Category: Intellectual Property

Likelihood of Delusion:  Ghost Guns and IP in a World Gone Mad

“Defcad stands against artificial scarcity, intellectual property, copyright, patentable objects, and regulation in all its forms.” – Cody Wilson, Promo Video, 2013 –

In 2012, when this blog was new, I wrote a short piece about Cody Wilson’s vision to combine Second Amendment maximalism with tech-utopianism to ensure that every citizen has even easier access to firearms than we do now. DIY gun production using 3D maker technology was more than a hobby to Wilson, it was a movement he called Defense Distributed. “How do governments behave, if they must one day operate on the assumption that any and every citizen has near instant access to a firearm through the Internet?” he asked.

Now that we must once again “pay the price of freedom” with the blood of slaughtered children, among the 240 mass shootings this year, I looked up Defense Distributed for the first time since that original post to find it fronted by a sleek portfolio of websites. Customers can download CAD designs for guns, purchase starter kits and materials, and even buy a $500 milling machine called the Ghost Gunner. Or visitors can “Join the Fight,” meaning …

LEGIO is Defense Distributed’s technical and legal support fraternity. Legionnaires do more than ‘protect’ the Second Amendment. They fund its direct, material expansion.

Even if the Second Amendment expressed a generalized and unrestricted “right to bear arms,” which it does not, that stated agenda reeks of a familiar hypocrisy which daydreams of anarchy while thriving in the very system it wants to undermine. The answer to Wilson’s dumb question about the “behavior of governments” is that if elected officials ultimately come to fear violence instead of votes, the American Republic will collapse, and his “Legionnaires” can look forward to playing Mad Max for a few weeks before they starve to death.

In a video interview with Reason, Wilson describes himself as post-political, referring to institutions like the American presidency as mere pageantry without any connection to “what is really going on.” Whatever he imagines that might be, Wilson is blissfully unaware of any cognitive dissonance when he characterizes our political and legal system a sham despite his alleged fealty to the Constitution. Even more absurd is that the amendment he proposes to “expand” has only attained its present status by means of brute and undemocratic political force rather than an honest reading of the text or its legislative history.

Talismanic Guns and Trademark Infringement

The prevailing misread of 2A, along with the marketing messages of gun manufacturers and the NRA, has etched the idea in many American minds that personal firearm ownership is either literally or symbolically the safeguard of liberty itself. Consequently, it is no surprise that the unlicensed, untraceable ghost gun is seen as an even stronger talisman of “freedom.” Presumably, it is this psychology that inspired Wilson’s design repository division, Defcad, Inc., to appropriate trademarks owned by the gun control advocacy organization Everytown For Gun Safety, whose logo looks like this:

Everytown for Gun Safety

The complaint filed by Everytown accuses Defcad and several anonymous individuals of trademark infringement, citing evidence of unlicensed uses of both character and design marks on various guns and in marketing materials. Clearly meant as a “fuck you” to gun control advocates, Defcad willfully incorporated Everytown’s protected marks in several CAD designs it supplies to customers,[1] and it named selected items in its product line after Everytown’s protected phrases like MOMS DEMAND ACTION FOR GUN SENSE IN AMERICA …

And, of course, some of Defcad’s customers who made these guns taunted Everytown with photos of their wares on social media, achieving the perfect intersection of asshole and technology, proving once again that tech-utopianism is fundamentally sociopathic.I am not especially well versed in trademark law but assume that appropriating a mark to use in the very trade the mark was created to oppose, and sowing confusion in the process, presents a strong claim of infringement. There is no question that Defcad appropriated these marks with the intent to criticize and mock Everytown, which is itself protected speech and seemingly the only plausible defense in this case. But several facts here should militate against finding non-infringement on the basis that Defcad’s uses of the marks are exclusively parodic, satirical, or critical.

Although this suit is at trial in the Second Circuit, the Fourth Circuit offers insight in the case Louis Vuiton Malletier v. Haute Diggity Dog, holding that the latter’s “Chewey Vuiton” dog toys lampooning LV handbags etc. were non-infringing parodies. First, in considering what it calls the PETA test (from PETA v. Doughney), the court states, “A parody must convey two simultaneous — and contradictory — messages: that it is the original, but also that it is not the original and is instead a parody…This second message must not only differentiate the alleged parody from the original but must also communicate some articulable element of satire, ridicule, joking, or amusement,” the opinion states, quoting PETA.

Next, the court applies the three Pizzeria Uno factors (Pizzeria Uno v. Temple), which weighs the likelihood of confusion by 1) considering the market awareness of the mark used; 2) similarity of the allegedly infringing mark(s) to the original(s); and 3) similarity of the products at issue. “It is a matter of common sense that the strength of a famous mark allows consumers immediately to perceive the target of the parody, while simultaneously allowing them to recognize the changes to the mark that make the parody funny or biting,” the opinion states. (Emphasis added.)

The considerations under both tests should disfavor Defcad. Everytown’s marks are not so widely known and recognizable as a major consumer brand; Defcad made no alterations to Everytown’s protected marks; and although there is obvious contradiction between the two missions (rather than products) in this instance, confusion exists because Everytown’s marks could plausibly be used without irony on a firearm.

While researching this topic, I personally experienced the kind of confusion that trademark law is intended to alleviate in the market. Because I was previously unfamiliar with the Everytown organization but aware that many gun rights advocates also preach gun safety, it was not readily apparent that, for instance, this firearm had been sarcastically affixed with trademarks owned by a gun control organization. And, of course, American flag variations are not a clear indication of any party’s point of view.

All the winning parodies cited in LVM v. Haute Vuiton include significant alterations of the marks used, involve products unlikely to be confused with the ones being lampooned, and all generally express good-natured humor. While there is nothing good-natured about Defcad’s use of Everytown’s marks, more germane to the question presented is that there is no clear evidence of parody, or even commentary, that is immediately recognizable to the ordinary consumer who (like me) encounters this product without prior knowledge of the Everytown organization. The less well-known the trademark, the less likely an alleged infringer can claim to parody the mark.

Likewise, with protected phrases like “Moms Demand Action,” most of us are aware that there are moms who demand gun control and moms who demand more guns in every hand. Hence, the defendants are not clearly expressing a parody that is recognizable to a market outside a Venn diagram that encompasses substantial awareness of both Everytown and Defcad’s ghost guns. To a majority of observers, I suspect these appropriations create significant confusion, and a finding for Defcad would seem anathema to the purpose of trademark law.

EFF Defends Anonymity of the Doe Defendants

Whether Defcad’s individual customers (e.g., Yeezy in the tweet pictured above) should be named defendants in this suit is a fair question, but if DIY truly means joint manufacture of a product, does this not imply some shared liability with the commercial provider of the materials? (And with firearms, this raises a number of questions more complicated than trademark infringement.)

Because the individuals who posted mocking photos at Everytown on social media are anonymous, Everytown asked the court to order these parties unmasked during the discovery phase—a request apparently granted by the district court. On this matter alone, the Electronic Frontier Foundation filed a motion asking leave to file an amicus brief in response to “the district court’s failure to meaningfully analyze and consider the First Amendment rights of anonymous online speakers targeted by Plaintiff’s discovery order.”

Without overtly defending Defcad, or taking a position on Everytown’s underlying infringement claim, the EFF states that “the Doe defendants appear to be using the mark in question for expressive purposes.” The EFF asks the court to apply a “robust First Amendment” analysis prior to allowing the identification of the anonymous speakers, and it bolsters its argument with the underlying principle that trademarks may be used without license for criticism, parody, and other forms of protected speech.

While the EFF is correct in general, and should probably be allowed to file a brief, several factors in addition to those discussed above weigh against the speech concerns raised. First, removing the veil of anonymity does not necessarily chill the speech right of the individual, and such a claim appears weak in this instance. A court should consider how essential anonymity may be to expressing the speech at issue, and here, it is implausible to the point of absurdity to argue that anonymity is necessary to express scorn for gun control.

Second, recognizing the fact that sock puppets and bots are often used on social platforms to extend the reach of a particular message (something the EFF knows well), the plaintiff here has a right to know the identities of the individuals or entities allegedly infringing its trademarks. For all Everytown knows, these social accounts may be owned and controlled by Defcad itself. There is simply no reason to believe that behind every avatar is a unique, human citizen engaged in speech protected by the First Amendment.

Third, if Defcad’s defenses are likely to fail on the merits, this should weigh against the Doe defendants’ right to anonymity in a case where they have jointly manufactured and promoted products which are permanently engraved with Plaintiff’s marks. The Doe defendants’ right to criticize Everytown or gun control is without question, but they have limitless options for expressing that view without engaging in or facilitating trademark infringements that sow the kind of confusion discussed above.

Just as it was no surprise that crypto would be a currency of choice for criminal activity, the low-cost, untraceable ghost gun offers the criminal anonymity in his choice of weapons. In a statement issued by the White House, 20,000 suspected ghost guns were recovered in criminal investigations last year— “a ten-fold increase from 2016.” In response to both federal and state authorities promising to ban ghost guns, Wilson predicts that laws and regulations will be ineffectual against the disintermediated inevitability of open access to the materials and tools that he and his competitors provide.

It would be funny, if it were not tragic, to watch John Perry Barlow’s chickens come home to roost and to discover that they are all armed with deadly weapons. Is anyone truly surprised that Wilson’s dream of an unregulated militia is a logical consequence of opposition to “artificial scarcity, intellectual property, and all forms of regulation?” Strange that it started with music piracy and now it’s guns. Strange. But not at all unexpected.

[1] And based on the attitude expressed by DD, it seems likely that at least some of the designs are infringing copyrights.

Warhol Foundation v. Goldsmith at SCOTUS Part II: The Derivative Works Right

In Part I, I wrote that I hope the Court will find that AWF’s central argument fails on the “transformativeness” question presented and that it will reaffirm that this part of the fair use factor one inquiry must find at least some evidence of commentary upon the original work. Warhol’s Prince Series does not comment upon the photograph used, which is why the Court should also reject AWF’s allegations that the speech right is at stake in case:  because AWF wrongly applies the fair use exception in context to speech.

Once again, the implication that fair use evolved to protect all uses resulting in any form of protected speech (i.e., nearly all uses) is where the anti-copyright crowd would like to go, but it is an aberration of the doctrine. Instead, the speech right lives in fair use because, at its core, the exception prevents the copyright owner from prohibiting various uses that comment upon or criticize her work. Under AWF’s doctrine, everything that speaks is fair use, even Sen. Hawley’s recent defense that his unlicensed use of a photograph on campaign merch should be fair use because it is obviously political speech.[1] This is simply wrong as a matter of law.

Many follow-on works that legitimately fall within the correct doctrinal boundary of fair use will continue to be made if the Court rejects AWF’s over-broad claim to defend speech and the entire world of appropriation art. With regard to the latter subject, uses that do not meet a proper fair use standard may still be made through licensing, which brings us to the question overshadowed by the fair use inquiry, which is whether Warhol prepared derivative works that infringe Goldsmith’s exclusive right under Section 106(2) of the copyright law. I have said in earlier posts that my own view is that the Warhol screens do not sufficiently copy enough of Goldsmith’s expression to be infringing, but that’s a matter for lower courts and juries. More germane to the moment is whether the Supreme Court might reaffirm the importance of considering prima facie infringement before responding to a fair use defense and, thereby, reaffirm the derivative works right, which has been gnawed upon, if not occasionally consumed, by the fair use hydra.[2] After all, the right to prepare derivative works is statutory law, while the “transformative” doctrine is not.

Affirming Authorship in Photography

Oddly enough, my instinct here is that reasserting the value of the derivative works right in this case would, in addition to fostering better copyright law, possibly shore up the foundation of authorship in works like photographs. I say this regardless of the outcome for either party, and others may disagree, but I’ll do my best to explain.

Begin with the acknowledgement that nearly all photographs—and certainly many portraits—are a mix of unprotectable fact and protectible expression. In a photograph like Goldsmith’s 1981 portrait of Prince, the expression (i.e., Goldsmith’s authorship) is subtle in that we understand, as a matter of law and common sense, that she is obviously not the author of Prince’s face. This nuance in photographic authorship is a conceit the anti-copyright ideologues would like to obliterate, and quite often they attempt to do so by arguing a very broad interpretation of “transformativeness” that would swallow the author’s exclusive rights.

Copyrightability in the medium of photography rests substantially on two principles articulated in two Supreme Court cases—Sarony in 1884 and Bleistein in 1903. In Sarony, the case which challenged the constitutionality of protecting photographs at all, the Court had a relatively easy time identifying the photographer’s authorship in the observable creative choices he made to produce the resulting portrait of Oscar Wilde …

[“Oscar Wilde No. 18”] is a useful, new, harmonious, characteristic, and graceful picture, and . . . plaintiff made the same . . . entirely from his own original mental conception, to which he gave visible form by posing the said Oscar Wilde in front of the camera, selecting and arranging the costume, draperies, and other various accessories in said photograph, arranging the subject so as to present graceful outlines, arranging and disposing the light and shade, suggesting and evoking the desired expression, and from such disposition, arrangement, or representation, made entirely by the plaintiff.

But that same decision also theorized that an “ordinary” photograph—perhaps one of the many portraits typical of the day depicting regular folks posed in front of plain backgrounds—might not be protectable. But nine years later, although the Bleistein case did not involve photographs, Justice Holmes introduced the metaphysical notion of the “personality of the artist” as a foundation for authorship, an idea which prefaces the doctrines of “modicum of originality” and automatic copyright upon fixation. Holmes writes:

The [creative rendering] is the personal reaction of an individual upon nature. Personality always contains something unique. It expresses its singularity even in handwriting, and a very modest grade of art has in it something irreducible, which is one man’s alone. That something he may copyright unless there is a restriction in the words of the act.

In Bleistein, Holmes also famously cautioned courts to avoid playing the role of art critics …

It would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of pictorial illustrations, outside of the narrowest and most obvious limits. At the one extreme, some works of genius would be sure to miss appreciation. Their very novelty would make them repulsive until the public had learned the new language in which their author spoke.

If the Sarony Court might have found a portrait like Goldsmith’s of Prince too “ordinary” for copyright to attach, thankfully she and the rest of the photography world are rescued by Holmes’s “personality of the artist” principle. But to accept this principle, and continue to affirm it, we must acknowledge very subtle forms of authorship in works like photographs, which are always a paradoxical combination of truth and fiction, of human vision and mechanical reproduction.

Moreover, because many visual arts, are non-verbal works, they often defy any effort to describe what they are or what they communicate, much like a consideration of instrumental music. Hence, concepts like “meaning and message” are easily bent out of shape in cases like AWF v. Goldsmith, as was manifest in the Second Circuit’s efforts to square its decision with its prior holding in Cariou v. Prince, which failed to heed Holmes’s counsel to avoid art criticism

The “transformative” analysis invites meandering discussion about “meaning and message,” which is distracting to questions of law but also may not exist in the works at issue.[3]We must keep in mind that copyright is about expression—the subject matter of authorship—and not about meaning and message—the subject matter of audiences and critics. When inquiries become un-moored from this principle, fair use makes a hash of cases like this, and cases like this make a hash of fair use.

Where a secondary work is clearly based upon a primary work but does not meet the fair use qualification of commenting upon the primary work, the courts can agree that the derivative works right under Section 106(2) is implicated. Then, at trial, it may be determined whether the secondary work copies enough of the expression in the original to be infringing.

Observers of good intent will disagree as to whether Warhol copied more factual or expressive elements in Goldsmith’s photograph, but this inquiry under the light of Section 106(2) affirms the value of authorship in the former while allowing a reasonable consideration of possible non-infringement for the latter. In contrast to AWF’s sprawling view of fair use, the derivative works inquiry forces a court, or a jury, to begin with an analysis of the authorship in the work used with proper deference to the bundle of copyright rights attached to that authorship upon fixation.

[1] Not that this is the worst copyright mistake made by the senator. See Stephen Carlise and Aaron Moss.

[2] Recognizing that the Court failed to do exactly this in Google v. Oracle, and because only the fair use argument is presented in this case, copyright advocates have reason to be anxious about the outcome in AWF v. Goldsmith.

[3] Indeed, Richard Prince insisted that there was no meaning or message other than “art” in his works made from elements of Patrick Cariou’s photographs.

Warhol Foundation v. Goldsmith at SCOTUS Part I: The Transformative Question

Copyright watchers were surprised when the Supreme Court granted Andy Warhol Foundation’s (AWF) petition for certiorari in its case against photographer Lynn Goldsmith. For deeper background, see older posts, but this is the dispute over Andy Warhol’s “Prince Series” silkscreen images of rock legend Prince made in 1984 using Goldsmith’s unpublished 1981 portrait photograph as a reference image.

In March of 2021 the Second Circuit held that Warhol’s use of the photograph was not a fair use and then denied Warhol’s petition for rehearing in August 2021, specifically responding that the SCOTUS decision in Google v. Oracle was not a basis for reconsideration. AWF filed its petition for cert in December, and we can expect a flurry of amicus briefs this Summer as copyright advocates and critics argue for opposite outcomes on what could be seminal fair use guidance by the Court. AWF’s petition rests almost entirely on part one of factor one of the fair use analysis, which considers that bugaboo doctrine called “transformativeness.” From the AWF brief Summary:

… the district court concluded that the Prince Series was “transformative” because it incorporated a new meaning and message, distinct from the Prince photograph from which it drew. Despite agreeing that Warhol’s new work “give[s] a different impression” than the original, the Second Circuit nonetheless concluded that the work was not transformative (and thus not fair use) because the photograph “remain[ed] the recognizable foundation upon which the Prince Series is built.

The doctrine of “transformativeness” was introduced to fair use jurisprudence in 1990 in a paper by Judge Pierre Leval of the Second Circuit Court of Appeals, and it was most famously first invoked in the 1992 Supreme Court decision Campbell v. Acuff-Rose. There, the Court held that 2 Live Crew’s “Pretty Woman” was a parody of the Orbison/Dees song “Oh, Pretty Woman,” and that factor one, therefore, favored a finding of fair use.

I have written in other posts about this case that the “transformative” test is a uniquely troubling, if not almost useless, consideration in the world of fine art. I hold this view because the fair use doctrine evolved on the principle that the user of a work would, in general, comment in some way upon the work being used. This is evident in the paradigmatic examples listed in §107 of the copyright law—”criticism, comment, news reporting, and teaching.” While not intended to be an exhaustive list, it is not coincidental that these examples, and their subordinates like “parody,” all imply saying something about the work allegedly infringed.

In Campbell, the Court does not stray beyond the boundaries of this analysis. On the contrary, in holding that “Pretty Woman” was a parody of “Oh, Pretty Woman,” the Court remained well within the interpretation that factor one of the fair use analysis initially looks for evidence of commentary upon the original work. It was not necessary that the “transformative” language, adopted from the Leval paper, be part of that analysis, which is otherwise consistent with prior courts’ holdings on “parody”…

…the heart of any parodist’s claim to quote from existing material, is the use of some elements of a prior author’s composition to create a new one that, at least in part, comments on that author’s works….If, on the contrary, the commentary has no critical bearing on the substance or style of the original composition, which the alleged infringer merely uses to get attention or to avoid the drudgery in working up something fresh, the claim to fairness in borrowing from another’s work diminishes accordingly (if it does not vanish), and other factors, like the extent of its commerciality, loom larger.

Among the difficulties with the language of “transformativeness” and the decision in Campbell is that it includes much broader language, which AWF now cites to argue that a use favors fair use under factor one if it conveys “new meaning or message” that may be distinguishable from the original work. This is one of two problematic interpretations of the broad term “transformative.” The other problematic interpretation is a use that “expands the utility” of the original work(s), as applied in Google Books—an opinion written by Judge Leval, which begins with the sentence “This copyright dispute tests the boundaries of fair use.” Of course, the “expanding utility” claim is not asserted in Goldsmith.

As I have said in the past, comment upon the original work quite often does not exist in fine art contexts, and it certainly does not exist in the case of Warhol’s Prince Series. Warhol’s images do not comment upon Goldsmith’s photograph in any way, and AWF does not argue otherwise.[1] Instead, relying upon the broader “new meaning and message” principle, it claims that the screens convey “something different” from the photograph. In fact, I agree that this is true but disagree that this favors a finding a fair use under factor one.

Different meaning may be present, but if the secondary work does not contain at least some element of comment upon the original, there is no rationale keeping the first factor analysis from spilling over the levy quoted above in Campbell. AWF, for instance, asserts that the Warhol screens convey “Prince as icon” in contrast to Goldsmith who contends that her photo expresses “Prince as vulnerable budding star.” Both interpretations are well-founded in the context of art appreciation but irrelevant in regard to copyright law. The differences between the two works, absent any evidence of commentary, becomes a vague consideration that is indistinguishable from satire or other broad purposes historically held not to be fair uses as a matter of law.

This is one reason why the “transformativeness” concept has caused so much trouble:  because it leads courts to find fair use solely on the basis of “some difference,” and this implies a fair use doctrine without limits. Certainly, this is the outcome the copyright skeptics would like to see, but it is not good law, and it is aggravated by the fact that factor one has often weighed too heavily in the four-factor test. My gut says that the Court should find that AWF’s defense fails on the “transformative” analysis in factor one and in doing so, should reaffirm the holding in Campbell stating that where no commentary upon the original work exists, “other factors will loom larger.”

But having said that, I cannot deny that I personally believe that the Warhol screens convey something substantively different than the photograph, which goes to the other question the Court should address if it hopes to untangle the “transformative” knot at all, and this is whether the Warhol works constitute unlicensed “derivative works.” Certainly, we have seen findings of “transformativeness” under fair use analyses encroach on the derivative works right, which is no surprise when the definition of a derivative work describes “…any form in which a work may be recast, transformed, or adapted.”

It would be easy enough to hold that the Warhol screens are derivatives requiring license from Goldsmith to produce, but I believe the nature of the photograph—indeed of many photographs—may militate against such a finding. More on that in the next post about this case.

[1] In fact, any claim to the contrary would be muted by the fact that the work at issue is an unpublished photo, which conflicts with the Court in Leibovitz v. Paramount, which held that the public must be reasonably conscious of the original work in order for the defendant to claim that he is commenting upon it.