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Welcome to AccelPro IP Law, where we provide expert interviews and coaching to accelerate your professional development. Today we’re featuring a conversation with Michael Snyder and Joseph Gushue, Shareholders at Volpe Koenig.
In this interview, Gushue and Snyder discuss key client misconceptions about intellectual property law, copyright and patents. Snyder and Gushue are cohosts of the IP Goes Pop! Podcast and focus on common misunderstandings about obtaining patents, copyright, fair use, AI and more.
On filing with the copyright office: “I'm sure litigators listening would love to have that aha moment where the whole courtroom gasps and the judge hits the gavel and calls for order or he'll clear the courtroom. In the real world you're much better off filing with the Copyright Office.”
Listen on Apple Podcasts, Spotify and YouTube.
Interview References:
Michael Snyder’s Volpe Koenig profile.
Joseph Gushue’s Volpe Koenig profile.
3:10 | Contents and terms of patent, 35 U.S.C. § 154(d), (2012).
8:23 | Copyright Act of 1909, (1909).
TRANSCRIPT
I. PATENT MISCONCEPTIONS
Neal Ungerleider, Host: What are some common myths about the process of obtaining a patent?
Michael Snyder: I think the big urban legend of “What does it mean to file the patent?” is that once you file the patent application, which is critical, it is important to get to a patent office (usually the US Patent Office for us) to get your priority date locked in.
We live in a “first to file” world where the first one to file their patent application gets a priority date.
That could really help measure everything from the prior art and everything that came before you. You want to get there and the urban legend part is really around that.
What does patent pending mean? It doesn't mean you have any assertable rights yet. It's the beginning of a long process. And a lot of times, you might come back and we might report to an inventor or an in-house counsel, an office action in the U. S. Patent Office a year later.
The inventors will come back and say, “Wait, we thought we got the patent. That was all the work we did to file the patent.”
As is often the case, we're often the bearer of good news. We do have to say here, we're just part of the process.
And one thing you might notice, for example, in a show like Shark Tank: Some of the sharks that are more technology savvy, always ask the question: “Do you have a patent?” And the contestant will answer, “We filed for a patent application” and everyone will nod like it's the greatest thing that ever happened. But it doesn't mean you're going to get a patent. It could be a provisional patent application, which isn't even examined.
Just filing the patent is, again, the beginning of this journey.
One thing I was thinking of is what does it mean to just have a patent pending? All patents publish at 18 months from filing. And there is something under the Patent Act called provisional rights - which the Patent Act's section, it's 35 USC 154(d).
If you put someone on notice of your published patent application and the claims essentially match the patent, you could potentially reach back for some additional royalties. So that is one area where having the patent application pending matters; I was trying to find a way to talk about some value you do get before it even issues. That is one area where it does.
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II. COPYRIGHT AND SOCIAL MEDIA MISCONCEPTIONS
NU: What are some of the biggest misconceptions around copyright law and social media? Both on the professional side and from the general public?
MS: I think one of the bigger misconceptions is what you can do with things posted online. And frankly, whether you're the general public or in a professional setting, I think it's always an issue.
In a corporate setting, you have your marketing team and branding team; you might have a research and development team. They're researching things online, of course, as we all do.
The question is what can you use and what can you not use?
Another issue is posting things on your own company's social media and being careful about the terms and conditions for that particular platform or application. It's very important to be careful about what you share or feel.
Just because you are on your account, let's say, on Facebook or another type of social media platform, you're posting things. Be careful thinking that you own them, that they can't be copied or someone doesn't have any other rights.
You may be surprised to find out that when you are clicking “I accept”, or even just creating a registration or your handle, or your company name for that site, you're likely agreeing to certain third party uses of whatever you post. I think that's one area to be careful about.
The other one is the fact that other people post material on social media. We live in a kind of a copy and paste world.
I think that the misconception is if someone lets something loose on social media that it's free to all or in the public domain or whatever that means there. And that's something to be very wary of.
Joseph Gushue: Just because something's out there doesn't mean that it isn't copyright protected. If you do share something out there, you may be able to argue fair use.
There are a number of different factors that will be considered for that. It's ultimately a case by case basis.
There's really no broad brush rules you can give there, other than it is covered by copyright and to be very concerned about the terms and conditions of the different platforms in which you're sharing different material.
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III. COPYRIGHT PROTECTION VIA POSTMARKED ENVELOPE
NU: How does the idea of mailing your work to yourself as copyright protection hold up under legal scrutiny? What should legal professionals tell clients about this because it comes up so much?
JG: This is something that went back to one of our early podcasts.
Say you have a creative idea. You want to get a date mark in place for when you created this. What you would do is you would take your manuscript or piece of music or art and you would seal it and then mail it through the post office.
You would keep it then, unopened, but it would have a postmarked envelope. There were thoughts at one time that this would provide some sort of copyright protection.
That's not the best way to receive copyright protection on your different ideas and then creative works.
In the U.S., you have copyright protection at the moment you create the work and fix it in a tangible form. It doesn't require any sort of mailing or formal process for there to be copyright, because copyright automatically exists.
What's important is that it is not necessarily the strongest copyright. It doesn't do anything to prove the actual authorship of that work. It doesn't give legal standing.
It's extremely limited, and the only value I can see in it is potential evidentiary value that you may need in potential litigation regarding the case.
There is an important process that people should take when obtaining copyright protection for their idea. That is filing for federal copyright registration. That will provide an official public record of the intellectual property. It is also necessary for filing different lawsuits for infringement in the United States.
MS: Getting into this whole mailing yourself a letter issue: Let's take it all through the steps.
So you draw a picture. Let’s say it's a mouse in a steamboat, right?
So you put the picture of the mouse in the envelope. You date it. You send it through the mail, you get a postmark, and I guess you never open it until one day you show up in court. You say, “Aha! You created a theme park based on my mouse. But I drew this picture and this is the proof.”
I can't imagine that it wouldn't just be the beginning of many depositions and discovery.
I'm sure litigators listening would love to have that one time that they have that aha and the whole courtroom gasps and the judge hits the gavel and calls for order or he'll clear the courtroom.
In the real world you're much better off filing, as Joe said, with the Copyright Office. This will give you your date and a much more official record of the date.
There are certain rights under the Copyright Act that start to run from when you file. If an infringement of your copyright starts after you register, you can get certain critical damages called statutory damages. Which is much easier to prove if someone is copying your copyrighted work.
You can also get attorney's fees. It's really important, again–not unlike the race to the patent office–to get your priority date for your invention. The race to the copyright office especially, if you know that you're a creator.
Or if you're going to go to a meeting of some kind for due diligence. Or even meeting with a competitor and you're going to show a PowerPoint or a pitch. It's important enough to file for your copyright registration before the disclosure, because of all of those benefits.
JG: I think this urban legend also predates a number of the different advancements in computers and digital dating files of things.
Setting that aside, the letter may not be the most current way in which you would want to timestamp your work. So there are some more recent ways of having your work timestamp, but it's always best to, obtain that federal registration of your copyright.
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IV. FAIR USE MISCONCEPTIONS
NU: From the perspective of professionals and the public, what are some of the biggest misconceptions around fair use?
MS: If you are going to search the internet about fair use, you will go down several rabbit holes. One misconception you hear a lot in the music world of copyright, is that there's some formula of an exact number of notes you can use in a song.
If you are under that number–it's some threshold number–you see the number different on different websites. If you're under that number, it's fair use. But if you are over that number, you have used too much.
Sometimes you see it as a percentage. That is not the case. Fair use is a very complicated analysis and it looks at a part that you take of the copyrighted work. You can have a chorus of a song, or a hook, or a riff that is just a few notes. And yet it’s the heart or the core of the song.
If you were to take that–even if it's five notes, seven notes, ten notes–it still could be copyright infringement, and not fair use. It's really just when you're counting, or looking at how much is taken, and it's just the beginning of a complicated factual analysis.
Copyright is often superficially seen as one of the easier to understand forms of IP. Once you scratch a very thin surface, you will find out that there are so many hyper technical issues with copyright, of which fair use is one.
Let's say there's a famous case where a sculpture is used in the back of a movie. The scene lasts X number of minutes where you can see the sculpture.
The question is, is it fair use? How much was used? How little was it on screen? There's no mathematical formula. Of course with artificial intelligence, maybe they will come up with some way to measure this. We're not there yet.
JG: Another thing to note with a fair use, like Mike was saying, with the songs you tend to think about for “Name That Tune”--If you're using something that you can really identify a different song with, that will very quickly go against an analysis of fair use, in that instance.
A misconception with this is also how artists talk about, “Oh that song is different from my song, because I have a different note right here.”
There's almost this position they want to take about its transformative use. Because I have altered or added some new context to your copyrighted material, I should be given an automatic pass on that.
That's not necessarily the case, because even a transformative work can infringe on an original work. If it takes more of that original work than is necessary, and it affects the market with that original work.
MS: Another misconception with fair use is the nature of the copying.
People think if they're using it for education, or if you're doing a continuing education presentation somewhere, that alone means you can use different copyrighted material or portions of it.
In some cases it could be fair use, but just because it's not a commercial use alone does not mean it is fair use. It is but one of a multiple factor analysis of when you cannot use something and it's considered to be fair use.
An educational use might weigh toward it being fair use, but we are only in one part of a multifactor analysis of whether something is fair use.
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V. MISCONCEPTIONS ABOUT AI, PATENTS AND COPYRIGHT
NU: How do ideas about AI creating patentable inventions and works eligible for copyright protection compare to current legal standards?
JG: I can say that the rules are clear right now that patents require a human inventor and non-human inventors are not recognized. That's in the U.S., and then also the European Patent Office.
There have been challenges to this.
Individuals attempting to file patent applications in the name of different AI programs and tools used in the development of these ideas, thus far, are not eligible for patent protection because a human needs to be an inventor.
I can say that the same rules for patents also apply to copyrighted works. Copyright law protects original works of authorship created by humans.
The creator–in this instance, the human–must have exercised some creative or artistic judgment. For now, humans can use each of these tools.
I like to think of it as: If an AI tool is almost a calculator at this point, or a different tool in the inventing process where a human can work with that, it's still ultimately the human that is the person inventing or the person creating the different copyright at work.
However, there are some different issues coming up with this.
One of the issues that I find most interesting is this concept of generative art where there will be a human artist who writes computer code which will then generate a number of different images.
Each of those images that are generated as a result of this are protected by copyright, because it is a human author of the code. The art that is output as a result of it, is copyrightable. These are artworks performed in the crypto space. And it's interesting, because a lot of that artwork is generated under open licenses so people can use them.
MS: It's such a cascade of concepts and issues.
Let's say you have a human author who writes software, so that software's copyrightable. Now the software can create music, and it can create music based on directions that you give this software program.
Is the author of the music the person who gives the directions? Is it the software that actually prepares the new symphony with the directions?
What if you say to the software to create a background music for this scene where there's a car chase and I want it to have this type of feel to it. The next thing you know, you have a score.
Who owns it?
The issue really comes down to can it be copied because if there is no human inventor, there can be no patent at least as the law exists now, and therefore free to all once that's disclosed.
Again, it is free to all now that it's been shared, or sent in a tangible medium, if there's no human author and no way to protect the copyright.
There are different stakeholders in this process. I think that's the tug of war that Joe was talking about. If it has value, it's likely that the law could shift to protect that value and we're going to see that. It's every day now in the IP world, but we're going to see it develop over the next couple years, I think, pretty quickly.
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VI. CAREER PATHS
NU: Can you both describe your career paths to IP law, and what made you choose it as a specialty?
JG: I was in college studying computer engineering, and was very interested in computers and technology.
It was at a time when the internet was starting to really start taking off. I took a course, and the course I was in required a lot of documentation and writing about this.
We were working on a robot that knocked over dominoes and we had to come up with a manual for it as part of our design project. I really enjoyed the breaking down of each of the steps and putting together the documentation. So technical writing appealed to me.
Then I took that interest, and saw that there was a career path forward in patent law. So I finished my degree, and went right to law school afterwards.
From that, it was a bit of a leap of faith. I didn't know anyone that was a practicing patent attorney at the time that I started, but it turned out to be an excellent fit for me and my interests.
MS: I started in a local corner pharmacy as a kid just stocking the shelves back when they had local corner pharmacies. (By the way, if you can find one I suggest you enjoy it, because you really get a personal touch there!)
That's the world I came from. I ultimately ended up saying, “This is a great career. I love working with people. My patients are great. They ask us questions that they don't ask their doctors.”
So I go to pharmacy school. I'm working, and I'm studying for law school. I knew I wanted to combine the two, but I didn't know how. I had one of my patients come in, and she started talking about her law firm that she worked at, and how they had a conference room full of toy cars. Immediately, my head whipped around. I said, “Wait, tell me more about this law where there's toy cars involved.”
They don't mention that in law school very much. It turns out that it was a trade dress case where a company made a line of cars based on real cars–GM or Chrysler type cars–and they did it as collectibles. The question was whether they had permission, whether it was a fair use, and whether it was transformative. Did they own the trade dress in the cars? Was that even protectable to have an entire car be protected as a trade dress?
The next thing you know, she helped me get an interview. When I discovered the world of IP, there was no going back.
NU: Can you both talk about a time that help from a peer helped you with a difficult situation during your legal career?
MS: Because of the way our firm functions, it is a complete open door policy.
I probably spent as much time in my career in other people's offices just bouncing things off the wall. If you hear someone in the hallway start to talk about a topic that you either find interesting, or you have the same question, you'll kind of burst out of your office and jump into the conversation.
IP is not the easiest field. There's a huge learning curve and it's hyper technical in almost every aspect. Until you've done everything once, you have to depend on your peers.
Today I had two calls where we were talking about very specific and technical issues with foreign patents, and I called one of my peers. We talked it through and we jumped on a Zoom call and we did a little flowchart and a timeline. I knew some of it, and he knew some of it, and we got to it.
I can't imagine, in the world of intellectual property, how it's not part of your daily process.
JG: Everyone comes from different backgrounds, and has some different work experience with problems that they've faced.
At the end of the day, we're in the business of solving problems for people. We have our certain perspective and ideas on things and we work at a firm where we're very close with each other. A lot of our firm has been with the firm for a number of years so there's a lot of trust.
We're able to take the experience that we have, and then collaborate with others to ultimately arrive at the best path forward for our clients.
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This AccelPro audio transcript has been edited and organized for clarity. This interview was recorded on February 5, 2023.
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