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., 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., 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.

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.

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.