A trademark is a word, name, symbol, or device (or combination thereof) used by a person or which a person has a bona fide intention to use in commerce to identify and distinguish goods or services from those of others. A mark is used (a) on a good when placed on the goods or containers, tags, or labels and the goods are sold or transported in commerce or (b) on a service when used or displayed in the sale or advertising of the services and the services are rendered in commerce. A trademark functions to identify who is the source of the good/service, not what it is. For example, Band-Aid identifies who it is in terms of the generic category of adhesive strips.

This use must be with a purpose to identify a source, meaning that a consumer can determine the source of the goods or services based on such use. Unlike a piece of art that merely has aesthetic beauty, a mark must be used to identify source. It is possible that an original work of authorship – which may be subject to copyright protection – is used in a manner so as to identify source. However, if the work of authorship is perceived as merely ornamental, then such use does not trigger trademark rights.

Ornamental use is often an issue when a popular quote is prominently displayed across the front of a T-shirt. This type of ornamental use is perceived as decorative or expressive and not an identifier of the manufacturer of the brand of T-shirt. Ornamental use is not sufficient to trigger trademark rights. See In re Peace Love World Live, LLC, 127 USPQ2d 1400 (TTAB 2018) (registration of the mark “I Love You” denied for bracelets finding the phrase to be merely ornamental as a term of endearment and not serving to identify and distinguish the source of the bracelet).

The point is that to acquire rights in a mark, the use must function to identify the source and not merely be ornamental. In the event of an ornamental objection in any USPTO trademark prosecution, the applicant may submit a new specimen showing proper use on the label of the product, packaging, or advertising with an affidavit or declaration that the new specimen was in use as of the date the application was filed. See TMEP 904.05. Alternatively, the applicant may amend the filing to a 1(b) intent to use application.

The U.S. Fifth Circuit Court of Appeals addressed the fair use defense in a copyright dispute in Keck v. Mix Creative Learning Center, L.L.C., 116 F.4th 448 (5th Cir. 2024). In this case, Mix Creative began selling art kits online so students could learn during the pandemic. The kit included PowerPoint slides featuring an artist’s biography and artwork samples, along with a lesson plan and supplies. Michel Keck was one of the artists whose work was featured in the art kit. Jacqueline Kenneally discovered Keck’s dog-themed artwork online, after searching Google Images for paintings of dogs. She decided the artwork would interest her students and copied the images from the internet for the kits. The kits included printed out slides with full images of Keck’s artwork and supplies including paint, paint brushes, collage paper, and a lesson plan. Only six Keck-inspired kits were purchased, for a total of $240. Keck filed a civil action against Mix Creative and its sole proprietor, Jacqueline Kenneally, alleging copyright infringement. When the defendants were notified of Keck’s lawsuit, they immediately stopped selling the Keck-inspired kits and removed the category of art kits from the website.

After Keck filed the action claiming copyright infringement, the district court granted summary judgment in favor of the defendants based upon the fair use defense. The fair use defense is codified in 17 U.S.C. 107 and lists several examples of fair use, including criticism, comment, news reporting, teaching, scholarship, or research. Courts apply four factors to determine whether the use of a particular work is fair, including: (1) the purpose and character of the use, including whether such use is of commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.

The Fifth Circuit noted that the central question of the first factor is whether the new work supersedes the object of the original creation or instead adds something new, with a further purpose or different character. Citing the U.S. Supreme Court decision in Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 114 S.Ct.1164 (1994), the Fifth Circuit found that the use of the work was transformative as the art kits had an educational purpose that was significantly differing from the original, decorative purpose of Keck’s dog-themed artwork. Pointing to the recent Supreme Court decision in Andy Warhol Found. For the Visual Arts, Inc. v. Goldsmith, 598 U.S. 508, 143 S.Ct.1258 (2023), Keck argued that the purpose of the infringing work was substantially the same as the purpose of the original photograph, namely “the online, e-commerce sales of Keck’s entire works.” However, the Fifth Circuit concluded that the art kits had an educational objective, while the original work had a mere aesthetic or decorative objective and thus, the purpose of the use was not substantially the same. The Court noted that there was little threat that the art kit would serve as a substitute for the original work; Mix Creative does not participate in the same market as Keck. The Fifth Circuit found that the district court correctly rejected Keck’s copyright claim and that the district court did not abuse its discretion in finding Keck, not his counsel, liable for over $100,000 in attorneys’ fees, citing 17 U.S.C. 505.

Michael Messier filed a Petition for Cancellation of the New Orleans Saints fleur-de-lis service mark, No. 992210 (“Saints Mark”). Mr. Messier asserted that he is a direct descendent of the Kings of France (Scotland, Aragon, and Castille) and that “he and his family own intellectual property rights in the Fleur-de-Lys, Orleans, and Saints marks.” However, the Petition contained no claim that he or his family currently use any fleur-de-lis mark in commerce or receive any revenues through licensing. The Trademark Trial and Appeal Board granted the Saints’ motion to dismiss as Mr. Messier failed to allege a commercial interest in the registered mark or reasonable belief in damage from the mark’s continued registration, which Mr. Messier appealed.

The Federal Circuit concluded that it lacked jurisdiction since Mr. Messier lacked standing. The Court noted that to cancel the Saints Mark, Mr. Messier must allege (1) an actual or imminent injury-in-fact that is concrete and particularized, (2) causal connection between injury and the conduct complained of, and (3) likely redressability by a favorable decision. However, he failed to satisfy this burden since he failed to allege that he is injured by the Saints Mark. To satisfy this injury requirement, the alleged injury must be more than a general grievance or abstract harm. The Court noted that Mr. Messier did not allege that he or his family make or offer for sale any products or services using the fleur-de-lis design. He did not allege that he is involved in any commercial entertainment services in connection with football or any other form of commerce where he uses the fleur-de-lis design. The Court concluded that Mr. Messier had not met his burden to show a concrete and particularized injury sufficient to have standing for this appeal. His allegations of hypothetical or future possible injury were insufficient to confer Article III standing.

A pair of recent intellectual property wins by Kean Miller under the Uniform Domain Name Dispute Resolution Policy (UDRP) tracks the busy trend of domain name cases filed with the World Intellectual Property Organization (WIPO). The wins further highlight the trend of successful transfers of fraudulent and abusive domain name registrations to its rightful owners (an approximate 88.7% transfer rate[1]). Over 6,000 of these types of domain name cases are predicted to be filed in 2025[2]. These cases predominantly seek to capitalize on a trademark owner’s good name and business reputation in an effort to trick consumers into either purchasing counterfeit products, which are neither made nor licensed by the trademark owner, or providing certain personal or financial information to the bad faith actor for illegal means.

UDRP, which is administered by WIPO, provides the legal framework for efficiently resolving disputes between trademark owners and bad faith domain name registrants in connection with abusive and fraudulent registration and use of internet domain names[3]. These proceedings can provide a much quicker and more cost-effective means of shutting down infringing domains. And, unlike a claim under the Digital Millennium Copyright Act (DMCA), the UDRP has the power and ability to transfer the target domain to the rightful trademark owner. UDRP is utilized across the industry for domain name disputes that meet the following criteria:

(i) the domain name registered by the domain name registrant is identical or confusingly similar to a trademark or service mark in which the trademark owner/complainant (the person or entity bringing the complaint) has rights;

(ii) the domain name registrant has no rights or legitimate interests as to the domain name in question; and

(iii) the domain name has been registered and is being used by the registrant in bad faith[4].

Trademark owners/complainants can demonstrate the requisite bad faith by showing:

(i) Circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name in question to the rightful owner of the trademark or service mark or to a competitor of that rightful owner, in exchange for valuable consideration that exceeds the domain name registrant’s out-of-pocket costs for acquiring the name;

(ii) The domain name was registered to prevent the rightful owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the domain name registrant has engaged in a pattern of such conduct;

(iii) The domain name was registered or acquired mainly for the purpose of disrupting the business of a competitor; or

(iv) By using the domain name, the domain name registrant intentionally attempted to attract internet users to the registrant’s website (or other online location) for financial gain, by creating a likelihood of confusion with the rightful trademark owner as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or the location of a product or service on the registrant’s website[5].

Of course, this list is not exclusive, and a trademark owner can meet its burden of proof by demonstrating other similar circumstances indicative of bad faith, depending on the facts specific to a particular case.

Kean Miller’s recent wins have been based on claims involving bad faith actors who have registered confusingly similar domain names in an attempt to trade off the goodwill of the rightful trademark owners. At least one went so far as to copy recognizable images and information of the rightful owner, in an effort to redirect internet users to fake listings for the purchase of counterfeit products for commercial gain. Kean Miller has further successfully procured the transfer of a domain name from a registrant attempting to “typosquat” a domain name, a process through which a bad actor seeks to register and use a minimally mis-typed version of a particular well-known domain name in an effort to trick internet users into visiting the registrant’s own site for various illegal and fraudulent means. Kean Miller continues to track these fraudulent domain name trends, and stands ready to support your business against these bad faith actors.

[1] https://static1.squarespace.com/static/58febdfcbf629aa913a85974/t/681117cf705c8635d05d9c90/1745950673053/2025-q1-domain-dispute-digest.pdf.

[2] Id.

[3] https://www.wipo.int/amc/en/domains/guide/#What_is_the_2.

[4] Id.

[5] Id.

For the serious handbag collector, purchasing a Hermès Birkin is a pinnacle achievement. Beyond the eye-watering price tag for the purse alone, being offered a Birkin for purchase is often the result of several thousand dollars in prior sales with Hermès and a positive, established relationship with a salesperson who is authorized to offer Birkin bags to hand-selected customers deemed worthy of carrying a Birkin. The pre-owned market does not offer any price relief, as a Birkin is one of the few fashion items capable of appreciating in value. So, it comes as no surprise that handbag enthusiasts who don’t have the cash for the bag itself, or the time, money, or desire to spend on purchasing other items, look to other options.

And those shoppers with a TikTok account may have learned this past week of a new “option” to source dupes of Birkins and other luxury brand products direct from Chinese manufacturers. In these viral posts, the content creator claims that—in direct response to the U.S. Tariffs—they are exposing many of the world’s costliest luxury goods are made at a sliver of the retail price in China. Many of the videos include links to where individuals can purchase goods directly from the Chinese manufacturer.

To be clear, regardless of whether the goods are purchased directly from a third-party manufacturer that is involved with the designer item’s production, the item purchased is still a counterfeit. But that hasn’t stopped many shoppers from buying $5 leggings said to be produced from the same manufacturer as Lululemon or $50 Louis-Vuitton style bags. As a direct result of these viral videos, the Chinese wholesale marketplace app DHgate jumped to the No. 3 spot of free iPhone apps in the U.S. Apple App Store, from No. 352 less than a week ago.[1] Of course, using DHgate is not a solution for avoiding tariffs, as any Chinese imports to the U.S. will still be impacted by the tariffs and potential seizure by customs officials. But those details may be less important to a buyer who is only shelling out $1,400 for a Birkin dupe instead of the minimum $15,000 for an authentic Hermès purchase.

With this swarm of videos has come the question—how are brands able to identify as being made in one country when a significant portion of the bag is made elsewhere? Much confusion often exists at the consumer level about what the “made in” tag means, with ordinary consumers assuming that if a product is identified as being made in a specific country, say Italy, a consumer may assume that a product bearing a “made in Italy” tag includes all Italian-made materials and craftsmanship. Yet, due to the often-complex supply chain in the fashion industry, there is often not a clear through-line about the country of origin. And the fact that this murkiness exists is no secret. For example, in 2017 the luxury brand Louis Vuitton received heat after an investigative report claimed that near-entire shoes for the Louis Vuitton Moet Hennessy (LVMH) luxury group were made in Romania, with only the soles being added in Italy.[2]

Generally, every article of foreign origin into the U.S. must be marked with its country of origin. The country of origin means the country or territory where the good originates. The marking rules and regulations can vary across different products and industries, particularly when a good’s manufacture begins in one country and is completed in a second country. For textiles and apparel products, the country of origin to be marked is:

(1) The country where the good was wholly obtained or produced;

(2) If (1) is not applicable, the country where the product underwent a change in tariff classification or met other requirements specific to the article, which are specified in 19 USC 102.21 (e);

(3) If (1) nor (2) apply, then the country is where:

a. 50% or more of the exterior surface area is formed by major parts that have been knitted or crocheted directly to the shape used in the good (“knit to shape”); or

b. The good was wholly assembled;

(4) If (1)–(3) do not apply, the country of origin is where the most significant assembly or manufacturing process occurred; OR

(5) If none of the foregoing apply, the country of origin is the last country where an important assembly or manufacturing process occurred.[3]

In luxury brands, the most labor-intensive part of the production, such as elaborate embroidery and embellishments, are done on panels and then assembled to create the finished product in the “made in” location.[4] High end designers, such as French designer Isabel Marant, have acknowledged that much of haute couture originates with Indian artisans.[5]

Considering the murkiness in the marking rules being an open secret for fashion—assuming what they claim is true, why are these manufacturers now speaking up? Based on comments from the content creators, the videos appear to be a response to the U.S.’s ongoing trade war with China after Trump placed 145% tariffs on Chinese imports, to which China retaliated with its own 125% tariffs on U.S.-imported goods.[6] It’s reasonable to believe some are chasing new buyers, but other commentators suggest that the videos are intended to communicate to U.S. consumers how much they actually rely on China for goods they believe originate in other countries. Indeed, the Peterson Institute for International Economics determined in 2024 that 40% of all footwear and 25% of all textiles and clothing imported into the U.S. came from China.[7] Some of the videos also directly attack “made in China” stigma, where Chinese-manufactured goods are treated as synonymous with being cheap or poor quality. Whatever the reason, the claims made should all be taken with a massive grain of salt—as the claims are directly contrary to the full-throated representations made by various European fashion houses and could be merely a well-timed effort by counterfeiters to sell counterfeit luxury items under the guise of being the “same” as a quality product.

Though the claims by content creators may not change the minds of consumers that believe luxury pieces are a worthwhile investment, there is no doubt that these claims continue to draw negative press to luxury brand markups and the actual “worth” of such products. The surge in popularity of apps like DHgate also illustrate how effectively Chinese creators can leverage platforms like TikTok to influence U.S. consumers.[8] A scandal last year about Dior and Armani utilizing sweatshops in Milan threw water on claims that the high price tags are justified by the brands avoiding human rights violations, and Q1 stock reporting from brands like LVMH signal tough times ahead.[9] It’s undoubtable that these videos call into sharp question, for many U.S. consumers, where these luxury brands are actually crafted and whether the “made in” tags actually reflect the quality they have come to expect with the high price tags. It also calls into question what can be done about these luxury counterfeiters that are offering purportedly Chanel Boy Bags and Hermès Birkins without the hefty price tags.

What can be done all comes down to the tricky situation of trademark and trade dress enforcement ability in China. Just last year, luxury retailer Burberry won a significant infringement claim and was awarded £675,668 in damages by the Jiangsu Provincial High People’s Court relating to infringement by the holder of a Chinese trademark registration for Baneberry, under which it sold in approximately 40 pop up shops products bearing Burberry’s iconic checked pattern and a logo resembling Burberry’s Equestrian Knight design.[10] In addition to the infringement, the Chinese court found that Baneberry had registered their trademarks in bad faith. This ruling signified to many an increasing ability to bring actual enforcement action against infringers in China, which, according to the Organization for Economic Cooperation and Development, accounts for more than 80% of the world’s counterfeit goods.[11]

But China’s willingness to support U.S. efforts to weaken counterfeiting are inseparably connected to the two countries’ trading relationship. Beijing has taken steps since 2019 to increase IP enforcement efforts by introducing stricter trademark laws, increasing penalties for infringement, and establishing specialized IP courts. But those efforts could stall as tensions increase, putting at risk the ability to challenge infringers, increased counterfeiting, and increased cyber espionage.[12] There are theories that China is considering giving free reign to counterfeiters that target American brands (such as often-counterfeited brands like Ralph Lauren, Tom Ford, Calvin Klein, Coach (Tapestry), Jimmy Choo (Capri), The Row, Estée Lauder, and La Mer) in response to the trade war. Social media content creators have also noted Zara, H&M, and Stanley as at risk since many of their products are known to originate in China. Such a strategy would not be without precedent. In 2023, in response to U.S. and E.U. sanctions related to the Ukraine invasion, Russia ended the requirement for goods entering Russia to provide a certification of IP ownership of the goods.[13] While the products could still be inspected by local authorities, reports reveal these inspections to be relatively lax and many of the certifications clearly faked.[14] As a result, many counterfeit luxury goods have flooded the market in the EU through Turkey. Also at risk is the possibility of retaliatory measures; China has previously threatened to cancel trademark registrations and patents in response to past trade disputes.[15]

For U.S. companies watching these developments, a few measures can be taken to best arm themselves against these volatile times. First, companies seeking expansion in and manufacturing in China should seek to register patents and trademarks early. China has a “first to file” trademark application process that can allow bad faith actors to apply for trademark applications on established brands, complicating the enforcement process when the time comes. Second, companies should also be sure to invest in their security infrastructure to protect proprietary designs and trade secrets.

[1] Sarah Perez, “Chinese marketplace DHgate becomes a top US app as trade war intensifies”, TechCrunch (Apr. 14, 2025) (https://techcrunch.com/2025/04/14/chinese-marketplace-dhgate-becomes-a-top-us-app-as-trade-war-intensifies/).

[2] Alexandra Lembke, “Revealed: the Romanian site where Louis Vuitton makes its Italian shoes”, The Guardian (Jun. 17, 2017) (https://www.theguardian.com/business/2017/jun/17/revealed-the-romanian-site-where-louis-vuitton-makes-its-italian-shoes).

[3] 19 USC 102.21(c). See also “Marking of Country of Origin on U.S. Imports”, U.S. Customs and Border Protection (last accessed Apr. 15, 2025) (https://www.cbp.gov/trade/rulings/informed-compliance-publications/marking-country-origin-us-imports).

[4] Emily Chan, “What Does the ‘Made In’ Label On Our Clothes Actually Mean?”, British Vogue (Jan. 18, 2024) (https://www.vogue.co.uk/article/what-does-made-in-label-mean-clothes).

[5] Kai Schultz, et al, “Luxury Fashion Relies on Indian Artisans. The Labels Tell a Different Story”, Bloomberg (Sept. 28, 2023) (https://www.bloomberg.com/features/2023-india-luxury-fashion-supply-chain/).

[6] Dhani Mau, “Hey, Quick Question: Why are Chinese Fashion Manufacturers Going Viral on TikTok Amid the Tariffs Chaos?”, Fashionista.com (Apr. 14, 2021) (https://fashionista.com/2025/04/chinese-suppliers-manufacturers-tiktok-luxury-fashion-brands).

[7] Id.

[8] Sarah Kent, “’Trade War TikTok’ Takes Aim at Luxury”, BusinessofFashion.com (Apr. 15, 2025) (https://www.businessoffashion.com/articles/sustainability/trade-war-tiktok-luxury-brands-chinese-factories/).

[9] Id.

[10] Maura O’Malley, “‘An important moment in Chinese IP litigation’ – Burberry celebrates trademark infringement win in ‘key market’”, Global Legal Post (May 8, 2024) (https://www.globallegalpost.com/news/an-important-moment-in-chinese-ip-litigation-burberry-celebrates-trademark-infringement-win-in-key-market-1386955387).

[11] “Behind the U.S.-China Trade War is a High-Stakes IP Battle”, The Fashion Law (Apr. 9, 2025 (https://www.thefashionlaw.com/behind-the-u-s-china-trade-tariffs-is-a-high-stakes-battle-over-ip/).

[12] The Fashion Law, note 11.

[13] Noëmie Leclercq, “Putin weaponises counterfeit luxury goods amid Ukraine war”, Glitz.com (Sept. 2, 2023) (https://www.glitz.paris/en/entourage/2023/02/09/putin-weaponises-counterfeit-luxury-goods-amid-ukraine-war,109911779-evg).

[14] Id.

[15] The Fashion Law, note 11.

On October 10, 2024, during an oral argument, the Federal Circuit was presented with an argument that patent applications, filed before the filing date of the challenged patent but not published until after the filing date of the challenge patent, are not “printed publications.” The panel admitted that the argument carried weight, creating worry in the patent community of potential impacts of such a ruling. However, the Federal Circuit issued its opinion on January 14, 2025, finding that a patent application is prior art and that the effect of the application as prior art stems from its filing, not its publishing date.[1]

The case is Lynk Labs, Inc. v. Samsung Electronics Co., Ltd., which followed a finding of unpatentability by the PTAB in an inter partes review (IPR). The Board’s ruling, challenged by Lynk Labs, found that a patent application filed before Lynk Labs’ priority date, but published after, could be used as prior art to invalidate the challenged claims. The prior art application introduced by Samsung was abandoned and a patent was never issued. Nevertheless, the Federal Circuit agreed with the PTAB’s decision.

Section 311(b) of the America Invents Act (AIA) states that a patent can be challenged in an IPR “only on the basis of prior art consisting of patents or printed publications.”[2] Lynk argued that a patent application that was not published prior to a challenged patent’s filing date is not included in “printed publications” because it was not publicly available at the critical time. Lynk cites to a handful of case law in saying that “the statutory phrase ‘printed publication’ has been interpreted to mean that before the critical date [of the challenged patent] the reference must have been publicly accessible to the public interested in the art.”[3] Lynk argued that had Congress intended patent applications to be used as prior arts in IPR, it would not have expressly left them out as a category in 311(b).[4]

The Federal Circuit agreed with Lynk: “The touchstone of whether a refence constitutes a printed publication is public accessibility.” citing Weber, Inc. v. Provisur Techs., Inc., 92 F.4th 1059, 1067 (Fed. Cir. 2024). However, the Court goes on to critique Lynk’s focus of printed publications under 35 U.S.C. § § 102(a) and 102(b). The Court points out that Congress created a “special rule” in § 102(e)(1)[5] for published patent applications. Under § 102(e)(1), a person shall be entitled to a patent unless “(e) the invention was described in – (1) an application for patent, published under 122(b), by another filed in the United States before the invention by the applicant for patent.” (emphasis added).

Because patent applications are published and publicly accessible, they are printed publications. Further, as stated by the Court, “102(e)(1) treats this type of printed publication as prior art as of a time before it became publicly accessible—i.e., as of its filing date.” The term “printed publications” does not have its own temporal element. Rather, such element is found in the applicable statute for each type of printed publication. The rule for patents as prior art presents similar wording, granting a patent prior art status as of its filing date.[6] Thus, in a similar IPR situation, 311(b) can include as prior art a patent that did not become a patent until after the challenged patent’s priority date.

Ultimately, the Court concluded that “the plain language of §§ 311(b) and 102(e)(1) permits IPR challenges based upon published patent applications, and such published patent applications can be deemed prior art in IPRs as of their filing date.” Additionally, the Court went on to analyze the historical context of 311(b), finding nothing to sway its interpretation. Finally, the Court further confirmed its interpretation, finding that making patent applications available as prior art under 311(b) is fully consistent with Congress’s purpose in limiting the types of patentability challenges in IPRs.

The Federal Circuit’s ruling eases the worries of the patent community and maintains the status quo. A contrary decision would call into question previous IPRs which relied on applications as printed publications to invalidate challenged claims. Fortunately, the Federal Circuit avoided such consequences, following years of precedent and the clear language of the law.

[1] Lynk Labs, Inc. v. Samsung Elecs. Co., Ltd., Case No. 2023-2346, (Fed. Cir. 2025) (23-2346.OPINION.1-14-2025_2450365.pdf).

[2] 35 U.S.C. § 311(b).

[3] In re Klopfenstein, 380 F.3d 1345, 1348 (Fed. Cir. 2004); see also Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 772 (Fed. Cir. 2018) (explaining that public accessibility is the “touchstone in determining whether a reference constitutes a ‘printed publication,’” and then noting the Board’s finding that the reference “was not publicly accessible before the critical date” (emphasis added) (cleaned up)); In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009) (“In order to qualify as a printed publication within the meaning of § 102, a reference ‘must have been sufficiently accessible to the public interested in the art.’” (citation omitted));

[4] Stephen Schreiner, attorney for Lynk Labs, details his argument at Patent Applications Published After the Priority Date of a Challenged Patent Are Not ‘Printed Publications’ for IPRs.

[5] This case was governed by pre-AIA language.

[6] See pre-AIA 35 U.S.C. § 102(e)(2) and current 35 U.S.C. § 102(d).

This article was originally published by Biz New Orleans.

NEW ORLEANS – Devin Ricci and Mary Love, Intellectual Property Lawyers with Kean Miller LLP, have issued a statement urging businesses and individuals to exercise caution to avoid unauthorized use of NFL-related branding or while streaming game broadcasts to avoid hefty fines or legal action.

Ricci and Love highlighted that the NFL maintains strict control over its intellectual property, including game broadcasts, logos, team names, and slogans. “Many facets of the Big Game are protected by copyright and trademark laws,” Ricci explained. “The NFL actively enforces these rights through measures such as takedown notices, cease-and-desist letters, and lawsuits.”

Businesses planning to stream the game must ensure they have the appropriate licensing. A commercial license is typically required for public screenings in establishments such as bars, restaurants, or event venues. Relying on personal streaming subscriptions for such purposes is a violation of the NFL’s licensing agreements and could lead to significant penalties. Love advised, “Check with your service provider to confirm that your streaming package includes the necessary commercial rights.”

The NFL also owns trademarks on terms like “Super Bowl” and associated branding, which cannot be used for promotional or advertising purposes without explicit permission. “Unauthorized use of NFL trademarks is prohibited at both state and federal levels,” Ricci noted. “Businesses can avoid infringement by opting for general terms like ‘The Big Game’ instead.”

The financial consequences of violations are substantial. Under the Copyright Act, statutory damages range from $750 to $30,000 per work, with potential increases up to $150,000 for willful infringement. Similarly, the Lanham Act allows for damages between $1,000 and $200,000 per counterfeit mark, which can escalate to $2 million for willful violations. Both statutes permit the recovery of attorney’s fees, further increasing the costs of non-compliance.

The lawyers stressed that the NFL is particularly vigilant about protecting its brands during high-profile events like the Super Bowl. For businesses unsure about compliance, consulting legal counsel is strongly recommended. “The costs of obtaining the proper licenses pale in comparison to the potential damages of a legal dispute,” Love said.

Kean Miller LLP’s guidance serves as a reminder of the critical importance of respecting intellectual property rights, particularly as New Orleans gears up for a landmark Super Bowl celebration.

An owner of a trademark or service mark used in commerce may request registration on the principal register by filing an application with United States Patent and Trademark Office.  The registration provides certain benefits including prima facie proof of ownership and validity and constructive use throughout the country.  While registration is great for brand management and protection, once the registration is obtained notice should be provided.  

15 U.S.C. 1111 provides that a registrant may give notice that its mark is registered by displaying with the mark the words “registered U.S. Patent and Trademark Office” or “Reg. U.S. Pat. & Tm. Off.” or the R enclosed within a circle ®.  The statute further provides that in any suit for infringement by a registrant failing to give notice of registration, no profits or damages shall be recovered under the provisions of this chapter unless the defendant had actual notice of the registration.  While this statute does not create a defense in an infringement action, it does limit the remedies a registrant may pursue. A registrant who fails to provide notice of registration may still obtain an injunction but will not be able to recover damages and profits, unless the registrant can prove the defendant had actual notice of the registration.    

A registrant should be sure to put a notice adjacent to the mark when used in connection with the brand of goods or services subject to the registration. The notice should be put on a label, box, or website, as may be appropriate, to give this notice of registration.  If an infringement action becomes necessary, the registrant will want the be able to pursue all possible remedies, and not be limited by registrant’s own failure to give notice.   

In the fall of 2023, the Biden Administration issued the Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence.[1] In section 5.2 of the order, the administration charged the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USTPO) with three directives:

1. Publish guidance to USPTO patent examiners and applicants addressing inventorship and the use of AI, including generative AI, in the inventive process and how inventorship issues ought to be analyzed;

2. Issue additional guidance to address other considerations at the intersection of AI and IP, which could include updated guidance on patent eligibility to address innovation in AI and critical and emerging technologies; and

3. Consult with the Director of the United States Patent Office and issue recommendation to the President on potential executive actions relating to copyright and AI.

Accordingly, the USPTO responded to its first directive and issued its Inventorship Guidance for AI-Assisted Inventions on February 13, 2024.[2] The guidance provides that AI-assisted inventions are not categorically unpatentable. Instead, an analysis utilizing the Pannu factors determines if the human inventor(s) has made a significant contribution to each claim in the patent or patent application. The USPTO also provides examples in its guidance, as well as more specific examples on its website.[3]

In the fall of 2022, the Federal Circuit in Thaler v. Vidal affirmed the holding “that only a natural person can be an inventor.”[4] This holding remains aligned with the policy that patents function to incentivize and reward human ingenuity. However, the court did not answer the question of AI as a joint inventor.

In its guidance, the USPTO makes clear that the term “individual” throughout the MPEP refers to a human being.[5] When naming the inventor(s), the inclusion of AI or any system will render the invention unpatentable.[6] While there is no requirement for a named inventor to contribute to every claim in an application,[7] at least one named inventor must have invented each claim.[8] Therefore, in the case of an individual working solely with an AI system, the individual must significantly contribute to every claim. The guidance tells us that to significantly contribute means to meet the Pannu factors.

Under the Pannu factors, each inventor must: “(1) contribute in some significant manner to the conception or reduction to practice of the invention, (2) make a contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention, and (3) do more than merely explain to the real inventors well-known concepts and/or the current state of the art.”[9] In its footnote, the guidance explains that the mention of reduction to practice in the Pannu factors is an acknowledgement of the simultaneous conception and reduction to practice doctrine used in unpredictable technologies.[10] Applicants are reminded that the main inquiry is that of conception.[11] The Pannu factors are not a basis to conclude that reduction to practice, alone, is sufficient to demonstrate inventorship.[12]

To assist applicants and USPTO personnel in determining inventorship, the guidance provides a non-exhaustive list of “guiding principles” for the application of the Pannu factors in AI-assisted inventions:

1. The use of AI does not negate a person’s contributions as an inventor if the person contributes significantly to the invention.

2. Merely presenting a problem to an AI system may not be a significant contribution. However, a significant contribution could be found in the construction of the prompt in view of a specific problem to elicit a particular solution from the AI.

3.Although reducing an invention to practice alone is not a significant contribution, a person who makes a significant contribution to the output to create an invention may be a proper inventor, even if that person is unable to establish conception until the invention has been reduced to practice.

4. The designing, building, or training of the AI system in view of a specific problem to elicit a particular solution may be a significant contribution to the invention created with the AI system.

5. A person simply owning or overseeing an AI system that is used in the creation of an invention, without providing a significant contribution to the conception of the invention, does not make that person an inventor.[13]

These guiding principles attempt to alleviate some uncertainty surrounding “a significant contribution” under the Pannu factors. Applicants would be wise to keep the Pannu factors, as well as these principles, in mind early in the invention process. In addition, an inventorship analysis will assist an applicant in drafting the claims, as the USPTO requires an inventor (or one of the joint inventors) to significantly contribute to each claim.

As for the various duties of patent owners and applicants, the USPTO claims it is not changing or modifying its duty of disclosure.[14] However, the USPTO reminds those of their existing duty of disclosure and its applicability to the inventorship inquiry. Parties have a duty to disclose to the USPTO information that raises a prima facie case of unpatentability or that is inconsistent with a position an applicant takes in asserting inventorship or opposing its rejection.[15] This information could include evidence of an inventor’s lack of a significant contribution to the invention because the person’s purported contribution(s) was made by an AI system.

According to the USPTO, the duty of reasonable inquiry will remain the same, as well.[16] Identical to FRCP 11(b), the duty calls for an “inquiry reasonable under the circumstances” to ensure that (1) the paper is not being presented for any improper purpose; (2) the legal contentions are warranted by law; (3) the allegations and other factual contentions have evidentiary support; (4) and the denials of factual contentions are warranted on the evidence.[17] As for AI-assisted inventions, this inquiry should include questions about whether and how AI is being used in the creation process. Applicants and patent practitioners should conduct their own assessment of whether the contributions made by the natural person(s) rise to the level of inventorship as expressed in the USPTO’s guidance.

While the continuous evolution of AI will likely require further modifications to the idea of “inventorship,” this guidance will likely lead the courts’ analyses for now. The USPTO’s five guiding principles given above aim to counteract the ambiguity of a significant contribution in the Pannu factors. Applicants and practitioners should utilize these principles early in the application process as they are likely to appear in the litigation of AI-assisted inventions. For further assistance, the USPTO provides more specific examples of significant and insignificant contributions on its website.[18] The period for public comment on this guidance will remain open until May 13, 2024.

Special thanks to Michael Doggett, LSU Law Class of 2024, for his research and assistance in writing this article.

[1] Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence | The White House

[2] 89 Fed. Reg. 10043 (Feb. 13, 2024).

[3] AI-related resources | USPTO (Example 1 and Example 2 under “Inventorship”).

[4] Thaler v. Vidal, 43 F.4th 1207, 1213 (Fed. Cir. 2022), cert denied, 143 S. Ct. 1783 (2023).

[5] 89 Fed. Reg. 10046 (Feb. 13, 2024) (citing Thaler v. Vidal, 43 F.4th at 1211).

[6] Id.

[7] MPEP 2109.01.

[8] 35 U.S.C. 115(a) (“An application for patent that is filed under section 111(a) or commences the national stage under section 371 shall include, or be amended to include, the name of the inventor for any invention claimed in the application.”) (emphasis added).

[9] Pannu v. Iolab Corp, 155 F.3d 1344, 1351 (Fed. Cir. 1998).

[10] 89 Fed. Reg. 10047, fn.32 (Feb. 13, 2024).

[11] Id.

[12] Id.

[13] 89 Fed. Reg. 10048 (Feb. 13, 2024) (paraphrased).

[14] 89 Fed. Reg. 10049 (Feb. 13, 2024).

[15] 35 U.S.C. 101.

[16] 89 Fed. Reg. 10050 (Feb. 13, 2024).

[17] 37 CFR 11.18(b)(2).

[18] AI-related resources | USPTO (Example 1 and Example 2 under “Inventorship”).

On December 11, 2023, the Copyright Review Board affirmed the Copyright Office’s decision to reject Ankit Sahni’s application to register the AI-generated work depicted above.  The artwork, entitled “SURYAST” was based on a photograph taken by Sanhi, which Sanhi submitted into the RAGHAV Artificial Intelligence Painting App (“RAGHAV”) and instructed to paint in the style of Vincent van Gogh’s “Starry Night”.  Sanhi submitted to the Copyright Office that he also chose “a variable value determining the amount of style transfer” for the program to apply. In effect, Sanhi was attempting to register the artwork as a derivative of his photograph.

The Copyright Office initially rejected the application on the premise that it lacked the human authorship necessary to support a copyright claim, specifically rejecting Sanhi’s assertions that the work contained some human creative input. Instead, the Copyright Office stated that the “human authorship cannot be distinguished or separated from the final work produced by the computer program.”

Sanhi sought reconsideration, which the Copyright Office rejected again.  The Copyright Office opined that the work was a classic example of a derivative work in that it was a digitalization of a photograph. Because copyright in derivative works is in the transformative elements of the work (rather than the work as a whole), current guidance would require that the derivative work’s transformative elements be created by a human author.  Under this framework, the Office noted that derivative works are analyzed to determine whether the new authorship of the derivative work meets the statutory requirements for protection. Here, the Office found that the RAGHAV app contributed the new elements and, therefore, the derivative authorship was not the result of human creativity or authorship.

On July 10, 2023, Sanhi requested a second reconsideration, this time asserting the human elements of the work and attempting to downplay RAGHAV’s role as that of an “assistive software tool” akin to Adobe photo editing software. The Board also rejected these arguments, but its reasoning is instructive as to how AI-generated work may be found to be protectable in the future.

The opinion heavily cites the relatively recent decision by the U.S. District Court for the District of Columbia in Thaler v. Perlmutter, 2023 WL 5333236, which reasoned that the originator of a copyrightable work must be human to be protectable under the law.[1] For more information on the Thaler decision, please see our prior article at Thaler v. Shira Perlmutter, et al.: The Intersection of Human Control Over Artificial Intelligence and Human Authorship as a Necessary Requirement of Copyright .

The Board also cites to recent guidance promulgated by the Copyright Office. In effect, when analyzing AI-generated material, the Copyright Office must decide whether the human or the computer program is the “creator” of the generated work.

[W]hether the ‘work’ is basically one of human authorship, with the computer [or other device] merely being an assisting instrument, or whether the traditional elements of authorship in the work (literary, artistic, or musical expression or elements of selection, arrangement, etc.) were actually conceived and executed not by man but by a machine.[2]

This determination must be made on a case-by-case basis.  If all of a work’s “traditional elements of authorship” are generated by AI, the work cannot be registered due to a lack of human authorship.  However, if the work containing AI-generated material also contains sufficient human authorship to support a claim to copyright, then the Office will register the human’s contributions. For this reason, an applicant seeking to protect the human elements of a co-generated work should submit a limitation in the copyright application noting which materials are AI-generated and not protectable.

The decision by the board was very specific to the facts presented. Sanhi made a compelling argument to aggrandize his involvement, captioning it as “conceiving, creating and selecting an original [base] image,” “selection of the style image,” and “selecting a specific variable value determining the amount and manner of style transfer” which “cumulatively resulted in the [Work], which is the direct outcome of [his] creative expression and contribution.” But the Board was unconvinced. Rather, the Board simplified his contributions to three inputs (selecting a photo, providing a style, and providing a variable to the amount of style to which the program would apply), which ultimately did not have any control over where elements were placed or how they would ultimately appear. The Board rebuffed Sanhi’s argument that RAGHAV acted akin to “a camera, digital tablet, or a photo-editing software program,” instead finding that the program (and not Sanhi) made the determinative and creative steps in creating the work. The important takeaway is that Sanhi’s selection of inputs does not render the work copyrightable. Copyright law only protects the particular expression of an idea and not the idea itself.  Thus, the  inputs represent an unprotectable idea or concept, and not the particular expression of that idea, which was created by the AI program.

This opinion stands as another warning to those creating works with generative artificial intelligence. The Copyright Office and Courts continue to rule against the protection of works created by AI. As these opinions are rendered, we hope a line will solidify definitively showing what is protectable. In the meantime, it should be noted that nothing prevents Sanhi from registering his original photograph which he took with a camera. 

The Copyright Review Board’s decision is available at https://copyright.gov/rulings-filings/review-board/docs/SURYAST.pdf.

[1] See id. At *4 (“By its plain text, the 1976 Act . . . requires a copyrightable work to have an originator with the capacity for intellectual, creative, or artistic labor. Must that originator be a human being to claim copyright protection? The answer is ‘yes.’”)

[2] Copyright Registration Guidance: Works Containing Material Generated by Artificial Intelligence, 88 Fed. Reg. 16,190, 16,192 (Mar. 16, 2023) (quoting U.S. COPYRIGHT OFFICE, SIXTY-EIGHTH ANNUAL REPORT OF THE REGISTER OF COPYRIGHTS FOR THE FISCAL YEAR ENDING JUNE 30, 1965, 5 (1966));