Month: March 2016

All’s “Fair” in Love and YouTube

Google recently announced that they will offer legal support to protect certain parties who are clearly following fair use rules when uploading content to YouTube. They specifically stated, “[t]hrough this initiative, YouTube indemnifies creators whose fair use videos have been subject to takedown notices for up to $1 million of legal costs in the event the takedown results in a lawsuit for copyright infringement.”

YouTube’s website lays out the four factors of fair use which must always be taken into consideration when uploading a video which contains any kind of material copyrighted by someone else. The website also has a policy in place for video uploaders who use copyrighted content, but do not meet the standards of fair use. If the copyright owner discovers that their protected content is being used in a video not authorized by them, the uploader of that video receives something called a Content ID. After this, the copyright owner gets to decide the next step. They can exchange use of the copyrighted content for displaying ads during the video, or they could completely block the video from being seen, mute the copyrighted material, or restrict the video to certain platforms. If a video is removed due to the rights holder sending a complete legal request to do so, then the uploader of that video receives a copyright strike on their account. Three of these strikes and you’re out, your account will be terminated.

The new fair use defense policy would not apply in situations such as this, because Content IDs and copyright strikes on YouTube accounts only occur when the use of the work is not determined to be fair. The policy will offer “legal support to a handful of videos that [YouTube] believe[s] represent clear fair uses which have been subject to DMCA takedowns. With approval of the video creators, we’ll keep the videos live on YouTube in the U.S., feature them in the YouTube Copyright Center as strong examples of fair use, and cover the cost of any copyright lawsuits brought against them.”

Lawsuits can become exorbitantly expensive, especially when up against a large company or corporation with deep pockets that owns a lot of intellectual property and aggressively protects it. So this new policy should be a great incentive for video uploaders to be more careful when selecting what content to use and how to fairly use it.

The Washington “Gringos”

Everyone has heard about the trademark dispute concerning “the Washington football team.” Under 15 U.S.C. §1052 of the Lanham Act, which is the statute for trademarks in the U.S., there are certain bars to being able to register a trademark on the federal register. By receiving a federal registration, the trademark owner gets exclusive use of that mark and can therefore control their brand and the source of their product.

The exact bar that removed the “Redskins” mark from the register, §1052(a), states that “[n]o trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—

(a)Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute….”

When the U.S. Patent and Trademark Office determines “whether a proposed or existing mark violates § 1052(a)’s disparagement clause, [it] applies a two-part test:

(1) What is the likely meaning of the matter in question, taking into account not only dictionary definitions, but also the relationship of the matter to the other elements in the mark, the nature of the goods or services, and the manner in which the mark is used in the marketplace in connection with the goods or services; and

(2) If that meaning is found to refer to identifiable persons, institutions, beliefs or national symbols, whether that meaning may be disparaging to a substantial composite of the referenced group.”

The “Redskins” mark failed this test due to its disparaging reference toward Native Americans. Therefore Washington retroactively lost its trademark registration, but that does not mean they can’t continue to use the mark in commerce. It means they no longer have exclusive rights to it and anyone and everyone who wants to can also use it.

Washington has continued to file appeals to this decision, including a brief by attorney Lisa Blatt which has garnered a lot of attention due to the defense strategy she decided to take. Blatt claimed that registered trademarks are not government speech and that many other vulgar, immoral, scandalous, and disparaging marks are currently on the federal register.

However, a recent unexpected twist has been introduced into this discussion. The U.S. Court of Appeals for the Federal Circuit decided the case In re Tam in December and held that this bar against disparaging marks infringes upon free speech and is therefore unconstitutional. Which means barring the “Redskins” mark and other marks previously determined to be disparaging from the trademark register is not allowed under the constitution. This appeals court’s decision is not binding on the Fourth Circuit, which is where the “Redskins” case is currently being considered. However, since this decision has struck down part of a federal statute, it creates a likely opportunity for the U.S. Supreme Court to step in and make a final ruling on whether the bars should be struck down permanently or not.