Tag: Devlin Hartline

CPIP Roundup – September 30, 2020

Post author By Joshua Grove
Post date September 30, 2020

Greetings from CPIP Executive Director Sean O’Connor

As we move through our busy fall season here at CPIP, we are grateful for the efforts of everyone in the George Mason University community keeping us safe and healthy. We are fortunate that in these highly uncertain times, we are still able to focus on what we do best: bringing you the research, impact policy pieces, and programming that you have come to expect.

In the copyright sphere, we were gratified by the success of our postponed—and ultimately virtual—conference, The Evolving Music Ecosystem. Highlighted by an informative and moving fireside chat between singer, songwriter, and author Rosanne Cash and CPIP’s Sandra Aistars, the conference also featured seven panels of academics, industry specialists, and artists who provided invaluable insight into copyright law and the music business, especially in light of 2020’s challenges to the industry. Thank you to all who participated and attended! Videos of the keynote address and panel presentations can be watched here.

CPIP also congratulates Shira Perlmutter on her appointment to Register of Copyrights and Director of the U.S. Copyright Office by Librarian of Congress Carla Hayden. We very much look forward to Ms. Perlmutter’s continued positive impact on the copyright community in her new role.

In the patent sphere, CPIP Senior Fellow for Innovation Policy Jonathan Barnett led our roundtable, Measuring the Value of Patent Licensing. Leading legal scholars, economists, and industry representatives focused on the data collection and methodological approaches to quantifying the full economic benefits of commercializing new innovation through patent licensing models.

Congratulations to CPIP Senior Scholar Erika Lietzan on becoming the William H. Pittman Professor of Law & Timothy J. Heinsz Professor of Law at University of Missouri School of Law and for being named a “Best Lawyer in America” for 2020! We are proud of the many accomplishments of our Scholars!

In the coming month, we are excited to host our Eighth Annual Fall Conference on October 7-8. We are partnering with the National Security Institute (NSI) at Scalia Law School to focus on 5G at the Nexus of IP, Antitrust, and Technology Leadership. We hope you’ll be able to join us! You can see the conference program, confirmed speakers, and register for the virtual event here.

Last, but certainly not least, we are proud of the academic and policy publications of our Scholars, Fellows, and other affiliates. Keep reading to learn about work by Sandra Aistars, Jonathan Barnett, Stuart N. Brotman, Ross E. Davies, H. Tomás Gómez-Arostegui, Devlin Hartline, Chris Holman, Erika Lietzan, and Kristen Osenga.

CPIP Eighth Annual Fall Conference with USPTO Director Andrei Iancu on October 7-8

2021 5G Conference image

CPIP’s Eighth Annual Fall Conference will be hosted virtually from George Mason University Antonin Scalia Law School in Arlington, Virginia, on October 7-8, 2020. The theme this year is 5G at the Nexus of IP, Antitrust, and Technology Leadership. The conference is being co-hosted by the National Security Institute (NSI), and it features a keynote address by USPTO Director Andrei Iancu.

This conference addresses fast-emerging intellectual property (IP), antitrust, and technology leadership issues in the 5G and “Internet of Things” innovation ecosystem. Coverage includes standard-essential patents (SEPs) along with established and emerging markets on a regional and global basis. Speakers are drawn from the academic, industry, and policymaking communities, with an emphasis on using objective fact-based analysis to explore points of convergence among legal, economic, and geopolitical perspectives on the IP and regulatory infrastructures that underlie these critical industries.

Registration closes on Monday, October 5, 2020, at Noon ET, so please register soon! We have 4 hours of Virginia CLE credit pending!

To visit our conference website and to register, please click here.

CPIP Hosts Academic Roundtable on Patent Licensing Valuation

hand under lightbulbs drawn on a blackboard

On September 17, 2020, CPIP hosted an academic roundtable entitled Measuring the Value of Patent Licensing online from George Mason University Antonin Scalia Law School in Arlington, Virginia. The roundtable, which was moderated by CPIP Senior Fellow for Innovation Policy Jonathan Barnett, included leading scholars, economists, and industry representatives.

The sessions focused on the existing methodologies developed to measure IP transactions, the insights achieved so far using those methodologies, and the possibilities for developing more precise methodologies to measure licensing and related transactional activities in the IP marketplace. They also examined the mechanics of IP licensing and transactional markets, how IP transactions generate social value, and the extent to which existing IP legal regimes may impede IP markets.

The Evolving Music Ecosystem Conference with Rosanne Cash

Rosanne Cash

On September 9-11, 2020, CPIP hosted The Evolving Music Ecosystem conference online from George Mason University Antonin Scalia Law School in Arlington, Virginia. The conference featured a keynote address by singer, songwriter, and author Rosanne Cash, and coverage included news articles at Billboard and Mason News. CPIP Senior Scholars Sandra Aistars, Sean O’Connor, and Mark Schultz also participated in the event. We’ve posted a synopsis of each day of the conference here, here, and here.

This unique conference continued a dialogue on the music ecosystem begun by CPIP Executive Director Sean O’Connor while at the University of Washington School of Law in Seattle. In its inaugural year in the D.C. area, the conference aimed to bring together musicians, music fans, lawyers, artist advocates, business leaders, government policymakers, and anyone interested in supporting thriving music ecosystems in the U.S. and beyond.

To visit our conference website and to watch the videos, please click here.

Spotlight on Scholarship

a pair of glasses, an apple, and a stack of books

Tomás Gómez-Arostegui & Sean Bottomley, The Traditional Burdens for Final Injunctions in Patent Cases C.1789 and Some Modern Implications, 71 Case W. Res. L. Rev. ___ (forthcoming 2020)

CPIP Edison Fellow Tomás Gómez-Arostegui of Lewis & Clark Law School and co-author Sean Bottomley have published a draft of their law review article that will be published in the Case Western Reserve Law Review. The article takes an historical look at the first two permanent injunction factors from eBay v. MercExchange, namely, irreparable injury and inadequate legal remedies. The article concludes that equitable principles dictate that the Federal Circuit should recognize that: “(1) an injury it seeks to redress with a final injunction is future infringement itself, not just follow-on harms caused by future infringement; (2) it can presume future infringement from past infringement; (3) it can presume that legal remedies are inadequate to remedy future infringement; and (4) it need not require a plaintiff to show that alternative equitable remedies, like ongoing royalties, would inadequately redress future infringement.”

To read the article, please click here.

Stuart N. Brotman, Intersecting Points in Parallel Lines: Toward Better Harmonization of Copyright Law and Communications Law Through Statutory and Institutional Balance, 26 Rich. J.L. & Tech., no. 3, 1 (2020)

The Richmond Journal of Law and Technology (JOLT) has just published a new article by Professor Stuart Brotman, the inaugural Howard Distinguished Endowed Professor of Media Management and Law and Beaman Professor of Journalism and Electronic Media at the University of Tennessee, Knoxville. The article was supported by a Leonardo da Vinci Fellowship Research Grant from CPIP and the research assistance of recent Scalia Law graduate Samantha Levin. The article traverses the history and development of copyright and communications law, which have historically followed separate paths, and offers potential ways that they can be harmonized to match the current realities of the media marketplace.

To read the article, please click here.

Activities, News, & Events

a lit lightbulb hanging next to unlit bulbs

CPIP Director of Copyright Research and Policy Sandra Aistars has written an article at Law360 (also available on the CPIP blog) about Justice Ginsburg’s copyright legacy, especially as it will affect the impending Google v. Oracle decision. Prof. Aistars has also published her latest Copyright Notebook series post, The Importance of Artists’ Agency, on the CPIP blog. Additionally, the Arts & Entertainment Law Clinic—directed by Prof. Aistars—has continued its academic partnership with the U.S. Copyright Office for the fifth year. This semester, they are supporting the Office’s public meetings to investigate standard technical measures (STMs) that could be adopted to aid and identify copyrighted works and to potentially reduce infringement on digital platforms as envisioned in Section 512(i) of the DMCA. Prof. Aistars and the Clinic students will also co-host an online copyright clinic with WALA and the Copyright Alliance that will feature a live performance by the Rock Creek Kings.

CPIP has published a new policy brief by Professor Ross E. Davies entitled Ebb and Flow in Safe Harbors: Some Exemplary Experiences Under One Old Statute and One New. Prof. Davies teaches administrative law, civil procedure, comparative criminal law, contracts, employment discrimination, legal history, legal profession, and torts at George Mason University Antonin Scalia Law School in Arlington, Virginia, and the policy brief is the product of our two Safe Harbors and Private Ordering in the Creative Industries research symposia that were held in 2019. In the policy brief, Prof. Davies compares and contrasts two seemingly unrelated statutory provisions that are often referred to as “safe harbors”—despite that term not appearing in either statute: the National Labor Relations Act (NLRA) as codified in Title 29, and the Online Copyright Infringement Liability Limitation Act (OCILLA)—otherwise known as Title II of the Digital Millennium Copyright Act (DMCA)—as codified in Title 17.

CPIP Scholars have participated in several speaking engagements this past month. CPIP Senior Fellow of Innovation Policy Jonathan Barnett spoke at the Innovation Alliance’s Recognizing the Growing Economic Impact of Patent Licensing webinar. CPIP Senior Fellow for Life Sciences Chris Holman participated in the Regnier Institute for Entrepreneurship and Innovation Kansas City Region’s Bio-Medical and Healthcare Technology Entrepreneurship Certificate Program. CPIP Senior Scholar Erika Lietzan spoke at IPWatchdog’s The Race for a Coronavirus Vaccine: The Intersection of Science and IP Policy webinar. CPIP Senior Scholar Kristen Osenga presented a draft paper at the Gray Center’s Public Health: Regulation, Innovation, and Preparation research roundtable. And CPIP Director of Communications Devlin Hartline participated in the Music Biz Entertainment & Technology Law Conference.

CPIP Scholars have also written op-eds defending the importance of robust patent protection, particularly for biopharmaceutical inventions in light of the COVID-19 pandemic. At the Huntsville Item, CPIP Senior Fellow for Life Sciences Chris Holman argues that the seizure of patents will only hamper the development of a vaccine to combat the coronavirus: “Eliminating intellectual property protections would not only reduce incentives to develop coronavirus treatments as quickly as possible; they will also destroy the domestic industrial base that could be the key to stopping the next pandemic.” Likewise, CPIP Senior Scholar Kristen Osenga argues at the Nashua Telegraph that taxpayers are getting a great deal with biomedical research: “When new treatments are successful, drug companies make money because we, through insurance, buy those drugs to keep us, or make us, healthy. The government then taxes those profits and invests some of that tax money into new research. Far from ‘paying twice,’ we are getting a great bargain from government spending on basic research.”

Tags Andrei Iancu, Chris Holman, CPIP Roundup, Devlin Hartline, Erika Lietzan, Google v. Oracle, Jonathan Barnett, Kristen Osenga, Mark Schultz, Rosanne Cash, Ross Davies, Ruth Bader Ginsburg, Samantha Levin, Sandra Aistars, Sean Bottomley, Sean O'Connor, Stuart Brotman, Tomás Gómez-Arostegui

Conferences Copyright

The Evolving Music Ecosystem Conference: Day Three Recap

Post author By Joshua Grove
Post date September 30, 2020

The following post comes from Bradfield Biggers, a graduate of Boston College Law School and Founder & CEO of Timshel Inc., a music fintech company that provides data-driven cashflow solutions to musical artists in Los Angeles, California. This is the third of three posts (see day one recap and day two recap) summarizing our three-day The Evolving Music Ecosystem conference that was held online from George Mason University Antonin Scalia Law School on September 9-11, 2020.

Rosanne Cash By Bradfield Biggers

On September 9-11, 2020, the Center for the Protection of Intellectual Property (CPIP) hosted The Evolving Music Ecosystem conference online from George Mason University Antonin Scalia Law School in Arlington, Virginia. The conference featured a keynote address by singer, songwriter, and author Rosanne Cash.

This unique conference continued a dialogue on the music ecosystem begun by CPIP Executive Director Sean O’Connor while at the University of Washington School of Law in Seattle. In its inaugural year in the D.C. area, the conference aimed to bring together musicians, music fans, lawyers, artist advocates, business leaders, government policymakers, and anyone interested in supporting thriving music ecosystems in the U.S. and beyond.

SESSION 5: THE POWER OF DATA OWNERSHIP & ANALYTICS

Access to consumer data and the ability to process and respond to it is perhaps the most valuable component of our digital global ecosystems—no matter the industry. In the music business, collecting and analyzing data about listeners and their habits is occurring on a massive scale, and it’s informing the development of new business models and platforms. But questions of ownership and data sharing loom large, as musicians increasingly realize the value of knowing more about their fans. This panel discussed the current state of data collection and analytics in the music industry and explored ways that big data can foster creative ecosystems for all stakeholders. The panel was moderated by Prof. Sean Pager of Michigan State University College of Law.

Prof. Serona Elton from the University of Miami Frost School of Music kicked off the panel by describing the various places where artist data is aggregated, such as Spotify for Artists, Apple Music for Artists, Soundcharts, and collective management organizations (CMOs). Prof. Elton emphasized that while the number of data sources and quantity of data is extraordinary, the quality of data and specificity of the sources vary drastically. Moreover, while that data is accessible to everyone, the utility and granularity of the data will vary depending on who you are and how you want to use it.

Joshua Friedlander from the Recording Industry Association of America (RIAA) then described the history of data tracking in the music industry. Data analytics became prominent in the 1990s when the RIAA was tracking roughly a billion point-of-sale transactions for recorded music annually. Nevertheless, those billion transactions have been dwarfed by the 1.5 trillion datapoints the RIAA now tracks annually in the U.S. alone. Moreover, where the data of the 1990s merely tracked when and where a record was sold, music industry data today is infinitely more complex. The music data we collect now includes the demographics of the consumer, how long they consumed the song, how often they consume it, and many more analytics that continue past the point of sale or download. As a result, record labels and marketing plans are so intricately related to data that few will approve a marketing campaign without data-backed guidance. Finally, Mr. Friedlander advised artists to retain only representatives who understand and use music data. Without looking at this data to understand the disposition of fans, contemporary artists will have a more difficult time achieving success in this data-driven music business.

Prof. Jake Linford from Florida University School of Law followed Mr. Friedlander’s discussion of the endless potential of artist data with a critical discussion of the safety and usefulness of current data collection and analytics efforts. Prof. Linford agrees that this extraordinarily granular data has unlimited potential, but he also thinks that not all aspects of its potential are positive. For example, the data technology companies collecting from your online consumption habits may be able to help artists and record labels understand what style of music is likely to create the next big pop song. Nevertheless, such data collection can also reveal potentially sensitive information about users, such as political affiliation and sexual orientation. Prof. Linford went on to discuss how this data can also allow AI-driven robots to create compositions without human intervention. While many are excited about the prospect of robot artists, this does create an interesting philosophical debate of what constitutes a creator.

Prof. Tonya Evans then led the panel into a discussion of disintermediation in the music industry. Prof. Evans explained how too many gatekeeper intermediaries in music needlessly create friction. She recommended that blockchain can streamline music distribution and remove many of these costly friction points, which would leave more money for artists. However, despite the promise of modern internet technologies, she recognized that the effectiveness of streamlining music distribution with current blockchain technology is curbed by the pervasiveness of piracy. Prof. Evans then suggested that a solution to music piracy—which could pave the way for efficient music licensing—could be through a disaggregated, decentralized network of blockchain payment and smart contracts. She anticipates that this sort of technological framework could provide the certainty and trust that music stakeholders need to distribute music securely and efficiently.

Finally, Will Page, the former Chief Economist of Spotify, began his presentation by rehashing and analyzing some of the main points made by the prior panelists. Particularly, he found blockchain to be a less capable solution in the music industry because of the issue of conflicting song metadata. Instead, he suggested the creation of a global repertoire database that would provide needed clarity in the music rights environment that regularly misattributes—or outright fails to attribute—artists to particular songs. Mr. Page later suggested that a country’s best solution to straightening out its broken song attribution status quo would be to create a natural monopoly to act as a central copyright depositor to coordinate with licensees. He then went on to stress the importance of music’s big data conversation, which he suggested should drive music innovation over longstanding industry customs. For example, the music industry continues to rely on country-level data for identifying fans because of longstanding touring customs, rather than the city-level data we have access to that is vastly superior due to its granularity.

SESSION 6: ARTIST MANAGEMENT & THE BUSINESS OF MUSIC

In today’s music business, when artists can act as their own producers, promoters, booking agents, managers, etc., is there still a need for traditional representation? What is the role of an artist manager? How has it evolved as the internet and interconnectivity have grown? This panel, moderated by Prof. Robert Heverly of Albany Law School, brought together artists, managers, lawyers, and venue owners to discuss the constant evolution of artist representation and the business of music.

Prof. Olufunmilayo Arewa from Temple University Beasley School of Law opened the panel by explaining how marginalized groups have been short-changed by record agreements in the past. Prof. Arewa described the financial discrimination and general injustice that has been felt by African American musicians for generations. For example, African American R&B artists between the 1960s and 1980s received royalty contract rates worth 20-60% of what were considered standard rates. Moreover, she noted that an additional consequence of failing to compensate African Americans and other groups fairly is that they cannot receive union sponsored health insurance. Finally, Prof. Arewa highlighted that considering the Black Lives Matter movement, there have been various proposals on how to make amends for past royalty rate inequities.

Attorney Lita Rosario carried on Prof. Arewa’s conversation about the injustices felt by marginalized groups by discussing her personal experience litigating unfair royalty agreements on behalf of African American artists. She then outlined her work in striking the down the “sharecropping” agreements between artists and record labels in favor of joint venture arrangements. Ms. Rosario noted that in the traditional sharecropping model, an artist’s royalties must recoup the recording costs before she is given any share of her royalties. In her proposed joint venture agreement, the artist would instead begin to earn royalties on the day the album breaks even. Also, Ms. Rosario noted, while it is a positive that major record labels have committed around $225 million to promote anti-racism, this gives little solace to those who continue to suffer from the chains of inequitable contracts.

Simon Tam of the award-winning band The Slants then brought home the conversation about systemic racism and marginalization in the music industry by speaking about his personal experience navigating injustice. He recalled an incident when a record executive offered his band a substantial record deal, so long as they replaced their Asian lead singer for a white person. The executive said this was because “Asians don’t sell.” Mr. Tam confronted the executive about the racism and walked out on the deal. Since then Mr. Tam and his band have leveraged online independent distribution platforms to release their music, which has allowed them to create a successful career without label involvement. However, he explained that artists who forgo record label agreements will generally need to find the right group of representatives to champion their careers. The music industry is full of complex arrangements and niches, which is extremely difficult to navigate on one’s own.

Ralph Jaccodine, who is an artist manager and a professor at the Berklee College of Music, then rounded out the panel by providing the perspectives of the record label and artist manager. Prof. Jaccodine emphasized that modern artists can no longer confine their activities just to creating music. Prof. Jaccodine believes that artists need to be able to wear a bunch of different hats in the music industry so they can delegate aspects of their business to effective representatives. Artists need to educate themselves about their business and understand how activities from concert promoting to publishing function so that they can hire the right representatives to drive their careers. Without a knowledge of their business, artists can be taken advantage of and will not know if a particular manager or agent is worth hiring. Prof. Jaccodine encourages artists that they don’t need record labels to be successful—just knowledge and a good team.

SESSION 7: SUPPORTING ARTISTS & COMMUNITIES

Recognition of and support for local artists and musicians is vital to the preservation of creative and culturally diverse communities. Whether full-time professional musicians or part-time hobbyists, creative individuals’ contributions to their communities are invaluable and difficult to measure. But like many who make a living through artistic endeavors, musicians often struggle to find steady work and lack the benefits that many of us take for granted. Musicians also often encounter mental health and substance abuse issues at a greater rate than non-artists. This panel discussed ways a vibrant music scene can benefit a community, ways that communities can give back, and resources available to musicians in need. The panel was moderated by John Good of the Washington Area Lawyers for the Arts.

Prof. Ying Zhen of Wesleyan College kicked off the panel by discussing her 2018 survey concerning the wellbeing of modern musical artists. This survey was an in-depth, multidimensional study involving 1,000 artists who identified as full-time musicians with sustainable careers and those who were transitioning into such careers. From this data, Prof. Zhen and her team were able to uncover interesting information about the modern working artist. For instance, Prof. Zhen identified that the median income from music for these artists was $35,000 per year, the median artist has around 3.5 different music income streams, and that one-third of their yearly income came from non-music sources. And while much of her research concerned the financial wellbeing of artists, Prof. Zhen also collected data on their general wellbeing. Unfortunately, this research tended to show that artists found the financial instability of music challenging, drug usage by artists in this survey was higher than the national average, and that 76% of women in music reported experiencing sexual harassment. Although these figures did not paint the rosiest portrait of artist wellbeing, Prof. Zhen hopes this survey will bring about social and financial change by educating artists and policymakers on the everyday struggles of artists.

Jennifer Leff from MusiCares then followed Prof. Zhen’s presentation by discussing the resources that MusiCares, one of the largest artist resource organizations in the world, offers to artists. Specifically, Ms. Leff spoke about MusiCare’s grant program that helps artists who are struggling financially due to the global COVID-19 crisis. To qualify for this program, artists must have five years of music industry experience or be able to show proof of six commercially released tracks. Qualifying artists can request small-quantity grants to pay personal expenses, such as rent, medical care, and other necessities. So far, MusiCare’s grant program has supported over 18,000 artists during the COVID-19 pandemic and distributed $20 million in grant relief. In addition to this grant program, Ms. Leff spoke about how MusiCares looks out for the broader music community by offering educational seminars ranging from money management and tax tips for musicians to addiction and recover information.

Yudu Gray Jr., the co-founder of House Studio, then transitioned the panel from discussing overarching artist support organizations to how artists are handling the state of the music industry today. Through his music production company, House Studio, Mr. Gray has not only helped artists create masterful music productions, but he also concedes that he has helped artists with the “boring stuff” such as LLC registrations and accounting practices. However, this more holistic approach to providing foundational artistic and business services has allowed his artists to achieve global notoriety, as in the case of the Gramm–winning artist Logic. Mr. Gray then discussed his firsthand account of watching artists he works with struggle to pay rent and access other necessities because of the COVID-19 global pandemic. He sees that technology and the music industry are trying to pivot to stay alive, which ends up leaving individual artists behind. Recognizing this inequity, Mr. Gray began to look for ways to help artists get money to finance their projects. This search resulted in House Studio connecting with technology companies like Apple and Amazon to help artists’ projects get funded. For example, Mr. Gray spoke generally of an upcoming project where artists could pitch music video ideas to an undisclosed technology company that would fund the project without demanding rights. The only catch is that the content the technology company funded would be exclusive on its platform for a period of time.

Erik Philbrook from the performing rights organization American Society of Composers, Authors and Publishers (ASCAP) rounded off the panel by providing artists with tips on how they can get compensated for their work. First, Mr. Philbrook emphasized that artists need to register their music properly so that ASCAP and other royalty distributors can identify and compensate artists for their works. Second, he noted that many artists are not collecting their full amount of performance royalties because they only register with performing rights organizations as writers. Mr. Philbrook explained that unless an artist has a relationship with a publisher, the artist herself needs to register as both a writer and publisher with her performing rights organization so that she can receive all of the performance royalties she is due. Finally, Mr. Philbrook wanted to publicize that ASCAP also supports artists with educational materials, seminars, and conferences to teach artists on how to navigate the nuances of the music industry.

CLOSING REMARKS

CPIP Executive Director Sean O’Connor closed the conference by expressing how pleased he was with how smoothly the conference operated and thanking everyone involved in making this conference possible. Prof. O’Connor provided special thanks to the CPIP team, including Prof. Sandra Aistars, Prof. Devlin Hartline, CPIP Deputy Director Joshua Kresh, Kristina Pietro, and Mary Clare Durel, for their phenomenal work behind the scenes. Additionally, Prof. O’Connor acknowledged the financial and general support of the conference’s sponsors, in particular the Recording Industry Association of America (RIAA) and Mitchell Silberberg & Knupp LLP.

Prof. O’Connor then invited artists, academics, and anyone else to join CPIP next year in a follow-up conference that he anticipates will be themed “Rebuilding the Music Ecosystem.”

Tags Bradfield Biggers, copyright, Devlin Hartline, Evolving Music Ecosystem, Kristina Pietro, Mary Clare Durel, music, Rosanne Cash, Sandra Aistars, Sean O'Connor, Sean Pager

Scalia Law Students and CPIP Scholars Make an Impact in Copyright Office Section 512 Study

Post author By Joshua Grove
Post date May 26, 2020

The U.S. Copyright Office released its long-awaited report on Section 512 of Title 17 late last week. The Report is the culmination of more than four years of study by the Office of the safe harbor provisions for online service provider (OSP) liability in the Digital Millennium Copyright Act of 1998 (DMCA). Fortuitously, the study period coincided with the launch of Scalia Law’s Arts and Entertainment Advocacy Clinic. Clinic students were able to participate in all phases of the study, including filing comments on behalf of artists and CPIP scholars, testifying at roundtable proceedings on both coasts, and conducting a study of how OSPs respond to takedown notices filed on behalf of different types of artists. The Office cites the filings and comments of Scalia Law students numerous times and ultimately adopts the legal interpretation of the law advocated by the CPIP scholars.

The Office began the study in December 2015 by publishing a notice of inquiry in the Federal Register seeking public input on the impact and effectiveness of the safe harbor provisions in Section 512. Citing testimony by CPIP’s Sean O’Connor to the House Judiciary Committee that the notice-and-takedown system is unsustainable given the millions of takedown notices sent each month, the Office launched a multi-pronged inquiry to determine whether Section 512 was operating as intended by Congress.

Scalia Law’s Arts and Entertainment Advocacy Clinic drafted two sets of comments in response to this initial inquiry. Terrica Carrington and Rebecca Cusey submitted comments to the Office on behalf of middle class artists and advocates, including Blake Morgan, Yunghi Kim, Ellen Seidler, David Newhoff, and William Buckley, arguing that the notice-and-takedown regime under Section 512 is “ineffective, inefficient, and unfairly burdensome on artists.” The students pointed out that middle class artists encounter intimidation and personal danger when reporting infringements to OSPs. Artists filing takedown notices must include personal information, such as their name, address, and telephone number, which is provided to the alleged infringer or otherwise made public. Artists often experience harassment and retaliation for sending notices. The artists, by contrast, obtain no information about the identity of the alleged infringer from the OSP. The Office’s Report cited these problems as a detriment for middle class artists and “a major motivator” of its study.

A second response to the notice of inquiry was filed by a group of CPIP scholars, including Sandra Aistars, Matthew Barblan, Devlin Hartline, Kevin Madigan, Adam Mossoff, Sean O’Connor, Eric Priest, and Mark Schultz. These comments focused solely on the issue of how judicial interpretations of the “actual” and “red flag” knowledge standards affect Section 512. The scholars urged that the courts have interpreted the red flag knowledge standard incorrectly, thus disrupting the incentives that Congress intended for copyright owners and OSPs to detect and deal with online infringement. Several courts have interpreted red flag knowledge to require specific knowledge of particular infringing activity; however, the scholars argued that Congress intended for obvious indicia of general infringing activity to suffice.

The Office closely analyzed and ultimately adopted the scholars’ red flag knowledge argument in the Report:

Public comments submitted by a group of copyright law scholars in the Study make a point closely related to the rightsholders’ argument above, focusing on the different language Congress chose for actual and red flag knowledge. They note that the statute’s standard for actual knowledge is met when the OSP has “knowledge that the material or an activity using the material on the system or network is infringing” or “knowledge that the material or activity is infringing,” while the red flag knowledge standard is met when the OSP is “aware of facts or circumstances from which infringing activity is apparent.” This difference, the copyright law scholars argue, is crucial to understanding the two standards: while the statute uses a definite article—“the”—to refer to material or activity that would provide actual knowledge, it drops “the” to speak more generally about facts or circumstances that would create red flag knowledge. “In Congress’s view,” the comment concludes, “the critical distinction between the two knowledge standards was this: Actual knowledge turns on specifics, while red flag knowledge turns on generalities.”

The Office went on to state that “a standard that requires an OSP to have knowledge of a specific infringement in order to be charged with red flag knowledge has created outcomes that Congress likely did not anticipate.” And since “courts have set too high a bar for red flag knowledge,” the Office concluded, Congress’ intent for OSPs to act upon information of infringement has been subverted. This echoed the scholars’ conclusion that the courts have disrupted the balance of responsibilities that Congress sought to create with Section 512 by narrowly interpreting the red flag knowledge standard.

Scalia Law students and CPIP scholars likewise participated in roundtable hearings on each coast to provide further input for the Copyright Office’s study of Section 512. The first roundtable was held on May 2-3, 2016, in New York, New York, at the Thurgood Marshall United States Courthouse, where the Second Circuit and Southern District of New York hear cases. The roundtable was attended by CPIP’s Sandra Aistars and Matthew Barblan. They discussed the notice-and-takedown process, the scope and impact of the safe harbors, and the future of Section 512. The second roundtable was held in San Francisco, California, at the James R. Browning Courthouse, where the Ninth Circuit hears cases. Scalia Law student Rebecca Cusey joined CPIP’s Sean O’Connor and Devlin Hartline to discuss the notice-and-takedown process, applicable legal standards, the scope and impact of the safe harbors, voluntary measures and industry agreements, and the future of Section 512. Several of the comments made by the CPIP scholars at the roundtables ended up in the Office’s Report.

In November 2016, the Office published another notice of inquiry in the Federal Register seeking additional comments on the impact and effectiveness of Section 512. The notice itself included citations to the comments submitted by Scalia Law students and the comments of the CPIP scholars. Under the guidance of Prof. Aistars, the students from Scalia Law’s Arts and Entertainment Advocacy Clinic again filed comments with the Office. Clinic students Rebecca Cusey, Stephanie Semler, Patricia Udhnani, Rebecca Eubank, Tyler Del Rosario, Mandi Hart, and Alexander Summerton all contributed to the comments, which discussed their work in helping individuals and small businesses enforce their copyright claims by submitting takedown notices pursuant to Section 512. The students reported on the practical barriers to the effective use of the notice-and-takedown process at particular OSPs. Two problems identified by the students were cited by the Copyright Office as examples of how OSPs make it unnecessarily difficult to submit a takedown notice. Accordingly, the Office called on Congress to update the relevant provisions of Section 512.

Two years after the additional written comments were submitted, the Office announced a third and final roundtable to be held on April 8, 2019, at the Library of Congress in Washington, D.C. The purpose of this meeting was to discuss any relevant domestic or international developments that had occurred during the two prior years. CPIP’s Devlin Hartline attended this third roundtable to discuss recent case law related to Section 512, thus ensuring that CPIP scholars were represented at all three of the Office’s roundtables.

CPIP congratulates and thanks the students of Scalia Law’s Arts and Entertainment Advocacy Clinic for their skillful advocacy on behalf of artists who otherwise would not be heard in these debates.

CPIP Roundup

CPIP Roundup – April 30, 2020

Post author By Joshua Grove
Post date April 30, 2020

Greetings from CPIP Executive Director Sean O’Connor

Sean O'Connor

As we move into another month of stay-at-home here in the DMV—and perhaps some re-openings—we here at CPIP hope that you and yours are staying safe and healthy while we weather this crisis.

We continue to move forward, however. Our biggest news this month is the addition of Joshua Kresh as our new Deputy Director. Most recently an IP attorney at DLA Piper, he has worked at other major firms and is active in policy and new lawyer training with AIPLA and the Giles Rich Inn of Court. Joshua brings with him a patent-rich legal background, and he’ll be a valuable asset to the CPIP team and mission. We look forward to working with him and hope you wish him the best as he takes up this new role.

Like many other schools and organizations, Scalia Law School and CPIP have moved online for the time being—but that doesn’t mean we’ve stopped forging ahead and navigating new challenges. Because all George Mason University onsite events have been cancelled through August 8, we’ve moved our much-anticipated Music Law Conference back to September 10-11, 2020. We greatly appreciate the flexibility and understanding of every single person involved, not least our special guest and keynote speaker, Rosanne Cash. We hope you can still join us for the event in the fall—and, if you were unable to make the April dates, we hope this postponement works to your benefit!

CPIP’s main event this summer, the WIPO-CPIP Summer School on Intellectual Property for this coming June 8-19, 2020, has moved online as a virtual program via WebEx. CPIP primarily will serve participants in the Americas, although we’ll also be welcoming a number of attendees from other parts of the world who have opted to stay with the U.S.A. program.

As of March, I joined the Board of Directors for The Circle Foundation, an organization in the Republic of Korea that supports innovation and entrepreneurship to strengthen the start-up ecosystem. This new role brings CPIP and Scalia Law School into another level of connection with Mason Korea’s excellent in-country campus and activities.

In April, I was a virtual guest speaker for CPIP Co-Founder—and now University of Akron Goodyear Tire & Rubber Chair of Intellectual Property—Mark Schultz’s WebEx event, Copyright and Social Justice: How the “Blurred Lines” Case Brought Overdue Recognition for African American Artist. The talk was co-sponsored by the Black Law Students Association and the Intellectual Property and Technology Law Association. Also in April, I gave a virtual presentation to admitted Scalia Law prospective students on Cannabis: Creating a New Regulated Economy.

CPIP and our colleagues have remained productive over these past weeks, from rescheduling events to publishing timely pieces. My article Distinguishing Different Kinds of Property in Patents and Copyrights—based on an early presentation at CPIP’s Annual Fall Conference—was published in the George Mason Law Review, and my recent op-ed, Avoiding Another Great Depression Through a Developmentally Layered Reopening of the Economy, appeared in The Hill. I was interviewed on WBAL for this piece as well. Finally, CPIP along with many other organizations from around the world signed onto an open letter to WIPO’s Director-General for World IP Day.

This past month and a half have undoubtedly been difficult. At CPIP, our thoughts go out especially to all creators and innovators who are facing new challenges as they strive to protect their livelihoods and intellectual property in this difficult time. We truly hope this May brings improvements, both locally and globally. Stay well, safe, and sane.

CPIP Welcomes Joshua Kresh as Deputy Director

Joshua Kresh

CPIP is proud to welcome Joshua Kresh to our leadership team! As Deputy Director, Joshua will report to CPIP Executive Director Sean O’Connor while managing and participating in CPIP’s day-to-day operations. Joshua will oversee CPIP’s academic research, policy, and fundraising efforts, working as well on planning and executing CPIP events such as conferences, meetings, fellowships, and roundtables. Joshua will also consult with Professor O’Connor and the other faculty directors to develop CPIP’s long-term academic and policy plans.

Before joining CPIP as Deputy Director, Joshua was an Associate with DLA Piper in Washington, D.C., where he practiced patent litigation. He received his law degree with honors from The George Washington University Law School, and he holds master’s and bachelor’s degrees in computer science from Brandeis University. Joshua is the Chair of AIPLA’s New Lawyers Committee and Co-Mentoring Chair of the Giles Rich American Inn of Court, and he is a registered patent attorney with the U.S. Patent and Trademark Office.

To read the rest of our announcement, please click here.

Music Law Conference with Rosanne Cash Moved to September 10-11, 2020

Rosanne Cash

We are excited to announce that the music law conference, The Evolving Music Ecosystem, which will be held at Antonin Scalia Law School in Arlington, Virginia, has now been moved to September 10-11, 2020. The keynote address will be given by Rosanne Cash, and it features two days of panel presentations from leading experts.

This unique conference continues a dialogue on the music ecosystem begun by CPIP Executive Director Sean O’Connor while at the University of Washington School of Law in Seattle. In its inaugural year in the D.C. area, the conference aims to bring together musicians, music fans, lawyers, artist advocates, business leaders, government policymakers, and anyone interested in supporting thriving music ecosystems in the U.S. and beyond.

For more information, and to register, please click here.

Registration Open for WIPO-CPIP Summer School on IP on June 8-19, 2020

WIPO Summer School flyer

CPIP has again partnered with the World Intellectual Property Organization (WIPO) to host the third iteration of the WIPO-CPIP Summer School on Intellectual Property from Antonin Scalia Law School in Arlington, Virginia, on June 8-19, 2020. Registration is now open, and we recommend that participants apply early, as we expect the program to be full. In order to accommodate the global response to COVID-19, we have moved the course online this year.

The course provides a unique opportunity for students, professionals, and government officials to work with leading experts to gain a deeper knowledge of IP to advance their careers. The course consists of lectures, case studies, simulation exercises, group discussions, and panel discussions on selected IP topics, with an orientation towards the interface between IP and other disciplines. U.S. law students can receive 3 hours of academic credit from Scalia Law!

For more information, and to register, please click here.

Spotlight on Scholarship

a pair of glasses, an apple, and a stack of books

Sean M. O’Connor, Distinguishing Different Kinds of Property in Patents and Copyrights, 27 Geo. Mason L. Rev. 205 (2019)

In this paper from our Annual Fall Conference, CPIP Executive Director Sean O’Connor explores the different meanings of “property” with respect to patents and copyrights. Prof. O’Connor explains that, contrary to the current conventional wisdom, the purpose of protection in early modern Europe was to incentivize public disclosure and commercialization, not private creation. To demonstrate this, he traverses the evolution of different kinds of property, including private knowledge, ad hoc grants of rights, rights in goods that embody intellectual property, and contractual assignments or licenses. Prof. O’Connor then describes how confusion over these different kinds of property has lead people to talk past each other in intellectual property debates, and he argues that a more nuanced understanding of the various property interests at stake might enable more constructive engagements going forward.

Charles Delmotte, The Case Against Tax Subsidies in Innovation Policy, 48 Fla. St. U. L. Rev. ___ (forthcoming)

In this paper from our Thomas Edison Innovation Fellowship, Charles Delmotte of NYU Law assesses the proposal for replacing intellectual property rights with tax subsidies for research and development (R&D) firms. Dr. Delmotte explains that innovation scholarship neglects economic insights on efficiencies, such as how information problems prevent the efficient operationalization of tax subsidies since innovation outcomes turn on unpredictable market processes that cannot be steered in advance. Turning to public choice theory, Dr. Delmotte points out that tax subsidies are particularly susceptible to diversion by the rent-seeking behavior of the politically affluent, and relying on economic realism, he argues that the best way to promote innovation is by securing stable intellectual property rights that undergird the background institutions that facilitate competition and entrepreneurship.

Activities, News, & Events

a lit lightbulb hanging next to unlit bulbs

In a new CPIP policy brief entitled The End of Patent Groupthink, CPIP Senior Fellow for Innovation Policy Jonathan Barnett highlights some cracks that have emerged in the recent policy consensus that the U.S. patent system is “broken” and it is necessary to “fix” it. Policymakers have long operated on the basis of mostly unquestioned assumptions about the supposed explosion of low quality patents and the concomitant patent litigation that purportedly threaten the foundation of the innovation ecosystem. These assumptions have led to real-world policy actions that have weakened patent rights. But as Prof. Barnett discusses in the policy brief, that “groupthink” is now eroding as empirical evidence shows that the rhetoric doesn’t quite match up to the reality. This has translated into incremental but significant movements away from the patent-skeptical trajectory that has prevailed at the Supreme Court, the USPTO, and the federal antitrust agencies.

We have several new posts on the CPIP blog, including the first installment of our new series on recent copyright law developments. In a post entitled Copyright Notebook: Observations on Copyright in the Time of COVID-19, CPIP Director of Copyright Research and Policy Sandra Aistars discusses several current copyright cases and issues, including how artists, authors, and copyright industries have taken unprecedented steps to bring enjoyment to our circumscribed lives. We published a similarly hopeful piece entitled IP Industries Step Up in This Time of Crisis on how bio-pharma industries and scientific publishers have made crucial information and materials available when they are needed the most. CPIP Director of Communications Devlin Hartline published a piece entitled Supreme Court Paves Way for Revoking State Sovereign Immunity for Copyright Infringement that looks at the Supreme Court’s decision in Allen v. Cooper. And CPIP Senior Fellow for Life Sciences Erika Lietzan published a piece entitled The Tradeoffs Involved in New Drug Approval, Expanded Access, and Right to Try on the various issues with approving new medicines.

CPIP Senior Scholar Kristen Osenga joined Professors Greg Dolin and Irina Manta in filing an amicus brief urging the Supreme Court to grant certiorari in Celgene v. Peter. The issue on appeal is one that was left unresolved in Oil States v. Greene’s Energy, namely, whether retrospective applications of inter partes review (IPR) proceedings under the 2011 American Invents Act are unconstitutional takings. The brief argues that, for several reasons, the Federal Circuit below reached the wrong conclusion in holding that they are not unconstitutional. First, IPRs are significantly different than ex parte and inter partes reexaminations, since patentees are not free to amend claims in order to resolve claim scope ambiguities. Second, empirical research shows that the economic impact of such IPRs is to devalue patents and chill investment. Finally, the cases relied on by the Federal Circuit to support its conclusion are inapposite or outdated. The amicus brief was featured in a recent article at IPWatchdog entitled Amici Urge Supreme Court to Grant Celgene’s Petition on Constitutionality of Retroactive IPRs.

Tags Charles Delmotte, Devlin Hartline, Erika Lietzan, Greg Dolin, Irina Manta, Jonathan Barnett, Joshua Kresh, Kristen Osenga, Mark Schultz, Rosanne Cash, Sandra Aistars, Sean O'Connor

Twenty Years Later, DMCA More Broken Than Ever

Post author By Joshua Grove
Post date April 24, 2019

With Section 512 of the DMCA, Congress sought to “preserve[] strong incentives for service providers and copyright owners to cooperate to detect and deal with copyright infringements that take place in the digital networked environment.”[1] Given the symbiotic relationship between copyright owners and service providers, Congress meant to establish an online ecosystem where both would take on the benefits and burdens of policing copyright infringement. This shared-responsibility approach was codified in the Section 512 safe harbors. But rather than service providers and copyright owners working together to prevent online piracy, Section 512 has turned into a notice-and-takedown regime where copyright owners do most of the work. This is not what Congress intended, and the main culprit is how the courts have misinterpreted Section 512’s red flag knowledge standards.

Several provisions in Section 512 demonstrate that Congress expected service providers to also play a role in preventing copyright infringement by doing some of the work in finding and removing infringing material. In order to benefit from the safe harbors, service providers must designate an agent to receive takedown notices, respond expeditiously to takedown notices, act upon representative lists, implement reasonable repeat infringer policies, and accommodate standard technical measures. But it’s also clear that service providers have the duty to remove infringing content even without input from copyright owners. As the Senate Report notes, “Section 512 does not require use of the notice and take-down procedure.”[2] And the knowledge provisions in Section 512 reflect this. Absent a takedown notice, service providers must, “upon obtaining . . . knowledge or awareness” of infringing material or activity, “act[] expeditiously to remove . . . the material” in order to maintain safe harbor protection.[3]

Under Section 512, there are two kinds of knowledge that trigger the removal obligation without input from the copyright owner—actual and red flag. For sites hosting user-uploaded content, actual knowledge is “knowledge that the material or an activity using the material on the system or network is infringing”[4] and red flag knowledge is “aware[ness] of facts or circumstances from which infringing activity is apparent.”[5] Thus, actual knowledge requires knowledge that specific material (“the material”) or activity using that specific material (“activity using the material”) is actually infringing (“is infringing”), while red flag knowledge requires only general awareness (“aware[ness] of facts or circumstances”) that activity appears to be infringing (“is apparent”). There are similar knowledge provisions for search engines.[6]

Importantly, actual knowledge refers to “the material,” and red flag knowledge does not. It instead refers to “infringing activity”—and it’s not the infringing activity, but infringing activity generally.[7] However, with both actual and red flag knowledge, the service provider is obligated to remove “the material.”[8] With actual knowledge, the service provider doesn’t have to go looking for “the material” since it already has actual, subjective knowledge of it. But what about with red flag knowledge where the service provider only knows of “infringing activity” generally? How does it know “the material” to take down? The answer is simple: Once the service provider is subjectively aware of facts or circumstances from which infringing activity would be objectively apparent[9]—that is, once it has red flag knowledge—it has to investigate and find “the material” to remove.[10]

The examples given in the legislative history, which relate to search engines, show that red flag knowledge puts the burden on the service provider. As the Senate Report notes, merely viewing “one or more well known photographs of a celebrity at a site devoted to that person” would not hoist the red flag since the images might be licensed or fair use.[11] However, sites that are “obviously infringing because they . . . use words such as ‘pirate,’ ‘bootleg,’ or slang terms . . . to make their illegal purpose obvious . . . from even a brief and casual viewing” do raise the red flag.[12] And a search engine “that views such a site and then establishes a link to it . . . must do so without the benefit of a safe harbor.”[13] Thus, Congress didn’t want search engines worrying about questionable infringements on a small scale, but it also didn’t want search engines to catalog sites that are clearly dedicated to piracy. And, most importantly, red flag knowledge kicks in once a service provider looks at something that is “obviously pirate”—even if it’s an entire website.[14]

So how has Congress’s commonsensical plan worked out? Not very well. As of today, Google indexes nearly 1.5 million results from the infamous pirate site, The Pirate Bay.[15] Like the examples in the legislative history, The Pirate Bay has the word “pirate” in its title, and a brief viewing of the site reveals its obvious, infringing purpose. And it’s not like Google hasn’t been told that The Pirate Bay is dedicated to infringement—nor that it needs to be told. According to data from the Google Transparency Report,[16] the search engine has received requests to remove over 4 million URLs from thepiratebay.org domain alone. There are many other related domains, such as thepiratebay.se, that have received millions of requests as well. In fact, Google tells us that it has received requests to remove over 4 billion URLs from its search engine due to copyright infringement, with many domains receiving more than 10 million requests each.

So how is it that Google can index The Pirate Bay and not be worried about losing its safe harbor? The answer is that the courts have construed Section 512 in a way that contradicts the statutory text and Congress’s intent. They’ve all but read red flag knowledge out of Section 512 and placed the burden of policing infringement disproportionately on the copyright owner. And by narrowing the applicability of red flag knowledge, the courts have perversely incentivized service providers to do as little as possible to prevent infringements. Instead of looking into infringing activity of which they are subjectively aware, they are better off doing nothing lest they gain actual, specific knowledge that would remove their safe harbor protection.

A brief traverse through the case law, especially in the Second and Ninth Circuits, shows how the red flag knowledge train has been derailed. In Perfect 10 v. CCBill, the Ninth Circuit held that domains such as illegal.net and stolencelebritypics.com—the very sort of indicia mentioned in the legislative history—were not enough to raise the red flag.[17] According to the court, “describing photographs as ‘illegal’ or ‘stolen’ may be an attempt to increase their salacious appeal, rather than an admission that the photographs are actually illegal or stolen.”[18] While that’s certainly possible, it’s not likely. And it defies common sense. The Ninth Circuit concluded: “We do not place the burden of determining whether photographs are actually illegal on a service provider.”[19] But this misses the point, and it conflates red flag knowledge with actual knowledge.

The Second Circuit in Viacom v. YouTube held that the “difference between actual and red flag knowledge is . . . not between specific and generalized knowledge, but instead between a subjective and an objective standard.”[20] The court arrived there by focusing on the removal obligation, reasoning that “expeditious removal is possible only if the service provider knows with particularity which items to remove.”[21] And it rejected an “amorphous obligation” to investigate “in response to a generalized awareness of infringement.”[22] By limiting red flag knowledge to specific instances of infringement, the Second Circuit severely curtailed the obligations of service providers to police infringements on their systems. The entire point of red flag knowledge is to place a burden on the service provider to investigate the infringing activity further so that the specific material can be removed.[23]

The Ninth Circuit followed suit in UMG Recordings v. Shelter Capital, holding that red flag knowledge requires specificity.[24] The court reasoned that requiring “specific knowledge of particular infringing activity makes good sense” because it will “foster cooperation” between copyright owners and service providers “in dealing with infringement” online.[25] This “cooperation,” according to the Ninth Circuit, would come from takedown notices sent by copyright owners, who “know precisely what materials they own, and are thus better able to efficiently identify” infringing materials than service providers, “who cannot readily ascertain what material is copyrighted and what is not.”[26] Of course, this is not the shared-responsibility approach envisioned by Congress, and it conflates the red flag knowledge standards with the obligation to respond to takedown notices—separate provisions in Section 512.

Perhaps the most significant gutting of red flag knowledge can be found in the Second Circuit’s opinion in Capitol Records v. Vimeo.[27] The district court below had held that it was a question for the jury whether full-length music videos of current, famous songs that had been viewed by the service provider amounted to red flag knowledge.[28] But the Second Circuit disagreed that there was any jury question: “[T]he mere fact that a video contains all or substantially all of a piece of recognizable, or even famous, copyrighted music and was to some extent viewed . . . would be insufficient (without more) to sustain the copyright owner’s burden of showing red flag knowledge.”[29] That this gloss on red flag knowledge “reduces it to a very small category” was of “no significance,” the Second Circuit reasoned, since “the purpose of § 512(c) was to give service providers immunity, in exchange for augmenting the arsenal of copyright owners by creating the notice-and-takedown mechanism.”[30]

The Second Circuit thus held as a matter of law that there was no need for the factfinder to determine whether the material was so obviously infringing that it would raise the red flag. How is this a question of law and not fact? The court never explains. More importantly, this flies in the face of what Congress provided for with red flag knowledge, and it demotes Section 512 to being merely a notice-and-takedown regime where copyright owners are burdened with identifying infringements on URL-by-URL basis. Giving service providers a free pass when confronted with a red flag turns the Section 512 framework on its head. And it enables service providers to game the system and build business models on widespread, infringing content—even if they welcome it—so long as they respond to takedown notices. The end result is that an overwhelming amount of obvious infringements goes unchecked, and there’s essentially no cooperation between service providers and copyright owners as Congress intended.

[1] S. Rep. No. 105-190, at 40 (emphasis added); see also H.R. Rep. No. 105-551(II), at 49.

[2] Id. at 45; see also H.R. Rep. No. 105-551(II), at 54.

[3] 17 U.S.C. § 512(c)(1)(A)(iii); see also 17 U.S.C. § 512(d)(1)(C).

[4] Id. at § 512(c)(1)(A)(i) (emphasis added).

[5] Id. at § 512(c)(1)(A)(ii) (emphasis added).

[6] See id. at §§ 512(d)(1)(A)-(B).

[7] See 4-12B Nimmer on Copyright § 12B.04[A][1][b][ii] (“By contrast, to show that a ‘red flag’ disqualifies defendant from the safe harbor, the copyright owner must simply show that ‘infringing activity’ is apparent—pointedly, not ‘the infringing activity’ alleged in the complaint.” (emphasis in original)).

[8] 17 U.S.C. § 512(c)(1)(A)(iii)

[9] S. Rep. No. 105-190, at 44 (“The ‘red flag’ test has both a subjective and an objective element. In determining whether the service provider was aware of a ‘red flag,’ the subjective awareness of the service provider of the facts or circumstances in question must be determined. However, in deciding whether those facts or circumstances constitute a ‘red flag’–in other words, whether infringing activity would have been apparent to a reasonable person operating under the same or similar circumstances–an objective standard should be used.”); see also H.R. Rep. No. 105-551(II), at 53.

[10] Id at 48 (“Under this standard, a service provider would have no obligation to seek out copyright infringement, but it would not qualify for the safe harbor if it had turned a blind eye to ‘red flags’ of obvious infringement.”); see also H.R. Rep. No. 105-551(II), at 57.

[11] Id.; see also H.R. Rep. No. 105-551(II), at 57-58.

[12] Id.; see also H.R. Rep. No. 105-551(II), at 58.

[13] Id. at 48-49; see also H.R. Rep. No. 105-551(II), at 58.

[14] Id. at 49; see also H.R. Rep. No. 105-551(II), at 58.

[15] See The Pirate Bay, available at https://www.thepiratebay.org/.

[16] See Google Transparency Report, available at https://transparencyreport.google.com/.

[17] See Perfect 10, Inc. v. CCBill LLC, 488 F.3d 1102 (9th Cir. 2007).

[18] Id. at 1114.

[19] Id.

[20] Viacom Int’l, Inc. v. YouTube, Inc., 676 F.3d 19, 31 (2d Cir. 2012).

[21] Id. at 30.

[22] Id. at 30-31.

[23] See, e.g., H.R. Rep. No. 105-551(I), at 26 (“Once one becomes aware of such information, however, one may have an obligation to check further.”).

[24] UMG Recordings, Inc. v. Shelter Capital Partners LLC, 718 F.3d 1006 (9th Cir. 2013).

[25] Id. at 1021-22.

[26] Id. at 1022.

[27] Capitol Records, LLC v. Vimeo, LLC, 826 F.3d 78 (2d Cir. 2016).

[28] Capitol Records, LLC v. Vimeo, LLC, 972 F. Supp. 2d 537, 549 (S.D.N.Y. 2013) (“[B]ased on the type of music the videos used here—songs by well-known artists, whose names were prominently displayed—and the placement of the songs within the video (played in virtually unaltered form for the entirety of the video), a jury could find that Defendants had ‘red flag’ knowledge of the infringing nature of the videos.”).

[29] Capitol Records, 826 F.3d at 94 (emphasis in original).

[30] Id. at 97.

I presented this at the Fordham IP Conference on April 25, 2019. My oral presentation is here, and the accompanying slides are here.

How the Supreme Court Made it Harder for Copyright Owners to Protect Their Rights—And Why Congress Should Fix It

Post author By Joshua Grove
Post date March 7, 2019

U.S. Supreme Court building Earlier this week, the Supreme Court handed down its decision in Fourth Estate v. Wall-Street.com, a case examining the registration precondition to filing a suit for copyright infringement in the federal district courts. While I agree with the Court’s exegesis of the statute at issue, it’s worth noting how the Court’s construction leaves many, if not most, copyright owners in the lurch. Under the Court’s holding, in fact, this very blog post could be infringed today, and there’s very little that could be done to stop it for many months to come. As the Court noted in Harper & Row v. Nation, “copyright supplies the economic incentive to create and disseminate ideas.” The Court’s holding in Fourth Estate, by contrast, disincentivizes dissemination since it undermines effective copyright protection and prejudices the public interest in the production of, and access to, creative works. Again, I don’t blame the Court for this outcome—in fact, I think it’s correct. The problem, as I’ll explain, lies in the unfortunate fact that nowadays it takes too long to register a copyright claim. And that’s something that Congress needs to fix.

The issue in Fourth Estate is straightforward. Under the first sentence of Section 411(a) of the Copyright Act, “no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title.” Some courts, like the Ninth Circuit, have applied the so-called “application approach,” finding that “registration . . . has been made” when the copyright owner delivers a complete application to the Copyright Office. Other courts, like the Tenth Circuit, have applied the so-called “registration approach,” where “registration” is not “made” until the Register of Copyrights has acted upon the application (by either approving or rejecting it). Confounding the analysis is the fact that other sections of the Copyright Act alternatively delineate registration as something done by the applicant or by the Copyright Office.

In the decision below, the Eleventh Circuit applied the registration approach, affirming the district court’s dismissal of Fourth Estate’s complaint since the Register of Copyrights had not yet approved or denied its application to register. The Supreme Court, in a unanimous decision by Justice Ginsburg, affirmed: “We hold . . . that registration occurs, and a copyright claimant may commence an infringement suit, when the Copyright Office registers a copyright.” The issue for the Court was one of pure statutory construction, and the problem for proponents of the application approach is that the second sentence of Section 411(a) clearly indicates that registration is something done by the Copyright Office. It provides, as an exception to the first sentence, that a copyright owner can nevertheless sue for infringement once the application materials “have been delivered to the Copyright Office in proper form and registration has been refused.”

Justice Ginsburg reasoned: “If application alone sufficed to ‘ma[ke]’ registration, § 411(a)’s second sentence—allowing suit upon refusal of registration—would be superfluous.” I’ve always found this to be the better argument, and I’m not surprised to see it front-and-center in the Court’s analysis. Why would applicants need an exception that turns on the subsequent action of the Copyright Office if merely delivering a completed application sufficed? As Justice Ginsburg noted, the application approach “requires the implausible assumption that Congress gave ‘registration’ different meanings in consecutive, related sentences within a single statutory provision.” I think the Court got this one exactly right, and I don’t find arguments to the contrary to be particularly persuasive.

That said, let me now explain why it’s wrong—well, at least why it’s bad for millions of copyright owners and why Congress should fix it ASAP.

The purpose of the registration approach and other similar provisions in the Copyright Act (such as the availability of statutory damages or attorney’s fees) is to incentivize timely registration, which is no longer a prerequisite to copyright protection as it was under the Copyright Act of 1909. Under the current Copyright Act, copyright protection nominally exists once a work is fixed in a tangible medium of expression, and registration is no longer mandatory. (I say “nominally” because the Court’s holding in Fourth Estate ensures that, as a practical matter, countless works with respect to which copyright owners have exclusive rights on paper in fact have no immediate rights in the real world since they can’t actually file suit to quickly stop any ongoing infringement.) However, the incentive-to-register theory makes little sense in the context of the debate over the proper interpretation of Section 411(a) itself as the works being sued upon must be registered under both the application and registration approaches.

With due respect to the Copyright Office, processing a registration application is primarily a ministerial act. The vast majority of applications are granted—97% in 2017 according to the latest available data from the Copyright Office (though 29% of those applications required correspondence with the applicant). Are we really withholding remedies for all copyright owners because of the remaining 3%? And even for the 3% of applications that are denied, the copyright owner can still sue for infringement, asking the district court to reassess the agency’s refusal. No matter what the Copyright Office does with the application, whether it grants or denies, the copyright owner ultimately can sue. And, under the third sentence of Section 411(a), the Register of Copyrights can even “become a party to the action with respect to the issue of registrability of the copyright claim.” So it’s not like the Register can’t have a say should the application be in that slim minority of questionable ones that may merit intervention.

To its credit, the Supreme Court acknowledged that its holding would cause problems for copyright owners—but it also overplayed the exceptions to the registration approach that Congress put in place to alleviate some of these issues. For example, Justice Ginsburg pointed out that Section 408(f) empowers the Register of Copyrights to establish regulations for the preregistration of certain categories of works. Under this regime, as Justice Ginsburg noted, “Congress provided that owners of works especially susceptible to prepublication infringement should be allowed to institute suit before the Register has granted or refused registration.” That’s great for that particular subset of copyright owners, but what about everyone else? And what about authors who publish their works just as soon as they create them? Moreover, Justice Ginsburg’s blithe comment that copyright owners “may eventually recover damages for the past infringement” ignores the fact that injunctive relief to stop the actual, ongoing infringement is unavailable until the registration is processed by the Copyright Office.

The Court laments such policy ramifications: “True, the statutory scheme has not worked as Congress likely envisioned. Registration processing times have increased from one or two weeks in 1956 to many months today.” And this gets to the heart of the problem: The time it takes the Copyright Office to process an application has significantly increased over the years. Just four years after the Copyright Act of 1976 went into effect, the delay was “5 to 6 weeks.” And, as of October 2018, the delay has grown to an “average processing time for all claims” of “7 months.” Indeed, the fastest the Copyright Office processes an application now is one month, and the longest it takes is an incredible 37 months. The following illustration from the Copyright Office breaks this down with more particularity:

To be clear, I don’t think these delays are the Copyright Office’s fault. In fact, I think it’s Congress’s fault for not giving the agency more resources to do the very things that Congress requires it to do. Regardless, the fact remains that even copyright owners who do everything that the Copyright Act expects them to do in order to obtain the greatest protection for their works at the earliest that they can reasonably do so are still left without remedies should—or, perhaps more likely, when—infringement occur once they release their works to the world. The aforementioned constitutional goal of dissemination is thus undercut by the subservient goal of registration, for rational copyright owners would be less motivated to disseminate their works by the right to exclude when that right is in fact illusory. If Congress really wants authors to promote progress via dissemination of new works, it should adjust Section 411(a) to provide for immediate protection to all works, whether registered or not. It can still incentivize registration by limiting the remedies available, but it shouldn’t make it so that there are none.

To see the injustice, one need look no further than this very blog post. According to the Copyright Act, this post was protected the moment it was fixed in a tangible medium of expression (i.e., yesterday evening). Should the copyright owner—presumably the university where I work as this is a work made for hire—have filed for registration as quickly as possible (i.e., this morning), there still would be no way to obtain any injunctive relief while the Copyright Office processes the application. Preregistration was never an option as this post is not a literary work that is protected by the exception for certain works prone to prepublication infringement under Section 202.16 of the CFR. Even if the university had done everything that it was supposed to do as early as it could reasonably have done so to ensure the utmost copyright protection for this post, it could do nothing in the courts to stop an infringer who willfully exploits this post for profit until the Copyright Office acts upon the application—a lifetime for infringement in the digital age. (There is an option to expedite review for $800, but that amount of money is not reasonable for most people.)

Perhaps a takedown notice could be issued under Section 512 of the DMCA, but if there’s a counternotice, the university could not bring suit in the designated 10-14 day window to prevent the service provider from restoring the infringing material since there’s been no registration and thus it cannot sue for infringement. Despite having done everything Congress expected, the university would be powerless to stop the ongoing infringement of its exclusive rights in this post for perhaps several months into the future. And any argument that damages will compensate for infringements occurring before the Copyright Office got around to acting on the application is undercut by the fact that courts routinely grant preliminary injunctive relief precisely because the harm from infringement is irreparable—money damages cannot make the copyright owner whole.

The absurd result of all this is that the promise of exclusive rights in one’s original work of authorship is practically meaningless given the registration approach under Section 411(a). No doubt, Congress intended this disability to act as a stick in order to encourage the carrot of remedies should those rights be infringed. But the reality is that numerous copyright owners who do everything right get the stick and not the carrot—at least until the Copyright Office happens to process their applications. In the meantime, these copyright owners cannot be faulted for thinking twice before disseminating their works. Since enforcement of their rights is precluded through no fault of their own, what else does Congress expect them to do? A right without a remedy is senseless, and given the millions of original works that are created each day, Congress’s promise of copyright protection for new works may be one of the most illusory rights in modern times. Now that the Supreme Court has clarified Section 411(a), it’s time for Congress to fix it.

Tags copyright, Copyright Office, Devlin Hartline, Digital Millennium Copyright Act, DMCA, exclusive rights, Fourth Estate, infringement, registration, Section 411, Section 512, Supreme Court, USCO, Wall-Street.com

Innovation Inventors Patents

New “Invalidated” Documentary Highlights the Problems With the PTAB: Free Screening on October 26

Post author By Joshua Grove
Post date October 25, 2018

a lit lightbulb hanging next to unlit bulbs By Devlin Hartline and Aditi Kulkarni*

The “Invalidated” documentary will be screened this Friday, October 26, at 5:30 PM in Washington, D.C. To register for this free event, which features a presentation by Bunch O Balloons inventor Josh Malone among others, please click here.

Imagine that you’re a father of eight children who puts everything on the line to bring your invention to the marketplace. After a successful Kickstarter campaign that brings in close to $1 million, you protect your invention by securing several patents on the innovative technology. Your invention is a huge market success, and sales exceed your wildest dreams. When the copycats come along, you think your patent rights will protect you. After all, that’s what the patent system is for. But you quickly realize that the system is stacked against you, the lone inventor, and it instead favors the large companies that willingly violate your rights for profit.

While this horror story may sound farfetched, it’s exactly what happened to Josh Malone, the inventor of Bunch O Balloons. And the unfortunate reality is that Malone is not the only inventor to be let down by the patent system that is meant to protect inventors from unscrupulous infringers. Thankfully, Malone is not taking things lying down. Not only is he fighting for his rights in the courts and at the U.S. Patent & Trademark Office—the very Office that granted him the rights in the first place—but he also has become a vocal activist fighting to reform the patent system. In fact, Malone is now telling his story in a new documentary entitled “Invalidated.” The full video, which prominently features CPIP Founder Adam Mossoff and runs about 50 minutes long, is available at both iTunes and Amazon.

You can watch the trailer here:

Inspired by childhood memories, Josh Malone invented Bunch O Balloons to solve a real-world problem. His invention allows anyone to fill and tie around 100 water balloons in just one minute. As a child, he spent days filling up hundreds of water balloons to play with his friends. Though he eventually stopped playing with balloons, the idea of finding a better way to play never left him. His idea finally materialized through a method to save his children’s time by filling several balloons at once. Malone burned the midnight oil perfecting his invention, and his family also invested their time and efforts backing his venture. After failing through several experiments and exhausting their savings, Malone finally succeeded with Bunch O Balloons.

Patent figure for Bunch O Balloons: fluid source leading to balloons

Ready with the product’s final prototype embodying his invention, Malone shot a video for a Kickstarter campaign to advertise his product and to raise some much-needed funds. The campaign was a hit, bringing in close to $1 million. Malone was even interviewed on the Today Show, where he got into an impromptu water balloon fight with Carson Daly. The purchase orders then started pouring in from toy manufacturers and big retailers like Walmart. They were all interested in profiting from the competitive advantage they would get from Malone’s novel—and fun—invention.

On realizing his invention’s strength and wanting to protect it from potential infringers, Malone filed several patent applications with the U.S. Patent & Trademark Office (USPTO). While the patent applications were pending, Malone came to know that a product nearly identical to his own was being advertised and sold in the marketplace under the name, “Balloon Bonanza.” Investigating further, Malone realized that Telebrands, the marketing company that originated the “As Seen On TV” advertisements, had stolen his idea and begun selling knock-off versions of his invention.

Image comparison of Bunch O Balloons versus Balloon Bonanza

Malone sued Telebrands in the Eastern District of Texas, seeking a preliminary injunction to prevent the marketer from further infringing his rights. The district court granted the injunction, agreeing with Malone that his patent was likely valid and infringed. Telebrands fought back, appealing the injunction to the Federal Circuit and again challenging the validity of Malone’s patent on indefiniteness and obviousness grounds. The Federal Circuit sided with Malone, holding that it was not clear error for the district court to conclude that he was likely to succeed on the merits. The Court of Appeals rejected Telebrands’ arguments as failing to raise a substantial question concerning the validity of Malone’s patent.

Telebrands also challenged the validity of Malone’s patent before the Patent Trial & Appeal Board (PTAB) in a post-grant review (PGR) proceeding. During the pendency of Telebrands’ appeal to the Federal Circuit on the preliminary injunction, the PTAB rendered its final written decision: Telebrands had shown by a preponderance of the evidence that Malone’s patent was invalid as indefinite. Of course, had the issue been decided in the district court, the mere preponderance standard would have been insufficient to overturn the presumably valid patent. But in the PTAB, the rules are different, and they favor challengers such as Telebrands that use the additional venue to game the system.

The Federal Circuit was well aware of the PTAB’s decision to the contrary when it upheld the district court’s determination that Malone was likely to succeed on merits in assessing the propriety of the preliminary injunction. In fact, it mentioned the PTAB proceedings in a footnote, noting that its decision was not binding and that it was nevertheless unpersuasive. When Malone subsequently appealed the PTAB loss, the Federal Circuit finally got its chance to directly address the PTAB’s decision on the merits. The Court of Appeals held that, even applying the PTAB’s more relaxed standard, Malone’s claims were not unpatentable for indefiniteness. The Federal Circuit thus made good on the earlier indications from both itself and the district court that Malone’s patent was indeed valid.

While Malone ultimately has been victorious so far, he’s been forced to spend millions of dollars protecting his rights. He reported in July of 2017 that he’d already spent $17 million, and that it might grow to as much as $50 million before it’s all through. That’s an insane amount of money for most lone inventors, and Malone is fortunate enough to have made enough revenue in sales to be able to afford it. Most people aren’t so lucky. And the battle for inventors is certainly far from over, especially when infringers with deep pockets can repeatedly play the game and wear down their victims in multiple forums. As Malone laments, “the PTAB simply encourages infringers like Telebrands to double down on the expense of litigation, rather than acquiescing to the adjudication by the District Court.”

It’s no wonder that, in his dismay, Malone joined other frustrated inventors to symbolically burn their patents outside of the USPTO in the summer of 2017. Malone’s story is a stereotype example of how the big infringers attempt to overwhelm the little guy by simply outspending them should they dare to challenge the wrong. Such gamesmanship at the expense of inventors is not the purpose of the PTAB. As Professor Mossoff notes in the documentary: “The original argument for why we needed the PTAB is that, every once in a while, there will be a mistakenly issued patent they shouldn’t have issued, and that these patents can clog the gears of the innovation economy. Unfortunately, what Congress created was a completely unrestrained, unrestricted agency whose job is to cancel patents.”

America’s Founders recognized that a stable and effective patent system is vitally important for the innovation ecosystem to thrive. American inventors like Josh Malone have made a significant difference in people’s lives, and the patent system exists to reward them for their efforts. Inventors should be able to trust that the patent system will be there to protect them when others trample on their rights. They need those rights to be meaningful in order to recoup their investments and to realize their just rewards. The Founders understood that benefiting inventors through such private gains would redound to the public benefit. But as Malone’s story demonstrates, we will need to make some changes to the patent system before the Founders’ vision can be fully realized.

*Aditi Kulkarni is working towards an LLM Degree in Intellectual Property at Antonin Scalia Law School, and she works as a Research Assistant at CPIP.

Tags Adam Mossoff, Aditi Kulkarni, Bunch O Balloons, Devlin Hartline, Invalidated, Josh Malone, Patent Trial and Appeal Board, PGR, post-grant review, PTAB

Innovation Patent Litigation

CPIP Scholars Ask Supreme Court to Resist Call to Restrict Venue Choices for Patent Owners

Post author By Joshua Grove
Post date March 9, 2017

On March 8, 2017, CPIP Scholars Adam Mossoff, Devlin Hartline, Chris Holman, Sean O’Connor, Kristen Osenga, & Mark Schultz joined an amicus brief in TC Heartland v. Kraft Foods. CPIP Scholars worked with USD Law’s Ted Sichelman to organize, write, and file the brief. The case focuses on whether patent owners may sue corporate defendants in any judicial district where the court has personal jurisdiction over the defendant, which is the default rule in federal cases.

Concerned about the allegedly abusive behavior of certain firms suing in the Eastern District of Texas, some would like to severely restrict where all patent owners may sue. The amici note that, even if the Supreme Court restricts venue choices as these people would like, patent lawsuits would not be equitably distributed as a result. A recent study showed that 60% of all patent cases would still be concentrated in 5 of the 94 judicial districts. Furthermore, instead of concentrating in one district—the Eastern District of Texas—cases would primarily concentrate in two districts—the Northern District of California and the District of Delaware.

As the amici argue: “No plausible argument can be made—and Petitioner and its amici have not offered an argument—that shifting cases from one district to two districts would result in a meaningful distribution of patent cases among the ninety-four federal district courts.” The amici note that concerns about “forum shopping” are overblown since patentees are just doing what all federal plaintiffs do—choosing “the forum that gives it the best opportunity for success.” Since “corporate defendants are generally subject in any civil complaint to venue in any district in which personal jurisdiction lies,” the amici suggest that the same rule should apply in patent cases.

The amici conclude: “Innovators and their investors have long been vital to a flourishing innovation economy in the United States. Startups, venture capitalists, individual inventors, universities, and established companies often rely heavily on patents to recoup their extensive investments in both research & development and commercialization. By restricting the districts in which a patent owner can bring suit, the value of the patent itself is lessened, diminishing the economic incentives the patent system provides to spur innovation.”

To read the amicus brief, please click here.

Tags "patent trolls", Adam Mossoff, Devlin Hartline, Eastern District of Texas, Kraft Foods, PATENT Act, Section 1400, TC Heartland, Ted Sichelman, venue, VENUE Act

President Supreme Court

Intellectual Property Backgrounds of President Trump’s Potential Supreme Court Nominees

Post author By Joshua Grove
Post date January 23, 2017
No Comments on Intellectual Property Backgrounds of President Trump’s Potential Supreme Court Nominees

By Andrew Baluch [1] & Devlin Hartline

President Donald Trump will soon announce his nominee to fill the vacancy left at the Supreme Court by late Associate Justice Antonin Scalia. On September 23, 2016, the Trump campaign revealed that there are twenty-one candidates under consideration for the nomination.

Below is a summary of the intellectual property backgrounds of President Trump’s twenty-one potential Supreme Court nominees. The summary addresses judicial, legislative, and legal experience, as well as education and scholarly work. The summary includes data on each nominee’s intellectual property cases, whether decided as a judge or argued in private practice. Where appropriate, the summary also notes legislative bills that were co-sponsored by the nominee.

Click on the nominee’s name in the table below to jump down to their detailed summary.

SUMMARY OF INTELLECTUAL PROPERTY CASES
		Cases Decided as Judge				Cases Argued in Private Practice
No.	Nominee	Patent	Trademark	Copyright	Trade Secret	Patent	Trademark	Copyright	Trade Secret
1	Blackwell, Keith	0	1	0	0	0	0	0	0
2	Canady, Charles	1	2	0	0	0	0	0	0
3	Colloton, Steven	2	9	1	0	0	0	0	0
4	Eid, Allison	0	0	0	1	0	0	0	0
5	Gorsuch, Neil	0	7	4	3	0	0	0	0
6	Gruender, Raymond	0	5	7	2	0	0	1	0
7	Hardiman, Thomas	1	6	5	3	0	0	0	0
8	Kethledge, Raymond	0	4	2	1	5	0	0	0
9	Larsen, Joan	0	0	0	0	0	0	0	0
10	Lee, Mike	N/A	N/A	N/A	N/A	1	0	0	0
11	Lee, Thomas	0	0	0	3	0	27	2	1
12	Mansfield, Edward	0	0	0	0	1	1	1	1
13	Moreno, Federico	3	15	9	3	0	0	0	0
14	Pryor, William	0	3	3	0	0	0	0	0
15	Ryan, Margaret	0	0	0	0	0	0	0	0
16	Stras, David	0	0	0	1	0	0	0	0
17	Sykes, Diane	4	5	8	2	0	0	0	0
18	Thapar, Amul	0	1	1	1	0	0	0	0
19	Tymkovich, Timothy	1	5	6	2	0	0	0	0
20	Willett, Don	1	0	0	0	0	0	0	0
21	Young, Robert	0	1	0	0	0	0	0	0

1. Keith R. Blackwell

Supreme Court of Georgia (2012 – present)

Prior Judicial Experience

Court of Appeals of Georgia (2010 – 2012)

Prior Legal Experience

Parker, Hudson, Rainer & Dobbs LLP; Assistant District Attorney, Cobb County, GA; Alston & Bird LLP; Law Clerk to Judge J.L. Edmondson (11th Circuit)

Education

JD, University of Georgia School of Law (1999); BA, University of Georgia (1996)

Intellectual Property Cases Decided as a Judge

Patent	0
Trademark	1 total (in favor of owner)
Copyright	0
Trade Secret	0

Intellectual Property Cases Argued in Private Practice

Patent	0
Trademark	0
Copyright	0
Trade Secret	0

Case: Kremer v. Tea Party Patriots, Inc., 314 Ga. App. 459 (2012)

2. Charles T. Canady

Florida Supreme Court (2008 – present)

Prior Judicial Experience

Florida Second District Court of Appeal (2002 – 2008)

Prior Legislative Experience

U.S. Representative (R-FL) (1993 – 2001) (House Judiciary Committee); Florida House of Representatives (1984 – 1990)

Prior Legal Experience

General Counsel to Florida Governor Jeb Bush; Lane, Trohn, Clarke, Bertrand & Williams, PA; Holland & Knight

Intellectual Property Bills Co-Sponsored as U.S. Representative

Co-sponsored 13 bills involving intellectual property, including: 104th-H.R.1733, Patent Application Publication Act of 1995 (introduced); 104th-H.R.1127, Medical Procedures Innovation and Affordability Act (introduced); 104th-H.R.587, Biotechnological Process Patents (passed House); 104th-H.R.359, Patent Term Restoration (introduced)

Education

JD, Yale Law School (1979); BA, Haverford College (1976)

Intellectual Property Cases Decided as a Judge

Patent	1 total (in favor of malpractice defendant law firm and against client patentee)
Trademark	2 total (all in favor of owner)
Copyright	0
Trade Secret	0

Intellectual Property Cases Argued in Private Practice

Patent	0
Trademark	0
Copyright	0
Trade Secret	0

Cases: Larson & Larson, P.A. v. TSE Indus., Inc., 22 So. 3d 36 (Fla. 2009); Florida Virtual Sch. v. K12, Inc., 148 So. 3d 97 (Fla. 2014); Rooney v. Skeet’r Beat’r Of Sw. Florida, Inc., 898 So. 2d 968 (Fla. Dist. Ct. App. 2005)

3. Steven M. Colloton

U.S. Court of Appeals for the Eighth Circuit (2003 – present)

Prior Judicial Experience

None

Prior Legal Experience

U.S. Attorney, Southern District of Iowa; Adjunct Lecturer, University of Iowa College of Law; Private Practice, Iowa; Associate Independent Counsel, Office of Independent Counsel Kenneth W. Starr; Assistant U.S. Attorney, Northern District of Iowa; Special Assistant to the Assistant Attorney General, Office of Legal Counsel; Law Clerk to Chief Justice William H. Rehnquist (U.S. Supreme Court); Law Clerk to Judge Laurence H. Silberman (D.C. Circuit)

Education

JD, Yale Law School (1988); BA, Princeton University (1985)

Intellectual Property Cases Decided as a Judge

Patent	2 total (all in favor of infringer)
Trademark	9 total (7 in favor of owner; 2 in favor of infringer)
Copyright	1 total (in favor of owner)
Trade Secret	0

Intellectual Property Cases Argued in Private Practice

Patent	0
Trademark	0
Copyright	0
Trade Secret	0

Cases: Andover Healthcare, Inc. v. 3M Co., 817 F.3d 621 (8th Cir. 2016); Schinzing v. Mid-States Stainless, Inc., 415 F.3d 807 (8th Cir. 2005); B & B Hardware, Inc. v. Hargis Indus., Inc., 716 F.3d 1020 (8th Cir. 2013); C.B.C. Distribution & Mktg., Inc. v. Major League Baseball Advanced Media, L.P., 505 F.3d 818 (8th Cir. 2007); Coca-Cola Co. v. Purdy, 382 F.3d 774 (8th Cir. 2004); Faegre & Benson, LLP v. Purdy, 129 F. App’x 323 (8th Cir. 2005); Gateway, Inc. v. Companion Prod., Inc., 384 F.3d 503 (8th Cir. 2004); Mid-State Aftermarket Body Parts, Inc. v. MQVP, Inc., 466 F.3d 630 (8th Cir. 2006); Sensient Techs. Corp. v. SensoryEffects Flavor Co., 613 F.3d 754 (8th Cir. 2010); Lovely Skin, Inc. v. Ishtar Skin Care Prod., LLC, 745 F.3d 877 (8th Cir. 2014); Pangaea, Inc. v. Flying Burrito LLC, 647 F.3d 741 (8th Cir. 2011); Capitol Records, Inc. v. Thomas-Rasset, 692 F.3d 899 (8th Cir. 2012)

4. Allison H. Eid

Colorado Supreme Court (2006 – present)

Prior Judicial Experience

None

Prior Legal Experience

Solicitor General, State of Colorado; Associate Professor, University of Colorado School of Law; Arnold & Porter; Law Clerk to Justice Clarence Thomas (U.S. Supreme Court); Law Clerk to Judge Jerry E. Smith (5th Circuit)

Education

JD, University of Chicago Law School (1991); BA, Stanford University (1987)

Intellectual Property Cases Decided as a Judge

Patent	0
Trademark	0
Copyright	0
Trade Secret	1 total (dissenting in favor of infringer)

Intellectual Property Cases Argued in Private Practice

Patent	0 (but in 1 case analogizing to patent law for “full compensation” damages)
Trademark	0
Copyright	0
Trade Secret	0

Case: Acoustic Mktg. Research, Inc. v. Technics, LLC, 198 P.3d 96 (Colo. 2008)

5. Neil M. Gorsuch

U.S. Court of Appeals for the Tenth Circuit (2006 – present)

Prior Judicial Experience

None

Prior Legal Experience

Principal Deputy to U.S. Associate Attorney General; Kellogg, Huber, Hansen, Todd & Evans; Law Clerk to Justice Byron R. White and Justice Anthony M. Kennedy (U.S. Supreme Court); Law Clerk to Judge David B. Sentelle (D.C. Circuit)

Education

DPhil, Oxford University (2004); JD, Harvard Law School (1991); BA, Columbia University (1988)

Intellectual Property Cases Decided as a Judge

Patent	0
Trademark	7 total (2 in favor of owner; 5 in favor of infringer)
Copyright	4 total (all in favor of infringer)
Trade Secret	3 total (2 in favor of owner; 1 in favor of infringer)

Intellectual Property Cases Argued in Private Practice

Patent	0
Trademark	0
Copyright	0
Trade Secret	0

Cases: Earthgrains Baking Companies Inc. v. Sycamore Family Bakery, Inc., 573 F. App’x 676 (10th Cir. 2014); Gen. Steel Domestic Sales, LLC v. Chumley, 627 F. App’x 682 (10th Cir. 2015); Lorillard Tobacco Co. v. Engida, 611 F.3d 1209 (10th Cir. 2010); Hargrave v. Chief Asian, LLC, 479 F. App’x 827 (10th Cir. 2012); Surefoot LC v. Sure Foot Corp., 531 F.3d 1236 (10th Cir. 2008); Utah Lighthouse Ministry v. Found. for Apologetic Info. & Research, 527 F.3d 1045 (10th Cir. 2008); Blehm v. Jacobs, 702 F.3d 1193 (10th Cir. 2012); Dudnikov v. Chalk & Vermilion Fine Arts, Inc., 514 F.3d 1063 (10th Cir. 2008); La Resolana Architects, PA v. Reno, Inc., 555 F.3d 1171 (10th Cir. 2009); Meshwerks, Inc. v. Toyota Motor Sales U.S.A., Inc., 528 F.3d 1258 (10th Cir. 2008); Russo v. Ballard Med. Prod., 550 F.3d 1004 (10th Cir. 2008); Storagecraft Tech. Corp. v. Kirby, 744 F.3d 1183 (10th Cir. 2014)

6. Raymond W. Gruender

U.S. Court of Appeals for the Eighth Circuit (2004 – present)

Prior Judicial Experience

None

Prior Legal Experience

U.S. Attorney, Eastern District of Missouri; Thompson Coburn LLP; Assistant U.S. Attorney, Eastern District of Missouri; Lewis Rice & Fingersh

Education

JD, Washington University (1987); MBA, Washington University (1987), BA, Washington University (1984)

Intellectual Property Cases Decided as a Judge

Patent	0
Trademark	5 total (5 in favor of owner
Copyright	7 total (4 in favor of owner; 3 in favor of infringer)
Trade Secret	2 total (1 in favor of owner; 1 in favor of infringer)

Intellectual Property Cases Argued in Private Practice

Patent	0
Trademark	0
Copyright	1 total (amicus brief on behalf of U.S. Copyright Office)
Trade Secret	0

Cases: Dryer v. Nat’l Football League, 814 F.3d 938 (8th Cir. 2016); First Nat. Bank in Sioux Falls v. First Nat. Bank S. Dakota, 679 F.3d 763 (8th Cir. 2012); Jones v. W. Plains Bank & Trust Co., 813 F.3d 700 (8th Cir. 2015); Kforce, Inc. v. Surrex Sols. Corp., 436 F.3d 981 (8th Cir. 2006); Lovely Skin, Inc. v. Ishtar Skin Care Prod., LLC, 745 F.3d 877 (8th Cir. 2014); Pearson Educ., Inc. v. Almgren, 685 F.3d 691 (8th Cir. 2012); Pinnacle Pizza Co. v. Little Caesar Enterprises, Inc., 598 F.3d 970 (8th Cir. 2010); Strange Music, Inc. v. Anderson, 419 F. App’x 707 (8th Cir. 2011); United States v. Frison, 825 F.3d 437 (8th Cir.); United States v. Sweeney, 611 F.3d 459 (8th Cir. 2010); Warner Bros. Entm’t v. X One X Prods., 644 F.3d 584 (8th Cir. 2011); Warner Bros. Entm’t v. X One X Prods., 840 F.3d 971 (8th Cir. 2016); Wells Fargo Bank, N.A. v. WMR e-PIN, LLC, 653 F.3d 702 (8th Cir. 2011)

7. Thomas M. Hardiman

U.S. Court of Appeals for the Third Circuit (2007 – present)

Prior Judicial Experience

U.S. District Court for the Western District of Pennsylvania (2003 – 2007)

Prior Legal Experience

Skadden, Arps, Slate, Meagher & Flom; Titus & McConomy LLP; Reed Smith LLP

Education

JD, Georgetown University Law Center (1990); BA, University of Notre Dame (1987)

Intellectual Property Cases Decided as a Judge

Patent	1 total (in favor of negligent law firm)
Trademark	6 total (5 in favor of owner; 1 in favor of infringer)
Copyright	5 total (3 in favor of owner; 2 in favor of infringer)
Trade Secret	3 total (1 in favor of owner; 2 in favor of infringer)

Intellectual Property Cases Argued in Private Practice

Patent	0
Trademark	0
Copyright	0
Trade Secret	0

Cases: Ackourey v. Sonellas Custom Tailors, 573 F. App’x 208 (3d Cir. 2014); Am. Bd. of Internal Med. v. Von Muller, 540 F. App’x 103 (3d Cir. 2013); Avaya Inc., RP v. Telecom Labs, Inc., 838 F.3d 354 (3d Cir. 2016); Boyle v. United States, 391 F. App’x 212 (3d Cir. 2010); Brand Mktg. Grp. LLC v. Intertek Testing Servs., N.A., Inc., 801 F.3d 347 (3d Cir. 2015); Dow Chem. Canada, Inc. v. HRD Corp., 587 F. App’x 741 (3d Cir. 2014); FedEx Ground Package Sys. v. Applications Int’l Corp., 2005 U.S. Dist. LEXIS 26651 (W.D. Pa. Nov. 4, 2005); Fishkin v. Susquehanna Partners, G.P., 340 F. App’x 110 (3d Cir. 2009); Groupe SEB USA, Inc. v. Euro-Pro Operating LLC, 774 F.3d 192 (3d Cir. 2014); Aslam v. Attorney Gen. of U.S., 404 F. App’x 599 (3d Cir. 2010); Sims v. Viacom, Inc., 544 F. App’x 99 (3d Cir. 2013); Singer Mgmt. Consultants, Inc. v. Milgram, 650 F.3d 223 (3d Cir. 2011); United States v. Diallo, 476 F. Supp. 2d 497 (W.D. Pa. 2007), aff’d, 575 F.3d 252 (3d Cir. 2009); William A. Graham Co. v. Haughey, 568 F.3d 425 (3d Cir. 2009); World Entm’t Inc. v. Brown, 487 F. App’x 758 (3d Cir. 2012)

8. Raymond M. Kethledge

U.S. Court of Appeals for the Sixth Circuit (2008 – present)

Prior Judicial Experience

None

Prior Legal Experience

Bush Seyferth & Paige PLLC; Feeney Kellett Wienner & Bush PC; Counsel, Ford Motor Company; Honigman, Miller, Schwartz & Cohn LLP; Law Clerk to Justice Anthony Kennedy (U.S. Supreme Court); Judiciary Counsel to U.S. Senator Spencer Abraham (R-MI); Law Clerk to Judge Ralph B. Guy, Jr. (6th Circuit)

Education

JD, University of Michigan Law School (1993); BA, University of Michigan (1989)

Intellectual Property Cases Decided as a Judge

Patent	0
Trademark	4 total (3 in favor of owner; 1 in favor of infringer)
Copyright	2 total (1 in favor of owner; 1 in favor of infringer)
Trade Secret	1 total (in favor of infringer)

Intellectual Property Cases Argued in Private Practice

Patent	5 total (all on behalf of infringer/generic pharmaceutical company)
Trademark	0
Copyright	0
Trade Secret:	0

Cases: Kerr Corp. v. Freeman Mfg. & Supply Co., 2009 U.S. App. LEXIS 6342 (6th Cir. Ohio 2009); Sony/ATV Publ’g, LLC v. Marcos, 651 F. App’x 482 (6th Cir. 2016); L.F.P.IP, LLC v. Hustler Cincinnati, Inc., 533 F. App’x 615 (6th Cir. 2013); Nagler v. Garcia, 370 F. App’x 678 (6th Cir. 2010); R.C. Olmstead, Inc., v. CU Interface, LLC, 606 F.3d 262 (6th Cir. 2010); Taylor v. Thomas, 624 F. App’x 322 (6th Cir. 2015); In re Desloratadine Patent Litig., 502 F. Supp. 2d 1354 (U.S. Jud. Pan. Mult. Lit. 2007); PDL BioPharma, Inc. v. Sun Pharm. Indus., 2007 U.S. Dist. LEXIS 56948 (E.D. Mich. Aug. 6, 2007); Schering Corp. v. Caraco Pharm. Labs., Ltd., 2007 U.S. Dist. LEXIS 41020 (E.D. Mich. June 6, 2007); Sun Pharm. Indus. v. Eli Lilly & Co., 2008 U.S. Dist. LEXIS 35206 (E.D. Mich. Apr. 30, 2008); Sun Pharm. Indus. v. Eli Lilly & Co., 2008 U.S. Dist. LEXIS 46730 (E.D. Mich. June 16, 2008)

9. Joan L. Larsen

Michigan Supreme Court (2015 – present)

Prior Judicial Experience

None

Prior Legal Experience

Adjunct Professor, University of Michigan Law School; Deputy Assistant Attorney General, Office of Legal Counsel; Visiting Assistant Professor, Northwestern University Pritzker School of Law; Sidley Austin LLP; Law Clerk to Justice Antonin Scalia (U.S. Supreme Court); Law Clerk to Judge David B. Sentelle (D.C. Circuit)

Education

JD, Northwestern University Pritzker School of Law (1993); BA, University of Northern Iowa (1990)

Intellectual Property Cases Decided as a Judge

Patent	0
Trademark	0
Copyright	0
Trade Secret	0

Intellectual Property Cases Argued in Private Practice

Patent	0
Trademark	0
Copyright	0
Trade Secret	0

10. Michael S. Lee

U.S. Senator (R-UT) (2011 – present)

Prior Legislative Experience

None

Prior Legal Experience

Howrey LLP; Law Clerk to Justice Samuel A. Alito, Jr. (U.S. Supreme Court); General Counsel to Utah Governor Jon Huntsman; Assistant U.S. Attorney, District of Utah; Sidley Austin LLP; Law Clerk to Judge Samuel A. Alito, Jr. (3rd Circuit); Law Clerk to Judge Dee Benson (D. Utah)

Intellectual Property Bills Co-Sponsored as U.S. Senator

Co-sponsored 6 bills involving intellectual property: 114th-S.2733, VENUE Act (introduced); 114th-S.1137, PATENT Act (introduced and voted yes); 113th-S.1720, Patent Transparency and Improvements Act of 2013 (introduced); 114th-S.328, A bill to amend the Trademark Act of 1946 to provide for the registration of marks consisting of a flag, coat of arms, or other insignia of the United States, or any State or local government (introduced); 113th-S.1816, A bill to amend the Trademark Act of 1946 to provide for the registration of marks consisting of a flag, coat of arms, or other insignia of the United States, or any State or local government (introduced); 113th-S.517, Unlocking Consumer Choice and Wireless Competition Act (became law)

Education

JD, Brigham Young University Law School (1997); BS, Brigham Young University (1994)

Intellectual Property Cases Decided as a Judge

Patent	N/A
Trademark	N/A
Copyright	N/A
Trade Secret	N/A

Intellectual Property Cases Argued in Private Practice

Patent	1 total (on behalf of infringer Deutsche Bank)
Trademark	0
Copyright	0
Trade Secret	0

Case: Island Intellectual Prop. LLC v. Deutsche Bank Trust Co. Americas, 2012 U.S. Dist. Ct. Briefs LEXIS 15212 (S.D.N.Y. Feb. 10, 2012)

11. Thomas R. Lee

Utah Supreme Court (2010 – present)

Prior Judicial Experience

None

Prior Legal Experience

Deputy Assistant Attorney General, Civil Division; Rex & Maureen Rawlinson Professor of Law, J. Reuben Clark Law School, Brigham Young University; Howard, Phillips & Anderson LLC; Parr Brown Gee & Loveless, PC; Law Clerk to Justice Clarence Thomas (U.S. Supreme Court); Law Clerk to Judge J. Harvie Wilkinson, III (4th Circuit)

Scholarly Articles on Intellectual Property

Thomas R. Lee, et. al., An Empirical and Consumer Psychology Analysis of Trademark Distinctiveness, 41 Ariz. St. L.J. 1033 (2009); Thomas R. Lee, et. al., Sophistication, Bridging the Gap, and the Likelihood of Confusion: An Empirical and Theoretical Analysis, 98 Trademark Rep. 913 (2008); Thomas R. Lee, et. al., Trademarks, Consumer Psychology, and the Sophisticated Consumer, 57 Emory L.J. 575 (2008); Thomas R. Lee, Demystifying Dilution, 84 B.U. L. Rev. 859 (2004); Thomas R. Lee, Eldred v. Ashcroft and the (Hypothetical) Copyright Term Extension Act of 2020, 12 Tex. Intell. Prop. L.J. 1 (2003); Thomas R. Lee, et. al. “To Promote the Progress of Science”: The Copyright Clause and Congress’s Power to Extend Copyrights, 16 Harv. J.L. & Tech. 1 (2002); Thomas R. Lee, In Rem Jurisdiction in Cyberspace, 75 Wash. L. Rev. 97 (2000) (proposing an “in rem” solution to the problem of cyberpiracy)

Education

JD, University of Chicago Law School (1991); BA, Brigham Young University (1988)

Intellectual Property Cases Decided as a Judge

Patent	0
Trademark	0
Copyright	0
Trade Secret	3 total (all in favor of owner)

Intellectual Property Cases Argued in Private Practice

Patent	0
Trademark	27 total (all on behalf of owner)
Copyright	2 total (1 on behalf of owner; 1 on behalf of infringer)
Trade Secret	1 total (on behalf of infringer)

Cases: InnoSys, Inc. v. Mercer, 364 P.3d 1013 (Utah 2015); Legacy Res., Inc. v. Liberty Pioneer Energy Source, Inc., 322 P.3d 683 (Utah 2013); USA Power, LLC v. PacifiCorp, 372 P.3d 629 (Utah 2016)

12. Edward M. Mansfield

Iowa Supreme Court (2011 – present)

Prior Judicial Experience

Iowa Court of Appeals (2009 – 2011)

Prior Legal Experience

Belin Lamson McCormick Zumbach & Flynn, PC; Lewis Roca Rothgerber Christie LLP; Adjunct Professor, Drake University Law School; Law Clerk to Judge Patrick Higginbotham (5th Circuit)

Education

JD, Yale Law School (1982); BA, Harvard University (1978)

Intellectual Property Cases Decided as a Judge

Patent	0
Trademark	0
Copyright	0
Trade Secret	0

Intellectual Property Cases Argued in Private Practice

Patent	1 total (on behalf of owner)
Trademark	1 total (on behalf of infringer)
Copyright	1 total (on behalf of infringer)
Trade Secret	1 total (on behalf of owner)

Cases: Kemin Foods, L.C. v. Pigmentos Vegetales del Centro S.A. de C.V., 384 F. Supp. 2d 1334 (S.D. Iowa 2005), aff’d, 464 F.3d 1339 (Fed. Cir. 2006); Amerus Group Co. v. Ameris Bancorp, 2006 U.S. Dist. LEXIS 32722 (S.D. Iowa May 22, 2006); Ryan v. Editions Ltd. West, Inc., 2016 U.S. Dist. LEXIS 131652 (N.D. Cal. Sept. 23, 2016); Midwest Oilseeds, Inc. v. Limagrain Genetics Corp., 2002 U.S. Dist. LEXIS 28698 (S.D. Iowa Nov. 8, 2002)

13. Federico A. Moreno

U.S. District Court for the Southern District of Florida (1990 – present)

Prior Judicial Experience

Eleventh Judicial Circuit of Florida (1987 – 1990); Miami-Dade County Court (1986 – 1987)

Prior Legal Experience

Thornton, Rothman & Moreno, PA; Assistant Federal Public Defender, Southern District of Florida; Rollins, Peeples & Meadows, PA

Education

JD, University of Miami School of Law (1978); BA, University of Notre Dame (1974)

Intellectual Property Cases Decided as a Judge

Patent	3 (1 in favor of owner; 2 in favor of infringer)
Trademark	15 (11 in favor of owner; 4 in favor of infringer)
Copyright	9 (7 in favor of owner; 2 in favor of infringer)
Trade Secret	3 (2 in favor of owner; 1 in favor of infringer)

Intellectual Property Cases Argued in Private Practice

Patent	0
Trademark	0
Copyright	0
Trade Secret	0

Cases: Allegiance Healthcare Corp. v. Coleman, 232 F. Supp. 2d 1329 (S.D. Fla. 2002); Biotanic, Inc. v. Vazquez, 2010 U.S. Dist. LEXIS 69048 (S.D. Fla. July 7, 2010); Burger King Corp. v. Weaver, 33 F. Supp. 2d 1037 (S.D. Fla. 1998); Carnival Corp. v. SeaEscape Casino Cruises, Inc., 74 F. Supp. 2d 1261 (S.D. Fla. 1999); Coach Servs. v. 777 Lucky Accessories, Inc., 2010 U.S. Dist. LEXIS 67739 (S.D. Fla. June 16, 2010); Davis v. Raymond, 2013 U.S. Dist. LEXIS 68392 (S.D. Fla. May 13, 2013); Erika Boom & Belly & Kicks I, LLC v. Rosebandits, LLC, 2013 U.S. Dist. LEXIS 158528 (S.D. Fla. Nov. 5, 2013); CEyePartner, Inc. v. Kor Media Group LLC, 2013 U.S. Dist. LEXIS 98370 (S.D. Fla. July 15, 2013); Fuentes v. Mega Media Holdings, Inc., 721 F. Supp. 2d 1255 (S.D. Fla. 2010); HFuentes v. Mega Media Holdings, Inc., 2011 U.S. Dist. LEXIS 5298 (S.D. Fla. Jan. 20, 2011); Gapardis Health & Beauty, Inc. v. Pramil S.R.L. (ESAPHARMA), 2007 U.S. Dist. LEXIS 98005 (S.D. Fla. May 23, 2007); Gen. Cigar Holdings, Inc. v. Altadis, S.A., 205 F. Supp. 2d 1335 (S.D. Fla.); Glob. Innovation Tech. Holdings, LLC v. Acer Am. Corp., 634 F. Supp. 2d 1346 (S.D. Fla. 2009); Greenberg v. Miami Children’s Hosp. Research Inst., Inc., 264 F. Supp. 2d 1064 (S.D. Fla. 2003); MHermosilla v. Octoscope Music, LLC, 2010 U.S. Dist. LEXIS 129469 (S.D. Fla. Dec. 3, 2010); Icon Health & Fitness, Inc. v. IFITNESS, Inc., 2012 U.S. Dist. LEXIS 46824 (S.D. Fla. Apr. 2, 2012); Inmuno Vital, Inc. v. Golden Sun, Inc., 49 F. Supp. 2d 1344 (S.D. Fla. 1997); HLorentz v. Sunshine Health Prods., 2010 U.S. Dist. LEXIS 100985 (S.D. Fla. Sept. 23, 2010); Milk Money Music v. Oakland Park Entm’t Corp., 2009 U.S. Dist. LEXIS 121661 (S.D. Fla. Dec. 10, 2009); NPA Assocs., LLC v. Lakeside Portfolio Mgmt., LLC, 2014 U.S. Dist. LEXIS 22805 (S.D. Fla. Feb. 22, 2014); Platypus Wear, Inc. v. Clarke Modet & Co., 515 F. Supp. 2d 1288 (S.D. Fla. 2007); Polvent v. Global Fine Arts, Inc., 2014 U.S. Dist. LEXIS 130936 (S.D. Fla. Sept. 18, 2014); Promex, LLC v. Perez Distrib. Fresno, Inc., 2010 U.S. Dist. LEXIS 90677 (S.D. Fla. Sept. 1, 2010); Setai Hotel Acquisitions, LLC v. Luxury Rentals Miami Beach, Inc., 2016 U.S. Dist. LEXIS 171396 (S.D. Fla. Dec. 9, 2016); TNT USA, Inc v. TrafiExpress, S.A. de C.V., 434 F. Supp. 2d 1322 (S.D. Fla. 2006); SValeant Int’l (Barb.) SRL v. Watson Pharms., Inc., 2012 U.S. Dist. LEXIS 193254 (S.D. Fla. July 6, 2012); Valeant Int’l (Barbados) SRL v. Watson Pharms., Inc., 2011 U.S. Dist. LEXIS 128742 (S.D. Fla. Nov. 7, 2011); Valoro, LLC v. Valero Energy Corp., 2014 U.S. Dist. LEXIS 110554 (S.D. Fla. Aug. 11, 2014); Y.Z.Y., Inc. v. Azmere USA Inc., 2013 U.S. Dist. LEXIS 192674 (S.D. Fla. Oct. 16, 2013)

14. William H. Pryor, Jr.

U.S. Court of Appeals for the Eleventh Circuit (2004 – present)

Prior Judicial Experience

None

Prior Legal Experience

Commissioner, U.S. Sentencing Commission; Visiting Professor, University of Alabama School of Law; Attorney General, Alabama; Deputy Attorney General, Alabama; Adjunct Professor, Samford University, Cumberland School of Law; Walston, Stabler, Wells, Anderson & Bains; Cabaniss, Johnston, Gardner, Dumas & O’Neal; Law Clerk to Judge John M. Wisdom (5th Circuit)

Education

JD, Tulane University School of Law (1987); BA, Northeast Louisiana University (1984)

Intellectual Property Cases Decided as a Judge

Patent	0
Trademark	3 total (all in favor of owner)
Copyright	3 total (all in favor of infringer)
Trade Secret	0

Intellectual Property Cases Argued in Private Practice

Patent	0
Trademark	0
Copyright	0
Trade Secret	0

Cases: ADT LLC v. Alarm Prot. Tech. Florida, LLC, 646 F. App’x 781 (11th Cir. 2016); Genesys Software Sys. v. Ceridian Corp., 2016 U.S. App. LEXIS 20914 (11th Cir. Nov. 22, 2016); Jysk Bed’N Linen v. Dutta-Roy, 810 F.3d 767 (11th Cir. 2015); Latele TV, C.A. v. Telemundo Communs. Group, LLC, 2016 U.S. App. LEXIS 20345 (11th Cir. Fla. May 26, 2016); Navellier v. Fla., 2016 U.S. App. LEXIS 21473 (11th Cir. Fla. Dec. 1, 2016); Singleton v. Dean, 611 F. App’x 671 (11th Cir. 2015); Sovereign Military Hospitaller Order of Saint John of Jerusalem of Rhodes & of Malta v. Florida Priory of the Knights Hospitallers of the Sovereign Order of Saint John of Jerusalem, Knights of Malta, The Ecumenical Order, 809 F.3d 1171 (11th Cir. 2015)

15. Margaret A. Ryan

U.S. Court of Appeals for the Armed Forces (2006 – present)

Prior Judicial Experience

None

Prior Legal Experience

Wiley Rein LLP; Bartlit Beck Palenchar & Scott LLP; Cooper Carvin & Rosenthal; Law Clerk to Justice Clarence Thomas (U.S. Supreme Court); Law Clerk to Judge J. Michael Luttig (4th Circuit); Judge Advocate, U.S. Marine Corps

Education

JD, Notre Dame Law School (1995); BA, Knox College (1985)

Intellectual Property Cases Decided as a Judge

Patent	0
Trademark	0
Copyright	0
Trade Secret	0

Intellectual Property Cases Argued in Private Practice

Patent	0
Trademark	0
Copyright	0
Trade Secret	0

16. David R. Stras

Minnesota Supreme Court (2010 – present)

Prior Judicial Experience

None

Prior Legal Experience

Professor, University of Minnesota Law School; Faegre & Benson LLP; Sidley Austin Brown & Wood; Law Clerk to Justice Clarence Thomas (U.S. Supreme Court); Law Clerk to Judge J. Michael Luttig (4th Circuit); Law Clerk to Judge Melvin Brunetti (9th Circuit)

Education

JD, University of Kansas School of Law (1999); MBA, University of Kansas (1999); BA, University of Kansas (1995)

Intellectual Property Cases Decided as a Judge

Patent	0
Trademark	0
Copyright	0
Trade Secret	1 total (in favor of owner)

Intellectual Property Cases Argued in Private Practice

Patent	0
Trademark	0
Copyright	0
Trade Secret	0

Case: Seagate Tech., LLC v. W. Digital Corp., 854 N.W.2d 750 (Minn. 2014)

17. Diane S. Sykes

U.S. Court of Appeals for the Seventh Circuit (2004 – present)

Prior Judicial Experience

Wisconsin Supreme Court (1999 – 2004); Wisconsin Circuit Court, Milwaukee County (1992 – 1999)

Prior Legal Experience

Whyte Hirschboeck & Dudek SC; Law Clerk to Judge Terence T. Evans (E.D. Wis.)

Education

JD, Marquette University Law School (1984); BS, Northwestern University (1980)

Intellectual Property Cases Decided as a Judge

Patent	4 total (3 in favor of owner; 1 in favor of infringer)
Trademark	5 total (2 in favor of owner; 3 in favor of infringer)
Copyright	8 total (4 in favor of owner; 4 in favor of infringer)
Trade Secret	2 total (all in favor of infringer)

Intellectual Property Cases Argued in Private Practice

Patent	0
Trademark	0
Copyright	0
Trade Secret	0

Cases: Allan Block Corp. v. Cty. Materials Corp., 512 F.3d 912 (7th Cir. 2008); Bell v. Lantz, 825 F.3d 849 (7th Cir. 2016); Cent. Mfg., Inc. v. Brett, 492 F.3d 876 (7th Cir. 2007); Chicago Bldg. Design, P.C. v. Mongolian House, Inc., 770 F.3d 610 (7th Cir. 2014); Coach, Inc. v. DI DA Imp. & Exp., Inc., 630 F. App’x 632 (7th Cir. 2016); Consumer Health Info. Corp. v. Amylin Pharm., Inc., 819 F.3d 992 (7th Cir.); Edgenet, Inc. v. Home Depot U.S.A., Inc., 658 F.3d 662 (7th Cir. 2011); Furkin v. Smikun, 237 F. App’x 86 (7th Cir. 2007); Georgia-Pac. Consumer Prod. LP v. Kimberly-Clark Corp., 647 F.3d 723 (7th Cir. 2011); Grigoleit Co. v. Whirlpool Corp., 769 F.3d 966 (7th Cir. 2014); Hecny Transp., Inc. v. Chu, 430 F.3d 402 (7th Cir. 2005); Hyson USA, Inc. v. Hyson 2U, Ltd., 821 F.3d 935 (7th Cir. 2016); Kelley v. Chicago Park Dist., 635 F.3d 290 (7th Cir. 2011); Mostly Memories, Inc. v. For Your Ease Only, Inc., 526 F.3d 1093 (7th Cir. 2008); nClosures Inc. v. Block & Co., 770 F.3d 598 (7th Cir. 2014); Schrock v. Learning Curve Int’l, Inc., 586 F.3d 513 (7th Cir. 2009); Specht v. Google Inc., 747 F.3d 929 (7th Cir. 2014); Waterloo Furniture Components, Ltd. v. Haworth, Inc., 467 F.3d 641 (7th Cir. 2006); Wisconsin Alumni Research Found. v. Xenon Pharm., Inc., 591 F.3d 876 (7th Cir. 2010)

18. Amul R. Thapar

U.S. District Court for the Eastern District of Kentucky (2008 – present)

Prior Judicial Experience

None

Prior Legal Experience

U.S. Attorney, Eastern District of Kentucky; Assistant U.S. Attorney, Southern District of Ohio; General Counsel, Equalfooting.com; Assistant U.S. Attorney, District of Columbia; Trial Advocacy Instructor, Georgetown University Law Center; Adjunct Professor, Vanderbilt University Law School; Adjunct Professor, University of Virginia School of Law; Adjunct Professor, Northern Kentucky University, Chase College of Law; Williams & Connolly; Squire Sanders & Dempsey; Adjunct Professor, University of Cincinnati College of Law; Law Clerk to Judge Nathaniel R. Jones (6th Circuit); Law Clerk to Judge S. Arthur Spiegel (S.D. Ohio)

Education

JD, University of California, Berkeley, Boalt Hall School of Law (1994); BS, Boston College (1991)

Intellectual Property Cases Decided as a Judge

Patent	0
Trademark	1 total (in favor of infringer)
Copyright	1 total (in favor of owner)
Trade Secret	1 total (in favor of owner)

Intellectual Property Cases Argued in Private Practice

Patent	0
Trademark	0
Copyright	0
Trade Secret	0

Cases: Duty Free Americas, Inc. v. Estee Lauder Companies, Inc., 797 F.3d 1248 (11th Cir. 2015); Fastenal Co. v. Crawford, 609 F. Supp. 2d 650 (E.D. Ky. 2009); Rich & Rich P’ship v. Poetman Records USA, Inc., 714 F. Supp. 2d 657 (E.D. Ky. 2010)

19. Timothy M. Tymkovich

U.S. Court of Appeals for the Tenth Circuit (2003 – present)

Prior Judicial Experience

None

Prior Legal Experience

Hale Hackstaff Tymkovich, LLP; Colorado Solicitor General; Davis Graham & Stubbs; Bradley Campbell Carney & Madsen; Law Clerk to Justice William H. Erickson (Colo. Supreme Court)

Education

JD, University of Colorado School of Law (1982); BA, Colorado College (1979)

Intellectual Property Cases Decided as a Judge

Patent	1 total (in favor of owner)
Trademark	5 total (4 in favor of owner; 1 in favor of infringer)
Copyright	6 total (1 in favor of owner; 5 in favor of infringer)
Trade Secret	2 total (1 in favor of owner; 1 in favor of infringer)

Intellectual Property Cases Argued in Private Practice

Patent	0
Trademark	0
Copyright	0
Trade Secret	0

Cases: Australian Gold, Inc. v. Hatfield, 436 F.3d 1228 (10th Cir. 2006); Celebrity Attractions, Inc. v. Okla. City Pub. Prop. Auth., 2016 U.S. App. LEXIS 15244 (10th Cir. Aug. 19, 2016); Cellport Sys., Inc. v. Peiker Acustic GMBH & Co. KG, 762 F.3d 1016 (10th Cir. 2014); Enter. Mgmt. Ltd., Inc. v. Warrick, 717 F.3d 1112 (10th Cir. 2013); La Resolana Architects, PA v. Clay Realtors Angel Fire, 416 F.3d 1195 (10th Cir. 2005); Sportsmans Warehouse, Inc. v. LeBlanc, 311 F. App’x 136 (10th Cir. 2009); Stan Lee Media, Inc. v. Walt Disney Co., 774 F.3d 1292 (10th Cir. 2014); Stan Lee Media, Inc. v. Walt Disney Co., 2015 U.S. App. LEXIS 16055 (10th Cir. May 26, 2015); Storagecraft Tech. Corp. v. Kirby, 744 F.3d 1183 (10th Cir. 2014); Team Tires Plus, Ltd. v. Tires Plus, Inc., 394 F.3d 831 (10th Cir. 2005); Tomelleri v. MEDL Mobile, Inc., 657 F. App’x 793 (10th Cir. 2016); United States v. Shengyang Zhou, 717 F.3d 1139 (10th Cir. 2013); Utah Lighthouse Ministry v. Found. for Apologetic Info. & Research, 527 F.3d 1045 (10th Cir. 2008); Vail Assocs., Inc. v. Vend-Tel-Co., 516 F.3d 853 (10th Cir. 2008)

20. Don R. Willett

Supreme Court of Texas (2005 – present)

Prior Judicial Experience

None

Prior Legal Experience

Deputy Texas Attorney General; Deputy Assistant Attorney General, Office of Legal Policy; Special Assistant to the President and Director of Law and Policy, President George W. Bush; Domestic Policy and Special Projects Adviser, Bush-Cheney 2000 Presidential Campaign; Director of Research and Special Projects, Governor George W. Bush; Haynes & Boone, LLP; Law Clerk to Judge Jerre S. Williams (5th Circuit)

Education

JD, Duke University School of Law (1992); BBA, Baylor University (1988)

Intellectual Property Cases Decided as a Judge

Patent	1 (dissenting in favor of state-court jurisdiction for patent negligence suits – a view ultimately adopted by the U.S. Supreme Court)
Trademark	0
Copyright	0
Trade Secret	0

Intellectual Property Cases Argued in Private Practice

Patent	0
Trademark	0
Copyright	0
Trade Secret	0

Case: Minton v. Gunn, 355 S.W.3d 634 (Tex. 2011)

21. Robert P. Young, Jr.

Michigan Supreme Court (1999 – present)

Prior Judicial Experience

Michigan Court of Appeals (1995 – 1999)

Prior Legal Experience

General Counsel, AAA Michigan; Dickinson, Wright, Moon, Van Dusen & Freeman

Education

JD, Harvard Law School (1977); BA, Harvard College (1974)

Intellectual Property Cases Decided as a Judge

Patent	0
Trademark	1 total (in favor of owner)
Copyright	0
Trade Secret	0

Intellectual Property Cases Argued in Private Practice

Patent	0
Trademark	0
Copyright	0
Trade Secret	0

Case: Citizens Ins. Co. v. Pro-Seal Serv. Grp., Inc., 477 Mich. 75 (2007)

[1] Professorial Lecturer in Law, George Washington University Law School. The author would like to thank Intellectual Ventures for its invaluable research support.

Tags Andrew Baluch, Antonin Scalia, copyright, Devlin Hartline, intellectual property, nomination, nominee, patent, President Trump, Supreme Court, trade secret, trademark

FTC Patent Law Uncategorized

FTC’s PAE Study Makes Unsupported Recommendations

Post author By Joshua Grove
Post date October 6, 2016

The FTC released its long-awaited study of so-called patent assertion entities, or PAEs, today. As many predicted, the FTC makes several broad recommendations for substantive and procedural reforms. The problem with this, however, is that the study was not designed to reveal the sort of data that could support such policy recommendations.

The FTC itself even admitted this. When seeking approval from the Office of Management and Budget (OMB) to go ahead with the study, the FTC explained that its findings “will not be generalizable to the universe of all PAE activity.” In another submission to the OMB, the FTC acknowledged that “the case study should be viewed as descriptive and probative for future studies seeking to explore the relationships between organizational form and assertion behavior.” Now that the study is out, we see that the FTC has neglected to recognize the very limitations it once acknowledged to exist.

The simple fact is that the PAE study is just the first step down the long road to understanding the complicated world of PAEs. While the study’s results reveal some information about a handful of firms, they don’t—because they can’t—tell us how PAE activity affects competition and innovation in general. The sample size is too small, and the questions are too open-ended, to have any predictive power.

It’s clear that many had already jumped the gun, claiming both that we need this study to understand PAEs but that we know enough about PAEs to condemn them. They were going to use this study to argue for broad reforms no matter what it said. And now that the study is out, itself suggesting many fundamental changes, the anti-patent crowd has more fuel for the anti-inventor bonfire. That the study does not support its conclusions matters a great deal, and it’s disappointing that the FTC would use an exploratory study designed to simply suggest hypotheses to claim that those hypotheses have now been fully tested.

To better understand the limitations of the FTC’s study, here are some recommended readings:

Papers

Anne Layne-Farrar, What Can the FTC’s §6(B) PAE Study Teach Us? A Practical Review of the Study’s Methodology
Kristen Osenga, Sticks and Stones: How the FTC’s Name-Calling Misses the Complexity of Licensing-Based Business Models
Fritz Scheuren, Statistics and the Paperwork Reduction Act: An FTC Case Study

Essays

Devlin Hartline, Acknowledging the Limitations of the FTC’s PAE Study
Devlin Hartline, How Rhetorical Epithets Have Led the FTC Astray in its Study of Patent Licensing Firms
Anne Layne-Farrar, What Can the FTC’s PAE Study Teach Us?
Kristen Osenga, Why the FTC Study on PAEs is Destined to Produce Incomplete and Inaccurate Results
Fritz Scheuren, What Can We Learn From the FTC’s Patent Assertion Entity Study?

Tags Anne Layne-Farrar, Devlin Hartline, Fritz Scheruen, FTC, Kristen Osenga, PAE Study, patent assertion entity

Recent Posts

Recent Comments

Archives

Categories