IP Tip of the Month: Year in Review
As 2023 comes to a close, it’s a great time to take stock of the year’s accomplishments and to create a game plan for diving into 2024. Maybe your small business made a jump thanks to a viral TikTok or popular influencer. Perhaps your company is gearing up to sell product internationally. Maybe you’re looking for fresh and trendy marketing strategies. But before you take that next step, it is crucial to consider the role that intellectual property – both your own and of others – may play.
To help you evaluate your knowledge and need of all things intellectual property in 2024, we did our own year-end review by recapping each of our 2023 IP Tips of the Month.
Even though copyrighted works can only be protected for a limited duration, it is possible for a copyright owner to retain some control over their creation after the work expires. For example, 2023 marks the final year of copyright protection for the original Mickey Mouse cartoon, Steamboat Willie. But by working images of Disney’s original mascot into its recent branding, Disney will be able to control some public use of the mouse’s design as a trademark. Thus, even though a previously protected work may be in the public domain, that does not mean every aspect of that work can be used freely.
Have you ever seen printed or embossed patent numbers listed on products or product packaging? Patent marking, or the act of placing a notice on a product, packaging, or associated documentation to indicate that the product is protected by an issued patent, is a vital part of not only enforcing your own patents, but of identifying your liability for potential infringement. Effective patent marking gives the public notice that a product is protected by a patent – an element necessary for recovering damages for infringement of the patent.
All states have laws that prohibit unfair and deceptive practices in consumer transactions that are likely to mislead a reasonable consumer, such as misrepresentation of fact and/or omission of necessary information. For example, a class action lawsuit was filed in 2023 against Sazerac Co., Inc. for selling mini bottles of Fireball Cinnamon Whiskey in nearly identical packaging to Fireball Cinnamon (a malt beverage), the only difference being a description of the bottles’ contents in an inconspicuous, small font. To avoid litigation, businesses should evaluate the clarity of what they are representing, the conspicuousness of qualifying information, the importance of omitted information, and public familiarity with the product or service.
Have you ever found your copyrighted material online without your authorization? By submitting takedown notices compliant with the Digital Millennium Copyright Act (DMCA), infringing content can be at least temporarily taken down or else service providers, like website hosts, can be held liable for the infringing material posted by their users. To streamline this process, many service providers have created forms to submit compliant takedown requests online. And while the DMCA does not provide such enforcement options to trademarks, some service providers provide similar forms to take down trademark-infringing posts upon a showing of a federal registration.
In today’s global economy, it is important for inventors to consider obtaining international patent protection to prevent others from making, using, and selling their invention in multiple countries. However, a patent application typically needs to be filed in each country where protection is desired, which becomes very costly very quickly. To optimize costs and reduce the burden in filing multiple patent applications internationally, it is important to hire a patent practitioner familiar with international patent strategy and, if possible, that has trustworthy foreign connections to ensure quick and accurate foreign filings.
Patent protection provides far more value than just the exclusive rights to produce, sell, use, and import an invention for the life of the patent. For example, to the ordinary consumer, patents can indicate prestige, quality, or uniqueness, acting as a boon in marketing a product. At the other end of the spectrum, patent marking can serve as a deterrent to competitors in the marketplace. Patents also have value as an intangible asset, capable of being licensed and sold, and even attracting investors.
As AI like ChatGPT becomes a larger part of our lives, it is important for companies to create guidelines for employee usage of AI tools. For example, because ChatGPT reviews the conversation history of users and their inputs, it is important that employees do not input any proprietary or confidential information into the program. Further, computer code or otherwise copyrightable works created in part with AI may not be protectable by copyright and therefore not owned by you or your organization. Additionally, ChatGPT is known to output false information, so it is important to have AI-generated material reviewed by an expert before being used.
Copyright registration provides significant advantages to the copyright holder. But when the Register of Copyrights refuses registration and the applicant disagrees with the refusal, there are a few avenues to pursue. First, within three months of the date of the refusal, the applicant may file a First Request for Reconsideration with legal arguments or supplementary information that support the applicant’s position. Upon successive refusals, the applicant can file a Second Request for Consideration, and appeal by filing suit against the Board under either the Administrative Procedure Act or Section 411(a) of the Copyright Act.
Deepfakes, or artificial intelligence-driven tools capable of creating hyper-realistic digital replicas of individuals, are putting stress on persons’ right of publicity. And because deepfakes are afforded some protections under the First Amendment, there must be additional violations, like defamation or trademark infringement, to justify legal action. Some of the options for countering deepfakes include contract provisions forbidding digital manipulation (e.g., for actors), DMCA takedown notices to internet service providers, and deepfake-detection software implemented by social media platforms. But even these options may soon prove ineffective as deepfakes become more difficult to discern.
Track One is the USPTO’s prioritized patent examination program which guarantees a final disposition of a US patent within 12 months. If a utility or plant patent conforms to certain criteria and is filed with a substantially greater fee, it may be granted Track One status and guaranteed a final disposition of the application within 12 months. Better yet, over the past 12 months, nearly 60% of Track One applications have been allowed, many likely without ever receiving a final rejection. Ultimately, an applicant must weigh the cost of filing a Track One application with the benefits of speedy prosecution, high allowance rates, and little to no prosecution history.
It is well settled that tattoos are copyrightable. But what happens when a party copies a tattoo in a different medium? In evaluating such alleged infringement, the decision typically hinges on fair use. Like many fair use cases, the outcomes are fact and jurisdiction dependent. Further, the fair use landscape was recently rocked by the Supreme Court’s Andy Warhol ruling, which may be shifting courts’ focus toward the “commerciality” of an allegedly infringing use and away from whether the use is “transformative.” To avoid infringing a copyright of a tattoo or with a tattoo, be sure to consult an attorney and perhaps seek a license for the underlying work.
If you have any questions about the creation or reinforcement of an IP portfolio for the coming year, be sure to reach out to a licensed practitioner for effective counsel.
These tips, each linked above, were written by one or more of: Ryan H. Boggs, Thomas J. Giacobbe, Helena M. Guye, Ross M. Kowalski, Bennett E. Kuhar, Francesca I. LaMontagne, Anna Nelson, Nathan C. Lovette, Carter S. Ostrowski, Victoria A. Stallkamp, and Martin J. Yi.