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THAT’S NOT TRUE: Thoughts, Novel or Not, On Truth, Context, & Defamation

Defamation cases are hard ones in the real world.

Recent US matters involving Dominion Voting, Sara Palin, and even Cheetos show that these cases continue to interest the general public as well as legal cognoscenti. Resolving these lawsuits is dependent on understanding concepts of truth, accuracy, fact, opinion, and all manner of issues that define the context of the statements at the root of the claims. As one U.S. court noted in upholding the dismissal of a defamation claim, the law “provides redress for injuries to a person’s reputation…caused by statements that ‘tend[] to expose a person to hatred, contempt or aversion, or to induce an evil or unsavory opinion of him in the minds of a substantial number in the community,’” but “a threshold issue for resolution by the court is whether the statement alleged to have caused plaintiff an injury is reasonably susceptible to the defamatory meaning imputed to it.” As the court went to note in that case, Levin v. McPhee, 119 F.3d 189, 195 (2d Cir. 1997), “[t]he court’s threshold inquiry is guided not only by the meaning of the words as they would be commonly understood but by the words considered in the context of their publication,…as well as ‘from the expressions used as from the whole scope and apparent object of the writer.’” In the end, to succeed, a defamation suit plaintiff “must prove that the defendant published a false, defamatory statement ‘of and concerning’ the plaintiff with a certain degree of fault,” as one source summed it up. To paraphrase my opening above, “[f]amously, defamation cases are hard for plaintiffs to win, and purposefully so,” and this is especially so in the United States.

Defamation cases are even harder in fictional worlds. (I am not talking about suits in the raising claims of defamation of avatars in virtual worlds. While commentators have long sought to justify applying real-life consequences to Second Life settings and its avatars or to protect as important online gaming personas, and more recently have repeated such musing as to virtual reality platforms and other augmented reality forums, these settings seem one step further removed from what should come into our courts.)

I am talking about cases, somewhat frequently filed, where a real person claims that a novel, television show or other fictional work defamed them. Those are hard cases legally and raise all manner of interesting issues as to what “fact” and “truth” mean in many settings. See, e.g., Robert Richards analyzed them in some detail in When Ripped from the Headlines Means See You in Court: Libel by Fiction and the Tort-Law Twist on a Controversial Defamation Concept at 121 (“’[t]he gradation from fact to fiction in creative works—or more likely, from representational fact to fact-infused fiction—raises difficult issues about the balance between private rights and First Amendment interests.” The difficulty of so-called “libel by fiction” cases struck me recently (though not for the first time, albeit there more as a matter of copyright and publicity rather than defamation) when I read that Nona Gaprindashvili recently settled the earlier lawsuit that she had brought against Netflix over The Queen’s Gambit, a fictional streaming series based on a 1983 eponymous novel set in the 1960s chess world.

Nona Gaprindashvili sued Netflix in September 2021 for “false light invasion of privacy” and defamation after a line in the hit series stated that she “never faced men” at the chessboard. In reality and in the novel that was the series’ source material, Gaprindashvili faced male opponents in chess matches during her career, including three world champions (grandmasters Mikhail Tal, Boris Spassky, and Viswanathan Anand), and in fact, the novel on which the series was based had said “[t]here was Nona Gaprindashvili, not up to the level of this tournament, but a player who had met all these Russian Grandmasters many times before,’” as a commentator noted. Gaprindashvili had leverage to settle that case because a California federal district court had ruled in 2022 that “[a]s an initial matter, Netflix does not cite, and the Court is not aware, of any cases precluding defamation claims for the portrayal of real persons in otherwise fictional works. On the contrary, the fact that the Series was a fictional work does not insulate Netflix from liability for defamation if all the elements of defamation are otherwise present.”

It does not seem to me that all of the elements of defamation are ever so present in an avowedly fictional work. I understand that the Gaprindashvili, and that California court (at 11-14) in its opinion, obviously disagrees with my conclusion. I am going to talk it through anyway.

Before jumping back into discussing that case directly, it is important to discuss defamation law a bit and to discuss the concepts of “fact” and “truth” that create the context in which one must assess how defamation and the novel evolved together. The “civil tort of defamation provides a legal forum where truth can be separated from fiction,” as Sean Latham wrote in The Art of Scandal: Modernism, Libel Law, and the Roman a Clef (Modernist Literature and Culture), 1969 (Kindle Version), at Location 1218. That plays directly into the “basic generic distinction between history and fiction”:

The former…”is a narrative discourse with different rules than those that govern fiction. The producer of a historical text affirms that the events entextualized did indeed occur prior to entextualization. … We thus recognize historical narrative primarily by a shared assumption that it is always a secondary description of events that preceded its narration. …Fiction, however, is “certainly otherwise, for in fiction the events may be said to be created by and with the text. They have no prior temporal existence, even though they are presented as if they did.

[Latham, supra, at Location 239]

Defamation law’s distinction between fact and fiction thus played a role in the rise of the novel:

libel laws played a vital institutionalizing role in the novel’s rise during the eighteenth century, effectively creating a set of legal definitions designed to separate political discourse from fictional invention.

***

This legal distinction between fact and fiction created the consensus upon which the growing autonomy of the nineteenth-century aesthetic sphere was staked, consequently forcing, as Davis concludes, “writers who wished to write about the world away from such overtly political modes as the one offered by the newspaper and toward a more protected form of writing” such as the novel.

[Latham, supra, at Locations 1219, 1223]

Interestingly, in light of the whole libel by fiction category, the novel originally evolved in part as a fictional genre thought to “afford[] authors a vital degree of legal protection,” Latham, supra, at 1247. The Gaprindashvili decision expressed a contrary approach.

The title of this piece purposely plays on that fact/fiction border and the idea that “truth” is a defense to, and untruth a requirement for, defamation. Viscerally, the very idea that the statement at issue here—that Gaprindashvili “never faced men”—was untrue would seemingly establish the first element of a defamation claim, namely that the statement was an untrue assertion of fact. While the statement is untrue, so is everything else in The Queen’s Gambit in a very real sense. It is a work of fiction, and for a defamation action “to be viable, it must be based on an assertion as fact material which is false or the implication of an assertion of fact which is false,” as noted in Winter v. DC Comics, 121 Cal. Rptr. 2d 431, 438 (2d App. Dist., 4th Div. 2002)(citing Milkovich v. Lorain Journal, 497 US 1, 18 (1990), and affirming dismissal of defamation claims related to comic book depictions). Thus, while untrue, it is hard to imagine that the contents of a novel would ever be seen as “an assertion of fact.” Richards, at 133 (“works of fiction, regardless of their resemblance to reality, are, at core, not real.”); O’Neil, Fiction, Defamation, and Freedom of Speech, at 866 (“Even when they do put real people in their stories and depict them as doing bad things, the audience is still usually meant only to imagine the real people doing bad things.”) (emphasis in original), and 871 (“the content of fiction is paradigmatically invented or made up”). So the cry that “that’s not true” is far from a damning admission establishing an element of the claim; rather, it is an observation establishing that that phrase means something very different than the words convey no truth–the screenwriter’s goal here was not what’s true as a factual assertion, but what expresses, though fictional, an artistic truth.

That was the “whole scope and apparent object of the writer” of this line in the series, and courts should perhaps recognize that works of fiction are “not produced in a way that is reflective of the world as it actually is,” as Sara Worth notes (with her own emphasis), and as I noted recently as to rap music.

Therein lies the rub. In courts, truth and fact are oft’ viewed as synonymous concepts. While Flannery O’Connor’s notes that “the basis of art is truth, both in matter and in mode” and

Keats’ that “Beauty is truth, truth beauty./That is all ye know on earth and all ye need to know,” “fact” and “truth” are not synonyms in the creative world. This dichotomy is well exemplified in Melville’s line in Moby Dick that “Queequeg was a native of Rokovoko, an island far away to the West and South. It is not down in any map; true places never are,” as I have mentioned in the past.

Artists are much more concerned with such “truths” than with particular accuracy as to the “facts,” and admit to their disjuncture:

Maybe art does not capture the truth, by which I mean some form of ongoing, lasting, unchanging truth. That seemed clear with respect to the changeability of human perception. Perhaps our answer is this: Art is just a momentary glance. And in this nanosecond of capture, we get some sort of momentary reality. I think Dutch still life paintings are much like this because we are aware that the food will rot, the dog, the monkey and the parrot will leave, and so forth.

***

But perhaps there is another route. Even if we paint the world as we see it, we may accept that others see it somewhat differently. Even so, we may suggest that there is still something important that is shared in the art. Considering Monet’s cathedral we get a feeling of the day, of the light he captured from his apartment window as he looked across the square to the building. I have pointed out what I think is the Platonic view versus the Aristotelian view of the world. On one hand Plato said an artist was “an imitator of images and is very far removed from the truth” (Republic X, 27). On the other hand, Aristotle said, “The aim of art is not to represent the outward appearance of things, but their inward significance.” (Attributed to Aristotle by Seneca in On Tranquility of Mind).

I think that often art does function metaphorically, and we realize some truth through it.

[Christopher Willard, Art: The Lie That Tells The Truth, Medium, September 24, 2019 (emphasis in original)]

In the Queen’s Gambit screenplay, having a chess talent like Gaprindashvili excluded in that fictional world from competing with men spoke to the writer’s non-factualized truth and the subjective truth of that art for others. As “Pablo Picasso stated in a letter of 1923 to Marius de Zayas, ‘We all know that Art is not truth. Art is a lie that makes us realize truth.’” To make the artistic point, the series bent the actual truth, and maybe Gaprindashvili in that sense was not defending her real honor in the California suit but the honor of some identically named avatar in a fictional world of another’s creation. It seems unnecessary to support such defamation actions, as noted above.

Of course, there are countervailing considerations with letting fiction writers totally off the hook for getting the “facts” right. In many ways, the Gaprindashvili case was an easy, focused one, dealing with a passing reference to a real person and a single factual difference between that person’s real and fictitious history. There was no doubt, therefore, that the statement was one that on its surface seemed unassailably to be “of or concerning” Gaprindashvili. In other contexts, though, even such basic and directed facts may not establish a defamation claim. We see this, as one commentator notes (at 880-81), in the case brought against the movie American Hustle, where a fictional character’s untrue statement about a specific real person was held non-defamatory because “the audience ‘would not expect anything [that character] says to reflect objective fact.”

The more troublesome cases come from works that (arguably) track much more of a subject’s real life, then deviate, perhaps with a name change or biographical detail, to create a widely different series of defamatory acts attributed by the reader or viewer to the model for the character as well as the character. Such so-called “libel by fiction” cases have existed for some time, and have been analyzed by many including Robert Richards in When Ripped from the Headlines Means See You in Court: Libel by Fiction and the Tort-Law Twist on a Controversial Defamation Concept, Matthew Savare in Falsity, Fault and Fiction: A New Standard for Defamation in Fiction, and more recently by Collin O’Neil in Fiction, Defamation, and Freedom of Speech. So while I remain in the camp to which “the concept of defamation in fiction seems counterintuitive,” as Savare recognizes (at 131), I see the need to continue the discussion.

One may believe that the authors who want to create fiction should go all in, and not use the crutch of patterning a character after a real person. As the court noted in Carter-Clark v. Random House, a defamation case arising out of the publication of Primary Colors, “[f]or a depiction of a fictional character to constitute actionable defamation, ‘the description of the fictional character must be so closely akin to the real person claiming to be defamed that a reader of the book, knowing the real person, would have no difficulty linking the two. Superficial similarities are insufficient * * *.’” But, as counsel in one libel case told a jury, this becomes a tempting way to write a story: “One of the easiest ways to make a lie believable is to surround it by truth…[t]he more facts you put around the lie, the more believable it becomes, and that the most effective way to tell a story.” Richards, at 121. Thus, some safeguards appear necessary.

Though, as E. T. Wuddah notes in Defamation Law: A Comparison Of The Law Of Defamation In The Republic Of Ireland And In The United States Of America, 13 FAU Undergraduate Journal 80, 81 (2024), “what constitutes defamation differs over time across different societies…influenced by factors such as religion and culture,” this discussion of more modern US defamation law considerations exists against a backdrop of English and, especially, Irish law and experience. Wuddah, supra, at 84. Focusing on the example of James Joyce’s Ulysses, Latham describes Joyce’s fact-heavy fiction as purposely courting defamation claims:

This use of real names and places, in fact, accounts for some of the peculiar pleasures of Joyce’s text, encouraging readers not only to track references to real people and places in the 1904 Thom’s Directory but to follow the fictional paths of Bloom and Stephen minute by minute and step by step as they make their way through Dublin… Joyce famously declared Ulysses so accurate that “if the city one day suddenly disappeared from the earth, it could be reconstructed out of my book.””

***

Just as Joyce deliberately provoked the encounter between law and literature when writing about both obscenity and copyright, so too did he engage the civil statutes of libel that sought to regulate the novel’s engagement with fact.

[Latham, supra, at Locations 1422-23, 1427]

This was Joyce’s chosen artistic aesthetic it seems, adopting despite (or perhaps because of) the associated risk:

In 1912, however, the “nicely polished looking-glass” Joyce hoped to hold up to his native city finally proved too accurate in its fidelity, its intricate details rendering suddenly hazy the increasingly unstable bar between fact and fiction…Roberts and Maunsel, after all, were correct: by using real names and places of business, the stories did run the very real risk of incurring any number of potentially very damaging lawsuits.

***

[The use of real names and places] has by now come to seem an integral part of a distinctly Joycean aesthetic in which fictional events are deeply and perhaps inextricably embedded in the historical realities of Edwardian Dublin.

[Latham, supra, Locations 1469-71, and 1485]

Lest one miss that point, Latham pounds it home:

Given his own abrupt introduction to defamation law, there can be little doubt that Joyce knew what he was doing when he began to fill Ulysses with a staggering array of very precise information about his native city. Unlike the stories in Dubliners, which mention only a few public houses and a railway company, Ulysses invokes a vast array of names ranging from individuals to businesses to commercial products.

***

Throughout Ulysses, Joyce deliberately and provocatively invokes this genre to probe the boundary between fact and fiction, thereby pitting legal and aesthetic modes of interpretation against one another in a scandalous yet creative conflict.

***

Rather than concealing its engagement with historical reality as Victorian novelists typically did by decorously avoiding the names of real people, Joyce uses the roman a clef to destabilize the autonomy of art and the increasingly fraught legal institutions designed to maintain a critical distance between fiction and fact.

***

In Ulysses, therefore, Joyce created a work that is blatantly libelous yet seeks to elude that charge in its misdirected names, its aesthetic difficulty, and its deconstructive ironies.

[Latham, supra, Locations 1510, 1574, 1606]

While the obscenity challenges faced, for example, by James Joyce’s Ulysses have greater notoriety, see Latham, supra, at Location 1609, Latham observes that defamation law was the field in which one saw the “turbulent encounter between literature and the law” because “the tort of defamation-by legally separating fact from fiction-provides the framework through which a particular piece of writing is presumed to be pure invention and thus without financial, legal, and moral consequence for living individuals. Despite the fact that libel thus essentially constitutes the law of fiction, however, its importance in shaping modern literary production has been almost entirely ignored.” Latham, supra, at Locations 1146 and 1228-30.

Indeed, it’s been said that the “Irish public [ha]s [a] ceaseless fascination with defamation actions.” (In fact, Ireland is presently considering an overhaul of its defamation law). In older governmental reports, the Irish had examined, in the defamation context, “the peculiar considerations which governed two particular types of factual statements, the first being the fictional …,” and even considered a “proposal that there should be a complete ban on defamation proceedings in respect of fictional works, unless the plaintiff could point to special circumstances which would cause the recipient to suspend his or her belief that the work was fictitious.” That proposal was rejected in favor of a different remedy, namely one that the Irish defamation report described by noting that “the problem in relation to works of fiction might be more appropriately met by imposing a more stringent test of identification where defamatory matter appeared in a fictional context.” Consequently, the Irish “invited views as to whether, in cases involving defamatory matter contained in a fictional context, the ordinary requirement of identification should be supplemented by a requirement that the matter be reasonably understood as referring to ‘actual qualities or events involving the plaintiff.’”

This Irish suggestion makes sense to me. It seems “to strike a balance between two of the rights in the Irish Constitution: freedom of expression and the right to a good name,” as Wuddah notes (at 83, citing Irish Constitution, Art. 40.6.1 for freedom of expression and Article 40.3.2 on requirement that Irish government “shall, in particular, by its laws protect as best it may from unjust attack and, in the case of injustice done, vindicate the life, person, good name, and property rights of every citizen.” (emphasis added) Though the US Constitution does not have that latter express protection, there is a recognition here that one is entitled to protect his or her reputation.

While I can accept the need to protect real people from being defamed in fictional works circulated in the real world, I agree with the Irish suggestion, Richards and others that plaintiffs in libel by fiction cases need to meet a higher standard “to protect the integrity of the creative process,” Richards, at 134, and to avoid any approach that would “have the unintended effect of reinstituting strict liability for defamation of works of fiction,” as once seen in the United Kingdom and the United States. Berna Warner-Fredman, Defamation In Fiction: With Malice Toward None and Punitive Damages for All, 16 Loyola Of Los Angeles Law Review 99, 101 (1983)(citing Hulton & Co. v. Jones, 101 L.T.R. 831 (1909), and Corrigan v. Bobbs-Merrill Co., 126 N.E. 260 (NY 1920)) Richards presents an interesting and useful test (at 135-36) that he calls the innocent construction test. He begins by noting that “[c]reators of works of fiction are entitled to a presumption that their works are indeed fictitious, including the characters portrayed therein.” If a defamation plaintiff sues based on a fictional character, that plaintiff should lose if that “if the character …is capable of being viewed as actually portraying someone other than the plaintiff.” Indeed, “the defense is entitled to that construction as a matter of law” because “[t]o hold otherwise threatens the common creative and literary technique of authors and producers to imbue their characters with realistic qualities.” As Richards goes on to note that “[a]dopting the innocent construction rule in libel-by-fiction cases by having it apply to the ‘of and concerning’ element would effectively reduce such lawsuits except in the most egregious instances.”

So, my title was probably not particularly accurate—one need not decry the novel as not true, but only as not fact (or, as I noted in quoting Bettelhein in that earlier piece alluded to above, “although these stories are unreal, they are not untrue.”). And that is nothing like saying it is necessarily defamatory because it is not a statement of fact. The Richards’ test (or Irish approach if you prefer) seems to leave authors the expressive freedom necessary to seek artistic truth without being limited to actual fact. So, in closing, I will note that many have made observations on fiction writing that are akin to Picasso’s quote stated above where he connected us to the role that art can play in revealing truth: “Writing fiction is the act of weaving a series of lies to arrive at a greater truth,” as novelist Khaled Hosseini aptly stated. I wrote once that “[s]o we too have joined that discussion, which will continue beyond this post and piece.” Having rejoined and moved forward that discussion, at least somewhat I hope, we will leave it here for now. We do so because “[t]he truth is rarely pure and never simple. Modern life would be very tedious if it were either, and modern literature a complete impossibility!,” as the Irish playwright wrote in the first act of The Importance of Being Earnest, A Trivial Comedy for Serious People.

PERSONALITY RIGHTS – THE POWER OF INFLUENCE, ITS MISUSE AND PROTECTION

INTRODUCTION

Publicity rights play an important role in India based on the culture of celebrity worship and the importance of the name, image, and likeness of sports, television and media personalities, political figures, musicians, etc. Indian intellectual property laws do not directly or explicitly recognize personality rights, but several regulations and provisions address the same. In India, the right to publicity is recognised as a part of the right to privacy. In the case of K.S. Puttaswamy v. Union of India[1], where the right to privacy was declared a fundamental right under Article 21 of the Constitution of India, the Supreme Court also reflected upon personality rights and observed that:

Every individual should have a right to be able to exercise control over his/her own life and image as portrayed to the world and to control the commercial use of his/her identity. This also means that an individual may be permitted to prevent others from using his image, name, and other aspects of his/her personal life and identity for commercial purposes without his/her consent.

On the other hand, the field of intellectual property provides indirect protection of publicity rights under the Copyright Act, 1957 (“Copyright Act”) and the Trade Marks Act, 1999 (“Trade Marks Act”). Under Section 38 of the Copyright Act, the provision grants two kinds of rights to a performer which are exclusive rights to the performer under Section 38A and moral rights to the performer under Section 38B. On the other hand, the Trade Marks Act, in its section 2(m) includes ‘names’ under the definition of ‘trademark’, which allows celebrities to register their names as trademarks to avoid misuse. There have been numerous celebrities in India, like Shah Rukh Khan, Priyanka Chopra, Ajay Devgn, and Amitabh Bachchan, on account of their goodwill and reputation, who are registered proprietors of their respective names.

THE JUDICIARY ON PERSONALITY RIGHTS

The concept of ‘personality rights’, although lacking a robust statutory framework in India, has emerged through a series of judicial interpretations to acquire a nuanced significance in the contemporary legal discourse. The stance taken by the Courts of India has been primarily to bridge the gap and maintain a balance between the right to freedom of expression and personality rights, especially in a digital world where Artificial Intelligence proficiently integrates into our daily lives. On the lines of the set premise, some of the recent developments are discussed below –

In the case of Jaikishan Kakubhai Saraf v. Peppy Store[2], the High Court of Delhi refused to grant an ex-parte ad-interim injunction in favour of the plaintiff to uphold the artistic and economic expression of the defendant. The defendants had made a compilation video on YouTube showcasing the plaintiff’s (Jackie Shroff) forthrightness and wit, which the court held to be the existing public perception of the celebrity plaintiff. However, in instances where the plaintiff’s videos were overlayed on audio containing extremely profane words and abuses, the court granted relief in favour of the plaintiff stating that it held the capacity to tarnish the reputation of the plaintiff. Similarly, acts such as hosting AI chatbots where users could ‘chat’ with the chatbot which imitated the plaintiff or selling wallpapers of the plaintiffs without his permission, were prima facie held to be violative of the personality rights of the celebrity.

Similarly, in Manchu Vishnu Vardhan Babu Alias Vishnu Manchu v. Arebumdum & Ors.[3], the Delhi High Court highlighted how a celebrity through their work acquires a unique distinctiveness. This in turn adds immense commercial value to their characteristic attributes due to their inimitable nature. Thus, a third party using such elements of one’s personality is bound to cause confusion and deception amongst the public as to their affiliation with/sponsorship by the celebrity concerned. In the present case, the renowned celebrity plaintiff’s personality and its various aspects were misused by the defendants in multiple ways which maligned his character and were highly prejudicial to the plaintiff’s goodwill and reputation. While the case remains pending for further hearing, it has passed an order restraining the defendants from creating/publishing/communicating to the public/disseminating any content, that defames the plaintiff and from using, exploiting, or misappropriating the personality rights of the plaintiff by using his attributes.

Further, in Anil Kapoor v. Simply Life India & Ors.[4], the famous actor plaintiff approached the High Court of Delhi to protect his personality attributes, under various laws and provisions in the absence of a single statutory provision governing his personality and publicity rights. The case at hand illustrated the complex interplay between fame and the rights of individuals, particularly regarding reputation, privacy, and livelihood. While the freedom of speech and the right to information allow for genuine critique and satire concerning public figures, it is believed that this right has its limits. Referring to the landmark case of R. Rajagopal v. State of Tamil Nadu[5], it summarised the stance of the Supreme Court by recognising that –

The right to privacy is inherently linked to the right to life and liberty under Article 21 of the Constitution. It safeguards personal and familial matters from unauthorized publication, irrespective of whether the content is positive or negative.
An exception exists for matters of public record, which can be commented upon; however, sensitive issues, particularly those involving victims of crimes, should be handled with discretion.
The proliferation of technology, including artificial intelligence, has facilitated unauthorized representations of a celebrity’s persona, necessitating vigilant protection of their rights.

The Court further highlighted the distinction between freedom of speech in various forms as long as it is genuine and without hurtful intent. It also threw light on the protection of well-known persons who have acquired respectable reputations on which a majority of their livelihood exists. Consequently, the Plaintiff successfully established a prima facie case by warranting the issuance of an ex parte injunction against the defendants.

Further, as regards the aspect of inheritance of publicity rights of a deceased person, in the case of Deepa Jayakumar v. A.L. Vijay[6], the Madras High Court held that

it is clear that a privacy or reputation earned by a person during his or her life time, extinguishes with his or her death. After the death of a person, the reputation earned cannot be inherited like a movable or immovable property by his or her legal heirs. Such personality right, reputation or privacy enjoyed by a person during his life time comes to an end after his or her life time. Therefore, we are of the opinion that “posthumous right” is not an “alienable right.

CONCLUSION

To summarise, the evolving discourse on personality rights in India highlights the delicate balance between individual privacy and freedom of expression in a rapidly changing digital landscape. As celebrities increasingly become targets for exploitation, the need for legal frameworks that protect their unique attributes is paramount. The judicial interpretations in cases such as Jaikishan Kakubhai Saraf v. Peppy Store and Anil Kapoor v. Simply Life India underscore the courts’ commitment to safeguarding personality rights while acknowledging the complexities of artistic expression and public discourse.

Moreover, the interplay between intellectual property rights and the constitutional right to privacy provides a foundation for further development in this area. The recognition of personality rights, while still in its nascent stages, holds promise for curbing unauthorized commercial use and protecting the dignity of individuals in the public eye. As technology continues to blur the lines of personal identity, legal protections must evolve to address these challenges effectively. Ultimately, ensuring the integrity of personality rights is essential not only for the welfare of celebrities but also for maintaining ethical standards in a society that is increasingly influenced by public figures.

[1] (2017) 10 SCC 1, 629.

[2] 2024 SCC OnLine Del 3664.

[3] CS(COMM) 828/2024.

[4] CS(COMM) 652/2023.

[5] (1994) 6 SCC 632.

[6] 2021 SCC OnLine Mad 2642.

Can Design Patents Be Invalidated?

Suppose you have a design for an ornamental appearance of an article and start producing the article. Subsequently, you receive notice from an owner of a design patent that you are infringing their patent. You conduct a prior art search and find some references related to the design. Can you invalidate the design patent through an inter-parties review in the United States Patent and Trademark Office or a court proceeding based on these prior art references? The answer is YES if the prior art references either anticipate or render obvious the claimed design of the design patent.

For a design patent, 35 U.S.C. § 171 refers, not to the design of an article, but to the design for an article, and is inclusive of ornamental designs of all kinds including surface ornamentation as well as configuration of goods.” In re Zahn, 617 F.2d 261, 204 U.S.P.Q. 988 (C.C.P.A. 1980). The subject matter that is claimed is the design embodied in or applied to an article of manufacture (or portion thereof) and not the article itself. Ex parte Cady, 1916 C.D. 62, 232 O.G. 621 (Comm’r Pat. 1916).

To anticipate a claimed design of a design patent with a single prior art reference under 35 U.S.C. § 102, the ordinary observer test set forth in Gorham Manufacturing Co. v. White, 81 U.S. 511 (1871) is applied, which provides that “if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.” Gorham, 81 U.S. at 528. See Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 672 (Fed. Cir. 2008) (en banc) (making the “ordinary observer” test in Gorham the sole test for determining design patent infringement).

What if the single prior art reference does not anticipate the claimed design because of differences between the designs in the single prior art reference and the design patent? Can you invalidate the design patent because the prior art references render the claimed design obvious? If so, how does one go about proving obviousness for a design patent?

In a recent case, LKQ Corporation v. GM Global Technology Operations LLC, No. 2021-2348, (Fed. Cir. May 21, 2024), GM Global Technology LLC (“GM”) asserted U.S. Design Patent No. D797,625 (‘625 patent), which claimed an ornamental design for a vehicle front fender, against LKQ Corporation and Keystone Automotive Industries, Inc. (collectively “LKQ”). LKQ filed a petition to institute an inter-parties review of the ‘625 patent with the United States Patent and Trademark Office (“USPTO”) for anticipation under 35 U.S.C. § 102 based on U.S. Design Patent No. D773,340 (“Lian”) and for obviousness under 35 U.S.C. § 103 based on Lian and a promotion brochure to Hyundai that showed the design of a vehicle front fender. Under the ordinary observer test for anticipation, the USPTO found differences between the designs such that there was no anticipation. Under the long-standing Rosen-Durling test for obviousness, which is a two-part test, the USPTO found that LKQ failed to identify a Rosen reference, which is a single reference that has the design characteristics that are the same as the claimed design. Durling v. Spectrum Furniture Co., Inc., 101 F.3d 100, 103 (Fed. Cir. 1996) (quoting In re Rosen, 673 F.2d 388, 391 (CCPA 1982)). LKQ Corporation at 7. LKQ appealed and a panel of the Court of Appeals for the Federal Circuit (CAFC) affirmed.

Subsequently, the CAFC, en banc, considered the issue of whether the Rosen-Durling test should be used to determine the obviousness of design patents. The CAFC overruled Rosen and Durling and agreed with their precedent holding that “[i]nvalidity based on obviousness of a patented design is determined [based] on factual criteria similar to those that have been developed as analytical tools for reviewing the validity of a utility patent under § 103, that is, on application of the Graham factors.” Hupp v. Siroflex of Am., Inc., 122 F.3d 1456, 1462 (Fed. Cir. 1997). LKQ Corporation at 19.

In Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966), the Supreme Court interpreted the meaning of 35 U.S.C. § 103 and determined the Graham factors as three factual inquiries that include “the scope and content of the prior art”; “differences between the prior art and the claims at issue”; and “the level of ordinary skill in the pertinent art.” Id. Further, the Supreme Court held that secondary considerations, such as “commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented” and may be relevant as “indicia of obviousness or nonobviousness.” Id. at 17–18.

To evaluate the obviousness or nonobviousness of a claimed design, the Graham factors are applied. The first factual inquiry (“Graham factor one”) is directed to the “scope and content of the prior art” within the knowledge of an ordinary designer in the field of design. See Graham, 383 U.S. at 17. In applying Graham factor one, a primary reference must be identified. Next, the second factual inquiry (“Graham factor two”) is directed to determining the differences between the prior art designs and the design claim at issue. Graham, 383 U.S. at 17. In applying Graham factor two, the visual appearance of the claimed design is compared with prior art designs from the perspective of an ordinary designer in the field of the article of manufacture. See Apple, Inc. v. Samsung Elects., Co., 678 F.3d 1314, 1329 (Fed. Cir. 2012). Then, the third factual inquiry (“Graham factor three”) is directed to “the level of ordinary skill in the pertinent art [must be] resolved.” Graham, 383 U.S. at 17. In applying Graham factor three, “a person of ordinary skill in the art to which the invention pertains” is assessed from the viewpoint of an ordinary designer in the field to which the claimed design pertains. Based on applying the Graham factors, it is determined whether an ordinary designer in the field to which the claimed design pertains would have been motivated to modify the prior art design “to create the same overall visual appearance as the claimed design.” Campbell Soup, Co. v. Gamon Plus, Inc., 10 F.4th 1268, 1275 (Fed. Cir. 2021) (citation and quotation marks omitted). The CAFC held that the obviousness inquiry for design patents still requires the assessment of secondary considerations as indicia of obviousness or nonobviousness when evidence of such considerations is presented. Graham, 383 U.S. at 17–18 (“Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented.”).

As to practice tips, the next time you receive notice from an owner of a design patent that you are infringing their patent, you should conduct a prior art search and consider invalidating the design patent based on anticipation and obviousness. To invalidate a design patent based on anticipation, you should use the ordinary observer test to evaluate whether the two designs between the prior art reference and the design patent are substantially the same. If there are differences, you should attempt to invalidate the design patent based on obviousness using the Graham factors and any secondary considerations. Therefore, using these tests, you may be able to invalidate a design patent either through an inter-parties review in the USPTO or in a court proceeding.

New Greek law (5103/2024) for the protection and enhancement of Greek music

On 17/04/2024 the Greek Parliament enacted Law No. 5103/2024 dealing with, among other issues, the “protection” and “enhancement” of Greek Music.

The Law introduces a minimum threshold of 40% Greek music (as defined in the Law) that is performed in public in various places such as casinos, malls, etc. It has both been praised as a “gift” to Greek musicians and authors and heavily criticised as eventually anti-constitutional and against EU legislation.

The basic provisions of the Law are as follows:

Definitions

For the purposes of the Law, the following definitions apply:

Article 3

a. A Greek-language song means a musical work composed of music and lyrics, as long as at least half of its duration is occupied by text in the Greek language. The concept of Greek-language songs also includes the orchestral musical performance of a Greek-language song, as well as musical works without lyrics that have been recorded in Greek territory.

b. New phonograms mean the phonograms of a Greek-language song within the meaning of para. a, which incorporate new musical works whose first release or presentation or distribution or upon request distribution to the public took place up to one (1) year before the radio broadcast their transmission.

c. Format means the single list of works within the meaning of par. 1 of article 24 of Law 4481/2017 (A’ 100) that have been publicly executed by the parties under articles 8, 9, 10, and 11 hereof and in which the title and duration of the works, the details of the composers and the details of the lyricists are included as a minimum.

d. The common areas of the accommodations referred to in paragraph 1 of article 8 are understood exclusively as the entrance and reception areas and the elevators.

e. The common areas of the shopping centers of par. 1 of Article 9 means exclusively the parking areas, corridors, and other areas where visitors stay, excluding the commercial stores and other independent businesses that operate within them.

f. The common areas of the casinos referred to in paragraph 1 of article 10 are understood exclusively as the reception and waiting areas for customers.

g. The common areas of the means of public transport referred to in paragraph 1 of article 11 mean exclusively the areas of the stations and the boarding and disembarking platforms of metro and train passengers, the areas of the stations and the boarding and disembarking platforms of the electric railways.

h. The common passenger waiting areas of airports and ports referred to in paragraph 1 of article 11 mean exclusively the covered areas intended for the waiting of passengers before they board planes and ships, respectively.

The purpose of the Law is:

(i) the establishment of incentives to increase the transmission of Greek-language songs and new recordings by radio stations, informative and non-informative,

(ii) the introduction of an obligation to perform a certain percentage of Greek-language songs in specific common areas of hotels and complex tourist accommodations, shopping centers, casinos, and public transport, as well as in the passenger waiting areas of airports and ports,

(iii) the establishment of a potential assessment of audio-visual productions, television or cinematographic, which incorporate a soundtrack of a Greek-language song or an orchestral musical performance of a Greek-language song or musical works without lyrics or with lyrics in the language of a member state of the EU, which are recorded in the territory, according to the rules and eligibility conditions of each aid scheme or financial instrument of the Greek State and

(iv) the creation of an electronic database of Greek-language songs and an online application to access it.

Important provisions of the Law:

Regarding the mandatory use of “Greek-language” music, the Law provides specifically the following. It is noted that there has been a “last minute” change regarding orchestral music, which is now considered to qualify as Greek-language music if the recording of the musical work without lyrics has been made in Greece.

Article 8

It is provided that the minimum percentage of Greek-language music performed in the common areas of hotels and complex tourist accommodations (as such meaning exclusively the entrance, reception areas, and elevators) if public music is performed, cannot be lower than forty percent (40%) of all performed musical works. Also, in par. 2 the deadline and the body for submission of the forms proving compliance with the obligation of par. 1 are determined.

Article 9

It is foreseen that the minimum percentage of performing Greek-language songs in the common areas of the shopping centers (as such meaning exclusively the parking areas, corridors, and other areas where visitors stay, not including the shops and other independent businesses operating within them) if public music is performed, it cannot be lower than forty percent (40%) of the total musical works performed.

Paragraph 2 specifies the deadline and the body for submission of the forms that demonstrate compliance with the obligation of paragraph 1.

Article 10

It is provided that the minimum percentage of Greek-language songs performed in the common areas of casinos (as such understood exclusively in the reception and waiting areas for customers and elevators), cannot be lower than forty percent (40%) of the total musical works performed as long as music is performed in public.

Paragraph 2 specifies the deadline and the body for submission of the forms that demonstrate compliance with the obligation of paragraph 1.

Article 11

It is provided that in the common areas of the means of public transport (as such understood exclusively the areas of the stations and platforms for boarding and disembarking passengers of the metro and trains, the areas of the stations and platforms for boarding and disembarking passengers of the electric railways) and in the passenger’s waiting areas of airports and ports (as such meaning exclusively the covered areas intended for “hosting” passengers before boarding planes and ships respectively), the minimum percentage of transmission of Greek-language music cannot be lower than forty-five percent (45% ) of all performed musical works, as long as public music is broadcasted. In par. 2, the deadline and the body for submitting the forms that prove compliance with the obligation of par. 1 are determined. In par. 3, a reduction of the percentage of par. 1 by 50% is provided if, for technical reasons, the public broadcasting takes place simultaneously in common spaces, which do not fall within the meaning of paragraph e of article 3.

Article 12

It is provided that audio-visual productions, television or cinematographic, regardless of content (fiction, creative documentation or animation), whose soundtrack incorporates more than the percentage defined by the joint ministerial decision of par. 2 of article 30, Greek-language song or orchestral music performance of a Greek-language song or musical works without lyrics or with lyrics in the language of an EU member state, which are recorded in Greek territory in accordance with the provisions of paragraph 4 of article 54 of Commission Regulation (EU) 651/2014, may be evaluated for this reason, according to the eligibility rules and conditions of the respective aid regimes or financial instruments of the Greek State, which operate in accordance with the provisions of the above Regulation (EU).

Article 13

It is created in the Ministry of Culture a) an electronic database of Greek-language songs, orchestral musical performances of Greek-language songs, orchestral music by Greek composers, and sound recordings recorded in the territory and b) an online application connected to the electronic database which is posted on the official website of the Ministry of Culture upon written consent of the beneficiaries. The electronic database contains the identification data of Greek-language songs, orchestral musical performances of Greek-language songs, orchestral music by Greek composers, and recordings recorded in Greek territory based on the data provided by the competent collective management organizations. The online application provides the possibility of searching the content of the electronic database, drawing up an original list of Greek-language songs, orchestral musical performances of Greek-language songs, orchestral music by Greek composers, and sound recordings recorded in the territory after written consent of the beneficiaries and issuance of all the forms required to fulfill the notification obligations of the obliged hotels and complex tourist accommodations and those who have the exploitation of the common areas of the shopping centers, casinos, the means of public transport, the passenger waiting areas of airports and ports.

Article 14

The procedure for control and imposition of administrative sanctions against each category of obligees, for the violation of the obligations of broadcasting a Greek-language song, is defined. Finally, the procedure for the collection of fines, the fines, and the cases in which the Intellectual Property Organization may recommend the non-imposition of a fine are defined.

The Law as such has already created interpretation problems related to its implementation and the specific cases where the obligation to perform/broadcast a minimum percentage of Greek music applies.

There are also serious reactions by foreign rightsholders who are definitely affected adversely by those provisions when at the same time Greek rightsholders and their CMOs are extremely happy with the new Law and push for its immediate implementation in order to increase their market share and revenues from the places which are covered by the obligations imposed by the above Law in relation to the nationality of the music works which are being broadcasted in the places where the Law imposes this obligation for a minimum percentage of “Greek language” music as the latter is defined by the Law itself.

This article was originally edited by, and first published on, www.lexology.com. Please click here to view the original publication.

One Sheet To Rap Sheet: Evaluating Proposed Federal Rule For Using Lyrics & Creative Writing To Prove Crimes

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.

Can a Slide Show Be Considered a Printed Publication to Prevent Patentability?

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.

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