Online Service Providers Must Now Designate their DMCA Copyright Agent Electronically

December 5, 2016 · by ·

Section 512(c) of the Digital Millennium Copyright Act (“DMCA”) provides Online Service Providers (OSPs) four types of safe harbor against copyright infringement. In order to benefit from these safe harbors, OSPs must designate a DMCA copyright agent. Such agents are designated by the OSPs to receive notifications of claimed infringement, the “DMCA takedown notices,” which are usually sent by email.
Since December 1, 2016, OSPs must do so electronically. Even if an OSP had formally designated a DMCA agent using the paper method, it must now do so again electronically before January 1, 2018.

dmcaThe Four DMCA Safe Harbors

The DMCA provides a safe harbor for transitory communications. Entities merely serving as a conduit for transmitting, routing or providing connections for digital online communications that are between or among points specified by a user, of material of the user’s choosing, without modification to the content of the material as sent or received, are shielded from copyright infringement liability, Section 512(k)(1)(A).

The DMCA also provide a safe harbor to providers of online services or network access, or operators of facilities for such services, for system caching, storing information at the direction of users and providing links or other tools for locating material online, Section 512(k)(1)(B).

OSPs Must Designate a DMCA Agent

In order to benefit from these four safe harbors, OSPs must designate individuals as copyright agents and must provide this information on their website “in a location accessible to the public.” They must also provide this information to the U.S. Copyright Office, by providing the name, address, telephone number and email address of the agent.

The Copyright Office maintains a directory of these agents. The list of DMCA agents 1998-2016 is available here. This list will now be phased out. If a OSPs has a DMCA listed in this directory, it satisfies its obligation to register a DMCA agent, but only until December 31, 2017. The designation will expire after this date.

New Rule as of December 1, 2016: OSPS Must Designate their DMCA Agent Electronically

Under interim regulations in effect between November 3, 1998 and November 30, 2016, OSPs could designate agents using a paper form. This changed on December 1, 2016, when the new regulation about the new online registration system entered into force. Under the new electronic system, OSPs must now designate their agents electronically.

Therefore, an OSP wishing to retain its active designation must submit electronically a new designation using the new online registration system by December 31, 2017. The new directory is available here. Good news: the fee to register electronically is significantly lower than was the fee was to register by paper, from $106 to register by paper to $6 to register by electronically.

Image is courtesy of Flickr user Cory Doctorow under a CC BY-SA 2.0 license.

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Is Trading Twitter Profiles a Violation of Alabama Right of Publicity Act?

November 29, 2016 · by ·

On 24 August 2016, Jason Parker and other Twitter users residing in Alabama filed a putative class action suit against Twitter and Hey Inc., the maker of the Stolen app, which allows players to use Twitter profiles, including those of the plaintiffs, to create profile cards to be traded online. Plaintiffs claim this is a violation of the recently enacted Alabama Right of Publicity Act, Alabama Code 1975 § 6-5-770, et seq.

According to the complaint, Hey entered into a partnership with Twitter around June 2015. The micro-blogging company allowed Hey to access its application programming interface so that information about Twitter’s users accounts could be imported into the app. Hey then imported the identities of Twitter users, including their names and photographs, into the app, even though they had not consented to it.

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Hey, Inc. started selling its “Stolen” app on October 2015, by invitation only or to everyone with a verified Twitter profile. Stolen users could buy and sell Twitter profile images online as if they are trading cards. They were given some virtual credit when signing up for the game and earned more credit when playing the game and could buy more credit using real-world currency.

Initially, the profile mentioned that the profile “belonged” to the Stolen user who “owned” the profile he had bought, but this was changed to show instead that the player had “stolen” the profile. To steal a profile meant that a user had bought a particular profile for a higher price than the one paid by another user.

Even more troublesome, users owning a particular profile on Stolen could alter the name of the profile, even by using derogatory terms. This led Representative Katherine M. Clark (D-MA5) to send a letter on 12 January 2016, to Jack Dorsey, Twitter’s CEO, and to Tim Cook, CEO of Apple, which sells the app. Representative Clark was concerned about possible use of this app as a “tool to harass, bully and intimidate,“ particularly women and people of color.”

The renaming function was deleted by Hey on 12 January 2016, but Representative Clark was also concerned about the use of the Twitter profiles without the consent of their owners. She asked Dorsey to “immediately suspend Stolen access to Twitter until nonconsenting profiles are removed and safeguards are implemented to ensure that no Twitter profile may be used by the [app] without clear, express consent.”

Hey temporarily pulled the app from the Apple’s store the same day, posting on Twitter: “We’ve heard everyone’s concerns and have decided the best thing to do is to shut down.” It then launched a new app, “Famous: The Celebrity Twitter,” which the complaint alleges is merely a re-brand of Stolen, because its “nature and core functionality (and look and feel) remain the same.” The complaint further argues that the app continued to “allow its players to display ownership over real-life people by spending virtual currency,” and that it is just “Stolen with a new name.” They claim this a violation of Alabama right of publicity law.

The broad scope of the Alabama Right of Publicity Act

The Alabama Right of Publicity Act went into effect on 1 August 2015. It protects the right of publicity of individuals “in any Indicia of Identity,” which is defined by Section 6-5-771 as “[i]nclud[ing] those attributes of a person that serve to identify that person to an ordinary, reasonable viewer or listener, including, but not limited to, name, signature, photograph, image, likeness, voice, or a substantially similar imitation of one or more of those attributes.” The scope of the Alabama law is rather broad, as “indicia of identity” protects even representation merely evoking the person, if it is substantially similar, which is a concept open to interpretation.

The commercial use of the indicia of identity of a person without consent entitles this person to monetary relief, statutory and punitive damages, and injunctive relief. The use must have been “in products, goods, merchandise, or services entered into commerce in this state, or for purposes of advertising or selling, or soliciting purchases of, products, goods, merchandise, or services, or for purposes of fund-raising or solicitation of donations, or for false endorsement.” In our case, there is little doubt that the Alabama Right of Publicity Act protects Twitter profiles, even if the profile does not feature a person’s real name, but rather her avatar or other biographical element allowing for her identification.

There is no federal right of publicity law, and the states have their own laws, which differ in scope. New York right of publicity law, New York Civil Rights Law §§ 50 and 51, protects only the commercial use of a “name, portrait or picture.” California law, California civil Code section 3344-3346, is broader than New York law as it protects against unauthorized commercial use of “name, voice, signature, photograph, or likeness,” but is not as broad as Alabama law. Such difference in state right of publicity laws may lead to forum shopping. Indeed, the Alabama law would have favored Lindsay Lohan, who lost in September 2016 her New York right of publicity suit against the makers of the video game Grand Theft Auto, because the game “never referred to Lohan by name or used her actual name in the video game, never used Lohan herself as an actor for the video game, and never used a photograph of Lohan.” Lindsay Lohan, however, may have won her case under Alabama law.

Black market for influencer marketing?

This case is interesting as it shows that social media profiles have monetary value, and for different reasons. In this case, Twitter was able to license their use for Hey’s commercial gaming purposes. But profiles can also be used for marketing purposes. An article published online noted that if a player owns a profile on Stolen, he could then use it to promote his own products. Such use would create a sort of black market for influencer marketing, which occurs when companies are tapping into the influencing buying power of a social media star to promote their products or services. Even if, say, Kim Kardashian does not endorse a particular product on her various social media accounts, the company making the product could still “steal” her profile on Stolen and use it as a way to promote the product, as long as it is able to hold the profile. This complaint is only against Hey and Twitter. Could a complaint against one of the Stolen users also be successful, if filed?

This article was first published on the TTLF Newsletter on Transatlantic Antitrust and IPR Developments published by the Stanford-Vienna Transatlantic Technology Law Forum.

Image is courtesy of Flickr user Esther Vargas under a CC BY-SA 2.0 license.

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Filed Under: Right of Publicity, Social Media Law · Tagged: , ,

CJEU Rules French Out-of-Print Book Database Illegal Under InfoSoc Directive

November 18, 2016 · by ·

The Court of Justice of the European Union (CJEU) held on November 16, 2016, that the French law which allowed for the digital exploitation of out-of-print books is precluded by article 2(a) and article 3(1) of Directive 2001/29/EC, closing the door on a scheme which allowed orphan books and other out-of-print books to be accessible online. The case is Soulier and Doke, C-301/15.

The French Law Allowing For the Digital Exploitation of Out-of-Print Books

A French law, enacted on March 1, 2012, the Law No. 2012-287 on the digital exploitation of out-of-print 20th century books, added articles L. 134-1 to L. 134-9 to the French intellectual property Code (CPI). Its February 27, 2013 décret (decree) n˚2013-182 stated how the law should be implemented.

The law introduced a mechanism allowing for the digital exploitation of out-of-print books published between January 1, 1900 and December 31, 2000, and which were no longer available for sale. Some of them are still protected by copyright. Some of them are orphan books, that is, books for which right holder is no longer known. The law directed the creation of a public database indexing all of these books, which would be available to the public for free. The Bibliothèque Nationale de France, France’s national library, was put in charge to implement and update this database, which was named ReLIRE (to read again).

Article L. 134-4 of the CPI provided the author, and the editor holding the right to reproduce the book in print, the right to opt-out of that scheme. The opt-out right had to be exercised within six months after the book had been placed in ReLIRE. After six months, a collecting society was in charge of authorizing the reproduction and the performance in digital format of the book, in return for remuneration, on a non-exclusive basis for a renewable five year period. The remuneration was shared equitably between authors and editors.

The author could exercise her opt-out right even after six months if she believed that reproducing and representing the book was likely to harm her honor or reputation. The author could also opt-out any time if she could prove that she held the exclusive right to exploit the book in a digital form.2549672390_7c7dbd415a_z

Facts and Procedure

Mr. Soulier and Ms. Doke, both authors, asked, in May 2013, the Conseil d’État, the Council of State, France’s highest administrative court, to annul the February 27, 2013, decree. They claimed that articles L.134-1 to L.134-9 of the CPI limited their exclusive right of reproduction provided by Article 2(a) of Directive 2001/29 (the InfoSoc Directive) but that this limitation was not included in the list of exceptions to this right listed by Article 5 of the same Directive.

The Council of State first asked the Conseil Constitutionnel, the Constitutional Council, to rule on the constitutionality of the law. On February 28, 2014, the Constitutional Council issued its decision. It found that the law did not violate the right of the copyright holders, that it did not prevent them from exploiting their works in other forms than the digital form and that the law did not violate the right of having a private property which is protected by article 17 of the 1789 French Declaration of Human Rights and Civic Rights.

The Council of State then stayed the proceeding and asked the CJEU for a preliminary ruling on the question of Article 2 and 5 of the InfoSoc Directive 2001/29 precluded articles L. 134-1 to L. 134-9. On November 16, 2016, the CJEU held that it does indeed.

Authors Must Be Able to Give Their Permission Prior of the Placement in the Database

The CJEU first noted that the exceptions provided by the French law do not fall within the scope of the exhaustive list of exceptions provided by Article 5 of the InfoSoc Directive, and thus Article 5 is irrelevant to this case. However, Article 2 (a) and 3(1) of the Directive both provide an exception on the rights of reproduction and communication to the public and are thus relevant to this case. They provide, respectively, that the Member States must grant authors an exclusive rights of reproducing their works or to prohibit their direct or indirect the reproduction by any means and in any form, and that the Member States must grant authors the exclusive rights to authorize or prohibit any communications to the public of their works.

For the CJEU, the rights given to authors by Article 2(a) and Article 3(1) require the consent of the author prior to the reproduction of his work. However, this consent can be implicit or explicit (Soulier at 35). The French scheme, while giving the author a right to opt-out, does not inform them that their works will be placed in the ReLIRE database prior to that placement.

As the French law does not offer “a mechanism ensuring authors are actually and individually informed…, it is not inconceivable that some of the authors concerned are not, in reality, even aware of the envisaged use of their works and, therefore, that they are not able to adopt a position, one way or another, on it. In those circumstances, a mere lack of opposition on their part cannot be regarded as the expression of their implicit consent to that use” (Soulier at 43).

While the CJEU admitted that the InfoSoc Directive cannot prevent Member States from implementing legislation allowing for the digital exploitation of out-of-prints books “in the cultural interest of consumers and society as a whole,” pursuing that objective “cannot justify a derogation not provided by the EU legislature to the protection that authors are ensured by [the InfoSoc Directive]” (Soulier at 45).

Authors Have the Exclusive Rights to Authorize the Reproduction and Communication of their Works

The CJEU was also troubled by the fact that the French law gave the editors of the books in printed format the right to authorize or not their reproduction in the digital database. For the CJEU, only authors have the right to exploit their works because the rights of reproduction and communication to the public provided to them by Article 2(a) and Article 3(1) of the InfoSoc Directive are exclusive rights. Also, Article 5(2) of the Berne Convention, to which the EU is a party and which the InfoSoc Directive is intended, in particular, to implement, requires that authors must be able to exercise their rights of reproduction and communication without any formalities.

However, if an author decided to terminate future exploitation of his work in a digital format, he had to secure, under French law, the agreement of the publisher holding the right of the work in a printed format (Soulier at 49). For all of these reasons, the CJEU held that Article 2(a) and Article 3(1) of the InfoSoc Directive preclude a national legislation such as the one implanted in France to allow the digital exploitation of out-of-print books.

What about Orphan Works?

While the CJEU recognized that exploiting such books is of value to society, it did not provide the Member States much clue as to how they could implement a scheme to make these books available to the public which would pass muster with the EU law.

Should Soulier be interpreted as only barring the commercial exploitation of out-of-print books which authors are known? The Court placed much weight on the importance of securing the consent of the author of the work prior of its placement into the database. Does that mean that orphan works can never be placed in such a database, since it is impossible to secure the consent of their unknown right holder, or, to the contrary, should Soulier be interpreted as meaning that only orphan books can be placed into the database, since it is not possible to secure the prior consent of their authors, and they are thus out of the scope of the Soulier decision?

Image is courtesy of Flickr user Ginny under a CC BY- SA 2.0 license.

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Ballot Selfies Are Still Illegal in New York

November 7, 2016 · by ·

Three voters registered in New York have filed a suit in the Southern District of New York (SDNY) (the SDNY Complaint) against the New York Board of Elections and New York City Board of Elections. They claim that the New York ban against ballot selfies violates their freedom of speech, and are asking the SDNY to preliminary enjoin Defendants from enforcing New York Elections Law banning booth selfies.

On November 3, 2016, District Judge Kevin Castel denied Plaintiff’s motion for a preliminary injunction.

“This action was commenced 13 days before the presidential election, even though the statute has been on the books longer than anyone has been alive. Selfies and smartphone cameras have been prevalent since 2007. A last-minute, judicially-imposed change in the protocol at 5,300 polling places would be a recipe for delays and a disorderly election, as well intentioned voters either took the perfectly posed selfie or struggled with their rarely-used smartphone camera. This would not be in the public interest, a hurdle that all preliminary injunctions must cross.”

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The New York Law Banning Booth Selfies

Plaintiffs claimed that they are prevented from engaging in political expression and speech because New York Election Law, N.Y. Elec. Law § 17-310(10) makes it a misdemeanor to show one’s ballot “after it is prepared for voting, to any person so as to reveal the contents, or solicits a voter to show the same” (see here for a former post on the topic).

Judge Castel wrote about the history of the New York law:

“The provision, enacted 126 years ago, was part of 19th century legislation popularly known as the Australian ballot reforms. The statute did not merely offer the voter the option of voting in secrecy, but mandated it, and for good reason. As Justice Blackmun noted in Burson, the nation had been plagued with voter bribery prompted by ballots that political parties “often printed with flamboyant colors, distinctive designs, and emblems so that they could be recognized at a distance.” 504 U.S. at 200. The problem was not resolved by standardized ballots because “the vote buyer could simply place a ballot in the hands of the bribed voter and watch until he placed it in the polling box.” Id. Because of the statute, those who would engage in ballot policing, for the purpose of bribery or to enforce orthodoxy among members of a group, whether members of union, employees of a company, or members of a religious group, have longed been deprived of an essential tool for success. The absence of recent evidence of this kind of voter bribery or intimidation does not mean that the motivation to engage in such conduct no longer exists. Rather, it is consistent with the continued effectiveness of the New York statute.”

The SDNY Complaint noted that similar laws have been struck down in three states, Michigan, Indiana and New Hampshire.

New Hampshire Law Banning Booth Selfies Found Unconstitutional

Indeed, on September 28, the First Circuit, which is the Federal Court of appeals for New Hampshire, Maine, Massachusetts, Rhode Island, and Puerto Rico, struck down a New Hampshire law which made ballot selfies illegal, Rideout v. Gardner. The Court found that its “restriction affects voters who are engaged in core political speech, an area highly protected by the First Amendment.”

The purpose of the New Hampshire law banning selfies at the booth was to avoid vote buying and voter intimidation, and voters who published their voting selfies could be fined $ 1,000 under N.H. Rev. Stat. Ann. § 659:35.

659:35 Showing or Specially Marking Ballot. –

I. No voter shall allow his or her ballot to be seen by any person with the intention of letting it be known how he or she is about to vote or how he or she has voted except as provided in RSA 659:20. This prohibition shall include taking a digital image or photograph of his or her marked ballot and distributing or sharing the image via social media or by any other means.

The First Circuit applied the intermediate scrutiny test, used by the courts to verify the constitutionality of a content-neutral regulation which purpose is unrelated to the content of expression. Such regulation must be “narrowly tailored to serve a significant governmental interest.” If it does not meet this standard, it violates the First Amendment.

The First Circuit applied the test and found the statute facially unconstitutional, as the government could not justify the restrictions that banning booth selfies imposed on speech. The Court noted that “the legislative history of the bill does not contain any corroborated evidence of vote buying or voter coercion in New Hampshire during the twentieth and twenty-first centuries.”

The Court also noted that even if ballot selfies would indeed “make vote buying and voter coercion easier by providing proof of how the voter actually voted, the statute still fails for lack of narrow tailoring.” In other words, the law cannot solve a problem with a hedge hammer, but must instead be narrowly tailored to only forbid what is necessary to achieve its goal. A general ban on booth selfies is too broad a measure, as it “reaches and curtails the speech rights of all voters, not just those motivated to cast a particular vote for illegal reason.” There is not a current voting fraud problem which can only be solved by banning selfies at the booths. The First Circuit concluded that “New Hampshire may not impose such a broad restriction on speech by banning ballot selfies in order to combat an unsubstantiated and hypothetical danger.”

Booth Selfies and Democracy

The SDNY Complaint argued that ballot selfies “[have] become a common manner of political expression.” Snapchat (now Snap) had filed an amicus curiae brief in the Rideout v. Gardner case where it pointed out that that “younger voters participate in the political process and make their voices heard” by taking selfies at the polls. Its brief had cited a Pew Research Center 2012 report, which found that “22% of registered voters have let others know how they voted on a social networking site such as Facebook or Twitter,” that “30% of registered voters have been encouraged to vote for [one Presidential candidate or the other] by family and friends via posts on social media such as Facebook or Twitter” and that “20% of registered voters have encouraged others to vote by posting on a social networking site such as Facebook or Twitter.” These percentages are likely to be higher this year as more and more people are active social media users.

A Hodgepodge of Laws

Booth selfies are banned in some states, tolerated in others, and legal in some. The press has recently published helpful guides so that voters can check out whether they can indeed share their voting selfies on social media, see here or here. However, these guides may become quickly obsolete, as several cases challenging the constitutionality of law forbidding booth selfies have been filed.

The Sixth Circuit upheld on October 28 Michigan’s ban of booth selfies for this upcoming election. The Court reserved the right of plaintiff to fully litigate his First Amendment complaint, but only after the election, as the issue is too important to be decided too quickly (the complaint had been filed in September 2016). The Sixth Circuit noted, however, that the “ban on photography at the polls seems to be a content neutral regulation that reasonably protects voters’ privacy—and honors a long tradition of protecting the secret ballot.”

In California, the ACLU had filed a suit on October 31, requesting the District Court for the Northern District of California to issue a temporary restraining order and a preliminary injunction to enjoin California Secretary of State to enforce the California law banning booth selfies, Cal.Elec. Code §§ 14276, 14291. The Court rejected the demand on November 2. A new law will allow a California voter to disclose how she has voted, but it will only enter into force on January 1, 2017, too late for the Presidential Elections.

What is next? New York voters will not be able to share their booth selfies in this week’s election. Regardless, please VOTE!

 

Image is courtesy of Flickr user justgrimes under a CC BY-SA 2.0 license.

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Filed Under: First Amendment, Free Speech, New York Law, Selfies Law · Tagged: , ,

Of the Importance of Having a Privacy Shield Notice

October 31, 2016 · by ·

An article I wrote in French about the U.S.-E.U. Privacy Shield Framework, De la sphère au bouclier : qu’est-ce que le Privacy Shield ? has just been published by the Information, données & documents review.

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The E.U. does not find the U.S. to have an adequate level of protection, as required by the Data Protection Directive. Therefore, U.S. companies wishing to transfer personal data to the European Economic Area (EEA), which includes the European Union (EU) and also Iceland, Liechtenstein and Norway, must implement a valid transfer mechanism.

Among these mechanisms are the Binding Corporate Rules (BCRs), which are internal rules a multinational group of companies may adopt to define its global policy regarding international transfers of personal data within the corporate group.

Companies may also implement Standard Contractual Clauses (SCCs). The E.U. Commission has issued two sets of such clauses, one for transfers from data controllers to data controllers established outside the EU/EEA, and one for the transfer to processors established outside the EU/EEA.

Companies used to be able to self-certify to the U.S.-EU Safe Harbor Framework, negotiated by the U.S. Department of Commerce (DoC) and the EU Commission. Self-certified companies which voluntarily agreed to respect the Safe Harbor principles and the Safe Harbor frequently asked questions were deemed to comply with E.U. data protection law when transferring personal data from the EU to the US. However, on October 6, 2015, the European Court of Justice declared the Safe Harbor Framework invalid. The U.S. and the E.U. Commission then engaged in negotiations to reach a new agreement which would allow transatlantic personal data transfer. The Privacy Shield was adopted on July 12, 2016 and became operational on August 1, 2016.

If a company wishes to participate in the Privacy Shield, it must publicly declare its respect for the Privacy Shield Principles, as stated in the Privacy Shield ‘Notice’ Principle.

Therefore, these companies must have a privacy policy which complies with the Privacy Shield Principles. The DoC will regularly review the policies of self-certified companies to ensure that they follow these principles. Failure to do so may lead to sanctions and removal from the Privacy Shield list. Therefore, having a Privacy Shield-compliant privacy policy is of the utmost importance.

Privacy Shield Principles:

1. Notice
2. Choice
3. Accountability for Onward Transfer
4. Security
5. Data Integrity and Purpose Limitation
6. Access
7. Recourse, Enforcement and Liability

Privacy Shield Supplemental Principles:

1. Sensitive Data
2. Journalistic Exceptions
3. Secondary Liability
4. Performing Due Diligence and Conducting Audits
5. The Role of the Data Protection Authorities
6. Self-Certification
7. Verification
8. Access
9. Human Resources Data
10. Obligatory Contracts for Onward Transfers
11. Dispute Resolution and Enforcement
12. Choice – Timing of Opt-Out
13. Travel Information
14. Pharmaceutical and Medical Products
15. Public Record and Publicly Available Information
16. Access Requests by Public Authorities

Image is courtesy of Flickr user Riley Kaminer under a CC BY 2.0 license.

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CJEU: Posting a hyperlink to infringing content not a communication to public, unless…

October 26, 2016 · by ·

Is providing a hyperlink to a work protected by copyright, which was published online without the authorization of the right holder, an infringement of copyright under European Union law? In order to answer this question, the European Court of Justice (ECJ) had to decide whether providing such a hyperlink is a communication to the public within the meaning of Article 3(1) of Directive 2001/29 on the harmonisation of certain aspects of copyright and related rights in the information society (the InfoSoc Directive).

Article 3(1) provides that authors have the exclusive right to authorize or prohibit “any communication to the public of their works, by wire or wireless means, including the making available to the public of their works in such a way that members of the public may access them from a place and at a time individually chosen by them.” The InfoSoc Directive does not define communication of the work to the public. Its Recital 23, however, specifies that such right “should be understood in a broad sense covering all communication to the public not present at the place where the communication originates.”

The European Court of Justice (EJC) had ruled in 2014 in Svensson and Others (Svensson) that Article 3(1) must be interpreted as meaning that providing a hyperlink on one website to works made freely available  on another website is not a communication to the public because “a communication . . . concerning the same works as those covered by the initial communication and made… by the same technical means [as the initial communication] must also be directed at a new public.”16545913218_ee57b4f493_z

The ECJ defined “new public” as a “public which had not been taken into account by the copyright holders when they authorized the initial communication to the public.“ The ECJ concluded that making a work available by a clickable link does not communicate it to a new public (Svensson at 24), but did not specify if it would make a difference if the works had been made available without the authorization of the right holder.
The European Court of Justice (ECJ) answered that question on 8 September  2016 when it ruled in GS Media BV v. Sanoma Media Netherlands BV, Playboy Enterprises International Inc., Britt Geertruida Dekker (GS Media) that posting hyperlinks to protected works, if they were made freely available to the public but without the consent of the right holder, is not a communication to the public within the meaning of article 3(1). However, if the hyperlinks have been posted for profit, then it is presumed that it is a communication to the public, although that presumption is rebuttable (at 51).

Facts of the case

Here are the facts which led to GS Media. Sanoma publishes Playboy magazine. It commissioned Mr. Hermès, a photographer, to take nude pictures of Dutch starlet Britt Dekker. Samona has Hermès’ full power of attorney to represent him in enforcng his rights in the photographs. GS Media operates the GeenStijl website. In October 2011 it published a report about the leak of Ms. Dekker’s photos. The report included a hyperlink leading viewers to Filefactory, an Australian data-storage website, where, by clicking on another hyperlink, visitors could access a folder containing eleven photographs of Ms. Dekker. GeenStijl had been informed that these photos were available online by an anonymous tip, but had not published them itself on Filefactory.

Sanoma repeatedly asked GS Media to remove the GeenStijl hyperlink to Filefactory but to no avail. However, the photographs were removed from Filefactory. GS Media then published another report with a hyperlink leading to another site where the photographs were available. Playboy published Ms. Dekker’s pictures in December 2011.

Samona sued GS Media for copyright infringement in the District Court of Amsterdam and won. On appeal, the Amsterdam Court of Appeal held that GS Media had not infringed the copyright of the photographer because the photographs had already been communicated to the public when posted on Filefactory. GS Media and Sanoma cross-appealed to the Supreme Court of the Netherlands.

Samona argued that, in view of Svensson, posting a link to a website on which a work has been published is a communication to the public, whether the work was published previously with the right holder’s consent or not. The Supreme Court of the Netherlands stayed its proceeding and requested a preliminary ruling, asking the ECJ to clarify whether there is a communication to the public within the meaning of Article 3(1) if the copyright holder has not authorized to make the work available on the website to which the hyperlink directs.

AG Wathelet: Posting hyperlinks not communication to the public, unless circumvents restriction access

Advocate General Wathelet (AG Wathelet) delivered his opinion on the case on 7 April 2016. He reviewed the two cumulative criteria used by the ECJ in Svensson to analyze whether an act of communication is made to the public: there must be an “act of communication” of a work and such communication must have been made “to a public.”

For AG Wathelet, posting a hyperlink on a site which directs to works protected by copyright that are freely accessible on another website is not an “act of communication” within the meaning of Article 3(1) because it is not “indispensable” to post the hyperlink to make the protected works available to the public (AG Wathelet opinion at 60). The act which made the work available is the one made by the person who originally posted the protected work.

AG Wathelet also examined whether such communication is made “to a public” even though it was “irrelevant” to do so in this case (AG opinion at 61). AG Wathelet held that the “new public” criterion introduced by Svensson did not apply in this case because that criterion is only applicable if the copyright holder has authorised the initial communication to the public (AG opinion at 67). He noted further that, in Svensson, the ECJ had ruled (paragraphs 28 and 30) that if “there is no new public, the authorisation of the copyright holders is . . . not required for the communication to the public in question.” For AG Wathelet, even if the ECJ would apply the “made to a public” criterion to GS Media, it would not be satisfied in this case because the ECJ clearly indicated in Svensson that there is a new public only if publishing the hyperlink was “indispensable” for making the protected work available to the new public (AG opinion at 69).

In this case, the photographs had already been made available by the file sharing site. AG Wathelet noted, however, that it was not clear from the facts whether the photographs were indeed freely accessible. He invited the referring court to verify whether the file sharing sites had put access-restrictions in place, and, if it had, verifying if the link posted on GeenStijl “merely facilitated access to a certain degree” (AG opinion at 71). If the GeenStijl hyperlink had allowed users to circumvent restrictions put in place by the third-party to limit access to protected works, then it was “an indispensable intervention without which those users could not enjoy the works . . . and . . . an act of communication to a public which must be authorised by the copyright holder pursuant to Article 3(1) of Directive 2001/29” (AG opinion at 73).

Therefore, for AG Wathelet, linking to content protected by copyright made freely accessible to the public, whether such publication had been authorized by the right holder or not, is not a communication to the public, unless the website publishing the content had put in place some restriction to access.

The ECJ ruling: Posting hyperlinks not communication to the public, unless made for profit

The ECJ did not entirely follow the conclusions of its AG and ruled instead that hyperlinks to protected works, which are freely available on another website without the consent of the copyright holder, are not a communication to the public within the meaning of Article 3(1), but only if the hyperlinks are “provided without the pursuit of financial gain by a person who did not know or could not reasonably have known the illegal nature of the publication of those works on that other website” (at 56). However, if the links are published for profit, then knowledge of the illegal nature of the publication must be presumed.

The ECJ explained that this ruling allows copyright holders to act against the unauthorized publication of their work on the website, to act against “any person posting for profit a hyperlink to the work illegally published,” and also to act against any person who posted the links without pursuing financial gain, but who knew, or should have known that the work had been illegally published, or if posting such link circumvents access restrictions put in place by the website which originally published the work illegally (GS Media at 53).

Is GS Media a good decision?

GS Media is a good decision, but only because ruling otherwise, as noted by the ECJ at paragraph 46, would mean that individuals providing hyperlinks on their sites would have to check whether the content posted on the site to which they direct infringes the rights of copyholders. However, GS Media is also a potentially troubling decision as it leaves the door open to allowing right holders to sue individuals posting hyperlinks to works protected by copyright, without circumventing access protection, even if they did not post the link for profit.

Indeed, the presumption that an individual posting hyperlink not for profit “does not  . . . [have] full knowledge of the consequences of his conduct in order to give customers access to a work illegally posted on the Internet” (at 48) is rebuttable (at 51). The right holder can rebut the presumption by proving that the individual knew that the work had been illegally published, but also by proving that he “ought to have known  . . . for example . . . [if] he was notified thereof by the copyright holders” (at 49). But notification is presented as only one example of the ways it may be presumed that the individual posting the hyperlink “ought to have known” that the content had been posted illegally.

The next ECJ case about hyperlinks and article 3(1) will likely clarify the instances in which courts must rule that the individuals ought to have had such knowledge. Meanwhile, individuals posting hyperlinks to content protected by copyright illegally published, even for non-profit, remain vulnerable to, at best, cease-and-desist letters, and, at worst, lawsuits.

This article was first published on the TTLF Newsletter on Transatlantic Antitrust and IPR Developments published by the Stanford-Vienna Transatlantic Technology Law Forum.
Image is courtesy of Flickr user FaceMePLS under a CC BY 2.0 license.

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Filed Under: EU Copyright, TTLF Newsletter · Tagged: , , , , , , ,

New York Fashion Company Sued Over Use of Photograph on Instagram

October 14, 2016 · by ·

On September 27, 2016, Matilde Gatoni, a French-Italian photographer based in Milan, filed a copyright infringement suit against New York fashion company Tibi in the Southern District of New York (SDNY). Plaintiff alleges that Tibi reproduced without authorization one of her photographs (the Photograph) by posting it on its Instagram account.

Ms. Gatoni regularly posts photographs on her Instagram account. On August 26, 2016, she posted a picture of a building in Essaouira, Morocco. The building is seen from the street, where it commands a corner and the Photograpgh allows the viewer to see it on both sides, which are painted in blue, yellow, white and pink. A woman wearing a long flowing dress in the same color tones of the walls is seen from the back at the right of Photograph. The posting on Instagram was the first publication of the Photograph.

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Defendant Tibi also has an Instagram account. The complaint alleges that the fashion company reproduced the Photograph by cropping it and posting it on its own Instagram account, without Plaintiff’s authorization. Exhibit D shows the picture as allegedly posted on Instagram. The picture has been cropped on the right side and on the lower side,  cutting the woman off and making the pink part of the wall the center of the image.

Plaintiff is seeking damages and Defendant’s profits pursuant to 17 U.S.C. § 504(b) for the alleged infringement, and statutory damages up to $150,000 per work infringed for Defendant’s willful infringement of the Photograph, pursuant to 17 U.S.C. § 504(c).

Complaint also alleges that Tibi “intentionally and knowingly removed copyright management information identifying Plaintiff as the owner of the Photograph,” in violation of 17 U.S.C. § 1202(b), Section 1202(b) of the Digital Millennium Copyright Act, which prevents the unauthorized intentional removal or alteration of any copyright management information. Plaintiff alleges that such removal was done “intentionally, knowingly and with the intent to induce, enable, facilitate, or conceal their infringement of Plaintiff’s copyrights in the Photograph [and that] Tibi … knew, or should have known, that such falsification, alteration and/or removal of said copyright management information would induce, enable, facilitate, or conceal their infringement of Plaintiff’s copyright in the Photograph.”

Plaintiff seeks Plaintiff’s actual damages and Defendant’s profits, gains or advantages of any kind which can be attributed to the falsification, removal and alteration of copyright management information, or statutory damages of at least $2,500 and up to $25,000 for each instance of  false copyright management information and/or removal or alteration of copyright management information.

Copyright registration of the Photograph is pending, but there is no doubt that it will be granted, as the picture meets and exceeds the threshold of originality. Copyright registration is necessary when suing for copyright infringement, but is not necessary to protect one’s work by copyright, nor it is necessary that the work contains a copyright notice. It suffices that the work has been fixed and that it is original.

The case will probably settle, but it is interesting to see that copyright infringement suits are still being filed against Defendants who found a work on social media and allegedly used it without permission. Tibi’s Instagram account alternates posts of Tibi’s own models with random photographs of buildings, furniture or landscapes, a sort of digital mood board echoing the colors and shapes of the garments. Both the photos of Tibi’s models and the random photos garner appreciative comments from Instagram followers. The fashion industry is indeed hungry for images and Instagram plays an increasing role in fashion companies ‘marketing mix.

Should Instagram put in place a proprietary licensing program? This may allow companies interested in featuring a particular photographs an easy way to secure a license.

Picture is courtesy of Flickr user Mike Linksvayer, public domain.

This post was first published on The 1709 Blog.

 

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Une astreinte, c’est quoi? The Ninth Circuit has an answer

October 8, 2016 · by ·

On September 26, 2016, the Ninth Circuit held that courts have the right under Federal Rule of Civil Procedure 44.1 on determining Foreign Law to consider foreign legal materials at the pleading stage, including expert testimony and declarations. This allowed the Court to conclude that the French astreinte is not a fine or an award of damages, which now clears the way for the French Plaintiffs to receive compensation for copyright infringement. The case is Sicre de Fontbrune v. Wofsy, 3:13-cv-05957.

The case may be more of interest to federal procedure buffs than copyright buffs, but I offer it to your attention anyway as being one of the longest copyright infringement cases ever.12438085154_24aa8dd8a3_z

Pablo Picasso had a close relationship with photographer Christian Zervos and allowed him to take many pictures of his works. This led to the publication of the complete catalogue raisonné, published by Cahier d’Art, a publishing company owned by Christian Zervos, then by his heirs. Twenty-two volumes were published from 1932 to 1970, when Picasso was still alive, and eleven more volumes were published after his death. The thirty-three volumes reproduce some 16,000 of Picasso’s works and are regarded as the ultimate reference of Picasso’s work.

Yves Sicre de Fontbrune, now deceased and represented by the representatives of his estate, bought Cahier d’Art’s publisher  stock in 1979, thus acquiring the intellectual property right in the Zervos catalogue raisonné. Alan Wofsy is an American art editor who reproduced some of Zervos’ photographs in two volumes about Picasso, which he presented in 1996 at the annual Salon du Livre (book fair) in Paris. Mr. Sicre de Fontbrune found this use to be infringing and filed suit in 1996. The Paris Court of appeals ruled in his favor in 2001, awarding him an astreinte and forbidding Alan Wofsy “to use in any way whatsoever [the Zervos photographs] under an astreinte of 10,000 francs per infringement.

« Fait défense à Monsieur Alan WOFSY et à la société ALAN WOFSY & ASSOCIATES de faire usage de quelque manière que ce soit des photographies susvisées sous astreinte de 10.000 francs par infraction constatée, dans les 8 jours suivant signification de la présente décision. »

Under French law, an astreinte is a tool given to the judge so that she can insure that the court’s ecision will be executed. It is independent from damages, as stated by article 34-1 of the July 9, 1991 law, now abolished and replaced by article L. 131-2 of the Code des procedures civiles d’exécution which states the same.

Mr. Sicre de Fontbrune filed a claim at the Paris Court of first instance (TGI) to enforce the astreinte. The Court ruled in his favor in 2012 and ordered Alan Wofsy to pay him 2 million euros in astreinte. Mr. Sicre de Fontbrune then filed a suit in California to enforce the astreinte under the California Uniform Foreign-Court Monetary Judgment Recognition Act (CUFCMJRA), which governs the enforcement of foreign-country judgments which are final and enforceable, and which grant or deny monetary recovery.

Translation of astreinte leads to legal discussion

The English versions of both 2001 Paris Court of appeals judgment and the 2012 Paris TGI’s judgment had translated astreinte as an award of damages. Mr. Wofsy moved to dismiss, arguing that an astreinte is a “fine or other penalty” and that therefore the CUFCMJRA does not apply, as it does not apply to foreign judgments granting a “fine or other penalty.” The District Court granted his motion to dismiss, after having considered the declarations of the experts of both parties on the nature of astreinte in French law. The Ninth Circuit reversed and remanded, as it found an astreinte not to be a “fine or other penalty” under the CUFCMJRA.

Federal Rule of Civil Procedure 44.1 on determining Foreign Law

Federal Rule of Civil Procedure 44.1 on determining Foreign Law gives power to a federal court to “consider any relevant material or source, including testimony, whether or not submitted by a party or admissible under the Federal Rules of Evidence [when determining foreign law]. The court’s determination must be treated as a ruling on a question of law.”

The Ninth Circuit found that Rule 44.1 gives the courts a “broad mandate” and that “foreign legal materials-including expert declarations on foreign law can be considered in ruling on a motion to dismiss where foreign law provides the basis for the claim.”

The California Uniform Foreign-Court Monetary Judgment Recognition Act

The Ninth Circuit then undertook the study of the nature of the astreinte in the French legal system, in general, and in particular in this case. To do so, the Court considered the French judgment against Wofsy, the expert declarations of both parties, and materials on astreinte submitted by both parties. It also undertook its own research into American and French law. It concluded that the astreinte was not a fine or an award of damages and thus fell within the scope of the CUFCMJRA.

An easy method to transfer money internationally

The case is interesting as it specifically states that courts may undertake independent judicial research, including research on foreign law, beyond the parties’ submissions (see p. 15). U.S. courts are slowly warming up to the idea of considering foreign law. Justice Stephen Breyer, from the U.S. Supreme Court, published about a year ago a book about the foreign laws which the U.S. Supreme Court Justices have had to consider in the past, which was probably read by many U.S judges.

This post was originally published on The 1709 Blog.

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NLRB Affirms Decision that Chipotle’s Social Media Rules Violated National Labor Relations Act

October 3, 2016 · by ·

I wrote a few months ago on this blog about the decision of Administrative Law Judge Susan A. Flynn from the National Labor Relations Board (NLRB), which ruled in Chipotle Services LLC d/b/a Chipotle Mexican Grill that Chipotle had violated Section 8(a)(1) of the National Labor Relations Act (NLRA) when it asked an employee, who was later fired, to delete some of his tweets about employees’ wages or other terms and conditions of employment.5336842036_e1ebb7d410_z

On August 18, 2016, a three-member panel of the NLRB affirmed, and ordered Chipotle to cease maintaining its ‘Social Media Code of Conduct’ which prohibits its employees from posting incomplete, confidential or inaccurate information and making disparaging, false or misleading statements.
Section 8(a)(1) of the NLRA prohibits employers “to interfere with, restrain, or coerce employees in the exercise of the rights guaranteed in Section 7 [of the NLRA].” Under Section 7 of the NLRA, employees, whether they belong to a union or not, have the right to engage in “concerted activity for the purpose of collective bargaining or other mutual aid or protection,” NLRA §7, 29 U.S.C. §157.

The two challenged provisions of Chipotle’s outdated social media policy were:

“If you aren’t careful and don’t use your head, your online activity can also damage Chipotle or spread incomplete, confidential, or inaccurate information.”
“You may not make disparaging, false, misleading, harassing or discriminatory statements about or relating to Chipotle, our employees, suppliers, customers, competition, or investors.”

However, the panel reversed Judge Flynn’s finding that Chipotle had violated Section 8(a)(1) by directing its employee to delete his tweets which commented on Chipotle’s hourly wage and on the fact that its employees have to go to work even on a snow day, because the panel “[did] not find that [the employee]’s underlying actions were concerted.” There are two prongs in Section 7, whether the activity was concerted and whether the activity was for mutual aid and protection, and so one prong was missing there, according to the panel.

The panel also ordered Chipotle to reinstate the employee who had been fired with back pay and other compensations.

Image is courtesy of Flickr user Nan Palmero under a CC BY 2.0 license.

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Does the Disparagement Provision of the Trademark Act Violate First Amendment? The Supreme Court Will Answer

September 30, 2016 · by ·

The Supreme Court agreed yesterday to review the case of Lee v. Tam. The Supreme Court will now rule on whether the disparagement provision in 15 U.S.C. 1052(a) is facially invalid under the Free Speech Clause of the First Amendment. Section 2(a) of the Lanham Act, 15 U.S.C. 1052(a), provides that no trademark shall be refused registration on account of its nature unless, inter alia, it “[c]onsists of… matter which may disparage.”

I wrote about the case on this blog three years ago and again a few months ago. Last June, I wrote about The Slants filing a petition for a writ of certiorari for the TTLF Newsletter on Transatlantic Antitrust and IPR Developments, published by the Stanford-Vienna Transatlantic Technology Law Forum. Here  it  is below.

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Re-appropriation, disparagement, and free speech. The Slants, continued

We saw in the last issue of the TTLF newsletter that the Federal Circuit held en banc that the disparagement provision of § 2(a) of the Trademark Act, 15 U.S.C. 1052(a), which forbids registration of disparaging trademarks, violates the First Amendment.

The case is about the mark THE SLANTS, which Simon Tam is seeking to register in connection for live performances of his dance-rock music group. The United States Patent and Trademark Office (PTO) refused to register it, claiming it was an ethnic slur disparaging to persons of Asian ancestry. The Trademark Trial and Appeal Board (TTAB) affirmed, but the Federal Circuit ruled in favor of Mr. Tam and remanded the case for further proceeding.

Now the PTO has filed a petition for a writ of certiorari asking the Supreme Court to answer “[w]hether the disparagement provision in 15 U.S.C. 1052(a) is facially invalid under the Free Speech Clause of the First Amendment.”

The Federal Circuit held that §2(a) “penaliz[es] private speech merely because [the government] disapproves of the message it conveys.” The PTO argues in its petition that §2(a) does not prohibit any speech, but only “directs the PTO not to provide the benefit of federal registration to disparaging marks” (petition p. 8).

Would refusing to register THE SLANTS as a trademark merely deny Mr. Tam the benefits of federal trademark registration, or would his freedom of speech be violated?

PTO argument: Mr. Tam is merely denied the benefits of federal registration

The petition notes that federal registration does not create trademarks, but is merely “a supplement to common-law protection” and that a person who first uses a distinct mark in commerce acquires rights to this mark, citing the 1879 In re Trade-Mark Cases Supreme Court case (petition p. 3 and p. 11). The PTO further argues that “[t]he holder of a trademark may use and enforce his mark without federal registration” (petition p. 3). Mr. Tam would still have federal remedies available to him to protect his mark, even if THE SLANTS is not federally registered. For example, the Anti-Cybersquatting Consumer Protection Act, 15 U.S.C. § 1125(D), does not require the mark seeking protection to be registered (petition p. 12).

For the PTO, Section 1052(a) is not unconstitutional, as it does not prohibit speech, nor does it proscribe any conduct or restrict the use of any trademark. Instead, it merely “directs the PTO not to provide the benefits of federal registration to disparaging marks.” Since a mark can function as a mark without the benefit of federal registration, even if a mark is speech, it does not need the benefit of federal registration to be expressed, and therefore, it is not a violation of the First Amendment to refuse to register it.

The PTO further argues that the purpose of Section 1052(a) is to avoid the federal government “affirmatively promot[ing] the use of racial slurs and other disparaging terms by granting them the benefits of registration” (petition p. 10) and that “Congress legitimately determined that a federal agency should not use government funds to issue certificates in the name of the United States of America conferring statutory benefits for use of racial slurs and other disparaging terms” (p. 15-16).

However, in In re Old Glory Condom Corp.(at FN3), the Trademark Trial and Appeal Board noted that “the issuance of a trademark registration for applicant’s mark [does not amount] to the awarding of the U.S. Government’s “imprimatur” to the mark.”

PTO argument: no violation of free speech, as Mr. Tam can still use his mark to convey his message

The PTO also argues that Section 1052(a) is not an affirmative restriction on speech because the federal law does not prevent Mr. Tam “from promoting his band using any racial slur or image he wishes,” does not limit Mr. Tam’s choice of songs played, or the messages he wishes to convey (petition p. 12).

The PTO gives Sons of Confederate Veterans, Inc. as an example of a case where the Supreme Court recognized the government’s right to “take into account the content of speech in deciding whether to assist would-be private speakers.” However, this case can be distinguished from our case. The Supreme Court held in Sons of Confederate Veterans that a state can refuse to issue a specialty license plate if it carries a symbol which the general public finds offensive, in that case a confederate flag. But the owner of a car can still reap the government benefits of car registration, which is mandatory to operate a motor vehicle, even though his speech has been suppressed by the government as disparaging, while, in our case Mr. Tam cannot reap the benefits provided to the holder of a federally registered mark. The fact that he still has some benefits as the owner of a common law mark is irrelevant.

The petition also gives National Endowment for the Arts v. Finley as an example of a case where the Supreme Court upheld the government’s right to take moral issues into consideration when denying a federal benefit. In this case, a court of appeals had held that §954(d) (1) of the National Foundation of the Art and the Humanities Act violated the First Amendment. This federal law requires the Chairperson of the National Endowment for the Arts (NEA) to make sure “that artistic excellence and artistic merit are the criteria by which applications are judged, taking into consideration general standards of decency and respect for the diverse beliefs and values of the American public.” The Supreme Court found in Finley that §954(d) (1) was constitutional.

However, Finley can also be distinguished from our case. The Supreme Court noted there that respondents had not “allege[d] discrimination in any particular funding decision” and that, therefore, the Supreme Court could not assess whether a particular refusal for the NEA grant was “the product of invidious viewpoint discrimination.” In our case, we do know that the only reason the PTO refused to register THE SLANTS is because it assessed the mark to be disparaging, and so the Supreme Court could very well find this decision to be an “invidious viewpoint discrimination.” Also, while not receiving a grant from the NEA may make it more difficult for an artist to create art, it does not entirely prevent it, even a particular piece of art which would shock standards of decency.

If a mark is a racial slur, should the intent of applicant for registering the mark matter?

The TTAB affirmed the refusal to register THE SLANTS because it was disparaging to persons of Asian ancestry and because the mark was disparaging to a substantial composite of this group. The PTO noted in its petition that the TTAB had determined “that Section 1052(a) prohibits registration of respondent mark despite the fact that respondent’s stated purpose for using the mark is to “reclaim” the slur as a sign or ethnic pride” (emphasis in original text, p. 13 of the petition). The PTO seems to argue that Section 1052(a) views disparaging content neutrally, without questioning the intent behind the choice of disparaging speech as trademark.

Judge Dyk from the Federal Circuit wrote in his concurring/dissenting opinion that he would have held that Section 1052(a) is facially constitutional because “the statute is designed to preclude the use of government resources not when the government disagrees with a trademark’s message, but rather when its meaning “may be disparaging to a substantial composite of the referenced group,” citing In re Lebanese Arak Corp.” In this case, the USPTO had refused to register KHORAN as a trademark for alcoholic beverages because it was disparaging to the beliefs of Muslims.

For Judge Dyk, the purpose of Section1052(a) is “to protect underrepresented groups in our society from being bombarded with demeaning messages in commercial advertising” and Section 1052(a) “is constitutional as applied to purely commercial trademarks, but not as to core political speech, of which Mr. Tam’s mark is one example.” Judge Dyk argued further that, while the First Amendment protects speech which is offensive to some in order to preserve a robust marketplace of ideas, “this principle simply does not apply in the commercial context,” giving as example racial or sexual harassment in the workplace.

But this argument seems to make a difference between registrants: Mr. Tam could register a racial slur to make a point, but could not do so if his purpose for registering the same mark would be to insult people of Asian descent. This interpretation of Section 1052(a) is troubling, as courts would have to determine if a particular mark is indeed political speech, then decide if it is “good” political speech or “bad” political speech. This is noted by the PTO in a footnote to the petition as being viewpoint discrimination which violates the First Amendment (p. 13).

The PTO argues that if Section 1052(a) is unconstitutional, then the PTO can no longer refuse to register as a trademark “even the most vile racial epithet” (p.10). Mr. Tam does not deny that “slant” is an ethnic slur. Indeed, he choose to name his band “The Slants” because it is a slur, in order to “take on stereotypes” about Asians (petition p. 5). Therefore, the mark may be an ethnic slur, but it is not disparaging. It all depends on the eyes and ears of the beholder. This was also the idea behind the attempted registration of HEEB or DIKES ON BIKE as trademarks.
Therefore, the question of who are the members of the group of reference is important. But it should not be.

Is it possible to protect minorities and the First Amendment?

If Mr. Tam would be authorized to register his trademark, it would be a victory for freedom of speech. The Slants would be able to promote further their anti-xenophobic message, and this would benefit the nation as a whole. But what if a person or an entity wishes to trademark a racial slur in order to advocate xenophobia? Owning the trademark could then serve as a tool to censor speech opposing racism. It would not be the first time that trademarks are used to suppress speech.

One can also argue that allowing disparaging trademark to be registered could confuse consumers about the origin of the product. Some consumers would not understand that a particular term is a racial slur. Others may understand it, but not know that it was meant to be used to fight prejudice. Since the function of a trademark is also to reduce consumer search costs, federal law could create a sign informing consumers that the trademark is used in an ironic way. I propose adding in these cases an irony punctuation (¿) after®. Is it a good idea?¿

Picture is courtesy of Flickr user leesean under a CC_BY_SA-2.0 license.

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