The Briefing by Weintraub Tobin

The United States Patent and Trademark office has suspended action on trademark applications targeting the names of public figures. Scott Hervey and Josh Escovedo talk about this case on this episode of The Briefing by the IP Law Blog. Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott: I’m Scott Hervey with Weintraub Tobin. Josh: I’m Josh Escovedo with Weintraub Tobin. The USPTO has suspended action on trademark application trying to take advantage of a new appellate decision that would let people license trademarks that poke fun at the names of living people. That’s what we’ll be discussing on this installment of the Briefing by the IP Law Blog. Josh: Scott, have you heard about the recent guidance issued by the US Patent and Trademark Office on trademarks that make fun of living public figures? Scott: I have, but why don’t you tell our listeners what’s going on. Josh: Well, the USPTO has announced that its suspending action on any trademark applications that try to take advantage of a new appeals court ruling that potentially allows people to license trademarks that make fun of the names of living figures like former President Donald Trump. The Trademark Office has indicated that it will continue to do so while it waits for the US Supreme Court to weigh in. Scott: Right, and according to the one-page document issued by the Trademark Office, its examiners will not look at trademarks that cover phrases “that are critical of government officials or public figures,” in line with the agency’s longstanding rules. This is because of Section 2(c) of the Lanham Act, which bans the issuance of trademarks that include names “identifying a particular individual” without their consent. Josh: You might be wondering what led to the issuance of this guidance. Well, last year, lawyer Steve Elster was trying to land a trademark protecting his use of the phrase “Trump Too Small” for use on T-shirts. Both the office and its own appeals body, the Trademark Trial and Appeal Board, had refused to register the mark, citing the Office’s long-standing rules. But Elster then appealed the matter to the Federal Circuit, and there, Judge Timothy B. Dyk held, for a unanimous panel, that “the government has no legitimate interest in protecting the privacy of President Trump.” Scott: Right, I remember hearing about that last February. Josh: Yes, Elster argued that the phrase was “political criticism,” and accordingly to Judge Dyk, it is therefore protected by the First Amendment. The USPTO appealed to matter to the Supreme Court. In its petition, the PTO argued that more clarity is needed than the Federal Circuit provided. Scott: The Trademark Offices argued that Judge Dyk’s reasoning was twisted because handing out trademarks that include political criticisms of notable figures would actually LIMIT that kind of speech. Specifically, the Office stated that “It is the registration of marks like respondent’s — not the refusal to register them — that would ‘chill’ such speech.” Josh: So, for now, the Trademark Office has said that it won’t take any action on trademark applications that are trying to take advantage of Judge Dyk’s decision until the Supreme Court weighs in. It’s unclear how many applications this will impact, as the Office has declined to comment on its decision. One has to wonder, what the Trademark Office will do if the Supreme Court refuses to grant cert like it often does. Scott: That is an interesting question, Josh, and even if the Supreme Court were to affirm Judge Dyk’s decision, it could lead to even more interesting issues down the road. For example, wouldn’t such a decision mean that the trademark examiners will have to make decision about a particular trademark expresses protectible speech under the First Amendment? That isn’t the most straightforward analysis in the legal world. In any event, this is definitely an interesting issue. Thanks for breaking it down for us, Josh. Josh: No problem, Scott. Thank you to everyone who joined us.

The U.S. Copyright Office instituted an inquiry into a registration relating to a graphic novel that uses AI-generated artwork. Scott Hervey and Josh Escovedo  talk about this case on this episode of The Briefing by the IP Law Blog. Watch this episode on the Weintraub YouTube channel here.   Show Notes: Scott: Kristina Kashtanova is the author of the graphic novel, Zarya of the Dawn. Ms. Kashtanova had previously applied for and obtained a copyright registration for the graphic novel. Sometime after the novel was registered, the Copyright office, on its own accord, instituted an inquiry into registration with a specific focus on the artwork in the novel which was generated through the use of Midjourney AI technology. After the inquiry, the Copyright office revised the registration and excluded from protection the images created by the use of the AI technology. We are going to talk about this on the next installment of the Briefing by the IP law blog Scott: Here is the brief history of the matter. In September, 2022 Kashtanova submitted a copyright application for her graphic novel.  Her application did not disclose that she used an AI application to create any part of the novel nor did she disclaim any portion of the work. After the application was registered, apparently the Copyright office became aware of statements made by Kashtanova in social media that she had created the graphic novel using Midjourney’s AI tool. Josh: Don’t you find it a bit odd that the Copyright office was watching or reviewing Kashtanova’s social media. The examiner must have had some belief that AI was somehow involved in the creation of the graphic novel. Scott: I never thought that the registration process at the copyright office was that in depth. I always thought it was more pro-forma, but it seems I was mistaken. In any event, based on this new information, the Copyright office determined that the original application was incorrect or substantively incorrect. The office then notified Kashtanova that it intended to cancel the registration unless she provided additional information in writing showing why the registration should not be canceled. Josh: As we have previously covered, the basis for the Copyright office’s refusal to register AI generate work comes from how the Copyright Act defines the scope of copyright protection.  Under the Act, a work may be registered if it qualifies as an “original work[] of authorship fixed in any tangible medium of expression. Courts interpreting the phrase “works of authorship” have uniformly limited it to the creations of human authors. Scott: According to the internal Copyright Offices practices, as codified in Rule 503.03, In order to be entitled to copyright registration, a work must be the product of human authorship. Works produced by mechanical processes or random selection without any contribution by a human author are not registrable. Josh: In responding to the Copyright office, Kashtanova’s lawyers argued that both the novel’s text and the selection and arrangement of the text and images are copyrightable since the text was written solely by Kashtanova and the text and images were arranged solely by Kashtanova. The copyright office accepted these arguments and held the text to be copyrightable as well as the arrangement of the text and images. With regard to the images, Kashtanova’s counsel argued that she used the AI platform as a creative tool, similar to how a photographer may use Adobe Photoshop. Scott: The decision rendered by the Copyright office goes into great detail about how Midjourney works and how Kashtanova used Midjourney. This is important to understand why the copyright office found the way it did. I am going to simplify the description a bit. Midjourney offers an artificial intelligence technology capable of generating images in response to text provided by a user. Users operate Midjourney through “prompts,” which are text commands. Prompts must start with the text “/imagine” and contain text describing what Midjourney should generate. Users also have the option to include a URL of one or more images to influence the generated output, or parameters directing Midjourney to generate an image in a particular aspect ratio or providing other functional directions. Josh: After a user provides Midjourney with a prompt, the technology will generate four images in response. The images are provided in a grid, and buttons underneath the grid allow users to request that Midjourney provide a higher-resolution version of an image, create new variations of an image Midjourney generate, or to generate four new images from scratch. Scott: Kashtanova’s counsel argued that the artist and not the machine guided the structure and content of each image. Her counsel argued “all the images in the Work were designed by Kashtanova. The visual structure of each image, the selection of the poses and points of view, and the juxtaposition of the various visual elements within each picture were consciously chosen. These creative selections are similar to a photographer’s selection of a subject, a time of day, and the angle and framing of an image. In this aspect, Kashtanova’s process in using the Midjourney tool to create the images in the work was essentially similar to the artistic process of photographers – and, as detailed below, was more intensive and creative than the effort that goes into many photographs.” And it was that “creative process” that Kashtanova applied to the creation of each image that the Copyright Office found fault with. Josh: First Kashtanova entered a text prompt for Midjourney. Then she would pick one or more of the outputs to further develop and would tweaked or changed the prompt as well as the other inputs provided to Midjourney” to generate new intermediate images, and ultimately the final image. Kashtanova did not claim to create any visual material herself. To obtain the final image, Kashtanova describes a process of trial-and-error, in which she provided “hundreds or thousands of descriptive prompts” to Midjourney until the “hundreds of iterations [created] as perfect a rendition of her vision as possible. Scott: The copyright office held that Midjourney users are not the “authors” for copyright purposes of the images the technology generates. The Supreme Court has explained, that an “author” of a copyrighted work is the one “who has actually formed the picture,” the one who acts as “the inventive or master mind.” A person who provides text prompts to Midjourney does not “actually form” the generated images and is not the “master mind” behind them. While the information in the prompt may “influence” generated image, it does not dictate a specific result. Because of the significant distance between what a user may direct Midjourney to create and the visual material Midjourney actually produces, Midjourney users lack sufficient control over generated images to be treated as the “master mind” behind them. And this lack of control over Midjourney’s specific outputs makes the Midjourney AI platform different from other tools used by artists. Josh: The copyright office makes an interesting comparison of the prompts to instructions given to a commissioned artist. If. Kashtanova had commissioned a visual artist to produce an image and gave that artist the same detailed instructions as she included in her prompts to the Midjourney platform, Kashtanova would not be the author of that image. Absent the legal requirements for the work to qualify as a work made for hire, the author would be the visual artist who received those instructions and determined how best to express them. Scott: And while Kashtanova spent a significant amount of time working with Midjourney, that effort alone does not make her the author for copyright purposes. The argument that “sweat of the brow” can be a basis for copyright protection has been rejected by courts and the Copyright Office “will not consider the amount of time, effort, or expense required to create the work” because they “have no bearing on whether a work possesses the minimum creative spark required by the Copyright Act and the Constitution, Josh: So, where does this leave the issue of AI and copyright. Scott: That’s a more nuanced question then it may seem. While the output method Kashtanova used for Midjourney does not result in copyrightable works, the office did say It is possible that other AI offerings that can generate expressive material operate differently than Midjourney does.   Based on what the Copyright Office said here, it seems that there would need to be a more of a nexis between prompts and output, once an image was generated, further prompts would need to reflect a direct control on the next image generated.  Also, the copyright office did say that had Kashtanova made substantive edits to an image generated by Midjourney, those edits could provide human authorship worth of a grant of copyright protection

Singer Rick Astley is suing rapper Yung Gravy for vocal imitation in his smash hit, Betty (Get Money). Scott Hervey and Josh Escovedo talk about this case on this episode of The Briefing by the IP Law Blog. Watch this episode on the Weintraub YouTube channel here. Cases discussed: Richard “Rick” Paul Astley vs. Matthew Hauri PKA Yung Gravy; Nick Seeley PKA Popnick; Dillon Francis; David Wilson PKA dwilly; Republic Records Midler v. Ford Motor Co. Waits vs Frito Lay Show notes: Scott Hervey: I’m Scott Hervey with Weintraub Tobin. Josh Escovedo: And I’m Josh Escovedo with Weintraub Tobin. Rick Astley has sued Yung Gravy for use of an imitation voice in his smash hit, Betty (Get Money). That’s what we’ll be discussing on this installment of the Briefing by the IP Law Blog. Josh Escovedo: Rick Astley, artist of the hit song Never Going to Give You Up from 1987, has filed suit against rapper Yung Gravy for impersonating his voice on Yung Gravy’s breakout hit, Betty (Get Money). Astley claims that Gravy imitated his voice without legal authorization and has therefore filed suit in Los Angeles County Superior Court, alleging violation of his right of publicity under California law. Josh Escovedo: According to Astley’s complaint, Gravy seeks to capitalize off of the immense popularity and goodwill of Mr. Astley by creating a nearly indistinguishable imitation of Mr. Astley’s voice throughout the song. For reasons that we’ll be discussing, Astley did not file a claim for copyright infringement. But while copyright law may not be at issue in the complaint, it is likely to be at issue in the dispute itself. Scott, can you explain to our listeners why Astley did not file a claim for copyright infringement? Scott Hervey: Sure. In order to understand why Astley didn’t file a claim for copyright infringement, it’s important to understand that music has two different copyright elements. First, there’s a copyright element in the composition or publishing elements which protects the lyrics and musical arrangement. And then there is a copyright interest in the actual sound recording, which protects the song as performed by an artist as captured on a master recording. Scott Hervey: Astley’s complaint concedes that he does not have the rights in the composition. Oh, all that publishing money that he’s missing. But it also indicates that he has a partial interest in the copyright in the recording. So apparently, Gravy obtained what’s called a synchronization license to use the copyright in the composition. But he didn’t obtain a copyright to use the master recording. But he didn’t need to do that because he recorded his own performance of the composition. Scott Hervey: A copyright in the recording would only have been necessary if Gravy had actually used part of the existing master recording in his track as a sample, but he didn’t do that, and thus he did not need to get a master use license. For the same reason, Astley’s partial ownership in the copyright of the master recording of Never Going to Give You Up was not infringed because Gravy did not sample the master recording in his song. Apparently, Gravy had, I believe it was, his producer sings that part of the track. But as Josh said, that doesn’t mean that copyright won’t be an issue in this dispute. Josh Escovedo: That’s right, Scott. In fact, the Copyright Act is one of the two key reasons why Yung Gravy is likely to walk away from this lawsuit relatively unscathed. The Copyright Act expressly provides that a state cause of action is preempted if it creates rights that are equivalent to any of the exclusive rights within the general scope of copyright in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright. Josh Escovedo: Of course, express preemption is not necessary for a law to be preempted, as the law also provides for implied conflict preemption, which occurs when a state law poses an obstacle to the accomplishment and execution of the full purpose and objectives of Congress. Here, there’s a strong argument that the Copyright Act was intended to address this exact situation. Josh Escovedo: Section 114(b) of the Copyright Act provides that the rights of an owner of a copyright and a sound recording are limited to the right to duplicate the actual sounds in the recording and the right to prepare derivative works in which those actual sounds are rearranged, remixed, or otherwise altered in sequence or quality. In other words, as the copyright office has published, permission from the copyright owner of a preexisting sound recording is not necessary when interpreting a musical work, regardless of how similar the new record may be to an old recording. Josh Escovedo: This is because under United States copyright law, the exclusive rights in sound recordings do not extend to making independently recorded soundalike recordings. So the question here is whether Astley’s right of publicity claim should be preempted by these provisions of the Copyright Act since Astley wouldn’t be able to state a claim for copyright infringement. Scott Hervey: Interestingly, the Ninth Circuit has had two opportunities to address this issue. Midler versus Ford Motor Company and Waits versus Frito Lay. In both of these cases, the Ninth Circuit addressed claims involving the right of publicity for the use of a soundalike in the commercial context of a commercial. One was for Ford and the other was for a Frito Lay product. Scott Hervey: In Midler, the Ninth Circuit found that the claim wasn’t preempted by the Copyright Act because Midler was not seeking damages for Ford’s use of the song at issue, but was instead seeking damages for Ford’s use of her voice, for the use of her name, voice, and likeness, which was not copyrightable. In Waits, the Ninth Circuit indicated that as a three-judge panel, they were not at liberty to reconsider Midler and would not have disturbed the ruling, even if they could. The preemption analysis in both claims is sparse. Josh Escovedo: That’s right, Scott. And Astley’s counsel actually mentions the Midler case repeatedly in the complaint, interestingly enough. But I think that both of those cases were wrongly decided, at least with respect to the preemption analysis, which, as you mentioned, is pretty sparse. So neither Midler nor Waits bothered to consider whether the plaintiff was suing over the use of the plaintiff’s voice in the abstract or as applied to a specific recorded performance. Josh Escovedo: If the courts had taken the time to consider that fact, it seems to me that they would have had to find that the right of publicity claim, at least in this context, should be precluded by the Copyright Act, which permits soundalike recordings under federal law. It would seem to me that to allow a right of publicity claim to move forward, despite this clear permissive use under copyright law, it would be a direct conflict between the right of publicity and the Copyright Act. Scott Hervey: That’s interesting, Josh. I don’t know if I agree with you. At the same time, I don’t know that I disagree. I just haven’t given this enough thought yet. But I will say this, if you are correct, then that means that it’s open season for celebrity singers for the ability to use their voice or the sound of their voice to sell products or services in commercials, which is different. Scott Hervey: It’s a different scenario than what’s at play here in the Yung Gravy-Astley case, where Yung Gravy is using a singer who sounds a lot like Rick Astley in a creative work, a creative speech, non-commercial speech, as opposed to Waits and Midler, where the soundalike singer was used in commercial speech, which arguably or understandably is entitled to lesser degree of protection under the First Amendment than non-commercial speech. It’s interesting, though. You raise an interesting point. But let’s talk about this other potential defense as well. Josh Escovedo: Sure. And just to briefly respond to what you just said, Scott, I think that if the courts were to find that there should be preemption, I think that preemption would need to be narrowly tailored. It would have to be in this context where the soundalike… It can’t actually be the celebrity, it would have to be a soundalike. And then I think it would have to be in the context of a work that had already been reduced to a prior recording. And in that context, I think that preemption would make sense. Scott Hervey: But I think both in Midler and Waits, they were prior recordings. They were recordings that Midler and Waits had already made, I believe. And the advertising agencies just got a soundalike to sing those exact songs. So, what the preemption argument does is it blows a big hole in 3344 where you’re using a renowned singer’s sound, voice to sell goods and services where that singer did not authorize their use to sell those goods and services, maybe doesn’t believe or support that organization or company that’s selling those goods and services. I don’t know. I just see this as being extremely problematic. Josh Escovedo: Sure. I mean, it’s a fair point. That is certainly true. But I suppose if we think about it, that same situation would be permissible under the Copyright Act, so long as the party who utilizes the soundalike actually procured the license to utilize the copyright in the composition. And the celebrity or artist wouldn’t be able to do anything about that. Scott Hervey: Well, true, they wouldn’t be able to do anything about it if the advertising agency secured a sync license, but the singer who sings the song for the commercial, arguably, going along with this hypothetical, wouldn’t sound like Tom Waits or Bette Midler. And that’s the difference. Scott Hervey: Maybe the preemption argument needs to focus on whether it’s commercial speech or non-commercial speech and the degree of protection that that type of speech is entitled to under the First Amendment because as you know, commercial speech is entitled to a lesser degree of protection than non-commercial speech under the First Amendment. Interestingly, maybe that’s where the case would have to draw a line. Scott Hervey: While we’re talking about 3344, I think Rick Astley has a problem there anyway. Let’s assume that the preemption doesn’t apply. I think he’s got a problem anyways. I don’t think he’s got a case under California Civil Code Section 3344, which specifically addresses, as we’ve just been discussing in the case of Waits and Midler, the use of a celebrity’s name, voice, or likeness on or in products, merchandise, or goods, or for the purpose of advertising or selling or soliciting purchases of products, merchandise, goods, or services. What do you think about that? Do you agree? Josh Escovedo: Yeah, I agree with you on that, Scott. I think, in fact, that the 3344 claim is likely to be dismissed at the onset of this case, assuming there’s motion practice, which I fully anticipate. It’s possible that Yung Gravy will first remove this case to federal court because the federal judiciary more commonly deals with these issues of copyright law and federal preemption. So, it’s possible he’ll remove first, in which case the plaintiff would be facing a motion to dismiss as opposed to a demur. Josh Escovedo: But for purposes of the discussion, really the same thing here. But the question would be, does 3344 permit a claim in this specific context? And it does not. So, I think that the plaintiff will have to pursue a common law claim for the violation of his right of publicity. But I don’t think he has grounds to move forward under 3344. Scott Hervey: I agree with you. And let’s remember the de Havilland versus FX case where there was a 3344 claim that was raised. The court assumed for argument’s sake that a television program is a product, merchandise, or good, but it found that de Havilland’s claim failed. The court noted that the speech in FX is fully protected by the First Amendment, which safeguards the storytellers and artists who take the raw materials of life, including the stories of real individuals, ordinary, extraordinary, and transform them into art, be it books, movies, plays, or in this case, sound recording. Scott Hervey: The fact that FX did not get de Havilland’s rights to use her name, voice, or likeness did not change the court’s analysis. I think the court’s ruling in the Havilland that the First Amendment, for the purposes of a creative work, outweighs somebody’s right of publicity under 3344 will rule the day here as well. Josh Escovedo: Right. And that brings us back to the other defense that I was mentioning, Scott. And I think at this point, it’s the elephant in the room, and that’s the First Amendment. Midler and Waits both involved commercial use, so not a truly expressive work. Here, Betty (Get Money) is clearly an expressive work, and as such, it’s entitled to significantly greater protection than commercial speech, which was what was at issue in Midler and Waits. Josh Escovedo: So as a result, the court will give Gravy more leeway in terms of how he could have imitated Astley’s voice without violating the right of publicity. Of course, the distinction between the expressive work in this case and the commercial work in the Midler case and the Waits case could also serve as a basis for distinguishing this situation from the Midler precedent without having to overturn it for purposes of the preemption analysis that we had been discussing. Scott Hervey: Yeah, it’s a significant distinction. It’ll be interesting to watch this case if this is litigated through motion practice and if a court does find… Let’s assume they don’t find preemption, but in fact, they do find that this is not a violation of 3344. This actually might open up a whole new industry or an alternative to sampling. If you want to sample an audio clip, you don’t necessarily need to get a master-use license. You can just get the sync and rerecord that hook and drop it into your track and not have to deal with artist permission. Scott Hervey: This has a bigger ramification than this Rick Astley, like this narrow issue of the use of this hook in Rick Astley’s hook in this song. It can have a much bigger impact on the music industry as a whole. Josh Escovedo: Right. I’m sure the entire music industry is watching this one. Scott Hervey: Yeah. Well, we’re going to watch it too, and we’ll report back if there’s some motion practice. Josh Escovedo: Thanks, Scott. Scott Hervey: Thanks, Josh. Josh Escovedo: Thanks for tuning into this installment of the Briefing by the IP Law Blog. Don’t forget to subscribe to our podcast and YouTube channel. Leave a positive review. And for additional content, visit our website at the iplawblog.com. Thank you.

Getty Images filed a lawsuit against startup tech company Stability AI for allegedly scraping more than 12 million photographs from Getty Images’ portfolio without consent. Scott Hervey and Josh Escovedo discuss this case on this episode of The Briefing by the IP Law Blog. Watch this episode on the Weintraub YouTube channel here. Cases discussed: Getty Images (US), Inc. v. Stability AI, Inc. Visual Arts v. Goldsmith Show Notes: Josh: Getty Images, a preeminent global visual content creator and leading source for visual content, has filed suit against startup technology company Stability AI for allegedly scraping more than 12 million photographs from Getty Images’ portfolio without consent or compensation. Getty Images also alleges that Stability removed or altered Getty Images’ copyright management information, such as watermarks, and provided false copyright management information. Accordingly, Getty Images’ complaint includes claims for copyright infringement, providing false copyright management information in violation of 17 U.S.C. section 1202(a), removal or alteration of Copyright Management Information in violation of Section 1202(b), trademark infringement, unfair competition, trademark dilution, and deceptive trade practices under Delaware law. In order to understand the nature of the claim a bit better, it’s important to understand what these parties do. Scott, do you mind providing a brief overview of what the parties do for our listeners? Scott: Sure. Getty Images is a visual media company and a supplier of stock images, editorial photographs, video, and music for businesses and consumers. It has over 477 million assets, and it generates revenue by licensing the right to use these assets to creatives, the media, corporate entities, and general consumers. Many of you have probably seen their images online, complete with the Getty Images watermarks. They’re all over the place. On the other side of the case, we have Stability AI. Stability AI is a startup technology company that has created an image-generating platform called Stable Diffusion that uses AI to generate computer-synthesized images in response to text prompts. There is an open-source version of Stable Diffusion, as well as a revenue-generating version known as DreamStudio. To simplify the description of what Stability AI does, we can refer to the example used by Getty Images in its Complaint. If a user wanted to generate a photo of a cat wearing a scarf, the user would type “cat wearing a scarf” into Stability AI’s platform, and the platform would generate an image of a cat wearing a scarf. Of course, the returned image would not be a real photo of a cat wearing a scarf, it would be a computer-generated version of a cat wearing a scarf. And it is the process of how the AI platform generated that image that is at the heart of this Complaint. Josh: That’s exactly right. In order to generate images in response to prompts submitted to Stability’s platform, the platform relies on various images that Stability utilized to teach its platform what a cat is and what a scarf is. The platform then utilizes those images to generate a synthesized version of what the user has requested, so in the example above, a cat in a scarf. With that understanding, we can discuss the specifics of Getty Images claim. According to Getty Images, Stability copied over 12 million photographs from its portfolio and used those images to train its Stable Diffusion model. Getty also claims that Stability used associated text and metadata, which it contends are also protected as copyrighted expressions to train its model. This, according to Getty Images, constitutes copyright infringement. Scott: Getty explains in its complaint that its assets are highly desirable for use in connection with AI and machine learning because of its high quality and because the assets are accompanied by content-specific, detail captions, and rich metadata. Apparently, Getty Images has licensed millions of digital assets to technology innovators for various purposes related to AI and machine learning. Of course, here, Getty Images alleges that Stability didn’t even attempt to negotiate a license with Getty Images for the content, but instead copied the images without Getty’s consent, in violation of the Getty Images terms of use and allegedly United States Copyright Law. Josh: But according to a variety of AI technology companies, the practice of using copyrighted materials for the purpose of training an artificial intelligence platform constitutes fair use under United States Copyright Law. Whether that’s true or not remains undecided. The rise of technology has created this issue of first impression, so it remains to be seen how the Courts will apply the fair use doctrine in this context, which, as many of you know, permits the use of copyright-protected work, in certain contexts, to promote freedom of expression and for other purposes. In my opinion, this isn’t an issue that will be decided through just one case. Fair use is a multi-factor analysis that takes a number of items into consideration when determining whether a use was fair under the doctrine. Two of the most significant factors are the purpose or nature of the use and whether the allegedly fair use has an effect on the market for the protected work. With that said, it may be the case that using copyright protected works to train a platform would constitute fair use, but using it to generate new content may not be. In other words, it may be fair to use someone else’s IP to train your platform, but if you use it to generate a new product that may not be fair. Scott: And its even a bit more nuanced than that. For example, if millions of photos were provided to an image generating platform and it generated a novel image, it seems unlikely that that would constitute copyright infringement. On the other hand, if the platform only had a small sample of photos to work with, and if perhaps those photos were from the same creator, the resultant product may constitute infringement. Josh: Exactly. And as to the latter, exactly how different the resultant product would need to be to be considered transformative in nature and therefore protected by fair use is a question that is currently before the Supreme Court in the matter of Andy Warhol Foundation for the Visual Arts v. Goldsmith, which has already been argued and should be decided this term. As many of you know, that case deals with how different a work must be from the original protected work to be considered transformative and not infringing. That decision will have consequences in the AI-IP disputes as well. Scott: There are so many interesting IP issues involved in this dispute, and it’s just getting started. I do not foresee this case resolving right away, so we’ll be watching very closely. Thanks for sharing, Josh.

The jury hearing Hermes v. Rothschild found the artist’s ‘MetaBirkin’ NFTs constitutes trademark infringement and trademark dilution. Scott Hervey and Josh Escovedo talk about this case on this episode of The Briefing by the IP Law Blog. Watch this episode on the Weintraub YouTube channel here.   Show Notes: Scott: The jury hearing Hermes v Rothschild found Rothschild liable for trademark infringement and trademark dilution.  The matter went to trial after the judge dismissed both Hermes and Rothschild’s motions for summary judgment.  Should the court have sent the matter to the jury and what may be the basis for an appeal. We are going to discuss this case on the next installment of the briefing Scott: Mason Rothschild is an artist who has created a series of digital artworks called MetaBirkins. The artist claims that each work comment on Hermès’ “Birkin” handbags. is a unique, fanciful interpretation of a Birkin bag. Rothschild claims that the depiction of each bag as fur covered, Comments on the animal cruelty inherent in Hermès’ manufacture of its ultra-expensive leather handbags.  He has over 100 pieces as part of the collection and has sold over 1.1 million. Josh: Hermes filed suit in January 2022 alleging trademark infringement and trademark dilution.  Rothschild moved to dismiss, relying heavily on Rogers v Grimaldi. The court dismissed Rothschild’s motion because the amended complaint included sufficient allegations that Rothschild entirely intended to associate the MetaBirkins mark with the popularity and goodwill of the Hermes Birkin mark rather than intending an artistic association Scott: Shortly thereafter both parties moved for summary judgment.  Although the court found that the Hermes’ claims should be analyzed under the Rogers test, the court found that a genuine issue of material fact remained as to whether under the Rogers test Rothchild’s NTFs infringe and/or dilute Hermes’ trademarks. Josh: The Rogers court held that where the defendant’s product is artistic or expressive, the Lanham Act must be interpreted “narrowly in order to avoid suppressing protected speech under the First Amendment.”  The two parts of the Rogers test are artistic relevancy and whether the use of the mark is explicitly misleading. Scott: Citing to a 2012 Southern District of NY case, Louis Vuitton Mallatier S.A. v. Warner Bros. Entm’t Inc., The artistic relevance prong of the Rogers test “ensures that the defendant intended an artistic – i.e., non-commercial association with the plaintiff’s mark, as opposed to one in which the defendant intends to associate with the mark to exploit the mark’s popularity and good will. . Josh: Under Rogers, however, a showing of artistic relevance is easily satisfied: it is met “unless the [use of the mark] has no artistic relevance to the underlying work whatsoever,” and was instead chosen merely “to exploit the publicity value of [the plaintiff’s mark or brand].” Scott: This court, in denying the cross motions for summary judgment said that “there is a genuine factual dispute as to whether Rothschild’s decision to center his work around the Birkin bag stemmed from genuine artistic expression or, rather, from an unlawful intent to cash in on a highly exclusive and uniquely valuable brand name” Josh: In the courts order it cited to Rothschild’s comments to investors that “he doesn’t think people realize how much you can get away with in art by saying ‘in the style of'” and that he was “in the rare position to bully a multi-billion-dollar corporation” as being probative of an intent to exploit. Scott: Right, and this was despite the fact that the court recognized the existence of evidence which suggested that Rothschild viewed the project as a vehicle to comment on the Birkin bag’s influence on modern society.  To me it seems that the court may have evaluated the weight or veracity of the artistic relevance proffered by Rothschild.  Yes, Hermes offered evidence tending to show that Rothschild true intent was to make money and “capitalize on the hype”.  I don’t think the court can do that.  In Dillinger, LLC v. Electronic Arts, Inc the 9th circuit said ““not the role of the Court to determine how meaningful the relationship between a trademark and the content of a literary work must be; consistent with Rogers, any connection whatsoever is enough for the Court to determine that the mark’s use meets ‘the appropriately low threshold of minimal artistic relevance.’” Scott: Even where the use of a trademark bears “some artistic relevance” to an underlying artistic work, the First Amendment does not protect such use if it “explicitly misleads as to the source or the content of the work.  A work is “explicitly misleading” if it “induces members of the public to believe” that it was created or otherwise authorized by the plaintiff. In the 2nd circuit, “This determination is made by application of the Polaroid factors,” As the 2nd Cir said in Twin Peaks Prods., Inc. v. Publ’ns Int’l, Ltd., the opinion written by the same judge who wrote the Rogers opinion, If, after applying the Polaroid factors, a likelihood of confusion is found, it must be “particularly compelling to outweigh the First Amendment interest recognized in Rogers.  The Rothschild court said “Because there remain substantial factual disagreements between the parties with respect to many — if not most — of the eight Polaroid factors, any of which could be dispositive to the outcome, the Court declines to grant summary judgment for either party on this issue.  Does this sound like the court kept in mind what the 2nd cir had said in Twin Peaks? Josh: In Rogers v Grimaldi, the court gave some examples of what would constitute “explicitly misleading” such as a book title “Nimmer on Copyright” for a treatise that was not authored by Nimmer, or “Jane Fonda’s Workout Book” for a book Jane Fonda had nothing to do with. Scott: According to the motions for summary judgment filed by both parties, there doesn’t see, to be that type of evidence.    Hermès pointed to a study it commissioned that found a 18.7% net confusion rate among potential consumers of NFTs, and noted third party social media posts which mistakenly assumed an association and the fact that an IP lawyer in Paris wrongly stated that Hermès and Rothschild collaborated on the METABIRKINS NFTs. According to Hermes, this lawyer thought this because “the names of the NFTs include the famous trademark ‘BIRKIN’ and reproduced the shape of the bag.”  Rothschild pointed out the fact that he never made any affirmative statement linking his project and.  When several publications mistakenly reported an affiliation between Hermès and the MetaBirkins project.  To the contrary, Rothschild’s publicist asked that these publications issue corrections regarding the mistaken affiliation. Rothschild included a disclaimer.  Josh, do you think this rises to the level of explicitly misleads as to the source or the content of the work Scott: And as to Hermes dilution claim, Jack Daniels v VIP products held that the noncommercial use of a mark is expressly excluded from being actionable as blurring or tarnishment. In VIP the court’s stated that “speech is noncommercial if it does more than propose a commercial transaction” and that the “use of a mark may be “noncommercial” even if it is used to “sell” a product”.  The court allowed Hermes dilution claim to go forward.

Journalist Bob Woodward conducted an audio interview with former President Donald Trump for his book ‘Rage’ and later released the tapes as its own audiobook. Now, Trump is suing for copyright infringement. Scott Hervey and Josh Escovedo talk about this case on this episode of The Briefing by the IP Law Blog.   Cases discussed: TRUMP v. SIMON & SCHUSTER INC et al Falwell v. Penthouse Community for Creative Non-Violence v. Reid Read Scott’s article about this dispute on the IP Law Blog here. Watch this episode on the Weintraub YouTube channel here. Show notes: Scott:Veteran investigative reporter Bob Woodward conducted an audio interview of former President Donald Trump for Woodward’s book, Rage. Woodward later released these recordings as a separate audiobook, Trump claims that Woodward did not have his permission to release these audiotapes as a separate audiobook and sued Woodard and his publisher for, among other claims, copyright infringement. Does Trump have a claim or is his copyright claim “trumped up”.  We are going to talk about this. Scott:These are the facts according to Trump’s complaint against Woodward and his publisher, Simon and Schuster. Woodward sought and obtained President Trump’s consent to be recorded for a series of interviews with President Trump and repeatedly informed him that such interviews were for the sole purpose of a book. Woodward interviewed Trump, both in person and over the phone, on numerous occasions during 2019 and 2020.  The audiobook, The Trump Tapes, is comprised of 20 audio interviews, one with Trump during his presidential campaign in 2016 and the remaining 20 from the interviews conducted during his term as president.  In his complaint, trump states that during the Interviews, he repeatedly stated to Woodward, in the presence of others, that he was agreeing to be recorded for the sole purpose of Woodward being able to write a single book. Josh:The complaint notes a December 30, 2019 interview which, according to Trump, exemplifies that the rights granted were limited. Woodward: On the record for the book, unless you— Trump: For the book only, right? Only for the book. Woodward: The book only, yeah, I’m not— Trump: For the book only, right? So, there’s no— Hogan Gidley, the former White House deputy press secretary then says Right. So, there’s no stories coming out, okay. Trump contends that Woodward did not request to expand the scope of release or furnish a release to use the Interview Sound Recordings for an audiobook or any other derivative work, as is customary in the book publishing and recording industries. Trump alleges that he told Woodward numerous times that the Interviews were to be used by Woodward—and Woodward only—for the sole purpose of accurately quoting President Trump for his forthcoming book “Rage”, and not for any other purpose, including providing, marketing, or selling the Interviews to the public, press, or the media, in any way, shape, or form. Scott:So best practices would have been for Woodward to get a written release from Trump assigning over any rights Trump may have had in the interview. According to the complaint that didn’t happen and according a press release by Woodward responding to the complaint, that seems to be the case. Josh:Based on this Trump claims that he owns the copyright in the entire sound recording or at least Trump’s response to the interview questions. But the failure of Woodward to obtain a written release doesn’t mean that Trump owns the copyright in the recording. Scott:True. The audiobook may likely be considered a joint work. According to the Copyright Office compendium, The Copyright Act defines a joint work as a work “prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole.” A work of authorship is considered a joint work “if the authors collaborated with each other, or if each of the authors prepared his or her contribution with the knowledge and intention that it would be merged with the contributions of other authors as ‘inseparable or interdependent parts of a unitary whole.’” The key requirement “is the intention, at the time the writing is done, that the parts be absorbed or combined into an integrated unit. Josh:If the audiobook is a joint work, then Trump would own AN INTEREST in the audiobook.  According to the Copyright compendium, the authors of a joint work jointly own the copyright in each other’s contribution. In other words, all the authors are “treated generally as tenants in common, with each co-owner having an independent right to use or license the use of a work, subject to a duty of accounting to the other co-owners for any profits. Scott:Interestingly, there is precedent that an interviewee does not hold any copyright in an interview. In the 1981 case of Falwell v. Penthouse Reverend Jerry Falwell gave an interview to two journalists who sold the interview to Penthouse magazine. Falwell sued Penthouse for infringement of common law copyright, among other claims. In dismissing Falwell’s copyright claim the court said that Falwell “cannot seriously contend that each of his responses in the published interview setting forth his ideas and opinions is a product of his intellectual labors which should be recognized as a literary or even intellectual creation.  And then there is the more recent case of Taggart v. WMAQ Channel 5 Chicago, in which a Chicago television station, videotaped a prison interview with a convicted sex offender in connection with a report on the lax regulation of summer camps. Taggart alleged that he had requested that the tape not be used in any manner, and when WMAQ broadcast an excerpt he sued for copyright infringement and other claims. In ruling on the station’s motion to dismiss the court held that Taggart did not have a copyright interest in unprepared and spontaneous utterances during an interview and dismissed his copyright claim.  The basis of this finding is the Copyright Act’s lack of protection for ideas.  While courts have recognized common law protection for the spoken word, according to the Taggart holding, courts have not and cannot recognize a proprietary interest where there is no tangible embodiment of the expression of an idea  Josh:To qualify as an author under the Copyright Act one must supply more than mere direction or ideas. According to the Supreme Court in Community for Creative Non-Violence v Reid “an author is the party who actually creates the work, that is, the person who translates an idea into a fixed, tangible expression entitled to copyright protection.” Scott:And based on that, the court found the responses given by Taggart “are not an expression of an idea for the purpose of copyright law.” On a more practical level, the judge noted that the granting of protection for the answers to questions “gathered in the daily task of the news reporter would essentially bring the industry to a halt,” Josh:Woodward and his publisher argue that Trump’s claim is meritless and that it will be vigorously defended. I am not so certain that, at this point in time, we can label Trump’s claim as being completely meritless. Scott:I agree with you Josh. It’s not completely clear that the permission Trump granted to Woodard, the basis of an implied license, extended to the audiobook.  And while its entirely clear to me that Trump can’t sue Woodward for copyright infringement, a claim for breach of contract may lie. However, I think it’s questionable whether Trump has any copyright interest in the audio tapes. However, if his is a claim for accounting will also lie.

A Florida bankruptcy court has terminated FTX’s naming rights agreement for an NBA arena. Scott Hervey and Josh Escovedo discuss this case on this episode of The Briefing by the IP Law Blog. Watch this episode on the Weintraub YouTube channel, here.  

The recent Reilly v. Wozniak 9th Circuit decision upheld a 1950s ruling that requires a promise to pay to be present for an implied contract to exist. Scott Hervey and Josh Escovedo discuss this case and how the Desny decision applies to idea theft cases in California in this episode of The Briefing by the IP Law Blog. Watch this episode on the Weintraub YouTube channel here. Show Notes: S: In a previous episode we discussed recent applications of the 1950 case, Desny v Wilder, which set the ground rules for an idea theft case in California. A recent non-citable 9th Circuit opinion on an idea theft looks at the promise to pay element.  We are going to talk about this on the next installment of The Briefing by the IP Law Blog. In California, an idea theft claim is based in large part on the California supreme court case of Desny v Wilder. In Desny, the plaintiff Victor Desny wrote a script depicting the real-life story of Floyd Collins, a boy who made headlines after he was trapped in a cave eighty feet underground.  In an effort to market his script, Desny called Billy Wilder, a writer, producer and director at Paramount Pictures. Desny could not get through to Wilder and subsequently stripped his scrip to the bare facts so that Wilder’s secretary could copy it in short-hand over the phone.  After reading his synopsis, Desny told Wilder’s secretary that Wilder and Paramount could use the script only if they paid him a reasonable amount for doing so.  Shortly thereafter, Wilder created his own movie script mirroring Densy’s. Because Densy’s script was based on historical facts, and because Desny only conveyed the bare minimum of those facts to Wilder’s secretary, both parties conceded for the purpose of the appeal that the synopsis was not sufficiently original to form the basis of a federal copyright claim. The Court, however, held that Densy stated sufficient facts to establish the existence of an implied-in-fact contract between the parties. The California Supreme Court explained that where an idea is furnished by one party to another, a contract sometimes may be implied even in the absence of an express promise to pay; a contract exists where “the circumstances preceding and attending disclosure, together with the conduct of the offeree acting with knowledge of the circumstances, show a promise to pay.” J: In the recent case of Ralph Reilly v. Steve Wozniak, et al, Reilly, an IT professor, claimed that he had a verbal agreement with Wozniak to create a new high-tech online university based on a course design and outline developed by Reilly.  Apparently, at least accordingly to Reilly, the two shook hands on a deal, and Reilly developed the course outline.  Later Reilly learned that Wozniak had partnered with Southern Career Institute Inc. to create “Woz U.”  Reilly claims that he went to two pitch meetings with Wozniak.  Wozniak claimed that he never agreed to compensate Reilly and further that he never made any money off of Reilly’s idea because Southern Career Institute reached out to Wozniak to license his name and likeness. S: In an appeal from the district court’s dismissal of Reilly’s contract claim, Reilly argued that a party claiming breach of a contract for conveyance and use of an idea does not need to show that the claimant offered the idea to the defendant for sale, because California law provides a broad equitable basis to find implied-in-fact contracts for the use of ideas.  Reilly alleged that it was understood that he and Wozniak would “jointly market,” and be his “partner in exploiting,” Reilly’s idea.  The court said that these facts, as alleged by Reilly, do not show an offer for sale but rather the intent to enter into future business relationships.  According to the 1987 9th Circuit case of Aliotti v R. Dakin and Co., “no contract may be implied where an idea has been disclosed not to gain compensation for that idea but for the sole purpose of inducing the defendant to enter a future business relationship.” It was in this precise context, the contemplation of a partnership, that Aliotti and Faris held that an idea must be disclosed for sale for an implied-in-fact contract to exist. As such, the 9th Circuit said that the district court did not err in granting summary judgment because there was no genuine dispute of fact as to whether Reilly offered his idea to Wozniak for sale. J: What about the 9th Circuit’s 2011 holding in Montz v Pilgrim, in which the court said that it sees “no meaningful difference between the conditioning of use on payment … and conditioning use on the granting of a partnership interest in the proceeds of the production.” This ruling seems contrary to that. S: The 9th Circuit did say that in Montz, and I can see how readers of the short ruling could be confused.  To understand what the 9th Circuit is saying here, you have to go back to the district court’s ruling on the motion for summary judgment.  There the district court drilled down on what Reilly was pitching to Wozniak.  Reilly wasn’t pitching an idea for Wozniak to acquire.  Rather, what Reilly pitched was the concept that Reilly could use Wozniak’s name as part of a pitch to potential financiers for an online computer school.   An implied-in-fact contract requires a “reasonable expectation of payment which can be inferred from the facts and circumstances.”  The district court found that the evidence establishes that Reilly initially solicited Wozniak’s “endorsement” to start the Woz Institute of Technology, but not an agreement for payment. The alleged “deal” between Wozniak and Reilly – strongly contested by Wozniak – happened much later.   As you know, that won’t support a Desny claim J: The court in Desny commented on that specific factual scenario: “[t]he idea man who blurts out his idea without having first made his bargain has no one but himself to blame for the loss of his bargaining power. The law will not in any event, from demands stated subsequent to the unconditioned disclosure of an abstract idea, imply a promise to pay for the idea, for its use, or for its previous disclosure.” S: The district court found that a reasonable juror could not conclude that Plaintiff and Wozniak formed an implied-in-fact contract under Desny because that Plaintiff did not seek to sell anything to him.  I think the 9th Circuit potentially confused the issue with its discussion of Aliotti when it could have just said that the district court did not err in granting summary judgment because there was no genuine dispute of fact as to whether Reilly offered his idea to Wozniak for sale.

The Supreme Court will bring finality to several IP disputes this year. Scott Hervey and Josh Escovedo provide an overview of the trademark and copyright cases to watch on this episode of The Briefing by the IP Law Blog. Watch this episode on the Weintraub YouTube channel here.   Show Notes: Josh: It’s always good to start off the year with an overview of the trademark and copyright cases to watch for the year. This year, we have a couple of cases that we’ve previously discussed on The Briefing when they were on appeal with the circuit courts, but we will now see the Supreme Court bring finality to the issues. Scott: This sounds like great information to me, Josh. Let’s get into it. Josh: We’ll start with Andy Warhol Foundation v. Goldsmith, which we’ve discussed at length on this show. In that case, the Supreme court will decide whether the Andy Warhol Foundation made fair use of a photo of the late artist Prince. In short, the matter at issue will address when a work is sufficiently transformative to qualify for fair use protection under the Copyright Act. In the matter below, the Second Circuit reversed the decision of the District Court and held that the Warhol work was not transformative because it maintained the “essential elements of its source material” and was not “fundamentally different and new.” This is the first time since 1994 that the Supreme Court has addressed fair use in the context of an artistic work. This is one I’ll be looking forward to. Scott: Next, we have Abitron Austria GmbH v. Hetronic International. In that case, US-based remote-control maker Hetronic International sued its former European partners Abitron Austria for trademark infringement. The Defendants in that action argued that since 97% of the sales related to the verdict were “purely foreign” and no one affiliated with the companies was based in the United States, Hetronic International needed to pursue the action abroad. Of course, Hetronic disagrees and contends that trademark law under the Lanham Act extends beyond U.S. Boards. This case should bring clarity to an issue that is constantly disputed in sizable Lanham Act cases—the materiality of foreign sales. For that reason, TM practitioners will certainly be keeping an eye on this one. Josh: Next up is my favorite case of the year. Jack Daniel’s v. VIP Products. As many of you know, this is the Ninth Circuit dispute arising out of VIP Products creation of a parodic dog toy styled like a Jack Daniel’s bottle but called Bad Spaniels. The toy is filled with comedic references related to dogs, but it’s no laughing matter to Jack Daniel’s. The case will determine the proper balance between trademark rights and free speech. The district court and the Ninth Circuit found that VIP’s use was protected by the First Amendment. Now, the Supreme Court will determine whether the Ninth Circuit made the right decision, and will provide some guidance and hopefully clarity on how these competing interests must be balanced. As we’ve discussed in the past, there is a difference in opinion on how these matters should be addressed and given the low bar for artistic relevance, it is imperative that the Court provide guidance, as these disputes will continue to arise. Scott: We’re definitely looking forward to that one. Next up, we have Genius v. Google. This action is present before the Supreme Court, but the Court has not yet granted cert. In this case, Genius sued Google for breach of contract over music transcriptions. In the petition for cert, Genius argued that the Second Circuit and the District Court wrongfully found that a preemption clause in the Copyright Act precluded its breach claim against Google and LyricFind for allegedly stealing song lyrics from its site for Google’s search result. The Second Circuit’s decision, affirming the decision below, held that Genius hadn’t shown that its claims are “qualitatively different” from a copyright claim on lyrics, which notably it didn’t hold the copyright to. The petition states that the Court must clarify whether the Copyright Act’s preemption clause permits a plaintiff to use “state-law contract remedies to enforce a promise not to copy and use its content.” The Supreme Court has requested the Solicitor General’s opinion on whether copyright law preempts the breach of contract claim. All in all, this sounds like pretty interesting case as well. Josh: It sure does. And finally, we have Green v. DOJ. In that case, two computer scientists have challenged the Digital Millennium Copyright Act’s ban on circumventing digital locks on copyrighted works. The engineers filed suit against the federal government seeking to enjoin enforcement of the DMCA’s anti-trafficking and anti-circumvention provisions. The district court refused and the DC Circuit affirmed the decision below. Apparently, the DC Circuit also commented that it lacks jurisdiction over claims of facial unconstitutionality on First Amendment grounds because the District Court did not rule on that issue. The case has been remanded to the District Court for further consideration. I suspect this case will be pending for a while, but we’ll keep an eye on it just the same. Scott: In fact, we’ll keep an eye on all of these cases. Thanks for sharing, Josh.

The start of a new year is a good opportunity for companies to review and take stock of their intellectual property assets. Scott Hervey and Josh Escovedo talk about the importance of this review on this episode of The Briefing by the IP Law Blog. Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott: As 2023 commences, it’s time for companies to take review and take stock of their intellectual property assets.  This applies to companies that have never taken serious steps to protect intellectual property, and those companies that understand the value of intellectual property and take active steps to secure and protect those assets.   We are going to talk about this on this next installment of the Briefing by the IP Law Blog Scott: Intellectual property is a company asset, just like inventory.  No CEO or CFO would think of running a company where they didn’t know the extent of company inventory.  Likewise, it makes no sense for a company not to have a firm understanding of all of its potential intellectual property assets.  Even companies that regularly take steps to protect intellectual property through, for example, registering trademarks, or registering copyrights, a yearly review can prove beneficial. Josh: Understanding the extent of a company’s IP holdings usually start with what’s known to the company, such as all registered copyrights, trademarks or patents, domestic and foreign.  After compiling a list of those IP assets, the next step would be to review what the company is using and compare that to the list of registered or pending IP.  For trademarks, a good place to start is the company’s marketing and promotional materials, website, mobile app, and social media.  If these materials show use of trademarks, logos, or slogans that are not already the subject of a trademark registration or application, then these marks should be cleared for use to prevent unintended liabilities, and they should be considered for possible registration. Scott: Don’t overlook company social media accounts, domain names, and toll-free numbers, which may also serve as potential trademarks.  And be sure to confirm that all domain names and social media accounts are registered to the company; you would be surprised at how many times a domain name or social media account is registered to an individual company employee and not the company itself.  Also, if the company has changed the graphic user interface to any of its technology products or has changed product packaging, point of sale displays, or product design, these may also be protectable trade dress. Josh: When looking into company assets protectable under the federal copyright laws, one should check the company’s website, marketing materials, manuals, YouTube videos, podcasts, posted content on Instagram, TikTok and the like, photos, software, blog posts, articles, white papers, etc.  Although the cost benefit analysis of securing protection may result in a conclusion that registration does not economically make sense for every single piece of content, the company should at least maintain inventory of its copyrightable works. Scott: A company should always be aware of any new inventions under development, and its good practice to investigate the status of any inventions developed by company employees during the past year.  Such inventions may be protectable under federal patent laws.  An inventor must secure a patent application within a very short period of time in order to prevent the work from falling into the public domain.  Companies that routinely produce new inventions should put into place a process which enables inventors to disclose a potential invention to a responsible executive well prior to the invention being disclosed to the general public. Josh: In addition, a company should take stock of those items that it considers proprietary trade secrets.  Trade secrets are items not generally known by the public but have economical value and are the subject of reasonable precautions to maintain their secrecy.  In general, trade secrets have no duration of protectability and there is not a method for registering a trade secret in the United States. Scott: Items that may be protected by state trade secret laws include software source code and related documentation; customer lists, employee knowledge, training and experience; proprietary terminologies, definitions and formulas; specially developed customer information; sales practices; negative information such as negative results from research and development projects; and customer and consumer surveys.  Each of the above could constitute proprietary trade secrets depending upon whether its owner took reasonable steps to maintain its trade secret status. Scott: A special note about customer data.  In addition to regularly reviewing IP assets, a company should regularly make sure that its privacy and data use policies comport with the manner in which it collects and uses customer and employee data.  In the US, privacy laws are generally driven by state law, but there may be applicable federal law depending on the nature of the information collected.  If a company conducts business internationally, it may have to adhere to the privacy laws of foreign countries. Josh: After looking at all known IP assets, look into what may be unknown.  Sometimes marketing departments and independent divisions spin out valuable intellectual property assets that, for one reason or another, never made it past the desk of general counsel or a responsible executive. Scott: Intellectual property rights acquired by way of contractual agreements may sometimes be overlooked.  Items that were developed or created through the use of independent contractors, such as consultants, photographers, website and application developers, software developers, advertising agencies, graphic artists, production companies, and the like may be company assets depending on contract terms.  If the company intends to own all of the rights, including any intellectual property rights, in the works created by these independent contractors then the agreements with these independent contractors should have proper intellectual property vesting language – such as work made for hire language and/or an assignment provision.  If the agreements with these independent contractors were only verbal or did not contain such language, then the company needs to make another resolution: make sure it actually owns the intellectual property it paid for.   Sticking to this resolution would include a review of standard independent contractor and employment agreements to confirm they have proper assignment language and confidentiality provisions. Josh: Unintended liabilities can also result from the company’s interaction with independent contractors that have been hired to create something for the company.  Whether it is a website designer hired to redesign a company website, a software developer hired to work on a company’s app, a graphic artist hired to create a new logo or artwork, or a copyrighter hired to write content, we have seen countless instances of these types of vendors taking shortcuts and “borrowing” assets from existing sources.  Unless a company executive is closely managing these vendors when they do their work, it would difficult to determine whether or not they engaged in acts that may be considered infringement until such time as the company receives a cease and desist letter. Scott: However, there are precautionary steps a company can take to prevent unintended liabilities.  A company should always have written agreements with vendors which unconditionally requires them to indemnify the company for any claims of infringement resulting from the works they were hired to create.  Additionally, a company should require these vendors to carry insurance that would provide coverage for such a claim (either E&O or professional liability insurance) and that the company be named an additional insured on such policies. Josh: Lastly and most important, the company should have a general understanding of who they are doing business with.   A little time spent researching whether the vendor has negative claims with the Better Business Bureau, has licensing issues, generally has satisfied customers, whether there are any lawsuits pending, etc., can tell a company quite a bit about the work habits and ethics of any potential vendor. Scott: After a working intellectual property inventory list has been created, the next step is to identify those items that are already the subject of active protection efforts (i.e. pending or issued registrations) and those that are not.  Then, the company executives, along with corporate counsel and if appropriate outside intellectual property counsel, should review the list of unprotected intellectual property assets and determine whether taking steps to secure protection makes economic sense.  Sometimes, a company might find that the cost to secure protection of an intellectual property asset outweighs the potential economic value of that asset or that protection would be duplicative.