In This Issue:
Q&A with Mark H. Bloomberg Co-Chair of NYIPLA’s Law Firm Management Committee Is Artificial Intelligence Authorship the Next Big development in Copyright Law? Still difficult to know… By: Giselle Ayala Mateus, Esq.
Spring 2023
Text
Follow NYIPLA on social media!
President's Corner Q&A with Mark H. Bloomberg Co-Chair of NYIPLA’s Law Firm Management Committee Is Artificial Intelligence Authorship the Next Big development in Copyright Law? Still difficult to know… By: Giselle Ayala Mateus, Esq. Notable Trademark Decisions, March 2023 By: Scott Greenberg and Vrudhi Raimugia Historian's Corner Board Minutes NYIPLA Events Welcome New Members Upcoming Programs
HEATHER SCHNEIDER
It is bittersweet to be writing my last President’s Corner of the year – how quickly it has gone by! I want to thank all the Board, the administrative staff, and all of our members for helping to grow the organization this year after our rebound from COVID. I’m proud of all the programming the Association has done this year and wish the best of luck to my successor, Robert Rando. A few highlights of the year are discussed below. I started my tenure at the Annual Meeting in May, where I was honored to present keynote speaker Delaware District Judge Maryellen Norieka. I have known Judge Noreika since I was an associate—often on the opposing sides of Hatch-Waxman cases—and am so pleased to see her accomplishments. That goes to show you should always be civil to opposing counsel, because you never know when they will be a judge someday! All kidding aside, I am proud that the patent bar is well known for its civility and professionalism. Over the summer of 2022, we had a variety of programming, including our annual Hot Topics in Trademark & Copyright Law. That is one of the Association’s flagship events, and this year we were pleased to hear remarks from Hon. Jonathan Hudis, Administrative Trademark Judge, as well as an update from Nick Bartelt of the U.S. Copyright Office. Our very active PTAB Committee also hosted two PTAB Bootcamps, with primers on the milestones in a PTAB trial and a review of PTAB decisions. In September, the Amicus Brief Committee hosted a panel on Hot Topics for Congress and the USPTO: 101 Patent Eligibility and PTAB Director Review. Irena Royzman and Robert Rando hosted a world-class panel including the former Chief Judge of the Federal Circuit Hon. Paul R. Michel; Acting Lead PTAB Judge Hon. Scott Howard; Administrative Patent Judge Hon. Donna Praiss; and former USPTO Director David J. Kappos. We continued programming in October with an event that I’m quite proud of—the IP Transactions Bootcamp. The program ran over three weeks with panels by outside counsel and in-house counsel from NielsenIQ, Mitsubishi Power, Siemens Medical Diagnostics Inc., Canon USA, SABIC, Eli Lilly and Company, IBM Corporation, University of Buffalo, Pacific Northwest National Laboratory, Raytheon, U.S. Bank, Affini-T Therapeutics, Regeneron, and University of Connecticut. That’s a lot of in-house counsel! We appreciate so many people taking the time to teach this bootcamp. With special thanks for Programs Committee Co-Chair David Bomzer for spearheading, we have now graduated two cadres of students, and I expect this will be part of our annual programming roster for years to come. In November, I was pleased to host the One-Day Patent CLE at Willkie Farr & Gallagher LLP. The event was well-attended, with a lot of great energy from being back in person. The Programs Committee and other Committees organized a day of fantastic programming, with a keynote address from PTAB Chief Judge Scott R. Boalick, and panels with in-house counsel from a who’s who of life science, finance, insurance and tech companies—Bristol Meyers Squibb, Alix Partners, Ernst & Young, Becton, Dickinson and Company, Marsh & McLennan, Alvotech, Peloton Interactive, Sandoz Inc., and Google. We were also joined by Kendra Ervin, US DOJ Deputy Chief of IP, Computer Crime & Intellectual Property Section, who addressed trade secret protection, and District Judge Hon. Esther Salas and Magistrate Judge Hon. Douglas Arpert from the District of New Jersey, who discussed the Daniel Anderl Judicial Security and Privacy Act, which the NYIPLA was proud to actively support through its passage last year. As many of you remember, I started the year wanting to focus my Presidency on the life sciences field, given the impact it has had on all of our lives due to the COVID pandemic. In addition to all the great in-house personnel who participated in panels throughout the year, in January I was proud to host a President’s Forum on The Impact of the Inflation Reduction Act and Other Policies on the Pharmaceutical Industry. This event brought together thought leaders to discuss the IRA’s impact on everything from innovation and drug development to drug pricing and investments. Thank you again to the speakers from The Brookings Institution, Bristol Meyers Squibb, Association for Accessible Medicines, and Marathon Asset Management for this insightful discussion. Not long after that, in February, we held the Association’s Annual Biologics and Biosimilars event, this one on Section 112 at the Supreme Court. This event had speakers from Regeneron, Merck & Co., Inc., Eli Lilly and Company, and Johnson & Johnson. Special thanks to Anthony LoCicero, Jeanna Wacker, Michael Johnson and Irena Royzman for helping to organize and moderate these discussions. Finally, in March, I was proud to host the 101st Annual Dinner in Honor of the Federal Judiciary. It was a lovely night, and I don’t think anyone there will ever forget the speech by Eastern District of Texas Chief Judge Rodney Gilstrap upon receiving the Outstanding Public Service award. I just have three words to describe it—Carnac the Magnificent. If you were there, you know. I was also pleased to have as keynote speaker the astounding Dr. Mae Jemison, physician, engineer, astronaut, first African-American woman in space, and leader of the 100 Year Starship non-profit. Not only did she give entertaining and thought-provoking remarks, but she graciously signed autographs and allowed photo opportunities. I was so grateful that my family, co-workers, and clients were able to attend. Thank you all again for a wonderful year, I will never forget it. I encourage all of you to make sure you are registered as members of one or more committees by clicking HERE. Also be sure to follow the NYIPLA on social media at LinkedIn, Twitter, and Facebook.
NYIPLA President's Corner
NYIPLA Calendar
What is one issue that the Law Firm Management Committee is focusing on this year? Mark: The most important issue the Law Firm Management Committee focused on this year is privacy. Law firms increasingly encounter privacy issues in innumerable facets of the business and practice of law. The Committee, together with the Young Lawyers Committee, presented a panel that addressed many of these issues. Whether an attorney is part of a large firm with people dedicated to grappling with these issues, or is in a small firm or sole practice and must sort through this issues largely on his or her own, understanding legal requirements, attorney obligations and potential pitfalls of privacy has become essential to the practice of law today. Why did you pursue a career in intellectual property law? Mark: My “life plan” headed to college was to become an engineer because I was drawn to science and to math. Freshman year I felt that something was missing, and my humanities elective related to law and urban policy. By the end of that year, I decided to do something that involved both engineering and law. Patent law – as it was called then – was the natural fit for me, and it turned out to be the correct choice for me. Do you work with a particular type of intellectual property in your practice? Mark: I have always worked on the patent side, including both litigation and counseling. People often draw a sharp line that separates transactional work and prosecution from litigation and counseling. Although these areas involve different skill sets on a detailed level, all facets of patent law are intertwined, and a high level understanding of all enables an attorney to provide better legal services to clients, which cannot reasonably be achieved by practicing law in a “siloed” approach. Similarly, it is essential to have at least a high level understanding of trade secret law, trademark law and copyright law because issues in these areas of law frequently with patent issues. What do you see as a current challenge facing intellectual property attorneys? Mark: A current challenge facing all attorneys, including intellectual property attorneys, is the use of new technology. On the one hand, it offers tremendous opportunity and efficiency, which is essential to providing legal services efficiently. On the other hand, it provides exactly what it is asked to provide, with no understanding or judgment. As a result, the “big picture” can easily be lost, and the meaning and significance of facts, and how they relate to the law and to client goals may be missed. The challenge is to understand what technology can do – and what it cannot do – so that it is used appropriately. Are there any recent or foreseen changes (in the law or market) that will have an impact on your practice? Mark: The practice of law is continually changing because business is continually changing. People now email and text 24 hours a day and expect instant responses, even for mundane messages. The electronic world has resulted in the creation of many messages that are ill-conceived and incorrect, and should never have been made. Yet everything is saved somewhere, in perpetuity. Notwithstanding the need to wade through this morass of information (and misinformation), clients demand that services be provided quickly and cost effectively – yet wisely and without error. AI is largely touted, and will no doubt have an important role, but it will also lead to a host of new errors based on its shortcomings and people’s misreliance on the “answers” it provides. What advice would you give to someone considering a career in intellectual property law? Mark: Intellectual property can be an interesting and rewarding field of law, but it must be something you really want to do. In the early 1980s, patent law was a peculiar backwater area of law that no one paid much attention to. When I told my law school classmates that’s what I wanted to do, they looked at me the same way someone may look today at a classmate who wants to practice maritime law. With the advent of the Federal Circuit, patent law became “intellectual property” law, and it became the hot new area of law that attracted the attention of law school students, many of whom had no idea what they wanted to do. So, it can provide a great career, but think first before you decide to jump into it. There are many other areas of law the can be equally rewarding, and may align better with your interests.
Q&A with Mark H. Bloomberg Co-Chair of NYIPLA’s Law Firm Management Committee
NYIPLA SPOTLIGHT
Is Artificial Intelligence Authorship the Next Big Development in Copyright Law? Still difficult to know… By: Giselle Ayala Mateus, Esq.
The idea of a machine creating something with minimal human intervention, about 60 years ago, appeared reserved for Sci-Fi movies. However, it is now a reality, and it has a name, “Artificial Intelligence”. The term refers to a technology that “… leverages computers and machines to mimic the problem-solving and decision-making capabilities of the human mind…”.[1] The basis of Artificial Intelligence is machine learning[2] technology. A computer or program is supplied and trained with a huge amount of information so that it becomes capable of producing a result with minimum human direction. Developers of Artificial Intelligence (AI) expect it to become part of almost every aspect of human life, including the development of the sciences and the creation of art. In this context, regulators, researchers, academic institutions, and of course, lawyers around the world have begun efforts to create a framework that could favor a better understanding of this technology. Regarding AI’s involvement in the development of sciences and the creation of art, several legal issues have been raised around the idea of recognizing a copyright interest. The present note will describe the framework upon which those issues are developing. I. The international context In the international context, there is not a consensus as to how to deal with the topic of Artificial Intelligence and Copyright Law.[3] On the one hand, some jurisdictions consider that, first, it is necessary to develop principles that focus on a human-centric understanding of Artificial Intelligence so that the topic is regulated considering security, transparency, and accountability, i.e., copyright law, is one but not the only one or the most pressing issue.[4] On the other hand, copyright law is a domestic matter that each country regulates separately, regardless of the existence of an international framework aimed to provide some certainty as to the rights of authors of creative works.[5] It is interesting to note that the U.K. is one of the few countries that have made express reference to the protection of creative works that are “computer-generated”. From the text of the 1998 Copyright, Designs and Patents Act, commentators state that “[…] the answer to whether copyright can subsist in computer generated works of art is an easy ‘yes’, since the UK test for originality has a low threshold. CDPA 1998 (Section 12(7))[6] provides for a reduced copyright protection term of 50 years for computer generated [works]…”.[7] As for the European Union, no country has yet recognized a copyright interest where AI is the author of a creative work. In 2021, the European Commission formulated a new Coordinated Action Plan for Artificial Intelligence, which mentions the importance of harmonization and improvement of the regulation of IP Rights to open the floor to new discussions. However, there were no specific proposals as to how to deal with the issues related to copyright protection of works created by AI. Therefore, at this point, the international community’s only consensus is that copyright protection is awarded to works created by humans, humans who created the work on their own or with “some” help of technological tools. II. The issues in the United States In the US context, the topic of Artificial Intelligence has been at the core of important discussions. The development of AI technologies has had a tremendous effect and it seems that the US Copyright Office now feels urged to get as much input as possible from different actors, lawyers, researchers, developers, and AI users as well. Some of the key questions that have been raised are as follows[8]: How much human involvement is necessary to obtain copyright protection? Will the U.S. Copyright Office application procedure soon ask applicants to identify and disclaim AI-generated authorship? Will authors always be able to separate human authorship from AI authorship? If the U.S. Copyright Office permits protection for creative works that are AI- generated, who owns the work? Regarding authorship… What is definitive so far, is that US Copyright Law has not recognized copyright to works created exclusively by Artificial Intelligence. However, the subject is unsettled. In June 2022, Stephen Thaler (Thaler), CEO and founder of Imagination Engines, Inc., a company specializing in artificial neural network[9] technology, filed a lawsuit against the United State Copyright Office (USCO), for denying the registration of an AI-generated work. On November 3, 2018, Thaler filed an application[10] to register a two-dimensional artwork (the “Work”) titled “A Recent Entrance to Paradise.”[11] In the application, Thaler indicated the author of the Work as the “Creativity Machine,” and noted it was “Created autonomously by machine.” Then, Thaler listed himself as the “Copyright Claimant” on the basis of being the owner of “Creativity Machine.”[12] Image taken from the Complaint, publicly available at PACER.[13] In response to Thaler’s application, the USCO sent a rejection letter and explained that the Office can only register works which are “the fruit of intellectual labor”.[14] Citing Trade-Mark Cases, 100 U.S. 82 (1879), the USCO stated that a protectable work or authorship must be the result of the “power of the mind”.[15] Therefore, a work that was not created by a human being was not entitled to protection. The USCO also explained that, “Neither the aesthetic appeal or commercial value of a work, nor the amount of time and effort expended to create a work are factors that are considered under the copyright law.”[16] To challenge the USCO’s decision denying registration of the work, on June 2, 2022, Thaler filed a complaint in the District Court for the District of Columbia. According to the Complaint, USCO’s decision, “[…] creates a novel requirement for copyright registration that is contrary to the plain language of the Copyright Act (“Act”), contrary to the statutory purpose of the Act, and contrary to the Constitutional mandate to promote the progress of science.” USCO’s answer was filed on September 26, 2022. Later, on January 10, 2023, Thaler filed a Motion for Summary Judgment. According to Thaler, the USCO decision denying the registration of the above-refenced AI-generated work was not supported by the law. The following fragment was extracted from the text of the Motion. “This policy is unsupported by law. The plain language of the Copyright Act (the “Act”) does not restrict copyright to human-made works, nor does any case law. The USCO mistakenly relies on dicta, predominantly from cases predating even the existence of modern computers, together with inappropriate reliance on a technical report that pre-dates autonomously creative AI. Unfortunately, the USCO’s policy frustrates the purpose of the Act which is to promote the dissemination and creation of works."[17] These affirmations, however, are in contradiction to the rest of Thaler’s argumentation, which does not contest the requirement of human authorship but rather focuses on the fact that, being the work creative and original, it is entitled to copyright protection. “Here, there should be no question that the Work is adequately creative and original. It contains visual elements arranged in a novel way, which merits protection.”[18] As of the date of this note, no decision has been made with respect to the Motion. It is also worth noting the recent decision of the USCO to limit the scope of protection of a graphic novel containing some material created by AI technology. In September 2022, writer Kristina Kashtanova (“Ms. Kashtanova”) filed an application to register her graphic novel entitled “Zarya of the Dawn”. Image from the USCO Letter publicly available.[19] Ms. Kashtanova’s work was initially registered without limitations or comments. Later, the USCO learned that the graphic novel contained material created by AI technology. The agency commenced a cancellation process pursuant to 37 C.F.R. § 201.7(c)(4). Nevertheless, Ms. Kashtanova was afforded an opportunity to explain why her work was entitled to protection, even though she had failed to disclose relevant information, specifically, that she was not the sole author of the entire work. Considering that the graphic novel consisted of text created by Ms. Kashtanova, images generated by an AI service called Midjourney, and a particular selection and arrangement of those materials also authored by Ms. Kashtanova, the USCO found appropriate to limit the scope of copyright protection to exclude non-human authorship. The decision letter the USCO sent to Ms. Kashtanova was comprehensive. First, the USCO referred to the requirement of originality and “authorship”. Regarding “authorship”, the USCO referred to the Supreme Court decision in Burrow-Giles Lithographic Co. v Sarony, 111 US 53 (1884), to explain that creative works will be protected by copyright as long as they are “representatives of original intellectual conceptions of the author,” where the term “author” refers to “he to whom anything owes its origin; originator; maker; one who completes a work of science or literature”.[20] Following the Burrow-Giles Lithographic case, the USCO explained that the illustrations in Ms. Kashtanova’s graphic novel were not entitled to copyright protection because “[…] the images in the Work that were generated by the Midjourney technology are not the product of human authorship.” Then, USCO elaborated: “The process by which a Midjourney user obtains an ultimate satisfactory image through the tool is not the same as that of a human artist, writer, or photographer…”.[21] Then, the USCO analyzed how the Midjourney platform works. In particular, the USCO focused on the fact that the AI platform provides random images based on key words or “prompts” and there is little, if not intervention, by the user in the creative process. Here, the USCO noted: “Users operate Midjourney through ‘prompts,’ which are text commands entered in one of Midjourney’s channels. As Midjourney explains, prompts must start with the text “/imagine” and contain text describing what Midjourney should generate. Users also have the option to include (1) a URL of one or more images to influence the generated output, or (2) parameters directing Midjourney to generate an image in a particular aspect ratio or providing other functional directions. […] It is relevant here that, by its own description, Midjourney does not interpret prompts as specific instructions to create a particular expressive result. Because Midjourney ‘does not understand grammar, sentence structure, or words like humans,” it instead converts words and phrases “into smaller pieces, called tokens, that can be compared to its training data and then used to generate an image.’” With respect to the issue of “authorship,” some commentators and practitioners have taken the position that the use of AI to create a work is the same as using a camera to take a picture. This point was also discussed by the USCO in its decision to limit the scope of protection for Ms. Kashtanova’s graphic novel. Here, the USCO explained that the main point for determining “authorship” is the level of human control over the final work. The USCO explained: “[…] when artists use editing or other assistive tools, they select what visual material to modify, choose which tools to use and what changes to make, and take specific steps to control the final image such that it amounts to the artist’s ‘own original mental conception, to which [they] gave visible form.’”[22] Then, the USCO pointed that: “Because Midjourney starts with randomly generated noise that evolves into a final image, there is no guarantee that a particular prompt will generate any particular visual output. Instead, prompts function closer to suggestions than orders, similar to the situation of a client who hires an artist to create an image with general directions as to its contents.”[23] To provide additional guidance, on March 16, 2023, the USCO published a comment in the Federal Registered entitled “Copyright Registration Guidance: Works Containing Material Generated by Artificial Intelligence”. Here, the Office reaffirmed its current position, that it is a “well-established” policy that “copyright can only protect material that is the product of human creativity”.[24] The USCO explained that the analysis of a work is not focused on the amount of effort involved in the creative process. The key point is to determine whether the work is the result of a mechanical process without any human intervention, as follows: “The answer will depend on the circumstances, particularly how the AI tool operates and how it was used to create the final work.”[25] Fair Use and Copyright Infringement… Another issue that has been discussed in the context of AI-generated works is the use of protected material to train the AI technology. The issue is that AI software is trained by collecting large amounts of data which contains, among others, protected literary, visual, and other artistic works. Here, the first to defend the AI training process are the programmers of AI software, who argue that the use of protected material is transformative, and the output of the AI creative process is non-infringing. For instance, in a written comment before the USPTO in 2019, OpenAI, an AI research laboratory created in San Francisco in late 2015, expressed that instead of making a plain copy of a protected work or affecting accessibility, AI technology goes further, therefore, it is transformative. OpenAI specifically stated: “AI systems go well beyond preserving the content of individual works by learning patterns in their whole training corpus and then using those patterns to generate entirely novel media. Well-constructed AI systems generally do not regenerate, in any nontrivial portion, unaltered data from any particular work in their training corpus.”[26] This comment, however, is contradictory to the information released by OpenAI through GitHub.[27] In a publicly available document, OpenAI admits that its AI software or “model” has flaws. “The model can generate known entities including trademarked logos and copyrighted characters.”[28] Considering that there is no legislation addressing the issues related to AI-generated works, many questions will be probably resolved by the courts. In fact, the litigation of cases involving AI technology has already started. This year, Getty Images (US), Inc. (“Getty”) filed a lawsuit against Stability AI, Inc. On January 13, 2023, Getty filed a 36-page complaint before the United States District Court for the District of Delaware alleging the Defendant’s “[…] brazen infringement of Getty Images’ intellectual property on a staggering scale.”[29] (Emphasis added). According to Getty, “Stability AI has copied more than 12 million photographs from Getty Images’ collection, along with the associated captions and metadata, without permission from or compensation to Getty Images, as part of its efforts to build a competing business.”[30] At this point, Stability AI has not answered. However, the response will definitely be a point of reference as to how legal practitioners understand the issues related to the use AI-trained technology. A second lawsuit was also filed this year. This is a class action instituted by several artists against Stability AI Ltd., a UK corporation, and three US businesses, Stability AI, Inc., Midjourney, Inc., and Deviantart, Inc. The complaint was filed before the United States District Court Northern District of California alleging the unauthorized copy of millions of protected works, specifically, the plaintiffs alleged direct and vicarious copyright infringement, violation of several provisions of the Digital Millennium Copyright Act, among other charges related to the right of publicity. As of the date of this note, the defendants have not yet filed their response. What’s next? The issues of authorship, fair use and copyright infringement are just a few of many others that have arisen with respect to the copyright protection, if any, of AI-generated works. If AI-generated works are entitled to copyright protection, at least to some degree, there will be further questions as to who holds the copyright interest, the programmer, the user of the AI, or the artists whose work were used to train the AI-software. Some companies have opted to create contract-based solutions. For instance, OpenAI Terms of Use state that the user is the owner of the “output” returned by the AI-tool. In other words, the copyright interest in the AI-generated work is owned by the user. However, these Terms of Use might be creating contradictory rights. To illustrate the point, the OpenAI’s website also states: “Other users may also ask similar questions and receive the same response. Responses that are requested by and generated for other users are not considered your Content.”[31] As we noted before, OpenAI has admitted that the AI-output may contain protected material. All facts considered, it is uncertain at this point who owns the copyright in AI-generated works. We are still far from resolving the issues related to the copyright protection of AI-generated works.[32] In the meantime, any controversies arising from AI-generated works need to be assessed on case-by-case basis, an example of that are the two litigations still pending in federal courts. Furthermore, regulators efforts are focused on getting as many perspectives as possible before making further conclusions. Accordingly, the USCO has launched an initiative to examine the issues raised by artificial intelligence technology. Four sessions of hearings have been scheduled and it is expected that it will provide an opportunity for participants to discuss their concerns related to the use and impact of artificial intelligence in the creative fields. [1] IBM. Available at: https://www.ibm.com/topics/artificial-intelligence [2] Artificial Intelligence. Available at: https://en.wikipedia.org/wiki/Artificial_intelligence [3] AI Works Protected by the Laws of the International Situation and Enlightenment. Yuang S. Yantai University Law School. Yantai Shandong China. May 20, 2021. Available at: https://www.atlantis-press.com/proceedings/ichssr-21/125956828 [4] Japan’s Approach to AI Regulation and Its Impact on the 2023 G7 Presidency. Habuka, H. Center for Strategic International Studies. February 14, 2023. Available at: https://www.csis.org/analysis/japans-approach-ai-regulation-and-its-impact-2023-g7-presidency [5] “International copyright law doesn't exist! Each country has its own domestic copyright laws that apply to its own citizens, and also to the use of foreign content when used in one's country. It allows creators and content owners around the world and citizens of many countries to enjoy copyright protection in countries other than their own. […] The Berne Convention is the leading international copyright treaty, administered by the World Intellectual Property Organization (WIPO). It has close to 200 member countries.”. Introduction to International Copyright Law. Copyrightlaws.com. 7 February 2023. Available at: https://www.copyrightlaws.com/introduction-international-copyright-law /#:~:text=International%20copyright%20law%20doesn't,when%20used%20in%20one's%20country. [6] U.K. Legislation. Copyright, Designs and Parents Act, Section 178, Available at: https://www.legislation.gov.uk/ukpga/1988/48/section/12 [7] Who owns the copyright in AI-generated art? Roberts, A and Godement, Alain. Murgitroyd. October 11, 2022. Available at: https://www.lexology.com/library/detail.aspx?g=fd1e9201-c746-42b4-b3c2-348 dfe7ea31d [8] AI and Copyright: A New Kind of Copyright Troll? The Rise of AI in Creative Works. Taylor J. The National Law Review. March 23, 2023. Available at: https://www.natlawreview.com/article/ai-and-copyright-new-kind-copyright-troll-rise-ai-creative-works [9] A neural network is a method in artificial intelligence that teaches computers to process data in a way that is inspired by the human brain. Definition from Amazon Web Services. Available at: https://aws.amazon.com/what-is/neural-network/#:~:text=A%20neural%20network%20is%20a,that% 20resembles%20the%20human%20brain. [10] Thaler v. Perlmutter. District Court, District of Columbia. Case No. 1:22-cv-01564. Pacer Doc. 13-2. Available at: https://storage.courtlistener.com/recap/gov.uscourts.dcd.243956/gov.uscourts.dcd.243956.13.2.pdf [11] Id. Pacer Doc. 1. Available at: https://storage.courtlistener.com/recap/gov.uscourts.dcd.243956/ gov.uscourts.dcd.243956.1.0.pdf [12] Id. [13] Id. [14] Id. Pacer Doc. 13-4. Available at: https://storage.courtlistener.com/recap/gov.uscourts.dcd.243956/ gov.uscourts.dcd.243956.13.4.pdf [15] Id [16] Id. [17] Id. Pacer Doc. 16. Available at: https://storage.courtlistener.com/recap/gov.uscourts.dcd.243956/ gov.uscourts.dcd.243956.16.0.pdf [18] Id. [19] United States Copyright Office. Official Letter Re: Zarya of the Dawn (Registration # VAu001480196). February 21, 2023. Available at: https://www.copyright.gov/docs/zarya-of-the-dawn.pdf [20] Burrow-Giles Lithographic Co. v Sarony,111 U.S. 53, 57–59 (1884). [21] United States Copyright Office. Official Letter Re: Zarya of the Dawn (Registration # VAu001480196). February 21, 2023. Available at: https://www.copyright.gov/docs/zarya-of-the-dawn.pdf [22] Id. [23] Id. [24] Id. [25] Copyright Registration Guidance: Works Containing Material Generated by Artificial Intelligence. Federal Register/Vol. 88, No. 51/ Thursday, March 16, 2023/ Rules and Regulation. Page 16190. Available at: https://www.govinfo.gov/content/pkg/FR-2023-03-16/pdf/2023-05321.pdf [26] Before the United States Patent and Trademark Office - Department of Commerce. Comment Regarding Request for Comments on Intellectual Property Protection for Artificial Intelligence Innovation. Docket No. PTO–C–2019–0038. Comment of OpenAI, LP Addressing Question 3. Available at: https://www.uspto.gov/sites/default/files/documents/OpenAI_RFC-84-FR-58141.pdf [27] GitHub is a code hosting platform for version control and collaboration. It lets you and others work together on projects from anywhere. GitHub, Inc. Available at: https://docs.github.com/en/get-started/quickstart/hello-world [28] DALL·E 2 Preview - Risks and Limitations. OpenAI. Available at: https://github.com/openai/dalle-2-preview/blob/main/system-card.md [29] Getty Images (US), Inc. v. Stability AI, Inc.Delaware District Court. Case No. 1:2023cv00135. Pacer Doc. No. 1. Available at: https://ecf.ded.uscourts.gov/doc1/04315916944 [30] Id. [31] Id. [32] The Scary Truth about AI copyright is nobody knows what will happen next. Vincent J. The Verge. November 15, 2022. Available at: https://www.theverge.com/23444685/generative-ai-copyright-infringement-legal-fair-use-training-data
Notable Trademark Decisions, March 2023 By: Scott Greenberg and Vrudhi Raimugia
Hermes Wins Trial In The “MetaBirkin” NFT Trademark Case The United States District Court for the Southern District of New York issued a final judgment, based on the jury’s verdict, in favor of the plaintiffs Hermès International and Hermès of Paris, Inc. (collectively “Hermès”) in the suit filed by Hermès against Mason Rothschild alleging trademark infringement of Hermès’ “Birkin” handbag trademark by Rothschild’s “MetaBirkin” non-fungible tokens. Hermes International v. Rothschild, 1:22-cv-00384 (S.D.N.Y. 2023). Hermès (the “Plaintiff”) is a luxury fashion brand known, among other things, for designing, producing, and marketing the “iconic” Birkin bag since 1986. Mason Rothschild (the “Defendant”) is a self-described marketing strategist and entrepreneur who launched two Birkin-related projects in 2021. First, around May 2021, Rothschild created a digital image he entitled “Baby Birkin,” which depicted a 40-week old fetus gestating inside a transparent Birkin handbag. Then, in December 2021, Rothschild created a collection of digital images titled “MetaBirkins,” each of which depicted a unique image of a blurry faux-fur-covered Birkin handbag. In total, Rothschild and his associates produced one hundred MetaBirkins, which, through June 2022, sold for over $1.1 million. The Plaintiffs pressed four sets of allegations in their Complaint. First, they claimed that the MetaBirkins non-fungible tokens (“NFTs”) infringed the Plaintiff’s trademarks in the word “Birkin” and in the design and iconography of the handbag. Second, they claimed that the Defendant’s alleged appropriation of the “Birkin” mark diluted and damaged the distinctive quality and goodwill associated with the mark. Third, they claimed that the Defendant’s use of a website domain name -- https://metabirkins.com -- constituted cybersquatting, in that it was confusingly similar to the “Birkin” mark, and therefore harmed and diluted the mark’s distinctiveness and the goodwill associated with it. And fourth, they claimed that the Defendant’s use of its trademarks constituted unfair competition under both federal and state law. In addition to the above claims, the Plaintiff asserted that the Defendant’s project disrupted their efforts to enter the NFT market and hindered its ability to profit in that space from the Birkin bag’s well-known reputation. In a pre-trial opinion denying the parties’ cross-motions for summary judgment, the Court dealt with the following two issues: First, whether the digital images underlying the NFTs produced and sold by the Defendant depicting fur-covered Birkin handbags -- so-called “MetaBirkins” -- should be evaluated under the Rogers v. Grimaldi test for artistic works or the Gruner + Jahr test for general trademark infringement. Second, regardless of the applicable test, whether the MetaBirkins NFT images or related products infringe and/or dilute the Plaintiff’s trademarks pertaining to its Birkin handbag. Regarding the first issue, the District Court asserted that the Second Circuit, among many other Circuits, had long applied a two-tiered approach to trademark infringement claims, stating that trademark infringement in works of “artistic expression” were to be evaluated under the speech-protective test set forth in Rogers v. Grimaldi, 875 F.2d 994, 1000 (2d. Cir. 1989), and all other works, that is, those that were instead “primarily intended to serve a commercial purpose”, were subject to the Gruner + Jahr test. The District Court found that the Rogers test for creative works would apply because the digital images associated with the MetaBirkins NFTs could constitute a form of artistic expression. Regarding the second issue, the District Court held that as long as the Plaintiff’s trademark was used for further plausibly expressive purposes, and not to mislead consumers about the origin of a product or to suggest that the Plaintiff endorsed or is affiliated with it, the First Amendment would protect that use. See Yankee Pub. Inc., 809 F. Supp. at 276. The District Court further elaborated that while the Rogers test was the governing framework for the present case, the Rogers test would not offer the Defendants unfettered license to infringe another’s trademarks and the First Amendment concerns would not insulate titles of artistic works from all Lanham Act claims. The District Court emphasized that works of artistic expression deserved protection, but they are also sold in the commercial marketplace like other more utilitarian products, making the danger of consumer deception a legitimate concern that would warrant some government regulation. The District Court held that in certain instances, the public’s interest in avoiding competitive exploitation or consumer confusion as to the source of a product would outweigh whatever First Amendment concerns may be at stake and an otherwise artistic work would not be entitled to First Amendment protection under that test if the Plaintiff could show that either (1) the use of its trademark in an expressive work was not “artistically relevant” to the underlying work or (2) the trademark was used to “explicitly mislead” the public as to the source or content of the underlying work. The Court highlighted that even where the use of a trademark would bear some artistic relevance to an underlying artistic work, the First Amendment would not protect such use if it would explicitly mislead as to the source or the content of the work. Further, a work would be “explicitly misleading” if it “induced members of the public to believe” that it was created or otherwise authorized by the Plaintiff. The District Court was of the view that this determination must be made, in the first instance, by application of the venerable Polaroid factors,” with the important qualification that the “likelihood of confusion” assessed under these factors “must be particularly compelling to outweigh the First Amendment interest recognized in Rogers.” See Twin Peaks Prods., Inc. v. Publications Int’l, Ltd.,996 F.2d 1366, 1379 (2d Cir. 1993). The District Court clarified that the most important difference between the Rogers consumer confusion inquiry and the Classic consumer confusion test was that consumer confusion under Rogers must be clear and unambiguous to override the weighty First Amendment interests at stake. The District Court stated that the following eight factors set forth in Polaroid Corp v. Polaroid Elecs. Corp, 287 F.2d 492 (2d Cir. 1961) are to be taken into consideration in order to assess whether the Defendant’s use of the Plaintiff’s trademark is explicitly misleading: (1) the strength of Hermès’ mark, with a stronger mark being entitled to more protection; (2) the similarity between Hermès’ “Birkin” mark and the “MetaBirkins” mark; (3) whether the public exhibited actual confusion about Hermès’ affiliation with Rothschild’s MetaBirkins collection; (4) the likelihood that Hermès will “bridge the gap” by moving into the NFT space; (5) the competitive proximity of the products in the marketplace; (6) whether Rothschild exhibited bad faith in using Hermès’ mark; (7) the respective quality of the MetaBirkin and Birkin marks; and, finally, (8) the sophistication of the relevant consumers. However, the District Court stated that there was a genuine factual dispute as to whether the Defendant’s decision to center his work around the Birkin bag stemmed from genuine artistic expression or, rather, from an unlawful intent to cash in on a highly exclusive and uniquely valuable brand name, thereby denying both parties’ summary judgment motions in their entirety. The District Court was of the view that the present case was well suited for determination by the jury, who later held that the Defendant is liable on the claims of trademark infringement, trademark dilution, and cybersquatting brought by the Plaintiffs and that the First Amendment did not bar the Defendant's liability. Based on the jury determination, the District Court entered final judgment in favor of the Plaintiffs in the amount of $133,000. Hermes International v. Rothschild, 1:22-cv-00384 (S.D.N.Y. February 2, 2023 (cross-motions for summary judgment denied); February 14, 2023 (final judgment)). [VR]. New York District Court Dismisses Infringement Claims In MidCap Business Credit's Trademark Suit The United States District Court Southern District of New York (the “District Court”) recently granted a motion to dismiss the complaint in the trademark infringement and unfair competition lawsuit filed by MidCap Business Credit, LLC (the “Plaintiff”) against MidCap Financial Trust (the “Defendant”) for use of the term “MIDCAP”. Midcap Bus. Credit, LLC v. Midcap Fin. Tr., 2023 USPQ2d 205 (S.D.N.Y. 2023). The Plaintiff is a commercial finance company that works with and extends customized asset-based loans to small and mid-size manufacturers, distributors, wholesalers, service companies, and other commercial and industrial businesses. The Plaintiff began offering services using the trade names, marks, domain names, and social media handles “MIDCAP,” “MIDCAP CREDIT,” and “MIDCAP BUSINESS CREDIT” in 2004. In 2015, the Plaintiff filed an application with the United States Patent and Trademark Office (“USPTO”) to register “MIDCAP BUSINESS CREDIT” disclaiming the term “BUSINESS CREDIT” as a Class 36 service mark. The USPTO initially rejected Plaintiff’s application, finding the “MIDCAP BUSINESS CREDIT” mark not registrable because “MIDCAP” was descriptive of at least one feature of Plaintiff’s services. To that, the Plaintiff responded that regardless of whether “MIDCAP” was descriptive of its services, the mark had acquired secondary meaning and submitted supplemental proofs. Eventually, the USPTO registered the mark “MIDCAP BUSINESS CREDIT”. The Plaintiff also filed an application for themark “MIDCAP”, this applicationis still pending. The Defendant, Midcap Financial Trust, began operating in or about September 2008, under the trade name and mark “MIDCAP FINANCIAL”, acting as a commercial lender specializing in providing debt solutions to health care companies, a heavily-regulated subspecialty in the finance industry which Plaintiff did not target. Later on, the company was acquired by Apollo Global Management LLC, who intended to offer asset-based lending to companies of all types under the name “MIDCAP FINANCIAL”. Hence, the Plaintiff claimed that Defendant’s unauthorized use of “confusingly similar” marks was likely to cause confusion specifically with Plaintiff’s federally registered mark “MIDCAP BUSINESS CREDIT” and also with Plaintiff’s “MIDCAP” marks. Initially, the District Court dismissed the complaint for failure to state a claim under Rule 12(b)(6) (dismissal for failure to state a claim upon which relief can be granted), to which, the Plaintiff appealed. Thereafter, the Court of Appeals affirmed dismissal of Plaintiff’s infringement claim based on the unregistered MIDCAP mark. The Court also vacated and remanded the District Court’s dismissal with respect to Plaintiff’s registered mark “MIDCAP FINANCIAL TRUST” because they could not be confident that the District Court’s likelihood-of-confusion analysis adequately considered the Polaroid factors. See Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961). Upon remand, the District Court stated that in order to assess the claims relating to likelihood of confusion, they would apply the following two-prong test: (1) Whether the senior user’s mark is entitled to protection, (2) Whether the junior user’s use of its mark is likely to cause consumers confusion as to the origin or sponsorship of the goods. See Guthrie Healthcare Sys. v. ContextMedia, Inc.,826 F.3d 27, 37 (2d Cir. 2016)(citing Gruner + Jahr USA Publ’g v. Meredith Corp., 991 F.2d 1072, 1074 (2d Cir. 1993)). The District Court, based on the continuous use of the mark “MIDCAP” for more than the required period of five years, stated that the Plaintiff’s mark was entitled to protection under the first prong of the test. To assess the second prong (i.e. probability of confusion), the District Court relied on the non-exclusive multifactor test articulated in Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961)(“the Polaroid factors”) and considered the following: 1. The strength of Plaintiff’s mark; The District Court was of the view that the Plaintiff’s mark was, at best, descriptive because it referred at least to a portion of Plaintiff’s services. The Court also emphasized that one would not need to employ more than a modicum of creativity or abstract thought to understand the nature of Plaintiff’s services or who its target consumers were. Further, because the mark was descriptive, it was “inherently weak” for the purposes of consideration of the Polaroid factors. In addition, the Plaintiff’s evidence did not plausibly allege secondary meaning. Therefore, the District Court held that the Plaintiff’s mark was relatively weak despite its incontestable status, finding that this factor would weigh in favor of Defendant. 2. The similarity of the parties’ marks; The District Court stated that under the anti-dissection principle, the similarity analysis must assess the marks in their entirety without dissecting out any one component. Further, the District Court stated that even though the parties’ marks shared an obvious similarity—the word “MIDCAP”, that was where the similarities ended. The parties’ marks as used differed visually, textually, and aurally. Considering both the plain text and aural characteristics of the marks at issue, the District Court found that “MIDCAP BUSINESS CREDIT” and “MIDCAP FINANCIAL” were not confusingly similar in plain-text appearance or sound, despite sharing one word in common, finding that this factor would also weigh in favor of Defendants. 3. The proximity of the parties’ areas of commerce; The District Court found that the Complaint alleged, and the Defendants did not dispute, that the Defendants had started offering general commercial lending services in direct competition with Plaintiff. Therefore, this factor would weigh in favor of the Plaintiff. 4. The likelihood that Plaintiff will bridge the gap separating their areas of activity; The District Court stated that because the parties were already in direct competition, there was really no gap to bridge. Therefore,this factor would be irrelevant to the analysis. 5. The existence of actual customer confusion; The District Court held that the Plaintiff did not allege any instances of lost sales resulting from the confusion. Further, the Plaintiff’s allegation about a clerical misattribution of the signature line, was insufficient evidence to demonstrate actual consumer confusion, finding that this factor would also weigh in favor of Defendants. 6. Whether Defendant acted in bad faith or was otherwise reprehensible in adopting the mark; The District Court noted that although the Plaintiff claimed that the Defendant’s expansion beyond the healthcare market would be considered as acting in bad faith, the Plaintiff could offer no evidence that Defendants adopted their mark in the first instance with the intent to capitalize on Plaintiff’s reputation and goodwill in the commercial lending industry. Additionally, “MIDCAP FINANCIAL” reflected the characteristics of Defendant’s services, further supporting a claim of good faith. The Court found that this factor would also weigh in favor of Defendants. 7. The quality of Defendants’ product; The District Court stated that as the Plaintiff did not allege that Defendant’s products were inferior nor was there any evidence in the record substantiating the high or low quality of the Defendant's products relative to those of the Plaintiff, this factor would be considered neutral as a matter of law. 8. The sophistication of the relevant consumer group The District Court noted that it was clear that both Plaintiff and Defendants offered their products and services to sophisticated consumers unlikely to be confused by the similarities between the parties’ marks, finding that this factor would also weigh in favor of Defendants. Conclusively, the District Court, in balancing the Polaroid factors, found that two of the three most important factors, strength and similarity, weighed in favor of the Defendants, while proximity in the parties’ areas of commerce weighed in favor of the Plaintiff. Further, the remaining factors were either irrelevant, neutral, or weighed in favor of the Defendants. Accordingly, the District Court opined that the Plaintiff did not demonstrate that Defendants’ use of “MIDCAP FINANCIAL” created a likelihood of confusion among consumers. Therefore, the Distrcit Court, again, dismissed the Plaintiff’s complaint, finding that the Defendant was entitled to judgment as a matter of law. Midcap Bus. Credit, LLC v. Midcap Fin. Tr., 2023 USPQ2d 205 (S.D.N.Y. February 13, 2023).[VR] TTAB Reverses ‘Failure To Function’ Refusal of Lizzo’s Trademark “100% THAT BITCH” Lizzo LLC, the trademark holding company of the popular singer and performer known as Lizzo, filed two applications to register the mark “100% THAT BITCH” in connection with various clothing products. The USPTO Trademark Examining Attorney refused registration in both application under Sections 1, 2 and 45 of the Trademark Act (15 U.S.C. §§ 1051, 1052 and 1127) on the ground that the term in question fails to function as a trademark because it is a common expression widely used by a variety of sources to convey an ordinary, familiar, well-recognized sentiment. In a consolidated precedential decision, the USPTO’s Trademark Trial and Appeal Board reversed both refusals, finding that the record as a whole does not establish that the proposed mark is a common expression in such widespread use that it fails to function as Lizzo LLC’s source-indicating mark for the identified goods. In re Lizzo LLC, 2023 USPQ2d 139 (TTAB 2023). The Board found that, in 2017, the musical artist Lizzo encountered the phrase "I just took a DNA test, turns out I'm 100% that bitch" as an online meme that originated from a third party’s Twitter posting from the same year. The message in the phrase resonated with her, and she used the complete phrase as a lyric in her 2017 song "Truth Hurts," which went on to become a Billboard Number 1 hit single. Lizzo did not originate the phrase, and subsequently granted a writing credit for her song "Truth Hurts" to the phrase’s originator. 2023 USPQ2d 139 at **8, 12 and 37. In 2018, Lizzo began selling clothing bearing the mark “100% THAT BITCH”, and also the name “LIZZO”, both on the surface of the clothing and on online point-of-sale displays for the clothing. 2023 USPQ2d 139 at*9 and FN 12. The Examiner issued the failure to function refusal, asserting that the available evidence shows that “100% THAT BITCH” is a common expression widely used by variety of sources to convey an ordinary, familiar and well-recognized sentiment. In support, the Examiner cited to examples of record of third-party products, including clothing, personal goods and household articles, bearing the phrase “100% THAT BITCH”. 2023 USPQ2d 139 at *16-17. The Examiner also cited to an entry for the phrase “100% THAT BITCH” that was added in 2019 to the website Urban Dictionary, which consists of purported slang terms and their meanings that are added to the website by visitors to the site. 2023 USPQ2d 139 at *10. The Board noted that, in determining whether a given term or phrase is merely informational in nature (and therefore not registrable) or serves a source-indicating function for the trademark claimant (and is therefore registrable), the key factor is the likely perception of the term by the relevant category of consumers, which in the present case, involving clothing identified without restrictions, consists of the general public. This likely perception is determined by looking at the evidence of record showing how the term is used in the marketplace, and assessing if that evidence proves that the claimed mark is actually a common term or phrase that the relevant consumers are accustomed to seeing used by various sources to convey ordinary, familiar, or generally understood concepts or sentiments. “Such widely used messages will be understood as merely conveying the ordinary concept or sentiment normally associated with them, rather than serving any source-indicating function.” 2023 USPQ2d 139 at *5-6 (citing In re Brunetti, 2022 USPQ2d 764 (TTAB 2022)). Regarding the present case, the Board analyzed the examining attorney’s evidence of third-party use of the phrase 100% THAT BITCH and found that all of it was contemporaneous with or subsequent to the 2017 release of Lizzo’s hit single “Truth Hurts”, including the Urban Dictionary entry that was added to that website in June, 2019. Moreover, the Board found that, although there were examples of record of third-party ornamental use of the subject term “100% THAT BITCH” on clothing and other personal goods items, many of these third-party goods and advertisements of record expressly mentioned Lizzo and/or her music. Accordingly, the Board concluded that there was no evidence of use of the term “100% THAT BITCH” prior to 2017 and no indication that the proposed mark already was "widely used, over a long period of time and by a large number of merchandisers". The Board held that this “lessens the weight” that would have otherwise been accorded to the latter evidence toward showing that the subject phrase fails to function as a mark. 2023 USPQ2d 139 at *34-35. As to the fact that Lizzo did not originate the phrase at issue, the Board observed that lyrics from songs are more likely to be attributed to the artists who sing, rap or otherwise utter them, rather than the songwriters, who may be different individuals receiving varying degrees of writing credit. The evidence of record here indicates that Lizzo and her hit song "Truth Hurts" popularized the lyric and elevated 100% THAT BITCH from what may have been a lesser known phrase (the evidence of record only points to use of that phrase from the 2017 meme onward) to more memorable status. 2023 USPQ2d 139 at *37-38. Additionally, the Board found that “the evidence here does not demonstrate that Applicant's proposed mark is used in general parlance or that it conveys a common social, political, patriotic, religious or other informational message such as DRIVE SAFELY, THINK GREEN or WATCH THAT CHILD.” 2023 USPQ2d 139 at *36. The Board therefore reversed the refusal, concluding that the record as a whole did not establish that the proposed mark is a common expression in such widespread use that it fails to function as a mark for the goods identified in the application. However, the Board also noted that, while the evidence of third parties seeking to associate their use of the phrase “100% THAT BITCH” with Lizzo suggests that the phrase is currently associated with Lizzo, thus warranting the reversal of the present refusal to register, “proliferation of unauthorized third-party use risks the mark's loss of strength as an exclusive source indicator, or even abandonment.” 2023 USPQ2d 139 at FN 29. In re Lizzo LLC, 2023 USPQ2d 139 (TTAB February 2, 2023) (precedential). [SG].
Historians Corner
BY: DALE CARLSON*
In the December 2014-January 2015 issue of the NYIPLA Bulletin, I penned a column on Legal Ed 2045 that couldn't have been more right, nor more wrong, in terms of crystal ball predictions. You can find it online at NYIPLA.org under "Resources". The earlier column noted that although the time span until 2045 might seem like an eternity from the vantage point of ten generations of law school students passing through school by then, it accounts for at most a couple of career spans for practitioners as measured back-to-back. Going forward from where we are in 2023, that ten generations has shrunk to only seven generations remaining. 2045 seems so much closer on our Orwellian time travel scale. Where is the Delorean when we need it? My 2015 column noted that some schools were experimenting with distance learning, particularly in the context of non-core courses, as a way to reduce costs. However, no one could predict that a global pandemic would explode five years later to completely upend the technology apple cart, so to speak. My column also noted that the way in which our own legal education laid the foundation for a career in intellectual property suggested that distance learning would be a mixed bag as far as then-existing distance learning technology was concerned. On drawback is that the Socratic method, often perceived as the core of legal education since the 1870s when it was introduced by Harvard's Christopher Columbus Langdell, is not well-suited to delivery over the Internet. Distance learning technology has improved remarkably in the last few years, perhaps largely due to the pandemic. My alma mater Syracuse must have seen it coming. It introduced an "interactive" JD program referred to as JDi in 2019 and graduated its first class in May 2022. In a nutshell, the JDi program lasts three-and-a-half years and requires each student to attend class in Syracuse for one full week in January and August of each year. Those week-long programs are highly interactive and help the students bond with one another. The degree given to the JDi students is indistinguishable from that given to the other graduating students. All JDi students attended the first graduation in person last May. JDi students now account for forty percent of Syracuse's entering class. The success of Syracuse's program hasn't gone unnoticed by other law schools. About a dozen or so are currently seeking approval for a JDi-type program. Innovative changes to law school curriculums notwithstanding, our Association will surely continue to support law students and practitioners through a diverse mix of in person and online continuing educational programs. *Dale Carlson is NYIPLA past president and current historian. His email is dale.carlson@quinnipiac.edu.
"As Time Goes By - Legal Ed 2045 Redux"
The Board meeting took place online via Zoom. In attendance were: Heather Schneider, President, presiding Patrice Jean Rob Isackson (joined at 5:20 pm) Rob Rando Cheryl Wang Abby Struthers Jonathan Berschadsky Jenny Lee Scott Greenberg Chris Loh David Goldberg Diana Santos Linnea Cipriano Feikje van Rein attended in-person from the Association’s executive office. Eric Greenwald, Christine Lauture and Khalil Nobles attended from the Associate Advisory Council. Heather Schneider and Paul Bondor were unable to attend. President Heather Schneider called the meeting to order at 4:37 PM ET. Motion to waive reading of minutes was approved. Motion to approve minutes was passed. Financial Report & New Members. Scott Greenberg reported that financials for this month were similar to last month. Overall assets are down YTD from last. There are more major expenses related to the upcoming Judge’s Dinner this year, such as hotel venue payment. Feikje noted as a victory that our membership dues are up, even though CLE programming is down a bit,. Over the last few years, the organization has offered numerous free CLE programs in the hopes of increasing membership. Scott reported membership is up YTD from last year, though this month is relatively quiet with 6 new members. Composed of a mix of students, retired, and 1 associate active for 3+ years. Motion to waive reading of the names and to admit the new members was passed. Amicus Briefs Committee. David Goldberg reported that the ABC reached out to the Trademark Committee on the Abatron case involving extraterritorial application of the Lanham Act. Of greater interest to the Trademark Committee members is the Jack Daniels parody case where cert petition has been accepted. Issue is whether there’s infringement, dilution, or it’s permissible parody. Currently, waiting on proposals to respond. Legislative Action Committee. Rob Isackson reported there was no meeting last month. Inventor of the Year. Feikje reported on behalf of Paul Bondor that the deadline for submissions has been extended to January 10th. The board discussed ways to expand submission pool. The academic field was suggested as a potential opportunity, such as professors who are up for tenure. Associate Advisory Council. Diana Santos will follow up with a report next meeting. In the meantime, AAC is planning Zoom Out with NYIPLA program. Eric & Christine are planning an in-person event for new lawyers and students. Judge’s Dinner. The board discussed OPS award. Currently, in contact with Mae Jemison, the first African American woman in space and Justice Breyer’s assistant. Heather is considering Judge Atkin if S. Ct. Justice is not available. Jonathan proposed Neil de Grasse Tyson & we have explored in the past. For Linn Inn Alliance, Judge Linn has not confirmed if they’re looking for a different host but Kirkland has been willing. Likely take place from 5-6 pm if suite is available. Previous and Upcoming Programs. Diverse Careers Program PTAB Meeting Jan 6th– Rob Rando reported that it was a great program and very informative. Covered PTAB trial practice with 31 attendees, of which 6 were APJs (2 current & 2 former). Extraterritoriality Revisited: Implications of Abitron for Patent Law President’s Forum event for Jan 19th - Chris Loh reported that program evolved out of a Patent Committee meeting presentation. It was informative content so they decided to make it available to a bigger audience. Zoom Out with NYIPLA Feb 2nd - Eric Greenwald reported that the event will be like last year’s event with virtual networking to chat informally about 2023 goals from 5-6 pm ET moderated by the AAC council members. PTAB Meeting Feb 7th - Rob Rando reported this will be the upcoming monthly meeting. Women in Law Program Feb 15th - Linnea reported that the committee has secured Judge Preska as a speaker and this in-person event will be a career panel also featuring in-house counsel with Susie Hardman moderating the Q&A session. EP – US Patent Practice Considerations Discussion - Jasmine DeCock, our new committee chair who is actually stationed in Germany. The committee is eager to record webinars and generate more content, and this will be the first. Sports Media, Entertainment & Trademark Program - Rob Rando reported that the event is not finalized yet but one idea floated has been exploring cannabis deals. Rob noted the Diverse Careers Program is to be scheduled. NYIPLEF Dinner. The board discussed whether funds were sufficient for adding 3rd scholarship. Money raised so far from the Gala can still cover 2 scholarships as we’ve always done. Revisit at April 2023 board meeting after Judge’s Dinner since winner selection is not until Spring. Committee Reports. Jonathan B. reported that the Patent Law & Practice Committee hosted Frank Cullen C4IP – essentially lobbying group, with former USPTO Director Iancu, judges such as Judge Paul Michelle, etc.
MINUTES OF JANUARY 10, 2023 MEETING OF THE BOARD OF DIRECTORS OF THE NEW YORK INTELLECTUAL PROPERTY LAW ASSOCIATION
MINUTES OF FEBRUARY 14, 2023 MEETING OF THE BOARD OF DIRECTORS OF THE NEW YORK INTELLECTUAL PROPERTY LAW ASSOCIATION
The Board meeting took place online via Zoom. In attendance were: Heather Schneider, President, presiding Patrice Jean Rob Isackson Rob Rando Cheryl Wang Jonathan Berschadsky Jenny Lee Scott Greenberg David Goldberg Linnea Cipriano Feikje van Rein attended in-person from the Association’s executive office. Eric Greenwald, Christine Lauture and Khalil Nobles attended from the Associate Advisory Council. Diana Santos, Chris Loh, Abby Struthers, and Paul Bondor were unable to attend. President Heather Schneider called the meeting to order at 4:04 PM ET. Minutes for the prior January board meeting will be ready for a vote at the next meeting as Secretary Cheryl Wang has been out. Financial Report & New Members. Scott Greenberg reported that the current financials look good. Revenue from Judge’s Dinner is up YTD from last year. Feikje noted that a lot more deposits were made after January 31st, including at least 1 significant deposit amount. Scott reported that there are still expenses to be accounted for, some of which were not applicable last year due prior deposits made, e.g., hotel expenses. Membership has expanded this year, with 15 new members that joined this past month. New members include a good mix of students and practitioners. Among the practitioners, a nice mix of firms and in-house counsel. 60 new members more YTD compared to last year. Motions to waive reading of the names and to admit the new members were passed. Amicus Briefs Committee. David Goldberg reported that there are no new recommendations. Nothing is immediately on the horizon with respect to briefs filed. We previously submitted the In Re Grand Jury brief, which was exciting as we were the only IP association that filed a brief. However, certiorari was dismissed as having been in providentially granted. In addition to the cases on our watchlist, we are still waiting for outcomes for our Andy Warhol Foundation brief, Amgen v. Sanofi, and the Jack Daniels brief that was just submitted. Legislative Action Committee. Rob Isackson reported the LAC’s meeting last month was brief. LAC is watching a number of bills in the House and Senate. There were markup sessions on drug pricing in some patent bills which were supposed to happen on February 9th but there has not been any news. LAC may likely consider putting together a white paper on artificial intelligence and copyright issues. Inventor of the Year. Deadline was mid-February, extended to February 28th. No nominations as of yet. Call to board members for nominees. The board members discussed opportunities to expand the nominations pool and utilizing more personalized methods of outreach. Connor Writing Competition. Deadline is extended to March 6th, with 2 submissions received so far, which is a bit lighter compared to previous years. Discussed efforts of specific board members to expand outreach at various law schools. Judge’s Dinner. Heather and Rob reported that food tasting and menu selection have been completed. Judge Gilstrap has been selected for the OPS award and he sounded excited about the nomination speaking to Judge Stark and Judge Prost. This nomination may be a big draw as he is a prolific judge and has had such an influence on the Patent Bar as a whole. Contract for our keynote speaker, Mae Jemison, has been executed and we are already hearing positive feedback. Feikje reported that the deadline to purchase tables is February 16th and provided an update on firms and purchased tables to date. The board discussed turnout from EDNY and SDNY, and ways to improve. Previous and Upcoming Programs. Feb. 2 Zoom Out with NYIPLA! - Heather Schneider reported it was very meaningful for board members to connect with new members, especially law students. President’s Forum – Jan. 19 DETAILS TO BE ADDED President Schneider noted she was very happy with the way the program went. There were a good number of attendees and the speakers were great. Speakers included a range of perspectives from an individual at a private equity fund discussing investment in biologics, another speaker from more of a policy institute perspective, and others discussing the House legislation. The speakers discussed the Inflation Reduction Act and its impacts on innovation, Scott Greenberg reported event went well and good participation. The panel was moderated by Mitch Stein, practitioners & NYU professor who worked on the amicus brief in that case. PTAB Meeting Feb. 7– Rob Rando reported that it was a great program and very informative. Covered PTAB trial practice with 31 attendees, of which 6 were APJs (2 current & 2 former). Extraterritoriality Revisited: Implications of Abitron for Patent Law March 7 Corporate/ YLC CLE Program & Happy Hour - Diana Santos March 7 PTAB Meeting - Rob Rando March 15 IP Transactions CLE Program - Jonathan Berschadsky Committee Reports. Fashion Law Committee Cheryl Wang reported and Feikje confirmed that Dyan Fingeroa-Ducharme will serve as a new co-chair for the Fashion Law Committee. Feikje noted that Dyan had spoken to the current co-chairs, who have stepped down. Cheryl discussed an idea for a joint Trademark and Fashion Law Committee program which would explore the Jack Daniel’s Supreme Court trademark infringement case, tying it back to the LVMH dog toy infringement cases. Currently, Dyan is helping to identify a 2nd co-chair and the board members noted that she previously held the Secretary position on the board. Giles Rich Diversity Scholarship Award Report things are going smoothly with the website is live and accepting applications .Law Firm Management Committee Paul reported there is an upcoming March 7th program. Media Committee John Manzini proposed bringing on a co-chair to help reinvigorate the committee and the board agreed. Patent Law Committee Jonathan B. reported that the Patent Law & Practice Committee conducted a meeting last Friday but otherwise no major programs coming up. Publications Committee had a meeting a few weeks back and are pending a submissions from President Schneider. Plan was to send winter publication out shortly after and potentially launch another publication timed around the Judge’s Dinner. Sports & Entertainment & Media Committee Rob Rando noted he would get in touch with the chair to confirm but one of the committee chairs has a program plan in mind. Trademark Committee is working on early stages of a couple of programs as mentioned during the Fashion Law Committee report. Another early stage program is one between the Trademark and Copyright Committees to explore the IP issues around social media influencers. Trade Secrets Committee continues to meet monthly and have great discussions. One program idea is to host a Lunch & Learn or CLE credit event to discuss the various types of data, whether it’s trade secret, information security, privacy, client and client financial data.
MINUTES OF MARCH 14, 2023 MEETING OF THE BOARD OF DIRECTORS OF THE NEW YORK INTELLECTUAL PROPERTY LAW ASSOCIATION
The Board meeting took place online via Zoom. In attendance were: Heather Schneider, President, presiding David Goldberg Cheryl Wang Paul Bondor Chris Loh Patrice Jean Abigail Struthers Jenny Lee Scott Greenberg Rob Rando Christine Marie Lauture Eric Greenwald (joined at 4:07 pm) Feikje van Rein attended from the Association’s executive office. Eric Greenwald and Christine Lauture attended from the Associate Advisory Council. Diana Santos, Linnea Cipriano and Khalil Nobles from the AAC were unable to attend. President Heather Schneider called the meeting to order at 4:05 PM ET. The board waived reading of the minutes and approved the minutes for the January and February board meeting, subject to confirmation of attendee list. Inventor of the Year. Ksenia and Chris reported that the Inventor of the Year Committee members have reviewed the nominations and settled on a group of inventors, Bachman and Rajasekaran, a group of doctors who conducted research related to repurposing an older drug that was used to treat African sleeping sickness, to treat a genetic disease. The board members discussed ideas to encourage submissions for next year, such as highlighting past winners. The board voted to approve the Committee’s recommendation for the IOTY award. Financial Report & New Members. Scott Greenberg reported that the current financials look good with great revenue response for the Judge’s Dinner, exceeding the previous year, despite having more expenses compared to last year. Membership numbers are up with 60 new members more YTD compared to last year and 13 new members that joined this past month. New members include a good mix of students, in-house practitioners, firms and 1 PTAB judge. Motions to waive reading of the names and to admit the new members were passed. Amicus Briefs Committee. David Goldberg reported that there are no new recommendations. Still waiting to hear from the Supreme Court on Warhol, Sanofi, and Jack Daniels. Warhol has already been argued but the other two cases will be argued later this month. The ABC has a long watch list of cases potentially of interest for NYIPLA to weigh in on. Legislative Action Committee. Rob Rando reported there is lots of activity in Congress with 5 bills circulating on drug pricing, copyright issues around chatGPT and AI user infringement. Some issues around PTAB practice which are unlikely to move forward. the LAC’s meeting last month was brief. A roundtable with the IPR center and FTC pending information from Chris Israel. A final Data Privacy bill with state preemption provision is with the House. Nominating Committee. Rob Rando reported that the committee has its first call today and invited board members to send an email to Colman Ragan with any nominations in mind. Connor Writing Competition. Jenny Lee reported that the committee received 15 submissions this year and all looked pretty good. The committee has divided up review among its members and will have a second round of review among the committee as a group. Associate Advisory Council. Feikje noted that the ideal deadline for nominating new members is March 31st, in time for the annual meeting. The guidelines for council terms and nominations will be circulated to the board. Judge’s Dinner. 136 tables and 97 honored guests are expected. Heather also provided updates on judicial attendees expected, noting that the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Kathy Vidal would no longer be able to come to NY. Previous and Upcoming Programs. Feb. 15 Leading Ladies of Law Feb 15 Patent Litigation Chris Loh reported the speaker Sam Baxtler discussed selecting a winning jury in patent trials. March 7th Corporate / YLC CLE Program & Happy Hour Heather Schneider reported the event was great with engaging speakers and about 15-18 attendees total, including 1 attendee who is one of the new members admitted this month. March 15th IP Transactions CLE Program March 21st PTAB meeting Rob Rando reported that this month the committee will review and discuss recent PTAB decisions. April 19th Diverse Careers Panel Abby Struthers reported that this event is hosted by the Women in IP Law committee. Lindsey Miller is working on the program and Dale Carson from Quinnipiac will moderate. April 26th US-EPO Liaison Council Abby Struthers reported that Jasmine Decock is putting the program together and the last speaker was finalized today so event marketing will begin. Committee Reports. Copyright Committee – Scott Greenberg reported that the next meeting is tomorrow to discuss potential spring program topics around influencers, the INFORM Act passage which implicates both copyright and trademark matters, issues around AI and copyrightability, and the American Music Fairness Act; Fashion Law Committee - Doug Miro will join Dyan as 2nd co-chair; NYIPLEF - no new updates; if there’s any potential candidates who may want to apply to NYIPLEF scholarship encourage them to apply; discuss in April after seeing how Judges' Dinner goes; Law Firm Management - Paul reported event was held last month; Sports Entertainment Media committee – looking to put program on after summer. Meeting adjourned at around 5 pm ET.
Zoom Out with NYIPLA! By: Associate Advisory Council Have you made a New Year’s resolution to grow your business? Making an effort to commute into the office more, or for the first time? Are you tired of networking over Zoom? Well, we can answer yes to all of these questions, but we promise that our networking event will leave you anything but tired of Zoom! On February 2, 2023, attendees were able to join NYIPLA board members, law firm associates and law students before the 101st Annual Judges’ Dinner for a refreshing and networking event. Associate Advisory Council co-chairs Eric Greenwald, Christine-Marie Lauture, and Khalil Nobles discussed surviving your first year (back) in the office. Attendees will have access to an array of accomplished attorneys, many of whom are willing to share their practice successes from 2022. PTAB Committee Meeting: NYIPLA PTAB Committee to Discuss Scope of IPR Estoppel By: PTAB committee On February 7, 2023, the New York Intellectual Property Law Association (NYIPLA) PTAB Committee explored the current scope of IPR estoppel at the PTAB. In 2022, the Federal Circuit overruled its prior precedent to clarify “that estoppel applies not just to claims and grounds asserted in the petition and instituted for consideration by the Board, but to all grounds not in the IPR but which reasonably could have been included in the petition” in California Institute of Technology v. Broadcom Ltd. (Fed. Cir. Feb. 4, 2022). Apple and Broadcom subsequently filed a petition for a writ of certiorari at the Supreme Court on September 2, 2022. On January 17, 2023, the Supreme Court invited the Solicitor General to file a brief in this case expressing the views of the United States. In this interactive meeting, Brian Murphy, Partner at Haug Partners and former Administrative Patent Judge at the PTAB lead a discussion on The Many Flavors of IPR Estoppel: A Review and Update, including the implications of the CalTech v. Broadcom decision and the current scope of IPR estoppel at the PTAB. Biologics & Biosimilars – Section 112 at the Supreme Court By: Amicus Briefs and Legislative Action Committees On Tuesday, February 7, 2023, NYIPLA held the Biologics & Biosimilars hybrid program at Kramer Levin or by Zoom. Written description and enablement of biotech inventions is currently a hotbed of controversy and has divided the biopharma industry. The industry is divided on two fronts: whether there is a separate written description requirement and whether the full scope of the claimed invention has to be described and enabled. The Supreme Court declined to hear the dispute regarding written description in Juno v. Kite. But the Court has taken up enablement of functionally-defined antibody claims in Amgen v. Sanofi, and is set to address whether the full scope of functional genus claims, i.e., claims to all therapies to a particular biological target, has to be enabled. Both the Amgen and Juno cases have garnered significant attention from patent professionals and various amici regarding the scope of disclosure required for claims to a genus of biological materials defined by their function, not the structure or sequence of the materials. Some argue that it is not possible to describe or enable the full scope of functionally-defined biological materials and that the standard for enablement has to be lowered in order to allow return on investment by allowing control of a therapeutic target based on limited disclosure of biological materials with the requisite function. Others argue that functionally-defined biological materials have to be described and enabled across their scope and that functional genus claims suppress rather than promote innovation. In this installment of NYIPLA’s Biologics & Biosimilars program, the speakers discussed the current state of the law, the industry divide, the issues before the Supreme Court and potential impact on innovation of biologics and on biosimilar litigation. Patent Litigation Committee: Selecting a Winning Jury in Patent Trials By: Patent litigation Committee On February 15, the NYIPLA Patent Litigation Committee was joined by speaker Sam Baxtler, Principal, McKool Smith. Although the jury selection process varies among courts and judges, trial attorneys can employ key tools and strategies to help ensure the right jurors decide their patent case. This includes gathering critical details about the court, the judge and prospective jurors. Recognized as one of the 2022 Lawdragon 500 Leading Litigators in America, Sam shareed some of his secrets for skillfully picking a winning jury, and connecting with jurors. Leading Ladies of Law - Advice from the Top By: Women in IP Committee On February 15, attendees were able to join some leading ladies in law as they discussed their career, how they got here, and lessons they wish they knew as more junior selves. They answered questions from the audience so that they can provide guidance on how everyone can be the start of their own careers. Speakers included Hon. Loretta Preska, Senior Judge, U.S. District Court of the Southern District of New York; Hon. Donna Praiss, Administrative Patent Judge, USPTO; Diana Santos, Senior Attorney, Global Markets, IBM,; and Vi Tran, Associate, Desmarais LLP. Linnea Cipriano, Partner, Goodwin moderated the program. A Primer on Privacy Law and a Discussion of Emerging Issues from the Perspectives of In-House Counsel & Happy Hour Event By: Law Firm Management Committee and Young Lawyers Committee On March 7, the NYIPLA Law Firm Management Committee and Young Lawyers Committee presented a panel discussion on emerging issues in privacy law from the perspectives of in-house counsel.Panelists included Elizabeth Benegas, General Counsel and DPO, Torii; Sarah Cleffi Muhlstock, Senior Legal Editor, Privacy & Data Security, Thomson Reuters Practical Law; and Carrie Parikh, Chief Privacy Officer and Assistant General Counsel, Horizon Blue Cross Blue Shield. The moderator was Chih-wei Wu, Associate, Groombridge, Wu, Baughman & Stone LLP. Following the program, attendees were invited to join a happy hour event at Jane Doe Bar & Restaurant. Open Source Code Usage: What to Know By: IP Transactions Committee On Wednesday, March 15, 2023, the NYIPLA IP Transactions Committee welcomed speakers Phil Odence, General Manager of Black Duck at Synopsys, and Spencer Simon, Partner, Intellectual Property, Willkie, Farr & Gallagher LLP for an overview of considerations to take into account when using open source software and reviewing open source software disclosures, including what steps to take when you run into a potential issue. PTAB Committee Meeting: NYIPLA PTAB Committee to Review Recent PTAB Precedential and Informational Decisions By: ptab Committee On March 21, the New York Intellectual Property Law Association (NYIPLA) PTAB Committee discussed recent PTAB precedential and informational decisions. In this interactive meeting, Charley Macedo, Partner at Amster Rothstein & Ebenstein LLP and PTAB Committee Co-Chair, Chris Lisiewski, Associate at Amster Rothstein & Ebenstein LLP, PTAB Committee Coordinator and Co-Chair of the Inventor of the Year Committee, Keith Barkaus, Senior Counsel at Amster Rothstein & Ebenstein LLP, Yangfan Xu, Associate at Amster Rothstein & Ebenstein LLP, Thomas Hart, Law Clerk at Amster Rothstein & Ebenstein LLP, Jenna Deneault, Counsel at Groombridge, Wu, Baughman & Stone LLP and Co-Chair of the Young Lawyers Committee, and Mike Milea, Associate at Groombridge, Wu, Baughman & Stone LLP lead a discussion on the recent PTAB precedential and informational decisions. The panel reviewed and discussed the following recent decisons: Nested Bean, Inc. v. Big Beings Pty Ltd., Case IPR2020-01234, Paper 42 (Feb. 24, 2023) [AIA, 35 U.S.C. § 112, fifth paragraph – granting rehearing and modifying the Final Written Decision, addressing the treatment of multiple dependent claims]; Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 (Aug. 24, 2022) (designated: Feb. 10, 2023) [AIA, denying institution – holding declaration is entitled to little weight when it contains an exact restatement of the petition’s arguments without any additional supporting evidence or reasoning]; Apple Inc. v. Zipit Wireless, Inc., IPR2021-01124 et al., Paper 14 (Dec. 21, 2022) (designated: Jan. 4, 2023) [AIA – vacating adverse judgments and remanding proceedings to confirm whether Patent Owner is indeed abandoning the contest or to issue a final written decision addressing the patentability of the challenged claims] (sua sponte Director review decision); Patent Quality Assurance, LLC v. VLSI Technology LLC, IPR2021-01229, Paper 102 (Dec. 22, 2022) [AIA – holding Petitioner’s conduct was an abuse of the inter partes review process, sanctioning Petitioner, and determining whether the petition, based only on the record before the Board prior to institution, presents a compelling, meritorious challenge] (sua sponte Director review decision); OpenSky Industries, LLC v. VLSI Technology LLC, IPR2021-01064, Paper 102 (Oct. 4, 2022) [AIA – holding Petitioner’s conduct was an abuse of the inter partes review process, sanctioning Petitioner, and remanding for a determination of whether the petition, based only on the record before the Board prior to institution, presents a compelling, meritorious challenge] (sua sponte Director review decision); NXP USA, Inc. v. Impinj, Inc., IPR2021-01556, Paper 13 (Sept. 7, 2022) [AIA § 314(a), affirming decision denying rehearing – the only appropriate time for a petitioner to offer a stipulation related to Fintiv factor 4 is prior to the Board’s decision on institution] (sua sponte Director review decision); Code200, UAB v. Bright Data, Ltd., IPR2022-00861 & IPR2022-00862, Paper 18 (Aug. 23, 2022) [AIA § 314(a), vacating decision denying institution – analysis of General Plastic factors relating to a second-filed petition when the first-filed petition was not evaluated on the merits] (sua sponte Director review decision); and Boehringer Ingelheim Animal Health USA Inc. v. Kansas State University Research Foundation, PGR2022-00021, Paper 11 (Feb. 24, 2023) [decision vacating the Decision Denying Institution and remanding for further proceedings]. 101st Annual Dinner in Honor of the Federal Judiciary The NYIPLA hosted the 101st Annual Dinner in Honor of the Federal Judiciary on Friday, March 31st, 2023 at the New York Hilton Midtown Hotel. The Association presented the 21st Annual Outstanding Public Service Award to Judge J. Rodney Gilstrap, Chief Judge of the United States District Court of the Eastern District of Texas. This award is given to a current or past member of the Judiciary that has provided an extraordinary level of Public Service. We were also joined by our Keynote Speaker, Dr. Mae Jemison, Physician, Engineer, former NASA astronaut, leader of 100 Year Starship non-profit for space exploration. PTAB Committee Meeting: Examining Faulty Rulemaking Challenges in the Federal Circuit's Recent Apple v. Vidal Decision By: PTAB Committee On April 18, the New York Intellectual Property Law Association (NYIPLA) PTAB Committee discussed faulty rulemaking challenges and the Federal Circuit's recent Apple v. Vidal decision. In this interactive meeting, Ken Adamo, Principal Attorney at the Law Office of KRAdamo and PTAB Committee Co-Chair lead a discussion on the implications of the recent Federal Circuit decision in Apple v. Vidal. Patent Litigation Committee Meeting: Creating a Winning Trial Team By: Patent Litigation Committee On April 19, the NYIPLA Patent Litigation Committee welcomed speakers Kerri-Ann Limbeek, Partner, Desmarais LLP and Deborah Mariottini, Associate, Desmarais LLP, who recently secured a jury verdict of willful infringement for biotech company Ravgen against testing giant LabCorp. The verdict of $272.5 million through trial was the third largest patent verdict of 2022. Kerri-Ann led the case on behalf of Ravgen in parallel with seven other district court litigations against other defendants as well as ten inter partes review proceedings challenging Ravgen’s patents. At trial, four associates (including Deb) conducted their first witness examinations. Kerri-Ann and Deb provideed perspectives on how to create a winning team that is focused on strategy at every level in complex, multi-defendant patent litigations across various jurisdictions and at the Patent Office. NYIPLA Diverse Careers in IP Program By: programs committee Have you ever wondered what opportunities are available in today’s intellectual property marketplace? On April 19, 2023, attendees were able to join our panelists and moderator at the Quinnipiac University School of Law for a panel discussion on how to navigate your career paths in a marketplace with diverse opportunities for intellectual property lawyers. Panelists included Dena M. Castricone, Managing Member at DMC Law LLC; Marina F. Cunningham, Managing Partner at McCormick, Paulding & Huber PLLC; Todd E. Garabedian, Partner at Cantor Colburn LLP; Lisa Moyles, Partner at Womble Bond Dickinson (US) LLP; and Robert Rosasco, Partner at Getz Balich LLC. Dale Carlson from Quinnipiac University School of Law moderated of this program. From Conception to the Patent Office: Women Inventors Across the US and EU By: Women in IP Law and US Bar - EPO Committee On April 26, 2023 - World IP Day - we celebrated the achievements of women inventors, creators, and entrepreneurs. The European Patent Office (EPO) published a study in November 2022 looking at women’s participation in inventive activity across time, country, technology and applicant type. Despite there being more women graduates in STEM fields, the number of women inventors trails behind the number of male inventors. During the panel, we discussed the key findings of this EPO study, provided a comparison within the U.S. Patent & Trademark Office (USPTO), and discussed potential shared solutions to this common transatlantic issue. Panelists provideed their perspective from the patent office, academia and industry. Panelists: Dr. Natalya Bailey, Chief Operating Officer, Curated Innovation Karin Ferriter, Senior Advisor, Office of the Deputy Commissioner for Patents, USPTO Alexis Hatzis, Patent Attorney, IBM Yann Ménière, Chief Economist, European Patent Office Taunya Phillips, Director, Office of Technology Commercialization, University of Kentucky Roberta Romano-Götsch, Chief Sustainability Officer, European Patent Office Moderator: Jasmine De Cock of Fish & Richardson P.C.
NYIPLA Events
Last First Firm/Company/Law School State Membership Alanko Anita United States International Trade Commission Virginia Government Chakkah Shriya Boston University New Jersey Student Chan Yau New York Law School New Jersey Student Cherry Kevin USPTO PTAB Virginia Government Comar Nandini Fordham University School of Law New York Student Dorment Genevieve Willkie Farr & Gallagher LLP New York Associate Eichner Samuel Pillsbury Winthrop Shaw Pittman LLP New York Active 3+ Ficks Julie Pace Law New York Student Ghosh Roshni Wilson Sonsini Goodrich & Rosati New York Active 3+ Imam Maisha Hofstra Law New York Student Jhirad Akiv Western University School of Law New York Student Kim Samuel Columbia Law School New York Student Latuso Stephen Ohlandt, Greeley, Ruggerio & Perle, LLP New York Active 3- Ma Chenyun Columbia Law School New York Student Main Denise Finnegan, Henderson, Farabow, Garrett & Dunner, LLP District of Columbia Active 3+ Matulewicz-Crowley Michael Reichman Jorgensen Lehman & Feldberg LLP New York Active 3+ Mazella Nicholas Fordham University School of Law New York Student Mehta Aseem Bayer Healthcare New Jersey Corporate Melnick Gregory Tutunjian and Bitetto New York Active 3+ Mishra Aditya Seton Hall University Law School New York Student Murphy Lianna Willkie Farr & Gallagher LLP New York Active 3- Pinkard Andrew Wolf, Greenfield & Sacks New York Student Rivera-Santiago Roland Sterne Kessler Goldstein Fox New York Associate Romero Michael Rutgers Law School New York Student Sang-aroonsiri Sinee New York University Law School New York Student Sausaitis Pamela New York Law School New York Student Seddon Jeffrey Desmarais LLP New York Active 3+ Shalvey Shauna Paul, Weiss, Rifkind, Wharton & Garrison New York Active 3+ Underwood Jamie Latham & Watkins LLP District of Columbia Active 3+ Van Bourogndien Karel New York Law School New York Student Vogel Laura GlaxoSmithKline Massachuetts Corporate Wichtowski Ryan Cravath, Swaine & Moore LLP New York Active 3+ Wizeman John Lathrop Gage LLP Connecticut Student Woo Perry Elanco Indiana Corporate
WELCOME NEW MEMBERS
Events and Announcements www.nyipla.org
NYIPLA Publications Committee Editorial Team Committee Co-Chairs Kyle Koemm Margaret Welsh Giselle Ayala Mateus Board Liaison Patrice Jean Committee Members Heather Bowen Dale Carlson Jayson Cohen William Dippert John Kenneth Felter Robert Greenfeld Richard Koehl Kyle Koemm Keith McWha Clint Mehall Suzanna Morales Calvin Wingfield Anna Bank NYIPLA Executive Office 229 Seventh Street, Suite 202. Garden City, NY 11530 Tel: 1.201.461.6603 Email: admin@nyipla.org Web: www.nyipla.org
MAY 05/10/2023 NYIPLA Annual Meeting 05/18/2023 Patent Law & Practice Committee Meeting