Who Can Use the Names of Defunct Sports Teams: Residual Goodwill and Trademark Abandonment

Trademarks are, of course, source identifiers. They are intended to be used to identify a particular source of a particular good or service. But what happens if the source no longer exists, yet consumers are still aware of the original source? Who, if anyone, can adopt that mark? As with so much in the law, it turns out the answer is simple: it depends.

A. Court Decisions Regarding Former Team Names

1. Brooklyn Dodgers (MLB)

The Brooklyn Dodgers were one of the original baseball teams in Major League Baseball (“MLB”), playing in New York from 1883 until 1958—when they moved to Los Angeles and became the Los Angeles Dodgers. In 1993, the LA Dodgers and MLB sued a New York sports bar—operating as The Brooklyn Dodger Sports Bar and Restaurant since 1987—for trademark infringement. See Major League Baseball Properties, Inc. v. Sed Non Olet Denarisu, Ltd., 817 F.Supp. 1103, 1131 (S.D.N.Y. 1993), vacated pursuant to settlement, 859 F.Supp. 80 (S.D.N.Y. 1994). 

After a bench trial, the court found no likelihood of confusion but also found in favor of the defendant’s affirmative defense of abandonment. Noting that a finding of abandonment requires evidence of both (a) non-use and (b) lack of intent to resume use, the court determined the LA Dodgers had neither (a) continued their use following their move from New York to LA nor (b) established any intent to resume commercial use of the mark. The court rejected any suggestion that “residual goodwill” existed in the Brooklyn Dodger’s name because, according to the court, such residual goodwill only exists where “the proponent of a mark stops using it but demonstrates an intent to keep the mark alive for use in resumed business.” Here, the Dodgers had “unequivocally” declared their intent to discontinue use.

Presumably in light of the potential financial impact such an abandonment finding would have on the LA Dodgers and MLB’s licensing activities (which the court observed had grown from $200 million in 1986 to over $2 billion in 1991), the parties quickly settled, and the order was vacated pursuant to that settlement agreement.

2. Baltimore Colts (NFL)

Following the trend of controversial moves, the Baltimore Colts were a National Football League (“NFL”) team from 1953 until their sudden and secretive move to Indianapolis in 1983. Years later, the Indianapolis Colts sued a Canadian Football League team looking to play in Baltimore as the “Baltimore CFL Colts.”  See Indianapolis Colts, Inc. v. Metropolitan Baltimore Football Club Ltd. P’ship, 34 F.3d 410 (7th Cir. 1994). The Seventh Circuit Court of Appeals observed that the district court held the old “Baltimore Colts” name had been abandoned (but neither agreed nor disagreed) and remarked that “when a mark is abandoned, it returns to the public domain and is appropriable anew—in principle.” Indianapolis Colts, 34 F.3d at 412 (emphasis added). This “in principle” was a major caveat, as the district court had found a high likelihood of confusion during the preliminary injunction briefing due to the striking similarity between the names “Baltimore Colts” and “Indianapolis Colts.” The Seventh Circuit affirmed this finding, in part, because of the confusion resulting “by virtue of the history of the Indianapolis Colts franchise. Id. at 413 (emphasis added). In affirming, the Seventh Circuit expressly rejected the Brooklyn Dodgers decisions discussed above, noting how that dispute was between a restaurant and a baseball team so there was no real risk of confusion.

B. Potential Impact on Extant Registrations

In Brooklyn Dodgers, the court found the team had abandoned its former name because there was insufficient evidence of any intent to resume using the old name in commerce. It also rejected any impact of lingering goodwill (i.e., consumer awareness and association) in the original Brooklyn Dodgers moniker. In Baltimore Colts, the appellate court agreed there was a likelihood of confusion, despite the apparent abandonment of the former name, specifically because of the “history” of the senior user’s franchise. The fact that Brooklyn dealt with a restaurateur versus an MLB team, whereas Baltimore dealt with an NFL team versus a CFL team, seems to be a major distinction.

So what, then, should become of existing registrations for other defunct teams?

1. Montreal Expos (MLB)

The Montreal Expos were a professional baseball team from 1969 until 2004. The Expos logo was registered as Reg. No. 1,873,010 in 1995 for use in connection with a variety of classes, including keychains, mugs, clothing, toys, and “entertainment services in the nature of baseball exhibitions.” In 2004, the team moved to Washington, D.C., and became the Washington Nationals. The registration, however, remains valid and subsisting—owned, interestingly, by Major League Baseball. In both 2005 and 2015, one and eleven years, respectively, after the team moved, specimens were filed for Section 8 and 9 renewals showing a keychain. These were accepted as evidence of use for all classes.

2. Seattle Supersonics (NBA)

The Seattle Supersonics were a National Basketball Association (“NBA”) team from 1967 until 2008. The Supersonics logo was registered at TM Reg. No. 1,831,387 in 1994 for use in connection with both clothing goods and “entertainment services; namely, basketball competitions.” In 2008, the team moved to Oklahoma City and became the Oklahoma City Thunder. Like the Expos, the Supersonics registration remains valid and subsisting. In 2013, five years after the team relocated, a specimen including a screenshot of a www.NBA.com webpage displaying a video of a 1979 Supersonics game was submitted and accepted for all classes as evidence of the use of the mark in connection with clothing and basketball games.

* * *

At least as of their 2015 renewal, the Expos had not played a game as the Expos in over a decade. Yet, the U.S. Patent and Trademark Office (“PTO”) was not keen to analyze the specimen too closely—for it certainly does not demonstrate use in connection with playing actual baseball games. Similarly, as of the 2013 renewal, the Supersonics had not played a game as the Supersonics in five years, but, again, the PTO did not examine the specimen and accepted it for all classes. 

The matter of registration stands apart from the question of whether use by a third-party junior user would be tolerated. Residual goodwill—continued consumer association with either mark after abandonment—is likely to be more significant in a potential infringement scenario, especially concerning the likelihood of confusion analysis, akin to the Baltimore Colts case.

Steamboat Willie Cruises into the Public Domain

The Copyright Act ensures that its protections extend to creative works even after the death of the author.  But no copyright can last forever, and, as of January 1, 2024, an iconic American cartoon has now entered the public domain: “Steamboat Willie.”[i]  For those unfamiliar with Disney lore, the cartoon is synonymous with the character we know today as Mickey Mouse. The character was first introduced to audiences (along with girlfriend Minnie) in the 1928 black-and-white animated short film “Steamboat Willie,” directed by Walt Disney and Ub Iwerks.[ii]

Like his fictional comrades Winnie the Pooh, Peter Pan, and Sherlock Holmes, who also recently entered the public domain with much fanfare, Mickey Mouse has gone public. This opens the door to new stories, artwork, cartoons, and more. A horror film featuring Steamboat Willie is already in the works,[iv] and other (hopefully less sinister) adaptations are sure to follow. Of course, any new works using the character would be subject to other intellectual property considerations and a number of caveats.

The character’s entry into the public domain comes 95 years after the release of “Steamboat Willie.” This event is of particular significance because of the 1998 Copyright Term Extension Act. Support for the Act from the Walt Disney Company led to the Act being frequently cited as the “Mickey Mouse Protection Act.” Among the Act’s extensions is a provision extending copyright protections to up to 95 years (including renewals) for works created and published before January 1, 1978. Thus, Mickey Mouse served as a quasi-symbol for copyright protection extensions for over two decades. Now, almost a century after his debut, time is up, and the public can use the “Steamboat Willie” version of Mickey.

Members of the public should take care, however, as “Steamboat Willie’s” entry into the public domain would not automatically grant unbridled rights to utilize the Mickey Mouse character. For one, trademark laws would still be in play, preventing the use of a trademark in a manner likely to cause consumer confusion as to source or sponsorship. In short, the question would be whether consumers are confused as to whether unrelated works or products featuring the Mickey Mouse character are affiliated with Disney or made, endorsed, or licensed by Disney. Any potential users would need to tread carefully as Disney still retains a number of trademarks in and related to “Mickey Mouse,” including the name and various logo depictions of the mouse.

As another matter, only the 1928 “Steamboat Willie” versions of Mickey and Minnie have entered the public domain. Copyrighted elements of other works, such as later movies, cartoons, and illustrations featuring Mickey and Minnie, would not have yet entered the public domain. More recent, and, particularly, colorized, versions of Mickey and Minnie would still retain any applicable copyright protections. For instance, Mickey did not obtain his signature white gloves until 1929, and over time his facial features, body parts, shoes, and wardrobe have been changed.[v]  The extent to which artists can use Mickey Mouse also presents a new host of legal questions.  Copyright law requires a work to possess at least some minimal degree of creativity. Future analysis is sure to focus on the later character elements that are copyrightable (i.e., sufficiently “creative”) and could not be used as compared to pre-existing material from the 1928 versions. The extent that Mickey’s ears, voice, buttoned shorts, or Minnie’s polka dots may be protected under later copyrights, for example, may be parsed out in the years to come as new works are created.  

Nonetheless, “Steamboat Willie” is only one of many works that will continue to become available to the public and is certain to pave the way for new creative expression.

*Originally published in the NYSBA Entertainment, Arts, and Sports Law Journal, Volume 35, Issue 1. Reprinted with permission from the New York State Bar Association © 2024 (www.nysba.org).

About the Author: Alison Pringle is Senior Counsel in the Gordon Rees Scully Mansukhani Intellectual Property practice group. Her practice focuses on intellectual property and commercial litigation, with an emphasis on trademark, copyright, contract, technology, and privacy disputes. She also counsels clients on transactional intellectual property issues. 

If you have any questions on this recent development or other intellectual property matters, please contact the author or another member of GRSM’s Intellectual Property practice group.

[i] This applies with respect to the United States as copyright laws vary by international jurisdiction.

[ii] Technically, the “Mickey Mouse” and “Minnie” characters first appeared in the animated short film Plane Crazy in 1928, but the film was not widely distributed.

[iii] Walt Disney and Ub Iwerks, “File:Steamboat-willie.jpg,” Wikipedia.org, last modified October 4, 2021, https://en.wikipedia.org/wiki/File:Steamboat-willie.jpg

[iv] Gene Maddaus, “‘Steamboat Willie’ Horror Film Announced as Mickey Mouse Enters Public Domain,” Variety.com, last modified January 2, 2024, https://variety.com/2024/film/news/steamboat-willie-horror-film-mickey-mouse-public-domain-copyright-1235849861/

[v] Nicole Hellmann, “The Evolution of Mickey Mouse,” The Walt Disney Family Museum Blog, last modified February 3, 2020, https://www.waltdisney.org/blog/evolution-mickey-mouse

AI Generated Content and Copyright Ownership Rights in the U.S.

The emergence of accessible generative AI products has resurfaced the question of the degree of human creativity that is required for copyright protection. While the Copyright Office has a study underway, both the recent guidance from the Copyright Office and a recent case holding suggest that human creativity continues to be an integral requirement in securing copyright protection. Though the Copyright Office conducts a case-by-case analysis with a thorough review of the facts, without a human providing some modicum of creativity in the traditional elements of authorship, a work is not likely to be granted protection for the foreseeable future.

I. Background

A. Copyright Authorship Requires Originality

According to the Copyright Office, copyright is a “type of intellectual property that protects original works of authorship as soon as an author fixes the work in a tangible form of expression.” Notably, the protection of a copyright applies to a broad range of works, from traditional books to works of art such as photographs, poems, paintings, musical compositions, and the like.

Originality is actually a constitutional requirement because the power to enact copyright laws stems from the Copyright Clause (Article I, § 8, cl. 8). To qualify as an original work, the work must be created by a human author and include some degree of creativity. In other words, in order to secure copyright protection, the work at issue cannot simply be copied. There is no statutory definition of original works of authorship, but it is well-settled by the Supreme Court that the degree of creativity required for copyright protection includes some modicum of creativity. The Trademark Cases, 100 U.S. 82 (1879). The question of human authorship has been addressed with respect to celestial beings, monkeys, and gardens. In each case, courts declined to extend copyright protection because human authorship was lacking.

B. The Recent Popularization of Generative AI

Generative AI has become recently popularized due to the introduction of highly accessible tools such as ChatGPT and Midjourney. However, generative AI has a long history with roots tracing as far back as the 1950’s. While generative AI was in full motion back in the 90s, the computer power required was a barrier to providing mainstream solutions.

The continued strides in technological developments paved the way for the modern generative AI solutions that have flooded the market in the past couple of years. As a result, there are amply more works created using AI now than ever before. Users supply prompts, whether simple or complex, to the AI tool and receive an incredibly complex output, often differentiated from the baseline training data used to train the AI. Through these AI tools, users are generating writings, images, and the like. Thus, while generative AI is not new, the influx of created works leveraging AI through newly accessible mainstream tools is resurfacing the question of the degree of human creativity required for copyright protection.

II. Recent Developments

Human authorship was recently addressed in Thaler v. Perlmutter. At issue was whether the claimant’s copyright application was properly denied because the visual art in question was generated by AI.  Thaler v. Perlmutter, No. CV 22-1564 (BAH), 2023 WL 5333236, at *3 (D.D.C. Aug. 18, 2023). In holding that the application was properly denied, the court reiterated the long-standing notion that human authorship is a bedrock requirement for copyright protection. Id. Similarly, the Copyright Office canceled the copyright registration on a graphic novel that was developed by entering prompts into Midjourney because human authorship was lacking.

Equally important, in the first quarter of 2023, the U.S. Copyright Office provided guidance in response to the popularization of newly accessible AI tools. The Copyright Office reiterated authorship requires human input and that merely mechanical or machine-produced works devoid of human creativity are un-copyrightable material. Applicants must disclose the use of AI and provide a brief explanation of the humans’ involvement. The Copyright Office guidance indicates AI-generated content may be copyright protected if the work is in some way original and unique. However, if the traditional elements of authorship were generated by a machine, then the work lacks human authorship, and the Copyright Office will not register it. The Copyright Office conducts a case-by-case, specific inquiry, in which examiners are looking for works that demonstrate an original mental conception by a human being.

Lawmakers have called for the creation of a national commission to address whether changes are needed to existing law to address the evolving landscape of AI. With this Congressional focus on the implications of AI and innovation, it is likely an area of policy that will continue to develop. While the U.S. Patent and Trademark Office is requesting comments regarding AI ownership, the U.S. Copyright Office has launched an initiative to examine policies affecting AI. The Copyright Office has issued a Notice of Inquiry in the Federal Register, undertaking a study of policy issues raised by generative AI and existing copyright law. Furthermore, the Copyright Office has recently extended the comment period, allowing initial written comments from the public through October 30, 2023.

III. Conclusion

It’s important to remember that any proposed changes to existing copyright law will still be subject to the constitutional principle of originality under the Copyright Clause as a constitutional amendment is unlikely. Even with prospective changes on the horizon, originality will likely remain a threshold requirement in seeking copyright protection. Copyright protection is unlikely to be extended to a work generated by simple AI prompts. Accordingly, keeping humans in the driver’s seat on the traditional elements of authorship is likely the best course of action for copyright protection for the foreseeable future.

About the Author: Sarah Covington is an Associate in the Firm’s Intellectual Property practice group. She holds an MBA and previously served as Vice President of Revenue Cycle and as COO for a healthcare technology start-up focused on creating AI solutions. Ms. Covington has a particular interest in computer software coding, having led three teams to win at MIT hack-a-thons with AI-based health solutions. She has received awards for emerging AI solutions at the Health Data Palooza and National Policy Conference. In 2022, Ms. Covington received the Rising Star Award from the South Dakota Bar Association. 

Claim Construction Timing


A recent order, issued in the middle of a patent trial in Impinj, Inc. v. NXP USA, Inc., No. 4:19-cv-03161 (N.D. Cal.), serves as a reminder that a Markman hearing is not a litigant’s last opportunity to convince a court to construe patent claim terms.

Claim construction, the review and interpretation of a patent claim’s meaning, usually takes place fairly early in a patent case. Plaintiffs and defendants propose both terms to be construed and meanings that they would have the court ascribe to those terms. There is usually extensive briefing of the issues and a hearing held, a so-called Markman hearing, named after the case in which the Supreme Court held that the meaning of patent terms is for the judge, and not the jury, to decide: “the construction of a patent, including terms of art within its claim, is exclusively within the province of the court.”

The importance of claim construction in a patent case cannot be overstated. Cases are frequently won or lost depending on whether the court agrees with the meaning proposed by the patentee or that of the accused infringer. There may be no more important issues in any given patent case. Defendants typically want terms to be construed narrowly. Patentees, on the other hand, usually counter that a claim term should be construed more broadly—even that it should be afforded its plain or ordinary meaning, without specifying what that plain meaning is. In O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351 (Fed. Cir. 2008), the Federal Circuit made clear that not only is the scope of claims within the province of the court, but the court also has an affirmative duty to resolve disputes over claim scope when they arise.

In Impinj, Inc. v. NXP, the issue of the meaning of the patent term “stage” arose during the trial of a patent directed to radio frequency identification tracking technology. Impinj had not proposed that “stage” be construed during the claim construction process. However, days into trial, Impinj requested that the term be construed because “NXP now argues, for the first time, that if its engineers happened to use the word ‘stage’ to refer to some collection of components in their schematics, and that collection is different from what the claims require a ‘stage’ to be, then NXP has avoided infringement.” Both parties argued that “stage” had its plain and ordinary meaning, but each had a different view of the dictates of plain meaning. Plaintiff Impinj proposed broad, in the court’s word, “flexible” construction: “a section or portion of the circuit.” Unsurprisingly, defendant NPX offered a more narrow construction, proposing that a “stage” is the “smallest unit of circuit components that” performs a particular function. While the court did not agree with the plaintiff’s very broad construction, it “agree[d] that ‘boxes’ on a schematic are not dispositive” and that there was “insufficient evidence to support the inclusion of the word ‘smallest.’”

Four days after “stage” was construed more broadly than the defendant had requested, the jury found the patent in question valid and infringed.

The case illustrates only one facet of the potential flexibility of courts regarding this central issue of the meaning of patent claims. Litigants should not assume that the traditional path is the only one. Do you think the construction of a single term or phrase could either dictate or obviate infringement and facilitate summary judgment? Consider asking the court to decide that single issue at the earliest stage of the case. Does your jurisdiction have patent local rules that limit the number of terms you can offer for construction to a number that is insufficient? Consider asking the court to expand those limits—but be prepared to articulate well the basis for your request and make clear that the parties dispute the meaning. And if it becomes clear—even on the eve of or during trial—that construction of an additional term is warranted, O2 Micro dictates that the court resolve the dispute. “When the parties raise an actual dispute regarding the proper scope of these claims, the court, not the jury, must resolve that dispute. . . . When the parties present a fundamental dispute regarding the scope of a claim term, it is the court’s duty to resolve it.” O2 Micro, 521 F.3d at 1360, 1362.

When it comes to the potentially case-dispositive issue of the meaning of patent terms, it may not be too early, too many, or too late.

About the Author: Lara Garner is a Partner in Gordon Rees Scully Mansukhani’s Intellectual Property practice group. Her practice focuses on intellectual property litigation, counseling for patents, copyrights, trademarks, and trade secrets, and a broad range of other matters, including contract, technology, and privacy issues. 

From Marvin Gaye to Led Zeppelin to Katy Perry – An Update on Recent Copyright Infringement Music Cases

General Copyright Basics

There are five exclusive rights in copyright that are usually at issue in a copyright infringement action: reproduction, preparing derivative works, distribution, public performance, and public display. In general, if a plaintiff can show that the defendant had access to the plaintiff’s work and that there is a substantial similarity between the infringed and infringing works, a presumption of copying arises, shifting the burden to the defendant to rebut the presumption or to show that the alleged infringing work was independently created.

Similar to other areas of copyright litigation, the Second Circuit and the Ninth Circuit dominate both music copyright litigation and issues involving “substantial similarity,” more than doubling the next closest circuit in the number of opinions and quadrupling most others.

The Second Circuit still applies the “ordinary observer” test, but there is also usually an analysis of the technical similarities which could involve expert testimony, even at the motion to dismiss stage. This usually involves an analysis of: (1) whether the protected elements are sufficiently “original”; (2) whether there is existing prior art that shows a lack of originality; and (3) a comparison between the songs at issue.

Generally, the first prong of substantial similarity is an analysis of actual copying or “factual copying.” This is usually proven through circumstantial evidence such as access or the similarities between the works. The second prong generally involves a determination of whether the defendant has taken so much protectable material—sometimes called “actionable copying” or “improper appropriation”—as to constitute copyright infringement.

The “Blurred Lines” Case

One of the most controversial copyright cases in recent years was the “Blurred Lines” case involving members of Marvin Gaye’s family (who had inherited the copyrights in the musical compositions of “Got to Give It Up”).  After hearing the hit song “Blurred Lines” written and recorded by Pharrell Williams and Robin Thicke, the Gaye family made an infringement demand, but negotiations failed. Williams and Thicke filed a declaratory judgment action in California federal court seeking a declaration of “non-infringement.” The Gayes counterclaimed, alleging copyright infringement, and added Clifford Harris, Jr., the rapper known as T.I., as a third-party defendant, along with Interscope Records, who owned the sound recording.

After a jury trial, the jury found that Williams and Thicke had infringed the copyright, but Harris and Interscope were not liable. The jury awarded $7.3 million in actual damages and the infringer’s profits. Post-trial, the District Court overturned the jury’s verdict in favor of Harris and Interscope as inconsistent with the finding of liability and apportioned costs between the parties.

Ultimately, the District Court awarded the Gayes $3,188,527.50 in actual damages, $1,768,191.88 in infringer’s profits against Thicke, $347,630.96 in infringer’s profits against Williams (for a total of approximately $5.3 million), and a continuing 50% of future songwriting and publishing revenues. The District Court denied an award of attorneys’ fees. The Gayes appealed the order on attorneys’ fees.

The Thicke/Williams parties appealed the denial of their motions for summary judgment and a new trial, the damages award, and the overturning of the verdict in favor of Harris. Importantly, the Thicke/Williams parties failed to seek a judgment as a matter of law after the evidence was entered in the case and before jury deliberations.[1] The Ninth Circuit ultimately ruled they waived their right to challenge those issues on appeal.[2] Thicke and Williams focused their appeal by arguing that the District Court had erred in its application of the extrinsic test for substantial similarity.[3]

The extrinsic test is a two-part test used in the Ninth Circuit that focuses on the objective similarities of the works’ ideas and protectable expressions. This is usually done through expert testimony to identify whether certain portions of the music are unique enough to be entitled to protection. The second part of the test considers “intrinsic” similarity in which the factfinder undertakes a purely subjective evaluation of the total content and feel of the two works. This can also be part of the ordinary observer test in which analysis by an average lay witness would compare the two works.

Interestingly, the District Court had only allowed in evidence the deposit copy or sheet music for “Got to Give it Up.”[4]  However, the Gaye family was able to get in bits and pieces of the sound recording through expert testimony. The Ninth Circuit rejected this appeal on procedural grounds finding that a party may not appeal an order denying summary judgment after a full trial on the merits unless the issue is one of pure law.[5] On appeal, the Ninth Circuit refused to disturb or second guess the jury’s fact-finding. The Ninth Circuit found there were no errors with respect to allowing expert testimony and that the question of weighing expert evidence was left to the jury.[6] The Ninth Circuit did find an error with the reversal of the jury’s finding of no liability against Harris and Interscope. The appeal featured 212 amicus songwriters and many others on both sides.

In a strong dissent, U.S. Circuit Judge Jacqueline Nguyen argued that the majority had allowed the Gayes “to accomplish what no one has before: copyright a musical style.”[7] According to the dissent, the two songs were not objectively similar, and the similarities presented by the Gayes involved unprotectable elements, so the lack of substantial similarity meant that judgment should have been given as a matter of law. The dissent contended that, by refusing to engage in a de novo comparison of the works, the majority had established “a dangerous precedent that strikes a devastating blow to future musicians and composers everywhere.”[8]

Critics of the “Blurred Lines” case say that the verdict has implications that will thwart creativity. These critics believe that the two songs did not share the same pitches, or rhythms, and were not set to the same chords. They did not share the same melody or melodic phrases. The two songs didn’t even have a sequence of two chords played in the same order and did not share the same song structure or any lyrics.

The infringement was based on the copying of a “feel” or “groove” of the two works and amounts to infringement of an idea, that all musicians are “influenced” by other musicians, which is not copyrightable. They note there are a limited number of notes and chords available, so there are automatically going to be similarities in numerous songs, but that doesn’t make it an infringement.

Skidmore v. Led Zeppelin

Randy Wolfe (a.k.a. Randy California) was a guitarist for the rock band Spirit in the 1960s. Wolfe wrote the instrumental song “Taurus” on the group’s first album in 1967. Taurus is a two-and-a-half-minute instrumental guitar track on Spirit’s first album. A copyright was registered in the unpublished composition with a one-page deposit of the sheet music with the U.S. Copyright Office.

In 2014 Michael Skidmore, on behalf of the estate of Wolfe/California, claimed Led Zeppelin copied “Taurus” in “Stairway to Heaven.” In 2016, Zeppelin prevailed in district court, with the jury finding the two songs were not substantially similar. Skidmore appealed, claiming the court limited the jury’s determination by not allowing them to hear the two songs and only allowing the sheet music into evidence. The court had granted Led Zeppelin’s Motion to Exclude the sound recording for Taurus and all expert testimony regarding the sound recording.

In 2018, the Ninth Circuit ruled that the trial court should have allowed the jury to hear the songs and ordered a new appeal en banc. The en banc decision was issued in March 2020.

            A. The Inverse Ratio Rule

The inverse ratio rule was an important issue in the Skidmore v. Led Zeppelin case. The rule allowed courts to impose a lower showing of substantial similarity when a high degree of access was shown. In practice, the Ninth Circuit has wavered between using the rule as binding precedent and questioning the rule. Most other Circuits have long rejected the rule.

In Skidmore, the court stated the rule “defies logic, and creates uncertainty for the courts and the parties”[9] and further stated, “Although we are cautious in overruling precedent – as we should be – the constellation of problems and inconsistencies in the application of the inverse ratio rule prompts us to abrogate the rule. Access does not obviate the requirement that the plaintiff must demonstrate that the defendant actually copied the work.” [10] The court further went on to note that the current digital connectivity in the world dilutes the concept of access. However, it should be noted that the access seemed proven in the Skidmore case. Led Zeppelin performed at the same location as Spirit four times between 1968 and 1970 and covered Spirit’s song “Fresh Garbage.”[11]

            B. The Deposit Copy Defines the Scope of Copyright Protection

The Spirit song was copyrighted in 1967, prior to the copyright reform of the Copyright Act of 1976. Therefore, the Copyright Act of 1909 applied rather than the Copyright Act of 1976. Copyright law applied prior to the reform was under the Copyright Act of 1909, which extended only to the sheet music and not sound recordings. Sound recordings were first protected under US copyright law in 1972, for recordings made after Feb. 15, 1972.

The 1976 Copyright Act significantly altered the copyright standards, stating that public distribution of a sound recording qualifies as a published musical composition. In other words, instead of sheet music, composers might submit a recording as the deposit copy for a musical work. The problem, in this case, was that this legislation did not apply to compositions published before 1978, i.e., the effective date of the Act.

The language of the 1909 Act makes it clear that copyright protection for an unpublished work was obtained “by the deposit, with claim of copyright, of one complete copy of such work” for musical compositions. The court concluded that the dual requirement of applicants having to submit a deposit copy of their work and the deposit having to be a “complete copy” underscored the importance of the deposit itself, thus establishing the deposit as the metes and bounds of the copyright. This was the basis for concluding it was proper to not allow the songs to be played for the jury. However, it’s worth noting that the fact that deposit copies were limited to sheet music at the time, significantly limits the scope of protection.

Sheet music for compositions tends to be scant in detail for various reasons including that some composers don’t read sheet music or the high cost of transcription. This results in deposit copies for compositions, which may include only lyrics and essential elements of the song while leaving out musical components, or as the court referred to them, “further embellishments” that make for a musically richer sound as you would hear in a sound recording.

According to the Ninth Circuit, since the deposit copy “defines the four corners of the ‘Taurus’ copyright,” any of the further embellishments one would hear in a recording are immaterial and the district court properly denied Skidmore’s request to play the sound recording of “Taurus” in front of the jury or admit it into evidence.[12] 

Ed Sheeran  – “Let’s Get It On” Case

On July 11, 2017, the family of one of the writers of “Let’s Get It On,” filed a lawsuit in the Southern District of New York against Ed Sheeran, Atlantic Records, Sony/ATV Music Publishing, and Warner Music Group. The Skidmore case has been cited in numerous cases everywhere, including in Griffin v. Sheeran, a case that was pending in New York revolving around a claim that Ed Sheeran’s song “Thinking Out Loud” infringes upon Marvin Gaye and Ed Townsend’s song “Let’s Get It On.”

This case started trial in April 2023. The district court (citing Skidmore) held that the scope of protection for “Let’s Get it On” is “limited by the deposit copy” and “does not include other embellishments [on Gaye’s sound recording] … because they have not undergone the copyright process.” In its Order denying Defendants’ Motion for Summary Judgment, the Court declined to issue any opinion about whether the Second Circuit would concur with the Ninth Circuit’s Skidmore decision in finding that only the deposit copy or sheet music defines the scope of copyright protection. Plaintiffs argued that the composition that is embodied in the sound recording, which is a mechanical reproduction, is also protectable.

In the Sheeran case, the Defendants argued that a simple chord progression and a harmonic rhythm are not subject to copyright protection. The Defendants cited numerous instances of “prior art” which contained similar chord progressions (13 other similar songs that existed prior to “Let’s Get It On”). They claimed the chord progression is taught in elementary guitar teaching method books. They further claimed the Plaintiff could not claim monopoly over the use of such common musical elements.

In its order denying summary judgment, the court cited the Skidmore case.[13] The court held that analyzing just the sheet music or analyzing the actual sound recordings was not important for purposes of summary judgment, since under either view, there were enough similarities to survive summary judgment. The court stated “A jury might side with either view” and the question of infringement should be determined by trial rather than summarily.[14]

However, when addressing the other issue raised by Skidmore, the court sided with the Defendants. Defendants argued that two of the key elements (the drum pattern and bass guitar line) do not appear in the deposit copy. Plaintiffs countered this argument by stating that the recorded version is the true embodiment of the song. However, Judge Stanton sided with Defendants on the issue of whether the sound recordings can come into evidence during the trial, ruling that it could not. Judge Stanton stated the deposit copy was the sole definition of “Let’s Get It On.” He further stated the famous sound recording (by Marvin Gaye) may confuse the jury into thinking it represents what is protected by copyright. Judge Stanton concluded that the sound recording had additional elements that did not appear in the deposit copy.  Ultimately, after jury trial, the jury found in favor of Defendants, finding there was no copyright infringement, Sheeran did not copy the compositional elements or melody from “Let’s Get It On,” and that Sheeran independently created his song.

Katy Perry Dark Horse Copyright Case

The case was originally filed in 2014 by a Christian hip-hop artist known as Flame (Marcus Gray). The complaint alleged Katy Perry’s song copied a repeating instrumental figure, called an “ostinato.” The “Dark Horse” ostinato consists of a pattern of notes, represented as 3-3-3-3-2-2-1-5, while the “Joyful Noise” ostinato consists of two slightly different patterns, represented as 3-3-3-3-2-2-2-1 and 3-3-3-3-2-2-2-6. Both ostinatos also have a uniform rhythm, with each note of equal duration in time. (In case it is of interest to music lovers, the Ninth Circuit’s opinion has a more detailed than usual breakdown of musical compositions). A jury found the defendants liable and awarded $2.8 million in damages.

However, after the trial, U.S. District Judge Christina A. Snyder vacated the judgment and reasoned that the elements comprising the ostinatos are not, either individually or as a combination, copyrightable original expressions. Plaintiffs appealed. A three-judge panel from the Ninth Circuit affirmed the district court’s decision. The Ninth Circuit’s opinion focused on whether the “Joyful Noise” ostinato qualifies as an “original expression” – a statutory requirement for protection under U.S. Copyright law.[15]

Citing longstanding principles of copyright law, the Ninth Circuit noted there is a “famously low bar for originality.”[16] However, even this low threshold for copyrightability still “does require at least a modicum of creativity.”[17] The appellate court further stated that copyright protection does not extend to “common or trite musical elements, or commonplace elements that are firmly rooted in the genre’s tradition.”[18] Ultimately, the Ninth Circuit concluded that the two songs’ ostinatos, even if similar, result only from the use of commonplace, unoriginal principals, and thus could not form the basis of a copyright infringement claim. The Ninth Circuit held that the “Joyful Noise” ostinato was a “conventional arrangement of musical building blocks,” amounting to nothing more than an unoriginal “two-note snippet of a descending minor scale.”[19] And, given the limited number of expressive choices available to an eight-note sequence, the Ninth Circuit found that allowing such a copyright would amount to an “improper monopoly over two-note pitch sequences.”[20]

About the Author: Joshua D. Wilson is a Partner in the Firm’s Intellectual Property practice group, with a particular emphasis on the sports and entertainment industries. He has represented athletes, artists, songwriters, managers, agents, actors, bloggers, podcasters, influencers, producers, publishers, and record labels in both transactional and litigation matters.  He has been involved in some of the most high-profile and complex entertainment and intellectual property matters in the country with a focus on contract disputes, royalty disputes, management agreements, publishing issues, and copyright and trademark infringement matters, through trial and arbitration. 

[1] See Williams v. Gaye, 895 F.3d 1106, 1131 (9th Cir. 2018). 

[2] Id.

[3] Id. at 1121-22.

[4] Id. at 1116.

[5] Id. at 1122.

[6] Id. at 1126.

[7] Id. at 1138-1152. 

[8] Id. at 1138.

[9] Skidmore v. Led Zeppelin, 952 F.3d 1051, 1066 (9th Cir. 2020).

[10] Id. at 1069.

[11] Id. at 1057. 

[12] Id. at 1063-64. 

[13] Griffin v. Sheeran, 351 F.Supp.3d 492, 496 (S.D.N.Y. 2019).

[14] Id. at 500-01.

[15] Gray v. Perry, 2020 WL 1275221, at *5-7 (C.D. Cal. March 16, 2020).

[16] Gray v. Hudson, 28 F.4th 87, 97 (9th Cir. 2022).

[17] Id

[18] Id.

[19] Id. at 101-02.

[20] Id. at 101.

NFTs and Trademark Law – Protecting IP Rights in the Digital Space

For much of human history, we have defined ourselves by the things we wear. From trying to win the latest pair of Air Jordan shoes on the “drop” to high-end designer brands, what we choose to wear is often a form of self-expression. As blockchain technology and NFTs have become more widespread, fashion brands have sought to take advantage of this emerging technology by “beginning to create and offer digital replicas of their real-life products to put in digital fashion shows or otherwise use in the metaverse.”[1] As with many advancements with the internet, the emergence of NFTs has led to instances of cybersquatting and potential infringement of trademarks, but until February 8, 2023, no U.S. court had made any ruling to answer this question.

Overview of the Dispute

In December 2021, Mason Rothschild created a series of non-fungible tokens (NFTs) titled “MetaBirkins.”[2] These NFTs depicted an image of a faux-fur-covered bag that resembles the world famous Hermès Birkin bag. Rothschild described his NFTs as “a tribute to Hermès’ most famous handbag, the Birkin, one of the of most exclusive, well-made luxury accessories.”[3] Rothschild told Yahoo Finance “for me, there’s nothing more iconic than the Hermès Birkin bag… I wanted to see as an experiment if I could create the same kind of illusion that it has in real life as a digital commodity.”[4] Rothschild created and sold 100 NFTs, some selling for tens of thousands of dollars.[5]

On January 14, 2022, Hermès International filed a complaint in the U.S. District Court for the Southern District of New York against Rothschild for trademark infringement, trademark dilution, and cybersquatting.[6] In March 2022, Rothschild moved to dismiss Hermès’ amended complaint for failure to state a claim upon which relief can be granted under the Federal Rules of Civil Procedure.[7]

In determining whether the NFTs infringed on the Hermès trademarks, the court agreed with Rothschild that the test outlined in Rogers v. Grimaldi[8], under which the First Amendment protects artistically expressive use of a trademark (and is thus not infringement) should be applied as opposed to the Gruner + Jahr[9] test for which Hermès advocated.[10] Rothschild argued that his NFTs satisfied both prongs of the two part Rogers test because: the use of the trademark (1) had some artistic relevance and (2) was not explicitly misleading in serving as a source identifier of the NFTs.[11]

On this initial motion to dismiss based on the artistic relevance prong of the Rogers test, the court found that Hermès’ complaint contained “sufficient allegations that Rothschild entirely intended to associate the ‘MetaBirkins’ mark with the popularity and goodwill of Hermès’ Birkin mark, rather than intending an artistic association.”[12] Regarding the explicit misleadingness prong, the court found that, similar to the artistic association prong, Hermès’ complaint contained sufficient allegations of explicit misleadingness for the court to deny the motion to dismiss the trademark infringement claims against Rothschild.[13] As for the other claims of trademark dilution and cybersquatting, the court held that they rose and fell with Rothschild’s First Amendment defense of the infringement claims and so denied the motion to dismiss on similar grounds.[14]

Both Hermès and Rothschild filed cross-motions for summary judgment, which were denied on December 30, 2022.[15] In ruling on these cross-motions, the court again used the Rogers test to evaluate the claims of trademark infringement.[16] In explaining the Rogers test, the court said that, consistent with holdings from other district courts, “as long as the plaintiff’s trademark is used to further plausibly expressive purposes, and not to mislead consumers about the origin of a product or suggest that the plaintiff endorsed or is affiliated with it, the First Amendment protects that use.” Id. The court reasoned that Rothschild’s MetaBirkins could be seen as constituting a form of artistic expression, and for that reason, the Rogers test was proper.[17]

The court first analyzed the case using the “artistic relevance” factor from the Rogers test. This is a bar easily met, as “it is met ‘unless the [use of the mark] has no artistic relevance to the underlying work whatsoever.”[18] However, when a trademark is used purely to exploit its public value, the relevance prong will not be met.[19] Because it was not clear as a matter of law that the mark was used for exploitative purposes, the court denied both parties’ summary judgment motions on this issue.[20]      

Next, the court analyzed the case under the “explicitly misleading” prong.[21] A work will be explicitly misleading when it leads the public to believe that the work was the creation or authorized work of the trademark holder.[22] Courts use the factors for likelihood of confusion under Polaroid[23]  to make the determination as to whether the work was explicitly misleading.[24] The court again denied the cross-motions for summary judgment on this issue, concluding that the Polaroid factors are fact intensive, and there were genuine issues of material fact.[25]

After both parties’ motions for summary judgment were denied, the case went to trial before a jury. On February 8, 2023, a nine-person jury returned the first-ever verdict in a trial involving the intersection of NFTs and trademark rights.[26] The jury found in favor of Hermès, finding Rothschild liable for trademark infringement, trademark dilution, and cybersquatting.[27] The jury also determined that the First Amendment did not protect the MetaBirkin NFTs.[28]

On March 13, 2023, Rothschild filed a motion for judgment as a matter of law or new trial.[29] In this motion, Rothschild claims that the district court judge gave the jury improper instructions, which resulted in the findings against him.[30] It is expected that, should this motion be denied, Rothschild will appeal his case.


As with many landmark cases, the question for most people is how this decision affects them. While a victory for Hermès, many questions remain unanswered when it comes to intellectual property rights in the virtual space. One takeaway is that the same intellectual property rules that govern goods in the physical world exist in the metaverse.[31] And many companies, particularly the more well-known brands, have applied for or obtained trademark registrations of their names in classes of goods that include those in the virtual world, like NFTs.[32]

[1] Hermès Int’l v. Rotchschild, 603 F.Supp.3d 98, 101 (S.D.N.Y. 2022).

[2] Id.

[3] Id.

[4] Id.

[5] Tori Lathan, Yahoo Finance, Hermès Won Its Case Against an Artist Who Sold NFTs of Its Iconic Birkin Bags, https: //www.yahoo.com/now/herm-won-case-against-artist-233000462.html (Last visited Mar. 23, 2023).

[6] Hermès Int’l v. Rotchschild, 603 F.Supp.3d 98, 101 (2023).

[7] Id. at 100.

[8] 875 F.2d 994 (2d Cir. 1989).

[9] 991 F.2d 1072 (2d Cir. 1993).

[10] 603 F.Supp.3d at 103.

[11] Id.

[12] Id. at 105.

[13] Id. at 106.

[14] Id.

[15] Hermes Int’l v. Rothschild, No. 22-CV-384 (JSR), 2023 WL 1458126, at *1 (S.D.N.Y. Feb 2, 2023).

[16] Id. at *4.

[17] Id.

[18] Id. at *7.

[19] Id. at *8.

[20] Id.

[21] Id.

[22] Id. at *9.

[23] Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961).

[24] Id.

[25] Id.

[26] Isaiah Poritz, Bloomberg Law,  Hermès Defeats MetaBirkins in the First NFT Trademark Trial,  https://news.bloomberglaw.com/ip-law/hermes-gets-win-over-metabirkins-in-first-nft-trademark-trial (last visited Mar. 30, 2023).

[27] Id.

[28] Id.

[29] Isaiah Portiz, Bloomberg Law, MetaBirkin NFT Artist Seeks New Judgment After Loss to Hermès, https://news.bloomberglaw.com/ip-law/metabirkin-nft-artist-seeks-new-judgment-after-loss-to-hermes?context=search&index=1 (Last visited Mar. 23, 2023).

[30] Id.

[31] Andrew Comer, Bloomberg Law, How the Hermès NFT Case Will Impact Expression and Enterprise, https:// news.bloomberglaw.com/us-law-week/how-the-hermes-nft-case-will-impact-expression-and-enterprise?context=search&index=8 (Last visited Mar. 23, 2023).

[32] Id.

AI Art and Copyright in the Unites States

While AI art has been around for a few years, late 2022 saw incredible advances, especially after Stability AI released its open source Stable Diffusion tool. Now, consumers have access to a variety of AI art tools, not only tools based on Stable Diffusion, but also with proprietary models from OpenAI (Dall-E 2) and Midjourney (Midjourney, which combines its own proprietary model enhanced with Stable Diffusion). 

The widespread adoption of these cutting-edge technological tools comes with many legal questions.

Can You Copyright AI Art?

In the United States, one must own a copyright registration before initiating a lawsuit.[1] But can you obtain a registration on AI art?

The U.S. Copyright Office will not issue a registration if the only listed author is non-human “machine.” See Refusal to Register A Recent Entrance to Paradise.[2]

But what if the listed author is not a machine?

The Copyright Office issued an opinion on February 21, 2023 as to the registrability of a comic book called Zarya of the Dawn, which used AI art generated by Midjourney. The text and the selection and arrangement of images and text of the comic book was subject to copyright protection by the author, Kristina Kashtanova, but the images generated by Midjourney were not.

While the author entered text prompts to generate the images, because Midjourney “generate[d] images in a…way” that was unpredictable to the author,” the author lacked sufficient control over generated images to be treated as the ‘master mind’ behind them.” The Copyright Office was not persuaded that Midjourney was a tool akin to Photoshop,[3] because when artists use tools like Photoshop, “they select what visual material to modify, choose which tools to use and what changes to make, and take specific steps to control the final image such that it amounts to the artist’s ‘own original mental conception, to which [they] gave visible form.’” The fact that the author expended significant time and effort working with Midjourney—for example, regenerating images over and over to find a suitable result to use—such work did not involve the “minimum creative spark” necessary for authorship. The author’s edits to a couple of the images in Photoshop were also deemed “too minor and imperceptible to supply the necessary creativity for copyright protection.”

As it did not appear to be an argument put forth to the Copyright Office, it is unclear whether Midjourney, Inc. itself could claim copyright over the images its tool generates, as Midjourney not only trained its own tool, but has continually fine-tuned the tool using its own proprietary methods. This question may be relevant because Midjourney’s terms of services grants certain paid users, subject to certain exceptions, all rights to the generated images. If Midjourney can be deemed the author of the generated images, can it assign those rights to its paid users?

Many questions remain, such as authorship of images created from one’s own trained model (or embeddings or other trained file types), the degree of alteration of an AI art image needed to constitute a minimum creative spark for registrability, and ownership of resulting images when your own image or sketch is used as the base (e.g., img2img or ControlNet methods).

As more authors apply for copyright registrations for underlying work that incorporates AI art, it will be interesting to see what can be registered.

On March 16, 2023, the U.S. Copyright Office issued a new registration guidance on works incorporating AI art. It recognized that additional copyright issues have not been addressed, but that it has “launched an agency-wide initiative to delve into a wide range of these issues. Among other things, the Office intends to publish a notice of inquiry later this year seeking public input on additional legal and policy topics, including how the law should apply to the use of copyrighted works in AI training and the resulting treatment of outputs.”

Does AI Art Constitute Copyright Infringement?

Two copyright infringement lawsuits have been filed that may lead to decisions on whether the use of AI art models that use copyrighted images for training purposes constitute copyright infringement:

  • Andersen et al. v. Stability AI Ltd. et al., Case no. 3:23-cv-00201 before the United States District Court for the Northern District of California, and
  • Getty Images (US), Inc. v. Stability AI, Inc., Case no. 1:23-cv-00135-GBW before the United States District Court for the District of Delaware.

Stable Diffusion was trained using a dataset of 5.85 filtered image-text pairs, namely, the LAION-5B dataset. The dataset, scraped from the internet, consists of an index of the URLs to publicly-available images, together with the ALT texts associated with the images, regardless of any associated copyright status of such images, and regardless of whether the images contained watermarks. But while the Stable Diffusion model was trained on these image-text pairs, none of the images are actually stored in the resulting model, as the images were used only in the training process.

The LAION-5B dataset includes images by the artist plaintiffs[4] in the Andersen case, as well as watermarked images from Getty Images. The inclusion of these copyrighted images in the training data is the basis for the direct copyright infringement claims. Whether infringement exists will likely hinge on whether the defendants’ use constitute fair use. A fair use analysis is a highly factual one that generally takes into account the purpose and character of the use, the nature of plaintiff’s work, the amount and substantiality of the portion of plaintiff’s work used, and the effect of defendant’s use on the market for, or value of, plaintiff’s work. 

Both cases also advance the claim that the defendants removed copyright management information from the source images in violation of 17 U.S.C. § 1202(b). As the LAION-5B dataset links to the source images, and the resulting models do not actually contain the source images, it is not entirely clear how copyright management information has been removed or altered.[5] If such information was indeed removed or altered solely for training purposes, and not otherwise made available to the public, it will be interesting to see whether Section 1202(b) will nevertheless apply.

The Andersen case also alleges a vicarious copyright infringement claim; namely, that “imposters” have relied on using an artist’s name to create AI art that can pass as original works by that artist that are then sold. Plaintiffs have not yet provided specific examples of these alleged “fakes,” but this theory seeks to hold defendants Stability AI, Midjourney, and DeviantArt responsible for end user use.

Both cases also assert non-copyright claims, such as violations of publicity rights (Andersen), unfair competition (both), and trademark infringement and dilution (Getty Images).

We will be tracking these cases and provide updates as they progress, as well as any proposed legislations that may affect AI art.

[1] 17 U.S.C. § 411(a); see also Fourth Est. Pub. Benefit Corp. v. Wall-Street.com, LLC, 203 L. Ed. 2d 147, 139 S. Ct. 881, 892 (2019). No registration is required to issue a DMCA takedown notice (17 U.S.C. § 512(c)(3)(A)), though if the respondent files a counter notice, the copyright owner must file a lawsuit within 14 days, or the allegedly infringing matter will be reinstated (17 U.S.C. § 512(g)(2)).

[2] This opinion is being challenged as part of Thaler v. Perlmutter, Case no. 1:22-cv-01564 before the United States District Court for the District of Columbia. The parties have filed summary judgment motions that have not been ruled upon.

[3] Note that Photoshop itself contains certain proprietary AI tools, though Adobe has yet to release an AI tool that creates an entire image from scratch. A “portrait generator” that can “generate unique photo realistic faces based on characteristics you specify” has been teased with no pending release date.

[4] The Andersen case involves a class action complaint, but as it is still in the early stages of litigation, the class has not yet been certified.

[5] As part of the training process for the original baseline model of Stable Diffusion, images were, however, cropped to a standard square aspect ratio and size for uniformity. The cropped versions of the images have not been made available to the public.

The Supreme Court to Determine Whether Parody Dog Toys Are Allowable Under Federal Trademark Laws

Author: Benni Amato

We previously wrote about the trademark and trade dress dispute between Jack Daniels and VIP Products’ “Bad Spaniels” parody toy here. Approximately two years later, the United States Supreme Court granted certiorari to weigh in on the case.

Original Motions for Summary Judgment
In 2016, the District Court of Arizona ruled on the parties motions for summary judgment. VIP Prod., LLC v. Jack Daniel’s Properties, Inc., No. CV-14-2057-PHX-SMM, 2016 WL 5408313 (D. Ariz. Sept. 27, 2016). The district court ruled in Jack Daniels’ favor that its marks were valid and rejected VIP’s nominative fair use defense and First Amendment fair use defense. The district court held a four-day bench trial on Jack Daniels’ claims for trademark infringement and dilution in 2017. In 2018, the district court issued a Findings of Fact, Conclusions of Law, and Order that VIP’s Bad Spaniels toy infringed on and diluted Jack Daniels’ trademark and trade dress and issued an injunction prohibiting VIP from selling the Bad Spaniels toy. VIP Prod., LLC v. Jack Daniel’s Properties, Inc., 291 F.Supp.3d 891, 897 (D. Ariz. 2018).

Ninth Circuit Reversal
VIP appealed to the Ninth Circuit Court of Appeals. In 2020, the Ninth Circuit affirmed that Jack Daniels’ trademarks were valid and that VIP’s nominative fair use defense was not, but reversed the district court’s other findings. VIP Prod. LLC v. Jack Daniel’s Properties, Inc., 953 F.3d 1170, 1172 (9th Cir. 2020). The Ninth Circuit found that VIP did not dilute the Jack Daniels marks because the Bad Spaniels toy was used to convey a humorous message, which the First Amendment protected. Further, because the Ninth Circuit found the Bad Spaniels toy to be an expressive work, no likelihood of confusion analysis could take place unless Jack Daniels established one of the two Rogers test requirements—namely, whether VIP’s use of the mark was either “not artistically relevant to the underlying work,” or “explicitly misleads consumers as to the source of content of the work.” In 2020, Jack Daniels filed a petition for certiorari to the United States Supreme Court, which was denied in early 2021. Jack Daniel’s Properties, Inc. v. VIP Prod. LLC, 141 S. Ct. 1054 (2021).

Summary Judgment on the Rogers Test
On remand to the district court, VIP moved for summary judgment, arguing that Jack Daniels could not satisfy either prong of the Rogers test. As to the first prong of artistic relevance, the district court noted that under the Rogers test, any non-zero level of artistic relevance is sufficient. VIP Prod. LLC v. Jack Daniel’s Properties Inc., No. CV-14-02057-PHX-SMM, 2021 WL 5710730 (D. Ariz. Oct. 8, 2021). Since the Bad Spaniels toy relies on Jack Daniels’ trade dress as its punchline, it was found to be artistically relevant.

As to the second prong of being explicitly misleading, the district court noted that this “is a high bar that requires the use to be an explicit indication, overt claim, or explicit misstatement about the source of the work.” Consumer perception or confusion is irrelevant; instead, what is relevant is: (1) the degree to which VIP used the mark in the same way as Jack Daniels, and (2) the extent to which VIP added its expressive content to the work beyond the mark itself. Although the Bad Spaniels toy heavily imitated the Jack Daniels trade dress, nearly every element was altered with VIP’s expressive content. Thus, Jack Daniels could satisfy neither prong of the Rogers test.

That said, the district court criticized the Rogers test, as almost no court has ever found a mark to be irrelevant to a junior use, and the “explicitly misleading” standard displaces the likelihood of confusion test and excuses almost every use short of “slapping another’s trademark on your own work and calling it your own.” Nonetheless, the district court noted that it was bound by Ninth Circuit precedent and ruled in VIP’s favor. The Ninth Circuit affirmed the district court’s rulings, and Jack Daniels again petitioned the Supreme Court for certiorari, the questions on appeal virtually identical to its first petition. VIP Prod. LLC v. Jack Daniel’s Properties, Inc., No. 21-16969, 2022 WL 1654040 (9th Cir. Mar. 18, 2022). This time, however, the Supreme Court has granted certiorari. Jack Daniel’s Properties, Inc. v. VIP Prod. LLC, 143 S. Ct. 476 (2022).

Questions Before the Supreme Court
The questions before the Supreme Court are (1) whether the Bad Spaniels parody products are subject to the traditional likelihood of confusion test or the Rogers test that provides heightened First Amendment protection, and (2) whether the Bad Spaniels parody products are “non-commercial” under 15 USC § 1125(c)(3)(C) and thus prevented from a trademark dilution by tarnishment claim. Previously, the Ninth Circuit had reasoned that speech is non-commercial “if it does more than propose a commercial transaction…and contains some ‘protected expression’…even if used to ‘sell’ a product.” Because the Bad Spaniels product was used to “convey a humorous message” protected by the First Amendment, the Ninth Circuit ruled that VIP was entitled to summary judgment regarding federal and state law dilution claims. The parties are briefing the Supreme Court on these issues, and while no dates have been set for oral arguments, we anticipate the Supreme Court will issue a decision by the end of this year.

About the Author: Benni Amato is a partner in Gordon Rees Scully Mansukhani’s Intellectual Property Practice Group. Her practice focuses on litigation matters involving trademarks, copyright, trade secrets, patents, internet issues, cybersecurity, contractual disputes, domain name arbitrations, and trademark and copyright prosecution and licensing. Ms. Amato’s biography can be found here.

Andy Warhol’s Prince Series and Issues of Transformativeness in Visual Works

Author: Brady Hagan

The Supreme Court will soon decide a case that, according to the appellants, could cause “a sea-change in the law of copyright” and cast “a cloud of legal uncertainty over an entire genre of visual art.” Indeed, the Court is expected soon to decide Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, a case expected (and hoped by some) to refine the meaning of “transformative use,” a part of fair use analysis, as applied to visual works in copyright infringement lawsuits, an issue on which the Second and Ninth Circuits have split. The key issue in Goldsmith is whether a work of visual art was sufficiently transformative of a photograph it was based on to constitute fair use.

In 1981, photographer Lynn Goldsmith took a photograph of acclaimed pop artist Prince in her studio (the “Photo”). Later, in 1984, Goldsmith licensed the Photo to Vanity Fair for use as an artistic reference.1 Unbeknownst to her, the artist hired by Vanity Fair was pop-art artist Andy Warhol. Vanity Fair’s license allowed it to publish an illustration of the Photo, once as a full page and once again as a quarter page, with co-attribution to Goldsmith. Vanity Fair’s use of the Photograph was thus authorized by Goldsmith, the copyright holder. However, Warhol would independently, and without license from Goldsmith, use the Photo as the subject matter of his Prince Series, rendering the image sixteen times in his characteristic style of sharp, contrasting colors and deep shading, typified by his works like Marilyn Diptych (1962) and Campbell’s Soup Can (1962). The most famous of the Prince Series is a work called Orange Prince, contrasted with the original photo below:

The Prince Series remained part of Warhol’s private collection until he passed away in 1987, at which point much of his life’s work was transferred to The Andy Warhol Foundation for the Visual Arts, Inc. (“the Warhol Foundation”), a non-profit whose mission is “the advancement of the visual arts.” In furtherance of its purpose, the Warhol Foundation donated the Prince Series for exhibition many times to such museum venues as the Museum of Modern Art, Tate, and The Andy Warhol Museum.

Goldsmith finally learned of the Prince Series after Prince’s death in 2016, when publisher Condé Nast (owner of Vanity Fair), published a commemorative edition magazine reflecting on the star’s life, and in which it used a print from Warhol’s Series, crediting the Warhol Foundation while failing to credit Goldsmith. Goldsmith notified the Warhol Foundation that she regarded it as being in violation of her copyright. The Warhol Foundation responded by suing Goldsmith in the United States District Court for the Southern District of New York, seeking declaratory judgment that the Prince Series works did not infringe Goldsmith’s exclusive rights in violation of the U.S. Copyright Act. Goldsmith countersued for declaratory judgment that the Prince Series did infringe her exclusive rights.

After reviewing the parties’ cross-motions for summary judgment, the District Court granted summary judgment to the Warhol Foundation and against Goldsmith, finding the Warhol prints constituted fair use of the original Photo, notwithstanding Warhol’s lack of license or permission for the use. In doing so, it relied on the general principle articulated by the Supreme Court in Campbell v. Acuff-Rose Music, Inc. that a work is transformative if it “adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message.” 471 U.S. 539, 579 (1985). Perhaps most central to its holding, the District Court observed:

These alterations result in an aesthetic and character different from the original. The Prince Series works can reasonably be perceived to have transformed Prince from a vulnerable, uncomfortable person to an iconic, larger-than-life figure. The humanity Prince embodies in Goldsmith’s photograph is gone. Moreover, each Prince Series work is immediately recognizable as a “Warhol” rather than as a photograph of Prince – in the same way that Warhol’s famous representations of Marilyn Monroe and Mao are recognizable as “Warhols,” not as realistic photographs of those persons.

Id. at 326. Accordingly, it held Warhol’s use was sufficiently transformative to support a finding of fair use as a matter of law.

Goldsmith appealed to the Second Circuit, which reversed the District Court. 11 F.4th 26 (2d. Cir. 2021). The main target of the Second Circuit’s reversal was the trial court’s holding that Warhol’s works were sufficiently transformative. “[A]s we have previously observed, an overly liberal standard of transformativeness, such as that employed by the district court in this case, risks crowding out statutory protections for derivative works.” Id. at 39. While it endorsed the District Court’s articulation of the general rule above from Campbell (a rule applied in the context of musical works of parody), the Second Circuit took a stricter view of transformativeness in this case, finding Warhol’s work retained and exploited too substantial a quantity and quality of the original photo’s features to constitute fair use such that it infringed Goldsmith’s copyright. The Warhol Foundation appealed to the Supreme Court, which granted certiorari. The United States Copyright Office filed an amicus brief in support of affirming the Second Circuit.

Until the Supreme Court renders a decision, we might make two observations. First, the primary disagreement between the Second Circuit and the District Court below fundamentally pertained to “how much” a creator can borrow from another’s original work, both in terms of quantity and quality, before it would no longer qualify as fair use, and also how much weight should be accorded to a purportedly new “meaning or message” in the derivative work. The Second Circuit essentially found the Prince Series used too much of the original Photo, notwithstanding the significant changes the District Court correctly identified as Warhol’s artistic contributions. It also found that the District Court overemphasized the new meaning or message, one of cultural commentary, that Warhol’s paintings add to the original image.

Second, “there is some inherent tension in the Copyright Act between derivative works, reserved to the copyright holder, which are defined in part as works that ‘recast[ ], transform[ ], or adapt[ ]’ an original work, and ‘transformative’ fair uses of the copyrighted work by others.” Id. at 39. In this author’s view, that tension is theoretically near its peak in visual art, simply given the nature of visual works as often fixed and defined images, not easily borrowed without clear duplication of the original’s inherent elements. Thus, it may be harder for a user of another’s photograph to prove fair use as compared to other artistic mediums, because such appropriation tends to require the direct duplication of fixed, identifiable elements of an image.

Along the same lines, the author might further observe that if the Second Circuit is affirmed, photographers rejoice, because it would become just that much harder for infringement defendants to prove fair use, even in cases of partial or elemental use of original photographs. Further, affirming the Second Circuit would (in theory) give prospective users greater incentive to seek licenses and paid permission from original creators, again, especially photographers, rather than run a then higher risk of litigation and liability for infringement. On the other hand, reasonable commentators tend to speculate that an affirmance of the Second Circuit could chill artistic endeavors. But this raises further questions of the likelihood of enforcement in private, non-commercial contexts anyway, and it arguably downplays the fact that transformativeness is only part of a more holistic fair use analysis. Transformativeness remains only a sub-factor of one of the four fair use factors.

Regardless of the outcome, we will wait eagerly to see whether the Prince prints are indeed transformative, or Warhol’s work infringes.

About the author: Brady Hagan is an associate at Gordon Rees Scully Mansukhani and a member of the Firm’s Intellectual Property Practice Group. Before entering private practice, he clerked for Chief Justice John D. Minton, Jr. of the Supreme Court of Kentucky, and then for Senior U.S. District Judge William O. Bertelsman of the Eastern District of Kentucky. Through his judicial clerkships, Mr. Hagan handled a variety of matters and gained insight into the inner workings of both state and federal courts.


1 As the term suggests, an “artistic reference” refers to a work or object upon which an artist bases his or her new work as an image reference.

Lessons from 28 U.S.C. § 2202: Don’t Forget To Include a Prayer for “Other and Further Relief” In Your Complaint

Author: Hannah Brown

In drafting a complaint, we all subconsciously throw in a catch-all last request in our prayer for relief: “other and further relief as the court may deem to be just and proper.” Upon further reflection, do we know why we do that? Imagine the situation: the jury finds the plaintiff has been damaged in the amount of $50,000, and in awarding judgment, the court says “actually, I think plaintiff deserves another $5,000, and I find that relief to be just and proper. Judgment awarded to plaintiff for $55,000.” It doesn’t happen.

But that doesn’t mean you should take that request out of your complaint or that it serves no purpose. To the contrary, inclusion of such sentence could save you.

The relevant statute is 28 U.S.C. § 2202, which provides: “Further necessary or proper relief based on a declaratory judgment or decree may be granted, after reasonable notice and hearing, against any adverse party whose rights have been determined by such judgment.” This allows a party to seek further relief — whether it be damages, fees, or an injunction — following a court order of declaratory relief.

Litigants may file motions for further relief pursuant to 28 U.S.C. § 2202, following a declaratory judgment. The court’s power to afford relief under this statute is broad, and “the prevailing party [in a declaratory judgment action] may seek further relief in the form of damages or an injunction.” Kaspar Wire Works, Inc. v. Leco Eng’g & Mach., Inc., 575 F.2d 530, 537 (5th Cir. 1978). Indeed, “all necessary or proper relief based on the declaratory judgment should be granted.” Nat’l Fire Ins. Co. of Hartford v. Bd. of Pub. Instruction of Madison County, Fla., 239 F.2d 370, 376 & n.11 (5th Cir. 1956) (emphasis added). The relief need not be necessary to effectuate the declaratory judgment ruling, it only needs to be proper. Horn & Hardart v. Nat’l Rail Passenger Corp., 843 F.2d 546, 548 (D.C. Cir. 1988).

In Edward B. Marks Music Corp. v. Charles K. Harris Music Publishing Co., 255 F.2d 518, 522 (2d Cir.1958), one of the most highly-cited cases analyzing this statute, the court held “the further relief sought [under the statute] … need not have been demanded, or even proved, in the original action for declaratory relief. [Rather,] [t]he section authorizes further or new relief based on the declaratory judgment, and any additional facts which might be necessary to support such relief can be proved … in an ancillary proceeding if … necessary.” (emphasis added).

The statute has proven useful in intellectual property cases. In Fred Ahlert Music Corp. v. Warner Chappell Music, Inc., 155 F.3d 17, 25 (2d Cir. 1998), the plaintiff Ahlert requested declaratory judgment that it was entitled to license the use of the song “Bye Bye Blackbird.” The court agreed, finding plaintiff was entitled to license the song during the relevant period and “to receive 50% of all mechanical royalties … payable for the use of the Song.” Prior to that order declaration, defendant Warner had been receiving these royalties. Accordingly and pursuant to that declaration, the court ordered defendant Warner to: (1) pay Ahlert the sum of 50% of the mechanical royalties paid to Warner by third party Sony, and (2) account for and pay to Ahlert 50% of all other applicable royalties paid to Warner during the relevant term; and (3) pay Ahlert prejudgment interest.

Warner appealed. Warner argued that the district court’s judgment was too broad because it encompassed relief neither sought by Ahlert in the complaint nor litigated at trial. The Second Circuit affirmed, first noting: “In its prayer for relief, Ahlert asked the district court to “grant [ ] such other and further relief as the court may deem to be just and proper,” thus invoking the district court’s power pursuant to 28 U.S.C. § 2202 to provide any “[f]urther necessary or proper relief based on a declaratory judgment or decree … against any adverse party whose rights have been determined by such judgment.” The panel went on to reason that the district court declared that Ahlert, rather than Warner, has the authority to license new uses of the song. The relief awarded by the district court followed directly from that declaration because Ahlert is entitled to receive royalties from post-termination licenses, and the judgment awarding those royalties to Ahlert was “proper relief based on a declaratory judgment.”

This case makes clear that a party is not barred from seeking relief under this statute even if the party forgot to plead for that relief in their complaint. The statute is also useful if a party did not know it needed to plead for the relief. It is illogical for a plaintiff to include a claim for copyright infringement or copyright infringement damages if plaintiff has not yet been declared the owner of said copyright. For example, in Columbia Casualty Co. v. Abdou, No. 15CV80-LAB (KSC), 2016 WL 4417711, at *1 (S.D. Cal. Aug. 18, 2016), plaintiff insurer Columbia brought a complaint seeking declaratory judgment as to whether it was obligated to provide coverage under the policy and included a prayer for “such additional … relief as the Court finds appropriate.” The court found no potential for coverage and granted judgment in Columbia’s favor. Columbia then moved for reimbursement of the defense costs. The court granted them, finding “Even absent a specific demand for money damages in its complaint, Columbia’s request for reimbursement qualifies as ‘proper relief’ under § 2202.” Id.

Case law on this point is consistent: a district court may grant relief, including monetary damages, whether or not the relief “ha[d] been demanded, or even proved, in the original action for declaratory relief.” Fred Ahlert Music Corp. v. Warner Chappell Music, Inc., 155 F.3d 17, 25 (2d Cir. 1998). This is because the statute itself accounts for a process by which the party may present any new facts to support such relief, as the statute allows for a “reasonable notice and hearing” before the court can issue further relief. 28 U.S.C. § 2202; see Westport Ins. Corp. v. Bayer, 284 F.3d 489, 500 (3d Cir. 2002) (stating that upon a motion for further relief, “the district court may resolve this issue after notice and hearing either on the present record or, at its option, by hearing additional evidence”).

While there must be some relationship between the further relief requested and the underlying declaratory relief, the further relief can go beyond the direct enforcement of the precise terms of the declaratory relief. In Horn & Hardart Co., the court issued a declaratory judgment that lease provisions were violated and therefore defendant Amtrak had the right to terminate the lease. Then, relying on section 2022, the court went on to enforce a different lease provision to award Amtrak damages and fees. 843 F.2d at 549. The appellate court affirmed, finding such an award was proper because that relief “follows absolutely from, and is based on” the court’s decision confirming Amtrak’s right to terminate the lease. Id. Even though Amtrak’s request for further relief in the form of rent and fees was not “necessary” to effectuate the lease termination ruling, it was proper. Id.; see also Tractor & Equip. Co. v. Dual Trucking & Trans., LLC, No. 15-5413, 2017 WL 3601212, at *3 (E.D. La. Aug. 22, 2017) (“The purpose of 28 U.S.C. § 2202 is to enable courts to grant further relief, not merely relief already required by the terms of the declaratory judgment.”).

Section 2202 is not useful in every case—of course there must be a declaratory judgment in place for a party to even argue this section’s applicability—but it should and could be used to argue entitlement to damages or an injunction if such relief would flow naturally from a prior judgment. A party can argue that such relief is appropriate where “[t]he district court’s denial of the motion for further relief would effectively render this declaratory judgment meaningless.” United Tchr. Assocs. Ins. Co. v. Union Lab. Life Ins. Co., 414 F.3d 558, 574 (5th Cir. 2005). The lesson learned here is that it is always to one’s benefit to include this catch-all provision for further relief in the complaint, as you never know when you may need it.

About the author: Hannah Brown is Senior Counsel and member of Gordon Rees Scully Mansukhani’s Intellectual Property Practice Group, specializing in trademark, copyright, and patent litigation. She is a former law clerk to the Hon. Janis Sammartino and Hon. Cynthia Bashant of the U.S. District Court, Southern District of California.