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26. Other Forms of IP
(1) Misappropriation, (2) Right of Publicity, (3) Design Protection
MML 1162-77, 1199-1230; California Civil Code § 3344
International News Service v Associated Press (Supreme Court 1918) P.1162
Facts: P (Associated Press) sued D (INS, a competing distributor of news to newspapers throughout the US) for pirating P’s news. D allegedly bribed employees of newspapers to supply P’s news to itself before publication, and selling them to D’s own clients on the West Coast DC granted preliminary injunction CA sustained injunction
Held: Affirmed. One who has gathered news or general information for the purpose of publication has an interest that is entitled to protection from interference.
Property in News? Does it survive first instance of publication?
News is not copyrightable because the writer did not create the news element + facts/ historical facts are not protected + not registered upon publication (previously required for copyright protection) + D paraphrased
Whether D’s behaviour constitutes unfair competition in trade?
Court looked to unfair competition in business for gathering and production of news look at rights of the parties as between themselves.
The news are the materials which both parties are attempting to make profit at the same time and in the same field must be regarded as quasi-property between the 2 parties, regardless of the right of either or of the public
News has an exchange value to one who can misappropriate it.
Labour, skill and money spent to gathered sold
Court want incentive to invest something of value to the public party who undertook such investment should be recognised by the law.
Here, acquiring and transmitting the news required elaborate organization and a great expense of money, skill, and effort.
As D sold P’s goods as its own D is guilty of unfair competition by misappropriation sustained preliminary injunction
Concurrence. (Holmes, J.): Misattribution theory rather than misappropriation
Within the limits recognized by the majority, D should be prohibited from publishing news obtained from P for hours after publication by P, unless D gives express credit to P it is a misrepresentation of attribution (look as if INS did this, but it was done by AP)
Dissent (Brandeis, J):
Court should decline to determine limitations that should be set upon any property right in news or of the circumstances under which news gathered by a private agency should be considered affected with a public interest (there is no traditional IP right in published news)
The fact that a product of the mind has cost its producer money and labor, and has a value for which others are willing to pay, is not sufficient to ensure to it this legal attribute of property. Though news has a value, it doesn’t mean it is a property
Freedom is the baseline, has to be some really good reason to justify changing that baseline this rule extends protection beyond Patent and Copyright law (which balances rights) difficult to justify
Creation/ recognition by courts of a new private right may work serious injury to the general public, unless the boundaries of the right are definitely established and wisely guarded may need to prescribe limitations and rules for its enjoyment + provide admin machinery for enforcing the rules
INS v AP is a Common law concept, only a cause of action under State Law/Court in a narrow form (not cause of action under Federal Law)
Federal Preemption of State Law P.1173
Federal Two-Part Preemption Test:
Law Title 17 s.301 Preemption with Respect to Other Laws
“whether state common law misappropriation doctrine survives the preemption of all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by s 106 in works of authorship that are fixed in a tangible medium of expression and come within the
(1) Subject of claim must be a work fixed in a tangible medium of expression and come within the subject matter or scope of copyright protection as described in s 102 and 103; and
(2) the right asserted under state law must be equivalent to the exclusive right contained in s 106
“stands as an obstacle to the accomplishments of the full purposes and objectives of Congress.” Hines v. Davidowitz, 312 U.S. 52, 67 (1941)
(2) Right of Publicity P.1199
A person’s identity attached to the good can be very valuable
This right affords individuals a property-type interest in the use of their names, likeness, photograph, portrait, voice, and other personal characteristics in connection with the marketing of products and services
Jurisdiction approach varies across States
16 States recognise common law rights of publicity, another 15 codified the right of publicity
Some States, like California, recognise both statutory and common law sources of protection
NY’s statutory privacy and publicity protection are in a single statute
Broadest states: California and Indiana, Minnesota
Narrow state: New York (a lot of Media, hates this)
Rationale for protecting right of publicity
Stems from right of privacy (but usually celebrities)
Economic value attached to identity: celebrities (with valuable identity) are exploiting their images to make money, need control over so identity not diluted
Moral rights: people have a say to what they associate themselves with (but: cultural icon which people may want to associate themselves with, e.g. Barbie should we allow this? Tension with First Amendments)
Scope of right
Tension with 1st amendment
Common Law in Cali: “identity”
California Civil Code
Name, voice, signature, photograph, or likeliness
Living persons s.3344.1(a)
Deceased person 3344.1(b)
§ 3344.1 Unauthorized Commercial Use of Name, Voice, Signature, Photograph or Likeness
(a)Any person who knowingly uses another's name, voice, signature, photograph, or likeness, in any manner, on or in products, merchandise, or goods, or for purposes of advertising or selling, or soliciting purchases of, products, merchandise, goods or services, without such person's prior consent, or, in the case of a minor, the prior consent of his parent or legal guardian, shall be liable for any damages sustained by the person or persons injured as a result thereof. In addition, in any action brought under this section, the person who violated the section shall be liable to the injured party or parties in an amount equal to the greater of seven hundred fifty dollars ($750) or the actual damages suffered by him or her as a result of the unauthorized use, and any profits from the unauthorized use that are attributable to the use and are not taken into account in computing the actual damages. In establishing such profits, the injured party or parties are required to present proof only of the gross revenue attributable to such use, and the person who violated this section is required to prove his or her deductible expenses. Punitive damages may also be awarded to the injured party or parties. The prevailing party in any action under this section shall also be entitled to attorney's fees and costs.
(b)As used in this section, “photograph” means any photograph or photographic reproduction, still or moving, or any videotape or live television transmission, of any person, such that the person is readily identifiable…
(c)[Presumption] Where a photograph or likeness of an employee of the person using the photograph or likeness appearing in the advertisement or other publication prepared by or in behalf of the user is only incidental, and not essential, to the purpose of the publication in which it appears, there shall arise a rebuttable presumption affecting the burden of producing evidence that the failure to obtain the consent of the employee was not a knowing use of the employee's photograph or likeness.
(d)[Exceptions] For purposes of this section, a use of a name, voice, signature, photograph, or likeness in connection with any news, public affairs, or sports broadcast or account, or any political campaign, shall not constitute a use for which consent is required under subdivision (a).
(e)The use of a name, voice, signature, photograph, or likeness in a commercial medium shall not constitute a use for which consent is required under subdivision (a) solely because the material containing such use is commercially sponsored or contains paid advertising. Rather it shall be a question of fact whether or not the use of the person's name, voice, signature, photograph, or likeness was so directly connected with the commercial sponsorship or with the paid advertising as to constitute a use for which consent is required under subdivision (a).
(f)Nothing in this section shall apply to the owners or employees of any medium used for advertising, including, but not limited to, newspapers, magazines, radio and television networks and stations, cable television systems, billboards, and transit ads, by whom any advertisement or solicitation in violation of this section is published or disseminated, unless it is established that such owners or employees had knowledge of the unauthorized use of the person's name, voice, signature, photograph, or likeness as prohibited by this section.
(g)The remedies provided for in this section are cumulative and shall be in addition to any others provided for by law.
Midler v Ford Motor Co (9th Cir. 1988)
Facts: D ad agency couldn’t get P to re-create her 1970 hit song for its TV commercial for D, so it hired a former P’s backup singer to impersonate her voice. Neither P’s name/ picture was used in the commercial. P sued for right of publicity in her voice. DC granted summary judgement for D Cir. Reversed
Held for P: In CA, intentional imitation of a celebrity’s distinctive and widely known voice for commercial purpose constitutes tortious misappropriation.
When a celebrity’s distinctive and widely known voice (which comprise of P’s identity) is intentionally imitated in order to sell a product, D have appropriated what is not theirs D have committed a tort in California
California recognizes an injury from the appropriation of the attributes of one’s identity, including the voice, which is one of the most palpable ways identity is manifested
A voice is distinctive and personal as a face a singer manifests herself in her song to impersonate her voice is to pirate her identity
Not every imitation of a voice to advertise merchandise is actionable, only when a distinctive voice of a professional singer is widely known and is deliberately imitated to sell a product, the seller have appropriated what is not theirs and have committed a tort in California
P has made a showing, sufficient to defeat summary judgment, that D appropriated her identity for its own profit in order to sell its product.
The value of this attribute is what the market would have paid for P to sing the commercial in person.
Unclear in this case, publicity seems to be protecting (not the privacy), but unjust enrichment, reduce public confusion, protect her incentive to commodify her own image, her voice is her property
Should P be able to bring a claim when D have right under copyright to do so (D licensed to record another version of the song?)
Irrelevant here as P is suing of the imitation of her voice.
Failed to satisfy the Copyright 301 preemption Test as voice is not copyrightable: mere imitation of a recorded performance would not constitute a copyright infringement even where one performer sets out to simulate another’s performance as exactly as possible
Effect on s 114(b), which expressly authorises cover recordings that “imitate or simulate those in the copyrighted sound recording”?
Note: Cali Civil Code 3344 was of no aid to P, as neither her name, voice nor likeness was used. “likeness” refers to visual image and not a vocal imitation P need to pursue under common law
E.g. Model couldn’t sue for photograph as she did not own the photograph sue under violation of publicity not preempted as P is suing under the “likeness of the photograph” (not protected under copyright), different from right of reproduction of photograph Toney v. L’Oreal USA, Inc., 406 F.3d 905 (7th Cir. 2005)
E.g. Using a look-a-like of a celebrity in commercial NY Court: public would think the advert is a photo of the actual celebrity Allen v National Video, Inc., 610 F.Supp. 612 (S.D.N.Y.1985)
White v Samsung Electronics America Inc. (9th Cir. 1993)
Facts: Samsung (D) ran an advert that clearly indicated that P of the TV game show had been the basis for the images P argued the advert had appropriated her right of publicity but P’s likeness was not used in the advert DC dismissed P appealed
Majority held for P: A person’s right of publicity may be usurped even if the offending use did not incorporate that person’s likeness Anything that provokes P’s identity clever adverts would be able to work around the law
Dissent. (Kozinski, J.)
By refusing to recognize a parody exception to the right of publicity, the majority directly contradicts the federal Copyright Act’s fair use provisions.
It is impossible to parody a movie or TV show without at the same time evoking the identities of the actors, who should not have a veto over fair use parodies of the shows in which they appear.
The majority’s holding also conflicts with the federal copyright system, under which the dormant Copyright Clause requires that state IP laws can stand only if they don’t prejudice the interest of other states.
However, the right of publicity is not limited geographically, so that one state’s right of publicity can restrict conduct everywhere, thereby interfering with other states’ legitimate interests.
Finally, the majority opinion conflicts with the First Amendment.
Not allowing any means of reminding people of someone is a speech restriction unparalleled in First Amendment law.
Reducing too much intellectual property to private property is harmful. Creativity is impossible without a rich public domain.
The majority opinion is a classic case of overprotection and erects a property right or remarkable and dangerous breadth: “Under the majority’s opinion, it’s now a tort for advertisers to remind the public of a celebrity.
Not to use a celebrity’s name, voice, signature or likeness; not to imply the celebrity endorses a product; but simply to evoke the celebrity’s image in the mind of the public
This Orwellian notion withdraws far more from the public domain than prudence and common sense allow.
It conflicts with the Copyright Act and the Copyright Clause.
It raises serious First Amendment problems.
Here, D didn’t use P’s name, likeness, voice or signature — no one seeing the ad would have thought it was supposed to be P under CA’s right of publicity precedent, DC was correct in ruling P’s rights were not violated
Reminding the public of someone’s copyrighted property does not, as the majority indicates, “eviscerate” the copyright holder’s rights.
“All creators draw in part on the work of those who came before, referring to it, building on it, poking fun at it; we call this creativity, not piracy.”
Instead of preventing the “evisceration” of P’s existing rights, the majority is instead creating a new and much broader property right.
Now, a celebrity has the additional, exclusive right to anything that reminds the viewer of her or him.
Here, the majority gave P an exclusive right in what she does for a living not appropriate balance of the public interest and rights of copyright holder, because it doesn’t contain essential limitations of IP law, doesn’t leave anything in the public domain, robs public of parodies of celebrities and undermines the essence of the copyright system.
IP law assures authors the right to their original expression, but encourages others to build freely on the ideas that underlie it
this result is neither unfair nor unfortunate: It is the means by which IP law advances the progress of art and science.
we give authors certain exclusive rights, but in exchange we get a richer public domain.
Preemption test: not trying to make a preemptions statement – not equivalent to copyright interest but shouldn’t conceive preemption so narrowly
(ii) Tension between First Amendment and artist’s interests
1st Amendment (freedom of speech: artistic expression, parody, news, politics, cultural language) vs. artists’ economic, integrity and privacy interests
Comedy III Productions Inc. v Gary Saderup, Inc. (Supreme Court 2001)
Facts: Without P’s consent, D sold lithographs and T-shirts bearing a likeness of the Three Stooges, reproduced from a charcoal drawing he had made The Three Stoges are deceased but Comedy III production has the rights to publicity P sued D under right of publicity statute D argues First amendment rights (free speech + expression)
Trial Court held in favor of P (awarded damages of all D’s profit from the item + attorney fees + permanent injunction from selling anything based on P’s property) CA affirmed but struck injunction as P failed to prove D violated the statute and injunction was overly broad.
Held: Consent of P (the right-of-publicity holder) required.
Strong tension between Court formulated a balancing test between First Amendment and right of publicity based on
Rule: If the work added significant creative elements so as to be transformed into something more than a mere celebrity likeness or imitation First Amendment prevail
If no such creative elements right of publicity prevail
Rationale: A product does not violate the right to publicity when it is primarily D’s own expression rather the celebrity's
Stems from the fair use principal in copyright law, but only look at transformativeness since other factors doesn’t make sense as dealing with fame of celebrity
Here, D’s work has no significant transformative or creative contribution right of publicity prevailed First Amendment
D created a literal, conventional depiction of The Three Stooges did not add significant creative elements so as to be transformed into something more than a mere celebrity likeness or imitation
The art's value was primarily from the fame of the actors, not from his transformative elements.
Legislation granted to the heirs and assigns of celebrities the property right to exploit the celebrities’ images and certain forms of expressive activity protected by the First amendment fall outside the boundaries of that right
Artistic expression trumps right of publicity ETW Corp. v. Jireh Pub., Inc., 332 F.3d 915 (6th Cir. 2003)
(iv) Character Protection
Wendt v. Host Intl., 125 F.3d 806 (9th Cir. 1997)
Arguably narrow (and temporary) right recognized by the Supreme Court with regard to hot news (INS)
Copyright and patent preemption has limited INS’s expansion. (NBA, Barclays) •
Right of publicity
California law protects “name, voice, signature, photograph, or likeness” as to living people and dead people
A person’s voice can be so distinctive and identifiable with a person that it certainly comprises part of their identity, particularly when that person is famous. (Midler)
Common law protects identity too.
Some courts have ruled that the right extends into the realm of anything that “evokes [a person’s] personality.” (White)
But having no parody/fair-use exception conflicts too heavily with First Amendment values (White Kozinski dissent, Comedy III)
Protects people from commercial use of their personal attributes without their consent
Uses for purposes of trade, advertising, and merchandise
But does not ordinarily include the use of a person’s identity in news reporting, commentary, entertainment, works of fiction or nonfiction, or in advertising that is incidental to such uses
(3) Design Protection
MML 457-72; 35 U.S.C. §§ 171, 173
Appearance is the crucial factor for consideration in design patent protection
May consist of surface ornamentation, configuration, or a combo of both
Design Patent Act allows applicant to obtain a design patent for “any new, original and ornamental design for an article of manufacture” and provides that mot provisions relating to patents for inventions also apply to design patents s 171
Design patents now receive a 15-year patent term (14 years for patents issued from design applications filed before May 13, 2015)
Requirements for patentability
Patentable if it has novelty, originality and nonobviousness
Design must be ornamental, and functional considerations must not dictate its form
PTO defines a design as “the visual characteristics or aspects displayed by the object. It is the appearance presented by the object which creates a visual impact upon the mind of the observer”
“Article of manufacture” widely defined
E.g. silverware, cement mixer, furniture, containers for liquid…
Anything made by the hands of man from raw materials whether literally by hand or by machinery or by art
Design patent may be obtained for only part of an article
Design patents are examined: adequate disclosure + definite claiming through drawings
Only one claim is permitted in design patent applications
PTO requires applicant to designate the particular article for which a design patent is sought, although the patent need not depict the article and can represent it generically
For designs of an ornament, impression, print or picture to be applied to an article of manufacture, an applicant may make a broad claim to use the ornament on more than one article
Drawings must contain a sufficient number of views to constitute a complete disclosure of the appearance of the design
If drawings are insufficient payment may be declared invalid under 112
Established if no prior art shows exactly the same design
If the ordinary observer, viewing the new design as a whole, would consider it to be distinct from (and not a modification of) an already existing design
If claimed design and alleged prior art design are substantially the same (resemblance is deceptive as to induce ordinary observer to purchase an article, supposing it to be the other) the prior art anticipates the claimed design (even if it is an article of different use)
Whether claimed design would have been obvious to a designer of ordinary skill who designs articles of the type involved
(1) single prior art reference that has design characteristics basically the same as the claimed design [Primary reference]
Evidence from one skilled in the art regarding prior art references
Whether and how those references would be combined to form a design that compares to the claimed design
(2) Other references may be used to modify it to create a design that has the same overall visual appearance as the claimed design
Pertinent references sought to be combined to show obviousness need not be analogous arts in the mechanical sense, but must be so related that the appearance of certain ornamental features in one would suggest the application of those features to another
Patent design must be ornamental, creating a more pleasing appearance
Must be the product of aesthetic skill and artistic conception
Articles outside the realm of traditional art have met this requirement
e.g. possessed more grace and pleasing appearance than prior art
requires the design is visible during the object’s normal and intended use
Protects only ornamental or non-functional...
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