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More Trouble Ahead for Google Over “Incognito” Mode?

Written By: Pierce Stanley

Last month, U.S. District Court Judge Lucy Koh rejected Google’s bid to dismiss a class action lawsuit alleging Google surreptitiously tracks users of its popular Chrome browser while they browse in “incognito” mode.[1] The decision is a small victory for privacy activists and a setback for Google, because it effectively dispenses with the tech giant’s argument that users consented to its data collection because users were aware from the browsers’ “new tab” pages.[2]

The decision keeps alive a lawsuit, Brown v. Google, brought in June of 2020, when three browser users filed a complaint[3] alleging Google operates a “pervasive data tracking business,” asserting that Google’s tracking persists even when users take affirmative steps to protect private information, such as using “incognito” mode in Chrome.[4] The ruling comes as Google, Apple, and other companies continue to face heightened scrutiny from lawmakers over their data gathering policies.[5]

At the time, Reuters reported the lawsuit sought at least $5 billion in damages—alleging a putative class in the millions—and accusing Google of violating several federal wiretapping statutes and the California Invasion of Privacy Act (“CIPA”).[6] The lead plaintiffs ask that the class receive at least $5,000 in civil damages for multiple CIPA violations.[7]

In her order, Judge Koh said Google has not demonstrated that users agreed to being tracked while in private browsing mode, particularly since Google’s privacy policies never mention private browsing or explain that Google collects some browser analytics such as IP addresses and screen dimensions, and operates some third-party cookies required for websites’ functionality.[8]

According to Search Engine Journal, “The consumers who filed the case are taking issue with Google collecting data using other services while in ‘incognito’ mode.”[9] For example, when a user visits a website in “incognito” mode, their data can still be collected by Google Analytics, which relies heavily on the use of third-party tracking cookies.[10]

The class leaders say they were under the impression “incognito” mode offered all-encompassing privacy protection from data trackers across the internet.[11] However, “incognito” mode does not preclude websites that use Google Analytics for routine analytics from continuing to track users’ behavior.[12] Class members therefore assert they were misled by Google’s failure to disclose tracking of its users while in incognito mode. Since most websites today deploy Google Analytics in some form, the potential harm of data collected about unknowing users through Google’s incognito mode is vast.[13]

Google argues that “incognito” browsing does not save users’ histories or any cookies after the end of their “incognito” session. Indeed, Google’s lawyers famously wrote, “‘incognito’ does not mean ‘invisible.’”[14] The search giant contends most “incognito” users are aware of this distinction and know that their histories and cookies are cleared by default when a user closes their “incognito” browser, but websites and services most users interact with on the internet may still be able to track them.[15] Google seemingly anticipated this public relations risk and recently declared its intention to move away from relying on third-party cookies, even though such a move may negatively affect the company’s advertising business.[16]

It is unclear what the future of this lawsuit will bring. Successful class actions often lead to payouts of only a fraction of actual damage to consumers.[17] Regardless of where this lawsuit goes, one thing is clear: it puts Google’s practices under the microscope. At the very least, the public is now more aware of how Google’s “incognito” mode works. The suit forces Google (and others) to stop burying important information in terms of service, and it places users on notice of what data companies collect. That’s a good thing—for privacy’s sake.

 

[1] Dorothy Atkins, Koh Wont Toss Google Privacy Suit Over ‘Incognito Mode’, Law360 (Mar. 15, 2021, 7:24 PM), https://www.law360.com/articles/1364818 [https://perma.cc/MF47-XVHV].

[2] Ron Amadeo, Judge Rules $5 billion Google Chrome Incognito Mode Lawsuit Can Go Forward, Ars Technica (Mar. 15, 2021), https://arstechnica.com/gadgets/2021/03/judge-rules-5-billion-google-chrome-incognito-mode-lawsuit-can-go-forward/ [https://perma.cc/ANU8-J3L6].

[3]Complaint, Brown, et al. v. Google LLC, et al, (N.D. Cal. (2020) (No. 20-3664).

[4] Kim Lyons, Judge rules Google Has to Face Lawsuit that Claims it Tracks Users Even in Incognito Mode, The Verge (Mar. 13, 2021, 3:40 PM), https://www.theverge.com/2021/3/13/22329240/judge-rules-google-5-billion-lawsuit-tracking-chrome-incognito-privacy [https://perma.cc/GAP8-VPKA].

[5] Malathi Nayak & Joel Rosenblatt, Google Must Face Suit Over Snooping on ‘Incognito’ Browsing, Bloomberg News (Mar. 13, 2021 1:36 AM), https://www.bloomberg.com/news/articles/2021-03-13/google-must-face-suit-over-snooping-on-incognito-browsing [https://perma.cc/3MR3-TVP2].

[6] Jonathan Stempel, Google faces $5 billion Lawsuit in U.S. For Tracking ‘Private’ Internet Use, Reuters (Jun. 2, 2020 6:11 PM), https://www.reuters.com/article/us-alphabet-google-privacy-lawsuit/google-is-sued-in-u-s-for-tracking-users-private-internet-browsing-idUSKBN23933H [https://perma.cc/RR5F-T6C5].

[7] Atkins, supra note 1.

[8] Jon Fingas, Google Will Face Lawsuit over Incognito Mode Tracking (Updated), Engadget (Mar. 13, 2021), https://www.engadget.com/google-must-face-incognito-mode-lawsuit-212859134.html [https://perma.cc/JWH8-93S9].

[9] Matt Southern, Google to Face $5B Lawsuit over Tracking Users in Incognito Mode, Search Engine J. (Mar. 15, 2021), https://www.searchenginejournal.com/google-to-face-5b-lawsuit-over-tracking-users-in-incognito-mode/399113/ [https://perma.cc/6UJP-K285].

[10] Id.

[11] Atkins, supra note 1.

[12] Southern, supra note 8.

[13] Atkins, supra note 1.

[14] Kevin Shalvey, A Lawsuit That Accused Google of Collecting the Data of People Who Were Using Incognito Mode Can Continue, Said a Federal Judge, Bus. Insider (Mar. 14, 2021, 6:45 A.M.), https://www.businessinsider.com/google-lawsuit-incognito-mode-user-data-privacy-can-continue-judge [https://perma.cc/57QN-EZ5H].

[15] Ryan Whitwam, Google Fails to Win Dismissal of Incognito Mode Lawsuit, ExtremeTech (Mar. 15, 2021, 2:32 P.M.), https://www.extremetech.com/internet/320847-google-fails-to-win-dismissal-of-incognito-mode-lawsuit [https://perma.cc/NX9J-UXNQ].

[16] Lyons, supra note 3.

[17] Fingas, supra note 7.

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How Social Media Can Help Black Businesses Establish Secondary Meaning

Written By: Jordan Hameen

If a proposed trademark or service mark is not inherently distinctive, it may be registered on the Principal Register only upon proof of acquired distinctiveness or “secondary meaning,” that is, proof that it has become distinctive as applied to the applicant’s goods or services in commerce.[1] “The crux of the secondary meaning doctrine is that the mark comes to identify not only the goods but the source of those goods.”[2] Establishing secondary meaning requires that “the primary significance of the term in the minds of the consuming public is not the product but the producer.”[3]

The author is disgusted by the heightened level of connectivity produced by widely used social media platforms. The author sees this phenomenon as a disease plaguing the nation’s consumer privacy concerns, but this connectivity is also aiding brand recognition for black owned businesses. Between Facebook, Instagram, and YouTube, average individuals can connect with thousands of people in a uniquely intimate way in a matter of seconds. This enables growing brands to reach a large number of consumers in a short time. Thus, technology is changing the ability to establish acquired distinctiveness, and the accompanying legal test should be flexible enough to accommodate this progression.

Prior to social media platforms, scholars noticed that technology was changing the way companies achieved trademark recognition. According to trademark specialist Thomas McCarthy, “With the advent of massive advertising campaigns on television and the Internet, a new trademark may achieve wide usage and ‘secondary meaning’ within a matter of days or weeks, compared to the many years required in the days of more leisurely advertising.”[4]

In the past few months, the nation has placed a spotlight on the police brutality and systemic racism that has plagued the United States for decades. In light of the circumstances, numerous companies have pledged a heightened commitment to inclusion and equality.[5] Yet, “[i]n the days following the death of George Floyd, Brooklyn-based entrepreneur Aurora James was skeptical of the deluge of corporate support for the Black community.”[6] In a handwritten note posted to her personal Instagram page, James made a simple request of retailers: Commit to having 15% of suppliers be black-owned businesses.[7] Subsequently, several large companies, including Sephora, West Elm, and Rent the Runway, took on this challenge and committed to the 15% pledge.[8] Instagram pages and hashtags were created and dedicated to highlighting black-owned businesses.[9] Now, consumers can search #backownedbusinesses and find a rich bank of brands on the Instagram “explore” page very easily. Here, social media served as a valuable tool for generating trademark and trade dress recognition for numerous black-owned businesses.

Social media provides a much-needed space for businesses owned by marginalized communities to establish secondary meaning, and the USPTO should aid this process by providing a more standardized legal test. “Previously employed multi-factor tests used to determine secondary meaning did not consider social media as a contributor. . .Such tests, which are outdated and need to be reconsidered, favor larger entities with sufficient financial capital to invest in traditional advertising and publicity.”[10] These tests place small businesses trying to break into the market at a disadvantage and “fail[] to reflect the shift that social media has caused in terms of how brands market their goods and services to consumers.”[11]

Also, the most pressing question is how quickly can these emerging businesses “acquire distinctiveness?” “Under the traditional formulation for evaluating proof of secondary meaning, the answer may all too often be ‘not quickly enough.’”[12] If changes are not made, these companies may find themselves defenseless against infringement.

“Courts have been hesitant to consider an applicant’s website traffic metrics as evidence of secondary meaning. It is clear that, although metrics that record website traffic provide concrete information to applicants and domain name managers, the hard numbers are missing the link between consumers and the source that allows for a showing of secondary evidence — that is, the link that connects the product and its source in the minds of consumers.”[13]

Yet, “[c]lose examination of the underlying judicial rationale for that formulation [] demonstrates that while the courts have not quantified the tools, metrics, or methodologies by which to measure social media impact of brand building, there is ample basis for courts to revise the traditional formulation and make allowance for the digital, new media era.”[14] When “secondary meaning is defined solely by criteria requiring large budgets, such as substantial advertising expenditures, many years in the market, or ‘substantial’ sales, it is clear that start-ups . . . will almost inevitably fail to prove acquired distinctiveness.”[15] Therefore, these small businesses entering the field will be blocked out of establishing secondary meaning due to a lack of advertising resources. Creating change to systematic oppression is difficult, but we must analyze all practices put in place and determine what we must do as a nation to make real improvements beyond the creation of a hashtag.

 

[1] Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1580, (Fed. Cir. 1988).

[2] TMEP (Oct. 108) §1212 Acquired Distinctiveness or Secondary Meaning, USPTO, https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-1200d1e10316.html [https://perma.cc/J7TM-JPHV].

[3] Id.

[4] Thomas McCarthy, § 15:56 Length of Use for Secondary Meaning in Speeded-up Economy, 2 McCarthy on Trademarks and Unfair Competition (5th ed.).

[5] Louise Connelly, This Instagram Post Could Unlock Hundreds of Millions of Dollars for Black-owned Businesses, CNBC (Aug. 9, 2020.10:00 AM), https://www.cnbc.com/2020/08/09/how-this-instagram-post-could-unlock-millions-for-black-owned-businesses.html [https://perma.cc/28M2-5ZJM].

[6] Id.

[7] Id.

[8] Id.

[9] Id.

[10]  Caroline Mrohs, How Many Likes Did It Get? Using Social Media Metrics to Establish Trademark Rights, 25 Cath. U.J.L. & Tech. 154, 155 (2016).

[11] Id.

[12] Ronald Coleman, Fashion Dos: Acknowledging Social Media Evidence as Relevant to Proving Secondary Meaning, 106 Trademark Rep. 776, 777 (2016).

[13] Mrohs, supra note 10, at 154, 173.

[14] Coleman, supra note 11, at 776, 777.

[15]Id.

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Section 230 and the First Amendment: Is speech freer with Section 230 or without it?

Written By: Anoli Motawala

Section 230, the Communications Decency Act, was introduced in 1996.[1] The act states that “no provider . . . of an interactive computer service . . . shall be treated as the publisher or speaker of any information provided by another,” thus granting “service providers” immunity from lawsuits stemming from the content posted on their sites.[2]

Each service provider was given the ability to customize the content they allowed on their sites so that they could distinguish themselves from other service providers, allowing them the flexibility to moderate as they saw fit without having any third party liability.[3] Section 230 makes it so that electronic content operators cannot be held liable for the posts, photos or videos that they allow or remove.[4]

On October 28, 2020, top executives from Facebook, Google, and Twitter were questioned about their content moderation methods.[5] Democrats contend that these sites do not do enough to take down harmful misinformation, especially as it relates to foreign interference in the 2020 presidential election.[6] Republicans contend that these social media companies deliberately censor conservative viewpoints.[7]

Lawmakers question the impartiality of these companies’ content moderation, and they are considering changes to Section 230 to address those perceived shortfalls.[8]

Repealing Section 230 would enable people to sue companies for the content allowed on their platforms, which, companies argue, would lead to costly litigation.[9] Facebook’s Mark Zuckerberg also argues that without the protections of Section 230, technology companies would not only be sued for content they did allow, but also for basic moderation of content they did not allow, leading to further costly litigation.[10] Twitter CEO Jack Dorsey argues that modifying Section 230 would lead to so much litigation that only the large, well-funded technology companies could afford to face, and would lead to less competition because smaller companies with fewer resources would not have enough money for the litigation that would likely follow.[11]

Experts say that the effects of repealing Section 230 would likely be similar to the effects of the passage of FOSTA-SESTA in the spring of 2018, which held platforms criminally and civilly liable for sexual service advertisements posted on their sites.[12] FOSTA-SESTA led Craigslist to preemptively shut down its personal ads section entirely because of the cost of litigation that would stem from the passage of the bill.[13]

Section 230 protects internet service providers and “domain name registries” as well.[14] Without section 230, the cost of litigation and cost of content moderation would make it so that smaller companies could not compete, leading to the centralization of content providers. As imperfect as Section 230 is, and as much power as companies have to moderate content, experts say that consumers would have even fewer choices of platforms without Section 230.[15]

It seems that, unless iron-clad protections can be put in place to protect smaller companies, Section 230 should be upheld because it ultimately leads to greater freedom of speech on the internet, whereas changing or repealing Section 230 would lead to fewer content providers, and in turn, fewer content moderators, which would further restrict the kinds of speech that can be shared.

 

[1] Roger Cochetti, What Were We Thinking in 1996 When We Approved Section 230?, The Hill (Oct. 20, 2020, 2:00 PM), https://thehill.com/opinion/technology/523523-what-were-we-thinking-in-1996-when-we-approved-section-230 [https://perma.cc/HWY5-QYYJ].

[2] Id.

[3] Id.

[4] Tony Romm, et al., Facebook, Google, Twitter CEOs Clash with Congress in Pre-Election Showdown, Washington Post (Oct. 28, 2020, 2:42 PM), https://www.washingtonpost.com/technology/2020/10/28/twitter-facebook-google-senate-hearing-live-updates/ [https://perma.cc/DM4A-762H].

[5] Id.

[6] Id.

[7] Id.

[8] Id.

[9] Kari Paul, Section 230: Tech CEOs to Defend Key Internet Law Before Congress, The Guardian (Oct. 27, 2020, 16:11 PM), https://www.theguardian.com/us-news/2020/oct/27/section-230-congress-hearing-facebook-twitter-google [https://perma.cc/BXT8-2HQ7].

[10] Id.

[11] Id.

[12] Id. (FOSTA-SESTA is short for the “Allow States and Victims to Fight Online Sex Trafficking Act” and “Stop Enabling Sex Traffickers Act.”)

[13] Id.

[14] Id.

[15] Id.

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Tastes like chicken! Trademark infringement?

Written By: Tabina Haider

As technology progresses, the realm of trademark law is expanding. Many things are now trademarkable; from words and sounds to shapes and symbols. This has grown even to the sense of smell. Precedent has shown that it is possible to trademark a smell. [1] Think back to your kindergarten years and see if you are able to recall the smell of Play-Doh. To many, a distinctive smell pops into their minds that makes them think of Play-Doh specifically. These were the arguments that Hasbro, the company that manufactures Play-Doh, made to the United States Patent and Trademark Office (“USPTO”) when filing to trademark the scent. [2] Due to the distinctive nature of this Play-Doh scent in connection with its goods, Hasbro was able to successfully trademark this particular smell. [3] This trademark makes the Play-Doh scent Hasbro’s official property, prohibiting others from using it. [4]

Since smell is considered trademarkable, the question that naturally follows is whether flavor may also be protectable. Smell and taste are largely connected, and the properties of both senses are very similar, so it makes sense that if one is trademarkable, then the other is as well. The answer, according to caselaw, is that flavor mostly cannot serve as a trademark due to its functional nature. [5] Caselaw even states that scent should also not be trademarkable. [6] This is because flavor and scent are generally seen as a characteristic of a good rather than a trademark and can never be inherently distinctive. [7] Since flavor is the essential function of the product, it is almost impossible to trademark because something that acts to serves its purpose cannot be a trademark.

While it is difficult, it is not impossible to protect flavor as a trademark. A strong showing of acquired distinctiveness can be used to illustrate that a flavor or scent serves as a mark. [8] If an inventor is able to prove with substantial evidence, as Hasbro did with the smell of Play-Doh, that a particular taste makes consumers associate that flavor with the inventor’s brand, that flavor will be protected.

 

[1] Franco Galbo, Making Sense of the Nonsensical: A look at Scent Trademarks and Their Complexities, IPWatchdog (Dec. 21, 2017), https://www.ipwatchdog.com/2017/12/21/scent-trademarks-complexities/id=91071/ [https://perma.cc/8ZP8-JLNZ].

[2] Rachel Siegel, Remember How Play-Doh Smells? U.S. Trademark Officials Get It., Wash. Post (May 14, 2018), https://www.washingtonpost.com/news/business/wp/2018/05/24/remember-how-play-doh-smells-u-s-trademark-officials-get-it/ [https://perma.cc/977J-RSMK].

[3] Id.

[4] Id.

[5] In re Pohl-Baskamp GmbH & Co., 106 U.S.P.Q.2d 1042, 1048 (T.T.A.B. 2013).

[6] Id.

[7] Id.

[8] Id. at 1049.

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Rise and Shine: Celebrity Hubris and the USPTO

Written By: Riane Briones

In a 2010 interview on The View, host Whoopie Goldberg said to superstar celebrity Beyoncé: “You are Beyoncé,” to which she responded, “Thank you.” [1] The now viral clip is a stark reminder that for many celebrities, a name is the equivalent of a brand and a lifestyle. Names have become such a part of their brands that many celebrities attempt to not only trademark their own names, but their children’s names as well as signature phrases they are most recognized for.

In peak 2000s reality TV fashion, socialite Paris Hilton famously trademarked her signature catchphrase “That’s hot”[2], rapper 50 Cent trademarked his stage name for use in virtually everything [3], and even the iconic Michael Buffer phrase “Let’s get ready to rumble!” has a trademark [4]. Trademarking names and catchphrases is popular because, of course, it gains an upper hand in legal disputes, and, in some cases, it allows celebrities to make money off of their names and personas alone, even when they aren’t specifically selling anything. [5] This is especially true considering the age of social media—on various social platforms, celebrities can cash in on their own personas and gather millions of followers just by displaying their daily lives on Instagram, Facebook, Twitter, and TikTok. [6]

But, for all of the success in celebrity trademarks, some have become more difficult to get through the United States Patent and Trademark Office (“USPTO”). Kylie Jenner, of “Keeping Up with the Kardashians,” attempted to trademark the phrase “rise and shine” after a clip of her singing the phrase became a viral meme. [7] Looking to capitalize on the meme’s popularity, Jenner sought to trademark the phrase for cosmetics and clothing. [8]

One would think that the popularity of the “rise and shine” clip would make trademarking it relatively easy. After all, the clip became the fastest meme to reach one billion views on TikTok and it was reenacted by a number of other prominent celebrities [9]. Surely, this would make the trademark a done deal.

However, in spite of Jenner’s popularity, the celebrity has already faced a number of hurdles in attempting to trademark the phrase. [10] Cathy Beggan, owner of cosmetics company Rise ‘N Shine LLC has already come forward to say that she already owns the trademark in relation to cosmetic products and clothing items. [11]

Jenner has not been successful in trademarking “rise and shine” yet, though the applications are still live at the moment so she may in the future, [12] but the legal battle does serve as a reminder of the phenomenon and, oftentimes, controversy, of celebrity trademarking. For the general public, many could not fathom why Jenner would capitalize on the phrase given that it was relatively common already [13].

Celebrity trademarks are often described as “ridiculous” [14] or “bizarre.” [15] But, during a moment where memes and catchphrases can catapult anyone into overnight fame, it feels unsurprising that celebrities want to cash in where they can. Facing backlash from her ultimately unsuccessful attempt to trademark her catchphrase “Okurrr”[16], rapper Cardi B defended herself in a 2019 Instagram video, stating, “Every single time I go to a corporate meeting, every time I go to a TV show, every time I do a commercial . . . you think I’m not gonna profit off this shit? . . . While I’m still here I’m gonna secure all the fucking bags.” [17] She encouraged her followers to capitalize on viral moments as well, saying, “Let me give y’all a secret too. It’s 2019 bitch, there’s a lot of ways to get rich.” [18]

 

[1] Işıl Dulkan, YOU ARE BEYONCE- Thank You, YOUTUBE (Feb. 6, 2015), https://www.youtube.com/watch?v=NdGjylS8p0g [https://perma.cc/7B2H-T54D]; Kristie Rohwedder, Beyonce Has Perfect Response to “You Are Beyonce”, BUSTLE (Jan. 9,2015), https://www.bustle.com/articles/57746-beyonces-response-to-whoopi-goldberg-saying-you-are-beyonce-is-totally-justified-video [https://perma.cc/3CUT-2AJT].

[2] Andrew LaSane, from Cat Names to Fruit, Here Are 11 Bizarre Things Celebrities Have Tried to Trademark , INSIDER (Oct. 22, 2019), https://www.insider.com/bizarre-things-famous-people-have-tried-to-trademark-2019-6#paris-hilton-has-trademarked-her-reality-show-catchphrase-thats-hot-5 [https://perma.cc/QW2S-K8S6].

[3] Id.

[4] Id.

[5] Kaitlyn Tiffany, Why Celebrities Try to Trademark Their Catchphrases and Baby Names, VOX (April 19, 2019), https://www.vox.com/the-goods/2019/4/19/18507920/celebrity-trademark-history-baby-names-taylor-swift [https://perma.cc/W6KD-QS5S].

[6] Rankin, How Celebrities Really Make Money on Instagram: Behind the Secret World of Social Media Sponsorship, E! ONLINE (June 13, 2016), https://www.eonline.com/news/776628/how-celebrities-really-make-money-on-instagram-behind-the-secret-world-of-social-media-sponsorship [https://perma.cc/7SBU-95A9]; Katie Sehl, 10 Reasons Celebrities Are Better at Instagram Than Brands, HOOTSUITE (Jan. 13, 2020), https://blog.hootsuite.com/10-reasons-celebrities-are-better-at-instagram-than-brands/ [https://perma.cc/C9T9-TY34].

[7] Charles Trepany, Kylie Jenner Has Filed to Trademark ‘Rise and Shine’ and Twitter Is So over It, USA TODAY (Oct. 22, 2019, 11:36 PM ET), https://www.usatoday.com/story/entertainment/celebrities/2019/10/22/kylie-jenner-applies-trademark-rise-and-shine-irks-twitter/4067365002/ [https://perma.cc/2FGS-9SSY].

[8] Clevver News, Kylie Jenner BLOCKED from “Rise & Shine” Trademark!, YOUTUBE (Oct. 30, 2019), https://www.youtube.com/watch?v=asDOrgzitUQ [https://perma.cc/C4RZ-XDFZ].

[9] Kylie Jenner: ‘Rise and Shine’ Fastest to 1 Billion TikTok Views, BBC NEWS (Oct. 22, 2019), https://www.bbc.com/news/newsbeat-50137840 [https://perma.cc/7Z2H-TU3R].

[10] Alexandra Canal, Why Kylie Jenner’s ‘Rise and Shine’ Trademark Try May Not See the Light of Day, YAHOO! ENT. (Oct. 26, 2019), https://www.yahoo.com/entertainment/why-kylie-jenner-might-face-hurdles-with-rise-and-shine-trademark-filing-120039211.html [https://perma.cc/3PGD-SU3Z].

[11] Clevver News, supra note 8.

[12] Trademark Electronic Search System (TESS), USPTO, https://www.uspto.gov/trademarks-application-process/search-trademark-database [https://perma.cc/R224-RDZP] (click on “Search our trademark database (TESS),” then click “Word and/or Design Mark Search (Structured),” then enter rise and shine into the first search box under Basic Index in the dropdown menu and Kylie Jenner into the second search box under ALL in the dropdown menu).

[13] Trepany, supra note 7.

[14] WatchMojo.com, Top 20 Ridiculous Things Celebs Tried to Trademark, YOUTUBE (April 14, 2019), https://www.youtube.com/watch?v=4Xzb7i8iWK0 [https://perma.cc/55PR-EJP5].

[15] LaSane, supra note 2.

[16] Daniel Kreps, Not Okurrr: Cardi B’s Application to Trademark Word Denied, ROLLING STONE (July 3, 2019, 9:52 AM ET), https://www.rollingstone.com/music/music-news/cardi-b-okurrr-trademark-denied-855262/ [https://perma.cc/952F-MCFA].

[17] Katherine Gillespie, Cardi B Defends Trademarking ‘Okurr’, PAPER MAGAZINE (March 22, 2019), https://www.papermag.com/cardi-b-defends-okurr-trademark-2632493539.html [https://perma.cc/952F-MCFA].

[18] Id.

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T-Mobile-Sprint: Pro-competitive results despite a facially anticompetitive merger?

Written By: Chase Westin Laurent

With more than two-thirds of American households accessing the internet on mobile devices, wireless service providers are constantly looking for ways to remain competitive. [1] This has created a battle between major cell phone carriers to acquire competitors when feasible. Courts have blocked some of these previous merger attempts on the grounds that they violated Section 7 of the Clayton Act and decreased competition. [2] In contrast with previous rulings, on February 10, 2020, the United States District Court for the Southern District of New York approved the merger between two of the nation’s largest wireless carriers: T-Mobile and Sprint. [3]

Section 7 of the Clayton Act deems a merger anticompetitive and unlawful when it substantially lessens competition in “any line of commerce . . . in any section of the country.” [4] A prior case found a merger anticompetitive when it led to a market share exceeding thirty percent or when using an alternate measure of market concentration, a Herfindahl-Hirschman Index (“HHI”) increase of 200 points amounting to over 2,500 points. [5] Accordingly, thirteen states and the District of Columbia were able to establish a prima facie case, with T-Mobile expected to hold 37.8 percent of the market’s subscribers and increase its national HHI by 679 points to a total of 3186 points. [6] However, Sprint’s demise as a competitor, T-Mobile’s branding as the “disruptive Un-Carrier,” and DISH’s entry into the market led the court to rule in favor of the T-Mobile-Sprint combination. [6]

As a direct competitor, Sprint’s merger with T-Mobile would on its face decrease competition. [7] But, T-Mobile and Sprint’s management team, presented evidence that Sprint’s standing as a national competitor was soon to be gone. [8] Wireless carriers are constantly challenged with not only maintaining but also improving their network quality by way of either investments or cost-cutting. [9] Sprint’s history of eleven straight years of losses until 2017 and its current $37 billion dollars in debt disabled it from funding improvements by way of investments. [10] Thus, Sprint has turned to cost-cutting, leading to increased complaints regarding network quality, while AT&T, Verizon, and T-Mobile have shifted towards innovation and 5G. [11] This left Sprint with little chance at financial success in the future as customers  move towards the companies on top. [12]

In contrast, T-Mobile has seen almost a decade of successful rebranding and strategizing, which has attracted customers from its competitors. [13] Chief Executive Officer, John Legere, and his team implemented an innovative strategy: identifying and excluding features consumers disliked, such as two-year service contracts, fees for international roaming, and limits on data usage. [14] At prices lower than its competitors, T-Mobile began offering service plans without these undesirable features, greatly challenging AT&T and Verizon to similarly provide “pro-consumer packages.” [15] T-Mobile used the strategy as evidence that it seeks to further its image as the “Un-Carrier” with the merger and not to raise prices or curtail further innovation. [16]

Finally, T-Mobile argued that DISH’s entry into the market of wireless carriers, with nationwide 5G coverage expected by 2023, diminishes any effects of the 4-to-3 merger. [17] Merger Guidelines, though not binding upon the courts, require that a competitor’s entry into the market be timely, or “rapid enough to make unprofitable overall” anticompetitive practices, such as a merger. [18] The court ultimately found DISH’s entry into the market by 2023 timely when considering T-Mobile’s interest in remaining competitive during these three years by not raising prices for the sake of its brand and its consumers. [19]

As a result of the T-Mobile-Sprint merger, the “New T-Mobile” is set to compete with AT&T and Verizon. Whether consumers see the benefits of this merger in the coming years will likely depend on competitors enacting pro-consumer changes, DISH successfully entering the market, and T-Mobile continuing its successful brand strategy. Presuming these all take place, cell phone users will see increased network speeds and quality, more advanced technology, and ultimately lower prices in the near future. The merger’s approval, despite previous contentious rulings, might just work to benefit consumers and increase competition in contrast to its seemingly anticompetitive nature.

 

[1] Kurt Bauman, New Survey Questions Do a Better Job Capturing Mobile Use, UNITED STATES CENSUS (Aug. 8, 2018), https://www.census.gov/library/stories/2018/08/internet-access.html [https://perma.cc/DS43-DLNK].

[2] See, e.g., United States v. AT&T Inc., 541 F. Supp. 2d 2 (D.D.C. 2008); United States v. Phila. Nat’l Bank, 374 U.S. 321(1963).

[3] New York v. Deutsche Telekom AG, 2020 U.S. Dist. LEXIS 23716 (S.D.N.Y. Feb. 10, 2020).

[4] 15 U.S.C.S. § 18 (2019).

[5] Phila. Nat’l Bank, 374 U.S. at 364-66. See also Consol. Gold Fields PLC v. Minorco, S.A., 871 F.2d 252, 260 (2d Cir. 1989).

[6] Deutsche Telekom AG, 2020 U.S. Dist. LEXIS 23716 at *16-17.

[7] Id. at *60-61.

[8] Id. at *174.

[9] Id. at *99.

[10] Id. at *101-02.

[11] Id. at *99.

[12] Id. at *102.

[13] Id. at *29.

[14] Id. at *146.

[15] Id.

[16] Id. at *172-73.

[17] Id. at *145.

[18] Federal Trade Commission, Horizontal Merger Guidelines § 9.1 (Aug. 19, 2010).

[19] Deutsche Telekom AG, 2020 U.S. Dist. LEXIS 23716, at *136.

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Who is responsible for fixing the e-commerce problem surrounding counterfeit products?

Written By: Laura Odujinrin

The Rise of E-commerce

E-commerce sites, like Amazon, eBay, and Etsy, provide huge opportunities for small and medium business (“SMB”) owners to reach customers and grow business in a way that would be nearly impossible with traditional brick and mortar. These e-commerce sites also allow consumers to choose from a much larger pool of products and producers to find exactly the product they are looking for.

In 2018, Amazon, the world’s largest e-commerce platform, [1] had nearly two million SMBs using its e-commerce marketplace platform to reach and sell to customers. [2] Those SMBs sold nearly 4,000 products per minute, [3] totaling $160 billion dollars in sales. [4] The e-commerce industry is only continuing to grow, with sales expected to reach nearly 15 percent of total retail spending and more than $4 trillion dollars in spending in 2020.” [5] But, with increased access, growth, and opportunity for business owners and consumers alike, comes a challenge: counterfeit products.

The Rise of Counterfeit Products

A counterfeit product is a product “made in imitation of something else with intent to deceive.” [6] In 2018, U.S. Customs and Border Protection and U.S. Immigration and Customs Enforcement seized 33,810 counterfeit products that violated intellectual property rights and were worth an estimated $1.4 billion dollars. [7] The number of seized counterfeit products has more than doubled since 2009, and the retail price of seized products has continued to increase year after year. [8]

Many counterfeiters advertise their counterfeit products using language [9] and images copied directly from the original product’s page, [10] leading to many consumers unknowingly purchasing counterfeit goods. To make matters worse, counterfeit goods, unlike authentic goods, often do not adhere to any health or safety regulations, which can lead to the purchase of potentially dangerous and life-threatening products. [11] For example, a CNN investigation found that a counterfeit version of a popular car seat sold on Amazon “broke into pieces in a 30-mph crash test …, failing to meet the basic standards set by U.S. regulators.” [12]

To make matters worse, the burden of finding and reporting counterfeit products currently falls on the small business owners themselves, costing them precious time and money. [13] While a few of the e-commerce sites, like Amazon, offer services to help manage counterfeit products, fighting the counterfeit problem is akin to a never-ending game of “Whack-a-Mole” for many business owners, who successfully get one counterfeit product taken down only to find a new one pop up days or weeks later. [14]

Government Action

E-commerce sites have largely avoided legal liability by claiming that because the copyright products are sold by third party sellers and not by the site itself, the site is protected because it is not the seller of the counterfeit product, but merely a marketplace provider. [15]

In early March of 2020, the House proposed a bi-partisan bill, the Shop Safe Act, which aimed at “address[ing] the problem of the sale of unsafe counterfeit goods by incentivizing [e-commerce] platforms to engage in a set of best practices for screening and vetting sellers and goods, penalizing repeat offenders, and ensuring that consumers have the best (and most accurate) information available to them when they make their online purchases.” [16] The statute would provide clarity where case law has remained obscure, namely addressing the question of “when a platform can be held contributorily liable,” [17] by ensuring that e-commerce platforms who follow the Shop Safe Act’s best practices will not be held legally liable.

Problem Solved?

The Shop Safe Act is a great step in fighting the counterfeit products problem, but since it only pertains to “goods that have a health or safety impact … on consumers,” [18] it leaves many SMB owners, like  artists, creators, and designers whose products do not pose a threat to consumer health or safety, left to grapple with the problem on their own. Whether the Shop Safe Act or other programs developed by the e-commerce sites themselves will help is left to be seen. If all the stakeholders, like the government, e-commerce platforms, business owners, and consumers, can work together to combat the problem, a solution to this ever-growing problem can hopefully be found.

 

[1] Pamela Boykoff & Clare Sebastian, Fake and dangerous kids products are turning up for sale on Amazon, CNN BUSINESS (Dec. 23, 2019, 8:25 AM), https://cnn.com/2019/12/20/tech/amazon-fake-kids-products/index.html [https://perma.cc/B2DY-9N9P].

[2] 2019 Amazon SMB Impact Report, AMAZON at 2, https://d39w7f4ix9f5s9.cloudfront.net/61/3b/1f0c2cd24f37bd0e3794c284cd2f/2019-amazon-smb-impact-report.pdf [https://perma.cc/F6Y9-VD33] (last visited Mar. 17, 2020).

[3] 2019 Amazon SMB Impact Report, supra note 2, at 7.

[4] Id. at 3.

[5] SHOP SAFE Act of 2020, 116th Cong., 2d Sess. (proposed Mar. 2, 2020).

[6] Counterfeit, MERRIAM-WEBSTER, https://merriam-webster.com/dictionary/counterfeit [https://perma.cc/KDU9-KVPC] (last visited Mar. 17, 2020).

[7] U.S. Customs and Border Protection Office of Trade, Intellectual Property Rights Fiscal Year 2018 Seizure Statistics, U.S. CUSTOMS AND BORDER PROTECTION at 6, https://www.cbp.gov/sites/default/files/assets/documents/2019-Aug/IPR_Annual-Report-FY-2018.pdf [https://perma.cc/N4J5-QVHW] (last visited Mar. 17, 2020).

[8] 2019 Amazon SMB Impact Report, supra note 2, at 7.

[9] SHOP SAFE Act of 2020, 116th Cong., 2d Sess. (proposed Mar. 2, 2020).

[10] Nicole Nguyen, Stolen Artwork Is All Over Amazon – And Creators Want The Company To Do Something About It, Buzzfeed News (Jan. 23, 2019, 12:02 PM), https://www.buzzfeednews.com/article/nicolenguyen/amazon-counterfeit-art-sellers-fakes-copyright-infringement [https://perma.cc/9FA7-G5P6].

[11] Boykoff & Sebastian, supra note 1.

[12] Id.

[13] Id.

[14] Id.

[15] Alan Rappeport, Lawmakers Propose Making E-Commerce Companies Liable for Counterfeits, The New York Times (Mar. 2, 2020), www.nytimes.com/2020/03/02/us/politics/counterfeits-bill-china-amazon.html [https://perma.cc/RWH6-7LXH].

[16] SHOP SAFE Act of 2020, 116th Cong., 2d Sess. (proposed Mar. 2, 2020).

[17] Id.

[18] Id.

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Nothing is Truly Original: When does a pop star’s use of artists’ work cross the line?

Written By: Brienne Johnson

In an age where social media is prevalent, artists’ works are more easily dispersed and accessible to the public. Pop stars’ album art and links to music videos are displayed on various platforms, such as Instagram, Snap Chat, and Twitter. Many artists use these same platforms to share their art and gain a following. Artists, due to the crucial role of social media in society, are faced with the problem of choosing between protecting their intellectual property and posting their work online to stay active and relevant within the art community. [1] While creative industries take inspiration from life, the line between inspiration is a fine one. At what point do the concepts and ideas of others taken from the internet and social media cross the line from inspiration to theft?

Recently, many pop stars have been called out for using concepts of other artists’ work in their videos and album art without permission or credit. [2]For example, Chris Brown imitated multiple artists’ works in his recent music video, Wobble Up; Ariana Grande imitated  another artist’s image for her God is Woman video; and Kendrick Lamar imitated another artist’s work in his All the Stars video. [3] Both Kendrick Lamar and Ariana Grande settled with the artists over their claims where their imagery was used without permission. [4]

Tim Maxwell, a recognized lawyer in the field of art law, cites ignorance as the main cause. Music video directors and the pop stars’ creative teams assume once art is placed in the public domain, everyone is able to use it without any objections from the original artist. [5] However, young artists who publish their art on Instagram do not have the resources to hire a lawyer and pay the legal costs associated with copyright protections. [6] For an artist to bring an infringement claim, there must be copying that satisfies the requirement of “substantial similarity.” [7] Unfortunately, as long as the artists remain silent, nothing will be done to further the protection of their intellectual property.

[1] Sydney Gore, Artists Speak Out Against Chris Brown Over Copyright Allegations in “Wobble Up”, HIGHSNOBIETY (May 22, 2019), https://www.highsnobiety.com/p/chris-brown-wobble-up-video-copyright-allegations/.

[2] Lanre Bakare, ‘Not Again’: the online artists accusing pop stars of stealing work, THE GUARDIAN (June 6, 2019, 07:43 AM), https://www.theguardian.com/music/2019/jun/06/not-again-the-online-artists-accusing-pop-stars-chris-brown-of-stealing-their-work.

[3] Id.

[4] Sarah Cascone, Kendrick Lamar Denies Ripping Off the Artist Who’s Suing Him Over His ‘Black Panther’ Music Video, ART WORLD (May 22, 2018), https://news.artnet.com/art-world/artists-accuse-chris-brown-of-copying-1554196.

[5] Bakare, supra note 2.

[6] Id.

[7] Ringgold v. Black Entertainment TV, Inc., 126 F.3d 70, 75 (2d Cir. 1997).

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How an Indie Band Outsmarted Spotify

Written By: Nick Lavkulik

What if I could give you an unlimited supply of any coffee in the world at a rate of one coffee per hour for $10 per month? Next, what if I told you all of the coffee you were drinking was made by full-time baristas earning only $2.50 per hour at most?

This is the relationship between Spotify and artists. Here is how it translates.

Spotify pays roughly $0.006 to $0.0084 per stream to each track’s music rights-holder(s). [1] The holder can be split between many parties, including the record label, producers, songwriters, and performing artists. [2] A 5-minute song streamed twelve times within an hour amounts to approximately 10 cents.

A barista can make a maximum of 25 cups of coffee an hour. [3] Now, what if I told you four of these baristas figured out a way to make more coffee? An avant-garde flavoured coffee.

That’s Vulfpeck.

Vulfpeck, an independent funk band, uploaded an album receiving 3.72 million streams, amounting to approximately $18,000. [4] The album was complete silence. This album is very similar to John Cage’s completely silent piece, 4’33”, which can currently be found on Spotify. [5]

Why did people listen to this album? Vulfpeck told their fans to listen to their album, Sleepify, on repeat as they slept to fund an admission-free tour for their fans. [6] Each track lasted about 30 seconds and was titled with varying amounts of the letter “Z”. [7] Vulfpeck accompanied its release with promotional materials, including tweets, such as, “please don’t ‘shuffle’ sleepify. i know this might come of snobbish, but we spent a lot of time on track order.” [8]

Initially, Spotify thought Vulfpeck’s actions were nothing more than a “clever stunt.” [9] However, after the album generated revenue, Spotify requested its removal for violating the terms and conditions [10] as “artificially increasing play counts.” [11]

After the album was pulled from Spotify, Jack Stratton, one of the members of Vulfpeck, made a recommendation for Spotify’s payment model. [12] Instead of splitting up the revenue based on the percentage of total streams on the platform, it should be per subscriber. [13] Each subscriber pays the same fee, despite how one subscriber may stream more than the next. This technically means each stream from subscribers who stream more, is worth less.

Do you think Vulpeck should have had Sleepify removed from Spotify, and applying the   barista hypothetical, go back to making its equivalent of only $2.50 an hour? Should recorded music only exist as a promotional tool? Should Spotify’s ability to cut out the intermediate hoops to access music be considered? Is Spotify’s role even what we should be concerned about, since Spotify pays music holders 70% of the revenue it generates from the platform’s streams? [14] If not, is there something more fundamental but still practical to change for ensuring artists are properly compensated?

 

[1] Kabir Sehgal, Spotify and Apple Music should become record labels so musicians can make a fair living, CNBC (Jan. 26, 2018, 11:04 AM), https://www.cnbc.com/2018/01/26/how-spotify-apple-music-can-pay-musicians-more-commentary.html#targetText=Here’s%20the%20math%3A%20Spotify%20pays,producers%2C%20artists%2C%20and%20songwriters.

[2] Id.

[3] Peter Holley, Baristas beware: A robot that makes gourmet cups of coffee has arrived, WASH. POST (Nov, 11, 2019), https://www.washingtonpost.com/technology/2019/03/22/baristas-beware-robot-that-makes-gourmet-cups-coffee-has-arrived/#targetText=The%20machine%20can%20make%20100,four%20baristas%2C%20the%20company%20says.

[4] Harley Brown, Spotify Removes Vulfpeck’s ‘Sleepify’, BILBOARD (April 26, 2014), https://www.billboard.com/articles/business/6070030/spotify-removes-vulfpecks-sleepify.

[5] John Cage, 4’33” (The Sound Corporation 1991).

[6] Brown, supra note 4.

[7] Steve Knopper, ‘Silent Spotify Album’ Creator Talks Strategy Behind Unique Plan, ROLLINGSTONE (Mar. 21, 2014 2:45 PM), https://www.rollingstone.com/music/music-news/silent-spotify-album-creator-talks-strategy-behind-unique-plan-244404/.

[8] Vulfpeck (@vulfpeck), TWITTER (Mar. 13, 2014, 1:00 PM), https://twitter.com/vulfpeck/status/443838924587155456.

[9] Brown, supra note 4.

[10] Id.

[11] Jack Stratton, Why Spotify Pays So Little, LIT.VULF (Mar. 15, 2015), http://lit.vulf.de/spotify-so-little/.

[12] Spotify Terms & Conditions of Use, SPOTIFY https://www.spotify.com/us/legal/end-user-agreement/#s8 (last visited Oct. 10, 2019).

[13] Stratton, supra note 11.

[14] Id.

 

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Elected Officials Blocking Constituents on Twitter

Written By: William C. Besl Jr.

In high school, it was always a huge deal when someone “subtweeted” about a friend or even blocked their frenemy of the week. High school only lasts four years, but some people never grow out of it as seen in a case brought against an elected official in February. Missouri state representative Cheri Reisch blocked her constituent Mike Campbell after he retweeted a post condemning Reisch for accusing her opponent of being unpatriotic when the opponent put her hand behind her back during the national anthem.[1]

Most twitter disagreements are settled in the school halls, but the Western District of Missouri court will settle this issue. In Campbell v. Reisch, the court is less concerned with drama and more focused on the constitutional issues raised when an elected official essentially refuses to hear the opinion of a constituent. The case is still pending after Reisch’s motion to dismiss was denied in early February.[2]

The case primarily raises First Amendment freedom of speech concerns, but also addresses whether Representative Reisch acted under her elected authority when tweeting.[3] In response to these concerns, some have asked Twitter to step in and make a special verification symbol for elected officials and make it impossible to block individuals from that account.[4] Another suggestion is that Twitter should simply ban all politicians from its website.[5] Many may agree with this rather drastic measure after having to watch President Trump’s disaster of a Twitter feed for the past three years.

Last year, Knight First Amendment Institute at Columbia University sued President Donald Trump in the Southern District of New York.[6] This case raised the same First Amendment concerns as in Campbell.[7] The court awarded declaratory judgment ordering President Trump to unblock the plaintiffs, and it is now on appeal at the Second Circuit.[8] It is likely that Representative Reisch’s case will turn out the same.

With social media becoming ever more engrained in the political process, the heads of these networking platforms need to address these First Amendment concerns before the 2020 election cycle.

 

[1] Campbell v. Reisch, No. 2:18-CV-04129-BCW, 2019 WL 57433 (W.D. Mo. Feb. 8, 2019).

[2] Id. at 7.

[3] Id. at 2.

[4] Eric Goldman, Another Politician Probably Violated the First Amendment By Blocking a Constituent on Twitter, Technology & Marketing Law Blog (Feb. 16, 2019), https://blog.ericgoldman.org/archives/2019/02/another-politician-probably-violated-the-first-amendment-by-blocking-a-constituent-on-twitter-campbell-v-reisch.htm.

[5] Id.

[6] See Knight First Amendment Institute at Columbia University v. Trump, 302 F.Supp.3d 541 (S.D.N.Y. 2018).

[7] Id. at 549.

[8] Id. at 579.