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Some years back, a young Kenyan graduate, working as an intern for a public state corporation, developed an innovative solution that earned his employer a global innovation award. However, his application for intellectual property rights was ignored by his employer, who continued to bask in the fame and glory of the global award.
Was the intern’s application for IP rights merited? The answer is yes, it was merited in Kenya’s Industrial Property Act No. 3 of 2001, specifically Part XIV, which outlines provisions for technovations—a little-known IP protection for employees in developing countries.
While the law generally provides ownership rights to employers over works created by their employees during the pendency of employment, the Kenyan technovation law provides an exception provided the employee meets a threshold set in statute.
Section 94 defines a technovation as a solution to a specific problem in the field of technology, proposed by an employee of an enterprise in Kenya for use by that enterprise and which relates to the activities of the enterprise but which on the date of the proposal has not been used or actively considered for use by the enterprise.
The Act goes on to set out when the right to a technovation award arises. Section 95 gives a technovator the right to receive a technovation award where his duties did not include making the technovation. Section 96-99 set out the process of awarding the technovation.
The technovator must successfully establish the above criteria before he can get a technovation and remuneration pursuant thereto. This is a domestication of the WIPO Model Law for Developing Countries on Inventions which has in-depth provisions on technovations. The policy thrust of technovations was to provide incentives to employees in developing nations and to stimulate talent. The law provides an incentive system where a qualified employee can be awarded for innovativeness.
Technology related: Technovations are only granted in the field of technology. Non-tech solutions such as strategy and administrative solutions do not qualify for the grant of a technovation. The law does not provide rewards for ideas, concepts, and proposals but rewards technological solutions
The technovation law in Kenya represents a unique and forward-thinking approach to intellectual property in developing nations. By providing employees with the opportunity to be rewarded for their technological contributions, it fosters innovation and encourages creative problem-solving within enterprises. As more countries develop their own frameworks for protecting intellectual property, technovation laws like Kenya’s may serve as a model for incentivizing innovation globally.
In a list of Music Industry Terms Every Artist Should Know, “One Sheet” is defined as a “single-page document that highlights an artist’s new music and summarizes their bio, stats, and achievements. It’s given to media, promoters, or anyone else who can further the artist’s career in some way — for example, by hiring them for a gig, interviewing them, or playing their music.” The term “rap sheet,” which means “a police arrest record especially for an individual,” is not in that glossary. But, as we will discuss in this post, those sheets are not as disparate as one may think, since criminal prosecutors have with increasing frequency relied on rap lyrics and other creative writing to prove criminal cases—and defense counsel and others are trying to fight against such use in the name protecting creative freedoms and artistic liberties. As we have here frequently discussed the nature of the creative process and what makes an artist an artist, it makes some sense to go beyond the portrait of an artist as a young coder to, for example, the portrait of an artist as Young Thug, who (as Jeffrey Lamar Williams) is himself now emersed in a lengthy criminal trial in which the court allowed the prosecution to use his lyrics as evidence that he committed or conspired to commit violent crimes.
In some sense, these issues are not new. We have previously explored here intellectual property law in criminal matters, for instance. Likewise, the New York Times wrote ten years ago about dozens of prosecutions “in which rap lyrics have played prominent roles,” either because “police say the lyrics represent confessions,” or “the lyrics are used to paint an unsavory picture of a defendant to help establish motive and intent,” or “increasingly, the act of writing the lyrics themselves is being prosecuted — not because they are viewed as corroborating an incident, but because prosecutors contend that the words themselves amount to a criminal threat.” Indeed, around the same time in 2014, the New Jersey Supreme Court decided State v. Skinner, where it reversed a conviction based in part on the admission of the defendant’s rap lyrics, noting:
In this case, defendant’s graphically violent rap lyrics could be fairly viewed as demonstrative of a propensity toward committing, or at the very least glorifying, violence and death. That prejudicial effect overwhelms any probative value that these lyrics may have. In fact, we detect little to no probative value to the lyrics whatsoever. The difficulty in identifying probative value in fictional or other forms of artistic self-expressive endeavors is that one cannot presume that, simply because an author has chosen to write about certain topics, he or she has acted in accordance with those views. One would not presume that Bob Marley, who wrote the well-known song “I Shot the Sheriff,” actually shot a sheriff, or that Edgar Allan Poe buried a man beneath his floorboards, as depicted in his short story “The Tell-Tale Heart,” simply because of their respective artistic endeavors on those subjects. Defendant’s lyrics should receive no different treatment. In sum, we reject the proposition that probative evidence about a charged offense can be found in an individual’s artistic endeavors absent a strong nexus between specific details of the artistic composition and the circumstances of the offense for which the evidence is being adduced.
The New Yorker wrote about this issue five years ago. Outside of the world of rap, other creative writers have over the years had their works cited against them as evidence of a crime, from Blake Liebel who was convicted of murder that tracked somewhat the crime described in his graphic novel Syndrome, to Krystian Bala, author of Amok, who authorities convicted of murder and torture like what he had described his book, to the serial arsonist and killer John Leonard Orr, whose novel Points Of Origin became evidence in at least one of his trials. In People v. Novak, the author of a fictional incest story had that work placed in evidence against him on molestation charges brought in Michigan. And, as far back as 2001, the defendant’s (non-rap) song lyrics were used in State v. Kosovich to achieve a murder conviction.
In fact, the notion of such proofs has even made its way into popular culture. For instance, in an episode (season 13, episode 17) called Genius of Law and Order, defendant Clay Warner is an author charged with murder, in part because of the similarity of the stabbing to what he described in his novel. Perhaps more to the point, in January 2005, in season 15, episode 13 (called Ain’t No Love), “Detectives Fontana and Green move to the beat of hip-hop when a legendary rapper is shot to death and evidence points to the victim’s young protege (as Shawn, Sean Nelson) who was known to be cutting his own music on bootlegged street CD’s, and more clues can be found in one song’s lyrics that describe a similar killing,” as one series’ guide notes, or that “Fontana and Green believe that the truth behind a rap legend’s murder may be found in some rap lyrics,” as another fan site recaps. On the flip side, Sharon Stone’s character in Basic Instinct claims that the similarity between her book and the crime being investigated presented an alibi, noting that “I’d have to be pretty stupid to write a book about a killing and then kill somebody the way I described it in my book. I’d be announcing myself as the killer. I’m not stupid.” So clearly one could argue such evidence both ways, and can do so in fiction.
Though not new, this question is a recurring one. As recently as March 2024, the Supreme Court of Iowa upheld the conviction of a defendant based in part on admission of a rap song voiceover with a recorded song in the background. A lower appellate court had held the admission of such evidence improper and prejudicial, noting that “we will not imbue meaning to Canady’s rapping along to a popular diss track that includes several names, including one that sounds like the name of a decedent. Common sense tells us that people often sing and rap along to songs without those songs being autobiographical. Cf. State v. Leslie, No. 12-1335, 2014 WL 70259, at *6 (Iowa Ct. App. Jan. 9, 2014) (finding the presentation of a rap video would have been unduly prejudicial where ‘there [was] certainly no evidence that everything [the decedent] mentioned in the rap videos reflected his personal life).” Likewise, in 2023, both the New Jersey State Bar Foundation and the American Bar Association published pieces on the use of rap lyrics as evidence in court, with each calling for the admission of such evidence to be “severely curtailed,” and others have gone even further that by calling for a total ban on the evidentiary use of such lyrics, while law enforcement personnel in Nevada were claiming the songs could amount to confessions. As commentators noted in April 2024, a study has shown that in the United States “almost 700 cases since the late 1980s where rap lyrics have been used as evidence, usually against criminal defendants,” has occurred for 240 defendants in the UK (an added reference since this is an ILN piece), and these same trends are the subject of a recent documentary film and are being tracked in a case compendium. Just last month a federal court made submission of lyrics before they are recorded or performed a condition of a rapper’s parole, and we are awaiting a decision on a rap lyrics case from the Supreme Judicial Court of Massachusetts in Commonwealth v. Carlos Colina, SJC-13260, a case argued in April 2024.
This blog is usually more about intellectual property rather than admissibility of evidence in criminal cases or about the politics of prosecutorial strategy/discretion or artistic cultural suppression. And we will turn shortly to the nature of the creativity at stake, just as we have in discussing AI and other areas where the nature of the creative contribution in many ways determines how (and to what extent) it is afforded protectability. But first, we will note that rap seems to have the particular attention of prosecutors, as noted in several places including at least three law review articles, which can be seen here, here, and here, the last of these relating to UK rather than US cases. [In fact, there is even a law review piece comparing the US/UK experience]. We will also note that some states, like California, have attempted to address these questions of admissibility and bias through legislation such as the Decriminalizing Artistic Expression Act, which allows for admission of such lyrics after judicial review where directly relevant, not unduly prejudicial, and unlikely to interject racial bias into the proceedings.
In fact, the House Judiciary Committee is considering a federal version of that act, and it has drawn great attention and interest. Examining that proposed federal act is how we return to the intellectual property subjects so often the focus of this blog. Though it is proposed as Rule 416 of the Federal Rules of Evidence to be applicable in federal criminal and civil cases, its application would depend on the nuanced application of intellectual property concepts concerning “creative or artistic expression,” see proposed Rule 416(a) and (e), defining what is “original,” see proposed Rule 416(b)(1)(A), and what is “derivative,” see proposed Rule 416(b)(1)(B), and determining whether the creator of an “original” work “intended to adopt a literal rather than figurative or fictional meaning.” See proposed Rule 416(b)(1)(A). These are, from an artistic and intellectual property perspective, concepts not so easily reduced to binary decision-making.
First, let us look at the concept of “creative or artistic expressions.” The proposed rule would define such expressions as the “application of creativity or imagination in the production or arrangement of forms, sounds, words, movements or symbols, including music, dance, performance art, visual art, poetry, literature, film, and other such objects or media.” Proposed Rule 416(e). While “imagination” may suggest the presence or possibility of fiction, nothing in that proposed definition precludes autobiographical and factual content, even if one uses creativity and imagination in coming up with the words and images through which to depict those facts. That is, in large measure, the whole point of Sidonie Smith and Julie Watson’s recently published Reading Autobiography Now: An Updated Guide for Interpreting Life Narratives (2024), where it is noted that:
When life narrators write to chronicle an event, explore a certain time period, or to enshrine a community, they are making history in a sense. But they are also performing several rhetorical acts: justifying their own perceptions, upholding their reputations, disputing the accounts of others, settling scores, conveying cultural information, and inventing desirable futures, among others. The complexity of autobiographical texts requires reading practices that engage the narrative tropes, sociocultural contexts, rhetorical aims, and narrative shifts within the historical or chronological trajectory of the text.
Since something can be expressly autobiographical, accurate, confessional, and creatively and imaginatively expressed all at the same time, the evidentiary value of such expressions will continue to be appraised, as prosecutors seek to use rap “to show evidence of confession, knowledge, motive, or intent,” and “[o]ccassionly, the lyrics themselves are the crime,” in the form of alleged threats or intimidation. But, as discussed further below, even the assertedly autobiographical may not be fully or unquestionably factual.
Second, defining what is “original” and what is “derivative” has taken great amounts of time and attention in this blog, and more generally in the US courts, including the Supreme Court. For instance, we have discussed here and repeatedly the ways in which more recent works can have great levels of creativity and originality while (or without) being derivative in the copyright sense, or at least while being transformative in the copyright sense. Having evidentiary admissibility in a criminal matter balance on the somewhat abstract questions of what is “original” seems like a challenging predicament for prosecutors and criminal defense counsel not schooled in such IP analysis. For instance, Andy Warhol Foundation Visual Arts v. Goldsmith, 143 S.Ct. 1258, 1283-84 (2023), noted both that determining whether a work is sufficiently original to be deemed a separate copyrightable work “cannot turn merely on the stated or perceived intent of the artist,” and that the “subjective intent of the user” cannot legally “determine the purpose of the use.” Just these sorts of holdings in the intellectual property context have already led me to have noted elsewhere the difficulty courts have in either relying on or ignoring, “the subjective intent of the person creating the derivative work.”
Despite such difficulties, the proposed Rule 416 would place that subjective intent at the center of the admissibility test. Further, where a later artist intends a new work as an homage or pastiche to earlier artists or works, the question of originality is not at all clear, as I have discussed before. In fact, as Nicholas Booth has noted, these problems are compounded in music because “Music is a strange art space…since it is possible for musical works to borrow from the same musical concepts while retaining their distinct uniqueness.” In other words, it can be, and in some sense always is, both derivative and original. [To further explore these notions, see the excellent and extended discussion in Rap Lyrics as Evidence: What Can Music Theory Tell Us? by Stoia, Adam, and Drakulich (discussing rap lyric formulas and placing them in musical and social context)]. That duality certainly complicates the tests provided in the proposed rule, and a court’s resort to intellectual property cases dealing with such concepts may, unfortunately, cloud (rather than clarify) the analysis.
Similarly, the proposed rule has slightly different tests for assessing original and derivative statements. As to the former, it asks whether “defendant intended a literal meaning, rather than figurative or fictional meaning” and, as to the latter, whether “the defendant intended to adopt the literal meaning of the expression as the defendant’s own thought or statement.” In rap, dependent as it is on sampling and other forms of repetition and echoing that have evolved in light of sampling challenges, the original/derivative distinction is not always clear, as even the most original compositions still must conform to the genre’s lyric formulas. Further, in the derivative context, asking whether one intended to adopt “the literal meaning” of another’s statement assumes that there is a singular literal meaning assigned to the earlier work separable from associated fictional or figurative meanings. That is not a good assumption, as rappers “use slang ..and that slang evades precise, static definitions,” making “this complex wordplay …especially ripe for misinterpretation; as an art form that is meant to be heard, not read, those layered meanings can get lost during a literal analysis,” according to Lucy Litt (at 136). Further, rappers are not necessarily conveying personal knowledge, but rather are perpetuating shared and accumulated cultural experience:
Indeed, rap artists have been likened to griots, West African oral historians, who serve as ‘the keepers and purveyors of knowledge’ by spreading stories of culture and tradition through poetry and spoken word.
[Araibi, “Every Rhyme I Write”: Rap Music As Evidence In Criminal Trials, 62 Ariz. Law Review 805, 813 (2020)]
Rappers created from what they saw and understood, and that is not the same as saying that they themselves did all such things, even if, for creative reasons and emotional impact, they deployed “first-person street reporting” in telling their artistic truths. Id. at 814. This emerges sometimes from lyrics alone, and other times especially from the merging of the lyrics with video, as seen in Nas’ One Mic where the lyrics that seemed first-person were combined with a recreation of 1976 Soweto (where Nas appears as an adult though Nas would only have been three years old at the time) in a manner that “gives voice to the voiceless,” of which Nas has never been one.
Third, determining whether the creator of an “original” work “intended to adopt a literal rather than figurative or fictional meaning” is perhaps the most challenging of all. That very question assumes that works of creative expression have singular intent or meaning. Yes, Moby Dick is a story about a whale and whale hunting, and in the unabridged version the level of excruciating factual detail about the whale hunting process can have a numbing effect. But it is also a work that imbues figurative import to such factual details and settings, and it mispresents the text and the author’s intention to say that it only has one (factual) or the other (figurative) meaning:
Moby Dick is a long book about, ostensibly, the search for a single whale by a single ship in the vast oceans of the world. However, it is more than that: it is the story about humanity and its search for meaning in a world which, by the 19th century, was becoming smaller, and more mechanized, and more disconnected from the world which had given birth not only to humanity, but Western civilization.
[Stell, We Are Ahab–Both Hunter and Hunted. A Book Review of Moby Dick(2018)]
Though one can perhaps discount the relevance of that observation of dual meaning because Melville is writing fiction, the same is true of The Autobiography of Malcolm X, where those like Judith Misrahi Barak have noted (at page 41 of Revisiting Slave Narratives II) that this autobiographical work nonetheless has “multiple levels of narrative voices that emerge.” Indeed, in the previously-cited Sidonie Smith and Julie Watson’s work on Reading Autobiography Now: An Updated Guide for Interpreting Life Narratives (2024), they noted that “To reduce autobiographical narration to facticity is to strip it of its rhetorical, literary, ethical, political, and cultural dimensions.” This is borne out in reviews of Nas’ One Mic, where one critic noted the shifting perspective within the song itself depicted “urban claustrophobia distilled and digitized, with Nas’s reportorial eye zooming in on a detail, then pulling back to a panoramic overview.” That shifting becomes even more pronounced when the video is understood as part of the presenting perspective and artistic intent. Thus, as noted above, the proposed rule’s test becomes complicated when literal meaning and first-person experience are only one of several (perhaps partial) meanings attendant to what is, on the surface at least, intended to be both autobiographical and more generally applicable.
Where one cannot even reduce the expressly autobiographical to facticity, it is hard to see how a court can apply a test requiring it to construe rap music lyrics under almost any circumstances as straightforward intentional statements of simple fact. “Rap is an art form that often distorts or exaggerates reality,” as Lucy Litt has noted (at 121), and “is replete with layered meanings and ‘complicates or even rejects literal interpretation,’” (Litt at 136, quoting Henry Louis Gates, Forward to The Anthology of Rap, at xxv) because it depends on “[h]yperbole, bravado, and extreme language.” (Litt at 136) This all makes evidentiary reliance on such lyrics problematic. Those problems arise precisely because reliance on what an author intended as to meaning has never been a standard that has worked in the intellectual property law context.
To that same point, the rap subgenre of drill music depends on an “explicit, confrontational style of lyricism and association with crime in Chicago,” but, as has been noted (by Litt at 133), “drillers have been known to use their explicitly violent lyrics and drill music personas as part of a larger strategy for avoiding physical violence in their daily personal lives” and “’quite a few [young men I met] first began displaying and representing violent criminality on the internet as part of their efforts to reduce their involvement in such behavior in their offline lives. They saw digital production as a means to escape street life.” Again, this suggests that to the extent discernable from the work itself, a figurative or fictional meaning is often intended, even if rappers “often stay in character when their ‘performance’ or recording session ends,” as Litt notes at 135 (comparing rappers to professional wrestlers).
Rap artists themselves have even acknowledged this fiction in their lyrics, such as when Dead Prez rapped in a song all-encompassingly named Hip Hop that “I’m sick of that fake thug, R&B-rap scenario all day on the radio/Same scenes in the video, monotonous material.” In the end, as Professor Erik Neilson noted on The PBS Newshour (at 6:19):
[voice over:] Rappers are creating characters, not writing diaries
[Neilson:] That is the most important distinction that seems to get missed. There is an author and a narrator. We seem to be able to grasp that concept with every other art form that uses the first-person narrative, but [with] rappers, who go the extra mile to signal that they are inventing a narrator with the use of a stage name, we still revert back to this idea that they’re the same; we conflate the two.
In a similar vein, another commentator noted rap is a world that blends fact and fiction, leaving it in many ways unreliable as courtroom evidence:
It is true that these artists used their experiences to “keep it real,” but the Gangster Rapper—the persona that drew the ire of a nation—was less a portrait of any real person and more a product of artistic hyperbole. It is a professional identity that artists continue to adopt today. Therein lies the first persistent myth about rap: the assumption that the events detailed in the music are wholly factual.
When Ice-T released his single “6 ‘N the Mornin,” he woke the music world up to gangster rap. The song told the story of a man from Los Angeles who narrowly escapes a police raid, beats up a woman, starts pimping, gets arrested with an Uzi and a hand grenade, stabs another inmate in the eye, and eventually serves seven years in prison. Regardless of what one thinks about the art, the song was only semiautobiographical. Ice-T later called his music “faction”—a blend between fact and fiction. The pure truth of the story was less important than the gravity of it. The shocking lyrics and perceived authenticity of it all brought attention to the harsh realities of people living in “the hood.”
***
The fact that rap music, unlike a diary, is an art form that is influenced by innumerable things makes it particularly difficult to identify the cutoff between reality and hyperbole. Likewise, the extent to which artists adopt the gangster rapper persona and the fact that the themes common to rap music—drugs, gangs, and violence—line up with criminal statutes further complicate the equation.
[Araibi, “Every Rhyme I Write”: Rap Music As Evidence In Criminal Trials, 62 Ariz. Law Review 805, 815, 828 (2020)(emphasis added)]
Ultimately, the setting in which this well-intentioned proposed rule of evidence makes its application in real cases difficult.
Beyond the intellectual property connotations of its terms being ones that are still being defined through the evolution of case law, the proposed rule would actually introduce new considerations to evidentiary weighing. The rule is triggered off an intent inquiry that would be unique under the Federal Rules of Evidence. Though those rules use the word “intend” or “intent” 19 times, only in Rule 801(a) is the statement maker’s intent a trigger for admissibility:
(a) STATEMENT. ‘‘Statement’’ means a person’s oral assertion, written assertion, or nonverbal conduct, if the person intended it as an assertion.
[Federal Rules Of Evidence, December 1, 2023, at 17]
and that trigger relates to “nonverbal conduct.” Even in Rule 801(a), the rule only asks if the nonverbal conduct was intended to have communicative force, and does not probe as a matter of admissibility what the intended communication was. That is left for the fact finder. In the proposed Rule 416, however, the court must determine whether the statement maker intended any original statement to be literal or figurative, and if an adopted statement whether “the defendant intended to adopt the literal meaning of the expression as the defendant’s own thought or statement.” That is simply not an inquiry like one made at the admissibility stage under any other rule of evidence. [Some might claim that Rule 501(a)(1) also requires examination of the statement maker’s intent; I disagree, and I have a truly remarkable proof of this difference, but this parenthetical is too small to contain it, other than through this allusion to Fermet’s Last Theorem]. Moreover, the proposed rule does not say expressly that “figurative” statements are automatically precluded, though that would be the implication. This too suggests that the proposed rule still needs work, or at least thought, before it can be adopted or used.
In the end, rap lyrics’ multi-level meanings make them difficult to use as evidence. As one critic noted in the aftermath of Warhol, “[t]here is no art school teaching artists to create works for single, defined, hermetically sealed, lawyer-approved uses…Artists make art, not use cases.”
That includes rap artists.
In her recent decision in Caporaso Pty Ltd v Mercato Centrale Australia Pty Ltd [2024] FCA 138 (Caporaso v Mercato), the Honourable Justice Charlesworth of the Federal Court of Australia has demonstrated how Australian courts approach the use of non-English words as trade marks in Australia.
The applicant in Caporaso v Mercato, Caporaso Pty Ltd (Caporaso), owns several registered trade marks comprising or incorporating the word mercato, meaning ‘market’ in Italian. Those marks are registered in respect of several classes of goods and services, including but not limited to services for providing food and drink and retail services.
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.”