You may have noticed some faux gravity in media outlets of late dealing with cheese. If you’ve been tuned to Olympic coverage, you are forgiven for having missed such rollicking headlines as: “Judge Won’t Give Gruyere the Champagne Treatment.”[i]   Or Planet Money’s  “cheesy story” on radio trying to decipher a label with a trade policy expert from Georgetown Law School[ii]; or its cutesy sign off: “Looks like this is going to be a real wedge issue.”[iii]

The Wall Street Journal’s Joe Queenan makes sport of an impending “Gunfight at Gruyére Gulch.”[iv] But he may have downplayed the stakes. What if you want to carry the Alpine theme into your winter entertaining and offer guests a bit of fondue or a cheese plate? How do you know what’s an authentic Gruyère cheese, if there is any such a thing? Does it matter?

A fanciful depiction of the Swiss cantons where Gruyere is made under the protected AOP Le Gruyere

Gruyéres, the Place

It seems to matter a great deal to the Swiss. After all, they popularized this nutty tasting cow milk cheese, whose origins are said to date back to the early 12th century.  Named for the town of Gruyéres in western Switzerland, the cheese was introduced here to mass taste buds at the 1964 New York World’s Fair in the form of fondue[v] served at the Swiss pavilion’s Alpine restaurant.[vi]

Sampling fondue in the 1960’s was an unforgettable experience, indelibly imprinted in the U.S. psyche and connected intimately to Switzerland. That background might help explain the tenacity of the Interprofession du Gruyére, a Swiss trade association and cheese producer organization (“Interprofession”), in pursuing protection in the U.S. for the term Gruyère against some very large U.S. odds, namely U.S. dairy interests that would prefer to loosen the ties between the cheese and the Alps.

 What is a Certification Mark?

The mechanism for protecting such a term under U.S. law is a certification mark and protection is achieved via registration similar to a trademark. Many European countries, as well as Vietnam, India and others, recognize a parallel protection system based on Geographical Indications (GIs). As we have elsewhere explained in previous blogs, GIs denote a close connection between a product like cheese, and a specific place, including natural features like soil, climate and vegetation, and traditions of production like cheese making, aging and curing. Some GIs indicate a very tight relationship with place; these are known in older protection systems as Appellation of Origins (also used for wine growing areas) or Protected Designations of Origin (PDOs), or in French, Appellation dOrigine Protégée (AOP) or Appellation dOrigine Controlée (AOC). If the relationship to place is a bit looser, the term applied may be simply Protected Geographical Indication (PGI).

Within the European Union system, the term Gruyère is a recognized PDO, the highest form of GI.  Under the French national system, the same term is approved as a PGI. (The cheese is also made by some French producers in the areas bordering Switzerland.)

Le Gruyere certified cheese as found in California markets. Photo by the author.

The U.S. has been reluctant to join international treaties like the Lisbon Agreement and its more recent Geneva Act that explicitly protect GIs, deferring to the interests of the powerful agricultural export lobby. Instead, our system uses certification marks to satisfy U.S. obligations under international trade agreements like TRIPS (the agreement on trade-related international property required for entry into the World Trade Organization.)

Under the Trademark Act (15 U.S.C.§ 1127), also known as the Lanham Act, protection may be afforded to a word, name symbol or device used to certify regional or other origin, material, mode of manufacture, quality, accuracy or other characteristics of goods. Essentially, such marks are employed to certify that authorized users’ goods or services originate in a specific geographic region.  Organizations that certify such characteristics may apply to register their marks at the US Patent and Trademark Office (USPTO). Several well-known U.S. certification marks have long been registered, including IDAHO POTATOES, KONA COFFEE GROWERS, and NAPA VALLEY. The U.S. system also protects foreign certification marks like ROQUEFORT. (See below.)

A guaranty of quality: Roquefort Cheese


In 2010, Interprofession first applied to register LE GRUYÉRE as a certification mark for a type of cheese produced in Switzerland (but not France.)  The USPTO rejected the application, finding that Gruyére is a type or class of firm cheese made of cow’s milk with a rich and nutty flavor, not exclusive to Switzerland. The connection between place (Switzerland) and the cheese was viewed as too weak in the mind of consumers and purchasers to warrant protection in the U.S. In 2013, Interprofession again sought protection in the U.S., but this time it modified the certification mark to encompass a design and word mark. The new mark included a Swiss cross, the letters AOC, and the words LE GRUYERE SWITZERLAND. (See photo.)  That mark was granted registration, but exclusivity extends only to use of the entire mark with design and AOC[vii], not Gruyére alone. This certification mark can be applied to cheese sold in the U.S. only if the cheese originates in the Gruyére region of Switzerland (but not France.)[viii] Cest si bon!

In 2015, Interprofession joined with its sister French cheesemaking association to  apply again to register GRUYÉRE at the USPTO as a plain word mark for cheese originating in the Gruyére regions of both Switzerland and France and made from   Alpine grass fed cows according to traditional methods. The USPTO approved registration of this mark and published it for opposition in the normal course. The application attracted the attention of the U.S. Dairy Export Council which filed an opposition to register the mark.[ix] The Council argued that cheese purchasers in the U.S. understood Gruyere to be a “generic term” referring to a type of cheese that can be produced anywhere.[x] After extensive briefing, the Trademark Trial and Appeals Board (TTAB), which adjudicates oppositions to registrations, issued a detailed opinion. It concluded that purchasers and consumers of cheese in the U.S. understand Gruyére to refer to a type of cheese that can be produced anywhere. The Swiss and French associations begged to differ and filed an appeal at the Eastern District of Virginia.[xi]

Adieu Ma Fondue?

The district court found on summary judgment that the term Gruyére was generic in the U.S., based on the TTAB record and new evidence introduced by the parties. The evidence included: history of sales of cheeses marked Gruyere that were produced in the U.S. since at least 1987[xii]; history of cheeses imported from countries other than Switzerland and France that were labeled Gruyere; and failure by the Swiss and French associations prior to 2012 to “police” the use of these offending Gruyere marks during a notable period of time (meaning they did not adequately assert their rights to prevent those other producers from distributing faux gruyére in the U.S.)

Some background is useful. Interprofession reached an agreement in 2013 with a Wisconsin producer (whose origins were actually in Switzerland) to discontinue using the Gruyere label on cheese it distributed under the house brand Emmi Roth. But that agreement did not extend to cheese that clients of Emmi Roth distributed under their private labels. That explains why Boar’s Head could sell Gruyere cheese not from Switzerland (see photo) or the Wegman grocery chain could continue selling their “Mild Gruyere,” even if they bought such cheese from Emmi Roth of Wisconsin.[xiii]

Toe to Toe: Boar’s Head private label cheese vs Swiss Gruyere. Photo by the author.

Because generic terms are not entitled to protection under the law, as recently discussed by the Supreme Court in, the court found that Gruyere was not registrable.

Gunfight at Gruyere Gulch Far From Over

The Swiss and French associations were more than disappointed by the decision rendered. They were disbelieving. “With this decision” said Philippe Bardet, the director of Interprofession,” you can make a little cheese, a big cheese, a hard cheese, a processed cheese—and you can give the name ‘gruyere ‘for all types of cheese.”[xiv] Impossible!

He makes a good point that is relevant to us consumers. What do these cheese names really mean? What is an authentic cheese? An artisanal cheese? Do all cultures (and countries) recognize certain cheeses as having the same distinctive qualities? Can a cheese name become generic through the introduction of “copycat” forms of production that are untethered from the original conditions that make for distinctive taste and quality? What then does it take to maintain the integrity of a product in a global world? Is Gruyére destined to wind up like Brie or Chablis in the U.S., unhinged from their origins?

What is Really Going on Here? Muddled Trade Policy and GI Envy

This case and the related questions are being aired against a backdrop of international trade policy. After a decade of sluggish progress on the part of the U.S. Trade Representative (and scuttling of the TransPacific Partnership)[xv], U.S. industry awakened to find that the European Union was pressing forward with bilateral and regional free trade agreements (FTAs) that include robust protection of GIs.[xvi]  The markets at stake are critical: China, Canada, Japan, Mexico and the Mercosur region, to name a few.  Among the lists of agreed protected GIs in these FTAs are many cheese names.

The U.S. industry planted a stake in the ground in the renegotiation last year of a trade agreement with Canada and Mexico to replace NAFTA.  The resulting USMCA agreement includes provisions intended to roll back some GI protections afforded European products in Mexico and prevent the automatic inclusion of future GIs from Europe. Together with the Consortium for Common Food Names (CCFN), the Dairy Export Council has been pushing the argument that many cheese names are just “common names” and therefore can’t be protected in the U.S. — or in other countries.

The industry and the CCFN heralded the decision in the Interprofession case, claiming that the ruling “determined that gruyere is a generic style of cheese that can come from anywhere” and that “all cheese makers, not just those from France or Switzerland, can continue to create and market cheese under this common name.” [xvii] In an undignified blow, the industry also complained that “Europe continues its aggressive and predatory efforts to confiscate names that entered the public domain decades ago.”[xviii]

 What Next for Gruyére?

Cheese Plate Tasting: Brie is no longer protected in the U.S; Gruyere is on the cusp pending appeal. Le Gruyere AOP from Switzerland retains protection. Photo by the author.

Interprofession is not taking this salvo lying down. It filed a notice of appeal with the Fourth Circuit Court of Appeals on January 11, 2022. It remains to be seen what arguments it can make about error by the district court. Possible avenues? An attack on the court’s evaluation of evidence on consumer perceptions.  Or a misreading of prior efforts to protect Gruyére. We will see

Meanwhile, pass the cheese plate and see if you can taste the difference. As for me, when it comes to Gruyére, I remain a true Swiss Miss.


[i] New York Times, Business Section, January 12, 2022.

[ii] Planet Money broadcast on National Public Radio, January 28, 2022.

[iii] Ibid.

[iv]Gruyére Made in the U.S.? This Could Get Ugly,” Wall Street Journal, February 5-6, 2022.

[v] The first written recipes for fondue had appeared in 18th century cookbooks and called for Gruyère cheese. Originally a rural and rustic repast, fondue gained some glamour in the 1930s as part of a campaign by the Swiss Cheese Union.

vi] How Melted Cheese Conquered the World, visited February 7, 2022.

[vii] The actual GI designation today is AOP; see photo.

[viii] Gruyere v. U.S. Dairy Exp. Council, 2021 BL 500810 (E.D. Va Dec 15, 2021).

[ix] Other opponents included a tiny New Jersey cheese manufacturer Intercibus, Inc., presumably included so as to humanize the “harm” of allowing Gruyére to be used only for Swiss and French cheeses, and a food retailer named Atalanta Corp, which sells a variety of cheeses on its website, including AOC Gruyere.

[x] 2021 BL 500810 (E.D. Va Dec 15, 2021)

[xi] Law students and others may recall that decisions of the TTAB may be appealed either to the Federal Circuit or to the Eastern District of Virginia.  If appealed to the Federal Circuit, deference must be given to the findings of the TTAB under the Administrative Procedures Act (APA). If appellants are willing and able to undertake new evidence gathering, they may supplement the record and start afresh at a district court in the Fourth Circuit where the USPTO is located. That’s what the Swiss and French did here. As the district court explained, when new evidence is thus offered, the court must make de novo findings that take account of both the new evidence and the administrative record. Ibid.

[xii] In a cruel twist of fate, the offending production in Wisconsin of Gruyere cheese was begun by a branch of a Swiss company that was a member of theproducers consortium that later sued.

[xiii]  2021 BL 500810 (E.D. Va Dec 15, 2021).

[xiv]Trans-Atlantic Rift: Is Gruyére still Gruyére if it Doesn’t come from Gruyéres? New York Times, January 13, 2022, Note the attention to the correct use of the accent grave!

[xv] “Biden’s Muddled Trade Policy,” The Hill, December 24, 2021.

[xvi] While the 1995 TRIPS Agreement called for members to negotiate protections of GIs in good faith, in fact, not much happened. Meanwhile, members of the Lisbon Agreement pressed forward with the Geneva Act to more expressly protect GIs. And the EU began to include GI protections in its FTAs.

[xvii] U.S. Dairy Export Council, press release dated January 7, 2022. “Judge Rules ‘Gruyere’ is a Common Food Name and Not a Term Exclusive to Europe.  The CCFN has been pushing the dubious argument that there is a public domain of all food names that applies worldwide.

[xviii] Ibid.

The new year is unfolding, and we are unexpectedly back in our kitchens, or should be, as we minimize socializing in indoor restaurants and bars. A downer, to be sure, but also an opportunity to reflect on some legal issues affecting food and wine. With apologies to those who prefer a classic menu, I’ll be approaching these topics in coming weeks in a mezze fashion, with several items arranged to whet your appetite and enrich your knowledge.

Olive Oil and State Pride

In case you missed the enumeration of new state laws going into effect on January 1, 2022, including one about composting all kitchen scraps (implementation date delayed, thank goodness), here is a brief story about AB 535 which amends Section 112895 of the Health and Safety Code of California related to labeling olive oils. This one is for trademark fans as well as cooks and has an interesting backstory.

Before AB 535 was enacted, existing state law required that any label that states “California Olive Oil” or uses similar words must contain oil derived exclusively from olives grown in California.  Likewise, any label that indicates that olive oils are from a specific region of California (for example, the Capay Valley in Yolo County) must be made of oil that by weight is derived 85% from olives grown in the identified region. A similar requirement, but at 95%, applies to labeling of oil from specific olive oil estates. A violation of those requirements related to manufacturing and labeling of olive oils was treated as a misdemeanor.  The watchdog government agency regarding olive oil quality and labeling in California is the Olive Oil Commission of California (OOCC) established in 2014 and funded by olive oil farmers. The OOCC carries out a mandatory sampling program for all olive oil produced in the state; under the OOCC program, labels on olive oil must provide a clear statement of the quality grade of the oil (virgin, extra virgin, etc.). Legislative counsel reported that OOCC’s testing in 2018 revealed 92% compliance with existing law, with some samples exceeding the labeled grade of oil. California consumers have hardly been in danger of encountering low grade olive oil.

The Irritant

This neat scheme and the accompanying rules about the origin of olive oils was upended by the explosive growth of an olive oil producer whose label contained the prominent trademark CALIFORNIA OLIVE RANCH. (See illustration.)

This mark, duly registered at the USPTO in several forms for use with olive oil, claims first use in commerce as early as 2001 for the block letter form (Reg No 4677403); as early as 2016 for a form with the outline of a farmer under a larger font CALIFORNIA and smaller font OLIVE RANCH; (Reg No 5165452), and as early as 2016 and 2018, respectively, for forms of the mark that also include the terms Extra Virgin with attendant pictorial elements (Reg. No. 5279505 and Reg No. 5849332.)

The owner of no less than six registrations for various forms of CALIFORNIA OLIVE RANCH is a company named California Olive Ranch, Inc., (“COR”) located in Chico in Butte County northeast of the state capital Sacramento. The company participates in the OOCC and has been established for many years. Its website history states “it all started with a wild idea: to make the best extra virgin olive oil at an affordable price.”

 A Wild Idea

This quest for innovation and expansion has led COR to become the biggest miller of extra virgin olive oil (EVOO) in the U.S.  As early as 2015, it produced 65% of all extra virgin olive oil products in the U.S.  Today, it manages more than 14,000 acres of olive oil groves in California. Back in 2017, it attracted a multimillion-dollar investment from the Harvard Management Company. Yes, that Harvard. In March 2021, COR announced that it was entering into a leasing arrangement for additional land with a major investment company called Gladstone Land.  According to a breathless account by the trade publication Global AgInvesting in April 2021, the olive oil market “was prime for disruption.”

One company’s disruption can be another company’s downfall. But Mother Nature also can be a disrupter. As reported by The Harvard Crimson, in 2018 “olive ranchers across the state suffered a historically poor harvest season due to unusual weather patterns, leaving farmers with no product to sell to distributors.”  COR responded to the challenge by launching a “global blend” series of oils, incorporating oils from Argentina, Chile, Portugal and other countries into bottles sold under its labels, thus preserving its market share in EEOV. According to the Crimson, this blending of oils was seen by rival producers as a bald way to undersell the competition by selling EVOO at a lower price point. (See photo of the 100% California adjacent.)

Those other producers of California olive oil were riled enough to consider their own wild idea: to forestall the growth of COR via legislation, especially if, as was intimated in grower circles, the EEVO in those bottles sold in California was coming from other countries.  State Representative Cecilia Aguiar- Curry, who represents parts of Yolo, Napa, Sonoma, Colusa and Solano counties in the State Assembly, lent a sympathetic ear and penned the bill.

 Unmasked and Non-Confidential

In late March 2021, newly doubly vaccinated and feeling footloose again, my husband and I decamped for a long weekend to the Santa Ynez Valley of southern California. Known for its wine AVAs like Sta. Rita Hills, Happy Canyon, Ballard Canyon and the Los Olivos District, it is an enchanting area in spring, also home to almond orchards, olive oil tastings and other types of agricultural businesses.  We were enjoying the patio dining of a local café renowned for its homemade bread, when a conversation at a socially-distanced table caught my ear.  A retired lawyer and vineyard owner was expounding about how to cancel trademark registrations owned by COR, while a weathered-looking woman face explained she was active with the producers group. She briefed him on the recently introduced bill in the State Legislature to address the problem of mislabeled California olive oil. Neither took pains to keep their voices low, so I continued to listen attentively, but discreetly.  It was then that I became aware of the great crusade to save California olive oil producers –and by implication consumers—from olive oil that was not wholly produced in state.

The Legislation

Upon returning home, I investigated the availability of CALIFORNIA OLIVE RANCH olive oil in Whole Foods and my favorite Italian grocery.  I found the squat bottles in ample supply. I pondered how the proposed language putting limitations on use of a registered mark that contained the word “California” would fare, since the federal trademarks had been obtained in good faith, point appropriately to the producer/source of the oil, and are still in use in commerce.  State efforts to force changes to the federally registered marks would likely face an uphill battle in court, including arguments about pre-emption and lack of consumer confusion about source.

Another interesting question arose in the language of the bill as drafted in March 2021 which attempted to ban representations about the geographic origin of olive oil.  Should individual words contained within trademarks be considered “representations?” The early version of the bill noted that the “prohibitions apply to any representations made in a brand name, label, tag, packaging, …including oral, written and printed representations.” The proposed remedy in this early version was seizure of the offending products.

We know from the line of cases about scandalous marks that trademarks can function as expressive speech, but what message does a mark like CALIFORNIA OLIVE RANCH convey? Does it signal something other than the source of the product in a way that would be geographically misdescriptive or otherwise mislead consumers, when the ranch, producers, distillers and bottlers are indeed located in California? Would consumers likely believe that all the oil in bottle marked by a trademark containing the word California as part of a compound mark comes from olives harvested within the state? The legislative history makes reference to a January 2021 consumer survey.  When shown packaging for COR’s “100% California Virgin Olive Oil,” 91% of consumers surveyed said they thought the oil came from California. By contrast, when shown packaging for COR’s Global Blend extra virgin olive oil, 92% of consumers surveyed said they thought the oil came from foreign countries. Confusion? What confusion? (See photo of Global Blend below. Note the listing of Argentina, Spain and Portugal as sources for the oil in addition to California. ) On what other grounds might the olive oil producers achieve their objective of making the public aware that all was not Californian in those COR bottles?

I signed up to follow progress on the bill in the legislative committee. I was heartened to see that, despite the 2021 pandemic, legislative business continued apace. The bill passed slowly through various committees and went through changes. After a few drafts, the sponsors apparently hit upon the solution of using the California Health and Safety code to regulate the quality of the oil that is identified as “California Olive Oil” in “any form on its principal display panel” of a container. This would encompass any labels while avoiding the thornier issue of how to weaken the COR registered brand name.  The words representation and trademark do not appear anywhere in the final legislation.

 What the Law Now Says

The prior requirements in the law were kept in place: 100% of any oil produced, processed, offered for sale, given away or possessed in California that indicates on its label “California Olive Oil” or “words of similar import that indicate that California is the source of the oil” must be derived from olives grown entirely in California. The requirements about labeling oil as coming from olives grown in specific regions  and estates are carried forward. It’s notable that the olive oil industry has taken a page from the regulations about labeling prestige California wine regions and estates, like those located in Napa Valley.

What’s new is the requirement that any olive oil produced, processed, sold, offered for sale, given away or possessed in California that contains olive oil produced from olives grown in other locations, in whole or in part, and includes the term California in any form on the principal display panel must state on the same panel the minimum percentage of olive oil in the container that is produced from olives grown in California.  Such information must be displayed in the same font, size and color as used to print “California” on the same panel. A state-mandated enforcement program is established to pursue violations of this law.

An olive oil producer or processor may indicate the geographic origin of olives used in production of the oil —other than California– so long as such indications are truthful and not misleading and do not otherwise violate the new rules about labeling California olive oil. The new rules do not apply to olive oils produced prior to December 31, 2021.

Shopping for Olive Oil and Conclusion

There may not be many ways to press an olive, but there’s more than one way to achieve a legislative objective. Keep an eye this year on your favorite California        olive oil brands and see what new information has sprouted on their labels. Starting after the 2022 olive oil harvest, we should begin to see a change in labels on oils available at the market and festivals. The percentage of oil that is derived from California olives will now be prominently marked on a bottle where the word California appears.  What’s your acceptable number?


Gratitude for artists of all kinds. Museum of Modern Art Sculpture Garden

In a season where expressing gratitude is taking flight, I’m going on record with my appreciation of Judge Margaret McKeown. With clarity and panache, and a bit of her own rhymes, she laid to rest a strained decision regarding fair use and set out clearly the prevailing analysis for the Ninth Circuit of the four-factor fair use test. Dr. Seuss Enterprises v. ComicMix LLC.  [1] Along the way, she debunked the tendency to view as “transformative” any use that makes even a slight change to a copyrighted work.  Thank you, Judge McKeown and the authors of the excellent amici curiae briefs that no doubt aided her analysis!

The Mashup Case

Dr. Seuss Enterprises (Seuss), the plaintiff-appellant from the March 2019 Southern District of California decision below[2], won on its copyright infringement claim against ComicMix LLC (Comic Mix) and the three individuals responsible for mashing up the characters, drawings, and storyline of the Seuss original book Oh, The Places You Will Go! (Go!) with recognizable Star Trek-inspired characters into Oh, The Places You Will Boldly Go!  (Boldly!).

Looking for a sure hit in book sales, ComicMix’s two creators thought if they could just copy the Seuss success with Go! and salt in some Star Trek elements, they would unleash a new universe of buyers. Their ambition led them to envision a primer that would “place the Star ship Enterprise crew in a colorful Seussian landscape full of wacky arches, mazes and creatures, a world that is familiar to Dr. Seuss readers, but a strange new planet for Captain Kirk’s team.”[3]

The artist hired may have been too talented. He “painstakingly attempted to make” the illustrations in Boldly “nearly identical” to those in Go! And he succeeded. They really did look like Seussian imagery. The creators also took pains to match the structure of their text to the structure of Go! The result in their own words was “slavish copying” from the Seuss original. But they firmly believed they were creating a loving parody of Go!

The creators found an e-commerce platform willing to handle merchandising and distribution. They began a Kickstarter campaign to pay for production costs. Notably, they did not consult with counsel before launching.  In the “Risks and Challenges” section of their Kickstarter site, they mused that they might wind up before people in black robes to defend their creation.

They managed to raise $30,000. But the campaign also attracted the attention of Suess, owners of copyright in the Go! books. To the cease and desist letters that inevitably followed, ComicMix responded that theirs was a fair use.  (They engaged counsel.) They admitted that they copied portions of Go! But they claimed that copying was permitted, likely as a “parody.”

What Happened in the Lower Court to Set Up the Appeal

A complicated procedural history below culminated in defendants filing a motion for summary judgment on plaintiff’s claims of copyright and trademark infringement. They asserted fair use as a defense on the copyright claim. The Southern District had previously held for defendants on a motion to dismiss on the grounds that Boldly! was transformative, though it did not find that Boldly! was a parody.  In the March 2019 decision, it sustained that ruling and also found for defendants on the important fourth fair use factor– market harm. Despite strong evidence to the contrary, the court was not persuaded that Boldly! intruded on Seuss’s own robust licensing programs for Go! or diminished the value of future opportunities.   The court reasoned that Seuss’s market for children’s books would not be usurped. The potential readers of Boldly! would be older people who greatly appreciated Go! and who simultaneously have a strong working knowledge of the Star Trek series, it wrote.  The court was untroubled by defendants’ curtailing Seuss’s exclusive right to create derivative works. That right could not block what the court considered defendants’ transformative work. Seuss appealed with dispatch.

Analyzing the Fair Use Factors

Judge McKeown took pains to analyze each of the four fair use factors under Section 107 of the Copyright Act.  I’m especially grateful for the analysis on transformative use and the discussion of the importance of the derivative works market. The case should be recommended reading for law school students and copyright lawyers of all persuasions.  Here, I’ll focus on two aspects of the decision.

The First Factor: Purpose and Character of the Use (Section 107(1) and the Parody Defense

Analyzing the first factor –the purpose and character of the use –she clearly explains that while a commercial use is not presumptively unfair, the nature of the work remains one element of this inquiry. In Campbell[4], the Supreme Court treated the central purpose inquiry as the need to determine “whether and to what extent the new work is ‘transformative.’  Judge McKeown notes that transformative use can tip the first factor in favor of fair use.

Returning to Campbell and Section 107 of the Copyright Act[5], she asks whether this mashup in particular is a transformative work?  Defendants’ emails suggest they wanted to adopt the mantle of parody.   But parody under the law has a specific meaning. A parody is a “spoof, send-up, caricature, or comment on another work. It has to have some critical bearing on the substance or style of the original work. It has to have some thought behind it. If it merely uses a work to get attention or avoid the drudgery in working up something fresh, Campbell teaches, the claim to fairness in borrowing from another work diminishes accordingly.

The Ninth Circuit had already been clear on this point in the (in)famous Cat NOT in the Hat! case from the 1990s[6]. Just mimicking the characteristic style of Dr. Seuss is not the same as “holding his style up to ridicule.”  Borrowing expressive elements without a critique of the original work may get public attention, but it does not equate to parody. And the Boldly defendants’ attempts to explain their work after the fact as mocking the narcissism of the central characters of Go! also fell flat. Boldly! is not a parody of Go!

Drilling Down on Transformative Use

Judge McKeown takes the extra step for which my gratitude is especially keen.  She tackles the defendants’ argument and ruling below that Boldly! is somehow otherwise transformative of Go!  And in doing so, she debunks a growing tendency in lower courts to view “transformative” uses in the most banal sense.

Rather, she writes, there are certain benchmarks to determine transformative use, “telltale signs” derived from considerations laid out in Campbell and the Ninth Circuit’s Seltzer v. Green Day Inc.[7] In summary, these are: 1) a further purpose or different character, meaning the creation of new information, new aesthetic, new insights and understanding in the defendant’s work; 2) the addition of value to the original work, such as “new expression, meaning or message”; and 3) the use of quoted matter as “raw material” instead of repackaging it and merely superseding the objects of the original creation.

How does Boldly! Stack Up?

Using defendants’ testimony and close examination of the two books, she deftly eviscerates their fair use defense regarding transformative use. Boldly! paralleled Go!s purpose and propounded the same message, she writes. Rather than possessing anything fresh, it merely re-contextualized the original Seuss expression. It did not offer any further purpose or character. Nor does Boldly! alter the original Seuss work with new expression, meaning or message. The world of Go! remains intact, even if Star Trek characters now enter that world.

Judge McKeown analyzes the defendants’ repackaging of Go!s illustrations with the vigor of one who knows this Seussian world rather well. “Comic Mix captured the placements and poses of the characters, as well as every red hatch mark arching over the handholding characters of Grinch’s iconic finale scene, then plugged in the Star Trek characters.”  She comments on the elements of scenes which the artist copied, down to the “exact shape of the sandy hills in the background and the placement of footprints that collide in the middle of the page.”

And she recounts that ComicMix repackaged the text of Go! Instead of using Go! as a starting point for a different artistic or aesthetic expression, the writer for Boldly! tried “to match the structure of Go!” The Boldly book “left the inherent character” of the Seuss original unchanged.  Judge McKeown wrote: “Although Comic Mix’s work need not boldly go where no one has gone before, its repackaging, copying, and lack of critique of Seuss, coupled with its commercial use of Go!, do not result in a transformative use.”

The conclusion? The first factor weighs definitively against fair use.

The Derivative Works Market and Section 107(4)

The fourth factor of the fair use test set out in Section 107 looks at “the effect of the use upon the potential market for or value of the copyrighted work.” Recall that one of the exclusive rights of a copyright owner under Section 106 is the right to prepare derivative works based upon the copyrighted work.[8]

In this case, Seuss had engaged for decades in extensive licensing of its properties. It had vetted and authorized multiple derivatives of the original Go! book; it had recently announced that it would partner with Warner Animation Group to adapt Go! into an animated movie. Works like defendants’ Boldly!, said the court, would curtail Go!s potential market for derivative works.

Authorized Licensing and Mashups Had Occurred

The defendants also failed to overcome the fact that Seuss already exploited its rights via collaborations with other companies. These licensed “mashups” mixed stories and characters and created Seussian worlds populated by Muppets or Pandas or other third-party elements. The evidence was strong that Seuss was exercising its derivative use rights in an active fashion. The law does not limit the scope of the relevant market to products that are already made or in the pipeline. A copyright owner has the right to the “artistic decision not to saturate those markets with variations of the original.” It can decide for itself when and how to license uses or not to do so for a spell. It has the right to change its mind.

And Boldly! was not the kind of work like scathing satire or commentary that a copyright owner would choose to avoid and whose market niche might legitimately be filled by someone else. Creating and publishing Boldly! was simply co-opting an opportunity. Defendants’ emails indicated that they hoped to be the first to enter into the Star Trek universe with Seuss characters; they even expected a possible payday for their initiative.  But that initiative led them into territory that rightfully belongs to Seuss.

A central aspect of market harm is whether a defendant would undermine the potential market for derivative works that otherwise belongs to the copyright owner.  Seuss’s strong brand made this aspect “particularly significant” according to Judge McKeown.  The unrestricted and widespread conduct of the sort ComixMix engages in could result in anyone being able to produce, without Seuss’s permission, a variety of mashups with other famous branded characters from Yoda to Pokemon. Unless checked, the type of conduct engaged in by ComicMix, would “create incentives to pirate intellectual property” and disincentivize the creation of new works. This is contrary to the goal of copyright,[9] wrote Judge. McKeown.


A collective sigh of relief must have been audible this holiday season from authors, book publishers, animation and movie studios, dramatists, composers and other copyright owners whose characters and works have attracted a loyal following. Judge McKeown delivered them the best gift of all. Clarity under the law.  At least in the Ninth Circuit.

Grateful for my View of Hollywood’s Griffith Park

[1] Dr. Seuss Enterprises LP v. ComicMix LLC, 2020 U.S.P.Q.2d (9th Cir. 2020)

[2] Dr. Seuss Enters. v. ComicMix LLC , 372 F. Supp. 3d 1101 (S.D. Cal. 2019)

[3] Unless otherwise indicated, quotations are from Judge McKeown’s decision.

[4] Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994)

[5] 17 U.S.C. §107.

[6] Dr. Seuss Enters., L.P. v. Penguin Books USA Inc., 109 F. 3d 1394 (9th Cir. 1997)

[7] Seltzer v. Green Day, Inc. 725 F. 3d 1170 (9th Cir. 2013)

[8] 17 U.S.C. § 106(2).

[9] U.S Const. art I, §8, cl. 8.

Just in time for holiday meal prep, we have a legal quandary worthy of debate.  Your side dish recipe calls for brown basmati rice bejeweled with cranberries and pomegranates. Sounds alluring. But what exactly is Basmati rice?

The answer, like so many things in law and life, is “it depends.”  Cooking websites tell us that basmati rice is a form of long grained, aromatic, sometimes nutty-tasting rice with pointy ends that is grown in the humid Himalayan foothills of South Asia. It is the preferred base for dishes like biryanis and pilafs and is often jazzed up with saffron, turmeric and other fragrant spices.

Basmati rice has been cultivated in the Himalayan foothills at least since the late 18th century and possibly longer. But in any case, long before the partition of British India into modern day India and Pakistan in 1947. And therein lies the seeds of the current dispute.

The Basmati Question

India asserts that the label Basmati should be reserved for long-grained rice cultivated in specific areas of northern India.  These include all districts of the states of Punjab, Haryana, Delhi, Himachal Pradesh, and Uttarakhand, as well as specific districts of two additional states, namely western Uttar Pradesh and three districts in Jammu & Kashmir. The selection of these regions was based on maps prepared by the Agricultural and Processed Food Products Export Development Authority (APEDA). ADEPA is a statutory body under the Indian Ministry of Commerce that deals with the export of agricultural products.

The Indian rice industry has even developed a DNA fingerprint for Basmati rice that has been useful in detecting adulterated rice products. Participating growers can seek out the certification done by the laboratory of the Basmati Export Development Foundation. This helps protect against competition from other cheaper and less desirable strains of rice often mixed in with or sold with basmati rice for the export market. And ADEPA has beaten back attempts by other producers, including a major U.S. company, to obtain a patent on basmati rice seeds.

In India, the Geographical Indications of Goods (Registration and Protection) Act of 1999 came into force in 2003.  In 2016, after application by APEDA, the seven states noted above were granted the exclusive right under Indian law to apply Basmati as a geographical indication (GI) to their rice.  According to official filings of the Indian government, “Basmati means “a special long grain aromatic rice grown and produced in a particular geographical region of the Indian subcontinent. The region is a part of northern India, below the foothills of the Himalayas forming part of the Indo-Gangetic Plains (IGP).” The special characteristics of “basmati” are “its long, slender kernels with a high length-to-breadth radio, an exquisite aroma, sweet taste, soft texture, delicate curvature, intermediate amylose content, high integrity of grain on cooling and linear kernel elongation with least breadth-wise swelling on cooking.”

Feeling well informed?

When geographical indications seek protection, a link must be established between the characteristics of the good, and the place of origin, method of production, climatic conditions and geographical area and the quality of the resulting foodstuff. Also important is the association in the public mind between the foodstuff and the area in which it is cultivated.

Exports and GIs

The 2016 achievement was a national designation, applicable to sales of rice within India itself. However, the big money in rice is now in exports.  According to a recent article in Swarajya Magazine, a business publication, India produces about 7.5 million metric tons of basmati rice and exports about 4.5 metric tons annually. In 2020 according to the same source, basmati rice exports increased 10% from April to June of this year alone.

India’s traditional trading partners for rice have been the UAE, Saudi Arabia and Iran. But given problems in recouping revenue from sales to Iran, India has reportedly been seeking additional export markets. (A November 27, 2020 article in the Los Angeles Times mentioned India’s problems in trading with Iran given the US sanctions on doing business with that country. India historically has sold rice and purchased petroleum from Iran.)

Joining the Listings in e Ambrosia

Protected Geographical Indication in the EU system

India has now skipped the appetizers and headed directly for a more lucrative international meal by seeking to register Basmati as a Geographical Indication with the European Commission.  If approved, Basmati will be added to the fetchingly named eAmbrosia database for protected geographical indications. The EU legal scheme arises under Article 50(2)(a) of Regulation (EU) No 1151/2012 of the European Parliament and of the Council on quality schemes for agricultural products and foodstuffs.

The European Union has two tiers of protection for geographical indications for foodstuff. The highest level of protection for agricultural products is the Protected Designation of Origin (PDO). Such a product must be produced, processed and prepared in a given geographical area using recognized know how. Next is a Protected Geographical Indication (PGI) which covers agricultural products and foodstuffs closely linked to the geographical area. At least one of the stages of production, processing or preparation must take place in the geographic area.

The presence of the EU’s PDO or PGI mark on packaging provides the opportunity for upsell of foodstuffs at premium prices.  The big cheese and wine producing countries within the EU like France, Italy, Greece, Denmark and Spain, have excelled at establishing Geographical Indication tags for their products. Think of PARMA Ham, Feta or Parmigiano Reggiano cheeses or Sherry from Jerez. Their success in marketing such products as authentic to place, artisanal and of high quality has contributed mightily to their sales in internal EU markets as well as protections with valuable EU trading partners.

At stake for Indian growers and exporters, if the application is successful, is the exclusive right to promote and sell rice in all 27 countries of the European Union under the label Basmati.  If the application is approved, rice labelled Basmati will be sold lawfully in the entire EU marketplace only if it comes from one of the designated seven Indian states noted in India’s application and has the other characteristics.  Non-Indian rice products labelled Basmati can be stopped at the border of any EU country or taken off shelves within EU countries. Importers and advertisers of non-Indian basmati will be deemed infringers and fined, even if the products are clearly labelled as “in the style of” or “like basmati rice.

Enter Pakistan

The EU protection system affords the opportunity for third parties to file oppositions. Similar to a trademark registration scheme, but at the level of national governments or quasi governmental bodies like consortia of producers, an opposer has 3 months from the date of a GI application to the EU Council on Quality to present arguments why registration should not be granted.

On December 8, 2020, just two days shy of the deadline, Pakistan filed its objection to India’s application for protection for Basmati. The argument most likely is that Pakistan has been growing Basmati for decades in its Punjab province just west of India. (The Opposition is not yet available online.) The climactic conditions that make for propitious rice crops in the humid Himalayan foothills did not evaporate with Partition.

According to the Los Angeles Times, India and Pakistan discussed a joint application for a Basmati  GI tag more than a decade ago.  That amicable approach apparently dried up after the 2008 bombing of Mumbai which India blamed on terrorists harbored in Pakistan.

Pakistan has another hurdle to overcome. Despite having enacted a Geographical Indications (Registration and Protection) Act on March 28, 2020, Pakistan has not yet  protected Basmati as a GI within Pakistan. Nor has it exercised the same degree of control as India over the regions where rice labelled basmati can be grown or the methods used.  Sindh Province in southeast Pakistan is a rice-growing area that also claims to produce basmati rice for an internal market, despite different climatic conditions.  Regional politics, Swarajya Magazine suggests, may prevent the government in Islamabad from clawing back use of Basmati exclusively to rice grown in the more northerly Punjab region of Pakistan.

Possible Holiday Outcomes

If the EU accepts India’s definition of the specific attributes of seed, soil, geography, climate and cultivation that determine Basmati rice, Pakistan may be out of luck in its quest to share in use of the GI for exports.  And it will suffer the sting of relinquishing the high-end rice market in the EU to India.

But the holidays being nigh, another result is possible.  In a gesture of diplomatic goodwill, EU bureaucrats could find that there is sufficient evidence that the northern Punjab region of Pakistan might be eligible to share the tag Basmati, provided the salient conditions are met.

“Brown Basmati rice from India.” “ White Basmati rice from Pakistan.” Side by side on a shelf in a Brussels market. It’s not out of the question.

Good luck in the kitchen.  Pass the rice pilaf, please. And Happy Holidays to all.

Hardly a week goes by now without news of another company announcing it will dissociate from a long-held brand that depicts or references racial caricatures or stereotypes. Even sophomoric attempts at humor like TRADER GIOTTO have tumbled in the face of public scrutiny.  Arrivederci! It’s as if in board rooms across America, executives have raised their gaze from balance sheets to look closely at the names and images on their ads and  wares. They have finally noticed what the public had been seeing for years: historical vestiges of “folksiness”, or worse, much worse, that were no longer viable in a multiracial, multicultural America.

That Indian maiden floating in a pastel haze on the LAND O LAKES butter tub? She’s no longer needed as the picture of radiant sunshine: evocation of nature alone will suffice.  UNCLE BEN with his savvy for all things rice, a man who has been serving it up since the 1940’s? He’ll be retiring, after having his look promoted in 2007 from that of a waiter to a business man. The Mars company, owner of the UNCLE BEN’S brand, said this is “now the right time to evolve the brand.” Evolve?

The Quaker Oats Company, the venerable brand which owns the AUNT JEMIMA trademarks, announced that it will be retiring the tireless homemaker as the face of its syrups and pancake goods. Despite an upgrade of her image a few years ago to pearl earrings and the look of a home economist, the history is too palpable for today’s consumers (and companies.) AUNT JEMIMA’s 19th century roots couldn’t be disguised with a wardrobe make over. Her warm smile and prizewinning pancakes will be missed, to be sure. But Quaker Oats, itself a subsidiary of Pepsico, a company whose portfolio is among the giants of American branding has decided the time is now to close the kitchen and put an end to a patronizing image.

Take that, Chief Wahoo!

In the world of professional and amateur sports, the Native American brands are having an expensive identity crisis. The owners of the Cleveland Indians released a statement saying the organization “is committed to engaging with our community and appropriate stakeholders to determine the best path forward with regard to our name.” (quoted in “Atlanta Braves not changing name, looking at “chop” celebration,”, July 12, 2020). In 2018, the owners of the Indians had announced plans to remove the toothy image of Chief Wahoo from team uniforms beginning with the 2019 season. Complaints about the Chief dated back many years. An effigy of his cartoonish face had been burned in protest as early as 1998, as recounted in Bellecourt v. City of Cleveland (104 Ohio St. 3d 439) (2004). The Ohio Supreme Court was faced with the question of whether the rights of people protesting the team’s use of Chief Wahoo and burning his effigy had been violated when they were arrested by Cleveland police and charged with aggravated arson. (In a 4-3 decision the court decided that there was justification for arrests, given the possibility of wind carrying embers from the burning effigy.) One dissenting judge found that adequate safety measures had been in place, there was no need for arrest, and that the burning was constitutionally protected speech. Moreover, he added: “If we allow flag burning in this country, we should certainly allow Chief Wahoo effigy burning. Our flag stands for over 200 years of freedom and unity; Chief Wahoo stands for 56 years (and counting) of baseball futility.”  Id., note 27. Take that, Chief Wahoo!

In a nod to the times, the Atlanta Braves management recently announced that they would initiate “review” of the appropriateness of the “tomahawk chop,” the frenzied wave of foam tomahawks by fans. They intimated that this could be a weighty decision, given that the “chop” inspires players on the field to perform.  Sports Illustrated reported that the team has removed the “Chop On” sign that graced the entrance to their ballpark. For the 2020 season, the slogan will no longer be “Chop On,” but rather “For The A.”  Amen!

The Braves have taken another path with respect to their team name.  They explained in a July 10 letter to season ticket holders that they would be not be changing their name. “We will always be the Atlanta Braves,” they wrote. Rather, they plan to continue and step up the consultations they have done with the Eastern Band of the Cherokees in North Carolina and add a new Native American Working Group to collaborate on issues.

The Washington Redskins have done the largest about face of all. For years, owner Pro Football, Inc. litigated to defend from cancellation several federal trademark registrations for REDSKINS that Native American plaintiffs argued were disparaging and offensive to a sizeable number of their peers. In 2016, the Supreme Court decision Matal v. Tam removed the statutory bar in Section 2(a) of the Lanham Act to registering disparaging or offensive marks on the grounds that such bar was a constitutionally impermissible restriction on speech. Following Tam, the cancellation proceedings against REDSKINS (which had been earlier affirmed by the Fourth Circuit) were dismissed by USPTO.  The team had “won” and retained its registrations.

Registration of the Washington Redskins mark in 1974

That was then

Today, trademark owners are reckoning with the origins and meaning of their brands. In the wake of the death of George Floyd at the hands of Minneapolis police officers and the ensuing protests against racial injustice, the voices and actions of citizens, consumers and corporate sponsors have been game changing.  FedEx, which owns the naming rights to the Redskins stadium under a reported $205 million deal that runs until 2025, urged the team management to change the name.  While the management considers its options, major merchandisers have removed Redskins memorabilia and items from their online stores.

The force and power of market backlash against offensive marks was foreseen in 2016 by a particularly perspicacious federal judge. Judge Kimberly A. Moore of the Federal Circuit Court of Appeals wrote the appellate opinion in In re Tam before the first panel of three judges that affirmed cancellation of the Redskins marks. That decision was vacated sua sponte by the Federal Circuit a short time later and the full appellate panel reconsidered the issues in light of this new question: Does the bar on registration of disparaging marks in 15 U.S.C. § 1052(a) violate the First Amendment ? In re Tam, 785 F.3d 567 (Fed. Cir. 2015), The full panel decision addressing the constitutional issue found that the existing bar on registering disparaging and offensive marks could not stand. In re Tam, 808 F.3d 1321, (Fed. Cir. 2015). The Supreme Court affirmed.  Matal v. Tam, 137 S. Ct. 1744.

As recounted by Bloomberg News, Judge Moore observed in a panel at the International Trademark Association’s annual meeting in May 2016 that brand owners need to reckon with changing public standards. The right to make use of an offensive or disparaging mark to indicate the source of a good or service may be protected by the First Amendment, but it is not necessarily the way to win or retain customers, her remarks suggested.

We’ve Been Here Before

The current announcements about changes to long held brands have given rise to speculation in the legal press about whether interlopers will attempt to pick up where the suddenly “woke” corporations are leaving off. (As Racists Brands Fall, Will Some Try to Revive Them? Law 360, July 14, 2020) As of this writing, three different applicants have applied to register AUNT JEMIMA for goods related to pancakes or syrup.  Other applicants have rushed in to fill what they erroneously think is a trademark vacuum. An individual applied to register WASHINGTON REDSKINS for apparel and other memorabilia. Another individual submitted applications to the USPTO for marks that he believed the Redskins management was considering as alternatives to the current mark, such as REDHAWKS. He has reportedly offered to “give” the marks to the owners if they make charitable contributions to his liking.

Are such interlopers likely to be able to acquire rights in marks that teams or other companies have announced are no longer suitable to their corporate images or relationships with consumers? Yes, and no. One answer comes from a 1989 Second Circuit case that not coincidentally dealt with the doctrine of abandonment in the context of a racially charged mark: the famous Amos n Andy characters. (Characters may be marks if they serve a source-identifying function.) Silverman v. CBS, Inc., 870 F. 2d. 40 (2d Cir. 1989).  As recounted in the case, the fictional Amos ‘n’ Andy characters first appeared in radio episodes in 1928.  Their creators were two white radio actors and producers, Freeman F. Gosden and Charles J. Correll.  Gosden and Correll voiced the characters themselves, in some episodes playing multiple characters.  When the series transferred to television in 1951 under the CBS banner, Black actors were hired to play the roles, but the scripts remained the work of Gosden and Correll.  Throughout the years, the radio and TV shows attracted major sponsors: Pepsodent, Campbell‘s Soup and Blatz Brewing Company at some point were all commercial sponsors. The show also attracted negative attention: in the early 1950’s, the NAACP protested the television series as grossly distorting and demeaning. Id. CBS’s decision to cease producing new episodes was likely a result of this protest and changing attitudes about racial stereotypes in the media. The television series was aired on CBS affiliate stations until 1953 and continued in reruns and non-network syndication until 1966 when CBS withdrew it definitively.

The legal case arose when Silverman wrote a script in 1981 for a proposed Broadway musical based on the Amos ‘n’ Andy characters to be entitled “Amos ‘n’ Andy in Hollywood” or “Amos ‘n’ Andy Go to the Movies.” Silverman sought a license from CBS to use the characters and title for his musical, but the studio refused.  Silverman filed suit seeking a declaration that the radio programs were in the public domain and the content, including the characters and their names, were freely available for his use.  CBS countersued on copyright and trademark grounds asserting ownership of the copyright in the scripts for post-1948 radio shows, and infringement of CBS’s trademarks.  CBS asserted rights in “Amos ‘n’ Andy” as a mark (title) as well as the names of several other characters, including Kingfish, Lightnin’ and selected phrases such as “Holy Mackerel!” The trial judge first ruled that the names of the characters were protectable marks and set for trial the issue of whether CBS’s nonuse of the marks since 1966 constituted abandonment.  After a bench trial, Judge Goettel of the US District Court concluded that CBS had not abandoned its marks. Silverman v. CBS, 632 F. Supp 1344 (S.D.N.Y. 1986).

Silverman challenged the district court finding on abandonment and the Second Circuit agreed with him. The Court cited 15 U.S.C .§1127 (the definitions section of the Lanham Act at Section 45). “A mark shall be deemed to be “abandoned” (a) when its use has been discontinued with intent not to resume use.  Intent not to resume use may be inferred from circumstances. Nonuse for two consecutive years shall be prima facie abandonment.” (There was a second ground for abandonment that was not germane to the case.) The Circuit Court addressed CBS’s non-use of the marks and determined that CBS had not use the AMOS ‘N’ ANDY marks for 21 years prior to Silverman’s suit.

It then probed whether there was an intent on CBS’s part not to resume use. Under the law in effect at the time of the case, nonuse of a mark for two consecutive years was considered prima facie abandonment. (The current rule requires three years of nonuse.) It was undisputed that CBS had made a considered decision to take the television programs off the air in 1966. As noted above, this was in response to complaints by civil rights organizations like the NAACP that the programs were demeaning to Blacks.  CBS argued that, while it had no plans to use the marks in the foreseeable future, it intended to resume using them at some point in the future should the social climate become more hospitable.” (It strains the imagination to think that lawyers preparing these arguments in the late 1980s might think that the social climate would become more receptive to Amos ‘n’ Andy after the 1968 riots, the upheaval of the 1970s and the demographic shifts of the 1980s.) Silverman v. CBS, Inc., 870 F. 2d. 40 (2d Cir. 1989).

But the question before the court was not one of sociology, but of statutory interpretation. Does the phrase “intent not to resume use” mean never to resume use or does it merely mean intent not to resume use within the reasonably foreseeable future?

The Second Circuit concluded that the latter interpretation must be correct. Intent not to resume use may be inferred from circumstances, and two consecutive years of non-use constituted prima facie abandonment. A mark owner should not be able to assert that “at some point” it would resume use of its mark, should conditions change, after a verifiable period of non-use that satisfies the statutory definition.  (CBS’s nonuse  more than satisfied this test.) Id. This standard protects against the forfeiture of marks by owners who are temporarily unable to continue using them. Where blockades or boycotts have prevented use of valid marks, courts have seen fit to side with owners who justify more prolonged nonuse. (See, for example, the cases involving marks for rum and cigars used in Cuba before the revolution’s ouster of foreign companies.) But this lenient attitude does not justify mere warehousing of marks, which according to the court “impedes commerce and competition.”

Though CBS could not enforce its trademark rights to block Silverman’s intended musical, market forces carried the day. No such musical went forward.

Common Sense and Consumer Associations Rule in Trademark Law

Silverman holding should give pause to owners of the recently retracted marks who might like to save them for another time.  It is not a good strategy to try to “shelve” the marks and associated merchandise for a few years to see how the today’s social movements and issues settle out. If the marks are not used for the goods or services for which they are registered within the span of 3 years from the public announcements of changes (which indicate intent not to resume use in most cases discussed above), in all likelihood, the marks will be deemed abandoned by their owners and the registrations will be subject to cancellation. Nor will minor uses be enough to prolong trademark rights unless the uses are of a commercial nature.  Silverman teaches that attempts to maintain trademark rights by engaging in minor uses like educational programs or sporadic licensing for non-commercial (non-profit) uses, as CBS did over the years after the Amos ‘n’ Andy series was withdrawn from broadcast, will not be sufficient to forestall abandonment. Such minor uses do not sufficiently “rekindle the public’s identification of the marks with the proprietor, which is the essential condition for trademark protection, nor do they establish an intent to resume commercial use.”

This doesn’t necessarily mean that third parties will be able to establish rights in such marks either.  The current trademark registrations for sport team names or famous brands will not be cancelled until some action is taken after the period of abandonment has lapsed. Their presence on the trademark Register will impede current applications by opportunists. Doctrines of unfair competition will also work against using team names in association with team colors or other indicia of sponsorship. The public associations of the marks, colors and other indicia with the teams themselves (or with the producers of goods) will serve to keep them within the orbit of the original owners for some time to come.  Public memory (and associations) can be enduring.

Mark owners may derive some comfort from a case a case involving “zombie” marks, so called because they are presumed to have “died” but have been resurrected. by a third party. Macy’s Inc. and Inc. were able to defeat attempts by Strategic Marks, LLC to register the names of defunct department stores that had been absorbed into the Macy’s corporate family and rebranded Macy’s.  Strategic Marks specialized in reviving “zombie” marks. With this strategy, it applied to register Filene’s, The Bon Marche, Bullocks, May Company, among many other former department store names later folded into the Macy’s corporate structure.  Macy’s Inc. v. Strategic Marks, LLC, 117 U.S.P.Q.2d 1743 (N.D. Cal. 2016).  Strategic Marks operated the Retro Department Stores online and sold T-shirts sporting these store names, presumably targeting  nostalgic shoppers who recalled bygone days of happy shopping.  Macy’s itself sold told shirts with names of what it called its “heritage marks” and had begun to register these same older store names as marks for apparel. Macy’s sued for trademark infringement. Strategic Marks defended on the grounds that the marks as used by Macy’s were merely ornamental, hence not acting to identify the source of the shirts, or that Macy’s use was not actually a use in commerce as required by the Lanham Act.

The opinion by Judge Chen is instructive.  Strategic Mark’s primary argument, he wrote, “is that because Macy’s no longer operates the regional brands, the marks have been abandoned and can now be used by any other individuals.” This is wrong, he admonished.  “Simply because a store has ceased operations does not mean that its proprietor or owner does not maintain a valid interest in the registered trademark of the business. A consumer may still be confused as to whether the owner of a mark authorized or licensed the use by a third party.” As to Strategic Marks’ argument about what constitutes adequate use in commerce, Judge Chen did not accept the test proposed by the defendant. Use in commerce is well understood in the law and Macy’s use of its heritage brands on t-shirts satisfied that requirement.


Brand owners who are in the process of “evolving” or changing marks now seen as offensive will have a bit of breathing room to make those changes before their federal rights lapse in the current versions. If there is any virtue in maintain these marks beyond the statutory period of abandonment, they will need to continue to make use in commerce of the marks in some form. Third parties who jump in to try to capitalize on the prior popularity of team names or other brands will likely find themselves unable to establish any viable use themselves, thereby dooming applications.  And they may also find themselves in litigation from trademark owners who view their actions as infringement or cybersquatting (if the registrations apply to domain names).  Perhaps most importantly, they will also find themselves in the unforgiving court of public opinion, where a penchant for offensive and disparaging marks for commercial advantage will be judged unfavorably by consumers. As it should be.


The Wall Street Journal heralded the Supreme Court’s decision in the case with the headline “Supreme Court Eases Trademark Rules for Websites. (United States Patent and Trademark Office et. al. v. B.V., decision by J. Ginsburg.) The Court “gave online companies broad latitude to trademark their website names,” it proclaimed as an opener  to its article on July 1, 2020.  Not so fast.

The decision only establishes that there is no per se rule against federal trademark registration of a domain name that consists of a generic term plus a top-level domain (TLD) like .com (or .org, .net, .biz, etc.) An applicant still needs to prove that the primary significance to the public of the mark taken as a whole is as a designator of the source of specific products or services. In this case, the Court held that the mark is entitled to registration because the public perceives it as designating a particular source of online hotel reservation services, rather than referring to a class of online hotel reservation services for which there might be many different providers.

This is not necessarily a burden that every website company can sustain. Surveys about consumer perception of marks are tricky to design and expensive to boot. Justice Breyer observed in his dissent that consumer-survey evidence “may be an unreliable indicator of genericness.” As Justice Sotomayor wrote in her concurrence: “Flaws in a specific survey design, or weaknesses inherent in consumer surveys generally, may limit the probative values of surveys in determining whether a particular mark is descriptive or generic in this context.”

How Does an Online Provider Prove that Its Choice of a Generic type Name has Taken on Trademark Significance?

Online companies will have to tred carefully to successfully assert that their marks comprised of a domain name warrant trademark registration. How likely are they to succeed? That will depend on the evidence they can marshall.

The adequacy of the evidence submitted by B.V., the Dutch company that operates the website, was not at issue before the Supreme Court. In a new trial at the Eastern District of Virginia after appealing a refusal to register by the Trademark Trial and Appeal Board (TTAB), the company submitted a consumer survey that showed that approximately 74% of 400 people who took part in a structured inquiry known as a Teflon survey thought that was a brand, rather than a generic term for a class of services. The finding was accepted by the district court judge as evidence that the mark was more than merely descriptive and certainly not generic. The appellate court majority did not find any error by the lower court’s assessment of consumer perception of Only dissenting Judge Wynn of the Fourth Circuit found fault with the district court’s presumption that a mark comprised of a generic term and a TLD would usually be descriptive, rather than generic. At the Supreme Court, the majority endorsed the finding that consumers perceive to be an identifier of a particular online hotel reservation service. But the majority also cautioned that neither is there an automatic rule classifying marks in the form of as registrable. “Whether any given ‘’ mark is generic,” wrote Justice Ginsburg, “depends on whether consumers in fact perceive that term as the name of a class or, instead, as a term capable of distinguishing among members of the class.”

An amicus brief submitted by a group of researchers and consultants who specialize in measuring consumer perceptions of trademarks argued the view espoused by the leading trademark treatise (McCarthy on Trademarks and Unfair Competition) that the primary significance of a mark can be established by the views of a majority of consumers participating in a survey. Only a simple majority is needed. This is different from requirements to meet a consumer test for likelihood of confusion, where even a low measure of confusion, like 25-30% of respondents, can be enough to find infringement.

But is the Teflon inquiry the appropriate test for this question?

The USPTO had argued at the Fourth Circuit that the Teflon test was designed to measure consumer understanding of when marks that start out as brands become so widely used to denominate products that they wind up as generic. These are the brands of yesterday that have entered the lexicon: ESCALATORS, THERMOS, and NYLON, to name a few. They lost their ability to designate the source of a product because they became the name of the thing itself. The public stopped thinking of them as brands. Law students learn that they suffered “genericide.” Marks for novel products run the risk of just this sort of death by too much public affection. If all moving staircases become known as ESCALATORS, then the term no longer can identify the producer/source of that innovation.

The USPTO had argued below that the Teflon test was not the appropriate analysis where a mark begins life as and takes on new meaning over the course of time as the source of services, thanks to assertive advertising. This attack was not supported by the Fourth Circuit and seems to have fallen by the wayside at the Supreme Court. Rather, the Court embraced the importance of the primary significance to consumers as the measure by which to assess whether a mark is generic or not. The Teflon test, it seemed to say, measured just what was needed, regardless of the lifecycle stage of a mark.

The USPTO also argued unsuccessfully that the primary significance test which is set out in the trademark law in the section dealing with cancellations should not apply when the issue is registrability of a mark. The Supreme Court dispensed with that distinction in its wide embrace of the importance of establishing the primary significance of marks to the public as a hallmark of the Lanham Act system.

What Does the Public Understand about Domain Name Addresses?

Another prickly point: domain name addresses by their nature are singular. Only one domain name registrant can be assigned a specific domain name by the international domain name registration system administered by ICANN.  After more than twenty-five years of experience with the Internet, the public is presumed to understand this. Does that taint consumer perception of the primary significance of a mark displayed in the form of In other words, do most people “get” that there can be only one owner of a domain name like or or An amicus brief by Trademark Scholars cited by the Court in a footnote worried that consumers may conflate the fact that domain names are exclusive in the sense of having a unique address with a conclusion that a given term has achieved secondary meaning and has risen above its generic origins. Regrettably, that question did not form part of the consumer survey submitted in evidence and was not before the Court; the USPTO had not contested the district court’s finding of consumer perception. But the question is a good one and should be further explored by research by competent and disinterested social scientists.

Are Merely Descriptive and Generic Marks Now the Same where a TLD is added?

Other unanswered questions: Does this case effectively collapse the distinction between merely descriptive and generic marks when marks are in a .TLD form? Merely descriptive marks are registrable if they have acquired distinctiveness, also known as “secondary meaning.” Previously, generic marks were never registrable, even in the form of a compound mark where the additional term like “Company” or “Inc.” was itself an empty signifier. If a mark in the form of “” can be registrable because it has come to be perceived as a designator of source (i.e., it has acquired distinctiveness), what becomes of these two distinct categories in the trademark hierarchy of distinctiveness? Is there any longer a different rule for descriptive vs. generic marks when a TLD is attached to the term?

Lost in the news coverage and analysis is that B.V. already owned several other USPTO registrations for in various fonts and colors. The familiar chubby blue mark as used on the company’s website was registered, as were other versions of the mark. (See my previous blog on the case.) The company was hardly deprived of its ability to enforce its marks as actually used against those who adopted a confusingly similar mark for the same or related hotel reservation services. What it lacked was the ability to enforce plain “” in the context of disputes about domain names, because had been held unregistrable by the USPTO.  Counsel for B.V. said as much in her oral argument before the Court.  A trademark registration for plain provides very weak protection in the trademark system, given the extreme descriptiveness of the term “booking.” But a registration will enable her client to prevail in disputes brought under the Uniform Dispute Resolution Policy (UDRP) administered by WIPO’s Arbitration and Mediation Center and other designated alternative mediation centers.

Domain name disputes focus only on the words registered, and not on colors or other features that play a role in distinguishing trademarks. A trademark owner who complains under the UDPR that another entity is cybersquatting or engaging in fraudulent activity under a domain name must show proof of its rights in the mark as incorporated into the accused domain name. A trademark registration is just such proof. A lack of registration can doom a UDRP complaint. This point was made forcefully in the amicus brief filed by the self-styled Coalition of .com Brand Owners comprising the owners of websites like,,, and Justice Breyer argued in his dissent that owners like these who choose to register obvious terms as domain names in the form of enjoy an unfair “first mover” advantage in appropriating “a particularly valuable piece of online real estate.” Granting them trademark protection later when they have most profited from this appropriation only enshrines their monopoly over a term that competitors should be able to use to describe their own goods or services, he argued.

  What Next for Marks?

In an amicus brief, complained about difficulty enforcing its mark against an unaffiliated entity using a red sign.

Following the Supreme Court decision, USPTO will have no further grounds to refuse to register Once that registration is in hand, it remains to be seen whether B.V. will institute a series of domain name challenges under the UDRP against .com domain registrations that include the term “booking” for related services. We will also be on the lookout to see whether Justice Breyer’s forecast of a proliferation of registrations at the USPTO will come to pass. One thing is for sure: the USPTO will be applying the consumer perception test from now on to applications to register marks. It will be up to applicants to supply the necessary evidence to meet this standard. That won’t necessarily be easy. Online companies expecting the “broad latitude” announced by the Wall Street Journal to achieve trademark protection for obvious website names will find they still have significant hurdles to surmount.

It’s that time of year again, when people are traveling hither and yon.  If you haven’t made your reservations by now, or the French strikes have you worried, it’s likely you will find yourself at midnight scrolling through online travel sites to snag a last-minute, 20% off deal. may be just the ticket.

A Date in Washington, D.C. will soon be Booked

Even the Supreme Court has turned its attention in that direction.  In early November, the Court granted certiorari in United States Patent and Trademark Office et. al v. BV (case number 19-46). The mark at issue is the straightforward name of the website – BOOKING.COM owned by a Netherlands company BV. (Author’s disclosure: I’ve successfully used several times; their coverage in Europe is particularly complete and the British turns of phrase rather endearing to an American ear.)  The case turns on the registrability — or not — as a U.S. trademark of BOOKING.COM, comprised of the word BOOKING plus the top-level domain suffix .COM. (Let’s refer to Top Level Domains as TLDs; the Booking part of the domain address is known as a Second Level Domain or SLD.)

The case is hardly new. The appeals process has wended its way slowly from an initial examiner’s refusal to the Trademark Trial and Appeal Board to the Eastern District of Virginia and then to the Fourth Circuit Court of Appeals. The case raises questions about the registrability of commonplace e-commerce site names that achieve some degree of consumer recognition.  It puts in jeopardy the territorial division staked out in the last twenty-five years between trademark rights and registration and domain name registration. Should ordinary website names like HOTELS.COM be eligible for trademark registration if the sites have endured and achieved a measure of commercial success? The TTAB and lower courts have earlier said “no” to registration of HOTELS.COM and its ilk. But other .com sites have been registered by the USPTO:,, and, to name a few.

The Supreme Court will be taking a look at this patchwork of decisions and the split between the Fourth Circuit’s decision (915 F. 3d 171 (4th Cir. 2019), on the one hand, and Federal Circuit and Ninth Circuit decisions rejecting registration of website names like and  Along the way, the Justices will need to examine the boundaries between generic marks and merely descriptive marks. And they will have to determine the import of creating a compound mark by adding a TLD (like .com or .net) to an otherwise generic term, where no pun or “wink” to the public is intended.

An Abbreviated History of the Case

Amsterdam Canals 2017 BV sought to register BOOKING.COM in the U.S. as a “block letter” word mark and in several stylized versions, including color, for various services, including for online hotel reservations  based on the company’s use of the marks since 2006. (The USPTO website displays the stylized marks in their signature chunky font with light and dark blue highlights.) According to USPTO records, the initial applications were based on a prior international registration at World Intellectual Property Organization, an avenue to registration permitted by Section 66(a) of the Lanham Act. Upon initial examination, a USPTO examiner rejected the application for the block letter form, finding that the mark BOOKING.COM was generic as applied to relevant services, the hotel reservation services recited in the application. [The services initially included some in Class 39, but the lower court only found that the Class 43 services would be protectible, so the current case deals only with for hotel reservation services.] In the alternative, the USPTO initially concluded that the marks were merely descriptive but that the applicant had failed to establish that the marks had acquired secondary meaning by the time of the filing of the application. (Later in the process before the Eastern District, the applicant did mount persuasive evidence of secondary meaning, were the mark to be viewed as merely descriptive in the first instance.)

Generic vs. Descriptive

Until rather recently, and certainly before the .com era, a bright line divided generic marks and descriptive marks. With language borrowed from the 19th century, the traditional trademark opinions  explained that generic terms indicate the genus of a good, the very name by which it is commonly known, that cannot indicate the source of such good. By comparison, a descriptive mark, and certainly suggestive marks, indicate the species to which a certain good belongs, and can serve to indicate the source of the goods. These Linnean explanations have never much impressed my law school students. Rather, they appreciate that a generic name is one that is the ordinary name for an item in commerce. A descriptive term is one that limns out a quality or characteristic of a good, even if a rather prosaic attribute. If a descriptive term is no more than that, it is viewed as merely descriptive. As such, it may also fail the test for registration if no evidence is marshaled that the mark has become associated with the source of the goods.

Do you know a Generic mark when you see it?

In, the Fourth Circuit laid out its three-step test to determine if a mark is generic: 1) first identify the class of products or services to which use of the mark is relevant; 2) identify the relevant consuming public; 3) determine whether the primary significance of the mark to the relevant public is as an indication of the nature of the class of the product or services to which the mark relates (in which case the mark would be generic) or as an indication of source or brand (which suggests that the mark is not generic.) Due to the stringent consequence of a finding of genericness, the USPTO has the burden to establish that an applied for mark is generic.

The appellate court cited to Abercrombie & Fitch Co. v. Hunting World, Inc. (537 F. 2d 4, 2d Cir. 1976) involving the apparel maker’s attempt to secure SAFARI for its exclusive use on multi-pocketed hunting-style jackets based on extensive advertising and promotion. Remember the look?  However, “no matter how much money and effort the user of a generic terms has poured into promoting the sale of its merchandise and what success it has achieved in securing public identification,” that user cannot claim the exclusive right to obtain a registration for the common name used for the product or service. Nor could others be excluded from using the same term. When it comes to hunting jackets and gear, it’s SAFARI for all to use.

Measuring What the Public Understands

In the case before the Supreme Court, if the Fourth Circuit’s test is correct, the key question is: does the consuming public understand BOOKING.COM to refer primarily to the actual service (of booking hotel and other reservations online) or to the source of that service (a particular site owned by a company that commands certain hotel listings)? In assessing the primary significance to the public, the Fourth District found that the lower court did not err in ruling that the USPTO had not satisfied its burden. The USPTO failed to prove that the relevant public understands BOOKING.COM, taken as a whole, to refer to general online reservation services rather than to the services of a particular Dutch concern. Because the district court considers evidence de novo and was not bound by the findings of the TTAB, the lower court was entitled to make its own determination of the weight of consumer evidence over other evidence like dictionary definitions or trade journal mentions.

But how does a court determine what the public understands by a term like BOOKING.COM? Usage can be probative of public understanding, said the Fourth Circuit. (The dissent complained that legal error should have been found. In its view, the lower court overemphasized evidence of how the public used marks rather than how the public understands marks. But the majority gave the district court a pass in this regard.) Consumer survey evidence is the other way to get at understanding.  In the district court appeal from the TTAB decision denying registration, BV submitted the results of a Teflon survey which demonstrated that almost 75% of respondents identified BOOKING.COM as a brand name rather than a general reference to hotel reservation sites. The survey respondents seem to understand that was a website to reserve a hotel in Berlin for New Year’s Eve, for example, not just any reservation site in general.

Can a term that is “born generic” be recaptured as a Trademark?

Trademark doctrine has long recognized two types of generic marks: the mark that is “born” generic (a rose is a rose for the sale of roses) or a mark that was at one time invented or coined but becomes indistinguishable from the name of the thing itself and therefore generic. (Remember the awkward attempts to recapture THERMOS as a brand name for an” insulated heat-preserving beverage container”?). A mark that suffers this fate no longer points to a source of the product. It merely “is” the product in the eyes of consumers. In either case, a generic mark cannot escape its essence. It cannot be converted to a protectible trademark under the law.  Further, words like Company or Incorporated or Store, are likewise generic. Their addition to another term like Hotels or Mattresses cannot save a compound mark from classification as generic.

But in the internet era, does adding a TLD to a word that itself lacks distinctive qualities have the same result as affixing Company or Store, resulting in generic treatment? After all, under the schema created for TLDs by ICANN in the mid 1990s, a .com ending was to signify a commercial site, whereas a .org ending was reserved for not-for-profit organizations and .net for networking entities.  TLDs serve as directional signposts, telling the public (and computers) where to find certain sites on the Internet.  Each domain address comprised of an SLD name and a TLD is in fact a unique address in computer language.

The Fourth Circuit recognized that a TLD like .com by itself lacks source-identifying significance.  So merely adding .com does not wave a magic wand over a generic term to convert it into a source signifier.  But the Fourth Circuit also declined to adopt a per se rule against protecting as marks domain names that are formed by adding a TLD to a generic term. Rather, the court found comfort in a Fifth Circuit decision that held open the possibility that in “rare circumstances” a TLD may render a term sufficiently distinctive to be protectible as a mark.  Under this thinking, would for a group of tennis training academies be registrable as a “witty double entendre”? Should the correct inquiry be: what does the public understand by a compound mark that includes a .com, .org or .net ending?

What’s really at stake?

The USPTO and the dissent in the Fourth Circuit have argued that granting registration will provide BV with a “weapon to freeze out potential competitors” from using “booking” for similar or related services in their own marks. Having launched its site with a broad generic name to attract a wider user base, says the dissent, should now have to live with the consequences of such choice, at least as far as US trademark registration goes.

Because the basis of trademark law is to protect competition and to prevent consumer confusion about the source of goods and services, this case raises the ante. Can companies gamble that the choice of a commonplace name for their website can later be converted to a registrable trademark if the sites prove successful?  Is such an outcome fair? I’m putting my chips with the dissent.

The case is attracting amici briefs. We will report again on the case in the spring term of the Court.

I’m from Billy Joel country, so you will forgive me if, despite living in Los Angeles, I am often in a “New York State of Mind.” But when I travel, I can’t help but notice that I get into an “IP State of Mind.” An example: I was in Buenos Aires a few years ago and in a small street wedged between rows of legal bookstores, I noticed the sign for a hardware store with a prominent blue and grey bull dog image and the word YALE in bold letters. Was the owner trying to imply an association between his stock, presumably from the famous Yale lock company (no relation to the University) and the bulldog mascot of the Yale University football team? It was a small potatoes trademark issue, but I couldn’t help but wonder what message the shop owner was after. A hint of status or prestige? Or do bulldogs spell security for the good inhabitants of Buenos Aires, where dogs seem as numerous as humans? Or was the owner simply confused about a possible link between the Ivy League university and the lock company (founded in the mid-19th century by Linus Yale, Jr. in Connecticut USA). I took a photo and filed it away for future use in a classroom.

More recently, I was in Prague and IP questions galore kept popping into mind.  I will explore some of them in coming posts.

The Kafka family lived next door to Old Town Hall

Brand KAFKA and Some Copyright Questions Too

For starters, this city has now branded itself the birthplace and creative haven of Franz Kafka. Billboards, posters, t-shirts and mugs all beckon with images of the writer from his young adulthood and with sketches of his imaginary demons. The Kafka Memorial statue is a must-see stop on any walking tour of Prague, a point of pilgrimage and selfies. The Franz Kafka museum is likewise a draw for visitors, attempting an explanation of Kafka’s world view and an introduction to his works, and displaying facsimiles of some of his writings. Printed maps of Kafka’s Prague are available in more than 10 languages.

Copyright Quandaries 

But amid the feverish tourism, I couldn’t help but wonder. What law originally protected Kafka’s copyrights in his writings? Some manuscripts (for what became The Trial, for example) were created during a period when Prague was an important but provincial city within the Austro-Hungarian empire. The work we know in English as The Metamorphosis was actually published with the author’s permission in Leipzig in 1916 in the original German. Other works by Kafka were created after a new Czechoslovakia was forged by the Treaty of Versailles following the end of WWI, such as the book we know in English as The Castle, written in 1922.

Kafka met an untimely death due to tuberculosis, just shy of his 41st birthday in 1924.  In a letter to his friend and fellow writer Max Brod found by Brod after Kafka’s death, the author gave clear instructions to destroy his letters, diaries and unpublished manuscripts. Instead, as the world came to learn, Brod “rescued” Kafka’s manuscripts, letters and diaries and set about editing them for publication and arranging for translations. But given the tumultuous historical period in which Kafka lived, which national law or international conventions should have applied to the protection of those unpublished works before Kafka’s death and those published after his death over a course of years? Were Kafka’s moral rights violated by Brod’s well-intentioned, but by some reckonings awkward, editions in German?

Terms of Protection and Validity of Copyright

These questions are not entirely idle when one is in an IP State of Mind. They are pertinent to establish the applicable term of protection of copyright in works that were subsequently published post mortem, as well as the duration of the copyright in The Trial published during Kafka’s lifetime. The question of applicable copyright also has bearing on the validity and duration of the 1934 publishing contract entered into by Kafka’s heir, his mother Julie (née Löwy) Kafka, upon the advice of Max Brod, some ten years after her son’s death. (Presumably, in Prague where she lived.)

According to Benjamin Balint, whose book Kafka’s Last Trial: The Case of a Literary Legacy (W.W. Norton & Company, 2018) is highly recommended for anyone interested in problems of authors’ estates, Kafka’s mother signed an agreement with Schocken Verlag publishers of Berlin, conveying worldwide publishing rights to her son’s works. By July 1935, Schocken Verlag had brought out the first four volumes of a planned multi-volume set of Kafka’s works in the original German. But scrutiny by the Nazis of the Jewish-owned Schocken company prompted the publisher to transfer its publishing rights temporarily (subject to a reversion upon request) for volumes 5 and 6 of Kafka’s collected works in German to Mercy Verlag, a Czech publisher, according to Balint. (German was the language of “high culture” in Prague in that period.)

This arrangement lasted until the German occupation of Prague in 1939 and the forced liquidation in Berlin of the Schocken publishing company. Balint recounts that the warehouse in Prague used by Mercy Verlag to store many editions of Kafka’s work on behalf of Schocken was itself destroyed with all its contents. Meanwhile, the principals of Schocken Verlag fled Berlin for New York. There, they reconstituted their company as Schocken Publishing. The new publisher remained the asserted rights holder for Kafka’s worldwide publishing rights, even as possession and ownership of the original Kafka manuscripts and diaries became the subject over the years of conflicting claims involving individuals and archives in Europe and Israel.

Kafka Comes to America

Schocken Publishing brought out the first English-language versions of Kafka’s novels beginning in 1946. By the early 1960’s, it was commonplace for American high school students to be assigned The Trial and The Metamorphosis in English versions translated from the German editions, perhaps even some prepared by Max Brod.

But how does an IP lawyer look at the changing legal regimes, forced dislocation, Nazi occupation, Soviet occupation, force majeure events, and shear difficulties in copyright registration formalities in trying to understand the IP aspects of the legacy of Kafka?

The Cambridge Handbook of Intellectual Property in Central and Eastern Europe

Fortunately for me, the recent publication of The Cambridge Handbook of Intellectual Property in Central and Eastern Europe, edited by scholar and professor Mira T. Sundara Rajan (© Cambridge University Press, 2019), has brought together the insights of fine legal minds from this region. Among the nuggets is “The Development of Hungarian Copyright Law until the Creation of the First Copyright Act (1793-1884) by Professor Peter Mezei of Szeged University, Hungary. He painstakingly explains the terms and reach of Austrian copyright law that applied to lands within the Austro-Hungarian empire, such as Bohemia (Prague) and Hungary. With the help of these scholars, including several contributors from today’s Czech Republic, an EU member, I hope to make some progress on the Kafka questions and share my thoughts in a future blog.

On the road

I had the pleasure of attending the California Lawyers Association-International Law Section joint meeting in Prague with the Czech Bar Association from October 17-18, 2019. The concept of the Rule of Law takes on a new and visceral meaning when you are seated in the courtroom of the High Court in Prague, one of two such courts in today’s Czech Republic. The chamber has been in use since 1918 and has witnessed major trials (and tribulations) in the history of that country.  Our guide, a former President of the Court, spoke to us in Czech language through an English-speaking lawyer.  You didn’t have to be a linguist to understand his commitment to justice and the wrenching twists and turns seen over more than a century in this courtroom.

A Courtroom, A History of Justice

Built after the end of WWI during the early years of independence of the newly created Czechoslovakia, the Hall of Justice in the High Court is a sober and modest wood-paneled room. (Adjacent to the Court building stood the national jail, a convenient location in a then thinly populated area outside the central of Prague.)  We learned that the High Court functioned as the second highest court in the country for matters in the capital district from 1918 onward; the Supreme Court and Constitutional Courts were located in the city of Brno, southeast of Prague.

But within 20 years of its construction, the integrity of Czechoslovakia was sacrificed to the expansionist vision of Hitler’s Germany, parcel by parcel, culminating in the March 1939 Nazi takeover of Prague and other cities and towns. The High Court chamber became the venue where Nazi judges oversaw trials of Czech republicans, Communists and other dissenters; executions took place at the nearby jail.

The end of WWII in Europe failed to restore Czech independence. Rather, liberating Soviet troops who established their control over Prague as of May 9, 1945, simply stayed on.  The Soviet presence was intended to last for a few months to allow for a return to civilian control as had been negotiated in 1944 with the Czech government in exile.   After the Communist party won the first post-war parliamentary election in 1946 in the Czech lands, the way was paved for a tighter link to the Soviet Union.  In February 1948 the Communists seized power in the Czech and Slovak lands.   From 1948 onward, the courtroom of the High Court was controlled by the Communist judges with allegiances to the Soviet Union.

Our lecturer unspooled a condensed history of trials and show trials over the course of 20 years, until the outbreak of the Prague Spring in 1968 under Czech leader Alexander Dubček.  Sadly, Warsaw Pact troops invaded in August 1968 to snuff out the fresh air of reform in Prague. And then once more, in a a cruel turn of fate, the courtroom again became the domain of hardliners.  Another 20 years of repression ensued, with trials of dissidents taking place in this room whose mute walls nonetheless stored so many memories. Vaclav Havel, the playwright and activist, and later President of a newly independent Czech Republic, stood trial more than once in this very courtroom, we were told.  He was sentenced to prison several times; his longest period of incarceration was from 1979-1983.

Memory and the Court House

The Soviet Bears

Sometimes, words alone do not suffice.  Our lecturer concluded by pointing out the sculptures in the lobby of the High Court. We recoiled in horror, so vivid was the portrayal of violence and suffering in this memorial to the tyranny of Soviet control.  A nearby plaque listed the names of Czech leaders and lawyers executed by the Nazis; another detailed the names of those executed by the Soviets. Several historical panels told the story of the establishment and perversion of justice, and Czech hopes for democracy since 1991. Our group was practically gasping for air by the time we stumbled out into bright October sunshine.

The Brunetti Case

The United States Supreme Court decision in Iancu v. Brunetti issued June 24, 2019 held that the Lanham Act provision barring federal registration of immoral and scandalous marks violated the First Amendment. The majority opinion, by an odd fellows grouping of justices (Kagan, Thomas, Ginsburg, Alito, Gorsuch and Kavanaugh) explained that this part of Section 2(a) of the Lanham Act was as repugnant to First Amendment values as was the disparagement clause of the same provision, found unconstitutional in Matal v. Tam just two terms ago. (J. Gorsuch had been seated on the High Court a few months earlier but took no part in the Tam decision, while J. Kavanaugh had not yet been appointed when Tam was considered.)  The central tenet of the majority opinion in Brunetti is that a bar on registering marks that a substantial composite of the general public would find offensive or shocking is a form of viewpoint-based discrimination against content. (“Immoral and scandalous” had been treated by the USPTO as a “unitary term” with no separate meaning for each part of the statutory language.) Because trademarks can be words, names, symbols and images that express ideas, they are treated as expressive forms of speech subject to First Amendment protections. The Justices turned to leading dictionaries to see what “immoral” and “scandalous” mean and concluded that the Lanham Act language at issue bars registration of marks whose messages “defy society’s sense of decency or propriety,” but allows registration of marks that align with “conventional moral standards.” Such uneven treatment of ideas expressed by means of trademarks amounted to viewpoint-based content discrimination.

Obvious inconsistent application by the USPTO of Section 2(a) over the years contributed to the Justices’ discomfort with the language of Section 2(a).  According to the record below, the USPTO had refused registration for marks that conveyed approval of drug use [e.g., KO KANE and MARIJUANA COLA] and those that denigrated religious symbols [BONG HITS 4 JESUS] or seemed to praise terrorists [BABY AL QAEDA], but allowed registration of some marks that praised religious practice [PRAISE THE LORD] or fighting terrorism [WAR ON TERROR MEMORIAL]. That the marks refused registration were deemed offensive to many Americans was not a permissible ground to bar their registration when viewed through the prism of the First Amendment and prior jurisprudence on viewpoint-based content discrimination, according to the majority opinion.

The mark at issue in the recent case was F.U.C.T. as used for clothing, belonging to Erik Brunetti of California. The majority accepted that the mark was a proxy for a common vulgar term, but they also seemed convinced that use of the term conveyed a viewpoint. However, it was unclear in all the briefs and writings exactly what viewpoint was understood to be expressed by this mark, other than perhaps an attitude of vulgarity or general rebelliousness. The Court dismissed the Government’s rather awkwardly articulated argument that what was offensive about the mark was its mode of expression, rather than the content of the mark. The Government had argued that the Court could salvage the “scandalous” prohibition of Section 2(a) by construing it to refer only to “lewd, sexually explicit or profane marks,” an approach that might have rendered the language of Section 2(a) viewpoint-neutral.  But the majority declined to “rewrite” the statute, despite ample prior Supreme Court guidance about how to avoid findings of unconstitutionality by limiting the construction of a statute.

Opening the Floodgates?

It’s clear that the prospect of permitting federal registration of vulgar and obscene marks troubled several of the Justices. The Brunetti oral hearing in the spring at the Supreme Court had been telling. No lawyer or Justice dared speak aloud the mark at issue. Their reluctance and circumlocutions alone might have indicated to observers that the mark was not fit for the courtroom, let alone for tender ears, the airwaves, or the national marketplace with the imprimatur of a ®. And hovering in the background, without express mention, was the prospect that if this portion of Section 2(a) were struck down, the “N Word” might be registrable for any number of products. Under the majority opinion, that is now a possible and disquieting scenario.

Justice Alito suggested in his brief concurrence that Congress might easily fix our discomfort by adopting a “more carefully focused statute that precludes the registration of marks containing vulgar terms that play no real part in the expression of ideas.”  A seven dirty words approach to the Lanham Act? (He declined to sketch out how such a list of marks might be generated.)  In a lengthier dissent, J. Breyer chastised the majority for relying on hard and fast categorizations like “viewpoint-based content discrimination” and urged that the question be re-framed to ask whether a regulation like the ban on registering immoral and scandalous marks works “speech-related harm” that is “out of proportion to its justification.” In other words, does refusing to register F.U.C.T. limit speech in such a way that is not proportionate with the justification to avoid conferring registration (something akin to a government benefit) on a term that the public finds truly vulgar? Rather brilliantly, J. Breyer brought to bear current research about the effect of profanity on the brain and admonished that sexually explicit language, race-based epithets, and vulgarities originate in a different part of the brain than do words. Perhaps, he seemed to suggest, they are not communication or speech at all, at least not the same kind of speech that is worthy of Constitutional protection.

Is there a Way Out?

Drawing on Supreme Court precedent in the field of obscenity and harmful and threatening speech, J. Sotomayor provided an analytic framework in her dissent for an approach that would prohibit registration of obscene, profane or vulgar marks as reasonable, viewpoint-neutral, content-based regulations while striking down the ban in Section 2(a) on registering immoral marks. J. Breyer supported this approach but the majority was having none of it. They objected that this kind of dicing of statutes has never been applied in cases dealing with viewpoint discrimination. Moreover, it ruled that the entire provision at issue was substantially overbroad, thereby violating the First Amendment.

Despite laying out a possible roadmap for Congress, J. Sotomayor (as well as J. Breyer and J. Alito) dodged the process question of how to define the obscene, profane and vulgar marks that would be barred if Congress were to take up their approach. Obscenity has traditionally been judged against prevailing community standards.  Assuming Congress followed J. Alito’s suggestion and enacted a narrow Section 2(a) barring registration of obscene, profane and vulgar marks, would such language withstand Constitutional muster under the present Court perhaps with a twist of Breyer-esque analysis of emotion vs. thought? Would the USPTO know obscenity when it sees it? Might we need a group of expert consultants to advise every 5 or 10 years on the most obscene, profane and vulgar words and images in our language, a kind of Academy of Unmentionables? Could representatives of a nation as diverse and fractured as the USA agree on a set of terms that repulse us all and thereby wind up uniting us? It could be a worthwhile and instructive exercise.

Coming up Next

In our next installment, we will look at how the European Union has dealt with registration of immoral marks and marks deemed contrary to public policy. We might learn something about how other societies deal with a vexing issue in free speech and commerce.