Intellectual Property

The Precarious Issue of Legally Creating Mashups Under the U.S. Patent System

November 24, 2025
Entertainment Law, Intellectual Property, Patents

McKenzie Alders, JLST Staffer

Ever wondered how your favorite DJs can legally incorporate those familiar beats and 2010 tunes into their own, new mashups? Apparently, the answer is not actually all that clear.

Copyright protection under federal law automatically applies to creative work once the work is fixed to something tangible.[1] Copyright law provides two protections for music: musical compositions and the recordings of those compositions.[2] Generally, this copyright grants the creator of the work an exclusive right to sell, make copies, and publicly perform the work for the life of the creator plus an additional 70 years.[3] Perhaps the best route for those who wish to use snippets of others’ works to create something uniquely their own is to obtain a license from each artist whose work they plan to use.[4] However, the licensing process is time-consuming, and, particularly for artists who will be using many short snippets of songs, this would be extremely expensive.[5] While this expense might be bearable by those who are at the top of the industry, it could have the effect of pricing out those hobby DJs or new talent looking to make their own name in the profession.

Thus, the question is raised: in lieu of obtaining a license, what options exist for those who wish to mash up the music of others? Historically, there have been two defenses available to those who would use small samples of another’s copyrighted material: de minimis and Fair Use.

 

Circuit Split Over the Use of the De Minimis Use Defense

In Bridgeport Music, Inc. v. Dimension Films, the Sixth Circuit held that, “A sound recording owner has the exclusive right to ‘sample’ [their] own recording . . . . Get a license or do not sample. We do not see this as stifling creativity in any significant way.”[6] In Bridgeport, various record companies brought copyright infringement claims against No Limit Films for their use of a sample from a composition and sound recording in a rap song, which was included in one of their movies.[7] The district court held that the infringement claim was de minimis and not actionable.[8] In reversing the district court’s holding in this case, the Sixth Circuit not only held that sampling was per se not permitted, but they made this holding extremely broad by doing so in a case where it had initially been held that the infringement claim was de minimis. Hence, at least in the Sixth Circuit, there is no defense to copyright infringement that the size of the sample was de minimis, and as such, a license is required to create a mashup.

In contrast, in Newton v. Diamond, the Ninth Circuit held that, after considering the facts and circumstances, the sampled portion of the composition was not a “quantitatively or qualitatively significant portion of the composition as a whole.”[9] Here, the copyright infringement claim arose out of the use of the recording of a live performance of a flutist that was then used in the Beastie Boys song “Pass the Mic.”[10] The Beastie Boys obtained a license to use the sound recording that was sampled, but not the underlying composition.[11] Thus, a claim for copyright infringement was brought due to the use of the underlying composition.[12] Quantitatively, the allegedly infringed upon sample represented six seconds or two percent of a four and a half minute recording, and the Ninth Circuit found that qualitatively the section of the work was no more significant than any other section.[13]

 

Since Newton, the Ninth Circuit has only made clearer its opposition to the holding in Bridgeport. In VMG Salsoul v. Ciccone, the Ninth Circuit explicitly disagreed with the Sixth Circuit by stating, “Congress did not eliminate the de minimis exception to claims alleging infringement of a sound recording.”[14] In VMG Salsoul, a claim of copyright infringement was brought against Madonna for the use of a portion of the song, Love Break, in her song Vogue.[15] The Ninth Circuit court held that, as a matter of law, “a general audience would not recognize the brief snippet in Vogue as originating from Love Break” and so any copying that was de minimis and did not amount to copyright infringement.[16] Therefore, the Ninth Circuit chose to preserve the de minimis defense that the Sixth Circuit had dismissed.

As a consequence of this circuit split, it is very hard to predict how a court will actually apply copyright law and the de minimis use defense to those who would create mashups without a use license for each of the songs that they choose to sample. Practically, in Sixth Circuit jurisdictional areas, sampling without a license should not be done at all. While the Ninth Circuit previously permitted sampling without a license under de minimis use, without a categorical rule, the application to the facts of any specific case makes it difficult to predict what the courts would rule.

 

Fair Use Defense

The fair use protections found in U.S.C. § 107 provide another avenue for artists looking to utilize another’s work. If a sample is deemed to be a fair use of another’s work, it is not considered copyright infringement.[17] Courts consider application of the U.S. Code Fair Use protection on a case by case basis, and the analysis utilizes four statutory factors: (1) the purpose and character of the of the use, focusing on “to what extent the new work is transformative” because it gives the original work something new; (2) “the nature of the copyrighted work”; (3) “whether ‘the amount and substantiality of the portion used in relation to the copyrights work as a whole’ are reasonable in relation to the copyright’s purpose”; (4) “the effect of the use upon the potential market for or value of the copyrighted work.”[18] In Campbell v. Acuff-Rose Music, Inc., the Supreme Court held that a commercial parody, essentially transforming another person’s work but maintaining the underpinnings of it so the original work remains recognizable for comedic purposes, can be considered Fair Use under the meaning of Section 107.[19]

In Campbell, the Court found that parodies utilize the underlying work to transform it into a meaningful comment about that work, creating an entirely new work in the process.[20] Addressing the second factor, the Court found that parodies almost always use publicly known works that are copyrighted.[21] The third factor was resolved in favor of Fair Use, because in this instance, the final product was distinctive and its lyrics had greatly departed from the original work.[22] Finally, the fourth factor was also resolved in favor of the parody creators, with the Court finding that there would likely be no significant market harm from the creation of this particular parody for the underlying copyrighted work.[23]

Theoretically, under the Campbell decision Fair Use doctrine could apply to protect those that mash up other artists’ work because—like a parody, their use of the copyrighted musical samples transforms them into something new and creative—is insubstantial in relation to the work as a whole and is unlikely to affect the market for the copyrighted work. It appears that, at least at the circuit court level, this defense has not been the basis for any decision. In district court, however, Campbell’s four-factor test was applied in Estate of James Oscar Smith v. Cash Money Records, Inc., et al., and the court held that rearranging and altering the message of the underlying copyrighted work was transformative because the purpose of creating the new song was markedly different from the purpose of creating the underlying work.[24]

This would seem to suggest that Fair Use can be a defense for mashup artists so long as the purpose in creating the DJ mashup was markedly different than that of the underlying song. However, given the fact that mashups generally directly take a clip from the underlying work rather than re-arranging the work to truly transform it, it seems like a Court would have to expand the breadth of the current law to find that such sampling qualifies as Fair Use under Campbell. As such, the actual outcome of such an argument is difficult to predict.

 

Conclusion

The state of copyright law as it relates to the sampling of short clips of copyrighted music in DJ booth mashups is anything but clear. Given the circuit split that exists on the availability of the De Minimis Use defense and the difficulty and unpredictability of the Fair Use defense, it seems that the best route of action for artists who seek to use copyrighted material is to obtain a license for both the composition and the right to the recording. Despite the need for licensing being costly and time-consuming, this route is likely cheaper than the alternative: battling it out with record companies and other owners of the originally copyrighted work in court.

 

Notes

[1] What Musicians Should Know About Copyright, U.S. Copyright Off. (last visited Nov. 9, 2025), https://www.copyright.gov/engage/musicians/.

[2] Id.

[3] How Long Does Copyright Protection Last?, U.S. Copyright Off. (last visited Nov. 9, 2025), https://www.copyright.gov/help/faq/faq-duration.html.

[4] See The Legal States of Mashup Music, OG+S (June 18, 2019), https://ogs.law/copyright/mashup-is-it-legal/ (discussing how mashup artists could obtain a license for each source of copyrighted material that they clip).

[5] Id.

[6] Bridgeport Music, Inc. v. Dimension Films, 410 F.3d 792, 801 (6th Cir. 2005).

[7] Id. at 795–96.

[8] Id. at 797.

[9] Newton v. Diamond, 388 F.3d 1189, 1195 (9th Cir. 2004).

[10] Id. at 1192.

[11] Id. at 1193.

[12] Id.

[13] Id. at 1196.

[14] VMG Salsoul, LLC v. Ciccone, 824 F.3d 871 (9th Cir. 2016).

[15] Id. at 875.

[16] Id. at 874.

[17] Can I Use Someone Else’s Work? Can Someone Else Use Mine?, U.S. Copyright Off. (last visited Nov. 11, 2025), https://www.copyright.gov/help/faq/faq-fairuse.html.

[18] Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 579, 585, 586, 590 (1994) (finding that a parody could qualify for the Fair Use defense and remanding for further consideration to the lower court).

[19] Id. at 594.

[20] Id. at 579.

[21] Id. at 586.

[22] Id. at 588–59.

[23] Id. at 591.

[24] Case Summary Estate of James Oscar Smith v. Cash Money Records, Inc., et al., U.S. Copyright Off. Fair Use Index, https://www.copyright.gov/fair-use/summaries/estate-of-james-oscar-smith-cash-money-records-no.1-14-cv-02703-2017.pdf (last visited Nov. 9, 2025).

Trump’s Shortsighted Proposal Would Shatter the Patent System

November 17, 2025
Administrative Law, Intellectual Property, Patents

Charlotte Lucas, JLST Staffer

The overall objectives of the U.S. patent system are to foster innovation, maintain inclusivity and fairness to all potential patent applicants, and achieve overall financial balance.[1] A patent, because it grants the patent holder a temporary monopoly of their invention, inherently has costs and benefits to society. Patent holders are able to face less competition for their product and thus make more money from it during the patent period, which incentivizes inventors to put time and money into developing new inventions that can benefit society.[2] However, the fact that patents create a monopoly on that invention, forcing consumers to spend more money than the market value to obtain a patented invention, is a cost to society.[3]

The patent system works by charging patent holders fees to obtain and maintain patents.[4] The fees cover the services that the United States Patent and Trademark Office (“USPTO”) provides.[5] Entities file for patents, and the size of that entity determines the fee amount.[6] The USPTO charges fees for filing and examining an application, for issuing a patent, and for maintenance during the 20-year life of the patent.[7]

The current fee system has multiple goals, one being to achieve financial balance for the USPTO by covering the costs of the patent process.[8] The discounts for small and micro entities are meant to foster innovation and increase fairness by lowering the barrier to obtaining and maintaining patents.[9] Additionally, charging maintenance fees will decrease the number of patents currently in effect, especially economically unviable ones, because not all entities will maintain all their patents.[10] Overall, the current fee model works, at least to make money for the USPTO. The USPTO estimated almost $4 billion in income from patent fees last year.[11] The USPTO does not cost taxpayers money and just runs on the fees paid by current patent holders.[12]

The Trump Administration is discussing charging patent holders fees equal to a percentage of their overall patent value.[13] The proposed percentage would be one to five percent.[14] The new fee system “would be a much more exorbitant cost for some patent holders that would function like a property tax.”[15] It would be a complete change to the 235-year-old patent system and a stark departure from the practices of any foreign country.[16] Whether the proposal would replace or add to the current fee system is unclear.[17]

The presidential administration suggests using the revenue to pay the national debt or for purposes in other areas of the government.[18] The administration is also considering a budget item for the USPTO that could transfer the extra money to other agencies of the government.[19] Trump nominated John Squires (“Squires”) to the position of USPTO director, and the Senate confirmed his appointment.[20] Squires, as a nominee and supporter of Trump, is expected to support the proposed fee system.[21] The USPTO’s authority to set its fees expires next year, and, therefore, Congress may change the way that the patent fee system works to be in line with the proposal, or Congress may prevent the USPTO from changing the system.[22]

Congress, and not the executive branch, has the power to levy taxes.[23] The USPTO has the right, granted by Congress, to charge fees to patent holders to pay for the services the USPTO provides.[24] However, charging patent holders a percentage of the overall patent value may constitute a tax more than a fee. The primary purpose of the proposed plan is to raise money for the government, generally to pay off the deficit or for services outside of the USPTO.[25] Such a goal is usually the purpose of a tax.[26] In contrast, the purpose of a fee is to pay for the cost of the specific services provided to the payer of the fee, such as the services the USPTO provides to patent applicants.[27] Additionally, the voluntariness of obtaining a patent and thus paying the proposed fees is not relevant to determining if the charge is a tax or a fee.[28] If someone voluntarily purchases alcohol at a store, they have to pay a sales tax, not a sales fee. The sales tax, although voluntary because no one has to purchase alcohol, still has the primary purpose of general revenue raising, not paying for a specific service. This would be the same as charging patent holders a percentage of the overall patent value, because, although voluntary, it would raise money, generally not just for the USPTO’s services.

In addition to the potential legal issues, several implementation and policy concerns exist. First, how or when the patent value will be assessed is unclear.[29] Patents can have commercial value but also hold value for the amount for which the patent owner could sell or license the patent. The commercial value of a patent is unknown at the time the patent is granted.[30] Even if the amount is assessed multiple times during the patent term, many different components go into how valuable a patent is.[31] For example, a patent granted to Apple to be used in an iPhone is working alongside hundreds of other patents in the phone. How would the government decide how the success of an iPhone is split among all the patents? Also, Apple’s branding, reputation, business model, and previous customer base are other factors contributing to an iPhone’s success. Would the government account for that, and if so, how?

If the government equates the overall patent value to the amount for which the patent owner could sell or license the patent, additional concerns are raised. How would the government determine that amount accurately? Especially because the patent owner may not want to sell or license the patent, or might not have any competitors interested in that specific patent on its own, despite being valuable.

If the government determines how to assess the patent value, the proposal might not even raise money for the government. First, many patents already do not have a significant amount of commercial value.[32] The holders of those patents sometimes let the invaluable patents lapse, but sometimes keep the patents active and pay the maintenance fees. The holders of commercially invaluable patents under the new system likely would not be paying that much in fees and would not make that much money for the government. Second, some potential patent holders may not even apply for a patent because of the possible taxes and instead rely on trade secret protection or first-to-market benefits. Not only would that mean that the USPTO would not get any revenue from that potential patent, but the potential decrease in patents would not encourage innovation or the distribution of knowledge. Third, large companies with many resources would likely find loopholes or reorganization tricks to limit the value of their patents.[33] Companies would be spending money and time on avoiding or limiting the tax rather than on R&D, thus limiting and discouraging innovation and not truly raising money for the government.[34] Fourth, the government would have to create a system to determine the value of the 3.5 million active U.S. patents, which would be very expensive.[35] Additionally, patent holders upset at the valuations could try to contest the amount, leading to a significant amount of litigation.[36] Therefore, the plan would raise operating costs for the USPTO and not lead to more money to pay off the government deficit.

The proposed plan would likely achieve the opposite of the USPTO’s goals. Any money that companies make from the patents they own is already taxed on the federal and state levels. More money that companies have to pay under the proposal to maintain patents would take money away from their profits and reduce investment into R&D, therefore decreasing innovation. Small businesses and start-ups would be the most impacted. They have the least amount of money to pay any patent fees, and often they hold patents as their primary assets. Forcing them to pay more to maintain would decrease the likelihood of innovation. It would not encourage fairness, and it would increase the barrier to entry for gaining a patent, the opposite of what the current system attempts to achieve with its tiers of patent fees.

Overall, the proposed system would discourage innovation, decrease fairness, and be difficult to implement. The system probably would not even achieve the goal of raising money for the government due to the increased costs of implementing the system. Additionally, legal challenges and backlash from patent-holding companies are likely. The proposal would be a drastic shift in how the patent system works and would make the U.S. a significant outlier in the world.

 

Notes

[1] Gaétan de Rassenfosse & Adam B. Jaffe, Framework for Analysis of U.S. Patent Fee Structure Options 2 (Dec. 2024),  https://www.uspto.gov/sites/default/files/documents/UAIA_Fee_Study_Framework_for_Analysis.pdf.

[2] Id. at 10–12.

[3] Id.

[4] Id. at 2.

[5] Id.

[6] 37 C.F.R. § 1.16.

[7] 37 C.F.R. §§ 1.16, 1.17, 1.18, 1.20.

[8] De Rassenfosse & Jaffe, supra note 1.

[9] Id. at 16–18.

[10] Id. at 18–19.

[11] United States Patent and Trademark Office, Fiscal Year 2025 Congressional Submission 3 (Mar. 2024), https://www.uspto.gov/sites/default/files/documents/fy25pbr.pdf.

[12] Id.

[13] Amrith Ramkumar, Trump Administration Weighs Patent System Overhaul to Raise Revenue, Wall St. J., July 28, 2025, https://www.wsj.com/politics/policy/patent-system-overhaul-18e0f06f?gaa_at=eafs&gaa_n=AWEtsqcrNTdIjXDybihSzFhBXwdMfKp1P3twYDq3pdyZ1O9OqaQjMcPsCTRSSd162eE%3D&gaa_ts=69167aa4&gaa_sig=sn7mig18LPadrQwSl70zopRzxIWhd-iGUBVS5lUE7D6lZS-f4l7FaJOwcYTLujXukFEKbMBrfD0SCOOLFvxJhw%3D%3D.

[14] Id.

[15] Id.

[16] Id.

[17] Id.

[18] Id.

[19] Id.

[20] Press Release, United States Patent and Trademark Office, USPTO Welcomes New Director John A. Squires (Sept. 22, 2025), https://www.uspto.gov/about-us/news-updates/uspto-welcomes-new-director-john-squires.

[21] Ramkumar, supra note 13.

[22] Id.

[23] U.S. Const. art. I, § 8, cl. 1.

[24] De Rassenfosse & Jaffe, supra note 1, at 2.

[25] Ramkumar, supra note 13.

[26] Nat’l Cable Television Ass’n, Inc. v. United States, 415 U.S. 336, 340–41 (1974).

[27] Id.

[28] See generally, Nat’l Fed’n of Indep. Bus. v. Sebelius, 567 U.S. 519 (2012) (determining that the individual mandate penalty was a valid tax, even though it was a voluntary choice for citizens to not purchase insurance and thus pay the individual mandate penalty).

[29] Rodrigo Balbontin, Taxing Patent Value Is a Patently Bad Idea, Info. Tech. & Innovation Found. (Aug. 4, 2025), https://itif.org/publications/2025/08/04/tax-on-patent-value-is-a-patently-bad-idea/.

[30] Id.

[31] Id.

[32] Sujai Shivakumar & Chris Borges, Don’t Tax Invention: The Risks of a Patent Tax, Ctr. for Strategic & Int’l Stud. (Sept. 4, 2025), https://www.csis.org/analysis/dont-tax-invention-risks-patent-tax.

[33] Balbontin, supra note 29.

[34] Id.

[35] Shivakumar & Borges, supra note 32.

[36] Id.

Are AI Overviews Creating New Risk of Libel for Search Engines?

October 7, 2024
Artificial Intelligence, Intellectual Property, Internet, Product Liability

Eleanor Nagel-Bennett, MJLST Staffer

47 USC § 230 of the Communications Decency Act (“CDA”) protects online service providers from civil liability for content published on their servers by third parties. Essentially, it clarifies that if a Google search for one’s name produced a link to a blog post containing false and libelous content about that person, the falsely accused searcher could pursue a claim of defamation against the publisher of the blog, but not against Google. Under § 230, Google is not considered the speaker or the publisher of the libelous statements on the blog, despite returning the libelous results on the search engine results page. Specifically, § 230 provides that “[n]o provider or user of an interactive computer service shall be treated as the publisher or speaker of any information provided by another information content provider” for purposes of civil penalties.[i]

However, in May 2024 Google rolled out an “AI Overview” feature on their search engine. The AI Overview is powered by Gemini, Google’s generative artificial intelligence chatbot.[ii] Gemini generates a response to each google search by combining information from internet sources and writing a complete overview answer to the search query using “multi-step reasoning, planning and multimodality” functions.[iii] After submitting a query, the AI Overview is displayed at the top of the search results. In the first few weeks, Google’s AI Overview suffered from hallucinations producing “odd and erroneous” outputs.[iv] Some of the odd results were obviously false, such as suggesting a user try adhering cheese to their pizza with a glue stick.[v]

Besides going viral online, the silly results were largely inconsequential. However, there were also several more serious reports of Google’s AI Overview feature generating misinformation that presented responses more difficult to identify as false. One such result claimed that President Barack Obama was the first Muslim President, a popular but demonstrably false conspiracy theory that has circulated the internet for years, while another told users that certain poisonous mushrooms were safe for human consumption.[vi] Google has since changed the data pool used to produce AI Overviews, and now rarely produces blatantly false results — but is rarely enough when 8.5 billion searches are run per day on Google?[vii]

This raises the question: can search engines be held liable for libelous content published by their generative AI? A plaintiff will have to prove to the court that § 230 of the Communications Decency Act is not a statutory bar to claims against generative AI. A recent consensus of legal scholars anticipate courts will likely find that the CDA would not bar claims against a company producing libelous content through generative AI because content produced by generative AI is original work, “authored” by the AI itself.[viii]

For an illustrative comparison, consider how defamation claims against journalists work as compared to defamation claims against traditional search engine results. While a journalist may write stories based on interviews, research, and experience, the language she publishes are her own words, her own creation, and she can be held liable for them despite sourcing some pieces from other speakers. Traditional search engines on the other hand historically post the sourced material directly to the reader, so they are not the “speaker” and therefore are insulated from defamation claims.  Enter generative AI, the output of which is likely to be considered original work by courts, and that insulation may erode.[ix] Effectively, introducing an AI Overview feature waives the statutory bar to claims under § 230 of the CDA relied upon by search engines to avoid liability for defamation claims.

But even without an outright statutory bar to defamation claims against a search engine’s libelous AI output, there is disagreement over whether generative AI output in general is relied upon seriously enough by humans to give rise to a defamation claim. Some believe that AI generated text should not be interpreted as a reasonably perceived factual claim, and therefore argue that AI generated content cannot give rise to a claim for defamation.[x] This is where the legitimacy of a result displayed on a popular search engine comes into play. Even if AI generated text is not ordinarily reasonably perceived as a factual claim, when displayed at the top of a search engine’s results page, more weight and authority is given to the result, though users might otherwise be wary of AI outputs.[xi]

While no landmark case law on the liability of an AI machine for libelous output has been developed to date, several lawsuits have already been filed on the question of liability assignment for libelous content produced by generative AI, including at least one case against a search engine for AI generated output displayed on a search engine results page.[xii]

Despite the looming potential for consequences, most AI companies have neglected to give attention to the risk of libel created by the operation of generative AI.[xiii] While all AI companies should pay attention to the risks, search engines previously insulated from civil liability by § 230 of the CDA should be especially wary of just how much liability they may be opening themselves up to by including an AI Overview on their results pages.

 

Notes

[i] 47 U.S.C. §230(c)(1).

[ii] Reid, Liz, Generative AI in Search: Let Google do the searching for you, Google (May 14, 2024) https://blog.google/products/search/generative-ai-google-search-may-2024/.

[iii] Id.

[iv] Reid, Liz, AI Overviews: About last week, Google (May 30, 2024) https://blog.google/products/search/ai-overviews-update-may-2024/.

[v] O’Brien, Matt, Google makes fixes to AI-generated search summaries after outlandish answers went viral, The Associated Press (May 30, 2024) https://apnews.com/article/google-ai-overviews-hallucination-33060569d6cc01abe6c63d21665330d8.

[vi] Id.

[vii] Brannon, Jordan, Game-Changing Google Search Statistics for 2024, Coalition, (Apr. 5, 2024) https://coalitiontechnologies.com/blog/game-changing-google-search-statistics-for-2024.

[viii] Joel Simon, Can AI be sued for defamation?, Col. Journalism Rev. (March 18, 2024).

[ix] Id.

[x]  See Eugene Volokh, Large Libel Models? Liability For AI Output, 3 J. Free Speech L. 489, 498 (2023).

[xi] Id.

[xii] In July of 2023, Jeffery Battle of Maryland filed suit against Microsoft for an AI generated search result on BING accusing him of crimes he did not commit. The Plaintiff Jeffery Battle is a veteran, business owner, and aerospace professor. When his name is searched online, however, Bing’s AI overview accuses Battle of crimes committed by a different Jeffrey Battle, Jeffery Leon Battle. The other Jeffery Battle pled guilty to seditious conspiracy and levying war against the United States after he tried to join the Taliban in the wake of 9/11. Bing’s search engine results page overview powered by Chat GPT combines information about the two Jeffery’s into one. See Id. at 492.

[xiii] Id. at 493.

AR/VR/XR: Breaking the Wall of Legal Issues Used to Limit in Either the Real-World or the Virtual-World

February 5, 2024
Data, Intellectual Property, New Technology, Privacy, Video Games

Sophia Yao, MJLST Staffer

From Pokémon Go to the Metaverse,[1] VR headsets to XR glasses, vision technology is quickly changing our lives in many aspects. The best-known companies or groups that have joined this market include Apple’s Vision Products Group (VPG), Meta’s Reality Lab, Microsoft, and others. Especially after Apple published its Vision Pro in 2023, no one doubts that this technology will soon be a vital driver for both tech and business. Regardless of why, can this type of technology significantly impact human genes? What industries will be impacted by this technology? And what kinds of legal risks are to come?

Augmented Reality (“AR”) refers to a display of a real-world environment whose elements are augmented by (i.e., overlaid with) one or more layers of text, data, symbols, images, or other graphical display elements.[2] Virtual Reality (“VR”) is using a kind of device (e.g., headsets or multi-projected environments) to create a simulated and immersive environment that can provide an experience either similar to or completely different from the real world,[3] while Mixed Reality/Extended Reality (XR) glasses are relatively compact and sleek, and weigh much less than VR headsets.[4] XR’s most distinguished quality from VR is that individuals can still see the world around them with XR by projecting a translucent screen on top of the real world. Seemingly, the differences between these three vision technologies may soon be eliminated with the possibility of their combination into once device.

Typically, vision technology assists people in mentally processing 2-D information into a 3-D world by integrating digital information directly into real objects or environments. This can improve individuals’ ability to absorb information, make decisions, and execute required tasks quickly, efficiently, and accurately. However, many people report feeling nauseous after using such products, ear pain, and a disconnect between their eyes and body.[5] Even experts who use AR/VR products in emerging psychotherapy treatments admit that there have been adverse effects in AR/VR trials due to mismatching the direct contradiction between the visual system and the motion system.[6] Researchers also discovered that it affects the way people behave in social situations due to feeling less socially connected to others.[7]

In 2022, the global augmented reality market was valued at nearly $32 billion and is projected to reach $88 billion by 2026.[8] As indicated by industry specialists and examiners, outside of gaming, a significant portion of vision technology income will accumulate from e-commerce and retail (fashion and beauty), manufacturing, the education industry, healthcare, real estate, and e-sports, which will further impact entertainment, cost of living, and innovation.[9] To manage this tremendous opportunity, it is crucial to understand potential legal risks and develop a comprehensive legal strategy to address these upcoming challenges.

To expand one’s business model, it is important to maximize the protection of intellectual property (IP), including virtual worlds, characters, and experiences. Doing so also aligns with contractual concerns, service remedies, and liability for infringement of third-party IP. For example, when filing an IP prosecution, it is difficult to argue that the hardware-executing invention (characters or data information) is a unique machine, and that the designated steps performed by the hardware are special under MPEP § 2106.05(d).[10] Furthermore, the Federal Circuit has cautioned the abstraction of inventions – that “[a]t some level, all inventions embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas…[T]read carefully in constructing this exclusionary principle lest it swallows all of the patent law.”[11]

From a consumer perspective, legal concerns may include data privacy, harassment, virtual trespass, or even violent attacks due to the aforementioned disconnect between individuals’ eyes and bodies. Courts’ views on virtual trespass created by vision technology devices is ambiguous. It is also unclear whether courts will accept the defense of error in judgment due to the adverse effects of using AR/VR devices. One of the most significant concerns is the protection of the younger generations, since they are often the target consumers and those who are spending the most time using these devices. Experts have raised concerns about the adverse effects of using AR/VR devices, questioning whether they negatively impact the mental and physical health of younger generations. Another concern is that these individuals may experience a decline in social communication skills and feel a stronger connection to machines rather than to human beings. Many other legal risks are hanging around the use of AR/VR devices, such as private data collection without consent by constantly scanning the users’ surrounding circumstances, although some contend that the Children’s Online Privacy Protection Act (COPPA) prohibits the collection of personally identifiable information if an operator believes a user to be under the age of thirteen.[12]

According to research trends, combining AR, VR, and MR/XR will allow users to transcend distance, time, and scale, to bring people together in shared virtual environments, enhance comprehension, communication, and decisionmaking efficiency. Once the boundaries between the real-world and virtual-world are eliminated, AR/VR devices will “perfectly” integrate with the physical world, whether or not we are prepared for this upcoming world.

Notes

[1] Eric Ravenscraft, What is the Meteverse, Exactly?, Wired (Jun. 15, 2023, 6:04 PM), https://www.wired.com/story/what-is-the-metaverse/.

[2] Travis Alley, ARTICLE: Pokemon Go: Emerging Liability Arising from Virtual Trespass for Augmented Reality Applications, 4 Tex. A&M J. Prop. L. 273 (2018).

[3] Law Offices of Salar Atrizadeh, Virtual and Augmented Reality Laws, Internet Law. Blog (Dec. 17, 2018), https://www.internetlawyer-blog.com/virtual-and-augmented-reality-laws/.

[4] Simon Hill, Review: Viture One XR Glasses, Wired (Sep. 1, 2023, 7:00 AM), https://www.wired.com/review/viture-one-xr-glasses/.

[5] Alexis Souchet, Virtual Reality has Negative Side Effects—New Research Shows That Can be a Problem in the Workplace, The Conversation (Aug. 8, 2023, 8:29 AM), https://theconversation.com/virtual-reality-has-negative-side-effects-new-research-shows-that-can-be-a-problem-in-the-workplace-210532#:~:text=Some%20negative%20symptoms%20of%20VR,nausea%20and%20increased%20muscle%20fatigue.

[6] John Torous et al., Adverse Effects of Virtual and Augmented Reality Interventions in Psychiatry: Systematic Review, JMIR Ment Health (May 5, 2023), https://www.ncbi.nlm.nih.gov/pmc/articles/PMC10199391/.

[7] How Augmented Reality Affects People’s Behavior, Sci.Daily (May 22, 2019), https://www.sciencedaily.com/releases/2019/05/190522101944.htm.

[8] Augmented Reality (AR) Market by Device Type (Head-mounted Display, Head-up Display), Offering (Hardware, Software), Application (Consumer, Commercial, Healthcare), Technology, and Geography – Global Forecast, Mkt. and Mkt., https://www.marketsandmarkets.com/Market-Reports/augmented-reality-market-82758548.html.

[9] Hill, supra note 4.

[10] Manual of Patent Examining Proc. (MPEP) § 2106.05(d) (USPTO), https://www.uspto.gov/web/offices/pac/mpep/s2106.html#ch2100_d29a1b_13d41_124 (explaining an evaluation standard on when determining whether a claim recites significantly more than a judicial exception depends on whether the additional elements(s) are well-understood, routine, conventional activities previously known to the industry).

[11] Manual of Patent Examining Proc. (MPEP) § 2106.04 (USPTO), https://www.uspto.gov/web/offices/pac/mpep/s2106.html#ch2100_d29a1b_139db_e0; see also Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (2016).

[12] 16 CFR pt. 312.

Brushstroke Battles: Unraveling Copyright Challenges With AI Artistry

October 15, 2023
Artificial Intelligence, Copyrights, Intellectual Property, New Technology

Sara Seid, MJLST Staffer

Introduction

Imagine this: after a long day of thinking and participating in society, you decided to curl up on the couch with your phone and crack open a new fanfiction to decompress.  Fanfiction, a fictional work of writing based on another fictional work, has increased in popularity due to the expansion and increased use of the internet. Many creators publish their works to websites like Archive of Our Own (AO3), or Tumblr. These websites are free and provide a community for creative minds to share their creative works. While the legality of fanfiction in general is debated, the real concern among creators is regarding AI-generated works. Original characters and works are being used for profit to “create” works through the use of Artificial Intelligence. Profits can be generated from fanfiction through the use of paid AI text generators to create written works, or through advertisements on platforms. What was once a celebration of favorite works has become tarnished through the theft of fanfiction by AI programs.

First Case to Address the Issue

Thaler v. Perlmutter is a new and instructive case on the issue of copyright and AI-generated creative works – namely artwork.[1] The action was brought by Stephen Thaler against the Copyright Office for denying his application for copyright due to the lack of human authorship.[2]  The D.C. Circuit court was the first to rule on whether AI-generated art can have copyright protections.[3] The court held that AI-created artwork could not be copyrighted.[4] In considering the plaintiff’s copyright registration application for “A Recent Entrance to Paradise,” the Register concluded that this particular work would not support a claim to copyright because the work “lacked human authorship and thus no copyright existed in the first instance.”[5] The plaintiff’s primary contention was that the artwork was produced by the computer program he created, and, through its AI capabilities, the product was his.[6]

The court went on to opine that copyright is designed to adapt with the times.[7] Underlying that adaptability, however, has been a “consistent understanding that human creativity is the sine qua non at the core of copyrightability,” even as that human creativity is channeled through new tools or into new media.[8] Therefore, despite the plaintiff’s creation of the computer program, the painting was not produced by a human, and not eligible for copyright. This opinion, while relevant and clear, still leaves unanswered questions regarding the extent to which humans are involved in AI-generated work.[9] What level of human involvement is necessary for an AI creation to qualify for copyright?[10] Is there a percentage to meet? Does the AI program require multiple humans to work on it as a prerequisite? Adaptability with the times, while essential, also means that there are new, developing questions about the right ways to address new technology and its capabilities.

Implications of the Case for Fanfiction

Artificial Intelligence is a new concern among scholars. While its accessibility and convenience create endless new possibilities for a multitude of careers, it also directly threatens creative professions and creative outlets. Without the consent of or authority from creators, AI can use algorithms that process artwork and fictional literary works created by fans to create its own “original” work. AI has the ability to be used to replace professional and amateur creative writers. Additionally, as AI technological capacity increases, it can mimic and reproduce art that resembles or belongs to a human artist.[11]

However, the main concern for artists is wondering what AI will do to creative human industries in general.[12] Additionally, legal scholars are equally as concerned about what AI means for copyright law.[13] The main type of AI that fanfiction writers are concerned about is Generative AI.[14] Essentially, huge datasets are scraped together to train the AI, and through a technical process the AI is able to devise new content that resembles the training data but isn’t identical.[15] Creators are outraged at what they consider to be theft of their artistic creations.[16] Artwork, such as illustrations for articles, books, or album covers may soon face competition from AI, undermining a thriving area of commercial art as well.[17]

Currently, fanfiction is protected under the doctrine of fair use, which allows creators to add new elements, criticism, or commentary to an already existing work, in a way that transforms it.[18] The next question likely to stem from Thaler will be whether AI creations are subject to the same protections that fan created works are.

The fear of the possible consequences of AI can be slightly assuaged through the reality that AI cannot accurately and genuinely capture human memory, thoughts, and emotional expression. These human skills will continue to make creators necessary for their connections to humanity and the ability to express that connection. How a fan resonates with a novel or T.V. show, and then produces a piece of work based on that feeling, is uniquely theirs. The decision in Thaler reaffirms this notion. AI does not offer the human creative element that is required to both receive copyright and also connect with viewers in a meaningful way.[19]

Furthermore, the difficulty with new technology like AI is that it’s impossible to immediately understand and can cause feelings of frustration or a sense of threat. Change is uncomfortable. However, with knowledge and experience, AI might be a useful tool for fanfiction creators.

The element of creative projects that make them so meaningful to people is the way that they can provide a true insight and experience that is relatable and distinctly human.[20] The alternative to banning AI or completing rendering human artists obsolete is to find a middle ground that protects both sides. The interests of technological innovation should not supersede the concerns of artists and creators.

Ultimately, as stated in Thaler, AI artwork that has no human authorship does not get copyright.[21] However, this still leaves unanswered questions that future cases will likely present before the courts. Are there protections that can be made for online creators’ artwork and fictional writings to prevent their use or presence in AI databases? The Copyright Act exists to be malleable and adaptable with time.[22] Human involvement and creative control will have to be assessed as AI becomes more prominent in personal and professional settings.

Notes

[1] Thaler v. Perlmutter, 2023 U.S. Dist. LEXIS 145823, *1.

[2] Id.

[3] Id.

[4] Id.

[5] Id.

[6] Id. at *3.

[7] Id. at *10.

[8] Id.

[9] https://www.natlawreview.com/article/judge-rules-content-generated-solely-ai-ineligible-copyright-ai-washington-report.

[10] Id.

[11] https://www.theguardian.com/artanddesign/2023/jan/23/its-the-opposite-of-art-why-illustrators-are-furious-about-ai#:~:text=AI%20doesn%27t%20do%20the,what%20AI%20art%20is%20doing.%E2%80%9D.

[12] https://www.theguardian.com/technology/2022/nov/12/when-ai-can-make-art-what-does-it-mean-for-creativity-dall-e-midjourney.

[13] https://www.reuters.com/legal/ai-generated-art-cannot-receive-copyrights-us-court-says-2023-08-21.

[14] https://www.theguardian.com/technology/2022/nov/12/when-ai-can-make-art-what-does-it-mean-for-creativity-dall-e-midjourney.

[15] Id.

[16] Id.

[17] Id.

[18] https://novelpad.co/blog/is-fanfiction-legal# (citing Campbell v. Acuff Rose Music, 510 U.S. 569 (1994).

[19] https://www.reuters.com/default/humans-vs-machines-fight-copyright-ai-art-2023-04-01/.

[20] https://news.harvard.edu/gazette/story/2023/08/is-art-generated-by-artificial-intelligence-real-art/.

[21] Thaler v. Perlmutter, 2023 U.S. Dist. LEXIS 145823, *1.

[22] Id. at *10.

The Inaccessible Cure: the Struggle With Feline Infectious Peritonitis and Thoughts on the Underlying Law

October 10, 2023
Administrative Law, Food and Drug Law, Health Law, Intellectual Property, Patents

Lan Gan, MJLST Staffer

For fellow feline fanatics, you may share some of my traits. I care for my cat’s health as I care for my own. Besides giving her nutritiously balanced meals, I take notes when she’s unwell and schedule annual physicals for her, just like I would for myself. I also browse online discussions posts of cats. Some make me laugh, some give me new understanding of cat behaviors, but the ones about feline infectious peritonitis are always grim.

Feline Infectious Peritonitis, or FIP, is a severe disease that typically develops in young cats when they are infected with feline enteric coronavirus (FeCV) which later mutates into FIPV and causes inflammations.[1] The mutations happen about ten percent of the time, and, until recently, have almost always been deadly.[2]

In 2018, researchers at the School of Veterinary Medicine at UC Davis partnered with Gilead Sciences and published an article about the discovery of GS-441524, which, through their experiments with cats that were infected with FIPV in an in vitro process, “caused a rapid reversal of disease signs and return to normality with as little as two weeks of treatment in 10/10 cats and with no apparent toxicity.”[3] Another paper, published in 2019, also by researchers of the two institutions, revealed that GS-441524 was an effective treatment for cats with naturally occurring FIP.[4]

This gave cat rescuers and cat owners hope. But despite promising experiment results, Niels Pederson, who partook in the studies and was a long-time researcher devoted to FIP, warned that the development was “proof-of-concept,” showing possibility in terms of science but not immediately translating into commercially available products.[5] Subsequently, GS-441524 did not move forward to become an FDA-approved drug to treat cats.[6] Instead, it seemed to be set aside as Gilead prioritized another drug, remdesivir, which is identical to GS-441524 in part of its structural formula and has the same mechanism of inhibiting coronavirus.[7] When Gilead failed to obtain FDA approval to use remdesivir to treat Ebola, they changed course to study its effects on the then-rising Covid-19 pandemic.[8] GS-441524, with its studies on animals halted, was also part of the race and was argued by some scientists to have more efficacy in treating Covid-19 than remdesivir.[9]

The much-needed cure became inaccessible. In as early as 2019, anxious people were turning to the black market for help. GS-441524 that circulated on the black market had murky origins: potential leaks from lab orders for research, personnel that synthesized the compound themselves in overseas locations such as China.[10] The benefits of the drug, while still salient, based on surveys of cat owners who utilized them, were potentially compromised by the disparity in quality of the black market drugs, and lack of veterinary expertise involved.[11]

Pharmaceutical companies are more than incentivized to patent their research products. A search on World Intellectual Property Organization (WIPO)’s database revealed 66 patents applied for by Gilead, from as early as 2009 to as recently as July 2023.[12] The list of patents documented development in Gilead’s GS-441524 research.[13] Gilead patented GS-441524’s treatment for cats in 2018 and 2020[14], but those accounted for only 3 of the 66 patents they obtained; the rest were regarding human use.[15] Patents benefit their owners by giving them a cause of action against future infringement. They are about owning, not sharing. Patents are the culmination of a strenuous journey of scientific research. But this celebratory landmark might not go any further. Many patents do not make their way onto the market; having one is not itself an incentive for doing so.

Next comes the approval process as stipulated in federal law. 21 U.S.C. § 360b governs the approval process of new animal drugs.[16] The statute lays the burden on pharmaceutical companies – referred to as drug sponsors – of contacting the FDA after initial research of the drug, making the decision to pursue approval for the drug, and conducting tests to ensure the effectiveness and safety of the drug.[17] Additionally, the Generic Animal Drug and Patent Term Restoration Act (GADPTRA) of 1988 provides an abbreviated process for generic copies of approved new animal drugs;[18] the Minor Use and Minor Species Animal Health Act (the “Mums Act”) of 2004 paves paths for drugs affecting a small population of major species of animals (defined as horses, dogs, cats, cattle, pigs, turkeys and chickens) and minor species (those that are not major species) that have few drugs available to them.[19] In 2018, the Animal Drug and Animal Generic Drug User Fee Amendments expanded the eligibility for conditional approval of non-MUMS drugs intending to treat a serious or life-threatening disease or condition or address an unmet animal or human health need, for which a demonstration of effectiveness would require a complex or particularly difficult study or studies.[20]

How has GS-441524 escaped the statutory provisions when they have been amended to be more inclusive? There may be various reasons. It may not qualify for conditional approval under 21 U.S.C. § 360ccc(a)(1)(ii) because peer-reviewed articles have already demonstrated the drug’s effectiveness. It may be hard to quantify the FIP-affected cat population to meet the “minor use” threshold set out in the Mums Act because of the difficulty of FIP testing. Current testing cannot differentiate between FeCV and the mutated FIPV, and an FIP diagnosis is often assumed for young cats based on their higher infection rate.[21] Lastly, no matter which approval process GS-441524 is eligible to take, the process wouldn’t start unless Gilead decides to contact the FDA and set forth the drug for approval. Current statutes create paths, but no incentives to do so. The market may provide some monetary incentives, as treatment costs via the black market can be up to $10,000 for 12 weeks[22], but this is singularly held back by the decision to prioritize approval for human treatment, and the presumption that the approval process of an animal drug would negatively impact the approval process of a similar drug for humans.[23]

The black market is not a long-term solution for FIP treatment. Though the U.S. has yet to adjudicate the circulation of unlicensed FIP treatment, in July 2023, a woman in China was sentenced to 15 years in prison and fined with more than $5 million in damages for producing and selling fake, substandard products pursuant to China’s criminal law statutes.[24] Gilead also holds the exclusive patents on feline treatments. Facing unclear prospects for legitimate FIP treatment, subsequent statutory amendments need to create actual incentives to spur innovation in animal drugs, in addition to the creation of paths. The law should also create safeguards to promote transparency and fairness in the application review process in order to reduce bias against animal drugs.

Notes

[1] Feline Infectious Peritonitis, Cornell Feline Health Center, https://www.vet.cornell.edu/departments-centers-and-institutes/cornell-feline-health-center/health-information/feline-health-topics/feline-infectious-peritonitis (last visited Oct. 2, 2023).

[2] Id.

[3] B.G. Murphy et al., The Nucleoside Analog GS-441524 Strongly Inhibits Feline Infectious Peritonitis (FIP) Virus in Tissue Culture and Experimental Cat Infection Studies, 219 Veterinary Microbology 226, 226 (2018).

[4] Niels C Pedersen, Efficacy and Safety of the Nucleoside Analog GS-441524 for Treatment of cats with Naturally Occurring Feline Infectious Peritonitis, 21(4) J. of Feline Med. & Surgery 271, 271 (2019).

[5] Human Antiviral ‘GS-441524’ Shows Great Promise Against Infectious Disease in Cats, Science Daily (Feb. 13, 2019), https://www.sciencedaily.com/releases/2019/02/190213100442.htm.

[6] Sarah Zhang, A Much-Hyped COVID-19 Drug Is Almost Identical to a Black-Market Cat Cure, The Atlantic (May 8, 2020), https://www.theatlantic.com/science/archive/2020/05/remdesivir-cats/611341/.

[7] Id.

[8] Kai Kupferschmidt & Jon Cohen, WHO Launches Global Megatrial of the Four Most Promising Coronavirus Treatments, Science (Mar. 22, 2020), https://www.science.org/content/article/who-launches-global-megatrial-four-most-promising-coronavirus-treatments.

[9] E.g., Victoria C. Yan & Florian L. Muller, Advantages of the Parent Nucleoside GS-441524 over Remdesivir for Covid-19 Treatment, 11 ACS Med. Chemistry Letters 1361, 1361 (2020).

[10] See Sarah Zhang, A Much-Hyped COVID-19 Drug Is Almost Identical to a Black-Market Cat Cure, The Atlantic (May 8, 2020), https://www.theatlantic.com/science/archive/2020/05/remdesivir-cats/611341/; see also Sarah Jones et al., Unlicensed GS-441524-Like Antiviral Therapy Can Be Effective for at-Home Treatment of Feline Infectious Peritonitis, 11 Animals 2257, 2258 (2021).

[11] Sarah Jones et al., Unlicensed GS-441524-Like Antiviral Therapy Can Be Effective for at-Home Treatment of Feline Infectious Peritonitis, 11 Animals 2257, 2264–67 (2021).

[12] CHEM:(BRDWIEOJOWJCLU-LTGWCKQJSA-N), WIPO, https://patentscope.wipo.int/search/en/result.jsf?_vid=P22-LN8EIR-06824 (last visited Oct. 2, 2023).

[13] Id.

[14] See World Patent No. 169,946 (filed Mar. 13, 2018); see also U.S. Patent No. 0,296,584 (filed Mar. 13, 2018); see also U.S. Patent No. 0,376,014 (filed Apr. 17, 2020).

[15] See CHEM:(BRDWIEOJOWJCLU-LTGWCKQJSA-N), WIPO, https://patentscope.wipo.int/search/en/result.jsf?_vid=P22-LN8EIR-06824 (last visited Oct. 2, 2023).

[16] 21 U.S.C. § 360b.

[17] From an Idea to the Marketplace: The Journey of an Animal Drug through the Approval Process, FDA (Aug. 14, 2020), https://www.fda.gov/animal-veterinary/animal-health-literacy/idea-marketplace-journey-animal-drug-through-approval-process.

[18] Generic Animal Drug and Patent Term Restoration Act (GADPTRA), FDA (Apr. 24, 2023), https://www.fda.gov/animal-veterinary/guidance-regulations/generic-animal-drug-and-patent-term-restoration-act-gadptra.

[19] Conditional Approval Explained: A Resource for Veterinarians, FDA (Sept. 17, 2020), https://www.fda.gov/animal-veterinary/resources-you/conditional-approval-explained-resource-veterinarians.

[20] 21 U.S.C. § 360ccc (a)(1)(ii).

[21] Feline Infectious Peritonitis, Cornell Feline Health Center, https://www.vet.cornell.edu/departments-centers-and-institutes/cornell-feline-health-center/health-information/feline-health-topics/feline-infectious-peritonitis (last visited Oct. 2, 2023).

[22] Sarah Jones et al., Unlicensed GS-441524-Like Antiviral Therapy Can Be Effective for at-Home Treatment of Feline Infectious Peritonitis, 11 Animals 2257, 2264–67 (2021).

[23] Id.

[24] Wu Shubin (吴淑斌), Zhishou Maoyao Yishen Huoxing 15 Nian: Maoquan “Jiumingyao” de Yinmi Shengyi (制售猫药一审获刑15年:猫圈“救命药” 的隐秘生意) [Sentenced at Trial for 15 Years for Manufacturing and Selling Medicine for Cats: The Secret Business of Life-Saving Drugs in Cat-loving Communities], Sanlian Shenghuo Zhoukan (三联生活周刊) [Sanlian Lifeweek] (July 20, 2023), https://mp.weixin.qq.com/s/VKJO_AIVBy3Hm6GhWUOnWA.

Generate a JLST Blog Post: In the Absence of Regulation, Generative AI May Be Reigned in Through the Courts

April 13, 2023
Artificial Intelligence, Copyrights, Litigation

Ted Mathiowetz, MJLST Staffer

In the space of a year, artificial intelligence (AI) has seemed to have grabbed hold of the contemporary conversation of technology and calls for increased regulation. With ChatGPT’s release in late-November of 2022 as well as the release of various other art generation softwares earlier in the year, the conversation surrounding tech regulation was quickly centered onto AI. In the wake of growing Congressional focus over AI, the White House quickly proposed a blueprint for a preliminary AI Bill of Rights as fears over unregulated advances in technology have grown.[1] The debate has raged on over the potential efficacy of this Bill of Rights and if it could be enacted in time to reign in AI development.[2] But, while Washington weighs whether the current regulatory framework will effectively set some ground rules, the matter of AI has already begun to be litigated.[3]

The growing fear over the power of AI has been mounting in numerous sectors as ChatGPT has proven its capabilities to pass exams such as the Multistate Bar Exam,[4] the US Medical Exam, and more.[5] Fears over AI’s capabilities and potential advancements are not just reaching academia either. The legal industry is already circling the wagons to prevent AI lawyers from representing would-be clients in court.[6] Edelson, a law firm based in Chicago, filed a class action complaint in California state court alleging that DoNotPay, an AI service that markets itself as “the world’s first robot lawyer” unlawfully provides a range of legal services.[7] The complaint alleges that DoNotPay is engaging in unlawful business practice by “holding itself out to be an attorney”[8] and “engaging in the unlawful practice of law by selling legal services… when it was not licensed to practice law.”[9]

Additional litigation has been filed against the makers of AI art generators, alleging copyright violations.[10]  The plaintiffs argue that a swath of AI firms have violated the Digital Millennium Copyright Act in constructing their AI models by using software that copied millions of images as a reference for the AI in building out user-requested images without compensation for those whose images were copied.[11] Notably, both of these suits are class-action lawsuits[12] and may serve as a strong blueprint for how weary parties can reign in AI through the court system.

Faridian v. DONOTPAY, Inc. — The Licensing Case

AI is here to stay for the legal industry, for better or worse.[13] However, where some have been sounding the alarm for years that AI will replace lawyers altogether,[14] the truth is likely to be quite different, with AI becoming a tool that helps lawyers become more efficient.[15] There are nonetheless existential threats to the industry as is seen in the Faridian case whereby DoNotPay is allowing people to write wills, contracts, and more without the help of a trained legal professional. This has led to shoddy AI-generated work, which creates concern that AI legal technology will likely lead to more troublesome legal action down-the-line for its users.[16]

It seems as though the AI Lawyer revolution may not be around to stay much longer as, in addition to the Faridian case, which sees DoNotPay being sued for their robot lawyer mainly engaging in transactional work, they have also run into problems trying to litigate. DoNotPay tried to get their AI Attorney into court to dispute traffic tickets and were later “forced” to withdraw the technology’s help in court after “multiple state bar associations [threatened]” to sue and they were cautioned that the move could see potential prison time for the CEO, Joshua Browder.[17]

Given that most states require applicants to the bar to 1) complete a Juris Doctor program from an accredited institution, 2) pass the bar exam, and 3) pass moral character evaluations in order to practice law, it’s rather likely that robot lawyers will not see a courtroom for some time, if ever. Instead, there may be a pro se revolution of sorts wherein litigants aid themselves with the help of AI legal services outside of the courtroom.[18] But, for the most part the legal field will likely incorporate AI into its repository of technology rather than be replaced by it. Nevertheless, the Faridian case, depending on its outcome, will likely provide a clear path forward for occupations with extensive licensing requirements that are endangered by AI advancement to litigate.

Sarah Andersen et al., v. Stability AI Ltd. — The Copyright Case

For occupations which do not have barriers to entry in the same way the legal field does, there is another way forward in the courts to try and stem the tide of AI in the absence of regulation. In the Andersen case, a class of artists have brought suit against various AI Art generation companies for infringing upon their copyrighted artwork by using their work to create the reference framework for their generated images.[19] The function of the generative AI is relatively straightforward. For example, if I were to log-on to an AI art generator and type in “Generate Lionel Messi in the style of Vincent Van Gogh” it would produce an image of Lionel Messi in the style of Van Gogh’s “Self-Portrait with a Bandaged Ear.” There is no copyright on Van Gogh’s artwork, but the AI accesses all kinds of copyrighted artwork in the style of Van Gogh for reference points as well as copyrighted images of Lionel Messi to create the generated image. The AI Image services have thus created a multitude of legal issues that their parent companies face including claims of direct copyright Infringement by storing copies of the works in building out the system, vicarious copyright Infringement when consumers generate artwork in the style of a given artist, and DMCA violations by not properly attributing existing work, among other claims.[20]

This case is being watched and is already being hotly debated as a ruling against AI could lead to claims against other generative AI such as ChatGPT for not properly attributing or paying for material that it’s used in building out its AI.[21] Defendants have claimed that the use of copyrighted material constitutes fair use, but these claims have not yet been fully litigated, so we will have to wait for a decision to come down on that front.[22] It is clear that as fast as generative AI seemed to take hold of the world, litigation has ramped up calling its future into question. Other world governments are also becoming increasingly weary of the technology, with Italy already banning ChatGPT and Germany heavily considering it, citing “data security concerns.”[23] It remains to be seen how the United States will deal with this new technology in terms of regulation or an outright ban, but it’s clear that the current battleground is in the courts.

Notes

[1] See Blueprint for an AI Bill of Rights, The White House (Oct. 5, 2022), https://www.whitehouse.gov/ostp/ai-bill-of-rights/; Pranshu Verma, The AI ‘Gold Rush’ is Here. What will it Bring? Wash. Post (Jan. 20, 2023), https://www.washingtonpost.com/technology/2023/01/07/ai-2023-predictions/.

[2] See Luke Hughest, Is an AI Bill of Rights Enough?, TechRadar (Dec. 10, 2022), https://www.techradar.com/features/is-an-ai-bill-of-rights-enough; see also Ashley Gold, AI Rockets ahead in Vacuum of U.S. Regulation, Axios (Jan. 30, 2023), https://www.axios.com/2023/01/30/ai-chatgpt-regulation-laws.

[3] Ashley Gold supra note 2.

[4] Debra Cassens Weiss, Latest Version of ChatGPT Aces Bar Exam with Score nearing 90th Percentile, ABA J. (Mar. 16, 2023), https://www.abajournal.com/web/article/latest-version-of-chatgpt-aces-the-bar-exam-with-score-in-90th-percentile.

[5] See e.g., Lakshmi Varanasi, OpenAI just announced GPT-4, an Updated Chatbot that can pass everything from a Bar Exam to AP Biology. Here’s a list of Difficult Exams both AI Versions have passed., Bus. Insider (Mar. 21, 2023), https://www.businessinsider.com/list-here-are-the-exams-chatgpt-has-passed-so-far-2023-1.

[6] Stephanie Stacey, ‘Robot Lawyer’ DoNotPay is being Sued by a Law Firm because it ‘does not have a Law Degree’, Bus. Insider(Mar. 12, 2023), https://www.businessinsider.com/robot-lawyer-ai-donotpay-sued-practicing-law-without-a-license-2023-3

[7] Sara Merken, Lawsuit Pits Class Action Firm against ‘Robot Lawyer’ DoNotPay, Reuters (Mar. 9, 2023), https://www.reuters.com/legal/lawsuit-pits-class-action-firm-against-robot-lawyer-donotpay-2023-03-09/.

[8] Complaint at 2, Jonathan Faridian v. DONOTPAY, Inc., Docket No. CGC-23-604987 (Cal. Super. Ct. 2023).

[9] Id. at 10.

[10] Riddhi Setty, First AI Art Generator Lawsuits Threaten Future of Emerging Tech, Bloomberg L. (Jan. 20, 2023), https://news.bloomberglaw.com/ip-law/first-ai-art-generator-lawsuits-threaten-future-of-emerging-tech.

[11] Complaint at 1, 13, Sarah Andersen et al., v. Stability AI Ltd., et al., Docket No. 3:23-cv-00201 (N.D. Cal. 2023).

[12] Id. at 12; Complaint at 1, Jonathan Faridian v. DONOTPAY, Inc., Docket No. CGC-23-604987 (Cal. Super. Ct. 2023).

[13] See e.g., Chris Stokel-Walker, Generative AI is Coming for the Lawyers, Wired (Feb. 21, 2023), https://www.wired.com/story/chatgpt-generative-ai-is-coming-for-the-lawyers/.

[14] Dan Mangan, Lawyers could be the Next Profession to be Replaced by Computers, CNBC (Feb.17, 2017), https://www.cnbc.com/2017/02/17/lawyers-could-be-replaced-by-artificial-intelligence.html.

[15] Stokel-Walker, supra note 13.

[16] Complaint at 7, Jonathan Faridian v. DONOTPAY, Inc., Docket No. CGC-23-604987 (Cal. Super. Ct. 2023).

[17] Debra Cassens Weiss, Traffic Court Defendants lose their ‘Robot Lawyer’, ABA J. (Jan. 26, 2023), https://www.abajournal.com/news/article/traffic-court-defendants-lose-their-robot-lawyer#:~:text=Joshua%20Browder%2C%20a%202017%20ABA,motorists%20contest%20their%20traffic%20tickets..

[18] See Justin Snyder, RoboCourt: How Artificial Intelligence can help Pro Se Litigants and Create a “Fairer” Judiciary, 10 Ind. J.L. & Soc. Equality 200 (2022).

[19] See Complaint, Sarah Andersen et al., v. Stability AI Ltd., et al., Docket No. 3:23-cv-00201 (N.D. Cal. 2023).

[20] Id. at 10–12.

[21] See e.g., Dr. Lance B. Eliot, Legal Doomsday for Generative AI ChatGPT if Caught Plagiarizing or Infringing, warns AI Ethics and AI Law, Forbes (Feb. 26, 2023), https://www.forbes.com/sites/lanceeliot/2023/02/26/legal-doomsday-for-generative-ai-chatgpt-if-caught-plagiarizing-or-infringing-warns-ai-ethics-and-ai-law/?sh=790aecab122b.

[22] Ron. N. Dreben, Generative Artificial Intelligence and Copyright Current Issues, Morgan Lewis (Mar. 23, 2023), https://www.morganlewis.com/pubs/2023/03/generative-artificial-intelligence-and-copyright-current-issues.

[23] Nick Vivarelli, Italy’s Ban on ChatGPT Sparks Controversy as Local Industry Spars with Silicon Valley on other Matters, Yahoo! (Apr. 3, 2023), https://www.yahoo.com/entertainment/italy-ban-chatgpt-sparks-controversy-111415503.html; Adam Rowe, Germany might Block ChatGPT over Data Security Concerns, Tech.Co (Apr. 3, 2023), https://tech.co/news/germany-chatgpt-data-security.

Patent Venue and the Western District of Texas: Will Randomly Assigning Judges Really Change Anything?

March 31, 2023
Patents

Nina Elder, MJLST Staffer

According to the 2023 Patent Litigation Report Lex Machina released last month, Judge Alan Albright, of the Western District of Texas, heard more patent cases than any other judge in the nation. This is largely because historically Judge Albright has heard nearly all patent cases filed in his district—a district which has maintained its position as the most popular patent venue  for several years. Last July, to address concerns about Judge Albright’s monopoly over patent cases the Western District of Texas implemented a new rule requiring that judges be randomly assigned to patent cases. Some expected that patent filings in the district would “fall off a cliff” after this change, but the Lex Machine report showed that so far there hasn’t been a major decrease in the number of patent cases filed in the district. However, the question remains: will randomization have a significant effect on the distribution of patent cases in the long term?

Why Texas?

Until relatively recently, the Western District of Texas was not a particularly popular patent venue. Judge Albright’s appointment in 2018 changed that. Before becoming a judge, Albright practiced as a patent litigator for decades. He enjoys patent cases and on multiple occasions encouraged parties to file them in his court. And his efforts succeeded—the Western District of Texas had a meteoric rise in popularity after Albright was appointed, and only two years after he took the bench it went from receiving only 2.5% of patent cases filed nationwide to around 22%.

Plaintiffs have flocked to the Western District of Texas to take advantage of Judge Albright’s plaintiff friendly practices. Plaintiffs prefer his fast-moving schedules because they drive settlement negotiations and limit the time defendants have to develop their case. His patent-specific standing orders provide predictability and his years of patent experience allow for efficient resolution of issues. Albright’s procedures also make it harder for defendants to initiate inter partes review to invalidate plaintiff patents with the Patent Trial and Appeal Board, which has been called a patent death squad.

Because of the way cases are distributed in the Western District of Texas, plaintiffs can almost guarantee they will be assigned to Judge Albright if they file in the Waco division, where he is the sole judge. The district is organized into nine divisions, most with one or two judges. Federal district courts are not required to randomly assign cases and, barring unique circumstances, a case filed in a Western Texas division with only one judge will be assigned to that judge. This ability to choose provides plaintiffs with certainty as to the judge that will preside over their case – something not available in most districts. As a result, nearly all patent cases in the Western District of Texas have been handled by Judge Albright. Albright also transfers cases infrequently, meaning it is unlikely a given case will be transferred to a more defendant-friendly forum.

New Rule Requires Random Assignment

Concerns have been expressed about the monopoly Albright has on patent cases. General concerns revolve around judge shopping as it may undermine fairness and public trust in the judicial system and there is a worry that cases may be won based on procedural advantage rather than the merits. In Judge Albrights case there is unease about non-practicing entities (NPEs). NPEs, or patent trolls as they are often called, generate revenue by suing for infringement, often using abusive litigation tactics. There have been concerns that Judge Albright’s practices benefit patent trolls as after he took the bench more than 70% of new patent cases in the Western District of Texas were brought by NPEs.

In response to this issue, in November 2021 several members of the Senate Judiciary Committee’s intellectual property subcommittee wrote a letter to Chief Justice John Roberts and the Administrative Office of the U.S. Court’s Judicial Conference. While they did not name Albright, they alluded to him by noting “unseemly and inappropriate conduct in one district.” They also sent a letter to the U.S. Patent and Trademark Office expressing concern that Judge Albright repeatedly ignored binding case law and abused his direction by denying transfer motions. The Judicial Conference director, Judge Roslynn R. Mauskopf, said the office would conduct a study and noted that random case assignment safeguards judicial autonomy and prevents judge shopping.  Justice Roberts addressed the issue in his annual report and said that patent venue was one of the top issues facing the judiciary.

As a result, last July the Chief Judge of the Western District of Texas, Orlando Garcia, instituted a random assignment of patent cases filed in Waco. Under the new rule, patent cases filed in Waco are no longer automatically assigned to Judge Albright, but instead are randomly distributed to one of the 13 judges in the district.

Impacts of the New Rule

Initial reports suggested there was a decrease in patent case filings in the Western District of Texas after the new rule, but more recent Lex Machina data show that there was limited change. Though the number of patent cases on Judge Albright’s docket did decrease, it was not as great a decrease as some expected, and he still received around 50% of all patent cases filed in the district. However, this is largely because Albright is still being assigned any newly filed cases that relate to those currently on his docket. Though randomization hasn’t significantly decreased the patent cases on Albright list yet, the number of cases assigned to him over time should decrease. What remains to be seen however is whether there will be an overall decrease in patent cases filed in the Eastern District of Texas.

What Will Happen in the Future?

It is unclear how this new way of assigning cases in the Western District of Texas will impact the distribution of patent cases. Uncertainty about the behaviors of other judges in the district likely will cause a decrease in filings. There are 12 “new” judges which can preside over patent cases in the district and only five have significant intellectual property experience. Until it is clearer how the other judges in the district handle patent cases, litigants may go elsewhere. However, it is possible that the other judges will follow Albright’s lead. Two judges in the district, Kathleen Cardone and David Counts, have already adopted Albrights’ patent procedures. It is also possible litigants will simply begin targeting judges with patent experience in the district. The new rule does not require random assignment for all patent cases—only those filed in Waco. Plaintiffs can still select their desired judge, as long as it is not Albright.

Even if the Western District loses its spot at the top, Texas will likely remain a popular patent venue. Before the Western District began its rise, the Eastern District of Texas was a patent litigation epicenter. At least for the near future it seems like the Western District of Texas will remain among one of the most popular patent forums; only time will tell the larger effects of the new rule.

A Manhattan Federal Jury Found Trademark Rights to Extend to the Metaverse. Why Should You Care?

March 4, 2023
Intellectual Property, Internet, Trademark Law

Carlisle Ghirardini, MJLST Staffer

Earlier this month, the federal court in the Southern District of New York issued an opinion regarding a luxury fashion brand’s trademark rights in the Metaverse – the first trial verdict concerning trademarks in non-fungible tokens (NFTs).[1] The suit was brought in January of 2022 by the Parisian fashion giant Hermès when a digital artist created NFTs of the brand’s iconic “Birkin bag” and made a profit selling these “MetaBirkins.”[2]

The key question in the suit came down to whether the NFT was likened to art, which would receive First Amendment protection, or a consumer product, which would be subject to trademark infringement liabilities.[3] A federal grand jury found the artist’s use of the Birkin name and style to be more commercial than artistic in nature, and, therefore, potentially infringing on Hermès’ trademarks depending on public perception.[4]

Trademark infringement is the unauthorized use of a mark in a way that would confuse a consumer as to the source of the product or service connected to the mark.[5] Surveys and social media evidence in this case showed confusion among NFT consumers as to Hermès’ involvement with the MetaBirkins, which led the jury to find the use of the mark to be infringing and a capitalization of the Hermès brand’s goodwill for profit.[6] Hermès was awarded $133,000 in total damages – a small win for the fashion powerhouse, but a huge win for brand owners across many different industries who now know their trademark rights may be protectable in the Metaverse.[7]

I don’t use or understand the Metaverse – why should I care about this decision?

Even for those who don’t know what an NFT is, this decision to extend trademarks rights to the Metaverse is still important. First, it is well known that many brands are now registering trademarks in the Metaverse, so if a consumer sees a brand in this realm, there is a higher likelihood of confusion of association with that virtual good or service. If people assume a connection between a brand and the illegal use of its mark, the brand is at risk of significant damage. For example, if an unauthorized user opened a Metaverse McDonald’s which gave out racy or controversial happy meal prizes, McDonald’s could face serious backlash if its consumers believed McDonald’s to be condoning such activities.[8]Although it seems like this connection may be less convincing or harmful for a big brand like McDonald’s, it was enough to compel Hermès to protect the integrity of their brand and their customers.[9] It is not only big brands that can be victims of such infringement, however. While it is easy to understand why someone would take advantage of a more recognized company due to greater traffic, this could easily happen to smaller brands we know and love. If the little coffee shop chain you frequent is hurt by such virtual infringement, perhaps by a local competitor, it could run them out of business. Connecting a brand in the Metaverse to products or values they are not aligned with could have damaging real world effects.[10]

Just as brand exposure in the Metaverse can cause harm, it also has the potential to benefit businesses. Such virtual brand display, which is cheaper than buying advertising or opening a new brick and mortar store, can translate to more business in the real world.[11] Brands have started creating virtual experiences that have driven in-store sales and served as powerful marketing. Vans shoe and skateboard company, for example, made a Metaverse skatepark in which users could earn points when “boarding” that were redeemable for discounts inside real Vans stores.[12] Chipotle released a burrito-making game that yielded “burrito bucks” for exchange in their actual restaurants.[13] As use of NFTs grows, and as brands recognize the ramifications of the Hermès lawsuit, we will likely continue to see more trademarks used in the Metaverse. Brand owners should keep in mind the dangers of failing to sufficiently protect their trademarks in the virtual space and the potential for benefits if used strategically.

Notes

[1] Reed Clancy and Alexander Curylo, Verdict Reached in MetaBirkin NFT Case, AIPLA NEWSTAND (Feb. 9, 2023), https://www.lexology.com/library/detail.aspx?g=0faf6e67-38b4-4add-971d-badd08199c0c&utm_source=Lexology+Daily+Newsfeed&utm_medium=HTML+email+-+Body+-+General+section&utm_campaign=AIPLA+2013+subscriber+daily+feed&utm_content=Lexology+Daily+Newsfeed+2023-02-13&utm_term=.

[2] Muzamil Abdul Huq et al., Hermès Successfully Defends its Trademark in the Metaverse, AIPLA NEWSTAND (Feb. 9, 2023), https://www.lexology.com/library/detail.aspx?g=6dba3b12-030d-41ff-98c6-1c2aad6468ce&utm_source=Lexology+Daily+Newsfeed&utm_medium=HTML+email+-+Body+-+General+section&utm_campaign=AIPLA+2013+subscriber+daily+feed&utm_content=Lexology+Daily+Newsfeed+2023-02-13&utm_term=.

[3] Id.

[4] Id.

[5] About Trademark Infringement, U.S. PATENT AND TRADEMARK OFFICE, https://www.uspto.gov/page/about-trademark-infringement (last visited Feb. 17, 2023).

[6] Huq et al., Hermès Successfully Defends its Trademark in the Metaverse, AIPLA NEWSSTAND (Feb. 9, 2023).

[7] Id.

[8] Joanna Fantozzi, Why Every Restaurant Operator Should Care About NFTs and the Metaverse Right Now, NATION’SRESTAURANT NEWS (Feb. 25, 2022) https://www.nrn.com/technology/why-every-restaurant-operator-should-care-about-nfts-and-metaverse-right-now.

[9] Zachary Small, Hermès Wins MetaBirkins Lawsuit; Jurors Not Convinced NFTs Are Art, N.Y. TIMES (Feb. 8, 2023), https://www.nytimes.com/2023/02/08/arts/hermes-metabirkins-lawsuit-verdict.html.

[10] Fantozzi, Why Every Restaurant Operator Should Care About NFTs and the Metaverse Right Now, NATION’SRESTAURANT NEWS (Feb. 25, 2022).

[11] Id.

[12] Andrew Hanson, Understanding the Metaverse and its Impact on the Future of Digital Marketing, CUKER (Mar. 29, 2022), https://www.cukeragency.com/understanding-metaverse-and-its-impact-future-digi/.

[13] Dani James, How Retailers are Connecting the Metaverse to real World Sales and Revenues, RETAILDIVE (Nov. 14, 2022), https://www.retaildive.com/news/retailers-connecting-metaverse-roblox-real-world-revenue/636209/.

Who Qualifies for the Patent Bar? Proposed Changes May Mean More Applicants With Computer Science Degrees Soon Will

November 27, 2022
Intellectual Property, Legal Education, Patents

Nina Elder, MJLST Staffer

Last month, the United States Patent and Trademark Office (USPTO) put out a request for comments on a proposal to amend the admission requirements for the registration examination it administers. Passing this examination, colloquially referred to as the patent bar, is required before an aspiring practitioner can practice patent matters before the USPTO. To qualify for the test, applicants must demonstrate that they have the appropriate scientific and technical training. There are three ways to qualify, but most applicants are automatically admitted under “Category A” which simply requires a degree in an approved topic. The USPTO has historically adhered strictly to its list of approved degrees; for example, “biology” is included on the list, but in the past a degree in “biological sciences” did not qualify.

In 2021, the USPTO made its first major change to the admission requirements in years by expanding the degrees accepted under Category A to include advanced degrees and 14 new undergraduate majors. Though it did not officially announce it, the USPTO also edited its Frequently Asked Questions to reflect that it no longer requires that an applicant’s degree match a Category A degree title exactly, but instead evaluates any degree that is similar to an approved degree to determine if they are equivalent. However, even after these improvements there was still a clear lack of approved computer science-related degrees, and many attorneys felt the USPTO needed to do more. The USPTO’s new proposal at least partially addresses this issue and suggests several more changes, a key one being removing the certification requirement for computer science degrees.

Currently, computer science degrees only qualify under Category A if they are certified by either the Computing Accreditation Commission or the Accreditation Board for Engineering and Technology. This is the only degree accepted under Category A that requires extra certification. Qualifying under either of the alternative routes—Category B or C—may be nearly impossible for many students with computer science degrees. Category B requires an applicant establish they have the necessary training by showing they have a certain number of credits in particular scientific topics. However, the coursework needed for a computer science degree typically does not align with the subjects required for Category B such as physics, chemistry, and biology. Under Category C an applicant can prove they have practical training by taking the Fundamentals of Engineering test, but once again the information covered for a degree in computer science may not prepare a student for such a test. 

As of November 2022, there are only 368 schools in the US with a qualifying certified computer science program. Many highly respected schools, including Stanford, UC Berkeley, and Carnegie Mellon, do not have the required certification for their computer science programs. Considering there appear to be more than 700 four-year schools that offer computer science degrees, there are likely hundreds of computer science students graduating every year that do not qualify to take the patent bar under Category A and may have difficulty qualifying under Category B or C. Even if a school becomes accredited, any student that received a degree before that accreditation does not qualify.

The certification requirement may be excluding the “best and brightest” computer practitioners, and is contributing to the lack of practitioners with relevant experience in a heavily patented area. There is a huge disconnect between the number of patents related to software and the number of practitioners with a relevant background. As of 2010, less than 5% of patent practitioners trained in a computer science-related field. While decisions such as Alice Corp v CLS Bank International have limited what software can be patented, a growing number of patents at least include some element relating to computers and more than 60% of utility patents issued in 2019 related to software. There is clearly an increasing need for competent patent attorneys with experience in software and, if adopted, the USPTO’s current proposal would increase that pool.

It has also been suggested that altering patent bar requirements may improve diversity in patent law. Despite women making up more than 37% of attorneys in the US, only 17% of patent attorneys are women. Less than 15% of patent practitioners with a background in computer science are women. The picture is even more striking when we examine racial diversity—less than 7% of all patent attorneys and agents are minorities. Shockingly, there are more male patent practitioners named Michael than women of color. The USPTO’s broadening of the accepted degrees last year was spurred by a journal article written by a law student, Mary Hannon, suggesting that changes to patent bar admission may help address the low number of women in patent law. While she acknowledged that removing the computer science certification requirement would not close the gender gap since the majority of computer science graduates are men, she pointed out that by allowing more individuals with computer science degrees to take the patent bar the overall number of women admitted to the exam may increase. 

Many have been pushing for changes to the patent bar admission requirements for years, and while it is promising to see progress being made, there is still more that can be done. Organizations such as the American Intellectual Property Law Association have suggested Category A be broadened even further to include degrees such as data science and mathematics. The USPTO has not only shown willingness to continue updating these requirements, as evidenced by the fact it is proposing to regularly consider and add new Category A degrees, but also that it is responsive to comments. For example, environmental engineering was added to the list of accepted degrees at least partially in response to a comment. Kathi Vidal, USPTO’s current director, explained the goal is to ensure the USPTO remains dynamic by recognizing the new types of degrees being awarded as society and technology evolve. In its recent request for comments, the USPTO asked commenters to weigh in on its new proposals and to submit general suggestions on updating the scientific and technical requirements for admission to the patent bar. Comments close on January 17th, 2023—if you have thoughts about the degrees the USPTO should accept under Category A, go comment!


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