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Jim Gatto is a partner in the Intellectual Property Practice Group in the firm’s Washington, D.C. office. He is Co-Leader of the Artificial Intelligence Team, the Blockchain & Fintech Team, and Leader of the Open Source Team.

Recent patent cases have made it more difficult to obtain utility patent protection for some of the functional aspects of computer software. One way to, at least partially, overcome this is to consider design patent protection for computer generated icons and certain aspects of the graphical user interface (GUI) elements of a computer program. Strategic use of design patents can be an important part of an overall patent strategy. It should be noted, however, that design patents are not meant as a replacement for utility patents, but rather, as a supplement to them.Continue Reading Design Patent Protection for Computer Generated Icons and Graphical User Interfaces

Generative AI (GAI) applications have raised numerous copyright issues. These issues include whether the training of GAI models constitute infringement or is permitted under fair use, who is liable if the output infringes (the tool provider or user) and whether the output is copyrightable. These are not the only legal issues that can arise. Another GAI issue that has arisen with various applications involves the right of publicity. A recently filed class action provides one example.Continue Reading Celebrity “Faces Off” Against Deep Fake AI App Over Right of Publicity

The National Telecommunications and Information Administration (NTIA) has issued a Request for Comments (RFC) on Artificial Intelligence (“AI”) system accountability measures and policies to advance its efforts to ensure AI systems work as claimed and without causing harm. The RFC is targeting self-regulatory, regulatory, and other measures and policies to provide reliable evidence that AI systems are legal, effective, ethical, safe, and otherwise trustworthy. It is also seeking policies that can support the development of AI audits, assessments, certifications and other mechanisms to create earned trust in AI systems that they work as claimed (similar to how financial audits create trust in financial statements).Continue Reading Another Federal Agency Issues Request for Comments on AI

On March 16, 2023, the U. S. Copyright Office (USCO) launched a new AI Initiative to examine the copyright law and policy issues raised by artificial intelligence (AI), including the scope of copyright in works generated using AI tools and using copyrighted materials in AI training. According to the USCO: “This initiative is in direct response to the recent striking advances in generative AI technologies and their rapidly growing use by individuals and businesses.” It is also a response to requests from Congress and the public.Continue Reading Copyright Office Artificial Intelligence Initiative and Resource Guide

Roblox recently announced that it is working on generative artificial intelligence (AI) tools that will help developers who build experiences on Roblox, to more easily create games and assets. The first two test tools create generative AI content from a text prompt and enable generative AI to complete computer code. This is just the tip of the iceberg on how generative AI will be used in games and a variety of other creative industries. Music, film, art, comic books, and literary works are some other uses. AI tools are powerful and their use will no doubt be far reaching. In the near term, so too will the associated legal issues. Some of the legal issues include:Continue Reading How Generative AI Generates Legal Issues in the Games Industry

The rapid rise of AI used with advertising, marketing and other consumer facing applications has caused the FTC to continue to take notice and issues guidance. For example, the FTC is concerned about false or unsubstantiated claims about an AI product’s efficacy. It has issued AI-related guidance in the past. The following is some recent FTC guidance to consider when referencing AI in your advertising. This guidance is not necessarily new, but the fact that it is being reiterated should be a signal that the FTC continues to focus on this area and that actions may be forthcoming. In fact, the recent guidance states: “AI is important, and so are the claims you make about it. You don’t need a machine to predict what the FTC might do when those claims are unsupported.”Continue Reading You Don’t Need a Machine to Predict What the FTC Might Do About Unsupported AI Claims

In Nippon Shinyaku v. Sarepta Therapeutics, the Federal Circuit held that a forum selection clause specifying that patent infringement or invalidity actions shall be filed in federal district court in Delaware made clear that any validity challenge was required to be brought in that court and that Sarepta’s IPR petitions filed with the Patent Trial and Appeal (“the Board”)  contravened the plain language of the forum selection clause.
Continue Reading Forum Selection Clause Can Preclude PTO Validity Challenges

At least three different types of marketplaces facilitate the sale and/or resale of NFTs. These include open marketplaces, curated marketplaces and proprietary marketplaces. Other variations do exist, however, and it is likely that other alternatives will be developed. In the attached article, we examine some of the differences between these types of marketplaces and business models, highlight some of the varying license terms of these marketplaces and discuss why IP owners who license their IP for NFTs often are best served by developing their own licenses to be used in connection with sale of their NFTs.
Continue Reading NFT License Breakdown: Exploring Different Marketplaces and Associated License Issues