tag:theconversation.com,2011:/global/topics/trademarks-19089/articlesTrademarks – The Conversation2024-03-05T16:10:04Ztag:theconversation.com,2011:article/2243022024-03-05T16:10:04Z2024-03-05T16:10:04ZKylian Mbappé has trademarked his iconic goal celebration – why a pose can form part of a player’s protected brand<figure><img src="https://images.theconversation.com/files/578872/original/file-20240229-30-v6whau.jpg?ixlib=rb-1.1.0&rect=0%2C0%2C5978%2C3982&q=45&auto=format&w=496&fit=clip" /><figcaption><span class="caption">Kylian Mbappé celebrating a goal with his trademark celebration. </span> <span class="attribution"><a class="source" href="https://www.shutterstock.com/image-photo/kylian-mbappe-celebrates-goal-after-scoring-2313795107">Victor Velter/Shutterstock</a></span></figcaption></figure><p>French football superstar Kylian Mbappé celebrates most of his goals by crossing his arms and tucking his hands underneath his armpits. It has become one of the most iconic goal celebrations in the world. </p>
<p>Mbappé, who is due to <a href="https://www.bbc.co.uk/sport/football/68346321">move</a> to Spanish giants Real Madrid at the end of this season, has already taken steps to <a href="https://en.as.com/soccer/kylian-mbappe-takes-steps-to-protect-name-and-brand-n/">register</a> a logo depicting his celebration as a trademark in several countries, as well as in the <a href="https://euipo.europa.eu/eSearch/#basic/1+1+1+1/100+100+100+100/017157355">European Union</a>. He has done the same for his <a href="https://www.tmdn.org/tmview/#/tmview/results?page=1&pageSize=30&criteria=C&basicSearch=Mbapp%C3%A9%20">surname</a>, <a href="https://branddb.wipo.int/en/quicksearch/brand/EM500000017157348?sort=score%20desc&start=0&rows=30&asStructure=%7B%22_id%22:%22af5d%22,%22boolean%22:%22AND%22,%22bricks%22:%5B%7B%22_id%22:%22af5e%22,%22key%22:%22applicant%22,%22value%22:%22Mbappe%22,%22strategy%22:%22Simple%22%7D%5D%7D&_=1708963392591&searchBy=applicant&fg=_void_&i=7">initials</a> and most famous <a href="https://branddb.wipo.int/en/quicksearch/brand/EM500000018326248?sort=score%20desc&start=0&rows=30&asStructure=%7B%22_id%22:%22af5d%22,%22boolean%22:%22AND%22,%22bricks%22:%5B%7B%22_id%22:%22af5e%22,%22key%22:%22applicant%22,%22value%22:%22Mbappe%22,%22strategy%22:%22Simple%22%7D%5D%7D&_=1708963392591&searchBy=applicant&fg=_void_&i=12">quotes</a>.</p>
<p>The black-and-white <a href="https://twitter.com/EU_IPO/status/1758470179686604921?ref_src=twsrc%5Etfw%7Ctwcamp%5Etweetembed%7Ctwterm%5E1758470179686604921%7Ctwgr%5E6632f5e3550abb68ddc2bb93edd8d49fad4dccf5%7Ctwcon%5Es1_&ref_url=https%3A%2F%2Fen.as.com%2Fsoccer%2Fkylian-mbappe-takes-steps-to-protect-name-and-brand-n%2F">logo</a> depicts a smiling Mbappé, celebrating in his usual fashion. </p>
<p><div data-react-class="Tweet" data-react-props="{"tweetId":"1758470179686604921"}"></div></p>
<p>Mbappé is not the only famous athlete who has looked to secure exclusive rights to their signature celebration. In 2022, Jamaican sprinter Usain Bolt applied to trademark a <a href="https://tsdr.uspto.gov/#caseNumber=97552042&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch">logo</a> in the US showing his victory celebration pose – an application with the US trademark office that is still pending.</p>
<p>The reason well-known athletes look to trademark these poses, and other aspects of their image, is obvious. They wish to turn them into successful brands that can be used commercially in a wide range of markets. </p>
<p>Among the products covered by Mbappé’s trademark registrations are clothes, textiles, footwear, toys, video games, umbrellas, bags, jewellery, perfumery, cosmetics and toothpastes. Any products or brands that wish to use his specific logo, name or quotes will need to pay Mbappé or be granted permission by Mbappé himself.</p>
<p>But how can even the celebratory pose of a sporting star become a brand? To answer this question, we need to look at the nature and function of trademarks. </p>
<h2>What trademark law says</h2>
<p>A trademark is used in the course of trade to distinguish the goods and services of a company from those of competitors. The key, though not only, function is to indicate the commercial origin of a product.</p>
<p>Logos representing a famous athlete’s iconic pose may satisfy this requirement. Such postures can create a stronger association between the player and the products to which their image is affixed, offering a more distinctive characterisation compared with a traditional portrait-style image. Such branding allows consumers to distinguish the products from the goods sold by others, effectively functioning as an indication of commercial source.</p>
<p>For example, if we see a <a href="https://www.amazon.co.uk/Saint-Germain-Collectable-Football-Collect-Favourite/dp/B0BJ2X2PK3/ref=sr_1_6?dib=eyJ2IjoiMSJ9.GG1cGhqjdxGCbbyM2RboACiXMD-QZ8LDKRRNro-Mv2y0n8N_T03Mk_-Hvf0edLUlOaLOrj22wTkcdWxmU5bhD4D7aCCpjqXRXyOwtxd6I2CU0qgeYAzPHkbqktN9fYgleTcbRsxLNPdBqd-JVKey-dv8mUplHkVz95fEFPTf18WIexAgZc5Y9o4q0bAA8tQxDSKNmJfpKXubWDSGyzHvWWrpcDev6PpsfQOuh66ZlnKog3FosnXDkj3ldaOX8cxRoBfVZPVVl3lGqkOQSN_uDs118QGAMCaBkl1aktkW4dc.L1hJr0klWKPAdOknhxw1gUFY6OSLcQW3EKBbYod9Xow&dib_tag=se&keywords=mbappe&qid=1709104613&sr=8-6">toy</a>, <a href="https://www.amazon.co.uk/World-Soft-Fleece-Blanket-Skin-friendly/dp/B0BL2SN57B/ref=sr_1_23_sspa?dib=eyJ2IjoiMSJ9.GG1cGhqjdxGCbbyM2RboACiXMD-QZ8LDKRRNro-Mv2y0n8N_T03Mk_-Hvf0edLUlOaLOrj22wTkcdWxmU5bhD4D7aCCpjqXRXyOwtxd6I2CU0qgeYAzPHkbqktN9fYgleTcbRsxLNPdBqd-JVKey-dv8mUplHkVz95fEFPTf18WIexAgZc5Y9o4q0bAA8tQxDSKNmJfpKXubWDSGyzHvWWrpcDev6PpsfQOuh66ZlnKog3FosnXDkj3ldaOX8cxRoBfVZPVVl3lGqkOQSN_uDs118QGAMCaBkl1aktkW4dc.L1hJr0klWKPAdOknhxw1gUFY6OSLcQW3EKBbYod9Xow&dib_tag=se&keywords=mbappe&qid=1709104613&sr=8-23-spons&sp_csd=d2lkZ2V0TmFtZT1zcF9tdGY&th=1">blanket</a>, <a href="https://www.amazon.co.uk/Mbapp%C3%A9-Football-Birthday-Card-Anniversary/dp/B0CJYL8BNZ/ref=sr_1_27?dib=eyJ2IjoiMSJ9.GG1cGhqjdxGCbbyM2RboACiXMD-QZ8LDKRRNro-Mv2y0n8N_T03Mk_-Hvf0edLUlOaLOrj22wTkcdWxmU5bhD4D7aCCpjqXRXyOwtxd6I2CU0qgeYAzPHkbqktN9fYgleTcbRsxLNPdBqd-JVKey-dv8mUplHkVz95fEFPTf18WIexAgZc5Y9o4q0bAA8tQxDSKNmJfpKXubWDSGyzHvWWrpcDev6PpsfQOuh66ZlnKog3FosnXDkj3ldaOX8cxRoBfVZPVVl3lGqkOQSN_uDs118QGAMCaBkl1aktkW4dc.L1hJr0klWKPAdOknhxw1gUFY6OSLcQW3EKBbYod9Xow&dib_tag=se&keywords=mbappe&qid=1709104613&sr=8-27">birthday card</a> or <a href="https://www.amazon.co.uk/Decorative-Painting-Posters-Picture-08x12inch/dp/B0CJS1HH6K/ref=sr_1_104?dib=eyJ2IjoiMSJ9.J38YBIPs5sgfYm5fJl_5IXO57eQa-d1JvSIEpEQ_SoKyEQxQaQkmRvfXZtvLWkSFqJOeapgyHqDz7WhgEsenLzr1hvHZWzTK3SU6b3wzYntbmHEg0AVDj5j0B3eCesn84wHee9kGkEFYprsqf9elUDHpV4cJStV6pfz4utYwmh8MTRQm9hscQLi8QO0f7bhrkTqt1Rq53B4o7-mbXDTNM1Z2LSUMt7E0fFZF2jiIQuWh3kjkl98DpHHMeBhqG58tTD8WiXky4eBd6td2G20VVI1VHUiDBXMHgHEwZYhGxnw.uZd71RzvHyyd1WMKQ-2E4P7RVJ0GeAdcG84Jib86ILw&dib_tag=se&keywords=mbappe&qid=1709104845&sr=8-104&th=1">poster</a> in a shop that features Mbappé’s trademarked celebration logo (or any other trademarks incorporating his image, name and initials), we will probably think those products are marketed by Mbappé himself. </p>
<p>So, if a business sells such branded goods without his authorisation, it will probably be a trademark infringement. This is because consumers would buy the product in the erroneous belief that they are official Mbappé merchandise.</p>
<p>Mbappé is a sports icon with hundreds of millions of fans and followers, including 112 million on <a href="https://www.instagram.com/k.mbappe/">Instagram</a>. Thus, his trademarks may soon become notorious to a large range of consumers, especially if he ramps up the manufacture, sale and promotion of a variety of products bearing his brand. Owners of famous brands have a higher chance of prevailing in trademark infringement cases.</p>
<p>It would then be enough for Mbappé to show that a business which has sold a replica product incorporating his pose wants to take unfair advantage of the reputation of such a trademark. The same outcome would materialise if he could show that such a product is detrimental to his brand – for example, if the replica product bearing his brand is of poor quality.</p>
<p>Other celebrities have done the same. In 2016, Australian popstar Kylie Minogue <a href="https://theconversation.com/kylie-vs-kylie-who-will-win-the-legal-battle-between-minogue-and-jenner-55682">started a battle</a> with TV personality Kylie Jenner over the trademarking of their shared first name. Minogue claimed that her Kylie brand would be tarnished if Jenner were allowed to register an identical or similar trademark, describing her as a “secondary reality TV personality”.</p>
<hr>
<p>
<em>
<strong>
Read more:
<a href="https://theconversation.com/kylie-vs-kylie-who-will-win-the-legal-battle-between-minogue-and-jenner-55682">Kylie vs Kylie – who will win the legal battle between Minogue and Jenner?</a>
</strong>
</em>
</p>
<hr>
<figure class="align-center ">
<img alt="Kylie Minogue posing for a photo in front of a large crowd of cameramen." src="https://images.theconversation.com/files/578873/original/file-20240229-28-zfu1pd.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=754&fit=clip" srcset="https://images.theconversation.com/files/578873/original/file-20240229-28-zfu1pd.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=600&h=400&fit=crop&dpr=1 600w, https://images.theconversation.com/files/578873/original/file-20240229-28-zfu1pd.jpg?ixlib=rb-1.1.0&q=30&auto=format&w=600&h=400&fit=crop&dpr=2 1200w, https://images.theconversation.com/files/578873/original/file-20240229-28-zfu1pd.jpg?ixlib=rb-1.1.0&q=15&auto=format&w=600&h=400&fit=crop&dpr=3 1800w, https://images.theconversation.com/files/578873/original/file-20240229-28-zfu1pd.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=754&h=503&fit=crop&dpr=1 754w, https://images.theconversation.com/files/578873/original/file-20240229-28-zfu1pd.jpg?ixlib=rb-1.1.0&q=30&auto=format&w=754&h=503&fit=crop&dpr=2 1508w, https://images.theconversation.com/files/578873/original/file-20240229-28-zfu1pd.jpg?ixlib=rb-1.1.0&q=15&auto=format&w=754&h=503&fit=crop&dpr=3 2262w" sizes="(min-width: 1466px) 754px, (max-width: 599px) 100vw, (min-width: 600px) 600px, 237px">
<figcaption>
<span class="caption">Kylie Minogue complained when Kylie Jenner filed a trademark application for her first name.</span>
<span class="attribution"><a class="source" href="https://www.shutterstock.com/image-photo/cannes-france-may-27-kylie-minogue-200809382">Andrea Raffin/Shutterstock</a></span>
</figcaption>
</figure>
<h2>Protecting free speech</h2>
<p>But there are also downsides to a trademark protection strategy based on the registration of every aspect of an athlete’s image and personality. It may limit the freedom of the public – and especially sports fans – to celebrate or criticise their icons.</p>
<p>Take, for instance, a website dedicated to Mbappé that serves as a forum where fans can exchange opinions about the player’s sporting performance and marketing activities. And let’s imagine that the website’s homepage features Mbappé’s trademarked celebration pose, his name or a famous quote prominently, and hosts fan commentaries that are highly critical of any of his activities.</p>
<p>Mbappé could, in theory, enforce his trademark rights to stop what he may consider a use of his trademark that tarnishes or even takes advantage of its reputation. This would be even more applicable if the website hosts advertising banners and sponsored sections, as Mbappé could claim that his brands are being somewhat exploited commercially.</p>
<p>But such an enforcement would unduly restrict the right of football fans to free speech. It would also unjustifiably allow trademark owners to stop their brands being used for purposes that are not strictly commercial. We should all be entitled to celebrate or criticise our favourite players by posting commentaries about their behaviour on and off the pitch, and including their iconic pose.</p>
<p>Mbappé’s trademark protection strategy is certainly legitimate and in line with the <a href="https://www.forbes.com/sites/forbesbusinesscouncil/2022/07/13/the-power-of-celebrity-brands/?sh=739fb0a4d30d">current branding trends</a> of most celebrities. But the French football star would be better advised not to enforce his trademarks against whoever simply expresses opinions and ideas about him without a strict economic purpose. </p>
<p>The risk is not only to lose the legal case, but also alienate fans who may end up disappointed about their idol’s willingness to be overly litigious.</p><img src="https://counter.theconversation.com/content/224302/count.gif" alt="The Conversation" width="1" height="1" />
<p class="fine-print"><em><span>The authors do not work for, consult, own shares in or receive funding from any company or organisation that would benefit from this article, and have disclosed no relevant affiliations beyond their academic appointment.</span></em></p>Kylian Mbappé has secured a commercial trademark for his celebration pose, and is looking to protect his name and quotes too.Enrico Bonadio, Reader in Intellectual Property Law, City, University of LondonAndrea Zappalaglio, Lecturer in Intellectual Property Law, University of SheffieldLicensed as Creative Commons – attribution, no derivatives.tag:theconversation.com,2011:article/2206562024-01-14T19:05:41Z2024-01-14T19:05:41ZThe first Mickey Mouse is now in the public domain. How can I use the Disney character?<p>The earliest versions of Mickey and Minnie Mouse entered the public domain in the United States at the start of this year, 95 years since they were introduced to the public in the film Steamboat Willie. </p>
<p>Many characters come into the public domain on New Year’s Day (<a href="https://en.wikipedia.org/wiki/Public_Domain_Day">Public Domain Day</a>) every year. For works “made for hire”, including films, copyright in the United States lasts 95 years; for other works it is the life of an author plus 70 years. </p>
<p>Prior to 1998, copyright for works of corporate ownership lasted 75 years, but the <a href="https://en.wikipedia.org/wiki/Copyright_Term_Extension_Act">Sonny Bono Copyright Term Extension Act of 1998</a>, often nicknamed the Mickey Mouse Protection Act due to the lobbying by Disney, expanded copyright protections to 95 years.</p>
<p>Only this first iteration of Mickey is in the public domain, but it didn’t take long for creators to seize the opportunity – limited though it might be.</p>
<p>Already <a href="https://www.cbsnews.com/news/mickey-mouse-at-least-2-horror-movies-disney-copyright-over/">two horror films</a> are on the horizon, albeit with the lawyers on hand to make sure there will be no cease and desist letters! </p>
<figure>
<iframe width="440" height="260" src="https://www.youtube.com/embed/BBgghnQF6E4?wmode=transparent&start=0" frameborder="0" allowfullscreen=""></iframe>
</figure>
<hr>
<p>
<em>
<strong>
Read more:
<a href="https://theconversation.com/happy-birthday-mickey-mouse-animations-greatest-showman-is-90-106563">Happy birthday Mickey Mouse – animation's greatest showman is 90</a>
</strong>
</em>
</p>
<hr>
<h2>What can people do with Mickey?</h2>
<p>The earlier iterations of Mickey and other characters from Steamboat Willie can be used in any adaptation. </p>
<p>Before this they could only be used in a transformative way under the United States’ <a href="https://www.lib.purdue.edu/uco/fair-use">fair use exception</a>. Fair use in the US allows creators to transform other existing works as long as they create something new and different from them. </p>
<p>This feature of the US copyright system in a <a href="https://www.supremecourt.gov/opinions/22pdf/21-869_87ad.pdf">recent case</a> reiterated that it would only work where works were not in competition with each other. </p>
<p>From January 1, this factor is irrelevant for early Mickey. As long as creators are not misleading consumers as to Disney endorsement or connection, do not use Mickey’s later likeness, and don’t use the Mickey or characters of Steamboat Willie as a trademark, they are free to go nuts.</p>
<figure>
<iframe width="440" height="260" src="https://www.youtube.com/embed/jVjt52sOs6g?wmode=transparent&start=0" frameborder="0" allowfullscreen=""></iframe>
</figure>
<h2>Can I use Mickey in Australia?</h2>
<p>Many jurisdictions have <a href="https://commons.wikimedia.org/wiki/File:World_copyright_terms.svg">different terms</a> for copyright, so it may be that early Mickey is still not free in some places.</p>
<p>In Australia, films made in Australia get <a href="https://www.austlii.edu.au/cgi-bin/viewdoc/au/legis/cth/consol_act/ca1968133/s93.html">70 years</a> of copyright protection once made public, so all Australian films made public before 1955 are now in the public domain.</p>
<p>Australia’s protection for cinematography works is shorter than the US, but due to a number of <a href="https://www.wipo.int/treaties/en/ip/berne/">treaty obligations</a>, member states give the same treatment to foreign works that they do national ones. This means the law that applies will depend on where you are sued, and if an Australian was sued in the US for their usage of early Mickey Mouse before this year you could be liable under US copyright laws. </p>
<p>As of 2024, if Disney sued you in Australia or the US you are likely to win but other jurisdictions may still have some protection, so it will depend on where you publish or show the work. Online, where a work can be “shown” anywhere, the suing company can not just choose any country: there must be some connection for the parties to the country they are being sued in.</p>
<p>Additionally, while Australia does not have a broad fair use exception to copyright, our creators could always use Mickey in a parody or satire or for review or criticism. I may even have used a likeness or two in a law exam question (<a href="https://www.austlii.edu.au/cgi-bin/viewdoc/au/legis/cth/consol_act/ca1968133/s200.html">exams have a special exception under the act</a>). </p>
<p>With the early Mickey in the public domain, you no longer need to be satisfied that one of those categories applies. A movie, artwork or literary work that shows the early version of Mickey can be whatever you want. </p>
<p>The issue will then be making sure your creative work is restricted to the early Mickey. For example, when Winnie the Pooh came into the public domain in 2022 only the A.A Milne version was free to use so the <a href="https://www.youtube.com/watch?v=W3E74j_xFtg">horror movie</a> made shortly after did not include the famous red t-shirt used in the Disney version. </p>
<hr>
<p>
<em>
<strong>
Read more:
<a href="https://theconversation.com/life-plus-70-who-really-benefits-from-copyrights-long-life-48971">Life plus 70: who really benefits from copyright's long life?</a>
</strong>
</em>
</p>
<hr>
<p>A trademark is very different to copyright. Trademarks can last forever as long as registration is renewed, but there is no restriction on using logos and names that are trademarked as long as you are not using it as your own brand identity or mark, and not misleading or confusing consumers as to the origin of products. That means you can’t call your business “Mickey Mouse” or “Steamboat Willie” but you can use the likeness of those early characters in your marketing (as long as it’s not being used as <em>your</em> logo or brand recognition). </p>
<p>A number of <a href="https://archiveofourown.org/works/search?work_search%5Bquery%5D=Mickey+Mouse">fan fiction</a> and perhaps even some more risqué adaptations using Mickey Mouse already exist online. Fan fiction will often also be a copyright infringement but the risk of being sued is slightly smaller. Companies tend to go after those who are making commercial dealings and those that they see as hurting their brand image. Even Banksy has incorporated <a href="https://hexagongallery.com/catalog/artist/banksy/napalm-cant-beat-that-feeling/">Mickey in a work</a> (likely being seen as a parody and as such non-infringing). </p>
<p>On the other hand, commercial publishers are incredibly risk averse and so if you do want to use Mickey be warned there may be an issue getting a publisher to bite. Additionally, merchandising of your creative work may be an issue depending on trademarks in different categories and where you market these. You also will only get copyright protection on original elements you add to the work.</p>
<p>So yes, upload and share the original movie, paint those early Mickeys, sing a song about Steamboat Willie, and enjoy the horror comedies coming out. Next year Popeye will become public domain so don’t be surprised if a slasher horror remake of him is coming soon!</p>
<hr>
<p>
<em>
<strong>
Read more:
<a href="https://theconversation.com/tiktokkers-are-writing-ratatouille-the-musical-but-who-owns-the-copyright-151294">TikTokkers are writing Ratatouille, the musical. But who owns the copyright?</a>
</strong>
</em>
</p>
<hr>
<img src="https://counter.theconversation.com/content/220656/count.gif" alt="The Conversation" width="1" height="1" />
<p class="fine-print"><em><span>Sarah Hook does not work for, consult, own shares in or receive funding from any company or organisation that would benefit from this article, and has disclosed no relevant affiliations beyond their academic appointment.</span></em></p>The earliest versions of Mickey and Minnie Mouse entered the public domain in the United States at the start of this year, 95 years since they were introduced to the public.Sarah Hook, Senior Lecturer in Law, Western Sydney UniversityLicensed as Creative Commons – attribution, no derivatives.tag:theconversation.com,2011:article/2106072023-08-01T21:38:53Z2023-08-01T21:38:53ZThe reaction to ‘X,’ Elon Musk’s rebrand of Twitter, reflects how we feel about brands<figure><img src="https://images.theconversation.com/files/540257/original/file-20230731-248378-gey506.jpg?ixlib=rb-1.1.0&rect=0%2C0%2C3598%2C1998&q=45&auto=format&w=496&fit=clip" /><figcaption><span class="caption">Elon Musk, owner of X Holdings Corp., changed Twitter, Inc. to X Corp. He announced the change on July 23, 2023.</span> <span class="attribution"><span class="source">(Shutterstock)</span></span></figcaption></figure><iframe style="width: 100%; height: 100px; border: none; position: relative; z-index: 1;" allowtransparency="" allow="clipboard-read; clipboard-write" src="https://narrations.ad-auris.com/widget/the-conversation-canada/the-reaction-to-x-elon-musks-rebrand-of-twitter-reflects-how-we-feel-about-brands" width="100%" height="400"></iframe>
<p>Twitter has long been known for its iconic Blue Bird. On July 23, Elon Musk <a href="https://www.bloomberg.com/news/articles/2023-07-27/why-rebrand-twitter-x-elon-musk-s-everything-app-explained-quicktake">announced that this famed logo was going to be replaced with an “X.”</a> After a series of Musk-driven blunders, the disappearance of the Blue Bird has been seen by some as the <a href="https://www.vox.com/culture/2022/11/22/23466381/leaving-twitter-x-saying-goodbye-social-media">final straw in the erasure of Twitter</a> as we know it. </p>
<p>It also serves as a reminder that, despite the meaningful role many logos play in our cultural life, there is someone behind the curtain, pulling the strings.</p>
<p><div data-react-class="Tweet" data-react-props="{"tweetId":"1683171310388535296"}"></div></p>
<p><a href="https://www.theatlantic.com/technology/archive/2023/07/twitter-musk-x-rebrand/674818/">Among the speculation as to why Musk has decided to rebrand Twitter</a>, one thing is certain: the Blue Bird is gone. As this iconic logo disappears from public life — along with “<a href="https://www.merriam-webster.com/dictionary/tweet">tweets</a>” and the Twitter name itself — some are left <a href="https://www.insider.com/twitter-blue-bird-logo-x-elon-musk-replaced-mockery-memes-2023-7">mourning the loss of a brand</a> that <a href="https://www.britannica.com/topic/Twitter">impacted the online social fabric for over a decade</a>.</p>
<h2>Evolving relationships</h2>
<p>The ways in which <a href="https://nyupress.org/9780814787144/authentic/">consumers relate to brands is evolving</a>. Brands not only advertise on Instagram and TikTok, but they also have their own profiles. Brands digitally appear alongside friends, colleagues and politicians. We can text brands for customer service help on WhatsApp alongside family chat groups. </p>
<p>We now interact with brands in an emotional and relational way. This is part of a larger trend of <a href="https://doi.org/10.1016/j.ijresmar.2020.02.007">brands becoming anthropomorphized</a>.</p>
<p>Consumers relate to brands in ways that exceed the bounds of an economic, transactional relationship. Brands arouse emotions in us. Nostalgia is now the <a href="https://thewalrus.ca/zellers-nostalgia/">driving force behind reviving former brands — as the recent revival of Canadian discount brand Zellers is proving</a>.</p>
<figure class="align-center zoomable">
<a href="https://images.theconversation.com/files/540494/original/file-20230801-28-9l0og9.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=1000&fit=clip"><img alt="storefront with the Zellers logo" src="https://images.theconversation.com/files/540494/original/file-20230801-28-9l0og9.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=754&fit=clip" srcset="https://images.theconversation.com/files/540494/original/file-20230801-28-9l0og9.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=600&h=405&fit=crop&dpr=1 600w, https://images.theconversation.com/files/540494/original/file-20230801-28-9l0og9.jpg?ixlib=rb-1.1.0&q=30&auto=format&w=600&h=405&fit=crop&dpr=2 1200w, https://images.theconversation.com/files/540494/original/file-20230801-28-9l0og9.jpg?ixlib=rb-1.1.0&q=15&auto=format&w=600&h=405&fit=crop&dpr=3 1800w, https://images.theconversation.com/files/540494/original/file-20230801-28-9l0og9.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=754&h=508&fit=crop&dpr=1 754w, https://images.theconversation.com/files/540494/original/file-20230801-28-9l0og9.jpg?ixlib=rb-1.1.0&q=30&auto=format&w=754&h=508&fit=crop&dpr=2 1508w, https://images.theconversation.com/files/540494/original/file-20230801-28-9l0og9.jpg?ixlib=rb-1.1.0&q=15&auto=format&w=754&h=508&fit=crop&dpr=3 2262w" sizes="(min-width: 1466px) 754px, (max-width: 599px) 100vw, (min-width: 600px) 600px, 237px"></a>
<figcaption>
<span class="caption">The revival of the Canadian discount brand Zellers reflects consumers’ pull towards nostalgia.</span>
<span class="attribution"><span class="source">(Shutterstock)</span></span>
</figcaption>
</figure>
<h2>Emotional connections</h2>
<p>Our emotions are <a href="https://hbr.org/2015/11/the-new-science-of-customer-emotions">being leveraged by companies in deliberate and explicit ways</a>. As consumers we understand the social capital and value of branding. </p>
<p>To mourn the loss of a logo and brand is noteworthy. Despite any feelings we have about Twitter’s former brand, this disappearance reminds us that a brand’s use — and existence — is ultimately outside our control. </p>
<p>This is not to say our collective thoughts and feelings about logos do not matter at all. In fact, public pressure has been the driver in some companies rebranding and <a href="https://www.forbes.com/sites/forbesagencycouncil/2022/08/31/when-the-external-environment-demands-you-rebrand/?sh=43bf5ed35212">evolving their logos</a>, particularly <a href="https://www.npr.org/sections/live-updates-protests-for-racial-justice/2020/09/23/916012582/uncle-bens-changing-name-to-ben-s-original-after-criticism-of-racial-stereotypin#:%7E:text=a%20store%20shelf.-,Mars%2C%20Incorporated%20announced%20on%20Wednesday%20that%20it%20is%20changing%20the,the%20brand%20to%20Ben's%20Original.&text=Uncle%20Ben's%20will%20now%20be,faced%20criticism%20for%20racial%20stereotyping.">racist ones</a>. </p>
<h2>Controlled trademarks</h2>
<p>Logos are trademarks, and as such, they are objects of private property, controlled and owned by corporations as assets. Although trademarks are the perceptible form of a brand, logos only have value because we, as consumers, recognize them. We rely on trademarks in the market to decide what to buy, and what brands to trust. </p>
<hr>
<p>
<em>
<strong>
Read more:
<a href="https://theconversation.com/why-do-some-brands-change-racist-names-and-logos-but-others-dont-heres-what-the-research-says-197605">Why do some brands change racist names and logos, but others don't? Here's what the research says</a>
</strong>
</em>
</p>
<hr>
<p>In our reliance on brands, and <a href="https://doi.org/10.1086/319618">in forming communities around them</a>, <a href="https://doi.org/10.1017/CBO9781107300880.004">we contribute to their value</a>. Yet, in many ways, in the trademark law landscape, we are tourists.</p>
<p>Trademarks constitute an essential aspect of a brand, and the value of today’s leading brands is in the billions. For example, Canadian brands <a href="https://www.statista.com/statistics/795319/leading-brands-canada-brand-value/">Bell and TD Bank are worth $11.05 billion and $27.54 billion respectively</a>. These astronomical values pale in comparison to the value of global brands; Amazon’s brand in 2022 was worth <a href="https://www.statista.com/statistics/326086/amazon-brand-value/">US$705.65 billion</a>.</p>
<h2>Brands as properties</h2>
<p>There is no doubt that trademarks, as the face of brands, are precious to their owners. They are also meaningful to members of the public in various ways, sometimes forming the face of <a href="https://www.refinery29.com/en-us/2018/05/198398/womens-march-trademark-dispute-movement">social movements</a> or <a href="https://www.theatlantic.com/business/archive/2016/06/how-subarus-came-to-be-seen-as-cars-for-lesbians/488042/">reflecting our identities</a>, but ways in which we can make use of trademarks is limited. </p>
<p>Using someone else’s trademark without their permission infringes their rights to their logo. While there are exceptions to this protection, they are narrow.</p>
<p>For instance, <a href="https://canlii.ca/t/h4jzk">parody and satire are not defences to trademark infringement in Canadian law</a>. Using a company’s logo for cultural criticism and political protest may violate the trademark owner’s rights. </p>
<p><div data-react-class="Tweet" data-react-props="{"tweetId":"1679928755295510530"}"></div></p>
<p>This gives companies legal means to threaten those using their logo in the course of protest or critique — such as <a href="https://thehill.com/lobbying/3687141-medieval-times-sues-its-worker-union-saying-name-violates-its-trademark/">employees looking to organize a union</a> or <a href="https://www.thestar.com/business/personal-finance/united-airlines-fights-legal-battle-with-untied-website/article_ff9d941c-ec4a-583a-902a-b755ba3ddb38.html">unhappy customers who create a “gripe site</a>.”</p>
<p>There are many reasons for this, but a common thread that permeates Canadian law is <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=2419289">understanding trademarks as a form of private property</a>. Just as protesting on someone’s front lawn would be trespassing, protesting with a logo is infringement. </p>
<p>Protecting logos in this way fails to appreciate the social roles they have, and the roles consumers play in developing their meaning.</p>
<h2>Collective meanings</h2>
<p>Logos are not merely commercial assets. They have value that extends far beyond their owners. Logos are a collective site of meaning and protecting them as mere commercial assets may effectively <a href="https://digitalcommons.osgoode.yorku.ca/all_papers/356/">shield trademark owners from public discourse</a>. </p>
<p>As we say goodbye to one of the most iconic logos of the last decade, it is worth pausing to ask what exactly we have lost. As consumers, we sit on the sidelines of trademark protection. As Twitter — erm, X — changes, for better or worse, perhaps it is time our trademark laws change as well.</p><img src="https://counter.theconversation.com/content/210607/count.gif" alt="The Conversation" width="1" height="1" />
<p class="fine-print"><em><span>Alexandra Mogyoros receives funding from the Social Sciences and Humanities Research Council through a SSHRC Explore Grant.</span></em></p>Consumers relate to brands and logos on an emotional level. The response to Elon Musk’s rebranding of Twitter has revealed the emotional connections people have to the brands they use.Alexandra Mogyoros, Assistant Professor in law researching at the intersection of brands, trust, intellectual property and expression, Toronto Metropolitan UniversityLicensed as Creative Commons – attribution, no derivatives.tag:theconversation.com,2011:article/2103772023-07-26T02:18:06Z2023-07-26T02:18:06ZDo rebrands work? Can you trademark an X? An expert answers the burning questions on Musk’s Twitter pivot<figure><img src="https://images.theconversation.com/files/539399/original/file-20230726-19-hqzuh9.jpg?ixlib=rb-1.1.0&rect=0%2C220%2C6997%2C4248&q=45&auto=format&w=496&fit=clip" /><figcaption><span class="caption">
</span> <span class="attribution"><a class="source" href="https://www.shutterstock.com/image-photo/man-hand-holding-phone-social-networking-2336316901">Shutterstock</a></span></figcaption></figure><p>To non-moguls, Elon Musk’s (perhaps temporary) rebrand of Twitter to “X” may seem high risk, amateurish, or even capricious. But it is likely doing exactly what he intended: generating enormous global interest, pushing Twitter closer to his other X brands (<a href="https://www.spacex.com/">SpaceX</a>, <a href="https://en.wikipedia.org/wiki/Tesla_Model_X">Tesla Model X</a>, <a href="https://x.ai/">xAI</a>), and clearing the way for a profitable merging of technologies.</p>
<h2>What happened to the blue bird?</h2>
<p>Last weekend, Musk began the (reversible) changes by renaming the Twitter platform X on its website and replacing the <a href="https://www.nytimes.com/2014/08/10/magazine/who-made-that-twitter-bird.html">iconic blue bird logo</a> with a crowdsourced “<a href="https://twitter.com/elonmusk/status/1683171310388535296">interim</a>” white “X” on a black background.</p>
<p>Later, Musk posted an image of the character <a href="https://twitter.com/elonmusk/status/1683378289031761920">projected on the firm’s San Francisco headquarters</a> and <a href="https://twitter.com/elonmusk/status/1683171310388535296">tweeted</a> (or is that “X’d”?) that x.com now redirects to twitter.com.</p>
<p>The X bears a strong resemblance to the <a href="https://www.compart.com/en/unicode/U+1D54F">Unicode character</a> “mathematical double-struck capital X”, derived from the way bold characters are usually <a href="https://en.wikipedia.org/wiki/Blackboard_bold">written on blackboards</a> in maths lectures. The logo is still undergoing iterations, with a <a href="https://www.theverge.com/2023/7/25/23807418/twitter-x-logo-design-change-elon-musk">short-lived thickening of the lines</a> going live on July 26, before Musk announced he didn’t like it and would revert.</p>
<p><div data-react-class="Tweet" data-react-props="{"tweetId":"1683378289031761920"}"></div></p>
<p>Linda Yaccarino, Twitter’s CEO and <a href="https://fortune.com/2023/05/12/twitter-ceo-linda-yaccarino-elon-musk-glass-cliff-female-leaders/">potential scapegoat</a> if the rebrand goes wrong, also confirmed the launch on Sunday, <a href="https://twitter.com/lindayacc/status/1683353772917940225">tweeting</a>, “X is here! Let’s do this.”</p>
<hr>
<p>
<em>
<strong>
Read more:
<a href="https://theconversation.com/elon-musks-hardcore-management-style-a-case-study-in-what-not-to-do-194999">Elon Musk's 'hardcore' management style: a case study in what not to do</a>
</strong>
</em>
</p>
<hr>
<h2>Has a radical rebrand ever succeeded?</h2>
<p>In 2021, Facebook rebranded its holding company to Meta. But it kept “Facebook”, gave us the <a href="https://www.wired.com/story/what-is-the-metaverse/">metaverse</a>, and didn’t deprive the world of a cute feathery icon and concept of “tweeting”.</p>
<p>Branding experts around the globe have been quick to condemn the Twitter shakeup as too sudden and <a href="https://www.businessinsider.com/elon-musk-twitter-x-rebrand-tech-marketing-brand-value-2023-7">destructive of brand capital</a>. That’s perhaps because even slight name changes are known to be risky. Kentucky Fried Chicken <a href="https://www.snopes.com/fact-check/kfc-and-fried/">officially rebranded to KFC</a>. Pepsi was once Pepsi-Cola. These successful adjustments took time and careful management. </p>
<p>Dramatic renaming of a household name has basically never worked. And there’s no doubt a black “X” replacing “Twitter” is dramatic. It smashes the metaphor of birds updating one another in an idyllic blue-sky ecosystem. Sentimental fans holding out for a return to the good old days have now got the memo: Twitter isn’t for you.</p>
<p>But perhaps that’s the point. To me, X – a symbol that can be a cattle marker or an illiterate signature – seems like a probe to perturb and test the market.</p>
<p>Musk isn’t renaming fast food or soft drinks. Twitter is in the hyper-dynamic business of information. Musk is agile and well armed. So maybe new branding rules are being forged.</p>
<p>Musk’s progressive alienation of Twitter’s traditional users could be an attempt to refresh the platform’s demographic – to draw in those true to his other brands, while shaking off unprofitable sceptics. This would certainly fit with the push X gives towards Musk’s other X brands. </p>
<p>Most commentators have latched onto the idea the change is sudden, irreversible, and complete in one day. But Musk’s past business endeavours suggest he is a strategist. The change will take time to play out and can likely be revised, reversed and adjusted as feedback is generated.</p>
<hr>
<p>
<em>
<strong>
Read more:
<a href="https://theconversation.com/what-will-elon-musks-ownership-of-twitter-mean-for-free-speech-on-the-platform-181626">What will Elon Musk's ownership of Twitter mean for 'free speech' on the platform?</a>
</strong>
</em>
</p>
<hr>
<h2>Doesn’t someone else own the “X” trademark?</h2>
<p>Trademarking of “X” is probably not pivotal to the Twitter rebrand. But achieving limited ownership of the letter is not as preposterous as it sounds.</p>
<p>Trademarks are granted or refused based on their ability to identify the source of the associated goods or services. This means X can function as a trademark if it clearly identifies Twitter in the minds of the public (provided another Twitter-like service doesn’t currently hold the trademark). Famous brands have advantages: Musk has already garnered enough media attention to ensure X is now a globally recognised term for his company.</p>
<p>Is X a generic term and thus not trademarkable? <a href="https://journals.sagepub.com/doi/10.1177/01622439211055482">My own research</a> argues trademarks used by tech firms involved in consumer search and decision making (like Twitter) are inherently <a href="https://en.wikipedia.org/wiki/Generic_trademark">generic</a>. But under the 77-year-old <a href="https://www.law.cornell.edu/wex/lanham_act">Lanham Act</a> that still governs trademarks in the United States, X would have to be a common generic name for <em>all</em> services like Twitter to be refused. It isn’t. It’s mostly just a generic term for the 24th letter of the alphabet.</p>
<p>Speculation about the legality of X as a trademark is one thing. My time <a href="https://www.worldtrademarkreview.com/search?search=shackell&sort=2&page=1">writing about trademarks</a>, has taught me the reality in courts and tribunals is another. Both <a href="https://www.reuters.com/technology/problem-with-x-meta-microsoft-hundreds-more-own-trademarks-new-twitter-name-2023-07-25/">Microsoft and Meta</a> (and many others) have laid claims to X in the past for various goods and services.</p>
<p><div data-react-class="Tweet" data-react-props="{"tweetId":"1683568173809844229"}"></div></p>
<p>Lawsuits over X may be filed, but final determinations could be years in the courts. And if things go badly, Musk has just shown his willingness to pivot.</p>
<hr>
<p>
<em>
<strong>
Read more:
<a href="https://theconversation.com/the-digital-town-square-what-does-it-mean-when-billionaires-own-the-online-spaces-where-we-gather-182047">The 'digital town square'? What does it mean when billionaires own the online spaces where we gather?</a>
</strong>
</em>
</p>
<hr>
<h2>What is Musk trying to achieve?</h2>
<p>Tech commentators are intrigued by the idea the X rebrand is part of <a href="https://www.businessinsider.com/elon-musk-x-everything-app-twitter-details-2022-10">Musk’s plan</a> to create a <a href="https://www.wechat.com/">WeChat</a>-style “<a href="https://www.forbes.com/sites/siladityaray/2023/05/22/elon-musk-wants-to-build-an-everything-app-heres-how-the-worlds-most-popular-one-works/?sh=101412ac4a20">everything app</a>” that would converge messaging, search, online shopping and mobile payment. Twitter CEO, Yaccarino, <a href="https://twitter.com/lindayacc/status/1683214311957594113">has said as much</a>.</p>
<p><div data-react-class="Tweet" data-react-props="{"tweetId":"1683214311957594113"}"></div></p>
<p>I find that analysis too simplistic, especially given the ongoing focus on <a href="https://hbr.org/2023/02/microsoft-google-and-a-new-era-of-antitrust">antitrust</a>. Musk is arguably in a position to survey (and reshape) the landscape of not just “town square” discourse but space travel, artificial intelligence (AI), transportation and even <a href="https://www.theguardian.com/us-news/2022/nov/20/twitter-lifts-donald-trump-ban-after-elon-musks-poll">politics</a>. He operates on a scale incompatible with endgames. I sense the X rebrand is more about a direction of travel. Or even a sacrifice for a greater goal.</p>
<p>The X rebrand could relate to AI (Musk had a role in a <a href="https://www.worldtrademarkreview.com/article/there-data-drought-ai-projects-might-be-about-get-expensive">data drought</a> this year by restricting Twitter data access). Or it could be testing the waters for a different pivot later in the year. Or it could be an attempt to distract from some other move. There’s no way to know.</p>
<p>Even the phrase “time will tell” is no help. How can we know if an unknown plan succeeds or not? Does Musk care if Twitter disappears? Does he care if he is worth two hundred billion or three hundred billion?</p>
<p>Welcome to the inscrutable world of X.</p><img src="https://counter.theconversation.com/content/210377/count.gif" alt="The Conversation" width="1" height="1" />
<p class="fine-print"><em><span>Cameron Shackell works as a freelance brand and marketing consultant but does not work for any company mentioned in this article. He is a regular contributor to World Trademark Review which is linked to in this article.</span></em></p>Twitter has been officially rebranded to X, in a process many would deem chaotic. But we can still try to make sense of it.Cameron Shackell, Sessional Academic, Visitor, Queensland University of TechnologyLicensed as Creative Commons – attribution, no derivatives.tag:theconversation.com,2011:article/1994652023-02-13T13:25:42Z2023-02-13T13:25:42ZA less biased way to determine trademark infringement? Asking the brain directly<figure><img src="https://images.theconversation.com/files/509283/original/file-20230209-20-ofkear.jpg?ixlib=rb-1.1.0&rect=117%2C203%2C1930%2C1203&q=45&auto=format&w=496&fit=clip" /><figcaption><span class="caption">Neuroimaging could help the courts better distinguish between two similar trademarks.</span> <span class="attribution"><a class="source" href="https://www.gettyimages.com/detail/photo/young-business-boys-with-crazy-ideas-royalty-free-image/1295534832">RichVintage/E+ via Getty Images</a></span></figcaption></figure><p>Does the toothpaste Colddate infringe upon the trademark of Colgate? Some might think this is a no-brainer. But in a <a href="https://scholar.google.com/scholar_case?case=14430877341980589843&q=Colgate-Palmolive+Company+v.%C2%A0J.M.D.+All-Star+Import,+486+F.%C2%A0Supp.%C2%A02d+286+(Dist.+Court,+2007).&hl=en&as_sdt=6,47">2007 lawsuit</a> between the two brands, Colgate-Palmolive lost on the grounds that the two brands were “similar” but not “substantially indistinguishable.” </p>
<p>Determining trademark infringement can often be challenging and fraught with controversy. The reason is that, at its core, a verdict for infringement requires proof that the two brands are confusingly similar. And yet the existing approach primarily relies on self-report, which is known to be vulnerable to <a href="https://digitalcommons.law.uga.edu/glr/vol53/iss2/5">biases and manipulation</a>.</p>
<p>But this challenge also provides an interesting lens into the complex yet fascinating relationship between scientific evidence and legal practices. I am a <a href="https://scholar.google.com.hk/citations?user=4qKYm5AAAAAJ&hl=en">marketing professor</a> with a background in cognitive neuroscience, and one of my research interests is in using neuroscientific tools to study consumer behavior. In our <a href="https://doi.org/10.1126/sciadv.abo1095">recently published study</a>, my colleagues and I demonstrated how looking directly into the brain may help solve the conundrum of how to measure similarity between trademarks. </p>
<h2>Determining trademark infringement is messy</h2>
<p>In most legal systems, trademark infringement decisions revolve around whether a “<a href="https://scholarship.law.wm.edu/facpubs/194">reasonable person</a>” would find two trademarks similar enough to cause confusion. While this may sound straightforward and intuitive, judges have found it incredibly difficult to translate such a criterion into concrete guidance for legal decision-making. <a href="https://doi.org/10.1093/oso/9780198852940.003.0009">Many legal scholars</a> have lamented the lack of a clear definition of a “reasonable person,” or what factors contribute to “similarity” and their relative importance. </p>
<p>This ambiguity is further compounded by the <a href="https://www.britannica.com/topic/adversary-procedure">adversarial legal system</a> in the U.S. and many other countries. In such a system, two opposing parties each hire their own attorneys and expert witnesses who present their own evidence. Often that evidence takes the form of consumer surveys conducted by an expert witness hired by a party, which can be <a href="https://digitalcommons.law.uga.edu/glr/vol53/iss2/5">susceptible to manipulation</a> – for example, through the use of leading questions. Not surprisingly, plaintiffs are known to present surveys finding that two trademarks are similar, while defendants present competing surveys showing they are different.</p>
<p>This unfortunate situation arises largely because there is <a href="https://ssrn.com/abstract=3135260">no legal gold standard</a> about what types of background information survey respondents should receive, how the questions should be phrased and what criteria of “similarity” should be followed – all factors that can change the results substantially. For example, parties could include instructions on how respondents should evaluate similarity.</p>
<p>As a result, judges have developed some degree of cynicism. It is not uncommon that some simply <a href="https://www.casemine.com/judgement/us/5914bdd8add7b049347a4cf3">discard the evidence from both sides</a> and go with their own judgment – which could risk replacing one set of biases with another, despite their best intentions.</p>
<figure class="align-center zoomable">
<a href="https://images.theconversation.com/files/509545/original/file-20230210-28-frhy41.png?ixlib=rb-1.1.0&q=45&auto=format&w=1000&fit=clip"><img alt="Functional magnetic resonance image of brain, showing activity in the areas of the brain involved in repetition suppression" src="https://images.theconversation.com/files/509545/original/file-20230210-28-frhy41.png?ixlib=rb-1.1.0&q=45&auto=format&w=754&fit=clip" srcset="https://images.theconversation.com/files/509545/original/file-20230210-28-frhy41.png?ixlib=rb-1.1.0&q=45&auto=format&w=600&h=274&fit=crop&dpr=1 600w, https://images.theconversation.com/files/509545/original/file-20230210-28-frhy41.png?ixlib=rb-1.1.0&q=30&auto=format&w=600&h=274&fit=crop&dpr=2 1200w, https://images.theconversation.com/files/509545/original/file-20230210-28-frhy41.png?ixlib=rb-1.1.0&q=15&auto=format&w=600&h=274&fit=crop&dpr=3 1800w, https://images.theconversation.com/files/509545/original/file-20230210-28-frhy41.png?ixlib=rb-1.1.0&q=45&auto=format&w=754&h=344&fit=crop&dpr=1 754w, https://images.theconversation.com/files/509545/original/file-20230210-28-frhy41.png?ixlib=rb-1.1.0&q=30&auto=format&w=754&h=344&fit=crop&dpr=2 1508w, https://images.theconversation.com/files/509545/original/file-20230210-28-frhy41.png?ixlib=rb-1.1.0&q=15&auto=format&w=754&h=344&fit=crop&dpr=3 2262w" sizes="(min-width: 1466px) 754px, (max-width: 599px) 100vw, (min-width: 600px) 600px, 237px"></a>
<figcaption>
<span class="caption">Brain scans could provide information that descriptions of personal experience can’t. This image shows activity in the areas of the brain specializing in processing visual objects. Signals from these brain regions could provide measures of visual similarity less susceptible to biases in self-reports.</span>
<span class="attribution"><a class="source" href="https://doi.org/10.1126/sciadv.abo1095">Zhihao Zhang et al./Science Advances</a>, <a class="license" href="http://creativecommons.org/licenses/by-nc/4.0/">CC BY-NC</a></span>
</figcaption>
</figure>
<h2>Asking the brain, not the person</h2>
<p>Neuroscience may provide a way out of the dilemma: What if courts measured perceived similarity directly from the brain, instead of asking people to describe what they think?</p>
<p>To test this, we leveraged a well-known phenomenon of the brain called <a href="https://doi.org/10.1098/rstb.2015.0355">repetition suppression</a>. When the brain sees or hears the same thing over and over again, its response to the repeated stimulus becomes weaker each time, as if it’s losing interest or doesn’t find the information as important. </p>
<p>Imagine you hear a really loud noise and your brain responds by triggering a fear response. But if you hear that same loud noise over and over again, your brain will start to get used to it and you won’t feel as scared anymore. This repetition suppression is thought to help the brain focus better on new or important information. Scientists have seen this happening in <a href="https://doi.org/10.1098/rstb.2015.0355">different parts of the brain</a>, including those that process sight, sound, attention and memory.</p>
<p>In <a href="https://doi.org/10.1126/sciadv.abo1095">our experiment</a>, we rapidly showed participants pairs of images consisting of a target brand (such as “Reese’s”) and a supposed copycat (such as “Reese’s Sticks”) and used MRI scanners to examine activity in the part of the brain that processes visual objects.</p>
<p>Given repetition suppression, we would expect a maximum amount of response reduction if the second brand is exactly the same as the first one, minimum reduction if the two are completely different and somewhere in between if they are somewhat similar. By measuring the degree of response reduction, we could then determine how similar, in the brain’s perspective, the two brands are.</p>
<p>This approach provides the important benefit of bypassing the need to ask people to judge how similar they find two brands, or defining what it means to be similar, which can be highly contentious in trademark lawsuits. A person might not even be conscious of the brain’s repetition suppression response.</p>
<p>Across the whole set of brands we tested, we compared the neuroimaging results against the results of surveys designed to favor the plaintiff, to favor the defendant or to be more neutral. We found that the brain-based measure can reliably pick out the more neutral survey results, supporting the idea that brain scans could improve the quality of legal evidence in these cases.</p>
<figure>
<iframe width="440" height="260" src="https://www.youtube.com/embed/cT4W-DE9mZ4?wmode=transparent&start=0" frameborder="0" allowfullscreen=""></iframe>
<figcaption><span class="caption">There are ongoing ethical and practical questions surrounding the use of neuroscience in the courts.</span></figcaption>
</figure>
<h2>Applying neuroscience to legal problems</h2>
<p>It is crucial to note that looking into the brain doesn’t mean a legal decision automatically results from such data. Our method provides a better ruler to measure similarity, but it still falls on the judge to determine where to draw the line for infringement. Neuroimaging is also costlier than consumer surveys and can’t easily be done on as large a sample of people.</p>
<p>Interdisciplinary discussions and a better understanding of neuroimaging techniques are necessary before broader uses can be integrated into the legal system. The courts play a crucial role in deciding when new insights from neuroimaging <a href="https://www.law.cornell.edu/wex/daubert_standard">should be considered in a case</a> and how they should influence its outcome. Therefore, it is becoming increasingly important for judges and lawyers to have a working knowledge of neuroscientific techniques.</p>
<p>Our approach also opens the door to the possibility of applying neuroscience to a variety of legal cases centering on the “reasonable person,” such as copyright infringement, obscenity and negligence. More broadly, it offers a novel perspective on the burgeoning field of <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=2280500">neurolaw</a>, which seeks to refine and reform legal thinking using insights from neuroscience.</p>
<p>Most existing work in law and neuroscience focuses on criminal culpability, or evaluating someone’s mental state while making a certain action. But little attention has been paid to seemingly more mundane questions in civil law that could arguably have an even broader impact on people’s everyday lives. We believe that broadening the ways neuroscience can contribute to the law could help improve legal decision-making.</p><img src="https://counter.theconversation.com/content/199465/count.gif" alt="The Conversation" width="1" height="1" />
<p class="fine-print"><em><span>Zhihao Zhang is listed as an inventor on a provisional patent application related to the findings discussed in this article.</span></em></p>How do you determine whether one brand is similar enough to another to infringe on its trademark? Researchers propose that comparing brain scans could be an option.Zhihao Zhang, Assistant Professor of Business Administration, University of VirginiaLicensed as Creative Commons – attribution, no derivatives.tag:theconversation.com,2011:article/1947892022-11-23T20:11:14Z2022-11-23T20:11:14ZElon Musk’s Twitter Blue fiasco: Governments need to better regulate how companies use trademarks<figure><img src="https://images.theconversation.com/files/496631/original/file-20221122-24-vyw4qt.jpg?ixlib=rb-1.1.0&rect=0%2C22%2C5065%2C3002&q=45&auto=format&w=496&fit=clip" /><figcaption><span class="caption">We often trust corporate logos and symbols without necessarily understanding the legal statutes that govern them.</span> <span class="attribution"><span class="source">(Shutterstock)</span></span></figcaption></figure><p>Until recently, Twitter’s blue checkmark logo was (for better or worse) a trusted mark of authenticity. But under the façade of democratizing the platform, Elon Musk allowed the blue checkmark to be purchased by anyone — <a href="https://theconversation.com/impersonation-and-parody-shitposters-satirically-mock-elon-musks-chaotic-twitter-takeover-194503">with unsurprisingly chaotic results</a>.</p>
<p>Impersonators soon made use of the blue checkmark, with negative consequences for those brands, companies and public figures who had their Twitter accounts impersonated. </p>
<figure class="align-right zoomable">
<a href="https://images.theconversation.com/files/496635/original/file-20221122-12-vyw4qt.png?ixlib=rb-1.1.0&q=45&auto=format&w=1000&fit=clip"><img alt="The twitter verification symbol: a blue circle with a white tick in the middle." src="https://images.theconversation.com/files/496635/original/file-20221122-12-vyw4qt.png?ixlib=rb-1.1.0&q=45&auto=format&w=237&fit=clip" srcset="https://images.theconversation.com/files/496635/original/file-20221122-12-vyw4qt.png?ixlib=rb-1.1.0&q=45&auto=format&w=600&h=500&fit=crop&dpr=1 600w, https://images.theconversation.com/files/496635/original/file-20221122-12-vyw4qt.png?ixlib=rb-1.1.0&q=30&auto=format&w=600&h=500&fit=crop&dpr=2 1200w, https://images.theconversation.com/files/496635/original/file-20221122-12-vyw4qt.png?ixlib=rb-1.1.0&q=15&auto=format&w=600&h=500&fit=crop&dpr=3 1800w, https://images.theconversation.com/files/496635/original/file-20221122-12-vyw4qt.png?ixlib=rb-1.1.0&q=45&auto=format&w=754&h=628&fit=crop&dpr=1 754w, https://images.theconversation.com/files/496635/original/file-20221122-12-vyw4qt.png?ixlib=rb-1.1.0&q=30&auto=format&w=754&h=628&fit=crop&dpr=2 1508w, https://images.theconversation.com/files/496635/original/file-20221122-12-vyw4qt.png?ixlib=rb-1.1.0&q=15&auto=format&w=754&h=628&fit=crop&dpr=3 2262w" sizes="(min-width: 1466px) 754px, (max-width: 599px) 100vw, (min-width: 600px) 600px, 237px"></a>
<figcaption>
<span class="caption">Twitter’s blue checkmark informs users that accounts are verified as authentic. The sale of verifications led to widespread impersonations on Twitter.</span>
<span class="attribution"><span class="source">(Shutterstock)</span></span>
</figcaption>
</figure>
<p>After a <a href="https://twitter.com/LillyPad/status/1590813806275469333?s=20&t=H1Zo_uqCn3i4OcQGhbOrQw">Twitter Blue account impersonated pharmaceutical company Eli Lilly</a> and announced that insulin would be free, the pharmaceutical giant <a href="https://www.thestar.com/business/technology/2022/11/11/eli-lilly-loses-billions-in-market-cap-after-verified-twitter-impostor-promises-free-insulin.html">lost over US $15 billion in market cap</a>. This shines a light on a greater problem in our society: how we trust logos without necessarily understanding the standards or quality behind them.</p>
<p>Musk’s Twitter Blue campaign capitalized on users’ trust and profited from it. The decision highlights the larger problem of consumers relying on logos that appear to be trustworthy, but really provide little to no substantiation. It calls out for better regulation of how social media platforms manage misinformation and disinformation. </p>
<h2>Logos communicate information that consumers trust</h2>
<p>Logos are used not just to signal the brand behind a product (like Nike’s swoosh or Starbucks’ siren), they also tell us things about a product, like whether it is certified vegan or gluten free. We don’t necessarily understand what logos, like verification badges or <a href="https://www.cineplex.com/global/health-and-safety">Cineplex’s VENUESAFE</a> logo, are claiming to certify or how, yet we trust them to mean a certain level of safety and authenticity. This trust comes in many forms and can be earned — or acquired — in lots of ways. </p>
<p>Sometimes we trust a logo simply because it uses aesthetic attributes that implicitly signal trustworthiness to us: for example, they might appear like a seal, or <a href="https://www.msc.org/en-us">checkmark</a>, or make use of words like “verified,” “<a href="https://gfco.org/">certified</a>” or “guaranteed.”</p>
<p>Sometimes we trust them because they have websites that explain to us in clear terms the <a href="https://fsc.org/en/what-the-fsc-labels-mean">exclusivity of being able to use the mark</a>. Other times, we simply trust the brand or platform making use of those logos and let their <a href="https://www.sustainability.nespresso.com/">goodwill transfer</a> to the symbol in question. </p>
<p>Elon Musk allowing verification badges to simply be bought by anyone is an example of how powerful and misguided trust in logos can be. When people see a logo that seems to verify something, they often make assumptions both about what quality is being promised and the legitimacy of that promise. </p>
<h2>From verification badges to loyalty checkmarks</h2>
<p>Musk purported to be irked by the “exclusivity” of verification marks. Twitter’s <a href="https://help.twitter.com/en/managing-your-account/legacy-verification-policy">previous verification program</a> began to affirm the identity of some Twitter users <a href="https://blog.twitter.com/official/en_us/a/2009/not-playing-ball.html">in response to problems with impersonation</a>. </p>
<p><a href="https://twitter.com/elonmusk/status/1587498907336118274">He tweeted</a>: “Twitter’s current lords & peasants system for who has or doesn’t have a blue checkmark is bullshit. Power to the people! Blue for $8/month.” </p>
<p>But, “<a href="https://www.vox.com/recode/2022/11/4/23438917/twitter-verifications-blue-check-elon-musk">verification to anyone willing to pay for it ignores the reasons the existing system was put in place and potentially undermines the overall trust in Twitter that it’s supposed to provide</a>.” Allowing users to buy the blue checkmark logo undermined the trustworthiness it had earned. The same logo suddenly signalled two very different kinds of information and caused confusion. </p>
<p><div data-react-class="Tweet" data-react-props="{"tweetId":"1587498907336118274"}"></div></p>
<p>It didn’t matter that Musk had announced that the blue checkmark’s meaning had been <a href="https://www.theguardian.com/technology/2022/nov/11/twitter-blue-check-verification-impostor-accounts">effectively corrupted</a>. Information being available to consumers isn’t always a cure-all in the face of reliance and trust. </p>
<h2>Not all logos are regulated equally</h2>
<p>The use of these symbols is <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3908682">regulated to varying degrees</a>. While consumer protection prevents us from being outright lied to or misled, these marks are insidious. They don’t necessarily guarantee us anything, yet they command our trust through the implicit standards promised. </p>
<p>Our legal system does not provide substantive oversight into these checkmarks, nor does it adequately recognize the role trust plays in consumers reliance of them. This can cause problems. Two weeks ago, it caused problems for Eli Lilly. </p>
<p>Previously, it has caused problems for those communities for whom empty certification marks <a href="https://www.washingtonpost.com/business/2019/10/23/chocolate-companies-say-their-cocoa-is-certified-some-farms-use-child-labor-thousands-are-protected-forests/">promise to help, but does not</a>. It also causes problems for the consumers who trust an ultimately untrustworthy source. </p>
<figure class="align-center zoomable">
<a href="https://images.theconversation.com/files/496639/original/file-20221122-15-8o6d0e.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=1000&fit=clip"><img alt="The Twitter symbol on the company's headquarters in San Francisco." src="https://images.theconversation.com/files/496639/original/file-20221122-15-8o6d0e.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=754&fit=clip" srcset="https://images.theconversation.com/files/496639/original/file-20221122-15-8o6d0e.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=600&h=400&fit=crop&dpr=1 600w, https://images.theconversation.com/files/496639/original/file-20221122-15-8o6d0e.jpg?ixlib=rb-1.1.0&q=30&auto=format&w=600&h=400&fit=crop&dpr=2 1200w, https://images.theconversation.com/files/496639/original/file-20221122-15-8o6d0e.jpg?ixlib=rb-1.1.0&q=15&auto=format&w=600&h=400&fit=crop&dpr=3 1800w, https://images.theconversation.com/files/496639/original/file-20221122-15-8o6d0e.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=754&h=503&fit=crop&dpr=1 754w, https://images.theconversation.com/files/496639/original/file-20221122-15-8o6d0e.jpg?ixlib=rb-1.1.0&q=30&auto=format&w=754&h=503&fit=crop&dpr=2 1508w, https://images.theconversation.com/files/496639/original/file-20221122-15-8o6d0e.jpg?ixlib=rb-1.1.0&q=15&auto=format&w=754&h=503&fit=crop&dpr=3 2262w" sizes="(min-width: 1466px) 754px, (max-width: 599px) 100vw, (min-width: 600px) 600px, 237px"></a>
<figcaption>
<span class="caption">The Twitter symbol on the company’s headquarters in San Francisco. Corporate brands are protected through trademark laws irrespective of how companies behave. Maybe it is time we reconsider that.</span>
<span class="attribution"><span class="source">(AP Photo/Jeff Chiu)</span></span>
</figcaption>
</figure>
<p>Logos are essential to brand identity and are extraordinarily valuable assets to their corporate owners. Consequently, <a href="https://theconversation.com/big-tobaccos-opposition-to-plain-packaging-is-plain-spin-102874">brands do not take kindly to having their ability to use their logos limited</a>. Our legal system needs to do better and govern logos through trademark law in a way that more realistically reflects the role they play. </p>
<p>Brands need to be held accountable. They are protected through trademark laws irrespective of how they behave. Maybe it is time we reconsider that. </p>
<p>Musk turning Twitter’s verification badge into a subscription service was wrong, and <a href="https://www.vox.com/platform/amp/recode/2022/10/1/23381257/elon-musk-texts-twitter-billionaires">likely strategically motivated</a>. Musk has recently announced that the Blue Verified will now be re-launched on Nov. 29 to ensure it is “<a href="https://twitter.com/elonmusk/status/1592658210917609472?s=20&t=lB4n439Ey12CM6TJrrUimw">rock solid</a>.” </p>
<p>At the end of the day, the blue checkmark will only be as trustworthy as the brand that stands behind it. Right now, that brand is Elon Musk.</p>
<p><a href="https://theconversation.com/topics/social-media-and-society-125586" target="_blank"><img src="https://images.theconversation.com/files/479539/original/file-20220817-20-g5jxhm.png?ixlib=rb-1.1.0&q=45&auto=format&w=754&h=144&fit=crop&dpr=1" width="100%"></a></p><img src="https://counter.theconversation.com/content/194789/count.gif" alt="The Conversation" width="1" height="1" />
<p class="fine-print"><em><span>Alexandra Mogyoros has received funding from the Pierre Elliott Trudeau Foundation and the Social Sciences and Humanities Research Council. </span></em></p>Elon Musk allowing verification badges to simply be bought by anyone is an example of how powerful and misguided trust in logos can be.Alexandra Mogyoros, Assistant Professor in law researching at the intersection of brands, trust, intellectual property and expression, Toronto Metropolitan UniversityLicensed as Creative Commons – attribution, no derivatives.tag:theconversation.com,2011:article/1917232022-10-04T16:14:02Z2022-10-04T16:14:02ZLindt’s chocolate bunny trademark win shows shape matters to consumers<p>In a move sure to upset chocoholics everywhere, discount supermarket Lidl was recently told to destroy its stocks of chocolate bunnies. The cull was ordered by a Swiss court that decided Lidl’s bunny was too close to confectioner Lindt’s iconic chocolate rabbit. </p>
<p>Lidl was sued by Swiss confectioner Lindt & Sprüngli for selling a golden foil-wraped chocolate bunny that Lindt felt looked very similar to its own product. The Swiss federal supreme court <a href="https://www.bger.ch/ext/eurospider/live/fr/php/aza/http/index.php?highlight_docid=aza%3A%2F%2Faza://30-08-2022-4A_587-2021&lang=de&zoom=&type=show_document">ruled</a> that the Lindt Gold Bunny is a valid registered “shape” trademark. As such, other companies can now be barred from replicating this shape when selling chocolate products in Switzerland. </p>
<p>Lindt has been selling a milk chocolate bunny wrapped in gold-coloured foil with a red ribbon and a bell around its neck since 1952. It had registered two 3D trademarks for the product in Switzerland, one in black and white and the other in gold, brown, red. </p>
<p>This case hinged on the distinctiveness of the shape of Lindt bunnies. European <a href="https://guidelines.euipo.europa.eu/1803468/1785874/trade-mark-guidelines/2-1-shape-marks">law says</a> that companies can only register something as a trademark – and therefore protect it from imitation – if it allows consumers to distinguish the specific product from those of competitors. </p>
<p>But Lidl argued that the shape of Lindt bunnies is commonplace and non-distinctive, so it should not qualify for registration. The Swiss court <a href="http://trademarkblog.kluweriplaw.com/2022/09/30/swiss-federal-supreme-court-confirms-trademark-protection-for-the-lindt-gold-bunny/">based its decision</a> that the Lindt bunny shape is a valid trademark on consumer surveys that show shoppers unequivocally associate that shape with Lindt.</p>
<p>This is not the first time the Lindt bunny has ended up in court. Heilemann, a competitor in Germany, started selling golden bunnies in 2018 causing the Swiss chocolatier to <a href="https://www.swissinfo.ch/eng/legal-victory-for-lindt-in-german-chocolate-bunny-case/46826718">sue for trademark infringement</a>. </p>
<p>Lindt’s strategy was slightly different in this case, focusing on protecting the colour of the packaging rather than its shape. It claimed that the specific golden shade of the foil wrapping is distinctive enough to be protected as a trademark with respect to chocolate bunnies. </p>
<p>The German court <a href="https://www.thebrandprotectionblog.com/choc-it-out-lindts-golden-bunny-granted-trade-mark-recognition-in-the-eu/">agreed</a>, again relying on a consumer survey to which 70% of respondents said the golden shade in question called to mind Lindt’s products. The court took into account Lindt’s extensive and successful use of this shade and its acquired distinctive character.</p>
<p>The Lindt bunny hasn’t always come out on top, however. An earlier 2012 <a href="https://curia.europa.eu/juris/document/document.jsf?docid=123102&doclang=en">ruling</a> by Europe’s highest court <a href="https://www.bbc.co.uk/news/world-europe-18198110">found</a> that the combination of the Lindt Gold Bunny shape and colours (including the pleated red ribbon and attached bell) were not sufficiently different from the way other chocolate products are wrapped, especially rabbits, to warrant an EU trademark.</p>
<h2>The shape of things to come</h2>
<p>Trademark disputes over the shape of products occur frequently. In many cases though, courts find shapes to be too commonly used in a specific market to be protected as trademarks.</p>
<p>Kit Kat chocolate bars, for example, were the subject of efforts by food producer Nestlé to trademark its four-fingered 3D shape. In the UK, confectioner Cadbury challenged this attempt, successfully claiming that the shape <a href="https://www.judiciary.uk/wp-content/uploads/2017/05/nestle-v-cadbury-20170517.pdf">lacked</a> distinctive character. A similar <a href="https://www.keystonelaw.com/keynotes/nestle-loses-its-european-trade-mark-for-the-shape-of-the-kitkat">decision</a> was reached by European courts. </p>
<p>Drinks giant Coca Cola even failed to trademark a recent update of its coke <a href="https://curia.europa.eu/jcms/upload/docs/application/pdf/2016-02/cp160016en.pdf">bottle</a> because the shape did not produce a clear and unmistakable impression of exclusively being linked with the US beverage giant. Of course, the <a href="https://trademarks.justia.com/720/69/coca-cola-72069873.html">original Coca Cola bottle shape</a> is widely associated with the drinks company and is therefore already registered as a trademark in many countries. </p>
<p>Its attempt to register an updated version in plastic, metal and glass as a trademark was rejected in 2014. EU courts said the new version was “devoid of any distinctive character” and not, as Coke tried to argue, “a natural evolution of its famous iconic bottle” (pictured below). </p>
<figure class="align-center ">
<img alt="Classic Coca-cola bottle, white background" src="https://images.theconversation.com/files/488067/original/file-20221004-24-f3ivtm.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=754&fit=clip" srcset="https://images.theconversation.com/files/488067/original/file-20221004-24-f3ivtm.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=600&h=908&fit=crop&dpr=1 600w, https://images.theconversation.com/files/488067/original/file-20221004-24-f3ivtm.jpg?ixlib=rb-1.1.0&q=30&auto=format&w=600&h=908&fit=crop&dpr=2 1200w, https://images.theconversation.com/files/488067/original/file-20221004-24-f3ivtm.jpg?ixlib=rb-1.1.0&q=15&auto=format&w=600&h=908&fit=crop&dpr=3 1800w, https://images.theconversation.com/files/488067/original/file-20221004-24-f3ivtm.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=754&h=1141&fit=crop&dpr=1 754w, https://images.theconversation.com/files/488067/original/file-20221004-24-f3ivtm.jpg?ixlib=rb-1.1.0&q=30&auto=format&w=754&h=1141&fit=crop&dpr=2 1508w, https://images.theconversation.com/files/488067/original/file-20221004-24-f3ivtm.jpg?ixlib=rb-1.1.0&q=15&auto=format&w=754&h=1141&fit=crop&dpr=3 2262w" sizes="(min-width: 1466px) 754px, (max-width: 599px) 100vw, (min-width: 600px) 600px, 237px">
<figcaption>
<span class="caption">The iconic Coca-Cola bottle shape is contoured and fluted, unlike modern updates.</span>
<span class="attribution"><a class="source" href="https://www.shutterstock.com/image-photo/chisinau-moldova-august-28-2016-classic-487799245">AlenKadr / Shutterstock</a></span>
</figcaption>
</figure>
<p>This is obviously not to say that the shapes of products are difficult to protect. Several have been registered in different countries. </p>
<p>For example, the pyramid shape of <a href="https://www.ft.com/content/16351d98-46d9-11e7-8d27-59b4dd6296b8">Toblerone</a>, believed to be a replica of the Alps’ <a href="https://www.zermatt.ch/en/matterhorn">Matterhorn mountain</a>, is a registered trademark in various jurisdictions and is owned by the US company Mondelez. This was enforced in the UK several years ago when a competitor launched a similarly shaped chocolate bar it called <a href="https://www.dezeen.com/2017/07/18/poundland-mountain-inspired-chocolate-bar-sparks-legal-battle-toblerone-design/">Twin Peaks</a>.</p>
<p>The familiar shape of the <a href="https://www.worldtrademarkreview.com/article/shape-of-ferrero-rocher-chocolate-and-packages-registered-3d-marks">Ferrero Rocher</a> chocolate praline and four of its transparent packaging types have also been successfully registered as trademarks in several countries. This is because the shape is well-known to consumers (again, as revealed by surveys) and the company has a <a href="https://youtu.be/4P-nZZkQqTc">long history</a> of using imagery of these items to distinguish its products.</p>
<h2>Protecting consumers</h2>
<p>Non-distinctive shapes usually cannot be registered as trademarks because the law needs to protect the right of all companies to use shapes that are common. Only signs and symbols that help consumers identify products can be registered and therefore monopolised by one firm. </p>
<p>On the other hand, shapes that have been used regularly and for a long time by a variety of manufacturers should not be protected because they do nothing to help people make educated purchase choices.</p>
<p>Also, the monopoly offered to trademark owners can be perpetual. Registrations can be renewed every ten years as long as fees are paid. So, being able to forever monopolise common product shapes such as chocolate bunnies could have a negative and lasting impact on competition, although decisions can be subject to legal challenge.</p>
<p>Trademark disputes about product shapes will keep happening and courts should continue to use consumer surveys to come to decisions about who, if anyone, owns a certain product shapes. As we have seen, this won’t prevent judges from different jurisdictions from reaching different decisions over the same cases, but it will at least keep consumer protection uppermost in mind when making these judgements.</p><img src="https://counter.theconversation.com/content/191723/count.gif" alt="The Conversation" width="1" height="1" />
<p class="fine-print"><em><span>The authors do not work for, consult, own shares in or receive funding from any company or organisation that would benefit from this article, and have disclosed no relevant affiliations beyond their academic appointment.</span></em></p>Court decision protects trademarks that help consumers make informed choices.Enrico Bonadio, Reader in Intellectual Property Law, City, University of LondonAlina Trapova, Assistant Professor in Law and Autonomous Systems, University of NottinghamLicensed as Creative Commons – attribution, no derivatives.tag:theconversation.com,2011:article/1792602022-03-18T11:23:05Z2022-03-18T11:23:05ZHow Russia is using intellectual property as a war tactic<figure><img src="https://images.theconversation.com/files/452883/original/file-20220317-25-1hr7nnr.jpg?ixlib=rb-1.1.0&rect=667%2C171%2C3418%2C2548&q=45&auto=format&w=496&fit=clip" /><figcaption><span class="caption">
</span> <span class="attribution"><a class="source" href="https://www.shutterstock.com/image-photo/03052022russiarussian-president-vladimir-putin-speaks-during-2132517573">ApostolisBril / Shutterstock</a></span></figcaption></figure><p>As part of its deadly assault on Ukraine, Russia has taken the rare step to use intellectual property rights as a war tactic. In early March, the Russian government <a href="http://publication.pravo.gov.ru/Document/View/0001202203070005?index=0&rangeSize=1">issued a decree</a> saying that Russian companies are no longer obliged to compensate owners of patents, utility models and industrial designs from <a href="http://publication.pravo.gov.ru/Document/View/0001202203070001?index=1&rangeSize=1">“unfriendly” countries</a>. These are the western states who have issued sanctions against Russia, including the UK and US. </p>
<p>This means that Russian businesses can use intellectual property, such as patented inventions or fashion designs, without having to pay or seek the consent of the rights holders. Affected companies cannot enforce their patents and designs against Russian imitators.</p>
<p>This effectively legalises intellectual piracy in a country already known for failing to adequately protect intangible assets. Last year, <a href="https://ustr.gov/about-us/policy-offices/press-office/press-releases/2021/april/ustr-releases-annual-special-301-report-intellectual-property-protection#:%7E:text=Nine%20countries%20%E2%80%94%20Argentina%2C%20Chile%2C,engagement%20during%20the%20coming%20year">Russia was added</a> to a US government “priority watch list” of countries which do not sufficiently protect US intellectual properties.</p>
<p>Vladimir Putin’s move is clearly a reaction to the west’s <a href="https://www.bbc.co.uk/news/world-europe-60125659">economic sanctions</a> and suspension of Russia’s <a href="https://www.politico.eu/article/remove-russia-trade-privilege-what-need-know/">trade privileges</a>. It is also an answer to many multinational companies’ decisions to <a href="https://theconversation.com/shell-bp-and-exxonmobil-have-done-business-in-russia-for-decades-heres-why-theyre-leaving-now-178269">cease doing business</a> with Russian companies. </p>
<p>Sanctions and boycotts have massively affected the Russian economy to the extent that the country is now <a href="https://theconversation.com/the-cost-of-war-how-russias-economy-will-struggle-to-pay-the-price-of-invading-ukraine-178826">on the verge of bankruptcy</a> with interest <a href="https://www.wsj.com/livecoverage/russia-ukraine-latest-news-2022-02-28/card/russia-s-central-bank-more-than-doubles-interest-rates-in-response-to-sanctions-p7602Gbo1YpFdLBardRo">rates having doubled</a>. The stock market has remained <a href="https://markets.businessinsider.com/news/stocks/russia-stock-market-closed-bonds-default-sovereign-debt-deadline-2022-3">closed</a> for weeks and the rouble has <a href="https://www.economist.com/finance-and-economics/2022/02/28/the-roubles-collapse-compounds-russias-isolation">fallen dramatically</a>.</p>
<h2>Unprecedented attack on intellectual property</h2>
<p>The suspension of intellectual property rights as an economic weapon in the context of a conflict is unprecedented, at least in recent decades. Historical examples date back to the first world war, when the US introduced the <a href="https://uscode.house.gov/view.xhtml?path=/prelim@title50/chapter53&edition=prelim">Trading With the Enemy Act</a>. This act seized copyright and patents owned by enemy countries, including the patent to aspirin, famously a German invention.</p>
<p>Following the war, the Aspirin trademark owned by the German pharmaceutical company Bayer was <a href="http://www.ipdigit.eu/2011/10/bayers-aspirin-a-lasting-success-without-patent-and-trademark-protection/?pdf=1059">given up to</a> the US, France, UK and Russia, as part of Germany’s war reparations agreed in the Treaty of Versailles. </p>
<p>Russian officials have <a href="https://tass.ru/ekonomika/13982403">hinted</a> that other intellectual property rights owned by western countries may be soon restricted, including software and trademarks. This could allow local entrepreneurs to appropriate and exploit – without permission and for free – brands such as <a href="https://nypost.com/2022/03/11/russia-could-reopen-mcdonalds-stores-by-scrapping-trademark-protections-expert/">McDonald’s</a>. One Russian restaurant chain has even recently adopted, and applied to register locally, a <a href="https://www.washingtonpost.com/world/2022/03/18/uncle-vanya-russian-mcdonalds-replacement-logo">logo</a> very similar to the famous golden arches.</p>
<figure class="align-center ">
<img alt="A McDonald's restaurant in Russia, with the golden arches and company name in Cyrillic." src="https://images.theconversation.com/files/453010/original/file-20220318-21-kq2gkt.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=754&fit=clip" srcset="https://images.theconversation.com/files/453010/original/file-20220318-21-kq2gkt.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=600&h=400&fit=crop&dpr=1 600w, https://images.theconversation.com/files/453010/original/file-20220318-21-kq2gkt.jpg?ixlib=rb-1.1.0&q=30&auto=format&w=600&h=400&fit=crop&dpr=2 1200w, https://images.theconversation.com/files/453010/original/file-20220318-21-kq2gkt.jpg?ixlib=rb-1.1.0&q=15&auto=format&w=600&h=400&fit=crop&dpr=3 1800w, https://images.theconversation.com/files/453010/original/file-20220318-21-kq2gkt.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=754&h=503&fit=crop&dpr=1 754w, https://images.theconversation.com/files/453010/original/file-20220318-21-kq2gkt.jpg?ixlib=rb-1.1.0&q=30&auto=format&w=754&h=503&fit=crop&dpr=2 1508w, https://images.theconversation.com/files/453010/original/file-20220318-21-kq2gkt.jpg?ixlib=rb-1.1.0&q=15&auto=format&w=754&h=503&fit=crop&dpr=3 2262w" sizes="(min-width: 1466px) 754px, (max-width: 599px) 100vw, (min-width: 600px) 600px, 237px">
<figcaption>
<span class="caption">McDonald’s, perhaps the most famous western trademarks, now at risk of intellectual piracy in Russia.</span>
<span class="attribution"><a class="source" href="https://www.shutterstock.com/image-photo/krasnoyarsk-russia-march-10-2022-closed-2134722073">Al.geba / Shutterstock</a></span>
</figcaption>
</figure>
<p>The sanctions have also led a Russian judge to dismiss a copyright and trademark infringement lawsuit brought by the British company that produces animated series Peppa Pig. Andrei Slavinsky <a href="https://www.independent.co.uk/news/world/europe/peppa-pig-russia-trademark-ukraine-b2034842.html">said in court</a> that the “unfriendly actions of the United States of America and affiliated foreign countries” influenced his decision. </p>
<p>Ukraine, for its part, has not been inactive in this intellectual property battle. Its ministry of defence <a href="https://www.scmagazine.com/analysis/breach/in-a-first-ukraine-leaks-russian-intellectual-property-as-act-of-war">recently</a> hacked and leaked confidential documents it claimed to have taken from a Russian nuclear power station.</p>
<h2>Does it violate international law?</h2>
<p>Russia’s suspension of patents and other intellectual property rights owned by western companies may violate <a href="https://www.wto.org/english/tratop_e/trips_e/intel2_e.htm">international treaties</a> which protect these assets at global level. All countries of the World Trade Organization (WTO) need to respect these laws and guarantee that foreign businesses can enforce intellectual property rights against imitators.</p>
<p>Countries damaged by the Russian measure may bring Russia to a WTO court and ask for additional sanctions to be imposed. This would again hit Russian businesses, especially those which rely on brands and patented technology, as well as the creative industry sector.</p>
<p>The only way Russia could justify the measure would be to rely on a <a href="http://www.cptech.org/ip/texts/trips/73.html">security exception</a> made available by the WTO itself. This exception allows countries to take any action they consider necessary to protect their essential security interests in times of war. But it has never been invoked by any state in the context of an armed conflict, and therefore never tested before the WTO judges.</p>
<p>If Russia is expelled from the WTO club, as has been <a href="https://www.washingtonpost.com/politics/2022/03/11/russia-wto-penalize-ukraine-conflict/">proposed</a>, that would, paradoxically, insulate it from global intellectual property challenges. No country would be able to bring Russia before a court of an organisation it is no longer a member of.</p>
<p>These are predictions of what could happen if the war continues. It goes without saying that a prompt end to the conflict may instead relax the tension between the west and Russia, and put an end to the current intellectual property battle.</p><img src="https://counter.theconversation.com/content/179260/count.gif" alt="The Conversation" width="1" height="1" />
<p class="fine-print"><em><span>The authors do not work for, consult, own shares in or receive funding from any company or organisation that would benefit from this article, and have disclosed no relevant affiliations beyond their academic appointment.</span></em></p>The Russian government has essentially legalised intellectual piracy as a response to sanctions.Enrico Bonadio, Reader in Intellectual Property Law, City, University of LondonAlina Trapova, Assistant Professor in Law and Autonomous Systems, University of NottinghamLicensed as Creative Commons – attribution, no derivatives.tag:theconversation.com,2011:article/1764222022-02-08T10:04:20Z2022-02-08T10:04:20ZThe case of the caterpillar cakes: why legal protection for a shape is so hard to come by<p>UK retailers Marks and Spencer (M&S) and Aldi have finally <a href="https://www.theguardian.com/business/2022/feb/01/marks-spencer-and-aldi-call-truce-in-colin-the-caterpillar-cake-war">called a truce</a> to the trademark-based legal spat pitting their caterpillar cakes, Colin and Cuthbert, against each other. While details of the settlement have not been made public, Aldi’s Cuthbert will <a href="https://www.theguardian.com/business/2022/feb/01/marks-spencer-and-aldi-call-truce-in-colin-the-caterpillar-cake-war">not reportedly</a> return in quite the same form. As Aldi tweeted, upon announcing that an agreement had been reached:</p>
<p><div data-react-class="Tweet" data-react-props="{"tweetId":"1488529958129524746"}"></div></p>
<p>Colin the Caterpillar, a roll sponge cake decorated with milk and white chocolate icing and sprinkles, has been an M&S stalwart for more than 30 years. The retailer claims to have sold more than 15 million to date. Since 2011, <a href="https://www.independent.co.uk/extras/indybest/food-drink/colin-caterpillar-cuthbert-aldi-cake-b2005818.html">rival products</a> with similarly alliterative names have appeared: Asda’s Clyde, Tesco’s Curly, Waitrose’s Cecil, Co-op’s Curious and <a href="https://metro.co.uk/2019/10/05/aldi-selling-cuthbert-caterpillar-cake-yes-ms-knows-10867060/">Cuthbert</a>.</p>
<p>In April 2021, presumably because it was thought that, of all the caterpillar cakes, Cuthbert most closely resembled Colin, M&S launched legal proceedings to protect its intellectual property and get Aldi to remove the product from its shelves. The retailer claimed that the similarity between the two cakes would lead consumers to think that they were of the same standard, thereby allowing Cuthbert to ride on Colin’s coattails. </p>
<p>Companies often seek to protect, <a href="https://www.youtube.com/watch?v=_CM9-4Qrj3I&list=PLij_WrWeezY8lmE7_m35m_LxPm2H3bta0&index=3">as trademarks</a>, certain signs that help them distinguish their products and services from those of their competitors, such as brand names, logos and slogans. Along with patents (which protect innovative technical solutions) and copyright (which protects creative or intellectual works such as books and music), they are a form of intellectual property. </p>
<p>The Colin v Cuthbert dispute hinges specifically on trademarks, because it related to the distinctive characteristics of commercial assets. M&S has held trademarks in the UK in relation to <a href="https://trademarks.ipo.gov.uk/ipo-tmcase/page/Results/1/UK00002499694">Colin’s name</a> and <a href="https://trademarks.ipo.gov.uk/ipo-tmcase/page/Results/1/UK00003509740">green packaging</a> since 2009 and 2020 respectively, but these have not been infringed. </p>
<p>The problem for M&S is that its trademark would probably not extend to the underlying idea of a chocolate roll with a smiley face on it. Securing protection for the shape of a product is <a href="https://doi.org/10.1093/jiplp/jpx028">actually quite difficult</a> in trademark law – not to mention proving that a competitor has presented his goods as those of somebody else.</p>
<p>The <a href="https://www.independent.co.uk/news/business/news/nestle-kit-kat-trade-mark-denied-eu-court-four-finger-chocolate-shape-a7477196.html">four-finger-shaped KitKat</a> chocolate bar and the <a href="https://www.theguardian.com/world/2017/nov/01/black-cab-shape-not-distinctive-enough-to-be-trademark-say-judges">shape of the London taxi</a> are two examples of iconic shapes that have not succeeded. One key reason behind this is that the average consumer doesn’t usually make assumptions about the origin of products on the basis of their shape, or that of their packaging, when other graphic or word elements are absent.</p>
<h2>Passing off</h2>
<p>There have been cases in the UK where shapes and packaging have attracted protection under what jurists refer to as the law of passing off. <a href="https://www.gov.uk/how-to-register-a-trade-mark/unregistered-trade-marks">Passing off</a> offers legal protection against harm to what is termed the “goodwill” of a business. And it can be used to protect unregistered trademarks.</p>
<p>Goodwill here is a <a href="https://heinonline.org/HOL/Page?handle=hein.journals/edinlr13&div=15&g_sent=1&casa_token=oT2yr7CIW7EAAAAA:aUZr8kIEfsPoGbidzl9h1oXNL2899aQaZAJ_qeBbw9qeXo_OZbuf8KPC86e2qRvXFk1BVJOIEuA&collection=journals">legal concept</a>, which refers to a business’s means of attracting people’s custom. It is harmed when a trader suggests – through misdescription on packaging or parasitic copying of a well-known product – that their product or service has some association or connection with another trader, when this is not the case. </p>
<p>In 2015, pop-star Rihanna famously <a href="https://www.judiciary.uk/wp-content/uploads/2015/01/fenty-others-v-arcadia-others1.pdf">won her battle</a> to stop fashion brand Topshop using an unlicensed image of her on a T-shirt. She did so by convincing a judge that customers buying the top would think she had endorsed it. The Court of Appeal ruled that the unauthorised use of her photograph amounted to passing off.</p>
<p>Passing-off claims are notoriously difficult to establish. If someone promotes their bottled drinking water business as “the De Beers of still water”, they may be infringing the De Beers trademark but it is unlikely that a judge would find that they were passing themselves off as connected to De Beers in any commercial sense.</p>
<p>To win a passing-off claim against Aldi, M&S would have essentially had to prove that Colin had built up such a reputation as a signature product – in the same way that Rihanna had done as a music artist and <a href="https://www.judiciary.uk/wp-content/uploads/2015/01/fenty-others-v-arcadia-others1.pdf">style icon</a> – that customers would be able to recognise it without difficulty. The retailer would also have had to prove that Cuthbert was so similar to Colin that consumers, after opening the packaging, would be misled into thinking that the two were somehow associated.</p>
<p>What is more, the fact that so many supermarket chains now have their own version of a caterpillar cake – coming in a variety of sizes and decorative features – would not have helped in establishing that Colin is unique. M&S would have had to prove that in the minds of cake buyers in the UK, the caterpillar has not become a generic shape for cakes.</p>
<p>Further, Aldi’s <a href="https://twitter.com/AldiUK/status/1383076426224705540?s=20&t=px0UuyGf_zbaeoAJgpTcyw">excellent Twitter campaign</a> – and the widespread publicity the lawsuit has attracted – will have also contributed to dispersing any consumer confusion. </p>
<p><div data-react-class="Tweet" data-react-props="{"tweetId":"1383076426224705540"}"></div></p>
<p>Lastly, it would have been difficult for M&S to argue that Aldi’s caterpillar cake had damaged or had the potential to damage the goodwill in Colin – that is, its power to attract and retain buyers of the cake. The market for caterpillar cakes is saturated: there are just so many to choose from. </p>
<p>The agreed settlement between the two parties means there was no court judgement on the facts. The terms of the settlement remain confidential. It is unknown whether liability – that is, blame – was admitted by Aldi for the wrong allegedly suffered by M&S.</p>
<p>Rarely does a party in a settlement walk away thinking, I have won. Typically, there is no winner and no loser in a negotiated resolution. This case will nonetheless have seen both M&S and Aldi benefit from the kind of marketing exposure that money cannot readily buy.</p><img src="https://counter.theconversation.com/content/176422/count.gif" alt="The Conversation" width="1" height="1" />
<p class="fine-print"><em><span>The authors do not work for, consult, own shares in or receive funding from any company or organisation that would benefit from this article, and have disclosed no relevant affiliations beyond their academic appointment.</span></em></p>Trademarking a shape of a product, or proving that a competitor is passing off their product as your own, is not easy. A high-profile settlement, though, is marketing gold.Stavroula Karapapa, Professor of Intellectual Property and Information Law, University of EssexAlexandros Antoniou, Lecturer in Media Law, University of EssexLicensed as Creative Commons – attribution, no derivatives.tag:theconversation.com,2011:article/1453722020-12-08T13:14:58Z2020-12-08T13:14:58ZThe iconic American inventor is still a white male – and that’s an obstacle to race and gender inclusion<figure><img src="https://images.theconversation.com/files/372362/original/file-20201201-19-rbhm6a.jpg?ixlib=rb-1.1.0&rect=0%2C1%2C1024%2C818&q=45&auto=format&w=496&fit=clip" /><figcaption><span class="caption">Thomas Edison remains the poster child of American invention 89 years after his death.</span> <span class="attribution"><a class="source" href="https://www.loc.gov/resource/cph.3c10811/">Underwood & Underwood via the Library of Congress</a></span></figcaption></figure><p>When President Barack Obama <a href="https://www.uspto.gov/learning-and-resources/newsletter/inventors-eye/president-obama-signs-america-invents-act">signed the America Invents Act</a> in 2011, he was surrounded by a group of people of diverse ages, genders and races. The speech he delivered about the legislation, which changed the technical requirements for filing a patent, highlighted this diversity by emphasizing that today anyone can become an inventor in the United States.</p>
<p>Despite Obama’s optimism about women and people of color inventing and patenting the nation’s new and innovative technologies, both groups still lag considerably behind their white male counterparts in <a href="https://www.bbc.com/news/technology-49843990">being recognized as inventors</a> and <a href="https://iwpr.org/publications/equity-in-innovation-women-inventors-and-patents/">owning patents</a>, in the U.S. and globally. Women and people of color possess the same intellectual capacities as their white male counterparts. Yet <a href="https://doi.org/10.1111/ablj.12159">empirical studies</a> consistently show that patent law overwhelmingly rewards white men for their labor and skill. </p>
<p>This is in part because <a href="https://ngcproject.org/statistics">women</a> and <a href="https://www.pewsocialtrends.org/2018/01/09/blacks-in-stem-jobs-are-especially-concerned-about-diversity-and-discrimination-in-the-workplace/">people of color</a> join science, technology, engineering and math (STEM) fields in much lower numbers than white men. In 2017, women made up over half of the workforce, but held only <a href="https://www.catalyst.org/research/women-in-science-technology-engineering-and-mathematics-stem/">29% of STEM jobs</a>. But even women and people of color who go into STEM fields invent and patent far less often than their white male counterparts. </p>
<p>The question is why. </p>
<p>As a researcher who <a href="https://scholar.google.com/citations?user=ugCKmdMAAAAJ&hl=en">studies race, rhetoric and intellectual property law</a>, I can say that the U.S.’s race and gender invention and patent gap results partly from a failure of imagination. The stories that people tell about invention in the U.S. continue to focus on white men – the Benjamin Franklins, Thomas Edisons and Elon Musks – without affording women and people of color the same larger-than-life status. </p>
<p>National myths about inventorship and political barriers to patenting set up women and people of color for failure by normalizing <a href="https://www.pewsocialtrends.org/2018/01/09/women-and-men-in-stem-often-at-odds-over-workplace-equity/">entrenched discrimination</a> even when they join STEM fields.</p>
<h2>The stories we tell about inventors</h2>
<p><a href="https://www.britannica.com/topic/critical-race-theory">Critical race theorists</a> show how legal terms and everyday narratives can look as if they create a level playing field while allowing implicit bias to thrive. In my new book, “<a href="https://www.sup.org/books/title/?id=27831">The Color of Creatorship</a>,” I look at how intellectual property law has evolved racially over 200 years. </p>
<p>Black and brown people are no longer legally prohibited from owning patents and copyrights, as they were in the 1700s and 1800s. However, seemingly colorblind patent and copyright laws continue to practically favor white male inventors and creators by using legal definitions and tests that protect inventions and creations that tend to match Western conceptions and expectations of, for instance, <a href="https://doi.org/10.1038/d41586-020-03056-z">expertise</a> and <a href="https://www.theatlantic.com/entertainment/archive/2010/03/how-to-make-a-documentary-about-sampling-legally/38189/">creativity</a>. </p>
<p>From the now cliché “think outside the box” to Apple’s slogan “<a href="http://www.thecrazyones.it/spot-en.html">think different</a>,” innovation, a central component of invention, is associated with breaking limits. Yet Americans have largely failed to change the ways that they think and talk about invention itself. </p>
<p>Even Obama’s speech about the America Invents Act begins by explaining how Thomas Jefferson epitomized the nation’s mythic spirit of invention and innovation. Yet Jefferson held the racist view that Black people <a href="https://www.washingtonpost.com/archive/lifestyle/2002/03/26/henry-louis-gates-a-wheatley-reader/e7a097ac-8d42-4432-abf0-8366e5ea4528/">lacked the capacity to be truly imaginative creators</a>, let alone citizens of the nation. Breaking limits, it turns out, is most often <a href="https://www.theatlantic.com/business/archive/2013/08/entrepreneurship-the-ultimate-white-privilege/278727/">a privilege afforded to white people</a>. </p>
<p>The current historical moment, in which facts are negotiable, white nationalism is on the rise and the nation is weathering a pandemic, is an important time to redefine American mythologies of invention. Celebrating the inventive capacity of women and people of color matters. Recognizing their innovative genius, in films like “<a href="https://www.newyorker.com/culture/richard-brody/hidden-figures-is-a-subtle-and-powerful-work-of-counter-history">Hidden Figures</a>,” helps transform what had been marginalized stories into narratives that are central to history. </p>
<p>Obama’s reference to Jefferson reinforced powerful, limiting conventional wisdom about invention and innovation. Popular cultural narratives frequently invoke the contributions of white men while erasing those of women and people of color. For example, the History Channel’s <a href="https://www.realclearhistory.com/articles/2012/11/09/who_are_the_men_who_built_america_40.html">The Men Who Built America</a> focuses on the inventions and innovations of Cornelius Vanderbilt, John D. Rockefeller, Andrew Carnegie and Henry Ford, business titans who achieved tremendous success via dubious ethics. </p>
<p>The show’s use of the Great Man theory of inventorship and entrepreneurship leaves out the many women and people of color, including Thomas Jennings, Elijah McCoy, Miriam E. Benjamin and Sarah E. Goode who, as legal scholar Shontavia Johnson shows, not only <a href="https://theconversation.com/americas-always-had-black-inventors-even-when-the-patent-system-explicitly-excluded-them-72619">invented and patented during the same period</a> but, as legal scholar Kara Swanson shows, used their work to <a href="https://www.cambridge.org/core/journals/journal-of-the-gilded-age-and-progressive-era/article/inventing-the-woman-voter-suffrage-ability-and-patents/B698232F40C9E4AF0E817097CA4F1987">lobby for suffrage rights for women and people of color.</a> </p>
<figure>
<iframe width="440" height="260" src="https://www.youtube.com/embed/gQo1cZtEpgY?wmode=transparent&start=0" frameborder="0" allowfullscreen=""></iframe>
<figcaption><span class="caption">A brief listing of notable Black American inventors.</span></figcaption>
</figure>
<h2>Attacking Asian innovation</h2>
<p>America’s white-male-centered imaginings of inventorship and patenting extend beyond the nation’s borders, in xenophobic pronouncements frequently directed at Asian nations. Apple co-founder Steve Wozniak <a href="https://economictimes.indiatimes.com/opinion/interviews/success-in-india-is-based-on-studying-having-a-job-wheres-the-creativity/articleshow/63065361.cms?from=mdr">recently proclaimed</a>: “Success in India is based on studying, having a job … where’s the creativity?” </p>
<p>Similarly, President Trump claimed to be “<a href="https://www.whitehouse.gov/briefings-statements/president-donald-j-trump-protecting-america-chinas-efforts-steal-technology-intellectual-property/">protecting the innovations, creations, and inventions that power our country</a>” from Chinese graduate students, who are part of a racial group that has long <a href="https://asiasociety.org/blog/asia/how-asian-graduates-and-executives-boost-us-economy">boosted America’s economy</a>, <a href="https://www.forbes.com/sites/johnmauldin/2018/09/19/china-is-building-the-worlds-largest-innovation-economy/#76f52ae66fd4">fueled global innovation</a> and <a href="https://www.reuters.com/article/us-health-coronavirus-usa-hcq/trump-thanks-india-for-decision-on-anti-malaria-drug-idUSKCN21Q2ZC">offered pandemic assistance</a>. </p>
<p>Refusal to recognize diversity in inventorship is a bipartisan affair. Then-presidential candidate and current President-elect <a href="https://www.bloomberg.com/news/articles/2014-05-29/biden-makes-a-habit-of-dissing-chinese-innovation">Joseph Biden made a shocking assertion</a> about innovation in China: “I challenge you, name me one innovative project, one innovative change, one innovative product that has come out of China.” </p>
<h2>Inventing new ways to talk about invention</h2>
<p>Racist, sexist and xenophobic inventorship and patenting norms are not immutable facts. They are practices built on exclusionary stories and feelings, transformed into familiar myths, including that of the American dream. These exclusionary stories frequently function as <a href="https://www.chicagoreporter.com/dog-whistle-politics-is-gops-longtime-political-weapon-of-choice/">dog whistles</a> that have long been used to fuel white anxieties about people of color and men’s anxieties about women. They make it difficult for women and people of color to prove they have the expertise needed to invent and patent.</p>
<p>[<em>Deep knowledge, daily.</em> <a href="https://theconversation.com/us/newsletters/the-daily-3?utm_source=TCUS&utm_medium=inline-link&utm_campaign=newsletter-text&utm_content=deepknowledge">Sign up for The Conversation’s newsletter</a>.]</p>
<p>However, as films like “Hidden Figures” emphatically show, it’s possible to tell inclusionary stories. I argue that telling them is an ethical act because it ensures that society recognizes the genius of people of all identities – race, gender, nationality, religion, ability, age – in contributing to invention and innovation, current and historical.</p>
<p>Rhetoricians frequently proclaim that “words mean things.” This is certainly true when imagining who has the capacity to perform certain tasks, such as inventing and patenting. At a moment in which the U.S. faces threats to democracy, environment and economy, it is more important than ever to invent new ways of talking about invention. People of all identities deserve the opportunities to create and own their innovative solutions for solving the world’s most pressing problems. More importantly, they deserve to be treated as full citizens in the realm of intellectual property and innovation.</p><img src="https://counter.theconversation.com/content/145372/count.gif" alt="The Conversation" width="1" height="1" />
<p class="fine-print"><em><span>Anjali Vats is affiliated with Microsoft Research New England's Social Media Collective. </span></em></p>The story of invention in America typically features larger-than-life caricatures of white men like Thomas Edison while largely ignoring the contributions of women and people of color.Anjali Vats, Associate Professor of Communication and African and African Diaspora Studies and Associate Professor of Law (By Courtesy), Boston CollegeLicensed as Creative Commons – attribution, no derivatives.tag:theconversation.com,2011:article/1466422020-09-22T13:55:36Z2020-09-22T13:55:36ZBanksy brands under threat after elusive graffiti artist loses trademark legal dispute<figure><img src="https://images.theconversation.com/files/359160/original/file-20200921-18-1gydasr.png?ixlib=rb-1.1.0&rect=1%2C8%2C942%2C603&q=45&auto=format&w=496&fit=clip" /><figcaption><span class="caption">
</span> <span class="attribution"><a class="source" href="https://www.flickr.com/photos/dumbonyc/2558790140/in/photostream/">Dumbonyc/Flickr</a>, <a class="license" href="http://creativecommons.org/licenses/by-sa/4.0/">CC BY-SA</a></span></figcaption></figure><p>Britain’s most famous – and enigmatic – graffiti artist <a href="https://www.smithsonianmag.com/arts-culture/the-story-behind-banksy-4310304/">Banksy</a> once proclaimed that “copyright is for losers”. Now, having <a href="https://www.theguardian.com/artanddesign/2020/sep/17/banksy-trademark-risk-street-artist-loses-legal-battle-flower-thrower-graffiti">lost a two-year legal fight</a> over the trademarking of one of his iconic artworks, that claim has come back to haunt him.</p>
<p>On September 16, the EU Trademark Office <a href="https://drive.google.com/file/d/1Y2LcwirjGOqRap_tcTjT_Dwqh-lQWFAS/view">invalidated</a>
a trademark registered by <a href="https://pestcontroloffice.com">Pest Control</a>, the official body which authenticates Banksy’s art. The trademark incorporated Banksy’s iconic mural <a href="https://publicdelivery.org/banksy-flower-thrower/">Flower Thrower</a>, originally painted in the Palestinian town of Bethlehem.</p>
<p>This legal dispute initially erupted between Pest Control and Full Colour Black, a British greeting cards company which often uses artworks by Banksy. In March 2019 Full Colour Black asked for the cancellation of the trademark, claiming it was filed in bad faith. The row then hit the headlines after Banksy opened a store named <a href="https://grossdomesticproduct.com/">Gross Domestic Product</a> in South London in the autumn of 2019. At the time, the mysterious artist stated:</p>
<blockquote>
<p>A greetings card company is contesting the trademark I hold to my art and attempting to take custody of my name so they can sell their fake Banksy merchandise legally.</p>
</blockquote>
<p>Banksy said he had been legally advised that the best way to remedy the situation was to create his own merchandise. This aimed to show that he was trying to abide by the law which requires owners of trademarks to use their brands in the course of trade. Until this point Banksy had never regularly manufactured or sold merchandise bearing his brand.</p>
<figure class="align-center zoomable">
<a href="https://images.theconversation.com/files/359112/original/file-20200921-14-1wt4wp3.png?ixlib=rb-1.1.0&q=45&auto=format&w=1000&fit=clip"><img alt="White wall showing Banksy's Flower Thrower, which shows a masked youth throwing a bunch of flowers instead of a rock or a Molotov cocktail." src="https://images.theconversation.com/files/359112/original/file-20200921-14-1wt4wp3.png?ixlib=rb-1.1.0&q=45&auto=format&w=754&fit=clip" srcset="https://images.theconversation.com/files/359112/original/file-20200921-14-1wt4wp3.png?ixlib=rb-1.1.0&q=45&auto=format&w=600&h=420&fit=crop&dpr=1 600w, https://images.theconversation.com/files/359112/original/file-20200921-14-1wt4wp3.png?ixlib=rb-1.1.0&q=30&auto=format&w=600&h=420&fit=crop&dpr=2 1200w, https://images.theconversation.com/files/359112/original/file-20200921-14-1wt4wp3.png?ixlib=rb-1.1.0&q=15&auto=format&w=600&h=420&fit=crop&dpr=3 1800w, https://images.theconversation.com/files/359112/original/file-20200921-14-1wt4wp3.png?ixlib=rb-1.1.0&q=45&auto=format&w=754&h=527&fit=crop&dpr=1 754w, https://images.theconversation.com/files/359112/original/file-20200921-14-1wt4wp3.png?ixlib=rb-1.1.0&q=30&auto=format&w=754&h=527&fit=crop&dpr=2 1508w, https://images.theconversation.com/files/359112/original/file-20200921-14-1wt4wp3.png?ixlib=rb-1.1.0&q=15&auto=format&w=754&h=527&fit=crop&dpr=3 2262w" sizes="(min-width: 1466px) 754px, (max-width: 599px) 100vw, (min-width: 600px) 600px, 237px"></a>
<figcaption>
<span class="caption">Banksy’s iconic Flower Thrower image on a wall in Bethlehem.</span>
<span class="attribution"><a class="source" href="https://en.wikipedia.org/wiki/Banksy#/media/File:West_bank.png">ZaBanker/Wikipedia</a>, <a class="license" href="http://creativecommons.org/licenses/by-sa/4.0/">CC BY-SA</a></span>
</figcaption>
</figure>
<p>But such statements – not unexpectedly – <a href="https://theconversation.com/how-banksys-latest-trademark-row-could-backfire-124919">backfired</a>. The EU trademark office noted in its ruling that in opening a shop specifically to sell merchandise showing the Flame Thrower (the artwork the greetings card company wanted to use), Banksy had admitted that the use made of the Flower Thrower brand was not genuine. This merchandise was in bad faith, inconsistent with honest practices and aimed at creating or keeping a share of the market by selling products simply to circumvent the law.</p>
<p>This is not just bad news for the Flower Thrower brand. The decision could also <a href="https://euipo.europa.eu/eSearch/#details/owners/618285">damage other Banksy’s trademark registrations</a> incorporating various iconic artworks, now at risk of being invalidated on the same grounds.</p>
<h2>Trademark or copyright?</h2>
<p>The case raises other issues too. Can artworks be monopolised by trademarking them? <a href="https://www.cla.co.uk/what-is-copyright">Copyright</a> and <a href="https://www.bl.uk/business-and-ip-centre/articles/what-is-a-trade-mark">trademarks</a> are different intellectual property rights. While copyright aims to protect artistic works such as paintings, trademarks protect logos and signs that help consumers to make informed purchase choices when it comes to buying products.</p>
<p>And Banksy – who has made clear his dislike of copyright - has tried to rely here on trademark law to protect his artworks. This is <a href="https://theconversation.com/banksy-finally-goes-to-court-to-stop-unauthorised-merchandising-despite-saying-copyright-is-for-losers-112390">not the first time</a> he has done so.</p>
<p>The reason Banksy doesn’t invoke copyright, instead relying on trademarks, is because a copyright suit would require Pest Control to show that it has acquired the copyright from the artist. This would reveal Banksy’s real name, which the famously anonymous artist wants to avoid, as it would remove his aura of mystery and affect the commercial value of his art.</p>
<p>Also, copyright is limited in time, while trademarks can be continuously renewed; trademarking an artwork therefore gives the artist a perpetual monopoly over it. This may offend a basic intellectual property law principle, namely that after a specific period of time everyone should be able to use, and build upon, artworks that have fallen into the public domain.</p>
<p>Of course there are artworks which are registered and enforced as trademarks, such as <a href="https://euipo.europa.eu/eSearch/#details/trademarks/001018696">Disney’s iconic characters</a>, but in most cases the trademarked work of art is used in a genuine way, with merchandise regularly produced and sold by the right holder. </p>
<p>But where the use has been token and aimed just at getting around the law, the scenario is more worrying. More so in cases like Banksy’s: when an artist doesn’t want to claim copyright but at the same time seeks potentially perpetual trademark rights over his art.</p>
<p>So Banksy’s statement – “Copyright is for losers” – has now come back to bite him. His negative opinion about an important intellectual property right clearly jeopardises his position in proceedings where proprietary rights are debated, as the EU trademark office suggested in its decision. </p>
<p>Certainly, an anti-establishment viewpoint does not prevent artists from relying on “establishment” legal tools to protect the very rights they criticise. Everyone has the right to freedom of expression and a trademark owner cannot lose the right to a brand because he has said that copyright is for losers. You can still be anti-establishment and take legal action to protect your intellectual property. But what you can’t do is behave as Banksy did in creating his shop to simply get around the law and keep perpetual monopolies over his art.</p>
<figure class="align-center ">
<img alt="Image of Gross Domestic Product a shop window in Croydon showing graffiti artist Banksy's merchandise." src="https://images.theconversation.com/files/359155/original/file-20200921-22-1r4qxu.png?ixlib=rb-1.1.0&q=45&auto=format&w=754&fit=clip" srcset="https://images.theconversation.com/files/359155/original/file-20200921-22-1r4qxu.png?ixlib=rb-1.1.0&q=45&auto=format&w=600&h=358&fit=crop&dpr=1 600w, https://images.theconversation.com/files/359155/original/file-20200921-22-1r4qxu.png?ixlib=rb-1.1.0&q=30&auto=format&w=600&h=358&fit=crop&dpr=2 1200w, https://images.theconversation.com/files/359155/original/file-20200921-22-1r4qxu.png?ixlib=rb-1.1.0&q=15&auto=format&w=600&h=358&fit=crop&dpr=3 1800w, https://images.theconversation.com/files/359155/original/file-20200921-22-1r4qxu.png?ixlib=rb-1.1.0&q=45&auto=format&w=754&h=450&fit=crop&dpr=1 754w, https://images.theconversation.com/files/359155/original/file-20200921-22-1r4qxu.png?ixlib=rb-1.1.0&q=30&auto=format&w=754&h=450&fit=crop&dpr=2 1508w, https://images.theconversation.com/files/359155/original/file-20200921-22-1r4qxu.png?ixlib=rb-1.1.0&q=15&auto=format&w=754&h=450&fit=crop&dpr=3 2262w" sizes="(min-width: 1466px) 754px, (max-width: 599px) 100vw, (min-width: 600px) 600px, 237px">
<figcaption>
<span class="caption">Gross Domestic Product, Banksy’s shop window for his merchandise which hit the headlines in 2019.</span>
<span class="attribution"><a class="source" href="https://www.shutterstock.com/image-photo/london-uk-october-2-2019-crowds-1523572535">Shutterstock</a></span>
</figcaption>
</figure>
<h2>Illegal graffiti</h2>
<p>The EU trademark office also noted that illegal graffiti cannot be protected by copyright because it is produced through the commission of a criminal act. It added that as graffiti is normally placed in public places for all to view and photograph, no copyright can be claimed.</p>
<p>But these statements are not accurate. The process of creating an artwork, whether legal or illegal, is not conclusive when it comes to determining whether copyright comes into existence.</p>
<p>For example, if I steal a pencil and create a wonderful drawing, why should I be denied copyright and be forced to tolerate someone else cashing in on my work? It would be unfair. The same could be said of illegal street art. Also, the fact that graffiti is placed in public locations does not assume that artists waive or are deprived of the rights copyright law offers them. That is simply mistaken.</p>
<p>Apart from this point, the decision is well-reasoned and fair. If Banksy wants to own, keep and enforce registered trademarks, he needs to act in good faith, and start using them seriously by regularly selling merchandise, as all entrepreneurs do.</p><img src="https://counter.theconversation.com/content/146642/count.gif" alt="The Conversation" width="1" height="1" />
<p class="fine-print"><em><span>Enrico Bonadio does not work for, consult, own shares in or receive funding from any company or organisation that would benefit from this article, and has disclosed no relevant affiliations beyond their academic appointment.</span></em></p>How Banksy’s glib response to a trademark challenge backfired and lost him a two-year legal battle.Enrico Bonadio, Reader in Intellectual Property Law, City, University of LondonLicensed as Creative Commons – attribution, no derivatives.tag:theconversation.com,2011:article/1249192019-10-10T08:46:24Z2019-10-10T08:46:24ZHow Banksy’s latest trademark row could backfire<figure><img src="https://images.theconversation.com/files/296182/original/file-20191009-3917-1dwjao3.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=496&fit=clip" /><figcaption><span class="caption">Banksy's merchandise "shop" in Croydon, London.</span> <span class="attribution"><a class="source" href="https://www.shutterstock.com/image-photo/london-uk-october-2-2019-crowds-1523572535">Shutterstock</a></span></figcaption></figure><p>The elusive Bristol street artist <a href="https://www.smithsonianmag.com/arts-culture/the-story-behind-banksy-4310304/?page=1">Banksy</a> has <a href="https://www.theguardian.com/artanddesign/2019/oct/01/banksy-launches-homewares-shop-in-dispute-over-trademark">hit the headlines</a> again recently after opening a store named <a href="https://grossdomesticproduct.com">Gross Domestic Product</a> in South London. It is (literally) a shop window where people can see displayed objects and buy them online. Products for sale include the <a href="https://edition.cnn.com/2019/06/29/entertainment/stormzy-glastonbury-scli-gbr-intl/index.html">Union Jack stab-proof vest</a> as worn by Stormzy at Glastonbury festival, disco balls made from discarded police riot helmets and other items showcasing Banksy’s art. </p>
<p>The famous artist said he had been pushed into setting up the store selling “offensive and impractical” merchandise because of a trademark dispute with a greetings card company. In a statement he said:</p>
<blockquote>
<p>A greetings card company is contesting the trademark I hold to my art and attempting to take custody of my name so they can sell their fake Banksy merchandise legally.</p>
</blockquote>
<p>He was then legally advised that the best way to remedy the situation was to create his own merchandise. This course of action presumably aims to show that Banksy is trying to abide by the law which requires owners of registered trademarks to properly use their brands in the course of trade. In the past Banksy has never manufactured, sold or offered for sale goods bearing his brands.</p>
<h2>The dispute</h2>
<p>The row arose in March 2019 when greetings card producer Full Colour Black started an invalidity action aimed at <a href="https://euipo.europa.eu/eSearch/#details/trademarks/012575155">cancelling an EU trademark</a> based on Banksy’s iconic mural <a href="https://www.thewholeworldisaplayground.com/banksy-bethlehem-street-art">Flower Thrower</a>, originally painted in the Palestinian town of Bethlehem. The trademark had been formally registered in August 2014 by Pest Control, the official body which authenticates Banksy’s art, acting on behalf of the artist.</p>
<figure class="align-right ">
<img alt="" src="https://images.theconversation.com/files/296179/original/file-20191009-3935-14m0yy.png?ixlib=rb-1.1.0&q=45&auto=format&w=237&fit=clip" srcset="https://images.theconversation.com/files/296179/original/file-20191009-3935-14m0yy.png?ixlib=rb-1.1.0&q=45&auto=format&w=600&h=646&fit=crop&dpr=1 600w, https://images.theconversation.com/files/296179/original/file-20191009-3935-14m0yy.png?ixlib=rb-1.1.0&q=30&auto=format&w=600&h=646&fit=crop&dpr=2 1200w, https://images.theconversation.com/files/296179/original/file-20191009-3935-14m0yy.png?ixlib=rb-1.1.0&q=15&auto=format&w=600&h=646&fit=crop&dpr=3 1800w, https://images.theconversation.com/files/296179/original/file-20191009-3935-14m0yy.png?ixlib=rb-1.1.0&q=45&auto=format&w=754&h=811&fit=crop&dpr=1 754w, https://images.theconversation.com/files/296179/original/file-20191009-3935-14m0yy.png?ixlib=rb-1.1.0&q=30&auto=format&w=754&h=811&fit=crop&dpr=2 1508w, https://images.theconversation.com/files/296179/original/file-20191009-3935-14m0yy.png?ixlib=rb-1.1.0&q=15&auto=format&w=754&h=811&fit=crop&dpr=3 2262w" sizes="(min-width: 1466px) 754px, (max-width: 599px) 100vw, (min-width: 600px) 600px, 237px">
<figcaption>
<span class="caption">Banksy’s Flower Thrower.</span>
<span class="attribution"><a class="source" href="https://commons.wikimedia.org/wiki/File:Banksy_costume.jpg">Banksy/Wikipedia</a></span>
</figcaption>
</figure>
<p>The legal challenge mainly relies on two arguments. First, the trademark is not capable of being perceived as such by consumers, as the artwork is used so intensively and commonly by a multitude of entities that sell products reproducing Banksy’s art. In the past this has been accepted and even encouraged by the artist, who famously once said that “copyright is for losers”.</p>
<p>His art is regularly printed and reproduced on everything from posters to keyrings. In other words, the Flower Thrower trademark (and arguably other Banksy brands such as the <a href="https://trademarks.ipo.gov.uk/ipo-tmowner/page/search?id=39918&domain=1&app=0&mark=UK00003354581">Hip-Hop Rat</a>) are just mere artworks, the card company argues, that would be seen by people as artistic ornamentation or products themselves. But they are not signs capable of allowing consumers to recognise the manufacturer of the goods.</p>
<p>The second argument is that Banksy should enforce his copyright over his artworks instead of registering trademarks that incorporate them and are not really used to distinguish goods. Indeed, while copyright aims at protecting artistic works, trademarks protect logos and signs that help consumers to make informed purchase choices.</p>
<p>But why does the artist avoid relying on copyright, preferring to apply for trademarks, instead? After all, if copyright is ethically unacceptable and contrary to his anti-establishment message (as Banksy seems to believe), surely trademarks should be considered undesirable on the same grounds?</p>
<p>Both copyright and trademarks give monopolistic rights that allow their owners to profit from their own creations, preventing others from trying to cash in. So it doesn’t really make sense to assert that “<a href="https://ipcloseup.com/2019/05/07/copyright-is-for-losers-says-street-artist-banksy-some-trademarks-not/">copyright is for losers</a>” while simultaneously seeking trademark registrations to try to protect copyrightable art.</p>
<p>The real reason Banksy doesn’t invoke copyright seems far more calculated than simply being based on ethical and solidarity principles. Starting a copyright legal action would require Pest Control to show that it has acquired the copyright from the artist. But this would reveal Banksy’s real name, which the famously anonymous artist wants to avoid, as it would erase the aura of mystery around him and have an impact on the commercial value of his art.</p>
<p>This has also happened last year when Banksy <a href="https://theconversation.com/banksy-finally-goes-to-court-to-stop-unauthorised-merchandising-despite-saying-copyright-is-for-losers-112390">sued an Italian museum</a> that had organised an unauthorised exhibition which included the sale of merchandise reproducing his branded art. The street artist again did not enforce copyright – he preferred to invoke trademark infringement instead.</p>
<h2>David v Goliah</h2>
<p>But the artist’s new shop – and his reasons for the new venture – could backfire. The argument that he now must sell his own range of branded merchandise to resist an invalidity trademark action could be invoked by others to show that such use of his brands is basically token, for the sole purpose of avoiding his trademarks being revoked for non-use. The law is quite clear on this point: if you don’t use your brand in a genuine way, you may lose the registration. </p>
<p>The Flower Thrower, the Hip-Hop Rat and other trademarks <a href="https://euipo.europa.eu/eSearch/#advanced/trademarks/1/100/n1=MarkVerbalElementText&v1=Banksy&o1=AND&c1=IS&sf=ApplicationNumber&so=asc">registered by Banksy</a> may now be more exposed to the risk of revocation for non-use.</p>
<figure class="align-center ">
<img alt="" src="https://images.theconversation.com/files/296183/original/file-20191009-3851-s35lu2.png?ixlib=rb-1.1.0&q=45&auto=format&w=754&fit=clip" srcset="https://images.theconversation.com/files/296183/original/file-20191009-3851-s35lu2.png?ixlib=rb-1.1.0&q=45&auto=format&w=600&h=357&fit=crop&dpr=1 600w, https://images.theconversation.com/files/296183/original/file-20191009-3851-s35lu2.png?ixlib=rb-1.1.0&q=30&auto=format&w=600&h=357&fit=crop&dpr=2 1200w, https://images.theconversation.com/files/296183/original/file-20191009-3851-s35lu2.png?ixlib=rb-1.1.0&q=15&auto=format&w=600&h=357&fit=crop&dpr=3 1800w, https://images.theconversation.com/files/296183/original/file-20191009-3851-s35lu2.png?ixlib=rb-1.1.0&q=45&auto=format&w=754&h=449&fit=crop&dpr=1 754w, https://images.theconversation.com/files/296183/original/file-20191009-3851-s35lu2.png?ixlib=rb-1.1.0&q=30&auto=format&w=754&h=449&fit=crop&dpr=2 1508w, https://images.theconversation.com/files/296183/original/file-20191009-3851-s35lu2.png?ixlib=rb-1.1.0&q=15&auto=format&w=754&h=449&fit=crop&dpr=3 2262w" sizes="(min-width: 1466px) 754px, (max-width: 599px) 100vw, (min-width: 600px) 600px, 237px">
<figcaption>
<span class="caption">Hip Hop Rat by Banksy.</span>
<span class="attribution"><a class="source" href="https://commons.wikimedia.org/wiki/File:Banksy_Hip_Hop_Rat.jpg">Tim Fuller/Flickr</a></span>
</figcaption>
</figure>
<p>Despite Banksy’s efforts to present himself as a down-to-earth, anti-conformist artist and paint the card company as the “bad guy”, this is more like a David v Goliath story – and Banksy is the giant here. Supported by a raft of experienced corporate lawyers and managers worldwide, his art is an undeniably <a href="https://www.dailymail.co.uk/news/article-6247943/How-DOES-Banksy-earn-money-Secretive-artist-thought-make-millions-year.html">powerful and commercially valuable industry</a>. </p>
<p>Full Colour Black employs three people in a small greetings card business reproducing graffiti artworks including Banksy’s. Exploiting street and graffiti art without artists’ authorisation is certainly a violation of their copyright. Yet, this is not the case with Full Colour Black as it <a href="https://www.facebook.com/notes/full-colour-black/public-statement-release/2557627524344258/">informed</a> Banksy’s representatives that the company wanted to pay him royalties, which he refused. The artist has basically waived his copyright.</p>
<p>If Banksy really wants to keep his registered trademarks, and possibly enforce them against people who exploit them, he’s going to have to start using his brands properly so he can avoid them being revoked and see off other challenges. He may not be happy being forced to cede to consumerist rules, but this is what is required by the very laws that have allowed the registration of his trademarks. Banksy is just going to have to play the game.</p><img src="https://counter.theconversation.com/content/124919/count.gif" alt="The Conversation" width="1" height="1" />
<p class="fine-print"><em><span>Enrico Bonadio does not work for, consult, own shares in or receive funding from any company or organisation that would benefit from this article, and has disclosed no relevant affiliations beyond their academic appointment.</span></em></p>Forced into selling his own merchandise to stop others doing the same, the artist could end up facing other similar challenges because he trademarks rather than copyrights his artworks.Enrico Bonadio, Senior Lecturer in Law, City, University of LondonLicensed as Creative Commons – attribution, no derivatives.tag:theconversation.com,2011:article/1194942019-06-26T19:25:13Z2019-06-26T19:25:13ZTrademark scholar says FUCT’s victory at Supreme Court is a win for free speech<figure><img src="https://images.theconversation.com/files/281458/original/file-20190626-76743-1cq4cuj.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=496&fit=clip" /><figcaption><span class="caption">Erik Brunetti had good reason to be optimistic after the court heard his case in April.</span> <span class="attribution"><a class="source" href="http://www.apimages.com/metadata/Index/Supreme-Court-Scandalous-Trademarks/903225524c2e4df8b15e39981f490dbe/2/0">AP Photo/J. Scott Applewhite</a></span></figcaption></figure><p>When is a brand too scandalous to register as a <a href="https://www.uspto.gov/trademarks-getting-started/trademark-basics">trademark</a>? According to the Supreme Court, there may be no such thing. </p>
<p>In a case that tested the constitutional limits of free speech, the <a href="https://www.npr.org/2019/06/24/732512169/supreme-court-strikes-down-ban-on-trademarking-immoral-scandalous-words-symbols">high court struck down a ban</a> on registering “immoral” or “scandalous” words and symbols. The <a href="https://www.scotusblog.com/2019/06/long-time-prohibition-on-registration-of-scandalous-and-immoral-trademarks-is-struck-down/?utm_source=feedburner&utm_medium=feed&utm_campaign=Feed%3A+scotusblog%2FpFXs+%28SCOTUSblog%29">ruling</a> was 6-3.</p>
<p>As a <a href="https://scholar.google.com/citations?user=T_SiGdwAAAAJ&hl=en&oi=a">trademark attorney and scholar</a>, I believe the Supreme Court made the right call in forcing the government to stop enforcing an impossible-to-apply moral standard in trademark law – as it has in many other legal domains.</p>
<p>I attended the oral argument on April 15, when lawyers representing streetwear clothing label FUCT <a href="https://www.washingtonpost.com/politics/courts_law/he-wants-to-trademark-a-brand-name-that-sounds-like-the-f-word-the-supreme-court-is-listening/2019/04/12/17426e44-5d29-11e9-a00e-050dc7b82693_story.html?utm_term=.b8767c55ecbb">argued the company has a right</a> to register its brand as a trademark, which helps protect against copycats. The United States Patent and Trademark Office had <a href="https://www.npr.org/2019/04/16/713632552/supreme-court-dances-around-the-f-word-with-real-potential-financial-consequence">rejected it</a> on the grounds that FUCT is “immoral” and “scandalous.” </p>
<p>Let me explain why the office got it wrong.</p>
<h2>An outlaw ethos</h2>
<p>It is perhaps appropriate that this case arose from a streetwear label famous for testing the limits. </p>
<p>While it’s commonplace today for clothing labels to adopt a provocative ethos and image, FUCT founder Erik Brunetti was a <a href="https://www.gq.com/story/fuct-erik-brunetti-supreme-court-case">trailblazer of edgy streetwear fashion</a> when <a href="https://www.grailed.com/drycleanonly/fuct-history">he started the company</a> in 1990. The name was meant to embody the company’s outlaw image – a corporate-looking logo with an anti-authoritarian pronunciation and subversive message. </p>
<p>A popular style involved prints of the brand name in the font style of the Ford logo, which can be found on <a href="http://www.defunkd.com/forum/what-worth-f20/vintage-fuct-ford-logo-shirt-t2930.html">T-shirts</a> and <a href="https://www.google.com/search?q=fuct+ford+logo+hat+original&rlz=1C5CHFA_enUS754US754&source=lnms&tbm=isch&sa=X&ved=0ahUKEwjD4szWwMvhAhVimuAKHfI1Av4Q_AUIDygC&biw=1412&bih=736">hats</a>. The brand quickly became a cultural icon, with its gear worn by skateboarders, punk rockers and even <a href="https://www.pinterest.com/pin/555420566539029843">members of the band Nirvana</a>. </p>
<p>As the popularity of the label grew, it engendered fake FUCT merchandise. In order to protect his mark more effectively around the world, <a href="http://www.abajournal.com/magazine/article/too-tasteless-to-trademark">Brunetti applied to register</a> it with the U.S. Patent and Trademark Office in 2011.</p>
<p>Trademark registration <a href="https://www.uspto.gov/trademarks-getting-started/trademark-basics">confers significant benefits</a>, including nationwide protection from confusingly similar products, enhanced monetary damages in litigation and priority for foreign filings. It also enables U.S. Customs agents to stop counterfeit goods from entering at the border. </p>
<p>In rejecting Brunetti’s application, examiners argued he ran afoul of a more than century-old provision in trademark law. </p>
<h2>‘Offensive to the conscience’</h2>
<p>The prohibition on registration of immoral and scandalous trademarks has been in existence since Congress <a href="https://www.ipmall.info/sites/default/files/hosted_resources/lipa/trademarks/PreLanhamAct_086_Act_of_1905.htm">passed the Trademark Act of 1905</a>. It says any mark that “consists of or comprises immoral or scandalous matter” will be rejected. </p>
<p>Today, scandalous <a href="https://tmep.uspto.gov/RDMS/TMEP/Oct2012#/Oct2012/TMEP-1200d1e3054.html">is defined</a> as “shocking to the sense of propriety, offensive to the conscience or moral feelings or calling out for condemnation.” </p>
<p>I and other scholars <a href="https://kb.osu.edu/bitstream/handle/1811/64637/OSLJ_V54N2_0331.pdf">have long questioned the wisdom</a> of having the trademark office as an arbiter of a collective and ever-evolving moral standard. That’s because trademarks <a href="https://heinonline.org/HOL/LandingPage?handle=hein.journals/branlaj49&div=25&id=&page=">serve a valuable function</a> in the marketplace by identifying the source of a good or service, helping consumers trust where something they buy comes from and preventing deception. </p>
<p>What matters is source quality – not moral quality. </p>
<p>And because the prohibition affects registration but not use, I have found that <a href="https://scholars.unh.edu/cgi/viewcontent.cgi?referer=&httpsredir=1&article=1309&context=law_facpub">it is ineffective</a> at keeping offensive trademarks out of the marketplace. In addition, decisions based on this provision are wildly inconsistent. </p>
<h2>If FCUK is fine, why not FUCT?</h2>
<p>While the U.S. <a href="https://www.jstor.org/stable/1339557?seq=1#page_scan_tab_contents">has moved away</a> from regulating morality in other areas such as broadcasting – and in other forms of intellectual property such as copyrights and patents – the government continues to do so when it comes to granting <a href="https://freibrun.com/trademarks-valuable-intellectual-property-assets/">valuable legal rights</a> through trademark registration. </p>
<p>The primary evidence used by examiners to determine whether to reject a mark on these grounds is the <a href="https://ssrn.com/abstract=2715104">dictionary</a>. If a dictionary indicates that a term is “vulgar,” that is sufficient evidence to reject a mark. </p>
<p>Trademark examiners evaluate the meaning of a mark in the context of the current attitudes of the day. For example, in 1938, the <a href="https://casetext.com/case/in-re-riverbank-canning-co">trademark office rejected</a> a request to trademark Madonna as a wine brand on grounds that the word is religious in nature. A half-century later, the office apparently no longer had a problem with granting such trademarks when <a href="http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4809:d6j8vq.2.29">it approved one</a> for Madonna rosé wine. </p>
<p>Since the perception of what is and isn’t scandalous is constantly changing, it’s difficult for the trademark office to keep up. And trademarks that are considered scandalous or immoral to one examiner may be acceptable to another. </p>
<p>As a result, the trademark office records <a href="https://ssrn.com/abstract=2715104">are rife with inconsistencies</a>. In recent years, examiners <a href="https://www.uspto.gov/trademarks-application-process/search-trademark-database">have approved trademarks</a> containing words such as “whore,” “bitch,” “penis” and “pothead” while rejecting others with the same terms. </p>
<p>And the office has even approved clothing trademarks remarkably similar to FUCT, including FCUK, the F word and Fvck Street Wear. </p>
<p>In the case of FUCT, the rejection was based on the idea that the homonym <a href="https://www.supremecourt.gov/DocketPDF/18/18-302/95141/20190402150636686_18-302rbUnitedStates.pdf">would be perceived as equivalent</a> to the vulgar word it sounds like. </p>
<h2>A terrible message</h2>
<p>Two years ago, the Supreme Court cited the First Amendment <a href="https://www.npr.org/sections/thetwo-way/2017/06/19/533514196/the-slants-win-supreme-court-battle-over-bands-name-in-trademark-dispute">in striking down</a> a prohibition against <a href="https://theconversation.com/is-the-slants-racist-court-ruling-on-band-name-could-upend-trademark-law-48413">trademark registration for marks that disparage</a> individuals or groups.</p>
<p>That case arose when Simon Tam <a href="https://theconversation.com/is-the-slants-racist-court-ruling-on-band-name-could-upend-trademark-law-48413">sought to register the name</a> of his Asian American dance rock band, “The Slants,” as a trademark. The Supreme Court held that trademarks are private – not government – speech, and an examiner may not refuse to register trademarks based on the particular viewpoint the trademarks express. This case considered whether “scandalous” and “immoral” trademarks also discriminate on the basis of viewpoint. </p>
<p>In the FUCT case, several justices expressed concern that allowing trademark registration of offensive terms could be perceived as some sort of government endorsement of that language. Fortunately, however, a majority disagreed. </p>
<p>Trademark law shouldn’t police morality. It is terrible at doing so. </p>
<p><em>This is an updated version of an article originally published on April 23, 2019.</em></p><img src="https://counter.theconversation.com/content/119494/count.gif" alt="The Conversation" width="1" height="1" />
<p class="fine-print"><em><span>Megan M. Carpenter does not work for, consult, own shares in or receive funding from any company or organization that would benefit from this article, and has disclosed no relevant affiliations beyond their academic appointment.</span></em></p>The high court struck down a ban on trademarking ‘immoral’ or ‘scandalous’ words and symbols. A trademark scholar explains why that’s a good thing.Megan M. Carpenter, Dean, University of New HampshireLicensed as Creative Commons – attribution, no derivatives.tag:theconversation.com,2011:article/1123902019-02-25T12:28:16Z2019-02-25T12:28:16ZBanksy finally goes to court to stop unauthorised merchandising, despite saying copyright is for losers<figure><img src="https://images.theconversation.com/files/260677/original/file-20190225-26171-js0yto.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=496&fit=clip" /><figcaption><span class="caption">A visitor enjoys the art of Banksy exhbition at the Mudec Museum in Milan.</span> <span class="attribution"><a class="source" href="http://www.epa.eu/arts-culture-and-entertainment-photos/arts-general-photos/a-visual-protest-the-art-of-banksy-exhibit-photos-54789174">EPA-EFE</a></span></figcaption></figure><p>Copyright is for losers – or so Banksy <a href="https://www.goodreads.com/book/show/114683.Wall_and_Piece">once claimed</a>. But the days of the mysterious artist’s dislike for intellectual property now appear to be long gone, as he has recently <a href="https://www.ilgiorno.it/milano/cronaca/bansky-1.4455040">won a case of unauthorised merchandising in Italy</a>. </p>
<p>The unauthorised copying of Banksy works is widespread – a stroll through London’s popular markets in Camden and Brick Lane, and a quick search online proves that. His work has been printed and reproduced on everything from mugs to mouse mats. But despite previous rumours that Banksy’s lawyers have sent letters to complain about his artworks being exploited, it seems so far that these objections have not made their way into courtrooms. </p>
<p>However, at the end of 2018, <a href="https://www.pestcontroloffice.com/whatispco.html">Pest Control</a>, the handling service that authenticates Banksy’s artworks, took action against an Italian company that organised an exhibition – <a href="https://www.24orecultura.com/art/mostre/2018-07-02/banksy-113835.php">The art of Banksy. A visual protest</a> – for Milan’s Mudec Museum. The event opened in November 2018, and runs until April 2019. </p>
<p>In January, a provisional ruling by a court in Milan ordered the museum to stop selling merchandise which reproduced Banksy’s branded art. While the works on display were either original, or authentic prints, the organisers were also selling products such as notebooks, diaries, postcards, bookmarks and erasers, all of which incorporated Banksy’s art.</p>
<figure class="align-center ">
<img alt="" src="https://images.theconversation.com/files/260670/original/file-20190225-26149-bfk4d2.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=754&fit=clip" srcset="https://images.theconversation.com/files/260670/original/file-20190225-26149-bfk4d2.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=600&h=401&fit=crop&dpr=1 600w, https://images.theconversation.com/files/260670/original/file-20190225-26149-bfk4d2.jpg?ixlib=rb-1.1.0&q=30&auto=format&w=600&h=401&fit=crop&dpr=2 1200w, https://images.theconversation.com/files/260670/original/file-20190225-26149-bfk4d2.jpg?ixlib=rb-1.1.0&q=15&auto=format&w=600&h=401&fit=crop&dpr=3 1800w, https://images.theconversation.com/files/260670/original/file-20190225-26149-bfk4d2.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=754&h=503&fit=crop&dpr=1 754w, https://images.theconversation.com/files/260670/original/file-20190225-26149-bfk4d2.jpg?ixlib=rb-1.1.0&q=30&auto=format&w=754&h=503&fit=crop&dpr=2 1508w, https://images.theconversation.com/files/260670/original/file-20190225-26149-bfk4d2.jpg?ixlib=rb-1.1.0&q=15&auto=format&w=754&h=503&fit=crop&dpr=3 2262w" sizes="(min-width: 1466px) 754px, (max-width: 599px) 100vw, (min-width: 600px) 600px, 237px">
<figcaption>
<span class="caption">Banksy’s flower thrower, as painted in the West Bank village of Beit Sahour.</span>
<span class="attribution"><a class="source" href="https://www.shutterstock.com/image-photo/beit-sahour-occupied-palestinian-territories-june-336012893?src=SGnIU6YY9PkPKJXVoSTOug-1-0">Ryan Rodrick Beiler/Shutterstock</a></span>
</figcaption>
</figure>
<p>Pest Control enforced its trademark rights over the Banksy name and his iconic pieces <a href="https://www.wikiart.org/en/banksy/girl-with-balloon">Girl with balloon</a> and <a href="https://www.wikiart.org/en/banksy/flower-thrower">Flower thrower</a>. It did so to stop the unauthorised merchandising, as well as the use of Banksy imagery in the promotional material produced by the exhibition’s organisers. While the Milan judge noted that the use of Banksy’s name and art on merchandise amounted to trademark infringement, he denied wrongdoings with regards to the promotional material. The court stressed that the use of Banksy’s art on such material is informative in the sense that it is necessary to describe the contents of the show. </p>
<h2>Changing legal strategy</h2>
<p>So should we now expect more legal actions by Banksy, in courts around the world? If the artist, who has long tolerated other people copying, appropriating and exploiting his art, is changing his strategy it wouldn’t be a bad thing. After all, artists have good reasons to ask for intellectual property protection, whether they produce works in the studio or <a href="https://theconversation.com/graffiti-copyright-battles-pitch-artists-against-advertisers-30291">paint in the streets</a>. They put effort and creativity in producing art, and the law should reward them accordingly. And indeed several graffiti writers and street artists have also <a href="https://theconversation.com/big-brands-ripping-off-street-art-is-not-cool-why-illegal-graffiti-should-be-protected-by-copyright-93439">recently fought to protect their works</a> on copyright grounds.</p>
<p>Although the court confirmed that Pest Control trademark registrations were valid, the judge noted that the documents filed in the proceedings showed just limited use of Banksy brand. Basically, the Banksy logo is only used on certificates of authenticity released on Pest Control letterhead, and on some canvas frames. This is a clear weak point in Banksy and Pest Control’s legal strategy going forward. If Banksy wants to keep enforcing any of <a href="https://trademarks.ipo.gov.uk/ipo-tmowner/page/search?id=39918&domain=1&app=0&mark=UK00003354581">his trademarks</a> in courts around the world, and avoid the risk of them being cancelled for lack of use, he will need to show judges stronger evidence of his brands being used in the market. This probably means he needs to start regularly producing and selling his own branded merchandise through a specialised commercial vehicle, which so far has not really happened – and may be considered by Banksy himself as antithetical to the very anti-capitalistic message he wants to convey through his art.</p>
<p>What is also noteworthy in this case is that Pest Control has decided not to enforce Banksy’s copyright. Such a decision doesn’t come as a surprise though, as it would require Pest Control to show judges that it has acquired the copyright from the artist. But this would entail the disclosure of Banksy’s real name, which the artist obviously doesn’t want to reveal as it would remove the aura of mystery surrounding him, and consequently reduce the value of his art.</p>
<p>All in all, this legal action in Milan confirms once again Banksy’s ambiguity. He is an artist that started a suit to stop the commercial and unauthorised use of a brand which he deliberately does not use in the market (probably to avoid blurring the anti-consumerist nature of his art). But Banksy cannot have it both ways. If he wants to fight regularly (and successfully) against the unauthorised exploitation of his works, especially his brands, he will need to accept the market-driven logic underpinning their legal protection, and start a proper business plan which includes merchandising of his own art, as most art entrepreneurs do. After all, it is entirely possible to create art to send anti-establishment messages and at the same time legally protect the commercial side of it.</p><img src="https://counter.theconversation.com/content/112390/count.gif" alt="The Conversation" width="1" height="1" />
<p class="fine-print"><em><span>Enrico Bonadio does not work for, consult, own shares in or receive funding from any company or organisation that would benefit from this article, and has disclosed no relevant affiliations beyond their academic appointment.</span></em></p>Banksy’s legal team has won an action to stop unauthorised products featuring his work alongside an Italian museum exhibition.Enrico Bonadio, Senior Lecturer in Law, City, University of LondonLicensed as Creative Commons – attribution, no derivatives.tag:theconversation.com,2011:article/797912017-06-23T11:17:39Z2017-06-23T11:17:39ZUS Supreme Court decision risks deluge of racist and offensive trademarks<figure><img src="https://images.theconversation.com/files/175268/original/file-20170622-13061-1kc8dt5.jpg?ixlib=rb-1.1.0&rect=2%2C2%2C1617%2C1069&q=45&auto=format&w=496&fit=clip" /><figcaption><span class="caption">
</span> <span class="attribution"><a class="source" href="https://www.flickr.com/photos/thomascbyrd/6221489571/in/photolist-atLsbD-atLL6z-atLsaV-4QkpHb-TWQmaM-TKkofZ-TKkqdX-TKkp5V-TmQyXj-TKkoQM-TGXC9N-TKkphP-TTf6dj-TTf5C1-TmQRtA-SEoKWQ-SEoGmd-TGXGjm-TmQTnA-TWQBKz-TTfc7J-TTf9DN-TmQPH1">The Slants in concert/Tommy Byrd/Flickr</a>, <a class="license" href="http://creativecommons.org/licenses/by-nc/4.0/">CC BY-NC</a></span></figcaption></figure><p>You may not have heard of Asian-American dance-rock band, The Slants, but you may soon be very aware of a troubling precedent set after they <a href="https://www.forbes.com/sites/legalentertainment/2017/06/20/the-slants-win-big-supreme-court-ip-battle/#39c553ce7719">won a contentious legal victory</a> in the US Supreme Court. </p>
<p>Founder and bass player, Simon Tam, first tried to register the band’s name as a trademark in 2011. It was refused because the brand was considered disparaging to people of Asian descent. Tam reckoned the derisive terms of “slants” or “slant eyes” <a href="http://www.rollingstone.com/music/news/inside-asian-american-band-the-slants-scotus-win-w488615">were becoming anachronisms</a>, ripe for re-purposing and a chance for Asian-Americans to have the power over how they were defined.</p>
<p>His success means that the band’s brand is confirmed as registrable because it is protected by the first amendment to the US constitution. The <a href="https://www.supremecourt.gov/opinions/16pdf/15-1293_1o13.pdf">Supreme Court opinion</a>, in effect, says that the registration of a trademark cannot be banned on the grounds it conveys ideas that offend.</p>
<h2>Race is on</h2>
<p>Good for Simon Tam, you might think. But the concern must be that this decision clears the way for the registration of many other names which are “scandalous, immoral or disparaging” – as the language of the law in question would have it. Registration of trademarks not only gives exclusive rights over brands, it encourages their owners to make investments around them and profit from the rights they have gained.</p>
<p>The case which most immediately springs to mind is that of the Washington Redskins. The American football team has been <a href="https://theconversation.com/washington-redskins-trademark-is-lost-but-not-the-game-yet-28192">embroiled in a similar legal fight</a> after the trademark office cancelled six registrations in 2014 under pressure from Native American groups, nearly 50 US senators, and the then-president Barack Obama.</p>
<p>The club’s owner Dan Snyder was <a href="http://www.csnmidatlantic.com/washington-redskins/dan-snyder-thrilled-supreme-court-decision-should-protect-redskins-name">quick to realise</a> the implications of the Slants ruling. “I am THRILLED,” he said in a statement. “Hail to the Redskins!”</p>
<p>Those who praise this ruling may argue that trademark offices and judges should not be concerned with assessing whether a brand name is immoral, scandalous or offensive. Market forces alone – the argument goes – will be able to address such issues. If a brand is genuinely upsetting or scandalous, consumers will vote with their wallets and push the brand out of the market.</p>
<h2>On the edge</h2>
<p>That argument is flawed. I believe the Supreme Court decision is an encouragement to corporations and business people to register and use controversial and scandalous brands in the US in order to acquire market share. Clearly, there are sections of the public who will be attracted to a product or service precisely because of a controversial, unpleasant or even offensive message conveyed by the brand. That will apply particularly in industries such as fashion, where to be rude or “edgy” may pay off. </p>
<p>In a world where sections of the public complain loudly about the <a href="https://www.theguardian.com/australia-news/2015/nov/30/mp-says-tyranny-of-political-correctness-stops-debate-on-islam-and-extremism">tyranny of political correctness</a>, this ruling gives businesses leeway to loudly champion offensive or derogatory trademarks which mark that business out as a defender of those values and ideas. In other words, we will likely discover that offence sells – and may even become a driver of purchasing behaviour.</p>
<p>This shouldn’t be a surprise. Brand identities are often chosen for their ability to shock customers, especially in the youth market, or at least to send ambiguous messages. The FCUK trademark adopted by the fashion company French Connection is a <a href="http://www.independent.co.uk/life-style/fashion/features/fcuk-the-logo-that-became-a-no-no-7704257.html%3Famp">notable example</a>. Beer company Brewdog has sought to <a href="https://theconversation.com/offensive-marketing-can-work-but-not-if-it-vilifies-women-45447">emphasise its “edgy” credentials</a> with brands such as Trashy Blonde.</p>
<figure class="align-center zoomable">
<a href="https://images.theconversation.com/files/175271/original/file-20170622-12027-i1gbay.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=1000&fit=clip"><img alt="" src="https://images.theconversation.com/files/175271/original/file-20170622-12027-i1gbay.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=754&fit=clip" srcset="https://images.theconversation.com/files/175271/original/file-20170622-12027-i1gbay.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=600&h=450&fit=crop&dpr=1 600w, https://images.theconversation.com/files/175271/original/file-20170622-12027-i1gbay.jpg?ixlib=rb-1.1.0&q=30&auto=format&w=600&h=450&fit=crop&dpr=2 1200w, https://images.theconversation.com/files/175271/original/file-20170622-12027-i1gbay.jpg?ixlib=rb-1.1.0&q=15&auto=format&w=600&h=450&fit=crop&dpr=3 1800w, https://images.theconversation.com/files/175271/original/file-20170622-12027-i1gbay.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=754&h=566&fit=crop&dpr=1 754w, https://images.theconversation.com/files/175271/original/file-20170622-12027-i1gbay.jpg?ixlib=rb-1.1.0&q=30&auto=format&w=754&h=566&fit=crop&dpr=2 1508w, https://images.theconversation.com/files/175271/original/file-20170622-12027-i1gbay.jpg?ixlib=rb-1.1.0&q=15&auto=format&w=754&h=566&fit=crop&dpr=3 2262w" sizes="(min-width: 1466px) 754px, (max-width: 599px) 100vw, (min-width: 600px) 600px, 237px"></a>
<figcaption>
<span class="caption">Edgy? Or just naff?</span>
<span class="attribution"><a class="source" href="https://www.flickr.com/photos/soumit/77705281/in/photolist-6kJQur-6uaXPq-x6xV-5NrdiP-9fTsUx-7Sg5e-pFeFKX-45oPM-4gpHch-qn6thc-qn6t9g-q5FC2x-86cWbL-4KzTaU-9ztW71-4EbVZg-88Le28-7qaD6i-9ztW4N-9zqXcr-8SfW7z-93pGXk-8VLH4A-8Sj33s-8UuayE-9ztW1o-8Ur6n2-8UubWU-bhpsk-qn34jq">Soumit Nandi/Flickr</a>, <a class="license" href="http://creativecommons.org/licenses/by-nc-nd/4.0/">CC BY-NC-ND</a></span>
</figcaption>
</figure>
<p>Some of these attempts are clearly distasteful, especially when the aim is to capitalise on tragedies. One Malaysian company <a href="https://theconversation.com/shock-marketing-reached-new-lows-with-mh17-trademarking-29721">filed an application</a> with the Australian trademark office to register the name MH17, just hours after the Malaysian Airlines flight had crashed into fields in eastern Ukraine, killing everyone on board. And dozens of people rushed to file trademark applications for exclusive rights <a href="http://www.mirror.co.uk/news/world-news/charlie-hebdo-opportunists-attempt-trademark-4979188">over the brand “Je suis Charlie”</a>, just days after the terrorist attack at the Charlie Hebdo offices in Paris.</p>
<p>These examples highlight why it is important for governments to maintain the ability to police the registration of these types of trademarks. There needs to be a mechanism to stop registrations which go beyond what is broadly accepted as decent and which seek to win consumers’ attention with brands which reinforce offensive views, or which cause needless distress to groups of people.</p>
<h2>F**king freezing</h2>
<p>Countries other than US are quite strict when it comes to denying registration, and discouraging the use of offensive brands. In Europe for example trademark offices and judges have <a href="http://ipkitten.blogspot.co.uk/2011/10/paki-sent-packing-as-general-court-gets.html">refused to protect</a> racist terms such as “Paki” or words with sexually explicit or vulgar content, <a href="https://www.ipo.gov.uk/t-challenge-decision-results/o53801.pdf">such as “Tiny Penis”</a>, <a href="https://www.out-law.com/articles/2006/august/profane-trade-mark-rejected-except-for-sex-shop-use/">“Screw you”</a> and <a href="http://www.merkwerk.nl/1736/decision-to-refuse-the-trademark-fucking-freezing-confirmed-by-board-of-appeal">“Fucking freezing”</a>. </p>
<p>Some of these decisions were based on the assumption that the refusal to register these words does not infringe free speech rights, a position diametrically opposed to the one taken by the US Supreme Court in The Slants case. The ability to prohibit the registration of controversial brands is perceived in Europe as necessary to safeguard decency and morality in the course of trade and more importantly, protect ethnic and religious minorities as well as vulnerable people, including children.</p>
<p>Perhaps, if the US market eventually becomes flooded with openly racist and deliberately offensive brands, the Supreme Court will understand its mistake.</p><img src="https://counter.theconversation.com/content/79791/count.gif" alt="The Conversation" width="1" height="1" />
<p class="fine-print"><em><span>Enrico Bonadio does not work for, consult, own shares in or receive funding from any company or organisation that would benefit from this article, and has disclosed no relevant affiliations beyond their academic appointment.</span></em></p>Have American companies just been given the green light to deploy “edgy” branding that goes way too far?Enrico Bonadio, Senior Lecturer in Law, City, University of LondonLicensed as Creative Commons – attribution, no derivatives.tag:theconversation.com,2011:article/694372016-11-25T15:55:07Z2016-11-25T15:55:07ZIt’s Iceland vs Iceland as trademark row erupts between country and frozen supermarket chain<figure><img src="https://images.theconversation.com/files/147603/original/image-20161125-32054-1n5yx2n.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=496&fit=clip" /><figcaption><span class="caption">Northern bites not northern lights.</span> <span class="attribution"><a class="source" href="https://www.flickr.com/photos/alwyn_ladell/20955478558/">Alwyn Ladell/Flickr</a>, <a class="license" href="http://creativecommons.org/licenses/by-nc-nd/4.0/">CC BY-NC-ND</a></span></figcaption></figure><p>Under European <a href="https://euipo.europa.eu/ohimportal/en/eu-trade-mark-legal-texts?doAsUserId=gnjdOOyysRs=">trademark law</a> it is possible to obtain wide-ranging protection for a single word such as “Apple”, “Google” or “Gucci” – which gives the owner the exclusive right to use the mark in commercial contexts in the EU. Single words like these can, over time, develop a great deal of brand power, so much so that consumers are willing to pay a premium <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=2874940">to purchase the branded goods</a>.</p>
<p>Most of the time brands in the marketplace do not generate controversy. But whenever the potential for consumer confusion arises, competing businesses often go to war over trademarks. Prominent recent examples include chocolate maker Lindt and sweet company Haribo going to court <a href="https://theconversation.com/chocolate-war-in-the-court-room-as-kitkat-fingers-and-lindt-bears-take-the-stand-48524">over the “Gold Bear” mark</a> and the continuing dispute <a href="http://www.retailgazette.co.uk/blog/2016/09/asos-pays-out-20-pounds-2-pence-million-in-trademark-battles">between Asos and Assos</a>.</p>
<p>This leads us to the <a href="https://www.theguardian.com/world/2016/nov/24/government-of-iceland-to-challenge-retail-chain-iceland-over-name-use">fascinating current battle</a> between the Icelandic government and “Iceland”, the UK-based but South African-owned supermarket chain. Iceland Foods – the supermarket that specialises in frozen food – was granted the EU-wide trademark for the word “Iceland” <a href="https://euipo.europa.eu/eSearch/#details/trademarks/002673374">in 2014</a>. </p>
<figure class="align-center ">
<img alt="" src="https://images.theconversation.com/files/147590/original/image-20161125-32026-1yoqcmr.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=754&fit=clip" srcset="https://images.theconversation.com/files/147590/original/image-20161125-32026-1yoqcmr.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=600&h=374&fit=crop&dpr=1 600w, https://images.theconversation.com/files/147590/original/image-20161125-32026-1yoqcmr.jpg?ixlib=rb-1.1.0&q=30&auto=format&w=600&h=374&fit=crop&dpr=2 1200w, https://images.theconversation.com/files/147590/original/image-20161125-32026-1yoqcmr.jpg?ixlib=rb-1.1.0&q=15&auto=format&w=600&h=374&fit=crop&dpr=3 1800w, https://images.theconversation.com/files/147590/original/image-20161125-32026-1yoqcmr.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=754&h=469&fit=crop&dpr=1 754w, https://images.theconversation.com/files/147590/original/image-20161125-32026-1yoqcmr.jpg?ixlib=rb-1.1.0&q=30&auto=format&w=754&h=469&fit=crop&dpr=2 1508w, https://images.theconversation.com/files/147590/original/image-20161125-32026-1yoqcmr.jpg?ixlib=rb-1.1.0&q=15&auto=format&w=754&h=469&fit=crop&dpr=3 2262w" sizes="(min-width: 1466px) 754px, (max-width: 599px) 100vw, (min-width: 600px) 600px, 237px">
<figcaption>
<span class="caption">The power of frozen.</span>
<span class="attribution"><a class="source" href="https://www.flickr.com/photos/aigle_dore/10017474965/">Moyan Brenn/flickr</a>, <a class="license" href="http://creativecommons.org/licenses/by/4.0/">CC BY</a></span>
</figcaption>
</figure>
<p>The effect of this has proven to be controversial in the country of Iceland – which is not a member of the EU, but is a major exporter of frozen fish and seafood to the EU – because native companies claim they are being restricted from promoting their Icelandic goods due to the existence of the frozen food specialist’s EU-registered mark. “Iceland Gold”, an Icelandic fish company, and “Clean Iceland”, a specialist seller of Icelandic national products, have reportedly <a href="https://www.ft.com/content/88a59b0e-b260-11e6-a37c-f4a01f1b0fa1">had trouble doing business</a> in the EU due to the supermarket’s ownership of the trademark.</p>
<p>The Icelandic government has now begun legal proceedings to cancel the trademark at the <a href="https://euipo.europa.eu/ohimportal/en">EU Intellectual Property Office</a> in Alicante, Spain. Importantly, the Icelandic government has stressed that it is not seeking to force the supermarket to register a new name for its core business – what <a href="http://news.sky.com/story/iceland-mounts-legal-action-against-iceland-over-name-rights-10670340">it is seeking</a> to do is end the supermarket’s right to assert the Iceland trademark to block their companies from using “Iceland”.</p>
<blockquote>
<p>The government of Iceland is concerned that our country’s businesses are unable to promote themselves across Europe in association with their place of origin – a place of which we are rightly proud and enjoys a very positive national branding. </p>
</blockquote>
<p>Iceland Foods, meanwhile, has countered <a href="https://www.ft.com/content/88a59b0e-b260-11e6-a37c-f4a01f1b0fa1">by saying</a>: “We have been trading successfully for 46 years under the name Iceland and do not believe that any serious confusion or conflict has ever arisen in the public mind, or is likely to do so.” </p>
<h2>Twelve years in the making</h2>
<p>One significant factor that could count against the Icelandic government’s legal challenge is that the application for the Iceland trademark – granted in 2014 – was actually filed by the supermarket chain back in 2002. The reason it took 12 years before the mark was granted was that the application passed through a lengthy and rigorous “opposition” process, which involved the weighing up of the various pros and cons of allowing the mark from various perspectives, most notably the possibility of consumer confusion arising between the “Iceland” mark and any prior existing marks.</p>
<p>Given that Iceland (the country) does not itself seem to own any conflicting trademarks in the name Iceland, it’s hard to see how the Icelandic government can raise any grounds that have not already been dealt with during the application and opposition period from 2002 to 2014.</p>
<figure class="align-center ">
<img alt="" src="https://images.theconversation.com/files/147592/original/image-20161125-32012-ovv4fe.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=754&fit=clip" srcset="https://images.theconversation.com/files/147592/original/image-20161125-32012-ovv4fe.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=600&h=367&fit=crop&dpr=1 600w, https://images.theconversation.com/files/147592/original/image-20161125-32012-ovv4fe.jpg?ixlib=rb-1.1.0&q=30&auto=format&w=600&h=367&fit=crop&dpr=2 1200w, https://images.theconversation.com/files/147592/original/image-20161125-32012-ovv4fe.jpg?ixlib=rb-1.1.0&q=15&auto=format&w=600&h=367&fit=crop&dpr=3 1800w, https://images.theconversation.com/files/147592/original/image-20161125-32012-ovv4fe.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=754&h=462&fit=crop&dpr=1 754w, https://images.theconversation.com/files/147592/original/image-20161125-32012-ovv4fe.jpg?ixlib=rb-1.1.0&q=30&auto=format&w=754&h=462&fit=crop&dpr=2 1508w, https://images.theconversation.com/files/147592/original/image-20161125-32012-ovv4fe.jpg?ixlib=rb-1.1.0&q=15&auto=format&w=754&h=462&fit=crop&dpr=3 2262w" sizes="(min-width: 1466px) 754px, (max-width: 599px) 100vw, (min-width: 600px) 600px, 237px">
<figcaption>
<span class="caption">Colourful signage.</span>
<span class="attribution"><a class="source" href="https://www.flickr.com/photos/aigle_dore/22080011281/">Moyan Brenn/flickr</a>, <a class="license" href="http://creativecommons.org/licenses/by/4.0/">CC BY</a></span>
</figcaption>
</figure>
<p>Nonetheless, the dispute brings up a pertinent question: should it ever be possible to register the name of a country, regardless of what the business is involved in and whether or not there is any likelihood of confusion? </p>
<p>Interestingly, trademark law already mandates some strict restrictions based on nationality – in accordance with Article 3(2) of the <a href="http://eur-lex.europa.eu/legal-content/en/TXT/?uri=CELEX%3A32015L2436">EU Trademark Directive</a> and Article 6 of <a href="http://www.wipo.int/article6ter/en/">the Paris Convention</a> – that national flags and emblems cannot be registered as trademarks. In other words, the flags and symbols of a nation must be excluded from registration. But there is nothing in the law to stop the name of a country becoming a trademark – as has happened in the present case.</p>
<p>Given the energy and resources that will necessarily have to be expended by Iceland (the country) and Iceland (the company) in order to continue this fight, we can only hope that the two parties are able to come to some settlement that allows the supermarket to continue using its well-known brand and, at the same time, allows Icelandic companies to take advantage of their country’s reputation for excellent seafood, fish and other goods.</p><img src="https://counter.theconversation.com/content/69437/count.gif" alt="The Conversation" width="1" height="1" />
<p class="fine-print"><em><span>Luke McDonagh does not work for, consult, own shares in or receive funding from any company or organisation that would benefit from this article, and has disclosed no relevant affiliations beyond their academic appointment.</span></em></p>Can Iceland (the country) force Iceland (the supermarket) to give up its trademark?Luke McDonagh, Lecturer in Law, City, University of LondonLicensed as Creative Commons – attribution, no derivatives.tag:theconversation.com,2011:article/675002016-10-31T02:13:12Z2016-10-31T02:13:12ZWhat do cheerleader uniforms and smartphones have in common?<p>Cheerleader uniforms, with their bright colors and striking patterns, are intended to arouse school spirit and showcase athletic prowess. This seems a world apart from the technologically sophisticated field of smartphones, which allow us to find obscure information, socially interact and transact business while on the go.</p>
<p>But these two consumer products have one key feature in common. They both embody an essential aspect of what makes modern products successful: design. </p>
<p>Consumers are <a href="http://www.marketwired.com/press-release/survey-shows-consumers-attracted-to-physique-of-new-iphone-1691114.htm">increasingly attracted</a> to distinctive design over functionality in products as diverse as coffee pots and ride-sharing apps. The growing importance of innovative design in functional products is causing businesses to claim protection of their intellectual property (IP) rights in ways that stretch the limits of existing law.</p>
<p>In view of the changing consumer marketplace, it is not surprising that cheerleader uniforms and smartphones are before the Supreme Court this term. These two cases may reshape our current boundaries of intellectual property law, altering the choices that consumers have in the marketplace and the manner in which businesses compete.</p>
<p>As business law professors specializing in the <a href="http://www.e-elgar.com/shop/the-changing-face-of-us-patent-law-and-its-impact-on-business-strategy">impact of patent law on business strategy</a> with a combined 35 years’ experience teaching intellectual property law to future managers, we were intrigued by the question of IP design protection that appears in these two seemingly dissimilar cases. This is precisely the type of emerging legal issue that successful businesses must identify early and craft strategies to address.</p>
<h2>Design vs. utility</h2>
<p>Traditionally, the mainstay of American intellectual property protection has been <a href="https://www.law.cornell.edu/patent/35uscs101.html">utility patents</a>. </p>
<p>These are very strong but limited (in terms of time and subject matter) property rights issued by the <a href="http://www.uspto.gov">United States Patent and Trademark Office</a> to protect useful inventions. Many of the features of your smartphone, for example, are covered by utility patents (whether owned by the manufacturer or licensed from another company). </p>
<p>Design patents, copyrights and trademarks, on the other hand, are available to protect aesthetic features, but only to the extent that those features are not functional. The <a href="https://www.law.cornell.edu/patent/patent.overview.html">Patent Act</a>, for example, draws a clear distinction along these lines between utility and <a href="https://www.law.cornell.edu/patent/35uscs171.html">design patents</a>. The <a href="http://www.copyright.gov/title17/">Copyright Act</a> extends copyright protection only to those design features that are independent and separable from <a href="https://www.law.cornell.edu/uscode/text/17/101">“the utilitarian aspects of the article.”</a> In the trademark area, a <a href="https://scholar.google.com/scholar_case?case=12704680276957369308&q=traffix+devices+v+marketing+displays&hl=en&as_sdt=80000006">2001 Supreme Court decision</a> confirmed that functional designs may not receive a federal trademark registration.</p>
<p>This functional/nonfunctional divide means that there can be no overlap between utility patents and the other forms of intellectual property protection. However, design patents, copyrights and trademarks can overlap and be used creatively by businesses to ensure maximum legal protection. The classic Coca-Cola bottle, for example, was originally covered by a design patent and is now trademarked. Similarly, the iconic <a href="https://en.wikipedia.org/wiki/Troll_doll">Dam Troll doll</a> was originally protected through both design patent and copyright.</p>
<h2>The Supreme Court steps in</h2>
<p>Consumer electronics titan <a href="http://fortune.com/2016/10/10/apple-supreme-court-samsung/">Apple is pursuing a design patent infringement case</a> against rival Samsung Electronics for alleged theft of its smartphone inventions and designs.</p>
<p>According to Apple, its elegant <a href="http://www.apple.com/iphone/">iPhone</a> shape and distinctive graphical icon display was copied by Samsung in an attempt to free-ride on Apple’s success. Samsung responded that its decision to incorporate similar design elements was dictated by the function of a smartphone and need for it to fit in a pocket. </p>
<p><a href="http://fortune.com/2015/12/04/samsung-pay-apple-patents/">Samsung lost at trial</a> in 2012 and was assessed damages of over US$1 billion (later reduced). The part of the case related to Apple’s design patents was appealed to the Supreme Court. The question for the court was whether Apple’s damages should be based on sales of the entire, functional phone or just the value added by aspects of the design embodied by Apple’s patents (the rounded, rectangular shape and distinctive screen icons). </p>
<p>Fundamentally, the case is about the need to separate – and value – consumer interest in the functional from the aesthetic. <a href="http://www.scotusblog.com/case-files/cases/samsung-electronics-co-v-apple/">Samsung Electronics Co. v. Apple</a> was heard by the Supreme Court on Oct. 11, with the decision expected later this term.</p>
<p>In <a href="http://www.scotusblog.com/case-files/cases/star-athletica-llc-v-varsity-brands-inc/">Star Athletica v. Varsity Brands</a>, athletic wear producer Varsity is seeking to protect its distinctive cheerleading uniform designs through copyright law. Varsity <a href="http://www.insidecounsel.com/2016/05/18/star-athletica-llc-vs-varsity-brands-case-continue">routinely registers</a> its stripes, chevrons and color block designs with the <a href="http://www.copyright.gov">U.S. Copyright Office</a>. When Varsity discovered that a competitor, Star Athletica, was selling uniforms with similar designs, it sued. Star Athletica countered that these design features are inseparable from the function of cheerleader uniforms. </p>
<p>Although this dispute appears straightforward – is one firm profiting from the theft of another’s creativity? – the framework for deciding is actually quite elusive (or, in the words of the lower appellate court, “<a href="https://scholar.google.com/scholar_case?case=6647443193299993535&q=star+athletica&hl=en&as_sdt=80000006">the law in this area is a mess</a>”). If we give Varsity too much control over the basic design elements of sports uniforms, how will other companies be able to compete and offer a choice to consumers? But if we don’t protect Varsity’s interest in its designs, what incentives does it have to continue to innovate and create?</p>
<p>The Supreme Court will hear oral argument in the case on Oct. 31.</p>
<h2>The blurring of form and function</h2>
<p>Is it a coincidence that the Supreme Court is deciding two cases involving intellectual property protection of design in a single term? </p>
<p>This is the first design patent case heard by the court <a href="https://scholar.google.com/scholar_case?case=3827183348270548637&q=dobson+v.+hartford+carpet&hl=en&as_sdt=80000006">in over 100 years</a>. And it is the first time the court has looked at copyright in the design aspects of functional items <a href="https://scholar.google.com/scholar_case?case=11977251527545760686&q=mazer+v+stein&hl=en&as_sdt=80000006">in over 60 years</a>.</p>
<p>It’s no coincidence. Rather, the court’s docket mirrors the realities of the consumer marketplace. The <a href="http://journals.ama.org/doi/abs/10.1509/jm.15.0036">literature</a> suggests that consumers are increasingly motivated by design when making their purchasing decisions. This is particularly true when the competing products <a href="http://www.sciencedirect.com/science/article/pii/S1057740810000768">share increasingly similar functional characteristics</a>. How a product looks, in addition to how it functions, <a href="http://journals.ama.org/doi/abs/10.1509/jm.14.0199">is becoming increasingly important to consumer choice</a>. </p>
<p>At the same time, businesses are finding that technological advances in production methods and materials enable them to employ more innovative designs, which further feeds consumer interest.</p>
<p>On the other hand, technology also enables competition. Low-cost copying and production from China and elsewhere, inexpensive contract manufacturing that permits designs to be easily sourced from parts manufacturers and low-cost 3-D printing have lowered barriers to entry. Businesses can no longer rely solely upon R&D, manufacturing skill, efficiency or first-mover advantages to protect their competitive advantage.</p>
<figure class="align-right ">
<img alt="" src="https://images.theconversation.com/files/143818/original/image-20161030-15810-fx50m9.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=237&fit=clip" srcset="https://images.theconversation.com/files/143818/original/image-20161030-15810-fx50m9.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=600&h=360&fit=crop&dpr=1 600w, https://images.theconversation.com/files/143818/original/image-20161030-15810-fx50m9.jpg?ixlib=rb-1.1.0&q=30&auto=format&w=600&h=360&fit=crop&dpr=2 1200w, https://images.theconversation.com/files/143818/original/image-20161030-15810-fx50m9.jpg?ixlib=rb-1.1.0&q=15&auto=format&w=600&h=360&fit=crop&dpr=3 1800w, https://images.theconversation.com/files/143818/original/image-20161030-15810-fx50m9.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=754&h=452&fit=crop&dpr=1 754w, https://images.theconversation.com/files/143818/original/image-20161030-15810-fx50m9.jpg?ixlib=rb-1.1.0&q=30&auto=format&w=754&h=452&fit=crop&dpr=2 1508w, https://images.theconversation.com/files/143818/original/image-20161030-15810-fx50m9.jpg?ixlib=rb-1.1.0&q=15&auto=format&w=754&h=452&fit=crop&dpr=3 2262w" sizes="(min-width: 1466px) 754px, (max-width: 599px) 100vw, (min-width: 600px) 600px, 237px">
<figcaption>
<span class="caption">The courts are trying to determine whether a Direct Technologies flash drive with the design of Electronic Arts’ Sims Plumbob icon can qualify for copyright protection.</span>
<span class="attribution"><a class="source" href="https://www.flickr.com/photos/kriisi/6156436984/in/photolist-5CVND5-6N5k9s-4z54Em-6ypBtY-6EFuwN-7KAbK1-87RQKV-87V3gL-doLihk-9R3J3F-6uT36D-4EUxqk-6uX83s-7Q3Dzc-6okNH2-6HjM9D-h1pGT-8p2tNG-cs95KG-ao2mef">Kirsi L-M via flickr</a>, <a class="license" href="http://creativecommons.org/licenses/by-nc-nd/4.0/">CC BY-NC-ND</a></span>
</figcaption>
</figure>
<p>As a result, protection of product appearance through copyright, design patents and trademark is of growing importance to consumer product industries. The lower courts are seeing numerous cases in this area, such as disputes over trademark rights in the <a href="http://www.businesswire.com/news/home/20160627005384/en/Skechers-Scores-Major-Victory-Trademark-Dispute-Converse">design of Chuck Taylor shoes</a>, <a href="http://www.lexology.com/library/detail.aspx?g=4c840d4b-3ad9-4cce-b1ab-9573bd736681">design patent rights in inflatable lounge chairs</a> and the copyright in <a href="http://www.lexology.com/library/detail.aspx?g=72fad203-6055-4ef5-bccc-0c1e7dbd3518">a flash drive design based upon the Sims Plumbob icon</a>. </p>
<h2>The perils of expansive design rights</h2>
<p>Both consumers and businesses have reason to be concerned about the ramifications of aggressive expansion of IP protection of design in functional products. </p>
<p>Pro-IP rights decisions by the court in Samsung v. Apple and Star Athletica v. Varsity Brands could strengthen the intellectual property rights of the first business to create (or seek to protect) a design, but at the expense of competition and consumer choice. Utility patents are expensive to obtain and maintain, subject to rigorous examination and have relatively short time limits. If companies can use more easily obtainable aesthetic design rights to avoid the deliberate legal hurdles against functional protection, they can limit competition, leading to higher prices and fewer options in the marketplace for consumers.</p>
<p>Unfortunately, the solution is not as simple as denying intellectual property protection to the design features of functional products. Without some protection, competitors can easily appropriate the market share earned by those who invest in innovative design. </p>
<p>Taken to an extreme, a complete disconnect between function and form could enable counterfeiting and piracy. This is particularly true if some consumers are willing to accept a trade-off of lower quality or functionality of a <a href="http://www.reuters.com/article/us-jaguar-land-rover-china-lawsuit-idUSKCN0YP1JJ?feedType=RSS&feedName=businessNews&utm_source=Twitter&utm_medium=Social&utm_campaign=Feed%3A+reuters%2FbusinessNews+%28Business+News%29">lookalike car</a> or <a href="http://www.dezeen.com/2015/03/25/ikea-faces-legal-action-over-alleged-copyright-infringement-melltorp-dining-emeco-norman-foster-20-06-stacking-chair/">chair</a> in exchange for a lower price.</p>
<p>Intellectual property policy represents a delicate balance between innovation incentives and competition. When that balance is disrupted or simply reset, it is everyone’s concern.</p><img src="https://counter.theconversation.com/content/67500/count.gif" alt="The Conversation" width="1" height="1" />
<p class="fine-print"><em><span>The authors do not work for, consult, own shares in or receive funding from any company or organization that would benefit from this article, and have disclosed no relevant affiliations beyond their academic appointment.</span></em></p>The Supreme Court is considering two cases stemming from the merger of design and function that could reshape intellectual property law. Can we protect innovation without impeding fair competition?Lynda J. Oswald, Professor of Business Law, University of MichiganDan Cahoy, Professor of Business Law, Penn StateLicensed as Creative Commons – attribution, no derivatives.tag:theconversation.com,2011:article/637472016-08-12T20:10:49Z2016-08-12T20:10:49ZHow the IOC effectively maintains a gag order on nonsponsors of the Olympics<p>If you’re one of the <a href="http://www.statista.com/statistics/287966/olympic-games-tv-viewership-worldwide/">billions of people</a> around the world following the 2016 Rio Olympic Games in any form, you’re probably aware of its most talked-about sports moments. Simone Biles of the United States (with dual Belizean citizenship) confirming her spot as the <a href="http://www.nytimes.com/2016/08/12/sports/olympics/simone-biles-womens-gymnastics-all-around-gold.html">world’s best gymnast</a>. The Fiji men’s rugby team’s <a href="http://www.nbcolympics.com/news/fiji-wins-first-ever-mens-rugby-sevens-gold-medal">emotional gold medal win</a> – the first in their country’s history. French gymnast Samir Ait Said’s <a href="http://www.independent.co.uk/sport/olympics/rio-2016-french-gymnast-samir-ait-said-suffers-shocking-broken-leg-in-mens-gymnastics-qualifying-a7176811.html">horrible leg injury</a> during the men’s qualifying rounds. </p>
<p>You may also have noticed a <a href="https://theconversation.com/will-social-media-define-the-success-of-the-olympic-games-63021">flood of social media posts</a> using hashtags like #Rio2016, #Olympics or #TeamUSA. Given that the 2016 Olympic Games have been dubbed the “<a href="http://www.adweek.com/socialtimes/on-social-media-the-summer-olympics-have-already-begun/637472">most watched and talked-about Games on social media yet</a>,” this isn’t surprising. What may be, though, is the silence of most companies regarding the games. </p>
<p><div data-react-class="Tweet" data-react-props="{"tweetId":"763941179104780288"}"></div></p>
<p>Whether on television or the internet, the vast majority of businesses are blocked from nearly any mention of the 2016 Olympic Games – whether in conjunction with promoting their own products or even just saluting their national teams. The reason for this silence is rooted in U.S. <a href="http://scholarship.law.umn.edu/mjlst/vol14/iss2/5">trademark law</a> and other laws <a href="http://scholarcommons.sc.edu/scjilb/vol9/iss2/7">around the world</a> created solely to protect the Olympics. </p>
<p>As a trademark law professor and director of Drake University Law School’s Intellectual Property Law Center, I believe these laws have been stretched too far. As currently applied, it’s hard for companies, especially small businesses, to know when their activities are illegal. And it’s increasingly difficult to obtain permission to do the right thing. </p>
<h2>Olympic properties under lock and key</h2>
<p>The International Olympic Committee (IOC), which organizes the Olympic Games, owns many <a href="http://www.wipo.int/wipo_magazine/en/2012/03/article_0003.html">Olympic-related trademarks</a> – commonly referred to as the “Olympic properties.” These include the interlaced ring symbol, flag, anthem, motto, emblems, mascots, the word “Olympic” and other Olympic-related terminology. As one might imagine, this list could include hundreds, or thousands, of items. While there is no official count, the IOC provides some <a href="https://stillmed.olympic.org/Documents/THE%20IOC/IOC_guide_media_web%2029.11.13.pdf">guidance regarding permitted uses</a>. </p>
<p>In the U.S., <a href="http://www.teamusa.org/brand-usage-guidelines">protected trademarks include</a> the Olympic rings, torch designs, the words “Olympic,” “Paralympic” and “Pan American” as well as any other word or symbol that suggests an association with the USOC, the American team or the Olympic Games themselves. A recent search of the United States Trademark Electronic Search System reveals more than 200 trademarks, including “Olympian,” “future Olympian,” “road to Rio,” “rumble in Rio,” “train like an Olympian,” “let the games begin” and “go for the gold.”</p>
<p><div data-react-class="Tweet" data-react-props="{"tweetId":"763122411285929985"}"></div></p>
<p>These trademarks are protected through the same domestic trademark laws that apply to any other entity doing business in a country. Most companies protect their trademarks to identify and distinguish themselves in the marketplace. If anyone uses that protected trademark without permission, a company has to sue and prove that consumers are likely to be confused by that unauthorized use. </p>
<p>But the IOC has also obtained unique, heightened protections that don’t extend to other companies. First, a 52-country <a href="http://www.wipo.int/treaties/en/ip/nairobi/">international agreement</a> guards the interlaced ring symbol against commercial use without the IOC’s consent. Each signatory nation can receive a portion of the revenues generated domestically if the IOC does consent to specific uses of the symbol. Between the 1988 Seoul Games and 2004 Athens Games, <a href="http://www.herrick.com/content/uploads/2016/01/501af2f1c2ecb013fa9a12be49882f90.pdf">more than US$300 million</a> was generated in licensing royalties, some of which went to the host countries.</p>
<p>Second, countries that host the games often create new, special laws to safeguard the Olympic properties above and beyond other existing law. These laws <a href="http://www.inta.org/TrademarkBasics/FactSheets/Pages/ProtectionofOlympicTrademarks.aspx">prohibit certain marketing tactics</a> by companies that aren’t official sponsors. Any new law typically provides much broader protection than basic trademark law and makes it easier to stop unauthorized activities. One day before Rio de Janeiro was chosen to host the 2016 Olympic Games, Brazil enacted the Olympic Act; it <a href="http://illinoisjltp.com/journal/wp-content/uploads/2013/10/Bacalao.pdf">includes language</a> that specifically protects the Olympic properties from unauthorized uses.</p>
<h2>Don’t cross the IOC</h2>
<p>The IOC is notorious for its aggressive protection of the Olympic properties. Its stated purpose for this <a href="https://stillmed.olympic.org/Documents/THE%20IOC/IOC_guide_media_web%2029.11.13.pdf">fierce vigilance stems from</a> a desire to make sure “the integrity and value of the Olympic properties are respected.” </p>
<p>This stance also extends to country-specific Olympic organizations. The United States Olympic Committee (USOC), for example, has stated it’s intensely protective of its Olympic properties because it does not receive federal money to support athletes; it’s left to generate funds <a href="http://www.teamusa.org/brand-usage-guidelines">primarily through licensing, sponsorships and partnerships</a> based on the properties. </p>
<p>Unlike in other countries, American Olympic athletes are not financially supported by the government. There are no comprehensive statistics about how much these athletes get paid from the USOC, but media report their <a href="https://www.washingtonpost.com/sports/olympics/olympic-executives-cash-in-on-a-movement-that-keeps-athletes-poor/2016/07/30/ed18c206-5346-11e6-88eb-7dda4e2f2aec_story.html">salaries are paltry</a>. One study found that half of elite American track and field athletes make <a href="http://www.indystar.com/story/sports/2014/06/23/pro-track-athletes-make-little/11282551/">less than $15,000 a year</a>.</p>
<p>Fierce patrolling of the Olympic trademarks has led to significant clashes between the IOC, USOC and the public. In perhaps the most famous American case, the USOC <a href="http://digitalcommons.pace.edu/cgi/viewcontent.cgi?article=1503&context=plr">successfully sued</a> San Francisco Arts & Athletics, Inc. in 1982 to stop it from using the word “Olympic” in its Gay Olympic Games. The USOC has also threatened lawsuits against and forced name changes for the <a href="http://usatoday30.usatoday.com/news/offbeat/2005-08-13-ferretagilitytrials_x.htm">Ferret Olympics</a>, <a href="http://www.freerepublic.com/focus/f-news/985506/posts">Rat Olympics</a> and <a href="http://www.wsj.com/articles/SB121755420607703167">Olympets</a>, among others.</p>
<p>So who can actually use Olympic properties legally? Regular people, news entities and official sponsors are in the clear. TV companies have paid more than <a href="http://www.iol.co.za/olympics-rio-2016/opinion/rio-2016---the-richest-games-ever-2053926">$4 billion </a>to broadcast the 2016 Olympic Games. This year, the 11 official sponsors are poised to make <a href="http://www.independent.co.uk/news/business/analysis-and-features/rio-2016-olympic-games-richest-ever-usain-bolt-mo-farah-a7171811.html">more than $9 billion in marketing revenue</a>, and much of this value comes from keeping everyone else out.</p>
<p>Other businesses and brands, including an athlete’s individual sponsors, are severely restricted. The IOC <a href="http://www.adweek.com/news/advertising-branding/how-olympics-new-advertising-rules-will-impact-athletes-and-brands-rio-172372">did change its rules this year</a> to allow athletes, for the first time, to tweet about their nonofficial sponsors and do <a href="http://money.cnn.com/2016/07/11/news/companies/usoc-olympics-ads-sponsors/">generic commercials</a> that do not refer to the Olympics or use any Olympic properties. Olympic track star Allyson Felix, for example, has tweeted her ad for Bounty paper towels in this manner. </p>
<p><div data-react-class="Tweet" data-react-props="{"tweetId":"757963693506256897"}"></div></p>
<h2>Cease and desist your retweets</h2>
<p>Even with these changes, the IOC and USOC make it difficult for nonsponsoring businesses. Just weeks before the 2016 Olympic Games began, ESPN revealed that the <a href="http://www.espn.com/olympics/story/_/id/17120510/united-states-olympic-committee-battle-athletes-companies-sponsor-not-olympics">USOC sent reminder letters</a> to businesses that have endorsement deals with Olympic athletes but which are not official sponsors of the games. The letters reiterated that such companies “may not post about the Trials or Games on their corporate social media accounts,” including using “hashtags such as #Rio2016 or #TeamUSA.”</p>
<p>In addition, unless the company is news-oriented, it is not allowed to speak about Olympic results, share photos taken at the Olympics, or retweet or share anything from official Olympic social media accounts.</p>
<p>Oiselle, an athletic wear company, is one nonofficial sponsor that recently <a href="http://www.courant.com/business/hc-olympics-twitter-ban-20160811-story.html">found itself at odds with the USOC</a>. It received a takedown letter from the USOC after posting a photo of Kate Grace, a runner with an Oiselle endorsement deal, when she won the 800-meter race at the summer trials. According to the company’s CEO, such behavior is frustrating for smaller companies who contribute to individual athletes but cannot afford to be an official Olympic sponsor – that club is limited to 11 deep-pocketed multinationals <a href="https://www.rio2016.com/en/sponsors">including McDonald’s and P&G</a>. It also harms athletes without big endorsement deals, who could better capitalize on their success if the boundaries were relaxed.</p>
<p>Most American Olympic athletes have day jobs and <a href="https://theconversation.com/how-do-olympic-athletes-pay-the-electric-bill-63157">scramble to make a living</a> while pursuing their sport. While protecting Olympic trademarks helps keep the properties valuable, these aggressive tactics keep companies with real connections to Olympic athletes from participating in the excitement of the Olympic Games. Maybe loosening control a bit would allow more money to get to the athletes themselves. After all, it’s their amazing accomplishments that add the real value to the Olympic Games.</p><img src="https://counter.theconversation.com/content/63747/count.gif" alt="The Conversation" width="1" height="1" />
<p class="fine-print"><em><span>Shontavia Johnson does not work for, consult, own shares in or receive funding from any company or organization that would benefit from this article, and has disclosed no relevant affiliations beyond their academic appointment.</span></em></p>Olympic organizers are known for fiercely protecting their many related trademarks. It helps maintain their value – but to whose advantage?Shontavia Johnson, Professor of Intellectual Property Law, Drake UniversityLicensed as Creative Commons – attribution, no derivatives.tag:theconversation.com,2011:article/560502016-08-08T00:03:53Z2016-08-08T00:03:53ZWho owns your tattoo? Maybe not you<p>More than 20 percent of all Americans have at least one tattoo, and for millennials that number jumps to <a href="http://www.pewsocialtrends.org/files/2010/10/millennials-confident-connected-open-to-change.pdf">almost 40 percent</a>. What could be more intimately a part of you than a work of body art permanently inked into your skin? You probably assume that the tattoo on your body belongs to you. But, in actuality, somebody else might own your tattoo. Recent lawsuits and events have shown that tattoo artists and companies can have intellectual property rights in tattoos worn by others, including both copyright and trademark rights. </p>
<p>Tattoo-related lawsuits are not uncommon. Just this year, a group of tattoo artists for several high-profile athletes, including Lebron James and Kobe Bryant, <a href="https://www.scribd.com/doc/297571191/Solid-Oak-Sketches-v-Take-Two">filed a copyright lawsuit against</a> the creators of the popular NBA 2K video game franchise because tattoos they created appear in NBA 2K16. The case is still pending in a New York federal court.</p>
<p>In 2011, S. Victor Whitmill, the artist who designed and inked Mike Tyson’s facial tattoo, <a href="http://www.nytimes.com/interactive/2011/05/21/business/media/20110521tattoo-case.html?_r=0">sued Warner Bros. Entertainment, Inc. for copyright infringement</a>; the production company planned to release the film “The Hangover 2,” complete with a scene in which one of the actors received a facial tattoo nearly identical to Tyson’s. The parties ultimately <a href="http://www.reuters.com/article/us-hangover-idUSTRE75K0DF20110621">settled</a> before a court could make a determination on the copyright claims.</p>
<figure class="align-center zoomable">
<a href="https://images.theconversation.com/files/133267/original/image-20160805-466-qtgzrt.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=1000&fit=clip"><img alt="" src="https://images.theconversation.com/files/133267/original/image-20160805-466-qtgzrt.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=754&fit=clip" srcset="https://images.theconversation.com/files/133267/original/image-20160805-466-qtgzrt.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=600&h=400&fit=crop&dpr=1 600w, https://images.theconversation.com/files/133267/original/image-20160805-466-qtgzrt.jpg?ixlib=rb-1.1.0&q=30&auto=format&w=600&h=400&fit=crop&dpr=2 1200w, https://images.theconversation.com/files/133267/original/image-20160805-466-qtgzrt.jpg?ixlib=rb-1.1.0&q=15&auto=format&w=600&h=400&fit=crop&dpr=3 1800w, https://images.theconversation.com/files/133267/original/image-20160805-466-qtgzrt.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=754&h=503&fit=crop&dpr=1 754w, https://images.theconversation.com/files/133267/original/image-20160805-466-qtgzrt.jpg?ixlib=rb-1.1.0&q=30&auto=format&w=754&h=503&fit=crop&dpr=2 1508w, https://images.theconversation.com/files/133267/original/image-20160805-466-qtgzrt.jpg?ixlib=rb-1.1.0&q=15&auto=format&w=754&h=503&fit=crop&dpr=3 2262w" sizes="(min-width: 1466px) 754px, (max-width: 599px) 100vw, (min-width: 600px) 600px, 237px"></a>
<figcaption>
<span class="caption">Everyman Espresso, before it ceased and desisted.</span>
<span class="attribution"><a class="source" href="https://www.flickr.com/photos/39908901@N06/7565354842">m01229</a>, <a class="license" href="http://creativecommons.org/licenses/by/4.0/">CC BY</a></span>
</figcaption>
</figure>
<p>And the issue isn’t limited to celebrities and athletes. For example, Sam Penix, a coffee shop owner living in New York, was <a href="http://www.nytimes.com/2013/05/30/nyregion/new-york-challenges-a-coffee-shop-logo.html">threatened with a trademark infringement lawsuit in 2013</a> based on the “I [coffee cup] NY” tattoo he has across his fist. Penix’s shop logo featured his tattooed fist grabbing a coffee portafilter between the words “Everyman Espresso.” The New York State Department of Economic Development, which owns the “I ♥ NY” trademark, sent Penix a cease-and-desist letter because it believed the logo infringed its trademark. To avoid being sued, Penix agreed to several terms, including some restrictions on how his fist could (and could not) be photographed.</p>
<p>As director of the Drake University Law School Intellectual Property Law Center, <a href="http://repository.law.umich.edu/cgi/viewcontent.cgi?article=1216&context=mttlr">I’ve researched this area extensively</a>. Some complicated legal issues stem from applying traditional law to this nontraditional type of property. Based on current law, the standards set by these cases can affect countless daily activities for people with tattoos, including how they are depicted, photographed or recorded. Despite common sense to the contrary, copyright law and trademark law technically allow for such limitations on a person’s freedom. </p>
<h2>Copyrighted art you wear on your skin</h2>
<p>If a creation is copyrightable, the <a href="https://www.law.cornell.edu/uscode/text/17/201">default legal standard</a> is that the person who created it owns it. </p>
<p>To receive copyright protection, a creation <a href="https://www.law.cornell.edu/uscode/text/17/102">must meet three requirements</a>: It must be a work of authorship, it must be original and it must be fixed. Under <a href="http://commons.lib.niu.edu/bitstream/handle/10843/16433/King%2092%20Or%20L%20Rev%20129%202013-Web.pdf?sequence=1&isAllowed=y">widely accepted theory</a>, tattoos can meet each requirement.</p>
<p>First, the term “work of authorship” includes art. Tattoos, <a href="http://escholarship.org/uc/item/77j602d0#page-7">by nearly every interpretation</a>, can be considered art under the law. </p>
<p>Second, regarding originality, courts require that a work be independently created and be “minimally creative.” <a href="http://cyber.law.harvard.edu/people/tfisher/1991%20Feist.pdf">The Supreme Court has held</a> that most things “make the grade quite easily” under this very low bar. Therefore, tattoo artists who design tattoos themselves will almost always meet this requirement. </p>
<p>Third, “fixation” requires that the work be created on something that a person can see and perceive more than momentarily. Tattoos by their very nature (and to some people’s chagrin) are permanently placed on human skin and can be seen by someone nearby.</p>
<p>Given these basic requirements, a tattoo can be protected by copyright law, and the creator of that tattoo owns the resulting rights. <a href="http://commons.lib.niu.edu/bitstream/handle/10843/16432/King%2022%20J%20Intell%20Prop%20L%2029%202014-Web.pdf?sequence=1&isAllowed=y">These rights include</a> the ability to keep others from displaying, reproducing or creating new works based on the original tattoo or one that is substantially similar. This would include things like photos, videos and artwork that use the tattoo. </p>
<h2>Corporate shill or tattooed trademark violator?</h2>
<p>Under trademark law, <a href="http://repository.jmls.edu/cgi/viewcontent.cgi?article=1318&context=ripl">nearly anything can be a trademark</a>, including words, names, symbols or devices. Trademarks are used to protect the trademark owner’s goodwill and reputation developed through the trademark and to help the public identify where products and services come from.</p>
<p>In some cases, people decide on their own to ink themselves with their favorite company brands. Some corporate trademarks make for <a href="http://www.inta.org/INTABulletin/Documents/INTABulletinVol56no12.pdf">popular tattoos among brand loyalists</a>, including the <a href="http://tattoo-journal.com/25-adventurous-harley-davidson-tattoos/">Harley-Davidson crest</a>, <a href="https://ironmarketer.net/2013/08/23/the-m-dot-ironman-tattoo/">Ironman “M-Dot”</a> and <a href="http://www.nytimes.com/1994/05/22/magazine/sunday-may-22-1994-nike-s-tattooed-ekins.html">Nike swoosh</a>. In other instances, companies <a href="http://www.rapidnyc.com/rapidtattoos">encourage employees</a> to tattoo themselves with the corporate trademark by offering financial benefits. In either case, individuals with trademark-based tattoos can find themselves exposed to an infringement lawsuit. </p>
<p>A <a href="http://repository.law.umich.edu/cgi/viewcontent.cgi?article=1216&context=mttlr">trademark infringement claim requires</a> showing that:</p>
<p>1) the tattooed person is using a reproduction or copy of the trademark;
2) the tattooed person is in commerce without permission; and
3) the use is likely to cause confusion.</p>
<p>Under this standard, nearly anyone with a trademark-based tattoo could be subject to a trademark lawsuit.</p>
<figure class="align-center zoomable">
<a href="https://images.theconversation.com/files/133270/original/image-20160805-496-sc0yfv.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=1000&fit=clip"><img alt="" src="https://images.theconversation.com/files/133270/original/image-20160805-496-sc0yfv.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=754&fit=clip" srcset="https://images.theconversation.com/files/133270/original/image-20160805-496-sc0yfv.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=600&h=415&fit=crop&dpr=1 600w, https://images.theconversation.com/files/133270/original/image-20160805-496-sc0yfv.jpg?ixlib=rb-1.1.0&q=30&auto=format&w=600&h=415&fit=crop&dpr=2 1200w, https://images.theconversation.com/files/133270/original/image-20160805-496-sc0yfv.jpg?ixlib=rb-1.1.0&q=15&auto=format&w=600&h=415&fit=crop&dpr=3 1800w, https://images.theconversation.com/files/133270/original/image-20160805-496-sc0yfv.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=754&h=521&fit=crop&dpr=1 754w, https://images.theconversation.com/files/133270/original/image-20160805-496-sc0yfv.jpg?ixlib=rb-1.1.0&q=30&auto=format&w=754&h=521&fit=crop&dpr=2 1508w, https://images.theconversation.com/files/133270/original/image-20160805-496-sc0yfv.jpg?ixlib=rb-1.1.0&q=15&auto=format&w=754&h=521&fit=crop&dpr=3 2262w" sizes="(min-width: 1466px) 754px, (max-width: 599px) 100vw, (min-width: 600px) 600px, 237px"></a>
<figcaption>
<span class="caption">Consult your lawyer before you enter.</span>
<span class="attribution"><a class="source" href="https://www.flickr.com/photos/thomashawk/459898582">Thomas Hawk</a>, <a class="license" href="http://creativecommons.org/licenses/by-nc/4.0/">CC BY-NC</a></span>
</figcaption>
</figure>
<h2>Cover yourself?</h2>
<p>Athletes, entertainers and other public figures are probably most at risk of violating copyright or trademark law through their body art. By virtue of their careers, these figures are regularly in the public eye and using their physical appearance, skills and bodies to market themselves and the goods and services connected to their livelihoods. </p>
<p>But, the nonfamous may also find themselves using trademark tattoos in commerce through photos and marketing materials related to their own companies, similar to Sam Penix. In addition, because the internet and social media have made nearly every contact a potentially commercial endeavor, many people could find themselves exposed to trademark infringement lawsuits based on their tattoos. </p>
<p>According to current trademark law, if a person is ultimately found liable for trademark infringement, he or she could be required to pay money damages, court costs and attorney fees. A court could also require that the person stop using the trademark as well as destruction of infringing items. In the trademark-based tattoo context, one can imagine how practical issues might come in to play. Could a court, for example, require tattoo removal? Though highly unlikely, the plain language of the law does not foreclose such an option. What is more likely is that a person may be precluded from displaying the tattoo in commercial photography and appearances.</p>
<p>Until courts and legislators create innovative legal solutions, both tattoo artists and people with tattoos should consider copyright agreements that specifically outline who owns a resulting tattoo. People with trademark tattoos should be aware that displaying their tattoos visibly in commerce could lead to liability. Otherwise, tattooed skin may end up with several owners with competing interests – and even if you live within that skin, you may not own the art that adorns it.</p><img src="https://counter.theconversation.com/content/56050/count.gif" alt="The Conversation" width="1" height="1" />
<p class="fine-print"><em><span>Shontavia Johnson does not work for, consult, own shares in or receive funding from any company or organization that would benefit from this article, and has disclosed no relevant affiliations beyond their academic appointment.</span></em></p>Copyright and trademark law mean that the body art inked into your skin may leave you open to an infringement lawsuit.Shontavia Johnson, Professor of Intellectual Property Law, Drake UniversityLicensed as Creative Commons – attribution, no derivatives.tag:theconversation.com,2011:article/600932016-05-31T09:56:14Z2016-05-31T09:56:14ZJose Mourinho, Wayne Rooney, Rihanna … and the lucrative world of image rights<p>During the recent negotiations over Jose Mourinho’s appointment as Manchester United manager, it became apparent that, even though he left the club in December 2015, Chelsea Football Club Limited <a href="http://www.telegraph.co.uk/football/2016/05/29/chelsea-continue-to-sell-special-one-merchandise-after-jose-mour/">still owned Mourinho’s most lucrative image rights</a>. For commercial reasons it was imperative that these rights be licensed or transferred to Mourinho/Utd before his new contract could be finalised. <a href="http://www.manchestereveningnews.co.uk/sport/football/football-news/man-utd-transfer-news-mourinho-11388393">Reportedly</a> this knowledge came as a shock to Mourinho – which begs the question: what are these rights and how did Mourinho’s former employer come to own his image in the first place?</p>
<p>The English High Court, in a 2010 case involving Wayne Rooney <a href="http://www.bailii.org/cgi-bin/markup.cgi?doc=/ew/cases/EWHC/QB/2010/1807.html&query=rooney&method=boolean">Proactive Sports Management Ltd v Wayne Rooney</a> quoted the following description of the rights covering Rooney’s image with approval:</p>
<blockquote>
<p>Image Rights means the right for any commercial or promotional purpose to use the Player’s name, nickname, slogan and signatures developed from time to time, image, likeness, voice, logos, get-ups, initials, team or squad number (as may be allocated to the Player from time to time), reputation, video or film portrayal, biographical information, graphical representation, electronic, animated or computer-generated representation and/or any other representation and/or right of association and/or any other right or quasi-right anywhere in the World …</p>
</blockquote>
<p>However, it is notable that technically the UK does not recognise an image right <em>per se</em> – a position which stands in contrast to the US, where the widely recognised “right of publicity” gives celebrities the right to control their image in a wide range of commercial activities, including endorsements. Instead, there are three key aspects of UK law that can be used to protect a well-known person’s image: passing off, trade marks and contract law.</p>
<h2>Troublesome t-shirts …</h2>
<p>The law of passing off essentially concerns the prevention of false endorsement claims. A famous example that occurred recently in the UK is the dispute between the retail brand Topshop and the pop star Rihanna, which was adjudicated by the High Court in 2013 and the Court of Appeal in 2015.</p>
<p>Topshop sold a t-shirt embossed with Rihanna’s image, and did so <a href="http://www.bbc.co.uk/news/entertainment-arts-30932158">without Rihanna’s permission</a>. Rihanna sued. The case attracted a lot of interest in the legal world because prior to this dispute there was a general perception in the UK that the mere act of creating merchandise bearing a celebrity’s image without the person’s permission did not constitute infringement of the celebrity’s rights. </p>
<p>The ruling of the <a href="http://www.bailii.org/ew/cases/EWHC/Ch/2013/2310.html">High Court</a>, later endorsed by the <a href="http://www.bailii.org/ew/cases/EWCA/Civ/2015/3.html">Court of Appeal</a>, clarified that there are in fact circumstances when doing this will breach the law of passing off. Namely, Topshop’s sale of the t-shirt amounted to a misrepresentation that Rihanna had endorsed the Topshop brand. </p>
<p>Given the nature of Rihanna’s carefully cultivated personal image and brand – which included licensed fashion tie-ups, such as a previous one with Topshop – the impression on the customer would be that Rihanna had partnered with Topshop. For the court, this misrepresentation meant that Rihanna lost valuable control over, and goodwill associated with, her image. </p>
<h2>Mugs and potpourri</h2>
<p>The second way a celebrity can protect his or her image is via trade mark law. This proved to be crucial in the Mourinho negotiations. In 2005, well aware of their then-manager’s growing popularity at the time, Chelsea <a href="https://www.ipo.gov.uk/tmcase/Results/4/EU011938651">registered</a> the name “Jose Mourinho” as well as his signature under European trade mark law. According to the <a href="https://euipo.europa.eu/eSearch/#details/trademarks/004853545">European Union Intellectual Property Office</a>, the list of goods they can sell officially bearing his name includes after-shave, potpourris, and mugs. </p>
<p>There was nothing unusual in Chelsea doing this at the time – Mourinho was the club’s manager and no doubt he acquiesced to their doing so as part of his contract. What is strange is that Mourinho and his management seemingly did not negotiate to take these rights with them on either occasion when his Chelsea contract was terminated, first in 2007 – which meant that his subsequent clubs <a href="http://www.standard.co.uk/sport/football/jose-mourinho-to-manchester-united-failure-to-secure-image-rights-could-cost-tens-of-millions-of-a3257316.html">Inter and Real Madrid would also have needed a licence from Chelsea</a> – and again following poor results during his second stint in December 2015. This oversight is the reason Mourinho and Man Utd were forced to <a href="http://www.telegraph.co.uk/football/2016/05/25/jose-mourinho-move-to-man-utd-delayed-by-image-rights-negotiatio/">negotiate</a> a deal last week with Chelsea in order to allow Man Utd to use his name and image, before Mourinho’s official appointment as manager. </p>
<p>This brings to light another area of law important to image rights: contract law. Celebrities can agree to license their rights – i.e. trade marks – under contract to third parties, in order to gain endorsement or advertising revenue. A key example here is the <a href="http://www.bailii.org/ew/cases/EWHC/QB/2010/1807.html">Wayne Rooney case</a>, which involved an eight-year contract signed by Wayne & Colleen Rooney very early in his football career, allowing his management company – Proactive – to exploit their image rights. </p>
<h2>Binding contracts</h2>
<p>When Rooney left his management company, Proactive, with around four years of the original contract still remaining, Proactive claimed they should still receive millions of pounds in commissions. However, luckily for the Rooneys, even though they had signed the long-term deal, the English High Court stated that it had been an unlawful <a href="http://www.bailii.org/ew/cases/EWHC/QB/2010/1807.html">“restraint of trade”</a> for Proactive to tie Wayne Rooney to a deal longer than two years. For this reason, the amount Wayne & Colleen owed to Proactive was only £95,000 rather than the millions sought.</p>
<p>While the law covering image rights in the UK is untidy – requiring knowledge of passing off, trade marks and contract law – one thing that is abundantly clear after the Mourinho saga is that those in the public eye must be very careful whenever they sign contracts, and above all ensure that in signing they are not giving up the lucrative rights to their own image, for if they do they may later regret the embarrassing complications that follow.</p><img src="https://counter.theconversation.com/content/60093/count.gif" alt="The Conversation" width="1" height="1" />
<p class="fine-print"><em><span>Luke McDonagh does not work for, consult, own shares in or receive funding from any company or organisation that would benefit from this article, and has disclosed no relevant affiliations beyond their academic appointment.</span></em></p>How to make a killing from famous faces.Luke McDonagh, Lecturer in Law, City, University of LondonLicensed as Creative Commons – attribution, no derivatives.tag:theconversation.com,2011:article/556822016-03-03T14:13:02Z2016-03-03T14:13:02ZKylie vs Kylie – who will win the legal battle between Minogue and Jenner?<p>Australian pop star Kylie Minogue recently started a legal battle against 18-year old TV personality Kylie Jenner <a href="http://ttabvue.uspto.gov/ttabvue/v?pno=91226456&pty=OPP&eno=1">over the trademarking of their shared first name</a>. </p>
<p>New kid on the block Jenner, who is best known for appearing on the reality TV series Keeping up with the Kardashians, has tried to trademark the name in connection with advertising her growing beauty and clothing collections. Her rival, Minogue, has been famous since well before Jenner was born. And, more importantly, has a strong legal case.</p>
<p>Now 47, Kylie Minogue is famous across the world as an actress and pop singer. Having risen to fame in the Australian soap opera Neighbours, she – like several of her co-stars – moved over into the pop world and launched an eponymously titled first album: “Kylie” in 1988. </p>
<p>She owns trademark registrations in the US for the names “Kylie Minogue”, “Kylie Minogue Darling” (the name of her perfume brand), “Lucky – the Kylie Minogue musical” and more importantly the single word “Kylie” in connection with education and entertainment services. </p>
<p>All, except “Kylie Minogue Darling” were filed before Jenner’s. Minogue has also owned the domain name “<a href="http://kylie.com/">kylie.com</a>” since August 1996.</p>
<p>In addition to her involvement in Keeping Up with the Kardashians, Kylie Jenner is also active in the fashion industry, having created a clothing line with her sister Kendall: “Kendall & Kylie”. Time magazine named Jenner in its list of the “<a href="http://time.com/4081618/most-influential-teens-2015/">30 Most Influential Teens of 2015</a>” so it’s no wonder she is trying to capitalise on her fame by seeking trademark protection over her name.</p>
<h2>Minogue’s case</h2>
<p>Minogue is relying on the prior use and registrations of her trademarks to oppose Jenner’s application. And when it comes to trademark battles over similar or identical signs, relying on prior rights is crucial for a success.</p>
<p>The outcome will also depend on whether Minogue is able to show that if the US Trademark Office approved Jenner’s application it would cause confusion among consumers and/or dilute her brand. “Confusion” and “dilution” are two requirements for successfully opposing the registration and use of later (similar or identical) trademarks.</p>
<p>These requirements reflect the aims of trademarks: permitting consumers to distinguish products or services of a business from those of competitors (thus allowing them to make educated purchase decisions, due to the identifying nature of trademarks) and protecting the trademark owner’s investment in the brand’s reputation and credibility.</p>
<p>As far as confusion is concerned, Minogue needs to demonstrate that Jenner’s trademark, if granted and then used, would likely confuse consumers in the US market, by making them believe that the Kylie-branded services are provided by, or somehow connected to, the Australian singer. This would be likely, as Jenner’s customer base appears to significantly overlap with Minogue’s. In other words, many teenagers who follow Jenner on social media may happen to also be fans of Minogue and might be led to associate the former to the latter. </p>
<p>Yet, even where confusion is not eventually established, Minogue could still win the case by showing dilution of her famous brand. The concept of dilution comes from the idea that because some marks are so famous, they should deserve an extra level of protection, regardless of the similarity of the products or services. This kind of protection aims to prevent the attractive power of a well-known mark from being weakened through disturbing or unsavoury associations with another one. This type of dilution is known as “tarnishment”. </p>
<p>Minogue’s complaint specifically notes that her Kylie brand will be tarnished if Jenner is allowed to register an identical or similar trademark. It dismissively describes her as a “secondary reality TV personality”. It also describes her “photographic exhibitionism and controversial posts” that have drawn criticism <a href="http://metro.co.uk/2015/12/02/kylie-jenner-angers-disability-groups-with-wheelchair-sm-shoot-5538974/">from disability rights groups</a> and <a href="http://www.foxnews.com/entertainment/2015/07/15/kylie-jenner-accused-cultural-appropriation-for-wearing-cornrows/">African-American communities</a>.</p>
<p>In all likelihood, the two Kylies will eventually settle – <a href="http://blogs.findlaw.com/celebrity_justice/2010/09/paris-hilton-hallmark-settlement-in-image-dispute.html">as often happens in trademark-related disputes concerning celebrities</a> – and Jenner will withdraw her controversial application. After all, the young American also filed a near-identical application for her full name “Kylie Jenner”. This has not been objected to by Minogue.</p>
<p>At the end of the day, both celebrities will likely be able to rely on trademark registrations protecting their full names. And, given the media coverage of this dispute, they will have increased their notoriety and advertising revenues, and filled their lawyer’s wallets as well.</p><img src="https://counter.theconversation.com/content/55682/count.gif" alt="The Conversation" width="1" height="1" />
<p class="fine-print"><em><span>Enrico Bonadio does not work for, consult, own shares in or receive funding from any company or organisation that would benefit from this article, and has disclosed no relevant affiliations beyond their academic appointment.</span></em></p>An expert in copyright law explains who is better placed to win the trademark battle over the name “Kylie” – popstar Minogue or reality TV star Jenner.Enrico Bonadio, Senior Lecturer in Law, City, University of LondonLicensed as Creative Commons – attribution, no derivatives.tag:theconversation.com,2011:article/485242015-10-08T13:42:27Z2015-10-08T13:42:27ZChocolate war in the court room as KitKat fingers and Lindt bears take the stand<figure><img src="https://images.theconversation.com/files/97755/original/image-20151008-9682-kwzkl3.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=496&fit=clip" /><figcaption><span class="caption">Battleground. Chocolate firms try to keep you coming back for more.</span> <span class="attribution"><a class="source" href="https://www.flickr.com/photos/brizzlebornandbred/5110941023/in/photolist-8MCUGP-mzTmkJ-muMuZF-nu9123-dLfeVH-TFbqx-9tgBve-3YayV-muN4ZX-2RDzB6-oR79JX-5Uy5V-p7pMWF-ge4zhR-oEbbrR-6YdVnJ-bunZdT-qJTaL-9cxMUu-96sqPo-gd5kFu-7aZjud-e2zn81-8MzhyL-8MzhGf-8MzhBU-aM7QGz-5ZrgaS-8FUh5D-8MzgC3-Gb222-toArip-7dAwfj-dq9r2-b42Jv-8HpKYo-6aS4dU-5QYvQr-fcrMeQ-75uBLs-sHgY21-xdQkyy-dsFK4V-cfMKwS-8NTyXb-5R6soV-eyPT6L-96ppwH-7dNeu8-8rX44q">Paul Townsend</a>, <a class="license" href="http://creativecommons.org/licenses/by-nc-nd/4.0/">CC BY-NC-ND</a></span></figcaption></figure><p>Rivals operating in the multi-billion pound world of chocolate branding occasionally launch attacks on one another as they seek to secure your snacking loyalty. They want to defend their existing empires, as well as pursue new territories and markets – and two such trade mark battles have come to the fore in the news in recent weeks which reveal a lot about the tension between the legal protections provided by trade mark law and the competitive nature of the marketplace for chocolate. </p>
<p>First, in mid-September the Court of Justice of the EU ruled on Nestlé’s bid to receive UK trade mark protection for the (allegedly) distinct shape of the four-finger version of the KitKat, long touted as the UK’s favourite chocolate bar. <a href="http://www.dailymail.co.uk/news/article-3237772/Cadbury-kills-bid-Nestle-trademark-distinctive-shape-KitKat.html">Nestlé’s main aim</a> is apparently to prevent a rival four finger chocolate bar from being marketed by Cadbury. Then, in late September the German Federal court ruled on the dispute between jelly sweet giant Haribo and Lindt over Lindt’s chocolate bears and Haribo’s “Gold Bear” trade mark. </p>
<h2>KitKat Attack</h2>
<p>Dealing first with the KitKat case, Nestlé’s claim over the four finger shape was framed around two fundamental aspects of trade mark law. First, <a href="http://www.legislation.gov.uk/ukpga/1994/26/contents">it is possible under trade mark law</a> to register a three dimensional shape – in this case the four fingers – as a trade mark, as long as that shape has sufficient “distinctiveness”. It is also possible for a shape to “acquire” distinctiveness through use in the marketplace and consumer recognition. <a href="http://www.bailii.org/ew/cases/EWHC/Ch/2014/16.html">Cadbury argued</a> that the shape had not acquired sufficient distinctiveness in the minds of consumers. </p>
<p>So far, so simple. But the other key question centred on whether a shape with so-called functional elements in its design could also be protected as a trade mark. In the case of the KitKat, that basically refers to the ability to break off each individual finger to dip in your tea (or however you choose to eat it; I’m aware it is a personal thing). Now, generally, the law does not protect purely “functional” shapes – the reason being that competitors ought to be allowed to produce competing goods.</p>
<figure class="align-center zoomable">
<a href="https://images.theconversation.com/files/97757/original/image-20151008-9670-8p6hzs.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=1000&fit=clip"><img alt="" src="https://images.theconversation.com/files/97757/original/image-20151008-9670-8p6hzs.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=754&fit=clip" srcset="https://images.theconversation.com/files/97757/original/image-20151008-9670-8p6hzs.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=600&h=450&fit=crop&dpr=1 600w, https://images.theconversation.com/files/97757/original/image-20151008-9670-8p6hzs.jpg?ixlib=rb-1.1.0&q=30&auto=format&w=600&h=450&fit=crop&dpr=2 1200w, https://images.theconversation.com/files/97757/original/image-20151008-9670-8p6hzs.jpg?ixlib=rb-1.1.0&q=15&auto=format&w=600&h=450&fit=crop&dpr=3 1800w, https://images.theconversation.com/files/97757/original/image-20151008-9670-8p6hzs.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=754&h=566&fit=crop&dpr=1 754w, https://images.theconversation.com/files/97757/original/image-20151008-9670-8p6hzs.jpg?ixlib=rb-1.1.0&q=30&auto=format&w=754&h=566&fit=crop&dpr=2 1508w, https://images.theconversation.com/files/97757/original/image-20151008-9670-8p6hzs.jpg?ixlib=rb-1.1.0&q=15&auto=format&w=754&h=566&fit=crop&dpr=3 2262w" sizes="(min-width: 1466px) 754px, (max-width: 599px) 100vw, (min-width: 600px) 600px, 237px"></a>
<figcaption>
<span class="caption">A ‘functional’ element at work.</span>
<span class="attribution"><a class="source" href="https://www.flickr.com/photos/threefingers/2246571713/in/photolist-4qwgv4-avr3N4-7UEyip-7q2JLu-dWxve6-jgW6HC-sgtPXf-9svtNJ-d7Fbzh-d7FbWf-4NdFUx-b4aLqz-7v4nJq-qF3CGa-5ZnEK4-88QgKH-7ndYC4-bJy2M2-8Dd2gj-89VEKL-gd9gWW-6i27iZ-5ZnD9x-5ZnDXH-KGcCq-64SAPL-6bsjLu-4KdUc5-4vmiPz-6MZRKm-9t9RYQ-7twsMY-6rvHsW-9t6RBF-bvbD7w-5paSKX-ppH6Af-3d8TCk-9t6SeZ-dWxv6v-6hwE2t-5HDSby-5HDRFo-5HDRRw-98H7J9-97fKF4-dxaeaM-Yv2X1-aHnQWT-9H4YMj">Sean Murray</a>, <a class="license" href="http://creativecommons.org/licenses/by-nc-nd/4.0/">CC BY-NC-ND</a></span>
</figcaption>
</figure>
<p>On the matter of distinctiveness, the court ruled that to obtain trade mark protection, Nestlé had to demonstrate that consumers identify the four finger shape itself - stripped of any packaging or branding - with Nestlé and KitKat. This ruling was <a href="http://www.bbc.co.uk/news/business-34266169">widely reported in the media</a> as a victory for Cadbury, but the legal reality is more complex. </p>
<p>Nestlé has always claimed that even without its well known red and white packaging or the use of the existing trade mark name, the shape of the bar should of itself be regarded as sufficiently distinct, and it <a href="https://www.ipo.gov.uk/types/tm/t-os/t-find/t-challenge-decision-results/o25713.pdf">claims some consumer survey evidence</a> to support this. </p>
<p>For Cadbury there is a further sting in the tail. On the issue of functionality the court’s ruling seems to strongly favour Nestlé because the key elements of the four finger shape do not seem to fall within a single category of objection, which means that Nestlé’s four finger shape is likely to survive this test. The case now <a href="http://www.bailii.org/ew/cases/EWHC/Ch/2014/16.html">returns to the High Court</a> for a determination on the facts. </p>
<h2>The bear facts</h2>
<p>The case between Haribo and Lindt has a similar ring to it, and it is again all about stopping rivals encroaching on your space in the confectionery aisle of the supermarket, however limited that danger might appear to us shoppers. </p>
<p>Their dispute concerned the “Gold Bear” trade mark under which Haribo has long marketed a well known range of gummy bears; the words themselves are protected under trade mark law as a word mark. The problems started when Swiss chocolate maker Lindt began selling a gold foil-wrapped chocolate teddy bear. Haribo was quick to accuse its rival of infringing the Gold Bear trademark. </p>
<figure class="align-center zoomable">
<a href="https://images.theconversation.com/files/97759/original/image-20151008-9655-l6uqwa.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=1000&fit=clip"><img alt="" src="https://images.theconversation.com/files/97759/original/image-20151008-9655-l6uqwa.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=754&fit=clip" srcset="https://images.theconversation.com/files/97759/original/image-20151008-9655-l6uqwa.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=600&h=400&fit=crop&dpr=1 600w, https://images.theconversation.com/files/97759/original/image-20151008-9655-l6uqwa.jpg?ixlib=rb-1.1.0&q=30&auto=format&w=600&h=400&fit=crop&dpr=2 1200w, https://images.theconversation.com/files/97759/original/image-20151008-9655-l6uqwa.jpg?ixlib=rb-1.1.0&q=15&auto=format&w=600&h=400&fit=crop&dpr=3 1800w, https://images.theconversation.com/files/97759/original/image-20151008-9655-l6uqwa.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=754&h=503&fit=crop&dpr=1 754w, https://images.theconversation.com/files/97759/original/image-20151008-9655-l6uqwa.jpg?ixlib=rb-1.1.0&q=30&auto=format&w=754&h=503&fit=crop&dpr=2 1508w, https://images.theconversation.com/files/97759/original/image-20151008-9655-l6uqwa.jpg?ixlib=rb-1.1.0&q=15&auto=format&w=754&h=503&fit=crop&dpr=3 2262w" sizes="(min-width: 1466px) 754px, (max-width: 599px) 100vw, (min-width: 600px) 600px, 237px"></a>
<figcaption>
<span class="caption">Flash point. When bears attack.</span>
<span class="attribution"><a class="source" href="https://www.flickr.com/photos/foodishfetish/8140351801/in/photolist-dpkqZ8">Jocelyn & Cathy</a>, <a class="license" href="http://creativecommons.org/licenses/by-nc-nd/4.0/">CC BY-NC-ND</a></span>
</figcaption>
</figure>
<p>Haribo claimed that consumers would confuse the two products and go on to incorrectly associate the Lindt gold bear with Haribo. Lindt, meanwhile, argued that its foil-wrapped chocolate bears were merely a variation on its famous chocolate Easter bunny rabbit design. Lindt pointed out that both the Lindt bear and the Lindt bunny rabbit are typically packaged in gold foil with a red ribbon, and argued there was no intention to associate with Haribo’s Gold Bear mark.</p>
<p>Haribo <a href="http://www.theguardian.com/business/2012/dec/18/gummy-bear-wins-court-battles">won the first round of this battle</a> when, in December 2012, a German regional court banned future sales of Lindt’s bears. However, a later German appeal court in Cologne rejected that ruling and said that Haribo’s feared consumer confusion between the two products would not in fact occur. This appeal ruling has now been upheld by the German Federal court in a decision that leaves the Lindt bears on the shelf and which brings this particular chocolate war to a fitting close.</p>
<p>If nothing else, these cases are a useful reminder of how valuable you - the consumer - are to makers of sugary snacks, and how fearful companies are that your gaze might be diverted from their offering. Disputes that might on the surface seem petty have pitted together three of Europe’s largest chocolate manufacturers (Cadbury, Nestlé and Lindt) as well as one of its premier sweet manufacturers (Haribo). Behind the scenes of your mid-morning treat is a fierce battle to protect trade marks, market share and, ultimately, profit margins.</p><img src="https://counter.theconversation.com/content/48524/count.gif" alt="The Conversation" width="1" height="1" />
<p class="fine-print"><em><span>Luke McDonagh does not work for, consult, own shares in or receive funding from any company or organisation that would benefit from this article, and has disclosed no relevant affiliations beyond their academic appointment.</span></em></p>Behind the scenes of your mid-morning treat is a fierce legal battle to protect market share and profits.Luke McDonagh, Lecturer in Law, City, University of LondonLicensed as Creative Commons – attribution, no derivatives.tag:theconversation.com,2011:article/484132015-10-02T08:38:23Z2015-10-02T08:38:23ZIs ‘The Slants’ racist? Court ruling on band name could upend trademark law<figure><img src="https://images.theconversation.com/files/96997/original/image-20151001-23067-1c7z5q8.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=496&fit=clip" /><figcaption><span class="caption">What's in a name?</span> <span class="attribution"><a class="source" href="https://www.flickr.com/photos/thomascbyrd/6221489531/in/photolist-atLL5T-24bBA9-5CmQ5K-247bwv-npcaiR-9Kpzuu-5CmQ4H-8zrv54-8zruLt-8zrurB-8zru6V-8zrtSn-8zrtCP-8zuCQA-cKMqVf-5Cr7P9-8mEvuo-6f3i1A-eiHJrm-4auwWi-9KpDSj-4auwSn-4auwXx-nFtMjU-nFubgW-nFp9yM-nFpfuz-nFmyqF-NACGv-NAaj7-NABSB-NA9Gs-NA9m9-NA8HW-NAAdc-NA7EA-NA7iN-NAyBM-NAy2e-8CXd9H-8CXdEn-4ayztu-4auwTR-8D1p3w-8D1oYC-8D1oVf-8CXi9i-8CXi5e-8D1oJb-8D1oEN">Tommy Byrd/Flickr</a>, <a class="license" href="http://creativecommons.org/licenses/by-nc/4.0/">CC BY-NC</a></span></figcaption></figure><p>The Beastie Boys were talking about parties, not trademarks, when they sang, “You gotta fight! For your right!” </p>
<p>But even getting a trademark can be a fight in the world of rock ‘n’ roll. Today, October 2, a federal court will consider whether the Asian-American dance rock band <a href="http://www.theslants.com">The Slants</a> has the right to register the name of its band as a trademark. </p>
<p>The problem is trademarks that disparage people cannot be registered. Even if the people supposedly being disparaged want the trademark? Doesn’t that violate their First Amendment right to free expression? </p>
<p>These are the <a href="https://www.washingtonpost.com/news/volokh-conspiracy/wp/2015/07/08/the-redskins-and-the-slants-how-an-asian-american-band-name-case-may-affect-the-redskins-trademark/">questions</a> the court will be considering. How it answers them could permanently reshape trademark law. </p>
<p>This case is the first in decades to squarely address the constitutional question. A decision that disparaging trademarks are entitled to registration would not only overturn the longstanding ban, it could also have big implications for a certain NFL franchise in Washington, DC. </p>
<h2>A disparaging mark?</h2>
<p>The Slants, which formed in 2006 in Portland, Oregon, first tried to register its name as a trademark in 2010. The US Patent and Trademark Office (USPTO) refused registration for “The Slants” on the basis that it disparages people of Asian descent. </p>
<p>Under <a href="https://www.law.cornell.edu/uscode/text/15/1052">federal law</a>, trademarks that may disparage people, or bring them into contempt, are not permitted registration. NFL’s Washington Redskins, for example, was initially granted a trademark registration for its team name, but that was <a href="http://ttabvue.uspto.gov/ttabvue/v?pno=92046185&pty=CAN&eno=199">cancelled</a> last June in a landmark decision that deemed it disparaging to Native Americans. </p>
<p>Registration is a valuable branding tool to a trademark owner. While unregistered marks may still be used in the marketplace, registration confers <a href="http://helix-1.uspto.gov/player/BasicFacts_ShouldIRegister_508.html">significant benefits</a>. Registered trademarks enjoy nationwide protection, confer a presumption of validity and, if used continuously for five years, can be challenged in court only on limited grounds. Marks that have been refused registration are not eligible for enforcement. </p>
<p>In order to determine whether a trademark is disparaging to a particular group of people, the USPTO considers what the likely meaning of the mark is, taking into account dictionary definitions, the goods or services the mark represents and how the mark is used in the marketplace. If the trademark is found to refer to a particular group of people, courts ask whether that meaning is disparaging to a substantial composite of that group. </p>
<p>The Slants case is unique because the trademark owner, Simon Tam, is himself Asian, and the band has been widely reported in <a href="http://www.npr.org/sections/codeswitch/2015/05/08/404748835/whats-in-a-name-band-founder-fights-government-to-retain-the-slants">interviews</a> as using the mark in an effort to reappropriate the term and empower people of Asian descent. </p>
<p>Indeed, according to a <a href="http://ttabvue.uspto.gov/ttabvue/ttabvue-85472044-EXA-12.pdf">court filing</a>, the band seemed interested in taking on the “disparaging term” in order to “wrest ‘ownership’ of the term from those who might use it with the intent to disparage.”</p>
<iframe width="100%" height="315" src="https://www.youtube.com/embed/UmOIeMK1WVY" frameborder="0" allowfullscreen=""></iframe>
<h2>The minds of consumers</h2>
<p>Generally in trademark law it is <a href="http://tmep.uspto.gov/RDMS/detail/manual/TMEP/Oct2012/TMEP-1200d1e6993.xml#/manual/TMEP/Oct2012/TMEP-1200d1e3042.xml">not the intent</a> of the trademark owner that matters. What matters is what is in the minds of consumers, which is an <a href="http://scholarship.law.georgetown.edu/cgi/viewcontent.cgi?article=1793&context=facpub">ever-evolving beast</a>. But this evaluation must be made in the <a href="https://h2o.law.harvard.edu/collages/14542">context of the marketplace</a> for the mark. </p>
<p>What matters in this case, therefore, is not whether the word “slants” disparages people of Asian descent generally. The question is whether persons of Asian descent would find the mark disparaging when used by an Asian-American dance-rock band. Who is using the mark, and in what context, matters. </p>
<p>These are essential parts of the inquiry. Yet, the USPTO failed to consider this context and merely looked at how the word “slants” is disparaging of people of Asian descent in a vacuum. </p>
<p>But this misses the mark, so to speak, in important ways. Specifically, it fails to consider use in the context of the marketplace, including the realities of the role of rock music in society. Art in general, and rock music in particular, often challenge cultural assumptions. </p>
<p>The question is not whether the mark in the abstract is disparaging, but whether it is disparaging as applied to an Asian-American dance rock band – one that publicly advocates for the empowerment of Asian people. The artistic community generally, and rock music specifically, are valuable cultural forces for <a href="http://www.theguardian.com/culture-professionals-network/2014/nov/27/-sp-arts-creativity-alex-poots-ruth-mackenzie">pushing boundaries</a> and questioning the status quo. </p>
<h2>Free expression</h2>
<p>A larger issue in this case, however, is whether this law violates the band’s First Amendment right to free expression. </p>
<p>Government benefits cannot be withheld on a basis that infringes constitutionally protected rights, like freedom of speech. If speech is coming from private individuals or is commercial speech, the government generally cannot discriminate based on a point of view. </p>
<p>On the other hand, if the government is itself speaking, then it may promote a specific viewpoint. Whether something is government speech depends on the degree of control the government exercises over the speech and how the public perceives it. For example, in a recent <a href="http://www.supremecourt.gov/opinions/14pdf/14-144_758b.pdf">case</a>, the Supreme Court held that a state could choose whether or not to offer a license plate bearing a Confederate flag because license plate designs were government speech. </p>
<p>While a trademark registration is associated with the government, people are unlikely to perceive it as government speech. Also, courts have repeatedly <a href="http://ipmall.info/hosted_resources/TTAB_Decisions/TTAB_Appeal_74-004391.asp">stated</a> that trademark registration does not constitute the government’s endorsement of a particular trademark. The printing of an American flag on a condom can be registered as a <a href="http://ipmall.info/hosted_resources/TTAB_Decisions/TTAB_Appeal_74-004391.asp">trademark</a>, for example, but it is not government speech. </p>
<p>If the court decides that the prohibition against registering disparaging trademarks is perceived as promoting certain points of view over others, it will be struck down as unconstitutional. That would mean trademarks like “The Slants” and “Washington Redskins” cannot be denied registration simply because they disparage certain groups. </p>
<h2>Music and social change</h2>
<p>The tendency of musicians to extend their art for social change, to make people think and provoke dialogue, is a well-known and valuable aspect of modern culture. </p>
<p>Whether a mark is disparaging must be determined in the context of its use in the marketplace, including the manner of use and the goods and services it represents. </p>
<p>It’s a messy analysis, and necessarily imperfect. But such is the nature of a body of law that seeks to consider the fierce and fickle minds of consumers.</p><img src="https://counter.theconversation.com/content/48413/count.gif" alt="The Conversation" width="1" height="1" />
<p class="fine-print"><em><span>Megan M. Carpenter does not work for, consult, own shares in or receive funding from any company or organization that would benefit from this article, and has disclosed no relevant affiliations beyond their academic appointment.</span></em></p>A federal court is considering whether the Asian-American rock band has a First Amendment right to the name, despite a law prohibiting disparaging trademarks.Megan M. Carpenter, Professor of Law, Co-Director, Center for Law and Intellectual Property, Texas A&M UniversityLicensed as Creative Commons – attribution, no derivatives.tag:theconversation.com,2011:article/465922015-09-03T10:07:10Z2015-09-03T10:07:10ZWhy US may be ready to resolve Feta dispute to clinch trade deal with EU<p>Next month, the European Union and the United States will likely resume their negotiation of the Transatlantic Trade and Investment Partnership (TTIP). This ambitious and far-reaching <a href="https://ustr.gov/ttip">agreement</a> will affect not only two of the world’s largest trading powers, but also other members of the international community.</p>
<p>One area that has <a href="http://uk.reuters.com/article/2015/07/24/us-eu-usa-trade-cheese-idUKKCN0PY14B20150724">tripped up</a> these high-stakes trade talks concerns the labeling of cheese and other foodstuffs. In many countries, specific laws exist to protect what is generally referred to as “geographical indications.”</p>
<p>These indicators identify the geographical source from which a product derives its essential quality, reputation or other characteristics. Examples include Champagne sparkling wine, Scotch whisky, Feta cheese, prosciutto di Parma, Café de Colombia, Idaho potatoes and Darjeeling tea.</p>
<p>Thus far, the EU and the US <a href="http://www.nytimes.com/2015/06/25/business/energy-environment/bridging-the-cheese-gap-food-trade-united-states-european-union-ttip.html">disagree</a> over how these indicators are to be protected. Greater protection will affect not only product labeling but also exports and jobs. </p>
<p>Although these two trading powers are unlikely to resolve their disagreement soon, the US may be more willing to increase protection of geographical indications than many expect.</p>
<h2>The fight between Old and New Worlds</h2>
<p>Historically, the protection of geographical indications has been the subject of heated debates and controversy among members of the international community.</p>
<p>Countries in the “Old World” – primarily those in Europe – advocate for strong protection of geographical indications. They remain concerned about their consumers being confused as to the origin and unique qualities of the products identified by these indicators. They also argue that unauthorized use will tarnish the indicators’ established reputations while diluting the products’ authenticity on the international market.</p>
<p>By contrast, countries in the “New World” – such as Australia, Canada, Chile and the US – oppose strong protection of geographical indications. They contend that most products can be replicated almost anywhere today, thanks to modern agricultural and manufacturing techniques.</p>
<p>They also claim that several geographical indications – such as Champagne, Feta and Gouda – have long become generic terms on their soil. In some cases, names similar or identical to these indicators have already been registered as trademarks. A prohibition on the commercial use of geographical indications – such as using Champagne for sparkling wine not made in that region of France – would therefore <a href="https://www.specialtyfood.com/news/article/cheese-industry-embattled-over-eu-naming-proposal/">damage businesses</a> while creating consumer confusion.</p>
<figure class="align-center ">
<img alt="" src="https://images.theconversation.com/files/93698/original/image-20150902-14061-upbb2d.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=754&fit=clip" srcset="https://images.theconversation.com/files/93698/original/image-20150902-14061-upbb2d.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=600&h=400&fit=crop&dpr=1 600w, https://images.theconversation.com/files/93698/original/image-20150902-14061-upbb2d.jpg?ixlib=rb-1.1.0&q=30&auto=format&w=600&h=400&fit=crop&dpr=2 1200w, https://images.theconversation.com/files/93698/original/image-20150902-14061-upbb2d.jpg?ixlib=rb-1.1.0&q=15&auto=format&w=600&h=400&fit=crop&dpr=3 1800w, https://images.theconversation.com/files/93698/original/image-20150902-14061-upbb2d.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=754&h=503&fit=crop&dpr=1 754w, https://images.theconversation.com/files/93698/original/image-20150902-14061-upbb2d.jpg?ixlib=rb-1.1.0&q=30&auto=format&w=754&h=503&fit=crop&dpr=2 1508w, https://images.theconversation.com/files/93698/original/image-20150902-14061-upbb2d.jpg?ixlib=rb-1.1.0&q=15&auto=format&w=754&h=503&fit=crop&dpr=3 2262w" sizes="(min-width: 1466px) 754px, (max-width: 599px) 100vw, (min-width: 600px) 600px, 237px">
<figcaption>
<span class="caption">Cognac is one of the relatively few foods offered some geographical indication protection.</span>
<span class="attribution"><span class="source">Cognac glass via www.shutterstock.com</span></span>
</figcaption>
</figure>
<h2>Growing international protection</h2>
<p>Since 1994, the so-called <a href="https://www.wto.org/english/tratop_e/trips_e/intel2_e.htm">TRIPS Agreement</a> of the World Trade Organization (WTO) has introduced international minimum standards for the protection of geographical indications. The WTO also offers expanded protection to wines and spirits.</p>
<p>In addition, other multilateral and regional efforts have been undertaken to protect geographical indications. A case in point is the <a href="http://www.wipo.int/treaties/en/registration/lisbon/">Lisbon Agreement for the Protection of Appellations of Origin and Geographical Indications</a>. Despite the continuous differences between the Old and New Worlds, the scope of this agreement was recently <a href="http://www.wipo.int/pressroom/en/articles/2015/article_0009.html">expanded</a> at the World Intellectual Property Organization in Geneva.</p>
<p>Thus far, the US has not offered independent protection to geographical indications. Instead, it allows these indicators to be protected as trademarks, certification marks or collective marks.</p>
<p>For instance, Brunello di Montalcino, Cognac, Darjeeling and Jamaica Blue Mountain coffee are all currently <a href="http://www.uspto.gov/learning-and-resources/ip-policy/geographical-indications/geographical-indications-faqs">protected</a> as certification marks in the US. Federal and state laws also offer <a href="http://www.ttb.gov/wine/ava.shtml">additional protection</a> to appellations of origin for wines. </p>
<figure class="align-center ">
<img alt="" src="https://images.theconversation.com/files/93696/original/image-20150902-14045-1ll8213.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=754&fit=clip" srcset="https://images.theconversation.com/files/93696/original/image-20150902-14045-1ll8213.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=600&h=409&fit=crop&dpr=1 600w, https://images.theconversation.com/files/93696/original/image-20150902-14045-1ll8213.jpg?ixlib=rb-1.1.0&q=30&auto=format&w=600&h=409&fit=crop&dpr=2 1200w, https://images.theconversation.com/files/93696/original/image-20150902-14045-1ll8213.jpg?ixlib=rb-1.1.0&q=15&auto=format&w=600&h=409&fit=crop&dpr=3 1800w, https://images.theconversation.com/files/93696/original/image-20150902-14045-1ll8213.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=754&h=514&fit=crop&dpr=1 754w, https://images.theconversation.com/files/93696/original/image-20150902-14045-1ll8213.jpg?ixlib=rb-1.1.0&q=30&auto=format&w=754&h=514&fit=crop&dpr=2 1508w, https://images.theconversation.com/files/93696/original/image-20150902-14045-1ll8213.jpg?ixlib=rb-1.1.0&q=15&auto=format&w=754&h=514&fit=crop&dpr=3 2262w" sizes="(min-width: 1466px) 754px, (max-width: 599px) 100vw, (min-width: 600px) 600px, 237px">
<figcaption>
<span class="caption">Vintners in Napa Valley have been among those arguing the US should adopt geographical indications.</span>
<span class="attribution"><span class="source">Napa Valley via www.shutterstock.com</span></span>
</figcaption>
</figure>
<h2>The slowly evolving US position</h2>
<p>Although the US has a longstanding skepticism toward protecting geographical indications, at least five reasons exist to suggest the country’s increasing willingness to strengthen protection in this area.</p>
<p>First, the protection of geographical indications has already received growing support from US industries. Napa Valley Vintners, for example, has strongly advocated for such protection on behalf of its member wineries. In 2007, this trade group successfully <a href="http://www.reuters.com/article/2012/05/02/idUS28885+02-May-2012+BW20120502">secured</a> protection for “Napa Valley” as a US geographical indication in the EU.</p>
<p>A 2013 <a href="http://www.origin-gi.com/images/stories/PDFs/English/papers/Geographical_Indications_in_the_United_States_-_Supporting_Memo_FINAL_WEB.pdf">industry study</a> also provided a long list of potential US geographical indications. This list included not only well-known wine-producing regions, but also lesser-known regions such as Alexandria Lakes in Minnesota, the Bell Mountain in Texas, the Kanawha River Valley in West Virginia and the Old Mission Peninsula in Michigan.</p>
<p>Second, in addition to the TTIP, the US continues to negotiate bilateral and regional trade agreements with countries that have offered strong protection of geographical indications. During these negotiations, <a href="http://www.dairyreporter.com/Markets/US-EU-can-reach-compromise-on-geographical-indications-EDA">compromises</a> on how to protect these indicators will inevitably be reached. Indeed, many US free trade agreements already include provisions addressing the potential conflict between the trademark system and the protection of geographical indications.</p>
<p>Third, stronger protection of these indicators would offer significant trade benefits to US exporters. Such protection would harmonize labeling standards while reducing marketing costs. If US products are of recognized qualities or reputations, enabling foreign consumers to quickly select these products would also enhance sales.</p>
<p>After all, the US, like Europe, has its own geographical indications. These indicators include Idaho potatoes, Florida oranges, Vidalia onions, Napa Valley wines and Washington State apples.</p>
<p>Fourth, greater protection of geographical indications would benefit US consumers by enabling them to purchase authentic products locally. Many Americans now travel abroad and have a better understanding of foreign cuisines and cultures. After tasting Parmigiano-Reggiano in Italy or sipping Darjeeling tea in India, they would certainly appreciate finding the same products in home grocery stores. </p>
<p>Finally, European countries and industries continue to shame the US into offering stronger protection of geographical indications. In January 2013, for instance, the champagne lobby strongly <a href="http://www.wine-searcher.com/m/2013/01/obama-inauguration-irks-champagne-producers">protested</a> the listing of “Korbel Natural Russian River Valley Champagne” on the menu of the inauguration dinner for the second term of the Obama administration. As the lobby’s spokesperson emphatically <a href="http://www.huffingtonpost.com/2013/01/10/obama-inauguration-champagne-french_n_2448408.html">declared</a>, “Champagne only comes from Champagne, France,” not Sonoma County in California.</p>
<p>In sum, although the US is unlikely to volunteer to strengthen protection of geographical indications, it may be willing to do so if the EU offers the right concessions in other areas of trade or investment. Thus, the TTIP negotiations – despite the ongoing challenges – can serve as an important platform for the two trading powers to narrow their differences.</p><img src="https://counter.theconversation.com/content/46592/count.gif" alt="The Conversation" width="1" height="1" />
<p class="fine-print"><em><span>The authors do not work for, consult, own shares in or receive funding from any company or organization that would benefit from this article, and have disclosed no relevant affiliations beyond their academic appointment.</span></em></p>The US may be closer than people think to a deal over geographical indications, laws that protect products based on their location such as Champagne, Darjeeling tea and prosciutto di Parma.Peter K. Yu, Professor of Law and Co-Director of the Center for Law and Intellectual Property , Texas A&M UniversityIrene Calboli, Professor of Law, Texas A&M UniversityLicensed as Creative Commons – attribution, no derivatives.tag:theconversation.com,2011:article/441072015-07-31T10:49:02Z2015-07-31T10:49:02ZAcademic entrepreneurs’ intellectual property strategies should include more than only patents<figure><img src="https://images.theconversation.com/files/90225/original/image-20150730-10368-t1tpgr.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=496&fit=clip" /><figcaption><span class="caption">Getting a patent isn't the only possible box to check when it comes to protecting IP.</span> <span class="attribution"><a class="source" href="http://www.shutterstock.com/pic-95329345/stock-photo-decision-making-concept-business-woman-touching-screen.html?src=5RrnmAZbkqju-5jnLJpAmQ-1-9">Woman image via www.shutterstock.com.</a></span></figcaption></figure><p>As the director of the <a href="http://www.impactcentre.ca">Impact Centre</a> at the University of Toronto, I work with students, postdoctoral fellows and even faculty members who are interested in commercializing their research. Since 2010, over 100 teams – from the fields of optics, material science, chemistry, computer science and others – <a href="http://www.impactcentre.ca/entrepreneurship/current">have participated</a> in the Impact Centre’s entrepreneurship training and mentorship programs. Some have raised money from investors and sell their products, while others never made it past the lab bench and initial business plan.</p>
<p>Although companies ranging from the University of Minnesota’s <a href="http://www.medtronic.com/us-en/index.html">Medtronic</a> to the University of Toronto’s <a href="http://www.sanofipasteur.ca/node/17302">Connnaught Laboratories</a> have their <a href="https://books.google.ca/books/about/Academic_Entrepreneurship.html?id=yB_SiqnczbQC&redir_esc=y">origin at academic institutions</a>, most academic researchers <a href="http://www.kpu.ca/sites/default/files/Teaching%20and%20Learning/TD.6.3.10_Flaherty%26vonMassow_Mixing_Business_with_Science.pdf">are not versed</a> in product development, intellectual property, market analysis and other core business practices that are vital to successfully commercializing breakthrough science.</p>
<p>Once an academic group comes up with a viable innovation, it’s vital to protect the researchers’ intellectual property (IP) as they move toward commercialization. Of course, patents can play an important part in any company’s IP strategy. However, we’ve found that many government programs, funding agencies and other commercialization support programs focus excessively on obtaining patents. They tend to ignore the fact that any IP strategy must be tailored to the specific technology, company and industry.</p>
<figure class="align-center zoomable">
<a href="https://images.theconversation.com/files/90232/original/image-20150730-10325-17bfpl9.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=1000&fit=clip"><img alt="" src="https://images.theconversation.com/files/90232/original/image-20150730-10325-17bfpl9.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=754&fit=clip" srcset="https://images.theconversation.com/files/90232/original/image-20150730-10325-17bfpl9.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=600&h=399&fit=crop&dpr=1 600w, https://images.theconversation.com/files/90232/original/image-20150730-10325-17bfpl9.jpg?ixlib=rb-1.1.0&q=30&auto=format&w=600&h=399&fit=crop&dpr=2 1200w, https://images.theconversation.com/files/90232/original/image-20150730-10325-17bfpl9.jpg?ixlib=rb-1.1.0&q=15&auto=format&w=600&h=399&fit=crop&dpr=3 1800w, https://images.theconversation.com/files/90232/original/image-20150730-10325-17bfpl9.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=754&h=502&fit=crop&dpr=1 754w, https://images.theconversation.com/files/90232/original/image-20150730-10325-17bfpl9.jpg?ixlib=rb-1.1.0&q=30&auto=format&w=754&h=502&fit=crop&dpr=2 1508w, https://images.theconversation.com/files/90232/original/image-20150730-10325-17bfpl9.jpg?ixlib=rb-1.1.0&q=15&auto=format&w=754&h=502&fit=crop&dpr=3 2262w" sizes="(min-width: 1466px) 754px, (max-width: 599px) 100vw, (min-width: 600px) 600px, 237px"></a>
<figcaption>
<span class="caption">OK, you’ve got your big idea.</span>
<span class="attribution"><a class="source" href="https://www.flickr.com/photos/ian_munroe/4156429482">ian munroe</a>, <a class="license" href="http://creativecommons.org/licenses/by/4.0/">CC BY</a></span>
</figcaption>
</figure>
<h2>Protecting intellectual property</h2>
<p>The products that academic entrepreneurs put on the market are the result of years of research and deep technical expertise. Properly protecting their intellectual assets is vitally important to the future of these knowledge-based companies. If a more established competitor – with its financial resources, sales networks and suppliers – is able to easily copy the new products and leapfrog years of research, then the new start-up will find it very challenging to succeed.</p>
<figure class="align-right zoomable">
<a href="https://images.theconversation.com/files/90226/original/image-20150730-10358-1cv6soi.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=1000&fit=clip"><img alt="" src="https://images.theconversation.com/files/90226/original/image-20150730-10358-1cv6soi.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=237&fit=clip" srcset="https://images.theconversation.com/files/90226/original/image-20150730-10358-1cv6soi.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=600&h=600&fit=crop&dpr=1 600w, https://images.theconversation.com/files/90226/original/image-20150730-10358-1cv6soi.jpg?ixlib=rb-1.1.0&q=30&auto=format&w=600&h=600&fit=crop&dpr=2 1200w, https://images.theconversation.com/files/90226/original/image-20150730-10358-1cv6soi.jpg?ixlib=rb-1.1.0&q=15&auto=format&w=600&h=600&fit=crop&dpr=3 1800w, https://images.theconversation.com/files/90226/original/image-20150730-10358-1cv6soi.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=754&h=754&fit=crop&dpr=1 754w, https://images.theconversation.com/files/90226/original/image-20150730-10358-1cv6soi.jpg?ixlib=rb-1.1.0&q=30&auto=format&w=754&h=754&fit=crop&dpr=2 1508w, https://images.theconversation.com/files/90226/original/image-20150730-10358-1cv6soi.jpg?ixlib=rb-1.1.0&q=15&auto=format&w=754&h=754&fit=crop&dpr=3 2262w" sizes="(min-width: 1466px) 754px, (max-width: 599px) 100vw, (min-width: 600px) 600px, 237px"></a>
<figcaption>
<span class="caption">A lot to ponder….</span>
<span class="attribution"><a class="source" href="https://www.flickr.com/photos/tomgehrke/6890064645">Thomas Gehrke</a>, <a class="license" href="http://creativecommons.org/licenses/by-nc-nd/4.0/">CC BY-NC-ND</a></span>
</figcaption>
</figure>
<p>Fundamentally, an IP strategy allows a technology company to profit from the knowledge, expertise and inventions it has created. One of the most important topics we cover when mentoring teams of researchers is how to protect their IP through practical strategies. The best solution for each group must be based on their own situation and leverage all of the available IP protection tools.</p>
<p>These strategies can be composed of different components, such as:</p>
<ul>
<li>trade secrets – where you don’t tell anyone how your product works and hope no one figures it out</li>
<li>trademarks – where you protect an identifying mark, such as a logo</li>
<li>patents – where you apply to the Patent Office and disclose your invention in exchange for a 20-year monopoly on the use of your invention. If you are successful and your patent is issued, you have to continue paying the Patent Office maintenance fees to ensure your patent remains valid.</li>
</ul>
<p>The role that patents play for these early-stage, usually resource-constrained companies is complex. Founders have to carefully weigh the costs and value of any component of an IP strategy. Factors to consider include legal fees, immediate and future payments owed to the Patent Office, time, impact on business strategy, ability to defend against infringement and the normal practices of the particular industry.</p>
<p>Patents are <a href="http://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule">expensive</a> to file and maintain, require a lot of <a href="http://www.wipo.int/sme/en/faq/pat_faqs_q4.html">time</a> and human resources, and result in the <a href="http://www.wipo.int/patents/en/faq_patents.html">public disclosure</a> of sensitive information. So filing a patent can have drawbacks that must be assessed as part of the start-up’s overall IP strategy.</p>
<figure class="align-center zoomable">
<a href="https://images.theconversation.com/files/90228/original/image-20150730-10329-l2uwmi.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=1000&fit=clip"><img alt="" src="https://images.theconversation.com/files/90228/original/image-20150730-10329-l2uwmi.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=754&fit=clip" srcset="https://images.theconversation.com/files/90228/original/image-20150730-10329-l2uwmi.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=600&h=400&fit=crop&dpr=1 600w, https://images.theconversation.com/files/90228/original/image-20150730-10329-l2uwmi.jpg?ixlib=rb-1.1.0&q=30&auto=format&w=600&h=400&fit=crop&dpr=2 1200w, https://images.theconversation.com/files/90228/original/image-20150730-10329-l2uwmi.jpg?ixlib=rb-1.1.0&q=15&auto=format&w=600&h=400&fit=crop&dpr=3 1800w, https://images.theconversation.com/files/90228/original/image-20150730-10329-l2uwmi.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=754&h=503&fit=crop&dpr=1 754w, https://images.theconversation.com/files/90228/original/image-20150730-10329-l2uwmi.jpg?ixlib=rb-1.1.0&q=30&auto=format&w=754&h=503&fit=crop&dpr=2 1508w, https://images.theconversation.com/files/90228/original/image-20150730-10329-l2uwmi.jpg?ixlib=rb-1.1.0&q=15&auto=format&w=754&h=503&fit=crop&dpr=3 2262w" sizes="(min-width: 1466px) 754px, (max-width: 599px) 100vw, (min-width: 600px) 600px, 237px"></a>
<figcaption>
<span class="caption">This doesn’t have to be your automatic first stop.</span>
<span class="attribution"><a class="source" href="https://www.flickr.com/photos/cytech/3222442854">Kazuhisa OTSUBO</a>, <a class="license" href="http://creativecommons.org/licenses/by/4.0/">CC BY</a></span>
</figcaption>
</figure>
<h2>Patenting game plan should vary by company</h2>
<p>The necessity of a patent differs from case to case and industry to industry. For example, patents play a central role in the IP strategy of one company I’ve mentored that’s developing new chemistry to improve the efficacy of herbicide formulations. </p>
<p>Although the costs of filing and maintaining its patent portfolio are high, they’re a major part of the company’s IP strategy. The pesticide regulatory environment requires significant upfront investment and working with multiple distribution partners to get a product to market. The legal protection provided by patents ensures larger partners or competitors are not able to copy the years of groundbreaking work done by the company’s researchers. </p>
<p>Contrast this with another company working on a coatings technology. Application of the coating can significantly speed up a common diagnostic method used to test for numerous diseases, including HIV. Coatings, unlike drug molecules or new mechanical machines, are very difficult to reverse engineer. This makes them difficult to copy – but it’s also hard to prove when someone else has infringed on your patent.</p>
<p>After carefully weighing the benefits of patent protection against the financial costs, risks of public disclosure and challenge of proving infringement, this company decided to keep their coating formulation a trade secret.</p>
<figure class="align-center zoomable">
<a href="https://images.theconversation.com/files/90234/original/image-20150730-10373-ykj466.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=1000&fit=clip"><img alt="" src="https://images.theconversation.com/files/90234/original/image-20150730-10373-ykj466.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=754&fit=clip" srcset="https://images.theconversation.com/files/90234/original/image-20150730-10373-ykj466.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=600&h=337&fit=crop&dpr=1 600w, https://images.theconversation.com/files/90234/original/image-20150730-10373-ykj466.jpg?ixlib=rb-1.1.0&q=30&auto=format&w=600&h=337&fit=crop&dpr=2 1200w, https://images.theconversation.com/files/90234/original/image-20150730-10373-ykj466.jpg?ixlib=rb-1.1.0&q=15&auto=format&w=600&h=337&fit=crop&dpr=3 1800w, https://images.theconversation.com/files/90234/original/image-20150730-10373-ykj466.jpg?ixlib=rb-1.1.0&q=45&auto=format&w=754&h=423&fit=crop&dpr=1 754w, https://images.theconversation.com/files/90234/original/image-20150730-10373-ykj466.jpg?ixlib=rb-1.1.0&q=30&auto=format&w=754&h=423&fit=crop&dpr=2 1508w, https://images.theconversation.com/files/90234/original/image-20150730-10373-ykj466.jpg?ixlib=rb-1.1.0&q=15&auto=format&w=754&h=423&fit=crop&dpr=3 2262w" sizes="(min-width: 1466px) 754px, (max-width: 599px) 100vw, (min-width: 600px) 600px, 237px"></a>
<figcaption>
<span class="caption">Just one file in the drawer.</span>
<span class="attribution"><a class="source" href="http://www.shutterstock.com/pic-263977949/stock-photo-patents-concept-word-on-folder-register-of-card-index-selective-focus.html?src=_wdHenfJCs_GXGPWU3BoVQ-1-1">Files image via www.shutterstock.com</a></span>
</figcaption>
</figure>
<h2>Patents are just part of the IP protection puzzle</h2>
<p>Rarely are patents the sole method of IP protection used by companies. But there are individuals and organizations that see patents as the direct measure of potential future success for start-ups.</p>
<p>From our extensive experience working with start-ups, some investors will not speak to you, government organizations will not give you funding and university technology transfer offices will not assist in commercializing your technology if you do not have a patent. This can make commercializing anything you don’t want to patent – either for technical or business reasons – very challenging. It can even dissuade academic entrepreneurs from engaging in commercialization at all. </p>
<p>Patents can be very effective in industries and for technologies that lend themselves easily to patent protection and enforcement. However, we need to move beyond the misplaced idea that patents are the only viable method of IP protection. And they certainly don’t provide a <a href="http://www.boozallen.com/media/file/Global_Innovation_1000_2006.pdf">direct measure of the knowledge output and innovation</a> of any company or academic institution. </p>
<p>By encouraging a more nuanced vision of intellectual property along the commercialization pipeline, we can improve the flow of new knowledge and products from our academic institutions to the market. And we’ll all benefit sooner from groundbreaking research.</p><img src="https://counter.theconversation.com/content/44107/count.gif" alt="The Conversation" width="1" height="1" />
<p class="fine-print"><em><span>M. Cynthia Goh is a professor at the University of Toronto and director of the Impact Centre. She has received research funding from the Natural Science and Engineering Council (NSERC), the Ontario Centres of Excellence (OCE), the Ontario Ministry of Research and Innovation, Vive Crop Protection and Axela. The Impact Centre obtains partial funding for its entrepreneurship activities from the Ontario Centres of Excellence. </span></em></p><p class="fine-print"><em><span>Scott McAuley works for the Impact Centre and is a student at the University of Toronto. He has previously received funding and support from the Impact Centre, the Ontario Centre's of Excellence and Grand Challenges Canada for his company Lunanos. </span></em></p>When academics come up with a viable innovation, they need to figure out the best way to protect their intellectual property if they’re going to bring it to market. Patents aren’t always the answer.M Cynthia Goh, Professor, Department of Chemistry, University of TorontoLicensed as Creative Commons – attribution, no derivatives.