The Rotten Word

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Techdirt posted a brief note yesterday about Pennsylvania’s Supreme Court striking down a state trademark statute for violating first amendment rights. The Pennsylvania Trademark Counterfeiting Statute outlawed using any trademark in any context, any time, unless you have authorization from the trademark holder.

The ruling was not unanimous, but the dissent focused less on the issue at hand in the case and more on what the dissent justice saw as a logical inconsistency with this opinion and a previous one the court had stated in an earlier case.

Make the jump to read some more about the opinion and how the court came to the ruling.

The court’s opinion, available here (PDF), describes the result as essentially preventing anyone from walking around with a sign that says “Nike.” The court even suggests that their own use of trademarked brand names in writing the opinion appears to be criminal under this statute.

The court held that language in the statute’s definition of “intellectual property” criminalized unauthorized use of not only logos and other unique identifiers, but of the words themselves. Hence the “Nike” example. This amounted to an  unconstitutional limit on free speech and led the court to strike the law down.

Some of the comments on the Techdirt post allude to the problem of lobbyists sharing lawmakers’ pens. That issue is one ripe for its own dedicated blog, but, for the sake of discussion, let’s assume that happened here. Why would lobbyists submit draft legislation that basically criminalizes all use? Sure, it protects the trademark holder from negative expressions about its business practices, but it also prohibits the kind of publicity that generates “buzz” and other forms of free exposure.

Omitting a few key words in the statute’s definition of “intellectual property” would have prevented the court from striking it down. Specifically, the definition includes “label,” “term,” and “word.” These seem, to this lowly 1L, anyway, to be the problematic aspects of the definition. There is little room for interpretation: this definition swallows up all possible textual and graphic representations of a trademarked word.

Again, just my thoughts. I didn’t read the whole opinion, so I may be making uninformed assumptions, but feel free to agree, disagree, rant, or rave in the comments.

In writing this post, I consulted the original article at Techdirt, a Duane Morris, LLP summary of the opinion, and the Pennsylvania Supreme Court’s opinion for the case (PDF), which quotes the relevant provisions of the statute.