My apologies for the long absence, dear readers.  Just as the U.S. Supreme Court is set to take its collective seat again for a new term this coming Monday, October 2, 2017, however, I am back with more intellectual property legal highlights.

In the past three or four years, the Supreme Court has been taking an increased interest in intellectual property cases, granting certiorari for more IP cases than ever before and coming down with landmark decisions across the IP legal spectrum.  The 2017 term is already shaping up to be yet another high watermark.  First, the Court has already granted a petition for certiorari for an important patent cases.  The Justices will be faced with a constitutional challenge to the review procedures under the America Invents Act (AIA) under the “separation of powers” doctrine and the Seventh Amendment’s given right to a jury trial in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, No. 16-712.

Second, the Court has a full plate of other petitions for certiorari to consider in the new term on significant and divisive IP issues, including:

  1. the role of the patent specification in deciding patent eligibility, in Synopsys, Inc., v. Mentor Graphics Corporation, No. 16-1288;
  2. known interchangeability evidence for patent equivalence, in Tomita Technologies USA, LLC v. Nintendo Co., Ltd., No. 17-292;
  3. patent infringement through the performance of one or more steps of a patented process by multiple independent actors, in Voter Verified, Inc. v. Election Systems & Software LLC, No. 16-1505;
  4. issued copyright registration vs. filed application for filing an infringement suit, in Fourth Estate Public Benefit Corporation v. Wall-Street.com, LLC, No. 17A150;
  5. vicarious liability for copyright infringement, in Perfect 10, Inc. v. Giganews, Inc., No. 17-320;
  6. when copyright causes of action arise, in Olenicoff v. Wakefield, No. 17-56;
  7. Internet service providers’ liability for copyright infringement and the requirement of volitional conduct, in BWP Media USA, INc. v. T&S Software Associates, Inc., No. 17-122;
  8. whether a likelihood of confusion assessment in a trademark infringement suit is a question of law or fact, in Kibler v. Hall, No. 16-1365;
  9. the test for a parody fair use of a trademark with respect to trademark dilution, in Louis Vuitton Malletier, S.A. v. My Other Bag, Inc., No. 17-72;
  10. necessary pleadings with respect to trademark use in a motion to dismiss under Federal Rule 12(b)(6), in Kassa v. Detroit Metro Convention & Visitors Bureau, No. 16-1512; and
  11. online sellers’ liability for counterfeit sales by third parties, in Hart v. Amazon.com, Inc., No. 16-1549.

At least some of these issues have been mired in split-Circuit decisions, or even simply caught in the land of the undecided.  Hopefully, the Court will offer some guidance.

On October 31, 2016, the Supreme Court of the United States (SCOTUS) deliberated chevron, zigzag, and stripe designs on cheerleader uniforms.  What is very likely to be a landmark decision, Star Athletica v. Varsity Brands addresses the issue of copyright protection for designs on clothing, long held in some controversy by courts attempting to decipher myriad tests and prior decisions.  The issue stems from the fact that clothing is inherently a useful article, one with a utilitarian function that is not merely to portray its appearance or convey information about it, and useful articles are not protectable by copyright.  Designs of useful articles can only be covered by copyright if they are pictorial, graphic, or sculptural features that can be physically or conceptually separated from the useful article.

Varsity Brands, which registered copyrights for its cheerleading uniform colored chevron, zigzag, and stripe designs, argued before the SCOTUS such designs were eligible for copyright protection because they could be conceptually separated from the utilitarian aspects of the uniforms themselves.  In contrast to physical separability, the copyrightable design elements do not have to be actually separable from the useful article to be protected under the test of conceptual separability, but do have to be able to be perceived as separate works worthy of copyright protection when considered disparately from the useful article to which they are attached.  Unfortunately, the test for conceptual separability has greatly varied among courts to date, causing the copyright eligibility of apparel to be in constant doubt.  During the oral arguments by the parties, the SCOTUS leaned heavily on the negative implications and possible extremes of granting such protection, including concerns over monopolies, line-drawing related to whether a design defines the article it is on or stands alone, and the always-popular slippery slope of increased litigation.

What the legal community is hoping for from the SCOTUS decision is a definite test for conceptual separability of copyright-eligible designs on useful articles, which would be momentous not only for the fashion industry, but for multitudes of commercial endeavors that blend function and design (furniture, vehicles, jewelry, 3D printing, etc.).  Given their worries and evident biases thus far in oral arguments, however, the Justices may also decide the case, but fail to articulate a legal framework for the future, in which case the conceptual separability doctrine will continue to subsist in controversy.  One way or another, the development is one to watch.

On January 14, 2017, a sweeping set of new rules will govern proceedings before the U.S. Trademark Trial and Appeal Board (TTAB), including those still pending before the Board on that date.  The final publication of the new rules can be located on the TTAB portal of the U.S. Patent and Trademark Office’s website at https://www.uspto.gov/trademarks-application-process/trademark-trial-and-appeal-board-ttab.  While the portal includes a bevy of links and helpful charts to acquiant practioners with all of the changes, there are a few highlights that deserve specific mention.

The major theme of the TTAB’s amended rules is making “electronic” the default method of procedure.  Arguably, practioners were already defaulting to electronic means of filing and communication, not only due to the passive encouragements of the TTAB, but also by the nature of trademark and TTAB practice generally.  Nevertheless, electronic filings via the TTAB’s online filing system, ESTTA, will now be required rather than preferred.  In the same vein, service of papers and documents between parties must be effectuated by email unless stipulated otherwise, eliminating the extra five days previously alotted in instances of service by mail.  The TTAB will also be taking on the responsibility of serving notices of opposition and petitions for cancellation, eletronically, of course, to attorneys of record, rather than requiring parties to serve these initial filings.  In addition, several discovery changes are likely to shake up the status quo, specifically the limit of requests for admissions and requests for production of documents to 75 each, along with the mandate that all discovery be completed by the discovery deadline, including responses to any outstanding discovery requests.

Is it possible that TTAB’s first rule amendments in 10 years could signal more sweeping changes incoming?  For now, attorneys have enough to contemplate in the next three months.

In ways the legal world is still struggling to comprehend and solidify, social media has an influential role to play in defining modern and future copyright law.  While seemingly quite ordinary for the lay user, the ability to instantaneously publish intellectual property on the Internet has deep ramifications for copyright authorship, ownership, and exclusive rights.  In addition, the availability of so much intellectual property online greatly contributes to the modern culture of repurposing, rehashing, and reimagining old works into new versions.

In September 2014, the artist Richard Prince was recognized with an installation in the Gagosian Gallery in New York.  Prince is primarily known for his artistic projects that involve altering others’ previously-taken photographs.  Most famously in 2013, Prince’s changes to a collection of photographs of Rastafarians in Jamaica taken by Patrick Cariou escalated into a copyright infringement case that arose in front of the Second Circuit, Cariou v. Prince, 714 F.3d 694 (2d Cir. 2013).  However, the court decided that Prince’s alterations were sufficiently transformative so as to constitute fair use in defense to Cariou’s copyright infringement claim.  For the 2014 New Portraits collection, Prince saved screenshots of strangers’ self-portraits on Instagram, added one or more comments in typical Instagram fashion, and blew them up to poster-size on canvas, selling them for $90,000 each.

Though outrage has been expressed by some of the individuals who have found their portraits on the gallery walls, no legal suit has yet been instituted.  Nevertheless, Prince’s New Portraits, even more so than his previous endeavors, reveals some of the possible cracks in modern copyright law.  How transformative use, or the addition of new expression, new purpose, or new aesthetic to a preexisting, figures into the general four-factor analysis of fair use is still debated.  At first, it seems that transformation should be considered when analyzing the purpose and character of the use alleged to be fair under the first factor, but as suggested by the decision in Cariou v. Prince, transformative use may actually be a fifth factor or a separate test for fair use altogether because of how determinative it can be.  There also persists the issue of how transformative is transformative enough, and the envelope on the “I will know it when I see it” approach is constantly being pushed by new artists such as Prince.  In Cariou v. Prince, Prince added paste-up magazine pictures and paint to Cariou’s photographs and labeled them transformative.  For New Portraits, Prince only added one or two Instagram-style comments, many less than five words long.  Deeming such alterations transformative would certainly have serious implications for authorship and fair use on social media platforms.  Is literal commentary on an original work transformative of that work?  Can every retweet, repost, or comment be considered a fair use, in that case?  Perhaps there are even more bright lines yet to be drawn, wherein some comments will be sufficient to transform the originally posted work, provided they are of satisfactory length or content, but others will be disqualified.

Moreover, this is an age when virtually everyone is a copyright author with every photograph or comment posted online, and yet, it is not unreasonable to assume that practically no one registers a copyright for such works.  When those works are repurposed by others, what recourse do the original authors have, and how do they resolve the multitude of copyright ownership issues that would arise?  Also, how should authors and courts consider the fact that artists like Prince are making money from these works, which is an issue largely dismissed by courts to date?  On the other hand, perhaps social media users should simply reconcile themselves with the fact that their words and their pictures will inevitably be reused and recast, that they are relinquishing rights by posting their works online, and that courts may not require much to find fair use.  Maybe this is the new nature of copyright, or maybe courts are still struggling to make old definitions of copyright fit the new creative status quo.

In December 2014, President Obama declared that the United States would finally be working toward lifting a fifty-year-old embargo and resuming economic relations with the neighboring country of Cuba.  Aside from potentially numerous implications to the business endeavors of both American and Cuban citizens, there promise to be important legal consequences as well, at least in the realm of intellectual property protection.

Unlike in the United States, trademark rights in Cuba vest in the first to file a trademark registration application in the Cuban Industrial Property Office, and not the first to use the mark in commerce.  In anticipation of burgeoning economic relations, it may in fact be beneficial to apply for a trademark registration in Cuba promptly, perhaps even before the lift of the embargo, if one anticipates conducting any business in Cuba once trade resumes between the nations.  A Cuban trademark registration would not only serve to secure one’s rights in his or her important and valuable marks in a new market, but would also help prevent others from applying to register those marks first, in a behavior known as trademark squatting, in an attempt to profit from selling the trademark registration back to a legitimate user at a premium cost.

As an important caveat, however, it is still unclear when economic relations with Cuba will actively resume, and trademark registrations in Cuba remain subject to cancellation for three consecutive years of non-use.  Those not desirous of playing the prediction game should nevertheless consider other options to better protect their valuable marks in preparation.  It becomes even more vital to register and adequately maintain trademarks in the United States, including policing would-be infringers, to ensure the strength of the mark before taking it abroad.  Additionally with an eye to increases in imports, it may be wise to record trademarks with U.S. Customs and Border Protection to guard against importation of counterfeit goods.

Overall, Cuba may prove to be an important new market for the United States, and Cuban enterprises looking to enter the U.S. will likely have an impact on U.S. commerce.  At this point, what practical ramifications arise once the embargo is lifted is anyone’s guess, but it is evident that businesses are already vying to secure their place in the changing marketplace.

In June of 2014, the United States Supreme Court upheld the decision of the United States Court of Appeals for the Federal Circuit in striking a blow against the patent eligibility of software and business methods by concluding that the patent claims in the patents at issue in the infringement case of Alice Corp. Pty Ltd v. CLS Bank Int’l were directed toward ineligible subject matter for patent protection.  In so doing, the Supreme Court attempted to promulgate a standard for determining patent eligibility under 35 U.S.C. § 101.  The pronounced test involves a two-part inquiry: (1) whether the claims directed to an abstract idea; and (2) subsequently, whether the claims add significantly more in their implementation such that the abstract idea is transformed into a patent eligible invention.  Following the decision, many scholars and practitioners were disappointed, however, to have received little practical guidance from the Supreme Court, which limited its consideration of what constitutes an abstract idea to only the claims at issue in Alice and did not elucidate what was necessary to transform a claim directed at an abstract idea into a patent eligible invention.

Notwithstanding the somewhat hazy standard it instituted, the Supreme Court has not been shy about encouraging lower courts and the United States Patent and Trademark Office (USPTO) to apply it.  Such adherence has resulted in a new form of a § 101 “Alice” rejection being issued by Patent Examiners at the USPTO and lower courts striking down software and business method patents with greater frequency.  The latest instance of this occurred on November 14, 2014 in the Federal Circuit case of Ultramercial Inc. v. Hulu, LLC, Fed. Cir., No. 10-1544, November 14, 2014.  The main patent claims at issue would be familiar to anyone who has spent some time on websites such as YouTube, Pandora, and particularly in this case, Hulu.  U.S. Patent No. 7,346,545 revolved around a method of exchange where a consumer receives free streams of video or other media by watching a paid advertisement.  The judges of the Federal Circuit, though careful to say that this is not necessarily true for all claims in all software patents, found the claims directed to the abstract idea of advertising as an exchange of currency, also utilized on television and the radio.  The method at issue, which outlined the steps of the exchange, was not found sufficiently concrete or tangible to pass muster under the first prong of the Supreme Court’s test.  The Federal Circuit deemed the method an abstract idea.

Moreover, the court did not find the claims to add any elements to transform the claims into a patent eligible invention by adding that ever-elusive “inventive step.”  According to the court, the method was nothing more than an implementation of an abstract idea through conventional steps, and the claims’ additional limitations, such as updating an activity log, were all considered just as routine, conventional, and well-understood.  The court went further to state that the mere addition of novel or non-routine elements does not necessarily transform the abstract idea to make it patent eligible.  The claims must add “significantly more” to the abstract idea, offer some type of technological, physiological, or otherwise transformative leap to satisfy patent eligibility.  Perhaps most importantly, following in the wake of Alice in particular, the court emphasized that the addition of the Internet alone cannot make the abstract idea patentable.  Instruction to use or implement the abstract idea on the Internet (or in the case of Alice, on a computer in general) does not constitute that “inventive step” necessary for eligibility, particularly in light of the prevalence and permeation of such technology in today’s society.

Arguably, the Alice standard has already made it tougher to attain and maintain software and business-type method patents.  The Supreme Court’s two-part framework offers the contours of an analysis, but was not actually accompanied by clear, practical decision-making standards.  As such, patent applicants in the USPTO and patent litigants throughout the federal districts are still confused and wary, and will remain so at least until a solid body of case law accumulates interpreting and implementing the Alice test.  It appears, however, that courts are at least beginning to make strides toward that end, even though recent decisions do not pave a smooth and easy road for software inventions.

In a marketplace centered on convenience and consumer choice, it is of little wonder that the Internet is poised to completely overtake brick-and-mortar stores as a preferred method of shopping.  While physical retailers offer the opportunity to see and test products before purchase, the expediency, virtually inexhaustible product choice, and expansive online presence of practically every major retailer often drive people to shop online.  As such, one may think that physical locations are becoming a thing of the past, but they remain, it appears, an important marketing tool in the Internet age of shopping where every competing retailer is at consumers’ fingertips.  In fact, Apple Inc., considered a frontrunner in computer innovation and known primarily for its marketing and design techniques, has apparently found an extra foothold in the race against its competitors by innovating in an area most technology manufacturers have yet to tap: store layout.

Apple Inc. opened its first physical location in 2001, and since then has expanded to various locales and countries, featuring both standalone Apple Stores and stores in malls and shopping centers.  Apple Stores typically include tables displaying various kinds of Apple products for customers to test and examine, and in addition to selling Apple hardware, also market peripheral products such as cases and cables.  They also feature a Genius Bar, a collective of store employees that serve to help customers set up or fix their Apple products.  While consumers could certainly purchase computers and music players from physical retailers before, Apple is one of the only major computer manufacturers, which may include Sony, Samsung, HP, Dell, etc. to have its own physical retail location.  As fiercely protective of its intellectual property as Apple is known to be, it attempted to get protection for its Apple Store design via a United States trademark registration application in 2010.  After being accepted by the U.S. Patent and Trademark Office, Apple turned overseas and filed an International Trademark Application to expand its trademark rights.

The first foreign trademark office to examine the application was the German Trademark Registry, which denied Apple’s application on the grounds that a store layout could not serve as a trademark because it would not be considered by consumers as an indicator of source.  Apple appealed the decision of the German examining attorney to the German Federal Patent Court, who referred the case to the Court of Justice of the European Union.  In a somewhat surprising twist, the Court of Justice decided that a three-dimensional representation of a store layout may be a valid trademark for both goods and services and may function as a source identifier.  The Court emphasized that the store layout must be sufficiently distinctive by departing significantly from the norm or customs in the industry and must serve to distinguish the goods or services of one retailer from those of another to be registrable.  The Court likened the store layout to a sign that may advertise and signify the origin of specific goods or services.

The German Federal Patent Court will now reconsider Apple’s trademark registration application in light of the opinion of the Court of Justice.  Current opinion is split on whether the application will be allowed to register.  Some believe that the store layout as a trademark may be found to lack distinctiveness, which Apple would have to battle with consumer surveys and advertising expenditure records that demonstrate its store layout has acquired secondary meaning in the minds of the consuming public.  Others think that the Patent Court is likely to allow Apple’s application to register, especially after the opinion of the Court of Justice and the general uniqueness typically associated with Apple and Apple products and services.  The more interesting case, of course, would be the latter, and particularly to what extent this protection could stretch.  Could such trademark protection, which has been generally reserved for words, slogans, colors, and designs, pave the way for other companies to gain protection over their store layouts, and even more interesting would be the resulting infringement analysis for confusingly similar marks.  Perhaps there may be instances of actual confusion where one walks into the wrong store thinking it was an Apple Store because the infringing store layout also featured a rows of tables and a Genius Bar.  Either way, it is evident that intellectual property, even in areas that have been considered to be fairly settled, continues to evolve.

To the great joy of some and the great outrage of others, the United States Patent and Trademark Office Trademark Trial and Appeal Board cancelled six federal trademark registrations for the name of the Washington Redskins on July 18, 2014.  The cancellations came as a result of a long battle by Native American individuals and groups, since at least the early 1990s, to petition the U.S. Patent and Trademark Office to agree that the name was offensive to Native Americans and thus undeserving of trademark protection under federal law 15 U.S.C. §1052.  The portion of the Lanham Act in Section 1052 disallows trademark registration for any mark that “[c]onsists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”

The direct impetus of the recent cancellations was a petition filed by six Native American individuals in 2006.  The Trademark Trial and Appeal Board reached its decision by going through a two-part analysis.  The Board decided that the term “Redskins” in the marks would clearly be understood to identify Native Americans as a group, and further, that the term may be perceived as disparaging by a substantial composite, or significant portion, of that group.  Perhaps most interestingly, the Board ultimately held the federal registrations should be cancelled because the marks were disparaging at the time they were registered.

In this case, as in many other socially and politically charged issues, the pendulum of tradition swings both ways.  On the one hand, the Washington Redskins have gone by that name for more than forty years and were granted federal registrations despite the Board’s assertion that the names have always been disparaging.  On the other hand, society’s increased sensitivity to what has been termed “political correctness” is not necessarily a bad thing when derogatory names for racial groups are broadcast in popular culture on a national level.  It is important to note that the trademark cancellations do not require the team to change its name or prevent it from still enjoying the protection of state and common laws resultant from its long period of use and fame of the marks.  Additionally, much of the NFL is governed by contract, with a multitude of licensing arrangements that more than likely still provide the team with a large portion of exclusivity to the name.  The team does, however, lose the benefits afforded by federal registration, such as presumptions of trademark validity, U.S. Customs protections, and the ability to sue for potentially large statutory damages for trademark infringement.  It is also widely believed that the decision will be appealed, most likely to the federal district court, which has the ability to review such decisions de novo.  As such, no matter which side one falls on, it is probably way too early to call “Game Over.”

Intellectual property law, even with the constant tide of ever-evolving technological advancement and consumerist culture onslaught, remains to this day mainly confined to four areas: copyrights, trademarks, patents, and trade secrets.  Of these, trade secrets are the least discussed by a wide margin for several reasons, not least of which is that the law is meant to keep trade secrets . . . well . . . secret.

Thus far, trade secret law has differentiated itself from the other three areas of intellectual property, which are all protected primarily by federal statutes, namely, the Copyright Act, the Lanham Act, and the Patent Act, by allowing private causes of action for trade secret misappropriation solely in accordance with state law.  Though every state except for New York and Massachusetts has adopted, in substantial part, the Uniform Trade Secrets Act (UTSA), variations continue to exist in each state statute and each state’s interpretation.  Truly uniform protection of trade secrets and remedies for their misappropriation currently exist only at the criminal level under the federal Economic Espionage Act of 1996 (EEA).  While the EEA does purport to punish thieves of trade secrets, it does not allow for a private, civil cause of action for victims of such theft.  This is the gap that the newly-proposed Defend Trade Secrets Act (DTSA) aims to bridge.  The DTSA was proposed last month as a federal remedy to the state patchwork of trade secret protection and to provide federal protection against trade secret theft in a world where most entities have national or even international businesses, customers, and competitors.

The DTSA has several promising characteristics.  First, it would bring trade secret law in line with the other areas of intellectual property law with an overdue introduction of a uniform federal statute for trade secret protection.  Second, of paramount importance in the current international corporate landscape, it would allow for that missing federal private cause of action for trade secret misappropriation, as long as the perpetrator also violated the EEA or the trade secret is related to interstate or foreign commerce.  Third, the DTSA provides a host of remedies for victims, including injunctive and monetary relief, as well as ex parte seizures of goods and orders to preserve evidence from destruction by the perpetrator.

The DTSA also has several shortcomings, however, chief among them the fact that it specifically fails to override or preempt any state law.  Thus, the patchwork of trade secret protection would linger even with the adoption of the DTSA and perpetuate the currently lacking legal landscape of trade secret law.  Regardless, however, the DTSA would certainly be a step in the right direction, and if nothing else, may get people talking about trade secrets again.

Copyright law in the United States may have undergone several landmark revisions since its inception, but the foundational idea of recognizing and offering protection for an author’s original creation has never wavered.  In fact, the very idea is ingrained in the United States Constitution.  Nonetheless, copyright legal doctrine has evolved throughout the millennia and today has several very distinct requirements that must be satisfied in order to protect an author’s contribution.

Protection is offered for original works of authorship fixed in a tangible means of expression.  To elaborate on this simple phrase, works deserving of copyright protection must fit into one of a select set of categories of works, must be the original creation of the author utilizing at least a modicum of creativity, and must be fixed in some sort of medium from which they can be perceived for longer than a transitory period.  Based on this definition, it has long been established that the person with creative control over a work, one who makes the creative decisions in how a work is designed, made, and presented is regarded as the author who receives copyright protection in that work.  Conflicts may sometimes arise as to authorship, primarily in contexts where several people work jointly on a single work or contribute disparately to a compilation.  In a recent decision by the United States Court of Appeals for the Ninth Circuit, however, a conflict over authorship arose in previously uncharted territory, an actor’s performance.

In Garcia v. Google, Civil Docket No. 12-57302, an actress named Cindy Garcia successfully argued, contrary to long-standing tradition and understanding, that the copyright in an actor’s performance was owned by the individual actor.  Though no court has yet issued a decision specifically concerning an actor’s copyright in his individual performance, it has been thus far understood that for many reasons, that should not be the case.  First, the majority of actors are hired to perform, which under the work-made-for-hire doctrine means their employers automatically own the copyright in the actor’s work.  Second, it is typically not the individual actor who fixes the performance in a tangible medium of expression, a requirement for copyright.  Someone else handles the recording, filming, or fixation of the work for the public to enjoy.  Third, an actor’s performance is often scripted and directed, meaning the actor is not typically the one making the creative choices as to how a scene is performed, shot, or shown to others.  Nevertheless, the Ninth Circuit court was apparently influenced by Garcia’s argument that her performance was original enough and had enough of her creative contribution in it to justify an individual copyright.

Garcia’s case concerns a short, scripted performance the actress did for an adventure film role.  After she had filmed the performance, it turned out that her performance was not used in any such film in fact, but instead was released under a different moniker as part of an anti-Islamic film in which she appeared to drag the Prophet Muhammad’s name through the mud.  The video found its way on YouTube and resulted in violent protests and death threats to Garcia personally.

Because Garcia’s take down notices to Google under Section 512 of the Digital Millennium Copyright Act went unheeded, she filed suit against Google, claiming that Google was liable for copyright infringement by allowing this video to remain on the Internet and refusing to take it down from YouTube.  The court rejected Google’s free speech argument and granted Garcia an injunction against Google, forcing the takedown of the video.  Many scholars and players in the film industry have spoken out against this decision, arguing that the decision will prompt many actors to seek individual copyright protection in their work and create a multitude of conflicts with filmmakers over those rights.  Some of the proponents of the decision maintain that an actor does bring enough creativity and originality to a scripted performance to warrant individual copyright protection.  Interestingly, however, the Copyright Office has so far rejected Garcia’s copyright application for her performance, coming down on the side of tradition and long-standing practice to grant the copyright to the filmmaker, which goes along with the dissenters’ arguments that it is the filmmaker who makes the real creative decisions and formulates the final embodiment of the work.

At first blush, the decision may appear revolutionary.  For supporters, allowing an actor to retain the copyright in his individual performance may seem accurate under the law and more than that, fair.  For dissenters, the decision is contrary to what people have understood the copyright law to be for at least the past forty-five years.  Either way, however, it seems likely the easy fix for studios will simply involves being vigilant about requiring actors to sign releases and turn over any copyright in their performances in the employment contract.