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Intellectual Property and Smart Tattoos: Marking Your Ink Yours

Firm Thought Leadership

In January 2016, L’Oreal made headlines with the debut of “My UV Patch,” a thin skin sensor designed to monitor UV exposure.[1] L’Oreal partnered with a leading stretchable electronics company, MC10, Inc., to develop attachable electronic circuitry and launch a new wave of wearable devices. The debut is an example of the proliferation of bio-wearables coined “smart tattoos,” which refer to devices that effectively place biometric sensors and electronics directly onto the skin.[2] More recently, Harvard and MIT researchers created biosensitive ink that can be drawn on human skin to monitor a person’s blood sugar levels.[3] These breakthroughs represent the next leap in connecting the human body to the technological world, reminiscent of the leap with smartphones ten years ago.

If smart tattoos are the future in technology, though, legal systems must be prepared to face the intellectual property issues they will inevitably present. Smart tattoos are a technological extension of a highly intricate form of art, traditional tattoos, so two forms of intellectual property to naturally consider in this context are copyrights and patents.  This article will explore possible issues in applying these areas of law to this technology.

Copyright Law

Copyright law protects original works of authorship, including pictorial works that are in a fixed medium.[4] Although smart tattoos, as artistic works, may appear to deserve copyright protection, they present dilemmas in three established requirements for copyright protection: originality, fixation, and separability.

The Supreme Court has defined originality as merely requiring “at least some minimal degree of creativity,” although “[t]o be sure, the requisite level of creativity is extremely low…”[5] For traditional forms of art and literature, including tattoos, originality is almost a non-requirement. However, many smart tattoos rely on much more common shapes and colors as their visual base. For example, in terms of design, L’Oreal’s My UV Patch is simply a heart with several squares inside it. Compared to the intricate designs of many traditional tattoos, such a design arguably resembles basic building blocks for artistic works.

Courts have provided some insight as to whether simple geometric shapes can be original enough for copyright protection. In Atari Games Corp. v. Oman, the D.C. Circuit noted that while shapes alone are not original enough for copyright protection, they can qualify “when selected or combined in a distinctive manner indicating some ingenuity.”[6] Thus, while My UV Patch’s heart shape by itself is likely not copyrightable, the heart shape combined with a distinctive array of squares inside may be. Still, many smart tattoos may be deemed too functional in design for copyright protection, so developers should take care to add distinctive non-functional elements to their product design to preserve potential copyright protection.

As for fixation, a work is fixed when it is “sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration.”[7] Traditional tattoos are generally permanent works and meet this hurdle. However, the appearance and form of certain smart tattoos can easily be altered, such as changing the color of electronic parts. 

Courts have not considered the requisite level of fixation of tattoos, but they have discussed fixation with other works that are not completely permanent. In Kelly v. Chicago Park District, the Seventh Circuit determined that a garden was not “stable or permanent enough to be called ‘fixed.’”[8] A garden’s appearance was apparently too inherently variable even though the plants themselves could last quite a while.

While smart tattoos are themselves not living combinations, they are drawn on the human body. In one well-known case involving tattoos, the tattooist who decorated Mike Tyson’s face sued Warner Brothers for alleged copyright infringement regarding the design’s use in the move “The Hangover Part II”.[9] Warner Brothers argued that the human body was a “useful article” and thus not eligible as a copyrightable medium.[10] Unfortunately, the case settled before any final decision could be made.[11]

Perhaps the biggest hurdle for smart tattoos is the separability requirement. The federal code itself states that a “design of a useful article … shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.”[12] Most smart tattoos depend heavily on their design to be functional. For example, biosensitive ink can alert users of dehydration by changing colors in response to blood sugar levels.[13] Smart tattoo manufacturers would have to rely on aspects of their product designs that are wholly unrelated to functionality to obtain copyright protection. In that respect, they may be forced to add additional artistry that serves no functional purpose, which may increase the cost of such devices.

Patents

Utility patents protect technological improvements in the form of an invention.[14] Like with copyright law, patent applicants must meet several requirements to be granted a patent, the most prominent of which are subject matter, novelty, and non-obviousness.

35 U.S.C. § 101 states that an invention must be one of the following to be eligible for patentability: process, machine, manufacture, or composition of matter. A “machine” has been defined to include “every mechanical device or combination of mechanical powers and devices to perform some function and produce a certain effect or result.”[15] A “process” is “a mode of treatment of certain materials to produce a given result.”[16] Smart tattoos, as biomechanical devices that produce some functional result, are likely to be eligible for protection as either devices or processes.

Novelty is the second requirement for patentability. An invention lacks novelty if it has been previously “anticipated” by certain disclosures, as set forth in 35 U.S.C. § 102. Manufacturers should easily be able to develop devices that don’t contain the same elements as previous devices. Wearable technology itself is relatively new, with many new methods of skin-to-device communication, materials, and functionalities.[17]

Non-obviousness, the third requirement, is defined in 35 U.S.C. § 103. Any invention that is obvious at the time of its effective filing date is ineligible for patent protection. Smart tattoo manufacturers must keep in mind that simple variations of another smart tattoo may not be enough to overcome the obviousness requirement, particularly if the variations are directed to an artistic element. Additionally, merely applying old technologies to wearable devices might not be enough. The Supreme Court has stated that combining known elements with known methods to yield predictable results may support a conclusion of obviousness.[18] Thus, if one was to rely on such an application, there must be something unpredictable about the application itself to overcome the obviousness requirement.

Utility patents, however, are not the only type of patents that may be applicable to smart tattoo. Design patents protect the ornamental design of a functional item and thus may offer similar protection to copyrights in the case of smart tattoos.[19] However, the requirement that the design be “ornamental” poses a similar issue to the separability requirement for copyright protection. To be ornamental, a design cannot be the result or merely a by-product of functional or mechanical considerations.[20] In other words, the design must be for the strict purpose of ornamenting. As mentioned, most smart tattoos depend on their design to visualize their functionality. Thus, smart tattoo manufacturers should take care to add design aspects that are not intended to display their devices’ functions.

35 U.S.C. § 171 also requires that a design be “original.” Thus, a design which merely simulates or reproduces an existing design will not get design patent protection. However, smart tattoos can constantly change their design based on responses from the user. Therefore, it is uncertain whether a smart tattoo that will inevitably mimic an existing design, perhaps one on a traditional tattoo, qualifies as “original.” If a smart tattoo mimics an existing design 99% of time but in rare occasions changes to a novel design, is it original enough for 35 U.S.C. § 171? Courts have yet to decide on this issue.

Even if a manufacturer manages to overcome these requirements and acquire a patent on its smart tattoo technology, it may face issues of divided infringement. Because smart tattoos respond to applications on a user’s skin, they may behave differently based on the physiology of their users. Thus, not only may competing manufacturers not perform all the steps of a patent claim themselves, but the performed steps may be wholly unanticipated by the patent claim. Divided infringement, which allows parties to be sued for patent infringement if they direct or control another party’s performance, will likely still allow aggrieved parties to sue the infringing manufacturer in a similar vein to drug infringement cases.[21] Even so, because smart tattoos may respond in novel ways, smart tattoo manufacturers wishing to acquire patent protection must include sufficient breadth in their patent claims to cover their inventions.

Conclusion

Any current or potential developer of smart tattoos must be prepared to evaluate their options for intellectual property protection. As wearable technology of this type becomes more popular, developers will almost certainly face efforts from other companies to both copy their designs and assert their own intellectual property rights.


 *Han Doh, a Baker Botts law clerk, assisted in the preparation of this article.

[1] L’oréal Debuts First-Ever Stretchable Electronic Uv Monitor at the 2016 Consumer Electronics Show, L’Oreal (June 1, 2016), https://www.loreal.com/media/press-releases/2016/jan/loreal-debuts-first-ever-stretchable-electronic-uv-monitor.

[2] Biometric Tattoos For Medicine, Chaotic Moon (April 26, 2016), https://www.feeldesain.com/biometric-tattoos-for-medicine-chaotic-moon.html.

[3] Feeling woozy? Time to check the tattoo, The Harvard Gazette (Sept. 28, 2017), https://news.harvard.edu/gazette/story/2017/09/harvard-researchers-help-develop-smart-tattoos/.

[4] 17 U.S.C. § 102.

[5] Feist Publications, Inc., v. Rural Telephone Service Co., 499 U.S. 340, 345.

[6] 888 F.2d 878, 883 (D.C. Circ. 1989).

[7] 17 U.S.C. § 101.

[8] 635 F.3d 290, 303 (7th Cir. 2011).

[9] Warner Bros. Sued For Using Mike Tyson's Tattoo In New Movie, Wired (May 2, 2011), https://www.wired.com/2011/05/infringing-tattoo.

[10] Whose Tattoos? Body Art and Copyright, Center for Art Law (March 16, 2016), https://itsartlaw.com/2016/03/16/whose-tattoos-tattoos-and-copyright.

[11] Id.

[12] 17 U.S.C. § 101.

[13] Feeling woozy? Time to check the tattoo, The Harvard Gazette (Sept. 28, 2017), https://news.harvard.edu/gazette/story/2017/09/harvard-researchers-help-develop-smart-tattoos/.

[14] 35 U.S.C. § 101.

[15] Digitech Image Techs. v. Electronics for Imaging, 758 F.3d 1344, 1348 (Fed. Circ. 2014).

[16] Gottschalk v. Benson, 409 U.S. 63, 70 (1972).

[17] Color-Changing, Internet-Accessible Tattoos Are Now A Thing (Aug. 19, 2016), https://www.essence.com/news/smart-tattoos-access-internet-change-colors.

[18] KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).

[19] 35 U.S.C. § 171.

[20] See In re Carletti, 328 F.2d 1020 (CCPA 1964).

[21] Divided Infringement – Expanding Patent Infringement Liability (Feb. 16, 2017), https://www.theiplawblog.com/2017/02/articles/patent-law/divided-infringement-expanding-patent-infringement-liability/.

 

About Baker Botts L.L.P.
Baker Botts is an international law firm of approximately 725 lawyers practicing throughout a network of 14 offices around the globe. Based on our experience and knowledge of our clients' industries, we are recognized as a leading firm in the energy and technology sectors. Throughout our 179-year history, we have provided creative and effective legal solutions for our clients while demonstrating an unrelenting commitment to excellence. For more information, please visit BakerBotts.com.

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