The United States Patent and Trademark Office (“USPTO”) issued guidance on February 13, 2024 (the “Guidance”) regarding the patentability of inventions created or developed with the assistance of artificial intelligence (“AI”), a novel issue on which the USPTO has been seeking input from various public and private stakeholders over the past few years.  President Biden mandated the issuance of such Guidance in his executive order on AI (see our prior alert here)[1] in October 2023.  The Guidance aims to clarify how patent applications involving AI-assisted inventions will be examined by patent examiners, and reaffirms the existing jurisprudence maintaining that only natural persons, not AI tools, can be listed as inventors.  However, the Guidance clarifies that AI-assisted inventions are not automatically ineligible for patent protection so long as one or more natural persons “significantly contributed” to the invention.  Overall, the Guidance underscores the need for a balanced approach to inventorship that acknowledges both technological advancements and human innovation.  The USPTO is seeking public feedback on the Guidance, which is due by May 13, 2024.

In Punchbowl, Inc. v. AJ Press, Inc., the Ninth Circuit revived a trademark infringement case previously dismissed on grounds that the First Amendment shields “expressive” trademarks from Lanham Act liability unless plaintiff can show the mark (1) has no artistic relevance to the underlying work, or (2) explicitly misleads as to its source.[1]  This is known as the Rogers test, and effectively operates as a shield to trademark liability where it applies.  Last year, the Supreme Court limited application of the Rogers test in Jack Daniel’s Properties, Inc. v. VIP Products LLC, [2] holding that it does not apply where the challenged use of a trademark is to identify the source of the defendant’s goods or services.  In those instances, a traditional likelihood of confusion or dilution analysis is required. 

On November 28, 2023, U.S. District Judge Fred W. Slaughter for the Central District of California granted motions for summary judgment against a screenwriter’s claims that the creation of Ad Astra, the 2019 Brad Pitt film, had infringed on a script he had written.[1]  The Court reasoned that the defendant companies could not have possibly copied the script in question, as they did not have access to the script until after Ad Astra was written.  Additionally, the court stated, the two films were significantly different so as to conclude there was no infringement, even if it could be shown there was access.  

In an opinion issued December 4, 2023, the U.S. Court of Appeals for the Federal Circuit[1] reversed a lower court’s denial of Intel Corporation’s (“Intel’s”) motion for leave to amend its answer to assert a new license defense in a patent infringement suit brought by VLSI Technology LLC (“VLSI”).  The decision paves the way for Intel to make the case that it received a license to VLSI’s patents when a company that Intel had an existing license with became affiliated with VLSI due to its acquisition by an investment management firm.

On October 30, 2023, the Biden Administration issued a landmark Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence (the “Order”), directing the establishment of new standards for artificial intelligence (“AI”) safety and security and laying the foundation to ensure the protection of Americans’ privacy and civil rights, support for American workers, promotion of responsible innovation, competition and collaboration, while advancing America’s role as a world leader with respect to AI.

By Angela Dunning and Lindsay Harris.[1]  Note, Cleary Gottlieb represents Midjourney in this matter.

On October 30, 2023, U.S. District Judge William Orrick of the Northern District of California issued an Order[2] largely dismissing without prejudice the claims brought by artists Sarah Andersen, Kelly McKernan and Karla Ortiz in a proposed class action lawsuit against artificial intelligence (“AI”) companies Stability AI, Inc., Stability AI Ltd. (together, “Stability AI”), DeviantArt, Inc. (“DeviantArt”) and Midjourney, Inc. (“Midjourney”).  Andersen is the first of many cases brought by high-profile artists, programmers and authors (including John Grisham, Sarah Silverman and Michael Chabon) seeking to challenge the legality of using copyrighted material for training AI models.

On October 19, 2023, the U.S. Copyright Office announced in the Federal Register that it will consider a proposed exemption to the Digital Millennium Copyright Act’s (“DMCA”) anti-circumvention provisions which prohibit the circumvention of any technological measures used to prevent unauthorized access to copyrighted works.  The exemption would allow those researching bias in artificial intelligence (“AI”) to bypass any technological measures that limit the use of copyrighted generative AI models.

On September 6, 2023, California Governor Gavin Newsom signed Executive Order N-12-23 (the “Executive Order”) relating to the use of generative artificial intelligence (“GenAI”) by the State, as well as preparation of certain reports assessing the equitable use of GenAI in the public sector.  The Executive Order instructs State agencies to look into the potential risks inherent with the use of GenAI and creates a blueprint for public sector implementation of GenAI tools in the near future. The Executive Order indicates that California is anticipating expanding the role that GenAI tools play in aiding State agencies to achieve their missions, while simultaneously ensuring that these State agencies identify and study any negative effects that the implementation of GenAI tools might have on residents of the State.  The Executive Order covers a number of areas, including:

The U.S. District Court for the District of Columbia recently affirmed a decision by the U.S. Copyright Office (“USCO”) in which the USCO denied an application to register a work authored entirely by an artificial intelligence program.  The case, Thaler v. Perlmutter, challenging U.S. copyright law’s human authorship requirement, is the first of its kind in the United States, but will definitely not be the last, as questions regarding the originality and protectability of generative AI (“GenAI”) created works continue to arise.  The court in Thaler focused on the fact that the work at issue had no human authorship, setting a clear rule for one end of the spectrum.  As the court recognized, the more difficult questions that will need to be addressed include how much human input is required to qualify the user as the creator of a work such that it is eligible for copyright protection.

On June 6, 2023, New York Senate Bill S5640 / Assembly Bill A5295 (“S5640”) won near-unanimous final passage in the New York Assembly with a 147-1 vote, after being passed unanimously by the Senate the previous week.  If signed into law by Governor Hochul, the legislation would, effective immediately, add to New York labor law a new section 203-f that renders unenforceable provisions in employee agreements that require employees to assign certain inventions developed using the employee’s own property and time.