marie-andree@maw-law.com, Author at MAW-LAW Web Site

A Study in Trademarked Characters

February 22, 2019 · by marie-andree@maw-law.com ·

The characters created by Disney, Marvel, and LucasFilms are valuable intellectual property and are protected both by copyright and by trademark. However, a recently decided case in the Southern District of New York (SDNY), Disney Inc. v. Sarelli, 322 F.Supp.3d 413 (2018), demonstrates that preventing the unauthorized use of such characters may not be as easy as expected.

In this case, Plaintiffs are Disney Enterprises, Marvel Characters and LucasFilm, all of which own copyrights and trademarks in many of the most famous characters in the world, such as Mickey Mouse, Hulk, and Chewbacca. These characters were first featured in movies like Frozen, The Avengers or Star Wars, and are now licensed or featured in derivative products such as comic books, video games, or theme parks. Their exploitation is highly lucrative.

When visiting Plaintiffs’ theme parks, one has a chance to meet the characters “in person.” This experience is also offered by Characters for Hire, a New York company offering, as the name implies, character hiring services. The company’s principal owner is Nick Sarelli (Defendant). Characters for Hire offers a service wherein actors dressed in costumes entertain guests during birthday parties or corporate events. For example, actors have allegedly dressed as Mickey, Elsa and Anna from Frozen, Captain America and Hulk from The Avengers, and Luke Skywalker and Darth Vader from Star Wars.

The contracts Defendants provided to their clients contained disclaimer language, stating, for example, that Defendants do not use trademarked and licensed characters. The contracts also warned clients that the costumes may differ from those seen in movies “for copyright reasons,” adding that “[a]ny resemblance to nationally known copyright character is strictly coincidental.”

These disclaimers did not appease Plaintiffs, who sent several cease and desist letters to Defendants before filing a federal copyright and trademark infringement suit and a New York trademark dilution suit.

While Judge Daniels from the SDNY granted Defendants’ motion for summary judgment and dismissed Plaintiffs’ claim for trademark infringement on August 9, 2018, he denied the motion to dismiss the copyright infringement claim and the trademark dilution claim.

The descriptive fair use defense failed

Plaintiffs claimed that the use of their trademarked characters to advertise and promote Defendants’ business, along with their portrayal by costumed actors, was likely to confuse consumers as to the origin of the services.
Defendants argued that their use of Plaintiffs’ characters was descriptive and nominative fair use, and that there was no likelihood of confusion.

Descriptive fair use is an affirmative defense to a trademark infringement suit, as Section 33(b)(4) of the Trademark Act allows “use… of a term or device which is descriptive of and used fairly and in good faith [but] only to describe the goods or services of such party, or their geographic origin.” In other words, a defendant can use plaintiffs’ trademarks in a descriptive sense, or to describe an aspect of his own good or service.

For such a defense to succeed in the Second Circuit, a defendant must prove that the use was made (1) other than as a mark, (2) in a descriptive sense, and (3) in good faith (Kelly-Brown v. Winfrey at 308). This defense failed in the present case, as Defendants had not made a descriptive use of Plaintiffs’ marks. Instead, Judge Daniels found that their ads “were specifically designed to evoke [Plaintiff’s marks] in consumers’ minds…”

The nominative fair use defense also failed

Defendants also claimed that they used Plaintiffs’ marks to describe their own products. Such nominative fair use is a defense to a trademark infringement suit if such use “does not imply a false affiliation or endorsement by the plaintiff of the defendant” (Tiffany v. eBay at 102-103). But this nominative fair use defense also failed, as Defendants used Plaintiffs’ marks to identify their own service, which is hiring out characters for parties, rather than Plaintiffs’ trademarked characters.

Defendants’ use of characters was not trademark infringement
Judge Daniels used the eight-factor Polaroid test used by the Second Circuit in trademark infringement cases to determine whether Defendants’ use of Plaintiffs’ marks were likely to confuse consumers.

While Plaintiffs’ marks are undoubtedly strong (first factor), the similarity of the marks (second factor), weighed only slightly in Plaintiffs’ favor because Defendants used different names for their characters than Plaintiffs’ trademarked character names, e.g., “Big Green Guy,” “Indian Princess,” and “The Dark Lord” instead of Hulk, Pocahontas and Darth Vader.

The third and fourth Polaroid factors, the proximity of the goods and services, and the possibility that the senior user will enter the market of the junior user, were found to weigh in Defendants’ favor. There was no evidence that Plaintiff has plans to expand into the private entertainment service industry.

The fifth Polaroid factor, evidence of actual confusion, also weighed in Defendants’ favor, as there was no evidence that Defendants’ customers used the names of Plaintiffs’ trademarked characters when referring to Defendants’ services in online reviews or otherwise. Plaintiffs could not provide a survey proving customers’ confusion either.

Judge Daniels found the sixth factor, Defendants’ intent and evidence of bad faith, to also be in Defendants’ favor, since Defendants had put customers on notice that their services were not sponsored by or affiliated with Plaintiffs by using altered versions of Plaintiffs’ characters’ names and by removing Plaintiffs’ characters’ names in their online reviews.

The seventh Polaroid factor, the quality of Defendants’ products, was also in Defendants’ favor, as Defendants’ services, being of a lesser quality than Plaintiffs’, makes it likely that consumers will not be confused as to the source of the services.

The eighth Polaroid factor, consumer sophistication, also was in favor of Defendants, as Plaintiffs did not prove the sophistication level of Defendants’ relevant consumers.

Balancing these eight factors, the SDNY found no likelihood of consumer confusion and denied Plaintiffs’ motion for summary judgment on their trademark infringement claim.

Trademark dilution
Plaintiffs chose to claim trademark dilution under New York trademark dilution law, Section 360-1 of New York Business Law, and not under the Federal Trademark Dilution Act. This choice may have been made because the New York law does not require a mark to be famous to be protected, and a plaintiff only needs to prove the mark’s distinctiveness or secondary meaning.

Judge Daniels found that there was a genuine issue of fact as to whether Defendants’ use of Plaintiffs’ marks is likely to dilute Plaintiffs’ marks by tarnishment. A court will have to determine if Defendants provide services of poor quality.

Copyright

Plaintiffs argued that Defendants had “copied and used the images, likenesses, personas, and names of Plaintiffs’ characters…to promote and advertise its services online.” Defendants argued in response that the characters in which Plaintiffs own copyrights are based on prior works that are part of the public domain.

Both parties will have more chances to pursue their arguments as Judge Daniels denied the motion for summary judgment on copyright infringement. He found that Plaintiffs had presented as evidence screenshots from Defendants’ website and videos allegedly published by Defendants which had not been properly authenticated. More specifically, they had not been authenticated by someone “with personal knowledge of reliability of the archive service from which the screenshots were retrieved,” citing Specht v. Google, a 2014 Seventh Circuit case.

This post has been first published on the TTLF Newsletter on Transatlantic Antitrust and IPR Developments published by the Stanford-Vienna Transatlantic Technology Law Forum.

Image id courtesy of Flickr User Alan Levine, Public Domain.

Filed Under: Trademark, TTLF Newsletter · Tagged: Descriptive Fair Use, Disney Chracacters, Nominative Fair Use, SDNY, Trademark, Trademark Dilution

Copyrighting a dance step? Between a Hard (Milly) Rock and a Copyright Office

February 21, 2019 · by marie-andree@maw-law.com ·

Several copyright infringement suits were filed last year against Epic Games, the marker of the Fortnite game, by individuals who became associated with a particular dance move, whether it be their sole claim to fame or not.

One of these plaintiffs is rapper Terence Ferguson, aka 2 Milly, who is at the origin of the Milly Rock dance. Dare we say he created it and that the dance is protected by copyright? More on this later. In any case, you can find a tutorial here.

2 Milly claims that the “Swipe It “dance, an “emote” which in 2018 appeared in season 5 of the game, infringes his copyright. Such emotes, as explained by Defendant, “are movements that an avatar performs to express emotions in the game.”

Epic Games attorneys have now moved to dismiss the case (HT Eriq Gardner for posting the memo online). They claim, in support of the motion that Plaintiff failed to state a claim. They also moved to strike the case under the California anti-SLAPP statute, claiming that the copyright infringement suit was filed to discourage Defendant’s speech in connection with a public issue. Video games are speech, and Defendant cites the U.S. Supreme Court 2011 Brown v. Entertainment Merchants Ass’n case, which found video games to be protected by the Fist Amendment.

“No one can own a dance step”

One of defendant’s arguments is that “no one can own a dance step” and that “Plaintiff’s claims is based on his assertion that he has a monopoly on a side step with accompanying swinging arm movement that is then repeated on the other side.”

Plaintiff claims his work is protected by copyright. Defendant claims they are mere steps, which are not protectable:

“[c]opyright law is clear that individual dance steps and simple dance routines are not protected by copyright, but rather are building blocks of free expression, which are in the public domain for choreographers, dancers, and the general public to use, perform, and enjoy.”

This argument differentiates the steps from the choreography. The first are the building blocks of the second. Indeed, they are many steps in dance, and they are used by many different dancers. For instance, Michael Jackson did not create the moonwalk, but he performed it so well that he is associated with it.

Choreography is protected by copyright in the U.S., but this is fairly recent, as the 1909 Act did not protect it. Defendant cites paragraph 805.1 of the Compendium of U.S. Copyright Office Practices, which explains that a choreographic work is “the composition and arrangement of a related series of dance movements and patterns organized into a coherent whole” and which points out that Congress did not intend to protect “simple dance routine.”

Are the two works substantiality similar?

Defendant describes the 2 Milly dance step as being:

“a side step to the right while swinging the left arm horizontally across the chest to the right, and then reversing the same movement on the other side.”

Defendant describes the Fortnite’s “Swipe It” as:

“consist[ing] of (1) varying arm movements, sometimes using a straight, horizontal arc across the chest, and other times starting below the hips and then traveling in a diagonal arc across the body, up to the shoulder, while pivoting side to side on the balls and heels of the feet, (2) a wind up of the right arm before swiping, and (3) a rolling motion of the hands and forearms between swipes.”

As you can see, “Swipe It” requires many more words and must thus be more complex and thus different from the simple “Milly Rock” step, right?

To determine substantial similarity, courts in the Ninth Circuit use an extrinsic similarity two-part test, where plaintiff must show that the works are substantially similar under both the extrinsic test and the intrinsic test. The extrinsic test is an analysis of the similarities of the two works’ expressive elements, after the courts have filtered out the elements which are not protected by copyright, such as material in the public domain. The intrinsic test analyzes whether an ordinary reasonable person would think that the two works are substantially similar in “total concept and feel.” Defendant claims that the extrinsic test is not satisfied and that thus the case must be dismissed.

Is the right of publicity claim preempted by the Copyright Act?

Defendant is also arguing that Plaintiff’s right of publicity claim is preempted by the Copyright Act and should thus be dismissed, citing Maloney v. T3Media, where the Ninth Circuit affirmed dismissal of a right of publicity claim is proper if such use is not “independent of the display, reproduction, and distribution of the copyrighted material.” It remains to be seen if this is the case here as well.

Copyright Office refuses to register the Milly Rock Dance

Meanwhile, the Copyright Office has refused to register the Milly Rock dance, writing that “[c]horeographic works are typically performed by skilled dancers for an audience. By contrast, social dances, such as ballroom dances, line dances, and similar movements are not created by professional dancers. They are instead intended to be performed by the general public for their own enjoyment.”

By doing so, the Copyright Office seems to place dance in a somewhat lower echelon than painting and illustrative art. Indeed, the Supreme Court explained in 1903 in Bleinstein v. Donaldson Lithographing Co. that “persons trained only to the law” should not “constitute themselves final judges of the worth of pictorial illustrations.” Terpsichore is one of the muses, after all, and there is not even a muse for pictorial art…

Image is courtesy of Flickr user shikeroku under a CC BY 2.0 license.

Filed Under: Copyright · Tagged: Copyright Infringement Suit, Copyright Office, Dance and Copyright

Licensing Like a Champion (Can it be an Afterthought?)

December 11, 2018 · by marie-andree@maw-law.com ·

Fall is back, and, in the United States, that means pumpkin-flavored products and (American) football galore. If you have not yet eaten pumpkin-flavored pop-corn, drunk pumpkin-flavored coffee and watched at least one game of football, well, your neighbors probably consider you to be weird.

So grab a pumpkin-flavored cookie and read this blog about a recent Second Circuit decision, Spinelli v. National Football League, No 17-0673 (HT Court House News for the link to the document). The case is about copyright licensing, retroactive and royalty-free licensing and a touch (down) of football.

From the U.S. National Archives

Plaintiffs are seven sports photographers. Defendants are the Associated Press (AP), the National Football League (NFL) and the 32 NFL teams. If you do not know the names of the NFL teams, you can read their complete list in the document (The Falcons! The Steelers! The Forty Niners!)

The photographers filed a copyright infringement suit in 2013 against the NFL and AP in the Southern District of New York (SDNY), claiming that AP had granted the NFL a royalty-free license without permission from the authors of the photographs.

Plaintiffs also argued that the NFL and AP had conspired to restrain trade in the market for commercial licenses of NFL event photographs thus breaching antitrust laws (I will not write about this issue).

Defendants moved to dismiss and the SDNY granted their motion in 2015. Plaintiffs appealed. On September 11, 2018, the Second Circuit remanded the case which is now likely to go to trial.

In order to take and use photographs from an NFL event, one needs to secure a license from the NFL, as such photographs almost always contain NFL trademarks. Getty had the exclusive worldwide right to license NFL’s pictures from 2004 to 2009, and then AP became the NFL’s exclusive licensor.

Plaintiffs had entered into “contributor agreements” with AP which allowed them to access NFL events, and to obtain licenses for the intellectual property contained in the photographs they took at these events. Plaintiffs took thousands of NFL photographs, during games or practices. Some of these pictures feature NFL trademarks, but others did not.

The 2009-2012 NFL-AP agreement

The original agreement between the NFL and AP, which lasted from 2009 to 2012, had granted the NFL a royalty-free license to use “AP-owned” images, but had not extended this license to images taken by non-AP contributors. However a new agreement, entered into in 2012, extended the royalty-free license granted to the NFL to photographs taken by non-AP contributing photographers.

Plaintiffs had indeed provided AP a “perpetual, irrevocable transferable worldwide right and license to reproduce, edit, translate the caption of, prepare derivative works of, publicly perform, publicly display, load into computer memory, cache, store and otherwise use“ their works along with the right to “transfer or sublicense these rights to other entities.” This agreement was lucrative for the Plaintiffs, as AP payed royalties when it licensed one of the works. At issue in this case was whether Plaintiffs had thus allowed AP to grant royalty-free licenses to the NFL.

For the SDNY, copyright law gives copyright owners and their exclusive licensees the right to freely grant a license “after the fact” as they see fit, quoting Wu v. Pearson, 2013 WL 145666, at 4: “[T]here is no legal prohibition to obtaining a retroactive license if it is authorized by the rights holder.” Plaintiffs had argued instead that, citing the 2007 Davis v. Blige Second Circuit decision, that AP could not grant a retroactive license. In Davis, the Second Circuit had rejected retroactive copyright licensing as a way to cure past infringement.

In our case, the Second Circuit found that even though facts in our case were slightly different than the ones in Davis, the court had to come to the same conclusion. The Second Circuit reasoned that Plaintiffs had the right, before the execution of the 2012 AP-NFL agreement, to sue the NFL for copyright infringement. Therefore, if AP could grant a license to the NFL retroactively in 2012, that right would have thus been extinguished, and “[d]oing so was impermissible, irrespective of whether AP had the authority to issue a prospective license to the NFL starting in 2009.”

The SDNY had dismissed their claim because the license Plaintiffs had provided AP was as broad as their own copyright in their photos, and “[n]othing in the license require[d] AP to issue only royalty-bearing sublicense.” For the SDNY, the language of the agreement made clear that the rights granted by Plaintiffs to AP, including the right to sublicense, were “broad and unlimited.”

Player kicking a football to score a point

The case was kicked back to the lower court

However, the Second Circuit found the 2012 contract to be “ambiguous” and recognized that it could be interpreted as limiting the ways AP can sublicense Plaintiffs’ photographs to third parties. The court remanded the case to the lower court. Litigation is not a contact sport. But you must win the last game.

Filed Under: Copyright, Sports Law · Tagged: Copyright Licensing, NFL

Icy Refusal to Copyright Frigidaire’s Logo

November 30, 2018 · by marie-andree@maw-law.com ·

The Review Board of the United States Copyright Office (the Board) did not warm up to Electrolux’s arguments that its “Frigidaire Stylized Logo” should be protected by copyright. On August 29, it affirmed the denial of registration.

A logo can be protected as a trademark and can also be protected by copyright, if it is original enough. Several corporate logos are protected by copyright and by trademark.

The Frigidaire logo consists of the word Frigidaire in blue capital letters. Only the “A” differs from the usual way to write the letter A, as it is drawn as a triangle filled with a smaller red triangle. Hardly the stuff Turner Prize dreams are made of.

But copyright laws are not snobbish and protect masterpieces and more humble works alike, as long as they are original enough.

Is the word Frigidaire itself protected by copyright?

Frigidaire is a made-up word. The correct word to designate an electric ice box is a refrigerator. I may sound a little pompous writing this phrase, but it is because I am scolding my 15-year old self [make this my 20-year old self] who was stupefied discovering this fact. Of course, being French, I grew up calling the family refrigerator “Le Frigo.” But enough about moi.

Who remembers the copywriter who invented such a famous name. Anybody? We should, as Frigidaire quickly became part of the lexicon. Google Ngram’s viewer informs us that the word appeared in 1920, peaked in 1940, and then dropped steadily in use in English, in use in English fiction, in French, and Spanish, while the word was at its most popular in Italian in the Sixties.

It is a great word, an original word, more original that a logo using a triangle instead of the letter “A.” But my brain must have frozen, as I just remembered that a word cannot be protected by copyright, and I have thus let go the suggestion that the word Frigidaire should be protected by copyright..

Let’s talk a bit about trademark.

Frigidaire is a great word. It could even be some person’s favorite word. Poets and songwriters have used it.

When Nat King Cole sang “I have stopped my heart like an icy Frigidaire, for I need to care for no one, that’s why I’m thru with love…” he (exquisitely) did what every trademark attorney dreads the most, he used a trademark as a generic term.

[Trivia question: which other famous song from the American song book used the then-trademark “cellophane” generically, as a compliment to a paramour to boot? Answer is here].

Frigidaire is such a great name for a refrigerator that it quickly got used for a refrigerator, instead of the generic name, thus becoming a generic trademark. It is now used indifferently, Frigidaire or refrigerator.

“Frigidaire” was registered as a word trademark in 1920 by registrant Frigidaire Corporation of Michigan. This trademark is now dead, by genericide.

As Frigidaire can no longer be protected as a word mark, it can only be protected as a design mark. Indeed, the word Frigidaire in stylized letters is still protected by trademark, in several versions, see here.

Frigidaire, written FRIGIDΔIRE, was registered as a trademark last year. The mark “consists of “FRIGIDAIRE” with triangle “A”. This logo can be a trademark, since what matters is that the logo can serve as an indicator of the origins of the goods. Trademark laws do not care about originality.

But copyright laws do, and this FRIGIDΔIRE logo is not original enough, according to the Board, to be protected by copyright.

The FrigidΔire logo is not original enough to be protected by copyright.

The Board reminded applicant that it does not make aesthetic judgments when assessing whether a work can be protected or not, citing the classic 1903 Bleistein case. But it is lack of originality which froze the application, not aesthetics.

The Board used many of the same arguments they used to deny copyright protection to Log Cabin Blank With Screw Eyes and Cafe Door (see my post about this case here). To resume the argument, Feist requires only a modicum of originality but the work must “embody some creative authorship.” The author can use material and forms which are not protected by copyright, but must do it in such a way that the selection and coordination of these elements “trigger[s] copyright.” As in the Log Cabin case, the board cited § 906 of the Compendium and the Atari case to assert that the combination of simple shapes is protected only if “combined in a distinctive manner indicating some ingenuity.” The Board found that the stylized “A” is a mere “trivial variation on a letter” and is thus not copyrightable, as it does not “possess more than a de minimis quantum of creativity”, quoting Feist.

Electrolux, which now owns the Frigidaire brand, has registered the logo at stake as a trademark, and also wanted to register it as a copyright. This is good practice, as intellectual property is valuable and it makes sense to protect it every way one can.

It argued that “the stylized letter “A” represent[ed] a design choice that was made to reflect the attributes of Electrolux home appliance products, including having an eye on the future and being innovative, grounded, and stylish.”

However, logos cannot be protected by copyright if they are not original enough, and the FrigidΔire case should serve as a warning to companies creating a logo: make sure it is original enough to be also protected by copyright.

This post was originally published on The 1709 Blog.

Image is courtesy of Flickr user Debris Field under CC BY-SA 2.0 license.

Filed Under: Copyright · Tagged: Copyright, Logos

Can a Work of Art Created by AI be Protected by Copyright?

November 9, 2018 · by marie-andree@maw-law.com ·

Auction house Christies sold last month for $432,500 a work of art titled 𝒎𝒊𝒏 𝑮 𝒎𝒂𝒙 𝑫 𝔼𝒙 [𝒍𝒐𝒈 𝑫 (𝒙))] + 𝔼𝒛 [𝒍𝒐𝒈(𝟏 − 𝑫(𝑮(𝒛)))], Portrait of Edmond de Belamy, from La Famille de Belamy, which was created using AI.

It is the work of a Paris-based collective, obvious art, founded by Pierre Fautrel, Gauthier Vernier and Hugo Caselles-Dupré. The work was created using Artificial Intelligence (AI) technology, more precisely the Generative Adversarial Networks technology invented in 2014 by Ian Goodfellow, which can create images. The name of the work, Edmond de Belamy, is an homage to Ian Goodfellow, whose last name can be translated in French as “Bel ami.”

Obvious art created a program, fed it with information about some 10,000 portraits from the 15^th to the 19^th Century, and Edmond de Belamy was printed. The whole process is explained on obvious art’s website and also here.

The portrait shows a man painted over a black and gray background from which he appears to emerge, dressed in black, with a white collar, in a fashion reminiscent of 17^th century Dutch paintings. His features are not precisely lineated and one does not even see his nose. He is looking at us from an angle, and appears to have been painted by large brushstrokes.

The collective’s goal was to prove that machines can also be creative, just like humans (see this interview in French). It is an algorithm which created the work. Does that mean that Edmond de Belamy cannot be protected by copyright?

Is Edmond de Belamy the new Naruto?

The Naruto case [see here] may give us some clues on how a US court would rule over the copyrightbility of a work created by AI.

Obvious art used the formula of the loss function of the original GAN model as the signature for the painting they created. If a program is the author of the work, then the work cannot be protected by copyright.

The U.S. Copyright Office clearly stated in its Compendium of U.S. Copyright Office Practices that a work must be created by a human being to be protected by copyright, and that“[t]he Office will not register works produced by nature, animals, or plants,” giving as an example a work which cannot be protected by copyright a “photograph taken by a monkey.” It could now add “a painting created by AI.”

This is not the first time that AI was used to create a painting. In 2016, a team fed a computer data about 346 Rembrandt paintings and the result was a 3-D printed portrait looking just like one Rembrandt could have painted, the “Next Rembrandt.” The fake (or next) Rembrandt was made out of some 148 million pixels and 150GB of rendered data.

Ron Augustus, director of SMB Markets for Microsoft, who was part of the “Next Rembrandt” project, said in a video interview (@1:00) that they “used technology and data like Rembrandt used his spades and his brushes to create something new.” This argument suggests that whomever used AI technology as a tool to create a work could be its author, just like Rembrandt. ‘Something new’ is original, and originality is required to be protected by copyright.

But even if we consider AI to be a mere tool, it is not a tool like a spade or a brush, as this tool had to be created and could be protected by copyright.

Computer programs can be protected by copyright and software, as it is a computer program, can be protected. A software is defined by the copyright Act as “a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result” and U.S. courts use an “abstraction-filtration-comparison test” [see here for example] to find out which elements of a computer program can be protected by copyright.

If the tool used to create a work is protected by copyright, does that mean that the work thus created is also protected? Not necessarily, as Section 721.6 of the Compendium specifies that “ownership of the copyright in a work is distinct from ownership of any material object that may be used to create that work. The fact that the author used a computer to write an article, short story, or other nondramatic literary work does not mean that the work is a computer program.”

Therefore Edmond de Belamy cannot be protected by copyright. But, wait, there could be another way.

AI and Conceptual Art

Edmond de Bellamy is not a lone figure, but has relatives, also created using GAN, in fact, he has a whole genealogical tree (see here, here and and here).

While Edmond de Belamy may not alone be protected by copyright, it could be argued that obvious art’s project, as an ensemble, could be protected as a work of art. Failing to do so would further jeopardize the complicated relationship between conceptual art and copyright.

The portraits created by AI formed a genealogical tree, a fake family complete with made-up names, and could be considered original enough to be protected under Feist as an original compilation. However, a sole portrait is not protected by copyright. Should wannabe buyers of the Bellamy portrait consider buying his whole family?

Photo courtesy of Flickr user MadLab Manchester Digital Laboratory under a CC BY-SA 2.0 license.

Filed Under: Art Law, Uncategorized · Tagged: AI, Artificial Intelligence

Le Conseil d’État rappelle que les opinions qui choquent sont protégées par la liberté d’expression

October 30, 2018 · by marie-andree@maw-law.com ·

Le 2 février 2017, au cours de sa chronique sur RTL Matin, On n’est pas forcément d’accord, Éric Zemmour avait tenu des propos qui avaient attiré l’attention du Conseil Supérieur de l’Audiovisuel (CSA).

L’animateur avait salué la nomination par Donald Trump de Neil Gorsuch à la Cour Suprême des États-Unis et avait argumenté que le nouveau juge allait mettre fin à la pratique de la Cour suprême de ” tordre le texte de la Constitution américaine pour lui faire dire ce qu’elle ne disait pas. Zemmour reprochait à la Cour suprême d’avoir ” imposé leur idéologie progressiste au peuple américain …read more

Filed Under: Cyber High and Law ·

Cultural Appropriation, an Intellectual Property Perspective

October 19, 2018 · by marie-andree@maw-law.com ·

The Agence France Presse posted a video on Twitter in August, which shows that the French fashion house Christian Dior had used traditional embroidery motifs in its pre-Fall 2017 collection (see here too). The embroideries are originally from the Bihor area in Romania and adorn a traditional garment, the “cojoc binşenesc” (more about it here and here).

Romanian Embroidery on a Cojoc

In this particular instance, the community reacted by taking advantage of this publicity and launched a website, Bihor Couture, which sells traditional Bihor garments and accessories.

I will not comment much on the trademark issues which the choice of ‘Bihor Couture’ could raise, but here are my quick two cents. In the U.S., parody is a defense in a trademark infringement case. If you are interested in this topic, you can read about the recent My Other Bag Second Circuit case here and here.

French trademark law does not have a parody exception, but courts have recognized such a defense, albeit sparingly, when parody was used as a social/political comment (see for instance this case, where the French Supreme Court held in 2008 that article 10 of the European Convention of Human Rights protects the right of non-profit Greenpeace to parody the Areva brand).

Can embroideries be protected by copyright?

Well yes they can, on both sides of the Atlantic, if they are original enough. Embroidery motifs may, however, be in the public domain, or not original enough to be protected by copyright.

In the U.S., embroideries can be considered fabric designs which are copyrightable. The mere fact that embroideries may adorn a piece of garment does not prevent them to be protected by U.S. copyright, even though a garment is an uncopyrightable useful article.

Since Star Athletica [see our comment on the case here], an artistic work applied on or incorporated into a garment may be eligible for copyright protection if it: “(1) can be perceived as a two or three-dimensional work of art separate from the useful article and (2) would qualify as a protectable pictorial, graphic, or sculptural work-either on its own or fixed in some other tangible medium of expression-if it were imagined separately from the useful article into which it is incorporated.”

In France, the concept of “Unité de l’Art” prevents French copyright law (droit d’auteur) to differentiate art from mere applied art (art appliqué) such as embroideries.

However, traditional embroideries may be in the public domain. The embroideries which inspired Dior may be in the public domain, or they could have been created recently enough to be protected by Romanian law. However, even traditional works in the public domain may soon be protected by intellectual property.

Protection of traditional works by moral rights

WIPO considers that traditional cultural expressions (TCEs), or “expressions of folklore,” may include handicrafts, and may be protected by copyright if recently created. It also noted that “[i]n many countries and for many indigenous and local communities, the handicraft sector plays a vital social and cultural function and contributes significantly to communal, local and national economies.”

WIPO’s Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore will hold its 37^th session from August 27 to 31. The Committee published last month draft articles on the protection of traditional cultural expressions, which are part of the session’s agenda and which are aimed to become an international instrument directing member States to better protect TCEs.

One of the policy objectives of the instrument would be to “prevent the misappropriation and misuse/offensive and derogatory use/unauthorized use of their traditional cultural expressions.” This is of particular interest for communities which have created designs attracting the attention of fashion companies eager to satisfy the want of their customers for authenticity. One may remember, for instance, that a U.K. fashion company used a traditional Inuit motif on a sweater.

One of the principles stated in the WIPO draft articles acknowledges that “traditional cultures and folklore constitute frameworks of innovation and creativity that benefit Indigenous [Peoples], [local communities] [and nations] / beneficiaries, as well as all humanity.”

It also notes “the value of a vibrant public domain and the body of knowledge that is available for all to use, and which is essential for creativity and innovation, and the need to protect, preserve and enhance the public domain.” It would “secure/recognize rights already acquired by third parties and secure/provide for legal certainty and a rich and accessible public domain.”

The instrument would direct “Member States [to] the economic and moral rights and interests of beneficiaries in secret and/or sacred traditional cultural expressions….as appropriate and in accordance with national law, and where applicable, customary laws. In particular, beneficiaries shall enjoy the exclusive rights of authorizing the use of such traditional cultural expressions.” (my emphasis).

Therefore, even traditional cultural expressions which are in the public domain may be protected by moral rights, which are perpetual. This would be an interesting development for communities wishing to prevent the use of designs, which are in the public domain, but which they consider sacred.

This is certainly worthy of interest at a time when “cultural appropriation” is a hot topic, in many domains. Madonna has been recently criticized for wearing Berber clothes and a choreographer has been criticized for using in one of his works a traditional dance, with dancers in costumes looking like traditional costumes.

Could traditional works be one day perpetually protected by moral rights?

This post was first published on The 1709 Blog.

Image is courtesy of Flickr user meaduva under a CC BY-ND 2.0 license.

Filed Under: Copyright, Fashion Law · Tagged: Christian Dior, Cultural Appropriation, Embroidery, Fashion Law, Moral Rights, Romania, Traditional Cultural Expressions, WIPO

Copyright’s Conceptual Cabin Fever

October 5, 2018 · by marie-andree@maw-law.com ·

Conceptual artist Cady Noland filed a copyright infringement suit last year [see my post on The 1709 Blog here], claiming that, by reconstructing one of her wooden sculptures which had been damaged, a museum had thus infringed her copyright by reproducing her work and had also violated her moral rights, as provided to her by the Visual Artists Rights Act and Section 14.03 of the New York Arts & Cultural Affairs Law.

Cady Noland had created in 1990 her “Log Cabin Blank With Screw Eyes and Cafe Door” (the Work), made out of wooden logs. It represents the façade of a log cabin, with one open door and two windows, and “[t]wo U.S. flags are an integral part of the sculpture,” according to the July 2017 complaint. The work was created to be displayed outdoors, and after years exposed to the sun and cold of Berlin, the wood used to create the Work had rotted.

Cady Nolan asserted in the 2017 complaint that she “has continuously owned the copyright to the Work. An application for registration of the copyright to Log Cabin together with the required fee and deposit material was transmitted to the Copyright Office in proper form and registration was refused. Plaintiff has complied with the requirements for registration of Log Cabin as provided in 17 U.S.C. § 411(a), and in accordance with said section will be serving notice and a copy of this Complaint on the Register of Copyrights” (my emphasis).

Indeed, the artist had filed an application to register the Work as a sculpture in July 2017, but this was denied the same month, because the work “lacks the authorship necessary to support a copyright claims” and because it “is a useful article… that … does not contain any non-useful design element that could be copyrighted and registered.”

A log cabin can be an iconic motel sign or even conceptual art

Log Cabin or Conceptual Art?

The following month, Noland requested the Review Board to reconsider this decision and to register her work. This time, the Copyright Office considered the work to be a sculpture and not a useful article (indeed, what exactly is the use of a single log wall?), but refused to register it anyway, as it did “not contain a sufficient amount of creativity either elementally or as a whole to warrant registration.”

In December 2017, Noland requested the Review Board of the United States Copyright Office (the Board) to reconsider the Registration Program’s refusal to register her work a second and final time, claiming that the work was original enough to be protected by copyright, and arguing she had made creative choices in order for the work to embody her idea to “construct the front of a house… to showcase the failed promise of the American dream” and that “the selection, arrangement, and combination of elements present in [the] work clearly meet the threshold of creativity required for a work to obtain copyright protection.”

On May 25, 2018, the Board affirmed the Copyright Registration Program’s denial to register Cady Nolan’s Log Cabin.

Defendant in the copyright infringement suit filed a motion to dismiss last April and this month Nolan filed an opposition to the motion. Plaintiff in a copyright infringement suit must prove ownership of a valid copyright, and thus the Board denial of copyright registration is likely to influence the outcome of the current lawsuit.

Why is Log Cabin not original enough to be protected by copyright?

A work needs to be original to be protected by copyright. The Copyright Act does not define what is “originality,” but the Supreme Court defined it in Feist as “mean[ing] only that the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity.” The Board quoted Feist, and also Section 906.1 of the Compendium on “uncopyrightable material,” which explains that “[t]he Copyright Act does not protect common geometric shapes, either in two-dimensional or three-dimensional form.” Such shapes must be combined “in a distinct manner indicating ingenuity” (Atari Games Corp at 883). Indeed, while geometric shapes cannot be protected by copyright, their creative arrangement, if original, can be protected.

The Board analyzed Noland’s Work and found that it “does not contain a sufficient amount of original and creative artistic or graphic authorship to sustain a claim in copyright. The Work is a simple representation of a standard log cabin façade with joinery; thus any authorship is de minimis and does not support registration. “

Nolan had argued that, while some of its elements are found in architectural work, it is a sculpture. The Board recognized that argument, and agreed that the work is a sculpture. It added, however, that the Work “is a simple expression of rote designs and representations of a log cabin; the fact that it is not functional or useful is irrelevant to that analysis” and concluded that “[t]he Work thus is a standard representation of a log cabin façade, which does not meet the minimum degree of creativity required for copyright protection.”

Conceptual art and copyright

Copyright and conceptual art have a somewhat difficult relationship and rooted in the necessity to prove their originality and fixation in a tangible medium of expression.

Wildflower Work is such conceptual work of art which has been denied copyright protection. It was a flower garden designed by Chapman Kelley and planted in the eighties in Chicago’s Grant Park In Kelley v. Chicago Park District, the Seventh Circuit found that Wildflower Work was original enough to be protected by copyright, but could not be protected because it “lack[ed] the kind of authorship and stable fixation normally required to support copyright.”

The Seventh Circuit explained that:

“recognizing copyright in Wildflower Works presses too hard on these basic principles. We fully accept that the artistic community might classify Kelley’s garden as a work of postmodern conceptual art. We acknowledge as well that copyright’s prerequisites of authorship and fixation are broadly defined. But the law must have some limits; not all conceptual art may be copyrighted.”… A garden’s constituent elements are alive and inherently changeable, not fixed. Most of what we see and experience in a garden — the colors, shapes, textures, and scents of the plants — originates in nature, not in the mind of the gardener.”

The district court in Kelley had found the work to be uncopyrightable for lack of originality because its design used simple elliptical shapes. However, the Seventh Circuit found this argument to be “misplaced,” explaining that “an author’s expressive combination or arrangement of otherwise noncopyrightable elements (like geometric shapes) may satisfy the originality requirement.”

In our case, the Board cited Satava v. Lowry, a Ninth Circuit case which explained that “a combination of unprotectable elements is eligible for copyright protection only if those elements are numerous enough and their selection and arrangement original enough that their combination constitutes an original work of authorship.”

Cady Nolan is not yet out of the woods (sorry).

This post was originally published on The 1709 Blog.

Image is from the John Margolies Roadside America Photograph Archive (no known copyright restriction)

Filed Under: Art Law, Copyright · Tagged: Art Law, Conceptual Art, Copyright

French and Faux? Balenciaga or JFK Souvenir Shop?

September 28, 2018 · by marie-andree@maw-law.com ·

You may have heard of high and low fashion styling, where we are urged to wear our diamond tiara with a Zara top. This story is a twist on the theme, as Balenciaga offers you a way to spend some serious money on a leather bag somewhat similar to plastic bags sold in New York City souvenir shops and airport stores. Copyright infringement suit ensued. The case is City Merchandise, Inc., v. Balenciaga America, Inc., 1:18-cv-06748 (SDNY).

City Merchandise, a New York City company designing souvenirs goods had created a plastic bag featuring the New York skyline over a pink sky, and the words NEW YORK CITY towering above the image. This how Plaintiff’s attorney describes it in the complaint, in legal yet poetic prose:

“Design encompasses a collage of portions of recognized NYC landmarks prominently featured in the forefront with several other buildings interspersed therein. The Design also features an airbrushed hot pink sky, accented with clouds. In addition, large, purple, fanciful cursive letters, unevenly bordered in white, ﬂoat above the skyline. The letters opulently glisten and ﬁttingly read, “New York City”.”

The design was used by Plaintiff on several models, a tote, a coin purse, which Plaintiff started selling in late 2014, early 2015. This season, Balenciaga sold a bag and a hoodie, featuring a New York skyline over a pink sky, and the words NEW YORK CITY in a font in large cursive letters. City Merchandise deemed these goods to be infringing and filed a copyright infringement suit in the Southern District of New York against Balenciaga.

Is it copyright infringement?

City Merchandise’s design is registered with the Copyright Office. It is certainly original enough to be protected by copyright (remember, one only needs a “modicum” of originality for a work to be protected by copyright).

Featuring landmark buildings on a design, such as the Empire State Building, the Flatiron Building and the Freedom Tower, along with the Statue of Liberty (technically in New Jersey harbor, but still a New York symbol) is not original per se, but the way the buildings are placed, the use of a bright pink sky, the fanciful font used for NEW YORK CITY, all make the design original enough to be protected by copyright.

Balenciaga’s design features the same buildings, but shown from different angles, and arranged in a somewhat different way: for instance, the Statue of Liberty is at the left in Balenciaga’s design, whereas it is featured at the right of Plaintiff’s design.

Plaintiffs claim that the “total concept and feel” between its original design and Balenciaga’s are identical. Courts in the Second Circuit apply an “ordinary observer test to determine if two works are substantially similar, but apply a “more discerning test” if works have both protectible and unprotectible elements or if, as in our case, copying is not exact. Judges then mustn’t dissect the works into separate components and compare only copyrightable or similar elements, but must instead compare the allegedly infringing design’s “total concept and overall feel’” with that of the original design.

Could Balenciaga assert fair use as a defense? Interestingly, the fourth fair use factor, the effect on the market, would likely be in Defendant’s favor, as using the protected design on goods sold in the luxury category would indeed have effect on the market, but a positive one (I will look for the original bag next time I am at JFK!).

The economic purpose of copyright

You may remember Balenciaga offering for sale its own version of the blue Ikea bag, and Ikea’s humorous response. One of Plaintiff’s exhibits, an article about this episode explains that Balenciaga also reproduced in leather a colorful Thai laundry bag originally made out of plastic.

Plaintiff’s bags retail from $19.99 to $5.99, while buying Balenciaga’s versions will set you backfrom $500 to $2,000. Does Plaintiff lose its economic incentive to create a design if a third party use it to make a more expensive version? Copyright law does not care about the price of the object, and a Van Gogh is protected as well as a pattern used for airplane interiors.

Balenciaga saved costs by not having to create the design. It probably did not copy the design to save money, to “free ride”, but more likely to comment on “what makes fashion fashion”: is it the design, or is fashion and style in the eye of the beholder? After all, Balenciaga head designer is Demna Gvasalia, who became famous thanks to his Vetement brand, which once famously sold once a DHL tee-shirt.

Balenciaga seems to use now tourist goods to comment on fashion: it currently sells a Paris sweatshirt, resembling those found at Parisian tourist shops and showed in its Fall 2018 a model wearing a World Food Program sweat shirt and fanny pack. Reverse snobbism? Copyright infringement? Or both?

This post first appeared on The 1709 Blog.

Filed Under: Copyright, Fashion Law, Southern District of New York · Tagged: Copyright, Fashion Law

Not every pattern is protected by copyright, even if creating it involved many choices

January 8, 2018 · by marie-andree@maw-law.com ·

The Review Board of the U.S. Copyright Office (the Board) recently reviewed a second request by T.W.N. Industries (TWN) for reconsideration of the Registration Program’s previous denial to register two of its patterns. On October 25, 2017, the Board again denied registration to one of the patterns, Gold Wood, but granted registration to the Staggered Carbon Pattern.

TWN’s patterns are designed to be used by applying them to an object, such as an airplane interior for example.

The Board described the two patterns as such:

“Staggered Carbon is a geometric pattern consisting of repeating rectangular bands of different sizes, shapes, and textures, arranged in a woven pattern. The bands are two distinct gray-colored patterns. One band is dark gray with vertical lines, and the other band is light gray with darker gray lines.

Gold Wood is a two-dimensional graphic design consisting of a repeating pattern of striated gold and cream vertical lines, made to resemble a light wood grain. “

The U.S. Copyright Office had originally denied in September 2016 copyright registration to both patterns, informing TWN that they lacked the minimum amount of creative pictorial, graphic or sculptural authorship necessary for a work of visual arts to be protected by copyright.

TMW then asked the Copyright Office to reconsider its refusal, and explained the creative process used for both patterns, which both necessitates the use of up to three layers within Photoshop, and were hand-drawn using different brushes and strokes.The Copyright Office again denied registration, as “the elongated rectangular bands” which made up the Staggered Carbon pattern “are a common and familiar shape” and the lines making up the Gold Wood pattern were also “a common and familiar shape” and thus could not be protected by copyright. The Copyright Office also found that the Gold Wood’s features were not “combined in any way that differentiates them from their basic shape and design components,” and were a “simple configuration” not protectable by copyright as “the work as a whole consists of vertical lines in shades of gold and cream.”

TMW asked the Copyright Office to reconsider its refusals for a second time, as allowed by 37 C.F.R. § 202.5 (c), claiming that both works were original enough to be protected by copyright, which bears the question: what is originality under U.S. copyright law?

What is originality under U.S. copyright law?

Under 17 U.S.C. § 102(a), U.S. copyright protects only “original works of authorship.” The threshold for a work to be original is, however, quite low. As explained by the Supreme Court in Feist Publications, Inc. v. Rural Telephone Service Co., Inc. , “[t]he sine qua non of copyright is originality. To qualify for copyright protection, a work must be original to the author. … Original, as the term is used in copyright, means only that the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity.”

Thus two cumulative conditions are necessary for a work to be protected by copyright:

– It must have been independently created by the author and

– It must possess at least some minimal degree of creativity

A combination of unoriginal elements can be original enough to be protected by copyright

The Board noted that [s]ome combinations of common or standard design elements may contain sufficient creativity with respect to how they are juxtaposed or arranged to support a copyright… [but that] not every combination or arrangement will be sufficient to meet this test.”

It quoted the 2003 Satawa v. Lowry 9^th Circuit case, where the court explained that, while

“a combination of unprotectable elements may qualify for copyright protection… not … any combination of unprotectable elements automatically qualifies for copyright protection. Our case law suggests, and we hold today, that a combination of unprotectable elements is eligible for copyright protection only if those elements are numerous enough and their selection and arrangement original enough that their combination constitutes an original work of authorship.”

The Board also quoted § 906.1 of the Compendium of U.S. Copyright Office Practices on Common Geometric Shapes, which explains that “the U.S. Copyright Office will not register a work that merely consists of common geometric shapes unless the author’s use of those shapes results in a work that, as a whole, is sufficiently creative.”

Staggered Carbon is original enough to be protected by copyright

The Board found that “the combination of elements in Staggered Carbon – namely the different textures on the bands, as well as their arrangements – exhibits copyrightable authorship,” and was original enough to be protected, quoting Feist, where the Supreme Court held that only a ‘modicum’ of creativity is necessary for a work to be original.

However, only the “specific combination of textures” created by TWN are protected by copyright, not the “standard designs and other unoriginal elements.”

Gold Wood is not original enough to be protected by copyright

But even though the Board recognized that Gold Wood had been independently created, it was not creative enough to be protected by copyright, as “it consists of simple, minor variations on common shapes arranged in an obvious and uniform manner.” The Board explained further that Gold Wood “is made up of only a very few elements (monochromatic lines in a few shades of gold” arranged in an unoriginal manner (densely and with only minor and repeating variations throughout the pattern).” As explained in § 313.4(J) of the Compendium of U.S. Copyright Office Practices, “a work consisting of a simple combination of a few familiar symbols or designs with minor linear or spatial variations, either in two-dimensional or three-dimensional

form, cannot be registered.”

TWN argued that it had to make “specific choices from endless alternatives of shapes” to create Gold Wood. But the Board explained that “it is not the possibility of choices that determines copyrightability, but whether the resulting expression contains copyrightable authorship.”

Image is courtesy of Flicker user Tony Webster Under a CC BY2.0 license.

This post was first published on The 1709 blog.

Filed Under: Copyright · Tagged: Copyright, Copyright Office, Patterns