Alimony reform: Minnesota’s new cohabitation law

Law_books_01A new Minnesota law effective August 1, 20161 authorizes a court, upon motion, to treat a former spouse’s cohabitation after a divorce as a reason to modify or even terminate the other former spouse’s maintenance (alimony) obligation.

Basics of the new law

The new law authorizes a court to terminate, suspend, reserve or reduce a spousal maintenance obligation if the payor files a motion and proves that the recipient spouse is cohabiting with someone.

Not automatic

The modification is not automatic. A party seeking to invoke the benefit of the law must file a motion in court.

A court may modify maintenance based on cohabitation only after considering the following:

  • whether the obligee would marry the cohabitant but for the maintenance award;
  • the economic benefit the obligee derives from the cohabitation;
  • the length of the cohabitation and the likely future duration of the cohabitation; and
  • the economic impact on the obligee if maintenance is modified and the cohabitation ends.

Cohabitation with relatives not impacted

The new law only applies to cohabitation with a person that a former spouse could marry without violating the prohibition against incestuous marriages. Moving in with a close relative should have no effect on alimony.

Private agreements

Parties to a divorce may prevent courts from modifying maintenance on the basis of post-divorce cohabitation by including a clause to that effect in their stipulated divorce judgment.

Waiting period

A motion to modify on the basis of cohabitation may not be brought earlier than one year after entry of the divorce decree unless both parties otherwise agree in writing, or in cases of extreme hardship.

Criticisms

Burden on courts

Some critics worry that courts will be flooded with modification motions as a result of the new law. This kind of criticism, however, exalts judicial convenience over fairness. Since the only legitimate function of a justice system is to promote fairness in society, arguments to the effect that judges should not have to trouble themselves with fairness are not especially persuasive.

Intrusion on privacy

When deciding a cohabitation modification motion, a court will be required to consider, among other things, “whether the obligee would marry the cohabitant but for the maintenance award” and “the likely future duration of the cohabitation.” How will a court decide these things? It would seem that evidence of the parties’ motives and intentions — as discerned from their private email, letters and conversations, for example — would be relevant and admissible on these issues. If so, then the bounds of discovery would seem to be almost limitless. An alimony recipient who is concerned about privacy is not without recourse, however, She (or her cohabitant) can request an appropriate discovery protective order.

Vagueness

The new law is subject to the same two criticisms to which the “best interests of the child” custody standard is vulnerable: (1) undefined terms; and (2) absence of an unambiguous standard for weighing the factors relative to each other. For example, a court is directed to consider the “length” of the cohabitation, but no guidance is given about what should be considered a long period of cohabitation. Nor are courts given any hints about what they are supposed to do with such a determination. Is a court to view a lengthy period of cohabitation as circumstantial evidence of continuing need (dependence on a roommate to share expenses) or as evidence that the cohabitation is similar to a common law marriage? Ambiguities like these make different legal outcomes under the same set of facts likely.

Discrimination against remarried persons

Minnesota law provides for the termination of maintenance upon a recipient spouse’s remarriage, unless a court has previously ordered, or the parties have agreed, otherwise.2 The termination is automatic. Unlike a cohabiting former spouse, a former spouse who remarries is not given an opportunity to object or to explain to a court why maintenance should merely be reduced or suspended rather than terminated altogether. Why should courts be required to consider the economic impact on the obligee if maintenance is modified and the cohabitation ends, while not giving any consideration at all to the economic impact on the obligee if maintenance is modified (or terminated) and the remarriage ends?

Discrimination against unrelated cohabitants

The new law only triggers a potential loss or reduction of maintenance if a recipient moves in with a person s/he could legally marry. This distinction does not seem to be rationally related to the modern function of maintenance, which is to ensure that a former spouse’s needs (as measured by the standard of living during the marriage) continue to be met after a divorce. Except in the case of parents and children, or people who have been awarded custody of a relative, people do not have any greater legal responsibility to support relatives than friends. A person who shares expenses with a roommate will have the same needs (or lack thereof) whether the roommate is a relative or an unrelated friend.

The new law also appears to impose an unequal burden on cohabitants relative to non-cohabiting paramours, and this unequal burden does not appear to be rationally related to the modern needs-based function of maintenance. Why should the former spouse of a person whose new lover is paying all of her expenses have to wait until her new lover actually moves in with her before he may bring a motion to modify or terminate maintenance? The person has the same diminished need for maintenance in both scenarios.

The future of alimony reform

Over the next few years, courts and legislators may be expected to add clarifying content to the new law. Ultimately, though, fundamental reconsideration of the place of alimony in a modern egalitarian society is what is really needed.

Historical origins

The concept of alimony is of ancient origin, dating back to earliest recorded history.3 For thousands of years, only men were legally obligated to support their spouses upon marriage, and the obligation extended to situations in which a wife became separated from her husband through no fault of her own.4

At a time when married women had few legal rights, were not protected from discrimination in employment, and could not secure credit in their own names, it was imminently fair for the law to impose an obligation on husbands to support the women they married. It made sense to impose support obligations on married men as the quid pro quo for a married woman’s relinquishment of rights to them through coverture.

The fault element was intended to ensure the fairness of the system. A husband would not be permitted to avoid his support obligation by abandoning his wife and/or by giving her grounds for divorce by cheating on her. By the same token, a wife who unjustifiably abandoned or cheated on her husband would not be entitled to continue to receive money from him. As in ordinary contract law, the breaching party – of either sex — would not be permitted to profit from his or her own unjustified breach of the contract.

Current rationale for alimony

The legal system that gave rise to the concept of alimony has been fundamentally altered. The system of coverture has been abolished; women have been given equal legal status under the law; and in most jurisdictions, the concept of fault has been removed from divorce. Supreme Court decisions and civil rights acts in the 1970’s have removed the legal impediments to women’s employment, credit, and independence. In short, the original reasons and justifications for alimony no longer exist.

Currently, the only rationale for alimony that courts and commentators provide is that one or the other spouse may not have an ability to be self-supporting after a divorce.

Edifice without a foundation

There does not appear to be any doctrinal basis rooted in justice or fairness for the concept that one person should be required to support another person financially after the other person unjustifiably breaches the marriage contract. The only doctrinal bases that courts and commentators cite are grounded in unreflective stare decisis sustained by little else than a Marxist belief that courts should take from people according to their ability and give to others according to their need.

That belief, however, could equally be applied to unmarried cohabitants who decide to part ways, since in almost every case one of them will have higher income and the other will have greater need. Yet courts (in most states) will not apply Marxist principles to require separating cohabitants to continue to support each other financially. Now that coverture has been abolished, what constitutionally significant aspect of marriage is it that still makes it fair and nondiscriminatory that a couple that lives together without benefit of marriage can part ways without either of them risking being required to provide for the needs of the other while married couples cannot?

If it is suggested that the obligation is voluntarily assumed as part of the marriage contract, then why is the promise to continue to support each other financially — even if one or the other unjustifiably leaves the marriage – never mentioned in the vows that couples exchange during marriage ceremonies?

Of course, not all contractual obligations are expressly stated. Some are implied. But why should the law assume that two able-bodied, rational adults with equal employment opportunities under the law implicitly agree that either of them may unilaterally choose to avoid working during the marriage and then demand that the other continue to subsidize that decision even after s/he leaves the marriage – whether the departure is justifiable or not?

And now that fault has been removed from divorce law, what exactly is the consideration that one spouse gives for the other’s promise of life-long financial support? Access to sexual gratification can’t be it. Prostitution is against public policy. Companionship? Roommates provide that to each other, too, but courts generally do not impose an implied obligation on roommates to provide life-long financial support to each other in exchange for their friendship. Obligations of loyalty, love, fidelity? With the advent of no-fault divorce, the law does not treat these as enforceable parts of the marriage contract.

Statute of frauds

Some guidance about the future of alimony reform might be gleaned from so-called “statutes of frauds.”

Most jurisdictions, although generally enforcing oral and implied contracts, have enacted statutes requiring certain kinds of contracts to be in writing in order to be enforceable. These laws are designed to prevent misunderstandings and false claims about the agreement, if any, the parties intended to make. Typically included within the coverage of these statutes are long-term contracts (e.g., contracts longer than one year) and promises given in consideration of marriage.5 An argument could be made that a promise to pay alimony in the event of a divorce should be required to be in writing in order to be enforceable, at least to the extent it represents an obligation to provide financial support to a spouse who unjustifiably breaches the marriage contract. (A no-fault state may prefer to make the requirement applicable to every alimony obligation.) Like any other statute of frauds, such a requirement could help prevent false claims and misunderstandings about the spouses’ respective responsibilities in the event of a divorce. At the same time, it would bring family law into harmony with basic precepts of contract law, constitutional law, and the modern legal status of women.

  1. codified at Minn. Stat. § 518.552, subd. 6
  2. Minn. Stat. § 518A.39.
  3. See, e.g., Hammurabi Code 137 (1754 B.C.); see also the Justinian Code (ca. 534 A.D.)
  4. Id.; see also Chester G. Vernier and John B. Hurlbut, The Historical Background of Alimony Law and its Present Statutory Structure, 6 Law & Contemp. Prob. 197, 198 (Spring, 1939).
  5. See, e.g., Minn. Stat. § 513.01.

Let’s Go Crazy, Just Not This Way

Micahmedia at en.wikipedia [CC BY-SA 3.0 (http://creativecommons.org/licenses/by-sa/3.0) or GFDL (http://www.gnu.org/copyleft/fdl.html)], via Wikimedia Commons[Photo: Micahmedia at en.wikipedia [CC BY-SA 3.0 (http://creativecommons.org/licenses/by-sa/3.0) or GFDL (http://www.gnu.org/copyleft/fdl.html)], via Wikimedia Commons]

Minnesota’s proposed new publicity rights law

Minnesota is poised to enact a sweeping new publicity right into law. Publicity rights legislation has been needed in Minnesota for a long time, but this isn’t the way to do it.

Background

Publicity rights are a matter of state law, growing out of the common law right of privacy.1

Although initially springing from the common law cause of action for invasion of privacy, misappropriation of personality (a person’s name or likeness) developed along a different path. The other causes of action – intrusion upon seclusion, false light, and publication of private facts – continue to be concerned with the indignity, the emotional suffering, that an invasion of privacy causes. Misappropriation of personality has drifted away from that focus. The modern trend is to treat publicity rights (i.e., the exclusive right exploit one’s own name, likeness, voice, etc. commercially) as a kind of intellectual property. The concern now is with the unfair use of another person’s identity to make money, not so much with the indignity suffered when one’s name is used for base commercial purposes. This has been good news for celebrities. It is not very often that a modern-day celebrity is in a position to contend that being associated with mercantilism is embarrassing or repulsive to him/her.

Today, most states recognize, either by court decision or statute, a right to recovery for unauthorized use of a person’s name, likeness, voice, etc. In Minnesota it was established by court decision.2 The question that remains unanswered, in Minnesota and several other states, is just how many of the attributes of a property right it will take on.

The question whether the right continues to exist after a person’s death forces the issue. If the cause of action is a personal one, designed to make a person whole for indignities suffered, then it cannot. Dead people feel no pain. (Or at least, there is no known way to prove that they do.) Prompted by the death of Prince, who was indisputably the most commercially successful musical artist the state has ever produced, the Minnesota legislature is set to take action on a proposal to enact a statute that would both clarify and codify existing case law, while at the same time greatly expanding it.

The Minnesota bill

The Senate version of the bill is attracting a good deal of attention. In part, this is because of the retroactive postmortem protection provisions it contains These kinds of provisions aren’t new. They have been enacted in several states now, including Washington (former home to Jimi Hendrix.) Those states, however, have imposed finite term limits, like 50 or 70 years, tending to correspond, roughly, to copyright terms. The Minnesota bill, by contrast, calls for post-mortem publicity rights of potentially infinite duration. This means that sometime in the future (after 2086), assuming Prince’s heirs haven’t abandoned the right by then, a tribute band could freely exploit Prince’s music so long as it didn’t mention him by name. Instead of marketing their albums or performances under the banner, “The Knock-Off’s play Prince’s greatest songs,” they would have to say something like, “The Knock-Off’s play the greatest songs of some dude we can’t name.”

The “fair use” provision in the Senate version is the more worrisome part, though. As written, it provides an exception from liability for when a person’s name, likeness, photograph, etc. is used for “a news, public affairs or sports broadcast or account.” This leaves out entire categories of reverential uses, like editorials and opinion pieces, not to mention fan sites — regardless of how respectful they are of copyright and trademark rights.

The bill does say that the mere fact that a website has paid advertising on it isn’t enough to establish commercial use. Instead, it is left to the courts to decide, on a case-by-case basis, whether the name or likeness appearing on the website is “connected” with a website’s sponsorship or paid advertising. Great. So what will a court do about personal blogs and websites with Google AdSense on them? Since AdSense correlates revenues to the number of visits to a site, all of the content on these sites is “connected” with paid advertising. If the number of visits to a blog site increases after a guest blogger posts an elegy for a beloved artist (resulting in increased revenue of, say, $0.02), couldn’t a court say the mention of the artist’s name was “connected” to advertising revenues, thereby making the elegy a “commercial” use?

(By the way, why are news and sports broadcasts given special dispensation? What about comedy, online book club discussions, movie reviews, and so on? It seems unlikely that this distinction could withstand First Amendment scrutiny.)

And then there is the clause providing that not only can a court order the impoundment and destruction of infringing goods, but the State can use its police power to seize “all instrumentalities used in connection with the unauthorized use” for “forfeiture to the state.” So not only can someone get a court to issue an order for the destruction of all the T-shirts with the word “Prince” on them that you’ve been selling, but now the police will have the authority to come into your house and take away your computer and modem. Not for the benefit of an aggrieved person or his heirs, mind you, but simply to add to the State’s collection of the many other assets it is already confiscating from its citizens under other laws.

Yes, it is disgusting to see people who never had anything respectful to say about Prince while he was alive trying to cash in on his popularity now that he is dead. And yes, codification and clarification of the law of misappropriation of personality to specifically address the question of postmortem rights is needed in Minnesota. But we also need First Amendment freedoms. Without them, Prince’s musical genius would not have been able to flourish in the first place.

Believe it or not, we can have both. It will just take a little more thinking, that’s all.

 

  1. Nizer, The Right of Privacy – A Half Century’s Developments 39 MICH. L. REV. 526, 535-36 (1941).
  2. See Lake v. Wal-Mart Stores, Inc., 582 N.W.2d 231 (Minn. 1998).

How Sole Maternal Custody Laws Hurt Mothers

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I’ve written before about how sole maternal custody laws are unfair to unwed fathers. And many people have written about how sole custody is bad for children. People don’t often stop to consider how sole maternal custody laws harm unwed mothers, though.

The unwed mother’s statutory right to sole custody

In many states, an unmarried mother has the sole and exclusive right to custody and contact with her child even if there is no doubt about who the father is. Statutes in these states specify that a father does not have any rights to custody, contact or parenting time (or “visitation,” as it historically was called) even after there has been a final adjudication of paternity. Nor does he acquire such rights by signing a valid and enforceable acknowledgement of paternity. Instead, he must initiate a court proceeding and convince a judge that that he is a suitable person to be “granted” the same parental rights that the mother is automatically granted by operation of law.

Needless to say, the havoc these laws have wreaked on fathers has been extreme. In some cases, it has led to the termination of parental rights due to the mother’s unilateral decision to put the child up for adoption before the father has been able to get a hearing on whether it is in his child’s best interests for him to have the legal rights of a father or not. Having exclusive custodial rights, mothers have been free to relocate to different states, or even foreign countries, frequently leaving fathers with no viable means to establish and enforce their rights. Fathers have good reason to be angry about these laws. As it turns out, single mothers should be angry about them, too.

The primrose path to a mother’s loss of rights

When a statute automatically gives a mother sole legal and physical custody of a child upon birth, the father is without any legally enforceable rights unless and until he commences a legal proceeding and persuades a judge to “grant” him rights. In the meantime, the mother is under no legal obligation to allow the father to have any contact with the child at all, much less let the child stay at the father’s home for a weekend. She can legally tell the father that she will not let him even talk to their child on the phone until he gets a court order requiring it.

As the custodial parent, she is responsible for the welfare of the child. She could reasonably believe it would be irresponsible to leave the child in someone else’s physical care, at least for an extended period of time.

She could also reasonably believe that preventing access might help protect her right to custody in the event the father files a motion for custody rights. Generally speaking, the longer a parent goes without maintaining regular contact with a child, the less likely he is to win a battle for custody.

Taking these two things into consideration, it would seem to be in a mother’s best interests to exercise her exclusive right to sole custody to the fullest extent the law allows.

The problem is that most courts, when called upon to decide a custody case, will consider a parent’s willingness to allow and encourage the other parent to maintain a meaningful relationship with the child.

This is a relatively recent addition to the “best interest” calculus. Ten years ago, not many judges gave this factor a whole lot of consideration. Today, though, a growing number of judges do. In fact, some judges assign a great deal weight to the negative effect of gatekeeping on children.

This means that a mother who exercises the legal right that a statute expressly gives her may very well find herself facing the prospect of losing custody of a child because she exercised it.

This trap for single mothers would not exist if, instead of a maternal sole custody statute, states had statutes providing for shared custody rights immediately upon paternity being adjudicated or the joint execution of an acknowledgement of parentage. Then both the mother and the father would immediately be put on notice that they each need to respect a child’s right to a relationship with both parents.

Fostering cooperation instead of acrimony

A statute that respects the parental rights of both mothers and fathers can also be expected to foster more cooperative parenting rather than the divisiveness and acrimony that all too often plague unmarried parents who are living separate and apart from each other. If parents understand that they each have enforceable legal rights of contact, then they may be expected to be a little more circumspect in their dealings with each other. They will also have a greater incentive to work out a schedule between themselves.

Acrimony and bitterness make people’s lives miserable. Single mothers are no exception. They are people, too.

Moreover, the longer a couple goes without trying to work together on a parenting plan, the harder it gets to begin. Therefore, starting the process as early as possible is critical.

Better voluntary compliance with support obligations

As proponents of shared parenting have pointed out, a parent with joint custody statistically is more likely to voluntarily support a child financially than a noncustodial parent is. This is largely because noncustodial parents, not surprisingly, feel disenfranchised. When a parent is treated as an equal, given the respect that is due a parent, and allowed to be actively involved with a child for substantial amounts of time, s/he is a lot more eager and willing to see that the child is thriving, including taking care of the child financially.

Lightening the load of parenting responsibility

Custody isn’t just a right; it’s also a responsibility. A parent with sole custody is solely responsible for getting the child to doctor and dentist appointments, helping with homework, attending to the child’s other needs, and caring for the child in innumerable other ways every day of the week. It’s a strenuous and demanding job for a stay-at-home mother. It is at least as difficult for a working mother. Why should the law excuse the father from those responsibilities simply because he is not married to the mother of his child?

Time for a change

Maternal sole custody statutes are unfair to fathers, unfair to mothers, and unfair to children. The time has come for states to replace them with laws giving both parents shared custody rights and responsibilities upon either an adjudication of paternity or the parents’ joint execution of an acknowledgement of paternity.

 

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My book, The History of Custody Law is available in paperback or as a Kindle e-book at Amazon.com:

Purchase at Amazon.com
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Bolden vs. Does: Eviscerating the parental rights of unwed fathers

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The U.S. Supreme Court’s denial of certiorari this year in the case of Bolden v. Does (In re Adoption of J.S.)1 is disappointing. This case presented the Court with a perfect opportunity to reconsider its questionable ruling in Quilloin v. Walcott.2 Instead of availing itself of that opportunity, the Court opted to let stand a Utah Supreme Court ruling that conditioning an unwed father’s retention of parental rights on proof of ability to raise and support a child, while not also imposing the same condition on unwed mothers, does not violate the Equal Protection rights of unwed fathers.

The facts

The pertinent facts were not in dispute. The parents were not married to each other. Father promptly (two weeks before the baby was born) filed a paternity petition in court seeking both an adjudication of paternity and custody rights. He offered to pay the mother’s birthing expenses, and he timely filed a sworn, notarized notice in the putative fathers registry.

The Utah statute, however, also required him to file a separate affidavit asserting his willingness to assume custody and disclosing his childcare plans. Apparently his attorney neglected to advise him of this additional requirement.

While the Father’s paternity/custody petition was pending, Mother placed the child with a couple that wished to adopt, and the couple commenced an adoption proceeding. After receiving notice that the couple intended to adopt his child without his consent, Father moved to intervene. At the same time, he filed the affidavit of childcare plans required by the statute. The lower court, however, held that it was too late, and proceeded to terminate his parental rights so that the adoption could go forward. Father appealed the decision, asserting that the affidavit requirement violated the Fourteenth Amendment He argued, among other things, that since an unwed mother is not required to file such an affidavit in order to preserve her right to oppose an adoption, requiring unwed fathers to do so violates the Equal Protection clause.

The law

In 1972, the U.S. Supreme Court ruled, in Stanley v. Illinois,3 that unwed fathers have constitutionally protected parental rights that are every bit as fundamental as those of unwed mothers. Six years later, however, in Quilloin v. Walcott, supra, the Court narrowed that ruling by limiting its application to only those fathers who demonstrate that they have assumed significant responsibility for the care of their children.

Time for a change

 Quilloin was decided in 1978, at a time when sex role stereotypes permeated every aspect of the American psyche and culture, including jurisprudence. Although some progress toward gender neutralization of custody law was being made, the maternal preference was still an explicit part of the statute and/or case law of every jurisdiction. Most people, including judges, believed that women are simply born with an instinctive desire and ability to raise children, while men are not. To the Quilloin Court, therefore, it made sense to place the burden of proof of willingness and ability to parent on fathers while at the same time giving mothers the benefit of a presumption of willingness and ability to parent.

Judicial rulings are supposed to be based on evidence, not unsupported assumptions. If a state were to require only female candidates to pass physical and psychological tests in order to become police officers, on the basis of an assumption that men – and only men — are born with a protective instinct and naturally superior physical strength, it would clearly be denying women the Equal Protection of the laws. It should be just as clear that state laws requiring only male parents to demonstrate ability to parent in order to retain parental rights violate the Equal Protection clause.

It is truly baffling that judges still cannot, or will not, see that. It’s 2015, folks.

Dissenting opinion

Associate Chief Justice Nehring filed an excellent dissenting opinion in this case. Here are a few excerpts that bear repeating:

“I dissent because even the most minimally ‘searching’ inquiry reveals the impermissible stereotyping at the root of Utah Code section 78B-6-121(3)(b)…. The affidavit requirement reflects a negative stereotype that is commonly wielded against unwed fathers: that they are uninterested in their offspring and ill-suited or incompetent caregivers.”

“Indeed, this stereotype is precisely the flip side of the same generalization that has long been applied to women—i.e., that they are naturally well-suited for the responsibilities of childcare and the home.”

“[T]here is no rational reason to assume that a father’s ability to fulfill the parental role is any less reliable than a mother’s.”

 

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My book, The History of Custody Law is available in paperback or as a Kindle e-book at Amazon.com:

Purchase at Amazon.com
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  1. 2014 Utah 51,  ___ P.3d. ___(2014)
  2. 434 U.S. 246 (1978)
  3. 405 U.S. 645 (1972)

Trademark Liability for Wearing a Costume to Solicit Candy

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The donning of costumes on Halloween is a long but increasingly risky tradition. The possibility that a particular costume might insult or offend another person’s religious, cultural, racial, ethnic, sexual orientation, disability status, or political sensibilities has led some schools to simply ban Halloween celebrations and/or costumes altogether.1 Despite these developments, surprisingly little attention has been given to the question whether donning a costume that displays another person’s trademark image, logo, or fictional character creates a risk of trademark liability.

What is a trademark?

A trademark is any word, typographic character, symbol or device, or combination thereof, that is used in commerce to identify the source of goods or services, and to distinguish them from goods or services manufactured or sold by others.

A cartoon character can be a trademark. Batman, for example, is a trademark owned by DC Comics. Many other cartoon and fictional characters displayed on Halloween costumes are protected trademarks.

Is it infringement to go trick-or-treating using another person’s trademark?

The answer, generally, is no. Both at common law and under the Lanham Act, a trademark infringement claim requires proof that the complained-of use creates a likelihood of confusion as to the source of goods or services. Children generally are not attempting to peddle anything when they go trick-or-treating. To the contrary, they are usually trying to acquire goods, not market them.

In addition, using a Halloween costume to go trick-or-treating would probably quality for the referential fair use defense. Merely referring to a trademark, as distinguished from using it in a way that suggests particular goods or services come from a different source than they actually do, is not infringement.

An infringement claim might be a possibility in the rare case where a child in costume offers to go trick-or-treating on someone else’s behalf. In this case, the child may be seen as using the costume to market a trick-or-treating service. Even in this situation, however, wearing the costume would not be infringement unless it can be established that doing so creates a likelihood of confusion about the source of the service. To be liable to DC Comics for infringement for wearing a Batman costume while offering to go trick-or-treating for others, DC Comics would need to prove that consumers are likely to believe that DC Comics sponsored or endorsed the child’s activity.

Of course, additional facts can change the analysis. If, for example, an individual dresses up in a Batman costume and falsely represents to other people that DC Comics has sent him out to offer trick-or-treating services to children, or that DC Comics specifically endorses or sponsors his activity, then there may be liability. It is unlawful to make false statements in connection with an offer of goods or services. Doing so is prohibited by Section 43(a) of the Lanham Act and various state and federal consumer protection and false advertising laws.

Can I modify or make a costume that displays another person’s trademark character image?

The answer to this question is not quite as simple. The probability of liability for infringement is not high (subject to the qualifications noted above.) Replicating a trademark without the trademark owner’s permission, however, implicates more than the possibility of an infringement claim. It also creates a risk of liability for trademark dilution.

Dilution means the unauthorized use of a strong or famous mark in way that weakens the distinctiveness of the mark, or tarnishes it. As one court put it, it is the “gradual diminution or whittling away of the value of a trademark, resulting from the use by another.”2

Unlike infringement, no proof of a likelihood of confusion is required. A person may be liable for dilution even if no one at all believes the product was made or distributed by the trademark owner. The purpose of protecting trademarks from dilution is not to protect the public from confusion as to source, sponsorship or endorsement. It is to protect a company’s investment in the distinctiveness of its trademark as a source identifier.

The two principal forms of dilution are blurring and tarnishing.

Blurring means using a mark in such a way as to diminish its association with a particular source. For example, making a costume that displays the word ROLEX on it would tend to diminish the association of that mark with watches, and therefore could be dilution.

Tarnishment means causing negative associations with a mark. This may occur as a result of the unauthorized use of another person’s mark on poor quality or hazardous goods, or in a disreputable context.

Fortunately for most trick-or-treaters, Section 43(c) of the Lanham Act3 establishes liability only for those who make a commercial use of the mark. Making a costume for your own use, or for your own children, probably would not qualify as a commercial use. Making and selling costumes to others, however, could put you at risk, if in so doing you use someone else’s trademark logo or image without permission.

Referential fair use is a defense to a tarnishment claim. A costume that is a parody of a famous cartoon character trademark might qualify for the protection of this defense.

Other potential legal risks

This article focuses exclusively on the trademark risks associated with wearing a costume on Halloween. The reader should be aware that this activity may implicate other kinds of legal risks, as well. For example, wearing a costume that states or implies something that is not true about a person, business, product or service, might expose you to liability for defamation, trade disparagement, fraud, misrepresentation or unfair competition, depending on the circumstances. In some cases, displaying a costume that communicates a private fact about a person could result in liability for invasion of privacy. Appropriating a person’s likeness without permission may result in liability, in some circumstances. And copying or modifying copyright protected artwork raises the possibility of liability for copyright infringement.

Moreover, it is not inconceivable that an especially scary or offensive costume might generate a tort claim for negligent or intentional infliction of emotional distress, at least in some states.

On the criminal side, a number of jurisdictions have imposed prohibitions against the wearing of masks, at least in certain places and/or at certain times. Some of these expressly make an exception for Halloween, but not all of them do.

This is not a exhaustive list.

Should you be afraid? Maybe so. But isn’t that what Halloween is all about?

 

 

 

  1. See, e.g., Carlson, Suzanne, “Religious Roots, Secular Festivities: Halloween Takes A Hit In Schools,” Hartford Courant (October 26, 2014); Brown, Matthew, “Religious overtones scare school into canceling Halloween celebration,” Deseret News (October 18, 2013), retrieved from http://national.deseretnews.com/article/487/religious-overtones-scare-school-into-canceling-halloween-celebration.html on October 31, 2015.
  2. Plasticolor Molded Prods. v. Ford Motor Co., 713 F. Supp. 1329, 1342 (C.D. Cal. 1989).
  3. 15 U.S.C. § 1125(c)

No More Royalties for “Happy Birthday”

Birthday Song
(from court documents)

Restaurants, business owners, authors and producers no longer have to pay a copyright royalty to perform the “Happy Birthday” song. A federal district court judge has ruled that Warner/Chapelle Music Inc., which has been claiming ownership of the copyright in the song – and charging royalties for its use — does not own the copyright, after all.

Background

Patty and Mildred Smith wrote a song called “Good Morning To All” in the nineteenth century. Originally intended for use in a kindergarten classroom, the lyrics were: “Good morning to you / Good morning to you / Good morning, dear children / Good morning to all.” They published the song in a book, and assigned the copyright to their publisher, the Clayton F. Summy Company.

The Summy Company registered a copyright claim to the song, “Happy Birthday To You” in 1935. Warner/Chapelle succeeded to that claim.

Warner/Chapelle argued the 1935 registration secured ownership of copyright in the lyrics as well as the music. The judge ruled, however, that even if the Summy Company acquired rights to the melody, there was no evidence the Summy Company ever acquired the copyright to the lyrics.

Melody vs. lyrics

The melody for the famous birthday song has been in the public domain for over half a century, the copyright registration having expired in 1949. This meant that anyone could use the song in their business, or in a greeting card, musical composition, sound recording or audiovisual work, provided they used different lyrics. Because Warner/Chapelle claimed ownership of the copyright to the lyrics, the company maintained that anyone wishing to publicly perform, publish or record the words to the song (“Happy birthday to you,” etc.) needed to pay a royalty. Warner has collected millions of dollars of royalties for the lyrics to this song.

Very likely in the public domain

Many reporters are saying the song is now “in the public domain.” This is not accurate. The ruling means that Warner/Chapelle has failed to establish a right to claim royalties for the song, or the lyrics to it. The fact that the Hill sisters did not convey the copyright to the lyrics to the Summy Company simply means that the long-time lyrics rights-claimant Warner/Chapelle cannot assert ownership. It does not mean that nobody else can. In theory, if it can be proven that someone else wrote it, and that the first authorized publication occurred  after 1923, and that all copyright requirements that existed at all relevant times have been met, then that person, or his  successor(s) in interest, may own the copyright to the lyrics. That will not be an easy thing to do, given the existence of a songbook containing the lyrics to “Happy birthday to you,” purporting to have been published “with permission,” with a publication date of 1922 appearing on it.

Should Custody Law Be Abolished?

Dusty books

In a previous blog post1 I explained why custody designations still matter, in terms of their impact on legal rights. The bigger question behind that one is: Should custody labels still matter? To put it another way: Has the time come to relegate the whole concept of custody of children to the scrap heap of history?

The United Nations Convention the Rights of the Child

The question is not merely an abstract hypothetical. To the contrary, there appears to be a very definite trend, both in the United States and around the world, away from the concept of custody. The United Nations Convention of the Rights of the Child (“UNCRC”), for example, eschews the word custody. Instead, Article 9 of the UNCRC directs member countries to “ensure that a child shall not be separated from his or her parents against their will, except [in cases involving abuse or neglect, or where] a decision must be made as to the child’s place of residence.” Rather than referencing a  right of parents to custody of their children (referring instead to a child’s right to have the state order what it determines is in the child’s best interest), Article 9 requires member countries to “respect the right of the child who is separated from one or both parents to maintain personal relations and direct contact with both parents on a regular basis….”

Shared parenting legislation

Nearly every U.N. country has signed onto the UNCRC. The U.S. Congress has refused to ratify it.2 Nevertheless, there is other evidence of a clear movement away from the concept of custody (or at least that particular word) in the United States, too. In particular, a growing number of states are transforming, or at least supplementing, their traditional custody laws with shared parenting and parenting plan legislation. These kinds of laws use terminology like primary residential responsibility and decision-making responsibility instead of physical custody and legal custody. Sometimes these laws expressly provide that parents may use other words besides “custody,” so long as the alternate terms are defined in a way that is understandable and enforceable.

Reducing acrimony and litigation

Understandably, not many family law mediators are enamored of the word custody. Fewer still are fans of the winner-takes-all, adversarial approach it connotes. Because neither parent wants to be the one who is deprived of that title and relegated to the role of “visitor,” it is a significant source of impasse in mediation. In many cases, it may actually be the only source of impasse. For this reason, many mediators will not address the issue (if they address it at all) until after all discussions of the details of the actual parenting time schedule and decision-making allocations have been completed.3

Any family court judge or attorney can attest to the fact that the lion’s share of litigation in family court involves a contest for ownership of the custody “prize.” If this incentive were removed, it stands to reason that there would be a sharp decline in litigation in family court. Parents would save literally thousands of dollars in attorney fees and related expenses like custody evaluators, forensic experts, witness fees, and so on.

Removing the winner-gets-the-kids concept would also remove the incentive for parents to focus on each other’s faults, and to “dig up dirt” on each other. It may not be reasonable to expect divorcees to co-parent blissfully, without conflict, but getting off to a less acrimonious start, one that encourages cooperation rather than competition, would certainly seem to have a greater chance of serving the interests of children than the existing system has.

The historical rationale

As explained in detail in other blog posts, and in my book, The History of Custody Law, the concept of custody has been around since earliest recorded human history. The traditional account provided by historians is that all through history, up until the Enlightened Age (i.e., the particular era of time in which the historian providing the account is living), children were viewed as economic assets having the  legal status of chattel. Under this view, an allocation of custody of a child between two parents was required for the same reason an allocation of ownership of any other marital property was required. The owner of property gets to make decisions about what to do with it, and who gets to use it. By dividing up a divorcing couple’s property, a court prevents future disputes over those kinds of decisions from arising. By the same token, “awarding” a child to one or the other parent makes it clear which parent gets to decide how to raise the child, who gets to spend time with the child, and how and when the time will be spent.

Those who have read my book, or who have actually read the cases that people cite for the proposition that custody was governed by principles of property law at some time in American history, know that is not true. In America, courts have always regarded the best interests of the child to be the paramount consideration in custody cases. It is true, though, that courts have been at a loss to discover a way to address the question of what is to happen to the children after a divorce other than to say that one or the other parent will get them and the other parent will have a right to  have contact with them from time to time – an outcome analogous to an award of title to property (custody) subject to an easement of use (visitation.)

Do “physical custody” and “visitation” labels make sense anymore?

In the nineteenth and early twentieth centuries, custody carried with it the power to determine at what times, and where, the noncustodial parent would be allowed to visit his child. Since a noncustodial parent’s contact with a child frequently occurred in the mother’s home, it made sense to call it visitation.

When courts began broadening visitation to include overnights and entire weekends, or even an entire week of time during summer vacations, the justification for calling it “visitation” disappeared. Accordingly, many states have enacted legislation requiring courts to use the term “parenting time” instead.

Since courts can and do designate a child’s “primary physical residence” even in cases where joint physical custody is awarded, it is difficult to see what essential function the term physical custody serves anymore. A parent who has the right to have possession of a child outside of the other parent’s home, even if only on alternate weekends, has a right to possession of the child on those weekends. Why not simply call it what it is, then — alternating periods of physical custody? More to the point, though, why even call it custody at all? Why not simply call any time a child spends with a parent “parenting time” and dispense altogether with calling one, the other, or both parents “physical custodians”?

Legal custody

Most (though not all) states distinguish between legal and physical custody. Legal custody refers to decision-making authority. Physical custody refers to the right to possession. Unlike physical possession time, which can be alternated between two parties throughout the year, decision-making authority is not as simple. A judge cannot simply decree that the mother will decide which school a child will attend half of the year, and the father will select the school for the rest of the year; or that the mother will decide whether their son will be circumcised during the first year of his life, and the father will make that decision the following year. Some kinds of decisions can only be made once.

It is not necessarily the case, though, that it is in a child’s best interest to give one parent sole authority to make all decisions affecting the child. It is possible, for example, that one parent may have greater knowledge of, and interest in, education, but not religion, while the other parent has a greater concern about religious upbringing than choice of schools. Allocating decision-making responsibilities in a more careful, reasoned manner would seem to serve children’s interests better than conferring the title of “legal custodian” with all decision-making power to one parent alone.

Third party custody

One way the custody concept is useful is in distinguishing parental rights from the rights of third parties. As the U.S. Supreme Court and common law judges have said many times, a parent’s right to the custody of his or her children is superior to that of any other person. It is difficult to express this principle of law without using the word custody.

One way to do it would be to include the rights of physical possession and decision-making authority within the definition of parental rights. Currently, things like the right of access to medical records and the right to attend school conferences are included in statutory lists of parental rights. Rights of physical possession and decision-making authority should also be included in the list.

This approach would have the added advantage of reminding courts that custody is every bit as important a right as, say, access to school records. Just as a judge is not free to terminate parental rights of access to school records absent a showing that such access puts the child at risk of harm, so a judge should not be free to terminate a parent’s rights to physical possession and decision-making authority unless it is shown that such rights put a child at risk of harm. A judge should not have the power to remove children from their parents simply because he believes another person might have better parenting skills, or a greater ability to send the children to a private school, for example.

Of course, there will always be situations involving child abuse, neglect or endangerment – or the death or mental or physical incapacity of a parent — in which a transfer of possession and/or decision-making authority to a non-parent will be necessary to protect a child from harm. There is no reason why these non-parental caretakers could not be called guardians rather than “custodians,” though.

Cordination with other laws

The biggest challenge presented by a proposal to eliminate custody from the law involves coordinating the change with existing law. A legislature considering eliminating it will need to review all of its statutes and administrative rules and regulations to ensure that eliminating the concepts of custodial and noncustodial parents from the law will not have unintended consequences, or make other laws and rules impossible to apply.

For example, how will the change affect state or federal housing assistance programs that  limit eligibility to custodial parents? Child support laws will need to be rewritten if they are couched in terms of custodial and noncustodial parents. Standards for modification of custody will need to be revised.

The effect on jurisdiction and enforcement in other states will also need to be considered. For example, many states have enacted a law known as the Uniform Child Custody Jurisdiction and Enforcement Act (UCCJEA.) A state that is thinking about eliminating custody designations should consider not only the impact the change will have on how the UCCJEA is applied, but also how it will impact the other laws, and variations on the UCCJEA, that other states have enacted.

International law will also need to be considered. The Hague Convention, for example, provides ample means for securing an abducted child’s return on behalf of a custodial parent. Securing the return of a child without a custody order in place may be more problematic.

Conclusion

Eliminating the concept of routinely making awards of custody of children whenever their parents do not live together admittedly would be a radical departure from thousands of years of legal tradition. It may not be something that can be achieved overnight, or  with a single stroke of a pen. Nevertheless, at a time when nearly every country in the world takes pride in itself for conceiving of children as human beings rather than property, it could be worthwhile for more policy-makers to give serious consideration to moving away from the routine judicial practice of making what amount to declarations of child ownership anytime two parents do not live together.

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My book, The History of Custody Law, is available in paperback and Kindle e-book formats at Amazon.com:

Purchase The History of Custody Law
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  1. “Why the Custody Label Matters”
  2. Various reasons have been given for Congressional refusal to ratify the UNCRC. For example, members of Congress have expressed concern that it might have the effect of outlawing corporal punishment; or that it might mean that children cannot be put to death, or imprisoned for life without possibility of parole; or that farmers could no longer require children under 12 to work under dangerous conditions. There has also been a concern among fiscal conservatives that the provisions classifying education, nutrition, health, and recreation as rights could create significant new entitlements for children, resulting in unfunded mandates.
  3. See, e.g., McKnight, Marilyn S. and Stephen K. Erickson, The Plan to Separately Parent Children After Divorce, in Divorce and Family Mediation 129-54 (Jay Folberg et al., eds. 2004.)

Effect of heterologous insemination statutes on parental rights

(Photo  by Screen Classics (Test Tube Babies (1948) at the Internet Archive) [Public domain], via Wikimedia Commons)

(Photo by Screen Classics (Test Tube Babies (1948) at the Internet Archive) [Public domain], via Wikimedia Commons)

To enable married couples to become legal parents despite the husband’s impotency, and to obviate the need for a formal adoption, several states have enacted statutes providing that under certain circumstances a child born to a married woman by means of artificial insemination is legally the child of her husband.

Some of these statutes provide that the husband’s consent is all that is required to render a child conceived by heterologous insemination1 legitimate. The Oregon statute, for example, simply declares: “The relationship, rights and obligation between a child born as a result of artificial insemination and the mother’s husband shall be the same … as if the child had been naturally and legitimately conceived … if the husband consented to the performance of artificial insemination.”2

In most states, the husband’s consent is presumed.3

The Uniform Parentage Act (UPA), which has been enacted in a few states, makes parental status a function of both consent and intent. It provides that a man who furnishes sperm or consents to a woman’s artificial insemination with the intent of becoming a parent is a parent.4

Several states require, in addition to consent, that the insemination be performed in a specified way, such as under the direction of a licensed physician. If the couple complies with the statutory conditions, then the presumption of legitimacy is not rebuttable with evidence that a sperm donor is the biological father.5

Courts are split as to the effect of a couple’s or a sperm donor’s failure to comply with statutory conditions. Some courts attempt to give effect to the parties’ intention to bar the donor from asserting parental rights despite their failure to comply with statutory conditions.6 Among these courts, some require substantial compliance with the statutory requirements.7 Other courts disagree, holding that unless there is full and complete compliance with all statutory requirements, the case must be decided on the basis of common law principles without the benefit of the statutory provisions.8 This could include, to the extent applicable in a particular jurisdiction in a particular case, the presumption of legitimacy, the doctrines of equitable estoppel and promissory estoppel, implied child support contracts9 and any common law rulings that may exist in the state concerning the legitimacy of children conceived by artificial insemination with the husband’s consent.

Statutes addressing heterologous insemination typically contain a provision declaring that the sperm donor is not a legal parent of the child under the circumstances set out in the statute.10

This kind of statute may be unconstitutional as applied to sperm donors who contracted with the mother for parental rights prior to the conception of the child.11 Modern statutes, therefore, often contain a proviso that the donor may be the legal parent of the child if the parties so agreed prior to the conception of the child.

In states that have enacted heterologous insemination statutes, then, it is possible that a sperm donor could have standing to ask for custody or visitation rights if the parties agreed that he would retain parental rights, or if the parties have not complied or substantially complied with the requirements of the state’s heterologous insemination statute.12 What rights a court in such a state will grant the donor depend on the circumstances of each case, as the court will grant only such rights as it deems to be in the  best interests of the child. The desire of the parents is recognized as an important “best interest” factor in every jurisdiction, though, and the parties’ contract, if any, is good evidence of the parents’ wishes. Thus, even while requiring the donor to pay child support (because waivers of support generally are not enforceable) a court could use the fact that the sperm donor agreed not to seek custody or visitation as evidence that an award of custody or visitation to him is not in the child’s best interests. This would leave the donor in the position of owing a support obligation for a child he cannot visit and as to whose upbringing he has no input. Obviously, sperm donors would be well advised to familiarize themselves with their state’s heterologous insemination statute before proceeding. Husbands would be well advised to do so, too.

The original reason for the enactment of heterologous insemination statutes was to enable married couples with an infertile husband to use sperm from an anonymous donor to conceive a child, without having to go through the process of terminating the donor’s parental rights and the completion of a formal adoption of the child by the husband. Several states, however, have extended the coverage of their statute to single women, too. Statutes in these states may bar a sperm donor from asserting rights to custody or visitation whether the mother is single or married.13

Under state same-sex marriage laws, the lesbian partner of the mother is considered a “husband” for purposes of laws conferring parental rights on the husbands of artificially inseminated women.14 If a lesbian couple has not entered into a legal marriage, the mother’s lesbian partner would not acquire any parental rights under this kind of statute.15

 

  1. Heterologous insemination refers to the insemination of a woman using the sperm of a man who is not married to her. Homologous insemination refers to the insemination of a woman using her husband’s semen. The legal effect of homologous insemination is not substantially different from that of insemination by means of regular sexual intercourse.
  2. OR. REV. CODE § 109.243 (2011) (This provision was enacted into law by the Legislative Assembly but was not added to or made a part of Oregon Revised Statutes chapter 109 by legislative action.) Under a statute of this kind, the insemination need not be performed by or under the direction of a physician. In re Marriage of A.C.H. & D.R.H., 210 P.3d 929 (Or. Ct. App. 2009)
  3. The presumption of consent is distinct from the presumption of legitimacy. Even if the presumption of consent is rebutted, it may still be necessary to present evidence to rebut the presumption that the husband is the father of any child born or conceived during the marriage.
  4. UNIF. PARENTAGE ACT § 703 (2002)
  5. See, e.g., CAL. FAM. CODE § 7613(a) (2012), which provides:

    If, under the supervision of a licensed physician and surgeon and with the consent of her husband, a wife is inseminated artificially with semen donated by a man not her husband, the husband is treated in law as if he were the natural father of a child thereby conceived. The husband’s consent must be in writing and signed by him and his wife. The physician and surgeon shall certify their signatures and the date of the insemination, and retain the husband’s consent as part of the medical record, where it shall be kept confidential and in a sealed file. However, the physician and surgeon’s failure to do so does not affect the father and child relationship….

  6. See, e.g., Laura G. v. Peter G., 830 N.Y.S.2d 496 (Sup. Ct. 2007) (holding that the husband is the legal father even though his consent was not in writing, as required by the statute.)
  7. See, e.g., Lane v. Lane, 912 P.2d 290 (N.M. 1996)
  8. See, e.g., Jhordan C. v. Mary K., 224 Cal. Rptr. 530 (Cal. Ct. App. 1986) (holding that a sperm donor’s parental rights and responsibilities are not barred if the parties failed to use a licensed physician as required by statute); E.E. v. O.M.G.R., 20 A.3d 1171 (N.J. Super. Ct. Ch. Div. 2011) (same); see also Mintz v. Zoernig, 198 P.3d 861 (N.M. Ct. App. 2008) (holding that a sperm donor is the legal father of a child if the applicable statute relieves anonymous donors of parental rights and responsibilities, and his anonymity has not been maintained.)
  9.   For example, it has been held that even if the parties fail to comply with a statutory requirement that the husband’s consent be in writing, the court may nevertheless impose a child support obligation upon him on the basis of equitable estoppel or an implied support contract. R.S. v. R.S., 670 P.2d 923 (Kan. Ct. App. 1983)
  10. See, e.g., CAL FAM. CODE § 7613(b) (2012), which provides:

    The donor of semen provided to a licensed physician and surgeon or to a licensed sperm bank for use in artificial insemination or in vitro fertilization of a woman other than the donor’s wife is treated in law as if he were not the natural father of a child thereby conceived, unless otherwise agreed to in a writing signed by the donor and the woman prior to the conception of the child.

  11. C.O. v. W.S., 639 N.E.2d 523 (Ohio 1994) (suggesting that doing so would violate the Equal Protection rights of the sperm donor.)
  12. See, e.g., Jhordan C. v. Mary H., 224 Cal. Rptr. 530 (Cal. Ct. App. 1986) (holding that a donor may assert parental rights of custody and visitation if the parties carry out the artificial insemination without the use of the statutorily mandated licensed physician.)
  13. See, e.g., CAL. FAM. CODE § 7613(b) (2012); Steven S. v. Deborah D., 25 Cal. Rptr. 3d 482 (Cal. Ct. App. 2005)
  14.   Della Corte v. Ramirez, 961 N.E.2d 601 (Mass. App. Ct. 2012); In re Parentage of Robinson, 890 A.2d 1036 (N.J. Super. Ct. Ch. Div. 2006) (holding that same-sex marriage partners are parents to the same extent as heterosexual marriage partners are); Karin T. v. Michael T., 484 N.Y.S.2d 780 (Fam. Ct. 1985); cf. Debra H. v. Janice R., 930 N.E.2d 184 (N.Y. 2010) (holding that a civil union is to be treated the same as a marriage for purposes of a state’s artificial insemination laws); Shineovich v. Kemp, 214 P.3d 29 (Or. Ct. App. 2009) (holding that Equal Protection requires that a mother’s lesbian domestic partner must be treated as a legal parent of her partner’s child to the same extent and under the same circumstances as a husband in a heterosexual marriage would be.)
  15. See M.S. v. C.S., 938 N.E.2d 278 (Ind. Ct. App. 2010); cf. In re Paternity of Christian R.H., 794 N.W.2d 230 (Wis. Ct. App. 2010) (holding that same-sex partners do not acquire parental rights under the state’s artificial insemination statute in the way that married couples do.)

How much copying is ‘fair use’?

copyright-symbol
Which of the following statements is/are true?

(a) Copying up to 25 words is fair use.
(b) Copying less than 10 percent is fair use.
(c) Copying 25 words or 10% is fair use.
(d) Copying only a small amount is fair use.
(e) If you don’t make money on it, it’s fair use.
(f) It’s fair use if it’s for an educational purpose.
(g) Non-profit organizations can’t be sued for copyright infringement.
(h) It’s fair use if there’s no copyright notice on it.
(i) If the author is dead, you can copy anything he wrote.
(j) As long as you give credit to the author, it’s fair use.
(k) “Fair use” is a myth. There is no such thing.

If you answered (a), (b), (c), (d), (e), (f), (g), (h), (i), (j), or (k), then you failed the test. You’re in good company, though; nearly everybody believes at least one of these things is true.

Fair Use has been called “the most troublesome in the whole law of copyright,”1 and for good reason. With the exception of some narrowly limited statutory exemptions, there are no “bright line” tests for determining what is fair use. The bulk of the law on fair use has been left to the courts to develop. Unfortunately, they have not established any specific “bright line” tests, either.

The four-prong test

17 U.S.C. § 107 provides that copying material “for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright….” It then directs courts to consider four factors when deciding whether a particular use should be permitted as fair use:

(i) the purpose and character of the use;
(ii) the nature of the work;
(iii) the amount and substantiality of the portion used; and
(iv) the effect of the use on the market for the work.

Taken together, it is clear that Congress intended courts to treat commentary, criticism, news reporting, teaching, scholarship, and research as uses that will satisfy the first prong of the test. This doesn’t mean these are the only kinds of uses that may qualify, though. Nor does it mean that every use of copyrighted material for one of the specified purposes is fair use. The other three prongs must still be considered.

Under the fourth factor, even an educational use may be disqualified from “fair use” protection if it competes in the same market with the original work. If, for example, a teacher were to photocopy and distribute a textbook to students, students would no longer have a need to buy copies of the textbook for themselves. Such a use would have a negative impact on the market for the textbook. In this scenario, a teacher asserting “fair use” as a defense to infringement probably would not be successful.

2 Live Crew, Pretty Women, and the birth of the Transformative Use doctrine

In the 1990’s, 2 Live Crew was sued for copyright infringement for using “samples” of a substantial amount of Roy Orbison’s “Oh Pretty Woman” in a recording of their own. (Although the band had asked, permission had been refused for reasons having to do with protecting artistic integrity. 2 Live Crew therefore went ahead and copied the original recording anyway, ultimately making a nice bundle of money on it.) The case went all the way the United States Supreme Court.

To the surprise of many copyright attorneys, the U.S. Supreme Court ruled in favor of 2 Live Crew. In so doing, the Court established a precedent for “transformative use” as a factor emanating from the other four factors, or coming within the penumbra of the other four factors. Not only that, but according to Justice Souter (who wrote the opinion for the Court), the extent to which a use is transformative was henceforth to be regarded as  the most important consideration in the fair use analysis.2 The more transformative a new work is, the more likely it is to be fair use.  The fact that a work is transformative, the Court declared, outweighs all the other factors. Thus, the Court ruled that even though 2 Live Crew had engaged in a substantial amount of copying; had copied “the heart” of the song; and had commercially exploited the song in a way that negatively impacted the market for the original, the use nevertheless qualified as “fair use” because it was a “transformative” use.

Creating a new internal conflict in copyright law

The Court’s ruling seems to be at odds with the Copyright Act’s grant of an exclusive right to the author of a copyrighted work to make derivative works from it. The Copyright Act defines a derivative work as “any form in which a work may be recast, transformed, or adapted.”3 The language of the statute seems to be pretty clear that Congress intended to ensure that authors would have the exclusive right to transform their works into something else. According to the U.S. Supreme Court, however, it is fair use for other people to transform an author’s work into something else without the author’s permission.

While no definition of transformative use is set out in the Copyright Act, it basically includes any use that alters the purpose, meaning or function of a work, or a portion of it. In other words, it is any use that makes the work serve a purpose, express a meaning, or function in a way that is different from the original purpose, meaning or function of the work.

Parody

Parody is one kind of transformative use that has long been treated as “fair use.” This is because a parody, by definition, comments on, and is a criticism of, the original work. As such, it falls squarely within two of the purposes Congress has identified as the most deserving of “fair use” protection. On balance, other factors tend to support its classification as “fair use,” primarily because parody normally does not displace the market for the original. The segment of the market that is likely to buy the original normally is not the same segment of the market that is likely to buy a work that is critical of it. (Fans are not likely to be in the market for products mocking the things they adore.)

“Entirely different aesthetic”

Historically, courts treated the fact that copying of a work was for purposes of criticism and commentary as being central to “fair use” analysis in cases where no other Congressionally identified purpose (research, education, news reporting) existed. This was why unauthorized copying for a satire (which doesn’t use material from the original for purposes of commentary or criticism of the original work) is not as likely to qualify for “fair use” protection as a parody is. After the 2 Live Crew decision, however, courts seem to be trending toward interpreting “transformative” fair use in an increasingly broad way. In Cariou v. Prince,4, for example, the Second Circuit Court of Appeals held that an artist’s incorporation, into his paintings, of entire photographs that other people had taken was a sufficiently transformative use to qualify as fair use. The Court reasoned that the new work created “a different aesthetic” from that imparted by the original work. In so holding, the court expressly rejected the notion that the new work must criticize or comment on the original in order to be a protected fair use.

It is difficult to square this case with other court decisions that have denied fair use status to satire specifically because satire does not criticize or comment on the original work. Most satire certainly does create a different aesthetic from the original. An orginal work may project a somber, philosophical aesthetic; a satire of it most likely will create the opposite kind of aesthetic, i.e., a light, humorous one.

It is also difficult to square the Cariou decision with the exclusive right of the author to make derivative works from his work. The artist in this case clearly copied the work and then modified it. That is exactly what it means to make a derivative work. There is nothing in the Copyright Act that explicitly requires a derivative work to have the same “aesthetic” as the original work. The rule now, though, at least in the Second Circuit, seems to be that an author has an exclusive right to make derivative works only to the extent the derivative work has the same “aesthetic” as the original work.

The potential import of this ruling is not yet known. For example, how great a difference will qualify as “entirely different”? Since judges are not art experts, will the testimony of expert witnesses qualified to form opinions about aesthetics be necessary in fair use cases? If so, what standard relevant to copyright principles should they employ to decide whether a particular work has an “entirely different” aesthetic versus, say, only a “partially different” aesthetic?

Conclusion

While some courts seem to be applying increasingly expansive definitions of fair use, not all judges are in in the mood to whittle away authors’ rights. “Judges do not share a consensus on the meaning of fair use.”5 It has become what Judge Pierre Leval has described as “a disorderly basket of exceptions to the rules of copyright.”6

You can gamble on the possibility that a court will determine your proposed use of copyright protected material is “fair,” if you wish. If you are interested in following the safest course, however, then you should try to get permission from authors, composers, artists, and recording companies before appropriating the fruits of their labor.

 

  1. Dellar v. Samuel Goldwyn, 104 F.2d 661 (2nd Cir. 1939.)
  2.  Campbell v. Acuff-Rose Music, 510 U.S. 569 (1994).
  3.  17 U.S.C. § 101, emphasis added.
  4. 714 F.3d 694 (2d Cir. 2013)
  5. Pierre N. Leval, Toward a Fair Use Standard, 103 Harv. L. Rev. 1105 (1990)
  6. Ibid.

Redskins no more? Pro-Football Inc. v. Blackhorse

(USPTO Reg. No. 0986668)

(USPTO Reg. No. 0986668)

A judge of the U.S. district court for the eastern district of Virginia issued a ruling today that should finally bring more than two decades of litigation over the “Redskins” trademark to an end. The memorandum order affirms the Trademark Trials and Appeals Board’s decision last year to cancel the “Redskins” trademark registrations owned by Pro-Football Inc. (PFI).

The district court rejected all of PFI’s arguments, finding that the “Redskins” trademarks, including both the word and the design logos, are unregistrable under Section 2(a) of the Lanham Act (15 U.S.C. § 1052(a)), which bars from federal registration any trademark that “may disparage” persons, or bring them into contempt or disrepute. The court also ruled that Section 2(a) does not violate the First or Fifth Amendments of the constitution.

Disparagement of Native Americans

The Redskins trademark was first used in 1933. It was registered in 1967, and variations on it were registered between 1974 and 1990.

Various kinds of evidence were submitted to show that the word “Redskins” may be disparaging to Native Americans, including both expert and lay witness testimony. Probably the most damning evidence of all, though, is the fact that for more than a century, dictionaries of the English language consistently have been describing it as an offensive term. The 1898 Webster’s Collegiate Dictionary described it as “often contemptuous.” The 1966 Random House Dictionary described it as “often offensive.” By 1982, American Heritage Dictionary was classifying it as “offensive slang.” Merriam-Webster and Collier’s contained similar definitions.

First Amendment

PFI argued that Section 2(a) violates its First Amendment rights. The court rejected this argument on two grounds: (1) trademark registration certificates are government speech, which is not protected by the First Amendment; and (2) refusal of registration does not impose any restrictions on speech. PFI is free to continue using its trademarks if it wants to; and it can continue to bring actions in state court (and in federal court, if diversity jurisdiction exists) to enforce its trademark rights. PFI can continue to use the word “Redskins” as its team name, on its products, and in its advertising, all it wants. It won’t be able to use the ® symbol, since that is reserved for federally registered trademarks; but it may use the ™ symbol to put the public on notice that it has trademark rights in the “Redskins” name and design logo.

Fifth Amendment

PFI argued that Section 2(a) should be declared void for vagueness. Fifth Amendment Due Process requires that the language of a statute proscribing conduct or speech, or imposing civil or criminal penalties, must be sufficiently definite to put a person on notice as to what is prohibited. Because Section 2(a) does not restrict speech or impose any civil or criminal penalties, the standard of review of the vagueness claim in this case is not very high. Here again, the dictionary evidence is not in PFI’s favor. Clearly, PFI was on constructive notice that its chosen trademark was offensive to people even before it began using it.

PFI also argued that cancellation of its registration violated the Takings Clause of the Fifth Amendment, which requires the government to provide reasonable compensation when it takes private property for a public purpose. The problem with this argument is that no property has been taken. True, a trademark is property. Registration of a trademark, though, is a ministerial act; it does not generate any new private property. Nobody has taken away PFI’s trademark. PFI can continue to use the trademark all it wants.

“The Slants” update

The U.S. Circuit Court of Appeals for the federal circuit recently came to similar conclusions in another case challenging the constitutionality of Section 2(a): In re Tam, No. 2014-1203 (April 20, 2015.)

In Tam, the issue presented was whether the USPTO violated the constitution by denying trademark registration to the Asian-American band, The Slants. The Court upheld the constitutionality of Section 2(a) for essentially the same reasons as the Virginia district court cited in PFI v. Blackhorse.

In this case, though, the Court took the relatively unusual step of appending an “Additional Views” statement to the end of its opinion. This “Additional Views” essay expresses concerns that Section 2(a) may inhibit speech by making only government-approved marks eligible for certain government-provided benefits (such as procedural presumptions of ownership and validity that potentially make it less burdensome to enforce trademark rights in some cases.)

It is difficult to know what to make of this “Additional Views” statement appended to the end of the opinion. Just about the only thing that is certain to come of the schism between the Redskins ruling and the “Additional Views” statement appended to the end of The Slants opinion is that there will be renewed interest, throughout the coming year, in the question whether registration of speech — whether on customized license plates or in trademark certificates — is government speech or private speech.