You Can Trademark That?  They Can Own What? Who Knew?

There are many reasons we have IP laws – but primary among them is to encourage creative types like artists and inventors to profit from their efforts by way of royalties or exclusive rights.  To encourage those efforts, the intellectual property laws give authors and creators a relative monopoly over something they’ve created- a trademark, an invention, a script, a computer program, etc.  It’s like society is saying “you made it, so you can own it – at least for a while…”

But a natural tension immediately presents itself when we grant these exclusive rights.  Our culture wants to embrace, use and assimilate all that is cutting edge and new without having to ask for permission.  We take– no we borrow Pharrell Williams’  “Happy” riffs and make them background to our YouTube® videos of our cats and our dogs.  We exppropriate “just a” screen capture from the Godzilla movie and create e-cards or embed them on our Facebook® pages.  Our post 90s, crowd sourced, media-centered sensibility has created this “if it’s out there it must be free” (or “it wants to be free”) ethos – right?  Share and share alike.  Aren’t we all better off that way?

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As an IP lawyer I’m constantly whip-sawed by one client’s desire to obtain exclusivity on a new twist to an old theme and the next one’s demand to squeeze its use of someone else’ IP into the “fair use” category.  It’s apparent that we are a culture that is as enamored of ownership and exclusivity as we are of borrowing the next cool thing that can be digitized and copied and integrating it into our day to day.  How do we balance those competing forces? That’s what I do for my career and what I want to explore with this blog…

Some recent examples of ownership versus free access are illustrative of the disconnect between the common ethos and the laws that are meant to encourage creative endeavors.  These skirmishes also demonstrate how complicated the analysis can get for people seeking to fence off their efforts from misappropriation.

There has been ample discussion lately of Google trying to protect GLASS as a trademark.  While lay people view Google’s efforts as an unfair attempt to own a common word, the legal battle is much more nuanced.  In fact Google’s inability to obtain the mark for itself is primarily because someone else (actually several people) got to the trademark office before Google and claimed rights in the word GLASS.  Interestingly, any entitlement to the word as a trademark has already been decided in favor of granting a property right—as long as the person asking doesn’t use the mark on glass itself.  That seems counter-intuitive to non-lawyers who might think only truly distinctive words or logos should be protectable.

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In fact, even common words are protectable (and ‘ownable’) as trademarks as long as they meet two basic criteria:  1) the word is not directly descriptive of the items/goods/services to which the mark will be applied; and 2) the proposed user was first to adopt that word for use with the goods in question.  Google allegedly failed the second test but not the first (although the skirmish involving who was first and whether Google’s use conflicts with it is yet to be finally resolved).

There have been similar questions raised recently by attempts to register the mark CANDY (used on a game about, um “candy”) and RED GOLD, a mark used to refer jewelry made of red gold (or an alloy of gold and copper that has a reddish appearance).  Are these names protectable?  Should they be?  The answers are not obvious– but the impact on granting (or refusing) the right can be severe and measurable.

If the purveyor of the very popular CANDY CRUSH SAGA cannot lay claim to the name of its game as a whole, will other copiers or knock off artists of the game be able to also use the identical name and leverage unfairly off the reputation gathered by the original?  Is there a compromise level of protection that would allow CANDY CRUSH SAGA some exclusive rights, but also allow another manufacturer of a different game to use the word “CANDY” without causing confusion?  What if there were a game called Candy Land (just hypothetically)?   Or a mobile Candy Land game?  Would people confuse Candy Crush Saga with Candy Land?  Where do we draw the line on protecting some property but allowing inventors to develop rights in similar “neighborhoods”?

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And the issue is not limited to trademark rights, of course. For example, recently, ecommerce giant Amazon obtained a patent on an arrangement of lights and background for taking photos on a white background. This patent on something that seems somewhat banal to most people opened Amazon to the satiric attack by The Colbert Report, as well as criticism from the photography community.   Again, from a lay person’s point of view one might wonder how a company could be entitled to a monopoly in a lighting arrangement—one that photographers seem to have known about for decades.

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These are perfectly reasonable points of view and questions.  It’s hard to imagine that Amazon will try to enforce this patent against other photographers.  Perhaps the issued patent will actually be used as an alternative form of enforcement if someone is “borrowing” Amazon’s photographs or taking photos that look exactly like their photos (using Amazon’s exact specifications as set out in the patent).  This would give Amazon two potential forms of enforcement (copyright in the photos themselves and patent in the method or specifications for the taking of the photo).  In any event, the point is that the law will give certain rights to operators who can claim that an exact set of specs is novel and patentable.  Of course, the grant of the monopoly is balanced against a fairly weak ability to enforce (generally) only against those who exactly duplicate precise specifications –and by the reality that the patent may be challenged and invalidated by a defendant with the “wherewithal” to defend itself.

So – while it may seem that sometimes the law is unfairly leveraged to grant rights to common things that may seem unworthy of protection, the law also balances those exclusive rights by only allowing narrow claims to stand, and then only in certain circumstances.  Weaker trademarks co-exist.  Weaker patents may be overcome or only narrowly enforced.   It may seem crazy—granting rights in challengeable or common subject matter, but then what if there were two or three different board games about property barons, each called “MONOPOLY.”  That would be confusing… There needs to be just one- and to ensure that there is just one, Hasbro needs a trademark grant that protects its right as the first producer of that famous game….