December 29, 2010 | By corynne mcsherry

2010 Trend Watch Update: Fair Use of Trademarks

At the beginning of this year EFF identified a dozen important trends in law, technology and business that we thought would play a significant role in shaping digital rights in 2010, with a promise to revisit our predictions at the end of the year. Now, as 2010 comes to a close, we're going through each of our predictions one by one to see how accurate we were in our trend-spotting. Today, we're looking back on Trend #11, fair use of trademarks, where we predicted the following:

Parody and mockery have long been favorite tools for online political expression and activism. But the powerful entities being mocked sometimes lack a sense of humor about the situation. Increasingly, they're turning to trademark law to badger would-be jokers into silence.

Of course, abuse of copyright law, which governs ownership of content, is nothing new. But until recently, we haven't seen as much abuse of trademark law, which governs ownership of names and logos. Fair Use principles, which allow creative re-use of intellectual property, apply to trademarks just as they apply to copyrights. In either case, IP bullies are just as happy to ignore those principles and make bogus legal threats.

Recently, trademark threats have been levied against activists like The Yes Men, who mocked the U.S. Chamber of Commerce. They've targeted NYTimes.se, which mocked The New York Times and corporations like DeBeers. They've targeted The South Butt, a clothing line which mocks The North Face. And, only a few days ago, they targeted environmental activist Brian DeSmet for mocking Peabody Energy.

In 2010, expect to see plenty of similar bogus threats. Some of them will lead to litigation, and those battles could in turn lead to important new legal precedents with serious implications for free expression online.

Our success rate was mixed on this one: Improper trademark threats continued apace but, happily, not at the level we had feared. One particularly egregious threat involved legal threats from Facebook against a parody site, Lamebook. Lamebook filed a lawsuit asking a court to declare that the site is protected by fair use and the First Amendment.

We're watching this one closely, as it may set important precedent for political fair use. And the Chamber of Commerce continue to pursue their trumped-up trademark claims against the Yes Men, in retaliation for a Fall 2009 press conference in which the activists put out a press release and held a spoof news conference on Monday, claiming that the Chamber of Commerce had reversed its position and would stop lobbying against a climate bill currently in the Senate. We're looking forward to a court decision affirming the legality of the Yes Men's actions in early 2011.

Activists and parodists have refused to be silenced, however. In amasterful bit of "identity correction," for example, a group of activists posed as French government officials to announce that France would pay Haiti over $22 billion as reparations for extorting an equivalent sum from the former colony in exchange for its independence in the nineteenth century. The French government was not amused, though its response took the form of a threat of criminal prosecution rather than a trademark claim.

We also continue to monitor companies who attempt to get trademarks for common English words and then use those trademarks to silence others. For example, Facebook is currently trying to trademark the term "face," and is very close to having that mark granted. Happily, it looks like the mark will be opposed.

Finally, in a classic David and Goliath battle, a lawyer in Austin who founded a website called EntrepreneurOlogy has sued the publisher of Entrepreneur Magazine after the magazine demanded that the Austin attorney cease all use of the word Entrepreneur.


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