From Slate Money: 37.8% Scammier

Published May 10, 2022, 5:03 PM

Today we're sharing a preview from another podcast we love, Slate Money. Every week, Felix Salmon of Axios is joined by Emily Peck, also of Axios, and Slate Pay Dirt columnist Elizabeth Spiers to chat about the latest in business and finance news.

In this episode, Felix and Emily sit down with Alexandra Roberts, professor at the University of New Hampshire Franklin Peirce School of Law. They talk about everything trademarks, from social media to counterfeits and parodies. They also talk about trying to fix racist logos and what happened when Mastercard tried to low key change its logo.

Hear more episodes of Slate Money wherever you get your podcasts.

Pushkin. Hey, it's Jacob Goldstein and this is the feed where you normally hear what's your problem, But today we're playing a preview from another podcast. The show is called Slate Money. It's made by Slate and it's about wait for it money. Every week, Felix Salmon and Emily Peck of Axios and Slate Paydirt columnist Elizabeth Spires chat about things like Bitcoin and the possible sale of Twitter, and the standoff between Disney and the State of Florida. Also, they interview smart, interesting people. In the episode You're about to Hear, Felix and Emily sit down with Alexandra Roberts, a law professor who was an expert in trademarks. Truly an underrated subject trademarks. On the show, they talk about everything from counterfeits to parodies to the story of what happened when MasterCard tried to change its logo. Okay, here is the preview of Slate Money. Hello, Welcome to the ip Lisnia episode of Slate Money, your guy to the business and finance news of the week. I'm Felix Amon of Axios. I'm here with Emily Peck, also of Axios. Hello, and Emily, how excited you are you about this week's show. I am so excited. It's all coming back to me. Everything I thought I forgot about IP I remembered. We have the one and only Alexandrew Roberts aka Lex Lanham on Twitter. Alex, introduce yourself. Who are you? I am an Intellectual Property and trademark law professor at the University of New Hampshire School of Law. 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 avator. It's so much fun. Honestly, this is the best show about IP law you will listen to all months. 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, I was the executive editor. So this is your show, Emily. I'm turning the reins over to you for this one. So man at you. Okay? Well, yes, I was on the intellectual property beat from two thousand and one to two thousand and six and then I really dropped off. I was doing the reading preparing for this episod it and I remember 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 that's really my favorite. Actually, I can't think of anything more fun than the trade. Oh yeah, I mean wow, people go crazy those IP lawyers. Alex, you sent us a thing on You gave us some like reading because you're a good university professor. One of the pieces of reading you sent us included the sentence the ninth Circuit sited hot digity dog in support if It's 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 must follow on Twitter. You're at Lex Lanham, which is what reading the LANDOM Act is that what it means? Tell us what the Landom Act is. Sure, the landom Act is the 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 huge? No, it's not huge at all. But it's this one relatively not huge act which has spawned an entire industry basically exactly. So you get many hundreds or thousands of cases applying and interpreting it, and people get a trademark confused with copyright. But trademark and copyright are not the same. That is correct lane to us, and I think this is a distinction people often mess up. Sure, Okay, So trademarks are brand names. They protect the use of a name or a 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 tangible medium. So if you're thinking about you know, a painting of 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're thinking about trademark law. They are not synonymous. Then they are not at all interchangeable, although often they intersect. The right of publicity is like another thing entirely, which is neither of those two things. That's right. Right of publicity is a way to protect the use of somebody's name, image, or likeness, 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 a 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 wright a publicity. But if someone 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, 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. 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 and 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 time it takes to expire is past your lifetime and keeps getting extended by big corporations. That's right, and write a publicity. It depends on the state. So some state protections extend past death. Some states have posthumous protection for like a hundred years, some have it form more like twenty 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. Yeah, we were we were just talking on Twitter about this whether Freda Carlo, 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, master Works 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 that 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. Like everything you see on Twitter is like people are tweeting out photographs that they don't have rights too. They're using trademarks they don't have rights to, and that seems to be fine, Like is that damaging anyone? 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 issues. 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 when what you're doing looks more like advertising, or when it's like specifically an ad, a promoted tweet, than presumably the bar is much loa I guess not quite around it would be. But but you're you're much more likely to be infringing that way because that is an explicitly commercial activity. You're engaging it, that's right. But if you are a brand with millions of followers, whether you label something an AD and whether it gets 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 from an infringement perspective. 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 Cornaki 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 IP and their brand ends, and sometimes they overstep the protection where it could be to their benefit. Yeah, I have a question about that, which is 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, 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 we'll 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. What about like trademarks like Kleenex or Google or Xerox, things that become like generic in the language, Like, what can a company do about that? Do they still have their trademark? Right? Yeah, So what matters with genero 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 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 when it's used, it means that the product comes from one particular company. So we wouldn't have genero side in a case like that. What companies do when they're concerned about losing their marks. To genero side is they'll kind of do like an campaign to raise awareness, which can feel really silly. Right, So we've seen Xerox duties 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 onto 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 me and I look something up on the Internet. But if you ask them, they're like, no, no, Google is a brand. I know. Yeah, so it's both desirable and undesirable kind of thing to happen. Brand. But also, like, is this part of the jurisprudence that if people stop knowing that it's a company and the trademark, Like the judge will go out and sort of take an opinion poll basically and say do you know this? And then if they if people go, I didn't know that. Like, what's a good example of actual genericide where something became so much a part of the language that it stopped being a trademark. Murphy Bad sing or sewing machines, Yeah, shredded wheat. So things that were once marks that no longer function as marks because people use them as like a whole category term, which again, like you kind of want as a brand the marketer like nothing better than like everyone's 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, right. So there was a recent case over Comic Con that was kind of a close call. When we've talked about in my class is popsicle. So you see popsicle using like original brand popsicle. A lot of these marks 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, you're 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. So is this also why so many brands slap that little TM symbol all over everything? It's that part of just reminding people that brand is a trademark. Is there some other reason to do that? 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 TM 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 conditioning consumers to understand that this is a source indicator for our brand. So the TM is a little bit less meaningful, but both of them serves like in terms of the utility, the reason why they appear everywhere is precisely just to protect against scenariosite. There's no other reason to do it 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 too. Looks like we can't because this company is using it as a trademark and not just as a descriptive phrase. My favorite example of this was when master Card decided to change its logo. It used to be an orange circle in the yellow circle overlapping them in the said master Card underneath it. And then they decided that this was so universally recognizable that he didn't need to use the word master card anymore, and they would just have two circles and it would be this beautiful, clean, perfect simple logo. And then it was it was 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. Yeah, I think we see that a lot. So we get a kind of combo composite at 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 years ago did a promo where they had the regular packaging, but they put different words instead of Snickers, So the bars didn't say Snickers at all. They said like angry or whatever, you know, some cutes terms that we're 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 words 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. Sometimes companies let these trademarks die and there's a whole business in reviving them. Hey, there's a business in reviving them. B this is coming now because like the Washington football team changed its name. What are they called, oh, Commanders, 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 ant Jemima trademark and what was it Uncle Ben's right, So this is like a whole new issue kind of cropping up now. 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? Like, and then like, is there a mechanism where the legal systems can say, well, actually, no one can get it next because it's offensive, not because it's offensive, but potentially because it still creates a likelihood of confusion with the prior owner right. So, trade mark rats 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, like, 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 a 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, then 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 wah Who 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 an Jemima's I think is still using in some other countries or 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. One thing that was interesting to me in doing the reading catching up from two thousand and five was the Washington football team name, because when I was covering IP there was a lawsuit over the trademark because some Native American groups said you can't trademark something offensive, which I guess is in the land I'm act, But when I was reading last night, was that that went away because of some other case where they said, oh, yeah, you can actually trade mark things that are offensive, so can you? You can trademark things that are offensive now? Absolutely So. The landmark 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 Buttle Servers, they didn't have a registration for their trademark, even though that's a pretty well known mark, right. Um 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. That's an anti cancel culture ruling. I feel like people don't know that this is amazing. This went all the way to the Supreme Court, who which mark was being instigated in front of scouts. Yeah. So the first one was the Slants, which is a band made up of Asian American artists, and they shows 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. In 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 bad fellows. Alexandrew Roberts, thank you for coming on this, Joe, 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. My pleasure. And yet, thank you for listening for Slate Money and we will be back next week with even more Slate Money. M h. That was the Slight Money podcast. You can find it wherever,

What's Your Problem?

Every week on What’s Your Problem, entrepreneurs and engineers talk about the future they’re trying  
Social links
Follow podcast
Recent clips
Browse 144 clip(s)