HEATHER SCHNEIDER
Spring 2022
I’m writing this to you on Memorial Day, which seems appropriate for this year. It seems odd to be writing about something as seemingly mundane as IP law at such a difficult time. Over a million people in the US have died of COVID. Two mass shootings, one racially motivated and the other less clear, have made the nation raw with grief. The war in the Ukraine still rages on, with mounting evidence of war crimes against civilians. Inflation is high and the stock market has been volatile. Who wants to talk about the American Axle case on Section 101 of the Patent Act? Or the copyright issues of Andy Warhol paintings of Prince? So today I’m going to talk about community. Because the reason we join NYIPLA is not just to learn about the minutiae of IP law—these days we can all learn those things online in the comfort of our WFH environment. We join NYIPLA to come together as a group of lawyers and learn together, socialize together, and support each other—a bar association in the truest sense of the word. I’m so proud of this community, of which I’ve been a part since I was a junior associate at my first Judges' Dinner. I’m proud of the activities that we continued during the pandemic, from Colman Ragan’s virtual cooking lessons, to the series of lunchtime talks with federal judges. I’ve been so pleased to see the amount of programming that our programs committee and others have been organizing. I was excited to be at the first live, in-person Judges' Dinner for two years, where the energy in the air was palpable. And finally, I was so proud to attend the live Annual Meeting at the Union League Club to be inducted as President of this organization. I am looking forward to hosting in-person Board meetings this year, including the ones we host with the committee chairs. I also look forward to growing the community of young IP lawyers, with our transactional IP and litigation boot camps. We are also hoping to rekindle the summer moot court at the Second Circuit, which was one of our flagship events for young lawyers for many years before it was derailed by the pandemic. While there are so many topics that I could pick as my “theme” for the year, I have chosen IP in Life Sciences. This resonates with me personally, since I started my career doing Hatch-Waxman litigation and now work on issues relating to biologics and biosimilars. It also seemed appropriate at the macro level, since it’s the work by life sciences companies that brought us the vaccines and other treatments that will allow us to meet in person despite the global pandemic. I am planning to host my President’s Fora on these topics as in-person events, to foster that sense of community and learning. So on this Memorial Day, while we remember the loved ones we have lost and the trials we have faced as a nation and a world, I do have hope for the future. We have faced some of the toughest times that associations like ours have had to face, and we have come through them even stronger. I look forward to seeing you all this year.
NYIPLA President's Corner
In This Issue:
President's Corner NYIPLA Spotlight: Q&A with Mark Chapman and Irena Royzman Co-Chairs of NYIPLA’s Amicus Brief Committee Going for Gold and Protecting it too: Intellectual Property and the Olympic Games By: Sean T. Boren A Music Industry Circuit Split: The De Minimis Exception in Digital Sampling By: Michaela Morrissey Andy Warhol’s Pop Art Makes it to the U.S. Supreme Court. Is the Prince Series Artwork Fair Use? By: Giselle Ayala Mateus, Esq. Historian's Corner Board Minutes NYIPLA Events Moving Up and Moving On Welcome New Members Upcoming Programs
NYIPLA Calendar
What is one issue that the Amicus Brief Committee is focusing on this year? Irena: There are many issues that we have our eye on this year. Obviousness-type double patenting, which comes up almost in every case, is one of the issues. Mark: More generally the committee also continues to follow and focus on interesting and important appeals to the Supreme Court in all IP areas. Why did you pursue a career in intellectual property law? Irena: It is a dynamic area of the law that is a perfect mix with my biotech background. Mark: I switched to patent litigation after a couple of years working as a transactional lawyer because I find litigation to be interesting and patent litigation even more so because it allows me to dig in to interesting technologies. Do you work with a particular type of intellectual property in your practice? Irena: Yes, I focus on litigation involving biotech and pharmaceutical patents. Mark: My undergraduate degree is in engineering physics, so I typically represent technology, automotive and aerospace clients in patent litigations, IPRs and related appeals. What do you see as a current challenge facing intellectual property attorneys? Irena: The law is rapidly changing and COVID has changed how we practice law -- from collecting documents to working with witnesses to handling depositions, hearings and trial. Mark: A current challenge is navigating and adapting to the PTAB’s evolving approach to discretionary IPR denials based on parallel patent litigation. Are there any recent or foreseen changes (in the law or market) that will have an impact on your practice? Irena: PTAB practice continues to evolve rapidly and impacts broader strategy for patent litigation. The law of written description and enablement is continuing to develop, particularly in the context of biotech inventions, and impacts my practice. Mark: An important development over the last couple of years has been the dramatic shift of new patent cases being filed in Judge Albright’s court in Waco, especially given his approach Markman, transfer motions, and stays. What is one thing you love to do other than work? Irena: I love to take walks in Central Park with my family. Mark: I enjoy downhill skiing and playing tennis with my boys. What advice would you give to someone considering a career in intellectual property law? Irena: My advice is to engage with IP lawyers, to find out what they love about what they do, to take classes. That is how I became interested in patent law while a Ph.D. student at MIT. Mark: For those who are considering patent litigation, make sure that you are interested not only in technology but also in the law, advocacy and litigation, because that is so much of what we do.
Q&A with Mark Chapman and Irena Royzman Co-Chairs of NYIPLA’s Amicus Brief Committee
NYIPLA SPOTLIGHT
GOING FOR GOLD AND PROTECTING IT TOO: INTELLECTUAL PROPERTY AND THE OLYMPIC GAMES The Olympic Games are an international, collaborative event that brings the world together through sport.[1] With viewership in the millions,[2] it is no surprise that the Games are seen as a valuable opportunity for sponsors to market their goods and services. In order to protect its image and ensure that the Games remain profitable, the International Olympic Committee (IOC) has essentially required the host countries to propose and enact “special legislation” that protects the Olympic intellectual property.[3] As a result, the enforcement of these protections has become a sport in and of itself, causing a variety of legal and pragmatic issues. I. Background A. The International Olympic Committee Behind the scenes of the Olympic Games, there are multiple organizations with varying levels of rights and obligations.[4] At the top of the Olympic hierarchy is the IOC, an international organization that is “the final authority on the Olympic Movement.”[5] A total of 110 individual members make up the IOC, who represent the IOC in their respective countries.[6] Under the IOC, each country that participates in the Games has its own National Olympic Committee (NOC).[7] The NOCs are responsible for promoting and selecting athletes in their country and for nominating cities to host the Games.[8] When a host city is chosen, the NOC from that host country forms an Organizing Committee of the Olympic Games (OCOG), which ensures that the Games are in compliance with the Olympic Charter, their contract with the IOC, and other instructions that the IOC provides.[9] The IOC owns the exclusive rights to the Olympic symbols (e.g., the “five rings”), flag, motto, anthem, and other identifications (e.g., “Olympic Games”).[10] Because the host-country OCOG oversees the Games, it is “responsible for controlling marketing activities,” which includes combatting ambush marketing and protecting Olympic emblems as the IOC sees fit.[11] Additionally, the IOC runs the Olympics’ worldwide sponsorship program—the TOP Program.[12] Through the TOP Program, nine to fourteen corporate sponsors receive “exclusive global marketing rights and opportunities within a designated product or service category” for a period of four years—encompassing the winter and summer games—in exchange for multi-million-dollar fees.[13] The revenue from these fees is then divided amongst the IOC, the NOC, and the two host OCOGs.[14] For the 2017-2020 time period, there are fourteen TOP sponsors, including Coca-Cola, Visa, P&G, and newcomer, Airbnb.[15] B. The United States Olympic and Paralympic Committee In 1978, Congress created the United States Olympic Committee—now United States Olympic and Paralympic Committee (hereinafter, the “USOC” or “USOPC”)—by enacting the Amateur Sports Act.[16] Congress then re-codified the Amateur Sports Act in its modern form under the Ted Stevens Olympic and Amateur Sports Act of 1998 (hereinafter, the “Ted Stevens Act” or the “Act”).[17] The USOPC “is a federally chartered corporation”[18] Under the Act, the USOPC has the exclusive right to use the name “United States Olympic and Paralympic Committee,” as well as a variety of specific symbols, emblems, and words.[19] In addition to these statutorily-designated names and images, the USOPC may register trademarks like any other entity, and is responsible for determining how the Olympic symbols, images, trademarks, and words may be used in the United States.[20] Thus, the USOPC has two primary roles: it must “protect Olympic intellectual property in the United States” as required by its obligations to the IOC in the Olympic Charter, and it is responsible for registering, protecting, and licensing its intellectual property for Team USA—the United States’ Olympic “brand.”[21] The Act “empowers the USOC to exercise exclusive jurisdiction over all matters pertaining to the participation of the United States in the Olympic Games,” and “vests the USOC with the responsibility of financing the participation of the United States in the Olympic Movement.”[22] This is especially important because “the USOC is the only NOC that does not receive financial assistance” from its government, and its ability to license the Olympic symbols to corporate sponsors in this United States is a powerful tool to fill this void.[23] Without exclusive control over Olympic symbols within the United States, “there would arguably be reduced incentive on the part of [corporate sponsors], thereby jeopardizing [the] United States[’] participation” in the Games overall.[24] In order to better govern the various sports that Olympic athletes will compete in, the Act allows the USOPC to delegate the regulation of each sport to National Governing Bodies (NGBs).[25] The NGBs are “organizations that govern and manage all aspects of their individual sports within the United States.”[26] This management includes training, hosting competitions, and nominating athletes to the U.S. Olympic teams.[27] Between the Summer and Winter Olympic Games, there are a total of forty-five sport NGBs.[28] Just like the USOPC, “the [Act] grants national governing bodies exclusive rights in ‘the name United States Olympic Committee’” and other relevant United States Olympic symbols and trademarks.[29] By relation, each NGB is able to seek out corporate sponsorship for its specific sport in relation to the Olympic Games through the licensing of Olympic symbols and related NGB-specific symbols.[30] C. Likelihood of Confusion Takes a Back Seat Under the Lanham Act, a trademark “is any combination of words, names, symbols, or devices that are used to identify and distinguish goods or services and to indicate their source.”[31] To succeed in an action for trademark infringement, the plaintiff must prove: (1) that its mark is entitled to protection and (2) “that the defendant’s use of its own mark will likely cause confusion with plaintiff’s mark.”[32] As some circuits have noted, “[t]he touchstone for trademark infringement is [the] likelihood of confusion.”[33] While likelihood of confusion is largely associated with confusion as to the source, confusion under the Lanham Act can also include confusion as to “sponsorship, affiliation, connection, or identification.”[34] “The public’s belief that the mark’s owner sponsored or otherwise approved the use of the trademark” is enough to satisfy the likelihood of confusion requirement for a trademark infringement claim.[35] Pursuant to the Act, Congress granted the USOPC the ability to bring a civil action against any party who, without permission, uses the USOPC’s exclusive words, phrases, symbols, or trademarks in an attempt to create a false association with the Olympic Games.[36] When the USOPC brings a claim under the Act, it may seek any of the remedies provided by the Lanham Act, and thus the Act is linked to standard trademark law.[37] However, because the Act’s reference to the Lanham Act is limited only to the remedial provisions, the legal standards afforded to the USOPC in enforcing its marks are different. The Second Circuit and the Supreme Court tackled this issue in U.S. Olympic Committee v. Intelicense Corp., S.A. and San Francisco Arts & Athletics, Inc. v. U.S. Olympic Committee, respectively. i. United States Olympic Committee v. Intelicense Corp., S.A. In United States Olympic Committee v. Intelicense Corp., S.A., the defendant, Intelicense Corp. (“Intelicense”), had entered into a contract with the IOC for the “exclusive worldwide rights to be the marketing agent” for the IOC’s official pictograms.[38] Intelicense’s contract with the IOC required that Intelicense receive the approval from each NOC before marketing in their respective countries.[39] Unfortunately, Intelicense failed to obtain approval from the USOC for marketing the pictograms because the USOC believed this exclusive contract would inhibit the USOC’s ability to raise money that was necessary to fund the U.S. Olympic teams.[40] Intelicense nonetheless “proceeded to license the use of pictograms on products marketed in the United States.”[41] In response, the USOC filed suit against Intelicense under the Act, “demanding that Intelicense and its licensees cease and desist from contacting corporate sponsors within the United States.”[42] Finding that Intelicense was required to obtain the USOC’s permission to market in the United States and failed to do so, the district court granted a permanent injunction in favor of the USOC.[43] On appeal to the Second Circuit, Intelicense argued that the incorporation of the Lanham Act’s remedial provisions in the Act meant that the Lanham Act’s “standards for violation” were also incorporated.[44] In other words, Intelicense argued that violations of the Act required a “likelihood of confusion,” despite the absence of this language in the Act.[45] The Second Circuit rejected this argument, finding that to impose the less-restrictive “likelihood of confusion” standard to the Act would “dramatically constrain the effective scope of the statute” and “frustrate the Act’s unequivocal purpose.”[46] In doing so, the Second Circuit established that the Act provides the USOC’s symbols and trademarks protections “that go beyond traditional trademark protections.”[47] ii. San Francisco Arts & Athletics, Inc. v. United States Olympic Committee Three years after Intelicense, the Supreme Court endorsed the holding and reasoning in Intelicense and explicitly emphasized the special nature of the USOC’s statutory power in San Francisco Arts & Athletics, Inc. v. U.S. Olympic Committee.[48] The plaintiff, San Francisco Arts & Athletics, Inc. (“SFAA”), created and began promoting the “Gay Olympic Games”—a nine-day event with athletes from around the world, featuring a “Gay Olympic Torch” and “Gay Olympic Flame.”[49] SFAA sold a variety of merchandise bearing the title “Gay Olympic Games.”[50] The USOC first attempted to resolve the issue outside the courts—it sent a letter to SFAA informing SFAA about the Act and requesting that it immediately stop using the word “Olympic” in relation to the Gay Olympic Games.[51] When SFAA continued to advertise its Games with “Olympic,” the USOC brought suit to enjoin SFAA from using the word “Olympic.”[52] The district court granted the USOC’s motion for summary judgment, and the Ninth Circuit affirmed, finding that “the Act granted the USOC exclusive use of the word ‘Olympic’” without requiring a likelihood of confusion.[53] The Supreme Court also affirmed this judgment, stating conclusively that the “language and legislative history of [the Act] indicate clearly that Congress intended to grant the USOC exclusive use of the word ‘Olympic’ without regard to whether use of the word tends to cause confusion . . . .”[54] Going further than Intelicense—though along the same path—the Court also held that the Act does not incorporate the statutory defenses of the Lanham Act.[55] Despite this holding, however, the USOC’s power over its symbols is not invincible against the First Amendment.[56] Certain noncommercial uses of the Olympic name or symbols—such as for protest—are permissible and not in violation of the Act.[57] While the Stop the Olympic Prison decision occurred before the Supreme Court decided San Francisco Arts & Athletics, the Court loosely endorsed its holding and acknowledged that it is not clear that the Act “restricts purely expressive uses of the word ‘Olympic.’”[58] II. Enforcement During the Games A. Official Olympic Sausages Only: Local Businesses Against the IOC The IOC and its subordinate entities have built a reputation for aggressively protecting the Olympic name and symbols. For the residents and local businesses within Olympic host countries, a visit from the “Olympic marketing police” is an unwelcome but not uncommon occurrence.[59] Out of celebration for London being awarded the 2012 Summer Games, Dennis Spurr, a local butcher shop owner in Weymouth, England, created a sign for his small business that featured “the five Olympic rings made of sausages.”[60] Because Spurr was not an official sponsor of the Olympic Games, the IOC threatened him with a fine for “up to $30,000 for referring to the Games using kielbasa, blood pudding or any of the more adventurous organ meats.”[61] Sadly, interlocking sausage “squares” were equally unappreciated by the IOC, and Spurr was forced to take down his celebratory signs with a bitter taste towards the games.[62] Other local shops faced similar repercussions for serving a “flaming torch baguette,” or displaying the interlocking rings made from bagels and tissue paper.[63] This strategy has disparately affected small businesses in a way that larger corporations can get around.[64] Large corporations such as Nike have the financial and legal resources to “skirt both intellectual property laws and Olympic[-]specific legislation through creative advertisements,” while smaller entities “are likely to comply” with the IOC’s demands.[65] The Olympic Games are able to profit from sponsorship when there is a strong and favorable public perception of the Games.[66] But this public perception turns sour “when the public is not engaged in . . . discussing the games due to fear of litigation.”[67] When local businesses are unable to show their pride and enthusiasm for the Games, “the IOC [may] be hurting its own brand by lessening public notice of and interest in the Games.”[68] B. Contra-Brand: The Old Rule 40 Restrictions The Olympic marketing police’s jurisdiction is not confined solely to the physical realm—their efforts extend into cyberspace as well—warning brands and individuals alike to not present any suggestion of affiliation with the Games.Rule 40 of the Olympic Charter (“Rule 40”) requires that in order to participate in the Olympic Games, “a competitor, team official or other team personnel must respect and comply with the Olympic Charter . . . including the conditions of participation established by the IOC . . . .”[69] As of the Rio 2016 Olympic Games, Bylaw 3 to Rule 40 stated, “Except as permitted by the IOC Executive Board, no competitor, coach, trainer, or official who participates in the Olympic Games may allow his person, name, picture, or sports performances to be used for advertising purposes during the Olympic Games.”[70] What this meant was that during a specified “blackout period,” athletes and their supporting team were prohibited from being featured in non-Olympic sponsors’ advertisements unless their country’s NOC approved and the advertising did “not create any impression of a commercial connection with any Olympic property and in particular the Olympic Games.”[71] This “blackout period” ran from July 27, 2016 to August 24, 2016—a time frame that covered the entire Olympic Games, nine days before the Opening Ceremony, and three days after the Closing Ceremony.[72] The IOC justified this strict rule under the rationale of preventing over-commercialization and protecting the IOC’s and NOCs’ ability to raise revenue to support their athletes.[73] Of course, this program predominantly protected the official Olympic sponsors, “prevent[ing] athletes from hawking their own sponsors.”[74] Interestingly, this 2016 promulgation of Bylaw 3 to Rule 40 was amore lenient decree than previous years. After Olympic athletes complained in 2012 that the rule was too restrictive, the IOC relaxed its Rule 40 restrictions to “allow a country-by-country approach, with more flexibility to permit some advertising featuring athletes,” as long as Olympic-related advertising was not featured in the advertisements.[75] However, the USOC still took a strict approach, requiring the advertisements be “generic,” launch by March, and run continuously through the duration of the Olympic Games.[76] The purpose behind these requirements was to ensure that the advertisements would not convey affiliation with the Games.[77] Athletes and brands alike poked fun at these stringent requirements. Jade Lally, a British Olympic athlete, tweeted a thank you to essentially no one, including winking face emojis and a disapproving “#Rule40” to end her tweet.[78] Brooks Running Co., a Seattle sportswear company that sponsored multiple athletes in the Rio Games, created truck advertisements that said “good luck, you know who you are, on making it you know where,” and referred to a “generic worldwide quadrennial sporting event.”[79] One of the main criticisms stemmed from the fact that both large and small sponsors play big roles in getting the athletes to the Olympic Games throughout their careers, and that without the ability to capitalize on that assistance once the athlete is actually competing in the Games, it disincentivizes these brands from sponsoring athletes that do not already have national or worldwide recognition.[80] Because it is the athletes and not the brands that are bound by the Olympic Charter, only the athletes could be punished for Rule 40 violations—with punishments as harsh as disqualification from the Games or being stripped of metals.[81] However, while the IOC or USOC could not punish these brands pursuant to the Olympic Charter, they could go after these brands through cease and desist letters and civil actions pursuant to the Act’s protections of Olympic words and symbols.[82] C. Working Together: Shared Obligations Under the New Rule 40 Unsurprisingly, this “lighter” version of Rule 40 also faced criticism after the 2016 Rio Games, and the IOC has taken serious measures to compromise. The IOC amended Bylaw 3 to Rule 40, which now enables athletes and their support team to “allow their person, name, picture or sports performances to be used for advertising purposes during the Olympic Games in accordance with the principles determined by the IOC Executive Board.”[83] In conformity with this change, the USOPC established a two-step process that athletes and their sponsorsmust complete to comply with Rule 40.[84] First, the athlete must register through the USOPC’s newly-created Rule 40 online portal and include the contact information of any personal sponsor that they wish to market with during the Olympic Games.[85] After the athlete has registered their personal sponsor(s), each personal sponsor will receive a link to the Personal Sponsor Commitment (the “Commitment”) which the sponsor(s) must complete.[86] Once the Commitment is properly completed, Rule 40 permission will be granted by the USOPC.[87] If a personal sponsor fails to complete the Commitment, that personal sponsor will not be able to market their athlete during the Rule 40 period.[88] The Commitment creates binding contractual obligations between the personal sponsor and the USOPC.[89] Once Rule 40 permission is granted, the company is allowed to market the athlete in two ways: (1) through “generic marketing of the product, service and brand, which includes one or more [Olympic] athletes”; or (2) athlete-focused marketing that directly references the athletes’ participation or accomplishments in the Games in a way that reflects the personal sponsor’s support of the athlete.[90] However, in both cases, the personal sponsor is prohibited from using any Olympic or Paralympic intellectual property, “or otherwise imply[ing] any relationship between that personal sponsor . . . and Team USA, an NGB[,] or the Games.”[91] Generic advertising is defined by the USOPC as “advertising [that] promotes the personal sponsor’s brand, products[,] or services, where the only connection” to the Olympic Games “is the fact [that] the advertising uses an athlete’s image.”[92] Rule 40 does not place any numerical limitation on generic advertising.[93] Conversely, the athlete and the personal sponsor are restricted when posting “athlete-focused marketing”—a distinction that applies to marketing in which the athlete thanks their personal sponsor or in which the personal sponsor recognizes the athlete’s involvement or performance in the Games.[94] Athletes are permitted to post a total of seven “thank you messages” to their personal sponsors, regardless of how many sponsors they may have, but they “may not mention or promote the personal sponsor’s products or services.”[95] Additionally, while the athletes are not limited in how many times they may thank official sponsors of the Games or the USOPC, they “may not thank [official] sponsors and personal sponsors in the same message.”[96] The personal sponsors are the most restricted in what athlete-focused marketing they are allowed to post. Personal sponsors are allowed to retweet or repost an athlete’s thank you message, but are not allowed to make revisions to that thank you message nor receive paid advertising for the retweet or repost.[97] Further, the personal sponsors are permitted to post one message congratulating the sponsored athlete for their performance in the Games, but may not use images of the athlete at the Games and “may not mention or promote the personal sponsor’s products or services.”[98] Consistent with the USOPC’s aggressive stance towards advertising, violations of the Rule 40 guidelines can lead to a variety of consequences for the athlete and especially for the personal sponsor. If a personal sponsor does not comply with or otherwise breaches the terms of the Commitment, that personal sponsor “will lose any then-current Rule 40 permission and will not be eligible to seek Rule 40 permission for the next two Olympic Games.”[99] Additionally, the personal sponsor must take down “any and all campaign materials that use the athlete’s name or likeness.”[100] As for the athlete, the USOPC emphasizes that under this new Rule 40 permission, “it is the shared responsibility of personal sponsors and athletes to be mindful of the regulations,” and that failure to comply by either party “may jeopardize the athlete’s Games eligibility.”[101] Altogether, the Rule 40 requirements are a tremendous step forward for an organization that has historically taken a staunchly adversarial position towards non-official sponsors. Lesser-known or first-time Olympic athletes may have an easier time obtaining sponsors to help fund their training and participation in the Games, since these sponsors can now reap a benefit under proper Rule 40 permission and compliance.[102] At the same time, the new Rule 40 does not diminish or devalue the USOPC’s and IOC’s most prized possessions—their symbols and trademarks.[103] And despite the fact that the overall sports marketing during the Olympics will likely increase, the USOPC and IOC continue to serve their official sponsors by granting these sponsors the exclusive right to use Olympic intellectual property and through the restrictions on the non-official sponsors.[104] Although the success of this new rule remains to be seen, it appears that protests from brands and athletes alike has brought the IOC and USOPC to the table to create a better system for all.[105] III. The 2020 Tokyo Games: Puma Declares War on the USOPC In early 2020, with the Olympic Games only a few months away, the sudden spread of COVID-19 forced Japan’s Prime Minister Shinzo Abe and the IOC’s president Thomas Bach to postpone the Tokyo 2020 Olympic Games by one year.[106] However, it was agreed that the Games would still be referred to as the “Olympic and Paralympic Games Tokyo 2020” or similar variations, such as “Tokyo 2020.”[107] Importantly for the USOPC, this meant that it could continue using its already-registered “Tokyo 2020” trademark for the games.[108] On the very same day that the Games were officially postponed, footwear giant Puma SE (“Puma”) saw an opportunity to gain a commercial advantage and sought to register the trademark “Puma Tokyo 2021” (the “Puma Mark”) with the United States Patent and Trademark Office (USPTO).[109] The trademark was ultimately rejected by the USPTO for: (1) creating a false connection with the USOPC and (2) being likely to cause confusion with the USOPC’s existing registrations—namely, the “Tokyo 2020” trademark.[110] Puma then sought to register marks related to the Beijing 2022 Games and Paris 2024 Games, but was rejected by the USPTO for the same reasons.[111] In response, Puma “initiated numerous cancellation actions and one opposition action” at the Trademark Trial and Appeal Board (TTAB), claiming that the USOPC’s marks bearing the same city and year are invalid.[112] Puma argued that the USOPC’s “host city plus year” designation was merely descriptive and should therefore be cancelled, emphasizing itsneed “to advertise its own sponsored athletes who will compete in future games.”[113] As the TTAB proceedings were pending,[114] the USOPC brought an action against Puma in federal court for trademark infringement under the Ted Stevens Act and the Lanham Act, and sought a declaration that its own marks are valid and enforceable.[115] The claims arose not just out of Puma’s attempt to register the “host city plus year” marks (the “Games Marks”) with the USPTO; the USOPC also alleged that Puma had already begun to market and promote its Puma Mark through licensing, endorsement, and sponsorship deals, and had already “secured manufacturers to produce” apparel containing the Puma Mark.[116] The accusations in the USOPC’s complaint followed the same rationale that the USPTO provided for denying registration of the Puma Mark: that Puma’s use of the mark “falsely associate[s Puma] with [the] USOPC and the Olympic Movement,” and is likely to confuse consumers as to sponsorship.[117] In doing so, the USOPC alleged that Puma was “thereby infringing the USOPC’s valuable trademark rights and harming the goodwill [that] the USOPC has developed” in the Games Marks.[118] In other words, Puma “has declared war on the Games Marks” and the USOPC[119]—a bad enemy to have. While the Act confers special privileges upon the USOPC in protecting its symbols and trademarks—in the sense that it does not have to prove a likelihood of confusion against defendants using trademarks or symbols that feign association with the USOPC or Olympic Games[120] —the Act does not grant any special privileges to the USOPC for registration of its trademarks.[121] Aside from the words and symbols explicitly listed in the Act, when the USOPC seeks to register a trademark—such as the Games Marks—the USOPC has to prove that the word or phrase it is seeking to register “is initially registrable or protectable.”[122] Courts have typically divided these potential trademarks into four different categories of distinctiveness: generic, descriptive, suggestive, or arbitrary and fanciful.[123] Generic terms “can never attain trademark protection” because they fail to identify the source of the product in consumers’ minds and are therefore not distinctive.[124] On the other end of the spectrum, suggestive terms “require[] the consumer to exercise imagination in order to draw a conclusion” about the goods and services being marketed, while arbitrary and fanciful terms “bear no relationship to the products or services to which they are applied,” and therefore these marks are inherently distinctive.[125] In the middle of this spectrum are descriptive terms, which “identif[y] a characteristic or quality of an article or service,” and are therefore not ordinarily protectable as trademarks unless they have acquired “a secondary meaning in the minds of the consuming public.”[126] Secondary meaning can be achieved when “words with an ordinary and primary meaning of their own ‘may by long use with a particular product, come to be known by the public as specifically designating that product.’”[127] To prove secondary meaning, the trademark registrant must show that the term identifies the producer, not the product, in the minds of consumers.[128] Puma seemed to recognize that it was fighting a losing battle if it argued that its Puma Mark did not create false association or was not likely to cause confusion. To get around this, Puma instead turned to the distinctiveness requirement for registration to move its obstacles out of the way: by invalidating the USOPC’s Games Marks.[129] Puma alleged in its TTAB cancellation proceedings that the Games Marks are merely descriptive without secondary meaning, since the marks just describe the city and year in which the Games take place.[130] Therefore, Puma argued, it “needs to be able to use” the host city plus year phrase to properly market its athletes, and the USOPC’s registered Games Marks prevent it from doing so.[131] The USOPC rebutted this argument in its complaint, claiming that the Games Marks have achieved secondary meaning since the marks are “[a]mong the most iconic of the Olympic brands” because “[t]he USOPC and its affiliates have a long tradition of branding the Olympic Games with Games Marks.”[132] Sadly, the answer to these challenges will not be resolved by the district court nor the TTAB, as both Puma and the USOPC voluntarily withdrew their respective cases.[133] The unprecedented postponement of the Tokyo 2020 Games created a unique situation in which the name of the Games was not the year in which they were actually taking place, and thus the “host city plus year” mark for the actual year—2021—was not sought by the USOPC. While the TTAB has previously held that the USOPC’s “host city plus year” mark is “a reference to the Olympic Games” and therefore “not merely descriptive,”[134] it has also held permitted the registration by others of words that are similar but not identical to the USOPC’s exclusive words and phrases in the Act.[135] Thus, although Puma’s challenge may have been far-fetched, it was not entirely without merit.[136] While tensions were clearly high between the USOPC and Puma, perhaps the voluntary withdrawal is a pleasant indication that Puma and the USOPC may work together on official sponsorship, or that Puma may instead seek a Rule 40 permission. IV. Conclusion If there is anything the IOC and USOPC have learned from their various legal skirmishes, it is that the contours of their marketing restrictions must adapt to the changing landscape of their athletes and consumers.As the lines between social issues and marketing have become increasingly blurred[137] —especially for athletes[138] —the IOC and USOPC face new challenges in policing their intellectual property.Brands are “speaking” on the pressing social issues of today, and the Olympic Games may be forced to choose between silencing these messages alongside their images and symbols or letting them pass out of fear of bad publicity.[139] Regardless of how the IOC and USOPC go about it, the Olympic Games are sure to be one to watch closely—in both the arenas and in the courts. Endnotes [1] Olympic Movement, Olympics, https://olympics.com/ioc/olympic-movement (describing the Olympic games as “the great sports festival” that “bring[s] together . . . the world’s athletes”). [2] See Daniel Holloway, How Rio Ratings Surprised NBC and Will Impact Future Olympics, Variety (Aug. 23, 2016, 5:43 PM), https://variety.com/2016/tv/news/2016-olympics-ratings-rio-nbc-1201843200/ (discussing an average of 27.5 million viewers across all platforms). [3] Alex Locke, Fair Use & Fair Play: Olympic Marketing in the Information Age, 1Int’l Comp. Pol’y & Ethics L. Rev. 339, 346 (2018). [4] Id. at 344-45. [5] Olympics and International Sports Law Research Guide, Geo. L. Libr., https://guides.ll.georgetown.edu/c.php?g=364665&p=2463479 (last visited Mar. 29, 2021). [6] Id. These members do not represent the interests of their individual countries to the IOC. Id. [7] Locke, supra note 3, at 344-45. [8] Id. [9] Id. at 345. [10] Olympic Charter, Olympics 22-23 (July 17, 2020), https://stillmedab.olympic.org/media/Document%20Library/OlympicOrg/General/ EN-Olympic-Charter.pdf#_ga=2.13080254.82547580.1617069420-41500786.1617069420. [11] Id. at 28; Locke, supra note 3, at 345. [12] Olympic Marketing Fact File, Olympics15, https://stillmedab.olympic.org/media/Document%20Library/OlympicOrg/Documents/ IOC-Marketing-and-Broadcasting-General-Files/Olympic-Marketing-Fact-File.pdf#_ga=2.160069245.1371291537.1617398248-41500786.1617069420 (last updated Jan. 2020). [13] Id.; see also Denise Lee Yohn, Olympic Advertisers Are Wasting Their Sponsorship Dollars, Forbes (Aug. 3, 2016, 5:17 AM), https://www.forbes.com/sites/deniselyohn/2016/08/03/olympics-advertisers-are-wasting-their-sponsorship-dollars/?sh=7ae64f7c2070 (emphasis added) (noting that TOP Program sponsorship “can cost over $200 million these days” as of the 2016 Rio Olympics). [14] Olympic Marketing Fact File, supra note 12, at 15. [15] Id. at 16. [16] 36 U.S.C. §§ 371-396 (1978). [17] Noelle K. Nish, How Far Have We Come? A Look at the Olympic and Amateur Sports Act of 1998, the United States Olympic Committee, and the Winter Olympic Games of 2002, 13 Seton Hall J. Sports L. 53, 56 (2003). [18] 36 U.S.C. §220502(a) (2020). [19] 36 U.S.C. § 220506(a) (2020). The symbols include: the “5 interlocking rings” (the symbol for the IOC), the “3 Agitos” (the symbol for the International Paralympic Committee), and the “torch surrounded by concentric rings” (the symbol for the Pan-American Sports Organization). § 220506(a)(2). The emblem consists of “an escutcheon having a blue chief and vertically extending red and white bars on the base with 5 interlocking rings displayed on the chief.” § 220506(a)(3). The words include: “Olympic, Olympiad, Citius Altius Fortius, Paralympic, Paralympiad, Pan-American, Parapan American, America Espirito Sport Fraternite, or any combination of those words.” § 220506(a)(4) (internal quotation marks omitted). [20] 36 U.S.C. § 220506 (2020); Locke, supra note 3, at 351. [21] Complaint and Jury Demand at 4-6, U.S. Olympic & Paralympic Comm. v. Puma SE,et al., No. 21-cv-00528 (D. Colo. Feb. 2, 2021); see also About the U.S. Olympic & Paralympic Committee: History, Team USA, https://www.teamusa.org/about-the-usopc/history (last visited Apr. 9, 2021). [22] U.S. Olympic Comm. v. Intelicense Corp., S.A., 737 F.2d 263, 266 (2d Cir. 1984). [23] Id. [24] Nish, supra note 17, at 56-57. [25] 36 U.S.C. § 220503(8) (2020). [26] About the U.S. Olympic & Paralympic Committee: Structure, Team USA, https://www.teamusa.org/about-the-usopc/structure (last visited Apr. 9, 2021). [27] Id. [28] Id. [29] Gold Medal LLC v. USA Track & Field, 899 F.3d 712, 717 (9th Cir. 2018) (citing 36 U.S.C. § 220506(a) (2020)). [30] See id. (“[T]he A[ct] establishes funding for the Olympic mission as a central responsibility of the Olympic Committee and its national governing bodies.”). [31] Am. Express Co. v. Goetz, 515 F.3d 156, 159 (2d Cir. 2008) (citing 15 U.S.C. § 1127 (2006)). [32] Star Indus., Inc. v. Bacardi & Co. Ltd., 412 F.3d 373, 381 (2d Cir. 2005) (internal quotation marks omitted). [33] Stone Creek, Inc. v. Omnia Italian Design, Inc., 875 F.3d 426, 431 (9th Cir. 2017); see also Rock & Roll Hall of Fame & Museum, Inc. v. Gentile Prods., 134 F.3d 749, 756 (6th Cir. 1998) (“As always, the touchstone will be the likelihood of consumer confusion.”). [34] Star Indus., 412 F.3d at 383. [35] Id. at 384. [36] 36 U.S.C. § 220506(c) (2020). [37] Id. [38] U.S. Olympic Comm. v. Intelicense Corp., S.A., 737 F.2d 263, 265 (2d Cir. 1984). [39] Id. [40] Id. [41] Id. [42] Id. [43] Id. [44] Id.at 267 (emphasis added). [45] Id. [46] Id. “The fundamental purpose of th[e] Act was to safeguard the USOC’s ability to raise the financial resources” to facilitate American athletes in international competition on behalf of the United States. Id. at 264. [47] Locke, supra note 3, at 353. [48] S.F. Arts & Athletics, Inc. v. U.S. Olympic Comm., 483 U.S. 522 (1987). [49] Id. at 525. [50] Id. [51] Id. at 527. [52] Id. [53] Id. [54] Id. at 530. [55] Id. at 530-31 (“[A]n unauthorized user of the word does not have available the normal statutory defenses.”). The Court addressed this issue because SFAA argued that its use of the word “Olympic” was merely descriptive under Lanham Act. Id. at 530 n.5. [56] See Stop the Olympic Prison v. U.S. Olympic Comm., 489 F. Supp. 1112 (S.D.N.Y. 1980) (allowing the defendant to use the Olympic symbols and name on a poster for the purposes of criticism). [57] See id. at 1119-20 (holding that the broad language of the statute “cannot be interpreted to mean that only the defendant and its licensees may use the word ‘[O]lympic’ and the enumerated symbols for any purpose whatsoever”). [58] S.F. Arts & Athletics, 483 U.S. at 536 & n.14. [59] See Jeré Longman, Where Even Sausage Rings Are Put on the Chopping Block, N.Y. Times (July 24, 2012), https://www.nytimes.com/2012/ 07/25/sports/olympics/2012-london-games-even-sausage-rings-alarm-marketing-police.html?_r=0. [60] Id. [61] Id. [62] Id. (Spurr complaining that “[e]veryone is so serious” in relation to Olympic affiliation). [63] Id. [64] Locke, supra note 3, at 347. [65] Id. at 347-48. Nike was not an official sponsor of the London Games. Id. at 347. Nevertheless, Nike created and ran an advertisement that featured its athletes “in other cities named London throughout the world.” Id. at 347-48. This creative loophole allowed Nike “to take advantage [of] the popularity of the Olympics” and “cash in on the emotions elicited by the Olympics” in ways that smaller businesses could not due to their financial limitations and lack of legal know-how. Id. [66] Id. at 348. [67] Id. [68] Id. at 347. “It’s their loss, not ours.” Longman, supra note 59 (quoting the butcher shop owner). [69] Olympic Charter, supra note 10, at 76 (July 17, 2020). [70] Use of a Participant’s Image for Advertising Purposes During the Rio 2016 Olympic Games, Olympics1, https://stillmed.olympic.org/ Documents/Athletes_Information/Rule_40-Rio_2016-QA_for_Athletes.pdf (last visited Apr. 26, 2021). [71] Id. at 1-2. [72] Id. at 1. [73] Id. [74] Chris Chavez, What Is Rule 40? The IOC’s Rule on Non-Olympic Sponsors, Explained, Sports Illustrated (July 25, 2018), https://www. si.com/olympics/2016/07/25/rule-40-explained-2016-olympic-sponsorship-blackout-controversy. [75] Navigating Olympic Advertising: Rule 40—A Global Perspective, LawInSport (Feb. 16, 2016), https://www.lawinsport.com/topics/item/ navigating-olympic-advertising-rule-40-a-global-perspective. [76] Id. [77] Id. [78] Shan Li, Olympics Bans Most Brands from Saying “Olympics” or “Rio” Even on Twitter. Snark Ensues, L.A. Times (Aug. 11, 2016, 6:00 AM), https://www.latimes.com/business/la-fi-olympics-rule-40-20160802-snap-story.html. [79] Id. [80] See id. [81] Chavez, supra note 75. [82] See supra Section I. [83] Olympic Charter, supra note 10, at 76. [84] Jessica Borowick & Po Yi, Let the Games Begin: USOPC Releases Personal Sponsor Commitment, JD Supra (Jan. 29, 2020), https://www.jdsupra.com/legalnews/let-the-games-begin-usopc-releases-97329/. [85] Id. [86] Athlete Marketing for the Olympic and Paralympic Games Tokyo 2020: Rule 40 Guidance for the United States, Team USA2 (Mar. 5, 2021) [hereinafter Rule 40 Guidance], https://rule40registration.teamusa.org/Assets/doc/2021/USOPC-2020-Domestic-Rule-40-Guidance-March %205%202021%20.pdf. [87] Id. [88] Id. The Rule 40 period for the Tokyo 2020 Olympic Games will run from July 13, 2021 to August 10, 2021. Id. [89] Borowick & Yi, supra note 85. [90] Rule 40 Guidance, supra note 87, at 4. [91] Id. The same “heightened” intellectual property protections of the USOC’s symbols and trademarks in the Act apply against personal sponsors that receive Rule 40 permission. See Borowick & Yi, supra note 85 (“Some of these rules simply reinforce prohibitions on using Olympic-related intellectual property that already existed in the Ted Stevens Amateur Sports Act.”). [92] Rule 40 Guidance, supra note 87, at 4. As an example of permissible generic advertising, the USOPC provides an image of an athlete wearing the personal sponsor’s apparel with text that says “GO [ATHLETE NAME].” See id. at 6. [93] See generally id.; see also U.S. Rule 40 Education, Team USA, https://rule40registration.teamusa.org/Home/R40Education (giving no indication of a numerical limit for generic advertising under the “Non-Games-related, generic advertising” expandable menu). [94] Rule 40 Guidance, supra note 87, at 6. [95] Id. [96] Id. [97] Id. at 7. [98] Id. at 8. [99] Borowick & Yi, supra note 85 (emphasis added). [100] Id. [101] Rule 40 Guidance, supra note 87, at 3 (emphasizing that even though the new Rule 40 permission procedure forms a contract, “at its core, Rule 40 is an IOC and IPC eligibility rule”). [102] Cf. Shan Li, supra note 79 (noting how “athletes without a famous name . . . are still left out” because “[c]ompanies that do want to seize on the Olympic furor are more likely to sign up well-known Olympians”). [103] See Rule 40 Guidance, supra note 87, at 4-10 (repeatedly emphasizing that personal sponsors may not use Olympic symbols or trademarks); see also Borowick & Yi, supra note 94 (discussing how Rule 40 reinforces the prohibition against using Olympic-related intellectual property under the Act). [104] Rule 40 Guidance, supra note 87, at 10 (delineating the exclusive intellectual property rights official sponsors receive, and thus consequently the intellectual property that the personal sponsors may not use). [105] See Shan Li, supra note 79 (discussing how protests on social media helped relax Rule 40 after the 2012 games, and has the potential to be impactful going forward). [106] Kelly Cohen, Tokyo 2020 Olympics Officially Postponed Until 2021, ESPN (Mar. 24, 2020), https://www.espn.com/olympics/story/_/id/ 28946033/tokyo-olympics-officially-postponed-2021. Prior to 2020, the Olympic Games had never been cancelled nor postponed for anything other than a war. Id. [107] See Frequently Asked Question About the Olympic Games Tokyo 2020, Olympics (May 8, 2020), https://olympics.com/ioc/news/ioc/tokyo -2020-q-a/#:~:text=These%20Olympic%20Games%20Tokyo%202020,and%20Paralympic%20Games%20Tokyo%202020%E2%80%9D (affirming that the name will remain the same as a symbol of hope and celebration of humankind after the COVID-19 hardships). [108] Bill Donahue, Olympic Committee Says Puma “Declared War” on Trademarks, Law360 (Feb. 23, 2021), https://www.law360.com/articles/ 1358085/olympic-committee-says-puma-declared-war-on-trademarks. [109] Id. [110] Complaint and Jury Demand at 13, U.S. Olympic & Paralympic Comm. v. Puma SE, et al., No. 21-cv-00528 (D. Colo. Feb. 2, 2021). [111] Id. [112] Id. at 14. The one opposition action was for the “PARIS 2024” application that is still pending. Id. [113] Donahue, supra note 109. [114] Complaint and Jury Demand at 15, U.S. Olympic & Paralympic Comm. v. Puma SE, et al., No. 21-cv-00528 (D. Colo. Feb. 2, 2021). [115] Id. at 1. [116] Id. at 16-18. [117] Id.; see also id. at 13 (noting that the USPTO refused to register the Puma Marks because they were “likely to cause confusion with USOPC’s registrations and as creating a false connection with the USOPC”). [118] Id. at 18. [119] Id. at 12. [120] See supra Section I.C. [121] See 36 U.S.C. § 220506(c) (2020) (granting the USOPC the right to initiate a civil action for falsely representation association with the USOPC’s trademarks, but silent on registration). For clarity, the names and symbols that are explicitly listed in the Act (such as the “United States Olympic and Paralympic Committee” and the “5 interlocking rings”) are not considered “trademarks” within the Act; the USOPC is simply granted “exclusive right to use” these words and symbols. § 220506(a). [122] Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 790 (5th Cir. 1983). [123] Id. [124] Id. [125] Id. at 791. [126] Id. at 790 (internal citations omitted). [127] Id. at 791 (quoting Volkswagenwerk Aktiengesellschaft v. Rickard, 492 F.2d 474, 477 (5th Cir. 1974)). [128] Id. [129] Complaint and Jury Demand at 14, U.S. Olympic & Paralympic Comm. v. Puma SE,et al., No. 21-cv-00528 (D. Colo. Feb. 2, 2021). [130] Donahue, supra note 109 (“Puma says th[at] the city-plus-year names are just descriptive terms that it needs to use to advertise its own sponsored athletes who will compete in future games.”). [131] Complaint and Jury Demand at 15, U.S. Olympic & Paralympic Comm. v. Puma SE, et al., No. 21-cv-00528 (D. Colo. Feb. 2, 2021). [132] Id. at 6. [133] Bill Donahue, Olympics, Puma Call Truce in “Tokyo 2020” Trademark Fight, Law360 (Apr. 14, 2021), https://www.law360.com/articles/ 1375116/olympics-puma-call-truce-in-tokyo-2020-trademark-fight. [134] In re Urbano, 51 U.S.P.Q.2d 1776, at *4 (T.T.A.B. 1999) (affirming the USPTO’s refusal to register the mark “SYDNEY.2000” for being “a reference to the Olympic Games” from a non-sponsoring party). [135] In re Midwest Tennis & Track Co., 29 U.S.P.Q.2d 1386, at *2 (reversing the USPTO’s refusal to register the mark “OLYMPIAN GOLDE” because it “simply is not a combination of the terms . . . set forth in [the Act],” and therefore “is not unlawful”); see also O-M Bread, Inc. v. U.S. Olympic Comm., 65 F.3d 933, 938 n.3 (Fed. Cir. 1995) (discussing the same). [136] See id. [137] See Tiffany Hsu, Corporate Voices Get Behind “Black Lives Matter” Cause, N.Y. Times (last updated June 10, 2020), https://www.nytimes. com/2020/05/31/business/media/companies-marketing-black-lives-matter-george-floyd.html (“Companies like Nike, Twitter and Citigroup have aligned themselves with the Black Lives Matter movement.”). [138] See, e.g., Allen Kim,Nike’s All-Black Colin Kaepernick Jersey Marking 4 Years Since He Took a Knee Sells Out in Less Than a Minute, CNN (last updated Sept. 17, 2020, at 4:51 PM), https://www.cnn.com/2020/09/17/us/colin-kaepernick-nike-jersey-trnd/index.html. [139] See Athlete Protests Remain Banned at Tokyo Olympics Based on Survey Results, IOC Says, ESPN (Apr. 21, 2021), https://www.espn.com/olympics/story/_/id/31304130/athlete-protests-remain-banned-olympics-based-survey-results-ioc-says (discussing the IOC’s prohibition on athlete protests and political messages, but allowing athletes to wear apparel containing phrases such as “Black Lives Matter”).
Going for Gold and Protecting it too: Intellectual Property and the Olympic Games By: Sean T. Boren
A Music Industry Circuit Split: The De Minimis Exception in Digital Sampling By: Michaela Morrissey
When Def Jam recording artists 3rd Bass rapped, “ya stole somebody’s record then ya looped it, ya looped it . . . now ya getting sued kinda stupid . . . .”[1] they spoke of the end of what was known as the “Golden Age”[2] of digital sampling in the hip-hop and rap music industry. The Golden Age began in the late 1980’s, and because there was no regulation of the practice, it was a period of musical enlightenment in which musicians could freely utilize digital sampling without legal repercussion.[3] However, in 2005, the Sixth Circuit handed down an opinion that sent shock waves across the music industry. In Bridgeport Music Inc. v. Dimension Films,[4] the Sixth Circuit cracked down on digital sampling when it ruled that any use of a copyrighted sound recording amounted to copyright infringement, no matter the size of the sample taken.[5] Although the opinion was staunchly criticized,[6] it remained the only digital sampling case decided by the federal court of appeals for over ten years.[7] Yet, in 2016, the Ninth Circuit formalized the divide when it held that the de minimis defense—the rule that a small amount of copying is permitted—does, in fact, apply to sound recordings.[8] This opinion stands in direct opposition to the Bridgeport holding,[9] thereby creating a circuit split on the issue of de minimis use of digital sampling. If this rift remains unresolved, it will continue to send a wave of unpredictability across the music industry that will not only chill artistic creativity but will stifle the judicial economy.[10] This Article examines the current circuit split between the Sixth and Ninth Circuits over music sampling and copyright for sound recordings, specifically with regard to the application of the de minimis defense. Part I of this Article will define digital sampling and provide its history and the techniques used in the process. Part II will review copyright law principles that apply to digital sampling, including copyright infringement and the de minimis defense. Part III will analyze the circuit split between the Sixth and Ninth Circuits. Finally, Part IV will discuss the impact of the split on the music industry, as well as proposed congressional and judicial solutions to the split. I. BACKGROUND Sampling is not a new practice. When Pablo Picasso said: “Bad artists copy. Great artists steal;”[11] and when Igor Stravinsky said: “A good composer does not imitate, he steals,”[12] the sentiment remained the same. The practice of sampling (or stealing) from predecessors is nothing new. In reality, all art builds upon past works in some sense.[13] A. What is Digital Sampling? To that end, music that is truly original is exceedingly rare.[14] This is an inevitable consequence of the fact that there are only a finite number of musical notes and orders in which to arrange them.[15] Still, musicians continue to create new musical works through a variety of methods, such as “sampling.”[16] Sampling has been defined as “the actual physical copying of sounds from an existing recording for use in a new recording, even if accomplished with slight modifications such as changes to pitch or tempo.”[17] Musicians must digitally record a sound from an existing recording—typically an old or popular song that the artist wants to recreate—to produce a sample that typically lasts no more than a few seconds.[18] Supporters of digital sampling claim that sampling allows an artist to pay homage to past musical prodigies.[19] Opponents counter that sampling is merely unfair appropriation and exploitation of the creative efforts of musical innovators.[20] The safest way to digitally sample is to obtain a license from the copyright holder.[21] However, obtaining a license can be time consuming and costly because there are two different copyrightable aspects of music: the musical composition and the sound recording.[22] The issue is that the copyright holders for both are often different, therefore, artists who wish to obtain a license to use small samples from a copyrighted song will have to “obtain[] multiple licenses from multiple sources.”[23] B. History of Digital Sampling The root of digital sampling primarily comes from Jamaica in the 1960s when disc jockeys (“DJs”) used portable sound systems to take records and weave in their own vocals, chants, growls, and shouts.[24] The sound system concept was brought to the United States by Kool Herc, a Jamaican-born DJ who’s famous Herculoids sound system shook South Bronx clubs in the early 70s.[25] DJs used analog record turntables and a stereo mixer to loop, cut, and integrate various break beats into new musical works to extend them for as long as they wanted.[26] Though, because DJs had to rely on analog technology, sampling in the early days was often extremely time-consuming, involving hours of layering sampled loops and sounds.[27] These techniques advanced even more in the 80s with the invention of the digital sampler.[28] Music producers were using digital samplers as an editing short-cut to save them time, money, and resources,[29] and by the mid 80s, the price of samplers had dropped dramatically.[30] “As samplers became more affordable, their use spread from recording studios to homes, and [DJs] began to produce their beats and . . . record marketable versions of their performances . . . .”[31] A digital sampler was now just like any other instrument used to make music.[32] Though sampling was initially confined to hip-hop and rap,[33] it is now widely accepted in all areas of music.[34] The expansion of digital sampling planted the seeds for future copyright problems as rappers began to take notice of artists like the Beastie Boys and Public Enemy who were rising to the top of hip-hop charts producing sample-heavy albums.[35] Soon, every imitator looking to make a name for themselves incorporated digital sampling into their music.[36] By 1996, “digital sampling ha[d] become so pervasive that many musicians and engineers . . . regard[ed] it as being indispensable in the music industry.”[37] However, this enlightened period of freedom in the industry slowed to a halt when questions of copyright law started emerging around the practice.[38] As digital sampling grew in popularity, piles of sampling lawsuits grew as well. Initially, these lawsuits were settled because it was unclear on which side of the issue courts would land.[39] But in December of 1991, the District Court for the Southern District of New York “dropped the hammer”[40] on rapper Biz Markie when it ruled that all sampling was a violation of copyright law, full stop.[41] Though, before diving more into the case law, an introduction of the legal overview of copyright law and digital sampling is necessary. II. INTRODUCING COPYRIGHT LAW Article I Section 8 of the United States Constitution provides for the regulation of copyrights by granting Congress the power “[t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”[42] Specifically, the Copyright Clause provides Congress with the power to make copyright laws.[43] The Copyright Act of 1909[44] set the stage for incorporating music into the Copyright Clause; it was the first step towards protecting musical works.[45] A. Copyright Law for Sound Recordings As technology improved, Congress amended the Copyright Act in 1971 through the Sound Recording Amendment,[46] which added separate copyright protection for sound recordings.[47] After, most “records, tapes, and CDs”[48] involved two separate copyrights: the musical composition copyright[49] and the sound recording copyright.[50] The musical composition copyright protects the song itself, including the lyrics and music.[51] The sound recording copyright, in contrast, “protects one particular recording of a musical work.”[52] Though a sound recording copyright may be held by the artist, it is typically held by the record company,[53] while a songwriter or publishing company usually holds the music composition copyright.[54] The most recent revision of the Act, the Copyright Act of 1976,[55] expands the scope of protection for musical compositions and limits the scope of protection for sound recordings.[56] The Act provides the copyright owner with the following exclusive rights: the right to reproduce the work, the right to prepare derivative works, the right to publicly perform the work, the right to display the work in a public place, and—for sound recordings only—the right to publicly perform the work by means of a digital audio transmission.[57] Congress enacted these exclusive rights with the intent to encourage artists to create original works by providing them with economic protection.[58] B. Copyright Infringement of Sound Recordings A copyright owner who believes one of their rights has been violated may bring a copyright infringement suit. There are three elements required for a successful copyright infringement claim: (1) ownership of a valid copyright, (2) proof of copying, and (3) unlawful appropriation of original elements.[59] In cases with unauthorized sampling, providing proof of copying may be especially difficult.[60] This is especially true when producers alter the musical samples by changing the pitch or tempo.[61] However, in sampling cases in which the sampled piece is less distorted, the alleged infringer typically admits to direct copying, since it is clear he sampled the sound directly from the sound recording.[62] C. The De Minimis Defense Finally, unlawful appropriation is required for a finding of copyright infringement.[63] The rights granted to copyright owners are not absolute. Over a century ago, Judge Chatfield explained: “Even where there is some copying, the fact is not conclusive of infringement. Some copying is permitted. In addition to copying, it must be shown that this has been done to an unfair extent.”[64] Unlawful appropriation is established by showing that alleged infringing work bears a substantial similarity to the original work.[65] De minimis non curat lex (de minimis) refers to copying that is so trivial it falls below the required element of substantial similarity.[66] In digital sampling cases, the two main tests courts have used to determine whether the alleged infringer’s copying is de minimis are the “ordinary observer” test[67] and the “fragmented literal similarity” test.[68] Under the ordinary observer test, substantial similarity exists when a trier of fact determines that an average listener could recognize the appropriation.[69] This test proposes that a court should not impose liability on an unauthorized appropriator if the average audience, looking at each song as a whole, would not find that the alleged infringing work is similar to the original work.[70] Conversely, under the fragmented similarity test, courts look only at the similar portions of each song—like the sampled segment—rather than the entire song.[71] Substantial similarity is found where either: (1) the sample constitutes a substantial portion of the original work (not a substantial portion of the infringing work); or (2) although the similarity is small, the sampled portion is significant because it is “the heart of the work.”[72] Courts have applied either the ordinary observer test, the fragmented similarity test, or a combination of the two in sampling cases to determine whether a substantial similarity exists between the two works.[73] In cases of digital sampling, courts are tasked with determining what constitutes the substantiality of the portion used in relation to the copyrighted work as a whole. Contrary to popular belief, there is no bright-line rule, and this uncertainty has caused confusion in the music industry as to what is an acceptable practice.[74] There is a large and unpredictable gray area in the law about what amount of copying will be substantially similar and what will be de minimis.[75] Unless an unlawful appropriation is found to be substantially similar, a court applying the de minimis rule will find that no copyright infringement has occurred.[76] III. THE CIRCUIT SPLIT The first music sampling case to make it to federal court was Grand Upright Music Ltd. v. Warner Bros. Records.[77] In this case, the court made it clear that sampling was out and out copyright infringement.[78] The opinion, which began with “Thou shalt not steal,”[79] effectively ended unauthorized digital sampling in the music industry. The court rejected the reasoning from defendant Biz Markie that digital sampling was commonplace in the music industry and thus should not constitute infringement.[80] This case transformed the music industry, as one of the biggest names in hip-hop was being held liable for unauthorized sampling for the first time.[81] After Grand Upright, all major labels in the industry were on notice of the sudden shift in the world of digital sampling. For those artists still wishing to sample, the choice was simple: “either pay up or hope not to get caught.”[82] Sometimes the later approach worked, but, almost ironically, only so when the song was unsuccessful.[83] If an artist does not pay up, and then the song becomes a hit, someone is bound to notice the similarities.[84] The Grand Upright decision sparked other sample-related cases, and litigation in the area began to pile up.[85] Most notably of these was Newton v. Diamond,[86] a case involving a six-second, three-note segment of a musical composition by jazz flutist James Newton that the Beastie Boys sampled and placed into their song, “Pass the Mic.”[87] The Ninth Circuit held that the sample, which comprised of “two percent of the four-and-a-half-minute . . . sound recording,”[88] was too small compared to the length of the song to be actionable, and that “an average audience would not discern Newton’s hand as a composer . . . from Beastie Boy’s use of the sample.”[89] Therefore, the court concluded that the Beastie Boys’ use was de minimis, and thus did not constitute copyright infringement.[90] However, because the Beastie Boys had obtained a license to sample the sound recording, Newton left open the issue of whether the de minimis defense similarly applied to sound recordings.[91] A. The Sixth Circuit Two years after Newton, the issue returned to federal court when the Sixth Circuit attempted to resolve de minimis use in unauthorized sampling of sound recordings.[92] This was the first time a court of appeals ruled on the sampling of a sound recording.[93] In Bridgeport Music Inc. v. Dimension Films, the dispute arose out of the use of a sample from the George Clinton, Jr. and the Funkadelic’s song, “Get Off Your Ass and Jam” in the N.W.A. song, “100 Miles.”[94] The case centered around a two-second, three-note guitar riff that was “copied, the pitch was lowered, and the copied piece was ‘looped’ and extended to sixteen beats.”[95] The sample appeared five places in the song, with each looped segment lasting around seven seconds.[96] The district court granted summary judgement to the defendants, finding that the sample did not constitute unlawful appropriation under the de minimis test.[97] On appeal, the defendants argued that it was irrelevant whether or not the appropriation was de minimis, because the de minimis test should not be used at all in cases concerning digital sampling of a sound recording.[98] The Sixth Circuit agreed, and reversed the district court’s granting of summary judgement, ruling that sound recordings are subject to a different analysis than musical compositions.[99] The court relied on a statutory interpretation of 17 U.S.C. § 114(b) to reach its conclusion.[100] After noting that it is clearly unlawful to copy an entire sound recording, the court proceeded to determine whether sampling something less than the entire sound recording is equally unlawful.[101] In addressing this issue, the court turned to § 114(b), which states that the exclusive rights granted to copyright holders in § 106(1)–(6) “do not extend to the making or duplication of another sound recording that consists entirely of an independent fixation of other sounds, even though such sounds imitate or simulate those in the copyrighted sound recording.”[102] In other words, § 114(b) allows anyone to listen to the sound recording and imitate or simulate the notes played, insofar as the person does so using her own instruments or recording equipment.[103] The court focused on the word “entirely,”[104] using it to interpret § 114(b) as providing sound recording owners with “the exclusive right to ‘sample’ his own recording,” meaning that an imitating musician may not literally copy any portion of it.[105] Thus, the Sixth Circuit adopted the rule which declared unauthorized sampling as copyright infringement, regardless how trivial.[106] The Bridgeport decision drew immediate attention and criticism with its adoption of a bright-line rule for music sampling.[107] Nevertheless, Congress did not take any steps to clarify the law in the years following the holding.[108] While it has never been accepted as controlling or persuasive authority for district courts outside of the Sixth Circuit, no other circuit court has decided to take up the issue,[109] and it was not until VMG Salsoul that the issue of the de minimis’ applicability to sound recording was discussed again by a circuit court.[110] In 2016, the Ninth Circuit muddied the waters when it ruled in direct conflict with the ruling of the Sixth Circuit on precisely the same point.[111] By declining to follow the bright-line rule in Bridgeport, the Ninth Circuit created a circuit split on the legality of digital sampling of sound recordings. B. The Ninth Circuit In VMG Salsoul, the sample at issue was a horn hit from Shep Pettibone’s, “Ooh I Love It” used in Madonna’s song, “Vogue.”[112] The horn hit sample appeared in two different forms: (1) a “‘single’ horn hit . . . [that] last[ed] for 0.23 seconds” and “consist[ed] of a quarter-note chord comprised of four notes,” and (2) “a ‘double’ horn hit . . . [which] consist[ed] of an eighth-note chord of [the same notes from the single horn hit], followed immediately by a quarter-note chord of the same notes.”[113] Madonna modified the horn hits by raising the pitch a half-step and then inserted it five different times throughout “Vogue.”[114] Presented with the challenge of whether the sampling at issue constituted copyright infringement, the Ninth Circuit first undertook to determine whether the de minimis exception applies to sound recordings.[115] The court recognized that “the response of the ordinary lay hearer” is an essential part of the copyright infringement test.[116] Moreover, a copyright owner’s legally protected interest in her copyright is the potential for compensation.[117] However, because any potential compensation rests on consumer recognition of the work, if consumers are unable to detect the appropriation, then “the copier has not benefited from the original artist’s expressive content,”[118] and, accordingly, no infringement has occurred. Next, the Ninth Circuit conducted a statutory interpretation of Congress’ intent in creating federal copyright protection, beginning with 17 U.S.C. §106.[119] The court determined that nothing in §106—which provides exclusive rights in copyrighted works—“suggests differential treatment of de minimis copying of sound recordings.”[120] The court then turned its attention to §114(b), which was the provision at the heart of the Bridgeport holding.[121] It noted that in §114(b), “[t]he exclusive rights of the owner of copyright in a sound recording . . .do not extend to the making or duplication of another sound recording . . . .”[122] This sentence “imposes an express limitation on the rights of a copyright holder,”[123] and a straightforward reading of §114(b) indicates that Congress did not intend for an imitation of the copyrighted recording to constitute an infringement.[124] The court determined that the statutory text was clear: “infringement takes place whenever allor any substantial portion of the actual sounds that go to make up a copyrighted sound recording are reproduced.”[125] Therefore, the Ninth Circuit concluded that Congress intended for the de minimis exception to apply to sound recordings in the same manner in which it applies to all other types of copyrighted works.[126] Once the Ninth Circuit determined that the de minimis exception applies to sound recordings, the court addressed whether the sample at issue was de minimis.[127] It reasoned that if the expert witness, a “highly qualified and trained musician,”[128] could not identify what portions had been sampled, an average audience would be unable to do any better.[129] Thus, the sampling was de minimis and did not constitute copyright infringement.[130] IV. POLICY CONCERNS: JUDICIAL ECONOMY V. CREATIVITY In support of its holding, the Sixth Circuit argued that the application of a bright-line rule for digital sampling would lead to judicial efficiency.[131] The court stated that a bright-line rule is necessary to help diminish the backlog of digital sampling cases before the courts.[132] By creating such a rule, courts will be able to apply the law more easily, and therefore, reduce litigation overall.[133] Further, it is possible that artists will know they cannot sample copyrighted music, and thus will not waste time trying.[134] However, as one author argued, “the backlog of cases should not be a reason to ignore the core of copyright law that has been utilized for decades.”[135] Moreover, the argument for judicial efficiency comes at a cost of stifling creativity. And, with the exception of licensors, a bright-line rule does not advance the interest of the music industry.[136] Artists who want to use small, insignificant portions of a song will be forced to jump through expensive hoops to acquire a license.[137] These hoops will have the biggest impact on small and upcoming artists, who may in turn choose to refrain from sampling all together, while having little effect on the large production and recording studios with vast resources.[138] In turn, a “no unlicensed sampling” rule will have a chilling effect on creativity, the very thing copyright law is intended to prevent.[139] Use of samples have influenced musicians across the spectrum and have led to the creation of many hit-songs that have out-charted the original songs they sampled.[140] Songs that out-chart the songs they sample indicate that sampling revives songs of the past and gives them new life. The potential ease on the dockets of courts should not outweigh the creativity the framers sought to protect in Article 1, Section 8 of the Constitution.[141] Though some scholars argue that the de minimis rule will result in lesser judicial efficiency, as it slows down the litigation process and results in uncertainty for the parties,[142] others have suggested the inverse: a de minimis rule may actually promote judicial efficiency, because plaintiff’s will be less inclined to risk litigation if they are afraid the court will use the de minimis defense to absolve the alleged infringer of liability.[143] Following this argument, the de minimis rule would actually result in more settlements.[144] Also, it is more efficient for artists because they would not be required to contact and negotiate with every artist to use a small piece of a copyrighted song.[145] Still, it is important to note that applying the de minimis rule could stifle creativity as well.[146] New artists may be discouraged from creating new copyrightable material if any artist is allowed to take a small portion of their song with no legal repercussions and no prospect of compensation.[147] However, when compared to the impact on creativity under the bright-line rule, the de minimis rule seems to be the lesser of two evils.[148] It seems unlikely that an artist would choose not to produce a new song, thereby giving up all potential compensation, simply because of the potential loss of compensation from unlicensed sampling.[149] VI. SO, THERE IS A CIRCUIT SPLIT—NOW WHAT? The Sixth Circuit’s bright-line rule of “get a license or do not sample”[150] had been on the books for over ten years. Musicians who could not afford a license either did not sample or did not license and risked litigation.[151] The Ninth Circuit resolved this dilemma when it held, for the first time, that the de minimis rule did, in fact, apply to digital sampling.[152] The opinion stands in direct opposition to the Sixth Circuits ruling, and no other circuit has subsequently addressed the issue.[153] Though VMG Salsoul altered the landscape for copyright law in the music industry, many musicians are still stuck in a clearance culture that requires all samples to be licensed. Now, there are two rules, and the answer to the question “can I sample this?” will depend largely in part on where you live (or where you are sued) and how likely the court of appeals in your jurisdiction will come down on the issue. A. Impact of the Split Musicians across the country are now faced with varying levels of protection, and without a resolution of the split, the future of music sampling remains unclear. Different levels of protection are problematic for musicians because disparate law can lead to forum shopping.[154] The Sixth Circuit includes Tennessee courts, while the Ninth Circuit includes California courts,[155] meaning the split affects the major music recording hubs of the country: Los Angeles, Nashville, and Memphis. Many people in the industry have ties to both Tennessee and California and can therefore forum shop between the two states in order to achieve a desirable outcome.[156] With the prevalence of sampling in today’s music industry, as long as the split remains unresolved, forum shopping is bound to continue. B. Resolution of the Split There are two main ways in which the issue of whether the Copyright Act allows for the de minimis exception for the unauthorized use of copyrighted sound recordings can be resolved: a congressional solution or a Supreme Court decision.[157] The Sixth Circuit believed Congress was better suited to solve the issue when it said that if its interpretation of the Act was not what Congress had intended, then the music industry should look to Congress for “clarification or a change in the law.”[158] Congress could clarify the language in § 114 by specifying what it meant by “entirely,” or by explicitly stating that de minimis defense applies to sound recordings.[159] However, this solution is unlikely.[160] Congress recently updated the Copyright Act for the first time in decades when it implemented the Music Modernization Act of 2018 (“MMA”).[161] At the time it was passed, the circuit split caused by Bridgeport and VMG Salsoul was well-known,[162] yet, the MMA made no attempt to address the de minimis issue for sound recordings.[163] Further, the Act even modified § 114, but did not modify the phrase “entirely.”[164] Congress had a textbook opportunity to address the problems caused by the circuit split but chose not to. Additionally, one author suggested that Congress should enact compulsory licensing for all sound recordings.[165] Under such system, anyone is free to sample a song by paying a set fee regulated by the federal government and by giving notice in compliance with the regulations.[166] However, there has been little support for the creation of a compulsory licensing system.[167] Among other things, Congress voiced concerns about the risk of promoting record piracy and the difficultly in establishing fair royalty rates.[168] It recognized that compulsory licenses would allow pirates to selectively pick hit songs, thereby profiting off of the time and resources of the licensor.[169] Further, determining manageable royalty rates would be impracticable because there are many different factors involved, including how much is being sampled, the popularity of the sampled work, and the prominence of the artist being sampled.[170] A Supreme Court ruling on the issue is the most effective way to resolve the current circuit split. By responding to the split, the Supreme Court could “offer clear, nationwide guidance on how copyright law should cover sampling.”[171] Although the Supreme Court Justices may not be experts in copyright law specifically, the Court does have expertise in statutory interpretation.[172] Thus, the Supreme Court is better suited to resolve this split so that musicians are clearly provided the same scope of protection nationwide. In light of the impact of the circuit split that the Ninth and Sixth Circuits created on the music industry, the Supreme Court should interpret the Copyright Act to allow for an exception to unauthorized digital sampling, so long as the sampling is de minimis. “Digital sampling is engrained in the fabric of the music industry,”[173] and will continue to become increasingly popular with advancements in technology. Courts should find a solution to allow for its use, rather than punish for its use. The bright-line rule advocated for by the Sixth Circuit is harmful to musical creativity and the judicial economy alike. By following in line with the Ninth Circuit’s proper interpretation of 17 U.S.C. § 114(b), the Supreme Court will bring nationwide clarity and balance to the issue of unauthorized sampling in sound recordings. [1] 3rd Bass, Pop Goes the Weasel, on Derelicts of Dialect (Def Jam 1991). [2] See Ethan Hein, BiZ Markie Gets the Copyright Smackdown, The Ethan Hein Blog (July 19, 2009), http://www.ethanhein.com/wp/2009/biz- markie-gets-the-copyright-smackdown/. [3] Wayne M. Cox, Rhymin’ and Stealin: The History of Sampling in the Hip-Hop and Dance Music World and How U.S. Copyright Law & Judicial Precedent Serves to Shackle Art, 14Va. Sports & Ent. L.J.219, 227 (2015). [4] 410 F.3d 792 (6th Cir. 2005). [5] Id. at 798. [6] See Claire Mispagel, Resolving a Copyright Law Circuit Split: The Importance of a De Minimis Exception for Sampled Sound Recordings, 62St. Louis U. Sch. of L. 461, 465 (2018); see also Adam Baldwin, Music Sampling and the De Minimis Defense: A Copyright Law Standard, 19UIC Rev. Intell. Prop.310, 314 (2020). [7] See 4 Melville B. Nimmer & David Nimmer, Nimmer on Copyright§ 13.01 (2004) [hereinafter Nimmer & Nimmer]. [8] VMG Salsoul, LLC v. Ciccone, 824 F.3d 874 (9th Cir. 2016). [9] Id. at 886 (recognizing that the court was “tak[ing] the unusual step of creating a circuit split by disagreeing with the Sixth Circuit’s contrary holding in Bridgeport.”) [10] See discussion infra Part VI. [11] Lucille M. Ponte, Preserving Creativity from Endless Digital Exploitation: Has the Time Come for the New Concept of Copyright Dilution?, 15B.U.J. Sci. & Tech. L.34, 56 n.111 (2009). [12] Kembrew McLeod & Rudolf E. Kuenzli, I Collage, Therefore I Am: An Introduction to Cutting Across Media, in Cutting Across Media: Appropriation Art, Interventionist Collage, And Copyright Law 1(Kembrew McLeod & Rudolf E. Kuenzli eds., 2011). [13] See Melissa Eckhause, Digital Sampling v. Appropriation Art: Why is One Stealing and the Other Fair Use? A Proposal for a Code of Best Practices in Fair Use for Digital Music Sampling, 84 Mo. L. Rev.371, 374 (2019). [14] See Spencer K. Gray,Circuit Split: An Efficient Rule to Govern the Sampling of Sound Recordings, 106 KY. L.J. Online (Jan. 26, 2018), https://www.kentuckylawjournal.org/online-originals/index.php/2018/01/26/circuit-split-an-efficient-rule-to-govern-the-sampling-of-sound-recordings. [15] Id. [16] Id. [17] VMG Salsoul, LLC v. Ciccone, 824 F.3d 871, 875 (9th Cir. 2016) (citing Newton v. Diamond, 388 F.3d 1189, 1192 (9th Cir. 2004)). [18] Robert M. Szymanski, Audio Pastiche: Digital Sampling, Intermediate Copying, Fair Use, 3UCLA Ent. L. Rev.271, 276 (1996). [19] Lucille M. Ponte, The Emperor Has No Clothes: How Digital Sampling Infringement Cases Are Exposing Weaknesses in Traditional Copyright Law and the Need for Statutory Reform,43 Am. Bus. L.J.515, 517 (2006). [20] Id. [21] Danica Mathes, Music-Licensing Reform May Be On the Way, Law360 (Sept. 9, 2014), https://www.law360.com/articles/573481/music- licensing-reform-may-be-on-the-way. [22] Id.; see discussion infra Section III.A. [23] Mathes, supra note 21. [24] David Katz, Scratch the Super Ape: An Embodiment of Dub’s Mashup Culture, in Mashup: The Birth of Modern Culture 155–57 (2016). [25] Id. at 155–57. As this Bronx-style DJing grew in popularity, DJs began using members of their crew to provide vocals, or “rap” along with the beat. Stephen R. Wilson, Music Sampling Lawsuits: Does Looping Music Samples Defeat the De Minimis Defense?, 1J. High Tech. L. 179, 182 (2002). The “MCs”, or Masters of Ceremony, eventually developed their own style, which became known as “rapping.” Id. [26] Id. [27] Kembrew McLeod & Peter DiCola, Creative License: The Law and Culture of Digital Sampling21 (2011). [28] Id. Digital samplers now had Musical Instrumental Digital Interface keyboard controls, which made sampling easier and cheaper. Id. [29] Wilson, supra note 25, at 182. For instance, “sometimes a horn section, a bass drum, or background vocals would be lifted from a recording easily and quickly, limiting the expense and effort to locate and compensate studio musicians.” Tricia Rose, Black Noise 73 (1994). [30] See Wilson, supra note 25, at 182. In 1979, an Australian company introduced the first digital sampler to the audio production market at a price of $29,000. By the mid 1980s, digital samplers were being sold at prices as low as $1,000.Id., at 182, n. 28. [31] John Schietinger, Note, Bridgeport Music, Inc. v. Dimension Films: How the Sixth Circuit Missed a Beat on Digital Music Sampling, 55 Depaul L. Rev.209, 212 (2005). [32] See Jeffrey R. Houle, Digital Audio Sampling, Copyright Law and the American Music Industry: Piracy or Just a Bad “Rap”?, 37 Loy. L. Rev.879, 882 (1992). [33] See, e.g., Newton v. Diamond, 388 F.3d 1189, 1191 (9th Cir. 2003). [34] Michael W. Schuster II, Fair Use, Girl Talk, and Digital Sampling: An Empirical Study of Music Sampling’s Effect on the Market for Copyrighted Works, 67Okla. L. Rev. 443, 446 (2015); see Who Sampled, https://www.whosampled.com/ (documenting over 754,000 samples as of April 21, 2021). [35] Cox, supra note 3, at 227. [36] Id. [37] Szymanski, supra note 18, at 278. [38] See Stephen Carlisle, Sounds Great! But It Does Sound Very Familiar...Where to Draw the Line on Digital Sampling of Sound Recordings?, 9 Landslide, May/June 2017, at 14, 15. [39] Id. [40] Id. [41] Grand Upright Music Ltd. v. Warner Bros. Records, Inc., 780 F. Supp. 182, 183 (S.D.N.Y. 1991). [42] U.S. Const.art. 1, § 8, cl. 8. [43] Id. [44] Copyright Act of 1909, Pub. L. No. 60-349, 35 Stat. 1075 (1909). [45] See id.; see also Spenser Clark, Hold Up: Digital Sampling, Copyright Infringement, and Artist Credit Through the Lens of Beyonce’s Lemonade, 26 Intell. Prop. L. 131,140 (2019). [46] Sound Recording Amendment of 1971, Pub. L. No. 92–140, 85 Stat. 391. [47] Elyssa E. Abuhoff, Circuit Rift Sends Sound Waves: An Interpretation of the Copyright Act’s Scope of Protection for Digital Sampling of Sound Recordings, 83Brook. L. Rev.405, 409 (2017). [48] Id. [49] § 102(a)(2). [50] § 102(a)(7). [51] § 102(a)(2). [52] Christopher D. Abramson, Note, Digital Sampling and the Recording Musician: A Proposal for Legislative Protection, 74N.Y.U. L. Rev. 1660, 1669 (1999). [53] Id. at 1669–70. [54] Id. [55] 17 U.S.C. (1976). [56] Abuhoff, supra note 47, at 409. [57] § 106(1)–(6). [58] See e.g., Schietinger, supra note 31, at 215. [59] Nimmer & Nimmer, supra note 7. [60] Wilson, supra note 25, at 183–84. [61] Id. [62] See Schietinger, supra note 31, at 218; see also Grand Upright Music Ltd. v. Warner Bros. Records, 780 F. Supp. 182, 183 (S.D.N.Y. 1991); see also Bridgeport Music Inc., v. Dimension Films, 230 F. Supp. 2d 830, 838 (M.D. Tenn. 2002). [63] See Nimmer & Nimmer, supra note 7. [64] See W. Publ’g Co. v. Edward Thompson Co., 169 F. 833, 861–62 (E.D.N.Y. 1909). [65] Nimmer & Nimmer, supra note 7, at 13–33. [66] Ringgold v. Black. Entm’t Television, Inc., 126 F.3d 70, 74 (2d Cir. 1997). The phrase “de minimis non curat lex” translates to “the law does not concern itself with trifles.” Id. [67] See Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir. 1960). [68] Wilson, supra note 25, at 185 (citingNimmer & Nimmer, supra note 7). [69] See id. [70] See Fisher v. Dees, 794 F.2d 432, 434–35 n.2 (9th Cir. 1986) (stating that “a taking is considered de minimis only if it is so meager and fragmentary that the average audience would not recognize the appropriation.”) (emphasis excluded). [71] Brief for Appellant at 42 n.7, Bridgeport Music, Inc. v. Dimension Films, 410 F.3d 792 (6th Cir. 2005) (Nos. 02-6521, 03-5738) (citing Tree Publ’g Co. v. Howard, 785 F. Supp. 1272, 1275 (M.D. Tenn. 1991)). [72] Bridgeport Music, 230 F. Supp. 2d at 841 n.12. [73] Schietinger, supra note 31, at 220; see e.g., Newton v. Diamond, 388 F.3d 1189, 1195–96 (9th Cir. 2004); Williams v. Broadus, No. 99 Civ. 10957 (MBM), 2001 WL 984714, at *3–4 (S.D.N.Y. Aug. 27, 2001). [74] Clark, supra note 45, at 141. [75] Gray, supra note 14. [76] See generally Leigh v. Warner Bros., Inc., 12 F.3d 1210 (11th Cir. 2000); Original Appalachian Artworks, Inc. v. Toy Loft, Inc., 684 F.2d 821 (11th Cir. 1982); Jarvis v. A&M Records, 827 F. Supp. 282 (D.N.J. 1993); Williams v. Broadus, 2001 WL 984714 (S.D.N.Y. Aug. 27, 2001); Tuff ‘N’ Rumble, Inc. v. Profile Records, Inc., 1997 WL 158364 (S.D.N.Y. Apr. 2, 1997). [77] 780 F. Supp. 182 (S.D.N.Y. 1991); Wilson, supra note 25, at 187–88. [78] Grand Upright Music, 780 F. Supp. at 183. [79] Id. This phrase comes from the Eighth Commandment of the Ten Commandments of the Jewish Torah. [80] Id. [81] Clark, supra note 45, at 138. [82] Carlisle, supra note 38, at 15. [83] Id. [84] For example, Vanilla Ice’s rap song “Ice Ice Baby” opened with a highly recognizable sample of Queen and David Bowie’s song, “Under Pressure.” Id.; Ice Ice Baby by Vanilla Ice, Song facts, https://www.songfacts.com/facts/vanilla-ice/ice-ice-baby. Vanilla Ice did not obtain a license to sample from “Under Pressure,” so when the song hit the jackpot and became the first song by a rapper to reach number one on the Billboard charts, there was little hope of not getting caught. Still, Vanilla Ice tried to hide it, arguing in an interview that he added an extra base note which changed the riff into something completely different. He later admitted he was joking, and the case was settled out of court with Queen and Bowie receiving writing credit and four million dollars. SeeKasper Hartwich, Vanilla Ice Denies Ripping Off Queen and David Bowie’s Under Pressure, YouTube(Mar. 12, 2013), https://www.youtube.com/watch?v=a-1_9-z9rbY&ab_channel=KasperHartwich;Kevin Stillman, ‘Word To Your Mother’, Iowa St. Daily (Feb. 27, 2006), https://www.iowastatedaily.com/news/article_766d27d2-dc56 -5ff3-9040-47e44d46094f.html. [85] See Mispagel, supra note 6, at 465. [86] 388 F.3d 1189, 1190 (9th Cir. 2003). [87] Id. [88] Id. at 1196. [89] Id. [90] Id. [91] See VMG Salsoul, LLC v. Ciccone, 824 F.3d 871, 877–78 (9th Cir. 2016). [92] Bridgeport Music, Inc. v. Dimension Films, 410 F.3d 792 (6th Cir. 2005). [93] Carlisle, supra note 38, at 16. [94] Bridgeport, 410 F.3d at 794–96. [95] Id. at 796. [96] Id. The segment appears at 0:49, 1:52, 2:29, 3:20, and 3:46.Id. [97] Id. at 798. [98] Id. [99] Id. at 800. [100] Id. [101] See id. [102] Id. (emphasis added) (quoting 17 U.S.C. § 114(b)). [103] Id. [104] 17 U.S.C. § 114(b) (2012). [105] Bridgeport, 410 F.3d at 800–01. [106] The Sixth Circuit recognized that it was drawing a bright-line rule that de minimis defenses do not apply to music sampling and attempted to justify its holding. Most notably was the court’s “ease of enforcement” reasoning. This rule made enforcement simple: “Get a license or do not sample.” Second, the court reasoned that “the market will control the license price” and keep them reasonable. Third, the court pointed out that all music sampling is intentional; it “is never accidental.” Whereas musical compositions frequently involve subconscious copying—for example, when a composer has “a melody in his head, perhaps not even realizing that the reason he hears this melody is that it is the work of another which he had heard before”—sound recordings do not involve subconscious copying, because “you know you are taking another’s work product.” Finally, the court concluded that sampling was “a physical taking rather than an intellectual one,” and that alone proves that no matter how small, the part taken is of value. See Carlisle, supra note 38, at 16; see also Bridgeport, 410 F.3d at 800–01. [107] See Mispagel, supra note 6, at 470; see also Baldwin, supra note 6, at 314. [108] VMG Salsoul, LLC v. Ciccone, 824 F.3d 871, 886 (9th Cir. 2016). [109] Bridgeport, 410 F.3d at 805. [110] VMG Salsoul, 824 F.3d. [111] Id. at 886. [112] Id. at 874. [113] Id. at 875. [114] Id. at 875–76. [115] Id. at 877. [116] Id. at 881 (quoting Sid & Marty Krofft Television Prods., Inc., McDonald’s Corp., 562 F.2d 1157, 1164 (9th Cir. 1977)). [117] VMG Salsoul, 824 F.3d. at 881. [118] Id. [119] Id. at 882. [120] Id. [121] Id. at 883. [122] Id. (emphasis in original) (citing 17 U.S.C. § 114(b)). [123] Id. (emphasis in original). [124] Id. [125] H.R. Rep.No. 94-1476, 106 (1976), reprinted in1976 U.S.C.C.A.N. 5659, 5721 (emphasis added). [126] VMG Salsoul, 824 F.3d. at 883–84. [127] Id. at 880. [128] Id. [129] Id. [130] Id. In support of its holding, the VMG Salsoulcourt explained that the Sixth Circuit’s bright-line rule fails because it relies on a logical fallacy. The Bridgeport court concluded that since the “exclusive rights . . .do not extend to the making or duplication of another sound recording that consists entirely of an independent fixation of sound, . . . that exclusive rights do extend to the making of another sound recording that does not consist of an entirely independent fixation of other sounds.” However, a “statement that rights do not extend to a particular circumstance does not automatically mean that the rights extend to all other circumstances. In logical terms, it is a fallacy to infer the inverse of a conditional from the conditional.” Id. at 884. [131] Bridgeport Music, Inc. v. Dimension Films, 410 F.3d 792, 802 (6th Cir. 2005). [132] Id. [133] Clark, supra note 45, at 151. [134] Bridgeport, 410 F.3d at 802. [135] Clark, supra note 45, at 151. [136] Id. [137] Id. [138] Id. [139] Clark, supra note 45, at 151. [140] See Gary Trust, Ask Billboard: What Hits Have Out-Charted the Songs They Sample?, Billboard (Apr. 4, 2014), https://www.billboard.com /articles/columns/chartbeat/6039674/ask-billboard-what-hits-have-out-charted-the-songs-they-sample. [141] Clark, supra note 45, at 152. [142] Ryan C. Grelecki, Can Law and Economics Bring the Funk . . . or Efficient?: A Law and Economics Analysis of Digital Sampling, 33Fla. St. U.L. Rev.297, 317 (2005). [143] See Gray, supra note 14. [144] Grelecki, supra note 142, at 323. [145] Id. [146] Id. [147] Id. [148] See id. at 328. [149] See id.at 325. [150] Bridgeport Music, Inc. v. Dimension Films, 410 F.3d 792, 801 (6th Cir. 2005). [151] See Bill Donahue, 9th Circ. Down the Gauntlet on Music Sampling, Law360 (June 4, 2016), http://www.law360.com/articles/803236/ 9th-circ-throws-down-thegauntlet-on-music-sampling. [152] Id. [153] Bridgeport, 410 F.3d at 805. [154] Abuhoff, supra note 47, at 425. [155] See About U.S. Federal Courts, Fed. B. Ass’n, https://www.fedbar.org/for-the-public/about-u-s-federal-courts/. [156] Abuhoff, supra note 47, at 426. [157] Id. at 428. [158] Bridgeport Music, Inc. v. Dimension Films, 410 F.3d 792, 805 (6th Cir. 2005). [159] Baldwin, supra note 6, at 325. Remember, § 114 states that the exclusive rights granted to copyright holders does not “extend to the making or duplication of another sound recording that consists entirely of an independent fixation of other sounds, even though such sounds imitate or simulate those in the copyrighted sound recording.” 17 U.S.C. § 114(b). [160] Baldwin, supra note 6, at 325. [161] Orrin G. Hatch-Bob Goodlattee Music Modernization Act of 2018, Pub. L. No. 115-264, 132 Stat. 3676. [162] Baldwin, supra note 6, at 325. [163] Id.; Orrin G. Hatch-Bob Goodlattee Music Modernization Act of 2018, Pub. L. No. 115-264, 132 Stat. 3676. [164] Id. at Sec. 103. [165] Gray, supra note 14. [166] Id. [167] See id.; see also Ponte, supra note 19, at 549. [168] Ponte, supra note 19, at 549. [169] Id. at 549–50. [170] Id. at 550. [171] Donahue, supra note 151. [172] Abuhoff, supra note 47, at 431. [173] Clark, supra note 45, at 158.
Andy Warhol’s Pop Art Makes it to the U.S. Supreme Court. Is the Prince Series Artwork Fair Use? By: Giselle Ayala Mateus, Esq.
“In truth, in literature, in science and in art, there are, and can be, few, if any, things, which, in an abstract sense, are strictly new and original throughout…” Justice Joseph Story.[1] Is this true? There is not pure originality? Well, what I believe is truth, is that we are, in part, the result of the past behind us, whether it is in life, literature, science or art. This year, it is the U.S. Supreme Court’s responsibility to take a step closer to settle the issue of Originality and Fair Use. Artists, museums, photographers and legal practitioners, are excited about the Supreme Court’s review of the litigation between the Andy Warhol’s Foundation (here “AWF”) and the international famous photographer Lynn Goldsmith (here “Goldsmith”). The question raised by AWF, Certiorari Petitioner, is this: “Whether a work of art is “transformative” when it conveys a different meaning or message from its source material, or whether a court is forbidden from considering the meaning of the accused work where it “recognizably derives from” its source material…”. How did we get here? Andy Warhol is an icon of the Pop Art movement who lived between 1928 and 1987. During his life, Warhol contributed significantly to contemporary art across a variety of media. Warhol’s work is focused on challenging the tradition of fine art by creating works about everyday items, like the famous Campbell’s soup cans. Warhol’s work was also inspired by photographic images of his subjects. In the development of his unique style, Warhol altered the visual aesthetic of original photos as well as the meaning conveyed to the viewer. One of the most important works of Warhol were his portraits of important figures such as Marlyn Monroe and Mao Zedong. Lynn Goldsmith, on the other hand, is a famous photographer who has worked with numerous rock, jazz and R&B artists. Goldsmith is an acclaimed celebrity portrait, documentary and fine art photographer, whose works are in the collections of the Smithsonian National Portrait Gallery, the Museum of Modern Art, and the Chicago Museum of Contemporary Photography, among others.[2] Goldsmith’s work is focused on helping others formulate their identities, which she aims to capture and reveal through her photography. To develop her style, Goldsmith employs several interpersonal techniques with respect to lighting, camera position and other elements.[3] On December 3, 1981, Goldsmith photographed Prince in her New York city studio on assignment from Newsweek Magazine. Prince was photographed in his own clothes, except for a black sash that he picked from Goldsmith’s clothing room and wore around his neck. Goldsmith chose the photographic equipment she used for the shoot, and she also decided to use a plain white background.[4] In October 1984, Vanity Fair licensed one of Goldsmith’s black-and-white studio portraits of Prince. The photograph was licensed “for use as an artist’s reference in connection with an article to be published in Vanity Fair Magazine.”[5] However, the license did not specify which photograph would be used. Thereafter, Vanity Fair commissioned Warhol to create an illustration of Prince for an article titled “Purple Fame” which was to be published in the November 1984 issue of the magazine. The article contained a copyright attribution credit that read: “source photograph by Lynn Goldsmith.”. Figure 1. Goldsmith's Prince Photograph. The Andy Warhol Foundation For The Visual Arts, Inc. v. Goldsmith et al. Pls.’ Complaint. Case No.1:2017cv02532. ECF No. 20. The “Purple Fame” illustration was part of Warhol’s Prince Series, a group of sixteen distinct works depicting Prince’s head and a small portion of this neckline. Twelve of the works are silkscreen, two are screen prints in paper and two are drawings. According to Goldsmith, Warhol copied the Goldsmith Prince photograph at some point during his process of creating the Prince Series. Figure 2. Andy Warhol's Illustration. The Andy Warhol Foundation For The Visual Arts, Inc. v. Goldsmith et al. Pls.’ Complaint. Case No.1:2017cv02532. ECF No. 20. On April 21, 2016, Prince died. The next day, Vanity Fair published an online copy of its November 1984 “Purple Fame” article, which had credited Warhol and Goldsmith for the Prince illustration. After that, Vanity Fair’s owners, Condé Nast, decided to issue a commemorative magazine titled “The Genius of Prince” and obtained a commercial license to use one of Warhol’s Prince Series works as the magazine’s cover. This time, the magazine contained a copyright credit to Warhol but not to Goldsmith. The litigation In July 2016, Goldsmith contacted AWF and alleged that the Prince Series infringed upon the copyright associated with the 1981 Prince photograph. Goldsmith demanded that AWF pay a substantial sum of money. To protect Warhol’s legacy and resolve the issue, in 2017, AWF commenced a Declaratory Judgment action before the U.S. District Court for the Southern District of New York. AWF sought a Declaratory Judgment of Fair Use and also alleged that Goldsmith’s copyright counterclaims were time-barred pursuant to 28 USC § 2201.[6] The case was decided in favor of AWF in the District Court; however, the U.S. Court of Appeals for the Second Circuit reversed the judgment and the remanded the case. Plaintiff’s position According to AWF the Warhol’s Prince Series artworks constitute Fair Use and therefore did not infringe upon Goldsmith copyright. In fact, Warhol’s Prince Series fundamentally transformed the visual aesthetic and meaning of the Prince photograph, as follows: a. Warhol’s signature use of the silkscreen printing technique flattens the appearance of the subject’s face by removing the gradual shading in Prince’s photograph, which creates a sense of three-dimensional volume and replaces it with unmodulated color. b. Each of Warhol’s artwork focuses on the subject’s face, whereas the Prince photograph is centered at the body of the subject as whole. c. The Warhol portraits present the subject with something other than his natural skin color, whereas the Prince photograph does not alter Prince’s natural skin color. d. Each of the Warhol portraits uses black color to depict the subject’s hair, lips, and facial features, whereas the Prince photograph uses natural colors. e. The angle of the subject’s face in the Prince Series differs from the angle of the subject’s face in the Prince photograph. f. Warhol’s Prince Series do not target the same audiences, art collectors, or commercial markets. Defendant’s position Goldsmith defense and copyright counterclaims are based on Warhol’s unauthorized use, reproduction, publication, distribution and commercial licensing of a derivative version of the Prince Photograph created in 1984 and published in 1984 and 2016. According to Goldsmith, AWF knew or should have known that the use of the Prince photograph was expressly licensed for a one-time limited use as an artist’s reference, for illustrative purposes, and any further use would require a new license. Goldsmith highlighted that the infringing image captures all essential and distinctive elements of the Prince photograph, specially, the detailed hair curls atop Prince’s head, Prince’s head pose, the deep-set of Prince’s eyes, his pursed lips, facial hair details and his self-reflective stare into the eye of the camera. Goldsmith also noted that this is not the first time Warhol’s work is the subject of litigation. In 1966, Warhol was sued by photographer Patricia Caulfield for using her photograph of hibiscus flowers blooms; in 1960 Warhol was sued by photographer Fred Ward for the unlicensed use of the cover photo of Life magazine’s Kennedy assassination issue; in 1960 Warhol was also sued by photographer Charles Moore for the misappropriation of a photograph of a man being attacked by police dogs during the 1963 Birmingham riots; and in 1994 the ARF was sued by photographer Henri Dauman and Time Inc. for the use of a photograph portraying Jackie Kennedy. As a threshold issue, Goldsmith opposed AWF’s lashes defense explaining that it was until 2016, after Condé Nast’s publication commemorating Prince (“The Genius of Prince”) that she learnt about the Warhol’s Prince Series. This issue has been secondary in the litigation. The Fair Use analysis in Federal Court The main issue in the litigation is whether Warhol’s use of the Prince photograph constitutes Fair Use. Under the Copyright Act of 1976, copyright protection extends both to the original creative work and the derivative works, i.e., “a work based upon one or more preexisting works […] any other form in which a work may be recast, transformed, or adapted….”[7] Under the Act, the fair use doctrine “…seeks to strike a balance between an artist’s intellectual property rights to the fruits of her own creative labor, including the right to create derivative works, and the ability of [other] authors […] to express [themselves] by reference to the works of others….”[8] Furthermore, there are four non-exclusive factors that courts consider when evaluating whether the use of a work is “fair”: “(1) the purpose and character of the use, (2) the nature of the copyrighted work, (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.”[9] 1. The purpose and character of the use For the analysis of this first factor, the Second Circuit explained that courts are required to consider the extent to which the secondary work is “transformative”. Following Campbell,[10] the Court explained that the issue is whether the new work merely supersedes the objects of the original creation, or instead adds something new, with a further purpose, altering the first with a new expression, meaning of message. However, this does not mean that any secondary work that adds a new aesthetic or expression to its source is necessarily transformative. The District Court held that the Prince Series works were transformative because they transformed Prince from a vulnerable person (as portrayed by Goldsmith) to an iconic, larger-than-life figure. However, in the view of the Second Circuit whether a work is transformative cannot turn merely on the stated or perceived intent of the artist or the meaning or impression that the judge might draw from the work. With this clarification, the Circuit Court, “viewing the works side-by-side,”[11] concluded that the Prince Series works were not transformative. Although, Warhol’s works display a distinct aesthetic sensibility, typical of Warhol’s signature style, the works retained the essential elements of its source. Even though the modifications changed the Goldsmith photograph in ways that give a different impression, the Prince photograph remained the recognizable foundation upon which the Prince Series is built.[12] Finally, in this regard, the Second Circuit expressed that it was irrelevant if the works were immediately recognizable as Warhols, because following that logic could create a celebrity-plagiarism privilege. 2. The nature of the copyrighted work The second factor directs courts to consider whether the work at issue is expressive or creative, or more factual. Although the District Court held that the Goldsmith photograph was unpublished and creative, in view of the Second Circuit, its application of the second factor was erroneous. The fact that Goldsmith made her photograph available for a single time as artist reference did not diminish the law’s protection of her right to choose when to make her work public. 3. The amount and substantiality of the use In assessing this factor, courts consider not only the quantity of the materials used but also their quality and importance in relation to the original work. Here, the Second Circuit explained that “as applied to photographs, the protection of the law encompasses the photographer’s ‘posing the subjects, lighting, angle selection of film and camera […] and almost any other variant involved’”.[13] Thus, even though Goldsmith could not copyright Prince’s face, the law grants her a broad monopoly on its image as it appears in her photograph of him, which no one could not have taken without Goldsmith permission. Later, the Court emphasized that, the Warhol’s Prince Series “is not merely a screenprint identifiably based on a photograph of Prince. Rather it is a screenprint readily identifiable as deriving from a specific photograph, the Goldsmith photograph…”[14] 4. The Effect of the Use on the Market for the Original work The fourth factor asks whether if the challenged use becomes widespread, it will adversely affect the potential market for the copyrighted work. This factor requires courts to balance the benefit the public will derive if the use is permitted and the personal gain the copyright owner will receive if the use is denied. Here, the Second Circuit conceded that the primary market for Warhols and that of Goldsmith photographs do not meaningfully overlap. However, it emphasized on the fact that being Fair Use an affirmative defense, it was AWF ultimate burden to prove that the use of Goldsmith’s work does not compete in the relevant market for her. The Court also noted that, in this case, both works are illustrations of the same famous musician with the same overlapping customer base. Additionally, the court noted that, “There currently exists a market to license photographs of musicians, such as the Goldsmith Photograph, to serve as the basis of a stylized derivative image; permitting this use would effectively destroy that broader market, as, if artists ‘could use such images for free, there would be little or no reason to pay for [them].’”[15] The issue of substantial similarity As an alternative, AWF asked the Second Circuit to affirm the District Court's decision on the basis that the works at issue are not substantially similar. In this regard, the Second Circuit explained that two works are substantially similar when "an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work.”[16] Additionally, when faced with works that have both protectable and unprotectable elements, substantially similar is examined, mainly, in terms of the protectable elements of the works. AWF referred to other circuits case to defend its case, specifically, Rentmeester v. Nike, Inc., 883 F.3d 1111 (9th Cir. 2018) and Harney v. Sony Pictures Television, Inc., 704 F.3d 173 (1st Cir. 2013). However, the Second Circuit noted that in those cases the defendants did not merely copy the original photographs at issue; they instead replicated those photographs using their own subjects in similar poses.[17] Here, on the other hand, Warhol did not create the Prince Series by taking his own photograph, the Warhol’s portraits were produced by copying the Goldsmith Photograph itself, Goldsmith's particular expression of that idea. The Petition for Certiorari After the Second Circuit decision was issued, AWF submitted a petition Writ for Certiorari before the U.S. Supreme Court. According to AWF, under the U.S. Supreme Court’s precedent, the fair use doctrine requires establishing whether a creative work that derives from another conveys a different meaning or message from the original. Therefore, if a secondary work uses preexisting content in the service of expressing something new and distinct, it is not copyright infringement. In Campbell,[A1] the Supreme Court found that a rap group’s use of the 1960s song “Oh, Pretty Woman” was transformative because of the new message and meaning the new work conveyed. Notwithstanding the exact copying of the song, the Court found the new work transformative because the rapper’s song conveyed a rejection of the original song’s sentiment. Specifically, the Court’s analysis focused on the respective meanings of the two songs at issue. In Google[A2], the Supreme Court explained that transformativeness is not about two conflicting works being of the same genre or consisting of the same components, the focus is on whether the secondary work used the original work in the service of conveying a different meaning or message, not on the degree to which that work was altered. Here, “Despite Google’s […] copying of [Oracle’s] code, this Court held that Google’s work was transformative because it ‘add[ed] something new and important’ by developing ‘a new platform’ for the ‘smartphone environment.’”[18] In contrast with that position, the Second Circuit’s test would have created a new position, that it is forbidden to ascertain whether a secondary work conveys a different meaning or message from the original, if both pieces are works of art that share a visual resemblance, specifically, if it recognizably derives from, and retains the essential elements of, its source material. The Second Circuit decision applies a novel test and ignores the Ninth Circuit’s test according to which, even where a new “work makes few physical changes to the original,” it can be transformative if “new expressive content or message is apparent.”[19] Conclusion The Andy Warhol litigation centers on the issue transformativeness v. copyright infringement, the main issue is the applicable standard: whether a work of art is “transformative” when it conveys a different meaning or message from its source material, and therefore it is not copyright infringement, or whether this standard cannot be applied to works of art because in doing so, we would be applying the fair use doctrine beyond desirable limits, and therefore, maybe, a court is forbidden from considering the meaning of a secondary work where it “recognizably derives from” its source material. The issue of transformativeness is intimately related to the issue of originality. As a basic foundation of the Copyright Act of 1976, Congress and the US Supreme Court have manifested that copyright law does not require novelty and that the “modicum of creativity” requirement sets a low bar for copyrightability. Maybe, the U.S. Supreme Court will find the answer by going back to the foundational principles of copyright law or maybe the answer is also in recognizing that, as opposed to other areas of the creative industry, in art, appropriation, variation, and copying have always played a key role in the development of artists’ work. [1] Emerson v. Davies, 8 F. Cas. 615, 1845 U.S. App. LEXIS 373, 4 W.L.J. 261, 8 Law Rep. 270. [2] The Andy Warhol Foundation For The Visual Arts, Inc. v. Goldsmith et al.Case No. 1:2017cv02532. Def.’ Am. Answer to Pls.’ Am. Countercl. ECF No. 20. [3] Andy Warhol Found. for the Visual Arts, Inc. v Goldsmith, 382 F Supp 3d 312 (SDNY 2019). [4] Id. 318 [5] Id. 319 [6] The Andy Warhol Foundation for the Visual Arts, Inc. v. Lynn Goldsmith and Lynn Goldsmith, ltd. Case 1:17-cv-02532-JGK. Pacer Document 01. Complaint. [7] Andy Warhol Found. for the Visual Arts, Inc. v Goldsmith, 992 F3d 99 (2d Cir 2021) [8] Id. (citingBlanch v. Koons, 467 F.3d 244, 250 (2d Cir. 2006)). [9] Id. [10] Campbell v Acuff-Rose Music, Inc., 510 US 569 (US Supp. 1994) [11] Goldsmith, 992 F3d 99 (2d Cir 2021) [12] Id, at 115. [13] Id., at 118. [14] Id., at 119. [15] Id., at 123. [16] Id.(quoting Knitwaves, Inc. v. Lollytogs, Ltd., 71 F.3d 996, 1003 (2d Cir. 1995)). [17] Id. [18] The Andy Warhol Foundation for The Visual Arts, Inc., Petitioner, v. Lynn Goldsmith and Lynn Goldsmith, Ltd., Respondents. On Petition for A Writ of Certiorari to The United States Court of Appeals for the Second Circuit. Dec 09, 2021. Petition for a Writ of Certiorari, available at:https://www.supremecourt.gov/DocketPDF/21/21-869/204630/20211209140512568_2021-12-09%20Andy%20Warhol%20Foundation %20Cert%20Petition%20with%20appendix.pdf [19] Id. Quoting Seltzer v. Green Day, Inc., 725 F.3d 1170, 1177 (9th Cir. 2013) [A1] Add a case cite [A2] Add a case cite
Historians Corner
BY: DALE CARLSON*
With the re-incarnation of the in-person Judges' Dinner after a two-year pandemic hiatus, it may be worth re-visiting the issue of the cost/value trade-off in the selection of keynote speakers. In short, does the Association get what it pays for? One option is to pick from an A-list of sought-after "guns-for-hire" among public luminaries. In exchange for a one-half or one hour talk, the speaker's stipend may set the Association's coffers back by a hundred grand or so. As another option, choosing a government official, such as a judge, typically does not require payment of a monetary stipend. So how does one measure the value of such a personage's talk? Looking back over many decades of Judges' Dinners leads to a reasonable conclusion that many of the very best, most memorable, keynotes were from the no-stipend category. Back when William C. Conner [later Judge Conner] became NYIPLA President in 1972-73, he expressed concern that, because in prior years so few judges were in attendance, the name "Judges' Dinner" might need to be changed if the trend continued. President Conner concluded that the key to success was choosing a keynote speaker from the judiciary who was both highly respected among peers and a superb speaker to boot. Judge Mulligan fit the bill to a tee. When he took the podium at the 1973 Dinner, Judge Mulligan talked about judicial opinions, and their underlying authority. He pointed out that "[s]ometimes, indeed, also there is no authority at all and one must resort to reason, a somewhat tricky and dangerous alternative."(1) Judge Mulligan's 1973 keynote was a big hit, and attendance among the judges was up. His second keynote in 1978 led him to regale amusing anecdotes about various types of lawyers who paraded before the Second Circuit, and it was another big hit. After his time on the bench, and while he was Dean of Fordham Law School, he was back at the podium for the third time at the 1985 Judges' Dinner. The 1979 Dinner featured another government notable, Admiral Hyman G. Rickover, dubbed the "Father of the Nuclear Navy". His message, which was controversial at delivery, was that lawyers in their individual capacity have the responsibility and duty to act above self-interest, and narrow client interest, to protect a free society; otherwise, the free society will not remain free. Adm. Rickover's speech is available in the February-March 2012 issue on the NYIPLA Bulletin. Another judge, Hon. John Gleeson, gave a most memorable, entertaining, and insightful keynote at the 2011 Judges' Dinner. A copy of Judge Gleeson's speech is available at nyipla.org.(2) Judge Colleen McMahon provided a fine keynote at the 2012 Judges' Dinner. In the context of memorable keynotes, our Association may get more bang-for-its buck when it doesn't pay anything at all. Perhaps this proves the age-old adage: "the best things in life are free"! *Dale Carlson is NYIPLA past president and current historian. His email is dale.carlson@quinnipiac.edu. (1) Mulligan's Law: The Wit and Wisdom of William Hughes Mulligan 69.70 (William Hughes Mulligan, Jr. ed. 1997). (2) See Judge Gleeson's Keynote Address at the 2011 Judges' Dinner, NYIPLA Bulletin, April-May 2011, at 1, 3-9.
"As Time Goes By - Notable Keynotes"
The Board meeting was held via videoconference. President Rob Isackson called the meeting to order at approximately 4:00 p.m. In attendance were: Rob Isackson, President, presiding Diana Santos Cheryl Wang Gene Lee Heather Schneider Scott Greenberg David Goldberg Abby Struthers Jonathan Berschadsky Robert Rando John Mancini Patrice Jean Christine Marie Lauture Eric Greenwald Jenny Lee (joined at 4:32 pm) Colman Ragan (joined at 4:17 pm) Feikje van Rein and Christopher attended from the Association’s executive office. Eric Greenwald and Christine Marie Lauture attended as Associate Advisory Council members. Heather Schneider, Marc Pensabene, Paul Bondor, and Khalil Nobles from the AAC were unable to attend. The meeting was called to order by President Rob Isackson around 4:00 pm. Motion to waive reading of minutes was approved. A motion to approve minutes was passed. Financial Report. Treasurer Scott Greenberg reported no change to the financials and the organization is not in the best position compared to last year. New Members. Scott Greenberg reported that there are 60 more members now than YTD. There were two more new members in the last month. Motions to waive reading of the prospective members names and to admit the new members were approved. Judges' Dinner. Rob reported that the event is on track to move forward and 10 tables have been sold so far. Approximately 140-200 people currently registered. Judge Stark has conditionally accepted his nomination as OPS Award recipient, so it will not be publicized until February 5, 2022. Efforts to secure a Supreme Court justice have not been successful so now pivoting to search for other key note speakers. The board members discussed whether to print the event booklet or circulate online. Since this is the 100th Anniversary and to ensure advertisements are published as customary, the board voted and approved printing the event booklet. It will be made available online first and perhaps the booklet will be converted to virtual eventually but not for this year. The logo for the Centennial Celebration is done and approved. The board discussed whether to have a swag bag and will review options next meeting. Amicus Briefs Committee. David Goldberg reported that the ABC is monitoring the Warhol foundation copyright fair use case, to see if it is granted cert before deciding whether to weigh in. For Daktronics case regarding sua sponte adoption of new claim construction on appeal reversing a jury decision, the Supreme Court has asked SG to weigh in. It is taking SG ages to get briefs in so expecting to wait for a while. There are some cases on the ABC’s watch list that are coming up, including 2 of the Fintiv cases to discuss if they are not pushed off to later. There is not much movement in the cases on the watch list. In the meantime, the committee is considering a panel, for example to cover double patenting and Fintiv cases, where a total of 3 are on deck now. If cert is granted on any of these, then conflict checks can be run. Legislative Action. Colman Ragan reported that not much has happened. On the 13th, hearings on Kathy Vidal and Judge Stark will move forward and the expectation is both will make it out of committee. Amicus Act was introduced in 2019, which assesses money in the courts and is not IP specific, but is something noteworthy to monitor. It is designed to enhance transparency and full disclosure for amicus briefs as there’s concern about a dark web of amicus briefs submitted which are indirectly or directly funded by interest groups. The proposed Act also includes prohibition on funding travel and/or gifts for judges by parties also filing amicus briefs. This impacts bar associations; there’s an exception for law schools. Certainly would have impact on Judge’s Dinner as the statute is drafted to cover federal circuit and Supreme Court. Previous and Upcoming: Fireside Chat with Hon. Cygan on Ex Parte Appeals at the USPTO (12/17) Jonathan Berschadsky Presentation for patent prosecution; discussed advantages of appealing vs. Req for Continued Examination; insight into obviousness arguments during appeal; circulated helpful handout; went really well; around 15 people PTAB Game Night (1/4/22) Robert Rando Entertaining event; net result was well-done; good questions; done in style of Jeopardy; different issues on PTAB procedures, policies, rules, etc.; posing questions to Judges sometimes gave answers to other questions Zoom Out with NYIPLA! (1/13/22) Diana Santos AAC Zoom Out scheduled for this Thurs at 5 pm. Khalil, Eric & Christine have done great job pulling together questions to brainstorm for session. At this point, closer to 21 people registered now. Breakout rooms to discuss topics including time management, mentorship, dealing with working from home, and how senior attorneys are maintaining network. At this point, Diana and Cheryl Wang discussed LinkedIn Audio Events, which is rolling out in beta-mode later this month, as a Clubhouse-style / Slack alternative that could fill the gap created by Zoom-fatigue. This would allow our membership to continue conversations and community engagement when in-person events may be challenging, without adding another application or platform. Deputy Director Fenn Mathew to Speak on Petition Practice (1/28/22) Jonathan Berschadsky Jonathan Berschadsky reported the event will provide a high level overview of office petitions, e-petitions, related data stats, and petition related updates. It will be useful for new practitioners & include updates for existing practitioners. New Business Patrice Jean reported that NYIPLEF will postpone the in-person event but noted that the option to donate is still open. Raised about $20k so far. $5k & $2500 levels are considered Sponsors. NYIPLEF intends to give same 2 scholarships again and the board will fully fund scholarship events this year. Motion to adjourn was approved at 4:50 pm. The Annual Committee reports commenced at 5:45 pm ET.
MINUTES OF JANUARY 11, 2022 MEETING OF THE BOARD OF DIRECTORS OF THE NEW YORK INTELLECTUAL PROPERTY LAW ASSOCIATION
The Board meeting was held via videoconference. President Rob Isackson called the meeting to order at approximately 4:00 p.m. In attendance were: Rob Isackson, President, presiding Patrice Jean Jenny Lee David Goldberg Scott Greenberg Jonathan Berschadsky Paul Bondor Gene Lee Admin Colman Ragan Marc Pensabene Diana Santos Cheryl Wang Robert Rando John Mancini Christine Marie Lauture Feikje van Rein and Christopher attended from the Association’s executive office. Christine Marie Lauture attended from the Associate Advisory Council. Heather Schneider, Abby Struthers and Khalil Nobles from the AAC were unable to attend. The meeting was called to order by President Rob Isackson around 4:00 pm. Motion to waive reading of minutes was approved. A motion to approve minutes was passed. Financial Report. Treasurer Scott Greenberg reported that the financials are not great but the organization is managing with the events it has been holding. New Members. Scott Greenberg reported that there were 8 new members, which included 2 practitioners and 6 students. Motions to waive reading of the prospective members names and to admit the new members were approved. Amicus Briefs Committee. David Goldberg reported that there were no updates. The ABC will meet next week but there is not likely to be much movement. Legislative Action. Colman Ragan reported that not much has been passed in Congress right now. The new USPTO Director, Kathy Vidal, is expected to move forward at the same time as Judge Stark, with only 1 opposition so far. Patent 101 Response continues to pop up but the parties remain very far apart on the issue so nothing has happened. The board did not have sufficient time to review the DOJ draft policy statement on Licensing Negotiations and Remedies for Standards – Essential Patents subject to F/RAND Commitments for submission. Senator Tillis has suggested combining all US IP offices under one department. 100th Judges' Dinner, March 25, 2022. Rob reported that Judge Stark has accepted the nomination for OPS recipient and dinner speaker. Hoping that he will be confirmed this week so that we can announce his nomination. The board members discussed law firm reservations and agreed to continue outreach. For keynote speaker, we have confirmed Michael Rogers, author and futurist. We are currently looking for someone who can sing the national anthem and Feikje has a contact. Associate Advisory Council. Diana reported that the council had a great event (Zoom Out with NYIPLA! – Jan 13, 2022) to kick off and they are meeting next week to discuss event with Wylde. In the meantime, the council will work with the Young Lawyer’s Committee to hype up the Judge’s Dinner from a different angle. Previous and Upcoming: Using Petitions Effectively in Patent Prosecution (1/28/22) Jonathan Berschadsky did not have a chance to attend but reported that the event seemed to go well. PTAB Committee Meeting (2/1/22) PTAB committee explores latest PTAB POP panel decision on timing of Fedwire transfer for purposes of PTAB proceedings- had a good attendance Biologics & Biosimilars (2/10/22) Marc had to drop off for a client call. Will report next week. President’s Forum (2/17/22) Rob Isackson reported that there were 5 speakers confirmed who discussed name, likeness, and publicity rights in the context of sports & organizations like NCAA. New Business Applications are due for inventorship awards. Motion to adjourn was approved at 4:37 pm.
MINUTES OF FEBRUARY 8, 2022 MEETING OF THE BOARD OF DIRECTORS OF THE NEW YORK INTELLECTUAL PROPERTY LAW ASSOCIATION
The Board meeting was held via videoconference. President Rob Isackson called the meeting to order at approximately 4:00 p.m. In attendance were: Rob Isackson, President, presiding David Goldberg Patrice Jean Heather Schneider Paul Bondor Marc Pensabene Gene Lee Jonathan Berschadsky Eric Greenwald Christine Marie Lauture Jenny Lee Cheryl Wang Scott Greenberg Rob Rando (joined early in Financial Report 5:08 pm) Colman Ragan (joined at 5:11 pm) Feikje van Rein attended from the Association’s executive office. Christine Marie Lauture and Eric Greenwald attended from the Associate Advisory Council. Diana Santos, Abigail Struthers, and Khalil Nobles from the AAC, were unable to attend. The meeting was called to order by President Rob Isackson around 4:00 pm. Motion to waive reading of minutes was approved. A motion to approve minutes was passed. Financial Report. Treasurer Scott Greenberg reported an upward trend again due to revenue from in-person Judge’s Dinner. Assets are up $450k relative to this time last year. Membership numbers look down but do not yet reflect additional members from Judge’s Dinner. Income should be closer to $700k. RRR share of profit is not reflected in current numbers as that is calculated after the auditors have signed off. New Members. Scott Greenberg reported that there were 18 new members, approx. 50-50 split between practitioners and students. Motions to waive reading of the prospective members names and to admit the new members were approved. Amicus Briefs Committee. David Goldberg reported that there were no updates on a number of briefs, like American Axel, from over a year ago. Supreme Court decided the Unicolors v. H&M copyright case, issuing a 6-3 decision where majority opinion, authored by Justice Breyer, stated there was no need to address the question decided on cert. Instead, the S. Ct. addressed the lesser question, deciding that Section 411(b) does not distinguish between mistake of law and a mistake of fact. Brief on the merits was not addressed. Legislative Action. Colman Ragan reported that new USPTO Director, Kathy Vidal, will be confirmed by Easter, in the first week of April and not before the Judge’s Dinner. There will not be big pieces of legislation until summer given current events. On 101 Roundtable again, Capos Group submitted proposals but unlikely to move forward. ACLU and members of tech remain steadfast in their positions. Although discussion has become less contentious, agreement has still not been reached. Jonathan Berschadsky reported the fireside chat Joy Goudie & Clint Mehall (co-chairs of Patent Law and Practice Committee) hosted on Feb 25th, discussing proposed Restoring America’s Leadership in Innovation Act of 2021, echoed similar sentiment. Special guest was Congressman Thomas Massie’s Deputy Chief of Staff & Legislative Director, Seana Cranston. Jonathan noted that Ms. Cranston, could be a great contact for NYIPLA to voice thoughts and provide feedback on legislation. Overall seems unlikely to pass into law. The committee will continue to monitor and hopes for update by post-Memorial Day. 100th Judges' Dinner, March 25, 2022. Rob confirmed that Judge Stark has accepted the nomination for OPS recipient and dinner speaker. Total of 103 firm-reserved tables with over 1000 people so it will be a full room but not packed. Honored Guests include 50 judges and 12 associations. Engaged 6 suites which is a little less than expected. Firms are seeing more clients RSVP. This year, more of the smaller firms in attendance. There are still tables available. The board members discussed having table(s) set aside for student and/or young lawyer members. Feikje noted that for this event, we’ve invited a couple of student volunteers who are invited to join the dinner. If successful, this may be good approach for future dinners. Associate Advisory Council. Eric Greenwald reported on behalf of Diana Santos that the council is setting up a Young Lawyers Committee & AAC happy hour to help drum up support for the Judge’s Dinner. AAC continues to keep an eye out for potential Linkedin/Clubhouse initiatives. Programs Committee. Heather reported that the Spring Litigation Bootcamp will be a 1-day event held at Willkie on May 25th. Reached out to Gary Brown as one of the panelists. Focus will be on discovery dispute issues and how to handle those, with hypotheticals. Previous and Upcoming: PTAB Committee Meeting (3/8/22) Rob Rando reported that it was a good meeting covering recent federal circuit decision in Cal Tech with respect to PTAB IPR estoppel. Charlie Macedo, Ryan Murphy (former PTAB judge), Jonathan Stroud and Rob were all presenters. 28 attendees and good discussion around interesting nuances, such as whether precedential or not. Insights from Trailblazing Women Inventors (3/9/22) Marc noted the event will take place tomorrow and features women inventors in the health & life sciences area. YLC Committee Program on IP Crimes (4/5/22) Marc reported that program will explore effects of commercialization of IP. Program on NFTs (4/12/22 or 4/13/22) Interesting program featuring 2 speakers, Josh Kaufman from Venable and Penny Williams, AGC at Sotheby’s. Jointly hosted by IP Transactions, Copyright & Trademark Committees. EPO Presentation (4/26/22) Similar program exists for AIPLA Patent Law Program (tentative date) Committee Reports: Suitable candidate(s) received for Inventor of the Year nominations but calling for last nominations. NYIPLEF dinner will be rescheduled to end of summer or summer to avoid conflicts with other events. Connor Writing Competition deadline passed and 26 submissions were received. The committee welcomes volunteers to help read and review. New Business The board discussed holding in-person board meetings but decided to hold off on decision until after Judges' Dinner. Meeting adjourned around 5:40 pm.
MINUTES OF MARCH 8, 2022 MEETING OF THE BOARD OF DIRECTORS OF THE NEW YORK INTELLECTUAL PROPERTY LAW ASSOCIATION
MINUTES OF APRIL 7, 2022 MEETING OF THE BOARD OF DIRECTORS OF THE NEW YORK INTELLECTUAL PROPERTY LAW ASSOCIATION
The Board meeting was held via videoconference. President Rob Isackson called the meeting to order at approximately 5:00 p.m. In attendance were: Rob Isackson, President, presiding Patrice Jean Heather Schneider Diana Santos (left at 6:07 pm) Gene Lee (left at 6pm) Marc Pensabene (left at 6:06pm) Jonathan Berschadsky (joined via phone) Eric Greenwald Christine Marie Lauture (left at 6:06 pm) Jenny Lee Cheryl Wang (joined at 5:06 pm) Scott Greenberg Abigail Struthers (joined at 5:20 pm) Rob Rando (left at 6:06 pm) Colman Ragan Feikje van Rein attended from the Association’s executive office. Christine Marie Lauture and Eric Greenwald attended from the Associate Advisory Council. David Goldberg, Paul Bondor, and Khalil Nobles from the AAC, were unable to attend. The meeting was called to order by President Rob Isackson around 5:00 pm. Committee Presentations: IOTY - The co-chairs, Ksenia and Christopher, presented the committee’s selection for Inventor of the Year. The committee proposed creating an exception for inventions that do not end up patented as a result of being donated as a public service. Conner Writing Competition - The co-chairs reported that the committee, which consists of 9 members, reviewed 26 submissions during March 2022. This is the average amount of submissions. The chairs presented the committee’s recommendation for 1st and 2nd place papers. Upon conclusion of the presentations, the co-chairs left so the board members could vote. Motion to accept the recommendation for Inventor of the Year award was passed. The board passed a motion to re-read the two finalist submissions recommended by the Conner Writing Competition committee. Motion to waive reading of minutes was approved. A motion to approve minutes was passed. Financial Report. Treasurer Scott Greenberg reported that assets are up substantially, around $500k. However, not all the bills are in from the Judge’s Dinner, including some large expenses. New Members. Scott Greenberg reported that there are no new members as all memberships are deferred to next year. Any incoming memberships right now are free as part of the Judge’s Dinner and officially begin in May 2022. Amicus Briefs Committee. David Goldberg reported that the committee is working on a brief for the Andy Warhol case, which involves fair use and transformative fair use. The committee has already briefed these issues in Prince vs. Caribou case so that will be used. Authors include members from the Copyright & Trademark committees. Proposal will be circulated to the board. The committee looked at Polar Electro Inc and decided to wait for cert to be granted. New case involves motion for interlocutory appeal on whether motion to dismiss based on safe harbor infringement for isolated cell claims should be denied or not. If motion granted then case would have been dismissed so there’s an argument for interlocutory appeal. Rob will send briefs to Feikje to run conflict-check. Legislative Action. Colman Ragan reported that new USPTO Director, Kathy Vidal, was confirmed. Justice Ketanji Brown’s nomination for Supreme Court was confirmed today too. Senator Tillis is researching i-Mac and whether there’s a relationship between intellectual property and prices. He is also pushing Section 101 reform but that is not going anywhere. The committee will also monitor and consider the impact of Senator Leahy & Tillis’s Restoring the America Invents Act. 100th Judges' Dinner, March 25, 2022. Feedback has been positive and many attendees liked the scale of the event. The judges-only events were well-received. At least 1 federal circuit judge shared at breakfast the next morning that many judges were still hesitant to travel and attend such a large public event. He has reported back that it was a well-planned and enjoyable event that felt safe to attend. Associate Advisory Council. Diana Santos reported that the council is looking to set up a happy hour event after the Litigation Bootcamp. Since the Spring Litigation Bootcamp will need to be moved, the board members discussed holding a happy hour reunion event for the Corporate Bootcamp. Programs Committee. Heather and Colman reported that the Spring Litigation Bootcamp will need to be moved. They are working with various committees to host an NFTs program but at this point, there may not be enough materials to provide CLE credit. The board members discussed reiterating co-chair duties and clarifying the role of the Programs Committee members. Previous and Upcoming: Patent Analytics & Automation 4/1/22 Jonathan Berschadsky reported that Joy Goudie & Patentbots presented with 15 attendees. The event went 10 min over hour with lots of good interactions throughout. The tool analyzes patent applications to tell you what art unit it may fall under, correct terms & whether used consistently. PTAB Committee Meeting 4/5/22 Robert Rando reported there were about 25 attendees. The program discussed Artrex decision to review; on remand, the issue is whether Commissioner can fulfill role of principals as opposed to lower officers. IP Crimes and US Innovation 4/5/22 Marc Pensabene was unable to attend but Eric Greenwald reported that this was the 1st in-person panel for NYIPLA. The program covered the China Initiative which seems topical as Law360 published an article today about the now-defunct Initiative. The Intersection of NFTs & Transactional IP 4/12/22 Jonathan to speak to event hosts to clarify role of Programs Committee members and the responsibilities of the event hosts & speakers. Patent Public Search 4/29/22 Jonathan Berschadsky reported the event will discuss the USPTO website’s public patent search tool. The tool is pretty fast but a bit more complicated than previous tool so the event will walk practitioners through the updates. Litigation Bootcamp 5/25/22 Robert Rando reported that the coordinators have requested to push back date of Bootcamp to June 22 or 23rd. The board members discussed challenges of holding in June due to EDNY event. Rob Rando will follow up with other Magistrate Judges. The board members confirmed it was okay to move the bootcamp but that the final date would need to depend on when the judges are available. Committee Reports: IOTY and Connor Writing Competition recommended finalists presented by co-chairs at the start of this meeting. New Business: Colman expressed concern about the quality of scholarship, including research & citations, of the 1st place finalist for the Connor Writing Competition. In particular, he urged the board members to carefully re-read and review the paper’s discussion on Bayh-Dole. Meeting adjourned around 6:15 pm.
The Board meeting was held via hybrid format with members in-person at the Union League Club and over telephone conference. In attendance were: Heather Schneider, President, presiding Rob Isackson, Immediate Past President Patrice Jean (dialed-in) Diana Santos Jonathan Berschadsky Paul Bondor Jenny Lee (dialed-in) Cheryl Wang Scott Greenberg Abigail Struthers Rob Rando Chris Loh Mark Schildkraut Linnea Cipriano (dialed-in) Feikje van Rein attended from the Association’s executive office. Eric Greenwald attended from the Associate Advisory Council. John Mancini, David Goldberg, Colman Ragan, Gene Lee, Marc Pensabene, as well as Christine-Marie Lauture and Khalil Nobles from the AAC, were unable to attend. The meeting was called to order by President Heather Schneider around 6:15 pm. Heather welcomed new members of the board, Mark from Trade Secrets Committee, Linnea from Women in IP Committee, and Chris from IP Transactions. Motion to waive reading of minutes was approved. A motion to approve minutes was passed. Board Book: Heather walked through the board book and the Annual Disclosure Statement, which each Board member must sign. She reminded the board members about the importance of timely conflict checks to determine quorum. Heather discussed her goals of reinvigorating the organization with membership drives and events now that people are back in the city. She noted her own plans to personally reach out to potential members and called on board members to do the same. Financial Report. Treasurer Scott Greenberg reported that assets are up largely due to the in-person Judge’s Dinner and the organization has sufficient funds to operate. Amicus Briefs Committee. Rob Rando reported that the last meeting was held on May 6th. The committee has formed a large working group for the Andy Warhol copyright case. American Axel remains pending and the Supreme Court has invited the Solicitor General to file a brief. No new decisions have been issued. The committee declined to file a brief for Consumer Direct but is monitoring 14 cases, with further details in its board report. Filing date for the Warhol case is 3rd week of June so board members were encouraged to start conflict checks. Legislative Action. Rob Isackson reported that the committee is monitoring legislative efforts around the Stronger Patent Act and getting rid of the AIA. Senator Tillis & Senator Cotton are advocating for different patent reforms. Shop SAFE Act is still percolating. However, IP issues are largely on hold at the Supreme Court due to Russie/Ukraine and Roe v. Wade. The committee will pursue more CLE programs this year. Select members continue to participate in Patent Law Reform stakeholder meetings, which have been ongoing. The committee is exploring “Fly-In” type programs that will allow members of LAC to meet with representatives on issues of interest. Previous and Upcoming: EPO Presentation 4/26/22 (John Pegram) reported that there were not many attendees but the presentation explored great topics. Discusion included the Unified Patent and Unified Patent Court, which is currently of interest as it is supposed to finally move forward this year. Intersection of NFTs and Transactional IP 4/12/22 (Heather Schneider) Chris reported 30 attendees and great discussion as it is a hot topic. SFIPLA/NYIPLA Navigating Ukranian & Russian IP Issues 5/18/22 (Rob Isackson) reported it was a great event and well-attended. 2-3 hours; 48 registered and 35 attendees. Covered mechanics of IP issues in Ukraine, including consumer rights and IP rights in licensing and business deals. Great to connect with west coast colleagues and interesting to see that SFIPLA membership consists of more in-house counsel than private practice. Navigating ODP & Fintiv 6/02/22 (Rob Rando) reported that the panelists will include himself, Irina and Charlie, and it may be an in-person event. Feikje noted that 1 person has registered. Patent Litigation Bootcamp 6/22/22 (Heather Schneider) Reported that Patent Transactions Bootcamp had in-house counsel and private practice attorneys, and since it was virtual, some attendees were from out-of-town. Planning is already in progress for this program next fall. John is working with Patrice, Rob, and others to put together materials. Goal is to have bootcamps yearround, with Litigation in the Spring and Transactions in the Fall. Good news is that Magistrate Judge Bon Javani and Judge Brown have agreed to participate in mock hearing & phone-in conference. Committee Reports: Paul Bondor, liaison for the IOTY Committee encouraged the board to think about nominations for the upcoming year. He noted that this year’s finalists presented an opportunity for the organization to consider carving out a public-interest exception for inventions that are patentable but were donated for the public good rather than patent-protected. The committee will make a recommendation so the board can consider by the September meeting. Meeting adjourned around 6:35 pm.
MINUTES OF MAY 19, 2022 MEETING OF THE BOARD OF DIRECTORS OF THE NEW YORK INTELLECTUAL PROPERTY LAW ASSOCIATION
PTAB Committee Explores Latest PTAB POP Panel Decision on Timing of Fedwire Transfer for Purposes of PTAB Proceedings By: Kenneth Adamo and Charles Macedo, PTAB Committee C0-chairs On Tuesday, February 1, former PTAB APJ Brian Murphy, partner at Haug Partners LLC, discussed the most recent PTAB POP Panel Decision in Toshiba America Electronic Components, Inc. v. Monument Peak Venture, LLC, IPR 2021-00330, Paper No. 20 (PTAB Jan. 14, 2022). In Toshiba America, the POP Panel addressed the question: Does Fedwire confirmation of payment constitute sufficient evidence of payment under 35 U.S.C. § 312(a) and 37 C.F.R. § 42.103(a)? In this Precedential Decision, the Panel concluded “a Fedwire confirmation of payment constitutes sufficient evidence of payment under 35 U.S.C. § 312(a) and 37 C.F.R. § 42.103(a).” Recent Developments in the Law of Biologics and Biosimilars By: Linnea Cipriani, Women in IP Law & Patent Litigation Committee On Thursday, February 10, the NYIPLA was joined by peakers Andrew Allen, Senior Director, Legal Counsel, Dr. Reddy's Laboratories, Rachel Moodie, Vice President, Head of Legal and Intellectual Property, Biosimilars, Fresenius, Abigail Struthers, Senior IP Litigation Counsel, Sandoz, Alexandra Valenti, Partner, Goodwin, and moderator Lauren Fornarotto, Principal, McKool Smith for our Biologics & Biosimilars program Presidents' Forum: Intellectual Property Issues Associated with Name, Image & Likeness in the NCAA By: Kathleen McCarthy, Robert Isackson, Colman Ragan The NYIPLA held the Presidents' Forum on Thursday, February 17. This forum discussed the copyright, trademark, privacy, and other intellectual property issues raised by the recent decision of the NCAA to allow collegiate athletes to profit from the use of their name, image, and/or likeness without losing their amateur status. What do young athletes, their parents and guardians, and even agents need to know about intellectual property while negotiating with schools; How will this decision change IP considerations for video games and advertising; What are the IP implications of entering the “transfer portal”? Seana Cranston, Congressman Massie's Deputy Chief of Staff and Legislative Director, Will Discuss the Introduction of H.R.5874 – Restoring America’s Leadership in Innovation Act By: Clint Mehall and Joy Goudie, Patent Law & Practice Committee co-chairs Representative Thomas Massie, holder of multiple patents, has introduced H.R.5874 – Restoring America’s Leadership in Innovation Act. The Bill proposes repeal of First-to-File System, One-Year Grace Period, Inter Partes and Post-Grant Review, as well as, abolishing inter partes and post-grant review, and PTAB. Seana Cranston, Congressman Massie’s Deputy Chief of Staff and Legislative Director, discussed H.R. 5874 during a meeting of the Patent Practice Group on Friday, February 25. NYIPLA PTAB Committee to Discuss Scope of IPR Estoppel After California Institute v. Broadcom By: Kenneth Adamo and Charles Macedo, PTAB Committee C0-chairs On Tuesday, March 8, the PTAB Committee explored the scope of IPR estoppel in view of California Institute of Technology v. Broadcom Ltd. (Fed. Cir. Feb. 4, 2022). In this interactive presentation, former PTAB APJ Brian Murphy, Partner at Haug Partners LLC, PTAB Committee Co-Chairs Charley Macedo, Partner at Amster Rothstein & Ebenstein, and Ken Adamo, Law Offices of Kenneth R. Adamo, and Robert Rando, Partner, Greenspoon Marder LLP, lead a discussion on the implications of CalTech, after an explanation of the background and holding of CalTech. Specifically, in CalTech, the Federal Circuit overruled its prior precedent to clarify “that estoppel applies not just to claims and grounds asserted in the petition and instituted for consideration by the Board, but to all grounds not in the IPR but which reasonably could have been included in the petition.” Insights from Trailblazing Women Inventors By: Margaret Mortimer, Jasmine Cock, Jennifer Denault, Linnea Cipriani and Alexandra Awai - Women in IP Law & Young Lawyers Committees On Wednesday, March 9, the Young Lawyer’s Committee and the Women in IP Law Committee co-hosted a panel of founders who are innovating in the Women’s Health and Life Sciences sectors. Delphine O’Rourke, partner at Goodwin, moderated a discussion with panelists Dr. Meesha Dogan of CardioDiagnostics, Melanie Cristol of Lorals, and Amrita Saigal of Kudos. These entrepreneurs discussed the growing momentum in the Women’s Health sector and provided insights into their struggles and successes in managing IP. Patent Analytics and Automation By: Clint Mehall and Joy Goudie, Patent Law & Practice Committee co-chairs Patent Bots provided a demo of its legal tech tools that help patent attorneys be more efficient and obtain better outcomes for their clients. Their tools include: Prep & Pros Pro -- patent drafting automation and proofreading Art Unit Predictor -- steer your applications to a desired art unit before filing PatentPlex -- a one-stop shop for patent info including family trees and image file wrapper access Examiner Statistics -- examiner insights to obtain broader patents in less time The demo was presented on Friday, April 1, by Jeff O'Neill, the founder of Patent Bots and a practicing patent attorney. Jeff O'Neill has been a patent attorney for about 16 years and his experience includes both in-house and law-firm roles. Prior to becoming a patent attorney, Jeff O'Neill completed a Ph.D. in signal processing, and Jeff is able to leverage his tech background to provide advanced processing of the language of patent applications. PTAB Committee Meeting: Arthrex Round II By: Kenneth Adamo and Charles Macedo, PTAB Committee C0-chairs Last year, the U.S. Supreme Court issued its decision in U.S. v. Arthrex, Inc., 141 S.Ct. 1970 (2021), where it saved the PTAB by providing for Director Review. Thereafter, a slew of pending appeals results in remands to the Acting Director of the U.S. Patent and Trademark Office to conduct a review, if requested. In the lead case, U.S. v. Arthrex, the prior decision of the Federal Circuit was vacated, proceedings were remanded for the Acting Director to conduct director review, and then the Acting Director summarily denied review. The appeal is now back in full swing, with another round of briefing directed to whether Acting Director/Commissioner Hirshfeld had the authority to act as a Principal Officer when he denied Arthrex’s request for Director Review. On March 30, 2022, the Federal Circuit will hear oral argument on this issue, and the PTAB Committee discussed it on Tueaday, April 5. Intellectual Property Crimes and U.S. Innovation By: Margaret Mortimer, Jasmine Cock, Jennifer Denault, Young Lawyers Committees Co-chairs On Tueaday, April 5, the NYIPLA had a round-table discussion about intellectual property crimes and the impact on research and innovation in the U.S. White-collar defense attorneys and intellectual property specialists discussed recent prosecutorial trends, the historical backdrop for intellectual property crimes, and how to balance overarching business and academic interests.
NYIPLA Events
The Intersection of NFTs and Transactional IP By: David Bomzer and Lynn Russo, programs committee co-chairs Interest in non-fungible tokens, or “NFTs,” as vehicles for conducting IP-related transactions has exploded over the past year. While NFTs have been touted as offering the possibility of “frictionless” transactions, the sale and purchase of NFTs involves traditional IP rights subject to traditional legal IP principles, including copyright, trademark and rights of publicity. The clash between NFTs and traditional IP rights has been illustrated by recent high-profile lawsuits involving NFTs for virtual Birkin bags and Nike shoes. On Tuesday, April 12, our speakers Penny Williams (Sotheby’s), Joshua Kaufman (Venable), Marty Schwimmer (Leason Ellis), and Robert deBrauwere (Pryor Cashman) discussed the intersection between NFTs and traditional IP principles, including what IP rights that may accompany the sale of NFTs, what transactional paperwork may be required to effectuate IP transfers associated with NFTs, what IP disputes may arise in connection with NFTs, and what strategies NFT buyers and sellers might use to insulated themselves from IP-related liability. What You Need to Know About the EU Unitary Patent and Unified Patent Court By: David Bomzer and Lynn Russo, programs committee co-chairs Starting later this year, patent owners will be able to elect a “European patent with unitary effect” (Unitary Patent or UP) for at least 17 EU states at grant of a European patent application, instead of national patents. Simultaneously, a Unified Patent Court (UPC) will be established for those EU states. The UPC will handle all litigation for Unitary Patents and will have parallel jurisdiction with national courts for litigation involving conventional European patents, unless the patent owner opts-out of the UPC. On Tuesday, April 26, program outlined the UP and UPC, their potential advantages and disadvantages for different types of patents, and the points of consideration that owners of existing and new European patents and applications should consider now. Patent Public Search By: Clint Mehall and Joy Goudie, Patent Law & Practice Committee co-chairs The new Patent Public Search tool launched on February 1, 2022 and is available on USPTO.gov. This new search tool is a convenient way to search three U.S. patent databases at once and has many features that new and regular patent searchers will appreciate. The new tool will replace legacy patent search tools PatFT, AppFT, PubEAST, and PubWEST as early as Q3 of FY2022 (estimated). On Friday, April 29, Tom Turner and Sara Butts of the USPTO demonstrated new features and taught us how to use the new patent public search feature.
Elizabeth Holland and Daniel Margolis, formerly of Goodwin Procter LLP, have joined Allen & Overy LLP as Partners. Joseph Saphia and Jessica Zafonte, formerly of Haug Partners LLP, have joined Chiesa Shahinian & Giantomasi PC as Members. S. Burr Eckstut, formerly of Covington & Burling, has joined White & Case LLP as a Partner. David Barr, formerly of Arnold & Porter, has joined Stroock & Stroock & Lavan LLP as a Partner. James Barabas, formerly of Windels Marx, has joined Kramer Day Alberti Lim Tonkovich & Belloli LLP as a Partner. Dagim Tilahun Hailu, formerly of Haynes and Boone LLP, has joined Norton Rose Fulbright as an Associate. Charlotte Jacobsen, formerly of Ropes & Gray LLP, has joined Gibson Dunn & Crutcher LLP as a Partner. Kyanna Sabanoglu, formerly of Gibson Dunn & Crutcher LLP, has joined Meta Platforms Inc. in New York as lead counsel of Intellectual Property litigation. Jennifer Waitman, formerly of Abelman Frayne & Schwab, has joined Kilpatrick Townsend & Stockton LLP as a Partner. Julianne Abelman, Marie Anne Mastrovito, Lori Cohen, Anthony Coppola, and Erica Halstead, formerly of Abelman Frayne & Schwab, have joined Womble Bond Dickinson LLP to open up that firm’s New York office. Abelman and Mastrovito are joining as Partners, Cohen and Coppola as Senior Counsel, and Halstead as Of Counsel. Jessica Cohen, formerly of Skadden Arps Slate Meagher & Flom LLP, has joined Simpson Thacher & Bartlett LLP as a Partner. Genevieve Dorment, formerly of Simpson Thacher & Bartlett LLP, has joined Willkie Farr & Gallagher LLP as a Partner. James Bollinger, formerly of Troutman Pepper LLP, has joined McCarter & English LLP as a Partner in its Stamford, Connecticut, office.
Moving Up & Moving On
SFIPLA / NYIPLA Navigating Russian and Ukrainian IP Issues By: David Bomzer and Lynn Russo, programs committee co-chairs The NYIPLA collaborated with the San Francisco Intellectual Property Law Association (SFIPLA) for the Thursday, May 12 program entitled "Navigating Russian and Ukrainian IP Issues". This bicoastal webinar, featuring speakers from across the U.S., encompassed multiple issues involving Russian intellectual property, including an overview of Russian sanctions and Russian and Ukrainian IP; key considerations in Russian IP disputes and licensing/collaboration agreements; export controls related to Russia/Belarus; and dealing with the USOFAC (U.S. Office of Foreign Assets Control). Our panel will answer your questions on how to protect IP in Russia and beyond. Issues of intellectual property specific to practice in Ukraine, including recently passed laws by the Ukraine Parliament that are directed to navigating the conflict with Russia. Strategies for maintaining IP in Eurasian Patent Convention jurisdictions other than Russia without going through the Eurasian Patent Organization and without using lawyers in Russia.
Last First Firm/Company/Law School State Membership Aichele Mathew Russ August & Kabat California Active 3+ Allevato Ana NYU Law New York Student Ayinla Raji New England School of Law Massachusetts Student Bakewell Christopher Kroll, LLC Texas Associate Balick Steven Ashby & Geddes Delaware Associate Baratta Emma Hughes, Hubbard & Reed LLP New York Active 3+ Barel Ariella Paul Weiss Rifkind Wharton & Garrison LLP New York Active 3- Bautista Richelle Charleston Law School South Carolina Student Beavers TJ Paul Weiss Rifkind Wharton & Garrison LLP New York Active 3- Beis Kimberly Freeborn & Peters LLP New York Active 3+ Benjamin EJ NYU Law New York Student Bennett John Allen & Overy LLP Massachusetts Associate Bennett Natalie Morgan, Lewis & Bockius LLP District of Columbia Associate Bi Kathryn Davis Polk & Wardwell LLP New York Active 3+ Bianchini Allegra Davis Polk & Wardwell LLP New York Active 3+ Bissoon Natalie St. John's University New York Student Blau Ross Axinn, Veltrop & Harkrider LLP New York Active 3+ Boren Sean St. John's University School of Law New York Student Brauerman Stephen Bayard, P.A. 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Delaware Associate Goncalves Lukas American University, Washington College of Law District of Columbia Student Graham Lydia NYU Law New York Student Green Michael Steptoe & Johnson LLP District of Columbia Associate Greer Gregory George Washington University Law School District of Columbia Student Griggs Rebekah University of South Carolina School of Law South Carolina Student Grossman Marla American Continental Group District of Columbia Associate Hallowell Taylor Young Conaway Stargatt & Taylor, LLP New York Active 3- Hasenour Seth Russ August & Kabat California Associate Heron Katie Greenspoon Marder LLP New York Active 3- Herrmann Blais Elaine Goodwin Procter LLP New York Active 3+ Isaacson April Kilpatrick Townsend & Stockton LLP New York Active 3+ Ishikawa Sarah Fordham University School of Law New York Student Israel Chris American Continental Group District of Columbia Associate Keller Paul Allen & Overy New York Active 3+ Kim Alexandra Wolf, Greenfield & Sacks, P.C. 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