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Think Big! The Need for Patent Rights in the Era of Big Data and Machine Learning

Think Big! The Need for Patent Rights in the Era of Big Data and Machine Learning
By: Hyunjong Ryan Jin*   Download a PDF version of this article here  

Introduction

With AlphaGo’s triumph over the 9-dan Go professional Lee Sedol in March 2016, Google’s DeepMind team conquered the last remaining milestone in board game artificial intelligence.[1] Just nineteen years after IBM Deep Blue’s victory over the Russian chess grandmaster Garry Kasparov,[2] Google’s success exceeded expert predictions by decades.[3] AlphaGo demonstrated how machine learning algorithms could enable processing of vast amounts of data. Played out on a 19 by 19 grid, the number of possible configurations on a Go board is astronomical.[4] With near-infinite number of potential moves, conventional brute-force comparison of all possible outcomes is not feasible.[5] To compete with professional level human Go players, the gaming artificial intelligence requires a more sophisticated approach than the algorithms employed for chess — machine learning. The underlying science and implementation of machine learning was described in a Nature article two months prior to AlphaGo’s match with Lee. In the article, the Google team described how a method called “deep neural networks” decides between the insurmountable number of possible moves in Go.[6] The AlphaGo model was built by reinforcement learning from a database consisting of over thirty million moves of world-class Go players.[7] This allowed the algorithm to optimize the search space of potential moves, therefore reducing the required calculations to determine the next move.[8] In other words, the algorithm mimics human intuition based on the “experience” it gained from the database “fed” into the algorithm, which drastically increases computational efficiency by eliminating moves not worth subsequent consideration. This allows the algorithm to devote computational resources towards the outcomes of “worthwhile” moves. The advent of such powerful analytical tools, capable of mimicking human intuition alongside massive computation power, opens endless possibilities—early stage cancer detection[9], accurate weather forecasting,[10] prediction of corporate bankruptcies,[11] natural event detection,[12] and even prediction of elections.[13] For information technology (“IT”) corporations, investment in such technology is no longer an option, but a necessity. The question that this Note addresses is whether the current state of intellectual property law is adequate to harness the societal benefits that we hope to enjoy through the advances in machine learning. In particular, are patents necessary in the age of big data? And if they are, how should we apply patent protection in the field of big data and machine learning? Part I of this Note examines the need for intellectual property rights in machine learning and identifies the methods by which such protection may be achieved. The differences between trade secret, copyright and patent protection in software are discussed, followed by the scope of protection offered by each means. This background provides the basis to discuss the effectiveness of each method in the context of machine learning and big data innovations. Part II discusses the basics of the underlying engineering principle of machine learning and demonstrates how the different types of intellectual property protection may apply. Innovators may protect their contributions in machine learning by defending three areas—(1) the vast amount of data required to train the machine learning algorithm, (2) innovations in the algorithms itself including advanced mathematical models and faster computational methods, and (3) the resulting machine learning model and the output data sets. Likewise, there are three distinct methods of protecting these intellectual properties: patents, copyright, and secrecy.[14] This Note discusses the effectiveness of each method of intellectual property protection with three principles of machine learning innovation in mind: facilitating data sharing, avoiding barriers to entry from data network effects, and providing incentives to address the key technological challenges of machine learning. This Notes proposes that patents on computational methods adequately balance the concern of patent monopoly and promoting innovation, hence should be the primary means of intellectual property protection in machine learning. Part III then visits the legal doctrine of patentable subject matter starting with the United States Supreme Court’s Alice decision. While Alice imposed a high bar for software patents, the post-Alice Federal Circuit decisions such as Enfish, Bascom, and McRO suggest that certain types of software inventions are still patentable. Specifically, this section will discuss the modern framework pertinent to subject matter analysis: (1) inventions that are directed to improvements of computer functionality rather than an abstract idea, (2) inventions that contain an inventive concept, and (3) inventions that do not improperly preempt other solutions. The Note will apply this framework to innovations in machine learning. The Note proposes that patents for computational methods balance the need for intellectual property protection while permitting data sharing, paving the pathway for promoting innovation in machine learning. The Note further argues that machine learning algorithms are within patentable subject matter under 35 U.S.C. §101.

I. Need for Intellectual Property Rights in Machine Learning

He who receives an idea from me, receives instruction himself without lessening mine; as he who lights his taper at mine, receives light without darkening me.” – Thomas Jefferson “I’m going to destroy Android, because it’s a stolen product. I’m willing to go thermonuclear war on this. They are scared to death, because they know they are guilty.” – Steve Jobs The two quotes above demonstrate the conflicting views on protecting intangible ideas with intellectual property law. Thomas Jefferson implied that the free circulation of inventive ideas and thoughts would not dampen the progress of innovation nor disadvantage innovators. On the other hand, Steve Jobs exhibited fury over the similarity between the iOS and the Android OS. Why? Was it because his company was worse off due to the similarity between the two products? Would Apple have refrained from inventing the iPhone had it known others would enter the smartphone market? This section discusses the motives behind the grant of intellectual property rights and whether such protection should be extended to machine learning innovations. Basics of patent law, copyright law, and trade secret are introduced to provide the analytical tools for subsequent discussion on which type of intellectual property protection best promotes the socially-beneficial effects of machine learning.

A. Do We Need Intellectual Property Rights for Machine Learning?

The primary objectives of intellectual property rights are to encourage innovation and to provide the public with the benefits of those innovations.[15] In the context of machine learning, it is not clear whether we need any additional incentives to promote participation in this field. Machine learning is already a “hot field,” with countless actors in industry and academia in active pursuit to keep pace.[16] Hence investment incentivizing may not be a valid justification for granting intellectual property rights in machine learning. Rather, such protection is crucial to promote competition and enhance public benefits. The quality of inferences that may be drawn from a given data set increases exponentially as the aggregation diversifies, which is why cross-industry data aggregation will greatly enhance the societal impact of machine learning.[17] Companies will need to identify new data access points outside of their own fields to gain access to other data sets to further diversity their data. Yet the incentive structures of behemoth corporations may not be well-suited to identify and grow niche markets.[18] It would be up to the smaller, specialized entities to find the gaps that the larger corporations overlooked and provide specialized services addressing the needs of that market. Protective measures that assist newcomers to compete against resource-rich corporations may provide the essential tools for startups to enter such markets. Sufficient intellectual property protection may serve as leverage that startups may use to gain access to data sets in the hands of the Googles and Apples of the world, thus broadening the range of social benefits from machine learning.

B. The Basics of Patent Law

To 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” – United States Constitution, Article I, § 8 The United States Constitution explicitly authorizes Congress to promote useful arts by granting inventors the exclusive rights of their discoveries. Such constitutional rights stems from two distinct bases — (1) a quid pro quo where the government issues a grant of monopoly in exchange for disclosure to society, and (2) property rights of the inventor. The purpose for such rights is explicitly stated in the Constitution—to promote new inventions. The goal is to prevent second arrivers who have not invested in the creation of the initial invention from producing competing products and services at a lower price, undercutting the innovator whose costs are higher for having invested to create the invention. As an incentive for innovators willing to invest in new, useful arts, the patent system provides the innovator rights to exclude others from practicing the invention. Another purpose of such rights is the concept of “ “mining rights.” Akin to the grant of mining rights to the owner in efforts to suppress aggressive mining, the inventor should have the right to define and develop a given field by excluding other people from the frontiers of that knowledge. Considering the importance of industry standards in modern electronics, such a purpose acknowledges the importance of early stage decisions that may define the trajectory of new technological advances.

C. The Thin Protection on Software Under Copyright Law

The Copyright Act defines a “computer program” as “a set of statements or instructions to be used directly or indirectly in a computer to bring about a certain result.”[19] Though it may be counterintuitive to grant copyright protection for “useful arts” covered by patents, Congress has explicitly mandated copyright protection for software.[20] However, as will be discussed below, copyright protection of software has been significantly limited due to case law. Copyright protects against literal infringement of the text of the program. Source code, code lines that the programmers “author” via computer languages such as C++ and Python, is protected under copyright as literary work.[21] In Apple v. Franklin Corp., the Third Circuit Court of Appeals held that object code, which is the product of compiling the source code, is also considered a literary work.[22] Given that compiled code is a “translation” of the source code, this ruling seems to be an obvious extension of copyright protection. Removing the copyright distinction between source code and object code better reflects the nature of computer languages such as Perl, where the source code is not translated into object code but rather is directly fed into the computer for execution. However, the scope of protection on either type of code is very narrow. The copyright system protects the author against literal copying of code lines. This leaves open the opportunity for competitors to avoid infringement by implementing the same algorithm using different text. Fortunately, in addition to protection against literal copying of code, copyright law may provide some protection of the structure and logical flow of a program. Equivalent to protecting the “plot” of a novel, the Second Circuit Court of Appeals ruled that certain elements of programming structure are considered an expression (copyrightable) rather than idea (not copyrightable), extending copyright protection to non-literal copying.[23] The Computer Associates International v. Altai court applied a three-step test to determine whether a computer program infringes other programs—(1) map levels of abstraction of the program; (2) filter out protectable expression from non-protectable ideas; and (3) compare which parts of the protected expression are also in the infringing program.[24] The merger doctrine is applied to step two of the Altai test to limit what may be protected under copyright law. Under the merger doctrine, code implemented for efficiency reasons is considered as merged with the underlying idea, hence not copyrightable.[25] Since most algorithms are developed and implemented for efficiency concerns, the Altai framework may prevent significant aspects of software algorithms from receiving copyright protection. This means that for algorithms related to computational efficiency, patents may provide significantly more meaningful protection than copyright. The Federal Circuit, in the 2016 case McRO Inc. v. Bandai Namco Games America Inc., ruled that patent claims with “focus on a specific means or method that improves the relevant technology” may still be patentable.[26] Although preemption concerns may impede patentability, exemption of patent right by preemption is narrow compared to that of copyright by the merger doctrine. Scène à faire doctrine establishes yet another limitation on copyright for computer programs. Aspects of the programs that have been dictated by external concerns such as memory limits, industry standards and other requirements are deemed as non-protectable elements.[27] For mobile application software, it is difficult to imagine programs that are not restricted by form factors such as mobile AP computation power, battery concerns, screen size, and RAM limitations. As for machine learning software, the algorithms determine the “worthiness” of computation paths based on conserving computational resources. The external factors that define the very nature and purpose of such machine learning algorithms may exempt them from copyright protection.

D. Comparing Trade Secret and Non-disclosures with Patents

The crucial distinction between trade secret and patent law is secrecy. While patent applicants are required to disclose novel ideas to the public in exchange for a government granted monopoly, trade secret requires owners to keep the information secret. Though trade secret protection prevents outsiders from acquiring the information by improper means, it does not protect the trade secret against independent development or even reverse engineering of the protected information. In trade secret doctrine, the existence of prior disclosed art is only relevant for discerning whether the know-how is generally known, a different and simpler analysis than the issue of novelty in patent law.[28] The United States Supreme Court has specified in Kewanee Oil that all matters may be protected under trade secret law, regardless whether it may or may not be patented.[29] The Kewanee Oil court predicted that inventors would not resort to trade secret when offered a presumptively stronger protection by patent law:
“The possibility that an inventor who believes his invention meets the standards of patentability will sit back, rely on trade secret law, and after one year of use forfeit any right to patent protection, 35 U.S.C. § 102(b), is remote indeed.”[30]
Trade secret is an adequate form of protection for innovators that are concerned with the limits of what may be patentable. The secrecy requirement of trade secret inherently provides protection that may potentially outlive any patent rights, provided a third party does not independently acquire the secret. This coincides with an interesting aspect of machine learning and big data—the need for massive amounts of data. Developers need data to “train” the algorithm, and increase the accuracy of the machine learning models. Companies that have already acquired massive amounts of data may opt to keep their data secret, treating the aggregated data as a trade secret. In addition to the amount of amassed data, companies have all the more reason to keep their data secret if they have access to meaningful, normalized data. Even if a company amasses an enormous amount of data, the data sets may not be compatible with each other. Data gathered from one source may have different reference points or methodologies that are not immediately compatible with data from another source. This raises the concern of “cleaning” massive amounts of data.[31] Such concerns of data compatibility mean that parties with access to a single, homogenous source of high quality data enjoy a significant advantage over parties that need to pull data from multiple sources. However, data secrecy may not be a suitable strategy for companies that are aiming for cross-industry data aggregation. Institutions such as Global Alliance for Genomics and Health are promoting data sharing between research participants. The Chinese e-commerce giant Alibaba announced a data sharing alliance with companies such as Louis Vuitton and Samsung to fight off counterfeit goods.[32] To facilitate the development of technology and to mitigate risks, various companies and research institutions across diverse fields are engaging in joint development efforts and alliances. Seeking protection under trade secret runs against this trend of engaging in effective cross-industry collaboration. Yet there are countervailing arguments that trade secret promotes disclosure by providing legal remedies that can replace the protection of secrets.[33] Parties can sidestep the limitations of trade secrets by sharing proprietary information under the protection of contract law. While data sharing practices may void trade secret protection, the nature of continued accumulation of data and carefully drafted contractual provisions may provide sufficient protection for the data owners.

II. Placing Machine Learning within Intellectual Property Law

Learning is any process by which a system improves performance from experience.” – Herbert Simon, Nobel Prize in Economics 1978. The concept of machine learning relates to computer programs that have the capability to improve performance based on experience, with limited intervention of the programmer.[34] Machine learning models have the capability to automatically adapt and customize for individual users, discover new patterns and correlations from large databases, and automate tasks that require some intelligence by mimicking human intuition.[35] This section dissects the mechanics of machine learning to identify the aspects of machine learning innovations that are at issue as intellectual property.

A. Machine Learning Basics

Machine learning methods are divided into two different approaches—supervised machine learning and unsupervised machine learning. For supervised machine learning, models are typically established by applying “labeled” sets of data to a learning algorithm. Labeled data refers to data sets that have both relevant features and the target results that the programmer is interested in. For example, we may be interested in developing a machine learning model that classifies images with dogs in them. The data sets for supervised machine learning would indicate whether a given images has dogs or not. The learning process begins with the algorithm fitting trends found in the training data set into different types of models. The algorithm compares the prediction errors of the models by inputting the validation set data into each model, measuring their accuracy. This allows the algorithm to decide which of the various models is best suited as the resulting machine learning model. Finally, the machine learning model is then evaluated by assessing the accuracy of the predictive power of the model. The developed model is then applied to data without a correct answer to test the validity of the model. In unsupervised machine learning, the data sets are “unlabeled” data, which may not contain the result that the programmer is interested in. Returning to our dog image classification example, data sets for unsupervised machine learning will have pictures of various animals that are not labeled—the computer does not know which pictures are associated with dogs. The unsupervised machine learning algorithm develops a model that extracts common elements from the picture, teaching itself the set of features that makes the subject of the picture a dog. In essence, unsupervised machine learning uses data sets that do not have specific labels fed into the algorithm for the purpose of identifying common trends embedded in that data set. The objective of developing such machine learning models varies. Sometimes the goal is to develop a prediction model that can forecast a variable from a data set. Classification, which assigns records to a predefined group, is also a key application of the algorithm. Clustering refers to splitting records into distinct groups based on the similarity within such group. Association learning identifies the relationship between features.         Figure 1. Overview of Machine Learning Model Development   Figure 1 illustrates the overall process of machine learning model development. The learning process of machine learning algorithms begins with aggregation of data. The data originates from an array of diverse sources ranging from user input, sensor measurement, or monitoring of user behavior.[36] The data sets are then preprocessed. The quality of data presents a challenge in improving machine learning models—any data that has been manually entered contains the possibility of error and bias.[37] Even if the data is collected through automatic means, such as health monitoring systems or direct tracking of user actions, the data sets require preprocessing to account for systematic errors associated with the recording device or method.[38] This includes data skews due to difference between individual sensors, errors in the recording or transmission of data, and incorrect metadata about the sensor.[39] Simply put, the data sets may have differing reference points, embedded biases, or differing formats. The “cleaning” process accommodates for the data skews. The objective of machine learning models is to identify and quantify “features” from a given data set. The term “feature” refers to individually measurable property of an observed variable.[40] From the outset, there may be an extensive list of features that are present in a set of data. It would be computationally expensive to define and quantify each feature, and then to identify the inter-feature relationships, from massive amounts of data. Due to the high demand for the computational power required for processing massive amounts of data, dedication of computational resources to features that are outside the scope of the designer’s interest would be a waste of such limited computational capacity.[41] The machine learning algorithm reduces waste of computational resources by applying dimensionality reduction to the pre-processed data sets.[42] The algorithm can identify an optimal subset of features by reducing the dimension and the noise of the data sets.[43] Dimensionality reduction allows the machine learning model to achieve higher level of predictive accuracy, increased speed of learning, and improves the simplicity and comprehensibility of the results.[44] However, the reduction process has limitations—reducing dimensionality inevitably imposes a limit on the amount of insights and information that may be extracted from the data sets. If the machine learning algorithm discerns a certain feature, the model would not be able to draw inferences related to said feature. Following dimensionality reduction, the machine learning algorithm attempts to fit the data sets into preset models. Typically, three different types of data are fed into the machine learning model—training set, validation set, and test set.[45] The machine learning algorithm “trains” the model by fitting the training set data into various models to evaluate the accuracy of each selection. Then the validation set is used to estimate error rates of each model when applied to data outside the training set that was used to develop each model. Through this process, the machine learning algorithm selects the model that best describes the characteristics and trends of the target features from the test and validation sets.[46] The test set is then used to calculate the generalized prediction error, which is reported to the end user for proper assessment of the predictive power of the model.[47] Simply put, the training test and validation set is used to develop and select a model that reflects the trends of the given data set, and the test set is used to generate a report on the accuracy of the selected model. The crucial elements in developing a machine learning model are (1) training data, (2) inventions related to the machine learning algorithm such as the method of preprocessing the training data, the method of dimensional reduction, feature extraction, and the method of model learning/testing, and (3) the machine learning model and output data.[48] An ancillary element associated with the three elements above is the human talent that is required to implement such innovation.[49] Innovators in the field of machine learning may protect their investments by protecting one or more of the elements listed above. The difference between training data and output data, as well as the difference between the machine learning algorithm and the machine learning model, are best illustrated with an example. Let us assume a credit card company wants to use machine learning to determine whether the company should grant a premium credit card to a customer. Let us further assume that the company would prefer to grant this card to customers that would be profitable to the company while filtering out applicants that are likely to file for bankruptcy. Data sets about prior applicant information would correspond to training data. The company would apply a mathematical method of extracting insight about the correlation between features and the criteria that the company wants to evaluate (e.g., profitable for the firm or likely to file bankruptcy). The mathematical methods are referred as machine learning algorithms. The resulting mechanism, such as a scoring system, that determines the eligibility of card membership is the machine learning model. The credit card applicant’s personal data would be the input data for the machine learning model, and the output data would include information such as expected profitability of this applicant and likelihood of bankruptcy for this applicant.

B. Industry Trends in Machine Learning

Discussing incentive structures and trends behind the machine learning industry is essential in identifying adequate methods of intellectual property rights. The current trends in the world of machine learning will predict what intellectual property regime is most useful to companies to protect their work. The United States has chronically struggled to maintain adequate supply of talent in the high-tech industry, a deficit of talent that continues in the field of machine learning.[50] From a report by the McKinsey Global Institute, the United States’ demand for talent in deep learning “could be 50 to 60 percent greater than its projected supply by 2018.”[51] Coupled with the dearth of machine learning specialists, the short employment tenure of software companies further complicates the search for talent. Software engineers from companies such as Amazon and Google have reported an average employment tenure of one year.[52] While some parts of the high attrition rate may be attributed to cultural aspects of the so-called “Gen Y” employees, the “hot” demand for programming talent has significant impact on the short employee tenure.[53] Job mobility within the software industry is likely to increase as the “talent war” for data scientist intensifies. Employee mobility and California’s prohibition against “covenants not to compete” have been accredited as a key factor behind the success of Silicon Valley.[54] Another trend in the field is the rapid advances in machine learning methods. Due to the fast-paced development of the field, data scientists and practitioners have every reason to work with companies that would allow them to work at the cutting edge of machine learning, using the best data sets. This may influence the attrition rates and recruiting practices of the software industry mentioned above.[55] Eagerness of employees to publish scientific articles and contribute to the general machine learning committee may be another factor of concern. To accelerate innovation by repurposing big data for uses different from the original purpose, and to form common standards for machine learning, more industries are joining alliances and collaborations.[56] Cross-industry collaborations may enable endless possibilities. Imagine the inferences that may be drawn by applying machine learning methods to dietary data from home appliances, biometric data, and data on the weather patterns around the user. Putting privacy nightmares aside, machine learning with diverse data sets may unlock applications that were not previously possible. More companies are attempting to capitalize on commercial possibilities that data sharing may unlock.[57]

C. Machine Learning Innovators – Protect the Data or Inventions?

Though it may seem intuitive that patent protection may be the best option, innovations in machine learning may not need patent protection. Trade secret protection on the data sets may be sufficient to protect the interests of practicing entities while avoiding disclosure of their inventions during the patent prosecution process. Furthermore, numerous software patents have been challenged as unpatentable abstract subject matter under 35 U.S.C. §101 since the Alice decision in 2014.[58] Though subsequent decisions provided guidelines for types of software patents that would survive the Alice decision, it is not clear how the judiciary will view future machine learning patents. Such issues raise the question about the patentability of machine learning – should we, and can we, resort to patents to protect machine learning inventions? Following the discussion on the building blocks of machine learning and recent emerging trends in the field, this section discusses the mode and scope of protection that current legal system provides for each element pertinent to innovation in machine learning. The possible options for protecting innovations are (1) non-disclosure agreements and trade secret law, (2) patent law, and (3) copyright. The three options for protection may be applied to the three primary areas of innovation—(1) training data, (2) inventions related to computation, data processing, and machine learning algorithms, and (3) machine learning models and output data. This discussion will provide context about the methods of protection for innovations in machine learning by examining the costs and benefits of the various approaches.
1. Protecting the Training Data—Secrecy Works Best
Access to massive amounts of training data is a prime asset for companies in the realm of machine learning. The big data phenomenon, which triggered the surge of interest in machine learning, is predicated on the need for practices to analyze large data resources and the potential advantages from such analysis.[59] Lack of access to a critical mass of training data prevents innovators from making effective use of machine learning algorithms. Previous studies suggest that companies resent sharing data with each other.[60] Michael Mattioli discusses the hurdles against sharing data and considerations involved with reuse of data in his article Disclosing Big Data.[61] Indeed, there may be practical issues that prevent recipients of data from engaging in data sharing. Technical challenges in comparing data from different sources, or inherent biases embedded in data sets may be reasons that complicate receiving outside data.[62] Mattioli also questions the adequacy of the current patent and copyright system to promote data sharing and data reuse—information providers may prefer not to disclose any parts of their data due to the rather thin legal protection for databases.[63] Perhaps this is why secrecy seems to be the primary method of protecting data.[64] The difficulty of reverse engineering to uncover the underlying data sets promotes the reliance on non-disclosure.[65] Compared to the affirmative steps required to maintain trade secret protection if the data is disclosed, complete non-disclosure may be a cost effective method of protecting data.[66] Companies that must share data with external entities may exhibit higher reliance on contract law rather than trade secret law. In absence of contract provisions, it would be a challenge to prove that the trade secret has been acquired by misappropriation of the recipient party. The “talent war” for data scientists may also motivate companies to keep the training data sets secret. With a shortage of talent to implement machine learning practices and rapid developments in the field, retaining talent is another motivation for protecting against unrestricted access to massive amounts of data. Companies may prefer exclusivity to the data sets that programmers can work with — top talents in machine learning are lured to companies with promises of exclusive opportunities to work with massive amounts of data.[67] The rapid pace of development in this field encourages practitioners to seek opportunities that provide the best resources to develop their skill sets. This approach is effective since a key limitation against exploring new techniques in this field is the lack of access to high quality big data. Overall, secrecy over training data fits well with corporate recruiting strategies to retain the best talents in machine learning. Non-disclosure and trade secret protection seems to be the best mode of protection. First, despite the additional legal requirements necessary to qualify as trade secrets, trade secret protection fits very well with non-disclosure strategy. On the other hand, patent law is at odds with the principle of non-disclosure. While trade secret law provides companies protection without disclosing information, patent law requires disclosure in exchange for monopolistic rights. Furthermore, neither patent nor copyright provide adequate protection for underlying data. Patent law rewards creative concepts and inventions, not compiled facts themselves. Copyright may protect labeling or distinct ways of compiling information, but does not protect underlying facts. Also, as a practical matter, the difficulty of reverse engineering of machine learning models does not lend well to detecting infringement. Analysis of whether two parties used identical training data would not only be time consuming and costly, but may be fundamentally impossible. If companies were to seek protection of training data, it would be best to opt for secrecy by non-disclosure. This would mean companies would opt out of the cross-industry collaborations that were illustrated above. This may be less of a concern for innovation, as companies may still exchange output data as means of facilitating cross-industry collaboration.
2. Protecting the Inventions—Patent Rights Prevail
Adequate protection over inventive approaches in processing data is becoming increasingly important as various industries begin to adopt a collaborative alliance approach in machine learning. Cross-industry collaboration requires implementation of methods such as preprocessing diverse data sets for compatibility. As the sheer amount of data increases, more processing power is required. The machine learning algorithm needs to maintain a high degree of dimensionality to accurately identify the correlations between a high number of relevant features. The need for more innovative ideas to address such technological roadblocks will only intensify as we seek more complex applications for machine learning. The three primary areas where novel ideas would facilitate innovations in machine learning are pre-training data processing, dimensional reduction, and the machine learning algorithm. Access to massive amounts of data alone is not sufficient to sustain innovation in machine learning. The raw data sets may not be compatible with each other, requiring additional “cleaning” of data prior to machine learning training.[68] The data provided to the machine learning algorithm dictates the result of the machine learning model, hence innovations in methods to merge data with diverse formats is essential to enhancing the accuracy of the models. As cross-industry data analysis becomes more prominent, methods of merging data will have more significant impact on advancing the field of machine learning than mere collection of large data sets. Cross-industry data sharing would be useless unless such data sets are merged in a comparable manner.[69] Companies can opt to protect their inventive methods by resorting to trade secret law. The difficulty of reverse engineering machine learning inventions, coupled with the difficulty of patenting software methods provides incentives for innovators to keep such inventions secret from the public. However, two factors would render reliance on non-disclosure and trade secret ineffective—frequent turnover of software engineers and rapid speed of development in the field. Rapid dissemination of information from employment mobility may endanger intellectual property protection based on secrecy. Furthermore, while the law will not protect former employees that reveal trade secrets to their new employers, the aforementioned fluid job market coupled with general dissemination of information make it difficult to distinguish between trade secrets from former employment and general knowledge learned through practice. The difficulties of reverse engineering machine learning models work against the trade secret owner as well in identifying trade secret misappropriation—how do you know others are using your secret invention? The desire for software communities to discuss and share recent developments in the field does not align well with the use of secrecy against innovations in machine learning. Secrecy practices disincentivize young data scientists from joining due to the limits against gaining recognition.[70] The rapid development of machine learning technology also presents challenges against reliance on trade secret law. Secret methods may be independently developed by other parties. Neither trade secret law nor non-disclosure agreements protect against independent development of the same underlying invention.[71] Unlike training data, machine learning models, or the output data, there are no practical limitations that impedes competitors from independently inventing new computational methods of machine learning algorithms. With such a fluid employment market, high degree of dissemination of expertise, and rapid pace of development, patent protection may provide the assurance of intellectual property protection for companies developing inventive methods in machine learning. Discussions on overcoming the barriers of patenting software will be presented in later sections.[72]
3. Protecting the Machine Learning Models and Results—Secrecy Again
The two primary products from applying the machine learning algorithms to the training data are the machine learning model and the accumulation of results produced by inputting data into the machine learning model. The “input data” in this context may refer to individual data that is analyzed by the insights gained from the machine learning model. In a recent article, Brenda Simon and Ted Sichelman discuss the concerns of granting patent protection for “data-generating patents,” which refers to inventions that generate valuable information in their operation or use.[73] Exclusivity based on patent protection may be extended further by trade secret protection over the data that has been generated by the patented invention.[74] Simon and Sichelman argue that the extended monopoly over data may potentially overcompensate inventors since the “additional protection was not contemplated by the patent system[.]”[75] Such expansive rights will cause excessive negative impact on downstream innovation and impose exorbitant deadweight losses.[76] The added protection over the resulting data derails the policy rationale behind the quid pro quo exchange between the patent holder and the public by excluding the patented information from public domain beyond the patent expiration date.[77] The concerns addressed in data-generating patents also apply to machine learning models and output data. Corporations may obtain patent protection over the machine learning models. Akin to a preference for secrecy for training data, non-disclosure would be the preferred mode of protection for the output data. The combined effect of the two may lead to data network effects where users have strong incentives to continue the use of a given service.[78] The companies that have exclusive rights over the machine learning model and output data gather more training data, increasing the accuracy of their machine learning products. The reinforcement by monopoly over the means of generating data allows few companies to have disproportionately strong dominance over their competitors.[79] Market dominance by data-generating patents becomes particularly disturbing when the patent on a machine learning model preempts other methods in the application of interest. Trade secret law does not provide protection against independent development. However, if there is only one specific method to obtain the best output data, no other party would be able to create the output data independently. The exclusive rights over the only methods of producing data provides means for the patent holder to monopolize both the patent and the output data.[80] From a policy perspective, the excessive protection does seem troubling. Yet such draconian combinations are less feasible after the recent rulings on patentable subject matter of software, which will be discussed below.[81] Mathematical equations or concepts are likely directed to an “abstract concept,” thus will be deemed directed to a patent ineligible subject matter.[82] Furthermore, though recent cases in the Federal Circuit have found precedents where software patents passed the patentable subject matter requirement, those cases expressed limitations against granting patents that would improperly preempt all solutions to a particular problem.[83] The rapid pace of innovation in the field of machine learning compared to the rather lengthy period required to obtain patents may also dissuade companies from seeking patents. Overall, companies have compelling incentives to rely on non-disclosure and trade secrets to protect their machine learning models instead of seeking patents. The secrecy concerns regarding training data applies to machine learning models and the output data as well. Non-disclosure would be the preferred route of obtaining protection over the two categories. However, use of non-disclosure or trade secrets to protect machine learning models and output data presents challenges that are not present in the protection of training data. The use of secrecy to protect machine learning models or output data conflicts with recruiting strategies to hire and retain top talent in the machine learning field. The non-disclosure agreements limit the employee’s opportunity to gain recognition in the greater machine learning community. In a rapidly developing field where companies are having difficulty hiring talent, potential employees would not look fondly on corporate practices that limit avenues of building a reputation within the industry.[84] Companies have additional incentives to employ a rather lenient secrecy policy for machine learning models and the output data. They have incentives to try to build coalitions with other companies to monetize on the results. Such cross-industry collaboration may be additional source of income for those companies. The data and know-how that Twitter has about fraudulent accounts within their network may aid financial institutions such as Chase with novel means of preventing wire fraud. The reuse of insights harvested from the large amount of raw training data can become a core product the companies would want to commercialize. Data reuse may have an incredible impact even for applications ancillary to the primary business of the company. Interesting aspects of disclosing machine learning models and output data are the difficulty of reverse engineering and consistent updates. If the company already has sufficient protection over the training data and/or the computational innovations, competitors will not be able to reverse engineer the machine learning model from the output data. Even with the machine learning model, competitors will not be able to provide updates or refinements to the model without the computational techniques and the sufficient data for training the machine learning algorithm. In certain cases, the result data becomes training data for different applications, which raises concerns of competitors using the result data to compete with the innovator. Yet the output data would contain less features and insights compared to the raw training data that the innovator possesses, and therefore would inherently be at a disadvantage when competing in fields that the innovator has already amassed sufficient training data. Grant of patents on machine learning models may incentivize companies to build an excessive data network while preempting competitors from entering competition. This may not be feasible in the future, as technological preemption is becoming a factor of consideration in the patentable subject matter doctrine. Companies may use secrecy as an alternative, yet may have less incentives to keep secrecy compared to the protection of training data.

D. Need of Patent Rights for Machine Learning Inventions in the Era of Big Data

The current system, on its surface, does not provide adequate encouragement for data sharing. If anything, companies have strong incentives to avoid disclosure of their training data, machine learning model, and output data. Despite these concerns, data reuse may enable social impacts and advances that would not be otherwise possible. Previous studies have pointed out that one of the major barriers preventing advances in machine learning is the lack of data sharing between institutions and industries.[85] Data scientists have demonstrated that they were able to predict flu trends with data extracted from Twitter.[86] Foursquare’s location database provides Uber with the requisite data to pinpoint the location of users based on venue names instead of addresses.[87] Information about fraudulent Twitter accounts may enable early detection of financial frauds.[88] The possibilities that cross-industry data sharing may bring are endless. To encourage free sharing of data, companies should have a reliable method of protecting their investments in machine learning. At the same time, protection based on non-disclosure of data would defeat of purpose of promoting data sharing. Hence protection over computation methods involved with machine learning maintains the delicate balance between promoting data sharing and protecting innovation. Protection over inventions in the machine learning algorithm provides one additional merit other than allowing data sharing and avoiding the sort of excessive protection that leads to a competitor-free road and data network effects. It incentivizes innovators to focus on the core technological blocks to the advancement of technology, and encourages disclosure of such know-how to the machine learning community. Then what are the key obstacles in obtaining patents in machine learning inventions? While there are arguments that the definiteness requirement of patent law is the primary hurdle against patent protection of machine learning models due to reliance on subjective judgment, there is no evidence that the underlying inventions driving big data faces the same challenge.[89] Definiteness may be overcome by providing reasonable certainty for those skilled in the art of defining what the scope of the invention is at the time of filing.[90] There is no inherent reason why specific solutions for data cleaning, enhancement of computation efficiency, and similar inventions would be deemed indefinite by nature. Since the United States Supreme Court invalidated a patent on computer implemented financial transaction methods in the 2014 Alice decision, the validity of numerous software and business method patents were challenged under 35 U.S.C. §101.[91] As of June 8th, 2016, federal district courts invalidated 163 of the 247 patents that were considered under patentable subject matter—striking down 66% of challenged patents.[92] The U.S. Court of Appeals for the Federal Circuit invalidated 38 of the 40 cases it heard.[93] Arguably, the public benefits more from such high rates of post-issuance invalidity. The public still has access to the disclosures from the patents and patent applications. In reliance on granted patents, companies may have already invested in growing related businesses, catering to the need of consumers. At the same time, the patent holder’s monopolistic rights have been shortened as the result of litigation. Effectively, the price that the public pays to inventors in exchange for the benefits of disclosure is reduced. Yet the high degree of invalidity raises several concerns for the software industry. Smaller entities, lacking market influence and capital, have difficulty competing against established corporations without the monopolistic rights granted through the patent system. Investors become hesitant to infuse capital into startups for fear that invalidity decreases the worth of patents. Reliance on trade secret has its own limitations due to the disclosure dilemma—the inventor needs to disclose the secret to lure inventors, but risks losing secrecy in the process. Copyright law does not provide appropriate protection. The restrictions imposed by the merger doctrine and scène à faire doctrine constrain copyright protection of software. Though copyright provides an alternative method of protecting literal copying of code, it does little to protect the underlying software algorithms and innovation. Ultimately, the increase of alliances and collaboration provides incentives for parties to obtain patent rights. Reliance on trade secret or copyright are not suitable methods of protecting their intellectual property. Furthermore, market power or network effects alone cannot sufficiently mitigate the risks involved with operating a business. Patents become even more important for startups since patents provide investors with assurance that in the worst case, the patents may still serve as potential collateral.        

III. Patentability of Machine Learning Innovations in the Era of Big Data

  Patentable subject matter continues to be a barrier for patenting innovations in software. Additional doctrines such as enablement, written description, and obviousness are also serious obstacles against obtaining patents, yet such requirements are specific to each claimed invention and the draftsmanship of claims. Subject matter is considered a broader, categorical exclusion of patent rights. This section explores the current landscape of the patentable subject matter doctrine in the software context.

A. Alice: The Legal Framework of Patentable Subject Matter in Software

The complexity involved with software, coupled with the relatively broad scope of software patents, has presented challenges in identifying the boundaries of the claims.[94] Many members of the software community detest imposing restrictions on open source material and attest that many key innovations in algorithms are rather abstract.[95] Such hostility against patenting software has raised the question of whether patent rights should be the proper method of protecting innovations in software. Alice was a case that embodied such opposition to the grant of software patents. The case involved patents on computerized methods for financial trading systems that reduce “settlement risk” when only one party to financial exchange agreement satisfies its obligation.[96] The method proposed the use of a computer system as a third-party intermediary to facilitate the financial obligations between parties.[97] The United States Supreme Court ruled that the two-step test established from Mayo governed all patentable subject matter questions.[98] In particular, for the abstract idea context, the Supreme Court established the following two-step framework for patentable subject matter of software inventions:  
1. Step one: “[D]etermine whether the claims at issue are directed to a patent-ineligible concept. If so, the Court then asks whether the claim’s [additional] elements, considered both individually and ‘as an ordered combination,’ ‘transform the nature of the claim’ into a patent-eligible application.”[99]
 
2. Step two: “[E]xamine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application. A claim that recites an abstract idea must include ‘additional features’ to ensure that the [claim] is more than a drafting effort designed to monopolized the [abstract idea]” which requires “more than simply stat[ing] the [abstract idea] while adding the words ‘apply it.’”[100]
  The Alice Court found that the patent on financial transaction was “directed to a patent-ineligible concept: the abstract idea of intermediated settlement,” and therefore failed step one.[101] Furthermore, the Court ruled that the claims did “no more than simply instruct the practitioner to implement the abstract idea of intermediated settlement on a generic computer” and did not provide an inventive concept that was sufficient to pass step two.[102]

B. The post-Alice cases from the Federal Circuit

The Alice framework was considered as a huge setback for the application of patentable subject matter doctrine to software. It was a broad, categorical exclusion of certain inventions that were deemed “directed to” an abstract idea, natural phenomenon, or law of nature. The biggest misfortune was the lack of guidance in the Alice decision on the threshold for such categorical exclusion—we were left without any suggestions on the type of software patents that would be deemed as patentable subject matter. The recent line of cases in the Federal Circuit provides the software industry with the much-needed clarification on the standards that govern patentability of software inventions. Enfish v. Microsoft, decided on March 2016, involved a “model of data for a computer database explaining how the various elements of information are related to one another” for computer databases.[103] In June 2016, the Federal Circuit decided another case on the abstract idea category for patentable subject matter. Bascom Global v. AT&T Mobility is on a patent disclosing an internet content filtering system located on a remote internet service provider (ISP) server.[104] Shortly after Bascom, the Federal Circuit decided McRO v. Bandai Namco Games in September 2016.[105] The case ruled that an automated 3D animation algorithm that renders graphics in between two target facial expressions is patentable subject matter.[106] The rulings from the Federal Circuit on the aforementioned three cases provide guidelines along the two-step Alice test of patentable subject matter. The software patents in Enfish and McRO were deemed “directed to” a patent eligible subject matter, informing the public of what may pass the first set of the Alice test. Bascom failed the first step.[107] Yet the court ruled that those patents had inventive concepts sufficient to transform a patent ineligible subject matter into a patent eligible application. Combined together, the three cases give more certainty in what may pass the 35 U.S.C. §101 patentable subject matter inquiry. Reiterating the Alice test, whether an invention is a patentable subject matter is determined by a two-step process—(1) is the invention directed to, rather than an application of, an abstract idea, natural phenomenon, or law of nature, and even if so, (2) do the elements of the claim, both individually and combined, contain an inventive concept that transforms this invention into a patent-eligible application? The Federal Circuit fills in the gaps that were left unexplained from the Alice ruling.
1. The Federal Circuit’s Standard for Alice Step One
The Enfish court discussed what constitutes an abstract idea at the first step of the Alice inquiry. Judge Hughes instructs us to look at whether the claims are directed to a specific improvement rather than an abstract idea. In this case, the patent provides the public with a solution to an existing problem by a specific, non-generic improvement to computer functionality. The Enfish court ruled that such invention is patent eligible subject matter.[108] McRO also ruled that the facial graphic rendering for 3D animation was not an abstract concept. Here, the Federal Circuit again emphasized that a patent may pass step one of the Alice test if the claims of the patent “focus on a specific means or method that improves the relevant technology.”[109] The McRO court also noted that preemption concerns may be an important factor for the 35 U.S.C. §101 subject matter inquiry—that improper monopolization of “the basic tools of scientific and technological work” is a reason why such categorical carve outs against granting patents on abstract ideas exist.[110] Bascom provides the standards on what would fail step one of the Alice patentable subject matter inquiry. If the patent covers a conventional, well-known method in the field of interest, then the invention would be considered abstract. This is akin to the inventive concept considerations conducted at the second phase of the 35 U.S.C. §101 subject matter inquiry. The main takeaway from Enfish and McRO is that in the first step of the Alice test, a patent application is not directed to an abstract idea if (1) the invention addresses an existing problem by specific improvements rather than by conventional, well-known methods and (2) the claims do not raise preemption concerns. This encourages practitioners to define the problem as broadly as possible, while defining the scope of improvement in definite terms.
2. The Federal Circuit’s Standard for Alice Step Two, and the Overlap with Step One
The second step of the Alice test is an inquiry of whether the patent application, which is directed to a patent ineligible subject, still contains a patent-worthy inventive concept. Bascom ruled in favor of granting the patent following the second step of the Alice test.[111] While the patent at hand was considered directed to patent ineligible subject matter, the Bascom court found that the content filter system invention still had an inventive concept worthy of a patent.[112] Even if elements of a claim are separately known in prior art, an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces. This inquiry seems like a lenient standard compared to the 35 U.S.C. §103 obviousness inquiry; hence, it is not clear if this step has an independent utility for invalidating or rejecting a patent. Nonetheless, the court found that merely showing that all elements of a claim were already disclosed in prior art was not sufficient reason to make an invention patent ineligible.[113] While it is possible to infer sufficient reasons of ruling out inventive concepts from the Bascom case, it is still unclear what would warrant an invention to pass the second step of the Alice test. Cases such as DDR Holdings v. Hotels.com have suggested that the second step of Alice is satisfied since it involved a solution to a specific technological problem that “is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.”[114] This interpretation of inventive concept becomes perplexing when comparing the two steps of Alice—both steps look to whether the proposed solution addresses problems that are specific to a given field of interest. While we would need additional cases to gain insight on whether the two steps have truly distinct functions, at the very least the Federal Circuit provided essential guidelines on what may be deemed as patentable software.

C. Applying Patentable Subject Matter to Machine Learning Inventions

As the Bascom court has taught, the first step in the Alice inquiry is to ask whether an invention (1) provides a solution to an existing problem by (2) a specific, non-generic improvement that (3) does not preempt other methods of solving the existing problem. Applying this test to inventions in machine learning, mathematical improvements and computational improvements would be treated differently. As mentioned before, a key aspect of machine learning is the “noise” associated with the data sets.[115] Another concern is the fitting of a given algorithm to a certain model. Methods that facilitate the computations of the training process may be deemed as a specific improvement. However, machine learning algorithms themselves, including the base models that the algorithm fits the training into would not be pertinent to just a specific improvement. Hence, generic mathematical methods applicable to various problems are directed to an abstract idea. For example, an invention that addresses the issue of normalizing data from different sources would be a computational issue and hence would pass the Alice test given that it did not preempt other solutions to the problem of data normalization. On the other hand, a specific mathematical equation that serves as a starting model for the machine learning algorithm would be mathematical and hence directed to an abstract idea. Even if the mathematical starting model is only good for a specific application, the model is not a specific improvement pertinent to that application. Although the model may not necessarily be a good starting model for other applications, it is nonetheless a generic solution that applies to other applications as well.

Conclusion

While highly restrictive, the guidelines from the Federal Circuit still allow the grant of patent rights for the computational aspects of machine learning algorithms. The guidelines also would prevent highly preemptive mathematical innovations, including data-generating patents such as machine learning models. The narrow range of patentability makes a patent regime appealing for computational methods. The recent emphasis on preemption concerns acts in favor of preventing data network effects based on data-generating patents. While not discussed in this paper, other patentability requirements such as obviousness or definiteness would further constraint the grant of overly broad data-generating patents. Such an approach strikes the appropriate balance between promoting innovation and encouraging data reuse for societal benefits. Compared to other approaches of providing protection over innovations in machine learning, the narrowly tailored approach for patent rights for computational inventions fits best with the policy goal of promoting innovation through data reuse. The industry trends in collaboration and recruiting also matches the proposed focus on patent law protection.
* J.D. Candidate, New York University School of Law, 2018; Ph.D. in Electrical and Computer Engineering, University of Illinois at Urbana-Champaign, 2012. The author would like to thank Professor Katherine Jo Strandburg for her guidance; fellow JIPEL Notes Program participants Julian Pymento, Gia Wakil, Neil Yap, and Vincent Honrubia for their comments and feedback; and Dr. Sung Jin Park for her support throughout the process.
[1] Sang-Hun Choe & John Markoff, Master of Go Board Game Is Walloped by Google Computer Program, N.Y. Times (March 9, 2016), https://www.nytimes.com/2016/03/10/world/asia/google-alphago-lee-se-dol.html (reporting the shocking defeat of Go Master Lee Se-dol to Google DeepMind’s AlphaGo).
[2] Laurence Zuckerman, Chess Triumph Gives IBM a Shot in the Arm, N.Y. Times (May 12, 1997), http://politics.nytimes.com/library/cyber/week/051297ibm.html (detailing IBM’s highly publicized win through Deep Blue’s victory over world chess champion Garry Kasparov).
[3] See Choe & Markoff, supra note 1.
[4] David Silver et al., Mastering the game of Go with deep neural networks and tree search, 529 Nature 484, 484 (2016).
[5] Id.
[6] Id.
[7] Id. at 485.
[8] Id.
[9] See Andre Esteva et al., Dermatologist-level classification of skin cancer with deep neural networks, 542 Nature 115 (2017).
[10] See Sue Ellen Haupt & Branko Kosovic, Big Data and Machine Learning for Applied Weather Forecasts, (2015).
[11] See Wei-Yang Lin et al., Machine Learning in Financial Crisis Prediction: A Survey, 42 IEEE Transactions on Systems, Man, and Cybernetics 421 (2012).
[12] See Farzindar Atefeh & Wael Khreich, A Survey of Techniques for Event Detection in Twitter, 31 Computational Intelligence 132 (February 2015).
[13] See Corey Blumenthal, ECE Illinois Students Accurately Predicted Trump’s Victory, ECE Illinois (Nov. 18, 2016), https://www.ece.illinois.edu/newsroom/article/19754.
[14] For the purpose of this Note, secrecy refers to the use of trade secret and contract based non-disclosure agreements.
[15] Mark A. Lemley, The Surprising Virtues of Treating Trade Secrets As IP Rights, 61 Stan. L. Rev. 311, 332 (2008) (“Patent and copyright law do not exist solely to encourage invention, however. A second purpose — some argue the main one — is to ensure that the public receives the benefit of those inventions.”).
[16] Andrew Ng et al., How Artificial Intelligence Will Change Everything, Wall Street Journal (March 7, 2017), https://www.wsj.com/articles/how-artificial-intelligence-will-change-everything-1488856320.
[17] Limor Peer, Mind the Gap in Data Reuse: Sharing Data Is Necessary But Not Sufficient for Future Reuse, London Sch. Econ. & Poli. Sci. (Mar. 28, 2014) http://blogs.lse.ac.uk/impactofsocialsciences/2014/03/28/mind-the-gap-in-data-reuse (“The idea that the data will be used by unspecified people, in unspecified ways, at unspecified times . . . is thought to have broad benefits”).
[18] See Saeed Ahmadiani & Shekoufeh Nikfar, Challenges of Access to Medicine and The Responsibility of Pharmaceutical Companies: A Legal Perspective, 24 DARU Journal of Pharmaceutical Sciences 13 (2016) (discussing how “pharmaceutical companies find no incentive to invest on research and development of new medicine specified for a limited population . . .”).
[19] 17 U.S.C. §101 (2012).
[20] Id.
[21] 17 U.S.C. §102(a) (Copyright exists “in original works of authorship fixed in any tangible medium of expression . . .”).
[22] Apple Comput., Inc. v. Franklin Comput. Corp., 714 F.2d 1240 (3d Cir. 1983).
[23] Comput. Assocs. Int’l v. Altai, 982 F.2d 693 (2d Cir. 1992).
[24] Id.
[25] See id. at 707-09.
[26] 837 F.3d 1299, 1314 (Fed. Cir. 2016).
[27] Altai, 982 F.2d at 698.
[28] See Dionne v. Se. Foam Converting & Packaging, Inc., 240 Va. 297 (1990).
[29] Kewanee Oil v. Bicron Corp., 416 U.S. 470 (1974).
[30] Id. at 490.
[31] Nikolay Golova & Lars Rönnbäck, Big Data Normalization For Massively Parallel Processing Databases, 54 Computer Standards & Interfaces 86, 87 (2017).
[32] Jon Russell, Alibaba Teams Up with Samsung, Louis Vuitton and Other Brands to Fight Counterfeit Goods, TechCrunch (Jan. 16, 2017) https://techcrunch.com/2017/01/16/alibaba-big-data-anti-counterfeiting-alliance.
[33] Lemley, supra note 15, at 33
[34] See Lior Rokach, Introduction to Machine Learning, Slideshare 3 (July 30, 2012), https://www.slideshare.net/liorrokach/introduction-to-machine-learning-13809045.
[35] Id. at 4.
[36] Id. at 10.
[37] See Lars Marius Garshol, Introduction to Machine Learning, Slideshare 26 (May 15, 2012) https://www.slideshare.net/larsga/introduction-to-big-datamachine-learning.
[38] Id.
[39] Id.
[40] See Lei Yu et al., Dimensionality Reduction for Data Mining – Techniques, Applications and Trends, Binghamton University Computer Science 11, http://www.cs.binghamton.edu/~lyu/SDM07/DR-SDM07.pdf (last visited Feb. 23, 2018).
[41] Id.
[42] See Rokach, supra note 34, at 10.
[43] Yu et al., supra note 40.
[44] Laurens van der Maaten et al., Dimensionality Reduction: A Comparative Review, Tilburg Centre for Creative Computing, TiCC TR 2009-005, Oct. 26, 2009, at 1 (“In order to handle such real-world data adequately, its dimensionality needs to be reduced. Dimensionality reduction is the transformation of high-dimensional data into a meaningful representation of reduced dimensionality. Ideally, the reduced representation should have a dimensionality that corresponds to the intrinsic dimensionality of the data. The intrinsic dimensionality of data is the minimum number of parameters needed to account for the observed properties of the data”).
[45] Andrew Ng, Nuts and Bolts of Applying Deep Learning (Andrew Ng), YouTube (Sept. 27, 2016), https://www.youtube.com/watch?v=F1ka6a13S9I.
[46] Andrew Ng, Model Selection and Train/Validation/Test Sets, Machine Learning, https://www.coursera.org/learn/machine-learning/lecture/QGKbr/model-selection-and-train-validation-test-sets (last visited Feb. 23, 2018).
[47] Id.
[48] See Rokach, supra note 34, at 10.
[49] Alex Rampell & Vijay Pande, a16z Podcast: Data Network Effects, Andreesen Horowitz (Mar. 8, 2016), http://a16z.com/2016/03/08/data-network-effects/.
[50] James Manyika et. al., Big Data: The Next Frontier for Innovation, Competition, and Productivity, McKinsey Global Inst., May 2011, at 11, available at https://www.mckinsey.com/~/media/McKinsey/Business%20Functions/McKinsey%20Digital/Our%20Insights/Big%20data%20The%20next%20frontier%20for%20innovation/MGI_big_data_exec_summary.ashx.
[51] Id.
[52] Leonid Bershidsky, Why Are Google Employees So Disloyal?, Bloomberg (July 13, 2013, 11:41 AM), https://www.bloomberg.com/view/articles/2013-07-29/why-are-google-employees-so-disloyal-.
[53] Id.
[54] Rob Valletta, On the Move: California Employment Law and High-Tech Development, Federal Reserve Bank of S.F. (Aug. 16, 2002), http://www.frbsf.org/economic-research/publications/economic-letter/2002/august/on-the-move-california-employment-law-and-high-tech-development/#subhead1.
[55] Id.
[56] See Quentin Hardy, IBM, G.E. and Others Create Big Data Alliance, N.Y. Times (Feb. 15, 2015), https://bits.blogs.nytimes.com/2015/02/17/ibm-g-e-and-others-create-big-data-alliance.
[57] See, e.g., Finicity and Wells Fargo Ink Data Exchange Deal, Wells Fargo (Apr. 4, 2017), https://newsroom.wf.com/press-release/innovation-and-technology/finicity-and-wells-fargo-ink-data-exchange-deal.
[58] Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014).
[59] Karen E.C. Levy, Relational Big Data, 66 Stan. L. Rev. Online 73, 73 n.3 (2013), https://review.law.stanford.edu/wp-content/uploads/sites/3/2013/09/66_StanLRevOnline_73_Levy.pdf (explaining that the big data phenomenon is due to the need of practices to analyze data resources).
[60] Christine L. Borgman, The Conundrum of Sharing Research Data, 63 J. Am. Soc’y for Info. Sci. & Tech. 1059, 1059-60 (2012) (discussing the lack of data sharing across various industries).
[61] See Michael Mattioli, Disclosing Big Data, 99 Minn. L. Rev. 535 (2014).
[62] See id. at 545-46 (discussing the technical challenges in merging data from different sources, and issue of subjective judgments that may be infused in the data sets).
[63] See id. at 552 (discussing how institutions with industrial secrets may rely on secrecy to protect the big data they have accumulated).
[64] See id. at 570 (“[T]he fact that these practices are not self-disclosing (i.e., they cannot be easily reverse-engineered) lends them well to trade secret status, or to mere nondisclosure”).
[65] Id.
[66] Id. at 552.
[67] Patrick Clark, The World’s Top Economists Want to Work for Amazon and Facebook, Bloomberg (June 13, 2016, 10:47 AM), https://www.bloombergquint.com/technology/2016/06/09/the-world-s-top-economists-want-to-work-for-amazon-and-facebook (“If you want to be aware of what interesting questions are out there, you almost have to go and work for one of these companies”).
[68] Bill Franks, Taming the Big Data Tidal Wave 20 (2012) (discussing that the biggest challenge in big data may not be developing tools for data analysis, but rather the processes involved with preparing the data for the analysis).
[69] See Borgman, supra note 60, at 1070 (“Indeed, the greatest advantages of data sharing may be in the combination of data from multiple sources, compared or “mashed up’ in innovative ways.” (citing Declan Butler, Mashups Mix Data Into Global Service, 439 Nature 6 (2006))).
[70] Jack Clark, Apple’s Deep Learning Curve, Bʟᴏᴏᴍʙᴇʀɢ Bᴜsɪɴᴇssᴡᴇᴇᴋ, (Oct 29, 2015) https://www.bloomberg.com/news/articles/2015-10-29/apple-s-secrecy-hurts-its-ai-software-development.
[71] Kewanee Oil v. Bicron Corp., 416 U.S. 470, 490 (1974).
[72] See infra Section III-B.
[73] Brenda Simon & Ted Sichelman, Data-Generating Patents, 111 Nw. U.L. Rev. 377 (2017).
[74] Id. at 379.
[75] Id. at 414.
[76] Id. at 415 (“[B]roader rights have substantial downsides, including hindering potential downstream invention and consumer deadweight losses . . .”).
[77] Id. at 417.
[78] Rampell & Pande, supra note 49.
[79] Lina Kahn, Amazon’s Antitrust Paradox, 126 Yale L.J. 710, 785 (2017) (“Amazon’s user reviews, for example, serve as a form of network effect: the more users that have purchased and reviewed items on the platform, the more useful information other users can glean from the site”).
[80] Simon & Sichelman, supra note 73, at 410.
[81] See infra Section III-A.
[82] Id.
[83] See infra Section III-B.
[84] Jack Clark, Apple’s Deep Learning Curve, Bʟᴏᴏᴍʙᴇʀɢ Bᴜsɪɴᴇssᴡᴇᴇᴋ (Oct 29, 2015), https://www.bloomberg.com/news/articles/2015-10-29/apple-s-secrecy-hurts-its-ai-software-development.
[85] Peer, supra note 17 (“The idea that the data will be used by unspecified people, in unspecified ways, at unspecified times . . . is thought to have broad benefits”).
[86] See Harshavardhan Achrekar et al., Predicting Flu Trends using Twitter data, IEEE Conference on Comput. Commc’ns. Workshops 713 (2011), http://cse.unl.edu/~byrav/INFOCOM2011/workshops/papers/p713-achrekar.pdf.
[87] Jordan Crook, Uber Taps Foursquare’s Places Data So You Never Have to Type an Address Again, TechCrunch, (May 25, 2016) https://techcrunch.com/2016/05/25/uber-taps-foursquares-places-data-so-you-never-have-to-type-an-address-again/.
[88] See Rampell & Pande, supra note 49.
[89] See Mattioli, supra note 61, at 554 (“A final limitation on patentability possibly relevant to big data is patent law’s requirement of definiteness”).
[90] See Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014).
[91] See Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014).
[92] Robert R. Sachs, Two Years After Alice: A Survey of the Impact of a “Minor Case” (Part 1), Bilski Blog (June 16, 2016), http://www.bilskiblog.com/blog/2016/06/two-years-after-alice-a-survey-of-the-impact-of-a-minor-case.html.
[93] Id.
[94] Stephanie E. Toyos, Alice in Wonderland: Are Patent Trolls Mortally Wounded by Section 101 Uncertainty, 17 Loy. J. Pub. Int. L. 97,100 (2015).
[95] Id.
[96] Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2349 (2014).
[97] Id.
[98] Id.
[99] Id. at 2350 (emphasis added) (citation omitted).
[100] Id. at 2357 (emphasis added) (alteration in original) (citation omitted).
[101] Id. at 2350.
[102] Id. at 2351.
[103] Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1330 (Fed. Cir. 2016).
[104] Bascom Glob. Internet Servs. v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016).
[105] McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1308 (Fed. Cir. 2016).
[106] Id.
[107] Bascom, 827 F.3d at 1349.
[108] Enfish, 822 F.3d at 1330.
[109] McRO, Inc., 837 F.3d at 1314.
[110] Id.
[111] Bascom, 827 F.3d at 1349.
[112] Id.
[113] Id.
[114] See Toyos, supra note 94, at 121; DDR Holdings, LLC v. Hotels.com, 773 F.3d 1245, 1257 (Fed. Cir. 2014).
[115] See supra Section II-A.

Fitting Marrakesh into a Consequentialist Copyright Framework

Fitting Marrakesh into a Consequentialist Copyright Framework
Download a pdf version of this article here. The Marrakesh Treaty to Facilitate Access to Published Works by Visually Impaired Persons and Persons with Print Disabilities entered into force on September 30, 2016. The treaty aims to alleviate what has been described as the “book famine,” and has been lauded as a significant achievement in advancing the rights of and promoting equal opportunity for the visually disabled. Contracting states are required to implement copyright limitations and exceptions to facilitate access to copyrighted material for the global print-disabled community. This note will argue that, notwithstanding the treaty’s strong rights-based underpinnings, the treaty aligns comfortably with U.S. consequentialist copyright justifications. This note will also demonstrate the limitations of other copyright justificatory theories while discussing their incompatibility with the treaty’s philosophy.

Through the Looking Glass: Photography and the Idea/Expression Dichotomy

Through the Looking Glass: Photography and the Idea/Expression Dichotomy
Download a pdf version of this article here. Copyright law has always expressed an idea/expression dichotomy, where copyright protection extends not to an idea of a work but only to work’s expression of that idea. Alas, this distinction walks a fine line with regard to non-textual and visual works. In particular, courts are prone to inconsistent outcomes and a violation of the fundamental precepts of copyright law because courts often succumb to shortcomings in grasping aesthetic theories of originality, realism, and ideas idiosyncratic to visual works. However, this dilemma may be solved within the existing framework of copyright law. This note argues that the solution should start by focusing less on visual works’ subject matter, but rather elements of the work, such as the originality and realism of the expression that clarify the author’s creativity. Moreover, the concept of an “idea” should be defined broadly as the residual locus of uncopyrightable elements in a work, rather than a cohesive concept that attempts to definitively pin down the “idea” behind that individual work. Taking this two-pronged solution would thus both recognize visual and photographic work’s unique niche within copyright as well as align these forms of art with copyright’s law’s ultimate objective of authorship protection.

Un-Blurring Substantial Similarity: Aesthetic Judgments and Romantic Authorship in Music Copyright Law

Un-Blurring Substantial Similarity: Aesthetic Judgments and Romantic Authorship in Music Copyright Law
Download a PDF version of this article here.

By Nicole Lieberman*

Introduction

By refusing to acknowledge[1] the aesthetic judgments inherent in determining copyright disputes,[2] American courts have plagued our copyright law with subjective bias[3] and doctrinal confusion. To avoid the appearance of impropriety, since at least 1903[4] courts have side-stepped clearly defining foundational concepts such as “originality,”[5] “authorship,” and “infringement.” As such, they have failed to provide a meaningful methodology for determining when a work infringes the copyright of another.[6] By instead relying on the impossibly vague “substantial similarity” test,[7] courts have crafted an impressionistic doctrine that has drifted far from copyright’s original economic purpose of incentivizing creation.

While copyright infringement requires proof of copying, mere copying is not the end of the inquiry, as “[t]rivial copying is a significant part of modern life.”[8] Thus, proof of copying, or “copying-in-fact,” is only a threshold issue for proving infringement.

Copying-in-fact can be shown through direct evidence, such as testimony, but with witnesses and honest thieves often lacking, copying is most often shown by circumstantial evidence. Indirect proof of copying is provided by evidence creating an inference that the defendant copied – typically a combination of evidence of access to the plaintiff’s work and similarities probative of copying. While courts allow expert analysis and dissection to aid them in inferring copying, the largely unguided impression of lay observers determines the more exacting question of misappropriation.[9]

Yet determining misappropriation requires an understanding of the “axiom of copyright law that the protection granted to a copyrightable work extends only to the particular expression of an idea and never to the idea itself.”[10] Application of the “idea/expression” distinction requires delicate line-drawing to decide the appropriate “‘level of abstraction’ at which one defines the ‘idea’ that merges with the subject’s expression.”[11] But fact finders are unlikely to understand on their own which “ideas” are excluded or what elements fall into the category of “ideas.” While jury instructions can theoretically work to inform jurors to exclude such elements, “in practice jurors aren’t going to know what things are, for example, scène à faire[12] in the music industry, without some testimony on standard chord progressions.”[13] Thus, jurors are not likely to understand such an ephemeral distinction between ideas and expression, especially when applied to areas in which they lack expertise, as is often the case with copyright.[14] Because the issue of misappropriation is so dependent on the interpretation of these underlying principles of copyright law, classifying the issue as purely a question of fact for the jury requires reconsideration.[15]

Courts recognize the need for expert analysis and dissection in determining infringement in cases involving computer software. Distinguishing computers as “complex” and having elements dictated by limited options, courts apply a special test to ensure only protected elements are considered for infringement purposes. Yet they proscribe such guidance when the “aesthetic arts” are at issue, failing to recognize traditions unique to genres, that all art is capable of being broken down into constituent elements, and that such elements are dictated by genre and functional constraints. Courts have assumed that art is intuitive, simply reflecting emotions, and capable of being understood by anyone. Their narrow understanding of art comes from our law’s founding.

Copyright arose in an era where the courts viewed creativity as coming from a place of pure autonomous genius,[16] but this romantic view of aesthetics is a relic of the past: a counteraction to the age of enlightenment and rationalization. The reality is that creative borrowing is almost unavoidable and results in widespread use of unprotected elements from preexisting works. Without expert guidance and the ability to dissect protectable and unprotectable elements, judges and jurors are “more likely to find infringement in dubious circumstances, because they aren’t properly educated on the difference between protectable and unprotectable elements.”[17]

Due to the prevalence of music copyright infringement suits, and the fact that music is more perceptively derivative than other media,[18] it seems disproportionately plagued by the courts’ bias for traditional aesthetics. But music, like all arts, is inherently complex and technical,[19] and few “ordinary observers” know the elements and factors that go into its creation,”[20] especially with works of less familiar genres. Thus, fact finders are easily misled into finding substantial similarity based on unprotectable elements.[21]

While music may be uniquely crippled by our current copyright regime, the problems plaguing music copyright stem directly from a lack of guidance where it is arguably most needed: the technical issue of misappropriation.[22] With fact finders less likely to detect similarities attributable to common sources in unfamiliar aesthetic, the current system results in a prejudice against lesser-known aesthetics, and a bias for the traditional. [23] The result is far from encouraging aesthetic progress.

This paper will argue that to create a more encompassing[24] and objective copyright law, that fosters progress in all arts, it is vital to expand the role of analytic dissection and expert testimony to the misappropriation prong of the infringement test.

Part I of this paper provides background on the history of court treatment of music copyright and lays out the two major approaches to copyright infringement. In addition, this part outlines the foundational principle that only the expression of an idea is protectable. Part II illustrates how the tests have veered away from the original purposes and values underlying the inquiry. It argues that by relying on the ordinary observer test for misappropriation, the tests fail to accurately account for the idea-expression distinction. In outlining the problems facing music under our current copyright regime, this section shows how the problems with the audience test are particularly problematic for music, a medium in which the line between idea and expression is often not “spontaneous and immediate” to the ordinary observer.[25] The recent “Blurred Lines”[26] lawsuit serves to illustrate how the lack of objectivity in our current law results in inconsistent application, thereby diminishing incentives to create new works. More broadly, this section considers that while the problems for music are often more noticeable than for other media, they merely expose the larger inaccuracies of the audience test. Finally, Part III considers proposals for creating a more guided and objective infringement analysis. Ultimately, this paper concludes that the best solution is adopting the test for computer software, the abstraction-filtration-comparison method (AFC),[27] as a uniform test for infringement.

Requiring careful dissection of unprotected elements by the court would ensure educated decisions, and reserving the intuitive question of whether the defendant copied those elements for the trier would preserve the economic rationale of the lay listener test.[28] Effectively reversing the analysis of proof “will likely result in greater attention to the limiting doctrines of copyright law”[29] and the evolution of reasoned rule of law.[30] By basing aesthetic nondiscrimination in objective and reasoned criteria, as opposed to the “anti-intellectual and book burning” philosophy[31] of visceral impressions, the courts can determine actual illicit copying while being receptive to unconventional aesthetics.[32]

I. Historical Background of Music in Copyright

While copyright law struggles to deal with the fine arts as a whole,[33] particular problems arise in the context of musical works. These issues are rooted in the history of copyright law. Many of the problems facing music copyright lie in the fact that creators are seeking protection under a scheme created for the distinct purpose of protecting works of literature.[34] However, these problems are not unique to music. American copyright law is based on a concept of authorship ill-suited to progress in general. This section will outline the evolution of our copyright infringement doctrine. In considering the historical application of the doctrine to musical works, this section analyzes the aesthetic norms embedded within judges’ and jurors’ findings of infringement.

A. Music’s Initial Encounters in Early Legislation and Case Law

Article 1, Section 8 of the Constitution authorizes federal legislation “[t]o promote the Progress of Science and useful Arts,”[35] but gives little guidance in defining the scope of the copyright system. The original Copyright Act of 1790 extended protection only to maps, charts, and books.[36] Though musical compositions were routinely registered under the 1790 Act as “books,”[37] it was not until the Copyright Act of 1831 that Congress expressly extended protection to musical compositions. Congress’s early failure to provide well-crafted protection for musical compositions is hardly surprising given the 1790 Act’s roots in Great Britain’s Statute of Anne, which covered only the distinct category of “books.”[38]

With no other protection available against infringers, composers naturally came to seek protection of their works through copyright.[39] Yet utilizing a scheme created for “written” works meant obtaining copyright protection solely with respect to the underlying composition, “the notated, written score, including the music and any lyrics.”[40] While seemingly analogous, music as a performing art is “often related in some way to performance” and must be understood by reference to its context, that is, elements outside the composition.[41] Though federal law since 1976 has applied copyright protection to musical recordings, including some performance elements such as percussion, recordings are treated as distinct expressions with separate copyright protection.[42] Consequently, musical compositions are protected only within the restrictive framework of the “musical work,” which is defined as a combination of melody and harmony.[43]

More problematically, courts analyzing music copyright cases tend to place undue weight on melody, rather than harmony and rhythm,[44] failing to consider the complexity of music and a realm of possible distinguishing features. Focusing on elements of music that “lend themselves to notation”[45] may seem adequate in analyzing works from European musical traditions, which typically have predominant harmonic and melodic structures,[46] but doing so fails to consider music in its totality. Because music is inherently relational,[47] our perception of musical works, and their meaning, is dependent on the context in which notes and pitches in the melody are played.[48] Elements such as timbre and spatial organization are also relevant to the way we hear music and to the similarities we perceive. Consequently, “originality is better viewed as a function of the interaction and conjunction of these elements than of any element alone.”[49]

Neglecting to consider the totality of elements in musical works, while ill-suited even to classical traditions, most drastically affects works outside of Western traditions. The main aesthetic features of non-Western music often fall outside the confines of the court’s emphasis on melody and notation. Most notably, hip-hop, which finds its roots in certain African musical traditions, features a dominant “oral tradition,” evidenced in the practice of rapping, and complex rhythmic structures with less emphasis on melodic and harmonic structures. Moreover, such traditions predominately feature the element of musical borrowing through the practice of sampling, looping, and interpolation. These features are also found in other African American musical genres, including blues, jazz, rhythm and blues, gospel, Soul, rock, reggae, funk, disco, and rap, and are found mixed with all types of music today.[50] Electronic music producers are now producing hip-hop tracks,[51] and even pop-country artists are making rhythm-centric tracks that reference hip-hop culture. Not surprisingly, entering the arena puts artists at risk of facing a copyright suit. Taylor Swift recently faced a $42 million infringement claim for using the lyric “haters gone hate,” a staple in hip-hop culture and music, [52] in her recent dance-pop track “Shake it Off.”[53] Despite the prevalence of non-notational elements, copyright’s bias for written work places works that do not fit the mold “at the bottom of the hierarchies of taste,”[54] making findings of original elements in allegedly infringing works more difficult to obtain.

Borrowing similarly conflicts with Western ideals of creativity and originality, with the result that music has historically been disvalued. Records from the time of the Statute of Anne’s enactment are telling of the hostile attitudes facing music. While literature was held in high esteem for its educative role, music was seen as an unnecessary luxury that served merely as entertainment.[55] In Pyle v. Falkener,[56] an early case brought under the Statute of Anne, defendant publishers argued that, in contrast to works of literature, authorship of music required “a high standard of originality to qualify for protection under any legal theory.”[57] Underlying their challenge was the commonly held notion that composers “merely borrowed” from “[o]ld [t]unes which had been [u]sed in [c]ommon by all persons for many years before…” and as such have no proprietary rights.[58]

Such disparaging views of music are less surprising when one considers the rise of the Romantic view of authorship in the nineteenth and twenties centuries.[59] Unlike the classical conception of authorship, which “conceives of art as imitating universal truths and ideas,” and thus contemplates the evolutionary nature of art, the Romantic view conceptualizes the creation of art “as a process that reflect[s] the emotions and personality of the individual artist.”[60] With the Romantic view informing cultural assumptions, originality often came to be defined as requiring independent creation, “which essentially appears to rule out or significantly limit borrowing.”[61]

With the functional and genre constraints inherent to music,[62] tensions existed early on in applying copyright to musical works. Yet “use of existing works has historically been a core feature of the musical composition process”[63] and the artistic process in general. The courts’ neglect to appreciate the reality of borrowing has often resulted in overbroad copyrights, extending protection to more than just the particular arrangement of the literal elements of a work.[64] Additionally, by failing to recognize distinguishing features of songs that lie outside the melody and notation, courts often find infringement based on unprotected elements. Genres that explicitly sample existing works, such as hip-hop, have been hit hardest. As a result, the courts are perpetuating a bias for traditional aesthetics at the expense of progressive and unfamiliar artistic movements.[65]

B. The Idea-Expression Distinction

Early on, courts using the idea-expression dichotomy to distinguish between unprotectable and protectable aspects of works did so on the basis of tangibility. Though the courts still use these terms in filtering out unprotectable elements, changing views on the nature of the artistic process have distorted the original tangibility basis, leading to ad hoc judicial determinations. With the rise of the Romantic view, artistic works in their entirety came to be regarded as reflecting the artist’s contributions.[66] As a result, perceptions regarding the moral (and thus, intellectual property) rights of an artist expanded to include more than just the particular arrangement of the literal elements of a work.

Originally, American copyright law viewed “ideas” as “intangible, unexpressed concept[s] that existed only in the author’s mind.”[68] Therefore, copyright protected only the tangible[69] “expression,” or the “arrangement of words which the author has selected to express the idea.”[70] The rationale served the purposes of the intellectual property clause well, since free access to ideas is critical to the development of creative works.[71] Moreover, the right granted did not include a right over certain words used, because “they are the common property of the human race.”[72] This early approach was consistent under the classical conception of the creative process, which views the artist as portraying an intangible idea or truth which “cannot and should not be captured or controlled by one artist.”[73]

However, with the rise of the Romantic view in the nineteenth and twenties centuries,[74] Congress no longer limited “expression” to the arrangement of the literal elements of the copyrighted work, but expanded it to include underlying “original” conceptual elements as well.[75] In 1909, Congress both enlarged the category of works eligible for protection and expanded the rights provided to copyright owners, including use of the work in a different medium.[76] Protection under the Act was no longer limited to the literal form or features of the expressed idea, but extended to elements of a work that are intangible and conceptual.[77] In applying the new act, the Supreme Court in Kalem Co. v. Harper Bros.[78] found the defendant’s film to infringe upon the plaintiff’s copyright in the book Ben Hur because the film expressed the same underlying idea, or plot, albeit in an entirely different medium.[79]

It became clear that balanced against the idea-expression distinctions is the countervailing consideration that copyright infringement cannot be limited to exact copying, “else a plagiarist would escape by immaterial variations.”[80] The problem is one of line-drawing: at what point is a variation distinguishable enough to “sufficiently alter a work’s substantial similarity to another so as to negate infringement,” without extending protection to the underlying idea of the plaintiff’s work?[81]

Views on the nature of art and the creative process have only continued to evolve and become more inconsistent with the idea-expression dichotomy.[82] The conceptual art movement advanced the rejection of any distinction between an artist’s idea and the ultimate expression.[83] As conceptual artist Sol LeWitt stated, “the idea or concept is the most important aspect of the work. When an artist uses a conceptual form of art, it means that all of the planning and decisions are made beforehand and the execution is a perfunctory affair. The idea becomes a machine that makes the art.”[84] In rejecting the Formalist tradition, which defined art by its form and structure, conceptual art judges art by what it contributes to the conception and definition of “art.”[85] Even an unchanged item from the grocery store, like a box of Brillo soap pads,[86] can be art if framed in a new way.

With Romantic and neo-romantic views challenging classical aesthetic theory, no universally accepted philosophical or objective basis remains for distinguishing ideas from expression in works of art. Continuing to use the terms leaves courts to make infringement decisions on the basis of their own subjective assessments of a work’s artistic value.[87] Judicial determinations of what constitutes the “idea” versus the “expression” have come to reflect personal assumptions and experiences. Courts tend to find elements of a work to be an “idea” when they are familiar with the work’s aesthetic tradition and can recognize the elements as commonplace.[88] Conversely, courts are more likely to find elements of works in less familiar traditions to be original “expression,” making them more inclined to find later uses infringing.[89] As the Ninth Circuit admitted, “‘At least in close cases, one may suspect, the classification [of idea and expression] the court selects may simply state the result reached rather than the reason for it.’”[90] Thus, with changing views on the creative process, “it is no longer necessary or valuable or even possible to dissect a work of art to uncover the universal truths or ideas which must remain freely available to all future authors.”[91]

Distinguishing between ideas and expression is perhaps most illusory in the context of music, due to the relatively limited number of compositional choices when compared with literary works.[92] Western music, at issue in most copyright suits, is primarily written in the tonal system, an organized and relational system of tones (e.g., the notes of a major or minor scale) in which one tone becomes “the central point to which the remaining tones are related.”[93] Because there are a limited number of possible pitch and harmonic relationships, options within tonal music are somewhat dictated by the system.[94] Moreover, because the tonal system is built on a hierarchy of predominate chords and pitches,[95] certain “patterns and tendencies are . . . common to virtually all musical works composed in the tonal system.”[96] The distinction between these unprotectable ideas and the original expression thereof is difficult to see, and thus the room for bias is most apparent.[97]

C. Evolution of the Copyright Infringement Tests

Courts since the nineteenth century have attempted to separate the issue of copyright infringement into two issues. First, “Copying-in-Fact”: did the defendant see and copy from the copyrighted work or did he create his work independently?; second, “Misappropriation”: did the defendant appropriate too much of the protected work?[98] The first question is used as an evidentiary tool to infer copying from access or “striking similarity,”[99] while the second focuses on the liability issue.[100] The degree of similarity between the two works is relevant to both the inquiries;[101] the phrase “probative similarity” is often used in reference to the first inquiry, while “illicit similarity” is used for the second.

Courts in the 1900s maintained the distinction between the copying-in-fact and misappropriation inquiries. A “substantial similarity” test was used for the copying-in-fact inquiry to determine whether the degree of similarity between the defendant’s and the plaintiff’s work was substantial to the point of being probative of actual copying. [102] The focus was solely on whether the defendant had copied “the labors of the original author.”[103] As such, before comparing the two works for similarities, the court filtered out unprotected elements from the plaintiff’s work, including those that were “well known and in common use.”[104]

In determining misappropriation—that is, whether the defendant copied enough of the plaintiff’s work to be held liable—courts looked to the economic or aesthetic value of what the defendant copied: if the portions extracted “embody the spirit and the force of the work…they take from it that in which its chief value consists.”[105] In this context, courts often used the adjective “substantial” to refer to the qualitative value of what was copied.[106]

As precedent evolved, courts began to combine the structure of these two prongs. As a result, courts have often confused the economic purpose of the misappropriation prong: finding infringement based solely on quantitative similarity without taking account of the unprotected elements in the original work. The analysis of the two major copyright tests below outlines how this confusion arose and focuses on the problems the misappropriation prong are causing for copyright.

1. Second Circuit Copying/Unlawful Appropriation Test

In Arnstein v. Porter,[107] the litigious Ira B. Arnstein sued the American songwriter and composer Cole Porter, alleging that many of Porter’s songs infringed the copyrights of songs written by Arnstein.[108] The Second Circuit conducted an influential bifurcated test,[109] which requires a plaintiff to prove (1) copying-in-fact and (2) illicit copying (unlawful appropriation) to establish infringement.[110]

i. Copying-in-Fact

The first prong of the Arnstein test is satisfied with the showing of (a) access; and (b) sufficient similarity, which is “probative” of copying: “The stronger the proof of similarity, the less the proof of access that is required.”[111] Thus, if similarities are so “striking” so as to “preclude the possibility that plaintiff and defendant independently arrived at the same result,” evidence of access may not be necessary.[112] Of course, the converse is not true because “access without similarity cannot create an inference of copying.” [113]

To evaluate the likelihood of copying versus independent creation, expert testimony and “analytic dissection”[114] are admissible.[115] However, the two works are to be compared in their entirety, including both protectable and non-protectable material.[116]

ii. Unlawful Appropriation

Only if the threshold issue of copying-in-fact is shown does the court move to the question of misappropriation.[117] Having established copying-in-fact, the issue of unlawful appropriation is a question of fact. Therefore, the fact finder must determine whether the taking went so far as to constitute infringement under the “substantial similarity” test.[118] That is, would the ordinary observer, unless he set out to detect the disparities, be disposed to overlook them and regard the aesthetic appeal of the two works as the same?[119] The second part of the Arnstein test is “related to the nineteenth century concern with the value of what the defendant had copied” as it asks whether the similarity “relates to material of substance and value in plaintiff’s work.”[120] However, the Arnstein test departs in some ways from earlier definitions of infringement by looking to the reaction of the “ordinary observer.”[121]

In determining misappropriation, the Arnstein test looks to “the response of the ordinary lay hearer.” That is, rather than making a purely subjective determination, the trier of fact is meant to determine the issue “in light of the impressions reasonably expected to be made upon the hypothetical ordinary observer.”[122] Because the court reasoned that the value of the work lay solely in the opinion of its intended audience, it held that expert testimony on the “impression made on the refined ears of musical experts” was “utterly immaterial.”[123] While seeming to realize the difficulty in discovering the views of the imaginary “ordinary observer,”[124] the court stated that expert testimony was permitted for the limited purpose of “assist[ing] in determining the reactions of lay auditors.”[125]

Moreover, because the court determined that the value of the works lay in their final form as impressed upon the ordinary observer, it instructed that detailed analysis and careful dissection were inappropriate.[126] Therefore, according to Arnstein, works were to be considered in their entirety, again including both protectable and non-protectable material.[127] The trier was left to depend on “some visceral reaction” as the basis for determining misappropriation.[128]

If the case involves “comprehensive non-literal similarity”[129] – that is, similarity in the overall structure of the works – the trier must make a value judgment of “whether defendant took from plaintiff’s works so much of what is pleasing to the ears of lay listeners, who comprise the audience for whom such popular music is composed, that defendant wrongfully appropriated something which belongs to the plaintiff.”[130] In a case of “fragmented literal similarity,” or verbatim copying of constituent elements, an analogous value judgment must be made, but here only with respect to the protectable portions of plaintiff’s work that have been taken.[131] Dissimilarities between materials alleged to be infringing are “significant because they mitigate any impression of similarity.”[132] Dissimilarities in other aspects of the defendant’s work, except to the extent they create an overall different impression, “typically are not significant.”[133] As Judge Learned Hand said, “no plagiarist can excuse his wrong by showing how much work he did not pirate.”[134] Thus, if the defendant copies from the plaintiff’s work, it does not matter if he adds significant material of his own,[135] resulting in what might be a transformative new work.

Consequently, under Arnstein, “[i]nstead of using some objective standards or criteria based on economic impact or quantity, courts [are] to determine infringement on an unpredictable, impressionistic basis.”[136]

iii. Further Developments and Confusions of the Arnstein Test

Although the Second Circuit in Arnstein conducted two separate inquiries into the level of similarity between the two works,[137] namely to establish copying-in-fact and then to determine misappropriation, confusion ensued from the dual use of the term “substantial similarity.” As a result of this confusion, in Ideal Toy Corp. v. Fab-Lu Ltd,[138] the Second Circuit essentially combined the issues into one subjective test. By misinterpreting the element of misappropriation identified in Arnstein as “merely an alternative way of formulating the issue of substantial similarity” rather than as an independent step, the Second Circuit stated that copyright infringement is shown solely by “substantial similarity” between the two works based on the reaction of the ordinary observer.[139] The court effectively reduced the test for prima facie copyright infringement to (1) access, and (2) misappropriation, thereby failing to consider copying-in-fact.[140] Therefore, the court rejected dissection, analysis, and expert testimony entirely and did not think it necessary to analyze the similarities between the works to determine the likelihood of independent creation.[141] By basing the entire copyright infringement inquiry on the subjective impression of those untrained in the arts, the court neglected to protect against a finding of infringement based on purely unprotectable and unoriginal elements. The Ideal Toy test fails to deal with the fundamental principle of copyright law that seeks to protect merely the expression of ideas rather than ideas themselves.[142] Unfortunately, Ideal Toy’s interpretation of the Arnstein test largely influenced the way modern courts use “substantial similarity” in determining infringement.[143]

Luckily, some courts have maintained the Arnstein two-part inquiry. In Universal Athletic Sales Co. v. Salkeld,[144] the Third Circuit restored Arnstein’s bifurcated approach in holding that a plaintiff must prove copying and “that copying went so far as to constitute improper appropriation.”[145] Moreover, the court recognized that “substantial similarity to show that the original work has been copied is not the same as substantial similarity to prove infringement.”[146]

More inherently problematic is the fact that the Salkeld court maintained Arnstein’s limits on expert analysis and dissection in determining misappropriation.[147] As a result, the Salkeldtest likewise fails to provide any objective standards or criteria for determining how much similarity is necessary to constitute misappropriation.[148]

Though courts instruct the fact finder to find misappropriation only if the defendant’s work copies not merely the idea, but ‘the expression of the idea,’ this “vague formula” is a reformulation, not a solution, to the problem of determining “what sort of similarity short of the verbatim will constitute substantial similarity.”[149] Thus, the ordinary observer continues to be left with “the impossible task of comparing only protected expression in determining substantial similarity without engaging in any thoughtful dissection or analysis of the works.”[150]

2. Ninth Circuit: “Total Concept and Feel”

The Ninth Circuit’s framework, laid out in Sid & Marty Krofft Television Prods., Inc. v. McDonald’s Corp,[151] represents the second main approach to determining copyright infringement. Although not a music infringement case, the “extrinsic/intrinsic” test developed by the Krofft court has been influential in many copyright disputes, including those involving music.[152] In recognizing that the ordinary observer is unlikely to be able to separate idea from expression in comparing two works without dissection or analysis, the Ninth Circuit proposed its own two-step test that attempts to ensure that there is “substantial similarity not only of the general ideas but of the expressions of those ideas as well.”[153] Though the test was later reformulated to include specific expressive elements during the extrinsic inquiry, as discussed in in Part I.ii.c., understanding the original formulation is key to examining its foundational flaws.

i. Extrinsic Test

The first step, or the “extrinsic” analysis, as originally cast by the Krofft court, was an objective comparison by the court for similarity in ideas.[154] Only if a substantial similarity of objective criteria under the “extrinsic” test is found do courts consider misappropriation under the “intrinsic” analysis.[155] Thus, the extrinsic test aims to limit protection to protectable elements by first filtering out unprotectable elements, including ideas, facts, and scènes à faire, and then determining whether the allegedly infringing work is “substantially similar to the protectable elements of the artist’s work.”[156]

According to the Ninth Circuit, in filtering out unprotected elements the extrinsic test incorporates the idea-expression dichotomy by limiting the scope of copyright protection to expression. As the court stated:

By creating a discrete set of standards for determining the objective similarity of literary works, the law of this circuit has implicitly recognized the distinction between situations in which idea and expression merge in representational objects and those in which the idea is distinct from the written expression of a concept….[157]

Courts conducting the extrinsic test “must take care to inquire only whether the protectable elements, standing alone, are substantially similar.”[158] Therefore, analytic dissection and expert testimony presented by the plaintiff on the similarities between the plaintiff’s work and defendant’s work are recommended.[159]

In performing the analytic dissection, courts are instructed to list and analyze the “measurable, objective elements” of the works,[160] including “the type of artwork involved, materials used, and the subject matter.”[161] For literary works, courts have listed such elements as “plot, theme, dialogue, mood, setting, pace, characters, and sequence of events.”[162] Because these factors do not readily apply to visual works of art, the court looks to the “objective details of the appearance.”[163] Without attempting to provide an exhaustive list of relevant factors, the court in Ninth Circuit listed such elements as “the subject matter, shapes, colors, materials, and arrangement of the representations.”[164]

Though described as a factual question, because it bases the question on objective criteria rather than the response of the trier, the extrinsic test may often be decided as a matter of law.[165]

ii. Intrinsic Test

Much like the Second Circuit’s ordinary observer test, the intrinsic test is entirely subjective and based on the “response of the ordinary reasonable person” to the “total concept and feel” of a work,[166] excluding expert testimony and dissection. Similar to the Arnstein court’s language of “lay [persons], who comprise the audience,”[167] the Krofft court suggested that the fact finder’s reaction be geared towards that of the intended or likely audience.[168] In a suit involving the characters in a children’s television show, the court stated, “The present case demands an even more intrinsic determination because both plaintiffs’ and defendants’ works are directed to an audience of children.”[169] Therefore, the court limited the inquiry to the understanding of a child and found substantial similarity despite noted differences. Without expert testimony to aid the trier in determining whether children might detect distinctions, the court relied on the triers’ subjective belief that children would be unlikely to notice minor distinctions.[170]

iii. Further Developments and Confusions of the Krofft Test

In Shaw v. Lindheim,[171] the Ninth Circuit modified the extrinsic/intrinsic test in recognition of the fact that district courts were not limiting the extrinsic test to a comparison of ideas.[172] Recognizing that the similarity of ideas prong is often shown by “focusing on the similarities in the objective details of the works,”[173] the Shaw court explained that the extrinsic/intrinsic test is no longer divided by an analysis of ideas and expression.[174] Rather, the extrinsic test is an objective analysis of specific “manifestations of expression,” while the intrinsic test is a subjective analysis of expression by the fact finder, which is no more than the lay observer’s visceral reaction which is “virtually devoid of analysis.”[175] Though the Shaw court recognized that the test was “more sensibly described as objective and subjective”[176] courts have confusingly continued to use the extrinsic/intrinsic language. Moreover, subsequent cases have left the analysis of improper appropriation to the jury analyzing the works as a whole.

In Swirsky v. Carey,[177] the Ninth Circuit applied the extrinsic/intrinsic test to a case involving musical works. Swirsky and his co-writer filed a copyright infringement suit claiming that Mariah Carey’s song “Thank God I Found You” plagiarized their song “One of Those Love Songs.”[178] The court rejected the district court’s approach to the extrinsic test, which involved a “measure-by-measure comparison of melodic note sequences.”[179] The Ninth Circuit felt comparing notes would fail to consider other relevant elements such as “harmonic chord progression, tempo, and key” as “it is these elements that determine what notes and pitches are heard in a song and at what point in the song they are found.”[180] precisely which elements the court should consider, explaining in dicta that the copyright framework is difficult to apply to aesthetic works such as music which are “not capable of ready classification into . . . constituent elements” the way literary work can be classified into “plot, themes, mood, setting, pace, characters, and sequence of events.”[181]

The Ninth Circuit’s opinion in Swirsky is also relevant for its proposition that substantial similarity can be found based on a combination of elements, “even if those elements are individually unprotected.”[182] For example, in Three Boys Music Corp. v. Bolton,[183] the Ninth Circuit upheld the jury’s finding that two songs were substantially similar due to the presence of the same five individually unprotectable elements: “(1) the title hook phrase (including the lyric, rhythm, and pitch); (2) the shifted cadence; (3) the instrumental figures; (4) the verse/chorus relationship; and (5) the fade ending.”[184] Even though courts filter out unprotected elements such as expression that are commonplace within a genre, they reconsider these elements in examining whether there is a unique combination of elements.[185] However, the protection granted to a unique combination of elements is “thin,” applying only to the combination itself, not the individual elements, and protecting only against “virtually identical” copying.[186]

II. The Roots, Flaws, and Legacy of Arnstein

Though Arnstein remains the majority approach to analyzing copyright infringement,[187] the opinion has attracted much criticism. This part will begin by detailing the flaws of Arnstein, and its progeny, including Krofft. Arguing that Arnstein lacks objectivity by relying on the “impression” of the lay observer and limiting the use of expert testimony,[188] this section will consider courts’ classification of misappropriation as a subjective factual question for the jury, rather than as a legal question with its own standard. This part will argue that the treatment of the “aesthetic arts” as incapable of technical analysis is the root of its subjective treatment of misappropriation. Finally, this part will argue that in relying on the general public, untrained in artistic assessment, the courts risk finding infringement based on similarities that are attributable to common sources.[189]

A. Problems with Arnstein and the Ordinary Observer

Without detailed analysis, filtering out unprotectable ideas, or guidance from experts on the artistic merits of the works at issue, little assurance remains that jurors will decide the issue of misappropriation in keeping with the law. This section will explore why relying on the reaction of laymen is problematic in the context of copyright law. While jury instructions attempt to solve the problem, this part will examine why such abstract guidance is often more confusing than helpful, as judges themselves seem baffled by the blurry line of where an idea ends and its expression begins.

While the ordinary observer test attempts to utilize the “reasonable person” standard found in other areas of the law, its application to copyright is not analogous. In areas such as tort law, the trier is capable of placing himself in the defendant’s shoes to assess the defendant’s actions.[190] In copyright, because the trier often lacks the defendant’s artistic background, the trier cannot reasonably put himself in the defendant’s shoes to consider whether he would have been constrained to copy from the plaintiff in order to achieve the given result.[191] Consequently, the trier is asked to assess the defendant’s actions as if he is an “average lay observer” reacting to whether the defendant’s work appears to have been copied from the plaintiff’s work.[192] Yet copyright is meant to protect artists from the theft of the fruits of their labor, not from the “impression” of theft.[193] While the “spontaneous and immediate” impression of theft is “important evidence,” it cannot be the end-all-be-all test.[194] Given the complexities of copyright law,[195] the ordinary observer simply is not capable of accurately detecting very real appropriation.[196]

While the ordinary observer test has logical value in protecting the artist’s interest in the potential fruits of his labor by looking to the response of the specific market from which those fruits would derive,[197] its methodology for making that determination is lacking. One problem is that it is not clear the trier has knowledge of what constitutes the “lay listener’s” response,[198] especially considering the multitude of possible reactions even among a “target” audience.[199] While expert testimony is permitted to inform the fact finder on the views of the target audience, it is questionable whether qualifying as a music expert establishes “an expertise in the aural perceptions of a lay hearer.”[200] Put another way, “whether an expert, highly educated in the field of music theory, analysis, and history, can in fact hear again as a lay listener is speculative at best.”[201]

Prohibiting expert dissection and analysis on the ultimate issue of misappropriation deprives the trier of information that may be helpful in hearing the music through the ears of the “audience for whom such popular music is composed.”[202] As Professor Nimmer pondered:

If what is to be protected is literary theft, and not the impression of literary theft per se, why, we may wonder, must the view be “uncritical,” and why must there be no suggestion and pointing to similarity, if that suggestion would prove helpful to the trier in seeing that all or a part of plaintiff’s work formed the basis for all or a part of defendant’s work?[203]

Experts could note similarities dictated by the particular type of work at issue that are “most likely insignificant to the ears of the targeted audience familiar with that form or type of work,”[204] thereby helping to ensure that infringement is not found based on common sources or coincidence,[205] and conversely, ensuring that very real appropriation does not go undetected.[206] As Justice Clark, dissenting in Arnstein, noted, the jury is not “‘pre-eminently fitted to decide questions of musical values,’ which are different from an ordinary fact-finding exercise.”[207]

Perhaps the outcome in Arnstein, and thus the bases of our modern law, can be explained by the views of Justice Frank, who wrote for the majority. Frank believed that some judicial decisional processes “like the artistic process, involve[d] feelings that words cannot ensnare” since they contain “overtones inexpressible in words.”[208] For Frank, music was the prime example “of a hunch that was intrinsically incapable of disaggregation.”[209] He wrote, “a melody does not result from the summation of its parts; thus to analyze a melody is to destroy it. It is a basic, primary unit.”[210] Similar language is found in opinions today, including the Ninth Circuit case Swirsky cited earlier.

Attempting to break down what was underlying Frank’s opinion, one commentator argued that the Arnstein court’s exclusion of expert testimony and dissection seemed rooted in the court’s fact-skepticism and unwillingness to entrust the explanation of similarities to experts, preferring instead a “subjective determination,” perhaps in the hopes that a lay-jury trial would confirm the judge’s own subjective hunches.[211]

While courts typically rely on lay jurors to apply the law to the facts of a case at hand,[212] it seems naïve to believe jurors are capable of understanding the complexities of copyright law, particularly the ever elusive idea-expression distinction.[213] Federal judges themselves have found the doctrine difficult to apply,[214] and for good reason as “precision in marking the boundary between the unprotected idea and the protected expression . . . is rarely possible.”[215] Determining what is an “idea” versus an “expression” requires more than mere application of the law; it requires interpretation of the law and consideration of policy. Even with a basic understanding of copyright law, applying the doctrine to music is still more difficult. “What of a song’s music is ‘idea’ and what is ‘expression’?”[216]

While jury instructions attempt to inform jurors of the law,[217] in practice instructions are often an inconsistent, “confusing welter of legal jargon” that may wrongly suggest that any copying, including copying of an idea, counts as infringement.[218] Moreover, clarity in keeping the two different “substantial similarity” inquiries distinct, both in purpose[219] and procedure, is often lacking. Because both the Arnstein and Krofft tests forbid expert testimony on the ultimate issue of misappropriation, fact finders will often have to consider expert analysis and dissection on alleged similarities during the copying-in-fact or extrinsic inquiries, but somehow disregard such testimony on the misappropriation or intrinsic inquiry.[220] “Especially in complex cases, [it is] doubt[ful] that the ‘forgetting’ can be effective when the expert testimony is essential to even the most fundamental understanding of the objects in question.”[221] Moreover, courts often fail to clearly explain the two-step inquiry and the need to disregard testimony presented on the first issue in determining the second.

For example, consider a well-known music plagiarism case, Selle v. Gibb,[222] where the plaintiff, a part-time musician and composer, sued the Bee Gees, alleging that the Bee Gees’ “How Deep is Your Love” infringed the copyright of his song, “Let It End.”[223] Without evidence of access, Selle sought to establish copying-in-fact by showing substantial similarity between the two songs, relying heavily on expert testimony.[224] Yet in making the misappropriation determination, the jury was neither instructed to disregard the expert’s testimony on substantial similarity, nor informed of the two distinct steps of the Arnstein test.[225] Instead, the jury instructions combined the copying-in-fact and misappropriation steps, explaining that “[t]o prove substantial similarity plaintiff must establish…that the average person would recognize [defendant’s song] as having been appropriated from parts of [plaintiff’s song].”[226]

Consider also the jury instructions in the recent “Blurred Lines” trial. Judge Kronstadt’s first instruction to the jury on the copyright infringement standard said that any copying of original elements is unlawful:

Anyone who copies original elements of a copyrighted work during the term of the copyright without the owner’s permission infringes the copyright….[If] 1. the Gaye Parties are the owner of a valid copyright; and 2. the Thicke Parties copied original elements from the copyright work….your verdict should be for the Gaye Parties.[227]

According to this instruction alone,[228] whether the copied element is an unprotectable idea is irrelevant. In attempting to explain the extrinsic/intrinsic analysis, Kronstadt further suggested that copying an idea can count as infringement. Kronstadt instructed the jury to consider similarities in ideas, as well as expression, on the extrinsic test, but he failed to tell the jurors to disregard any similarity in ideas when considering the “concept and feel” during the misappropriation inquiry.[229] Following this questionable guidance seems to be the exact mistake the jury made in finding that Robin Thicke and Pharrell Williams infringed the copyright in Marvin Gaye’s song “Got to Give it Up” by creating their stylistically similar song, “Blurred Lines.”[230]

Fundamentally, the problem with the audience test is that by wholeheartedly relying on the lay juror, the test erroneously treats the question of misappropriation as a pure question of fact. Infringement is far less intuitive, and more complex, than ordinary negligence. Just as the testimony of medical experts is necessary in negligence cases in the context of medical malpractice, copyright is dependent on a technical analysis of works which jurors know little about. Determinations of infringement necessarily involve ad hoc line-drawing that affects artistic incentives and the public’s access to art works. While it is possible to limit and tailor the test, as it stands, it has been disappointingly inaccurate and has been often used as a “verbal formula to explain results otherwise reached.”[231]

B. Krofft: Reconciling Arnstein and the Idea-Expression Dichotomy?

While the court in Krofft seemed to recognize the problems with the Arnstein test in its failure to ensure copyright infringement was only found on a similarity of expression, the Ninth Circuit neglected to explain how its own test would resolve any of the problems presented by the Second Circuit approach.[232] In laying out vague criteria for defining ideas versus expression, the Ninth Circuit left lower courts and artists to their own devices in figuring out where to draw the line.[233] The court itself noted that the extrinsic test is “turbid waters.” “Nevertheless,” it continued, “the test is our law and we must apply it.”[234] Applying the test to artistic works is even more problematic. As the court said in Swirsky, “the extrinsic test provides an awkward framework to apply to copyrighted works like music or art objects, which lack distinct elements of idea and expression.”[235]

By failing to state whether a lack of substantial similarity in ideas is relevant for copying or misappropriation, or both,[236] the extrinsic/intrinsic test fails to isolate the issue of copying from the issue of misappropriation. Focusing on the idea-expression distinction improperly frames the question. Similarity of ideas found during the extrinsic inquiry may be probative of copying, but such similarity does not prove copying of protected expression. Furthermore, the Ninth Circuit never made clear how the ordinary observer could determine if there is a similarity of expression while refraining from dissection and analysis. If anything, fact finders in the Ninth Circuit are left with less expert guidance than in the Second Circuit, as the Second Circuit at least allowed testimony to inform the trier of the intended audience’s likely views rather than leaving them guessing.

As in other jurisdictions using the term, courts applying Krofft struggle to define “substantial.” The focus ranges from audience confusion,[237] to the substantiality relative to the overall work,[238] to the aesthetic or financial value of the portion of the work copied.[239] In the Krofft decision itself, because the works at issue were directed at children, the court focused on the impact of the “total concept and feel” of the works “upon the minds and imaginations of young people.”[240] Thus, some courts adopting the extrinsic/intrinsic framework utilize an “intended audience” test for works that appeal to an audience with “specialized expertise,”[241] therefore allowing the use of expert testimony. Yet such works have been narrowly construed and usually only include computer software.[242] Most courts applying the Ninth Circuit test determine the likelihood of audience confusion by simply comparing the “total concept and feel” of the works to the ordinary observer as determined by jurors with no specialized training or expertise.[243]

Courts that look to the value of the elements at issue criticize the “total concept and feel” approach for failing to maintain the idea-expression distinction during the misappropriation analysis. As the Ninth Circuit stated in Cooling Systems & Flexibles, Inc. v. Stuart Radiator,[244] “What is important is not whether there is substantial similarity in the total concept and feel of the works . . . but whether the . . . amount of protectable expression in Cooling Systems’ catalog is substantially similar to the equivalent portions of [the defendant’s] catalog.”[245] The court in Cooling Systems stated that the intrinsic test must take into consideration the nature of the elements that were allegedly infringed,[246] reasoning that “the fewer the methods of expressing an idea, the more the allegedly infringing work must resemble the copyrighted work in order to establish substantial similarity. . . .”[247] Yet the court continued to prohibit the aid of dissection, analysis, and expert testimony, failing to explain how an ordinary observer lacking expertise could make such a determination.[248]

C. The Modern Music Dilemma

While creators of musical works have struggled to extend copyright beyond its natural borders since the Statute of Anne was enacted, the inexact fit of music in our copyright doctrine has only become more obvious with the invention and popularity of sampling technology. Since the advent of digital sampling technology in the 1960s, the art of taking a portion, or sample, of a sound recording and repurposing it to make a different song has become engrained in nearly every popular musical genre.[249] Yet, after the industry-shattering decisions in Grand Upright Music, Ltd. v. Warner Brothers Records Inc.,[250] and Bridgeport Music, Inc. v. Dimension Films,[251] which resulted in a bright-line rule against de minimis copying of even three notes of a sound recording,[252] artists need to seek licensing rights to sample a sound recording. However, the costs to do so are often prohibitive, both in terms of negotiating fees and contacting often-elusive copyright owners.[253] Consequently, many artists have turned to re-creating segments of prior musical compositions for use in their own works, a practice known, at least in the hip-hop industry, as “interpolation.”[254] Though creative borrowing of this type is deeply embedded in art history, after the Blurred Lines verdict it seems songs that interpolate prior works are also at risk of extinction.

While we may be lacking strong evidence that copyright actually encourages creativity,[255] copyright can suppress the creation of works of a specific nature.[256] After Grand Upright put “the fear of God” in recording companies, artists releasing a record on a major label were forced to clear every sample used.[257] As a result, songs composed of various samples from multiple sources were no longer possible. Records like Paul’s Boutique by the Beastie Boys, which is almost entirely composed of 104 samples, would be “financially and bureaucratically impossible” today.[258] Each sample would have to be cleared by obtaining two different licenses from two different rights holders: the owner of the sound recording and the owner of the underlying composition. To make matters more complicated, additional licenses are needed if the sampled song contains samples itself, as is increasingly the case today.

While artists can obtain a compulsory license to create a cover of a prior song, using only a portion of a song while substantially altering “the melody or fundamental character of a work” falls outside of the range of the statutory license,[259] even though doing so entails more originality and less substantial similarity.[260] Newcomers are back in the position of having to seek permission and pay whatever rights holders demand,[261] or face the risk of hefty legal judgments and court costs.

For well-known songs, the costs to license are often as high as 100% of the royalties generated by the new song, and sometimes higher. Mark Ronson, a music producer and sampling guru, analogizes the process of creating his debut album, Here Comes the Fuzz, to the process of producing the fictional musical in the play, The Producers. In creating the track, “Ooh Wee,” Ronson wanted to sample two different songs by two different artists: a drum sample from Dennis Coffey’s song “Scorpio,” and a string sample from a cover of Boney M’s song “Sunny.” Collectively, the owners of the rights wanted 125% of the song’s royalties. Believing the samples to be necessary to the “emotional effect” and “toughness of the beat,” Ronson said he had to do it: “I had to pro-rate my entire album down so I could rob this song to pay that guy….”[262] In hindsight, the decision may have made his career, as the song ended up being the lead single and a chart-topper.[263]

Rights holders can always refuse clearance entirely, as they often do. When musician and producer Danger Mouse put out The Grey Album, which splices together samples from The White Album[264] by the Beatles with an a cappella version of The Black Album by rapper Jay-Z, the recording company that holds the Beatles’ copyright was able to prevent the album’s distribution, despite approval from both Jay-Z and the surviving members of the Beatles.[265]

Since Grand Upright, it has become largely impossible to create songs using more than one or two samples. As a result, industry practice and the sound of hip-hop music abruptly changed. Artists turned to heavily interpolating a few samples per song, particularly from artists who are amenable to having their music sampled. Dr. Dre’s production style, which was highly influential in spawning an entire era in hip-hop, changed from outright sampling to heavily interpolating the 1970s funk band, Parliament.[266] Dre’s style changed hip-hop forever, as G-funk, defined by Parliament’s influence, became the most popular genre in hip-hop during the 1990s.[267]

While some artists are still producing heavily-sampled albums, it seems only those with the most obvious fair use defense are confident enough to do so without a license, perhaps recognizing the strength of their defense and realizing record companies would rather not risk setting bad precedent.[268] The D.J. Gregg Gillis, better known as Girl Talk, is perhaps the most notorious sampler; he uses hundreds of small samples on a single album, never licenses anything, generates tons of publicity, and is never sued. As Gillis put it, with so many samples, “[i]t would take you hundreds of hours of work and hundreds of thousands of dollars to clear the rights to this album even if you wanted to.”[269] Yet, Girl Talk’s business is not without harm. Both iTunes and a CD distributer refused to carry his most recent album, Night Ripper, because of legal concerns.[270]

While Girl Talk might feel confident in his defense, anyone using a sample in a more qualitatively and quantitatively significant way is likely to fear settlement fees, or worse, high statutory damages. Even with a seemingly good defense, those with less fame than Girl Talk, or Pharrell Williams, are less likely to take the risk. When part of the beauty of digital sampling technology lies in its removal of bars to entry, allowing a twenty-year-old kid to create a critically acclaimed album with cheap technology,[271] cases like Grand Upright and “Blurred Lines” leave the next Dr. Dre on the margins.

Although Dr. Dre’s debut album immortalized Parliament’s style as an entire hip-hop genre in and of itself, and the release of “Blurred Lines” landed “Got to Give it Up” back on the Billboard 200 after a decade’s long hiatus,[272] the courts have ignored the economic reality of homage and have placed it on par with theft. A justified reason for deeming musical borrowing as theft is lacking when artists of all mediums, from classic literature to appropriations art, have borrowed from their predecessors without anyone taking notice, or under the defense of “fair use.”[273] One rationale is that our copyright law is based in the romantic conception of authorship, that is, the notion that the author has the right to control the context of his work and should be able to object to “her work [being] sampled and added into a work she finds repugnant.”[274] However, applying moral rights arguments to the issue does not serve the Intellectual Property Clause’s purpose of striking a balance between economically incentivizing the production of creative works and maintaining public access to those works.[275]

The current tests do not adequately balance the impact of copyright on creativity. Rather, courts focus more on the potential harm to the plaintiff’s market[276] than on assuring “access to the raw materials that artists need to create in the first place.”[277] Progress and culture depend on the accumulation of aesthetic works. By granting property rights in creative building blocks and requiring new works to be wholly different from prior works, the courts are treating the arts like science and technology, where progress means improving. However, progress in the arts is valued for reasons beyond efficiency. Society benefits from the accumulation of artistic works and the mere experience of making them.[278] “Culture . . . is a social phenomenon. It is not the creation of one or another artist, but of many doing somewhat similar things.”[279] The scènes à faire doctrine is one way of protecting free access to artistic materials. But with jurors unable to appreciate the balance of these competing interests, we risk skewing it in a way that stifles creativity.

1. Scènes à Faire in Music: “Blurred Lines” as a Case in Point

Credited as a Billboard’s Song of the Summer for 2013,[280] and the best-selling single of 2013,[281] it is no wonder the controversies over Robin Thicke and Pharrell Williams’s song “Blurred Lines” made so many headlines. The song was controversial from its release date, featuring arguably misogynistic, “rapey” lyrics,[282] and a music video that was removed from, and then censored on, YouTube for violating the site’s policies regarding nudity.[283] Then came the copyright controversy. Marvin Gaye’s family accused Thicke and Williams of copying the “feel” and “sound” of Gaye’s “Got to Give It Up,” [284] the song Thicke even publicly noted as the influence for “Blurred Lines.”[285] Therefore, the issue in the “Blurred Lines” case revolves around whether Thicke and Williams illegally interpolated original elements of Marvin Gaye’s musical composition.

In response to the allegations, Thicke and Williams sought a declaratory judgment that “Blurred Lines” did not infringe upon “Got to Give It Up.”[286] When that failed, and inevitably backfired with the Gaye family filling a cross-complaint, the plaintiffs moved for summary judgment, claiming that the eight alleged similarities between the songs are based on elements of Gaye’s sound recording that are not part of the copyright that Gaye’s family claims to own.[287] According to the Gaye family’s expert report, these eight“substantially similar features” include: (1) the signature phrase; (2) hooks; (3) hooks with backup vocals; (4) the core theme in “Blurred Lines” and the backup hook in “Got to Give It Up”; (5) backup hooks; (6) bass melodies; (7) keyboard parts; and (8) unusual percussion choices.[288] The family’s expert also alleged that the songs share similar “departures from convention such as the unusual cowbell instrumentation, omission of guitar and use of male falsetto.”[289]

Though most of these elements are not part of the underlying composition, and the melodies of the two songs are arguably completely different (“one’s minor and one’s major. And not even in the same key”[290]), the court found that the Gaye family made a sufficient showing of substantial similarity to satisfy the extrinsic test and the issue went to trial.[291] The jury found against Thicke and Williams with a judgment topping $7.3 million, one of the largest ever in music copyright history.[292] While Thicke’s and Williams’s fortune and fame seem unlikely to be tarnished, with each of them earning over $5 million for the song itself, [293] the verdict shows how misguided results can be under our infringement tests. In misapplying the already confusing Ninth Circuit test for substantial similarity, the court protected musical style and genre under the guise of protecting an original combination of elements. As one composer and producer put it, the court “made it illegal to reference previous material. . . . I’m never going to come up with something so radically different that it doesn’t contain references to something else.”[294] While the creators of “Blurred Lines” have already decided to appeal the verdict,[295] if it is upheld, artists on the margin, who are less willing to take on legal fees and whose work is less in tune with romantic authorship, will be discouraged from “creating any new songs that evoke the feel of the music that inspired them in their youth.” Further, “with the length of copyright we have these days, artists who want to feel confident that their musical influences are in the public domain are going to have to go all the way back to ragtime.”[296]

The verdict reached is procedurally problematic for a few reasons. Under the current Ninth Circuit test, the court erred in allowing the jury to hear excerpts of the sound recordings for “Got to Give It Up” and “Blurred Lines,”[297] which contained elements that are not part of Gaye’s written composition and, therefore, not part of his copyright.[298] Though the background chatter, party noise, and percussion, are common to both songs and contribute to the instinctive feeling that “Blurred Lines” “reminds” us of “Got to Give It Up,” they are totally irrelevant to the issue of substantial similarity.[299] Yet, these elements seemed to sway the jury in reaching its verdict.

Many, if not all, of the elements in “Got to Give It Up” are unoriginal staples in funk music, from the walking down funky bass line to the falsetto and melisma hook,[300] but Judge Kronstadt, applying the extrinsic test on summary judgment, held that a genuine issue of material fact existed either on the similarity to protectable elements, or on the similarity to an original combination of elements.[301] To show that the allegedly infringing elements are unprotectable scènes à faire, the defendants’ expert cited multiple prior songs that used many of the same allegedly infringing elements.[302] Judge Kronstadt still ruled that the testimony was not sufficient, citing Swirsky for the idea that the defendants failed to show that the plaintiff’s work is “more similar” to prior works than it is to the defendants’ work.[303] Yet the issue in Swirsky, and here, was whether the individual elements are scènes à faire, not whether the works as a whole are unoriginal.[304] Thus, Kronstadt’s reliance on Swirsky’s “more similar to prior works” language is misplaced, and bypasses actual consideration of the protectability of the elements themselves.[305] The court thereby failed to dispose of the issue of whether the defendants copied original elements on summary judgment, leaving the question to the jury.

In erroneously applying the “more similar” to prior works test to the works as a whole, Kronstadt further failed to consider the actual test for copying a combination of unprotectable elements: whether the works are “virtually identical.” As Pharrell and Thicke argued, the requirement for originality in a combination of unoriginal elements is much more stringent than the usual “some minimal level of creativity.”[306] The elements need to be “numerous enough and their selection and arrangement original enough that their combination constitutes an original work of authorship.”[307] Furthermore, infringement can only be found if the defendant’s work is “virtually identical” to the copyrighted work.[308] While many might say the two songs sound similar, with entirely different melodies and lyrics, one cannot maintain that the songs are “virtually identical,” especially when the misappropriation inquiry is supposed to be based solely on the written melodies, chords, and lyrics.[309] Even still, copying that is virtually identical may fall within the merger doctrine – that is, it may be an unavoidable product of using the same idea, which as discussed above is not a protectable interest.[310]

Because Judge Kronstadt determined that Pharrell and Thicke failed to meet the stifling burden of “more similar” to prior works on summary judgment, the final decision went to the jury to be based on their spontaneous reaction unguided by musicologists and uninstructed by the court on the “virtually identical” standard. Thus, the simple instinct that “Blurred Lines” felt like “Got To Give It Up” determined the verdict, regardless of the law. Yet, if the “feel of a work is sacrosanct,” many songs would be illegal for simply being a part of a “derivative and rigid genre,” as is often the case in music.[311]

When genres and subgenres have been inspired by one song, privatizing common elements can only do harm. Musicians like Marvin Gaye still have the incentive to create, especially with the notoriety and revitalized publicity that comes with a new artist referencing an old song. A reference from today’s stars can make a music legend. Snoop Dogg’s cover of Slick Rick’s 1985 hit “La Di Da Di,” and Notorious B.I.G.’s sample of it in “Hypnotize Me,” made Slick Rick’s song the most sampled rap song of all time. Dr. Dre’s use of the drum-break from The Wintons’ “Amen, Brother” started a narrative that led this little known band to have arguably the most sampled song of all time. The Amen Break has been used in over 1,700 songs and has become the basis for drum-and-bass and jungle music.[312]

Despite the notoriety and financial benefits of being sampled, by looking to our skewed notions of authorship, both judges and juries alike are trigger-happy to find copyright infringement when there is so much as a waft of homage. Their intentions are well wrought in a desire to protect the “genius” of artists loved by generations. However, that desire is based on notions of fairness, and copyright was never meant to protect artists’ moral rights in their works. Incentives to create have always been the only concern, balanced against maintaining public access to creative works. Yet “discussions of copyright and its goals frequently conflate the compensatory and control aspects of copyright on the incentive side.”[313]

If we expand the copyright in an original selection and arrangement to find infringement when any song includes just some of its elements, the blurry standard determining how many elements count as copying will result in risk-averse content creators. When nothing is truly original or avant-garde in music, the safe route in creating content is not clearly laid out either. Even if artists can be completely progressive, it is not clear they will be rewarded for doing so. Popular content is popular for a reason, and the benefits of creating it will be limited to the lucky first comers who hold a monopoly on elements they did not even create simply because they strung them together first. The success of “Blurred Lines” might be due, at least in part, to its ability to incorporate so many nostalgic funk clichés at once, all in the context of a modern pop song. Moreover, the enjoyment derived by the public from having an expanse of options to choose from will be lost. Of course, the effects of prohibiting “inspired works” will touch on industries beyond music, covering the fine arts, dance, and anything covered by copyright.

III. Considering Dissection and Reversed Questions of Law and Fact

When copyright infringement is meant to prohibit the copying of protectable elements of a work, it seems that the audience test, unguided as it is, can “play no useful role” in fulfilling the goals of copyright law.[314] Expert testimony and analytic dissection are necessary to maintain the distinction, both at the copying and misappropriation stages of the inquiry. More specifically, courts should be informed fully of the broader contexts within which specific artistic works are created.

While some courts recognize Arnstein’s limits and allow expert testimony when works are of a “highly technical nature,” thus far only computer software has met this characterization.[315]

The courts’ unwillingness to see “aesthetic arts, such as music, visual works or literature” as sufficiently complex to warrant the aid of expert guidance is merely an artifact of indoctrinated opinions on the nature of aesthetics. Yet with culture becoming ever more aware of its recombinant nature,[316] and the arts becoming increasingly technical in the age of digitalization, it is necessary to alter the current infringement tests in order to encompass varying artistic theories.

Courts need to act as gatekeepers, preventing an onslaught of needless and threatening litigation by deciding whether there is a cognizable claim of misappropriation and identifying the unprotectable elements in a work before sending the intuitive issue of copying to the trier. There have been many scholarly suggestions for reforming the two-part test. This part considers adoption of a proposal first suggested by Nimmer and expanded by Professor Lemley: extending the “abstraction-filtration-comparison” (AFC) test for computer software to all cases deciding copyright infringement.[317]

First adopted by the Second Circuit in Computer Associates v. Altai,[318] the AFC test requires the court to identify which aspects of the program constitute its expression versus ideas (“abstraction”), remove from consideration unprotectable ideas (“filtration”), and only then compare whether the defendant copied the protectable elements (“comparison”).[319]

Following Altai, the AFC test was widely adopted in determining substantial similarity in the non-literal aspects of computer programs. However, as Nimmer notes, “there is no reason to limit it to that realm.”[320] In fact, the AFC method is more consistent with the Supreme Court’s definition of infringement (along with ownership of a valid copyright) as the “copying of constituent elements of the work that are original.”[321] Whether expert testimony is permitted, and to what extent, is left to the discretion of the district court.[322] This approach allows the court flexibility in determining the necessity of expert testimony depending on the complexity and nature of the works at issue. A court might therefore determine that the issue of substantial similarity in a case involving generic pop songs would best be determined by lay jurors, but in most cases where songs mix genres and traditions, the court would need the testimony of experts well versed in the nature of the art at issue.

Given that nearly every circuit already permits expert testimony on both prongs of the copyright infringement test in software cases,[323] adopting the AFC test wholeheartedly seems like a more feasible path to altering the current framework than other suggested reforms.[324] In fact, the Tenth Circuit already applies the AFC test for all copyright infringement cases, and the Sixth Circuit uses a variation of the Tenth Circuit test.[325] As discussed above, expanding the role of analytic dissection and expert testimony will result in better maintenance of the idea-expression distinction and respect for the limits to copyright protection. Moreover, allowing expert testimony in guiding the jury will solve the problem of juries having trouble disregarding the testimony they hear on the copying-in-fact prong in deciding misappropriation.

Professor Lemley suggests a further change: reserving the issue of misappropriation to the court as a question of law, to be determined on summary judgment. The role of the jury would be preserved in leaving the intuitive issue of whether the defendant copied as a question of fact.[326] According to Lemley, this seems to be the “practical import” of the AFC test.[327] Reversing the judge-jury role would better serve the interests of copyright, as the issue of which elements are protectable and unprotectable in any given work implicates substantial policy considerations and interpretation of the law better suited for a judge well-versed in the law.

Moreover, by providing written judicial opinions, this altered framework would allow a reasoned jurisprudence to develop on the issue of which elements are protected. The transparency and predictability of the law would allow artists a safe harbor and guaranteed protections in creating new works, thereby preventing the chilling effects of a potentially devastating lawsuit.

Taking reform a step further, Professor Balganesh suggests reversing the order of the test.[328] That is, have the court determine misappropriation as a question of law on summary judgment, filter out what is sent to the jury, and then have the jury determine the question of copying-in-fact of “protected expression.” The jury would still hear evidence on the issue of “protected expression,” including expert testimony on whether elements are scènes à faire or original in the area or genre, and even on the ultimate issue of similarity between the works and probative similarity. The jury would also hear the judge’s own dissection from the first step.[329] Balganesh argues that reversing the framework would encourage disposition on summary judgment, providing judges with a real gate-keeping role.[330] Moreover, it removes the subjectivity of the audience test, which he argues was based in mere skepticism towards rules, judges, and the law.[331]

While reversing the ordering might offer the benefit of preventing the judge’s determination of misappropriation from improperly influencing the jury’s probative similarity analysis, almost every court has adopted some version of the Arnstein-Krofft test,[332] which might make it difficult to persuade courts to do exactly the opposite.

At least preliminarily, extending the AFC approach seems more feasible and the need for dissection and expert testimony most ripe. Allowing the judge to determine the question of misappropriation as a matter of law, while preserving the issue of copying-in-fact for the jury, removes the inherent subjectivity and messiness of the audience test while complying with the constitutional mandate of jury trials in copyright lawsuits.[333] Furthermore, it uses juries for the role they are best suited for: the intuitive and fact-dependent question of whether the defendant copied.

On both questions, expert testimony can aid the court in understanding the nature of the work at issue. The controversy over sampling, for example, focuses on the taking rather than the contribution. Yet, experts in musicology know that sampling can be transformative. As D.J. Shadow put it, sampling is a way to reintroduce a person’s music to people “in a completely different context than the way they originally intended.”[334] Mark Ronson similarly explained that through sampling artists insert themselves in a narrative and push that narrative forward.[335]

An expert might testify that sampling extends an African American oral tradition known as “signifying,” a type of word play that draws attention to the cultural significance of the words.[336] For example, an expert could explain that the Beastie Boys’ line “I shot a man in Brooklyn just to watch him die” places Johnny Cash’s line “I shot a man in Reno just to watch him die” in a new setting – a hip-hop anthem called “Hello Brooklyn” – thereby removing the ideas of consequences and regret found in the context of Cash’s murder ballad.[337] An expert could note that while sampling might intuitively seem like theft, it is no more so theft than quoting a passage from another book in a novel.[338] Rather, sampling is a form of textual revision and a literary device through which text speaks to text.[339] Through sampling, 2 Live Crew relied on repetition of the key elements of “Oh, Pretty Woman” to achieve a parody of the song.[340]

Our current framework for copyright infringement fails to inform courts of the artistic merits behind our most illustrative and progressive artistic movements. In perpetuating the courts’ biases, copyright is its own worst enemy, stifling innovation where it is most likely to happen: on the margins.

Conclusion

Though the problems with copyright pose unique problems for music, these problems reflect the larger difficulties in our current copyright law. Our infringement doctrine inhibits progress by making “substantial similarity” the end-all-be-all test. The generalized focus on substantial similarity leaves homages and similarities inherent in the genre subject to findings of infringement because the law, like our culture, sees derivative works as unworthy. But what is originality? As music producer and sampling guru Mark Ronson said in an interview with NPR: “Well, what’s the T.S. Eliot quote, which apparently he even stole from Picasso, about ‘Genius steals…?’ ‘Good artists borrow, great artists steal.’”[341] How we define “Progress of Science and useful Arts” is rooted in the dominant cultural beliefs of aesthetic value, but innovation comes with embracing progressive ideas and more of them.[342] The law needs to protect a new kind of originality, one that might not fit the Romantic mold, but that re-conceptualizes and re-frames preexisting works and provides listeners with a different experience than the original. The most important question should be what the newcomer added: how they took influences to make something new, because progress never involves creating something from nothing.



* J.D. Class of 2016, New York University School of Law; B.A. Philosophy, Politics, and Law, magna cum laude, Binghamton University. The author would like to thank Professor Christopher Sprigman for his inspiration and guidance and the 2016-2017 Editorial Board of the NYU Journal of Intellectual Property and Entertainment Law for their encouragement.

[1] See Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 251 (1903) (“It would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of pictorial illustrations, outside of the narrowest and most obvious limits.”).

[2] See generally Alfred C. Yen, Copyright Opinions and Aesthetic Theory, 71 S. Cal. L. Rev. 247, 251, 285–86 (1998) (arguing that “judges necessarily make decisions of aesthetic significance in copyright” as implicit in determining whether elements are “public domain,” or if they are “protected material.” Moreover, substantiality rests on “how sensitive” courts are to the degree of quantitative and qualitative similarity between two works).

[3] Id. at 251 (“[S]ince no aesthetic perspective can be neutral and all-encompassing, aesthetic bias becomes inherent in copyright decisionmaking . . . .”).

[4] See, e.g., Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930); Brandir Int’l, Inc. v. Cascade Pac. Lumber Co., 834 F.2d 1142 (2d Cir. 1987); Carol Barnhart Inc. v. Economy Cover Corp., 773 F.2d 411, 415–18, 420 (2d Cir. 1985).

[5] See Olufunmilayo B. Arewa, From J.C. Bach to Hip Hop: Musical Borrowing, Copyright and Cultural Context, 84 N.C. L. Rev. 547, 565(2006) (“Although originality is not explicitly included in the Intellectual Property Clause of the U.S. Constitution, it is a fundamental assumption of current copyright law that originality is implicitly mandated by the Constitution’s references to ‘authors’ and their ‘writings.’”) (citations omitted); see also U.S. Const. art. I, § 8, cl. 8 (“The Congress shall have Power . . . To 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.”).

[6] See generally Amy B. Cohen, Masking Copyright Decisionmaking: The Meaninglessness of Substantial Similarity, 20 U.C. Davis L. Rev. 719, 720 (1987).

[7] H.R. Rep. no. 94-1476, at 61-62 (1976); S. Rep. No. 94-473, at 71 (1975) (“[A] copyrighted work would be infringed by reproducing it in whole or in any substantial part, and by duplicating it exactly or by imitation or simulation.”) (emphasis added).

[8] Davis v. Gap, Inc., 246 F.3d 152, 173 (2d Cir. 2001).

[9] Shyamkrishna Balganesh, The Questionable Origins of the Copyright Infringement Analysis, 68 Stan. L. Rev. 791, 805 (Forthcoming 2016).

[10] Atari, Inc. v. N. Am. Phillips Consumer Electric Corp., 672 F.2d 607, 614-15 (7th Cir. 1982).

[11] Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 13.03[a][i] (2002).

[12] Scène à faire is the notion that certain similarities in the basic idea will require similarities in the expressions used to develop that idea. For example, “if two scenarios wish to treat the unprotected idea of police life in the South Bronx, one court has determined it would only be natural to depict ‘drunks, prostitutes, vermin and derelict cars,’ juxtaposed against hard drinking Irish cops chasing fleeing criminals.” Id. (citations omitted).

[13] Mark A. Lemley, Our Bizarre System for Proving Copyright Infringement, 57 J. Copyright Soc’y U.S.A. 719, 738 (2009) (alteration in original).

[14]See infra Part II.A (discussing how this need for, and lack of, special expertise in copyright makes the “ordinary observer” test a poor extension of the rationale underlying the negligence standard used in areas such as tort law).

[15] Balganesh, supra note 9, at 805 (explaining that the misappropriation inquiry requires procedural, substantive, and theoretical considerations).

[16] See generally Arewa, supra note 5 (noting that American copyright law is founded on the unrealistic conception that creativity necessarily comes from a place of pure autonomous genius).

[17] Lemley, supra note 13, at 739 (citing Ann Bartow, Copyrights and Creative Copying, 1 U. Ottawa L. & Tech. J. 77 (2003) (suggesting that this has been the result)).

[18] See generally Jeffrey Cadwell, Expert Testimony, Scenes A Faire, and Tonal Music: A (Not So) New Test for Copyright Infringement, 46 Santa Clara L. Rev. 137 (2005) (arguing functional constraints make music prone to tendencies and commonalities).

[19] See generally Alice Kim, Expert Testimony and Substantial Similarity: Facing the Music in (Music) Copyright Infringement Cases, 19 Colum.-VLA J.L. & Arts 109, 124–125 (Fall 1994/Winter 1995) (arguing that music operates by such complexities and intricacies, especially in today’s technological world as “all pieces of music, contain elements of ‘melody, harmony, . . . rhythm [,] . . . [t]imbre (tonal quality), tone, pitch, tempo, spatial organization, consonance, dissonance, phrasing, accents, note choice, combinations, interplay of instruments, . . . bass lines, and the new technological sounds.’”) (quoting Debra Presti Brent, The Successful Music Copyright Infringement Suit: The Impossible Dream, 7 U. Miami Ent. & Sports L. Rev. 229, 248–49 (1990)).

[20] See id. at 124.

[21] Callie L. Pioli, Copyright: Infringement v. Homage, (September 17, 2015, 8:11 AM), http://www.mbbp.com/news/blurred-lines-copyright (noting that the lesson from the Blurred Lines decision is that “creating music ‘reminiscent’ of an era or paying homage to the genre-creating greats of past decades may not hold as a defense to copyright infringement under the current substantial similarity framework.”).

[22] See Cadwell, supra note 18, at 127 (arguing that an analogy between music and software does not seem inappropriate and thus proposing that the substantial similarity test does not suit the technical nature of music as well as permitting expert testimony would).

[23] See generally Arewa, supra note 5, at 581, 584-85 (arguing that in viewing classical composers as artistic geniuses, failing to appreciate their practice of borrowing from the past, and hip-hop artists as mere craftsmen, legal discourse is perpetuating culturally rooted prejudices against the “other,” as most modern genres originated in African cultures).

[24] Id. at 587(“this vision of musical authorship based upon notions of creativity, invention, originality and even genius is far too restrictive a representation of musical creation.”).

[25] Harold Lloyd Corp. v. Witwer, 65 F.2d 1, 18 (9th Cir. 1933), cert. denied, 296 U.S. 669 (1933).

[26] Eriq Gardner, ‘Blurred Lines’ Jury Orders Robin Thicke and Pharrell Williams to Pay $7.4 Million, Hollywood Rep. (March 10, 2015, 2:33 PM), http://www.hollywoodreporter.com/thr-esq/blurred-lines-jury-orders-robin-779445.2.

[27] This test is currently reserved for computer software cases. See Computer Assocs. Int’l, Inc. v. Altai, Inc., 982 F.2d 693, 707 (2d Cir. 1992) (“Professor Nimmer suggests, and we endorse, a ‘successive filtering method’ for separating protectable expression from non-protectable material.”).

[28] Cf. id.

[29] Lemley, supra note 13, at 741.

[30] Balganesh, supra note 9, at 855-58.

[31] Arnstein v. Porter, 154 F.2d 464, 478 (2d Cir. 1946) (Clark, J., dissenting) (“Further, my brothers reject as ‘utterly immaterial’ the help of musical experts as to the music itself (as distinguished from what lay auditors may think of it, where, for my part, I should think their competence least), contrary to what I had supposed was universal practice . . . .”).

[32] See generally Robert Kirk Walker & Ben Depoorter, Unavoidable Aesthetic Judgments in Copyright Law: A Community of Practice Standard, 109 Nw. U.L. Rev. 343, 376 (2015) (proposing that experts brief the court on the aesthetic norms and traditions that inform the works at issue so that the hypothetical viewer is not limited to any specific aesthetic theory and can react sensitively to the nature of the work presented).

[33] See Barton Beebe, Intellectual Property Law and the Problem of Aesthetic Progress, Inaugural Lecture of the John M. Desmarais Professorship of Intellectual Property Law, NYU Law News (Feb. 3, 2014), http://www.law.nyu.edu/news/barton-beebe-inaugural-desmarais-lecture.html (discussing the courts’ failure to recognize that the framers intended to quarantine the fine arts from copyright law, as evident in the progress clause specifying “useful arts,” and the resulting lack of a developed idea of what aesthetic expression means); see also Walker & Depoorter, supra note 32, at 344-45 (explaining how courts shy away from judging art for fear that they are “incompetent to do so”) (citing Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 251 (1903)(“It would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of pictorial illustrations, outside of the narrowest and most obvious limits.”)).

[34] Michael W. Carroll, The Struggle for Music Copyright, 57 Fla. L. Rev 907, 934 (2005).

[35] U.S. Const. art. I, § 8, cl. 8 (alteration in original).

[36] See Act of May 31, 1790, ch. 15, 1 Stat. 124.

[37] William F. Patry, Copyright Law and Practice, The Bureau of National Affairs (2000), available at http://digital-law-online.info/patry/patry5.html.

[38] 8 Anne, ch. 19 (1710) (Eng.), http://www.copyrighthistory.com/anne.html.

[39] The first copyright action for a musical work, Bach v. Longman, 98 Eng. Rep. 1274, 1275 (K.B. 1777), was brought under the Statute of Anne by Johann Christian Bach on account of unauthorized editions, published by music publishers Longman & Lukey, of two Bach works, a lesson and a sonata. “Bach brought the suits seeking to effect legal changes to provide composers with copyright protection equal to that of authors.” Arewa, supra note 5, at 557–58.

[40] Arewa, supra note 5, at 568.

[41] Id. at 556.

[42] See 17 U.S.C. § 102(a)(7) (2000) (granting copyright protection to sound recordings).

[43] Paul Théberge, Technology, Creative Practice and Copyright, in Music and Copyright at 140 (Lee Marshall and Simon Frith eds., 2nd ed. 2004).

[44] Arewa, supra note 5, at 556.

[45] Id. at 625.

[46] Id.

[47] Id. at 556-57.

[48] Id. at 557.

[49] Id. at 626 n.445 (citing Aaron Keyt, Comment, An Improved Framework for Music Plagiarism Litigation, 76 Cal. L. Rev. 421, 432 (1988)).

[50] Id. at 614.

[51] See, e.g., LIVELOVEASAPVEVO, A$AP ROCKY – Wild For The Night (Explicit) ft. Skrillex, Birdy Nam Nam, YouTube (Feb. 10, 2016), https://www.youtube.com/watch?v=1eWdbMBYlH4.

[52] Youyoung Lee, OVER IT: It’s Time To Retire The Word “Haters,” The Huffington Post: The Blog (June 25, 2013, 4:50 PM), http://www.huffingtonpost.com/youyoung-lee/over-it-its-time-to-retire-haters_b_3492129.html (citing as an example the song “Players Gon’ Play,” by the all-girl group 3LW).

[53] Michael Epstein, Taylor Swift Is Being Sued for $42 Million for Singing “Haters Gonna Hate” in “Shake it Off,” Flavorwire (Nov. 2, 2015), http://flavorwire.com/545712/taylor-swift-is-being-sued-for-42-million-for-singing-haters-gonna-hate-in-shake-it-off.

[54] See Arewa, supra note 5, at 622.

[55] Carroll, supra note 34, at 949 (citing Charles Burney, A General History of Music (Dover 2d ed. 1957)); see also id. at 952 (arguing that by limiting protection to books, as opposed to single songs, the Statute of Anne was enacted only to protect “those who had advanced the cause of learning by producing books.”).

[56] C33/442 London Public Record Office (1772), reprinted in Ronald J. Rabin & Steven Zohn, Arne, Handel, Walsh, and Music as Intellectual Property: Two Eighteenth-Century Lawsuits, in 120 J. of the Royal Musical Ass’n 112, 140-45 (1995).

[57] Carroll, supra note 34, at 950.

[58] Id. (citing Pyle, C33/442 London Public Record Office, at 143).

[59] Peter Jaszi, Contemporary Copyright and Collective Creativity, in The Construction of Authorship: Textual Appropriation in Law and Literature 29, 40 (Martha Woodmansee & Peter Jaszi eds., 1994) (“Eighteenth-century theorists . . . minimized the element of craftsmanship . . . in favor of the element of inspiration, and they internalized the source of that inspiration. That is, the inspiration for a work came to be regarded as emanating not from outside or above, but from within the writer himself.”).

[60] Amy B. Cohen, Copyright Law and the Myth of Objectivity: The Idea-Expression Dichotomy and the Inevitability of Artistic Value Judgments, 66 Ind. L.J. 175, 203 (1990); see also Arewa, supra note 5, at 566 n.80 (Romantic ideals emphasize “original ideas rather than ‘successive elaborations of an idea or text by a series of creative workers.’”).

[61] Arewa, supra note 5, at 566.

[62] At least music composed in the twelve-tone scale.

[63] Arewa, supra note 5, at 590.

[64] As a consequence, “inspired work was made peculiarly and distinctively the product – and the property – of the writer.” Id. at 566-67 n.82.

[65] Arewa, supra note 5, at 592.

[66] Cohen, supra note 60, at 204.

[67] Id. at 201.

[68] Holmes v. Hurst, 174 U.S. 82, 86 (1899).

[69] See, e.g., White-Smith Music Publ’g Co. v. Apollo Co., 209 U.S. 1, 17 (1908) (holding that a perforated piano roll used to create the sounds of a musical composition did not infringe the copyright in the underlying musical composition because “[a] musical composition is an intellectual creation which first exists in the mind of the composer. . . It is not susceptible of being copied until it has been put in a form which others can see and read. The statute has not provided for the protection of the intellectual conception apart from the thing produced . . . .”).

[70] Holmes, 174 U.S. at 86.

[71] Cohen, supra note 60, at 206.

[72] Holmes, 174 U.S. at 86 (“[C]ertain words . . . are as little susceptible of private appropriation as air or sunlight[.]”); see also Johnson v. Donaldson, 3 F. 22, 24 (S.D.N.Y. 1880) (“A copyright secures the proprietor against the copying, by others, of the original work, but does not confer upon him a monopoly in the intellectual conception which it expresses.”).

[73] Cohen, supra note 60, at 231.

[74] Id.

[75] Id. at 204–206 (“If art was no longer viewed as the formal expression of fundamental, abstract ideas, but rather as the expression of the individual feelings of the particular artist, then the view that copyright should protect only the author’s specific way of expressing the ideas, but not those fundamental, abstract ideas themselves, had lost its philosophical basis.”).

[76] Act of Mar. 4, 1909, ch. 320, § 1(b), (d), (e), 35 Stat. 1175 (providing the copyright owner with the exclusive right to transform the protected work into different formats, including the right to dramatize a nondramatic work, to translate a literary work or “to make any other version thereof,” to perform works publicly, and to "make any arrangement or setting of it or of the melody of it in any system of notation or any form of record in which the thought of an author may be recorded and from which it may be read or reproduced.”).

[77] Cohen, supra note 60, at 206 (citing Benedetto Croce’s view that “the essence of artistic activity is not the production of an external physical object, but an internalized aesthetic synthesis of impressions and sensations.”).

[78] Kalem Co. v. Harper Bros., 222 U.S. 55 (1911).

[79] Id. at 63.

[80] Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930).

[81] Nimmer, supra note 11, at § 13.03[a][i].

[82] See Cohen, supra note 60, at 207.

[83] Id. (citing John Dewey, Art as Experience 8, 49-52, 56, 64-65 (1934)).

[84] Sol LeWitt, Paragraphs on Conceptual Art, Artforum (June 1967), http://radicalart.info/concept/LeWitt/paragraphs.html.

[85] See id.

[86] Take, for example, Andy Warhol’s Brillo Boxes. By reframing the household-cleaning product as art, Warhol instilled in the Brillo box an entirely different meaning. Instead of representing a product or brand identity, Warhol’s Brillo Boxes stood for the Pop Art movement’s challenge to the dominant view of elitist aesthetics, and represented the idea that anything can be art. As philosopher Arthur Danto put it, the Brillo Boxes were the “end of art” as we know it because they marked the point at which art became so conscious of itself that it became apparent that in art “anything goes…that there were no stylistic or philosophical constraints.” Id.

[87] See Cohen, supra note 60, at 232.

[88] Id. at 212; see, e.g., Nichols v. Universal Pictures Corp., 45 F.2d 119 (2d Cir. 1930), cert. denied, 282 U.S. 902 (1931) (finding stories of star-crossed lovers too common to be protectable, despite both stories involving a relationship between a Jewish family and an Irish family, a secret marriage between the son and daughter of these two families, a conflict between the two fathers, and an ultimate reconciliation); Steinberg v. Columbia Pictures, 663 F. Supp. 706, 708–09 (S.D.N.Y. 1987) (discussing the plaintiff’s fame and the popularity of his work in finding the defendant’s work infringing); Cohen supra note 60, at 229 (“[A]nother factor that affects a court’s determination of where to draw the line between idea and expression in a given case involving literary works is the relative commercial success of the works at issue and the reputations of their creators.”).

[89] See, e.g., the recent Blurred Lines verdict discussed infraat Part II.C.1.

[90] Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738, 742 (2d Cir. 1982).

[91] Cohen, supra note 60, at 231.

[92] Cadwell, supra note 18, at 157; see also Arewa, supra note 5, at 556.

[93] Bruce Benward & Marilyn Saker, Music: In Theory and Practice (7th ed., McGraw Hill 2003).

[94] See generally Cadwell, supra note 18, at 155–57.

[95] Id. See generally Carol L. Krumhansl & Lola L. Cuddy, A Theory of Tonal Hierarchies in Music, in Music Perception 51 (M.R. Jones et al. eds., 2003).

[96] Cadwell, supra note 18, at 158.

[97] Id.

[98] See Yen, supra note 2, at 284.

[99] “Striking similarity” is similarity that is “so striking that the possibilities of independent creation, coincidence and prior common source are, as a practical matter, precluded.” Selle v. Gibb, 741 F.2d 896, 897 (7th Cir. 1984).

[100] Cohen, supra note 6, at 724.

[101] Id. at 728.

[102] Id. at 724–27 (comparing the use of phrases such as “substantial identity” or “substantial copy” by the courts to “signify a degree or type of similarity that would be relevant” to proving whether the defendant had in fact used the plaintiff’s work, versus the use of the adjective “substantial” in relation to the economic or aesthetic value of the copyright owner’s work to determine whether the defendant could be liable for copyright infringement.). Cf. Arnstein v. Porter, 154 F.2d 464, 473 (2d Cir. 1946) (inquiring “whether defendant took from plaintiff’s works so much of what is pleasing to the ears of lay listeners, who comprise the audience for whom such popular music is composed, that defendant wrongfully appropriated something which belongs to the plaintiff.”).

[103] Cohen, supra note 6, at 725–26 (“The focus was not principally on how much or what aspects of the plaintiff’s work defendant had borrowed, but on whether defendant had copied the plaintiff’s work rather than doing his own work. The concern was with whether ‘the labors of the original author are substantially to an injurious extent appropriated by another.’”) (quoting Greene v. Bishop, 10 F. Cas. 1128, 1134 (C.C.D. Mass. 1858) (No. 5763)).

[104] Emerson v. Davies, 10 F. Cas. 615, 622 (C.C.D. Mass. 1845) (No. 4436) (noting, in comparing the similarities between tables in two arithmetic textbooks, that “[t]he question is not in what part of one or more pages the matter is found, but whether it is borrowed or pirated from the plaintiff, without any substantial alteration or difference.”). The court went on to state that “[a] copy is one thing, an imitation or resemblance another…. It is very clear that any use of materials…which are well known and in common use, is not the subject of a copy-right, unless there be some new arrangement thereof.” Id.

[105] See Story v. Holocombe, 23 F. Cas. 171, 173 (C.C.D. Ohio 1847) (No. 13497) (stating that infringement “does not depend so much upon the length of the extracts as upon their value.”).

[106] Cohen, supra note 6, at 727 (citing Folsom v. Marsh, 9 F. Cas. 342, 348 (C.D.D. Mass. 1841) (No. 4901) (stating that infringement may exist “if so much is taken, that … the labors of the original author are substantially to an injurious extent appropriated by another”) (emphasis added).

[107] Arnstein v. Porter, 154 F.2d 464 (2d Cir. 1946). See also Nimmer, supra note 11, at § 13.03[a][i].

[108] Arnstein, 154 F.2d at 467. See also Cadwell,supra note 18, at 139 n.19.

[109] Cadwell,supra note 18, at 139 n.19.

[110] Eric C. Osterberg & Robert C. Osterberg, Substantial Similarity in Copyright Law § 3.2.1.A (PLI 2015).

[111] Arnstein, 154 F.2d at 468. See also Osterberg, supra note 110, at § 3.1.1; Cohen, supra note 6, at 729 (“Although some dispute still exists as to whether the plaintiff must prove actual access or only opportunity for access, courts generally agree that showing some possibility of access is very much a part of the plaintiff’s case.”).

[112] Arnstein, 154 F.2d at 468.

[113] Nimmer, supra note 11, at § 13.03[a][i].

[114] A piece-by-piece examination of the works’ constituent parts or elements. See Osterberg, supra note 110, at § 3.4.

[115] Cohen, supra note 6, at 731.

[116] Nimmer, supra note 11, at § 13.03[a][i].

[117] Id.

[118] See Castle Rock Entm’t, Inc. v. Carol Pub. Group, Inc., 150 F.3d 132, 137 (2d Cir. 1998). See also Osterberg, supra note 110, at §§ 3-4.

[119] Osterberg, supra note 110, at § 3.1.2 (citing Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir. 1960)).

[120] Cohen, supra note 6, at 732.

[121] Id.

[122] Carol Barnhart, Inc. v. Econ. Cover Corp., 773 F.2d 411, 422 (2d Cir. 1985) (Newman, J. dissenting) (emphasis added).

[123] Arnstein v. Porter, 154 F.2d 464, 473 (2d Cir. 1946).

[124] See Yen, supra note 2, at 291 (“[D]ifficulties arise because the ordinary observer is not a real person whose views may be discovered.”).

[125] Arnstein, 154 F.2d at 473.

[126] Id. at 468.

[127] Nimmer, supra note 11, at §13.03[a][i].

[128] Cohen, supra note 6, at 732.

[129] Nimmer, supra note 11, at § 13.03[a][i]. The terms “comprehensive non-literal similarity” and its counterpart, “fragmented literal similarity,” emerge from this treatise but they have gained widespread judicial acceptance.

[130] Id. See also Arnstein, 154 F.2d at 473 (deeming it “an issue of fact which a jury is peculiarly fitted to determine.”).

[131] Nimmer, supra note 11, at § 13.03[a][i].

[132] Eric Osterberg, Copyright Litigation: Analyzing Substantial Similarity, 1, 7 Practical Law Intellectual Property & Technology, available at http://www.osterbergllc.com/wp-content/uploads/2013/09/Practical-Law-Article.pdf.

[133] Id.

[134] Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49, 56 (2d Cir. 1936).

[135] Osterberg, supra note 132, at 7.

[136] Nimmer, supra note 11, at §13.03[a][i].

[137] Arnstein v. Porter, 154 F.2d 464, 468 (2d Cir. 1946).

[138] See Ideal Toy Corp. v. Fab-Lu Ltd., 266 F. Supp. 755 (S.D.N.Y. 1965), aff’d, 360 F.2d 1021 (2d Cir. 1966).

[139] Id. at 1022 (stating that the plaintiff need only show substantial similarity between the two works, which is present when “an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work.”).

[140] See Cohen, supra note 6, at 733.

[141] Id. at 737.

[142] The idea-expression dichotomy is essential to copyright law, as only the expression of ideas is protectable. 17 U.S.C. § 102(b) (1982) (excluding from the subject matter of copyright “any idea, procedure, process, system, method of operation, concept, principle, or discovery.”).

[143] Cohen, supra note 6, at 735 (deeming the court’s test in Ideal Toy the “Traditional Approach”) (citing Novelty Textile Mills v. Joan Fabrics Corp., 558 F.2d 1090, 1093 (2d Cir. 1977). Novelty Textile Mills found infringement because to lay eyes, the fabrics were “almost identical;” however, the court never analyzed the similarities to determine the likelihood of independent creation or the likelihood of copying.

[144] Universal Athletic Sales Co. v. Salkeld, 511 F.2d 904, 907 (3d Cir. 1975), cert. denied, 423 U.S. 863 (1975) (“[S]ubstantial similarity to show that the original work has been copied is not the same as substantial similarity to prove infringement.”).

[145] Cohen, supra note 6, at 747 (citing Salkeld, 511 F.2d at 907).

[146] Id.

[147] Id.

[148] Id. at 737 (“By relying upon the ordinary observer test alone and thus rejecting dissection, analysis, and expert testimony, the courts were deprived of the evidence necessary to analyze properly the likelihood of independent creation.”).

[149] Nimmer, supra note 11, at § 13.03[A][1].

[150] Cohen, supra note 6, at 749; cf. Nimmer, supra note 11, at § 13.03[A][1][a] (“Obviously, no principle can be stated as to when an imitator has gone beyond the ‘idea,’ and has borrowed its ‘expression.’ Decisions must therefore inevitably be ad hoc.”) (citing Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir. 1960)).

[151] See generally Sid & Mart Krofft Television Prods., Inc. v. McDonald’s Corp., 562 F.2d 1157 (9th Cir. 1977).

[152] Cadwell, supra note 18, at 150.

[153] See Krofft, 562 F.2d at 1164 (“We believe that the court in Arnstein was alluding to the idea-expression dichotomy which we make explicit today.”); see also Cohen, supra note 6, at 753 (“The Ninth Circuit recognized that the ordinary observer is unlikely to be able to separate idea from expression in comparing two works without dissection or analysis.”).

[154] Krofft, 562 F.2d at 1164.

[155] Id. at 1165 (establishing that the question is whether the defendant took “so much of what is pleasing to the audience” to be held liable).

[156] Osterberg, supra note 110, at § 3-3-3.

[157] Shaw v. Lindheim, 919 F.2d 1353, 1360 (9th Cir. 1990).

[158] Cavalier v. Random House, Inc., 297 F.3d 815, 822 (9th Cir. 2002).

[159] Id.

[160] Shaw, 919 F.2d at 1359.

[161] Cadwell, supra note 18, at 151.

[162] Shaw, 919 F.2d at 1359.

[163] McCulloch v. Albert E. Price, Inc., 823 F.2d 316, 319 (9th Cir. 1987) (noting that a conclusion that two works are “‘confusingly similar in appearance’ is tantamount to finding substantial similarities in the objective details of the [works].”) (citing Litchfield v. Spielberg, 736 F.2d 1352, 1356 (9th Cir. 1984)).

[164] Cavalier, 297 F.3d at 826; see also Smith v. Jackson, 84 F.3d 1213, 1218 (9th Cir. 1996) (applying Shaw‘s rule to musical motifs).

[165] Cavalier, 297 F.3d at 826.

[166] Sid & Mart Krofft Television Prods., Inc. v. McDonald’s Corp., 562 F.2d 1157, 1164 (9th Cir. 1977).

[167] Arnstein v. Porter, 154 F.2d 464, 473 (2d Cir. 1946).

[168] Krofft, 562 F.2d at 1166–67. (“We do not believe that the ordinary reasonable person, let alone a child, viewing these works will even notice that Pufnstuf is wearing a cummerbund while Mayor McCheese is wearing a diplomat’s sash.”) (emphasis added).

[169] Id.

[170] See Julie E. Cohen et al., Copyright in a Global Information Economy, Companion Website, http://coolcopyright.com/contents/chapter-5/sid-marty-krofft-television-productions-v-mcdonalds.

[171] 919 F.2d 1353 (9th Cir. 1990); see also Cavalier v. Random House, Inc., 297 F.3d 815, 822 (9th Cir. 2002).

[172] Shaw, 919 F.2d at 1357 (explaining that they were comparing “every element that may be considered concrete”).

[173] Litchfield v. Spielberg, 736 F.2d 1352, 1356 (9th Cir. 1984).

[174] See Shaw, 919 F.2d at 1357.

[175] Id.

[176] Id.

[177] Swirsky v. Carey, 376 F.3d 841, 844–45 (9th Cir. 2004).

[178] Id. at 843.

[179] Id. at 847.

[180] Id. at 848.

[181] Id. at 849 n.15 (quoting Metcalf v. Bochco, 294 F.3d 1069, 1073 (9th Cir. 2002) (quoting Kouf v. Walt Disney Pictures & Television, 16 F.3d 1042, 1045 (9th Cir. 1994))).

[182] Id. at 848.

[183] Three Boys Music Corp. v. Bolton, 212 F.3d 477 (9th Cir. 2000).

[184] Id. at 485.

[185] Swirsky, 376 F.3d at 850; see also Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 349 (1991) (extending copyright protection to the original selection and arrangement of otherwise uncopyrightable components).

[186] Apple Computer v. Microsoft Corp., 35 F.3d 1436, 1442, 1447 (9th Cir. 1994).

[187] Dawson v. Hinshaw Music Inc., 905 F.2d 731, 733 (4th Cir. 1990) (describing Arnstein as “the source of modern theory”); see also Lemley, supra note 13, at 719.

[188] Arnstein v. Porter, 154 F.2d 464, 468 (2d Cir. 1946).

[189] As Professor Nimmer suggests, conversely, it may also cause very real appropriation to go undetected. Nimmer, supra note 11, at § 13.03[E][2].

[190] Id.

[191] Id.

[192] Id.

[193] Id.

[194] Id.

[195] See Balganesh, supra note 9, at 794 (“Copyright’s infringement analysis has been variously described as ‘bizarre,’ ‘mak[ing] no sense,’ ‘viscid,’ and ‘problematic.’”); see also Whelan Assocs., Inc. v. Jaslow Dental Lab., Inc., 797 F.2d 1222, 1232 (3d Cir. 1986) (noting the doubtful value of the ordinary observer test in cases involving complex subject matter unfamiliar to most members of the public).

[196] Especially when applied to complex works, such as computer software and music and with complicating circumstances of the transformation of a work into a different medium. Nimmer, supra note 11 at § 13.03[E][2].

[197] Id.; cf. Hein v. Harris, 175 F. 875, 876 (C.C.S.D.N.Y. 1910) (explaining that the ultimate inquiry is whether the average person’s ear would find the two melodies substantial similar because the pecuniary value of a composition rests in the public taste).

[198] Michael Der Manuelian, The Role of the Expert in Music Copyright Infringement Cases, 57 Fordham L. Rev. 126, 131 (1988) (describing how the trier must determine, not his own personal reaction to the similarities between the two works, but the reaction of the “average lay hearer.”); see id. at n.145 (citing Copyright Infringement Actions: The Proper Role for Audience Reactions in Determining Substantial Similarity, 54 S. Cal. L. Rev. 385 (1981) (“[Q]uestioning value of lay observer test when copyrighted matter is targeted for a particular, identified audience”)).

[199] Cohen, supra note 6, at 765.

[200] Manuelian, supra note 198, at 133.

[201] Id.

[202] Id. at 146.

[203] Nimmer, supra note 11, at § 13.03 [E][2].

[204] Manuelian, 198, at 146.

[205] Id. at 145.

[206] Nimmer, supra note 11, at § 13.03 [E][2].

[207] Balganesh, supra note 9, at 810 (citing Arnstein v. Porter, 154 F.2d 464, 479 (2d Cir. 1946) (Clark, J. dissenting)).

[208] Id. at 845.

[209] Id.

[210] Id.

[211] Id. at 846.

[212] Id. at 810. This was a practice Justice Clark said he generally promoted, unlike his adversary Justice Frank (citing Judge Frank’s two extrajudicial writings).

[213] Id. at 800; see also Nimmer, supra note 11, at § 13.03 [E][2] (“[T]he idea/expression dichotomy…depends on the level of abstraction at which one defines the “idea” that merges with the subject expression).

[214] Manuelian, supra note 198, at 139.

[215] Id. (citing Franklin Mint Corp. v. National Wildlife Art Exch., Inc., 575 F.2d 62, 65 (3d Cir. 1978)).

[216] Id.

[217] See, e.g., Williams v. Bridgeport Music, 2:13-cv-06004-JAK-AGR (2015), available at http://www.scribd.com/doc/258437531/Blurred-Lines-jury-instructions#scribd (hereinafter, Blurred Lines Jury Instructions).

[218] Wendy Gordon, “How the jury in the ‘Blurred Lines’ case was misled,” THE CONVERSATION (March 17, 2015, 5:47 AM), http://theconversation.com/how-the-jury-in-the-blurred-lines-case-was-misled-38751; see, e.g., Balganesh, supra note 9, at 794 (“[T]he Ninth Circuit chose to "withdraw" its model jury instructions on the analysis recognizing that no amount of abstract guidance could resolve the indelible complexity that the [copyright infringement] analysis routinely engenders.”).

[219] Gordon, supra note 218 (“Instruction 28 makes it looks like ‘substantiality’ only matters for proof of the first criterion – ‘Did they copy?’ But if a juror thinks she already has the answer to that first question – from evidence such as Thicke’s own words to GQ – she might conclude that she doesn’t need to assess ‘substantiality’ as well. (That is, she might ignore the second criterion.) So, again, it could look to a careful juror as if any copying of the Gaye composition brings liability.”).

[220] See Manuelian, supra note 198, at 139.

[221] Id. at 145.

[222] Selle v. Gibb, 741 F.2d. 896 (7th Cir. 1984).

[223] See Manuelian, supra note 198, at 140.

[224] Id. (citing Gibb, 741 F.2d at 901).

[225] Id. at 143, n.137 (“The instructions to the jury do not distinguish the similarities evidencing copying from the substantial similarity from which "the average person would recognize ‘How Deep Is Your Love’ as having been appropriated from parts of ‘Let It End.’”) (citing Gibb, 741 F.2d at 1079).

[226] Id. at 144.

[227] See Gordon, supra note 218 (citing Instruction 27); see also Blurred Lines Jury Instructions, supra note 217 at 28.

[228] Gordon, supra note 218 (alluding to Blurred Lines Jury Instructions at 31, where eventually Instruction No. 30 corrects this mistake, noting the jury “must not consider in your comparison (1) ideas, as distinguished from the expression of those ideas” but stating “[n]onetheless, the distorted message of Instruction 27 echoes throughout.”).

[229] Id.

[230] See Nimmer, supra note 11, at §13.03[A][1].

[231] Id. at §13.03[E][b] (suggesting that the courts discard the audience test entirely and adopt the abstraction-filtration-comparison method used in cases involving infringement of computer programs and factual compilations.).

[232] Cohen, supra note 6, at 757.

[233] Id. at 754-755.

[234] Swirsky v. Carey, 376 F.3d 841, 848 (9th Cir. 2004) (citing Metcalf v. Bochco, 294 F.3d 1069, 1071 (9th Cir. 2002)).

[235] Swirsky, 376 F.3d at 848.

[236] Cohen, supra note 6, at 745 n.81.

[237] Id. at 742.

[238] Id.

[239] Thus, in the music context, taking the “heart” of a song, or the portion that makes the song appealing and valuable, is a substantial taking. See id.; Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994) (overturning the district court’s finding of infringement where the defendant used the “heart” of the plaintiff’s song under the fair use defense); Arnstein v. Porter, 154 F.2d 464, 468 (2d Cir. 1946) (asking “whether defendant took from plaintiff’s works so much of what is pleasing to the ears of lay listeners, who comprise the audience for whom such popular music is composed, that defendant wrongfully appropriated something which belongs to the plaintiff.”); Eisenman Chem. Co. v. NL Indus., 595 F. Supp. 141, 146 (D. Nev. 1984) (holding that the defendant’s manual copied “virtually verbatim” from the plaintiff’s manual and thereby appropriated the plaintiff’s labor and skill to publish a rival work).

[240] Sid & Marty Krofft TV Prods. v. McDonald’s Corp., 562 F.2d 1157, 1166 (9th Cir. 1977).

[241] Nimmer, supra note 11, at § 13.03[E][4].

[242] Id.

[243] Cohen, supra note 6, at 756; see, e.g., Three Boys Music v. Bolton, 212 F.3d 477, 485 (9th Cir. 2000) (upholding the jury’s determination that the defendant’s song has a substantially similar “total concept and feel” to the plaintiff’s song); see also Osterberg, supra note 110, at 3-37.

[244] Cooling Sys. & Flexibles, Inc. v. Stuart Radiator, 777 F.2d 485 (9th Cir. 1985).

[245] Id. at 493.

[246] Cohen, supra note 6, at 756–57.

[247] Cooling Sys., 777 F.2d at 491.

[248] Cohen,supra note 6, at 757.

[249] See, e.g. How Hip-Hop Works, Stuff You Should Know: The Podcast, http://www.stuffyoushouldknow.com/podcasts/hip-hop-works/ (tracing the birth of hip-hop to Jamaica, where DJs began using two turntables at once to play extended doctored versions of popular songs that isolated the percussive breaks, while “toasting” or rapping over the beat).

[250] Grand Upright Music, Ltd. v. Warner Brothers Records Inc., 780 F. Supp. 182 (S.D.N.Y. 1991) (ruling that sampling without permission can qualify as copyright infringement in holding rapper Biz Markie liable for sampling Gilbert O’Sullivan’s song “Alone Again (Naturally)” in his song “Alone Again.”).

[251] Bridgeport Music, Inc. v. Dimension Films, 410 F.3d 792 (6th Cir. 2005) (holding that the Beastie Boys’ three note sampling of George Clinton’s song “Get Off Your Ass and Jam” infringed the sound recording and creating a bright line rule that de minimis analysis does not apply to sound recordings).

[252] Id. at 801; see generally Mark R. Carter, Applying the Fragmented Literal Similarity Test to Musical-Work and Sound-Recording Infringement: Correcting the Bridgeport Music, Inc. v. Dimension Films Legacy, 14:2 Minn. J. L. Sci. & Tech (2013) (arguing that courts should engage in an analysis of the quantitative and qualitative significance of a sampled sound recording rather than creating a bright line rule); cf. Lesley Grossberg, A Circuit Split at Last: Ninth Circuit Recognizes De Minimis Exception to Copyright Infringement of Sound Recordings (June 21, 2016), https://www.copyrightcontentplatforms.com/2016/06/a-circuit-split-at-last-ninth-circuit-recognizes-de-minimis-exception-to-copyright-infringement-of-sound-recordings/ (a recent circuit split arose after the Ninth Circuit ruled in VMG Salsoul, LLC v. Ciccone, 824 F. 3d 817 (9th Cir. 2016), that the de minimis exception to copyright infringement applies to sound recordings. Though Salsoul may offer hope to samplers by tipping “the weight of the authorities heavily on the side of recognizing a de minimis exception,” litigious copyright holders can still find a favorable forum in circuits bound by Bridgeport. Moreover, it remains to be seen if courts will extend Salsoul to use of the underlying composition.).

[253] See Neil Weinstock Netanel, Copyright’s Paradox 21 (2008).

[254] Mickey Hess, Is Hip Hop Dead?: The Past, Present, and Future of America’s Most Wanted Music 106 (2007); interpolation allows the artist to simply pay the holder of the rights in the composition, usually a songwriter, without needing to pay the artist and the record company as well.

[255] Copyright’s failure to encourage creativity may simply be proof that its protection is overreaching, since creative incentives and normative protections exist regardless of the law as it stands. See, e.g., Jodie Griffin, The Economic Impacts of Copyright, PUBLIC KNOWLEDGE, https://www.publicknowledge.org/files/TPP%20Econ%20Presentation.pdf (last accessed Feb. 7, 2016) (“evidence suggests ‘most sound recordings sell in the ten years after release.’”).

[256] Arewa, supra note 5, at 630.

[257] Id.

[258] Joe Fassler, How Copyright Law Hurts Music, From Chuck D to Girl Talk, THE ATLANTIC, Apr. 12, 2011, http://www.theatlantic.com/entertainment/archive/2011/04/how-copyright-law-hurts-music-from-chuck-d-to-girl-talk/236975/ (“Capitol Records would lose 20 million dollars on a record that sold 2.5 million units.”).

[259] Arewa, supra note 5, at 638; see also 17 U.S.C. § 115(a)(2) (2000) (requiring that the compulsory licensing arrangement not change the basic melody or fundamental character of the work).

[260] See HESS, supra note 254, at 106 (“Dr. Dre, one of hip hop’s biggest producers, says that he prefers [sheet music] interpolation to sampling because working from sheet music allows him more control of the sound: he can ask studio musicians to play it the way he wants it.”).

[261] Guy Raz & Mark Ronson, Why Would More Than 500 Artists Sample The Same Song?, NPR (June, 2014, 9:57 AM), http://www.npr.org/2014/06/27/322721353/why-would-more-than-500-artists-sample-the-same-song. Explaining the process of seeking sampling rights, producer Mark Ronson said,

Basically, you go to the person that wrote it, or maybe the person that owns that song now – because it could have been sold, the rights to it, years ago. You have to play them your song, and then you guys kind of come to agreement about how much you’re going to give them. I mean, if you use a tiny two seconds of a Led Zeppelin song, it doesn’t matter how important it is to your song – you can pretty much guarantee you’re going to give up 100 percent of your publishing to Jimmy Page and Robert Plant. Id.

[262] Id.

[263] The song charted at number 15 on the UK Singles Chart. Billboard, May 26, 2007.

[264] This is the commonly used name for their LP, The Beatles.

[265] Jillian C. York, The Fight to Protect Digital Rights Is an Uphill Battle, but not a Silent One, THE GUARDIAN (Apr. 24, 2010, 12:38 AM) http://www.theguardian.com/commentisfree/2014/apr/24/the-fight-to-protect-digital-rights-is-an-uphill-battle-but-not-a-silent-one.

[266] Dr. Dre, ‘The Chronic’ at 20: Classic Track-By-Track Review, BILLBOARD (Dec. 15, 2012), http://www.billboard.com/articles/review/1537948/dr-dre-the-chronic-at-20-classic-track-by-track-review.

[267] See P-Funk, RATE YOUR MUSIC, https://rateyourmusic.com/genre/P-Funk/ (last visited Sept. 20, 2015).

[268] Mike Masnick, Why Hasn’t The Recording Industry Sued Girl Talk?, TECHDIRT (July 8, 2009, 8:32 AM), https://www.techdirt.com/articles/20090707/0237205466.shtml.

[269] Alex Mayyasi, The Economics Of Girl Talk, PRICENOMICS (Apr. 11, 2013) (quoting David Post, Girl Talk:, Volokh Conspiracy (Nov. 19, 2010, 7:10 PM), http://volokh.com /2010/11/19/girl-talk/), http://priceonomics.com/post/47719281228/the-economics-of-girl-talk.

[270] Eryc Eyl, Ripper Offer, THE PITCH (Oct.4, 2007, 4:00 AM), http://www.pitch.com/kansascity/ripper-offer/Content?oid=2187141.

[271] See, e.g., Mayyasi, supra note 269 (stating Girl Talk’s main instrument is a laptop); RZA, RZA on Gear, SKULL THEFT (citing So You Wanna Be a Record Producer, RAP PAGES, Mar. 1995), http://skulltheft.tumblr.com/post/256038796/rza-on-gear (last visited Feb. 10, 2016) (describing early hip-hop producers, like RZA of the group Wu-Tang Clan, who used basic sampling equipment, stating “‘[b]ack in ’89…all I had was a four-track, some turntables, and a drum machine.’”).

[272] Keith Caulfield, Billboard 200 Chart Moves: Marvin Gaye Sales Up 246% After ‘Blurred Lines’ Trial, BILLBOARD (Mar. 20, 2015), http://www.billboard.com/articles/columns/chart-beat/6509353/marvin-gaye-got-to-give-it-up-sales.

[273] See, e.g., Cariou v. Prince, 714 F. 3d 694 (2d Cir. 2013); Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994) (finding the defendant’s use of plaintiff’s song to be fair use because the new work was a parody); Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605 (2d Cir. 2006) (finding defendant’s use of the plaintiff’s music posters in a biographical coffee table book to be fair use because of the new purpose).

[274] George Howard, Should There Be a Compulsory License for Derivative Works?, TUNECORE (Apr. 17, 2013), http://www.tunecore.com/blog/2013/04/should-there-be-a-compulsory-license-for-derivative-works.html.

[275] H.R. REP. NO. 60-2222, at 7 (1909), reprinted in 6 LEGISLATIVE HISTORY OF THE 1909 COPYRIGHT ACT, Part S (E. Fulton Brylawski & Abe Goldman eds., 1976).

[276] Nicole K. Roodhuyzen, Do We Even Need a Test? A Reevaluation of Assessing Substantial Similarity in a Copyright Infringement Case, 15 J. L. & POL’Y, 1375, 1418-19 (2008), http://brooklynworks.brooklaw.edu/cgi/viewcontent.cgi?article=1217&context=jlp.

[277] Jennifer Jenkins, The “Blurred Lines” of the Law, CENTER FOR THE STUDY OF THE PUBLIC DOMAIN, http://web.law.duke.edu/cspd/blurredlines/ (last visited Oct. 16, 2016).

[278] Beebe, supra note 33 (explaining that aesthetic progress doesn’t mean that the works of Picasso are better than cave drawings).

[279] Simon Waxman, ‘Blurred Lines’ Ruling Makes Influence Illegal, AL JAZEERA AMERICA (Apr.l 4, 2015, 2:00AM), http://america.aljazeera.com/opinions/2015/4/blurred-lines-ruling-makes-influence-illegal.html.

[280] Gary Trust, Robin Thicke’s ‘Blurred Lines’ Is Billboard’s Song of the Summer, BILLBOARD (Sept. 5, 2013), http://www.billboard.com/articles/news/5687036/robin-thickes-blurred-lines-is-billboards-song-of-the-summer.

[281] Stuart Dredge, Global Music Sales Fell in 2013 Despite Strong Growth for Streaming Services, THE GUARDIAN (March 18, 2014 9:00 AM), http://www.theguardian.com/technology/2014/mar/18/music-sales-ifpi-2013-spotify-streaming (reporting that “Blurred Lines” sold 14.8 million units in track downloads and equivalent streams).

[282] Geeta Dayal, The Music Club, 2013, SLATE (Dec. 19, 2013, 2:44 PM), http://www.slate.com/articles/arts/the_music_club/features/2013/music_club_2013/robin_thicke_s_blurred_lines_it_s_sexist_and_awful.html (citing lyrics like “I know you want it” and “I hate these blurred lines”).

[283] ‘Blurred Lines’ Banned by YouTube as Robin Thicke’s Video Features Nude Models, Huffington Post (April 1, 2013 5:28 PM), http://www.huffingtonpost.com/2013/04/01/blurred-lines-banned-by-youtube-robin-thicke-nude-models_n_2994676.html.

[284] Zoe Chace, Robin Thicke’s Song Sounds Like Marvin Gaye. So He’s Suing Gaye’s Family, NPR PLANET MONEY (Aug. 19, 2013, 1:05 PM), http://www.npr.org/sections/money/2013/08/19/213471083/robin-thickes-song-sounds-like-marvin-gaye-so-thicke-is-suing-gayes-family.

[285] Eriq Gardner, Robin Thicke Sues to Protect ‘Blurred Lines’ from Marvin Gaye’s Family (Exclusive), THE HOLLYWOOD REP. (Aug. 15, 2013, 6:13 PM), http://www.hollywoodreporter.com/thr-esq/robin-thicke-sues-protect-blurred-607492.

[286] Id.

[287] Williams v. Bridgeport Music, Inc., No. LA CV13-06004 JAK (AGRx), 2014 WL 7877773, at *18-19 (C.D. Cal. Oct. 30, 2014).

[288] Frankie Christian Gaye and Nona Marvisa Gaye First Amended Counterclaims Preliminary Expert Report for Defendants at ¶ 9, 43, Williams v. Bridgeport Music, Inc., No. CV13-06004-JAK (AGRx) (C.D. Cal. Oct. 30, 2013) [hereinafter Counterclaim].

[289] Emily Miao & Nicole E. Grimm, The Blurred Lines of Copyright Infringement of Music Become Even Blurrier as the Robin Thicke v. Marvin Gaye’s Estate Lawsuit Continues, MBHB ACCESS MEDIA (Winter 2014) (quoting Counterclaim, supra note 288, http://www.mbhb.com/pubs/xpqPublicationDetail.aspx?xpST=PubDetail&pub=271.

[290] Pharrell Denies ‘Blurred Lines’ Copies Marvin Gaye: ‘It’s Completely Different,’ BILLBOARD (Sept. 13, 2013), http://www.billboard.com/articles/news/5695041/pharrell-denies-blurred-lines-copies-marvin-gaye-its-completely-different.

[291] Miao & Grimm, supra note 289.

[292] Lauretta Charlton, A Copyright Expert Explains the ‘Blurred Lines’ Ruling, VULTURE (Mar. 11, 2015, 3:11 PM), http://www.vulture.com/2015/03/what-the-blurred-lines-ruling-means-for-music.html.

[293] Eriq Gardner & Austin Siegemund-Broka, ‘Blurred Lines’ Trial Reveals How Much Money Robin Thicke’s Song Made, HOLLYWOOD REP. (Mar. 3, 2015, 10:54 AM), http://www.hollywoodreporter.com/thr-esq/blurred-lines-trial-reveals-how-778884.

[294] Kit Walsh, The Blurred Lines Copyright Verdict is Bad News for Music, ELECTRONIC FRONTIER FOUNDATION (Mar. 11, 2015), https://www.eff.org/deeplinks/2015/03/blurred-lines-copyright-verdict-bad-news-music (quoting Gregory Butler).

[295] Amar Toor, Robin Thicke and Pharrell Appeal ‘Blurred Line’’ Copyright Ruling, THE VERGE (Dec. 9, 2015, 3:30 AM), http://www.theverge.com/2015/12/9/9877706/robin-thicke-pharrell-blurred-lines-marvin-gaye-appeal.

[296] Walsh, supra note 294; see also Toor, supra note 295 (“The verdict handicaps any creator out there who is making something that might be inspired by something else….This applies to fashion, music, design . . . anything. If we lose our freedom to be inspired we’re going to look up one day and the entertainment industry as we know it will be frozen in litigation. This is about protecting the intellectual rights of people who have ideas.”) (quoting Pharrell Williams).

[297] Ed Christman, ‘Blurred Lines’ Verdict: How It Started, Why It Backfired on Robin Thicke and Why Songwriters Should Be Nervous, BILLBOARD (Mar. 13, 2015), http://www.billboard.com/articles/business/6502023/blurred-lines-verdict-how-it-started-why-it-backfired-on-robin-thicke-and.

[298] Williams v. Bridgeport Music, Inc., No. LA CV13-06004 JAK, 2014 WL 7877773, at *10 (C.D. Cal. Oct. 30, 2014) (“[T]he lead sheets are deemed to define the scope of Defendants’ copyrighted compositions.”).

[299] Kal Raustiala & Christopher Jon Sprigman, Squelching Creativity, SLATE (Mar. 12, 2015, 12:27 PM), http://www.slate.com/articles/news_and_politics/jurisprudence/2015/03/_blurred_lines_verdict_is_wrong_williams_and_thicke_did_not_infringe_on.html.

[300] See infra, note 302.

[301] Williams, 2014 WL 7877773, at *19.

[302] Id. at *4, *13, and *15 (including “Low Rider” by War from 1975, “Superfly” by Curtis Mayfield from 1972 and “Funkytown” by Lipps Inc. from 1980).

[303] Id. at *19.

[304] Swirsky v. Carey, 376 F.3d 841, 850 (9th Cir. 2004).

[305] Kronstadt confuses the issue of whether the elements themselves are protected versus the issue of whether the work as a whole is a unique combination of unprotected elements, applying the test for the former in attempting to determine the latter, thereby failing to decide either issue.

[306] Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 358 (1991).

[307] Satava v. Lowry, 323 F.3d 805, 811 (9th Cir. 2003).

[308] Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1439, 1442 (9th Cir. 1994), cert. denied, 513 U.S. 1184; see also Mattel, Inc. v. MGA Entm’t, Inc., 616 F.3d 904, 915-917 (9th Cir. 2010) (finding that the district court erred in applying the substantial similarity standard for unprotectable elements, as opposed to the heightened virtually identical standard, in comparing defendant’s “Bratz” dolls to Mattel’s iconic Barbie because “small plastic dolls that resemble young females is a staple of the fashion doll market”).

[309] Chris Richards, It’s Okay if You Hate Robin Thicke but the ‘Blurred Lines’ Verdict is Bad for Pop Music, Wash. Post (March 11, 2015), https://www.washingtonpost.com/news/style-blog/wp/2015/03/11/the-blurred-lines-of-the-blurred-lines-verdict/.

[310] Nimmer, supra note 11, at § 13.03[B][3][d], [B][3][c].

[311] Waxman, supra note 279 (citing bluegrass as an example).

[312] Landon Proctor, Video Explains the World’s Most Important 6-Sec Drum Loop, YOUTUBE (Feb. 21, 2006), https://www.youtube.com/watch?v=5SaFTm2bcac.

[313] Arewa, supra note 5, at 628.

[314] Nimmer, supra note 11, at § 13.03[E][1][b].

[315] Id. at § 13.03[E][4].

[316] See Erin Geiger Smith, What’s the (Fair) Use?, NYU Law Mag. (2014), http://blogs.law.nyu.edu/magazine/2014/whats-the-fair-use/ (discussing the “latest incarnation of the Internet…the phenomenon of user-generated content” and Barton Beebe’s views that “[o]pening up the conversation about aesthetic progress and what it means could lead to tweaks to copyright law that are more in line with today’s hands-on approach to cultural commentary.”).

[317] Nimmer, supra note 11, at § 13.03[F][1]; see also Lemley, supra note 13, at 734.

[318] Computer Assocs. Int’l, Inc. v. Altai, Inc., 982 F.2d 693, 713 (2d Cir. 1992).

[319] Nimmer, supra note 11, at § 13.03[F].

[320] Id.

[321] Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991).

[322] Altai, 982 F.2d at 713.

[323] Lemley, supra note 13, at 726, 733.

[324] Id.

[325] Osterberg, supra note 110, at § 3.

[326] Lemley, supra note 13, at 741.

[327] Id.

[328] Balganesh, supra note 9, at 859.

[329] Id.

[330] Id. at 860.

[331] Id. at 849.

[332] Lemley, supra note 13, at 725.

[333] U.S. CONST. amend. VII.

[334] DJ Shadow On Sampling As A ‘Collage Of Mistakes,’ NPR (Nov. 17, 2012 7:04 PM), http://www.npr.org/2012/11/17/165145271/dj-shadow-on-sampling-as-a-collage-of-mistakes.

[335] Raz & Ronson, supra note 261.

[336] HESS, supra note 254, at 98.

[337] Id. at 99.

[338] Fassler, supra note 258 (noting that author David Shields’s novel, Reality Hunger, is made up of passages from other books, but musicians can’t make a record made up from other records).

[339] HESS, supra note 254, at 98.

[340] Id. at 99.

[341] Raz & Ronson, supra note 261.

[342] See Beebe, supra note 33.

Interview: The Indigo Book: A Manual of Legal Citation

Interview: The Indigo Book: A Manual of Legal Citation
Christopher Sprigman & Daryl Steiger Download a PDF version of this interview here. Christopher Sprigman has been a professor at NYU School of Law since 2013. Sprigman teaches intellectual property law, antitrust law, competition policy, and comparative constitutional law. His research focuses on how legal rules affect innovation and the deployment of new technologies. Sprigman’s widely cited works have had an influence on important aspects of copyright law, and often belie the conventional wisdom about intellectual property rights. He was an appellate counsel from 1999 to 2001 in the Antitrust Division of the US Department of Justice, where US v. Microsoft was among his cases, and later was elected partner in the Washington, DC, office of King & Spalding. In 2003, Sprigman left private practice to become a residential fellow at Stanford Law School’s Center for Internet and Society, and joined the faculty at the University of Virginia School of Law in 2005. Sprigman received his BA in history magna cum laude from the University of Pennsylvania in 1988, and a JD with honors from the University of Chicago Law School in 1993. He subsequently clerked for Judge Stephen Reinhardt of the US Court of Appeals for the Ninth Circuit and Justice Lourens H. W. Ackermann of the Constitutional Court of South Africa. Sprigman also taught at the University of the Witwatersrand’s law school in Johannesburg. Daryl Steiger is a student at NYU School of Law graduating in May 2016 and an Articles Editor for the NYU Journal of Intellectual Property and Entertainment Law. Daryl has focused her studies on intellectual property and entertainment law, and worked as a team lead on Professor Sprigman’s project developing the Indigo Book, formerly known as Baby Blue. Daryl received her BA in women, gender and sexuality studies from Washington University in St. Louis in 2012, with a second major in psychology and a minor in film.  
* * *
  DS: Hi Professor Sprigman. Thank you for taking the time to do this. First, we were wondering if you would give us a brief overview of the Baby Blue project? CS: Sure. It was back in late 2014 that I started discussing the possibility of this project with Carl Malamud, who is the head of something called Public Resource. Carl’s mission in life is to bring law to the people that law regulates. He wants to make the laws of various states, as well as private codes, like building codes – all things that are often locked up in libraries and only available by subscription – he wants to make these things available online to people free of charge. The feeling behind this is that both state laws and private codes that have been adapted as law regulate people’s behavior, people are subject to their authority. So people should have the right to access these things and indeed courts have held that the law is not copyrightable and that edicts of law can be accessed free of copyright restrictions by the people who are subject to those edicts. So that’s Carl’s aim in life. The Bluebook is something came to Carl’s attention and he started thinking and, when he started talking to me, I also started thinking, that the Bluebook was kind of like a law, in that it ran a lot of people’s lives. Associates at law firms, law students in law schools, academics in law schools; they all cite legal documents and they are obliged to do so according to the Bluebook’s form. But the Bluebook isn’t free – actually, it isn’t free in two senses. First, it’s expensive, and second, the system of citation that the Bluebook expresses is not open and is developed under the control of a small number of people at the Harvard Law Review. So we decided to think about whether we could do something about both of those problems. What we hit on was that the Bluebook is first of all a system, a system of legal citation. Systems are not in fact copyrightable. So we thought, well, let’s see if we can express this same citation system in our own words. That is, we won’t copy the expression but in fact re-express the system by explaining its rules differently. If we do that, then people can use our version of the Bluebook system to make legal documents that look exactly as if they were using the Bluebook. So we set out to try to do that. The other thing we thought was, in the process, we could set the legal citation system free of copyright. One good thing that might come out of that is that people other than a tiny group of Harvard Law Review editors might work with this system, and ultimately simplify it and make it better. All interested members of the legal community would have a crack at modifying the system, improving it, updating it. I agreed with Carl that I should take this on. I recruited a team of students here at the law school who worked with me, who carried the load on this and really did pull this system apart, understand it from the inside, and basically re-describe it in the way that I told you we would try to do. That’s the project in a nutshell. The product is something that we first referred to as Baby Blue but now we’re calling the Indigo Book. It is a Bluebook-compatible system of citation. Again – and this is crucial – people who use Indigo are using the Bluebook’s system of citation. From the outside, no one will ever know they used the Indigo Book to produce their citations. For all intents and purposes, documents produced using the Indigo Book will look like a document that’s been Bluebooked. DS: Aside from Carl mentioning this to you, what personally motivated you to get so involved in this project? CS: Part of it was just the copyright question. Could we take this system, which is not copyrightable – Section 102(b) of the Copyright Act says that copyright does not extend to systems – and could we understand it well enough to re-express it, to express it in different words? Now, sometimes rules are written the way they are and there’s no way to really rewrite them. To make them understandable, you have to write the rule very similarly. That’s interesting. That situation would lead you, as a copyright lawyer, to say that the expression of the rule has merged with the rule itself. You have to be able to express it the same way, because otherwise the rule would have a backdoor copyright, and rules don’t have copyrights. So, I just thought as a copyright scholar this was a very interesting project. And then I thought of people in jail. I thought of solo practitioners out there struggling to make ends meet. Then I thought, you know, the Bluebook’s expensive and we should be able to bring a version of the system, Bluebook’s system of citation, for free. And I also thought about all the people who had an interest in citations – practicing lawyers, academics, law students – who had no ability, if they’re not on the Harvard Law Review, to actually say what the rules should be. I thought that’s odd. By what authority does the Harvard Law Review get to proscribe rules for the rest of the lawyers in society? Not only lawyers, but pro se litigants: people filing briefs in criminal or civil cases who are not represented by lawyers. Who anointed the Harvard Law Review, right? So, this system is something I thought it something we can bring to people more efficiently, more cost effectively, and also in a way that they can work with it, to change it, to streamline it, to improve it. That was the reason why I decided to do this. DS: So, as you just touched upon, one of the exciting things about the Indigo Book is that it’s open source. How did you become involved with open source law generally? How did Carl know to approach you? CS: So, I just want to be clear on what the licensing terms are for the Indigo Books. So the Indigo book has been released under something called a CC0 license, which is a creative commons public domain license. This means that the Indigo Book is in the public domain. People can copy it, they can distribute it, they can modify it, they can distribute their modifications. They can essentially do what they wish to do with it. The idea here again is that people can proliferate copies of this book cheaply and this will spread the book to other people. But also the idea is that if people have thoughts on how to make a better citation system, how to reduce the complexity of legal citation – which would a good thing, legal citation is incredibly complex – they should and they are permitted to do that. They are permitted to make their modifications and to distribute them. And we’re hoping over time that this will result in a lot more creative and helpful input into what legal citations should look like. In terms of how I got involved in this, I’m a board member of creative commons, an organization I’ve supported for a long time and really believe in. I think creative commons brings to copyrighted works what the open source movement has brought to software, which is the ability for people to participate in determining the direction of some tools that all of us use, that some of us as lawyers use every day. Up until now, we have had no voice in what legal citation rules look like. Now we do. I think this is the genius of open source. It democratizes participation in the production and the maintenance of these tools – software tools, legal citation tools. That is something I think is just very good for all of us. DS: So how did you approach drafting baby blue with you student team? CS: The student team would meet with me on a regular basis and we’d think about, you know, what are the rules we need to express? We set the scope of the project. We understand what part of the Bluebook, that is the “Bluepages” that we were going to work from. We made a decision at some point that we wouldn’t try to mess with the international part of the Bluebook. That part of the Bluebook was something that most lawyers in America don’t really use. It’s of limited utility, it lends a lot to the Bluebook’s bulk, and if we try to restate that, then the thing we were producing, which eventually became the Indigo Book, would be similarly huge, and we wanted that not to happen. So we set the scope of the project, then we split up assignments. We had different teams. We had teams named after animals. We had team Koala, Team Puma. Different teams would start working away on different pieces of this. And then the teams would start checking each other’s work. Over time and many, many versions, we started working out a draft that was stable and then we started refining it. So this took a long time, this took more than a year of work, very hard work on behalf on a lot of students, with me organizing and then checking on all this work and going through and refining it. Then we delivered it to Carl Malamud, who is the publisher, and he put this into HTML, and got this set up online and really made it look nice. This is the product that we gave to people to comment on in a beta version. So that’s how this actually happened. DS: So, there were other people who were involved in the project besides Carl, yourself and the student members. What roles did they play and how did you get them involved in the project? CS: We had a group of advisors. These were copyright experts – people like Pam Samuelson, for example, who was one of our advisors. She’s a professor at Berkeley and really I think the figurative dean of the copyright professoriate. Pam gave us a fair amount of input, and others did as well, designed to make sure that when we made decisions about what our understanding of rules was like and how we express that understanding, that these decisions made sense. So we had a bunch of people who kept tabs on us and we could go to them with questions and they would give us input. Also, we had Joe Gratz, who’s a lawyer at Durie Tangri in San Francisco. Joe took a look at our work. He was one of the people advising us on our legal issues and then later on he represented us when we had discussions with the Harvard Law Review. DS: So, if you feel comfortable discussing it, how did you approach the legal copyright concerns posed by the Indigo Book, what was formally known as Baby Blue, and how did you address these concerns when you were drafting it? CS: So the concerns came in two varieties, mainly. One was copyright and the second was trademark. With respect to copyright, the overarching idea that I had from the beginning, which I think is right, was that the uniform system of citation, which is this legal citation system that the bluebook articulates, is a system. It’s billed as such on the cover of the Bluebook, which says “uniform system of citation.” Systems are simply not copyrightable. Section 102(b) of the Copyright Act rules them out of copyright. Systems you might be able to patent. The Bluebook is not a system you can patent. It’s not a novel system. It’s been on sale forever. It would fail if they tried to patent it. So it’s not a patentable system and systems are not copyrightable. If that’s the case, then the rules, the structure of rules that makes up the uniform system of citation is basically free for all of us to use. The copyright question isn’t really about the rules. The copyright question is really about how you express them. Really what the project was about was understanding what the rules are and trying to re-express them in language that made the rules clear without being identical to the language in the Bluebook. Now, when we needed to express a rule in a certain way, we did. And we would depend on the merger doctrine to shelter us. It gives us the ability to do that because if you can’t have a copyright on a rule and there’s only one way to express the rule, you got to be able to express it. So where we needed to rely on the merger doctrine, we did. We also replaced all of the examples. The Bluebook is full of examples. We tried to make them better where we could. We picked different examples and we tried to make the examples a little bit better, sometimes a little bit funny. We added a bunch of material trying to clue people into the real meaning of the rules – what we first called Baby Blue clues and then we ended up calling the Indigo Inklings. So these were little hints we dropped into the book at different points to help people understand how the rule works and how to use the rule. If you read the Indigo Book, it just reads very different than the Bluebook. It’s more succinct. I think it’s more entertaining. I think it’s sleeker and more efficient and just a better citation manual for what it does. The second issue is trademark. Now, I wanted this book to be called Baby Blue for a reason. The Bluebook is Harvard Law Review Association’s version of the uniform system of citation. Most people, if you talk to them, they don’t know what the uniform system of citation is, they only know the Bluebook. It was important to me that we find a way to signal that what we were doing was compatible with the Bluebook, that it was in fact an expression of the same uniform system of citation that the Bluebook is an expression of. Therefore, if you used our manual, your documents would look just like you were using the Bluebook. No one would be able to tell. I thought this was important because, you know, lawyers are very conservative. The Bluebook is the standard. We wanted to recreate the standard. We wanted to give people a choice in how they used the standard – the uniform system of citation. They could use it by using the Bluebook or they could employ that system by using what we called Baby Blue. So I thought Baby Blue was a good name in that it communicated to people that this book was “blue.” That you could use this book and your documents would be consistent with the Bluebook’s uniform system of citation. I thought of an example. If you think of artificial sweetener packets, “Equal” is the blue one, “Splenda” is the yellow one, and “Sweet ‘N Low” is the pink one. People don’t know the substance in that blue packet is aspartame, right? People don’t remember aspartame. They remember either the brand name, “Equal,” or they remember the color of the package, blue. So competitor generic aspartame packets are often blue. The reason is because people are looking for the blue sweetener. In the same way that competition in artificial sweeteners depends on the use of a color that people have come to associate with a particular product, I think competition, to my mind, in the market for legal citation systems requires a reference to this color, which has become the color of a particular form of legal citation. That’s why I thought “Baby Blue” was a good name. Now, I didn’t think Baby Blue would be confusing to people. I thought people would understand that Baby Blue was a very different thing than the Bluebook. We had a disclaimer on the cover that said that this is not sponsored by or affiliated with the Harvard Law Review or the Bluebook. But the Harvard Law Review people threatened to sue. They were adamant that we not use the word “blue” in our title. Eventually, we decided that we would rather this book come out and have people start using it than spend a couple of years fighting this out with Harvard. Although I’m confident we would have beaten them, I didn’t want to spend a couple years with Harvard fighting it out. So we changed the name to the “Indigo Book,” which I don’t think, under anybody’s account of trademark law, would be a trademark violation. I can’t imagine people being confused between the Indigo Book and the Bluebook. Now indigo of course is the plant that is used to make a form of blue dye. It is a dark, kind of purplish-blue color. We are trying to signal to people that this is blue. I’m not sure if it’s as effective a signal as “Baby Blue” was. We’ll see. But I do need people to understand that this book is compatible with the Bluebook. That’s the message that we’re trying to send. DS: Going back to your motivation, were you inspired in any way by Richard Posner’s article, “Bluebook Blues”? CS: Yeah, so, Richard Posner really hates the Bluebook. Recently he actually said that he believes the Bluebook should be burned, which I think is fairly extreme. I’m generally anti-book burning. So, you know, the University of Chicago has some experience with this. When I was a student there – I went to law school there – there was something that Chicago published called the Maroonbook. The Maroonbook was an elegant little book of legal citation. Very skinny. Not really too many rules. There were just the right number of rules and then there was a standard, which was, you know, when a rule doesn’t cover a situation, try to make yourself understood. Try to construct a citation that will allow people with some reasonable effort to locate the source, which I think is a great way to think about citation. Like a lot of things University of Chicago does, it was very terrific, and I think very thoughtful, and it failed. It gained basically no traction. And the reason again I think is the deep conservatism of lawyers. Generations of lawyers have been educated to use the Bluebook. That’s the resource they know how to use, they don’t want to switch. Even though I think the Maroonbook is a much better resource, it didn’t gain any ground. So this really did inform us. Judge Posner has been agitating for a simpler form of legal citation. I very much agree with him but I think this is a goal that’s best approached in two steps. The first step is to set the Bluebook free of copyright. That’s what I think we’ve done with the Indigo Book. This is an implementation of the uniform system of citation that anyone can work with. By “work with” I mean do what Judge Posner thinks should be done: simplify dramatically. There’s no reason that there should be a rule articulated for every circumstance. You could probably cover the majority of citation questions within a dozen rules. Then everything else could be left to a standard, which is to construct a citation that would allow a reasonably smart person to find the resource reasonably well. We can get there. Before we do that, we need to get to step one, which is to break the monopoly that Bluebook has had over the uniform system of citation, which is the underlying citation system, which is not copyrightable. There has to be some other way that people can access this system – a way they can, not simply access, but that they can work with, that they can change, that they can streamline, that they can improve, that they can expand. This is the strategy. In terms of goals, I’m completely with Judge Posner. In terms of strategy, I think we would differ a bit. DS: So now that the Indigo Book is out, and it’s out to the public, what feedback have you received from the legal community and what impact do you hope it will have on the legal profession as a whole? CS: I mean, people like it. They like it a lot. We’ve gotten a lot of feedback from people who are using it and enjoying using it. I think now, truthfully, the work has just started. We have the resource. It’s available to most people. A whole bunch of work needs to be done. Whether I’m the one to do it is unclear. This is a job probably for a lot of people with a lot of different talents, bringing a lot of different ideas to the task. So, it’s important that the next generation of law students knows that there is a choice available to them. They can use the Bluebook, they can use the Indigo Book, and they’ll get their job done either way. It’s important that lawyers out in the marketplace know this too. There’s going to be a lot of evangelism that goes into making sure that they do know this. Equally important is the task of attracting developers to the Indigo Book; people who are going to think about how to make citation better. And how to revise this book and circulate the revisions in a way that makes the process of determining our legal citation rules more democratic. This work all needs to be done and we’ve just gotten to the first step. We’re going to be busy. DS: So, going beyond that step, what’s next for the Indigo Book? Do you have any plans to support and update it? CS: We’re trying to figure that out right now. Like any open source project, it’s not really about us. It’s about all the people who want to be involved. So, part of the challenge moving forward would be to attract people to the task of developing extensions, changes to the Indigo book. That’s something we can do using open source tools. So, it’s to be determined. There are a bunch of different ways to think about the development of this resource and we’re just trying to figure out what’s the right way to do it at this point. We don’t have yet a firm plan, but we’re working on it. A lot of that thinking will be done this summer. DS: I’m excited to hear what goes on then. So, where else could the legal profession benefit from an open source approach? CS: Well, case law. You know a lot of the legal profession accesses case law through Westlaw and Lexis. They pay for the privilege. There’s no reason that these government works, which we pay for the production of through our tax dollars, should be locked up in a Lexis / Westlaw duopoly. A lot of case law is now available on the web, but not nearly all. Making case law more widely available will open up the law to people who don’t have access to it through the expensive, traditional means. People are working on this, that’s a project that’s ongoing, and there’s a lot of hands on that, so I think there will be progress over time. DS: What about court filings? Do you think that would be an area that also needs it? CS: Yes. So, PACER is the service that the federal courts use for access to court filings. I know a lot of people who use PACER to gain access to court filings and they get their credit card bills at the end of the month. It’s shocking how quickly your credit card bills mount when using PACER. Again, I understand that the federal court system needs to recover its costs – the cost of providing court filings to the public – but PACER just seems like an extraordinarily complex and expensive way to do that. DS: In all, what lessons do think the Indigo Book poses for copyright reform generally? CS: Yeah, so I haven’t really thought about that. I don’t think of this as a copyright reform project. I think of this more of a project that attempts to make some infrastructure that’s very important to the public available to the public. Not simply available to use, but available to change, to work with, to govern. So I don’t have a broader copyright reform idea in terms of how the Indigo Books relates to this topic. It’s really a project that has to do with a specific piece of infrastructure that is important to lawyers. DS: Finally, before we close, how did this project or open source law in general relate to your professional or academic work? CS: I write a lot about areas in which there isn’t a lot of copyright, but there’s a lot of innovation, so the fashion industry is a great example of that, open source software is another. I think, in our legal citation system, there hasn’t been a lot of innovation. There’s been a lot of growth in the number of rules, but the number of rules is not how you judge a legal citation system. Its flexibility, its suitability to the task, its accessibility by lawyers and by law students—that’s how you judge it. I think we could have a lot of innovation in all those areas. I actually think that an open source approach is more likely to bring us that innovation than continued control by one unrepresentative and small group of elite law students.

Smiley Face
Copyright Symbol
Book
: Emoji as Language and Their Place Outside American Copyright Law

<figure><img src="/wp-content/uploads/2016/04/NYU_JIPEL_Vol-5-No-2_3_Scall_EmojiAsLanguage_Image_Title1.png" alt="Smiley Face" align="left" width="30" height="30" /></figure><figure><img src="/wp-content/uploads/2016/04/NYU_JIPEL_Vol-5-No-2_3_Scall_EmojiAsLanguage_Image_Title2.png" alt="Copyright Symbol" align="left" width="30" height="30" /></figure><figure><img src="/wp-content/uploads/2016/04/NYU_JIPEL_Vol-5-No-2_3_Scall_EmojiAsLanguage_Image_Title3.png" alt="Book" align="left" width="30" height="30" /></figure>: Emoji as Language and Their Place Outside American Copyright Law
By Rachel Scall* Download a PDF version of this article here.  

Introduction

In the mid-1990s, as email and internet communication were gaining ground in his native Japan, Shigetaka Kurita noticed a problem with these new means of communication. Traditionally, the Japanese people would communicate via long personal letters filled with lengthy phrases and greetings meant to convey emotions that were not necessarily found in the dictionary definitions of the words on the page.[1] Email involved much shorter and quicker communication. As a result, people left lengthy expressions of emotion off the page.[2] Suddenly it was not clear whether a given word in an email was “a kind of warm, soft ‘I understand’ or a ‘yeah, I get it’ kind of cool, negative feeling.”[3] Kurita recognized that online communications were likely to remain short and terse in comparison to Japan’s traditionally long written letters. As such, he sought to find a new, shorter way to express the connotations of a traditional writer’s written word. Drawing from street signs, Chinese characters, and symbols used in manga comics,[4] Kurita developed a series of symbols that represent emotions and other abstract ideas.[5] The symbols, which began life as a system of 176 12-pixel by 12-pixel glyphs,[6] eventually evolved into more than 1,000 symbols now known as emoji.[7] Kurita “never expected emoji to translate abroad,”[8] but emoji became a mainstay of American culture after Apple included an emoji keyboard with its iPhone iOS 2.2 update in 2011.[9] Since then, emoji have worked their way into many aspects of online communication. Emoji are used in private communications, such as text messages and emails, and public communications, such as Twitter and blog posts.[10] Some users have truly taken their emoji usage to the next level; in 2009, Fred Benson founded a Kickstarter campaign to translate Herman Melville’s Moby Dick into an all-emoji version, titled Emoji Dick.[11] In their short life, emoji have had little contact with the American legal system. In the criminal trial context, courts have begun to admit evidence that includes emoji in the context of a text message or online posting.[12] Judge Katherine Forest, presiding over a trial concerning the online black-market website Silk Road, instructed the jury to take note of any emoji included in any document and to consider the emoji part of any document submitted to evidence.[13] In the context of intellectual property law, however, little has been said about how emoji fit into the American system of intellectual property protections. Given that emoji are, by their nature, digital code-based pictures, it is possible that if emoji were to receive intellectual property protection, such protection could fit into the copyright system. Copyright protects “original works of authorship fixed in any tangible medium of expression.”[14] Facts and ideas themselves are not protected.[15] One form of copyrightable works is “pictorial, graphic, and sculptural works,” to the extent that the works are aesthetic and not functional.[16] Emoji are two-dimensional representations that could plausibly fall under the pictorial, graphic, and sculptural category. Even if emoji do fall within the domain of copyright protection, however, public policy may dictate that they would be better left to the public domain. This paper argues that, given the ways in which emoji are used in American culture, they should not receive copyright protection and should be left to the public domain. Copyright law should treat emoji more like an evolving language than intellectual property belonging to a person or entity. Americans already use emoji in their communications, and copyright’s constitutional purpose of promoting the arts and sciences[17] would be best achieved by encouraging the use of emoji as an “accessory” to language. Free use of emoji as part of the American lexicon will promote communication, thus promoting learning and free expression.[18] Part I of this paper will discuss how emoji function. This section will explain how emoji work from a technical standpoint, as well as how they have become part of today’s social and communicative framework. Part II will analyze how emoji could fit into current U.S. copyright law under the protections for pictorial, graphic, and sculptural works. This section will also discuss the impact such protection would have on the incentives to create emoji and will also touch on other intellectual property regimes that may be applied to them. Part III will explain why the public would most benefit from categorically excluding emoji from copyright protection, and how the growth of emoji should be governed outside copyright protection.

I. Emoji’s Technical Elements and Their Communicative Function

This section will explore how emoji function and how people use them. Part A will cover the technology and business of emoji and how they appear on users’ devices. Part B will explore how emoji are developing as language as people begin to work them into various forms of electronic communication.

A. How Emoji Work from a Technical Standpoint

Shigetaka Kurita’s first set of emoji, created in the mid-1990s,[19] were a feature on a pager marketed to teenagers.[20] A somewhat uniform set of emoji did not emerge until 2008, and the emoji most Americans are familiar with only emerged when Apple included the characters in a 2011 iOS update.[21]
Emoji may appear to be simply a series of pictographs of people (
People
),
places (
Desert
), and things (
Camera
), but, in essence, each emoji is a unique piece
of computer code.[22] When Japanese technology companies first began to incorporate emoji in mobile technologies, such as pagers and cell phones, different companies used different codes to represent the same emoji symbol, and sometimes the same code to represent different symbols.[23] This coding problem was not unique to emoji: as different companies around the world entered the realm of computing, different methods emerged for coding symbols used in virtually all languages.[24] Different forms of coding for the same symbols – emoji or otherwise – led to interoperability between computing platforms.[25] Enter the Unicode Standard. The goal of Unicode is to provide a “unique number for every character, no matter what the platform, no matter what the program, no matter what the language.”[26] The first Unicode standard debuted in 1992.[27] All modern Internet browsers and most leading operating systems support Unicode.[28] The Unicode Consortium manages the Unicode Standard through its role as a non-profit “founded to develop, extend and promote use of the Unicode Standard.”[29] The Unicode Consortium has been working to standardize various characters for Internet use for more than 20 years.[30] Unicode’s “work is ubiquitous to the point of being invisible”;[31] the Unicode Standard governs every character that people read or type on electronic devices.[32] Given that emoji emerged as a set of characters that only exist via technology,[33] it is not surprising that it should fall to the Unicode Consortium to manage the code that allows users to communicate via emoji.[34] The Unicode Consortium gives each emoji symbol a code and a name, such as “U+1F36D LOLLIPOP.”[35] The name only generally describes the character, while the code instructs the computer what, specifically to pull up as text.[36] The Unicode Consortium determines the code that makes the emoji appear on a user’s screen, but it does not design the actual emoji seen by the user.[37] The emoji symbols are similar to typefaces, and are designed by each technology company that chooses to incorporate emoji in its product.[38] For example, U+1F49B YELLOW HEART is designed by apple to look
like
Heart
, but is designed by Android to look like
Heart
.[39] There are other
emoji displays that are simpler and resemble a traditional Dingbats font.[40] The Unicode Consortium provides the following chart, which compares examples of different emoji displays used by different companies:
Unicode Consortium Chart
  The chart features, from top to bottom, four different displays for U+1F36D LOLLIPOP, U+1F36E CUSTARD, U+1F36F HONEY POT, and U+1F370 SHORTCAKE.[41] Technology companies are free to display each piece of code as they choose, and the Unicode Standard names are provided as suggestions for how a given piece of code should appear to the user.[42] To better understand the role of different players in the functionality of emoji, it is helpful to analyze a problem that has plagued American emoji users since Apple first popularized emoji: the dearth of racial diversity displayed by the “human” characters. Apple’s original emoji character set featured more than 30 representations of humans, as well as various hand gestures and body parts (such as ears and noses), all of which were Caucasian.[43] Arguably only 2 or 3 emoji were not Caucasian, and not one was black.[44] Apple agreed there must be more emoji diversity, but claimed its hands were tied by the code provided by the Unicode Standard.[45] However, this statement appears to be an example of Apple dodging the diversity issue because the Unicode Standard does not control the appearance of the emoji or require any racial or ethnic manifestation.[46] Although it is clear that Unicode controls the emoji code, and companies like Apple control the way they look, the Unicode Consortium worked to find ways to partner with the companies designing emoji in order to provide more diversity.[47] Apple’s release of iOS 8.3 in April 2015 finally gave users six skin-tone options to choose from for the majority of “people emoji,” but the emoji representing families and couples are only available in a yellow, non-human skin tone.[48] Because emoji code makes it possible to include images in-line with text, they occupy a new and unique way of communicating. Although users could previously share a photo with one another, or draw each other pictures, the versatility of emoji mixed with text gives them the potential to develop as part of language, or even as their own form of language. Now, people can replace words with emoji where they feel the emoji will convey more emotion simply a typed word.

B. Emoji as an Element of Language Expanding Communication

Emoji may have been intended to clarify connotations in brief online communications,[49] but today they play a larger role in digital communications.[50] Emoji can be used “as punctuation [excited face], as emphasis [sob], as a replacement for [several] words (“Can’t wait for [palm trees] [sun] [swim]!”) or to replace words altogether.”[51] Emojitracker, an online database of real-time emoji use on Twitter, updates so quickly that it opens with an epilepsy warning.[52] In fact, according to Emojitracker’s data, “people are averaging 250 to 350 emoji tweets a second.”[53] This calculation does not even account for emoji used in text messages, email, “gchat,”[54] and other platforms.[55] Emoji have been referred to as “an optional written language,”[56] “a foreign language,”[57] and “digital hieroglyphics that, in many cases, can substitute for lettered language.”[58] Linguist Ben Zimmer has said that although emoji are not yet a “full-fledged language,” they do “seem to have fascinating combinatorial possibilities. Any sort of symbolic system . . . used for communication[] is going to develop dialects.”[59] Zimmer’s statement is telling: emoji have been used for a number of purposes, but seem most effective when used in the context of an already existing full-fledged language. For example, Emoji Dick, an all-emoji translation of Moby Dick,[60] does not have quite the level of elegance and readability as the original, in part due to the fact that there are more than 1,000,000 words in the English language,[61] but only 1,000 or so emoji.[62] Emoji can, however,
approve (
Thumbs Up
), express emotions (
Smiley Face
Tear Face
Grimace
), describe what you want for
dinner (
Pizza
), and add to written works and conversations in a variety of ways.
In fact, linguist Tyler Schnoebelen has found that emoji have begun to develop their own grammar of sorts.[63] For example, emoji tend to appear at the end of messages.[64] Emoji’s growth as a language depends on the organic use and development of meaning that has been characteristic of its use thus far. Intellectual property protections, however, could stymie that growth by taking emoji out of the public domain. If emoji creators own copyrights in their creations, users may lose some of their freedom to transform emoji into an increasingly useful form of communication.

II. Failure to Fit Emoji into the American Copyright Structure

It is clear that emoji can potentially be classified in multiple ways: as a series of pictures, as typefaces, as computer code or as a component of language. How emoji fit into U.S. copyright protections depends on how they are classified. Part A of this section will analyze copyright protection for pictorial, graphic, and sculptural works and how emoji – either individually or as a set – could fit into this category of copyright protection. Next, Part B will look at how copyright law would treat emoji when used in combination and will touch on how trademark law may govern combinations of emoji. Part C will briefly discuss possible copyright protection for emoji code. Part D will discuss the standard-essential patent model of intellectual property protection and the consequences of applying a compulsory licensing scheme to emoji.

A. Pictorial, Graphic, and Sculptural Works: Individual Emoji vs. Full Set of Characters

Under the Copyright Act of 1976, U.S. copyright law protects “original works of authorship fixed in any tangible medium of expression,” including “pictorial, graphic, and sculptural works” (“PGS” works).[65] PGS works include two and three-dimensional artistic representations, including commercial art, fine art, and anything in between.[66] These works are protected for their artistic merit, but are not protected insofar as they may be useful or functional.[67] Emoji could plausibly gain copyright protection as PGS works, given their nature as two-dimensional pictures. To be eligible for this protection, emoji would first have to be “original,” or a work “independently created by the author” that possesses “at least some minimal degree of creativity.”[68] Originality is not a very difficult standard to meet: “a work may be original even though it closely resembles other works so long as the similarity is fortuitous, not the result of copying.”[69] An original work must simply “possess some creative spark, ‘no matter how crude, humble or obvious’ it might be.”[70] To determine whether emoji fulfill copyright’s originality requirement, it is important to determine whether the idea behind a given emoji and the expression of said emoji are separable. For example, the “grinning face emoji,” also known as the “smiley face emoji” or “happy face emoji,” looks
like
Smiley Face
.[71] The idea of a smiley face is not protectable by copyright because
ideas themselves do not fall within copyright’s scope of protections.[72] Smiley faces, as a category, represent “a larger private preserve than Congress intended to be set aside in the public market” under the monopoly created by copyright.[73] But the grinning face emoji is only one example of the many ways to express a smiley face. In fact, the emoji set alone contains
many examples of smiley faces:
Smiley Face 1
,
Smiley Face 2
,
Smiley Face 3
. The different smiley face emoji
are expression of the idea of a smiley face, and copyright protection may be applied to expression of an idea, so long as the expression is an original creation.[74] Given that smiley faces may be expressed in many ways, and assuming that emoji were not copied from already-existing smiley faces, the grinning face emoji likely fulfills copyright’s originality requirement.[75] There is, however, an important exception to copyright’s originality rule. When an idea is “very narrow, so that the topic necessarily requires if not only one form of expression, at best only a limited number . . . the subject matter would be appropriated by permitting the copyrighting of its expression.”[76] This “merger” of expression with idea makes a work uncopyrightable and therefore, “when merger occurs, identical copying is permitted.”[77] This means that if there is only one way, or very few ways, to create an image of a particular idea, that image will not receive copyright protection.[78] To give copyright protection to an image that captures the heart of an idea would be to ignore the idea-expression distinction and to give a copyright monopoly over something that Congress judges to belong in the public domain.[79] For example, there may be only a small number of ways to create an icon of a basketball or an American flag. If this is true, it is
possible that the basketball emoji,
Basketball
, and American flag emoji,
Flag
, are not
copyrightable because the idea behind those emoji merges with the images used. The more generic, and less creative, an emoji is, the more likely it will merge with the idea it represents and therefore be uncopyrightable. Different providers of emoji “fonts” have interpreted the Unicode emoji code in order to come up with different, and original, displays of emoji.[80] Where an emoji is more than an “indispensable, or at least standard” manner of displaying a given idea, it is likely copyrightable (assuming it was not copied from a preexisting work).[81] However, where an emoji is either the only way, or one of very few ways to express an idea, it is likely uncopyrightable and part of the public domain. Given that many emoji do not appear to be generic images, or duplicate images representing the same ideas,[82] this analysis assumes that the majority of individual emoji are not subject to the merger doctrine and are therefore copyrightable. Next, in order to gain copyright protection, emoji must be “fixed in any tangible medium of expression.”[83] “A work is ‘fixed’ in a tangible medium of expression when its embodiment in a copy . . . is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration.”[84] Digital displays of original images are considered “fixed” because they can be perceived by the user.[85] It does not matter that the user affects the display by choosing the emoji she wishes to use – the display is still considered “permanent or stable” for the purpose of fixation.[86] Assuming that emoji, as individual images, meet the copyright requirements of originality and fixation, it appears that they are eligible for copyright protection as PGS works. Taken as a collection, it is not as clear that emoji are protectable under current copyright law. As a collection, emoji bear a close resemblance to a typeface. A typeface is “a design of an alphabet and other typographical symbols placed on devices” used in connection with printing, traditionally, and digital displays.[87] Congress had an opportunity to consider copyright protection of typefaces while preparing the Copyright Act of 1976, but Congress decided against protecting typefaces under copyright law.[88] This decision, to deny copyright protection to typefaces, was upheld by the Fourth Circuit in Eltra Corp. v. Ringer.[89] There, the court stated that a “typeface is an industrial design in which the design cannot exist independently and separately as a work of art.” Due to this holding, and lack of protection under the Copyright Act, typeface has never received copyright protection.[90] Legal commentators still debate whether typefaces are truly industrial design or are actually works of art deserving copyright protection.[91] Because typefaces are necessary for humans to communicate via writing, giving typeface creators lengthy copyright monopolies over their designs would not make sense because it could limit means of communication, thereby stymying free expression. Furthermore, copyright law cannot provide a monopoly on the limited ways to legibly express a letter.[92] It is possible that the creative aspects of a typeface simply cannot be separated from its usefulness. Given these arguments, denying typefaces copyright protection makes sense. Emoji may fall into the category of “other typographical symbols,” much like the ITC Zapf Dingbats typeface.[93] ITC Zapf Dingbats qualifies as a set of copyrighted symbols, but is not a copyrighted typeface.[94] Therefore, it is possible that emoji are protected as individual “copyrighted symbols,” but as a system represent an uncopyrightable typeface. Excluding emoji from copyright protection, as a typeface, would create a protection regime for emoji that would favor users over creators, thus allowing emoji to develop as a language, rather than as a marketable good. Without copyright protection, users are free to include emoji in text messages, websites, and other written digital works and communications without the threat of a copyright suit. This system of non-protection promotes free speech via emoji, thus allowing the greatest number of people to participate in helping them evolve as a language or component of language. Of course, it is necessary that companies have the incentives to create emoji fonts, so that users have access to emoji images and not only the underlying code. Without images, emoji are not useful for communication. It is unlikely that a lack of copyright protection for emoji images would disincentivize creators, given the environment in which emoji are currently created. Electronic goods and software manufacturers develop emoji as a feature of a given smart phone or other digital platform. So long as consumers demand emoji on their digital devices, manufacturers will have incentives to include emoji typefaces on those devices. It is not necessary that many emoji typefaces be created, because the fewer the typefaces, the more homogenous emoji will be, and the easier it will be for different people to understand the characters. Although people may prefer one style or expression of Unicode’s emoji code to another style or expression, communication of emoji is dependent upon uniform display to promote understanding. For example, what appears to an
Apple user as the hair flick emoji (
Apple Hair Flick
) may not be recognizable on an
Android device, where the same emoji appears like this:
Android Hair Flick
.[95] A study of
popular anthropomorphic emoji found that people do not interpret emoji the same way and that “[c]ommunicating across platforms . . . adds additional potential for misconstrual.”[96] Having one standard set of emoji, rather than encouraging people or companies to create various expressions of emoji, would help eliminate this communication problem.[97] Additionally, having a standard display would prevent various creators of emoji display from interpreting Unicode emoji code as completely different displays, as with the Apple yellow heart emoji and the Android 4.4 hairy heart emoji. A uniform system of emoji images would prevent different dialects from developing – a valid public policy goal that would avoid people being split into dialect groups simply based on their chosen electronic or mobile device provider. Otherwise, people with iPhones would end up developing one emoji dialect, while people with Android would essentially develop a separate language. Copyrighting emoji code would essentially place barriers between people simply because of their electronics preferences.

B. Intellectual Property Protection May Be Available for Emoji in Combination

When people use emoji to communicate, they may express their ideas using a grouping or combination of emoji. For example, you could ask someone if
they want to grab pizza and a movie (
Pizza
Plus
Camera
Question Mark
), or signal disbelief with
the phrase “holy crap” (
Praying Hands
Poop
).[98] Looking at the emoji set as a means of
communication, each emoji represents a word or phrase. Groupings of emoji therefore make up phrases or sentences, but would likely not be considered creative works for the purpose of copyright protection. When those phrases or sentences are strung together to make a novel or other creative, written work, however, the grouping of emoji may rise to the level of originality necessary for copyright protection. A short string of emoji used to ask a friend to grab pizza and a movie would likely merge with the idea of asking the question in the emoji language, and therefore be uncopyrightable under merger doctrine. Yet, rewriting Moby Dick in emoji requires creative choices and the resulting emoji novel would be copyrightable.[99] It is possible that short strings of emoji that are unprotectable under copyright could be eligible for trademark protection. Trademark law gives the producer a monopoly on the mark, allowing him or her to prevent competitors from using it.[100] Trademarks can include “any word, name, symbol, or device, or any combination thereof” used by a person “to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.”[101] Under this definition, it is unlikely that a single emoji or a combination of emoji used commonly in communication could be trademarked because such commonly used emoji would not be able to “identify or distinguish” a brand. This policy allows emoji as words and emoji as sentences or phrases to remain in the public domain as emoji develop as a means of communication. A combination of emoji that would not readily communicate an idea unless associated with a brand, however, may be eligible for trademark protection. For example, a company called
Disk
Cactus
, or Disk Cactus, may be able to register its brand name as a trademark
because the combination
Disk
Cactus
is unique and will only have meaning if
associated with the brand.[102]

C. Computer Program Protection of Unicode Standard Coding of Emoji

Another category of original, fixed works protected by copyright law is computer programs.[103] The Copyright Act defines a computer program as “a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result.”[104] Computer programs qualify as literary works even though they are not written using words.[105] As with PGS works (and all copyrightable works), a computer program must be fixed and original in order to be protected by copyright.[106] Each piece of emoji code is a short combination of letters and numbers.[107] These combinations of letters and numbers tell a computer to pull up the specific emoji the user wishes to type.[108] Therefore, the emoji code technically fits within the copyright definition of a computer program.[109] It is more natural, however, to understand the computer code enabling the use of the emoji, such as the software that allows the user to type with emoji, to be understood as a computer program. Because it is not very natural to think of something that is as short as emoji code as a computer program, it is likely that the code underlying emoji is not copyrightable as a computer program. The lack of copyright protection for emoji’s underlying code would ensure that copyright law could not interfere with the Unicode Consortium’s work in making emoji (and all languages) interoperable across digital platforms. Interoperability ensures that people using all types of computer and Internet platforms can communicate with one another via the Internet. Otherwise, it is possible that something typed on an Apple computer or a Google Chrome Internet browser would show up as empty rectangle, rather than readable type, on a Windows computer or an Internet Explorer browser.[110] If every digital platform had to create its own computer code for emoji in order to avoid infringing another platform’s copyright, then users on different platforms would never be able to send each other emoji.

D. The Standard-Essential Patent Model and Compulsory Licensing of Emoji under Copyright

It may be tempting to draw parallels between emoji and products that must conform to a standard in order to be usable, such as electronics with outlet-plugs. Emoji require code that conforms to interoperability standards set by the Unicode Consortium, much like a plug must fit a standardized outlet. The plug and outlet are covered by the patent system because they are useful articles. Specific types of plugs and specific types of outlets, however, are required in order for products to function in the U.S., so the patent system cannot give any one entity a monopoly over these standards. Therefore, a special category of patents exists, called standard-essential patents, which require “fair, reasonable, and non-discriminatory” licensing.[111] Perhaps a similar type of special copyright protection could be given to emoji, requiring compulsory licensing in a similar manner. This would mean that the emoji code created by the Unicode Consortium would be licensed to computer manufacturers for a fair, reasonable, and non-discriminatory rate. The manufacturers who choose to pay the licensing rate could then develop images and keyboards for the emoji of their choice and issue another fair, reasonable, and non-discriminatory license to users who wish to use emoji outside of private communications.[112] Even with “fair, reasonable, and non-discriminatory” licensing, however, such a system would erect barriers to emoji use that do not seem to be required to fulfill the Framers’ intellectual property goals: the promotion of learning and the creation of works that produce “utility.”[113] The Unicode Consortium, which controls the creation and management of all emoji code, is a non-profit and would not benefit from a license that would make emoji code into a commercial and profitable good.[114] The companies that create emoji images and make them usable by consumers could potentially make a profit by licensing emoji for public display, but it seems unlikely that this would be a very profitable market. Consumers are already accustomed to being able to use emoji however and whenever they wish without the need to pay for a license.[115] A licensing system may not cause users to abandon emoji altogether, especially not in the realm of private communications, but may limit creation of emoji-related resources if the creators of those resources cannot or will not pay licensing fees.[116] Companies could sue users for public display of copyright-protected emoji images, but the companies would be suing their own consumers, which would likely be bad for business and public relations. Moreover, users may be able to bring strong fair use defenses that would result in lengthy and costly litigation.[117] Overall, this system of copyright-with-licensing would create an unnecessarily confusing and complicated marketplace. An analysis of current U.S. copyright law reveals that it may be possible to protect emoji in some way. Perhaps individual emoji images could be given copyright protection or could be subject to a compulsory licensing scheme. Even if the copyright regime allowed these protections, however, public policy dictates that emoji should be excluded from copyright protection and left to the public domain.

III. Emoji as Constructed Language and Why Copyright Cannot Be Applied

Emoji are more than just a set of small glyphs; they can be seen as a burgeoning means of communication. Part A of this section will introduce the idea of constructed languages and explain how emoji may be seen as a constructed language accessory. Part B will explain how emoji will continue to grow if categorically excluded from copyright protection in order to promote emoji’s use as language. Part C will explain how emoji may be governed and developed if left to the public domain.

A. Emoji and Their Development as a Constructed Language Accessory

In many ways, emoji may be best likened to constructed languages. A constructed language, also known as an invented or planned language, is a language owing its origins to an individual human inventor, as opposed to a language that originates and evolves as people communicate over time.[118] While a constructed language may owe its “phonology, morphology, syntax, and sometimes alphabet” to a human inventor, aspects of the language may evolve organically from the inventor’s starting point.[119] English, Chinese, and Russian are a few of the many natural languages used today. Examples of constructed languages include Solresol, a language based on music scales developed by Jean François Sudre in the 1830s; Esperanto, a language created by Dr. Ludwig Lazarus Zamenhof in order to help bridge the gap “between hostile groups of Russians, Poles, Germans, and Jews;” and Klingon, a language created for the 1984 film, Star Trek III: The Search for Spock.[120] Like the constructed languages that came before it, emoji were introduced by an individual creator who laid out the bare bones for their use.[121] Since then, of course, emoji have been given life by users who incorporate the symbols into their conversations and writings. This evolution is similar to other constructed languages, such as those created by J.R.R. Tolkien in his Lord of the Rings trilogy.[122] After Tolkien laid out the initial vocabulary and structure of Elvish languages such as Quenya and Sindarin, fans studied and expanded the languages in order to write their own works in Tolkien’s constructed tongues.[123] Emoji, however, are not currently developed to the extent of a typical constructed language; as noted above, emoji are not truly a full-fledged language.[124] Emoji have the potential to expand, as Unicode creates additional emoji code and providers illustrate that code, and may eventually constitute a full constructed language.[125] Yet, until then, emoji can be best thought of as a constructed language accessory; a new, invented vocabulary to be added to and mixed with existing language. To some extent, this is what Shigetaka Kurita had in mind when he invented emoji. Kurita wanted Japanese Internet and mobile users to be able to communicate in short-form, without losing the expressiveness seen in traditional Japanese written letters.[126] What Kurita did not anticipate was that emoji would become popular outside of Japan and find their way into communications worldwide.[127] Therefore, Kurita is the inventor of the words and vocabulary of emoji (the images themselves), but users develop emoji’s grammar and fit them into the context of preexisting languages. Emoji were constructed[128] by Kurita,[129] but they are used as an accessory to preexisting natural languages, rather than as a comprehensive language on their own. The only way for emoji to grow as a meaningful language accessory is for people to use them and figure out how best to incorporate them into their communications. Currently, barriers for using and learning emoji are very low. Generally, all a user has to do is opt to add an emoji keyboard on her smartphone, and she will have all the tools she needs to begin using emoji.[130] A typical constructed language may attract very few people and require time and dedication to learn the language. For example, the most-watched episode of HBO’s Game of Thrones had approximately 7.1 million viewers.[131] Of those viewers, only a small percentage will bother to learn the show’s constructed languages, Dothraki and Valyrian, especially given their limited vocabularies and functionality.[132] Emoji, however, are available on most smartphones. As of January 2014, approximately 58% of all American adults used a smartphone, in addition to many younger Americans.[133] Any of these smart phone users can follow simple instructions to add an emoji keyboard to her phone’s standard set of keyboards and can begin to use emoji without any further knowledge.[134] Categorically excluding emoji from copyright protection by classifying them as a form of language will keep barriers to using emoji low. The more emoji are used, the more people will come to associate meaning with them and the more emoji will be able to be used for communication. Some users may give up on emoji if they have to purchase materials in order to learn their language or if emoji are not used widely, much like how many fans of television programs featuring constructed languages do not bother to learn those languages. Exclusion of emoji from copyright protection as a form of language will allow them to develop, without hurting the incentives already in place for the creation and maintenance of emoji.

B. Future Growth of Emoji with Categorical Denial of Copyright Protection

It is important to keep barriers to emoji usage low because the more people who use emoji, the more they develop as an accessory to language, giving people a greater range of expression in their communication. As linguist Ben Zimmer stated, “It’s the wild west of the emoji era. People are making up the rules as they go. It’s completely organic.”[135] Therefore, even if the Copyright Office or a court felt that emoji were deserving of copyright protection, society would benefit most if emoji were categorically denied copyright protection. If emoji are not subject to copyright protection, they will fall into the public domain and be free for all to use. The more people using emoji, the more they may develop as a form of communication. This would promote one of the Founding Fathers’ original goals of copyright law: promotion of learning.[136] At the time the Constitution was drafted, the Founder’s predominant view was that copyright should be used to encourage the creation of new works in order to improve learning, but should not grant monopolies on intellectual property that would prevent the dissemination of information.[137] In fact, Thomas Jefferson was so fearful that copyright monopolies would stand in the way of learning that he was hesitant to grant copyright and patent protection at all.[138] Of course, the Founders did decide to include intellectual property protection in the Constitution because they felt, with regard to copyright, that men would to some extent require “encouragement to . . . pursue ideas which may produce utility.”[139] It does not appear, however, that men need such encouragement to produce emoji. The first emoji came from Japan, and found their way to the U.S. without copyright protection.[140] Emoji proliferate not only in digital communications, but can be found in the fashion[141] and art worlds.[142] Additionally, despite a lack of copyright protection, new emoji are being created and disseminated. The Unicode Consortium accepts submissions from anyone with an idea for a new emoji.[143] The Consortium evaluates proposals for new emoji and develops suitable proposals into usable characters.[144] Once a Unicode Standard exists for a new character, it is up to the computer platform manufacturers to illustrate the character and make it available on an emoji keyboard.[145] For example, on April 8, 2015, Apple released its iOS 8.3 operating system, which included a new set of emoji that help alleviate the early emojis’ lack of diversity, adding more than 300 new emoji to Apple’s keyboard.[146] To exclude emoji from copyright protection under the current U.S. copyright framework, and thereby allow them to develop as a language, emoji would need to be classified as a typeface – i.e. an expression of emoji that itself merges with the idea of the emoji as language. Because typefaces are not copyrightable,[147] typeface classification would mean that users could type with emoji in order to express their ideas and thoughts, and users could display those expressions as desired. Typeface classification would not, however, mean that individual emoji are not copyrightable symbols or pictures.[148] When emoji are not used as language, that is, not used in their typeface capacity but individually as art or adornment,[149] the developer of the emoji display may have a copyright claim based on the individual symbol’s copyright protection. Yet, emoji as language would remain in the public domain.

C. Governing Emoji as Language without Copyright Protection

Without copyright protection, the greatest number of people can use emoji without creating any disincentive for the continued use of existing emoji or the creation of new characters. This lack of protection raises an important question: who will control the emoji “vocabulary?” Emoji users have developed a unique emoji grammar in a grassroots fashion.[150] Yet, private companies and the Unicode Consortium control the introduction of new characters. Users can only access newly created and existing emoji if computing platform manufacturers choose to make them available on keyboards.[151] The manufacturers, in turn, can only develop images for emoji code provided by the Unicode Consortium.[152] Essentially, the Unicode Consortium and the manufacturers form a de facto language regulator, much like the L’Academie Francaise in France or the Academy of the Hebrew Language in Israel.[153] It would not make sense for a national governing body, like L’Academie Francaise, to determine the correct use of emoji and when new emoji should be added to the language set. Although emoji technically originated in Japan, they can hardly be considered property of the Japanese government, which had nothing to do with their creation.[154] It would not make sense for the Japanese government to suddenly attempt to reign in and control a language invented by a single citizen and used by people around the world. The Unicode Consortium seems to have taken the best approach of any player thus far with regard to controlling the development of emoji. Because the goal of Unicode is to make emoji and other characters interoperable, the Unicode Consortium has no reason to favor some digital users over others as it develops new emoji.[155] The Consortium allows submissions from any user who wishes to propose new emoji.[156] The Consortium does not provide much information about how emoji proposals are selected for production, other than that technical experts review the proposals.[157] Greater disclosure and transparency of this review process may make people more comfortable with the amount of control the Unicode Consortium has over the development of emoji. The Unicode Consortium does not decide how emoji will look or which emoji users will be able to access, but perhaps another non-profit organization would be able to fill this gap. By allowing computer manufacturers to fill this gap, the manufacturers are able to shape emoji in a way that may help drive profits, or that may cater to some classes of consumers more than others. In contrast, a disinterested party not driven by profit may be able to read the demands of consumers as a whole and determine the best set of emoji for American users. For example, American users rarely use the Baggage Claim
emoji,
Baggage Claim
,[158] but would find great use of a dumpling emoji.[159] If a non-
profit set an “American emoji keyboard” standard that contained the optimal emoji set, based on research of American consumer demands, computer manufacturers would want to adopt that emoji keyboard for its American products because consumers would prefer the characters in that set. The same logic can be applied to emoji-related software designed for other countries. Furthermore, if the non-profit provided the illustrations for every emoji, even those emoji not provided to an American market could still be operable on American computers because the non-profit will ensure that an image for each emoji code is available worldwide. This emoji-imaging non-profit could work with the Unicode Consortium to illustrate the new emoji code created by the Consortium, thus ensuring that a fair process of emoji development runs from proposal to user-ready character.

Conclusion

Emoji were invented to add context and emotion to Japanese consumers’ digital communications.[160] Thanks to Apple and other computer platform manufacturers, emoji have become a popular means of communication for U.S. consumers as well.[161] Emoji’s rise in popularity in the U.S., however, has come without copyright protections. The American public stands to gain the most from emoji if the characters remain uncopyrightable. It is possible that individual emoji could be eligible for copyright protection as pictorial, graphic, and sculptural works.[162] When emoji are taken as a group, however, they closely resemble a typeface, and typefaces are categorically excluded from copyright.[163] The code that causes emoji to function on users’ devices is also unlikely to be copyrightable because it is too short to truly fit the definition of computer code.[164] Even if emoji were found to be copyrightable under current U.S. copyright law, public policy dictates that symbols should be categorically excluded from copyright protection. Without copyright protection, emoji will remain in the public domain, and users will be free to use the symbols as a form of expression that will add to the strong American tradition of free speech. To give any entity copyright protection over emoji – or even over one set of emoji illustrations – would create barriers to communication and free expression. As emoji become more ubiquitous in society, users are learning to express themselves through these symbols. Copyright protection of emoji would hamper this growing area of free expression. People do not need copyright to incentivize the management and creation of new emoji. Both non-profit and for-profit companies are currently working to bring new emoji to users without any promise of intellectual property protections.[165] Excluding emoji from copyright protections favors users, and it is the users who have made emoji into the powerful tool of communication that they have become.
* J.D. Candidate, New York University School of Law, 2016. The author would like to thank the Editorial Board of the Journal of Intellectual Property & Entertainment Law, participants of the 2016 Innovation Policy Colloquium, and Professor Jeanne Fromer. [1] Jeff Blagdon, How Emoji Conquered the World, Verge (Mar. 4, 2013, 11:46 AM), http://www.theverge.com/2013/3/4/3966140/how-emoji-conquered-the-world. [2] Id. [3] Id. [4] Manga is a style of Japanese comics. Anime is the animated version of manga. See Manga and Anime, Japan Guide, http://www.japan-guide.com/e/e2070.html (last visited Feb. 22, 2016). [5] Id.; see also Mayumi Negishi, Meet Shigetaka Kurita, the Father of Emoji, Wall St. J. (Mar. 26, 2014, 5:36 AM), http://blogs.wsj.com/japanrealtime/2014/03/26/meet-shigetaka-kurita-the-father-of-emoji/. [6] Blagdon, supra note 1. [7] Adam Sternbergh, Smile, You’re Speaking Emoji, N.Y. Mag (Nov. 16, 2014, 9:00 PM), http://nymag.com/daily/intelligencer/2014/11/emojis-rapid-evolution.html; Amit Chowdhry, Apple Releases iOS 8.3 to the Public, It Has New Emoji, Forbes (Apr. 8, 2015, 1:17 PM), http://www.forbes.com/sites/amitchowdhry/2015/04/08/apple-releases-ios-8-3-to-the-public-its-the-update-with-the-new-emojis/. This paper will only analyze the emoji based on code provided by the Unicode Consortium. Different companies have begun developing their own “branded emoticons,” but these glyphs function by downloading an app that provides a branded emoticon keyboard. See generally Kristina Monllos, Here’s Why Your Favorite Brands Are Making Their Own Emoji, Adweek (Mar. 9, 2015, 9:15 PM), http://www.adweek.com/news/advertising-branding/here-s-why-your-favorite-brands-are-making-their-own-emoticons-163325. This is different from emoji, which come standard on a variety of devices and function cross-platform as in-line text, rather than inserted pictures. [8] Negishi, supra note 5. [9] Blagdon, supra note 1. [10] See, e.g., Emojitracker, http://www.emojitracker.com/ (last visited May 14, 2015) (tracking real-time emoji usage on Twitter); Emojinalysis, http://emojinalysis.tumblr.com/ (last visited May 14, 2015) (blogging about the psychology behind the “recently used” emoji on people’s cell phones). [11] Erin Allen, A Whale of an Acquisition, Libr. Congress (Feb. 22, 2013), http://blogs.loc.gov/loc/2013/02/a-whale-of-an-acquisition/. Today, a copy of Emoji Dick resides in the Library of Congress. [12] Eli Hager, Is an Emoji Worth 1,000 Words?, Marshall Project (Feb. 2, 2015, 3:34 PM), https://www.themarshallproject.org/2015/02/02/is-an-emoji-worth-1-000-words. [13] Benjamin Weiser, At Silk Road Trial, Lawyers Fight to Include Evidence They Call Vital: Emoji, N.Y. Times (Jan. 28, 2015), http://www.nytimes.com/2015/01/29/nyregion/trial-silk-road-online-black-market-debating-emojis.html?_r=0. [14] 17 U.S.C. § 102. [15] Feist Publ’n, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345 (1991). [16] 17 U.S.C. § 101. [17] U.S. Const. art I, § 8, cl. 8. [18] Golan v. Holder, 132 S.Ct. 873, 901 (2012) (Breyer, J., dissenting). [19] Blagdon, supra note 1. [20] Jessica Bennet, The Emoji Have Won the Battle of Words, N.Y. Times (July 25, 2014), http://www.nytimes.com/2014/07/27/fashion/emoji-have-won-the-battle-of-words.html?_r=0. [21] Id. [22] Amy Weiss-Meyer, A Peek Inside the Non-Profit Consortium That Makes Emoji Possible, New Republic (June 27, 2014), http://www.newrepublic.com/article/118421/emoji-made-possible-non-profit-consortium. [23] Id. [24] What is Unicode?, Unicode, http://www.unicode.org/standard/WhatIsUnicode.html (last visited May 14, 2015). [25] Id. [26] Id. [27] Chronology, Unicode, http://www.unicode.org/history/versionone.html (last visited February 21, 2016). [28] Id. [29] Id. [30] Weiss-Meyer, supra note 22. [31] Id. [32] Id. [33] Blagdon, supra note 1. [34] Emoji and Dingbats, Unicode, http://www.unicode.org/faq/emoji_dingbats.html (last visited May 14, 2015). [35] Id. [36] Id.; see generally Miscellaneous Symbols and Pictographs, Unicode, http://www.unicode.org/charts/PDF/U1F300.pdf (last visited May 14, 2015). [37] Weiss-Meyer, supra note 22. [38] Id. [39] John-Michael Bond, You May Be Accidentally Sending Friends a Hairy Heart Emoji, Engadget (Apr. 30, 2014, 7:00 PM), http://www.engadget.com/2014/04/30/you-may-be-accidentally-sending-friends-a-hairy-heart-emoji. [40] Emoji and Dingbats, supra note 34. Dingbats is a font made up of symbols, rather than alphanumerical characters. [41] Id. The third column depicts Apple’s interpretation of emoji, while the fourth column depicts Android’s display. [42] Id. [43] See generally Ben Reid, iOS 8.3, OS X 10.10.3 Adds New Emojis, Here’s What They Look Like, Redmond Pie (Feb. 24, 2015), http://www.redmondpie.com/ios-8.3-os-x-10.10.3-adds-new-emojis-heres-what-they-look-like. [44] Id. [45] Joey Parker, What Does Apple Think About the Lack of Diversity in Emojis? We Have Their Response., MTV (Mar. 25, 2014, 1:59 PM), https://web.archive.org/web/20140327033829/http://act.mtv.com/posts/apple-responds-to-lack-of-diversity-in-emojis/. [46] Emoji and Dingbats, supra note 34. [47] Id. [48] See Reid, supra note 43. [49] Blagdon, supra note 1. [50] Bennet, supra note 20. [51] Id. [52] Emojitracker, supra note 10. [53] Bennet, supra note 20. [54] Gchat is a colloquial term for Google’s Gmail instant messenger system. [55] See Bennet, supra note 20. [56] Sternbergh, supra note 7. [57] See Damon Darlin, America Needs Its Own Emojis, N.Y. Times (Mar. 7, 2015), http://www.nytimes.com/2015/03/08/opinion/sunday/turn-emojis-red-white-and-blue.html. [58] Ruth Reader, The Emoji Is the Future of Texting on the Apple Watch, VentureBeat (Mar. 9, 2015, 3:46 PM), http://venturebeat.com/2015/03/09/the-emoji-is-the-future-of-texting-on-the-apple-watch. [59] Darlin, supra note 57. [60] Allen, supra note 11. [61] Number of Words in the English Language, Global Language Monitor (Jan. 1, 2014), http://www.languagemonitor.com/number-of-words/number-of-words-in-the-english-language-1008879/. [62] See Sternbergh, supra note 7; Chowdhry, supra note 7. [63] Katy Steinmetz, Here Are Rules of Using Emoji You Didn’t Know You Were Following, Time (July 17, 2014), http://time.com/2993508/emoji-rules-tweets/. [64] Id. [65] 17 U.S.C. § 102. [66] Id. at § 101. [67] Id. [68] Feist, 499 U.S. at 345. [69] Id. [70] Id. (citing 1 Melville B. Nimmer & David Nimmer, Copyright § 1.08[C][1] (1990)). [71] Grinning Face, Emojipedia, http://emojipedia.org/grinning-face/ (last visited May 15, 2015). Emojipedia is a website that catalogues emoji with their picture and common descriptive names. [72] Feist, 499 U.S. at 345. [73] Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738, 742 (9th Cir. 1971) [74] Id. at 740-41. [75] Id. at 741. Rather than perform this analysis for every emoji, this paper will assume each emoji passes muster under this originality test, while acknowledging that a court may find otherwise. [76] Morrissey v. Proctor & Gamble Co., 379 F.2d 675, 678-79 (1st Cir. 1967) (internal citations omitted). [77] Lotus Development Corp. v. Borland Int’l, Inc., 49 F.3d 807, n. 9 (1st Cir. 1995). [78] Id. [79] Morrissey, 379 F.2d at 678-79. [80] See supra Part I.A. [81] Hoehling v. Universal City Studios, Inc., 618 F.2d 972, 979 (1980). [82] For example, Apple’s iOS 8.3 emoji keyboard contains 13 emoji representing trains or trams, three emoji representing CDs, 4 mailbox emoji, 14 emoji hearts, and many other duplicative emoji. [83] 17 U.S.C. § 102. [84] Id. at § 101. [85] Williams Elec., Inc. v. Artic Int’l, Inc., 685 F.2d 870, 874 (1982). [86] Id. [87] Eltra Corp. v. Ringer, 579 F.2d 294, 296 (1978). See also Adobe Sys. Inc. v. S. Software Inc., 1998 WL 104303, at *4 (N.D. Cal. Feb. 2, 1998). A font is the computer program used to “generate human readable typeface designs on computer screens, printers, and other devices. Monotype Imaging, Inc. v. Bitstream, Inc., 376 F.Supp. 2d 877, 882 (N.D. Ill. 2005). [88] Leonard Storch Enter., Inc. v. Mergenthaler Linotype Co., 1980 WL 1175, at *4 (E.D.N.Y. Aug. 8, 1980). [89] Eltra Corp., 579 F.2d 294. [90] Id. at 298. [91] See generally Phillip W. Snyder, Typeface Design After the Desktop Revolution: A New Case for Legal Protection, 16 Colum.-VLA J.L. & Arts 97 (1991) (describing the legal status of typefaces in the digital age and possible intellectual property protections for digital typefaces); Emily N. Evans, Fonts, Typefaces, and IP Protection: Getting to Just Right, 21 J. Intell. Prop. L. 307, 337-39 (2014) (discussing how typefaces may fulfill requirements of copyright law, but should not fall under copyright protection). [92] Evans, supra note 91, at 337. [93] ITC Zapf Dingbats is a typeface consisting of pictorial symbols rather than alphanumeric symbols. When the word “emoji” is typed in ITC Zapf Dingbats, it appears as “❅❍❏❊❉” [94] Monotype Corp. PLC v. Int’l Typeface Corp., 43 F.3d 443, n.3 (9th Cir. 1994). [95] Emojipedia, http://emojipedia.org/information-desk-person/ (last visited Feb. 22, 2016). [96] Hannah Miller, et al., “Blissfully happy” or “ready to fight”: Varying Interpretations of Emoji, ICWSM-16 at 8-9 (forthcoming May 2016), available at http://grouplens.org/site-content/uploads/Emoji_Interpretation.pdf. [97] See id. at 9. [98] See generally All Emojigrams, A-Z, Emojisaurus, http://emojisaurus.com/all (last visited May 14, 2015). [99] Allen, supra note 11. [100] Qualitex Co. v. Jacobsen Prod. Co., 514 U.S. 159, 162 (1995) (internal citations omitted). [101] 15 U.S.C. § 1127. [102] See Disk Cactus, http://www.diskcactus.com/ (last visited May 14, 2015). [103] Apple Comp., Inc. v. Franklin Comp. Corp., 714 F.2d 1240, 1247 (1983); see 17 U.S.C. § 102. [104] 17 U.S.C. § 101. [105] Apple Comp., 714 F.2d at 1249. [106] 17 U.S.C. § 102. [107] Emoji and Dingbats, supra note 34. [108] See id. [109] See 17 U.S.C. § 101. [110] See supra Part I.A. [111] Rajendra K. Bera, Standard Essential Patents (SEPs) and “Fair, Reasonable and Non-Discriminatory” (FRAND) Licensing, 1 (Jan. 29, 2015) (unpublished article), http://papers.ssrn.com/abstract_id=2557390. [112] See 17 U.S.C. § 106 (Stating private use of a copyrighted work is not prohibited by copyright). [113] Golan v. Holder, 132 S.Ct. 873, 901 (2012) (Breyer, J., dissenting). [114] The Unicode Consortium, Unicode, http://www.unicode.org/consortium/consort.html (last visited May 14, 2015). [115] Hence the creation of resources like EmojiTracker. emojitracker, supra note 10. [116] Some examples of such resources include the Emoji Dictionary, Emojitracker, and translations of previously existing works into emoji. Emoji Dictionary, http://emojidictionary.emojifoundation.com/home.php?people (last visited May 14, 2015); emojitracker, supra note 10; Allen, supra note 11. [117] See 17 U.S.C. § 107. See, e.g., Cariou v. Prince, 714 F.3d 694 (2d. Cir. 2013), Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146 (9th Cir. 2007). [118] Michael Adelman, Constructed Languages and Copyright: A Brief History and Proposal for Divorce, 27 Harv. J.L. & Tech. 543, 545 (2014). [119] See id. [120] Id. at 545, 547-48. [121] See generally Blagdon, supra note 1. [122] Adelman, supra note 118, at 551-52. [123] Id. [124] See discussion supra Part I.B. [125] For example, Apple’s release of iOS 8.3 on April 8, 2015, added more than 300 new emoji to its selection. Chowdhry, supra note 7. [126] Blagdon, supra note 1. [127] Negishi, supra note 5. [128] See Adelman, supra note 118, at 545. [129] Negishi, supra note 5. [130] See, e.g., Kyli Singh, How to Enable Emoji on iOS, Mashable (June 17, 2014) http://mashable.com/2014/06/17/emoji-on-ios/. [131] Rick Kissell, HBO’s ‘Game of Thrones’ Finale Draws 7.1 Million Viewers Sunday, Variety (June 16, 2014, 8:56 AM), http://variety.com/2014/tv/ratings/hbos-game-of-thrones-closes-with-7-1-million-viewers-sunday-1201221238/. [132] See generally Tongues of Ice and Fire, http://www.dothraki.org/ (last visited May 14, 2015). [133] Mobile Technology Fact Sheet, Pew Research Center, http://www.pewinternet.org/fact-sheets/mobile-technology-fact-sheet/ (last visited May 14, 2015). [134] See, e.g., Singh, supra note 130. [135] Alice Robb, How Using Emoji Makes Us Less Emotional, New Republic (July 7, 2014), http://www.newrepublic.com/article/118562/emoticons-effect-way-we-communicate-linguists-study-effects. [136] Golan v. Holder, 132 S.Ct. 873, 901 (2012) (Breyer, J., dissenting). [137] Id. [138] Id. [139] Id. [140] Weiss-Meyer, supra note 22. [141] See, e.g., Dennis Green, Emoji-Inspired Slippers Puts $300 Poo on Your Shoe, Mashable (Mar. 25, 2014), http://mashable.com/2014/03/25/emoji-slippers/, Emoji-nal Backpack, Nasty Gal, http://www.nastygal.com/product/emojinal-backpack (last visited May 14, 2015). [142] See Emoji Art and Design Show, http://www.emojishow.com/ (last visited May 14, 2015). [143] Submitting Character Proposals, Unicode, (Feb. 12, 2016, 9:53 PM), http://www.unicode.org/pending/proposals.html. [144] Id. [145] See Weiss-Meyer, supra note 22. [146] Chowdhry, supra note 7. [147] Eltra Corp. v. Ringer, 579 F.2d 294, 298 (1978). [148] Monotype Corp. PLC v. Int’l Typeface Corp., 43 F.3d at n.3. [149] For example, emoji have been used as adornment on clothing, rather than as a form of communication. See, e.g., Current Moji, http://www.currentmoji.com/ (last visited May 14, 2015). [150] Robb, supra note 135. [151] There are currently Unicode Standard codes for 249 national flags, but the flags that show up in a given set of emoji are determined by software manufacturers. For example, Apple’s U.S. iPhone features 10 national flags. Emoji and Dingbats, supra note 34. [152] Id. [153] See generally Academie Francais, http://www.academie-francaise.fr/ (last visited May 14, 2015); Dafna Yitzhaki, Minority Languages and Language Policy: The Case of Arabic in Israel, 7 (May 2008) (unpublished Ph.D. thesis, Bar-Ilan University), http://www.academia.edu/11506403/Minority_Languages_and_Language_Policy_The_Case_of_Arabic_in_Israel. [154] See Negishi, supra note 5. [155] What is Unicode?, supra note 24. [156] Submitting Character Proposals, supra note 143. [157] Id. [158] The Baggage Claim emoji is the least-used emoji on Twitter, worldwide. emojitracker, supra note 10. [159] See, e.g., Ann-Marie Alcantara, 79 New Emoji Are Coming, Including a Dumpling!, Popsugar (Feb. 9, 2016), http://www.popsugar.com/tech/New-Emoji-2016-37539573. The dumpling emoji is a candidate to be coded as an emoji in 2017. [160] Blagdon, supra note 1. [161] Id. [162] See 17 U.S.C. § 101, 102. [163] Eltra Corp. v. Ringer, 579 F.2d 294, 298 (1978). [164] See 17 U.S.C. § 101, 102. [165] See Submitting Character Proposals, supra note 141; Chowdhry, supra note 7.

How Rings Fit into the Copyright Scheme: Assessing Their Intrinsic Utilitarian Function

How Rings Fit into the Copyright Scheme: Assessing Their Intrinsic Utilitarian Function
By Adine Mitrani* Download a PDF version of this article here.  

Introduction

Jewelry is considered “one of the oldest art forms,”[1] dating further back than the history of painting and more vibrant than the history of sculpture.[2] Due to rampant imitation—or inspiration as some refer to it—in the fashion industry,[3] many jewelry designers seek to use the copyright system to protect their artistic designs.[4] In the past few years, retail stores such as Nasty Gal and Urban Outfitters have been “slapped with lawsuits by jewelry designers who are crying foul over their work being mimicked without any credit and sold at fast fashion prices.”[5] Under the Copyright Act of 1976, many courts consider rings ornamental sculptures entitled to copyright protection as a pictorial, graphic or sculptural (PGS) work. With the objective of protecting artistic works and excluding functional designs from protection, the Copyright Act explicitly distinguishes useful articles. Specifically if a PGS qualifies as a useful article—defined as “having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information”[6]—then it is subject to a separability test. While courts have differed in their analysis in applying separability,[7] the test will essentially render the functional aspects of a PGS unprotectable. Fashion designs are considered useful articles mostly unprotectable by Copyright system; their purpose to clothe people is utilitarian and the designs do not meet the Copyright Act’s separability test.[8] Jewelry pieces are often lumped together with fashion articles and accessories, leading some to question their status as purely ornamental sculptures. This Note focuses exclusively on rings as they seemingly possess numerous functional purposes as compared to other pieces of jewelry. For example, rings have been used for mystical and talismanic reasons. They are still used today as portable bank accounts, as the nature of small-scale jewelry allows wealth to be hidden easily and safely, to display socially meaningful codes, such as class rings and engagements rings, and to adorn one’s hand.[9] Moreover, jewelry designers inevitably consider functional concerns when creating a ring; it is supposed to fit comfortably around one’s finger. This raises the question that if a design is created with functional concerns, does it possess an intrinsic utilitarian function? Furthermore, there are diverging opinions in the federal district courts as to whether rings are considered sculptural works subject to a separability test.[10] While most courts hold that rings are purely artistic works, this Note seeks to examine why there has been confusion as to whether the useful articles doctrine applies specifically to rings. Part I of this Note examines the history of jewelry in copyright, describing how courts have attempted to define intrinsic utilitarian function in light of the separability analysis. This section also compares case law that has expressly assessed rings in relation to the useful articles doctrine. Part II next considers rings as sculptural works not subject to a useful articles analysis. After briefly describing the evolution of jewelry in the 1960-80s, this section reinforces why rings qualify as ornamental sculpture for purposes of the Copyright Act. Part III considers rings as useful articles subject to a separability test, examining certain uses of rings as well as functional consideration in the design process. Lastly, this section analyzes critical reception in connection with rings, and explains how museum display is not a prerequisite for copyrightability. In the copyright spectrum with useful articles on one end and aesthetic objects on the other, this Note concludes that rings lie more on the artistic side. Rings do not possess an intrinsic utilitarian function for purposes of the Copyright Act, and therefore should not undergo a useful articles analysis.

I. Historical Background of Jewelry in the Copyright Act

Copyright law has included a variety of designs that are seemingly useful while simultaneously purporting to exclude any utilitarian products. Beginning in 1870, through a series of acts, Congress drew from piecemeal administrative and judicial formulations, in an attempt to reconcile the differences between protectable applied arts and unprotectable utilitarian designs. In 1949, Congress explicitly included “artistic jewelry” as within the scope of copyright protection. This section examines the history of jewelry in the copyright scheme, explains judicial attempts at defining intrinsic utilitarian function, and highlights district court cases that have expressly assessed rings in light of the useful articles doctrine.

A. Initial Encounters in Early Legislation and Case Law

Article 1, Section 8 of the Constitution authorizes federal legislation “[t]o promote the Progress of Science and useful Arts,”[11] but gives little guidance in defining the scope of the copyright system. The original Copyright Act of 1790 extended protection only to maps, charts, and books.[12] It was not until 1870 when Congress explicitly extended copyright protection to three-dimensional objects: “painting, drawing, chromo, statute, statutary, and of models or designs intended to be perfected as works of the fine arts.”[13] This statute purposefully used the term “fine art” in order to “maintain a respectable distance between copyright and useful articles.”[14] The Copyright Act of 1909 eliminated this distinction, and seemingly allowed copyright coverage to apply to the designs of useful articles.[15] Specifically, the 1909 Act broadened the category of “fine arts” to include “[w]orks of art; models or designs for works of art.”[16] One year later, however, the Copyright Office quickly corrected itself, amending the statute to expressly exclude “industrial arts utilitarian in purpose and character … even if artistically made or ornamented.”[17] With the advent of new useful articles in the early 20th century, such as television sets and new cosmetic products, it became harder to define the contours of industrial design. In 1917, the Copyright Act was reworded to cover “artistic drawings notwithstanding they may afterwards be utilized for articles of manufacture.”[18] The Copyright Office promulgated a regulation in 1949 to expand its coverage and explicitly included “artistic jewelry.”[19] Specifically, the regulation defined works of art as a class which “includes works of artistic craftsmanship, in so far as their form but not their mechanical or utilitarian aspects are concerned, such as artistic jewelry, enamels, glassware, and tapestries, as well as all works belonging to the fine arts, such as paintings, drawings and sculpture.”[20] Thus, Congress established copyrightable categories with protection only covering the artistic elements of the designs. In 1954, the Supreme Court decided Mazer v. Stein,[21] a seminal case for the useful articles doctrine, holding that copyright protection could be extended to sculptural figures that were used as bases for lamps.[22] Mazer attempted to distinguish artistic design, which qualifies for copyright protection, from ornamental features of useful articles, which belong to the design patent regime: “[t]he dichotomy of protection for the aesthetic is not beauty and utility but art for the copyright and the invention of original and ornamental design for design patents.”[23] Based on the 1949 Regulation promulgated by the Copyright Office, Mazer supported the idea that artistic elements in useful articles would be entitled to Copyright protection as long as they remain physically separable from the utilitarian components. Robert Denicola suggests that Rosenthal v. Stein[24] articulated a better approach to determine the Copyright Act’s scope at the time.[25] Specifically, the Ninth Circuit in Rosenthal stated, “[a] thing is a work of art if it appears to be within the historical and ordinary conception of the term art.”[26] Based on this definition, numerous cases upheld copyrights in jewelry, drawing on the historical conception of jewelry as a work of art.[27] Overall, before the Copyright Act of 1976, many courts considered artistic jewelry as a copyrightable category not subject to a separability test.

B. Further Defining Useful Articles

1. The Copyright Act of 1976
In § 102 of the Copyright Act of 1976, Congress approved these earlier precedents—specifically attempting to codify Mazer[28]—and enumerated eight categories of copyrightable subject matter. Section 102(a)(5) specifically included “pictorial, graphic and sculptural works” (PGS), thereby abandoning 1909’s Act “works of art” categorization. While the new Act did not include specific examples, such as “artistic jewelry” from the 1949 regulation, many courts have held that jewelry is still a copyrightable sculptural work.[29] Furthermore, one court explained, “the explicit congressional adoption of the Copyright Office’s definition indicates that jewelry remains within the scope of copyright protection.”[30] The 1976 Act also formulated the scope of useful articles: if a PGS meets the useful articles definition in § 101, “an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information,”[31] that article qualifies as useful. The design is not copyrightable unless its particular aesthetic elements satisfy the separability test. Section 101 defines the separability test as whether “such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.”[32] According to the legislative history, copyright protection for features of useful articles depended on whether the elements of the design are physically or conceptually separable from the utilitarian elements, such as the carving on the back of a chair or a floral relief design on silver flatware.[33] If the object is not separable, it does receive copyright protection. The following section identifies judicial attempts at defining intrinsic utilitarian function and determining a separability test. The last section examines how case law has treated rings in light of the useful articles doctrine.
2. Judicial Attempts at Defining “Intrinsic Utilitarian Function” and Separability
Many critics claim that the 1976 Act and its legislative history do not provide sufficient instructions to determine what the term “intrinsic utilitarian function” means.[34] While the House Report accompanying the 1976 Act identifies examples of “utilitarian articles such as textile fabrics, wallpaper, containers, and the like,” it fails to define what constitutes an “intrinsic utilitarian function.”[35] Courts have struggled to articulate an exact definition for intrinsic utilitarian function. Gay Toys, Inc. v. Buddy L Corp. attempted to distinguish the term from other useful purposes, which may not rise to an intrinsic utilitarian function.[36] Other courts, such as Brandir Int’l v. Cascade Pac. Lumber Co. and Poe v. Missing Persons,[37] identified factors to determine usefulness. Moreover, courts have conveyed different approaches for establishing separability in a useful articles analysis. The Second Circuit in Kieselstein-Cord v. Accessories by Pearl, Inc. employed a consumer-based approach, focusing how the consumer uses the object to determine conceptual separability.[38] Five years later, the Second Circuit in Carol Barnhart v. Economy Cover Corp. established an object-based approach, assessing whether the function of the object drives the form to determine separability.[39] And in Brandir, the Second Circuit laid out a process-based approach, examining whether the form and function merge during the creation process to determine separability.[40] Below is a detailed analysis of how each case defines intrinsic utilitarian function in light of a separability analysis, and a brief overview of academic definitions. In trying to determine whether belt buckles are copyrightable, Judge Oakes in Kieselstein-Cord did not delve into what, if any, intrinsic utilitarian function subsisted in the designs. Rather, he noted, “[t]he primary ornamental aspect of the [belt] buckles is conceptually separable from their subsidiary utilitarian function.”[41] Throughout the opinion though, Judge Oakes failed to elaborate on what “subsidiary utilitarian function” means.[42] Ultimately, he upheld copyright protection for the etched metal belt buckles because some people wore them as jewelry, which the court determined was copyrightable subject matter.[43] In Carol Barnhart, the Second Circuit looked at the function of the object to determine if four life-size polystyrene mannequins of human torsos were protectable sculptural works under the Copyright Act.[44] In fact, Judge Newman’s dissent expressly noted the “intrinsic” functional purpose of the mannequins: to “serv[e] as a means of displaying clothing and accessories to customers of retail stores.”[45] After evaluating the legislative history and prior case law, the court held that the mannequins were not copyrightable because their function drove their form; mannequin surfaces are inextricably intertwined with the utilitarian purpose of displaying clothes.[46] Therefore, the court ruled that the mannequins were unprotectable as useful articles.[47] Two years later, in Brandir, the Second Circuit looked at a number of different factors to determine whether the plaintiff’s bike rack was useful: the differences in design between the wire sculptural work and the ultimate bike rack, the utilitarian reasons in implementing the design changes, manufacturing concerns, advertising costs, and promotional or marketing objectives.[48] To determine separability, the court mainly looked at the design process.[49] It held that even though the bike rack is worthy of admiration for its aesthetic qualities alone, utilitarian concerns during the creation process significantly influenced the design.[50] Specifically, the plaintiff expanded the undulating “sine-curve” of an artistic sculpture in order to accommodate it for bikes; accordingly, the court could not establish separability for purposes of the Copyright Act.[51] In Gay Toys, the Sixth Circuit attempted to carve out a definitional difference between utilitarian function and intrinsic utilitarian function to determine whether toys, specifically model airplanes, are copyrightable.[52] Judge Brown stated that designs might have uses that go beyond portraying the appearance of the object or conveying information, but those uses do not necessarily constitute the intrinsic utilitarian function of the object.[53] He acknowledged that toys are designed for children to play with.[54] Yet in terms of the Copyright Act, between unprotectable useful articles and protectable paintings, “[t]he function of toys is much more similar to that of works of art than it is to the ‘intrinsic utilitarian function’ of industrial products.”[55] The court held that toys are copyrightable subject matter as a PGS, and are not subject to a useful articles analysis.[56] A year later, in Poe, the Ninth Circuit reinforced Gay Toys definitional difference between usefulness and intrinsic utilitarian function.[57] Specifically, Judge Alarcon acknowledged that the swimsuit in question might have uses that go beyond portraying its own appearance, and remanded the case to the district court to determine whether such uses constitute an intrinsic utilitarian function.[58] The Ninth Circuit identified four factors that are relevant to the usefulness inquiry:
(1) expert evidence may be offered concerning the usefulness of the article and whether any apparent functional aspects can be separated from the artistic aspects…(2) evidence of Poe’s intent in designing the article may be relevant in determining whether it has a utilitarian function…(3) testimony concerning the custom and usage within the art world and the clothing trade concerning such objects also may be relevant;…and (4) the district court may also consider the admissibility of evidence as to Aquatint No. 5’s marketability as a work of art.[59]
Similar to Brandir, these factors highlight the object’s functionality in light of its aesthetic elements. After analyzing relevant case law to determine the meaning of intrinsic utilitarian function, Professor Hick defines the term as objects that are designed with a specific function in mind (a factor mentioned in Brandir and Poe), such as a hammer that is designed to drive nails into a surface.[60] The extrinsic function, however, is derived from how consumers interact with the product—if one uses a hammer as a paperweight, that would constitute an extrinsic function of the hammer.[61] Furthermore, Thomas Byron explains how one might affix a coiled extension cord to a wall or use a Van Gogh painting to swat flies.[62] Yet, displaying the extension cord as art, does not eradicate the primary purpose of the object; nor does using a famous artwork for a mundane task implicate that the art piece is less intrinsically artistic.[63] Therefore, he concludes, while many objects “may serve both aesthetic and utilitarian ends, different objects intrinsically serve these ends in varying degrees.”[64] In sum, courts and academics have treated utility and aesthetics as operating on a spectrum. At one end, there are objects that are purely functional, such as certain types of hardware. At the other end, there are inherently aesthetic works, such as a painting. In between, there are more questionable works, namely belt buckles and toys, which incorporate both aesthetic and utilitarian features in the design. In determining whether the design is subject to a separability test, the Copyright Act stipulates that it must possess an intrinsic utilitarian function, which courts have failed to adequately define. While Kisselstein Cord explicitly identifies jewelry as a protectable aesthetic category of the Copyright Act (not subject to useful articles analysis), the latter four cases seem to question the categorization of jewelry as a purely sculptural work.

C. Cases Assessing Ring Design Against the Useful Articles Doctrine

Based on courts’ interpretations of the Copyright Act, it seems that rings are copyrightable subject matter as long as they meet requirements of authorship and originality, with the latter being the more difficult to prove.[65] While one district court held that rings are useful articles, two district courts explicitly rejected this argument and instead categorized rings as protectable ornamental sculptural pieces. In DBC of New York, Inc. v. Merit Diamond Corp.,[66] the Southern District of New York took the position that rings are useful articles and proceeded with a useful articles analysis.[67] The court explained how the rings’ configuration—marquis stones flanked in a trillion ring setting—did not exist independently of its utilitarian counterparts.[68] The court did not include a reason why it categorized the diamond rings as useful articles; rather, the court, citing Carol Barnhart, reasoned, “the design of a useful article … shall be considered a pictorial, graphic or sculptural work only if, and only to the extent that such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.[69] After briefly conducting a separability analysis, the court held that the plaintiff’s rings did not warrant copyright protection.[70] Two district courts explicitly disagreed with the court’s treatment of rings as a useful article in DBC of New York. Nearly a decade after, the Southern District in Weindling Int’l, Corp. v. Kobi Katz, Inc. stated that rings are “chiefly works of art, or more precisely ornamental sculptures, even if mass-produced.”[71] After examining the combination of the rings’ unoriginal elements—flaring supports, channel setting, triangle cut-outs, and sharp-edged apexes—it concluded that, in combination, the bridge ring merited copyright protection (specifically known as compilation protection).[72] Additionally, the Northern District Court of Illinois in Donald Bruce & Co. v. B. H. Multi Com Corp. stated that it did not agree with the defendant’s reliance on the incorrect ruling in DBC of New York.[73] In determining whether plaintiff’s Skalet Ring Line was copyrightable, the court flatly rejected the defendant’s argument that rings can serve as useful articles saying, “[t]he [r]ing is purely ornamental, its sole purpose is to portray its appearance.”[74] Accordingly, the court concluded that since the ring is not a useful article under § 101 of the Copyright Act, it therefore did not need to “determine whether the utilitarian aspects of the mount are separable from the sculptural elements.”[75] After looking at the Skalet Ring Line’s originality and assessing the validity of the copyright, the court dismissed defendant’s motion for summary judgment. While the Copyright Act of 1976 did not expressly include the term “artistic jewelry,” for the most part, rings are considered sculptural works. The absence of any reasoning behind the useful articles analysis for the diamond rings in DBC of New York further demonstrates that rings should be treated on the aesthetic end of the copyright spectrum.

II. Considering Rings as Sculptural Works Not Subject to a Useful Articles Analysis

This section examines how rings are considered works of art from jewelry designers’ perspective and subsequently not subject to a useful articles analysis. After delineating a brief history on jewelry, this section will bolster what it means to be an “ornamental sculpture” for purposes of the Copyright Act, looking at three relevant factors in ring designs: artistic creativity, how jewelry designers view themselves and their creations, and how rings differ from clothing, a useful article.

A. A Brief History on Jewelry: The Rise of Artistic Expression

Jewelry is an old tradition steeped in the artistic world,[76] predating the history of sculpture and even painting.[77] Yet, rings can be considered useful in many senses. Rings have taken the forms of seals for legal documents, contracts, and international treaties, have been used for talismanic reasons and amuletic properties,[78] and are still used today as portable bank accounts and to display socially meaningful codes.[79] Paul Greenhalgh delineates how the “design” category emerged from the “decorative arts.” Specifically, in the 19th century, “[t]he decorative arts steadily congealed into a salon de refuse of genres that cohered only by virtue of their exclusion [from the category of fine arts]. Outside the fine arts, there was no fixed nomenclature or hierarchy. Variously—and interchangeably—known as the decorative, useful, industrial, applied or ornamental arts, they struggled to maintain a place in intellectual life ….”[80] At the end of the nineteenth century, artists engaged in craft ethic differentiated themselves from those who produced large-scale manufacturing creations, which became known as design.[81] One of the purposes of rings is to adorn,[82] and therefore rings can remain as a decorative art, distinguished from a fine art. Yet, because many jewelry designers mass-produce their creations, rings can also be considered designs. Interestingly, though, in the height of the Arts and Crafts revolution from 1970-1980 in the United States, “jewelry had begun to take a new meaning in the art world.”[83] This period has been compared to the “new painting” age that developed throughout Europe between 1880-1910 and subsequently in the United States from 1940-1960.[84] The late 1960s generated revolutionary jewelry students, especially potent in the art world, who challenged longstanding conventions and questioned the very notion of jewelry.[85] With the advent of new materials and metals, jewelry designers were tooled with new ways to create “individualistic art.”[86] Specifically, jewelry designers employed non-precious metals and other soft metals as well as recycled materials, new plastics, and other refractory metals that could be colored in novel ways.[87] For instance, Crangi explained how she was one of the first designers to employ rugged brass in her creations when the company launched in 2001.[88] These innovative changes in jewelry design resulted in an invigorating and challenging debate whether jewelry was still “Art with a capital A”[89],[90] Overall, jewelry has evolved to a forum for “conceptual exploration and personal expression.”[91]

B. Considering Rings as Works of Art

In terms of the 1976 Copyright Act, many courts have articulated that rings are not useful articles because they are ornamental sculptures with a sole purpose to convey appearance.[92] Moreover, artistic expression lies in how designers choose materials, how they work the materials to transform an object, and ultimately breathe new life into it.[93] Jewelry design is said to be the “highest level of craftsmanship and creativity—not blindly making [jewelry pieces] to preordained templates, but thinking through making, applying individual philosophies, personal intellect, active intuition, sensitivity, continuously inquiring and experimenting, and immense passion ….”[94] By including perspectives from jewelry designers, this section will further explain how a ring is an ornamental sculpture for purposes of the Copyright Act. Specifically, it will examine three relevant factors in ring design: artistic creativity and how the Copyright Act has aimed to protect that process; jewelry designers’ perspectives and infusion of artistic concepts; and how rings differ from clothing, a useful article.
1. Artistic Creativity: Discovery in the Process
The history of the Copyright Act illustrates Congress’s purpose in protecting artistic works. The Act has a rich history of explicitly including “fine art”[95] and “work[s] of art.”[96] While the Act currently stipulates that PGSs qualify as a category of copyrightable subject matter, it further explains the phrase with references to art in the definitions section, saying PGS include: “works of fine, graphic, and applied art, photographs, prints and art reproductions …. Such works shall include works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned ….”[97] There are also policy concerns behind the Copyright Act that seek to incentivize “authors” to create artistic works. Many academics have supported the utilitarian justification for copyright protection: the Constitution authorized copyright legislation “to promote the Progress of Science and useful Arts,”[98] thereby suggesting an incentive rationale to encourage innovative activity through a system that promotes exclusive rights for the tangible results of creative efforts.[99] Accordingly, Professor Fromer argues that while the drafters of copyright legislation may not have had “artistic creativity” in mind, “[copyright]’s standard of originality for protectability, principally aligns with our understanding of how creativity proceeds and is valued in the artistic realm.”[100] Specifically, the low bar for originality incentivizes authors to create works that are not “highly original,” rather drawing on previous artistic works, which are typically in line with consumers’ tastes.[101] Many ring designers employ artistic creativity, which further supports the notion that rings are sculptural works not subject to a useful articles analysis. While scientific creativity seeks to find practical solutions for problems, artistic creativity focuses on the problem, posing questions to an audience to provoke debate and discussion.[102] The spirit of open-ended inquiry coincides with the Copyright Act’s requirement of originality, as the author identifies a problem and fixes it in a work of art.[103] While jewelry is not considered a fine art in the strict sense, many jewelry designers see themselves as using artistic creativity in the process.[104] Norman Cherry interviewed seventeen jewelry designers, many who describe their creative process in artistic terms. For example, Simon Cottrell creates his designs in a structured form of improvisation, similar to how a jazz musician develops an initial theme and, through a complex combination of prior knowledge, experience, and intuition, eventually reaches a final destination.[105] Additionally, Ruudt Peters conveys that alchemy is a process in jewelry design that transmutes “prosaic materials into a visual poetry.”[106] Moreover, jewelry designers are actively engaged in a method referred to as “discovery of the problem,” which involves both “deciding which artistic medium, materials, and represented objects will be used” and “harnessing experiences and themes for artistic expression.”[107] Most jewelry artists do not rigidly follow a blueprint in the design process; they employ a number of different methodologies for their creations.[108] Gruenberg states that “[m]uch of what I do is instinctive … I don’t consciously follow a step-by-step process to construct a ring.”[109] When creating the ring template for 3D printing, she says that she designs, experiments with components, reacts, and then redesigns—like drawing through materials.[110] During the process new problems may arise and the artist is tempted to reframe that problem.[111] For instance, Peter Skubik designed a mercury ring by creating a mold, pouring liquid mercury into the mold and cooling the mercury in carbon dioxide snow to solidify it.[112] Once he removed the solidified ring from the mold, the ring melted a little and lost its form.[113] It created a dripping effect, calling attention to the malleable metal in relation to the sturdy mold.[114] Lastly, Courtney Crangi commented on her brother Phillip Crangi’s designs saying that during college he noticed how “steel and gold love to live together;” he has since created a fine jewelry line that includes rings that combine the two materials.[115]
Mitrani Figure 1
Figure 1: Phillip Crangi’s Fine Jewelry Line[116]
  Accordingly, copyright law rewards many artists and writers for articulating a particular emotion or subjective concept into a tangible work, rather than “only one problem solution receives the prize of copyright,” as in the patent regime.[117] Overall, the Copyright Act’s low originality threshold is designed to award the use of artistic creativity. Many jewelry designers describe their creation process in poetic terms and focus on the discovery of a problem, which mirrors the creative process of other artists, musicians, and writers. Thus, jewelry should be considered on the aesthetic side of the copyright spectrum not subject to a useful articles analysis as it incentivizes jewelry designers to engage in artistic creativity.
2. Designers’ Perspectives
As the Brandir and Poe courts noted, one factor in determining usefulness is the designer’s intent in creating the object. Specifically, Professor Hick explains that the intrinsic utilitarian function is mainly derived from how the designer purposed the object.[118] Accordingly, it is important to see how jewelry designers view their pieces to determine whether rings qualify as useful articles. To many designers and academics, jewelry is considered “one of the most vibrant, exciting and challenging contemporary art forms.”[119] Many jewelry designers see themselves as artists.[120] In line with the 1976 Copyright Act’s objectives, jewelry designers have compared their work to that of a sculptor.[121] Similar to sculptural objects, rings “consist of a physical object that has its own discrete existence.”[122] In fact, Skubik views his rings in isolation from the body and sees them as art even when it is not worn.[123] While there is a commercial component to jewelry design, Tanya Gruenberg, the creator of Studio Grun jewelry designs, states that she manages the production as a businesswoman, yet creates as an artist.[124] For sales, she has to think formulaically, keeping track of her cash flow and inventory.[125] As an artist, she sees her rings as a platform for investigating the interplay of a diverse range of mixed media—3D printing, plastic molds, and gemstones—to highlight a “unique degradation aesthetic while maintaining elegant accents.”[126] Other jewelry designers infuse different art world concepts into their designs, such as abstraction, minimalism, and color schemes. Along with her husband, Emmy van Leersum creates pieces in an abstract manner that “rejected the craft tradition of the silversmith and strove instead to eradicate any trace of personal expression from their creations.”[127] Additionally, Otto Künzli highlights social critique, frequently disparaging the pretentions of jewelry in his pieces.[128]
Mitrani Figure 2
Figure 2: Emmy van Leersum – Broken Lines Ring[129]
 
Mitrani Figure 3
Figure 3: Otto Künzli – Seal Ring[130]
  Lastly, Irene Neuwirth, a native from South California, explains that her inspiration is the ocean: “[i]ts purity, power and colors are all key elements at the origin of her designs.”[131]
Mitrani Figure 4
Figure 4: Irene Neuwirth – Gemstone Hexagonal Ring[132]
  Overall, many jewelry designers see themselves as artists and incorporate many artistic themes into their pieces, thereby highlighting how jewelry is more of an art form for purposes of the Copyright Act.
3. Adornment Purposes of Rings: Distinct from Clothing
While other useful articles certainly incorporate artistic styles in their designs,[133] rings are inherently different from other industrial designs. As mentioned, the copyright system treats fashion pieces as useful articles,[134] and most jewelry designs as sculptural ornamental pieces.[135] However, many designers would submit that the nature of rings is innately tied to the human finger as rings are made—and imagined—to be worn.[136] In this regard, rings are similar to garments in that the body is the site of the creative work. However, rings are remarkably different in the sense that they do not protect people from cold temperatures, which could be considered an intrinsic utilitarian function of clothing.[137] Additionally, clothing is used for modesty purposes in many cultures,[138] whereas rings could be said to have a complete opposite function—they mainly serve an adornment purpose: “it beautifies, within the value system of the local culture, and sometimes renders the wearer socially or sexually desirable.”[139] Of course, fashion designs can accomplish the same objective, but the copyright system does not treat that as a primary objective of clothing.[140] Unlike clothing, which in most parts of the world you are legally required to wear, donning rings is a choice.[141] Many jewelry designers would submit that the primary purpose of rings is to decorate fingers and convey a specific style.[142] Similar to clothing, though, jewelry designers must cater to trends, and in order “to be complete,” their designs should be purchased and worn by others.[143] Many traditional artists are generally free from those “constraints of commerce,”[144] whereas many jewelry designers have to develop a business sense. Furthermore, English and Dormer argue that art “confers a status upon an object that is currently higher than and different from the status of craft or design” seen in jewelry.[145] However, the Copyright Act still considers many sculptural works as works of art, even if they are mass-produced or marketed for commercial purposes.[146] Judge Rakoff in Weindling International, points out “[a]rtistic design, after all, is at the very heart of the jewelry business, even in its crasser commercial forms.”[147] Furthermore, some designers see their rings as a more “intimate” art form between the creator and audience.[148] The weight of a ring combined with its “texture and size” on one’s finger and size serves as a tactile “constant reminder of its presence.”[149] Moreover, a ring, after being worn for years, “acquires a patina of age and even conforms itself to the shape of the finger.”[150] While clothing and jewelry share similar elements, a ring’s primary purpose is to adorn, which makes it more of an ornamental sculptural work for purposes of the Copyright Act. Additionally, the copyright system and its low threshold for originality is designed to afford tangible rights to the artistic creative efforts of designers. Since, many jewelry designers engage in artistic creativity (focusing on the problem) and infuse their designs with artistic concepts (expressing a particular problem), their designs should be protected as aesthetic works.

III. Considering Rings as Useful Articles Subject to a Separability Test

As mentioned, jewelry is considered a sculptural work under the Copyright Act. The Copyright Act of 1976 further distinguishes between sculptural works and sculptural works that are useful articles with an “intrinsic utilitarian function,” and affords protection to the latter as long as their artistic features “can be identified separately from, and are capable of existing independently of, the useful design.”[151] Given that rings do possess some functional uses, this section assesses whether those uses constitute an “intrinsic utilitarian function” in terms of the Copyright Act. Both Gay Toys and Poe have explained that not all uses rise to the level of intrinsic utilitarian function.[152] Continuing, this section examines functional aspects underlying ring designs, such as those considered in Brandir, and assess whether that is an important factor in determining intrinsic utilitarian function. Lastly, the section analyzes critical reception of rings, and how the copyright system considers museum display.

A. The Purposes of Rings: Examining Their Intrinsic Functionality

A ring can possess a number of functional purposes; it can be used as an amuletic power, a portable bank account, a signifier of status, and an allurement to one’s hands. After examining each of these uses, this section will conclude that some of these uses are more extrinsic functions, not rising to the level of intrinsic utilitarian function for purposes of the Copyright Act. Some people buy rings for the talismanic power of the gemstones. In line with popular culture, the American Gem Society designates a different gemstone that contains a unique mystic meaning to each calendar month. For instance, Garnet, the birthstone of January, is “known to promote romantic love, passion, sensuality, and intimacy.”[153] Accordingly, Jewelry by December 1967, a designer on Etsy, lists a Mozambique Garnet Ring and explains “[g]arnet is said to be the stone of romantic love and passion, enhancing sensuality, sexuality, and intimacy.”[154]
Mitrani Figure 5
Figure 5: Jewelry by December 1967 – Mozambique Garnet Ring[155]  Additionally, the Mystical Maven, another seller on Etsy, presents a Golden Garnet Ring, which she describes as a ring that will allure the opposite sex if the other person touches the ring while the owner is wearing it.[156]Moreover, certain cultures attach mystic powers to certain gemstones, such as the Chinese who consider the rich luster of jade to be very lucky.[157] In illustrating the talismanic forces of the jade stone, Melissa Chang conveys, “[w]hen [my dad] first started wearing [the jade ring], he told me that the deeper the green was, the more good luck it brought. He always wore it to Vegas and as far as I know, he did pretty well on the craps table.”[158] While these amuletic powers of rings can qualify as a function, it would be quite difficult to prove actual, intrinsic utilitarian function from anecdotes. The question also remains: to what extent should mystic powers qualify as utilitarian? Indeed, the Gay Toys court stated “[t]he intention of Congress was to exclude from copyright protection industrial products such as automobiles, food processors, and television sets.”[159] Mystical purposes do not seem to be in line with Copyright Act’s intention of excluding useful industrial objects.Rings are still used today as portable bank accounts because the nature of small-scale jewelry allows wealth to be hidden easily and safely.[160] While this may not be the traditional use, this use constitutes an extrinsic function of a ring, in the same manner as when a person uses a hammer as a paperweight.[161] Jewelry designers generally do not design a ring so that it can be quickly converted into cash. As mentioned in Part II.B.ii, jewelry designers see themselves as artists and incorporate many artistic elements into their designs. Moreover, various paintings could be said to serve as portable bank accounts in the form of investment art, yet, that feature does not prevent courts from categorizing paintings as purely aesthetic and entitled to copyright protection. Rings can also be used to display socially meaningful codes.[162] For the most part, though, rings have shifted from conveying class identity, to being more stylistic choices that can distinguish the wearer or merge the wearer with a particular style.[163] According to the Copyright Act’s definition of a useful article, though, social identity markers can be analyzed as merely conveying information, and therefore jewelry should not be considered useful in that sense. Moreover, a number of objects convey social status and identity, such as a handbag or a car, but that does not necessarily speak to their intrinsic utilitarian function; a handbag is known to hold items and a car is known as a method of transportation. Lastly, donning rings certainly draws attention to one’s hands, “appeal[ing] to potential mates.”[164] As Gay Toys alluded to, many purely aesthetic objects can have some uses.[165] Art pieces do not only serve informational or decorative purposes; they can also arouse passions, offer escape, and serve as a forum of dialogue and contemplation.[166] Drawing attention to one’s hands can serve as an aesthetic experience, heightening the artistic essence of the ring. Furthermore, that visual experience bolsters the idea that rings fall more on the aesthetic side of the copyright spectrum. After all, even though an art piece can have functional characteristics derived from emotive power or historical meaning, such characteristics do not make it a useful article under copyright law.[167] In light of the legislative history behind the Copyright Act and case law, these aforementioned uses do not rise to the level of intrinsic utilitarian function. The legal doctrine of functionality should not be broadened to include extrinsic functions or further aesthetic functions, as that can render even an art piece a useful article.

B. Functional Considerations Behind Ring Design

While jewelry designers take into account a number of considerations in designing a ring, they inevitably take function into account. Alice Sprintzen, a jewelry designer who wrote an instructive book on basic jewelry techniques, emphasized the importance in accounting for functional concerns in the design process.[168] Specifically, a designer should consider the weight of the item, flexibility of the material, any protrusions on a piece that might catch clothing, and external circumstances.[169] In the section about wax casting a ring, Sprintzen instructs designers to slightly enlarge wide band rings to allow for finger swelling in hotter seasons.[170] Danielle Frankel Nemiroff, one of the co-designers for Phillips House fine jewelry said, “functionality and comfort are not the leading concerns in the design process, but definitely are important” in the design process.[171] Nemiroff’s design philosophy is to create “pretty pieces” that one can wear comfortably; she mentioned that she will not create a ring with a sharp spike that can potentially hurt a young child or damage an evening gown.[172]
Mitrani Figure 6
Figure 6: Phillips House – No. 3 Hexagon Ring[173]  While Gruenberg sees herself as artist, she says she also takes ergonomics and negative space into account when designing a ring, especially for her King Crown Ring that goes above and below the knuckle.[174]
Mitrani Figure 7
Figure 7: Studio Grun – King Crown Ring[175]  Specifically, she tries to create lighter, more comfortable rings.[176] Additionally, Jennie Kwon, another jewelry designer, stated that she does not want women to be burdened in removing her pieces when washing their hands; rather she creates delicate designs that will not be cumbersome to the wearer.[177]
Mitrani Figure 8
Figure 8: Jennie Kwon – Black Diamond Mini Deco Point Rings[178]  Yet, does accounting for functional concerns during the design process bestow an intrinsic utilitarian function on the object? While the Brandir court analyzed the creation process as a main factor in determining separability,[179] it does not necessarily indicate that the object has an intrinsic utilitarian function. Due to the nature of the ribbon bike rack, which was derived from a wire sculpture, the Brandir court collapsed the useful article inquiry with the separability analysis in trying to establish copyrightable subject matter.[180] Thus, whether the design process was heavily influenced by utilitarian concerns should be more of a question for separability, especially when considering the primary purpose of the object. In essence, ring designers are creating for a finger, their canvas, and are naturally limited by that medium’s constraints. Rings are worn on the human finger, which imposes functional considerations of weight, height, and scale, but there still remains considerable room for creativity and expression.[181]

C. Critical Reception: Does It Matter?

Art collectors, art museums and critics in the art market do not typically think of jewelry as a fine art, such as a painting or a sculpture.[182] Specifically, English and Dormer maintain that the Museum of Modern Art or the Venice Biennale do not feature jewelry prominently in their collections, and it rarely appears in art periodicals such as Art Forum.[183] The Museum of Art and Design, however, recently presented a “stunning array of extravagant fashion jewelry” from June 2013–April 2014.[184] Additionally, from November 2013–March 2014, the Metropolitan Museum of Art had an exhibit titled Jewels by JAR (Joel A. Rosenthal) with bedazzled, vibrant jewelry pieces using the pavé technique.[185] It was the first retrospective at the Museum tailored to a contemporary artist of gems.[186] Yet, these examples perhaps highlight jewelry as more of a craft, rather than an art. Indeed, the Museum of Art and Design, formerly known as the Museum of Contemporary Crafts, has exhibits that feature other useful articles such as “Ralph Pucci: The Art of the Mannequin.”[187] Olaf Skoogfors, one of the main jewelry designers involved in the evolution of the abstractionist, formal approach, said, “I consider myself to be an artists as well as a craftsperson. The same efforts that go into painting or sculpture go into my jewelry. If this medium is a lesser art, than I am a lesser artist.”[188] Even though jewelry can be considered a craft, it still falls more on the aesthetic side of the copyright system, which is perhaps bolstered by a recent expanded notion of art in the museum world. Furthermore, whether jewelry is featured in a museum is not a primary concern for purposes of the Copyright Act. While the Kieselstein court noted that two of the belt buckles at issue in the case were placed on display in the Metropolitan Museum of Art in ruling that the buckles were protected by copyright,[189] museum placement merely serves as an additional argument for copyright protection rather than a prerequisite. Judge Rakoff in Weindling International commented that it was highly doubtful that the bridge ring in question would appear in the Met, but noted how “the law of copyright protects the modest creations of the humble versifier who churns out greeting cards as much as it does the thrilling inventions of a poet laureate.”[190] After all, the Supreme Court in Feist Publications v. Rural Telephone Co. defined the originality requirement as merely “some minimal degree of creativity…some creative spark, ‘no matter how crude, humble, or obvious’ it might be.”[191] Because mass-produced jewelry will inevitably be designed in non-original ways, it still may warrant copyright protection “if the creative spark behind a commercial jewelry design is more like a flickering match than a bolt a lightning.”[192] Therefore, originality remains a primary prerequisite for aesthetic works. In sum, rings should not be considered useful articles subject to a separability test. While rings certainly have uses, these uses do not qualify as an intrinsic utilitarian function in light of case law and the legislative history behind the Copyright Act. While jewelry designers generally account for functional considerations in the design process, these considerations serve more as a factor for determining separability. While the designer is inevitably going to run into practical issues by designing a ring for a finger, a great deal of artistic expression can exist within those confines. Lastly, museum placement is an added benefit in asserting copyrightability, and rings can still be an aesthetic work despite some historical notions that it served as a craft.

Conclusion

Ring design is an art in many senses: many jewelry designers use artistic creativity in making these ornamental sculptural pieces that leave an intimate relationship between the maker and bearer. At the same time, though, rings have been considered useful, especially when they were used as seals or to signify a class. Given the new wave of “individualistic art” during the height of the Arts and Craft Revolution, some of the old purposes of rings were diminished. As inventiveness has become a prominent objective in jewelry design, functionality is often neglected.[193] With the advent of new metals available during the 1960–80s, jewelry designers began to use a number of different materials and tools, employing new methods to create “individualistic art.”[194] Considering themselves as artists, jewelry designers seldom create “straight ‘social jewelry’” with familiar meanings such as class rings or wedding/engagement rings; “[s]tripped of familiar codes and functions, jewelry has become a vehicle for purely artistic issues”[195] in line with the Copyright Act’s objectives. After examining the purposes behind the Copyright Act and conversing at length with designers, I argue that jewelry rings lie more on the aesthetic side of the copyright spectrum. Since they do not possess an intrinsic utilitarian function, they should not be subject to a useful articles analysis. The process of designing rings certainly takes functional features into account,[196] and could seem confusing against the backdrop of the useful articles doctrine. Yet, courts have pointed out that the primary purpose of rings is to adorn. Designers employ artistic creativity in creating rings, which the Copyright Act is designed to protect. Also, designers see themselves and their creations as art, which further indicates that rings do not contain an intrinsic utilitarian function. Categorizing the functions of a ring as intrinsically utilitarian would unduly expand the functionality doctrine and could render works of art as useful articles. While jewelry designers consider how a ring fits comfortably around a finger, they incorporate artistic elements to convey a personal story through the details. In articulating a particular expression in a tangible form, jewelry designers should be entitled to robust copyright protection for their rings—specifically, as sculptural works not subject to a useful articles analysis.
* J.D. Candidate, New York University School of Law, 2016; B.A. International Relations, magna cum laude, University of Pennsylvania, 2012. The author would like to thank Professor Jeanne Fromer and the 2015-16 Editorial Board of the NYU Journal of Intellectual Property & Entertainment Law for their invaluable assistance throughout the editing process. The author would also like to acknowledge Courtney Crangi of Giles & Brother, Danielle Frankel Nemiroff of Phillips House, Tanya Gruenberg of Studio Grun, and Jeffry Aronsson of the Aronsson Group for speaking about their experiences with the jewelry design process and copyright protection.
[1] Norman Cherry, Jewelry Design and Development: From Concept to Object 6 (Susan James et al. eds., 2013).
[2] Bruce Metcalf, On the Nature of Jewelry, Jewelry Australia Now (1989), http://www.brucemetcalf.com/pages/essays/nature_jewelry.html.
[3] See generally Kal Raustiala & Christopher Jon Sprigman, The Piracy Paradox: Innovation and Intellectual Property in Fashion Design, 92 Va. L. Rev. 1696-99, 1725–32 (2006).
[4] Interview with Courtney Crangi, CEO, Philip Crangi Jewelry and Giles & Brother, in New York City, N.Y. (Mar. 30, 2015) (explaining how she was quite upset when she saw a knockoff of a Giles & Brother signature necklace sold at a certain multinational retail store).
[5] Kathryn Dachille, Bling It On: Copyright & The Rise of Jewelry Infringement Lawsuits, Creative Arts Advocate (2014), http://creativeartsadvocate.com/bling-it-on-copyright-the-rise-of-jewelry-infringement-lawsuits.
[6] 17 U.S.C. § 101 (2006).
[7] See infra Part I.B.2.
[8] Fashion designs do not meet the conceptual separability test because it is hard to distinguish their expressive and functional components. Hemphill & Suk, The Law, Culture, and Economics of Fashion, 61 Stan. L. Rev. 1147, 1185 (2009).
[9] Cherry, supra note 1 at 6. See also Metcalf, supra note 2.
[10] See infra Part I.C.
[11] U.S. Const. art. I, § 8, cl. 8.
[12] See Act of May 31, 1790, ch. 15, 1 Stat. 124.
[13] Act of July 8, 1870, ch. 230, § 86, 16 Stat. 198, 212 (repealed 1916).
[14] Robert C. Denicola, Applied Art and Industrial Design: A Suggested Approach to Copyright in Useful Articles, 67 Minn. L. Rev. 707, 711 (1983).
[15] See Act of March 4, 1909, 60th Cong., 2d Sess., 35 Stat. 1075. See also, Shira Perlmutter, Conceptual Separability and Copyright in the Designs of Useful Articles, 37 J. Copyright Soc’y U.S.A. 339, 365 (1990).
[16] Act of March 4, 1909, 60th Cong., 2d Sess., 35 Stat. 1075.
[17] Copyright Off., Rules and Regulations for the Registration of Claims to Copyright, Bulletin No. 15, at 8 (1910).
[18] Mazer v. Stein, 347 U.S. 201, 212 n.24 (1954) (quoting 37 C.F.R. § 201.4(7) (1917)).
[19] Id. at 212-213 (quoting 37 C.F.R. § 202.10(a) (1949)).
[20] Id. (emphasis added).
[21] Id. at 201.
[22] Id. at 214.
[23] Id. at 218.
[24] 205 F.2d 633 (9th Cir. 1953).
[25] Denicola, supra note 14, at 17.
[26] 205 F.2d at 635.
[27] See generally Boucher v. Du Boyes, Inc., 253 F.2d 948 (2d Cir.), cert. denied, 357 U.S. 936 (1958); Dan Kasoff, Inc. v. Palmer Jewelry Mfg. Co., 171 F. Supp. 603, 606 (S.D.N.Y. 1959); Trifari, Krussman & Fishel, Inc. v. B. Steinberg-Kaslo Co., 144 F. Supp. 577 (S.D.N.Y. 1956); Trifari, Krussman & Fishel, Inc. v. Charel Co., 134 F. Supp. 551, 553 (S.D.N.Y. 1955).
[28] See H.R. Rep. No. 94-1476, at 54 [hereinafter House Report] (“In accordance with [Mazer] works of ‘applied art’ encompass all original pictorial, graphic, and sculptural works that are intended to be or have been embodied in useful articles, regardless of factors such as mass production, commercial exploitation, and the potential availability of design patent protection.”).
[29] “It is undisputed that jewelry is included within the sculptural works classification of Section 102(a)(5).” Donald Bruce & Co. v. B. H. Multi Com Corp., 964 F. Supp. 265, 266 (N.D. Ill. 1997).
[30] Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989, 993 n.5 (2d Cir. 1980).
[31] 17 U.S.C. § 101 (2006).
[32] Id. (emphasis added).
[33] House Report, supra note 28, at 55 (1976).
[34] See, e.g., Stephen Langs, The Definitional Scope of an Intrinsic Utilitarian Function Under the 1976 Copyright Act: One Man’s Use Is Another Man’s Art, 20 W. New Eng. L. Rev. 143, 171-72 (1998).
[35] House Report, supra note 28 at 55 (1976).
[36] 703 F.2d 970, 973 (6th Cir. 1983) (noting that while a toy airplane may have other uses, its intrinsic purpose is to portray a real airplane).
[37] 834 F.2d 1142 (2d Cir. 1987) (examining the differences in design between the wire sculptural work and the ultimate bike rack, the utilitarian reasons in implementing the design changes, manufacturing concerns, advertising costs, and promotional or marketing objectives to determine whether the bike rack was a useful article); 745 F.2d 1238 (9th Cir. 1984) (looking at expert evidence, the designer’s intent, testimony regarding industry practice in the art world and clothing trade, and marketing data to assess whether the bathing suit was a useful article).
[38] 632 F.2d 989, 993–94 (2d Cir. 1980).
[39] 773 F.2d 411, 419 (2d Cir. 1985).
[40] 834 F.2d at 1148.
[41] 632 F.2d at 994.
[42] Stephen Langs, The Definitional Scope of an Intrinsic Utilitarian Function Under the 1976 Copyright Act: One Man’s Use Is Another Man’s Art, 20 W. New Eng. L. Rev. 143, 155-56 (1998)
[43] Kieselstein-Cord, 632 F.2d at 993–94.
[44] 773 F.2d at 412.
[45] Id. at 420. Ultimately, Judge Newman found the design features of the mannequins could constitute “conceptual separability.” Id. at 426.
[46] See id. at 419. See also Shira Perlmutter, Conceptual Separability and Copyright in the Designs of Useful Articles, 37 J. Copyright Soc’y U.S.A. 339, 365 (1990).
[47] 773 F.2d at 419.
[48] 834 F.2d 1142, 1146–48 (2d Cir. 1987).
[49] Id.
[50] Id.
[51] Id.
[52] 703 F.2d 970 (6th Cir. 1983).
[53] Id. at 973.
[54] Id.
[55] Id.
[56] Id. at 974.
[57] 745 F.2d 1238 (9th Cir. 1984).
[58] Id. at 1243.
[59] Id.
[60] Darren Hudson Hick, Conceptual Problems of Conceptual Separability and the Non-Usefulness of the Useful Articles Distinction, 57 J. Copyright Soc’y U.S.A. 37, 53 (2010).
[61] Id.
[62] Thomas M. Byron, As Long as There’s Another Way: Pivot Point v. Charlene Products as an Accidental Template for a Creativity-Driven Useful Articles Analysis, 49 IDEA: The Intell. Prop. L. Rev. 147, 181 (2008).
[63] Id.
[64] Id.
[65] Compare Weindling International, Corp. v. Kobi Katz, Inc., No. 00 Civ 2022, 2000 WL 1458788, *2 (S.D.N.Y. Sep. 29, 2000) (determining that combination of unoriginal elements in design of diamond “bridge” rings were original), and Diamond Direct, LLC v. Star Diamond Group, 116 F. Supp. 2d 525, 529 (S.D.N.Y. 2000) (considering the originality of diamond ring designs), with Vogue Ring Creations, Inc. v. Hardman, 410 F. Supp. 609, 611 (D.R.I. 1976) (holding that the ring design was “utterly devoid of any ‘original creativity’” and therefore not protectable).
[66] 768 F. Supp. 414 (S.D.N.Y. 1991).
[67] See id. at 416-417.
[68] Id. at 416.
[69] Id.
[70] See id. at 417.
[71] Weindling Int’l, Corp. v. Kobi Katz, Inc., No. 00 Civ. 2022, 2000 WL 1458788, at *4 (S.D.N.Y. Sep. 29, 2000).
[72] Id.
[73] 964 F. Supp. 265, 267 (N.D. Ill. 1997).
[74] Id.
[75] Id.
[76] Cherry, supra note 1, at 6.
[77] Metcalf, supra note 2.
[78] Cherry, supra note 1, at 6.
[79] Metcalf, supra note 2.
[80] Paul Greenhalgh, The History of Craft, in The Design History Reader 329 (Grace Lees, Maffei & Rebecca Houze, eds., 2010).
[81] Id. at 333.
[82] Helen W. Drutt English & Peter Dormer, Jewelry of Our Time: Art, Ornament and Obsession 12 (1995).
[83] Cherry, supra note 1, at 9.
[84] English & Dormer, supra note 82, at 12.
[85] Cherry, supra note 1, at 9.
[86] English & Dormer, supra note 82, at 12.
[87] Cherry, supra note 1, at 9.
[88] Interview with Courtney Crangi, supra note 4.
[89] Andy Warhol and others challenged the notion of what is art, namely “Art with a capital A.” Many artists, philosophers, and writers began to take the view that art is how the viewer experienced the work, rather than the conventional rules prescribed to the creative piece: “if the artist offered a work of art and a viewer saw and understood it as art, then it must be art.” Cherry, supra note 1, at 10.
[90] Id.
[91] Metcalf, supra note 2.
[92] 17 U.S.C. § 101. See also Weindling Int’l v. Kobi Katz Inc., No. 00 Civ. 2022, 2000 WL 1458788 at *4 (S.D.N.Y. Sep. 29, 2000); Donald Bruce & Co. v. B. H. Multi Com Corp., 964 F. Supp. 265, 267 (N.D. Ill. 1997).
[93] Cherry, supra note 1, at 121.
[94] Id.
[95] Act of July 8, 1870, ch. 230, § 86, 16 Stat. 198, 212 (repealed 1916).
[96] Act of March 4, 1909, 60th Cong., 2d Sess., 35 Stat. 1075 (repealed 1976).
[97] 17 U.S.C. § 101 (emphasis added).
[98] U.S. Const. art. I, § 8, cl. 8.
[99] Denicola, supra note 14, at 722. See Mazer v. Stein, 347 U.S. 201, 219 (1954) (“The economic philosophy behind the clause empowering Congress to grant patents and copyrights is the conviction that encouragement of individual effort by personal gain is the best way to advance public welfare through the talents of authors and inventors in ‘Science and useful Arts.”). See also Jeanne C. Fromer, A Psychology of Intellectual Property, 104 Nw. U. L. Rev. 1441, 1457-58 (2010).
[100] Fromer, supra note 99, at 1492.
[101] Id. at 1492, 1497.
[102] Id. at 1444. See also discussion infra Part II.B.2 (explaining how jewelry designers infuse of artistic concepts into their designs).
[103] Fromer, supra note 99, at 1444.
[104] See generally Cherry, supra note 1.
[105] Id. at 42.
[106] Id. at 92.
[107] Fromer, supra note 99, at 1467.
[108] Cherry, supra note 1, at 121.
[109] Interview with Tanya Gruenberg, Creative Director/Jewelry Designer, Studio Grun, in New York City, N.Y. (Mar. 3, 2015).
[110] Id.
[111] Cherry, supra note 1, at 16.
[112] Id. at 106.
[113] Id.
[114] Id.
[115] Interview with Courtney Crangi, supra note 4; see also Phillip Crangi Designs, http://www.philipcrangi.com/collections/womens-rings (last visited May 19, 2015).
[116] Phillip Crangi Designs, supra note 115.
[117] Fromer, supra note 99, at 1493.
[118] Hick, supra note 60, at 53.
[119] Cherry, supra note 1, at 10.
[120] Metcalf, supra note 2. See Cherry, supra note 1, at 13-17.
[121] See e.g., Designer Profile: Philip Crangi, Style Caster (2009) http://stylecaster.com/ designer-profile-philip-crangi/ (“I see jewelry as small sculptural piece, so really for me, this is a sculptural pursuit.”).
[122] Metcalf, supra note 2.
[123] Cherry, supra note 1, at 105.
[124] Interview with Tanya Gruenberg, supra note 109.
[125] Id.
[126] Id.
[127] Current Obsession, The Gijs + Emmy Show, http://current-obsession.com/THE-GIJS-EMMY-SHOW (last visited March 19, 2016).
[128] Domus, Otto Künzli Jewellery, http://www.domusweb.it/en/news/2014/08/18/otto_ kunzli_jewellery.html (last visited March 19, 2016).
[130] Pinterest, https://www.pinterest.com/pin/468655904947185241/ (last visited May 19, 2015).
[131] Irene Neuwirth Jewelry, http://ireneneuwirth.com/ (last visited May 19, 2015).
[133] See e.g., Minimalissimo Magazine, http://minimalissimo.com/2009/08/humidifier/ (last visited May 19, 2015) (a minimalist humidifier); Architecture, Art & Design, http://www.architectureartdesigns.com/27-cool-furniture-ideas-inspired-by-pop-art/ (last visited May 19, 2015) (pop art chairs).
[134] See United States Copyright Office, Rules and Regulations for the Registration of Claims to Copyright 12(g) (1917) (listing “garments” among works that should not be registered).
[135] See Weindling Int’l v. Kobi Katz Inc., No. 00 Civ. 2022, 2000 WL 1458788, at *4 (S.D.N.Y. Sep. 29, 2000); Donald Bruce & Co. v. B. H. Multi Com Corp., 964 F. Supp. 265, 267 (N.D. Ill. 1997).
[136] Metcalf, supra note 2.
[137] Id.
[138] Art, Design & Visual Thinking: An Interactive Textbook, http://char.txa.cornell.edu/art/dress/dress.htm (last visited May 19, 2015).
[139] Metcalf, supra note 2.
[140] See Raustiala & Sprigman, supra note 3, at 1745–55.
[141] Id.
[142] English & Dormer, supra note 82, at 20 (“Ornament and decoration are still important objectives in jewelry design.”).
[143] Id. at 13.
[144] Id.
[145] Id. at 13-14.
[146] See House Report, supra note 28, at 54 (“In accordance with [Mazer] works of “applied art’ encompass all original pictorial, graphic, and sculptural works that are intended to be or have been embodied in useful articles, regardless of factors such as mass production, commercial exploitation, and the potential availability of design patent protection.”); see also Mazer v. Stein, 347 U.S. 201, 217-18 (1954) (We find nothing in the copyright statute to support the argument that the intended use or use in industry of an article eligible for copyright bars or invalidates its registration.”).
[147] Weindling Int’l v. Kobi Katz Inc., No. 00 Civ. 2022, 2000 WL 1458788 at *4 (S.D.N.Y. Sep. 29, 2000).
[148] Metcalf, supra note 2.
[149] Id.
[150] Id.
[151] 17 U.S.C. § 101 (defining a “useful article” as “an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information”).
[152] See supra Part I.B.2.
[153] American Gem Society, The Healing Power of Gemstones, http://www.americangem society.org/healing-gemstones (last visited May 19, 2015).
[155] Id.
[157] Cultural China, A Brief Introduction of Chinese Jade-Culture, http://arts.cultural-china.com/en/32Arts4663.html (last visited May 19, 2015).
[158] Jade Gallery Hawaii, The Power of Jade, http://www.jadegalleryhawaii.com/power-of-jade.htm (last visited Feb. 3, 2016).
[159] Gay Toys, Inc. v. Buddy L Corp., 703 F.2d 970, 973 (6th Cir. 1983). These categories are subject to patent protection, which requires “novelty,” a more demanding standard. See generally Joseph Scott Miller, Hoisting Originality, 31 Cardozo L. Rev. 451, 465-67 (2009).
[160] Metcalf, supra note 2.
[161] See supra Part I.B.2.
[162] See Metcalf, supra note 2. See also Kristen Booker, What Happens When the World Doesn’t Understand Your Hair, Marie Claire (Mar. 4, 2015, 4:23 PM), http://www.marieclaire.com/beauty/news/a13591/what-happens-when-the-world-doesnt-understand-your-hair/ (commenting on the status of a David Yurman ring and how NY subway goers find it unlikely for an African-American woman with curly hair in a full twist out to own a real one).
[163] Possibly with the exception of engagement rings, which can still serve as class identifiers. See The History of Jewelry: Why do we Wear Jewelry?, Say Why Do I (Sept. 3, 2011), http://www.saywhydoi.com/the-history-of-jewelry-why-do-we-wear-jewelry/.
[164] See id.
[165] Gay Toys, Inc. v. Buddy L Corp, 703 F.2d 970, 973 (6th Cir. 1983).
[166] Hick, supra note 60, at 53. “Alternatively, several theorists have argued that the function of art is to bring about the ‘aesthetic experience,’ to produce ‘aesthetic contemplation,’ or to yield ‘aesthetic satisfaction.” Id.
[167] Melissa M. Mathis, Function, Nonfunction, and Monumental Works of Architecture: An Interpretive Lens in Copyright Law, 22 Cardozo L. Rev. 595, 621 (2001).
[168] See Alice Sprintzen, Jewelry, Basic Techniques and Design, 6 (1980).
[169] Id.
[170] Id. at 74.
[171] Interview with Danielle Frankel Nemiroff, Co-Designer, Phillips House, in N.Y.C., N.Y. (Apr. 2. 2015).
[172] Id.
[173] No. 3 Hexagon Large Ring, The Shop by Phillips House, http://shop.phillipshouse.com/ collections/rings/products/yg-am-no-3-large-hex-ring (last visited May 19, 2015).
[174] Interview with Tanya Gruenberg, supra note 109. Studio Grun cuffs, however, are designed heavier to signify luxury. Id.
[175] King Crown Ring, Studio Grun, http://www.studiogrin.com/shop/companion-ring-turquoise (last visited Feb. 18, 2016).
[176] Interview with Tanya Gruenberg, supra note 109.
[177] See Maia Adams, Fine Jeweller Jennie Kwon, Adorn Jewellery Blog (May 9, 2014), http://www.adorn-london.com/profile/jennie-kwon/.
[178] Black Diamond Mint Deco Point Ring, Jennie Kwon Designs, http://jenniekwondesigns.com/products/black-diamond-mini-deco-point-ring (last visited May 19, 2015).
[179] See Brandir Int’l v. Cascade Pac. Lumber Co., 834 F.2d 1142, 1148 (2d Cir. 1987).
[180] See id. at 1143, 1148.
[181] Metcalf, supra note 2.
[182] See English & Dormer, supra note 82, at 14.
[183] Id.
[184] Museum of Art & Design, Fashion Jewelry: The Collection of Barbara Berger, http://madmuseum.org/exhibition/fashion-jewelry (last visited May 19, 2015).
[185] The Metropolitan Museum of Art, Jewels by JAR, http://www.metmuseum.org/about-the-museum/press-room/exhibitions/2013/jewels-by-jar (last visited May 19, 2015).
[186] Id.
[187] Museum of Art & Design, Ralph Pucci, The Art of the Mannequin http://madmuseum.org/exhibition/ralph-pucci (last visited May 19, 2015); cf. Carol Barnhart v. Economy Cover Corp., 773 F.2d 411 (2d Cir. 1985) (holding a mannequin as a useful article).
[188] English & Dormer, supra note 82, at 20.
[189] Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989, 991 (2d Cir. 1980).
[190] Weindling Int’l v. Kobi Katz Inc., No. 00 Civ. 2022, 2000 WL 1458788 at *4 (S.D.N.Y. Sep. 29, 2000) (probably referring to Roth Greeting Cards v. United Card Co., 429 F.2d 1106 (9th Cir. 1970), which granted Copyright protection to greeting card that paired a simple, trite drawing on the outside with the phrase “I love you” on the inside.)
[191] 499 U.S. 340, 345 (1991). Although the Court acknowledged that “the requisite level of creativity is extremely low” and that “even a small amount will suffice,” it concluded that white-page telephone directories fail to meet the Copyright Act’s originality requirement. See id.
[192] Weindling Int’l, Corp., 2000 WL 1458788, at *4.
[193] See Metcalf, supra note 2.
[194] English & Dormer, supra note 82, at 12.
[195] See Metcalf, supra note 2.
[196] Cf. Carol Barnhart v. Economy Cover Corp., 773 F.2d 411 (2d Cir. 1985) (deciding a mannequin was a useful article because the function was driving the form). See also Brandir Int’l v. Cascade Pac. Lumber Co., 834 F.2d 1142 (2d Cir. 1987) (holding a bike rack uncopyrightable because form and function merged during the design process).

Somewhere Beyond the ©: Copyright and Web Design

Somewhere Beyond the ©: Copyright and Web Design
By Florina Yezril* Download a PDF version of this article here.  

Introduction

“I think the ‘© 2015’ at the bottom of websites means that people aren’t allowed to reprint the content of the site (i.e. text and images) without permission. Honestly, I don’t know the full extent of its legal power.”[1]
Most websites, no matter the genre, source, or format, share a common element: if a user scrolls down far enough, a message will appear: “© 2015.” Despite its prevalence, few professional web designers know what the symbol means, even as they insert it into a web page. Web designers know that the “©” stands for “copyright,” which covers the content of a website and might cover the source code; however, they are not sure whether it protects the value web designers add to a website’s overall design.[2] Web design is an interesting lens through which to view innovation because the industry is so dynamic. It has a high rate of production, a low barrier to market entry, and is closely affected and constrained by changing technology.[3] This note focuses on professional website designers because they are repeat players in the field of web design and understand the industry’s norms. Part I describes what web design is and how web designers operate. Part II discusses the incentives of web designers to be creative. Part III describes the background of copyright law and its potential applicability to web design. This section demonstrates the ambiguity of copyright law as applied to web design. Part IV examines copyright protection for website design in several distinct contexts, including ownership disputes between web designers and their clients, copying by competitors, and design copying by unrelated websites. This section determines that copyright protection would not significantly alter creative incentives of web designers. This note concludes that the copyright symbol in the footer of websites can serve as a notice that socially pressures and deters potential copiers, protecting website design and incentivizing innovation, even in the absence of legal certainty.

I. Background of Web Design

“We generally review several websites for creative inspiration. We also follow some industry standard guides for layout and best practices for user interface design as well as information architecture. That’s part of our initial brainstorm and creative research. Beyond that, we start to build on our own.”[4]
Professional web designers view their work as a service, rather than a product.[5] As websites increase in complexity, the design process can take days or weeks,[6] and costs run in the thousands of dollars.[7] The web design process usually starts with a web designer asking the client to explain their goals and to identify websites that they like. The designer will then guide the client to determine what specific aspects of those websites the client hopes to see in their own website. The websites used for inspiration may be those of competitors, or they may be from an entirely unrelated field.[8] Designers will pull together elements of multiple sources, without taking too much inspiration from any one website.[9]
“I start with functionality, user flow diagrams, then wireframing, etc.. finally aesthetic design.”[10]
Designers may use various tools in the process because the source code for the visual representation is not very important.[11] The source code behind a website design is only relevant to its visual result, but a designer can achieve the same effects in multiple ways. For example, one designer might write her own software while another might use “WYSIWYG” (what you see is what you get) editing software. The latter, a more visual approach, allows the designer to drag-and-drop items in a graphical user interface (GUI), such as Wix, to alter the web design. Even if working purely in source code, the same effect can be determined by moving settings between HTML and CSS sections. If only the source code mattered, a person would be able to obfuscate a given piece of code to make it look entirely different from copyrighted software.[12] This note discusses the work of professional website designers as opposed to non-professional actors who use free or paid do-it-yourself tools. Such do-it-yourself website builders, such as WordPress, Wix, Twitter Bootstrap, or SquareSpace,[13] offer users some control,[14] but their users have a significantly reduced expectation of innovation and uniqueness. Therefore, the appearance of similar websites does not need protection because it does not advance copyright’s constitutionally stated purpose of “promot[ing] the progress of science and the useful arts.”[15] The clearest method of understanding a designer’s end product is by observation. For example, compare the before and after screenshots of Harvard Law Review’s website, which was redesigned by Upstatement,[16] below.
X
Harvard Law Review website before redesign, archived from January 5, 2014
 
X
Harvard Law Review website after redesign by Upstatement, from March 3, 2015
  The website looks significantly different after its redesign. There is a new color scheme that transitioned from muted, dull colors to bright, jewel tones. The font has changed to be more readable on computer screens, as have heading sizes and placement. Additionally, the visual layout shifted from three columns with a menu in the far right column to two columns of articles with a menu in a horizontal bar, giving readers a smoother browsing experience than the cluttered initial design presented. If the client had a logo, that would probably have been incorporated as well. The overall impression of the website has become more modern, and the colored geometric patterns are more vibrant and inviting than a graphic of business people walking away from the user. Despite the visual differences, many of the important elements of the website remain unchanged: links still lead a user to other pages, such as clicking on an article title to visit a web page with the full article. The important information is still conveyed, such as the source of the website (Harvard Law Review), various recently-published articles and their authors, and a search box for users to find specific articles. For a given website, the web design includes everything that is not content, and does not include content such as the text of blog posts or a client’s images. Web design includes the colors,[17] layout, and navigation[18] decisions that affect a user’s web browsing experience.

II. Web Designers’ Creative Incentives

In the web design community, there are competing incentives to standardize and to differentiate website design. This section explores this tension between standardization and the freedom to create original designs and finds that, ultimately, the two are not polar opposites because they are driven by mismatched purposes.
“I think trends and common practices of popular sites are important considerations to make sure your users are getting a good experience.”[19]
The movement towards standardization is driven by a desire to improve user experiences across multiple websites. As computer screens grew in size and resolution increased, and as Internet bandwidth increased, websites transitioned from displaying only text to incorporating GUIs with menus and images.[20] Users increasingly demand to access websites from computer browsers, tablets, and cell phones. Because websites are increasingly accessed from mobile devices, the reduced screen space has led to smaller icons and collapsible menus to save real estate. As users approach the Internet from devices that have more variation in screen resolution than ever before, it is necessary for websites to adapt their layout and resolution to suit viewers’ devices. The web design community now incorporates “responsive web design,” a term coined to refer to websites that translate flexibly between various layouts and image sizes, as the screen size permits.[21] There is societal benefit to standardization because it allows users to easily navigate new websites,[22] as opposed to the disruption of being confused or having to learn how to navigate each individual website. Users have come to expect such features, so web designers’ clients demand easily understandable navigation, and, in turn, designers are sensitive to this client need.[23]
“Copying parts of websites I think is fairly prevalent, but I don’t really consider copying websites to be a problem. I almost view the ability to do this as a good thing, because it can allow scrappy, resource constrained startups to move faster, and encourage innovation.”[24]
Standardization is also the logical result of building websites more efficiently. In the web design community, it is acceptable to start with pre-made templates. This is because there is a considerable amount of background work required to make a webpage render on a computer screen (such as an HTML framework) before the designer can add value with creative choices. Because those frameworks are often generic across different kinds of websites, there is little reason to spend time regenerating these basic elements. There are even guides online for “stealing” websites;[25] such guides are more often used as tutorials for learning purposes than as work product for paying clients.[26]
“I think if you’re paying a creative agency to produce an original website, that’s exactly what you should get.”[27]
I don’t directly copy from other designers because “it seems wrong and out of fear that it would be noticed within the community… I would be more afraid of embarrassment but would also be worried a little bit about being sued.”[28]
There are strong motivations, external and internal, that drive web designers to be creative within the technological constraints. Clients exert external pressure on designers to adapt websites to the client’s needs. For example, a blog should be navigable by users who want to read posts and also convenient for the client to add content, such as a post that is automatically labeled with its creation time and author. The design choices that would be useful for a blog are unlike those a designer might make for an online shopping website. Instead of arranging content chronologically, as is common on a default view of a blog, retail websites often need to be organized by different categories of goods that are searchable and sortable by different parameters, such as price or popularity. Retail sites need to allow visitors to order items, pay the shop owner, enter shipping information, resolve disputes, and display relevant information and product reviews. The shop owner may also want certain features, such as an automatic update to a product web page if the product is out of stock. Regardless of whether two websites share a color scheme, whether the designer starts with a basic template, or even whether one designer wants to directly copy the appearance of another website, a web design would need to make modifications to adapt the website to the client. These modifications could include posting the client’s shop items or articles, searching the client’s database of items for sale, and sending customer payments to the client.[29] The internal pressures to create a new product are as strong as the external motivations to adapt to client uses. Designers are motivated by the need to maintain gainful employment. As web design has evolved from a product to a service based on open communication between a client and a designer, networking and reputation have become very important to designers in generating new business.[30] Designers take pride in their work and prioritize creating original work from an internal motivation, as opposed to the external threat of legal ramifications. Some designers are upset when their work is copied because they are powerless to prevent another person from taking credit for their hard work.[31] The copyright symbol © derives its weight from reminding web designers about these internal pressures to deter blatant copying, even in the absence of legal backing.

III. Copyright Background

“There’s not enough conversation happening around IP for creative work”[32]
The backdrop to web designers’ motivations, even if not immediately discernable, is copyright. The legal landscape influences both the creative process of web design and how web designers can protect their work once it has been created. This section outlines the basics of copyright law and applies its principles to web design. However, the law is unclear as to whether web design is protectable by copyright, and courts have muddled the issue by adding the possibility of trade dress protection for website design. Remarkably, even though the application of copyright law to web design is muddled, web designers’ views on copying hew closely to copyright theory. This reverberation suggests that incentives within the web design community should influence the perception of how copyright law is applied in this field.

A. Copyright Overview

The Copyright Act protects “original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device…. Works of authorship include … pictorial, graphic, and sculptural works.”[33] A copyright lasts for the author’s life plus an additional seventy years.[34] The original rights holder may be, among others, the author’s employer under the “work for hire” doctrine.[35] The copyright holder’s exclusive rights in the protected work are limited by what is copyrightable and what constitutes unexcused infringement. To qualify for a copyright, there is a low originality requirement that the work possesses “at least some minimal degree of creativity,”[36] and is an expression instead of a mere idea.[37] These constraints incentivize creative expression by preventing copyright holders from making overbroad claims of ownership of undeveloped or underdeveloped ideas. Copyright infringement is the unauthorized copying of a protected work. Proving infringement involves showing misappropriation by two steps: (1) proof of copying, which can be shown circumstantially with proof of access, and (2) a demonstration that the protected and accused works are substantially similar.[38] Even if a work qualifies for a copyright, there is an exception from a finding of infringement for fair use.[39] Four factors determine whether fair use was made of a work: “(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.”[40] That is to say, if a copyrighted work was used for nonprofit, educational purposes, or if only a small, inessential part of the work was used, then that would be a defense against literal infringement.

B. Copyright Law as Applied to Web Design Is Ambiguous

The Copyright Office has issued some guidance for registering online works in the form of Circular 66, but the document is silent on the question of web design protection.[41] As such, courts have attempted to address the ambiguity. As early as 1997, courts found that the “look and feel” of a website could infringe copyright.[42] However, because copyright infringement is a fact-specific inquiry and few, if any, cases reach even summary judgment stages, there have been no conclusive answers. It is important to recognize that copyright of a website could possibly apply to (1) the visual website, (2) the underlying source code, and (3) the client’s content that is on that website.[43] This note is primarily interested with the first of these points: the design of the website. As discussed above, protection of the underlying source code is too easy to circumvent,[44] and it is fairly undisputed that a client’s content, such as original text or images, would be protected.[45] Although cases addressing the latter issues are not the focus of this paper, precedent on the topics illuminates the applicability of copyright to web design.
1. Hurdles to Proving Copyrightability
In Apple Computer v. Microsoft,[46] the Ninth Circuit evaluated Microsoft’s use of GUI elements of which Apple claimed Microsoft infringed the “look and feel.” The Court held that “works cannot be substantially similar where analytic dissection demonstrates that similarities in expression are either authorized, or arise from the use of common ideas or their logical extensions.”[47] The question of whether web design can be a copyrightable subject matter is still unanswered. In BlueNile v. Ice.com,[48] one online diamond retailer sued a competitor for copyright and trade dress infringement of its website. The case is best known for the proposition that the “look and feel” of a website might fall within the scope of trade dress protection. However, for copyright purposes, it is significant that the court found that more factual development was required to establish whether the “look and feel” of a website was within the subject matter of copyright, because it implies that a web design could also be protected by copyright.[49] Thus, it is important to first determine which parts of a web design might not be protectable, and to remove those elements from a copyright analysis. There are several hurdles to proving copyrightability that remain open questions: how to plead, whether a web design is “original,” whether navigation-related design elements are protectable, and whether web design is separable from its useful articles. A 2010 case, Salt Optics, Inc. v. Jand, Inc.,[50] was brought on copyright and trade dress claims, but the copyright claims were dismissed because they were overbroad. The court stated that the “[p]laintiff needs to delineate more clearly which facts it alleges in support of its trade dress claim and which facts it alleges in support of its copyright claim.”[51] This suggests that potential “look and feel” plaintiffs should be careful to delineate which website elements they seek to protect through copyright versus through trade dress, because the claims are not identical. However, courts tend to avoid applying the Lanham Act in a way that would conflict with the Copyright Act, so these two sets of claims are not mutually exclusive and could both be infringed by a given website.[52] It is unclear whether those statements conflict with Conference Archives, Inc. v. Sound Images, Inc., a case from the same year, in which the Court found that “look and feel” of the web site does not receive protection under the Copyright Act but “individual elements of the … web site may receive copyright protection.”[53] The year after Apple Computer v. Microsoft, the First Circuit decided Lotus v. Borland and explicitly stated that navigation menus were not protectable under copyright because they were methods of operation.[54] Twenty years later, this seems directly applicable to the navigation a designer may create for a website. However, even though a navigation bar may seem more akin to an idea than an expression of that idea, designers have more freedom than computer programmers of earlier computers. This is because a particular interpretation may no longer be the only way to express a user’s options and therefore it may have fallen back into protectable scope. Early plaintiffs claiming website copyright infringement have struggled with the originality requirement. In Crown Awards, Inc. v. Trophy Depot,[55] a district court found that the simple structure of a webpage failed to meet the copyright originality standard. A trophy sales company used a three-frame design, a small picture of the catalogue on the upper-right side, and certain promotional language on its website. The company alleged appropriation of those design elements by a competitor that had made similar modifications to their website within just six hours of plaintiff’s website update. Despite the suspicious circumstances, the court found that the plaintiff could not demonstrate a substantial likelihood of success on the merits in its copyright action because the design elements in the main page of its website were insufficient to create an original compilation of elements as required.[56] It is particularly startling that the plaintiff failed to earn a preliminary injunction given the circumstantial evidence that the competitor was merely copying from the plaintiff, as opposed to reaching a similar layout organically.[57] More recent plaintiffs continue to struggle with the originality requirement. In 2010, the decision in Conference Archives, Inc. v. Sound Images, Inc. indicated that proving the originality of the look and feel of a website could be difficult, as Internet pages often present information in a straightforward or simplistic way. Such websites “may lack highly creative, visual graphics and, instead, contain mostly functional elements used for navigating through the information on the site.”[58] They often just “arrange facts or information” and may lack the “originality required for copyright protection.”[59] However, this decision did not indicate where the dividing line lies between “simplistic” and protectable websites. In Conference Archives, the court also pointed to the potential problem of functionality with respect to websites.[60] In trade dress, an element or feature is considered functional if it is “essential to the use or purpose of the product” or if it affects the cost or quality of the product;[61] therefore, a web design would not be functional if it could be expressed in alternate ways.[62] In the context of trade dress, the court pointed out that website design can in fact serve useful functions, such as providing branding or facilitating use of the website (for example, the process of making online purchases). In this way, trade dress ties back into copyright’s useful article doctrine,[63] which is evaluated under the conceptual severability test.[64] As applied to web designs, this doctrine would require that any design decision not purely dictated by function should be protectable. Given that modern websites have a significant amount of design freedom, having come a long way since a three-column layout could be considered special, this should cover any work that a designer performs. Although the number of alternatives is concededly not infinite and the process of web design is not arbitrary, each website does not have only one possible configuration, even under “industry standards.” The clearest way to conceptualize the higher-level non-functionality of web design is through the understanding that a web designer’s career is built by presenting the same information in a new way. For example, changing a website that updates news stories in a list chronologically to an “infinite scrolling” version, modifying the color scheme, and adding a large image to accompany each article.[65] The underlying content presented has not changed, but the “look and feel” has been altered. Instead, the functionality doctrine would only exclude those industry-standard features, such as the idea of using buttons and hyperlinks in organization and navigation, which would allow anticompetitive effects if a party could exclude others from use. Being able to present the same content in a different way demonstrates that a website’s features are not purely functional.
2. Hurdles to Proving Infringement
If a plaintiff could prove that she had a copyright in a protectable work, proving infringement would collapse into a fact-intensive inquiry for substantial similarity. The first step in analyzing copyright infringement, proving actual copying, is usually difficult. Plaintiffs may show it circumstantially, pointing to a defendant’s access to a plaintiff’s website, and then pointing to the probative similarity between the two websites to imply that only copying could lead to the convergence of appearance. The access is easy to show in a website infringement case because both parties necessarily have Internet access if they have created similar websites that the public can visit.[66] Proving similarity for the first step is similar to the second step of proving substantial similarity for the purposes of establishing misappropriation by the defendant. As Blue Nile, supra, established, analyzing the copyright infringement of nonliteral elements is a very fact-intensive inquiry.[67] In the computer software case Computer Assocs. Int’l, Inc. v. Altai,[68] the Second Circuit adopted a three-step Abstraction–Filtration–Comparison procedure to evaluate substantial similarity between computer programs, “draw[ing] on such familiar copyright doctrines as merger, scenes a faire, and public domain.”[69] This decision extends nicely to websites because both computer programs and website design involve “nonliteral elements,” which refer to a work’s organization beyond its creative scope. Websites and computer programs are both run on computers, and the similarities continue because both require significant amounts of code or other background information in order to run effectively. One difference is that a program is purely source code, but as already demonstrated, web design is not equivalent to source code. As such, web designs may not need application of the abstraction step because the visual representation has achieved that step. In both computer programing and website design, the elements essential to functioning would not be protectable by copyright, and this protection should not extend to stock elements, either. The most important step will be systematically filtering out non-protected elements before comparing the two web designs for substantial similarities. For websites, the three categories set out in Altai hold up remarkably well: elements made for efficiency alludes to the elements that fail under the idea-expression distinction, elements dictated by external factors would include industry standard techniques (perhaps such as using responsive design), and design elements taken from the public domain would include the use of known navigation organization and layouts. Any of these non-protected elements are thrown out, and the remaining elements are compared with the allegedly infringing program’s elements to determine substantial similarity. The application of this process is supported by the court in Conference Archives, which pointed out that under the merger doctrine, if “there are only a few alternatives available for creating the design of a Web site, such that the idea merges with the expression, copyright protection will not be extended to that expression.”[70]

C. Designers’ Views on Copying Align with the Copyright Infringement Standard

“Designers in particular are very sensitive to copying. There’s always a tweet/blog post/blowup from someone in the designer community feeling like another person took their ideas. Sometimes it’s blatant but a lot of times there’s just common patterns that people use (headers stuck to the top of the screen, etc.).”[71]
The fact that the views of professional website designers on offensive design copying closely parallel ideas under copyright law supports applying copyrights to the industry. Several designers have alluded to the ideas underlying the merger doctrine and scènes à faire in relation to their work, pointing out that common layouts or ideas, such as headings located at the top of a screen, could be freely copied.[72]
“Too close would be a direct copy of the site’s layout and design, perhaps with a couple style changes or color changes. That being said, there’s nothing new under the sun. There are standard layouts for website design, so there’s going to be some overlap out there, no matter how original your intention is.”[73]
Because designers regularly take inspiration from collections of other websites, and there are common trends in the industry (such as the adoption of responsive web design), there has evolved an implicit code of ethics, in which copying of elements is permissible, but only in moderation. This closely echoes the distinction between “close copying” and trends that are found in academic papers analyzing copying in the fashion industry.[74] Web design and clothing design share elements that make them uniquely similar: the fast rate of innovation within the industry is coupled with, and harnessed by, the necessity for designs to coalesce. In fashion, that effect might look like a trend emerging through differentiation and flocking, which signals purchasers to buy trending clothing.[75] In website design, this leads to standardization, such as how three stacked horizontal bars represent “menu,” which saves space on small screens,[76] but which would not be obvious to a first-time user unless they had experience in other websites or applications that used the convention. Unlike fashion, web design trends change more slowly and tend to persist until they are disrupted (such as by a shift in technology to variable sized screen). Unlike clothing, websites may fall farther from the ”useful articles” that are unprotected by copyright, thus website designs should have the possibility of copyright protection. Overlapping theories of copyright protection may justify the law’s support for industry norms. The utilitarian function of copyright, to “promote the progress of the sciences and useful arts,”[77] may seem to be achievable even without copyright protection because the internal and external motivations for making creative web designs are present even when a designer does not have the reward of the power to exclude others from copying their design. However, even in the absence of legal ownership (such as when a work is made for hire), designers still feel ownership in their work. They view their creations as part of their identity, something they labored on, and as a personhood interest in the reputation attached to the finished design as they send it into the public. This may be why web designers are so sensitive to copying.[78] By amplifying the moral-rights perspective of intellectual property protection and incorporating the norms of the web design community, the law would better emulate criminal law and deter undesirable conduct, such as blatant copying of website designs.[79]
“I have no idea what trade dress protection is… I would guess that it sounds related to trademark protection, and therefore might apply to certain things you put on a website but not generally to how you design the website.”[80]
As an aside, trade dress protection may not be the panacea that some hope can protect website design. The Lanham Act extends protection to trade dress, and therefore, like trademark, excludes elements that are functional or descriptive and lacking source identification.[81] Trade dress is essentially the “total image and overall appearance” of a business or product.[82] It may include features such as the “size, shape, color or color combinations, texture, graphics, or even particular sales techniques.”[83] This sounds like it applies well to a website design, in which design elements combine to produce a (hopefully) cohesive user experience; however, it fails to alert designers, is unneeded to protect consumers, and is vague enough to be overbroad. Designers are not aware of this doctrine or that it could potentially apply to their work,[84] negating any deterrent effect. Because trade dress seeks to protect consumers, an unambiguously stolen design applied to a website with unrelated or dissimilar content probably would not confuse users, and therefore the work would not be protected by trade dress. Finally, “mere cataloguing of a website’s features is not sufficient to describe protectable trade dress.”[85] What remains is likely to be a navigable modern website with some general style that is probably common among many modern websites. This template of sorts should not be removed from web designers’ arsenals because it would significantly inhibit the possible designs web pages could take, which is contrary to the goals of trade dress. Because of the shortcomings of trade dress protection, it is natural for copyright to be the primary intellectual property regime to protect and reinforce industry norms.

IV. Scenarios of Potential Web Design Copyright Infringement

Previous articles on the topic of copyright protection for website design have focused on finding the best fitting intellectual property regime to protect the “look and feel” of a website, paying special attention to trade dress following the Blue Nile decision.[86] In doing so, there has not been enough attention paid to the realities of the website design process. There are several factual situations which may lead to an accusation of website design infringement: first, and most frequent, are disputes arising from nonpayment of the designer’s fees. Next, competitors or imitators may strategically copy websites. Last, there is the catchall situation in which websites may be copied for non-competitive reasons. These scenarios are treated differently by the industry, and so they should not be considered as a cohesive unit.

A. Designer-Client Disputes

“Most people in my field do not go after other artists but after corporations who use their work without paying them.”[87]
Copyright raises ownership and work-for-hire questions,[88] which largely depend on the express or implied design contract. In most web design contracts, the intellectual property rights are transferred to the client only after the designer has been paid in full.[89] In a typical case, such as Smith v. Mikki More, LLC,[90] a designer might bring several claims against a corporate client who failed to pay a design fee, including claims of copyright infringement, breach of contract, unjust enrichment, and quantum meruit. The court held that the designs for a line of hair care products and corresponding website were not works made for hire because the designer was largely independent of the client and not treated like an employee. Thus, the client was not considered the author of the website and did not own the copyright. Because the client did not hold the copyright, the designer did have standing to sue for infringing uses. The court found that even if there were an implied license for the client to use the designs, that license was revoked when the web designer was not paid in full for his work, no later than when the designer filed a complaint against his client asserting a claim for copyright infringement.[91] Cases like Smith v. Mikki More are the simplest to analyze: as long as the design had at least a modicum of creativity, it would be copyrightable material. Because companies rarely staff web designers as employees, the designer is almost always an independent contractor.[92] Thus, if the client does not pay the designer, then the ownership and authorship of the copyright remains vested in the designer.[93] The designer then would have a relatively easy time proving copyright infringement because the client had access to the designer’s work as part of the relationship before it broke down, and the client usually continues to use the identical web design even after refusing to pay the designer. Thus, while copyright could protect web design, it may not be necessary given this context. Copyright protection in these situations would bolster the ability of a designer in seeking payment owed to him or her from a client, but they are likely to have other legal avenues, such as suing for breach of contract. Designers also have practical methods of ensuring payment, such as retaining control of the website at issue until the client pays in full.

B. Copying by the Client’s Competitors

The vast majority of web design cases are brought on multiple grounds, with IP protection such as copyright, trademark, and trade dress generally used to bolster allegations of fraud,[94] unfair competition, violation of nondisclosure agreements,[95] cybersquatting, and states’ Uniform Deceptive Trade Practices Act.[96] Copyright of web design (as opposed to copyright in images of products, for example) should be minimized in these situations because the right to exclude is being wielded against competitors instead of promoting copyright’s goal of encouraging innovation.
1. Copying by Competitors
In the context of competitor’s websites, copyright protection may be less appropriate than a trade dress regime. Blue Nile supported the idea of trade dress protection for the “look and feel” of websites. In that case, a portion of Blue Nile’s jewelry website allowed consumers to search for diamonds based on the cost, quality, and size of the stones. Blue Nile wanted to use copyright to prevent their competitor from providing customers with the good user experience that Blue Nile was offering on their website. There, it was understandable why the court was amenable to a trade dress claim: Blue Nile’s claim was principally directed at the consumer experience rather than towards copyright’s constitutional objective of incentivizing innovation. Often, as in Crown Awards,[97] competitors may have innocent reasons for the convergence of their website designs, such as the fulfilling the same underlying functional objectives. In Blue Nile, the diamond search pages described are largely functional; if the case had progressed to the merits, the concept of searching for diamonds online may have been found not protectable by copyright for that reason. In competitor cases, the plaintiff will have recourse to multiple causes of actions in addition to copyright infringement, such as claims of trade dress infringement under Lanham Act, violation of various consumer protection acts, unfair competition, and unjust enrichment.[98] The competitor scenario should not affect the evaluation of the copyrightability of web designs because copyright is likely to be neutralized by functionality.
2. Copying in Bad Faith: Counterfeiters and Phishers
There is a special subset of competitor websites that are created in bad faith. There are at least two types: the websites that are selling counterfeit goods, and phishing websites. An example of a plaintiff in the anti-counterfeiting space is Coach, a luxury fashion company specializing in leather and handbags, which has been aggressively pursuing counterfeiters in court since at least 2009. As part of Coach’s anti-counterfeiting program, “Operation Turnlock,” they have been seizing and taking down domain names selling counterfeit goods. Once Coach possesses the domain, it posts an image notifying potential users that the website was shut down for selling counterfeit merchandise.[99] The websites have not been substantially similar to Coach’s official website; rather, counterfeiters intended to lure consumers with low prices.[100] Notably, Coach did not bring trade dress or copyright infringement claims against owners of the websites, even when the counterfeit websites displayed images of the bags. The decision by Coach not to bring copyright claims is indicative that companies battling counterfeit websites would probably not bring copyright claims based on website design. The entire webpage of one former counterfeiter now consists entirely of the following image:[101]
X
Though copyrightability of web design might be neutral for websites selling counterfeit items, it could be very useful in combating phishing scams. Phishing scammers closely emulate the emails and websites of reliable businesses in order to trick users into divulging passwords, which the scammers use to access their victims’ bank accounts or other important personal information.[102] Because the malfeasors intentionally reproduce the look and feel of a website, banks and other hosts whose users fall victim may have good standing to bring trade dress and copyright cases for the use of their web designs. However, these incidents involve intentional violation of identity theft and fraud laws, which carry severe penalties,[103] so there is little reason to believe that the threat of copyright infringement would effectively deter scammers.

C. “Pure” Design Copying

Sometimes, a website design will be copied without any regard for the website’s content, such as the design complained about in the following images.[104]
X
  Without copyright protection for web design, website owners have no legal recourse if a design is copied by a non-competitor with whom they do not have a relationship.[105] This could manifest as a copying of website design elements, or as a second web designer posting images of another designer’s work as their own in a portfolio.[106] This is the scenario that should receive copyright protection because it would protect the work of the original designer, and the deterrent effect created by the threat of copyright infringement lawsuits may incentivize the second web designer to be more creative. Specific instances of copying are likely to be fact-intensive inquiries.[107] However, the indefiniteness of “how close is too close?” is dwarfed by the question of whether or not clarity on the protectability of web design would have a significant effect.
1. Copyright Ownership by Non-Designers Misaligns the Incentive to Enforce
Enforcement of infringement largely depends on ownership.[108] Although a designer may feel upset if a website has been duplicated or closely copied, they may have no right to pursue a copyright claim in court if the client owns the rights to the website. This situation is inversely related to the ownership question raised by designer-client disputes. The dichotomy that splits creativity from ownership exacerbates the disincentive to protect the work. In the absence of an effect on competition, only designers are likely to be upset by close copying of the design, but once ownership is transferred, they will not have the requisite standing to bring an action against the offending website’s owner. Even if the designer was upset or angered by seeing her copied web design on another website, it is unlikely that she would have standing to litigate against the imitator because the ownership would likely be in the hands of her client. The client, who will own the site after it is paid for, is unlikely to fight to protect the design for several reasons. First, the client is less likely to discover copying because they are not in touch with the design community, as evidenced by their need to hire an outside party to develop their website. Second, even if the client finds that another website copied their design, the client will be more invested in the content that they control, and not the finished product of the website design, so the client will have little incentive to engage in expensive litigation over a design that does not have an effect on their users. In each of the different situations discussed, copyright protection for web design is unnecessary. A designer does not need copyright to extract overdue fees from a client; in competitive situations, parties would likely have other legal recourse that renders copyright excessive and inappropriate. In scenarios not covered by those two situations, the divergence in interests between design creators who see their work used without attribution and the design owners who have standing would probably mean that web design copyright claims will not be pursued.

Conclusion

Professional website designers do not need the protection of copyright law as an incentive to innovate – the need to earn a paycheck, the internal rewards of their work, and the desire to build a good reputation are more than sufficient to motivate them. Designers have relatively little interest beyond client payment and the reputational attraction of future clients. If another website takes inspiration from a website designer’s work, the designer generally feels more flattered than devastated; little or no actual harm has been done, and in fact the imitation serves to reaffirm the wisdom of the designer’s choices.[109] Even if the designer were to be upset, it is unlikely that he or she would have standing to litigate against the imitator, as the ownership usually transfers to the client, who has less of an incentive to engage in expensive litigation over a design.
“I think the © means that we’ve publicly stated that we are the owner of the copyright. So, if we ever went to court, we could point to the web page at the time of theft and say ‘we had publicly declared that we owned this stuff, it was clear, the thief knew.’”[110]
There are other legal avenues to protect a website design, such as laws on topics of contract or unfair competition, so perhaps the question should be whether it is worth bothering with intellectual property protection for web design at all. Sharing elements among different websites allows for faster standardization of navigation, which helps users understand how to use any individual website. It also helps businesses communicate with their consumers, and permits the faster iteration and evolution of design, which is especially important as technology changes. Limiting copyright protection for website designs is in the interest of most website owners, designers, and users because it permits and encourages borrowing of elements without necessarily condoning close copying.[111] Perhaps the optimal solution, which balances the freedom to take inspiration and the desire to protect creative website design, lies in the © symbol itself, which derives significance not in legal strength, but rather in the cultural expectations of the web design community. In the absence of viable legal alternatives, the © works in a notice and deterrent role. The insignificance of the legal function of the © at the bottom websites is demonstrated by its failure to channel more parties to court when conflicts occur. This notice is a signal that self-respecting designers taking inspiration from a given site should not copy directly. For direct competitors, it is likely that a company established to sell counterfeit goods will have to hire a web designer to create their online presence, and the notice served by the legitimate website, combined with the difficulty in synchronizing the competitor’s preexisting content to a newly duplicated website, may deter designers from copying or make it more expensive for the counterfeiter to hire such a designer. Ultimately, the notice function served by marking a page as copyrighted shows an investment in the website that could deter potential copiers more effectively than an invisible trade dress protection could, despite the potentially greater legal strength of trade dress compared to copyright protection.
* J.D. Candidate, New York University School of Law, 2016; B.S.E. Electrical Engineering, Princeton University, 2011. The author thanks Professor Jeanne Fromer, NYU JIPEL Senior Notes Editor 2014-2015 Lin Weeks, and the 2015-2016 Editorial Board of the NYU Journal of Intellectual Property & Entertainment Law for their for their help throughout the editing process. Special thanks to web designers Jared Novack, John Kelleher, Michael Raybman, Dan Croak, Harriet Donnelly, Melinda Beck, and Jessica Watson for speaking about their views on the web design process and intellectual property protection.
[1] E-mail from Michael Raybman, Founder, Reactor Media (Mar. 9, 2015) (on file with author).
[2] All web designers interviewed in preparation of this note did so in their personal capacity. For illustrative samples of their design, see their websites: Melinda Beck of melindabeck.com, Dan Croak of thoughtbot.com, Harriet Donnelly of e5marketing.com, John Kelleher of openbay.com, Jared Novack of Upstatement.com, Michael Raybman of Reactor Media, and Jessica Watson of http://jwatsoncreative.com.
[3] E.g., Robert Mening, Website Setup, http://websitesetup.org/ (last visited Oct. 26, 2015) (the website says that anyone can design a website, “I wrote this guide to help anyone – from bloggers to business owners – make their own website without having to learn code.” but it relies on WordPress).
[4] E-mail from Jessica Watson, CEO/Creative Director, JWatsonCreative (Mar. 6, 2015) (on file with author).
[5] E.g., Ilya Posin, How Much Does a Website Cost?, Forbes (Aug. 7, 2013, 10:18 AM), http://www.forbes.com/sites/ilyapozin/2013/08/07/how-much-does-a-website-cost.
[6] E.g., Heidi Cool, On Average, How Much Time Does It Take for a Designer to Build a Professional Website?, Quora.com (Aug. 13, 2013), http://www.quora.com/On-average-how-much-time-does-it-take-for-a-designer-to-build-a-professional-website.
[7] See Richard Parr, How Much Does a Small Business Website Cost in 2014?, Executionists, http://www.executionists.com/blog/cost-to-build-websites-2014/; Posin, supra note 5.
[8] See Hora Loranger, Redesigning Your Website? Don’t Ditch Your Old Design So Soon, Nelson Norman Group (Dec. 07, 2014), http://www.nngroup.com/articles/redesign-competitive-testing/.
[9] E-mail from Jessica Watson, CEO/Creative Director, JWatsonCreative (Mar. 6, 2015) (on file with author).
[10] E-mail from Michael Raybman, Founder, Reactor Media (Mar. 9, 2015) (on file with author).
[12] E-mail from John Kelleher, Web Developer, Openbay (Feb. 22, 2015) (on file with author).
[13] Some builders offer more customization than others, such as WordPress, which is open source. See, e.g., Jeremy Wong, Wix vs WordPress – Our Detailed Comparison, Website Builder Expert (Oct. 2, 2015), http://www.websitebuilderexpert.com/wix-vs-wordpress/.
[14] While not the subject of this note, these services may provide an interesting jumping-off point and case study for a discussion of open sourced software and rights ownership.
[15] U.S. Const. art. I, § 8, cl. 8.
[16] For more discussion about redesigning Harvard Law Review’s website, see Responsive Redesign: Harvard Law Review, Upstatement, http://upstatement.com/portfolio/harvard-law-review/.
[17] Color carries distinctiveness, for example Phil Edwards, How Well Do You Know the Internet’s Most Famous Colors?, Vox (Feb. 10, 2015, 3:20 PM), http://www.vox.com/2015/2/10/8014365/internet-colors-brands-test, and meaning, for example Andy Cowles, And It Was All Yellow: What the Design of Vox and BuzzFeed Tells Us About Trusting Content, TheMediaBriefing (May 27, 2014, 12:30 PM), http://www.themediabriefing.com/article/cowles-vox-buzzfeed-trust-yellow. And courts have recognized that color could be an important tool in determining whether a website was copied. Conference Archives, Inc. v. Sound Images, Inc., No. CIV. 3:2006-76, 2010 WL 1626072, at *5 (W.D. Pa. Mar. 31, 2010) (“While some colors are more common than others, if two products utilize the same exact hex triplet, there is a likelihood that the color was copied”) .
[18] See generally Web Navigation, Wikipedia (Oct. 13, 2015, 7:15 AM), https://en.wikipedia.org/wiki/Web_navigation.
[19] E-mail from John Kelleher, Web Developer, Openbay (Feb. 22, 2015) (on file with author).
[20] See History of the Internet, Techopedia, https://www.techopedia.com/6/27861/internet/history-of-the-internet/8 (describing Mosaic browser).
[21] Ethan Marcotte, Responsive Web Design, A List Apart (May 25, 2010), http://alistapart.com/article/responsive-web-design.
[22] See, e.g., Conference Archives, Inc. v. Sound Images, Inc., No. CIV. 3:2006-76, 2010 WL 1626072, at *21 (“[The “look and feel” of a website] offers a familiar interface, with recognizable elements. Similar colors, sizes, and layouts make navigation and interaction facile.”).
[23] That being said, there is some criticism of how “boring” web design has become. See, e.g., Owen Williams, Web Design Is Now Completely Boring, The Next Web (Sept. 23, 2015, 3:15 PM), http://thenextweb.com/opinion/2015/09/23/zzzzzz/.
[24] E-mail from John Kelleher, Web Developer, Openbay (Feb. 22, 2015) (on file with author).
[25] E.g., Ilan Patao, Tutorial – How to Copy / Duplicate Web Sites, YouTube (May 19, 2008), https://www.youtube.com/watch?v=cue_uZWNfUY (note that the video is labeled “Category: Educational”).
[26] E.g., Mike Locke, Copying vs. Stealing in Web Design, YouTube (May 5, 2011), https://www.youtube.com/watch?v=kKxtD2tWqDk (note in the video, the emphasis on taking the image directly).
[27] E-mail from Jessica Watson, CEO/Creative Director, JWatsonCreative (Mar. 6, 2015) (on file with author).
[28] E-mail from John Kelleher, Web Developer, Openbay (May 17, 2015) (on file with author).
[29] Telephone Interview with Harriet L. Donnelly, Principal, e5 Marketing (Feb. 20, 2015).
[30] Id.
[31] See generally id.; Telephone Interview with Jared Novack, Partner, Upstatement (Feb. 4, 2015); E-mail from Michael Raybman, Founder, Reactor Media (Mar. 9, 2015) (on file with author); E-mail from Jessica Watson, CEO/Creative Director, JWatsonCreative (Mar. 6, 2015) (on file with author).
[32] E-mail from Jessica Watson, CEO/Creative Director, JWatsonCreative (Mar. 6, 2015) (on file with author).
[33] 17 U.S.C. § 102(a).
[34] Assuming that all relevant websites will have been created on or after January 1, 1978, see 17 U.S.C. § 302 . In the fast-paced Internet era, this seems like an extremely long period of exclusivity and protection, but that may not be too offensive if the protection is very narrow.
[35] 17 U.S.C. § 201(b).
[36] Feist Publications Inc. v. Rural Tel. Serv. Co., Inc., 499 U.S. 340, 345 (1991).
[37] 17 U.S.C. § 102(b) (codifying Baker v. Selden, 101 U.S. 99 (1879)); see also Mazer v. Stein, 347 U.S. 201, 217 (1954).
[38] Although the exact mechanics of determining copyright infringement require a nuanced analysis, this general two-step approach has been accepted by a majority of circuits. See, e.g., Arnstein v. Porter, 154 F.2d 464 (2d Cir. 1946); Selle v. Gibb, 741 F.2d 896 (7th Cir. 1984); Swirsky v. Carey, 376 F.3d 941 (9th Cir. 2004).
[39] 17 U.S.C. § 107.
[40] Id.
[41] United States Copyright Office, Circular No. 66, Copyright Registration for Online Works (2012), http://copyright.gov/circs/circ66.pdf.
[42] ConsulNet Computing, Inc. v. Moore, No. CIV.A. 04-3485, 2007 WL 2702446, at *7 (E.D. Pa. Sept. 12, 2007).
[43] This note assumes that professional web designers are not taking copyrighted images or other content without permission.
[44] In a trademark infringement analysis, a court pointed out that “whether defendants (and plaintiff) utilized code available in the public domain or not in creating their website does not affect the fundamental similarities between the two websites, which is the relevant criterion in a likelihood of confusion analysis.” Athleta, Inc. v. Pitbull Clothing Co., No. CV 12-10499-CAS FMOX, 2013 WL 142877, at *7 (C.D. Cal. Jan. 7, 2013). This analysis should easily extend to the proposition that source code is not dispositive in the analysis of web design when analyzing the “look and feel” of two web sites.
[45] See 17 USC § 102.
[46] Apple Computer v. Microsoft Corp., 35 F.3d 1435 (9th Cir. 1994).
[47] Id. at 1439.
[48] Blue Nile, Inc. v. Ice.com, Inc., 478 F. Supp. 2d 1240 (W.D. Wash. 2007).
[49] Id. at 1245.
[50] Salt Optics, Inc. v. Jand, Inc., No. SACV 10-0828 DOC (RNBx), 2010 WL 4961702 (C.D. Cal. Nov. 19, 2010).
[51] “The copyright registrations alleged by Plaintiff are broad, referring to all ‘text(s), photograph(s), selection, arrangement and compilation’ of the Salt Website and all rights related to the Salt Catalogs. Plaintiff makes no attempt to identify which portions of the website or catalog it accuses Defendants of infringing. . . . Plaintiff needs to delineate more clearly which facts it alleges in support of its trade dress claim and which facts it alleges in support of its copyright claim.” Id. at *6.
[52] Id. at *7.
[53] Conference Archives, Inc. v. Sound Images, Inc., Civil No. 3:2006–76, 2010 WL 1626072 (W.D. Pa. Mar. 31, 2010).
[54] Lotus v. Borland, 49 F.3d 807 (1st Cir. 1995).
[55] Crown Awards, Inc. v. Trophy Depot, No. 2:03-CV-02448-DRH, 2003 WL 22208409 (E.D.N.Y. Sept. 3, 2003).
[56] Id.
[57] Note that some authors claim that this case stands for the proposition that some courts have required a “virtually identical” standard for copied websites because the knockoff website avoided a finding of infringement entirely by slightly changing the color scheme and adding some text. See Kevin D. Hughes & David E. Rosen, The Marketplace, More than the Courthouse, May Determine the Ultimate Winner in Web Site Infringement Battles, L.A. Lawyer, June 2010 at 40, 40, available at http://www.lacba.org/Files/LAL/Vol33No4/2716.pdf. This is not accurate because the case failed on originality grounds before the two websites could be compared. The idea that merely changing colors could avoid copyright infringement is inconsistent with the view of website designer Jessica Watson, who opined in her interview that just changing some colors would still constitute “too close” a copying of a website.
[58] Before commenting on the court’s findings, it is interesting to note that the approach to “look and feel” of a website design was well explained and creatively bifurcated: “A web site is conceptually different from traditional print media. It is useful to visualize a web site user interface not as a static presentation, but rather as a series of overlapping layers aimed at accomplishing specific tasks. At the most concrete level is the ‘visual design,’ which is the graphic treatment or interface elements. This layer represents the ‘look’ in the ‘look and feel.’ Below the ‘visual design’ is the ‘interface design,’ which facilitates user interaction with functionality. The information in this layer facilitates the user’s understanding and interaction with the page. This would represent the ‘feel’ in the ‘look and feel.’ The ‘feel’ corresponds to certain dynamic navigation elements, including buttons, boxes, menus, and hyperlinks. These intangible and interactive elements contribute to the feel. The feel can also consist of the ‘information design of a web site, including the … location of common elements such as navigation elements.’ According to this model, the two critical layers to consider when defining the ‘look and feel’ are the ‘visual design’ and the ‘interface design.’ These two elements combined ‘encompass not only static elements such as particular photos, colors, borders or frames, but also interactive elements and the overall mood, style or impression of the site.’ Conference Archives, Inc. v. Sound Images, Inc., Civil No. 3:2006–76, 2010 WL 1626072, at *14 (W.D. Pa. Mar. 31, 2010)(internal citations omitted).
[59] Id. at *13.
[60] Id. at *17.
[61] TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001)
[62] Lisa M. Byerly, Look and Feel Protection of Web Site User Interfaces: Copyright or Trade Dress?, 14 Santa Clara Computer & High Tech. L.J. 221, 260 (1998).
[63] 17 U.S.C. § 101, “the design of a useful article, as defined in this section, shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.”
[64] The conceptual severability test is set out in Brandir: “if design elements reflect a merger of aesthetic and functional considerations, the artistic aspects of a work cannot be said to be conceptually separable from the utilitarian elements. Conversely, where design elements can be identified as reflecting the designer’s artistic judgment exercised independently of functional influences, conceptual separability exists.” Brandir Int’l, Inc. v. Cascade Pac. Lumber Co., 834 F.2d 1142, 1145 (2d Cir. 1987).
[65] This was a hypothetical, but plenty of real examples exist online. See, e.g., Sana Bakshi, Before & After: 6 Beautiful Website Redesigns [SlideShare], HubSpot, (Jan. 29, 2014, 11:00 AM), http://blog.hubspot.com/marketing/best-website-redesigns-list.
[66] Gary Franklin & Kevin Henry, Protecting Your Company’s Website: The Application of Intellectual Property to the Digital Marketplace, 37 Vt. B.J. 26 (2012).
[67] Blue Nile, Inc. v. Ice.com, Inc., 478 F. Supp. 2d 1240, 1245 (W.D. Wash. 2007).
[68] Computer Assocs. Int’l, Inc. v. Altai, 982 F.2d 693 (2d Cir. 1992).
[69] Id. at 706.
[70] Conference Archives, Inc. v. Sound Images, Inc., Civ. No. 3:2006-76, 2010 WL 1626072 (W.D. Pa. Mar. 31, 2010).
[71] E-mail from Dan Croak, Chief Marketing Officer, Thoughtbot (Feb. 23, 2015) (on file with author).
[72] E.g., id.; E-mail from Jessica Watson, CEO/Creative Director, JWatsonCreative (Mar. 6, 2015) (on file with author).
[73] E-mail from Jessica Watson, CEO/Creative Director, JWatsonCreative (Mar. 6, 2015) (on file with author).
[74] See, e.g., C. Scott Hemphill & Jeannie Suk, The Law, Culture, and Economics of Fashion, 61 Stanford L. Rev. 1147 (2009) (discussing whether intellectual property protections should extend to fashion).
[75] Kal Raustiala & Christopher Jon Sprigman, The Piracy Paradox Revisited, 61 Stanford L. Rev. 1201, 1205 (2009) (describing how differentiation and flocking creates trends in fashion).
[76] Antonio, A Brief History of the Hamburger Icon, Placeit (Oct. 29, 2014), http://blog.placeit.net/history-of-the-hamburger-icon/.
[77] U.S. Const. art. I, § 8, cl. 8.
[78] Jeanne Fromer, Expressive Incentives in Intellectual Property, 98 Va. L. Rev. 1745, 1768-69 (2012) (discussing why creators do not like to see their works altered).
[79] Id. at 1783-84.
[80] E-mail from John Kelleher, Web Developer, Openbay (Apr. 3, 2015) (on file with author).
[81] 15 U.S.C. § 1125 (2012).
[82] Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 764 n.1 (1992) (quoting Blue Bell Bio-Medical v. Cin-Bad, Inc., 864 F.2d 1253, 1256 (5th Cir. 1989)).
[83] Id. (quoting John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 980 (11th Cir. 1983)).
[84] E-mail from John Kelleher, Web Developer, Openbay (Apr. 3, 2015) (on file with author).
[85] Lepton Labs, LLC v. Walker, 55 F. Supp. 3d 1230, 1239 (C.D. Cal. 2014).
[86] See, e.g., Elizabeth Brown, Bridging the Gap: Improving Intellectual Property Protection for the Look and Feel of Websites, 3 N.Y.U. J. Intell. Prop. & Ent. L. 310, 314 (2014); Amber R. Cohen, A Square Peg into a Round Hole: Trade Dress Protection of Websites, the Perspective of the Consumer and the Dilemma for the Courts, 3 U. Mass. L. Rev. (2008); Matt Mikels, Surfing for Protection: Why Websites Should Be Categorically Excluded from Trade Dress Protection, 23 CommLaw Conspectus: J. Comm. L. & Tech. 158 (2014).
[87] E-mail from Melinda Beck, Independent Illustrator, Animator, and Graphic Designer (Mar. 2, 2015) (on file with author).
[88] Franklin & Henry, supra note 66.
[89] There are many web design contract templates available online, some of which differentiate between the client owning the rights at the outset, the designer assigning rights only after payment (in full, as protection), or the client as licensee of the designed site. See, e.g., Grace Smith, 10 Free Contract Templates for Web Designers, Mashable (June 30, 2014), http://mashable.com/2014/06/30/free-contract-templates/.
[90] Smith v. Mikki More, LLC, 59 F. Supp. 3d 595 (S.D.N.Y. 2014).
[91] Id. at 610.
[92] The copyright office has issued Circular 9, available at http://copyright.gov/circs/circ09.pdf, interpreting the Supreme Court’s decision in Community for Creative Non-Violence v. Reid, 490 U.S. 730 (1989), which addressed the definition of “work made for hire. ” The definition depends on 3 factors, influenced by agency law: (1) control by the employer over the work, (2) control by employer over the employee, and (3) the status and conduct of employer. United States Copyright Office, Circular No. 9, Works Made for Hire (2012).
[93] Rinaldo Del Gallo, Who Owns the Web Site?: The Ultimate Question When a Hiring Party Has a Falling-Out with the Web Site Designer, 16 J. Marshall J. Computer & Info. L. 857 (1998).
[94] E.g., Lepton Labs, LLC v. Walker, 55 F. Supp. 3d. 1230 (C.D. Cal. 2014).
[95] E.g., Conference Archives, Inc. v. Sound Images, Inc., No. 3:2006-76, 2010 WL 1626072 (W.D. Pa. Mar. 31, 2010).
[96] E.g., Coach v. The Partnerships and Unincorporated Associations Identified on Schedule “A”, No. 13 C 6618, 2013 WL 5477573 (N.D. Ill. Oct. 1, 2013).
[97] Crown Awards, Inc. v. Trophy Depot, No. 2:03–CV–02448–DRH, 2003 WL 22208409 (E.D.N.Y. Sept. 3, 2003).
[98] Blue Nile, Inc. v. Ice.com, Inc., 478 F. Supp. 2d 1240, 1242 (W.D. Wash. 2007).
[99] For more, see Lindsay Goldwert, Coach Awarded $257 million in Counterfeiting Suit; Coach Can Also Seize 573 Domain Names Linked to Knocking Off the Popular Brand, N.Y. Daily News (Nov. 5, 2012, 2:58 PM), http://www.nydailynews.com/life-style/fashion/coach-awarded-257-million-counterfeiting-suit-article-1.1196902; Shishana Evans, Coach Is Winning the War on Internet Counterfeiting (Seizing Names and Taking Assets), Styleblazer (Nov. 3, 2012), http://styleblazer.com/98032/coach-is-winning-the-war-on-internet-counterfeiting-seizing-names-and-taking-assets/.
[100] See Kurt Bayer, Nigerian Scam Letters Intentionally Unbelievable – Study, N.Z. Herald (June 22, 2012), http://www.nzherald.co.nz/business/news/article.cfm?c_id=3&objectid=10814893.
[101] Websites that Coach defeated in Operation Turnlock, such as www.mycheapcoach.com, redirects to http://204.232.149.59/shutdown.htm which display the notification pictured above.
[102] Jennifer Lynch, Identity Theft in Cyberspace: Crime Control Methods and Their Effectiveness in Combating Phishing Attacks, 20 Berkeley Tech. L.J. 259, 259 (2005).
[103] See State Laws Addressing “Phishing”, Nat’l Conference of State Legislatures (Jan. 9, 2015), http://www.ncsl.org/research/telecommunications-and-information-technology/state-phishing-laws.aspx; N.Y. Gen. Bus. Law § 390-b (McKinney 2006).
[104] E.g., Matt Everson, Hey, You Stole My Website Design!, Astuteo (Mar. 18, 2009), https://www.astuteo.com/desktop/articles/stolen-website-design.
[105] As far as intellectual property protection goes, a patent is inapplicable to a given design, which is probably not patented, not useful, and even if it is novel, it is probably obvious. Design patents would likely fail to protect most designs for the same reasons. Trademark would not apply in most cases. Similarly, trade dress may not apply if the websites are unrelated because the website content would differ, so consumers would not be confused. In any event, those intellectual property regimes do not offer notice to a potential infringer at or before the point when infringement is occurring, so they are unlikely to deter copying. In this hypothetical, the websites are unrelated so fraud and unfair competition claims are inapplicable. One academic suggested that website owners might resort to private law remedies instead of IP protection, such as breach of contract for violations of the terms of service found on websites. Brown, supra note 86; Telephone Interview with Jared Novack, Partner, Upstatement (Feb. 4, 2015). For the vast majority of websites, this will be a nonstarter because although there is often a “Terms” link on every page of a website, it is not binding because the mere link fails to serve as legal notice for users unless they are required to perform some affirmative action confirming their assent, which they might only do if required to create an account, for example. (That is, clickwrap is binding but browsewrap isn’t, and the terms are especially not binding if the imitating designer never sees them). See Specht v. Netscape Communications Corp., 306 F.3d 17 (2d Cir. 2002).
[106] Telephone Interview with Jared Novack, Partner, Upstatement (Feb. 4, 2015). However, Jared added that the web design community is fairly tightly knit, so a designer who passed someone else’s work off as his or her own would be caught and publicly reprimanded.
[107] It is not even clear whether the pictured example from Astuteo deserves protection. Although the colors are similar, the second heading is thicker and stacked, with the search bar integrated into the heading, and only one out of three icons looks like it has been copied. Note that specific elements should be analyzed in copyright analysis, as compared to a trade dress analysis which would look at the overall “look and feel.” One can only imagine the headache this would cause judges and juries.
[108] See Del Gallo, supra note note 93.
[109] Telephone Interview with Jared Novack, Partner, Upstatement (Feb. 4, 2015).
[110] E-mail from Dan Croak, Chief Marketing Officer, Thoughtbot (Feb. 23, 2015) (on file with author).
[111] That is not to say that a court should conclusively hold that copyright protection does not apply to web design, because a well-publicized case could negate this notice function.

The Current State of Pre-1972 Sound Recordings: Recent Federal Court Decisions in California and New York against Sirius XM Have Broader Implications than Just Whether Satellite and Internet Radio Stations Must Pay for Pre-1972 Sound Recordings

The Current State of Pre-1972 Sound Recordings: Recent Federal Court Decisions in California and New York against Sirius XM Have Broader Implications than Just Whether Satellite and Internet Radio Stations Must Pay for Pre-1972 Sound Recordings
By Steve Gordon* and Anjana Puri** A pdf version of this article may be downloaded here.  

Introduction

Federal copyright law applies to sound recordings, but only to those fixed, i.e., produced, on or after February 15, 1972.[1] Recordings produced prior to that date are subject to protection under the laws of the individual states until 2067.[2] A recent spate of lawsuits has raised the issue of whether Sirius XM’s satellite service and Pandora’s satellite service have the right to play sound recordings produced prior to February 15, 1972, without permission from, and without paying, the owners of the copyrights in those recordings or the artists performing on them. Pandora and Sirius XM currently are not paying SoundExchange for pre-1972 recordings.[3] Both companies contend that since federal law, which recognizes public performance rights for digital performances of sound recordings, does not apply to pre-1972 recordings, they do not need permission from the owners of the copyrights in such sound recordings or the artists who performed them.[4] Pre-1972 recordings include some of the most iconic records of all time, including records featuring such artists as Billie Holiday, Frank Sinatra, Elvis Presley, Miles Davis, The Beatles, the Rolling Stones, the great artists of the Motown era such as the Supremes and Temptations, and countless others. Pre-1972 recordings account for about 5 percent of plays on Pandora and 15 percent at Sirius XM,[5] which highlights the importance of the issue for both companies. In 2013 SoundExchange paid out $590 million to artists and owners of sound recording copyrights (usually record companies).[6] Of that amount, Pandora paid approximately $300 million[7] and Sirius paid approximately $200 million.[8] As of December 2014, there are six lawsuits questioning Sirius XM and Pandora’s position that they do not have to pay for pre-1972 recordings. Of these six cases, there have been three decisions, all of them against Sirius XM. In September 2014 a California federal court found that Sirius’ policy violated a 1982 California statute specifically designed to protect pre-1972 recordings.[9] In November of the same year, Sirius XM suffered another major defeat in New York when the Southern District found that although New York had no statute protecting sound recordings, the state’s common law required Sirius to secure permission to play pre-1972 recordings.[10] The same court wrote another decision rejecting a motion to reconsider its original opinion.[11] Although these federal trial court decisions clearly implicate whether or not Sirius and Pandora have to pay for pre-1972 recordings, the decisions have even broader implications for the music industry as a whole. In fact, if the decisions are upheld, this could lead to massive additional litigation in California and/or New York against broadcasters, and physical venues such as nightclubs, that currently pay nothing for playing recorded music, and ultimately lead to passage of federal legislation that would for the first time require terrestrial radios throughout the United States to pay to play recorded music. To understand those implications, it is necessary to provide some history of the music business with respect to public performance rights.

I. Brief History of Copyright and Public Performance Rights for Recorded Music

In 1897, the federal copyright law was amended to protect public performance rights in musical compositions.[12] This meant that venues such as bars, taverns, honky-tonks and nightclubs[13] at which songs were publicly performed had to acquire licenses to perform them. Sound recordings did not exist at the time. In 1914, a group of prominent writers (including Irving Berlin, Jerome Kern and John Philip Souza), and their music publishers, came together to form the American Society of Composers, Authors and Publishers (ASCAP) to collect royalties from venues that played their songs for the public. Monies generated by the public performance of songs received a major boost when commercial radio emerged in the 1920s. ASCAP started offering a blanket license to radio stations for the right to play any musical composition in its repertoire. ASCAP collects the licensing fees and then distributes them back to its songwriter and publisher members. However, in 1939 ASCAP announced a substantial increase in its blanket license fees for radio. This prompted the National Association of Broadcasters (NAB) to create a new public rights organization (PRO). They called it Broadcast Music, Inc. (BMI). It was designed to provide a lower-cost alternative to ASCAP. As such, BMI created competition in the field of performing rights by providing an alternative source of licensing for all music users. Later, another PRO emerged in the U.S. to collect public performance royalties on behalf of contemporary classical composers, SESAC (which originally stood for Society of European Stage Authors and Composers). From the 1930s through the 1950s, the record business emerged as a significant part of the U.S. entertainment industry. The myriad of mostly small independent labels composing the record business, such as Sun Records (Elvis Presley), Atlantic (Ray Charles), Stax (Otis Redding) and Mercury (Sarah Vaughan), were led by entrepreneurs who constantly tried to get local radio stations to play their records. Often they would actually offer cash and other forms of “consideration,” a practice known as “payola,” to DJs or station managers to play their tracks. Following hearings exposing these practices in the late 1950s, Congress made it illegal for any radio station to receive consideration for broadcasting particular records unless it disclosed that fact along with the identity of the person furnishing such consideration.[14] Despite the law against payola, as recently as 2005 the record companies have been caught trying to bribe radio stations to play their records.[15] Former New York State Attorney General Eliot Spitzer prosecuted payola-related crimes in New York and settled out of court with Sony BMG Music Entertainment in July 2005, Warner Music Group in November 2005, and Universal Music Group in May 2006. The three majors agreed to pay $10 million, $5 million and $12 million respectively in fines. Spitzer’s office found that the companies had used a broad array of illegal “pay for play” tactics to secure airplay for its music, including bribing programmers with laptop computers, luxury hotel stays and even free tickets to Yankee games.[16] Nonetheless, for decades record companies have requested that Congress create a performance right for sound recordings in order to make radio stations pay them.[17] The legislative history of the 1976 Act shows that even ten years before the Act was passed the recording industry was trying to establish a public performance right in sound recordings. In the Register’s Report on the new Act submitted to Congress in May 1965, the Register of Copyrights, L. Quincy Mumford, recognized that many in the recording business wanted Congress to establish a public performance right for sound recordings:
Representatives of record companies have argued that there are no valid reasons in principle for placing sound recordings in a different category from all other works, and the American Federation of Musicians has recently adopted a formal position opposing the … bill because it would deny performers “a modicum of economic incentive and participation in the vast profits derived from the public performance of records.”[18]
But he regarded this issue as so “explosively controversial,” due to broadcasters’ fierce opposition to the grant of such right, that the chances of passing the new Copyright Act would be seriously impaired if it included any proposal for a public performance right for sound recordings. He wrote in relevant part:
“We are convinced that, under the situation now existing in the United States, the recognition of a right of public performance in sound recordings would make the general revision bill so controversial that the chances of its passage would be seriously impaired.”[19]
In fact, the broadcaster’s lobbying group, the NAB has been successful throughout the years at thwarting public performance rights for sound recordings. Although the NAB has consistently argued that broadcasters should not have to pay to play sound recordings because by playing them they promote record sales thereby benefitting both labels and artists, the political reality is that all members of Congress have radio stations in their district, and all members of Congress seek the goodwill of many of those radio stations, especially when they run for re-election. The recording industry, which is largely based in New York City, Los Angeles and Nashville, has always had far less clout. These political realities have resulted in the United States being one of the only countries in the world where radio stations do not pay for the performance of musical recordings. But subsequent to 1999, when income from recorded music started to plummet, the recording industry, led by the major labels, has been lobbying even more diligently to change the federal copyright law to make radio pay them for playing their records. The latest incarnation of this effort was the introduction in September 2013 of the Free Market Royalty.[20] Like the earlier failed Performing Rights Act of 2007 and the Performance Rights Act of 2009,[21] this Act would require AM/FM broadcasters to pay performers and copyright owners. As hard as the record industry has tried, however, the broadcasting community, led by the NAB, has pushed back by lobbying effectively against a general right of public performance in sound recordings.[22] In 1971, Congress passed the Sound Recording Act, which amended § 102 of the Copyright Act to add “sound recordings” to the list of works of authorship that receive protection. However, sound recording copyright owners were still not given the full bundle of rights usually associated with copyrights.[23] While reproduction, adaptation and distribution rights were now protected, the right of performance was not, thereby allowing broadcasters to continue to pay nothing to the labels. This served as a compromise between the recording industry, which wanted to create uniform federal protection against physical piracy rather than continue to fight against it in each state, and the broadcast community, which did not feel that it should have to pay the labels for playing their records when doing so already benefitted the recording industry by promoting record sales.[24] In 1976 Congress overhauled the old 1909 Copyright Act to conform to international standards, including changing the term of protection from a 28-year term with a renewal term of another 28 years, to 50 years after the death of a creator or 70 years for corporate works.[25] Once again, however, the broadcast community was able to persuade Congress to specifically carve-out public performance rights for sound recordings. The 1976 Act included another provision that the recording industry did not favor: a right for authors to terminate grants of copyright after 35 years.[26] The reasoning behind this right of termination was that young creators often sell or assign their copyrights for little or no money at the beginning of their careers. Congress felt that they or their families should have the right to recapture those copyrights after a certain period of time. Had this provision applied to recordings made before the implementation of the Act on January 1, 1978, any record older than 35 years would be subject to possible termination by artists, the “authors” of such sound recordings. Therefore, instead of asking Congress to apply the new Copyright Act to records made before 1972, the industry urged that those records continue to be protected exclusively by state law. Consequently, the Act specifically provided that pre-1972 sound recordings would remain subject to state statutes or copyright common law.[27] Even though the recording industry has thus far been unsuccessful in trying to obtain public performance rights under federal law, in 1995 it did manage to obtain exclusive digital public performance rights. The Digital Performance Right in Sound Recordings Act (DPRA)[28] granted owners of a copyright in sound recordings an exclusive right “to perform the copyrighted work publicly by means of a digital audio transmission.”[29] The DPRA was enacted because the recording industry was able to persuade Congress that digital technology would threaten its business by allowing people to make perfect copies from digital transmission, thus displacing record sales. The Act received no significant opposition because it had no impact on normal broadcasters and at the time there very little digital transmission of music.[30] In the next several years, the Internet started to take off and new services such as AOL and Yahoo! were successful in getting a compulsory license through Congress as part of the Digital Millennium Copyright Act (DMCA) of 1998.[31] This meant that certain digital streaming services could use any recording without permission, provided that they qualified for licenses. The two major qualifications, codified in Section 114 of the Copyright Act, were that the services were non-interactive, that is, listeners cannot select particular songs, and that they paid the required royalty rate. Both Sirius XM and Pandora operate under that regime today. They pay royalties to SoundExchange, a not-for-profit that collects monies from statutorily covered services and redistributes that money to record companies and artists on a 50–50 basis. Yet both Sirius XM and Pandora take the position that they are not legally required to pay for pre-1972 recordings, because neither the DPRA nor DMCA apply to such recordings.

II. The Current Pre-1972 Cases

As noted above, as of the submission of this article there are six cases questioning Sirius XM or Pandora’s position that they do not have to ask for permission or pay for pre-1972 recordings. Four of the six lawsuits were brought by Flo & Eddie Inc., a corporation created in 1971 that is owned and exclusively controlled by Howard Kaylan and Mark Volman, two of the founding members of the music group “The Turtles.”[32] Flo & Eddie Inc. started three lawsuits against Sirius XM in California, New York and Florida, and filed another one against Pandora in California. We discuss the recent decisions in favor of Flo & Eddie in California and New York below. Additionally, the recording industry—lead by Capitol, a wholly owned label of Universal Music—is suing Sirius XM in California[33] and Pandora in New York.[34] All of these suits raise the issue of whether digital music services must ask permission to play pre-1972 recordings.[35] The issue presented in these six cases is immensely important because it has implications that go far beyond just whether Pandora and Sirius XM should be paying for pre-1972 records. As we discuss in more detail in Part III below, if owners of pre-1972 sound recordings are found to have exclusive public performance rights, this would implicate many other businesses which play sound recordings publicly, including not only terrestrial radio, broadcast TV and cable, but also any other physical place that plays recorded music such as bars, restaurants, nightclubs, arenas, stadiums, amusement parks, department stores and malls. Indeed, if decisions favoring the plaintiffs in these cases are upheld on appeal, they may not only change the landscape of music licensing in the states in which they are decided, but could also form the basis for changing U.S. copyright law to finally protect public performance rights for all sound recordings.

A. Judge Gutierrez’s Decision

Flo & Eddie Inc. won a decisive victory against Sirius in federal trial court in California[36] on September 22, 2014, when Judge Paul Gutierrez granted Flo & Eddie’s motion for summary judgment. Judge Gutierrez declared:
The Court finds that copyright ownership of a sound recording under § 980(a)(2) includes the exclusive right to publicly perform that recording. See Cal. Civ. Code § 980(a)(2). Accordingly, the Court GRANTS summary judgment on copyright infringement in violation of § 980(a)(2) in favor of Flo & Eddie.[37]
As discussed in detail below, Judge Gutierrez’s decision was based on his reading of legislative intent underlying § 980(a)(2) of the California Civil Code. That section, which was enacted in 1982, reads as follows:
The author of an original work of authorship consisting of a sound recording initially fixed prior to February 15, 1972, has an exclusive ownership therein until February 15, 2047, as against all persons except one who independently makes or duplicates another sound recording that does not directly or indirectly recapture the actual sounds fixed in such prior recording, but consists entirely of an independent fixation of other sounds, even though such sounds imitate or simulate the sounds contained in the prior sound recording.[38]
The court reasoned the language of the statute itself was “the most reliable indicator of legislative intent.”[39] The court focused on the words “exclusive ownership” in a sound recording “as against all persons” and found that the plain meaning of these words was to give all rights in sound recordings to their owners to the exclusion of others. The court observed that there was nothing in the statutory language to suggest that the legislature intended to exclude any right or use of the sound recording from the concept of ‘exclusive ownership.’ He inferred from this that “the legislature did not intend to further limit ownership rights, otherwise it would have indicated that intent explicitly.” Judge Gutierrez concluded, “copyright ownership of a sound recording under § 980(a)(2) includes the exclusive right to publicly perform that recording.”[40] It is clear that, if upheld, this decision would mean that both Pandora and Sirius XM would have to seek permission and pay for pre-1972 recordings in California. However, would nightclubs, bars and restaurants, as well as radio and TV stations have to seek permission to play and pay performance royalties for pre-1972 records in that state? On its face, yes. Gutierrez’s interpretation of California law would make the exclusive right of public performance in sound recordings apply to any public performance of a pre-1972 recording, whether on a digital service or otherwise, including performances in terrestrial radio or television broadcasts, nightclubs, restaurants, bars and any other public places. In other words, they would all have to seek permission from the copyright owner of each pre-1972 recording—usually the record company.[41] The owners of such recordings could then charge any amount they wished, or deny permission altogether. On October 6th, 2014, Sirius XM announced that it would appeal Judge Gutierrez’s ruling. In the meantime, all the other lawsuits against it and Pandora are ongoing.
1. Criticism of Gutierrez’s Decision
It is questionable whether Judge Gutierrez’s decision will be upheld on appeal. By his own analysis he was supposed “to ascertain the intent of the drafters so as to effectuate the purpose of the law.”[42] However, Judge Gutierrez basically ignored the intent made manifest in the legislative history. Instead, as discussed above, he relied on the statutory language itself, on the basis that it “is generally the most reliable indicator of legislative intent.”[43] His decision rejected Sirius’ reliance on legislative history, noting that:
Sirius XM’s attempts to insert ambiguity into the textual language fail because Sirius XM relies on information outside the statutory language to find that ambiguity in the first place. See Opp. ¶ 7:5–19, 16:20–17:4; see People v. Hagedorn, 127 Cal. App. 4th 734, 743 (2005) (“Courts generally resort to legislative history to resolve ambiguities, not to create them”). Regardless, the legislative history of § 980(a)(2) is consistent with the Court’s textual reading of the statute.[44]
First he lays out in his opinion Sirius’ interpretation of the legislative history, which does in fact support its position, and then completely ignores both Sirius’ interpretation and the legislative history itself. Sirius argued that the 1982 revision of the California Civil Code was motivated by the preemption provisions of Section 301(c) of the Copyright Act, which, as of its implementation 1978, had made much of the former version § 980 obsolete. The revision was needed to clarify what state-level protections remained. The former version of § 980 was very broad and did not distinguish between different types of copyrightable property:
The author or proprietor of any composition in letters or art has an exclusive ownership in the representation or expression thereof as against all persons except one who originally and independently creates the same or a similar composition.[45]
This broad protection was necessary to protect unpublished works since the federal law did not offer such works any protection. But after the implementation of the new Copyright Act, federal law for the first time became available for unpublished works. So, according to Sirius, the California legislature rewrote its sweeping provision to narrow it to the areas of the law that it still had the authority to regulate. Therefore, it replaced the above subsection with subsection (a)(1), pertaining to works “not fixed in any tangible medium of expression” such as live theatre and concerts, and subsection (a)(2), pertaining to pre-72 sound recordings. This narrowing of state-regulated subject matter tracked the federal Copyright Act’s preemption provisions.[46] Accordingly, Sirius argued, the California legislature did not expand or limit ownership rights in sound recordings by its 1982 amendment. Rather, it excluded works of authorship in other mediums of expression from the law because it no longer had authority to regulate copyrights of those works. Sirius’ position is correct. The documents comprising the legislative history are replete with discussions that the bill was simply trying to conform California law to the pre-emption provisions of the federal law.[47] In fact, the Patent, Trademark, and Copyright Section of the California Bar, in endorsing the then new legislation, specifically found this to be the exclusive purpose of § 980(a).[48] But instead of seriously considering Sirius’ argument, which he summarizes in one paragraph in his opinion,[49] Judge Gutierrez fails to even address it. Instead, he makes another argument based on statutory construction:
As the California legislature clearly considered the Federal Copyright Act when drafting its 1982 amendment, § 980(a)(2)’s similarities to and differences from the federal law can further reveal the legislature’s intent regarding sound recording rights.[50]
Instead of actually looking at the legislative history, as Sirius did, Gutierrez embarks on a comparison of the actual language of the Act and its revision in an attempt to support his conclusion that California intended to protect public performance rights in sound recordings. He points out that the language in § 980(a)(2) that excludes from protection “one who independently makes or duplicates another sound recording” is almost identical to the wording in Section 114(b) of the Copyright Act.[51] Gutierrez then observes that Section 114 “contains other expressly stated limitations,” specifically, “[t]he exclusive rights of the owner of copyright in a sound recording … do not include any right of performance[.]”[52] He concludes that since the California legislature did not include this other limitation in § 980, it intended to protect public performance rights. This seems to the authors to be a huge stretch. As discussed above, for decades the recording industry has tried to achieve a public performance right in sound recordings, and for decades the broadcast community has been able to prevent this from happening. If the state legislature wanted to establish a public performance right for sound recordings, and thereby overturn many years of music industry practice and make broadcasters, bars, restaurants, nightclubs as well as other places that play records pay record companies for the first time in California history, as well as the history of the United States, it seems inconceivable that there would be no mention of the right of public performance in the legislative history or the law. Moreover, if Judge Gutierrez had honestly analyzed the legislative history, he would have to deal with this elephant in the room: the legislation passed without opposition.[53] It seems obvious to the authors that no one thought that the intent was to create a right that would stand music licensing on its head in California. If the statute clearly stated that pre-72 recordings had a right of public performance, it is unbelievable that almost every radio network, TV station, restaurant chain, hotel, motel and bar or their trade associations would not have loudly protested. Therefore, it seems almost irrational to impute the intent that Gutierrez found in the statute. In sum, the legislative history makes it clear that the 1982 revision of § 980(a) was only about conforming California law with the pre-emption provisions in the 1976 Copyright Act. If the legislature wanted to (i) announce the existence of a right no one in the entire entertainment business thought existed and (ii) change more than 100 years of business practice, it would have mentioned such a sweeping change in both the legislative history and the statute. If Judge Gutierrez did not ignore the legislative history, he clearly ignored the intent manifested in that history.

B. Judge McMahon’s Decisions

Judge Colleen McMahon of the Southern District of New York denied Sirius’ motion for summary judgment against Flo & Eddie’s complaint alleging that Sirius XM Radio committed common law copyright infringement by publicly performing pre-72 sound recordings of the Turtles. McMahon found that “general principles of common law copyright dictate that public performance rights in pre-72 sound recordings do exist.”[54] McMahon based this conclusion on a series of New York court decisions that afforded public performance rights to holders of common law copyrights in works such as plays[55] and films.[56] McMahon acknowledged that no particular case specifically upheld public performance rights in a sound recording. Indeed, she wrote that “the conspicuous lack of any jurisprudential history confirms that not paying royalties for public performances of sound recordings was an accepted fact of life in the broadcasting industry for the last century.”[57] But she discarded that history by going on to assert:
….acquiescence by participants in the recording industry in a status quo where recording artists and producers were not paid royalties while songwriters were does not show that they lacked an enforceable right under the common law—only that they failed to act on it.[58]
Judge McMahon concluded that New York common law protects public performance rights in all copyrightable works, including sound recordings. She ended her decision by writing:
New York has always protected public performance rights in works other than sound recordings that enjoy the protection of common law copyright. Sirius suggests no reason why New York—a state traditionally protective of performers and performance rights—would treat sound recordings differently.[59]
1. Sirius XM’s Motion for Reconsideration
Following its defeat for summary judgment, Sirius XM retained O’Melveny & Myers as its new legal counsel, and filed a motion for reconsideration of the district court’s decision. O’Melveny predicated its entire motion on one case, RCA Manufacturing Co. v. Whiteman,[60] decided by the Second Circuit in 1940. Although Whiteman did concern sound recordings and New York law on common law copyrights, neither Sirius’ prior attorneys nor the judge had addressed it at all in the prior proceeding. O’Melveny specifically depended on certain language written by none other than the legendary jurist, Learned Hand, who wrote the opinion for the three-man court. O’Melveny argued that the following statements from Hand’s opinion stood for the proposition that New York common law does not recognize public performance rights for sound recordings:
Copyright in any form, whether statutory or at common-law, is a monopoly; it consists only in the power to prevent others from reproducing the copyrighted work. W.B.O. Broadcasting Corporation has never invaded any such right of Whiteman; they have never copied his performances at all; they have merely used those copies which he and the RCA Manufacturing Company, Inc. made and distributed.[61]
Judge McMahon, however, was far from impressed with this argument and went as far as characterizing its reliance on Whiteman as “clear error” in her opinion denying the motion.[62] Whiteman concerned the public performance rights of Paul Whiteman, a well-known orchestra conductor, who made a series of sound recordings on the RCA label in the 1930s. The recordings were sold to the public, but the records each bore the legend, “Not Licensed for Radio Broadcast.” Despite the legend, WNEW, which was owned by W.B.O. Broadcasting, played some of Whiteman’s recordings without permission from Whiteman nor RCA.[63] RCA then sued W.B.O. for common law copyright infringement. Writing for a three-man court, Judge Hand found in favor of W.B.O. The basis for his decision was his determination that under New York common law the sale of the records constituted a “publication,” and that since publication divested works of common law copyright, RCA lost any copyright protection it might have had. In rejecting Sirius’ motion, Judge McMahon found that the statements by Judge Hand that it relied on were irrelevant to the holding in Whiteman. She also observed that even if that language had been relevant to the holding, subsequent New York State court decisions disagreed with the outcome in Whiteman and, in recognizing this development, the Second Circuit itself reversed the holding in Whiteman.[64] Judge McMahon pointed out that the holding in Whiteman concerned whether RCA lost its copyright in the recordings by “publishing” them by offering them for sale to the public. Although the Whiteman court answered in the affirmative, it did not decide exactly what rights may have been forfeited by publication, or whether the right of public performance was among them. So, the language on which Sirius relied was, at best, dicta. Judge McMahon found that Sirius’ interpretation of Hand’s language was a “stretch,” and that Sirius had also interpreted that language entirely out of context. She observed:
Indeed had Whiteman been predicated on the absence of a public performance right in sound recordings, the entire discussion of whether RCA’s common law rights were divested by publication would have been superfluous; RCA could not possibly have “lost” via publication a right that never existed in the first place.[65]
Finally, she found that even if Whiteman stood for the proposition that Sirius asserted, its motion would fail because “Whiteman has been overruled, so it stands for nothing at all.”[66]

III. Possible Consequences of the Decisions if Upheld on Appeal

The decisions in both New York and California have broader implications than just whether Sirius XM or other digital services must pay to perform pre-72 sound recordings. Neither decision includes any language that would limit protection of public performances rights in sound recordings to digital transmissions. Indeed both decisions were based on cases (McMahon) or a statute (Gutierrez) that pre-dated the digital era. So logically, there is no reason why they would not apply to all forms of public performance of sound recordings. The balance of this article deals with possible consequences of the decisions. But, for now, it is important to point out that if these decisions are upheld on appeal they would profoundly change the landscape of music licensing in the United States. For the first time in U.S. history, not only would radio and television stations have to pay for the performance of music recordings, but so would every bar, restaurant, nightclub, retail store, mall, amusement park, bowling alley and any other public establishment that plays music. Such a sweeping change could have dramatic consequences for the entire music industry, as set forth below.

A. Impact on Likelihood of Success of the RESPECT Act

On May 29, 2014, the Respecting Senior Performers as Essential Cultural Treasures Act, or the RESPECT Act,[67] was introduced in Congress. If passed, this legislation would require digital music services that transmit sound recordings under the statutory license provided under Section 114 of the Copyright Act, including Sirius and Pandora, to pay royalties for sound recordings fixed before February 15, 1972, in the same manner as they pay royalties for sound recordings protected by federal copyright that are fixed after such date.[68] As discussed above, sound recordings fixed before February 15, 1972, are currently governed by state laws and are not subject to federal copyright laws—specifically, Section 114 of the Copyright Act, which requires music services to pay a performance royalty for transmitting such recordings. The RESPECT Act would also specifically “[prohibit] an infringement action against a transmitting entity from being brought under a state law if the appropriate royalty is paid under this Act.”[69] Both Sirius and Pandora have opposed the bill. In fact, David Frear, the president of Sirius XM, testified before the U.S. House of Representatives that the proposed RESPECT Act would:
….further exacerbate the irrational disparity between digital services and terrestrial radio (which would remain exempt from paying performance royalties for any recordings), create a new payment obligation on a narrow set of licensees, and bestow a one-sided windfall on owners of recordings created 70 or 80 years ago, without advancing in the least the foundational purpose of copyright law: providing an incentive for the creation of new recordings.[70]
However, the cases currently being litigated against Sirius and Pandora could have a direct impact on the passage of the RESPECT Act by changing the position of Sirius and Pandora. Here’s why: The RESPECT Act, if passed, would affirm Sirius’ and Pandora’s rights to play pre-1972 sound recordings without the permission of the record companies. As long as they paid the statutory rate set up by the DMCA, neither the record companies nor any other owners of pre-1972 recordings could prohibit Sirius or Pandora from playing those records. In other words, the RESPECT Act could actually help Sirius and Pandora. Without it, the sound recording copyright owners could demand big upfront advances as well as greater royalties than Sirius and Pandora are currently paying for post-1972 recordings. The RESPECT Act was initially referred to the Judiciary Committee, which handles any possible amendments to the Copyright Act. That Committee passed the bill on to the Subcommittee on Courts, Intellectual Property, and the Internet for consideration. That Committee held hearings on copyright law reform, including the RESPECT Act, but took no further action in the last session of Congress. Therefore, the Act would have to be re-introduced in order to move forward. As of the submission of this article for publication, the legislation has not been re-introduced in Congress. Supporters of the Act such as SoundExchange, RIAA, NARIS and others have had no official comment; however, they may be in the process of evaluating their opportunity to get even more protection for sound recordings than offered by the RESPECT Act, which is limited to digital transmission of pre-72 recordings. (See Section C. below).

B. Possible Class Action Suits against Terrestrial Radio and Physical Venues That Play Pre-72 Sound Recordings

Another consequence of the decisions reported in this article is that either could serve as the legal basis of a class action lawsuit on behalf of copyright owners of recordings by legacy artists against terrestrial broadcasters and physical venues in New York and/or California. Judge McMahon practically invited such a suit in her opinion by writing:
….the conspicuous lack of any jurisprudential history confirms that not paying royalties for public performances of sound recordings was an accepted fact of life in the broadcasting industry for the last century. So does certain testimony cited by Sirius from record industry executives, artists and others, who argued vociferously before Congress that it was unfair for them to operate in an environment in which they were paid nothing when their sound recordings were publicly performed. That they were paid no royalties was a matter of statutory exemption under federal law; that they demanded no royalties under the common law when their product as ineligible for federal copyright protection is, in many ways, inexplicable.[71]
As discussed above, she went even further and specifically pointed out that the recording industry’s “acquiescence . . . in the status quo,” where sound recording copyright owners did not receive royalties from public performance of their works while owners of copyrights in musical compositions did, did not show “that they lacked an enforceable right under the common law—only that they failed to act on it.”[72] McMahon’s remarks encourage, and even seem to invite, owners of pre-72 sound recordings to “act” on the public performance rights she recognized that they have. A class action lawsuit representative of all owners of pre-1972 recordings would be a logical way of accepting that invitation.[73] Such a class action lawsuit could have a monumental impact on the landscape of music licensing by making radio and physical venues actually pay for the performance of sound recordings for the first time. But damages would be hard to prove. Since pre-1972 sound recordings are not subject to federal law, statutory damages, which provide for up to $150,000 per work for willful infringement, are not available, so the plaintiffs would have to show that the performance of their recordings actually caused them financial harm. No doubt, the defendants would argue that the public performance of the recordings promoted record sales, thus actually benefiting the plaintiffs financially. On the other hand, if the plaintiffs could convince a court to issue an injunction against any further performances of their recordings, they may well be able to extract a large financial settlement. Of course, such a suit may be premature until the Second Circuit has reviewed McMahon’s ruling. One thing is certain: Sirius is appealing the decision.[74] Of course, if Judge Gutierrez’s decision is upheld by the 9th Circuit, one could expect similar consequences. But, based on our analysis of the two decisions, as presented above, the authors believe McMahon’s decision has the greater likelihood of being affirmed.

C. Will Terrestrial Radio Finally Agree to Pay to Play Sound Recordings?

As discussed above, the recording industry has for many years lobbied Congress to make terrestrial radio stations pay the industry to play its records. The NAB has consistently thwarted those efforts. If either McMahon’s or Gutierrez’s decision is upheld on appeal, the recording industry, as represented by the RIAA, could use such a favorable decision as leverage to finally secure the NAB’s cooperation in passing legislation that would for the first time require radio stations to pay for performing sound recordings. That leverage would flow from the RIAA’s agreement to forego launching lawsuits against terrestrial radio stations in California and/or New York in return for the NAB’s cooperation. It should be noted that the nation’s largest radio network, Clear Channel, has already signaled its agreement to pay for performance of sound recordings on terrestrial radio. In 2013, the network made a deal with Big Machine, the record label for Taylor Swift, Tim McGraw and Rascal Flatts. Under that deal, Clear Channel agreed to pay for the terrestrial broadcast of Swift’s records in exchange for a lower royalty for the digital broadcast of her records on Clear Channel’s internet radio service, iHeartradio.[75] This deal recognized that although terrestrial radio stations presently pay nothing to play records, internet radio stations are paying far too much. The additional leverage of a favorable decision for Flo & Eddie at the appellate level could be precisely the additional leverage required to persuade the NAB to join Clear Channel in a compromise.

Conclusion

The victories of Flo & Eddie in federal courts in New York and California, if upheld on appeal, may have consequences far beyond whether Sirius and Pandora have to pay for performing pre-1972 sound recordings. In fact, they may not only directly lead to massive additional litigation on behalf of legacy artists, but also to a revolution in music licensing in the United States by resulting in terrestrial radio stations paying for the performance of any sound recording for the first time in the history of the U.S. If owners of pre-1972 sound recordings are found to have exclusive public performances rights, such a decision would implicate many other businesses that play sound recordings publicly besides Sirius or Pandora, including not only terrestrial radio, broadcast TV and cable, but also any other physical place that plays recorded music such as bars, restaurants, nightclubs, arenas, stadiums, amusement parks, department stores and malls. Indeed, if decisions favoring the plaintiffs in these cases are upheld on appeal, they may not only change the landscape of music licensing in the states in which they are decided, but could also form the basis for changing U.S. copyright law to finally protect public performance rights for all sound recordings.
* Steven R. Gordon (NYU Law 1981) is an entertainment attorney specializing in music, television, film and video. He also provides music and sample clearance services for producers and distributors of documentaries, feature films, TV shows, ad campaigns, concert videos, musical theater and stand-alone digital projects. He is the author of The Future of the Music Business (Hal Leonard 4th ed. 2015). Mr. Gordon can be reached at steve@stevegordonlaw.com.
** Anjana Puri is a young entertainment lawyer and associate of Mr. Gordon who works in all areas of his practice including independent films, reality television shows and music licensing. She received her JD from Benjamin N. Cardozo School of Law (2014) and received her B.A. in International Development Studies from UCLA (2010). She can be reached at anjanapuri@gmail.com.
[1] Sound Recordings Act, Pub. L. No. 140, 85 Stat. 39 (1971).
[2] 17 U.S.C § 301(c).
[3] Sound Exchange is the non-profit collection agency set up to receive royalties from non-interactive digital radio services, including Sirius XM and Pandora, and to redistribute such royalties to sound recording owners and artists.
[4] This issue does not come up for interactive services such as Spotify or Rhapsody. As discussed later in this article, Pandora and Sirius are non-interactive and qualify for a compulsory license under the Digital Millennium Copyright Act. But Spotify and Rhapsody do not. They must therefore secure licenses from the owners the sound recordings, which are usually record companies. If Spotify and Rhapsody refused to pay for any pre-1972 recordings, the labels could deny permission to use any of their recordings.
[5] Glenn Peoples, SoundExchange Launches Campaign for Royalties on pre-1972 Recordings, Billboard (May 29, 2014), http://www.billboard.com/biz/articles/news/legal-and-management/6099428/soundexchange-launches-campaign-for-royalties-on-pre.
[6] Sound Exchange collected total royalties in the amount of $656 million dollars in 2013 with operating administrative costs of 4.5%. SoundExchange Draft Annual Report for 2013 Provided Pursuant to 37 C.F.R. § 370.5(c), SoundExchange, 4 (Mar. 2013), http://www.soundexchange.com/wp-content/uploads/2014/03/2013-Fiscal-Report-PRE-AUDIT.pdf.
[7] Angus MacDonald, Pandora Is Now Over 50% SoundExchange’s Royalty Collections; Implications for Webcasting IV, Rain News (Apr. 10, 2014), http://rainnews.com/pandora-is-now-over-50-soundexchanges-royalty-collections-implications-for-webcasting-iv/.
[8] The amount contributed by Sirius to SoundExchange is based on the fact that gross income for Sirius in 2013 was $2.15 billion, of which Sirius was required to pay 9% to SoundExchange. See Sirius XM Holdings Inc. Annual Financials, MarketWatch, http://www.marketwatch.com/investing/stock/siri/financials (last visited Jan. 25, 2015) (providing Sirius’ gross revenue from 2009 to 2013); Determination of Rates and Terms for Preexisting Subscription Services and Satellite Digital Audio Radio Services, 78 Fed. Reg. 23,054 (Apr. 17, 2013) (to be codified at 37 C.F.R. pt. 382) (determining the rates and royalty payments Sirius must make to SoundExchange from 2013 to 2017).
[9] Flo & Eddie, Inc. v. Sirius XM Radio, Inc., No. 2:13-CV-05693, 2014 WL 4725382 (C.D. Cal. Sept. 22, 2014).
[10] Flo & Eddie, Inc. v. Sirius XM Radio, Inc., No. 13 Civ. 5784 (CM), 2014 WL 6670201 (S.D.N.Y. Nov. 14, 2014).
[11] Flo & Eddie, Inc. v. Sirius XM Radio, Inc., No. 13 Civ. 5784 (CM), 2014 WL 6670201 (S.D.N.Y. Dec. 12, 2014).
[12] Circular 1a: A Brief History Introduction, United States Copyright Office, http://copyright.gov:8081/circs/circ1a.html (last visited Jan. 28, 2015).
[13] Landmarks Preservation Commission, Webster Hall and Annex, The Greenwich Village Society for Historic Preservation (Mar. 18, 2008), http://www.nyc.gov/html/lpc/downloads/pdf/reports/websterhall.pdf.
[14] 47 U.S.C. § 317 (1960). Some historians believe that the payola laws were actually a racist reaction to labels that were encouraging radio stations to play “race” music by such African American artists as Chuck Berry, Little Richard and James Brown.
[15] Jeff Leeds, Universal Music Settles Big Payola Case, N.Y. Times, (May 12, 2006), http://www.nytimes.com/2006/05/12/business/12payola.html.
[16] Id.
[17] H. Comm. on the Judiciary, 89th Cong., Supplementary Reg.’s Rep. on the General Revision of the U.S. Copyright Law (Comm. Print 1965).
[18] Id. at 51.
[19] Id.
[20] Free Market Royalty Act, H.R. 3219, 113th Cong. (2013).
[21] Performing Rights Act, H.R. 4789, 111th Cong. (2007); Performing Rights Act, H.R. 848, 111th Cong. (2009).
[22] However, as discussed below, the record companies were successful in persuading Congress in 1995 to create an exclusive public performance right for digital transmissions of sound recordings.
[23] Sound Recording Act of 1971, Pub. L. No. 92–140, 85 Stat. 391 (1971).
[24] H. Comm. on the Judiciary, supra note 18, at 51–52.
[25] These periods were later extended 20 years each.
[26] 17 U.S.C. § 304(c) (2002).
[27] 17 U.S.C. § 301(c) (1998): “With respect to sound recordings fixed before February 15, 1972, any rights or remedies under the common law or statutes of any State shall not be annulled or limited by this title until February 15, 2067. The preemptive provisions of subsection (a) shall apply to any such rights and remedies pertaining to any cause of action arising from undertakings commenced on and after February 15, 2067. Notwithstanding the provisions of section 303, no sound recording fixed before February 15, 1972, shall be subject to copyright under this title before, on, or after February 15, 2067.”
[28] 17 U.S.C. § 106(6) (2002).
[29] Id.
[30] The only significant player in digital transmission of music was a little company based in Horshal Pennsylvania called Music Choice.
[31] Provisions relevant to public performance rights for digital transmission of sound recordings codified at codified at 17 U.S.C. §114(d)–(j) (2010).
[32] Although of Flo & Eddie’s suits are structured as class actions potentially representing any owners of pre-78 copyright owners although to date, class action status has not been certified in any of these cases. If the class is certified in any particular case, any other pre-1972 copyright owner will be able to opt-in to the class and will be entitled to their pro-rated share of damages in that particular case. The potential total damages would be based on Sirius and Pandora’s plays of all pre-1972 sound recordings.
[33] Capitol Records, LLC v. Sirius XM Radio Inc., No. BC-520981 (Cal. Supp. Ct., Sept. 11, 2013). The plaintiffs included Capitol Records LLC, Sony Music Entertainment, UMG Recordings Inc. and Warner Music Group Corp. as well as ABKCO Music & Records Inc.
[34] Capitol Records, LLC v. Pandora Media, Inc., No. 651195/2014 (Sup. Ct. N.Y. filed Apr. 17, 2014). This lawsuit included the same plaintiffs as the case against Sirius.
[35] SoundExchange has also brought a separate suit against Sirius XM, but the issue in that case is not whether Sirius XM should have to pay to play pre-1972 Sound Recordings. The royalties that Sirius XM must pay under the statutory license are set periodically in regulations prescribed by the federal Copyright Royalty Board (“CRB”). Under those regulations Sirius must pay SoundExchange a percentage of “Gross Revenues.” SoundExchange claims that starting in 2007 Sirius underpaid for the statutory license by devising its own definition of Gross Revenues—a definition that substantially reduced its royalty payments to SoundExchange. See Complaint, SoundExchange Inc v. Sirius XM Radio Inc., No. 1:13-cv-01290 (D.D.C. Aug. 26, 2003), available at http://www.soundexchange.com/wp-content/uploads/2013/08/SoundExchange-Sues-SiriusXM-Complaint.pdf.
[36] Flo & Eddie, Inc. v. Sirius XM Radio, Inc., No. 2:13-CV-05693, 2014 WL 4725382 (C.D. Cal. Sept. 22, 2014).
[37] Id. at 9.
[38] Cal. Civ. Code § 980(a)(2) (West 2007).
[39] Flo & Eddie, Inc., 2014 WL 4725382 at *5 (quoting Esberg v. Union Oil Co., 28 Cal. 4th 262, 268 (2002) (citing People v. Lawrence, 24 Cal. 4th 219, 230 (2000)).
[40] Gutierrez buttressed his conclusion by pointing out that the legislature specifically excluded cover recordings (i.e., “independent fixation of other sounds” that imitate the original recording) from the bundle of exclusive rights enjoyed by owners of sound recordings. He reasoned if they intended to exclude public performance rights, they would have made that an additional exclusion.
[41] Most artists who enter into recording agreements with record companies do not retain the copyright in their sound recordings. Generally, recording agreements contain a “work for hire” clause under which the record label becomes the sole owner of the copyrights in each recording produced under the agreement.
[42] Flo & Eddie, Inc., 2014 WL 4725382 at *4 (quoting from Esberg v. Union Oil Co., 28 Cal. 4th 262, 268 (2002) (citing Preston v. State Bd. of Equalization, 25 Cal. 4th 197, 213 (2001)).
[43] Id. at *4 (quoting Esberg, 28 Cal. 4th at 268) (citing People v. Lawrence, 24 Cal. 4th 219, 230 (2000)).
[44] Id. at *6 (emphasis added).
[45] Cal. Civ. Code § 980 (1942) (current version at Cal. Civ. Code § 980 (West 2007)).
[46] See 17 U.S.C. § 301(a) (1998): “On and after January 1, 1978, all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by sections 102 and 103, whether created before or after that date and whether published or unpublished, are governed exclusively by this title. Thereafter, no person is entitled to any such right or equivalent right in any such work under the common law or statutes of any State.”
[47] According to the legislative history the purpose of that amendment was only to “maintain rights and remedies” in sound recordings. See Assemb. Comm. on Judiciary, 1981–1982 Reg. Sess., Rep. on AB 3483 (Katz), at 1–2 (Ca. 1982) (emphasis added). The purpose of the amendment was also to make “technical and minor policy changes in the State copyright laws in order to conform with Federal Law.” See Cal. Dept. of Fin., 1981–1982 Reg. Sess., Enrolled Bill Rep. on AB 3483 (1982) (emphasis added).
[48] Letter from Exec. Comm. of the Patent, Trademark and Copyright Section, of the State of California, to Members, Board of Governor, of the State of California (October 27, 1981) (on file with authors).
[49] Flo & Eddie, Inc. v. Sirius XM Radio, Inc., No. CV 13-5693 PSG, 2014 WL 4725382 at *6 (C.D. Cal. Sept. 22, 2014).
[50] Id. at *7 (emphasis added).
[51] Id. at *4.
[52] Id. at *7 (citing 17 U.S.C. § 114(a) (2010)).
[53] According the Legal Affairs department of the Governor’s Office: “There is no known opposition to the bill.” Legal Affairs Dep’t of the Governor’s Office, Enrolled Bill Rep. on AB 3483 (Katz) (Ca. Aug. 13, 1982). The same enrolled report confirms Sirius’ contention that the bill was intended to conform California law to the federal copyright law: “This bill, sponsored by the State Bar’s Patient [stet], Trademark and Copyright Section, amends California law to conform to the Federal Copyright Act of 1976.” Brief for Sirius XM Radio, Inc. at 14, Flo & Eddie, Inc. v. Sirius XM Radio, Inc., No. 2:13-cv-05693, 2014 WL 4725382 (C.D. Cal. Sept. 22, 2014) No. 13-CV-5693 PSG (RZx), 2014 WL 5590867.
[54] Flo & Eddie, Inc. v. Sirius XM Radio, Inc., No. 13-Civ.-5784 (CM), 2014 WL 6670201, at *15 (S.D.N.Y. Nov. 14, 2014).
[55] See Palmer v. De Witt, 47 N.Y. 532, 535–36, 540–41 (1872); Roberts v. Petrova, 213 N.Y.S. 434, 434–37 (Sup. Ct. 1925); French v. Maguire, 55 How. Pr. 471, 472–73, 479–80 (N.Y. Sup. Ct. 1878).
[56] See Brandon Films, Inc. v. Arjay Enter., Inc., 230 N.Y.S.2d 56, 57–58 (Sup. Ct. 1962); Roy Exp. Co. v. Columbia Broad. Sys., Inc., 672 F.2d 1095, 1097–99, 1101–04 (2d Cir. 1982) (applying New York law) (recognizing a public performance right in compilations of film clips).
[57] Flo & Eddie, Inc., 2014 WL 6670201 at *11.
[58] Id.
[59] Id. at *15.
[60] RCA Mfg. Co. v. Whiteman, 114 F.2d 86 (2d Cir. 1940).
[61] Id. at 2.
[62] Flo & Eddie, Inc. v. Sirius XM Radio, Inc., No. 13 CIV. 5784 CM, 2014 WL 7178134, at *1 (S.D.N.Y. Dec. 12, 2014).
[63] RCA Mfg. Co. v. Whiteman, 28 F. Supp. 787 (S.D.N.Y. 1939).
[64] Flo & Eddie, No. 13 Civ. 5784(CM), 2014 WL 7178134, at *4 (S.D.N.Y. Dec. 12, 2013) (citing Capitol Records v. Mercury Records Corp., 221 F.2d 657, 663 (2d Cir. 1955)).
[65] Flo & Eddie, 2014 WL 7178134, at *3.
[66] Id. at *4.
[67] RESPECT Act, H.R. 4772, 113th Cong. (2014).
[68] In accordance with rate-setting pursuant to Section 114, Pandora currently pays SoundExchange a “per stream” royalty of .0013 cents for its free service and .0023 for streams on its premium service. That means it must pay the applicable fraction of a penny for the stream of every song. Sirius XM in contrast pays a percentage of its “gross income.” That percentage is currently 9.5%. However, Sirius XM excludes from its gross revenue an amount of money commensurate with the amount of pre-1972 recordings that it plays on its service, which it claims is approximately 15%. In fact, in a separate lawsuit filed against Sirius, SoundExchange claims that this deduction is unjustifiable. In its lawsuit, filed in Washington, D.C. federal court in August 2013, SoundExchange argued, “[r]ather than paying a percentage of Gross Revenues as that term is defined in the federal regulations, Sirius XM devised its own definition of Gross Revenues—a definition that substantially reduced its royalty payments to SoundExchange.” Eriq Gardner, SiriusXM Sued Over Alleged Underpayment of Royalties, The Hollywood Reporter (Aug. 27, 2013, 8:13 AM), http://www.hollywoodreporter.com/thr-esq/siriusxm-sued-alleged-underpayment-royalties-615039.
[69] Congressional Research Service, Summary: H.R.4772—113th Congress (2013–2014), Congress.gov, https://www.congress.gov/bill/113th-congress/house-bill/4772 (last visited Feb. 1, 2015).
[70] Music Licensing Under Title 17: Hearing Before the Subcomm. on Courts, Intellectual Prop., and the Internet of the H. Comm. on the Judiciary, 113th Cong. 2 (2014) (written statement of David J. Frear, Chief Financial Officer, Sirius XM Holdings Inc.) (emphasis omitted).
[71] Flo & Eddie, Inc. v. Sirius XM Radio, Inc., No. 13 CIV. 5784 CM, 2014 WL 6670201, at *11 (S.D.N.Y. Nov. 14, 2014) (citations omitted) (emphasis added).
[72] Id.
[73] See Jonathan Stempel, Sirius XM is dealt new setback in Turtles copyright lawsuit, Reuters (Jan. 15, 2015, 6:54 PM), http://www.reuters.com/article/2015/01/15/us-siriusxm-turtles-idUSKBN0KO2TL20150115.
[74] Lisa Shuchman, A Bad Precedent Trips Up O’Melveny in a Big IP Case, The American Lawyer (Jan. 5, 2015), http://www.americanlawyer.com/id=1202713086677/A-Bad-Precedent-Trips-Up-OMelveny-in-a-Big-IP-Case.
[75] Big Machine Label Group and Clear Channel Announce Groundbreaking Agreement, iHeartMedia.com (Jun. 6, 2012), http://www.iheartmedia.com/Pages/Big-Machine-Label-Group-and-Clear-Channel-Announce-Groundbreaking-Agreement-to-Enable-Record-Company-and-Its-Artists-to-Par.aspx.

Copyright Law and Its Parody Defense: Multiple Legal Perspectives

Copyright Law and Its Parody Defense: Multiple Legal Perspectives
By Amy Lai* A PDF version of this article may be downloaded here.  

Introduction: Three Copyright Disputes

In 2001, Alice Randall published The Wind Done Gone, an alternative account of Margaret Mitchell’s classic novel Gone with the Wind (1936).[1] While Mitchell’s novel focuses on the life of a wealthy Southern woman who lives through the American Civil War and the Reconstruction Era, Randall’s novel recreates the story from the viewpoint of the woman’s slave girl.[2] Mitchell’s estate sued Randall and her publishing company for copyright infringement. After the United States District Court for the Northern District of Georgia blocked the publication of The Wind Done Gone, defendants appealed the preliminary injunction. The United States Court of Appeals for the Eleventh Circuit vacated the injunction barring publication of the book, holding that Randall’s new work was a parody seeking to rebut the “romantic, idealized portrait of the antebellum South” in Mitchell’s original novel.[3] The case ended with a settlement one year later, with Randall’s publishing company agreeing to make an unspecified donation to Morehouse College.[4] The Eleventh Circuit declared what seemed to be a victory for parodists. Yet, due to the failure of the parody doctrine as well as the pitfalls of the parody/satire distinction, this encouraging precedent failed to redeem Swedish American author Fredrik Colting, who published under his pseudonym, John David California, what he sarcastically called an “unauthorized sequel” to Jerome David Salinger’s The Catcher in the Rye (1951), almost sixty years after this American classic was first published.[5] Entitled 60 Years Later: Coming through the Rye, Colting’s work portrays both how Salinger’s teenaged protagonist finally changes his uncompromising worldview as an old man, and also critiques Salinger’s equally uncompromising, but persistent control over his own novel and protagonist.[6] The U.S. District Court for the Southern District of New York ruled in favor of Salinger on his claims of copyright infringement, holding that Colting’s novel was a satire that targeted Salinger and society at large, but did not sufficiently critique the original work.[7] Because it neither fit the definition of parody nor was transformative enough, the court held it was not fair use.[8] In April 2010 – three months after Salinger’s death – the Second Circuit upheld the injunction granted by the lower court.[9] In 2011, Colting settled the case by agreeing not to publish or distribute his book in the U.S. or Canada until the original novel enters the public domain.[10] One wonders to what extent Salinger’s victory influenced GoldieBlox’s decision to settle with Beastie Boys over their copyright dispute in 2014. A startup company that creates innovative toys for girls, GoldieBlox made a commercial by reworking hip-hop band Beastie Boys’ 1987 song “Girls” with new lyrics conveying a girl-power message.[11] It filed a pre-emptive lawsuit against Beastie Boys to claim fair use of the “Girls” track; Beastie Boys sued GoldieBlox in return by claiming copyright infringement.[12] While commentators were still debating whether the song was a parody or satire, GoldieBlox unexpectedly settled with Beastie Boys by pulling the song from the video, posting a public apology on its website, and agreeing to donate a portion of its revenue to science education charities selected by the band.[13] * * * In the United States, whether a disputed work qualifies as a parody is critical, if not determinative, to the success of a fair use defense in copyright lawsuits. This question is ultimately tied to the idea of authorship and the right associated with it. Because authors who are copyright owners have rights in their works, using their works without their permission presumptively infringes upon this right, unless one can offer a defense to the claim of copyright infringement. Yet, distinguishing between legitimate and illegitimate forms of copying poses a challenge. Equally challenging are attempts to define parody and satire. How can different schools of legal thought contribute to copyright law and its fair use doctrine, particularly its contentious parody exception? By drawing upon different legal theories, this article argues that courts, in determining whether new creative works that build upon existing works constitute fair use, should refrain from forcing these expressions into arbitrary categories of parody or satire. Courts should instead focus more heavily on the possible harm that the new works would bring to owners, and the copyright system of financial incentives as compared to their potential social benefits. Part I of this article will offer an overview of the American copyright regime by discussing the Copyright Act of 1976 and the Supreme Court’s application of the fair use doctrine, especially its definition of parody and its dichotomization of parody and satire. Because Lockean natural rights informed the Framers’ understanding of intellectual property law, and courts have a long history of using natural law justifications in intellectual property cases, Part II will begin by examining the nature of copyright through the lenses of natural law theories. Using John Locke’s theory of property and John Rawls’ “justice as fairness” model, this Part will discover the inherent conflict between copyright and free speech as a basic liberty. The reminder that copyright is not an absolute right, and the caution against expanding authors’ rights at the expense of the public, will pave the way for a re-evaluation of authorship in Part III. Drawing upon relational feminism as well as other feminist theories, Part III will substitute the idea of the “relational author” for the isolated, individuated, and proprietary author on which the current copyright regime is premised. Because authors are social creatures who write from within vast networks of pre-existing texts, creative transformations of these pre-existing works should be recognized and embraced as original expressions of authorship. Part IV will turn to the potential of law and economics in reforming the copyright regime so that it can fully accommodate the “relational author” and his/her right to free speech. It will explain how intuitive cost-benefit analysis, rather than efficiency principles, has facilitated judicial decision-making in fair use claims. This Part will then illuminate the common mistake of these two methods, which is to reinforce a narrow definition of parody that privileges owners’ rights over the social benefits of transformative works. Courts, therefore, should shift their focus from the parody/satire dichotomy to the likelihood that the new works would pose harm to owners and the copyright system versus their social benefits. Although the current copyright law is flawed, Part V will adopt legal realist perspectives to explore how courts have turned copyright law “in the books” to copyright law “in action,” and how legal realism enables courts to utilize a flawed law to better accommodate the rights of the public. After offering new insights into the Salinger holdings, this Part will examine how the dispute between Beastie Boys and GoldieBlox would and should have been adjudicated if it had gone to court. The article concludes that the purpose of deconstructing the parody/satire dichotomy is to help courts stimulate creativity and, ultimately, to serve justice.

I. Copyright Law: The Problematic Parody/Satire Dichotomy

The U.S. Constitution grants Congress the authority to “promote the Progress of Science and useful Arts, by securing for limited Times to Authors … the exclusive Right to their [works.]”[14] Under Section 102 of the Copyright Act, copyright protection extends to “original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.”[15] The several exclusive rights to copyright holders, as defined in Section 106, include the rights “to reproduce the copyrighted work[,]” to prepare derivative works of the original, and to distribute its copies to the public by various means.[16] These rights, which are subject to a time limit, generally expire seventy years after the author’s death.[17]

A. Fair Use, Parody, and Satire

Section 107 of the Copyright Act imposes limitations on section 106, providing that the “fair use” of a copyrighted work does not constitute infringement.[18] While fair use explicitly applies to such uses as criticism, news reporting, teaching or research, the fair use defense is by no means limited to these areas.[19] A four-factor test determines whether a particular use is fair: “(1) the purpose and character of the use, including whether” it is for commercial or nonprofit educational purposes; “(2) the nature of the copyrighted work; (3) the amount and substantiality of the portion” of the original work used; and (4) the effect of the use upon the original’s market or potential market.[20] The Supreme Court defined parody for the first time in Campbell v. Acuff-Rose Music, Inc. Following the Sixth Circuit’s definition of parody as “the art of creating a new literary, musical, or other artistic work that both mimics and renders ludicrous the style and thought of an original[,]”[21] the Court held that a commercial parody may be fair use.[22] The inquiry concerning fair use generally turns on factor one of the fair use test, examining “whether the new work merely supersede[s]” the original, or whether and to what extent it is “transformative” by altering the original with “new expression, meaning, or message[.]”[23] The more transformative the work is, less will be the impact of other factors, “like commercialism, that may weigh against a finding of fair use.”[24] In contrast, a satire, which makes broad comments on society, “can stand on its own two feet and so requires justification for the very act of borrowing.”[25] Hence, it is more difficult for a defendant to prove fair use in a satirical work.[26] Throughout the years, courts continue to use the parody/satire distinction. However, Blanch v. Koons is an example of a recent case where a federal court deemphasized this distinction.[27] While affirming that artist Jeff Koons’ incorporation of a copyrighted photograph into a collage painting was fair use, the Second Circuit minimized the parodic justification for granting fair use.[28] The disputed painting “Niagara,” which was commissioned by Deutsche Bank and the Guggenheim Museum, depicted four pairs of women’s feet superimposed upon images of “confections … with a grassy field and Niagara Falls in the background,” borrowing one set of legs from the published work of the plaintiff, a professional photographer.[29] Koons explained that he aimed to use popular images as “commentary on the social and aesthetic consequences of mass media.”[30] The Court, analyzing the transformative nature of Koons’s work, held that the collage painting passed the transformative test “almost perfectly” by changing the original copyrighted picture’s “colors, the background against which it is portrayed, the medium, the size of the objects pictured, [and] the objects’ details[.]”[31] More “crucially,” the painting had an “entirely different purpose and meaning—as part of a massive painting commissioned for exhibition in a German art-gallery space.”[32] While addressing the distinction between parody and satire as laid down by Campbell, the Second Circuit minimized the parodic justification for granting fair use to Koons, stating that “[t]he question is whether Koons had a genuine creative rationale for borrowing Blanch’s image, rather than using it merely ‘to get attention or to avoid the drudgery in working up something fresh.’ ”[33] Nevertheless, by relying upon the same wordings that the Campbell Court employed to describe satire (“to get attention or to avoid the drudgery in working up something fresh”), and emphasizing that such uses would not be fair, the Second Circuit maintained the parody/satire distinction.[34]

B. Rethinking “Parodies”

The Supreme Court’s working definition of parody corresponds roughly to its understanding within popular conception.[35] However, scholars have not agreed on what works fall into the parody classification due to its antiquity and the range of practices to which it alludes, let alone its national and cultural usages.[36] In fact, the first reference to “parodia,” found in Aristotle’s Poetics, defines it as a “narrative poem … treating a light, satirical, or mocking-heroic subject.”[37] Scholars have also noted how parody and satire often intersect.[38] These scholars warn against any attempt to dichotomize parody and satire. Moreover, while some conceptions of parody insist that the work critiques the original (“target parodies”), other conceptions permit it to critique something other than the work itself (“weapon parodies”).[39] These different conceptions cast the Court’s definition in further doubt. Although copyright law aims to advance the public good by encouraging creativity and disseminating knowledge, the Court’s narrow definition of parody and its determination that satire is not protected to the same degree as parody, have arguably served to expand owners’ rights to the detriment of creative citizens. For example, it would be fair to say that Colting’s use of Salinger’s novel to critique the protagonist’s worldview and Salinger’s control over his own work is not something that Salinger would likely have done, and Colting’s new work cannot be said to supersede any potential sequel written by Salinger. Why, then, should the District Court and the Second Circuit rely upon a narrow definition of parody to determine that such use was not fair? The questions concerning what uses are fair, and how the fair use doctrine should be applied, hinge upon the very natures of copyright and authorship. It is helpful, therefore, to begin by examining copyright from natural law perspectives.

II. Natural Law Theories: The Copyright-Liberty Conflict

Natural law theories, whether derived from observations of nature, divine inspiration, or human reason, hold that there are universal principles of justice with which all individuals have a moral responsibility to comply.[40] In the secular natural law tradition, laws derived their validity from their promotion of natural rights, inherent and inalienable, enjoyed by all citizens.[41] English philosopher John Locke, for instance, contended that individuals are born “free, equal, and independent” in a “state of nature,” and that the government must protect their natural rights to life, liberty, and possessions.[42] Not only did the idea of natural rights as natural law inspire the American and French revolutions,[43] but Lockean natural rights also informed the Framers’ understanding of intellectual property law.[44]

A. Locke, Property, and Copyright

Locke was the most famous proponent of the natural law theory of property. Assuming that people possess their bodies and have a natural right of property in them, Locke reasoned that they also possess the labor of their bodies.[45] Hence, people claim rightful ownership in the fruits of their labor, regardless of whether their creative activities lead to any economic gain.[46] However, there is one important condition for the right to ownership: the fruits of labor must be capable of permanent and individual possession, meaning that they are not temporary usages, or something shared by all people, like the air or sunlight.[47] Although Locke did not mention intellectual property, scholars have noted that the modern American copyright regime evolved from Lockean thinking.[48] This is most obvious in the copyright doctrine of “originality” and its “idea/expression” dichotomy. Just as Locke regarded property as the necessary moral consequence of one’s creative labor, copyright law, by granting protection to all “original works of authorship,” also protects works of the most accidental or humble origin, and works for which there are no economic incentives for their creation.[49] Just as the natural law tradition limits the right of ownership to fruits that can be permanently and individually possessed, the idea/expression dichotomy restricts the reach of copyright law to expressions that are sufficiently concrete, while specifically excluding more abstract and incorporeal ideas from the concept of property.[50] One good example confirming the deep influences by natural law theory upon the idea/expression dichotomy is the judicial precedent that Judge Learned Hand relied on in Nichols v. Universal Pictures Corp. Explaining that copyright protection cannot be extended to the characteristics of stock characters in a story, Judge Hand cited to Holmes v. Hurst, in which the Supreme Court stated: “[t]he right thus secured by the copyright act is not a right to the use of certain words, because they are the common property of the human race, and are as little susceptible of private appropriation as air or sunlight.”[51] Although the modern intellectual property doctrine has been utilitarian in focus, attempting to disavow its association with natural law justifications leads many to question the ability of courts to adjudicate copyright claims without consulting natural law principles.[52] Yet Locke’s natural law theory of property, logical as it might seem, raises doubts when applied to less tangible goods. Given Locke’s belief in the natural right to liberty, one cannot help asking whether such a liberty would entitle people to use others’ fruits of labor without their permission, so long as such uses will not likely harm the owners or the public. This question is significant because copyright, and intellectual property in general, can protect the ownership of goods that are less tangible and can be enjoyed simultaneously by an indefinite number of people. Indeed, intellectual property can easily come into conflict with basic notions of liberty because the right in less tangible goods can restrict a wider range of actions, such as creating copies of copyrighted works for further distribution among peers and friends, and even actions taking place in the privacy of one’s own home. Further, as these goods are often informative, restricting the right to enjoy them may simultaneously limit free speech. The potential conflict between intellectual property and basic liberty, therefore, is a reminder that authors’ rights are not absolute.

B. Rawls, Basic Liberty, and Creativity

American natural law theorist John Rawls’ idea of “justice as fairness” offers more insight into the above conflict. Here, Rawls imagines a hypothetical situation – the “original position”—in which free and rational people choose behind a “veil of ignorance,” without knowing their place in society or natural assets and abilities.[53] Their choices lead to two principles of justice: first, each person would have an equal right to basic liberty; second, although social and economic inequalities exist, the distribution of wealth and income must be to everyone’s advantage, and positions of authority and offices of command must be accessible to all.[54] Basic liberties enjoyed by all citizens include political liberty, freedom of speech and assembly, freedom of the person, along with the right to hold (private) property and freedom from arbitrary arrest and seizure.[55] While the second principle – the “difference principle” – does not ask society to even out resources among citizens, it does demand that those who have been socially or economically favored gain from their good fortune only on terms that improve the situations of the less favored.[56] The privileged, by improving the lives of the less privileged, thereby contribute to the public good. Would those in Rawls’ “original position” have chosen copyright as a basic right? On the one hand, those behind the “veil of ignorance” may imagine that benefits derived from creative endeavors would fall quite disproportionally, if not exclusively, upon those who work in creative professions. Thus, even though they will consider the right to create a basic liberty, they may be far less inclined to consider copyright that “basic” as a right. On the other hand, people in this hypothetical position may reason that even granting copyright to a limited group of creative professionals would stimulate creativity and contribute to a better society.[57] Moreover, because the “difference principle” does not require society to even out resources among privileged and less privileged citizens, the fact that copyright may initially benefit a small group of creative professionals would not make society unjust or unfair, so long as these professionals exercise their creativity to benefit citizens not as talented or privileged as they are. Rawls, nonetheless, would have cautioned against an infinite expansion of copyright. While emphasizing the right to hold (private) property, he does not specifically refer to the ownership of intangible goods and therefore does not specify any special conditions that should exist for such ownerships. Moreover, Rawls’ prioritization of personal freedom and free speech as basic liberties implies that such liberties would entitle citizens to appropriate intangible creations by others for speech purposes, so long as such uses do not harm the owners or society. In addition, because the “difference principle” requires that privileged citizens contribute to the greater good, creative professionals, while reaping benefits from their creative endeavors, should allow other people to appropriate their works for productive purposes. Endlessly expanding copyright to the detriment of the public, such as by raising the “fair use” standard and by creating narrow, unrealistic definitions of parody, must go against the Rawlsian principles and the public good.

III. Feminist Legal Theories: “Relational Author” and Transformative Works

Having explored copyright from natural law perspectives, this article now turns to feminist legal theories and their implications for fair use. The two focuses are seemingly unrelated, as copyright law governs the right to intangible properties, while feminist legal criticism addresses the gendered aspects of legal systems. Yet, copyright law’s theoretical framework is premised upon certain assumptions about the self. If some feminist legal theorists posit a different and more realistic conceptualization of the self, then this could inspire lawmakers to re-think what authorship is and accordingly reform the copyright regime.

A. Relational Feminism and Authorship

Copyright scholar Carys Craig offers interesting perspectives on the idea of authorship by bringing these two seemingly unrelated fields together. As Craig explains, at the core of copyright law are concepts of individualism, private rights, property, ownership, and exclusion.[58] Even though copyright attaches to the most mundane of works without any concern for their quality or creativity, the romantic idea of an individuated and independent author entitles “authors-as-originators” to rightful ownerships of their “original, stable, and propertizable” intellectual labors.[59] This idea of authorship has persisted over the years, despite Roland Barthes’ pronouncement of the “death of the author” in 1968, which demystified authorship by declaring all new expressions as reproductions of old ones.[60] Yet, the idea of the author as the sole origin of her labor is not merely outdated. It has perpetuated simplistic “dichotomies of creation/reproduction, author/user, laborer/free-rider,” glorifying authors while stigmatizing those who copy substantially from authors as “infringers.”[61] Craig thus criticizes the copyright regime for failing to recognize the communal and communicative nature of cultural expressions and to fulfill its original goal in fostering creativity among citizens.[62] Craig contends that copyright theory should get inspiration from feminist scholarship to re-imagine the author/self and the nature of copyright itself.[63] Drawing upon relational feminism, she fashions the concept of the “relational author,” who is never isolated but “always-already situated within, and constituted by” her communities.[64] Entering a cultural conversation that has been going on long before she appeared and will continue long after she leaves, this “relational author” necessarily works from within a network of social relations and discourses through the processes of “reinterpretation, recombination, and . . . transformation,” both to connect with others and to establish her own identity.[65] Because authorship is participatory and dialogic, the normative copyright regime should focus less on the rights of authors as owners, and more on ways to structure relations amongst authors and between authors and the public, so as to foster creativity among citizens.[66] In addition, because authors can in fact generate meaning only by using the texts, discourses, and experiences that they have encountered, copyright law should recognize the transformation of pre-existing texts as an important component of original authorship.[67] Craig borrows heavily from relational feminist Jennifer Nedelsky in her thesis concerning on the relational author. Fellow relational feminist Robin West adds further depth to Craig’s concepts. West’s argument differs slightly from Nedelsky’s analysis of autonomy-via-relationships in that it explores the fundamental “contradiction” in women’s subjective life.[68] Reconciling the views of cultural feminists and radical feminists, West points out that women value intimacy and nurturance, yet crave privacy and fear intrusion.[69] However, the legal system, which privileges autonomy, neglects women’s needs that arise out of their appreciation for nurturance.[70] Moreover, its male-centric version of autonomy fails to adequately protect women from intrusion.[71] West’s call for a reconstruction of the “masculine jurisprudence” can be analogized to a call for a reconstruction of the copyright regime:[72] A copyright regime that upholds a narrow vision of creativity resembles a “masculine” legal system that neglects traditionally feminine values in favor of an “autonomy” that fails to accommodate the full spectrum of experiences of all citizens. All the while, the “relational author,” like the silenced and objectified woman of West’s “masculine jurisprudence,” remains unrecognized and mistreated. Both the outdated copyright regime and the “masculine” legal system therefore require reform.

B. “Connection,” Other Feminists’ Support, and Implications

While Craig’s “relational author” theory is based upon relational feminism, some other schools of feminism arguably lend support to this idea. West argues that, because women’s “subjective, phenomenological and existential state” is grounded in their “potential for physical, material connection to human life,” this shared conception of women’s experience draws together feminists whose views otherwise differ markedly.[73] Radical feminists regard such a “connection” as intrusive, while cultural feminists wholeheartedly embrace it. One should note that liberal feminists,[74] unlike their radical counterparts, do value this “connection” and seek to accommodate it. As the rest of this subsection will explain, liberal feminists impliedly support the idea of the “relational author,” rather than unquestionably accepting the “autonomy” privileged by the legal system. In view of Craig’s emphasis on human relations and West’s idea of “connection”—which derives substantially from motherhood and childrearing—the likelihood that liberal feminism supports the idea of the “relational author” is apparent in Wendy W. Williams’ advocacy of an “equal treatment model” for pregnancy and work place discrimination issues.[75] People who support “special treatment” for women believe that an “equal treatment model” precludes recognition of pregnancy’s uniqueness. Williams, in contrast, contends that the “equal treatment” model redefines pregnancy as a basic need that the legal system must accommodate.[76] In other words, though liberal feminists do not embrace childbearing and rearing as cultural feminists do, they believe that the system should accommodate traditionally female duties by recasting them as responsibilities that penetrate the “core of the workplace” and thus, that should be shared by all citizens.[77] In both Williams’ view and the liberal feminist perspective, the legal system – and a normative copyright regime – should value both human connections and autonomy. By virtue of such, liberal feminism then supports Craig’s notion of the nature of authorship. In seeking to substitute the “relational author” for the isolated and individuated author, Craig seeks not to disparage the merit of authorship itself, but rather to more accurately describe the creative process that copyright law is meant to encourage.[78] She is correct that the copyright regime should embrace creative transformations of pre-existing texts as examples of original authorship.[79] Indeed, not only parody imitates older works, but satire, a great literary genre in the Anglo-American tradition, has often – or “always” – borrowed from art and from life.[80] Craig nonetheless does not explain further where the new boundary should lie between lawful and unlawful borrowings.

IV. Law and Economics: Flawed Models and New Directions

While seemingly bearing no relation to feminist legal theories, law and economics provide strong rationales for justifying a more inclusive fair use application, by urging courts to rethink current case law definitions of parody and satire, to tip the balance in favor of transformative works, and to better accommodate the “relational author” and transformative works produced by such authors. Copyright ownership is, among other things, an economic matter. When dealing with copyright disputes, judges have often relied upon their intuitive cost-benefit reasoning to determine whether granting an author’s fair use claim will foster more creativity. In contrast, the utility of two commonly adopted economic models, Pareto efficiency and wealth maximization (derived from the Kaldor-Hicks efficiency principle),[81] have often been doubted. This section argues that, while economic theories have flaws, what is known as intuitive reasoning also fails to adequately balance the rights of owners and the public. By identifying their common mistake in reinforcing the Supreme Court’s narrow parody definition, this section suggests how courts should re-interpret and re-apply copyright law to fully accommodate Craig’s “relational author” and his/her transformative works.

A. Intuitive Cost-Benefit Analysis vs Efficiency Principles

Copyright scholar Alfred Yen explains the process in which courts, generally lacking empirical evidence, engage in intuitive cost-benefit reasoning to apply the fair use doctrine. According to cost-benefit reasoning, in order to qualify as a parody, the new work must contain some criticism of the original work and must not function as a substitute for it.[82] The first requirement ensures that the fair use treatment reaps a positive benefit for the public, while the second requirement lessens the harm posed by the fair use doctrine to the financial incentives of production.[83] Convinced that granting the fair use claim will foster rather than hinder creativity, courts would then allow the parodist to freely borrow materials “reasonably necessary to conjure up the original.”[84] It is believed that such a cost-benefit analysis has yielded efficient results.[85] Yen contends that intuitive reasoning is not translatable into efficiency models, namely Pareto efficiency and Kaldo-Hicks efficiency, neither of which help to adjudicate fair use disputes.[86] A fundamental proposition of modern economics is that rational and self-interested individuals in a free market will pursue mutually beneficial transactions until they reach a Pareto efficient state of affairs, in which no individual will gain without harming others’ welfare.[87] Courts thus simply need to enforce the status quo in fair use claims to avoid presumptively undesirable interference with the market, and consider a fair use defense only when they identify imperfect market conditions.[88] Shifting to the Kaldor-Hicks efficiency principle, courts would declare that certain use is “fair” if the gains by society through fair use outweigh any losses imposed upon authors, so that “winners,” meaning parodists and whoever benefits from the parody, could fully compensate “losers,” or authors, in dollar terms.[89] However, Yen cites to empirical evidence to argue that authors very likely prefer good reputation and freedom from the emotional stress caused by parodies to any amount of monetary compensation.[90] Due to problems with compensation, parody as fair use cannot be justified by efficiency principles.[91]

B. Wealth Maximization and Its Flawed Assumptions

Interestingly, Richard Posner’s economic analysis of fair use, based upon his wealth-maximization model, differs from Yen’s by assuming that copyright owners would be willing to accept monetary compensations from parodists for all their losses, including harmed reputations and emotional damages. He contends that courts should consider parody as fair use because it must quote extensively from the original to be recognizable as such, and authors who fear ridicule of their works will not permit parodists to use them without paying high fees.[92] Should the law require prospective parodists to seek prior permission from copyright owners, the costs of transaction would reduce incentives to produce this valuable art form.[93] Likewise, forcing parodists to later compensate owners for losses incurred would discourage their original production.[94] By making a different assumption about owners’ willingness to accept monetary compensations, Posner thus apparently eliminates the biggest flaw in the economic model. Even if Posner’s assumption about compensation is correct, his economic analysis of fair use is nonetheless rendered inadequate by insistence upon a narrow definition of parody based on a flawed rationale. He carefully distinguishes between a parody that uses a copyrighted work as a “weapon” to criticize a third-party, and one that uses the copyrighted work itself as a “target.”[95] Posner assumes that owners would not mind licensing those works that borrow their originals as “weapons” aimed at something else, and so no parody defense should be invoked in the absence of a license.[96] Although owners tend to disapprove of parodies that target their works, the likelihood that these parodies provide useful commentaries justifies their coerced transfer when owners refuse to grant licenses.[97] Therefore, Posner agrees with the Supreme Court’s reasoning, that the fair use doctrine should provide a defense to infringement only if the new work targets the original and does not substitute it – two criteria that define a true parody.[98] Posner’s narrow definition of parody and his rationale behind it are based upon a flawed assumption about copyright owners that they would only prohibit derivative works that directly criticize their original works and therefore would find no reason to prohibit other works. Although they should have less reason to prohibit the public from borrowing their works as “weapons” against third-parties, they may refuse to grant licenses for other reasons. One reason would be the fear that their works will not be shielded from criticism. After all, artistic or literary works have multilayered meanings open to different interpretations, and works that intend to make broad criticisms of society – what the Supreme Court regarded as pure “satires” – may end up criticizing the originals, at least from readers’ perspectives. Take seventeenth-century English poet John Milton’s Paradise Lost as an example: while Paradise Lost is generally regarded as a social satire, some readers have interpreted it also as a parody of the Christian Bible due to its extensive appropriations of Biblical stories. That new works, despite targeting third-parties, may end up criticizing the originals puts Posner’s narrow definition of parody in doubt. One cannot help but ask: should courts consider as fair use works that inadvertently criticize the originals and works that do so in very subtle manners? If the answer is indeterminate, then parody needs to be redefined, and the clear boundary between parody and satire no longer holds. Further, owners who do agree to let borrowers use their works may charge exorbitant fees, which then discourage the appropriation of existing works for social criticism. Hence, it will not be in society’s interest to insist that writers obtain prior approval from copyright owners before appropriating their works for broad social criticisms.

C. Fair-Use Test and Its New Emphases

While popular economic models are flawed, intuitive cost-benefit analysis that courts have relied upon to resolve fair use claims has also fallen short of its purpose. Certainly, the threshold criterion that the new work must not supersede the original is reasonable, for it minimizes any harm posed by the fair use doctrine to the financial incentives for creative productions. Yet, the other threshold criterion that the new work must target the original was not necessary, because it has no bearing at all on the social benefits of the works. It is this flawed intuitive reasoning that led courts to dichotomize parody and satire. Intuitive cost-benefit reasoning and economic analysis thus converge at their common mistake of narrowly defining parody and of treating parody and satire as disparate literary forms. This convergence points to better ways to interpret copyright law that can fully accommodate Craig’s “relational author.” As Craig suggests, the copyright regime should recognize creative transformations of pre-existing texts as original works.[99] Courts, rather than trying to fit allegedly infringing works into categories like parody or “satire,” should focus more heavily on factor four of the fair-use test: whether the new works undermine current or potential markets for their copyrighted originals. Here, one should return to Salinger’s claims against Colting. Despite the holdings of both Courts (the District Court and the Second Circuit), Colting’s new work is arguably a parody according to the law, because it critiques Salinger’s original novel, his protagonist, and Salinger himself. Yet, a far more important question should have been the harm that Colting’s work would pose to Salinger and the copyright’s system of financial incentives, versus the potential benefits that it would offer the public. Nevertheless, both Courts should have easily found that Colting’s work did not supersede Salinger’s original and, moreover, would very unlikely undermine a potential market for a real sequel of Salinger’s work. Moreover, because its use of Salinger’s novel to critique the protagonist’s worldview and Salinger’s control over his own work is not something that Salinger would likely have done, it would very unlikely undermine a potential market for a real sequel by Salinger. The question of whether it is parody or satire thus becomes far less significant.

V. Legal Realism: Copyright Law in Action

The public, nonetheless, is stuck with the Supreme Court’s narrow definition of “parody,” at least for the present. Hence, this section adopts legal realist perspectives not only to shed light on how courts decided wrongly on fair use claims, but also to offer suggestions on how they may reach better, or more just, decisions on similar disputes. Contending that law is not a system of rules but rather a multidisciplinary project, legal realists are skeptical about the usefulness of formal rules, abstracted from the real world, in predicting what problem-solvers would do and prescribing what they should do.[100] When judicial decision-making is subject to an array of extralegal factors, is uncertainty all that remains? What could have motivated the Courts to rule in favor of Salinger instead of Colting? Imagine Beastie Boys’ lawsuit against GoldieBlox had gone forward – how would/should the Court rule?

A. Salinger’s Victory and Literary Experts’ Opinion

Legal realist Jerome Frank offers an inspiring perspective on judicial decision-making. Quoting Justice Holmes, Frank contends that law does not consist of rules and principles, but is better characterized as “specific decisions in concrete cases.”[101] To illuminate that there is not much correspondence between “artificial, rule-worded, published opinions” and “undisclosed,” “real” reasons for these opinions, he cites as an example, In re Hang Kie, which involved the first victory of a zoning ordinance in California.[102] Although, as Frank argues, racial prejudice against Chinese laundry owners was the true basis of the holding, the opinion states “in due form, rules which are syllogistically linked to facts so as seemingly to compel the decision.”[103] Later on, these same published reasons were used by other judges to sustain zoning ordinances that were not motivated by prejudice against Asians.[104] Frank concludes that, because judges are “humans” and have different abilities, temperaments, and even moral standards, the relation between the exactness of legal rules and its predictability of future decision can only remain uncertain.[105] The tendency for conventionally popular litigants to win in fair use disputes makes one wonder if Salinger’s victory was, in large part, due to his legendary status in the American literary scene, as compared to his unestablished and no-name opponent.[106] As explained already, despite the Supreme Court’s rather restrictive definition of parody, Colting’s critique of Salinger’s novel and the author himself – similar to how Randall’s The Wind Done Gone critiques Mitchell’s Gone with the Wind – may well have qualified as parody and fair use according to the law. Thus, the holding that it is a “satire,” not “parody,” compels a “rule-skeptic” perspective. The Court, in its “rule-worded” opinion, held that Colting’s new work, rather than critiquing the original, targeted Salinger’s alleged “iron-clad control” over his work and so was not a parody.[107] In similarly rule-laden language, the Court held that Colting’s work was not “transformative” enough to pass the fair use test, because the amount and substantiality of the original work borrowed was more than necessary to criticize Salinger and his character.[108] In doing so, the Court ignored the fact that Colting’s novel did not copy the original’s language beyond the use of certain catchphrase and that only four characters from the original reappeared in his new work, which has a host of other characters.[109] If Salinger’s fame really played a significant role in the outcome,[110] then the published opinions do not correspond to, but only camouflage the real reasons for his victory. Given law’s multidisciplinary nature, the District Court should have given more weight to relevant extralegal factors available. Because this case involves literature, for example, it could have weighed heavily the advice of literary experts Martha Woodmansee, an English Professor, and Robert Spoo, a lawyer with a PhD degree in English Literature. When asked to assist Colting’s attorneys in assessing the extent to which his work had made “creative and transformative” use of the original, both declared that it was a critical commentary on Salinger’s novel similar to conventional scholarly articles.[111] Similarly, the Second Circuit should have heeded these experts’ advice, considered the lack of evidence that the publication of Colting’s work – merely a critical commentary – would do any harm to Salinger, and reversed the injunction against its publication. While plaintiff’s fame and status might have been difficult to dismiss, openness to expert advice and awareness that any harm done to plaintiff would be minimal would have persuaded the Courts to hold for defendant.

B. Imagining Beastie Boys v. GoldieBlox

The literary experts’ advice, overlooked by the Salinger Courts, nevertheless points to a positive direction in judicial decision-making. The uncertainty within formal legal rules can become beneficial in cases where courts must interpret and apply flawed laws. On the one hand, what Frank calls “human” judges may not recognize a flawed law or a badly decided precedent. On the other hand, given law’s multidisciplinary nature, judges whom Frank describes as “strong” and “honest” may choose to interpret and apply bad laws, or flawed legal concepts, by drawing upon multidisciplinary resources and with creativity and flexibility so as to arrive at just holdings.[112] Hence, the fact that the law does not dictate judicial decision-making offers certain leeway for capable judges to steer towards just decisions as they turn “law-in-the-books” to “law-in-action.”[113] If the dispute between GoldieBlox and the Beastie Boys had gone forward, how would or should the Court rule? GoldieBlox’s commercial featured three little girls assembling a huge Rube Goldberg machine out of a disparate collection of toys and household items, while singing to the tune of the Beastie Boys’ 1987 track “Girls,” changing the lyrics to say, “Don’t underestimate girls.”[114] The company argued that this video is a parody aimed to “make fun of the Beastie Boys song, and to further the company’s goal to break down gender stereotypes and to encourage young girls to engage in activities that challenge their intellect, particularly in the fields of science, technology, engineering and math.”[115] Because the Supreme Court in Campbell held that a commercial parody may qualify as fair use, GoldieBlox’s appropriation of the Beastie Boys’ sexist song to convey a strong feminist message should indeed be “fair” according to the law.[116] Yet, a number of extralegal factors might well come into play. If popular litigants have a tendency to win in such disputes, the Beastie Boys would benefit from its contribution to American popular music, with seven platinum albums and three Grammy Awards and admission into the Rock and Roll Hall of Fame.[117] Moreover, the Beastie Boys explained in an open letter to GoldieBlox that they made a conscious decision to respect the wishes of Adam Yauch, their late member who died in 2012, not to permit their music and/or name to be used in commercials.[118] This letter, which had no bearing at all on whether the video’s use of the old song would pass the fair-use test would nonetheless cast GoldieBlox, a relatively new startup company, in a negative light. The “fame” factor aside, the Court might find that GoldieBlox’s strong commercial motivation in using the Beastie Boys’ track to promote its toy products outweighed its purported comment on the original. Yet, the Court could, and should, take a far broader view of parody and apply the fair use test by focusing on the economic harm that GoldieBlox would pose to the Beastie Boys and the financial incentives of the copyright regime. Certainly, GoldieBlox’s commercial aimed more at selling products rather than at presenting its parody as an artwork. However, the Supreme Court’s definition and examples of parody, though making no mention at all of parodies that are set in commercials, do not expressly exclude them from fair use.[119] Moreover, the Court should find that parodies are mostly commercial. With this conclusion, the Court should focus more heavily on the likelihood that GoldieBlox’s commercial would supersede the Beastie Boys’ work. Because the new song, with its girl-power lyrics, would very unlikely supersede the band’s original and harm their current or future market,[120] it should qualify as fair use. A “strong” and “honest” judge would find it unjust to deny GoldieBlox’s fair use claim and to hold for the Beastie Boys instead, because of their fame, their late member’s wish, or both.

Conclusion: Two Literary Concepts and One Logos

This article has argued that to balance copyright with basic liberty and to accommodate the “relational author,” courts should determine whether a work is fair use, not with reference to the dual parody/satire categories, but by looking at its possible harm to the copyright owner and society. This new approach, which subverts the Court’s ruling and blurs the parody/satire boundary, is reminiscent of the deconstructive strategies that many disparage as nihilist and useless. Thus, this article draws to a close by bringing in Jack Balkin’s inspiring view on deconstruction and tradition. Balkin contends that to respect tradition is to “betray,” “submerge,” or even “extinguish” other existing and competing traditions, and the enshrinement of one respectable tradition means the submergence of its “less respectable opposite.”[121] In the same vein, it would be fair to say that courts, by upholding one narrow, traditional conception of parody, betray other broader, equally valid definitions of parody. Further, they marginalize the long-standing tradition of satire by rendering it less respectable and excluding it from legal protection. If, as Balkin argues, to deconstruct is a form of logocentric practice with a “logos,” or rationale behind it,[122] then there is nothing nihilistic in deconstructing parody and to redeem satire from submersion – because doing so would facilitate better applications of the fair use doctrine, encourage more creativity, and enable just rulings by courts. Justice then becomes the “logos.”
* First-year PhD Student with the Faculty of Law, University of British Columbia; JD, Boston College; PhD, University of Cambridge. Other works have appeared in the Michigan Journal of Gender & Law, UCLA Entertainment Law Review, and Journal of Church and State, and others. The author would like to thank Professors Joost Blom, Graham Reynolds, and Galit Sarfaty of the Faculty of Law, University of British Columbia for their encouragement and comments on drafts of this article.
[1] See, e.g., Indira Karamcheti, Re: Wind, 18 Women’s Rev. Books 22 (2001) (reviewing Randall’s novel).
[2] See, e.g., id.
[3] SunTrust Bank v. Houghton Mifflin Co., 268 F.3d 1257, 1270, 1279–80 (11th Cir. 2001).
[4] E.g., David D. Kirkpatrick, Mitchell Estate Settles Gone With the Wind Suit, N.Y. Times, May 10, 2002, at C6, available at http://www.nytimes.com/2002/05/10/business/mitchell-estate-settles-gone-with-the-wind-suit.html? (describing details of the lawsuit and its eventual settlement).
[5] John David California, 60 Years Later: Coming Through the Rye (2009); see also Amy Lai, The Death of the Author: Reconceptualizing 60 Years Later: Coming through the Rye as Metafiction in Salinger v. Colting, 15 Intell. Prop. L. Bull. 19 (2010) (providing a detailed analysis of this lawsuit by taking a very different—though not contradictory—approach from the one in this article).
[6] E.g., Lai supra note 5, at 20 n.8 (giving as an example the fact that Salinger prohibited any attempt to make his novel into a movie).
[7] Salinger v. Colting, 641 F. Supp. 2d 250, 258-59, 261 (S.D.N.Y. 2009).
[8] Id. at 262.
[9] Salinger v. Colting, 607 F.3d 68, 83-84 (2d Cir. 2010).
[10] E.g., Andrew Albanese, J.D. Salinger Estate, Swedish Author Settle Copyright Suit, Publisher Wkly. (Jan. 11, 2011), http://www.publishersweekly.com/pw/by-topic/industrynews/publisher-news/article/45738-j-d-salinger-estate-swedish-author-settle-copyright-suit.html (describing the settlement terms ending the dispute).
[11] E.g., Jon Blistein, Beastie Boys Settle Lawsuit Over ‘Girls’ Toy Commercial, Rolling Stone (Mar. 18, 2014), http://www.rollingstone.com/music/news/beastie-boys-settle-lawsuit-over-girls-toy-commercial-20140318 (providing the background of the lawsuit and the settlement terms).
[12] E.g., id.
[13] E.g., id.
[14] U.S. Const. art. I, § 8, cl. 8.
[15] Copyright Act, 17. U.S.C. § 102(a) (2006).
[16] Id. § 106.
[17] Id. § 302(a).
[18] Id. § 107.
[19] Id.
[20] Id.
[21] Acuff-Rose Music, Inc. v. Campbell, 972 F.2d 1429, 1441 n.4 (6th Cir. 1992).
[22] Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994).
[23] Id. at 579.
[24] Id.
[25] Id. at 581.
[26] Id. at 580 n.14.
[27] Blanch v. Koons, 467 F.3d 244 (2d Cir. 2006).
[28] Id.
[29] Id. at 247.
[30] Id. at 253.
[31] Id.
[32] Id.
[33] Id. at 255 (citation omitted).
[34] See Campbell, 510 U.S. at 580–81.
[35] See, e.g., Graham Reynolds, Necessarily Critical? The Adoption of a Parody Defence to Copyright Infringement in Canada, 33 MANITOBA L. J. 243, 245 (2009).
[36] E.g., id. at 246.
[37] E.g., id.
[38] E.g., Paul Simpson, On the Discourse of Satire: Towards a Stylistic Model of Satirical Humour 219 (2003).
[39] E.g., Reynolds, supra note 35, at 245.
[40] Robert L Hayman, Jr., Nancy Levit & Richard Delgado, Jurisprudence Classical and Contemporary: From Natural Law to Postmodernism 1–2 (2d ed. 2002).
[41] Id. at 7.
[42] Id. at 5.
[43] Id. at 5–6.
[44] E.g., Benjamin G. Damstedt, Limiting Locke: A Natural Law Justification for the Fair Use Doctrine, 112 Yale L. J. 1179, 1179 (2003).
[45] John Locke, The Second Treatise of Civil Government § 27, in Two Treatises of Government (1698) (P. Laslett ed. 1970); e.g., Alfred C. Yen, Restoring the Natural Law: Copyright as Labor and Possession, 51 OHIO St. L. J. 517, 523 (1990).
[46] Id.
[47] Id.
[48] E.g., Yen, supra note 45, at 536–37.
[49] Id.
[50] Id. at 538–39.
[51] Id.; Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930), cert. denied, 292 U.S. 902 (1931), which cited to Holmes v. Hurst, 174 U.S. 82, 86 (1898).
[52] John Tehranian, for instance, goes so far as to argue that the fair use doctrine, far from protecting the public common, has played a key role in the triumph of a natural law vision of copyright that privileges the authors’ inherent property interests over the utilitarian goal of progress in the arts. John Tehranian, Et Tu, Fair Use? The Triumph of Natural Law Copyright, 38 U.C. Davis L. Rev. 465, 466 (2005).
[53] John Rawls, A Theory of Justice 118 (1999).
[54] Id. at 266.
[55] Id.
[56] Id.
[57] Robert P. Merges, Justifying Intellectual Property 110–12 (2012).
[58] Carys J. Craig, Reconstructing the Author-Self: Some Feminist Lessons for Copyright Law, 15 J. GENDER, SOC. POL’Y & L. 207, 208 (2007).
[59] Id. at 208, 213–15; see The Construction of Authorship: Textual Appropriation in Law and Literature (Martha Woodmansee & Peter Jaszi ed., 1994) (a collection of works by legal scholars and post structural literary critics calling into question the validity of the traditional romantic concept of authorship).
[60] Id. at 216–17.
[61] Id. at 233.
[62] Id. at 250.
[63] Id. at 252–253, 262–263.
[64] Craig, supra note 58, at 261–63.
[65] Id. at 263, 265.
[66] Id. at 263–64.
[67] Id. at 265–66.
[68] See Robin West, Jurisprudence and Gender, 55 U. Chi. L. Rev. 1, 15, 55 (1988).
[69] Id.
[70] Id. at 58–59.
[71] Id. at 58–61.
[72] See id. at 68–70.
[73] Id. at 14.
[74] Liberal feminists aim to reform the legal system to achieve greater gender equality, in contrast to radical feminists who, regarding the oppression women face as the most fundamental kind of social oppression, aim for more revolutionary changes to eliminate gender categories. See, e.g., West, supra note 68, at 13; see also Catharine A. Mackinnon, Toward a Feminist Theory of the State (1989).
[75] See Wendy Williams, Equality’s Riddle: Pregnancy and the Equal Treatment Special Treatment Debate, 13 N.Y.U. Rev. L. & Soc. Change 325, 326–28 (1985).
[76] Id. at 351–52.
[77] See id. at 353.
[78] Craig, supra note 58, at 208–09.
[79] See id. at 265–66.
[80] E.g., Charles A. Knight, The Literature of Satire 32 (2007).
[81] Hayman, Levit & Delgado, supra note 40, at 304. Richard Posner proposed the wealth-maximization model by adopting the Kaldor-Hicks efficiency criterion.
[82] Alfred C. Yen, When Authors Won’t Sell: Parody, Fair Use, and Efficiency in Copyright Law, 62 U. Colo. L. Rev. 79, 87 (1991).
[83] Id. at 88–89.
[84] Id. at 94.
[85] Id. at 84.
[86] Id. at 94-98, 103–06.
[87] Id. at 94–95; see also Guido Calabresi, The Pointlessness of Pareto: Carrying Coase Further, 100 Yale L.J. 1211, 1216 (1991) (arguing that strict Pareto “superior changes,” or those which make no one worse off and at least one person better off, are of no general use as a normative guide to social and legal policy: “For if strict or fanatical Pareto is the criterion, why wouldn’t any change that belonged in the set have already been made? . . . . [I]f Pareto optimality means a place where no improvement can be made without ex ante creating the possibility that there will be some losers, then we are always there.”).
[88] Yen, supra note 82, at 96–98.
[89] Id. at 103–04.
[90] Id. at 105.
[91] Id. at 105–06.
[92] Richard Posner, Intellectual Property: The Law and Economics Approach, 19 J. Econ. Persp. 57, 63 (2005).
[93] Id.
[94] Id.
[95] Richard Posner, When Is Parody Fair Use?, 21 J. Legal Stud. 67, 71 (1992).
[96] Id. at 72.
[97] Id. at 72–73.
[98] See Campbell, 510 U.S. 569, 580–81 (1994).
[99] Craig, supra note 58, at 263–65.
[100] Hayman, Levit & Delgado, supra note 40, at 157.
[101] Jerome Frank, Are Judges Human? Part One: The Effect on Legal Thinking of the Assumption that Judges Behave Like Human Beings, 80 U. Pa. L. Rev. 17, 18 (1931).
[102] Id. at 37.
[103] Id.
[104] Id.
[105] Id. at 42, 48.
[106] See Andrew Giden & Timothy Greene, Fair Use for the Rich and Fabulous? 80 U. Chi. L. Rev. Dialogue 88 (2013).
[107] See Salinger v. Colting, 641 F. Supp. 2d 250, 261 (S.D.N.Y. 2009).
[108] See id. at 261–62.
[109] See California, supra note 5 at 18, 89-97, 249-72; 125-33. See also Lai, supra note 4 at 25-30.
[110] See Giden & Greene, supra note 105 at 42, 48.
[111] Decl. of Martha Woodmansee at 3, Salinger, 641 F. Supp. 2d 250 (No. 09 Civ. 05095); Decl. of Robert Spoo at 5–7, Salinger, 641 F. Supp. 2d 250 (No. 09 Civ. 05095).
[112] See Frank, supra note 100, at 35, 42. .
[113] Originating from Roscoe Pound’s 1910 essay, the “law in the books” vs. “law in action” has been evoked many times. One example is Sanford Levinson & J. M. Balkin, Law, Music, and Other Performing Arts, 139 U. PA. L. REV. 1597 (1991).
[114] E.g., Eriq Gardner, Beastie Boys, ‘Girls’ Viral Video in Copyright Infringement Fight, Hollywood Rep. (Nov. 22, 2013, 2:22 P.M), http://www.hollywoodreporter.com/thr-esq/beastie-boys-girls-viral-video-659308.
[115] Id.
[116] See Campbell, 510 U.S. 569.
[117] Obituary: Adam ‘MCA’ Yauch, BBC News (May 4, 2012), http://www.bbc.com/news/world-us-canada-17959743.
[118] Goldie Blox, Our Letter to the Beastie Boys, Goldie’s Field Notes (Nov. 27, 2013), http://blog.goldieblox.com/2013/11/our-letter-to-the-beastie-boys/.
[119] See Campbell, 510 U.S. 569.
[120] Concerning whether the video’s use of the song would harm Beastie Boys’ future market for licensing the song for use in commercials, users who do not make fair use of the song, such as by parodying it in some ways, would still need to obtain licenses from the band.
[121] J.M. Balkin, Tradition, Betrayal, and the Politics of Deconstruction, 11 Cardozo L. Rev. 1613, 1620, 1623, 1630 (1990).
[122] Id. at 1627, 1636.