…And What That Could Mean on Both Sides of the Atlantic & the Galaxy

By James P. Flynn, Epstein Becker Green

In the beginning (defined as 1977),  there was a two-second rhythm loop. Kraftwerk, the Düsseldorf electronic music pioneers whose synthesizer-driven soundscapes helped define an era, laid down a percussion riff in their track Metall auf Metall that would prove as durable as the metal referenced in the track title (Listen to the drum sequence that begins roughly at the 0:03 – 0:05 mark of the 1977 album version). Twenty years later, hip-hop producer Moses Pelham lifted that two-second loop, modified it ever so slightly, and played it as a continuous backbone beneath Sabrina Setlur’s 1997 rap track Nur mir. And with that, one of the longest-running copyright disputes in the history of intellectual property law was launched, a sort of  legal Metall auf Metall loop of its own that has been repeating, with variations, ever since.

On April 14, 2026, after a journey through the German courts that would have exhausted the patience of a Stoic philosopher, the Grand Chamber of the Court of Justice of the European Union (CJEU)  issued its long-awaited ruling in CG and YN v. Pelham GmbH and Others, Case C-590/23 (Pelham II).  This is the second time this same fact pattern, featuring the same two-second sample, had arrived at the CJEU’s Luxembourg doorstep. The first visit, in Pelham I (Case C-476/17, decided July 29, 2019), had established that sampling requires permission unless the sample is acoustically unrecognizable. Now, in Pelham II, the Court was asked to define “pastiche,” one of the most enigmatic concepts in all of (European) copyright law.

The answer the Court gave is that pastiche requires a recognizable “artistic or creative dialogue” with the borrowed work, but need not be humorous, satirical, or even expressly intended as such.  That standard is worth pausing over. Not only does it matter enormously to the music industry, to digital creators, to remix culture, and to every EU Member State that has recently been required to implement the pastiche exception, but it  also invites a transatlantic comparison with how American copyright law handles the closely-related question of what kinds of homage, tribute, and creative borrowing deserve protection. And on that comparison, as this author wrote here in 2017 when musing about  the Paramount Pictures Corp. v. Axanar Productions, Inc. litigation, the two systems reach strikingly different destinations, even if they start from a roughly similar point.

The Odyssey: From Hamburg to Karlsruhe to Luxembourg, and Back Again

To appreciate the significance of Pelham II, it helps to understand the procedural marathon that produced it, as described by several industry followers. The case traveled, in no particular hurry, through the Hamburg Regional Court (which sided with Kraftwerk in 2004), the Hamburg Higher Regional Court (which dismissed Pelham’s appeal in 2006), Germany’s Federal Court of Justice or Bundesgerichtshof (the BGH, which sent the case back down in 2008), back to the Hamburg Higher Regional Court (which ruled against Pelham again in 2011), back to the BGH (which again dismissed Pelham in 2012), then up to Germany’s Federal Constitutional Court, the Bundesverfassungsgericht, which upended earlier rulings in 2016 on constitutional freedom-of-the-arts grounds, back to the BGH for a third time (which made the first referral to the CJEU in 2017), to Luxembourg for Pelham I in 2019, back to the BGH again in 2020, down once more to the Hamburg Higher Regional Court (which ruled in Pelham’s favor on the pastiche issue in April 2022), and then, inevitably, back to the BGH for a fourth bite at the apple, which finally referred the pastiche question to Luxembourg in September 2023. If this were a vinyl record, it would have been played to scratches long ago from going round after round.

The key turning point in that last phase was Germany’s 2021 enactment of §51a of the Urheberrechtsgesetz (UrhG), which Pelham II later translates as saying at para. 7 that “The reproduction, distribution and communication to the public of a published work shall be authorised for the purpose of caricature, parody or pastiche. The authorisation referred to in the first sentence shall cover the use of an image or other reproduction of the work used, even if that image or other reproduction is itself protected by copyright or a related right.”   That law responded to both the CJEU’s Pelham I ruling and obligations under Article 17(7) of the EU’s Digital Single Market Directive.  Under that law, one could, for the first time, reproduce works expressly  “for the purpose of caricature, parody or pastiche.” The Hamburg Higher Regional Court, on remand, found that Pelham’s sampling after June 7, 2021 was covered as “pastiche” and therefore non-infringing. Kraftwerk’s successors appealed. The BGH, uncertain what “pastiche” actually meant, referred two precise questions to the CJEU, as recounted at Pelham II, paras. 27 and 30:

(1) whether the rule defining the limitations of copyright and related rights as regards the use of a work or other subject matter for the purpose of pastiche, within the meaning of Article 5(3)(k) of Directive 2001/29, has a catch-all nature (Auffangtatbestand) that covers in any event artistic engagement with an existing work or other object of reference, including in the form of sampling, or whether the concept of ‘pastiche’ is subject to restrictive criteria such as a requirement of humour, stylistic imitation or tribute[?]

(2) whether a finding that a work or other subject matter protected by copyright is used ‘for the purpose’ of pastiche presupposes an intention on the part of the user to use that protected work or subject matter for that purpose[?]

The CJEU’s Grand Chamber answered both questions with what might be called a calibrated “no.” Pelham II at para. 32-58 and 59-62.  Pastiche is not a catch-all for any kind of borrowing, but neither does it require humor, explicit tribute, or stylistic mimicry in the narrow sense. And intent is not required;  but recognizability is.

Defining “Pastiche”  and Avoiding Both the Vacuum and the Vortex

Let’s pause here to note a small linguistic fact. “Pastiche,” as this author observed when answering his own rhetorical “So what is pastiche?” question back in 2017, is actually a French cognate of the Italian noun pasticcio.   That word describes a pâté or pie-filling assembled from varied ingredients. Like a well-made pasticcio, the legal concept has always contained more ingredients than any single recipe might suggest, and the CJEU proved well aware of this.

The Pelham II Court began its definitional work by rejecting the tempting simplicity of a catch-all reading. If “pastiche” swallowed all forms of artistic borrowing, it would render the neighboring concepts of “parody” and “caricature” in Article 5(3)(k) of the InfoSoc Directive entirely redundant, which is  a classic interpretive sin under EU (and indeed, often, US) law. The legislative redundancy problem cuts both ways, however: if pastiche were simply a synonym for parody (requiring, as parody does since Deckmyn v. Vandersteen, Case C-201/13, some element of mockery or humor), there would be no point having the word at all.

Instead, the Pelham II Court settled on a purposeful middle path. Acknowledging that the term “pastiche” is “rarely used in everyday language” but is “commonly used to designate a creation in a style which imitates that of another work, artist or works belonging to the same artistic movement,” the Grand Chamber in Pelham II (in Ruling, para.1 at page 15), defined pastiche as:

“[C]reations which evoke one or more existing works, while being noticeably different from them, and which use, including by means of sampling, some of those works’ characteristic elements protected by copyright, in order to engage with those works in an artistic or creative dialogue that is recognisable as such and that can take different forms, in particular the form of an overt stylistic imitation of those works, of a tribute to them or of humorous or critical engagement with them.”

Three elements are worth isolating in that definition:

• first, the new work must evoke the original while being noticeably different from it,  a requirement of both connection and distinction, not unlike the conundrums we saw (and discussed) in Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, 143 S. Ct. 1258 (2023);
• second, it must use characteristic copyright-protected elements of the original; and
• third, it must engage with the original in an “artistic or creative dialogue that is recognisable as such.”

This last dialogue test is where the rubber meets the road.  Forms that qualify include tribute, stylistic imitation, and humorous or critical engagement.  But  the Court was careful not to make any single form a prerequisite. The dialogue simply has to be there, and it has to be recognizable.

On the second question (whether intent is necessary?),  the Court held that no, it is not. The proper test is objective: whether “a person familiar with the existing work from which the elements have been borrowed” would recognize the use as pastiche. This is a significant practical point for artists and producers. It means that a creator who borrows characteristic elements and engages in a recognizable dialogue with an original work does not lose the protection of the pastiche exception merely because she did not have the label “pastiche” affixed in her mind when she created the new work. The law evaluates the result, not the creator’s mental taxonomy.

The Court also devoted considerable attention to the balancing framework, noting that the pastiche exception must be applied consistently with the three-step test in Article 5(5) of the InfoSoc Directive.  It applies only in “certain special cases” that do not unreasonably prejudice the rightholder. This is not a free pass for wholesale appropriation. The “noticeably different” requirement, the “recognisable dialogue” standard, and the three-step filter together mean that a sampler cannot simply loop any segment of someone else’s phonogram, call it a dialogue, and walk away free.

Scotty, Beam Us Over to the Other Side of the Atlantic

In January 2017, this author  presented a thought experiment about the Star-Trek-fan-fiction-inspired   Axanar litigation: what if the defendant fan-filmmakers who created a faithful, reverential, deeply researched prequel to the original Star Trek series had been able to invoke a “pastiche” fair dealing defense (as might have been available in the UK or under the EU’s InfoSoc Directive) rather than being stuck with the narrower American parody-based fair use analysis? The answer, this author suggested, was that they might have fared considerably better.

That thought experiment has, with the Grand Chamber’s April 2026 ruling, become considerably more concrete.

American copyright law protects parody as fair use under 17 U.S.C. § 107, but the key requirement, as the Supreme Court established in Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994), is that the parody must target the original work.  In other words,  it must criticize or comment upon the work it borrows. But what does one do with a loving tribute, a faithful homage, or a reverential imitation? These do not qualify. As the Second Circuit held in Castle Rock Entertainment v. Carol Publishing Group, 150 F.3d 132, 145 (2d Cir. 1998), if a work “pays homage” to the original rather than critiquing it, it cannot qualify as parody. The Sixth Circuit agreed in Bridgeport Music, Inc. v. UMG Recordings, Inc., 585 F.3d 267 (6th Cir. 2009), holding that a jury instruction stating that “an homage or tribute” is not fair use accurately states the law.

The Axanar case demonstrated this principle with particular clarity. Alec Peters and the Axanar team had set out to create a faithful, independent Star Trek film using the copyrighted source material “as a bible.”(at page 7). They stayed true to Star Trek canon “down to excruciating details.” (at page 7).   The court found that “Star Trek fans love Defendants’ faithfulness to the Star Trek canon,” (at page 7)  and that statement of fan approval effectively sealed their fate under U.S. copyright law. The more faithful the homage, the less it criticizes, and the less it criticizes, the less it can qualify as parody. Faithfulness, in the American framework, is its own undoing.

Now consider how the same set of facts might be analyzed under the CJEU’s pastiche framework from Pelham II. The Axanar Works clearly evoke the original Star Trek universe while being noticeably different from it. They are new films, with new scripts, new performances, and (at least in the prequel premise) a new narrative. They use characteristic, copyright-protected elements of the Star Trek works, like  Klingons, Vulcans, the character Garth of Izar, starship designs, the visual language of the universe Gene Roddenberry built. And, critically, they engage in an artistic dialogue with the original works that is recognizable as such, not only to a person familiar with the original works, but to virtually every viewer. The dialogue is, if anything, louder and more explicit than in most pastiches (and certainly more express than anything lasting only two seconds): the Axanar creators expressly identified themselves as working within, and paying tribute to, the creative universe they had grown up loving.

Under the CJEU’s new framework, such a recognizable, reverential, differentiating creative dialogue would seem to fall within the definition of “pastiche.” The works evoke; they are noticeably different; they engage dialogically in a manner a familiar audience would recognize. That they do so reverentially rather than mockingly would be, under Pelham II, beside the point. The Pelham II Court expressly includes “tribute” as a qualifying form of the creative dialogue.

In the American universe, that tribute was the fatal flaw. In the European one articulated by the Grand Chamber, it may be the qualifying feature. As Mr. Spock might observe, the logic of the two systems is internally consistent,  but their premises diverge at a foundational level.

The Pastiche That Dare Not Speak Its Name …Until Now

One of the features of the Pelham II ruling that deserves particular attention is the Court’s treatment of what we might call the “vocabulary problem.” As the 2017 Axanar article noted, a Lexis search of American federal cases at that time found precisely one decision that mentioned both the word “pastiche” and the phrase “fair use,” Disney Enters. v. Hotfile Corp., decided by the S.D. Fla. in  2013, and there the word referred to an assortment of collected evidence rather than a legal defense. Repeating that search today, we find only more case, Graham v. Prince, a 2023 SDNY decision that uses both terms in the fair use  analysis:

Defendant Richard Prince is a well-known contemporary appropriation artist. Appropriation art, as one expert describes it, involves a “radical transformation of the original image or text” using strategies such as aesthetic alteration, conversion of authorship, recontextualization, cultural commentary, and pastiche or parody.

***

In both lawsuits, defendants filed motions to dismiss asserting the defense of fair use. On July 18, 2017, this Court denied defendants’ motion to dismiss in Graham, finding that “this is not a case in which the open-ended and context-sensitive fair use inquiry can be properly applied at the motion to dismiss stage.” Graham v. Prince, 265 F. Supp. 3d 366, 379 (S.D.N.Y. 2017). The Court concluded that not one of the four fair use factors favored defendants. Id. at 380. With an eye towards the inevitable summary judgment motions, the Court reviewed the case law and suggested that specific evidence, such as the opinions of art critics and collectors, could aid the Court’s summary judgment analysis. See id. at 382, 385.

Though “fair use” was referenced in the Graham opinion 75 more times beyond the three references in the above quote, “pastiche” was mentioned only that once.  Those two fleeting refences in separate  cases and contexts hardly give “pastiche” a solid foundation in American fair use jurisprudence.  The statute does not use it. The courts have not developed it. The word, for U.S. copyright purposes, might as well be Klingon.

In Europe, by contrast, the concept is now legislatively embedded and judicially defined. Article 5(3)(k) of the InfoSoc Directive has always listed “caricature, parody or pastiche” as optional exceptions,  and the DSM Directive made the trio mandatory for user-generated content on content-sharing platforms under its Article 17(7). EU Member States have had to grapple with the concept. Germany enacted §51a UrhG in 2021. The UK embedded it in Section 30A of the Copyright, Designs and Patents Act 1988 before Brexit removed it from the EU legal framework but not from the statute books.

What the Pelham II Court has now provided is the first authoritative EU-level definition of the term. Prior to Pelham II, commentators noted that “pastiche” had been interpreted differently in different Member State courts and legal traditions,  narrowly in some, expansively in others. The Advocate General Szpunar’s Opinion in Pelham I in 2018 had flagged (at para. 70) the concept as potentially applicable to sampling while expressing reservations, and Advocate General Emiliou’s Opinion of June 2025 in Pelham II had pushed the Court (at paras. 81-91,  133) toward the definition it ultimately adopted, while also making the provocative suggestion that the InfoSoc Directive as a whole was too restrictive in the area of artistic reuse to be compatible with the EU Charter’s guarantee of freedom of the arts.

The Pelham II Court’s judgment did not go quite that far.   But it built the definition firmly around the fundamental rights framework, balancing copyright protection against artistic freedom in a manner that U.S. law does not formally undertake in its fair use calculus.  As one market participant and commentator noted, “The European Court of Justice has helped to clarify the urgently needed definition of the concept of pastiche, thereby seeking to strike a balance between artistic freedom and the protection of intellectual property, …This is also significant because the exception introduced in Germany in 2021 has so far been associated with considerable legal uncertainty.”

It is also worth noting what the Pelham II Court’s definition does not require. It does not require that the new work itself constitute an “original” copyright-protected work  (That  view endorsed by the European Copyright Society in its own amicus-style opinion filed in connection with Pelham II). It does not require that the engagement with the original be overt, annotated, or explicitly acknowledged. It does not require any particular artistic ambition or cultural prestige. A loop of two seconds, embedded in a hip-hop track, can qualify  as long as the dialogue is there and it is recognizable to the right audience.

The Recognizability Requirement And Its Limits

The “recognisable as such” requirement is the Pelham II Court’s most important limiting principle, and it deserves careful examination. It is not enough that someone might perceive a creative dialogue with the original; the recognizability must attach to “a person familiar with the existing work.” This is an objective standard calibrated to the relevant audience, whether that be  the community of listeners, viewers, or readers who know both the source and the borrowing.

This audience-specific standard will generate interesting questions in practice. Consider the Metall auf Metall loop at the center of Pelham II itself. Kraftwerk’s music, though globally influential, is not universally known, and guessing the song on only two seconds seems like some bizarre revenge fantasy from the classic Bid-A-Note segment of Name That Tune. Would a mainstream listener of early-1990s German rap recognize the Kraftwerk (two-second) loop in Nur mir? Perhaps not. But, so the argument goes, a person familiar with the Kraftwerk source material would recognize it.  That, says the Court, is sufficient.  This is consistent with how the Court had approached “parody” in Deckmyn: the test is whether a parodic character “may reasonably be perceived,” not whether every listener perceives it. (I remain skeptical that the two second loop, even if repeated, could really be a “dialogue” between the works allowing for such perception, but who am I to judge?).

The recognizability requirement also connects in an interesting way to the “noticeably different” requirement. For a use to qualify as pastiche, the new work must both evoke and differ from the original. This dual demand creates a sort of creative tension in that  the new work must be distinct enough to stand apart, but connected enough for the dialogue to be apparent. A sampling that so thoroughly transforms the original that no trace remains is already covered by Pelham I‘s “unrecognizable to the ear” safe harbor, such that there is  no infringement there in the first place. The pastiche exception, by contrast, covers samples that are recognizable, but that are used in a recognizably dialogic way in the new work. It is, in other words, the zone of recognizable-but-differentiated borrowing that the exception is designed to occupy.

The Axanar works would seemingly easily satisfy the recognizability test. Every element borrowed from the Star Trek canon (from  the Klingon characters, to the Starfleet setting, to the Garth of Izar storyline, to the visual design language) was not merely familiar to the target audience; it was the raison d’être of the films. These works were made for Star Trek fans to recognize precisely those borrowed elements. The challenge, under European law, would not be whether the dialogue is recognizable (it manifestly is) but whether the resulting work is “noticeably different” from the original and whether the engagement constitutes the kind of “artistic or creative dialogue” the Court envisioned.

On both counts, the argument for the Axanar works seems more plausible under European law than it ever was under U.S. law’s parody rubric. These are not, after all, mere copies of Star Trek episodes. They are new stories, told in a new register, occupying a different narrative.  They are   a prequel that expands the universe rather than reproducing it. The tribute and the transformation coexist.

The System Question And the Mirror, Mirror Moment

There is a deeper structural question lurking behind the comparison between Pelham II and the American approach. In the United States, the fair use defense under 17 U.S.C. § 107 is famously open-textured, with  four factors, none dispositive, all weighed in light of the ultimate question of whether the use serves or harms copyright’s underlying purposes. The system is flexible but unpredictable; it produces different results in different circuits, and its treatment of transformative use has shifted considerably since Campbell. The Supreme Court’s recent intervention in Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, 143 S. Ct. 1258 (2023), has recalibrated the transformativeness analysis in ways that arguably narrow fair use for commercial uses even of genuinely new creative work.

The European system, by contrast, operates with a closed list of permitted exceptions. Article 5 of the InfoSoc Directive is exhaustive and Member States cannot add new exceptions beyond what the Directive provides. That rigidity is both a strength and a weakness. On one hand, it provides certainty: if your use fits within one of the listed exceptions, you are protected. On the other hand, it means that creative uses not anticipated by the list have no safe harbor, no matter how beneficial to the public interest. The pastiche exception  was in an historically underdeveloped state;  the Axanar article noted in 2017 that it had almost no case law anywhere in Europe.  This  meant that an entire category of legitimate creative borrowing was essentially unprotected in practical terms until courts began defining the term.

The Pelham II Grand Chamber has now, supposedly, filled that gap, and done so in a manner that is, at least in the Court’s own view, calibrated to balance copyright protection against the EU Charter’s guarantee of freedom of the arts. Advocate General Emiliou had gone further, suggesting that the InfoSoc Directive itself may be constitutionally infirm in its failure to accommodate sufficiently the artistic uses of protected material.

For American practitioners watching this development, the parallel is the ongoing debate over whether the fair use framework that has  developed case by case over decades has reached its limits as a mechanism for protecting genuinely transformative and creative uses of copyrighted works. The Warhol decision’s narrowing of transformativeness for commercial purposes has already produced commentary calling for legislative attention. And Pelham II‘s pastiche framework  protects tribute and dialogue even in commercial creative contexts.  But that  represents a different choice, made by a different legal system, that deserves serious attention in that debate.

There is a moment in the original Star Trek series episode “Mirror, Mirror” when Captain Kirk finds himself transported to a parallel universe where the Federation is an empire and every familiar character has a darker counterpart. The moment of recognition involves knowing the face but finding a different soul behind it.  That  is precisely what the CJEU’s pastiche definition is designed to protect: the creative work that is recognizably connected to an original, yet noticeably, meaningfully different. In the US universe, Axanar could not prevail in federal court in California. In the European parallel universe,  it might have won. That is not merely a hypothetical of academic interest. It tells us something important about the values embedded in copyright law on each side of the Atlantic, and about the choices each system has made in balancing the rights of creators and the interests of the creative public.

The Loop Keeps Playing

The Metall auf Metall loop that Moses Pelham borrowed in 1997 was two seconds long. The litigation it spawned has now consumed nearly three decades, twelve judicial opinions in Germany, two CJEU Grand Chamber judgments, and the professional attention of enough intellectual property lawyers to fill a small conservatory. The case will now return,  yet again,  to the BGH, which will apply the CJEU’s definition of pastiche to the specific facts and determine whether Nur mir qualifies.

What the Court has given us in Pelham II is a definition of pastiche that is neither a free pass nor a dead letter. It requires real creative dialogue that is  recognizable, differentiated and dialogic. It protects tribute, stylistic imitation, and creative homage alongside more critical or humorous forms. It evaluates the result objectively rather than searching for the creator’s subjective intention. And it does all of this in explicit service of a balance between copyright protection and the freedom of the arts that the EU Charter demands.

That is a richer toolkit than the American parody defense offers, and it points toward a different and seemingly  more creatively generous  set of answers to the recurring question of when borrowing becomes infringement and when it becomes art. The Axanar crews and the independent filmmakers (and the hip-hop producers and the meme-makers and the remix artists) of the world would do well to follow the next chapter in the Metall auf Metall saga, as the BGH applies Pelham II‘s framework to the facts that started the whole loop playing.

As for Kraftwerk and Pelham, they may yet have one more rendezvous in Hamburg. The loop, it seems, is still playing, but the legal backdrop has changed. “If change is inevitable, predictable, beneficial, doesn’t logic demand that you be a part of it?”  As Mr. Spock suggests  implicitly in “Mirror, Mirror” and many other places in the original series expressly such as  “Space Seed,”  it is not logical to remain static in the face new evidence because “[i]nsufficient facts always invite danger.”  And Pelham II is, at a minimum, very new evidence indeed.  

By Gregory J. Krabacher, Epstein Becker Green.

The origin story for the cause of action of “dilution” in the United States begins with Frank Schechter’s 1927 Harvard Law Review article, Rational Basis of Trademark Protection. [i]  Indeed the U.S. Supreme Court credits Mr. Schechter’s work as the “seminal discussion,” noting that “[u]nlike traditional infringement law, the prohibitions against trademark dilution are not the product of common-law development, and are not motivated by an interest in protecting consumers.”[ii] 

Mr. Schechter based his theories, among other cases, on his study of the German Odol case.[iii]  In that case, the court found harm to the selling power of a well-known brand for mouthwash through the use by another party for steel.  Schechter notes in passing that if U.S. courts eventually adopt Odol’s holding, “it will not be the first time that they have gone to continental armories for the weapons with which to combat the commercial buccaneer.”[iv]

A belief that traditional U.S. trademark law principles and “orthodox definition[s]” require updating to better address the practical realities and complexities of modern commerce appears to explain Mr. Schechter’s interest in Odol and similar cases.[v]  According to Mr. Schechter, the “vital” distinction between the simpler commerce of say, 400 years ago, and “now” is that trademarks no longer merely designate “the origin or ownership of the goods to which it is affixed”, but rather, designate that goods “bearing the same mark[] emanate from a single source.”[vi]

Moreover, in this modern age, “the trademark is not merely the symbol of good will but often the most effective agent for the creation of good will, imprinting upon the public mind an anonymous and impersonal guaranty of satisfaction, creating a desire for further satisfactions. The mark actually sells the goods. And, self-evidently, the more distinctive the mark, the more effective is its selling power.”[vii]  Such distinctive marks, says Schechter, deserve protection from the “subtle and refined” “trademark pirates” of the modern age who “proceed circumspectly, by suggestion and approximation, rather than by direct and exact duplication of their victims’ wares and marks.”[viii]

And so, the rationale proceeds, the law must protect such distinctive marks even in cases where the goods of the parties do not compete and there is no diversion of sales.  For example, in cases such as Kodak (cameras and bicycles), Aunt Jemima’s (pancake flour and syrup), Vogue (fashion magazines and hats), Rolls-Royce (automobiles and radio parts) and Beech-Nut  (food products and cigarettes), Mr. Schechter postulates:

The real injury in all such cases can only be gauged in the light of what has been said concerning the function of a trademark. It is the gradual whittling away or dispersion of the identity and hold upon the public mind of the mark or name by its use upon non-competing goods. The more distinctive or unique the mark, the deeper is its impress upon the public consciousness, and the greater its need for protection against vitiation or dissociation from the particular product in connection with which it has been used.[ix]

It would take time, but Frank Schechter’s ideas would spread, both geographically and substantively.  Some 20 years after the article, Massachusetts enacted the first state statute protecting trademarks from dilution.[x] As noted by the U.S. Supreme Court, this state statute went beyond Odol’s sole concern for the harm to selling power (what Schechter referred to as “whittling away” and what we today refer to as “blurring”), but also included “injury to business reputation”, i.e. “tarnishment.”[xi]  Following in Massachusetts’s footsteps, at least 25 States passed similar laws in the decades before the Federal Trademark Dilution Action (FTDA) was enacted in 1995.[xii]

Before examining the 1995 FTDA and its successor, the 2005 Federal Dilution Revision Act (FDRA), we pause to observe, as does Professor McCarthy, that the U.S. protection of brand distinctiveness diverges in at least one key respect from similar European laws. European Union law explicitly prohibits both dilution and free-riding, while federal U.S. anti-dilution law solely prohibits the likelihood of dilutive injury.[xiii] 

The difference between the two is that free-riding is shown by mere association between two marks.[xiv]  Dilution, on the other hand, requires association that further impairs the distinctiveness (blurring) or harms the reputation (tarnishment) of the famous mark.[xv] Therefore, and as discussed below, when U.S. courts find a likelihood of dilution based on a finding of association, alone, they err by ignoring the statutory requirement of impairment/harm and are essentially adopting the European standard for free-riding.[xvi]

Moseleying Along to a Federal Standard

Moseley Act One: A New Hope for Smut

The first U.S. federal dilution statute enacted in 1995 (which, again, was known as FTDA), defined the term “dilution” (the statute didn’t separate out blurring from tarnishment) as “the lessening of the capacity of a famous mark to identify and distinguish goods or services.”[xvii]

In its review of the FTDA, the U.S. Supreme Court in Moseley v. V Secret Catalogue, Inc., focused on the particular text found in 15 U.S.C. § 1125(c)(1)—“causes dilution of the distinctive quality” of the famous mark—to unambiguously require a showing of actual dilution, rather than a likelihood of dilution.[xviii]  Although actual dilution was required, the Court clarified that the standard for injunctive relief under the FTDA did not require, as the Fourth Circuit had found in the Ringling Bros. case, proof of the consequences of dilution such as actual loss of sales or profits.[xix]  So actual (not a mere likelihood) of dilution must be shown but not necessarily proof of financial harm.  Does association establish the necessary showing?

This is where it gets interesting for our consideration of harm.  The Supreme Court proceeded to point out the distinction between mere association and the further showing necessary for actionable dilution.[xx] And it did so in some depth:

As the facts of [the Ringling Bros] case demonstrate, such mental association will not necessarily reduce the capacity of the famous mark to identify the goods of its owner, the statutory requirement for dilution under the FTDA. For even though Utah drivers may be reminded of the circus when they see a license plate referring to the “greatest snow on earth,” it by no means follows that they will associate “the greatest show on earth” with skiing or snow sports, or associate it less strongly or exclusively with the circus. “Blurring” is not a necessary consequence of mental association. (Nor, for that matter, is “tarnishing.”)[xxi]

Applying this standard on the record before it, the Supreme Court noted that while there was evidence of association, there was no evidence of tarnishment caused by this association:

The record in this case establishes that an army officer who saw the advertisement of the opening of a store named “Victor’s Secret” did make the mental association with “Victoria’s Secret,” but it also shows that he did not therefore form any different impression of the store that his wife and daughter had patronized. There is a complete absence of evidence of any lessening of the capacity of the VICTORIA’S SECRET mark to identify and distinguish goods or services sold in Victoria’s Secret stores or advertised in its catalogs. The officer was offended by the ad, but it did not change his conception of Victoria’s Secret. His offense was directed entirely at petitioners, not at respondents. Moreover, the expert retained by respondents had nothing to say about the impact of petitioners’ name on the strength of respondents’ mark.[xxii]

Mosely Act 2: Congress Strikes Back

Following the Supreme Court’s decision in Moseley, Congress amended the Laham Act again with the 2006 Trademark Dilution Revision Act (TDRA) to further revise the dilution standard.  Among other changes, the 2006 TDRA now says “likely to cause dilution by blurring or dilution by tarnishment of the famous mark” in place of the 1995 FTDA’s phrase “causes dilution of the distinctive quality.”[xxiii]

The current statute defines these two forms of dilution as follows, both of which include an element beyond mere association by further requiring either that such association impairs or harms the famous mark:

(B) For purposes of paragraph (1), “dilution by blurring” is association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark. [setting forth six statutory factors]***

(C) For purposes of paragraph (1), “dilution by tarnishment” is association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark. [no statutory factors].[xxiv]

So, following the FTDA’s amendments, the text appears to require a proponent of a dilution claim to show there is a likelihood of two elements: (1) association between the famous mark and the junior mark and (2) impairment/harm caused by the association.

Mosely Act 3: Return of the European Free-Riding Standard for Dilution

The Sixth Circuit, in a later appeal in the same Moseley case, interpreted the new law in view of its legislative history, noting Congress’s intention to lessen the burden on proponents, noting:

The House Judiciary Committee Report states the purpose of the new 2006 legislation as follows:

The Moseley standard creates an undue burden for trademark holders who contest diluting uses and should be revised.

….

The new language in the legislation [provides] … specifically that the standard for proving a dilution claim is “likelihood of dilution” and that both dilution by blurring and dilution by tarnishment are actionable.[xxv]

From this legislative history, the Sixth Circuit made an inference. Not only did Congress mean to reduce the burden of proof from “actual” to “likelihood” but, per the Court, it actually intended to remove plaintiff’s burden of going forward in certain cases by presuming harm to reputation upon a showing of likelihood of association alone.  As stated by the Court of Appeals: “In the new law Congress rejected the Court’s view that a simple ‘likelihood’ of an association in the consumer’s mind of the Victoria’s Secret mark with the sexually-oriented videos and toys of “Victor’s Secret” is insufficient for liability.[xxvi]

The Court of Appeals went still further.  Logically, if a “likelihood of tarnishment” can be presumed upon a showing of association in connection with certain products, then, the Court reasoned, this implies more than a lessoning (nay elimination) of Plaintiff’s burden.  It implies a reversal of the burden from the party asserting a dilution claim to the party defending it.  The Court reasoned:

The burden-of-proof problem, the developing case law, and the Restatement (Third) of Trademarks in § 25 (particularly subsection g) should now be interpreted, we think, to create a kind of rebuttable presumption, or at least a very strong inference, that a new mark used to sell sex-related products is likely to tarnish a famous mark if there is a clear semantic association between the two. This res ipsa loquitur—like effect is not conclusive but places on the owner of the new mark the burden of coming forward with evidence that there is no likelihood or probability of tarnishment. The evidence could be in the form of expert testimony or surveys or polls or customer testimony.[xxvii]

Some have observed that the Sixth Circuit’s standard in Moseley appears to be in tension with how other Courts of Appeal have interpreted the TDRA.  As noted by Circuit Judge Karen Nelson Moore, in her dissent of the Sixth Circuit’s Mosely decision:

As the Second Circuit recently noted in Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97 (2d Cir.2009):

That a consumer may associate a negative-sounding junior mark with a famous mark says little of whether the consumer views the junior mark as harming the reputation of the famous mark. The more relevant question, for purposes of tarnishment, would have been how a hypothetical coffee [with a negative-sounding name] would affect the positive impressions about the coffee sold by Starbucks.

***In fact, when reviewing the exact same evidentiary record, the Supreme Court explicitly noted that Victoria’s Secret’s offer of proof included no evidence that “Victor’s Little Secret” affected Baker’s positive impressions of Victoria’s Secret…[xxviii]

While there are plenty of notable commentators who strongly disagree with Mosely for a variety of reasons[xxix] and while the pace of adoption of the Sixth Circuit’s burden shifting standard has not been especially brisk nation-wide in the twenty years since it was decided, the decision remains the law of the land within the Sixth Circuit.[xxx] Moreover, and perhaps somewhat surprisingly to some, no reported decision appears to outright criticize the holding.

What’s a Brand to Do?

Outside of the Sixth Circuit, and for cases involving products unrelated to sex, owners of famous brands may feel it is a little risky to rely on the Mosely presumption and burden shifting.  Even for a case on all fours within the Circuit, parties may be looking to bolster their claims with support of likelihood of tarnishment beyond mere association by also demonstrating a likelihood of harm to reputation caused by the association. 

Why, you may ask? While it may seem “self-evident” to some that harm to the reputation of a mark would necessarily flow from its association with sex-related products, the U.S. Supreme Court, as noted above, did not find it so obvious. Moreover, those who have studied the question have struggled to find real world evidence of the “obvious” harm caused.  Indeed, to the extent the association causes a change in consumer perception of a brand, it may just as easily point the other way.  For example, in one recent study carried out by Jake Linford et. al., the investigators report the following:

Our studies produced surprising results, many of which may prove useful to scholars, litigants, courts, and policy makers examining the tarnishment doctrine. In both studies, and contrary to the underpinnings of the tarnishment doctrine, associating well-known marketplace brands with sex- and drug-related messaging produced not a tarnishment effect, but a small yet reliable burnishment effect. Our participants meaningfully and statistically preferred our target brands more when they were exposed to tarnishing stimuli than when they were not. Moreover, exposure to the test stimuli images counterintuitively led participants to perceive those brands as stronger, which influenced their preference for the brands in the tarnishment condition.[xxxi]

So, if a brand owner is not content to rest on association alone in a tarnishment case, and expensive surveys carry their own risks of backfiring, what options do they have?  A recent decision in another famous dilution case may suggest a relatively safer and cost-effective option.  There, the proponent seemed to follow a middle way – providing at least some basis to support a showing of harm without resorting to an expensive survey.

The case to which I refer is the latest decision in the saga that is the “Bad Spaniels” litigation between VIP Products and Jack Daniel’s.  As factual set up, Justice Kagan, on this case’s recent trip up to the Supreme Court, succinctly quipped: “This case is about dog toys and whiskey, two items seldom appearing in the same sentence.”[xxxii]

Our interest here in the case is the method by which Jack Daniel’s supported its claim of tarnishmet with evidence of a likelihood of harm to reputation. It did so by using an expert but not for the usual purpose of conducting an expensive survey.  Instead, Jack Daniels’ expert based his opinion on general literature and a methodology with a fancy title: “The Associative Network Model (“ANM”)”, which the District Court found “has been empirically tested and verified numerous times since the 1970’s.”[xxxiii]  No survey questions or participant selection to attack.  Just some “reliable” studies interpreted by a reliable guy to explain why associating dog poop with a food product is likely to trigger disgust in the minds of the consumer and thereby harm the reputation of the food product.

VIP attempted to challenge the expert’s report as “insufficient to show tarnishment because it merely amounts to Dr. Simonson’s subjective impression of the tarnishing effect of “Bad Spaniels.”[xxxiv] Furthermore, VIP argued that the expert’s conclusions are unsupported because he conducted no surveys or focus groups and failed to account for the fact that “Bad Spaniels” is a parody product.[xxxv]

This Court was having none of it, explaining:

VIP misconstrues and misstates the testimony provided by Dr. Simonson. In reaching his conclusions, Dr. Simonson evaluated consumer psychology research showing that the association of food of beverage with defecation generates disgust in the mind of the consumer. Based on well-documented research suggesting that such feces-related associations lead to negative consumer associations with food and drink products, Dr. Simonson concluded that “Bad Spaniels” was likely to create negative associations of Jack Daniel’s whiskey with feces and thereby undermine the positive associations that Jack Daniel’s has created with respect to its whiskey. (Doc. 234 at 172–74, 200). In weighing the testimony and evidence supplied by the parties’ experts, the Court has credited and given prevailing weight to Dr. Simonson’s conclusion that “Bad Spaniels” is likely to tarnish Jack Daniel’s trademarks by creating negative associations of Jack Daniel’s products with dog feces.[xxxvi]

Therefore, on the strength of an admittedly impressive expert employing the impressive sounding “The Associative Network Model” by taking general literature and applying these papers to the particular facts of this case, the Court found “Jack Daniel’s has demonstrated by a preponderance of the evidence all of the elements necessary for a claim of dilution by tarnishment: fame, similarity, and reputational harm, caused by the association of VIP’s use of “Bad Spaniels” with Jack Daniel’s trademarks and trade dress.”[xxxvii]  Easy enough.

The Challenge Not Yet Heard

We’ll wrap up this Note with one to watch.  In the “Bad Spaniels” case, VIP attempted, and was refused the opportunity, to raise a First Amendment challenge to the tarnishment provision of the Lanham Act.[xxxviii]  VIP’s argument was that “the Supreme Court’s recent decisions in Matal v. Tam, 582 U.S. 218 (2017) and Iancu v. Brunetti, 588 U.S. 388 (2019) compel the conclusion that the statute amounts to unconstitutional viewpoint discrimination by enjoining the use of a mark that “harms the reputation” of a famous mark.”[xxxix]  While this argument was raised a bit too late to be heard in this case, its bound to come up again in tranishment cases in the future.  Consider too that consumer sentiment is not stagnant.  Most consumers have different views about topics like sex and drugs than they did when Frank first put pen to paper 99 years ago.  As such, so the argument goes, there is great risk of overbreadth and stifling of free speech if, as did the Sixth Circuit in Mosely, courts merely rely upon a “growing consensus” at a particular point in time to create a per se rule that an entire category of speech (and one of unclear boundaries) necessarily harms a brand’s reputation.

[i] Frank I. Schechter, The Rational Basis of Trademark Protection, 40 Harv. L. Rev. 813 (1927)

[ii] Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 429, 123 S. Ct. 1115, 1122, 155 L. Ed. 2d 1 (2003)

[iii] Schechter, supra note 1, at 831.

[iv] Id. at 832.

[v] See id. at 813–18 (1927)(quoting, among other sources, Hanover Star Milling Co. v. Metcalf, 240 U. S. 403, 412 (1916)).

[vi] Id. at 817.

[vii] Id. at 819.

[viii] Id. at 825.

[ix] Id.

[x] Moseley, 537 U.S. at 430 (citing 1947 Mass. Acts p. 300, ch. 307).

[xi] See id.

[xii] Id. (citing Restatement (Third) of Unfair Competition § 25, Statutory Note (1995).

[xiii] See § 24:68. Dilution: Free Riding Or Impairment Of Distinctiveness?, 3 McCarthy on Trademarks and Unfair Competition § 24:68 (5th ed.)

[xiv] Id.

[xv] See id; See also 15 U.S.C.A. § 1125(B)( defining of “dilution by blurring” and § 1125(C)(defining “dilution by tarnishment”).

[xvi] See McCarthy, note 13 supra,  § 24:68 (citing criticism of such decisions).

[xvii] 15 U.S.C. § 1125(C)[1995]

[xviii] Moseley, 537 U.S. at 432–33.

[xix] Id. at 433 (overruling Ringling Bros.-Barnum & Bailey Combined Shows v. Utah Div. of Travel Dev., 170 F.3d 449, 460 (4th Cir. 1999).

[xx] Id. at 433–34.

[xxi] Id. (emphasis added).

[xxii] Id. at 434 (emphasis added).

[xxiii] Compare 15 U.S.C. § 1125(C)(1)[2006] to 15 U.S.C. § 1125(C))[1995]

[xxiv] 15 U.S.C.A. § 1125 (C)(1)(emphasis added).

[xxv] V Secret Catalogue, Inc. v. Moseley, 605 F.3d 382, 387 (6th Cir. 2010)(citing and quoting U.S. Code Cong. & Adm. News, 109th Cong.2d Sess.2006, Vol. 4, pp. 1091, 1092, 1097. Further noting: The drafters of the Committee Report also called special attention to the “burden” of proof or persuasion placed on “trademark holders” by the Supreme Court’s opinion in Moseley, suggesting a possible modification in the burden of proof.).

[xxvi] V Secret Catalogue, Inc., 605 F.3d at 387.

[xxvii] Id. at 388.

[xxviii] Id. at 392 (J. Nelson Moore, dissenting)(emphasis added)(quoting Starbucks Corp., 588 F.3d at 110); see also id. at 393 (“In short, Victoria’s Secret has presented no probative evidence that anyone is likely to think less of Victoria’s Secret as a result of “Victor’s Little Secret” and cannot therefore prevail on its claim of dilution by tarnishment”, citing Hormel Foods Corp. v. Jim Henson Prods., Inc., 73 F.3d 497, 507 (2d Cir.1996) (“Absent any showing that Henson’s use [of a puppet named Spa’am] will create negative associations with the SPAM mark, there [is] little likelihood of dilution.”).

[xxix] See, e.g, § 24:89. Dilution by tarnishment, 3 McCarthy on Trademarks and Unfair Competition § 24:89 (5th ed.)(“I agree with the position of Judge Karen Nelson Moore in her dissent. The majority’s creation of a presumption of dilution by tarnishment if there is use on “sex related products” is wildly misguided.”)

[xxx] V Secret Catalogue, Inc. v. Moseley, Rehearing and Rehearing En Banc Denied (Aug. 5, 2010); Moseley v. V Secret Catalogue, Inc., 562 U.S. 1179 (Jan 18, 2011)(denying certiorari).

[xxxi] Jake Linford et. al., Trademark Tarnishmyths, 55 Ariz. St. L.J. 609, 674 (2023)

[xxxii] Jack Daniel’s Props., Inc. v. VIP Prods. LLC, 599 U.S. 140, 144, 143 S. Ct. 1578, 1582, 216 L. Ed. 2d 161 (2023)

[xxxiii] VIP Prods. LLC v. Jack Daniel’s Props. Inc., No. CV-14-02057-PHX-SMM, 2025 WL 275909, at *6 (D. Ariz. Jan. 23, 2025)

[xxxiv] Id at *18.

[xxxv] Id.

[xxxvi] Id.

[xxxvii] Id. at *19.

[xxxviii] Id. at *12.

[xxxix] Id.

Taylor v Killer Queen LLC [2026] HCA 5

Jessica Bell – Kalus Kenny Intelex, Melbourne, Australia

The lengthy trade mark dispute between Australian fashion designer, Katie Perry (now Katie Taylor), and international pop sensation Katheryn Hudson, better known under the stage name Katy Perry (Ms Hudson), has hit a new note: on 11 March 2026, the majority of the High Court of Australia made its determination in Ms Taylor’s favour.

The Dispute

This dispute concerns the word mark KATIE PERRY (the Designer Mark), which Australian fashion designer Ms Taylor applied to register in September 2008 in respect of clothing (Class 25), having commenced selling clothing under her name in 2007.

Ms Hudson had performed under the stage name “Katy Perry” since 2002 and rose to international prominence in around 2008. She initially opposed Ms Taylor’s application and filed her own trade mark application for KATY PERRY (the Singer Mark) in respect of music (Classes 9 and 41) and clothing (Class 25), but that application was refused due to its similarity to Ms Taylor’s mark and the opposition was ultimately withdrawn.

The Designer Mark was subsequently registered in August 2009 and Ms Taylor later commenced proceedings against Ms Hudson and her associated entities alleging that the respondents had infringed the mark by using the Singer Mark in the promotion and sale of clothes. The procedural history, and factual background, of this case are summarised with greater detail in our previous article.

The Issues in Dispute

The High Court was tasked with determining three issues in the matter:

1. Rectification

Under the Trade Marks Act 1995 (Cth) (the Act), a party may apply for rectification of the trade mark register. If successful, such an application may result in a trade mark being cancelled, removed, amended or limited. In this case, the application for rectification of the Designer Mark was based on the following grounds:

(a) that, because of the reputation of the Singer Mark in Australia before the priority date for the registration of the Designer Mark (29 September 2008), any use of the Designer Mark would be likely to deceive or cause confusion; and

(b) that, because of the circumstances applying when Ms Hudson and the associated entities filed their application for rectification (20 December 2019), the use of the Designer Mark was likely to deceive or cause confusion.

The significance between the circumstances as at September 2008 as opposed to December 2019 was that, as at the latter date, it was apparent and undeniable that Ms Hudson had acquired a significantly higher degree of international stardom and celebrity. Namely, by that point, it was not just Katy Perry’s discography that was famous, but also Katy Perry as a persona.

2. Deception or Confusion (2019 Circumstances)

The second issue concerned a further rectification ground under s 88(2)(c) of the Act. Ms Hudson sought cancellation of the Designer Mark on the basis that, because of the

circumstances applying at the time they filed their rectification application (20 December 2019), use of the Designer Mark was likely to deceive or cause confusion. Importantly, this assessment was undertaken by reference to the circumstances as they existed more than ten years after the Designer Mark had been registered.

3. Discretion

The third issue arose only if one or both rectification grounds were made out. In that event, the Court was required to consider whether it should exercise its discretion not to cancel the Designer Mark where the registered owner, Ms Taylor, could demonstrate that the relevant ground for rectification had not arisen through any act or fault of her own. In the present appeal, this discretionary consideration was addressed by reference to the priority date (29 September 2008) in respect of the first ground, and 20 December 2019 in respect of the second.

High Court Decision

The High Court of Australia allowed the appeal of Ms Taylor by majority, with five justices delivering three sets of reasons.

In relation to the first rectification ground, the majority held that the primary judge had not erred in finding that Ms Hudson and the associated entities failed to establish a real likelihood of deception or confusion. While the Singer Mark had acquired a reputation in Australia in connection with music and entertainment before 29 September 2008, the evidence did not demonstrate that the use of the Designer Mark on clothing would be likely to deceive or confuse consumers. In particular, the Court considered that the Full Court of the Federal Court of Australia (the Full Court) had erred by conflating Ms Hudson’s personal fame with the reputation of the Singer Mark, and by assuming that the common practice of musicians selling merchandise meant that the reputation of the mark extended to clothing.

The majority also rejected the second rectification ground, which focused on the circumstances as at 20 December 2019. The Court accepted that the Singer Mark had achieved a significantly greater reputation by that time. However, it agreed with the primary judge that this “heightened reputation” actually reduced the likelihood of confusion, as consumers were more likely to recognise the difference between the marks. The fact that the marks had co-existed in the market for approximately a decade without clear evidence of confusion also supported that conclusion.

In separate reasons, Steward J emphasised that the law should not reward what he described as an “assiduous infringer”. His Honour noted that the respondents had persistently sold “Katy Perry” branded clothing in Australia despite the existence of the Designer Mark, and observed that it would be an “extraordinary result” if confusion arising from such conduct could justify removing the appellant’s mark from the register.

Accordingly, the High Court concluded that the primary judge had made no material error and that the Full Court should not have overturned her decision. The appeal was allowed with costs, but the dispute is not yet fully resolved. The remaining issues have been remitted to the Full Court for determination. Notably, while the High Court ruling clarifies key points of law, ongoing proceedings may still affect the final outcome of the case.

Key Takeaways

In our previous article, we highlighted the importance of protecting a brand from the moment it is first used. Even though the High Court overturned the Full Court’s decision, that advice remains relevant. The safest way to protect a brand is through early trade mark registration. At a minimum, stakeholders should maintain thorough records of their ongoing brand use, which can help demonstrate both early use and the development of reputation over time.

Malisheia Douglas

Companies outside traditional tech sectors may be sitting on IP goldmines without realizing it. Manufacturing, e-commerce, and consumer products businesses routinely use AI technologies from predictive maintenance to automated pricing. These technologies represent valuable intellectual property assets. While these companies may not self-identify as “tech companies” in the Silicon Valley sense, their AI implementations are every bit as technically sophisticated and legally protectable.

Even when AI implementations are not core to customer-facing products, they warrant strategic protection. Operations-focused enterprises can leverage these innovations for competitive advantage, licensing opportunities, or as defensive assets in a broader IP strategy.

AI patent growth trends

The patent landscape tells a compelling story. The United States has experienced significant growth in AI-related patent applications.  According to the US Patent and Trademark Office (USPTO) Artificial Intelligence Strategy Report, AI-related patent applications increased 33% between 2018 and 2024, indicating sustained growth in this area beyond just the recent generative AI boom.

While AI-related patent applications have faced initial higher rates of rejection based on subject matter eligibility challenges at the USPTO, patenting AI-related inventions can be successful with a proper strategy. The USPTO’s August 2025 memorandum clarifies common issues in subject matter eligibility analysis, creating a clearer path to patenting AI-related inventions by narrowing the overuse of the “mental process” rejection category and ensuring examiners only reject applications when ineligibility is more likely than not. Experienced practitioners regularly achieve success by utilizing strategic drafting and prosecution to navigate USPTO challenges, including;

• Emphasizing technical implementation details over business methods. Claims that describe specific hardware configurations are more likely to overcome abstract idea rejections than those focused on business outcomes or end results.
• Highlighting specific technical problems solved by the AI system. Articulating how the invention addresses a concrete technical challenge that were previously roadblocks demonstrates practical application rather than mere automation of an abstract idea.
• Considering strategies that may route an application to a favorable art unit. Strategic claim drafting and characterization of the invention can influence which examination group reviews the application, potentially affecting the likelihood of subject matter eligibility challenges.

Understanding competitive value

The business impact of well-implemented AI systems can be substantial. According to Netflix, approximately 80% of subscribers trust and follow the recommendations of their algorithm, demonstrating how AI-driven systems can fundamentally shape not only customer behavior but business outcomes.

While Netflix’s algorithm directly drives customer engagement, this same principle of AI-driven competitive advantage applies equally to behind-the-scenes operational systems. Manufacturing companies with sophisticated predictive-maintenance datasets could potentially license that technology or leverage it in vendor negotiations, while e-commerce businesses with effective recommendation engines or pricing algorithms possess valuable assets that differentiate them from competitors and can similarly be leveraged through licensing.

Recognizing AI in your operations

Many businesses utilize AI technologies without recognizing them as such. Common applications in companies outside the traditional tech sector include:

• Predictive maintenance systems that analyze equipment data to prevent failures. A manufacturing company developed machine learning algorithms that predict when specialized automated component placement equipment would fail, reducing downtime and extending equipment lifespan. The system learned from sensor data, environmental conditions, and maintenance history to identify failure patterns invisible to human operators.
• Quality control processes using image recognition and pattern analysis. An electronics manufacturer implemented AI-powered visual inspection systems that detect microscopic defects in circuit board assembly with greater consistency than manual inspection. The system continuously improves its accuracy by learning from each inspection cycle and integrating with programmable logic controller (PLC) environments for real-time adjustments.
• Risk assessment systems that combine multiple data sources for enhanced accuracy. A consulting firm, for instance, developed a comprehensive weather-risk analysis platform that combines machine learning and statistical modeling to predict various environmental hazards with increased precision. Because the underlying methodology is adaptable across weather-related risks—from severe storms to extreme temperature events—the system evolved into a valuable platform technology extending beyond its original use case.

Each of these applications, potentially, represents valuable intellectual property that could be protected through patents, maintained as trade secrets, or licensed.

Conclusion

The rapid growth in AI patent applications and the increasing sophistication of AI implementations across industries create both opportunities and risks for businesses. “Non-tech companies” or companies outside the traditional tech sector should seriously consider the potential value of their AI-related inventions as patents or trade secrets.  With U.S. patent applications related to generative AI surging in the US and across the globe, companies must develop comprehensive strategies to protect their AI-related intellectual property while managing and mitigating risks.

If your company is evaluating how to protect AI-related innovations—whether customer-facing or operational—we can help you assess whether patent protection, trade secret strategies, or licensing opportunities make the most sense for your specific AI implementations and business objectives.

By Stavros Varveris, Trainee Lawyer at A. & K. METAXOPOULOS AND PARTNERS LAW FIRM

Law No. 5271/2026 introduces a new specialized legal framework combining administrative and criminal regulation for the prevention and repression of art forgery, the protection of the physical integrity of works of art and collectible items, and the establishment of certified expert mechanisms for authentication.

Until now, the criminal treatment of art forgery relied exclusively on the general provisions of the Greek Penal Code on fraud and forgery. In this context, the establishment of criminal liability generally required the completion of a financial transaction and proof of pecuniary damage or deception of a third party, a requirement that significantly limited the effectiveness of the existing framework for such offences.

The new law operates as a lex specialis and introduces autonomous criminal offences covering the manufacture or alteration of counterfeit works of art, their distribution, exhibition or commercial placement, as well as possession with intent to distribute. The completion of economic fraud is therefore no longer a prerequisite for criminal liability.

The criminal framework is accompanied by stricter and escalating sanctions. The basic penalty aligns with that provided for fraud under the Penal Code, providing for imprisonment from six months to five years and a monetary fine ranging from 5.000 EUR to 120.000 EUR. However, in cases of professional or habitual conduct, commission on a commercial scale, action by an organized group, abuse of professional capacity, or where the damage caused exceeds 120.000 EUR, the penalties are significantly increased, reaching up to ten years’ imprisonment and a monetary fine of up to EUR 300,000.

Furthermore, damage, destruction or alteration of works of art now constitutes a distinct criminal offence, reflecting the public cultural value of such assets when compared to ordinary damage to property.

A key innovation of the law is the establishment of a state-supervised Register of Certified Art Experts, responsible for the official verification and certification of the authenticity of works of art and collectible items. According to the relevant provisions, the register operates under

clearly defined eligibility and qualification criteria, is subject to ethical and professional conduct rules, and provides for formal accreditation procedures, ensuring reliability and consistency in the assessment of authenticity.

At the same time, an Autonomous Department for Works of Art is established within the Ministry of Culture, entrusted with the supervision of art market practices, coordination with law-enforcement authorities, and the development of preventive policies.

In conclusion, the new legislative framework takes a broader approach to the protection of works of art. By expanding the scope of relevant criminal offences, the law reinforces the cultural value of artworks and their role as part of the common cultural heritage. At the same time, the provision of criminal protection against damage to works of art and collectible items in public, municipal and museum spaces provide stronger protection for cultural heritage. The prevention and suppression of offences in the field of art thus emerge, particularly in the present era of rapid technological development, as a fundamental factor in protecting the value of art more generally.

Authors: Ronald Urbach of Davis+Gilbert and Robert Chappell Jr. of Davis+Gilbert 

The Bottom Line 

• New enforcement era begins: NYC has a new “sheriff” with expanded powers and strong allies. Any company that advertises and markets products or services to consumers in New York City must learn the rules and comply with the law. If not, there will be consequences.  

• Mayor’s priorities are clear: Mayor Mamdani’s January 5, 2026 executive orders on “junk fees” and “subscription programs” show that consumer protection, corporate accountability, and compliance with City laws and regulations are top priorities. The administration believes that aggressively enforcing consumer protection will help tackle the affordability crisis. 

• FTC-style enforcement: With former FTC Chair Lina Khan as a key mayoral adviser, and the appointment of Commissioner Sam Levine (former Director of FTC’s Bureau of Consumer Protection under Chair Khan) as Head of the NYC Department of Consumer and Worker Protection (DCWP), businesses should anticipate (if not expect) a return to robust and aggressive oversight of advertising and marketing practices in New York City.  

• History repeats: This harkens back to the days of Mark Green who helped make the then NYC Department of Consumer Affairs a feared government regulator for national advertisers and marketers. 

Advertisers and marketers who target NYC consumers should take note: the appointment of former FTC Bureau of Consumer Protection Director Sam Levine as Commissioner of the NYC Department of Consumer and Worker Protection (DCWP), combined with Mayor Mamdani’s recent executive orders on consumer protection, signals a major shift in enforcement priorities. With former FTC Chair Lina Khan serving as a key mayoral adviser, businesses can expect the kind of robust, aggressive oversight of advertising and marketing practices not seen since the Mark Green era. This alert outlines what advertisers need to know and how to prepare. 

History of the NYC Department of Consumer and Worker Protection (DCWP) 

The DCWP, formerly the New York City Department of Consumer Affairs, was established in 1969 as the country’s first municipal consumer protection agency of its kind. Following the passage of the City’s consumer protection law, the department was created with broad authority to protect New Yorkers from deceptive business practices.  

Under its broad authority, the DCWP oversees advertising that reaches NYC consumers — including national advertising. Along with the City’s Consumer Protection Law, the DCWP has undergone periods of heightened, aggressive enforcement against national advertisers believed to be non‑compliant with the City’s Administrative Code and the Rules of the City of New York. Further, in 1989, the Department of Consumer and Worker Protection set advertising guidelines for businesses requiring DCWP licenses. Examples of key areas of concern under the City’s advertising rules include pricing claims, offer terms, bait-and-switch tactics, free offers, and other false or misleading claims and illustrations. 

New Leadership at the DCWP   

Prior to the inauguration of Mayor Mamdani, it was announced that former Director of FTC’s Bureau of Consumer Protection Sam Levine would serve as the Commissioner of DCWP. During his time at the FTC, Levine oversaw enforcement, rulemaking, and policy work in many areas, including marketing, digital advertising, and consumer reporting. 

While Levine served at the FTC, Lina Khan, co‑chair of Mayor Mamdani’s transition team, was the chair of the federal agency. Under the Khan‑era FTC and Levine’s leadership, the agency increased actions and rulemaking regarding issues concerning the advertising and marketing practices. Although Khan’s long-term role under the Mamdani administration remains unclear, Levine’s appointment signals a return to the DCWP’s aggressive oversight of business practices impacting New Yorkers — which includes national advertising and marketing practices. 

The Mayor’s Recent Executive Orders   

Mayor Mamdani’s two executive orders seeking to advance his affordability agenda, emphasizing pricing transparency, corporate accountability, and compliance with the City’s laws, are a recent indication of the administration’s intention to increase oversight and enforcement at the DCWP. 

• Executive Order 09 (Combatting Hidden Junk Fees) established an interagency, city-wide junk fee task force, co‑chaired by Commissioner Levine or a designee. Further, the order broadly directed the DCWP to “consider and take any appropriate actions it deems warranted to combat hidden junk fees,” and to engage in compliance and enforcement actions. 

• Executive Order 10 (Fighting Subscription Tricks and Traps), directed the DCWP to monitor, investigate, and take enforcement action against businesses’ subscription‑related practices that deceive or mislead consumers, including but not limited to “enrolling people into subscriptions, misrepresenting or failing to disclose pricing or renewal terms, and unfairly keeping them subscribed by making it difficult to cancel.” The order also directs DCWP to consider and take action to combat “subscription tricks and traps” through rulemaking or the issuance of recommendations to City Council. 

Strong Allies 

At the signing of the two executive orders. Mayor Mamdani was joined by NY Attorney General Letitia James, City Council Speaker Julie Menin, and Commissioner of the DCWP, Sam Levine.  We can expect that the NY City Council will ensure that the Mayor and Commissioner have sufficient resources to accomplish their consumer protection mission. Standing side by side, NY Attorney General James will support the consumer protection mission both by words and action.  

Implications for National Advertisers and Marketers   

While these executive orders concern junk fees and subscriptions, each largely mirrors initiatives of the Khan‑era FTC. The practical implications of such consumer protection monitoring and enforcement in New York City will likely play out for national advertisers and marketers. In the immediate term, with Mayor Mamdani in office and the appointment of Commissioner Levine, businesses should prepare for a potential return to robust, aggressive oversight by the DCWP of national advertising and marketing that reaches New Yorkers.  

Drawing from the strong record of consumer protection at the FTC during Chair Khan and Bureau Director Levine’s tenure, we can look to that record for topics and issues to now be taken up by the newly revitalized NYC DCWP. Advertisers and agencies that take proactive steps now will be better positioned to avoid costly enforcement actions down the road.  

Jessica Bell, Associate, Kalus Kenny Intelex, Melbourne, Australia

2026 begins with a number of changes to the Australian Trade Marks landscape, following the introduction of the Trade Marks Amendment (International Registrations, Hearings and Oppositions) Regulations 2025 (the IRHO Regulations).

The IRHO Regulations introduce a variety of procedural and technical updates to the Trade Mark Regulations 1995, including longer filing periods, partial replacement of protected international trade marks, and extended examination periods.

Divided into five comprehensive amendment schedules and two largely administrative schedules, the IRHO Regulations reflect recent changes to the Madrid Protocol administered by the World Intellectual Property Organisation (WIPO). Below, we summarise the key details of Schedules 1-5 and outline what they mean for Australian trade mark applicants and holders. Schedules 6 and 7 are primarily technical, covering minor adjustments and the timing of when each amendment takes effect – Schedules 1 and 5 took effect on 19 December 2025, while the changes set out in Schedules 2-4 and 6-7 were effective from 19 November 2025.

Schedule 1 – Increased Filing Period for Notice of Intention to Defend

Schedule 1 increases the period for filing a Notice of Intention to Defend an Opposition (NID) to two months from the previous one month period.

This means that a party now has two months to file a NID in opposition proceedings relating to:

· the registration of a trade mark;

· an application to remove a registered trade mark for non-use;

· extensions of protection to an international registration designating Australia; and

· an application to cease protection of an international registration for non-use.

This additional time is particularly significant given the Registrar’s power to treat an opposition as successful where a defence is not filed on time. Commencing on 19 December 2025, the new filing period applies to any opposition where acceptance of the trade mark, non-use application, or international registration designating Australia was published on or after that date.

Schedule 2 – Partial Replacement of Protected International Trade Mark

Schedule 2 introduces the concept of a partial replacement of a protected international trade mark (PITM). This mechanism under the Madrid Protocol allows a trade mark holder to replace an earlier registration with a later international registration for some, but not all, of the goods or services protected by a trade mark.

Previously, Australia’s regulations only allowed for a full replacement of the goods or services protected by a trade mark. As a result of this change, a later international registration will no longer automatically replace an earlier Australian trade mark in its entirety where both are owned by the same entity and cover the same goods or services.

This change is beneficial to Australian trade mark owners because it provides greater flexibility to manage their portfolios, without risking the loss of any valuable existing rights. Instead of a trade mark owner being forced into an all-or-nothing replacement, they can now update their registrations gradually, retain protection for important legacy goods or services, and better align their Australian trade mark strategy with their international registrations.

Although the change in Schedule 2 commenced on 19 November 2024, partial replacement is now available for any eligible trade mark, including those registered and protected prior to that date.

Schedule 3 – New Ground for Rejecting an International Registration Designating Australia

Schedule 3 introduces a new ground for IP Australia to reject an international registration designating Australia (IRDA).

From 19 November 2024, an IRDA may now be rejected on the basis that its protection would result in an asset being made directly or indirectly available to, or for the benefit of, any person or entity to whom assets must not be made available under the Autonomous Sanctions Act 2011 or the Charter of the United Nations Act 1945.

This means that that Australia’s trade mark system is now expressly aligned with its international sanctions regime, preventing trade mark rights from being granted in circumstances that could breach financial and trade restrictions.

Schedule 4 – Registrar’s Power to Revoke Acceptance of an IRDA

In addition to Schedule 3, Schedule 4 clarifies that where a notice of intention to revoke acceptance is issued by the IP Australia, a previously accepted IRDA will not automatically proceed to protected status. Instead, the grant of protection is paused upon issue of the notice, rather than continuing at the end of the opposition period.

This gives the applicant additional time to address the Registrar’s concerns before a final decision is made to revoke acceptance. However, importantly, an IRDA will still become protected 18 months after notification to Australia unless the Registrar notifies the International Bureau otherwise within that period.

Schedule 5 – Extended Examination Period upon request for a hearing

Effective from 19 December 2025, Schedule 5 introduces a new ground for ‘deferred acceptance’ of a trade mark, particularly where an applicant or holder requests a hearing. In these circumstances, acceptance of the trade mark application will automatically be paused, preventing it from lapsing if the examination process is not resolved in time.

Importantly, applicants will no longer need to make a separate request for deferment. The pause will end upon the earlier of the Registrar deciding to accept or reject the application following a hearing or the applicant withdrawing their request to be heard.

This change is particularly significant for applicants who request a hearing close to the acceptance deadline, as it removes the need to apply for an extension of time.

Key Takeaways

Ultimately, the IRHO Regulations reflect a refinement of existing processes while ensuring continued alignment with international trade marks regulations. These amendments provide procedural flexibility in favour of trade mark holders and applicants, but also introduce requirements to be aware of, such as the expanded grounds upon which an IRDA can be rejected.

Authors: Gary Kibel of Davis+Gilbert and Jeremy Merkel of Davis+Gilbert  

The Bottom Line 

• Privacy compliance obligations continue to grow and expand, so businesses should revisit their privacy compliance programs regularly. 

• California has introduced even more unique privacy compliance obligations. 

• Kentucky, Indiana and Rhode Island join the fray of states with effective comprehensive consumer privacy laws on January 1, 2026. 

The new year might mean the same to you, but for businesses, the turn of the calendar once again means a new set of privacy compliance obligations. 2026 brings new requirements in California, which has the most comprehensive regulatory framework and a stand-alone privacy regulatory agency, along with new state privacy laws in Kentucky, Indiana and Rhode Island taking effect. 

CCPA Final Regulations 

The California Privacy Protection Agency (CPPA) adopted a package of finalized regulations earlier this year, which take effect January 1, 2026. As discussed in our previous alert, businesses must be cognizant of critical areas that will require additional steps for compliance, including: 

1. Risk assessments before initiating processing that presents “significant risk” to consumers’ privacy, including selling or sharing personal information, processing sensitive personal information, using automated decision-making technology (ADMT) for significant decisions, and certain automated profiling activities (beginning April 1, 2028); 

2. Cybersecurity audits for businesses whose processing presents “significant risk to consumers’ security” (beginning dates vary based on the business’s revenue, with April 1, 2028, being the first deadline); and 

3. Where a business uses ADMT to make “significant decisions” about consumers, it must provide a preuse privacy notice, the right to optout of ADMT, and the right to access information about the business’s ADMT use with respect to the consumer (beginning January 1, 2027). 

Additional CPPA Requirements 

The CPPA has provided businesses with a list of additional items that businesses should know and prepare for, which includes, among other things, the following: 

Display Opt-Out Request Status 

A business must provide a means by which a consumer can confirm the status of their opt-out request, including those submitted through an opt-out preference signal, like the Global Privacy Control. For example, a business can display on its website “Opt-Out Request Honored” and indicate in the consumer’s privacy settings, via a toggle or radio button, that the consumer has opted out of the sale/sharing of their personal information. 

Furthermore, businesses that sell or share personal information must process recognized opt out preference signals as valid requests to opt out for the device/browser and any associated profiles, and — where the consumer is known — apply the signal to the account and offline sales/sharing. 

Requests to Know and Correct 

For requests to know if businesses retain data beyond 12 months, consumers must be able to obtain all personal information collected on or after January 1, 2022, unless impossible or disproportionate, with individualized responses and secure delivery. 

For corrections, businesses must now provide the consumer with the name of the source from which they received inaccurate information, or alternatively, inform the source themselves that the information is incorrect and must be corrected. Businesses must also ensure that corrected information remains corrected. For example, if the business regularly receives information from data brokers, it must make sure the corrected data is not overridden by inaccurate information later received from data brokers. 

If a business denies a request to correct health information, consumers have the right to submit a 250-word written statement contesting the accuracy of health information, and upon the consumer’s request, the business must make that statement available to any person to whom it disclosed the contested personal information. 

Expanding Right to Limit 

The definition of “sensitive personal information” now explicitly includes personal information of consumers the business knows are under 16, as well as “neural data,” and confirms the sensitivity of several categories (e.g., precise geolocation, union membership, sexual orientation). 

If a business is using consumers’ sensitive personal information for something other than the permitted uses set forth in section 7027(m) of the CCPA regulations, it must offer and honor consumers’ right to limit, and update privacy policies accordingly. Businesses may omit the “not inferring characteristics” condition only if they truly do not infer characteristics from sensitive data. 

Enhanced Notices, Choice Architecture, and Universal Design Principles 

All disclosures and interfaces for CCPA requests and consent must be easy to read, accessible, and free from dark patterns, with symmetry in choice and minimal steps to execute privacyprotective options. Notices must be conspicuous online and in mobile apps (e.g., in the app’s platform or download page), and accessible across modalities (including offline and device environments). 

The regulations also codify specific requirements for the Notice at Collection, Notice of Right to OptOut of Sale/Sharing, Notice of Right to Limit, and the Alternative OptOut Link (“Your Privacy Choices” icon), including placement, content, and interactivity, with tailored offline and connecteddevice pathways. 

Service Provider / Contractor Oversight 

The regulations clarify that a business’s failure to conduct appropriate due diligence of its service providers — including ensuring that its subcontractor agreements comply with the CCPA and the regulations — will be factored into whether the business has reason to believe that a service provider or contractor is using personal information in violation of the CCPA and the regulations. 

Metrics and Reporting for Large Data Handlers 

Businesses handling 10 million or more consumers’ personal information annually must, by July 1st of each year, disclose metrics of volumes and median/mean response times for requests to delete, correct, know, optout of sale/sharing, limit, and, where applicable, access ADMT. Disclosures must state whether figures cover all individuals or only California consumers, with the business having the option of which metrics to disclose in its privacy policy. 

Non-Discrimination Rules and Financial Incentives 

The regulations reinforce that price or service differences tied to the exercise of CCPA rights are prohibited unless reasonably related to the value of the consumer’s data. Businesses must be able to substantiate valuations and provide a compliant Notice of Financial Incentive where applicable. In addition, nondiscrimination rights extend to the exercise of ADMT rights. 

Insurance Clarification 

Insurance companies that are “businesses” under the CCPA must comply with the regulation with respect to personal information that is not subject to the Insurance Code, such as website tracking for advertising or employment information (claimsrelated data governed by the Insurance Code remains outside the scope of the CCPA). 

New State Privacy Laws – Kentucky, Indiana and Rhode Island 

Three new consumer privacy laws take effect on January 1, 2026: 

• Kentucky Consumer Data Protection Act 

• Indiana Consumer Data Protection Act 

• Rhode Island Data Transparency and Privacy Protection Act 

Among the patchwork of existing state privacy laws, Indiana and Kentucky’s laws are most similar to Virginia’s Consumer Data Protection Act (VCDPA) and the Connecticut Data Privacy Act (CTDPA), as opposed to the more unique aspects of the CCPA. Covered businesses include those that: 

1. Control or process personal data of at least 100,000 consumers, or 

2. Control or process personal data of at least 25,000 consumers while deriving over 50% of gross revenue from the sale of personal data 

Businesses who already comply with other state laws may not have to make significant changes to their privacy program. Businesses should, however, review their existing privacy policies to ensure they include the required disclosures under Indiana and Kentucky’s laws. 

Rhode Island’s Unique Requirement 

Rhode Island, notwithstanding its similarities to the existing laws, includes a unique provision that controllers must identify “all third parties to whom the controller has sold or may sell consumers’ personally identifiable information” (subject to an exception for disclosing trade secrets). Notably, the statute does not define “personally identifiable information,” instead referring to “personal data” (which is defined) in most of its provisions, so it is unclear how broadly this provision sweeps. 

Controllers subject to Rhode Island’s law include those that: 

1. Control or process personal data of at least 35,000 Rhode Island residents, or 

2. Control or process personal data of at least 10,000 Rhode Island residents and derived more than 20% of gross revenue from sale of personal data. 

This requirement has the potential to impose an onerous burden on companies that engage in a substantial volume of such sales. 

What’s on the Horizon? 

For the first time this decade, there are no consumer privacy laws signed by a governor waiting to take effect. But don’t get too comfortable. Legislation in Wisconsin, Michigan, Massachusetts, Pennsylvania, and North Carolina is moving through committees. As always, it remains to be seen which of these bills will ultimately become law, but this is nonetheless a reminder that privacy law never sleeps. 

By James P. Flynn, Epstein Becker Green 

Trademark lawyers eventually learn a hard truth: brands often do not die; instead, they drift. 

Sometimes they drift quietly into nostalgia. Sometimes they drift into the hands of the entrepreneurial and well-advised. Other times, they drift along unattended.  Of course, sometimes, they drift straight into court. 

Few issues in intellectual property law reveal the fault lines between legal formalism and cultural memory as sharply as disputes over legacy brands: 

Brands that stand the test of time innovate to stay relevant and build upon the product imagery that first captured customers’ hearts. So-called legacy brands and their associated images include Timberland boots, the Burberry raincoat, Tiffany diamonds, and Levi’s jeans. Even Disney, whose fantasy characters remain central to the customer experience. Each consumer-facing brand expanded its appeal while staying true to its foundational equities. Conservative Burberry got sexy by putting its tartan pattern on bikinis. Tiffany signed Elsa Peretti to design more accessibly priced silver and gold jewelry that was still distinctively elegant. Traditional Disney acquired Pixar’s more modern storytelling. By definition, legacy brands can also survive a spate of bad management, bad economies, even bad luck — but not in perpetuity.  

[BigThink, “How one key obsession can build and drive a legacy brand,” October 14, 2025] 

When a name outlives its original commercial enterprise, questions inevitably arise: Who owns the identity? Who speaks for the brand? And how much does history matter when measured against trademark registries? It seems like legacy brands have a way of returning, sometimes as beloved revivals, sometimes as legal problems looking for a forum. 

There are two disputes that offer a useful comparative lens on how different legal systems confront these questions.  One is unfolding now in Europe over the Commodore name, the other was litigated for decades in the United States over the name for The Drifters.  In this piece, we revisit Marshak v. Treadwell, in which the author played a role as trial and appellate counsel, in a matter dealing very directly with the notion of a legacy brand. See 23 Entertainment Law Reporter. 47-52 (July 2001). We place that matter alongside today’s COMMODORE name dispute unfolding in Italy. The result is not nostalgia, but instruction: a reminder that brand identity, once untethered from disciplined legal stewardship, will eventually be claimed by someone else—with paperwork.  

The Commodore Dispute: Legacy Meets Registration 

For those hoping that this would in some sense be a straight music piece, the author hates to disappoint you, but the Commodore dispute in Italy has nothing to do with Lionel Ritchie.  That would probably have made it too easy for all of us.  Instead, this COMMODORE brand related to computers and technology: 

A bit of background for those who can’t remember hardcopy games, tapes, and ten-minute load times: Jack Tramiel founded Commodore in 1958 as a typewriter company that would ultimately become a major force during the 80s computing boom. 

It would be 1982 before the Commodore 64 took flight in international markets, and the Guinness Book of World Records would recognize it as the best-selling home computer of all time.  

The brand is synonymous with retro gaming….  

[McNally, Commodore CIC takes legal action against Italian rival] 

In many ways, that COMMODORE brand could thus be seen, at first glance, like a brick house: iconic, solid, structurally sound. “How can she lose with the stuff she use?,” or so the rhetorical question would go.  Indeed, “what a winning hand,” one might say.  Yet appearances, as trademark lawyers know, can be deceiving. Even a brick house will collapse if the registrational and ownership foundation is neglected. 

In December 2025, Commodore International Corporation (“Commodore International” or “CIC”) commenced proceedings in the Italian courts and the European Intellectual Property Office challenging trademarks held by Commodore Industries S.r.l., an Italian entity founded in 2017 that successfully registered the COMMODORE name and related marks in Italy and the EU. Commodore International contends that those registrations conflict with rights traceable to the original Commodore business and should be invalidated to allow the marketing of “authentic licensed products” under the historic brand name. See Tom’s Hardware, “Commodore International challenges rival’s trademarks in escalating brand dispute” (2025). This matter has been described as part of an ongoing, “bitter battle over the ‘true’ representation of the original company.” 

The Italian registrant, for its part, emphasizes that its marks were examined and granted by national and EU authorities, were not successfully opposed, and therefore enjoy the presumptive validity accorded to registered EU trademarks. See Tom’s Hardware, “Commodore International challenges rival’s trademarks in escalating brand dispute” (2025). 

What is striking about the COMMODORE dispute is that it is not framed primarily as a classic likelihood-of-confusion case. Rather, it is a contest over identity stewardship: whether the emotional and historical gravity of the COMMODORE name can displace later-issued registrations obtained decades after the original company’s collapse.  Commodore International appears adamant as to its obligation “to protect its legacy and preserve the community’s trust in the original Commodore name…We recognize and deeply value the passion and dedication of the Commodore community, who have kept the spirit of the brand alive for decades. Our goal is to protect that legacy and to foster a positive, creative environment for all who love Commodore—past, present, and future.”  Commodore International even promises hat “[p]arties interested in creating officially licensed Commodore products and experiences will be able to begin the conversation with CIC in the coming weeks, when an official Licensing Pipeline tool launches at commodore.net.”   

But the registration and bankruptcy background here is complex, detailed, and, ultimately, leaves Commodore International a bit at sea over trademark rights.  After the original Commodore International went bankrupt in the 1990s, rights to its trademarks were sold, abandoned, or otherwise fragmented over decades. Multiple entities have claimed ownership at different times, which leads to: 

• Multiple groups asserting rights — e.g., Commodore International (a newly relaunched entity claiming the original marks) vs. an Italian company (Commodore Industries) that registered some European trademarks and uses the name commercially, as seen here.  

• Confusing or overlapping registrations — different parties may hold different pieces of the IP portfolio in different jurisdictions or product categories, making global brand control difficult, as one source noted.  

This kind of fragmentation is very common with older brands whose original owners disappeared or whose IP lapsed without active enforcement. When more than one party uses the same historic brand: Consumers may get confused about which products are “official” vs. licensed vs. aftermarket; Products with the name might have widely varying quality, harming the perceived value of the brand overall. This is often what legacy brands fear most when unauthorized or low-quality goods carry their names.  The current Commodore situation includes Italian-branded tablets, laptops, and games that many in the community view as unrelated to the classic computer legacy, which complicates efforts to “revive” the brand in a respectable way.  As the song goes, “Sail on down the line / ‘Bout a half a mile or so / … Time after time I tried/ To hold on to what we got but/….I know it’s a shame/But I’m giving you back your name/…”   

Under EU trademark law, that fractured history leaves Commodore International with a difficult argument to win absent provable bad faith, non-use, or invalidity at the time of filing by the Italian registrant. See EUIPO, Invalidity and Cancellation Proceedings Overview. Legacy alone, without current qualifying use or a successful attack on the registration process, rarely suffices. Indeed, from a European trademark perspective, this is uphill terrain. EU trademark law is unapologetically administrative. If one registers first, uses properly, and survives opposition, the law tends to reward diligence rather than nostalgia. Legacy may supply a compelling press narrative, but narrative is not a statutory ground for invalidation. See EUIPO, Invalidity and Cancellation Proceedings Overview.  As the Italian registrant has noted, the company and its partners, “for over seven years now, have been legitimately using the brand in compliance with both current laws and market rules.” 

In other words, Commodore International now finds itself arguing that history should trump the registry, a position that plays better in common memory than in continental regulation. 

The Drifters Litigation: Identity Anchored in Continuity 

The U.S. courts confronted a remarkably similar problem—albeit in a different doctrinal posture—in Marshak v. Treadwell, a long-running dispute over the name The Drifters, an American pop and R&B/soul vocal group with well known hits such as Under The Boardwalk, Up on the Roof, On Broadway, Save the Last Dance for Me, Vaya Con Dios, Saturday Night at The Movies, There Goes My Baby, and Please Stay.  Though the group seemed to have three distinct “golden eras” in the early 1950s, the 1960s, and the early 1970s, now registered The DRIFTERS as a trademark during that whole period.  The Drifters, in terms of membership, “were the least stable of the great vocal groups.”  The consistency through that period was George Treadwell, who had purchased the name, from Clyde McPhatter in 1955, as any review of the shifting lineups in The Atlantic Years, 1953 to 1972, shows. 

Larry Marshak obtained a federal trademark registration for THE DRIFTERS in the late 1970s and promoted performances under that name. He also initiated suit against a rival Drifters group operated by Faye Treadwell, widow of George Treadwell, the group’s long-time manager.  Treadwell counterclaimed that Marshak’s registration had been procured by fraud because it failed to disclose the existence of longstanding rights tied to the original group’s commercial legacy, including ongoing royalty income from recordings.  A jury found fraud, and the district court concluded that Marshak’s registration was void and that his use infringed Treadwell’s common-law trademark rights, rejecting, as Forbes noted, “Marshak[‘s] conten[tion] that the band’s trademark lapsed and was his for the taking when the original group stopped touring in 1976.” Marshak v. Treadwell, 58 F. Supp. 2d 551, 565–70, 582-84 (D.N.J. 1999).  On appeal, the Third Circuit affirmed, emphasizing that trademark rights can persist where there is continuous commercial exploitation—here, through licensing and royalties—even if public performance activity ebbs and flows.  Marshak v. Treadwell, 240 F.3d 184, 198–203 (3d Cir. 2001).  Subsequent enforcement proceedings underscored how deeply courts may entrench control over a legacy brand once identity ownership is judicially resolved. See, e.g., post-judgment orders.  Further, “the Truth in Music Advertising laws were legislated in 35 of the 50 US states from 2005 to 2020 to stop promoters such as Marshak from assembling new groups of musicians and marketing them as well-known groups such as the Drifters,” as one source noted.   

The notion and idea of legacy being more than simply have the same performers is captured perhaps in a sports analogy used at the Marshak v. Treadwell trial: 

[Treadwell’s Counsel] Every time you see an advertisement from Mr. Marshak’s group that implies he has a direct lineage, you should think about that [i.e., the direct line the Treadwell group had that Marshak’s didn’t]. 

Why…?  Well I think it is like a baseball team.  Mr. Marshak could have his own baseball team if he wants.  That’s fine.  But Mr. Marshak can’t today have a baseball team even with a bunch of free agents who used to play on the Yankees and call his team the “Yankees” and talk about the great heritage of Babe Ruth or Lou Gehrig or anyone else.  The only ones who can do that today and market that today, legitimately  are today’s [1998] Yankees, Paul O’Neil, David Cone, and people like that. 

Is David Cone Whitey Ford?  No. 

Is Paul O’Neil Lou Gehrig? No. 

But there is a direct lineage. 

In this case the direct lineage—and we still have Johnny Moore[, lead singer on classic recording of Under the Boardwalk].  The direct lineage is George and Fayrene Treadwell up to the present.  We are going to show that Mr. Marshak has attempted to misuse the mark to create an association or to imply an association that he doesn’t have and never had. 

[Trial Transcript, Openings 79-80, Marshak v. Treadwell] 

In my opening I showed you some statements from Mr. Marshak’s lead singer, who talked about the music making a difference and who talked about that music as pure and simple.  Now, in the opening I drew an analogy to a baseball team and said there has been a direct lineage…I want to remind you of that analogy because I think that analogy still works 

[Trial Transcript, Closings 782-83, Marshak v. Treadwell] 

The jury, trial court, and then Third Circuit bought that argument.  The courts also noted that trademark abandonment is not proven by nostalgia fatigue. Where goodwill continues to be exploited, even quietly, the law will not declare the brand dead simply because someone else arrived with a cleaner registration file.  Marshak, 240 F.3d at 198–203.   

That holding mattered then. It matters now. And it remains one of the reasons revival-brand litigation in the U.S. is never as simple as “who filed first.” 

Comparative Themes: Commodore and Marshak 

Three important lessons emerge from the Drifters’ history in the Marshak litigation as applied to what is unfolding with Commodore. 

1. Legacy Is Not Self-Executing 

Both disputes demonstrate that historical resonance, standing alone, does not create enforceable rights. In Marshak, legacy mattered only because it was tethered to continuous commercial exploitation recognized by U.S. common law. Marshak, 240 F.3d at 198–99. In the Commodore matter, legacy collides with a European system that prioritizes registration and formal use over historical narrative. See EUIPO overview, supra. 

2. Fragmentation Creates Opportunity and Risk 

In both cases, decades of fragmented ownership and inconsistent stewardship created openings for later actors to claim formal rights. Because of that fragmentation: 

• Trademark validity becomes disputed. Commodore International says some trademarks held by the Italian company were “improperly granted” and is seeking their invalidation in Italian court and potentially at EUIPO.  

• Court systems differ by country. Italian procedures and EU trademark law can make disputes lengthy, costly, and unpredictable, especially if there are overlapping registrations. 

• Trademark holders may have to prove continuous use — in places like the EU, rights can weaken if a mark hasn’t been used for several years, creating opportunities for others to file registrations or for rivals to challenge marks. This is a known issue in European trademark law and comes up in disputes like this. 

The Drifters litigation shows how U.S. courts may unwind those claims if fraud or superior common-law rights are proven. Marshak, 58 F. Supp. 2d at 568–70. The Commodore dispute illustrates how, in Europe, fragmentation may instead reward the party that successfully navigates the registration system first.   

The contrast between Commodore and Marshak is not merely factual; it is philosophical. Common-law rights, residual goodwill, royalty streams, and consumer association all matter. Fraud on the PTO remains the original sin under US law. See Marshak, 58 F. Supp. 2d at 568–70; see also Herb Reed Enterprises, LLC v. Florida Entm’t Mgmt.,736 F.3d 1239, 1248 (9th Cir. 2013) (continued record royalties meant  “that the record supports the district court’s determination that HRE did not abandon ‘The Platters’ mark”); accord Robi v. Reed, 173 F.3d 736 (9th Cir. 1999)(“when Paul Robi left the group, he took no rights to the service mark with him. Rather, the mark remained with the original group. Paul Robi therefore had nothing to assign to Martha Robi.”); Bell v. Streetwise Records, 640 F. Supp. 575, 580 (D. Mass. 1986)(priority of trademark rights established “by bona fide usage… consistent with a ‘present plan of commercial exploitation.’”).  EU trademark law remains skeptical of such historical storytelling.  Registration, use, and procedural vigilance dominate. If legacy owners fail to protect the mark contemporaneously, later registrants are not presumed villains; they are presumed compliant. 

Neither system is wrong. But each punishes a different kind of neglect. 

3. Identity Versus Administration 

Perhaps the sharpest contrast lies here. U.S. trademark law remains willing to privilege identity continuity, i.e. that persistence of goodwill in the minds of consumers, over administrative formalities. See also Robi, 173 F.3d at 739–41. EU law, by contrast, places heavier weight on the orderly administration of registered rights, even where the equities feel unsettled. 

U.S. and EU Strategies for Legacy Brands 

Trademark law has little patience for nostalgia untethered from use. As Marshak made clear, goodwill need not continuously perform on Broadway to survive; sometimes it lives quietly up on the roof, sustained by royalties and licensing long after the touring stops. The mistake is assuming that because the lights are dim, the house is empty. As Commodore is now discovering in Italy, a legacy brand may look like a brick house, but without disciplined legal stewardship, someone else will eventually move in—and start charging admission. 

Legacy-brand disputes often arrive wrapped in the language of authenticity. Courts listen politely—and then ask for evidence.  In Marshak, authenticity mattered only because it aligned with provable commercial continuity. In Commodore, authenticity will matter only if it can be translated into recognized grounds for invalidation under Italian or EU law. Romance alone will not void a registration.  

So, what are the practical steps and warnings we can take from these matters: 

1. Do Not Assume Nostalgia Equals Rights–In both jurisdictions, sentiment is not evidence. Legacy brand owners must document continuous qualifying use, licensing activity, or enforceable goodwill.  Otherwise, they risk losing the race to registration.  Put more starkly, legacy brands require governance, not reverence: If a brand matters, someone must tend it. Dormancy without strategy is not patience; it is surrender.  Still, at least in the United States, legacy brands often survive on nothing more than this magic moment of memory (and recording revenue) just short of abandonment. Use that fleeting moment when goodwill still exists but legal control is may be slipping to solidify one’s position and stop the slide. 

2. U.S.: Invest in Common-Law Proof Early–In the United States, evidence of royalties, licensing agreements, historical promotion, and consumer association can defeat abandonment and even void a registration for fraud. Marshak, 240 F.3d at 198–203. Practitioners should build that record long before litigation. Royalty streams, licensing agreements, controlled exploitation  are not afterthoughts. They are survival tools. Marshak, 240 F.3d at 198–203. What mattered was not the spotlight, but what continued under the boardwalk, that somewhat hidden but undeniable and documented continuing commercial exploitation.   

3. EU: Registration Strategy Is Paramount–In Europe, failure to register, or to oppose promptly, can be fatal. Legacy brand owners should prioritize defensive filings, monitoring, and timely invalidity actions grounded in bad faith or non-use rather than historical identity alone. In Europe, ownership is rarely decided solely on Broadway (or Piccadilly or the Piazza della Scala); it is decided backstage, in contracts and registries.” 

4. Fragmentation Demands Governance–Legacy brands without clear ownership structures invite opportunistic claims. Whether in New Jersey or Milan, courts are less sympathetic when decades of inattention create uncertainty that third parties exploit. 

5. Authenticity Is a Business Argument, and the Law Requires Proof:  Courts may acknowledge authenticity rhetorically, but outcomes turn on statutory criteria: fraud, abandonment, use, and validity. The lesson of both Commodore and Marshak is that brand identity must be legally curated, not merely remembered. Nostalgia is a market force, not a legal doctrine.  It sells products. It does not substitute for use, validity, or truthfulness at the trademark office. 

So, looking at Marshak and Commodore, the settings differ. The doctrinal frameworks differ. The lesson, however, remains stubbornly the same. 

Trademarks are territorial.  Rights in Italy or EU might be distinct from rights in the U.S., UK, or Asia. This means a revived brand might be able to operate in one region but blocked in another due to local registrations. This complicates licensing, product rollouts, and global marketing. Older brands like Commodore are tied to nostalgic communities, but “community” sentiment can diverge from legal ownership. Fans often care about “authenticity” and “history” more than current trademark documentation.  Disputes on such issues, where different groups claim legitimacy, can fracture such “communities” and harm brand revival efforts.  Decisions made purely for legal defensibility (e.g., registering marks broadly) may not align with what such enthusiasts see as “true” to the brand. 

Legacy brands rarely disappear all at once. They fade. They drift. They linger in the background, waiting for someone to decide whether the music is over—or merely quieter.  The legal battles over Commodore trademarks in Italy highlight broader problems for legacy brands — fragmented ownership, overlapping registrations, costly litigation, consumer confusion, and divergent geographic rights. These issues make it difficult for any one party to revitalize a historic brand without navigating complex legal, commercial, and community hurdles. 

The law will not decide that question based on sentiment. It will decide it based on who kept the lights on, who collected the royalties, and who bothered to lock the door. So, keep the magic going and don’t ever skip a beat, and, like the Drifters sang, … 

Let the music play 
Just a little longer 
Just a little longer…  
Make the music play  
Keep this magic going  
Keep those trumpets blowing … 

Don’t ever skip a beat for 
She may slip away… 

Authors: Marie Lussier, Partner, and Elizabeth Varkovetski, Articling Student, Fogler, Rubinoff LLP

Today, roughly 60% of the average Canadian family’s diet consists of prepackaged and processed foods. These are often high in saturated fat, sugars, and sodium and Health Canada has flagged those ingredients as major contributors to obesity, heart disease, and diabetes.
To combat these health risks and empower Canadians to make informed choices, Health Canada published the Regulations Amending the Food and Drug Regulations (Nutrition Symbols, Other Labelling Provisions, Vitamin D and Hydrogenated Fats or Oils) on July 20th, 2022. The transitionary period allotted for in the amendments ends on December 31, 2025 and, at that time, important changes to Canadian food labelling requirements will occur.
In fact, as of January 1, 2026, most prepackaged foods that are high in saturated fat, sugars or sodium will be required to display a front-of-package nutrition symbol (the “Symbol”).

What is needed now?
Manufacturers must now determine whether their products require the black-and-white Symbol and ensure that the Symbol displayed meets the new format requirements.

What will be required over time?
In most cases, the threshold for packaged foods is 15% of the daily value for each relevant nutrient in a serving size.
Despite this, the legislature has provided for some important exemptions, including:

1. Technical exemptions for foods such as those sold at farmers’ markets and raw, single-ingredient meats, poultry and fish, and certain products with very small packaging, such as single serving coffee creamers.

2. Health related exemptions for foods recognized as having health benefits, including whole or cut fruits and vegetables, 2% and whole milk, and eggs, or any combination of exempt “healthy foods”.

3. Practical exemptions for foods where the Symbol would be redundant, such as packages of sugar, honey, maple syrup, table and flavoured salt, butter and other fats and oils.

Additional exemptions include foods with special dietary uses such as meal replacement and nutritional supplements and infant formula and foods.

What will this look like come January 1?
Soon, many grocery items will feature the Symbol with a magnifying glass to “call out” products that are high in saturated fat, sugars, sodium, or any combination of these. It of course remains to be seen whether manufacturers implement the new Symbol in a timely and effective manner, whether it will affect how Canadians shop and eat and how penalties will be meted out for those traders who do not comply.