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I, Robot: The U.S. Copyright Office Publishes Guidance on Registration of Works Generated by AI

July 1, 2023 · by AdminDesign ·

On March 16, 2023, the U.S. Copyright Office (USCO) published its Copyright Registration Guidance: Works Containing Material Generated by Artificial Intelligence(the Guidance).

Artificial Intelligence (AI) is now “capable of producing expressive material”. The USCO chose its words carefully: AI “produces” works, it does not “create” them. However, these works are “expressive materials”.

AI is now among us, but not in the shape imagined by Isaac Asimov, androids, such as Robbie, who is taking care of a little girl. AI is on our desktop and in our pockets, an app installed on our smart phone.

AI technology can be used to produce a work by first obtaining a large data set of preexisting works, using this data set to “train” and then “use inferences from that training to generate new content.” Such content can be a text, an image, or an audio. The USCO mentioned in the Guidance that it would later this year publish a notice of inquiry about how law should address the use of works protected by copyright in the data set.

The USCO mentioned two recent cases raising the issues of whether a work created using an AI program can be protected by copyright: “Entrance to Paradise”, pictural work, and Zarya of the Dawn, a comic book which images were created by AI while a human authored the text. Are the works thus produced protectable by copyright?

An Entrance to Paradise

Dr. Stephen Thaler created A Recent Entrance to Paradise, the image of an abandoned train tracks framed by wisterias, using an AI program it called the “Creativity Machine” that he had created and programmed.

Dr. Thaler sought to register its copyright in November 2018 but the USCO denied registration in August 2019, because the Office has a “Human Authorship Requirement” policy. Dr. Thaler filed two requests for reconsideration which the USCO both denied. Dr. Thaler filed a suit against the USCO in June 2022, claiming that “the denial creates a novel requirement for copyright registration that is contrary to the plain language of the Copyright Act…, contrary to the statutory purpose of the Act, and contrary to the Constitutional mandate to promote the progress of science.” The denials are subject to judicial review under the Administrative Procedure Act, 5 U.S.C. § 704.

On January 10, 2023, Dr. Thaler filed a motion for summary judgment, arguing that “the plain language of the Copyright Act… does not restrict copyright to human-made works, nor does any case law.” The work is fixed, visual artwork. As explained in 1991 by the Supreme Court of the U.S. (SCOTUS) in Feist Publications, Inc. v. Rural Telephone Service Company “To qualify for copyright protection, a work must be original to the author”, which means that the work must be independently created by the author and must possess at least some minimal degree of creativity.

Dr. Thaler also argued that “courts have referred to creative activity in human-centric terms, based on the fact that creativity has traditionally been human-centric and romanticized.”

Alternatively, Dr. Thaler argued that he owns the copyright in “A Recent Entrance to Paradise” because the work for hire ownership originally vested in him because he invented and owns the Creativity Machine and its outputs automatically vest in him.

Zarya of the Dawn

Kristina Kashtanova, created a comic book, Zarya of the Dawn, using an AI program to illustrate it. She sought to register its copyright and was successful at first, but the USCO then canceled the certificate and issued a new one protecting only the text of the comic book and the selection, coordination, and arrangement of its written and visual elements. However, the images created by AI were not protectable because they “are not the product of human authorship.” The letter of the USCO cited Burrow-Giles Lithographic Co. v. Sarony, a 1884 case where SCOTUS explained that photographs, still a technological novelty at the time, were protected by copyright because they were “representatives of original intellectual conceptions of the author.” SCOTUS defined authors in Burrow-Giles as “he to whom anything owes its origin; originator; maker; one who completes a work of science or literature.” But the Court explained that if photography was a “merely mechanical” process …with no place for novelty, invention or originality” for the photographer, then the photographs could not be protected by copyright.

The USCO explained in its letter about Zarya of the Dawn that even if Ms. Kashtanova claimed to have “guided” the structure and content of the comic images, it was the AI program, not her, “that originated the “traditional elements of authorship” in the images.”

Public guidance on the registration of works containing AI

These two cases show that works can be entirely protected by AI or only partially. The purpose of the Guidance is to provide the public (and its attorneys!) if seeking to register works containing content generated (not created!) by AI.

In the Guidance, the USCO explained that it evaluated whether works containing human authorship combined by uncopyrightable material generated by or with assistance of technology by assessing if technology was an “assisting instrument” or if the work was conceived by it. In the case of AI, the USCO explained that it “will consider whether the AIA contributions containing AI-generated are the result of “mechanical reproduction “or instead an author’s “own original mental conception, to which [the author] gave visible form”, and that this would assessed case by case.

If the AI receives solely a prompt from a human being, the work cannot be protected by copyright, as it is the human being does not have creative control over how the AI system interprets the prompt and generate the work, and that the prompts are more like instructions to a commissioned artist.

If a work contains AI-generated material and sufficient human authorship, it can be protected by copyright, for instance, if a human being selects and arranges AI-generated materials in a way original enough to be protectable.

Public guidance on the registration of works containing AI

Does the Copyright Act indeed require human authorship?

The USCO cited Burrow-Giles in its Guidance to support its view that authors must be human and also cited the Ninth Circuit Urantia Found. v. Kristen Maahera case, where the court held that a book, which both parties believed was “authored by celestial beings and transcribed, compiled and collected by mere mortals.” The defendant in this copyright infringement suit claimed that the book was not protected by copyright, because it was not authored by a human being and thus not a “work of authorship” within the meaning of the Copyright Act.

However, the Ninth Circuit noted that “[t]he copyright laws, of course, do not expressly require “human” authorship, and considerable controversy has arisen in recent years over the copyrightability of computer-generated works”. In this case, the Court noted that the Copyright Act was not intended to protect “creations of divine beings” and that “in this case some element of human creativity must have occurred in order for the [b]ook to be copyrightable.”

If the Copyright Act does not require human authorship, but refuses to accept that “divine beings” can be the author, and case law states that a monkey, human beings’ closest cousin, cannot be an author within the meaning of the Copyright Act (Naruto v. Slater, a case from the United States District Court, Northern District of California previously discussed in the TTL Newsletter), will robots ever be able to claim authorship of a work? Such works are already winning prizes at art fairs, such as Théâtre D’opéra Spatial, created using AI, which won first prize at the Colorado State Fair’s digital arts competition.

If works created by AI cannot be protected by copyright, the incentive to develop such technology may be lacking. We are likely to see more and more works crated by humans using elements created by AI, and the border between elements crated by human beings or by machines blurring more and more.

The image of of “Little Fire Hydrant” is courtesy of Flickr user Trọng Nguyễn and is in the public domain.

Filed Under: Copyright, Copyright Office, Uncategorized · Tagged: AI, Copyright, Copyright Registration

Who owns the copyright on Jack Ryan?

May 7, 2021 · by marie-andree@maw-law.com ·

On 10 February 2021, United States District Judge Ellen L. Hollander from the Federal District Court of Maryland published an 89-page Memorandum Opinion, addressing the issue of ownership of the books and fictional characters created by Tom Clancy, including Jack Ryan. The case is Alexandra Clancy v. Jack Ryan Enterprises, Ltd.

Facts

The character of Jack Ryan first appeared in The Hunt for Red October (The Hunt), the first book ever published by Tom Clancy. It was published in 1984, by a small academic press, the United States Naval Institute (USNI). One of the book’s characters is Jack Ryan, an analyst working for the Central Intelligence Agency. Jack Ryan became a recurring character in Tom Clancy’s books, and appeared in several movies and television series adapted from Clancy’s best-sellers.

Clancy and USNI signed a publishing agreement in 1983, which stated that:

“Author [Tom Clancy] grants and assigns to the Publisher [USNI] the exclusive worldwide rights and any subsisting copyright, including the right to secure copyrights and any renewals or extensions thereof, in connection with a certain unpublished work provisionally entitled THE HUNT FOR RED OCTOBER…” and also stated “The Author agrees that he will not, without the written permission of the publisher, publish or permit to be published any material based on, or derived from, or directly competitive with the Work [i.e., Hunt], so long as this agreement shall remain in force.”

On October 29, 1984, USNI received a certificate of copyright registration for The Hunt which identifies Clancy as the author, and USNI as the copyright claimant. On May 7, 1985, USNI, as owner of the exclusive rights, licensed a theatrical film from Paramount Pictures.

Jack Ryan Enterprises, Ltd. (“JREL”) was formed on May 28, 1985 by Tom Clancy and then-wife Wanda King. JREL’s only assets were the computers that Clancy used to write his books. JREL was owned 40% by Tom Clancy, 40% by Wanda King, and 20% by their four children. Tom Clancy died in 2013, and JRE is now owned 40% by his estate, 40% by Wanda King, and 20% by Clancy and King’s children. Wanda King is JREL’s President.

The issue of ownership of the Jack Ryan character first arose between Clancy and USNI in 1987. Clancy asked USNI to transfer the copyright registration for The Hunt back to him, claiming it was needed for Clancy to move forward with his negotiations with Viacom. USNI claimed it owned the rights to The Hunt.

Robert Youdelman, Clancy’s attorney, told his client at the time that he believed that USNI had “acquired the copyright in [Hunt],” which gave it a continuing “interest in new books using the same characters.” He added that “[t]he author of a novel usually retains the copyrights…. The publisher customarily has no interest in new books using the same characters,” and noted that USNI had acquired “world-wide publishing rights” and added that because the “contract entitles [USNI] to 50% of all you make from any book in which ‘Jack Ryan’ or other characters from Red October appear, it is our view that this alone departs so far from industry practice as to make the entire contract unconscionable.”

In 1988, Clancy filed for arbitration with the American Arbitration Association, arguing that he owned the Jack Ryan character, because the history of the relationship between USNI and Clancy showed that Clancy never relinquished his ownership of the now famous character. The parties settled: Clancy agreed to pay USNI $125,000 and, in exchange, USNI agreed to reassign the copyright in The Hunt to Clancy. However, the agreement did not explicitly mention the Tom Clancy character.

JREL and Paramount entered into an agreement in 1989 clarifying the ownership rights to the motion picture, television, and literary rights in The Hunt, which stated that JREL, as owner, had rights reserved for use and disposition, including in all literary property using the character Jack Ryan or any other principal character in The Hunt. JREL subsequently entered into other contracts for novels and movies featuring Jack Ryan.

Clancy formed Jack Ryan Limited Partnership (“JRLP”), a Maryland limited partnership, on 26 February 1992. Clancy’s 50% interest is now owned by his estate. Regina King still owns 50%. In 1992, and again in 1994, Clancy entered into employment agreements with both JREL and JRLP.

Clancy formed Rubicon, Inc. in November 1995, which was owned entirely by Clancy. Clancy published The Bear and the Dragon (2000), Red Rabbit (2002), and The Teeth of the Tiger (2003), featuring Jack Ryan, under contracts executed by Rubicon. Clancy published these books without the agreement of the JR Entities and no proceeds were paid to the JR entities.

Clancy & King separated in November 1996. Their separation agreement included sections on the ownership and control of JREL and JRL:

“Husband [i.e., Clancy], Wife [i.e., King] and Michelle Clancy [one of the Older Children] are the only directors of JREL. Husband is the President, and Wife is the Vice President, Treasurer and Secretary of JREL + Clancy, as president of JREL, would have the usual powers of the chief executive of a personal service corporation, including the power to negotiate and sign on behalf of JREL royalty and other contracts…”

This agreement was incorporated in the 1999 divorce decree. Tom Clancy married Alexandra Clancy in 1999. The couple stayed married until Clancy’s death in October 2013 and had one child.

Paramount announced in 2008 that it was developing a new movie, Jack Ryan: Shadow Recruit, featuring Jack Ryan, which would not be based on any of Clancy’s previous novels. Based on emails between Clancy and his representatives, there was some concerns on whether Paramount had the right to develop the Jack Ryan character. Robert Youdelman reminded Clancy’s agent that the “‘Jack Ryan’ character is owned by Jack Ryan Enterprises Ltd, an entity in which Wanda [King] and the children have an interest[.]” Paramount eventually paid to use the Jack Ryan character in the new movie.

Clancy died in 2013. After his death, Putnam wanted to publish “Tom Clancy” novels, at least one novel focusing on the Jack Ryan character. In March 2015, his Estate, Rubicon, JREL, and JRLP, collectively as the “Author,” executed a four-book deal with Putnam.

Procedure

Alexandra Clancy filed on August 25, 2017 a complaint for declaratory judgment in the Circuit Court for Baltimore City to obtain a declaration that the rights to the Jack Ryan character are owned by Rubicon, a company created by Tom Clancy, which is now wholly-owned by the Tom Clancy Estate.

Defendants are J.W. Thompson Webb, as personal representative of the Estate of Thomas L. Clancy, Jr. (the “Estate”) and the three separate business entities formed by Clancy: JREL, JRLP and Rubicon.

The case was removed to the federal District Court for the District of Maryland because some of the claims arise under the Copyright Act.

Authorship and Work Made for Hire

Defendants claim that JR Books were written as works made for hire for the JR Entities, which, therefore, own all of the copyrightable elements of the books, including the characters delineated in them.

Neither side argues that any of the books were “specially ordered or commissioned,” and thus the issue is whether Clancy was an employee of the JR Entities and wrote the JR Books within the scope of his employment.

If Clancy was an employee of JREL and JRLP, then the works he wrote at the time are works for hire and the two companies own the copyright. This is the view of the Defendants, but not, of course, of the Plaintiff, who claims that Clancy was neither an employee nor agent of the JR Entities, that, therefore, the works are not works made for hire as Clancy’s relationship with the JR Entities “had none of the earmarks of a true employee relationship.”

Section 101 of the Copyright Act defines a work for hire as:

“(1) a work prepared by an employee within the scope of his or her employment; or

(2) a work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.”

The Copyright Act does not define the terms “employee” or “employment,” however, leaving the application of the terms to the courts.

The U.S. Supreme Court held in Community for Creative Non-Violence v. Reid, that “the term ‘employee’ should be understood in light of the general common law of agency,” and set out a non-exhaustive list of factors to consider. However, none of these factors are determinative, and the Supreme Court did not indicate how the factors must be weighed.

The Courts do not mechanically apply the Reid factors and only consider the factors which are relevant in each case:

hiring party’s right to control the manner and means by which the product is accomplished;
skill required;
source of the instrumentalities and tools;
location of the work;
duration of the relationship between the parties;
whether the hiring party has the right to assign additional projects to the hired party;
extent of the hired party’s discretion over when and how long to work;
method of payment;
hired party’s role in hiring and paying assistants;
whether the work is part of the regular business of the hiring party;
whether the hiring party is in business;
provision of employee benefits; and
tax treatment of the hired party

The Second Circuit Court of Appeals identified in Aymes v. Bonelli five factors to consider when determining whether a work was made for hire:

hiring party’s right of control over the hired party;
skill required of the hired person;
provision of employee benefits;
tax treatment of the hired party; and
whether the hiring party has the right to assign additional projects to the hired party.

Judge Hollander found the Aymes factors “particularly relevant” in the Clancy case, and concluded that they weighed against finding a work for hire status, as evidence demonstrated that neither of the JR Entities had attempted to “control the manner and means” by which Clancy’s books were written. King acknowledged that Clancy had complete autonomy with respect to every aspect of his books, and even though she may have reviewed the books once they were written, it was Clancy who chose what books to write and when to work on them.

Clancy was a co-owner of both entities, but there are factors that support finding that the famous author was an employee of the JR Entities:

JREL paid for the computer that Clancy used to write the books;
Clancy worked for both entities for an extended period of time;
Clancy’s work was part of the regular business of the entities; and
Clancy received health benefits.

Defendants argued that publishing agreements between the JR Entities and Putnam proved that Clancy believed the books were made for hire. Judge Hollander found that these agreements prove that Clancy had the intent to form an employment relationship, but that they did not necessarily “suffice on [their] own” to overcome the factors weighing against finding a work for hire relationship.

Judge Hollander could not thus conclude, as a matter of law, that Clancy was an employee of the JR Entities and that his books were made for hire and denied both Plaintiff and Defendants’ motions with respect to the work for hire claims.

Alleged Copyright Assignments from Clancy to the JR Entities

The Parties did not dispute that JREL owns the copyright to The Hunt but disagreed over whether the Jack Ryan character as developed in The Hunt, was assigned to USNI and then JREL, along with the copyright in The Hunt or, instead, whether Clancy retained the copyright in Jack Ryan at the time of his death.

Ownership of a copyright is freely transferrable “by any means of conveyance or by operation of law,” 17 U.S.C. § 201(d)(1). However, “[a] transfer of ownership, other than by operation of law, is not valid unless an instrument of conveyance, or a note or a memorandum of the transfer, is in writing and signed by the owner of the rights conveyed or such owner’s duly authorized agent,” 17 U.S.C. § 204(a).

Section 204’s requirement may be satisfied by an oral assignment that is subsequently ratified or confirmed by a written memorandum of the transfer.

Defendants claimed that JR Entities own the JR Books and their characters because the copyrights were validly assigned to them by Clancy, pursuant to 17 U.S.C. § 204(a), while Plaintiff claims that any alleged assignment of the JR Books to the JR Entities was ineffective.

Defendants argued that there were “several written instruments, signed by Tom Clancy, that memorialize the transfer of copyright in each book from Tom Clancy to JREL and JRLP, respectively,” including:

the publishing agreements with Putnam;
the Guaranty Letters accompanying those agreements;
the Separation Agreement that acknowledges ownership of the books by JREL and JRLP;
Guaranty Letters and the Separation Agreement operate as written “note[s] or memorand[a]” validating earlier transfers between the JR Entities and Clancy.

Plaintiff argued that these are not the kind of documents that “qualify as assignments” under Section 204 and that “none of the referenced documents are between Clancy and JREL or JRLP,” none of them “set forth the clear and unequivocal intent to transfer required by Section 204.”

Judge Hollander applied Maryland law to interpret the agreements and concluded Tom Clancy clearly intended to transfer copyright ownership to the JR Entities, and that the requirement of an assignment under Section 204(a) were satisfied.

Impact of the assignment on ownership of the characters featured in the JR Books, including Jack Ryan

Judge Hollander noted that the parties appeared to agree that the owner of the copyright to these works also owns the rights to the characters or the incremental character developments in them, with the exception, however, of the Jack Ryan character. She considered separately the issue of ownership of the Jack Ryan character and concluded that the characters developed in the JR Books, like the books themselves, were validly assigned to the JR Entities.

The parties disagreed on whether the assignment to USNI of the copyright to The Hunt, and the assignment of The Hunt to JREL included assignment of the copyright in Jack Ryan, a character who first appeared in this book.

Defendants claimed that Clancy assigned the copyright in Hunt to USNI “without reservation,” and thus USNI acquired the copyright to the Jack Ryan character, and that, when USNI assigned the copyright in The Hunt to JREL, “it also assigned the rights to Jack Ryan as delineated in Hunt to JREL.”

Plaintiff stated that Jack Ryan “is a fully delineated, distinctive and iconic character,” and is “important to the Clancy franchise.” She conceded that the rights to The Hunt were assigned to USNI and JREL, but not the character of Jack Ryan:

“The 1983 [USNI] Contract does not grant USNI any rights to the characters featured in HUNT or to sequels or derivative works. None can be inferred.”

Fictional characters are not an enumerated copyrightable subject matter under the Copyright Act, see 17 U.S.C. § 102(a), but courts recognized that they can be protected by copyright if developed with enough specificity so as to constitute protectable expression.

The Ninth Circuit Court of appeals explained, however, in DC Comics v. Towle, that “[n]ot every comic book, television, or motion picture character is entitled to copyright protection.” The Ninth Circuit enumerated its “Towle” test for characters:

A character is entitled to copyright protection if

the character has “physical as well as conceptual qualities;”
the character is “sufficiently delineated to be recognizable as the same character whenever it appears” and “display[s] consistent, identifiable character traits and attributes;” and
the character is “especially distinctive” and “contain[s] some unique elements of expression.”

Section 201(d)(2) of the Copyright Act provides:

Any of the exclusive rights comprised in a copyright, including any subdivision of any of the rights specified in section 106, may be transferred…and owned separately. The owner of any particular exclusive right is entitled, to the extent of that right, to all of the protection and remedies accorded to the copyright owner by his title.

As such, under the theory of divisible copyrights, fictional characters may be protected separately from the underlying work, and this copyright may be assigned separately from the copyright in the general work.

Judge Hollander noted that the issue was not only whether Jack Ryan was sufficiently delineated in The Hunt to be protected by copyright, separately from the book, but also whether the assignments of The Hunt copyright to USNI, then JREL, included the transfer of ownership of Jack Ryan.

As both parties agreed that Jack Ryan is sufficiently developed to be protected, Judge Hollander addressed only the issue of assignment of rights, found these assignments to be ambiguous and denied summary judgment:

“Whether the rights to Jack Ryan were assigned to USNI or JREL, as part of the assignment of rights to Hunt, depends on the interpretation of the… agreements. …Applying the tools of contract interpretation, I conclude that the assignment of rights to Jack Ryan is ambiguous because at least one of the relevant agreements—the Settlement Agreement—is susceptible to multiple interpretations.”

The case is now heading to trial. A jury will be asked to decide who owns the Jack Ryan character, unless the parties settle.

This article was first published by TTLF Newsletter on Transatlantic Antitrust and IPR Developments ( Stanford-Vienna Transatlantic Technology Law Forum)

Image of the spine of The Hunt for Red October courtesy of Flickr user Drümmkopf under a CC BY 2.0 license.

Filed Under: Copyright, TTLF Newsletter, Uncategorized · Tagged: characters and copyright, Copyright, work for hire

Upcoming Sale of An Empowering NFT

May 4, 2021 · by marie-andree@maw-law.com ·

The New York Times recently published an article about the upcoming auction of ‘Buying Myself Back: A Model for Redistribution’, a nonfungible token (NFT) to be auctioned by Christie’s on May 14.

Buyers purchasing an NFT become owners of a digital good, which can be an image, as is A Model for Redistribution, a video, or even a music album, all sold in the form of a unique blockchain digital token.

Such tokens are non-fungible, meaning they are unique and cannot be exchanged for their equivalent. Interestingly, works which were not originally digital, such as this photograph of Keith Haring, may be made an NFT, thus reaching new markets and increasing their value, as NFT technology makes a work verifiably unique. Scarcity enhances values and then artists, or content owners may benefit.

This new technology is not confined to the art world. The NBA introduced its Top Shot marketplace where fans can buy NFT videos of their favorite players, thus buying a licensed video, just as, not a long time ago it seems, fans collected trading cards of their favorite players. A paper trading card featuring Lebron James recently sold for $5.2 million, setting a record. NBA NFT, while not (yet) as pricey, are not cheap either. It remains to be seen, however, if the market will remain strong allowing for NFT high prices to hold.

The NFT market is new and evolving: Everydays: The First 5000 Days, a NFT digital collage created by Beeple, was sold last March by Christie’s for 69,346,250 US dollars. However, some NFTs can be purchased for a reasonable price. The buyer must, however, have a bitcoin wallet to pay for the purchase. Even Christie’s accepted to be paid in bitcoins for the sale of Everydays: The First 5000 Days.

Blockchain technology also ensures the authenticity of the work and records its provenance. Art historians compiling catalogues raisonnés of NFT artists will be able to rely on blockchain technology to establish the provenance of the work. A NFT may be copied easily, as it is a digital work, but the original work will be the only one with a blockchain, thus authenticating ownership and provenance.

Christie’s explains that the token “reinstates Ratajkowski’s agency over her own image by allowing her access to its monetary and symbolic value, both of which she and other women in similar professions have too often been deprived.”

The Buying Myself Back: A Model for Redistribution NFT has an interesting story. It features a photograph of fashion model Emily Ratajkowski in front of a work by Prince’s featuring her, which was part of the New Portraits exhibition at the Gagosian Gallery in 2014. Prince reproduced Instagram posts on canvas, after adding a comment or two under the post using his own Instagram account. This method of creating a piece of art did not fare well with one of the original artists (see here).

The title of the work sold by Ms. Ratajkowski alludes to an essay she wrote, Buying Myself Back, published last September by New York Magazine and was widely shared, where she describes how she came into possession of the Prince work, including having to buy it back from a former boyfriend. She also described a 2012 photo session where she posed nude, after which some polaroids taken at the session became part of a book published without her permission.

Ms. Ratajkowski wrote the essay after being sued for copyright infringement in October 2019 by photographer Robert O’Neil after the model had posted on her Instagram account a photograph O’Neil had taken of her in the streets of New York. Her image, his copyright (allegedly at least, the case is ongoing).

Announcing the sale of Buying Myself Back: A Model for Redistribution on her Instagram account, Ms. Ratajkowski wrote:”

“The digital terrain should be a place where women can share their likeness as they choose, controlling the usage of their image and receiving whatever potential capital attached. Instead, the internet has more frequently served as a space where others exploit and distribute images of women’s bodies without their consent and for another’s profit.”

She explained further in a Twitter post that

“using the newly introduced medium of NFTs, [she] hoped to symbolically set a precedent for women and ownership online, one that allows for women to have ongoing authority over their image and to receive rightful compensation for its usage and distribution.”

Christie’s describes the work as a “conceptual work.” Considering this statement from a copyright point of view, we ask : is the work protected by copyright?

Starting with basic concepts of copyright law, only works fixed in a “tangible medium of expression… sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration” are protected by copyright.

As such, a NFT can be protected by copyright, because it is fixed in tangible medium of expression and can be communicated for more than a transitory period of time, even though Christie’s “lot essay” explains that Ms. Ratajkowski “employ[s] the NFT as a tradeable metaphor for that which has no physical embodiment.”

A work must also be original to be protected. It is probably original enough to be protected, especially considering that it is original to have the model of a painting pose in front of it.

The work is a derivative work of the original Prince’s work, which itself reproduced a photo which copyright he did not own. As Prince claims fair use, the copyright owner of Buying Myself Back: A Model for Redistribution, in the unlikely event h/she would be sued by Prince, could also claim fair use.

What about copyright’s ownership? The original owner is likely to be the person who took the photograph, but Ms. Ratajkowski may have acquired the right.

As a note, merely creating an NFT from an original work is unlikely to be considered derivative work protected by fair use. A NFT Jean-Michel Basquiat’s drawing was recently withdrawn from sale because the seller did not own its copyright nor a copyright license. Similarly with the recent sale of a Bansky NFT, the buyer would have been given the right to destroy the sale, a move which would not have violated the Visual Artists Rights Act of 1990 as it protects certain works of art only during the lifetime of the artist (this contrasts greatly with, say, French law, which recognizes that moral rights are perpetual…).

Filed Under: Art Law, NFT · Tagged: Blockchain, Copyright, Fair Use, NFT

Copyright Law Update: the Protect Lawful Streaming Act & the CASE Act

January 18, 2021 · by marie-andree@maw-law.com ·

The Protect Lawful Streaming Act was passed on December 2020, as part of the Covid-19 stimulus omnibus bill, the Consolidated Appropriations Act, 2021.

The Act adds a section 2319C to the Copyright Act on digital transmission services, defined as services having as a primary purpose to publicly perform works by digital transmission. The Act prohibits providing such services commercially or for financial gain without the authorization of the copyright owner.

The penalties are a fine and imprisonment for not more than three years, or both, or imprisonment for not more than five years, or both, if the offense “was committed in connection with one or more works being prepared for commercial public performance; and … the person knew or should have known that the work was being prepared for commercial public performance.” The penalty can be a fine and 10 years in prison if the offense is a second or subsequent offense under section 2319C or Section 2319(a).

The ‘‘Copyright Alternative in Small-Claims Enforcement Act of 2020’’ or ‘‘CASE Act of 2020’’ was also passed as part of the omnibus bill. It creates Chapter 15 of the Copyright Act and establishes a Copyright Claims Board in the Copyright Office (CCB)), which much be established within one year of the enactment of the Act.

Composition of the Copyright Claims Board

The CCB, which will be an administrative tribunal for matters related to copyright, will be composed of three full-time Copyright Claims Officers appointed by the Librarian of Congress, after consultation with the Register of Copyrights, who must be attorneys with a least seven years of experience, and who must “have substantial familiarity with copyright law and experience in the field of alternative dispute resolution, including the resolution of litigation matters through that method of resolution.” The three Officers will be appointed, respectively, to a four-year term, to a five-year term, or a six-year term.

The Register of Copyrights must also hire at least two full-time Copyright Claims Attorneys “to assist in the administration of the Copyright Claims Board,” which must have “substantial experience in the evaluation, litigation, or adjudication of copyright infringement claims” and no fewer than three years of “substantial experience in copyright law.” They will be appointed to a five-year term.

Both Copyright Claims Officers and Copyright Claims Attorneys will have to recuse themselves if there they have reason to believe there is a conflict of interest. Parties will have to refrain from ex parte communication with the Copyright Claims Officers and the Copyright Claims Attorneys.

Participation in CCB proceedings is voluntary, but respondents need to opt-out within 60 days

Participation in a CCB proceeding is voluntary, and the parties retain their right to pursue their claim in a court of law “or any other forum.” However, if a respondent fails to opt out within a 60-day period after having been served by the claimant, she or he “loses the opportunity to have the dispute decided by a court created under article III of the U.S. Constitution and waives the right to a jury trial regarding the dispute.”

The respondent will be able to file a counterclaim.

Scope of jurisdiction

The CCB will have power to adjudicate copyright infringement claims if the claim does not exceed $30,000. The CCB will also be able to adjudicate claims for a declaration of noninfringement of a copyright, and claims of section 512(f) DMCA misrepresentations, that is, a misrepresentation in the DMCA takedown notice of the infringing nature of a material or activity, or that a “material or activity was removed or disabled by mistake or misidentification.”

Applicable laws

The CCB will follow the regulations established by the Register of Copyrights under the new Chapter 15 and other “relevant principles of law under this title.” In case of conflict with “a judicial precedent on an issue of substantive copyright law that cannot be reconciled,” then the CCB will “follow the law of the Federal jurisdiction in which the action could have been brought if filed in a district court of the United States, or, if the action could have been brought in more than one such jurisdiction, the jurisdiction that the [CCB] determines has the most significant ties to the parties and conduct at issue.” It thus appears that the parties will still being able to benefit from the positions and tests used by the Courts in their respective Circuits.

Legal representation

The proceedings will take place at the CCB offices, and the parties will not have to be present. The procedure will be written, but the CCB will be able to hear the parties or their counsels via “internet-based applications and other telecommunications facilities, except that, in cases in which physical or other nontestimonial evidence material to a proceeding” cannot be thus provided to the CCB, in which case the CCB “may make alternative arrangements for the submission of such evidence that do not prejudice any other party to the proceeding.”

The parties can be represented by an attorney or by a law student “who is qualified under applicable law governing representation by law students of parties in legal proceedings and who provides such representation on a pro bono basis.”

Procedure – the claim

Parties will initiate the proceeding by filing a claim with the CCB which will include a certified statement of material facts in support of the claim and a filing fee. The amount of the fee will be established by the Copyright Office, which indicated in its Small Claims Report (see note p. 140) that “[a] conforming amendment to section 708 may be advisable.”

The claim will be then reviewed by a Copyright Claims Attorney to ensure that the claim is compliant with Chapter 15 and other applicable regulations. The statute of limitations is three years after the claims accrued.

If the claim is compliant, the claimant is notified and can then serve it to the defendant. If it does not comply, the claimant will be permitted to file an amended claim withing thirty days after receiving the notice that the claim does not comply and will have to file an additional filing fee. If the claim is still not compliant, the claimant will be given a second opportunity to amend the claim not later than thirty days after the date of the second notice of non-compliance, without having, however, to pay another filing fee. If the claim is still not complaint, the proceeding will be dismissed without prejudice.

If the claim is against an online service provider storing infringing material or linking to it, the claim will have to state that the claimant has previously notified the service provider by a DMCA notice, and that the service provider has failed to expeditiously remove or disable access to the material after receiving such notice. The opposing parties can file a counter claim, which compliance is similarly reviewed by a Copyright Claims Attorney.

All claims can be dismissed without prejudice for unsuitability by the CCB if the CCB concludes that a necessary party or an essential witness has not been contacted, or if evidence or expert testimony is lacking, or if the claim involves an issue exceeding the competence scope of the CCB, or if the claimant becomes a member of a class action. A claim can also be voluntary dismissed, with no prejudice, by the claimant.

Even if a claim is compliant, the parties can choose any time to settle the case, either during a conference with a Copyright Claim Officer or by submitting a settlement proposal to the CCB.

If the claim proceeds, the CCB will have the power to make factual determinations, based upon a preponderance of the evidence.

If the respondent to the claim does not appear, or failed to pursue defending the claim, the CCB can issue its decision by default.

Permissible remedies

The CCB may award actual damages and profit. It can also award statutory damages, which cannot exceed $15,000 for each work infringed. Statutory damages cannot exceed $7,500 per work infringed or a total of $15,000 in any proceeding.

Effect of a CCB determination

If the CCB issues a final determination, including a default determination, it will preclude, solely with respect to the parties to such determination, the case to be litigated again before any court or tribunal, or before the CCB, of the claims and counterclaims asserted and determined by the CCB. However, parties will be able to litigate again, in a court of law or with the CCB, about the same facts, about claims or counterclaims which were either not previously asserted or which had not been determined by the CCB. Also, if the CCB determined ownership of a copyright for the purposes of resolving the case, such determination will not have any preclusive effect in any other action or proceeding before a court of law or a tribunal , including the CCB.

No legal precedent

Decisions by the CCB will not, however, be relied upon as legal precedent, and thus a CCB caselaw will not stem from the adjudicated claims. Following the cases is, however, likely to be enlightening, especially since a Copyright Claim Officer dissenting with a CCB decision will be able to file her or his dissent. This is particularly interesting as all final determinations of the CCB will be published on a website. Parties will be able to submit a written request for reconsideration or amendment of a final determination made by the CCB, if done no later than thirty days after the issuance of the final determination, “if the party identifies a clear error of law or fact material to the outcome, or a technical mistake.”

Possible negative effect of the CCB

While the CCB will make it easier and less costly for copyright holders to defend their rights, and this is certainly a positive effect, it may also lead to frivolous claims be filed, and so called “copyright-trolls” who engage in mass copyright litigation may find it an efficient tool to pursue their trade.

Positive effect of the CCB

Artists, writers, small businesses, and entrepreneurs will be able to defend their rights at a cost much lower than the costs of litigation in a federal court (the court which has jurisdiction over copyright cases). The Register of Copyrights will also establish regulations for claims seeking less than $5,000 (exclusive of attorneys’ fees and costs). In these cases, at least one Copyright Claim Officer will determine the outcome of the case and the determination will have the same effect as one issued by the entire CCB.

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

Filed Under: Copyright, Copyright Claims Board, Copyright Office · Tagged: Copyright, Copyright Claims Board, Copyright Office, Illegal Streaming

Oh, the Places You’ll Go! (Or Maybe Not)

January 11, 2021 · by marie-andree@maw-law.com ·

The US Court of Appeals for the Ninth Circuit held on December 18, 2020, that the Oh, the Places You’ll Go! comic book infringed the rights of the owner of the Oh, the Places You’ll Go! Dr Seuss book as it is not fair use.

The case is Dr. Seuss Enterprises, L.P. v. Comic Mix LLC.

Appellant is Dr. Seuss Enterprises (DSE) which holds the copyright to the works of Theodor S. Geisel, aka “Dr. Seuss,” including his final book, Oh, the Places You’ll Go! (Go!) and runs a product licensing and merchandising program. The Ninth Circuit noted that “Dr. Seuss” was the top licensed book brand in 2017, and a popular choice as graduation present.

Appellee Comic Mix developed and published the Oh, the Places You’ll Boldly Go! book (Boldly) which is a mash-up of the Dr. Seuss book and Star Trek, using elements from each of works. “Mash-up” refers to a work created from combining elements of others works but is not a legal term. If a mash-up uses elements protected by copyright, it may not be infringing if it is fair use. Comix Mix did not seek to obtain a license from DSE, nor did it obtain authorization to use elements of Go!.

DSE considered the mash-up to be infringing and sent several letters to Defendants. It also sent a DMCA takedown notice to Kickstarter, which then took down the fundraising page and blocked the pledged funds. DSE then filed a copyright and trademark infringement suit. Comic Mix had sought to fund the publication of the book by a Kickstart crowdfunding campaign.

Comic Mix moved to dismiss the trademark infringement claims arguing that use of the trademarks in the title, artistic style or fonts of the mash-up book is protected by the First Amendment under the Rogers v. Grimaldi test, which requires judges to examine if (1) the mark has artistic relevance and (2) if so, if use of the work is explicitly misleading. The District Court dismissed Plaintiff’s trademark claim, finding that that use was nominative fair use.

Comix Mix also argued that the mash-up was a parody and thus fair use. While a parody is fair use, fair use can be found by the courts even if the derivative work is not a parody. As defined by the Supreme Court in its 1994 Campbell case, a parody uses elements of the original work to comment, at least in part, on the author of the work. Fair use, in contrast, is determined by examining four fair use factors. The District Court did not find the mash-up to be a parody, but granted summary judgment, because the mash-up was fair use.

DSE appealed and a panel of Ninth Circuit held an hearing on April 27, 2020. DSE’s counsel argued that Boldly! is a “market substitute” for Go! and that it “would compete head-to-head in the graduation gift market.” Comic Mix’s counsel argued it was a parody. .

On December 18, 2020, the panel reversed the US District Court’s grant of summary judgment, finding that the use was not fair use.

The Four fair Use Factors

The first fair use factor, the purpose and character of the use, weighed against fair use. The use is commercial, and the mash-up is not a parody, as it does not critique or ridicule Dr. Seuss’s works. The panel did not find use of the original work to be otherwise transformative either, but that Boldly! “merely repackaged Go!.” There was no new purpose or character, according to the Ninth Circuit but Boldly! merely recontextualized the original expression. It “[did] not alter Go! with new expression, meaning or message” either, noting that “the world of Go! remains intact, ” and that the derivative work “was merely repackaged into a new format, ” noting further that the “Seussian world… is otherwise unchanged.”

The second fair use factor, the nature of the work, also weighed against fair use, as Go! is a creative and expressive work.

The third fair use factor, the amount and substantiality of the use, weighed “decisively” against fair use, as both quantitative and qualitative use were substantial. The Ninth Circuit found the copying to be “considerable,” around 60% of the Dr. Seuss’s book, including illustrations, and “took the heart of Dr. Seuss’s works, ”giving as example the use of the “highly imaginative and intricately drawn machine that can take the star-shaped status-symbol on and off the bellies of the Sneetches,” from the Sneetches book.

The fourth and final factor, the effect of the use on the potential market, also weighted against fair use. It is the proponent of the affirmative defense of fair use who has the burden of proof, and the Court did not find that Comic Mix had not proven there was no potential market harm. Comic Mix tried unsuccessfully to argue that fair use is not an affirmative defense and that it was thus DSE which had to prove potential market harm. Counsel for DSE argued during the April 2020 hearing that the District Court had incorrectly place the burden of proof of the fourth factor on DSE, a decision he found to be “inconsistent” with Campbell.

The Ninth Circuit noted that Comic Mix had “intentionally targeted and aimed to capitalize on the same graduation market as Go!” and that it had planned to release Bold! “in time for school graduations,” and that the unauthorized derivative work curtailed Go! ‘s potential derivative market, noting further that DSE “[had] already vetted and authorized multiple derivatives of Go! ”. DSE’s counsel reminded the panel during the April 2020 debate that the Supreme Court had emphasized in Campbell that licensing of derivatives is an important incentive to creation.[

Comic Mix’s counsel argued, curiously, that DSE did not have the right to control the “fair use market for transformative work,” but acknowledged that DSE was entitled to make transformative works. Indeed, this right is provided to DSE by Section 106 (2) of the Copyright Act. The Ninth Circuit noted that DSE “certainly has the right to “the artistic decision not to saturate those markets with variations of their original,” citing Castle Rock Ent., a case where the Second Circuit Court of Appeals stated that even though the owner of the copyright of the Seinfeld television series “[had] evidenced little if any interest in exploiting this market for derivative works based on Seinfeld, such as by creating and publishing Seinfeld trivia books… the copyright law must respect that creative and economic choice.”

Image is courtesy of Flickr user Sarah B Brooks under a CC BY 2.0 license.

Filed Under: Copyright, Fair Use · Tagged: Copyright, Dr. Seuss, Fair Use, Ninth Circuit, Star Trek

Oh, What a Case (9th Circ. 2020): Works Presented as Factual are Factual when Determining Scope of Copyright Protection

January 7, 2021 · by marie-andree@maw-law.com ·

The U.S. Court of appeals for the Ninth Circuit held on September 8, 2020, in Corbello v. Valli, that the musical Jersey Boys did not infringe plaintiff’s copyright in an autobiography of Tommy DeVito ghost written by Rex Woodward, as it had not copied any protectable elements of the book.

The case is interesting because the Court applied its newly adopted “Asserted Truths” doctrine, holding that an author representing a work as nonfiction cannot later claim that it was fictionalized and thus entitled to full copyright protection.

The facts

Tommy de Vito is one of the founding members of the Four Seasons, with Frankie Valli, Bob Gaudio and Nick Massi. The group produced several hits, Sherry, Big Girls Don’t Cry, Walk Like a Man and December, 1963 (Oh, What a Night) andwasinducted into the Rock and Roll Hall of Fame in 1990.

Rex Woodard ghostwrote Tommy DeVito’s autobiography in the late Eighties (the Work), using taped interviews of the musician and even portions of the F.B.I. file on the Four Seasons obtained under the Freedom of Information Act. The two men, however, did not find a publisher for the book.

Tommy DeVito executed an agreement in 1999 with Frankie Valli and Bob Gaudio, granting them the exclusive rights to his “biography” for the purpose of creating a musical based on the life and music of the Four Seasons. The rights were to revert to DeVito should Valli and Gaudio not exercise their rights within a defined period. In 2004, Valli and Gaudio granted the right to use the name and music of the band, the name and likeness of the musicians, and the story of their lives, to the producers of an upcoming show about the Four Seasons.

DeVito provided access to his unpublished autobiography to the writers of the show, which became the Jersey Boys musical (the Play). It ran on Broadway from 2005 to 2017 and was adapted into a movie in 2014. The musical and the movie tells the story of the four members of the Four Seasons.

Donna Corbello, Woodward’s surviving wife, tried again unsuccessfully to publish the book written by her husband after the show started to run, believing that its success might help sell the autobiography to a publisher.

She discovered then that DeVito had registered the copyright of the Work as sole author and she then filed a supplementary application with the U.S. Copyright Office to add her late husband as a coauthor and co-claimant of the Work. The certificate of registration was amended to list Woodward and DeVito as coauthors and co-claimants of the Work.

The (long) procedure

Corbello then sued DeVito for breach of contract and equitable accounting for the Work’s profits, later adding as defendants the producers of Jersey Boys and Valli and Gaudio, after learning that DeVito provided access to the book, and also sued for copyright infringement. Corbello claimed that the Play was a derivative work of the Book, owned exclusively by the co-authors and thus herself, as lawful successor of her husband.

The U.S. District Court of Nevada issued a summary judgment in 2011, declaring the book a joint work, “because of DeVito’s non-de minimis creative edits.” The Court reviewed the 1999 agreement, found it to be the grant of an exclusive license, which had lapsed, but not a transfer of copyright. Woodard was a co-owner, Corbello a successor in interest.

A panel of the U.S. Court of appeals for the Ninth Circuit reversed in part in 2015. Judge Sack noted in his concurring opinion that the matter would be greatly simplified if the district court would decide on remand that the work is not infringing. But the case nevertheless proceeded to trial after the District had only partially granted summary judgment on remand, holding that, while there was substantial similarity sufficient to avoid summary judgment at least with a thin copyright protection, most of the similarities were based on historical facts. The jury found in favor of Plaintiff. The District Court granted a motion for new trial, which was appealed. The 9^th Circuit then reviewed the case de novo.

The Ninth Circuit copyright infringement test

The Ninth Circuit’s substantial-similarity test contains an extrinsic and intrinsic component.

The extrinsic test requires a three-step analysis: (1) identifying similarities between the copyrighted work and the accused work, (2) disregarding similarities based on unprotectable material or authorized use; and (3) determining the scope of protection (“thick” or “thin”) to which the remainder is entitled “as a whole.”

The intrinsic test is conducted only if the extrinsic analysis succeeds. It examines an ordinary person’s subjective impressions of the similarities between two works.

In our case, the Court did not apply the intrinsic test because the extrinsic test failed. The Court applied the extrinsic test to elements of the Work which were “undisputedly factual”. The introduction of Tommy de Vito is about a historical character, the introduction of the Song Sherry is a historical fact, as are the introduction of the songs Big Girls Don’t Cry and Dawn, and as is the description of the induction into the Rock and Roll Hall of Fame. As for comparing the Four seasons and the Beatles, these were unprotectable ordinary phrases. These elements were therefore not protectable.

The new asserted facts doctrine

The Court then applied the extrinsic test to the claimed fictions represented to be facts and presented its new asserted-truth doctrine, stemming from the doctrine of copyright estoppel, under which once a plaintiff’s work has been held out to the public as factual, the author-plaintiff cannot claim that the book is actually fiction and thus entitled to the higher protection allowed by fictional works.

The Ninth Circuit did not believe that copyright estoppel is the right term for the doctrine and named it instead the “asserted truths” doctrine, citing Houts v. Universal City Studios:

“Estoppel” is not, in our view, an apt descriptor for the doctrine at work here. For one thing, … detrimental reliance is not an element of this doctrine, as “the [so- called] estoppel [is] created solely by plaintiff’s affirmative action and representation that the work was factual.”. For another, application of estoppel concepts often suggests that the party against whom estoppel is applied is in some way culpable….

“Rather than “copyright estoppel,” we will refer to this rule of copyright law as the “asserted truths” doctrine, because it is the author’s assertions within and concerning the work that the account contained in the book is truthful that trigger its application.”

In our case, the Work was presented as a reliable source of factual information about the Four Seasons, even presented as a “complete and truthful chronicle of the Four Seasons.” The Court noted that DeVito had provided a copy of it to Play’s writers when they were researching the history of the Four Seasons, and they viewed it as a factual source “even better than newspaper or magazine articles, because it was co-written by a participant in the events described.”

The Court specified that “the asserted truths doctrine applies not only to the narrative but also to dialogue reproduced in a historical nonfiction work represented to be entirely truthful” and “includes dialogue that an author has explicitly represented as being fully accurate, even if the author was unlikely to have recalled or been able to report the quotations exactly.”

Authors of biographies should thus be well advised to add a disclaimer to their work, claiming that the dialogues, while based on historical facts, are the fruits of the author‘s imagination.

This post was first published on the TTLF Newsletter on Transatlantic Antitrust and IPR Developments, Stanford-Vienna Transatlantic Technology Law Forum

Image courtesy of Flickr user Andy Roberts under a CC BY 2.0 license.

Filed Under: Copyright, TTLF Newsletter, Uncategorized · Tagged: Asserted Truth Doctrine, Copyright, Ninth Circuit

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

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