Law of Mass Comm Exam 3

trademark law falls in which jurisdiction?

Lanham Act’s (1800s) function

“vintage” federal trademark law that is the primary backing to modern trademark law

Lanham Act’s definition

“any word, name, symbol, or device, or any combination therof adopted and used by a manufacturer or merchant to identify his goals and distinguish them from those maufactured or sold by others”

Trademarks do what?

protect companies by distinguishing goods and services (i.e Coca-Cola’s signature bottle shape)

The two pillars of trademarks are

“passing-off” and “consumer confusion”

Requirements for a trademark to be recognized:

Must be distinctive from other products/services similar to that

4 categories of (trade)marks

Arbitrary/Fanciful, Suggestive, Descriptive, and Generic

Arbitrary/Fanciful marks

the trademark is random and has no connection to the product. this is usually completely made up, and receives the highest level of protection. (i.e Kodak Cameras)

Suggestive marks

the trademark is slightly connected to the product/service but may require some extra thinking. this is still inherently distinctive, and receives the highest level of protection (i.e. Coppertone)

Descriptive marks

the trademark is directly connected to the product/service. this is non-distinctive and receives no protection unless Secondary Meaning can be proven.

What is “Secondary Meaning”?

A legal doctrine noting that if a consumer hears this trademark, they will automatically associate it with the brand, which will make the trademark distinctive, and thereby protected (i.e. Holiday Inn)

Generic marks

the trademark has become so popular that it begins to be used generically (i.e. google, kleenex). the trademark can be challenged if it falls in this subset if the company does not make a good faith effort to regulate (i.e. the Velcro video we watched in class)

Immoral and Scandalous clause under the Lanham Act

prohibited the registration of trademarks that seemed “immoral” or “scandalous”. struck down due to subjectivity (i.e. Fuct)

What do trademark owners need to do in order to keep their trademark?

renew it on time (people can jump in and claim the trademark)

How do you acquire rights in a trademark?

Assuming the trademark is distinctive, a trademark can be acquired in one of two ways: 1) being the first to use the mark in commerce (has geographic limitations) 2) being the first to register the mark with the PTO (patent and trademark office)

Geographic limitations to “being the first to use the mark in commerce”

usually, your trademark will be limited to the area in which your trademark is registered, and any areas you would be expected to expand into

benefits of trademark registration

no geographic limitations and access to treble damages (damages would be hit 3 times basically). most people register their trademarks

Matal v. Tam (2017)

“The Slants” case; they were denied trademark registration under the Disparagement Clause of the Lanham Act. This was quickly overturned in SCOTUS, noting a 1A violation and government overstep

Iancu v. Brunetti (2019)

“Fuct” case; denied trademark registration under the Immoral and Scandalous Clause of the Lanham Act. This was ruled unconstitutional in SCOTUS, noting 1A violation. SCOTUS says that the PTO is inconsistent in that tasteful judgement is subjective to the attorney working.

Trademark infringement

to infringe a mark, use of it must create “likelihood of consumer confusion”; this does not need to be identical to the original trademark

Parodies and Artistic uses of trademarks

when there is a collision between trademark and the first amendment, you have the right to refer to protected trademarks and not be faced with a claim. so generally, yes, you can use trademarks in these ways

Trademark dilution

when a famous trademark is diluted by a similar, unauthorized use

Trademark dilution requirements

needs to be a nationally recognizable trademark, and does NOT need to prove likelihood of confusion

Two types of trademark dilution

Blurring and Tarnishment

Trademark blurring

when the power of the mark is weakened through its identification with dissimilar goods (i.e. Kodak brand bicycles or Exxon brand cigarettes)

Trademark tarnishment

use of a trademark that is unsavory or damages the trademarks name (i.e. Toys R Us and “Adults R Us”)

Defamation (includes libel and slander)

general term for a legal claim involving injury to a person’s reputation caused by a false statement of fact

Elements of a libel claim (4 to be heard, 5 to win your claim)

1) defamatory 2) false 2.5) factual assertion 3) about an identifiable person 4) published 5) defendant is at fault

Libel claim element 1: Statement is defamatory

the subject matter harms reputation (“red flags” include criminal behavior, serious moral failings (subjective), incompetence in business/professional life, loathsome dissease, sexual promiscuity) (EXAMPLES: Kaelin v. Globe Comm, Ashley Olsen v. National Inquire)

Libel Claim element 2: Statement is false

intentional lie, fabrication, false impression, or simple error. if the publication is “substantially true”, the court probably won’t care.

Libel Claim element 2.5: Statement is a matter of fact

the claim must be based on factual assertion rather than opinions/jokes (protected by 1A). courts consider the overall context and tone of the statement (i.e. Yagel (buttlicking claim))

Libel Claim element 3: Statement is about an identifiable person

Plaintiff generally can be anyone who is identified by the defamatory statement (corporations too). There are limits, and the plaintiff can be identified in various ways

Limits to libel claim 3 (identifiable person) 

Dead people, government agencies, group libel

Libel claim 3 (identifiable person). Ways in which people can be identified:

directly, indirectly, fiction, by error

Libel Claim element 4: statement must be published

revealed the statement to any third party. Includes republication rule and significant exception (Communications Decency Act)

Republication Rule of Libel

you are liable for republishing the defamatory statements of others

Exception to Libel claim element 4 (statement must be published)

Communications Decency Act said only users can be held liable on non IP claims without conditions (if i post libel on tiktok, then i am liable, not tiktok)

Libel claim element 5: defendant is at fault

defendant made a statement with knowledge of its falsity or reckless disregard of its truthfulness (actual malice or negligence)

New York Times v. Sullivan 

established the “Sullivan Standard” on which the terms actual malice or negligence are based. This means the standard for public officials/figures is significantly higher than the ordinary citizen; officials/figures MUST prove actual malice, unless limited purpose public figure

Libel claim element 6: Did the plaintiff suffer damage

must prove you suffered a loss (usually financial). economists are brought in as expert witnesses at times to measure and quantify harm to reputation for rewards

Recognized defenses (that you need to know)

absolute privilege, fair report privilege, neutral reportage, anti-slapp statutes, retraction statutes

Absolute privilege

applies to government officials speaking in official capacity. intended to preserve governmental functions and allow officials to speak without fear of a defamation lawsuit

Fair report privilege (cousin of absolute privilege)

allows you to restate statements that have been made under absolute privilege; you have to report exactly, and attribute to its source

Neutral reportage (not available in every state)

this is wider than the Fair report privilege; allows journalists to report pretty much whatever is newsworthy as long as there is no malice and is namely, neutral reportage

Anti-SLAPP Statute (not available in every state)

neutralizes a SLAPP (strategic lawsuit against public participation which chills someone’s engagement in the 1A), calls for immediate dismissal and reimbursment of attorney fees.

Retraction Statute

Meant to incentivize good behavior from a media organization. If an org is charged with libel, they’re given a chance to retract the story. this limits the amount of damages collected (actual or punitive)

Freedom of Information Act (FOIA)

you are allowed to request records from any executive branch

The #1 users of FOIA are…

for-profit organizations with the intent of gaining competitive advantage over others

Exemptions from FOIA

matter of national security, agency rules and practices, statutory exemptions, confidential business informations, agency memoranda, personal privacy exemption, law enforcement, banking reports, and information about wells

Reverse FOIA Lawsuit

basically whoevers records get release suing the government for releasing them because it harmed them

Agency Memoranda Exemption

unfinished work product cannot be revealed; this is intended to preserve “quality” and authenticity, similar to that of absolute privilege (make room for mistakes)

Law Enforcement Exemption

records that would deprive someone of fair trial/risk their safety and confidential investigative techniques cannot be disclosed or relinquished

Banking Reports Exemption

this is so stupid, Congress said that banks would lie about their reports if disclosable under FOIA so they made it exempt fuckin weirdos

Information about wells Exemption

lobbied by oil and gas companies