Category: Volume 13, Issue 2

By Runhua Wang

from Volume 13 (2023-2024)

Download this Article in PDF format from the Jerome Hall Law Library’s Digital Repository.

Abstract

The U.S. Copyright Office (the “Office”) unwaveringly refuses to register copyrights for artworks created by artificial intelligence (“AI”) systems. The prima facie reason is a lack of authorship because the U.S. copyright regime recognizes only humans as authors. However, the fundamental reason lies in the fact that legislators have not yet determined whether to grant copyrights to AI users. Despite adjustments made by the Office in response to the use of AI systems in creation, the agency’s implementation of copyright statutes suggests that it remains extremely conservative, rejecting any AI-generated content (“AIGC”) from copyright registration.

Will the copyright regime continue to exclude AIGC from copyright protection, and what are the probable consequences of this exclusion? This essay revisits the Office’s responses to copyright applicants regarding AIGC and elucidates the standards applied by the Office. Based on these standards and their underlying rules, the essay provides suggestions to the Office and predicts the probable future of the authorship requirement in the copyright law.

By Alyssa Yoshino

from Volume 13 (2023-2024)

Download this Article in PDF format from the Jerome Hall Law Library’s Digital Repository.

Abstract

The United States Patent and Trademark Office (“USPTO”) has recently been characterized as having a “penchant” for refusing trademark registrations on the grounds of failure to function. This trend has come with commentary, both praising the doctrine’s ability to efficiently supplement the distinctiveness analysis by assessing use and criticizing the inconsistent application of the doctrine. The sources of this academic commentary, from Alexandra J. Roberts and Lucas D. Cuatrecasas, serve as the heads of two camps regarding the failure to function doctrine. The first encourages an increased application of the doctrine as a combined distinctiveness and use analysis. The second encourages the application of the doctrine separately from distinctiveness.

This article serves two purposes: (1) to explore how alleged trademark infringers may use and interpret the existing failure to function doctrine to defend themselves and (2) to propose a framework for the failure to function doctrine that both makes sense of existing guidance and seeks to further a policy objective. Part I provides a brief overview of the statutory basis of the failure to function doctrine. Part II explores the merits and shortcomings of the current failure to function doctrine. Part III examines how a defendant may raise the existing failure to function doctrine to ultimately argue no trademark infringement. Part III expands on how three existing doctrines can be used to argue that a mark fails to function. Part IV proposes a middle ground between the Roberts and Cuatrecasas camps in which the failure to function doctrine, as currently defined by the USPTO, can be applied to trademark litigation. This middle ground takes a hybrid empirical-normative approach that considers policy in light of existing USPTO guidance and caselaw.