The Strange and Wonderful World of Intellectual Property in the Robot Age
Where fetuses, Winnie the Pooh, purses, and fancy short pants all get shaken like a cocktail
I used to think the most fascinating thing about intellectual property law (and mind you, I grew up in the days of Napster1) was when The Ohio State University (OSU) somehow registered the trademark for the word “the.” And the university had to duke it out with designer Marc Jacobs who was also applying for the mark in several classes! OSU and the designer came to what is generally known as a “trademark coexistence agreement” where the university could use the mark for clothing and hats sold through traditional collegiate channels while Marc Jacobs can use it in clothing designs through non-collegiate channels. Even now, a search of TESS (the finicky United States Patent and Trademark Office (USPTO) database) shows a number of other registrations for “the” including an “intended for use” stylized monogram style mark for The Home Edit (of Tennessee, so I feel like the registration of the word has followed me from my former home state of OH to my adopted state of TN).
Why am I confused? Generally speaking, a trademark must be distinctive and used in commerce. According to the USPTO website, “Strong trademarks are suggestive, fanciful, or arbitrary. Weak trademarks are descriptive or generic…[and] generic trademarks are not federally registrable.” I do not know how the most used “article” on Earth (isn’t this the very meaning of generic?) somehow garnered favor as a distinctive mark.
But once a company uses and registers a potentially generic trademark, how do they enforce it? It’s common practice for companies to show the distinctiveness of an otherwise generic mark by utilizing it in every public forum imaginable, from a rallying cry at a football game (such as OSU’s efforts surrounding “the”), describing the criticality of the mark in interviews and other public forums that are not traditional marketing, bombarding social media with images of the mark in commerce, and even requiring employees to wear the brand mark as a “uniform” of sorts (including to court).
Even with these efforts, there are three basic elements that the plaintiff or complaining party must demonstrate to prove that another party or person has infringed on the mark. Specifically, the elements are: that (1) the plaintiff has a valid and legally protectable mark; (2) the plaintiff owns the mark; and (3) the defendant's use of the mark to identify goods or services causes a likelihood of confusion between trademarks that consumers would mistakenly believe they come from the same source.
OSU may trademark “the,” but “Adidas doesn’t own stripes”
Earlier this year, a Manhattan federal court decided that Adidas “doesn’t own stripes” and Thom Browne (designer to celebrities and professional athletes like LeBron James and Lionel Messi) was not found to infringe the legendary sportswear maker’s “three stripe” trademark, primarily because no one could possibly confuse sneakers sold at every major retailer from high end couture like Thom Browne, the latter of which displays an arguably similar “four stripe” mark. Thus, that one stripe might have saved Thom Browne $8+ million dollars and preserved his right to make all the $1,150 short pants his heart desires.
Non-fungible Token (NFT): New channels of distribution create a new IP “Wild, Wild, West”
Just last week, the same judge who heard the Adidas/Thom Browne dispute also ruled that a Non-fungible Token (NFT), explained here, infringed a company’s trademark.
You heard that right, two companies that both provide sportswear (arguably to different markets2) do not create a likelihood of confusion with common striped logos that look like every varsity jacket ever created. However, an artist - not in the fashion industry - allegedly using the iconic Birkin™ bag in a number of “absurdist” illustrations designed to provide social commentary on the world of luxury goods and the challenges of modern society, and only distributed electronically, does create confusion.
I think a summary of the case facts might help: the NFT illustrations in question included a number of “fur covered” Birkins designed to comment on animal cruelty, as well as a Roe v. Wade inspired NFT that featured an illustration of a clear Birkin bag holding a fetus. Hermės, creator of the Birkin bag, argued that (1) the NFTs created a likelihood of confusion for Birkin/Hermes customers (the final prong of trademark infringement and the only one of the three elements in dispute here), and (2) a separate claim that the NFT’s damaged the goodwill and thus diluted the “famous” Birkin brand (dilution requires that the new use blurs or tarnishes - in an unflattering or offensive way - the existing mark).
As you can imagine, the defendant artist argued for free speech protections under the First Amendment and the infringement defense, fair use, which “allows commentary or criticism that incidentally involves the use of a trademark so long as such use is for a purpose other than that normally made of a trademark.” Evidently, the First Amendment and the fair use defense does not extend to dilution, nor does it trump a jury’s highly unpredictable view of what might be confusing to the general public. And, the artist cited a letter from the Campbell’s Soup Company to Andy Warhol as evidence that use in artistic expression should be welcomed by companies and certainly does nothing to dilute the value of the iconic brands (the same argument Saturday Night Live uses successfully for parody). Remember another appearance by Mr. Warhol from PrepOverCoffee?
Ultimately, the artist was ordered to pay the profits garnered from his illustrations (and a bit for “cybersquatting”3 by registering the metabirkin.com domain) to the international design house.
Is this a beacon of things to come, including the Supreme Court’s decision in Andy Warhol Foundation for Visual Arts v. Goldsmith, covered here in I Could Never Take The Place of Your Man (Or at least a photo of him)? Is the difference that, in the Warhol case, the artist is alleged to be infringing a copyright (more on copyrights below) where the focus of infringement is on making an impermissible derivative work, whereas the purse NFTs are infringing a trademark where the focus is on confusion of customers and dilution of the value of the brand mark?
In my mind, where the NFT artist went wrong was not in the social commentary, which I think should have been protected by the court as free speech and fair use because the artwork falls squarely into the commentary defense and is used “for a purpose other than that normally made of [the] trademark.” Where the artist failed, in my opinion, was in how he distributed the art. He used the actual “Birkin” name in the domain and in marketing the NFT’s using that domain (when Birkin was also planning its own line of NFTs). Had he acknowledged that the brand was so iconic that it need not be named in the domain name or descriptions, I think the work would have been more powerful, and Hermės would not have been able to prove their dilution case.
Artificial intelligence (AI) – “a copy of a copy of a copy…”
Copyrights are based on the concept of “authorship” which means that it is an original and creative product of a human mind that is presented in a “tangible” medium. So what happens if you utilize artificial intelligence (AI) to generate a document, code, or something else?
My argument is this: content generated through AI means, even when guided by questions from the humans, does not meet the human-based definition of authorship.
But, what we know about the world is, where there is a will, there is certainly a way.
What we will likely see is people trying to disguise their use of AI created writing by choosing to register content for copyright protection. Then, unless challenged, that content might sit undisturbed, even though it fails to comply with the law.
For example, if I used ChatGPT to write an article, registered (wrongfully) that copyright, and then another Substack writer decided to plagiarize that same article in its entirety, what could I do? If I were to make a claim as the so-called “creator / author,” it would likely come out through discovery where I got the article to begin with, especially considering that ChatGPT has a list of every embarrassing and bizarre question I’ve asked in my account displayed on the welcome screen. Thus, I wouldn’t meet the first element required to prove infringement: owning a valid copyright.
Or, what if the content generated by ChatGPT or other AI infringes on someone else’s copyright? ChatGPT, for example, does not have a setting to “not use” the creative authorship of another. So, what if I generated that same article and published it, not knowing that it contained words that infringed on someone else’s copyright because I did not find the source material myself. The person who my article infringed would likely have a claim against me that would probably succeed on its face because they (1) own a valid copyright, and (2) I willfully copied it without permission (even though the willful act was leaving my fate up to a robot that may or may not want to take over the world and “spread propaganda and misinformation”).
And what about artwork generated by AI? For example, I recently used this Denzel Washington example in a class discussion analyzing appropriation of likeness or image, but it would be just as useful related to copyright. Here, an individual was using AI to generate paintings that he then sold on the internet. What if those AI paintings work like the Andy Warhol foundation approach and just slap a coat of paint over someone else’s copyrighted photo or illustration? Would it be an impermissible derivative work because it relied heavily on a copyrighted image or multiple protected images? Of course, it falls to the artists to bring those claims, which requires that they know the work exists and have the financial means to pursue legal action. Isn’t it hard enough to work as an artist without having to carry the burden of all the robot antics too?
We aren’t in the Hundred Acre Wood™ anymore
And, in what wonderful world can ChatGPT, furry Birkins, sneaker stripes, Denzel Washington, and Winnie the Pooh all converge? The world of intellectual property, of course!
In 2022, some characters and elements of the beloved children’s story, Winnie the Pooh™, entered the public domain after the expiration of the copyright. Horror movie creators jumped on the chance to use the characters in a slasher film, a la Friday the 13th and Halloween, called Winnie the Pooh: Blood and Honey. But you won’t see Tigger on any murderous rampage yet, as his copyright doesn’t “bounce into the public domain until 2024.”
However, where this gets interesting is again the intersection between copyright infringement and trademark infringement. Disney owns the trademarks to many of the characters, and even with the filmmaker’s extensive efforts to design a script using only public domain elements, I suspect he has to be nervous that the Birkin NFT judge may be called upon once again to decide whether there is confusion between the Disney trademarks and the movie’s characters and settings, and whether the murdering versions of classic characters tarnish such iconic marks as Pooh and Piglet. I struggle to see the difference between this and the NFT case, and as such, predict a victory lap for our red shirted, honey-loving friend, Pooh, especially in the capable hands of the notoriously litigious Disney.
When it comes to its intellectual property, we will have to wait and see how it all shakes out. What we do know is that it’s a “Dog Eat Dog”4 world, or maybe a mouse eat dog world.
And, for those of you who participated in last week’s content survey, thank you! 67% of you said you’d like more about “cases and controversies,” so here you go. And there is more to come.
I really appreciate your suggestions and comments, so keep them coming!
Which was the first time “rural” kids with no local record store could download only the “songs” they wanted, or access a wide variety of albums other than through the Columbia House Record and Tape Club in the 1980s.
I must agree with this argument, as I own a pair of Adidas shoes and a fine looking track suit (complete with three stripes), but I do not own one of these.
The practice of registering names, especially well-known company or brand names, as internet domains, in the hope of reselling them at a profit.
If my friends from Rabbit Dog are still reading, congratulations on your recent and upcoming shows! I would like to again suggest that this classic song fits your style perfectly and would make a great “cover” to add to your next set….but make sure the venue has the proper license for the performance of covers!