TRADEMARK BOARD RULES THAT NAMES OF NEWSPAPER COLUMNS MAY BE TRADEMARKS
The Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office (USPTO) has found that the titles of newspaper columns may be subject to federal trademark protection. In re The New York Times Co., Serial Nos. 90106071, 90112154, 90112577, 90115155, 90115491, and 90115337 (March 30, 2023) [precedential] (Opinion by Judge Angela Lykos).
The New York Times Company (NYT) applied to register as trademarks the names of six newspaper columns for the following goods in International Class 16 (printed matter):
- THE NEW OLD AGE for “Columns on the subject of science, aging, health, and personal finances”;
- A GOOD APPETITE for “Columns on the subject of cooking, food and dining”;
- HUNGRY CITY for “Columns on the subject of restaurants, cooking, food and dining”;
- WORK FRIEND for “Columns on the subject of business, office, money, careers and work-life balance”;
- OFF THE SHELF for “Columns on the subject of personal finance, work-life balance, careers, and business”; and
- LIKE A BOSS for “Columns on the subject of careers, work and business”.
The PTO Examining Attorney assigned to review the applications refused to register the marks on the grounds that the NYT’s specimens of use “identify only individual portions of [A]pplicant’s publication” and therefore are not used on separate goods in trade. The refusals were limited to the goods in International Class 16; thus, the NYT’s related online services in International Class 41 (education and entertainment services) were not part of the consolidated appeal to the TTAB.
According to the TTAB, “In general, incidental items that an applicant uses in conducting its business (such as letterhead, invoices, reports, boxes, and business forms), as opposed to items sold or transported in commerce for use by others, are not goods in trade” (citing In re S’holders Data Corp., 495 F.2d 1360, 1361 (CCPA 1974) (reports not goods in trade, where applicant is not engaged in the sale of reports, but solely in furnishing financial reporting services, and reports are merely a conduit through which services are rendered) (other citations omitted). The TTAB noted that “[h]istorically, the USPTO has treated non-syndicated print newspaper columns in International Class 16, and by logical extension publications recorded or downloaded on International Class 9 electronic media such as CD-ROMs, as failing to rise to the level of ‘goods in trade’.” But the TTAB also noted that the “advent of the Internet” raised the danger “of adopting an overly rigid approach by making semantic distinctions between columns offered in print or digital media” (citing Ludden v. Metro Weekly, 8 F. Supp. 2d 7 (D.D.C. 1998) (on summary judgment the district court found that the title of a newspaper column can be protected as a trademark).
The TTAB said that the applicable test was whether the goods are “(1) simply the conduit or necessary tool useful only in connection with the applicant’s primary goods or services; (2) so inextricably tied to and associated with the primary goods or services as to have no viable existence apart from them; and (3) neither sold separately nor of any independent value apart from the primary goods or services” (citing Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376, 1382 (Fed. Cir. 2012) (other citation omitted).
With regard to the first factor, the TTAB said that the NYT’s “columns in print format are not simply a ‘conduit or necessary tool’ to obtain Applicant’s primary goods, The New York Times newspaper in print format.” Next, citing the results of Google searches for the columns in question, the TTAB said that the columns were “not ‘so inextricably tied to and associated with’ Applicant’s print newspaper as to have ‘no viable existence’ apart from the newspaper.” Finally, the TTAB noted that although it had “no evidence that the print columns are ‘separately sold’ or syndicated, the record shows they possess ‘independent value’ separate and apart from Applicant’s newspaper as a whole.” And the TTAB added that “[an actual discrete sale of the columns is unnecessary to meet the ‘use in commerce’ requirement, provided that the goods are ‘transported’ in commerce” (citing Lens.com, 686 F.3d at 1380).
Thus, the TTAB concluded that “the record shows that Applicant’s marks identify individual columns of Applicant’s print newspaper, distinguishing them from columns of other publishers’ newspapers, and may be perceived as such by the public” (citation omitted). According, the TTAB reversed the Examining Attorney’s refusal to register the NYT’s marks in International Class 16.
The TTAB noted, however, that its “decision is not dependent on intermixing or conflating Applicant’s online column services in International Class 41 with the print columns in International Class 16.” The TTAB also noted that it was “not creating a per se rule that all non-syndicated newspaper columns existing in print format are goods in trade.”
COURT DISMISSES COPYRIGHT SUIT BASED ON SELF-POSED PHOTOS OF PLAINTIFF
The U.S. District Court for the Northern District of Illinois recently dismissed a copyright-infringement lawsuit based on photographs posed by the plaintiff and taken with his camera. Shah v. NYP Holdings, Inc., No. 21-cv-06148, 2023 WL 266511 (N.D. Ill. Jan. 18, 2023). Former aspiring actor Vivek Shah brought the suit based on the use by several media entities of photos of himself with various celebrities at Hollywood parties.
Prior to the suit Shah served almost five-and-a-half years in prison for attempted extortion after mailing millionaires letters threatening to kill their families if they failed to pay him millions of dollars. After learning, soon after his release, of the earlier use of the photos to publicize his crime, Shah registered the copyrights in them and then filed his lawsuit. The suit alleged copyright infringement, violation of the Digital Millennium Copyright Act (DMCA), violation of the Trademark Act, and violations of state statutory and common law.
According to the court’s decision, “Shah maintains that he brought a phone or a camera to these events, having pre-selected many of the camera’s settings, such as shutter speed, white balance, [camera sensitivity], metering type, and exposure value.” Shah asserted that “he would pose himself and a celebrity and hand his phone to a friend or bystander to take the photograph.” He also asserted that “he was the sole owner of the camera, never gave creative control to the photographer, and immediately took the camera back into his possession after the photograph was taken.”
The court noted that under U.S. copyright law a photographer—that is, the person who actually takes a picture—normally owns the copyrights in the photos that the photographer creates. Because Shah had not taken the photos, the court said, he was not the sole author of them.
Shah, who filed his suit without benefit of counsel, did not allege that he was the joint author of the photos, but the court also considered that possibility, finding that his “allegations fail to reveal any intent for both himself and the photographer to be joint authors.” Given that Shah was neither the author nor the joint author of the photos and had not alleged that he had obtained the copyrights in them “by operation of law,” the court said that he could not rely on his registration certificate to show that he owned the copyrights.
Shah’s DMCA allegation was that the defendants had falsely attributed copyright ownership and authorship of the photos to Facebook and the online movie database IMDb, where Shah had posted them. But the court found that because Shah had not “sufficiently alleged ownership in a copyright,” he had not “alleged any injury” and therefore “lack[ed] standing to bring a DMCA claim.”
Finally, the court briefly addressed Shah’s other allegations. Shah claimed that the defendants’ use of the photos “caus[ed] consumer confusion in violation of the [Trademark] Act.” The court held that Shah had not alleged ownership of any trademark and that his trademark claim “simply mirror[ed] his copyright infringement claim.” And the court held that Shah’s state-law claims were preempted by his copyright claims, which are exclusively federal in nature.
For those reasons the court granted the defendants’ motion to dismiss with respect to all of Shah’s claims but also granted Shah 30 days to file a further amended complaint. Shah subsequently filed such a complaint, and the case remains pending.
One aspect of the controversy may have implications for the future. The court said in a footnote that “Shah’s claim raises an interesting question: who should hold copyright in a photograph when the photographer only takes the photo upon being asked?” The court noted that U.S. copyright law “does not reflect the current circumstances surrounding cellphone photo etiquettes,” suggesting the possibility that a court may eventually take up that issue.