Patently Strategic Podcast: Jack Daniels, Mickey Mouse, and Andy Warhol Walk into a Bar

Copyrights and trademarks, in particular, have seen a lot of limelight this year involving some of the biggest brands and pop culture icons. At the same time, major IP rights questions are erupting around the use of generative AI systems like ChatGPT. In this month’s episode of Patently Strategic, we take a fast-paced tour through some of the highest-profile copyright and trademark disputes – both recently settled and freshly on the horizon – involving the likes of Jack Daniels, Mickey Mouse, Andy Warhol, Jason Voorhees, Winnie-the-Pooh, Lizzo, and WallStreetBets.

Fortunately for us, sometimes life can be more entertaining than art. In addition to covering the IP fundamentals necessary to help get you booted up, we’re going to use big brand IP current events and Supreme Court cases as a vehicle to gain a deeper understanding of copyrights and trademarks and some of the sharpest corners you should be aware of when managing your own brand protection.

Brand Protection

Patents are primarily our focus, so we devote a lot of air time to talking about protecting ideas and inventions, but in the realm of intellectual property, patents have some pretty close cousins. In thinking more broadly about creating the largest possible moat with your IP, you also need to consider what today’s guest, Mallory King, refers to as “brand protection” – or the copyrights, trademarks, and contracts necessary to protect your brand’s rights and assets.

  • Copyrights protect any artistic work fixed in a tangible medium of expression, which includes a wide array of creations such as books, plays, music, photographs, fashion, paintings, jewelry, graphic design, TV shows, movies, blog posts, social media feeds, software, etc. Copyright gives the creator(s) exclusive rights to the copyrighted work, including the rights to reproduce; distribute; display; perform; and/or create derivative works from the copyrighted work. Copyrights are registered through the U.S. Copyright Office and, in general, last the author’s life PLUS seventy years after the author’s death.
  • Trademarks protect words, slogans, and logos that are used – or intended to be used – commercially in association with specific goods and/or services. A trademark is meant to be a source identifier of goods or services, so the standard of trademark infringement is whether another use is “confusingly similar” to the preexisting trademark. The public policy objective is to protect consumers from the potential dangers (origin, quality, safety, etc.) resulting from confusion about the source of a good or service. Trademarks are filed with the USPTO and can be renewed indefinitely.
  • Trade dress falls under the umbrella of trademark law and allows brand owners to protect a product’s shape and visual appearance.
  • Contracts tie into brand protection in many ways, including License Agreements to license a brand’s IP and Non-Disclosure Agreements to keep the brand’s proprietary information (trade secrets, customer lists, etc.) confidential from disclosure. As we discuss, “Work Made for Hire” agreements, particularly, can play a significant role in IP ownership when working with contractors.

Greatest Hits Mixtape of 2023 Copyright and Trademark Takeaways

Come for the SCOTUS potty humor; stay for the brand protection learnings. The past year has been a target-rich environment for comedic relief in the land of IP law. We cover a lot of ground in this episode and went to great lengths to ensure research accuracy, including attending the one-day theatrical release of Winnie-the-Pooh: Blood and Honey. After Mallory briefly coaches us up on the fundamentals of brand protection, we tackle the following:

  • Work made-for-hire and Friday the 13th. How you can lose copyright control to one of the four franchises on the Mt. Rushmore of horror by not understanding “Work Made for Hire” agreements.
  • Jack Daniels Properties v. VIP Products. The cardinal sin under trademark law is to undermine the ability to indicate the product source, whether free speech, parody, or any other form of expression is invoked. Consumer confusion that arises when using another’s trademark as a trademark will likely not be tolerated by the courts.
  • Brand protection expiration. Copyrights have a limited term, after which the covered work falls into the “public domain.” This means that Disney – a company that is notoriously aggressive at enforcing its intellectual property – cannot prevent films like “Blood and Honey” from using elements of Winnie-the-Pooh that have expired. Mickey (the Steamboat Willie version) is next up later this year, followed up over the next decade by aspects of other icons, including Popeye, King Kong, Donald Duck, and Superman. Trademarks, which don’t expire if renewed, must still be honored, so new takes must not create any brand source confusion.
  • Lizzo’s “100% That Bitch” trademark appeal. Compared to patents and copyrights, trademarks focus on consumer perception over creative endeavors and discovery. Unlike patents, where obtaining and defending centers so much around the first claim to the conception, existence of prior art, etc., trademarks don’t require proof of mark creation but instead rely on the perception that an ordinary consumer would associate the mark with its owner.
  • r/WallStreetBets trademark dispute with Reddit. Influencers and short-selling squeezers, beware – rather than building your brand directly on a platform like Reddit, it’s wise to establish it elsewhere and then bring it to the platform so that you have more robust rights to what you’ve created. Also, read the terms and conditions!
  • Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith. Copyrights protect derivative works. Some exceptions apply if they can pass a fair use test. But if the new work is not substantially different and it’s of commercial nature, it must not supersede or supplant the original creation in the marketplace vs. working to serve a different end. While logical, the SCOTUS decision requires suspending disbelief when considering prior high court fair use justifications.
  • Generative AI and IP. AI-generated output is getting crazy good. See this episode’s cover art that we generated using DALL·E 2 for an example. AI experts are arguing that as soon as 2025, 90% of online content could be generated by AI. The biggest players in tech are pouring billions into an arms race that’s going to reshape the Internet. This is already raising significant questions about content ownership. Can generative AI output be copyrighted? Is it really legal for these generative AI companies to train their models with mass volumes of copyright-protected material? And what does this mean for the average consumer who’s taking the generative output and using it without license?

Mossoff Minute: Patent Eligibility Restoration Act

In last month’s Why Patents Exist episode, we introduced a new podcast segment called the Mossoff Minute, which builds on our Patent Wars episode and features short conversations with Professor Adam Mossoff, providing updates and quick takes on movements in patent reform, significant court rulings, innovation policy happenings, and occasional Star Wars references. This month, we discuss the introduction of the 2023 Patent Eligibility Restoration Act, its biggest criticisms, and what it solves. We’re also publishing excerpts as short-form videos on Instagram Reels, YouTube Shorts, and TikTok.

Given the importance of PERA and the ongoing debate, we’re also releasing the full-length interview on YouTube. The full-length version includes:

  • In-depth analysis of concerns about eliminating economic, financial, and business process patents.
  • Adam’s thoughts on how enactment of PERA would change U.S. eligibility to better compete with China in 37 of 44 critical and emerging technology areas where China is reported to be in the lead.
  • The implications of the judicial exceptions being eliminated in the Findings section of the bill, as opposed to being part of the statutory language – and whether or not this is a cause of concern about the Supreme Court’s Clear Statement Rule.

Related Listening

For a deeper understanding of some of the IP topics mentioned in this conversation, see the following past episodes:

 

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  • [Avatar for Pro Say]
    Pro Say
    August 17, 2023 10:40 am

    Three CAFC judges not named Newman walk into a bar . . .

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