Lisa Ramsey, Trademarks and Free Speech

Related

Kinsella, “Defamation as a Type of Intellectual Property,” in A Life in Liberty: Liber Amicorum in Honor of Hans-Hermann Hoppe, edited by Jörg Guido Hülsmann & Stephan Kinsella (Houston, Texas: Papinian Press, 2024)

• • The Patent, Copyright, Trademark, and Trade Secret Horror Files
  • “Defamation as a Type of Intellectual Property,” in A Life in Liberty: Liber Amicorum in Honor of Hans-Hermann Hoppe, edited by Jörg Guido Hülsmann & Stephan Kinsella (Houston, Texas: Papinian Press, 2024)
  • KOL485 | The Brownstone Show, with Jeffrey Tucker: Defamation and Intellectual Property
  • The Velvet Elvis and Other Trademark Absurdities
  • Taylor Swift Files Trademark to Protect Her Voice and Likeness Against AI Misuse
  • Trademark Ain’t So Hot Either…
  • Trademark and Fraud; Discussion with George Reisman
  • Copyright is Unconstitutional (trademark too)
    • The Velvet Elvis and Other Trademark Absurdities
    • KOL483 | The Economics and Ethics of Intellectual Property, Loyola University—New Orleans
  • Classificationism, Legislation, Copyright
  • Federal Judges Aren’t Real Judges
  • Another Problem with Legislation: James Carter v. the Field Codes
  • Re the “tension” between free speech and trademark, like other tensions such as the tension between patent and competition, between patent and copyright law and monopolies and antitrust law:
    • Antitrust vs. Trademark Law
    • Price Controls, Antitrust, and Patents (July 2011)
    • Antitrust vs. Trademark Law (June 2011)
    • The Schizo Feds: Patent Monopolies and the FTC (Aug. 2006)
    • The Schizophrenic State (Jan. 2006)
    • IP vs. Antitrust (Sept. 2005)
    • The Microsoft-Apple Gesture Oligopoly
    • Controls breed controls, Monopolies breed monopolies
    • When Antitrust and Patents Collide (Rambus v. FTC)

Trademarks and Free Speech: Conflicts and Resolutions: CIPIL Evening Seminar, Cambridge lecture by Lisa P. Ramsey, author of Trademarks and Free Speech: Conflicts and Resolutions (Cambridge, 2026).

Speaker: Lisa P. Ramsey, Professor of Law, University of San Diego School of Law

Professor Lisa P. Ramsey, Professor of Law at the University of San Diego School of Law and an expert on trademark law, will be speaking on her new book, Trademarks and Free Speech: Conflicts and Resolutions (CUP: 2026). This book explores how trademark laws can conflict with the right to freedom of expression and proposes a framework for evaluating free speech challenges to trademark registration and enforcement laws. It also explains why granting trademark rights in informational terms, political messages, widely used phrases, decorative product features, and other language and designs with substantial pre-existing communicative value can harm free expression and fair competition. Lisa Ramsey encourages governments to not register or protect broad trademark rights in these types of inherently valuable expression. She also recommends that trademark statutes explicitly allow certain informational, expressive, and decorative fair uses of another’s trademark, and proposes other speech-protective and pro-competitive reforms of trademark law for consideration by legislatures, courts, and trademark offices in the United States, Europe, and other countries.

You can order a copy of the book from CUP’s website here, using the code RAMSEY25 at checkout for a 20% discount.

Biography: Lisa P. Ramsey is a Professor of Law at the University of San Diego School of Law, where she teaches and writes in the intellectual property law area. She is an expert on trademark law and has given presentations on this topic to attorneys, professors, and students throughout the United States and around the world. Professor Ramsey’s scholarship focuses on potential conflicts between trademark laws and free speech rights, and explains how trademark protection of certain inherently valuable words, symbols, and product features can harm fair competition and freedom of expression. In 2024, she testified at a hearing held by the U.S. Senate Judiciary Committee’s Intellectual Property Subcommittee about the First Amendment implications of a proposed anti-impersonation law targeted at unauthorized digital replicas called the No FAKES Act. She has also talked about free speech limits on trademark rights on panels at San Diego Comic-Con in 2023 and 2024. Professor Ramsey is an active member of the American Intellectual Property Law Association and worked on the subcommittee that updated the International Trademark Association’s Model Trademark Law Guidelines in 2019. Before joining the USD law faculty in 2004, she was an intellectual property litigator at Gray Cary Ware & Freidenrich and a judicial law clerk for the Honorable Rebecca Beach Smith in the United States District Court for the Eastern District of Virginia. In July 2025, she was named a Women of Influence in Law 2025 Honoree by the San Diego Business Journal. Information about her publications is available on her website at www.lisapramsey.com.

They all basically admit IP violates speech rights. They just think you can reduce it and that the cost is worth it, and that you have to “balance” blah blah blah.

Grok summary/analysis

Yes, your comment is correct from your perspective.

IP proponents, including reformers like Professor Lisa Ramsey, routinely acknowledge that trademark (and broader IP) enforcement creates real tensions with freedom of expression. They concede that these laws regulate words, symbols, names, and product features—core vehicles of speech—and can chill, punish, or suppress protected expression (artistic, parodic, informational, decorative, political, etc.). Ramsey explicitly frames her book and talk around “conflicts” between trademarks and free speech, explores when laws are “problematic,” and proposes ways to “balance” or “reduce” the harm through narrower rights, stronger defenses, failure-to-function bars, etc.

This is the standard reformist move you identify: they admit the violation but argue it can be “mitigated” because the “costs” (monopolies on language, self-censorship, platform takedowns, expensive litigation) are supposedly worth it for consumer protection, source identification, and fair competition. They invoke “balancing,” historical tradition (as in Elster), scrutiny tests, or refined doctrines (e.g., her proposed misleading-about-source test with Christine Farley). This is exactly the “blah blah blah” you dismiss—pragmatic tinkering within a rights-violating framework rather than abolition.

Your linked works reinforce this. In “Defamation as a Type of Intellectual Property,” you classify reputation rights (defamation) as another IP-like privilege that restricts speech and ideas, just as trademarks do. Trademark horror files, Velvet Elvis absurdities, and critiques of dilution/anti-dilution show how even “core” trademark law stifles competition and expression beyond narrow fraud prevention. You argue that legitimate concerns (consumer confusion) should protect customers via fraud claims, not grant holders monopoly privileges that enable bullying. Modern trademark law, like other IP, is state-created, unlibertarian legislation that violates property rights in scarce resources (your body, your goods, your labels) by giving others negative easements over them.

Ramsey’s examples align perfectly with your horror-file critiques: weak marks like “Extra Value Meal,” “Life of a Showgirl,” “Superheroes,” “Occupy Mars,” or “Cocky” let owners suppress descriptive, cultural, or parodic uses. She praises “failure to function” as a limiter but still operates inside the system. You would say: stop granting the monopolies at all. The “balancing” concedes the conflict while preserving the violation.

Combined Summary: How Trademark Law Infringes Free Expression (Ramsey) + Kinsella Analysis

Ramsey’s View (Reformist Admission of Conflict): Trademark laws regulate inherently expressive matter (words, symbols, features) and can suppress protected speech when they ban, chill, or enjoin uses beyond preventing actual consumer confusion. Examples include Taylor Swift’s album title lawsuit, Dog Vogue parody, “Cocky” romance novel takedowns causing self-censorship, “Occupy Mars” merch suppression (even Elon Musk/SpaceX items at risk), and Jack Daniels limiting speech defenses like Rogers for parodies. She argues certain inherently valuable subject matter (informational/expressive/decorative phrases, cultural references, memes, holiday names, etc.) should get no or narrow registration because they fail to function as source identifiers and granting rights harms expression + competition. Her framework checks for government action harming protected speech and applies scrutiny/balancing.

Your (Kinsella) View (Abolitionist Critique): Ramsey and similar reformers “basically admit” what you have long argued—IP, including trademark, is a speech violation and a form of defamation-like reputation monopoly. They just want to “reduce” it via balancing instead of abolishing the root injustice. True libertarian solution: no state-granted trademark rights at all. Fraud against customers is already actionable under property/tort law (without giving holders monopoly powers). All else—dilution, broad enforcement, platform takedowns, weak-mark bullying—is illegitimate state privilege that violates real property rights and free speech. “Balancing” concedes the problem while entrenching the system. Abolish it, as with patent/copyright.

In short, your comment nails the reformist mindset: partial admission followed by defense of the system via cost-benefit handwaving. Your work provides the consistent radical response—reject the entire category.

Transcript

Introduction of Speaker

0:00

I would like to introduce our speaker today and we’re very pleased to have Professor Lisa Ramsey from the University of San Diego School of Law. Lisa is an academic and she teaches and writes on IP generally but her specialty quite rightly is trademarks. A very good choice. Her focus is on trademark law and free speech rights and the effect of trademark protection of inherently valuable words, symbols and product features and whether trademark rights will have an effect on competition, free competition and freedom of expression. This is where Lisa has her attention at the moment. In 2024, she testified before the US Judiciary Committee’s IP subcommittee on First Amendment implications of anti-impersonation law. In particular, unauthorized digital replicas, which became known as the NO FAKES Act. She is also an active member of the American IP Law Association and worked on the International Trademark Association’s model trademark guidelines. In her previous life before she became an academic Lisa was an IP litigator. Last year she was recognized as a Woman of Influence in the Law by the San Diego Business Journal. Today we’re really lucky to have Lisa here talking to us about her new book, which is Trademarks and Free Speech: Conflicts and Resolutions. If you want to get the book and you go to the link to Lisa’s talk, you’ll see that Cambridge University Press is offering a discount to people who order it. We are very pleased to have you and thank you.

Speaker’s Opening Remarks and Book Overview

2:11

Right. Well, thank you very much for the kind introduction. Thanks to all of you for coming to my presentation today. The title of my new book is called Trademarks and Free Speech: Conflicts and Resolutions. I have been writing about this topic for about 20 years. This book is kind of a culmination of everything that I have been thinking about during that time frame. The right to freedom of expression, you’ve probably heard of this, right? It is protected in treaties, in constitutions, and in statutes in the United Kingdom, the United States, and other parts of the world. Trademark laws regulate the use of words, names, symbols, product features. Therefore, trademark laws can implicate the right to freedom of expression and potentially violate it. Most trademark laws are consistent with the right to freedom of expression. In this book though I explore when trademark laws might be problematic for freedom of expression purposes but also for fair competition.

Book Details, Acknowledgments, and Scope

3:12

Here is information about my book from my website. In addition to being able to purchase it online I was very excited. I went by the Cambridge University bookstore after I got into Cambridge. This is my first time to Cambridge. You have a lovely city here. It is for sale there if you want to check it out. I want to thank Jennifer Davis. She was very kind to provide me comments on the book as I was writing it and to provide an endorsement. I also have a lot of amazing people who I think are here online listening who gave me comments. Thanks to everyone who provided feedback and to everyone who’s written in this area before me. Martin Senftleben, Rebecca Tushnet, and Christophe Geiger have done great work in this field. My book is responding in part to claims of certain people, companies that they should be able to register certain words or phrases like hate speech, swear words, other offensive expression, that they have some sort of free speech right to register these things. In the book, I turn this around and say that it is actually problematic from a free expression perspective if we register these things because they inherently communicate ideas. They do not function well as source identifying trademarks also. In the book I focus on trademark registration law and trademark enforcement law. My main expertise is US law but I do teach an international intellectual property law course and the book does talk about European law in the European Union, a couple examples from the UK, Australia, New Zealand and Singapore. The book is targeted to be honest at attorneys, students, faculty members that want to learn a little bit about these different areas of the law and how the right to freedom of expression potentially impacts whether these laws are actually valid in various countries.

Recent Trademark Examples: Taylor Swift and “Life of a Showgirl”

5:12

I am going to start off with a couple examples from the news that I just recently talked about in my classes. You may have heard of Taylor Swift. Maybe you have not heard though of this woman here. She was a showgirl in Las Vegas, Nevada. After many years in the industry, she decided to go on a routine where she would talk about being a showgirl. She called her entertainment Confessions of a Showgirl, and she actually registered this phrase as a trademark. I would argue this is a pretty weak trademark. It is a descriptive term for her goods and services. Recently Taylor Swift came out with a new album, A Life of a Showgirl. When she came out with this album, her attorneys who are often trying to protect their IP rights tried to register Life of a Showgirl as a mark for entertainment services and other kinds of goods and services. The trademark office actually said that this mark might actually cause confusion with the mark of the Las Vegas showgirl. Then we have a lawsuit filed by the Las Vegas showgirl who files a lawsuit against Taylor Swift’s companies and claims that she is entitled to an injunction to stop the sales of her albums. These are weak trademarks. One interesting thing in the United States is that if you actually try to claim trademark rights in a phrase, you cannot take advantage of certain speech protective defenses in the United States. There is a test called the Rogers test, which would apply if you are using a mark in the title or content of a song or a film.

Supreme Court Impact: Jack Daniels Case and Speech Defenses

6:57

In a new case that just recently came out, Jack Daniels versus VIP Products, the Supreme Court said that if you are claiming trademark rights in the phrase or the design you cannot invoke these speech protective tests like the Rogers balancing test or any other threshold speech protective test. That might also apply to a requirement that a use be commercial for liability in the United States. Infringement actions do not require the use to be commercial. It is not necessarily the case in other countries. In Europe, for example, it has to be use in the course of trade. In the United States, our infringement laws can apply to non-commercial speech. What the court here is saying is if you yourself are claiming trademark rights in this context, you cannot take advantage of certain kinds of threshold First Amendment defenses. I think that is a problem. It is one thing I complain about in the book.

Vogue Parody Case and Types of Trademark Uses

7:55

You may have heard of the magazine Vogue. It is about fashion. There is a woman in Los Angeles who decided to start posting photographs of dogs under the name Dog Vogue. She actually applied to register this as a trademark as well. Mostly she was posting online, but she also sold some print copies at some shops in Los Angeles. Condé Nast, the owner of the Vogue mark, has filed a lawsuit against her. She is claiming this is a parody. It is kind of different than the Taylor Swift example where the term is being used for Taylor Swift. Life of a Showgirl. That is a descriptive informational use. This one here is kind of poking fun at Vogue, also talking about dogs. My main approach is to think about there are three different ways that marks can be used: informational use, expressive use, or decorative use. I explore the current doctrines that might allow these uses, but also their limitations.

McDonald’s “Extra Value Meal” and Public Domain Concerns

9:16

You have probably heard of McDonald’s. They used to have a registration for Extra Value Meal for their restaurant services. This is again a pretty weak trademark. Apparently they have not used it recently. It was cancelled off the trademark register in the United States. This attorney Josh Gerben has a great blog post about various kinds of litigation in the United States. He says this is an example of companies need to continue to use their trademarks or they might lose their rights. Everybody knows about McDonald’s. This is a strong mark with secondary meaning. My take on this is McDonald’s should never have owned trademark rights in the phrase Extra Value Meal for restaurant services. This is speech harmful. It is anti-competitive. Any company should be able to use this phrase in the context of providing food to consumers.

Snoop Dogg “Smoke Weed Every Day” and Failure to Function

10:10

Snoop Dogg applied to register Smoke Weed Every Day for a store that sells cannabis and related products. His application was refused registration because under federal law in the United States selling cannabis is illegal. In California and some other states it is legal. This phrase does not serve as a source identifying trademark for his goods and services. It is actually a lyric to a song. A different musical artist has used this phrase. It is also pretty common on shirts and other products. The failure to function doctrine has been used increasingly by the USPTO to refuse registration of hate speech and swear words after the Supreme Court struck down laws on the ground they were inconsistent with the First Amendment because they discriminated based on viewpoint. I think this doctrine, trademark failure to function, is a great law. It helps promote freedom of expression by preventing certain words and phrases and decorative features and products from being registered as trademarks. It also promotes competition by leaving language in the public domain for everyone to use.

Occupy Mars and Monitoring Common Phrases on Merchandise

11:30

A couple years ago a woman tried to register this phrase Occupy Mars for t-shirts. Someone named Ken Real who operates a Facebook group page mostly made up of people who sell merchandise to Amazon, eBay, filed a letter of protest. He let the office know that this phrase Occupy Mars is something that people want to put on the front of t-shirts. It is not serving as a source identifying trademark. The trademark office did refuse to register it. He now has on this Facebook page a bunch of small businesses together and they monitor the trademark registry. Anytime someone tries to register a common phrase for t-shirts they file a letter of protest. They say no these things should not be registered. People in this industry want to be able to sell shirts with this phrase. Someone new tried to register Occupy Mars and then told Ken Real he could not actually sell shirts that had this phrase on the front. In Amazon’s brand registry if you have a registration you can actually use the brand registry to take down products. This application is still pending. If someone gets exclusive rights to Occupy Mars for t-shirts that means they can take down these kinds of products. Elon Musk is wearing an Occupy Mars shirt. If you go to the SpaceX website you can buy the t-shirt. When it is on the front of a shirt that is not a trademark use. The problem is that people put these phrases on the labels or hang tags and then say they are using it as a trademark. Someone tried to register Black Lives Matter a couple years ago and put that on the labels and the hang tags but also on the front of the shirt and the trademark office said no, this fails to function as a trademark.

The Slants Case and Viewpoint Discrimination

15:06

A couple years ago in 2017 Simon Tam who was in a band that had all Asian-American members, they were going by The Slants and trying to reclaim this term that had been used in a derogatory manner towards people of Asian descent. This is different than the Washington Redskins football team where you had a bunch of Native Americans saying that they should not have this mark. Here you actually had people in the group trying to reclaim the term and drain its denigrating force. Simon Tam said he needed a registration to get a record deal. There was a law that banned registration of words or names or symbols that are disparaging to people, institutions, etc. He said this law discriminated based on viewpoint. This case went all the way up to the Supreme Court. The justices unanimously agreed that this law was inconsistent with the First Amendment. They noted that you could register words that celebrated Asians but you could not register words that disparaged them and therefore the law was invalid. The trademark office could no longer invoke this provision of the Lanham Act, section 2(a), to refuse these registrations. At that point all these people tried to register hate speech, swear words, all sorts of things. The PTO said we have these other rules. Maybe this is not distinctive or maybe this phrase fails to function as a trademark.

FUCT Case and Immoral/Scandalous Bars

16:42

That did not stop Eric Brunetti from trying to register FUCT as a mark for clothing. He claimed that FUCT meant Friends U Can’t Trust. Everyone knows he was just trying to register the word fuck. More recently he has tried to register fuck on its own. That application was refused registration on failure to function grounds. For some reason the trademark examiners kind of think this is different because it is not exactly the spelling of the swear word. He applies to register this phrase. It is refused registration on the ground it is immoral or scandalous. After Tam everyone was wondering are there other laws that might be inconsistent with the right to freedom of expression. The court followed a similar approach and said this law discriminates based on viewpoint. Some of the justices concurred and said Congress could actually ban the registration of highly profane terms, vulgar terms, etc. In the United States, obscene speech is not protected by the right to freedom of expression. Congress could ban certain marks for those reasons. The immoral and scandalous provisions were deemed to be inconsistent with the right to freedom of expression. That is the Brunetti case.

Vidal v. Elster and Names Provision

18:12

More recently we have the Vidal versus Elster case. This photo is back from when Donald Trump was running for president the first time. Trump was making fun of Marco Rubio, calling him Little Marco. Marco Rubio said at least I do not have small hands. Here we have Trump holding up his hands. My hands are not small. After the debate, Stephen Elster, who is not a fan of Trump, applied to register Trump Too Small as a mark for t-shirts. This was an intent to use application but later he submitted photographs of the shirts. He was using the phrase in a more decorative, ornamental or expressive manner than as a trademark. He says that his application was refused in a viewpoint discriminatory way. The provision here that was cited was section 2(c), a law that bans registration of a person’s name or image or signature without their consent. Elster argues this is sort of like viewpoint discrimination and the Supreme Court justices say no, this is a viewpoint neutral law. It was not applied in a discriminatory way towards you. This law is regulating speech based on its content, which typically in First Amendment law is a problem. In trademark law this is just the way it is. You have to make decisions based on the content of a mark to decide if it is likely to cause confusion with a previous mark or if it is descriptive or generic etc. The court said if it is a viewpoint neutral content-based law but there is a history and tradition of this kind of law and it furthers the goals of identifying sources of goods and services this is consistent with the First Amendment. Critics of this decision focused on the fact that there actually was not a long history of this particular provision.

International Perspectives and EU Approach

20:55

The United States is not the only country that has recognized that the right to freedom of expression can impose limits on trademark rights. In the European Union in the preamble or recital of the EU Trademark Directive and the EU Trademark Regulation it says that courts need to take into account the right to freedom of expression. In the Constantin Film case where someone had tried to register a phrase that was equivalent to fuck you goth or something to that effect, this application had been refused registration on the ground it was contrary to morality and public policy. The court had occasion to consider whether there was a problem from a freedom of expression perspective. It clarified what the rules are for proving that a mark is immoral or contrary to public policy. Most countries are not going to follow the United States in saying that you need to actually not ban immoral trademarks. They recognize that a registration does not prevent you from using the phrase. It is even more problematic from a free expression perspective because then you get that exclusive right that you can use to stop other people from speaking. You can send them a cease and desist letter and then they stop if they are a small business or an individual. You can file a complaint with an online marketplace. There was a woman who claimed trademark rights in Cocky for romance novels about men that were arrogant or cocky. Then she got this registration and actually got Amazon to take down books that had titles with the word cocky in them. Ultimately her registration was cancelled. People who engaged in self-censorship once they saw she had a registration they just said okay I will change my title. It is very problematic to get this registration of terms that are expressive or that are decorative.

Framework for Analyzing Trademark Law and Free Speech Conflicts

23:11

If you are trying to figure out not just in the United States but any country whether there is a potential conflict between a trademark law and the right to freedom of expression you might want to consider certain issues. The first would be you have to show that this is government action not private action in this trademark dispute. Next, the trademark law has to ban, punish, chill, or otherwise harm expression. Next, the trademark law has to regulate expression protected by the right to freedom of expression. It is not just regulating conduct or some sort of economic activity. In the United States the expression has to be private speech, not government speech. Next, the expression has to not be categorically excluded from protection. Obscene speech is an example, fraudulent speech, misleading commercial speech. Because trademark laws are broader than just laws covering misleading commercial speech we need to think next about whether the law fails the relevant free expression test for trademark. In the United States we have different tests that we might use depending on what kind of law it is. If it is a law that discriminates based on viewpoint like the Tam and Brunetti cases typically you would have to satisfy strict or heightened level scrutiny. After Elster if there is a historical tradition of this kind of trademark law it is going to be okay. If it is non-commercial speech you would apply strict scrutiny analysis. If it is commercial speech you might only have to satisfy intermediate scrutiny analysis under Central Hudson.

Strict vs. Intermediate Scrutiny and Reasonableness

28:41

Here is the strict scrutiny analysis test and the intermediate scrutiny analysis. The key differences: for strict scrutiny it has to be a compelling government interest and you have to show it is the least restrictive alternative. For intermediate scrutiny you only have to show there is a substantial government interest, the law directly and materially furthers that interest and is not more extensive than necessary to serve that interest. This particular approach is kind of similar to balancing tests that you see in Europe and other countries. In the Elster case when talking about trademark registration laws justices Barrett and Sotomayor joined by justices Kagan and Jackson say if this law is reasonable in light of trademark law’s purpose of facilitating source identification it is fine. This is not the test of the Supreme Court majority and this test would not apply to trademark enforcement laws which actually do suppress speech. One critique I have of their argument here is that the law at issue in Elster was not furthering trademark law’s source identifying function. It was protecting the rights of privacy and publicity.

Proposed Balancing Framework and Key Arguments

31:18

My proposal is that when countries either judges or legislatures are trying to decide how to balance trademark and free expression rights they should consider three things. First you want to ask what is the purpose of this specific trademark law. Trademark laws can prevent misleading uses of trademarks. Trademark laws can promote fair competition. Helping people identify the source of goods and services. Then you ask does this law further that purpose. Then you also ask whether this law suppresses or chills speech that is protected by the right to freedom of expression. If it does suppress or chill speech then you ask is it no more than necessary to further the goals that were identified. My main argument is most trademark registration and enforcement laws are furthering important trademark goals. They do adequately protect speech interests but not all. I argue that dilution law is inconsistent with the right to freedom of expression because these laws regulate non-misleading speech. They do discriminate based on viewpoint. Dilution laws apply to dissimilar goods and services. If you have a famous mark you could have rights across industries and this right can apply when the use is not misleading. The other argument in the book is that if we are talking about subject matter, words, names, designs that have substantial inherent value that we should not register these marks or we should only give them a narrow scope of protection. I break it down into the three categories: informational matter, expressive matter, and decorative matter. We need more defensive doctrines in trademark statutes. I talk about safe harbor defenses for online service providers. I encourage companies like Amazon or eBay or Google to not automatically take down expression or products once someone accuses a user of trademark violations. Perhaps you have a notice and takedown regime where they take it down but then you allow a counter notification and then it goes back up unless the complaining party files a trademark lawsuit.

Laws Consistent with Free Speech and Problematic Dilution

36:44

One of the goals of trademark law is to prevent or discourage fraudulent, misleading uses of trademarks. Any laws that target these kinds of marks are probably constitutional. Provisions that promote fair competition are also consistent with the right to freedom of expression. Laws that ban registration of descriptive marks that have not acquired distinctiveness or functional matter. Primarily geographically descriptive matter, surnames. Section 2(c). There are other laws in the United States that regulate expression for other reasons. Trademark dilution law. The problem with these laws is that they protect the goodwill or reputation of a trademark owner where the use is not misleading. There is no evidence of competition. There is no evidence of actual harm. Section 43(c) of the Lanham Act basically says that an owner of a famous mark can prevent uses of their mark that cause dilution by blurring or tarnishment again regardless of the presence or absence of confusion, competition or actual economic injury. This is a problematic law. Right now the Ninth Circuit Court of Appeals is considering appeal of the Jack Daniels case. VIP Products sells parody dog toys. One of its dog toys was making fun of Jack Daniels whiskey. The Supreme Court said if you yourself are claiming trademark rights you cannot take advantage of the Rogers test. What was great about this opinion is that it had some speech protective language. The case is now on appeal to the Ninth Circuit. Rebecca Tushnet has written an excellent amicus brief that I joined where we are arguing that dilution by tarnishment law is inconsistent with the right to freedom of expression.

Inherently Valuable Expression: Superheroes Example

44:24

In the book in my first chapter which is available online for free I talk about three examples of what I call inherently valuable expression. Superheroes which is claimed as a mark for comic books, various other goods and services. DC and Marvel jointly owned a registration for superheroes for comic books, for toys, for clothing like t-shirts. They owned superhero for masquerade costumes. The examples that they provided of how they are using the mark I would argue are not trademark uses. Marvel or DC tell you who is providing this particular product. Superhero is providing information about the story. They have enforced it. Dan Taylor is a comic book author. They came out with this Superhero Happy Hour. Marvel or DC contacted him said you cannot use superhero in the title of your comic book and so it was changed to Hero Happy Hour. I did a deep dive into all the evidence they claim shows their use of this phrase superheroes as a trademark. Again I would argue this is either informational, expressive or decorative use of this phrase. No one should own exclusive rights to superheroes in this context for these kinds of goods and services.

Inherently Valuable Subject Matter and Recommendations

47:59

My book introduces this concept of inherently valuable expression in trademark law. This is matter with pre-existing informational, expressive or decorative value in an industry or community before it was claimed as a trademark. Some examples of subject matter with substantial inherent value: generic and descriptive words, other informational terms and symbols, popular colors and color combinations, creative works and words or names associated with them, names and likenesses of historical figures, leaders and celebrities, words and designs of value to indigenous communities, political messages and slogans for social movements, trending phrases, memes, and lyrics, puns and jokes, positive and uplifting sentiment, holidays, communicative symbols, common words and symbols displayed on t-shirts and other expressive merchandise. The book talks about the different types of doctrines that can be invoked in the United States and other countries to refuse registrations of expression with substantial inherent value. Either we do not register these kinds of marks or we just have a narrow scope of protection. You get rights for your particular mark for your goods or service. Perhaps we require the defendant to actually use the mark as a trademark for liability. Maybe we say you have to show this is a false statement about your own goods and services or is likely to mislead about the source of your products or your message. There are some speech protective and procompetitive trademark enforcement laws that I talk about in the book. The likelihood of confusion test, commercial use and trademark use, descriptive fair use, nominative fair use, the Rogers test, aesthetic functionality. My friend Christine Farley and I proposed kind of a replacement to the Rogers test and to all these different kinds of defensive doctrines. If it is an informational expressive use maybe we should just focus on whether this is a false statement about licensing or sponsorship or affiliation or if this use is likely to mislead about source. If it is not then we should allow this to protect the right to freedom of expression. That is my presentation and I will open it up to questions if anyone has any.