T®ADEMARK RIGHT $ versus FREE SPEECH A contrarian view © Ronald D. Coleman GIBNEY, ANTHONY & FLAHERTY, LLP • New York, NY

First Principles The First Amendment “ Congress shall make no law…” Axiom: Trademark rights are a limitation on “speech” (expression) T®ADEMARK RIGHT $ versus FREE SPEECH

First Principles

The First Amendment

“ Congress shall make no law…”

Axiom: Trademark rights are a limitation on “speech” (expression)

[ W]e cannot indulge the facile assumption that one can forbid particular words without also running a substantial risk of suppressing ideas in the process. Cohen v. California , 403 U.S. 15, 26 (1971) First Principles

[ W]e cannot indulge the facile assumption that one can forbid particular words without also running a substantial risk of suppressing ideas in the process.

Cohen v. California , 403 U.S. 15, 26 (1971)

First Principles Courts are not to stake out new territory in the trademark domain at the expense of curtailing the ability of a speaker to communicate his message. Rogers v. Grimaldi , 875 F.2d 994 (2d Cir. 1989)

Courts are not to stake out new territory in the trademark domain at the expense of curtailing the ability of a speaker to communicate his message.

Rogers v. Grimaldi , 875 F.2d 994 (2d Cir. 1989)

In determining the outer limits of trademark protection the weight of the risks of confusion and suppression of expression may tip the scales against trademark protection . Silverman v. CBS, Inc. , 870 F.2d 40, 49 (2d Cir. 1989) First Principles

In determining the outer limits of trademark protection the weight of the risks of confusion and suppression of expression may tip the scales against trademark protection .

Silverman v. CBS, Inc. , 870 F.2d 40, 49 (2d Cir. 1989)

Courts are to be particularly reluctant to issue an injunction , even in a Lanham Act case, where there are delicate questions implicating First Amendment rights. Stop Olympic Prison v. United States Olympic Committee , 489 F. Supp. 1112, 1123 (S.D.N.Y. 1980) First Principles

Courts are to be particularly reluctant to issue an injunction , even in a Lanham Act case, where there are delicate questions implicating First Amendment rights.

Stop Olympic Prison v. United States Olympic Committee , 489 F. Supp. 1112, 1123 (S.D.N.Y. 1980)

First Principles A trademark may frequently be the most effective means of focusing attention on the trademark owner or its product, the recognition of exclusive rights encompassing such use would permit the stifling of unwelcome discussion , and is forbidden . United We Stand Am., Inc. v. United We Stand, Am. N.Y., Inc. , 128 F.3d 86, 92, n.3 (2d Cir. 1997), cert. denied , 118 S. Ct. 1521 (1998) L.L. Bean, Inc. v. Drake Publishers, Inc. , 811 F.2d 26, 31-33 (1st Cir.), cert. denied , 483 U.S. 1013 (1987) Mutual of Omaha Ins. Co. v. Novak , 836 F.2d 397, 402-03 n.8 (8th Cir 1987)

A trademark may frequently be the most effective means of focusing attention on the trademark owner or its product, the recognition of exclusive rights encompassing such use would permit the stifling of unwelcome discussion , and is forbidden .

United We Stand Am., Inc. v. United We Stand, Am. N.Y., Inc. , 128 F.3d 86, 92, n.3 (2d Cir. 1997), cert. denied , 118 S. Ct. 1521 (1998)

L.L. Bean, Inc. v. Drake Publishers, Inc. , 811 F.2d 26, 31-33 (1st Cir.), cert. denied , 483 U.S. 1013 (1987)

Mutual of Omaha Ins. Co. v. Novak , 836 F.2d 397, 402-03 n.8 (8th Cir 1987)

COMMERCIAL SPEECH Communication of information, expression of opinion, recitation of grievances are all deserving of constitutional protection, and are not commerce . New York Times Co. v. Sullivan , 376 U.S. 254, 267 (1964).

Communication of information, expression of opinion, recitation of grievances are all deserving of constitutional protection, and are not commerce .

New York Times Co. v. Sullivan , 376 U.S. 254, 267 (1964).

SOLE purpose of expression Component parts of a single speech are intertwined Information is not transformed into commercial speech, even if money is involved. Less protection Rationale, Central Hudson Gas & Electric Corp. v. Public Service Commission “ Four” part test Liquormart v. Rhode Island “ misleading” commercial speech is not protected Prevention of misleading expression No First Amendment protection False advertising Traditional trademark infringement

Component parts of a single speech are intertwined

Information is not transformed into commercial speech, even if money is involved.

Less protection

Rationale, Central Hudson Gas & Electric Corp. v. Public Service Commission

“ Four” part test

Liquormart v. Rhode Island

“ misleading” commercial speech is not protected

Prevention of misleading expression

No First Amendment protection

False advertising

Traditional trademark infringement

Problems: Trademark dilution statute Expansion of trademark right Limited liability for dilution Applies only to “famous marks” News commentary is also exempted Noncommercial speech is exempted Two influential cases Planned Parenthood Fed’n of Am. v. Bucci Jews for Jesus v. Brodsky Antidilution: Blurring or Tarnishment “Blurring and “Tarnishment”

Expansion of trademark right

Limited liability for dilution

Applies only to “famous marks”

News commentary is also exempted

Noncommercial speech is exempted

Two influential cases

Planned Parenthood Fed’n of Am. v. Bucci

Jews for Jesus v. Brodsky

Antidilution: Blurring or Tarnishment

“Blurring and “Tarnishment”

Antidilution Occurs when… Plaintiff’s marks appear on plethora of goods Necessary to evaluate overall impression as a whole Blurring analysis Clear in context of mark’s use Blurring in Brodsky? Tarnished Jews for Jesus mark Tarnishment in Brodsky? Hershey’s Teletech Mar’s

Plaintiff’s marks appear on plethora of goods

Necessary to evaluate overall impression as a whole

Blurring analysis

Clear in context of mark’s use

Blurring in Brodsky?

Tarnished Jews for Jesus mark

Tarnishment in Brodsky?

Problems: Trademark infringement, and more on Brodsky Likelihood of confusion? Stylized mark - No star in domain name Prohibits use “in commerce” “In commerce” is akin to “commerce clause” § 32 Liability, Section 1114 § 43 Liability, § 1125 claim Protecting The Thoughtless Consumer

Likelihood of confusion?

Stylized mark -

No star in domain name

Prohibits use “in commerce”

“In commerce” is akin to “commerce clause”

§ 32 Liability, Section 1114

§ 43 Liability, § 1125 claim

Protecting The Thoughtless Consumer

Protecting The Thoughtless Consumer The Lanham Act Second circuit explanation Use of a domain name (1996-1998) Brodsky case: Represents high watermark of argument Planned Parenthood Web site Brodsky Web site Pre- Brodsky argument

The Lanham Act

Second circuit explanation

Use of a domain name (1996-1998)

Brodsky case: Represents high watermark of argument

Planned Parenthood Web site

Brodsky Web site

Pre- Brodsky argument

Likelihood of Confusion Predominant rationale: Initial interest confusion Traditional usage of Initial Interest confusion Teletech, supra , 977 F. Supp. At 1414 Checkpoint Sys. V. Check Point Software Techs Syndicate Sales v. Hampshire Paper Corp.

Predominant rationale: Initial interest confusion

Traditional usage of Initial Interest confusion

Teletech, supra , 977 F. Supp. At 1414

Checkpoint Sys. V. Check Point Software Techs

Syndicate Sales v. Hampshire Paper Corp.

What Do You Think . . . Is the damage to the First Amendment done by these decisions significant? Will the Supreme Court ever speak on these issues? Should the trademark bar urge Congressional action? Or will the problem just "heal itself"?

Is the damage to the First Amendment done by these decisions significant?

Will the Supreme Court ever speak on these issues?

Should the trademark bar urge Congressional action?

Or will the problem just "heal itself"?

QUESTIONS? Where’s the bathroom?