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Carts and horses

Here and there, I’ve seen some snide commentary about Madonna and copyright, thanks to this article. Madonna’s been putting out decoy MP3s on the filesharing systems lately. Wendy Seltzer argues that since trademarks are intended to “protect consumers by defending a source’s association with quality goods and services,” Madonna may be diluting her own trademark by associating “Madonna” with the decoy files.

Um, yeah. So if the next Matrix flick really sucks, Joel Silver will lose the trademark on “Matrix” as it applies to movies? Does Garth Brooks know that putting out crap albums will make it impossible for him to keep his name trademarked?

There are times when we arrogant geeks should just get over ourselves, and this is one of those times.


  1. Your analogies kind of miss the mark, I think. It’s necessary to note that Madonna is most likely NOT engaging in commercial activity by “planting” these “spoofs.” (I think that’s probably a very sticky question, but the fact that it’s questionable at all distinguishes it.) It’s very hard to construct an appropriate analogy, actually – it kind of highlights how p2p networks aren’t truly analogous to anything. For instance – could Madonna assert copyright protection against people redistributing the “spoofs”? Maybe these questions have obvious answers, but they’re not occurring to me.

    Another reason the Joel Silver analogy is bad is that Madonna’s trademark is also her name. If Billy Joel emails some people he doesn’t know a really bad rendition of “The Christmas Song,” attributed to himself, that’s clearly different from Joel Silver sending out an email titled “Merry Christmas from The Matrix!” (Assuming for the sake of discussion that Joel Silver is the mark holder.)

  2. Is she not? While it’s not producing items which are directly for sale, it’s certainly activity for commercial purposes. Analogy: movie trailers. (“Hey, that trailer sucked!”)

    I don’t think the name issue matters. Trademark is trademark; you just happen to be able to trademark your name.

  3. I still think the name issue does matter. Is it clear to the consumer that the Madonna who has put these articles on p2p networks is Madonna(tm) and not just Madonna? I don’t know. But I think it does change the issue – Madonna can curse at her fans, as can Madonna(tm). There is no The Matrix which can take such an action – any cursing is obviously done by The Matrix(tm). I can’t claim to know enough about trademark law to discuss what specific fictions apply in this area, but from a common sense standpoint, I have to think that people who trademark their names as symbols of their quality vocalizations are still allowed to sing off-key in the shower.

  4. While Wendy makes a technically valid point in terms of dilution – dependant of course on the stream of commerce and nature of the alleged infringing use – it would be an extremely strained defense to a TM infringement action to argue that Madonna’s efforts to protect her mark (however misguided) evidence a willingness to relinquish it. In fact, it doesn’t.

    And there’s no question of copyright to her work; it’s hers, or her assignee, plain and simple. Spoofs or minor intentional errors are often embedded in works of art (usually more mundane efforts like business listings) to prove copyright theft.

    I’m one of those folks that think record labels have been misusing their copyrights to stifle technology at the expense of both artists and end consumers alike. I won’t rant on about it, but I’ll just say that the RIAA is about as important to the future of music industry as …what’s the familiar analogy?… buggy whips to the automobile industry. Yeah, that’s pretty accurate, I think.

  5. My question about copyright was regarding the distribution, not the nature of the work. If I “publish” a work on a p2p network, and someone allows the default behavior on those networks of republishing the work when they acquire a copy, are they violating my copyright on the work, or did I implicitly surrender my right to enforce that copyright when I published it in that fashion? I can think of no other example of publication where the medium of publication provides this level of automated republication – except perhaps singing at the edge of a canyon.

  6. If you’re talking about placing code in the public domain, I really don’t know. That’s not my area, as they say. Patents and trademarks are most of what I do, but I have a little experience with sound recordings and written works, too.

    Copyright is a bundle of rights and an author doesn’t surrender them upon making a work freely available. If an artist publishes a work on a p2p network, it may implicitly license others to share it within that medium, but not to otherwise republish it w/o the author’s consent. Does that answer your question? I’ll check this thread when I get home tonight.

    P.S. This should not be interpreted as legal advice (natch).

  7. I don’t have time to write a short story, so I’m not editing myself much here.

    Ok. There’s a lot I’m confused about, here. I think the biggest confusion arises from the fact that I am totally unfamiliar with the theory of a mark holder diluting their own mark. I understand that dilution is a cause of action when one party dilutes another’s mark, but clearly Wendy Seltzer is not suggesting that Madonna take action against herself. My assumption, then, is that the idea Ms. Seltzer proposes is that, for example, Maxtor might market a line of “Madonna Hard Drives.” Madonna takes action against them for diluting her mark, conceding that consumers are not likely to be confused, and Maxtor responds, “You cannot claim that we are diluting your mark, because you have already diluted it yourself.” Perhaps “diluting one’s own trademark” is a shorthand for “causing one’s own mark to fail to be a famous mark”? I note that the Federal Trademark Dilution Act of 1995 only has one guideline for famousness which seems to apply: degree of recognition of the mark. But even then – the file Ms. Seltzer presents on her site is clearly a production of the mark owner. She also mentions “deliberately poor quality music files” – I don’t know if these actually exist, and they’re an odder question.

    So, withdrawing from what I understand to be the legal meaning of “trademark dilution” with the acknowledgment that it might not be the only applicable definition, I turn to Ms. Seltzer’s other comments. Maxtor, apparently, is going to claim that by producing works of [deliberately] poor quality, Madonna has indicated to consumers that her mark no longer represents, let us say, “the level of quality one would expect of a product produced by Madonna.” Here, I’m going to say that the fact that Madonna remains her name makes this an extraordinarily difficult argument to put forth – and moreover, Bryant’s arguments are reasonable; if Madonna produces product that is clearly associated with the mark, then it is obvious that the product represents the quality one expects from Madonna products.

    Which leaves us back at the Dilution Act – Maxtor might now claim that it is impossible to tarnish Madonna’s mark, because their hard drives are much better than her “decoy MP3s.” I can see this, I suppose, and this is the track I was running down in my first comment. I was assuming from Ms. Seltzer’s comments that she meant to say that Madonna was lowering the bar on tarnishing the mark. In discussing “tarnishment,” it always seems to be mentioned that one can tarnish a mark by producing poor-quality products. I don’t recall seeing any mention of a duty on the part of the mark-holder to produce products of BETTER quality, however. That’s just my inference, though. I know that it is possible to lower the bar for tarnishment in other contexts – Disney brand condoms tarnish in a fashion that Playboy brand condoms do not.

    At any rate. With one caveat, I’d like to explain why I think putting something on a p2p network is different from selling it on an album. The following discussion assumes that, should an infringer be found to be associating poor-quality product with a mark, it is a defense for the infringer to claim that the mark-holder has associated the mark with product of a poor quality.

    Let’s say that Ford commissions and broadcasts a television advertisment that is done very poorly – the contrast level is so low that it is almost impossible to see the picture, there is a great deal of visible static, and the narration is done by Gilbert Gottfried. Maxtor manufactures a line of Ford hard drives which are prone to failure. Does that television commercial establish that consumers already expect a poor quality product from Ford? I don’t think it does.

    On the other hand, what if Ford puts out a commercial that advises, “Ford cars are really slow and require lots of maintenance”? Well, speaking as a consumer, I would certainly think less of the Ford brand name, if I understood them to be telling the truth. So maybe it would be harder for someone else to tarnish the reputation of the brand. However, it’s clear that actually PRODUCING cars which are really slow and require lots of maintenance does far more damage than merely claiming to. A middle ground would be if they produced a commercial which SHOWED a really slow Ford undergoing maintenance every 1000 miles.

    That middle ground, I think, is the ground occupied by the vast majority of advertisements for entertainment-related brands. Madonna produces music. Commercials endorsed by Madonna featuring poor music by Madonna damage her reputation as a producer of music. But again – the commercials are not product. Poor product is more damaging than commercials which display poor product, I think. Maybe that’s a judgment call, but I think it is an important distinction.

    Something I really don’t know the answer to is this – what if Ford were to manufacture a line of cars that WERE really slow and required lots of maintenance, and gave those cars away for free? (Free with no monopoly connotations – I guess the maintenance is done with chewing gum or something) I honestly have no idea what that does to the reputation of their brand – is it product, or is it advertising? The foundation of a trademark is commerce, so I’m inclined to think it’s pure advertising, and not as damaging as charging someone $30k for a slow car that is always in the shop.

    Now – what did Madonna do? Did she release product, did she advertise, or did she do something else entirely? If she had sold an album that contained nothing but her profanely interrogating her fans, she obviously would have been releasing product. If she had done the same in a paid commercial spot, I’m inclined to say advertising. If she had made it available for download on her website, I’m not sure what it would be. But putting it up on a p2p network is a pretty unclear act – made even less clear by the misrepresentation. Obviously, Madonna did not intend for people to perceive it as her releasing a very short, profane song. I wouldn’t expect that she intended for people to perceive it as her releasing the actual track to the network, either. The intended perception BEFORE listening to the track, as a potential audience, was that someone else had published a song by Madonna in violation of Madonna’s copyright on that song. After listening to the track, the intended perception was that of having been admonished by Madonna herself in retribution for attempting to violate her copyright.

    What about recordings of very poor quality? I don’t think those have any bearing at all. This is analogous to giving away water and selling Coke, isn’t it? Giving away a poor recording and charging for a quality recording does nothing to damage the brand, does it? That’s assuming, of course, that we’re just talking about fidelity. If the p2p version were bad performances by Madonna, say off-key and hoarse, it becomes a bit different. The important thing here, I’d think, would be whether the consumer felt that Madonna was deliberately associating her brand with the off-key and hoarse recording – but at best, I think it would be considered as advertisement.

    And I just noticed that in my first comment, I used the term “commercial activity,” which is not what I meant to say – it’s broader than I intended. I’m honestly not sure how to specify that I mean only the act of trading, and not the act of promoting one’s trade.

    I sure hope there was something worthwhile in the preceeding paragraphs. It’s probably too bad my browser didn’t crash and lose it all.

  8. Dude, no offense, but I really don’t want to write a treatise on TM law. I got about half way through your post and didn’t want to read any further. The Stanley Cup Playoffs are on for God’s sakes! If you really want an answer to something specific, boil down the question a little more.

  9. Sorry. I didn’t mean for that to sound like a request for a legal education. I’ll leave the law to the law-talking guys.

  10. IANAL; however, I think I get your distinction. Unfortunately, I gotta punt and say “I just don’t know.” I’m not sure I believe that trademarks are affected by giving stuff away vs. selling stuff, however. Note that “GNU” is a trademark. I think the question is whether or not you’re making something available to the public with your trademark associated.

  11. Yes, take beanies for instance. It’s a generic word but has come to be associated by the general public almost exclusively with Ty, Inc., even though others use the words in its original sense to mean plush dolls. Yet Ty routinely wins TM infringement actions against its use within its class of goods.

    And Bryant is right, a mark MUST be used with a good or service in commerce.

  12. Oh, and a non-for-profit use is still in the stream of commerce, so it doesn’t matter if your giving it away.

  13. Well, I guess the important question in my mind is: Is the protection against tarnishment by association with poor product contingent on the quality of product produced by the mark-holder?

    Furthermore, if “yeah, but their product is pretty crappy, too” is a defense against tarnishment through poor product, does that defense apply even if the crappy product in question is given away?

  14. Dilution usually comes into play when protecting a mark from becoming generic (Kleenex, Thermos, …) That’s why Ty fiercly protects the secondary meaning that beanies has achieved.

    When consumers think Madonna in terms of music, they probably associate it with the Material Girl. But when thinking in terms of say, figurines, they probably associate it with its religious meaning.

    The quality (very subjective in this case) of goods is important as it is one of the things that lets consumers know what to expect when they purchase a good or service under the Madonna brand. If when they bought something Madonna they couldn’t be sure it was actually the MG, then the mark would lose its effectiveness to indicate to music consumers what they were buying.

    It really doesn’t matter if you think Madonna (or Beanie Babies) sucks (and mark holders never think of their goods or services that way), but only whether if the mark is able to indicate to the public the origin of the goods or services.

    Now I’m probably rambling on…

    is a name/mark that has gained secondary meaning. When you’re thinking of a

  15. Yeah, but it’s interesting rambling…

    And actually, I think you convinced me. “If when they bought something Madonna they couldn’t be sure it was actually the MG, then the mark would lose its effectiveness to indicate to music consumers what they were buying.” Which seems to be the case with this specific issue, right?

  16. Sort of.

    Say, people like to buy “Kodi” brand hammers because they know nothing brings it like a Kodi. But then somebody starts making “Kody” brand hammers which break after a few uses. People may stop buying Kodi hammers because the mark has become somewhat diluted by Kody hammers.

    But wasn’t the point in this case that Madonna was trying to foil people from stealing her product? That’s why I thought Wendy was stretching it a bit to claim that Madonna might be indicating a willingness to give up her mark by diluting it on p2p networks.

  17. I don’t think we’re all necessarily on the same page, but when it gets to the point I have to figure out how to cite a U.S. code, I’m going to give it a rest.

    Some things I’ll note, really quick:

    15 USC Sec. 1127 lists two means for abandoning a mark: either you stop using it, or you allow it to become a generic name. I don’t see either of these applying.

    I don’t think there are many cases that actually elucidate the point I’m considering.

    The definition of “dilution” given in 15 USC Sec. 1127 is not helpful at all: “the lessening of the capacity of a famous mark to identify and distinguish goods or services…”

    And finally, looking strictly at that definition, I see a better (but still factually incorrect) argument: by herself willfully creating consumer CONFUSION about what is and is not a Madonna product, Madonna is so eroding the identifying capacity of her mark that it cannot be further lessened.

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