It happened. “The” is a registered trademark now. The USPTO issued a registration certificate for the word “The” to Ohio State University (Sorry; the Ohio State University) on June 21, 2022. How did this happen, and what does it mean?
The The Saga
The legal quest to own “the” began on May 6, 2019, when Marc Jacobs Trademarks, LLC (MJT) filed an application with the United States Patent and Trademark Office (USPTO) to register the word as a trademark for use on clothing, bags and similar merchandise. MJT claimed a first use date of December 3, 2018.
On August 8, 2019, the Ohio State University filed its own application to register the word as a trademark for use on clothing. The university claimed first use in commerce at least as early as August, 2005.
Due to the earlier filed MJT application, the examining attorney issued an office action to the Ohio State University. It referenced the earlier filed MJT application as a potential bar to registration of the Ohio State University claim. The application was suspended pending the outcome of MJT’s “the” application.
MJT’s application was published for opposition on October 27, 2020. The Ohio State University filed an opposition. The Ohio State University alleged that;
[MJT’s THE mark] “so resembles Ohio State’s THE mark as to be likely, when used on or in connection with the applied-for goods, to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection or association of MJT with Ohio State, or as to the origin, sponsorship or approval of the applied-for goods or commercial activities by Ohio State, all in violation of § 2(d) of the Trademark Act….”
Opposition of The Ohio State University in re: TM Application No. 88416806
It appears that the parties have reached a cooperative use agreement of some kind. The opposition has been withdrawn and the opposition proceeding has been terminated.
Ornamentation vs. The Registered Trademark
Both companies have faced objections from examining attorneys that their uses of the word “the” on clothing were ornamental. A decorative use of a word, symbol, design, etc. that does not function as an identifier of the source of a particular product or service is not sufficient to satisfy the “use in commerce” requirement for trademark registration.
After the USPTO rejected the MJT application in March, 2020, MJT filed a successful request for reconsideration. That led to the publication for opposition to which the Ohio State University responded. The USPTO issued a Notice of Allowance on October, 2021. The MJT application is still pending in the USPTO.
The Ohio State University initially encountered the same kind of resistance from the USPTO. The university remedied the problem, however, by showing that it wasn’t just using the word ornamentally; it was also putting it where trademarks usually go, such as inside the shirt at the back of the neck and on its website.
That satisfied the examiner. The mark was published for opposition, and on June 21, 2022 a registration certificate issued.
Scope of The Registered Trademark
Does this mean nobody can use the word “the” in a trademark anymore? No.
To begin with, the Ohio State University has only registered it in Class 25. Class 25 consists of sports and collegiate athletics clothing.
The ultimate question, in all cases, is whether another company’s use of the word would be likely to confuse consumers as to the origin of a product or service. The Tax Curative Institute should have very little to fear from the Ohio State University’s registration of “the” as a trademark for collegiate and athletic clothing.
What about displaying the word on clothing, though? Does the Ohio State University’s ownership of the “the” trademark for clothing mean that no one can display the word “the” on a T-shirt now?
Not necessarily. Purely ornamental uses of the word should not expose a T-shirt seller to a risk of infringement liability. For example, a company selling T-shirts emblazoned with the band name “The Slants” should not have to worry about being sued by the Ohio State University.
Of course, unless they have a license from The Slants, they might encounter some pushback for using the band’s name. That’s because the band owns a trademark in their name (“Slants”). Merely using the word “the,” however, should not be a problem. Consumers are not likely to think that every shirt they come across originates from The Slants merely because it has the word “the” on it.
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.
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.
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.
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.
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.