Significant Developments in U.S. Trademark, False Advertising, and Right of Publicity Law 2017

Annual Update Significant Developments in U.S. Trademark, False Advertising, and Right of Publicity Law 2017 Significant Developments in U.S. Trademark, False Advertising, and Right of Publicity Law: 2017 Contents PTO Cannot Deny Registration to “Disparaging” Marks ............................... 2 University’s Ban on Use of Trademarks Violated the First Amendment ....... 2 Google Survives Genericide Claim .............................................................. 3 Ninth Circuit Reaffirms High Standard for Infringement in Expressive Works .......................................................... 3 Sony Nets First Amendment Win in Ninth Circuit ......................................... 4 Distribution of Counterfeits by Non-Controlled Retailers Does Not Infringe ......................................................................... 5 Green and Yellow Agricultural Equipment Violate John Deere’s Rights in Color Scheme ............................................................................................. 5 Cheerios Loses Bid to Trademark Yellow Box ............................................. 6 Generic Name Plus TLD is Registrable, and PTO Can Win Fees Even if it Loses Case ................................................................................................. 7 FanDuel and DraftKings Win Major Right of Publicity Case ......................... 8 Recent Copyright and Trademark Publications ............................................ 9 Contacts in Covington’s Copyright and Trademark Practice ...................... 10 1 Significant Developments in U.S. Trademark, False Advertising, and Right of Publicity Law: 2017 Below are the selections of Covington’s Intellectual Property Rights Group for the “Top Ten” most significant and interesting developments in U.S. trademark, false advertising, and right of publicity law during 2017. which is not subject to the First Justice Kennedy reasoned, even PTO Cannot Deny Amendment and the government commercial marks are “part of the Registration to need not be viewpoint-neutral in its expression of everyday life,” and “Disparaging” Marks own speech. But as the Court allowing government viewpoint explained, private speech does not discrimination in that context In June, the Supreme Court issued a become government speech just amounts to censorship. highly anticipated trademark because it takes the form of a decision, Matal v. Tam. The Court federally registered trademark. Expression in a trademark remains University’s Ban on Use held that the “disparagement clause” of the Lanham Act violates the First the expression of the filer—not the of Trademarks Violated Amendment right to freedom of government. Such speech is thus the First Amendment speech and is facially entitled to full First Amendment protections. The Court was unconstitutional. Ruling on First Amendment grounds, unanimous on this point. the Eighth Circuit held in favor of a The disparagement clause prohibits student organization that had been In his four-justice opinion, Justice the registration of trademarks that banned from using Iowa State Alito also explained that a trademark may “disparage . or bring . into University trademarks. contemp[t] or disrepute” any is not a government program that subsidizes speech, like federal “persons, living or dead.” The student organization in question funding for public libraries or grants was the Iowa State chapter of the for artists. In those contexts, the This case centered on “The Slants,” National Organization for the Reform government is not “required to a band whose name the Patent and of Marijuana Laws (“NORML”), an subsidize activities that it does not Trademark Office (“PTO”) deemed officially recognized student wish to promote.” Justice Alito disparaging and not registrable organization. Iowa State grants such explained that trademarks are not because “slant” is a derogatory term student organizations permission to analogous to subsidies because the for persons of Asian descent. The use its trademarks under certain PTO does not pay money to parties Asian-American band members circumstances. Originally, in 2012, seeking registration. Justice Alito chose the name for their group in the the organization won approval to use also rejected the government’s hopes of reclaiming the term and an Iowa State trademark on T-shirts argument that trademarks are “draining its denigrating force.” bearing a marijuana leaf. Later, commercial speech, which has less allegedly after press coverage and protection under the First The Court unanimously held that political pushback, the university Amendment than other types of denying registration on the basis of a reversed its decision. Soon speech. Justice Alito explained that mark’s content “offends a bedrock afterward, Iowa State revised its even under that standard, the First Amendment principle: Speech trademark guidelines to prohibit, disparagement clause is not narrowly may not be banned on the ground among other uses, designs that drawn enough to survive scrutiny. that it expresses ideas that offend.” suggest promotion of drugs and drug The justices unanimously agreed on paraphernalia that are illegal or In his separate four-justice this point, but took different paths to unhealthful. concurrence, Justice Kennedy stated that result. Justice Alito wrote an that he would have applied an even opinion joined by Justices Roberts, Two members of the student group more stringent standard for viewpoint Thomas and Breyer. Justice sued for violations of their First and discrimination—which would have Kennedy concurred for himself and Fourteenth Amendment rights. The obviated any other questions the Justices Ginsburg, Sotomayor, and students claimed that Iowa State parties raised. Essentially, Justice Kagan. implemented stricter trademark Kennedy explained, the policies designed “expressly to government’s discrimination against All justices agreed that a trademark restrict [NORML]’s message.” They viewpoints it found disparaging is so is a form of speech that the alleged that this is viewpoint severe that the nuances of government cannot constrain just discrimination, for which government commercial speech and subsidy law because it is offensive. The entities like Iowa State must meet a (which Justice Alito explored in some government argued that registered high bar to show that restrictions on detail) need not be examined. As trademarks are government speech, 2 Significant Developments in U.S. Trademark, False Advertising, and Right of Publicity Law: 2017 speech from a certain viewpoint are Google Survives be generic, the “what” must be a acceptable. Genericide Claim particular type of goods or services. For instance, the “Aspirin” mark The district court granted the became generic because consumers plaintiffs’ motion for summary On May 16, the Ninth Circuit ruled in started using it to mean any pain judgment on the allegation that Iowa Elliott v. Google that the “Google” medicine using acetylsalicylic acid— State’s trademark licensing trademark is not generic as a matter not just the medicine Bayer made decisions, as applied to the plaintiffs, of law just because the relevant containing that ingredient. violated their First Amendment public sometimes—even often—uses rights. The district court also granted it as a verb. The court rejected plaintiffs’ a permanent injunction prohibiting argument that verb use of a the defendants from enforcing The opinion clarifies that genericide trademark, on its own, constitutes “trademark licensing policies against occurs only when a trademarked generic use as a matter of law. Plaintiffs in a viewpoint term becomes commonly used to Plaintiffs claimed that a trademark is discriminatory manner.” refer to a particular type of good or only performing its source-identifying service, regardless of source. For function when used as an adjective, On appeal, the Eighth Circuit example, Google would become e.g., a “Kleenex tissue,” and affirmed, noting the “unique scrutiny” generic only if the relevant public therefore that the common use of the the defendants imposed on refers to any internet search engine verb “to google” indicates its NORML’s trademark applications. as “a google.” genericness. But the court noted that The panel pointed to evidence it had long required more than a showing that the school’s reversal The plaintiffs, two individuals, mark just being used as a common was politically motivated and that its acquired over seven hundred domain part of speech. In its 1982 opinion trademark office had never before names containing the word “google,” Coca-Cola Co. v. Overland, Inc., the rejected a student group’s design including “googledisney.com,” Ninth Circuit had noted that the fact application due to concern over “googlebarakobama.net,” and that people used the Coca-Cola endorsement of the group’s cause. “googlenewtvs.com.” trademark as a noun, “a coke,” did not indicate whether or not people The court rejected the defendants’ Google filed a complaint with the had a particular source in mind. The argument that its actions could be National Arbitration Forum (NAF), noun “a coke” might refer to either a construed as government speech, arguing that these registrations Coca-Cola beverage or a generic and therefore did not violate the constituted “cybersquatting” and soft drink. Noun use alone did not students’ First Amendment rights. violated the Uniform Domain Name indicate genericide. Similarly, the The government speech doctrine did Dispute Resolution Policy. The NAF court ruled that the verb

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