Keeping Their AI on the Ball - US Copyright Office Issues Guidance on the Copyright Protection of AI Generated Works

At this point there probably is no one on Earth that has not heard of, or even tested, various AI content generation systems, including ChatGPT, Google Bard and Midjourney. The tools are already impressive and are only slated to get better, so many legislatures and national bodies are (finally!) getting to grips with AI, its implications, and legal issues around the technology. One such aspect is whether AI generated works can, or will be protected by copyright, as the area remains firmly hazy as the law stands, including in the common law. One of the first off the blocks is the US Copyright Office which recently released guidance on the protection of AI generated works. 

The guidance, titled "Copyright Registration Guidance: Works Containing Material Generated by Artificial Intelligence" is brief and to the point, covering most of the issues to give better light on copyright protection on these emerging works.

The guidance initially starts with the basics, noting that for works to be protected by copyright they must have human authorship. The main decision in this regard is Burrow-Giles Lithographic Co. v Sarony where the US Supreme Court confirmed that  an author is “he to whom anything owes its origin; originator; maker; one who completes a work of science or literature”, which specifically can only be a human author. Subsequent decisions have confirmed the position to be the same, with precedent being clearly set in stone since 1886.

The same requirement is extended to the registration of copyright protected works by the Copyright Office, with its Compendium noting this position clearly. Any works created by AI systems are treated as the result of “mechanical reproduction” instead of an author’s “own original mental conception, to which [the author] gave visible form”, so the authorship of AI generated works will depend on the circumstances, e.g., how the AI tool operates and how it was used to create the final work. 

The Copyright Office notes that this includes simply giving the AI system a prompt and it then produces a new work, which is how most of the systems operate currently, as then the "'traditional elements of authorship' are determined and executed by the technology". What users would have to do is exercise ultimate creative control how such systems interpret any given prompts and then generate the material for them to have human authorship. 

Human authorship is possible, however, if a user "select[s] or arrange[s] AI-generated material in a sufficiently creative way that “the resulting work as a whole constitutes an original work of authorship", or if an artist modifies the works created by the AI systems to meet authorship requirements. 

The guidance is a clear sign that legislation is behind the times and legal requirements for authorship would need to be updated to reflect the new paradigm of AI generation of works and their protection in some form. The protection would still have to balance the remuneration of artists whose works are used in the training data and/or source of any derivative works, while encouraging the development of these AI systems and to remunerate them accordingly. This will be a difficult balance to strike, especially since legislatures across the world are woefully behind the development of these technologies.  

A Row Over Nothing? - UK High Court Considers Whether a Rowing Machine Can be a Work of Artistic Craftsmanship

Art can often be very subjective and, quite frankly, baffling as to why a particular piece is seen to be 'good' or not. Nevertheless, the law doesn't see things that way, and even works that are less of 'artistic merit' can, and should be protected under various IP rights, since those rights don't discern based on the artistic value of something. You don't often get novel things argued as being works of artistic craftsmanship, but a recent case in the Intellectual Property Enterprise Court had to look at whether a piece of exercise equipment could be one, and therefore protected by copyright. 

The case of WaterRower (UK) Ltd v Liking Ltd (T/A Topiom) concerned an application for strike out and/or summary judgment of a claim made by WaterRower against Liking for copyright infringement, involving a water resistance rowing machine called the WaterRower (pictured here) developed by the company of the same name. In its application Liking argued that the rowing machine is not a "work of artistic craftsmanship" within the meaning of section 4(1)(c) of the Copyright Designs and Patents Act 1988. The main focus on the application was this, as the Defendant admitted that, if copyright were to subsist in the rowing machine, Liking's copying machines will infringe that right. 

Although the case also discusses aspects of the law relating to applications for strike out/summary judgment, for the purposes of this article we will skip this as it is by no means the most interesting aspect of the case. 

Section 4 provides copyright protection for 'artistic works', which includes 'a work of artistic craftsmanship', however, the legislation doesn't provide any definition for what this would include. The UK courts have grappled with this definition before, most notably in the case of George Hensher Ltd v Restawile Upholstery (Lancs) Ltd (helpfully summarized here), which has been interpreted further in Lucasfilm Ltd v Ainsworth. 

In considering the definition of 'a work of artistic craftsmanship' Deputy High Court Judge Stone considered the five speeches given by the Law Lords in the Hensher case. 

Without delving too deep into the particular considerations raised by all of the Law Lords, Deputy High Court Judge Stone disagreed with the Defendant that the WaterRower is not a work of artistic craftsmanship. 

He noted that, as discussed in the Hensher case, "…the intention of the creator was at least relevant to whether or not a work of craftsmanship is artistic", which was also mentioned as the primary test to define a work of artistic craftsmanship. The Deputy High Court Judge also mentioned that, as shown by witness evidence, the creator of the WaterRower, John Duke, did indeed intend to create a rowing machine in which the user has "a welcoming emotional connection, as they would with a piece of art or furniture", which clearly demonstrated an intention to create a work of artistic craftsmanship. 

Despite the Defendant's assertion that the intention needs to focus on the primary intention of the creator of the work (and Mr Duke's intention was to simply create a water resistance machine and nothing else), the Deputy High Court Judge disagreed that this would be enough, by itself, to strike out the claim. He determined that "…so long as the artistic purpose was one of the creator’s purposes, it does not need to be the primary or dominant one". 

There is also evidence that could be adduced that show that the WaterRower was indeed a work of artistic craftsmanship, and, as noted by the Deputy High Court Judge, this would be a matter for a trial judge to decide on the basis of that evidence in any event. 

The Deputy High Court Judge also discussed a number of tests put forward by the Defendant on deciding what amounted to a work of artistic craftsmanship. He, however, refused to decide on which of them was the 'real' test, but nonetheless found that there were real prospects of success of meeting all of the relevant tests. He concluded that the Claimant has real prospects of success in proving that "…the WaterRower has a real artistic or aesthetic quality, beyond simply being appealing to the eye, and that the WaterRower embodies a sufficient degree of both craftsmanship and artistry, with the combination of these two things leading to the end result".

The Deputy High Court Judge then turned to consider the EU copyright law that relates to the matter. The main cases here are Cofemel — Sociedade de Vestuário SA v G-Star Raw CV and Brompton Bicycle Ltd v Chedech/Get2Get. 

In brief, in Cofemel the CJEU considered the potential preclusion of copyright protection over design works which generate a significant aesthetic effect. In its decision the CJEU set out that copyright protects works that fulfil two requirements: (i) the existence of an original object, and (ii) the expression of intellectual creation. This means that the object in question "…must express the “intellectual creation” of its author, ie, the author has made free and creative choices in creating the work". 

However, as specified in Football Dataco Ltd v Yahoo UK Ltd, if the subject matter "…has been dictated by technical considerations, rules or other constraints, which have left no room for creative freedom", it will not possess the requisite originality to be protected by copyright. 

In Brompton, the CJEU had to consider whether copyright applies to a product where its shape is at least in part necessary to obtain a technical result (in the case, a folding bike). In its decision, the CJEU agreed with the position in Football Dataco, but specified that "…in order to establish whether the product concerned falls within the scope of copyright protection… through that choice of the shape of the product, its author has expressed his creative ability in an original manner by making free and creative choices and has designed the product in such a way that it reflects his personality". They also noted that earlier patents, if any apply to have applied to the item in question, will be relevant if they clarify the intentions of creating the shape of that item. In brief, the Court summarized its position as "…that [a] product is an original work resulting from intellectual creation, in that, through that shape, its author expresses his creative ability in an original manner by making free and creative choices in such a way that that shape reflects his personality".

While the position in the UK and the EU are inconsistent, the Deputy High Court Judge nonetheless found that the Claimant would have real prospects of success even in the European context. He noted that the WaterRower: (i) is an original object; (ii) is an expression of Mr Duke’s intellectual creation; and (iii) whilst there were some technical constraints, they are not such that the idea and its expression become indissociable. 

The Deputy High Court Judge did flag that this should be a matter for Parliament of the higher courts to decide and to specify what will amount to a 'work of artistic craftsmanship' and depending on what the judge dealing with the matter decides, the case could very well be appealed to the Court of Appeal for another look. 

The case is a very interesting one and shows that even novel subject matter that one typically doesn't associate with copyright can be one that comes up in litigation. Although the case didn't provide a great deal of clarity on a definition for a work of artistic craftsmanship, it does provide some more discussion and sets the scene for a potential appeal down the line unless the matter settles (or the parties leave it at that following trial). 

Cadbury's Color Conundrum - UK High Court Considers Registration for the Color Purple for Cadbury's After Settlement with Nestle

Sometimes a specific color is really important. Nothing highlights this more than the seemingly never-ending story of Cadbury's fight to register the color purple (or more specifically, Pantone 2685C) in relation to its iconic chocolate products. The fight over the color started nearly 20 years ago in 2004, so those born in the same year can now legally buy alcohol in the UK - which really puts the time spent in perspective. Nevertheless, color marks have always been difficult to register, however, in a highly anticipated victory Cadbury have done just that, potentially putting this matter to bed once and for all.

The case of Societe des Produits Nestle SA v Cadbury UK Ltd concerned an appeal against a decision by the UKIPO Hearing Officer, in which they rejected the registration of three trademarks (specifically applications 3019362, 3025822 and 3019361). Nestle opposed all three applications on the grounds that: (i) the marks did not fulfil the requirements of a "sign" under section 1(1) of the Trade Marks Act 1994, challenged under section 3(1)(a) of the Act; and (ii) whether the marks had distinctiveness under section 3(1)(b) of the Act. The oppositions against marks '361 and '822 were successful. Cadbury then appealed the decision against those two marks to the High Court, which handed down its decision this Summer.

Justice Meade initially focused on the core cases that were argued to be central to the matter. 

The first case was CJEU decision in Libertel Groep BV v. Benelux-Merkenbureau, which set out that "a colour per se, not spatially delimited, may... have a distinctive character within [the Trade Mark Directive then in force] provided that... it may be represented graphically in a way that is clear, precise, self-contained, easily accessible, intelligible, durable and objective". The key here is that a color mark has to be represented graphically clearly for it to be distinctive, and not merely set out as e.g. 'purple' without any distinction as to the hue or use of the color in packaging or otherwise. The case also noted that "...the latter condition could not be satisfied merely by reproducing on paper the colour in question; there had to be a designation using an internationally recognised code" (such as Pantone). 

The second case was the Court of Appeal decision in the Cadbury saga itself in 2013, where the Court of Appeal saw that the mark that was being applied for registration did not meet the requirements for registration, because it was not a "sign".

Justice Meade then discussed the legislative position in the matter, namely Article 2 of the Trade Mark Directive. Article 2 requires that, for a mark to be registered as a trademark, it has to: (i) be a sign; (ii) be capable of graphical representation; (iii) be capable of distinguishing the goods or services of one undertaking from those of other undertakings. 

"I wish I had any idea who owned this color..."

The main issue at hand in the Court of Appeal decision was whether the mark was indeed a 'sign', largely focused on its description as "applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods". The latter part of the description left a lot of leeway in the application of the color, so long as it was the "predominant colour" being applied to the packaging. The Court of Appeal rejected the mark as not being a 'sign' as it couldn't be clearly graphically represented and therefore lacks "clarity, precision, self-containment, durability and objectivity".

Justice Meade then moved on to the Hearing Officer's decision. 

The Hearing Officer noted, in relation to mark '361, that although it only referred to the application to packaging of the goods without any limitation to the surface area covered, it still didn't mean the mark would be a single color with no variation and would cover the representation of the trade mark that the Court of Appeal rejected. 

Justice Meade agreed with this position and set out that the formulation of the ‘361 mark is indeed worse than what was rejected by the Court of Appeal, nothing that "[r]emoving the wording held by the Court of Appeal to let in multiple forms and to be objectionably ambiguous is cosmetic at best and does not help".

In relation to mark '822, the Hearing Officer aligned its position to that of the above '361 mark, since it does not explain the use of the color and where it will be in the packaging or advertising materials. Justice Meade, however, disagreed with the Hearing Officer. 

He determined that the mark was for the color, which can include its application on the packaging or otherwise. He also distinguished the wording "predominant" from simply the color, which does not cause the same issues. There is no need to specify a simple color mark in relation to, for example, an area of packaging, since requiring that would limit color marks significantly. 

The appeal therefore succeeded in relation to the '822 mark, but not the '361 mark. 

Justice Meade did give some parting words on the issues around the '361 mark, highlighting that it "…leaves it significantly, undesirably and unnecessarily unclear whether combination marks including purple and other colours would be within the scope of the right applied for (and in particular whether they would be identical to ‘361)". How he distinguished the '822 mark from this is through its simplicity; only covering the color purple. 

Although the case is not a huge upheaval of the world of color marks, it does give some clarity as to appropriate wording for similar marks in the future and notes the pitfalls that can befall any application drafter. The key is sufficient specificity so as to not make the mark very difficult or impossible to understand but considering the '822 mark there is clearly room for some degree of generality. If anything Cadbury will be happy that the saga might just be over now, but who knows what the future will bring. 

You Gonna Keep That? - EU General Court Considers Trademark Registrations of Dormant Brands and Bad Faith

Many brands from the distant past have fallen by the wayside or haven't been used in years or even decades, despite some still fondly remembering them. These 'dormant' brands do also present an opportunity for revival and use of the potential remaining goodwill in those brands, but what happens when an unrelated third party decides to "revive" one of these dormant brands and register it as a trademark? The answer isn't always crystal clear, but a recent decision by the EU General Court set to look at just that and whether this could amount to a bad faith registration. 

The case of Ladislav Zdút v EUIPO concerned a trademark for a figurative mark for the brand "NEHERA" (EUTM 11794112), which was applied for and registered in 2013-2014, including a number of different types of goods such as clothing and footwear. Some 5 years after registration three interveners, Ms Isabel Nehera, Mr Jean-Henri Nehera and Ms Natacha Sehnal, filed an application for a declaration of invalidity of the trademark, alleging that the registrant, Mr Zdut, had acted in bad faith when he filed the application for registration of the contested mark. This was due to the first two interveners' grandfather, Jan Nehera, having established a business using the same brand in Czechoslovakia in the 1930s and had acquired a trademark in Czechoslovakia for the same. However, the brand has not been used since the 1940s. The application was rejected at first instance by the Cancellation Division, but the decision was reversed by the Second Board of Appeal which declared the trademark invalid. Mr Zdut subsequently appealed that decision, with the matter ending up with the General Court.

Considering the law around the matter, Article 52 of the CTM Regulation sets out that an EU trademark should be declared invalid where the applicant was acting in bad faith when they filed the application for registration of that trademark. 'Bad faith' in this regard "… presupposes the presence of a dishonest state of mind or intention" so it means that the applicant "…has filed the application for registration of that mark, not with the aim of engaging fairly in competition but with the intention of undermining, in a manner inconsistent with honest practices, the interests of third parties, or with the intention of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark". 

However, the subjective intentions of the applicant must still be assessed objectively considering all the factual circumstances relevant to the particular case. These circumstances can include: (i) the fact that the applicant knows or must know that a third party is using, in at least one Member State, an identical or similar sign for an identical or similar product or service capable of being confused with the sign for which registration is sought; (ii) the applicant’s intention to prevent that third party from continuing to use such a sign; and (iii) the degree of legal protection enjoyed by the third party’s sign and by the sign for which registration is sought. 

Even Superman had no respect for historical ownership
of things

Even outside of the specific circumstances above, the General Court noted that other factors, such as the origin of the sign at issue and of its use since its creation, the commercial logic underlying the filing of the application for the trademark, the reputation of the sign at the time of the registration, and the chronology of events leading up to that filing might be very relevant. 

The General Court then turned to the actual matter at hand. It initially noted that there is currently no registration for the "NEHERA" brand in the EU, and that the earlier Czechoslovakian trademark had lapsed in the 1940s and hasn't been used since. 

Interestingly Mr Zdut had been fully aware of the existence and reputation of Jan Nehera and of the old trademark in Czechoslovakia, and even had noted that he wanted to launch the brand to ‘pay a tribute’ to the ‘great days of the Czechoslovak textile industry of the 1930s’ and in particular to Mr Jan Nehera. 

Considering the law in light of the matter, the General Court set out that "[f]ree-riding behaviour with regard to the reputation of a sign or of a name… is, in principle, only possible if that sign or that name actually and currently enjoys a certain reputation or a certain celebrity". With that in mind, the EU courts have found an intention to take unfair advantage of the surviving reputation of an earlier mark, including where that mark was no longer used or of the current celebrity of the name of a natural person, where the surviving reputation or fame was established.  

In contrast to this position, there is no usurpation of the reputation of a term claimed by a third party and, therefore, no bad faith, where that term was neither registered, used, nor renowned in the EU. 

With that in mind, the General Court noted that in the absence of surviving reputation in respect of the former Czechoslovak trademark and of current celebrity in respect of Jan Nehera’s name at the time of filing, the use of the mark wouldn't be free-riding behavior indicating bad faith. Even though Mr Zdut knew of the individual and the original trademark, it isn't sufficient to establish the existence of bad faith. 

The interveners also highlighted an intention to create a link between the name and the new brand, but the General Court saw that this wasn't in itself sufficient to support a finding that unfair advantage was taken of the reputation of the sign or of the former name. 

The General Court also focused on the lack of a current reputation in relation to the old trademark or the name. As they noted, currently both have been forgotten by the relevant public, and the applicant had made considerable efforts to build up the brand again. This was far from merely parasitically taking advantage of an existing reputation. 

The General Court also determined that it is possible, in certain specific circumstances, that reuse by a third party of a previously renowned former mark or of the name of a previously famous person may give a false impression of continuity or of inheritance with that former mark or with that person. This can happen where the applicant presents itself to the relevant public as the legal or economic successor of the holder of the former mark, when there is no continuity or inheritance relationship. That could then be considered in establishing bad faith. However, no such intention was found in relation to Mr Zdut. 

In summary, the General Court found that the concept of bad faith presupposes the presence of a dishonest state of mind or intention, which they were unable to find in the present matter, and overturned the Board of Appeal's decision. 

The case is an important reminder for any brand owners (even historical ones), or their potential legatees, to make sure that those brands are properly registered if any use of the brand is ever even contemplated. If this isn't done it may present an opportunity for a third party to jump in and take over the brand, which could very well be fully legal and without much recourse down the line. It is possible that this matter will be appealed to the Court of Justice for an ultimate decision, but in the absence of that any dormant brands could very well be up for grabs. 

Just Can't Catch a Break - US Court of Appeals Decides That AI Cannot be an Inventor of Patents

Artificial intelligence's road to recognition as a legal entity keeps hitting obstacle after obstacle, and as things stand it looks like right's in AI created works or inventions will be questionable without proper legislative intervention. Despite the continuous stumbling blocks, it seems that some inventors are very interested in continuing the fight, so yet another important decision has been reached on AI inventorship of patents in the US. The Court of Appeals recently handed down its decision on the matter, which continues on the near never-ending line of decisions across the globe that have been discussed on this blog before many times (for example here, here and here). 

The case of Stephen Thaler v Katherine Vidal concerned the DABUS AI system, which will be very familiar to the readers of this blog by now. DABUS was created by Mr Thaler and set out to create a number of inventions, and subsequently Mr Thaler applied for patents for some of these inventions (at issue specifically applications 16/524,350 and 16/524,532). In these applications Mr Thaler listed DABUS as the sole inventor. Mr Thaler also handled all of the filing formalities for DABUS, including a number of documents setting out why it is the inventor of the inventions. The USPTO rejected both applications due to them lacking a valid inventor and therefore being incomplete. The District Court, on appeal, found that "an 'inventor' under the Patent Act must be an 'individual' and the plain meaning of 'individual' as used in the statute is a natural person", and Mr Thaler therefore appealed to the Court of Appeals. 

Justice Stark noted that the sole issue in the case is whether an AI software system can be an "inventor" under the Patent Act. 

The Patent Act expressly sets out that inventors are 'individuals', which is means "the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention". The key here is the word individual, which Justice Stark highlighted to meaning "...a human being" (as decided by the Supreme Court in Mohamad v Palestinian Authority). Unless defined otherwise by statute this remains the definition, as is the case under the Patent Act. 

When not inventing, AI likes to take it easy with
a little light gardening in the evenings

Despite the wording 'whoever' being used in the Patent Act, the fact remains that these provisions are still subject to the above, i.e. that an inventor be a human being. Mr Thaler also noted that AI software programs should qualify as 'inventors' since otherwise patentability would depend on "the manner in which the invention was made". Justice Stark rejected this position, specifying that this isn't about inventorship, and also that that inventions may still be non-obvious even if they are discovered during 'routine' testing or experimentation. 

Existing precedent supports this position, with, for example, the decision in the University of Utah v Max-Planck setting out that "inventors must be natural persons and cannot be corporations or sovereigns", and in Beech Aircraft Corp v EDO Corp where it was decided that "only natural persons can be 'inventors'". Justice Stark noted that, while they deal with a different question (i.e. corporate ownership), the cases nonetheless support the position that the plain meaning of 'inventor' in the Patent Act is limited to natural persons.

Justice Stark then touched on Mr Thaler's various arguments to round out their decision. Mr Thaler had argued that inventions generated by AI should be patentable in order to encourage innovation and public disclosure. Justice Stark determined this to be purely speculative and lacking in basis under the Patent Act. Mr Thaler also argued constitutional avoidance where permitting AI programs to be inventors would support the constitutional purpose of patents "to promote the progress of science and the useful arts" and that not recognizing AI as an inventor undermines such progress, raising potential constitutional concerns that we should avoid. Justice Stark also readily rejected this position, setting out that the lack of AI inventorship would be unconstitutional, since Congress has decided to legislative limiting inventorship to human beings. 

The Court of Appeals therefore rejected Mr Thaler's appeal. 

The decision was, by no means, a surprise and continues the trajectory of rejection that AI inventorship has faced over the last several years (despite the South African CIPC registering DABUS' inventions as patents, being the only jurisdiction to do so so far). It remains to be seen whether Mr Thaler will want to try and take the matter to the Supreme Court, but it would seem unlikely to be picked up due to the sheer clarity of the matter in the US. A future involving AI inventorship would clearly require further steps from legislatures across the board, but currently there seems to be very little appetite to do so.

These Shoes are Made for Selling - AG Szpunar Opines on Intermediary Liability and the 'Use' of a Trademark for Online Marketplaces

Intermediaries in e-commerce are a near necessity for many online sellers of products, but they can produce headaches and issues where potentially unauthorized goods are sold through them that infringe a company's IP rights. The status of intermediaries' liability has been slowly evolving in the courts, and a hotly anticipated decision by the CJEU on the issues is very close in the horizon that should clear matters up significantly in Europe. Before this, however, Attorney General Szpunar has had their say and issued their opinion earlier this Summer (the opinion only being available in English very recently). The opinion sets the scene for the CJEU and could be a glimpse into the CJEU's position on the matter in the near future. 

The case of Christian Louboutin v Amazon Europe Core Sàrl concerned infringement proceedings launched by Christian Louboutin against Amazon, under which they alleged that: (i) Amazon is liable for infringement of his trade mark; (ii) it should cease the use, in the course of trade, of signs identical to that trade mark in the EU; and (iii) he is entitled to damages for the harm caused by the unlawful use at issue. Amazon unsurprisingly challenged this position, arguing that it is merely an operator of an online marketplace and cannot be held liable for the actions of its sellers. The Luxembourg courts referred the matter to the CJEU for clarification, which is closing in on the crescendo of the decision itself following AG Szpunar's opinion.

The case combines two separate actions in Luxembourg and Belgium involving the two parties. 

AG Szpunar noted that they both concerned the interpretation of the concept of ‘use’ for the purposes of Article 9(2) of Regulation 2017/1001. In essence the referring courts are asking "…whether Article 9(2)… must be interpreted as meaning that the operator of an online sales platform must be regarded as using a trade mark in an offer for sale published by a third party on that platform on account of the fact that, first, it publishes both its own commercial offerings and those of third parties uniformly without distinguishing them as to their origin in the way in which they are displayed, by allowing its own logo as a renowned distributor to appear on those advertisements, and, secondly, it offers third-party sellers the additional services of stocking and shipping goods posted on its platform by informing potential purchasers that it will be responsible for those activities". The courts also asked "...whether the perception of a reasonably well-informed and reasonably observant internet user has an impact on the interpretation of the concept of ‘use’". 

As a primer, Article 9(2) provides that the proprietor of an EU trademark is entitled to prevent all third parties not having their consent from using, in the course of trade, any sign which is identical with the trademark. However, what amounts to 'use' in this context is paramount to determining potential liability under the provision for any would-be infringer. 

AG Szpunar then moved on to discussing the current definition of 'use' under Article 9. Some of the main decisions here are Daimler AG v Együd Garage Gépjárműjavító és Értékesítő Kft, Coty Germany GmbH v Amazon Services Europe Sàrl, Google France SARL and Google Inc. v Louis Vuitton Malletier SA and L’Oréal SA v eBay International AG. 

The CJEU has found that the term 'using' in terms of intermediaries involves active behavior and direct or indirect control of the act constituting the use, and that the act of use presupposes, at the very least, that that third party uses the sign in its own commercial communication. The latter point was key in this according to the AG and without it any such use would be lacking.

In terms of the commercial communication aspect, the CJEU has determined that a referencing service provider does not use a sign in its own commercial communication since it only allows its clients themselves to use the relevant signs, with the result that it "…merely creates the technical conditions necessary for the use of a sign". 

Similarly, a marketplace operator would not be using a sign in its own commercial communication when it provides a service consisting in enabling its customers to display that sign in their commercial activities, and that the stocking of goods bearing the relevant sign is not a use of that sign in a third party’s own commercial communication since it has not itself offered the goods for sale or put them on the market. 

The AG does highlight that this set of definitions is not a clear one and needs to be more specific and focused to make better sense. 

The AG very cleverly shifted the definition towards the recipient away from the actual communicator, i.e. the platforms. He discussed that the commercial communication of an undertaking would be to promote goods or services to third parties. To put simply, the intermediary adopts the sign to such an extent that that sign appears to be part of its activity.

The adoption condition still has to be looked at from the perspective of the recipient, i.e. the user of the marketplace, to determine whether the sign is perceived by that user as being integrated into that commercial communication. The user that this would be assessed against is a "reasonably well-informed and reasonably observant internet user". 

AG Szpunar then moved on to discussing Amazon's particular business model and whether they would be 'using' a trademark in the course of their business. 

The first question referred to the CJEU concerned, primarily, if "…the activity of a marketplace operator of publishing commercial offerings from third-party sellers on its website where those offers for sale display a sign which is identical with a trade mark". 

As noted above, this activity would not constitute a 'use' of a trademark (specifically decided in the eBay case), however, Amazon operates differently to eBay as a marketplace. Amazon provides a much more comprehensive offering, where third party sellers can post their own advertisements for goods in addition to Amazon's own. In those instances, the Amazon logo is merely present to indicate to consumers that the ad was posted by a third party seller. 

In that instances the AG noted that that would not lead to a reasonably well-informed and reasonably observant internet user to perceive the signs displayed on the advertisements of third-party sellers as part of Amazon’s commercial communication. The same would apply to the integration of third-party ads by Amazon into specific shops on the platform, which is the type of organization that is integral to the functioning of these types of online platforms. 

The referring courts also asked whether "…the fact that Amazon offers a ‘comprehensive’ service, including providing assistance in preparing advertisements and the stocking and shipment of certain goods, has an impact on the classification of the use of a sign displayed on those advertisements by Amazon". 

To properly consider this the AG highlighted that you must consider Amazon’s activities as a whole to determine whether the involvement of that company might be classified as use of that sign. The AG thought that this would not be the case. 

Amazon's involvement, while able to give them more control over the sale of a product that may infringe a trademark, but that involvement was only for the benefit of the consumer so that they could ensure prompt and guaranteed delivery after a product is purchased. In the AG's view this is not sufficient to establish that Amazon has used the sign at issue in its own commercial communication. 

This position ties in with the decision in Coty, where the CJEU determined that "…a sign cannot be regarded as having been used in the marketplace operator’s own commercial communication where that operator stocks goods bearing a sign on behalf of a third-party seller without itself pursuing the aim of offering those goods or putting them on the market". 

The AG also noted that Amazon's posting of the ads in question would not be 'using' the sign in question either. 

To round things off, the AG summarized their position as answering the questions that "…Article 9(2)… must be interpreted as meaning that the operator of an online sales platform cannot be regarded as using a trade mark in an offer for sale published by a third party on that platform on account of the fact that, first, it publishes both its own commercial offerings and those of third parties uniformly, without distinguishing them as to their origin in the way in which they are displayed, by allowing its own logo as a renowned distributor to appear on those advertisements, both on its website and in the advertising categories of third-party websites and, secondly, it offers third-party sellers the additional services of assistance, stocking and shipping of goods posted on its platform by informing potential purchasers that it will be responsible for the provision of those services, provided that such elements do not lead the reasonably well-informed and reasonably observant internet user to perceive the trade mark in question as an integral part of the operator’s commercial communication".

The AG's opinion really sets the scene for the CJEU and seems very sensible in protecting the functionality of online marketplaces, like Amazon. If the courts would see things otherwise, this would clearly massively impede the functionality of these services, and in fact, without heavy moderation by the platforms themselves, would make them impossible to operate. This should not be seen as carte blanche for the platforms either, but could set sensible, clearer boundaries for both platforms, brands and third party sellers, but it remains to be seen what the CJEU's position will be. 

The EPO Are Not 'Board' of AI Yet - EPO Board of Appeal Weighs in on Whether Artificial Intelligence Can Be an Inventor

The progression of AI in the world of IP rights keeps trundling along, with many national and international bodies having already weighed in on whether AI can be an inventor for the purpose of patent law or not (discussed on this blog before). The answer seems to have been a resounding "no", however, following an earlier decision by the EPO, the EPO Board of Appeal has now issued its decision in the ever-continuing DABUS saga, which does shed some further light on the matter and does show that the current legislative framework does seem robust enough on the matter of AI (though this writer would think that specific legislative updates are still a must).

The case of Designation of inventor/DABUS (case J 0008/20) concerned two patent applications filed at the EPO (namely EP18275163 and EP18275174). The applications didn't list an inventor for the patents, but, following a clarification by the applicant, Stephen Thaler, the inventor was noted to be "DABUS". DABUS is an AI created by Mr Thaler. The EPO Receiving Section rejected both applications on the grounds that the designated inventor, DABUS, didn't meet the requirements for an inventor, that being a need for them to be a 'natural person'. Mr Thaler subsequently appealed both decisions to the Board of Appeal.

The appeal was brought on three separate grounds: (i) whether an applicant can designate an entity which is not a natural person as the inventor under Article 81 of the European Patent Convention; (ii) to comply with the EPC is it enough for an applicant to file any declaration irrespective of its content, or does the latter need to satisfy specific requirements; and (iii) whether and to what extent the EPO can examine and object to statements filed under Article 81.

To set the scene, Article 81 requires that an inventor be designated for all patent applications, and any deficient designation of an inventor can be amended under Rule 21 of the EPC. Further, Article 61 of the EPC notes that "[t]he right to a European patent shall belong to the inventor or his successor in title" (the latter being a legal successor in the title of the rights), and the rights of any employee, if they are the inventor, will be determined by the national legislation where they are employed. 

The Board of Appeal first dealt with the main request in the matter, i.e. whether an AI can be an inventor of a patent. The Board firmly rejected this point, as they determined that "[u]nder the EPC the designated inventor has to be a person with legal capacity", so adopting a simpler, ordinary meaning approach in deciding what an 'inventor' is. What the provisions around designating an inventor seek to do are to confer and protect the rights of the inventor, facilitate the enforcement of potential compensation claims provided under domestic law, and identify a legal basis for entitlement to the application. The Board clearly set out that "[d]esignating a machine without legal capacity can serve neither of these purposes". 

The Board also noted that there is no practice or agreement that would allow for the Board to overcome this specific language. The appellant also advanced an argument of fairness allowing for AI to be an inventor of a patent; however, the Board immediately rejected this argument as well. 

The Board therefore confirmed that the Receiving Section's decision was correct in raising an objection to the applications. 

In summarizing its position, the Board decided that "…the main request does not comply with the EPC, because a machine is not an inventor within the meaning of the EPC. For this reason alone it is not allowable". 

The Board then turned to the auxiliary request, i.e. whether the first sentence of Article 81 does not apply where the application does not relate to a human-made invention. The Board swiftly sided with the request and agreed that the part of Article 81 would not apply in that instance, since the provisions were drafted to confer specific rights on the inventor, so where no human inventor can be identified, then Article 81 does not apply. 

The appellant had provided a statement with this request noting that they had derived the right to the European patent as owner and creator of the machine. The Board disagreed and stated that the statement didn't bring them within the remit of Article 60, since there is no legal situation or transaction which would have made him successor in title of an inventor. 

The Board did consider two referrals that were requested to be made to the Enlarged Board, however, the referrals were rejected. 

In discussing why no referral was needed, the Board turned to matters surrounding Article 52 of the EPC, which specifies that an invention is one which is novel, industrially applicable and involves an inventive step is patentable. The appellant argued that the provision only relates to human-made inventions, and the Board agreed with this position. How a particular invention was made doesn't play a part in the patent system, so therefore it is possible that AI-generated inventions too are patentable under Article 52. However, this position can't co-exist with Article 60, so you would have inventions that are patentable under Article 52, but for which no rights are provided under Article 60. 

The Board also considered the requirement to file a statement of origin of the right to a European patent where the inventor and the applicant differ. The Board noted that this is only a formal requirement, and only informs the public of the origin of the right, but that it would be disproportionate to deny protection to patentable subject-matter for failing to fulfil such a formal requirement. 

Additionally, they noted that, as the lawmakers only had human-made inventions in mind when drafting Article 60, so it is possible that no statement on the origin of the right is required where the application concerns an invention developed by a machine. 

The crux of why Mr Thaler's applications have failed in light of the above is that there is nothing preventing him from listing himself as the inventor in relation to both applications. The Board highlighted that there is no case law "…which would prevent the user or the owner of a device involved in an inventive activity to designate himself as inventor under European patent law".

The decision is yet another among many that highlight the issues of AI inventorship and why there is simply a need for evolution in the law to accommodate AI inventions somehow. However, as noted by the Board, the creator of the AI could be listed as the inventor, bypassing this issue, however, it seems that Mr Thaler was deadset on setting a new precedent and allowing for direct ownership by the AI systems. This presents the problem of enforcement and/or remuneration, and undoubtedly these would be handled by the creator themselves, rendering this problem almost moot in this writer's view. We will see if the case progresses to the Enlarged Board, but it seems that Mr Thaler is in no way done with the DABUS saga as things stand.