I, Robot: PTO Seeks Comments on Protection for AI-Created Works

Earlier this year, the United States Patent and Trademark Office (USPTO) held a groundbreaking conference on the impact of artificial intelligence on the development of intellectual property. This week, the USPTO issued a follow-up notice, requesting comments on the copyright, trademark, and other intellectual property rights issues that may be impacted by the rise of artificial intelligence.

The request sets out 13 questions on issues related to the scope of IP protection that should be afforded to works that may be created by artificial intelligence, such as: “Should a work produced by an AI algorithm or process, without the involvement of a natural person contributing expression to the resulting work, qualify as a work of authorship protectable under U.S. copyright law?” Comments on the questions can be submitted on or before December 16, and can be emailed to AIPartnership@uspto.gov.

Animated IP: A Series of Answers to Your Questions from Rose City Comic Con

In this upcoming series of posts, Animated IP, team members will answer your questions from their panel at the 2019 Rose City Comic Con. This is the first post in the series.

Question 1: I am drawing my uncle’s memoir with the goal of getting it published. He lived a very interesting life which included friendships and interactions with some famous people (mostly athletes) because he played briefly on the Kansas City Chiefs football team. How can I include these names and franchises in the book without fear of litigation in the future?

We can never be 100% safe from litigation. To put yourself in the safest position, it’s usually best to get permission to use the trademarks and imagery you want to put into your work. However, permission is not legally required in order to use the names of actual persons or sports teams in an original work. As long as you are creating an original work of authorship, whether fiction or nonfiction, the First Amendment allows you to make references to actual people, living or dead, without obtaining permission. There are a few things to look out for, however. Continue Reading

Pop Culture: Captain Marvel, Shazam, and a 12-Year Legal Battle

Among the latest entries in the quickly expanding catalogue of blockbuster movies about comic book characters are Marvel’s Captain Marvel and DC’s Shazam!, both of which have generated hundreds of millions of dollars at the box office this year. Given the present financial success of these characters, it may come as a surprise to fans that Captain Marvel and Shazam have a complicated and intertwined history, including a legal battle that lasted more than a decade but was over before most current fans were even born. Continue Reading

Recreational Marijuana and Marijuana-Related Products Found Not to Be in the “Zone of Expansion” of Smokers Articles, Including Vaping Devices

A New York District Court recently denied a preliminary injunction to stop use of the mark WOODSTOCK in association with cannabis and cannabis-related products, in part because cannabis and cannabis-related products were found not to be in the “zone of expansion” of the movant, despite movant’s federal registrations of WOODSTOCK for smoker articles.

Woodstock Ventures (WV), owner of several WOODSTOCK registrations for entertainment services, sued Woodstock Roots (WR) in 2018 for allegedly infringing WV’s trademark rights in WOODSTOCK by selling marijuana goods. WR, an entity that has also used the name for years and has federal registrations of WOODSTOCK for smoker’s articles, including “Smokeless cigarette vaporizer pipes for use with either tobacco-based e-liquids or e-liquids derived from the mature stalks of industrial hemp exclusive of any resins,” countersued and moved for a preliminary injunction to stop WV from selling cannabis and cannabis-related products with the WOODSTOCK mark.

The Court ruled that WV’s use of WOODSTOCK on recreational marijuana and vaping devices was not likely to infringe the trademark rights of WR. While other factors were also found to favor WV, the Court found in favor of WV in part because 1) there is no proximity of the goods in the market place because as part of the federal trademark application process, WR expressly disavowed that the applied for smoker’s articles, including vaping devices, were intended for use with recreational marijuana, and 2) cannabis and cannabis-related products are not in the “zone of expansion” of WR, again because WR expressly disavowed intended use with respect to recreational marijuana when applying for the federal trademark. The Court emphasized that it “cannot give weight to [WR’s] alleged intent to expand into the area of selling recreational marijuana, because the sale of recreational marijuana is illegal under federal law.”

Interestingly, there was no discussion of WR’s actual use of the WOODSTOCK mark for marijuana and marijuana related goods, despite the fact that WV initiated this suit in federal court against WR because of that actual use. As we’ve noted here before, obtaining and protecting IP rights in cannabis-related products can be tricky. But if you want to do so, we’re here to help.

Supreme Court Grants Certiorari in Game-Changing Trademark Appeals

Continuing to feed its appetite for trademark rulings, the U.S. Supreme Court has recently granted petitions for certiorari of two Second Circuit decisions implicating trademark law. The first case could change the burden of proof for recovering an infringer’s profits as damages in trademark disputes, while the second case may limit a defendant’s ability to invoke new defenses to trademark claims. Both cases have the potential to create seismic shifts in trademark jurisprudence.

In Romag Fasteners, Inc. v. Fossil Inc. the justices will decide on an issue splitting the circuit courts: whether awards of an infringer’s profits from trademark infringement require evidence that the infringer acted willfully. The Ninth Circuit—like the Second Circuit, where this appeal originated—predicates profits awards on the plaintiff’s ability to prove that any infringement is willful. But other circuit courts do not require a showing of willful infringement for damages to be awarded. Romag argues that the “willfulness requirement sets the bar too high” by forcing mark holders to prove that infringement of their trademark was intentional. This high burden arguably fails to adequately deter trademark infringement. Ninth Circuit precedent will be reversed if the high court rules in favor of Romag, eroding mark holders’ burden of proof, thus raising the likelihood of securing meaningful monetary relief from trademark infringement. The case should be closely monitored over the Court’s next term, since it could open the door for an increase in trademark suits. Continue Reading

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