As we’ve previously written, the rise of generative AI has led to a spate of copyright suits across the country. One major target of these suits has been OpenAI. Actor/comedian Sarah Silverman and author Paul Tremblay are among the plaintiffs to bring suit in California, while authors George R.R. Martin, John Grisham, and others have filed in New York. The lawsuits allege that OpenAI used the plaintiffs’ creative content without permission to train OpenAI’s generative AI tool in violation of the U.S. Copyright Act. OpenAI moved to dismiss the majority of claims in the Silverman and Tremblay cases on several bases: (1) the Copyright Act does not protect ideas, facts, or language; (2) the plaintiffs cannot show that outputs from OpenAI’s large language model (“LLM”) tool are substantially similar to the original content used to train the tool; and (3) any use of copyright-protected content by OpenAI’s tool constitutes fair use, and thus is immune to liability under the Act. Yesterday, Plaintiffs hit back, noting that OpenAI hasn’t moved to dismiss the “core claim” in the lawsuits—direct infringement.

Continue Reading Famous Authors Clap Back at OpenAI’s Attempt to Dismiss Claims Regarding Unauthorized Use of Content for Training LLM Models

Seyfarth has been recognized in World Intellectual Property Review’s inaugural rankings of the leading USA trademark firms and lawyers. WIPR cited Seyfarth as “recommended” for its Non-Contentious Trademark and “notable” for its Contentious Trademark work. Individually, Ken Wilton was “recommended” for his Contentious Trademark work. WIPR bases its rankings on “research that included market analysis, reviews of submissions, and interviews with firms from coast-to-coast to highlight law firms and lawyers at the forefront of their industry.”

Pat Muffo, Partner in Seyfarth’s Intellectual Property practice presented the “AI for Patent Attorneys: Opportunities and Challenges” session as part of myLawCLE’s “AI for Lawyers: A practical guide to generative AI, copyright, privacy, and more” webinar series. The webinar session is available on demand on Thursday, August 31, 2023 through the myLawCLE website.

Artificial intelligence has become the latest tool in the legal industry. From ChatGPT and beyond, lawyers have begun using AI to improve efficiency and reduce labor costs associated with simple tasks that could be better performed by a computer. But like any technology, AI has introduced several challenges that lawyers must navigate in the proper way. Several judges have issued court orders in response to clumsy litigants relying on AI without confirming the accuracy of its outputs. Lawyers must also learn the art of prompting AI tools to avoid a “garbage in, garbage out” scenario. This webinar discussed the challenges and opportunities of using AI in the legal industry and advised attendees on how to implement these tools in their daily practice.

Click here to view the on-demand webinar free of charge by using the following code: SeyfarthCLE23.

Last month, Congress was essentially “abducted” by the testimony of Air Force veteran David Grusch. He boldly asserted that the government is playing a galactic game of hide and seek with unidentified aerial phenomenon (UAP) (or UFO) technology. Grusch further claimed that the U.S. government has a secretive crash retrieval program and suggested that the U.S. has obtained bodies of extraterrestrial origin.

While many have met his claims with skepticism, others argue that this could be just a glimpse into the earth-shattering revelation that we are not the sole inhabitants of the universe. Grusch’s bold revelations have ignited speculation that governments worldwide, alongside contractors, might be reverse-engineering UAP technologies for defense. This raises the question: Are we on the brink of a UAP technological arms race?

Could patent applications serve as a tangible avenue for identifying ET’s blueprints?

Continue Reading Unraveling the UAP Enigma: Are Patents the Gateway to Alien Tech?

The Federal Circuit partially refuted the long held assumption that the trademark applicant has the burden of proving third party marks were in use when determining the strength of the applicant mark. The panel led by Judge Dyk found that when determining the conceptual strength of trademarks, “absent proof of non-use [of registered marks], use could be assumed”, at least where the registered mark was identical to the opposer’s asserted rights. 

Flex Ltd. had filed an opposition based on its rights in certain FLEX marks against an application owned by Spireon, Inc. seeking registration of the mark FI FLEX.  Spireon sought to introduce at least 30 other trademarks, including registered trademarks, that used some variation of “flex” in order to prove that the word “flex” was not inherently strong.  In its analysis of the commercial strength of Spireon’s mark, the Trademark Trial and Appeal Board did not address the third-party registrations for marks identical to the rights claimed by Flex Ltd. claiming identical goods for which no evidence of use had been provided by applicant. 

Reviewing the Board’s failure to consider the certain registrations for identical marks for identical goods, the Federal Circuit acknowledged the court had previously assumed that when analyzing commercial strength, the burden rested with the applicant to establish that prior registrations were in use; absent evidence of use, the third party registrations did not factor into the commercial strength analysis.  After reaffirming applicant’s burden of introducing evidence of relevant registrations, the court then shifted the burden to the opposer to show that the marks claimed by the third party registrations were not in use.  The court reasoned that placing the burden on the applicant would allow the opposer “to dismiss the commercial significance of previously registered identical marks for identical goods where opposer’s own mark should perhaps have not been granted registration in the first place.”  On remand, the court instructed that Flex Ltd. should be given the opportunity to show non-use based on the court’s “clarification” set forth in its opinion.

The Federal Circuit sought to minimize the breadth of the ruling by limiting the holding to only the specific situation before it: identical marks for identical goods and services.  However, it is difficult to see how this would apply only to exact marks and not to potentially confusing similar marks.  Expanding on the court’s explanation shifting the burden of non-use to opposer to prevent automatically discounting marks that could have impacted opposer’s ability to register its marks, the same reasoning should apply to prior registrations that were avoided through a consent agreement or by carefully modification of goods and services; both of which directly bear on the commercial strength of opposer’s mark. It then only takes a small mental step to treating all potentially confusingly similar marks the same as opposer could have proactively taken steps filing its applications to avoid prior registrations, which also would have a direct bearing on the commercial strength of the marks.

Regardless of where the distinguishing line is finally drawn by the court, this decision ultimately raises the cost and effort required by an opposer to prove the strength of its mark.  The challenge of proving a negative, namely that a registered mark is not in use, now rests squarely with the opposer.  As there is no uniform requirement for using a mark in commerce, proving non-use will require more than simply showing, e.g., that there is no easily identifiable use on online. Rather, meeting this threshold will likely require direct evidence from each owner of the registered marks concerning the marks continued use in commerce.

The practical effect of shifting the burden to opposer may also have only limited impact on applicant’s trial strategy.  As applicant retains the burden of introducing prior registrations, opposer’s burden to prove non-use of the marks claimed in those registrations does not arise until after applicant’s trial briefing and applicant will not be able to react to responsive non-use evidence submitted by opposer.  Similar to before to the court’s decision, any evidence of actual use of the relevant marks will still have to be submitted in applicant’s trial period.  The shifted burden therefore will likely only be significant in cases where the applicant does not have compelling evidence of use and must rely on opposer’s inability to prove non‑use.

The true impact of the Federal Circuit’s decision will not be felt until the boundaries of the shifted burden on submitted registrations are established. In the meantime, Opposer should be prepared for increased costs and effort to contest all registrations that could impact the commercial strength of there their asserted rights; while the Federal Circuit’s decision is limited in scope, the Board could following the reason to apply a similar burden for all registrations introduced by applicants.  At the same time, applicants should continue to introduce their evidence of use of marks claimed by key registrations or they will miss their opportunity to do so.

In what appears to be the first court opinion to weigh in on the copyrightability of AI-generated art, the District of D.C. has blessed the Copyright Office’s position to date: only works created by humans deserve protection under the U.S. Copyright Act. Thaler v. Perlumtter, Case No. 22-cv-1564 (D.D.C. Aug. 18, 2023).

As we discussed in a prior post, The Copyright Office issued guidance earlier this year in connection with attempted registration of a comic book entitled “Zarya of the Dawn.” Using a legal framework established by the 1884 U.S. Supreme Court case Burrow-Giles Lithographic Co. v. Sarony, the office refused registration of the portions of the comic book that were purely generated by AI. Unlike the creative choices a photographer made in Burrow-Giles, the Copyright Office concluded, generative AI is based purely on machine-generated outputs that are not controlled by the human user.

Continue Reading No Human, No Way: D.C. Federal Court Denies Copyright Protection for AI-Generated Art

The deal market reached historic levels in recent years, with record-setting merger and acquisition activity in 2021. Markets have since cooled, with capital becoming harder to find. But any company preparing to sell within the next five years should consider the more common IP issues that arise during the legal due diligence process.

IP Ownership

Nearly all purchase agreements require the seller to warrant that it owns or licenses the intellectual property necessary for operation of the business. In most cases, this can be broken down between two central areas – technology and branding.

Technology is often protected through patents or trade secrets. Of course, not every company is “tech-heavy,” and the importance of tech-related IP varies based on the nature of the company being sold. But quite often, a company will tout its innovation when selling, but during the due diligence process, it is revealed that the company lacks adequate protection for that innovation. A prudent IP strategy would therefore consider patent protection for more physical innovations and trade secret or copyright protection for software.   

Branding is protected by either registered or common law trademarks. Here, companies should consider which brands are most significant and file for registration of the trademarks relating to those brands. This might include brand names, product line names, style names, or even unique packaging or product design.


Few investors want to inherit a lawsuit or a threatened lawsuit. A purchase agreement will therefore require that a company list any existing or threatened lawsuits within a certain period, typically within the past three to five years. Here, too, not all lawsuits are created equal. A settled “patent troll” lawsuit is typically not the end of the world and is very common for any company in the middle market or larger. On the other hand, lawsuits directed at the core technology of the business will almost assuredly prevent a deal from going through.


A buyer’s legal counsel will review every material contract of a company and look for issues that may occur after close. In the IP context, this involves a review of any contract that grants or receives a license to intellectual property.

One common issue is whether an outbound license effectively grants ownership of a company’s intellectual property without the company realizing it, for example, when an outbound license is exclusive. Exclusive licenses should be avoided other than for significant partnerships that are akin to a joint venture. Licensing issues can also occur when a software company develops software for a client but fails to retain ownership of the company’s background IP. Customer agreements should therefore include a clause that reserves ownership of any IP that may also be used for another customer down the road.

Employee/Contractor Ownership

Companies should review employment agreements to ensure the agreement has a present tense assignment of intellectual property. Agreements that state the employee “will assign” their inventions, or merely that the company owns the inventions, are not present tense assignments and will only require the employee to assign the IP at a later date. Employees come and go, and often are not cooperative once they “go”.

Another question that will be asked: have independent contractors developed innovations or software for the company? With few exceptions, anything created by a contractor is not owned by the company absent a written agreement. It is therefore imperative to properly “paper” the IP ownership chain of title when development has been performed by anyone other than the employees of the company.

The U.S. Supreme Court’s end-of-term decision in Abitron v. Hetronic seems to have created more questions than answers about U.S. brand owners’ ability to leverage the federal Lanham Act in global trademark disputes. In the few weeks since the Court issued its opinion, parties and courts alike are already struggling with exactly how to apply it.

Tenth Circuit Prompts Question As to Statute’s Reach

The Hetronic case originated in the Tenth Circuit. Oklahoma-based Hetronic, a manufacturer of remote controls for construction equipment, sued its former EU distributor for infringing trademarks and trade dress associated with authentic Hetronic products. A jury awarded Hetronic more than $115 million in damages, $96 million of which related to Lanham Act violations. The district court then granted Hetronic a worldwide injunction against defendant Abitron. Abitron appealed, arguing that the award was improper because 97 percent of the sales at issue occurred abroad. The Tenth Circuit tailored the injunction to apply only to markets where Hetronic was actually selling products, but upheld the damage award, reasoning that even activity occurring abroad had a “substantial effect” on U.S. commerce.

Continue Reading Courts and Brand Owners Struggling With SCOTUS Decision Limiting Ability to Police Against Foreign Trademark Infringement