Ninth Circuit Rules En Banc That Actors Do Not Have Protectable Interests In Their Individual Film Performances
On January 7, 2015, we posted about the case of Garcia v. Google, Inc., which was a case then-pending in the Ninth Circuit Court of Appeals that raised the issue whether an actor has a protectable interest in his or her individual film performance. (See Here for prior post: https://affinitylaw.wordpress.com/2015/01/07/do-actors-have-protectable-copyright-interests-in-their-own-individual-film-performances/). While the case arose in the unique context of an actor’s performance in what she believed was a regular film being re-cut into an anti-Islamic propaganda film, the case nevertheless had important implications in the copyright field and for the entertainment and film industries.
On May 18, 2015, an en banc panel of the Ninth Circuit issued its decision in the Garcia case and (as expected by most copyright lawyers), the Ninth Circuit held that actors do not enjoy a copyright interest in their individual performances – primarily because they do not fix their “acting performance in a tangible medium, as required by 17 U.S.C. § 101.” Thus, the actor cannot be the author or owner of the work since the fixation is done by the film crew, not the performers.
The Ninth Circuit also rejected the arguments that actors in a film enjoy privacy right protections, any “right to be forgotten,” or any protection from emotional distress arising from copyright law.
The Ninth Circuit en banc decision in Garcia can be found here: http://cdn.ca9.uscourts.gov/datastore/opinions/2015/05/18/12-57302.pdf
The Washington Redskins’ ongoing battle to try to preserve its’ “Redskins” trademark was dealt a serious blow, and Washington appears to be at grave risk of losing its trademark rights in the iconic team name, because of a federal court decision issued today.
Several years ago, a Native American named Amanda Blackhorse commenced an administrative proceeding with the litigation branch of the United States Patent and Trademark Office called the Trademark Trial and Appeal Board (TTAB), by which Ms. Blackhorse challenged the Redskins trademark. In June 2014, the TTAB ruling in favor of Ms. Blackhorse and cancelled six Redskins trademarks owned by the Washington team, finding that Washington could not have trademark rights in the “Redskins” name because such name was offensive and disparaging.
Washington appealed the TTAB ruling. On July 8, 2015, a federal district judge in Virgina upheld the TTAB decision. An article discussing the district judge’s decision can be found here: http://talkingpointsmemo.com/livewire/washington-redskins-mascot-trademarks-cancelled
Losing trademark rights in the “Redskins” name would be a huge problem for the Washington team. According to the Washington Post, Washington’s lawyers assessed the team’s value at $2.4 billion in August 2014, with $214 million tied to brand management and the Redskins brand. So an appeal from the district judge’s decision is likely if not inevitable. It should be noted that Washington lost trademark rights in the “Redskins” name in the Trademark Office in 1999, but was able to regain the rights through court litigation. So even though Washington is behind, the game is only in the third quarter and there still is a lot of litigation left – stay tuned!
Those readers who use social media will be familiar with “hashtags” – words or short phrases preceded by the # symbol that are used to identify and give context to social media posts. Various social media services (like Twitter, Instagram and Pinterest) enable users to use a hashtag to search for and group posts about a specific topic, so hashtags perform an important function in the social media world as well as helping to make social media posts interesting and fun.
A number of companies have recently sought to register as trademarks with the United States Patent and Trademark Office hashtags used to identify and describe their goods and/or services. As a general proposition, there should be no reason why a hashtag cannot serve as a trademark so long as the hashtag satisfies the requirements for trademark protection – primarily, the hashtag must not be generic and must serve as a source indicator to identify the source of a particular product or service. Keep in mind, however, that the # symbol used in front of a phrase to signify the phrase as a hashtag has no trademark significance – the phrase incorporated into the hashtag claimed to be a trademark must stand on its own as a protectable trademark. For example, one could not obtain trademark protection for the phrase “sandiegofood” simple by converting the phrase to the hashtag “#sandiegofood” because the underlying phrase is generic.
While a hashtag likely can function as a trademark in the appropriate case, the question remains about the value and practicality of registering a hashtag as a trademark. The owner of the hashtag trademark likely could prevent competitors from using its hashtag trademark to promote the competitor’s goods and services under a traditional trademark infringement analysis. However, the essence of hashtags is to facilitate the collaborative sharing of information on social media. Consequently, the owner of a hashtag trademark likely could not prevent social media users from using the hashtag in social media discussions even if the hashtag is a registered trademark.
As probably is apparent, there is significant gray area about how hashtags can function as trademarks and what will and will not be acceptable use of the hashtag trademark. It will be interesting to see how the law develops in this interesting and important area.