The U.S. Trademark Office denied an application to register “.sucks” as a trademark. The Court of Appeals affirmed. Cokato attorney Tom James explains.
Most people are familiar with a few gTLDs (generic top level domains). The gTLDs .com, .net, .biz, .info, .edu and .gov come to mind. The list of available gTLDs has grown considerably over the past few years, however. Now there are literally hundreds of them. (View the full list here.) Some examples: .food, .auction, .dog, .beer.
And .sucks.
The United States Trademark Office denied an application to register that gTLD as a trademark. The Federal Circuit Court of Appeals just affirmed that decision. The case is Vox Populi Registry, Ltd., No. 2021-1496 (Fed. Cir., February 2, 2022).
The applications
Vox is the domain registry operator for the .SUCKS gTLD. The company filed two trademark applications with the USPTO. One was for the standard character mark .SUCKS in Class 42 (computer and scientific services) for “[d]omain registry operator services related to the gTLD in the mark” and in Class 45 (personal and legal services) for “[d]omain name registration services featuring the gTLD in the mark” as well as “registration of domain names for identification of users on a global computer network featuring the gTLD in the mark.” The other application was for the stylized form of the mark, as shown in the illustration accompanying this article.
The examining attorney refused both applications, on the ground that they failed to operate as trademarks, i.e., as source identifiers. The TTAB agreed, finding that consumers will perceive “.sucks” as merely one of several gTLDs that are used in domain names, not as a source identifier.
Concerning the claim in the stylized form, the Board concluded that although the pixelated font resembling how letters were displayed on early LED screens is not common today, it is not sufficiently distinctive to qualify for trademark protection in this case.
Vox appealed the part of the decision relating to the stylized font to the Federal Circuit Court of Appeals. The court affirmed.
The standard character mark
Under the Lanham Act, a service mark may be registered only if it functions to “identify and distinguish the services of one person . . . from the services of others and to indicate the source of the services.” 15 U.S.C. § 1127. Matter that merely conveys general information about a product or service generally does not function as a source identifier.
In this case, the court held that substantial evidence supported the Board’s finding that consumers will view this standard character mark as only a non-source identifying part of a domain name rather than as a trademark. The court pointed to specimens from Vox’s website that treated domain names ending in “.sucks” as products. rather than as identifier of Vox’s services. Consumers are likely to see gTLDs as part of domain names, not as identifiers of domain name registry operators.
The stylized design
Design or stylization can sometimes make an otherwise unregistrable mark registrable, provide the stylization creates an impression on consumers that is distinct from the words or letters themselves. Here, the Board determined that because of the ubiquity of the font in the early days of computing, consumers would view the pixelated lettering as ordinary rather than as a source identifier.
It appears that Vox did not claim that the stylized presentation of .SUCKS had acquired distinctiveness. If it had done so – and if it could present persuasive evidence of acquired distinctiveness – then the stylized mark might have been registrable.
Conclusion
Does this decision mean that a gTLD can never serve as a trademark? No. To give just one example, AMAZON is both a gTLD and a trademark. The import of the case is only that a gTLD is not likely to be registrable as a service mark for a domain name registry service, where consumers are more likely to see it as simply being a part of a domain name, not as an identifier of a particular domain registry service.
In 2020, New York legislators introduced bills to require book publishers to offer licenses to libraries to allow them to make digital copies of books (“e-books”) available to the public. The idea has spread to other states. Cokato attorney Tom James explains why these proposals do not rest on solid legal ground.
In 2020, New York legislators introduced bills (S2890 and A5837) to require book publishers to offer licenses to libraries to allow them to make digital copies of books (“e-books”) available to the public.
The idea has spread to other states. Legislators in Rhode Island (H6246), Maryland (HB518 and SB432), Missouri (HB2210) and Illinois (SB3167) have introduced similar bills. Groups in Connecticut, Texas, Virginia, and Washington are lobbying for similar legislation in those states.
The New York bill passed out of the legislature, but Governor Kathy Hochul vetoed it. Maryland, on the other hand, enacted their bill into law. SeeMd. Code, Educ. §§ 23-701, 23-702 (2021). It was slated to go into effect on January 1, 2022. Bills in other states are still pending.
AAP lawsuit
The Association of American Press Publishers (AAP) filed a complaint seeking declaratory and injunctive relief against the State of Maryland in federal district court in December, 2021, asserting that the new law is preempted by the federal Copyright Act. The district court has granted a preliminary injunction against the enforcement of the new law.
Preemption
Governor Kathy Hochul vetoed the New York bill because she believed that federal copyright law preempts the field of copyright regulation. Assuming it is not settled or dismissed, the AAP lawsuit should sort that question out. In the meantime, here is why I believe Governor Hochul is correct.
Express preemption
The Supremacy Clause of the U.S. Constitution makes the “Constitution, and the Laws of the United States which shall be made in Pursuance thereof . . . the supreme Law of the Land . . . any Thing in the Constitution or Laws of any State to the Contrary notwithstanding.” U.S. CONST. art. VI, cl. 2. For this reason, Congress may enact legislation expressly preempting state laws. Pacific Gas & Elec. Co. v. State Energy Res. Conservation and Dev. Comm’n, 461 U.S. 190, 203 (1983). Congress did this in § 301(a) of the 1976 Copyright Act:
“all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by sections 102 and 103 . . . are governed exclusively by this title….”
Of course, like nearly all legislation, the Copyright Act contains an exception (more familiarly known as a “loophole.”) Despite the preemption of state laws regulating copyrights, states may regulate “activities violating legal or equitable rights that are not equivalent to any of the exclusive rights within the general scope of copyright as specified in section 106.” 17 U.S.C. §§ 301(a), (b)(3). Those exclusive rights are the rights to reproduce, distribute, publicly display, publicly perform, and make derivative works based on a copyright-protected work.
Literary works are protected by copyright whether they are in paper or digital form. The question, then, is whether state laws creating what amount to compulsory licenses regulate or impinge upon the exclusive rights of copyright owners, or whether they regulate something else that is not covered by the Copyright Act. As indicated, the Copyright Act gives copyright owners the exclusive rights to distribute, publicly display, and publicly perform their works. A state law dictating to a copyright owner how, when and to whom s/he may exercise those rights (such as by granting a license) would certainly appear to regulate and impinge upon the exclusive rights of copyright owners.
Implied preemption
Even if Congress had not expressly preempted state regulation of the exclusive rights of copyright owners, it seems likely that the same conclusion would be reached on other grounds anyway.
The United States Supreme Court has held that even if Congress has not expressly preempted state laws – or if express preemption is not determinative because the “loophole” might apply – state laws relating to a particular subject matter may be implicitly preempted in some cases. Arizona v. U.S., 567 U.S. 387, 398–400 (2012).
There are two kinds of implied preemption: conflict preemption and field preemption. Field preemption occurs when Congress has “legislated so comprehensively” in a field that it has “left no room for supplementary state legislation.”R. J. Reynolds Tobacco Co. v. Durham Cty., 479 U.S. 130, 140 (1986). Conflict preemption occurs when a state law “stands as an obstacle to the accomplishment and execution of the full purposes and objectives of Congress.” Crosby v. Nat’l Foreign Trade Council, 530 U.S. 363, 373 (2000); see alsoASCAP v. Pataki, 930 F. Supp. 873, 878 (S.D.N.Y. 1996).
Like an express preemption with a loophole, implied preemption does not apply if the state-created right protects a substantial “interest[ ] outside the sphere of congressional concern in the [copyright] laws.’” In re Jackson, 972 F.3d 25, 34–37 (2d Cir. 2020) (internal punctuation and citation omitted). On the other hand, if the state law is “little more than camouflage for an attempt to exercise control over the exploitation of a copyright,” then it is preempted. Id. at 38.
The Copyright Act “creates a balance between the artist’s right to control the work during the term of the copyright protection and the public’s need for access to creative works.” Stewart v. Abend, 495 U.S. 207, 228 (1990); see alsoCollege Entrance Examination Bd. v. Pataki, 889 F. Supp. 554, 564 5 (N.D.N.Y. 1995) (evaluation of “the balance struck by Congress between copyright owners found in § 106 of the Copyright Act and the exceptions to those exclusive rights found in §§ 107–118 of the same Act” leads to a finding that the state law is preempted). Congress has struck that balance by giving the author a right “arbitrarily to refuse to license one who seeks to exploit the work.” Stewart, 495 U.S. at 229. See alsoLawlor v. Nat’l Screen Serv. Corp., 270 F.2d 146, 154 (3d Cir. 1959) (the right to exclude others is a corollary to the licensing right).
Courts have been fairly consistent in finding that copyright law preempts state laws “that direct a copyright holder to distribute and license against its will or interests.” See, e.g., Orson, Inc. v. Miramax Film Corp., 189 F.3d 377, 386 (3d Cir. 1999), cert. denied, 529 U.S. 1012 (2000). An argument might be made that states have the power to regulate the terms of a license. That, however, is significantly different from requiring a rights holder to grant licenses. At least one court has held that state laws that “appropriate[] a product protected by the copyright law for commercial exploitation against the copyright owner’s wishes” are preempted by the federal Copyright Act. Orson, Inc. v. Miramax Film Corp., 189 F.3d 377, 386 (3d Cir. 1999), cert. denied, 529 U.S. 1012 (2000). A fortiori, a state law that appropriates a content creator’s exclusive right to decide whether and how to allow others to exercise one of his or her exclusive federally protected rights should be held to be preempted.
Moreover, the Copyright Act already covers the kinds of special concessions that copyright owners need to make to public libraries. Publishers should not be subjected to a complex array of state and federal laws making inroads into their federally protected rights, particularly where those inroads could vary significantly from state to state.
The “public interest”
Those who advocate for legislation of this kind typically assert the public interest in having access to literary works. The public certainly does have an interest in having access to literary works. The public also has an interest in having access to food. Does that mean government should force grocers to give a share of their inventory away to the public? That is essentially what these bills do to publishers, albeit indirectly.
One reason people will buy their own copy of a printed book instead of simply reading a library copy is that they do not want to have to get up out of their chairs and make a trip to a library. Digital copies are much easier to access, however. It generally may be done without ever having to get up out of one’s chair. An author may spend hundreds, or even thousands, of hours of his or her time researching, writing, compiling, proofing and editing a book. The least a reader – or a government acting on behalf of reader – can do is pay a couple of bucks for that, rather than using the strong arm of the law to force works to be made freely available online to anyone who applies for a library card – which often is also free, as well.
Absence of need
In any event, most publishers already make their digital catalogs available to public libraries. Something like half a billion digital check-outs from public libraries already occur every year. So why are some states trying to mandate this kind of licensing instead of simply allowing publishers and distributors to continue offering and negotiating licenses as they have been?
That question is open to speculation. One possibility is the “reasonable rate” requirement these bills would mandate publishers to offer to libraries. Who determines what a reasonable rate is? Well, it could be left to state courts to try to figure out. More likely, though, states would delegate authority to an agency of the state to determine rates. States with legislators and regulators who have a greater interest in being liked by their voting constituents than by a handful of published authors can reasonably be expected to set rates for those authors’ works below what they may have earned in a free market.
Concluding thought
The risk to publishers – and more importantly, to authors – should be obvious. Allowing states to require authors and publishers to sell their works at rates dictated by each state, most probably below market, would undermine the ultimate purpose of the Copyright Clause (U.S. Const. Art. 1, § 8), which is “[t]o promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”
I fear that the continuing outbreaks of state bills like these – which seem extremely likely to be declared unconstitutional – might someday impel Congress to enact a compulsory digital licensing system for e-books on a federal level. If that happens, it will be vitally important for authors, publishers, authors’ organizations and agents to actively monitor and participate in the process.
You might have noticed that Spotify has removed a lot of comedy performances recently. You might be wondering what is going on. Did Jim Gaffigan offend someone? Are Kevin Hart and John Mulaney defecting to form an underground comedy railroad with Dave Chappelle? No, it isn’t either of those things. Yes, somebody probably was offended, but that is not the reason behind Spotify’s decision. It’s copyright.
The problem arises from the fact that when a company licenses the right to share recorded performances, it is really licensing the rights in at least two different works: the sound recording and the underlying composition. The performance and the thing performed. When a person writes a song, he or she owns a copyright in the composition. If someone makes an authorized recording of a performance of it, then that person owns a copyright in the sound recording. The songwriter owns the copyright in the music; the producer and performing artists own copyright in the sound recording.
In the music world, different agencies manage the licensing of these two kinds of copyrights. SoundExchange manages a lot of the licensing of sound recordings; agencies like ASCAP and BMI handle the licensing of musical compositions. Historically, performing rights organizations like ASCAP and BMI have focused on music. They have not collected royalties on behalf of spoken word creators. Recently, however, new organizations have sprung up to fill this need. One of them is Spoken Giants. The organization reportedly has acquired an impressive roster of clients – Jeff Foxworthy, Lewis Black, Patton Oswald, Tom Segura, the estate of Don Rickles. According to their website, the company represents tens of thousands of works.
Spotify has removed a lot of spoken word content because an impasse has been reached in negotiations over spoken word copyright licensing. The Copyright Royalties Board, pursuant to a consent decree, sets songwriter royalty rates for various kinds of uses of musical compositions, which agencies like ASCAP and BMI use when administering music licenses. Until recently, however, no one has gone to bat for writers of spoken word performances. There are no governmentally established royalty rates for them. They must be privately negotiated. Spotify has pulled many spoken word performances from its offerings because a negotiated agreement has not been reached yet.
Should your dad be shaking in his boots?
The U.S. Copyright Act allows for the recovery of statutory damages even if no actual damage can be proven to have resulted from an infringement. Liability for infringement can exist even if no one profited from it or intended to profit from it. This would seem to make everyone potentially liable for repeating a joke they heard someone else tell. Is it true? Can a person be sued for repeating a joke someone else made up?
Copyright protection for jokes
In theory, it is possible for a joke, or at least a particular telling of it, to be protected by copyright. There are some important limitations on liability, however.
Fixation
First, of course, there can be no infringement if there is no copyright. It must be established that the joke is, in fact, protected by copyright. A copyright in a work does not exist unless and until the work is fixed in a tangible medium. If you hear someone telling a joke that nobody has ever recorded or written down, and the telling of the joke was not recorded, either, then no copyright exists. No copyright, no infringement.
Originality and creativity
Copyrights cannot be acquired by copying someone else’s work. If, for example, Paula, without securing an assignment of the copyright or at least a performance license, repeats a joke she read in a book, and Henny hears and repeats it, Paula should not win if she sues Henny for infringement. The owner of the copyright in the book might have a claim, but Paula would not.
The independent creation doctrine is another obstacle to copyright protection for jokes. If two people independently create the same joke, and neither one copied the other – not even subconsciously – then they each own a copyright and neither one is guilty of infringing the other.
Public domain
If a joke is so old that the copyright has expired, then it is in the public domain. In that case, anyone can use it any way they want. Currently, the term of most (not all, but most) copyrights is 70 years plus the life of the author. In many cases, this would easily put your dad in the clear.
By the way, if you are looking for some good medieval humor, try Poggio Barcciolini’s Facetiae.
Expression vs. facts
Copyright only protects expression; it does not protect facts or information. Consequently, the facts stated in a joke, if any, are not protected by copyright. For example, consider the joke, “There is a scale that measures not only weight but also body fat, bone mass, and water percentage. Now you can choose four different reasons to be ashamed.” Most of that joke conveys factual information. That part is not protected by copyright. The only question is whether the punch line is.
Idea vs. expression
Since copyright only protects expression, it makes sense that an idea also does not get copyright protection.
The distinction between an idea and an expression might be the biggest obstacle to copyright protection of a joke there is. A situation with humorous implications is considered an unprotectable idea. This was established in the case of Nichols v. Universal Pictures Corp, 45 F.2d 119 (2d Cir. 1930). There, a writer sued a production company for creating a comedy show involving a Jewish man marrying an Irish-Catholic woman, with characters demonstrating stereotypical characteristics of members of those demographic groups. Although the writer had created a story based on the same premise, he lost the case. The court ruled that the ideas on which a story was based are not protected by copyright.
This can present a formidable problem for comedy writers. Even if they come up with a great idea for a joke or comedy routine, they will not be able to prevent other comedians from using it, so long as these other comedians come up with sufficiently different ways of telling it.
The idea-vs-expression dichotomy is made even more difficult to surmount by virtue of the merger doctrine. This is a legal principle that says that if there are limited ways to express an idea, the idea will merge with the expression of the idea and the expression will receive no copyright protection. The classic examples are a recipe or a set of rules for a game. A recipe is an idea. A set of rules for a game is also an idea. Therefore, to the extent a recipe merely states what is needed to know to make the concoction, it is not protected by copyright.
To the extent a rules list merely explains how the game is played, it is not protected by copyright. In these cases, the idea is said to have “merged” with the expression, so the expression does not receive copyright protection. The only expression in a recipe or a set of game rules that gets copyright protection is that which is not necessary to the preparation of the dish or the playing of the game. (This probably explains why so many recipe publishers include extraneous anecdotes and fluff in them.)
You can imagine how this could present a problem for a gag-writer. Jokes express ideas, hopefully amusing ones. For this reason, a bare-bones pun, or a one-liner like the ones that Henny Youngman and Rodney Dangerfield would tell, are less likely to be protected by copyright than are comedy routines that involve a lot of extraneous detail.
Fair use
The Fair Use Doctrine is a defense to copyright that may present an obstacle to the enforcement of a copyright in a joke sometimes. In general, the doctrine says that people may use copyrighted material in commentary, reporting, teaching, research, and sometimes other uses, if four broadly worded factors weigh in favor of allowing such use without liability for infringement:
The purpose and character of the use
The nature of the work
The amount and substantiality of the portion copied
The effect of the use on the market for the work.
Unfortunately, “fair use” is not a well-defined concept. Courts are not always in agreement about how to balance these factors. Appellate reversals of district judge opinions on the matter are not uncommon.
Epitaph
Just kidding.
Recognizing the rights of comedy writers does not have to mean the death of fun. For one thing, it is important to keep in mind what “infringement” means and what it does not mean. There are lots of uses a person can make of copyrighted material without putting himself or herself at risk of being sued for infringement. If you buy a copyrighted painting or print, you can display it in your home, so long as you do not open your home to the public and you do not charge a fee for your guests to view it. The same is true of a movie on DVD. You can play a DVD recording that you purchased as many times as you want to in your own home, so long as you do not invite the public in and so long as you do not charge a fee.
Similarly, there should be no problem with re-telling a joke to family and friends in private. Although even limited reproduction and distribution of a copyrighted work can result in infringement liability, an unauthorized performance or display only becomes infringement, in the United States, when it is a public one. Re-sharing a joke in a public forum could be a problem, if none of the obstacles to infringement enforcement that I have discussed in this article apply. Re-telling a joke to members of your family or a small circle of friends for no fee, on the other hand, is not likely to get you into hot water.
