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Copyright and trademark in wine packaging and labeling

Written by Dreyfus17/04/2025

Key considerations for wineries and wine businesses in the United States

Wine labeling is more than just listing the varietal, region, or vintage—it’s a creative and strategic endeavor that shapes a winery’s public identity. Elements such as labels, logos, colors, fonts, taglines, and even bottle shapes can become critical assets, each subject to complex legal protections. In the United States, two primary areas of intellectual property (IP) come into play: copyright (for creative works) and trademark (for brand identifiers). When properly leveraged, these legal tools can protect a producer’s investment in design and branding, deter counterfeiters, and bolster a winery’s reputation in a crowded market.

This article delves into copyright and trademark laws as they affect the packaging and labeling of wine, highlighting the interplay with Alcohol and Tobacco Tax and Trade Bureau (TTB) regulations, and offering practical guidance for ensuring comprehensive protection of your label designs.

The importance of packaging and labeling in the wine industry

Brand differentiation and market perception

  • Visual Identity: In a sector where numerous bottles vie for attention on retail shelves, your label and packaging are often the first points of consumer engagement. A carefully crafted design can influence purchasing decisions.
  • Storytelling and Heritage: Many wineries infuse their labels with elements reflecting their history, terroir, or family legacy. Whether it’s a depiction of a vineyard landscape or a stylized crest passed down through generations, these creative visuals become a key part of the wine’s story.

(Stat Note: According to data from the Wine Market Council, up to 70% of wine-buying decisions are made in-store based on label appeal and perceived brand quality.)

The convergence of art and commerce

Wine labels transcend mere product description, often functioning as miniature works of art. This dual function—practical (identifying the wine) and artistic (evoking themes, emotions, stories)—can lead to overlapping legal protections under copyright law (protecting creative expression) and trademark law (protecting distinctive brand elements).

Copyright protection for wine labels and packaging

What copyright covers

Copyright in the United States protects “original works of authorship fixed in any tangible medium of expression.” For wine labels, this typically applies to:

  • Illustrations, graphics, and artwork: Any unique drawings, images, or decorative elements.
  • Photographs: If the label features original photography of a vineyard, estate, or other subjects.
  • Textual designs: Certain stylized text arrangements that reflect creative authorship, beyond merely stating the wine’s variety or region.

Under 17 U.S.C. § 102, you automatically hold the copyright to your label from the moment it’s created in a fixed form. However, registering the work with the U.S. Copyright Office (copyright.gov) offers additional legal benefits, including the ability to seek statutory damages and attorneys’ fees if you prevail in an infringement lawsuit.

Registration benefits and best practices

  • Enhanced enforcement: Registered copyrights provide a clear record of authorship and ownership.
  • Public notice: By registering, you publicly assert your claim, deterring would-be infringers.
  • Copyright notice: Including a notice (e.g., © [Year] [Owner Name]) on the label strengthens your position, though it is not mandatory for protection.

(Practical Tip: Some wineries register new label designs as soon as they’re finalized, particularly for high-end releases or limited-edition bottles that rely heavily on unique artwork.)

Limitations of copyright in labeling

Copyright protects creative expression, not functional or factual aspects. Consequently:

  • Mandatory statements: Label elements required by TTB regulations—such as alcohol content, origin, net contents—cannot be copyrighted. They are considered functional or factual.
  • Generic or descriptive terms: Words that merely name a varietal (e.g., “Cabernet Sauvignon”) or region (e.g., “Napa Valley”) are not subject to copyright protection.

Trademark protection in wine labeling and branding

Distinctive elements eligible for trademark

Trademarks can protect a wide range of “source identifiers,” such as:

  • Brand names and winery names: For instance, “Silver Oak” or “Jordan Winery.”
  • Logos and stylized text: A custom emblem or stylized brand wordmark.
  • Taglines or slogans: Marketing phrases that help consumers identify and recall your wine.
  • Bottle shapes or label configurations (Trade Dress): If they are distinctive and non-functional. For example, a uniquely shaped bottle could be considered protectable trade dress when the shape itself signifies the brand.

The role of the USPTO

In the U.S., trademark registration is handled by the United States Patent and Trademark Office (USPTO) (uspto.gov). A federal trademark registration confers:

  • Nationwide protection: Deters infringers beyond your immediate region.
  • Legal presumptions: Proof of ownership and exclusive rights to use the mark in connection with specified goods.
  • Potential for international filing: Serves as a basis for Madrid Protocol applications via the World Intellectual Property Organization (WIPO).

Label approval vs. trademark registration

It’s crucial to distinguish between TTB label approval and USPTO trademark registration:

  • TTB: Focuses on compliance with labeling regulations (alcohol content, origin, disclaimers). Approval does not guarantee any IP rights in the brand name or artwork.
  • USPTO: Examines distinctiveness, likelihood of confusion, and existing prior rights. A name greenlit by TTB might still face refusal or opposition at the USPTO if similar marks exist.

(Example: A wine label approved by TTB with the word “Sunset Ridge” could still be refused by the USPTO if “Sunset Ridge Cellars” is an existing registered trademark.)

Navigating overlaps and potential conflicts

Copyright vs. Trademark

  • Copyright covers the artistic aspects—illustrations, creative text layout, or photographs.
  • Trademark covers the brand name, logos, or distinct label designs recognized by consumers as indicating a particular source.
    These two can coexist. For instance, a visually ornate label design can have copyright protection for its artwork and trademark protection for the brand name or a stylized logo.

Confusion with geographic terms and appellations

Wine labeling often highlights regions or appellations (e.g., Napa Valley, Sonoma Coast, Willamette Valley). While these terms may be necessary to describe the product, they generally cannot serve as trademarks if they are considered primarily geographic.

  • Appellation conflicts: Groups like the Napa Valley Vintners Association actively defend the Napa name, ensuring it’s only used by wineries meeting certain AVA (American Viticultural Area) requirements.
  • Deceptive marks: A label referencing a region or type of wine (e.g., “Champagne,” “Port,” or “Burgundy”) without following legal standards or sourcing may be found deceptive by the USPTO and refused registration.

Common pitfalls

  1. Generic or descriptive brand names: A term like “Chardonnay Reserve” is unlikely to qualify for trademark registration if it only describes the wine.
  2. Overreliance on disclaimers: The USPTO may require disclaimers for descriptive words—such as “Winery,” “Estate,” or “Vineyards”—to avoid granting exclusive rights over generic or descriptive terms.
  3. Failure to monitor: Neglecting to keep an eye on new trademark filings or unauthorized uses of your art or brand name can allow infringers to establish competing rights.

Case studies, statistics, and a hypothetical scenario

Case study: artistic label dispute

A California boutique winery, “Moonlight Cellars,” hired a freelance artist to create a highly detailed label for its new Merlot. The label featured a watercolor painting of an owl perched under a moonlit sky.

  • Copyright conflict: The artist later discovered the winery had slightly modified her painting for limited-edition releases without seeking permission. She filed a copyright infringement claim.
  • Trademark overlap: The winery had successfully registered “Moonlight Cellars” as a trademark but had neglected to secure permission for derivative use of the artwork.
  • Outcome: Through negotiation, the winery purchased additional rights. This underscored the need for clear licensing agreements that address both the original and potential future uses of label artwork.

Stats on wine label design and IP registration

A 2025 report by the USPTO indicated that trademark applications within Class 33 (wines and spirits) rose by 12% year over year, reflecting the increasing number of independent labels and craft producers. Separately, the Graphic Artists Guild noted a 20% rise in requests for label design-related copyright registrations, emphasizing the growing commercial importance of visual identity in the wine sector.

Hypothetical client example: Golden Crest Wines

“Golden Crest Wines,” a Washington-based winery, launched a new Rosé line with a stylized gold crest design. They:

  1. Secured a trademark for the name “Golden Crest Wines” and the stylized crest logo via the USPTO.
  2. Registered the label artwork with the U.S. Copyright Office to protect the crest’s elaborate design and background art.
  3. Ensured TTB compliance by accurately listing the AVA and alcohol content.
  • Result: A cohesive IP strategy minimized the risks of both brand confusion and unauthorized replication of the label design.

Practical tips for protecting wine packaging and labels

Use written agreements for artwork

Whenever hiring freelance designers or agencies:

  • Clarify ownership: Decide whether you, as the winery, will own the full copyright upon creation, or whether the artist retains some rights.
  • License scope: Define if the artwork can be used across multiple product lines, websites, or future limited editions.
  • Work-for-hire provisions: In many cases, you must explicitly state that the work is “made for hire,” otherwise the artist may retain the copyright.

Conduct thorough searches before launch

  • USPTO TESS: Check for existing marks that could conflict with your proposed brand name, logo, or slogans.
  • Copyright Office records: If using stock imagery or previously commissioned art, ensure no overlapping claims or restrictions exist.
  • Appellation guidelines: Verify any TTB or AVA requirements for wording, disclaimers, or usage permissions.

Register, monitor, and enforce

  • Timely registration: File for trademark registration as soon as you decide on a brand. Similarly, register label designs or other major creative elements with the Copyright Office.
  • Monitoring new filings: Watch for potential conflicts in the USPTO Official Gazette and relevant creative marketplaces (e.g., popular design platforms).
  • Take swift action: If you spot an infringing label or brand name, consider sending a cease-and-desist letter or filing an opposition (for trademarks) or infringement suit (for copyright) where appropriate.

Plan for international protection

For wineries aiming to export or eventually tap into foreign markets (EU, UK, Asia, etc.):

  • Trademark extension: The Madrid Protocol allows you to extend your USPTO registration internationally through WIPO (wipo.int).
  • Labeling laws abroad: Investigate local regulations on disclaimers, mandatory health warnings, and protected geographical indications (like “Rioja” in Spain or “Bordeaux” in France).

Conclusion

In a competitive landscape where packaging and labeling speak volumes about your wine’s quality and origin, both copyright and trademark laws serve pivotal roles. Copyright can guard the creative essence of your label—its artwork, typography, and visual flair—while trademark secures your brand identity, ensuring that names and logos become cornerstones of consumer trust.

When carefully managed, these protections deter copycats, elevate brand perception, and may even become valuable business assets for expansions or partnerships. However, success hinges on anticipating legal hurdles, from TTB compliance to potential conflicts with existing marks or appellations.

Why work with Dreyfus?

  • Recognized Expertise: With over 20 years of experience in intellectual property and a deep understanding of wine regulations, our team assists clients in creating ironclad label strategies.
  • Global Network: We facilitate international registrations, ensuring that wineries eyeing overseas markets remain protected under multiple jurisdictions.
  • Tailored Guidance: Each winery’s story is unique. We offer strategic advice adapted to your creative vision, marketing goals, and compliance needs.

The cabinet Dreyfus et Associés is in partnership with a worldwide network of lawyers specialized in Intellectual Property.

Ready to protect your wine’s visual identity?

  • Contact us to develop a customized plan to safeguard your label and brand assets.
  • Subscribe to our newsletter for the latest legal updates in wine labeling and IP.
  • Download our practical guide, “5 Essential Tips for Copyright and Trademark Protection in Wine Labeling,” featuring case studies and checklists.

Additional Resources

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Trademark registration for a wine or a winery: key steps and common pitfalls

Written by Dreyfus17/04/2025

In the highly competitive world of wine production and distribution, standing out often hinges on building a distinctive identity—from the name of your winery or vineyard to the label on each bottle. In the United States, securing a trademark for your wine brand is one of the most effective ways to protect this identity. However, navigating the trademark system can be challenging, particularly when dealing with additional regulations related to wine labeling and geographical indications.

This article provides a detailed look at the trademark registration process for wines in the U.S., highlights frequent legal and regulatory pitfalls, and offers practical tips to safeguard your brand from costly conflicts. Whether you produce a Napa Valley Cabernet Sauvignon or a Willamette Valley Pinot Noir, a robust trademark strategy is vital for long-term success.

Why protect your wine brand or winery name?

Legal imperatives

  • Exclusive right to use the mark: By registering your trademark with the United States Patent and Trademark Office (USPTO), you gain nationwide priority over the use of the mark for the goods and services specified in your application.
  • Litigation leverage: Should a competitor attempt to adopt a similar name or label, holding a federal trademark registration bolsters your position in court. It allows you to potentially recover damages and attorneys’ fees, and it offers a legal presumption of validity and ownership of the mark throughout the U.S.
  • Protecting an intangible asset: Your brand is intellectual property that can be licensed, sold, or used as a valuable business asset. According to various industry reports, strong brand recognition can increase a winery’s overall valuation and attract investors, distributors, or joint-venture partners.

Economic stakes

  • Credibility for buyers and importers: Wine buyers—including restaurants, retailers, and wholesalers—gravitate toward well-branded products. A registered trademark signals professionalism and provides assurance that you take your business seriously.
  • Investor appeal: Private equity and other investors in the wine sector look favorably on wineries and wine brands that have protected their names. This is because a clear trademark strategy mitigates the risk of future legal complications.
  • Facilitating international expansion: With the U.S. as one of the largest wine-consuming nations in the world, many producers also aim to export. Having a federal registration can be a strong basis for filing in other countries through the Madrid System managed by the World Intellectual Property Organization (WIPO).

(Stat Note: According to the Wine Institute (wineinstitute.org), U.S. wine sales—domestic and imports—have consistently exceeded 400 million cases per year, reflecting robust demand and heightened competition in branding.)

Marketing and brand equity

  • Differentiating your AVA or winery story: American Viticultural Areas (AVAs) such as Napa Valley, Sonoma County, Willamette Valley, and Finger Lakes are integral to a wine’s identity. A trademark allows you to highlight unique qualities while avoiding consumer confusion with other wineries in the same region.
  • Long-term consumer loyalty: Once consumers come to trust a wine brand, they tend to become repeat buyers, seeking out new vintages or related labels under the same trademark.
  • Consistent branding across channels: A trademark gives you the foundation to unify your online presence, labeling, packaging, and promotional materials under a single, well-protected identity.

Trademark law and regulatory bodies in the U.S.

The USPTO

The United States Patent and Trademark Office (USPTO) is the primary federal agency for trademark registration. Once granted, a federal trademark registration offers protection across all 50 states and U.S. territories.

  • Term of protection: Initially valid for 10 years and renewable indefinitely, provided you file timely maintenance documents and demonstrate continued use.
  • Filing method: Online submission through the Trademark Electronic Application System (TEAS) is the standard.

State trademarks

In addition to federal registration, some wine producers opt for state-level trademarks (e.g., California Secretary of State for wineries in Napa). However, these provide limited geographic protection. For wineries hoping to sell across state lines, a USPTO registration is more robust.

TTB labeling regulations

The Alcohol and Tobacco Tax and Trade Bureau (TTB) (ttb.gov) oversees wine labeling and advertising. While TTB approval is separate from trademark registration, certain TTB regulations intersect with trademark considerations:

  • Brand name approval: The TTB might reject a label if it includes misleading geographic claims or references.
  • Appellation of Origin: Using names like “Napa Valley” or “Sonoma Coast” requires adherence to specific TTB and state-level rules regarding the percentage of grapes sourced from those regions.
  • Misleading terms: Terms that falsely imply certain winemaking practices or locations can run afoul of both TTB rules and trademark law.

Key steps for registering a wine trademark

Conducting a comprehensive clearance search

Before filing an application with the USPTO, it is crucial to perform a trademark clearance search.

  • USPTO Database: Search the TESS (Trademark Electronic Search System) to check for identical or similar marks.
  • Common Law Databases: Not all trademarks are registered. Many wineries rely on common law rights, so also search corporate names, domain names, and wine competition listings.
  • International Databases: If you plan to export, consider searching the databases of the EUIPO (European Union Intellectual Property Office) and the WIPO (World Intellectual Property Organization).

(Industry Stat: The USPTO receives tens of thousands of trademark applications per month across all industries. In the wine and spirits sector, the volume has been steadily increasing, reflecting the rise of boutique and craft producers.)

Classification and identifying goods/services

The USPTO uses International Classes under the Nice Classification System. Wine typically falls under:

  • Class 33: Alcoholic beverages (except beers).
  • Potential additional classes: If you provide wine club subscriptions (Class 35 for retail services) or tasting events (Class 41 for entertainment services), ensure they are included.

Precision in describing goods and services is crucial. An overly broad description might lead to either refusal or vulnerability to partial cancellation later, while an overly narrow description might limit brand expansion.

Filing the application

This step involves submitting a TEAS form via uspto.gov. Key elements of the application include:

  • Owner details: Whether you’re filing under an individual or corporate entity name.
  • Basis for filing: Use-based (Section 1(a)) if already in commerce, or intent-to-use (Section 1(b)) if you plan to commercialize soon.
  • Specimen (if applicable): If filing on a use basis, you must provide a label, packaging, or marketing materials showing how the mark is used in commerce.

Examination, publication, and opposition

  1. Initial review: A USPTO examining attorney checks for compliance with procedural and substantive requirements.
  2. Office actions: The examining attorney might issue an office action requesting clarifications, disclaimers, or refusals based on confusing similarity to an existing mark.
  3. Publication in the Official Gazette: Upon acceptance, the mark is published. Any party who believes they would be harmed by the registration has 30 days to file an opposition before the Trademark Trial and Appeal Board (TTAB).

Registration and maintenance

If unopposed (or if you win an opposition proceeding), the USPTO issues a Certificate of Registration. The trademark is initially valid for 10 years, with a Section 8 Declaration of continued use due between the 5th and 6th year, and subsequent renewals required every 10 years.

Common pitfalls in wine trademark filings

Geographic misdescriptions and AVA conflicts

Using a protected AVA name like “Napa Valley” or “Santa Barbara County” without meeting the TTB’s sourcing requirements can trigger:

  • Refusal by the USPTO: On grounds of deceptively misdescriptive or primarily geographically descriptive if you do not meet TTB criteria.
  • Challenges from regional associations: Groups like the Napa Valley Vintners or the Oregon Wine Board vigorously defend their geographic designations.

Likelihood of confusion with existing marks

A slight variation in spelling may not be enough to avoid confusing similarity.

  • Example: “Cascade Hills Winery” vs. “Cascade Hill Vineyards” could be considered too close in the eyes of the USPTO if both produce wine in overlapping markets.
  • Legal consequences: If your mark is deemed confusingly similar, it can lead to refusal during examination or, worse, an opposition proceeding by the existing mark owner.

Improper use of foreign terms

Wine producers sometimes use French, Italian, or Spanish terms to evoke Old World charm. However, terms that are generic or descriptive in a foreign language can face refusal under the doctrine of foreign equivalents.

  • Example: Using “Château” for a U.S. winery might raise descriptive issues unless the overall mark has distinctiveness.

Timing issues and lack of monitoring

  • Late filing: Launching a brand in multiple states before filing can allow competitors to preempt your rights.
  • No watch service: Failing to monitor the USPTO Gazette or other platforms means missing the chance to oppose similar wine marks within the TTAB’s strict deadlines.

Case studies, statistics, and a hypothetical client

Case study: Green Valley Vineyards

Green Valley Vineyards wanted to expand distribution throughout the U.S. While the owners had used “Green Valley” informally for years, they discovered mid-expansion that a California winery called “Greenvalley Estate” was already registered with the USPTO.

  • Result: A TTAB opposition forced Green Valley Vineyards to rebrand to “GV Vineyards” and revise all their labeling and marketing materials—a costly endeavor in the middle of national expansion.

U.S. wine trademark data

A 2025 USPTO annual report noted a 15% year-over-year increase in wine-related trademark applications, highlighting the explosive growth of both boutique wineries and private-label ventures in the U.S. market. This surge correlates with the rise in e-commerce wine sales and direct-to-consumer shipping laws liberalizing in several states.

Fictional client example: Autumn Harvest Wines

Autumn Harvest Wines, based in the Finger Lakes region of New York, decided to register a new brand for their Riesling line—“Autumn Mist.” Through a comprehensive clearance search, they discovered a potential conflict with an Oregon-based brewer that had “Autumn’s Mist Ale.” Their attorney advised minor changes in the label design and the goods description to reduce confusion.

  • Outcome: The brand launched smoothly under a slightly altered name, “Autumn Mist Riesling,” circumventing likely opposition from the brewer.

Practical tips for a successful wine trademark strategy

Consult an attorney or IP specialist

Wine law intersects with traditional trademark law, TTB regulations, AVA restrictions, and occasionally import-export rules. An experienced intellectual property attorney or specialized consultant can:

  • Conduct a thorough clearance search, including common law and international resources.
  • Advise on naming conventions, disclaimers, and label design to comply with TTB and USPTO requirements.
  • Manage the entire trademark application process, from filing through potential TTAB proceedings.

Plan for international expansion

Many U.S. wineries eventually reach beyond domestic markets. A federal trademark registration can serve as a basis for Madrid System applications, extending coverage into key wine-consuming nations like Canada, the UK, China, or Japan.

  • Avoid brand squatting: Certain countries see opportunistic registrations by third parties who anticipate the future arrival of an American brand, then demand high fees to release the name.
  • Consult local counsel: In addition to WIPO filings, each country may have local regulations, especially concerning geographical indications or local labeling laws.

Implement a trademark watch and enforcement program

  • USPTO Gazette monitoring: Subscribe to a watch service to track newly published marks in wine, spirits, or related categories.
  • Active enforcement: Sending cease-and-desist letters or filing oppositions at the TTAB can deter infringers and demonstrate your commitment to brand protection.
  • Periodic audits: Regularly review your own label usage, domain names, and expansions into new products (e.g., wine spritzers, wine-based cocktails) to update your trademark portfolio.

Conclusion

Trademark registration is more than just a legal formality—it is a cornerstone of your brand’s identity, reputation, and long-term market success. In an industry as storied and dynamic as wine, a strong trademark not only shields you from imitators but also fortifies your brand story in the minds of consumers.

By proactively registering and maintaining your trademark, you signal quality, distinction, and credibility. For producers whose goal is to stand out in the crowded aisles of local retail shops or in high-end restaurants nationwide, trademark protection is a non-negotiable step in building a legacy.

Why work with Dreyfus?

  • Recognized Expertise: Our team has over 20 years of experience in intellectual property and extensive knowledge of wine law.
  • Global Network: We assist clients with international filing strategies, ensuring worldwide protection for brands poised for export.
  • Customized Approach: We thoroughly analyze your situation to develop a specialized trademark strategy that fits your unique goals, whether you’re a boutique winery in Oregon or a large-scale producer in California.

The cabinet Dreyfus et Associés is in partnership with a worldwide network of lawyers specialized in Intellectual Property.

Do you need help securing your wine brand?

Contact us to develop a comprehensive plan and safeguard your wine label or winery name for years to come.

  • Subscribe to our newsletter to stay informed of the latest legal developments in wine and intellectual property.
  • Download our practical guide on “10 Critical Mistakes to Avoid When Trademarking a Wine in the U.S.” (including case studies, expert tips, and a step-by-step checklist).

Useful External Links for Further Reading

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Wine counterfeiting: how to respond to brand or appellation infringement

Written by Dreyfus16/04/2025

Wine counterfeiting is a growing concern in the U.S. and worldwide. Fraudsters may illegally use a producer’s trademark, replicate a label design, or falsely claim an American Viticultural Area (AVA) to profit from a winery’s hard-earned reputation. Whether you’re a boutique producer in Napa Valley or a large-scale winery in Washington State, safeguarding your brand identity is vital to maintaining consumer trust and financial stability.

This article explains how to detect and respond to wine counterfeiting or misuse of a brand or appellation in the United States, covering the legal frameworks, best practices to protect your winery’s image, and the scope of possible actions—both domestically and internationally.

Understanding Wine Counterfeiting in the U.S. Market

General Definition of Counterfeiting

In broad terms, counterfeiting involves the unauthorized reproduction or imitation of protected intellectual property (IP). Within the wine industry, this may include:

  • Unauthorized use of a registered trademark
    Example: A bottler selling lower-quality wine under a recognized name to capitalize on that brand’s reputation.
  • Label or packaging replication
    Fraudsters may closely imitate or replicate a legitimate producer’s labels, logos, or overall design to deceive consumers.
  • Improper AVA or regional claims
    Using a term like “Napa Valley” or “Willamette Valley” without meeting federal and state AVA requirements (e.g., TTB rules) constitutes a form of geographic misrepresentation.

Economic and Safety Ramifications

  • Brand damage: Substandard counterfeit wines can undermine a producer’s reputation for quality.
  • Financial losses: Industry groups, such as the Wine Institute, estimate that counterfeits and misleading labeling cost U.S. wine producers millions of dollars in lost revenue.
  • Health concerns: Some counterfeit wines contain unregulated or unsafe ingredients, putting consumers at risk.

International Context

American wines, especially those from prestigious AVAs like Napa Valley, Sonoma County, or the Willamette Valley, are in high demand globally. Counterfeiters may exploit brand recognition to sell imitation products in overseas markets. U.S. producers often need to secure trademark or brand protection abroad (e.g., via the Madrid System under the World Intellectual Property Organization, or direct filings in target export countries).

Types of Infringement: Brand, Appellation, and Mislabeling

Brand Infringement

When someone else uses your federally registered (or common law) trademark without permission, they may:

  • Directly copy your brand name or logo.
  • Adopt a confusingly similar name (e.g., changing one letter or adding a minor word) to trade on your brand’s goodwill.
  • Mimic your label design (colors, fonts, layout) to deceive consumers.

Appellation Misrepresentation

In the U.S., American Viticultural Areas (AVAs) are geographically defined wine-growing regions certified by the Alcohol and Tobacco Tax and Trade Bureau (TTB). Misrepresentation includes:

  • Using an AVA name improperly
    For instance, labeling a wine “Napa Valley” when less than 85% of the grapes are from Napa or if the wine doesn’t meet other TTB requirements.
  • Falsely suggesting a region
    Terms like “Champagne,” “Port,” or “Burgundy” have international naming regulations. In the U.S., some of these names may be grandfathered for older producers, but new labels generally must comply with truth-in-labeling rules.

Illicit Labeling Practices

Even if a producer isn’t directly stealing a brand name, they might violate TTB regulations by listing false or misleading descriptors on the label. Examples include:

  • Incorrect varietal or vintage claims
  • Bogus designations such as “reserve,” “estate,” or “old vine,” if those terms are not accurate or recognized.
  • Misleading references to sustainability, organic certification, or production methods.

Detecting Counterfeit Wines and Gathering Evidence

Red Flags

  • Unusually low prices for wines purportedly from a high-end region or producer.
  • Suspicious distribution channels—online auctions, gray-market retailers, or unknown importers.
  • Label inconsistencies—poor print quality, incorrect typographical details, missing mandatory warnings or TTB-required information.

Documenting the Infringement

Compiling evidence is essential before initiating legal action or a cease-and-desist letter:

  • Photographs or scans of the suspect label: capture the front and back labels, cork, capsule, and any serial markings.
  • Invoices or receipts to show the source and price of the counterfeit wine.
  • Lab analysis (if appropriate): Forensic testing may confirm that the liquid does not match the legitimate wine’s chemical profile.

Practical Tip: Retain physical samples of the alleged counterfeit bottles, ideally sealed and notarized or documented by a legal professional, to serve as proof during litigation or TTB review.

The Value of Ongoing Monitoring

  • Trademark watch services: Engage a specialized agency or use USPTO watch services to identify potentially infringing or confusingly similar marks.
  • Market checks: Periodically review online stores (domestic and international) and local retailers, especially in emerging markets where counterfeits are more common.

Legal Remedies and Enforcement Options

The Cease-and-Desist Letter

Often the first step, a cease-and-desist letter formally notifies the infringer that they must:

  1. Immediately stop using the brand, label, or appellation.
  2. Remove infringing products from the market.
  3. Destroy or surrender remaining inventory.
  4. Pay damages or seek a settlement for lost revenue and harm to reputation.

In some cases, if the violation is unintentional or minor, the infringer may comply to avoid legal escalation.

Litigation and Court Actions

If the infringer refuses to comply or the financial harm is substantial, a winery can pursue legal action:

  • Civil suit in federal court: This can yield damages (including treble damages for willful infringement), injunctive relief to stop further infringement, and potential recovery of attorneys’ fees.
  • Criminal prosecution: For egregious counterfeiting operations, law enforcement agencies (like the FBI or local authorities) might get involved if there is evidence of fraud, smuggling, or organized crime.

Example: Large-scale counterfeit rings selling imitation Napa Valley Cabernet abroad might face federal charges for violating trademark laws, wire fraud, or even money laundering statutes.

Role of U.S. Customs and Border Protection (CBP)

For import or export of counterfeit products, CBP can detain or seize shipments at U.S. ports of entry if a brand owner has recorded its trademark with the agency’s Intellectual Property Rights (IPR) e-Recordation system. This prevents counterfeit goods from entering (or leaving) the United States, saving brand owners from chasing infringers post-distribution.

Case Studies, Statistics, and a Hypothetical Example

Notable Case: Counterfeit “Napa” Wines in Asia

Groups like Napa Valley Vintners have periodically confronted counterfeiters producing “Napa” wines in China and other parts of Asia using imitation labels.

  • Approach: They collaborate with U.S. and foreign authorities, leveraging trademark registrations and local enforcement.
  • Result: Seized counterfeit stock, criminal fines for producers, and improved AVA recognition in key markets.

Stats on Economic Impact

A 2025 study cited by the Wine Institute (wineinstitute.org) estimated that global counterfeiting of American-made wines accounted for over $500 million in annual losses. High-profile AVAs, such as Napa Valley and Sonoma County, were the primary targets, but smaller regional producers have also been affected.

Hypothetical Example: “Sundown Cellars”

“Sundown Cellars,” a Washington-based winery, discovers an online retailer selling bottles labeled “Sundown Estates” with an almost identical logo and design.

  1. Evidence gathering: They purchase samples, photograph the counterfeit label, and retain invoices.
  2. Cease-and-desist: The winery sends a formal demand letter to the retailer and the purported importer.
  3. Litigation: The retailer refuses to comply. Sundown Cellars files a trademark infringement lawsuit in U.S. federal court.
  4. Outcome: The court issues an injunction, orders destruction of the infringing stock, and awards damages to Sundown Cellars.

Best Practices to Prevent Counterfeits and Protect Your Wine Brand

Proactively Register Your Brand

  • USPTO trademark registration: Filing with the U.S. Patent and Trademark Office is crucial for nationwide protection.
  • State registrations: May offer limited local coverage, but if you plan to sell across state lines, a federal mark is essential.
  • International coverage: For export markets, consider the Madrid Protocol or direct filings in strategic countries.

Enhance Label Security and Traceability

  • Advanced label features: Holograms, microtext, QR codes, or serialized capsules.
  • Batch and lot tracking: Use scannable barcodes or RFID technology to confirm authenticity.
  • Blockchain solutions: Some wineries are experimenting with blockchain to provide an immutable record of each bottle’s journey from grape to shelf.

Implement a Vigilant Monitoring Strategy

  • Online surveillance: Regularly check e-commerce platforms and auction sites for suspicious listings.
  • Collaboration with industry groups: Associations like Napa Valley Vintners, Sonoma County Vintners, Washington Wine Institute, etc., can share intelligence and coordinate legal actions.
  • Customs enforcement: Record trademarks with CBP to interdict counterfeit shipments at borders.

Conclusion and Call to Action

Wine counterfeiting is not just an economic threat; it poses a significant risk to your brand’s integrity. As more consumers discover and appreciate U.S. wines, counterfeiters grow increasingly sophisticated. Proactive legal registrations, robust label security features, and rigorous market monitoring form the backbone of an effective anti-counterfeiting strategy.

By securing federal and international trademarks, collaborating with enforcement agencies, and acting swiftly when a counterfeit is discovered, wineries can protect their hard-earned reputations and safeguard their revenue.

Why Work with Dreyfus?

  • Recognized Expertise: Our team has over 20 years of experience combating IP infringement, with a deep understanding of wine industry challenges.
  • Global Network: We collaborate with partners worldwide to address counterfeits and brand abuses in key wine markets.
  • Customized Approach: We develop tailored strategies that combine trademark registrations, monitoring solutions, and decisive legal actions.

The cabinet Dreyfus et Associés is in partnership with a worldwide network of lawyers specialized in Intellectual Property.

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Birkenstock sandals: Evaluating their artistic merit for copyright protection

Written by Dreyfus16/04/2025

The question of whether Birkenstock sandals can be considered works of applied art and therefore eligible for copyright protection is a central topic in intellectual property law. Copyright protects works that exhibit originality and creativity. However, not all objects or designs qualify for this form of protection. This article analyzes whether Birkenstock sandals meet the necessary criteria for such protection, drawing on the principles of intellectual property law and recent legal precedents.

  Judicial Findings on Birkenstock sandals’ artistic merit

·      The German Federal Supreme Court’s ruling

In a decision number I ZR 16/24 dated February 20, 2025, the German Federal Supreme Court (BGH) ruled that Birkenstock’s sandal designs do not meet the necessary criteria to be considered works of applied art protected by copyright. The Court clarified that, to benefit from copyright, the product must demonstrate a certain level of creativity and personal choice. Birkenstock sandals, primarily designed for functionality and comfort, were deemed insufficiently creative to meet this criterion.

 Distinction between art and design

The Court also clarified the distinction between artistic works and functional designs. Artistic works are created primarily for their aesthetic value, while functional designs, like Birkenstock sandals, are intended for practical use. The minimalist design of Birkenstock sandals, emphasizing ergonomic support, was seen as serving practical goals rather than artistic expression

Originality and eligibility for copyright protection

Criteria for originality

Originality is a fundamental requirement for copyright protection. A work must be the personal creation of its author, reflecting creative and free choices. In the case of Birkenstock sandals, while their design may be considered distinctive due to its ergonomic benefits, it lacks the artistic originality needed to qualify as a work eligible for copyright protection.

 Implications for intellectual property protection

The absence of copyright protection does not mean that Birkenstock’s designs go unprotected. The company can still seek protection through other forms of intellectual property, such as design patents or trademarks, which safeguard the visual appearance of products and their brand identity. However, these protections focus more on the design’s utility or branding rather than the artistic expression of the product.

The design of Birkenstock sandals

 Functional design vs artistic expression

Birkenstock sandals are famous for their functional design, which prioritizes comfort and practicality. Features such as arch support and adjustable straps contribute to their popularity. However, these functional elements do not seem to meet the threshold of artistic creativity required for copyright protection. The minimalist design, although distinctive, is more focused on functionality than on aesthetic creativity.

 Minimal artistic expression

The design of Birkenstock sandals, consisting primarily of a simple sole and straps, is not characterized by a strong artistic expression. The aesthetic, while iconic, prioritizes ergonomics and comfort, which are more functional than artistic in nature.

 Comparison with other artistic designs

Compared to other footwear designs that emphasize ornamental aesthetics (such as high-fashion shoes), Birkenstock sandals appear less creative in terms of artistic expression. Their minimalist design, while practical and well-regarded, does not reflect the level of creativity typically required for applied art works protected by copyright.

  Conclusion

In conclusion, Birkenstock sandals do not meet the criteria necessary to benefit from copyright protection. While they are unique and widely recognized for their comfort and functionality, their design is more functional than creative. Therefore, these sandals would likely not be considered artistic works and protected by copyright under current intellectual property standards. This analysis highlights the importance of understanding the distinctions between different forms of intellectual property protection and the specific criteria for each form of protection.

Dreyfus Law Firm works closely with its clients to evaluate whether their designs and trademarks are eligible for protection under intellectual property law. We provide the necessary expertise to help you navigate these complexities and protect your rights.

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Overturning the ban on “soy steaks” and “veggie sausages”

Written by Dreyfus16/04/2025

On 28 January 2025, the French Council of State (Conseil d’État) issued two landmark decisions (n° 465835 and n° 492839), overturning the decrees (n° 2022-947 et n° 2024-144) banning the use of the terms “soy steaks” and “veggie sausages”. This decision is in line with the position of the European Court of Justice (ECJ), which had previously ruled on the issue. This ruling has significant implications for the food industry, particularly in relation to the labelling of plant-based products. It also reflects a wider legal debate about the use of traditional food terminology in the context of rapidly growing plant-based alternatives.

Background to the case

The legal framework of the ban

The French government initially banned terms such as “soy steaks” and “vegetable sausages”, arguing that such terms could mislead consumers into thinking that these products were made from meat. However, companies in the plant-based sector challenged this regulation, arguing that it unfairly restricted their ability to accurately market their products. The legal question arose as to whether these French decrees violated broader European principles of competition and the free market. This led to the Council of State’s decision to overturn the ban.

The role of European law

The Council of State’s decision follows an important ruling by the European Court of Justice in October 2024. The ECJ had emphasised that such bans could violate the freedom of companies to advertise their products, as long as the products were clearly labelled as plant-based and not derived from animals. This position was crucial to the Council of State’s assessment, which concluded that the French decrees did not comply with European principles of free movement of goods and commercial freedom.

The legal reasoning behind the repeal

The impact of the ECJ ruling

The Council of State’s decisions of 28 January 2025 followed the logic of the ECJ ruling and concluded that the French regulations banning terms such as “soy steaks” and “vegetable sausages” were overly restrictive. The Council of State stated that these terms could be used as long as there was a clear indication that the products were plant-based. This decision aims to provide greater freedom for producers while ensuring transparency for consumers.

Consumer protection versus corporate freedom

The Council of State balanced the need for consumer protection with the commercial freedom of companies. It concluded that the use of terms such as “steaks” or “sausages” would not confuse consumers, provided that the labelling clearly indicates that these products are plant-based. This approach seeks to strike a fair balance between preventing consumer confusion and allowing plant-based businesses the freedom to market their products effectively.

Impact on the plant-based food industry

Greater flexibility for manufacturers

With the ban lifted, manufacturers of plant-based products can now freely use terms such as “soy steaks” and “veggie sausages”. This decision improves their ability to market their products and supports the continued growth of the plant-based foods sector, which is expanding rapidly in France and Europe. It allows producers to label their products in a way that appeals to consumers, while maintaining the accuracy of their claims.

Impact on consumer behaviour

Consumers will benefit significantly from this decision as it will ensure clearer product labelling. This decision helps to reduce confusion about the nature of plant-based foods and increases the credibility of plant-based claims. As more people adopt vegetarian and vegan diets, the decision ensures that the marketing of these products remains transparent and in line with the values and expectations of environmentally conscious consumers.

Conclusion

The Council of State’s overturning of the ban on terms such as “soy steaks” and “veggie sausages” is a significant victory for the plant-based food industry. By aligning itself with the position of the ECJ, this decision allows companies greater freedom to market their products while maintaining transparency for consumers. It highlights the importance of balancing consumer protection, business innovation and market freedom in an evolving food landscape.

Dreyfus Law Firm works with clients in the food sector, providing specialist advice on intellectual property and regulatory issues to ensure compliance with national and European laws.

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FAQ

1. What is the Council of State?

The Council of State is the highest administrative court in France, responsible for ensuring that government decisions comply with French law. It advises the government on legal matters and rules on disputes involving public administration.

2. Why did France ban terms such as "soy steaks" and "vegetable sausages"?

France introduced the ban to avoid consumer confusion, as it believed that such terms could mislead consumers into thinking that these products were made from meat.

3. What impact has the ECJ ruling had on food labelling in Europe?

The ECJ ruling emphasised that plant-based products can use familiar food terminology as long as the label clearly indicates that they are plant-based, promoting marketing freedom while protecting consumers.

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Evolution of French case law on trademarks registered in the name and on behalf of a companies in the process of being set up: a trend towards streamlining formalities

Written by Dreyfus15/04/2025

The protection of a trademark is crucial for any business, including those in formation. However, the process of registering a trademark in the name and on behalf of a company still in the process of being formed raises complex legal questions, particularly regarding the adoption of acts and the ownership of rights. Recently, French case law has evolved towards simplifying the formalities required for these actions.

Legal context of companies in the process of being set up in France

Definition and legal framework

A company in the process of being set up is a legal entity that has not yet acquired its legal personality, which occurs upon registration in the French Trade Register (RCS). During this period, acts can be carried out by the founders in the name and on behalf of the future company. These acts can be adopted by the company once it is incorporated, in accordance with articles L. 210-6 and R. 210-6 of the French Commercial Code.

Procedures for reassumption of acts

Acts carried out on behalf of the company in the process of being set up can be reassumed in one of three ways:

  • By mentioning in the company’s statutes that a list of acts done on its behalf is annexed.
  • By granting a mandate to one of the partners to carry out specific acts.
  • By a decision of the company after its incorporation, expressly approving the acts that have been performed.

Trademark registration for a company in the process of being set up

Importance of early registration

Registering a trademark before the company is incorporated is crucial for securing the business name and preventing third parties from taking ownership of it. This registration is typically carried out by a founder acting on behalf of the company in formation.

Risks associated with lack of regularization

If, after the company’s incorporation, the trademark registration is not regularized, the company will not be considered the owner of the trademark. As a result, it will be unable to take action against trademark infringement or defend its rights. Furthermore, the founder who made the registration will remain personally liable.

Recent jurisprudential evolution

French Supreme Court’s case law revision of November 29, 2023

In three rulings on November 29, 2023 (n°22-12.865, n°22-18.295, and n°22-21.623), the French Supreme Court relaxed the conditions for reassuming acts carried out on behalf of a company in formation. Previously, only acts explicitly stating that they were done “in the name” or “on behalf” of the company could be reassumed. The court has now allowed judges to consider the common intent of the parties, even in the absence of such explicit mentions.

Implications for companies in formation

This development simplifies the reassumption of acts and reduces the formalities previously required. Founders now have greater flexibility in managing acts performed prior to the company’s incorporation.

Case study: the French “PROPULSE” case

In a recent case, decision handed down by the Judicial Court of Lyon on October 1, 2024 (no. 24/01144), a trademark “PROPULSE” had been registered by an individual “acting on behalf of the company Submersive Drinks in formation.” After incorporation, no steps were taken to transfer the trademark to the company. When a trademark infringement action was filed, the court ruled that the company could not act since it was not the rightful owner of the trademark.

  1. Practical recommendations for entrepreneurs
  • Formalize the acts: while recent jurisprudence has relaxed requirements, it is still advisable to explicitly state that acts are carried out “in the name and on behalf of the company in formation.”
  • Annex the acts to the statutes: listing acts performed on behalf of the company in the company’s statutes makes it easier for them to be automatically reassumed after incorporation.
  • Follow post-incorporation formalities: after the company is incorporated, take the necessary steps to transfer the trademark ownership officially to the company, including filing a modification request with the INPI (French National Institute of Industrial Property).

Conclusion

Recent jurisprudential developments have simplified the formalities regarding acts carried out on behalf of a company in the process of being set up, particularly concerning trademark registration. However, entrepreneurs must remain vigilant to ensure their trademark rights are fully protected after incorporation.

Dreyfus Law Firm works with clients in the food sector, providing specialist advice on intellectual property and regulatory issues to ensure compliance with national and European laws.

We collaborate with a global network of intellectual property attorneys.

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FAQ

 

1. What is the INPI?

The INPI (National Institute of Intellectual Property) is the French public body responsible for the registration and management of industrial property rights, such as trademarks, patents, and designs. It oversees the issuance of protection titles and the management of databases related to industrial property rights.

2. Can a trademark be registered in the name of a company that has not yet been registered?

Yes, a founder can register a trademark “in the name and on behalf of a company in the process of being formed”. This wording allows the company, once registered, to take over the rights to this trademark, provided that the regularization procedures are then carried out.

3. Who is the holder of the trademark before the company is registered?

Before registration, the applicant remains the legal holder of the trademark, even if he or she is acting on behalf of the company in formation. It is only after an explicit takeover (by statute or by decision) or a transfer that the company becomes the holder of the rights.

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The third draft of the General-Purpose AI Code of Practice: Objectives and future perspectives

Written by Dreyfus02/04/2025

The rapid advancement of artificial intelligence (AI) technologies has necessitated the development of comprehensive frameworks to ensure their ethical and responsible use. In this context, the European Commission has introduced the third draft of the General-Purpose AI (GPAI) Code of Practice, aiming to guide AI model providers in aligning with the stipulations of the EU AI ActRegulation (EU) 2024/1689). This article delves into the primary objectives of this draft and explores its future implications.

I – Objectives of the third draft of the General-Purpose AI Code of Practice

A – Enhancing transparency

A cornerstone of the third draft is its emphasis on transparency. All providers of general-purpose AI models are mandated to disclose pertinent information about their models, including design specifications, training data sources, and intended applications. This initiative seeks to foster trust among users and stakeholders by ensuring they are well-informed about the functionalities and potential limitations of AI systems. Notably, certain open-source models are exempted from these transparency obligations, reflecting a nuanced approach to diverse AI development paradigms.

B – Addressing copyright concerns

The draft also tackles the intricate issue of copyright in AI development. Providers are required to implement measures that respect intellectual property rights, ensuring that AI models do not infringe upon existing copyrights. This includes establishing mechanisms for rights holders to report potential violations and for providers to address such claims effectively. The draft outlines that providers may refuse to act on complaints deemed “manifestly unfounded or excessive, particularly due to their repetitive nature.”

C – Ensuring safety and security

For AI models identified as posing systemic risks, the draft delineates additional commitments focused on safety and security. Providers of these advanced models are obligated to conduct comprehensive risk assessments, implement robust mitigation strategies, and establish incident reporting protocols. These measures aim to preemptively address potential threats and ensure that AI systems operate within safe and ethical boundaries.

II – Future perspectives of the General-Purpose AI Code of Practice

A – Implementation challenges

As the AI landscape continues to evolve, implementing the GPAI Code of Practice presents several challenges. Providers must navigate the complexities of aligning their operations with the Code’s requirements, which may necessitate significant adjustments in their development and deployment processes. Ensuring compliance without stifling innovation will be a delicate balance to maintain.

B – Global influence and harmonization

The GPAI Code of Practice has the potential to set a global benchmark for AI governance. By establishing comprehensive guidelines, the European Commission aims to influence international standards, promoting harmonization across jurisdictions. This could lead to a more cohesive global approach to AI regulation, benefiting both providers and users worldwide.

Alongside the third draft, the Chairs and Vice-Chairs are also introducing a dedicated executive summary and an interactive website. These resources aim to facilitate stakeholder input, both through written comments and discussions within working groups and specialized workshops. The final version of the Code is expected in May, serving as a compliance framework for general-purpose AI model providers under the AI Act, while integrating cutting-edge best practices.

C – Continuous evolution and adaptation

Recognizing the rapid pace of AI advancements, the Code is designed to be adaptable. It emphasizes the need for continuous evolution, allowing for updates and refinements that reflect technological progress and emerging ethical considerations. This flexibility ensures that the Code remains relevant and effective in guiding AI development responsibly.

Conclusion

The third draft of the General-Purpose AI Code of Practice represents a significant step toward responsible AI governance. By focusing on transparency, copyright respect, and safety, it lays a foundation for ethical AI development. As the cCde progresses toward finalization, its successful implementation will depend on collaborative efforts among stakeholders to address challenges and seize opportunities for global harmonization.

Need expert guidance on AI and intellectual property? Dreyfus Law Firm specializes in intellectual property law, including trademark, copyright, and AI-related legal matters.

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FAQ

1 – What is the AI Act?

The AI Act is a regulation proposed by the European Commission aimed at governing the development and deployment of artificial intelligence systems within the European Union. It is the first comprehensive legal framework in the world dedicated to AI, designed to balance innovation and fundamental rights protection. The AI Act classifies AI systems into four risk levels: • Unacceptable risk (banned, such as social scoring systems or subliminal manipulation). • High risk (subject to strict requirements, including AI systems used in critical infrastructures, recruitment, or judicial decisions). • Limited risk (requiring transparency obligations, such as chatbots or deepfakes). • Minimal risk (with no specific obligations, such as AI-powered content recommendations). The primary objective is to ensure that AI systems deployed in the EU comply with fundamental rights, safety, and transparency while promoting responsible innovation.

2 – When will the AI Act come into force?

The AI Act was provisionally adopted in 2024 and is expected to come into force in 2025, following final approval by the European Parliament and the Council of the European Union. However, its implementation will be gradual: • Some immediate provisions will take effect six months after publication. • Rules for high-risk AI systems will apply starting in 2026. • Additional obligations, such as those for general-purpose AI models, may not be fully implemented until 2027. This phased approach allows businesses to adapt their operations to comply with the new regulatory framework.

3 – What is the legal framework for AI?

The legal framework for AI currently consists of a combination of European and national laws covering various aspects: 1. The AI Act (set to come into force in 2025), which will provide specific regulations for AI development and deployment. 2. The GDPR (General Data Protection Regulation), which governs the use of personal data—a key issue for AI systems. 3. The Product Liability Directive (Directive 85/374/EEC) and the upcoming AI Liability Directive (COM(2022) 495 final 2022/0302 (COD)), which define the responsibility of AI developers and users in case of damages. 4. Sector-specific regulations (e.g., finance, healthcare) that impose industry-specific AI compliance requirements. 5. Copyright and intellectual property laws, which impact the training datasets of generative AI models (e.g., ensuring that AI does not infringe on existing copyrights). This legal framework is constantly evolving to protect users and promote ethical AI development.

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Latest developments in generative AI and copyright: An in-depth analysis

Written by Dreyfus01/04/2025

The rapid evolution of generative artificial intelligence (AI) has transformed the creation and use of content, raising complex questions regarding copyright. This article provides a comprehensive overview of recent legal actions and legislative initiatives related to generative AI and copyright, highlighting the challenges and opportunities that emerge in this dynamic landscape.

Recent legal actions in the United States

In the United States, several lawsuits have been initiated concerning the use of copyrighted works in training generative AI models.

Case of Kadrey v. Meta

In this class action lawsuit, authors Richard Kadrey, Sarah Silverman, and Christopher Golden allege that Meta Platforms Inc. infringed their copyrights by using their books to train its AI model, LLaMA (Large Language Model Meta AI). On November 20, 2023, the U.S. District Court for the Northern District of California dismissed several claims, including those for direct copyright infringement based on the derivative work theory and vicarious copyright infringement. However, the court allowed the plaintiffs’ claims related to the removal of copyright management information under the Digital Millennium Copyright Act (DMCA) to proceed, acknowledging that the plaintiffs had alleged sufficient injury for Article III standing. Subsequently, on March 10, 2025, the plaintiffs filed a motion for partial summary judgment on direct copyright infringement, arguing that Meta cannot rely on a fair use defense concerning its alleged acquisition of “millions of pirated works” used to train its model. ​

Legal proceedings against OpenAI and Microsoft

In December 2023, The New York Times filed a lawsuit against OpenAI and Microsoft, alleging that their AI models were trained using the newspaper’s articles without authorization, constituting copyright infringement. This case underscores the growing tensions between content creators and AI developers regarding the use of protected works in AI training. As of March 2025, a federal judge has allowed the lawsuit to proceed, dismissing some claims but permitting the core allegations of copyright infringement to move forward. ​

International legal developments

Legal actions related to generative AI and copyright are also increasing internationally.

Legal action in France against Meta

In France, three associations representing authors and publishers—the Syndicat National de l’Édition (SNE), the Société des Gens de Lettres (SGDL), and the Syndicat National des Auteurs et des Compositeurs (SNAC)—have initiated proceedings against Meta. They allege that Meta used copyrighted works without authorization to train its generative AI model. This is the first action of its kind in France, demanding copyright enforcement and the complete removal of data repositories used for AI training.​

Legislative and regulatory initiatives

In response to these challenges, several legislative and regulatory initiatives have been proposed or implemented.

United States: Generative AI Copyright Disclosure Act

In April 2024, U.S. Representative Adam Schiff introduced the Generative AI Copyright Disclosure Act. This bill requires companies to disclose the copyrighted works used to train their generative AI systems by submitting a notice to the Register of Copyrights at least 30 days before the public release of a new or updated AI model. Penalties for non-compliance start at $5,000, with no maximum penalty specified.

European Union: AI Act

In the European Union, the proposed Artificial Intelligence Act (AI Act), which was formally adopted on 13 March 2024, includes specific provisions designed to address intellectual property concerns related to generative AI.

Among its key requirements, the AI Act mandates that developers of general-purpose AI models, including generative AI systems, must provide detailed documentation on the content used for training, including information on whether the datasets contain copyright-protected material. This transparency obligation is aimed at ensuring that rights holders are aware of how their works may have been used.

Additionally, the Act introduces a duty to clearly label AI-generated content, enabling consumers and rightsholders to identify content created without direct human authorship.

These measures reflect the EU’s broader objective to strike a balance between fostering AI innovation and safeguarding intellectual property rights, especially as tensions grow between creators and developers of large-scale AI systems.

Conclusion

The intersection of generative AI and copyright law is a rapidly evolving field, marked by significant legal actions and legislative efforts worldwide. As AI technology continues to advance, it is imperative for stakeholders—including developers, content creators, and legal professionals—to stay informed and engaged with these developments to navigate the complex landscape effectively.

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FAQ

What is generative AI?

Generative AI refers to artificial intelligence systems capable of creating content, such as text, images, or music, based on patterns learned from existing data.

Why is generative AI raising copyright concerns?

Generative AI models are often trained on large datasets that include copyrighted works, leading to concerns about unauthorized use and potential infringement.

What is the Generative AI Copyright Disclosure Act?

It is a proposed U.S. legislation requiring companies to disclose the copyrighted materials used to train their generative AI systems, aiming to increase transparency and protect creators' rights.

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The CJUE Neutralizes the Reciprocity Rule of Article 2, §7 of the Berne Convention for Works Originating from a Non-EEE Country

Written by Dreyfus25/03/2025

The Court of Justice of the European Union (CJUE) now effectively neutralizes the reciprocity rule found in Article 2, §7 of the Berne Convention for works originating from a third country outside the European Economic Area (EEE). This shift has immediate consequences for stakeholders in the fields of design and copyright, illustrating the expanding scope of EU copyright harmonization. Below, we outline the core aspects of this change, moving from the overarching principle to its practical implications in a structured manner.

Context and Legal Foundations

  • The Berne Convention and EU Law
    We observe that the Berne Convention has historically allowed signatory states to apply a principle of reciprocity to artistic and applied works from countries that did not offer equivalent protection. Recently, however, the CJUE clarified that the harmonization achieved by European directives (notably Directive 2001/29/EC) supersedes individual Member States’ prerogative to rely on reciprocity in areas that the EU has fully regulated. This decision stems from the principle that only the EU legislator may introduce exceptions or limitations once an aspect of copyright law has been harmonized across Member States.
  • Official Sources and Regulatory References
    According to the CJUE’s interpretation, Member States must refrain from applying reciprocity where EU law intends for equal treatment, irrespective of an author’s nationality or a work’s country of origin.

Key CJUE Decision of 24 October 2024

CJUE, 1re ch., 24 Oct. 2024, Aff. C-227/23, Kwantum Nederland BV, Kwantum België BV c/ Vitra Collections AG
In its landmark ruling of 24 October 2024, the CJUE held that Member States cannot apply material reciprocity under Article 2, §7 of the Berne Convention to refuse or limit copyright protection for works of applied art originating in a non-EEE country. By doing so, the Court confirmed that only the EU legislator may decide on any limitation to economic rights granted under harmonized directives. The decision underscores the principle that national rules tied to the country of origin become inoperative where the EU has established overarching copyright norms.

Impact on Protection for Artistic and Applied Works

  • Extended Copyright for Third-Country Creations
    By neutralizing the reciprocity rule, the CJUE effectively grants works originating from countries outside the EEE a level of protection in line with EU standards, provided they meet the originality and other formal criteria under EU law. This shift primarily benefits foreign creators of designs, industrial models, and artworks who previously faced potential restrictions if their home jurisdictions did not offer reciprocal protection.
  • Reinforced Harmonization and Legal Certainty
    From a business and innovation standpoint, uniform copyright protection across the EU promotes legal certainty. Designers, manufacturers, and distributors now operate under clearer guidelines, facilitating smoother market entry and fewer obstacles linked to a work’s geographic origin.

Practical Consequences for Rights Holders

  • Easier Enforcement: Foreign authors or rights holders can assert their copyrights uniformly throughout the EU, without having to prove reciprocal treatment in their home country.
  • Encouraged Cross-Border Collaboration: Companies in the EEE may confidently license or acquire designs from third countries, knowing that these rights enjoy robust backing under EU directives.
  • Reassessment of Agreements: Existing contracts or licenses that assumed limited rights based on reciprocity might need a thorough legal review to align with the CJUE’s position.

Recommended Next Steps & Best Practices

  • Monitor Legislative Updates: Future EU legislative initiatives may further define or refine limitations.
  • Review IP Portfolios: Rights holders should ensure that new or ongoing filings for design or copyright registration reflect this updated landscape.
  • Consult Specialized Counsel: Given the complexity of international IP rights, professional guidance is indispensable to navigate cross-border transactions effectively.

The CJUE takes on profound significance for EU copyright enforcement. We advise rights holders, designers, and businesses to adapt proactively to this refined legal environment.

  • Subscribe to Our Newsletter: Stay informed about important rulings and policy shifts.
  • Follow Us on social media: Engage with our professional community for timely updates and best practices.

At Dreyfus Law Firm, we stand ready to provide comprehensive legal strategies tailored to each client’s needs. Our services include advising on copyright registration and enforcement, brand and design protection, domain name portfolio management, licensing and transfer negotiations, anti-counterfeiting initiatives, and litigation support across multiple jurisdictions.

Dreyfus Law Firm is in partnership with a global network of Intellectual Property attorneys, ensuring comprehensive assistance for businesses worldwide.

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FAQ

1. Does this ruling apply to all creative works?

Yes. It covers any original work under EU copyright law, including works of applied art and design.

2. What if my home country does not protect such works at all?

Under the CJUE’s new interpretation, EU protection still applies if the work meets EU originality standards.

3. Will this affect the duration of protection?

The CJUE’s decision concerns the scope of protection, not duration. However, the EU already has specific rules on duration that Member States must respect.

 

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The Protection of AI-Generated Inventions Under Patent Law

Written by Dreyfus24/03/2025

The rapid rise of artificial intelligence (AI) has led to significant advancements in various fields, including technological innovation. AI systems are now capable of autonomously generating inventions without direct human intervention. This new reality raises a fundamental question in patent law: Can an invention generated by an AI be protected by a patent?

This complex issue is at the center of concerns for intellectual property offices and legislators worldwide, who are debating how patent law should adapt to this new form of innovation.

 Patent eligibility of AI-Generated inventions

Patentability criteria

Pursuant to the article L611-10 of the French Intellectual Property Code, to be eligible for a patent, an invention must meet three fundamental criteria:

  • Novelty: The invention must not have been disclosed to the public before the patent application was filed.
  • Inventive step: The invention must not be an obvious improvement for a person skilled in the art.
  • Industrial application: The invention must be capable of being used in industry.

When an AI generates an invention, assessing these criteria becomes more complex. The originality of the invention largely depends on the training data and algorithms used by the AI. It then becomes difficult to determine whether the invention is truly novel or merely a reformulation of existing information.

Furthermore, the inventive step requires that an invention is not an obvious outcome of prior knowledge. However, if an AI is programmed to analyze a vast corpus of technical data and propose optimized solutions, can its invention be considered as involving sufficient creative effort?

Challenges in recognizing AI as an inventor

One of the major legal obstacles concerns the attribution of inventorship. Today, most legal frameworks require the inventor to be a natural person.

The European Patent Office (EPO) and the United States Patent and Trademark Office (USPTO) have rejected patent applications where an AI was designated as the inventor.

For example, in January 2020, the EPO rejected two European patent applications in which the designated inventor was an artificial intelligence system named DABUS. This decision was based on the European Patent Convention (EPC), which states that only a human being can be recognized as an inventor.

The applicant, creator of DABUS, argued that this AI, based on artificial neural networks, had autonomously conceived the inventions. However, the EPO concluded that, under the EPC, the rights attached to inventorship, such as the right to be mentioned as an inventor or to assign a patent, can only be granted to natural or legal persons. AI systems, lacking legal personality, cannot be recognized as inventors.

This case highlights the legal challenges posed by artificial intelligence in the field of intellectual property.

These decisions are motivated by the fact that only humans can be legally recognized as inventors, particularly due to legal rights and liability considerations.

This stance raises a dilemma: When human intervention is minimal or nonexistent in the invention process, who should be credited as the inventor?

Some experts suggest attributing inventorship to the AI user or the entity that controls the AI, but this approach remains highly debated.

Legislative developments

International Perspectives

Given the uncertainties surrounding AI and patentability, several initiatives are underway worldwide:

  • The World Intellectual Property Organization (WIPO) has launched consultations on the impact of AI in patent law and is considering potential reforms to harmonize approaches among different countries.
  • The United States has seen the emergence of several legislative proposals aimed at clarifying the legal status of AI-generated inventions, although no major reform has been adopted so far.

In the United States, in October 2023, the White House issued an executive order aimed at ensuring the safe and reliable development of artificial intelligence (AI). In response, the USPTO published, in February 2024, guidelines on the patentability of AI-assisted inventions.

These guidelines specify that:

  • AI may contribute to an invention, but
  • Only a human who has made a significant contribution to each claim can be legally recognized as an inventor.

This position aligns with previous court decisions affirming that the inventor must be a natural person. Thus, patent applications involving AI must explicitly name individuals who have made a substantial contribution to the invention, excluding the possibility of designating the AI itself as the inventor.

This regulatory development highlights the importance of clarifying the respective roles of humans and AI systems in the innovation process, to ensure adequate legal protection for inventions in the United States.

Recent changes in patent law

Some countries have already introduced legislative changes:

  • South Africa became the first country to grant a patent to an AI-generated invention, although this remains an isolated case.
  • Australia also examined the issue, and in a decision on July 30, 2021, the Federal Court admitted this possibility (Thaler v Commissioner of Patents [2021] FCA 879).

These developments show that the recognition of AI-generated inventions is an evolving topic, and regulators will likely need to clarify their stance to address the challenges posed by AI and intellectual property.

Practical Considerations for Innovators

Strategies for Protecting AI-Generated Inventions

Businesses and innovators must anticipate legal challenges by adopting suitable strategies:

  • Ensure a human role in the invention process: A researcher or engineer should be sufficiently involved to be designated as the inventor.
  • Document every stage of creation: Keeping detailed records of how the AI operates and its role in the invention is essential.
  • Explore alternatives to patent protection: When patentability is uncertain, other forms of protection, such as trade secrets, may be considered.

Implications for Intellectual Property management

Companies must adapt their patent management strategies to the challenges posed by AI. It is advisable to:

  • Update contracts to clearly define ownership of AI-generated inventions.
  • Monitor legislative developments to anticipate possible regulatory changes.

Conclusion

The emergence of AI in innovation raises profound legal and ethical questions. Current patent law is not fully adapted to this new reality. Legislators and intellectual property offices must therefore adapt to address the challenges posed by autonomous AI-generated inventions.

Until regulatory clarifications are made, innovators must adopt proactive strategies to effectively protect their inventions and safeguard their intellectual property rights.

Need expert guidance on AI and intellectual property? Dreyfus Law Firm specializes in intellectual property law, including trademark, copyright, patent and AI-related legal matters. Our experts stay ahead of AI and copyright developments!

Dreyfus Law Firm collaborates with a global network of intellectual property attorneys.

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