Intellectual property (IP) protection is necessary. But with rights comes responsibility; a responsibility to not misuse such rights. Automattic, the web publishing platform most famous for Wordpress, uploaded a ‘Hall of Shame’ list after getting tired of its users being harassed by copyright and trademark infringement notices. Wordpress is a free blogging tool and content management system. As with any site uploading content there are bound to be intellectual property issues from time to time but not all have merit.
At Traklight we are all about protecting intellectual property, but understanding when you have an actual cause of action is equally important as needless litigation wastes time and effort, while giving you a bad reputation in the market (assuming you do not have a legitimate claim). Creation of IP rights is to protect against exploitation, not curb the freedom of speech. Among the various people/ companies on Automattic’s list is Janet Jackson. Her lawyers attempted to remove / control all references of her on Wordpress. One of the claims included trademark infringement for using her name in the following blog “Dinner Party Conversation: What would your WWE Smackdown name be?”:
“Picture Sacha Baron Cohen in, what else? his movie The Dictator. Elaborate General’s outfit, hat, etc. He walks in flanked by half a dozen sexy female soldiers inspired by the Janet Jackson Rhythm Nation video.”
Using the name and likeness of another is a legal issue in itself without even considering trademark infringement if it satisfies three conditions. Namely;
- Use of a protected attribute: In this case, Janet Jackson is a famous recording artist and her image and name are protectable attributes.
- No consent: Obviously the issue arose because the author did not take permission to use her name in his blog.
- For an exploitative purpose: Now this is the important part, for an action under this claim, the author must have attempted to exploit the attribute. Although states differ on the exact meaning of exploitative purposes it is generally understood to mean advertising or promoting particular goods and services, or using the protected attribute for commercial purposes.
I mention this to illustrate it is harder to win a case based on use of name and likeness alone, and this is the reason why most celebrities protect their brand by registering trademarks. That being said, you need not worry about infringing a trademark by merely mentioning a celebrity because fair use is a recognized defense of not only copyright infringement but trademark infringement as well. Using a trademark qualifies as nominative fair use if you use the name to make a point, report a fact, comment on the mark itself or use it for the purpose of parody.
Wordpress rejected Janet’s lawyers’ complaints on the basis of fair use and sent her a witty response incorporating her song names to help promote her as consolation. Well done people!
“It seems like you believe the use of the trademark “Janet Jackson” is reserved all for you, but we were hoping you’d be open to some feedback because your attempt to control every use of the mark is pretty nasty. If you read up on nominative use, you’ll discover that it doesn’t really matter that “Janet Jackson” is used on this site. If you believe there are any other alleged infringements, would you mind submitting a notice again via our trademark form?
So excited to work with you going forward.”
For more information on Trademark do’s and don’ts, check out Traklight’s Resources for small businesses.
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