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New for Patent Office Rules for Patenting Products Incorporating Artificial Intelligence

Brett Trout

The New Guidance Update

The United States Patent and Trademark Office (USPTO) has just released its 2024 Guidance Update on Patent Subject Matter Eligibility, Including on Artificial Intelligence (AI). These new guidelines took effect July 14, 2024. The USPTO issued this guidance update on patent subject matter eligibility to address innovation in critical and emerging technologies, especially AI. 

The new guidance leaves intact the current Alice/Mayo test for patent subject matter eligibility. Under Alice/Mayo, if the claim is found to be directed to a judicial exception (such as an abstract idea) the analysis shifts to evaluate whether the additional claimed elements amount to “significantly more” than the recited judicial exception itself. The new guidance is primarily directed at the first prong of this test. In determining whether a claim is directed to a judicial exception, the Patent office undertakes another two-part test: (1) whether a claim recites an abstract idea or other judicial exception; and (2) if so, whether the claim as a whole integrates the recited judicial exception into a practical application of the exception. If either of these apply, the claim is not “directed to” the judicial exception and is therefore otherwise patent eligible. 

In determining whether the claim integrates the judicial exception into a practical application the USPTO will: (1) identify whether there are any additional elements recited in the claim beyond the judicial exception(s), and (2) evaluate those additional elements individually and in combination to determine whether they integrate the exception into a practical application of that exception. One way to demonstrate integration of the judicial exception into a practical application is to show that the claimed invention improves the functioning of a computer or improves another technology or technical field. The improvement must be to the technology itself, as opposed to merely improving the judicial exception. In short, a claim to a technological solution to a technological problem meaningfully limits the claim by going beyond generally linking the use of the judicial exception to a particular technological environment, and thus transforms the claim into patent eligible subject matter. Therefore, when drafting a claim involving AI, the claim must cover a particular solution to a problem or a particular way to achieve a desired outcome, as opposed to merely claiming the idea of a solution or outcome.

As stated in the new guidance:“A key point of distinction to be made for AI inventions is between a claim that reflects an improvement to a computer or other technology described in the specification (which is eligible) and a claim in which the additional elements amount to no more than (1) a recitation of the words “apply it” (or an equivalent) or are no more than instructions to implement a judicial exception on a computer, or (2) a general linking of the use of a judicial exception to a particular technological environment or field of use (which is ineligible). “An important consideration in determining whether a claim improves technology is the extent to which the claim covers a particular solution to a problem or a particular way to achieve a desired outcome, as opposed to merely claiming the idea of a solution or outcome.” AI inventions may provide a particular way to achieve a desired outcome when they claim, for example, a specific application of AI to a particular technological field ( i.e., a particular solution to a problem).In these situations, the claim is not merely to the idea of a solution or outcome and amounts to more than merely “applying” the judicial exception or generally linking the judicial exception to a field of use or technological environment. In other words, the claim reflects an improvement in a computer or other technology.

A good way to integrate a judicial exception into a practical application is not to draft a patent claim that merely applies an abstract idea to an entire technology, but to draft a claim that applies, relies on, or uses the judicial exception in a manner that imposes a meaningful limit on the judicial exception. Merely applying the exception to a system, in an effort to monopolize or preempt the judicial exception, is insufficient.

Patentability of inventions created by artificial intelligence

When the topic shifts from patenting AI technology to AI-created technology, the analysis shifts from subject matter eligibility to inventorship. Inventions created solely by AI are not patentable, since there is no human inventor. AI-assisted inventions are patentable, however, where one or more humans made a “significant contribution” to the claimed invention.

Practice Takeaway

While the new guidance may not necessarily clarify the previous guidance, the new guidance does offer several examples to distinguish between what AI technologies the USPTO believes are patentable and which are not. The key takeaway from the new guidance is that when drafting patent claim that incorporate artificial intelligence, practitioners must take great care to incorporate the claimed technology into discrete, definable, and practical outputs that impose meaningful limits on the underlying abstract idea.  

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By Brett Trout
July 26, 2024

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Suing Over Artificial Intelligence

Brett Trout

The New York Times (NYT) has sued Defendants Microsoft and various OpenAI companies for allegedly using its copyrighted material to train their Copilot and ChatGPT products respectfully. The lawsuit includes claims of copyright infringement (direct, vicarious, and contributory), removal of copyright management information, unfair competition by misappropriation, and trademark dilution.

In its complaint, NYT argues the Defendants violated its copyright by publicly displaying NYT  material (“Works”) in the form of GPT output and in synthetic search results. NYT also claims that in response to inquiries, ChatGPT’s API returned “hallucinations.” Hallucinations are article titles and hyperlinks purportedly promulgated by NYT but which do not, in fact, exist. Another issue is Defendants allegedly built AI training datasets containing millions of copies of Times Works garnered by scraping Works from NYT websites and reproducing Works from third-party datasets, NYT argues that by storing, processing, and reproducing the training datasets containing millions of copies of Works to train the GPT models on Microsoft’s supercomputing platform, and by disseminating generative output containing copies and derivatives of Works through the ChatGPT and Bing Chat offerings, Defendants has infringed NYT’s copyrights. 

In response to this lawsuit, Defendants have requested to see copies of any documents NYT used to create the Works. The reasoning is that under the law NYT may only claim copyright over those portions of the Works that are original to the author and owned by NYT. More precisely, NYT cannot claim ownership over any portions of the Works that were AI-generated, copied from other authors, and/or in the public domain. While NYT may claim copyright in derivative works created from pre-existing material, the extent of that protection extends only to NYT’s contributions that are non-trivial and original.  

Defendants have a point. NYT’s copyright registrations could be invalidated if, hypothetically: 1) some of the Works include non-copyrightable material; 2) that inaccurate information was knowingly withheld from the Copyright Office;and 3) the Copyright Office would not have granted the registration if the correct information had been provided (17 U.S. Code § 411). In reality, even assuming some hypothetical non-copyrightable information was included and not revealed to the Copyright Office, proving that NYT knowingly withheld such information from the Copyright Office would be very difficult. On a more practical note, even if NYT did not knowingly withhold such information, any revelation that NYT secretly uses third-party or AI-generated material in its news stories could be critically damaging the NYT’s reputation. In such a hypothetical, NYT might be inclined to drop the lawsuit, rather than disclose this information publicly.  So while the discovery request may not have much teeth from a technical standpoint, it may have a large impact from a practical standpoint.

Not surprisingly, NYT has objected to the Defendants’ discovery requests, arguing that they are overboard, vague, and that the requested material is protected by the reporter’s privilege under the First Amendment. Defendants responded stating that the requests are narrowly tailored, do not request source identities, that the information is not reasonably obtainable from other sources, and that the information is critical in determining whether NYT is asserting copyright over material that is non-expressive, non-human authored, created by third-parties, and/or in the public domain. 

It is unclear at this point whether the court will compel NYT to turn over the requested documents. What is clear is that if you are going to try to sue someone for using your copyrighted work to train its AI, it is critically important that the copyrighted work you are asserting is actually yours and does not contain any non-expressive, non-human authored, third-party, and/or public domain material. This is especially important to identify when filing for copyright registration in your works. When filing a copyright registration on any work that contains any pre-existing material it is critical to create a chart and record of each pre-exiting and AI-generated element that went into the creation, along with a file containing copies, and/or the names, of each pre-existing and AI-generated work (taking care not to infringe any third-party copyrights in the process). For large operations generating hundreds or thousands of copyrighted works a day this additional documentation could be quite onerous. In addition to protecting your copyright registrations from invalidity, this extra record-keeping fosters an environment that incentivizes authors to avoid improperly using third-party material. More importantly, this type of detailed documentation may encourage the infringer to acquiesce to a quicker settlement on better terms. 

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By Brett Trout
July 22, 2024

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Who Owns the Word “MEEPLE”

History of the Meeple
There has been a recent uproar in the board gaming community over ownership of the beloved term “meeple.” Most board gamers believed the word was a generic term for the classic small wooden people used in board games all over the world. The first use of a humanoid silhouette as a game token appears to be the use of a humanoid bust in the 1982 game Survive! The first game to use a full body humanoid silhouette token appears to be in the 1984 Ravensburger game Under Cover. https://en.wikipedia.org/wiki/Top_Secret_Spies The Under Cover meeple were much larger and had a different shape than the modern, tiny, sloped-shouldered meeple.  The 1998 game Europa 1945-2030 used smaller meeple, much closer in design to the modern meeple we know today. https://therewillbe.games/articles-essays/8552-what-is-a-meeple-history-of-the-iconic-board-game-piece

Invention of the Modern Meeple
Bernd Brunnhofer is credited with creating the modern meeple design, first used in the 2000 game Carcassonne published by his employer German board game publisher Hans im Glück.  Although Hans im Glück was the first to use a modern meeple in a game, the meeple was not called “meeple” at the time. The term meeple does not appear to have been used until American Alison Hansel coined the term while playing a game of Carcassone in 2000, Ms. Hansel first uttered the portmanteau “meeple,” while referencing “my people” during the game. Later that year she posted her new word to an online game forum and the term took off. The rest is history. 

Meeple Becomes Generic
Since 2000, the term “meeple” has been used generically throughout the industry, being incorporated into titles of dozens of board games, with generic meeples being used in thousands more all over the world. The term is so ubiquitous that several United States trademark registrations have formally disclaimed the term “meeple,” legally recognizing that third-parties have a legitimate need to use the term “meeple” to describe and market their own goods and services.

The Cease-and-Desist letter
All was well and good in the world of meeple. That is, up until 2024. In early 2024, board game publisher Cotsworld Games launched a crowdfunding campaign on Gamefound for its newest game “Meeple, Inc.” Soon after the launch, Hans im Glück sent Cotsworld a cease-and-desist letter, asserting ownership rights in the word “meeple” and demanding Cotsworld remove all references to “meeple” from its game. Although Cotsworld quickly removed the term from its game and simply proceeded on with its crowdfunding, the board game community was understandably up in arms. 

How could a company simply remove a word that millions of people have used generically for decades? Well, the answer is complicated. In the United States no one has a federally registered the word “meeple” for board games. It is not that no one has ever thought of it, it is just that in the United States you are not allowed to register words that are descriptive of, or generic for, the associated product. So while you could possibly obtain a federally registered trademark on “meeple” for rolling pins, you would not be able to obtain a federally registered trademark on “meeple” for the classic small wooden people used in board games all over the world. 

U.S. Trademark Rights in “Meeple”
There are other United States trademark registration that have issued and which contain the word “MEEPLE.” A company called Meeple Madness, Inc. out of Georgia has a federal trademark registration on a design that includes the word “meeple” with the “A” replaced by the figure of a meeple, as used in association with online and offline retail store services featuring tabletop games and accessories. Another company, Gamelyn Games LLC out of Arizona, has a federal trademark registration on the word “ITEMEEPLES” as used in association with component parts for playing table top board games, namely, game piece figures and game piece figures which include holes for mounting accessories on the figures. Others have tried and been denied federal trademark registrations containing forms of the word “meeple” based upon their confusing similarity to these two and other federal registrations. Other registrations covering forms of the word “meeple” have been granted for items other than games. Meeple Loot, LLC owns a design mark for a chest full of meeple that says “Meeple Loot” on the front, as used in association with clothing, but that registration specifically disclaims the word “meeple” as being descriptive and therefore not protectable on its own. 

The New McBrine/Thompson Application
There have been more recent applications, including one for the word “meeple” by itself as used in association with shirts and games.  This application was filed by Marian McBrine and Corey Thompson. Interestingly, in filing their trademark application, on May 30, 2024, Ms. McBrine and Mr. Thompson appear to have both signed and submitted a legal document to the United States Patent and Trademark Office stating:

“To the best of the signatory’s knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive.”

and 

“To the best of the signatory’s knowledge, information, and belief, formed after an inquiry reasonable under the circumstances, the allegations and other factual contentions made above have evidentiary support.”

and

“The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true.”

Given the background of Ms. McBrine and Mr. Thompson in the board game industry, it is difficult to believe either Ms. McBrine or Mr. Thompson, after making a reasonable inquiry into the facts, could plausibly argue they believe no one else in the United States has a right to use “meeple” in association with board games. While I have to admit I have never seen anyone ever go to prison for willfully making a false statement on a federal trademark application, I also have never seen anyone with such extensive knowledge in the industry sign this document asserting they have exclusive rights in such a ubiquitous and descriptive word.

So what about Hans im Glück? Thankfully this publisher has no registered trademark rights to “meeple” as used with board games or meeple in the United States. That is not to say Hans im Glück will never attempt to assert common law rights or apply for a United States trademark registration in the future, but for now, its potential for enforcement of any rights to the word “meeple” in the United States for meeple or board games appears weak. So in the United States, not only can no one currently prevent you from using the term “meeple” to sell board games and meeple, but it appears that will remain the case for quite some time. In the European Union, however, it is a little different story. 

Hans im Glück’s Rights to “Meeple” Outside the U.S.
What trademark rights does Hans im Glück have in the word “meeple” in Europe? In terms of registrations, it has a German 302021101641 national trademark registration on the word “meeple” in association with nine classifications of goods and services, including toys and games. It also has EU 016791741 and UK UK00916791741 trademark registrations for “meeple” as used in association with six classifications of goods. None of these classigfications, however, include board games or physical meeple.  

For the “meeple” silhouette, Hans im Glück has UK UK00916791725 and EU 016791725 trademark registrations for a single front-facing silhouette, as used in association with six classifications of goods, none of which include board games or physical meeple and a pending German 3020211018214 trademark application for a single front-facing silhouette, as used in association with “Other unidentifiable personifications, other fantastic beings of human appearance.”

What does this all mean? What rights do those registrations give Hans im Glück? Well, outside of the EU and UK, none. Its only rights to the word “meeple” outside the EU and UK would rely on either common law rights or specific trademark rights granted by individual countries. Can Hans im Glück enforce its rights inside of the EU? As only the German trademark registrations cover board games and meeple, it will be difficult for Hans im Glück to assert rights to the word “meeple” for board games and meeple outside of Germany. Within Germany, however, it may be possible to cancel Hans im Glück’s trademark registration to the extent it applies to board games. 

Is Hans im Glück’s Meeple Trademark Registration in Germany Vulnerable to Cancellation? 
In Germany, you may apply to invalidate and cancel a trade mark registration if there are absolute grounds for refusal. Absolute grounds for refusal in Germany include:

  • lack of distinctiveness 
  • descriptive terms that must be kept freely available for general use
  • danger of deceiving the public
  • an emblem of state included in the trade mark
  • offence against public policy or accepted principles of morality

To cancel a trademark you are required to file your application for a declaration of invalidity in writing and include the facts and evidence in support of the statement of grounds for invalidity. The fee for the application is 400 euros.

Conclusion 
Hans im Glück holds no trademark registrations that would prevent you from using “meeple” on board games or meeple in the United States. That does not mean that Hans im Glück would not sue you for trademark infringement hoping you would back down, rather than try to fight in court. While that strategy might would with small publishers, it will not work with deeper-pocketed large publishers who have the money to prove the term “meeple” for meeple is generic in the United States. Hans im Glück does have some registrations abroad though. While its EU and UK registrations for “meeple” do not cover board games, it may still try to assert that right in the future. However, for the same reason Hans im Glück was unable to obtain “meeple” trademark registrations on board games or meeple in the the EU and UK, it would be unlikely to successfully assert such rights in court. In Germany, however, Hans im Glück does hold a national trademark registration on the word “meeple” in association with toys and games. While it appears this registration may be vulnerable to an application for cancellation it is unclear who, if anyone, will take on that fight. Until then, it is likely best to avoid using the word “meeple” to promote your board games and meeple in Germany. 

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By Brett Trout
July 2, 2024

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22 Interesting Facts about Trademarks

Brett J. Trout

What is a trademark? A trademark is something used by consumers to identify the supplier of a particular product or service.  Trademarks are a type of “intellectual property,” but are very different from other types of intellectual property like patents and copyrights. 

Here are just a few of the unusual facts about trademarks (although the following refers only to products, trademarks may also apply to services):

1. For many companies, their most valuable asset are their trademarks. The value of Apple’s trademark has been estimated to be in excess of half a trillion dollars. 

2. Unlike with patents and copyrights, in-gross transfers of trademarks are not allowed. You may only transfer trademark rights if you also transfer the goodwill associated with the business the trademark represents. 

3. For the protection of consumers, you may lose your trademark if you license the trademark to someone without monitoring the nature and the quality of the goods they offer under that trademark. 

4. Whereas congressional power to regulate patents and copyright derives from the specific Intellectual Property clause in the Constitution, courts have to rely on the Commerce Clause to find congressional power to regulate trademarks.

5. Unlike patents and copyrights that will naturally expire after a fixed amount of time, trademarks can potentially last forever

6. If you fail to enforce your trademark, it may become generic, meaning anyone can use it. Very valuable trademarks like escalator, aspirin, and yo-yo all became generic due to their owners’ failure to stop people from using the trademarks to describe the general class of products

7. In addition to words and logos, you may also trademark colors, sounds, and scents

8. You may not trademark the functional aspects of your product 

9. You may obtain a trademark on made-up words (eBay), arbitrary words (Royal, but applied to something unrelated, like gelatin), suggestive words (NoDoz), and even descriptive words if the public has come to associate the word with a single producer (American Airlines)
You may not obtain a trademark on merely descriptive words that have not acquired distinctiveness (red for apples) or on generic words (apple for apples) 

10. You only obtain trademark rights by actually using the trademark to promote your goods or services

 

11. Trademarks must always be used as an adjective modifying a noun, never as the noun itself. 

12. Use of the TM symbol does not require any paperwork. It merely suggests the owner is asserting trademark rights in the word. The TM is not an indication that the word is a valid or enforceable trademark.

13. Use of the ® symbol is strictly regulated and only available for federally registered trademarks. Use of the ® on unregistered marks can lead to severe penalties.  

14. When you obtain trademark rights you only obtain trademark rights association with the product your trademark is promoting
15. If your trademark is famous, you may be able to use it to stop others from diluting the value of your trademark by using it on other products. 

16. Two companies may own the same trademark for different products (Apple for computers and Apple for power tools). 

17. Once you have a trademark, you will lose that trademark if you stop using it to promote your goods and/or services

18. Once you start using your trademark to promote your product, you have what is known as a “common law” trademark

19. Common law trademark rights extend only to the extent of their market penetration. 

20. You may obtain trademark protection throughout a state with a state trademark registration

21. You may obtain trademark protection throughout the country with a federal trademark registration

22. You may obtain international protection through various international trademark registrations 

The reason we have trademarks is to allow consumers to associate certain goods with the companies that provide them and to prevent competitors from trying to confuse consumers on a product’s source or origin. To avoid a potential trademark infringement lawsuit and to build equity in your trademark it is a good idea to enlist a specialized “intellectual property lawyer” to discuss potential trademarks and to vet and register the trademarks you eventually choose.   

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By Brett Trout
June 6, 2024

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Design Patents Just Got Harder to Get

Brett Trout

Design patents are different than utility patents. Design patents protect the overall appearance, visual impressions, artistry, and style of ornamental subject matter. Like copyright, design patents cannot protect the functional aspects of any new product, only the aesthetics. This is opposed to utility patents, the type of patents people are usually talking about when they talk about patents, do protect function, unexpected properties, and utility of new products and methods. Whereas utility patents protect functional aspects of inventions, design patents are more like copyright, protecting the “look” of new designs. 

Despite their differences, design patents and utility patents must both meet the nonobviousness requirement of 35 U.S.C. § 103. This means you cannot obtain a patent, design or utility, on something that is merely an obvious modification of an already existing product. Last week the obviousness test for design patents was: 1) is there something in existence (the “Rosen” reference) the design characteristics of which are basically the same as the claimed design; and 2) if a Rosen reference is found, can secondary existing designs be used to modify it to create a combined design that has the same overall visual appearance as the new design sought to be patented. When combining these secondary designs they had to be “so related [to the Rosen reference] that the appearance of certain ornamental features in one would suggest the application of those features to the other.” This was the Rosen-Durling test. That was last week. This week, there is a new test in town. 

The Graham Factors 

In a blow to General Motors and other current and aspiring design patent holders and patent lawyers the United States Court of Appeals for the Federal Circuit has just ruled in LKQ CORPORATION v. GM GLOBAL TECHNOLOGY OPERATIONS LLC that the Rosen-Durling test is out and the tried and true Graham v. John Deere Co. of Kansas City, 383 US 1 (S. Ct. 1966) test is in… mostly. The “Graham factors” test used to assess obviousness in utility patents, now applies to design patents as well.  The test includes four factors: 1) the scope and content of the prior art; 2) the differences between the prior art and the patent claims at issue; 3) the level of ordinary skill in the pertinent art; and 4) secondary considerations such as commercial success, long-felt but unresolved need, failure of others, industry praise, copying etc. The ultimate question, however, remains as to whether differences between the prior art and the claimed invention are such that they would, as a whole, have been obvious to a person of ordinary skill in the pertinent art at the time of the invention. The LKQ court went on to discuss application of the various Graham factors to design patents in detail: 

Scope and Content of the Prior Art

Prior art includes any publicly available information. For purposes of considering obviousness in design patent matters, existing information only qualifies as prior art when it is “analogous to the claimed invention” when seen from the perspective of a person of ordinary skill in the art. In limiting the scope of prior art to analogous art, the LKQ court explained that a person of ordinary skill “could not possibly be aware of every teaching in every art.” 


The obviousness determination will include a primary reference and may include one or more secondary references. The primary reference will likely be the prior art design most visually similar to the claimed design. Both the primary and secondary references must be art analogous to the claimed invention. The more visually similar the primary reference design is to the claimed design, the less likely the Patent Office will be to grant a design patent on the claimed design. 

Differences Between the Prior Art and the Design Claim at Issue

The LKQ court explicitly overruled the threshold Rosen-Durling “similarity” requirement and replaced it with the second Graham factor: whether one of ordinary skill in the art would have combined the prior art to create the same overall visual appearance as the claimed design. In determining the differences between the prior art and the claimed design, the Patent Office must consider the differences in the visual appearance of claimed design as a whole, rather than examining individual design elements on their own. This consideration of the differences in visual appearance is again from the perspective of an ordinary designer in the field of the claimed design. 

The Level of Ordinary Skill in the Pertinent Art 

As it pertains to design patents, the level of ordinary skill in the art is the skill of a designer of ordinary skill who designs articles of the claimed design type. 

Secondary Considerations

The LKQ court specifically refused to decide whether secondary considerations such as commercial success, long-felt but unresolved need, failure of others, industry praise, copying etc. apply to the obviousness analysis in the context of design patents. It therefore remains unclear to what extent, if any, secondary considerations factor into the obvious analysis as applied to design patents. 

Assessing the Graham Factors

After ascertaining the knowledge of an ordinary designer in the relevant field, the scope and content of the prior art, and the differences between the prior art and the claimed design, the Patent Office must determine to what extent the ordinary designer would have been motivated to modify the prior art design to create the same overall visual appearance as the claimed design. As before, this inquiry focuses on the visual impression of the claimed design as a whole and not on any individual features.

If the primary reference alone does not render the claimed design obvious, the Patent Office may consider secondary references.  While the primary and secondary references must both be analogous art to the patented design, they need not be “so related” to one another that features in one would suggest application of those features in the other. As noted in KSR, the motivation to combine the primary and secondary references does not have to come from the references themselves. The Patent Office must, however, provide rational support in the record as to why an ordinary designer in that field would have used features in a secondary reference to modify the primary reference to create the same overall appearance as the claimed design. The more different the primary reference looks as compared to a secondary reference, the harder it will be for the Patent Office to establish a motivation in the person to alter the primary reference in light of the secondary reference without hindsight of the claimed design. 

Conclusion 

Given the significance of this new ruling, design patent owners and applicants cannot help but be affected. Not only will it likely be more difficult to obtain design patents moving forward, it is likely that many existing design patents will fail to survive a legal challenge of the basis of obviousness. As a result, if you have obtained, or are thinking about obtaining, a design patent, you would be well-advised to discuss the ramifications of this important ruling with your patent lawyer sooner rather than later. 

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By Brett Trout
May 30, 2024

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What Can Scarlet Johansson Do About the Similarity of ChatGPT’s Sky voice to Her Own? 

Brett Trout

Background
According to Scarlet Johansson’s agent OpenAI, the owner of ChatGPT, was engaged in discussions with the Black Widow actress to use her voice as the voice of their latest AI project Sky. This may, or may not have been influenced by Johansson’s voice acting in the movie “Her,” where she played an increasingly sentient AI girlfriend. Johannsson eventually passed on the project and OpenAI hired a different actress to train their Sky project. The problem, according to Johansson’s team, is that the new Sky voice sounds like Johansson’s voice. Johansson’s team has now asked OpenAI to “slow down” the launch of Sky with the new voice.

Voice Misappropriation
What are your options if someone uses your voice without your permission? Whereas your freedom of speech is protected by the Constitution, your right of publicity is protected by a mix of different state laws. Depending on which state you bring your right of publicity lawsuit, you may have a lot or only a little protection. Even though state laws vary, some general tenets underlying the right of publicity emerge across these various state laws. One area of right of publicity protection covers your name, image, and likeness. Certain states, like California have specific statutes that allow you to sue anyone who knowingly uses another person’s voice to market their goods or services.  

Imitating Your Voice
What if instead of using your actual voice, someone uses an imitation of your voice? Since they are not using your voice, state statutes that require use of your actual voice no longer apply. So can you avoid liability by simply hiring an actor to imitate your favorite actor’s voice to sell your widgits? Possibly, but it depends. If someone uses an imitation of your voice to sell things in California, you have to be famous and have a distinctive voice to successfully sue for use of an imitation of your voice.

This was the case when the Ford Motor Company used an imitation of Bette Midler’s voice, in a song off of Midler’s album, to sell cars. In that case, the California court held that if you deliberately imitate a distinctive voice of a professional singer who is widely known, to sell your product, that singer may recover damages from you for appropriating their right in their own voice. 

This type of imitation is a species of violation of the “right of publicity,” in this case the right of a person whose identity has commercial value, typically a celebrity, to control the commercial use of their identity.  In California, if a voice is a sufficient identifier of a celebrity’s identity, this right of publicity provides a cause of action against anyone who would imitate the voice for commercial purposes without consent of the celebrity. 

Voice vs. Style
Even if you are famous with a distinctive voice, you only have rights in your voice, not your style of speaking. If someone imitates the prosody of your style (rhythm, speed, pitch, emphasis, etc.) without imitating your voice to the point someone would mistake it as your own, you do not, without more, have a cause of action against them. 

False Endorsement
In addition to claims of voice misappropriation, you may have a claim for false endorsement. Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), prohibits the use of false designations of origin, false descriptions, and false representations in the advertising and sale of goods and services. The Lanham Act expressly prohibits the use of any symbol or device which is likely to deceive consumers as to the association, sponsorship, or approval of goods or services by another person. This was the case when singer Tom Waits sued Frito-Lay for imitating his distinctive voice in an admitted parody of a Tom Waits song to sell SalsaRio Doritis. Waits argued that Frito-Lay was misrepresenting to consumers that Waits endorsed SalsaRio Doritos. The question was whether “ordinary consumers . . . would be confused as to whether Tom Waits sang on the commercial . . . and whether he sponsors or endorses SalsaRio Doritos.” In this case the jury found that Frito-Lay had indeed falsely implied Waits’ endorsement of the chips in direct violation of the Lanham Act.  

Damages
So assuming you do successfully sue someone for using or imitating your voce, what kind of damages can you recover. If they take your actual voice in California, you are allowed to recover the greater of $750 or the total damages you sustained as a result of the use and any profits the other party made as a result of the use. To show profits, you only have to submit gross revenue numbers and the burden shifts to the person who used your voice to prove any deductible expenses. California’s statute also allows for punitive damages and attorney’s fees and costs.  

What if they just imitated your voice so the state statutory damages do not apply? In the Waits case, where they imitated his voice, Waits was awarded $375,000 in compensatory damages for imitating his voice ($100,000 for the fair market value of his services, $200,000 for injury to his peace, happiness and feelings,and $75,000 for injury to his goodwill, professional standing and future publicity value), $2 million in punitive damages, $100,000 damages for violation of the Lanham Act, and attorney’s fees under the Lanham Act. The appellate court ultimately eliminated the $100,000 damages for violation of the Lanham Act as duplicative, but kept the attorney’s fees award intact. 

So is the award in the Waits case typical? No. The large punitive damage award was the result of Waits’ well-known strong stance against ever using his voice to sell products. He felt it would be selling out, undermining his artistic integrity. As a result, commercial use of his voice was particularly offensive to Waits, allowing the jury to award damages for mental distress. While merely taking offense is an insufficient basis for awarding mental distress damages, in California you may recover mental distress damages for shame, humiliation, embarrassment, and anger. 

Because Waits’ character and personality and image was that he did not endorse products, the Doritos commercial humiliated Waits by making him an apparent hypocrite. As a result, the jury was allowed to include in its damage award damages for injury to Waits’ goodwill and future publicity value (advertisers would likely pay him less if the believed he was a hypocritical “sell out”). 


Waits also recovered punitive damages of $1.5 million against the advertising firm that created the ad, Tracy-Locke, and $500,000 against Frito-Lay. In California, these damages are recoverable if the plaintiff can prove, by clear and convincing evidence, that the defendant was been guilty of oppression, fraud, or malice. Cal.Civ.Code § 3294(a)  Malice in this context, is despicable conduct carried on by the defendant with a willful and conscious disregard of the rights or safety of others.  § 3294(c)(1) 

In upholding the punitive damages award, the appellate court found that in going forward with the commercial using Waits’ imitated voice, the defendants knowingly undertook the risk, consciously disregarding the effect of these actions on Waits’ legally recognized rights. One of Waits’ star witnesses at the trial was the Waits’ impersonator used in the radio ad. The impersonator told the defendants before the ad aired that Waits had a policy against doing commercials and would not like having an imitation of his voice used in this manner. This damning testimony likely led to the large punitive damage awards.

Finally Waits recovered his attorney fees. Although the appellate struck the damages Waits recovered under the Lanham Act (as duplicative of his other recovery), the appellate court upheld the award of attorney’s fees under the Lanham Act. 


Conclusion
So how does the foregoing apply to the Johansson case? Given that OpenAI did not use Johansson’s voice, the California statute likely does not apply. The tougher question is whether OpenAI owes Johansson damages for imitating her voice. OpenAI’s position is that the actress it used to train Sky was not told to imitate Johansson and that the voice used was the actual speaking voice of the actress they hired. While Scarlett Johansson’s voice is much less distinctive than Bett Midler’s or Tom Waits’, it is debatable whether it lacks sufficient distinctiveness to merit protection? However, if OpenAI can show many people have a voice similar to Johansson’s, it may be able to avoid liability for imitating her voice. 

Even if OpenAI can avoid liability for imitating Johansson’s voice, it still may be liable under the Lanhan Act for deceiving customers into thinking Scarlett Johansson endorses the new Sky AI. If Johansson can prove false endorsement, she may be able to recover her losses, OpenAI’s profits, triple damages, and attorney’s fees. Unlike the Waits case, however, Johansson does not have a policy against using ads to endorse products. Indeed, Johansson was in talks with OpenAI to accept this exact job. As a result, the large damages recovered in the Waits case would likely not be available to Johansson. A more likely award would be in the neighborhood of what Johansson was demanding to accept this job during the negotiations. 

A trial on this dispute would certainly be interesting, especially the aspects pertaining to the use of someone’s likeness in AI. However, the damages are likely small enough and the optics of a trial loss bad enough for both parties that keeping this matter in the limelight a little longer for publicity’s sake, then quietly and confidentially settling the case will likely be in the best interests of both parties. 

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By Brett Trout
May 24, 2024

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How Do I Patent My Invention?

Brett Trout

The Search
While you may jump right into the patent application process, it is a good idea to first search to see if anyone has already patented your invention. A patent search may be anything from a Google search, to a Google Patents search, to a full patent search and legal opinion undertaken by your patent lawyer. As a full patent search and legal opinion can get expensive, many inventors opt for either no search or an online search they conduct themselves. While Google Patents is a simple and free option to search for similar patents, it can be difficult to navigate, increasing the likelihood that you might overlook existing patents and patent applications that could prevent you from obtaining your own patent. 

The Application
Once you are satisfied no one else has patented your invention, the next step is to draft and file a patent application with the United States Patent and Trademark Office (USPTO). While any inventor may file a patent application directly with the USPTO, it is nearly impossible for an untrained layperson to obtain a broad patent covering all protectable aspects of a particular invention. This is because it takes a very special set of skills to describe the invention broadly enough to cover the full scope of the invention, but narrowly enough not to encompass some combination of prior inventions, known as the “prior art.” The task is so difficult that not even ordinary attorneys are allowed to file patent applications on behalf of their clients. Only a patent lawyer, skilled in the art of patent drafting and having passed the rigorous “patent bar,” is allowed to file patent applications on behalf of others.  

All Patents Are Not Created Equal 
So, while it is possible to file your own patent application, it is not recommended. Even if you were somehow able to obtain a patent on your own, it is likely your patent will be too narrow to defend against competitors. If a patent is poorly drafted, it is easy for competitors to change a single element of the design and avoid infringement. Conversely, if a patent is properly drafted it can be very difficult for competitors to produce a competitive design that does not infringe the patent. 

What makes on patent better than another? In short, scope. Narrow patents make it easy for a competitor to circumvent the patent by making a minor change. Broad patents are more difficult to circumvent without the competitor having to remove a key element of the invention. Interestingly, if you have 100 patent lawyers all draft a patent on a single invention, no two of the patents will be the same. Some will be narrow, some broad, and some in between. The best way to know whether your patent lawyer is drafting a broad patent or a narrow patent is to inquire about the patent lawyer’s experience. How many patents has the patent lawyer drafted? How many patents has the patent lawyer defended in court? While these questions are not foolproof, they will give you an idea of the patent lawyer’s background and expertise. 

Prosecuting Your Patent Application
Prosecuting a patent application sounds like you are fighting in court, when in reality prosecuting your patent application means fighting back and forth with the Patent Office over the scope of your patent and the prior art. During prosecution of your patent application you are “patent pending.” While you are patent pending you cannot sue anyone until your patent is formally granted. During prosecution, if your patent application is broad enough to cover items in the prior art, then you must narrow the scope of your patent application until it no longer covers obvious combinations of items already in the prior art. So even if your patent application starts off broad, you may have to narrow it to obtain patentability. Prosecuting your patent application can take two years or more, depending on the scope of your patent application in comparison to the prior art. 

Granting Your Patent
Once you have narrowed your patent application enough to define around the prior art, the Patent Office will grant your patent. Once granted, your patent is good for twenty years from the filing date. You do, however, have to pay ongoing “maintenance” fees during that twenty years to keep your patent in force. Failure to pay a maintenance fee will cause your patent to become abandoned.

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By Brett Trout
May 21, 2024

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How do I trademark the name of my business?

Brett J. Trout
Registered Legal Name vs. Trade Name vs. Trademark
What is the difference between a registered legal name, a trade name, and a trademark? It is important to know the difference as they are all used differently for different purposes, and using them incorrectly could cause a company to lose the rights to at least one of them. First, a registered legal name is the legal name of your business such as ACME Corp. or SmithCo, LLC. It is the name a company uses in formal legal agreements and government filings. A registered legal name is a noun (this will be important later).

Second, a trade name is the name a company usually goes by, such as ACME (without the “Corp.”) or SmithCo (without the “LLC”). Although it may, a trade name does not have to, match the registered legal name. For instance, the registered legal name of your company may be ACME Corp. but the customer-facing name you use for your company may be something like KewlTewls. In cases like this, companies typically must register the trade name as a “d.b.a” (doing business as) with their state. The d.b.a links the trade name to the registered legal name so anyone harmed by the company may determine the registered legal name of the company to pursue legal action. Like a registered legal name, a trade name is also a noun.

Third, a trademark is something that indicates to consumers the source of particular goods or services. A trademark may be a word, name, phrase or symbol. Trademarks can even be colors, sounds, or even smells. The Nike “swoosh” is an example of a trademark. By identifying the source of goods or services, trademarks allow consumers to see the trademark as a symbol of trust, indicating the quality good or service they have experienced in the past. Unlike registered legal names and trade names, trademarks are not nouns, but adjectives. While a trademark may be similar to a company’s registered legal name and trade name, unlike registered legal names and trade names, you should always use trademarks as an adjective in conjunction with a noun identifying the generic good or service associated with the trademark. An example of a company using its various types of names might look like this:

Registered legal name: Acme Corp. has entered into a lease agreement with SmithCo, LLC. (used as a noun)
Trade name: Acme has just opened a new store at 123 Main Street. (used as a noun)
Trademark: Acme widgets are guaranteed for life. (used as an adjective modifying the noun “widgets”)

It is important to always use your trademark as an adjective rather than a noun. Using your trademark as a noun may cause your trademark to become generic, leading to the loss of your trademark rights. Valuable trademarks like escalator, aspirin, and cellophane were all lost as a result of their owners failing to prevent them from becoming unprotectable generic nouns.

Your Company’s Most Valuable Asset
While registering a legal name is often necessary, registered legal names are often not particularly valuable. This is because the government agency registering legal names only cares that no two registered legal names are exactly the same. Because such agencies will often allow the registration by different entities of extremely similar names (such as ACME’s LLC and ACMEs’ LLC) registered legal names are not always what a consumer associates with a good or a service they want to purchase. Trademarks, however, must not only be technically different from one another, they must also be different enough to avoid a likelihood that a consumer might be confused that a particular trademark identifies the goods or services of a competitor. This gives the trademark owner wide latitude to keep competitors from using a similar trademark to trade on the goodwill the trademark owner has developed among its customers.

Many companies have multiple trademarks for multiple product lines. Some companies even have “families” of trademarks connected by a common mark. An example of a family mark is McDonalds’ use of the “Mc” trademark to identify several of its products: McMuffin, McRib, McChicken, etc. owning multiple trademarks allow consumers to associate your company with each of its goods and services. Due to their enormous value in differentiating products from those of competitors, trademarks are the most valuable asset of many companies. Your trademark is what consumers think of when they think of your company. Your company’s trademarks embody the goodwill of your company. This is why it is important to not only vet your potential trademarks to make sure they do not infringe anyone else’s trademarks, but to register and enforce your trademarks against infringers trying to use your reputation to trick customers into buying their inferior product.

Protecting your Trademark
Before you invest a large amount of time and money getting consumers to associate a particular name or logo with your company’s goods or services, contact a trademark attorney to make sure you are not running afoul of any obvious trademark no-nos like infringing or unregistrable trademarks. Once you are on track with the right trademark, you can rest easy knowing that your future marketing campaigns are not going toward promoting a brand you may have to change as soon as it gets popular. For more information on trademarks, check out our FAQ.

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By Brett Trout
May 8, 2024

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Using the Amazon Patent Evaluation Express (APEX) program may subject you to personal jurisdiction in another state

Brett Trout

In 2022, Amazon formally launched its Amazon Patent Evaluation Express (APEX) program, billing it as an efficient way to resolve claims when a seller on Amazon is infringing your patent. Assuming you have signed up for the program and meet all of Amazon’s prerequisites, if you see someone on Amazon selling a product that infringes your patent you may fill out and submit an APEX Agreement to Amazon.

Upon receipt of an APEX Agreement from a patent holder Amazon sends the APEX Agreement to all accused infringers. The seller then has four options: 1) ignore the APEX Agreement; 2) opt into the APEX program and proceed with a third-party determining whether the product likely infringes the patent; 3) resolve the claim directly with the patent owner; or 4) file a lawsuit for declaratory judgment of noninfringement.

If a seller ignores the APEX Agreement, or opts for the third-party review which finds a likelihood of infringement, Amazon will remove the accused products from Amazon. If the parties settle the matter on their own, Amazon will take no further action. Finally, if the accused seller files a declaratory judgment of noninfringement, Amazon will abide by the court’s ruling.

The problem with the last option is that the accused infringer is unlikely to file the declaratory judgment of noninfringement in your home state. The accused infringer is much more likely to file the lawsuit in their own state or a state with courts more favorable to their position. This was the case in SnapRays, d/b/a SnapPower v. Lighting Defense Group. In SnapRays, LDG, a Delaware Limited Liability Company located in Arizona, owned U.S. Pat. No. 8,668,347 covering a cover for an electrical receptacle. Upon receipt of LDG’s APEX Agreement SnapRays, the accused infringer, filed a declaratory judgment of noninfringement in its home state of Utah. The United States District Court for the District of Utah dismissed the declaratory judgment action for lack of personal jurisdiction. The district court ruled in LDG’s favor, finding LDG lacked sufficient contacts with Utah to be subject to personal jurisdiction in an Utah court. The court ruled that submitting the APEX Agreement did not demonstrate LDG purposely directed activities at SnapRays in Utah. The district court’s ruling was based on similar cases and that is well-settled law that a patent owner sending a cease and desist letter to an accused infringer is not, without more, sufficient to justify subjecting that patent owner to personal jurisdiction in the accused infringer’s home state.

SnapRays appealed the district court’s ruling to The United States Court of Appeals for the Federal Circuit. As the issue related to personal jurisdiction in a patent infringement matter, the Federal Circuit applied “Federal Circuit Law” affording no deference to the lower court’s ruling. in determining whether or not LDG was subject to personal jurisdiction in Utah, the Federal Circuit examined three factors: (1) whether the defendant “purposefully directed” its activities at residents of the forum; (2) whether the claim “arises out of or relates to” the defendant’s activities with the forum; and (3) whether assertion of personal jurisdiction is “reasonable and fair.”

In finding that LDG submitting the APEX Agreement did indeed subject LDG to personal jurisdiction in Utah, the Federal Circuit held that extra-judicial enforcement activities, such as Amazon’s APEX program, satisfy the “purposefully directed” arm of the personal jurisdiction analysis. The Court held that the brunt of the harm caused by a defendant’s activities need not be suffered in the declaratory judgment state, as long as at least a “jurisdictionally sufficient amount of harm” is suffered in the state. The Federal Circuit likened the APEX Agreement to a copyright owner sending a notice of claimed infringement (NOCI) under eBay’s Verified Rights Owner (VeRO) program or someone sending a letter to Network Solutions, Inc. (NSI) challenging the registration of a particular domain name in a manner that automatically triggers NSI’s dispute resolution process.

The difference between these activities and a cease and desist letter, reasoned the Court, is that is that these activities all trigger an “automatic effect” in the accused infringers state if the accused infringer does not respond. Conversely, if an accused infringer ignores a cease and desist letter, no harm automatically occurs in the accused infringer’s state. In the SnapRays case, if SnapRays ignored the APEX Agreement, Amazon would automatically remove SnapRays’ products from Amazon. In overruling the lower court, the Federal Circuit ruled that this “automatic takedown process” was enough to tip the scales toward a finding of personal jurisdiction.

While the Federal Circuit did state “Parties who participate in APEX by submitting an Agreement will only be subject to specific personal jurisdiction where they have targeted a forum state by identifying listings for removal that, if re- moved, affect the marketing, sales, or other activities in that state.” it is hard to imagine an APEX Agreement that would not potentially affect the marketing, sales, or other activities in that state.

One of the main attractions of the APEX program is its low cost compared to a multi-million dollar patent infringement lawsuit. In light of this recent ruling, however, the APEX program may not only force a patent owner into a full-blown patent infringement trial before they are ready, but it may face them to litigate the matter in a hostile state. For this reason, if you are not willing, or financially able, to fight a patent infringement lawsuit in the home state of your accused infringer, you may wish to rethink filing an APEX Agreement in the first place.

Edit: SnapRays appealed the district court’s ruling

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By Brett Trout
May 6, 2024

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Can I register a trademark created by Artificial Intelligence?

Brett Trout

Patents require a human inventor and copyright requires a human author, but trademarks require neither a human inventor nor author. There are many reasons the United States Patent and Trademark Office (USPTO) might reject your application for federal trademark registration, such as likelihood of confusion with an existing trademark, being merely descriptive or misdescriptive, being merely a surname, being merely ornamental etc. One reason the USPTO will not reject your trademark application, however, is because your trademark was generated by artificial intelligence.

While you will not be able to copyright your AI-generated trademark, this may work in your favor. You not being able to register the copyright means no one else may register the copyright in the trademark either. This eliminates the problem of the artist you paid to design your logo stealing the logo from somewhere else, resulting in a copyright lawsuit that lands you in federal court.

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By Brett Trout
May 2, 2024

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