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Trademark Parodies – Flawed or Fair use?


The reworked “fair use” defense has provoked debate because it provides excessively broad immunity to certain types of parodies and other expressive uses of trademarks.1 This Article will explore whether the Trademark Dilution Revision Act (TDRA) promotes a flawed treatment of parodies with regard to sub-clauses that provide selective shelter, and exonerating some parodies from liability while impugning others.2 The principal flaw that is discussed in this Article relates to the parody provision and its application of the trademark use test for determining whether a parody is fair. The provision is pliable in that it can be both lenient and strict on parodies.

 

I. Trademark Dilution Revision Act

Trademark, Trademark Dilution Revision Act, United States Patent and Trademark Office, trademark parodies | Law firm of Dayrel sewell
Depiction of the registered trademark symbol

 

The language of the TDRA appears to implicitly divide parodies into two distinct groups: source denoting parodies and non-source denoting parodies. Non-source denoting parodies are artistic parodies- that are not used as trademarks and are treated with leniency, whereas source-identifying parodies generally receive strict treatment3. A plain reading of the provision appears to confer blanket immunity to all parodies as long as they are not being utilized as indicators of source(s) for goods or services4. On the other hand, it imposes liability on parodies that function as trademarks without suitable inquiry into the nature or impact of the parody in question.5,6 This parody approach fails to adequately assess forms of harm since it focuses exclusively on the classification of the parody’s status, rather than the effect.

 

The focus of inquiry should be on the effect of the parody in relation to the original trademark’s distinctive quality or reputation, with consideration regarding the investment to establish such distinctiveness, and not just on the status and presence of commercial or trademark use.  However, this is not the case because the TDRA’s fair use provision fails to appropriately distinguish parodies that convey an artistic or social message from those that tarnish a senior mark.7  The broad language of the exception allows tarnishing use to be exempt from liability so long as the parody in question is not utilized as a source indicator.8 The “fair use” provision appears to provide automatic immunity to non-source denoting parodies, as it stipulates that only these types of parodies that do not function as designators of source, are eligible for exemption under the provision.9 The exemption is justified by the First Amendment.

 

II. Exploring the TDRA Flaw

 

Parodies are expressive by nature.10 For this reason, some parodist choose to present their parodies as “works of art” to the public; such representations can be made without any connection to goods or services, and occasionally, without the expectation of commercial gains.11

 

Still, these parodies can be harmful to the original trademark owner when free-riding occurs, or some harm to the goodwill of the mark because of confusion or false misrepresentation. Free-riding occurs when the parodist receives a benefit from the association between their mark and the well-known mark12. Although some have argued these actions are permissible because they align with the First Amendment justification, and ensure that the original owner shall not be able to monopolize the famous creation, this view fails to consider the investment the original owner sacrificed to establish the identity of being “well-known” or “famous.” As a result, parodists can reap where they have not sown. 

 

Courts have confirmed that the TDRA applies different treatments to parodies based on their categorial status. The TDRA enactment amended the fair use defense by adding an expressed defense for noncommercial use; this plain language of the provision explicitly excluded source denoting parodies. Therefore, courts relied on the main dilution factors provided by the Act, instead of the fair use exception, to immunize source denoting parodies from liability. 13

 

In Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, the court confirmed that the parody clause in the fair use provision is not exhaustive in its coverage of non-dilutive parodies.14 This case set a precedent which allows parodies that are being used as a trademark to sell goods in commerce to be exempted from liability for dilution, in certain circumstances.15 The court’s analysis indicates that a parody does not necessarily need to satisfy the fair use provision in order to be exonerated from liability.16

 

Louis Vuitton, Trademark, trademark parodies
Depiction of the Louis Vuitton logo

 

The courts affirmations justify the concerns with the TDRA’s fair use parody clause, as it demonstrates that the provision is both too broad in some respects, but also too narrow in others.17 The provision is broad as it largely immunizes all non-source denoting parodies from liability without assessing the message communicated by the parody and its effect on the reputation of the mark. If the message promotes a negative impact on the goodwill of the original trademark owner or free-riding occurs, the original owner will have no claim against the parodist, and the First Amendment justification trumps the original owner’s interest or disfavored effects. On the other hand, the provision is too narrow because it excludes certain source-denoting parodies that may not be deserving of protections because of the extraordinary investments original owners take to establish a specialized distinction for the mark. 

 

Allowing protection under these circumstances, permits the parodist to take advantage of trademark owners marketing investments and efforts they may have taken years to establish. Further, the treatment permits free riding. Consequently, the approach to the treatment of parodies effectively ‘dilutes’ trademark owners of the right to obtain an appropriate remedy against parodist who have tarnished their marks by engaging in an unfair or offensive comparison, and parodist who has benefited from the original owner’s investments.

 

An example of these effects is demonstrated in Mattel, Inc. v. Walking Mountain Productions. In this case, the parodist is an artist who posed nude Barbie dolls in photographs that displayed Barbie getting attacked by vintage household appliances.18 Although the artist failed to use the term “Barbie,” the art itself irrefutably involved the trademarked doll and the titles reflected that fact.19 The message of the parody meant to diminish the Barbie persona that was established by Mattel through successful marketing.20 Mattel had purportedly established Barbie as “the ideal American woman” and a symbol of “American girlhood.”21 Is it unfair for a parodist to attempt to destroy the goodwill or reputation of the mark? The law certainly does not think so because such actions are viewed as an exercise of the First Amendment right. 

 

Barbie, trademark, fair use, trademark parodies
Image of a Barbie

 

But what if the only reason the parodist receives an audience or attention is because of “Barbie.” Is the original owner now entitled to a claim? Had it not been for the original owner, the parody would likely have never been created, nor would the parody have received the level of attention attained. But for the original owner’s investments toward establishing the mark’s goodwill, it is likely the parody would be non-existent, or at the very least would not have obtained the level of attention it received. If these photos only receive attention because of “Barbie,” does that mean the parodist is permitted to free-ride off of the famous mark owner’s marketing efforts and investments that may have taken the owner years to establish? Trademark law is permitting parodist to reap what the original owners have taken years to sow! It could take a trademark-owner years to establish a distinct attractiveness in the marketplace. However, a parodist need only use the famous mark under the guise of a parody and receive the same benefits of attractiveness through association, at a fraction of the time and monetary investment that was devoted by the original owner.

 

Under these protections lays the question of fairness, which arises when there is harm from the parodist belittling the reputation of the mark that is being ridiculed.22 Still, the current parody provision does not possess sufficient nuance to assess the type or extent of damage inflicted on the senior mark, caused by the tarnishing effects of the parody.23 Particularly, it fails to provide guidance on the level and quality of ridicule that is considered “acceptable” for a parody.24 This raises some concerns; virtually many cases of non-trademark expressive use would receive protection under the Act. The TDRA arguably tilts the balance too far in favor of non-trademark use parodies. 

 

 1 Eugene Lim, Of Chew Toys & Designer Handbags: A Critical Analysis of the “Parody” Exception under the U.S Trademark Dilution Revision Act, 35 CAMPBELL L. REV. 83, 90 (2012).

 

2 Id. at 92.

 

3 Id.

 

4 Eugene Lim, Of Chew Toys & Designer Handbags: A Critical Analysis of the “Parody” Exception under the U.S Trademark Dilution Revision Act, 35 CAMPBELL L. REV. 83, 92 (2012); Justin Gunnell, Evaluation of the Dilution-Parody Paradox in the Wake of the Trademark Dilution Revision Act of 2006, 26 CARDOZO ARTS & ENTERTAINMENT 441, 455 (2008).

 

5 Eugene Lim, Of Chew Toys & Designer Handbags: A Critical Analysis of the “Parody” Exception under the U.S Trademark Dilution Revision Act, 35 CAMPBELL L. REV. 83, 92 (2012).

 

6 It’s the courts duty to inquire about the nature or impact of the parody which is determined through the infringement factors discussed in the following section.

 

7 Eugene Lim, Of Chew Toys & Designer Handbags: A Critical Analysis of the “Parody” Exception under the U.S Trademark Dilution Revision Act, 35 CAMPBELL L. REV. 83, 93 (2012).

 

8 Eugene Lim, Of Chew Toys & Designer Handbags: A Critical Analysis of the “Parody” Exception under the U.S Trademark Dilution Revision Act, 35 CAMPBELL L. REV. 83, 93 (2012); Justin Gunnell, Evaluation of the Dilution-Parody Paradox in the Wake of the Trademark Dilution Revision Act of 2006, 26 CARDOZO ARTS & ENTERTAINMENT 441, 455 (2008).

 

9 Eugene Lim, Of Chew Toys & Designer Handbags: A Critical Analysis of the “Parody” Exception under the U.S Trademark Dilution Revision Act, 35 CAMPBELL L. REV. 83, 92-93 (2012).

 

10 Id. at 84.

 

11 Id. at 89.

 

12 Iowa State University, Trademark Legal Basics, (Apr. 1, 2019), https://www.trademark.iastate.edu/basics .

 

13 Eugene Lim, Of Chew Toys & Designer Handbags: A Critical Analysis of the “Parody” Exception under the U.S Trademark Dilution Revision Act, 35 CAMPBELL L. REV. 83, 99 (2012).

 

14 Id. at 97.

 

15 Id.  at 96.

 

16 Id.

 

17 Id. at 97.

 

18 Mattel Inc. v. Walking Mountain Prods., 353 F. 3d 792 (9th Cir. 2003).

 

19 Id.

 

20 Successful marketing requires a huge investment of time, money, and consistency over a period of time.

 

21Mattel Inc. v. Walking Mountain Prods., 353 F. 3d 792 (9th Cir. 2003).

 

22 Id. at 93.

 

23 Id.

 

24 Id.



Trademark Law Implications of AM General v. Activision


Video games have grown in realism since the days of pong on an Atari console.  As technology allows for higher resolutions and graphics, so does the need for attention to detail.  In certain cases, video game developers try to depict the real world.  There are legal implications when this real-world depiction goal includes trademark protected items, such as Humvees.

 

trademark law | Trademark infringement: AM General vs. Activision Blizzard

 

The federal Lanham Act governs trademarks at the federal level.  There are two basic requirements: (1) that a mark be definable and (2) used in commerce. 1  You need to be able to know what the mark symbolizes when you see it and use it in business to get the Lanham Act’s protections.  However, these protections are not all-encompassing. 

 

Trademark law
Corporate logo of Activision

 

The Call of Duty video game franchise remains one of the most popular entertainment products in the world, with millions of copies sold.  The “Modern Warfare” subset of that franchise depicts modern militaries in action.  These games try to immerse a player in combat.  The game attempts to do this through the depiction of actual military equipment, including Humvees.  Activision, the company making the games, was sued by the Humvee’s manufacturer (AM General) for their unauthorized depiction of the Humvee in the games. 2

Brooklyn Law Firm
Corporate logo of A.M. General

 

 

The Humvee is a registered trademark of AM General.  Trademarks are an important component of business practices around the world.  Think the Nike swoosh, and how the swoosh is so identifiable and important to Nike as a business.  One might think that copying the symbol or mark would be a violation of the law.  AM General certainly thought so and sued.  The reality of trademark law is more nuanced than one may believe.  Having a Trademark does not necessarily mean that no one else can use it for any reason, as we can see from the results of A.M. General v. Activision.

 

It is a reasonable assumption that using someone’s mark in a profit-making enterprise would be a violation of the law.  Courts will weigh more than the commercial interest of the trademark holder when making decisions.  In A.M. General v. Activision, the court applied a legal test that allows for use of a Trademark so long as the origin of the trademark is not mistakenly identified.  In the video games in question, this misleading behavior does not occur.  In fact, the use of the Humvee is important to the experience of the game, even though the actual maker of the vehicle is not specifically identified in the game.

 

In their decision, a federal district court found that the use of the Humvee in the game did not violate the Lanham Act, and thus Activision was not liable to A.M. General.3  If A.M. General appeals to the Supreme Court, and the Supreme Court upholds the decision, there are significant implications for trademark law.  Artists, if they could prove that depiction of a trademark is essential to the artistic experience, and does not misrepresent that trademark too much, would be able to depict that trademark without fear of legal consequences.

 

1 15 U.S.C. § 1127 (1946). 

 

2 AM General, L.L.C. v. Activision Blizzard, Inc., No. 17 Civ. 8644, 2020 WL 1547838, at *1 (S.D.N.Y. Mar. 31, 2020).

 

 3 Id. at *5.



Prince’s purple: without rain or color trademark protection


In October 2018, Paisley Park Enterprises filed an application with the USPTO (U.S. Patent and Trademark Office) for the registration of a color mark for music, live performance, and museum-related uses [1]. Paisley Park Enterprises is known for being decedent Prince Rogers Nelson’s company. In August 2017, the Prince Estate and Pantone created a purple color called “Love Symbol #2” to represent Prince [2]. The Pantone Matching system is useful to define particular shades of color, and to ensure a consistent use of the same color for one company [3].

 

The custom color created by Paisley and Pantone
The custom color created by Paisley and Pantone

 

In 1985, U.S. courts held that colors could be protected under trademark law [4]. Owens-Corning was the first company in the U.S. to hold a color mark. The fact that colors can be protected by a trademark is a natural expansion of trademark law since trademark may protect words, logos, sounds, designs, smells, and other designations [5].

 

To be protectible under trademark law, a mark has to be distinctive. A mark can be inherently distinctive if that mark is fanciful (an example would be a made-up or invented word, such as Exxon), arbitrary (a mark having no relationship with the goods or services being sold, for example Apple for computers), or suggestive (it requires imagination from the consumer to reach a conclusion as to the nature of the goods or services, for example Mustang for cars). If a mark is descriptive, it is not inherently distinctive and a showing of secondary meaning is required in order to be protectible. In the Qualitex case, the U.S. Supreme Court held that colors could be distinctive and protected under trademark law, but the court specified that a color can never be inherently distinctive. Since a color cannot be inherently distinctive, the applicant for a color mark is always required to show secondary meaning [6]. To establish secondary meaning, an applicant must show that the consumers associate the mark to the source of the product or services, and not to the products or services themselves [7]. In other words, the applicant must show that the mark is a source identifier.

 

The secondary meaning requirement may be justified by the argument that the number of possible colors to be used by competitors could be greatly diminished if the courts and the USPTO were to give trademark rights too easily on trademark applications for color marks. A requirement of secondary meaning limits that possible depletion of the possible colors to be used. Courts may be reluctant to give trademark protection for color marks too lightly, since in some instances there might be underlying reasons behind the use of certain colors. An example is the color orange for safety-related companies and products. Another possible issue is the idea of shade confusion, courts may have difficulties in determining which colors are similar enough to constitute a trademark infringement, and which are not.

 

Prince's company registers the color purple as a trademark | Law Firm of Dayrel Sewell
Prince’s cover for the Purple Rain Album

 

Functionality is a bar to trademark protection. If a mark is functional, it can not be protected under trademark law, even if the mark holder would have been able to show secondary meaning. The courts use two tests in order to determine whether a mark is functional or not. A mark is functional under the first test (known as the Qualitex test) if the exclusive use of the mark would put competitors at a significant non-reputation-related disadvantage [8]. Under the second test (the Inwood test), a feature is functional if it is essential to the use or purpose of the article, or if it affects the article’s cost or quality [9]. To be non-functional, a mark has to be non-functional under both tests. The concept of aesthetic functionality, absent from the statutes but recognized by virtually every court in the U.S., is also a possible barrier to the registration of a color mark. This concept applies in the case of features which have no functional utility, but that consumers want, often for aesthetic reasons. In most cases relating to aesthetic functionality, the first test of functionality is satisfied as an exclusive use would put competitors at a significant non-reputation-related disadvantage, and the mark is then deemed functional. A color mark may be functional in some instances according to this aesthetic functionality concept.

 

In a case opposing Christian Louboutin to Yves Saint Laurent, courts held the trademark protection on Christian Louboutin’s red sole to be enforceable, but that this protection only covered shoes when the red sole contrasted with the upper of the shoe [10]. That protection is thus limited and does not extend to the manufacture and sale of monochrome red shoes with a red sole, such as the red Yves Saint Laurent’s shoe at issue. This decision allowed Louboutin to benefit from trademark protection on its red sole without putting its competitors at a significant non-reputation-related disadvantage.

 

Prince's company registers the color purple as a trademark
Louboutin’s red soles

 

The USPTO refused to register Paisley Park Enterprises’ “Love Symbol #2” mark because consumers do not perceive this color as a source identifier according to the USPTO. The USPTO noted that album covers from other artists such as Cam’ron and Kanye West also included the use of the color purple, and that the purple color was not distinctive of Paisley Park Enterprises’ products and services as it is a commonly used color in the sale of products and services in the same class. [11]

 

Purple Haze Album | Trademark & Protection
Cam’ron cover for Purple Haze Album

 

Color is often used as a source identifier by companies. Tiffany’s Robin’s Egg blue color, which is used on their boxes, is protected by a trademark, the Tiffany Blue hue has been held to be distinctive through an acquired secondary meaning. UPS also registered its brown color as a trademark [12]. Paisley Park Enterprises may try to show that the particular purple color they are trying to register serves as a source identifier, and they may argue that consumers associate this purple color to Prince. If Paisley Park Enterprises manages to show secondary meaning, the USPTO will be likely to accept the registration of the “Love Symbol #2” color mark.

 

Tiffany & Co. Trademark
Tiffany & Co. famous blue box (robin’s-egg blue or forget-me-not blue)

 

[1] http://www.thefashionlaw.com/home/princes-estate-is-seeking-federal-trademark-protection-for-his-purple-pantone-hue
[2] https://www.pantone.com/about/press-releases/2017/the-prince-estate-and-pantone-unveil-love-symbol-number-2
[3] https://www.ipwatchdog.com/2018/07/14/can-you-trademark-a-color/id=99237/
[4] In re Owens-Corning Fiberglas Corp., 774 F.2d 1116 (Fed. Cir. 1985)
[5] Restatement of the Law (Third), Unfair Competition : §9 Definitions of TM and service mark
[6] Qualitex Co. v. Jacobson Products Co. Inc., 514 U.S. 159 (1995)
[7] https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-1200d1e10316.html
[8] Qualitex Co. v. Jacobson Products Co. Inc., 514 U.S. 159 (1995)
[9] Inwood Laboratories Inc. v. Ives Laboratories, Inc., 456 U.S. 844 (1982)
[10] Christian Louboutin, SA v. Yves St. Laurent America Holding, Inc, 709 F.3d 140 (2d Cir 2013)
[11] http://www.thefashionlaw.com/home/us-trademark-body-says-prince-was-not-the-only-musician-to-make-use-of-the-color-purple
[12] https://www.ups.com/media/en/trademarks.pdf 



Recent Developments in Governmental Takings


Understanding the Takings Clause of the Fifth Amendment

Takings by the government have long been a complex and murky area of constitutional law. The Fifth Amendment of the U.S. Constitution does not provide much detail on how takings were to be carried out. While recent case law has added some clarity, the topic remains complicated.

The Takings Clause of the Fifth Amendment was designed to compensate private citizens when the government takes private property for public use. It states:

“Nor shall private property be taken for public use, without just compensation.”

The intent was to limit government power in serving the public interest, while also giving private citizens recourse against uncompensated property seizures by local, state, or federal authorities.

Over time, the Takings Clause has expanded to cover not only physical takings (when land is seized) but also regulatory takings—when government regulations reduce property value or make land unusable. These two categories form the basis of per se takings law.

 

 

Fifth Amendment | Law firm of Dayrel Sewell
Fenced-off house in Turner (August 2013)

 

Two important cases clarified aspects of takings actions:

  • Murr v. Wisconsin (2017, U.S. Supreme Court)

  • Matter of New Creek Bluebelt, Phase 3 (Baycrest Manor Inc.) (2017, New York Appeals Division)

Murr v. Wisconsin and the Denominator Problem

Background of the Case

In Murr v. Wisconsin, the Murr family inherited two abutting lots along the St. Croix River. One lot had a cabin, while the other was undeveloped and smaller than one acre.

The family wanted to sell the smaller lot to fund cabin repairs, but state ordinances prohibited selling or developing adjacent substandard lots under common ownership. The Murrs claimed this amounted to an uncompensated regulatory taking, as Lot E could not be sold or developed independently.

The case reached the U.S. Supreme Court, which sided with the state, ruling that the two lots should be considered as one property.

The Denominator Question in Takings Law

One of the biggest issues in takings law is the “denominator problem”—what portion of property is considered when determining if a taking has occurred.

The Court introduced a new three-pronged test to define the denominator:

  1. Treatment of the land under state and local law

  2. Physical characteristics of the land

  3. Prospective value of the regulated land

This built upon the earlier Penn Central Transportation Co. v. New York City framework, which broadly considered the “parcel as a whole” but lacked specific guidance.

St. Croix River | U.S. constitution
Dalles of St. Croix

 

Reciprocity of Advantage and Fairness

The Court also applied the concept of reciprocity of advantage. This means that even if one lot is burdened, it may still benefit from regulations that increase the overall value of nearby land.

In this case, the undeveloped lot was restricted, but the combined lots gained value due to preservation of the scenic St. Croix River. Thus, while the Murrs could not sell Lot E separately, the two lots together were worth more.

Although criticized by Chief Justice Roberts for potentially favoring the government, the Murr decision emphasized fairness, considering both burdens and benefits in takings analysis.

Baycrest Manor: Clarifying Regulatory Takings in New York

Case Background

The Baycrest Manor case involved land in New York that was entirely wetlands and had no viable economic use under strict environmental regulations.

Baycrest Manor, Inc. argued that the land was effectively deprived of all use, amounting to a regulatory taking under the Fifth Amendment.

 

The Court’s Ruling and Key Precedent

The Court held that subsequent purchasers of restricted land can still bring takings claims, even if they knew about the regulations at the time of purchase.

This ruling followed Palazzolo v. Rhode Island (2001) and overturned New York’s Kim Quartet, which had previously barred such claims.

By allowing challenges from later purchasers, the Court recognized that unreasonable regulations remain unfair, no matter when the property was acquired.

 

Manhattan, Freshkills Park | US Governmental Takings
Downtown Manhattan view over Freshkills Park

 

Compensation and the Penn Central Test

The New York Court of Appeals upheld higher compensation than typical regulatory takings claims, recognizing that wetlands, while limited economically, may still have non-economic value.

The Court evaluated:

  • Economic impact of the regulation

  • Interference with reasonable investment-backed expectations

  • Character of the governmental action

This analysis aligned with the Penn Central test, but the Court also factored in New York’s reasonable probability incremental increase rule.

Essentially, the Court considered what a hypothetical buyer might pay, knowing that a takings claim could succeed. This calculation helped determine fair compensation.

 

Conclusion

 

Both Murr v. Wisconsin and Baycrest Manor address different aspects of the Takings Clause but share a common goal—fairness in property rights disputes.

  • Murr v. Wisconsin clarified how courts define the denominator in takings analysis, weighing both benefits and burdens.

  • Baycrest Manor ensured that even subsequent landowners can bring takings claims, and that compensation fairly reflects realistic property value.

While one decision appears to favor the government and the other the property owner, both rulings refine takings law to promote balance and fairness.

The evolution of Fifth Amendment takings jurisprudence shows that while government regulations are necessary to protect public interests, private property rights remain central to constitutional protections.

 

 

[1] Murr v. Wisconsin, 582 US _ (2017)

[2] Matter of New Creek Bluebelt, Phase 3 (Baycrest Manor Inc.), ___ A.D.3d ____, 2017 N.Y. App. Div.

[3] Penn Central Transportation Co. v. New York City, 438 U.S. 104 (1978)

[4] Palazzolo v. Rhode Island, 533 U.S. 606 (2001)

[5] Kim v. City of New York, 90 N.Y.2d 1 (1997); Gazza v. Dep’t of Envir. Conserv., 89 N.Y.2d 603 (1997); Basile v. Town of Southampton, 89 N.Y.2d 974 (1997); and Anello v. Zoning Board of Appeals, 89 N.Y. 2d 535 (1997)



The Effect of Tax Laws on Commercial Real Estate


Recently, the Supreme Court decided the landmark case South Dakota v. Wayfair, Inc., addressing whether remote sellers of goods and services can be required to collect and remit sales taxes imposed by the consumer’s state.[1]

According to S. 106, 2016 Leg. Assembly, 91st Sess. (S. D. 2016) [hereinafter “the Act”], remote sellers must collect and remit sales tax to the state in which the goods are sold.[2] Consequently, the State of South Dakota filed for an injunction requiring respondents to register for licenses to collect and remit sales tax.[3]

Respondents Wayfair, Overstock.com, Inc., and Newegg, online merchants selling goods such as furniture and electronics, moved for summary judgment, arguing that the Act is unconstitutional.[4] The Supreme Court therefore, granted certiorari to interpret precedent cases “in light of current economic realities.”[5]

Wayfair, online shopping | Tax and Commercial Real Estate | The Effect of Tax Laws on Commercial Real Estate
Wayfair logo

 

Commerce Clause and Commercial Real Estate

To decide the issue, the Court analyzed the Commerce Clause and revisited two precedent cases:

  • National Bellas Hess, Inc. v. Department of Revenue of Illinois (1967)

  • Quill Corporation v. North Dakota (1992)

Both rulings determined that an out-of-state seller’s ability to collect and remit tax depended on physical presence in the state.[6][7] For instance, if a seller only permitted catalog orders, it was not considered to have a physical presence. Consequently, many online retailers escaped sales tax obligations.

 

Core Principles of State Taxation and Commercial Real Estate

The Court emphasized two guiding principles:

  1. State regulations cannot disfavor interstate commerce.

  2. States cannot impose undue burdens on such commerce.[8]

Moreover, combined with the Commerce Clause, these principles help courts decide outcomes in cases involving state laws.[9]

In Complete Auto Transit, Inc. v. Brady, the Court held that a state can tax interstate commerce if the tax:

  • Applies to an activity with a significant connection to the state

  • Is fairly apportioned

  • Does not discriminate against interstate commerce

  • Is sufficiently related to state-provided services[10]

Thus, the Complete Auto test became central to the Court’s reasoning.

Physical Presence Rule and Commercial Real Estate

The “significant connection” requirement stems from due process, which demands that businesses have minimum contacts with the taxing state.[11] For example, in Miller Brothers Co. v. Maryland, the Court held that there must be a direct link between the state and the transaction it wishes to tax.[12]

However, the Court found that the physical presence rule was outdated and flawed in today’s digital economy. It unfairly advantaged online businesses without a physical presence in the state while simultaneously creating market distortions.[13][14] As a result, physical retailers bore heavier tax burdens, while e-commerce companies thrived without equal obligations.

 

Revenue Loss and State Impact

South Dakota and other states have faced massive revenue losses—between $8 and $33 billion annually—due to the Bellas Hess and Quill rulings.[15] As a result, South Dakota residents had to pay use tax on out-of-state purchases.[16]

Since South Dakota has no state income tax, sales tax revenue is critical for funding public services such as police and fire departments.[17] Moreover, some states, like Colorado, introduced notice requirements for remote vendors, signaling future challenges over defining physical presence.[18][19]

 

online shopping, e-commerce | The Effect of Tax Laws on Commercial Real Estate | Commercial Real Estate
Consumers have moved increasingly towards online shopping in the past few years due to convenience and efficiency

 

The Supreme Court’s Decision

The Court ultimately overruled Quill and Bellas Hess, holding that the physical presence rule was untenable.[20] Applying the Complete Auto test, the Court found that respondents had significant economic and virtual contacts with South Dakota. Nevertheless, it left open the possibility that another Commerce Clause principle could challenge the Act in the future.[21]

Therefore, the decision granted South Dakota the authority to enforce its tax collection law on remote sellers.

 

 

Chief Justice Roberts’ Dissent

Chief Justice Roberts dissented, acknowledging that Bellas Hess was wrongly decided but arguing that Congress, not the Courts, should determine interstate commerce rules.[22] Furthermore, he emphasized stare decisis and claimed any harm caused by the physical presence rule was declining over time.[23]

Roberts warned that the decision could burden small businesses, raising costs and reducing product variety.[24] He argued that Congress is better positioned to weigh competing business interests and avoid drastic policy changes with unintended retroactive effects.[25]

 

Broader Implications for Online Retail and Real Estate

This ruling has wide-reaching implications:

  • Commercial real estate benefit from leveling competition with online retailers.[26]

  • Large e-commerce players like Amazon—which did not collect taxes on third-party sales in all states—face new obligations. Consequently, after the decision, Amazon shares fell, and other online marketplace stocks were expected to follow.[27]

As a result, South Dakota can now require remote sellers with over 200 transactions or $100,000+ in revenue from state residents to collect sales taxes. Consequently, this decision may encourage other states to follow suit, potentially generating $13 billion in tax revenue nationwide.[28]

 

Amazon, e-commerce, online shopping | The Effect of Tax Laws on Commercial Real Estate | Commercial Real Estate
Amazon

 

Conclusion

The Supreme Court’s decision in South Dakota v. Wayfair, Inc., marks a turning point in online commerce and state taxation. By overruling outdated precedent, the Court opened the door for states to collect billions in lost tax revenue while reshaping the responsibilities of online sellers.

As the digital marketplace expands, future disputes will likely test the balance between fair taxation, interstate commerce, and small business protection.

 

[1] South Dakota v. Wayfair, 138 S. Ct. 2080, 2093 (2018).

 

[2] Id. at 2088.

 

[3] Id. at 2089; see U.S. Const., Art. I, §8, cl. 3.

 

[4] State v. Wayfair Inc., 901 N.W.2d 754, 759-60 (S.D. 2017).

 

[5] South Dakota, 138 S. Ct. at 2089.

 

[6] Id. at 2087-88. National Bellas Hess, Inc. v. Department of Revenue of Ill., 386 U.S. 753 (1967); Quill Corp. v. North Dakota, 504 U.S. 298(199).

 

[7] South Dakota, 138 S. Ct. at 2089.

 

[8] Id. at 2084.

 

[9] Id.

 

[10] Id. at 2085.

 

[11] Id. at 2093.  See Int’l Shoe Co. v. Washington, 326 U.S. 310, 316 (1945); Burger King v. Rudzewicz,  

   471 U.S. 462, 476 (1985).

 

[12] Miller Brothers Co. v. Maryland, 347 U.S. 340, 344-45 (1954); South Dakota, 138 S. Ct. at 2093.

 

[13] South Dakota, 138 S. Ct. at 2092.

 

[14] Id.

 

[15] Id. at 2088.

 

[16] Id.

 

[17] Id. at 2097.

 

[18] Id. at 2098.

 

[19] Id. at 2099.

 

[20] Id.

 

[21] Id.

 

[22] Id. at 2101.

 

[23] Id. at 2103.

 

[24] Id. at 2104.

 

[25] Id.

 

[26] Erin Stackley, Supreme Court Ruling in Wayfair Case a Win for Real Estate and States, RISMEDIA (August 12, 2018), http://rismedia.com/2018/08/12/supreme-court-ruling-wayfair-case-win-real-estate-sales/#close.

 

[27] Erin Stackley, Supreme Court Ruling in Wayfair Case a Win for Real Estate and States, RISMEDIA (August 12, 2018), http://rismedia.com/2018/08/12/supreme-court-ruling-wayfair-case-win-real-estate-sales/#close.

 

[28] Jeff Mengoli, The Impact of the Supreme Court’s Ruling in South Dakota v. Wayfair, BigCommerce, https://www.bigcommerce.com/blog/south-dakota-v-wayfair/.



High Court Fashion: Is there Copyright Protection for Trade Dress?


Copyright Protection of Non-Utilitarian Designs under the Copyright Act of 1976

Designers in the high fashion industry face many obstacles in receiving intellectual property protection for the utilitarian aspects of their clothing. Congress has provided copyright protection only for original works of art, but not for industrial designs that embody utilitarian functions.  See 17 U.S.C. 101.  Copyright protection does not extend to utilitarian aspects of objects because it would open up a flood of litigation over exclusive monopoly rights that would “burden competition, raise prices, and also harm consumers.”  See Star Athletica, L.L.C. v. Varsity Brands, Inc., Brief for United States as Amicus Curiae 5-6.  This proves problematic, however, when art and industrial design are intertwined, especially in the fashion industry which combines aesthetic elements with utilitarian garments.  Under the separability doctrine, these pictorial, graphic, and sculptural works on the design of a useful article are copyrightable so long as they “can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.”  See  17 U.S.C. 101.  But what happens when pictorial, graphic, sculptural works are inseparable from the utilitarian aspects of a garment?  See Star Athletica, L.L.C. v. Varsity Brands, Inc. provided fashion designers with newfound intellectual property protection for aesthetic aspects that are incorporated into utilitarian aspects of their garments.

 

Obstacles Designers Faced in the High Fashion Industry Prior to the Star Athletica Decision

 

It is without a doubt that fashion, namely high fashion, has now become a status symbol that relies heavily on its branding and aesthetic more so than any utilitarian value its designs may serve.  So much of the value that these high fashion designs derive is from its rarity and accessibility to only the elite and wealthy.  Accordingly, it is not too surprising that fast fashion powerhouses have copied these high fashion runway looks along with several other brand elements available to the more general public.  

 

Fast fashion brands, i.e. Zara or Mango, have often tried emulating high fashion ad campaigns by recreating the featured garments for an exponentially lower price.  For example, Celine’s ad campaign for the 2011 fall and winter collection consisted of models in a natural setting surrounded by aloe plants.  Zara later emulated this in black and white during the Spring and Summer 2014 season and again during the Fall and Winter 2015 season with a minimalist focus on a model in black and white and an aloe plant.

 

 

Fashion Industry | copyright protection
High fashion Black & White

 

A few other examples of this are pictured below where Zara emulated Balenciaga’s Fall and Winter 2016 collection with its red parka and comparable styling to Lotta Volkova or a cream colored trench coat with athletic zip up wear underneath for the Burberry Fall 2016 season, which was a distinctive look for that season featuring model Chris Wu.

 

copyright protection zara
Balenciaga on the left and Zara on the right

 

The similarities between the campaigns are not entirely identical, and even if they were, there were not rigidly defined protections under the Copyright Act.  Zara and other fast fashion powerhouses such as Mango and Forever 21 have a legally cognizable right to provide their own independent expressions about their fashion ideas.  Accordingly, they continue to use these similarities with the intention that consumers create a psychological connection between the high fashion brand and the fast fashion brand.  Fast fashion powerhouses strengthen these connections by recreating the styling, colors, and design to produce the same high fashion look elite fashion designers were inspired by without infringing logos, patents, or trademark protected designs.  This leaves high fashion designers left fairly powerless and unprotected by copyright laws.  This all changed with the holding of Star Athletica, L.L.C. v. Varsity Brands, Inc., which provided high fashion designers with much more expansive intellectual property protection.

 

Burberry coat on left and Zara coat copyright
Burberry coat on left and Zara coat on right
Fashion Industry intellectual property protection | Law Firm of Dayrel Sewell
Gucci on left and Mango on right

 

Star Athletica, LLC v. Varsity Brands, Inc.: Progress Toward Copyright Protection of Fashion Design

 

In March 2017, the Supreme Court established a test for determining the copyright eligibility of design elements in fashion in Star Athletica, L.L.C. v. Varsity Brands, Inc. Respondent Varsity Brands, Inc. obtained more than 200 copyright registrations for two-dimensional designs that appear on their cheerleading uniforms.  Respondent employed designers who sketched design concepts of uniforms consisting of “original combinations, positionings, and arrangements of elements which include V’s (chevrons), lines, curves, stripes, angles, diagonals, inverted V’s, coloring, and shapes.” 137 S. Ct. 1002, 1007 (2017).  Respondent Varsity Brands, Inc. sued Star Athletica, L.L.C., a competitor that also markets cheerleading uniforms, for copyright infringement for using 5 of Respondent’s copyrighted designs.  Id.  The District Court granted the petitioner summary judgment holding that designs could not be conceptually or physically separated from the uniforms, and therefore were not copyrightable designs.  Id.  The Sixth Circuit later reversed this and concluded that graphics “could be identified separately and were capable of existing independently” of the uniforms under 17 U.S.C. 101.  Id.  Specifically, they found that the graphic designs were separately identifiable because “the designs and a blank cheerleading uniform can appear ‘side by side’ and . . . are capable of existing independently.”  Id. The Supreme Court found these conflicting perspectives on the separability analysis warranted certiorari to resolve this widespread disagreement over the proper separability test.  Id. 

 

Varsity Brands, Supreme Court
Appendix to Opinion of the Supreme Court

 

The Supreme Court relied solely on a statutory interpretation of 17 U.S.C. 101, rather than a free-ranging interpretation of the best copyright policy for the case at hand.  See Mazer v. Stein, 347 U.S. 201 (1954).  The Court looked at the “whole provisions of the law” to determine the meaning of 17 U.S.C. 101.   See United States v. Heirs of Boisdore, 8 How. 113, 122 (1849).  The statute provides that:

 

A pictorial, graphic, or sculptural feature incorporated into the design of a useful article is eligible for copyright protection if it (1) can be identified separately from, and 2) is capable of existing independently of, the utilitarian aspects of the article. 17 U.S.C. 101.

 

The Court focuses more on the second requirement, stating that the burden of proof for the first requirement is not that difficult to satisfy.  See Star Athletica, L.L.C. v. Varsity Brands, Inc., 137 S. Ct. at 1010.  The Court states that the trier of fact must determine whether the separately identified feature can exist apart from the utilitarian aspects of the article.  Id.  This means that it has to be able to exist on its own if its imagined independent from the useful article.  Id.  If it cannot be imagined separately from the useful article, then it is not a pictorial graphic or sculptural feature of the article itself, but rather as part of one of the utilitarian aspects of the garment.  Id.

 

The Copyright Act provides that the owner of the copyright can reproduce this work copies on any kind of article regardless of whether it embodies a utilitarian property.  See 137 S. Ct. at 1005.  The Court states that this is a mirror image of 17 U.S.C. 113(a) which protects an authorship fixed on some tangible medium that is non-utilitarian and then later applied to a utilitarian object.  Id.  On the other hand, 17 U.S.C. 101 protects the art that is first fixed in the medium of a useful article.  Id.  Accordingly, the Court holds that the copyright protection extends to pictorial, graphical, or sculptural objects regardless of whether they are affixed to utilitarian or non-utilitarian objects.  Id.

 

The Court held that this interpretation of the statute is consistent with a past holding in the Copyright Act’s history.  Id.  In Mazer, the Court held that the respondents owned copyright protection for a statuette that served as the base of the lamp and it was irrelevant if can be identified as a freestanding sculpture or lamp base.  Id.  The Copyright Office used the Mazer holding in the modern separability test to copyright law in section 101 of the 1976 Act. Id.

 

Using statutory interpretation and case law, this Court held that the surface decorations on the cheerleading uniforms can be considered separate under the separability test mandated in Section 101 of the 1976 Act.  See 137 S. Ct. at 1006.  They reasoned that if the decorations were removed from the uniforms and affixed to another medium, they would not copy the uniform itself.  Id.  They analogized that just as two-dimensional fine art are aligned with the shape of the canvas on which it is painted, these decorations are aligned with the shape of the uniform itself.  See 137 S. Ct. at 1012. Respondents may only prohibit the reproduction of these surface designs; however, the Court holds that they have no right to prevent others from manufacturing a cheerleading uniform identical in shape, cut, or dimensions.  See 137 S. Ct. at 1006

 

Ultimately, the design of the uniforms satisfy the requirements of Section 101 of the 197 Act because they 1) can be perceived as a two- or three- dimensional work of art separate from the useful article; and 2) would qualify as a protectable pictorial, graphic, or sculptural work either on its own or in some other medium if imagined separately from the useful article. 137 S. Ct. at 1016. Based on this interpretation, the Supreme Court affirmed the Court of Appeal’s judgment.  Id.

 

Now high fashion designers can turn to this holding when any aesthetic design is affixed to a utilitarian design.  This holding has revolutionized high fashion designers’ intellectual property interests for their designs in the high fashion industry that is victim to fast fashion’s intellectual property theft.

 

 



Landlord-Tenant Battle Over NYC Rent Stabilization


 

 

NYC Rent Stabilization | Best Law firm in Brooklyn NYC
Rent Stabilization

 

New York’s first step towards rent regulation can be traced back to the 1920s.[1]  The history of rent control in New York has been a battle between owners and tenants for quite some time.  In general, rent controlled apartments must be in buildings of three or more units constructed on or before February 1, 1947 and tenants must have occupied their apartment since at least July 1, 1971.[2]  Under rent control, the maximum rent is determined by statute, through the Maximum Base Rent formula.[3]  The Maximum Base Rent formula allows a landlord to increase monthly rent charges in order to recoup the costs of owning the building.[4]  In addition, hardship increases may be allowed in specific circumstances, including when there is substantial rehabilitation to the building, and to recover the cost of major capital improvements.[5]  When a rent-controlled apartment becomes vacant, it is subject to rent stabilization, or, if it does not meet the requirements of rent stabilization, it is deregulated entirely.  If a rent-controlled apartment becomes vacant, and the maximum legal rent exceeds $2,000.00 instead of remaining under rent stabilization, the unit is deregulated.

 

Under the NYC Rent Stabilization Law, rent-stabilized apartments are subject to certain statutory rent increases, including a 20% increase for a two-year lease upon vacancy.[6]  In addition, rent Stabilization Law §26-504.2 [a] provides for the deregulation of rent-stabilized apartments that reach a threshold of legal regulated rent.  Specifically, deregulation will apply to:

 

“any housing accommodation which becomes vacant on or after [April 1, 1997] and before the effective date of the rent act of 2011 and where at the time the tenant vacated such housing accommodation the legal regulated rent was two thousand dollars or more per month; or, for any housing accommodation which is or becomes vacant on or after the effective date of the rent regulation reform act of 1997 and before the effective date of the rent act of 2011, with a legal regulated rent of two thousand dollars or more per month.”[7]

 

Owners have been abiding by Rent Stabilization laws for years but, when Richard Altman decided to sue his owner for illegally deregulating the unit he leased in 2003 by counting the 20% rent increase allowed by statute to push his rent over the $2,000.00 threshold, uncertainty spread throughout New York.  For apartments involuntarily placed under rent regulation in New York City, those regulations were removed when a vacant apartment crossed a certain rent level. However, previously unresolved in the case law was whether, in order to effect deregulation, that rent level had to be reached during the tenancy of the last tenant prior to vacancy, or could be reached through implementation of various increases allowed to owners between two actual tenancies, such as the 20%.

 

Initially, in 2015 the New York Appellate Division for the First Department ruled in favor of Richard Altman, holding that although the owner was entitled to a 20% rent increase for Altman’s initial lease, that increase did not serve to deregulate the apartment because the rent was not over $2,000.00 at the time the prior tenant vacated the premises.  The decision by the Appellate Division caused mass uncertainty by owners and tenants who had been previously deregulated by the 20% increase. Tenants believed they had won and were ready to start filing lawsuits to return their units to rent stabilized and collect damages for over paid rent.  While tenants were excited about the court’s ruling the decision left landlords in a very difficult position because they had previously followed the law by including the 20% to deregulate the apartments and were facing potentially thousands of dollars in back-pay to tenants and thousands of apartments being re-stabilized. However, the Altman decision was appealed and heard by the New York Court of Appeals.

 

NYC Rent Stabilization | Best Law firm in Brooklyn NYC
The Final Decision

 

April 26, 2018 was a monumental day for landlords who were facing potential re-stabilization of thousands of previously deregulated apartments.  The Court of Appeals introduced Altman with the statement that it must determine whether the 20% vacancy increase should be included in determining if the rent of a unit exceeds the $2,000.00 threshold.  To tenant’s dismay, New York’s highest Court ruled in favor of the landlords allowing vacancy rent increases to be used to boost a unit’s cost over the deregulation threshold.  Ultimately, the Court of Appeals ruled that the 20% increase should be considered when determining the legal regulated rent at the time of the vacancy.  The decision was a massive defeat for Altman and all other tenants hoping to re-stabilize their rent.  The Court of Appeals Chief Judge Janet DiFiore wrote in her decision that state law makes it clear the vacancy rent increase should be counted when figuring if any apartment has reached the deregulation threshold.  “The legislative history could not be clearer and leaves no doubt that the Legislature intended to include the vacancy increase,” DiFiore wrote.[8]  The unanimous ruling by the Court of Appeals prevents the unjustified re-stablization of thousands of apartments that were appropriately deregulated according to law.  It also prevents thousands of deregulated tenants from receiving a windfall in the form of a rent-stabilized apartment with a below-market rent.

 

NYC Rent Stabilization | Best Law firm in Brooklyn NYC
New York City landscape

 

The New York Court of Appeals decision will continue to allow landlords to deregulate units and buildings that were once rent stabilized. In a city where rent is continuing to increase and become unaffordable, rent stabilized apartments will continue to decrease. Unfortunately, for tenants seeking rent stabilized apartments there are not many left and there will not be new rent stabilized apartments appearing on the NYC real estate horizon. The endless new construction taking place all over New York will continue to make landlords deregulate apartments and drive rent prices up.  Bear in mind if you are one of the lucky few living in a rent stabilized apartment, hold on to it for as long as you can.  Otherwise, it will be like looking for a need in a haystack of brand-new, highly-priced, luxury apartments.

 

 

 

 

 

 

 

[1] Peter D. Salins & Gerard C.S. Mildner, Scarcity By Design: The Legacy of New York City‘s Housing Policies, 120-21, 52-53 (1992).

[2] N.Y.C. Admin. Code 26-403(e)(2)(h).

[3] N.Y. Comp. Codes R. & Regs. tit. 9, 2201.4.

[4] Id.

[5] N.Y. Comp. Codes R. & Regs. tit. 9, 2201.4(b)-(c).

[6] Rent Stabilization Law §26-511 [c] [5-a].

[7] Altman v. 285 W. Fourth LLC, 2018 NY Slip Op 02829.

 

[8] Id. at 6.



Piece of Cake: What’s Behind Supreme Court Opinions?


On June 4, 2018 the United States Supreme Court issued a decision in the controversial case, Masterpiece Cakeshop, Ltd. v. Colorado Civil Rights Commission. The case concerned a baker, Mr. Jack Phillips, a devout Christian, who in 2012 declined to create a wedding cake for a same-sex wedding on the basis that doing so would require him to express himself artistically in a way that was inconsistent with his religious beliefs. At the time, gay marriage was not legally recognized in Colorado. However, the state had an anti-discrimination act regarding goods and services available to the public. See C.R.S. 24-34-601. The Commission determined that Mr. Phillips violated the anti-discrimination act. On review, the Supreme Court held that the Commission violated the First Amendment’s Free Exercise Clause by egregiously treating Mr. Phillips’ case with hostility towards his religious beliefs. The Free Exercise Clause requires that states not base regulations and laws on hostility towards a religious belief, but that they remain neutral. The Supreme Court reversed the lower court’s decision stating that Mr. Phillips had been “entitled to a neutral decision-maker who would give full and fair consideration to his religious objection as he sought to assert it . . . ” Masterpiece Cakeshop, Ltd. v. Colo. Civil Rights Comm’n, 201 L.Ed.2d 35, 46 (U.S. 2018).

 

Masterpiece Cakeshop, Supreme Court Decision
Jack designing cake

 

 

Critical to the effect of this decision on similar future cases is that the Court did not decide for the states the limits and boundaries between anti-discrimination and freedom of speech. Rather, the Court narrowly held that these disputes “must be resolved with tolerance, without undue disrespect to sincere religious beliefs . . . ” while avoiding “subjecting gay persons to indignities when they seek goods and services in an open market.” Id. at 50. In other words, the Supreme Court simply held that state courts must be neutral decision-makers who faithfully uphold the entire Constitution.

 

Nevertheless, the case was not decided without much disagreement among the nine Supreme Court Justices, despite the final 7-2 decision. With three concurring opinions (one such written and joined by two of the four liberal Justices) and one dissenting opinion, it is no wonder why the case has caused such controversy. What might cause even more shock is that Justice Kennedy, who wrote the majority opinion, also wrote the 2015 landmark decision which legalized gay marriage nationwide. Because of the different opinions, this case becomes an effective model for answering the following questions. How do Supreme Court Justices decide who writes each opinion? Why do they write concurring and dissenting opinions? What precedential value do concurring and dissenting opinions have?

 

 

The Majority Opinion is Assigned by the Chief Justice

 

After oral arguments, the Justices convene in a conference to express how each of them would decide the case; the conference is followed by a vote. Once the votes have been counted, the Chief Justice assigns a Justice in the majority to write the opinion of the Court or does so himself. However, if the Chief Justice is not in the majority, the most senior Justice in the majority has the authority to assign writing the opinion of the court. In Masterpiece Cakeshop, Chief Justice Roberts was a part of the majority and assigned writing the opinion of the court to Justice Kennedy. They were joined by Justices Breyer, Alito, Kagan, and Gorsuch. Often, a Justice in the majority will agree with the outcome of the case, but not with the majority’s reasoning for it. That Justice may write a concurring opinion, which can be joined by other Justices. Here, Justice Kagan filed a concurring opinion in which Justice Breyer joined. Justice Gorsuch filed another concurring opinion, joined by Justice Alito. Justice Thomas wrote an opinion concurring in the judgment, but only concurring in part as to the majority’s rationale. Any Justice who disagrees with the majority judgment can write a separate dissenting opinion. Here Justice Ginsberg, who was joined by Justice Sotomayor, filed a dissenting opinion.
Often, the opinions reference each other, each Justice arguing their reasoning in comparison to another’s. The following sections briefly describe the main points of each opinion and illustrate how the Justices agree and disagree with each other.

 

 

Majority Opinion:

 

Written by J. Kennedy; Joined by JJ. Roberts, Breyer, Alito, Kagan, Gorsuch

“While it is unexceptional that Colorado law can protect gay persons in acquiring products and services on the same terms and conditions as are offered to other members of the public, the law must be applied in a manner that is neutral toward religion.” Id. at 37. The commissioners made hostile comments about Mr. Phillips’ faith, casting doubt on the fairness and impartiality of the Commission’s adjudication of the case. Justice Kennedy compared this case to another where other bakers prevailed before the Commission despite refusing to create a cake for a client (because it depicted anti-gay messages, which the bakers opposed) while being willing to sell other products with a different message to the same customers. The cases are all too similar, he argues, and yet the Commission reached opposite decisions.

 

Concurrence:

 

Written by J. Kagan; Joined by J. Breyer

“[A] proper basis for distinguishing the cases was available—in fact, it was obvious.” Id. at 50. The three bakers, Justice Kagan argues, would have denied making the anti-gay cake for any customer, regardless of his religious beliefs. However, Mr. Phillips would have created a wedding cake for an opposite-sex couple, but refused to create one for the same-sex couple. Nevertheless the commission made their decision with hostility and bias.

 

 

Concurrence:

 

Written by J. Gorsuch; Joined by J. Alito
Pushing back against the Kagan and Ginsberg opinions, Justice Gorsuch argues that the different bakers’ cases were legally almost identical and should have resulted in the same determinations. He argues that the Commission treated them differently because they deemed Mr. Phillips’ beliefs offensive. The courts should not be deciding what is offensive. “[T]he place of secular officials isn’t to sit in judgment of religious beliefs, but only to protect their free exercise. Just as it is the ‘proudest boast of our free speech jurisprudence’ that we protect speech that we hate, it must be the proudest boast of our free exercise jurisprudence that we protect religious beliefs that we find offensive.” Id. at 55.

 

Concurrence:

 

Written by J. Thomas; Joined by J. Gorsuch Justice Thomas addresses the freedom of speech argument that Mr. Phillips made. He believes creating a custom wedding cake for a couple is “expressive conduct” and should therefore be protected by the First Amendment. “States cannot punish protected speech because some group finds it offensive, hurtful, stigmatic, unreasonable, or undignified.” Id at 65.

 

Dissent:

 

Written by J. Ginsberg; Joined by J. Sotomayor

Justice Ginsberg argues that neither the commissioners’ statements about religion nor the commission’s prior treatment of other bakers amounts to hostility towards religion. The Court’s decision is therefore unjustified. She argues that the other bakers refused to make an offensive cake because of the cake itself, but that Mr. Phillips refused to bake the wedding cake because of their sexual orientation.

 

Precedential Value of Concurring and Dissenting Opinions

 

While lower courts must follow the Supreme Court’s majority opinion (under stare decisis), there are times when a concurring opinion, and even a dissenting opinion, can influence future decisions and the development of law. Overtime, the view of the courts might therefore shift drastically.

 

As for the Masterpiece Cakeshop case, it will take careful consideration by lower courts of the decision as they apply it to similar cases. Courts will need to balance applying the law in a manner that is neutral towards religion while protecting people from discrimination.



Can Crypto-Currency Revolutionize the Music Industry?


It was only a matter of time before cryptocurrency [1] pervaded the music industry.  The proliferation and potential applications of blockchain seem to be the perfect fit for the challenges struggling musicians face.  While musicians are the creators of their art, it’s the record labels that distribute the music who tend to own the songs.  It is for this reason Paul McCartney has now been fighting for 40 years for the rights to The Beatles albums.[3]  As technology evolves, some crafty music executives have been devising new ways for musicians to protect and sell their songs.

 

Paul McCartney and Michael Jackson, Can Crypto-Currency Revolutionize the Music Industry?
Paul McCartney and Michael Jackson from 1983—before McCartney sold Jackson a significant amount of the rights to The Beatles Catalog 

 

The Crypto Solution

 

Hakim Draper, cofounder of Boogie Shack Music Group, has been creating a new means for every artist in the music industry to have their very own digital currency.  Boogie Shack has teamed up with Tao Network, a blockchain-based content distribution platform for the music industry, and plans to use XTO tokens (XTO = Tao Network’s abbreviation for it’s cryptocurrency) to create a unique currency for music artists.  Each artist will be able to sell rights to their songs in exchange for XTO tokens.[4]

Tao Network’s Logo for their Crypto-Currency, the currency itself is also referred to as XTO
Tao Network’s Logo for their Crypto-Currency, the currency itself is also referred to as XTO

 

The potential for musician’s intellectual property (IP) to be converted into monetized data will serve as a direct pipeline between artists and their fans.  Artists and fans may very well collaborate on songs, merchandising, and tours, meaning the level of fan involvement will directly correlate to an artist’s success.  The more artists rely on other funding sources, the more of their rights they are forced to give away.  This has the potential to be a great step forward for artists in the music industry assuming that the fans who support these artists using cryptocurrency will have the artist’s best interests in mind.  It should also be noted that cryptocurrencies such as XTO—especially in their early phases with limited funding—are controlled by a very small number of people who could potentially thwart/control the artist.  It should also be noted—even despite all the traction it has been gaining—cryptocurrency is not regulated by the SEC, so it is new ground that many are skeptical about.  There has been no legal entity or other organizational form that governs and protects the ongoing developments and ensures fair decision-making for cryptocurrencies in the United States.[5]

 

Current Issues in the Music Industry

 

Most issues stem from the complexities around who “owns” a song.  Ownership is critical as it secures the right to royalties for any use of the song for the owners fortunate enough to be royalty holders.[6]  As we are in the year 2018, it’s not surprising that streaming has emerged as the most important source of incoming royalties representing 62% of royalty revenue in 2017 (worth about $5 billion).  Record companies tend to walk away with the lion’s share of revenue, while only the most popular artists and songwriters gain relatively small sums of money relative to the popularity of their output.  To put it in perspective, struggling artists have complained that a million listens on a streaming service are worth about $100 to the writer of the song once the music industry has taken its cut.[8]

 

Other Music Cryptos are starting to Join the Mix

 

There are a few blockchain-based solutions that exist for paying musicians via crypto-currency.  Bitmark—a crypto startup that uses blockchain technology to enable property rights for digital assets—has partnered with Asia’s largest streaming platform KKBOX to create a mechanism for artists to see instant payments when their songs are streamed on the service.[9]

 

Another huge startup crypto contender in the blockchain world goes by the name of Vezt.  The Los Angeles-based blockchain startup brought in its funds via initial coin offering (ICO) worth $4.7 million, which it’s planning to use to launch its royalties management platform.[10]  The team at Vezt has already landed the rights to some 30 songs from music icons: Dr. Dre, Kanye West, Jay-Z, John Legend, and Drake.

 

The platform allows the rights holder to a song to sell their portion of the rights through an initial song offering (ISO).  Artists and rights holders can then choose how much they would like to raise from a fraction of their song, set the reversion term and set a date for the ISO.[11]  Rights are purchased with the tokens issued by Vezt.  Musicians are paid with the funds from the crypto offering (after Vezt takes its cut), and the digital rights to the song move to the buyer’s Vezt digital wallet.  The song rights information is encoded on Vezt’s blockchain, and the startup will distribute purchaser royalties and allow users to store profits on the platform.[12]  It should be noted that changing those profits out of Vezt tokens and into fiat currency, or even another form of digital currency, comes with a fee of at least 5%.

 

Music Industry and Cryptocurrency, Can Crypto-Currency Revolutionize the Music Industry?

 

Where do Music Cryptos Currently Stand?

 

Vezt still has a long way to go before it makes a name for itself among the ASCAPS and the BMIs.  Drake and J. Cole’s, “Jodeci Freestyle” (strong verse from a younger Cole very Born Sinner) became the first song to ever be featured as an ISO as a Beta test for Vezt last November.[13]  However, Drake only offered 10% of the publishing of the song, not the actual master, which means artists are still hesitant to go all in on the platform.[14]

 

At this stage it is an interesting idea, but one that is not likely to make a lot of money for either artists or investors in the near future until it gains some serious traction.  While the current generation of musicians may not become fully acclimated with crypto currency, it is most certainly likely to only gain in popularity among the younger generations.  In other words, as musicians from younger generations become pertinent, IP will be more commonly valued as monetized data.  Thus, musicians and the music industry alike are looking forward to seeing how monetizing data will impact (and potentially revolutionize) the Intellectual Property industry as a whole.

 

[1] A digital currency in which encryption techniques are used to regulate the generation of units of currency and verify the transfer of funds, operating independently of a central bank.

[2] A digital ledger in which transactions made in bitcoin or another cryptocurrency are recorded chronologically and publicly.

[3] Jonathan Stempel, Paul McCartney settles with Sony/ATV over Beatles music rights, Reuters Entertainment News (June 30, 2017), https://www.reuters.com/article/us-people-paulmccartney/paul-mccartney-settles-with-sony-atv-over-beatles-music-rights-idUSKBN19L2ET.

[4] Lisa Abeyta, How Cryptocurrency and Blockchain Will Revolutionize the Music Industry, Inc.com (November 17, 2017), https://www.inc.com/lisa-abeyta/how-cryptocurrency-blockchain-will-revolutionize-music-industry.html

[5] Stuermer, M., Abu-Tayeh, G. & Myrach, T. Sustain Sci (2017) 12: 247. https://doi.org/10.1007/s11625-016-0412-2.

[6] Id.

[7] Id.

[8] Id.

[9] Ian Allison, Bitmark partners with Asia’s biggest streaming service KKBOX for music rights and royalties, International Business Times (January 11, 2018), http://www.ibtimes.co.uk/bitmark-partners-asias-biggest-streaming-service-kkbox-music-rights-royalties-1654831.

[10] See https://vezt.co/.

[11] See https://vezt.co/.

[12] Id.

[13] Max Greenwood, Vezt Wants You to Buy Rights to Drake’s Music with Blockchain, Techvibes (November 15, 2017), https://techvibes.com/2017/11/15/vezt-wants-you-to-buy-rights-to-drakes-music-with-blockchain-technology.

[14] Id.



Playing Politics with the Internet – Dangerous game with Net Neutrality


Background

The idea behind the concept of Net Neutrality arose in the early 2000s, when, inter alia, the High Tech Broadband Coalition (“HTBC”) filed comments before the Federal Communications Commission (“FCC”).  At the time, the HTBC urged the FCC to “vigilantly monitor” the provision of internet services to consumers to ensure rights to access content of their choice.  

Today the matter has, to a great extent, become a political battle largely drawn along ideological/party lines.  Nonetheless, the issue remains an important one that should not be ignored, especially in today’s world where access to the internet is essential to daily personal and business life.  

The regulations, put in place by the Obama administration in 2015, enshrined the principle of net neutrality in U.S. law.  The basic tenet of Net Neutrality is that Internet Service Providers (“ISPs”), like ComCast, Spectrum or Verizon, should treat all internet traffic ‘traveling’ through their infrastructure to the end consumer in the same manner.  Essentially, Net Neutrality ensures that these ISPs act as mere conduits to data that travel between the content provider/originator and the end consumer.   

The argument for, and against, net neutrality

Some of the initial proponents of Net Neutrality were content providers, such as Amazon and Google, who put forward the view that regulation was needed to ensure broadband providers were not unfairly, or otherwise, prioritizing the internet.  It was argued that such prioritization would lead to consumers receiving substandard service and experience, especially when the providers themselves were competing in the provision of similar services.  

Since these initial days, the arguments for net neutrality has gained widespread support, amongst them from the American Civil Liberties Union (ACLU).  They argue that there is no guarantee the internet will remain a free and open medium should Net Neutrality be taken away.  Rather, they argue, the pursuit of profit and corporate policies, may favor the monitoring and playing favorites to what individuals see on the internet and/or the quality of their connection.  There were well known instances in the past where AT&T interfered by censoring a rock star’s political speech and Comcast decreasing the quality of the internet services to those who use BitTorrent programs.  The ACLU also cites to an occasion where a Canadian Wireless provider, Telus, blocked its users from accessing the website of a Labor Union that was on strike against Telus.

The repeal of Net Neutrality concerns are well-founded.  In other jurisdictions, where net neutrality laws were not to the standard set forth by the Obama Administration, ISPs have been experimenting with plan offerings of piecemeal media and data offerings.  

In Portugal, with no net neutrality, internet providers are starting to split the net into packages.  In Portugal, mobile carrier MEO offers regular data packages, but it also offers, for €4.99 a month, 10GB “Smart Net” packages.  One such package for video provides 10GB of data exclusively for YouTube, Netflix, Periscope and Twitch, while one for messaging bundles six apps including Skype, WhatsApp and FaceTime.

Net neutrality, Internet service provider
European example of possible aftermath of net neutrality repeal

In New Zealand, Vodafone offers a similar service: for a daily, weekly, or monthly fee, users can exempt bundles of apps from their monthly cap.  A “Social Pass” offers unlimited Facebook, Instagram, Snapchat and Twitter for NZ$10 for 28 days, while a “Video Pass” gives five streaming services – including Netflix but not YouTube – for $20 a month.

However, when discussing the issue of Net Neutrality, it should not be discussed without analyzing the arguments of the ISPs outside of the political prism. The reality is the provision of internet services to data hungry consumers is an expensive endeavor.  Hence, the reason why common carriers, such as telecom and now internet service providers, have been traditionally allowed a natural monopoly.  High entry costs and barriers to entry meant only a few large companies are able to provide a service to the end consumers.  The present composition of FCC, trying to undo (or palm off the policing of the internet to the FTC) argue that since 2015, when Neutrality regulations came into force, investment in broadband infrastructure has diminished.  This in-turn, they argue, would mean areas where broadband services are unavailable or less available would fall further behind in infrastructure investments as the revenue streams for the providers are harder to come by.  

Conclusion

Thus, it is clear that the debate about Net Neutrality is a serious and could decide the future of America’s superhighway.  Decisions on such a wide ranging and important subject matter should be taken after careful consultations with all parties concerned and devoid of the toxic political climate.  This issue, effectively, if not decided properly has the potential to adversely affect America’s edge in innovation and competition.  The vote is planned for Thursday, December 14, 2017 and the net neutrality repeal proposal is expected to pass along party lines.