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The EU Court’s Nifty Legal Kraftwerk In Finally Defining “Pastiche”:
…And What That Could Mean on Both Sides of the Atlantic & the Galaxy
By James P. Flynn, Epstein Becker Green
In the beginning (defined as 1977), there was a two-second rhythm loop. Kraftwerk, the Düsseldorf electronic music pioneers whose synthesizer-driven soundscapes helped define an era, laid down a percussion riff in their track Metall auf Metall that would prove as durable as the metal referenced in the track title (Listen to the drum sequence that begins roughly at the 0:03 – 0:05 mark of the 1977 album version). Twenty years later, hip-hop producer Moses Pelham lifted that two-second loop, modified it ever so slightly, and played it as a continuous backbone beneath Sabrina Setlur’s 1997 rap track Nur mir. And with that, one of the longest-running copyright disputes in the history of intellectual property law was launched, a sort of legal Metall auf Metall loop of its own that has been repeating, with variations, ever since.
On April 14, 2026, after a journey through the German courts that would have exhausted the patience of a Stoic philosopher, the Grand Chamber of the Court of Justice of the European Union (CJEU) issued its long-awaited ruling in CG and YN v. Pelham GmbH and Others, Case C-590/23 (Pelham II). This is the second time this same fact pattern, featuring the same two-second sample, had arrived at the CJEU’s Luxembourg doorstep. The first visit, in Pelham I (Case C-476/17, decided July 29, 2019), had established that sampling requires permission unless the sample is acoustically unrecognizable. Now, in Pelham II, the Court was asked to define “pastiche,” one of the most enigmatic concepts in all of (European) copyright law.
The answer the Court gave is that pastiche requires a recognizable “artistic or creative dialogue” with the borrowed work, but need not be humorous, satirical, or even expressly intended as such. That standard is worth pausing over. Not only does it matter enormously to the music industry, to digital creators, to remix culture, and to every EU Member State that has recently been required to implement the pastiche exception, but it also invites a transatlantic comparison with how American copyright law handles the closely-related question of what kinds of homage, tribute, and creative borrowing deserve protection. And on that comparison, as this author wrote here in 2017 when musing about the Paramount Pictures Corp. v. Axanar Productions, Inc. litigation, the two systems reach strikingly different destinations, even if they start from a roughly similar point.
To appreciate the significance of Pelham II, it helps to understand the procedural marathon that produced it, as described by several industry followers. The case traveled, in no particular hurry, through the Hamburg Regional Court (which sided with Kraftwerk in 2004), the Hamburg Higher Regional Court (which dismissed Pelham’s appeal in 2006), Germany’s Federal Court of Justice or Bundesgerichtshof (the BGH, which sent the case back down in 2008), back to the Hamburg Higher Regional Court (which ruled against Pelham again in 2011), back to the BGH (which again dismissed Pelham in 2012), then up to Germany’s Federal Constitutional Court, the Bundesverfassungsgericht, which upended earlier rulings in 2016 on constitutional freedom-of-the-arts grounds, back to the BGH for a third time (which made the first referral to the CJEU in 2017), to Luxembourg for Pelham I in 2019, back to the BGH again in 2020, down once more to the Hamburg Higher Regional Court (which ruled in Pelham’s favor on the pastiche issue in April 2022), and then, inevitably, back to the BGH for a fourth bite at the apple, which finally referred the pastiche question to Luxembourg in September 2023. If this were a vinyl record, it would have been played to scratches long ago from going round after round.
The key turning point in that last phase was Germany’s 2021 enactment of §51a of the Urheberrechtsgesetz (UrhG), which Pelham II later translates as saying at para. 7 that “The reproduction, distribution and communication to the public of a published work shall be authorised for the purpose of caricature, parody or pastiche. The authorisation referred to in the first sentence shall cover the use of an image or other reproduction of the work used, even if that image or other reproduction is itself protected by copyright or a related right.” That law responded to both the CJEU’s Pelham I ruling and obligations under Article 17(7) of the EU’s Digital Single Market Directive. Under that law, one could, for the first time, reproduce works expressly “for the purpose of caricature, parody or pastiche.” The Hamburg Higher Regional Court, on remand, found that Pelham’s sampling after June 7, 2021 was covered as “pastiche” and therefore non-infringing. Kraftwerk’s successors appealed. The BGH, uncertain what “pastiche” actually meant, referred two precise questions to the CJEU, as recounted at Pelham II, paras. 27 and 30:
(1) whether the rule defining the limitations of copyright and related rights as regards the use of a work or other subject matter for the purpose of pastiche, within the meaning of Article 5(3)(k) of Directive 2001/29, has a catch-all nature (Auffangtatbestand) that covers in any event artistic engagement with an existing work or other object of reference, including in the form of sampling, or whether the concept of ‘pastiche’ is subject to restrictive criteria such as a requirement of humour, stylistic imitation or tribute[?]
(2) whether a finding that a work or other subject matter protected by copyright is used ‘for the purpose’ of pastiche presupposes an intention on the part of the user to use that protected work or subject matter for that purpose[?]
The CJEU’s Grand Chamber answered both questions with what might be called a calibrated “no.” Pelham II at para. 32-58 and 59-62. Pastiche is not a catch-all for any kind of borrowing, but neither does it require humor, explicit tribute, or stylistic mimicry in the narrow sense. And intent is not required; but recognizability is.
Let’s pause here to note a small linguistic fact. “Pastiche,” as this author observed when answering his own rhetorical “So what is pastiche?” question back in 2017, is actually a French cognate of the Italian noun pasticcio. That word describes a pâté or pie-filling assembled from varied ingredients. Like a well-made pasticcio, the legal concept has always contained more ingredients than any single recipe might suggest, and the CJEU proved well aware of this.
The Pelham II Court began its definitional work by rejecting the tempting simplicity of a catch-all reading. If “pastiche” swallowed all forms of artistic borrowing, it would render the neighboring concepts of “parody” and “caricature” in Article 5(3)(k) of the InfoSoc Directive entirely redundant, which is a classic interpretive sin under EU (and indeed, often, US) law. The legislative redundancy problem cuts both ways, however: if pastiche were simply a synonym for parody (requiring, as parody does since Deckmyn v. Vandersteen, Case C-201/13, some element of mockery or humor), there would be no point having the word at all.
Instead, the Pelham II Court settled on a purposeful middle path. Acknowledging that the term “pastiche” is “rarely used in everyday language” but is “commonly used to designate a creation in a style which imitates that of another work, artist or works belonging to the same artistic movement,” the Grand Chamber in Pelham II (in Ruling, para.1 at page 15), defined pastiche as:
“[C]reations which evoke one or more existing works, while being noticeably different from them, and which use, including by means of sampling, some of those works’ characteristic elements protected by copyright, in order to engage with those works in an artistic or creative dialogue that is recognisable as such and that can take different forms, in particular the form of an overt stylistic imitation of those works, of a tribute to them or of humorous or critical engagement with them.”
Three elements are worth isolating in that definition:
This last dialogue test is where the rubber meets the road. Forms that qualify include tribute, stylistic imitation, and humorous or critical engagement. But the Court was careful not to make any single form a prerequisite. The dialogue simply has to be there, and it has to be recognizable.
On the second question (whether intent is necessary?), the Court held that no, it is not. The proper test is objective: whether “a person familiar with the existing work from which the elements have been borrowed” would recognize the use as pastiche. This is a significant practical point for artists and producers. It means that a creator who borrows characteristic elements and engages in a recognizable dialogue with an original work does not lose the protection of the pastiche exception merely because she did not have the label “pastiche” affixed in her mind when she created the new work. The law evaluates the result, not the creator’s mental taxonomy.
The Court also devoted considerable attention to the balancing framework, noting that the pastiche exception must be applied consistently with the three-step test in Article 5(5) of the InfoSoc Directive. It applies only in “certain special cases” that do not unreasonably prejudice the rightholder. This is not a free pass for wholesale appropriation. The “noticeably different” requirement, the “recognisable dialogue” standard, and the three-step filter together mean that a sampler cannot simply loop any segment of someone else’s phonogram, call it a dialogue, and walk away free.
In January 2017, this author presented a thought experiment about the Star-Trek-fan-fiction-inspired Axanar litigation: what if the defendant fan-filmmakers who created a faithful, reverential, deeply researched prequel to the original Star Trek series had been able to invoke a “pastiche” fair dealing defense (as might have been available in the UK or under the EU’s InfoSoc Directive) rather than being stuck with the narrower American parody-based fair use analysis? The answer, this author suggested, was that they might have fared considerably better.
That thought experiment has, with the Grand Chamber’s April 2026 ruling, become considerably more concrete.
American copyright law protects parody as fair use under 17 U.S.C. § 107, but the key requirement, as the Supreme Court established in Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994), is that the parody must target the original work. In other words, it must criticize or comment upon the work it borrows. But what does one do with a loving tribute, a faithful homage, or a reverential imitation? These do not qualify. As the Second Circuit held in Castle Rock Entertainment v. Carol Publishing Group, 150 F.3d 132, 145 (2d Cir. 1998), if a work “pays homage” to the original rather than critiquing it, it cannot qualify as parody. The Sixth Circuit agreed in Bridgeport Music, Inc. v. UMG Recordings, Inc., 585 F.3d 267 (6th Cir. 2009), holding that a jury instruction stating that “an homage or tribute” is not fair use accurately states the law.
The Axanar case demonstrated this principle with particular clarity. Alec Peters and the Axanar team had set out to create a faithful, independent Star Trek film using the copyrighted source material “as a bible.”(at page 7). They stayed true to Star Trek canon “down to excruciating details.” (at page 7). The court found that “Star Trek fans love Defendants’ faithfulness to the Star Trek canon,” (at page 7) and that statement of fan approval effectively sealed their fate under U.S. copyright law. The more faithful the homage, the less it criticizes, and the less it criticizes, the less it can qualify as parody. Faithfulness, in the American framework, is its own undoing.
Now consider how the same set of facts might be analyzed under the CJEU’s pastiche framework from Pelham II. The Axanar Works clearly evoke the original Star Trek universe while being noticeably different from it. They are new films, with new scripts, new performances, and (at least in the prequel premise) a new narrative. They use characteristic, copyright-protected elements of the Star Trek works, like Klingons, Vulcans, the character Garth of Izar, starship designs, the visual language of the universe Gene Roddenberry built. And, critically, they engage in an artistic dialogue with the original works that is recognizable as such, not only to a person familiar with the original works, but to virtually every viewer. The dialogue is, if anything, louder and more explicit than in most pastiches (and certainly more express than anything lasting only two seconds): the Axanar creators expressly identified themselves as working within, and paying tribute to, the creative universe they had grown up loving.
Under the CJEU’s new framework, such a recognizable, reverential, differentiating creative dialogue would seem to fall within the definition of “pastiche.” The works evoke; they are noticeably different; they engage dialogically in a manner a familiar audience would recognize. That they do so reverentially rather than mockingly would be, under Pelham II, beside the point. The Pelham II Court expressly includes “tribute” as a qualifying form of the creative dialogue.
In the American universe, that tribute was the fatal flaw. In the European one articulated by the Grand Chamber, it may be the qualifying feature. As Mr. Spock might observe, the logic of the two systems is internally consistent, but their premises diverge at a foundational level.
One of the features of the Pelham II ruling that deserves particular attention is the Court’s treatment of what we might call the “vocabulary problem.” As the 2017 Axanar article noted, a Lexis search of American federal cases at that time found precisely one decision that mentioned both the word “pastiche” and the phrase “fair use,” Disney Enters. v. Hotfile Corp., decided by the S.D. Fla. in 2013, and there the word referred to an assortment of collected evidence rather than a legal defense. Repeating that search today, we find only more case, Graham v. Prince, a 2023 SDNY decision that uses both terms in the fair use analysis:
Defendant Richard Prince is a well-known contemporary appropriation artist. Appropriation art, as one expert describes it, involves a “radical transformation of the original image or text” using strategies such as aesthetic alteration, conversion of authorship, recontextualization, cultural commentary, and pastiche or parody.
***
In both lawsuits, defendants filed motions to dismiss asserting the defense of fair use. On July 18, 2017, this Court denied defendants’ motion to dismiss in Graham, finding that “this is not a case in which the open-ended and context-sensitive fair use inquiry can be properly applied at the motion to dismiss stage.” Graham v. Prince, 265 F. Supp. 3d 366, 379 (S.D.N.Y. 2017). The Court concluded that not one of the four fair use factors favored defendants. Id. at 380. With an eye towards the inevitable summary judgment motions, the Court reviewed the case law and suggested that specific evidence, such as the opinions of art critics and collectors, could aid the Court’s summary judgment analysis. See id. at 382, 385.
Though “fair use” was referenced in the Graham opinion 75 more times beyond the three references in the above quote, “pastiche” was mentioned only that once. Those two fleeting refences in separate cases and contexts hardly give “pastiche” a solid foundation in American fair use jurisprudence. The statute does not use it. The courts have not developed it. The word, for U.S. copyright purposes, might as well be Klingon.
In Europe, by contrast, the concept is now legislatively embedded and judicially defined. Article 5(3)(k) of the InfoSoc Directive has always listed “caricature, parody or pastiche” as optional exceptions, and the DSM Directive made the trio mandatory for user-generated content on content-sharing platforms under its Article 17(7). EU Member States have had to grapple with the concept. Germany enacted §51a UrhG in 2021. The UK embedded it in Section 30A of the Copyright, Designs and Patents Act 1988 before Brexit removed it from the EU legal framework but not from the statute books.
What the Pelham II Court has now provided is the first authoritative EU-level definition of the term. Prior to Pelham II, commentators noted that “pastiche” had been interpreted differently in different Member State courts and legal traditions, narrowly in some, expansively in others. The Advocate General Szpunar’s Opinion in Pelham I in 2018 had flagged (at para. 70) the concept as potentially applicable to sampling while expressing reservations, and Advocate General Emiliou’s Opinion of June 2025 in Pelham II had pushed the Court (at paras. 81-91, 133) toward the definition it ultimately adopted, while also making the provocative suggestion that the InfoSoc Directive as a whole was too restrictive in the area of artistic reuse to be compatible with the EU Charter’s guarantee of freedom of the arts.
The Pelham II Court’s judgment did not go quite that far. But it built the definition firmly around the fundamental rights framework, balancing copyright protection against artistic freedom in a manner that U.S. law does not formally undertake in its fair use calculus. As one market participant and commentator noted, “The European Court of Justice has helped to clarify the urgently needed definition of the concept of pastiche, thereby seeking to strike a balance between artistic freedom and the protection of intellectual property, …This is also significant because the exception introduced in Germany in 2021 has so far been associated with considerable legal uncertainty.”
It is also worth noting what the Pelham II Court’s definition does not require. It does not require that the new work itself constitute an “original” copyright-protected work (That view endorsed by the European Copyright Society in its own amicus-style opinion filed in connection with Pelham II). It does not require that the engagement with the original be overt, annotated, or explicitly acknowledged. It does not require any particular artistic ambition or cultural prestige. A loop of two seconds, embedded in a hip-hop track, can qualify as long as the dialogue is there and it is recognizable to the right audience.
The “recognisable as such” requirement is the Pelham II Court’s most important limiting principle, and it deserves careful examination. It is not enough that someone might perceive a creative dialogue with the original; the recognizability must attach to “a person familiar with the existing work.” This is an objective standard calibrated to the relevant audience, whether that be the community of listeners, viewers, or readers who know both the source and the borrowing.
This audience-specific standard will generate interesting questions in practice. Consider the Metall auf Metall loop at the center of Pelham II itself. Kraftwerk’s music, though globally influential, is not universally known, and guessing the song on only two seconds seems like some bizarre revenge fantasy from the classic Bid-A-Note segment of Name That Tune. Would a mainstream listener of early-1990s German rap recognize the Kraftwerk (two-second) loop in Nur mir? Perhaps not. But, so the argument goes, a person familiar with the Kraftwerk source material would recognize it. That, says the Court, is sufficient. This is consistent with how the Court had approached “parody” in Deckmyn: the test is whether a parodic character “may reasonably be perceived,” not whether every listener perceives it. (I remain skeptical that the two second loop, even if repeated, could really be a “dialogue” between the works allowing for such perception, but who am I to judge?).
The recognizability requirement also connects in an interesting way to the “noticeably different” requirement. For a use to qualify as pastiche, the new work must both evoke and differ from the original. This dual demand creates a sort of creative tension in that the new work must be distinct enough to stand apart, but connected enough for the dialogue to be apparent. A sampling that so thoroughly transforms the original that no trace remains is already covered by Pelham I‘s “unrecognizable to the ear” safe harbor, such that there is no infringement there in the first place. The pastiche exception, by contrast, covers samples that are recognizable, but that are used in a recognizably dialogic way in the new work. It is, in other words, the zone of recognizable-but-differentiated borrowing that the exception is designed to occupy.
The Axanar works would seemingly easily satisfy the recognizability test. Every element borrowed from the Star Trek canon (from the Klingon characters, to the Starfleet setting, to the Garth of Izar storyline, to the visual design language) was not merely familiar to the target audience; it was the raison d’être of the films. These works were made for Star Trek fans to recognize precisely those borrowed elements. The challenge, under European law, would not be whether the dialogue is recognizable (it manifestly is) but whether the resulting work is “noticeably different” from the original and whether the engagement constitutes the kind of “artistic or creative dialogue” the Court envisioned.
On both counts, the argument for the Axanar works seems more plausible under European law than it ever was under U.S. law’s parody rubric. These are not, after all, mere copies of Star Trek episodes. They are new stories, told in a new register, occupying a different narrative. They are a prequel that expands the universe rather than reproducing it. The tribute and the transformation coexist.
There is a deeper structural question lurking behind the comparison between Pelham II and the American approach. In the United States, the fair use defense under 17 U.S.C. § 107 is famously open-textured, with four factors, none dispositive, all weighed in light of the ultimate question of whether the use serves or harms copyright’s underlying purposes. The system is flexible but unpredictable; it produces different results in different circuits, and its treatment of transformative use has shifted considerably since Campbell. The Supreme Court’s recent intervention in Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, 143 S. Ct. 1258 (2023), has recalibrated the transformativeness analysis in ways that arguably narrow fair use for commercial uses even of genuinely new creative work.
The European system, by contrast, operates with a closed list of permitted exceptions. Article 5 of the InfoSoc Directive is exhaustive and Member States cannot add new exceptions beyond what the Directive provides. That rigidity is both a strength and a weakness. On one hand, it provides certainty: if your use fits within one of the listed exceptions, you are protected. On the other hand, it means that creative uses not anticipated by the list have no safe harbor, no matter how beneficial to the public interest. The pastiche exception was in an historically underdeveloped state; the Axanar article noted in 2017 that it had almost no case law anywhere in Europe. This meant that an entire category of legitimate creative borrowing was essentially unprotected in practical terms until courts began defining the term.
The Pelham II Grand Chamber has now, supposedly, filled that gap, and done so in a manner that is, at least in the Court’s own view, calibrated to balance copyright protection against the EU Charter’s guarantee of freedom of the arts. Advocate General Emiliou had gone further, suggesting that the InfoSoc Directive itself may be constitutionally infirm in its failure to accommodate sufficiently the artistic uses of protected material.
For American practitioners watching this development, the parallel is the ongoing debate over whether the fair use framework that has developed case by case over decades has reached its limits as a mechanism for protecting genuinely transformative and creative uses of copyrighted works. The Warhol decision’s narrowing of transformativeness for commercial purposes has already produced commentary calling for legislative attention. And Pelham II‘s pastiche framework protects tribute and dialogue even in commercial creative contexts. But that represents a different choice, made by a different legal system, that deserves serious attention in that debate.
There is a moment in the original Star Trek series episode “Mirror, Mirror” when Captain Kirk finds himself transported to a parallel universe where the Federation is an empire and every familiar character has a darker counterpart. The moment of recognition involves knowing the face but finding a different soul behind it. That is precisely what the CJEU’s pastiche definition is designed to protect: the creative work that is recognizably connected to an original, yet noticeably, meaningfully different. In the US universe, Axanar could not prevail in federal court in California. In the European parallel universe, it might have won. That is not merely a hypothetical of academic interest. It tells us something important about the values embedded in copyright law on each side of the Atlantic, and about the choices each system has made in balancing the rights of creators and the interests of the creative public.
The Metall auf Metall loop that Moses Pelham borrowed in 1997 was two seconds long. The litigation it spawned has now consumed nearly three decades, twelve judicial opinions in Germany, two CJEU Grand Chamber judgments, and the professional attention of enough intellectual property lawyers to fill a small conservatory. The case will now return, yet again, to the BGH, which will apply the CJEU’s definition of pastiche to the specific facts and determine whether Nur mir qualifies.
What the Court has given us in Pelham II is a definition of pastiche that is neither a free pass nor a dead letter. It requires real creative dialogue that is recognizable, differentiated and dialogic. It protects tribute, stylistic imitation, and creative homage alongside more critical or humorous forms. It evaluates the result objectively rather than searching for the creator’s subjective intention. And it does all of this in explicit service of a balance between copyright protection and the freedom of the arts that the EU Charter demands.
That is a richer toolkit than the American parody defense offers, and it points toward a different and seemingly more creatively generous set of answers to the recurring question of when borrowing becomes infringement and when it becomes art. The Axanar crews and the independent filmmakers (and the hip-hop producers and the meme-makers and the remix artists) of the world would do well to follow the next chapter in the Metall auf Metall saga, as the BGH applies Pelham II‘s framework to the facts that started the whole loop playing.
As for Kraftwerk and Pelham, they may yet have one more rendezvous in Hamburg. The loop, it seems, is still playing, but the legal backdrop has changed. “If change is inevitable, predictable, beneficial, doesn’t logic demand that you be a part of it?” As Mr. Spock suggests implicitly in “Mirror, Mirror” and many other places in the original series expressly such as “Space Seed,” it is not logical to remain static in the face new evidence because “[i]nsufficient facts always invite danger.” And Pelham II is, at a minimum, very new evidence indeed.
The Theory of Dilution Crosses the Pond
By Gregory J. Krabacher, Epstein Becker Green.
The origin story for the cause of action of “dilution” in the United States begins with Frank Schechter’s 1927 Harvard Law Review article, Rational Basis of Trademark Protection. [i] Indeed the U.S. Supreme Court credits Mr. Schechter’s work as the “seminal discussion,” noting that “[u]nlike traditional infringement law, the prohibitions against trademark dilution are not the product of common-law development, and are not motivated by an interest in protecting consumers.”[ii]
Mr. Schechter based his theories, among other cases, on his study of the German Odol case.[iii] In that case, the court found harm to the selling power of a well-known brand for mouthwash through the use by another party for steel. Schechter notes in passing that if U.S. courts eventually adopt Odol’s holding, “it will not be the first time that they have gone to continental armories for the weapons with which to combat the commercial buccaneer.”[iv]
A belief that traditional U.S. trademark law principles and “orthodox definition[s]” require updating to better address the practical realities and complexities of modern commerce appears to explain Mr. Schechter’s interest in Odol and similar cases.[v] According to Mr. Schechter, the “vital” distinction between the simpler commerce of say, 400 years ago, and “now” is that trademarks no longer merely designate “the origin or ownership of the goods to which it is affixed”, but rather, designate that goods “bearing the same mark[] emanate from a single source.”[vi]
Moreover, in this modern age, “the trademark is not merely the symbol of good will but often the most effective agent for the creation of good will, imprinting upon the public mind an anonymous and impersonal guaranty of satisfaction, creating a desire for further satisfactions. The mark actually sells the goods. And, self-evidently, the more distinctive the mark, the more effective is its selling power.”[vii] Such distinctive marks, says Schechter, deserve protection from the “subtle and refined” “trademark pirates” of the modern age who “proceed circumspectly, by suggestion and approximation, rather than by direct and exact duplication of their victims’ wares and marks.”[viii]
And so, the rationale proceeds, the law must protect such distinctive marks even in cases where the goods of the parties do not compete and there is no diversion of sales. For example, in cases such as Kodak (cameras and bicycles), Aunt Jemima’s (pancake flour and syrup), Vogue (fashion magazines and hats), Rolls-Royce (automobiles and radio parts) and Beech-Nut (food products and cigarettes), Mr. Schechter postulates:
The real injury in all such cases can only be gauged in the light of what has been said concerning the function of a trademark. It is the gradual whittling away or dispersion of the identity and hold upon the public mind of the mark or name by its use upon non-competing goods. The more distinctive or unique the mark, the deeper is its impress upon the public consciousness, and the greater its need for protection against vitiation or dissociation from the particular product in connection with which it has been used.[ix]
It would take time, but Frank Schechter’s ideas would spread, both geographically and substantively. Some 20 years after the article, Massachusetts enacted the first state statute protecting trademarks from dilution.[x] As noted by the U.S. Supreme Court, this state statute went beyond Odol’s sole concern for the harm to selling power (what Schechter referred to as “whittling away” and what we today refer to as “blurring”), but also included “injury to business reputation”, i.e. “tarnishment.”[xi] Following in Massachusetts’s footsteps, at least 25 States passed similar laws in the decades before the Federal Trademark Dilution Action (FTDA) was enacted in 1995.[xii]
Before examining the 1995 FTDA and its successor, the 2005 Federal Dilution Revision Act (FDRA), we pause to observe, as does Professor McCarthy, that the U.S. protection of brand distinctiveness diverges in at least one key respect from similar European laws. European Union law explicitly prohibits both dilution and free-riding, while federal U.S. anti-dilution law solely prohibits the likelihood of dilutive injury.[xiii]
The difference between the two is that free-riding is shown by mere association between two marks.[xiv] Dilution, on the other hand, requires association that further impairs the distinctiveness (blurring) or harms the reputation (tarnishment) of the famous mark.[xv] Therefore, and as discussed below, when U.S. courts find a likelihood of dilution based on a finding of association, alone, they err by ignoring the statutory requirement of impairment/harm and are essentially adopting the European standard for free-riding.[xvi]
Moseleying Along to a Federal Standard
Moseley Act One: A New Hope for Smut
The first U.S. federal dilution statute enacted in 1995 (which, again, was known as FTDA), defined the term “dilution” (the statute didn’t separate out blurring from tarnishment) as “the lessening of the capacity of a famous mark to identify and distinguish goods or services.”[xvii]
In its review of the FTDA, the U.S. Supreme Court in Moseley v. V Secret Catalogue, Inc., focused on the particular text found in 15 U.S.C. § 1125(c)(1)—“causes dilution of the distinctive quality” of the famous mark—to unambiguously require a showing of actual dilution, rather than a likelihood of dilution.[xviii] Although actual dilution was required, the Court clarified that the standard for injunctive relief under the FTDA did not require, as the Fourth Circuit had found in the Ringling Bros. case, proof of the consequences of dilution such as actual loss of sales or profits.[xix] So actual (not a mere likelihood) of dilution must be shown but not necessarily proof of financial harm. Does association establish the necessary showing?
This is where it gets interesting for our consideration of harm. The Supreme Court proceeded to point out the distinction between mere association and the further showing necessary for actionable dilution.[xx] And it did so in some depth:
As the facts of [the Ringling Bros] case demonstrate, such mental association will not necessarily reduce the capacity of the famous mark to identify the goods of its owner, the statutory requirement for dilution under the FTDA. For even though Utah drivers may be reminded of the circus when they see a license plate referring to the “greatest snow on earth,” it by no means follows that they will associate “the greatest show on earth” with skiing or snow sports, or associate it less strongly or exclusively with the circus. “Blurring” is not a necessary consequence of mental association. (Nor, for that matter, is “tarnishing.”)[xxi]
Applying this standard on the record before it, the Supreme Court noted that while there was evidence of association, there was no evidence of tarnishment caused by this association:
The record in this case establishes that an army officer who saw the advertisement of the opening of a store named “Victor’s Secret” did make the mental association with “Victoria’s Secret,” but it also shows that he did not therefore form any different impression of the store that his wife and daughter had patronized. There is a complete absence of evidence of any lessening of the capacity of the VICTORIA’S SECRET mark to identify and distinguish goods or services sold in Victoria’s Secret stores or advertised in its catalogs. The officer was offended by the ad, but it did not change his conception of Victoria’s Secret. His offense was directed entirely at petitioners, not at respondents. Moreover, the expert retained by respondents had nothing to say about the impact of petitioners’ name on the strength of respondents’ mark.[xxii]
Mosely Act 2: Congress Strikes Back
Following the Supreme Court’s decision in Moseley, Congress amended the Laham Act again with the 2006 Trademark Dilution Revision Act (TDRA) to further revise the dilution standard. Among other changes, the 2006 TDRA now says “likely to cause dilution by blurring or dilution by tarnishment of the famous mark” in place of the 1995 FTDA’s phrase “causes dilution of the distinctive quality.”[xxiii]
The current statute defines these two forms of dilution as follows, both of which include an element beyond mere association by further requiring either that such association impairs or harms the famous mark:
(B) For purposes of paragraph (1), “dilution by blurring” is association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark. [setting forth six statutory factors]***
(C) For purposes of paragraph (1), “dilution by tarnishment” is association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark. [no statutory factors].[xxiv]
So, following the FTDA’s amendments, the text appears to require a proponent of a dilution claim to show there is a likelihood of two elements: (1) association between the famous mark and the junior mark and (2) impairment/harm caused by the association.
Mosely Act 3: Return of the European Free-Riding Standard for Dilution
The Sixth Circuit, in a later appeal in the same Moseley case, interpreted the new law in view of its legislative history, noting Congress’s intention to lessen the burden on proponents, noting:
The House Judiciary Committee Report states the purpose of the new 2006 legislation as follows:
The Moseley standard creates an undue burden for trademark holders who contest diluting uses and should be revised.
….
The new language in the legislation [provides] … specifically that the standard for proving a dilution claim is “likelihood of dilution” and that both dilution by blurring and dilution by tarnishment are actionable.[xxv]
From this legislative history, the Sixth Circuit made an inference. Not only did Congress mean to reduce the burden of proof from “actual” to “likelihood” but, per the Court, it actually intended to remove plaintiff’s burden of going forward in certain cases by presuming harm to reputation upon a showing of likelihood of association alone. As stated by the Court of Appeals: “In the new law Congress rejected the Court’s view that a simple ‘likelihood’ of an association in the consumer’s mind of the Victoria’s Secret mark with the sexually-oriented videos and toys of “Victor’s Secret” is insufficient for liability.[xxvi]
The Court of Appeals went still further. Logically, if a “likelihood of tarnishment” can be presumed upon a showing of association in connection with certain products, then, the Court reasoned, this implies more than a lessoning (nay elimination) of Plaintiff’s burden. It implies a reversal of the burden from the party asserting a dilution claim to the party defending it. The Court reasoned:
The burden-of-proof problem, the developing case law, and the Restatement (Third) of Trademarks in § 25 (particularly subsection g) should now be interpreted, we think, to create a kind of rebuttable presumption, or at least a very strong inference, that a new mark used to sell sex-related products is likely to tarnish a famous mark if there is a clear semantic association between the two. This res ipsa loquitur—like effect is not conclusive but places on the owner of the new mark the burden of coming forward with evidence that there is no likelihood or probability of tarnishment. The evidence could be in the form of expert testimony or surveys or polls or customer testimony.[xxvii]
Some have observed that the Sixth Circuit’s standard in Moseley appears to be in tension with how other Courts of Appeal have interpreted the TDRA. As noted by Circuit Judge Karen Nelson Moore, in her dissent of the Sixth Circuit’s Mosely decision:
As the Second Circuit recently noted in Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97 (2d Cir.2009):
That a consumer may associate a negative-sounding junior mark with a famous mark says little of whether the consumer views the junior mark as harming the reputation of the famous mark. The more relevant question, for purposes of tarnishment, would have been how a hypothetical coffee [with a negative-sounding name] would affect the positive impressions about the coffee sold by Starbucks.
***In fact, when reviewing the exact same evidentiary record, the Supreme Court explicitly noted that Victoria’s Secret’s offer of proof included no evidence that “Victor’s Little Secret” affected Baker’s positive impressions of Victoria’s Secret…[xxviii]
While there are plenty of notable commentators who strongly disagree with Mosely for a variety of reasons[xxix] and while the pace of adoption of the Sixth Circuit’s burden shifting standard has not been especially brisk nation-wide in the twenty years since it was decided, the decision remains the law of the land within the Sixth Circuit.[xxx] Moreover, and perhaps somewhat surprisingly to some, no reported decision appears to outright criticize the holding.
What’s a Brand to Do?
Outside of the Sixth Circuit, and for cases involving products unrelated to sex, owners of famous brands may feel it is a little risky to rely on the Mosely presumption and burden shifting. Even for a case on all fours within the Circuit, parties may be looking to bolster their claims with support of likelihood of tarnishment beyond mere association by also demonstrating a likelihood of harm to reputation caused by the association.
Why, you may ask? While it may seem “self-evident” to some that harm to the reputation of a mark would necessarily flow from its association with sex-related products, the U.S. Supreme Court, as noted above, did not find it so obvious. Moreover, those who have studied the question have struggled to find real world evidence of the “obvious” harm caused. Indeed, to the extent the association causes a change in consumer perception of a brand, it may just as easily point the other way. For example, in one recent study carried out by Jake Linford et. al., the investigators report the following:
Our studies produced surprising results, many of which may prove useful to scholars, litigants, courts, and policy makers examining the tarnishment doctrine. In both studies, and contrary to the underpinnings of the tarnishment doctrine, associating well-known marketplace brands with sex- and drug-related messaging produced not a tarnishment effect, but a small yet reliable burnishment effect. Our participants meaningfully and statistically preferred our target brands more when they were exposed to tarnishing stimuli than when they were not. Moreover, exposure to the test stimuli images counterintuitively led participants to perceive those brands as stronger, which influenced their preference for the brands in the tarnishment condition.[xxxi]
So, if a brand owner is not content to rest on association alone in a tarnishment case, and expensive surveys carry their own risks of backfiring, what options do they have? A recent decision in another famous dilution case may suggest a relatively safer and cost-effective option. There, the proponent seemed to follow a middle way – providing at least some basis to support a showing of harm without resorting to an expensive survey.
The case to which I refer is the latest decision in the saga that is the “Bad Spaniels” litigation between VIP Products and Jack Daniel’s. As factual set up, Justice Kagan, on this case’s recent trip up to the Supreme Court, succinctly quipped: “This case is about dog toys and whiskey, two items seldom appearing in the same sentence.”[xxxii]
Our interest here in the case is the method by which Jack Daniel’s supported its claim of tarnishmet with evidence of a likelihood of harm to reputation. It did so by using an expert but not for the usual purpose of conducting an expensive survey. Instead, Jack Daniels’ expert based his opinion on general literature and a methodology with a fancy title: “The Associative Network Model (“ANM”)”, which the District Court found “has been empirically tested and verified numerous times since the 1970’s.”[xxxiii] No survey questions or participant selection to attack. Just some “reliable” studies interpreted by a reliable guy to explain why associating dog poop with a food product is likely to trigger disgust in the minds of the consumer and thereby harm the reputation of the food product.
VIP attempted to challenge the expert’s report as “insufficient to show tarnishment because it merely amounts to Dr. Simonson’s subjective impression of the tarnishing effect of “Bad Spaniels.”[xxxiv] Furthermore, VIP argued that the expert’s conclusions are unsupported because he conducted no surveys or focus groups and failed to account for the fact that “Bad Spaniels” is a parody product.[xxxv]
This Court was having none of it, explaining:
VIP misconstrues and misstates the testimony provided by Dr. Simonson. In reaching his conclusions, Dr. Simonson evaluated consumer psychology research showing that the association of food of beverage with defecation generates disgust in the mind of the consumer. Based on well-documented research suggesting that such feces-related associations lead to negative consumer associations with food and drink products, Dr. Simonson concluded that “Bad Spaniels” was likely to create negative associations of Jack Daniel’s whiskey with feces and thereby undermine the positive associations that Jack Daniel’s has created with respect to its whiskey. (Doc. 234 at 172–74, 200). In weighing the testimony and evidence supplied by the parties’ experts, the Court has credited and given prevailing weight to Dr. Simonson’s conclusion that “Bad Spaniels” is likely to tarnish Jack Daniel’s trademarks by creating negative associations of Jack Daniel’s products with dog feces.[xxxvi]
Therefore, on the strength of an admittedly impressive expert employing the impressive sounding “The Associative Network Model” by taking general literature and applying these papers to the particular facts of this case, the Court found “Jack Daniel’s has demonstrated by a preponderance of the evidence all of the elements necessary for a claim of dilution by tarnishment: fame, similarity, and reputational harm, caused by the association of VIP’s use of “Bad Spaniels” with Jack Daniel’s trademarks and trade dress.”[xxxvii] Easy enough.
The Challenge Not Yet Heard
We’ll wrap up this Note with one to watch. In the “Bad Spaniels” case, VIP attempted, and was refused the opportunity, to raise a First Amendment challenge to the tarnishment provision of the Lanham Act.[xxxviii] VIP’s argument was that “the Supreme Court’s recent decisions in Matal v. Tam, 582 U.S. 218 (2017) and Iancu v. Brunetti, 588 U.S. 388 (2019) compel the conclusion that the statute amounts to unconstitutional viewpoint discrimination by enjoining the use of a mark that “harms the reputation” of a famous mark.”[xxxix] While this argument was raised a bit too late to be heard in this case, its bound to come up again in tranishment cases in the future. Consider too that consumer sentiment is not stagnant. Most consumers have different views about topics like sex and drugs than they did when Frank first put pen to paper 99 years ago. As such, so the argument goes, there is great risk of overbreadth and stifling of free speech if, as did the Sixth Circuit in Mosely, courts merely rely upon a “growing consensus” at a particular point in time to create a per se rule that an entire category of speech (and one of unclear boundaries) necessarily harms a brand’s reputation.
[i] Frank I. Schechter, The Rational Basis of Trademark Protection, 40 Harv. L. Rev. 813 (1927)
[ii] Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 429, 123 S. Ct. 1115, 1122, 155 L. Ed. 2d 1 (2003)
[iii] Schechter, supra note 1, at 831.
[iv] Id. at 832.
[v] See id. at 813–18 (1927)(quoting, among other sources, Hanover Star Milling Co. v. Metcalf, 240 U. S. 403, 412 (1916)).
[vi] Id. at 817.
[vii] Id. at 819.
[viii] Id. at 825.
[ix] Id.
[x] Moseley, 537 U.S. at 430 (citing 1947 Mass. Acts p. 300, ch. 307).
[xi] See id.
[xii] Id. (citing Restatement (Third) of Unfair Competition § 25, Statutory Note (1995).
[xiii] See § 24:68. Dilution: Free Riding Or Impairment Of Distinctiveness?, 3 McCarthy on Trademarks and Unfair Competition § 24:68 (5th ed.)
[xiv] Id.
[xv] See id; See also 15 U.S.C.A. § 1125(B)( defining of “dilution by blurring” and § 1125(C)(defining “dilution by tarnishment”).
[xvi] See McCarthy, note 13 supra, § 24:68 (citing criticism of such decisions).
[xvii] 15 U.S.C. § 1125(C)[1995]
[xviii] Moseley, 537 U.S. at 432–33.
[xix] Id. at 433 (overruling Ringling Bros.-Barnum & Bailey Combined Shows v. Utah Div. of Travel Dev., 170 F.3d 449, 460 (4th Cir. 1999).
[xx] Id. at 433–34.
[xxi] Id. (emphasis added).
[xxii] Id. at 434 (emphasis added).
[xxiii] Compare 15 U.S.C. § 1125(C)(1)[2006] to 15 U.S.C. § 1125(C))[1995]
[xxiv] 15 U.S.C.A. § 1125 (C)(1)(emphasis added).
[xxv] V Secret Catalogue, Inc. v. Moseley, 605 F.3d 382, 387 (6th Cir. 2010)(citing and quoting U.S. Code Cong. & Adm. News, 109th Cong.2d Sess.2006, Vol. 4, pp. 1091, 1092, 1097. Further noting: The drafters of the Committee Report also called special attention to the “burden” of proof or persuasion placed on “trademark holders” by the Supreme Court’s opinion in Moseley, suggesting a possible modification in the burden of proof.).
[xxvi] V Secret Catalogue, Inc., 605 F.3d at 387.
[xxvii] Id. at 388.
[xxviii] Id. at 392 (J. Nelson Moore, dissenting)(emphasis added)(quoting Starbucks Corp., 588 F.3d at 110); see also id. at 393 (“In short, Victoria’s Secret has presented no probative evidence that anyone is likely to think less of Victoria’s Secret as a result of “Victor’s Little Secret” and cannot therefore prevail on its claim of dilution by tarnishment”, citing Hormel Foods Corp. v. Jim Henson Prods., Inc., 73 F.3d 497, 507 (2d Cir.1996) (“Absent any showing that Henson’s use [of a puppet named Spa’am] will create negative associations with the SPAM mark, there [is] little likelihood of dilution.”).
[xxix] See, e.g, § 24:89. Dilution by tarnishment, 3 McCarthy on Trademarks and Unfair Competition § 24:89 (5th ed.)(“I agree with the position of Judge Karen Nelson Moore in her dissent. The majority’s creation of a presumption of dilution by tarnishment if there is use on “sex related products” is wildly misguided.”)
[xxx] V Secret Catalogue, Inc. v. Moseley, Rehearing and Rehearing En Banc Denied (Aug. 5, 2010); Moseley v. V Secret Catalogue, Inc., 562 U.S. 1179 (Jan 18, 2011)(denying certiorari).
[xxxi] Jake Linford et. al., Trademark Tarnishmyths, 55 Ariz. St. L.J. 609, 674 (2023)
[xxxii] Jack Daniel’s Props., Inc. v. VIP Prods. LLC, 599 U.S. 140, 144, 143 S. Ct. 1578, 1582, 216 L. Ed. 2d 161 (2023)
[xxxiii] VIP Prods. LLC v. Jack Daniel’s Props. Inc., No. CV-14-02057-PHX-SMM, 2025 WL 275909, at *6 (D. Ariz. Jan. 23, 2025)
[xxxiv] Id at *18.
[xxxv] Id.
[xxxvi] Id.
[xxxvii] Id. at *19.
[xxxviii] Id. at *12.
[xxxix] Id.
Companies outside traditional tech sectors may be sitting on IP goldmines without realizing it. Manufacturing, e-commerce, and consumer products businesses routinely use AI technologies from predictive maintenance to automated pricing. These technologies represent valuable intellectual property assets. While these companies may not self-identify as “tech companies” in the Silicon Valley sense, their AI implementations are every bit as technically sophisticated and legally protectable. (more…)
By Stavros Varveris, Trainee Lawyer at A. & K. METAXOPOULOS AND PARTNERS LAW FIRM, a member of the International Lawyers Network
Law No. 5271/2026 introduces a new specialized legal framework combining administrative and criminal regulation for the prevention and repression of art forgery, the protection of the physical integrity of works of art and collectible items, and the establishment of certified expert mechanisms for authentication.
Until now, the criminal treatment of art forgery relied exclusively on the general provisions of the Greek Penal Code on fraud and forgery. In this context, the establishment of criminal liability generally required the completion of a financial transaction and proof of pecuniary damage or deception of a third party, a requirement that significantly limited the effectiveness of the existing framework for such offences. (more…)
Taylor v Killer Queen LLC [2026] HCA 5
Jessica Bell – Kalus Kenny Intelex, Melbourne, Australia
The lengthy trade mark dispute between Australian fashion designer, Katie Perry (now Katie Taylor), and international pop sensation Katheryn Hudson, better known under the stage name Katy Perry (Ms Hudson), has hit a new note: on 11 March 2026, the majority of the High Court of Australia made its determination in Ms Taylor’s favour. (more…)
Authors: Ronald Urbach of Davis+Gilbert and Robert Chappell Jr. of Davis+Gilbert
The Bottom Line
Advertisers and marketers who target NYC consumers should take note: the appointment of former FTC Bureau of Consumer Protection Director Sam Levine as Commissioner of the NYC Department of Consumer and Worker Protection (DCWP), combined with Mayor Mamdani’s recent executive orders on consumer protection, signals a major shift in enforcement priorities. With former FTC Chair Lina Khan serving as a key mayoral adviser, businesses can expect the kind of robust, aggressive oversight of advertising and marketing practices not seen since the Mark Green era. This alert outlines what advertisers need to know and how to prepare.
History of the NYC Department of Consumer and Worker Protection (DCWP)
The DCWP, formerly the New York City Department of Consumer Affairs, was established in 1969 as the country’s first municipal consumer protection agency of its kind. Following the passage of the City’s consumer protection law, the department was created with broad authority to protect New Yorkers from deceptive business practices.
Under its broad authority, the DCWP oversees advertising that reaches NYC consumers — including national advertising. Along with the City’s Consumer Protection Law, the DCWP has undergone periods of heightened, aggressive enforcement against national advertisers believed to be non‑compliant with the City’s Administrative Code and the Rules of the City of New York. Further, in 1989, the Department of Consumer and Worker Protection set advertising guidelines for businesses requiring DCWP licenses. Examples of key areas of concern under the City’s advertising rules include pricing claims, offer terms, bait-and-switch tactics, free offers, and other false or misleading claims and illustrations.
New Leadership at the DCWP
Prior to the inauguration of Mayor Mamdani, it was announced that former Director of FTC’s Bureau of Consumer Protection Sam Levine would serve as the Commissioner of DCWP. During his time at the FTC, Levine oversaw enforcement, rulemaking, and policy work in many areas, including marketing, digital advertising, and consumer reporting.
While Levine served at the FTC, Lina Khan, co‑chair of Mayor Mamdani’s transition team, was the chair of the federal agency. Under the Khan‑era FTC and Levine’s leadership, the agency increased actions and rulemaking regarding issues concerning the advertising and marketing practices. Although Khan’s long-term role under the Mamdani administration remains unclear, Levine’s appointment signals a return to the DCWP’s aggressive oversight of business practices impacting New Yorkers — which includes national advertising and marketing practices.
The Mayor’s Recent Executive Orders
Mayor Mamdani’s two executive orders seeking to advance his affordability agenda, emphasizing pricing transparency, corporate accountability, and compliance with the City’s laws, are a recent indication of the administration’s intention to increase oversight and enforcement at the DCWP.
Strong Allies
At the signing of the two executive orders. Mayor Mamdani was joined by NY Attorney General Letitia James, City Council Speaker Julie Menin, and Commissioner of the DCWP, Sam Levine. We can expect that the NY City Council will ensure that the Mayor and Commissioner have sufficient resources to accomplish their consumer protection mission. Standing side by side, NY Attorney General James will support the consumer protection mission both by words and action.
Implications for National Advertisers and Marketers
While these executive orders concern junk fees and subscriptions, each largely mirrors initiatives of the Khan‑era FTC. The practical implications of such consumer protection monitoring and enforcement in New York City will likely play out for national advertisers and marketers. In the immediate term, with Mayor Mamdani in office and the appointment of Commissioner Levine, businesses should prepare for a potential return to robust, aggressive oversight by the DCWP of national advertising and marketing that reaches New Yorkers.
Drawing from the strong record of consumer protection at the FTC during Chair Khan and Bureau Director Levine’s tenure, we can look to that record for topics and issues to now be taken up by the newly revitalized NYC DCWP. Advertisers and agencies that take proactive steps now will be better positioned to avoid costly enforcement actions down the road.
Authors: Gary Kibel of Davis+Gilbert and Jeremy Merkel of Davis+Gilbert
The Bottom Line
The new year might mean the same to you, but for businesses, the turn of the calendar once again means a new set of privacy compliance obligations. 2026 brings new requirements in California, which has the most comprehensive regulatory framework and a stand-alone privacy regulatory agency, along with new state privacy laws in Kentucky, Indiana and Rhode Island taking effect.
CCPA Final Regulations
The California Privacy Protection Agency (CPPA) adopted a package of finalized regulations earlier this year, which take effect January 1, 2026. As discussed in our previous alert, businesses must be cognizant of critical areas that will require additional steps for compliance, including:
Additional CPPA Requirements
The CPPA has provided businesses with a list of additional items that businesses should know and prepare for, which includes, among other things, the following:
Display Opt-Out Request Status
A business must provide a means by which a consumer can confirm the status of their opt-out request, including those submitted through an opt-out preference signal, like the Global Privacy Control. For example, a business can display on its website “Opt-Out Request Honored” and indicate in the consumer’s privacy settings, via a toggle or radio button, that the consumer has opted out of the sale/sharing of their personal information.
Furthermore, businesses that sell or share personal information must process recognized opt out preference signals as valid requests to opt out for the device/browser and any associated profiles, and — where the consumer is known — apply the signal to the account and offline sales/sharing.
Requests to Know and Correct
For requests to know if businesses retain data beyond 12 months, consumers must be able to obtain all personal information collected on or after January 1, 2022, unless impossible or disproportionate, with individualized responses and secure delivery.
For corrections, businesses must now provide the consumer with the name of the source from which they received inaccurate information, or alternatively, inform the source themselves that the information is incorrect and must be corrected. Businesses must also ensure that corrected information remains corrected. For example, if the business regularly receives information from data brokers, it must make sure the corrected data is not overridden by inaccurate information later received from data brokers.
If a business denies a request to correct health information, consumers have the right to submit a 250-word written statement contesting the accuracy of health information, and upon the consumer’s request, the business must make that statement available to any person to whom it disclosed the contested personal information.
Expanding Right to Limit
The definition of “sensitive personal information” now explicitly includes personal information of consumers the business knows are under 16, as well as “neural data,” and confirms the sensitivity of several categories (e.g., precise geolocation, union membership, sexual orientation).
If a business is using consumers’ sensitive personal information for something other than the permitted uses set forth in section 7027(m) of the CCPA regulations, it must offer and honor consumers’ right to limit, and update privacy policies accordingly. Businesses may omit the “not inferring characteristics” condition only if they truly do not infer characteristics from sensitive data.
Enhanced Notices, Choice Architecture, and Universal Design Principles
All disclosures and interfaces for CCPA requests and consent must be easy to read, accessible, and free from dark patterns, with symmetry in choice and minimal steps to execute privacyprotective options. Notices must be conspicuous online and in mobile apps (e.g., in the app’s platform or download page), and accessible across modalities (including offline and device environments).
The regulations also codify specific requirements for the Notice at Collection, Notice of Right to OptOut of Sale/Sharing, Notice of Right to Limit, and the Alternative OptOut Link (“Your Privacy Choices” icon), including placement, content, and interactivity, with tailored offline and connecteddevice pathways.
Service Provider / Contractor Oversight
The regulations clarify that a business’s failure to conduct appropriate due diligence of its service providers — including ensuring that its subcontractor agreements comply with the CCPA and the regulations — will be factored into whether the business has reason to believe that a service provider or contractor is using personal information in violation of the CCPA and the regulations.
Metrics and Reporting for Large Data Handlers
Businesses handling 10 million or more consumers’ personal information annually must, by July 1st of each year, disclose metrics of volumes and median/mean response times for requests to delete, correct, know, optout of sale/sharing, limit, and, where applicable, access ADMT. Disclosures must state whether figures cover all individuals or only California consumers, with the business having the option of which metrics to disclose in its privacy policy.
Non-Discrimination Rules and Financial Incentives
The regulations reinforce that price or service differences tied to the exercise of CCPA rights are prohibited unless reasonably related to the value of the consumer’s data. Businesses must be able to substantiate valuations and provide a compliant Notice of Financial Incentive where applicable. In addition, nondiscrimination rights extend to the exercise of ADMT rights.
Insurance Clarification
Insurance companies that are “businesses” under the CCPA must comply with the regulation with respect to personal information that is not subject to the Insurance Code, such as website tracking for advertising or employment information (claimsrelated data governed by the Insurance Code remains outside the scope of the CCPA).
New State Privacy Laws – Kentucky, Indiana and Rhode Island
Three new consumer privacy laws take effect on January 1, 2026:
Among the patchwork of existing state privacy laws, Indiana and Kentucky’s laws are most similar to Virginia’s Consumer Data Protection Act (VCDPA) and the Connecticut Data Privacy Act (CTDPA), as opposed to the more unique aspects of the CCPA. Covered businesses include those that:
Businesses who already comply with other state laws may not have to make significant changes to their privacy program. Businesses should, however, review their existing privacy policies to ensure they include the required disclosures under Indiana and Kentucky’s laws.
Rhode Island’s Unique Requirement
Rhode Island, notwithstanding its similarities to the existing laws, includes a unique provision that controllers must identify “all third parties to whom the controller has sold or may sell consumers’ personally identifiable information” (subject to an exception for disclosing trade secrets). Notably, the statute does not define “personally identifiable information,” instead referring to “personal data” (which is defined) in most of its provisions, so it is unclear how broadly this provision sweeps.
Controllers subject to Rhode Island’s law include those that:
This requirement has the potential to impose an onerous burden on companies that engage in a substantial volume of such sales.
What’s on the Horizon?
For the first time this decade, there are no consumer privacy laws signed by a governor waiting to take effect. But don’t get too comfortable. Legislation in Wisconsin, Michigan, Massachusetts, Pennsylvania, and North Carolina is moving through committees. As always, it remains to be seen which of these bills will ultimately become law, but this is nonetheless a reminder that privacy law never sleeps.
Jessica Bell, Associate, Kalus Kenny Intelex, Melbourne, Australia
2026 begins with a number of changes to the Australian Trade Marks landscape, following the introduction of the Trade Marks Amendment (International Registrations, Hearings and Oppositions) Regulations 2025 (the IRHO Regulations).
The IRHO Regulations introduce a variety of procedural and technical updates to the Trade Mark Regulations 1995, including longer filing periods, partial replacement of protected international trade marks, and extended examination periods.
Divided into five comprehensive amendment schedules and two largely administrative schedules, the IRHO Regulations reflect recent changes to the Madrid Protocol administered by the World Intellectual Property Organisation (WIPO). Below, we summarise the key details of Schedules 1-5 and outline what they mean for Australian trade mark applicants and holders. Schedules 6 and 7 are primarily technical, covering minor adjustments and the timing of when each amendment takes effect – Schedules 1 and 5 took effect on 19 December 2025, while the changes set out in Schedules 2-4 and 6-7 were effective from 19 November 2025.
Schedule 1 – Increased Filing Period for Notice of Intention to Defend
Schedule 1 increases the period for filing a Notice of Intention to Defend an Opposition (NID) to two months from the previous one month period.
This means that a party now has two months to file a NID in opposition proceedings relating to:
· the registration of a trade mark;
· an application to remove a registered trade mark for non-use;
· extensions of protection to an international registration designating Australia; and
· an application to cease protection of an international registration for non-use.
This additional time is particularly significant given the Registrar’s power to treat an opposition as successful where a defence is not filed on time. Commencing on 19 December 2025, the new filing period applies to any opposition where acceptance of the trade mark, non-use application, or international registration designating Australia was published on or after that date.
Schedule 2 – Partial Replacement of Protected International Trade Mark
Schedule 2 introduces the concept of a partial replacement of a protected international trade mark (PITM). This mechanism under the Madrid Protocol allows a trade mark holder to replace an earlier registration with a later international registration for some, but not all, of the goods or services protected by a trade mark.
Previously, Australia’s regulations only allowed for a full replacement of the goods or services protected by a trade mark. As a result of this change, a later international registration will no longer automatically replace an earlier Australian trade mark in its entirety where both are owned by the same entity and cover the same goods or services.
This change is beneficial to Australian trade mark owners because it provides greater flexibility to manage their portfolios, without risking the loss of any valuable existing rights. Instead of a trade mark owner being forced into an all-or-nothing replacement, they can now update their registrations gradually, retain protection for important legacy goods or services, and better align their Australian trade mark strategy with their international registrations.
Although the change in Schedule 2 commenced on 19 November 2024, partial replacement is now available for any eligible trade mark, including those registered and protected prior to that date.
Schedule 3 – New Ground for Rejecting an International Registration Designating Australia
Schedule 3 introduces a new ground for IP Australia to reject an international registration designating Australia (IRDA).
From 19 November 2024, an IRDA may now be rejected on the basis that its protection would result in an asset being made directly or indirectly available to, or for the benefit of, any person or entity to whom assets must not be made available under the Autonomous Sanctions Act 2011 or the Charter of the United Nations Act 1945.
This means that that Australia’s trade mark system is now expressly aligned with its international sanctions regime, preventing trade mark rights from being granted in circumstances that could breach financial and trade restrictions.
Schedule 4 – Registrar’s Power to Revoke Acceptance of an IRDA
In addition to Schedule 3, Schedule 4 clarifies that where a notice of intention to revoke acceptance is issued by the IP Australia, a previously accepted IRDA will not automatically proceed to protected status. Instead, the grant of protection is paused upon issue of the notice, rather than continuing at the end of the opposition period.
This gives the applicant additional time to address the Registrar’s concerns before a final decision is made to revoke acceptance. However, importantly, an IRDA will still become protected 18 months after notification to Australia unless the Registrar notifies the International Bureau otherwise within that period.
Schedule 5 – Extended Examination Period upon request for a hearing
Effective from 19 December 2025, Schedule 5 introduces a new ground for ‘deferred acceptance’ of a trade mark, particularly where an applicant or holder requests a hearing. In these circumstances, acceptance of the trade mark application will automatically be paused, preventing it from lapsing if the examination process is not resolved in time.
Importantly, applicants will no longer need to make a separate request for deferment. The pause will end upon the earlier of the Registrar deciding to accept or reject the application following a hearing or the applicant withdrawing their request to be heard.
This change is particularly significant for applicants who request a hearing close to the acceptance deadline, as it removes the need to apply for an extension of time.
Key Takeaways
Ultimately, the IRHO Regulations reflect a refinement of existing processes while ensuring continued alignment with international trade marks regulations. These amendments provide procedural flexibility in favour of trade mark holders and applicants, but also introduce requirements to be aware of, such as the expanded grounds upon which an IRDA can be rejected.
The new United States Patent and Trademark Office (USPTO) Director John A. Squires was sworn in on September 22, 2025 and wasted no time that week in expanding patent eligibility for AI related inventions. In particular, the new Director presided over the September 26 Appeals Review Panel (ARP) decision in Ex parte Desjardins, Appeal 2024-000567. In its decision, the ARP begins explicitly steering USPTO claim interpretation policy under 35 U.S.C. § 101 in a new direction that aims to reduce patent eligibility scrutiny and potentially minimize the now-classic hurdles associated with interpreting abstract ideas and practical implementations thereof under the established Alice/Mayo framework.
In Desjardins, the ARP interpreted a claimed machine learning training pipeline as a technological improvement. In its analysis, the ARP identified at least the claim term of training a machine learning model including a plurality of parameters on a second machine learning task to “adjust first values of the plurality of parameters to optimize the machine learning model on the second machine learning task while protecting performance of the machine learning model on [a] first machine learning task” as constituting a patent eligible improvement on how the machine learning model operates. In supporting this position, the ARP referred to the specification-declared advantages of the claimed subject matter in terms of lower storage capacity requirements, reduced system complexity, and effectively learning new tasks without losing knowledge on previous tasks.
Until recently, such broadly claimed processing operations exemplified by the steps of adjusting parameter values and protecting past performance recited in Ex parte Desjardins were commonly interpreted as applying generic computer parts to an abstract idea. The ARP acknowledges its plausible departure from the previous norm practiced by most examiners and appeal panels, noting in its analysis that “under the [original] panel’s reasoning, many AI innovations are potentially unpatentable, even if they are adequately described and nonobvious, because the panel essentially equated any machine learning with an unpatentable ‘algorithm’ and the remaining additional elements as ‘generic computer components,’ without adequate explanation.” According to the ARP, “Examiners and panels should not evaluate claims at such a high level of generality.”
As put by Director Squires in a subsequent statement before the Subcommittee on Intellectual Property Committee on the Judiciary United States Senate October 9, 2025, “patent eligibility is not an abstract debate” but “a matter of national security, of resilience, and of ensuring that America’s system of innovation remains robust enough to confront the challenges of the twenty‑first century.” Advocating for less restrictive interpretation under 35 U.S.C. § 101, Director Squires’ statement further explains that “[s]ection 101 should not be misused as a blunt instrument to exclude entire technological fields” as “patent law must remain expansive if it is to remain true to its statutory text, to its history, and to its constitutional purpose.” In the few months since the ARP’s decision in Ex parte Desjardins, the Patent Trial and Appeal Board (PTAB) has been largely following Director Squires’ leadership, finding new acceptance for broadly drafted processing claims within the Alice/Mayo framework.
In this regard, the PTAB panel in Ex parte Mittal, Appeal 2025-002097 (November 24, 2025) reversed patent eligibility rejections of a claimed method of retraining a deployed machine learning model to detect and correct data-drift over time. In its analysis, the PTAB identified the claimed method steps of generating “a validation dataset from live model predictions generating a validation dataset comprising a plurality of data points” in view of user preferences, “ranking the plurality of data points of the validation dataset in view of the user preferences”, and “retraining the deployed machine learning model utilizing a new training dataset based upon the validation dataset and the ranked plurality of data points” as reciting an improvement in the functioning of a computer rather than broadly directing use of a computer and machine learning.
Similar to the ARP in rehearing Ex parte Desjardins, the PTAB noted corresponding specification-declared advantages in automatically correcting data-drift and accounting for different parameters affected by user preferences. Furthermore, the PTAB directly cites Ex parte Desjardins as precedential, noting that “claims reciting particular improvements in training a machine-learning model reflected an improvement to technology.” With this precedent, the PTAB determined that the claimed method of retraining a deployed machine learning model in Ex parte Mittal recites a technological improvement in machine learning with sufficient specificity that distinguishes it from claims in other cases that were deemed abstract for merely applying machine learning or data visualization without disclosing any technology-specific method.
In another case, the PTAB panel in Ex parte Brush, Appeal 2025-002376 (November 17, 2025) reversed patent eligibility rejections of a claimed machine‑learning system that converts heterogeneous electronic health record data into model‑ready feature catalogs and iteratively improves model performance. In its analysis, the PTAB determined the claimed steps of “generating a prediction by running a first predictive model, of the one or more predictive models, against the set of features hosted in the first feature catalog, wherein the predictive model is configured to make predictions based on the correlations within the normalized population data; [and] evaluating the accuracy of the prediction by comparing the prediction to historical data; altering the first predictive model based on the accuracy of the prediction” integrate any mental process or abstract idea into a practical application.
Similar to Ex parte Desjardins and Ex parte Mittal, the PTAB in Ex parte Brush noted corresponding specification-declared advantages of the claimed machine‑learning system in addressing data transfer bottlenecks between data warehousing and analysis, enabling correlations within normalized data to drive predictions, facilitating model verification and updates as warehoused data changes, and avoiding bespoke, one‑off pipelines by using feature catalogs compatible across multiple predictive models. Furthermore, the PTAB directly cited to Ex parte Desjardins, noting its precedential weight in establishing that a “claim is patent eligible [when] it ‘reflects… an improvement to how the machine learning model itself operates.’”
In another case, the PTAB panel in Ex parte Wang, Appeal 2025-001388 (October 29, 2025) reversed patent eligibility rejections of a claimed machine learning pipeline that aligns multisensor time‑series data and trains a model to predict mechanical quality‑assurance failures. In its analysis, the PTAB identified the claimed steps of “training the self-learning application by submitting the modified corpus to the self-learning application,” including “using training data to perform the training,” “teaching the self-learning application to make a prediction of a likely failure… in response to the self-learning application identifying adverse conditions,” and “gaining experience, by the self-learning application, that allows the self-learning application to infer a semantic meaning from behavior of the set of attributes,” as not practically being performed in the human mind.
Similar to these other PTAB cases discussed above, the PTAB in Ex parte Wang noted corresponding specification-declared advantages in improvements to operations of a machine learning model. In this regard, the subject specification provided that time-aligned streams representing the time-series data culled from sensors in a manner allows the inference and correlation of various conditions and states of each attribute at different times and makes them appropriate for use as training data in a machine learning operation. Here, the PTAB again directly cites Ex parte Desjardins noting that the claimed steps and corresponding specification-declared advantages are similar to the “improvement to how the machine learning model itself operates” that the Board concluded “integrated the judicial exception into a practical application” in Ex parte Desjardins.
Notably, Ex parte Desjardins has not rendered any and all machine learning claims patent eligible. For example, the PTAB in Ex parte Kuusela, Appeal 2025-001619 (November 24, 2025) affirmed patent eligibility rejections of a claimed method of radiology therapy planning that lacked any limitations directed toward modifying or developing a machine learning model. In this regard, the claim at issue merely recites a computer-implemented method including accessing patient information for a patient, accessing an integrated dose prediction model that integrates a plurality of predictive models, selecting one or more predictive models, processing said patient information, and outputting the radiation dose distribution, with no additional elements that affect the form or function of the integrated dose prediction model. Here, the PTAB again directly cites Ex parte Desjardins in noting that the claimed method merely applies a judicial exception using generic computer components and does not improve the functioning of the computer itself, and lacks any improvement to computer functionality or to how the machine learning model itself operates.
Taken as a whole Ex parte Mittal, Ex parte Brush, and Ex parte Wang strongly indicate the PTAB is clearly following the precedent established in Ex parte Desjardins, which embody Director Squires’ statement before the Subcommittee on Intellectual Property Committee on the Judiciary United States Senate calling for an expanded interpretation of patent eligible subject matter. More pointedly, claim limitations reciting retraining deployed models as in Ex parte Mittal, converting health record data into model‑ready feature catalogs as in Ex parte Brush, or structuring machine learning pipelines as in Ex parte Wang may well have found difficulty in establishing patent eligibility without new guidance from the Ex parte Desjardins decision. It should be noted that each of these cases includes the PTAB reading advantages from the patent specification, and understood that one strategic approach to better position AI inventions for eligibility is to clearly pair claimed machine learning structures to explicit nuanced advantages within the patent specification.
In this manner, the PTAB has started to set a pattern of decisions showing expanded avenues of patent eligibility for unique machine learning models that may require little more structure than the method of radiology therapy planning provided in Ex parte Kuusela. While this article focused directly on machine learning structures, other recent decisions by the PTAB following Ex parte Desjardins with subject matter outside the immediate scope of this article have applied similar reasoning to system processing claims. Examples of such claims include those employing concurrent processing in Ex parte Williams, Appeal 2025-001079 (October 30, 2025); employing an AI model to change data stream formats based on detected circumstances in Ex parte Goyal, Appeal 2025-001692 (November 24, 2025); and employing application search processing that uses tracked user interaction signals from a first application to estimate intent and to modify result ranking delivered by a second application in Ex parte Paris, Appeal 2025-001701.
Notably, this new policy shift at the PTAB is occurring entirely within the existing statutory and regulatory framework, without requiring Congressional amendment or rulemaking, including any action on the proposed Patent Eligibility Restoration Act of 2025. The Federal Courts have likewise not yet addressed these emerging eligibility approaches, and it remains to be seen whether the Courts will adopt the same interpretive posture. For now, the PTAB decisions following Ex parte Desjardins signal a meaningful recalibration of patent eligibility analysis at the USPTO that should materially influence drafting and prosecution strategy moving forward unless and until the Courts or Congress intervene.
Authors: Marie Lussier, Partner, and Elizabeth Varkovetski, Articling Student, Fogler, Rubinoff LLP
Today, roughly 60% of the average Canadian family’s diet consists of prepackaged and processed foods. These are often high in saturated fat, sugars, and sodium and Health Canada has flagged those ingredients as major contributors to obesity, heart disease, and diabetes.
To combat these health risks and empower Canadians to make informed choices, Health Canada published the Regulations Amending the Food and Drug Regulations (Nutrition Symbols, Other Labelling Provisions, Vitamin D and Hydrogenated Fats or Oils) on July 20th, 2022. The transitionary period allotted for in the amendments ends on December 31, 2025 and, at that time, important changes to Canadian food labelling requirements will occur.
In fact, as of January 1, 2026, most prepackaged foods that are high in saturated fat, sugars or sodium will be required to display a front-of-package nutrition symbol (the “Symbol”).
What is needed now?
Manufacturers must now determine whether their products require the black-and-white Symbol and ensure that the Symbol displayed meets the new format requirements.
What will be required over time?
In most cases, the threshold for packaged foods is 15% of the daily value for each relevant nutrient in a serving size.
Despite this, the legislature has provided for some important exemptions, including:
1. Technical exemptions for foods such as those sold at farmers’ markets and raw, single-ingredient meats, poultry and fish, and certain products with very small packaging, such as single serving coffee creamers.
2. Health related exemptions for foods recognized as having health benefits, including whole or cut fruits and vegetables, 2% and whole milk, and eggs, or any combination of exempt “healthy foods”.
3. Practical exemptions for foods where the Symbol would be redundant, such as packages of sugar, honey, maple syrup, table and flavoured salt, butter and other fats and oils.
Additional exemptions include foods with special dietary uses such as meal replacement and nutritional supplements and infant formula and foods.
What will this look like come January 1?
Soon, many grocery items will feature the Symbol with a magnifying glass to “call out” products that are high in saturated fat, sugars, sodium, or any combination of these. It of course remains to be seen whether manufacturers implement the new Symbol in a timely and effective manner, whether it will affect how Canadians shop and eat and how penalties will be meted out for those traders who do not comply.