That Redskins decision: guest post from Chad Smith

In a precedential decision on June 18, 2014, the United States Trademark Trial and Appeal Board (TTAB) granted a petition for cancellation of six registrations for marks comprising or containing the word REDSKINS, for entertainment services, as used by the Washington Redskins professional football team. Amanda Blackhorse, Marcus Briggs-Cloud, Philip Gover, Jillian Pappan, and Courtney Tsotigh v. Pro-Football, Inc., Cancellation No. 92046185.  The Board found that the registered marks disparaged Native Americans in accordance with Section 2(a) of the Trademark Act of 1946, 15 U.S.C. § 1052(a). Judge Bergsman dissented, concluding that the petitioners had failed to prove disparagement by a preponderance of the evidence.

 

The determination of a disparagement claim under Section 2(a) involves a two-part inquiry: 1) What is the meaning of the term in question, as it appears in the mark and as the mark is used in connection with the identified goods and services identified in the registrations?; 2) Is the meaning of the marks one that may disparage Native Americans?

 

As to the first question, the Board concluded that “the evidence overwhelmingly supports a determination that the term REDSKINS as it appears in the marks retains the meaning Native American.” As to the second question, the petitioner needed to show that the term REDSKINS was disparaging at the time each mark was registered between 1967 and 1990.  The Board concluded that  "a substantial composite of Native Americans found the term REDSKINS to be disparaging in connection with respondent's services during the relevant time frame of 1967-1990.”

 

Having concluded that the six registrations must be cancelled as required by Section 2(a) of the Trademark Act, the Board next turned to the laches defense which was successfully raised by respondent in an earlier related case in 1999. In the first case, Harjo v. Pro Football, Inc., the federal courts overturned the TTAB’s decision to cancel the marks and ultimately ruled that the claims of the Native American petitioners were barred by laches. (Pro-Football, Inc. v. Harjo, 90 USPQ2d 1593 (D.C. Cir. 2009)).  Here, the D.C. Circuit Court of Appeals found that because the first of the Redskin’s trademarks had been registered back in 1967, the petitioner was time-barred from bringing suit finding that the delay was "unusually long by any standard" and "unreasonable in light of the undisputed facts in this case.” The court therefore granted Pro-Football’s renewed summary judgment motion to dismiss the case based on its laches defense.

 

After a brief summary of the previous case and a general discussion of laches, The Board noted that in the current case, each of the petitioners had recently reached the age of majority, the age from which, according to the D.C. Circuit Court of Appeals, laches began to run.  After stating that the petitioner’s “were entitled to assess the situation and determine whether it was in their best interest to file the petition for cancellation and then act in accordance with that assessment,” the Board held that “respondent has shown nothing more than a minimal delay in seeking cancellation” and such a minimal delay was insufficient to support a defense of laches.

 

The decision quickly gained notoriety and much was written about the continued validity and control over the Washington Redskins name.  However, soon after the Board’s decision, the United State Patent and Trademark Office issued a Media Fact Sheet outlining, among other things, 1) the Board does not have the jurisdiction to stop a business from using a mark that has been cancelled; 2) the Board’s decisions are subject to review in federal court, and no canceled trademark is removed from the register until after such a review is complete. Attorneys for The Washington Redskins have already stated that they plan to appeal the Board’s decision so a final ruling on the fate of the six registrations is still many years away.

 

Until then, the Washington Redskins will certainly continue to claim common law protection over the marks and enforce their rights to the exclusive use and ownership over the Redskins name.  However, public opinion is clearly turning against the continued use of the name.  A majority of the United States Senate is already on record opposing the name, as is the President, Minority Leader of the House of Representatives, both co-chairs of the Congressional Native American Caucus, Civil rights and religious leaders, media figures and NFL reporters, as well as high-profile current and former players.

This post was contributed by Chad M. Smith  of Ironmark Law Group PLLC, Seattle, a fellow-member of the international IP-PG network.

Case C-117/13, Technische Universität Darmstadt

So the Sages of Kirchberg will still trouble an Advocate General in a copyright case. According to Advocate General Jääskinen's opinion in Case C-117/13, Technische Universität Darmstadt, is that a Member State may authorise libraries to digitise, without the consent of the rightholders, books they hold in their collection so as to make them available at electronic reading points.

Pre-exam nerves

This is the third year in which I've prepared students for the external London University LLB exam in intellectual property, and I realise to my surprise that it's the first year in which I have been aware of the date of the exam. I haven't just turned up for a couple of weekends and marked some essays and mock exams: I've had a couple of students apart from those at the Academy this year, which has made matters different, and have also had a lot more contact with at least a couple of the Muscovites than I had in the previous two years. Well, it's all over now: I can't teach them anything new, can't go through any more practice exam questions or record any more mini-lectures. They are on their own - and whether I have helped them get there or not, they are all well-prepared for tomorrow. I trust their pre-exam nerves aren't as bad as mine - it's difficult worrying about an exam when you're not the person sitting it ... Good luck to all of them, although I don't think they need it.

Shanks v Unilever (from Weekly Law Reports)

Here  is the ICLR's report of this important (because one of very few) case on employee inventions, and here is a short summary culled from the report which I believe falls within the permitted act of fair dealing for reporting current events:

‘The time value of money received by an employer following the
vesting of an invention by an employee was not a benefit derived by the
employer for the purposes of section 41(1) of the Patents Act 1977.’

WLR Daily, 23rd May 2014

Corpora

In the course of writing the last post on here - in other words, I suppose, when I was reading the Moroccanoil case, I came across a mention of enTenTen12, a very large corpus of words which was used in the litigation to produce evidence about the use of the word Moroccanoil - and to prove that overwelmingly it was used to indicate the claimant's product. As this was a new and intriguing (the second time I have written the word 'intriguing' today - perhaps I am too easily intriged?) idea to me, I went looking on the Web. I didn't find as much as I had expected, but I did follow a lead to The Sketch Engine, a corpus query system. If I add a bookmark to my browser I probably won't be able to find it if ever I need it, and if I put it here it might assist others too. But I need to educate myself a bit more, because I don't know enough about it.

Moroccanoil v Miracleoil: no passing off

Moroccanoil Israel Ltd v Aldi Stores Ltd [2014] EWHC 1686 (IPEC) (29 May 2014)  is a decision of Judge Hacon in what I still prefer to think of as the Patents County Court - although I need to get over that, as the change of name reflects also a change of substance. The somewhat oxymoronically-named claimant sued the supermarket for passing off when it introduced a hair oil (competing with the claimant's MOROCCANOIL hair oil) under the name ‘Miracle Oil’.
 
What's the problem? Surely the names are far enough apart? Well, it wasn't just the name: there was a word-only CTM, but claims relating to that were dropped early on for fairly obvious reasons. In the passing-off claim, the claimant alleged that the get-up and name of Aldi’s product were, in combination, too similar to those of their product. Just look at the photos in the annexes to the judgment! A substantial
number of consumers would mistake Miracle Oil for Moroccanoil, or assume that they shared a common manufacturer or that there was some other trade connection between them.


The evidence showed that the name ‘Moroccanoil’ was distinctive of the claimant's product in the UK: but the get-up without the name could never have become distinctive because it had never been before the public on its own. It was not a Jif Lemon type of case in which the public would not notice the brand name - although clearly it was an attempt to protect get-up rather than product name. The name was the important element, so that was where the goodwill in the business would be found, although the get-up also played a  part.

There was nothing to show that members of the public might assume that Miracle Oil and Moroccanoil were the same thing, that they came from the same manufacturer, or that they were otherwise commercially linked, for example by a licence. Even if any members of the public would be confused there would be too few of  them for the claimant's goodwill to be damaged.


The defendant had intended that Miracle Oil would bring Moroccanoil to mind. The judge considered it had succeeded. That it had done did not make it passing off. There might be problem with rights in the design, and the public might think the way the packaging of the one brought the other to mind to be cheeky, but that wasn't unlawful. There would be no relevant false assumption in the mind of the purchasers, not even initial interest confusion (which I thought didn't exist in European Union trade mark law anyway). Without evidence of a misrepresentation the claim failed, illustrating (if illustration were needed) of the impotence of passing off law to protect against supermarket own-brands. Perhaps copyright and designs law (especially if there had been a registered design) would have filled the gap, and a trade mark registration for the particular colour of the label would have been pretty conclusive, but on the facts of the case these items were not in the claimant's armoury. It shows how important it is, in this day and age, to ensure you collect the widest possible range of intellectual property rights - if the claimants here thought a word trade mark was going to do the job, they were sadly mistaken, and Aldi could easily what Americans might call an end run round the one distinctive mark the claimants did have.

'New exceptions to copyright reflect digital age'

A number of trendy 'exceptions to copyright', additional fall-out from the Hargreaves Review, come into force today, as this Press release from the IPO (now in fact from Big Brother's GOV.UK site, which smacks of everything a Conservative or Liberal government, let alone a coalition of the two, should stand for) reminds us. To my mind it is inaccurate to call them exceptions to copyright: the Act calls them 'permitted acts', and the government should be consistent. The trouble is that there are too few lawyers among our lawmakers these days: professional politicians who have never worked in the real world deal in simple concepts (and probably struggle with more than 140 characters), not nuanced language.


The 'exceptions' do not affect the subsistence of copyright, just its enforceability: they provide defences rather than creating holes in the fabric of copyright, which remains omnivorous. It's a way of rearranging the deckchairs when the real problem is that the ship is sinking under the weight of mundane, not-original-in-the-more-appropriate-sense-of-the-word, copyright 'works'. It hits the wrong target: making 'exceptions' (especially if you wrongly apply that label to them) creates false expectations about how copyright works, especially when they are the product of special pleading.


Still, we all have to know about them (unless your interest in copyright law is limited to passing an examination in the next few days, in which case you probably need to know only the law as it stood on or about 14 February). The new regulations, which you can read by following the links, are:

• Copyright and Rights in Performances (Disability) Regulations 2014
• Copyright and Rights in Performances (Research, Education, Libraries and Archives) Regulations 2014
• Copyright (Public Administration) Regulations 2014

The Patent Office (I will continue to use its proper name) has published a series of 8 targeted guides
about what the changes mean for groups including teachers, researchers,
librarians, disability groups, artists, museums and consumers. Given that they can surely have no value in legal proceedings, and certainly do not constitute legal advice, I wish they would stop wasting public funds (even if it is not taxpayers' money) like this. It would be far, far better if they were in some way to subsidise the small businesses that need advice on these matters but cannot readily afford it (though no doubt they find it possible to afford many other less essential goods and services).


Further changes, concerning private copying and parody and quotation, remain stalled in the legislative process: a small relief, though they are only likely to be delayed, not lost.