IP Blog

Intellectual Property Blog

The BIRDIE Act: A Proposed Expansion of Copyright Protection to Golf Courses

On February 5, 2024, the Bolstering Intellectual Rights against Digital Infringement Enhancement Act (H.R. 7228), known as the BIRDIE Act, was introduced in the House of Representatives. The BIRDIE Act proposes an expansion of Title 17 of the United States Code to extend the copyright protection provided to architectural works to golf courses.

An “architectural work” is presently defined in 17 U.S.C. 101 as “the design of a building as embodied in any tangible medium of expression, including a building, architectural plans, or drawings. The work includes the overall form as well as the arrangement and composition of spaces and elements in the design, but does not include individual standard features.” The BIRDIE Act proposes amending the definition of “architectural work” by striking “drawings” and inserting “drawings, and the design of a course on which golf is played (except for any course on which mini golf, or other similar game is played) as embodied in any tangible medium of expression, including an architectural plan or drawing.” Moreover, the BIRDIE Act also proposes expanding the term “features” to include landscaping, an irrigation system, a path, a golf green, a tee, a facility in which golf is practiced, a bunker, a lake, and/or a topographic feature.

The BIRDIE Act would apply to works created on or after December 1, 1990 and works that were unconstructed and embodied in unpublished plans or drawings on December 1, 1990. For the avoidance of doubt, the BIRDIE Act is a bill and not yet law.

The text of H.R. 7228 can be accessed here.

Appellate Reversals of §2(d) Refusals by USPTO Trademark Examining Attorneys: 15%

Recent statistics from the U.S. Patent and Trademark Office (“USPTO”) for 2023 indicate an 85% affirmance rate of §2(d) refusals of  trademark applications on appeal to the Trademark Trial and Appeal Board (“TTAB”).  This in generally in line with historic rates.

A trademark application is reviewed by a USPTO Trademark Examining Attorney on a variety of grounds, but most notably on whether there is a conflict with a prior-registered mark.  A §2(d) refusal – so named because of the applicable section of the Lanham Act – is a determination that the applied-for mark may not be registered because it “so resembles a mark [previously] registered” that it is “likely to cause confusion, or to cause mistake, or to deceive.”  That decision, however, is based on many subjective factors, including the similarity of the marks in appearance, sound, connotation, and commercial impression, the similarity (or relatedness) of the goods or services under the marks, the similarity of the channels of trade, the strength of the prior-registered mark, and many others.  If refused, a trademark applicant may appeal to the TTAB, but these most recent statistics suggest a 15% chance of reversing the §2(d) refusal.

Given the tremendous deference that the TTAB gives to the mostly-subjective opinion of an individual USPTO Examining Attorney in issuing a §2(d) refusal, trademark searching prior to filing a trademark application continues to be extremely valuable, often providing an experienced trademark attorney with valuable information about how best to tailor a trademark application to be more likely to avoid this type of refusal in the first place.

Disney’s Steamboat Willie Mickey and Minnie Mouse Characters Enter the Public Domain

As of this month, the Steamboat Willie versions of Disney’s Mickey and Minnie Mouse characters are no longer protected under the U.S. copyright laws. The iconic Disney cartoons have officially entered the public domain nearly one-hundred (100) years after the 1928 release of the short film Steamboat Willie, in which Mickey and Minnie Mouse were introduced for the first time. While Disney’s copyright protection in Steamboat Willie was initially scheduled to expire in 1984, the copyright laws were amended in 1976 and then again in 1998, ultimately extending copyright protection in works of authorship for the life of the author plus seventy (70) years. Disney was reportedly involved in the lobbying efforts that drove those changes, alongside other entertainment companies. As a result, Disney’s copyright protection in Steamboat Willie was extended through 2023. Now, under U.S. law anyone can use only the Steamboat Willie versions of Mickey and Minnie Mouse without committing copyright infringement. Newer versions of the Mickey and Minnie Mouse characters remain protected.

In the United Kingdom, AI Cannot be an Inventor for a Patent

The debate over the role of artificial intelligence (AI) in patent law has been a topic of global discussion for several years. The United Kingdom’s Supreme Court has recently contributed to this discourse, delivering a judgment that aligns with many other countries’ boundaries of AI’s role in patent applications. Per the UK’s Patents Act 1977, this ruling finds that an inventor must be a natural person, effectively precluding AI systems from being acknowledged as inventors.

As in many other courts across the globe, the UK’s Supreme Court’s decision hinged on the definition of an ‘inventor.’ Within the context of the Patents Act 1977, the Court analyzed the Act’s language, concluding that the Act defines an inventor as the ‘actual deviser’ of an invention that unambiguously refers to a human being. This interpretation underscores a fundamental principle in patent law: recognizing human creativity and ingenuity as a core of invention.

This decision by the UK Supreme Court is a national statement and a significant marker in the global legal landscape concerning AI and intellectual property. It aligns with the stance of several other nations, reinforcing the notion that AI, despite its advanced capabilities, cannot replace the human element in the context of patent law. This ruling can have far-reaching implications, potentially influencing future legislative developments and judicial decisions in other countries and shaping the global approach to AI and patent law.

White House Proposal Suggests “High Prices” Should Be Factor in Decision to Compel Licensing of Taxpayer-Funded Inventions

Today, the White House released a statement proposing new action to lower health care and prescription drug costs. Among these proposals, is a new framework that would allow the federal government additional leeway in granting compulsory licenses to other drug manufacturers when the cost of taxpayer-funded and patented drugs is deemed to restrict access to the drug. The Federal Government has long had the ability to compel licenses to taxpayer-funded and patented drugs under the Bayh-Dole Act of 1980, if the drug was developed with government funds and is “not accessible to the public.” Historically, the accessibility of a drug was determined by the patent owner’s ability to supply the drug in sufficient quantities. The proposed new rule, promulgated under the Department of Commerce and Health and Human Services, would also allow the government to consider the price of a drug in determining whether it is “accessible to the public.” The proposed rule is currently open for notice and comment by the public.

Franchise Fees Imposed Through Franchisor Operations Manuals Violate Federal and State Law If Not in FDD (Washington State Opinion)

National franchisors should take note that Washington State released Franchise Act Interpretive Statement No. 9 (the “Statement”) discussing the disclosure of fees to prospective franchisees in the Franchise Disclosure Document (FDD) prior to the inception of the franchisor-franchisee relationship. The question presented was whether a franchisor may impose fees on the franchisee through its operations manual or otherwise, where such fees were not disclosed in the FDD.

It is commonly known in the franchising industry that franchisors generally keep the substantive contents of their operations manuals – to which franchisees are normally bound –  confidential. Some franchisors give their prospective franchisees the opportunity to review the franchise’s operations manual, but usually only after signing a confidentiality agreement, for example. Even when such an opportunity is available, however, not all franchisees are actually aware of it or otherwise elect to forgo their chance to review the manual. Nevertheless, some franchisors list additional fees in their operations manuals that are not disclosed in their respective FDDs.

Federal law states that an FDD must disclose “all fees and payments, or commitments to pay, for services or goods received from the franchisor or any affiliate before the franchisee’s business opens.” 16 CFR 436.5(e). Further, “all other fees that the franchisee must pay to the franchisor or its affiliates, or that the franchisor or its affiliates impose or collect in whole or in part for a third party,” must be disclosed as well. Accordingly, Washington state took the position in its Statement that the imposition of additional fees via an operations manual violates both federal and Washington state law, when such fees are not also disclosed in the FDD.  Such violations may entitle franchisees to a host of legal remedies against a franchisor.

The entirety of Franchise Act Interpretive Statement No. 9 is available here.  For more information about franchising, please contact Keith Kanouse and Kelly Malloy.

Pro Bono Services to PAMM, Corporate Luncheon

Firm Partners Oliver Ruiz and John Malloy attended the 15th Annual Perez Art Museum Miami (PAMM) Corporate Luncheon honoring philanthropic partners. The Firm is honored to represent PAMM on a pro bono basis with respect to Intellectual Property matters, as it does for many other non-profits in our community.

USPTO Issues Design Patent No. D1,000,000

The United States Patent and Trademark Office celebrated a milestone this week as it issued the millionth design patent. The patent was issued to Agustina Huckaby of Fort Worth, Texas and is for a Dispensing Comb.

Design patents are one of the three types of patents issued by the United States Patent and Trademark Office, the other two being utility patents and plant patents. Design patents are for new, original, and ornamental designs as compared to utility patents, which are for new, non-obvious, and useful inventions. The firm routinely assists its clients with both forms of patent protection from its offices in Miami, Boca Raton, and Jacksonville.

AI-Generated Artwork Denied Copyright Protection by U.S. District Court

This is an update to a blog post dated February 25, 2022.

On August 18, 2023, the U.S. District Court for the District of Columbia released an Opinion denying Plaintiff Stephen Thaler copyright protection for A Recent Entrance to Paradise, a work of visual art generated by an artificial intelligence (AI) system called the “Creativity Machine.” The U.S. Copyright Office denied copyright registration for the artwork last year due to a lack of human authorship and Thaler filed suit under the Administrative Procedure Act (APA) in response, calling the Copyright Office’s decision an “arbitrary, capricious . . . abuse of discretion” that was “not in accordance with the law, unsupported by substantial evidence, and in excess of [the Office’s] statutory authority. . . .” The APA provides for judicial review of a “final agency action for which there is no other adequate remedy in court” and requires the agency to “defend its actions based on the reasons it gave when it acted.”

While the Court agreed with Thaler that “copyright law has proven malleable” throughout history, the Court opined 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.” The Court further noted that “[c]opyright has never stretched so far . . . as to protect works generated by new forms of technology operating absent any guiding human hand.” Accordingly, the Court found that the Copyright Office acted properly in denying copyright registration for A Recent Entrance to Paradise, stating that human authorship requirement remains a “bedrock requirement” of copyright.

This case is THALER v. PERLMUTTER, Register of Copyrights and Director of the United States Copyright Office, et al., Civil Action No. 22-1564 in the U.S. District Court for the District of Columbia.