Listen as intellectual property attorneys Tiffany Gehrke and Kelley Gordon of Marshall Gerstein in Chicago share their insights into three matters relevant anyone watching copyright and trademark law, or anyone fond of branded t-shirts and fancy French beverages.
I talk to Tiffany Gehrke about two cases. One is Vidal v. Elster, better known as the “TRUMP TOO SMALL” case. Just decided by the Supreme Court, this deals with whether a mark containing criticism of a government official or public figure – which is barred by the “names clause” of the Lanham Act – violates free speech. Justice Thomas wrote the majority opinion, which Tiffany outlines.
The other case is Penn State v. Vintage Brands, which is pending in Pennsylvania federal court and is expected to have wide-reaching implications for retailers and brand owners alike. Vintage Brand uses Penn State’s registered Nittany Lions trademarks on t-shirts, hats, and other goods, and argues that use of the trademarks constitute a defensible “ornamental use.” We shall see!
Finally, I ask Kelley Gordon for her take on a dispute between a popular Instagram influencer, Lauren Holifield, and champagne brand Veuve Clicquot. Holifield temporarily and surprisingly lost her IG account after Veuve Clicquot raised trademark infringement concerns on three of Holifield's videos. This was a big deal for her. She was earning six figures. OMG. Hear what Kelley has to say.
*******
This podcast is the audio companion to the Journal of Emerging Issues in Litigation. The Journal is a collaborative project between HB Litigation Conferences and the vLex Fastcase legal research family, which includes Full Court Press, Law Street Media, and Docket Alarm.
If you have comments, ideas, or wish to participate, please drop me a note at Editor@LitigationConferences.com.
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Litigation Enthusiast and
Host of the Emerging Litigation Podcast
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Episode Transcript
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Speaker 1 (00:01):
Welcome to the Emerging Litigation Podcast.
This is a group project drivenby HB Litigation, now part of
Critical Legal Content and VLEXCompanies, fast Case and Law
Street Media.
I'm your host, tom Hagee,longtime litigation news editor
and publisher and currentlitigation enthusiast.
If you wish to reach me, pleasecheck the appropriate links in
(00:23):
the show notes.
This podcast is also acompanion to the Journal of
Emerging Issues in Litigation,for which I serve as
editor-in-chief, published byFastcase Full Court Press.
Now here's today's episode.
If you like what you hear,please give us a rating.
So a lot of our discussiontoday well, practically all of
(00:43):
it deals with t-shirts andchampagne bottles, because you
never know where emerging issuesand litigation are going to
come from.
This episode has three parts,three and our guests talk to me
about three cases.
To line up with.
Those parts be of interest totrademark and copyright
(01:07):
attorneys, as well asentrepreneurs, product makers
and sellers, brand owners andeven social media influencers,
which is something I'm countingon for my retirement, because
who needs a 401k?
My guests are too impressive,if I can say that's
Chicago-based attorneys and I domean it and they both coupled
their legal education withscientific degrees, as attorneys
(01:30):
in their profession often do.
Well, the good ones they areTiffany Gerke and Kelly Gordon,
both with Marshall Gerstein.
My intro won't do them justice,so I urge you to click on their
bios and learn more about them.
They put me to shame andgenerally make me feel like I've
been an underachiever my entirelife.
(01:51):
But this isn't about me.
Tiffany Gerke is a partner andchair of Marshall Gerstein's
Trademarks and CopyrightsPractice Group.
She has her JD from LoyolaUniversity, chicago School of
Law, and she has her computerscience engineering degree from
the University of Michigan.
Kelly Gordon is also a partnerat the firm, received her JD
(02:15):
from the University of Illinois,chicago School of Law, with a
certificate in intellectualproperty.
She has a master's in arthistory and visual culture from
the American InternationalUniversity in London and she has
a BA in cognitive science fromIndiana University.
So Kelly mixes in knowledge ofart into her understanding of
(02:40):
the world.
I get to talk to Tiffany Gerkeabout two cases.
One was just decided by theSupreme Court.
It deals with whether a markcontaining criticism of a
government, official or publicfigure one you've heard of
that's something that's barredby the names clause of the
Lanham Act and whether thecriticism of the mark violates
(03:04):
free speech.
That case is called Vidal vElster, better known as the
Trump too small case.
That's a controversial slogan.
I think we're safe in sayingthat it's also accompanied by a
hand gesture.
The entrepreneur in that casewas trying to put this on some
T-shirts and other apparel.
So let's see what Tiffany cantell us about that.
(03:26):
The other case Tiffany talksabout is expected to have pretty
wide-reaching implications forretailers and brand owners.
That is the Penn State versusVintage Brands case.
It's pending in Pennsylvaniafederal court.
Vintage Brands uses PennState's registered trademarks on
t-shirts, hats and other goods.
(03:47):
It argues that the use oftrademarks constitute a
defensible quote ornamental use,something Tiffany talks about.
She describes the issues therevery well.
And third, we get Kelly Gordonto share her insights into
copyright disputes that arisebetween big brands and social
media influencers.
(04:08):
In the case we discussed, thesocial media influencer got the
attention of a big champagnecompany whose name I can't
pronounce but you will see Kellycan which effectuated a social
media takedown of her pages.
She was generating six-figureincome there, so that's a big
deal for her.
Well, it was, and that's awarning to other influencers out
(04:30):
there and you know who you are.
So three interesting cases in asingle episode of the Emerging
Litigation Podcast.
It says you're not getting yourmoney's worth.
And now here is my conversationwith Tiffany Gerke and Kelly
Gordon of Marshall Gerstein.
I hope you enjoy it.
Tiffany Gerke and Kelly Gordon,thank you very much for talking
(04:51):
with me today.
Speaker 2 (04:52):
Happy to be here.
Speaker 1 (04:54):
So the first case we're going to talk about is
Vidal v Elster, that's betterknown as the Trump too small
case, which is a slogan that wasgoing on t-shirts and hats, and
this deals with whether denyingregistration of a mark under
the Names Clause of the LanhamAct containing criticism of a
living government official orpublic figure using their name
(05:16):
without permission violates theFree Speech Clause of the First
Amendment.
So the PTO and I've learned allof this from you the PTO denied
the applicant, steve Elster,registration of the mark.
As I said, he wanted to sellhats and t-shirts with that
slogan with an illustration of ahand gesture.
So I think we can imagine whatthat is.
The trademark trial and appealboard affirmed Steve appealed to
(05:39):
the federal circuit claiminghis free speech rights were
being violated.
Federal circuit agreed with him, but on June 13th 2024, justice
Thomas wrote a majority opinionresponding to Steve's claim
that blocking his trademarkdenied him his First Amendment
rights.
The justice wrote we hold thatit does not violate his rights.
(06:01):
So, tiffany, can you give us alittle background, correct
anything I might have said andalso explain what the NAMES
Clause is in the Lanham Act?
Speaker 2 (06:13):
Sure.
So the NAMES Clause prohibitsregistration of a trademark that
includes the name, portrait orsignature identifying a
particular living individualwithout their consent.
So the key aspects there arethat the person is alive and
that it's a particularindividual that is identified.
Speaker 1 (06:34):
So is there anything more?
What other relevant facts arethere in this case?
Any that you find particularlyinteresting or different from
other cases like it?
Speaker 2 (06:43):
that you find particularly interesting or
different from other cases likeit?
Sure.
So in this case the applicantwas trying to register Trump too
small, as you noted, witht-shirts, hats and clothing to
use as a source indicator forthose t-shirts, hats and
clothing.
And you know, previously theSupreme Court has struck down
two trademark clauses we'll sayas being unconstitutional for
(07:08):
violating the First Amendment,and so this case was sort of a
third test of that in recentyears.
Speaker 1 (07:15):
What can you tell us about the previous two cases?
Speaker 2 (07:18):
In one case the applicant tried to register the
mark the slants for his band.
The examiner said no, youcannot register that because
there was a prohibition againstmarks that were disparaging in
the Trademark Act and theexaminer said that term can be
considered disparaging,therefore we're not allowed to
(07:39):
register it.
Basically, it got all the wayup to the Supreme Court and they
said no because you areimposing although it is a
content-based regulation you areimposing someone's viewpoint or
opinion to determine whether ornot it could get registered.
So they said, because it wasviewpoint-based and you had to
have somebody's viewpoint ofwhether or not it was
(08:00):
disparaging, that wasunconstitutional.
Speaker 1 (08:04):
Excellent.
Then there was another case.
Speaker 2 (08:05):
The second case was the Brunetti case a couple of
years ago, had a similar conceptin there, but it had to do with
whether or not it was obscene,offensive, scandalous, and it
was someone's viewpoint ofwhether or not it qualified as
those things.
So the Supreme Court said nope,that's unconstitutional, you
can't regulate that.
Speaker 1 (08:24):
Well, I feel innocent .
I had to think about why thatfirst one was disparaging.
Took me a full minute.
Speaker 2 (08:30):
And I was going to say so.
What makes this one different,though, is that the names clause
, so it's also content-based.
Right, it's looking is there aname in this trademark?
Okay, yes or no.
And then it's looking do youhave that person's consent?
Right, okay, yes or no?
And then it's looking do youhave that person's consent?
Speaker 1 (08:44):
Right.
Speaker 2 (08:45):
It's not looking at whether it's a favorable use of
the name, a neutral or anegative use of the name.
It's purely looking whether ornot it's a name and if you have
their consent.
So for that reason they saidit's viewpoint neutral, versus
the previous two that wereviewpoint discriminatory.
Speaker 1 (09:02):
So what are your thoughts on the various holdings
in the case?
Speaker 2 (09:04):
So the PTO, to me, did exactly what we expected.
You know, they looked at theletter of it, said it had a name
in it, it was a particularindividual, no consent, we can't
.
We can't allow this forward.
So I think that part was fairlypredictable, that that was
going to happen.
And same with, you know, at theexaminer level and at the board
level, the TTAB, when it got tothe federal circuit.
(09:26):
What I thought they did waskind of interesting.
So their approach sort ofstarted with a premise that, you
know, free speech and theability to publicly criticize or
praise government officials isessential right to our society
and to the First Amendmentofficials is essential right to
(09:46):
our society and to the FirstAmendment.
So they looked at that under aright of privacy and a right of
publicity, specifically lookingat President Trump, since it was
his name that was in thisclause or in this proposed mark,
excuse me.
And they said, okay, firstlooking at the right of privacy.
So does the governmentbasically have any interest in
(10:07):
in protecting the privacy ofPresident Trump?
And they said, you know, basedon him being the president, it's
arguably the least private namein American life was, I believe
, their quote.
And and so they said you know,no, basically there's nothing
there that that would justifythis.
(10:27):
Then they went on to the rightof publicity and at this part
they looked and said, OK, theremight be a government interest
here, where the mark involvescopying or misappropriating from
an existing mark and preventingthe issuance of marks that
falsely suggest an individual,including the president, have
(10:50):
endorsed a particular product orservice.
So that starts to lean one way,towards the government interest
.
But then they went back theother way and said looking at
this mark as a whole, there's noplausible claim that anyone
could think that President Trumpwas endorsing this product
based on this trademark.
Speaker 1 (11:11):
Yeah, pretty unlikely .
Speaker 2 (11:12):
He's not going to endorse that.
I think we can all agree onthat.
I think we're safe.
Speaker 1 (11:15):
Yeah, I think we're safe.
I think we can all agree onthat.
I think we're safe.
Speaker 2 (11:16):
Yeah, I think we're safe, Then the federal circuit
basically as a whole said thegovernment does not have
sufficient interest to restrictthis particular speech and
therefore it wasunconstitutional.
Speaker 1 (11:29):
Well, I think we stumbled onto something we can
all agree on.
Trump's name is well known.
We found neutral ground.
We did Good for us.
The other thing that was justoccurring to me was I guess it
was strictly, they were talkingabout him as president, not his
Trump organization, I guess.
Right, right, because that'scertainly a brand everywhere.
Speaker 2 (11:45):
Yeah, in this context that I was just talking about,
they were, although throughoutthe procedural history of this
matter, there is some discussionabout the fact that he has
Trump registered with multiplethings, including shirts and
hats and clothing type items.
Speaker 1 (12:03):
Everything steaks hotels, casinos.
We have a lot of them aroundhere.
My wife used to work for him inthe 80s or not for him worked
at the Trump Plaza Casino Hotel.
So we have we still have towelsand letter openers Since, since
we started talking about thiscase, the Supreme Court ruled.
Speaker 2 (12:21):
Yes.
Speaker 1 (12:22):
So can you tell us about that?
Speaker 2 (12:23):
So a couple of things .
So one thing I want to kind ofstart with is the framework that
the Supreme Court started within their opinion and sort of
what colored a lot of theanalysis, at least in the
majority's opinion.
I'm not sure that they laid theframework in the way that I
would have liked to see it beput through, and what I mean by
that is they flipped to me thepresumptions about trademarks.
(12:48):
So in the Lanham Act theopening line is like no
trademark shall be refusedregistration unless right, I
abbreviated a little bit there,but that starts to me with a
default Okay, we're gonna allowit to register unless you hit
these exceptions, and one ofthose exceptions being the names
clause.
But the Supreme Court's opinionphrases it as you can get a
(13:14):
federal registration only formarks that meet certain criteria
.
So to me that slight change inwording really indicated how
they're going to talk about thisand the perspective of this,
because they're starting fromthe opposite perspective.
The second thing that they didthat I don't necessarily agree
(13:34):
with is they said trademarkrights are primarily a matter of
state law.
I also don't believe that'strue.
I think maybe a long, long timeago it was, but the reality is,
with the Lanham Act that's beenaround for, I think, almost 60
years at this point, and the wayinterstate commerce is today
and has been now for a long time, it's absolutely a matter that
(13:58):
goes across the entire UnitedStates.
So I thought, by those twoaspects that they kind of folded
into their framing of thebackground and the analysis they
were going to do, I thoughtwere a little bit off.
I don't know if necessarilygetting those right would have
changed their outcome, but forme I viewed it as an indication
(14:20):
that they maybe weren't quiteunderstanding the full scope of
what was at play here.
Speaker 1 (14:26):
For those who are unfamiliar what is the appellate
path trademark cases take fromdistrict courts?
Speaker 2 (14:32):
If it's a trademark matter that comes through the
TTAB, like this one did, it cango up through the federal
circuit.
If it was, for example, here inthe Northern District of
Illinois, it would get appealedup to the Seventh Circuit.
Unless it was also involving,for example, a patent matter,
Then it would go with.
It would stay with the patentmatter to the federal circuit.
Speaker 1 (14:51):
How the majority came at the thing sounds counter to
how you believe that, or you saythat the law is written, you
say it's introduced with.
You know, no trademark shall berefused, and so that was one
thing, and the other thing waswhether it's a state controlled
area of law or federal, and theyseem to.
(15:13):
They didn't contact you, Iguess, in advance.
Speaker 2 (15:16):
No, they sure didn't no.
Speaker 1 (15:19):
Maybe they should have.
We can put that in.
Speaker 2 (15:21):
Well, ultimately, though, as I said, I don't know
if it would have impacted theresults, but I thought it was
worth mentioning.
Speaker 1 (15:31):
What's your opinion of the Supreme Court ruling?
Is it consistent with precedent?
Speaker 2 (15:35):
So I don't necessarily think it's
consistent with precedent, but Ido think they reach the right
results in this instance.
Speaker 1 (15:41):
All right.
So, as has been happeningfrequently these days, the
justices are almost having apublic conversation about their
decisions.
So Justice Thomas made thepoint of saying how this is a
narrow decision.
They don't set forth acomprehensive framework for
judging whether allcontent-based but
(16:02):
viewpoint-neutral trademarkrestrictions are constitutional.
Nor do we suggest that anequivalent history and tradition
is required to uphold everycontent-based trademark
restriction.
But in the end, he said, infuture cases we can't address
the distinct question whether aviewpoint-neutral, content-based
trademark restriction isconstitutional without such a
(16:23):
historical pedigree.
Justice Thomas did addresscriticism from Justice Sotomayor
and Justice Barrett.
Like you, they concurred withthe outcome that the Names
Clause does not violate theFirst Amendment, but not the
path they took to get there.
So what did Sotomayor andBarrett say?
Speaker 2 (16:43):
So they both gave some pause to this notion of
relying purely on history forhow to apply it in this
situation, and then found otherways to reach the same
conclusion, using moretraditional methods, like,
whether you know, looking atdifferent levels of scrutiny or
(17:04):
looking at other contexts inwhich federal laws have been
challenged that may arguablyhave similar characteristics to
this one.
Speaker 1 (17:13):
So what impact do you think this decision is going to
have, and on whom?
Speaker 2 (17:17):
I think the main impact on this is going to be on
brand owners, and I think thatthe Supreme Court didn't
necessarily appreciate, at leastin the written part of their
opinion, the practicalimplications of what having a
federal trademark registrationdoes for a brand owner.
They mentioned a few things.
(17:37):
Like you know, you get a legalpresumption of ownership and you
get nationwide constructivenotice to others, but the things
that they didn't mention arehow those registrations are used
in commerce.
So, for example, in the you knowthe internet world that we live
in, there's a lot of shoppingonline.
If you're trying to enforceyour mark in multiple
(17:58):
third-party marketplaces, youneed to have a registration to
establish your rights, to followthe procedures that those
marketplaces may have to stopcounterfeiters and infringers.
And there's other ways that youcan use your registration, sort
of quicker, faster and moreeffectively than you would be
able to do at common law.
(18:18):
And while common law rights areabsolutely important and can be
the basis of many things, Idon't mean to pretend that
they're not worthwhile.
They absolutely are.
I thought that the courtglossed over the impact on
someone that is trying to get afederal registration, can't get
it and is going to go to themarketplace.
(18:38):
It's going to be harder forthem to stop others than it
would be if they had a federalregistration, so I think that's
who's going to be impacted themost.
Speaker 1 (18:46):
Maybe a subject for another day is I'm always
interested in how IP isprotected globally.
Speaker 2 (18:57):
Yes, Well, one thing that a federal registration.
You can use it as a basis forregistration and multiple other
or an application orregistration, I should say, in
other jurisdictions, and youcan't usually do that with
common law.
So that's another benefitactually.
Speaker 1 (19:06):
I stumbled into a good question.
You sure did.
That'll be the first, maybe thelast today.
So what best practices wouldyou well for brands or anyone
else, what guidance or bestpractices would you like to
share?
Speaker 2 (19:19):
I think that generally, if your mark is
eligible for a federalregistration, you should
generally get it.
If you're gonna be using themark over state lines, so in
interstate commerce or online,the registration is a very
powerful tool.
Speaker 1 (19:34):
So go for it, go for it.
Well, good, we're all aboutbrands today, so let's go to the
next one Penn State versusvintage brands.
Now, is this still pending?
Speaker 2 (19:48):
It is yes Okay.
Speaker 1 (19:50):
In Pennsylvania in federal court in Pennsylvania.
It's going to havewide-reaching implications for
retailers and brand owners.
You anticipate wide-reachingimplications for retailers and
brand owners.
You anticipate vintage brandsuses Penn State's registered
trademarks on t-shirts, hats andother goods.
See the law of t-shirts andhats.
Seems to be it's everywhere.
Speaker 3 (20:09):
It is, it really is.
Speaker 1 (20:11):
My t-shirt.
I never have anything on mine.
They use their trademarks onhats and other things and it
argues that the use oftrademarks constitutes a
defensible ornamental use.
This is vintage brands argument, so what does that mean?
Speaker 2 (20:28):
So ornamental use basically means that it's a
decoration, it's a feature or adesign that may be part of, for
example, a t-shirt, but it's notnecessarily a source indicator,
right?
So often you might think ofornamental use as what you see
on the front of a t-shirt, likethe design and the source
indicators, the tag of who soldit to you.
Speaker 1 (20:51):
All right.
What's an example then, do you?
Have a picture of a tiger, alion.
Speaker 2 (20:56):
Sure, as long as it's not a Nittany Lion.
Speaker 1 (20:59):
Because they have a very specific look.
Speaker 2 (21:02):
Yes, so I could give you an example from this case.
Speaker 1 (21:05):
If that would be helpful.
Speaker 2 (21:07):
Sure.
So vintage brands had sales ontheir website, many t-shirts for
various colleges, collegeuniversity sports you know
things that people want to havebe fans of, for a general way to
describe it, and on theirwebsite you can buy a shirt that
(21:30):
has a picture, a word andsometimes an actual, like
trademarked logo of theuniversity or team that they
want to show their support for.
And so in this case the PennState case the vintage brand
company was selling historicalPenn State images.
(21:53):
I believe that they bought oldstuff, scanned what the image
used to look like and then putthat on the T-shirts.
Some of those designs PennState has registered at the
USPTO and has for a long time.
Some of them are not registered.
Speaker 1 (22:11):
This is a side question for me.
Do trademarks expire?
Speaker 2 (22:13):
They do, but you can renew them indefinitely.
So every 10 years you can renewthem, and as long as you are
using them in commerce, you cankeep protecting them.
Speaker 1 (22:22):
And then the court ruled on dueling motions for
summary judgment and it's goingto head to trial right.
Speaker 2 (22:29):
They were denied and it's set for trial in November.
Speaker 1 (22:32):
currently, how will this impact retailers and brand
owners, I guess, depending onwhich way it goes, of course?
Speaker 2 (22:38):
Yes, impact retailers and brand owners, I guess,
depending on which way it goes,of course, yes.
So right now, the licensingindustry is watching this case
closely, particularly those thatwork with teams and
universities, because fans loveto buy gear for their favorite
teams.
Right and under the currentmodel, the university, the team,
(22:58):
whoever the trademark owner is,has a very lucrative usually
licensing deal with theseentities that make the t-shirts,
that make the hats and theother things, and if this case
goes in vintage brands' favor,then it will potentially create
(23:19):
a windfall of people to creategear for their favorite teams
without having to pay licensingcosts for it.
Speaker 1 (23:27):
It must be lucrative, like you said, because people
are bananas for their teams.
Speaker 2 (23:31):
Exactly yes.
Speaker 1 (23:35):
Depending on the outcome, what would be the
impact on counterfeiting claims?
Speaker 2 (23:39):
So it would be a lot harder to enforce your mark
against those that are notauthorized to create merchandise
on your behalf, because if theyare able to do what Vintage
Brand did, then they too wouldbe able to continue to sell
their things.
There would have to be someother factor that you would be
relying on to enforce your markagainst them, and that's also
(24:02):
kind of where the distinctioncomes in between source
indicator and ornamental use.
Ornamental use just might meanhey, I'm a fan of this team,
that's all I'm trying to sayhere, whereas source indicator
may be.
I'm a fan, and I have purchasedthis from someone that is
affiliated with and endorsed byor sponsored by the university.
Speaker 1 (24:23):
How do you think it's going to go?
Do you do the predictions?
Speaker 2 (24:26):
I may not be right, but I think Penn State is
probably going to be successfulin this one.
Speaker 1 (24:31):
And that's because why.
Speaker 2 (24:33):
I think that there is , to use the Supreme Court's
reasoning there's a lot ofhistory.
If this case goes against PennState, I think it will
significantly harm brand ownersbecause it will make it much
harder for them to enforce theirmark against others and receive
licensing royalties for theirbrands.
Speaker 1 (24:54):
So do you have any guidance at this point for
retailers and brand owners?
Speaker 2 (24:58):
So, yeah, if you're the retailer and you want to be
like a vintage brand, I thinkinstead, whatever you're going
to make, you need to make surethat you are clearly not so
close to what the university orteam has that you would be
mistaken for being affiliatedwith them, or get the license,
and then you can be covered forwhat you need to do.
Speaker 1 (25:18):
We'll come back to you when they come back with a
verdict.
Need to do.
We'll come back to you whenthey come back with a verdict.
All right, well, moving on toanother brand issue.
So, kelly, we're going to goover to you.
We've got a brand versus socialmedia influencers and you were
(25:41):
recently quoted in a Wiredarticle.
That makes you cool so fartoday.
I want to be quoted in Wiredsomeday, apparently.
So you commented on disputebetween an Instagram influencer
named Lauren Holyfield.
She lost her account after now.
I don't even know how to saythis.
After a champagne brand, is itVeuve Clicquot?
No, I can't say it.
Speaker 3 (25:58):
How do you say it Veuve Clicquot?
Speaker 1 (26:01):
Oh my God, those French Veuve, kiklo, kiklo,
kikli-ko.
Okay, fine, they filed atrademark infringement claim on
three of the influencers' videosand this was a big deal for her
, because she was generating alot of six-figure income
marketing products to more than100,000 followers, so that's
(26:21):
good for her.
When she found out that she wasbanned, that income was shut
down.
So what can you tell me aboutthe facts of the case?
You know, was she warned?
What was she doing, decoratingbottles?
What can you tell us?
Speaker 3 (26:35):
It was not necessarily a trademark
infringement claim that we wouldtraditionally think of in court
.
This was a social mediatakedown request that was
initiated by the brand owner.
I haven't seen the actualvideos because, of course, they
have since been removed, but myunderstanding is that she was
(26:56):
perhaps doing some decoupage orsome sort of to borrow a term
from Tiffany's discussionornamental decorations to a Vov
Kiko champagne bottle and what Iwould assume was the case.
Again, I haven't actually seenthe bottles that she decorated,
but my assumption is that thedistinctive labeling and color
(27:19):
the yellow-orange color thatVogue Kiko is known for and
actually has a registeredtrademark on just the color
itself in connection withchampagne was still visible on
the bottles themselves.
So she posted some of thesevideos to her Instagram account.
Haven't seen the videosthemselves.
(27:40):
When I did do a quick internetsearch for her name plus Vogue,
there seems to be a sort of aghost lingering hyperlink out
there to perhaps one of herprevious Instagram posts where
some of the content shows upthat might have been from the
original, one of the originalcaptions from the posts that
(28:02):
indicates if you commentchampagne on my post, I will
send you a direct message withthe information on the materials
that I used to decorate thebottles.
In a nutshell, that sounds likewhat sort of initially gave
rise to the takedown request,and from public statements that
(28:23):
she has made, it sounds like shewas forewarned about the
takedown request, but I guessthe hitch for her was that it
went to sort of a secondaryemail account that she wasn't
monitoring necessarily, so atthe time that her account was
deactivated it was technically asurprise to her.
It sounds like the old.
Speaker 1 (28:44):
I didn't check that email account.
Speaker 3 (28:46):
Right.
Speaker 1 (28:48):
I would have gone with spam, but that's okay.
So was she able to rectify thesituation?
Speaker 3 (28:53):
So she was.
It sounds like she hired athird-party marketing consultant
that helped her get her accountback online.
Speaker 1 (29:03):
Did she have additional repercussions as a
result of this?
Because I think I saw it in thearticle where you're quoted
impact on her future work incomefrom advertisers.
Speaker 3 (29:12):
So I'm not sure if there was any actual impact on
future work once her account wasback online.
I think in the particular Wiredarticle she did sort of have
some questions as to whether itwould impact things, and I think
some of it was sort ofhypothesizing how long her
account would be down for and,of course, if it had been a
(29:34):
permanent removal of her account, how that would impact her
earnings.
Speaker 1 (29:39):
But what questions does this raise in your mind
about copyright, ip, trademarkprotection as influencer,
marketing increases.
Speaker 3 (29:47):
Yeah.
So this particular instance, Ithink it raises what I call a
triple whammy of issues.
First of all, the brand that'sat issue is a luxury brand and
it is, I would say, arguably oneof the iconic champagne brands
where protection of that brandthat has already garnered and
(30:09):
established so much value in andof itself, of course, a brand
owner like that is going to beparticularly incentivized to be
protecting how that brand isused and by whom, and if such
use is likely to confuseconsumers into believing that
there is some sort ofsponsorship or affiliation or
(30:29):
approval with a third-party useof their brand.
Not only that, but it's analcohol brand, so it's a highly
regulated industry right whichraises its own set of issues.
Alcohol brands have regulationsin terms of what type of
content can be released inconnection with the brand, of
(30:50):
course, the age restrictionsthat apply.
For example, there's certainregulations that you can't have
advertising that's likely to beappealing to those under 21, of
course.
So there's historical casesabout alcohol brands using
puppies or dogs that might beconsidered appealing to, of
course, children, which is notideal.
Speaker 1 (31:13):
Mickey Mouse throwing down some Pinot Noir.
Speaker 3 (31:16):
Right Probably not ideal.
And then thirdly, of course,it's an influencer.
It's being used by aninfluencer on social media and I
think what we will end upseeing likely is more regulation
.
I think it's still an area ofdevelopment where, so far, we
have seen a number of changesand requirements, of course,
(31:38):
where influencers who areposting content online, if it is
sponsored, they have to usesomething like hashtag ad at the
beginning of the posts andthings like that.
In this particular instance, ofcourse, ms Holifield's position
was that it, of course, was nota sponsored post.
She wasn't selling anything,but at the end of the day, she
(31:59):
is still a social mediainfluencer and whether or not
she was actually sellingsomething as a result of that
individual post, the entirepurpose and character of her
social media presence isultimately to be influencing
consumers to be making certainpurchasing decisions and, at the
end of the day, I think Vovkikowas very well within their
(32:21):
rights to submit the takedownrequest.
How does that differ fromreviews?
If I had a wine, I thinkVovkiko was very well within
their rights to submit thetakedown request.
Speaker 1 (32:24):
How does that differ from reviews?
If I had a wine I don't knowGod forbid I was a wine
influencer that would be widelyused, but you're on there to say
here's the best one of the year, this one is the worst.
I mean, how does it differ?
Speaker 3 (32:40):
There's an overlap there, certainly.
Still, if you are posting fromquote unquote a wine
influencer's account, there'ssomething called nominative fair
use, which is you canaccurately refer to a brand by
its name.
That's not consideredinfringement.
But if you are an influencerposting certain content, I think
(33:02):
the underlying ripple effectthere and implication for
consumers that of questions asto at what point does an
influencer need to actuallydisclose.
(33:27):
I received this free bottle ofwine from this brand owner.
Are they required to disclose?
This content is only for 21 andover, things like that, and so
that's why I think we will endup seeing some more regulation
in this space.
Speaker 1 (33:42):
Okay, when you use the word ripple, was that a
product placement?
Speaker 3 (33:45):
that, and so that's why I think we will end up
seeing some more regulation inthis space when you use the word
Ripple was that a productplacement?
Speaker 1 (33:51):
No, I actually don't.
I can't think of a brand namedRipple.
Oh, that is so good to hear,because at my age Ripple I
laughed when you said Ripplebecause that was a really cheap
wine that teenagers would drinkand it was horrible.
Speaker 3 (34:04):
No way, that's great.
Speaker 1 (34:05):
The fact that she was doing decoupage, which is also
French, that didn't influencethem into saying nevermind, say
I want to launch, I want to be awine influencer.
What would you, what advicewould you give?
Speaker 3 (34:19):
I would say that permission is key If you are
going to be working in theinfluencer space, researching
the regulations, making sure youhave the correct guidance,
you're adhering to any of thosedisclaimers in terms of whether
it is an advertisement, whetherit's been gifted, whatever the
regulations are currently whatthey may end up being Doing.
(34:42):
That research before postingthe content I think is paramount
, especially the regulations arecurrently what they may end up
being doing.
That research before postingthe content I think is paramount
, especially if you are going tobe prominently featuring a
third-party brand in yourcontent.
Speaker 1 (34:53):
Should they call you?
Speaker 3 (34:55):
Absolutely.
Speaker 1 (34:56):
This is not attorney advertising nor does this
establish an attorney-clientrelationship.
Well, what about the brandsthemselves?
I guess it must be that bigbrands must have teams of people
out there just doing nothingbut scouring for misuse.
Speaker 3 (35:10):
I'm sure it certainly depends on the brand.
Some brands do employ thirdparties that help them with
reviewing some of the contentthat is out there.
I think sort of one of thetakeaways from this particular
dispute that the influencer hadthat was also outlined in the
Wired article is that probablycommunication is key.
(35:31):
I understand the influencer hadsome sort of source of
frustration with the socialmedia platform trying to get her
account back online.
Every platform is different.
For example, youtube has sortof a three strikes and you're
out policy.
If they receive three copyrightcomplaints against your YouTube
channel for content that you'renot permitted to use, they'll
(35:55):
shut down your YouTube channel.
You need to be aware, of course, of the regulations, the rules
obtaining permission, makingsure that you have that
permission before you're postingthe content.
But from the platform'sperspective, ensuring that
you're communicating that to theusers of your platform clearly
and having that two-waycommunication in order to
(36:17):
rectify situations, that ifthere is something that can be
worked out amicably, sometimesthat's the best resolution you
can ask for.
Speaker 1 (36:25):
Always Okay, guys.
Well, thank you very much.
Great to talk to you, Great tomeet you both.
Speaker 2 (36:29):
You as well, thank you.
Speaker 1 (36:31):
That concludes this episode of the Emerging
Litigation Podcast, aco-production of HB Litigation,
critical Legal Content, vlexFast Case and our friends at
Lostry Media.
I'm Tom Hagee, your host, whichwould explain why I'm talking.
Please feel free to reach outto me if you have ideas for a
future episode and don'thesitate to share this with
(36:53):
clients, colleagues, friends,animals you may have left at
home, and if you feel so moved,please give us a rating.
Those always help.
Thank you for listening.
Welcome to the Emerging Litigation Podcast.
This is a group project drivenby HB Litigation, now part of
Critical Legal Content and VLEXCompanies, fast Case and Law
Street Media.
I'm your host, tom Hagee,longtime litigation news editor
and publisher and currentlitigation enthusiast.
If you wish to reach me, pleasecheck the appropriate links in
(00:23):
the show notes.
This podcast is also acompanion to the Journal of
Emerging Issues in Litigation,for which I serve as
editor-in-chief, published byFastcase Full Court Press.
Now here's today's episode.
If you like what you hear,please give us a rating.
So a lot of our discussiontoday well, practically all of
(00:43):
it deals with t-shirts andchampagne bottles, because you
never know where emerging issuesand litigation are going to
come from.
This episode has three parts,three and our guests talk to me
about three cases.
To line up with.
Those parts be of interest totrademark and copyright
(01:07):
attorneys, as well asentrepreneurs, product makers
and sellers, brand owners andeven social media influencers,
which is something I'm countingon for my retirement, because
who needs a 401k?
My guests are too impressive,if I can say that's
Chicago-based attorneys and I domean it and they both coupled
their legal education withscientific degrees, as attorneys
(01:30):
in their profession often do.
Well, the good ones they areTiffany Gerke and Kelly Gordon,
both with Marshall Gerstein.
My intro won't do them justice,so I urge you to click on their
bios and learn more about them.
They put me to shame andgenerally make me feel like I've
been an underachiever my entirelife.
(01:51):
But this isn't about me.
Tiffany Gerke is a partner andchair of Marshall Gerstein's
Trademarks and CopyrightsPractice Group.
She has her JD from LoyolaUniversity, chicago School of
Law, and she has her computerscience engineering degree from
the University of Michigan.
Kelly Gordon is also a partnerat the firm, received her JD
(02:15):
from the University of Illinois,chicago School of Law, with a
certificate in intellectualproperty.
She has a master's in arthistory and visual culture from
the American InternationalUniversity in London and she has
a BA in cognitive science fromIndiana University.
So Kelly mixes in knowledge ofart into her understanding of
(02:40):
the world.
I get to talk to Tiffany Gerkeabout two cases.
One was just decided by theSupreme Court.
It deals with whether a markcontaining criticism of a
government, official or publicfigure one you've heard of
that's something that's barredby the names clause of the
Lanham Act and whether thecriticism of the mark violates
(03:04):
free speech.
That case is called Vidal vElster, better known as the
Trump too small case.
That's a controversial slogan.
I think we're safe in sayingthat it's also accompanied by a
hand gesture.
The entrepreneur in that casewas trying to put this on some
T-shirts and other apparel.
So let's see what Tiffany cantell us about that.
(03:26):
The other case Tiffany talksabout is expected to have pretty
wide-reaching implications forretailers and brand owners.
That is the Penn State versusVintage Brands case.
It's pending in Pennsylvaniafederal court.
Vintage Brands uses PennState's registered trademarks on
t-shirts, hats and other goods.
(03:47):
It argues that the use oftrademarks constitute a
defensible quote ornamental use,something Tiffany talks about.
She describes the issues therevery well.
And third, we get Kelly Gordonto share her insights into
copyright disputes that arisebetween big brands and social
media influencers.
(04:08):
In the case we discussed, thesocial media influencer got the
attention of a big champagnecompany whose name I can't
pronounce but you will see Kellycan which effectuated a social
media takedown of her pages.
She was generating six-figureincome there, so that's a big
deal for her.
Well, it was, and that's awarning to other influencers out
(04:30):
there and you know who you are.
So three interesting cases in asingle episode of the Emerging
Litigation Podcast.
It says you're not getting yourmoney's worth.
And now here is my conversationwith Tiffany Gerke and Kelly
Gordon of Marshall Gerstein.
I hope you enjoy it.
Tiffany Gerke and Kelly Gordon,thank you very much for talking
(04:51):
with me today.
Speaker 2 (04:52):
Happy to be here.
Speaker 1 (04:54):
So the first case we're going to talk about is
Vidal v Elster, that's betterknown as the Trump too small
case, which is a slogan that wasgoing on t-shirts and hats, and
this deals with whether denyingregistration of a mark under
the Names Clause of the LanhamAct containing criticism of a
living government official orpublic figure using their name
(05:16):
without permission violates theFree Speech Clause of the First
Amendment.
So the PTO and I've learned allof this from you the PTO denied
the applicant, steve Elster,registration of the mark.
As I said, he wanted to sellhats and t-shirts with that
slogan with an illustration of ahand gesture.
So I think we can imagine whatthat is.
The trademark trial and appealboard affirmed Steve appealed to
(05:39):
the federal circuit claiminghis free speech rights were
being violated.
Federal circuit agreed with him, but on June 13th 2024, justice
Thomas wrote a majority opinionresponding to Steve's claim
that blocking his trademarkdenied him his First Amendment
rights.
The justice wrote we hold thatit does not violate his rights.
(06:01):
So, tiffany, can you give us alittle background, correct
anything I might have said andalso explain what the NAMES
Clause is in the Lanham Act?
Speaker 2 (06:13):
Sure.
So the NAMES Clause prohibitsregistration of a trademark that
includes the name, portrait orsignature identifying a
particular living individualwithout their consent.
So the key aspects there arethat the person is alive and
that it's a particularindividual that is identified.
Speaker 1 (06:34):
So is there anything more?
What other relevant facts arethere in this case?
Any that you find particularlyinteresting or different from
other cases like it?
Speaker 2 (06:43):
that you find particularly interesting or
different from other cases likeit?
Sure.
So in this case the applicantwas trying to register Trump too
small, as you noted, witht-shirts, hats and clothing to
use as a source indicator forthose t-shirts, hats and
clothing.
And you know, previously theSupreme Court has struck down
two trademark clauses we'll sayas being unconstitutional for
(07:08):
violating the First Amendment,and so this case was sort of a
third test of that in recentyears.
Speaker 1 (07:15):
What can you tell us about the previous two cases?
Speaker 2 (07:18):
In one case the applicant tried to register the
mark the slants for his band.
The examiner said no, youcannot register that because
there was a prohibition againstmarks that were disparaging in
the Trademark Act and theexaminer said that term can be
considered disparaging,therefore we're not allowed to
(07:39):
register it.
Basically, it got all the wayup to the Supreme Court and they
said no because you areimposing although it is a
content-based regulation you areimposing someone's viewpoint or
opinion to determine whether ornot it could get registered.
So they said, because it wasviewpoint-based and you had to
have somebody's viewpoint ofwhether or not it was
(08:00):
disparaging, that wasunconstitutional.
Speaker 1 (08:04):
Excellent.
Then there was another case.
Speaker 2 (08:05):
The second case was the Brunetti case a couple of
years ago, had a similar conceptin there, but it had to do with
whether or not it was obscene,offensive, scandalous, and it
was someone's viewpoint ofwhether or not it qualified as
those things.
So the Supreme Court said nope,that's unconstitutional, you
can't regulate that.
Speaker 1 (08:24):
Well, I feel innocent .
I had to think about why thatfirst one was disparaging.
Took me a full minute.
Speaker 2 (08:30):
And I was going to say so.
What makes this one different,though, is that the names clause
, so it's also content-based.
Right, it's looking is there aname in this trademark?
Okay, yes or no.
And then it's looking do youhave that person's consent?
Right, okay, yes or no?
And then it's looking do youhave that person's consent?
Speaker 1 (08:44):
Right.
Speaker 2 (08:45):
It's not looking at whether it's a favorable use of
the name, a neutral or anegative use of the name.
It's purely looking whether ornot it's a name and if you have
their consent.
So for that reason they saidit's viewpoint neutral, versus
the previous two that wereviewpoint discriminatory.
Speaker 1 (09:02):
So what are your thoughts on the various holdings
in the case?
Speaker 2 (09:04):
So the PTO, to me, did exactly what we expected.
You know, they looked at theletter of it, said it had a name
in it, it was a particularindividual, no consent, we can't
.
We can't allow this forward.
So I think that part was fairlypredictable, that that was
going to happen.
And same with, you know, at theexaminer level and at the board
level, the TTAB, when it got tothe federal circuit.
(09:26):
What I thought they did waskind of interesting.
So their approach sort ofstarted with a premise that, you
know, free speech and theability to publicly criticize or
praise government officials isessential right to our society
and to the First Amendmentofficials is essential right to
(09:46):
our society and to the FirstAmendment.
So they looked at that under aright of privacy and a right of
publicity, specifically lookingat President Trump, since it was
his name that was in thisclause or in this proposed mark,
excuse me.
And they said, okay, firstlooking at the right of privacy.
So does the governmentbasically have any interest in
(10:07):
in protecting the privacy ofPresident Trump?
And they said, you know, basedon him being the president, it's
arguably the least private namein American life was, I believe
, their quote.
And and so they said you know,no, basically there's nothing
there that that would justifythis.
(10:27):
Then they went on to the rightof publicity and at this part
they looked and said, OK, theremight be a government interest
here, where the mark involvescopying or misappropriating from
an existing mark and preventingthe issuance of marks that
falsely suggest an individual,including the president, have
(10:50):
endorsed a particular product orservice.
So that starts to lean one way,towards the government interest
.
But then they went back theother way and said looking at
this mark as a whole, there's noplausible claim that anyone
could think that President Trumpwas endorsing this product
based on this trademark.
Speaker 1 (11:11):
Yeah, pretty unlikely .
Speaker 2 (11:12):
He's not going to endorse that.
I think we can all agree onthat.
I think we're safe.
Speaker 1 (11:15):
Yeah, I think we're safe.
I think we can all agree onthat.
I think we're safe.
Speaker 2 (11:16):
Yeah, I think we're safe, Then the federal circuit
basically as a whole said thegovernment does not have
sufficient interest to restrictthis particular speech and
therefore it wasunconstitutional.
Speaker 1 (11:29):
Well, I think we stumbled onto something we can
all agree on.
Trump's name is well known.
We found neutral ground.
We did Good for us.
The other thing that was justoccurring to me was I guess it
was strictly, they were talkingabout him as president, not his
Trump organization, I guess.
Right, right, because that'scertainly a brand everywhere.
Speaker 2 (11:45):
Yeah, in this context that I was just talking about,
they were, although throughoutthe procedural history of this
matter, there is some discussionabout the fact that he has
Trump registered with multiplethings, including shirts and
hats and clothing type items.
Speaker 1 (12:03):
Everything steaks hotels, casinos.
We have a lot of them aroundhere.
My wife used to work for him inthe 80s or not for him worked
at the Trump Plaza Casino Hotel.
So we have we still have towelsand letter openers Since, since
we started talking about thiscase, the Supreme Court ruled.
Speaker 2 (12:21):
Yes.
Speaker 1 (12:22):
So can you tell us about that?
Speaker 2 (12:23):
So a couple of things .
So one thing I want to kind ofstart with is the framework that
the Supreme Court started within their opinion and sort of
what colored a lot of theanalysis, at least in the
majority's opinion.
I'm not sure that they laid theframework in the way that I
would have liked to see it beput through, and what I mean by
that is they flipped to me thepresumptions about trademarks.
(12:48):
So in the Lanham Act theopening line is like no
trademark shall be refusedregistration unless right, I
abbreviated a little bit there,but that starts to me with a
default Okay, we're gonna allowit to register unless you hit
these exceptions, and one ofthose exceptions being the names
clause.
But the Supreme Court's opinionphrases it as you can get a
(13:14):
federal registration only formarks that meet certain criteria
.
So to me that slight change inwording really indicated how
they're going to talk about thisand the perspective of this,
because they're starting fromthe opposite perspective.
The second thing that they didthat I don't necessarily agree
(13:34):
with is they said trademarkrights are primarily a matter of
state law.
I also don't believe that'strue.
I think maybe a long, long timeago it was, but the reality is,
with the Lanham Act that's beenaround for, I think, almost 60
years at this point, and the wayinterstate commerce is today
and has been now for a long time, it's absolutely a matter that
(13:58):
goes across the entire UnitedStates.
So I thought, by those twoaspects that they kind of folded
into their framing of thebackground and the analysis they
were going to do, I thoughtwere a little bit off.
I don't know if necessarilygetting those right would have
changed their outcome, but forme I viewed it as an indication
(14:20):
that they maybe weren't quiteunderstanding the full scope of
what was at play here.
Speaker 1 (14:26):
For those who are unfamiliar what is the appellate
path trademark cases take fromdistrict courts?
Speaker 2 (14:32):
If it's a trademark matter that comes through the
TTAB, like this one did, it cango up through the federal
circuit.
If it was, for example, here inthe Northern District of
Illinois, it would get appealedup to the Seventh Circuit.
Unless it was also involving,for example, a patent matter,
Then it would go with.
It would stay with the patentmatter to the federal circuit.
Speaker 1 (14:51):
How the majority came at the thing sounds counter to
how you believe that, or you saythat the law is written, you
say it's introduced with.
You know, no trademark shall berefused, and so that was one
thing, and the other thing waswhether it's a state controlled
area of law or federal, and theyseem to.
(15:13):
They didn't contact you, Iguess, in advance.
Speaker 2 (15:16):
No, they sure didn't no.
Speaker 1 (15:19):
Maybe they should have.
We can put that in.
Speaker 2 (15:21):
Well, ultimately, though, as I said, I don't know
if it would have impacted theresults, but I thought it was
worth mentioning.
Speaker 1 (15:31):
What's your opinion of the Supreme Court ruling?
Is it consistent with precedent?
Speaker 2 (15:35):
So I don't necessarily think it's
consistent with precedent, but Ido think they reach the right
results in this instance.
Speaker 1 (15:41):
All right.
So, as has been happeningfrequently these days, the
justices are almost having apublic conversation about their
decisions.
So Justice Thomas made thepoint of saying how this is a
narrow decision.
They don't set forth acomprehensive framework for
judging whether allcontent-based but
(16:02):
viewpoint-neutral trademarkrestrictions are constitutional.
Nor do we suggest that anequivalent history and tradition
is required to uphold everycontent-based trademark
restriction.
But in the end, he said, infuture cases we can't address
the distinct question whether aviewpoint-neutral, content-based
trademark restriction isconstitutional without such a
(16:23):
historical pedigree.
Justice Thomas did addresscriticism from Justice Sotomayor
and Justice Barrett.
Like you, they concurred withthe outcome that the Names
Clause does not violate theFirst Amendment, but not the
path they took to get there.
So what did Sotomayor andBarrett say?
Speaker 2 (16:43):
So they both gave some pause to this notion of
relying purely on history forhow to apply it in this
situation, and then found otherways to reach the same
conclusion, using moretraditional methods, like,
whether you know, looking atdifferent levels of scrutiny or
(17:04):
looking at other contexts inwhich federal laws have been
challenged that may arguablyhave similar characteristics to
this one.
Speaker 1 (17:13):
So what impact do you think this decision is going to
have, and on whom?
Speaker 2 (17:17):
I think the main impact on this is going to be on
brand owners, and I think thatthe Supreme Court didn't
necessarily appreciate, at leastin the written part of their
opinion, the practicalimplications of what having a
federal trademark registrationdoes for a brand owner.
They mentioned a few things.
(17:37):
Like you know, you get a legalpresumption of ownership and you
get nationwide constructivenotice to others, but the things
that they didn't mention arehow those registrations are used
in commerce.
So, for example, in the you knowthe internet world that we live
in, there's a lot of shoppingonline.
If you're trying to enforceyour mark in multiple
(17:58):
third-party marketplaces, youneed to have a registration to
establish your rights, to followthe procedures that those
marketplaces may have to stopcounterfeiters and infringers.
And there's other ways that youcan use your registration, sort
of quicker, faster and moreeffectively than you would be
able to do at common law.
(18:18):
And while common law rights areabsolutely important and can be
the basis of many things, Idon't mean to pretend that
they're not worthwhile.
They absolutely are.
I thought that the courtglossed over the impact on
someone that is trying to get afederal registration, can't get
it and is going to go to themarketplace.
(18:38):
It's going to be harder forthem to stop others than it
would be if they had a federalregistration, so I think that's
who's going to be impacted themost.
Speaker 1 (18:46):
Maybe a subject for another day is I'm always
interested in how IP isprotected globally.
Speaker 2 (18:57):
Yes, Well, one thing that a federal registration.
You can use it as a basis forregistration and multiple other
or an application orregistration, I should say, in
other jurisdictions, and youcan't usually do that with
common law.
So that's another benefitactually.
Speaker 1 (19:06):
I stumbled into a good question.
You sure did.
That'll be the first, maybe thelast today.
So what best practices wouldyou well for brands or anyone
else, what guidance or bestpractices would you like to
share?
Speaker 2 (19:19):
I think that generally, if your mark is
eligible for a federalregistration, you should
generally get it.
If you're gonna be using themark over state lines, so in
interstate commerce or online,the registration is a very
powerful tool.
Speaker 1 (19:34):
So go for it, go for it.
Well, good, we're all aboutbrands today, so let's go to the
next one Penn State versusvintage brands.
Now, is this still pending?
Speaker 2 (19:48):
It is yes Okay.
Speaker 1 (19:50):
In Pennsylvania in federal court in Pennsylvania.
It's going to havewide-reaching implications for
retailers and brand owners.
You anticipate wide-reachingimplications for retailers and
brand owners.
You anticipate vintage brandsuses Penn State's registered
trademarks on t-shirts, hats andother goods.
See the law of t-shirts andhats.
Seems to be it's everywhere.
Speaker 3 (20:09):
It is, it really is.
Speaker 1 (20:11):
My t-shirt.
I never have anything on mine.
They use their trademarks onhats and other things and it
argues that the use oftrademarks constitutes a
defensible ornamental use.
This is vintage brands argument, so what does that mean?
Speaker 2 (20:28):
So ornamental use basically means that it's a
decoration, it's a feature or adesign that may be part of, for
example, a t-shirt, but it's notnecessarily a source indicator,
right?
So often you might think ofornamental use as what you see
on the front of a t-shirt, likethe design and the source
indicators, the tag of who soldit to you.
Speaker 1 (20:51):
All right.
What's an example then, do you?
Have a picture of a tiger, alion.
Speaker 2 (20:56):
Sure, as long as it's not a Nittany Lion.
Speaker 1 (20:59):
Because they have a very specific look.
Speaker 2 (21:02):
Yes, so I could give you an example from this case.
Speaker 1 (21:05):
If that would be helpful.
Speaker 2 (21:07):
Sure.
So vintage brands had sales ontheir website, many t-shirts for
various colleges, collegeuniversity sports you know
things that people want to havebe fans of, for a general way to
describe it, and on theirwebsite you can buy a shirt that
(21:30):
has a picture, a word andsometimes an actual, like
trademarked logo of theuniversity or team that they
want to show their support for.
And so in this case the PennState case the vintage brand
company was selling historicalPenn State images.
(21:53):
I believe that they bought oldstuff, scanned what the image
used to look like and then putthat on the T-shirts.
Some of those designs PennState has registered at the
USPTO and has for a long time.
Some of them are not registered.
Speaker 1 (22:11):
This is a side question for me.
Do trademarks expire?
Speaker 2 (22:13):
They do, but you can renew them indefinitely.
So every 10 years you can renewthem, and as long as you are
using them in commerce, you cankeep protecting them.
Speaker 1 (22:22):
And then the court ruled on dueling motions for
summary judgment and it's goingto head to trial right.
Speaker 2 (22:29):
They were denied and it's set for trial in November.
Speaker 1 (22:32):
currently, how will this impact retailers and brand
owners, I guess, depending onwhich way it goes, of course?
Speaker 2 (22:38):
Yes, impact retailers and brand owners, I guess,
depending on which way it goes,of course, yes.
So right now, the licensingindustry is watching this case
closely, particularly those thatwork with teams and
universities, because fans loveto buy gear for their favorite
teams.
Right and under the currentmodel, the university, the team,
(22:58):
whoever the trademark owner is,has a very lucrative usually
licensing deal with theseentities that make the t-shirts,
that make the hats and theother things, and if this case
goes in vintage brands' favor,then it will potentially create
(23:19):
a windfall of people to creategear for their favorite teams
without having to pay licensingcosts for it.
Speaker 1 (23:27):
It must be lucrative, like you said, because people
are bananas for their teams.
Speaker 2 (23:31):
Exactly yes.
Speaker 1 (23:35):
Depending on the outcome, what would be the
impact on counterfeiting claims?
Speaker 2 (23:39):
So it would be a lot harder to enforce your mark
against those that are notauthorized to create merchandise
on your behalf, because if theyare able to do what Vintage
Brand did, then they too wouldbe able to continue to sell
their things.
There would have to be someother factor that you would be
relying on to enforce your markagainst them, and that's also
(24:02):
kind of where the distinctioncomes in between source
indicator and ornamental use.
Ornamental use just might meanhey, I'm a fan of this team,
that's all I'm trying to sayhere, whereas source indicator
may be.
I'm a fan, and I have purchasedthis from someone that is
affiliated with and endorsed byor sponsored by the university.
Speaker 1 (24:23):
How do you think it's going to go?
Do you do the predictions?
Speaker 2 (24:26):
I may not be right, but I think Penn State is
probably going to be successfulin this one.
Speaker 1 (24:31):
And that's because why.
Speaker 2 (24:33):
I think that there is , to use the Supreme Court's
reasoning there's a lot ofhistory.
If this case goes against PennState, I think it will
significantly harm brand ownersbecause it will make it much
harder for them to enforce theirmark against others and receive
licensing royalties for theirbrands.
Speaker 1 (24:54):
So do you have any guidance at this point for
retailers and brand owners?
Speaker 2 (24:58):
So, yeah, if you're the retailer and you want to be
like a vintage brand, I thinkinstead, whatever you're going
to make, you need to make surethat you are clearly not so
close to what the university orteam has that you would be
mistaken for being affiliatedwith them, or get the license,
and then you can be covered forwhat you need to do.
Speaker 1 (25:18):
We'll come back to you when they come back with a
verdict.
Need to do.
We'll come back to you whenthey come back with a verdict.
All right, well, moving on toanother brand issue.
So, kelly, we're going to goover to you.
We've got a brand versus socialmedia influencers and you were
(25:41):
recently quoted in a Wiredarticle.
That makes you cool so fartoday.
I want to be quoted in Wiredsomeday, apparently.
So you commented on disputebetween an Instagram influencer
named Lauren Holyfield.
She lost her account after now.
I don't even know how to saythis.
After a champagne brand, is itVeuve Clicquot?
No, I can't say it.
Speaker 3 (25:58):
How do you say it Veuve Clicquot?
Speaker 1 (26:01):
Oh my God, those French Veuve, kiklo, kiklo,
kikli-ko.
Okay, fine, they filed atrademark infringement claim on
three of the influencers' videosand this was a big deal for her
, because she was generating alot of six-figure income
marketing products to more than100,000 followers, so that's
(26:21):
good for her.
When she found out that she wasbanned, that income was shut
down.
So what can you tell me aboutthe facts of the case?
You know, was she warned?
What was she doing, decoratingbottles?
What can you tell us?
Speaker 3 (26:35):
It was not necessarily a trademark
infringement claim that we wouldtraditionally think of in court
.
This was a social mediatakedown request that was
initiated by the brand owner.
I haven't seen the actualvideos because, of course, they
have since been removed, but myunderstanding is that she was
(26:56):
perhaps doing some decoupage orsome sort of to borrow a term
from Tiffany's discussionornamental decorations to a Vov
Kiko champagne bottle and what Iwould assume was the case.
Again, I haven't actually seenthe bottles that she decorated,
but my assumption is that thedistinctive labeling and color
(27:19):
the yellow-orange color thatVogue Kiko is known for and
actually has a registeredtrademark on just the color
itself in connection withchampagne was still visible on
the bottles themselves.
So she posted some of thesevideos to her Instagram account.
Haven't seen the videosthemselves.
(27:40):
When I did do a quick internetsearch for her name plus Vogue,
there seems to be a sort of aghost lingering hyperlink out
there to perhaps one of herprevious Instagram posts where
some of the content shows upthat might have been from the
original, one of the originalcaptions from the posts that
(28:02):
indicates if you commentchampagne on my post, I will
send you a direct message withthe information on the materials
that I used to decorate thebottles.
In a nutshell, that sounds likewhat sort of initially gave
rise to the takedown request,and from public statements that
(28:23):
she has made, it sounds like shewas forewarned about the
takedown request, but I guessthe hitch for her was that it
went to sort of a secondaryemail account that she wasn't
monitoring necessarily, so atthe time that her account was
deactivated it was technically asurprise to her.
It sounds like the old.
Speaker 1 (28:44):
I didn't check that email account.
Speaker 3 (28:46):
Right.
Speaker 1 (28:48):
I would have gone with spam, but that's okay.
So was she able to rectify thesituation?
Speaker 3 (28:53):
So she was.
It sounds like she hired athird-party marketing consultant
that helped her get her accountback online.
Speaker 1 (29:03):
Did she have additional repercussions as a
result of this?
Because I think I saw it in thearticle where you're quoted
impact on her future work incomefrom advertisers.
Speaker 3 (29:12):
So I'm not sure if there was any actual impact on
future work once her account wasback online.
I think in the particular Wiredarticle she did sort of have
some questions as to whether itwould impact things, and I think
some of it was sort ofhypothesizing how long her
account would be down for and,of course, if it had been a
(29:34):
permanent removal of her account, how that would impact her
earnings.
Speaker 1 (29:39):
But what questions does this raise in your mind
about copyright, ip, trademarkprotection as influencer,
marketing increases.
Speaker 3 (29:47):
Yeah.
So this particular instance, Ithink it raises what I call a
triple whammy of issues.
First of all, the brand that'sat issue is a luxury brand and
it is, I would say, arguably oneof the iconic champagne brands
where protection of that brandthat has already garnered and
(30:09):
established so much value in andof itself, of course, a brand
owner like that is going to beparticularly incentivized to be
protecting how that brand isused and by whom, and if such
use is likely to confuseconsumers into believing that
there is some sort ofsponsorship or affiliation or
(30:29):
approval with a third-party useof their brand.
Not only that, but it's analcohol brand, so it's a highly
regulated industry right whichraises its own set of issues.
Alcohol brands have regulationsin terms of what type of
content can be released inconnection with the brand, of
(30:50):
course, the age restrictionsthat apply.
For example, there's certainregulations that you can't have
advertising that's likely to beappealing to those under 21, of
course.
So there's historical casesabout alcohol brands using
puppies or dogs that might beconsidered appealing to, of
course, children, which is notideal.
Speaker 1 (31:13):
Mickey Mouse throwing down some Pinot Noir.
Speaker 3 (31:16):
Right Probably not ideal.
And then thirdly, of course,it's an influencer.
It's being used by aninfluencer on social media and I
think what we will end upseeing likely is more regulation
.
I think it's still an area ofdevelopment where, so far, we
have seen a number of changesand requirements, of course,
(31:38):
where influencers who areposting content online, if it is
sponsored, they have to usesomething like hashtag ad at the
beginning of the posts andthings like that.
In this particular instance, ofcourse, ms Holifield's position
was that it, of course, was nota sponsored post.
She wasn't selling anything,but at the end of the day, she
(31:59):
is still a social mediainfluencer and whether or not
she was actually sellingsomething as a result of that
individual post, the entirepurpose and character of her
social media presence isultimately to be influencing
consumers to be making certainpurchasing decisions and, at the
end of the day, I think Vovkikowas very well within their
(32:21):
rights to submit the takedownrequest.
How does that differ fromreviews?
If I had a wine, I thinkVovkiko was very well within
their rights to submit thetakedown request.
Speaker 1 (32:24):
How does that differ from reviews?
If I had a wine I don't knowGod forbid I was a wine
influencer that would be widelyused, but you're on there to say
here's the best one of the year, this one is the worst.
I mean, how does it differ?
Speaker 3 (32:40):
There's an overlap there, certainly.
Still, if you are posting fromquote unquote a wine
influencer's account, there'ssomething called nominative fair
use, which is you canaccurately refer to a brand by
its name.
That's not consideredinfringement.
But if you are an influencerposting certain content, I think
(33:02):
the underlying ripple effectthere and implication for
consumers that of questions asto at what point does an
influencer need to actuallydisclose.
(33:27):
I received this free bottle ofwine from this brand owner.
Are they required to disclose?
This content is only for 21 andover, things like that, and so
that's why I think we will endup seeing some more regulation
in this space.
Speaker 1 (33:42):
Okay, when you use the word ripple, was that a
product placement?
Speaker 3 (33:45):
that, and so that's why I think we will end up
seeing some more regulation inthis space when you use the word
Ripple was that a productplacement?
Speaker 1 (33:51):
No, I actually don't.
I can't think of a brand namedRipple.
Oh, that is so good to hear,because at my age Ripple I
laughed when you said Ripplebecause that was a really cheap
wine that teenagers would drinkand it was horrible.
Speaker 3 (34:04):
No way, that's great.
Speaker 1 (34:05):
The fact that she was doing decoupage, which is also
French, that didn't influencethem into saying nevermind, say
I want to launch, I want to be awine influencer.
What would you, what advicewould you give?
Speaker 3 (34:19):
I would say that permission is key If you are
going to be working in theinfluencer space, researching
the regulations, making sure youhave the correct guidance,
you're adhering to any of thosedisclaimers in terms of whether
it is an advertisement, whetherit's been gifted, whatever the
regulations are currently whatthey may end up being Doing.
(34:42):
That research before postingthe content I think is paramount
, especially the regulations arecurrently what they may end up
being doing.
That research before postingthe content I think is paramount
, especially if you are going tobe prominently featuring a
third-party brand in yourcontent.
Speaker 1 (34:53):
Should they call you?
Speaker 3 (34:55):
Absolutely.
Speaker 1 (34:56):
This is not attorney advertising nor does this
establish an attorney-clientrelationship.
Well, what about the brandsthemselves?
I guess it must be that bigbrands must have teams of people
out there just doing nothingbut scouring for misuse.
Speaker 3 (35:10):
I'm sure it certainly depends on the brand.
Some brands do employ thirdparties that help them with
reviewing some of the contentthat is out there.
I think sort of one of thetakeaways from this particular
dispute that the influencer hadthat was also outlined in the
Wired article is that probablycommunication is key.
(35:31):
I understand the influencer hadsome sort of source of
frustration with the socialmedia platform trying to get her
account back online.
Every platform is different.
For example, youtube has sortof a three strikes and you're
out policy.
If they receive three copyrightcomplaints against your YouTube
channel for content that you'renot permitted to use, they'll
(35:55):
shut down your YouTube channel.
You need to be aware, of course, of the regulations, the rules
obtaining permission, makingsure that you have that
permission before you're postingthe content.
But from the platform'sperspective, ensuring that
you're communicating that to theusers of your platform clearly
and having that two-waycommunication in order to
(36:17):
rectify situations, that ifthere is something that can be
worked out amicably, sometimesthat's the best resolution you
can ask for.
Speaker 1 (36:25):
Always Okay, guys.
Well, thank you very much.
Great to talk to you, Great tomeet you both.
Speaker 2 (36:29):
You as well, thank you.
Speaker 1 (36:31):
That concludes this episode of the Emerging
Litigation Podcast, aco-production of HB Litigation,
critical Legal Content, vlexFast Case and our friends at
Lostry Media.
I'm Tom Hagee, your host, whichwould explain why I'm talking.
Please feel free to reach outto me if you have ideas for a
future episode and don'thesitate to share this with
(36:53):
clients, colleagues, friends,animals you may have left at
home, and if you feel so moved,please give us a rating.
Those always help.
Thank you for listening.
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