Last June, Microsoft, OpenAI and others were hit with a class action lawsuit involving their AI data-scraping technologies. On Tuesday (September 5, 2023) another class action lawsuit was filed against them. The gravamen of both of these complaints is that these companies allegedly trained their AI technologies using personal information from millions of users, in violation of federal and state privacy statutes and other laws.
Among the laws alleged to have been violated are the Electronic Communications Privacy Act, the Computer Fraud and Abuse Act, the California Invasion of Privacy Act, California’s unfair competition law, Illinois’s Biometric Information Privacy Act, and the Illinois Consumer Fraud and Deceptive Business Practices Act. The lawsuits also allege a variety of common law claims, including negligence, invasion of privacy, conversion, unjust enrichment, breach of the duty to warn, and such.
This is just the most recent lawsuit in a growing body of claims against big AI. Many involve allegations of copyright infringement, but privacy is a growing concern. This particular suit is asking for an award of monetary damages and an order that would require the companies to implement safeguards for the protection of private data.
Microsoft reportedly has invested billions of dollars in OpenAI and its app, ChatGPT.
Over a year ago, Steven Thaler filed an application with the United States Copyright Office to register a copyright in an AI-generated image called “A Recent Entrance to Paradise.” In the application, he listed a machine as the “author” and himself as the copyright owner. The Copyright Office refused registration on the grounds that the work lacked human authorship. Thaler then filed a lawsuit in federal court seeking to overturn that determination. On August 18, 2023 the court upheld the Copyright Office’s refusal of registration. The case is Thaler v. Perlmutter, No. CV 22-1564 (BAH), 2023 WL 5333236 (D.D.C. Aug. 18, 2023).
In his application for registration, Thaler had listed his computer, referred to as “Creativity Machine,” as the “author” of the work, and himself as a claimant. The Copyright Office denied registration on the basis that copyright only protects human authorship.
The court ultimately sided with the Copyright Office. In its decision, it provided a cogent explanation of the rationale for the human authorship requirement:
The act of human creation—and how to best encourage human individuals to engage in that creation, and thereby promote science and the useful arts—was thus central to American copyright from its very inception. Non-human actors need no incentivization with the promise of exclusive rights under United States law, and copyright was therefore not designed to reach them.
As I discussed in a previous blog post, the issue is not as simple as it might seem. There are different levels of human involvement in the use of an AI content generating mechanism. At one extreme, there are programs like “Paint,” in which users provide a great deal of input. These kinds of programs may be analogized to paintbrushes, pens and other tools that artists traditionally have used to express their ideas on paper or canvas. Word processing programs are also in this category. It is easy to conclude that the users of these kinds of programs are the authors of works that may be sufficiently creative and original to receive copyright protection.
At the other end of the spectrum are AI services like DALL-E and ChatGPT. These tools are capable of generating content with very little user input. If the only human input is a user’s directive to “Draw a picture,” then it would be difficult to claim that the author contributed any creative expression. That is to say, it would be difficult to claim that the user authored anything.
The difficult question – and one that is almost certain to be the subject of ongoing litigation and probably new Copyright Office regulations – is exactly how much, and what kind of, human input is necessary before a human can claim authorship. Equally as perplexing is how much, if at all, the Copyright Office should involve itself in ascertaining and evaluating the details of the process by which a work was created. And, of course, what consequences should flow from an applicant’s failure to disclose complete details about the nature and extent of machine involvement in the creative process.
The court in this case did not dive into these issues. The only thing we can safely take away from this decision is the broad proposition that a work is not protected by copyright to the extent it is generated by a machine.
Is jazz confusingly similar to music? No, that wasn’t the issue in this case. It was a contest between APPLE JAZZ and APPLE MUSIC involving tacking.
Bertini v. Apple Inc., No. 21-2301 (Fed. Cir. 2023). Apple, Inc. attempted to register the trademark APPLE MUSIC for both sound recordings and live musical performances (among other things). Bertini, a professional musician, filed an opposition, claiming to have used the mark APPLE JAZZ in connection with live performances since 1985, and to have started using it in connection with sound recordings in the 1990s. Bertini argued that APPLE MUSIC would likely cause confusion with APPLE JAZZ.
The first question that popped into my head, of course, was whether a consumer would really be likely to confuse jazz with music. I mean, come on.
Sadly, however, that was not the legal issue in this case. The legal issue was whether, and in what circumstances, priority of use can be established by “tacking” a new trademark registration onto an earlier one for a mark in a different category of goods or services.
The Opposition Proceeding
Apple applied to register APPLE MUSIC as a trademark in several categories of services in IC 41, including the production and distribution of sound recordings, and organizing and presenting live musical performances. Bertini, a professional jazz musician, filed a notice of opposition to Apple’s application, on the basis that he has used the mark APPLE JAZZ in connection with live performances since 1985. In the mid-1990s, Bertini began using APPLE JAZZ to issue and distribute sound recordings. Bertini opposed Apple’s registration of APPLE MUSIC on the ground that it would likely cause confusion with Bertini’s common law trademark APPLE JAZZ.
The Trademark Trials and Appeals Board (TTAB) dismissed the opposition. Bertini appealed to the Federal Circuit Court of Appeals.
On appeal, the parties did not dispute that there was a likelihood consumers would confuse Bertini’s use of APPLE JAZZ and Apple’s use of APPLE MUSIC. The only dispute on appeal was priority of use.
Apple, Inc. began using APPLE MUSIC in 2015, when it launched its music streaming service, nearly thirty years after Bertini had begun using APPLE JAZZ. Apple, however, argued that it was entitled to an earlier priority dating back to a 1968 registration of the mark APPLE for “Gramophone records featuring music” and “audio compact discs featuring music.” (The company had purchased the registration from Apple Corps, the Beatles’ record company.)
The TTAB agreed with Apple’s argument, holding that Apple was entitled to tack its 2015 use of APPLE MUSIC onto Apple Corp’s 1968 use of APPLE and therefore had priority over Bertini’s APPLE JAZZ.
The appellate court reversed, holding that Apple cannot tack its use of APPLE MUSIC for live musical performances onto Apple Corps’ use of APPLE for gramophone records, and that its application to register APPLE MUSIC must therefore be denied.
The Court of Appeals construed the tacking doctrine narrowly. Framing the question as “[W]hether a trademark applicant can establish priority for every good or service in its application merely because it has priority through tacking in a single good or service listed in its application,” the Court answered no. While Apple might have been able to use tacking to claim priority in connection with the production and distribution of sound recordings, it could not use that priority to establish priority with respect to other categories of services, such as organizing and presenting live performances.
The United States Copyright Office recently reaffirmed its position that it will not register AI-generated content, because it is not created by a human. The rule is easy to state; the devil is in the details. Attorney Thomas James explains.
Last year, the United States Copyright Office issued a copyright registration to Kristina Kashtanova for the graphic novel, Zarya of the Dawn. A month later, the Copyright Office issued a notice of cancellation of the registration, along with a request for additional information.
The Copyright Office, consistent with judicial decisions, takes the position that copyright requires human authorship. The Office requested additional information regarding the creative process that resulted in the novel because parts of it were AI-generated. Kashtanova complied with the request for additional information.
This week, the Copyright Office responded with a letter explaining that the registration would be cancelled, but that a new, more limited one will be issued. The Office explained that its concern related to the author’s use of Midjourney, an AI-powered image generating tool, to generate images used in the work:
Because Midjourney starts with randomly generated noise that evolves into a final image, there is no guarantee that a particular prompt will generate any particular visual output”
The Office concluded that the text the author wrote, as well as the author’s selection, coordination and arrangement of written and visual elements, are protected by copyright, and therefore may be registered. The images generated by Midjourney, however, would not be registered because they were “not the product of human authorship.” The new registration will cover only the text and editing components of the work, not the AI-generated images.
A Previous Entrance to Paradise
Early last year, the Copyright Office refused copyright registration for an AI-generated image. Steven Thaler had filed an application to register a copyright in an AI-generated image called “A Recent Entrance to Paradise.” He listed himself as the copyright owner. The Copyright Office denied registration on the grounds that the work lacked human authorship. Thaler filed a lawsuit in federal court seeking to overturn that determination. The lawsuit is still pending. It is currently at the summary judgment stage.
The core issue
The core issue, of course, is whether a person who uses AI to generate content such as text or artwork can claim copyright protection in the content so generated. Put another way, can a user who deploys artificial intelligence to generate a seemingly expressive work (such as artwork or a novel) claim authorship?
This question is not as simple as it may seem. There can be different levels of human involvement in the use of an AI content generating mechanism. At one extreme, there are programs like “Paint,” in which users provide a great deal of input. These kinds of programs may be analogized to paintbrushes, pens and other tools that artists traditionally have used to express their ideas on paper or canvas. Word processing programs are also in this category. It is easy to conclude that the users of these kinds of programs are the authors of works that may be sufficiently creative and original to receive copyright protection.
At the other end of the spectrum are AI services like DALL-E and ChatGPT. Text and images can be generated by these systems with minimal human input. If the only human input is a user’s directive to “Write a story” or “Draw a picture,” then it would be difficult to claim that the author contributed any creative expression. That is to say, it would be difficult to claim that the user authored anything.
Peering into the worm can
The complicating consideration with content-generative AI mechanisms is that they have the potential to allow many different levels of user involvement in the generation of output. The more details a user adds to the instructions s/he gives to the machine, the more it begins to appear that the user is, in fact, contributing something creative to the project.
Is a prompt to “Write a story about a dog” a sufficiently creative contribution to the resulting output to qualify the user as an “author”? Maybe not. But what about, “Write a story about a dog who joins a traveling circus”? Or “Write a story about a dog named Pablo who joins a traveling circus”? Or “Write a story about a dog with a peculiar bark that begins, ‘Once upon a time, there was a dog named Pablo who joined a circus,’ and ends with Pablo deciding to return home”?
At what point along the spectrum of user-provided detail does copyright protectable authorship come into existence?
A question that is just as important to ask is: How much, if at all, should the Copyright Office involve itself with ascertaining the details of the creative process that were involved in a work?
In a similar vein, should copyright registration applicants be required to disclose whether their works contain AI-generated content? Should they be required to affirmatively disclaim rights in elements of AI-generated content that are not protected by copyright?
Expanding the Rule of Doubt
Alternatively, should the U.S. Copyright Office adopt something like a Rule of Doubt when copyright is claimed in AI-generated content? The Rule of Doubt, in its current form, is the rule that the U.S. Copyright Office will accept a copyright registration of a claim containing software object code, even though the Copyright Office is unable to verify whether the object code contains copyrightable work. If effect, if the applicant attests that the code is copyrightable, then the Copyright Office will assume that it is and will register the claim. Under 37 C.F.R. § 202.20(c)(2)(vii)(B), this may be done when an applicant seeks to register a copyright in object code rather than source code. The same is true of material that is redacted to protect a trade secret.
When the Office issues a registration under the Rule of Doubt, it adds an annotation to the certificate and to the public record indicating that the copyright was registered under the Rule of Doubt.
Under the existing rule, the applicant must file a declaration stating that material for which registration is sought does, in fact, contain original authorship.
This approach allows registration but leaves it to courts (not the Copyright Office) to decide on a case-by-case basis whether material for which copyright is claimed contains copyrightable authorship.
Expanding the Rule of Doubt to apply to material generated at least in part by AI might not be the most satisfying solution for AI users, but it is one that could result in fewer snags and delays in the registration process.
The Copyright Office has said that it soon will be developing registration guidance for works created in part using material generated by artificial intelligence technology. Public notices and events relating to this topic may be expected in the coming months.
Getty Images has now filed a lawsuit for copyright infringement in the United States.
In a previous post, I reported on a lawsuit that Getty Images had filed in the United Kingdom against Stability AI. Now the company has filed similar claims against the company in the United States.
The complaint, which has been filed in federal district court in Delaware, alleges claims of copyright infringement; providing false copyright management information; removal or alteration of copyright management information; trademark infringement; trademark dilution; unfair competition; and deceptive trade practices. Both monetary damages and injunctive relief are being sought.
An interesting twist in the Getty litigation is that AI-generated works allegedly have included the Getty Images trademark.
Getty Images, which is in the business of collecting and licensing quality images, alleges (among other things) that affixing its trademark to poor quality AI-generated images tarnishes the company’s reputation. If proven, this could constitute trademark dilution, which is prohibited by the Lanham Act.
Thousands of books, movies, songs and other creative works entered the public domain in the United States in 2023. Here is a partial list compiled by Cokato Minnesota attorney Thomas James.
Thousands of books, movies, songs and other creative works enter the public domain in the United States this year. Here is a partial list. (Click here for last year’s list).
Last year, it was Winnie the Pooh. This year, Sherlock Holmes officially enters the public domain. Pooh’s release from copyright protection sparked some creative uses of A. Milne’s fictional bear, from a comic strip in which Pooh Bear appears completely naked (i.e., without his red shirt on) to a slasher film called Winnie the Pooh: Blood and Honey, coming soon to a theater near you.
Sherlock Holmes and his sidekick, Dr. Watson, have actually been in the public domain for a long time, since Arthur Conan Doyle began publishing stories about them in the late nineteenth century. The copyrights in those works had already expired when Congress extended copyright terms in 1998. Legal controversies continued to arise, however, over which elements of those characters were still protected by copyright. New elements that were added in later stories potentially could still be protected by copyright even if the copyrights in previous stories in the series had expired. Now, however, the copyright in the last two Sherlock Holmes stories Doyle wrote have expired. Therefore, it appears that all elements of Doyle’s Sherlock Holmes stories are in the public domain now.
One can only imagine what creative uses people will make of the Holmes and Watson characters now that they are officially in the public domain, too.
The Tower Treasure (Hardy Boys)
The Tower Treasure is the first book in the Hardy Boys series of mystery books that Franklin W. Dixon wrote. As of this year, it is in the public domain.
Again, however, only the elements of the characters and the story in that particular book are in the public domain now. Elements that appeared only in later volumes in the series might still be protected by copyright.
Herman Hesse’s Der Steppenwolf, in the original German, is now in the public domain. This version is to be distinguished from English translations of the work, which might still be protected by copyright as derivative works. It is also to be distinguished from the classic rock band by the same name. It is always important to distinguish between trademark and other kinds of uses of a term.
The Bridge of San Luis Rey
Thornton Wilder’s Pulitzer Prize winning novel about an investigation into the lives and deaths of people involved in the collapse of a Peruvian rope bridge has now entered the public domain.
William Faulkner’s satiric novel enters the public domain this year. This work is to be distinguished from the insect by the same name. The insect, annoyingly, has been in the public domain for centuries.
The Gangs of New York
Herbert Asbury’s The Gangs of New York is now in the public domain.
Franz Kafka’s Amerika (also known as Lost In America) — was published posthumously in 1927. It is now in the public domain.
The Jazz Singer
The Jazz Singer is a 1927 American film and one of the first to feature sound. Warner Brothers produced it using the Vitaphone sound-on-disc system and it featured six songs performed by Al Jolson. The short story on which it is based, “The Day of Atonement,” has already been in the public domain for some time. Now the film is, too.
The Battle of the Century
The Laurel and Hardy film, The Battle of the Century, is now in the public domain. Other Laurel and Hardy films, however, may still be protected by copyright.
Science fiction fans are most likely familiar with this 1927 German science fiction silent movie written by Thea von Harbou and Fritz Lang based on von Harbou’s 1925 novel. It was one of the first feature-length movies in that genre. The film is also famous for the phrase, “The Mediator Between the Head and the Hands Must Be the Heart.”
Alfred Hitchcock’s first thriller has entered the public domain.
“We All Scream for Ice Cream”
The song, “I Scream; You Scream; We All Scream for Ice Cream” is now in the public domain. Don’t worry if you uttered this phrase prior to January 1, 2023. Titles and short phrases are not protected by copyright. Now, it would be a different story if you’ve publicly performed the song, or published or recorded the song and/or the lyrics. Merely uttering those words, however, is not a crime.
“Puttin’ on the Ritz”
This song was originally written by Irving Berlin in 1927. Therefore it is now in the public domain. Taco released a performance of a cover version of this song in 1982. This version of the song made it all the way to number 53 in VH1’s 100 Greatest One-Hit Wonders of the 80’s special. Note that even if the original musical composition and lyrics are in the public domain now, recorded performances of the song by particular artists may still be protected. The copyrights in a musical composition and a recording of a performance of it are separate and distinct things. Don’t go copying Taco’s recorded performance of the song without permission. Please.
“My Blue Heaven”
This song, written by Walter Donaldson and George Whiting, is now in the public domain. It was used in the Ziegfeld Follies and was a big hit for crooner Gene Austin. It is not to be confused with the 1990 Steve Martin film with that name, which is still protected by copyright.
“The Best Things In Life Are Free”
This song was written by Buddy DeSylva, Lew Brown and Ray Henderson for the 1927 musical Good News. Many performers have covered it since then. The (ahem) good news is that it is now in the public domain.
The works described in this blog post have entered the public domain under U.S. copyright law. The terms of copyrights in other countries are not the same. In the European Union, for example, Herman Hesse’s Der Steppenwolf is still protected by copyright as of January 1, 2023.
And again, remember that even if a work has entered the public domain, new elements first appearing in a derivative work based on it might still be protected by copyright.
The featured image in this article is “The Man with the Twisted Lip.” It appeared in The Strand Magazine in December, 1891. The original caption was “The pipe was still between his lips.” The drawing is in the public domain.
It happened. “The” is a registered trademark now. The USPTO issued a registration certificate for the word “The” to Ohio State University (Sorry; the Ohio State University) on June 21, 2022. How did this happen, and what does it mean?
The The Saga
The legal quest to own “the” began on May 6, 2019, when Marc Jacobs Trademarks, LLC (MJT) filed an application with the United States Patent and Trademark Office (USPTO) to register the word as a trademark for use on clothing, bags and similar merchandise. MJT claimed a first use date of December 3, 2018.
On August 8, 2019, the Ohio State University filed its own application to register the word as a trademark for use on clothing. The university claimed first use in commerce at least as early as August, 2005.
Due to the earlier filed MJT application, the examining attorney issued an office action to the Ohio State University. It referenced the earlier filed MJT application as a potential bar to registration of the Ohio State University claim. The application was suspended pending the outcome of MJT’s “the” application.
MJT’s application was published for opposition on October 27, 2020. The Ohio State University filed an opposition. The Ohio State University alleged that;
[MJT’s THE mark] “so resembles Ohio State’s THE mark as to be likely, when used on or in connection with the applied-for goods, to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection or association of MJT with Ohio State, or as to the origin, sponsorship or approval of the applied-for goods or commercial activities by Ohio State, all in violation of § 2(d) of the Trademark Act….”
Opposition of The Ohio State University in re: TM Application No. 88416806
It appears that the parties have reached a cooperative use agreement of some kind. The opposition has been withdrawn and the opposition proceeding has been terminated.
Ornamentation vs. The Registered Trademark
Both companies have faced objections from examining attorneys that their uses of the word “the” on clothing were ornamental. A decorative use of a word, symbol, design, etc. that does not function as an identifier of the source of a particular product or service is not sufficient to satisfy the “use in commerce” requirement for trademark registration.
After the USPTO rejected the MJT application in March, 2020, MJT filed a successful request for reconsideration. That led to the publication for opposition to which the Ohio State University responded. The USPTO issued a Notice of Allowance on October, 2021. The MJT application is still pending in the USPTO.
The Ohio State University initially encountered the same kind of resistance from the USPTO. The university remedied the problem, however, by showing that it wasn’t just using the word ornamentally; it was also putting it where trademarks usually go, such as inside the shirt at the back of the neck and on its website.
That satisfied the examiner. The mark was published for opposition, and on June 21, 2022 a registration certificate issued.
Scope of The Registered Trademark
Does this mean nobody can use the word “the” in a trademark anymore? No.
To begin with, the Ohio State University has only registered it in Class 25. Class 25 consists of sports and collegiate athletics clothing.
The ultimate question, in all cases, is whether another company’s use of the word would be likely to confuse consumers as to the origin of a product or service. The Tax Curative Institute should have very little to fear from the Ohio State University’s registration of “the” as a trademark for collegiate and athletic clothing.
What about displaying the word on clothing, though? Does the Ohio State University’s ownership of the “the” trademark for clothing mean that no one can display the word “the” on a T-shirt now?
Not necessarily. Purely ornamental uses of the word should not expose a T-shirt seller to a risk of infringement liability. For example, a company selling T-shirts emblazoned with the band name “The Slants” should not have to worry about being sued by the Ohio State University.
Of course, unless they have a license from The Slants, they might encounter some pushback for using the band’s name. That’s because the band owns a trademark in their name (“Slants”). Merely using the word “the,” however, should not be a problem. Consumers are not likely to think that every shirt they come across originates from The Slants merely because it has the word “the” on it.
You might have noticed that Spotify has removed a lot of comedy performances recently. You might be wondering what is going on. Did Jim Gaffigan offend someone? Are Kevin Hart and John Mulaney defecting to form an underground comedy railroad with Dave Chappelle? No, it isn’t either of those things. Yes, somebody probably was offended, but that is not the reason behind Spotify’s decision. It’s copyright.
The problem arises from the fact that when a company licenses the right to share recorded performances, it is really licensing the rights in at least two different works: the sound recording and the underlying composition. The performance and the thing performed. When a person writes a song, he or she owns a copyright in the composition. If someone makes an authorized recording of a performance of it, then that person owns a copyright in the sound recording. The songwriter owns the copyright in the music; the producer and performing artists own copyright in the sound recording.
In the music world, different agencies manage the licensing of these two kinds of copyrights. SoundExchange manages a lot of the licensing of sound recordings; agencies like ASCAP and BMI handle the licensing of musical compositions. Historically, performing rights organizations like ASCAP and BMI have focused on music. They have not collected royalties on behalf of spoken word creators. Recently, however, new organizations have sprung up to fill this need. One of them is Spoken Giants. The organization reportedly has acquired an impressive roster of clients – Jeff Foxworthy, Lewis Black, Patton Oswald, Tom Segura, the estate of Don Rickles. According to their website, the company represents tens of thousands of works.
Spotify has removed a lot of spoken word content because an impasse has been reached in negotiations over spoken word copyright licensing. The Copyright Royalties Board, pursuant to a consent decree, sets songwriter royalty rates for various kinds of uses of musical compositions, which agencies like ASCAP and BMI use when administering music licenses. Until recently, however, no one has gone to bat for writers of spoken word performances. There are no governmentally established royalty rates for them. They must be privately negotiated. Spotify has pulled many spoken word performances from its offerings because a negotiated agreement has not been reached yet.
Should your dad be shaking in his boots?
The U.S. Copyright Act allows for the recovery of statutory damages even if no actual damage can be proven to have resulted from an infringement. Liability for infringement can exist even if no one profited from it or intended to profit from it. This would seem to make everyone potentially liable for repeating a joke they heard someone else tell. Is it true? Can a person be sued for repeating a joke someone else made up?
Copyright protection for jokes
In theory, it is possible for a joke, or at least a particular telling of it, to be protected by copyright. There are some important limitations on liability, however.
First, of course, there can be no infringement if there is no copyright. It must be established that the joke is, in fact, protected by copyright. A copyright in a work does not exist unless and until the work is fixed in a tangible medium. If you hear someone telling a joke that nobody has ever recorded or written down, and the telling of the joke was not recorded, either, then no copyright exists. No copyright, no infringement.
Originality and creativity
Copyrights cannot be acquired by copying someone else’s work. If, for example, Paula, without securing an assignment of the copyright or at least a performance license, repeats a joke she read in a book, and Henny hears and repeats it, Paula should not win if she sues Henny for infringement. The owner of the copyright in the book might have a claim, but Paula would not.
The independent creation doctrine is another obstacle to copyright protection for jokes. If two people independently create the same joke, and neither one copied the other – not even subconsciously – then they each own a copyright and neither one is guilty of infringing the other.
If a joke is so old that the copyright has expired, then it is in the public domain. In that case, anyone can use it any way they want. Currently, the term of most (not all, but most) copyrights is 70 years plus the life of the author. In many cases, this would easily put your dad in the clear.
By the way, if you are looking for some good medieval humor, try Poggio Barcciolini’s Facetiae.
Expression vs. facts
Copyright only protects expression; it does not protect facts or information. Consequently, the facts stated in a joke, if any, are not protected by copyright. For example, consider the joke, “There is a scale that measures not only weight but also body fat, bone mass, and water percentage. Now you can choose four different reasons to be ashamed.” Most of that joke conveys factual information. That part is not protected by copyright. The only question is whether the punch line is.
Idea vs. expression
Since copyright only protects expression, it makes sense that an idea also does not get copyright protection.
The distinction between an idea and an expression might be the biggest obstacle to copyright protection of a joke there is. A situation with humorous implications is considered an unprotectable idea. This was established in the case of Nichols v. Universal Pictures Corp, 45 F.2d 119 (2d Cir. 1930). There, a writer sued a production company for creating a comedy show involving a Jewish man marrying an Irish-Catholic woman, with characters demonstrating stereotypical characteristics of members of those demographic groups. Although the writer had created a story based on the same premise, he lost the case. The court ruled that the ideas on which a story was based are not protected by copyright.
This can present a formidable problem for comedy writers. Even if they come up with a great idea for a joke or comedy routine, they will not be able to prevent other comedians from using it, so long as these other comedians come up with sufficiently different ways of telling it.
The idea-vs-expression dichotomy is made even more difficult to surmount by virtue of the merger doctrine. This is a legal principle that says that if there are limited ways to express an idea, the idea will merge with the expression of the idea and the expression will receive no copyright protection. The classic examples are a recipe or a set of rules for a game. A recipe is an idea. A set of rules for a game is also an idea. Therefore, to the extent a recipe merely states what is needed to know to make the concoction, it is not protected by copyright.
To the extent a rules list merely explains how the game is played, it is not protected by copyright. In these cases, the idea is said to have “merged” with the expression, so the expression does not receive copyright protection. The only expression in a recipe or a set of game rules that gets copyright protection is that which is not necessary to the preparation of the dish or the playing of the game. (This probably explains why so many recipe publishers include extraneous anecdotes and fluff in them.)
You can imagine how this could present a problem for a gag-writer. Jokes express ideas, hopefully amusing ones. For this reason, a bare-bones pun, or a one-liner like the ones that Henny Youngman and Rodney Dangerfield would tell, are less likely to be protected by copyright than are comedy routines that involve a lot of extraneous detail.
The Fair Use Doctrine is a defense to copyright that may present an obstacle to the enforcement of a copyright in a joke sometimes. In general, the doctrine says that people may use copyrighted material in commentary, reporting, teaching, research, and sometimes other uses, if four broadly worded factors weigh in favor of allowing such use without liability for infringement:
The purpose and character of the use
The nature of the work
The amount and substantiality of the portion copied
The effect of the use on the market for the work.
Unfortunately, “fair use” is not a well-defined concept. Courts are not always in agreement about how to balance these factors. Appellate reversals of district judge opinions on the matter are not uncommon.
Recognizing the rights of comedy writers does not have to mean the death of fun. For one thing, it is important to keep in mind what “infringement” means and what it does not mean. There are lots of uses a person can make of copyrighted material without putting himself or herself at risk of being sued for infringement. If you buy a copyrighted painting or print, you can display it in your home, so long as you do not open your home to the public and you do not charge a fee for your guests to view it. The same is true of a movie on DVD. You can play a DVD recording that you purchased as many times as you want to in your own home, so long as you do not invite the public in and so long as you do not charge a fee.
Similarly, there should be no problem with re-telling a joke to family and friends in private. Although even limited reproduction and distribution of a copyrighted work can result in infringement liability, an unauthorized performance or display only becomes infringement, in the United States, when it is a public one. Re-sharing a joke in a public forum could be a problem, if none of the obstacles to infringement enforcement that I have discussed in this article apply. Re-telling a joke to members of your family or a small circle of friends for no fee, on the other hand, is not likely to get you into hot water.