July 2024 – IP Musings

Revisiting Trade Dress Protection

Trademark policy is a tool to facilitate consumers to distinctly identify the source of goods or products that they like. Its goal is to ensure that a consumer who wants to specifically use product x is not confused or deceived into using product y, believing it to be from the same source and hence of the same value- be it aesthetic or functional, as product x. To fulfill this goal, law makers have deemed it fit to confer exclusionary rights in the use of such source identifying attributes– often affixed to the products- to those who provide these products. What are these source identifying attributes? The legislators seem to understand these attributes to include verbal and non-verbal identifiers.-n“any word, name, symbol, or device” or any combination of these tools of source identification that a provider may use in conjunction with their product to facilitate recognition- as being excludable.

The underlying purpose of this exclusionary right is to protect the interest of consumer in being able to firmly identify the source, and to protect the interest of the provider in being able to use such distinctive identifiers enabling consumers to identify the source. It logically flows from this that such exclusionary rights are only to be extended to those attributes that are primarily and specifically used for identifying the source of the product. However, by broadly interpreting the meaning of “symbol” and “device”,[1] courts have rendered even attributes that generally are not considered by consumers to identify source, as being source identifiers or performing a source identification function.[2] Courts have reasoned this on the basis of the capability of such attributes to have a source identification function,[3] without investigating into whether – when divorced from the word mark and/or the distinctive logo (that primarily have source-identifying functions)- these attributes are even considered by consumers while identifying source, or not.

The upshot? Exclusionary rights have been extended to even (i) attributes which- even when divorced from the word mark or the logo- almost never actually have a source identification function but are merely attractive design features with their own non-source identifying significance (and its own legal tool of enablement – copyright law or design law)[4]; (ii) attributes which sometimes form part of the product- thus allowing an exclusionary right over the product itself- a product which may have use significance, although not functional utility in its strict sense;[5] (iii) attributes which flow from the experience of the product – its sensory characteristics- aesthetic, auditory, olfactory.[6] These although, almost always are a subject of originality and creativity and sometimes even novelty, are rarely primarily performing a source identifying function, especially when used in conjunction with a word mark or a logo. Most of the time, the originality of their sensory expression is excludable through other forms of intellectual property – copyright law, design patent law etc.- however given trademark protection, at least theoretically is perpetual (although we have the genericide doctrine), providers would often love to double up these exclusionary rights by portraying these attributes to also be source identifying.

A further radical upshot, with potential to be dismissed as being a conspiracy theory- Almost all of visual and auditory copyrightable subject matter could potentially be overlapping with trademark law- thus providing double and perpetual exclusion of works which are socially valuable to be accessed and used. The way trade dress protection has expanded- it is not inconceivable that Taylor Swift seeks trade dress protection over her songs arguing that – Hey! Someone listening to my song will immediately identify that this song comes from me, or Banksy seeks trade dress protection arguing – Hey! Anyone who sees that art on the train would obviously know that it’s me who has done that. We all know this has nothing to do with the goals of trademark policy and why it exists.

Such analysis is not limited to product configuration but extends to product packaging too- where even when divorced from the wordmark and the logo, the packaging would mostly be attractive – and that would be its primary function as against source identification -which automatically flows from that attraction because we would want to know who produced this attractive packaging. But such secondary potential of source identification is possible with all subject matter of copyright law as well. I might like a song by Radiohead because of its sensory attributes, but I would then associate Thom Yorke’s voice with him as a byproduct of the attraction. This source identification function although does not seem to be the concern of Trademark law because it directly flows from the song (product configuration) or its amazing sound recording (product packaging), as against a specific attribute peculiarly intentioned to help a consumer identify source. That specific attribute is the concern of trademark law. Put another way, how much ever Thom Yorke wants to trademark his sound, because as soon as we hear it- we know it distinctively is Thom Yorke’s attractive voice, that is not the kind of source identification trademark law protects – by providing an exclusionary right over the product itself.

If at all trademark protection is to be extended to product packaging or product configuration as source identifiers, the relevant enquiry could be:

Divorced from verbal and logo- identifiers which primarily serve as source identifiers- does the consumer, almost inevitably, associate the sensory attribute to be source identifying, as against anything else?

Maybe in the absence of the logo and the word mark on the product packaging, I would have to rely on distinct design features or packaging color (product configuration or product packaging), but when the product already has specific source identifiers in the form of a word mark and/or a logo, associating any source identification function on the trade dress/ design- be it of the product or the packaging- is a leap, which, on an objective basis, average consumers would not rely on.

This is where secondary meaning comes at play. If there is a product which does not have a specifically dedicated source identifier but rather relies upon its product packaging or product configuration to perform an identification function, and the consumers realize this and rely upon the said attribute over time (hence secondary meaning), there could be enough of a claim to extend source identification to trade dress. But this is as rare as it gets, and this is why, as Glynn Lunney recognizes- the legislators did not envision this, specifically including “packaging” or “configuration of goods” in the definition of a trademark only in the secondary/supplementary register and not for purposes of the principal register.[7]

Thus, J. Breyer’s broad reading of “symbol and device” in Qualitex, to conclude – any and everything that could possibly, inspite of the existence/ or in the absence of a dedicated source identifier, be a source identifier – is overzealous interpretation- completely ignoring the purpose and the interest sought to be achieved by the tool of trademark policy. It, as Lemley and Dogan argue, is a tenuous presumption of consumer behavior.[8] Put concretely, in my opinion, it is not objectively reasonable to assume that inspite of the boldly written distinctive name- Reese, in its distinctive style, font and logo-like characteristics, the consumer would continue to rely on its orange-colored wrapper to identify its source. And even if the consumer unbelievably loves associating the color- orange with Reese- thus showing certain amount of secondary meaning, still- so long as primarily specific source identifiers in the form of the logo or the word mark exist, there is no reason to allow excluding some other chocolate manufacturer- with a different logo and word mark to use the color orange on its packaging.

There is thus a need, and a strong one, to get rid of the propertarian impulse that provokes an exclusionary right on packaging or product design or sensory features, in the presence of other and specifically dedicated source identifiers. An exclusionary right on such features in some cases could be the domain of copyright law and in some of patent law, but in none is it a concern of trademark law and policy. When these specifically dedicated source identifiers are not present, it is only then, as a policy matter, that it could be explored whether upon finding secondary meaning- product packaging or product configuration could be rendered excludable for the purposes of source identification, or not.

[1] In Two Pesos, the Supreme Court interpreted trademark protection to extend to the total image of the business, general appearance of the product/its exterior, the décor, the menu and collated it into a single test – distinctive total image and overall appearance. The Court noted that in §43(a) or in the definition of Trademark under §45, legislators have not differentiated between a trade dress and a trademark – and hence an inherent distinctiveness approach ought to be followed, as against a secondary meaning approach. The Court said that legislators have given no basis to differentiate between a trademark and a trade dress or to not include the latter as a subset of the former. It thus differed from the logic of the 2^nd Circuit in Stormy Clime Ltd. v. Pro Group. This was applied to extend protection to the festive eating atmosphere and the interior and exterior design of a Mexican restaurant. As Glynn Lunney argues in The Trade Dress Emperor’s New Clothes: Why Trade Dress Does Not Belong on the Principal Register, 51 Hastings L.J. 1131 (2000) [Emperor’s New Clothes], the Court completely ignored the distinction between the definitions of trademark for the purposes of the principal register and the supplementary register. It was a conscious omission- conscious decision of the legislators according to Prof. Lunney, to not include trade dress for purposes of excludability through the principal register. Such excludability was wrongly first initiated by A.C. Daphne Roberts Leeds in Exparte Haig & Haig Ltd., 118 U.S.P.Q. (BNA) 229 (Comm’r Pat. 1958), and has since, according to him, begun to spiral out of control.

Even in Qualitex v. Jacobson, J. Breyer extends the meaning of symbol and device to include anything capable of carrying meaning. He logically supports this by referring to the registration and validity of shape marks, scent marks, sound marks etc. He accordingly posits if all of that is in scope, why would not the scope extend to color? Justice Breyer thus seems to, without any reasoning, accept the premise that shape marks, scent marks and sound marks are protectable. He assumes the authority of these registrations, without questioning whether they are within the scope of the interest sought to be furthered by the tool of trademark law or not- and on the basis of that presumption extends protection to colors.

[2] Graeme B. Dinwoodie, The Death of Ontology: A Teleological Approach to Trademark law, 84 Iowa L.Rev. 611, 621-622 (1999) [“Courts have protected as trade dress the design features of extensive range of products including kitchen appliances, sporting equipment, candies, bathroom fittings, sports cars, giant gumball machines, furniture, hardware items, fashion accessories, lamps and even golf holes.”] See also, Justice Breyer in Qualitex, where he states- “The courts and the Patent and Trademark Office have authorized for use as a mark a particular shape (of a Coca–Cola bottle), a particular sound (of NBC’s three chimes), and even particular scent (of plumeria blossoms on sewing thread). See, e.g., Registration No. 696,147 (Apr. 12, 1960); Registration Nos. 523,616 (Apr. 4, 1950) and 916,522 (July 13, 1971); In re Clarke, 17 U.S.P.Q.2d 1238, 1240 (TTAB 1990). If a shape, a sound, and a fragrance can act as symbols why, one might ask, can a color not do the same?”

[3] In Two Pesos, the Court prominently focused on capability of having a source identification function as against whether the attribute is generally considered to be performing a source identification function or not. The Court held any attribute that is an “inherently distinctive dress that is capable of identifying a particular source of the product” to be eligible to be excludable. Glynn Lunney argues against this in Emperor’s New Clothes, where he asserts- “First, the mere possibility that trade dress can serve a trademark function does not mean that a product feature or design is serving as a trademark in any given case. Yet, the recognition of trade dress as principal register subject matter encourages the assumption that some aspect of a product or its packaging claimed as trade dress is necessarily serving a trademark function. This assumption is unwarranted, particularly when a party claims a product’s features or configuration, rather than its packaging, as trade dress As the Restatement (Third) of Unfair Competition has recognized, consumers seldom perceive and rely on product configuration or product features as a source of information regarding the product, rather than as an aspect of the product itself.”

[4] In Christian Louboutin, the use of an aesthetic product or its aesthetic feature was protected. In Wallace, the use of the silverware, in case it was a part of a competitive market, would have been held to be excludable. In Qualitex, the particular product and its color feature was protected. In Best Cellar, the interior design of a wine cellar was held to be protectable, inspite of ambience being one of the core elements of the market of the product. Lemley and Buccafusco argue this to be an awkward overlap with Copyright law which is completely undesirable and comes with much more costs- and should be scrapped. See, Mark Lemley and Chris Buccafusco, Functionality Screens, 103(7) Virginia Law Review 1293, 1373 (2017).

[5] The decision in Wallace Int’l Silversmiths, Inc. v. Godinger Silver Art Co. clearly shows this – where the Court falls in what Richard Stallman calls intellectual property law’s seductive mirage- conflating the propertarian impulse associated with copyright law- with the extremely distinct purpose of trademark law. In Wallace, the Court rejects, what I believe to be the sound rationale of the 2^nd Circuit in Pagliero to hold that “Under Pagliero, the commercial success of an aesthetic feature automatically destroys all of the originator’s trademark interest in it, notwithstanding the feature’s secondary meaning and the lack of any evidence that competitors cannot develop non-infringing, attractive patterns. By allowing the copying of an exact design without any evidence of market foreclosure, the Pagliero test discourages both originators and later competitors from developing pleasing designs.” This extremely significant portion of the Wallace decision shows how court is confused about the difference between the trademark and the copyright doctrine and its goals- and extrapolates copyright’s logic on a trademark issue. The court limits the doctrine of aesthetic functionality as a defense to only when market competition is being foreclosed- another logic that flows straight from the logic of the merger doctrine and the scenes a faire doctrine in copyright law- without understanding that most of these aesthetic feature are actually valuable for their attractiveness, and what the actual subject matter of trademark protection is, is the name or logo that accompanies it for the purpose of associating this attractiveness with the one who provides the attractive work. The court also relies on Illustration 6 of the Restatement which says- “A manufactures china. Among the products marketed by A is a set of china bearing a particular “overall” pattern covering the entire upper surface of each dish. Evidence indicates that aesthetic factors play an important role in the purchase of china, that A’s design is attractive to a significant number of consumers, and that the number of alternative patterns is virtually unlimited. In the absence of evidence indicating that similarly attractive “overall” patterns are unavailable to competing manufacturers, A’s pattern design is not functional under the rule stated in this Section.”- In my opinion- by adopting this rationale, the Restatement and the Court in Wallace has conflated the subject of copyright protection and its rationale supported by Clause 8 or the IP Clause of the Constitution, with the subject and object of trademark protection- which is completely distinct and is more of a source identification function with roots in the commerce clause. See also, Mark Lemley and Chris Buccafusco, Functionality Screens, 103(7) Virginia Law Review 1293, 1346-1347, 1373 (2017).

[6] Justice Breyer in Qualitex, where he states- “The courts and the Patent and Trademark Office have authorized for use as a mark a particular shape (of a Coca–Cola bottle), a particular sound (of NBC’s three chimes), and even particular scent (of plumeria blossoms on sewing thread). See, e.g., Registration No. 696,147 (Apr. 12, 1960); Registration Nos. 523,616 (Apr. 4, 1950) and 916,522 (July 13, 1971); In re Clarke, 17 U.S.P.Q.2d 1238, 1240 (TTAB 1990). If a shape, a sound, and a fragrance can act as symbols why, one might ask, can a color not do the same?”

Even J. Scalia in Wal Mart Stores, to avoid disagreeing with Two Pesos, teleologically finds (awkwardly- as noted later in Best Cellars Inc. v. Wine Made Simple) that “Two Pesos is inapposite to our holding here because the trade dress at issue, the decor of a restaurant, seems to us not to constitute product design. It was either product packaging—which, as we have discussed, normally is taken by the consumer to indicate origin—or else some tertium quid that is akin to product packaging and has no bearing on the present case.” It is unfathomable as to how the interior of the restaurant does not function as a product design – because in a restaurant, the product is not just the food and drinks but also the ambience- which significantly drives consumer choice and motive of visit.

[7] Glynn Lunney, Emperor’s New Clothes, supra notes 1 and 2.

[8] Stacey L. Dogan & Mark A. Lemley, Trademarks and Consumer Search Costs on the Internet, 41 HOUS. L. REV. 777, 777 (2004) (“[C]ourts have stretched trademark doctrine . . . based . . . not on the normative goals of trademark law, but on unexplored instincts and tenuous presumptions about consumer expectations and practices.”).

Indian Copyright Law and Generative AI: Part 3- The Output Stage:

Co-authored with Sneha Jain

In the first two posts in this series, we addressed Copyright concerns raised by Generative AI, primarily at the stage of training the LLM as well as using certain datasets. In the first post, we considered whether storing copyrightable works for training purposes is an infringing reproduction. In the second post, we analyzed whether extracting meta-information or using meta-information embedded within copyrighted works for the purposes of training the model would be infringing of any of the exclusive rights of the copyright holder, including when such content is scraped out of paywalls. We also briefly evaluated the impact of the codified exceptions and limitations under Indian Copyright law and their implications at the training stage.

In this third post, we are finally moving to the Output stage- or the downstream side of things. We address two questions here:

Would the output generated by the AI Model, basis a query from the user, infringe the Reproduction Right of a copyright owner, whose work was inputted at the training stage?
Would the output generated by the AI Model, basis a query from the user, infringe the Adaptation Right of a copyright owner, whose work was inputted at the training stage?

Similarity in Output and the Reproduction Right

The Reproduction Right under Section 14 of the Copyright Act protects the primary market of the original work [for derivative works like sound recordings and cinematograph films, a distinct right to exclude the making of a copy of the said work is provided. We are currently not concerned with that]. While analyzing the contours of this Reproduction Right, courts use the test of substantial similarity, to conclude whether the Defendant’s work, overall, is substituting the primary market of the owner of the Plaintiff’s work. In the seminal decision of R.G. Anand v. Deluxe Films [AIR 1978 SC 1613 [52]], the Supreme Court held that “One of the surest and the safest test to determine whether or not there has been a violation of copyright is to see if the reader, spectator or the viewer after having read or seen both the works is clearly of the opinion and gets an unmistakable impression that the subsequent work appears to be a copy of the original.” This test clarifies that unless the output generated by the model is substantially similar, i.e., unmistakably similar or a literal imitation of a previous work/ a work that is a member of the dataset, it would not infringe on the Reproduction Right of the Plaintiff.

As many have argued [see here and here], the possibility of an LLM model trained on a dataset to produce an output that is unmistakably similar or a literal imitation to any one of the inputs of the dataset, is considerably low, although it cannot be ruled out due to inherent fallibilities of LLMs as well as the potential mindset of the developer.[i] Even if the prompts inputted as queries are very specific, yet the possibility of output, that so closely resembles a single individual input that the model is trained on, is low, unless the model is specifically trained to produce regurgitations from its memorizations. Prompt injections, however, change this. Prompt injections mean inputting certain carefully designed prompts to trick the model of manipulated Gen AI into disregarding its content generation restrictions.[ii] These are often in violation of user terms and conditions. Susceptibility to such manipulation is an inherent fallibility of Generative AI and here to stay, however it requires carefully and wickedly engineered prompts, often in violation of user terms, to exploit this vulnerability of the model.

In any case, if the output produced by the model is a literal/substantial imitation of any of its training inputs, of course there would be a claim of violation of the exclusive Reproduction Right i.e., Section 14(a)(i) / (c)(i) r/w Section 51(a)(i) and Section 51 (a)(ii) of the Copyright Act. However, who will be liable for this is a different question that we shall explore in Part 4 of this series.

What we, although, need to be mindful of is that liability may only arise for violating the reproduction right if the output is substantially similar to the input. The Reproduction Right only protects against substantial similarity, which as the Supreme Court in R.G. Anand (supra) holds means similarity of the nature that will result in a situation where a person when looking at the two works as a “whole” would conclude unfair appropriation. The similarity may be in respect of certain fragments or hook parts of the original work, however, if- when looked as a “whole”, a lay person does not think it to be literal imitation or thinks of it to be a different work, the same would not be infringing. [Para 53 and 71]. In simpler terms, “substantial” has been held to mean a part of the original work which is qualitatively or quantitatively so significant that inspite of merely being a part, it makes the whole of the two works seem similar, thus reducing the differences to plain noise, and giving an impression of it being a colorable imitation.

As per a couple of interim orders of the Bombay High Court in Ram Sampath v. Rajesh Roshan and ors. [2008 SCC OnLine Bom 1722] and Twentieth Century Fox Film Corporation v. Sohail Maklai Entertainment Pvt. Ltd. and Anr. [2010 SCC OnLine Bom 1577], copying of even fragments of works, which may be “hooks” would be infringing, terming the test to be where an illiterate person thinks that “Hay! I have heard this tune before”, i.e., is reminded of the former tune.

The correctness of the legal position of these interim orders, when analyzed in context of the binding judgment in R.G. Anand (supra) is doubtful. For instance, I may think of so many songs to have sequence of notes that are similar to the basic hook note sequence of “Hey Jude” by The Beatles, embedded within their work. However, that would not mean that the analysis of similarity would have to be divorced of the context of the work looked at/compared as a “whole”. Such a test ignores the material context surrounding the fragment, and its contribution to the originality of the whole work over which copyright rests in the first place. Such an inward fragmentation approach to the Reproduction Right, expanding exclusivity to include even fragments or elements of the work divorced from its context, is arguably outside the scope and purport of the right. In other words, the “substantially similar” test mandates a holistic comparison of the works, as against comparison of certain elements (which may be qualitatively significant) of the work, divorced from its overall context.

In any case, for our purposes, it is noteworthy that Courts may hold reproduction of notable or qualitatively essential fragments of works at the output stage to be infringing relying upon the aforementioned interim orders.

Importantly, however, the Reproduction Right does not extend to the the basic themes of the work, style of the author, or the generic storyline of the work, but only the expression as a whole. The former constitute ideas and are not protectable.

The Adaptation Right

When a claim under the Reproduction Right fails, the focus shifts towards the “Adaptation Right” which, due to its literal phrasing, has a seemingly larger scope, encompassing uses of works which even alter or re-arrange the original so long that it retains the core of the primary expression. The connotation, as commonly understood, is similar to extending the primary market of the copyright owner to works that are based on a previous work [creation of a secondary market]. However, arguably this common understanding is at odds with the purpose of the Adaptation Right.

In fact, the Adaptation Right for original works (the said right is not available for derivative works like sound recordings and cinematograph films), as originally conceived under the Indian Copyright Act, limited the secondary market of the Copyright owner to conversions, translations, abridgements and transcriptions. [Section 2(a)(i)-(iv) of the Copyright Act]. What this arguably indicates is that the focus of the Adaptation Right was on the same expression (originally produced by the owner of the primary work), communicated in a different format / medium. In other words, originally conceived, the Copyright Act created a secondary market for the owner of a work but limited its scope to representations of the identical work in a secondary format. However, with the Amendment to the Copyright Act in 1994, the scope of the Adaptation Right was expanded to include any use involving re-arrangement or alteration [Section 2(a)(v)]. This was, according to the Notes to Clauses to the Amending Bill, added to bring the Act more in consonance with the Berne Convention, which provides in Article 12, exclusive rights over rearrangements and alterations.

However, an expansive reading of alteration has potential to swallow all transformative depictions, using elements of prior works, including meta-information embedded within them. This has, in fact, been clarified by the Division Bench of the Calcutta High Court in Barbara Taylor Bradford and Anr. v. Sahara Media Entertainment Ltd. and Ors [2004 (28) PTC 474 (Cal)], which consciously restricted the scope of the word “alter” to minor alterations, which do not transform the core purpose and character, as well and meaning and message conveyed by the overall work. Holding against full internalization of value even through use of fragments of a work, the Division Bench of the Calcutta High Court held that a purposive interpretation of the definition of Adaptation under Section 2(a) of the Copyright Act, clearly points towards a limited reading of “alter” to only be used in cases of works which cannot ideally be represented in a different medium- for instance computer programmes, as well as to reduce its purport to slight or minor changes which do not transform the work. The Calcutta High Court held:

“125. This argument of Mr. Sen deserves full attention. Rearrangement not being very much in issue in our case, we put to Mr. Sen the question what the meaning of the word “alteration” in this sub-section was. Did it mean mutation or transformation, and did it include such extreme changes also ?

126. Mr. Sen could not maintain any argument of this extreme form, that by introduction of this amendment, the Copyright Law has been so altered in India, that if a literary work is taken by somebody other than the author, and it is so changed and muted as to make it transformed, and a different work altogether, even then copyright would be infringed. Such an interpretation of this sub-section would make nonsense of the Indian Copyright Law. A totally changed thing can never be termed a copy of the original thing. How can copyright affect the right in something, which is not related to the protected work’s copying or reproduction at all ? Pursuant to our queries, Mr. Sen referred us to several Dictionaries. Dictionaries are the last resort of Judges who either find it difficult to give a meaning to a particular word, or, having deal with all the other principles and authorities, and just for the sake of completeness, refer to these voluminous and useful works.

127. On the basis of what we saw from the Dictionaries, and on the basis of common knowledge of the English language, it appears to us that the word “altered” is capable both of meaning slight changes and of meaning extreme changes.

….

131. In our opinion, the large change meaning cannot be ascribed to the word “alter” in Section 2(a)(v) of the Copyright Act, 1957, because it renders the interpretation absurd. Minor change, slight change, not making the original something beyond recognizable possibilities, changes in some of the details, this would be the meaning that would fit the word alter in Sub-section (v). In our opinion this sub-section might have a very good bearing when applied to copyrights of computer programmes and databases, but in relation to literary works, the sub-section does not bring in any very great changes in the law; one can at best say that the subsection would make it slightly, we repeat only slightly, easier for an author or an authoress to establish infringement, after its introduction, than it would have been before the introduction. It is often misleading to speak of percentages in legal matter, but the difference made by introduction of this sub-section for literary works is the sort of difference that exists between two mathematics answer papers, one of which gets, say, 46% and the other 52$. There is no reason why we have mentioned these two figures but if this clears the understanding even a little bit, then the illustration would have well served its purpose. In our opinion, the view that we take of the strength of the prima facie case of the plaintiffs, cannot be altered (meaning radically changed) by the introduction of this subsection only, and by reason merely of the presence of this single new sub-section.”

Even in UK, which is a fully Berne compliant country, adaptations are limited to medium/format changes, and alterations/rearrangements are only considered adaptations for computer programmes.[iii]

This interpretation is arguably in line with the decision of the Division Bench of the Delhi High Court in University of Cambridge v. BD Bhandari [2011 SCC OnLine Del 3216], which protects uses of works for “transformative purposes” or a “transformative character”. It ensures that the Adaptation Right, Reproduction Right as well as the transformative use exemption (3 distinct concepts within the same Act), harmoniously co-exist without impinging on either of their scope and purposes.

In light of the above, output produced by Generative AI models which are merely based on inputted datasets/works, would arguably not ipso facto be hit by the Adaptation Right, unless the output is essentially the same/substantially similar work in a different format of expression, or the output even in the same format merely includes trivial/minor variations which do not rise to the level of transforming the character of the work.

It may be noteworthy to mention that no analogy can be drawn to the “based on” framing of the Derivative Works Right in the United States because of two reasons:

The Derivative Work Right in the United States self-proclaimedly is beyond Berne, following the logic of expanding exclusionary rights to all channels which expose even fragments of the primary work to the public. The US had a similar restricted framing in its 1909 Copyright Act, however it rejected the same and rather adopted a broader and more open-ended Derivative Works right in its 1970 Statute. As Prof. Pamela Samuelson documents,[iv] at least one publisher wanted the Derivative Right to cover more than Berne-Style adaptations as an “adaptation” oriented framing cut down the intention of excludabilities covering any work “based upon” a preexisting original work. India refuses this and is fully Berne compliant.
Even in the US, as many scholars argue, the scope of the Derivative Right is restricted to transformed forms/formats and not all kinds of alterations or outputs based on a previous work, which impinge on the transformative use doctrine within its Fair Use doctrine.[v] Moreover, the Ninth Circuit in the United States has rejected the “based on” understanding of this right, and has reiterated that to constitute a derivative work, the “infringing work must incorporate in some form a portion of the copyrighted work,….[and] must be substantially similar to the copyrighted work.” [Vault Corp v. Quaid Software Ltd., 847 F.2d 255, 267 (5^th Cir. 1988), quoting Litchfield v. Spielberg, 736 F.2d 255, 267 (9^th Cir. 1984)].

Finally, as an epilogue to this piece, we would like to suggest that when thinking about copyright liability of allegedly infringing outputs, one needs to be mindful of the fact that even if the act of creating substitutes of human creativity, based on datasets that are exemplars of human creativity, seem “harmful” from the point of view of the copyright owner, more often that not, they are not copyright’s concern, unless the expression is actually copied. Independent creation that is not copied is infact fostered in copyright law as against constrained even when it uses the meta-embedded information within previously produced expressions. It increases competition, which is desirable in a cultural and semiotic society. Hindering the same, using the tool of copyright law, basing it on an argument of existential crises for creative industries [an argument non-existent in copyright jurisprudence] is undesirable. We rather need to look towards more social solutions of providing external opportunities for creative industries to not lose out in competition to AI, by using it as a tool, or by political changes like social basic income, as against shrugging Gen AI models which significantly enrich our cultural realm.

[i] Ido Kilovaty, “Hacking Generative AI”, 58 LOY. L.A. L. REV __ (forthcoming), available at <https://papers.ssrn.com/sol3/papers.cfm?abstract_id=4788909>. See also, Katherine Lee, James Grimmelmann, A. Feder Cooper, “Talkin’ Bout AI Generation: Copyright and the Generative AI Supply Chain”, Journal of the Copyright Society of the United States (forthcoming 2024) < https://arxiv.org/pdf/2309.08133>.

[ii] Yangyi Chen, “Exploring the Universal Vulnerability of Prompt based learning paradigm”, arXiv:2204.05239v1 [cs.CL] 11 Apr 2022, available at <https://www.researchgate.net/publication/362254964_Exploring_the_Universal_Vulnerability_of_Prompt-based_Learning_Paradigm>; See also, Ido Kilovaty, “Hacking Generative AI”, 58 LOY. L.A. L. REV __ (forthcoming), available at <https://papers.ssrn.com/sol3/papers.cfm?abstract_id=4788909>.

[iv] Pamela Samuelson, The Quest for a Sound Conception of Copyright’s Derivative Work Right, 101 GEO. L.J. 1505,1512-1513 (2013).

[v] Talha Syed & Oren Bracha, Copyright Rebooted, Presentation at the 2022 Stanford University Law School Intellectual Property Scholars Conference (Aug. 12, 2022) (unpublished manuscript) (on file with author), See also: Akshat Agrawal, Andy Warhol Foundation v. Goldsmith: A misnomer of a debate, PhilIPnPolicy Blog [22^nd October 2022], available at < https://philipandpolicy.wordpress.com/2022/10/22/andy-warhol-foundation-v-goldsmith-a-misnomer-of-a-debate/>.

Understanding IP and its Relationship with Natural Rights ft. Prof. Talha Syed

I did not end up posting anything on World IP Day this year. So here is a consolation for that. I am leaving all of you with a beautiful and provocative portion of the inimitable Prof. Talha Syed’s [my mentor, supervisor, and favorite law professor] speech at UC Berkeley as part of a debate (linked here). I hope you enjoy:

“For me, intellectual property rights—you have to begin with the basic idea that they are rights to exclude others from using a resource—information or knowledge or culture—which resource is intangible. And because it’s intangible, it’s nonrival, and because it’s nonrival, many people can use without anyone degrading anyone else’s use. So, it’s really unfortunate, unfair to restrict access on that. For me, the harm is that it restricts access to something which, once created, should be available to all because it does not derogate from anyone’s use that others share it. That’s the miracle of intangible resources.

Having said that, there are both fairness and incentive arguments for why the creator might be owed a decent return for the effort that went into creating something that’s socially valuable and that, if we don’t get that decent return, it might be that others will be discouraged from doing so, and we might get less innovation. That’s my basic, very modest framework. Access restrictions on intangible resources are a default bad idea But some way of generating those resources may be required through some legal policy to promote fairness and robust production and robust innovation.

What the ultimate principled basis of that is we could explore, and I’m happy to discuss. But it’s this mix of sort of basic ideas of wide access and fair returns that motivates my view that intellectual property rights, like some other innovation policy mechanism, should be evaluated in terms of how well they enable wide access and robust production and fair, equitable returns.

And on that, I’m not committed to intellectual property rights as being the best scheme or to how strong they should be. My own view is that current rights are, through the roof, way too strong. There’s a massive overreach. There’s a very clear, political economy story why that happens. It’s completely unfortunate, and it’s expanding to this day. And what’s happening on the internet with criminal enforcement and so forth makes it all even much worse.

So, on all that, we, I think, are not too far apart, although one could have various sort of modest disagreements. But where we disagree is sort of the foundational basis of our positions. And so, on this, I don’t have much time, so I’m going to just try to say a few things. So, Mr. Kinsella has what he claims is a sort of a libertarian, principled position based on natural rights arguments.

Now, to me, there’s a few problems with this.

First of all, it’s always puzzling to me why it’s called the libertarian position when it’s really the propertarian position. It’s not about freedom. It’s about property rights. Well, then say that. It’s a propertarian position. It’s not about an unvarnished, principled commitment to freedom. It’s about the guiding motif being something called property rights. Now, on the idea of property rights, I just want to say three things and see if I can get it in in this time.

First, of all, natural rights. I’ve never understood what people mean when they say natural rights. To me, rights are claims against others. Mr. Kinsella seems to agree. There are no rights on a desert island by yourself. Rights are claims against others. Rights are social relationships.

Now, the basis of those rights can be in various different kinds of arguments. Those are arguments. Calling them natural is just cheating. Where do they reside? They’re not your eyesight. Eyesight might be natural for some. To call something natural is a dishonest way of trying to get pre-modern warrant for a normative argument as quasi-non-normative. It is, in a word, bullshit.

There are rights, which we can respect based on reasons. We have to give reasons for those rights. When the reasons are given, they can be more or less persuasive. Calling them natural does nothing to the argument except try to convince you that it’s not a normative argument at all. It’s like a physical act. Well, there’s a chair there, don’t you know. Well, okay, good. But that doesn’t tell me about whether the chair is nice or not nice, pleasing or not pleasing, should be sat upon or not, whose chair is it, and so forth.

Those are normative arguments. Historically, until about 1700-1800s, normative arguments were couched in the language of time inmemorial, divinity, revelation, and so forth, or something called natural rights, which was a fusion of them, natural reason, according to Locke in the Second Treatise. Ultimately, natural reason is just reason, and I’m fine with arguments from reason. But putting this label “natural” on it as if it’s not any longer something human, something social, something historical, something normative, is a cheat, pure and simple. It is an attempt to deny the inescapable reality that rights are social relationships, which we have to argue about to determine which interests merit protection over which other interests.

I have no problem saying the argument should be grounded in something called right reason of the Second Treatise, but then you have to tell me what the premises and principles of that right reason are. So let me go to that second point in a moment.

On natural rights, I think the word “natural” has mental-blocking properties. The minute you say natural right, you’ve made it seem as if you’re making an argument of individuals outside of society. All rights are social, period, conceptually and institutionally. That’s just a truth. There’s nothing you can do about it except cry. But that’s what it is. All rights are social. Natural rights theorists have, for most of history, argued that natural rights can be justified in unilateral, individualist ways. Any time you get an argument that justifies someone’s rights in a unilateral, individualist way, without taking into account competing bilateral claims, it’s someone who doesn’t understand what a right is conceptually and institutionally. And that misunderstanding is facilitated by the rhetoric of natural, which has had, historically, that role. Second, “natural” also has the rhetorically loaded character of inviting you to believe that this is something you observe as an empirical claim rather than something that you argue for as a normative claim. The minute someone says, yeah, of course, all rights are social and normative and backed in normative reasons, we’re fine. Then the word “natural” plays no role. If you say, well, that’s what the word means, then my question is, well, why use the word “natural?” What does natural add except to say certain reasons do not depend on their recognition by certain contingent legislatures? Well, that I agree with. Of course, I absolutely agree that rights are not just the conventional positive legal rights that our legal system may or may not recognize. Of course, I agree we all have the right and obligation to be critical of the existing rights of a legal regime according to reflection and reason. Of course, that’s right. Anyone who doesn’t think that besides Bentham is crazy. But that’s a different view. The word “natural” doesn’t add anything.

On that second point, the idea that all rights are property rights strikes me as patently bizarre. Either it’s going to be tautologically true, because we’re going to empty the concept of property rights of any content and meaning, in which case what’s the point of the exercise? Or it’s going to be false because I don’t understand what it means to say that my interest in being able to express myself should be protected as a right against other people’s interests in not hearing what I say, and being able to violently stop myself from speaking.

Oh, well, that’s really a property interest because you’re using your vocal organs, and you own them. I don’t know what that means. I don’t know how that helps anything. I don’t know what that means except to illicitly try to reduce all human interests to the logic of the market. And that’s, to me, a very historically specific recent phenomenon, and when libertarians, or what I call propertarians, think it is somehow true from time immemorial, they’re just wrong.

There are no such arguments until very recently on the stage of history because the social form that those arguments track is very recent on the stage of history. Propertarian mindsets are the mental expression of people who live in capitalist societies. That’s fine, but that shouldn’t be then naturalized into some sort of trans-historical, human phenomenon through the gobbledygook of natural and blah, blah, blah. It just doesn’t make sense. It’s dishonest. It’s patently absurd. The argument should be made on their own terms, not with the implication of unhelpful metaphors, which try to hide the ball.

Last point. The rights of property that are being claimed as absolute and sacrosanct here are the rights in one’s body, self-ownership, and the rights in external resources based on first occupancy, fundamentally [then there’s contract and rectification]. But that’s a very strange argument, first occupancy. The first person who delimits or does something that no one else has done now has it. Locke never made that argument fully. He thought that that argument by itself was too thin a read, and he was right because, of course, by itself, that can’t be enough, just being there first.

What if you’re there first in a lot of places, and you don’t leave “enough and as good” for others? Well, there’s a problem. Locke understood that. The propertarian literature has struggled with this from the beginning. How do you deal with the in-built limit on property rights in external resources based on the “enough-and-is-good” proviso? There is a whole industry on talking about this. What does it mean to be born into an Earth that’s already been occupied and owned by everyone? What is all this about? And fundamentally, I can’t really argue against this at this time, I’m happy to argue it against it at length.

But I just want to leave you with an idea that, fundamentally, this whole mindset is a bizarre idea that humans are born fully form, self-autonomous beings at birth. They are not. They are born vulnerable, fragile, deeply dependent, social beings all the way down. Adults at some point in a market society come to resent this reality and deny it deeply by pretending something else is the case and then invent a series of fictional just-so stories which none of which have any grip for anyone who’s not already in the grip of the idea, the infantile desire to escape the reality of society and history and go back to some primordial, fictional story in which there are absolute rights, sacrosanct between self-governing sovereigns who relate to each other as pinball machines and can’t define their rights in any plausible way.

There is no such thing, period, as an absolute right because rights are social relations, and to have an absolute right would mean to have an interest protected against any other interest absolutely. And that is conceptually and institutionally not on the cards. Okay, I’ll stop.”

Hope you enjoyed it. All of this is of course “owned” by Prof. Syed. It is his “vocal organs” after all!

Share this:

Share this:

Share this: