Chilling Effects Clearinghouse Weather Reports

Who Dat Trademark Belong To?

Blake Reid, Chilling Effects Clearinghouse, February 3, 2010

Abstract: It's sunny and warm in south Florida as the New Orleans Saints head to the Super Bowl for the first time in the team's 42-year history. Back in New Orleans, though, a cold front is blowing through as the National Football League tries to use intellectual property claims to lock down "Who Dat," a seminal New Orleans slogan adapted by Saints fans to cheer on the team.

In January, the NFL sent a cease and desist letter to New Orleans T-shirt shops Fleurty Girl and and Storyville, ordering them to stop selling shirts emblazoned with the "Who Dat" slogan. The NFL claimed trademark rights in the slogan, arguing that the shirts implied affiliation with the team. After public outcry led Louisiana governor Bobby Jindal to consider a lawsuit against the league, the league backed off, acquiescing to shirts emblazoned with "Who Dat" in black and gold, the Saints team colors. The league nonetheless maintains that clothing emblazoned with the slogan and the Saints team logo, a fleur-de-lis symbol, infringes the team's trademark rights. That claim, however, may rest on dubious legal ground.

History of "Who Dat" and the Fleur-De-Lis

The "Who Dat" slogan has a long and rich history of use in New Orleans dating back to minstrel shows and vaudeville acts in the late nineteenth century, possibly beginning with the song "Who Dat Say Chicken In Dis Crowd" by Paul Laurence Dunbar and Will Marion. Louisiana college and high school sports teams, including Southern University and Patterson High School, have used the slogan as a supportive chant since the 1970s. The chant didn't become associated with the Saints until 1983, when fans began using the chant at games, leading singer Aaron Neville and Saints players to record a version of "When the Saints Go Marching In" featuring the chant.

The fleur-de-lis has an even longer history, dating back many centuries prior to its adoption as the Saints logo. Many modern sports teams, schools, and organizations as part of their logos, including the New Orleans Hornets (of the National Basketball League), the Fiorentina soccer team, the University of Louisiana at Lafayette, Saint Louis University, Washington University, several fraternities, and even the Boy Scouts. Perhaps more importantly, the symbol has also served as symbol for the city of New Orleans, particularly since Hurricane Katrina devastated the city in 2005.

Trademark Law

In light of the storied history of "Who Dat" and the fleur-de-lis, some believe that the marks belong to the public - and they are probably right. Trademark law serves to help consumers identify the source of products and services by protecting marks associated with a particular source, and at the same time protects the investment of a company's "goodwill" into its brand. But generic marks, which may indicate many possible sources, or no source at all, aren't protected under the law, because they don't help identify the source of goods. The widespread use of "Who Dat" and the fleur-de-lis by various institutions throughout New Orleans, Louisiana, and the rest of the country over the past century arguably makes them generic, and thus unprotectable, because the use of the marks doesn't signify a particular source. That is, a shirt with a fleur-de-lis or "Who Dat" on it doesn't indicate that the NFL or the Saints necessarily made it.

In fact, neither the NFL or the Saints directly manufacture much, if any, of their "official" merchandise; since 2001, almost all NFL clothing has been manufactured by Reebok (an arrangement that the Supreme Court may deem illegal under antitrust law). Because the ornamental use of a team logo on clothing doesn't indicate the source of the clothing (i.e., Reebok, and not the NFL or the team), the league arguably doesn't even have the right to exclude others from making merchandise with team logos (though some courts have held to the contrary). By wearing Saints-branded clothing, fans may merely be showing their support for the team without knowing or caring who is producing the merchandise - and the NFL arguably doesn't have a right to profit from that support, except when fans buy the merchandise from the league itself.

Even if the NFL can stop vendors from selling merchandise that explicitly references the Saints, the league doesn't have much of a leg to stand on when it comes to "Who Dat" and the fleur-de-lis. The goodwill surrounding those marks has been developed not by the NFL, but by the people of Louisiana and New Orleans, including Saints fans - and that goodwill arguably belongs to them. Louisiana Attorney General Buddy Caldwell agrees, calling the idea of the NFL and the Saints claiming either mark as a protectable trademark "ridiculous." While the NFL may have built up goodwill surrounding the league and its teams, "Who Dat" and the fleur-de-lis have arguably become a part of the public lexicon, and thus usable by everyone, not just the NFL.

The NFL and IP Bullying

Regardless of the validity of its claims, the NFL should think carefully before going after "Who Dat Nation" again - its residents aren't easily scared away. U.S. Senator David Vitter (the "Junior Senator" of the Nation) publicly called the league out, threatening to print and sell T-shirts with the phrase "WHO DAT say we can't print Who Dat!" And the NFL should also beware the Streisand effect; publicity of the league's cease and desist letter has driven customers in droves from the NFL's official outlets to Fleurty Girl's doorsteps. According to Fleurty Girl owner Lauren Thom, "What started out as a letter that scared the bejesus out of me, has turned out to be the best thing ever for my business."

Of course, the NFL is not likely to be dissuaded; the league and its members are notorious for making overbearing intellectual property claims, such as going after an Indianapolis church for hosting a Super Bowl party for young parishioners. (Many organizations were forced to rename their gatherings as "Big Game" parties in response.) Saints quarterback Drew Brees even sued his mom for using his picture in a political campaign. And the league used the Digital Millenium Copyright Act to attack Chilling Effects founder Wendy Seltzer for posting a fair use clip of the league's infamously overbearing copyright notice.

The NFL and the Saints reap tremendous benefits from the public: the goodwill associated with the long-standing Louisiana symbols of "Who Dat" and the fleur-de-lis have made the Saints more popular than ever, and the taxpayers even pay for the Saints stadium. By going after Saints fans, though, the league risks biting the hand that feeds. Instead of trying to chill New Orleans, the NFL should embrace the community that has rallied around the Saints. As they say on Bourbon Street...

"Who dat? Who dat? Who dat say dey gonna beat dem Saints? Who dat? Who dat?"

Hopefully not the league itself.

Happy New Year: Federal Anti-SLAPP Bill Introduced

Rebecca Schoff, Chilling Effects Clearinghouse, December 30, 2009

Abstract: Rep. Steve Cohen of Tennessee has introduced a bill (H.R. 4364) that would provide protection from strategic lawsuits against public participation (SLAPPs) at the federal level.

We have written before about the role of anti-SLAPP legislation in protecting free speech from frivolous lawsuits (see Sedgwick Appeals Case Over Wild West Wanted Posters). The classic SLAPP is a lawsuit that abuses the court system by alleging bogus claims with the aim of silencing criticism or preventing whistleblowers from bringing wrongdoing to light. But isn't such speech already protected by the First Amendment, by the limits of intellectual property rights, and by the various defenses to claims of defamation and other torts, you ask? To which we can only gratefully respond, "Yes, Virginia, there really is a First Amendment." But unlike Santa Claus, who apparently doesn't have to worry about attorney's fees, defendants who are assaulted with a SLAPP may not be able to afford to defend themselves through a potentially lengthy trial.

Currently only 28 states have anti-SLAPP laws. This month, Rep. Steve Cohen of Tennessee introduced a bill that would offer anti-SLAPP protection at the federal level. According to the Federal Anti-SLAPP Project, the bill, called the Citizen Participation Act, provides for an early motion to dismiss lawsuits identified as SLAPPs and would give defendants the ability to recover attorney's fees from a plaintiff who brings a SLAPP. Both elements are crucial if the anti-SLAPP protection is to have real teeth. The fee-shifting provision encourages defendants to fight such suits because they may recover their costs, but it may also actually help defendants get the legal counsel they need because lawyers may take such cases on contingency. The provision of an early motion to strike minimizes the cost and the amount of time all parties and the courts must waste on such lawsuits. Both provisions would hopefully act as a deterrent to bringing the most egregious forms of SLAPPs.

The bill is currently with the House Committee on the Judiciary, on which Rep. Cohen serves. Rep. Cohen also sits on the subcommittee for the Constitution, Civil Rights and Civil Liberties.

You can follow the bill's progress on the Library of Congress's THOMAS database here. If this bill turns out to offer real protection against federal SLAPPs, it is worth getting excited about, for the sake of all those intimidated by strategic lawsuits in the past.

Filmmakers Sued for Fictional Patent Infringement?

Rebecca Schoff, Chilling Effects Clearinghouse, December 3, 2009

Abstract: Legal reporter Eriq Gardner over at THR, Esq. has brought our attention to a lawsuit filed by Global Findability, Inc. against Summit Entertainment, makers of the sci-fi thriller Knowing, for patent infringement, apparently because the characters in the film are depicted using a string of numbers (including date, latitude, and longitude) to indicate the time and location of an event.

Let's say that there's still an active patent on automobiles—is it okay to film someone driving an automobile and put that in a movie? How about a business method patent on a way to monitor investments—can Steven Spielberg film a riveting action blockbuster about investment bankers using that very method? You'd think the obvious answer should be yes, but there's a company in Washington, D.C. that seems to disagree.

Global Findability, Inc. describes itself as a "geospatial information company." They hold a patent for what they call the "Geocode service," which "creates a single geospatial code that provides location, local time, global time and other geospatial information." In a complaint filed in U.S. district court, Global Findability alleges that Summit Entertainment and their partners have infringed the Geocode patent by "making, using, importing, offering for sale and/or selling in the United States, without authority, the Film that embodies the invention claimed in the '286 patent and/or . . . by actively inducing or contributing to infringement of said patent by others."

The allegedly infringing film is Knowing, the thriller starring Nicholas Cage, in which [SPOILER ALERT] aliens telepathically whisper a string of numbers to entranced children. The numbers turn out to be a series of dates, locations, and body counts for global disasters, including the final destruction of the world, which the aliens accurately predict using a method that was never quite clear to this viewer.

The filing of the complaint has caused consternation amongst commentators (see the Techdirt coverage, e.g.) because the wording of the complaint, though general, seems to imply that the so-called "embodiment" of the invention that infringes the patent is the representation of the characters using a string of numbers—or rather, pretending to use a string of numbers, because, of course, they don't really use the numbers to find any locations—for that, they actually used the movie SCRIPT. In other words, if we're reading the complaint correctly, Global Findability is claiming that the filmmakers infringed the patent by making and selling the film, not by making and selling the patented device or method--which sounds a little. . . alien. . . to patent law.

Given the role of aliens in the production of the string of numbers in the film, it's not clear that the film even represents Geocode being used. Take a look at the patent, number 7,107,286, posted here. No aliens are claimed as an element of the invention. Similarly, you'll notice several elements in the patented invention missing from the film--so many missing elements that an analogy between the alien/child duo and the patented system would seem to belittle Geocode to an embarrassing degree, making the complaint doubly perplexing.

Nor does the fate of the characters who use the number string suggest that the film promotes the actual use of such number strings or the infringement of any potential patents thereon (everyone suffers total annihilation, except for two of the number-chanting kids, who are saved by. . . well, just see the film if you must know.)

Generally speaking, a finding of patent infringement requires that the allegedly infringing device or method perform all of the elements of at least one of the claims in the patent. For more on patent infringement see Patent.

More to the point, patent law gives the holder of the patent the exclusive right to make, use, and sell the patented invention. Talking about the patented invention or fictionally representing the patented invention should be okay. In fact, bringing inventions into the public eye is one of the central justifications for patent law. We give inventors a monopoly on the production, use, and sale of their inventions for a fixed amount of time and in return the inventor must give the public a detailed description of his invention, how it works, and the best possible way to make it. Patents are published and made available to the public precisely because we want people to think about new inventions, talk about them, and even find a way to make them better. Scholars must be free to write about patented inventions and, yes, science fiction filmmakers must be free to imagine what might happen if someone used them, even if what they imagine is the complete incineration of the world.

Something Smells Off: Getty Images Sued Over Silhouette of Air Freshener

Research Staff, Chilling Effects Clearinghouse, November 23, 2009

Abstract: Getty Images has been sued by Car-Freshner Corp. for trademark infringement, dilution, and unfair competition over stock photographs of cars that include images of tree-shaped air fresheners hanging from the rear-view mirror.

Rebecca Tushnet's 43(B)log reports, via Seattle Trademark Lawyer, that Car-Freshner Corp. has sued the online photo-licensing clearinghouse Getty Images for allegedly distributing photos of car interiors that include tree-shaped air fresheners. Seattle Trademark Lawyer posted the complaint here.

Car-Freshner Corp. has a litigious history with respect to its trademarks of an "absorbent body impregnated with a perfumed air deodorant" in the shape of a pine tree. In 2005, Car-Freshner Corp. sued novelty greeting card company Corndog (and Urban Outfitters, who distributed the product), for producing a scratch-and-sniff Christmas card that played on the familiar pine-tree fresheners. According to the Business Journal, the card included the following text on the back:

The differences between these unusual cards and an actual car air freshener are: (1) our cards glow in the dark and (2) give off a weird, sticky pine smell only when you scratch and sniff them, instead of all the damn time, until you get car sick and throw up.

The scrappy card company argued that the cards were a parody of the ubiquitous air fresheners (and thus not likely to be confused with actual products of Car-Freshner Corp.), but the court never got to judge the case on the merits. The Austin-based Corndog ran out of money for attorney's fees and was forced to settle when it lost the fight to keep the case local. (See coverage in The Austin Chronicle.)

Car-Freshner Corp. also settled a lawsuit against Old Navy last year over t-shirts featuring images of pine-tree air fresheners. In that case, however, Car-Freshner could have shown registration of their trademark pine-tree-silhouette for use on t-shirts--and vigorous efforts to enter the car-freshener-apparel market. (The Car-Freshner website has a clothing store featuring such products as this charming Halloween costume. One size fits most!)

The claims in the suit against Getty Images are difficult to evaluate in part because it isn't clear what use has been made of the images (and therefore whether such use is confusing to consumers, or, if the Car-Freshner brand is legally "famous," whether such use threatens to dilute the brand). Use not as a mark -- that is, not to identify the source of photographs, but as an element of background scenery -- would not be a "trademark use," and so couldn't be an infringement.

In trademark law, the use made of the trademark (or confusingly similar image) does matter . . . unless the real-world costs of litigation overpower the aroma of a dubious claim.

Intel Corp. Sues Mexican News Outlet (For Publishing "Intel")

Research Staff, Chilling Effects Clearinghouse, November 19, 2009

Abstract: Another hat tip to Techdirt for bringing our attention to Intel Corp.'s recently filed suit against the publishers of Mexico Watch, a digital newsletter whose URL is latinintel.com, and whose parent company does business as Americas News Intel Publishing.

Intel Corp. has alleged both confusion-based infringement and trademark dilution against the company, although its website is clearly branded in ways that would easily distinguish it from the computer chip maker and its use of the word "intel" to mean "intelligence" is in common use.

"This is a time when we need good intel, but we're not getting it."
--Tom Clancy, in _The Sum of All Fears_ (1991)

Intel Corporation has filed a trademark infringement suit against Americas News Intel Publishing in the Northern District Court of California. The publishing company clearly describes its Mexico Watch newsletter as an "intelligence service on business, politics, and economy." In that context, as Michael Masnick notes above, the possibility of consumer confusion between their business and Intel Corp.'s seems unlikely. Ordinary trademark infringement is based on consumer confusion and generally if two businesses are unrelated enough (and their uses of a similar trademark are different enough), then no infringement will be found. For instance, we can all deal with a computer company called "Apple" and the Beatles' use of "Apple Records" without collapsing into a steaming heap of befuddlement.

United States federal trademark law does provide another kind of protection for trademark owners whose marks are qualified as legally "famous," however: protection against trademark "dilution," which does not require any consumer confusion. The Trademark Dilution Revision Act of 2006 (15 U.S.C. section 1125(c)) defines two kinds of "dilution": tarnishment, where the similarity between a famous mark and another use of the mark harms the reputation of the famous mark, and blurring, where a use of a mark "impairs the distinctiveness of the mark." (For more on dilution see Apple Steps up to Podium with TM Claims.)

Intel's correspondence with Americas News Intel Publishing, posted here, alleges that latinintel.com blurs the distinctiveness of their mark.

Americas News Intel Publishing hired a lawyer, who sent the following response, also published on their home page. We think it's worth quoting at length:

More importantly, the word 'intel' as used in the intelligence and information services sectors may not be trademarked. The word intel is an abbreviation for intelligence in the English language, and can be found in dictionaries of record such as the Oxford English Dictionary and Merriam-Webster's Collegiate Dictionary. And the use of the word intel as an abbreviation for intelligence is common in public discourse. . . . No sum of money spent to secure the public identification of the word 'intel' with products produced by Intel Corporation can withdraw the word, as it is used in standard English, from the public domain.

The argument made there, that words used descriptively or generically to describe a product may not be trademarked in that product's sector, is a valid one. For instance, if I owned some kind of "apple" trademark, I couldn't keep sellers of that round red or green fruit from using the word "apple"—or consumers really would get confused!

We think the Oxford English Dictionary gives pretty reliable intel, but nonetheless, the point may be moot: the Mexico Watch newsletter has already ceased publication and Americas News Intel Publishing, now facing a lawsuit from Intel, describes its own future as uncertain.

Ohio County's Free Wi-Fi Shut Down Over a Single Complaint

Rebecca Schoff, Chilling Effects Clearinghouse, November 13, 2009

Abstract: The chilling effect in Coshocton County, Ohio, was in obvious evidence last week when a single complaint from Sony Pictures Entertainment caused the county to shut down its free Wi-Fi service.

Coshocton County started providing free wi-fi service in the area around the county courthouse about five years ago. The Coshocton Tribune reports that the service was used by many. Out-of-towners with business near the courthouse could access it from their cars. County Sheriff's deputies could file traffic or incident reports from their cruisers. During county festivals held near the courthouse, vendors could use the network to process credit card transactions. The free municipal wi-fi provided Internet access in a way that directly benefited the public.

Last week the county's ISP, itself described on Freakbits as "an award-winning, non-profit organization serving Northern Ohio by connecting public and non-profit institutions to their fiber-optic network," received a complaint from Sony alleging a single illegal download of a film. In response, the county shut down the service.

The county is described as "cash-strapped" and, while their IT director has researched software filters that would prevent illegal downloads, county commissioners doubt that the cost to implement the program would be "justified for the free service."

The incident illustrates the unique pressure put on free municipal services of this type. With public funds scarce, it's understandable why the county would move to avoid legal threats in the quickest and cheapest way possible. Wendy Davis of the Daily Online Examiner points out that no evidence was established that the allegation of an illegal download was true. She cites the paper published by University of Washington computer scientists last year, demonstrating that legal uses of BitTorrent technology unrelated to the sharing of copyrighted material can attract false, unfounded DMCA takedown notices for a range of reasons, including bugs in software. Coshocton County says that it will investigate to try to determine what triggered the complaint from Sony, but in the mean time the county wi-fi is dead.

We owe a hat tip to Techdirt on this one, where Michael Masnick notes that the MPAA, when interviewed by the Coshocton Tribune on the issue, "doesn't seem concerned at all about the collateral damage."

UPDATE: Michael Masnick has an update on the story: an embarrassed Sony has asked the county to put its wifi back up!

German Murderer Threatens to Censor Wikipedia

Rebecca Schoff, Chilling Effects Clearinghouse, November 13, 2009

Abstract: A convicted murderer is attempting to have his name removed from the English-language version of Wikipedia and all other media coverage of his crime under a German law that protects private citizens from having their names and likenesses published against their will.

Wolfgang Werlé, who was convicted of the cruel murder of a well-known German actor, has employed the wonderfully named law firm of Stopp and Stopp to send cease and desist letters to media outlets covering his crime and his release. The German-language version of Wikipedia has reportedly already been sued and the English version has been threatened with legal action if the name of the murderer, who was recently paroled after serving fifteen years of a life sentence, is not removed from the article on Walter Sedlmayr, the victim. The Electronic Frontier Foundation notes that Werlé has also sued an Austrian ISP for the publication of his name and that case may go to the European Court of Justice.

The cease and desist letter sent by Stopp and Stopp (posted here at Wired and here on Chilling Effects: German Convict Seeks to Censor Wikipedia) makes the following argument:

"German law provides that our client is not a public figure after many year have passed [sic] since the crime. The German courts including several Courts of Appeals, have held that our client's name and likeness cannot be used any more in publication regarding Mr. Sedlmayr's death. . . ."

The problem is that Mr. Sedlmayr's "death" was a criminal matter of public concern. Sedlmayr was a beloved German actor, whose career stretched from 1949 to 1988 before his death at the age of 64, according to the information available at IMDB. German media online here and here still describe the nature of the killing: Sedlmayr was found in his home, bound, stabbed, and beaten to death with a hammer. German media, however, no longer fully identify the men convicted of the crime: Wolfgang Werlé and his half-brother Manfred Lauber, who reportedly knew Sedlmayr personally. The respected German magazine Der Spiegel refers to the two as "Wolfgang W." and "Manfred L." The German-language version of Wikipedia now merely refers to the "Verurteilten"—the convicts. American media coverage of the cease and desist letter, much of it including photos of Werlé in addition to his name, has mushroomed in the past two days (check out the Huffington Post's coverage, for example).

In an interview with Wired, EFF lawyer Jennifer Granick noted that if a media outlet lost a suit like the one threatened by Werlé, German privacy laws would require not only that the outlet cease reporting the names of the paroled convicts going forward, but also that it "go back and change what is already being written"—even "online archives" would have to be scrubbed of the convicts' names. Indeed, the link to Der Spiegel above is actually to a 2007 article on the brothers' release, which has apparently now been edited to remove their full names.

The application of this German law to news and information outlets in the United States is unthinkable. Having effectively silenced their victim, under this law, murderers would be free to silence the media, to wipe the history of their crimes from their identities. Imagine a world in which Charles Manson's name was not used in histories of the 1960's. Now imagine that he's been released and that the news media recount his crimes, but are not allowed to report his name.

The application of German privacy laws in this case would seem to prioritize the ease of re-assimilation for convicts following their release. In sharp contrast, United States law prioritizes basic freedoms of speech and press, not to mention the public's right to know a fact of public concern (which includes the early release of a violent criminal). All fifty states, for instance, have publicly available sex offender registries.

Nonetheless, Stopp and Stopp, who both received law degrees in the United States, claim that "[a]s [Wikipedia's] article deals with a local German public figure (such as the actor Walter Sedlmayr), we expect you are aware that you have to comply with applicable German law." We expect that Stopp and Stopp are aware that the United States Constitution has a First Amendment.

As the EFF points out in the article linked above, there has already been a U.S. district court ruling in which the imposition of a foreign speech restriction was found to violate the First Amendment. That was LICRA v. Yahoo!, but it was overturned in the Ninth Circuit for lack of personal jurisdiction over the French party. The speech restriction in that case was a French law that forbade the commercial exhibition of Nazi memorabilia to the French people. (One of the remedies the court ordered was the posting of warnings on the French-language version of Yahoo! that following links to sites on the English-language version could violate French law.) A suit against the English-language version of Wikipedia might similarly turn on questions of jurisdiction (which would be controlled by the rules of civil procedure, not by the subject of the speech in question).

In other ways a suit against Wikipedia would be markedly different from the Yahoo! case. The Yahoo! case was about restrictions on sales to the French people. Werlé 's threat against Wikipedia is about restrictions on the information made available to Americans. Applying German privacy laws to American-based websites would radically restrict their ability to report facts to Americans—and eradicate the balance between personal privacy rights and the First Amendment that has been struck by American law.

If German law wants to provide a remedy to convicts that will restrict the free flow of information from the Internet to the German people, there are models of restrictive filters available in China and Iran. Depriving the American public of the protection of the Constitution should not be available as a remedy for embarrassed murderers in Germany.

Pending Legislation Could Make ISPs Liable for Financial Fraud

Rebecca Schoff, Chilling Effects Clearinghouse, November 6, 2009

Abstract: John Timmer over at Ars Technica has reported that a bill introduced in Congress last month would make Internet service providers liable if a particular kind of financial fraud is perpetrated on their networks.

The bill, HR 3817, proposes a specific extension of ISP liability: it would apply in cases where someone using the ISP's network misrepresents himself as a member of the Securities Investor Protection Corporation, a federal agency that aids investors when their brokerage firm fails or when their assets are stolen by a broker. In order to be held liable for damages, the ISP would also have to be aware that the information on their servers or network was fraudulent in this way, or take no action to prevent access after having been informed of the misrepresentation.

Timmer points out two concerns, the first is a "lack of clarity about how [these sanctions] might be implemented," since the bill doesn't provide for any notice or takedown process analogous to the DMCA's process. Ultimately, Timmer comments, "it's a bit disturbing to see that the first response to fraudulent content on the Internet is an attempt to force the ISPs to police the content they transmit."

The bill is still in the early stages and these provisions are just a small part of it, but it seems clear that this is legislation worth watching.

Here's a link to the Jurist article covering the bill's approval by the House Financial Services Committee. That article includes a link to the full text of the bill and a record of its progress through Congress on Congress's Thomas database.

Takedown Hall of Shame Debuts at Electronic Frontier Foundation

Rebecca Schoff, Chilling Effects Clearinghouse, November 5, 2009

Abstract: The Electronic Frontier Foundation has inaugurated a new venue for exposing bogus copyright and trademark claims that stifle free speech on the Internet.

As part of their "No Downtime for Free Speech Campaign", the Electronic Frontier Foundation has created the Takedown Hall of Shame, a web site calling attention to egregious abuses of trademark and copyright law. Many of the featured takedown notices suggest calculated efforts to use intellectual property law to silence critics or political opponents and, as such, are deeply concerning. (The DMCA does provide a cause of action against a certain kind of misuse of the takedown process, see DMCA Notices.) All the takedowns noted in the Hall of Shame are really worthy of attention, but our personal favorite is Universal Music Group's attempt to yank down this video of a dancing baby. That's right: UMG shot off a takedown notice to a couple of proud parents sharing a clip of their bouncy, giggly baby dancing to Prince's "Let's Go Crazy."

Those parents used the counter-notification process to have their video reinstated on YouTube and then fought UMG in court, represented by lawyers from the Electronic Frontier Foundation. As of August 2008, the U.S. District Court for Northern California denied Universal Music Group's latest motion to dismiss the case, and rendered a landmark judgment that copyright holders must make a good faith consideration of fair use before sending takedown notices. You can follow the case on the EFF site here. Rock on, dancing baby, rock on!

Trademark Disunity: Clear Channel Zaps "Unity Day"

Research Staff, Chilling Effects Clearinghouse, October 9, 2009

Abstract: After announcing that Philadelphia radio station WDAS would not be able to sponsor the Unity Day festival for the first time in 30 years, Clear Channel has used an allegation of trademark rights in the name "Unity Day" to prevent citizens from raising funds and obtaining city permits to keep the tradition going.

The first "Unity Day" in Philadelphia was held in 1978. Over the past thirty years, the event, produced by Philadelphia radio station WDAS and sponsored by other corporations, has grown into an annual community celebration of African American culture, drawing tens of thousands of spectators together to enjoy food, family activities, and live music. This year, Clear Channel, which owns WDAS, announced that the economic downturn would prevent them from sponsoring Unity Day.

Amidst the great disappointment, a group of concerned citizens started to raise funds and formed a corporation, Unity Day on the Parkway, Inc., with plans to sponsor the festival themselves and return it to its traditional venue, the Benjamin Franklin Parkway. Clear Channel responded by claiming trademark rights in the name "Unity Day." They sent a cease and desist letter to Unity Day on the Parkway (posted here Clear Channel Claims Ownership of "Unity Day"), demanding not only that they use some other name for their festival, but that they also cease and desist from making any reference to previous Unity Days on their website. The current website contains historical photographs, including an image of the late State Representative Dave Richardson playing at the 1979 Unity Day softball game.

Though Unity Day on the Parkway argued that the name "Unity Day" is too generic to serve as a trademark for Clear Channel's services, the allegation of trademark rights temporarily halted the city permit process. The traditional date of the third Sunday in August has passed for 2009 and now Unity Day on the Parkway has vowed to try to hold a Unity Day next year. For more information on genericism and other limitations of trademark rights see Trademark.

What was the goal here in pressing trademark rights on a festival that had become a community tradition? The news that Clear Channel was not able to sponsor the event had been very public, so confusion as to whether Clear Channel was involved this year seems unlikely, and could have been cleared away with disclaimers. The only thing certainly accomplished by the cease and desist letter is the destruction of community goodwill that had been built up over years of sponsoring the event. The future of Unity Day is now uncertain, but, in any case, trademark rights do not give a mark owner the power to keep others from using the mark to discuss the mark owner's services, for instance, in cases of product comparison, news, criticism, or commentary. In other words, we should all feel free to discuss the Unity Day softball game of 1979 and all of the other fun memories Philadelphians surely associated with the festival.