Brad Maurer: Trademarks, NIL: Should the public have a direct voice?

In the course of working with law students participating in an intellectual property clinic that gives real-life experience with real-life clients and intellectual property needs, the question commonly arises of not simply what the law “is,” but “why” and what it “should” be.

With respect to “why,” the Founding Fathers themselves gave particular care and attention to intellectual property in Article 1, Section 8 of the Constitution, going so far as to expressly state the justification for granting copyright and patent protection at all, namely: “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” Similarly, a unanimous Supreme Court in the recent Dewberry case stated the fundamental justification for “why” in the context of protecting trademarks: “to prevent consumers from being confused about which company is providing a product or service.”

These justifications give important insights into the question of “why,” at least as far as the federal protection of copyrights, patents and trademarks, and arguably the protection of other forms of intellectual property like “rights of publicity” in an individual’s name, image and likeness (“NIL”): limited time protection, the promotion of arts and sciences, and consumer protection.

Indiana statutory law includes sections that expressly protect intellectual property such as trademarks and NIL. For example, Indiana statutory law protects “famous” trademarks from use by non-owners even if the use does not confuse consumers about which company is providing a product or service.

A recent case involving application of corollary “famous” trademark protection under federal law resulted in a holding that a chew toy for dogs sold under the name “Bad Spaniels” violated the “famous” trademark branch of protection for the trademark “Jack Daniels,” despite the fact that no likelihood of consumer confusion was found at trial.

Lamenting potential implications of the case with respect to the First Amendment, consumer choice, and general levity when it comes to expression in the form of dog chew toys, the case provided the law students fertile grounds to discuss the “why” and “should be” with respect to the law.

Likewise, Indiana statutory law has provided the law students fertile grounds to discuss the “why” and “should be” in the context of its protection of NIL for the life of an individual plus 100 years after death, be it in application to individuals like Marilyn Monroe and John Dillinger or, in more recent years, in the context of student-athlete compensation.

As a casual fan of sports talk radio, I sense there is no shortage of individual opinions as to what the law “should” be and, more ominously, a growing willingness of individuals to allow belief in what the law “should” be to trump the ability to recognize what the law actually “is.”

We can recognize there are concerns and frustrations of individuals, including law students, when it comes to the justification (or lack thereof) for what the law “is” and, perhaps more importantly, democratic avenues to change the law to what it “should” be.

Lobbying elected officials is a legitimate and important avenue to influence change with respect to laws. And, unless I completely missed a groundswell of public outcry for change at the time, lobbying likely played an important role in the passage of Indiana’s statutory sections protecting NIL and “famous” trademarks.

It is cold comfort in light of economic realities, however, to suggest the lobbying avenue to law students, or other individuals in the public, who have concluded that Indiana laws protecting “famous” trademarks, or NIL, may not be justified on the basis of limited time protection, the promotion of arts and sciences, and consumer protection.

What then can be done? Efforts to implement term limits, or restrict pay, periodically gain popularity and may provide an indirect avenue for expressing distrust and frustration with elected officials. Such efforts fail, however, to provide an avenue for the public to directly change what the law “is” to what it “should” be.

Whether it is a group of intellectual property law students, or Hoosier/Boilermaker fans concerned with NIL and collegiate athletics, or any other combination of talented individuals with a passion for the issues of the day, individuals should have an avenue to make their mark on Indiana law. One option to do so would be for Indiana to join with other states and implement a public ballot initiative and referendum processes.

There are many time-tested models Indiana can look to, such as Article II, Section 1 of the Ohio Constitution (effective Nov. 3, 1953) that in relevant part provides:

“The legislative power of the state shall be vested in a general assembly consisting of a senate and house of representatives but the people reserve to themselves the power to propose to the general assembly laws and amendments to the constitution, and to adopt or reject the same at the polls on a referendum vote as hereinafter provided. They also reserve the power to adopt or reject any law, section of any law or any item in any law appropriating money passed by the general assembly, except as hereinafter provided; and independent of the general assembly to propose amendments to the constitution and to adopt or reject the same at the polls. The limitations expressed in the constitution, on the power of the general assembly to enact laws, shall be deemed limitations on the power of the people to enact laws.”

Implementing such an option would require an amendment to the Indiana constitution, meaning passage by the Indiana Legislature, in two different years (with a general election to occur between), of a joint resolution containing the language of the proposed change, and then placement on the ballot for voter approval.

It has been a long time since Indiana’s 1850-51 constitutional convention. The means of travel have improved. So have the means of communication and voting. Is the time right for the public to have a direct voice in Indiana?

While some may mistrust the public and hesitate at the prospect of even a limited amount of direct democracy, providing the public such an avenue has not destroyed the fabric of democracy in states like Ohio. Indeed, my experience with law students suggests the opposite will be true.•

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Brad Maurer is a partner in the Indianapolis office of Dentons and a member of its Intellectual Property Practice Group. The opinions expressed are those of the author.