Aside – Page 4 – 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>.

[iii] Section 21 of the Copyright Designs and Patents Act, 1988.

[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!

Indian Copyright Law and Generative AI: Part 2- Transformative and Extractive Use

Co-Authored with Sneha Jain

Having first considered the question of whether storing copyrightable works for training purposes is reproduction that amounts to copyright infringement under Section 51 of the Indian Copyright Act, 1957, in this second post of this series we will specifically be looking at transformative and extractive uses, applicability of exceptions and limitations under Indian Copyright law, as well as implications of Anti-Circumvention laws.

Transformative Use

India does not recognize the transformative use exception to copyright infringement within the parameters of Section 52 of the Copyright Act. However, the Division Bench of the Delhi High Court in University of Cambridge v. BD Bhandari [2011 SCC OnLine Del 3216][i], has held use of a work for purposes of making a guidebook to be a substantially different purpose from the purpose for which the original work of the Plaintiff was made. The Court recognised this purpose to be a transformative purpose, which did not impinge upon the expressive purpose for which the Plaintiff had an exclusive reproduction right. The reproduction right, or its scope, was thus, arguably restricted by the Court to the expressive purpose for which the original work was curated.

Can a similar analogy be extended to use for training genAI models, where genAI developers argue that not even a single human being is exposed to the expressive content of the work? Not even the Large Language Model (LLM) reads or experiences the work in its expressive sense, and storage of a single copy merely enables the foundational model to discern, among other things, the “structure, syntax, and semantics of language,” including “grammar, sentence construction, and how words and phrases are related to each other” in order to facilitate the generation of “coherent and contextually appropriate output”[ii].

Unlike the United States where there is a contrast in statute- i.e., the Copyright Act, 1976 itself provides for transformed forms of works to be protectable derivatives, as well as provides fair transformative use to be exempted from infringement, the Indian statute is not clear on whether use of a work for an expressively different purpose, or in fact for a non-expressive purpose is within the domain of the creator’s market. The Division Bench of the Delhi High Court inUniversity of Cambridge (supra) recognised that if the use of the work is of a “transformative character” i.e., the purpose served by the use is different from the purpose for which the work was made, it is a limitation to copyright protection or its subject matter. The Court also held guide books to be a transformed work, not amounting to reproduction of the original. The Division Bench of the Calcutta High Court in Barbara Taylor Bradford v. Sahara Media Entertainment [2004 ILR (1) Cal 15] has also recognised that a work which is taken, and then used for producing a subsequent work that is so changed and muted as to make it transformed, and a different work altogether, would not generate an actionable claim for the owner.

This line of decisions presents an important question. Is use for the purposes of training, to enable the Gen AI model to produce accurate responses to user queries, a part of the expressive purpose for which the work was originally created? Or is it a transformed purpose that is beyond the circumscribed domain of exclusionary rights granted to the copyright owner? Is use for training purposes, when the work is primarily expressive, and meant to be expressively consumed as against used for non-expressive training, infringing? This would require an analysis of what really comprises the subject matter of protection for the owner- their primary and secondary markets – and how much of it is linked directly with the purpose for which the work was created- expressive purpose or training purpose? In other words, does use of a copyrighted work for a non-expressive/ non consumptive purpose amount to copyright infringement, or is it a distinct and transformative purpose outside copyright’s boundaries/scope of protection?

Extractive Use

A distinct question here deals with use and copying of even protected material for arguably extracting unprotectable elements, that would otherwise not be possible to be extracted. The affirmative essence of such use is to extract unprotectable elements from copyrighted works, elements which are not a subject matter of copyright protection.

In Akuate Internet Services Pvt. Ltd. v. Star India Pvt. Ltd [2013 SCC OnLine Del 3344][iii], the Division Bench of the Delhi High Court has recognised that copyright’s balance is maintained by ensuring that information, facts and knowledge embedded within expression cannot be monopolized using Copyright law. The Court has further held that protection cannot be extended to information and facts embedded in protectable works, even under the premise of unfair competition. Extending the same would inevitably restrict the ability to extract and disseminate information which is a critical component of Article 19(1)(a) of the Constitution of India. Thus, Indian Copyright jurisprudence clearly recognizes that information embedded within expression is not protectable and no monopoly can be extended in respect thereof. The said rationale of balancing copyright protection with access to unprotected information for the purposes of furthering expressive and speech values has also been recognised by the Division Bench of the Delhi High Court in Wiley Eastern Ltd. v. Indian Institute of Management [61(1996)DLT 281].

This is furthered by the idea expression dichotomy under Copyright law that is widely accepted in Indian Copyright jurisprudence. Useful information contained in any expressive work is not protected. It is only the form in which the said information is contained/presented that is a protectable expression for purposes of Copyright law. This is line with the fundamental purpose of Copyright law which is to reward and incentivize/enable production of creative expressive forms, that disseminate useful information. This, as Prof. Molly V. Houweling recognizes, is not because information and facts are not valuable enough to justify copyright but rather because they are so valuable that they belong to the public domain for everyone to be able to access.[iv]

For instance, in the case of a poem that expresses conceptions of thoughts, copyright in the poem gives no monopoly in the ideas or conceptions of facts expressed by the said words, but merely to the arrangement of the words used to express those thoughts. Others have a right to discern that information and exploit the information within, provided they do not substantially reproduce/adapt/communicate to the public, the concrete form in which the ideas have been arranged or put into shape.

The basic rationale for protecting uses of copyrighted expressions which are not reproductive of the expression or expressing form but are merely to extract the ideas or the unprotectable elements embedded within, flows from this idea expression dichotomy. For extraction however, it is arguably necessary and could be essential to access the whole copyrighted expression, and even store it, without exposing it in its expressive form to a single human being- which is exactly what GenAI systems often do. Without such access to the complete work, extraction of embedded information becomes impossible, inevitably extending copyright protection to such unprotectable elements. That, of course, is not a desired outcome of copyright policy. In other words, copyright does not give the “right to control access” to extract unprotectable elements (Anti-circumvention provisions do- which are dealt with below). It merely gives the right to exclude reproduction/adaptation/communication of the expressive form of the work (No wonder, Section 14 of the Copyright Act does not include “right to control access” within its sub-provisions).

Even well recognised doctrinal principles like the merger and scenes a faire doctrines in Copyright law provide scope for extractive uses of seemingly expressive elements. These doctrines recognize that unprotectable ideas, facts, stock characters, incidents, images and themes sometimes do not lend themselves to a wide variety of expressions. Thus, these doctrines prohibit protection of seemingly expressive elements that represent only a few limited ways of expressing certain ideas. Without being able to extract these seemingly expressive elements which have merged inseparably with the unprotectable limited ways of expressing ideas, and use them, the purpose of the idea-expression and merger doctrine is rendered illusory.

The analysis may, thus, focus on the nature of the expression used, and the purpose of storing that seemingly expressive expression i.e., merged into an idea – whether it is to extract informational content out of it, or for expressively reproducing it? Many a times, we will realize that without accessing, copying and using the entire expressive form that is protected, extracting unprotectable ideas out of such expressions would be impossible.

Codified Exceptions and Limitations:

Under Section 52 of the Indian Copyright Act, fair dealing for the purposes of private or personal use, including research is permissible. An important question that Courts will have to grapple with, as they deal with extension of legal personality to Artificial Intelligence Technologies (separate article soon!), is whether use by AI systems for training and for its models to learn would be private or personal use, that does not expose the expression to a single human being apart from the AI system. Moreover, whether private use by a corporate entity like Open AI for its own learning and development (for its models), even if that learning leads to a competitive product, is permissible or not will also have to be examined. Would the defense of private or personal use under Section 52(1)(a)(i) of the Copyright Act only extend to humans or also to corporates or juristic personalities?

On the side of research use, it is arguable that use for the purposes of extracting information embedded in expressions, without exposing a single individual to the expression, could amount to research use that is protectable under Section 51(1)(a)(i) of the Copyright Act. Importantly, the explanation to Section 52(1)(a) also provides that storage for fair dealing for a private or personal use, including research, is not infringing.

These questions at the back end, however, will only arise if Courts, in the first place, deem such storage and use for training purposes, to be a part of subject matter of protection under Section 14 of the Copyright Act.

Anti-Circumvention and the Training stage (Para-copyright right to “control access”)

Anti-circumvention provisions under Copyright laws are essentially to prevent unauthorized access to copyrighted works that are safeguarded in the digital realm using modes like, inter alia, paywalls etc. In the United States, New York Times in its complaint against Open AI has alleged that Open AI has trained its model by circumventing paywalls and unauthorizedly accessing its copyrighted protected articles that are behind technological protection tools that prevent circumvention. The allegation is synonymous to unauthorizedly circumventing its security measure put in place to prevent access, for purposes of training the model. Would a similar act be actionable under Indian Copyright law?

Section 65A(1) of the Copyright Act provides that circumvention of a technological protection measure is forbidden under the Indian Copyright law. It is the only provision that controls the “access” to copyrighted digital works and is a para-copyright measure to ensure that even unauthorized access is actionable. However, importantly, Section 65A(2) specifically prescribes that technological protection measures can be circumvented if it is for purposes that are legal, or not expressely prohibited by the Act. This provision was specifically inserted keeping in mind the importance of access for permitted purposes. The Standing Committee that was constituted for the 2010 Copyright Amendment Bill, that translated into the Copyright Amendment Act 2012, specifically argued that without a provision that allows circumvention of technological protection measures for permissible purposes under the Act, access to works for permissible purposes would be impossible and exceptions and limitations to Copyright Act would be rendered redundant – “In the absence of the owner of the works providing key to enjoy fair use, the only option was to circumvent the technology to enjoy fair use of works.”[v]

Thus, if Courts find use for training purposes transformative, extractive or outside the subject matter of protection, or for that matter, permitted under Section 52 of the Copyright Act, circumventing technological protection measures to enable extraction would be permissible under the Copyright Act.

Section 65A (2) however comes with a condition, i.e., every person facilitating the circumvention of a technological protection measure (“hacker”) has to maintain a complete record of the name, address, and all relevant particulars of the person (“fair dealer/user”), as well as the purpose for which he has been facilitated. So long as this is maintained by the hacker, Section 65A (2) allows circumvention of technological protection measures. Importantly, this also ensures keeping a record of every protected work that is accessed for training purposes, for the purposes of technologically facilitating attribution, which is a desirable goal of copyright policy.

In the next part of this series, we will transcend from the training stage to the output stage, to analyze whether outputs produced by GenAI systems would be violative of the owners reproduction or the adaptation/derivative rights.

[i] Special Leave Petition before the Supreme Court bearing – SLP(C) No. 029951 / 2011, dismissed vide order dated 27^th January 2016

[ii] Understanding Generative AI and its relationship to Copyright, Written Testimony of Christopher Callison-Burch before the U.S. House of Representatives Judiciary Committee Subcommittee on Courts, Intellectual Property, and the Internet Hearing on Artificial Intelligence and Intellectual Property: Part I– Interoperability of AI and Copyright Law, available at <https://docs.house.gov/meetings/JU/JU03/20230517/115951/HHRG-118-JU03-Wstate-Callison-BurchC-20230517.pdf>

[iii] SLP(C) No. 029629 / 2013 pending before the Supreme Court.

[iv] Molly S. Van Houweling, The Freedom to Extract in Copyright Law, (unpublished draft on file with the author)

[v] Standing Committee Report on the Copyright Amendment Bill 2010, available at https://prsindia.org/billtrack/the-copyright-amendment-bill-2010#:~:text=The%20Bill%20allows%20for%20the,for%20use%20by%20such%20persons.

Indian Copyright Law and Generative AI- Part 1 -Mere Storage as infringing?

Co-Authored with Sneha Jain

The scope of copyright liability of Generative AI (‘genAI’) models is a hot topic globally. copyright issues that stem out of genAI technology can be categorized into four heads. All the litigations in the United States form a part of one of these four heads:

Allegation of copyright Infringement due to copying/storage of copyrighted works as data sets for the purpose of training models;
Allegation of copyright Infringement due to substantial similarity of the output produced, as well as the output produced being based on the inputted copyrighted work;
Allegation of copyright Infringement due to lack of attribution or lack of disclosure/tampering with Rights Management Information;
Whether genAI models can be “authors” for the purposes of copyright law.

Most defense briefs in the various litigations filed in the US till now, have relied upon the transformative fair use defense to avoid copyright liability. Relying on the idea-expression dichotomy, these briefs have argued that genAI models have not copied any protectable copyright “expression” but only copied unprotectable ideas.

While the contours of the idea-expression dichotomy, the merger doctrine, as well as protectable subject matter, as applied in India, remains largely similar to the US copyright jurisprudence, the transformative fair use defense, as it has developed in the US, is not statutorily available under Indian law (though it arguably is available under judge-made law). A question then arises – how will such litigations fare under Indian copyright law? Will genAI tool providers like ChatGPT, Sora, SDXL Turbo, Google’s Music LM etc., face incremental risk under Indian law, even if they succeed in their transformative fair use defense under US law?

Through these series of articles, we will be exploring the peculiarities of Indian copyright law that may pose incremental risk to genAI tool developers, as well as models. Before we dive into legal issues, it is crucial to understand how a genAI tool is crated and works.

How are genAI tools are developed:

Visualize how a child learns reading and writing – by copying, imitating and repeated tracing of the alphabet (ABCs), followed by simple words, sentences and so on. Similarly visualize how a child learns to speak – by listening to and repeating sounds and words spoken by a parent/teacher or other care giver. Having learnt how to read, write and speak, the same child, being exposed to a wide spectrum of social, cultural and informational content and experiences, is not only intrinsically shaped by such content and experiences but also shapes the cultural realm through her contributions. It is this exact process of being shaped by, and at the same time shaping back, the cultural realm that genAI is mimicking through its algorithms that read the vast data sets of content and information available in digital form (‘training sets’) and extract ‘knowledge’ from the training sets. The ‘knowledge’ is nothing, but the meta-information embedded within the training sets. This knowledge extraction happens by firstly breaking and categorizing the data into fundamental ‘tokens’, secondly, identifying statistical patterns from the placement of such tokens to learn the relevance and context of each word in a sentence, and thirdly apply the knowledge to predict answers based on the statistical patterns learnt. Thus, what Gen AI systems most likely tend to do is “produce a “reasonable continuation” of whatever text it’s got so far. It essentially mimics the process of learning and knowledge sharing adopted by a human mind, by converting words into numbers (tokens) and finding massive statistical patterns for learning through the numbers. In other words, creators of genAI tools/models are attempting to create a human brain through computers, as opposed to through natural conception or IVF or test tube baby brains.

Whether storage by genAI systems is copyright infringement?

The current stage of training genAI models involves making copies (fixing) of data sets, which include copyright protectable works, and storing them for varied periods. Storage of data sets for the purposes of training can happen in three distinct ways:

Storage throughout the subsistence and use of the models.
Storage until the data is extracted and absorbed.
No storage, and use of Federated or Collaborative learning, where data sets are not stored on a centralized cloud server. The training happens through data on decentralized servers, i.e., without storing data on any particular server.

It is important to note that irrespective of the fact of there being a copy of the work, which is then stored, the same is solely used by the model developers for extracting the meta-information contained within the expression of the content, through the model, and is not exposed to any human. Copying and Storing are two different acts or uses of a copyrighted work. For training genAI models, though the model does read the content per se to tokenize it for the purpose of weighing the model and parameters, to gauge the logic of the next possible sequence, it is however not reading or enjoying a copyrighted work in the context in which a copyrighted work is meant to be seen or heard or enjoyed. For instance, a musician does not produce a song for the primary purpose of it being used for training. The primary purpose of the same is entertainment.

Under the Indian Copyright Act, the exclusive right of reproduction is conferred to owners of literary, dramatic, musical, artistic works, sound recordings and cinematographic films, as well as to the owners of performers rights and the broadcast reproduction rights. While the contours of the right may be different for each of these, the common thread is that reproduction and storage mostly go hand in hand The Copyright Act distinctly provides an exclusive right to copyright owner of a literary work, dramatic work or a musical work, under Section 14(a)(i) to reproduce the work in any material form, including the storing of it in any medium by electronic means. It also provides an exclusive right to the copyright owner of an artistic work under Section 14(c)(i) to reproduce the work, including storing it in any material form. In context of cinematographic films and sound recordings, Section 14(1)(d)(i) and 14(1)(e)(i), distinctly provides an exclusive right to copyright owners – to make a copy of the film/sound recording, including storing of it in any medium. Neither is “reproduction”, nor a “copy” defined in the Act. However, the definition of an “infringing copy” under Section 2(m) of the Act, clearly differentiates the concepts of “reproduction” and “making a copy”, as applicable to different set of works. Arguably, this is to eradicate any associated physicalism with literary, artistic, dramatic or musical – i.e., underlying works- and to showcase as to how reproduction of their forms of expression is relevant – and not the mere act of making copies which may not be for the purpose of reproducing the expression. The dictionary meaning of reproduction is to create or bring into existence again, and of copy is to imitate or transcribe. In MRF v. Metro Tyres, the Delhi High Court has also read the meaning of copy to be expansive to include imitation of the substance copied, and not merely a physical copy.

Reproduction includes the act of storing the expression of the work in any medium by electronic means. This deeming fiction of including “storage” within the meaning of reproduction was brought in by the 1994 Amendment to the Copyright Act to comply with TRIPS which extended protection to broadcasters and producers of phonograms. The Parliamentary Standing Committee Report in 2010, clarified that storage was to be held to be infringing specifically qua Internet Service Providers, who would unauthorizedly store content to provide exposure to the same for impermissible purposes.

The reproduction right protects recompense in the primary market for the owner of the work. It is to protect the owner of copyright from losing out economic returns by substitution in its primary market, by the act of copying the expression of the work, or unauthorizedly exposing the expressive originality of the work. This right is limited by various doctrines that have been developed by courts. For instance, courts do not extend the primary market of the work to ideas embedded within the expression. The idea-expression dichotomy clearly recognizes that protection is only limited to the expressive form, and the right only extends to denuding unauthorized reproduction of the expressive form of the work. This dichotomy has even been recognised in Article 9.2 of the TRIPS Agreement, which also explains that protection extends only to the original way in which the information or idea is expressed, and not to the information or idea embedded in the work. The Supreme Court in RG. Anand v. Deluxe Films has also recognised, while providing helpful guidance on the meaning of what constitutes a “copy” under the Act, that the fundamental fact to be determined for violation of copy is whether the manner, arrangement, situation to situation, scene to scene with minor changes or super additions have been adopted, as against the mere idea or information embedded. Even in Barbara Taylor Bradford v. Sahara Media, the Division Bench of the Calcutta High Court has recognised that ideas embedded within works are not protected, and only if the expression is appropriated would it form subject matter of copyright protection. The rationale of the same stems from the principle that copyright does not give an exclusive right over the information, experiences or facts embedded, but only over the concrete form in which these ideas are developed. Thus, unless reproduction, including storage is for the purposes of exploiting or substituting the market of the copyright owner in this concrete form, it would not be copyright’s concern. This principle espouses the complex compromise that copyright engages in with the freedom of speech, where access to using speech is restricted only to the extent of reproduction of its concrete form- in order to incentivize and acknowledge the creator of the concrete form of the speech, but not to the idea or information embedded within the speech. The Division Bench of the Delhi High Court in Wiley Eastern v. IIM has also recognised that copyright consciously restricts its application to ensure it does not override concerns of Article 19(1)(a) of the Constitution of India.

The merger doctrine, also recognised in India, further limits protection in those cases where the ideas expressed can only be expressed in a limited number of ways, are functional, or core to the genre of expression. Here as well, protection is limited to the concrete expressive form of the work and does not extend to, in any way, monopolize the idea embedded. Moreover, the de minimis rule further limits protection to the extent that trivial parts of the work being used, which do not form a substantial part of the expressive form of the expression, are not protected.

The focus of the reproduction right, as can be seen from these limiting doctrines, is on unauthorized exposure/consumption to the expressive forms of the work, as against use to extract ideas or the meta-information embedded in the works. In fact, these doctrines make sure that copyright does not stifle with the flow of ideas, however, protects the expressive form in which these ideas are embedded in order to provide economic baits for people to clothe these ideas in different original expressions.

The question is whether copying or storing, which is completely non-expressive or non-consumptive, that is – copying that does not involve appropriating the expression of the said work or exposing the expression to any human being, but rather is only for the purpose of extracting meta-information for weighing models and parameters, and training the genAI model, is an act of infringement? Would extraction of ideas constitute an existing market?

A few examples which scholars quote are – can reproduction of a book for use as a doorknob (a purpose for which the book hasn’t been written or published) be infringement, merely because a copy of the physical book was made? Can storage of student papers on a plagiarism software to decode whether the student plagiarized its paper with other papers available on the internet, be infringing use/copy/storage? Can a web-crawling software that makes cached copies of works on the internet, in order to enable search engines to respond to queries of search by matching queries with cached data, be infringing use/copy/storage that is a part of the reproduction right? Can use of a book for following the procedures provided therein be infringement of the reproduction right? Can use of books for allowing search of the said books by search engines, amount to infringement of the reproduction right? These are questions that Courts will have to grapple with in the coming times.

A purposive interpretation of the meaning of “Reproduction, including Storing of works” within Section 14 of the Copyright Act, would probably exclude an exclusive right over storage that is not for the purpose of expressive reproduction and is only for the purpose of extracting meta-information, in any case protected by the limiting idea-expression dichotomy in copyright law. The physical fact of storage or copying would be irrelevant to such an analysis- as long as the form of expression, i.e., the protected element in the work,is not being exposed to anyone.

To the contrary, however, a literal construction of the said provision would probably lead to a conclusion that extends the primary market of the copyright owner even to the mere storage/ or copying of the work, irrespective of whether the same is for a reproductive purpose (in an expressive context) or not.

Which way will the courts go is yet to be seen!

Transient Storage

Even if storage is considered to be infringing under Section 14 read with Section 51 of the copyright Act, Section 52(1)(b) and (c) specifically provide for exemption of transient or incidental storage of a work purely in the technical process of electronic transmission, and transient or incidental storage for the purpose of providing electronic link or access where the same is not expressely prohibited or infringing.

Courts will have to grapple with the question as to- (a) whether storage of training data sets for the training period, can be considered transient; and(b)whether storage of training data sets would amount to being incidental to providing access to the genAI model to extract meta-information.

The concept of “transient and incidental storage” was somewhat clarified by the Delhi High Court in MySpace Inc. v. Super Cassettes Industries Ltd. In My Space, the Court was dealing with the question of whether My Space can be obligated to monitor and review to report any infringing content of Super Cassettes on its platform. The Court while analyzing the purpose of the transient or incidental storage exception held transient to mean temporary, and incidental to mean subordinate to something of greater importance. This was deemed to include “cached data”, or other data generated automatically to improve performance of the core permissible function. Moreover, the text of the Copyright (Amendment) Bill which introduced Section 52(1)(c) shows that storage is permissible when exposure as a result of storage is permissible and non-infringing.

Thus, it is arguable that storage for the sole purpose and functionality of training, which arguably is a transformative and permissible purpose, would be incidental storage that is permissible under the said section. However, Courts are yet to clarify this.

On the aspect of temporary storage, legality would depend on how long the storage is for. If the data set automatically is removed once the meta-information used for training is extracted, it is arguable that storage would be transient and temporary, all the more due to the fact that not even one human is exposed to the stored copy. However, Courts would have to render more clarity on this aspect.

In any case, the next part of this series will delve deeper into use for extractive purposes and whether any of the defenses under Section 52, including fair dealing private use/personal use, use of illegal copies as against lawfully acquired copies, would probably extend to “use” at the training stage of Gen AI models – by AI or by the facilitator, i.e., the company building the AI, or not.

TEASING INTO THE “ENABLEMENT” THEORY FOR COPYRIGHT LAW

It is World IP Day Again–a day I very consciously use to harp on the importance of curtailing the reach of statutory exclusionary rights (See previous posts here and here). Today, I am going to do something different. I have been thinking a lot about harmonizing the fairness concerns that are associated with copyright’s justifications as well as the speech and cultural constraints that it creates. In the process of thinking, and detailed discussions with Profs. Molly V. Houweling and Talha Syed at Berkeley, I have been teasing out an alternate theoretical basis of the underlying idea that necessitates a legal policy to address concerns of fairness for those who perform expressions.

Over the years there are many theories of copyright’s existence that have done the rounds- flowing from a labor dessert approach (a centrally Lockean idea) focusing on rewards to the ex-nihilo creator; to a personality approach (a Kantian idea which is also often misattributed to Hegel[1]) focusing on recognizing the contributions of an ex nihilo creator through economic rights given the infusion of their personhood in their so-called original output; a utilitarian approach flowing from law and economics and its perspective of individual preference maximization through complete reliance on the market (the incentive-access paradigm); and a recent idea that focusses on a just and attractive culture (William Fisher, Madhavi Sundar, Neil Netanel, Talha Syed and Oren Bracha) by inducing diverse participation and a wider cultural sphere for effective self-determination and social construction. One alternate theory for the existential justification of copyright, which can be a subset of the last of these buckets–the just and attractive culture justification- is a theory of “enablement” (as against rewards or incentives or any other personality-oriented justifications) specifically originating as a need in a market society. This theory completely rejects any natural or transhistorical justification of such a policy and also, in no way, reifies copyrights as property rights or as the only legal tool that is plausible to achieve the specific purpose of enablement. As against giving a full-fledged justification in the space of a blog, I shall just be offering a teaser of what I am proposing (which is to be developed in the form of a law review article, hopefully sometime soon).

This is an extract from a draft I am building:

“The theory that I postulate here, distinct from a theory of copyright as rewards for labor, or the law and economics justification of incentives, is that copyright, as a matter of legal policy, is a historically specific [2] tool of enablement to allow for human flourishing. It is a tool meant to ensure that those who wish to expressively produce are free (or have the agency) to do so without worrying about fulfilling their basic economic needs in a modern market society. It is a tool to affirmatively protect those who wish to produce expressions from involuntary subjection to the logic of a historically specific market society[3] where realization of basic needs, that constitute human flourishing,[4] is dependent on market competition.[5] As a matter of legal policy, it specifically aims to enable (as against incentivize) those who perform expressions to sustain (i.e., at the least fulfill basic needs) economically, and be recognized, as well as flourish (as distinguished from theories of individual welfare) in a market society.”

To explain, in simpler words, the point of copyright law, often misunderstood, was, is, and has always been to protect “human beings” (not machines) who wish to express in their lives (as a writer, a musician, a dramatic performer, etc.) from the involuntary subjection to a market society, where their agency to express and participate in meaning–meaning is stomped by the requirement of meeting basic needs of one and one’s family–something only realised by participating in market competition. Being subjected to a capitalist or a market society is not something that these humans chose–they were born into it. Thus, the law needs to interfere and protect them from the coercive logic of the market–to freely enable them to speak and express themselves. Why? We want them to speak because it is speech and the dialectic that comes with it (through access and experience) that curates our ability to self-determine ourselves as well as the social ability to curate the culture (in its broadest sense) around us. The underlying goal of such a legal tool, according to me, is the freedom from (negative liberty) the coercive conditions of a market society that impinge upon one’s ability to express, and the consequent freedom to (positive liberty) participate in social self-determination and cultural meaning-making by expressive agency–through legal economic enablement and recognition. Ironically, however, copyright often relies on a market logic for its allocation of resources.

To reiterate, the point of Copyright law/ or in fact any such tool of legal policy [and I am not committed to copyright law as the tool because of its complete reliance on the market as a method of allocating resources (in order to protect from the market itself). I believe there could be alternate compensation mechanisms or hybrid means in altering contexts- not focused on the market logic. Exploring them on a continuum is a part of my research agenda] is to enable self–preservation for all, proportionally, to the extent necessary to realize basic needs of human flourishing so that one continues to have agency and is enabled to produce expression. It is not to form a market. It is to enable, it is to protect from the inherent market logic- the logic of compete for your basic needs first- and express later, irrespective of your social structural position (defined by involuntary social relations- that precede and our constitutive of our roles), with people in different positions.

Enablement (as against the idea of incentives) in its legal scope however has a clear limit, especially when the enablement of one conflicts with the enablement of another- given the resource involved i.e., speech, is inherently constitutive for self-determination.

Thus, if we have to continue with copyright law as a tool of enablement, there is an imperative need to rethink its scope and subsidiary elements and reconceptualize whether the right to exclude is the best tool for such enablement (for needs and not wants or individual preferences, but objectively defined social imperative needs) in all contexts for human flourishing.

[1] See, Jeanne L. Schroeder, Unnatural Rights: Hegel and Intellectual Property, 60 U. Miami L. Rev. 453 (2006) responding to Justin Hughes, The Philosophy of Intellectual Property, 77 GEO. L. J. 287 (1988).

[2] Oren Bracha, The History of Intellectual Property as The History of Capitalism, 71 Case W. Rsrv. L. Rev. 547, 574-575 (2020) [tracing the History of IP to the process of commodification which is an output of an ensemble of social relations that constitute capitalism and found specific phenomenological presence only during the 17th Century. The argument tries to denaturalize Intellectual Property law]

[3] See generally, Ellen Meiksins Wood, The Origin of Capitalism: A Longer View 106 (1999).

[4] What components constitute Human Flourishing can be widely debated, but the ones I specifically mean to refer to here are a combination of the spirit of the components endorsed in two texts–both of which specifically reject a notion of methodological individualism and endorse fulfillment of these basic components through the instrument of the law–one in context of real property law, and the other in the context of Copyright law. See Alexander, Gregory S., Ownership and Obligations: The Human Flourishing Theory of Property (2013) Cornell Law Faculty Publications. Paper 653, 2,5 [Prof. Alexander specifically emphasizes the following components of human flourishing–“But four such essential capabilities seem uncontroversial. These are life, understood to include certain subsidiary values such as health; freedom, understood as including the freedom to make deliberate choices among alternative life horizons [I would term this agency, to avoid the classical liberal expansionary tendency of the linguistic use of freedom]; practical reasoning; and sociability.”; See also, Syed and Bracha, supra note 1 at 256-257-“And for our purposes, it is possible to distill three elements of convergence (without claiming to capture the entire range nuances of the various alternative views). The first dimension, which incorporates the self-determination approach, emphasizes the importance of reflectively and deliberatively forming one’s own conception of valuable aspirations, projects, and preferences, and of having the effective means of their pursuit and realization. The second is “meaningful activity“—in which one’s physical or cognitive capacities are highly engaged and developed in a manner involving challenge and discipline, an engagement valuable both for its own sake and for the realization of various intrinsic and social rewards “internal” to the activity. The third is sociality, meaning involvement in relations and activities established communally through interaction affiliations and collaborations being both intrinsically valuable and partially constitutive of one’s sense of self.”.

[5] See, Talha Syed, Capital as a Social Relation (unpublished), draft on file. See also, Talha Syed, The Horizontal and Vertical in Capitalism, (unpublished).

SAVE THE INTERNET ARCHIVE!

Libraries often lend lawfully acquired copies of works to enable access to scholarship, information, and knowledge, be it factual or fictional content. Internet Archive does nothing more than that. It lends lawfully acquired books to its users for a limited time and carefully employs DRM techniques to ensure that users do not reproduce or distribute these copies of the works. It is in fact more carefully curated than in-person libraries, which have no control over what the reader does when they issue the book. The mere fact that the Internet Archive operates on the web and lends digitally scanned copies of the book- does not make it any different from in-person libraries for the purpose of copyright law. In fact, any paranoia associated with it lending unfairly is dispelled once it is internalized that the number of copies lent at a time is equal to the number of copies of a book that the Archive physically owns.

Use by the Archive also satisfies the fair use factors provided under §107 of the Copyright Act, 1976. The purpose and character of the use of the books is completely non-commercial, without any intention of substituting the primary or the secondary market of the copyright owner. Internet Archive does not employ any advertisements and does not charge the user (i.e., people who lend the books). It is in fact not even a private commercial library, which is also a permissible enterprise– but a completely non-commercial one. The purpose and character of its use is also transformative as it specifically promotes purposes specifically mentioned in §107- facilitation of research and scholarship. (Cambridge University Press v. Becker). Further, CDL yields many public benefits in the form of access and enhancement of knowledge in a reasonable manner, (Google v. Oracle) which is a productive use and is desirable to further copyright’s purposive goal of encouraging learning and disseminating knowledge. Hence this factor weighs in favor of fair use.

On the nature of the work factor, the work that is being lent is already published, comprises of informational content (whether factual or fictional), and has a long-lasting market. Thus, this factor weighs in favor of fair use.

Although the Archive lends the full book, CDL ensures it is only temporarily available to the lendee and is only made available proportional to the number of copies owned by the Archive. It enables personal and research use, in a fair and limited manner, with adequate DRM protection to avoid perpetual storage. Thus, the temporality associated with lending, as well as the first sale, ensures that this factor weighs in favor of fair use.

Finally, on the effect of use on the market of the owner, Sony clearly established that merely because a potential licensing avenue is being thwarted does not mean that use is automatically unfair. Every permissible and in fact desirable use will, to an extent erode the potential licensing market of the publisher. As held in Google v. Oracle, if the purpose of that potential licensing loss is one of the purposes mentioned under Section 107 of the Copyright Act or provides benefits in the form of access to information and knowledge to the public, the said potential loss in licensing revenue through eBook licensing is permissible and within the scope of exemptions to copyright infringement, lest it shall pose a danger of circularity. Further, Internet Archive in no way attempts to substitute the market of the owners as the users only get limited access to the books, and if they need complete access, they will still need to buy/license directly from the owner.

Hence, all factors support the claim of Internet Archive that its use of the works, that it lawfully possesses as its own, is fair and permissible, i.e., not an infringement (an exemption- not an exception) under the Copyright Act of 1976.

A Critique of the Dilution Doctrine in Trademark law

In Dilution Redefined for the Year 2002, the author Jerre B. Swann, Sr., defends the doctrine of Dilution in Trademark law- which protects marks with a reputation across all kinds of products i.e., irrespective of whether the infringer uses the reputed mark in the context of distinct product classes or not- by invoking marketing theories of clarity, clutter, and cognition. His main claims are, first, based on the personhood relation of a proprietor to a mark, condemning any unauthorized use as leeching, given reputation in a mark is like the face of a person- something which is inherently theirs and no one else’s. Second, by shifting focus on the consumer, he argues that distinct and reputable marks enter the consumer’s mind and make them singularly think of a particular thing- the referent that is sold. According to him, out-of-context use of the said mark by someone else who is not its first appropriator erodes the singularity associated with the mark in respect of the information sought to be conveyed. He uses this to argue that singularity retains immediate cognitive responses, and the more number of propositions that come to be related to a signifier or its concept, the lesser the possibility of an immediate cognitive response to the mark. Although the author acknowledges that initially there was criticism of this approach as it seemed to overlap with Copyright law, he shrugs it off by arguing that the ultimate goal of Dilution is to protect mental informational associations/ what he calls “sensations”, of consumers in relation to a brand and its reputation, blindsiding its property-esque characteristics, and enmeshing it with the purpose of protecting consumers from sensation-al, deception.

I criticize the arguments of the author, first, from a semiotic perspective, and second, from the perspective of purposive goals of Trademark law and inherent limits that its doctrine sets on its property-esque character- limits that are often evaporated by the Dilution or the Well-Known mark doctrine, making it incompatible with free expression. I also argue free riding to be a misconceived premise- as what the author refers to as free riding only represents a positive externality that does not cause any harm to the owner of the mark in its context.

First, the author argues that modern Trademarks “convey, among a multitude of other messages- personality, purpose, performance, preparation, properties, price, position, and panache.” The author also postulates his five-step Dilution formula, arguing that the owner of a unique and reputed marketing symbol should be entitled to prevent impairment of its communicative clarity of association by anyone else using a similar symbol. The author refers to this as singularity, arguing the signal value of a mark- word or symbol- to cognitively be linked to its singular association.

What the author misses is the emptiness of these claims when divorced from the particular product i.e., the particular context in which the mark or symbol is specifically being communicated. The singularity of association is expressly rejected not only within the legal substance of the Trademark doctrine but also in social semiotic theory developed by Ferdinand de Saussure as interpreted by Talha Syed and applied in his critique of legal formalism.

Trademark law, itself, rejects this theory of symbols having only singular meanings/associations across all products. The use of the word or symbol “apple” as an apple (as we know) does not erode the possibility of someone using Apple in the context of electronics. If I go to a grocery store and ask for an apple, the store coordinator would not give me an Apple device, and if I go to an electronic store and ask for an apple, the store coordinator would not bring me an apple to eat. Importantly, if I go to an automobile store and ask for an apple, the store owner would be very confused and would not know what to do. Allowing this to happen, Trademark law implicitly rejects this notion of singularity. Further, Trademark law’s prevention of the use of descriptive terms (i.e., symbols already associated with certain products in language) is only applicable in respect of the product it is generally supposed to describe. It does not extend to marketers of other products, lest Apple would never have been allowed to Trademark its word in the context of electronic devices. This shows how Trademark policy, implicitly, dismisses any notion of singularity in the context of a word or its use as a mark.

In any case, when divorced from the context of use, words have no fixed meanings. The context in fact constitutes or generates the associated meaning. Words are merely labels for concepts that have a relational purpose in a particular context. Talha Syed, while interpreting Saussure shows this using the instance of the “Stop” sign, where he argues that neither the signifier nor the sign matters. It is the signified in a relevant context, that evokes association or helps us make sense of what is being communicated. When a “Stop” sign appears for the pedestrian, it does not mean that the pedestrian is supposed to literally stop. It signifies or communicates a concept that is understood in a particular context – the context of the pedestrian walking on a road where cars also move- the concept that- hey pedestrian! you are now advised to see around you for traffic signals and accordingly cross the road. Thus, divorced from context, words have no specific meaning that is signified and are empty labels with no communicative function. Trademark use, essentially, involves similar functional use- i.e., communicating to the user- the particular source of a particular product that is present around other similar products. It thus generates continuous conceptual association of sources in the minds of the consumer in respect of those products, or a family of similar products. There is no presumptuous communicative association that automatically arises across multiple kinds of products. The same word/symbol could signify a different concept forged in a different context – i.e., in relation to a completely different product. This is exactly the reason why cross-class, or cross-product usage of similar marks is allowed in Trademark law around the world.

The context in which communicative association is curated outdoes this logic of singularity and lays the Dilution doctrine at odds with the other features of Trademark law. Trademark law provides rights to exclude to those who coin distinctive associational signifiers to communicate to the consumer that it is their product, however, while doing this- these signifiers automatically become a part of the discursive sphere- vulnerable to be forged in an alternate context. Trademark law allows these exclusions if uses are in the same communicative context – that is in the context of the same product, or similar kinds of products (what is often referred to as the same class of products through the NICE classification system). However, as shown above, if used in a different context, distinct meanings of the same words could be forged to communicate or signify a distinct concept or association. The Dilution doctrine however changes this and extends protection to cross-class/cross-product usage if the mark is reputed, denuding the ability to communicate or forge a separate association using a word/symbol/mark. A criticism of this approach comes back to the apple example- which shows how human minds gradually associate a separate message with a word/symbol in a distinct context. When Apple would have started using the word in the context of electronics, such an association might have initially been awkward. However, the alternate semiotic message to be conveyed gets gradually fixated in a distinct context through constant continuous use. No one who goes to an Apple store or a grocery store, anymore, misassociates these two products which are linguistically communicated using the same word/symbol/signifier. Dilution doctrine erodes this gradual possibility of a word having multiple communicative associations, and misrepresents it by creating the delusion of singularity – something at odds with free speech and communication. Why? Exactly for the reason that provoked skepticism when the Dilution doctrine was first adopted- extending copyright-like rights to exclude over words/symbols/signifiers, to appropriate revenues from every channel that would expose coined terms to the public. And why Trademark law? One of the reasons is the perpetual nature of Trademark excludability.

Trademark law does not aim to incentivize/enable the production of new words. Copyright law, which focuses on the enablement of creative expressions, does not extend rights to exclude to words by themselves considering them building blocks of expression. How do we then justify the argument of the author where he says- for Dilution a symbol need not just be distinctive in respect of the product, but also vis-à-vis other marks? This theory- endorsing competitive edge for coining distinctive symbols- would only seem justifiable if the social interest that the law sought to protect was the enablement of the production of distinctive marks or words. On the contrary, the only reason why the law seems to provide rights to exclude to owners of distinctive marks is to ensure consumers have constant associations of words with certain products in the context of their use. Extending them to all kinds of possible products, in respect of which the mark is not even being used, would be to curb the use of language, and exclude the use of words or signifiers from representing or communicating alternate ideas in alternate contexts- something which Copyright law expressly promotes by rejecting rights to exclude over words. Isn’t Dilution in Trademark law, and Copyright law thus, in fact, at odds, as against merely overlapping?

In any case, treating Trademark excludability as property rights over coined words would extend the kind of protection which Article I Cl. 8 of the US Constitution envisions. However, the perpetuity of Trademark excludability runs at odds with the limiting clause of Art. I Cl. 8. Even if Trademark law is considered a part of this clause (although the same is expressly rejected in The Trademark Cases), limiting the excludability of the coined word to use in the context of the product it represents is this inherent limit– to ensure it does not impede communicative interests associated with signifiers. Similarly, genericide is an inherent limit on the time of protection to a mark, as the interest sought to be protected is consumer confusion/deception (and not enablement or creation of new words). The Abercrombie spectrum further represents this- a mark that is distinctive gets stronger and thus longer protection, in the sense, it’s stronger only because the possibility of its generic association is least, to begin with until it travels and becomes integrated within general linguistic use out of the context in which it was protected. However, once a mark attains a substantial reputation for Dilution to kick in (i) it is already substantially integrated within the language for expressive concerns to begin, and (ii) a consumer being confused by someone using it – is less significant a consequence for the proprietor as against a consumer being voluntarily diverted.

This brings me to the last leg of the critique- free riding, which focuses on diversion by use of the mark, as against confusion. A justification for protection against free-riding is that it creates a negative externality for the Trademark owner by derailing a potential source of income or the possibility of an expanded market. However, a mere possibility of expansion of the market or a potential association of a reputed mark, without creating any confusion, cannot, in my opinion, be a legitimate interest when competed with the interest of using reputed and popular words/symbols that have communicative or semiotic functions. The same is not a viable interest (especially in the case of a reputed mark that already has a significant source of income) to erode semiotic functions of the integrated word/symbol and limit it to a unitary meaning in all contexts. From Hugo Grotius (an early natural law theorist) to Mark Lemley (a recent law and economics theorist), all acknowledge that an interest to use things that are otherwise excluded, without demeaning any legitimate interest of the excluder, is a positive externality and is socially permissible. Thus, in my opinion, the use of Louis Vuitton to sell groceries, although awkward in the beginning, would in no way harm the bag seller in the current time (they may argue that the potential to expand is hurt, but Trademark law should only concern with actual use, not probable use) and would promote a legitimate speech interest of generating alternate associations and forging alternate meanings.

Taking this argument further to the “Rolex” example in Trademarks Unplugged by Alex Kozinski, any seller of the premium watch- Rolex would not be legitimately hurt by a so-called counterfeiter selling cheap watches with the label Rolex on the street, as neither would a consumer of the fake be a potential market of the initial owner nor would there be any associational loss (as no reasonable Rolex customer would be confused or would associate it with the rich person’s Rolex).

The only loss to the proprietor of the reputed mark here is what I refer to as the possible propertarian moral loss. To elaborate, the only interests of the proprietor that are hurt are- (i) third-party associational interests (but that is not a consumer), and (ii) most importantly in the panache of the mark’s associated product, generated by keeping supply low and prices high. However, whether this is a legitimate interest, is debatable. In my opinion, an interest that enhances societal hierarchies inconsiderate of distributive capabilities is not a legitimate interest when competing with the communicative interest of using the word Rolex in a way that does not confuse or deceive consumers (not third parties) about the origin of the associated product sold under that label. An assumption that it is a natural right to protect this interest in maintaining panache through its property-esque formulation is ignorant of the limits that it faces considering competing communicative and socially re-equalizing effects of alternate concurrent use of the expression.

RE-CONSTRUCTING FAIR USE- WILLIAM FISHER (SUMMARY AND TAKEAWAY)

I am choosing to summarize and analyze one of the (in my opinion) most important pieces of Copyright theory and policy (some very prominent Professors here at Berkeley refer it to as their bible on anything copyright). I am putting this here for everyone to be able to contextualize the role of Fair use as a policy matter while thinking of copyright’s role, its trade-offs, and how to think about progress/ values and its role in it. Here is the full piece (highlighted): Link

Prof. Fisher, to begin with, recounts that fair use as an affirmative defense, distinct from an inquiry of infringement began in the mid-twentieth century, and was subsequently adopted in Section 107 of the Act of 1976. He recounts the logic given by Justice O’Conner of Market Impairment in Sony Betamax and argues that every case where the fair use defense is invoked will involve market harm, and so it is relevant to estimate the “magnitude” of market impairment by privileging certain uses, not the mere “existence” of market impairment.

On Necessity, Prof. Fisher points out to be wary of the dangers inherent in its ambiguity. Sony and Harper v. Row discounted the necessity factor- however, J. O Conner in his analysis did say that copying essential to communicate facts may be privileged.

Prof. Fisher points out J. O Conner’s discussion where he says the rights conferred by copyright are designed to assure contributors to the store of knowledge a fair return for their labor. Prof. Fisher criticizes this as showing an objective that is fundamentally different from social utility. He says that the notion J. O Conner embodies is that authors and inventors deserve a reward for labor irrespective of whether they would continue to work in the absence of this compensation. He criticizes this as being ambiguous- in terms of what exactly is a “fair” return for creative labor- how to balance it with the dissemination of output concerns, etc. He argues fair use, in its (then) current practice to be aiming at “balancing” inconsistent claims derived from conventional, incommensurable premises- something which perpetuates difficulty, as against concreteness in analysis.

He then goes on to choose premises- firstly relying on economic premises- he argues- that the objective of copyright law in general and the fair use doctrine, in particular, should be the efficient allocation of resources. Secondly, he argues, what he calls more of a utopian vision relying on cultural premises- stating that “copyright law has a significant effect on the shape of our culture and that a vision of the sort of culture we would like is a prerequisite to wise administration of the law.”

Coming to the doctrine, he says that if the package of entitlements created by the provisions of the copyright act other than 107 enabled creators of intellectual work to collect monopoly profits in greater than optimal amounts, a judge could use fair use to chip away at that package until reaching the most efficient combination. He argues that economic analysis helps us realize this, in spite of its important critiques of fostering complete market dependence. He argues that the point of inducement through monetary incentives is to have more and better works, but efficiency gains from this inducement are only realized upon increased consumer satisfaction that results when readers have access to these more and better works.

Prof. Fisher states that an efficient way of using the incentive access paradigm towards efficient allocation of resources through the fair use doctrine – is to analyze whether the production of “work” requires- or is affected by incentives or not. He firstly talks about special circumstances where the provision of incentives through the law has no role to play in the inducement of further production, given optimal earnings even without such legal protection is available. Here he says every use should be fair. On the other hand, he talks about works where even a single putatively infringing use would incur economic costs that exceed gains due to sensitivity to fluctuation in anticipated incomes and behavioral elasticity in respect thereof. In such a situation due to the inefficiency involved, it should be ruled unfair. Moving on from these special circumstances, he argues that In more complex situations, differentiating types of works for applying fair use creates some efficiency and some inefficiency as well. He says that copyright covers a variety of works from books to films, to factual works to fictional works, to computer software- the incentive interests/requirements on which are different. He thus argues that creating some difference in the nature of work in relation to their purported incentive requirement does make sense, but too many differences may lead to distortion where artists will assume the worth of their works legally and pursue or distort from pursuing a particular form in favor of the other. His solution is the following:

“To make an efficient choice, the judge should estimate three figures. First, he should determine how much of an efficiency gain, caused by differentiating the monetary incentives for creating different types of intellectual products, would result from moving from each level of specificity to the next. For any of a variety of reasons, the optimal combination of entitlements for musicals may be different from the optimal combination for other sorts of plays. Lumping them together would therefore result in a less-than-ideal system of incentives for playwrights of all sorts. The judge should ascertain how much less than ideal. Second, the judge should determine how much of an efficiency loss, caused by reducing playwrights’ ability to predict their incomes, would result from each subdivision. Suppose, for example, that differentiating musicals from other plays resulted in sharply different combinations of entitlements and income levels for writers of the two sorts of works, but left a substantial number of potential playwrights uncertain as to whether the plays they contemplated writing would ultimately be classified as musicals or non-musicals. The effect would be to sacrifice much of the efficiency gain described above by reducing the willingness of risk-averse playwrights to write works whose status was unclear. Third and finally, the judge should calculate how each additional differentiation would affect the number of cases in which the parties disputed the classification of the copyrighted work in question, and what the litigation costs generated by those controversies would be.”

Another theory that could relate to the nature of work factor, that Prof. Fisher furthers is that, when an art form is in its infancy, or just starting to grow in circulation, adjusting the compensation system so as to increase the number of artists engaged in developing it may increase quality and variety available to consumers- if that is what the legislature values. As opportunities for synergies of this sort diminish, the scope of protection can rather be reduced.

Prof. Fisher, in his economic analysis, continues to focus on identifying the incentive/loss ratio by examining efficiency considerations upon every use on the incentive and its consequence on the overall allocation of resources and efficiency, as a tool to understand whether a use is fair or not.

Moving on to his utopian vision, he uses J.S. Mill to argue that self-determination and the development of mental and moral faculties for a rich, diversified, and animating culture is the most important goal of copyright policy. He argues that cultural innovativeness- the key to diversity- would not just be tolerated by the government but rather nourished and rewarded. This is what he invokes to be his theory of protection of transformative works as fair uses.

He argues that defining the optimality of incentives when calculating the incentive/loss ratio needs to accept the following analysis: The creators of art should be afforded better than average incomes (or greater freedom from drudgery) whenever, but ONLY whenever, such a policy would increase their output enough to yield a net improvement in the lives of non-artists. He argues fair use as limitations on the freedoms of some to advance the interests of others from the view of helping shape tastes and capacities that enable the formation of autonomous and socially determined preferences in lieu of a good life.

His main argument for reformulating fair use is the following.:

“Maximization of allocative efficiency can be achieved by arranging the set of activities putatively reserved to copyright owners by section io6 in order of their incentive/loss ratios, identifying the point in the series at which the benefits secured by holding out monetary incentives to talented persons exceed by the maximum amount the attendant monopoly losses, and declaring all uses above that point fair and all uses below it unfair.”

Coming to the factors: he argues that the transformative factor is important as it creates more opportunities for Americans to be actively involved in shaping their culture and socially shaping identities- thus enhancing abilities beyond the ability if all were mere passive consumers.

Then he goes on to advocate for the value of the use- citing education as an example- and so he argues that acidities that facilitate education by enhancing access to information and argument on matters of public importance, or facilitate dissemination of education – they should be fair uses due to the value component involved- however, the degree of preferential treatment, according to fisher depends on how important (NECESSITY) to education is the use of that activity.

Another value determinant he cites is cultural diversity- any usage that facilitates cultural diversity and faculties of choice and self-determination. He thus argues to deem fair – uses- that have the potential for more derivative works – given their impact on cultural diversity. (AK comment: I think he is conceptualizing derivative works in a broad way to include transformations in content, otherwise I don’t know how this would make sense given the meaning and message remains the same irrespective of the potential to have more derivative works).

The next factor for him is Protecting the Creative Process: where he argues to disfavor things that undercut the artistic process- and provide artists and consumers maximum opportunities for engaging in the creative process. He uses this to analyze the “published” – “unpublished” dichotomy and argues for use of unpublished works to be unfair- given for him they hamper the confidence of the artist in his/her/their creative process. He says rather than deterring all unpublished works from being used, a more precise standard would be “disfavored unauthorized uses of materials the creators of which were still considering revising”.

He also favors uses that equalize public access as ones that ought to be deemed to be fair.

In conclusion of his utopian analysis he identifies that consistent application of the utopian analysis would require expansion of fair use to the point where creators would be left only with income to live on, or a just conception which would require that the expansion of fair use be only halted when further movement would leave creators substantially below the national average of income- given the law perpetuates this enablement.

He finally argues that:

“for the time being, it seems wisest to limit judges’ involvement in the compensation of artists to (i) the avoidance of superfluous income; (ii) the promotion of cultural diversity by favoring types of art for which popular demand currently is low; and (iii) providing artists (to the extent practicable) minimal levels of income.”

PROPOSAL:

Recognizing that his utopian vision is not going to tangibly turn in policy any time soon, he proposes a modest solution using factorial reform for better fair use to ensure a better deal than the one existing then:

Whether the creator considered the work finished.
Definition of injury of harm.
- Ascertain the “type of copyrighted use at issue” to ascertain incentives actually required in the said type, in terms of the incentive/loss ratio. This, however, should be carefully done narrowly as is consistent with preservation of the ability of authors to identify which camp they fall in.
- Conduct of the sort engaged by the defendant- commercial or not (although not a separate analysis but only a component of defining the harm caused to the creator if at all)
Decide whether the harm above is substantial (reduce the quantity or quality of output by affecting incentives) or insubstantial.
If the above three tests fail to resolve the controversy- or there isn’t enough information to draw a conclusion out of the above three tests- be proposes the following factors to step into:
- The magnitude of injury (the more serious harm to producers- the less willing the judge should be to deem it fair)
- Creativity (the more the activity or use is creative, and transformative, the more the judge should deem it fair as they increase diversity)
- Education (Fisher points out this is to be of relatively higher importance): use increases access to info or arguments (perspectives) on issues of public importance or facilitates efforts to make available to students resources to learn- the more the bend towards fair use.
- Price discrimination (the more use undermines the ability of the holder to engage in price discrimination, the weaker case of fair use- given price discrimination is good policy as it increases rewards and increases access. (Differential pricing strategies- which have lately been criticized due to administrative difficulties and parallel importation logics)

A PRELIMINARY THEORY OF FAIR USE THAT I AM BEGINNING TO CONCEPTUALISE:

The legislature values certain things (not in the commodity sense) that it seeks to ‘enable’ (a proxy for incentivizing, given it doesn’t really incentivize in my opinion- it ensures they are not de-incentivized) so that people who produce these valuable outputs are not disincentivized from producing and shift to marginal sources of revenue, because well they aren’t able to survive and make enough money by doing these pursuits. The corollary of not enabling them would be such performances (a proxy for “creations” because I personally do not believe anyone can ever find out who created an expression) not existing in society, and these performances are valuable. So the legislature using the tool of the Copyright Act enables them by giving them a limited property-Esque right/ market power over their creations so that they can extract value out of it (social and economic). However, the legislature does recognize the constraints of giving such market power access to these valuable outputs- the very reason why they want these creativities to exist- the very reason they value it is so that people can experience it.

So, to ensure that they protect interests that they value over/more than the enablement of creators- they create exemptions and limitations (and not exceptions) to this statute that provides enablement. Values like research, education, cultural diversity, etc are more important for the legislature than enabling the creation of works- and this “hierarchy of values needs to be understood”. Fair use is representative of this hierarchy of values. Fair use is not a defense in that understanding- it is in fact a tool to show which value is deemed to be more important and what sacrifices does enablement of creation has to go through to actually and tangibly support the achievement of the ultimate policy goal and value it seeks to instrumentally achieve – i.e., the existence of more and diverse works for people to understand, internalize and be exposed to. Fair use stems from this hierarchy of values that in a democracy the legislature prioritizes.

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Andy Warhol Foundation v. Goldsmith – A misnomer of a debate!

In my opinion, the main debate in Andy Warhol Foundation v. Goldsmith, which was recently argued at the United States Supreme Court is-

“How to draw the line between the scope of the right to exclude the creation of derivative works, that copyright law confers upon the creator/owner, as against the purpose and character of use exemption to copyright infringement that is for users/downstream creators/people who seek access.”

The debate is riddled with delusions and misconceptions about the instrumental purpose of copyright law. Why?

The purpose and character of use exemption is often used to limit the scope of claims of copyright infringement and is considered to be applicable to all rights that are given to the owner of copyright (Re: Google v. Oracle (SC)). In Campbell, the Supreme Court devised the transformative purpose and character test to define the meaning of this exemption. It stated that if there is a transformed purpose, meaning, or message conveyed by the use of a work, the same would probably be exempted from infringement (upon balancing this with the other three factors of the fair use analysis). On the other hand, the right to make a derivative work, in its definition under §101 of the Copyright Act, states that a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted is a derivative work.

Seems like an oxymoron on the first blush, isn’t it? How can transformed uses be excludable and exempted from infringement at the same time?

Well, not really a conflict if we try to understand the concept behind (i) the right (the social relation or claims against others) that the derivative excludability confers, (ii) the instrumental purpose behind the purpose and character of use exemption, (iii) as well as their interaction with the reproduction right given to the owner.

As Talha Syed argues, the meaning of words in a statute is never given- whether plain, common or core, but is always rather a concept to further the social relation that the law seeks to instrumentally push. Talha argues- “We are not supposed to look for something out there by staring at the words, but rather think about our aims.” Just staring at words that may be identical but used in different contexts and concluding oxymoron-ish usage in lawmaking as a ground for an indeterminacy critique of the same, is a mistake and does not do much in terms of devising a solution. It is a mistake that forgets the need to contextualize every use of the word in a statute to be representative of a concept, which is never self-contained but relational and hence fluid- in terms of the context and aim it seeks to achieve, given the law is nothing but an instrumental tool to achieve a social goal and govern social relations. Reifying words keeps us confused throughout and keeps us thinking that law is indeterminate and is basically a character of what Libby Adler terms as an invitation to “lawyering 101”. Talha Syed argues that “To think it anything else—i.e., to think of it as some rules “out there,” with “words” having “given” meanings that must be divined (or destabilized)—is to seek to replace what is always, ultimately, a question of purposes and values with a pseudo-cognitive operation.”. We don’t need to be mystified by the words used in the statute seeming identical, and try to trace, mechanically, some perceivably authoritative sources which could result in such uses- and then try to understand what the word means in an effort to reduce its indeterminacy. This whole process completely forgets the core aim of the legal tool and analysis considering the same. It is just a tool to avoid any mental contact with the aim and purpose of the instrumental tool. This is what is happening in this case.

The Court, by trying to draw distinctions between the scope of the rights, focusing on what is the width of each of these competing claims- tracing levels of transformativeness – and thinking that anextension of the court-created transformative use criteria to alternate meaning or message would erode the transformation right given to the owner, because, well, at both places “transformation” is mentioned,is completely missing the point.

Let us go back to the purpose of Copyright law. Due to fairness and economic concerns, authors (who often assign these rights away) are, through a competing legal claim in the form of a property right, allowed to exclude people from using/accessing their work in the primary market as well as some secondary markets, so that they are able to extract optimal social value out of the same. The reason is not because it’s natural to them or because they used their mind and body and therefore others should not get to use it or free ride on it depriving originators of benefit. The reason is simple- we need to ensure these people get reasonably paid so that they are enabled to continue these creations because we as a society value these creations which help in subjective self-determination for a lot of us. Thus, we make a trade-off with access benefits. The fundamental reason for this is that we value such creations, and we want more of such meanings and messages which help our self-determination to be autonomously defined by exposure to many and variety.

This law is a tool to instrumentally achieve this goal. Every concept in this law, in its statutory framings, has to be remolded in light of it being a tool to achieve this particular goal. Focusing on identifying meanings of words within the tool, completely takes away any mental contact with this goal, assuming the said goal to be fulfilled by reading the words in a particular way anyway. No. That is fundamentally evasive of having any mental contact with the act of reasoning as to whether a particular interpretation even does anything to achieve the goal or not.

In light of the said purpose of copyright, let us look at this debate. The derivative right gives control to the author of the work over-exploitation of works in secondary markets which are in a different form. The concept of ‘form’ here has to be interpreted in light of the purpose of the law, to allow for protection only in secondary markets and not in the primary market- for which the right to reproduction already exists. And the illustrations in the provision clearly show the above concept as well: translation, dramatization, fictionalization, sound recording, abridgment etc. Apart from musical arrangements (which was heavily lobbied for, and I argue was mistakenly included within this elsewhere), there is rarely any change in the meaning and message of the original content that is represented in any of these forms that are illustrated. The content, meaning and message conveyed are essentially the same, the medium of representation being different. This coincides with the whole idea that copyright is only conferred upon original expression. By construing the scope of the secondary market to extend to forms of expression which although incorporate some of the primary content but convey a different meaning and message overall, in effect confers a right to exclude over by-products of the original work, which are not even original to the person to whom the right is actually conferred. What is the enablement for then? To prevent free-riding? I don’t see prevention of free riding beyond the original work (and by work, I mean the original meaning and message of the creator) being extended to any and every by-product, fulfilling any instrumental purpose of the law articulated above. It is just a moralistic claim with no basis, but rather an argument that- as I uttered a word from my mouth or used my hand to make a stroke on a canvas, so I get to exclude whoever uses it in whatever context. That has no instrumental role to play at all. In that case, let us extend market power to exclude on every act of imputing labor to include all by-products, even if the meaning and message of the by-product is fundamentally different and non-original to the person seeking the right. That just doesn’t make any sense. The whole point of giving an instrumental right is to show that we value such original creations- but then using the instrument to curb the ability of others to create more meanings and messages, is like pitting the instrument against the ultimate purpose of having the instrument in the first place. As Madhavi Sundar states- IP is a means to an end, not an end in itself.

Being cloaked by indeterminacy concerns of the law influences lobbies and power to drive the ultimate meaning of the legal tool. Due to concerns around indeterminacy, as against trying to interpret the law from the purpose it sought to achieve, the scope of the derivative rights have been read extremely broadly over time to include works, which although do not involve, conceptually, any “form” based changes, but rather incorporate prior content to portray an alternate meaning or message, unless the purpose of representation has been shown to be different. The logic extended is to expand excludability to all channels through which the public experienced the work, even if in fragments, embedded in a different meaning or message. It is plainly wrong to be doing this. It shows the power of the political economy in driving meanings of legal tools which are shrouded and critiqued only through the lens of indeterminacy, as the right holders will always be able to use their capital to hire the best lawyers to draw their side of the interpretation to be the better one before the judges- capitalizing around the somewhat “confusing” image of the law. It is just problematic and ignorant of drawing any mental contact with the ultimate purpose that the law seeks to achieve.

Derivative rights do not and are not supposed to include transformed uses even for the same expressive purpose, but only transformed forms of the same expression that is the original creation of the primary author. The interpretation of the use of the concept of ‘form’ with transformed within the definition has a limited meaning of an alternate medium of representation/ an alternate physical embodiment distinct from the medium of expression of the original work. Any different interpretation, pitting the scope of the derivative right against the transformative purpose and character exemption under the Copyright Act, seriously undermines the instrumental nature and goals of copyright and its first amendment concerns. It just makes the co-existence of the derivative works right, reproduction right, and the purpose and character of use exemption to copyright infringement, which are all present in the same statute, completely incoherent.

Coming to the purpose and character of use exemption, many argue that purpose and character only mean transformed purpose- that is if a work is initially meant to entertain, and the user uses it for informative purposes- well then it satisfies the first-factor enquiry. Such a limited reading, influenced by the use of transformed in the definition of the derivative right, again ignores that transformations also happen to show different meanings. These are inquiries of exemptions to infringement- with the goal being to ensure that the enablement value of copyright does not, curb access and downstream usage concerns, beyond its optimal purpose. It once again runs contrary to the instrumental purpose of the law and romanticizes the instrument beyond its optimal need instead. The goal of having a paintbrush is to paint a picture. It is not to keep staring at the paintbrush and appreciating its look and romanticizing it and just continuously increasing its value without really painting anything using it.

Once we get hold of this concept, the case is quite easy actually, especially to the extent that the cert. was issued by the SC- on the limited issue of transformativeness of usage. It is clearly transformative and does not impact any form-based secondary market of the original creator, in relation to her original work, so long as the meaning and message that comes out of the new picture is different for people who are in the art world.

Any time the meaning and message is transformed be it in the primary market or the secondary market, and it does not simply seek to substitute the original works’ markets by trying to replace it portraying the same expression/meaning or message in the eyes of the viewer (someone who can identify given conceptual art is complicated to interpret), it satisfies the first fair use inquiry. Period. Irrespective of the rights conferred to the owner- this is the reasonable balance that the Copyright Act seeks to draw to ensure that the enablement is optimal and not beyond it, considering its bilateral tradeoff with access and use concerns and the instrumental goal that copyright, as a legal tool, seeks to achieve.

Given the large-scale implications of this case on appropriation art, sampling artists, artists performing various kinds of ontologically “transformative” culture- it is important to internalize this and ignore this misnomer of a debate, which in a prolonged manner, through the tool of the cloak of indeterminacy, is continuing to existentially estrange many cultural meanings and messages (something which the society clearly values) from existence in the society- paradoxical to the goal which the law, where this supposed indeterminacy is perceived to be embedded, seeks to achieve.

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