quincy
Senior Member
First, I agree one hundred percent with your last comment about anti-SLAPPs. I believe only four states have followed California's lead with statutes, but the climate is certainly right for other states to enact similar laws.
To a certain extent you have something similar to anti-SLAPPs showing up more frequently with online actions. When you have supposed defamation (or invasion of privacy or whatever) appearing online, courts are often now requiring evidence of this (you must prove the merits of the case) or they require an action be filed based on your evidence, before they will issue either a subpoena to a website to reveal an anonymous poster or before an injunction is issued ordering the removal of the questioned material. Websites, too, will rarely remove material without this court order, in an effort to protect free speech rights.
This is a change from earlier, when websites would remove material upon contact. Of course, this is in large part due to the fact that ISPs are not liable for the content of what is posted now (generally), so they are not as worried about deleting illegal content. But what this has done is eliminate, in many instances, the frivolous or bad faith suits, or those filed to intimidate an opponent. There is less "silencing" of those who are expressing honest and protected opinions.
Okay. Here are some cases for you to review:
KP Permanent Make-Up, Inc v Lasting Impressions, which determined that descriptive terms used as a trademark CAN be fair use when used by others as description. In this case, however, the trademark was, in fact, descriptive, whereas "Mariah Carey" as a trademark is not and could, therefore, have difficulty being shown to be descriptive and a fair use of the trademark.
Moseley v Secret Catalogue, Inc. I only mention this case because you mentioned it, and in it the court determined that there must be actual evidence of dilution. HOWEVER, the Trademark Dilution Reform Act specifically reverses Moseley.
Here are the two cases which, to my way of thinking, may be most applicable to breakaway's use of "Mariah Carey" on his website:
Abdul-Jabbar v GMC, 9th Cir. 1996, where the Court found that the use in advertising of Abdul-Jabbar's real name was an unauthorized use of his name, based on the fact that celebrities trade off their names with advertising deals and endorsements. The Court held that the use was probably NOT a fair use.
Brookfield Communications v West Coast Entertainment Group, 9th Cir., 1999, where the Court decided that West Coast Entertainment's use of the trademarked "MovieBuff" as a descriptive term ( they used "moviebuff") could lead to "initial consumer confusion" as consumers could mistakenly click on the West Coast link from a search engine, thinking they were clicking on Brookfield's trademarked "MovieBuff" site.
There are others, but I will stop for now.
My concern with breakaway's use of Mariah Carey's name, especially as a "banner" on his webpage, is that his use will lead to initial consumer confusion when they link on his site expecting to read about Mariah Carey, and that it is an unauthorized use of her name, the use of which attracts attention to his site by trading off her famous name and trademark, and then we have the potential tarnishment of her trademark when used as a descriptive term for an unknown singer who probably is NOT the next Mariah Carey, and then we get into potential deceptive advertising (depending on how Mariah Carey's name is used). . . .
There are certainly ways to use trademarks (and copyrighted material and famous people's names and images) in writing. Writers use them all the time. But what a writer needs to avoid are the areas I outlined earlier. The law allows for the fair use of names and protected materials, but with limits. And whenever you get into a "commercial-type" use of the names or protected materials, you invite a lawsuit.
If breakaway wanted to compare the unknown singer to Mariah Carey, he can - but he must be careful as to how he does this. In a review of the unknown singer's CD, he can mention a comparison to Mariah Carey, but he should really be specific as to how the unknown singer compares and who is doing the comparing. That falls into opinion then and not fact. It would be a false fact if he merely wrote this singer was the "next Mariah Carey." It would be opinion if he wrote that to him (or to Joe Blow or to a record producer), this unknown singer looks like Mariah Carey, has the vocal range of Mariah Carey, dresses like Mariah Carey. False facts are dangerous. Opinion is protected free speech (although, as has been mentioned, even protected speech can result in a lawsuit).
To a certain extent you have something similar to anti-SLAPPs showing up more frequently with online actions. When you have supposed defamation (or invasion of privacy or whatever) appearing online, courts are often now requiring evidence of this (you must prove the merits of the case) or they require an action be filed based on your evidence, before they will issue either a subpoena to a website to reveal an anonymous poster or before an injunction is issued ordering the removal of the questioned material. Websites, too, will rarely remove material without this court order, in an effort to protect free speech rights.
This is a change from earlier, when websites would remove material upon contact. Of course, this is in large part due to the fact that ISPs are not liable for the content of what is posted now (generally), so they are not as worried about deleting illegal content. But what this has done is eliminate, in many instances, the frivolous or bad faith suits, or those filed to intimidate an opponent. There is less "silencing" of those who are expressing honest and protected opinions.
Okay. Here are some cases for you to review:
KP Permanent Make-Up, Inc v Lasting Impressions, which determined that descriptive terms used as a trademark CAN be fair use when used by others as description. In this case, however, the trademark was, in fact, descriptive, whereas "Mariah Carey" as a trademark is not and could, therefore, have difficulty being shown to be descriptive and a fair use of the trademark.
Moseley v Secret Catalogue, Inc. I only mention this case because you mentioned it, and in it the court determined that there must be actual evidence of dilution. HOWEVER, the Trademark Dilution Reform Act specifically reverses Moseley.
Here are the two cases which, to my way of thinking, may be most applicable to breakaway's use of "Mariah Carey" on his website:
Abdul-Jabbar v GMC, 9th Cir. 1996, where the Court found that the use in advertising of Abdul-Jabbar's real name was an unauthorized use of his name, based on the fact that celebrities trade off their names with advertising deals and endorsements. The Court held that the use was probably NOT a fair use.
Brookfield Communications v West Coast Entertainment Group, 9th Cir., 1999, where the Court decided that West Coast Entertainment's use of the trademarked "MovieBuff" as a descriptive term ( they used "moviebuff") could lead to "initial consumer confusion" as consumers could mistakenly click on the West Coast link from a search engine, thinking they were clicking on Brookfield's trademarked "MovieBuff" site.
There are others, but I will stop for now.
My concern with breakaway's use of Mariah Carey's name, especially as a "banner" on his webpage, is that his use will lead to initial consumer confusion when they link on his site expecting to read about Mariah Carey, and that it is an unauthorized use of her name, the use of which attracts attention to his site by trading off her famous name and trademark, and then we have the potential tarnishment of her trademark when used as a descriptive term for an unknown singer who probably is NOT the next Mariah Carey, and then we get into potential deceptive advertising (depending on how Mariah Carey's name is used). . . .
There are certainly ways to use trademarks (and copyrighted material and famous people's names and images) in writing. Writers use them all the time. But what a writer needs to avoid are the areas I outlined earlier. The law allows for the fair use of names and protected materials, but with limits. And whenever you get into a "commercial-type" use of the names or protected materials, you invite a lawsuit.
If breakaway wanted to compare the unknown singer to Mariah Carey, he can - but he must be careful as to how he does this. In a review of the unknown singer's CD, he can mention a comparison to Mariah Carey, but he should really be specific as to how the unknown singer compares and who is doing the comparing. That falls into opinion then and not fact. It would be a false fact if he merely wrote this singer was the "next Mariah Carey." It would be opinion if he wrote that to him (or to Joe Blow or to a record producer), this unknown singer looks like Mariah Carey, has the vocal range of Mariah Carey, dresses like Mariah Carey. False facts are dangerous. Opinion is protected free speech (although, as has been mentioned, even protected speech can result in a lawsuit).