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Spring Cleaning: Decluttering From Recent Intellectual Property Detritus & Dusting Off Old Posts

Our favorite thing about spring [is] spring cleaning. It’s a way to say, “I’m dusting off the winter blues and coming out of hibernation.”… At the office, spring cleaning can take on a whole new meaning. It is a chance to reorganize and refresh your workspace and your workflow. Plus, organizing will actually improve your overall focus and work performance. Don’t believe us? Read on to learn why.

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Many cultures have the tradition of spring cleaning.  These range from those in Iran observing the Persian New Year festival of Nowruz (and the practice of “khooneh tekouni,” or “shaking the house” to prepare for Nowruz), to the Jewish traditional pre-Passover cleaning (and the ritual bedikat chametz), to the Clean Monday (Kathara Deftera) traditions of the Greek Orthodox Church to the Asian celebrations of Ninyabaat, Songkran, and Xiao Nian. In more Northern countries and frontier cultures, spring cleaning presented the opportunity to wipe away soot and grime of winters indoors in shelters lit and heated by oil-burning lamps or wood-burning fires.   In the last decade, the United Kingdom has taken the tradition outdoors, with The Great British Spring Clean, which is a national campaign run by Keep Britain Tidy. As one participant noted, “It is the UK’s single biggest environmental mass participation event and sees volunteers from across the country make more than one million miles of British outdoor spaces cleaner and greener.”

And these traditions may have biological, evolutionary roots, as one resource notes that “spring cleaning has more to do with human biology than anything else. We are less active and motivated during the cold winter days and a good reason for that… Due to the lack of sunlight during drab winter days, our brain produces larger amounts of melatonin – a chemical responsible for literally making us sleepier. Melatonin levels are bound to the amount and frequency of sunlight exposure we get. The more time we spend outside, the less we produce the hormone of sleepiness. Some say that to ‘spring clean’ means to wake up from a melatonin-induced slumber of spirit and mind.”

The need for spring cleaning, and a sense of coming out of hibernation, seems especially acute this April for this intellectual property lawyer.  There are so many scattered intellectual property issues of interest to be collected, organized, and commented upon, many as follow-ups to previous posts that need to be dusted off in light of further developments.  There’s a duty to readers to do that so they can see how some of these stories have continued, or how new items connect to old ones.  And in other ways, there is a need to plant some totally new seeds of thinking and analysis.  So, rather than simply focusing on a single case, decision, or concept in this post, we will address here a potpourri of items, as we have on occasion in the past in posts like “…as best as your interests don’t conflict with mine”: Lawyers Fighting Over Intellectual Property, Picking: A Few IP Collectibles Since My Last Post, and List of Holiday-Related Trade Secret/Non-Compete Cases

Where IP Spring Cleaning Starts:  Whether applied to home or office, literally or figuratively, spring cleaning’s cultural, historic, and biological roots have intellectual property law analogs and other legal offshoots.  For instance, as recently as 2019, parties engaged in a copyright fight over whether “Daisy Do All and the Mayde Spring Cleaning Dust Bunny are substantially similar,” with a California federal district court holding, in paragraph 38, that “both depict maid characters with big eyes and curly hair tied up in a polka-dotted ribbon with a bow. Both are wearing short-sleeved dresses over capri-length pants. The right foot is tilted inwards in both and both characters are holding a duster in the left hand, with the right hand flexed on the side of the body. Considering the selection and arrangement of these elements in combination, the works are substantially similar…” Likewise, as long ago as 1926, the Sixth Circuit addressed a case about a patent that “had to do solely with an improvement, consisting of a spring cleaning device,” albeit not a seasonal tidiness concept but actually an invention usable year-round to assure that “buckets on the continuous chain would be automatically cleaned by a resilient scraper.”

Interestingly, this spring cleaning language hits other patents and trade secrets as well.  There are, in fact, thousands of US Patents dealing with “spring cleaning” equipment, but only five live US trademarks using “Spring Cleaning” as part of the registered mark.  At least one, US Reg. 2498265 for SPRING CLEANING, seems to pick up on what spring cleaning suggests, as the trademark covers software used for deleting unneeded and duplicate files, organizing files, cleaning cache files Internet history and cookies, as well as removing empty folders and leftover preference files, reattaching or deleting old aliases; removing or relocating unwanted duplicate and unused fonts, and locating, removing or compressing “help” files.  Because so much of traditional spring cleaning starts with checklists, one trade secret lawyer has constructed “a ‘spring cleaning’ checklist of some proactive security measures in-house counsel may want to consider” when setting up systems to show a company has made reasonable efforts to maintain the confidentiality of proprietary information.

Beyond these IP cases and properties, the notion of spring cleaning has been applied to courts sorting through the issues before them. It has been noted as to the US Supreme Court’s requirement that it render before its summer break decisions in all cases argued in the current term and dispose of as many cert. petitions, motions, and other filings as possible in the same time frame, for instance. See New York Times article entitled Supreme Court; Full Docket Awaits Spring CleaningIt has also been applied to reform efforts by the Chief Justice of India’s Supreme Court. See Business Standard article entitled Spring cleaning in the Supreme Court: The new Chief Justice swats frivolous litigation but more measures are needed.  So, with that background, let’s turn to our own cleaning.

How To Clean Up Silkscreens:  Anybody who has ever had a silkscreen shirt knows that cleaning silk screens presents challenges.

One element of our spring cleaning arises in connection with a well-known series of silkscreens by Andy Warhol.  As described here in a previous post:

The United States Court of Appeals for the Second Circuit rejected an artistic intent or purpose test for fair use on March 26, 2021, in The Andy Warhol Foundation v. Goldsmith….In the recently-decided case, which the Warhol Foundation had won below, the appellate court rejected the claim that Warhol’s uses of certain photographs of Prince by Linda Goldsmith (with photographs and Warhol works depicted in Slip Op. at 7-9) were transformative…,”

Then, as I noted, the US Supreme Court decided a few days later, “in Google v. Oracle, that ‘fair use’ is an ‘equitable rule of reason’ requiring ‘judicial balancing’ of ‘the sometimes conflicting aims of copyright law’  so that copyright does not ‘stifle the very creativity which the law las was meant to foster.’ (Op. at 13-15.)  Neither Marano  [v. Metropolitan Museum of Art (decided April 2, 2021),] nor Google cite Warhol, though each address at some length, including in a Supreme Court dissent, the role ‘purpose’ plays in assessing whether a use is ‘transformative.’ See, e.g., Google, Slip op. at 24-28, Dissent at 15-17.  So the debate goes on.”

Well, the debate now heads to the United States Supreme Court, which agreed on March 28, 2022 to hear the Warhol case to determine “Whether a work of art is ‘transformative’ when it conveys a different meaning or message from its source material (as this Court, the Ninth Circuit, and other courts of appeals have held), or whether a court is forbidden from considering the meaning of the accused work where it ‘recognizably deriv[es] from’ its source material (as the Second Circuit has held).”   Not sure that the respondent will concede a different meaning or message is evident, but it will be interesting to see how the Supreme Court cleans up these issues in what some are calling the most important fair use case in thirty years, especially for artists  “such as Jeff Koons and Richard Prince, whose oeuvre centers around reappropriation.”

Court Claiming To Take Out The Trash—Or Is It Trashing The Taking Claim Out Of Court?:  Taking out the trash is a headline part of spring cleaning, and commentators before me have likened the Supreme Court’s “trimming” of cases “from its rolls” to having “conducted an overdue spring cleaning.”  (In fact, even law professors use the metaphor, like Kathleen Patchel, who noted in The New Habeas that “[i]n Spring 1990, the United States Supreme Court did a little spring cleaning…”).  Seems the Court was at it again on the first day of spring, as I will now explain.

In a recent post, I’d written about the Petition For Writ Of Certiorari filed November 15, 2021, in Jim Olive Photography, d/b/a Photolive, Inc., v. University Of Houston System,  No. 21-735 (2021).  In this case, the Supreme Court of Texas held that a government entity may reproduce, display, and utilize a copyrighted work for its own benefit without paying any compensation to the copyright owner. So, the photographer filed a takings claim, which I had found pretty creative, as I noted in the post published days before the date originally listed for the Court to conference the matter.  That date eventually got extended, the respondent filed an equally persuasive response in opposition, and then a quality reply brief got filed.  Unfortunately, despite what I saw as issues of interest, the Court cleaned up its docket by denying cert. in this case (at page 3 of this March 21st (i.e., first business day of Spring) Orders’ List).

Sweeping Elections & IP Fallout Of Politics:  The Wall Street Journal and other media outlets recently ran a feature on local elections in India under the headline In India, a Fish on the Campaign Trail Can Help at the Ballot Box.  It concerned the campaign practice of Prabhu Datta Goud, a candidate for local village chief, who each day on the campaign trail would buy a live fish in the market and then cradle the flopping fish in his bare hands as he visited voters door-to-door.  (He would “dunk [the fish] back right into a five-gallon bucket of water between stops.”)  The reason that the candidate carried the fish was because ballots in India bear not only the names and party affiliations of candidates but candidate-specific symbols as “part of a long custom in India to ensure any voters who’re illiterate can determine their preferred candidate.”  Another candidate, Sasmita Khara, had “three choices for her image: a bucket, a bottle or a television,” and she “selected the TV because it is an aspirational item. ‘Voters can easily relate to it,’”; she actually carries a flat-screen TV around with her while campaigning.  No legal issues of note there for now, but an interesting segue into the notion of political trademarks.

The concept of political trademarks also made headlines concerning American public figures recently in connection with the February 24, 2022 ruling by the United States Court of Appeals for the Federal Circuit in In re: Steve Elster, Case no. 2020-2205, slip op. (Fed. Cir. 2022). As I noted elsewhere with my colleague Kevin Elkins, the case raised a curious issue:

Interesting question: Can someone trademark another person’s name without that person’s consent? The answer to that is usually “no,” but, hey, we would not be the first people to say that we live in interesting times. And if we said that, we would not be infringing on anyone’s rights. That aside, the answer to the first question this week is “yes,” at least when the person is a public figure, and the trademark is viewed as an exercise of free speech critical of that public figure.

[Jim Flynn & Kevin Elkins, Does TRUMP Trademark Ruling Create First Amendment Exception That Is TOO BIG or TOO SMALL?]

After the USPTO denied Elster, consistent with express regulations, registration of the mark because Donald Trump had not consented to the registration, the appellate court vacated that result and ordered that the registration issue. The rationale was that the trademark constituted private speech entitled to First Amendment protection and that the government did not have countervailing interests in protecting government officials or political partisans from criticism, opposition, or related dilution of trademark or publicity rights.

With the Indian fish and TV example in mind, however, this Elster decision seems problematic both legally and politically.  First off, having a First Amendment right to say something is not denied by a refusal to register that expression as a trademark—Elster could have shouted, printed (on paper or fabric), and broadcast TRUMP TOO SMALL repeatedly whether or not he had a trademark. When the Federal Circuit says that is not a relevant inquiry, that just seems wrong—the First Amendment is about whether you can say it, not about whether the federal government must register it as a trademark, and must ignore current trademark registration criteria to allow that registration.  Second, giving Mr. Elster a trademark in TRUMP TOO SMALL actually could chill further free expression and political engagement.  Those who agreed with the sentiment and would have wished to repeat it can now only articulate it under apprehension of an infringement suit. Likewise, one who opposed those views would doubtless face potential infringement or dilution liability for countervailing t-shirts and publications that read TRUMP TOO SMALL, TRUMP NOT TOO SMALL, or TRUMP TOO SMALL…NOT!  Third, while a critical phrase like this might not be confused with something originating with the criticized candidate, the Federal Circuit’s logic would seemingly require one be allowed, on First Amendment grounds, to register TRUMP CERTIFIED or BIDEN BLESSED to express support for the agendas of such politicians.  Such a registrant, without such candidates’ approval and under this decision, could well produce a list of candidates for other offices labeled as TRUMP CERTIFIED or BIDEN BLESSED or could license individual candidates to use on their own websites such marks even if neither the former nor present president wished to endorse such candidates for other offices.  As one commentator has made clear, “Elster may have opened the gates for such marks.”  Without again referring to the story about the Indian elections, it just seems a little fishy to me, and to many other lawyers.

It is also inconsistent, at least directionally, with the copyright trends on political questions.   If one wishing to play politics can borrow an incumbent’s or candidate’s name without permission, one would think that a candidate had some First Amendment right to express their own political vision, and communicate that vision to their own followers, with music they believed connected them and their message  (Those opposing candidates have long used their own, and others’, music to symbolize political positions, such as Bruce Springsteen’s “Playlist for the Trump Era.”) But that has not been the case, and maybe Elster is just an outlier. From recent posts simply asking politicians to seek permission for such use to publicized instances of Neil Young, Eddy Grant, Adele, and many, many other musical artists attempting to bar, at least in absence of a license, politicians from using certain music in campaign ads and at campaign rallies, we have seen intellectual property rationales argued to restrict political speech and sentiments. Yet, Elster refused to enforce just such long-standing rules. (For a more detailed discussion of these issues, you can also see Diane Nelson’s excellent article in The New York State Bar Association’s March/April 2022 Journal, entitled ‘We’re Gonna Rock Down To’…Copyright Protection: The Unauthorized Use Of Popular Music In Political Campaigns During The Social Media Era).

Though some are of the opinion that politics is a dirty business and should stay that way, it seems some of these IP issues surrounding politics could be cleaned up a little.

If A Roomba Can Get Credit For Cleaning The Floors In My House, Why Can’t An AI Program  Copyright The Painting Over My Mantel?: The iRobot Roomba i3 has been described as “powerful and self-sufficient” and, like Roombas generally,  it “cleans on its own” and is an “autonomous” cleaning device that “will learn, map and adapt to your home layout.” Naturally, that makes them useful this time of year, since “Spring has sprung. Get rid of that winter clutter with a spring cleaning session. Fortunately, some of the best tools for cleaning up, from Roomba robot vacuums with automatic dirt disposal…,” as CBS News recently noted.  With many have tended in recent years to “attribute agency to these systems” and trying to find “the right way to understand that agency exercised by these machines,” let us turn again to the question of non-human creation of intellectual property.

I say “again,” because an earlier post here, such as  Publicity Exactly What Was Missing From Monkey Selfie Case and WHAT, IN THE NAME OF GOD, …?: Intellectual Property Rights In Holy Names, Sacred Words, & Other Aspects of Creation, noted that the United States limits those allowed to register copyrights to legal persons or human beings.  Though I devoted the Monkey Selfie and Holy Names posts to raising the issue of whether providing for copyright registration with primates or divine spirits listed as the author, the basic question has re-emerged recently with the Copyright Office’s “refusal to register a two-dimensional artwork claim in the work titled ‘A Recent Entrance to Paradise’ (‘Work’).”  The copyright application identified the “author” of the Work as the “Creativity Machine,” and Steven Thaler was listed as the owner of that machine who “was ‘seeking to register this computer-generated work as a work-for-hire to the owner of the Creativity Machine.’”  The application was rejected because it “lacks the human authorship necessary to support a copyright claim,” and Thaler appealed that rejection to the Review Board of the United States Copyright Office (“Board”).  In a recent, seven-page, single-spaced ruling, the Board affirmed that rejection, finding that “the nexus between the human mind and creative expression” remains “a prerequisite for copyright protection.”

This remains a fascinating set of issues that I have touched upon, but come nowhere close to fully explaining or exploring.  But, I would suggest you read further on this matter here, and listen here to an interesting interview of Thaler’s counsel, Dr. Ryan Abbott, by Sandra Aistars, Clinical Professor and Director of the Arts & Entertainment Advocacy Clinic at George Mason University, Antonin Scalia Law School, and Senior Fellow for Copyright Research and Policy & Senior Scholar at C-IP2:

 [The] lively discussion begins with level setting to ensure that the listeners understand the goals of Dr. Thaler’s project, goals which encompass scientific innovation, artistic creation, and apparently—legal and policy clarification of the IP space.

Dr. Abbott and [Prof. Aisters] additionally investigate the constitutional rationales for copyright and how registering or not registering a copyright to an AI-created work is or is not in line with those goals. In particular, we debated utilitarian/incentive-based justifications, property rights theories, and how the rights of artists whose works might be used to train an AI might (or might not) be accounted for in different scenarios.

[Paradise Rejected: A Conversation about AI and Authorship with Dr. Ryan Abbott]

Even with Roombas and Creativity Machines doing their jobs well, these issues remain a little messy and will need to be considered further.

Spring Cleaning Is About The Shape Of You Or Yours:  It has been said that literal spring cleaning, as well as annual business reassessment or taking of psycho-spiritual inventory, is about having and creating a “working, living blueprint of the shape of things to come.” Well, in moments of introspection, that also means considering the shape of you and yours.  The Shape of You also happens to be a song by Ed Sheeran.  Because posts here have previously addressed the question of copyright and feel/vibe infringement in the music context (such as here and here), it seemed appropriate to let you know how Ed Sheeran just cleaned out some of his litigation portfolio recently.

Mr. Sheeran did that by prevailing on April 6, 2022 (right in the middle of the Great British Spring Clean) in a London trial where, as Billboard reported, the Court “ruled that Sheeran’s mega-hit” (2017’s Shape of You, “which spent 12 weeks atop the Hot 100”), did not infringe a 2015 song called Oh Why, written and performed by Sami Switch and produced by Ross O’Donoghue.  As Billboard further noted:

In his decision, Judge Antony Zacaroli ruled there was no evidence that Sheeran had intentionally or “subconsciously” copied from “Oh Why” when he wrote “Shape of You.” He said that “while there are similarities” between the two songs, “there are also significant differences.”

Sheeran quickly celebrated the ruling in a video posted to social media – and blasted what he called “baseless” lawsuits and the harm they’re doing to the music industry.

“While we’re obviously happy with the result, I feel like claims like this are way too common now and have become a culture where a claim is made with the idea that a settlement will be cheaper than taking it to court. Even if there’s no base for the claim,” Sheeran said. “It’s really damaging to the songwriting industry. There’s only so many notes and very few chords used in pop music. Coincidence is bound to happen if 60,000 songs are being released every day on Spotify.”

[Donahue & Smirke, Ed Sheeran Wins UK Copyright Case Over ‘Shape Of You’ (hyperlinks added to block quote)]

The Court’s whole opinion is available here, and worth reading, as it addresses (and even to a certain extent cleans up) the sort of loose ends noted in previous posts.

The very fact that we are discussing in 2022 a recent decision addressing these same issues, and have been seeing these cases over and over again, suggests that my 2016 conclusion has been proven true:

So, as we began, we end, quoting some of Stairway to Heaven’s lyrics–“…And it’s whispered that soon, if we all call the tune, Then the piper will lead us to reason…”  While some have concluded, with some accuracy, that the Stairway to Heaven verdict “created a sharper, clearer line in terms of what is protectable and what is not in music,” a note of caution must sound.  We still must be led to reason.  That verdict is not a test or a precedent that can easily be applied to other cases unless an appellate court affirms that result with an appropriate explanation of the legal standards to be applied in such cases.  For now then, we can only imagine the exact parameters that such a court may set.  “Ooh, it makes me wonder.”

So, though we cleaned out the Sheeran matter this spring, expect the need to repeat these tasks as to other songs in next year’s spring cleaning.

Easter Eggs Can Be Messy: Spring cleaning certainly has a connection to Easter in certain religious traditions.  There are also Easter connections in intellectual property, especially around Easter Eggs, the real kind and the hidden virtual kind snuck into a previous post.  As to the real kind, you can check out some Easter Egg related patents here.  But as to the virtual kind often implanted into video games as bits of fun pointing, or homages, to other works, problems can arise.  Because they often reference other works or artists, issues of infringement and fair use can get scrambled into those planted paschal points “[i]f a developer extracts an exact model of an asset in another game or clearly recreates its existing design.”  So, just as there are tips and tricks for creating the best real Easter Eggs (or Pysanky), clear instruction and processes are needed, “as this process can get messy”  with real Easter Eggs or virtual ones.  Avoiding messes, legal or otherwise, is usually good.

The Difference Between General Day-To-Day Cleaning And Deep Or Spring Cleaning: Some have said that one needs to “[h]ave a good communication” plan with those helping you declutter “to establish when spring cleaning is done.” Of course, often, the best communication plan is just to “Speak your truth quietly and clearly” and to “Enjoy your achievements as well as your plans. Keep interested in your own career.”  So, I’ll just say, “I’m done for now,” and “until next time.  I enjoyed writing this, and look forward to my next chance to address interesting intellectual property issues here.”

‘Til then, remember “spring cleaning is as much a ritual as a chore, an opportunity for reflection and re-evaluation….Spring cleaning requires that we take time to take stock of not only what needs to be done—…but also of our philosophical approach to cleaning in general.” See Slate, Spring cleaning: It’s an antiquated ritual—but it’s never been more important.  So “internalize a clean sensibility that carries [us] throughout the rest of the year” with “both a set of methods to be learned and as a kind of mindfulness to be practiced. All the know-how in the world is useless if you don’t know how or where to apply it.” Id.