In This Issue:
2023 - 2024 New Board Member: Q&A with Jeffrey Coleman By: Jeffrey Coleman Andersen v. Stability AI Ltd. Considering the Viability of a Fair Use Defense… By: Giselle Ayala Mateus, Esq. You Don’t Own Me: A Look at Tattoos, Copyrights, and Likeness. By: Hannah Scott, Quinnipiac University School of Law
Summer 2023
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President's Corner 2023 - 2024 New Board Member: Q&A with Jeffrey Coleman Andersen v. Stability AI Ltd. Considering the Viability of a Fair Use Defense… By: Giselle Ayala Mateus, Esq. You Don’t Own Me: A Look at Tattoos, Copyrights, and Likeness. By: Hannah Scott Notable Trademark Decisions, July 2023 By: Scott Greenberg and Vrudhi Raimugia Historian's Corner Board Minutes NYIPLA Events Welcome New Members Moving Up and Moving On Upcoming Programs
ROBERT RANDO
I am humbled, honored and thrilled to lead the New York Intellectual Property Law Association (NYIPLA) into its 102nd year. The second century’s existence matters. It speaks to the history of a past century of great leaders that have come before me. It guides us with the knowledge that there is a sustained mission that our Association has fulfilled as an active and vital participant in the Intellectual Property Law arena which has endured for over 100 years. From its humble beginnings, when the World was only a few years removed from the end of WWI and fully emerging from the Spanish Flu, and throughout the intervening years to the present, the NYIPLA has been at the forefront of the most significant and impactful issues affecting all aspects of intellectual property and its governing laws. Throughout our history, NYIPLA has maintained a leadership role working closely with members of Congress, the Executive Branch, and the Federal Judiciary to shape and mold the IP laws and how they are administered. Such is especially true with respect to NYIPLA’s active role in the interest of protecting “Authors and Inventors … exclusive Right to their respective Writings and Discoveries.” So, how did I get here. In 1990, during March of my first year of practice as a library mushroom at Skadden, the Partner of the then fledgling patent group called me and said “Hey Rob, there’s this black-tie thing called the Patent Prom at the Waldorf Astoria on Friday. Rent a tux.” I obliged and when I entered the Waldorf it felt surrealistic. As the evening progressed, hosting our honored guest Judge at our table in the last row of the Ballroom under the Balcony, the Partner leaned over and said to me “We need to figure out how to get a table up front by the dais.” Having been awe-struck by the event, the speakers, the venue, etc., and thinking whatever this organization is I want to become a member, my response was: “Forget about that, I want to figure out how to get up at the podium on the dais.” I guess I figured it out. As an active member of NYIPLA, I have been a member of numerous committees including Programs (co-Chair), Amicus, Legislative Action, Patent Litigation, and PTAB, and I have served in several roles as a Board member and as an Officer of the Association. The experiences I gained from these various positions and active participation in NYIPLA has played an integral role in my professional life and has contributed to my continued passion for the law. As I mentioned at our Annual Dinner in May, as a Junior Boomer, I may likely be the last member of my generation to assume the Presidency of NYIPLA. My mission for this year is three-fold. First, the overriding part of my mission for this year is to lay the foundation for building a bridge to the new generations of leaders that will follow me. That will be accomplished by reintroducing some of NYIPLA’s great traditions from the past and continuing those of the present which are uniquely engrained in, and which form the fabric of, NYIPLA; understanding the needs of our younger members; encouraging and establishing new and bold initiatives inspired by the creativity and energy of the next generations. Second, I will encourage our members to continue to build on the egalitarian nature of intellectual property rights that cultivates and recognizes the richness of diversity and has historically empowered individuals from all walks of life to realize the promise of the American Dream. At a time when we have the greatest influx of new immigrants, many if not most of little means, it is extremely important to insure that the spirit and imperative of the Constitution’s Patent and Copyright Clause, imbued by the Founders, to have strong, stable, and sound intellectual property protections and policies, informs all decisions affecting intellectual property rights so that these new immigrants can experience and benefit from that promise as well. Last, but certainly not least, my third priority is to continue to grow our membership. As with all organizations, NYIPLA experienced a decline in membership during the pandemic. While I am pleased to report that our current membership has rebounded nicely (due in no small part to the amazing efforts of my recent predecessors during and after the pandemic), it is important to maintain that momentum and expand our membership for the benefit of the Association as a whole, and quite frankly to benefit those future new members as well. To that end, I along with our current Board of Directors plan to roll out a new-membership incentive program. In the interim, after performing exhaustive high-level stochastic modeling, I have arrived at a mathematical formula that will double the membership right now: every current member can recruit one new member. The current state of affairs arguably weakening IP protection in the U.S., especially Patents and Copyrights, is disconcerting to say the least. The patent system by most accounts is broken. Patent eligibility has become so unpredictable that it now functions in the theater of the absurd when contemplating that which is considered an abstract idea under Section 101 … the manufacture of an automobile part --- REALLY? Administrative challenges to patent validity at the USPTO Patent Trial and Appeals Board have been twisted into a pretzel through “gaming the system,” a confounding continually evolving regulatory system and, at times, seemingly operating contrary to the Congressional purpose and intent of the AIA’s statutory framework. All of which has been keeping the SCOTUS busy since the AIA’s enactment a dozen years ago. Moreover, the resulting instability of the patent system created by the absence of finality and inconsistent judgments across different tribunals on patent validity is unsustainable. Most recently, the Section 112 enablement provision came under attack with respect to genus claims resulting in a SCOTUS decision that will undoubtedly cast the validity of many biotech patents in question and instigate, and insinuate itself into, genus enablement issues across all the arts. Design Patents have a target on their back as well. Congress is considering reducing protection from 14 years to 2.5 years for the aftermarket repair parts segment of the automobile industry with the “Save Money on Auto Repair Transportation (SMART) Act” introduced in March, 2023. Additionally, the applicable obviousness standard is currently headed for an en banc hearing at the Federal Circuit. With the advent of the hot item du jour, generative artificial intelligence, the copyright laws are not fairing much better. Coupled with recent statements by a member of the U.S House of Representatives, during a hearing in the House IP Subcommittee on Copyright and Design Patent Revisions, that “Copyright is not a right to exclude” --- strong, stable, and sound copyright protections are also at risk. However, on a more uplifting note, I will conclude with the following: If you are a currently an active and participating member, thank you for your efforts and please continue to contribute your expertise and to take advantage of the benefits of membership in NYIPLA. Most importantly, continue to share in the uniquely genuine collegiality that we all enjoy as members of the NYIPLA. If you are a future member (i.e., currently a non-member), visit our website to learn more about our numerous annual and monthly programs and events, the opportunities to network with like-minded practitioners and engage with members of the judiciary, and the leadership roles that are available for newly-minted attorneys and seasoned practitioners. And, as always, please feel free to reach out to me for more information about the mutually beneficial advantages of membership in the NYIPLA.
NYIPLA President's Corner
NYIPLA Calendar
How long have you been a member of the NYIPLA? Jeffrey: I joined in 2014. Why did you first join the Association? Jeffrey: My colleagues were members and recommended that I join the Association. It seemed like a great way to meet fellow IP lawyers and get connected in the community. Has your membership in the Association benefited your practice and, if so, how? Jeffrey: Yes! First, it has been a wonderful networking tool. The IP world is small, and you regularly practice with and against a lot of the same firms and attorneys, so it has been great to get to know my fellow practitioners on a more personal level as we get to meet up more regularly at various Association events. Second, the Association has great CLEs that cover a lot of hot and emerging topics in the field, so it has greatly benefitted my understanding of the law, where it might be going, and what the key issues may be going forward. With which committees have you been involved during your membership? Jeffrey: I have been involved in the Patent Law & Practice and Amicus Briefs Committees. I was recently co-chair of the Amicus Briefs Committee from 2022-2023. How did you end up on the Board? Jeffrey: I received a call from former NYIPLA President Colman Ragan. He told me that the Nominating Committee had asked if I would consider being on the Board as Treasurer. Of course I said yes! Why did you want to be on the Board? Jeffrey: After being involved more intimately with NYIPLA through the Amicus Briefs Committee, I knew that I wanted to be more involved with the Association. It has really been a great experience getting to know fellow practitioners and benefiting from the great programming that the Association puts on, so I wanted to be a part of helping to bring those benefits to other attorneys. What is your role on the Board? Jeffrey: Treasurer. Are you active in any other bar associations and, if so, which ones and in what capacity? Jeffrey: The American Bar Association. How does your involvement with the NYIPLA compare with your involvement in the other bar associations? Jeffrey: NYIPLA is, in my opinion, a great association to participate in because it is large enough to affect IP issues in the United States generally (through outreach, amicus briefs, and legislation outreach) but small enough that you can meet people and they will remember you. I am much more involved with NYIPLA than other bar associations. What are your goals for your time on the Board, that is, what do you hope to accomplish? Jeffrey: My goal is to help increase the NYIPLA’s membership and raise awareness (particularly to younger attorneys) of what a great resource the NYIPLA can be. It has really been a tremendous networking and learning experience for me, and one that I think younger attorneys overlook or disregard because of perceived time or monetary commitments. It is incredibly beneficial to get to know your fellow practitioners and get involved in the community, even if just by attending once-a-month committee meetings. Over the longer term, what do you see as the future of the Association? Jeffrey: I think the NYIPLA’s future is bright! The NYIPLA has a strong reputation in the field and has been around for a long time, and I think patents and IP are receiving more attention than in years past. I’m sure that the Association will continue its strong track record of supporting and strengthening IP, putting out high quality programs and CLEs with key thought leaders, and will continue to bring practitioners together. Is there anything else that you wish to share or comment upon? Jeffrey: I would recommend that anyone who is interested should join! But particularly, I would recommend that younger attorneys join. Like all things, a membership in NYIPLA can be whatever you make of it, but I would not be discouraged or dissuaded by preconceived time or monetary commitments. Just joining a committee meeting once per month is a tremendous way to meet new people in the field, get CLE credits, hear from thought leaders, learn about new topics (or topics that may be relevant to your practice) and broaden your experience. I have found involvement in NIPLA to be an incredibly rewarding experience, and I think younger attorneys in particular should take advantage of the great things the Association offers.
2023 - 2024 New Board Member Q&A with Jeffrey Coleman
NYIPLA SPOTLIGHT
Andersen v. Stability AI Ltd. Considering the Viability of a Fair Use Defense… By: Giselle Ayala Mateus, Esq.
Artificial Intelligence (AI) capabilities are increasing rapidly, and so are the legal issues related to the rights of creators, AI-users, and AI-developers. Notably, the U.S. Copyright Office and Congress have been conducting public hearings to gather insights on the best approach to addressing AI issues. These hearings provide a platform for all interested parties to voice their opinions. However, as creators and regulators work to catch up, AI developers have already begun capitalizing on AI-Generative technology. As a result of that, copyright owners from different industries have commenced litigation. For instance, writers and illustrators have already filed complaints in federal court[1] alleging copyright infringement, vicarious copyright infringement, violations of the Digital Millenium Copyright Act, right of publicity violations and unjust enrichment. The complex issues raised by AI technology present new challenges to jurists. The numerous issues related to AI-Generative capabilities and Copyright Law could fill several books or essays. Hence, this note will focus on the viability of a Fair Use defense in the case of AI-Image-Generative software, specifically a complaint filed on January 13, 2023, against three major AI Developers, Stability AI, Deviant Art and Midjourney. 1. Andersen v. Stability AI Ltd., 3:23-cv-00201 Early this year, illustrators Sarah Andersen, Kelly McKernan, and Karla Ortiz, filed a class action in the U.S. District Court for the Northern District of California[2] against Stability AI Ltd., a UK corporation, Stability AI, Inc., a Delaware corporation, Midjourney, INC., a Delaware corporation, and Deviantart, INC., a Delaware corporation (“Anderson Defendants”). According to the complaint, the defendants used the plaintiffs’ works without authorization, as “training materials”[3] to develop a technology capable of storing and copying their original works, and to create unauthorized derivative works. The lawsuit refers to two different uses, the use of their works to train an AI-Generative software called Stable Diffusion and the use of the works to allow AI-Users to create derivative infringing images in response to Text Prompts. 2. Applying The Fair Use Doctrine Fair use is one of most, if not the most, invoked defenses to copyright infringement. Pursuant to Section 107[4] of the Copyright Act, the unauthorized use of a copyrighted work does not constitute an infringement if that use is fair. Uses commonly regarded as fair include the use of a work for purposes of criticism, comment, news reporting, or research. Because fair use is a defense against copyright infringement, the burden of establishing that a use is fair rests with the defendant. A fair use analysis requires courts to apply a four-factor test as set forth in the US Copyright Act.[5] Thus, to determine whether the use of a work is fair courts must consider: The purpose and character of the use (including whether such use is of a commercial nature or is for nonprofit educational purposes) The nature of the copyrighted work The amount and substantiality of the portion used in relation to the copyrighted work as a whole. The effect of the use upon the potential market for or value of the copyrighted work i. The Purpose and Character of the Use Regarding the first factor, the purpose and character of the use, Campbell v Acuff-Rose Music, Inc.[6] is instructive. Following Campbell, the use of a work is fair if it has a non-for-profit or educational purpose, as opposed to a commercial purpose. Notably, Campbell also explains that no factor may not be considered in isolation. Therefore, not all educational uses are fair nor are all commercial uses infringing. In Andersen, the plaintiffs made factual allegations regarding how the defendants used and copied their works, without authorization, to develop a technology capable of storing and copying their original works, and capable of creating unauthorized derivative works. Here, a fair use defense could shield defendants from liability, i.e., to use the plaintiffs’ materials, no prior authorization would be required. However, defending fair use will probably require that the defendants demonstrate a non-commercial purpose for the use of the plaintiff’s works. According to several media outlets, AI-technology has created a millionaire[7] industry that developers have started to exploit without compensating[8] the authors of the materials that are used to train the AI-Generative tool. Can those who profit from the AI capabilities, like the Andersen Defendants argue fair use? It will be interesting to see how the defendants plan to demonstrate such a purpose. Stable Diffusion, the basic software used by the Andersen Defendants to develop their AI technology is an open-source[9] and free-to-use AI-Generative product. This means that anyone can inspect, modify, and enhance it. Does fair use include enhancing open-source software or otherwise promoting the advance of technology? This issue is unlike to be addressed in the Andersen case because the defendants offer monthly subscription plans to individuals and businesses for the use of the AI tool.[10] “DeviantArt offers paid subscriptions to its artist members called “Core Plans.” Custom Core Plans typically range in price from $3.95 to $14.95 per month. To use DreamUp, a member must first subscribe to a Core Plan. A Core Plan subscriber is allowed to use DreamUp for a certain number of Text Prompts per month. For instance, the $9.95 “Pro” level permits 200 DreamUp Text Prompts per month. Core Plan members can purchase additional Text Prompts by purchasing packages of “points.” DeviantArt charges $1 for 80 points, with a minimum purchase of 400 points for $5. […] Midjourney offers a number of paid subscription plans. For instance, its “Standard” plan costs $30 per month and allows unlimited Text Prompts and digital image outputs. For an additional $20 per month, a customer can get “Private Visibility”, allowing users to keep private Text Prompts, images, and digital output. Midjourney also has a “Corporate” plan for $600 per year per person that is “required for employees” of companies with “over $1Million/year [sic] in gross revenue.””[11] The fact that the Andersen Defendants charge a fee for use of their AI-Generative product indicates a commercial use of plaintiffs’ works. If defendants are making money with a tool that was trained using plaintiffs’ copyrighted material, shouldn’t plaintiffs be compensated? This inquiry is similar to that presented in the Warhol litigation where the Supreme Court expressed: “It will not impoverish our world to require AWF to pay Goldsmith a fraction of the proceeds from its reuse of her copyrighted work. Recall, payments like these are incentives for artists to create original works in the first place.”[12] In A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004, 1015 (9th Cir. 2001),the Circuit Court explained that “A commercial use weighs against a finding of fair use.”[13] Here, the Court noted that because of the defendants’ conduct, “Napster users [got] for free something they would ordinarily have to buy.”[14] In the Andersen case,the plaintiffs make a similar allegation that the defendants’ AI-tool allows users to get art for which they usually would pay a commission fee. “When used to produce images from prompts by its users, Stable Diffusion uses the Training Images to produce seemingly new images through a mathematical software process. These “new” images are based entirely on the Training Images and are derivative works of the particular images Stable Diffusion draws from when assembling a given output. Ultimately, it is merely a complex collage tool. […] These resulting derived images compete in the marketplace with the original images. Until now, when a purchaser seeks a new image “in the style” of a given artist, they must pay to commission or license an original image from that artist. Now, those purchasers can use the artist’s works contained in Stable Diffusion along with the artist’s name to generate new works in the artist’s style without compensating the artist at all. […]”[15] Without more context or information, it would be reasonable to conclude that the Andersen Defendants had no other purpose than to profit from the plaintiffs’ copyrighted works. However, this is an open question, particularly since the Andersen Defendants have not yet answered and discovery has not started. An important consideration when analyzing fair use is whether the use is transformative. When it comes to the purpose and character of the use of a protected work, courts consider if the user adds something new to an existing work, a new expression, meaning, or message, rather than merely replacing some of the characteristic features of the original work. The transformative use of a work is a key factor in the fair use analysis but is also a highly litigated topic. In SOFA Entm't, Inc. v. Dodger Prods., Inc.,[16] the Circuit Court recognized as fair the use of a television clip from The Ed Sullivan Show in a musical theater production of Jersey Boys. The Court considered, among other things, “…that […] the use of the clip for its biographical significance was transformative without “usurping whatever demand” there was for the original clip…”[17] An analogous argument by the Anderson Defendants is unpersuasive. In Andersen, the plaintiffs explained that the defendants’ technology uses diffusion to create AI-Generated images. The diffusion technique[18] uses several algorithms to add noise (or random elements) to an original work (the “training material”) and then, reverses the process to generate an image that is substantially similar to the original. Thus, it seems that, rather than transforming the plaintiffs’ works, the defendant’s technology only replaces some elements, to disguise the source of the resulting image after AI users introduce some textual prompts. Some practitioners argue that the fair use analysis should focus on the “training materials” (other artists' works) used to train the AI-Generative technology.[19] But such an argument feels incomplete. For example, it would be worth discussing if using the 'training materials’ used to train the AI-Generative technology will benefit the public. The purpose of training the AI-Generative tool is to allow any layperson to create images that otherwise would require paying a fee to a professional. This scenario is not far from reality. In November 2022, Hollie Mengert an American illustrator, and animator, discovered that a Stable Diffusion user, Ogbogu Kalu, had used 32 of her illustrations to create art “inspired by” the illustrators work, art that appeared as if had been created by Mengert. In an interview, Mr. Kalu explained: “His initial hope was to make a series of comic books, but knew that doing it on his own would take years, even if he had the writing and drawing skills. When he first discovered Midjourney, he got excited and realized that it could work well for his project, and then Stable Diffusion dropped. Unlike Midjourney, Stable Diffusion was entirely free, open-source, and supported powerful creative tools […]”[20] Whether the use of the Andersen Plaintiffs’ works is fair requires a deep understanding of the AI-Generative technology developed by the defendants, how it works, and how it makes decisions. This task is far from easy, particularly since the software at issue, Stable Diffusion, has been modified several times. This presents hurdles for both parties who must explain how the Stable Diffusion software creates output, the role of the training materials, what training materials are used, and whether the AI-generative product is transformative. A fair use analysis also considers the problem of substitution that was highly discussed in the recent Supreme Court decision of Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith.[21] Here the Supreme Court explained that “[…] the use of an original work to achieve a purpose that is the same as, or highly similar to, that of the original work is more likely to substitute […] the work [therefore] […] an overbroad concept of transformative use, one that includes any further purpose, or any different character, would narrow the copyright owner’s exclusive right to create derivative works…”[22] Citing Authors Guild[23] v. Google, Inc.,[24] the Supreme Court explained that the use of a work is fair, transformative, or distinctive if it furthers the goal of copyright, i.e., to promote the incentive to create. Therefore, fair use exists if the use of a work results in a product that complements the original in some form, but not if the resulting product substitutes or supplants the original. In the complaint, the Andersen Plaintiffs allege that “Individuals have used AI Image Products to create works using the names of Plaintiffs and the Class in prompts and passed those works off as original works by the artist whose name was used in the prompt. Such individuals are referred to herein as “Imposters” By using a particular artist’s name, Imposters can cause the AI Image Product to rely more heavily on that artist’s prior works to create images that can pass as original works by that artist. These output images are referred to herein as “Fakes.”’[25] In light of the Supreme Court’s analysis, these allegations, properly substantiated, weigh in favor of a finding of copyright infringement. In conclusion, the first fair use factor weighs against the Andersen Defendants. ii. The nature of the copyrighted work The second factor that fair use considers is related to the character of the original work, specifically how close the work is to the core of copyright protection. This means that creative works are entitled to broader protection than fact-based works. In Dr. Seuss Enters., L.P. v Penguin Books USA, Inc.,[26] the Circuit Court explained this second factor “[it] has not been terribly significant in the overall fair use balancing, [however] the creativity, imagination, and originality embodied in […] [a work] tilts the scale against fair use.”[27] In Andersen the works at issue are multiple images and illustrations that, allegedly, were used to train an AI-Generative technology capable of creating derivative works. The nature of the plaintiffs' works could be considered highly original and close to the core of copyright protection because they embody the artists’ style. However, the defendants could argue that a style cannot be protected, similar to the analysis applicable to fonts.[28] In conclusion, in the overall analysis of fair use, the nature of the works at issue inAndersenmay be a neutral factor. iii. The amount and substantiality of the portion used in relation to the copyrighted work as a whole. The third factor of the fair use analysis considers the amount and substantiality of use of a work. This factor is considered in close connection to the first factor. If only a portion of the original work is used, to further a different purpose from that which motivated the creation of the original work, the use may be fair. However, the use of an entire work is not likely fair. In Authors Guild v Google, Inc.,[29] the court explained that “The clear implication of the third factor is that a finding of fair use is more likely when small amounts, or less important passages, are copied than when the copying is extensive, or encompasses the most important parts of the original…”[30] Notably, in Authors Guild, Google made a digital copy of the entire works owned by plaintiffs, and yet, the Court concluded the use was fair. In that case, the Court explained, “…courts have rejected any categorical rule that a copying of the entirety cannot be a fair use. Complete unchanged copying has repeatedly been found justified as fair use when the copying was reasonably appropriate to achieve the copier's transformative purpose and was done in such a manner that it did not offer a competing substitute for the original… While Google makes an unauthorized digital copy of the entire book, it does not reveal that digital copy to the public…”[31] In Andersen, the plaintiffs stated that the defendants downloaded and acquired copies of billions of copyrighted images without permission to use them as training materials. Arguably the plaintiffs’ works were used in their entirety to develop the AI-Generative technology of the defendants. This weighs against a fair use defense. However, the defendants could argue, as in Authors Guild that they do not reveal those copied works to the public. The plaintiffs could respond that even though the public has no direct access to their works, the output generated by the AI-Generative tool of the defendants creates “competing substitutes for the original”[32]. It is also worth noting that the Andersen Plaintiffs assert that the defendants’ software creates images by making random selections and combining several pre-existing works. The complaint reads: “[the diffusion technique] operates in two phases. The first phase of diffusion is to take an image and progressively add more noise to it in a series of steps. In this case, “noise” refers to […] random fluctuations that we perceive as chaotic and unstructured. […] The second phase is like the first but reversed […] The resulting image is necessarily a derivative work, because it is generated exclusively from a combination of the conditioning data and the latent images, all of which are copies of copyrighted images.”[33]. In Andersen, the plaintiffs refer to a complicated process that involves aleatory selections and the combination of several works. Thus, it is fair to ask, can the plaintiffs establish what portion of their works is incorporated into the output or used to create the output that generates the AI-Generative technology of the defendants? Moreover, even if the works are used in its entirety to train the AI-tool, are they used in its entirety to generate the output?[34] These questions make the fair use analysis in Andersen incredibly complex, and again, without an answer by the defendants or evidence, the fair use analysis is incomplete. Therefore, it is uncertain how the third factor affects the fair use analysis. iv. The effect of the use upon the potential market for or value of the copyrighted work The fourth factor considers the effect the allegedly infringing use has on the potential market for the protected work. This is probably one the most important factors that courts consider when reviewing fair use, but also one of the most complex to argue.When assessing market harm, copyright plaintiffs must define the market for the original work, any impact on potential markets, and the market for derivative works. A relevant market[35] analysis, for purposes of fair use, requires an understanding of who are the market participants, supply and demand in the marketplace, and how unauthorized use of the protected work usurps the market for the original work. The market effect factor is a two-prong analysis that considers, first, the harm already caused upon the existent market for the original work and its derivatives, and second, latent harm on potential markets. Therefore, even if no harm had already occurred a copyright owner may prevent the unauthorized of its work if such a use could have adverse effects on the potential market for the original works and its derivatives.[36] In Nunez v Caribbean Intl. News Corp.,[37] a case involving the misappropriations of several photographs, the Circuit Court explained that statutory language of the Copyright Act requires the courts to “limit its analysis to the effect of the copying on the market for the reproduced photographs.”[38] Then, the Court emphasized, “In fact, to the extent that the copying damages a work's marketability by parodying it or criticizing it, the fair use finding is unaffected.”[39] Applying Nunezto controversies that have arisen from the capabilities of AI-Generative technology, it is more likely than not a finding against fair use. Let’s say an entrepreneur wants to use a cartoon character for a graphic novel.Previously, the entrepreneur would pay an artist to create the cartoon. Now, the entrepreneur only needs access to an AI-Generative tool to try different text prompts until an acceptable image is generated. Nowadays, many blogs invite users to create “amazing” images in minutes. Those blogs express something like this, “Whether you're a professional graphic designer or just a casual user who wants to have some fun generating images, there's an AI image generator out there for you.”[40] Accordingly, the use of AI-Generative technology has made it easier for lay persons to acquire images without paying royalties or commission fees. In Andersen, the plaintiffs allege that as a result of the AI creative capabilities, Impostors have created art that resembles their unique styles, and which is sold on the internet without authorization or compensation. These claims, if properly substantiated, weigh against fair use. The plaintiff will have to demonstrate in court that a potential consumer is likely to substitute their work for an AI-generated image. In response, the defendants could say that AI does not usurp the market for the plaintiffs’ original works because their AI platform services consist in generating images from the specific text prompts of users, in the same way that information is provided to an artist before a piece is created. Even though it is still uncertain which position is stronger, the burden of proof rests on the defendant. In this regard, the courts have been clear stating that todefeat a fair use defense, the plaintiff is only required to show, “that if the challenged use should become widespread, it would adversely affect the potential market for the copyrighted work.”[41] Final Thoughts The capabilities of AI-Generative technology have sparked more questions than answers, and we are only at the tip of the iceberg. Creators are concerned about being replaced by this new technology, while regulators are still grappling with understanding how it works. The courts, on the other hand, can only work within the confines of the law and the evidence presented to them. However, it is worth noting that when the Copyright Act was first established, it did not anticipate the possibility of technological devices independently creating works without significant human involvement. Therefore, it will be up to the courts to decide how the current law applies to AI-Generative tools and the resulting output. Given that the relevant litigation is still in its early stages, the viability of a fair use defense in cases involving AI-Generative technology is speculative. It will likely take years before we receive a definitive answer from the courts. [1] Current AI Copyright Cases. Loving T. Copyright Alliance. March 30, 2023. [2] Andersen v. Stability AI Ltd., 3:23-cv-00201, (N.D. Cal.) [3] Id. PACER Doc. No. 1. Plaintiff’s Complaint. Available at:https://www.courtlistener.com/docket/66732129/andersen-v-stability-ai-ltd/ [4] 17 U.S.C. § 107. [5] 17 U.S.C. § 107. [6] Campbell v Acuff-Rose Music, Inc., 510 US 569 (1994) [7] Stability AI, the startup behind Stable Diffusion, raises $101M. Wiggers, K. TechCrunch+. October 17, 2022. Available at: https://techcrunch.com/2022/10/17/stability-ai-the-startup-behind-stable-diffusion-raises-101m/ [8] 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 [9] What is Open Source? Available at:https://opensource.com/ [10] Midjourney vs. DALL-E 2 vs. Stable Diffusion. Which AI Image Generator Is Best for Marketers? Hawley, M. CMSWire. June 7, 2023. Available at:https://www.cmswire.com/digital-marketing/midjourney-vs-dall-e-2-vs-stable-diffusion-which-ai-image-generator-is-best-for-marketers/ [11] Andersen v. Stability AI Ltd., 3:23-cv-00201, (N.D. Cal.). PACER Doc. No. 1. Plaintiff’s Complaint. Available at:https://www.courtlistener.com/docket/66732129/andersen-v-stability-ai-ltd/ [12] Andy Warhol Found. for the Visual Arts, Inc. v Goldsmith, ___US___ , 143 S Ct 1258, 1261 (2023) [13] A&M Records v Napster, Inc., 239 F3d 1004, 1015 (9th Cir 2001) [14] Id. [15] Andersen v. Stability AI Ltd., 3:23-cv-00201, (N.D. Cal.). PACER Doc. No. 1. Plaintiff’s Complaint. Available at:https://www.courtlistener.com/docket/66732129/andersen-v-stability-ai-ltd/ [16] SOFA Entm't, Inc. v. Dodger Prods., Inc., 709 F.3d 1273, 1278 (9th Cir. 2013) [17] https://journals.tulane.edu/TIP/article/view/2623 [18] Andersen v. Stability AI Ltd., 3:23-cv-00201, (N.D. Cal.). PACER Doc. No. 1. Plaintiff’s Complaint. Available at:https://www.courtlistener.com/docket/66732129/andersen-v-stability-ai-ltd/ [19] Stable Diffusion and Copyright: Wading Into Uncharted Legal Waters. Newman, B. Available at: https://www.linkedin.com/ pulse/stable-diffusion-copyright-wading-uncharted-legal-waters-newman#:~:text=Stable%20Diffusion%20is%20a%20transformational,way%20 than%20they%20were%20intended. [20] Invasive Diffusion: How one unwilling illustrator found herself turned into an AI model. Baio, A. November 1, 2022.https://waxy.org/2022/11/invasive-diffusion-how-one-unwilling-illustrator-found-herself-turned-into-an-ai-model/ [21] Andy Warhol Found. for the Visual Arts, Inc. v Goldsmith, ___US___ , 143 S Ct 1258 [22] Andy Warhol Found. for the Visual Arts, Inc. v Goldsmith, ___US___ , 143 S Ct 1258, 1261 (2023) [23] Authors Guild v. Google, Inc., 804 F. 3d 202, 214 (CA2 2015) [24] “The more the appropriator is using the copied material for new, transformative purposes, the more it serves copyright’s goal of enriching public knowledge and the less likely it is that the appropriation will serve as a substitute for the original or its plausible derivatives, shrinking the protected market opportunities of the copyrighted work.”Andy Warhol Found. for the Visual Arts, Inc. v Goldsmith, ___US___ , ___, 143 S Ct 1258, 1276 (2023) [25] Andersen v. Stability AI Ltd., 3:23-cv-00201, (N.D. Cal.). PACER Doc. No. 1. Plaintiff’s Complaint. Available at:https://www.courtlistener.com/docket/66732129/andersen-v-stability-ai-ltd/ [26] Dr. Seuss Enters., L.P. v Penguin Books USA, Inc.,109 F3d 1394, 1402 (9th Cir 1997). [27] Id. [28] The Office cannot register a claim to copyright in typeface or mere variations of typographic ornamentation or lettering, regardless of whether the typeface is commonly used or unique. Works Not Protected by Copyright. US Copyright Office. Circular 33. Available at: https://www.copyright.gov/circs/circ33.pdf [29] Authors Guild v Google, Inc.,804 F3d 202, 206 (2d Cir. 2015). [30] Id.at 206. [31] Id.at 221. [32] Applying the language used by the Court in Authors Guild v Google, Inc., 804 F3d 202, 206 (2d Cir 2015). [33] Andersen v. Stability AI Ltd., 3:23-cv-00201, (N.D. Cal.). PACER Doc. No. 1. Plaintiff’s Complaint. Available at: https://www.courtlistener.com/docket/66732129/andersen-v-stability-ai-ltd/ [34] In recent article the author makes proposes the following analysis: “If the model is trained on many millions of images and used to generate novel pictures, it’s extremely unlikely that this constitutes copyright infringement.”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 [35] Relevant Market. Burnier da Silveira, P. Concurrences. Available at:https://www.concurrences.com/en/dictionary/Relevant-market [36] Transformative Use Vs. Market Impact: Why the Fourth Fair Use Factor Should Not Be Supplanted by Transformative Use As The Most Important Element In a Fair Use Analysis. Kimbrough, E. University of Alabama School of Law. 2012. Available at:https://www.law.ua.edu/pubs/lrarticles/Volume%2063/Issue%203/Kimbrough.pdf [37] Nunez v Caribbean Intl. News Corp., 235 F3d 18 (1st Cir 2000) [38] Id. at 20. [39] Id. [40] 13 Best AI Image Generators You Can Try in 2023. Fotor.com. Available at:https://www.fotor.com/blog/best-ai-image-generators/ [41] VHT, Inc. v. Zillow Grp., Inc., 918 F.3d 723, 744 (9th Cir. 2019) (citing Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 568 (1985)).
You Don’t Own Me: A Look at Tattoos, Copyrights, and Likeness. By: Hannah Scott. Quinnipiac University School of Law
Three in ten people have tattoos.[1] Some of those people, like athletes and other celebrities, profit from licensing their likeness.[2] Should a tattoo artist prevail on a claim of copyright infringement when the licensed likeness of a tattooed person includes a tattoo done by the artist without the artists express permission? This is a question dealt with by two different courts that resulted in two different decisions in Solid Oak Sketches, LLC v. 2K Games, Inc. and Alexander v. Take-Two Interactive, Inc.[3] The focus of this paper is on tattoos on the body as opposed to the design of the artwork. There are interesting questions about what copyright protection a design may have and whether a tattoo on a body is a derivative work.[4] Such questions are beyond the scope of this paper, however. This paper takes the view that tattoos as applied to the body and incorporated into a person’s likeness should receive copyright protection. However, it is difficult to reconcile a tattoo artist’s artistic expression with the bodily autonomy of their canvas. Both principles are worthy of protection and given how little case law there is on this important issue, it merits discussion. Part One of this paper will provide a brief background on tattoos and how general principles of intellectual property apply to the art form. Part Two will be an overview of some of the caselaw that exists around tattoos and copyright infringement, including Solid Oak. Part Three will look at Alexander and what about that case was wrongly decided. Part Four gives consideration to what lies ahead. I. Background A. Tattoo History Tattoos have had various, expressive meanings throughout history.[5] The diversity of meaning attached to tattoos matched the diversity of cultures that created them.[6] Tattoos were originally ornamental, served ceremonial or religious functions, served therapeutic purposes, denoted high rank or social status, or indicated status as a prisoner or slave.[7] From ancient times through most of the nineteenth century,[8] people created tattoos using various methods to break the skin and deposit it in a way that healed and was permanent.[9] It was not until 1891 when the first tattoo machine was invented in New York that tattooing fundamentally changed.[10] From this development comes the creation of “flash,” or pre-drawn images in binders or on walls in tattoo shops meant to give ideas to customers.[11] Tattooers would, and still do, buy sheets of flash and ink those images onto customers.[12] Artists create flash with the intention that tattooers will ink the images on endless numbers of people over time.[13] In this spirit, tattooers of the early twentieth century generally considered themselves tradesmen who cared about volume rather than artistic expression for its own sake.[14] Standardized images served the needs of tattooers and customers, who were often mainly interested in communicating group membership or commemorating milestones.[15] Shops made their money by inking flash on as many customers as they could.[16] The 1960s brought another fundamental shift in tattooing.[17] This evolution of tattoo industry culture resulted in an expansion of ideas from flash pages to “bespoke designs for individual clients, customized for their tastes and their bodies.”[18] Creating a custom tattoo is a collaborative process between artist and client.[19] Customers often come to an artist with some concept of what they would like in a tattoo. The artist then incorporates the customer’s ideas with their own style, preferences, and notions to create the final product. B. Applying Intellectual Property Principles to Tattoos A deceptively thorny question is whether tattoos have copyright protection. The Copyright Office has accepted registrations for tattoos since at least 1979,[20] but the first acknowledgement by a court in a written opinion that tattoos are subject to copyright protection was in Alexander, a case from 2020.[21] Up until this point, the question has mostly been an academic one with arguments for and against copyright protection for tattoos.[22] Based on the plain meaning of the Copyright Act, the law protects tattoos. Copyright protection extends to “original works of authorship fixed in any tangible medium of expression.”[23] Tattoos meet all those requirements. The bar for originality is low, so even the most unoriginal tattoo designs have copyright protection. A “modicum of creativity” and independent creation are all that are required for a work to be original.[24] As for fixation, tattoos are, by definition, permanent additions to the skin.[25] Some scholars argue that tattoos do not meet the fixation requirement because the human body is a useful article or because human existence is transient.[26] Art applied to a useful article is protected.[27] Any piece of artwork could be destroyed at any moment, but just because we know that a tattooed body will not be around forever does not mean that tattoo has not been fixed to a tangible medium. Despite easily meeting the originality and fixation requirements, the nature of tattoos and the process of their creation raise important questions of authorship and ownership. These concepts are not easily separable when it comes to tattoos.[28] For example, copyright vests in the author or authors of a work,[29] but collaboration between artist and client is part of the tattoo creation process.[30] As such, tattoos are not often a true solely authored work.[31] Neither do tattoos cleanly fit the definition of a jointly authored work. A jointly authored work is “a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole.”[32] While this statement applies broadly to the tattoo design process, the reality of the tattoo industry does not match this legal reality. Generally, clients do not contribute aspects of the final tattoo design that rise to the level of being copyrightable on their own.[33] At the same time, most courts take the view that each contribution to a jointly authored work be independently copyrightable.[34] This gives each co-author the right to use or license the work.[35] However, it is not practical to say that the tattooed person cannot use or license the work if it is incorporated into their likeness. Tattoos are also not works made for hire. The relationship that exists between a tattoo artist and the shop where they work, and between the artist and the customer, do not fit the established definition of “work made for hire.”[36] Tattoos are not independent contractor work because they do not fall into one of the nine enumerated categories in the Copyright Act.[37] Additionally, customers and tattoo artists typically do not enter into a written agreement that sets forth an understanding that the tattoo is a work made for hire.[38] The process of creating a tattoo is more fluid and flexible than copyright law allows. Unsatisfying answers about authorship lead to unsatisfying answers about ownership. Tattoos are a piece of artwork on a person’s body. That raises issues about public display, reproduction, and bodily autonomy that are not raised by a painting or a piece of music. For example, the owner of a copyright has the exclusive right to reproduce, distribute, display, and create derivatives of the copyrighted work,[39] but ownership of a copyright is distinct from ownership of any “material object in which the work is embodied.”[40] Even though the author of a tattoo owns the copyright in it, “the owner of the copyright may not be the person whose body is adorned with the tattoo.”[41] The most practical solution in the current legal framework is to treat tattoos as solely authored works, control of which is given to the tattooed person via an implied license.[42] Tattoo artists uniformly acknowledge that control of an image passes to the client once the tattoo is created.[43] Most tattoo artists do not take issue with uses of the tattoo as applied to the body once the client has control of the image.[44] As the tattoo copyright cases law suggests, uses of the tattoo design “as a work disconnected from the body” are treated with greater skepticism, however.[45] II. Tattoo Copyright Caselaw There have only been a handful of cases about tattoos and copyright infringement, and only two of them have resulted in written opinions.[46] The fact that there is so little case law, and that was does exist is contradictory, means that any new cases have an outsize impact on the development of this corner of copyright law. Tattoo artists are right to care about someone else profiting from their work, but there also needs to be space to allow for the bodily autonomy of the tattooed person. A. Reed v. Nike The first instance of litigation about copyright infringement of a tattoo occurred in 2005.[47] Detroit Pistons forward, Rasheed Wallace, appeared in a Nike commercial that included a digital recreation of one of his tattoos and Wallace explaining its significance.[48] Matthew Reed, the artist who inked Wallace’s tattoo, saw the commercial and filed for copyright registration in the design.[49] Reed then filed a lawsuit against the advertising agency behind the commercial for copyright infringement, alleging that the digital recreation of that tattoo amounted to legally actionable copying.[50] In a break with the norms of the tattoo industry,[51] Reed also named Wallace as a defendant and sued for contributory infringement.[52] The case was eventually dismissed, with both parties stipulating to the dismissal.[53] Even though as a professional basketball player Wallace’s tattooed arm appeared in various forms of media,[54] Reed only took issue with the use of the tattoo when it was the focus of a commercial and Nike, not Wallace, used his work.[55] B. Whitmill v. Warner Bros. Entertainment Inc. In 2003, Victor Whitmill created Mike Tyson’s distinctive tribal face tattoo.[56] Tyson signed a release stating that all of the artwork and drawings of the tattoo are the ownership of Mr. Whitmill, and that any photographs of the tattoo are his as well.[57] In The Hangover, Part II, released by Warner Bros., one of the characters receives a face tattoo that is nearly an exact replica of the one on Mike Tyson’s face.[58] The character’s tattooed face also featured prominently in the promotional posters for the film.[59] Whitmill sued Warner Bros. for copyright infringement.[60] The parties eventually settled, but the judge who authorized the settlement offered an oral opinion in which she acknowledged the copyrightability of tattoos.[61] This case was the first judicial acknowledgement of tattoos as applied to the body being subject to copyright protection. C. Escobedo v. THQ, Inc. Tattoo artist Christopher Escobedo tattooed the torso of mixed martial artist Carlos Condit in 2009.[62] In 2012, THQ, Inc. released the video game UFC Undisputed 3, in which Condit and his tattoos appeared as a character.[63] Condit’s character appeared shirtless, with the tattoo design visible and identifiable.[64] Escobedo sued THQ, Inc., claiming THQ infringed his copyright by creating a copy of the tattoos for use in the game,[65] but the case was ultimately settled out of court.[66] This case can be seen as a harbinger of issues to come. D. Solid Oak Sketches, LLC v. 2K Games, Inc. Until this case, no copyright infringement suit involving tattoos had made it this far through the litigation process. Take-Two Interactive Software, Inc. is the parent company of 2K Games, Inc., which develops the “NBA 2K” series of video games.[67] The video games include lifelike depictions of NBA players Eric Bledsoe, LeBron James, and Kenyon Martin, all of whom have tattoos.[68] Solid Oak Sketches held an exclusive license to each of the tattoos at issue, but not any publicity or trademark rights to the players’ likenesses.[69] In this arrangement, the tattoos as applied to players’ bodies were separate from their likenesses. The players gave the NBA the right to license their likenesses to a third party, and the NBA granted such a license to Take-Two.[70] Solid Oak sued for copyright infringement, alleging that Take-Two “infringed its copyrights by publicly displaying works for which [it] owns the copyright” in three versions of “NBA 2K.”[71] The judge granted Take-Two’s motion for summary judgment, finding its use of the tattoos to bede minimis.[72] The tattoos were an insignificant part of gameplay, appeared fleetingly and indistinctly, and were only 4.4% to 10.9% of the size they appear in real life.[73] The judge also granted Take-Two judgment as a matter of law on its fair use counterclaim and issued a declaratory judgment that Take-Two’s use of the tattoo in the video games constituted fair use.[74] In addition to the important fair use finding, this supports the idea that tattoos could become part of a person’s likeness. That was something to which all the tattoo artists stipulated,[75] so it is currently untested whether a similar result could happen without such a stipulation. III. Alexander v. Take-Two This is the first case involving tattoos and copyright that went to trial.[76] Despite the similarities between Alexander and Solid Oak, the cases had opposite outcomes.[77] A. The Case Catherine Alexander is a tattoo artist who “inked six tattoos on WWE professional wrestler Randy Orton between 2002 and 2008.”[78] Take-Two is the creator of the “WWE 2K” video games, in addition to the “NBA 2K” games.[79] As in the NBA video game, the WWE game is meant to be a “realistic depiction of WWE wrestling” and therefore replicates the likenesses of the athletes.[80] Orton gave the WWE a license to use his likeness, which then gave such a license to Take-Two.[81] In Take-Two’s video game, Alexander’s tattoo designs were visible on Orton’s character.[82] Alexander filed suit against Take-Two for copyright infringement.[83] Alexander moved for partial summary judgment on the issue of copying.[84] Take-Two moved for summary judgment asserting three affirmative defenses: implied license, fair use, and de minimis use.[85] The court granted Alexander’s motion and denied Take-Two’s motion.[86] In the order, the court affirmed that Alexander had a valid copyright in the tattoos and initially left the implied license, fair use, and de minimis defenses for the jury to decide.[87] Take-Two was not allowed to assert the de minimis defense at trial, however.[88] Before trial, the court modified the previous ruling to note that “as a matter of law, the de minimis defense is not viable in this case.”[89] It is implied in the initial ruling and clarified in the modification that the Seventh Circuit does not recognize de minimis use as an affirmative defense to copyright infringement.[90] The defense that was key to Take-Two prevailing in the Second Circuit was not available to Take-Two in the Seventh Circuit. Implied license was also not available to Take-Two because the jury was not given instructions on it, even though both parties requested it.[91] That left only fair use, a defense which only months earlier in a nearly identical case a court said was valid.[92] Even though fair use is a mixed question of law and fact,[93] the jury was given instructions on fair use as a question of law with no guidance other than the language of the Copyright Act.[94] The jury found for Alexander and awarded her $3,750 in damages.[95] B. Analysis a. Copyright In the Seventh Circuit, all the plaintiff must show for copyright infringement is the defendant’s use of the plaintiff’s property.[96] “The burden is on the alleged infringer to show that the use was authorized – not on the plaintiff to show that it was not.”[97] Compare this to the Second Circuit, where the plaintiff must prove legally actionable copying.[98] In Solid Oak, it was the burden of Solid Oak as the plaintiff in the Second Circuit to show Take-Two had engaged in copying that was more than de minimis. Take-Two was able to assert several affirmative defenses to rebut Solid Oak’s arguments. In Alexander, Take-Two was hindered from asserting those same affirmative defenses due to Seventh Circuit precedent and poor jury instructions.[99] b. Implied License An implied license “may be granted orally or may even be implied from conduct.”[100] At the heart of an implied license determination is intent.[101] As it relates to tattoos, the major inquiry is whether “the licensor intended that the licensee exploit one or more of the exclusive rights of the copyright owner.”[102] The dispute in Alexander surrounded Alexander’s intent and scope of the implied license.[103] Alexander argued that Take-Two was “conflating Orton’s rights to his likeness and right to appear in media with an implied license to use her copyrights in unlimited and other commercial ways, such as video games.”[104] Alexander’s whole argument is based on the idea that the tattoos she created and inked onto Orton’s body are not part of his likeness. In contrast to Alexander, the tattoo artists in Solid Oak all asserted that they “intended the Players to copy and distribute the Tattoos as elements of their likenesses, each knowing that the Players were likely to appear ‘in public, on television, in commercials, or in other forms of media.’”[105] The only reason any of these tattoos ended up in the “NBA 2K” or “WWE 2K” video games is because the tattoos are part of the athletes’ likenesses, and these games aim for realism and realistic game play. The purpose of the video games is to get fans more interested in the sport, not to profit from tattoo designs. The jury should have received instructions for implied license in Alexander and had the opportunity to resolve this question. c. Fair Use In Solid Oak, the purpose and character of the use of the tattoos in the video game was “general recognizability” as opposed to the original, self-expressive purpose of the tattoos.[106] In contrast, Alexander argued that she created the tattoos to display them on Orton’s body and Take-Two used the tattoos for the same purpose.[107] That broad of an argument ignores the distinctions that exist between displaying a piece of body art as a mode of self-expression and displaying it as a correct representation of a person’s likeness. The second fair use factor, the nature of the copyrighted work, does not carry much weight in either Solid Oak or Alexander. Even so, it is worth mentioning that the tattoos inked by Alexander are representations of common themes and motifs in tattoos. Alexander created tribal designs, skull sleeves, and a Bible verse tattoo for Orton,[108] designs which are in essence scènes à faire in the tattoo industry. In Solid Oak, the court found the tattoos to be more factual than expressive in nature because they were based on representational renderings of common object and motifs.[109] There should have been a similar outcome in Alexander on this factor. The amount and substantiality of the use also may not carry great weight in a fair use analysis.[110] Even so, the court’s examination of this factor in Alexander is insufficient. Alexander argued that Take-Two copied more elements of the tattoos than was necessary to create the desired realism.[111] There are only a handful of elements to Orton’s tattoos, so if any were omitted, it is unlikely Orton’s appearance in the video game would be an accurate representation of his likeness. The effect of the use upon the potential market for or value of the copyrighted work is the fair use factor that probably weighs most heavily in favor of fair use of tattoos in video games. In Solid Oak, the court said the tattoos as they appear in the video game could not have deprived Solid Oak of significant revenues because they could not serve as substitutes for use of the tattoo designs in any other medium.[112] If a person wanted to copy a player’s tattoo, a video game would not reasonably serve as the source. In Alexander, the court does not decide the degree of market harm that may be created by video game manufacturers not obtaining a license to include an athlete’s tattoo in the video game in the name of realism.[113] If tattoo artists generally only have a problem with the reproduction of their work for someone else’s profit, then Alexander may have a point. Realism is the reason why tattoos appear in these kinds of video games though. They are not included for the sake of exhibition. The tattoos are part of the athlete’s likeness, which the athlete has the right to do with what they want. IV. Looking Ahead Tattooing has a history and an attitude that exist in tension with established understandings of copyright protection. Bodily autonomy does not usually play a role in consideration of the exclusive rights of a copyright owner. It needs to though. Through the court’s sparse consideration of affirmative defenses to copyright infringement, Alexander set a worrisome precedent. In that case, nuance was lacking. Based on the logic of Alexander, any person with a tattoo is not in control of their likeness unless they enter into an explicit agreement with their tattoo artist.[114] The norm of tattoo artists relinquishing control of a tattoo once it becomes part of someone’s likeness is no longer sufficient.[115] It is likely that more cases about tattoos, copyright, and likeness will come about. Future cases may end in settlement like most of the earlier cases about tattoos and copyrights.[116] Hopefully courts dismiss those cases that do not settle, like in Solid Oak.[117] If they are not dismissed and end up going to trial, then hopefully the jury instructions are better than those in Alexander.[118] Given the glacial rate of change in copyright legislation,[119] any changes to copyright law regarding tattoos will have to be judicially created. A court could clearly delineate between the design of a tattoo and the tattoo as applied to a body. A court could also make it clear that tattooed people have an implied license to the tattoos on their bodies. Perhaps there could even be a suggestion of a special term of copyright protection for body art. As works of art, tattoos should have copyright protection. Courts should also balance he rights afforded to the copyright owner with the right to bodily autonomy of the person who bears the tattoo. [1] Chris Jackson, More Americans Have Tattoos Today than Seven Years Ago, Ipsos(Aug. 29, 2019) https://www.ipsos.com/en-us/news-polls/more-americans-have-tattoos-today. [2] See, e.g., Name, image and likeness: Tracking early deals, potential stars, and Kayvon Thibodeaux’s collab with Phil Knight, The Athletic(Jul. 6, 2021) https://theathletic.com/2684358/2021/07/06/ name-image-and-likeness-tracking-early-deals-potential-stars-the-weird-interesting-quirky-and-more/. [3] Solid Oak Sketches, LLC v. 2K Games, Inc., 449 F. Supp. 3d 333 (S.D.N.Y 2020); Alexander v. Take-Two Interactive Software, Inc., 489 F. Supp. 3d 812 (S.D. Ill. 2020) (memorandum and order granting partial summary judgment). [4] See Yolanda King, The Enforcement Challenges for Tattoo Copyrights, 22J. Intel. Prop. L29, 49-53 (2014). [5] See Aaron Perzanowski, Tattoos and IP Norms, 98 Minn. L. Rev. 511, 516-24 (2013). [6] Id. at 517. [7] Id. at 517-18. [8] Id. at 518-21 (tracing how the practice of tattooing spread to Western Europe and the United States through colonization). [9] Paul Roe, Tattoo Techniques and Methods: Ancient and Modern,The Saint James Street Parlour, https://www.jamesstreetparlour.com/tattoo-techniques-and-methods-ancient-and-modern(2005) (looking at the traditional pierce, puncture, or cut methods of creating tattoos). [10] Perzanowksi supra note 5, at 519. [11] See Tattoo History: Flash Art,Cloak and Dagger Tattoo, https://www.cloakanddaggerlondon.co.uk/ tattoo-history-flash-art/ (last visited March 5, 2023) (describing the history and appeal of flash art). [12] Perzanowski, supra note 5, at 520. [13] Id. at 559. [14] Id. at 521-22. [15] Id. [16] Id. at 250 [17] Id. at 522 (noting a reconceptualization of tattooing). [18] Id. at 523. [19] King, supra note 4, at 40 (discussing the significance of client contributions to tattoo design). [20] See Public Catalog: Truckee Tattoo / artist, Richard Staydohar [i.e. Richard Steven Staydohar] U.S. Copyright Off., http://cocatalog.loc.gov (search in search bar under registration number for “VA0000028348”; then follow “Truckee Tattoo / artist, Richard Staydohar [i.e. Richard Steven Staydohar]” hyperlink under “Full Title”). [21] Alexander v. Take-Two Interactive Software, Inc.,489 F. Supp. 3d 812, 819 (S.D. Ill. 2020) (order granting partial summary judgment). [22] See, e.g., King supra note 4, at 30; see also Chandel Boozer, When the Ink Dries, Whose Tatt is it Anyways? The Copyrightability of Tattoos, 25 Jeffrey S. Moorad Sports L. J.275 (2018); see also Michael C. Minahan, Copyright Protection for Tattoos: Are Tattoos Copies?, 90 Notre Dame. L. Rev.1713 (2015). [23] 17 USC § 102(a). [24] See Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 346 (1991) (holding that the arrangement of information in a telephone book is not copyrightable because it is not creative enough to be considered an original work). [25] “Tattoo,” Merriam-Webster, https://www.merriam-webster.com/dictionary/tattoo. [26] See, e.g., Arrielle S. Millstein, Slaves to Copyright: Branding Human Flesh as a Tangible Medium of Expression, 4 Pace. Intell. Prop. Sports & Ent. L.F. 135, 152, 156 (2014); see, e.g.,Michael C. Minihan, Note, Copyright Protection for Tattoos: Are Tattoos Copies?, 90Notre Dame L. Rev.1713 (2014). [27] U.S. Copyright Office, Compendium of U.S. Copyright Office Practices§ 924 (3d ed. 2014). [28] See King, supra note 4, at 35. [29] 17 USC § 201(a). [30] See King,supra note 4, at 40. [31] See Id. [32] 17 USC § 101(defining “joint work”). [33] See King, supra note 4, at 40 (discussing the significance to client contributions to tattoo design). [34] See King, supra note 4, at 38 (looking at two common approaches used by courts when evaluating the copyrightability of contributions to jointly authored works). [35] See id.at 37 [36] See generally Community for Creative Non-Violence v. Reid, 490 U.S. 730, 739 (1989); see also Aymes v. Bonelli, 980 F.2d 857, 861 (2d Cir. 1992) (refining the most significant factors from Reid). [37] 17 USC § 101 (defining “work made for hire” as work that is “specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas. . .”). [38] See Perzanowski, supra note 5, at 534-35. [39] 17 USC § 106. [40] 17 USC § 202. [41] King, supra note 4, at 35. [42] See Perzanowski, supra note 5, at 532. [43] Id. [44] Id., at 537. [45] Id. [46] Solid Oak Sketches 449 F. Supp. 3d; Alexander, 489 F. Supp. 3d. [47] Complaint, ¶¶ 4–5, Reed v. Nike, Inc., No. 3:05-CV-00198 (D. Or. Feb. 10, 2005), dismissed, (D. Or. Oct. 19, 2005) [hereinafter Reed Complaint]. [48] robjv1, Rasheed Wallace NBA Finals Nike Commercial, YouTube. (June 26, 2010), https://www.youtube.com/watch?v=RqmRu34PXrU. [49] Truckee Tattoo / artist, Richard Staydohar [i.e. Richard Steven Staydohar], supra note 20 [50] Christopher A. Harkins, Tattoos and Copyright Infringement: Celebrities, Marketers, and Businesses Beware of the Ink, 10 Lewis & Clark L. Rev. 313, 316 (2006). [51] Perzanowski, supra note 5, at 515. [52] Harkins, supra note 50, at 317. [53] Stipulation of Dismissal with Prejudice, Reed v. Nike, Inc., No. 05-CV-198 BR (D. Or. Oct. 19, 2005). [54] Harkins, supra note 50, at 316. [55] Associated Press, Artist Sues Wallace over Use of Tattoo, ESPN (Feb. 16, 2005), http://sports.espn.go.com/espn/sportsbusiness/news/story?id=1992812.). [56] Verified Complaint for Injunctive and Other Relief at 2, Whitmill v. Warner Bros. Entm’t, Inc., No. 4:11-CV-752 (E.D. Mo. Apr. 28, 2011), 2011 WL 2038147. [hereinafter Whitmill Complaint] [57] See id.at 3. [58] Id. at 4. [59] Id. [60] Whitmill Complaint, supra note 56 at 1-2. [61] Noam Cohen, Tattoo Artist Settles Tyson Dispute with ‘Hangover 2’, N.Y. Times: Media Decoder (June 21, 2011, 2:18 PM), http://mediadecoder.blogs.nytimes.com/2011/06/21/tattoo-artist-settles-tyson- dispute-with-hangover-2 /?r=2. [62] Complaint at 2, 6, Escobedo v. THQ, Inc., No. 2:12CV02470 (D. Ariz. Nov. 16, 2012), 2012 WL 5815742. [hereinafter Escobedo Complaint] [63] Id. [64] Id. at 3-4. [65] Id. at 2, 6. [66] Stephen Rickershauser, The Ink Isn’t Dry, JD Spura (Apr. 29, 2016), https://www.jdsupra.com /legalnews/the-ink-isn-t-dry-39831/. [67] Solid Oak Sketches, 449 F. Supp. 3d at 333. [68] Id. at 339. [69] Id.at 340. [70] Id. [71] Solid Oak Sketches, 449 F. Supp. 3d at 339. [72] Id. at 345. [73] Id. at 344. [74] Id. at 350. [75] Id. at 340-41. [76] Aaron Moss, Take-Two Trial Begins: What You Need to Know, Copyright Lately (Sept. 26, 2022) https://copyrightlately.com/take-two-orton-tattoo-copyright-trial/. [77] Solid Oak Sketches, 449 F. Supp. 3d at 353; Alexander, 489 F. Supp. 3d at 817. [78] Alexander, 489 F. Supp. 3d at 817. [79] Id. [80] Id. [81] Id.at 818. [82] Alexander, 489 F. Supp. 3d at 817. [83] Id.at 817. [84] Id.at 818. [85] Id. [86] Id.at 817. [87] Id.at 819-20, 822-23. [88] Aaron Moss, Tattoo Artist’s Trial Win is a Loss for Bodily Autonomy, Free Speech, Copyright Lately, (Oct. 2, 2022) https://copyrightlately.com/tattoo-artist-trial-victory-copyright-lawsuit/. [89] Alexander v. Take-Two Interactive Software, Inc., No. 18-cv-966-SMY, at 2 (S.D. Ill. Sept. 22, 2022) (order clarifying and amending the court’s summary judgment order). [90] Alexander, 489 F. Supp. 3d at 823-34.. [91] Moss, supra note 90. [92] Solid Oak Sketches, 449 F. Supp. 3d at 350. [93] Alexander, 489 F. Supp. 3d at 821. [94] Moss, supra note 90. [95] Id. [96] Muhammed-Ali v. Final Call, Inc., 832 F.3d 755, 761 (7th Cir. 2016). [97] Id. [98] Alexander, 489 F. Supp. 3d at 819. [99] Moss, supra note 90. [100] Effects Assoc., Inc. v. Cohen, 908 F.2d 555, 558 (9th Cir. 1990) (quoting, 3 M. Nimmer & D. Nimmer, Nimmer on Copyright§ 10.03[A], at 10-36 (1980)). [101] Estate of Hevia v. Portorio Corp., 602 F.3d 34, 41 (1st Cir. 2010) (quoting, John G. Danielson, Inc. v. Winchester-Conant Props., Inc., 322 F.3d 26, 41 (1st Cir. 2003)). [102] King, supra note 4 at 64. [103] Alexander, 489 F. Supp. 3d at 820. [104] Id. [105] Solid Oak Sketches, 449 F. Supp. 3d at 346. [106] Id. at 347. [107] Alexander, 489 F. Supp. 3d at 821. [108] Alexander, 489 F. Supp. 3d at 817. [109] Solid Oak Sketches, 449 F. Supp. 3d at 348. [110] Aaron Moss, Kat Von D Tattoo Lawsuit Appears Headed to a Jury, Copyright Lately (Jun, 2, 2022) https://copyrightlately.com/kat-von-d-tattoo-lawsuit-appears-headed-to-a-jury/. [111] Alexander, 489 F. Supp. 3d at 821. [112] Solid Oak Sketches, 449 F. Supp. 3d at 350. [113] Alexander, 489 F. Supp. 3d at 822. [114] Moss, supra note 90. [115] Perzanowski, supra note 5 at 532. [116] See generally, Reed Complaint, supra note 47; Whitmill Complaint, supra note 56; Rickershauser, supra note 68 [117] Solid Oak Sketches, 449 F. Supp. 3d at 350. [118] See Moss, supra note 90. [119] See Copyright Timeline: A History of Copyright in the United States, Ass’n of Rsch. Librs., https://www.arl.org/copyright-timeline/#Top (last visited Mar. 5, 2023).
Notable Trademark Decisions, July 2023 By: Scott Greenberg and Vrudhi Raimugia
SCOTUS affirms presumption against extraterritoriality in the Abitron Austria case The Supreme Court of the United States (“the Supreme Court”), in the case Abitron Austria GmbH v. Hetronic Int'l, Inc., ___ S.Ct. ___, 2023 U.S. LEXIS 2789 (June 29, 2023), had to decide on the foreign reach of 15 U. S. C. §1114(1)(a) and §1125(a)(1), two provisions of the Lanham Act prohibiting trademark infringement. This case concerned a trademark dispute between Hetronic International Inc., a U.S. company (hereinafter referred as “Hetronic”) and Abitron Austria Gmbh and five related parties (hereinafter referred as “Abitron”). Here, Abitron, was once a licensed distributor for Hetronic, the manufacturer of radio remote controls for construction equipment. Abitron claimed ownership of the rights to much of Hetronic’s intellectual property, employing Hetronic’s marks on products it sold. Hetronic sued Abitron in the Western District of Oklahoma for trademark violations under 15 U. S. C. §1114(1)(a) and §1125(a)(1), two related provisions of the Lanham Act, both of which prohibit the unauthorized use in commerce of protected marks when that use is likely to cause confusion. Hetronic sought damages for Abitron’s infringing acts worldwide, including foreign sales of products to foreign purchasers, whereas Abitron argued that Hetronic sought an impermissible extraterritorial application of the Lanham Act in view of the presumption against application of a U.S. statute to conduct in the territory of another sovereign. The District Court rejected Abitron’s argument, and a jury later awarded Hetronic approximately $96 million in damages related to Abitron’s global employment of Hetronic’s marks. The District Court also entered a permanent injunction preventing Abitron from using Hetronic’s marks anywhere in the world. On appeal, the Tenth Circuit narrowed the injunction, but otherwise affirmed the judgment, concluding that the Lanham Act extended to all of Abitron’s foreign infringing conduct and opined that impacts within the United States were of a sufficient character and magnitude as would give the United States a reasonably strong interest in the litigation. Here, the Supreme Court, granted certiorari to resolve a Circuit split over the extraterritorial reach of the Lanham Act. The Supreme Court stated that, based on past decisions (including the cases RJR Nabisco, Inc. v. European Community, 579 U. S. 325, 335–336, WesternGeco LLC v. ION Geophysical Corp., 585 U. S., Morrison v. National Australia Bank Ltd., 561 U. S. 247, 255, and the like), applying the presumption would involve a two-step framework, which would ask at step one whether the statute was extraterritorial. This step turned on whether “Congress had affirmatively and unmistakably instructed that” the provision at issue should “apply to foreign conduct.” The Supreme Court was of the view that if the Congress had provided such an instruction, then the provision would be extraterritorial. If not, then the provision would not be extraterritorial and step two would apply, which would revolve around the question whether a suit sought a (permissible) domestic or (impermissible) foreign application of the provision. That determination would require the Court to identify the “focus” of congressional concern underlying the provision at issue, and then “ask whether the conduct relevant to that focus occurred in United States territory”. The Supreme Court critiqued the lower Court and Abitron’s approach which centered on the “focus” of the relevant provisions without regard to the “conduct relevant to that focus” which should have been the ultimate question regarding permissible domestic application. The Supreme Court stated that the conduct relevant to any focus the parties proffered must be defendant’s infringing use in commerce, as the Act defined it, including the requirement of use of the infringing matter in commerce which may be regulated by the U.S. Congress, rather than the putative domestic impacts of a defendant’s activities. The Supreme Court elucidated that “use in commerce” was the conduct relevant to any potential focus of §1114(1)(a) and §1125(a)(1) because Congress deemed a violation of either provision to occur each time a mark would be used in commerce in the way Congress proscribed, i.e. use in commerce that is likely to cause confusion, with no need for any actual confusion. Accordingly, under step two of the extraterritoriality standard, “use in commerce” would provide the dividing line between impermissible foreign and permissible domestic applications of these Lanham Act provisions. The Supreme Court considered any other approach wrong as it would give the Lanham Act an untenably broad reach that would undermine the extraterritoriality framework. The Supreme Court’s opinion emphasized that an expansive understanding of the Lanham Act’s domestic applications would threaten to negate the presumption against extraterritoriality and such an approach would in turn, threaten “‘international discord”. The Supreme Court acknowledged that in nearly all countries, including the United States, trademark law has been territorial—i.e. a trademark has been recognized as having a separate existence in each sovereign territory in which it has been registered or legally recognized as a mark. Each country is empowered to grant trademark rights and police infringement within its borders. The Supreme Court also recalled the principles enshrined in the Paris Convention for the Protection of Industrial Property as well as the Protocol Relating to Madrid Agreement Concerning International Registration of Marks, and the fact that the Lanham Act, which has designed to implement “treaties and conventions respecting trademarks,” §1127, incorporated this territorial premise, mandating that registration of a foreign trademark in the United States “shall be independent of the registration in the country of origin” and that the rights of that mark in the United States are governed by domestic law, §1126(f). To conclude, the Supreme Court opined that §1114(1)(a) and §1125(a)(1) are not extraterritorial and that the infringing “use in commerce” of a trademark provides the dividing line between impermissible foreign and permissible domestic applications of these provisions. To elucidate, the Supreme Court held that under the Lanham Act, the term ‘use in commerce’ means the use of a mark in the ordinary course of trade, in commerce regulable by U.S. Congress, where the mark would serve to “identify and distinguish the mark user’s goods and to indicate the source of the goods.” §1127. Accordingly, the Supreme Court vacated the judgment of the Court of Appeals as the proceedings in the said case were not in accord with the correct understanding of extraterritoriality. Abitron Austria GmbH v. Hetronic Int'l, Inc., ___ S.Ct. ___, 2023 U.S. LEXIS 2789 (June 29, 2023)[VR] SCOTUS decision provides clarity on trademark infringement and First Amendment rights in the Jack Daniels’ Case The Supreme Court of the United States (“the Supreme Court”) recently decided on the case Jack Daniel's Properties Inc. v. VIP Products LLC, 143 S. Ct. 1578, 2023 U.S. LEXIS 2422 (June 8, 2023), thereby providing clarifications regarding the correlation between trademark infringement and First Amendment rights. The case revolves around the question whether the use of Jack Daniel’s (“the Appellant”) trademark by VIP Products (“the Respondent”), in the form of a squeaky, chewable dog toy designed to look like a bottle of Jack Daniel’s whiskey, would amount to infringement and dilution. Consequently, whether such infringement, if any, would be covered under the exception stated in the Rogers test laid down by the Second Circuit in the case Rogers v. Grimaldi. The Rogers test is designed to protect First Amendment interests in the trademark context, if use of the trademark is expressive in nature and does not explicitly mislead consumers. This theory was challenged by the Appellant, claiming that the exception could not be invoked when the alleged infringed mark was used as a source identifying trademark and not merely as an expressive work. The Respondent contended, before the District Court, that the Appellant’s infringement claim failed under a threshold test derived from the First Amendment to protect “expressive works” because Rogers test would require dismissal of an infringement claim at the outset unless the Appellant could show one of two things: that the challenged use of a mark “had no artistic relevance to the underlying work” or that it “explicitly misled as to the source or the content of the work.” The Respondent also contended that in the case of a failure to show either of the above two, the likelihood-of-confusion issue would be irrelevant. Further, the Respondent contended that the Appellant’s claim for dilution of their mark would not be applicable because such use would amount to parody, qualifying for an exception under the concept of fair use. The District Court, in the early stage of this dispute, passed an order in favor of the Appellant, holding that because the Respondent had used the Appellant’s features as trademarks—i.e., to identify the source of its own products, Rogers test would not apply. The District Court also rejected the Respondent’s invocation of the fair-use exclusion, holding that parodies would fall within that exclusion only when they would not use a famous mark to identify the source of the alleged diluter’s product. The District Court’s judgment was largely based on consumer survey evidence which indicated that consumers were likely to get confused about the source of the Respondent’s Bad Spaniel’s toy. Moreover, the District Court was of the view that such use of the Appellant’s mark might lead to dilution owing to the negative connotations associated with the Respondent’s use of the mark. Later, the Ninth Circuit reversed the District Court’s order, finding that the Rogers test would apply in the present case and remanded the case to the District Court to decide whether the Appellant could satisfy either prong of that Rogers test. The District Court then found that in the present case, the two prongs of the Rogers test could not be satisfied and consequently, the order was passed in favor of the Respondent. Now, the Supreme Court, in their recent opinion, has rejected the findings of the Court of Appeals, stating that the infringement issue is more substantial. The Supreme Court has held that it is not appropriate for the Court to apply the Rogers test when the accused infringer uses a trademark to designate the source of its own goods—in other words, uses a trademark as a trademark. In doing so, the Supreme Court clarifies that it does not dismiss the principles laid down in Rogers altogether, but only indicates that Rogers should ideally be applied only in “non trademark uses” or in cases where defendants would use the mark in a “non-source-identifying way”. The Supreme Court also found that such infringement could not be protected by the First Amendment exception, and the matter of infringement should be resolved by an evaluation of likelihood of confusion standards. A similar rationale was used for ascertaining the applicability of parodies as an exception in case of a claim of dilution of a trademark. The Supreme Court again reiterated that as the use of the mark by the Respondent was as a source identifying trademark, the parody's exception could not be held valid. Further, the Supreme Court held that the use of a mark could not count as noncommercial just because it parodies, or otherwise comments on, another’s products. The Supreme Court also refuted the Ninth Circuit’s reliance on the noncommercial use exclusion—that parody is always exempt, regardless whether it designates source, which effectively nullified the Congress’s express limit on the fair-use exclusion for parody. The Supreme Court, in analyzing the said case, heavily emphasized the primary function of the trademark to act as source identifiers—as things that function to “indicate the source” of goods, and so to “distinguish” them from ones “manufactured or sold by others, in accordance with provisions of §1127 under the Lanham Act. The Supreme Court made it clear that undermining this primary function of a trademark would amount to committing a cardinal sin under the Lanham Act. Towards the end of the opinion, the Supreme Court reiterated that its decision is a narrow one which did not intend to decide whether the Rogers test is ever appropriate, or how far the “noncommercial use” exclusion should go. On infringement, the Supreme Court only opined that the Rogers test did not apply when the challenged use of a mark is as a mark. However, the Supreme Court also observed that a parodic intent, as asserted here by Respondent, may properly figure in assessing the likelihood of confusion. On dilution, the Supreme Court only held that the noncommercial exclusion would not shield parody or other commentary when its use of a mark was similarly source-identifying. In doing so, the Supreme Court further underlined the crucial role of trademark as a source identifier. The Supreme Court therefore vacated the judgment below and remanded the case for further proceedings consistent with the Supreme Court’s opinion. Jack Daniel's Properties Inc. v. VIP Products LLC, 143 S. Ct. 1578, 2023 U.S. LEXIS 2422 (June 8, 2023)[VR] CAFC Vacates TTAB’s Ruling For Opposer: Board Committed Significant Errors In Assessing Both The Strength of Opposer’s Marks And Their Similarity To Applicant’s Mark Spireon, Inc. (“Spireon”) applied to register the mark FL FLEX for electronic devices for tracking the locations of trailers, cargo containers, and other transportation equipment. The application was opposed by Flex Ltd. (“Flex”) on the grounds of priority and likelihood of confusion with Flex's previously registered marks FLEX and FLEX PULSE in connection with goods and services relating to supply chain management and transportation logistics. The USPTO’s Trademark Trial and Appeal Board (the “Board’) sustained the opposition. On appeal, the United States Court of Appeals for the Federal Circuit (“CAFC”), in a precedential decision, held that the Board committed significant errors in assessing both the strength of Flex’s marks and the similarities of those marks to Spireon’s marks. The CAFC therefore vacated the Board’s decision and remanded the case for further proceedings and reconsideration consistent with the CAFC’s opinion. Spireon, Inc. v. Flex LTD, __ F.4th __ , 2023 U.S.P.Q.2D 737, 2023 U.S. App. LEXIS 15964 (Fed. Cir. June 26, 2023). The Parties’ Marks Spireon applied to register the mark FL FLEX for the following goods: "[e]lectronic devices for tracking the locations of mobile assets in the nature of trailers, cargo containers, and transportation equipment using global positioning systems and cellular communication networks." Flex alleged likelihood of confusion with its following prior registered marks: FLEX (in standard characters) for services including, in relevant part, "supply chain management services; transportation logistics services, namely, arranging the transportation of goods for others; logistics management in the field of electronics; . . . [and] inventory management services for others." FLEX (stylized) for services including, in relevant part, "supply chain management services; transportation logistics services, namely, arranging the transportation of goods for others; logistics management in the field of electronics; . . . [and] inventory management services for others." FLEX PULSE, both for the following goods: “[c]omputers; computer software for use in supply chain management, logistics and operations management, quality control, inventory management, and scheduling of transportation and delivery; [c]omputer software in the nature of downloadable mobile applications for use in supply chain management, logistics and operation management, quality control, inventory management, and scheduling of transportation and delivery”; and for services including, in relevant part: "[s]upply chain management services; logistics management in the field of electronics; . . . inventory control and inventory management services" as well as "providing temporary use of non-down-loadable computer software for supply chain management, logistics and operation, inventory control, inventory management and tracking of documents and products over computer networks, intranets and the internet in the field of supply chain management." 2023 U.S. App. LEXIS 15964 at *1-3. Board’s Errors In Assessing Conceptual Strength of Flex’s Marks The CAFC noted that a likelihood of confusion under Section 2(d) of the Lanham Act (15 U.S.C. § 1052(d)) is determined based on the relevant factors set forth in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973) (“the DuPont factors”). The ultimate question of a likelihood of confusion is a legal determination based on underlying findings of fact relating to the DuPont factors. The CAFC reviews the Board’s factual findings on each relevant DuPont factor for substantial evidence, and reviews de novo the ultimate conclusion as to whether confusion is likely. The Court further noted that the sixth DuPont factor, "[t]he number and nature of similar marks in use on similar goods," (a) measures the extent to which other marks weaken the assessed mark and (b) has two prongs of analysis that are relevant to a mark’s overall strength: conceptual strength, which is a measure of a mark's inherent distinctiveness, and commercial strength, which hinges on whether or not consumers in fact associate the senior party’s mark with a unique source because that party is using the mark exclusively. Id. at *7-9. Regarding conceptual strength, the Court noted that, under its precedents, third-party registrations "are relevant to prove that some segment of the composite marks which both contesting parties use has a normally understood and well-recognized descriptive or suggestive meaning, leading to the conclusion that that segment is relatively weak". Id. at *9 (quoting Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1339 (Fed. Cir. 2015)). In the present case, the CAFC held that the Board committed a significant error by declining to consider, in its assessment of the conceptual strength of Flex’s mark, fifteen of the third-party registered marks proffered by Spireon. The Board excluded these registered marks from consideration for the stated reason that they were compound terms including another word or letters in addition to “FLEX”. According to the Board, that changed the overall meaning and/or commercial impression of the marks as a whole, making them less similar to Flex's marks than is Spireon's mark. The Court held that this was error because Spireon’s mark, FL FLEX, was itself a composite mark that was not identical to Flex’s mark FLEX: The composite third-party registrations are relevant to the question of whether the shared segment—in this case, "flex"—has a commonly understood descriptive or suggestive meaning in the field and whether there is a crowded field of marks in use. The composite marks have probative value and should have been included in the Board's analysis. Id. at *12. Moreover, the CAFC held that the Board compounded the above-mentioned error by giving no weight to Spireon’s claim that Flex’s mark FLEX was highly suggestive of Flex’s goods and services because it was a shortened form of the word “flexible”, a claim which the Board discounted because, according to the Board, Spireon failed to support it with any evidence. On the contrary, the CAFC held that Spireon’s evidence of third-party registrations for marks including “FLEX” in the relevant industry were themselves evidence that “FLEX” hints at some attribute of the goods and services in that industry. Id. at *13. The Court held that, on remand, “the Board must consider all relevant evidence to determine whether Flex's marks are conceptually weak.”. Id. Board’s Errors In Assessing Commercial Strength of Flex’s Marks And The Correct Burden of Proof The CAFC also cited two significant errors made by the Board in assessing the commercial strength of Flex’s mark FLEX. First, as in the case of third-party registrations that were offered by Spireon to show the conceptual weakness of the FLEX mark, the Board similarly discounted Spireon’s evidence of use of compound third-party marks incorporating other words or letters in addition to “FLEX”. The Court held that this was error for the same reasons. Id. Second, the CAFC stated that it was error for the Board, in its assessment of commercial or marketplace strength of Flex’s mark FLEX, to discount Spireon’s evidence of three third-party registrations of the same mark “FLEX” for the same goods and/or services. The Board had discounted this evidence on the issue of commercial strength for the stated reason that Spireon failed to introduce evidence of the use of those particular registered marks. Id. at *13-14. The three third party registrations specified by the Court were “FLEX”, registered for goods including "computer software used for logistics management", “FLEX”, registered for, among other things, "[c]omputer software platform for use in . . . managing supply chains", and FLeX for "[a]dvanced transportation controller for managing a variety of intelligent transportation systems, including traffic signal control and integration with connected or automated vehicles". The Court noted that the first two of these third-party registrations had issued prior to Flex’s registration. Id. at *14. In explaining why this was a significant error by the Board, the Court first pointed out that it is the opposer, not the applicant, who has the burden of proof in establishing a likelihood of confusion.The Court therefore queried whether opposers should generally have the burden of proving nonuse of the marks in third-party registrations that are proffered by applicants, and that absent such proof, use can be assumed. Id. at *15. However, the Court held that, in the present case: We need not decide the broader question of which party bears the burden of establishing non-use as a general matter. This case presents the far narrower question of whether the burden of showing non-use of identical marks for identical goods rests with the opposer. We think it necessarily does. Otherwise, the opposer would be able to dismiss the commercial significance of previously registered identical marks for identical goods where the opposer's own mark should perhaps have not been granted registration in the first place. Id. at *16. The Court held that, on remand, Flex should be given the opportunity to make a showing of nonuse of the registered marks in question, failing which “the commercial strength of the Flex marks must be considered weak as to Spireon's non-identical mark.” Id. at *17. Board’s Error In Assessing The Similarity of The Parties’ Marks The CAFC also held that on the first DuPont factor, the similarity of the parties’ marks, the Board erred by comparing Spireon’s applied-for mark FL FLEX to “FLEX PLUS”, because the relevant registered mark pleaded by Flex was actually “FLEX PULSE” and not “FLEX PLUS”. The Court also rejected Flex’s argument that this was harmless error, because (1) the Board’s opinion expressly noted that “PLUS” was less significant that “FLEX” in the commercial impression made by the mistakenly identified mark “FLEX PLUS” due to the “merely laudatory” nature of the word “plus”, and (2) “FLEX PULSE is quite different from FL FLEX in appearance and sound.” Id. at *17-18. The CAFC therefore held that, on remand, “the Board should analyze the correct mark, taking into account all the differences between FL FLEX and FLEX PULSE.” Id. at *18. The CAFC therefore vacated the Board’s decision and remanded the case to the Board “to reconsider the likelihood of confusion and its ultimate decision sustaining the opposition in light of this opinion.” Id. Spireon, Inc. v. Flex LTD, __ F.4th __ , 2023 U.S.P.Q.2D 737, 2023 U.S. App. LEXIS 15964 (Fed. Cir. 2023) (precedential).[SG]
Historians Corner
BY: DALE CARLSON*
As artificial intelligence ("AI") becomes more ubiquitous in today's world, the same mix of fear and awe we may have felt when witnessing the chilling chess-like maneuvers of HAL 9000 in the movie "2001: A Space Odyssey" tends to resurface in our mind's eye. For lawyers like us, the fear quotient ratcheted up exponentially, and the awe component dampened a bit, by virtue of a recent fiasco involving a ChatGPT-generated brief. In a nutshell, a New York personal injury firm, Levidow, Levidow and Oberman, and two of its lawyers, are facing potential sanctions after submitting a brief in the Southern District of New York against Avianca Airlines. The brief alluded to nonexistent cases, opinions and false citations throughout for support of a position that was untenable absent the AI-generated lies. After the Avianca case appeared in the headlines, a federal judge in the Northern District of Texas issued a standing order stating that anyone appearing before the court must either (a) attest that “no portion of any filing will be drafted by generative artificial intelligence” or (b) highlight any language that was drafted by AI to be checked for accuracy. The Texas judge wrote that while these “platforms are incredibly powerful and have many uses in the law,” briefings are not one of them as the platforms are “prone to hallucinations and bias” in their current form. Needless to say, the Avianca case raises issues regarding the veracity of AI-generated output more generally. Presumably regulations will need to be put in place to prevent persons relying on the output from being defrauded - unwittingly or not. On a different note, patent lawyers among us are doubtless interested in following patent applications filed by Stephen Thayler naming his AI device, Device for the Autonomous Bootstrapping of Unified Sentience ("DABUS"), as inventor. To the extent a person is involved in conceiving of an invention that is made by an AI device at the person's direction, the naming of inventor appears to be a non-issue. However, if the device becomes self-executing without human input, the inventorship issue becomes thornier. It can be argued that Article 1, Section 8, Clause 8 of the Constitution, and all of the patent acts that followed, mandate that the inventor must be a person. A person can be incentivized by the grant of a patent, whereas a machine or computer program would presumably garner no incentive by virtue of such a grant. It is difficult to imagine how the Founding Fathers could envision a time when otherwise patent eligible inventions would be made without some conception by a person. That time seems now at hand. Thankfully trade secret protection, made stronger by the Defend Trade Secrets Act of 2016, is available as a potential alternative to consider. *Dale Carlson is NYIPLA past president and current historian. His email is dale.carlson@quinnipiac.edu.
"As Time Goes By - An Eye for AI"
In attendance were: Heather Schneider, President, presiding Chris Loh Paul Bondor Timothy Caine Richard Brown Scott Greenberg (dropped off at 4:59 pm) John Mancini (dropped at 4:52 pm) Diana Santos Darren Collins Jonathan Berschadsky Patrice Jean Jenny Lee Rob Rando (joined 4:04 pm) Khalil Nobles from AAC (joined around 4:15 pm) Rob Isackson (joined after 4:30 pm) Eric joined from AAC (joined at 4:22 pm) David Goldberg (joined at 4:25 pm) Mark Schildkraut (joined at 4:25 pm) Abby Struthers (joined around 4:30 pm) Linnea joined (around 4:30 pm) Feikje van Rein attended in-person from the Association’s executive office. Eric Greenwald and Khalil Nobles attended from the Associate Advisory Council. Christine Lauture from the AAC was unable to attend. President Heather Schneider called the meeting to order at 4:02 PM ET. The board waived reading of the minutes and approved the minutes for the March board meeting. Connor Writing Competition.Timothy and Richard presented the 3 finalists, noting that the total submissions were a bit lower this year compared to last. The committee this year made sure to review citations, factoring that into their selection criteria. The board then discussed reviewing the marketing around the competition and increasing the prize value. The board members voted and approved to increase 1st place award to $2500 and 2nd place to $1500. Financial Report & New Members.Scott Greenberg reported that the current financials look good with great revenue response for the Judge’s Dinner, notwithstanding expenses pending. Still a few expenses to pay, including the Hilton bill. With more guests and expenses higher this year, the financials may end up close to last year. 7 new members joined this past month, not including the complimentary memberships affiliated with the Judge’s Dinner. 1 new member is from the International Trade Commission and total number of new members are up YTD. Motions to waive reading of the names and to admit the new members were passed. Amicus Briefs Committee. David Goldberg reported Abitron, Amgen v Sanofi, and Jack Daniels cases were heard this past month and decisions are expected to come down in June. Thayler case is an interesting case that involves whether AI can be an inventor. Fed Circuit said no and the petition for cert to be reviewed to be decided on the 21st. If granted, we will want to weigh in. The board also discussed AI as a popular topic that engages large audiences. Considering the various AI and IP issues, as well as related privacy issues, the members agreed that it is of value to membership to cover these topics in upcoming programs this year, whether or not the Supreme Court grants cert. Legislative Action Committee. Rob Rando reported there is lots of activity in Congress but nothing has been moving forward. There has been effort to revive Stronger Act and work around drug pricing, copyright and AI (where Copyright Committee is consulting with government), and roundtable with IPR Center and FTC. He noted pharma has reached out to NYS for input on patent settlements (pay for delay) deadline, because one of the bills floating in NYS is similar to CA bill. Pharma is concerned about the potential for many unintended consequences of the requirement to report settlement to Dept of Financial Services, which would be publicly posted. This is related to NYIPLA whitepaper previously issued and the main comment we likely will issue is that this should not be done piecemeal but at federal level under FTC Preemption issue. Nominating Committee. Feikje noted board members should vote on proxies. Associate Advisory Council. Diana reported that she met with Eric & Christine yesterday to discuss next steps. She noted they have proposed 3 candidates who have been emailed to board. The original intent was for this team to roll off this year, but the proposal is to keep them on for an additional year & start with total of 6 members and roll off at the end of this year. Eric may roll off as board member in which case total number is 5; cut off nomination period; next step Diana will reach out to the 3 nominees. The board members voted and approved next steps. Judge’s Dinner. The board discussed the event and the experiences that were shared by guests. Heather shared that numerous attendees spoke with Mae Jameson who was so gracious. Board members noted the positive feedback from the judges, honored guests and attendees. Members also shared that some of the judges mentioned that Day of the Dinner CLE was a great program, then discussed logistics and financials of hosting that CLE with competing events and potential factors that may impact. The board briefly discussed timing of the Judge’s Dinner next year with Easter and Passover. Previous and Upcoming Programs. March 21 PTAB Meeting- Rob Rando reported it was well attended with over 30 participants and covered view of recent PTAB procedural decisions with more junior practitioners presenting. April 19 Diverse Careers Program- Abigail Struthers reported meeting with relevant stakeholders at Quinnipiac today and on good track to have good attendance. Feikje noted the university is generously providing the food and beverages. April 19 Patent Litigation Committee Meeting Christopher Loh reported the committee discussed techniques for putting together a case for jury trial. Last month, a good joint session on open source software held by the Patent litigation & Transactions committee where 10 non members attended and had a great speaker (auditor from open source software). April 26 US-EPO Liaison Council- Abigail Struthers reported that the panel moderator is Jasmine Decock, a previous NYIPLEF scholarship winner with full panel, at Fish & Richardson, to include Natalia Bailey from Curated Innovation, Karen from UPSTO, and another speaker from IBM. With Jasmine working in Germany, programming will be available by Zoom since we will also have EU attendees. May 10 Annual Meeting- Rob Rando reported NYIPLA is bringing back CLE program for the annual meeting & committee meetings. 1 CLE credit with the goal to have APJs on panel to discuss PTAB practice then a hybrid panel with Chris Israel and someone else from LAC to update what’s happening with IP on Capitol Hill. Still looking for keynote speaker right now. EDNY chief judge has conflicting event on the same day; Chief Judge Swain also has prior commitment but has reached out to find another SDNY judge; there may also be a judge from NJ speaking (invite is out to Judge Baum). Committee Reports. Copyright and Trademark committees- Scott noted have upcoming monthly meetings discussing case law, including the 2 S. Ct. cases at the Half Day CLE program. Fashion Law – Cheryl reported Dyan is excited to build out the committee with her co-chair Doug, and she also noted timing re: formal start of tenure, whether it’s after Annual Meeting. Corporate Committee – nothing to report for now; Diversity Scholarship NYIPLEF – Patrice reported we now have 24 applications which is in line with average submission numbers. She discussed NYIPLEF’s hope to have 2 new awardees, revisiting the question of whether we can donate an extra $10k in line with pre-pandemic. If NYIPLA can donate extra $10k then there would be room for 3 awardees. With financials not entirely reconciled & audit not yet, we will approach conservatively with a vote on donating next year after Annual Meeting is done & financials are all in order. Publications Committee – need to find new co-chair; one chair reached out to rotate off having been a chair for a long time; Maggie Walsh has done amazing job; board discussed the responsibilities of the role and potential best fits. Trade Secrets (Mark Schildkraut reported monthly meeting continue with next meeting tomorrow; discussed inventorship and authorship but also trade secret component to chatGPT, mentioned it would be great to have a program around it Patent Prosecution – Committee discussed Patent Center upgrades e.g., delayed doc X and filing application requirements; and pros and cons of no longer issuing papers letters patents; Women in IP – Linnea reported Ashley one of the 3 co-chairs is nominated to the board; so the other 2 chairs can stay on, no need to replace; highlight last committee call great brainstorming session have women distillers to share wines and drinks they make and create a great networking event with tastings and recruit in-house in addition to private practice members; Young Lawyers – Rob Isackson noted no new reports Executive Session. Board members discussed RRR contract renewal. The members discussed the contractual history, how that evolved during the pandemic, next steps and agreed to approve via email once the terms have been circulated. Meeting adjourned at around 5:25 pm ET.
MINUTES OF APRIL 11, 2023 MEETING OF THE BOARD OF DIRECTORS OF THE NEW YORK INTELLECTUAL PROPERTY LAW ASSOCIATION By Zoom New York, New York
MINUTES OF MAY 10, 2023 MEETING OF THE BOARD OF DIRECTORS OF THE NEW YORK INTELLECTUAL PROPERTY LAW ASSOCIATION Union League Club New York, New York
In attendance were: Rob Rando, President, presiding Paul Bondor Heather Schneider Patrice Jean Abby Struthers Chris Loh Eric Greenwald David Goldberg Jenny Lee Diana Santos Jeffrey Coleman Cheryl Wang Feikje van Rein attended in-person from the Association’s executive office. Mark Schildkraut, Ashley Ross, Linnea Cipriano and Lauren Emerson were unable to attend. Nick Forgione, James Breen, Jennifer Denault, incoming members of the Associate Advisory Councilattended. Christine Lauture and Khalil Nobles from the AAC were unable to attend. President Rob Rando called the meeting to order around 5:30 PM ET. The board waived reading of the minutes and approved the minutes for the April board meeting. President Rando mentioned that a long-term project will be analyzing bylaws and bring up to date if necessary. Another project includes holding a membership fair. He shared the new committees, which include AI Cybersecurity and Data Privacy; Entertainment Sports and Social Media; and Past President’s Committee to create a bridge between generations of historical knowledge. Rob also noted he will begin law firm outreach to discuss benefits of NYIPLA, what we represent and our rich history. Financial Report. None this month. Amicus Briefs Committee. Waiting for decisions to issue in June. May have panel at the half-day CLE program given the S. Ct. cases that are being monitored. May be sending conflict checks out next week for some watch list cases. Legislative Action Committee. Board approval needed on Patent Settlement legislation whitepaper. The board voted to approve whitepaper to be submitted to NY state legislature. Previous and Upcoming Programs. April 19th– well attended, Dale (past president hosted) Diverse Careers April 19th Patent Litigation – well attended, exposure for up & coming attorneys April 26th– Jasmine Decock, graduate of NYIPLEF scholarship award winner, Program hosted by Women in IP, EU patent office reps attended May 10th– Annual Meeting May 18th– Patent Law & Practice Meeting report next month July 12th– Summer Assoc moot court program – Mark Bloomberg will take the lead July 19th or 20th - TM Committee Half Day CLE New Business. Conflict of interest form to be completed by board membered, and necessary for audit. Meeting adjourned around 5:47 pm ET
MINUTES OF JUNE 13, 2023 MEETING OF THE BOARD OF DIRECTORS OF THE NEW YORK INTELLECTUAL PROPERTY LAW ASSOCIATION Greenspoon Marder office, New York
In attendance were: Rob Rando, President, presiding Jenny Lee Lauren Emerson Patrice Jean Abigail Struthers Paul Bondor (left at 6:18 pm) Jeffrey Coleman Jennifer Deneault Nicholas Forgione David Goldberg (dialed in) Diana Santos (5pm – 5.45pm) Chris Loh (dialed in) Eric Greenwald (dialed in at 5.40pm) Cheryl Wang (dialed in) Khalil Nobles AAC (dialed in) Ashley Ross (dialed in) James Breen (dialed in) Feikje van Rein Feikje van Rein attended in-person from the Association’s executive office. Nick Forgione, James Breen, Jennifer Denault, new members of the Associate Advisory Council, attended. Heather Schneider and Christine Lauture from the AAC were unable to attend. President Rob Rando called the meeting to order around 5:07 PM ET. The board members were reminded about the Annual Disclosure Statement that is required for each board member to sign. The board waived reading of the minutes and approved the minutes for the May 2023 board meeting subject to confirmation of attendees. Financial Report. Jeffrey Coleman reported that there was nothing new to share yet, pending audit results. Feikje presented a proposal to convert the existing 2 FDIC insurance amounts to short term CD given 4.5%. NYIPLA has a commercial account not business account and a more beneficial rate would apply once we can move from the commercial to business group. Motion made to invest funds at BofA and Chase in interest bearing accounts for short term CDs was passed. New Members & Membership Drive. Jeffrey Coleman reported that there have been 184 new members since May 1st, including from the Judges’ Dinner. Motion to waive reading of the names and to admit new members was approved. President Rando discussed with the board some creative ideas for the membership drive initiative, starting with those who have not been members or have not been in 2 years. Amicus Briefs Committee. David Goldberg reported on 3 Supreme Court decisions: 1) Andy Warhol copyright fair use (brief urged court to consider totality of circumstances test; instead, the Court focused narrowly on whether the artwork in question was intended to be an illustration to decide it was not fair use), 2) Amgen v. Sanofi case regarding patent-brief dealing with pharmaceutical applications enablement under Section 112 (brief advocated for rule that applicant would need to disclose reasonable number of species; court decided that when patent claims an entire class, the specs was to enable) and 3) Jack Daniels dog toy trademark case; (brief argued traditional trademark analysis should come before analysis under Roger test and Court agreed). In Re Systolic Antitrust litigation– propriety of reverse payment by biological pharma to potential generic competitors; we’re waiting to see how opening brief looks before deciding whether to join Trump too Small Case– S. Ct striking down parts of Lanham Act - Court did take cert & have reached out to Trademark Committee to see if interest in getting involved. Dallas Pharma v Norwich PHARMA Hatch Waxman- whether the use of protocols that have been submitted to clinical trials and they’re used by pattern of challengers as an obviousness reference; waiting to consider filing amicus. About a dozen cases on the Watch list circulated. Legislative Action Committee. Paul Bondor reported Main focus – stimulate discussion to attract more participation especially by younger lawyers. Discussed value of committee and active participation. Draft comments due to PTO by the 20th; response from board members needed by Thurs noon. 102nd Judges Dinner, March 22, 2024. Rob Rando reported the Hilton contract has been executed and Contemplating an OPS award recipient. Presidents’ Forum. President Rando mentioned he’d like to have at least 2 events. Parliamentarian (volunteer) President Rando asked for an administrative volunteer to ensure compliance with bylaws and rules of order; Nick Forgione accepted. Project Team Bylaws (volunteers) Jonathan Bershadsky has agreed to be point person. Bring in-line with current practices, modernize rules e.g., for hybrid and virtual meetings. Lauren, Jenny & Patrice volunteered as well. David also agreed to review Amicus Brief guidelines to update Easiest deadline is Annual Meeting so it can be voted on. AAC. MentorshipDiana Santos proposed a mentorship program splitting the board into 2 groups: summer / fall, winter/spring; board member will set up meeting each season for 1 skill/experience. Rotate through committees and projects/programs to ensure broad experience. Previous / Upcoming Programs. 05/16 PTAB Program David Goldberg reported Seems it was productive but was not able to attend; lively and robust discussion about proposed rules; well-done program and about 20-30 attendees; 05/18 Patent Law & Practice Committee Meeting Jeffrey Coleman No formal agenda but looking to put together programming similar to PTAB 06/15 Women in IP Committee Happy Hour Ashley Ross reported the Committee has been discussing readiness for in-person programming ; About 20 people registered so far 06/20 PTAB Program David Goldberg; 2nd chance look at amending claims during IPR and presentations from Stephen Kenny, Jeffrey Lewis, and Peter Sullivan 06/21 Patent Litigation Committee Meeting Christopher Loh reported One hour CLE speaker Peter Tong, former clerk of Judge Albright in the Western District of Texas 07/12 7th Annual Moot Court Program Robert Rando Hypothetical based on Jack Daniels case. Currently reaching out to 2nd Circuit judges to participate 07/18 PTAB Program David Goldberg 07/20 Half-Day Trademark CLE Program Lauren Emerson Speaker from copyright office, panel discussing recent decisions; social media & influencers panel and brief AI New Committees President Rando noted he would like to set up new arbitration mediation & neutrals committee; 3 co-chairs; 3 mock programs as CLE programs to benefit junior and senior practitioners. Motion was made and Board approved formation of new committees. President Rando also mentioned a Weekly podcast idea– Past president related to experiences during term; highlight contents of weekly update; Colman agreed to do 1st. New Business. Conflict of interest form to be completed by board membered, and necessary for audit. Meeting adjourned around 6:53 pm ET
In attendance were: Rob Rando, President, presiding Cheryl Wang Jeffrey Coleman Patrice Jean Jenny Lee Chris Loh David Goldberg Eric Greenwald (dropped off at 6:30 pm) Ashley Ross (dropped off at 6:30 pm) Paul Bondor Lauren Emerson (joined around 5:10 pm) Linnea Cipriano (joined around 5:10 pm) Diana Santos (joined at 5:15 pm) Feikje van Rein attended in-person from the Association’s executive office. Nick Forgione, James Breen, from the Associate Advisory Council,attended. Abigail Struthers, Heather Schneider, Mark Schildkraut, and Jennifer Denault, Christine Lauture and Khalil Nobles from the AAC were unable to attend. President Rob Rando called the meeting to order around 5:04 PM ET. The board waived reading of the minutes and approved the minutes for the June 2023 board meeting. Financial Report Jeffrey Coleman reported that audit results are still pending Membership numbers up compared to YTD and overall looks good. New members Jeffrey Coleman reported that since May, there have been 10 new members. Motions waive reading of the names and to admit the new members were approved. Jeffrey noted that membership has increased in all other categories except student membership. Membership Drive– Rollout in September Rob Rando noted he would like to get drive going so it can be rolled out in September and opened the floor to discussing ideas such as the financial incentive/voucher plan proposed. Aside from encouraging summer associates to join; the board discussed intangible offers / incentives and consider whether certain paid programs might be feasible to include as part of membership. Sub-committee volunteer group to get membership drive for fall rolling: Nick, Patrice, Jenny & Rob start. Amicus Briefs Committee David Goldberg noted Fed Circuit to consider en banc, a case involving obviousness tests for design patents and the Committee will draft a brief weighing in on whether Rosen is no longer consistent with precedent in the context of design patents. Conflicts checks to be run by Fri because the briefs in support of neither party are due Aug 28th. Committee is hoping to get final version by Aug 17th with req for comments by 23rd. All recorded June decisions are included in the long watch list that’s been distributed. For now, LKQ case is the committee’s focus and GM is involved. The board discussed Pres. Rando’s proposal of potentially holding a special session on Aug 22nd to ensure sufficient time/discussion for ABC & other key board initiatives. Legislative Action Committee Patent Eligibility Restoration Act of 2023 Rob Rando reported that Sen. Tillis & Sen. Coon’s staff has requested NYIPLA feedback/position on 101. Paul Bondor summarized LAC meeting discussing potential comments for this Act and the various feedback / reactions discussed at the meeting; the proposal draws strong viewpoints. Board members approved reviewing materials for discussion in the Aug special session. 102nd Judges Dinner, March 22, 2024 Rob suggested an OPS recipient and committed to providing background along with bio which has been circulated to the board. Board agreed to revisit when decision needs to be made. Presidents’ Forum – Topic Suggestions President Rando soliciting ideas; would like to do 2 this year; Oct/Dec and Feb will put on agenda for Sept meeting Project Team Bylaws Confirmed Project Team Bylaws volunteers and proposing next step set up milestones. AAC Mentorship Diana Santos reported that a document circulated to board members for proposed mentors & mentees for fall. Sponsorships Robert Rando noted we are looking into venues for Nov time frame programs. Estimated costs are about $15-20k to do full day CLE for 70 people which would require us to charge an amount for that CLE that could be high enough to influence attendance. Discussed inquiring with law schools about potential venue and/or seeking potential vendors which may have venues. Previous/ Upcoming programs 06/15 Women in IP Committee Happy Hour Ashley Ross reported event was well-attended and lots of younger practitioners which is great; in-person socially was helpful; being clear next time to ensure it’s clearer that men are welcome as well 06/20 PTAB Program David Goldberg another great event, topic: amending claims during IPRs 06/21 Patent Litigation Committee Meeting Christopher Loh reported event was well attended about 25 ppl – Former clerk for Judge Albright in W. District of Texas – how to concede & what to say to judges; substantive trial tips 07/12 7th Annual Moot Court Program Robert Rando reported program was very well done; impressive participants; judges were great and took pictures with the competitors. Lots of work went into helping to prep and set up to make sure program ran smoothly. 07/18 PTAB Program David Goldberg noted there were 27 attendees today covering Tips from 4 APJs on ex parte appeals 07/20 Half-Day Trademark CLE Program Lauren Emerson reported Upcoming event with Judge Kuhlke from TTAB; copyright office speaker coming; interesting panels covering recent decisions, AI discussion panel, celeb branding & influencer panel with Naughty by Nature; mix of private practice & in-house; about 40 people signed up 08/15 and 09/19 PTAB Program David Goldberg reported will cover topics such as Estoppel & IPRs Fall Fashion Committee ProgramCheryl Wang Oct 11 that Pryor Cashman program to cover tech & fashion; CW to reach out for potential program with FIT Committee Reports Publications Committee has reached out to various people for summer publications issue. Need more volunteers on the Publications Committee. Old Business Past President Podcasts - discussed including a YLC member for exposure Arbitration, Mediation and Neutrals Committee - Seeking board liaison New Business (Bi) Monthly meetings at law schools – do one every other month would be great; fall is a great time to also mention Connor Writing Competition No Executive Session. Meeting adjourned at 6:42 pm ET.
MINUTES OF JULY 18, 2023 MEETING OF THE BOARD OF DIRECTORS OF THE NEW YORK INTELLECTUAL PROPERTY LAW ASSOCIATION By Zoom New York, New York
NYIPLA Annual Meeting By: Heather Schneider, Partner at Willkie Farr & Gallagher LLP; and Robert J. Rando, President of NYIPLA, and Partner at Greenspoon Marder LLP Dorothy Auth, Partner at Cadwalader Wickersham & Taft LLP assisted in coordinating the CLE portion of the Annual Meeting On May 10, 2023, incoming Association President Robert J. Rando welcomed members and guests at the Union League Club. Robert expressed his appreciation for outgoing president, Heather M. Schneider. The Annual Meeting started off with a CLE program on "Artificial Intelligence: Where Will AI Take the Law?" It was hosted by the Amicus Brief, Patent Litigation, Trademark and Copyright committees, and we were joined by the following speakers: Dorothy Auth Cadwalader, Wickersham & Taft LLP (Moderator) Chris Israel, American Continental Group Mark Doerr, Greenspoon Marder LLP Diana Santos, IBM Joshua Weigensberg, Pryor Cashman After the CLE program, members were invited to join us for the Committee Meetings, Annual Meeting of Members, Board Meeting, and the Awards Dinner. PTAB Committee Meeting: Discussion of Proposed Rules for PTAB Practice By: PTAB committee On April 21, 2023, the USPTO proposed as Advanced Administrative Rule Making, “Changes Under Consideration to Discretionary Institution Practices, Petition Word-Count Limits, and Settlement Practices for America Invents Act Trial Proceedings Before the Patent Trial and Appeal Board” (see https://www.federalregister.gov/documents/2023/04/21/2023-08239/changes-under-consideration- to-discretionary-institution-practices-petition-word-count-limits-and), and is looking for comments by June 20, 2023. In the May 16, 2023 PTAB Committee meeting of the NYIPLA, there was a spirited discussion on the “Key Areas” addressed by the AARM including: Key Area 1: Better ensure our practices align with the USPTO’s mission to promote and protect innovation and investment, and with the congressional intent behind the AIA to provide a less expensive alternative to district court litigation to resolve certain patentability issues while also protecting against patentee harassment Key Area 2: Enhance and build on existing precedent and guidance regarding exercise of Director’s discretion to determine whether to institute an AIA proceeding Key Area 3: Provide threshold definitions that apply to one or more categories of petitions subject to discretionary denials, setting forth criteria used to determine “substantial relationship,” “substantial overlap,” and “compelling merits” Key Area 4: Provide procedural enhancements Key Area 5: Clarify filing requirements for Settlement Agreements Co-Chairs Charley Macedo and Ken Adamo, and President Rob Rando lead the discussion, with Former APJ Brian Murphy, LAC Co-Chair Anthony Lo Cicero, and our legislative consultant Chris Israel. Patent Law & Practice Committee Meeting By: Patent Law and practice committee On Thursday, May 18, the NYIPLA Patent Law & Practice Committee welcomed Jeanne Clark, the current MPEP Editor at the USPTO. Jeanne discussed the latest MPEP revision, of sections of chapters 100, 200, 400-1500, 1700, 1800, 2000-2200, 2400, 2500, and 2700-2900 and Chapter FPC - Form Paragraphs Consolidated, the Foreword, Introduction, Subject Matter Index, and all appendices except Appendix I and Appendix P. Women in IP Committee Happy Hour Event By: Women in IP Committee On June 15, the NYIPLA Women in IP Committee had an evening of cocktails and conversation at Trademark Bar + Kitchen (38 W 36th Street, New York, NY 10018). All were welcome to mix and mingle (discussion of the law is optional). PTAB Committee Meeting: A Second Chance? A look at Amending Claims During IPRs By: PTAB Committee How does claim amendment work in an IPR, and impact parallel litigation? What’s PTAB’s views of these actions? What does a successful motion to amend look like? What can you raise to oppose a motion to amend? How do you respond to PTAB’s preliminary views and final decisions on amendments? Attendees joined the NYIPLA PTAB Committee on June 20 and learned about all these issues. Patent Litigation Committee: Lessons Learned from the Western District of Texas By: Patent litigation Committee Attendees joined the NYIPLA's Patent Litigation Committee on June 21st and welcomed Peter Tong, Partner at Russ August & Kabat for the program 'Lessons Learned From the Western District of Texas'. Judge Albright still has one of the largest patent dockets. Peter Tong clerked for Judge Albright in 2022. He will share lessons learned from countless discovery disputes, hearings, and trials. This includes an in-depth discussion of venue law and transfer motions. Peter continues to monitor the Waco patent docket and summaries interesting decisions on his LinkedIn page. 7th Annual Summer Associate Moot Court Argument CLE Program By: Robert J. Rando, President of NYIPLA, & Partner at Greenspoon Marder LLP; and Mark H. Bloomberg, Of Counsel at Zuber Lawler LLP This year's program, which took place at the Thurgood Marshall U.S. Courthouse on July 12, included substantive law topics that are at the forefront of current trademark litigation based on a hypothetical case drawn from the Jack Daniel's Properties, Inc. v. VIP Products LLC case. Participating firms, which included Goodwin Procter LLP, Greenspoon Marder LLP, Venable LLP, and Willkie Farr & Gallagher LLP, presented an oral argument on behalf of the interested parties. The Judges heard the argument, retired to conference the case, and returned to the bench with their comments. They also answered questions related to the mock argument and their deliberations in the case conference. The program was followed by a Networking Reception from 7:30 PM - 8:30 PM. The Judges' Panel consisted of the following: Hon. Colleen McMahon, U.S. District Court, Southern District of New York, sitting by designation Hon. Edgardo Ramos, U.S. District Court, Southern District of New York, sitting by designation Hon. Elizabeth S. Stong, U.S. Bankruptcy Court, Eastern District of New York, sitting by designation PTAB Committee Meeting: Learn About Ex Parte PTAB Appeals from PTAB APJs By: ptab Committee On July 18, PTAB Committee Co-Chairs Charley Macedo and Ken Adamo, and NYIPLA Board Liaison David Goldberg lead the discussion, joined by USPTO APJs Debra Dennett, Michael Cygan, John Fredman, and Brandon Warner to discuss steps of an ex parte appeal, how to correct mistakes made when filing the appeal briefs, and strategies for preparing an appeal brief. We were excited to have insightful contributions from the USPTO on the processes and procedures of appeal briefs and what can be done when inevitable mistakes arise throughout the process of preparing a brief. Hot Topics In Trademark & Copyright Law By: Trademark Law and Practice COmmittee On July 20, 2023, NYIPLA's US Trademark Law & Practice Committee presented its annual Hot Topics in Trademark & Copyright Law half-day CLE program at the midtown offices of King & Spalding LLP. Judge Karen Kuhlke, of the USPTO’s Trademark Trial and Appeal Board (“TTAB”), kicked off the program as the keynote speaker for the trademark portion. Judge Kuhlke provided a fast-paced and enlightening summary of TTAB stats, recent developments, expert tips for pleading and discovery, and ex parte appeal “dos and don’ts.” Practitioners should note that there is now an established process for nominating a TTAB decision to be designated as precedential. Nominations for precedential status may be filed via the USPTO’s website, and can be submitted anonymously. Providing key updates from a copyright perspective was Deputy General Counsel of the US Copyright Office, Emily Chapuis. Chief among the topics discussed was the Copyright Office’s recently-issued guidance on artificial intelligence, which clarifies that a work created by a machine lacks human authorship and creative control. Thus, copyright registration will not be granted for AI-generated material. In an application for copyright registration for a work which also includes elements of original human composition, all AI-generated elements must be disclaimed. Additionally, IP specialists will be pleased to learn that the US Copyright Office has mostly cleared the backlog created by the pandemic. The Office is also maintaining the pandemic-era accommodation of accepting a digital copy of the best edition of a work, along with a declaration confirming that applicant has sent or intends to send the required physical copies within three (3) days. This allows the Office to examine the digital copy instead of waiting to receive physical deposit copies, and results in faster processing of applications and issuance of registrations. Sherli Furst, IP Counsel at Manatt, Phelps & Phillips, LLP, delivered an inspired and insightful presentation on the ever-evolving challenges of IP protection in the age of artificial intelligence, particularly generative AI. Major factors to be considered include who owns the generated content, as well as the possibility that users of the generative AI platforms may be liable for indemnification to the platforms for any infringement arising from use thereof. The program also featured three panels on attention-grabbing matters, starting with an in-depth discussion of the interaction between trademarks and celebrity branding in the cannabis space. Aliya Nelson, Partner, Greenspoon Marder LLP, moderated a candid and thought-provoking conversation amongst Vinnie Brown of Naughty by Nature, Inc., Mark Spark Welch of Green Leaf Productions, and Vladimir Bautista of Happy Munkey LLC. The panel spoke candidly about the challenges of navigating the intricacies of state and federal cannabis laws and regulations, while simultaneously enforcing against infringers and imitators. Against the backdrop of rapidly changing perspectives on the effects of marijuana use, the panel drove home how important it is to remember and account for those who have been negatively impacted by harsh drug laws and societal stigmas as countless new lucrative entrepreneurial opportunities become available in this industry. Social media influencer Jeannie Ferguson provided an authentic take on what it is really like to be an influencer. Her witty, no-nonsense accounts of successful, as well as less-than ideal engagements provided valuable behind-the-scenes insight. Moderated by Mitchell Stein, Partner, BraunHagey & Borden LLP, the panel also included Eli Nathanson, Partner, Pryor Cashman LLP and Octavia Taylor, Senior Director, Legal & Business Affairs, A+E Networks, who offered valuable insight about major elements of an influencer contract, from a legal representation and business viewpoint, respectively. Exclusivity of the engagement, ownership of the involved IP, morals clauses, and reverse morals clauses are not only foremost among the elements of influencer contracts, but are also most likely to garner major media headlines when things go wrong. Rounding out the stimulating discussions was a thorough and lively summary of the several recent IP decisions handed down by the US Supreme Court. The recent decisions may have resolved some outstanding issues, but on closer review have also raised more questions on key IP concerns. Further litigation would not be surprising, the panel concluded. Barbara Solomon, Partner, Fross Zelnick Lehrman & Zissu, P.C., moderated the discussion on the key takeaways and unresolved concerns at the center of the recent SCOTUS decisions, as presented by Marissa Lewis, Partner, Mitchell Silberberg & Knupp LLP, Ben Quarmby, Partner, Molo Lamken LLP, and Martin Schwimmer, Partner, Leason Ellis LLP. The program was a resounding success, and would not have been possible without the contributions of the many speakers, panelists, and moderators, as well as our law firm host. Sincere thanks to all involved!! Following the program, attendees were invited to network and mingle at a wine reception. The US Trademark Law & Practice Committee’s co-chairs are Deirdre Clarke (IP Counsel, Novartis Pharmaceuticals Corporation) and Lindsey Utrata (IP Counsel, Latham & Watkins). - Lindsey Elise Utrata, IP Counsel, Latham & Watkins LLP PTAB Committee Meeting: USPTO - Updates to the Interim Director Review of PTAB Decisions By: ptab Committee On August 15, the NYIPLA PTAB Committee discussed the USPTO decisions of the interim process and the extension of the Director Review (DR) option to institution decisions. In this interactive meeting hosted by Co-Chairs Charley Macedo and Ken Adamo, the NYIPLA PTAB Committee welcomeed our distinguished featured guests - Administrative Patent Judges, Kal Deshpande and James Worth – to discuss the new interim director review process. Updates to the interim director's review include: Expanding the process to permit parties to request DR of PTAB decisions on institution in AIA proceedings. Providing updated guidance as to what types of issues the Director will consider in DR, as well as additional guidance on various topics, such as the initiation of DR at the sole discretion of the Director (sua sponte DR), remands to PTAB for further proceedings, and sanction authority of the Director. Providing the Director, the option to delegate review to a new independent panel called the Delegated Rehearing Panel (DRP). Creating a new Appeals Review Panel (ARP), which may be convened by the Director sua sponte, to review PTAB ex parte, reexamination, or reissue appeal decisions. Patent Litigation Committee Meeting: Litigation Funding By: patent litigation committee On Wednesday, August 23, 2023, the Patent Litigation Committee delved into the intriguing realm of litigation funding in patent litigation, including insights specific to the Unified Patent Court (UPC). We were honored to have two distinguished guest speakers, Ben Quarmby (Partner, MoloLamken LLP) and Jonathan E. Barbee (Counsel, MoloLamken LLP), who shared their expertise and experiences in this field.
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Theodore McDonough, formerly of Carter Ledyard & Milburn LLP, has joined Eckert Seamans Cherin & Mellott LLC as a Partner. Wesley White, formerly of Reichman Jorgensen Lehman & Feldberg LLP, has joined Orrick Herrington & Sutcliffe LLP as a Partner. Scott Weingaertner, Stefan Mentzer, and John Padro, formerly of White & Case LLP, have joined Goodwin Procter LLP as Partners. Timothy Murphy, formerly of Sunstein LLP, has joined Nutter McClennen & Fish LLP as a Partner. Jordan Altman, formerly of Shearman & Sterling LLP, has joined Ropes & Gray LLP as a Partner. Lawrence Drucker, formerly of Liston Abramson LLP, has joined Taylor English Duma LLP as a Partner. Paul Keller, Michelle Wang, and James Reed, formerly of Allen & Overy LLP, have joined Crowell & Moring LLP – Keller as a Partner and Wang and Reed as Counsel. David Barr, formerly of Stroock & Stroock & Lavan LLP, has joined Venable LLP as a Partner. Tim Gilman, Chris Gerson, Saunak Desai, Greg Springsted, and Ryan Singer, formerly of Stroock & Stroock & Lavan LLP, have joined Schulte Roth & Zabel LLP – Gilman and Gerson as Partners, Desai as Special Counsel, and Springsted and Singer as Associates. John Laurence, formerly of Grant Attorneys at Law PLLC and Warshaw Burstein, LLP, has joined Flaster Greenberg PC as Counsel. Michael Eisenberg, formerly of Steptoe & Johnson LLP, has joined Stevens & Lee as a Shareholder. Stephen Yang, formerly of Steptoe & Johnson LLP, has joined Dentons as a Partner. Stephanie Abrutyn, formerly general counsel of Grid, has joined Dentons in New York and Washington, DC as Counsel. Joseph Saphia and Jeffrey Weinick have been named co-chairs of the patent group at Chiesa Shahinian & Giantomasi PC.
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October 10/04/2023 Corporate & Young Lawyers Committee Happy Hour 10/17/2023 PTAB Committee Meeting November 11/08/2023 One Day Patent CLE Seminar