The Briefing by Weintraub Tobin

The podcast discusses the use of AI in generating scripts and the potential copyrightability of AI-created works. It highlights a recent court ruling and lawsuit related to AI works and copyright protection. The episode explores the role of human creativity in copyright law, the impact of AI on copyright protection, and the challenges surrounding copyright in creative works involving AI.

An Illinois judge dismissed a copyright infringement claim brought by rapper Gutta against hip-hop artist Future. The court ruled that certain thematic elements in music are not protected by copyright, leading to the dismissal of the case. The discussion explores the challenges faced by artists and producers in music copyright lawsuits.

Photographer sues real estate media site for copyright infringement after photos were published without permission. Podcast explores recent copyright infringement case post the Supreme Court's decision in Warhol. Discusses fair use defense, court case arguments, and implications on use of third-party photos or video clips.

Failure to disclose relationships with a third party can have serious consequences, as discussed in this installment of The Briefing. Eric Caligiuri breaks down the key details of the Ventex versus Columbia Sportswear case, focusing on the impact of failing to disclose critical information on the legal proceeding. The failure to disclose led to sanctions and dismissal of the inter-partes dispute.

Scott Hervey and Eric Caligiuri discuss the trademark dispute in Blue Mountain Holdings v. Bliss Nutraceuticals and the concept of a naked license. They explore the ramifications of a naked license on trademark reputation and distinctiveness, and provide strategies to avoid the risks associated with it in trademark law.

The Federal Circuit Court of Appeals invalidated seven patents owned by an AI technology company after applying the two-step Alice test. Scott Hervey and Audrey Millemann talk about this decision on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here.   Show Notes: Scott: Under the Alice test for patent subject matter eligibility, the Federal Circuit Court of Appeals continues to strike down patents directed to abstract ideas. The case of People AI, Inc. V. Clary, Inc. was just such a case in which the Court invalidated seven patents owned by People AI. We are going to talk about this case and the Alice test on this next installment of The Briefing by Weintraub Tobin. Welcome to another episode of The Briefing by Weintraub Tobin. I am joined today by my partner, Audrey Millemann, a patent attorney who wrote an intriguing article titled a Prototypical Corporate Salesperson Is Not Patentable. We’ll be discussing the recent People AI v. Clary, Inc. Case and its implications on patent subject matter eligibility under the Alice test. Welcome, Audrey. Audrey: Hi, Scott. How are you? Scott: Great to have you here today, Audrey. So, let’s start by discussing the Alice test for patent subject matter eligibility. Can you explain the two-part test established by the Supreme Court in the 2014 case of Alice Corp. Versus CLS Bank International? Audrey: Yes, I can. Patent subject matter eligibility refers to whether an invention falls within categories of subject matter that can be patentable. So that’s referred to as patent eligible subject matter and by statute. And that’s federal statute. Section 101 of Title 35 of the United States Code provides that there are four categories of patent eligible subject matter, and they are articles of manufacture, machines, processes, and compositions of matter. And there are exceptions to those categories of patent eligible subject matter which the courts have decided over the years. And they include things like natural phenomenon, laws of nature, and abstract ideas. And those things are deemed to fall within patent ineligible subject matter, meaning they are not something that can be the subject of patent protection. So, the Supreme Court in Alice in 2014 developed a test for determining whether a claimed invention falls within patent ineligible subject matter, meaning whether it is something that is not eligible for patent protection. It’s a two-part test. And under the first step, the Court examines whether the invention falls within one of those types of ineligible subject matter, meaning natural phenomena, laws of nature, or abstract ideas. And if the invention falls within one of those categories, then the Court would proceed to step two. Under step two, the Court looks to see if there is some kind of inventive concept or something that improves the technology such that it takes it out of the patent ineligible subject matter and makes it into patent eligible subject matter. Now, this is a very complicated test, and courts have been struggling with how to apply it for years. Since it was decided. Scott: In the People AI versus Clary case, the Court invalidated seven patents owned by People AI based on the Alice test. Can you explain the basis of that Court’s decision? Audrey: Yes. People AI is a company that provides business analytics or software for customer relations management. So, they developed software that would take the notes and contacts that a salesperson would have. So, their notes of meetings, telephone calls, emails, and the software would automatically match it up to the particular customer that was involved. So, this was previously done by salespersons with using a pen and a notebook. And People AI developed software that would automate that process, which made it much more reliable, more accurate, so it would be less errors and much faster. And they patented that software, which basically was a data management kind of a system. Scott: And People AI sued Clary Inc. And Set Sail Technologies, Inc. For patent infringement. Correct. Audrey: Yes, they did. The defendants were competitors of People AI, and they sued them for People AI sued them for patent infringement of seven of their patents. The defendants then moved for judgment on the pleadings in the district court arguing that those patents were invalid because they were directed to patent ineligible subject matter, meaning abstract ideas. The district court applied the Alice test, as we’ve discussed it, and found that, yes, the patents are invalid because they are directed to abstract ideas. They’re directed to what a salesperson would do. And automating what people used to do manually does not make something patentable. The Federal Circuit, which is the Court of Appeal that addresses all appeals from patent infringement cases, affirmed the district court’s decision and held that automating that previously manual process doesn’t necessarily lead to patentable subject matter. Scott: Now, the court’s ruling seems to emphasize the importance of an inventive concept. Can you shed some light on why the court deemed these patents as lacking such a concept? Audrey: Well, yes, although it’s difficult because, as I said, that test is very complicated. But the decision hinged on the fact that the court believed there was no inventive concept, there was nothing in the invention that would transform and that’s a key word that the Supreme Court used that would transform patent ineligible subject matter, an abstract idea, into something that was patentable. And the Supreme Court has been very clear that simply using a computer to automate something that has previously been done manually doesn’t add an inventive concept. You need something that changes the technology or transforms it beyond merely automating. Scott: It very interesting. So, with that in mind, what are some key takeaways for inventors and companies looking to patent their inventions after this ruling? Audrey: Well, the key takeaway is really that companies need to be very cautious about trying to patent things that are simply transforming manual processes into automated or computer managed processes. They have to be very cautious in doing that and consider, is there something about their invention? Can they describe something about their invention that transforms what is an abstract idea into something that is more patent eligible? Scott: And with the Alice test being used to reject patent claims during the examination process and invalidate patents in courts, how can applicants better navigate this framework to improve their chances of obtaining a patent? Audrey: Well, the first thing they can do is to carefully analyze what their invention is, to determine if it really does fall within patent ineligible subject matter. And if it does, it may be worth considering whether one should apply for a patent at all. If the decision is made to go forward and apply for a patent in such a situation, then the goal is to try to describe the invention in such a way that there is an inventive concept, or that the invention transforms what is something ineligible into something that is eligible subject matter. And also important in that is the patent attorney who is drafting the patent application. That person has to be very careful and thoroughly drafting to make sure that they describe whatever possible inventive concepts the invention has. And also, they need to be thorough in their arguments with the Patent Office, because that prosecution of the patent is going to go on for several years. They need to be very careful in arguing to try and demonstrate that the invention does, in fact, have an inventive concept beyond simply automating a previously manual process. Scott: Well, Audrey, thank you very much for shedding light on People AI versus Clary Inc. And the complexities of patent subject matter eligibility under the Alice test. You always do a really great job of making complex matters a little bit more understandable, and this discussion certainly helped me better appreciate the importance of inventive concepts when seeking patents. The road to patent protection will always have its challenges, but with the right approach, inventors and companies can safeguard their innovations effectively. Again, Audrey, thank you so much. It was a pleasure having you on the briefing. Audrey: And thanks, Scott, for having me. Scott: Well, that wraps it up for today’s episode of The Briefing by Weintraub Tobin. We hope you found this discussion interesting and valuable. Please remember to subscribe to our podcast and to our YouTube channel so you never miss an episode.

Exploring the concerns of deepfakes and AI-generated likeness in the entertainment industry, discussing the limitations of California's right of publicity statute and the challenges of making a common law claim, exploring New York's right of publicity statute and potential conflicts, examining the use of AI-generated likeness in modern day dramas, and discussing a Supreme Court case on broadcasting performer's act and right of publicity.

Brandy Melville and Redbubble are involved in a trademark infringement lawsuit. They discuss the legal standard for determining liability and contributory infringement. The court ruling in favor of Redbubble in a previous case is also explored, raising questions about online marketplace liability for trademark infringement.

Alexis Hunley v. Instagram has been referred to as one of the top copyright cases to watch this year. Scott Hervey and Jamie Lincenberg discuss this case on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here.   Show Notes: Scott: It’s been referred to as one of the top copyright cases to watch this year. The case Alexis Hunley v. Instagram. It questioned the scope and validity of the server test, a copyright doctrine that was established by the 9th Circuit and has since been rejected by a number of other courts. The 9th Circuit has spoken, and we’re going to talk about this case on the next installment of the briefing by Weintraub Tobin. Alexis Hunley versus Instagram involved a potential class action claim against Instagram related to its embedding practice. The plaintiffs were two photojournalists whose photographs were featured on websites of various media outlets without a license. Hunley alleged that Instagram provided an embedding tool which allowed the photos or videos posted on an Instagram account to be simultaneously displayed on third party websites. Hunley alleged that these third parties who displayed her photos via the use of Instagram’s embedding tool, committed direct copyright infringement and that Instagram was secondarily liable for infringement. Jamie: Embedding is the process of copying unique HTML code assigned to the location of a digital copy of a photo or video published to the Internet, and the insertion of that code into a target web page or social media post enables that photo or video to be linked for display within the target post. Scott: The lower court tossed the case, holding that the third-party media companies that displayed the photographs Time and BuzzFeed, to name a few, were not liable for direct copyright infringement, and as a result, Instagram was not liable for secondary copyright infringement. The district court concluded that the 9th Circuit’s 2007 opinion in Perfect Ten versus Amazon, which established the server test, precluded relief. To Huntley to violate the public display right infringers must display copies of the copyrighted work. The district court held that the embedding websites do not store an image or video and do not communicate a copy of the image or video and thus do not violate the copyright owner’s exclusive display. Right under perfect Ten, an alleged infringer displays an image in violation of a copyright holder’s rights only if a copy of the image is embodied stored on a computer’s server or other storage device. Jamie: The court concluded that because Time and BuzzFeed did not store the image files on their actual servers, they were not liable for direct copyright infringement, and because there was no underlying direct infringement, Instagram could not be secondarily liable. The court invited the plaintiffs to raise their issue with the 9th Circuit if they believed the server test violated copyright law, and the photographers took the court up on its offer. Scott: In June 2022, the photographers filed an appeal with the 9th Circuit arguing for a review of the applicability of the server test. They claimed that the server test was outdated and impractical and argued that it had been widely rejected by virtually every court throughout the country that had considered the same issue. Jamie: In their appeal, the photographers argued that the server test is a technological loophole that did not exist when the Copyright Act was enacted by Congress, which has no support or explanation in the plain language of the Copyright Act and for which no public policy justification exists. Scott: The photographers also argued that the District Court went well beyond the scope of applicability of Perfect Ten. Perfect Ten applied to the use of embedded images in a search engine, not third-party website publishers. The plaintiffs contended that no court has expanded the server test to apply to embedding technology from Instagram or other social media platforms to third party website publishers. Jamie: The photographer’s appeal didn’t quite go as hoped. The 9th Circuit rejected their arguments that Instagram’s embedding tool violated their right of public display and also rejected all of their arguments for getting rid of or limiting the scope of the server test. Scott: That’s right. The Court rejected Hunley’s argument that the server test should only apply to search engines and should not extend to content embedded into commercial websites from social media platforms. The Court said that its holding in Perfect Ten did not rely on the unique technology of a search engine, but rather the plain language of the Copyright Act. Jamie: And the Court also rejected Hunley’s argument that the server test is inconsistent with the Copyright Act. Rather than address the specific challenges raised by Hunley, the Court simply said that it will not consider these arguments in any detail because they are foreclosed by Perfect Ten. This is due to the fact that the 9th Circuit can’t overrule its own holding in Perfect Ten outside of Bank proceeding unless there has been a statutory change or an intervening Supreme Court decision. Scott: The court also rejected Hunley’s argument that Perfect Ten has essentially been overruled by the Supreme Court’s decision in ABC versus Arrow. The Court noted that Arrow involved a different right the right of public performance and not the public display right. And the difference between these rights mandates a different form of analysis. Jamie: At the beginning of the Court’s opinion, a fair amount of time was spent discussing the technical aspects of embedding. Scott: Yeah, that’s true. It seems that the Court did this so that the readers of the opinion could understand the Court’s discussion of how the right of public display is infringed. The Court also drew an analogy of embedding to hypertext linking. Both are lines of code which cause a user’s browser to display an image at the target location. And generally, courts have found that hypertext linking is not direct infringement. Also, I think the Court was trying to point out that the host server retained full and complete control over the embedded image, that the host server can change the image. It can prevent the display of the image altogether by disabling the embedding functionality. And I think that control element was and is and remains an important element in the server test. Jamie: So, Scott, is this the end of the line for Hunley and the final challenge to the server test. Scott: It’s probably not the end of the line for Hunley, and it certainly is not the last challenge to the server test. The server test is the law of the land in the 9th Circuit, but it’s been rejected by judges in the Southern District of New York. So, there is bound to be a discussion in those states that have not officially weighed in yet. And maybe we’ll have a circuit split that may require the Supreme Court to weigh in. As for Hunley, the Court said that it can’t overrule perfect ten outside of an in-bonk review from the entire 9th Circuit Court or an intervening decision from the Supreme Court. So, it’s a fair bet that Hunley will go one of those two routes. Jamie: That’s really interesting, Scott. Thank you for sharing that with us. We will keep up with what happens with Hunley if there is an appeal. Scott: Yeah, we will definitely do that. Jamie, thanks for joining us today. Jamie: Thanks for having me. Scott: Well, that wraps it up for this installment of The Briefing by Weintraub Tobin. We hope you enjoyed this episode. Please remember to subscribe to our webcast and to our podcast asked and if you’re interested in more content, well, we have lots of episodes for you to.

The Ninth Circuit recently issued an opinion affirming that Zillow infringed thousands of copyrights owned by a real estate photography studio. Scott Hervey and James Kachmar discuss this case on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel, here.   Show Notes: Scott: In 2019, the 9th Circuit affirmed the trial court’s judgment against Zillow Group based on Zillow’s use of VHT’s photographs on Zillow’s Digs platform. In June of this year 2023, this case found itself back up to the 9th Circuit. I’m joined by my partner, James Kachmar, to talk about this recent decision on this episode of The Briefing You. Thanks for joining us. I’m joined today by Weintraub litigation partner, James Kachmar. James, thanks for joining us today. James: Thanks, Scott, for having me. Scott: Certainly, James. Let’s start by providing some context for our viewers and listeners. Could you briefly explain the background of the case between VHT and Zillow Group? James: Sure, Scott. Everyone should know what Zillow is the website with homes for sale. VHT is the largest professional real estate photography studio in the US. It is generally engaged by real estate agents and brokers to photograph homes for sale. These photos are edited, loaded into VHT’s database, and then sent back to the agents and brokers pursuant to a license agreement to help promote their listings. VHT’s photographs appear on Zillow’s website one of two ways. First, Zillow will use these photographs as part of showing property listings on its website. Second, Zillow would feature some of these photographs on their website, Digs, to offer users or give people some home improvement ideas. VHT filed a copyright infringement lawsuit against Zillow, claiming that the photos were being used without their permission. Scott: In the previous trial, the 9th Circuit found in favor of Zillow on most counts, but reversed the findings of fair use. Regarding the use of the photos on the Diggs website. Could you elaborate on how the court reached that conclusion? James: Sure. The 9th Circuit in the first case, which is referred to as Zillow One, determined that Zillow had added searchable functionality on its Zigs website, which made it not a fair use of VHT’s photographs. They concluded that Zillow had committed copyright infringement in doing so. However, the court in Zillow One held that Zillow was not liable for direct, secondary or contributory infringement and remanded the case back to the district court for further proceedings. This resulted in further motion practice and a second trial. Scott: The 9th Circuit addressed the issue of copyright registration and whether VHT’s claims should be dismissed due to incomplete registration. Could you explain the court’s reasoning and how it applied the U.S. Supreme Court’s fourth estate decision? James: Sure. Just days before the 9th Circuit rendered its opinion in Zillow One, the US. Supreme Court issued its decision in Fourth Estate Public Benefit versus Wallstreet.com, in which it found that the registration requirement to bring a copyright infringement claim can only be satisfied when the Copyright Office has registered the copyright, not merely when the application for registration is filed by the plaintiff. When the case went back to the lower court, Zillow argued that because VHT had filed its lawsuit before the Copyright Office had registered its copyrights, the action should be dismissed. The lower court, however, found that dismissal would cause irreparable harm to VHT, especially given the extensive litigation to date, and held that excusing this requirement did not undermine the purpose of the Act’s pre-filing registration requirement. The 9th Circuit, on a second appeal, agreed with the court’s finding in this regard. Scott: The Supreme Court’s decision in Fourth Estate was due to what had been a split among the Circuits with regard to the requirement the pre-filing requirement of the registration copyright registration. The 9th Circuit had long held that the mere filing of the registration application was required, while other Circuits had held that the actual issuance of the registration was required prior to the commencement of a lawsuit. James: That’s correct, Scott. Scott: Another issue main issue that the 9th Circuit considered in this case was whether VHT’s photos constituted a compilation or individual work for the purpose of statutory damages. James, how did the court approach this question, and what factors influenced its decision? James: Sure, Scott. As I mentioned earlier, VHT would load the photographs into its database, and VHT had applied to register its database of its photos as a compilation with the Copyright Office. The court had to determine whether the photos qualified as one work under the Copyright Acts provision that treats all parts of a compilation as a single work for statutory damages. VHT argued that it owned copyrights in both the individual photos as well as the database, while Zillow claimed that the database registration automatically made the photos part of a compilation. In essence, if the court accepted Zillow’s argument, there would only be one copyright violation I. E. The database. However, on the other hand, if the court accepted VHT’s argument that each photo in the database was its own separate work, then the use of each photo would be a separate copyright violation, allowing for damages for each photo. In the end, the court rejected Zillow’s argument and emphasized that the individual photos had separate independent economic value from VHT’s database. Scott: That makes sense, James. In the first trial, VHT was awarded damages of one $500 per image due to willful infringement by Zillow. However, the district court awarded different amounts in the retrial. Could you explain the reasoning behind this decision and VHT’s appeal? James: Sure Scott. The 9th Circuit determined that the higher damages awarded in the first trial were because there was a specific finding of willful infringement by Zillow, which was later reversed on the retrial. The evidence showed only innocent infringement by Zillow, and the court concluded that the district court properly awarded lower damages amount because the evidence showed innocent infringement and not the willful infringement that had existed in the first trial. Therefore, the 9th Circuit rejected VHT’s appeal for higher damages. Scott: James, thanks for discussing this case with us today. I think this case serves as a reminder of the importance of the Fourth Estate case, the importance of pre-filing copyright registration applications before commencing litigation, and I also think this case serves as a reminder of the importance of copyright diligence in the digital age and the considerations courts make when determining infringement and damages. As you and I know, it’s an evolving area of law, and it’s crucial for content creators and users to understand their rights and their obligations. James: Thanks, Scott. It’s been my pleasure. Thank you for having me. Scott: Well, that wraps it up for this installment of The Briefing by Weintraub Tobin. Please remember to like and subscribe to both our podcast and our YouTube channel. And if you found this piece interesting, well, we’ve got over 100 episodes for you to choose from, and you can also visit us at theiplawblog.com.