In the latest skirmish between Sarah Silverman and other authors against Chat GPT-maker OpenAI, OpenAI submitted a new decision from a California federal court in support of its attempt to dismiss the Silverman plaintiffs’ claims. According to OpenAI, that other court rejected theories and claims that are nearly identical to Silverman’s claims against OpenAI. If the court hearing Silverman’s claims agrees, copyright holders looking to sue AI companies in the future may find themselves facing long odds on certain claims.

The new California decision cited by OpenAI comes in the wake of a similar decision in a case involving an AI image generator. Like the court in that image-generator case, the new decision cited by OpenAI dismissed most of the plaintiffs’ copyright claims and other claims, although it did so with leave to amend all but one state-law negligence claim. The court in this new decision rejected as “nonsensical” the plaintiffs’ argument that large language models (or LLMs) “are themselves infringing derivative works,” holding that “[t]here is no way to understand the [LLMs] themselves as a recasting or adaptation of any of the plaintiffs’ books.” Similarly, the court rejected the notion that “every output of the [LLMs] is an infringing derivative work,” stating that “the complaint offers no allegation of the contents of any output, let alone of one that could be understood as recasting, transforming, or adapting the plaintiffs’ books. Without any plausible allegation of an infringing output, there can be no vicarious infringement.”

Continue Reading “The Plaintiffs Are Wrong”: OpenAI Submits New Authority in Attempt to Knock Out Sarah Silverman’s Claims

Thanksgiving is the start of the holiday season, a beloved time of the year where family and friends gather over delicious meals to share and create memories and to express love and gratitude. Thanksgiving also commences the annual Thanksgiving showdown, when silent (or not so silent) competitiveness emerges in the kitchen and beyond.

Activate: Feast Mode

The USPTO’s conduct sometimes suggests that Thanksgiving is, in fact, competitive and challenging. A USPTO examining attorney rejected an application for ULTIMATE THANKSGIVING CHALLENGE (Application No. 88445011) for being merely descriptive. The applicant, Food Network, intended to use the mark for a televised cooking competition where participants prepared Thanksgiving food. In an office action, the examining attorney wrote that “both the individual components and the composite result are descriptive of applicant’s services and do not create a unique, incongruous, or nondescriptive meaning in relation to the services. Together, the words ‘ULTIMATE THANKSGIVING CHALLENGE’ do not create a unique meaning, but a descriptive one. The words mean the best or most extreme Thanksgiving holiday competition.” Perhaps the examining attorney thought that a Thanksgiving cooking competition show was too similar to the annual family face off that happens in homes across America. Food Network abandoned the application, but The “Ultimate Thanksgiving Challenge” television show ran for two seasons.

Don’t make fun of the turkey, it’s been roasted enough today.

Most of us agree that the ultimate Thanksgiving challenge is surviving Thanksgiving dinner. Some of us want a reward for making it through. The USPTO says there is no need to state the obvious, however. The USPTO denied an application for THANKSGIVING FAMILY DINNER SURVIVOR (Application No. 88686100) for clothing products. The USPTO examining attorney refused the application because the attorney decided that the phrase is a frequently-used, humorous expression that merely conveys an informational message and, therefore, does not function as a trademark. Similarly, the USPTO refused an application for THANKSGIVING NAP SWEATER (Application No. 87664935). The USPTO examining attorney decided that the mark was a decorative slogan with little or no particular source-identifying significance. Simply put, eat hard and sleep harder, but we’re all Thanksgiving family dinner survivors and we don’t need a t-shirt or sweater to commemorate the experience.

Is it too soon to be asking about leftovers? Asking for a friend. 🐾

A trademark registration for TINY THANKSGIVING DAY DINNER (Registration No. 5060548) for pet food sits on the Trademark Electronic Search System as a reminder that while we conquer mountains of mashed potatoes, gobble down slices of turkey, and fantasize about our Thanksgiving nap, our pets are never too far away. Don’t let your furry friends feel neglected this Thanksgiving holiday, even the Ultimate Party Thanksgiving Organization, er, that is, the USPTO thinks they deserve some attention. Like many Thanksgiving diners, however, pets still have to battle on Thanksgiving: the USPTO did not approve the application until the applicant disclaimed the exclusive right to use “TINY” or “DINNER” other than as part of the entire phrase “TINY THANKSGIVING DAY DINNER.” Woof!

Final Feast

Sometimes the USPTO leaves applicants feeling thankful. Other times, the application process feels like a battle at the dinner table with your uncle. Accepted or rejected, trademark applications add flavor to all of our intellectual property feasts. Happy Thanksgiving, and may your trademark portfolio be as bountiful as your Thanksgiving dinner table!

In what appears to be a shift from prior decisions striking down portions of the federal Lanham Act on First Amendment grounds, the U.S. Supreme Court seems likely to rule against a trademark applicant seeking to register a mark commenting on former President Donald Trump.

As we wrote earlier this year, the Supreme Court granted cert to review Vidal v. Elster, which involves the U.S. Patent and Trademark Office’s (USPTO’s) denial of Steve Elster’s application to register the trademark TRUMP TOO SMALL for t-shirts. In refusing registration, the USPTO cited Section 2(c) of the Lanham Act, which prohibits the registration of marks that consist of or comprise a name, portrait, or signature identifying a particular living individual except when the individual has provided his or her written consent. Elster claims, however, that this section of the Lanham Act is unconstitutional because it violates his First Amendment right to free speech, i.e., his right to criticize a political figure.

This case is the third in a trio of cases pitting the Lanham Act against the First Amendment. The high court previously struck down provisions of the Lanham Act prohibiting registration of marks that are disparaging (Matal v. Tam) and marks that are immoral or scandalous (Iancu v. Brunetti). In the instant case, the Justices are considering whether the Lanham Act’s prohibition against registration of marks that identify a particular individual (where the individual’s consent is not of record) similarly runs afoul of the First Amendment. 

Based on the Justices’ remarks during oral argument on November 1, the Court appears poised to side with the USPTO and affirm the refusal of Elster’s trademark application. Of the justices who asked questions, each appeared skeptical that Elster’s First Amendment rights would be infringed by virtue of the USPTO denying his trademark application. For example, Justice Gorsuch referenced the “long historical tradition [of] … content-based restrictions” when a person’s name is involved. Justice Sotomayor was more direct: “The question is, is this an infringement on speech? And the answer is no. [Elster] can sell as many shirts with this saying, and the government’s not telling him he can’t use the phrase.”

In another notable exchange, Justice Kagan asked Elster’s counsel to give an example of a case “that would show that the government is prohibited from declining to subsidize expressive activity in a way that is not viewpoint-based.” When counsel could not come up with an example, Justice Kagan responded by identifying a number of decisions that have held that “as long as it’s not viewpoint-based, government can select, government can give the benefit to some and not the benefit to others.”

One of the key differences between this case and other recent trademark decisions involving the First Amendment, it seems, is that the prohibition in question (trademarks identifying a particular individual) is viewpoint neutral, whereas the prohibitions the Court previously struck down (disparaging, immoral, and scandalous trademarks) were by their nature not viewpoint neutral.

In a relatively scathing opinion finding the plaintiffs’ Complaint “defective in numerous respects,” a district court judge has thrown out most of the claims a group of artists has asserted against AI platforms that allegedly used the artists’ copyrighted works without permission. The order in Andersen et al. v. Stability AI Ltd. provides an important preview on courts’ tolerance for AI-related copyright lawsuits moving forward—including a similar class action filed by actor/comedian Sarah Silverman and other authors.

As we previously wrote, the Andersen case relates to “Stable Diffusion,” an AI platform that generates images in response to user prompts. According to Plaintiffs, Stable Diffusion scraped the internet to copy and store billions of copyrighted images without consent or licenses to train the programs.  (For another good summary of the case and the claims, check out this post from The Fashion Law).  

Continue Reading Some Stability For AI Defendants: Judge Dismisses All But One Claim in Andersen et. al., v. Stability AI LTD., et. al.


The Federal Circuit recently released an eye-catching opinion in Great Concepts, LLC v. Chutter, Inc., — F. 4th –, Case No. 2022-1212, 2023 WL 6854647 (Fed. Cir. Oct. 18, 2023).  The panel of three judges held, in a two-to-one decision, that the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board (“TTAB”) did not have the authority to cancel the registration of a mark made incontestable by way of a fraudulent declaration. This holding overturned longstanding Board precedent.


For those who are fans of history, in 1964 actor and former professional footballer Dan Tana opened his eponymous restaurant in West Hollywood, California under the mark DAN TANA’S. The restaurant has enjoyed tremendous popularity, both locally and in popular culture. 

Georgia-based Great Concepts, LLC obtained a federal registration for the mark  DANTANNA’S for restaurant services in 2005. When Mr. Tana sought to register DAN TANA’S with the USPTO the following year, his application was blocked by Great Concepts’ registration. Mr. Tana petitioned to cancel the registration based on likelihood of confusion with his prior-used mark, and the parties then sparred in a civil suit in Georgia until Great Concepts won on summary judgment in 2009, which Mr. Tana appealed to the Eleventh Circuit. Mr. Tana lost the appeal and his petition to cancel was subsequently dismissed.

In 2010, Great Concepts’ then-attorney filed a combined Section 8 and 15 declaration of use and incontestability to support its registration, declaring that the mark was still in use and that “there is no proceeding involving said rights pending and not disposed of either in the [USPTO] or in the courts.” The latter statement was demonstrably false: both the cancellation proceeding in the USPTO and the Eleventh Circuit appeal were still pending at the time of the filing. But the USPTO accepted the filing and granted Great Concepts’ registration incontestable status, which serves as conclusive evidence of validity of the mark and Great Concepts’ exclusive rights in it.

Five years later, in 2015, Chutter (which had since acquired rights to Mr. Tana’s registration) filed a second petition to cancel Great Concepts’ registration. This time, the petition was based on the fraudulent 2010 filing made to support the registration.

Great Concepts appealed to the Federal Circuit.


The Federal Circuit squarely addressed the question of whether the filing of a false Section 15 declaration provided a valid ground for cancellation. The court answered no.

First, the court clarified that, although Great Concepts’ attorney had filed a combined declaration of use, only the Section 15 portion had been fraudulent. The Section 8 portion was untainted. The court therefore considered the appeal in light of Section 14, which states:

A petition to cancel a registration of a mark, … may … be filed as follows by any person who believes that he is or will be damaged … by the registration of a mark on the principal register …

(3) At any time if … its registration was obtained fraudulently …. 15 U.S.C. § 1064 (emphasis added).

Applying principles of statutory construction, the majority reasoned that, although incontestability status had been obtained fraudulently, there had been no fraud committed in connection with “obtaining” the registration itself. Section 14 lists several bases on which a registered mark may be canceled, but makes no mention of fraud committed in connection with an incontestability declaration which, according the majority, is unrelated to “obtaining” a registration. Thus, the only statutory remedy for fraudulently obtained incontestable status is the loss of that incontestable status. Therefore, Section 14 was not a valid basis for cancelling the DANTANNA’S registration.

Not to be lost are several of the dissent’s arguments that may find more support in future proceedings. First, the dissent notes that the filing was a combined Section 8 and 15 declaration. The combined filing includes a single signature attesting to all of the requirements of both Section 8 and Section 15. As a result, because at least one of the representations was made fraudulently, the declaration as a whole could be considered fraudulent. The dissent also argued, in part, that just because litigants had limited grounds for petitioning to cancel or addressing fraudulent activity, that does not mean the agency (aka the USPTO) was so limited.


Although the dissent was overruled in this case, the court noted that the USPTO is still free to fashion sanctions to address fraudulent conduct. We will wait to see whether the removal of one remedy to address fraud leads the USPTO to find alternative, and perhaps more personal, remedies. In an era where the USPTO is focusing its efforts in addressing misconduct, the Federal Circuit may have inadvertently encouraged new forms of sanctions.

As our colleagues reported in this Seyfarth Shaw Legal Update, President Biden signed a comprehensive Executive Order addressing AI regulation across a wide range of industries and issues. Intellectual property is a key focus. The Order calls on the U.S. Copyright Office and U.S. Patent and Trademark Office to provide guidance on IP risks and related regulation to address emerging issues related to AI.

Continue Reading White House Directs Copyright Office and USPTO to Provide Guidance on AI-Related Issues

Halloween is a time for us to don a different persona to express our creative side or simply for a bit of fun. People of all ages pick costumes to transform into characters, creatures, or inanimate objects. Whether it’s dressing up as a superhero, a classic movie character, or a spooky monster, costumes play a significant role in the festivities. But not all costumes are created equal, and every year there are numerous different knock-off costumes that mimic popular culture icons.

Knock-off costumes are costumes that closely mimic the appearance of well-known characters but are not produced or licensed by the copyright owners or trademark holders. These costumes often imitate the exact look, design, and features of popular characters without permission.

Which leads us to this year’s Guess the Inspiration. Each of these will test your powers of observation and knowledge of popular culture.

To start it off, who is this groovy international man of mystery?  Yeah baby.

No Halloween would be complete without a deluxe evil madame with a non-cat fur coat:

For those of you who love your tots (tater tots) we have a dynamite costume for consideration:

This next one threw me for a loop when I was told it was a culture reference, as it looks like standard gear for fixing toilets to me:

These are just some of the myriad of different knock-offs available this Halloween season. Knock-off costumes are difficult for legitimate rights owners to police. Under US law, costumes are not are generally protected by copyrights except in very limited circumstances. Purveyors of knock-off costumes are also careful to avoid using recognized trademarks in connection with the sale of the knock-offs, making it unlikely the buyer was confused by the purchase.

The examples shown above illustrate this difficulty faced by owners of iconic characters. Each of the costumes and associated packaging exemplified above is careful not to use the trademarks associated with the represented culture icons. Additionally, the knock-offs are composed of elements that are not protectible under copyright law. This allows these knock-offs to be sold without infringing any legal rights. The result is that Halloween is rife with knock-offs that seem to increase every year.

When jack-o’-lanterns begin to glow and youngsters chart out their candy-collecting routes, an often-overlooked trend takes over every October: the Halloween commercial extravaganza! Beneath the shadows of ghouls and goblins, a profitable domain emerges for candy makers and costume creators. Yet, it’s not just about commerce; the essence of innovation is very much alive in this festive spree. Venturing into the patent archives reveals a plethora of Halloween-inspired inventions, highlighting the seamless blend of creativity and business during this eerie season.

Today we descend into the cryptic catacombs of patent drafting to exhume a narrative of innovation entangled in a web of woes. Our pilgrimage unveils the peculiar tale of U.S. Patent Application No. 2014/0183326 (the ’326 application) dubbed “Halloween Pumpkin/Jack-O-Lantern Display Stand,” which faded into the abyss following a sinister scrimmage with the USPTO. The ’326 application is directed to a jack-o-lantern display stand that springs to life when approached. A ghostly gesture or a chilling chant triggers a suite of spooky surprises: a speaker, motor, and eerie embers that illuminate the jack-o-lantern, set it a-spin, and serenade the night with spine-chilling sounds. This spectral stand seemed like a promising potion for a hi-tech Halloween.

The tale takes a turn to the tragic as the ’326 application found itself abandoned in the cold crypt of USPTO after receiving only one Office Action. It’s a sorrowful saga, especially because the examiner had deemed that claims 2-5, 7, and 8 bear the badge of allowable subject matter. Had the inventor infused the subject matter from one or more of these claims into the independent claims, the patent might have emerged from the murky mire. Alas, the allowable claims were not the only asset left lurking in the shadows; a review of the claims unveils some self-imposed narrowing. It seemed the inventor was hesitant to haul in a hefty hoard of Halloween treats.

For instance, claim 1 recites a “Halloween Pumpkin/jack-o-lantern stand for to display a Halloween pumpkin or jack-o-lantern for viewing.” The term “Halloween Pumpkin/jack-o-lantern stand” here is redundant; the inventor could have simply claimed “a stand.” While the preamble of the claim often wields wispy weight, there’s no need to shackle oneself to the specifics of the “stand” unless beckoned by the ghostly grip of a prior art rejection.

Moreover, claim 1 recites “a motor means” and a “platform means,” but the “means” murmurs more mischief than magic, tempting the notion that these elements echo a means+function malaise. While such spectral suspicions could be seen as baseless, the murmur of “means” can manifest more tricks than treats. The inventor could have escaped this eerie entanglement by invoking “a motor” and “a platform.” A deeper delve into the diabolical domain of means+function language is beyond the scope of this blog as that tale can be too spooky our readers.

The tale’s tragic tint further unfurls with the revelation that the application, though adorned with 14 claims, had room for up to 20 at no extra exorcism expense. Six claims found themselves forsaken, akin to ghostly whispers in the wind, a lament of lost lore and potential protection.

Furthermore, the claims cast a cloak of ambiguity. For instance, claim 1 pronounces “a power source that responds to [an] activator and implements the at least one function.” The specification lifts the veil slightly, revealing the power source as either a battery or an electrical outlet. The “function” is hinted to animate the jack-o-lantern with a ghostly grin or a skeletal sway as a passerby ventures near. Strikingly, the function remains an enigmatic entity within the claims. Regardless, the sorcery of how a power source would implement a function remains shrouded in mystery. This phraseology also conjures a crafty corridor for infringers, who could conjure a defense that their power sources merely muster might, and nothing more.

As you embark on your own patent pilgrimage, let the lament of the ’326 application echo as a eerie epitaph: shun the shackles of superfluous stipulations and structure your claims with spectral strategy. Also, when you stumble upon a lackluster jack-o-lantern languishing like a lost soul, let the ’326 application resonate as a revenant reminder of the realms that could have been reached.

The latest briefing in Silverman v. OpenAI reads like that old REM song, “The End of the World as We Know It.” OpenAI has responded to the Plaintiffs’ claims that OpenAI’s popular platform ChatGPT has infringed their copyright with disaster-laden references to Michael Jordan and “the future of artificial intelligence.”

As we’ve previously written, actor/comedian Sarah Silverman and author Paul Tremblay are among a number of plaintiffs who have bought lawsuits alleging that use of their creative content to train large language model (“LLM”) platforms like ChatGPT violates the U.S. Copyright Act.

OpenAI moved to dismiss the majority of claims, arguing, among other things, that ChatGPT’s output cannot be infringing, because it is not “substantially similar” to Plaintiffs’ works. Plaintiffs hit back, noting that OpenAI hasn’t moved to dismiss the “core claim” in the lawsuits—direct infringement by OpenAI—and arguing that “substantial similarity” is irrelevant because OpenAI copied their works wholesale, without permission, in order to make ChatGPT work. Plaintiffs further argued that the LLMs incorporate their works, and thus are infringing “derivative works.” Because ChatGPT’s answers in response to user prompts come from those LLMs, Plaintiffs contended that ChatGPT’s output must necessarily be infringing too.

OpenAI has responded to Plaintiffs’ arguments with a doomsday scenario, arguing that “the future of artificial intelligence may turn” on how the court ultimately decides this case. In its reply brief, OpenAI contended that, under Plaintiffs’ theory, every single answer given by ChatGPT to a human user is infringing. For example, OpenAI argued, if a user asks ChatGPT who the greatest basketball player of all time is and ChatGPT responds “Michael Jordan,” the response would constitute infringement even if His Airness was never referenced in plaintiff Sarah Silverman’s book. OpenAI urged the court to reject this approach, and to focus on the fact that the plaintiffs cannot point to any ChatGPT output in response to individual user prompts that is substantially similar to Plaintiffs’ works. Indeed, OpenAI argued, Plaintiffs’ theory flies in the face of well-established copyright law, and the manner in which courts evaluate copyright claims.

OpenAI used another illustrative example, this time of a film student who records a copy of the film Citizen Kane to study its cinematography. The student watches the film, takes notes, and creates their own film as a tribute to Orson Welles. The fact that the student “directly copied” the original broadcast has absolutely no bearing on the question of whether the student’s film is ultimately “substantially similar” to Citizen Kane, OpenAI posited.

According to OpenAI, Plaintiffs’ own pleadings doom their claims, both as to copyright infringement and as to violation of Section 1202(b) of the Digital Millennium Copyright Act, which prohibits the removal of copyright information to conceal infringement. As OpenAI pointed out, Plaintiffs themselves admit that ChatGPT outputs are not verbatim copies of the original books used for training—and often do not even slightly resemble the originals. Thus, they cannot be infringing. Further, OpenAI contended that Plaintiffs “ignore that the ChatGPT outputs they attached to their Complaints include the very [copyright information] they allege OpenAI ‘removed,’” a fatal blow to the Section 1202(b) claim.

Ultimately, it seems that OpenAI is taking the position that Plaintiffs are trying to shoehorn their claims into a legal framework that does not support them. In OpenAI’s view, adoption of their position would both run contrary to longstanding legal precedent and also ring a death knell for LLMs. These platforms are not trying to supplant the original authors in the marketplace, OpenAI argues; they are simply using material available for public consumption in order to “understand human knowledge.”

It will be interesting to see how the court views these issues in the motion hearing noticed for December 7, 2023.

Wednesday, November 15, 2023
11:00 a.m. to 12:00 p.m. Eastern
10:00 a.m. to 11:00 a.m. Central
9:00 a.m. to 10:00 a.m. Mountain
8:00 a.m. to 9:00 a.m. Pacific

About the Program

On Wednesday, November 15, from 11 am to 12 pm Eastern, Seyfarth and Lexology will host a Masterclass webinar titled, “AI Gone Awry: Lessons from an AI Fiasco,” and presented by Seyfarth attorneys Owen Wolfe, Eddy Salcedo, and Jamie Anderson.

With the recent New York federal court case involving the use of ChatGPT and the AI-generated court decision citations, it is important that lawyers learn how to use AI properly as part of a legal practice and understand its strengths and weaknesses. During this webinar, the attorneys will discuss the court case and the impact of AI on the legal practice, including:

  • What went wrong for the attorneys involved in the New York case
  • Non-AI related lessons from the New York case
  • Impact of the New York case on other court cases and court rules
  • What leading AI programs currently can and cannot do as it relates to legal practice
  • Best practices for use of AI in both litigation and non-litigation settings
  • The future of AI in the legal practice