Amin Hosseini is an IPilogue Writer and an LLM Candidate at Osgoode Hall Law School.

On September 22, 2021, and its independent fact-checkers for defamation. In the , Stossel claimed that he uploaded two short video reports in which he interviewed experts about climate change, yet  Meta (“Facebook”) publicly announced that Stossel’s reporting had failed the fact-checking process.  

In the first video, "Government Fueled Fires," Stossel stated that poor policies were the major cause of this year's fires and highlighted the importance of the role of climate change in the annual forest fires in California. Facebook examined the forest fire footage and marked it with a "missing context" label using its fact-checking tools.

 The second video, “Are We Doomed?,” questioned claims by “environmental alarmists” and elicited a similar response by Facebook’s fact-checking program — it was classified as "partly false information."

Stossel argued that the labels caused irreversible damage to his reputation, decreased the viewership of his content, and led to the loss of revenue. Regarding the first video, he claimed that Facebook attributed it to a statement that he did not produce; while for the second video, he stated that Facebook damaged his reputation by claiming he made false statements.

In response, Meta filed a motion for dismissal under and requested that the case be dismissed under (“SLAPP”). Briefly stated, SLAPP lawsuits  seek to suppress and stifle critics to force them to cease voicing their opposition. Therefore, to safeguard freedom of speech, some jurisdictions have enacted anti-SLAPP laws.

The Court  explained that the First Amendment protects expressions of subjective opinion and “not false statements or implied assertions of objective fact.” According to the judge, "[s]imply because the process by which content is assessed and a label applied is called a fact-check does not mean that the assessment itself is an actionable statement of objective fact.” In other words, the Court alluded that only reflects a subjective assessment of the "accuracy and reliability" of the claims and is not a statement of objective fact.   Accordingly then, the Court dismissed Stossel's lawsuit.

It is noteworthy that the spread of disinformation is pernicious. One salient example was the , where disinformation led to noncompliance with public health measures, such as masking, and high levels of vaccine reluctance.

To combat “fake news,” governments must carefully regulate social media content. For instance, based on a , if social media businesses operating in Germany do not remove unlawful, racist, or defamatory posts within 24 hours, they risk hefty fines. Ontario addressed this issue by passing the in 2015.

Since the definition of fake news and disinformation is so broad, however, overly strict laws may and imposing limits on access to justice. Therefore, legislation must strike a balance between upholding critics' freedom of speech with others' rights to protect their reputations against false claims.

Further Reading

To balance the Constitutional rights of the parties, access to justice and freedom of speech, a Minnesota Court outlined a method for determining if the SLAPP law should be employed. You may read .

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Many jurisdictions have provisions that prohibit the registration of offensive marks in accordance with moral and public policy concerns. For example, section 9(1)(j) of Trade-marks Act prohibits the registration of “any scandalous, obscene or immoral word or device.”  and Australia[1] also enforce similar clauses. Therefore, while the decision in Matal has direct implications for US trademark law, it also raises a host of questions for trademark law around the world.

The amicus briefs filed in Matal present illuminating insights on how the Court may have taken a step too far. The  submitted by the American Bar Association (ABA) is a logical place to begin this analysis, given the foundational issue that was the focus of the submission. The ABA sought to correct the Court of Appeals for the Federal Circuit on the distinction between trademark validity and trademark registrability. In addition to the Court confusing validity and registrability, a finding that section 2(a) of the Lanham Act violates the First Amendment would lead to uncertainty about the consequences of a finding of “unregistrability”. The ABA correctly pointed out that the Court of Appeals in Matal seems to have treated trademark validity and trademark registrability interchangeably, which may have had a compound effect on the final decision. The court did, however, state that the unregistrability on the Principal Register does not prevent a trademark from being used legitimately in commerce. However, the Court of Appeals seems to have also erroneously implied that a determination of unregistrability makes an otherwise valid mark ineligible for protection under the Lanham Act, which, according to the ABA, is incorrect. This means that Simon Tam’s proposed mark THE SLANTS may have been ineligible for registration prior to the ruling in this case, a finding of unregistrability is not determinative of whether or not a mark can be used in commerce

In the event of an infringement or unfair competition claims under the previous law, Tam could have protected his mark through the common law. Furthermore, the Court of Appeals stated that “[w]ithout federal registration, a trademark user cannot stop importation of goods bearing the mark …” While this was not directly relevant to Tam’s situation, it certainly has broad implications for cases to come. Regardless, it is inaccurate. Owners of unregistered trademarks have other federal causes of action at their disposal. Indeed, the ABA gave the example of the possibility of “filing a complaint pursuant to Section 337 of the Tariff Act before the International Trade Commission (“ITC”) to stop the importation of goods bearing the mark that violate those common-law rights.”[2] Moreover, valid yet unregistered marks may also enjoy protection against cybersquatting, according to the Anti-Cybersquatting Consumer Protection Act.[3] In addition, state law causes of action—such as likelihood-of-confusion-based causes of action for infringement, unfair competition, and deceptive trade practices—present other avenues for the owners of unregistered trademarks to enforce their intellectual property rights.

An interesting in support of the USPTO is that any decision the government makes in circumstances such as those giving rise to the dispute in Matal is not necessarily neutral because speech will be inevitably supressed. The brief states that “...a trademark registration is a government-issued document that makes it easier for its owner to suppress the speech of others...” because it is a right to exclude, contrary to the opinion of the Tenth Circuit in . This means that, in trademark law, the government is necessarily interfering with ���dz���DzԱ�’s speech; whether it be the trademark owner’s in the case of a refusal, or competitors’ in the case of a trademark registration. This, according to the professors behind the brief, would “wreak havoc on trademark law”, but can be remedied by a decision in favour of the USPTO. This is because trademark law is content-based rather than viewpoint-based. Prior to this case, anyone could be caught under the disparagement clause, regardless of viewpoint. Disparagement is judged based on the content of the mark. Therefore, the law professors present a valid point when they state that “[u]nder the appropriate analytic framework, the bars of Section 2 reflect acceptable judgments about which symbols should receive legal protection as source identifiers, not penalties imposed on an actor doing business independently of the government.” In essence, the Court of Appeals erred in viewing the Lanham Act’s regulatory scheme as being presumptively unconstitutional because a trademark registration denial is seen as a ban on free speech.

The implications for trademark law are not the only concern with respect to the expansion of free speech when it comes to offensive marks. The of Native American Organizations agrees with the perspective of the law professors above in the sense that “[t]rademarks can function as instruments of speech-suppression precisely because they regulate commercial speech.” In this way, the government plays an important role in the operation of commerce, which facilitates the filtration of disparaging and racist marks. When the government exercised this role with respect to offensive marks prior to Matal, it did not strip the owner of the use of a trademark as a whole, but simply withheld the benefits that registration carries. Therefore, from this perspective, this case confirms the “longstanding use of derogatory Native American imagery”, which also alludes to the attention captured by the Washington Redskins case.

As such, concerns regarding freedom of speech became real in light of Matal, which may be a reason to think that the ruling in this case pushed the boundaries of free speech too far, despite the advantages that it carried for trademark owners. This, in conjunction with the wide range of international uncertainty that Matal has caused, is a factor that makes the decision slightly unsettling and casts doubt as to whether the step taken by the U.S. Supreme Court swung the balance too far in favour of free speech. The full range of these impacts, however, has yet to be seen given the recent issuance of this decision.

Saba Samanian is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

[1] Vicki Huang, “Comparative Analysis of US and Australian Trade Mark Applications for THE SLANTS” (2017), Eur IP Rev at 6[Huang].

[2] Tariff Act, 19 USC § 1337 (2012). See In re Certain Digital Multimeters, & Prods With Multimeter Functionality, Inv No 337-TA-588, USITC Pub 4210, 2010 ITC LEXIS 2867.

[3] Consumer Protection Act, 15 USC § 1125(d).

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arises from a dispute between the painter Daniel A. Moore and the University of Alabama. Moore, whose popular depict famous moments in sports, started painting unlicensed football scenes involving the University of Alabama college football team in 1979. Due to the popularity of his work among University of Alabama fans, Moore entered into a licensing agreement with the university in 1991 and produced licensed artwork until the end of the agreement in 1999. Moore also continued to produce unlicensed work during this time until the University asked him to stop, from 1991-2002.

The University of Alabama sued Moore under , a provision that covers infringement of an unregistered trade-mark or trade dress, for his depiction of the University’s football uniforms and uniform colours within his work. Moore argued that his use of the uniforms and colours fell outside the area of infringement because they were used to realistically portray historical events. At first instance the United States District Court found that Moore’s depiction of the uniforms and uniform colours in paintings and prints was protected by freedom of speech rights and trade-mark fair use, however use of these items on mugs, calendars and other “mundane products” was not protected. The Court of Appeals was hearing an appeal to the original judgment.

One of the points that the Court of Appeals had to grapple with was the legal issue of free speech rights conflicting with trade-mark rights. The University argued against the free speech judgement of the previous court, saying that Moore’s work fell under commercial speech and was therefore entitled to a lower level of First Amendment protection. The court disagreed and found that Moore’s work should be considered expressive speech and should be entitled to full First Amendment protection. Using the test established in , that trade-mark laws such as 15 U.S.C. § 1125(a) should be applied “only where the public interest in avoiding consumer confusion outweighs the public interest in free expression” , the court found that the trade-mark interests of the “weak” value of the crimson and white and University of Alabama uniform unregistered trade-marks did not outweigh the First Amendment interests of Moore’s artistic expression.

This is a situation that could occur in Canada, where freedom of expression rights protected under of the Canadian Charter of Rights and Freedoms could be raised as a defense against trade-mark infringement. Canadian courts have not yet dealt with the specific issue of the Moore case, where freedom of artistic expression was analyzed, but have rejected and accepted the defense in other cases. These cases include (but are not limited to) rejecting a freedom of expression defense against an infringement of a trade-mark where goodwill has suffered (Source Perrier S.A. v Fira-Less Marketing Co, [1983] 2 FC 18 (Fed TD)), and allowing a freedom of expression defense in a trademark claim of passing-off against a union website ().

Ultimately the United States Court of Appeals confirmed the District Court’s judgement that the paintings and prints fell under freedom of speech and fair use, while also reversing the District Court’s decision on calendars to also place them under this protection. The decision on whether Moore infringed the University of Alabama’s trade-mark on mugs and other “mundane products”, however, has been remanded to the District Court.

Mark Bowman is a JD candidate at Osgoode Hall Law School.

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