United States Supreme Court Finds That A Generic Term Coupled with A Top-Level Domain Name May Be Registered as Trademarks If They Have Secondary Meaning
On June 30, 2020, the United States Supreme Court issued its long-awaited decision in United States Patent and Trademark Office v. Booking.com, B.V., (“Booking.com”) which addressed the issue of whether a generic word coupled with a top-level domain name such as “.com” could qualify for trademark protection. The Booking.com decision can be found here: https://www.supremecourt.gov/opinions/19pdf/19-46_8n59.pdf.
It had long been the position of the United States Patent and Trademark Office (PTO) that a generic term like “booking” remained generic and thus not eligible for trademark protection even if combined with a top-level domain name. Such claimed trademarks are referred to as “generic.com” trademarks.
In its decision in Booking.com, the Supreme Court, in an 8-1 decision, rejected the bright line rule advocated by the PTO and held that a generic.com term may function as a trademark if such generic.com term (like the booking.com trademark) has acquired secondary meaning.
Critically, not all generic.com terms will qualify as trademarks. On the contrary, only those terms that have acquired distinctiveness and therefore have become source indicators in the minds of consumers will be eligible for trademark protection. The Supreme Court was clear that generic.com terms cannot be inherently distinctive but can acquire distinctiveness with consumers.
Establishing the acquired distinctiveness and secondary meaning necessary for registration may come from consumer surveys, but they are not the only means. Others include dictionaries, usage by consumers and competitors, and any other source of evidence bearing on how consumers perceive a term’s meaning.
It will be interesting to see if the Booking.com decision leads to an onslaught of applications seeking trademark registration for alleged generic.com trademarks. It also will be interesting to see how demanding the PTO will be as to the evidence necessary to prove acquired distinctiveness and secondary meaning. And we will soon see how the courts will resolve competing claims to similar claimed generic.com trademarks – think beer.com and beer.com.
Photographers and Visual Artists Beware! You May Lose Exclusive Control Of Your Copyrighted Work By Posting on Social Media
Many photographers and others involved in the visual arts often post their works on Instagram and other social media sites as a way to advertise and promote themselves, showcase their works, and try to license or sell the posted works. In most cases, the posted works are protected by copyright in favor of the author.
Among the rights granted to to the author of a copyrighted work are the exclusive right to control the reproduction and copying of the work, the exclusive right to control the distribution of the work (including to license the work), and the exclusive right to control the display of the copyrighted work. In a recent case from a federal court in New York that sent shockwaves through the copyright world, the court held that a third party who “embedded” a link to a photograph posted on the public portion of Instagram did not infringe the copyright owner’s exclusive rights because the terms and conditions for the use of Instagram grant Instagram the right to sublicense works posted on the public portion of Instagram.
The case in question is Sinclair v. Ziff Davis, LLC, Case No. 18-CV-790 (KMW), decided by Judge Kimba Wood of the United States District Court for the Southern District of New York on April 13, 2020, often referred to as the “Mashable” case because the website that was alleged to have infringed the plaintiff’s copyright was the Mashable site.
In the Mashable case, the plaintiff was a professional photographer who owned the exclusive copyright in a photograph (the “Photograph”) titled “Child, Bride, Mother/Child Marriage in Guatemala.” The plaintiff posted a copy of the Photograph to her Instagram account, which was a “public” account, viewable by anyone.
Mashable offered the plaintiff $50.00 to license the Photograph for use in connection with an article about female photographers, which the plaintiff rejected. Mashable nevertheless featured the Photograph in its article even though the plaintiff did not give Mashable permission or consent to use the Photograph, and in fact rejected Mashable’s attempt to obtain a license.
Mashable used a technical process called “embedding” to incorporate the Photograph into its article. Embedding allows a website coder to incorporate content, such as an image, that is located on a third-party’s server, into the coder’s website. When an individual visits a website that includes an “embed code,” the user’s internet browser is directed to retrieve the embedded content from the third-party server and display it on the website. As a result of this process, the user sees the embedded content
on the website, even though the content is actually hosted on a third-party’s server, rather than on the server that hosts the website.
Judge Wood held that Mashable did not infringe the plaintiff’s copyright because the plaintiff granted Instagram the right to sublicense the Photograph when the plaintiff created her Instagram account and agreed to Instagram’s terms and conditions, and Instagram validly exercised that right by granting Mashable a sublicense to display the Photograph.
As Judge Wood explained her decision, the terms and conditions for use of the public portion of the Instagram site state that “by posting content to Instagram, the user “grant[s] to Instagram a nonexclusive, fully paid and royalty-free, transferable, sub-licensable, worldwide license to the Content
that you post.” Based on this language, Judge Wood found that, because Plaintiff uploaded the Photograph to Instagram and designated it as
“public,” she agreed to allow Mashable, as Instagram’s sublicensee, to embed the Photograph in its website so there was no copyright infringement.
There are a number of important take-aways from the Mashable case:
1. Although the Mashable case involved the Instagram terms and conditions, virtually all social media sites — like Twitter, Facebook, etc. — have the same or similar terms and conditions which allow sublicensing, so the Mashable case may be extended to infringement claims based on works posted on other social media sites.
2. The Mashable case is limited to situations where the accused infringer displayed the copyrighted work by embedding the work on its website. Traditional copyright infringement analysis still will apply in those cases where there is actual copying – in other words, where the accused infringer publishes a digital copy of a copyrighted work on its website rather than just using embedding.
3. It is not clear how far the Mashable case will extend. The Mashable case is a trial court decision that has no binding effect on any other court in the United States. There have not been any cases outside the Southern District of New York that have addressed the same issue as the Mashable case. In another recent decision from the Southern District of New York on June 1, 2020 that also involved embedding a copyrighted photograph from Instagram (McGucken v. Newsweek, LLC, Case No. 19-CIV-9617 (KPF)), Judge Katherine Polk Failla confirmed the Mashable holding but refused to dismiss her case because she found there was no evidence of a sublicense between Instagram and Newsweek. The McGucken decision is interesting and curious because the facts were virtually the same as the Mashable case.
4. Finally, and perhaps most importantly, Instagram itself has expressly stated and made clear that users of its embedding feature don’t get licenses from Instagram to display copyrighted photographs of others.
So what does this all mean? For photographs and visual artists, the safest way to protect their copyrights is to switch their Instagram and other social media accounts to private until we have more clarity about the reach of the Mashable decision. But of course, such a switch will prevent users on the Instagram platform from seeing their content, which can be a career liability for professionals. Unfortunately, right now, Instagram does not offer an option to make content public inside the Instagram platform while disabling embedding on external websites.
For media companies and those who want to display photographs and other works posted by others on Instagram and other social media sites, the decision is clear: do not rely on the Mashable decision to shield you from liability for copyright infringement even if you intend to just embed the work. Instead, get permission from the artist to display his or her work and do not display if the artist says no.
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