In the first of a series of articles looking at how Generative AI is impacting trade marks and designs, we explore the conflicts that can arise from using trade mark protected or copyrighted material generated from Generative AI applications. (For further information, please visit our Generative AI hub).
Artificial intelligence, including Generative AI, is reshaping industry and creative processes. Identified as a hallmark of the fourth industrial revolution, Generative AI harnesses vast computational power and extensive data training to generate human-like text, aiding in tasks ranging from conversation to creative writing.
However, its reliance on massive datasets scraped from diverse online sources raises critical legal questions. These datasets often include trade mark-protected or copyrighted material, leading to potential conflicts over ownership, infringement, and ethical use. This article explores these issues through the lenses of trade mark and copyright law, focusing on their implications for Generative AI applications.
What is a trade mark
A trade mark, as defined in the UK's Trade Marks Act 1994, is any sign capable of:
- of being represented in the register in a manner which enables the registrar and other competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the proprietor, and
- of distinguishing goods or services of one undertaking from those of other undertakings.
A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals, colours, sounds or the shape of goods or their packaging.
In short, a trade mark can be almost anything – a word, a phrase, an image, a sound, even a gesture, provided it is capable of distinguishing goods or services of a particular source from those of others. Trade marks must speak to the consumer and tell that consumer where the goods or services come from. Trade marks therefore serve to protect the brand identity of businesses and help consumers identify and choose goods or services they trust.
Registering a trade mark in the UK grants legal protection, safeguarding a brand's goodwill and reputation. Infringement typically occurs when a third party uses an identical or similar mark in the course of trade for similar goods or services, creating a likelihood of confusion among consumers. Overall, the purpose of registering a trade mark in the UK is to protect the goodwill and reputation associated with a brand, promote fair competition, and to safeguard the interests of both businesses and consumers in the marketplace.
Copyright law in the UK grants creators and authors of original works certain rights over their creations. These rights include the exclusive right to reproduce the work, distribute copies, perform or display the work publicly, and to create derivative works. Copyright infringement occurs when someone violates the exclusive rights of the copyright owner without permission.
Copyright protection in the UK applies to various types of creative works, including literary works (such as text, song lyrics and computer software), artistic works (such as paintings, drawings, photographs and sculptures), musical works, dramatic works (such as plays and scripts), and sound and video recordings.
In the UK, copyright protection is automatic upon the creation of the work and generally lasts for the period of 70 years following the death of the author. However, there are exceptions and limitations to copyright protection, such as fair dealing provisions for certain purposes such as criticism, review, or reporting current events.
Navigating trade mark and copyright law in AI applications
Avoiding Infringement
AI applications often mine data without distinguishing between protected and non-protected material, risking trade mark and copyright infringement. For instance, Generative AI might generate a brand name or strapline that coincides with an existing trade mark or copyrighted work.
It is crucial to ensure that AI-generated outputs do not violate the intellectual property rights of others. Unless you have a system in place to identify the trade marks and copyrighted material of others, you risk infringement.
Protecting Intellectual Property
Assuming that AI-generated outputs do not violate the intellectual property rights of others, steps should be taken to protect those outputs (if appropriate, and subject to the terms and conditions of the generative AI platform used), whether through trade mark registration, copyright or other forms of intellectual property.
Maintaining brand reputation
The unauthorised use of trade marks generated by Generative AI can damage the reputation of your trade mark and your business. There is a need to monitor and challenge third party trade marks to ensure that any AI generated trade marks or logos do not misrepresent or tarnish the brands of your business.
Legal compliance
Adhering to intellectual property law is essential for legal compliance. Ignorance of trade mark regulations is not a valid defence in trade mark infringement cases. Similarly, unauthorised use of copyrighted material can lead to legal consequences, including lawsuits and financial penalties. Copyright law governs how copyrighted works can be used, reproduced, distributed, and modified, and an understanding of how to avoid using copyrighted material, or obtaining the necessary rights to use copyrighted material generated by your AI applications, is important.
Ethical considerations
Arguably, respecting trade marks and particularly copyright law is not only a legal obligation but also an ethical one. We all share the responsibility of respecting the rights of creators in order to contribute to a culture of creativity and innovation.
Case studies
Brand names, straplines and promotional text
Consider the example of using Generative AI to create a promotional campaign for a mint lozenge. We use the following prompt:
"Write a promotional paragraph for a new mint lozenge and give it a brand name, in a humourous style"
Generative AI immediately returns with:
"Introducing FrostBite Mints, the coolest companion for your day! Imagine a burst of icy freshness that revitalizes your senses whenever you need it most. Our mints aren't just about freshening your breath; they're about igniting a sensation that awakens your spirit. With every crisp bite, feel the frost envelop you, clearing away the mundane and leaving you refreshed to take on the day. Whether it's a midday slump or a pre-meeting pick-me-up, FrostBite Mints are here to chill your senses and spark your day into an adventure of cool confidence. Dive into a world where every breath feels like a fresh breeze, with FrostBite Mints."
Generative AI has mined the internet and has generated a trade mark "FrostBite"; and has given us a promotional paragraph, together with a strapline "a burst of icy freshness that revitalizes your senses".
We might now decide to use this suggested trade mark and strapline, and invest heavily in the development and promotion of our new brand. However, it would be a mistake if we were not first to consider whether anyone else owns rights in our new trade mark. Generative AI has not checked the trade mark register, or considered any unregistered rights that may exist. An important part of the role of trade mark attorneys is to undertake clearance searches and advise as to whether a proposed trade mark is already owned or in use by a third-party, or indeed whether it is confusingly similar to a third-party's mark.
This allows the trade mark attorney to advise on the risk of infringement if you were to use the mark. In this case, a trade mark attorney's search would identify an earlier registration for an almost identical mark covering identical goods, namely:
UK TM UK00003985113 FROST BITES, Class 30
Had we started using "FrostBite" as our trade mark for mint lozenges, the owner of this earlier registration would have excellent grounds to pursue us for trade mark infringement, on the basis that the mark is almost identical, the goods are identical, and there would be a likelihood of confusion on the part of the average consumer of confectionery and mints.
Additionally, if the strapline inadvertently reproduces text from an existing product's advertising, it may infringe copyright law. You will recall that copyright law in the UK grants creators and authors of original works certain rights over their works. It is important to note that creators and authors have in the past always been human beings. Nevertheless, over time, copyright law has evolved to recognise human "authorship" in the use of tools that may include Generative AI platforms.
The UK Copyright Designs and Patents Act (CDPA 1988) affords copyright protection in works generated by a computer in circumstances when there is no human author of the work. However, since copyright cannot vest in machines or non-human actors, the resulting author of a computer-generated work is the person "by whom the arrangements necessary for the creation of the work are undertaken." The language of the CDPA is not clear whether in making the arrangements, the 'human stand-in author' must exhibit the same skill labour and judgment required to meet the threshold of originality required for copyright to apply in traditional works.
It is therefore uncertain whether the prompt given to a Generative AI platform needs to be sufficiently original, exhibiting enough "free and creative choices" for a human to meet the originality requirement for copyright, or whether any copyright in the content generated by the AI platform would vest in the authors of the generative AI software. In our example, there is an argument that we would own the copyright in the promotional paragraph and strapline generated by Generative AI.
However, we need to remind ourselves that Generative AI will mine information from all over the internet. As such, we must ask, has the Generative AI platform just copied our strapline from somewhere else? Sure enough, an internet search reveals that our strapline reproduces text used in relation to a men's deodorant product. Worryingly for us, even partial reproduction of copyright protected works could amount to infringement under UK law.
Logos
It is not just the creation of words and slogans that should be considered when using AI platforms to create new branding. Logos can also be registered as a trade marks, and the use of platforms to create new logos must be conducted with caution, bearing in mind the infringement risk posed by earlier registered trade marks for conflicting logos in the territories of interest to you. As such, the utilisation of generative AI platforms to create logos that will be used commercially should undertake appropriate searches in order to minimise the risk that existing trade mark registrations pose.
Trade mark infringement is assessed by a comparison of the later mark with the earlier registered trade mark and a comparison between the goods or services protected by the earlier registration and those in relation to which the later trade mark is being used. If the trade marks and goods or services are identical to one another then use of the later mark would be deemed to infringe. Furthermore, if the trade marks are identical or similar and the goods or services are similar or identical such that a risk of consumer confusion arises, then infringement would also arise in those circumstances.
With this in mind, we identified the following prompt used by a Midjourney user (ebaqdesign.com) to create a new logo:
"/imagine a simple logo of a diamond, line, flat, vector – no realistic photo details"1
This generated the following logo design:
However, a trade mark search for this logo identified numerous existing trade mark registrations2 around the world covering (amongst other goods) clothing:
There is a risk that the courts would find that the logo generated by Midjourney is confusingly similar in appearance to this registered trade mark, particularly if the marks are considered from the perspective of an average consumer who may have only an imperfect recollection of the earlier logo. Consequently, if the Midjourney generated logo were to be used in relation to clothing in any of the jurisdictions in which the earlier mark is registered, there is a risk of such use amounting to infringement of the registration identified.
It is also important to be mindful that copyright in existing logos could be infringed via use of a generative AI platform to create a logo, as existing logos protected as artistic works in the UK and Europe may have been used to train the AI and the generated work may constitute a reproduction of those works. The Courts have yet to determine the issue of whether copyright infringement through the reproduction of those artistic works is carried out by the AI platform entity or by the end user. However, subsequent use of the new logo commercially by the user would also potentially infringe copyright in any case.
Thus, if you are using AI platforms to create new imagery for branding then the importance of conducting trade mark searches should not be ignored. Just because you have used a platform of this nature to create your new images, you are not prevented from being pursued by earlier rights holders in circumstances such as those outlined above.
Audio-visual content
The use of audio-visual content generated by AI platforms should also be considered from a trade mark perspective. For example, if a video is created with a prompt that refers to a human in the video bearing a resemblance to a well-known individual, and that content is subsequently used to market your goods and services, if the resemblance to the well-known individual is sufficiently close then this could potentially result in a passing off claim on the basis that such use constitutes passing off. This would be by analogy with well-established case law that has seen the application of the faces or likenesses of well-known individuals to goods or their use in promoting services, such as in the well-known Rhianna and Eddie Irvine passing off cases in the UK.
There are also copyright implications associated with the use of AI platforms to generate logos and videos for commercial use, as the data used to generate these are based on existing works that may be subject to copyright protection as artistic works and films. Consequently, the reproduction of such logos and videos without the consent of the copyright owner may amount to copyright infringement.
Conclusion
The use of AI platforms to generate branding does not eradicate the importance of searches of the trade mark register before launch, or the relevance of well-established goodwill in images, text, or the appearance of individuals. Indeed, the terms and conditions of ChatGPT and Midjourney are explicit when it comes to the responsibility of users in this regard. ChatGPT's terms and conditions state that "you are responsible for Content, ensuring that it does not violate any applicable law" and Midjourney's state that "your ownership is subject to...the rights of any third-parties".
Therefore, you should always engage with an IP specialist to seek advice on the legal implications associated with incorporating such AI generated content into your branding or promotional materials.
Footnotes
1. https://www.ebaqdesign.com/blog/midjourney-logo-design
2. e.g. Australian Trade Mark Registration No. 1534439
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
