Fair use in artificial intelligence, advancements in autonomous vehicles, and the complexities of global licensing were key topics at a recent hybrid event hosted by the Licensing Executives Society (LES). The event, organized by the High Tech Sector, was led by LES USA-Canada board members, Chitra Kalyanaraman (High Tech Sector chair) and Ian DiBernardo.
Held at Brown Rudnick’s New York Times Square office, the event allowed for both in-person (25 attendees) and online participation (50 attendees), thanks to the generous hosting and sponsorship by Brown Rudnick. In-person attendees enjoyed a networking reception, and participants from both formats were eligible for Continuing Legal Education (CLE) credits in CA, NJ, NY, PA, and TX.
Panel One: Hot Topics in Generative AI:
Moderator/Speaker: Ian DiBernardo, Partner, Chair, IP Litigation and Co-Head, US Technology, Brown Rudnick
Speaker: Amir Ghavi, AI, Tech Transactions & IP Partner, Fried Frank LLP
The first panel was preceded by an introduction by Harold Laidlaw, an associate with Brown Rudnick LLP, presenting both a technical introduction to large language models (a foundational technology to generative AI) as well as an overview of recent and relevant copyright cases relating to that technology. Mr. Laidlaw’s introduction was followed by a panel discussion with Ian DiBernardo and Amir Ghavi.
The panel delved into AI model development’s legal and ethical ramifications, particularly concerning copyright and fair use. The panelists explored both sides of the issue, contrasting the view that AI model development constitutes fair use due to its transformative nature of utilizing existing works with the view that attention should be paid to downstream users of AI models, suggesting that the interests of those questioning the use might not align with broader ethical considerations. Both referenced the New York Times’ lawsuit against OpenAI and Microsoft as a pertinent example.
Speakers also addressed the complexities of navigating AI regulations, especially within the EU AI Act context, and data management’s criticality. Mr. DiBernardo remarked, “I think everyone is panicked about the EU AI Act, and they are trying to interpret its full scope.” He pointed out that the legislation spans 450 pages. Mr. Ghavi concurred, adding, “The breadth is astonishing!” They emphasized the need for case examples to provide clearer guidance on the Act’s boundaries.
Regarding legal issues related to AI, Mr. DiBernardo forecasted an increase in legal actions against AI companies concerning IP and product liability and bias. The panelists also highlighted the rise in enforcement actions by regulatory bodies and the challenges posed by legacy contracts.
Hot Topics in Imaging:
Moderator: Chitra Kalyanaraman, Senior Patent Counsel, Johnson & Johnson
Speaker: Zion Maffeo, Deputy General Counsel, Pony.ai
The conversation centered around the commercialization and regulatory challenges of autonomous vehicles. Zion Maffeo emphasized the need for regulatory clarity and spoke about topics in affecting the traditional automotive industry, as well as those unique to the autonomous space. In this regard, Mr. Maffeo highlighted the importance of scaling up production and reducing costs and spoke to the complexities of compliance requirements in different jurisdictions. In a discussion on the history of autonomous vehicles (AVs) and the current state of AV technology, Ms. Kalyanaraman discussed the five stages of autonomous vehicles and AI, while Mr. Maffeo emphasized the importance of LIDAR technology. Both speakers agreed that significant progress has been made in urban environments, but challenges may remain before autonomous vehicles can be widely adopted. Regulatory issues were also discussed, focusing on data management and security, particularly in the context of U.S. and European regulations.
An interesting point came up when highlighting the long history of autonomous vehicle development. Ms. Kalyanaraman said, “I think we’re talking about things that came out of the DARPA (Defense Advanced Research Projects Agency) Grand Challenges in the mid-2000s.” Mr. Maffeo agreed and pointed out, “Since the mid-aughts (2000s), all experts have been telling the public and our investors that full autonomy is two years away, and it’s always been just another two years away.” He countered, “For Pony.ai the future is here in the form of Robo Taxis and Robo Trucks,” pointing out that hundreds are on the road.
Hot Topics in Global Licensing:
Moderator: Dean Ramanathan, Senior Associate, Brown Rudnick LLP
Speaker: Anne Louise St. Martin, Senior Director, Chief Counsel Patents, IP Council & Ops, Mondelez International
Speaker: Sadhana Chitale, Senior Director, Assistant Professor at NYU Langone Health
The panel discussed the complexities and challenges of licensing intellectual property (IP) globally, both generally with respect to all technologies, while also speaking to their specializations in the life sciences and consumer goods industries. The speakers highlighted the benefits and downsides of licensing, the importance of understanding local regulations and cultural nuances, and the challenges of navigating international patent filings.
The panel was preceded by an introduction by Dean Ramanathan, an associate with Brown Rudnick LLP, providing an overview of recent and relevant cases related to licensing over global borders, as well as risks and opportunities inherent in several specific geographic areas. Mr. Ramanathan discussed the challenges in enforcing IP rights in different jurisdictions, particularly China. He mentioned that China recently introduced punitive damages for willful infringers, but damages are still not as high as in the United States. He said, “This makes it difficult to enforce licenses and keep licensees within agreed terms.” He also highlighted the stricter FRAND (fair, reasonable, and non-discriminatory) requirements in China, which can impact licensing negotiations and agreements. Mr. Ramanathan’s introduction was followed by a panel discussion with Anne Louise St. Martin and Sadhana Chitale, moderated by George Phillips.
Ms. St. Martin provided her perspective on global licensing challenges, emphasizing the importance of understanding the business realities of the licensing partner. She suggested, “Have realistic timelines for product development, regulatory considerations, and the impact of royalties on product margins.” Ms. St. Martin stressed that in consumer goods, “Even seemingly reasonable royalties can affect a product’s viability if they impact the company’s margins too much.” This practical, business-focused approach to licensing negotiations provides valuable insight into how large consumer goods companies approach global licensing deals. Ms. Chitale shared her experience with global licensing in an academic setting, providing an example particularly in Abu Dhabi. She recounted that when trying to license a technology related to oral insulin, they learned that deals in that part of the world often require an intermediary. She said, “This cultural and business practice was new to my team.” This highlighted the importance of understanding local customs and business practices in global licensing deals.
All the speakers emphasized the need for collaboration, early validation, and de-risking early-stage assets to navigate these challenges successfully. Additionally, speakers discussed the importance of contractual rights, especially for trade secrets in the AI space, and the challenges of monitoring licensee compliance. The panelists also discussed their experience with working with vendors who use AI solutions, both in IP due diligence and general drafting and other services, and how they accept and mitigate associated risks. Finally, they shared their experiences filing patents internationally and negotiating royalties for consumer goods.

Karthika Perumal (LES Past-President), Chitra Kalyanaraman (LES Board Member) and event speaker, Anne Louise St. Martin (Senior Director, Chief Counsel Patents, IP Council & Ops at Mondelez International)

Event attendees at the Brown Rudnick Office in NYC during the third session on Global Licensing (event speakers: Anne Louise St. Martin, Senior Director, Chief Counsel Patents, IP Council & Ops at Mondelez International;Sadhana Chitale, Senior Director, Life Sciences, Tech Transfer at NYU Langone Health; George Phillips, Senior Patent Counsel at Johnson & Johnson).

LES Board Members and Event Co-Organizers, Chitra Kalyanaraman and Ian DiBernardo.

Event attendees at the Brown Rudnick Office in NYC during the second session with Zion Maffeo from Pony.ai.
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