IP Archives - Steve Masur

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The AI Copyright Quandary: Originality, Creativity, and the Machine

By Lauren Mack, with the assistance of ChatGPT

Questions surrounding the protectability of output produced by artificial intelligence (AI) under copyright law are becoming increasingly significant for content creators and businesses alike. The current legal framework in the United States and many other countries requires that, in order to be eligible for copyright protection, a creative work must be created by a human. However, as AI technologies continue to advance and produce increasingly creative and original works, there is a growing debate about whether these works should also be eligible for copyright protection.

Who Should be the Author of AI-Created Works?

One of the key issues in the debate over whether AI-generated works should be copyrightable is the question of who should be considered the author of such works. Traditionally, the author of a work is the person who created it, and that person is entitled to the exclusive rights of copyright protection. However, in the case of AI-generated works, there is no clear person or group of people who can be considered the author of the work. Instead, the work is the result of a complex and often opaque set of algorithms and processes that may involve many different inputs and variables.

The most persuasive approach to resolving this issue in favor of technology is to consider the role of human input in the creation of AI-generated works. While AI systems may be capable of producing works that are original and creative, these systems generally still require significant input and direction from humans. For example, an artist may use an AI algorithm to create a painting, but the artist is still responsible for selecting the colors, composition, and other elements of the work. Similarly, a musician may use an AI system to generate a melody, but the musician is still responsible for arranging and producing the final song. This could be analogized to taking a photograph with a camera – while the camera creates the picture, it is the human behind the camera who selects the subject, angle, lighting, etc., and who is therefore the copyright owner in the ultimate photograph. Proponents of this approach argue that the human input and direction involved in the creation of AI-generated works is sufficient to satisfy the “human authorship” requirement under copyright law.

A less common argument is that the AI itself is the copyright owner. This argument appears destined to fail, as the US Copyright Office has consistently stated that only humans can author a copyrightable work, including in connection with a case where PETA brought an action claiming that the copyright in a selfie taken by a monkey named Naruto using a camera set up by a nature photographer was owned by the monkey (the lawsuit was ultimately settled). Others have argued that the AI program is the author, which creates the work on behalf of the AI creator as a “work made for hire” under the US Copyright Act, making the creator of the AI program the ultimate owner in the works it creates.

One such argument is being made by Stephen Thaler, who submitted an application to register a copyright in an AI-generated work of art titled A Recent Entrance to Paradise in 2018. He listed the author of the work as his Creative Machine system, known as DAUBUS, which he claimed “autonomously” created the work. He further listed himself as the copyright claimant under the “work made for hire” theory. The US Copyright Office rejected his application, stating that current copyright law only provides protection to “the fruits of intellectual labor” that “are founded in the creative powers of the mind”, and AI-generated works do not meet this requirement. Thaler appealed the decision to the US District Court in Washington, D.C., arguing that protecting AI-generated works under copyright law is necessary to promote the production of socially valuable content and is required under current legal frameworks. While the Copyright Office’s decision here is in line with its previous statements and court rulings, these novel arguments could result in disrupting current norms.

Further clarification from the Copyright Office has recently determined that works not created entirely by AI may have limited copyright protection. In September 2022, Kristina Kashtanova attempted to register the copyright in their comic book entitled Zarya of the Dawn. The story was written by Kashtanova themself, however they used the AI art generator Midjourney to create the illustrations. Although they described the time-intensive process of describing how each image should look to the AI platform in order to obtain their desired output, the Copyright Office was unpersuaded that it was enough human creativity to merit full copyright protection. As of this week, the Copyright Office has cancelled their copyright registration and reissued it to exclude protection for the Midjourney-created art, but provided protection for the text written by Kashtanova and for the comic as a “compilation due to her creative selection, coordination, and arrangement of the text and images”. Whether Kashtanova will also appeal this decision to federal court as Thaler did remains to be seen.

That’s Output, But What About Input?

Whether AI output is copyrightable is not the only question being posed to US courts. For AI to learn how to create text, art, sound, or other output, its algorithm needs to be fed a large amount of information to analyze, from which it learns how to create the desired output. In January 2023, three artists filed a lawsuit in California federal court against DeviantArt, Midjourney, and Stability AI for using their artwork to train AI generators and requested certification of a class action on behalf of similarly situated artists. The plaintiffs asserted that the defendants fed their art to the AI algorithm, thus using it to create new images that were unauthorized derivative works of their original artwork. They further allege that the defendants have profited from these infringing artworks and have used the artist’s names to sell their AI products and services by virtue of being able to copy their artistic styles. The outcome of this lawsuit could have a serious impact on evolving technologies and/or the ability for artists to continue to make a living.

This tension between artists and technology has been a hot button issue since the advent of the commercial Internet. Without large amounts of information to teach the AI algorithm, it could not produce useful output, however if AI output can be used to replace artists by consuming their art, then human artists may not be able to survive. Ultimately, the question of whether AI-generated works should be copyrightable and what permissions are needed to teach that AI, if any, is likely to remain a contentious and evolving area of the law throughout the next few years.

Protecting Your Business from Intellectual Property Theft

By: Steven Masur

Intellectual property refers to the original creations of the mind. Such creations can include inventions, artwork, product names, written works, website content, computer programs, to name a few. Unfortunately, intellectual property is often plagiarized, and can be done so in many forms. For instance, one can pass-off the ideas or words of another as their own; one can use another’s production without crediting the source; one can disguise a new and original idea or product that in fact is derived from an existing source. With the help of an intellectual property lawyer, you can prevent theft of your original creations or ideas. Here are some tips to help you in the process:

Carefully Guard Information

It is in your best interest to keep your original creations or ideas to yourself until you have secured legal protection. Importantly, a mere idea – as opposed to a work fixed in a tangible medium of expression – is not copyrightable. This means additional steps must be taken to protect an idea if you plan to discuss the idea with another individual. The best way to do so is to avoid having the discussion in public, and to require anyone you discuss it with to sign a non-disclosure agreement. This may seem overly cautious, but this is the best way to prevent your idea from being repackaged by others.

Thoroughly Document Your Ideas

Starting from the onset of developing your idea, be sure to document and continue as the process evolves. These records will help you when you apply for legal protection, such as a trademark or a copyright. They will also serve as evidence if you have to file a lawsuit against another party for a trademark or copyright infringement.

Apply for Legal Protection of Your Ideas

Apply for legal protection of your original ideas that you plan to pursue. The longer you wait, the greater the risk that your idea is pursued by another. If you are an artist, musician, writer, or any other type of artist or entrepreneur, you can apply for copyright registration with the United States Copyright Office. You can also apply for trademark registration with the United States Patent and Trademark Office to protect your business name, logo, slogans, or any other part of your business identity. While the USPTO does not require an applicant to be represented by a licensed attorney, the trademark registration process can be tricky. As such, hiring an attorney may save you time and money because an attorney will know how to best advise you on the registrability of your mark, formally prepare your application to the USPTO’s liking, and respond to the USPTO on various issues that oftentimes arise during the application process.

Include Legal Protection for Existing Intellectual Property

If you have existing intellectual property, it is important to seek legal protection for that as well to avoid the risk of another individual claiming your intellectual property as their own without legal ramifications. You can do so by obtaining registration with the United States Patent and Trademark Office or the United States Copyright Office which will provide you with federal protection over your intellectual property.

The Balancing Test Between Data Privacy and Public Health in a Pandemic

By: Steven Masur and Maria Samson

The 2019 novel coronavirus “COVID” has disrupted seemingly every facet of daily life. From closing schools to altering the 9-to-5 workday, the pandemic has made us question constructs that have long been established as “the way it is,” and created a new construct; the way it is now, or “the new normal.” Organizations of all kinds have had to come up with unprecedented new solutions, such as imposing mandatory quarantines and creating contract tracing methods to flatten the curve. Unsurprisingly, governments have increased surveillance to control the spread of COVID, and have instituted tracking measures that make many people uncomfortable. How far should such surveillance go? Is your privacy at risk?

Pandemic outbreaks like COVID will likely occur again, and perhaps with more frequency. Contact tracing practices and surveillance technology created in reaction to the current pandemic threaten individual privacy and may have long-term privacy implications. As we shift to a new version of normal, we must find a balance between individual privacy and public health.

Companies, such as Apple and Google, are offering technology-assisted contact tracing solutions to help battle COVID. The Apple-Google solution is voluntary and allegedly anonymous, which aims to help control the spread of the virus by using Bluetooth technology. The Apple-Google solution records a user’s whereabouts, relationships, and activities. It is a good idea in theory, but in practice, such tracing technology is in its infancy and its efficacy is still in question. For instance, Norway temporarily suspended its nationwide contact tracing app due to security concerns. The app was gathering more data than was necessary to track the virus. As a result, Norway decided to delete all data collected by the app because keeping it constituted a disproportionate intrusion in citizens’ privacy. Ultimately, because contact tracing gathers so much information about an individual’s day-to-day activities, critics say that its use at scale could roll back years of privacy protection efforts that were meant to protect sensitive location data and keep people safe from governmental as well as criminal and other potential threats.

Contact tracing apps are not narrowly tailored to only track one’s contact with COVID. They record an individual’s location and movement, making it difficult to keep the data anonymous. The surveillance technology is more intrusive than necessary to achieve the narrow purpose of tracking the spread of COVID “hot spots”. While it may seem important to share this information now, proceeding down this slippery slope implicitly gives the government the actual data and could lead to unauthorized mass surveillance. In addition, the data is stored in centralized and mirrored databases that are susceptible to security breaches and make it likely that the data could be obtained and used not only by the government but by criminals as well.

In time, contact tracing methods can be developed to both serve public health and protect individual privacy. While governments and institutions have yet to find a solution that successfully balances these interests, we must safeguard individual privacy and not turn a blind eye to the rise of inappropriate or illegal forms of surveillance.

California Opts In for Comprehensive Privacy Protections

By: Lauren Mack and Matthew Basilotto

As our world becomes increasingly digital, concerns over the security and privacy of personal and other sensitive information have grown with the rapid adoption of new data collection and tracking technologies. Unlike the European Union with its General Data Protection Regulation, the United States has dragged its feet on taking action to create comprehensive data privacy rights for its citizens, leaving the responsibility to each state to determine how to protect the personal information of its residents. California has been a leader in enacting online privacy laws, and with the enactment of the California Consumer Privacy Protection Act (CCPA), has established the most protective privacy protection regime in the United States for the personal information of its residents.

What Businesses Must Comply with the CCPA?

The CCPA governs the collection and use of “information that identifies, relates to, describes, is reasonably capable of being associated with, or could reasonably be linked, directly or indirectly, with a particular consumer or household” who is a California resident. Information that is lawfully publicly available in federal, state, or local government records, is de-identified, or is in the aggregate is expressly excluded from the CCPA’s definition of “personal information”.

Those businesses that must comply with the CCPA are for-profit businesses that do business within the state of California and:

Have annual gross revenues in excess of $25,000,000;
Alone or in combination, annually buy, receive for commercial purposes, sell, or share for commercial purposes, alone or in combination, the personal information of 50,000 or more California resident consumers, households, or devices;
Derive 50% or more of its annual revenues from selling California residents’ personal information; or
Control or are controlled by any business that falls into one of the above categories and shares common branding with the business.

The above criteria applies to both online businesses and brick-and-mortar businesses doing business in California.

What Rights do Consumers have Under the CCPA?

The CCPA grants consumers three primary rights:

The right to know: Consumers have the right to request that businesses subject to the CCPA disclose the following:
- The categories of information that the business has collected about that consumer
- The specific pieces of information that the business has collected about that consumer
- The categories of sources from which the business collected that information
- The reasons why the business collected that information
- The categories of third parties with which the business shared that information
- Whether the business has sold the consumer’s information, and if yes, the categories of information sold and if the information was sold for a business purpose
The right to opt-out (and for minors to opt-in): Businesses must allow consumers who are 16 and older to opt-out of the sale of their personal information by the business. The personal information of a person under the age of 16 but at least 13 years old may not be sold unless the business has obtained the explicit written consent of the person. To sell the personal information of a person under the age of 13, the business must have the explicit written permission of a parent or guardian.
The right to delete: A consumer may request that a business delete any personal information the business has collected about that consumer unless an exception applies. Exceptions to a business’ obligation to delete personal information include needing to maintain the information to comply with a legal obligation, to detect security incidents or fraud, or to fulfill a contract between the business and the consumer.

Businesses are prohibited from discriminating against any consumers who exercise their rights under the CCPA. However, a business may charge a person who opts out of the sale of their personal information more than a consumer who opts in if the difference in price is “reasonably related to the value provided to the business by the consumer’s data”.

What do Businesses Need to Do to Comply?

To comply with the requirements of the CCPA, businesses will need to update their privacy policies and data processor agreements, review their security and data breach practices, and implement procedures for responding to consumers’ right to know, opt-out, and delete requests.

A CCPA-compliant privacy policy must disclose:

The date the privacy policy was last updated;
The categories of personal information collected by the business during the prior 12 months;
The reason why that personal information is collected;
The categories of personal information that the business has sold during the prior 12 months;
The categories of personal information that the business has disclosed for a business purpose during the prior 12 months;
The categories of sources from which the business received personal information during the prior 12 months;
The rights of California residents under the CCPA; how to submit requests to know, opt-in, or delete; and how the identity of the requester will be verified; and
How to contact the business if a consumer has questions about its privacy practices.

The categories of personal information collected and the reason why it is collected must be disclosed at or before the point of collection. What methods for submitting a request under the CCPA are required depend on how the business generally interacts with the consumers and whether it has a direct relationship with those consumers, but they may include an email address, a toll-free phone number, an interactive online form, or a mail-in form. Before responding to a request to know or to delete, the business must verify the identity of the requester using a method that collects as little new information about the requester as possible.

The CCPA also requires companies to maintain “reasonable” data security procedures and practices. Any business that uses a third party to store personal data of California residents should review its data processing and cloud storage agreements to ensure appropriate and industry standard security measures are implemented and, if applicable, to ensure the business will be able to respond to consumer requests within the required timeframes. Personnel handling CCPA compliance procedures must be trained on the CCPA’s requirements and how consumers may exercise their rights under it, and all employees should be trained on the business’ security practices generally. Each business subject to the requirements of the CCPA must maintain certain records on the consumer requests received and the response given for at least 24 months.

Failure to cure any noncompliance with the CCPA within 30 days may subject a business to civil penalties assessed by the Attorney General of California, which may range from $2,500 to $7,500 for each violation. The CCPA also gives consumers whose nonencrypted and nonredacted personal information is accessed or disclosed in a data breach the right to directly bring a civil claim for monetary damages or injunctive relief.

The Path Forward

Despite the general consensus that California’s rollout of the CCPA has been bungled by delayed final regulations and confusing requirements, California’s approach to privacy is likely a harbinger of legislation to come. Other states are expected to follow suit with similar privacy laws until a comprehensive federal privacy law is passed by Congress to replace the current patchwork of state privacy laws. Until Congress decides to act, it is clear that California will continue to push the envelope when it comes to privacy protections in the United States, as the even more stringent California Privacy Rights and Enforcement Act of 2020 (CPRA) will be on the ballot for California residents to vote for or against in November.

Sync Negotiations: How Much Should You Ask for Your Music?

By: Steven Masur

Synchronization rights negotiations become relevant whenever someone wishes to use your or your client’s music in combination with visuals and moving images such as in movies, television shows, video games, or YouTube videos. Many lawyers write articles about the legal issues that you are likely to encounter in a typical sync negotiation. But the truth is, there’s no such thing as “typical” when it comes to your music. What is crucial to know are the practical considerations that will drive your discussion of the scope, length, and pricing for potential licensed uses.

In doing so, get as much information as you can about the planned uses. Some of the questions you may want to ask include:

Is this for film, TV, streaming VOD, or some other use?
What’s the revenue model, subscription, ad-driven content, or something else?
Is it a music-driven script?
What other music are they thinking of using adjacent to yours?
What’s the distribution strategy? Is there an international distribution plan?
Theatrical release, indie arthouse?
If they can’t tell you their music budget, what’s the budget for the entire production?
If it’s for advertising, what’s the brand?
What’s the scale and length of the campaign?
Will there be influencers pushing it? Who do they have in mind?

It is important to keep asking questions about the scale of the opportunity, and how the music will be used. As that picture becomes more and more clear, you will be able to ascertain how real the opportunity is and come to a comfortable idea of the appropriate fee for your work.

Typically, the interested party will be paying a one-time flat fee for use of the song in their project. In most cases, this sync license fee can range from a few hundred dollars for a small artist in a small project to a few hundred thousand dollars for a major artist whose song is being used in a large budget production. Still, there are other payment arrangements available that may include royalty interests or some other calculation of fees.

After internalizing the intended use as well as the typical payment that similar works garner in similar projects, you should have a solid idea of how much you should be asking for your music. You ought to be skeptical of “test” deals, where entities attempt to get limited usage rights for a test to see how your music reacts against a market, or “just for social media.” As soon as your music is being exposed to actual customers for their product, it is no longer a test – it is then a use. Also, it’s unlikely they will be coming back for more.

You should also pay close attention to what the stated scope and scale of the usage of the music is and explicitly have outlined in the agreement that authorized usage by the license. Often, though the main purpose of the licensing is for use in a production like a motion picture, the licensee will plan to use the work in advertising or social media posts as noted above.

It is important to remember that having your music in circulation in any context is great promotion for future uses, or for the rest of your songs, and could even get your act touring. Still, it is easy to fall victim to receiving payment for your sync license that is well below the value of your work given the scope and scale of its use. Exposure and passive income are great but receiving an undervalued fee for your music can sometimes outweigh those benefits.

A Limited Shield of Privacy for New York Residents

By: Steve Masur

New York Governor Andrew Cuomo signed the Stop Hacks and Improve Electronic Data Security Act (the “SHIELD Act” or the “Act”) into law on July 25, 2019, nearly two years after the bill was originally proposed. The SHIELD Act amends New York’s General Business Law to reflect the data privacy needs of its residents. The Act implements additional security parameters for entities that own or license private information of New York residents. Additionally, the Act broadens the definitions of “private information” and “breach” to better protect New York residents against the unauthorized access of personal data.

Reasonable Data Security Requirements

New York joins a growing list of states that have enacted more modern data privacy laws. The Act requires businesses that own or license the private information of New York residents to have “reasonable” technical, physical, and administrative safeguards in place in order to protect the security, confidentiality, and integrity of the residents’ private information. This replaces the old standard by which New York residents and entities were only protected if business was conducted within the State of New York. The Act offers several examples of measures that can be implemented to ensure compliance with the necessary safeguards such as training of management and employees in cybersecurity practices, regular monitoring, testing and upgrades to address key controls and systems, and disposal of private information in a timely fashion. Small businesses, however, need only “reasonable administrative, technical, and physical safeguards” that are tailored to the size of the business, the “nature and scope” of the business’ activities, and the sensitivity of the personal data the business holds.

Private Information under the SHIELD Act

Another key feature of the Act is the wider scope of the definitions of “private information” and “data breach.” Under the Act, “private information” now includes biometric information, financial information (such as account numbers or credit or debit card numbers), and usernames or e-mail addresses in combination with password or security questions. While this is an improvement from the past definitions, it still falls behind the definitions provided in the privacy laws of other states, which include medical information and certain health insurance identifiers in the definitions. Further absent from the new definitions are personal identifiers such as consumers’ health insurance information and passport numbers.

Breach of the Security System and Penalties under the SHIELD Act

The Act also updates what is considered a “breach of the security in a system.” Mere access to such privileged information now constitutes a breach, a change from the old standard that only restricted the acquisition of private information. While the SHIELD Act does implement stronger penalties for data system breaches, it does not entitle residents to a private right of action. Instead, the Act allows the New York State Attorney General to have broader oversight in bringing actions and obtaining civil penalties on behalf of residents. The new penalty for knowingly and recklessly violating the Act is a $20.00 fine for each instance of a failed notification, with a cap of $250,000. The Act further implements penalties for certain violations to the new data security standards, which can reach up to $5,000 per violation with no cap. It is unclear what constitutes a “violation” under the Act.

What the FUCT: Can the USPTO Still Deny Your Vulgar or Offensive Mark?

By: Steve Masur and Cameron Ashby

The Supreme Court recently struck down a federal law that banned trademarking words and logos that are “immoral” or “scandalous”. The court reasoned that this federal requirement for registering marks was a form of viewpoint discrimination against vulgar or offensive marks and thus unconstitutional. As a result, Justice Sotomayor foresees a “coming rush” of trademark applications for vulgar or offensive marks, but that does not mean the U.S. Patent and Trademark Office (USPTO) is powerless to deny these applications on other grounds. Before deciding to register a vulgar or offensive mark for your business, it is important to consider whether the mark is registrable. In other words, the mark must satisfy the function of a trademark and be used lawfully in interstate commerce.

How to make sure your vulgar or offensive mark is a functional trademark

The recent decision in Iancu v. Brunetti has delivered a big win to shock-value brands and extended federal protection to a whole new class of trademarks. Under this new precedent, the USPTO cannot reject an application for a vulgar or offensive mark on the grounds that it is “immoral” or “scandalous”. Although, as multiple Justices in the Brunetti dissent pointed out, this “win” may be short-lived due to new Congressional legislation which could achieve the “immoral” or “scandalous” standard through more precise language.

In the meantime, when attempting to register a vulgar or offensive trademark, you should consider whether the mark truly functions as a trademark or violates any of the other principles of federal trademark law. The USPTO can reject the application if the mark is simply a random vulgar phrase or word printed on a shirt, merely descriptive, or deceptively misdescriptive.

It is important to note when the application is based on “use in commerce” or “intent to use” a specimen must be included. The USPTO, therefore, looks closely at specimens of use attached to the application and can reject it if the specimen seems not to be genuine but prepared simply to support the filing of an application. Additionally, it is required that the mark be shown on the specimen attached and also, shown to be used with the goods or services listed in the application. The USPTO offers a list of requirements in order for a specimen to be accepted, therefore it is imperative that those seeking trademarks consult with a private trademark attorney. The USPTO will not protect a mark that is used in the illegal stream of commerce; for example, cannabis.

How does this affect the industry?

While vulgar and offensive marks are now allowed to be federally registered, not all consumers will be comfortable with shock value branding. If your business does not work in a space where vulgar and offensive marks are considered to be valuable and more “shock” centered, it may be unwise to try and register a vulgar or offensive mark. Simply put, if your business is in the market where vulgar or offensive marks will grow your image, then, by all means, explore as many options as possible. At the end of the day, the market will decide what value vulgar or offensive marks have after Brunetti and consumers will control that value through their patronage.

Can Roland Claim Trade Dress Protection for its TB-303 and TR-808 Designs?

By: Lauren Mack and Sasha Safavi

Roland, an electronic musical instrument manufacturer, recently registered with the German Patent and Trademark Office the design used in two of their signature products – the TB-303 synthesizer and TR-808 drum machine. Commonly referred to as an “808”, the Roland TR-808 Rhythm Composer was one of the first drum machines to allow rhythms to be programmed into it (rather than only allowing for pre-set beats), leading to its now-iconic status in electronic and hip-hop music. Roland claims trade dress protection in the layout of the keyboard and knobs used on the 303 and the sequence of colored keys present on the 808 as distinctive elements in its German registration, which was granted in January 2019. Music technology website Create Digital Media notes that that the timing of Roland’s applications suggest that Roland may be gearing up to squash lookalike gear in response to the announcement of an 808 clone created by Roland rival Behringer.

Roland recently filed applications for the same designs in the United States, perhaps confirming suspicions of a crackdown on those who copy the distinguishing characteristics of Roland’s products. But how successful will Roland be in seeking trade dress protection in the United States?

What is Trade Dress?

Trade dress is a type of trademark protection that protects products with a distinctive design or packaging from being copied by competitors. The primary purpose of trade dress protection, as with trademark protection of words, logos, sounds, and other signifiers, is to protect consumers from being confused as to the source of a product, as well as to protect business from unfair competition. Protectable trade dress must be distinctive and applies to design elements such as color, shape, and other branding motifs. Trade dress protection may sometimes extend beyond product design and packaging, as was determined in a landmark United States Supreme Court decision where the interior color scheme of a restaurant was found to be inherently distinctive of its brand and worthy of trade dress protection.

In addition to being distinctive, the claimed trade dress must not be a functional element of the underlying product. If an element of the product design or packaging is essential to its purpose or affects the cost or quality of the product, then that element is deemed functional. This is because granting exclusive rights to functional elements would award monopolies to product designers and prohibit competition in the marketplace.

What Does Trade Dress Look Like?

A well-known example of distinctive trade dress is the shape of the classic Coca-Cola bottle – ribbed edges, wide base, narrow top, and a logo slightly higher-than-center, sitting cozy by the hand’s grip. Some of these elements are not unique to a Coke bottle – wide bases and narrow openings in bottles have practical spill prevention functionality. But other elements, namely the distinctive ribbing and logo placement give way to its art deco inspired, cocoa bean-inspired design that proved to become recognizable of the Coca-Cola brand.

The fashion world tested the distinctiveness requirement with red-bottomed stilettos in 2008, when Christian Louboutin, S.A. registered for trade dress protection in the bright-red lacquered outsole of its high-heel shoes with the United States Patent and Trademark Office. When Yves Saint Laurent released heels in a similar, monochrome red color (including the outsole), Louboutin filed a lawsuit against Yves Saint Laurent claiming trade dress infringement. The dispute made its way to the the Second Circuit, where the court ruled that Louboutin had failed to show distinctive trade dress rights in a shoe that was entirely the bright-red color it claimed in its trademark registration. However, the court went on to say that Louboutin had proven that its shoes were widely recognizable by the public when the bright-red lacquered outsole contrasted with the color of the rest of the shoe. As a result of the court’s ruling, Louboutin’s registration was amended to narrowly phrase the protected element as a “red outsole [that] contrasts with the color of the adjoining upper portion of the shoe”.

Will Roland Have Trade Dress Protection in the United States?

Roland may face some challenges in claiming trade dress protection for the design of its 303 and 808 drum machines in the United States. Certain elements of the 303 and 808 machines serve a purpose that is functional to the underlying product, such as the layout of piano keys and the close proximity of knobs and dials to those keys. For this reason, the design of the 303 claimed by Roland may not receive trade dress protection in the United States unless Roland can show that there are numerous other ways that a synthesizer may be designed and that its design in particular is associated by the public as Roland’s. Roland may be able to successfully claim trade dress rights in the color pattern design of the 808’s buttons, provided that it is determined that the pattern of red, orange, yellow, and white key colors are generally known by the public to be those of Roland’s drum machines (much in the way that bright-red contrasting outsoles are associated with Louboutin). Of course, there is an argument to be made that allowing trade dress protection in either of these instances would unreasonably stifle the production of competing synthesizers and drum machines.

Time will tell whether Roland’s trademark applications for the 303 and 808 designs will be registered by the United States Patent and Trademark Office and why Roland is now seeking trade dress protection more than thirty years after they were first introduced.

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We would like to thank Sasha Safavi for his contribution to this article.

Banking on Blockchain Patents

By: Jon Avidor and Jaclyn Wishnia

The U.S. Patent and Trademark Office (“USPTO”) has seen a recent tidal wave of blockchain patent filings, specifically from large banks and financial institutions, such as Bank of America and Mastercard. Though the USPTO has been receiving blockchain-related patent applications since 2012, the recent surge has many worried that a patent war is looming on the horizon.

The banking and financial sector is looking to utilize blockchain technology as a solution to inefficiencies within its industry, such as slow payment processing and a deficit of trust and transparency. If blockchain is in fact the “future for financial services infrastructure”, big banks would rather be at the forefront of this industry-wide evolution than behind it. One way to do this is to secure intellectual property rights in the blockchain innovation or blueprint through a patent.

Patents, if granted by the USPTO, afford banking and financial institutions the right to protect their innovations and have exclusive market control over their trading and banking platforms. The earlier the patent is granted, the more room there is for a company, like Barclays, to control this new market and gain leverage over other institutions. However, the patent application process is complex and time-consuming, and it can take over two years for the USPTO to issue or reject a patent application.

There are also challenges specifically for blockchain patents. In 2014, the Supreme Court ruled in Alice Corp. v. CLS Bank Int’l that claims to a computer-implemented technique of mitigating “settlement risk” in financial transactions were ineligible for patenting. The Court clarified that a claim directed to an abstract idea is not eligible for patent protection when it “merely requires generic computer implementation” or “attempt[s] to limit the use of [the idea] to a particular technological environment.”

Blockchain technology is inherently an open-sourced network, thus, a patent based solely on a blockchain system will most likely be rejected as it is an abstract idea. Banking and financial institutions will need to ensure that their blockchain patent applications either “identify an actual patentable innovation” or describe it in such a manner that indicates their platform—built atop blockchain technology—is a “novel idea that solves a problem.”

The rise of these blockchain patents for large institutions is a double-edged sword. On one hand, the continued pursuit of blockchain-related patents helps to legitimize the blockchain industry and increases public awareness. On the other hand, issuing patents primarily to large banks and financial institutions that can afford to file and legally reserve blockchain patents may result in the hampering of technological innovations. This may discourage potential competition from smaller business and hinder the industry’s growth. As these blockchain-based patents continue to be filed, the USPTO may need to develop consistent guidelines for patent filers to follow, especially as it pertains to blockchain, to prevent any patent wars.

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We would like to thank our intern, Jaclyn Wishnia for her contribution to this article.

Masur Griffitts trademark registration services

Streamlined Trademark Registration Services

By: Steve Masur

Developing a strong brand identity is difficult, time consuming, and costly, so protecting your trademarks, logos, and distinctive from unfair competition is key to your investment. Streamlined trademark registration services provide our clients with valuable, easy-to-understand reports evaluating trademarks, clearing potentially conflicting trademarks and efficiently preparing a federal trademark application and guide it through to registration. Our trademark team is available to answer any questions you may have.

Services include:

TRADEMARK CLEARANCE

We will provide an evaluative report analyzing the legal strength of a proposed domestic federal trademark and potentially conﬂicting trademarks that could prevent registration, priced per proposed trademark (word mark or design mark/logo), regardless of the number of classes of goods and services.

FEDERAL TRADEMARK APPLICATIONS

We will prepare a trademark registration application to the U.S. Patent and Trademark Office that is strategically crafted to capture the broadest exclusivity rights to your trademark and then file and shepherd the application through the grant or refusal of registration.

POST-REGISTRATION AND TRADEMARK MAINTENANCE

After registration, trademark owners have certain ongoing maintenance ﬁlings due to the USPTO in order to keep their registrations active. As your trademark attorneys of record, we monitor your portfolio of trademark registrations on our docket and prepare and file these post-registration maintenance ﬁlings at your instruction.