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The (White) Person of Skill in the Art?

Jordana Goodman & Khamal Patterson, Access to Justice for Black Inventors, 77 Vand. L. Rev. 109 (2024).

Persons having ordinary skill in the art (PHOSITAs) play a number of important roles in patent law. The validity of a patent may, for instance, depend on whether PHOSITAs would likely have developed the claimed invention. A PHOSITA is a hypothetical person, like the “reasonable person” in torts. But are they also (effectively) White? If so, what does that mean for our patent system? These aren’t entirely new questions, as past articles (including these) have at least raised the issue. Goodman and Patterson enrich this literature with two case studies involving patent applications for useful inventions related to Black hair care. They show how cultural gaps between Black inventors and (mostly White) patent attorneys and patent examiners can create significant hurdles to effective patent protection.

This is mainly due to how patent protection is obtained. Unlike a copyright, which arises automatically when the conditions of the Copyright Act are satisfied, a patent must be granted by the U.S. Patent & Trademark Office (USPTO). To obtain a patent, an inventor or their assignee must submit an application which is then substantively examined by a person with technical skill in the relevant area. The process is complex enough that applicants generally seek the services of a patent attorney or agent to help them draft and prosecute the application.

Most patent attorneys and agents are White, as are most patent examiners. Thus, in practice, the PHOSITA on whose judgment patentability depends effectively ends up being a White person of skill. This might not matter (or matter too much) when drafting and evaluating certain types of patent claims. But, as Goodman and Patterson show here, it can create critical problems for certain inventions, such as those relating to Black hair care.

One case study examines two Black inventors’ experience in obtaining a patent for a new and innovative hair sculpting tool. As Goodman and Patterson explain:

The hair sculpting device is colloquially referred to as a hair sponge, and has a handle portion attached to a pliable portion (sponge) with bores spaced and sized to shape and style hair. Their hair sponge created a twisted hair style within minutes when the hand-twisting method took hours. This could be used for children and adults who did not have the time, money, or patience for a hand-twisted style, and was versatile enough to work for those with short hair and long hair.

Based on this description, the innovation and value of the invention seem clear. But after reviewing the history of the examination, Goodman and Patterson suggest neither the attorney who drafted the application nor the examiner who evaluated it understood the innovation or appreciated its value. The authors show how these understandings (or misunderstandings) could have materially affected the prosecution process, resulting in a patent that may have been narrower (and thus less valuable) than what the inventors may have been entitled to.

In a second case study, Goodman and Patterson examine a reverse situation: A patent prosecuted by a pro se inventor. This inventor understood the culture and the value of the invention, but lacked formal education in the law and experience in patent administrative processes to obtain the optimal patent. Even though the inventor obtained a patent, it was likely narrower than it might have been had the patent examiner had a broader cultural perspective on this type of innovation.

So what to do? Goodman and Patterson “propose amending elements of the patent system to reduce the cultural capital gaps between practitioners, examiners, and clients. This includes amending intake processes, advancing USPTO search tools, and improving access to competent pro bono services and pro se support.” They further suggest the USPTO “explore employing a set of anthropologists or sociologists” to work on these issues. They also suggest various ways that law schools could help prepare culturally competent attorneys.

In particular, Goodman and Patterson suggest that the (mostly White and mostly male) people who are currently allowed to prosecute patent prosecutions—i.e., those with scientific or technical educations—need more cultural education. Another idea is to open the doors to the patent bar to more people who already have the relevant cultural knowledge.

The USPTO has long required that all patent practitioners have scientific or technical backgrounds. But is that really the most relevant type of expertise for all inventions? Goodman and Patterson note that “[t]he cultural capital necessary for [understanding and evaluating] Black hair care inventions” includes “including knowledge of Black hair texture and style, perceived monetary value of the Black hair care industry, and existing product expertise.” The inventions discussed in this article—while certainly innovative and valuable—do not seem so technologically complex that they would require a degree in engineering to prosecute.

There is now precedent for opening up the patent bar to people with specifically relevant knowledge. In November, the USPTO announced that it was creating a system of limited admission to allow people with art & design backgrounds to prosecute design patents.

So what if, in addition to trying to make sure people who currently qualify to be registered patent practitioners (i.e., those with certain technical educations or experiences) get more cultural education, we allowed more people with the relevant cultural education and experiences to become registered patent practitioners? Perhaps inventors like the ones featured in this article would be better served if the patent bar were opened up to allow people with this type of cultural knowledge to prosecute (and thus develop expertise in prosecuting) patent applications. In this way, Goodman and Patterson’s article also adds to the important work done by others (such as Will Hubbard and Mary Hannon) in challenging the patent-bar eligibility status quo.

Cite as: Sarah Burstein, The (White) Person of Skill in the Art?, JOTWELL (March 12, 2024) (reviewing Jordana Goodman & Khamal Patterson, Access to Justice for Black Inventors, 77 Vand. L. Rev. 109 (2024)), https://ip.jotwell.com/the-white-person-of-skill-in-the-art/.

Taxing Collusion

Rachel Landy, Downstreaming, 65 B.C. L. Rev. ___ (forthcoming, 2024).

Commentators have long raised the alarm about over-consolidation in the entertainment industries and the resulting barriers to entry seen in the downstream market. One line of scholarship identifies copyright law as a lever that policymakers might use to promote new entry into the copyright industries. Another looks to antitrust law to alternately break up, or prevent, over-consolidation. Some scholars have suggested utilizing both copyright and antitrust. Still others, myself among them, have expressed skepticism in the ability of either copyright or antitrust to effectively remedy the problem, and instead hope to borrow regulatory ideas from other contexts.

In an engaging new article, Rachel Landy takes a fresh look at the challenge of over-consolidation and power in the music industry, and proposes two novel approaches­­—tax and mandated transparency—for restoring competition and encouraging market entry in the streaming music space.

Using the book publishing industry as a foil, Landy describes the music industry as an uber-concentrated market controlled by a mere three record labels—the perfect setting for “braiding” formal contractual arrangements and informal industry norms in a way that breeds trust and information-sharing among the participants, to the detriment of the platforms and consumers. Braiding, she explains, has allowed the music industry to retain control over the distribution of its content through both formal mechanisms like most-favored nations (MFN) clauses, and informal ones like tacit collusion and parallel pricing, all while evading any violation of antitrust law. Landy argues that braiding affords the labels an undeserved surplus while thwarting innovation in the space, all to the detriment of consumers.

After summarizing some of the literature on restoring competition in the music industry through copyright, antitrust, or both, Landy suggests two alternate approaches aimed at decreasing the labels’ incentives to coordinate, or increasing their incentive to defect, or both. First, she makes a call for mandatory disclosure of contract terms as a means of discouraging so-called tacit collusion. While this would inarguably increase transparency, it would also run counter to a core (and requisite) principle of private ordering; namely, that it is private.

Her other (and, in my opinion, most promising) proposal is to utilize tax law—a mechanism frequently used to influence behavior, but that has not (to my knowledge) yet been applied in the entertainment context—to discourage parallel behavior amongst the record labels. She essentially argues for a tax on any revenues owing to the parallel practices engaged in by the labels; i.e., revenues that they would not have earned if recorded music was a competitive marketplace. Specifically, Landy proposes imposing a higher tax rate on any revenues earned by virtue of an MFN on price. She also proposes a new tax be imposed on any breakage—i.e., the amount that the labels earn from a minimum guarantee unrelated to the underlying per-stream value of the licensed works. If the minimum guarantees come down and the labels are forced to compete on price, she reasons, the market will open up to new entrants. While Landy’s proposal is made in the music context, it might be applicable to other content industries as well.

The idea of a sort of “collusion tax” is intriguing. One thing I like about Landy’s tax proposal is that it is arguably consistent with taxes that we see in other contexts­—e.g., luxury taxes and excess-profit taxes—such that it doesn’t necessarily come off as punitive. We’d expect the industry to balk at any measure or regulation that may be perceived as penalizing the labels for employing sound business measures—like MFNs—to increase revenue, but because tax law treats revenue from different sources differently as a matter of course, the proposal belies at least the most obvious prospective critique.

Of course, the numbers required for the proposed tax calculations will not be easy to come by, and are ripe for manipulation. A tax on the labels’ MFN and breakage overage in addition to the tax they already pay on earned revenue may also be viewed as double-dipping on the part of the state. Given the complexity of the recorded music and downstream markets, higher tax liability alone is unlikely to definitively unravel consolidation in the music industry, but it’s a step in the direction of more creative thinking when it comes to checking industry consolidation, and I think that’s a good thing.

Streaming is not the first new-fangled technology to disrupt traditional business models in the music industry, and it won’t be the last. Indeed, the multitude of class action infringement suits against generative AI developers suggests we may be just getting started. Landy’s article is an insightful contribution to a growing body of scholarship that looks at the way law interacts with the copyright industries, and is recommended reading for scholars who aspire to strike the ever-elusive balance between incentivization and access.

Cite as: Kristelia García, Taxing Collusion, JOTWELL (February 28, 2024) (reviewing Rachel Landy, Downstreaming, 65 B.C. L. Rev. ___ (forthcoming, 2024)), https://ip.jotwell.com/taxing-collusion/.

Auratic IP in a Culture of Copies

Stefan Bechtold & Christopher Jon Sprigman, Intellectual Property and the Manufacture of Aura, 36 Harv. J.L. & Tech. 291 (2023).

People often want to experience aura, especially from the products we purchase. Professors Bechtold and Sprigman explore this phenomenon in their interdisciplinary and comparative article Intellectual Property and the Manufacture of Aura. It explains how and why companies manufacture aura to make their products more attractive in the market to consumers.

They offer an “eclectic array of examples” (P. 357) from Italian Bergamasco salami to Birkenstock sandals to NFTs, and more. Why do you choose a Bergamasco salami for your next aperitivo instead of any random salami? That’s likely because you are not just wanting to consume a product made of excellent ingredients from Bergamo, Italy. You are also seeking to consume a specific narrative and participate in a cultural experience implicitly communicated by the narrative aura infused into the Bergamasco salami.

One key takeaway from Bechtold’s and Sprigman’s work is that manufacturers in certain places seem to be infusing their products with narratives hoping to make a difference in the market. These “auratic narratives” work in a complex of law, marketing, social norms, communities, and businesses despite, or in part because of, the presence of multiple copies of the product and the lack of one original.

Divided into three kinds – authorial, place, and originality – the Bechtold and Sprigman auratic narrative is a descendant of Walter Benjamin’s celebrated and much discussed conception of aura. Identifying the essence of Benjamin’s aura as a “ ‘halo of preciousness’ that marks [an art object] as authentic” giving it “aesthetic authority” (P. 294), the article also builds on previous scholarship on authenticity, especially by Amy Adler and Laura Heymann.

The Bechtold-Sprigman article also exists squarely within a tradition exploring formal and informal rules of IP exemplified by the previous scholarship of Sprigman and other co-authors. But while Benjamin’s aura was tied to one, often tangible, original work of art in his celebrated 1936 article, the central move of Bechtold’s and Sprigman’s work is to see that auras now inform so many of the mass-produced copies that we buy. These copies benefit from successful storytelling, which may be backed by an intellectual property (IP) right. Key stars of auratic narratives are an author, a place, or provenance.

A second takeaway is that at times auratic narratives are buttressed by and even subsumed into IP law, including copyright and geographical indicators (GIs) and, at times, trademark laws. The authors deem this an “auratic use of IP” which deepens or invents “our understanding of the social significance of an article of consumption” (P. 299). In this sense, the authors implicitly point to a use of IP which has been perhaps more explicitly present in the control of now public domain works.

Consider, for instance, the confusion created by Italian museums’ continued enforcement of the right to an image of a cultural property under Italian cultural heritage law. While a type of mutant copyright, it is, however, intended to be something closer to the control of the auratic authorial, place and even originality narrative which Bechtold and Sprigman expertly outline.

In this sense the article opens an important door to the role of storytelling and culture in our consumption and preferences for products. There is also a role for “invented heritage” (P. 348) in the market and under IP legal frameworks. The way GIs and copyright law apply to salami and Giacometti sculptures (Pp. 320-21) give some preference to place and authorial narratives that feed into GIs’ recognition of a community and place and copyright’s recognition of an author. Should we then be thinking more critically about whether those communities and places and authors matter to the producer and marketer more than to consumers and the public at large? That is, should consumers more critically engage with the auratic narratives that are marketed to them? Should IP law engage in a more stringent or skeptical review of attempts to emphasize the author of a multiple so a producer benefits from IP protection (as Birkenstock has done to secure copyright in its Madrid sandal in Germany) (P. 317)?

The authors outline how often, in Europe, a “museum test” has at times proved decisive when evaluating whether a design is eligible for a copyright. What role do museums and other cultural institutions have in supporting auratic narratives? How should museums and cultural institutions’ role affect a new justification of IP as providing incentives “for the production and consumption of auratic experience” (P. 300)? In a world where there is a Vitra Factory Store and Design Museum (P. 313), the question seems timely and one for which this insightful article lays a foundation.

Bechtold and Sprigman give us at least one methodological tool to use when answering these questions: public goods theory. Providing IP rights based on the production of auratic narratives may be appropriate if such a right would prevent the undersupply of auratic narratives, allowing producers of multiples to prevent free-riders and allowing auratic narratives to remain uncongested.

Bechtold’s and Sprigman’s article opens a door to deeper considerations of heritage and culture in IP law scholarship that consider products designed for reproducibility in a variety of industries, from fashion to food to furniture, and art.

The application of cultural heritage law to prevent mechanical reproductions for commercial purposes of the very works of art to which Benjamin referred is meant in part to support the official supply of an auratic narrative around copies of the work of art, whether it is Michelangelo’s David or Botticelli’s Birth of Venus. This control is deployed to prevent unauthorized free-riders from referencing the auratic narrative around these same works.

The application of cultural heritage law to certain copies is meant to protect an auratic narrative. This provides a problematic example of how using the law to privilege certain auratic narratives over others can undermine cultural dialogue. This may affect the very acceptance and celebration of aura needed to support consumers’ desire to consume a specific narrative and participate in a cultural experience, as they would with a Bergamasco salami.

As a call to “debate…the optimal design of auratic IP” (P. 358), Bechtold and Sprigman’s article opens an important door for academic and practical dialogue about the power and recognition we should extend to the producers of auratic narratives that increasingly make their designs, copies, and other products cultural artifacts.

The article helps to create a bridge between two areas of law that are perceived to be different and, especially in market nations, unrelated: cultural heritage law and IP law.

Bechtold and Sprigman’s article offers an analytical framework that might overcome the silos of each law by deploying a new term, auratic narrative. Auratic narrative can encompass both heritage values and values that are more commonly associated with intellectual property, like distinctiveness and originality. Thanks to Professors Bechtold and Sprigman comparative dialogue between cultural heritage law and intellectual property law, especially for junior scholars, may be more possible, and fruitful.

Cite as: Felicia Caponigri, Auratic IP in a Culture of Copies, JOTWELL (February 8, 2024) (reviewing Stefan Bechtold & Christopher Jon Sprigman, Intellectual Property and the Manufacture of Aura, 36 Harv. J.L. & Tech. 291 (2023)), https://ip.jotwell.com/auratic-ip-in-a-culture-of-copies/.

Free Riding as a Pro-Defendant Impulse

Michael Grynberg, Trademark Free Riders, 39 Berkeley Tech. L.J. __ (forthcoming, 2024), available on SSRN.

American trademark scholars have almost uniformly decried the role of free riding in calibrating the scope of trademark rights. They have argued that the language of “reaping where you have not sown”—to use the famous, but doctrinally discredited, agricultural metaphor of INS v. Associated Press in 1918—distorts trademark law and expands protection beyond that necessary to ensure consumers receive accurate information about the source of goods in the marketplace. Yet, there is a (relatively well-grounded) suspicion that, despite this almost universal scholarly condemnation, the impulse to protect mark owners against free riding remains a resilient force when courts decide trademark cases. If this suspicion is indeed sound, arguments for less expansive trademark rights that rest on the rejection of free riding as a relevant variable are destined to fail.

In Trademark Free Riders, Mike Grynberg brilliantly and persuasively outlines (with real panache) an alternative approach by which to advocate for less robust trademark rights. He assumes arguendo the reality of judicial attention to (and distaste for) free riding and articulates an approach to trademark law that uses the free riding of trademark owners to justify a less expansive scope of protection. That is to say, what happens when trademark owners reap where they have not sown? If courts are in fact sensitive to free-riding as a relevant consideration in allocating rights, might they not confine the scope of right when evidence of trademark owner free-riding is presented to them?

For example, should trademark law (or courts in trademark cases) not take account of the fact that mark owners may opportunistically exploit meanings developed in popular culture generally or, more narrowly, by their customers? The use of HOGS to describe Harley-Davison motorbikes was initially opposed by the company. Its meaning is attributable to efforts of its customers. Should the tardy and begrudging acceptance by the company of a name developed by its customers figure into the ownership and scope of any trademark rights?

Grynberg thus operates in a reality that too many scholars are not even willing to countenance. This approach is very much consistent with Grynberg’s broader approach to trademark law, having written in an important article 15 years ago about the way that consumer interests can be reconfigured (and differently advanced) to secure a more balanced trademark regime than one-sided consumer paternalism might suggest.

This piece thus highlights a fascinating conundrum for scholars and litigants in trademark cases which parallels that faced by advocates before the U.S. Supreme Court. If, as Justice Elena Kagan suggested in her 2015 Scalia Lecture, that “we are all textualists now,” would not a wise advocate or scholar seeking to persuade the court advance textualist arguments? Many litigants, including in intellectual property cases before the Supreme Court, have taken the lesson offered by Justice Kagan on board (in my view, to the detriment of intellectual property law), even as Justice Kagan has voiced doubts about her 2015 pronouncement). So should trademark advocates and scholars grasp the nettle of free riding and make arguments for why trademark owners should have narrower (or no) rights because of their free riding (even if they believe, normatively, that free-riding should have no role to play in trademark law)?

Grynberg does carefully note some reasons why free riding might actually have a resonance for judges in trademark cases. For purposes of this Article, Grynberg is non-committal about the wisdom of that choice. There is surely a case for its relevance at the margins. The legislative history of the Lanham Act explicitly talks of protecting against the exploitative conduct of “pirates and cheats”. It takes some methodological insularity to read that reference and conclude that the statute simply targets “those who increase search costs”, as advocates of law and economics would have us believe. That’s a bigger and more contentious debate, however, and one with which Grynberg does not need to engage to make his point. Grynberg simply takes the relevance of free riding to judges as a given. As a result, he offers an approach to trademark law grounded in the reality of judges who decide trademark cases. And those scholars who wish to influence the development of trademark law would be well-advised to heed his counsel.

Without rehashing all of the numerous examples that are teased out with meticulous rigor, Grynberg develops a taxonomy that would helpfully inform the arguments of litigants and scholars in trademark cases seeking to confine the scope of trademark rights. For example, Grynberg notes that trademark owners free ride on culture, using and potentially appropriating memes and other forms of communal communication (something very much at issue in current debates over the use of the “failure to function” ground for rejecting applications for trademark registration). Likewise, he recognizes that what Mark Janis and I have called “surrogate uses” (where the public adopts a source-identifying term not used, and perhaps opposed, by the trademark owner, such as the HOGS example noted above) represent annexation by the trademark owner of understanding developed without an iota of effort or intent by the mark owner.

Moreover, Grynberg suggests that certain trademark owners may even obtain free rider benefits from competitor activity. Where protection is sought for a term that straddles “source” and “category”, or a shape that is a both a configuration mark and an attractive product design, trademark law seeks to ensure that any trademark rights protect the former and not the latter. But Grynberg points out that when we protect a term or shape that possesses such duality (as we do unless the competitive effects are substantial enough to trigger genericness or functionality doctrine), the mark owner may benefit from rival producers seeking to promote a competing product in the same category or of a similar design. That is, the efforts of competitors may consolidate public understanding of the first producer’s mark. Grynberg offers a vocabulary that the courts appear to recognize instinctually – “they didn’t earn it” – which might persuade courts to discount any public understanding not closely tying the product to the first producer (as opposed to the product type).

Whether one agrees with every example (and there are good debates to be had about some), this is a conversation-changing tour de force of an article. Professor Grynberg opts pragmatically to operate in the world we observe – perhaps the most basic commitment of a social scientist – and offers an approach to trademark law that litigants and scholars seeking (thus far without much success in recent years) to limit the scope of trademark rights, would do well to bear in mind.

Cite as: Graeme Dinwoodie, Free Riding as a Pro-Defendant Impulse, JOTWELL (January 25, 2024) (reviewing Michael Grynberg, Trademark Free Riders, 39 Berkeley Tech. L.J. __ (forthcoming, 2024), available on SSRN), https://ip.jotwell.com/free-riding-as-a-pro-defendant-impulse/.

To Pay or Not to Pay (for Training Generative AI), That is the Question

Martin Senftleben, Generative AI and Author Remuneration, 54 Int'l Rev. Intell. Prop. Competition L. 1535 (2023).

As the first empirical evidence is published on the consequences of Generative AI systems on labor markets1, broad anxiety is felt from creator communities on the effects of this technology on their income streams. Consequently, the question of how to deal with Generative AI from a copyright law perspective is gaining a lot of attention globally. Several lawsuits have been filed in the US by creators against AI operators and the first attempts to legislate that matter have already been introduced at the national level. The EU is currently finalizing an ambitious regulation package called the “AI Act” with important implications for its copyright regime, in particular the implementation of transparency obligations concerning copyright-protected works used to train the AI algorithms. In this context, Martin Senftleben’s new article Generative AI and Author Remuneration is particularly timely and proposes a very inspiring reflection on what could be the way forward regarding copyright reforms in this field.

One of Senftleben’s main concerns is to find a workable approach not to disincentivize AI innovation while at the same time creating new revenue streams for “flesh and blood authors” to secure remunerations that will improve their working and living conditions. Indeed, the starting point of the author is that:

the increasing sophistication of AI systems will inevitably disrupt the market for human literary and artistic works. Generative AI systems provide literary and artistic outputs much faster and cheaper. It is therefore foreseeable that human authors will be exposed to substitution effects. They may lose income as they are replaced by machines in sectors ranging from journalism and writing to music and visual arts.

In the article, much attention is devoted to analyzing whether the training of the machine learning algorithm with copyright-protected works can be permitted under copyright law. This is a complex question, and it is fair to say that no jurisdiction in the world has a straightforward answer to it, as no copyright law has yet passed having generative AI technology in mind. As machine learning is based on Text and Data mining (TDM), from a copyright point of view, the question often concentrates on whether exceptions and limitations that allow TDM can cover these uses as well.

While the Big Tech AI industry claims this situation falls under the US fair use exception, the content industry considers on the contrary that these uses are covered by the exclusive right and should be licensed. In Europe, a recently introduced TDM exception offers the possibility (under certain circumstances) for right holders to “opt-out” of the exception for text and data mining and to retain full control of their work (article 4 of the Directive for Copyright in the Digital Single Market). Some large collective management organizations have already announced that they will opt out their entire repertoire from TDM activities for machine learning, which will significantly reduce the available training material for AI systems.

As Martin Senftleben rightly underlines, applying this “opt-out”-mechanism to generative AI is not a satisfying solution because it would inhibit the development of this technology and thus make the European Union unattractive for AI developers. For the same reason, he rejects the idea of submitting these uses to the exclusive right: “The need to obtain individual authorizations and manage remuneration payments for AI training constitutes an additional cost factor in the form of transaction costs and licensing fees. If the costs involved are too high, it will negatively impact the ability of the EU’s AI sector to compete on the world market”.

The core of Senftleben’s proposal lies in the argument that copyright law, in order to compensate human authors for the reduction in their market share and income through Generative AI, should introduce an AI levy system in the form of a statutory remuneration and ensure the payment of equitable remuneration to creators. In his model, the statutory remuneration would however not be related to the TDM use of protected works for AI machine learning purposes, but it is “the literary and artistic output of generative AI systems” that serves “as a reference point for a legal obligation to pay remuneration”.

According to the author, focusing on an “output-oriented AI levy system can be applied uniformly to all providers of generative AI systems in the EU. In contrast to a remuneration obligation focusing on the input dimension and AI training activities, the output-oriented levy approach avoids the risk of disadvantages for EU high-tech industries. All providers of generative AI systems are equally exposed to the levy payment obligation the moment they offer their products and services in the EU.” This lump-sum remuneration would have to be paid by AI developers when their systems produce AI-generated output that have the potential to serve as substitute for works made by human authors. To counter legal/doctrinal concerns and to give theoretical support to the proposal, Senftleben refers to the theory of the “domain public payant” (“paying public domain”), according to which the exploitation of the public domain should at least partly serve the living generation of authors.

Admittedly, the proposal put forward by Martin Senftleben is very European in its spirit as its income redistribution rationale might not be an easy fit for all copyright traditions, in particular the US one. From a European point of view, however, the proposal is certainly compatible with a tradition of remunerated exceptions, as there is an established practice and case law about the distribution rules in favor of creators of this kind of remuneration via collective management organizations. In this respect, maybe submitting TDM for machine learning in the context of generative AI to a remunerated exception could be a workable alternative?2 Indeed, at the policy level, it will be more difficult to achieve consensus on a proposal based on a paid public domain, as advocates of a robust public domain might be favorable to ameliorate the remuneration situation of creators, but less sympathetic to the idea of a domaine public payant.

In any case, there is no doubt that this important article provides further arguments to consider the position of creators in forthcoming copyright reforms in the field of AI and more generally helps to reflect on how to finance creative ecosystems in a fast-moving technological environment.

  1. Xiang Hui, Oren Reshef, & Luofeng Zhou, The Short-Term Effects of Generative Artificial Intelligence on Employment: Evidence from an Online Labor Market, available at SSRN (Aug. 1, 2023).
  2. See in this sense for example Christophe Geiger & Vincenzo Iaia, The Forgotten Creator: Towards a Statutory Remuneration Right for Machine Learning of Generative AI, 52 Comp. L. Sec. Rev. (forthcoming, 2024), available at Elsevier (Nov. 24, 2023); Christophe Geiger, Elaborating a Human Rights friendly Copyright Framework for Generative AI, available at SSRN: (Nov. 16, 2023).
Cite as: Christophe Geiger, To Pay or Not to Pay (for Training Generative AI), That is the Question, JOTWELL (December 18, 2023) (reviewing Martin Senftleben, Generative AI and Author Remuneration, 54 Int'l Rev. Intell. Prop. Competition L. 1535 (2023)), https://ip.jotwell.com/to-pay-or-not-to-pay-for-training-generative-ai-that-is-the-question/.

All About That Base Rate

Christopher Buccafusco & Rebecca Tushnet, Of Bass Notes and Base Rates: Avoiding Mistaken Inferences About Copying, __ Hous. L. Rev. __ (forthcoming, 2023).

Some years ago I attended a presentation by a musicologist who specialized in giving testimony in copyright litigation. Here’s how he tried to grab the audience: First, he would play a clip from a well-known track by a popular musician or band. Then he would play a selection from an earlier, lesser-known track by an obscure musician or band that sounded similar to the first clip, all while giving the audience a wide-eyed stare. The impression this created was intentional and unmistakable. Clearly the well-known artist had copied from the lesser-known one!

The audience, mostly laypeople, certainly bought it, based on the gasps that accompanied the presenter’s schtick. I did not, and left frustrated that the musicologist-turned-expert-witness had tricked the audience into thinking that he had exposed several instances of egregious copyright infringement. I knew something was wrong but had difficulty putting my finger on just what was the problem with the presenter’s move.

Thanks to Christopher Buccafusco and Rebecca Tushnet’s sparkling essay, Of Bass Notes and Base Rates: Avoiding Mistaken Inferences About Copying, I finally have a clear picture of the error that afflicted that presentation and so much copyright litigation. As the authors explain, the application of copyright’s substantial similarity problem suffers from base rate neglect, which causes courts and litigants to significantly overstate the likelihood that a defendant copied from a plaintiff.

Let’s unpack this a bit. Plaintiffs in copyright infringement litigation must make a threshold showing that the defendant copied their work. This usually entails proof that the defendant had access to the plaintiff’s work and that the works share similarities that are probative of copying. Answering the latter question in the plaintiff’s favor depends on their amassing enough evidence to support an inference of copying. At this stage, plaintiffs often retain expert witnesses—usually musicologists,1 like the speaker I mentioned above—who testify that the degree of similarity between the two works is so great and distinctive that it could not be explained by, for example, independent creation or copying from a public domain source.

Here, the authors argue, is where base rate error creeps in. When a musicologist testifies that the quantum of similarity between two works enables an inference of copying, that ignores the crucial issue of how likely such similarity would be absent copying (the base rate). After all, there are only so many appealing chord progressions out there, and the plaintiff presumably created the work herself, so unless we know how likely it is that the similarities at issue would occur in the normal course, it is impossible to say whether the similarities in a given dispute are truly probative of copying.

The authors state that their argument is “modest.” I dissent. Not only did their central insight help me understand what was wrong with the musicologist’s presentation I resented so much (thanks!) but it has the potential to change the way we think and conduct copyright litigation. The past couple of decades have seen an uptick in infringement lawsuits by lesser-known artists alleging that hit tracks by popular artists (e.g., Katy Perry, Led Zeppelin, Marvin Gaye, Ed Sheeran, Taylor Swift, Lana Del Rey, Dua Lipa, and many many more) infringe their earlier, lesser-known works. A central feature of these plaintiffs’ cases is the testimony of musicologists that the degree of similarity between the works in suit is so great that it is explicable only by the defendant’s copying.

But Buccafusco and Tushnet have shown the expert testimony in these cases shares a common, fatal flaw: base rate neglect. Not one of the experts in any of these cases actually knew how likely it was that the given similarity would occur absent copying. This means that experts’ central evidentiary contribution to the litigation (quantum of similarity implies copying) is not a reliable, informed opinion but just highly articulate hand-waving. Many critics decry the purported irrelevance of legal scholarship to law, but this essay represents a conspicuous counterpoint.

The authors limit their discussion of the implications of their insight to the admissibility of expert testimony. Yet it may have other important payoffs. For example, some courts have (controversially) held that where the degree of similarity between two works is extremely high, that enables an inference of copying, regardless of evidence of access. Judges applying this “striking similarity” doctrine often commit base rate errors, assuming that a high degree of similarity itself warrants a conclusion that the defendant copied the plaintiff’s work absent any sense of how likely the similarity would otherwise be (i.e., the base rate).

Another tantalizing question provoked by this essay is whether and how the base rate problem varies within and across genres. Music is especially ripe for this fallacy because the number of notes in the scale is low and the number of appealing combinations of them is lower still, all of which suggests a higher base rate of similarity. But some genres of music are notoriously self-similar, such as ska or reggae, which are defined by a syncopated guitar rhythm. Musical works in these categories are especially likely to have a high base rate of similarity. The same may be true in some literary (formulaic romance or fantasy novels) and artistic (traditional portraiture) contexts that are defined by certain core features. By contrast, the alphabet yields many more available combinations of appealing words and phrases than the musical scale does appealing progressions of notes, so the base rate of similarity in most literary works is likely lower. None of these assertions about relative base rates can be reduced to specific numbers (the authors point out that we cannot actually know the base rate of similarity in any genre) but they each illustrate how the idea of base rates serves as a useful heuristic when thinking about copyright infringement generally.

The authors conclude that because we cannot deduce the base rate of similarity in any instance of claimed infringement, at present the wisest move is to simply bar experts from rendering conclusions about whether similarity supports an inference of copying. And while this does reflect the current state of play, it raises an intriguing possibility that may be realized sooner than one might think. If a large language model can learn from many billions of data points to produce astonishingly plausible simulacra of human responses to prompts, why couldn’t a similar artificial intelligence learn from the millions of available tracks to find the likelihood that certain similarities between musical works occur naturally? Big data might hold the solution to copyright’s base rate neglect problem.

By importing a known but underappreciated idea from quantitative analysis, Christopher Buccafusco and Rebecca Tushnet have generated a simple but significant insight that has the potential to change the way lawyers, judges, and academics think about both the doctrine of copyright litigation and how it unfolds in litigation. And they do it all in under 9000 words. This article is based and I rate it very highly.

  1. Judges’ reliance on musicologists to compare musical works in suit to preexisting compositions has grown so prevalent that some authors have compared it to the patent law practice of assessing inventions in light of prior art. See Joseph Fishman & Kristelia Garcia, Authoring Prior Art, 75 Vand. L. Rev. 1159 (2022).
Cite as: David Fagundes, All About That Base Rate, JOTWELL (November 15, 2023) (reviewing Christopher Buccafusco & Rebecca Tushnet, Of Bass Notes and Base Rates: Avoiding Mistaken Inferences About Copying, __ Hous. L. Rev. __ (forthcoming, 2023)), https://ip.jotwell.com/all-about-that-base-rate/.

Copyright Fiduciaries: Problems and Solutions

Andrew Gilden & Eva E. Subotnik, Copyright’s Capacity Gap, 57 U.C. Davis L. Rev. __ (forthcoming, 2023), available at SSRN (Aug. 9, 2023).

In this forthcoming article, Andrew Gilden and Eva Subotnik begin an important conversation about an underexplored area of copyright law. Their focus is copyright law’s inconsistent treatment of mental capacity. Under copyright law, copyright authors can produce valuable copyrighted work but those same authors may lack the legal capacity to make decisions about if, when, or how to exploit that work. For example, children and people with mental illness or disability can be copyright authors, but they cannot license that work (or refuse to license it) without a legally competent surrogate. The authors explain that this inconsistency leads to injustices for which they offer reforms.

The article starts with the engaging example of the Britney Spears’ 13-year conservatorship, controlled by her father, which from the age of 26 prevented her from making decisions about her life and career. All the while, Spears wrote and performed her songs, building a multimillion dollar portfolio over which she had no control. She was the author of her music, but she had no control over it because she lacked the legal capacity to form binding contracts, or so said a court. She resisted the conservatorship without success for over a decade. The article is full of many other such examples, including of teenage authors, elderly creators, and authors with mental illnesses.

The article argues that this “capacity gap” between authorship and control is a problem from within copyright law as a matter of doctrinal consistency and from a fairness perspective of avoiding exploitation. It further argues there is something unique about copyright law’s capacity gap because, unlike a usual trust situation when assets are transferred to a competent person upon incapacity, in a copyright situation the incapacitated person can produce new wealth while being subject to the control of the trustee or conservator. As the authors say “this dynamic creates unique opportunities and incentives for abuse” and undermines copyright law’s solicitude for authors’ wellbeing.

Both Gilden and Subotnik teach trust and estates, and so they are a great pair to explore the intersection of fiduciary law with intellectual property. Both have focused recent writing on problems that arise for copyright authors after death, in, for example, what Gilden calls the “social media afterlife” and what Subotnik has recently called “dead-hand guidance” in a “preferable testamentary approach for artists.” This new article is about authors still creating, some with cognitive disabilities and others who are simply young. Fiduciaries encourage valuable artistic productivity, for the fiduciaries’ benefit and audiences’, no doubt. But it is at best debatable, according to all the examples the article provides, whether the rate and nature of artistic production is in the best interest of the authors.

The article explains that this conflict between author and fiduciary undercuts the utilitarian justification for U.S. copyright law, which focuses on increasing productivity and the financial incentive of copyright’s exclusive rights. As explained, copyright is available to those lacking legal capacity to be incentivized, which challenges the law’s carrot-stick mechanism for creative production; moreover, the copyright incentive is possibly working on what the article calls the “wrong” people who do not have the authors’ or the audiences’ best interest in mind.  The capacity gap also quite clearly undercuts the personhood theory of copyright law, in which the author’s dignitary interests are paramount and protected through authorial control over the work. By situating the copyright’s capacity gap within several major theoretical justifications for copyright law, the article adds to the rich scholarship on copyright’s evolution from its origins to its contemporary manifestations.

This article has many virtues. It teaches those of us in the intellectual property field a lot about critical features of trust and estate law, which frequently intersect with copyright law, in particular, and with which I’d surmise most of us are fairly unfamiliar. It weaves the two fields in an elegant and clarifying manner and is rich with contemporary examples in which the capacity gap problem arises. These examples would be wonderful classroom discussion topics for those of us teaching in either legal field. The article also engages recent copyright law scholarship concerning alternative IP theories and IP’s failure to protect marginalized authors, advancing these burgeoning fields within IP law. And it provides concrete guidance and reform suggestions to limit the risks of exploitation and abuse that can emerge from copyright’s capacity gap.

The last part of the paper titled “Minding the Gap” will be most interesting to practicing lawyers, administrators, and authors. It harnesses some existing mechanisms within the Copyright Act (such as termination of transfers) and of the Copyright Office (registration and recordation) offering some clear-eyed and reasonable first steps toward addressing problems arising from copyright law’s capacity gap. I would not be surprised to see this article cited and used for reason of its last section alone. Overall, the article is insightful and its topic important. It is a commendable contribution to copyright literature.

Cite as: Jessica Silbey, Copyright Fiduciaries: Problems and Solutions, JOTWELL (October 18, 2023) (reviewing Andrew Gilden & Eva E. Subotnik, Copyright’s Capacity Gap, 57 U.C. Davis L. Rev. __ (forthcoming, 2023), available at SSRN (Aug. 9, 2023)), https://ip.jotwell.com/copyright-fiduciaries-problems-and-solutions/.

Name-Dropping Government Agencies in Advertising

Michael Mattioli, Conjuring the Flag: The Problem of Implied Government Endorsements, 83 Md. L. Rev. __ (forthcoming, 2024), available on SSRN (Feb. 22, 2023).

When shoppers see “Now FDA approved!” on a bottle of Excedrin, does it make them more likely to select that option over a competing product? Will consumers choose a brand of dietary supplement marketed as a “patented blend” over one that doesn’t make patent claims?

In Conjuring the Flag: The Problem of Implied Government Endorsements, Michael Mattioli argues that advertisers use claims about intellectual property and regulatory approvals to mislead consumers about their products’ quality, safety, efficacy, or legitimacy. By reference to or use of the US Patent and Trademark Office or the Food & Drug Administration, advertisers borrow those agencies’ halos to imply that branded products from bugspray to hairspray to nasal spray are superior to competitors’ versions. Mattioli cites survey evidence finding most consumers interpret government stamps of approval like “FDA-approved” and “patented” as endorsements of quality. In Conjuring the Flag, he amasses data on the different ways advertisers reference agency or IP approval to appeal to consumers, highlights why that strategy is misleading, and proposes ways FTC could curb it.

What does it mean when an advertiser claims a product like a can of bugspray is “patented”? Patent lawyers know it only means some aspect of the product or packaging was deemed useful, novel, and non-obvious or some element of its design qualified as original and ornamental. For the bugspray, that might mean an inventor or designer acquired a utility patent that covers the spray mechanism on the dispenser or a design patent for the pattern adorning the can, not that the spray itself is particularly safe, effective, innovative, or non-toxic. Mattioli’s study analyzed hundreds of ads that reference patents, but none of the ads in his data set provided patent numbers or identified what the patent actually covered. Patent-related advertising claims appear most often in ads for products intended to be ingested or applied to the body, such as supplements, toothpastes, and skincare products; consumers may crave reassurance that these types of products have been tested and found safe, so “a significant number of companies are using their patents to cultivate an aura of legitimacy and safety in industries that lack rigorous regulatory oversight.”

Mattioli also reviewed eight hundred ads that tout FDA approval, clearance, or registration—these claims appear most frequently in connection with hair care, cancer treatments, and food and drink containers. But FDA approval means only that the FDA has determined a drug or device’s benefits outweigh its known risks for the intended use, not that the product is safe or effective for other uses or that it lacks side effects or complications. Here, too, advertisers conjure the flag in misleading ways to signal safety or superiority to consumers and sell more products, capitalizing on the likelihood that consumers either don’t know or aren’t thinking deeply about what the claim conveys.

When it comes to trademarks, the misleading advertising mechanism is different. Advertisers sometimes use trademark registration to conjure the flag, as with marks like U.S. HEALTH CLUB for vitamins. But more often advertisers obtain trademark registrations that make their patent- and FDA-related claims look even more official: they register marks like JEANS WITH PATENTED FIT for jeans; PATENTED INGREDIENTS for cosmetics; FDA APPROVED MEDICAL SUPPLIES for devices; and FDA REGISTERED for dietary supplements. More aggressive application of failure to function and deceptiveness doctrines could and probably should be used to screen out marks like these at the USPTO, and the agency could update its manual of examining procedure to include that guidance.

While advertising claims and trademark registrations that reference patents and FDA approvals are sometimes literally false, they are more often merely misleading: “Half-truths and implications are, of course, what conjuring the flag is all about.” To address the problem and better protect consumers, Mattioli proposes FTC launch an initiative focused on monitoring and investigating such ads along with a comprehensive public awareness campaign to teach consumers how to identify and report ad claims that imply government endorsement. Because consumer surveys or expert testimony are typically needed to establish a claim is misleading, he further proposes modifying the legal standard to create a rebuttable presumption that any ad referring to a patent, FDA approval, or other government action in a way that implies approval of a product is potentially misleading, shifting the burden of proof to the advertiser to demonstrate the ad is not misleading.

While materiality is a fact-specific inquiry, it is well within FTC’s power to conduct a broader survey or study to gauge whether ads that proclaim products or services “FDA approved” or “patented” mislead consumers in ways that impact their purchasing decisions. In fact, FTC’s Advertising Division has performed surveys and other research on advertising claims like “organic,” “recycled content,” “results not typical,” and “made in the USA” to undergird its guidance and policy statements on those categories of representations. This intervention is crucial because while it’s possible these representations are misleading and constitute unfair competition, it’s also possible consumers skate right past them or regard them as mere puffery. Mattioli’s intuition that these types of claims are misleading is compelling and likely correct, but further study would give FTC a solid basis to pursue claims that conjure the flag more aggressively and systematically.

Cite as: Alexandra Roberts, Name-Dropping Government Agencies in Advertising, JOTWELL (September 20, 2023) (reviewing Michael Mattioli, Conjuring the Flag: The Problem of Implied Government Endorsements, 83 Md. L. Rev. __ (forthcoming, 2024), available on SSRN (Feb. 22, 2023)), https://ip.jotwell.com/name-dropping-government-agencies-in-advertising/.

Gender Equity in the Market for Collegiate Name, Image, and Likeness Rights

Tan Boston, The NIL Glass Ceiling, 57 U. Rich. L. Rev. 1180 (2023).

Within the field of intellectual property law, there are not too many legal or economic developments that would qualify for an event study. But, on July 1, 2021, such an event occurred when a new rule issued by the National Collegiate Athletic Association (NCAA) took effect. Prior to that date, intercollegiate athletes were prohibited from exercising their right of publicity or any other rights in their name, image, or likeness (NIL) to endorse products, services, or businesses in a commercial manner. Under the rule change, these athletes, numbering nearly 500,000 at the time, suddenly became free to license or otherwise use their NIL rights commercially, and a new market was suddenly born.

In The NIL Glass Ceiling, Professor Boston explains how the market for intercollegiate NIL rights has quickly evolved in a way that provides these athletes with long-denied revenue but with disparate outcomes for athletes who identify as men or women.1 She argues that these disparities are problematic both because female athletes should be entitled to a greater share of the revenue in this market and because these disparities send an unwelcome message to female athletes about the state of gender equity in intercollegiate athletics and in the workplace. She argues that more gender-equal outcomes could arise if schools were subject to scrutiny under Title IX, applicable Department of Education regulations under Title IX, and NCAA rules that govern certain third-party support for intercollegiate athletic programs in the case of disparities in NIL revenues paid by certain third parties directly to athletes.

This article makes three main contributions to the literature. First, it explains that the NIL market is comprised of three main forms of agreement or licensing. Athletes are paid either from deals they self-arrange, from deals they make with their schools, or from those made with third-party Collectives that pool assets to finance NIL licensing. The second contribution is to focus on the outsize role of the Collectives in this market and to argue that the relationships between these and the schools whose athletes they support are sufficiently close to subject payments made by these Collectives to scrutiny under the school’s legal duties, under applicable law, to not discriminate on the basis of gender. The third contribution is to argue that the important role that this new NIL market is playing in intercollegiate athletics requires legal reform to account for this development. Professor Boston discusses a range of options for how such reform might be achieved.

One feature of Professor Boston’s description of this market I found interesting is that even though the right of publicity is not recognized in every state, as she notes, and only some athletes have made uses in commerce of their name, image, or likeness in a way that would qualify for trademark protection, the market for NIL licenses appears to disregard these differences and treat all athletes as being able to supply consideration by granting NIL permissions in exchange for payment. I have no doubt that a court would treat such permission as sufficient consideration under contract law, but it would not be surprising if this new market were to lead to judicial or legislative recognition of a right of publicity where none exists today.

Professor Boston explains that in this market, some athletes represent themselves, or work with an agent, to negotiate NIL endorsement deals. Some sponsors, however, seek NIL arrangements with an entire team. In these situations, the sponsor may seek an alternative to individual negotiations. One alternative is for schools to facilitate NIL transactions on behalf of their athletes. Some states permit this practice, while others prohibit it. Even when a school is permitted to provide this facilitation, the NCAA’s rules prohibit such facilitation for prospective student-athletes.

Most schools do not provide such facilitation, which leaves space for third parties to play a role, which they quickly have moved to do. Professor Boston divides these into third parties that provide technology platforms for NIL licensing, talent agents, and other advisors who provide support for NIL transactions, and traditional Boosters, supplemented by a new entity, the Collective.

There are more than 100 of these Collectives, which use different mechanisms, such as crowdfunding or membership tiers, to create an asset pool that they use to pay athletes for their NIL endorsements. To date, these Collectives limit their support to individual schools. These Collectives focus their resources on schools’ football and men’s basketball teams, which helps fuel the gender disparities in NIL revenues.

Professor Boston explains that advocates for athletes’ ability to monetize their NIL rights thought that such opportunities would play a potentially equalizing role between men’s and women’s sports. That is not how it has turned out so far. Overall, male athletes receive three times as much as female athletes in all three of NCAA’s divisions. She shows that because Collectives provide a significant share of NIL revenues, the gender disparities in their practices substantially contribute to overall disparities in NIL revenues. That raises the question this article addresses: should schools be held legally responsible under Title IX for the gender disparities attributable to Collectives’ NIL practices?

Professor Boston provides a very nice, succinct explanation of applicable law. Under applicable regulations interpreting Title IX, schools’ compliance obligations fall within three categories: (1) athletic scholarships, (2) benefits and services, and (3) effective accommodation of students’ interests and abilities. Within the “benefits and services” category, equal treatment obligations extend to a school’s recruiting and publicity activities.

Professor Boston argues persuasively that even though schools are prohibited from explicitly using potential NIL revenue as a recruiting tool, they do, and they do so in a gender-disparate manner. Similarly, publicity enhances athletes’ NIL licensing opportunities, and women’s sports on average receive less publicity than men’s. Professor Boston shows, for example, how when all women’s NCAA basketball tournaments games became televised, players’ NIL opportunities increased measurably.

She further demonstrates how schools have been, and can be, held responsible if athletes receive gender-disparate benefits and services from third-party sources. She argues that the relationship between Collectives and schools and the gender disparities arising from Collectives’ focus on men’s NIL licensing are actionable under Title IX.

Professor Boston offers regulators and Congress a menu of options to update Title IX from the easiest, most feasible options, to the most difficult but most desirable outcome, which would be legislative amendments to Title IX.

I learned a lot from this article. Like Professor Boston, I recognize some of the challenges involved in holding schools responsible for NIL licensing done between third parties and athletes. But, I agree with her that schools are not in a fully arms-length posture with these Collectives. I found most persuasive her argument about how potential NIL revenue is playing a significant role in recruiting in at least some sports. Since recruiting is an equal treatment factor, and gender-disparate potential NIL revenues fueled by Collectives’ practices have gender-disparate impacts on recruiting practices, that seems like a Title IX problem in need of a solution.

  1. Recognizing that not all athletes so identify, for purposes of discussing NIL revenues from intercollegiate sports, Professor Boston’s article and this review are constrained by existing NCAA rules, under which athletes must select from its binary sports classifications, and must meet its requirements for those classifications.
Cite as: Michael W. Carroll, Gender Equity in the Market for Collegiate Name, Image, and Likeness Rights, JOTWELL (August 8, 2023) (reviewing Tan Boston, The NIL Glass Ceiling, 57 U. Rich. L. Rev. 1180 (2023)), https://ip.jotwell.com/gender-equity-in-the-market-for-collegiate-name-image-and-likeness-rights/.

Generative AI Meets Copyright

Peter Henderson, Xuechen Li, Dan Jurafsky, Tatsunori Hashimoto, Mark A. Lemley & Percy Liang, Foundation Models and Fair Use, available at SSRN (Mar. 27, 2023).

ChatGPT, Midjourney, and Copilot are among the numerous generative AI systems launched in the last year or so. They have attracted a huge number of users as well as several lawsuits. Among the lawsuits’ claims are that the makers of these systems are direct and indirect infringers of copyright because of their use of millions of in-copyright works as training data and because outputs of these generative AI programs are infringing derivative works.

At the core of these AI systems are foundation models on which the authors focus in their fascinating new article. They define this term as “large pre-trained machine learning models that are used as a starting point for various computational tasks,” including generative AI systems that may produce text, images, and/or software code in response to user prompts. The article identifies various actors who contribute to elements of these AI systems, including data creators, data curators, model creators, model deployers, and model users.

Those of us who are intent on understanding the legal implications of generative AI systems must, of necessity, be prepared to learn about the technology underlying these systems. Fortunately, these six Stanford researchers—some in computer science and some in law (our own redoubtable Mark Lemley among them)—have provided an essential guide for intellectual property and technology law scholars to the development and deployment of these systems. The article explores the extent to which developers and deployers of generative AI systems may rely on fair use to justify their use of in-copyright works as training data and how developers may limit their potential liability for infringements at the output stage.

For many copyright scholars, the article’s discussion of the fair use cases will be familiar, but the application of these precedents in the context of generative AI will be particularly useful. Yes, of course, the Authors Guild v. Google and iParadigms decisions suggest that computational uses of in-copyright materials can be fair use, but other decisions such as Associated Press v. Meltwater and Fox v. TVEyes suggest that much will depend on the particular uses that generative AI systems make of the in-copyright materials.

Foundation Models is not an advocacy article asserting that all uses of in-copyright works (or at least all that can be found on the open internet) as training data is fair use. Nor does the article argue that all outputs should be non-infringing so long as the outputs are not verbatim copies of the contents of specific training data. It offers a much more nuanced perspective about the challenges for system developers in understanding how to model computationally the degree of “transformativeness” that may be achieved by a second comer’s use of copyrighted works, as well as how to distinguish facts and expressions within those works.

The most novel section of Foundation Models is its discussion of technical strategies that AI system developers can employ to reduce the risk of copyright infringement when generative AI produces outputs in response to user prompts. These include data and output filters to detect similarities between the input data and outputs generated by the systems. Some technical mitigation strategies the authors describe must be done at the training data stage, while others, including data and output filters, can be done at the deployment stage.

The article discusses the Field v. Google decision for its recognition that Field had not used the “robots.txt” exclusion standard as a technique to stop Google from webcrawling his site. This consideration weighed against Field’s copyright claim that the search engine infringed by copying his content on that site. Foundation Models suggests that generative AI system developers and deployers would be well-advised to adopt one or more technical mitigation strategies to bolster their fair use claims.

While this article is well worth reading on the merits, it is also a noteworthy contribution to an emerging literature in which computer scientists and lawyers collaborate to explore technology law and policy issues. While not written in perhaps the most scintillating prose, this article is an outstanding example of a successful collaboration to explore ways in which technologists and lawyers can work together to co-evolve practical ways to achieve socially desirable outcomes.

Cite as: Pamela Samuelson, Generative AI Meets Copyright, JOTWELL (July 11, 2023) (reviewing Peter Henderson, Xuechen Li, Dan Jurafsky, Tatsunori Hashimoto, Mark A. Lemley & Percy Liang, Foundation Models and Fair Use, available at SSRN (Mar. 27, 2023)), https://ip.jotwell.com/generative-ai-meets-copyright/.