Pennsylvania Supreme Court Strikes Down Ridiculously Overbroad Trademark Law

from the getting-it-right dept

Thu, Oct 29th 2009 4:49pm — Mike Masnick

Ima Fish writes "The Supreme Court in Pennsylvania struck down a state trademark law (pdf) which essentially criminalized any use of a trademark without permission of the trademark holder. There were no exceptions at all, including free speech rights.

The Opinion noted "that the use of the word 'Nike' on a sign at a protest rally, such as 'Nike uses sweatshop labor' would fall within the reach of the Trademark Counterfeiting Statute because the activity would involve the unauthorized use of a word or term used by another to identify goods or services."

The Court went farther and stated, "Taken to the extreme, even our use of the words 'Nike' and 'Penn State' in this opinion without the permission of the company or the university would fall under the current definition of a counterfeit mark. Clearly, the statute prohibits a substantial amount of protected speech."

It's nice to see courts get it right every so often. I wish it happened more.

There was also a concurring opinion and two separate dissenting opinions (all pdfs, of course). Definitely great to see the court get this right, but it makes you wonder what legislators were thinking when they put such a law in place.

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Filed Under: pennsylvania, trademark

23 Comments

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Anonymous Poster, 29 Oct 2009 @ 4:58pm

I'd love to know whose back pockets the two dissenters were in.
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1DandyTroll, 29 Oct 2009 @ 5:24pm

I guess those that made that claim actually use google or TiVO, when others say to 'em to just Google it, or just TiVO the show, because if they didn't, if they used another search engine or used another recorder, in their eyes they'd be friggin' criminals.
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Brian (profile), 29 Oct 2009 @ 5:30pm

"it makes you wonder what legislators were thinking when they put such a law in place." Come on now really, don't you remember your politics 101 class?!???? "NEVER think, just do and say what the lobbyist pays you to"
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Anonymous Coward, 29 Oct 2009 @ 5:44pm

IMHO, states should not be involved in laws regarding trademarks, copyright, or patent, as that is a federal domain. The laws should be struck down on that basis alone.
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Anonymous Coward, 29 Oct 2009 @ 6:19pm

Legislators...think? That's the real news story here.
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Anonymous Coward, 29 Oct 2009 @ 6:58pm

Legislator don't think, there is no provision in the constitution of any country that I know of that hint at thinking at any level.

For the most part I just think that governments today react, but thinking is long gone.

There is little accountability or ways to measure anything and even when it is measured legislator often ignore their own findings in favor of some self interest.
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Ima Fish (profile), 29 Oct 2009 @ 7:20pm

"it makes you wonder what legislators were thinking when they put such a law in place"

The legislators didn't think. They simply passed the law as written by lobbyists.
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Anonymous1, 29 Oct 2009 @ 7:27pm

@Ima Fish: LOL.

You know the decision is correct when they can't even muster
a good dissenting opinion. If you read the link,
it's something to the effect of "I actually totally agree
with you on the facts here, I just disagree with your inconsistent logic you used between this case and another".
In other words the dissenting justice was actually engaged
in school yard tactics,IMO, than a true dissent, which is awesome all on its own.
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Anonymous Coward, 29 Oct 2009 @ 7:42pm

"a state trademark law (pdf) which essentially criminalized any use of a trademark without permission of the trademark holder. There were no exceptions at all, including free speech rights."

Just goes to show the mentality of intellectual property maximists and their true motives. Their motives have nothing to do with helping society and everything to do with controlling others.
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MK, 29 Oct 2009 @ 8:10pm

A taste of their own...
Maybe someone should sue Nike for misappropriating their name from the Roman goddess of victory. Seriously, how many of these greedy bastard companies have usurped an existing word and then tried to prevent others from using it? Surely you can't trademark something that's already in use.
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Pwdrskir (profile), 29 Oct 2009 @ 8:17pm

Payola
Let's just call this what it is, a payoff to do the bidding of those who are stuffing the coffers. Corruption with a complementary reach around.
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Steven, 29 Oct 2009 @ 8:32pm

You know, in Canada we came really close to having a good prime minister (Paul Martin). He wanted to make the relationship between legislator and political contributor a matter of public record rather than under the table the way it's set now. Anyone care to guess how long he lasted?

In any case, nice to see a move for freedom of speech.
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Anonymous Coward, 29 Oct 2009 @ 9:28pm

Not to mention that Nike is the Goddess of victory and the damned shoe company, (which was started by Fontain's track coach), used the name as inspiration.
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Anonymous Coward, 30 Oct 2009 @ 3:56am

they were thinking they had bribed the judges enough
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Anonymous Coward, 30 Oct 2009 @ 4:53am

Re: A taste of their own...
Nike was the Greek goddess.

The Roman equivalent was ... Victoria
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Anonymous Coward, 30 Oct 2009 @ 5:28am

Re:
It is fairly common for judges to dissent when agreeing with the end result. The only reason for such dissents is that the dissenting judges typically believe a different law should have been applied or should also have been applied. Sometimes the dissent matters since other judges may use the dissent in future rulings. In any case, the end result remains the same.
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Anonymous Coward, 30 Oct 2009 @ 5:29am

Re: A taste of their own...
Gee, I was unaware that Nike was already being used as the name of a shoe (and clothing) prior to Nike trademarking it for such use.
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bulljustin (profile), 30 Oct 2009 @ 9:15am

Wondering
it makes you wonder what legislators were thinking when they put such a law in place.
Campaign contributions
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Anonymous Coward, 30 Oct 2009 @ 6:25pm

Re: Re:
Actually you're right. Good point.

Basically a judge who agrees with the ruling may dissent with regards to the reason. They may believe the court may the correct decision but for the wrong reasons.

Now you may be asking yourself why is this important? It is important because if the judge dissents in this manner they maybe trying to help specify in what circumstances, for what reasons, the current ruling should apply. This could affect how a law is applied in the future and in what circumstances.

For instance say judge A says a contract clause is not enforceable because a law makes it unenforceable. Say judge B says the same clause is not enforceable because of a misspelling in the clause. Both judges agree that the clause is not enforceable. But both judges dissent on the reason. There is a huge difference here and one can see how this can easily affect future cases.
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adele pace, 2 Nov 2009 @ 3:13am

trade marks and free speech
The Garrity case is bordering on ludicrous especially the following finding "Although our focus is upon the criminalization of political speech, the trial court observed that the statute would also criminalize children painting “Penn State” on their tree house, football fans painting “Penn State” on their faces, a gardener spelling out “Penn
State” with flowers, and concert promoters printing t-shirts with Penn State to denote the location of a concert"

Use of a trademark, to denote origin, isn't trade mark use, despite the analysis of the wording of the Statute and the dissenting opinions. To say otherwise violates the entire concept of common law trade mark. But we are drifting further away from it.
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D.Koss Uber, 2 Nov 2009 @ 9:24am

Trademark ruling
If corporations get their way we would have to speak in code to criticize companies while exercising our right to free speech. This has some relevance to a current WIPO case.

Glenn Beck is trying to shut down a web site that's named GlennBeckRapeandMurderaYoungGirlin1990 dot com because he says his name is trademarked and the site infringes upon it. Apparently his name is not trademarked, thank God, because I used it here and would be infringing on his mark.

It is amazing that Glenn Beck thinks he can get on TV and exercise his right to free speech and stop anyone uttering his name in opposition. I think I'll go trademark the word 'THE' so anyone using the word 'THE' will be infringing on my mark.

I will be printing out this page and making some Xerox's, opps, some photocopies.
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nelsoncruz (profile), 4 Nov 2009 @ 12:48pm

Reminds me of a directive being discussed in the European Parliament one point, which included language to forbid not only any unauthorized use of a trademark but also any tools that could be used to infringe on trademarks. It was removed after people started pointing out that pen and paper would be illegal. Nice, heh?
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Just saying..., 27 Nov 2011 @ 11:10am

Does this ruling mean a hill of beans? Penn State (oops! Just infringed on their trademarked name) is still posting all of their "trademarked names" on their licensing website: http://www.licensing.psu.edu/artwork/
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