TV Syndication Company Attempts To Take Down Public Domain Content By Abusing Trademark Law

from the if-you-can't-play-by-the-rules,-simply-use-a-different-rule-set! dept

Some players in the copyright industry just can’t let things go, even when the content in question doesn’t belong to them anymore. Once something’s in the public domain, it’s there to stay unless an act of Congress yanks it back out. Some of this discussion seems almost theoretical considering copyright has been extened to the point where something “lapsing” into the public domain now happens more infrequently than Halley’s Comet sightings.

But some things do actually make it into the public domain, and the Internet Archive has done an amazing job over the years of preserving these works. Unfortunately, its archival efforts have drawn some attention from a company wishing to take back content that no longer belongs to it. The fact that the content it’s trying to take down is in the public domain hasn’t deterred it. It’s only made it alter its attack strategy. (MST3K fans will definitely recognize the company name.)

Sandy Frank Film Syndication has hit the Archive with ridiculous legal threats based not on copyrights, but rather trademark rights. The company initially demanded that the Archive takedown not just links to the television show [popular 1950s show “You Asked for It“] (which it admits is in the public domain) but also links to remix videos that use footage from the show, a series of sermons that happen to use the term “you asked for it” in the title, and a reference to a record that also used the term.

The Internet Archive pushed back immediately, but this only resulted in SFFS removing its takedown requests for “colloquial use” (the sermons). Despite the fact that SFFS openly admits the content it wants taken down is in the public domain, it has pressed on with the rest of its demands and even added an additional (and absurd) claim that using the term while searching the internet was a trademark violation.

This isn’t the first time we’ve seen entities attempt to skirt the limitations of copyright law by dragging trademark law into the mix. (The Faulkner Estate dodging fair use arguments for a nine word misquote of Faulkner/photographer Brian Masck making up for a long-delayed copyright registration — both claiming Lanham Act violations.)

At this point, the EFF stepped in and issued a long, thorough letter to SFFS that destroys all of its arguments point-by-point (posted below). It points out that SFFS has no trademark claim over the content stored and streamed by the Internet Archive. For one, it’s non-commercial use, making it statutorily exempt from the Lanham Act. For another, every use of the show’s title on the Internet Archive is either protected use or not infringing on SFFS’ trademark.

In response to claims of “likelihood of confusion,” the EFF writes:

Trademark law does not forbid the use of “You Asked For It” to accurately identify the shows available via the Archive. Indeed, it is unclear how else the Archive might identify the shows…

No one would imagine your client, the holder of the trademark, in connection with licensing television shows, is the source of the programs in question, not least because no such licensing is required for these programs.

As for the remix videos using “You Asked for It” content, SFFS has no viable claim there either.

The videos in question do not raise a trademark issue — they don’t even use the term “You Asked for It.” Even if they did use the term, the videos are fully sheltered by the First Amendment.

The EFF also attacks the claim that using its trademarked show title as search terms might be actionable, pointing out that the cases SFFS cites refer to keyword advertising, not the actual searches themselves. Citing cases that contradict or weaken its claims seems to be a problem for SFFS, most likely because the sort of IP end-around it’s running has rarely found favor in judicial decisions. The EFF’s letter basically states that SFFS is shooting itself in the foot with its own quoted legal precedents.

More broadly, your citation to Dastar v. 20th Century 539 U.S. 23 (2003) is surprising at best, because that is one of many cases that doom your legal theories. In that case, the Supreme Court addressed precisely the kind of bootstrapping your client is attempting here. The plaintiff claimed that reproducing (modified) public domain videos without attribution to the original creator infringed trademark law. The Court rejected the claim, noting that any other holding would place trademark law in direct conflict with copyright:

“The rights of a patentee or copyright holder are part of a “carefully crafted bargain,” . . . under which, once the patent or copyright monopoly has expired, the public may use the invention or work at will and without attribution.”

The EFF is hoping this rebuttal will encourage SFFS to drop its claims against the Internet Archive, but it warns that this probably won’t be the last time a trademark owner will attempt to abuse its limited protections to reclaim content from the public domain. SFFS may decide to press on despite any real legal leg to stand on. Its website offers a variety of licensable clips from its shows, including the disputed “You Asked for It,” and it’s likely very interested in being the sole distributor of the 1950s run of the show, especially considering its main “competitor” is offering these episodes for free. But doing so will be an uphill battle against a knowledgeable opponent and a legal system predisposed towards this sort of IP law abuse.

Filed Under:
Companies: internet archive, sandy frank film syndication

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Comments on “TV Syndication Company Attempts To Take Down Public Domain Content By Abusing Trademark Law”

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21 Comments
Anonymous Coward says:

instead of sitting around for 11 months, thinking what the hell other ridiculous waste of time laws and amendments they can get implemented, for gigantic fees of course, paid as ‘campaign contributions or lobbying payments’, why dont our supposed righteous Senators and Congress people do a few things that are, not only badly needed, but would be extremely useful? sorting out the total fuck ups they made out of copyrights, patents and trademarks would be a good place to start! even better would be the implementing of consequences to making false take down and similar requests with even greater consequences if legal threats were used knowing they were false claims and demands. although it would reduce the laughs we get here at techdirt, the reduction in grief and wasted time for everyone involved would be worth it!!

Rikuo (profile) says:

Re: Re:

They are the norm. The people who abuse IP law the most are the people screaming the loudest for ever more expansions for it. Copyright was never intended to shut down vast swathes of communication based on nothing more than an accusation, or restrict people from speaking simply because of an under the table deal between two industries.

Anonymous Coward says:

Typefaces not copyrightable

Title 37: Patents, Trademarks, and Copyrights
PART 202?PREREGISTRATION AND REGISTRATION OF CLAIMS TO COPYRIGHT
? 202.1 Material not subject to copyright.

The following are examples of works not subject to copyright and applications for registration of such works cannot be entertained:

?.?.?.?.

(e) Typeface as typeface.

Does it matter if the typeface is composed of diagonal strokes forming digits?

Androgynous Cowherd says:

Fraud?

If this company claims it is “licensing” clips of material that is actually public domain, is that not fraud? After all, by “licensing” the clips they imply, falsely, that their permission (license) is needed to make use of them, and use this false implication to con people out of their money.

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