Tag: cancellation

Longstanding and Emerging Legal Issues in Trademark Law

Trademark law protects brand identifiers like names, logos, words, slogans, and other things, ensuring consumers aren’t deceived about the source of a product or service. It also protects businesses from unfair competition. Core concepts include use in commerce, distinctiveness and the likelihood of confusion, which dictate whether a mark can be registered and enforced.

Jack Daniels whiskey bottle and Bad Spaniels dog toy - parody goods trademark infringement

Whether you’re a startup founder, an artist, or just astudent of the law, understanding trademark law is essential. Here is a breakdown of the fundamentals, followed by some of the biggest trending issues in the trademark world today.

The Fundamentals of Trademark Law

A trademark is any word, name, drawing, graphic, or device used to identify the source of goods or services and distinguish them from others. The four essential requirements for a valid trademark are:

Distinctiveness

A trademark must operate not only to identify the source of a product or service but also to distinguish it from others.

It is evaluated along a spectrum:

  • Fanciful marks: These are completely made-up, invented words, graphics, etc. that have nothing whatsoever to do with the nature or quality of the products or services with which they are associated. These are inherently distinctive, meaning it is not necessary to prove that consumers have come to associate the mark with the source. XEROX and EXXON are examples.
  • Arbitrary marks: These are real words, images of real things, etc., but they bear no relationship to the product or service with which they are associated. APPLE computers is an example. These, too, are inherently distinctive.
  • Suggestive marks: Suggestive marks are marks that hint at the nature or a quality of the product or service, but do not directly describe it. They require some imaginative thought on the part of the consumer to “connect the dots.” JAGUAR for cars and COPPERTONE for suntan lotion are examples. A suggestive mark is inherently distinctive.
  • Descriptive marks. These describe a quality, ingredient, or characteristic of the product or service. Unlike suggestive marks, they don’t merely hint at it; they come right out and directly describe the product or service, or a characteristic or ingredient of it. HOLIDAY INN and INTERNATIONAL BUSINESS MACHINES are examples. Descriptive marks cannot be claimed as trademarks unless they have acquired “secondary meaning.” The burden of proof is on the claimant to show that consumers have come to identify the brand with the claimant’s product or service, and not with other sources of it.
  • Generic marks: These are names for a category of product or service. MILK, as a mark for milk would be an example. No trademark rights can be claimed in generic marks.

Likelihood of Confusion

The primary legal standard for both registering a mark and suing for infringement is “likelihood of confusion”. This means determining if an ordinary consumer would mistakenly believe that your product or service and someone else’s come from the same source, or are affiliated.

Courts apply a multi-factor test (primarily the DuPont factors) to assess likelihood of confusion. The most critical ones are:

  • Similarity of the marks: Do they look, sound, or convey a similar commercial impression?
  • Relatedness of the goods/services

Courts consider other factors, too.

Two marks may be confusingly similar even if they are not identical. The key is whether consumers would be likely to confuse the source of one with the source of the other.

Use in Commerce

A mark must be used in commerce as a source identifier. Otherwise, a trademark does not come into being. To register a trademark federally with the USPTO, the use must be in interstate or foreign commerce. Purely intrastate commerce will not suffice for federal registration.

Registration

Registered tradmeark symbol

In the United States, trademarks come into existence through use in commerce as a trademark. When all the elements of a valid trademark exist (distinctiveness, etc.) a “common law” trademark exists. The scope of protection a common law trademark affords, however, is limited to the geographic area of trade. To get nationwide protection and the right to use the coveted ® symbol, you must register your mark with the U.S. Patent and Trademark Office (USPTO).

My experience has been that the major stumbling blocks for people who apply to register their trademark with the USPTO are (1) lack of distinctiveness, usually due to selecting a descriptive mark without acquired meaning; (2) likelihood of confusion with another person’s or company’s trademark; and (3) improperly completing the application for registration.

Topical Issues in Trademark Law

Fraudulent filings

The USPTO has implemented rigorous enforcement frameworks to crack down on fraudulent filings. Historically, many trademark owners were in the habit of registering their marks in more than one category of goods or services, either to “keep options open” for possible company expansion into a new product line, or to prevent competitors from doing so. The USPTO is making more vigorous efforts to crack down on registrants who fraudulently claim use in connection with goods or services with which they are not actually using the mark.

Due to a massive influx of suspicious, fraudulent, or automated filings, laregly by trademark mills, the office has cracked down by requiring stricter identity verification and heavily scrutinizing specimens of use. If a brand is caught digitally altering logos or faking mock-ups of their goods in commerce, their registration very likely will be swiftly canceled. Examiners are inspecting specimens of use more closely now, trying to ferret out digitally created mock-ups of trademarks being used in commerce. A false or fraudulent specimen of use is grounds for cancellation of registration.

The Trademark Modernization Act has given the USPTO new and enhanced powers to cancel unused and fraudulent registrations.

AI-Generated Counterfeits

Generative-AI is being used to create knock-offs of digital products. This is creating challenges for owners of trademarks in digital products and services.

Intermediary Platform Liability

Can an online marketplace platform or intermediary website or online service provider be held contributorily liable for facilitating or otherwise contributing to counterfeit and trademark-infringing goods being sold on their platforms?

Phrases Without Trademark Functionality

People are increasingly trying to claim trademark ownership over common words and phrases, such as “Hello. How are you?” The USPTO and courts are rebuffing a lot of these efforts. It is still possible for a phrase to become a trademark, but proof of acquired secondary meaning as a source identifier is needed. Otherwise, an applicant is likely to experience a “failure to function as a trademark” denial.

Read more about non-AI-related legal issues.

Visit my extensive Trademark FAQs page.

Need help with a trademark registration? Contact attorney Thomas James.

New AI Copyright Guidance

The Copyright Office is providing guidance to copyright applicants who wish to register works with AI-generated content in them.

On Thursday, March 16, 2023, the United States Copyright Office published new guidance regarding the registration of copyrights in AI-generated material. in the Federal Register. Here is the tl;dr version.

The Problem

Artificial intelligence (AI) technologies are now capable of producing content that would be considered expressive works if created by a human being. These technologies “train” on mass quantities of existing human-authored works and use patterns detected in them to generate like content. This creates a thorny question about authorship: To what extent can a person who uses AI technology to generate content be considered the “author” of such content?

It isn’t a hypothetical problem. The Copyright Office has already started receiving applications for registration of copyrights in works that are either wholly or partially AI-generated.

The U.S. Copyright Act gives the Copyright Office power to determine whether and what kinds of additional information it may need from a copyright registration applicant in order to evaluate the existence, ownership and duration of a purported copyright. On March 16, 2023, the Office exercised that power by publishing Copyright Registration Guidance: Works Containing Material Generated by Artificial Intelligence in the Federal Register. [Copyright Registration Guidance: Works Containing Material Generated by Artificial Intelligence, 88 Fed. Reg. 16190 (March 16, 2023).]

Sorry, HAL, No Registration for You

Consistent with judicial rulings, the U.S. Copyright Office takes the position that only material that is created by a human being is protected by copyright. In other words, copyrights only protect human authorship. If a monkey can’t own a copyright in a photograph and an elephant can’t own a copyright in a portrait it paints, a computer-driven technology cannot own a copyright in the output it generates. Sorry, robots; it’s a human’s world.

As stated in the Compendium of Copyright Office Practices:

The Copyright Office “will not register works produced by a machine or mere mechanical process that operates randomly or automatically without any creative input or intervention from a human author.”

U.S. Copyright Office, Compendium of U.S.
Copyright Office Practices sec. 313.2 (3d ed. 2021)

Partially AI-Generated Works

A work that is the product of a human being’s own original conception, to which s/he gave visible form clearly has a human author. A work that is entirely the result of mechanical reproduction clearly does not. Things get murkier when AI technology is used to generate content to which a human being applies some creativity.

According to the new guidance, merely prompting an AI technology to generate a poem, drawing or the like, without more, is not enough to establish human authorship if the AI technology determines the expressive elements of its output. This kind of content is not protected by copyright and a registration applicant therefore will need to disclaim it in the application.

On the other hand, if a human being selects and arranges AI-generated content, the selection and arrangement may be protected by copyright even if the content itself is not. Similarly, if a human being makes significant modifications to AI-generated content, then those modifications may receive copyright protection. In all cases, of course, the selection, arrangement or modification must be sufficiently creative in order to qualify for copyright protection.

Disclosure required

The new guidance imposes a duty on copyright registration applicants to disclose the inclusion of AI-generated content in any work submitted for registration.

Standard application

If you use AI technology to any extent in creating the work, you will need to use the Standard application, not the Single application, to register the copyright in it.

Claims and disclaimers

The applicant will need to describe the human author’s contributions to the work in the “Author Created” field of the application. A claim should only be made in this.

Any significant AI-generated content must be explicitly excluded (disclaimed), in the “Limitations of the Claim” section of the application, in the “Other” field, under the “Material Excluded” heading.

"The March of Intgelligence,"19th century illustration of a fantastical giant robot trampling judges and wreaking havoc
(Public domain)

Previously filed applications

If you have already filed an application for a work that includes AI-generated material, you will need to make sure that it makes an adequate disclosure about that. The newly-issued guidance says you should contact the Copyright Office’s Public Information Office and report that you omitted AI information from the application. This will cause a notation to the record to be made. When an examiner sees the notation, s/he may contact you to obtain additional information if necessary.

If a registration has already been issued, you should submit a supplemntary registration form to correct it. Failing to do that could result in your registration being cancelled, if the Office becomes aware that information essential to its evaluation of registrability has been omitted. In addition, a court may ignore a registration in an infringement action if it concludes that you knowingly provided the Copyright Office with false information.

Visit my extensive Copyright FAQs page.

Need help with a copyright application or registration?

Contact attorney Tom James.

A Recent Entrance to Complexity

The United States Copyright Office recently reaffirmed its position that it will not register AI-generated content, because it is not created by a human. The rule is easy to state; the devil is in the details. Attorney Thomas James explains.

Last year, the United States Copyright Office issued a copyright registration to Kristina Kashtanova for the graphic novel, Zarya of the Dawn. A month later, the Copyright Office issued a notice of cancellation of the registration, along with a request for additional information.

The Copyright Office, consistent with judicial decisions, takes the position that copyright requires human authorship. The Office requested additional information regarding the creative process that resulted in the novel because parts of it were AI-generated. Kashtanova complied with the request for additional information.

This week, the Copyright Office responded with a letter explaining that the registration would be cancelled, but that a new, more limited one will be issued. The Office explained that its concern related to the author’s use of Midjourney, an AI-powered image generating tool, to generate images used in the work:

Because Midjourney starts with randomly generated noise that evolves into a final image, there is no guarantee that a particular prompt will generate any particular visual output”

U.S. Copyright Office letter

The Office concluded that the text the author wrote, as well as the author’s selection, coordination and arrangement of written and visual elements, are protected by copyright, and therefore may be registered. The images generated by Midjourney, however, would not be registered because they were “not the product of human authorship.” The new registration will cover only the text and editing components of the work, not the AI-generated images.

Stephen Thaler's AI-generated artwork, "A Recent Entrance to Paradise"

A Previous Entrance to Paradise

Early last year, the Copyright Office refused copyright registration of an AI-generated image. Steven Thaler had filed an application to register a copyright in an AI-generated image called “A Recent Entrance to Paradise.” He listed himself as the copyright owner. The Copyright Office denied registration on the grounds that the work lacked human authorship. Thaler filed a lawsuit in federal court seeking to overturn that determination. The lawsuit is still pending. A motion for summary judgment has been filed.

For an update on this case, read A Recent Exit from Paradise. 

The core issue

The core issue, of course, is whether a person who uses AI to generate content such as text or artwork can claim copyright protection in the content so generated. Put another way, can a user who deploys artificial intelligence to generate a seemingly expressive work (such as artwork or a novel) claim authorship? (See AI can create, but is it art?)

This question is not as simple as it may seem. There can be different levels of human involvement in the use of an AI content generating mechanism. At one extreme, there are programs like “Paint,” in which users provide a great deal of input. These kinds of programs may be analogized to paintbrushes, pens and other tools that artists traditionally have used to express their ideas on paper or canvas. Word processing programs are also in this category. It is easy to conclude that the users of these kinds of programs are the authors of works that may be sufficiently creative and original to receive copyright protection.

At the other end of the spectrum are AI services like DALL-E and ChatGPT. Text and images can be generated by these systems with minimal human input. If the only human input is a user’s directive to “Write a story” or “Draw a picture,” then it would be difficult to claim that the author contributed any creative expression. That is to say, it would be difficult to claim that the user authored anything.

Peering into the worm can

The complicating consideration with content-generative AI mechanisms is that they have the potential to allow many different levels of user involvement in the generation of output. The more details a user adds to the instructions s/he gives to the machine, the more it begins to appear that the user is, in fact, contributing something creative to the project.

Is a prompt to “Write a story about a dog” a sufficiently creative contribution to the resulting output to qualify the user as an “author”? Maybe not. But what about, “Write a story about a dog who joins a travelling circus”? Or “Write a story about a dog named Pablo who joins a travelling circus”? Or “Write a story about a dog with a peculiar bark that begins, ‘Once upon a time, there was a dog named Pablo who joined a circus,’ and ends with Pablo deciding to return home”?

At what point along the spectrum of user-provided detail does copyright-protectable authorship come into existence?

A question that is just as important to ask is: How much, if at all, should the Copyright Office involve itself with ascertaining the details of the creative process that were involved in a work?

In a similar vein, should copyright registration applicants be required to disclose whether their works contain AI-generated content? Should they be required to affirmatively disclaim rights in elements of AI-generated content that are not protected by copyright?

Expanding the Rule of Doubt

Alternatively, should the U.S. Copyright Office adopt something like a Rule of Doubt when copyright is claimed in AI-generated content? The Rule of Doubt, in its current form, is the rule that the U.S. Copyright Office will accept a copyright registration of a claim containing software object code, even though the Copyright Office is unable to verify whether the object code contains copyrightable work. If effect, if the applicant attests that the code is copyrightable, then the Copyright Office will assume that it is and will register the claim. Under 37 C.F.R. § 202.20(c)(2)(vii)(B), this may be done when an applicant seeks to register a copyright in object code rather than source code. The same is true of material that is redacted to protect a trade secret.

When the Office issues a registration under the Rule of Doubt, it adds an annotation to the certificate and to the public record indicating that the copyright was registered under the Rule of Doubt.

Under the existing rule, the applicant must file a declaration stating that material for which registration is sought does, in fact, contain original authorship.

This approach allows registration but leaves it to courts (not the Copyright Office) to decide on a case-by-case basis whether material for which copyright is claimed contains copyrightable authorship.  

Expanding the Rule of Doubt to apply to material generated at least in part by AI might not be the most satisfying solution for AI users, but it is one that could result in fewer snags and delays in the registration process.

Conclusion

The Copyright Office has said that it soon will be developing registration guidance for works created in part using material generated by artificial intelligence technology. Public notices and events relating to this topic may be expected in the coming months.

Visit my extensive Copyright FAQs page.

Need help with a copyright matter? Contact attorney Thomas James.