Protecting the Little Guy… or Bad Patents?

The USPTO is considering modifications to the rules for inter partes review (IPR) and post grant review (PGR) proceedings before the Patent Trial and Appeal Board (PTAB). Ostensibly this is to “better align… with the USPTO’s mission to promote and protect innovation and investment…” The proposed changes give the USPTO discretionary denial over who can institute challenges to patents, so that “appropriate steps” can be taken to “curb abusive actions” and “limit unnecessary and counterproductive litigation costs.”

The Federal Register detailing the proposed changes specifically mentions third parties asking for reviews of patents even when they don’t have a concrete stake in the outcome. If passed, the Director will have wider discretion to deny proceedings to “ensure that certain for-profit entities do not use the IPR and PCR processes in ways that do not advance the mission and vision” of the USPTO. The proposal also specifically mentions protecting “individual inventors, startups, and under-resourced inventors.”

The USPTO is considering adopting a “substantial relationship” test to evaluate whether a challenger is sufficiently related to a party in a challenge. If the relationship is deemed not substantial enough, discretionary denial can be applied.

On the surface, the rule changes seem laudable enough: limit unnecessary and counterproductive litigation and protect the little guy. But it is through the IPR process that patent trolls can be held accountable. It allowed members of the public to challenge bad patents, a process that trolls hate. While the proposal’s language is about protecting the little guy, it has been very easy for even the most sue-happy trolls to represent themselves as “small inventors”. While the Patent Office can pat itself on the back for protecting the little guy, they may in fact be hampering the public’s ability to challenge patent trolls.

While the mission of the USPTO is indeed to protect inventors and foster innovation, a bad patent, which is a 20-year monopoly on an invention, does the opposite. The public needs the right to challenge such patents.

Did Fair Use Get a Face-Lift?

In 1981, Lynn Goldsmith photographed the music artist Prince for Newsweek magazine. 15 years later, she licensed one of those photos to Vanity Fair as a single-use artist’s reference for an illustration. The artist was Andy Warhol and he created his purple silkscreen portrait of Prince from Goldsmith’s photo. Later on, without Goldsmith’s knowledge, Warhol created a series of Prince silkscreens.

After Prince died in 2016, Vanity Fair approached the Andy Warhol Foundation (AWF) for a license to use one of the silkscreens, Orange Prince, for a commemorative edition of the magazine. When the magazine came out, Goldsmith became aware of the existence of Warhol’s Prince Series and sent AWF an infringement letter. AWF returned the favor by suing Goldsmith for a judgment of non-infringement under fair use.

Fair use permits a party to use a copyrighted work without the owner’s consent for purposes like reporting, teaching, or research. Each case must be decided on its own merits, but there are some general guidelines.

Factor 1 is the purpose and character of the use; is the work commercial or non-commercial, and is the use transformative- meaning it adds something new, with a further purpose or different character.

Factor 2 is the nature of the copyrighted work

Factor 3 is the amount used

Factor 4 is the effect of the use on the market

While fair use wasn’t limited to usage only in criticism, comment, reporting, teaching, etc…these examples represent the types of copying that the courts found to be typical of fair use.

However, in the 1994 landmark “Pretty Woman” case, the Supreme court, held that 2 Live Crew’s use of Roy Orbison’s song was fair use because it was transformative. It “added something new with a further purpose or different character, altering the first with new expression, meaning or message.” After that, the transformative nature of the work took on more importance, and artists have used the transformation standard to guard against infringement claims.

In the current case, the District Court originally decided in AWF’s favor, but the Court of Appeals reversed the decision to favor Goldsmith.

The sole question before the Supreme Court was whether “‘the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes’, weighs in favor of AWF’s recent commercial licensing to Condé Nast.”

The current Supreme Court expressed no opinion on Warhol’s Prince series. But the Court noted that in the Vanity Fair Prince issue, both the original photo and Warhol’s subsequent art were both used for similar purposes: “portraits of Prince used to depict Prince in magazine stories about Prince”, and to the point, “the copying use is of a commercial nature”.  At least in this usage, whatever transformative effects AWF might claim about Orange Prince aren’t enough to overcome having stepped on Goldsmith’s commercial toes.

Perhaps the Supreme Court’s decision here will restack the priorities of Fair Use and move the commercial effect up in importance.

Original photo of Prince taken by photographer Lynn Goldsmith

Lynn Goldsmith’s original 1981 photo of Prince.

Warhol's Orange and Purple Prince

Andy Warhol’s purple silkscreen print of Prince.

All 16 of Warhol's Prince graphics in one picture

Warhol’s Prince series of silkscreens.

PCT Application Video

We have uploaded a new video talking about the issues involved in enforcing patents. You can find the video on YouTube here as part of our ongoing FishFAQ series of explanations of intellectual property.

We have also included these videos as part of our FAQs on the Patent FAQs sections on Types of Patents and Foreign Filings.

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Right-to-Practice Video

We have uploaded a new video covering the Right-to-Practice. Having a patent on your invention gives you the right to exclude others from practicing your invention, but not necessarily the right to make and sell the invention. Find out why in this short video.

This video has been included in our Patent FAQ section on Right to Practice, and you can find all our FishFAQ videos on our YouTube Channel.

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Patent Enforcement Video

We have uploaded a new video talking about the issues involved in enforcing patents. You can find the video on YouTube here as part of our ongoing FishFAQ series of explanations of intellectual property.

We have also included these videos as part of our FAQs on the Patent FAQs section on Enforcement.

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Invention Disclosure video

We have a new FishFAQ video out covering Invention Disclosures. You can view it to the right, or find it on the relevant Invention Disclosure section on our Patent FAQs page.

You can find all our FishFAQ videos on our YouTube channel.

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Developments in Copyright and Artificial Intelligence

The U.S. Copyright Office (USCO) has noticed the increased number of copyright applications that contain or include AI-generated works and has launched an initiative to examine the copyright law and policy issues raised by the use of AI.

1. The Initiative

The USCO has created the Copyright and Artificial Intelligence webpage as a hub for AI-related developments in copyright. Here you can find all past events on the matter, and register to current and future events, as well as relevant cases and publications. In particular, the USCO is planning four public listening sessions, as detailed below, at the end of which it will publish a notice of inquiry seeking public input on issues of AI in copyright.

While the deadline to register as speakers for the first two events has passed, anyone can register to attend and listen to the four public sessions.

2. The Guidance

The USCO has also published a guidance on the application of copyright law to AI-generated works. Here are the main points:

  • a) The USCO clarified once again that “copyright can protect only material that is the product of human creativity.” Non-humans, such as AIs, cannot be “authors” under copyright law. Therefore, copyright can only be claimed on works created by a human.
  • b) In evaluating work submitted for registration, the USCO will focus on whether the traditional elements of authorship, i.e. “literary, artistic, or musical expression or elements of selection, arrangement, etc.,” are created, conceived and executed by the AI, or by a human with the assistance of the AI as a tool. In the former case, there is no human authorship and thus the work is not registrable. Therefore, if the human gives an input to the AI but has no creative control over the traditional elements of authorship, then there is no copyrightable work. Cases will necessarily need to be assessed case-by-case depending on how each AI works.
  • c) When submitting an application, applicants must disclose the inclusion of AI-generated content in the work and briefly explain the human author’s contributions to the work.

3. Relevant Cases

Zarya of the Dawn” – The applicant submitted a compilation of AI-generated images. While the images themselves lack human authorship and cannot be registered, the text, selection and arrangement of the work are authored by the applicant and protected by copyright.

A Recent Entrance to Paradise” – a 2D artwork entirely and autonomously authored by an AI cannot be registered and is not protected by copyright.

These decisions are in line with the clarification that works created by animals, such as a selfie taken by a monkey, lack human authorship and are not copyrightable, as reiterated in the USCO Compendium.

AI generated art for Zarya of the Dawn

An AI-generated pic from “Zarya of the Dawn”.

AI generated art: A recent entrance to paradise.

This is the 2D artwork entirely, and autonomously, authored by an AI: “A Recent Entrance to Paradise”.