Too Much Free Time

by Mike Masnick

New Bill Designed To Extend Trademark Law To Ridiculous Extremes

from the is-this-really-so-difficult-to-understand dept

It would appear that today is trademark day, here at Techdirt. We've already had two different stories about organizations not understanding the purpose of trademarks. But how can you blame them when it appears some of our lawmakers don't seem to understand it either? Apparently, a new bill is making its way through the standard process that would change trademark law to make it a lot more difficult for people to use trademarks in any work of art. Once again (we hate to repeat it, but since there's so much misunderstanding, perhaps it's worthwhile): the purpose of trademark is to prevent misleading or confusing people. That is, I can't create a new cola and call it Coke. That would confuse people who might, legitimately, think I was associated with the large soft drink company. However, using a Coke bottle in a painting isn't going to confuse anyone, so there shouldn't be any question of trademark infringement. Unfortunately, this new bill would potentially make that actionable. Trademarks aren't supposed to mean you get full control over every use of the trademarked content. Just that you can prevent others from using it in a way that could confuse people into believing a connection or relationship that isn't there.

Reader Comments (rss)

(Flattened / Threaded)

  1. identicon
    aqui-ali, Feb 2nd, 2006 @ 11:21pm

    No Subject Given

    Poor Andy, he would have been miffed, to say the least... or maybe his would have been truly underground.

    reply to this | link to this | view in thread ]

  2. identicon
    DavidT, Feb 3rd, 2006 @ 12:25am

    Differing justifications

    There are actually several different justifications for trademark law. You've hit upon the most traditional -- consumer confusion. However, there has been a general shift toward a property-based view of trademarks over time. In other words, many scholars (rightly or wrongly) now believe that any use of a trademark should be controlled by its owner.
    The easiest demonstration of the problem arises when some trademarks have value in themselves. An easy example are sports logos. Nobody would ever confuse me for a San Francisco 49ers player if I were walking around with a 49ers shirt on. Nor did I buy the shirt because I thought the 49ers were vouching for the quality of construction of the shirt. In other words, there is no consumer confusion rationale to preventing others from copying as many 49er shirts as they felt like.
    However, it would seem counter to common-sense to allow just anyone to use the 49ers logo however they wanted so long as they weren't advertising a football team. I don't have any empirical data available off the top of my head, but common-sense suggests that there is social value in allowing the team to control its own image.
    Just a couple cents of my thoughts. If you have legal/IP questions feel free to shoot me an email (davidt --at-- stanford --dot-- edu)

    reply to this | link to this | view in thread ]

  3. icon
    Mike (profile), Feb 3rd, 2006 @ 12:40am

    Re: Differing justifications

    Heh. It's not a misunderstanding of trademark law, but recognizing the original purpose of trademark law -- which, indeed, is being stretched.

    The point is that this stretching is dangerous, and serves no useful purpose to society.

    reply to this | link to this | view in thread ]

  4. identicon
    Andrew Strasser, Feb 3rd, 2006 @ 12:50am

    Does this make my fake copy of the Mona Lisa worth

    I mean seriously this legislation is just ridiculous. It almost makes being an artist completely worthless and i hate ta say it, but there are not that many good artists out there. Find me a better Elf pic seriously. "Elf Lord" by Ulrike Kleinert

    reply to this | link to this | view in thread ]

  5. identicon
    DavidT, Feb 3rd, 2006 @ 1:28am

    Re: Differing justifications

    I definitely agree that you didn't mis-interpret trademark law. I was just hoping to inform readers that there is a body of scholarly literature out there about trademark-as-property. It's actually a pretty big debate in the IP field right now. The "trademark dilution" cause-of-action is based at least somewhat on the premise that intellectual property does share at least some theoretical basis with true property.

    In this particular case you have a strong argument that the stretching of trademark law beyond its 18th century roots doesn't appear to have a strong public benefit. But, that doesn't mean that there don't exist other rationales than the traditional one.

    Keep up the great work!

    reply to this | link to this | view in thread ]

  6. identicon
    Tin Ear, Feb 3rd, 2006 @ 4:33am


    Who has the patents on "Generic"? You would think, on the other side of this coin, that any design NOT related to a product, endorsement, or idea would be considered either 'original' (new), or 'generic' (established, but in general use). I want to go patent 'genericity' and sue anybody who violates my intellectual property.

    reply to this | link to this | view in thread ]

  7. identicon
    Lewis, Feb 3rd, 2006 @ 4:56am

    No Subject Given

    Things aren't as bad as they seem. I too am naturally suspicious of bills that strenghthen IP laws. But if you actually read the bill, there are notable exceptions for parody, criticism, and news reporting, among other things. That pretty much covers all the bases.

    The only thing this bill seems to do is weaken the rights of the defendent in commercial dilution cases (which, in itself, is not a happy thought).

    reply to this | link to this | view in thread ]

  8. identicon
    Rachel, Feb 3rd, 2006 @ 5:46am

    Nicely done

    I think you've explained it very well. Keep the good work going!!

    reply to this | link to this | view in thread ]

  9. identicon
    Dosquatch, Feb 3rd, 2006 @ 5:56am

    Re: Differing justifications

    In other words, there is no consumer confusion rationale to preventing others from copying as many 49er shirts as they felt like.

    But there is. In the case of a sports team, the uniforms are a large part of the "brand". Part of the brand's revenue stream is the sale of licensed clothing that is either identical to or inspired by the uniforms on the field.

    You manufacturing branded clothing does cause consumer confusion because the consumer has no particular way to distinguish your clothing from the "official" clothing. (and to the extent that branded t-shirts, jackets, and such are considered a form of advertising, this applies equally to use of other logos as well - see car makers, soft drink companies, musical acts, etc.)

    That said, to a certain extent you can make your own 49ers shirts, and even sell them if you wish. You can print, in text, "The 49ers Suck!" on a shirt and sell as many of them as you care to without infringing, because in this case you're making a public statement of opinion, which is protected speech. Their trademark on the text "49ers" cannot stop this, but trademark can keep you from using the designed logo for this purpose.

    On the other hand, you are free to paint the designed 49ers logo on your vehicle. Or trim your hedges into the shape of it. Or tattoo it on your arm. Or any of a thousand other things, and they'd all be protected as personal expression. You don't start getting into trouble until you start trafficing in the logo (painting the logo on a hundred cars and selling them, for instance).

    A lot of the reason for this is that the particular shape and design of the logo is very much a part of the brand identity. Ford, for instance, has a trademark on both the blue oval logo as well as the word "Ford". In the second case, though, the trademark only applies when speaking about their product, not blanket across the board. You are perfectly at liberty to open an eating establishment called "Ford Restaurant", and the motor company doesn't have ground to complain. However, if you choose to design your logo in the form of a blue oval with scriptish text, the motor company has very strong grounds against you for intentional brand confusion, even though you are not making automobiles.

    reply to this | link to this | view in thread ]

  10. identicon
    giafly, Feb 3rd, 2006 @ 6:04am

    You moaning minnie!

    Think of the good side! All cars are trademarked, so speed cameras will be banned.

    reply to this | link to this | view in thread ]

  11. icon
    Stephen Tillman (profile), Feb 3rd, 2006 @ 7:39am

    Re: Differing justifications

    I think we're confusing the TM laws even more here.

    In the case of the 49'ers shirts... Not being able to print up shirts using the "official" 49'ers logo is not a matter of trademark. That's a copyright. That logo is actual "property".

    I can go around and write 49 anywhere I want to. Hell, I can write 49ers if I want to. I just canít use that actual logo and make money off of it Ė and so long as I donít try to associate myself with the actual 49íers franchise.

    Race fans can put "3" or "42" or whatever on their cars without having to purchase "official stickers". All of that is no problem.

    We have two things here:

    1)Trademark, which is supposed to keep me from using someone else's name or phrase (or what have you) in such a way as to identify myself as that name...

    2)Copyright, which is supposed to keep me from profiting off of your "intellectual property" (logo, et al) without your permission (and usually without giving you a cut).

    reply to this | link to this | view in thread ]

  12. icon
    Philip (profile), Feb 3rd, 2006 @ 8:44am

    .. Loss of business?

    Look at it this way; companies are gonna lock down (tm)s so much that they'll loose their name recongition.
    "Super Bowl" is no longer known as the Super Bowl anymore; it's "The Big Game". And that's how people regonize it. Here in another 10 years, when you say "Super Bowl", nobody's gonna know what you mean.
    This could be a good thing, for the people, in the log run. But definatly nothing by bad things for any big company pulling their (tm)s from everybody.

    reply to this | link to this | view in thread ]

  13. identicon
    Dosquatch, Feb 3rd, 2006 @ 9:20am

    Re: Differing justifications

    Not being able to print up shirts using the "official" 49'ers logo is not a matter of trademark. That's a copyright.

    No, that's trademark. A trademark is literally a "mark of the trade", meant to exclusively distinguish you and your work in the marketplace vs. other similar products. A trademark used in context is legally considered property. Hence, "cola" is generic, but "Coca-Cola" and "Pepsi" are trademarks. A trademark can be text, pictorial, symbolic, some combination thereof, something completely different, whatever - as long as it is uniquely distinctive unto itself, you, and/or your product, and is recognized as such.

    That's right, if the public takes it upon itself to generalize a trademark across a whole class of product, you can lose your trademark registration. It happened to Bayer and the word "Asprin". It happened to crescent wrenches. It very nearly happened to Xerox, Jacuzzi, and Frigidaire.

    This is moving off of point, though.

    Hell, I can write 49ers if I want to.

    I more or less said that.

    I just canít use that actual logo and make money off of it

    Actually, making money off of the deal isn't even one of the criteria. Any action you take using the trademark holder's property that serves to dilute brand recognition violates that trademark - even if you didn't make a cent.

    reply to this | link to this | view in thread ]

  14. identicon
    Dam, Feb 3rd, 2006 @ 10:47am

    Re: .. Loss of business? IS still known as the Super Bowl, as long as the business using the term has paid to do so. You hear department stores advertising that their flat screen TVs are on sale and will be delivered in time "for the big game" because to use the term Super Bowl would require they pay the NFL.
    Use of the word "Oscar" when describing the awards given to movies and actors is trademarked and it too, can't be used in advertising without payment to the MPAAS.

    reply to this | link to this | view in thread ]

  15. identicon
    ccc, Feb 3rd, 2006 @ 7:35pm

    Re: No Subject Given

    No, it DOESNT cover all fo the bases.

    In Pop Art, consumer products were often portrayed. Think of Andy Warhol's paintings of Campbell's Soup cans.

    It was an entirely valid observation of American culture, mass production, iconography, etc... as were other paintings in that style. They were not criticism, not parody, and not news.

    if an artist wants to create a culpture out of Coke bottles, or of coke bottles as spaceships, or as phallic objects, there is no way they should be prevented from doing that.

    How much more of this can we take? How much more parcelling out of our culture to "owners" can we stand? A pay-to-play culture, where the only way to participate in a culture or society is to pay to do so?

    It has to stop.

    reply to this | link to this | view in thread ]

  16. identicon
    Niners Gear .com, Aug 2nd, 2006 @ 9:54am

    Re: Re: Differing justifications

    As far as "49ers Suck" ...unless there was additional context, the term "49ers" has more than one meaning & would be impossible to enforce. Similarly, Coors Brewing Co. used the incorrect spelling of "Arctic" as in "Artic Ice" in order to trademark the term. The problem arises when the company is a bully & is able to push around the little guy. This is an older example, but a clear case of the courts protecting big business: Visit & click on "Nissan Motors LawSuit Against Nissan Computer"

    reply to this | link to this | view in thread ]

  17. identicon
    Tiga Woods, Feb 2nd, 2007 @ 10:01am

    Using Someone Else's Likeness

    I have a question. Could I take a picture of Tiger Woods playing golf, make pictures of him and sell posters of it? Or does he have some sort of exclusive use to his likeness?

    I guess there might be some restriction when I bought a ticket to watch him play golf that I couldn't use his likeness. However if that's the case, what if I took a picture of him walking down the street. Could I then make posters and sell them for profit without giving him a cut?

    reply to this | link to this | view in thread ]

  18. identicon
    Daniel, Sep 16th, 2010 @ 6:29am

    We become what we think about

    We become what we think about, all day long!

    reply to this | link to this | view in thread ]

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