Martin, this hashtag has spawned a civil rights movement that has changed the face of the United States. There are now more than 26 Black Lives Matter chapters across the US. More than any civil rights movement in history, the Black Lives Matter movement has been brought together from across the world by the uniting power of social media. #aslicebucketchallenge Who doesn’t remember the summer of 2014, when Facebook newsfeeds everywhere were filled with people having ice and water poured over their heads? It was the first of the viral charity challenge hashtags, raising money and awareness for the ALS Association, and it set a precedent that many have tried to match in the years since. Those few examples prove that there’s probably no easier way to tell a digital narrative, and have it grow than the ability to use the hashtag. All sorts of movements have since taken up the hashtag and used it to great effect, ranging from the 2010 Tea Party movement of conservative populists, who have rocked American politics to activists. So now the questions is can you trademark these powerful marks? In the United States, a hashtag can be trademarked if it serves a source-identifying function for the trademark owner’s goods or services. There are, however, some shortcomings and concerns that companies should be aware of. Importantly, hashtags are inherently meant to be used by as many people as possible to develop online conversations. Given the exclusive nature of trademark ownership, hashtags can present a challenge to mark owners in policing uses of their hashtag trademarks. Relatedly, brand owners may open themselves up to exposure or even liability if their hashtag trademarks are used improperly or in a negative or controversial context by consumers. Ultimately, brand owners should weigh the benefits of joining the Internet “conversation” via the use of hashtag trademarks against the potential issues that can arise due to difficulties in policing how their hashtags are being used.