Not every pattern is protected by copyright, even if creating it involved many choices

The Review Board of the U.S. Copyright Office (the Board) recently reviewed a second request by T.W.N. Industries (TWN) for reconsideration of the Registration Program’s previous denial to register two of its patterns. On October 25, 2017, the Board again denied registration to one of the patterns, Gold Wood, but granted registration to the Staggered Carbon Pattern.

TWN’s patterns are designed to be used by applying them to an object, such as an airplane interior for example.

Copyright Office

The Board described the two patterns as such:

Staggered Carbon is a geometric pattern consisting of repeating rectangular bands of different sizes, shapes, and textures, arranged in a woven pattern. The bands are two distinct gray-colored patterns. One band is dark gray with vertical lines, and the other band is light gray with darker gray lines.

Gold Wood is a two-dimensional graphic design consisting of a repeating pattern of striated gold and cream vertical lines, made to resemble a light wood grain. “

The U.S. Copyright Office had originally denied in September 2016 copyright registration to both patterns, informing TWN that they lacked the minimum amount of creative pictorial, graphic or sculptural authorship necessary for a work of visual arts to be protected by copyright.

 TMW then asked the Copyright Office to reconsider its refusal, and  explained the creative process used for both patterns, which both necessitates the use of up to three layers within Photoshop, and were hand-drawn using different brushes and strokes.The Copyright Office again denied registration, as “the elongated rectangular bands” which made up the Staggered Carbon pattern “are a common and familiar shape” and the lines making up the Gold Wood pattern were also “a common and familiar shape” and thus could not be protected by copyright. The Copyright Office also found that the Gold Wood’s features were not “combined in any way that differentiates them from their basic shape and design components,” and were a “simple configuration” not protectable by copyright as “the work as a whole consists of vertical lines in shades of gold and cream.”

TMW asked the Copyright Office to reconsider its refusals for a second time, as allowed by 37 C.F.R. § 202.5 (c), claiming that both works were original enough to be protected by copyright, which bears the question: what is originality under U.S. copyright law?

What is originality under U.S. copyright law?

Under 17 U.S.C. § 102(a), U.S. copyright protects only “original works of authorship.” The threshold for a work to be original is, however, quite low. As explained by the Supreme Court in Feist Publications, Inc. v. Rural Telephone Service Co., Inc. , “[t]he sine qua non of copyright is originality. To qualify for copyright protection, a work must be original to the author. … Original, as the term is used in copyright, means only that the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity.”

Thus two cumulative conditions are necessary for a work to be protected by copyright:

–          It must have been independently created by the author and

–          It must possess at least some minimal degree of creativity

A combination of unoriginal elements can be original enough to be protected by copyright

The Board noted that [s]ome combinations of common or standard design elements may contain sufficient creativity with respect to how they are juxtaposed or arranged to support a copyright… [but that] not every combination or arrangement will be sufficient to meet this test.”

It quoted the 2003 Satawa v. Lowry 9th Circuit case, where the court explained that, while

a combination of unprotectable elements may qualify for copyright protection… not … any combination of unprotectable elements automatically qualifies for copyright protection. Our case law suggests, and we hold today, that a combination of unprotectable elements is eligible for copyright protection only if those elements are numerous enough and their selection and arrangement original enough that their combination constitutes an original work of authorship.”

The Board also quoted § 906.1 of the Compendium of U.S. Copyright Office Practices on Common Geometric Shapes, which explains that “the U.S. Copyright Office will not register a work that merely consists of common geometric shapes unless the author’s use of those shapes results in a work that, as a whole, is sufficiently creative.”

Staggered Carbon is original enough to be protected by copyright

The Board found that “the combination of elements in Staggered Carbon – namely the different textures on the bands, as well as their arrangements – exhibits copyrightable authorship,” and was original enough to be protected, quoting Feist, where the Supreme Court held that only a ‘modicum’ of creativity is necessary for a work to be original.

However, only the “specific combination of textures” created by TWN are protected by copyright, not the “standard designs and other unoriginal elements.”

Gold Wood is not original enough to be protected by copyright

But even though the Board recognized that Gold Wood had been independently created, it was not creative enough to be protected by copyright, as “it consists of simple, minor variations on common shapes arranged in an obvious and uniform manner.” The Board explained further that Gold Wood “is made up of only a very few elements (monochromatic lines in a few shades of gold” arranged in an unoriginal manner (densely and with only minor and repeating variations throughout the pattern).” As explained in § 313.4(J) of the Compendium of U.S. Copyright Office Practices, “a work consisting of a simple combination of a few familiar symbols or designs with minor linear or spatial variations, either in two-dimensional or three-dimensional

form, cannot be registered.”

TWN argued that it had to make “specific choices from endless alternatives of shapes” to create Gold Wood. But the Board explained that “it is not the possibility of choices that determines copyrightability, but whether the resulting expression contains copyrightable authorship.”

Image is courtesy of Flicker user Tony Webster Under a CC BY2.0 license.

This post was first published on The 1709 blog.

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Does a French copyright smell anything?

The FIAC, the international fair of contemporary art, just ended in Paris. Its visitors were able to visit a glass cube, the OSNI, placed on top of the Pavilion of the Palais de Tokyo. OSNI stands for Objet Sentant Non Identifié, ‘Unidentified Scented Object’ and was created by Mathilde Laurent, a perfumer for Cartier, along with Munich climate engineers Transsolar.

Visitors entering the cube were able to go up a staircase through a cloud of the Cartier L’Envol (The Flight) perfume. The cloud is clearly seen to viewers outside OSNI. The fact that the perfume can be seen is as important as it can be smelled.

This installation led French magazine Télérama to ask the question: can perfume be a work of art? Modernist called it “[a] true olfactory and immersive artistic work that presents a completely new way of using smell as a medium of creation.

Wallpaper quotes Mathilde Laurent as saying “I’m not an artist…but…I feel that to create a piece like this is our duty as a house because it’s important that we sustain olfactory art like all others.”

Could OSNI be a work of art? Is there such thing as olfactory art?

Perfume is not protected by French copyright.

Even though article L.112-1 of the Intellectual Property Code clearly provides that its provisions “ protect the rights of authors on all works of the mind, regardless of genre, form of expression, merit or destination,” perfumes are not protected by French copyright, the droit d’auteur. The Cour de Cassation, France’s highest civil court, ruled in 2008 that “the fragrance of a perfume, which proceeds from the simple implementation of a know-how, does not constitute the creation of a form of expression that can benefit from the protection of copyright”. Therefore, L’Envol is not protected by copyright.

However, OSNI is way more than a perfume. It is an art installation, with which visitors are interacting.

Does France protect performance art?

OSNI’s visitors were able to go up and down the staircase inside the cube, and were seen from outside. Were they part of the performance? Were their reactions to the scented air part of the performance?

France recognizes that an artistic performance may be protected, not by copyright law, however, but by the right in one’s image. Reproductions of an artistic performance, such as photographs taken of it, are, however, protected by the droit d’auteur. In that case the performance artist and the photographer are co-authors, Paris Court of Appeals, 4th Chamber B, December 3, 2004.

Is the perfume an element of the protected work, the cube?

If perfume can not be protected as a scent, could it be protected as a work of art? The perfume is clearly seen here, and can be smelled only if one is inside OSNI. Viewers from outside cannot smell it, but they can see the way the cloud of perfume moves inside the cube.

The cube can be considered a sculpture, and, as such, protected by the droit d’auteur. The scent is part of it and thus protected as an element of the sculpture, but still does not gain individual protection. However, one could imagine that if Cartier were to sell OSNI to an art collector, who would then replace the scent with the one of his favorite aftershave, this would be copyright and droit moral infringement, and would conjure the issue of whether perfume is protected by the droit d’auteur out of the (crystal) bottle.

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Does a French copyright smell anything?

The FIAC, the international fair of contemporary art, took place in october in Paris. Its visitors were able to visit a glass cube, the OSNI, placed on top of the Pavilion of the Palais de Tokyo. OSNI stands for Objet Sentant Non Identifié, ‘Unidentified Scented Object’ and was created by Mathilde Laurent, a perfumer for Cartier, along with Munich climate engineers Transsolar.

Visitors entering the cube were able to go up a staircase through a cloud of the Cartier L’Envol (The Flight) perfume. The cloud is clearly seen to viewers outside OSNI. The fact that the perfume can be …read more

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Tattoo Copyright Infringement Suit Dribbles On

Readers of this blog may remember that Solid Oaks Sketches filed a copyright infringement suit against Take-2 Software, the maker of the NBA 2K video game, claiming that its reproduction of several tattoos worn by famous basketball players was copyright infringement. The case is still ongoing in the Southern District of New York, and defendants filed last August a motion for judgment on the pleadings, where they argue that the use was fair use. HT to the Hollywood Reporter.

Solid Oaks bought the copyright for the tattoos of Eric Bledsoe, Lebron James, and Kenyon Martin, which were created by several tattoo artists. These players appear in the NBA 2K game, complete with their tattoos. Solid Oaks claims this is copyright infringement. Take-2 argues that the use is de minimis and fair use.

A real-life depiction

The tattoos “only appear on the players on which they were inked in real life, not other real-world players or fictional characters” (p. 13). Indeed, the NBA 2K game, which is updated every year, depicts over 400 current and retired NBA players “realistically. …These depictions have realistic facial and physical features… They wear jerseys and sportswear with the numbers, colors and logos of their teams. The game even depicts NBA-branded socks” (p.9).

The tattoos at stake were each created specifically for the players. As explained in the motion, “[e]ach tattoo was created as a custom tattoo intended only for the player on which it was inked… Thus, they are imbued with special meaning for the players. For instance, Solid Oak admits that “Child Portrait Tattoo Artwork” depicts LeBron James’s son… Similarly, “330 and Flames Tattoo Artwork” depicts the number 330, which is the area code for Mr. James’s hometown” (p. 12).

Defendant argues that Plaintiffs “seek to hinder the ability to depict people as they appear in real life” (p.6), and that Plaintiff is contending that these famous basketball players must now seek its permission each time they appear in public, in films, or when being photographed.

Use is de minimis

Defendant is arguing that the use of the protected work is de minimis. “[T}rivial copying does not constitute actionable infringement” Newton v. Diamond, 388 F.3d 1189, 1193.

There are 400 players available in the video game, and so the tattoos only appear when the three players featuring the tattoos which copyright is owned by plaintiff appear in the game. Also, the tattoos appear very small in the game and thus are very difficult to see. For Defendant’s the tattoos “are just one of the myriad of elements that makeup NBA 2K” (p.13).

Use is fair use

Defendant is also arguing that it “is not a rival tattooist that has replicated a creative design and inked it on a new person. Rather, its use is completely different in a massive, highly creative video game featuring a virtual world that only uses player tattoos to realistically capture how the players actually look. Each of the factors that courts consider supports a finding of fair use.”

Defendant reviewed each of the four fair use factors and argued that each of the factors is in its favor.

The first factor, the purpose and character of the use, is in Take-Two’s favor because it “uses the Tattoos for a different purpose than that for which they were originally created. While the Tattoos originally were created as the NBA players’ self-expression, Take-Two uses them merely to replicate how the players appear in real life.”

The second factor, the nature of the copyrighted work, should also be in Defendant’s favor because “Take-Two uses them to depict the world accurately.”

The third factor, the amount and substantiality of the portion used, should be in Defendant’s favor because the “use was reasonable given that its purpose was to depict real life accurately, and using any less of the Tattoos would defeat that purpose.”

The fourth fair use factor, the effect of the use upon the potential market, should be in Defendant’s favor because Plaintiff “admitted that it is contractually prohibited from inking the Tattoos on other people, meaning that Take-Two’s use cannot harm that market.”

What about right of publicity?

This is a copyright infringement suit and the players are not parties in the suit. However, one could imagine that they could file a suit against the owner of the copyright of their tattoos for tortious interference in contractual relations, if not owning the copyright of their tattoos would prevent them from licensing their likeness. On the other hand, one can argue that the owner of the copyright has the right to be financially compensated if the work is reproduced, especially for in a commercial venture.

These players are celebrities, but our likeness is more and more used for marketing purposes. A few thousand followers on social media may land us all a lucrative marketing deal. If we sports tattoos but do not own their copyright, should we secure a license before posting selfies? As Jack London once said [on Twitter]: Show me a man with a tattoo and I’ll show you a man with an interesting copyright license.

Image is courtesy of Flickr user Carlos 90 under a CC BY-SA 2.0 license.

This blog post was first published on The 1709 Blog.

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Athletes’ Right of Publicity Claim Preempted by Copyright Act

The U.S. Court of Appeals for the Ninth Circuit ruled on 5 April 2017 that the Copyright Act preempted the California right of publicity claims of Plaintiffs, former college athletes whose photographs are part of the National Collegiate Athletic Association (NCAA) library of images license online by Defendant. The case is Maloney v. T3Media, 15-55630.

Plaintiffs played on the Catholic University basketball team from 1997 to 2001, which won the 2001 Men’s Division III NCAA championship game. Defendant T3Media entered into an agreement with NCAA in 2012 to store, host and license the images in the NCAA photo library. The NCAA runs 90 championships in 24 sports across 3 divisions, and its library contains thousands of photographs of championship games, including some taken during the 2001 Men’s Division III championship game in which Plaintiffs participated.

T3Media sold non-exclusive licenses online for two years that allowed users to download copies of the NCAA photographs for personal use. Plaintiffs contended that such action was a violation of their California statutory right of publicity, California Civil Code § 3344, California common law right of publicity, and a violation of California Unfair Competition Law.

They filed a putative class action suit in June 2014 in the U.S. Central District Court of California on behalf of current and former NCAA athletes whose names, images and likeness had been used without their consent by Defendant for purpose of advertising, selling, or soliciting the purchase of these photographs.

The two-steps of an anti-SLAPP analysis

Defendant moved for a special motion to strike under California anti-SLAPP statute, Cal. Code Civ. Proc. § 425.16, which aims to prevent strategic lawsuits against public participation (SLAPP). Courts follow two-steps when assessing an anti-SLAPP motion to strike: first the moving defendant must show that plaintiff’s suit arises from an act in furtherance of defendant’s right to free speech, as protected by the First Amendment. The second part of the assessment shifts the burden to plaintiff who must demonstrate a probability of prevailing on any of her claims.

T3Media had argued that the photographs at stake, and their captions, had been published in a public forum in connection with a matter of public interest. The district court agreed, finding that the photographs “fell within the realm of an issue of public interest (District Court, at 1134).

This shifted the burden to Plaintiffs to demonstrate a reasonable probability of prevailing on any of their claims. Defendant claimed three affirmative defenses: (1) Plaintiffs’ claims were preempted by federal copyright law, (2) were barred under the First Amendment, and (3) California right of publicity law exempts from liability use of likeness in connection with any news, public affairs, or sports broadcast or account.

The district court did not address the last two defenses as it found that Plaintiffs’ claims were preempted by the Copyright Act, because Plaintiffs asserted rights that fell within the subject matter of copyright, and granted Defendant special motion to strike. Plaintiffs appealed to the Ninth Circuit, which affirmed.

As Plaintiffs had conceded that their suit arose from acts in furtherance of T3Media’s right to free speech, the Ninth Circuit only examined whether Plaintiffs indeed had demonstrated a reasonable probability of prevailing on their claims, and found they had not met that burden, as the Copyright Act preempted their claims.

The copyright preemption two-part test

Section 301 of the Copyright Act provides that common law or statutory state laws are preempted by rights “equivalent to any of the exclusive rights within the general scope of copyright.” Courts in the Ninth Circuit use a two-part test to determine whether a state law claim is preempted the Copyright Act: the courts first decide if the subject matter of the state law is within the subject matter of copyright, and then determine if the rights asserted under state law are equivalent to the exclusive rights of the copyright holders, as determined by Section 106 of the Copyright Act. Parties only argued about the first part of the test.

The right of publicity claim is not preempted if its basis is the use of a likeness

Plaintiffs argued that their right of publicity claim was not preempted by the Copyright Act because publicity right claims protect the persona of an individual, which cannot be fixed in a tangible medium of expression (p. 12). They relied on Downing v. Abercrombie & Fitch, where the Ninth Circuit held that “the content of the protected right must fall within the subject matter of copyright” for the Copyright Act to preempt the state claim (Downing at 1003). Plaintiffs reasoned that their likeness is not with the subject matter of copyright and thus their state claim cannot be preempted by the Copyright Act.

Defendants argued that Plaintiffs’ likeness had been captured in an artistic work and had not been used on merchandise or in advertising. Indeed, the Ninth Circuit noted that “the “core” of the publicity right is the right not to have one’s identity used in advertising” (p. 13). The court of appeals concluded “that a publicity-right claim is not preempted when it targets non-consensual use of one’s name or likeness on merchandise or in advertising. But when a likeness had been captured in a copyrighted artistic visual work and the work itself is being distributed for personal use, a publicity-right claim interferes with the exclusive rights of the copyright holder, as is preempted by section 301 of the Copyright Act“ (p. 13)(emphasis of the Court).

The Ninth Circuit distinguished its Downing case from the case at stake, as the right of publicity claim in Downing is not about the publication of the photograph, but its use: Abercrombie used the surfer’s likeness in the catalog and had also sold reproductions of the tee-shirts worn by them in the photograph. The Ninth Circuit concluded that If the basis of the right of publicity claim is the use of a likeness in a photograph, the right of publicity claim is not preempted by copyright (p. 17).

When is a likeness misused in a work protected by copyright?

Therefore, the “crux of the issue” was whether the basis of the publicity-right claim was indeed to defend Plaintiff against a misuse of their likeness by Defendant. The court reasoned that Section 301 does not distinguish among different types of work protected by copyright, and that the pertinent issue was the way the likeness was used, not the type of the copyrighted work. In Downing, the basis of the publicity-right claim was not the publication of the photograph, but its use to advertise Abercrombie’s products and the creation of tee-shirts similar to those worn by Plaintiffs in the photograph, which were commercial exploitation of Plaintiff’s likeness (p. 19).

The Ninth Circuit noted further that it held in 2006, in Laws v. Sony Music Entertainment, Inc., that “federal copyright law preempts a claim alleging misappropriation of one’s voice when the entirety of the allegedly misappropriated vocal performance is contained within a copyrighted medium” (Laws at 1141). The Ninth Circuit also cited its Jules Jordan Video, Inc. v. 144942 Canada Inc. 2010 case, where it ruled that federal copyright law preempts a claim alleging misappropriation of one’s name and persona based entirely on the misappropriation of DVDs of movies in which plaintiff performed and of which he owned the copyright. Plaintiff had objected to the use of his likeness on the covers of counterfeit DVDs, which the Ninth Circuit found to be “still shots” of the performance protected by copyright. The Ninth Circuit reasoned that Plaintiff claim was a copyright claim, not a claim that his likeness has been used on an unrelated product or in advertising. For the Ninth Circuit, a likeness embodied in a work protected by copyright is misused if it is used on an unrelated product or in advertising.

Why did Plaintiffs’ claim fail

Plaintiffs’ attorney argued at the hearing that Defendant was selling the photographs “as poster art, as desktop backgrounds, as digital goods” (video at 11:36). This is an interesting argument, as the Ninth Circuit attaches great importance to the type of use of the likeness. However, it is the consumers who are choosing how to use the images, within the rights provided to them by the license, not the Defendant.

The District Court explained that ruling in favor of Plaintiffs “would destroy copyright holders’ ability to exercise their exclusive rights under the Copyright Act, effectively giving the subject of every photograph veto power over the artist’s rights under the Copyright Act and destroying the exclusivity of rights the Copyright Act aims to protect (District Court at 1138).

Plaintiff’s attorney recognized during the hearing that non-commercial use of the photos would be acceptable (video at 13:36). When asked by the judges to give an example of non-commercial use, he suggested editorial use, in a student newspaper or a national newspaper. While the Court did thus not address the issue of free speech, several media organizations filed an amici curiae brief in support of Defendant, to ensure that “the right of publicity is not transformed into a right of censorship—one that can be used to prevent the dissemination of matters of public importance” (amici curiae brief p. 9).

This post has been first published on the TTLF Newsletter on Transatlantic Antitrust and IPR Developments published by the Stanford-Vienna Transatlantic Technology Law Forum.

Image is courtesy of Flickr user Tom Woodward under a CC BY-SA 2.0 license.

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Former Professional Wrestler Sues Van Morrison for Using his Likeness without Authorization

Billy Two Rivers, a former professional wrestler, is suing musician Van Morrison and his record label company, claiming that, by using his likeness on the cover of the upcoming Roll With the Punches album, they infringed his right of publicity, as protected by New York State’s statutory right to publicity, New York Civil Rights Law §§ 50 and 51, and false endorsement under the Trademark act. The case is Two Rivers v. Morrison, 1-17-cv-05720 (Southern District of New York).

To say that Plaintiff has had an interesting life is an understatement, as he was a professional wrestler from 1953 to 1977, competing in Canada, the U.S. and abroad. He appeared in ten films and television programs. After retiring, he was for 20 years a leader of the Mohawk nation on the Kahnawake reservation, as an elder and a counselor. He is still recognized as an elder and advisor to the First Nations people. The British band The Dogs D’Amour named a song after him in 1988, and Pulitzer Prize-winner Paul Muldoon wrote a poem, “My Father and I and Billy Two Rivers”, about watching Plaintiff competing in a wrestling match. A British racing horse was named after him, with Plaintiff’s consent.

Roll With the Punches will be Van Morrison’s 37th studio album and is set for release on September 22, 2017. Its cover features a black and white photo of Plaintiff engaged in a wrestling match. The cover of the album was used to promote Van Morrison’s tour, and generally to promote the sale of the album, both online and off-line. Plaintiff claims he did not authorize the use of this photo for the album cover. The complaint alleges that he was not even contacted by Defendants.

New York Civil Rights Law § 50, enacted in 1903, makes it a misdemeanor for “[a] person, firm or corporation [to use] for advertising purposes, or for the purposes of trade, the name, portrait or picture of any living person without having first obtained the written consent of such person, or if a minor of his or her parent or guardian...” We saw in a former post that the New York Legislature is actively trying to expand the scope of the law. However, Plaintiff does not need such expansion to file his suit. If the fact alleged in the complaint can be proven, it is a clear case of unauthorized use of likeness for commercial purposes.

Plaintiff is asking the court to enjoin any further use or dissemination of the cover, and to permanently dispose of the albums already produced. He is also asking the court to award him punitive damages.  The case settled out of court.

This post first appeared on The 1709 Blog.

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Ninth Circuit: Using a Trademark as a Verb Is Not Automatically Generic Use

The United States Court of Appeals for the Ninth Circuit ruled on 16 May 2017 that Google is not a generic term for a search engine, and thus the famous California company did not suffer the costly indignity of having its trademarks cancelled through genericide. The case is Elliott v. Google, 2:12-cv-01072.

Plaintiffs had registered 763 domain names, each incorporating the word Google along with the name of a another brand (, of a person ( or a place ( This business plan did not fare well with the famous search engine company, which successfully asked the National Arbitration Forum to transfer all these domain names to Google.

Plaintiffs then filed a suit in the United States District of Arizona claiming that Google is, or has become, a generic term universally used to describe the action of internet searching with any search engines (Complaint, p. 2), and asked the court to cancel Google’s trademarks. Indeed, the Lanham Act, 15 U.S.C. § 1064(3), provides the right to petition for the cancellation of mark if it becomes the generic name for the goods or services, or a portion thereof, for which it is registered.

The parties filed cross-motions for summary judgment on the issue of whether the GOOGLE marks were generic: while Plaintiffs claimed that Google is a generic term because a majority of the public use it as a verb, Google argued that use of a trademark as a verb use is not automatically generic use. On 11 September 2014, the United States District of Arizona granted summary judgment for Google. Plaintiffs appealed to the United States Court of Appeals for the Ninth Circuit, which affirmed.

The Google trademarks

As mentioned in the original complaint, Google comes from the term ‘googol’meaning a 1 followed by 100 zeros. Google holds a trademark registration for GOOGLE in class 9 for computer hardware; computer software for creating indexes of information, indexes of web sites and indexes of other information resources” and another one in class 38 for [p]roviding electronic mail and workgroup communications services over computer networks; providing multiple user access to proprietary collections of information by means of global computer information networks.

Generic trademark and genericide

Needless to say, if a mark becomes generic, it is quite costly for the company that invested a lot in developing goodwill towards its brand. A generic term cannot serve as a trademark because it cannot serve as identifying the source of a product or service. Several famous marks, among them aspirin, cellophane, and thermos, fell victim of their success and became generic because they were used by the general public to designate the genus of their product, not just a particular brand. This is “genericide”.

The primary significance test

Plaintiffs had the burden of proving the genericide since they applied for the cancellation of the GOOGLE trademarks, and a registered trademark is presumed to be valid. They argued on appeal that the district court had misapplied the primary significance test, which was coined by the Supreme Court in its 1938 Kellog Co. v. National Biscuit Co. case: a mark is not generic if the primary significance of the term in the minds of the consuming public is not the product but the producer. As noted by the Ninth Circuit, quoting Ty Inc. v. Softbelly’s Inc., a trademark only becomes generic when the primary significance of the registered mark to the relevant public is as the name for a particular type of good or service irrespective of its source.

Plaintiffs argued that the district court had framed the inquiry as to whether the primary significance of “google” to the consuming public is a generic name for search engines, whereas it should have inquired whether the public primarily uses “google” as a verb. The Ninth Circuit disagreed with this argument for two reasons: genericide always relates to a particular good or service and using a trademark as a verb is not automatically generic use.

Genericide always relates to a particular good or service

For the Ninth Circuit, the District Court properly recognized the necessary and inherent link between a claim of genericide and a particular good or service (p. 9). The Court reasoned that failing to consider this would prevent some arbitrary marks to be protectable, giving as example IVORY which is arbitrary as applied to soaps, but would not be so for product made from the tusks of elephants.

The Ninth Circuit found that Plaintiffs’ evidence was largely inapposite to the relevant inquiry under the primary significance test because [the Plaintiffs] ignor[e] the fact that a claim of genericide must relate to a particular type of goods or service (p. 13).

Using a trademark as a verb is not automatically generic use

Also, a verb use does not automatically constitute generic use (p. 10). Plaintiffs had argued that a word can only be used as a trademark if it is used as an adjective. The Ninth Circuit disagreed, noting that it had found in Coca-Cola Co. v. Overland, Inc. that the mere fact that customers ordered a coke did not prove what they were thinking, a mark or a cola beverage, and more evidence was required about the customer’s inner thought process. Therefore, the use of a trademark as a noun may or may not be using it as a trademark (p. 11).

The primary significance test directed plaintiffs to provide evidence that that the primary significance of the GOOGLE trademarks is a general name for search engines, not a trademark identifying a particular search engine. The Ninth Circuit agreed with the district court which had found that, while the verb “google” is indeed used to refer to searching on the internet, regardless of the search engine used, this fact alone cannot support a jury finding of genericide under the primary significance test, as it does not prove how the public primarily understands the word itself, irrespective of its grammatical function, with regard to internet search engines (p. 14).

How to prove that a mark has become generic

Plaintiffs also argued on appeal that the district court impermissibly weighted the evidence presented by Plaintiffs when granting summary judgment to Google. The Ninth Circuit disagreed, because, while Plaintiffs had presented admissible evidence that the majority of the public used GOOGLE as a verb, this was not enough to survive summary judgment, as it cannot alone prove genericide.

Plaintiffs had presented three surveys as evidence. Two were excluded by the district court because they had been conducted by Plaintiffs’ counsel, and a valid survey design typically requires graduate training or professional experience in survey research (p. 15). The third survey was a thermos survey, that is, a survey using open-ended questions, in our case, asking respondents how they would ask a friend to search something on the internet. The majority answered by using GOOGLE as a verb, and the survey was admitted as evidence that a majority of the public uses GOOGLE as a verb meaning searching the internet.

Plaintiffs also gave examples of alleged generic use of GOOGLE by media and consumers, but they failed to convince both the district court and the Ninth Circuit, because Plaintiffs did not provide evidence that the use was indeed generic in the mind of the media and the consumers.

Plaintiffs had also offered expert testimony by three experts who all were of the opinion that GOOGLE is generic when used as a verb. However, this finding alone is not enough to prove genericide. Plaintiffs’ dictionary evidence did not prove either that GOOGLE is a generic name for internet search engines, only proving it is generic when used as a verb.

Plaintiffs also tried to prove that Google itself was using GOOGLE in a generic sense, presenting as evidence an email from Google cofounder Larry Page encouraging its recipients to “keep googling!” Generic use of a mark by its holder can support a finding a genericide, but the email was found by the court to be yet another example of the use of GOOGLE as a verb and did not prove that Larry Page had a particular search engine in mind (p. 19).

Finally, Plaintiff claimed that there was no efficient alternative for GOOGLE as a name for the act of searching the internet, but the Ninth Circuit drily noted that GOOGLE’s competitors do not use GOOGLE to refer to their own services (p.20).

GOOGLE may have become a verb, but this alone does not prove that GOOGLE is a generic mark. Keep googling.

This post has been first published on the TTLF Newsletter on Transatlantic Antitrust and IPR Developments published by the Stanford-Vienna Transatlantic Technology Law Forum.

Image is courtesy of Flickr user Dudley Carr under a CC BY 2.0 license.

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Donald Graham’s Copyright Infringement Suit against Richard Prince Allowed to Go Forward

People interested in the U.S. fair use doctrine owe appropriation artist Richard Prince gratitude for providing several interesting fair use cases to monitor and comment about.

Prince has been the defendant in several high profile cases in the Second Circuit (see here and here). He famously won the Second Circuit Cariou v. Prince case (see here), where the Court of Appeals found that Prince’s  use of Patrick Cariou’s photographs to create his thirty paintings and collages featured in his Canal Zone exhibition was fair use, as it was transformative.Prince Street Photographer Donald Graham filed a copyright infringement suit against Prince in 2016 (see here and here), claiming that Prince’s use without permission of Graham’s Rastafarian Smoking a Joint photograph, to create an Untitled (Portrait) featured in Prince’s New Portraits exhibition, was copyright infringement. Prince claims it is fair use.

On July 18, U.S. District Judge Sidney H. Stein from the Southern District of New York allowed the case to go forward, as, while granting Prince’s request to dismiss Graham’s demand for punitive damages, he denied Prince’s motion to dismiss the case. The case is Graham v. Prince, 1:15-cv-10160.

Judge Stein noted that, because the fair use defense is fact-related, discovery will be necessary to conduct the fair use inquiry. Therefore, the case cannot be dismissed and will have to go forward. Judge Stein quoted the Second Circuit in Cariou v. Prince, which stated that finding whether a particular use is fair or not requires “an open-ended and context-sensitive inquiry.”

Prince used Graham’s work almost in its entirety, when he printed and exhibited the original work as originally cropped and posted on Instagram, without Graham’s permission, by another Instagram user, then reposted by yet another user and finally reposted by Prince on his own Instagram account. Prince added the nonsensical comment “ReCanal Zinian da lam jam,” followed by an emoji. Is this add-on enough to make Prince’s work transformative enough to be found fair use?

Prince argued that the use was transformative as it added new messages such as “a commentary on the power of social media to broadly disseminate others work, an endorsement of social media’s  ability to generate[ ] discussion of art,”or a “condemnation of the vanity of social media.”

Judge Stein was not convinced, finding “evident” that Prince’s work is not “so aesthetically different”from the original work and thus not transformative enough. Untitled (Portrait) does not manifest “an entirely different aesthetic” from the original work, as required under Cariou. Unlike the works featured in the Canal Zone exhibition, Untitled (Portrait) does not render the original work, according to Judge Stein, “barely recognizable” as Princes works did in Cariou.


“[t]he primary image in both works is the photograph itself… Untitled simply reproduces the entirety of Graham’s photograph –  with some de minimis cropping – “ in the frame of an Instagram post, along with a cryptic comment written by Prince… There is no question that, notwithstanding Prince’s additions, Graham’s unobstructed and unaltered photograph is the dominant image in Untitled.”

Judge Stein concluded that “[b]ecause Prince’s Untitled is not transformative as a matter of law, the Court cannot determine on a motion to dismiss that a “reasonable viewer” would conclude that Prince’s alterations imbued the original work “with new expression, meaning, or message,” quoting the U.S. Supreme Court Campbell v. Acuff-Rose Music 1994 case.

 Given Prince’s  use of essentially the entirety of Grahamâ’s photograph, defendants will not be able to establish that Untitled is a transformative work without substantial evidentiary support. This evidence may include art criticism, such as the articles accompanying defendant’s briefing, which the Court may not consider in the context of this motion.”

Judge Stein called Cariou v. Prince a “prequel to this action.” However, his fair use analysis does not bode well for Prince, who may this time be found to have appropriated a bit too much. To be continued…

Image is courtesy of Gryffindor under a  CC BY-SA 3.0 license.

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New York State Fails to Extend the Scope of its Right of Publicity Statute

New York State has a statutory right to publicity, New York Civil Rights Law 50 and 51. It protects the right of publicity of a “person, firm or corporation” in order to prevent “uses for advertising purposes, or for the purposes of trade”of “the name, portrait or picture of any living person without having first obtained the written consent of such person.”

The New York legislature recently tried to expand this right, but this attempt was so far unsuccessful, and the legislature is now in recess.

Assembly Bill A08155, introduced on May 31, 2017, proposed to establish a right of publicity for both living and deceased individuals. It also proposed that an individual’s name, voice, signature and likeness would be a freely transferable and descendible personal property, making the right of publicity a property right more than a privacy right, as it is now.

An expansion of the scope of the law

Readers of the blog may remember that Lindsay Lohan claimed that flashing the V sign was part of her persona and was thus protected by New York right of publicity law. She was unsuccessful as the scope of New York’s ight of publicity law is narrow.

The bill would have considerably expanded the scope of the law, as it would have also have protected the “likeness” of an individual, which it defined as “an image, digital replica, photograph, painting, sketching, model, diagram, or other recognizable representation of an individual’s face or body, and includes a characteristic.”

The bill defined the “characteristic” of an individual as “a distinctive appearance, gesture or manne “ So, Lindsay Lohan’s V sign could arguably be protected would the bill been enacted.

The geographic scope of the statute would also have been considerably extended. The bill would have protected the right of publicity of a deceased individual, for forty years after the death of the individual, and this”regardless of whether the law of the domicile, residence or citizenship of the individual at the time of death or otherwise recognizes a similar or identical property right.” This could be interpreted as meaning that the law would have applied to virtually anyone in the world.

A right of publicity transferable and descendible

The bill considered the likeness to be personal property, freely transferable

“A living or deceased individual’s name, voice, signature and likeness, individually and collectively known as his or her right of publicity, is personal property, freely transferable or descendible, in whole or in part, by contract or by means of any trust or testamentary instrument.”

If an individual would have transferred his right of publicity, there could have been a risk of losing control over the use of one’s  likeness, even for unsavory use, unless the contract transferring such rights would have been carefully written to protect the individual against such occurrence. One can imagine that a young, talented and beautiful, but nevertheless impecunious individual could have signed up his right of publicity in exchange for money badly needed at the time. Â

New York State, unlike California, does not recognize that deceased individuals have a right to publicity and the bill would have provided such right. The bill detailed at length how such right would have vested to the heirs, whether by will or, in the absence of a will, under the laws of intestate succession. The bill also specified that the rights thus inherited could have been “freely transferable or descendible by any subsequent owner of the deceased individual’s right to publicity.”

The right of publicity would have terminated at the death of the individual who would not have transferred it by contract, license, gift, trust or by will, and if he had no heirs who could have inherited it under the laws of intestate succession.

Such rights would not have “render[d] invalid or unenforceable any contract entered into by a deceased individual during his or her lifetime by which the deceased individual assigned the rights, in whole or in part, to use his or her right of publicity.”

First Amendment defense

The bill would have provided a First Amendment defense. It would not have been necessary to secure the consent of the individual for using her right of publicity if such right would have been

used in connection with news, public affairs or sports broadcast, including the promotion of and advertising for a public affairs or sports broadcast, an account of public interest or a political campaign;a play, book, magazine, newspaper, musical composition, visual work, work of art, audiovisual work, radio or television program if it is fictional or nonfictional entertainment, or a dramatic, literary or musical work;  a work of political, public interest or newsworthy value including a comment, criticism, parody, satire or a transformative creation of a work of authorship; or an advertisement or commercial announcement for any [news, public affairs or sports broadcast, including the promotion of and advertising for a public affairs or sports broadcast, an account of public interest or a political campaign].

These exceptions are quite broad, and so, while the bill expanded the scope of the New York right of publicity, it also expanded the scope of the exceptions to this right.

The Authors Guild expressed its “grave concerns” about the bill, in a letter to three members of the New York legislature, as it “has the potential to cause great harm to our society’s knowledge-base and to stifle speech, as it would make it difficult for authors to write without restraint about public figures, who may threaten to file a right of publicity suit to stifle speech critical of them.

The law is not clear enough

A work thus exempted “that includes a commercial use and replicates the professional performance or activities rendered by an individual” would not have been exempt “where the replication is inextricably intertwined with the right of publicity of such individual,”subject, however, to the First Amendment and section eight of article one of the New York state constitution protecting freedom of expression. What does”inextricably intertwined” mean? Your guess is as good as mine…

Owners or employees of any medium used for advertising which would have published or disseminated an individual’s right of publicity would not have been liable unless established that “they knew the unauthorized use was prohibited by [the New York statutory right of publicity]. Would owners and employees only benefited from this immunity if they did not know the use to be unauthorized and that such unauthorized use was prohibited by law, or would the knowledge that the use was unauthorized been enough? It is difficult to say.

Let’s hope that the bill will be written again in a more precise way, and that its scope will be narrowed. We’ll keep you posted.

Image of Japanese building courtesy of Flickr user antjeverena under a CC BY-SA 2.0 license.

Image of eggs is courtesy of Flickr user Karen Roe under a  CC BY 2.0 license.

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France’s Highest Court Rules in Favor of Freedom of Expression of Director over Heirs’Droit Moral

Readers of this blog may remember that the Paris Court of Appeals found in October 2015 that the staging of the opera Le Dialogue des Carmélites by Dmitry Chernyakov for the Munich Opera in 2010 violated the moral rights of composer and librettist Francis Poulenc, which adapted the eponymous theatrical play by Georges Bernanos.

Le Dialogue des Carmélites tells the story of French aristocrat Blanche de la Force who decides to enter the Carmelite Convent, possibly to be sheltered from life, as she is fearful and shy. The French Revolution upset her world and the Carmelites must leave the convent. Blanche leaves the congregation to return to her family. When the Carmelites are arrested and sentenced to death by the revolutionary tribunal, Blanche returns to them as they are each climbing the steps to the guillotine, and she is the last one to have her head cut off.

Dmitry Chernyakov had not modified the score or the dialogue. However, his interpretation did not take place during the French revolution, but in contemporary time. In the last scene, the Carmelites are locked up in a shed full of explosives. Blanche appears on the scene and pulls them all out to safety, one by one. She then comes back to the shed which explodes, killing her, an apparent suicide.

The heirs of both Francis Poulenc and Georges Bernanos had sued Dmitry Chernyakov and the Munich Opera, claiming a violation of their moral rights, which are which are perpetual and transferable upon death under Article L. 121-1 of the French intellectual property code. The Paris Court of Appeals had ruled in their favor, finding that the scenography profoundly modified the final scene and distorted its spirit. The DVD of the play could no longer be sold.

The director and the Opera took the case to the Cour de cassation, France’s highest civil court. The heirs argued in defense that if a certain freedom can be recognized for the director to performance his work, this freedom is limited by the moral right of the author to the respect of the integrity and spirit of his work, which must not be denatured.”

But the Cour de cassation just ‘broke’ this holding on June 22. The Court reasoned that the Paris Court of appeals had noted that “the contested staging did not modify the dialogue, absent in this part of the preexisting work, nor the music, even going so far as to reproduce, along with the religious songs, the sound of the guillotine which rhythms, in the Francis Poulenc opera,. Each death, and that the end of the story, as staged and described by Dmitry Chernyakov, respected the themes of hope, of martyrdom, of grace and transfer of grace and of the communion of saints dear to the authors of the original work, [and that therefore] the Court of appeals did not draw the legal consequences of its own findings and violated [article L. 113-4 of the French intellectual property code.]”

Article L.113-4 of the French intellectual property code states that “[t]he composite work is the property of the author who created it, subject to the rights of the author of the pre-existing work.”

In our case, the staging of the opera is a composite work, subject indeed to the rights of the authors of the pre-existing work, the opera. Such rights include moral rights. But the staging, as a composite work, is also a work on its own, protected by article L. 113-4. Since it does not infringe on the rights of the authors of the original work, their rights had not been violated.

This ruling is not surprising, as the Cour de cassation had held on May 15, 2015, that a Court of Appeals must explain “in a concrete manner how searching for the right balance between the rights [of the author of the original work and the rights of the author of the composite work] justified the sentence it had pronounced.”

The Cour de cassation also cited Article 10 § 2, of the Convention for the Protection of Human Rights and Fundamental Freedoms. Protecting freedom of expression, to find that the Court of appeals erred in forbidding the sale of the DVDs of the opera and its broadcast, because it should have examined “what in the search for a fair balance between the director’s freedom of creation and the protection of the moral rights of the composer and the author of the libretto justified the prohibition order it ordered.”

The Versailles Court of Appeals will not review the case again and will likely rule in favor of the director, and thus preserve his freedom to create and to express himself. Moral rights are often viewed in the U.S. as a way to censor creativity, and the 2015 Paris Court of appeals ruling certainly provided grounds for this view.

This post originally appeared on The 1709 Blog. 

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