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Google AdWords have long been used by businesses to ensure that their business listings feature on top of the Google search results when the users search for particular terms (which have been bought by a business from Google). While this process may sound perfectly fine when the ad words pertain to one’s trademarks or generic words, what happens when an entity starts purchasing the ad words for a competitor’s trademarks? Does it amount to trademark infringement or is it permissible since there is no actual use of the trademark (by an entity that is purchasing the competitor’s ad word)?
The aforementioned questions came up for consideration before the Indian judiciary when MakeMyTrip (in 2023) filed a case before the Delhi High Court against Google and Booking.com alleging that Booking.com had used MakeMyTrip (and other trademarks of the company) as keywords on Google Ads to promote its own services through advertisements on Google search results.
The Single Judge of the Delhi High Court granted an interim injunction in favour of MakeMyTrip, thereby temporarily restraining Booking.com and Google from using the name MakeMyTrip (and associated trademarks) as keywords on Google Ads in India. The prima facie view of the Single Judge was that this use would amount to trademark infringement and be detrimental to MakeMyTrip’s ‘monetary interest and brand equity’.
The ad interim order was thereafter appealed before the Division Bench of the Delhi High Court. The Court reversed the order and held that use of the marks as keywords would not amount to use as trademarks, and therefore the use of such marks as keywords does not constitute infringement under Section 29(1) of the Trade Marks Act. The judge stated that there is “nothing illegal in Google using the trademarks as keywords for display of advertisements if it did not result in any confusion or mislead internet users to believe that sponsored links or Ads displayed were associated with the proprietors of the trademarks”. The Court further observed that since Booking.com is a well-known platform offering travel services, it was ‘unable to accept’ that an internet user would be misled into believing that services offered by Booking.com are those of MakeMyTrip.
The court disagreed with the application of Section 29(7) of the Trade Marks Act which is applicable when a person applies a registered trade mark to a material intended to be used for labelling or packaging of goods, as a business paper, or for advertising goods or services. The Court observed that “in the present case, the use of trade marks as keywords cannot, by any stretch, be construed as applying the registered trade mark to any material intended to be used for labelling or packing goods, as a business paper, or for advertising goods or services.”
The order of the Division Bench was further appealed before the Supreme Court of India which dismissed the appeal without reversing the order of the Division Bench. The case is being heard on merits by the Single Judge of the Delhi High Court. It’ll be interesting to see whether the Court observes that there is trademark infringement by purchasing a competitor’s trademark as a Google Adword or whether it opens up a whole new marketing opportunity for competitors to purchase Adwords of competitors’ businesses (and exploit them for promoting their own business).
2024 appears to be a year of change in the Australian Intellectual Property realm, with the adoption by IP Australia of the Madrid Goods and Services List and the introduction of the Intellectual Property Laws Amendment (Regulator Performance) Act 2023.
In January 2024 IP Australia announced that it would replace the current Trade Marks Goods and Services List with the Madrid Goods and Services List (MGS list) in March 2024. This change will align IP Australia’s classification of goods and services for trade mark applications with international best practices, and the standards used by the World Intellectual Property Organization (WIPO).
The real difference between the two Lists is that in Australia under the Trade Marks Goods and Services List, a trade mark applicant can register a trade mark with a broader meaning, for example registering a trade mark under the current ‘Wholesale Services’ category. However, under the MGS list, the registration will need to be more specific, with registrations under the Wholesale Services list to be instead “Wholesale services in relation to [list of goods]”. This means that it will be more important for owners of Australian trade marks to ensure that their trade mark applications are drafted correctly to ensure that the trade mark covers all of the goods and services they use, or intend to use.
Importantly, the changes in classification will likely make it easier for Australian exporters to protect their trade marks in other countries because the way the goods will be described will be consistent with those accepted by the Madrid Goods and Services List.
In late 2023, the Intellectual Property Laws Amendment (Regulator Performance) Act 2023 (the Act) received Royal Assent, marking a significant milestone in the evolution of Australia’s intellectual property landscape. This comprehensive legislative reform, with amendments commencing at various intervals, focuses on refining and enhancing processes related to trade marks, patents, and the protection of Olympic insignia. The Act aims to streamline administrative procedures, fortify legal frameworks, and ensure robust intellectual property protection.
The Act introduces amendments to three crucial pieces of legislation; the Olympic Insignia Protection Act 1987, Trade Marks Act 1995, and Patents Act 1990. These amendments are organised into six distinct parts, each addressing specific aspects of intellectual property law.
Part 1 – Trade marks that contain, or consist of, Olympic motto, etc.
Part 1 of the Act clarifies that only the Australian Olympic Committee (AOC) and the International Olympic Committee (IOC) are authorised to register Olympic insignia as trade marks in Australia.
The amendments reinforce the government’s authority to reject trade mark applications not filed by the AOC or IOC, enhancing the protection of the Olympic brand.
Part 2 – Renewal of registration
Part 2 of the Act addresses minor inconsistencies in trade mark renewal grace period conditions. By aligning these conditions, the legislation ensures a more consistent and streamlined process for the renewal of trade mark registrations.
Part 3 – Revocation of registration
Part 3 of the Act introduces a requirement for the revocation of a trade mark registration if IP Australia overlooks a component of a notice of opposition by a third party during the registration process. This amendment bolsters the integrity of the registration process and addresses potential oversights in the opposition procedure.
Part 4 – Restoration of trade marks to the Register
Part 4 of the Act allows, under specific circumstances, the restoration of a trade mark registration onto the Trade Marks Register after it is removed due to non-use. This provision provides flexibility in cases where a trade mark’s removal was unjustified, ensuring fair treatment for intellectual property owners.
Part 5 – Official Journal, etc.
This section removes direct references to the Official Journal of Trade Marks, allowing the government to adapt the format used to communicate trade mark decisions to changing technologies and customer behaviour. This amendment reflects a commitment to staying agile and responsive in the digital age.
Part 6 – Spent Provisions
Part 6 repeals transitional and saving provisions in the Patents Act 1990 (Cth) that expired in February 2022. This procedural change has no impact on the administration of Australia’s patent system but serves to streamline the legislative framework.
The Act anticipates corresponding changes to the Trade Mark Regulations and Patents Regulations, with the Intellectual Property Laws Amendment (Regulator Performance) Regulations expected to be in place by 17 May 2024 to support and complement the changes made by the Act. These regulatory adjustments aim to provide a harmonious and integrated legal framework for the effective implementation of the legislative reforms.
The Intellectual Property Laws Amendment (Regulator Performance) Act 2023 represents a forward-looking approach to intellectual property regulation in Australia. By addressing specific challenges in trade mark and patent administration and refining the protection of Olympic insignia, the Act contributes to a more robust and responsive intellectual property regime. As the corresponding regulations are set to fall into place, stakeholders in the intellectual property space can anticipate a more streamlined and efficient landscape for the protection and administration of intellectual assets.
When assessing the likelihood of confusion between two marks in a trade mark clearance or infringement context, the orthodox approach of the diligent IP practitioner might be to set the two marks out next to one another, analysing them primarily from the perspective of the average consumer at the point of sale. Whilst the prospect of confusion arising after this point should be considered, it is unlikely to be the focus. A recent UK court of Appeal decision has, however, underlined that this technical, square-on comparison does not in fact reflect the real worlds that brands inhabit, and the various ways in which the average consumer can be confused by them even after a product has been sold.
The protection of works created from the human intellect, under the legislations that have adopted a droit d’auter system, is centered on the relationship existing between the individual who created the work, and the piece that constitutes the protected work.
Therefore, the legal regulations which govern the prerogatives that the creator has concerning the protected work are supported on the premise that the creator is a human being, who has expressed and portrayed, in a tangible fashion, his or her idea or mental creation.
Under legal systems that have been developed from the droit d’auter tradition, it is an essential requirement that the originator of the protected work be a human individual, and the protection is directly derived from the fact that this individual, the author, has an intimate connection with his or her creation, which gives rise to the existence of the so-called moral rights, which are not renounceable, and non-assignable, and are considered to be a constitutional right. (more…)
Suppose that you have obtained a U.S. trademark registration for your trademark on goods or services for your business. Can your trademark registration be cancelled with the U.S. Patent and Trademark Office based on it being invalid? Can you file anything to strengthen your trademark registration against invalidation? The answer is YES! if the trademark has been in continuous use for five consecutive years subsequent to the date of registration.
A trademark registration that was obtained on the Principal Register “… shall be prima facie evidence of the validity of the registered mark and of the registration of the mark … but shall not preclude another person from proving any legal or equitable defense or defect …” See 15 U.S.C. § 1115(a) (Emphasis Added). This means that it is less burdensome to prove the invalidity of a trademark registration. For example, under U.S. trademark law, a petition for cancellation may be filed at any time to challenge the trademark registration as being invalid. For trademark registrations within five years, the grounds for cancellation of a trademark registration include the likelihood of confusion, abandonment, dilution, deceptiveness, and whether the mark is merely descriptive or has become generic or functional. See 15 U.S.C. §1064.
Is there anything that the trademark owner can do to make it more difficult for a trademark registration to be invalidated? Yes, the owner of a trademark registration on the Principal Register may file for “incontestable” status if the trademark has been in continuous use for five consecutive years subsequent to the date of registration.
Under 15 U.S.C. § 1115(b),
“[t]o the extent that the right to use the registered mark has become incontestable under section 1065 of this title, the registration shall be conclusive evidence of the validity of the registered mark and of the registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark in commerce.” (Emphasis Added).
For example, under U.S. trademark law, for trademark registrations older than five years, a petition for cancellation may be filed based on the grounds enumerated in Trademark Act § 14, 15 U.S.C. §1064, which provides for cancellation of a trademark registration as being invalid any time if the registered mark becomes the generic name for the goods or services, or a portion thereof, or is functional, or has been abandoned for non-use, or its registration was obtained fraudulently. This means that it is more burdensome to provide invalidity of a trademark registration that is incontestable than for one that is not. Therefore, an owner of a trademark registration on the Principal Register should file a Section 15 Declaration of Incontestability if the trademark has been in continuous use for five consecutive years subsequent to the date of registration.
For a Section 15 Declaration, the owner must not only declare that the mark has been in continuous use for five consecutive years after the date of registration but also declare that there is no final decision adverse to the owner’s claim of ownership of the mark or to register the same or keep the same on the register and no proceeding involving the trademark rights pending and not finally disposed of either in the United States Patent and Trademark Office (“USPTO”) or in a court. What if there is a proceeding involving the trademark rights that is pending with either the USPTO or the court?
Preferably, the Section 15 declaration should be filed at the same time the Section 8 Declaration of Use is filed. If the Section 8 declaration has already been filed and, if there is no proceeding that is pending with either the USPTO or the court, the Section 15 declaration should be filed immediately. However, if there is a proceeding that is pending with either the USPTO or the court, the owner should hold off on filing the Section 15 declaration until the proceeding is finally disposed of including any appeals.
Can the trademark registration be invalidated for fraud if the Section 15 declaration is filed when a proceeding involving the trademark rights is pending with the USPTO or the court? In a recent case before the United States Court of Appeals for the Federal Circuit (“CAFC”), Great Concepts, LLC v. Chutter, Inc., 2022-1212 (Decided October 18, 2023), the CAFC held that Section 14 of the Trademark Act does not permit the USPTO to cancel a reg. ration due to the owner filing a fraudulent Section 15 declaration to acquire incontestability of a registered mark. In Great Concepts, Great Concepts, LLC, the owner of the trademark registration, filed a Section 15 declaration declaring “there is no proceeding involving the trademark rights pending and not finally disposed of” either in the USPTO or in the courts, which was a false statement because there was both a cancellation proceeding in the USPTO and an Eleventh Circuit appeal pending. Chutter, Inc. subsequently petitioned the USPTO for cancellation of Great Concepts, LLC’s trademark registration. The USPTO issued a decision finding that the Section 15 declaration was fraudulent and cancelling the trademark registration under Section 14 of the Trademark Act. Great Concepts, LLC appealed to the CAFC, which found that Section 14 only applied to fraud in procuring a trademark registration or renewal and thus did not apply to cancel a trademark registration for a fraudulent Section 15 declaration. However, the CAFC emphasized that nothing in this opinion should be read to mean that the USPTO is powerless to address fraud committed solely in conjunction with the filing of a Section 15 declaration including sanctioning an attorney or criminal prosecution.
In summary, after the trademark has been registered, U.S. trademark registrations can be cancelled based on a likelihood of confusion, abandonment, dilution, deceptiveness, and if the mark is merely descriptive or has become generic or functional within five consecutive years subsequent to the date of registration. However, after the trademark has been in continuous use for five consecutive years subsequent to the date of registration, the owner of the trademark registration may file for “incontestable” status by filing a Section 15 declaration. As a practice tip, the Section 15 declaration should be filed at the same time the Section 8 Declaration of Use is filed if there is no proceeding that is pending with either the USPTO or the court. However, if there is a proceeding involving the trademark rights that is pending with either the USPTO or the court, the owner should hold off on filing the Section 15 declaration until the proceeding is finally disposed of including any appeals. If the trademark registration becomes incontestable, a third party may only petition for cancellation of the trademark registration based on the registered mark becoming generic, or is functional, or has been abandoned for non-use, or its registration was obtained fraudulently. This will make it more difficult for a trademark registration to be invalidated.
The Quebec Charter of the French Language (the “Charter”) was adopted nearly 50 years ago to protect the status of the French language in the province of Quebec. It includes many rules, several of them directed at the language of business in Quebec, and some regarding the use of French on both product packaging and signage/advertising.
Presently, all product labelling and commercial signs appearing in Quebec must be in French – but the Charter provides certain exceptions for trademarks.
Amendments to the Charter are expected to come into force on June 1, 2025. Those amendments will significantly restrict those trademark exceptions and have other important consequences for trademark and business owners operating in Quebec.
As of June 1, 2025, unless a trademark appearing on a product, on a storefront or in commercial advertising is registered in Canada, a French version of that mark will have to appear. Furthermore, if the French version of the trademark has been applied for or registered in Canada, that French version will also have to appear.
The Canadian Trademarks Office is experiencing significant delays and it is difficult to obtain a registration in less than 3 years. This is likely why Draft Regulations issued on January 10, 2024, expanded the scope of “registered trademark” to include trademarks for which an application is pending before the Trademarks Office. This provides some breathing room for brand owners, but they should nonetheless start preparing well ahead of the June 1, 2025 deadline.
This is in part because the changes to the Charter will also affect how brand owners display their mark and their business name on products, storefronts and commercial advertising.
For example, if a non-French trademark appears on a product, storefront or commercial advertising, that product or signage will also have to include a “markedly predominant” generic term or description, in French, to identify the product or service in question. That French text will have to be twice as large as the other text and otherwise have a more important visual impact.
Also, for signage that identifies the business with an expression other than French, including a registered trademark, and that can be seen from outside the business, that signage must include a “markedly predominant” generic term or description to identify the business.
In most cases, the generic term/description appearing in French will be smaller than the trademark, and business owners will need to work at changing their signage and labelling ahead of the June 1, 2025 deadline.
The changes to the Charter will affect the language in which content appears on websites and social media accounts, and in brochures, catalogues and similar commercial publications.
The Quebec version of those materials does not have to have the same content as that for other provinces, but the Quebec version, in French, must be made available under conditions that are at least as favourable as those available in other languages.
After June 1, 2025, businesses that fail to comply with the requirements of the Charter expose themselves to sanctions ranging between $3,000 to $30,000. Fines for second offences are doubled and thereafter tripled. Significantly, every day of non-compliance is considered to be a separate offence.
In the United States, an original work of authorship fixed in a tangible medium of expression (meaning the work can be communicated in a visual or audio form) is a protectable copyright. This means that the owner has the exclusive right to reproduce, adapt, publish, perform, and display the work. Because copyright protection has a set term, copyrights in certain works necessarily expire each year and enter the public domain. Once a work has entered the public domain, it no longer retains copyright protection and cannot stop use of the work by others based on its prior copyright rights. However, a work’s copyright expiration does not extinguish any trademark
rights that the owner may maintain in that same work. This is because protection of trademarks, which are words, phrases, symbols, and designs that identify the source of goods or services, is separate from protection of copyrights and does not necessarily expire so long as the work is continuously and regularly used as a trademark.
On January 1, 2024, the copyrights in a number of recognizable works entered the public domain, including, among others, Disney’s iconic Mickey Mouse film “Steamboat Willie,” along with the specific depictions of Mickey Mouse and other characters in the film; A. A. Milne’s book, with illustrations by E. H. Shepard, “House
at Pooh Corner,” which introduced the Tigger character; and D.H. Lawrence’s book “Lady Chatterley’s Lover.” This means that there is no longer copyright protection in these works or the specific depictions of characters in them. But it is important to remember that any existing trademark protection in them subsists.
For example, Disney owns separate and enforceable trademark rights in its Mickey Mouse character and has apparently taken steps to shore up its trademark rights in “Steamboat Willie.” Specifically, Disney owns a federal
trademark registration for an iconic video clip from the “Steamboat Willie” film, which is used in connection with certain Disney motion pictures. Further, Disney still owns valid copyright and trademark rights in other, more modern versions of Mickey Mouse.
What does this mean for marketers who may be interested in producing advertising content using copyrighted works that have entered the public domain? They should closely consider whether these proposed uses present trademark and false advertising risks. They should also assess whether proposed modifications to the depiction
of public domain content may nevertheless present copyright risks to the extent that such modifications are substantially like variations of such characters that are not yet in the public domain and are still subject to copyright protection.
Last year saw the introduction of Law 4996/2022, which brought significant changes to IP legislation in Greece, amending several provisions of the existing Copyright Law 2121/1993 as well as Law 4481/2017 on Collective Management.
Law 4996/2022 was implemented into the Greek legislation EU Directive 2019/789. It has several aims, including the following:
To facilitate copyright and related rights licensing in protected works and other subject matters in certain television transmissions and radio programs. This takes into consideration the wider dissemination in member states of broadcast programs originating in other member states for the benefit of users throughout the European Union.
To introduce a mechanism of extended copyright licensing. Article 14 of Law 4996/2022 introduced a notable – and quite disputed – change, adding article 7a to Law 4481/2017. This change provides for an extended copyright licence concerning the use of protected works or other objects except for audiovisual works within the Greek territory. It states that collective management organisations (CMOs) and collective protection organisations may also represent rightsholders who have not authorized them to this effect (ie, who are not members of the CMOs) as long as they declare this to the user. However, authors may oppose this “presumed” representation to exclude any of their protected works or other objects or their uses from the organisation’s representative authority.
To introduce provisions that will allow educational institutions, public interest research institutions, and cultural heritage institutions to reduce transaction costs.
To regulate public lending. Specifically, the rightsholder’s absolute right to allow or prohibit the public lending of their works is removed. At the same time, a system of reasonable remuneration is introduced, as compensation for public lending without the permission of the beneficiary.
To add article 51B to Law 2121/1993 in favour of press publishers regarding the online use of their publications by service providers. The change grants press publishers the right to allow or prohibit partial or total reproduction and on-demand availability (wired or wireless) of their publications.
In addition to the above, Law 4996/2022 comprises changes to remuneration for authors, including the following:
Article 21 of the Law introduces the notion of “adequate and proportional” (in other words “fair”) remuneration for the author. This could either be a flat fee (subject to conditions) or a percentage of proceeds. However, this surely conflicts with the character of the authors’ absolute right to allow or prohibit the exploitation of their work at their discretion; authors cannot waive or limit their right by contract.
Article 22 introduces an extended, ample right of information in favour of authors and neighbouring rightsholders in relation to the proceeds of exploitation of their works.
Article 23 introduces a new right for the author to request the adjustment (increase) of their contractually agreed remuneration in case it proves disproportionally low in comparison with the overall proceeds from the exploitation of the work.
Article 25 introduces a statutory right of the author to revoke an exclusive licence or withdraw the exclusivity if the exploitation of the work is not in agreement with what has been contractually agreed. Audiovisual works are excluded.
For further information on this topic please contact Katerina Nikolatou at A & K Metaxopoulos & Partners Law Firm by telephone (+30 210 725 7614) or email (knikolatou@metaxopouloslaw.gr). The A & K Metaxopoulos & Partners Law Firm website can be accessed at www.metaxopouloslaw.gr.
Katerina Tsokana also assisted in the preparation of this article.
This article was originally edited by, and first published on, www.lexology.com . Please click here to view the original publication.
From the Big Mac v Big Jack to the KFC v HFC – 2023 was the year of the burger. In Australia, the burger debate was first brought to our attention in 2020 following a marketing campaign by Hungry Jack’s Pty Ltd (Hungry Jack’s) for its limited-edition Big Jack burger. Hungry Jack’s (better known as Burger King in some countries) and McD Asia Pacific LLC (McDonald’s) are both global fast food chains known for their burger and fry combination.
It was following the decision of the Big Mac v Big Jack that we then saw the lesser-known battle initiated by KFC THC V Ltd (KFC) in relation to an application by Grill’d IP Pty Ltd (Grill’d) to register ”HFC” as a trade mark in respect of the healthier chicken options available on its menu.
McD Asia Pacific LLC v Hungry Jack’s Pty Ltd [2023] FCA 1412
McDonald’s initially argued that, amongst other things, the “BIG JACK” and “MEGA JACK” trade marks owned by Hungry Jack’s should be cancelled on the basis that they were deceptively similar to the well-known McDonald’s “BIG MAC”. It was also alleged that the marks had been used in bad faith by taking advantage of the similarities between the two burgers and essentially selling a ‘copycat’ of the McDonald’s burger.
In response, Hungry Jack’s argued that it had no intention of selling a ‘copycat’ of the McDonald’s burger and their only intention for the new name was for consumers to compare their products, relying on ‘cheekiness’ being part of the Hungry Jack’s brand.
Justice Burley of the Federal Court ultimately found that there was no trade mark infringement in Hungry Jack’s use of the “BIG JACK” and “MEGA JACK” marks and that they were not deceptively similar to McDonald’s “BIG MAC”. The decision was based on the comparison of the words MAC and JACK, which were found to be phonetically and semantically different and therefore unlikely to be confused by a consumer – similar to how one person might recall the name of another person without confusion.
Further, considering the information before the Court, Justice Burley agreed with Hungry Jack’s in that ‘cheekiness’ was part of its brand and that they had no intention to confuse consumers. Accordingly, the decision was made that the “BIG JACK” and “MEGA JACK” marks were valid and would remain on the trade mark Register.
KFC THC V Ltd v Grill’d IP Pty Ltd [2023] ATMO 192
KFC, being the global fast food chain well known for its ‘finger-lickin’ good’ fried chicken and secret herbs and spices, launched its opposition against Grill’d – an Australian-owned restaurant chain that markets itself as a healthier and fresher alternative to the other major fast food chains – for the introduction of its “HFC” burger.
In its opposition to the registration of the Grill’d mark, KFC argued that the “HFC” mark was:
substantially identical to or deceptively similar to the “KFC” mark, which had acquired a reputation in Australia;
likely to deceive or cause confusion; and
made in bad faith.
Grill’d however disagreed with this argument, submitting that the marks were distinguishable because they are both used as initialisms and not acronyms – meaning that that each letter is pronounced individually. This argument meant that the only commonality of the marks is the use of the letters ”FC”, which are descriptive of “fried chicken”. Grill’d further argued that it is unlikely for there to be confusion between the two marks as the concept of the products is different, noting that the letter “H” refers to “Healthy”, and K refers to ”Kentucky”.
Whilst the Hearing Officer did not agree that in the context of the use of each mark, the ‘FC’ lettering was an obvious reference to ‘fried chicken’ , they did rely on the precedent set by Australian Meat Group Pty Ltd v JBS Australia Pty Ltd [2018] FCAFC 207, whereby the Court determined that ‘consumers are conditioned to the use of acronyms and as such, are used to rely on small differences to distinguish between acronyms without being confused or misled by them’ and therefore concluded that the “HFC” mark was neither substantially identical nor deceptively similar to the “KFC” mark.
Importantly, the Hearing Officer emphasised the scope afforded by trade marks containing acronyms, and unless bad faith can be demonstrated, closer than normal similarities (such as one-letter differences), are expected and tolerated.
Whether it’s cheekiness or comparative advertising driving your business’ marketing strategy, the outcome of these cases serve as a timely reminder to ensure your business has sought the proper advice before rolling out any ‘risky marketing’ ideas to lower the risk of potential trade mark infringement
“Headlines” and “titles” are related, sometimes interchangeable, items appearing atop news stories. But, in this space, headlines are usually a source of inspiration (so we can write about intellectual property issues that may interest more than just IP attorneys), and titles a bit of fun (so we can draw in those looking for a bit of lightness amid more serious legal analysis).
Today is no different, as the headlines are “Trump sues Bob Woodward for releasing audio of their interviews without permission” and “Bob Woodward seeks to end Donald Trump’s lawsuit over audiobook,” each of which inspires the question of why interview subjects, the real draw (or the “get” as it were), do not have clearly delineated intellectual property rights in the publishable interview. The titling fun comes from understanding that the language of the “good get” has, “[m]ost recently, …come to mean ‘the acquisition of an endorsement’ or ‘the act of securing an engagement for an appearance (as for a speech or interview),” but that word “get” can also signify divorce for some. That then plays off the rest of the title’s allusions to separating “subjects” from the “predicates” of copyright ownership, themselves words connoting the foundational elements of both “any complete sentence” and at times a court’s jurisdiction over infringement matters. They say that good writing, like good magic, loses its mystery if explained. But, if the Greatest felt honesty demanded explanations sometimes, who am I to quibble with such a fine philosophy (or imply by withholding explanation that my writing is good)? But enough on this title…
…and back to these headlines.
On December 6, 2023, Bob Woodward and other defendants moved to dismiss claims brought against them by former President Donald J. Trump Woodward’s publication, The Trump Tapes: Bob Woodward’s Twenty Interviews with President Donald Trump, an audio-book also released in print. The nine-count complaint originally filed on Monday, January 30, 2023, by the United States District Court for the Northern District of Florida, had asserted myriad legal claims, and sought various relief, all around a central assertion that Woodward had released without the consent audio recordings of numerous interviews that Woodward conducted of former President Trump. The complaint had “accuse[d] Woodward of the ‘systematic usurpation, manipulation, and exploitation of audio’ in violation of Trump’s contractual rights and copyright interests,” according to NPR. Trump twice amended the complaint, and the Florida court transferred the case to the Southern District of New York. Before the second amendment, President Trump received a copyright registration covering the work, despite an early registration being recorded in Woodward’s favor. The moving, response, and reply papers were all filed in the same December 6-7, 2023 time frame by lawyers for Woodward and the former President, respectively.
What did those papers say?
The motion to dismiss, as linked by Law 360 [subscription may be necessary; also available through PACER at Docket #73 in matter 23-cv-06883-PGG] asserted that the “government works” or “government edicts” doctrine barred the copyright claims, that President Trump did not meet the definition of “joint author” or of the whole “author” of the responses to the interviewer’s questions, and that state law contract or tort claims were pre-empted or baseless.
The opposition, as also linked by Law 360 [subscription may be necessary; also available through PACER at Docket #77] argued that the government works doctrine did not apply because the interviews were not presidential duties nor were the interview recordings presidential records, that President Trump was the dominant author of the responsive elements of the interview, and that the state claims were well-pled and not preempted.
The Woodward reply focused on certain harmful admissions in earlier Trump court submissions that could spell trouble for the former President’s claims. [The reply brief is available through PACER as Dkt. #75]
Even before these motion papers were filed, legal experts found the claims both flawed and intriguing, and we do too.
So, question one is whether the “government works” doctrine applies. To answer that, it might be helpful to know what the doctrine is and where it comes from. As found in the Woodward Motion Brief:
“[C]opyright protection…is not available for any work of the United States Government,” which is defined as any “work prepared by [1] an officer or employee of the United States Government [2] as part of that person’s official duties.” 17 U.S.C. §§101, 105. “The basic premise of [S]ection 105…[is] that works produced for the U.S. Government by its officers and employees should not be subject to copyright” and fall “in the public domain.” H.R. Rep. No. 94-1476 at 58 (1976); see also Georgia v. Public.Resource.Org, 140 S. Ct. 1498, 1509-10 (2020). The government works principle is central to our democracy: the work product of government representatives—including the president—is common property that exists to benefit the public, not an opportunity for exclusive, private gain. President Trump’s claims run head-on into this doctrine.
[Woodward Motion Brief at 10].
While the former President’s lawyers responded by emphasizing that the interviews were not part of government works because they were not part of Mr. Trump’s official duties (or that questions of fact existed that made deciding that question at this stage of the litigation inappropriate), their most pointed assertion might be the contradiction between Woodward’s assertions and his conclusions: “Woodward argues the Work, including the Interviews, are a work of government copyright, and belongs to the ‘People’ and the ‘public domain’ but he has unabashedly asserted sole copyright to the Work and asserted his own copyright.” Trump Responding Brief at 5.
Though Woodward’s motion brief makes a fairly compelling argument that interviews are a necessary party of the duties of a President as a politician wishing to retain office or further a governing agenda, it is less convincing an argument that it is a necessary duty of President as an officeholder, where the only stated obligation related to keeping the American people informed of the President’s views is an indirect one, namely to, “from time to time[,] give to the Congress Information of the State of the Union, and recommend to their Consideration such Measures as he shall judge necessary and expedient.” US Const., Art. II, Section 3. Though some questions of fact surrounding the Trump/Woodward conversations may have seemed to exist as to whether such interviews were or were not within the duties of the president’s office, it is arguable that:
Plaintiff [Trump]’s own words defeat any argument to the contrary: “more than any other public official, the President is expected to respond to questions from the media that affect his ability to maintain the trust of the American people and effectively carry out his official duties…. [S]peaking to the press and communicating with the public is clearly conduct ‘of the kind [a President] is employed to perform.’” Dkt. 73 (“MTD”), [and Dkt. 74-5,] Ex. D, 8, 19…As the D.C. Circuit recently recognized, and President Trump previously confirmed, the ”bully pulpit” is “an everyday tool of the presidency.”
[Woodward Reply Brief at 1, 3 (quoting brief the former President had filed in case with E. Jean Carroll, wherein his counsel asserted the quoted statement on his behalf)].
Still, it seems strange that Woodward, a reporter, would argue that the interviews are somehow government works. It is strange because that would mean that the unpublished portions would also be government works available for public use. It would also seem that that designation would prohibit Woodward from private ownership of the copyright in the full work, a concept that Woodward would surely resist and with which his own copyright registrations are inconsistent.
Interestingly, as an aside (since this is an International Lawyers Network IP Group Publication that “brings together IP practitioners from around the world to share their experience and expertise on the latest trends in intellectual property law”), the government works doctrine is an American approach very different than that taken in other countries in the English common law tradition that “provide[] Crown copyright protection for government works,” Heiko Richter notes (at page 7) in the 2021 article “Copyright Protection of Government-Related Material Before The Courts of the United States and Canada: Considerations of Further Reforms.” Since the first statutory Crown copyright provision in section 18 of the UK Copyright Act of 1911, the scope of the right has been further refined to assure copyright protection to “works ‘by an officer or servant of the Crown in the course of his duties.’” Id. at 19. Thus, in language very similar to that precluding copyright in the United States, the British recognize it. But the debate continues. As Richter further observes, Canada’s acceptance of Crown copyright as a bulwark of “ensuring accuracy and integrity of government documents” should not drive the law to allow “’such an expansive Crown copyright regime that public interest in accessing information is harmed’” because that “would risk ‘impeding the public interest in accessing these works and could compromise the existence of a robust public domain.’” Id. at 23 (quoting the Supreme Court of Canada opinion Keatley v. Teranet, 43 SCC, para. 54 (2019), also concurring opinion, para. 97). Other commentators, such as Vishal Rakheccha, have also sought to reimagine how copyright in Crown copyright jurisdictions might strike the best balance of access, accuracy, and enforcement around government works copyrights in British common law jurisdictions like India.
But, regardless of such international considerations and whether or not interviews were within the scope of presidential duties, the interviews as published may not qualify as such works because they were not “prepared” in the copyright sense by Donald Trump as President, who did not himself fix them in a tangible means of expression. The reporter here, Bob Woodward, argues that he did that by choosing the questions and controlling the recording device. Woodward Motion Brief at 18-23. Woodward’s reply brief also pushes back strongly against the former president’s reliance on the Copyright Office’s Compendium, which says that “the US Copyright Office will assume that the interviewer and the interviewee own the copyright in their respective questions and responses…,” subject to certain exceptions. Woodward Reply Brief at 4ff. With supportive citations, Woodward argues that the Compendium is not a deference-drawing policy articulation, and that copyright office processes are not adjudications with either binding effect or persuasive value. Id.
While that Compendium is not the sort of administrative guidance to which substantial deference is given, it does reflect some Copyright Office thinking potentially troublesome to the Woodward position. Other recent Copyright Office guidance also seems inconsistent with Woodward’s take. For example, the Copyright Office recently said that a human being’s questions, or prompts, from which another intelligence (i.e. an artificial one) creates a work are insufficient to accord the human prompter the status of author: “when an AI technology receives solely a prompt from a human and produces complex written, visual, or musical works in response, the ‘traditional elements of authorship’ are determined and executed by the technology—not the human user,” as noted (at page 7) in the March 16, 2023 Copyright Registration Guidance: Works Containing Material Generated by Artificial Intelligence. When a Woodward question prompts a Trump response, it is just that, a response created by Trump, not Woodward, and Woodward does not exercise control over how Trump interprets the questions and forms the answers. When the Copyright Office goes on to note that AI “users do not exercise ultimate creative control over how such systems interpret prompts and generate material” in response (Id.), it expresses a sentiment that sounds a lot like what Bob Woodward said to NPR’s Steve Inskeep about how Donald Trump responds to the prompts of a democratic society or Woodward’s questions concerning such matters: “’It’s so off the tracks, you don’t know what to do with it,’ Woodward says to Inskeep. ‘It’s almost unexplainable. So what do you do as a reporter? You just put it all out there and let the people decide.’” See also NPR Author Interviews, Bob Woodward’s new audiobook features hours of his interviews with ex-President Trump, October 24, 2022. There would seem to be an analogy (unhelpful to Woodward) there to those who take AI-generated content and just put it all out there after tiring of further prompting or growing frustrated with the lack of shaping impact of such prompts on the other’s outputs.
Moreover, the copyright in an extemporaneous original performance, prompted or not, generally resides in the artist, and not the sound engineer or videographer, as Nickey Frankel has noted in writing about copyright in performance or performing arts. And interviews involving Donald Trump have long been likened to performance art, even in periods before his presidency. In the UK, and elsewhere for instance, “[s]ome argue that [such control over one’s own performances] also includes improvisation, so you might even have a performance right if you are filmed having a tantrum in public. And it doesn’t have to be a paid performance to qualify,” as Dr Hayleigh Bosher, Senior Lecturer in Intellectual Property Law at Brunel University London, notes. Similar suggestions have arisen here in the United States, with one commentator suggesting that “copyright’s authorship-as-fixation regime rests on a faulty premise, betrays copyright law’s role in recognizing and rewarding creativity and denies copyright interests to the very individuals who have provided significant, if not the most important, original contributions to works within copyright’s traditional subject matter,” and therefore that commentator “calls for a fundamental reconsideration of the concept of authorship, including the issue of performer copyrights, in order to better align copyright law with its utilitarian goals, the realities of the creative process and broader public policy.” Thus, there are some copyright arguments or policies in play beyond those most immediately considered in the motion papers.
Arguing in part against any future performer-based claim implied in the Trump position, Woodward argues that the interviewee here has no claim to joint authorship since Woodward, as the dominant author, showed no intent to share authorship and therefore there was not the necessary mutual intent. Woodward Motion Brief at 16; Woodward Reply Brief at 7. But, while perhaps ultimately unpersuasive at any trial stage, at the present stage of proceedings it seems the book jacket and write-up as to the print edition at the Simon & Schuster website, viewed in the light most favorable to the non-moving party, could find arguable indicia of such intent in the book (i) being titled The Trump Tapes, (ii) in the reference to “Twenty Interviews with President Donald Trump,” rather than “of” him, (iii) in referencing the inclusion of “all 27 letters between President Trump and North Korean Leader Kim Jong Un,” which Woodward certainly could not be claiming to hold any copyright over, and (iv) in noting that it is the “inside story of Trump’s performance as president—in his own words,” albeit “as he is questioned.” Id. (italics added for emphasis in items (i)-(iii)). Those snippets seem arguably suggestive of an intent to use the former President’s input generously, perhaps more generously than fair use might otherwise allow, and in a manner often unvarnished or unprocessed to the point of being an author’s, or an author-like, contribution. Indeed, that transparency is part of what Woodward intended, and what the book is being sold on. See book’s Simon & Schuster webpage (noting the book is “Read by Donald J. Trump and Bob Woodward,” but startingly linking to another Simon & Schuster page concerning Donald Trump entitled “Donald J. Trump…About The Author” and including “Books by Donald J. Trump,” including–if you can believe it–The Trump Tapes!!!)(emphasis added, including the exclamation points, which I rarely use). There would seem here questions of both law and fact that might have been more directly inserted into the pleadings or motion papers as they complicate the more clearly segmented perspectives on which the Woodward arguments best rest.
The Woodward position gets stronger, however, when one looks to the final published product, whether one engages the audio version by listening or the print version by reading. There, one sees the editing, sequencing, and timing decisions consistent with authorship in Woodward rather than Trump. The Woodward Reply Brief also makes good use of the former president’s various statements disclaiming any intent to create a joint work, and the case law supporting the “dominant author” concept. Woodward Reply at 7-10.
There is also something common-sensical about the notion that presidents should not own their interviews, as that seems structurally inconsistent with the ways in which separation of powers, the First Amendment, the copyright clause, and the emoluments clause must intersect. But even that common-sense instinct gets tempered by Woodward’s agreement that the tapes “would not be used in contemporaneous news articles” (Woodward Brief at 6-7) in any manner. Does that limit Woodward’s First Amendment, freedom of the press arguments? Probably not, as speech and press rights are not for newspapers alone, and what, when, and how to publish or whether to publish at all have always been parts of our First Amendment protections. But those big questions are better suited for a constitutional law blog than this IP one. Thus, I mention them in passing in case others wish to explore them. I also mention them if, despite every possible IP argument or effort here to Monday morning quarterback possible claims or questions of fact like a good blogger should (rather than out of any real commitment to either side), someone else wants to decide that public policy and the Constitution reasonably suggest in this case that a dominant author copyright approach makes the most sense.
Still, on the IP side, one wonders whether non-copyright-based claims, such as under common law or statutory rights of publicity, might have better served the former President. As noted here previously, one incapable of fitting within the definition of “author” might nonetheless have a right of publicity claim where copyright does not work, and using another’s voice for commercial gain is different from making fair use of a transcript of another’s words. See Section 51 of the NY Civil Rights Law (“Any person whose name, portrait, picture or voice is used within this state for advertising purposes or for the purposes of trade without the written consent first obtained as above provided may maintain an equitable action in the supreme court of this state against the person, firm or corporation so using his name, portrait, picture or voice, to prevent and restrain the use thereof; and may also sue and recover damages for any injuries sustained by reason of such use…) While a newsworthiness defense has been applied to Section 51 claims and like claims in other states, those have not occurred in an audio-book case using a voice to this extent of making the person, if not an author, at least a repeated and consistent co-presenter, sometimes with primary status, and sometimes referenced like or as an author of something. One should note that that is exactly how various book websites refer to the former President, such as Barnes & Noble (“Narrated by Donald J. Trump, Bob Woodward,” interestingly hyperlinking to other books authored by Donald J. Trump), and Amazon (“by Bob Woodward (Author, Reader), Donald J. Trump (Reader)”, suggesting the book is in part “by” Donald Trump but not expressly calling him an “author”), even leaving aside the Simon & Schuster page cited above.
Further, another question referenced but largely unexplored in the filings still looms. That is the issue of whether the notion of the interviews being for “’the book only’” (Woodward Moving Brief at 7), as opposed to “a book” or “books,” allows reliance or estoppel arguments. As Professors Post and Rothman described it (at 106 and fn. 79), that presents “[d]ifficult questions” that can “arise if a copyright holder exercises its right under copyright law to prepare a derivative work by using copyrighted digital material to create a new performance, and the recreated performance then exceeds the uses agreed to by the person whose initial performance was captured with consent.”
As Mary Catherine Amerine observed in her article Wrestling Over Republication Rights: Who Owns The Copyright Of Interviews?, “the law is astonishingly unclear about the copyright ownership of interviews.” Her 2017 article, which was actually cited in the Woodward moving brief, explores several cases in which the interviewer/interviewee copyright contest is explored. As to one, Taggart v. WMAQ Channel 5 Chicago, she notes that the district court found the interviewee had no copyright rights in the interview, but that the analysis was less than sharp:
As the interview was conducted in a question-and-answer format, “although the Defendant interviewer likely contemplated his questions before asking them of the Plaintiff, Plaintiff’s comments during the interview were unprepared and spontaneous responses,” which do “not rise to the level of a literary or intellectual creation that enjoys the protection of the copyright law.”
The opinion does not specify the standard for authorship applied by the court in its analysis, but this statement suggests that the court required some sort of intention and forethought for a statement to be considered a “work of authorship” worthy of copyright protection. However, the concept of “authorship” requiring an intent to create is not found anywhere in the Copyright Act itself, and is not a common-law requirement.
[Amerine, supra, at 165]
Amerine then adds (at 167) that “As the bar for originality is so low, heightening the authorship requirement of the Copyright Act by requiring intent to establish copyrightability is inappropriate and incongruous with the low originality requirement.”
Amerine then discusses later The Swatch Group Management Services Ltd. v. Bloomberg L.P. case as an example of what, in her opinion, is a better balance:
This decision, regarding remarks that the court acknowledges to be “extemporaneous,” does not apply Taggart’s elevated “intent to create” or authorship requirement that the Southern District of Illinois read into the Copyright Act. Instead, the court properly applied the Copyright Act’s low originality bar to find that such comments, although unplanned, were sufficient to create a valid copyright interest.
[Amerine, supra, at 170]
But in the end, she sees inconsistencies among the approaches in Taggart, Swatch, Estate of Hemingway v. Random House, Inc.(common law copyright in oral statements), Quinto v. Legal Times of Washington, Inc. (compilation), and Suid v. Newsweek Magazine(split copyright), and she therefore calls for greater specificity and uniformity of approach. Consequently, her preference for the Swatch approach is part of a broader request for a more definitive ruling from a higher court or courts.
Perhaps the Woodward/Trump case will present the opportunity for greater clarity, although most likely only after some later appeal. For a journalist like Woodward, scoring one interview of Donald Trump is a good get, and scoring repeated access across months of time with a sitting president is essentially a phenomenon unique to Woodward. The question still to be decided is whether the twenty interviews were too much of a good thing and whether the Court will make the law in this area clearer or more confused. If we can come out clearer here, that would be “something gotten or obtained” that is akin to the “return of a difficult shot,” or in other words, a good get.