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The least of Ye’s troubles

The rapper formerly known as Kanye West is in a dump truckload of trouble for, among other things, his display of a “White Lives Matter” T-shirt.  The slogan’s so-called owners are calling him out for  trademark infringement.

As bad as the politics might be, Ye, as he is now known, did no trademark harm. The U.S. Patent and Trademark Office, as a general rule, will refuse to register a trademark if the submitted specimen shows that use of the mark is decorative or ornamental.  A trademark must indicate a source of goods.

For example, a T-shirt emblazoned across the chest with “What’s Up LA,” a slogan not found on the label or the hang tag, would not indicate source because a viewer would not be likely to see the slogan as source or brand; instead the reaction would be that the slogan is fun, entertaining or expresses a point of view.

At the recent Paris Fashion Week show, Ye appeared adorned in a long sleeve T-shirt with White Lives Matter emblazoned in 5-inch letters spanning three lines across his back. Most thought Ye was using the slogan to make a statement, albeit a statement adopted by white supremacists. He drew hostile fire from many quarters; one quarter was from the applicants for registration of the slogan with the USPTO.

News reports indicated that the two owners of the slogan, or their corporate assignee, would consider selling the mark to Ye, or someone else, for $1 billion. They asserted that no one in America can legally sell any White Lives Matter products without their blessing.

True and not true.  Assuming they are able to demonstrate to a would-be infringer that they used the slogan to designate the source of goods, for instance, T-shirts made by White Lives Matter, by use of the slogan on labels, hang tags or even a small chest or sleeve insignia like Ralph Lauren’s famous Polo player, they would develop narrow rights that should serve to prevent someone else from selling White Lives Matter-branded clothes.

Ye was not using White Lives Matter as a trademark to designate source of the shirt he wore; he was using the words in an ornamental fashion, to express an opinion or to shock. It’s simply not likely he violated any trademark rights of the applicants because they do not own the slogan White Lives Matter any more than they can own “Merry Xmas,” so others are free to use it.

This is because the ornamental use is not a source identifier, and a decorative or ornamental use does not serve to identify and distinguish the source of goods. The applicants cannot prevent West from using the mark in its primary or descriptive sense even if worn on the back of a shirt.

Other slogans have enjoyed similar rights for all to use: “Own Your Own Power,” “Once a Marine,” “Blacker the College Sweeter the Knowledge,” and “Boom,” despite the owners’ attempts to claim trademark rights.

Ye is up to his hips in problems, but trademark infringement is not one of them. If he thinks it’s a good idea, he can continue use of White Lives Matter in an expressive manner.

James Astrachan teaches trademark and unfair competition law at University of Baltimore School of Law. He is a partner at Goodell, DeVries, Leech & Dann, LLP, and the views expressed are his own.