JIPEL Vol. 8, No. 2 – Spring 2019

This spring, JIPEL is proud to present our readers with five cutting edge pieces. From ongoing litigation challenging our intellectual property laws, to cutting edge technology doing the same, our Spring Edition covers both the forefront of the law and the forefront of human innovation challenging. In what follows, you will find a pieces that combine scrupulous legal reasoning with insightful forward-minded reasoning.

First, Professor Barton Beebe and Professor Jeanne Fromer provide compelling arguments for holding the prohibition on immoral or scandalous remarks unconstitutional. Among their most powerful is an argument that is borne out of an empirical study they conducted on all word marks between 2003 and 2015 to assess the way the United States Patent and Trademark Office was applying the ban. Their study shows that the ban is applied in an arbitrary manner, and they identify numerous examples of word marks rejected as immoral or scandalous for one applicant yet allowed for another. The reader is advised to approach this article with caution, as the authors include the word marks uncensored to demonstrate their argument.

Next, Attorneys Simon J. Frankel and Ethan Forrest provide a practitioner’s review of the Federal Circuit’s decision in Oracle v. Google in March 2018. Their Article marches through the four statutory factors for fair use to meticulously demonstrate how the Federal Circuit departed from prior treatment of software under the doctrine. In doing so, they point out that if other courts adopt the Federal Circuit’s reasoning, it will be nearly impossible for any use of software to qualify as fair use.

Remaining in the world of high-tech, Samantha Fink Hedrick turns the reader’s head towards cutting edge technology and asks how the rise of artificial intelligence will impact copyright law. In particular, she asks whether the use of AI presents a barrier to humans claiming copyright in the outputs and emphatically concludes it should not. Like a human using the preset mode on a camera, a human using AI remains in control of inputs and parameters under which an AI operates. That control is legally sufficient to give rise to a copyright claim.

In our fourth piece this spring, Chloe L. Kaufman takes a look at our freedom of speech in the context of the private employment sector. Through a number of palpable modern examples, she demonstrates how a private employer’s unrestricted power to regulate speech disproportionately effects employees in the entertainment industry. Given the constant broadcast of our lives in the modern era, the private employer’s power is a constant threat against entertainment employee’s ability to speak and convey opinions. That threat cuts starkly against our democratic values.

Finally, James Yang turns the reader to the future in an imaginative piece about the way intellectual property laws will apply to the realms of virtual reality, augmented reality, and location based services. He argues that what laws do exist to analogize from (e.g., cases that considered open world video games) are not well suited to handle this new medium. While the virtual space of the past was firmly separated from reality and the core functions of intellectual property, the virtual space growing up around us is instead aimed at total integration and a blending of realities.

You may view and download a PDF of the complete issue here.

I hope the reader finds these pieces as compelling, thought provoking, and fun to read as they were to edit. As always, thank you for reading.

Sincerely,

Philip Simon
Editor in Chief
NYU Journal of Intellectual Property & Entertainment Law

Essay: What Remains of Fair Use for Software after Oracle v. Google?

Essay: What Remains of Fair Use for Software after Oracle v. Google?

Download a PDF version of this article here.

Simon J. Frankel and Ethan Forrest*

Two recent decisions from the Federal Circuit in the long-running litigation between Oracle and Google have upended the scope of copyright protection afforded to software. In both decisions, the court weighed in heavily on the side of strong copyright protection, even protecting the relatively functional code comprising application programming interfaces (APIs). In its most recent decision, the court found that Google’s use in its Android software of certain APIs from Java was not fair use as a matter of law—notwithstanding a jury verdict of fair use. This essay focuses on how the Federal Circuit treated the four statutory fair use factors and suggests that the court’s analysis, if applied by other courts, will make it very difficult for any use of software to qualify as a fair use. This is because, at every turn, the court’s application of the fair use factors favors the copyright owner, creating copyright risk for any borrowing of copyright code in a new program. It remains to be seen if this approach will impact how software developers build on preexisting programs.

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I “Think,” Therefore I Create: Claiming Copyright in the Outputs of Algorithms

I “Think,” Therefore I Create: Claiming Copyright in the Outputs of Algorithms

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Samantha Fink Hedrick*

Artificial intelligence (AI) has often been viewed as either an ally or an adversary—a powerful analytical system to be harnessed or a source of risk to be managed. In copyright law, AI has been treated much the same way, with academic debates focused primarily on whether AI-generated works should be owned by the AI itself, the human programmer who created the AI, or the end user. However, little attention has been paid to how the use of AI in the creative process can affect the validity of ownership claims asserted by any of these human actors in computer-generated works—a question that may have a far greater impact on creative industries.

In this article, I examine whether the use of AI as a tool of creation interferes with a human’s ability to claim copyright in the resulting works. First, I identify the various human actors who could plausibly own the copyright in the creative outputs of AI and evaluate the relative merits of their claims. Second, I analyze the doctrine of authorship to determine whether the use of AI presents a barrier to any human claiming authorship in these outputs, rather than which human should own the copyright in a computer-generated work. Finally, I explain how AI operates in the creative process and the various mechanisms of control available to humans to modify these outputs.

Ultimately, I argue that the humans who create and use AI retain sufficient control over the AI’s “decisions,” and that the use of AI therefore does not constitute a barrier to human ownership of copyrightable computer-generated works. The “original intellectual conceptions” represented in computer-generated works are still those of the humans creating and controlling the algorithms used in the creative process, not those of the AI itself. Like a camera, AI functions merely as a tool of creation, not as a sentient “author.”

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Speaking About Politics, A Fireable Offense? The Legality of Employee Speech Restrictions in the Entertainment Industry

Speaking  About Politics, A Fireable Offense? The Legality of Employee Speech Restrictions in the  Entertainment Industry

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Chloe L. Kaufman*

Despite the commonly shared belief that Americans have an undeniable right to freedom of speech, private-sector employees receive no constitutional protection for employer regulations of or reactions to their speech and federal and state statutes provide extremely limited protections. Consequently, on-air professionals in the entertainment industry, including Curt Schilling, Kathy Griffin, Colin Kaepernick, Jemele Hill and Tomi Lahren have been terminated, suspended or otherwise retaliated against after making expressions of political speech deemed controversial by the public and their respective employers.

Tomi Lahren’s dispute against her employer demonstrates the severity of a private employer’s ability to restrict political speech under U.S. law. By analyzing Lahren’s complaint and the existing legal framework, this Note highlights how private employers’ unrestricted power disproportionately affects employees in the entertainment industry, risks a chilling effect on private employee speech across industries, and consequently cuts against the foundational values of American democracy.

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Trademark Law in the Virtual Realism Landscape

Trademark Law in the Virtual Realism Landscape

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James Yang*

The recent rise of virtual reality, augmented reality, and other related technologies has created vast amounts of virtual space. Within this space, novel forms of trademark infringement and expressive use may arise. This note categorizes the above-mentioned technologies under the umbrella term of “ virtual realism” and examines trademark infringement in relation to such virtual realism technologies. In particular, the usage of physical-goods marks in virtual realism platforms is examined in relation to the usage of such marks in more traditional virtual platforms. This note argues that virtual realism platforms are less defendant-friendly in the trademark context than are traditional virtual platforms.

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JIPEL Vol. 8, No. 1 – Fall 2018

The NYU Journal of Intellectual Property and Entertainment Law is proud to present Volume 8 Issue 1 of the Journal. While PDFs of the individual articles may be found accompanying their respective posts, you may view and download a PDF of the complete issue here.

Legal journals are sometimes criticized as disconnected from the real world or labeled sounding chambers for academics. Like many of our favorite publications, our fall issue stands in stark contrast to this characterization. In what follows, you will find four discussions of real, pressing legal issues and practical legal solutions.

First, Professor Charles Tait Graves analyzes a striking disparity between the law of invention assignment contracts and the work for hire doctrine under the Copyright Act. To illustrate the divergence of the two areas of law, Professor Graves provides readers with a comprehensive legal background, a survey of the cases that have considered the conflict, and an enlightening discussion of the policy implications at play when the areas overlap. This article is the first of a three-part series in which Professor Graves calling attention to under-analyzed areas of intellectual property law that impact employee mobility.

Next, Professor Nicholas P. Terry invites readers to consider the future of healthcare given Amazon, Berkshire Hathaway, and JPMorgan Chase & Co.’s recently announced joint venture. Professor Terry begins with a case study of the expressed intentions and the past habits of a key member of the venture, Amazon. He then uses lessons from the case study to project a likely future of the healthcare venture before launching into a discussion of the possibilities of the venture, giving color to what some have hailed as the digital revolution of healthcare. Professor Terry concludes with an important discussion of existing regulatory structures as well as how hybrid healthcare should be regulated in the future.

Diving back into the world of copyright and authorship, Jennifer Yamin provides a critical analysis of how courts have applied the Aalmuhammed joint authorship test in the entertainment industry. Via an analysis of cases using the authorship test applied to screenplays, songs, and music videos, Ms. Yamin demonstrates the shortcomings of using the Aalmuhammed framework as a one-size-fits-all test. Ms. Yamin concludes by providing a starting point for reforming our evaluation of joint authorship.

Finally, Brette Trost reminds readers of the importance of intellectual property law. Using the 2016 Christopher Correa Major League Baseball scandal as a tangible example, Ms. Trost provides a riveting analysis of how the Economic Espionage Act can be used to prevent trade secret theft in professional sports. She further provides a compelling argument for why the Economic Espionage Act (that is, trade secret theft), rather than the Computer Fraud and Abuse Act, is the appropriate avenue for prosecuting behavior such as Correa’s, especially given the fluid nature of the talent pool in major league sports.

I hope that you find this issue both captivating and didactic, yet far from an academic sounding chamber. On behalf of the 2018-2019 JIPEL editorial board, thank you for reading.

Sincerely,

Philip Simon
Editor-in-Chief
NYU Journal of Intellectual Property & Entertainment Law

Is the Copyright Act Inconsistent with the Law of Employee Invention Assignment Contracts?

Is the Copyright Act Inconsistent with the Law of Employee  Invention Assignment Contracts?

Charles Tait Graves*

Download a PDF version of this article here

There is a latent conflict between the law of employee invention assignment contracts and the Copyright Act’s work for hire doctrine. Countless employees sign contracts specifying that, in most cases, the employer will own trade secrets and patentable inventions, as well as copyrightable works. When employees create in the workplace, these rules are largely uncontroversial. But when employees create something outside the workplace for a new venture, there can be a conflict between these two areas of intellectual property law. The work for hire doctrine is more favorable to employee-ownership than the law of invention assignment contracts. As a perhaps surprising result, where an employee’s outside-the-workplace creation might constitute both a trade secret and a copyrightable work, these two ownership tests can point in opposite directions. Further, when an employee prevails as to copyright ownership, there are good reasons why that result precludes an employer’s conflicting claim to trade secret ownership in the same work. This friction on the boundaries of two areas of intellectual property law has important policy ramifications for employees who create intellectual property on the side, while planning for their next job. **

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Analyzing Aalmuhammed v. Lee in the Context of Entertainment Industry Employment

Analyzing <i>Aalmuhammed v. Lee </i>in the Context of Entertainment Industry Employment

By: Jennifer Yamin*

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In Aalmuhammed v. Lee, the Ninth Circuit established a test for determining whether an individual contributor to a work may qualify as a joint author. The test identified three main factors: 1) the author must superintend the work by exercising control; 2) the putative co-authors must make objective manifestations of a shared intent to be co-authors; and 3) the audience appeal of the work must turn on both contributions and the share of each in its success cannot be appraised. Applying these factors, the court concluded that authorship rights could not be granted to a film consultant hired to assist in the creation of the film Malcolm X despite his sizable contributions to the final product.


By analyzing the unique interplay between intellectual property rights and entertainment industry employment law, this Note explores the harmful effects of the Aalmuhammed test on employment and unions across all types of entertainment works. The Note argues that the Ninth Circuit’s test hinders, rather than furthers Congress’s explicit constitutional duty to promote the growth of the arts. In doing so, the test establishes a dangerous precedent that is incompatible with the modern operation of the entertainment industry and paradoxically is detrimental to the very people it intends to protect: creators. The Note concludes that the Aalmuhammed test should no longer serve as the standard courts rely on to determine authorship rights and offers various proposals for reform.


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“Prime Health” and the Regulation of Hybrid Healthcare*

<p>“Prime Health” and the Regulation of Hybrid Healthcare<a name="_authorref1" href="#_author1">*</a></p>

By: Nicolas P. Terry**

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This article examines the possible constructs behind the announcement that Amazon, Berkshire Hathaway, and JPMorgan Chase & Co. are jointly building a new healthcare entity for their employees. In this article, I provide context by discussing and comparing the healthcare ambitions of the three largest information technology companies before arguing that various forms of hybrid entities will increase their footprint in healthcare data and delivery. The core of this discussion is a thought experiment about the nature of what I term “Prime Health.” That analysis is based initially on observations about Amazon’s existing culture and business model of Amazon. Thereafter I examine both what Prime Health could and should be. I argue that it will likely go beyond the pedestrian model of a very large self-funded group insurance plan; will disintermediate traditional healthcare insurers; and attempt to bring consumers and healthcare providers together into some type of online marketplace—an updated, privatized version of managed competition. In the final parts of the article I delve into the regulatory environment that hybrid healthcare generally, and Prime Health in particular, will face. This analysis includes federal device and data protection laws, a few idiosyncratic state laws, and a brief discussion of the problems inherent in the limited regulation of hybrid healthcare entities.

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