Gadgets, Gigabytes, & Goodwill Blog editors, Lauren Leipold and Owen Wolfe, co-authored an article, “Rules for use of AI-generated evidence in flux,” in Reuters and Reuters’ Westlaw Today. The Seyfarth attorneys discussed how generative AI prompts and outputs are discoverable in litigation, even those that were part of pre-suit investigation, and that parameters around use of this type of evidence are still relatively unclear.

“Litigants should be thinking carefully about privilege, spoliation, reliability and authentication issues that will inevitably arise around AI-generated materials.”

The full article is available in Reuters and Reuters’ Westlaw Today.

Thursday, September 26, 2024
1:00 p.m. to 1:30 p.m. Eastern
12:00 p.m. to 12:30 p.m. Central
11:00 a.m. to 11:30 a.m. Mountain
10:00 a.m. to 10:30 a.m. Pacific

For more information and to register, click here.

Please join us for the first session of Seyfarth’s inaugural Winning Combinations: Exploring Synergies with Government Contracts Law webinar series titled: Effective Strategies for Government Software License Negotiations. The webinar will be held on Thursday, September 26, at 1:00 p.m. Eastern.

This session will feature Ken Wilton, Partner and Trademark Practice Lead and Teddie Arnold, Partner in the firm’s Government Contracts Group. Our panelists will guide you through the complexities of negotiating software licenses with government entities. Learn best practices, key negotiation tactics, and critical compliance considerations to ensure favorable outcomes.

Topics Covered:

  • Differences between commercial and government software license agreements.
  • Essential clauses to include in government software contracts.
  • Best practices for negotiating pricing and payment terms.
  • Navigating compliance with government regulations and procurement policies.
  • Tips for managing contract modifications and renewals.

Speakers

Ken Wilton, Partner and Trademark Practice Lead, Seyfarth Shaw LLP

Teddie Arnold, Partner, Seyfarth Shaw LLP

For more information and to register, click here.

If you have any questions, please contact Sadie Jay at sjay@seyfarth.com and reference this event.

To comply with State CLE Requirements, CLE forms requesting credit in IL or CA must be received before the end of the month in which the program took place. Credit will not be issued for forms received after such date. For all other jurisdictions forms must be submitted within 10 business days of the program taking place or we will not be able to process the request.

Our live programming is accredited for CLE in CA, IL, and NY (for both newly admitted and experienced).  Credit will be applied as requested, but cannot be guaranteed for TX, NJ, GA, NC and WA. The following jurisdictions may accept reciprocal credit with our accredited states, and individuals can use the certificate they receive to gain CLE credit therein: AZ, AR, CT, HI and ME. For all other jurisdictions, a general certificate of attendance and the necessary materials will be issued that can be used for self-application. CLE decisions are made by each local board, and can take up to 12 weeks to process. If you have questions about jurisdictions, please email CLE@seyfarth.com.

Please note that programming under 60 minutes of CLE content is not eligible for credit in GA. programs that are not open to the public are not eligible for credit in NC.

What do a social media content creator and reality television stars have in common?  Apart from more followers than I’ll ever have, significant issues regarding their trademarks.  Jools Lebron, a content creator, was distraught to learn that several individuals applied to register with the United States Patent and Trademark Office (the “USPTO”) a catchphrase she made famous.  Ariana Madix and Katie Maloney, reality stars turned restaurateurs, were presumably surprised to learn that a former business partner applied to register the name of their restaurant.  These are not uncommon scenarios.  But what can we learn from them? 

Lebron is a social media personality that shot to fame this summer.  She posted a video about how she is “very demure, very mindful” regarding makeup choices for work.  The video has since been viewed millions of times and has sparked a trend on social media as we transition from “brat summer” to “demure fall.”

Lebron invested in merchandise featuring the catchphrase to promote herself.  But she did not immediately apply to register the phrase with the USPTO.  Shortly after Lebron’s video went viral, several third parties filed applications with the USPTO for the catchphrase and variations of the same.  The applied for marks include VERY DEMURE .. VERY MINDFUL .. for advertising services, VERY DEMURE VERY CUTESY for advertising services, and ALWAYS DEMURE AND VERY MINDFUL for clothing.  This was perhaps an attempt to capitalize on Lebron’s fame. 

Recently, Jools Lebron filed two applications for VERY DEMURE VERY MINDFUL for numerous goods and services, including cosmetics, clothing, bags, and advertisement and entertainment services.  Because Lebron’s applications were filed after the above applications, the USPTO may cite the prior filings as the basis for a refusal regarding Lebron’s filings. 

Pivoting to reality television, Something About Her LLC (“SAH”), is a California-based company owned by Madix and Maloney who have leveraged their public personas to promote their SOMETHING ABOUT HER restaurant and brand.  Madix and Maloney partnered with celebrity chef Penny Davidi to help create the menu for their future sandwich shop. 

SAH and Davidi had a falling out and parted ways.  But not before Davidi’s company, Put a Fork in It LLC, filed an application to register the trademark SOMETHING ABOUT HER for restaurant services. 

In July, SAH filed an application for SOMETHING ABOUT HER for several goods and services, including restaurant services, clothing, and fragrances.  SAH is currently engaged in a proceeding at the Trademark Trial and Appeal Board and a California state court action concerning ownership of the SOMETHING ABOUT HER mark.  

These cases are facially unrelated.  But they underscore the importance of establishing and protecting trademark rights.  In particular, they highlight several considerations for trademark applicants:

  • Do Conduct Thorough Trademark Searches: Before filing a trademark application, it’s crucial to conduct comprehensive searches to ensure that the mark is not already applied for or in use for identical or related goods or services.
  • Don’t Wait to File: Trademark applications can be filed on an intent to use basis and actual use can commence several years later.  But owners can rely on the filing date as if the mark was first used on that date.
  • Don’t Disclose Your Trademarks Before Filing: Madix and Maloney discussed the idea for their SOMETHING ABOUT HER restaurant on January 4, 2022 during an episode of their reality show, which had an initial viewing audience of 650,000.  This could have prompted numerous attempts to capitalize on the brand, as was done to Lebron.
  • Do Document Use and Promotion: Maintaining detailed records of the use and promotion of a trademark can be invaluable in establishing rights.  Although Lebron does not own prior filings for VERY DEMURE VERY MINDFUL, she may be able to establish prior rights by relying on the steps taken to use the mark in commerce.
  • Do Monitor Prior Filings: Intent to use based filings may block a subsequently filed application.  But applicants must perfect their rights by actually using their trademarks in commerce.  If the marks are not used, the applications should become abandoned.

These cases illustrate the complex issues surrounding establishing trademark rights and registering trademarks with the USPTO.  More difficulties may arise when celebrities attempt to establish trademark rights in popular phrases.  And this trend may be on the rise. 

It’s uncertain what avenues Lebron and Madix and Maloney may take to ensure ownership of their valuable trademarks. But what is clear is that we can learn a lot from celebrities and their associated branding.

Tuesday, October 1, 2024
1:00 p.m. to 2:00 p.m. Eastern
12:00 p.m. to 1:00 p.m. Central
11:00 a.m. to 12:00 p.m. Mountain
10:00 a.m. to 11:00 a.m. Pacific

For more information and to register, click here.

About the Program

In a world where corporate espionage and data breaches are increasingly common, protecting your company’s intellectual property is more vital than ever. Recent developments surrounding the FTC’s Non-Compete Ban, currently stalled in litigation, highlight the need for proactive measures. This webinar will help you navigate these regulatory shifts and strengthen your IP protection strategies.

Join Lauren Leipold, Eddy Salcedo, and James Yu for the next installments of Seyfarth Shaw’s 2024 Trade Secrets Webinar Series. This webinar offers crucial insights into enhancing your IP defenses and preparing for future regulatory changes.

Key Discussion Points:

  • Identifying and Securing IP Protection: Learn about the differences between trademark, trade dress, copyright, patent, and trade secret protection, and how to determine which laws will best protect your company’s key intangible assets.
  • Effective Secrecy Protections: Where federal registration is not feasible, understand how to use employment agreements and non-compete clauses to protect and enforce trade secrets.
  • Hiring and Termination Protocols: Learn best practices for managing hiring, terminations, and exit interviews to prevent IP theft and protect your assets.
  • Comprehensive Protection Plan: Develop a holistic IP protection strategy that integrates legal, technical, and operational measures.
  • Managing Computer-Stored Data: Gain strategies for securing data and responding to breaches, focusing on protecting sensitive information.

Who Should Attend: This webinar is ideal for in-house counsel, HR professionals, compliance officers, and business leaders responsible for IP protection. Equip yourself with the knowledge to safeguard your company’s most valuable assets.

Speakers

Lauren Leipold, Partner, Seyfarth Shaw LLP

Eddy Salcedo, Senior Counsel, Seyfarth Shaw LLP

James Yu, Senior Counsel, Seyfarth Shaw LLP

For more information and to register, click here.

If you have any questions, please contact Sadie Jay at sjay@seyfarth.com and reference this event.

To comply with State CLE Requirements, CLE forms requesting credit in IL or CA must be received before the end of the month in which the program took place. Credit will not be issued for forms received after such date. For all other jurisdictions forms must be submitted within 10 business days of the program taking place or we will not be able to process the request.

Our live programming is accredited for CLE in CA, IL, and NY (for both newly admitted and experienced).  Credit will be applied as requested, but cannot be guaranteed for TX, NJ, GA, NC and WA. The following jurisdictions may accept reciprocal credit with our accredited states, and individuals can use the certificate they receive to gain CLE credit therein: AZ, AR, CT, HI and ME. For all other jurisdictions, a general certificate of attendance and the necessary materials will be issued that can be used for self-application. CLE decisions are made by each local board, and can take up to 12 weeks to process. If you have questions about jurisdictions, please email CLE@seyfarth.com.

Please note that programming under 60 minutes of CLE content is not eligible for credit in GA. programs that are not open to the public are not eligible for credit in NC.

Originally posted on Seyfarth’s The Blunt Truth Blog.

As the prospect of federal rescheduling of cannabis looms, some in the industry are seemingly attempting to preserve their spot in line at the United States Patent and Trademark Office.  A recent Trademark Trial and Appeal Board (the “Board”) decision underscores a significant hurdle for cannabis related applications—use in interstate commerce.  In Allright Mind Enterprises Ltd. v. Creative Arts By Calloway, LLC, the Board dismissed a cannabis company’s opposition because the company lacked a bona fide intent to use its mark in commerce.  Opp. No. 91273573 (TTAB 2024).  The case could affect cannabis companies’ ability to obtain trademark rights at the federal level.

Creative Arts by Calloway, LLC (“Calloway”) applied to register the mark REEFER MAN for educational services and smoker’s articles.  Allright Mind Enterprises Ltd. (“Allright”) opposed the application alleging a likelihood of confusion with its applied for REEFERMAN GENETICS mark.  Allright relied on its two intent-to-use based applications, which covered plant nutrients and supplements for the production of cannabis as well as corresponding retail services.  One application also included retail services for goods unrelated to cannabis. 

One of the requirements for trademark registration is that the applied-for mark must have been used in U.S. commerce or that the applicant have a bona fide intent-to-use the mark in U.S. commerce.  The Controlled Substances Act, 21 U.S.C. §§ 801-971 (“CSA”), bans the sale of marijuana in the United States.  So, those providing cannabis related goods and services may not be able to provide their offerings in lawful commerce or have a bona fide intent to do so.

Calloway argued that the opposition should be dismissed because Allright lacked the requisite bona fide intent to use its mark in commerce.  Specifically, Calloway alleged that Allright had only used its mark in connection with cannabis products outside the United States and that such goods are banned under the CSA.  Calloway also noted that Allright provided no documentary or testimony evidence supporting Allright’s intent to use its mark for any non-cannabis goods or services.

Allright did not rebut the allegations.  Instead, Allright alleged that it would not ship to countries where its products are unlawful.  Further, Allright’s interrogatory responses noted that it was reviewing all the relevant and changing U.S. laws and regulations surrounding cannabis, and that Allright had sold clothing and herb grinders to U.S. consumers. 

The Board saw through the smoke of Allright’s allegations.  The Board noted that a party’s own interrogatory responses are generally considered weak evidence by themselves.  Without corroborating evidence, Allright’s statements in its interrogatory responses were provided little weight.  Further, the record did not establish that Allright has ever sold anything other than cannabis related goods or any of the facially lawful goods and services included in the applications (e.g., retail services for clothing) in its home country of Canada. 

The Board stated that the record established Allright’s “intent to reserve rights in its mark, so that it would remain at the front of the line to register if the U.S. government ever changes the CSA to permit sales of cannabis and other products that currently are unlawful under the CSA.”

Accordingly, the Board held that Allright lacked the necessary objective intent to use its mark in commerce.  Therefore, the Board deemed Allright’s applications invalid.  Without the applications, Allright could not establish priority and the opposition was dismissed.

Those in the cannabis industry often seek to register their marks for facially lawful goods and services.  These may include clothing, smoking articles not used with cannabis, retail services for providing such goods, and providing information in the field of cannabis.  Obtaining registrations for ancillary offerings may allow for a cannabis company to successfully shut down a competitor. 

However, this case casts doubt on a cannabis company’s ability to successfully register marks for ancillary offerings.  A bona fide intent to use a mark in lawful commerce may not be established if an applicant solely provides cannabis offerings prohibited by the CSA.  We will keep our eyes out for updates on this sticky issue.

This post has been cross-posted from Seyfarth’s The Blunt Truth blog.

In a recent precedential decision, the Trademark Trial and Appeal Board (the “Board”) found that Door Dash, Inc. (“Door Dash”) was merely doing what all trademark owners must do—protect their valuable rights.  Door Dash, Inc. v. Greenerside Holdings, LLC, Opp. No. 91285160 (TTAB 2024).  The Board struck the affirmative defense of “trademark bullying” because a cannabis company did not properly plead it.  This case is important for those in the industry, and beyond, to consider when making allegations before the Board. 

Door Dash is a popular provider of food delivery services and owns several registrations for its DOOR DASH mark.  Greenerside Holdings, LLC (“Greenerside”) applied to register its

mark for “Delivery of medical cannabis solely derived from hemp with a delta-9 tetrahydrocannabinol THC concentration of not more than 0.3 percent on a dry weight basis, using car service” with the United States Patent and Trademark Office.  Door Dash opposed the application alleging that Greenerside’s mark was likely to cause confusion with its DOOR DASH mark. 

Greenerside asserted an affirmative defense of unclean hands because Door Dash had allegedly engaged in “trademark bullying.” 

The Board noted that “trademark bullying” is not explicitly or implicitly included in the Lanham Act.  Instead, the Act provides for a trademark owner to protect its mark from uses that would infringe its rights and oppose or cancel filings for confusingly similar marks. 

It is imperative that a trademark owner enforce its rights.  If a trademark owner does not do so, there is a risk that those rights may be weakened or lost entirely.  Several marks containing a certain term used or registered for particular goods may make it less likely that consumers identify that term as a source indicator.  So, it behooves trademark owners to prevent use and registration of marks confusingly similar to their own marks. 

If enforcing rights is necessary, what exactly makes a “trademark bully?” 

A leading trademark scholar has defined “trademark bullying” as “conduct by a trademark owner that 1) asserts an “unreasonably inflated view” of the exclusive scope of its mark; 2) is overly aggressive in making demands that are not proportional to the objected to conduct; 3) is a sizeable company with substantial assets compared to 4) the smaller business owner accused of using a confusingly similar mark.”  2 J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 11:92 (5th ed. Westlaw 2023) (citing Leah Chan Grinvald, Shaming Trademark Bullies, 2011 Wisc. L. Rev. 625, 642 (2011). 

Greenerside alleged, among other things, that Door Dash engaged in “trademark bullying” because: 1) Door Dash previously opposed a “significant number of applications” on “dubious, weak, or exaggerated” grounds; 2) Door Dash frequently opposes applications at the Board; and 3) Greenerside is a small business that suffers harm through Door Dash’s activities. 

The Board has found that a trademark owner “seeking[ing] to protect its rights in its registered marks, and preclud[ing] the registration of what it believes to be a confusingly similar mark” does not rise to the level of unclean hands or “trademark bullying.”  Door Dash, Inc. v. Greenerside Holdings at 5 citing Time Warner Entm’t Co. v. Jones, Opp. No. 91112409, 2002 TTAB LEXIS 462, at *2 n. (TTAB 2002). 

In this case, Door Dash was simply seeking to protect its rights.  Both Door Dash and Greenerside provide or intend to provide delivery services.  The parties’ marks both include the term DOOR followed by a second term beginning with the letter “d.”  Therefore, it is understandable that Door Dash believes that a likelihood of confusion exists between its DOOR DASH mark and Greenerside’s mark. 

Because Greenerside did not adequately plead its affirmative defense of unclean hands, it was stricken from its Answer.  The Board appears to have implicitly recognized that Door Dash was merely enforcing its rights as provided by the Lanham Act. 

The cannabis industry is in its nascent stages.  As a result, many entities may not have the financial means of a well-established brand.  But that does not mean enforcing trademark rights against cannabis brands establishes a bully.  Instead, such enforcement may be exemplary of protecting a valuable brand.  That is perhaps why the Board deemed this case precedential.  So, cannabis companies should be wary of “blowing smoke” when making allegations before the Board. 

Trademark lawyers are often asked: “What’s the difference between a trademark and a service mark?” In general, a trademark refers to a brand name used in connection with goods, while a service mark is one that is used in connection with the provision of services.  The services must be provided for the benefit of someone other than the mark owner. But the Trademark Trial and Appeal Board (“TTAB”) ruled in a recent precedential decision that operating an online retail store under a particular brand name can qualify as use of a service mark, even where the owner only sells its own branded products via the online store. What separately registrable service(s) is the seller providing merely by selling its own products on its website? The TTAB’s decision seeks to answer that question.

In Blizzard Entertainment, Inc. v. Ava Labs, Inc., Opp. No. 91285851 (TTAB July 18, 2024),  opposer Blizzard Entertainment sought to prevent registration of applicant Ava Labs’ trademark application for BLIZZARD for various business services, asserting likelihood of confusion with Blizzard’s prior registrations for BLIZZARD and BLIZZARD ENTERTAINMENT for online retail store and mail order services. In response, Ava asserted a counterclaim for cancellation of Blizzard’s registrations on the basis of nonuse, arguing that Blizzard only ever sold its own products via its e-commerce website. Such use, Ava argued, does not constitute use of a service mark because services must be provided primarily for the benefit of others, and selling one’s own products primarily benefits the seller. The Board disagreed.

In reaching its conclusion, the Board noted that, in order to qualify as a service under U.S. trademark law, an activity must be real, it must be performed for the benefit of someone other than the seller, and it must be qualitatively different from anything necessarily done in connection with the sale of the seller’s goods (i.e., it cannot simply be ancillary to the sale of the products). With respect to the second prong, the Board added that the relevant question is who primarily benefits from the activity. The Board ultimately concluded that Blizzard’s provision of an e-commerce website primarily benefited consumers, even though Blizzard was only selling its own products on the site:

“[O]nline retail store and mail order activities featuring one’s own goods primarily benefit consumers in that the activity provides a central location to find, examine, and purchase various goods; and this is true even though the retailer derives the benefit of selling its own goods”

This ruling would appear to cut against the traditional wisdom that “[t]he sale of one’s own product does not constitute a ‘service’ within the meaning of the Lanham Act.” McCarthy on Trademarks and Unfair Competition § 19:89 (citing IdeasOne, Inc. v. Nationwide Better Health, Inc., 89 USPQ2d 1952 (TTAB 2009)). In other words, activities by a seller that are ancillary to the sale of goods (e.g. advertising one’s own products) have generally not been considered to be separately registrable services. Moreover, even assuming arguendo that providing an e-commerce site to sell one’s own products provides a benefit to the consumer, it is unclear from the Board’s decision how the benefit to the consumer is greater than the benefit to the seller, i.e. how providing an e-commerce site “primarily” benefits the consumer rather than the seller.

In any event, practitioners and brand owners should take this decision into consideration when determining how to best protect their brands. For example, if a maker of toy cars sells them under the hypothetical brand ABC, it would likely be advisable to register ABC as a trademark for “toy cars” in International Class 28. Following the Board’s Blizzard decision, if that same toy maker were to set up an e-commerce website to sell its ABC toy cars, the seller may consider separately registering ABC as a service mark for “online retail services featuring toy cars” in International Class 35. While it is debatable how much additional protection the Cl. 35 registration would actually provide, one could argue that an additional registration may increase the chances that a trademark examiner will cite the brand owner’s mark as a basis for refusing registration of a confusingly similar third-party mark, thereby potentially allowing the brand owner to avoid having to file an opposition. Moreover, trademark registrations are assets, and such assets of course affect valuations in the event of acquisitions, licensing agreements, and other corporate transactions.

This year’s Olympic Games have already been packed with compelling storylines.  These storylines include the somewhat controversial opening ceremony to Yusuf “hold my beer” Dikec winning hearts and the silver medal in pistol shooting, and Simone Biles clinching her tenth gold medal (with more possibly on the way).  Adding to the Olympic headlines, on August 4, USA’s Noah Lyles added to the Olympic headlines by edging past Kishane Thompson, from Jamaica, to win his first Olympic gold medal with a lifetime best of 9.784 seconds, just 0.005 seconds ahead of Thompson’s 9.789.  The result was not clear until nearly a full minute after crossing the finish line, as the competitors waited nervously for the photo finish details.

The photo finish finds its origins in horse racing.  Before the advent of photography, close races were judged by three stewards stationed at the finish line, often resulting in disputes and controversy.  As horse racing and betting became more popular in the early 20th century, the need for a more precise method to determine race outcomes grew.

The earliest known racetrack photo finish images were captured in 1890 by John Charles Hemment, a pioneer in action photography.  Hemment’s method involved a horse breaking a thin thread at the finish line, triggering the camera’s shutter.  This technique was far from perfect, as it often failed to capture the exact finish line moment and could not record the positions of other horses.

In the 1920s, motion picture cameras began to record races, but their low frame rates made it difficult to determine the exact moment horses crossed the finish line.  The breakthrough came in 1937 when Hollywood icon Bing Crosby opened the Del Mar Thoroughbred Club and enlisted Paramount Pictures engineer Lorenzo Del Riccio to develop a better solution.  Del Riccio’s circular flow camera, first used on Del Mar’s opening day, revolutionized finish line photography for horse racing and other sports.  His camera quickly became popular, with race tracks across the country eager to purchase it.

Del Riccio’s camera had a unique design featuring a thin, vertical slit that limited its field of vision to a four-inch slice.  Positioned above the track and aligned with the finish line, the camera recorded as strip film moved across the slit at the same speed as the horses, capturing them from nose to tail.  This continuous motion resulted in distorted horse lengths but accurately depicted the order of finishes.

Del Riccio set about to solve the problem through the use of a tapered or angular slit, known as the V-slit.  In March 1939, Del Riccio filed a patent application for this new camera.  The inventions associated with this new technology issued as U.S. Patent Nos.  2,320,350 and 2,382,617.  The ‘350 patent is directed to a camera (i.e., an apparatus claim), while the ‘617 patent is directed to a method of making a photographic record.

In the race to secure patent protection, apparatus claims and method claims vie for the gold, each excelling in distinct arenas to champion the inventor’s cause.  Apparatus claims, also known as device or product claims, focus on the tangible aspects of an invention.  These claims detail the specific parts and their arrangement within the device, highlighting the configuration and interaction of these components.  The scope of protection extends to any device featuring the claimed elements in the described way, ensuring that even if the apparatus is used differently, it can still infringe on the claim if it has the same structure.  For instance, the apparatus claims of the ’350 patent describe the specific parts and the structure of Del Riccio’s camera.  Thus, anyone who manufactures, imports, or sells a camera that reads on each element of the claim would have infringed the ‘350 patent.

On the other hand, method claims, also known as process claims, resemble a meticulously choreographed Olympic routine, describing a series of steps or actions performed to achieve a specific result.  These claims focus on the process rather than the physical components, outlining the individual steps required to perform a task or achieve an outcome.  The protection covers the specific method described, meaning that if someone uses the same process steps, even with different equipment, it could infringe on the method claim.  For example, in the ‘617 patent, the method involves positioning a camera aligned with the finish line, projecting contestant images onto a moving light-sensitive surface at the same speed, and confining the exposure to a narrow strip aligned with the finish line.  Thus, anyone using these same steps would infringe the ‘617 patent.  It’s important to note that a manufacturer of a product capable of performing these steps would not necessarily infringe the method.  However, infringement may occur if the manufacturer provides express instructions that induce a user to perform the method’s steps.

The key differences between apparatus and method claims lie in the nature of protection, the criteria for infringement, and their flexibility.  Apparatus claims protect the physical embodiment of an invention, with infringement occurring if someone makes, uses, sells, or imports a device that includes all the claimed features.  Conversely, method claims protect the steps or processes of making or using an invention, with infringement occurring if someone performs the claimed process, regardless of the equipment used.

Understanding these differences is crucial for inventors and businesses, as it aids in crafting robust patents that offer comprehensive protection for innovations, whether they are new devices or novel processes.  In the competitive arena of patent protection, asserting and/or obtaining an apparatus claim or a method claim can be the difference between a bronze medal and a photo-finish gold.

JC Zwisler, associate in Seyfarth’s Litigation department, will speak at the ABA Litigation Section’s webinar, “Protecting Cannabis: An In-Depth Discussion of Intellectual Property Protections of Cannabis,” on August 8. The program will discuss how to protect cannabis goods and services through existing and future IP rights in the US.

Click here for more information and to register.

Sarah Silverman and her fellow author plaintiffs are fighting a judge’s recent order requiring them to disclose the prompts and outputs they used in preparation for filing their class action lawsuit against ChatGPT owner OpenAI. The judge is giving OpenAI until July 24 to respond to the plaintiffs’ argument that the material should be shielded as work product.

The magistrate judge’s ruling is the latest in a series of setbacks suffered by the plaintiffs in Tremblay et al. v. OpenAI et al., who filed suit in the U.S. District Court for the Northern District of California just over a year ago against several entities associated with ChatGPT. As we have previously reported, the plaintiffs allege that OpenAI infringed their rights in copyright-protected content by using it as training material for ChatGPT. The court granted OpenAI’s motion to dismiss many of the plaintiffs’ claims, but gave the plaintiffs an opportunity to replead. The plaintiffs did so in March, and OpenAI has moved to dismiss that amended pleading.

The parties participated in a settlement conference in June, but did not settle. The latest motion to dismiss is still pending. Even so, discovery is proceeding in parallel.

OpenAI issued a request seeking access to all non-privileged documents and communications related to the plaintiffs’ pre-suit investigation, including OpenAI account information as well as prompts and outputs from pre-suit testing of ChatGPT. Not surprisingly, the plaintiffs objected on the basis that the material constitutes privileged work product.

The magistrate judge presiding over the case agreed that the material was indeed work product—but also found that the plaintiffs had waived protection by including certain of the test result outputs in their complaint. Specifically, plaintiffs attached summaries of their copyright-protected works to the pleading in order to illustrate their allegation that OpenAI must have used the original works as training material for the platform. The exhibits also includes specific examples of prompts used to generate those summaries.

According to OpenAI, the prompts included in the complaint were “preferred, cherry-picked results,” and OpenAI should be able to access the full threads of prompts and outputs that led to those examples. The court agreed, concluding that the plaintiffs had placed ChatGPT prompts and outputs at issue, and thus had waived work product protection over them. It rejected the plaintiffs’ argument that revealing all of the information requested, including account settings and negative test results (i.e., those unrelated to the examples highlighted in the complaint), would reveal their attorneys’ thought processes and interpretation of legal theories. The court held that “an evaluation of those account settings and negative test results is a necessary component of Defendants’ ability to understand Plaintiffs’ positive results and to fairly subject those results to meaningful scrutiny.”

Plaintiffs have now filed a motion in the district court seeking relief from the magistrate’s decision, and the court is allowing OpenAI to respond. Meanwhile, the court has set another settlement conference for September 13, 2024.