Archive for June, 2017

19
Jun
17

The Slants Case – What it Means for Sexually-Explicit Trademarks

On June 19, 2017, SCOTUS decided Matal v. Tam, which could open the floodgates for registration of previously-rejected, sexually-explicit trademarks.  The Tam case dealt with the attempt to register THE SLANTS as a trademark with the USPTO.  The USPTO rejected the application, so Tam sued on behalf of his Asian band, which had co-opted and embraced the derogatory term.  The case worked its way up to the U.S. Supreme Court, which decisively ruled that the First Amendment will not give way to political correctness. Accordingly, the USPTO must register THE SLANTS.

Many in the adult entertainment industry have been awaiting this decision, which could finally force the USPTO to begin accepting registrations for sexually-charged brand names including explicit or profane words.  For decades, any effort to seek a trademark registration containing an immoral or offensive term would be routinely rejected by the USPTO under Section 2(a) of the Lanham Act, which prohibits such registrations.  That means, any brand names that include words like “Fuck” or “Cock” or “Pussy” would be routinely denied – particularly when the association with adult products or services was obvious.

For years, the adult entertainment industry accepted this fate, and used mainstream, non-offensive brand names for its products and services when it wanted to obtain trademark protection.  However, as the Tam case worked its way up the courts, far-sighted industry executives started to realize that the long-standing prohibition on immoral and scandalous trademarks may be on the verge of collapse.  Thus, a search of the USPTO database shows dozens of applications for brand names that include the words “Fuck” and/or “Pussy.”  However, most of them were submitted only within the last year or so, and almost all remain in the pending stage.  The USPTO decided to put a hold on any applications that include immoral or scandalous words, until the litigation played out.  Well, that litigation is finally playing out.  The same reasoning that led SCOTUS to conclude that disparaging trademarks cannot be refused, should ultimately lead the USPTO, or other courts, to the same conclusion with regard to immoral/scandalous marks.  All these prohibitions are bound up in the same Section 2(a) of the Lanham Act, and all constitute viewpoint-based or content-based discrimination against the applicant. After the decision in Tam, the First Amendment cannot abide such discrimination.

The question is: How long will this take? The USPTO could potentially decide any time to give up the fight, and allow immoral / scandalous applications to proceed.  Given Tam, it will have to start processing “disparaging” applications in the very near future.  USPTO attorneys have already acknowledged that the same arguments supporting registration of disparaging marks apply to immoral/scandalous marks.  As they should.  Continued defense of this censorship scheme is frivolous, and a waste of federal dollars – not to mention a violation of the First Amendment.  If the USPTO does not rectify this error on its own, the case of In Re Brunetti, pending in the Federal Circuit, will hopefully be the death knell for the prohibition on immoral/scandalous marks. That case will directly address whether immoral/scandalous marks may be prohibited, however it has been sitting on hold pending the decision in Tam. Now that SCOTUS has laid down the law, the Federal Circuit is clear to render a (hopefully) similar ruling, shutting down one of the longest running censorship rackets in U.S. history.

The marketplace of ideas will not crumble if some company decides to use a “dirty word” in their trademarked brand.  Consumers will either accept or reject their products or services.  That is how the marketplace is designed.  For years, the USPTO artificially put its thumb on the scale of morality, and decided which brands it liked, and which it did not.  The day is coming where trademark owners will no longer be corralled into a homogeneous, milquetoast pit of the mundane. Instead, the gates of creativity may soon be opened, where businessmen can decide for themselves whether their brand name should be salty or sweet.

For those interested in exploring new boundaries, the USPTO is open for business. It will accept applications for sexually-explicit trademarks, but will put the applications on hold until it decides whether to give up the ghost in this fight for expressive rights.  The decision not only benefits adult entertainment companies or adult website operators, but was important to the Washington Redskins NFL Football team.  The USPTO sought to cancel the “Redskins” trademark since the name was allegedly disparaging to Native Americans. The team’s owner said he was “thrilled” with the Supreme Court’s decision.

 

08
Jun
17

Don’t Lose Your Designated DMCA Agent

On December 1, 2016, the U.S. Copyright Office went live with its new DMCA Agent database, and revamped the procedures for designating an agent for receipt of copyright infringement notices. For any reader who does not know about the benefits of designating a DMCA Agent, or which sites should take advantage of this procedure, the author’s previous article covering those topics can be found here: http://www.firstamendment.com/dmca-agent/. This article focuses on the recent changes to the procedures and the consequences of failing to comply with the new requirements for designating a DMCA Agent.

First, and most importantly, all website operators or online service providers (“Service Providers”) who might want to claim DMCA safe harbor defenses relating to user-generated content must designate a DMCA Agent using the new automated filing system (“New System”) by December 31, 2017. This includes anyone who has already designated a DMCA Agent in the old, manual filing system (“Old System”) which ceased accepting new filings as of December 1, 2016. Failure to designate an agent in the New System by the deadline (even if you already filed a Designation in the Old System) means your business is left without a DMCA Agent, and without any legal basis for claiming safe harbor protection in response to a copyright infringement claim. Instructions about how to use the New System, and the phasing out of the Old System, can be found here: https://www.copyright.gov/dmca-directory/

Why are they doing this? Supposedly, it comes down to efficiency and accuracy of the database records. The new automated, online agent designation system is superior to the Old System, since submission of the DMCA Agent information to the Copyright Office, and payment of the fee, now take place electronically – and rather quickly. Requiring updated information and renewals will keep the information contained in the Designations more current and accurate – more about that later.

With the Old System, anyone seeking to designate an agent would need to fill out a .pdf form containing all the contact information and associated domain names, which would be sent to the Copyright Office – along with a paper check – and then scanned into the database by a human being who would then manually associate the Service Provider’s corporate name with any and all domains, mobile applications, or other “alternative names” used by the Service Provider in business. That information would be uploaded into an antiquated database with limited search capabilities.

Filing a Designation in the Old System would often take weeks, and the online database was littered with errors given its reliance on human data input. Domains would often be misspelled, overlooked, and/or duplicated. Each posting would need to be carefully reviewed by the Service Provider (or its attorney) for quality control, and errors would often take weeks (or months) to fix. In fairness to the governmental employee previously responsible for overseeing the Old System, she was given a virtually impossible task, with outdated technology and minimal support staff. That person is no longer with the U.S. Copyright Office, and given the automated nature of the New System, it appears that no individual will be responsible for overseeing it.

The Old System was actually being phased out months before the New System went online in December, 2016. Widespread reports have indicated that Designations of Agent sent to the U.S. Copyright Office in the months leading up to the launch of the New System have been uniformly ignored, and not posted in any database. Notably, the filing fee checks were cashed by the government, but many Designations have not been processed or posted online. This may result in some dramatic consequences for any Service Providers who believe they have submitted valid Designations during this ‘doughnut hole’ between the end of the Old System, and the launch of the New System. If you recently filed a Designation in the Old System database, but it does not appear in this database: https://www.copyright.gov/onlinesp/list/a_agents.html, it may be gone for good. The best solution is to immediately file a fresh Designation in the New System, and confirm that the information is posted here; https://dmca.copyright.gov/osp/search.html?key=exposedonth.net&action=search. Any Designation submitted to the Old System will become invalid anyway, as of December 31, 2017, so a new Designation submitted in the automated system will be required by the end of the year for all Service Providers. Instead of wasting time trying to track down the status of a Designation filed in the Old System, simply file one in the New System and move on.

The one piece of good news in all of this chaos is that the filing fee for submitting Designations has gone down from a minimum fee of $135 to a flat fee of $6. That’s a substantial drop, but reflects the lack of any real human involvement in the process. The bad news is that Designations are no longer permanent like they were in the Old System. Again, all Old System Designations will expire on December 31, 2017. All New System Designations must be renewed every 3 years by filing a renewed Designation. If you amend a Designation on file in the New System, the 3 year renewal period starts over. Apparently, the U.S. Copyright Office will send out reminders of any impending renewal deadline to the email address of record, but separate calendaring of this filing deadline by the Service Provider (or its attorney) is highly recommended. It is difficult to predict how the system will work in 3 years.

One other change in the procedures is the requirement that Service Providers submit a telephone number and email address when submitting a Designation. Previously, that information was not required. Notably, the telephone number and email address will not be posted in the database, but will be maintained in the internal records of the Copyright Office.
Some practical problems are bound to arise from this transition. As noted above, some Service Providers will understandably believe that they have a current Designation on file, but that Designation may never be posted if it was submitted in the latter part of 2016. Individuals trying to locate a Service Provider’s DMCA Agent may not understand the obligation to check two independent DMCA Agent databases – either of which could have relevant information about a Service Provider’s agent. Some Service Providers will have conflicting Designations filed in each database directory. Filing a Designation in the New System may not override or cancel out the Designations filed in the Old System. Some websites may have more than one Service Provider associated with them, according to one or the other databases. Some domains may be overlooked and not included in the new Designations, and will thus lose any safe harbor protection.

Ultimately, the confusion and inconsistencies will be corrected due to the passage of time, and the elimination of the Old System at the end of 2017. For now, it is essential for Service Providers to carefully review their Designations for accuracy and continued validity. Multiple calendaring systems should be implemented to ensure that renewal Designations are filed on a timely basis. Given the importance of correctly filing and maintaining a DMCA Agent Designation, many Service Providers chose to have an attorney act as their DMCA Agent, and oversee the process. While filing the Designation of Agent in the New System is not rocket science, attorneys tend to be meticulous with filing procedures and deadlines. Moreover, since a website’s DMCA contact form or email address is often used by third parties for a wide variety of legal notices, claims, subpoenas, search warrants, and preservation notices, a licensed attorney will be able to quickly escalate any non-routine legal correspondence, and ensure timely compliance with legal obligations. Regardless of your choice of DMCA Agent, it is essential to remain up to date on the changing legal requirements for filing and renewal of DMCA Agent Designations with the U.S. Copyright Office.