S1: Hello and welcome to the IP Lasagna episode of Slate Money, your guide to the business and finance news of the week, I’m Felix Salmon of Axios. I’m here with Emily Peck, also of Axios. Hello and Emily, how excited are you about this week’s show?
S2: I am so excited. It’s all coming back to me. Everything I thought I forgot about IP.
S1: I remembered we have the one and only Alexandra Roberts, a.k.a. Lex Lanham on Twitter. Alex, introduce yourself. Who are you?
S3: I am an intellectual property and trademark law professor at the University of New Hampshire School of Law.
S1: You are everyone’s favorite IP expert. You are going to talk to us about so many amazing bits and pieces of trademarks. We’re going to talk about social media. We’re going to talk about rights of publicity. We’re going to talk about brands. We’re going to talk about counterfeits. We’re going to talk about parodies. We’re going to talk about mischief. We’re going to have a Slate Plus segment about Felix the cat and whether I can use it as my Twitter avatar. It’s so much fun. Honestly, this is the best show about IP law you will listen to all month. I can guarantee it. It’s all coming up on slate money. The one thing that Emily loves more than anything else on this show is when I remind everyone that she used to work at IP Law and Business magazine. He used to run it indeed.
S2: I was the executive editor.
S1: So this is your show, Emily you. I’m turning the reins over to you for this one.
S2: So mad at you. OK. Well, yes, I was on the intellectual property beat from 2001 to 2006, and then I really dropped off. I was doing the reading, preparing for this episode, and I remembered a trademark conference I went to in Toronto. And then I was like, what even was a trademark conference? Like, I couldn’t conceive of how that was anything like,
S3: that’s really my favorite. Actually, I can’t think of anything more fun than that. Really? Mm hmm.
S2: Oh yeah. I mean, wow, people go crazy, those IP lawyers.
S1: So, Alex, you sent us a thing on. You gave us some like reading because you were a good university professor. One of the pieces of reading you send to us included the sentence. The Ninth Circuit cited Haute Diggity Dog in support of its decision. And now I just love IP law because it’s like one of my favorite sentences of all time. The main reason I love IP law is because I follow you on Twitter. You’re a must follow on Twitter. You are at Lex Lanham, which is what reading the Lanham Act? Is that what it means? Tell us what the Lanham Act is.
S3: Sure, the Lanham Act is the Federal Trademark Act, and it covers trademark registration and trademark infringement and dilution and even false advertising passing off things like that. So everything that I study is in this federal statute. Is it
S3: No, it’s not huge at all,
S1: but it’s this like one one relatively not huge act which has spawned an entire industry, basically.
S3: Exactly. So you get many hundreds or thousands of cases applying and interpreting it, and
S2: people get a trademark confused with copyright. But trademark and copyright are not the same. That is
S2: And I think this is a distinction people often mess up.
S3: Sure. OK. So trademarks are brand names. They protect the use of a name or logo or trade dress or something like that in connection with the sale of goods or services in commerce. Right. Copyright is something that protects expressive works. So original works of authorship fixed in a tangible medium. So if you’re thinking about, you know, a painting, a film, a television show, the actual content of it, then you’re thinking about copyright. And if you’re thinking about the brand name or the logo or something like that, then you thinking about trademark law. They are not synonymous and they are not at all interchangeable, although often they intersect
S1: and right of publicity is another thing entirely, which is neither of those two things.
S3: That’s right. Right of publicity is a way to protect them, but the use of somebodies name, image or likeness on the commercial use. Right. So if you’re a celebrity or even if you’re a regular person and your face gets used in an advertisement or your name gets used or something like that, then you might have a right of publicity cause of action that’s actually covered by state law. So almost every state has either a statute, not almost every, but more than half of states have either a statute or common law protection or both for right of publicity.
S1: But if someone, if someone put my photograph in a ad on Twitter say and started using it to sell cat food, then I could probably sue that person in many states.
S3: Absolutely. And that’s going to be a place also where a couple of these things intersect and overlap, right? Because you might have a right publicity claim based on the use of your image in connection with commercial advertising. And you might also have a copyright claim or the owner of the photo that they’re using might have a copyright claim.
S2: And what’s interesting to me about the difference between trademark and copyright or one of the interesting things is that trademarks are forever. If you keep using them and you keep them alive, you have to kind of like tend to it like a little fire. But then it could be it could be a flame in perpetuity, whereas the copyright you have it, you don’t have to tend to it. It’s yours, but ultimately it will expire. Although the the time it takes to expire is past your lifetime and keeps getting extended by big corporations.
S3: That’s right. And then right of publicity, it depends on the state. So some state protections extend past death. Some states have posthumous protection for, like, 100 years. Some have it for more, like 20 years, and some states say, no, this is something that you can protect while you’re alive and when you’re dead, others can go ahead and use your name or image.
S1: Yeah, we were just we were just talking on Twitter about this where the Frida Kahlo, who is dead, has a right of publicity and it looks like she doesn’t in Mexico, but she does in California and her. Photograph was being used by our favorite alternative investment platform, Masterworks, and one of their ads on Twitter, and I’m like, Are they allowed to do this? And it kind of seemed like. Probably not, but they were doing it anyway. But this is something which is big on Twitter, like Twitter is just the world’s biggest trademark and copyright infringement machine. Everything you see on Twitter is late. People are tweeting out photographs that they don’t have rights to. They’re using trademarks they don’t have rights to. And that seems to be fine, like damaging anyone.
S3: It kind of depends who’s the speaker, who’s the user? Right? So a lot of the kinds of uses that you’re thinking about are going to be fair uses. We have fair use doctrines in all three of those areas. And when you are just a regular person with a regular sized following, you can always reference trademarks, for example. That’s always going to be a fair use to say I got new Nike shoes. I’m so excited about them. Stuff like that. I think there’s some interesting copyright questions around fair use when we see use on social media, whether something is transformative, what you’re kind of adding to it. But the rules are very different when you are a commercial entity and what when what you’re doing looks more like advertising
S1: or when it’s like specifically an ad, a promoted tweet, then presumably the bar is much lower. I guess I know your way around it would be, but but you’re much more likely to be infringing that way because that is an explicitly commercial activity. VIDEO Engaging it?
S3: That’s right. But if you are a brand with millions of followers, whether you label something an ad and whether it gets it becomes a promoted tweet or whether you just kind of push it out to your millions of followers, I don’t think makes a huge difference on a from an infringement perspective.
S2: I thought there was an interesting case where this was blurry recently. The comedian Leslie Jones, she tweets out like videos of herself watching the Olympics, and she did it during the election watching Steve Kornacki. And it’s always hilarious and funny. And I guess she was doing this with the Olympics, and NBC was upset about it and told her to stop, which I thought was just, I mean, I guess it’s their right to tell her to stop. But. Was dumb because she is making the Olympics interesting, which NBC would benefit only benefit from, so that seemed like like it seems like a lot of the time the issues that arise are because companies are overly protective of their IP to IP and their brands, and sometimes they overstep the protection where it could be to their benefit.
S1: Yeah, I have a question about that, which is when, when this kind of thing happens and you see, like the New York Times, do it a lot. When people like quote New York Times headlines and stuff, there’s something which you hear, which is basically it’s not you. We don’t particularly mind you doing this, but if we just allow people to do this, then that would set a precedent. And then if someone did something that actually did damage us or that we didn’t want them to do, it would be harder for us to enforce it. Is that true?
S3: That’s not particularly true, at least from a trademark perspective. So the kind of duty to police gets really overblown when companies make that argument. You know, we have to enforce this consistently or else will lose it. We won’t be able to enforce it. That is typically a justification for unnecessary over enforcement or bullying. So you don’t lose trademark rights unless you really have stepped away and are doing absolutely nothing to control use by licensees or to police. Lots of really infringing harmful uses.
S2: What about like trademarks like Kleenex or Google or Xerox? Things that become like generic and in the language? Like What can a company do about that? Do they still have their trademark right?
S3: Yeah. So what matters with generic side is really what consumers understand, and it’s not how consumers use the term. So we could survey a bunch of people and they could all say, Yeah, I use Kleenex, but what? But I know it to be a brand. I use Kleenex to refer to puffs or any brand of tissues that I’m using. But I know that Kleenex is a trademark and it when it’s used, it means that the product comes from one particular company. So we wouldn’t have generic side in a case like that. What companies do when they’re concerned about losing their marks, the generic side is they’ll kind of do like a campaign to raise awareness, which can feel really silly, right? So we’ve seen Xerox do these, and Nintendo and tater tots and all kinds of brands have like taken out colorful ads saying, Hey, we just want to remind you we are the only company that can make tater tots or that can make Kleenex. And I think sometimes to consumers that feels like, are you policing my language and telling me what to say? But what they’re really focused on is we just need you to have that information. We need you to be aware that not all tissues are Kleenex, and as long as we can get that, we can probably hang on to our mark. And that came up in the Google case, too, right? Everybody uses Google as a verb, as a noun, as an adjective in every way to mean I look something up on the internet. But if you ask them, they’re like, No, no, Google is a brand. I know.
S2: Yeah. So it’s both desirable and undesirable kind of thing to happen to the brand.
S1: But also like, is this part of the jurisprudence that like if people stop knowing that it’s a company and a trademark like the judge will go out and sort of take an opinion poll basically and say, Do you know this? And then if if people go, you know, I didn’t know, then the trademark is like, what’s a good example of actual generic side where where something became so much a part of the language that it stopped being a trademark
S3: Murphy bed singer sewing machines? Yeah, shredded wheat. So things that were once Marx that no longer function as Marx because people use them as like a whole category term,
S2: which again, like you kind of want as a brand, the literally nothing better than like everyone saying, Oh, go Google it like that’s desirable, right? It shows you’ve saturated the market. You are the name of the thing you make. That’s that’s not right, but it’s risky.
S3: Right. So there was a recent case over Comic-Con that was kind of a close call when we’ve talked about in my classes, popsicles. So you see popsicle using like original brand popsicle. A lot of these masks are right on the margin, and we’re not going to have cases about them because they don’t want to enforce in a way that gets another party to say, actually, your registration should be canceled because your mark has become generic. We’re going to prove it with survey data, so those mark owners really have to proceed with caution.
S1: So is this also why so many brands slap that little TM symbol all over everything? Is that part of just reminding people that their brand is a trademark? Or is there some other reason to do that?
S3: Yeah. So the Circle R is what you use when you have a registration, and that does. I mean, I think consumers, a lot of consumers know what that means, so that helps send that message. This is a trademark, right? The team actually just about anybody can use and it signals like, we think this is our trademark and we’re working on getting making it our trademark and conditions. And consumers to understand that this is a source indicator for our brand, so the team is a little bit less meaningful.
S1: But but the but both of them serve like in terms of the utility, the reason why they appear everywhere is. Precisely just to protect against the narrow flight, there’s no other reason to do it,
S3: to protect against used by others. So if a competitor sees something on packaging and says, Hey, that’s a great descriptive term for our product and we use that to looks like we can’t because this company is using it as a trademark and not just as a descriptive phrase.
S1: My my favorite example of this was when MasterCard decided to change its logo. It used to be an orange circle in the yellow circle, overlapping them with the Z MasterCard underneath it. And then they they decided that this was so universally recognizable they didn’t need to use the word MasterCard anymore, and they would just have to circle Snoopy this beautiful, clean, perfect, simple logo. And then it was, it was, you know, released into the world. And every time you saw that logo, it had this little buzzing bee to the top right of it saying, like registered trademark because they couldn’t get rid of it.
S3: Yeah, I think we see that a lot. So we get a kind of combo composite mark. And then the brand says, Hey, let’s condition consumers to understand. Like just this really basic representation also indicates that it’s a MasterCard product or whatever. So we’re working up to being able to use that by itself. So Snickers, a couple of years ago did a promo where they had the regular packaging, but they put different words instead of stickers. So the bars say Snickers at all, they said. Like hangry or whatever, you know, some cutesy terms that were supposed to reference their ad campaign. And I think what that does is like, reinforce consumers, recognize our trade dress, like our packaging colors and font and things like that. Even without the word Snickers. So now if somebody else tries to use something really similar, we can go to court and say, Look, we don’t even need to have the word snickers on the packaging for consumers to get this.
S2: Sometimes companies let these trademarks
S2: and there’s a whole business in reviving them a there’s a business in reviving them. B, This is coming up now because, like the Washington football team changed its name, they
S1: called a commander
S2: the commanders. Yeah. So now the question is like what happens to that trademark? Because not only is it not being used and dead, but it’s offensive to many people. And this holds for, like the Aunt Jemima trademark and what was the Uncle Ben’s right? So this is like a whole new issue kind of cropping up now.
S1: Do I have that? Yeah. And so like I guess two questions like first is if I stop using my trademark, then obviously given the whole like, use it or lose it thing, it’s no longer mine. But then what’s the mechanism whereby the legal system works out who gets to have it next? And then is there a mechanism where the legal system can say, Well, actually, no one can get it next because it’s offensive,
S3: not because it’s offensive, but potentially because it still creates a likelihood of confusion with the prior owner, right? So trademark rights in the United States are based on use in commerce. That’s how you acquire rights and when you get a registration that’s just supposed to be kind of a formal recognition of the rights that you get through use. So when somebody stops using a mark for a couple of years and they don’t show that they have an intent to resume use in the near future, they don’t have a specific excuse like we’re waiting for this component to be available or there’s an embargo with this country or something like that. Then that mark is deemed abandoned. They won’t have any more rights and somebody else can come along and start using it and seek protection for it, right? So the question about who gets it is really like whoever gets there first. But there’s a doctrine called residual goodwill that says, Listen, this mark is famous in this country, and maybe not everybody knows about the abandonment, but everybody knows this mark. And so if you come along and start using it for something that’s related but different, you’re going to be free riding on that goodwill that exists and you’re potentially going to deceive consumers, right? So if an Jemima, if that brand announces we’re not using this mark anymore because we’ve come to understand that it’s really problematic. And then a week later, somebody picks it up and starts using it for maple syrup or some other breakfast food that we can expect a good amount of consumers to think that it still comes from the old brand. Right? But then the question is, who’s going to stop them? Because it might not be the USPTO. USPTO might say, Well, nobody else currently has trademark rights, so you can have them. So most of the case law comes from the prior owner suing for infringement based on those rights that come from residual goodwill. But if you’re a mark owner who’s like just announced to the world, we are stepping away from this mark. We know it to be harmful, then it feels like kind of tricky to enforce those rights. So I think we’ve seen brands do a couple of different things like the Cleveland Indians. They said they weren’t going to use Chief Wahoo anymore, that mascot based on some harmful stereotypes on the uniforms, but they were kind of low key, still using it for merchandise. Right. And on Jemima, I think is still using in some other countries. These are using on the back of the products and then Uncle Ben’s, they changed it to Ben’s original, which is still similar enough that they can probably enforce those rights. So they’re kind of we’re seeing some ways that those who are stepping away from a mark are still trying to hang on to some rights.
S2: One thing that was interesting to me in doing the reading catching up from 2005 was the Washington football team name. Because when I was covering IP, there was a lawsuit over the trademark because need it. Some Native American groups said you can’t trademark something offensive, which I guess is in the Lanham Act. But when I was reading last night was that that went away because of it. Some other case where they said, Oh yeah, you can actually trademark things that are offensive. So can you. You can trademark things that are offensive now.
S3: Absolutely. So the Lanham Act used to contain a bar on registration of offensive or scandalous or marks that disparage a particular group. And so for a long time, like, you know, the band Butthole Surfers, they didn’t have a registration for their trademark, even though that’s a pretty well known mark, right? So in a pair of cases, the Supreme Court overturned that bar on registration, essentially based on the First Amendment. Based on the idea that this is speech in addition to being commercial, and we can’t regulate that speech in these kind of specific ways that we’ve been doing.
S2: That’s an anti cancel culture ruling. I feel like people don’t know that
S1: this is amazing. This went all the way to the Supreme Court who, which which mark was being litigated in front of SCOTUS.
S3: Yeah. So the first one was the slants, which is a band made up of Asian-American artists, and they they chose that mark as kind of a reclaiming of a slur, you know, something that was tongue in cheek. So it wasn’t about a bunch of white people using a mark that is disparaging to a group that has been marginalized and said it was members of that marginalized group trying to take it back. And when they applied to register at the USPTO, said, We think that is an offensive term. And here’s some Urban Dictionary entries, and here’s one time that Miley Cyrus said something offensive. So the band appealed that they appealed it all the way up, and they were able to succeed on this First Amendment based argument with some strange bedfellows.
S1: Will you allow to have a favorite trademark droll?
S1: My my favorite trademark troll is UGG Algos Straley, who are truly evil, and they took these boots, which have been made in Australia for as long as Australia has existed. Pretty much, or at least, you know, under colonial times. And they trademarked them in in the United States. And they started putting out this amazing thing where they said they had this public education campaign exactly what you were saying. And they said, Look where the boots are made. If your UGG Australia boots are made in Australia, then they are a fake. The genuine UGG Australia boots are made in China.
S3: Well, that is a good troll.
S1: It was. It was such a troll. And but they but they seem to have it. They seem to have that trademark sewn up, even though they were very late to the UGG Boots game.
S3: They have been successful so far. I don’t know if it’s sewn up forever. So generic ness is an issue that can keep coming up, right? You can’t. You weren’t able to show that it was generic now, but maybe in 10 years you could show that people don’t associate that with a particular brand anymore.
S2: So do we want to talk about trademarking stuff that’s kind of art, but kind of of commerce and like how those lines are drawn like you send us a link to that, that dog Toy Story, that what? What was the dog Typekit, the Jack Daniel’s dog?
S3: There are a lot of cases about dog toys, so Felix reference one earlier, which is the chewy Vuitton case. And then we have the bad Spaniels case, the dog toys that look like Jack Daniel’s. There was one about a chew toy that looked like a beer, and it was called butt wiper with a dog on it for Budweiser. So they’re really like so many of the trademark parody cases actually are dog toy cases.
S1: And one of the things that a lot of them, if not all of them have in common. Is one of my favorite things about trademark is this very peculiar and wonderful use of the word dress where it does not mean a frog. It means what does it mean? What is trade dress?
S3: So anything could be eligible for trademark protection, right? So we talk a lot about words and terms and phrases and logos, but it can also be like the look and feel of a product. If it’s not functional, it can include colors. It can actually include sense. There are some action marks so like the kind of Fox Searchlight’s and then trade dress we’re usually talking about, like the packaging or the labeling. Or again, some like non useful features of the product itself that actually serve as a source indicator. So you’re not buying it because you love that color and you think it looks pretty, but you’re buying it because it’s a signifier that this comes from a brand you love.
S2: Like Tiffany Blue is Tiffany Blue.
S1: Tiffany Blue has a color, and I feel like Leon Perrins has that big oversized label on their list of silhouettes. And you just see a big, oversized label and you’re like, Oh, that must be there, must be trade dress right there. So, OK, so basically, Jack Daniels has a very recognizable bottle with a certain fonts and certain colors and all that goes into the trade dress. And then a chew toy company creates what was it again?
S3: Bad Spaniels, bad Spaniels.
S1: And this is obviously I mean, we want them to lose because all Spaniels a very good dogs. So I don’t know where they’re bad Spaniels come from, but they create this new toy called bad Spaniels and and and it’s a true toy. It is clearly a true, though it is clearly not a bottle of whiskey that no one will ever mistake it for a bottle of whiskey. But they sued anyway. Because why?
S3: OK, good. So two causes of action we see the most. The first is infringement, which would require a likelihood of confusion, right? It would require consumers not to say, Oh, I thought this was a real bottle of whiskey that I could drink, but I thought this was a product that was put out by the makers of or I thought this was done with the permission of the brand owner, right? All of those things could constitute infringement. The other one is dilution, which is just like association of a famous brand with something tawdry, like something to do with sex, drugs, rock and roll, that kind of stuff, or just use of the mark on a totally unrelated set of goods or services that harms the mark owners goodwill because it creates this second association, right? I thought Tiffany was only for jewelry, but now I see a hot dog stand called Tiffany Hot Dogs. Now, when I think of Tiffany, I’m going to think of jewelry and a little bit hot dogs, so that’s a separate cause of action. Some scholars are critical of it, but it exists and it is enforced, right?
S2: So but in this case, Jack Daniels sued for infringement and dilution and lost.
S3: Right? So we have a nice, robust parody defense that’s kind of part of this umbrella of fair uses, right? So if the mark is parody and it’s got to be a parody of like the brand that it’s using and playing on or of the consumers or kind of something related to that, it can’t be a parody of some third thing. Right. But if it’s kind of criticism or commentary or joking about this whole area of culture, right? So in the chewy written case, it was like, Listen, Louis Vuitton is a very high end brand. The stuff is very expensive. You would never want it to be chewed by a dog. And here you have a maybe eight dollar dog toy that is fuzzy and that capitalizes on that trade dress. So people recognize that it’s a reference to the famous brand. And yet it’s for dogs to chew up, right? So same idea in the bad Spaniels case. No likelihood of confusion. And also, this is a kind of use protected by the First Amendment.
S1: So this brings us very naturally to mischief, which I think we need to talk about Birkenstocks and Jesus shoes and T-shirts with all manner of logos on them who are mischief and why do they love cease and desist letters?
S3: Mischief is a kind of hard to characterize, right? So they are a company that’s out there doing this stuff, and they think of it more like performance art. So they don’t kind of position themselves as a producer of lots of goods and services, but more as a co-operative that that’s doing exactly that kind of satire and commentary and parody in dialogue with these really powerful brands. So, so they get in the news a lot. For things like their collaborative with Lil Nas X, which was 666 pairs of Satan shoes that contained real blood, and then they were doing delivering Chick-Fil-A chicken, which you can’t get on a Sunday. They were delivering it on a Sunday using obviously the Chick-Fil-A mark. And then most recently, they had this cease and desist grand prix, which was like, We’re going to put all of these famous marks on shirts and it’s going to be a race to see who sends us a cease and desist first. So go ahead, pick the most likely candidate who you think just won’t be able to tolerate us using their mark in this way. Buy that shirt. And then if if the, you know, horse you picked wins, then you also get a
S1: hat and you got a hat.
S3: I did. I got a shirt and a hat because I picked Subway.
S1: Now did Subway actually send a C and D, or did they just send a snarky tweet?
S3: It looked like a snarky C and D as a tweet. It was appended to a tweet. Right. But I think it still counts. But it said Lowell. All right, you got us. We’ll do it. So it was very kind of self-aware. And then what happens next? I don’t know if it was Subway really angry. That’s hard to read. So what are these owners of these well-known brands actually do in this position when what they’re looking at is like?
S1: Nike was really angry, right?
S3: Nike was really angry about the shoes, and part of that was about the perception and all kind of all over social media. This perception that Satan shoes were coming from Nike and so Nike must be endorsing Satanism, they must have partnered with Lil Nas X, who I think is amazing, but obviously is also controversial for some people, maybe not the kind of controversy that Nike would want to court. So they came after mischief and said, You have to stop selling these shoes and mischief said, we already ship them all out. You’re a little bit late. Right?
S2: And then I guess in the settlement, you could send back the shoes and you could get your money back or something.
S1: But that’s since they’re trading on eBay for like 100 times more than they sold for. Like, no one would ever do that, right?
S3: But so this is a really interesting case to follow because of the arguments, right? So we have something called first sale doctrine, which is like if you buy an iPhone or you buy a book or whatever. Bad example because the book is more copyright for sale. But so if you buy an iPhone or you buy a pair of Nike shoes, your buy every Tom bag, you can resell it without trademark infringement, right? So you can have an account on Poshmark and say, Here is my gently used Louis Vuitton bag. Here’s the price I’m selling it for. And you wouldn’t get in trouble for using those marks to describe your stuff. But the question is whether the products have been materially altered, such that it would no longer be appropriate to use the trademark with them. And so in this case, Nike said, look, they really customize our shoes in ways that we would never do, including putting human blood inside of them. So you can no longer use our trademark in connection with these shoes, even though they are real Nike shoes like what you did. What mischief did was purchase six hundred sixty six pairs of Nike shoes and then do some weird stuff to them. Right. So first Sale Doctrine has its limits and you have exceeded them. To which Mischief said, No, no, no. We’re not selling shoes. We’re not in the business of selling sneakers. We are making art, which would get us kind of First Amendment coverage.
S2: Well, what was interesting to me also was that mischief had sold Jesus shoes, Jesus, Nike shoes and Nike didn’t really have a problem with that because Nike wants to be affiliated with God. It just doesn’t want to be affiliated with Satan. Because, I
S1: mean, it’s not like it’s a double standard,
S3: total double standard. But the double standard is OK, right? You can choose not to enforce against the Jesus shoes, but then to enforce against the Satan shoes. That’s OK.
S1: We should mention the Birkenstocks, because I think that was a particularly fun one where where mischief bought a bunch of Birkin bags from Irma’s. Oh yeah, and oh right, and turned them into and attached until late Birkenstock soles and sold them as Birkenstocks. And, erm, as did exactly what you often see in these kind of cases, which is growl very loudly in the in the press saying like, we are going to come down on this very hard and we are going to sue the living daylights out of them. But then you never heard a peep from them ever again. It seems like the sending the nasty gram is easy, but actually trying to enforce it, it’s much harder when people tend not to do that so much.
S3: Yes, we we get a lot of cease and desist letters in this area. We get a lot more enforcement by letter or threat over the phone or something like that than we do actual cases because that would have been an interesting case to see. Right. It would be probably impossible, maybe not impossible. But it would be unlikely to show that consumers were confused or that consumers who were buying Birkenstocks with an E from mischief thought that what they were buying was actually endorsed by Hermes.
S2: Also, like so much of this is there’s like this line between marketing and, you know, confusion or whatever, because so much of the things that mischief is doing, like the Jesus shoes, that’s good. It’s good. Brand marketing like Hermes wants to be in an article about this stuff because it means they’re popular and trendy. And you know, if, if, if mischief cares enough to like monkey with your brand, your brand is probably very marketable. And there are ways that savvy marketers can like surf on that, like subway tweeting the cease and desist letter. Like, it’s all kind of, yeah, maybe it’s counter culture ask. But really, it’s just like another facet of brand marketing that is kind of pretending to be
S3: art a little bit. Yeah. And we’re seeing consumers care more and more about like brand personality. Right. So on the one hand, maybe brand ethics like, is this a brand that makes ethical choices and goes green and does the right thing? But on the other hand, like, is this a brand that I enjoy engaging with on social media that has a snarky social media manager and seems to have a kind of not too uptight attitude about enforcement? Those things can be all positive for sentiment about that brand.
S1: I want to ask you about my favorite subject, which is counterfeits and the question of whether this is not a legal question. It’s but it’s it’s, I guess, Leila Jason, which is all counterfeits bad for brands. There is this famous story in the AP world that Dolce Gabbana, whenever they’re asked to cooperate with a case against counterfeiters, is of of dingy handbags. They always refused to cooperate because they reckon this is just free advertising for them. And it’s and they love people just like coveting the bags and tray and advertising them and showing how desirable they are. But but at the same time, you also have a lot of other brands saying like, counterfeits are the worst thing in the world and we lose lots of money from them and they’re terrible and we have to enforce, you know, harsh action against them. What’s your take on all of that?
S3: Yeah. I think brands can reasonably differ on that, and I’ll give you the legal response, which is that point of sale confusion. So trademark infringement is pretty unlikely, right? Because if you’re buying a knockoff bag on Canal Street or a fake Rolex, you know, from the price what you’re buying, you know, it’s not the real thing. Almost all the time. Right? So there’s a theory called post-sale confusion, which is like other people are going to see that fake bag or fake watch and think it’s the real thing and think it’s low quality. And then maybe they’ll be less likely to buy. Or we are a brand that has really made a big deal about exclusivity. You have to get on a waiting list and there’s only this many of this sports car or this handbag. And so if people see it everywhere, if they get on the train and they see twenty five high school girls carrying this bag, then that kind of feeling of exclusivity goes away. But those feel less harmful. Right. So we could see why a brand might say we can tolerate this. It’s not that big a deal. But on the other hand, counterfeits are treated more harshly than just like regular competitors making infringing uses. So there’s a criminal statute that you can use to crack down on counterfeits. And then what we see at the back end is like destruction of goods. So that’s the most common remedy that brands will ask for is like you. Not only do you need to stop making this, but you have to set them all on fire. You have to melt them all down into metal. Right. So that’s that’s pretty extreme as to your question. I think different brands are going to vary on how they understand that and how they think it affects their reputation.
S2: It seems like there are some cases where it’s pretty clear that counterfeiting is bad, like you can’t counterfeit someone’s like prescription drugs or something.
S3: Yeah, and we’re in a pandemic where we’re seeing counterfeit masks and maybe counterfeit COVID tests. And the stakes there feel very different, right? This isn’t a handbag that’s not as good as the other handbag. This is something that could make people sick.
S1: That one really, really fascinates me, though, because what you find a lot of the time with pharmaceuticals and masks is what’s known as grey market imports, which is they’re made that exactly the same item made in exactly the same factory to exactly the same standards, but they are imported through the certain channels they come, you know, like the factory in China that made all of these masks for 3M sent a bunch of them to 3M, which got branded as 3m and the true genuine 3M masks and then the same factory made the same masks. And, you know, imported them illegally in. To the United States, and they’re just as good, but they are fakes and they wind up getting destroyed, and they’re bad for 3M because Queen doesn’t want those old because they want you to buy the real real ones. But a lot I’ve seen a lot of talk in the United States about, you know. Counterfeit masks, and no one seems to make the distinction between like a bad mask that doesn’t do its job. This is a good mask that does do its job, but still counts as being a counterfeit because it hasn’t gone through the right channels yet.
S3: We have regulatory agencies who are adding some layers, right? It’s not just about the masks in the factory they’re made in, it’s about the labeling and the packaging and the way in which they’re shipped and stored. So some of those gray market goods cases are about that when it’s food, when it’s shampoo, things like that. There have also been cases about like blue jeans. So it’s the same factory, it’s the same materials. But they kept they snuck back into the factory and they made some more, and then they could sell them for a profit. And you’re thinking those are probably not very different in quality. Yeah. So I think there are there are some tricky cases there
S2: is that it’s so weird how the government just protects the marketing rights of private companies. It’s crazy, right? It is crazy. Trademarks are worth so much money.
S1: Is is it the same as its brand value or not the same as but like it when people talk about the world’s most valuable brands, how how much of that is sort of in? He is in the trademark. And if we lost the trademark protections, how much would brand that bat that brand value? Would that be terrible for like a whole bunch of stocks on the stock market? Would they all plunge overnight?
S3: Yes, I think it would be terrible. So a lot of that kind of goodwill and reputation is stored in that mark. Companies know about that and they they try to diversify a little bit so that some of the reason we see protection asserted for trade dress and for logos and for those other things that go beyond the word mark, right? So Plato recently applied to register the scent of Play-Doh. And I think some of us speculated like, maybe that’s because Plato is concerned about generic side, and they want to make sure they have some other stuff that is protectable and protected because people seem to be calling a lot of things Plato that aren’t Plato.
S2: It’s like IP Lasagna. Right? So like borrow from Emily Aster, it’s like layers of protection for the trademark. It’s not just the trademark, it’s the trade dress. It’s the logo, it’s the color, it’s the smell, the blah blah.
S3: I love that IP Lasagna. I usually hear about belt and suspenders, so Lasagna sounds a lot more fun.
S1: I think if the most valuable company in the world, Apple and how much of the value of Apple is just in the value of the mark, and if anyone could slap the Apple name and logo on a piece of electronics, how the value of Apple would fall off a cliff?
S3: That’s right. And that’s why I think we see those brand owners spending so much right to sue, to settle those cases, to buy out others who are making uses of similar stuff, right? Because that value is really tremendous.
S2: There was this Great Wall Street Journal video about the Apple logo, where they analyzed TV shows Ted Lasso specifically and looked at what actors engaged with the logo on screen and what actors didn’t like. Apple won’t let actors use the logo if they’re like bad guys and shows only good guys can use Apple products in shows like the Lasagna.
S1: But I think that goes wrong about this, right? Apple cannot enforce. That is just what weird. It’s this weird Hollywood convention that you only use an Apple device if you’re a good guy, but there is no way that is enforceable,
S3: so it’s not enforceable using trademark law, right? So anybody on a show a show is considered an expressive work. Anybody in a book, anybody in a movie can mention trademarks and use branded goods. And that’s usually we think of that as nominative fair use. Those are just people making uses. So but Apple can kind of enforce that preference in other ways. Right. It can make friends with the producers and the showrunners. They can say this is our preference. We’ll give you free stuff or we’ll make sure not to object and not to make any trouble for you. When all of your good characters are using our products and we just have one condition, right? If you want to be in bed with Apple, if you want to be friends with Apple, just make sure that no bad guys have an iPhone in their hand. And so I think the tendency is typically to go along with that. And as Felix said, you know, outside of trademark law, we see a lot of contracts and licensing in the entertainment industry. So somebody making a movie or making a show might. Be advised by a lawyer that they can do what they want, but they might still feel more comfortable entering into an agreement like, Hey, Peloton, we’re going to put a Peloton in this show. Is that cool with you? Will you send us one? You know, will you sign this agreement that you’re not going to sue us over it? So there’s there’s kind of an intersection, I think, of contracts and trademarks.
S2: So then why aren’t some like TV shows you’ll see? Like, it’s obviously a can of Coca-Cola, but I’ll say, like Coca-Cola or whatever, like, they’ll black out the brand and stuff, and it sounds like they don’t actually have to do that or
S3: they don’t actually have to. But we get a lot of risk aversion because we have a lot of mark owners that tend to over, enforce and be bullies. And so if you’re given the choice between, I know I’m allowed to make this use, but I don’t want to deal with an angry letter. I don’t want to deal with a cease and desist, even if in the end I would win that case versus I’ll just make a different decision. And then I know that I can’t possibly get in trouble with anyone.
S1: Also, movies are made by Mark on this, right? Disney is the biggest IP house in the world. And so if Disney was out there making movies, it doesn’t want to do anything that would make it seem like anyone can use any old mark anywhere.
S3: That’s an interesting point. I thought you were just going to say Disney doesn’t want to alienate an apple or a Budweiser or a Nike.
S1: One last thing I could talk to you for hours about this, but the one thing I really did want to ask you about is Cheyna, which is obviously, you know, the biggest economy in the world and has there seems to be a place where American trademark and IP law just basically doesn’t reach it, or in a globalized world where China is just becoming more and more important. What does that do to the system of global trademarks that we have, you know, lived with for decades? It’s like, how does that change?
S3: I don’t know that it necessarily changes much on the ground in the U.S. So the ability of U.S. mark owners to enforce marks in other countries consistent with treaties and consistent with the kind of different foreign laws, might not do a lot of harm within the U.S., but there’s still going to have Customs and Border Patrol. They’re still going to have some ability to regulate what’s coming in. But what we’re seeing is applications to register. Marks in the United States with the USPTO have gone through the roof in the last couple of years, and now, like 50 percent of them are coming from China, which is a different challenge, right? So the USPTO is like, What do we do? Do we just hire a lot more people to examine these marks? So they’ve tried a few things like Let’s make everybody work with a U.S. attorney and have a lawyer who can put their name on the application, who’s not a foreign lawyer? Or let’s do some additional kind of review and double checking with these and making sure they’re legitimate and they’re not shady. But right now, the net result is that the application process has slowed way down. So you’ll see trademark attorneys and companies complaining that it used to be able to get your application reviewed in maybe six to nine months. And now it’s a year and a half. Just for that initial reviews, there’s a lot more waiting. And the system is really getting gummed up.
S1: All right. I think we should have a numbers round Emily, do you have a number?
S2: I do. The number is 30. That is how many female train drivers a Saudi Arabian company needed and advertised in that was recruiting for three female drivers. But they received 28000 applications from Saudi women who were interested in driving trains, and I thought that was very interesting. Saudi Arabia has all kinds of terrible laws preventing women from doing a lot of different things, but they’ve loosened up a little bit and are letting women do more things. So now their labor force participation rate is 33 percent, which is obviously terrible, but is almost twice what it was a few years ago.
S1: My number is 20, which is the number of years that Andras Arango, who is this priest in California, baptized his flock by saying, We baptize you in the name of the father and the son. I saw their spirit. Oh, and it turns out this is the wrong form of words he should have said I instead of we. And now every single person he baptized, which is thousands of people, are not baptized. They are not allowed to take communion and they they cannot achieve salvation and they need to go back and get re baptized with someone who says I instead of we. I mean, I’m not.
S2: I don’t know anything about anything, but that’s never stopped me before. But like, this is bonkers. Why didn’t the Catholic Church just be like, it’s fine. Like, you shouldn’t have said we, but it’s I and you’re all covered. You’re not going to go to hell.
S3: Like, definitely say that Felix. This was a good one for our trademark, for our trademark segment, because one little word matters a whole lot sometimes.
S2: Oh my goodness, it can make the
S1: difference between going to heaven and going to hell between the salvation and whatever the opposite of salvation is. Yeah. Catholic theologians please write in Slate Money at Slate.com. Explain this. Alex, you’re uh, no.
S3: My number is 1.7 percent. So that a couple of student groups at my school this week hosted this excellent panel on black voices in intellectual property, with four black IP lawyers talking about their experiences and their stories. And it turns out that only 1.7 percent of IP attorneys are black. So probably time for some really important conversations about expanding that pipeline and making sure people are getting good mentorship and finding ways to break in because intellectual property is such a fun field to be in.
S1: I mean, that sounds crazy low, even late. But by legal standards, right? Like most areas of law, it will be much higher than that. That’s right. Why? That’s weird now.
S3: It is weird, and it’s a shame, but there are probably some explanations, including what encouragement people are getting in law school and what directions they’re getting pointed in based on their undergrad majors and things like that. But we absolutely have work to do because it’s a field that will benefit so much from diversity.
S1: Alexandra Roberts, thank you for coming on this show. This is so much fun, it was I’ve been looking forward to this for so long and it totally lived up to all expectations. You are a superstar.
S3: My pleasure.
S1: And yet thank you for listening to late money, and we will be back next week with even more sleet money. For Slate Plus, you can tell me, am I OK using Felix, the cat is my Twitter avatar.
S3: Particularly because you are Felix and I could see you right now with that cat filter. So short answer. Probably yes, although you do have a whole lot of followers, so that might complicate things a little bit. Felix The Cat is a registered trademark of DreamWorks for a whole lot of things, from entertainment services to pet food to comic books to tote bags and socks and gift wrap and apparel. It’s like a really long list of stuff, and they also have registrations for an image of the cat, so you would not be in great shape if you wanted to start selling things, goods or services and using a Felix the cat type of trademark, right? Because their coverage is so broad. When it comes to the copyright protection, I understand that some of the videos remain under copyright protection, and some of them have entered the public domain, which I think makes things a little bit messy. And in addition to protection for works like for a cartoon or for a comic book, there can also be sometimes copyright protection for characters. So it’s fairly rare. But it’s been applied to like James Bond and Sherlock Holmes characters that are unique and really well-developed, and not just stock characters. So it’s an interesting question and a somewhat unsettled area. What can you use for your avatar on social media? If the owner of this IP decided to come after you? What would happen? And I don’t think we have a whole lot of precedent on it.
S1: Jeffrey Katzenberg, please don’t come after me.
S2: But could Felix argue like if if they did come after him, could he say, like, I’ve been using this for, you know, years and years and years, and you never said anything so like you don’t get to say anything now like that. That’s not an argument. You can.
S3: Yeah, that’s a procedural argument. That’s an argument about latches. You had a long time to enforce your rights and you sat on them. But we would want to know when they became aware of him. Right. So when you have two competitors using similar marks and you can say, Listen, we had a conversation 10 years ago and you told me my mark was not a problem. And now all of a sudden, you’re mad about it. What changed? You know, I’ve been operating under the impression that it was fine and I really invested in this mark. So you’re too late, but you would have to have that knowledge. But there, I think some fair use arguments to be made here and Felix is a person, maybe a little bit of brand in that kind of 2020 to sense that every person is a brand, but not not really selling stuff.
S1: Aren’t we all brands these days
S2: and brands are people too? Right, right?
S3: Brands are people and people are brands.