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Suppose you have an invention and disclose it in a slide show to an audience attending a conference. Can this slide show be considered a printed publication to prevent the invention from being novel and patented? Are there protective measures that can be taken to prevent the slide show from being considered a printed publication? The answer is YES!
To obtain a U.S. patent, one of the conditions for patentability is that the invention be novel under 35 U.S.C. Section 102. Under 35 U.S.C. Section 102, a person is entitled to a patent unless the claimed invention was described in a printed publication, or otherwise available to the public before the effective filing date of the claimed invention. However, the invention has to be sufficiently publicly available to be considered a “printed publication” and prevent patentability as not being novel.
The Court of Appeals for the Federal Circuit has previously interpreted the phrase “printed publication” as:
… to mean that before the critical date the reference must have been sufficiently accessible to the public interested in the art; dissemination and public accessibility are the keys to the legal determination whether a prior art reference was “published.”.
In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989) (quoting Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1568 (Fed. Cir. 1988))
Can the slide show be considered a printed publication? The determination of whether the slide show can be considered a “printed publication” under Section 102(b) involves a case-by-case inquiry into the facts and circumstances surrounding the disclosure to members of the public. In re Cronyn, 890 F.2d at 1161.
In a recent case before the United States Court of Appeals for the Federal Circuit (“CAFC”), In re Kloppfenstein, 380 F.3d 1345 (Fed. Cir. 2004), the CAFC held that a slide show was made sufficiently publicly accessible to count as a “printed publication”. The Kloppfenstein case involved a printed fourteen-slide presentation on an invention involving cereal chemistry (“Liu reference”) at a meeting of the American Association of Cereal Chemists (“AACC”) that was displayed continuously for two and a half days, and, in the same year, was put on display for less than a day at the Agriculture Experiment Station (“AES”) at Kansas State University. The USPTO determined that the Liu reference was a “printed publication” for determining patentability and this was also the issue on appeal to the CAFC.
In Kloppfenstein, the CAFC held that public accessibility is the key factor as to whether a prior art reference will be considered a printed publication for the purposes of Section 102(b). However, the court found that distribution and indexing are not the only factors to be considered in a Section 102(b) “printed publication” inquiry. Since the Liu reference was neither distributed nor indexed, the court considered other factors in determining whether the Liu reference was sufficiently publicly accessible to be considered a printed publication, which included the length and time the Liu reference was displayed, the expertise of the audience, the reasonable expectations that the material would not be copied, and ease of which the material displayed could have been copied. The court found that the slide show was shown to a wide variety of viewers in the audience and many of them possessed ordinary skill in the art of cereal chemistry and agriculture, while the slide show was prominently displayed for days at AACC and the AES.
As a result of the above findings, the CAFC focused on the factors of whether there was a reasonable expectation that the information in the Liu reference displayed to the audience would not be copied and the ease of which it could be copied. The court found that there was no reasonable expectation that the information would not be copied. In addition, the court found that eight of the fourteen slides only recited what was already known and the remaining slides of the novel information presented could have been copied by a member of the audience. Thus, the court concluded that the Liu reference was sufficiently publicly accessible to be considered a printed publication under Section 102(b)
The Kloppfenstein case illustrates that a slide show can be considered sufficiently publicly accessible to count as a “printed publication” to deny patentability under Section 102 as not being novel. However, in that case, the court stated that protective measures can be considered that create a reasonable expectation that the displayed information would not be copied. For example, protective measures may include license agreements, non-disclosure agreements, anti-copying software, or a disclaimer informing the audience that no copying of the information will be allowed or acceptable.
Therefore, if you have an invention to be shown in a slide show to an audience, you need to take protective measures to create a reasonable expectation that the invention will not be copied to prevent the slide show from being considered a printed publication and prevent patentability. While it may be difficult to get members in an audience to sign a non-disclosure agreement, you should at least have a disclaimer on the slide show informing them that no copying of the information will be allowed. If this protective measure is taken, your chances that the slide show is not considered a printed publication will increase. Thus, there are protective measures that can be taken to minimize the slide show from being considered a printed publication and prevent the invention from being novel and patented.
As discussed in my short article of July 10, 2024, important changes to the Canadian Trademark Regulations have been proposed. The changes have not yet come into effect and are still subject to change. The consultation period closed on July 8, 2024. In future articles, I will discuss comments that are being debated and next steps in the implementation process.
One set of changes is directed at improving the efficiency of the trademark dispute resolution process. Another set of changes enables the Registrar to inactivate official marks.
In the remainder of this article, I set out some of the details regarding both of these proposed changes.
First, regarding changes to the dispute resolution process, those involve three main elements, namely:
Cost awards;
Confidentiality orders; and
Case management.
Cost cannot presently be awarded in trademark opposition proceedings. The changes would enable the Registrar to order costs to prevent undesirable conduct by the parties. The amendments prescribe fixed-cost awards based on the type of proceeding and the reason for awarding costs, and those awards range (in 2024) between $1,100.00 and $10,400.00. Costs would not be awarded if the proceeding is terminated before a final decision issues.
Presently, all documents filed with the Registrar are publicly accessible. This can cause parties to not file full evidence before the Opposition Board, and to only file that evidence on an appeal to the Federal Court. The proposed changes would allow the Registrar to order, at the request of a party, that certain evidence be kept confidential. The request would need to describe the evidence, state that it has not been publicly disclosed, set out why the information is to be kept confidential, and indicate whether the other party consents to keeping the evidence confidential.
Finally, regarding case management, the proposed changes would allow the Registrar to designate certain proceedings as “case managed”. The Registrar would also have the right to give any direction or make any order to deal with matters efficiently and cost-effectively, and to fix the timeline for any step in a case-managed proceeding, despite the timeline provided under the Trademarks Act.
Second, regarding official marks, we first note that those are unique to Canadian trademark law, and “public authorities” can claim a broad scope of protection through those marks. The requirements for an entity to qualify as a “public authority” have evolved over the years and some owners may no longer qualify as public authorities. Official marks can be cited against an application and, if the applicant provides evidence that the official mark holder no longer exists, the Registrar will withdraw their objection. However, the Registrar does not presently have the authority to cancel an official mark on the basis that its owner is no longer a “public authority”. To do so, a third party must commence an action in the Federal Court. The proposed changes would allow a third party to request that a public notice issue against an official mark. A fee of $325 would be paid and a proceeding before the Opposition Board would take place to determine, for example, whether the holder of an official mark continues to be a public authority or even continues to exist. This procedure would be a cost-effective and efficient way to clear “deadwood”.
On June 8, 2024, proposed amendments to Canada’s Trademarks Regulations were published in the Canada Gazette. The public consultation period is open until July 8, 2024, and comments will be posted on the Canada Gazette website following the end of the consultation period.
A coming-into-force date has not yet been set but the Canadian Intellectual Property Office indicates that sufficient time will be provided to ease the transition.
The first plaintiff, a company, was established in 1989. Its sole partners were:
GZ and GS, cinematographers;
SE (who had the pseudonym “L”), actor, writer, and screenwriter (second plaintiff); and
KF, director.
The World Intellectual Property Organization announced on May 24, 2024, a treaty on intellectual property, genetic resources, and associated traditional knowledge that was twenty-five years in the making. As WIPO’s press release noted, “[n]egotiations for this Treaty began at WIPO in 2001, initiated in 1999 with a proposal by Colombia, where discussions were notable for their inclusion of Indigenous Peoples as well as local communities.” Because the treaty has importance in and of itself for the subject matter it covers, we will describe its substance. But because it also provides an example of process and structure that could help address concerns over the ownership of works created by deploying artificial intelligence (especially when coupled with an understanding of the history of laws governing US plant patents), we will also look at its evolution to help us think outside the box that some have worked themselves into on artificial intelligence works questions. Plus, I had not focused a piece on a treaty since 2016 (when I wrote about the TRIPS treaty on geographic indicators) and 2015 (when I wrote about the Trans-Pacific Partnership on trade secrets), so I seemed overdue. (more…)
With the rise in the use of artificial intelligence (AI) in all forms, the question is becoming more present than ever – who owns the intellectual property in a work created with the use of AI?
In Australia, there is currently no law specific to the ownership of intellectual property created in computer-generated works, whether that be art, music drafting documents, or other written works.
Under the Copyright Act 1968 (Cth) (the Act), the author of a literary, dramatic, musical, or artistic work is the owner of any copyright subsisting in the work.
To be protected by the Act, the author of a work must be a ‘qualified person’, meaning that they are a citizen or resident of Australia or a country that Australia has promised copyright protection to under international treaties and conventions. For this reason, AI itself cannot be the author (and therefore, owner) of generated intellectual property.
Not necessarily. Although not specifically considering the use of AI, the ‘owner’ of created works was considered by the High Court in IceTV Pty Ltd v Nine Network Australia Pty Ltd [2009] HCA 14.
In this case, IceTV provided a subscription-based electronic television program guide known as the “IceGuide”, which at the time used time and title information collected from newspaper and online TV guides (aggregate guides).
Television networks provided the information from the aggregate guides to media outlets for publication, one of which was the Nine Network, which argued that IceTV’s reproduction of information from the aggregated guides amounted to the reproduction of a substantial part of the weekly schedules prepared by Nine Network staff. On this basis, Nine Network was the owner of the created works and IceTV was infringing Nine Network’s copyright.
The case eventually escalated to the High Court where it was found that factual data alone cannot be sufficient to attract protection under the Act. In order for a work to be sufficiently original to qualify for copyright protection, there must be an exertion of human skill, creativity, ‘sweat of the brow’ and must involve some independent intellectual effort.
Under this view, if in the creation of a work using AI, a person uses independent intellectual effort, creativity, and skill, that person will likely be considered the owner of the work. The same would apply if it were a group of people, who would be considered joint owners of the work.
However, in the alternate, where there is no human author because there was little involvement in the creation of the work using AI, or purely factual data was used, there will be no copyright protection afforded to the AI-created work.
Notwithstanding that AI cannot own the intellectual property used to create a patentable item, the recent case of Thaler v Commissioner of Patents [2022] FCAFC 62 considered whether it was possible for AI to be listed as the inventor of a patent.
In this case, Dr. Stephen Thaler filed a patent application for ‘food container and devices and methods for attracting enhanced attention’, nominating his AI system DABUS as the inventor in the application. In the first instance the Commissioner of Patents rejected the application because it did not meet the requirements prescribed by the Patent Regulations 1991 (Cth) (Patent Regulations), that is, it was not possible to identify a person to who the application could be granted.
Dr Thaler appealed that decision to the Federal Circuit Court successfully on the basis that ‘inventor’ was not defined in the Patents Act 1990 (Cth) or the Patent Regulations and therefore, nothing expressly prohibited AI from being the inventor in the application. However, on further appeal to the Full Court of the Federal Circuit Court, the decision was unanimously overturned, with the Court determining that an ‘inventor’ must be a ‘natural person’.
Dr Thaler attempted to appeal this decision to the High Court, however, leave to appeal was not granted and so the Full Court of the Federal Circuit Court’s decision stands, leaving open the opportunity for the High Court to consider issues of this type in the future. Notably, the Full Court of the Federal Circuit Court’s decision is consistent with the position of other jurisdictions to date, including the UK, the United States of America, Europe, and New Zealand.
It is well known that technology can develop much faster than laws and regulations. Some jurisdictions, including the UK and New Zealand, have updated their legislation to clarify that the ownership of computer-generated works is the person ‘by whom the arrangements necessary for the creation of the work are undertaken’ (UK) and the person who ‘made the arrangements necessary’ for the creation of the work (NZ). However, the same updates to legislation remain to be seen in Australia. Back to the question in the title of this article – who does AI-generated work belong to? The answer: Well, it depends.
Title? Typo? Cryptic code? Equation?
Really it is a combination of three of the four. In other words, it is not a typo (You can look elsewhere in this piece for those).
One key to understanding the reference above is the mathematical logic symbol ├, which is known as the “’turnstile’…because of its resemblance to a typical turnstile if viewed from above. It is also referred to as tee.” It is meant to mean “yields” or “entails,” and here the familiar initials “IP” are used to the right of the turnstile with question marks as an indication of “intellectual property” (that “umbrella term for a set of intangible assets or assets that are not physical in nature”) and the questions it raises. The “IP” to the left of the turnstile is not tautological—it stands for “interesting politics,” leaving the tail of the title to be a logic language shorthand for “Interesting Politics Yield Intellectual Property Questions.”
And how true that is these days. For instance, we await a US Supreme Court decision in Vidal v. Elster, a case argued November 1, 2023, and that this author has written about before (here and here) concerning whether the refusal to register a trademark (Trump Too Small) under 15 U.S.C. § 1052(c) when the mark contains criticism of a government official or public figure violates the Free Speech Clause of the First Amendment. But, since we already hit that topic and can write more about it once the Vidal decision comes down, let’s see what else is out there.
We have a great mix of other issues as the political season heats up. This ranges from concerns about “deep fakes” like the Faux Biden robocall to shallower AI-driven authorized messages like we are seeing in connection with India’s election. It also includes the recurring dust-ups between musical artists and politicians concerning songs played at campaign rallies. Beyond that, we have a copyright fight between a former Congressman and a late-night talk show host. So we can jump into these issues now.
Deepfakes or Deep Fakes ⊭ Always Something Produced By Adversaries To Do Damage
The dictionary definition of “deepfake” (sometimes written as two words) is “a video of a person in which their face or body has been digitally altered so that they appear to be someone else, typically used maliciously or to spread false information.” While some forms of them have appeared for almost as long as photographs and movies have existed, concern over deepfakes has taken on added emphasis in the age of mass media and artificial intelligence:
deepfake technology takes its name from deep learning, which is a form of AI. In deepfake AI, deep learning algorithms that teach themselves how to solve problems with large data sets, are used to swap faces in videos, images, and other digital content to make the fake appear real.
Deepfake content is created by using two algorithms that compete with one another. One is called a generator and the other one is called a discriminator. The generator creates the fake digital content and asks the discriminator to find out if the content is real or artificial. Each time the discriminator correctly identifies the content as real or fake, it passes on that information to the generator so as to improve the next deepfake.
[All You Need to Know About Deepfake AI, Nov. 21. 2022]
On the internet, you can actually watch an example of this process as the creation evolves into a better and better deepfake in real-time. Deepfakes can obviously raise concerns in the political realm, as a candidate’s opponents could create a video or audio tape including a “candidate” making statements that he or she never made that would place that candidate in a bad light in the eyes of supporters.
For instance, as noted by law enforcement officials in that state, in connection with this year’s New Hampshire presidential primary, numerous New Hampshire residents received a robocall phone message that appeared to be a recording (it was not) of President Joe Biden urging them not to vote in the January 23, 2024, New Hampshire Presidential Primary Election. Shortly after that, the US Federal Communications Commission issued a declaratory ruling making the use of AI-generated voices in robocalls illegal under the Telephone Consumer Protection Act. As the FCC noted in its press release at the time, “Bad actors are using AI-generated voices in unsolicited robocalls to extort vulnerable family members, imitate celebrities, and misinform voters. We’re putting the fraudsters behind these robocalls on notice….State Attorneys General will now have new tools to crack down on these scams and ensure the public is protected from fraud and misinformation.”
As noted elsewhere (with footnotes), this is but one recent legal response among many to deepfakes in the US and around the world:
In the United States, there have been some responses to the problems posed by deepfakes. In 2018, the Malicious Deep Fake Prohibition Act was introduced to the US Senate,[215] and in 2019 the DEEPFAKES Accountability Act was introduced in the House of Representatives.[16] Several states have also introduced legislation regarding deepfakes, including Virginia,[216] Texas, California, and New York.[217] On 3 October 2019, California governor Gavin Newsom signed into law Assembly Bills No. 602 and No. 730.[218][219] Assembly Bill No. 602 provides individuals targeted by sexually explicit deepfake content made without their consent with a cause of action against the content’s creator.[218] Assembly Bill No. 730 prohibits the distribution of malicious deepfake audio or visual media targeting a candidate running for public office within 60 days of their election.[219]
In November 2019 China announced that deepfakes and other synthetically faked footage should bear a clear notice about their fakeness starting in 2020. Failure to comply could be considered a crime the Cyberspace Administration of China stated on its website.[220] The Chinese government seems to be reserving the right to prosecute both users and online video platforms failing to abide by the rules.[221]
In the United Kingdom, producers of deepfake material can be prosecuted for harassment, but there are calls to make deepfake a specific crime;[222] in the United States, where charges as varied as identity theft, cyberstalking, and revenge porn have been pursued, the notion of a more comprehensive statute has also been discussed.[208]
In Canada, the Communications Security Establishment released a report which said that deepfakes could be used to interfere in Canadian politics, particularly to discredit politicians and influence voters.[223][224] As a result, there are multiple ways for citizens in Canada to deal with deepfakes if they are targeted by them.[225]
In India, there are no direct laws or regulation on AI or deepfakes, but there are provisions under the Indian Penal Code and Information Technology Act 2000/2008, which can be looked at for legal remedies, and the new proposed Digital India Act will have a chapter on AI and deepfakes in particular, as per the MoS Rajeev Chandrasekhar.[226]
In Europe, the European Union’s Artificial Intelligence Act (AI Act) takes a risk-based approach to regulating AI systems, including deepfakes. It establishes categories of “unacceptable risk,” “high risk,” “specific/limited or transparency risk”, and “minimal risk” to determine the level of regulatory obligations for AI providers and users. However, the lack of clear definitions for these risk categories in the context of deepfakes creates potential challenges for effective implementation. Legal scholars have raised concerns about the classification of deepfakes intended for political misinformation or the creation of non-consensual intimate imagery. Debate exists over whether such uses should always be considered “high-risk” AI systems, which would lead to stricter regulatory requirements. [227]
Additionally, “[a] few states have also passed legislation addressing deepfakes in political ads, with Minnesota and Texas criminalizing the use of deepfakes to influence elections. Washington State passed a law last year addressing ‘synthetic media,’ referring to audio or video recordings used in political ads.” Ivan Moreno, 3 Takeaways On How AI Is Forcing Publicity Rights To Evolve, Law360 (April 24, 2024, 8:35 PM EDT).
One might read the present section of this blog up to this point and wonder what the IP (i.e. intellectual property) angle is up to this point, as this seems more about new political norms than traditional intellectual property rights. But that is not the case—inherent in the blocking of deepfakes of politicians (and of others) is the notion that the candidate (or the media star) has an inherent right to control his/her own name, image, voice, and likeness. So there is an IP basis for some of these emerging policies. Caution, however, demands that one consider the use of this technology by those who do actually enjoy the right to control that name, image, voice, and likeness being manipulated by AI.
Whatever do I mean by that? To answer that question, we turn to Indian politics. In India, as reported by the New York Times recently, Indian politicians are now using the same AI tools that deepfakers might use to make unauthorized use of another’s name, image, voice, and likeness to make on the politician’s behalf audio-visual presentations of things that candidate never actually said in languages that candidate has never actually spoken. The hope is that such candidates can use such communications to endear themselves to the particular constituency receiving such messages—even though the candidate may never have said such things in any language, much less in the primary language of the recipient.
In other words, the person controlling through the right of publicity his or her own name, image, voice and likeness can use AI to project to the public positive images and statements that are just as synthetic and unreal as a damaging image created by opponents. Of course, from an IP perspective, one can fictionalize one’s own life to a certain respect as part of controlling one’s own name, image, voice and likeness. But if the person never said those words or spoke that language, the image of them doing so remains as fake and co-opting as J. Peterman’s biography based on Kramer’s exploits, and leads us to view deepfakes in a new light—they can “misinform voters” when created by the candidate just as easily as when created by the candidates’ opponents and when created by the holder of the right to publicity just as much as when created by the usurper of those rights. This becomes another level of falsity that can perhaps multiply the so-called Liar’s Dividend, a whole other aspect of AI-related ethics, because one can create evidence of positive statements never uttered while at the same disputing actual evidence of what was said—sounds like a politician’s dream (As noted by Cat Casey, “Liar’s Dividend” or “Deepfake Defense” is a term coined by law professors Bobby Chesney and Danielle Citron that “refers to the idea that bad actors making false claims about deepfake evidence are increasingly believable as the public learns more about deepfake threats. Simply put, the more the public learns about the believability of deepfakes, the more credible false claims become, even in the face of real evidence. As people’s trust in the veracity of visual content is further eroded, the challenge of evidence authentication increases. False claims of AI-generated content and deepfake detours have already graced the courtroom…. ‘The most insidious impact of #deepfakes may not be the fake content itself, but the ability to claim that real content is fake.’”)
Hence, the title of this subsection deploys the “negated double turnstile” logic symbol ⊭, which means “does not semantically entail” as in “A ⊭ B says ‘A does not guarantee the truth of 𝐵. In other words, 𝐴 does not make 𝐵 true.” Thus, this section heading “Deepfakes or Deep Fakes ⊭ Always Produced By Adversaries To Do Damage” reads “Deepfakes or Deep Fakes Are Not Always Something Produced By Adversaries To Do Damage.” Deepfakes can just as easily be created by proponents to falsely enhance or endear one to a particular constituency by making it seem like the candidate actually said something that they wanted to hear. The notion of finding liability for the misuse of one’s own right of publicity is an interesting intellectual property concept upon first stating it. But it is close enough to traditional notions of false advertising and unfair competition to seem like a prohibition with sufficient intellectual property roots to take hold.
Playing Song⇒ Having The Endorsement, Or Does It?
Campaigning politicians love to enter or exit venues walking through floating balloons and falling confetti as some popular song enhances the moment and vibe. Often selected as part of conveying a message about, or an image of, the candidate, the list of campaign songs goes way back across US history, as just one example. Whether it was Walter Mondale looking for underdog mojo needed to score a knockout by turning to the Rocky theme “Gonna Fly Now” in 1984 against an incumbent Ronald Reagan, or Nikki Haley looking for the same thing by using “Eye of the Tiger” in 2024 Republican primaries against Donald Trump, politicians have often set their messages to music.
But musicians often object to such use. For instance, Kim Davis, the embattled county clerk jailed for refusing to issue marriage licenses for same-sex couples, had many rally around her, and she emerged during at least one of those rallies to Survivor’s “Eye of The Tiger” being played in the background. That drew a rebuke from the song’s co-author, as noted in Variety. Similarly, as also noted by Variety, “Neil Young objected to Donald Trump’s use of “Rockin’ in the Free World” at his presidential campaign announcement in June [2015].” As Associated Press has noted, Bruce Springsteen, Phil Collins, and John Fogerty have also objected to Donald Trump’s using their songs at campaign events, just as Springsteen had objected to Ronald Reagan’s using “Born In the USA years ago; other artists have also expressed discontent with their songs being played at Trump events. Some artists and songwriters have gone beyond simply voicing displeasure. For instance, as Entertainment Weekly noted, ABBA sent John McCain a cease and desist letter during the 2008 Presidential campaign. Neil Young actually sued Donald Trump in an effort to stop Trump’s use of “Keep on Rockin’ in the Free World,” as one commentator noted.
Commentator Jay Gabler summed up the question and answer quite nicely before the last presidential election:
So why is this still a thing? Why can’t musicians get political candidates to stop using their music at campaign events? Well, it’s complicated, but essentially, the reality is that in almost all cases, artists actually don’t have the legal right to tell a campaign to stop playing their songs at events. The reason for that is that most major artists sign licensing deals with performance rights organizations like ASCAP and BMI.
Any public event, if they want to play music, needs to pay for a license, but once organizers have paid for that license, they can pretty much play any songs they want. If that kind of agreement weren’t in place, Neil Young and ABBA would have to strike a deal with every restaurant, bowling alley, and wedding event that wants to use their music. Obviously, that’s way too complicated, so that’s why artists sign rights agreements that cover a wide range of venues and events — including rallies, whether we’re talking politicians or monster trucks.
[Gabler, “Music News: Why can’t musicians get politicians to stop playing their songs?,” The Current, October 1, 2020]
Of course, Gabler noted that his answer still left issues for discussion:
So just telling a candidate to cut it out basically isn’t good enough. The next thing some artists have tried is revising their licensing agreements to make certain songs unavailable specifically for political events. That’s what Neil Young has done with his song “Rockin’ in the Free World,” which has been a favorite of the President’s. But there’s some legal ambiguity there, too, because music rights licensing is regulated under federal law due to antitrust concerns, so even if Neil Young wants to make exemptions to his license, it may not really be up to him.
[Gabler, “Music News: Why can’t musicians get politicians to stop playing their songs?,” The Current, October 1, 2020]
The Artist Rights Alliance in fact asked the major political parties to require their candidates to “seek consent from featured recording artists and songwriters before using their music in campaign and political settings. This is the only way to effectively protect your candidates from legal risk, unnecessary public controversy, and the moral quagmire that comes from falsely claiming or implying an artist’s support or distorting an artist’s expression in such a high stakes public way.” As the Copyright Alliance has noted, questions of fair use are also implicated.
But developments since 2020 have added some clarity. For instance, in 2020, Guyanese-British singer Eddy Grant brought suit against former President Donald Trump for Trump’s unauthorized use of Grant’s iconic song “Electric Avenue” in a video endorsing Trump’s reelection campaign posted to Trump’s personal Twitter page, as Diane Nelson reported. The Court refused to dismiss the matter on fair use or other basis. Similarly, Carolyn Wimbly Martin and Ethan Barr have noted that copyright pre-emption may complicate resort to the right of publicity for artists:
The use poses this hot-button campaign question: Can politicians freely use popular music at live rallies and live events without regard to the interests of the artists that created and performed the works?… Some experts have opined that copyright law is not the only arena in which to recover for improper political use of music. They have focused on a panoply of legal principles designed to protect celebrity image and reputation. In their view, trademark dilution, right of publicity, and false endorsement claims may provide redress. While all three legal theories are particularly viable (along with copyright law) when it comes to recorded content like TV commercials, there is a strong argument that for live events, copyright law may be a sole avenue for relief. This notion requires a closer look.
***
Similarly, approximately half of U.S. states have enacted laws to protect the reputation of prominent people, granting them a right of publicity, which permits them to sue for misappropriation of their name, image, or likeness. Accordingly, in those states, the question is likely whether an artist may claim that a live political event improperly used recordings of his or her voice (a distinctive characteristic) at a rally, or whether the use of the music may be deemed a “false endorsement” of that campaign event. See Browne v. McCain, No. CV 08-05334-RGK (Ex), 2009 U.S. Dist. LEXIS 141097, at *20 (C.D. Cal. Feb. 20, 2009). For example, California Civil Code § 3344 permits a cause of action for “knowingly us[ing] another’s name, voice, signature, photograph, or likeness, in any manner” without consent for advertising purposes. While the law is still being written here, it is possible that the publicity claims, which merge the content of the music with the performers’ persona, may be viewed as copyright claims by another name. In that case, courts may reasonably conclude that the publicity and false endorsement claims are preempted by federal copyright law. Hence, musicians are best served by starting with copyright law as the most suitable framework for their case.
[Carolyn Wimbly Martin and Ethan Barr, Notes and Votes: Use of Copyrighted Music at Live Political Events, Copyright Law,October 22, 2020]
So this leaves us in a bit of a quandary. Artists have certainly embraced the logic of “Playing Song⇒Having The Endorsement,” which reads as “Playing the song implies the performer’s or songwriter’s endorsement,” and used that as a basis to challenge, formally and informally, such use. But the question really is whether it does or not.
That very notion may go too far. It does not seem that one would suggest that the clothing designer has endorsed a candidate who prefers that designer’s suits or ties and wears them when attending rallies. Similarly, the poet or the author quoted during a candidate’s speech would have a hard time claiming that the candidate’s quoting the poet/author’s work is readily understood to be an indicium of the writer’s support for the candidate. In fact, it is the opposite—it is the candidate endorsing the author or performer. A candidate can be a fan of an artist without creating an impression that feeling or status is mutual—think Chris Christie and Bruce Springsteen, at least in the time before the more recent friendliness some see. But, this would not be the first time that I concluded that musicians’ claims seemed to stretch the boundaries of IP law a little further than necessary, as I did here (in discussing claims against Ed Sheeran) and here (discussing claims against Led Zeppelin). Of course, that conclusion is based on a US law upbringing and perspective, and I might feel very differently if raised in a full-fledged moral rights jurisdiction where a creator’s connection to a work is more likely recognized as personal and undetachable. It will be interesting to see how this plays out, pun intended.
Fair Use ⟥ A Fact-Sensitive Determination That ⟣ Easy
George Santos and Jimmy Kimmel are adversaries in an IP+ lawsuit in the United States District Court for the Southern District of New York. Santos is a former United States Congressman from Long Island. First elected in 2022, Santos became famous, or infamous, for the false and inflated resume on which he had been elected, and the criminal and ethical cloud that led to his expulsion from Congress on December 1, 2023. After being “expelled from the House of Representatives for a number of alleged crimes and falsehoods,” he remained a celebrity of sorts. Cashing in on that celebrity, Santos began providing, for a fee, personalized messages to “fans” and others through Cameo.com. Late-night talk show host Jimmy Kimmel (likely through a staff member) posed as fans of Santos and sought a series of video messages from Santos celebrating various fictitious life events such as asking Santos to “congratulate a friend for coming out as a ‘furry’ and adopting the persona of a platypus mixed with a beaver.” See Kimmel Atty Defends Airing ‘Patently Ridiculous’ Santos Clips, Law 360, April 18, 2024. The Kimmel-requested, Santos-created videos were then edited by Jimmy Kimmel Live! staff and aired on that show and were posted to social media. Santos filed a four-count complaint on February 17, 2024, alleging copyright infringement, fraud in the inducement, breach of contract, and unjust enrichment that some have described as silly. Kimmel moved to dismiss on April 29, 2024 (and Santos has to respond to the motion or amend the complaint by May 24, 2024). While we cannot know yet exactly what Santos will do in response to the motion, we can focus on the copyright claim pled and the motion made against that claim (and perhaps even blend in the fraud and contract arguments that may ultimately prove decisive).
Santos claims willful infringement by Kimmel, who does not deny rebroadcasting all or parts of the videos he solicited. The question is whether Kimmel’s broadcasting and posting is fair use. And as readers of this blogger know, we have repeatedly struggled here with fair use questions because that doctrine demands such fact-sensitive application and serves somewhat divergent interests. Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 577, 581 (1994)(“[t]he fair use doctrine thus ‘permits [and requires] courts to avoid rigid application of the copyright statute when, on occasion, it would stifle the very creativity which that law is designed to foster’” and the fair use inquiry requires that any particular use of copyrighted material “be judged, case by case, in light of the ends of the copyright law”). As Lloyd Weinreb noted, “fair use depends on a calculus of incommensurables.” Fair Use, 67 Fordham L. Rev. 1291, 1306 (1999). As he went on to say, “[t]he great objection to…fair use is that it affords no predictability” and “unpredictability is costly, if for no other reason than that it engenders litigation.” Id. at 1309.
Kimmel raises a solid fair use defense since commentary, criticism, and parody lie at the heart of what he did and at the heart of fair use, though other uses are recognized as typical fair ones by the Copyright Office, statute and judicial opinions (like those collected in the US Copyright Office Fair Use Index). Indeed, Kimmel asserts that his conduct “represented a “paradigmatic example of protected fair use” and “classic fair use” because his use involved “political commentary on, and criticism of, video clips created and disseminated by a major public figure.” Kimmel Memorandum of Law (“KMOL”) at 1-2. He argued that his works were transformative, and the use fair, even though he had used unaltered Santos cameo videos. Kimmel’s brief noted that “’faithfully reproduc[ing] an original work without alteration” can be transformative in light of the “altered purpose or context of the work, as evidenced by surrounding commentary or criticism.’ Grp. Mgmt. Servs. Ltd. v. Bloomberg L.P., 756 F.3d 73, 84 (2d Cir. 2014) (holding that publication of full audio recording of plaintiff company’s investor phone call was transformative fair use).” KMOL at 11. As Kimmel notes at KMOL at 13-14:
the Videos are the “target[]” of the criticism and commentary conveyed by the “Will Santos Say It?” segments. The “purpose” of using the Videos – to mock the shameless willingness of a former Congressman to make internet videos saying the absurd things requested of him while under indictment for theft and fraud – is “completely different” from Santos’ ostensible purpose in creating the Videos to congratulate or otherwise communicate with the requester’s friends or family. Indeed, the Supreme Court has recognized that biting – even offensive – mockery of public officials through “exploitation of … politically embarrassing events” has long “played a prominent role in public and political debate.” Hustler Mag., Inc. v. Falwell, 485 U.S. 46, 54 (1988). In short, the use of the Videos was for a specifically enumerated statutory purpose of criticism and comment and was highly transformative.
These arguments and the case law cited concerning similar late-night and comedy situations, leave the fair use assertion well supported. KMOL at 9-21. As one commentator notes, quoting from pages 1 and 9 of the motion papers, “’In this context,’ the motion continues, Kimmel’s decision ‘to test whether, even after being expelled and indicted, there was anything Santos would decline to publicly say in exchange for a few hundred dollars’ served as ‘a quintessential example of a fair use,’ since he was using the videos “to comment on and mock a controversial political figure to a broad audience.’”
But Kimmel will face some challenges here, as “fair” is an element of “fair use,” and he inspired the creation of these works under false pretenses. As Lloyd Weinreb also presciently observed (at 1308) in 1990, “[a]nother incommensurable element of fair use is what is typically referred to as ‘unclean hands’ but is, I think, more accurately described simply as fairness. That, I think, was the élément gris[e] that drove the factor analysis in Harper & Row [v. Nation Enters., 471 U.S. 539, 542-43, 562-63 (1985)]. As the Court perceived the facts, the editor of The Nation was a chiseler, a category only a little removed from crook or, in the nineteenth-century idiom, pirate-not so much because of the use itself but because of the manner in which he obtained the manuscript. If that perception is unchallenged, the case is over; theft is not a fair use. In the Hustler [Magazine, Inc. v. Moral Majority, Inc., 796 F.2d 1148 (9th Cir. 1986)], the centrality of plain fairness is even more apparent.” Additionally, Kimmel lured Santos into creating these videos and exposing himself to ridicule—while that in and of itself seems part of the comment and criticism on which Kimmel’s argument relies, it does not appear that Kimmel has some of the contractual protections that insulated Sacha Baron Cohen from liability after he induced Judge Roy Moore into an interview, another item that we have discussed here before.
As the section head notes, “Fair Use ⟥ A Fact-Sensitive Determination That ⟣ Easy,” as in “fair use will always be a fact-sensitive determination that will never be easy.”
∴ Stay Tuned As This Election Year Unfolds ∵ More IP ⊢ IP Issues Are Likely To Follow
The “therefore” ∴ and related “because” ∵ symbols illustrate the conclusion to be drawn from the forgoing—”therefore stay tuned as this election year unfolds because more interesting politics are likely to yield more intellectual property issues.”
The United States is among the minority of large economies in the world without a comprehensive national privacy law. In the absence of such a law, numerous states are filling the void with a complex assortment of often inconsistent privacy laws.
However, unexpected legislative developments in the U.S. House of Representatives will potentially resolve the challenges raised by the current patchwork of conflicting state laws. On April 7, 2024, House members announced a draft bill for the American Privacy Rights Act (APRA). The bill still has many hurdles to overcome and may ultimately share the same fate as prior failed attempts at a federal privacy law. But if enacted, the APRA would upend the U.S. privacy landscape.
The APRA’s intent is to “establish a uniform national data privacy and data security standard in the United States.” As such, it would expressly preempt state laws that cover the same requirements as the APRA. This means that comprehensive privacy laws, such as the California Consumer Privacy Act (CCPA), Colorado Privacy Act, Connecticut Data Privacy Act (CTDPA) and others, would be preempted, in whole or in part, in exchange for the federal law. State data broker laws in Vermont, California, Texas and Oregon would also likely be neutralized, since the APRA sets rules and requirements for data brokers, including the establishment of a national data broker registry.
There are, however, some notable exemptions to the APRA’s preemption standard that would preserve certain portions of states’ frameworks. Most important is the law’s exception for “provisions of laws that protect the privacy of health information, healthcare information, medical information, medical records, HIV status, or HIV testing.” This would allow the stringent requirements of the Washington My Health My Data Act and Nevada S.B. 370 to survive APRA’s passage. Recent amendments to the CTDPA that extend the law’s scope to “consumer health data” and “consumer health data controllers” would, in theory, also largely remain intact. Additionally, the APRA exempts “provisions of laws that address the privacy rights or other protections of employees or employee information,” which means that much of the CCPA could be salvaged to the extent that it applies to employee data.
The APRA applies to “covered entities,” which means any entity that determines the purposes of processing and is subject to the Federal Trade Commission (FTC) Act, including common carriers and certain nonprofits. Entities are exempt from the APRA, though, if they meet the criteria of a “small business,” expressly defined as an entity:
with less than $40 million in annual revenue,
that annually processes the covered data of 200,000 individuals or less (with exceptions relating to payment processing) and
that did not transfer covered data to a third party in exchange for revenue or anything of value.
The combination of the $40 million revenue and 200,000 individual thresholds would, in theory, exempt many businesses from the law’s scope. However, the additional criteria regarding transferring covered data to third parties “in exchange for revenue or anything of value” likely means that any online service that conducts targeted advertising would potentially fall within the law’s scope, no matter its size.
The APRA imposes obligations on covered entities with respect to “covered data,” defined as “information that identifies or is linked or reasonably linkable, alone or in combination with other information, to an individual or a device that identifies or is linked or reasonably linkable to one or more individuals.” These obligations include, but are not limited to:
Data minimization — Processing of covered data is generally prohibited unless it is necessary, proportionate and limited to specific products or services or communications expected by the individual or falls under one of the law’s enumerated purposes.
Transparency — Covered entities are required to publish a privacy policy, and material changes to such a policy requires advance notice to individuals and the means to opt out of further processing of any previously collected data that would be subject to those changes.
Consumer rights — Covered entities are required to offer individuals the rights of access, deletion and correction with respect to their data. Individuals also have the right to opt out of data transfers generally, as well as the right to opt out of targeted advertising.
Service providers and third parties — The APRA appears to have adopted the CCPA’s business/service provider/third-party approach in lieu of the controller/processor model followed by most comprehensive privacy laws. Covered entities must exercise due diligence in selecting service providers and in deciding whether to transfer covered data to a third party.
Data brokers — The FTC is empowered to develop a national data broker registry, and data brokers processing the data of 5,000 or more individuals must register annually. Data brokers are also required to have a public website that includes tools for individuals to exercise their privacy rights.
Additional obligations apply to covered entities that are “large data holders,” which are covered entities that have $250 million or more in annual revenue and process large amounts of covered data of individuals and devices (as statutorily defined). Large data holders are required to:
publicly post all privacy versions from the past 10 years,
publish annual transparency reports,
provide CEO-signed certifications of compliance to the FTC,
appoint data privacy and data security officers,
conduct biennial audits and privacy impact assessments and
submit impact-risk assessments to the FTC for certain algorithmic decision-making activities.
The APRA sets heightened rules for processing “sensitive covered data.” While the law’s definition of “sensitive” shares many similarities with the CCPA, CTDPA and other laws, such as government-issued identification numbers, race/ethnicity and health data, there are some surprising departures from the established norm at the state level. Sensitive-covered data under the APRA includes:
Precise geolocation information, which is defined not only to include accuracy up to 1,850 feet or less, but also information that reveals “street-level location information of an individual or device;”
Calendar information, address book information, phone or text logs, photos, audio recordings or videos intended for private use;
A photograph, film, video recording or other similar medium that shows the naked or undergarment-clad private area of an individual;
Certain transfers of information revealing the extent or content of any individual’s access, viewing or other use of video programming with respect to an individual’s vision or hearing impairment;
Certain information that reveals the video content requested or selected by an individual and
Information revealing an individual’s online activities over time and across websites or online services that do not share common branding or over time on any website or online service operated by a covered high-impact social media company.
This last element may be the most significant for the advertising industry since it would turn common-place retargeting on the internet into the processing of sensitive data. As a result, cookie banners may become much more prevalent as companies constantly seek consent from consumers to use their browsing data in this manner. While not required by law in the United States, cookie banners are already advisable due to the significant rise in class action lawsuits alleging violations of decades-old privacy laws (such as the Video Privacy Protection Act and California Invasion of Privacy Act) that require consent in certain cases.
The APRA’s consent obligations for sensitive data are less stringent than most of the state comprehensive privacy laws on the books. Although opt-in consent is required for any collection of biometric or genetic data, all other types of sensitive-covered data only require opt-in consent for transfers of such data to a third party.
The APRA would be enforced by the FTC, which would be empowered to create a new bureau to carry out its authority under the law. Violations would be treated as a per se unfair or deceptive practice under Section 5 of the FTC Act. The APRA is also enforceable by state attorneys general, who must notify the FTC prior to initiating a civil action in federal court.
Critically, the APRA would provide individuals with a private right of action for violations concerning:
opt-in consents to collect or transfer sensitive data,
making material changes to a privacy policy without providing notice and the ability to opt out,
an individual’s data access, deletion, correction or opt-out rights, including retaliation against an individual for exercising such rights,
data breaches caused by failure to adopt reasonable security practices,
failure to conduct reasonable due diligence over service providers and third parties that receive covered data,
discrimination based on protected characteristics and
certain obligations relating to algorithmic decision-making.
If passed, the APRA would largely supersede the intricate patchwork of state privacy laws, and set sweeping new standards for privacy regulation in the U.S.
While the law would simplify privacy compliance by reducing the number of laws to follow, it would also make compliance more challenging in some respects.
The APRA is still a long way from passage, and its survival is far from certain. Additional hearings and feedback from key stakeholders are expected in the coming months.
In 2023, the Federal Court of Canada released its decision in Energizer Brands, LLC and Energizer Canada Inc. v. Gillette Company (2023 FC 804). The decision clarifies some of the laws applicable to comparative advertising in this country and should guide the conduct of parties that engage in this form of commercial activity.
Energizer sued Duracell over a sticker advertising campaign that claimed that Duracell’s batteries lasted longer than their Energizer equivalents. The Duracell advertisements referred to Energizer both directly and indirectly with phrases such as “the bunny brand” or “the next leading competitive brand”.
Suppose you have a pending U.S. trademark application for your trademark on goods or services for your business and a term or wording in the trademark is descriptive of your goods or services. During the examination of your trademark application, the examining attorney refuses registration because the term is merely descriptive of your goods or services and requires a disclaimer. Should you always agree to the disclaimer because your trademark application will be passed onto publication? The answer is NO! and you should argue against the requirement for a disclaimer particularly if the descriptive term is a unitary or incongruous term or a double entendre.
First, how do you determine whether a term in your trademark is merely descriptive? “A term is merely descriptive if it immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used.” In re Bayer AG, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007) (citing In re Gyulay, 820 F.2d 1216, 3, U.S.P.Q.2d 1009, 1009 (Fed. Cir. 1987)). The terms in a trademark are merely descriptive in relation to the goods and/or services, and not in the abstract. Id. (citing In re Abcor Dev. Corp., 588 F.2d 811, 813-14, 200 U.S.P.Q. 215, 218-219 (C.C.P.A. 1978); In re MBNA Am. Bank N.A., 340 F.3d 1328, 67 U.S.P.Q.2d 1778, 1783 (Fed. Cir. 2003)).
Second, are descriptive terms subject to a disclaimer in a trademark application? According to 15 U.S.C. § 1052(e)(1), merely descriptive terms are unregistrable, and subject to disclaimer if the mark is otherwise registrable. Can an examining attorney require you to comply with a disclaimer requirement and add a disclaimer to the trademark application? Yes, an applicant can be required to disclaim an unregistrable component of a trademark otherwise registrable. Trademark Act Section 6(a), 15 U.S.C. § 1056(a). What happens if you don’t comply with the disclaimer requirement and add the disclaimer to the trademark application? Your trademark may be refused registration because you did not comply with a disclaimer requirement. See In re Omaha Nat’l Corp., 819 F.2d 1117, 2 U.S.P.Q.2d 1859, 1860 (Fed. Cir. 1987); In re Richardson Ink Co., 511 F.2d 559, 185 U.S.P.Q. 46, 47 (C.C.P.A. 1975).
Is there an exception to the disclaimer requirement? Yes, there is an exception to a disclaimer requirement based on the descriptive term being so merged with other elements of a composite mark, that they form a unitary, non-descriptive whole that renders a disclaimer unnecessary. In re EBS Data Processing, Inc., 212 U.S.P.Q. 964, 966 (T.T.A.B. 1981). What is a unitary, non-descriptive whole? “[A] unitary [phrase] simply has no ‘unregistrable component,’ but is instead an inseparable whole.” Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 21 U.S.P.Q.2d 1047, 1051 (Fed. Cir. 1991).
Under the USPTO Trademark Manual of Examining Procedure (T.M.E.P.) § 1213.05, a trademark or portion of a trademark is considered “unitary” when it creates a commercial impression separate and apart from any unregistrable component. The examining attorney must consider several factors in determining whether the term is part of a single or unitary trademark: whether lines or other design features physically connect it; the relative location of the respective elements; and the meaning of the terminology as used on or in connection with the goods or services. Dena Corp., 950 F.2d at 1561, 21 U.S.P.Q.2d at 1052.
Can the applicant argue against the disclaimer requirement in a pending trademark application with the USPTO? Yes, the applicant can always argue against the disclaimer requirement. To establish that a disclaimer is required, the examining attorney has to present evidence that the term is merely descriptive of the goods or services. The applicant should argue that the term is unitary, congruous, or a double entendre. The examining attorney is analyzing only the term to be disclaimed, never considering the trademark in full. The applicant should argue that by doing so, the examining attorney demonstrates why it is improper for unitary marks to be broken up into separate components to analyze whether a disclaimer is required. T.M.E.P. § 1213.05. The applicant may argue that based on the limited evidence of record, the USPTO has not met the difficult burden of establishing that the term is merely descriptive for the goods or services. See In re Merrill Lynch, Pierce, Fenner, and Smith, Inc., 828 F.2d 1567, 4 U.S.P.Q.2d 1141, 1143 (Fed. Cir. 1987). Descriptiveness is a fact-intensive determination, and any doubts are to be resolved in the applicant’s favor. Id.
However, can the argument against the disclaimer requirement be successful with the USPTO? In a recent case before the Trademark Trial and Appeal Board (“TTAB”), In re Ol Happ’s Place Restaurant, LLC, Serial No. 90738221, (Decided January 26, 2024) (Non-Precedent), the TTAB found that the wording “BARN AND GRILL” is unitary and a double entendre such that the requirement for a disclaimer of “grill” in BARN AND GRILL is unnecessary. In Ol Happ’s Place Restaurant, Ol Happ’s Place Restaurant, LLC, the applicant of the trademark application, sought registration on the Principal Register of a word and design mark
for “restaurant services; bar services”. The examining attorney refused registration based on the applicant’s failure to comply with a disclaimer requirement. The applicant refused to add a disclaimer of “GRILL” in the trademark application and appealed the final refusal. On appeal, the USPTO reasoned that the term “BARN AND GRILL” brings to mind a restaurant with a barn and a grill and also brings to mind the common term “bar and grill”. As such, the USPTO issued a decision finding that the disclaimer of “grill” was unnecessary, reversing the disclaimer requirement.
In summary, during the examination of a U.S. trademark application, an examining attorney may require an applicant to disclaim an unregistrable term of a trademark otherwise registrable if the term is merely descriptive of the goods or services. As a practice tip, the applicant should always argue against the disclaimer requirement because either the examining attorney has not established by sufficient evidence that the term is merely descriptive of the goods or services and/or that the term is unitary, incongruous, or a double entendre. In the alternative, if the applicant wants to comply with the disclaimer requirement, the applicant should state that it disagrees with the disclaimer requirement and that the disclaimer is being made under protest to the further prosecution of the application.