07-26-2005
09-12-2003
Intellectual property law is a key variable that helps drive the so-called "new economy." Without the legal and economic protection that intellectual property law provides, companies would not have had the confidence to adopt a new business model in which intangible, easily reproducible goods and services have become among the most important things that are sold. Strong intellectual property protection is extremely important for companies operating within this new economic landscape, and they do not take kindly to others who - without authorization - use companies' trademarked, copyrighted and patented goods (in the case of celebrities, their images are protected by right of publicity law).
The issues surrounding both the Internet and intellectual property law are numerous and extremely complicated. In this essay, I will focus only on the use of intellectual property law by corporations to restrict freedom of expression.
Trademark law is increasingly being deployed to police how corporate logos are being used on the Web. This is significant because trademark law has no formally written "fair use" provision that is analogous to copyright law. Corporations and the courts don't view the corporate trademarks that litter our cultural landscape as culturally rich signifiers that can be used to help make sense of the world. Instead, they are viewed as private property first and foremost, and any attempts to use these trademarks in ways that property owners don't approve can result in costly lawsuits.
In order for people to comment on, critique, or fawn over the subject of a site, Web authors reproduce trademarked and copyrighted images. Although there are numerous websites that haven't had legal problems, those sites that go beyond simply promoting a television show, movie or fictional character and which are critical of their subjects often raise the ire of a corporate trademark owner. Copyright law is also being used in much the same way and, despite the "fair use" provision in the law, companies have been successful in shutting down types of expression they do not approve of because the cost of litigating a copyright infringement lawsuit is extremely high. In other words, when faced with the possibility of a lawsuit, potential infringers often choose not to risk a costly legal battle and, instead, decide not to engage in an activity that would bring the wrath of a corporation with a well-financed legal department.
The Internet is commercially-mediated terrain. As more and more of our interactions are mediated electronically and cultural texts are routinely distributed online, we are increasingly exposed to the policing powers of intellectual property owners. That is, when we create new cultural texts (and engage in everyday interpersonal discussions), we often reference existing cultural texts to convey certain meanings. In doing so, we cannot help but use privately owned signifiers when engaging in cultural production--signifiers that are copyrighted and trademarked by very protective corporate entities who care little for protecting freedom of expression.
My use of the phrase "freedom of expression" has a double
meaning, because I successfully trademarked the phrase. After developing
an academic interest in intellectual property law, I grew increasingly
concerned with the way in which copyright, trademark and patent laws
were being used to gobble up things that had previously been assumed to
be in the public domain. Pharmaceutical companies, for instance, have
patented human genes associated with diseases and common phrases like
"home style" have been trademarked by the food company Mrs. Smith's,
which threatened to sue Mrs. Bacon (the owner of a small St. Petersburg,
Fla. bakery) for her unauthorized use of the phrase.
1
As a kind of socially conscious prank, I applied with the U.S. patent and trademark office to register "freedom of expression" as a trademark, and in 1998 I received a certificate that stated that I was the proud owner of the mark. It was registered only under Class 16 of the international schedule of classes of goods and services, which covers, generally, "printed matter" and the like. But even though I can't prevent someone from using the term in all situations, I can still sue for the unauthorized use of "freedom of expression" in some contexts - an irony that amuses (and scares) me to no end.
Regardless of how one feels about the ethics of manipulating the media, I have found media pranks to be an effective, interesting, and unconventional ways of engaging in cultural criticism beyond the limited scope of academia. Employing the services of my old high school prankster friend Brendan Love, who posed as the publisher of a fictional punk rock magazine also titled Freedom of Expression, I started to lay the groundwork for my plan. To add legitimacy to this potential news story, I hired Attorney at Law Joan R. Golowich (who did not know this was a joke) to send a letter ordering Brendan to cease and desist his use of the phrase. Before I had my first meeting with Ms. Golowich, my boss at Amherst College Library, Margaret Groesbeck, declared, in the same words someone else used a few years earlier, that this lawyer would "laugh me out of her office." Thankfully, I learned that intellectual property law is entirely humorless, and after informing Ms. Golowich of my intention to sue someone for using freedom of expression® without permission and after she examined my documents, she confidently told me that we had a case and that she would draft a letter to Mr. Love immediately.
I made copies of the letter and my trademark certificate and sent them, along with a press release, to local media. The point of this particular media prank was to "play it straight" and never let on to a reporter my intention to engage in social commentary -- I would let the news story itself do the talking. That is, rather than someone reading a quote from me stating "I'm concerned with the way intellectual property law facilitates the appropriation of significant aspects of our culture by corporations... blah blah blah," I wanted to orchestrate the story in a way that newspaper readers would come to that conclusion on their own. I did my best to sound serious when a woman with a wonderfully rhyming name, Mary Carey, interviewed me on behalf of the Daily Hampshire Gazette.
The story, which fittingly appeared in the Fourth of July
weekend edition on the local section's front page, was cleverly titled
"Freedom, an Expression of Speech."
2
Carey did a good job of writing a balanced, "objective" story by
interviewing both Brendan and myself, but it was nonetheless slanted in
the direction of highlighting the absurdity of someone being able to own
freedom of expression®. The article closed with the following
poker-faced quote from myself, "I didn't go to the trouble, the expense,
and the time of trademarking Freedom of Expression just to have someone
else come along and think they can use it whenever they want."
3
Unfortunately, the
Daily Hampshire Gazette
refused to give me permission to reprint the article.
Distinctions Between Intellectual Property Laws
Copyright, trademark, and patent law protect different types of cultural expression or information. They have emerged out of distinct histories, but people tend to use them interchangeably. For instance, in different parts of the Daily Hampshire Gazette article, the reporter referred to freedom of expression® as both a trademarked and a patented good. For her, the newspaper readers, and some readers of this book, these two terms might mean the same thing, but they are certainly not. So to alleviate any confusion, I will provide a very brief overview of patent, copyright and trademark law in the U.S., as well as the body of law that protects celebrity images - the right of publicity.
Copyright Law. Copyright applies to all types of original expression,
including art, sculpture, literature, music, songs, choreography,
crafts, poetry, flow charts, software, photography, movies, CD-ROMs,
video games, videos and graphic designs.
4
Copyright only applies to literal expression, and not the
underlying concepts and ideas of that expression (that is, you cannot
copyright an idea).
5
The difference between an idea and the protected expression of
that idea highlights the way Enlightenment and Romantic concepts of
originality and authorship are deeply embedded in contemporary copyright
law, a subject I will return to later.
There is a strong connection between the rise of capitalism, the
invention of the printing press, and the commodification of literary and
artistic domains, and copyright law was the first piece of legislation
to arise from the collision of the above-mentioned concepts.
6
In 1710, Britain passed the Statute of Anne, which was akin to
modern copyright law, and in 1790 the U.S. Congress passed a similar law
long before most major European countries. This is not surprising
considering the fact that an early draft of the Declaration of
Independence sought to protect life, liberty and "property" rather than
"the pursuit of happiness," as in the well-known phrase contained in the
final draft.
Copyright owners are extremely powerful and have at times flexed
significant lobbying muscle. For instance, until 1998 the period of
copyright protection lasted for the life of the author plus 50 years
unless the creator was a business in which case the period of protection
lasted for 75 years. But many of the Walt Disney's most lucrative
character copyrights were due to lapse near the turn of the century,
with (horror of horrors!) Mickey Mouse passing into the public domain in
2004, and Pluto, Goofy and Donald Duck following suit in 2009.
7
Disney, along with the Motion Picture Association of America
(MPAA), heavily lobbied Congress to pass legislation to extend copyright
coverage for an extra 20 years, which Congress did.
8
Trademark Law. As a form of intellectual property law, trademark law
developed from a body of common law that was concerned with protecting
commercial marks from being misused and misrepresented by competing
companies.
9
Trademark law is also a federal statute and it grew out of
nineteenth century court decisions surrounding "unfair competition"
business practices. Trademark law is concerned with how businesses may
"identify their products or services in the marketplace to prevent
consumer confusion, and protect the means they've chosen to identify
their products or services against use by competitors."
10
Among the things that can be trademarked are distinctive words,
phrases, logos and graphic symbols used to identify a product or
service. Examples include MacDonald's golden arches, Prince's
gender-bending squiggle symbol, or Kraft Real Cheese. Trademark law is
not simply limited to protecting symbols, logos, words or names; it also
covers shapes, sounds, smells, numbers and letters. (In 1997, hip-hop
star Warren G sued country star Garth Brooks for the unauthorized use of
the lower case letter "g," which he had trademarked.)
11
Patent Law. Patent law protects from unauthorized commercial use certain
types of inventions registered through the PTO, which grants three types
of patents. The first, utility patents, are granted to useful inventions
that fit into at least one of the following categories: "a process, a
machine, a manufacture, a composition of matter or an improvement of an
existing idea that falls into one of these categories."
12
The second, design patents, "must be innovative, nonfunctional
and part of a functional manufactured article"; a bottle or flashlight
design that doesn't improve functionality would qualify.
13
A plant patent, the third type, "may be issued for any asexually
or sexually reproducible plants (such as flowers) that are both novel
and nonobvious."
14
This last type of patent covers living matter and is relatively
recent, the product of a 1980 Supreme Court decision that ruled that an
applicant could patent a genetically engineered bacterium.
15
This type of patent expanded, by the mid-1990s, to include human
genes, cell lines, proteins, genetically engineered tissue, and
organisms.
16
Right of Publicity Law. The oddball in this list, right of publicity law, evolved from
legal principles different from copyright, trademark and patent law.
Nevertheless, right of publicity, which protects celebrity images from
being appropriated in a commercial context without permission, functions
in much the same way these other intellectual property laws do. Like
trademark law, it does not have a "fair use" component written into law,
thus making it easier for celebrities to regulate the contexts in which
their images appear. Right of publicity law descends from right of
privacy law, and it came into existence to meet a particular social and
economic need that developed over the twentieth century. Raymond
Williams has argued that the logic of capitalism necessarily requires
previously untouched areas of cultural activity to be brought into this
web of commodity relations. The transformation of right to privacy, a
nonproprietary law, into right of publicity, a proprietary law, is an
example.
17
The trademarking of important cultural texts is very significant
because, unlike copyright law, it has no formally written "fair use"
statute. To briefly explain, "fair use" evolved from court decisions
that recognized the fact that absolute control of copyrighted works
would circumscribe creativity and, perhaps more importantly for elite
lawmakers, limit commerce.
18
The "fair use" statute recognizes that, in certain contexts,
aspects of copyrighted works can be legally reproduced, and it allows
for the appropriation of copyrighted works for use in, for instance,
"criticism, comment, news reporting, teaching... scholarship, or
research," according to the 1976 US copyright statute.
19
Fair use may apply to a variety of other situations not listed
above, and in determining whether a work is fair use, the U.S. Congress
outlined the following four factors:
(1) The purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes
(2) The nature of the copyrighted work
(3) The amount and substantiality of the portion used in relation to the copyrighted work as a whole
(4) The effect of the use upon the potential market for or
value of the copyrighted work
20
The "fair use" statute was written in order to, in part, protect
freedom of expression, but because trademark law has no formally written
"fair use" provision that acknowledges privately owned images as
culturally rich signifiers, it opens citizens up to a newly emergent
form of censorship. I will illustrate this with an example. As much as
some televangelists may have desired it, Jesus Christ cannot be
trademarked. Without any intellectual property protection for Jesus'
image, churches cannot suppress the presentation of artist Andres
Serrano's
Piss Christ
-- the controversial photograph of a crucifix submerged in a
glass of urine -- in the same way that Disney can legally enjoin an
offensive work of art that appropriates its trademarked characters. Just
as it is impossible for Christian churches to trademark the image of
Jesus Christ, it is unthinkable that the Bible could be copyrighted.
However, the Church of Scientology - a religion that emerged in the age
of intellectual property law - copyrighted its religious writings, and
it has filed numerous copyright infringement lawsuits throughout the
past few decades to maintain control over the context in which those
writings are presented.
21
Intellectual Property Law and the Internet
In recent years, the Internet has been a place where Scientology
dissidents have organized and traded information, and many of the online
critiques that have used Scientology's copyrighted and trademarked
images have prompted intellectual property lawsuits.
22
For instance, in 1996 a judge ruled in favor of the Church of
Scientology when a critic of the Church published copyrighted
Scientology writings on the Internet as part of an ongoing discussion
among church dissidents. Giving an example of a person who wants to
engage in a critique of Christian religious beliefs needing Bible text
to work from, one defendant's lawyer unsuccessfully argued that the use
of the copyrighted documents were necessary to engage with and debate
the Church of Scientology's ideas.
23
The Church of Scientology has won numerous copyright cases
against those who have critiqued the Church, and its court battles
pertaining to the Internet helped set the first precedents concerning
copyright and cyberspace.
24
The Internet is an increasingly significant venue where
individuals can also use celebrity images to help make meanings and
build communities among people with common interests. It is also a site
where celebrities have intervened to shut down uses of their image they
do not approve.
Celebrities are not the only ones who have intervened to shut
down web sites; corporations that produce various cultural texts
(television shows, motion pictures, etc.) have forced fan web sites to
remove copyrighted and trademarked materials. The Fox network has
vehemently protected its intellectual properties, and was one of the
first television networks to pursue legal threats and actions against
infringers in the early days of the Internet. Early on, they sent cease
and desist letters to
Simpsons
sites and, notably, sites devoted to the
X-Files. This angered many fans who felt that the success of the
fledgling show (created by Chris Carter) was due in part to the early
support and buzz created by the Internet.
25
Many times corporations that want to eliminate unauthorized uses of their intellectual properties want to control the context in which their copyrights and trademarks are exhibited, particularly when shown in an unfavorable context. In other instances, companies are driven by a simple desire to protect their own investments. A college student, Gil Trevizo, launched a web site devoted to another Chris Carter-created show, Millennium, before Fox itself had launched its official site, which cost $100,000 to create and which the network planned to debut on the Web the night the show premiered. The studio balked and sent Trevizo a letter from the legal department threatening a lawsuit unless all copyrighted and trademarked materials were removed from the site.
The student, forced to comply with Fox's demands, stated, "They
don't understand an active medium where you have to interact with people
as a community, rather than purely as customers."
26
This prompted an e-mail "flame war" against the studio, with one
perceptive fan, Lori Bloomer, arguing, "If you look at the official
sites, they tell you exactly what they want you to know."
27
She continued, "It is becoming clear that this is not just a
matter of either copyright or trademark ... but that Fox execs want
complete and total control over how every facet of their company is
portrayed on the Internet."
28
With the numerous site closings, some site operators satirized
Fox's actions by playing on instantly recognizable lines from the
X-Files: "They're shutting us down, Scully" and "Free speech is out
there."
29
Jill Alofs - the founder of Total Clearance, a firm that specializes in multimedia and Web site clearances - stated:
An individual fan may create a site and not think that they are
doing anything bad, but that is not necessarily the case in the eyes of
all entertainment companies.... The entertainment companies want to have
a sense of control over their properties, and often these Web sites do
not fit in with the marketing and imaging that companies want to
present.
30
Of course, fan sites are not the only worry of corporations;
even more troublesome is the targeting by IP-owning corporations of
sites that criticize them. Increasingly, companies are using trademark
law to silence criticism because of the law's lack of a formally defined
"fair use" provision. For instance, a former employee of Kmart, Jim
Yagmin, began a "Kmart sucks" site in 1995, where the teenager painted
an unflattering portrait of his former employer.
31
Yagmin then received a threatening letter from Kmart's lawyers
ordering him to: "(1) Remove the icon `K' and any appearances of `K'
with the likeness of that used by Kmart, including the red Kmart and the
blue and gray Kmart sucks. (2) Remove the name Kmart from the `title' of
any page. (3) At the bottom of `The Eternal Fear' page remove the lines
`Go steal something from Kmart today, and tell em Punk God sent ya'."
32
Kmart spokeswoman Mary Lorencz stated: "We monitor the use of
our trademark everywhere, including cyberspace.... We've spent a great
deal of time and money creating a positive image for it, and it's
obviously important to us."
33
Despite the fact that Yagmin replaced the Ks with Xs, the
modification was not enough for his nervous Internet service provider,
which told him the site would have to be removed completely.
In another example of the way in which intellectual property law
is used ideologically, Zack Exley, a University of Massachusetts-Amherst
graduate student, registered the unclaimed domain names "gwbush.com,"
"gwbush.org," and "gbush.org." In 1999, he set up a satirical web site,
a sort of "parallel universe" Bush campaign site. The same year the Bush
campaign sent Exley a letter threatening to sue him if he continued to
use their copyrighted and trademarked images on his site. He promptly
removed the images, though the content of the site still remained
critical of the Bush campaign. Exley's actions pushed the campaign to
buy 260 other domain names, including the hilariously paranoid
registering of such addresses as "bushsucks.com," "bushsux.com" and
"bushblows.com."
34
(If you type in the domain names bushblows.com, bushsucks.com or
bushbites.com, it sends you directly to the official Bush-Cheney web
site. In fact, many derogatory adjectival combinations will send you to
the campaign's website - try it, it's a great party trick.)
At the time, Bush could do nothing about Exley's registering of
these domain names, but since then it has become easier for famous
people to secure control of a domain name that mirrors their own name.
In 2000, pop singer Madonna won a case in front of the United
Nations-affiliated World Intellectual Property Organization, in which
she sued a porn site operator to transfer the domain name to the singer.
WIPO's fast-track arbitration system has allowed corporations, music
groups and celebrities to gain control of domain names that they argue
were registered in bad faith. WIPO has ruled in favor of, for instance,
Julia Roberts and Jethro Tull (which, of course, is not a person, but a
band name).
35
Among other eyebrow-raising decisions, the panel also ordered
the domain name Corinthians.com, a site devoted to the Bible, to be
transferred to a Brazilian soccer team of the same name.
36
By 1999, trademark law had expanded to protect this previously
untouched aspect of the Internet.
37
Numerous courts have found in favor of trademark-owning
companies in "cyber-squatting cases." "Cyber-squatters" are those who
have registered domain names that echo the trademarks owned by a
company, such as the name "DonaldFuck.com." Sally M. Abel, International
Trademark Association board of directors member, stated: "Courts as a
whole are bending over backward to respect trademark rights.... [The
courts] appear to have accepted that this is a commercial medium."
38
That is, because the Internet is a site of commercial activity,
the conception of trademarks purely as property should win out over the
idea that they are important texts that can be used to engage in
discourse about contemporary life.
At the end of 1999, trademark-owning corporations won a major
lobbying victory when the U.S. Congress passed the Anti-Cyber Squatting
Consumer Protection Act, which ensures penalties of up to $100,000 for
people who use trademarked names in their domain names (such as
"CokeSucks.com," etc.).
39
In the wake of the passage of this bill, companies have been
particularly aggressive in pursuing legal action against those who
incorporate their trademarks into domain names.
In 2000, a judge from the Southern District of New York ruled in favor of Mattel, Inc. in a case involving a porn site that had registered the name "Barbiesplaypen.com." The judge initiated a cease-and-desist order, prompting the site to shut down. At the time of the ruling, a Mattel spokesperson stated that the company would defend its brand names even when there have been no customer complaints, and in this case the company stated that it wouldn't risk having people think that Mattel was involved in a pornographic site. The Houston-based lawyer Robert Lytle, a legal expert on cyber-squatting, stated, "The case strengthens the ability of the mark owner to protect its mark from tarnishment from uses on the Web."