The recent High Court of England and Wales decision in GETTY IMAGES v. STABILITY AI is an excellent example of the judiciary grappling with the challenge of addressing issues of artificial intelligence against IP legislation which is out of sync. The judgement is a valiant attempt to put a square peg in a round hole.
Getty’s claim against Stability was for both Copyright and Trade Mark Registration infringement. The copyright claim pertained to the use of Getty images taken from their database and which was used by Stability to train their generative AI model (AI Model Stable Diffusion). The copyright claim was dismissed because the model did not contain or store a copy of the underlying Getty images.
Getty were partially successful in their Trade Mark infringement claim because Stability’s model did generate images which included watermarks bearing Trade Marks that were the subject of Trade Mark Registrations owned by Getty and it is this aspect of the decision which is of particular interest to Trade Mark attorneys when advising clients on a range of issues which have come to the fore as a result of AI. This particular commentary focuses on how best to try and predict the future when framing the specification of goods/services and against a background where it is not possible to increase the range of goods/services embraced by an existing Trade Mark Registration. This raises the question of whether a new variant of an article or service coming into existence after registration falls within the meaning of an existing specification. Perhaps there is a degree of irony in the fact that you no longer have to be Mystic Meg because many if not most attorneys are already using AI in the framing of goods/services specifications. The irony being that AI is being utilised to identify AI driven goods/services specifications. Probably not quite poacher come game keeper.
The importance of a properly drafted specification lies in the fact that the specification determines the scope of protection. A Patent Attorney may have sleepless nights on the wording of a claim and although most Trade Mark attorneys are not insomniacs, many a case does hinge on the specification of goods/services embraced by a Trade Mark Registration.
The Getty decision is a point in fact. In a Trade Mark infringement claim in a scenario where both the Trade Marks and the goods/services are identical the Trade Mark owner “benefits from a rebuttable presumption of a likelihood of confusion”. In the Getty decision this is referred to as double identity infringement. In addition “where general terms are used to describe goods or services, they must be interpreted as including goods or services clearly covered by the literal meaning. Goods can be treated as identical where one is a subset of another”. Nevertheless, specifications are scrutinised carefully and a wide construction covering a vast range of activities is avoided hence the importance of using terms which are clear and precise. In the Getty decision Mrs. Justice Joanna Smith had to consider whether “synthetic image outputs” and “the provision of synthetic image outputs” were identical goods and services embraced within the specification of Trade Mark Registrations which included photographs and digital imagery services and a range of goods in Class 9 such as downloadable digital illustrations and a range of services in Classes 35, 38, 40, 41 and 42.
It was held there was no goods/services identity between for example “synthetic image outputs” and for example “photocopying services” (Class 40) but there was with “digital imagery services” (Class 41) as an example of “a new variant” of a service falling within an existing specification. Identity was also held with “downloadable digital illustrations and graphics” (Class 9).
All is not necessarily lost if there is no double identity but the advantage of such is that specifications should be crafted to embrace goods/services which are new. In some jurisdictions there must be adherence to exact terminology within the Nice Classification but thankfully this is not the position in the European Union or the UK and this should be used to the benefit of Trade Mark owners. A Trade Mark Attorney must ask the right questions and establish from a Trade Mark owner whether they are providing AI related goods and/or services but just as importantly and in addition whether the goods and services are being rendered and which incorporate artificial intelligence technology. For example, in TMCLASS (a database maintained by EUIPO relating to goods/services classification) there is a reference to “household cleaning and laundry robots with artificial intelligence” (Class 7). Many moons ago the Irish High Court had to address an issue where the right question was not asked. The Health Education Bureau of Ireland instructed the Trade Mark attorney to clear a Trade Mark CONQUEST for “printed matter” (Class 16). The printed matter was in fact a replica of a carton of cigarettes which instead of cigarettes contained literature on how to quit smoking. There was an identical Trade Mark held by a cigarette manufacturer (Gallaher) which was not disclosed in the search because the search did not extend to Class 34. With the benefit of hindsight or even utilising artificial intelligence it was important to ask for the nature and purpose of the printed matter. In a similar vein at your peril, do not take a Trade Mark owner’s reference to artificial intelligence at face value. It is terminology often loosely bandied about. Delve into what it means to the Trade Mark owner in the context of their actual and intended activities and to then reference such in the specification of goods/services. It could mean the ability to claim double identity in a clear and precise manner.
