Whether one focuses on the word’s connotation of silliness or excitement, or maybe even anger, or analogizes to the raucous and rhymingly-named team from Savannah that makes up its own baseball rules, US copyright law is currently going a little “bananas.” From ongoing debates about the human element (or requirement) of authorship to debates over what constitutes a transformative work to the gauntlet laid down in footnote 2 of Justice Kagan’s dissent in the Supreme Court’s May 18, 2023 decision in Andy Warhol Foundation for Visual Arts, Inc., v. Goldsmith, some strong opinions, and even raw nerves, mark the discussion. (more…)

When litigating trademark infringement cases in Colombia, the issue arises as to how the plaintiff should provide valid evidence of the damages arising from the unauthorized use of a trademark, as well as to what admissible evidence may be used to prove the amount of the indemnification claimed in the proceeding.

Trademark infringement lawsuits generally intend to compel the infringer, through a judicial order, to cease the use of a protected trademark and, in most cases, the plaintiff seeks to obtain an indemnification for the damages arising from the infringing use by the defendant.

(more…)

Suppose that you have an invention disclosure for a utility invention that you want to protect.  When you review the invention disclosure, you notice that the inventor has only supplied color drawings or photographs of the invention.  Can you file the utility patent application with the color drawings or photographs?  The answer is YES! if a petition is granted explaining why the color drawings or photographs are necessary for illustrating the claimed invention.

Under 35 U.S.C. § 113, the Applicant for a patent must “furnish a drawing where necessary for the understanding of the subject matter to be patented”.  Typically, the drawings in a utility patent application are submitted in black and white. See 37 C.F.R. § 1.84(a).  Black and white drawings with India ink, or its equivalent, that secures solid black lines, must be used for drawings. (more…)

The Bottom Line

The U.S. Supreme Court recently decided that, when using another’s trademark “as a designation of source for the infringer’s own goods,” one is not entitled to a First Amendment defense even if the use is a parody.
While the decision leaves intact existing legal protections for the use of trademarks and trade dress in expressive works, it limits its applicability when the mark functions as a source identifier.
Future cases addressing a parody or humorous use of another’s mark will likely see an increased focus on what constitutes a “source-identifying” use, and whether the use is likely to cause confusion among consumers.

(more…)

“Yes, the law is about words…,” says Ben Chiriboga in writing about the essential skills that lawyers must have.  And Ken White noted more recently that “the entire project of the law is about words meaning specific things.”  But our problem often is that the law, or lawyers, frequently use unfamiliar or exotic terms that others claim have no more understood meaning than a reference to a “vermicious knid,” and those or other lawyers may overuse a word that they do not seem to actually comprehend.  Indeed, understanding and enforcing the rule of law is itself commonly about defining an undefined concept.

Intellectual property law is all the more a refuge for wordsmiths, linguists, and logophiles, as three recent IP-related matters can help illustrate.  One is the case of Abitron Austria GMBH v. Hetronic International Inc., recently argued before the United States Supreme Court, and which presented the question of whether one could understand the language of the Lanham Act to apply outside the United States in some manner, i.e. does it have extraterritoriality and how do we define “commerce”?  The second is Finjan LLC v. Eset, LLC, a Federal Circuit decision on which Eset is now seeking Supreme Court review; Finjan raises the question of whether a court must accept a patentee’s own expressly-defined claim terms when reviewing a patent.  Finally, a third intriguing development is the US Copyright Office’s March 16, 2023 guidance on works containing material generated by artificial intelligence, which raises the question of what words like “author” and phrases like “human creativity” mean. 

Let’s look at them in turn.

I briefly mentioned Abitron here recently, but it deserves more attention in the context of defining the boundaries of US trademark laws and just on the notion of defining words.  The question presented in that case is “Whether the U.S. Court of Appeals for the 10th Circuit erred in applying the Lanham Act, which provides civil remedies for infringement of U.S. trademarks, extraterritorially to Abitron Austria GmbH’s foreign sales, including purely foreign sales that never reached the United States or confused U.S. consumers,” as noted at scotusblog.com.  In brief, as reported by Reuters, Hetronic, an Oklahoma company, makes remote-control systems for cranes and other industrial machinery. Hetronic sued Abitron, which had purchased Hetronic Germany, claiming that Abitron had violated Hetronic’s trademark rights by making and selling Hetronic-branded products with unauthorized parts.  Hetronic prevailed at trial to the tune of $114 million in damages, $90 million of which were awarded on the trademark claims.  Those damages, however, were largely based on the defendant’s sales of the offending products outside the United States. The trial court and the 10th Circuit Court of Appeals held the damages recoverable because, despite the fact that the sales had occurred outside the United States, Abitron’s infringing activity had a substantial effect on U.S. commerce and “diverted tens of millions of dollars of foreign sales from Hetronic that otherwise would have ultimately flowed into the United States,” as the appellate noted (at Hetronic Int’l, Inc. v. Hetronic Germany GmbH, 10 F.4th 1016, 1046 (10th Cir. 2021). 

What the litigants and their counsel battled over was where the boundaries and lines should be drawn under the Lanham Act.  The Lanham Act governs federal trademark and unfair competition disputes. It subjects to liability “[a]ny person who shall … use in commerce any … colorable imitation of a registered mark,” 15 U.S.C. § 1114(1) (Section 32), or “[a]ny person who … uses in commerce any” word, false description, or false designation of origin that “is likely to cause confusion… or to deceive as to the affiliation,” origin, or sponsorship of any goods, id. § 1125(a)(1) (Section 43). Notably, the Act defines commerce broadly as “all commerce which may lawfully be regulated by Congress,” id. § 1127, and affords federal courts jurisdiction over all claims arising under it, id. § 1121(a). Though most of the damages the jury awarded to Hetronic flowed from Defendants’ Lanham Act violations, Hetronic argued as a threshold matter that the Act does not apply extraterritorially to their foreign conduct, an argument that they lost in both lower courts.

Central to arguing the issues in Abitron was the notion of definition, which came up at least fifteen different times at the oral argument held before the Supreme Court on March 21, 2023.  What did that statutory language mean? 

Right off the bat at the Supreme Court, Abitron’s counsel noted that “Hetronic International offers only the text definition of commerce, and this Court has repeatedly rejected the notion that commerce language is enough to extend the law to foreign conduct, even if that language otherwise invokes the full scope of the constitutional commerce power.”  Argument Transcript (page 4, lines 4-11).  That single sentence illustrates lawyers’ difficult relationship with language, as it couples a concession with what the word commerce means with an argument that the word cannot be understood that way in that context, a position later returned to on rebuttal when counsel argued that “commerce” here must mean “domestic commerce” (page 91, line 13 to 92, line 15), a follow up to the point made in the cert. petition (at 34-35) that the Court has “‘repeatedly held that even statutes that contain broad language in their definitions of ‘commerce’ that expressly refer to ‘foreign commerce’ do not apply abroad.’” And therefore “a fortiori, a statute whose definition of ‘commerce’ at most implicitly could include foreign commerce cannot apply abroad either.”

But there are counterarguments to the suggestion that the law would only have been concerned with uses in domestic commerce.  That is because, as the Government’s amicus brief points out (13-14), the Lanham Act permits recovery against any person who “use[s] in commerce” the owner’s mark where such use “is likely to cause confusion, or to cause mistake, or to deceive.” 15 U.S.C. 1114(1)(a), 1125(a)(1).  So, while the effect of confusion would need to be felt domestically, the cause could be anywhere. As the Government noted (at 14), “To the extent that petitioners’ sales created a likelihood of consumer confusion in the United States, Congress’s purposes therefore are squarely implicated, even though petitioners’ own conduct occurred abroad.” The INTA amicus brief (at page 4) summarizes this position well, noting:

 The Lanham Act may be applied to stop foreign conduct that causes substantial impact in the United States within the focus of the Lanham Act, especially where the defendant is a U.S. citizen. Steele v. Bulova Watch Co., 344 U.S. 280, 285-86 (1952). But this does not mean that the Lanham Act has unlimited worldwide application against foreign actors who are not U.S. citizens. Indeed, the Act reaches foreign conduct only to the extent it causes substantial injury in the U.S. Such foreign conduct that causes substantial impact in the U.S. exists in the boundary between “extraterritorial” and “domestic” application of the law and should be reachable whether or not the Court holds the Lanham Act to have extraterritorial application.

Other amici like Intellectual Property Owners Association (IPO) and American Intellectual Property Law Association (AIPLA) also pushed similar views.

In the end though, the test the court applies is less one of defining terms to be applied as law than of determining causation as to any of the impacts felt in fact, always a more case-specific inquiry, as the ABA’s amicus brief noted (at 15).  As a long-ago law review note said, “Any legal definition of causation must raise the question whether all the requirements of the definition are found to be present in the particular case. No sound principle can be laid down by which the judge can always determine this question without infringing on the province of the jury.” Note, Legal Cause In Actions of Tort, 25 Harv L. Rev. 303, 305 (1912). It will be interesting to see where the Supreme Court defines these boundaries and draws the lines in the trademark context.

As we wait to see how the Supreme Court will define the reach of the Lanham Act, we also review what it will do in Finjan LLC v. Eset, LLC, a patent case.  As one might imagine, patent law frequently comes down to what particular terms in a patent mean, and because the whole point of a patent is to describe a new invention, existing language may sometimes now fully capture what an invention, or element thereof,  really is. Consequently, there is a long tradition in patent law of letting patentees and inventors act as their own lexicographers, as the saying goes:

Although words in a claim are generally given their ordinary and customary meaning, a patentee may choose to be his own lexicographer and use terms in a manner other than their ordinary meaning, as long as the special definition of the term is clearly stated in the patent specification or file history.

[Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)]

[T]he claim term will not receive its ordinary meaning if the patentee acted as his own lexicographer and clearly set forth a definition of the disputed claim term in either the specification or prosecution history.

[CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)]

What the saying really means is that a patent applicant can give a word, term, or phrase its own definition, and that definition should be applied to that application or later patent. 

The problem in Finjan was two-fold.  First, the patent applicant used inconsistent definitions of the term “downloadable.”  That in and of itself may have rendered the patent indefinite and therefore invalid under US statutory law, which was the ruling of the district court.  But the Federal Circuit on appeal created the second problem, at least as the petitioner sees it.  The Federal Circuit provided its own definition for the term “Downloadable,” vacated the indefiniteness finding, and remanded to the district court for consideration of the patent in light of the definition of “Downloadable” that the applicant had never considered or argued.  Telling a patent applicant that her invention, or a major element of it, does not fit the applicant’s own definition of the invention or such elements sows confusion among many patent lawyers in the US. 

But the real problem here is not with the definition of “Downloadable” by the Circuit court, but failure of the petitioner to understand what being a lexicographer means in this context.  Like Samuel Johnson, Noah Webster, James Murray or W.C. Minor, one must earn the title or description lexicographer.As Simon Winchester, author of The Professor and the Madman: A Tale of Murder, Insanity and the Making of the Oxford English Dictionary (1998), pointed out, part of that step is the “end to timidity – the replacement of the philologically tentative by the lexicographically decisive.” That simply never happened in Finjan, as there were multiple and inconsistent cross-references and no specific, concluded definition.  Thus nothing decisive, and certainly not, in the language of Vitronics or CCS nothing clearly stated nor clearly set forth.  Consequently, it does not seem to violate precedent nor ignore an applicant’s would-be status as lexicographer for the Federal Circuit to have come up with its own definition here.  The lexicographic enterprise in Finjan just had not happened yet, as there was certainly no OED or even draft, just, as seen in the book and movie version of the Murray/Minor story, some conflicting and separate slips of paper not yet acted decisively upon. 

Finally, let us examine the Copyright Office Guidance referenced earlier.  The  purpose of that guidance was “to clarify its practices for examining and registering works that contain material generated by the use of artificial intelligence technology,” and the guidance reiterated the “well-established [principles] that copyright can protect only material that is the product of human creativity” and that, “fundamentally, the term “author,” which is used in both the Constitution and the Copyright Act, excludes non-humans.”  These are principles that I have commented on her before as far back as 2016 and July 2021 (each on the human author vel non question, and I would note that the issue of whether animals have rights of their own remains one others are bringing to court up to this day, as recently noted here). More recently, such as last June and just this February, this poster blogged here on AI issues and commented elsewhere on artificial intelligence generally and specific to this new guidance.

Central to the guidance is the concept that US law presently requires “authorship” to include human touch or contribution, and works that lack human touch will not qualify. The Copyright Office reaches that conclusion in part because, as the guidance states “the Copyright Act refers to an author’s ‘children,’ ‘widow,’ ‘grandchildren,’ and ‘widower,’—terms that ‘all imply humanity and necessarily exclude animals.”  But is that so? 

It seems to me that one sees in popular culture references to the “children” and “grandchildren” or at least the “next generation” of non-humans all the time.  For instance, the Encyclopedia Britannica entry on the racehorse Sea Biscuit describes him as “Man o’ War’s grandson,” thereby impliedly also labeling Man o’ War as a grandfather.  Likewise, Elsie the Cow of Borden’s fame was described in the media as being “with child” before she gave birth to a calf.  And gorillas at the London Zoo have been described in the press as both “widowed” and “husbands.” All of these instances, and I am sure there are more, suggest that the US Copyright Office may have too quickly found that such statutory references must automatically be understood to refer only to humans. Just as importantly, or maybe even more importantly, courts have used those words in reference to non-humans, as when the Supreme Court of Minnesota referred to “Traffic Secretary, great-grandson of the famous racehorse Secretariat, “

Further, how much human touch is enough touch is a complicated question, and may be even more difficult a question in mediums like art and music, as David Israelite points out in a well-done article.  While noting that “AI is already pushing the boundaries,” he also states that “it’s extremely unclear how these lines will be drawn when the human and AI contributions are more intertwined.”  So, copyright cartographers and surveyors will remain somewhat unguided in defining those boundaries. 

Not fully at sea though. As the Copyright Clearing House has noted and I have mentioned, the Copyright Office is engaged and listening.  The Copyright Office’s AI initiative, “has its own dedicated site, will include public listening sessions in April and May, as well as future notices of inquiry,” as CCH notes.  So “[w]e’ll all have to stay tuned to see how the initiative develops and to see what other guidance the Office might release,” according to CCH.  Sure, “[i]n the eyes of the Copyright Office, the human hand has the upper hand for now, which should be a relief for practicing artists concerned about AI encroaching on the commissions and freelance market,” as one commentator noted.  But, as I noted before, “I think the Kraken comes now—help us,”

It also makes sense that AI work should be copyrightable.  That does not mean that a copyright should register in the name of the AI program any more than it should in the name of the camera.  The economic realities present suggest that some protected status, whether in copyright itself or in some other form makes sense.  I draw the analogy to what happened in the patent field where many long debated whether plant patents were obtainable since the novelty was not created by an inventor but, many would argue, by nature.  But giving periods of exclusivity to those who wished to do painstaking, long work of plant cross-breeding and genetically modifying organisms was a necessary incentive to spur investment, as Wen Zhou has discussed. Just as “Congress passed the Plant Patent Act in 1930 as a result of plant breeding and other agricultural efforts, making new plant strains derived from crossbreeding patentable,” Id., some modification of, or supplement to, the Copyright Act to make some level of AI-generated images and texts protected seems an economic inevitability.  Exactly where that boundary and those borders will be drawn is unclear.

But, as suggested in our title, defining boundaries is a frequent task in the law, and we must not shrink from defining boundaries in a way that expands our minds and our possibilities.

Graphical User Interface (GUI) refers to icons, windows, and/or menus to offer a mechanism to interact with electronic devices visually. There has been quite a bit of debate around the registrability of GUIs under industrial design law in India. While the Designs Act, 2002, recognised protection for GUIs, the Indian Patents Office has been reluctant to grant registration to GUIs.

The Design Rules underwent an amendment in 2008, pursuant to which the Locarno classification was officially adopted by India. Pursuant to this, Class 14-04 pertaining to ‘Screen Displays and Icons’ was officially included in the Indian design classification. Interestingly, some GUIs were granted registration by the Indian Patent Office prior to 2008 under Class 14-99 (titled as ‘Miscellaneous).

However, despite the 2008 amendment (to the Design Rules) and the pre-amendment grant of GUI design registration (which was in favour of Microsoft), the Patent Office rejected Amazon’s application for registration of a “Graphic user interface for providing supplemental information of a digital work to a display screen”. The Indian Patent Office stated that GUIs did not fit within the meaning of ‘Article’ [under section 2(a)iii] and ‘Design’ [under section 2(d)iv] under the Design Act, 2000. The Patent Office further stated that: 

A GUI lacks ‘constant eye appeal’ as it is visible only when the computer screen is on and hence is merely a function of a computer screen (and not an IP).
It is not a finished article since no industrial process was involved in manufacturing it.
The GUI is not an integral part of the article but purely functional.
Since the GUI cannot be sold separately, it is not physically accessible.

It is surprising that this order was never challenged before the Court owing to which the status quo continued as it is until recently when a fresh challenge came up for consideration before the Court in a separate case.

In the case of UST Global (Singapore) Pte. Ltd. Vs. The Controller of Patents and Designs and Anr.[1], the appellant had filed a design application for registration of a design titled ‘Touch Screen’ for a novel surface ornamentation. The Controller of Designs rejected the application on the ground that the GUI was only operative when the computer was switched on and thus it did not provide ‘consistent eye appeal’; GUI did not qualify as an article of manufacture, GUI was not physically accessible; and that the GUI design did not come under the ambit of the Act.

The appellant preferred an appeal before the High Court of Calcutta with the following points of argument:

GUI is a software, an intellectual property, an article of value hence capable of registration.
The subject design is original and has never been in the public domain.
GUI can positively influence customers to buy such products.
The 2008 amendment of the Design Rules, 2001 provides for an elaborate classification of goods and articles on which designs can be applied and registered.
While the GUI in the present case is in-built, the in-built ICONS can be displayed in shops as well as in advertisements.
The process of application of the subject design on the finished article is a mechanical and manual process that falls within the definition of ‘industrial process’ (and accordingly falls within the purview of Section 2(d) of the Designs Act 2000).

The High Court, after hearing the arguments, held that the finding (of the Controller) that GUI/ ICON is incapable of registration is incorrect. The Court remanded the matter back to the Controller for fresh consideration within a period of three months after giving a right of hearing to the appellant. This order gives fresh hope of settlement of the law on the registrability of graphical user interfaces under industrial designs law in India. Once it is settled law that GUIs can be registered under the category of industrial designs, we might witness a big increase in the applications for GUI registrations in India.

[1] AID No. 2 OF 2019

Exclusive rights over a trademark in Colombia arise from registration. Also, when holding a trademark registration in Colombia, the obligation arises for its owner to use the trademark in commerce, beginning three (3) years from the date when registration was granted. 

This means that a trademark registration in Colombia may be canceled by the Trademark Office, if the trademark has not been effectively and publicly used, to identify in commerce, goods or services covered by the registration. 

A cancellation action is a formal request, posed by any third interested party, which commences by filing a cancellation petition with the Trademark Office, upon payment of the applicable official fee. 

If the cancellation petition is granted by the Trademark Office, the party who requested cancellation has a preferential right to file, within three (3) months following the decision that canceled the initial registration, a new application to register the same trademark that was canceled.  

Once a cancellation action has been admitted to proceeding, the owner of the trademark that has been questioned for lack of use will be granted a sixty (60) day term to provide evidence of sufficient, public and continuous use of the trademark in the market, in Colombia or at least one of the countries that are members to the Andean Community, to identify all or some of the products or services covered by the registration. 

The evidence provided in defense of the cancellation must show that the trademark has been used in the way that it was registered; this means that the trademark used in the market to identify products or services, corresponds to the one registered, and only variations in non-essential elements would be admitted to support a valid use. 

Following is a summary of elements that the  Colombian Trademark Office and the case law have identified as relevant to be considered when reviewing if a trademark registration is subject to cancellation:

– The cancellation of trademarks has the ultimate purpose of excluding, from the trademark register, any distinctive signs that have not been used by its owner, and which may be of interest to third parties.

– The concept of sufficient use of a trademark, implies both a qualitative and quantitative analysis of the evidence, to confirm if the evidentiary elements provided by the owner show that products or services have been made available in commerce under the trademark, in the quantities and in the form that is expected for the particular type of products or services. 

– To avoid cancellation the trademark must have been used by the owner or a third authorized party. Said use must have happened within the relevant period –three (3) years before the date when the cancellation request was filed– and must be referred to transactions for amounts that are consistent with the type of products or services that are covered by the registration.

– The evidence of use may show that the trademark has been used in Colombia, or in at least one of the member countries of the Andean Community, namely Perú, Ecuador, and Bolivia.

– Also, any evidence that shows use of the trademark in products that are destined to be exported from the member countries, may prevent cancellation, if the quantities are deemed to be sufficient.

– Evidence consisting of advertising materials is not deemed to be sufficient to prevent cancellation by itself, since it only shows an activity that may happen before the actual commercialization of products or services, but does not show that the products bearing the trademark have been available to consumers in the market.

– On a case-by-case basis, the Trademark Office will determine whether the use that is evidenced in the proceeding shows that the transactions reflected in the documents correspond to the normal commercialization of the relevant products. For example, if the trademark is registered to identify massive consumption products, the quantity of products sold must reflect the expected number of transactions over these types of products, during the relevant term.

– Any documents supplied as evidence of use, such as copies of invoices, accounting certificates or affidavits, must depict or make express reference to the trademark and the relevant products, so that the Trademark Office may verify that the information contained therein shows, with a high level of certainty, that the trademark has been used in commerce.

The Trademark Office may decide to partially cancel the registration. In this case, the decision to cancel will declare that the registration remains in force to cover those products whose use has been evidenced by the trademark owner, thus eliminating from the scope of the registration all of the other products that were not covered by the evidence submitted to the proceeding. 

A decision to cancel a trademark may be appealed, and the final decision from the Trademark Office may be challenged before the administrative courts. 

At Gamboa, Garcia & Cardona we are ready to assist with the defense of your trademark registrations against cancellation actions filed by third parties.  Also, we are ready to structure effective strategies to minimize the risk of cancellation, and to update your trademark portfolio so that the legal protection of your brands is in line with how they are currently used in the market, under your business plans and priorities. 

Decision 486 of 2000 of the Andean Community sets forth several events that may give rise to the rejection of trademark registration.  Said events intend to protect the general interest that is involved in ensuring that no exclusive rights are granted over signs that are not appropriable by the applicant (absolute grounds for rejection) or to protect the private interest involved in prior registrations or other priority rights (relative grounds for rejection).

In addition to the absolute grounds for rejection and the relative grounds for rejection, the Colombian legal framework provides that the Trademark Office may deny registration when available evidence reasonably indicates that the registration has been applied to perpetrate, facilitate, or consolidate an unfair competition behavior by the applicant.

This event must be raised by the affected party as an argument of opposition, which must be supported in evidence that may allow the Trademark Office to reasonably conclude that the applicant has the intention to obtain the registration as an instrument to gain an unfair advantage in the market.  A doctrinal discussion exists as to whether the Trademark Office may raise the unfair competition argument ex-officio if opposition from the affected party is not filed.

The Trademark Office is not competent to declare that unfair competition behavior has been committed.  Its authority is limited to analyzing the evidence available and determining, based on the evidence,  whether it is reasonable to conclude that the application for registration may be an element that contributes to the completion of an unfair competition behavior that may affect the market, the competitors, and the consumers.

The Trademark Office, in analyzing the unfair competition argument, must interpret the provisions of the Unfair Competition Law, and particularly determine if the evidence available reasonably indicates that the applicant is acting against the commercial good faith principle, intends to profit from the commercial reputation of a competitor, intends to create confusion among the consumers or to systematically imitate the commercial initiatives of the competition, except if its conduct is a natural response to the market dynamics.

Said analysis must be performed in the course of the last stage of the prosecution proceeding, namely the substantial review of the application, which follows the formal review, publication, and opposition stages. 

Even though the applicant has the opportunity to file defense arguments against the unfair competition claim, the analysis of the evidence made by the Trademark Office is reflected only in the first instance decision. Therefore, it may only be contested by the applicant in the appeal, or subsequently through nullity actions, before the highest administrative courts.

Case law has indicated that the Trademark Office has a duty to reject registration when the evidence shows, through indirect evidentiary elements, that the applicant intends to gain a competitive advantage.  To this effect said evidentiary elements must be sufficient to indirectly indicate to the examiner that the parties participate in the same market and that the applicant would benefit from registering a sign which would facilitate, without justification or economic effort, its entrance, consolidation, or increase in market share, and that said circumstances appear to affect the commercial efforts of the competitor.

Thus, the authority of the Trademark Office concerning the unfair competition argument may be interpreted to be preventive and to protect the healthy competition and the interest of consumers.

At Gamboa, Garcia & Cardona we are ready to answer your queries in connection with this interesting matter, and to assist you in the course of the trademark prosecution proceedings where the unfair competition argument may be raised to prevent the registration of a trademark.

Suppose you have expressed your work in a tangible form, but it contains material generated by artificial intelligence (AI). Although your copyright exists at the moment of creation, does the work contain enough human authorship on which to base a claim for copyright registration? Should you register the copyright on the work with the U.S. Copyright Office? If there is enough human authorship, the answer is YES!

In the United States, under 17 U.S.C. § 102(a), “Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device”. According to the interpretation of the U.S. Constitution and Supreme Court cases, the “authorship” in the work must be a human and not a non-human.

In the 2021 Compendium of Copyright Office Practices, the U.S. Copyright Office states that “to qualify as a work of ‘authorship’ a work must be created by a human being” and that it “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.” Suppose your work for copyright registration contains both human-authored material and AI-generated material. Would you be able to register your work as a human author? The answer is a case-by-case inquiry that depends on how the AI tool operates and how it was used to create the final work.

The U.S. Copyright Office has issued a statement of policy to clarify its practices for examining and registering works that contain material generated by artificial intelligence. The statement of policy was issued on March 12, 2023, and entitled “Copyright Registration Guidance: Works Containing Material Generated by Artificial Intelligence”. In this statement of policy, the U.S. Copyright Office will consider whether the AI contributions are the result of “mechanical reproduction” or instead of an author’s “own original mental conception, to which [the author] gave visible form.” 

Examples of works that the U.S. Copyright Office will not register include when a human prompts AI technology to produce a written, visual, or musical work. In this case, the human identifies what it wishes to have depicted and the AI technology generates the work such as music in the style of The Rolling Stones. Examples of works that the U.S. Copyright Office will register include when a human selects or arranges AI-generated material in a sufficiently creative way that “the resulting work as a whole constitutes an original work of authorship.”  In this case, the AI technology generates the material, but the human selects and arranges the material or modifies the AI-generated material to such a degree that the modifications meet the standard for copyright protection. However, the copyright registration will only protect the human-authored aspects of the work, which are “independent of” and do “not affect” the copyright status of the AI-generated material itself.

Let us assume that your work contains human-generated material and AI-generated material. You need to determine whether you have enough human authorship in the work. Once you have determined that there is enough human authorship in the work that contains AI-generated material, you should register your work with the U.S. Copyright Office. However, you have a duty to disclose the inclusion of AI-generated material in the copyright application and provide a brief explanation of the human author’s contributions to the work. To register your work, you should use the Standard Application to identify the human author(s) and provide a brief statement in the “Author Created” field that describes the human authorship. For example, you should not identify the author or co-author as AI technology or the company that provided it. For human authorship, you should fill out the “Author Created” field to claim the portions of your authored work or claim that the “selection, coordination, and arrangement” of the content was created by you, but that the content was created by AI.

In addition, you may exclude the AI-generated material from the Standard Application in the “Limitation of the Claim” section in the “Other” field under the “Material Excluded” heading by providing a brief description of the AI-generated material or identifying the material “generated by artificial intelligence.”  You can also provide additional information in the “Note to CO” field in the Standard Application. If you are unsure of how to fill out the Standard Application, you can provide a general statement that the work contains AI-generated material. If there are no questions about human authorship, the U.S. Copyright Office will not contact you. Otherwise, the U.S. Copyright Office will contact you.

Suppose you have already submitted your copyright application for a work that contains AI-generated material. Can you correct your application? The answer is YES. If the copyright application is currently pending, you should contact the Copyright Office’s Public Information Office and report that your application omitted the fact that the work contained AI-generated material. If your copyright application has registered, you should correct the public record by submitting a supplementary registration. In the supplementary registration, you should identify the original human-authored material in the “Author Created” field, disclaim the AI-generated material in the ”Material Excluded/Other” field, and complete the “New Material Added/Other” field. If there are no questions about human authorship, the U.S. Copyright Office will issue a new supplementary registration certificate with a disclaimer addressing the AI-generated material.

Based on the above, you should register your copyright in the work that contains human-generated material and AI-generated material. If your work contains enough human authorship, you should have a valid copyright registration and prevail in a copyright infringement suit. If you fail to identify the AI-generated material in the copyright registration and sue an alleged infringer for copyright infringement, the alleged infringer may argue that you do not have a valid copyright registration. In addition, a court may disregard the copyright registration in an infringement action pursuant to section 411(b) of the Copyright Act if it concludes that you knowingly provided the U.S. Copyright Office with inaccurate information and the accurate information would have resulted in the refusal of the copyright registration. Therefore, it is recommended that you register your copyright in the work that contains human-generated material and AI-generated material and identify the AI-generated material with the U.S. Copyright Office.

Foreign entities wishing to register an Australian trademark should be aware that Australia is a ‘first-to-use’ jurisdiction. This means that the owner of a trademark is the first user of that trademark.

First to File

In some jurisdictions, the entity that is the first to file an application to register a particular trademark is the owner of that trademark. In a first to file jurisdictions the applicant will generally be the owner of the trademark regardless of whether the applicant has used the trademark prior to making an application for registration, and regardless of whether another entity (that has not previously applied to register the trademark) is already using it.

Arguably, a first-to-file system is easier to manage. Generally, in a first-to-file country, the only step the relevant IP Office needs to take to establish ownership of a trademark is to determine who was the first to file an application to register the relevant trademark.

First to Use

However, in Australia, priority is given to the entity that is the ‘first to use’ a particular trademark ‘as a trademark’ in relation to goods and services.

This means that if an entity has not registered its trademark in Australia, it could generally still rely on the Australian Consumer Law (which prohibits misleading and deceptive conduct and conduct that is likely to mislead or deceive consumers) or the Australian common law tort of ‘passing off’ to protect their trademark, provided that they were the first to use the trademark as a trademark in relation to goods and services in Australia. 

Further, if the owner of an unregistered trademark decides to apply to register that trademark and receives an objection from the relevant examiner on the basis of a prior registered mark, the owner of the unregistered trademark may (as a general rule) be able to overcome that objection if it can show that:

use of the applicant’s trademark commenced in Australia before the priority date of the cited trademark; and
their use as a trademark has been continuous at least up until the priority date of the cited trademark.

Use “as a Trademark”

Use as a trademark generally means that the trademark has been used as a ‘badge of origin’, for example, to show the source of the goods or services to which it relates. This was provided for in Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, in which the Full Bench of the Federal Court of Australia held that the use of a mark as a ‘badge of origin’ (“in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods”) is used ‘as a trademark’.

The Full Court remarked in their judgement – “that is the concept embodied in the definition of ‘trade mark’ in s 17 [of the Trade Marks Act 1995 (Cth)] – a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else.”

One way to determine whether a mark is being used ‘as a trademark’ is to consider whether the mark is descriptive which would mean that it is unlikely that it has been used as a badge of origin and therefore, unlikely that it has been used ‘as a trademark’.

Notwithstanding that Australia is a ‘first to use’ jurisdiction, it is still extremely important that trademark owners seek to register their trademark. Having a registered trademark will make it quicker, easier, and cheaper to stop a third party from using an infringing mark in relation to the same goods and services. However, foreign entities should be aware that third parties may have rights to the same or a similar trademark in respect of the same goods or services.