Tag: trademark

From Great Ideas to Global Impact – A Talk with Andrew Byrnes

Post author By Joshua Grove
Post date July 28, 2022

The following post comes from Tuan Tran, a rising 3L at Scalia Law and a Research Assistant at C-IP².

2022 Andrew Byrnes event flyer — Click on image for full-size PDF flyer.

Small ideas can lead to big changes, which in turn can make a significant impact on the world, but—as technology executive, attorney, and investor Andrew Byrnes knows well—this is no easy task.

On May 4, 2022, Mr. Byrnes gave a talk co-hosted by the Center for Intellectual Property x Innovation Policy (C-IP²) at George Mason University, Antonin Scalia Law School, and Business for a Better World Center, School of Business, George Mason University. With his background and experiences in both the legal and technology industries, Mr. Byrnes shared his knowledge about how just a single idea can be transformed to make a great impact on society. His talk focused on two main points: how ideas are developed, and the framework he has used to implement and transform those ideas into something impactful.

According to Mr. Byrnes, the first step is “finding the idea.” There are three principles involved in the process: be curious, look at intersections, and be passionate. The first principle is to be open to the possibility of having a great idea that can either address a challenge or take advantage of an opportunity. It is important to listen and be observant, because the more one talks with new people about new topics in different contexts, the more one will be likely to come up with interesting and powerful new ideas. One of the key things to keep in mind is to not waste time looking for a perfect idea, because a big idea is usually not presented initially in its complete form. Instead, it is usually presented as smaller ideas that are eventually brought together. Second, “looking at intersections between disciplines and industries” means to be curious and examine known things and combine them “in ways that they haven’t been combined before.” For example, with patents, “most inventions are combinations of known elements.” The third principle stands out as the most important one: being passionate about the pursuit of the idea. Without passion, it is extremely difficult to go from that great idea to real-world impact.

Mr. Byrnes has laid out a framework that involves the most crucial aspects of how to accomplish the goal of transforming ideas into impactful innovation. The framework has “five pillars” in a “hub-and-spoke” formation: legal clearance, intellectual property (IP) protection, market validation, operationalization, and user adoption. As Mr. Byrnes explained, “The reason why I have this hub-and-spoke model is it’s not remotely linear. You . . . have to do all of these things in sequence and at once, and once you’ve gone through all of them, you have to go back and do them all again, because the world is dynamic, your idea is dynamic, and the operationalization of the idea will require you to . . . adjust over time.” Following is the discussion of the five pillars.

Legal Clearance

This pillar begins by “evaluating the existing law.” It is essential to understand the related law and how it could impact what will be done with the ideas, including any legal barriers that prevent the implementation of an idea. When as is common the law is unclear, there are two choices, both with costs and opportunities. Putting a hold on the idea can help avoid potential legal problems, but that might result in being left behind when the competitors decide to engage in similar markets or to produce similar products. It may be difficult to enter the market later. On the other hand, proceeding with the idea when the law is unclear might be costly later after the regulators or courts say that the implementer cannot do what they have been doing. Therefore, a company needs legal advice to understand all aspects of the related law before implementing any ideas so that the company can come up with the most suitable strategy. Lawyers are a helpful source, and—for any startups in the Northern Virginia area—so is the Innovation Law Clinic at George Mason University Antonin Scalia Law School.

Mr. Byrnes pointed out that there are “many facets” involved in IP, the second pillar. Important forms of IP for protecting one’s inventions and businesses are patents and trademarks. In short, a patent is “the grant of a property right to an inventor by the government” that can “exclude anyone [else] from making, selling, or using the invention for a [specific] period of time.” Not every idea or invention can be patented, because there are some legal requirements for patent protection; trade secrets may be able to provide protection where patents cannot. However, where applicable, patent protection can be valuable for limiting competition during the life of the patent, raising the valuation of a company, and potentially for licensing purposes. When it comes to patent protection, filing as soon as possible is important because the first inventor to file a patent application will have priority. Also, it is advisable to keep documentation and to have written agreements with employees and collaborators, if any, to ensure the ownership of our idea. Trademarks are also important. A great idea may not succeed if the consumers or clients cannot find the product or service or associate it with your company. Ideally, select a trademark “that is as strong as possible” at an early stage to ensure maximum brand protection.

Market Validation

After legal clearance and protecting IP, the third pillar is market validation. Even “a legal and protected idea” is not impactful when people do not need it. As mentioned earlier, the world changes at a fast pace, so what people needed in the past might not be what they find important in the present. Thus, to build a sustainable business from great ideas, it is vital to “(re)visit demand,” “assess the model,” and “engage prospects directly.” When revisiting demand, implementers should ask themselves whether their ideas are solving any problems or providing solutions to “pain point[s]” they envisioned at the beginning or some other problems they have developed over time. In terms of economics, business models should be assessed for their sustainability. Obtain feedback from clients and consumers using a variety of methods, both traditional, e.g., customer surveys, and creative. For example, Arctop utilizes neuroscience technology to develop an app that can evaluate a user’s experience with a product based on the user’s brain activity. This method can be a better representation of customer satisfaction than what is available through a rating system or survey.

Operationalization

As Mr. Byrnes says, it is exciting to confirm that people still love and want our ideas, “but we actually have to get it done.” The operationalization area or fourth pillar is the “get-stuff-done” (the “GSD”) stage. There are three main tasks involved in this stage: “building the right GSD team, . . . focusing on execution, and then prioritizing efficiency and viability.” Building the GSD team is the most important task. Mr. Byrnes lists being emotionally intelligent, curious, diverse in perspective, synergy-seeking, resilient, and confident as important characteristics for team members. The more people in the team who have these characteristics, the more effectively and efficiently the team members can collaborate to accomplish mutual goals. Second, “ideas alone are not good enough”; the focus needs to be on execution. Avoid “mak[ing] the perfect enemy of the good.” For example, a team may wait to act if their vision of the ways things will occur is not realized, but the result may be that, “if you wait that long, … the world’s going to pass you by.” Therefore, implementers need to be confident in the team they have built and the accomplishments they have achieved in earlier stages. As Mr. Byrnes states, “be biased to action, and that’s most likely the best risk-minimizing approach.” In addition, “prioritizing efficiency and viability” is crucial. By “spend[ing] no more money than you’re making,” the team does not “hav[e] to seek as much outside investment and engagement over time.”

User Adoption

The last pillar of the framework is about conveying to the world what you are doing. To be successful at this stage, Mr. Byrnes states, it is important to have “widespread visibility,” “a compelling narrative,” and “third-party validation.” There are several tools to help in achieving widespread visibility: “earned media,” paid advertisements, or “owned” media, such as social media. Although all of these tools helping reach as many customers as possible, the most suitable tool should be chosen carefully depending on the situation. The tools are most useful only when there is a compelling narrative to deliver to the target audience. It takes effort to come up with a unique narrative, but in general, a compelling narrative should convey a key benefit of the products directly and concisely. Finally, products and services will garner more trust and credibility when potential customers see others whom they know and trust approving or using those products or services. Thus, start-up companies are highly encouraged to seek third-party validation, whether from other companies, non-profit organizations, governments, or others.

A small idea can make significant impact on society, but the path from forming an idea to making the impact is challenging. Many companies have struggled to make impactful innovations because of the lack of relevant knowledge and experiences. During the talk, Mr. Byrnes pointed out several unique problems and a sophisticated framework of five pillars to overcome those problems. Although following the five-pillars model might not guarantee success, it significantly improves any company’s chances of creating impactful innovations quickly and effectively.

Trademarks

Consumer Perception Wins the Day: A Case Overview of USPTO v. Booking.com

Post author By Joshua Grove
Post date July 6, 2020

The following post comes from Ryan Reynolds, a rising 3L at Scalia Law and a Research Assistant at CPIP.

U.S. Supreme Court building By Ryan Reynolds

Last week, the Supreme Court in USPTO v. Booking.com held that a combination of an otherwise generic term and a generic top-level domain (TLD) may be protected as a trademark so long as consumers perceive it as capable of distinguishing among the members of a class of goods or services and not as a reference to the class itself. The Court rejected the nearly per se rule applied by the United States Patent and Trademark Office (USPTO) that such combinations are necessarily generic.

The Background

Between 2011 and 2012, Booking.com filed four trademark registration applications for the “Booking.com” mark with the USPTO. The USPTO denied the registrations because it found that the mark was generic as applied to online hotel reservation services. On appeal, the Trademark Trial and Appeal Board (TTAB) affirmed the denial. The TTAB analyzed “Booking” and “.com” separately and found the mark generic.

The Lanham Act provides that a trademark is “any word, name, symbol, or device” used by a person in commerce “to identify and distinguish his or her goods . . . from those manufactured or sold by others and to indicate the source of the goods.” Five categories of marks are recognized under the Lanham Act that have varying levels of protection. Fanciful, arbitrary, and suggestive marks receive immediate protection. Descriptive marks only receive protection upon showing secondary meaning, that is, once consumers understand the mark to communicate a single source. Lastly, generic marks can never receive trademark protection. A generic mark does not help a consumer distinguish one good or service from another; it instead merely refers to the common name of the good or service itself. The restriction on generic marks is based on the concern that competitors should have free use of the terms necessary to identify their products or services to consumers.

Having lost at the TTAB, Booking.com then filed suit in the U.S. District Court for the Eastern District of Virginia. The district court applied the primary significance test, which states: “[T]he primary significance of the registered mark to the relevant public . . . shall be the test for determining whether the registered mark has become the generic name of goods or services in connection with which it has been used.” The district court held that “Booking.com” was a descriptive mark that had acquired secondary meaning, based on the perception of the mark by the relevant consuming public. On appeal, the U.S. Court of Appeals for the Fourth Circuit affirmed, finding that “Booking.com” was eligible for trademark protection. The USPTO then petitioned the Supreme Court for a writ of certiorari, which was granted.

The Arguments

The central issue was whether the Lanham Act had legislatively overruled the Supreme Court’s 132-year-old decision in Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co. In Goodyear’s, the Court created a per se rule that the addition of an entity designator such as “company” to the end of an otherwise generic mark could not create a valid trademark. The Court reasoned that entity designators do not serve a source-identifying function, but instead only indicate that parties have formed an association to deal in goods or services.

The USPTO contended that, like entity designators, TLDs such as “.com” do not serve a source-identifying function as they only communicate a business’ online presence to the public. Therefore, it argued that Goodyear’s per se rule controlled the case as both lower courts had found “Booking” alone to be generic. It further argued that ruling for Booking.com would cause competitive harm by opening the door to the registration of countless generic marks. It stressed that this harm was heightened by the competitive advantages the internet already grants to Booking.com as the only party that can use its domain name. It argued that, due to these competitive advantages and the opportunity for Booking.com to pursue protection under unfair competition laws, “Booking.com” does not require trademark protection.

In contrast, Booking.com alleged that the Lanham Act had legislatively overruled Goodyear’s through its creation of the primary significance test. It argued that the primary significance test is the exclusive test for all marks to determine genericism, with the Lanham Act creating no special category for domain names as marks. Likewise, Booking.com maintained that the piecemeal analysis by the USPTO of “Booking” and “.com” separately went against the Lanham Act’s directive to assess the mark as a whole for purposes of registration.

Booking.com further contended that the primary significance test reinforces the aims of trademark law by helping consumers navigate the marketplace. By requiring marks to pass both the primary significance test and show secondary meaning in order to receive protection as a descriptive mark, non-source-identifying marks are eliminated. Booking.com also pointed out that the USPTO has inconsistently applied Goodyear’s per se rule by allowing marks similar to “Booking.com” to be registered, and this inconsistency has not caused harm to fair competition in the marketplace. It also warned that the USPTO’s per se rule would usher in a “mass extinction event” for hundreds of registered marks.

The Ruling

In its opinion affirming the Fourth Circuit’s decision, the Supreme Court rejected the USPTO’s per se rule as to combination terms like “Booking.com.” The majority opinion, authored by Justice Ginsburg and joined by seven other justices, held: “Whether any given ‘generic.com’ term is generic, we hold, depends on whether consumers in fact perceive that term as the name of a class or, instead, as a term capable of distinguishing among members of the class.”

The majority stated that USPTO’s reliance on Goodyear’s was flawed since it would find terms ineligible for trademark protection even if consumers would understand them to signify source: “That bedrock principle of the Lanham Act is incompatible with an unyielding legal rule that entirely disregards consumer perception.” The majority reasoned that the Court’s decision in Goodyear’s stood only for the proposition that a “compound of generic elements is generic if the combination yields no additional meaning to consumers capable of distinguishing the goods or services.” Thus, the majority held that a consumer could understand “Booking.com” to refer to the source of the goods or services and not merely to describe the website itself.

Addressing the anticompetitive arguments raised by the USPTO, the majority noted that the concern of hindering competitors “attends any descriptive mark” and that the likelihood of confusion and fair use doctrines would “guard against the anticompetitive effects.” Further, the majority rejected the USPTO’s argument that unfair competition laws could provide an adequate remedy for Booking.com, stating that there is “no cause to deny Booking.com the same benefits Congress accorded other marks qualifying as nongeneric.” Lastly, the majority declined to “open the door to cancellation of scores of currently registered marks” due to the inconsistency of the USPTO’s own application of the per se rule for which it argued.

In her brief concurrence, Justice Sotomayor raised two observations. First, she noted her appreciation for the dissent’s skepticism of consumer-survey evidence as an “unreliable indicator of genericness.” Second, she observed that the USPTO may have properly “concluded based on such dictionary and usage evidence, that Booking.com is in fact generic” and that the district court may have erred in concluding otherwise—an issue that was not before the Supreme Court.

In his dissent, Justice Breyer argued in favor of the USPTO’s per se rule, stating that the Lanham Act had not repudiated Goodyear’s and that its “principle is sound as a matter of law and logic.” In addition to tracing many of the same arguments advanced by the USPTO in its briefs, Justice Breyer criticized the “fact-specific” approach established by the majority to determine genericism. He claimed that survey evidence is an unreliable metric of genericness and that there would be little to stop the registration of countless generic marks. Justice Breyer argued that this influx of “generic.com” marks would open the door to potentially serious anticompetitive consequences, and he contended that the Court’s decision may lead to costly litigation that will “no doubt chill others from using variants on the registered mark and privilege established firms over new entrants to the market.”

While the ultimate consequences are not yet known, this decision clearly marks the strong resolution of the Supreme Court that, where genericism is concerned, consumer perception is key.

Tags Booking.com, descriptive mark, generic mark, Justice Breyer, Justice Ginsburg, Justice Sotomayor, Lanham Act, Supreme Court, trademark, USPTO

Innovate4Health Innovation

Innovate4Health: Indian Startup Develops Nanomaterial Filter to Help Solve Global Drinking Water Crisis

Post author By Joshua Grove
Post date February 21, 2018

This post is one of a series in the #Innovate4Health policy research initiative.

Innovate4Health By Gleb Savich

Access to clean water remains a critical issue on a global scale. According to the latest statistics by the World Health Organization (WHO), 844 million people lack a basic drinking water service and at least 2 billion people use contaminated water that can transmit cholera, dysentery, typhoid, polio, and other diseases. Contaminated drinking water causes more than 500,000 deaths each year. And in low- and middle-income countries, more than one-third of the health care facilities lack even soap and water for handwashing.

many hands catching water under a faucet This drinking water crisis disproportionately affects the poor in the developing world. However, problems with access to safe drinking water may arise in any part of the world due to man-made or natural disasters—including in the United States. One recent example is the public health crisis that erupted in Flint, Michigan, where drinking water became contaminated with lead when the city switched to a different water source.

Natural disasters may disrupt the water supply in areas that normally have access to safe drinking water. As of October 2017, over a month after Hurricane Maria devastated the island of Puerto Rico, many of its residents still did not have access to clean water, precipitating an outbreak of leptospirosis, a rare bacterial disease.

Climate change, population growth, and urbanization pose further challenges to water supply systems. According to the World Health Organization, by 2025, half of the world’s population will be living in water-stressed areas. These varied challenges to one of humanity’s most fundamental problems require flexible and creative solutions.

Dr. Thalappil Pradeep is a professor in the Department of Chemistry at the Indian Institute of Technology (IIT) Madras. His decades of research focusing on nanomaterials has led to several discoveries that have already begun to help solve the global problem of access to clean drinking water.

The first breakthrough came in 2004 when Dr. Pradeep’s team developed nanoparticles that can break down certain pesticides dissolved in water. Many of these chemicals are not removable by standard water filters and have been shown to pose environmental and health risks. Although the use of some of these pesticides is banned, the compounds persist in the environment decades later. The problem is particularly relevant in India, one of the world’s largest pesticide producers, where pesticide water contamination is a serious problem in certain areas.

enlarged image of a molecule The pesticide removal technology developed by Dr. Pradeep and his colleagues works by utilizing the ability of gold and silver nanoparticles to bind pesticides from flowing water through adsorption. Dr. Pradeep and his coinventor obtained both Indian and U.S. patents on their technology and licensed it to Eureka Forbes, an Indian manufacturer of vacuum cleaners and water purifiers.

The technology is estimated to have reached 7.5 million people and is the first nanomaterials-based water filter to be commercialized. To further develop nanomaterials-based water filtration technologies, Dr. Pradeep and his team founded a startup, InnoNano Research, in 2004.

Their next breakthrough came in 2012, when the team developed a novel nanomaterial capable of being adapted for the removal of multiple types of water contaminants. The new filter, dubbed AMRIT for Arsenic and Metal Removal by Indian Technology, can remove microbial contamination as well as arsenic, iron, and other heavy metals from drinking water.

The antimicrobial properties of silver ions were well known, but their large-scale implementation for water filtration had been hampered by technological obstacles, such as lack of suitable substrates in which to embed the ions. The novel nanoparticle material developed by Dr. Pradeep and his team solves these issues.

Silver nanoparticles are embedded in this material to remove microbes, while the incorporation of other compounds allows for the removal of other contaminants. For example, the incorporation of iron achieves the removal of both iron and arsenic. Thus, this technology allows for manufacturing of multistage filtration systems suitable for particular needs.

Discussing this filtration system, Dr. Pradeep explains: “If this will be useful for water, it has to be very cheap, have a low carbon footprint, require no electricity, and should not contaminate water sources in the process.” And his team’s technology meets these challenges. According to : Dr. Pradeep, manufacturing requires no heating or electricity and uses materials with a low carbon footprint.

Removal of arsenic from drinking water is of particular interest in India, where ground waters used for drinking and irrigation are often contaminated with dangerous levels of arsenic. To begin addressing this problem, by the summer of 2016, AMRIT filters were installed in 750 locations in several Indian provinces, providing clean water to nearly half a million people.

In 2016, InnoNano Research succeeded in securing one of the largest investments for an Indian tech startup when it obtained $18 million from Nanoholdings LLC, a U.S. venture capital firm specializing in investing into material science-based energy and water startups. This investment is particularly significant in light of the difficulties that Indian startups often face when it comes to scaling up their technologies.

Dr. Pradeep explains: “We have no efficient mechanisms for partnering, scaling and incubating – those are the lacunae in our system.” While universities provide startups with access to labs and research grants, more funding is needed to achieve the scale necessary for further product development.

Leveraging intellectual property enables startups to raise funds necessary to bring their innovations to those who need them. With the help of Nanoholdings LLC, Dr. Pradeep hopes to expand the company’s operations into Africa, Southeast Asia, and Latin America, and to continue developing the technology to filter out other dangerous contaminants found in drinking water.

#Innovate4Health is a joint research project by the Center for the Protection of Intellectual Property (CPIP) and the Information Technology & Innovation Foundation (ITIF). This project highlights how intellectual property-driven innovation can address global health challenges. If you have questions, comments, or a suggestion for a story we should highlight, we’d love to hear from you. Please contact Devlin Hartline at jhartli2@gmu.edu.

Tags Gleb Savich, health, healthcare, Innovate4Health, innovation, nanomaterial, patent, trademark, water filter

Innovate4Health

Innovate4Health: Nutriset Uses Patents and Trademarks to Fight Severe Malnutrition Across the Globe

Post author By Joshua Grove
Post date October 31, 2017

This post is one of a series in the #Innovate4Health policy research initiative.

Innovate4Health By Nick Churchill

Malnutrition is one of the greatest global health challenges, particularly with regard to children and pregnant women in developing countries. Undernutrition contributes to nearly half of all deaths among children under the age of 5 and has lifelong consequences for physical and cognitive wellbeing.

Nutriset has confronted the global malnutrition problem head-on by developing a range of innovative nutritional products and using its intellectual property to help developing countries reach nutritional autonomy.

Malnutrition is a blanket term that includes both undernutrition and micronutrient deficiency. An estimated 11 percent of the world’s population, or 815 million people, are undernourished. Undernourished people are particularly vulnerable to disease and death, and both undernutrition and deficiencies in micronutrients can prevent proper growth and development. Undernutrition causes children to underperform in school and makes adults less able to work, perpetuating a cycle of poverty. It can also be deadly. Children suffering from severe acute malnutrition, characterized by very low weight and visible muscle wasting, require urgent treatment to survive.

Severely undernourished patients have traditionally been treated with powdered foods which are dissolved in water before consumption. These powdered products carry risks of dosage errors and bacterial contamination, and they are likely to cause diarrhea in undernourished patients. They also tend to have short shelf lives, particularly in tropical climates.

Nutriset was founded in 1986 by Michel Lescanne with the mission of “focusing on research in the field of humanitarian nutrition, developing innovative solutions and acting as an interface between the worlds of humanitarian aid, nutritionists and food industry technologies.” Since then, Nutriset has developed several therapeutic milks, pastes, and tablets. In 1996, Nutriset partnered with Dr. Andre Briend to create Plumpy’Nut®, the first ready-to-use therapeutic food (or, RUTF) for the treatment of severe acute malnutrition.

This new product was field tested in Malawi by Dr. Mark Manary, who discovered that RUTFs were much more effective than traditional treatments. Dr. Manary was able to clear his hospital’s malnutrition ward and use RUTFs to treat his patients at their homes, while increasing the recovery rate from 25% to 95%. Given the product’s success, Dr. Manary recognized the long-term impact RUTFs could have if they were manufactured in the countries that needed them. Together, the doctors simplified the recipe so it could be produced locally.

A woman and child sitting on a bend next to a box. The woman is giving the child something to drink. Plumpy’Nut® has a long, 2-year shelf-life, is formulated to avoid diarrhea-type side effects, and can be eaten right out of the packet, eliminating the risks of dosage errors and contamination associated with mixing a powder with water. Plumpy’Nut®’s long shelf-life, effectiveness, and ease-of-use have led to a rise in community-based treatment of acute malnutrition and have made it possible to treat children in areas that were not reached by traditional methods.

Nutriset has used its patent rights to further increase access to its technologies in developing countries through its PlumpyField® network. Nutriset partners with local entrepreneurs in franchise-like relationships to create sustainable production systems in developing countries. In addition to benefiting from Nutriset’s reputation and manufacturing experience, network partners are given access to Nutriset’s patents and trademarks. The franchise-like system based on granting rights to use its intellectual property allows Nutriset to ensure that all products being locally produced by network members embody the innovations that actually help those suffering from malnutrition. And by supporting the local manufacture of its innovative products, Nutriset enables its partners to provide jobs to local people, source raw materials from local farmers, and customize the products to address the specific nutritional needs of their communities, while decreasing dependency on foreign organizations.

The PlumpyField® network consists of 9 members based in Central America, Africa, Asia, Europe, and the U.S. While the majority of the products are still manufactured in France and the U.S., members in developing countries continue to increase their production capacity, bringing the network’s total capacity to 117,400 metric tons. In 2016, the network’s products were used to treat nearly 8 million children. Thanks to Nutriset’s focus on incentivizing local capacity, that number will surely rise. According to the United Nation’s Food and Agriculture Organization, increasing local production is one of the best ways of ensuring long-term food security. Nutriset’s success in this endeavor would not be possible without its intellectual property rights.

The story of Plumpy’Nut® and PlumpyField® illustrates the power of intellectual property rights to improve and save lives. Not only do IP rights encourage the development of innovative products, they can be used to implement sustainable solutions to some of the world’s most pressing health challenges.

Tags CPIP, Innovate4Health, ITIF, malnutrition, Nutriset, patent, trademark

From Star Wars to La La Land: How Intellectual Property Fuels Films

Post author By Joshua Grove
Post date May 11, 2017

The following post comes from Mandi Hart, a rising third-year law student at Antonin Scalia Law School, George Mason University, who worked as a video producer before going to law school.

By Mandi Hart

Movies are a first-love in America and around the world, and their production is made possible by the existence of intellectual property (IP) rights. Although most moviegoers may not recognize the vital role that IP plays in film, without it, screens would be dark. This post explains the critical role that copyright, trademark, and patents play in film production and financing.

Copyright is the Lifeblood of Movies

Copyright secures to creators certain exclusive rights in their original works of authorship, including rights of reproduction, distribution, public display, performance, and the creation of derivative works. These exclusive rights make it possible for creators and copyright owners to deploy their creative works as property rights in a free market.

Copyright’s exclusive right to distribute creative works is particularly important in the film industry. Distribution deals are essential to the filmmaking process, as many filmmakers finance the production of their movies by selling the exclusive right to distribute their film in a given territory. Distributors purchase these rights via a pre-sale, committing to pay a certain amount to the producer when the completed film is delivered in accordance with technical specifications. The pre-sale agreement serves as collateral for bank loans that provide actual cash for a film’s production. Once a film is completed and delivered, the payment from the distributor is then used to pay back the loan.

Without copyright, producers would have no distribution rights to sell in the first place, and without distribution deals, many producers wouldn’t be able to secure the funding necessary to make their movies.

Copyright also makes it possible for authors to option pre-existing works for adaptation into movies. An author or publisher can sell a film producer the right to create a derivative work from a novel, short story, play, or comic book. And films themselves might inspire derivative works—think of the breadth and popularity of Star Wars movies and shows today, 40 years after the original movie was released. Copyright not only protects the original creative works that often serve as the foundation for films, it also makes possible the many licensing deals that turn individual films into trilogies, series, or full-blown universes.

Copyright also fuels the music and sounds we hear in movies. From original scores and sound effects to the innumerable songs licensed for use in movies, copyright ensures that the people involved in the creation of movie sounds—whether artists, composers, or engineers—are incentivized and rewarded for their contributions.

By giving artists and creators a property right in the fruits of their artistic labor, copyright provides the foundation for the creation of movies as we know them today.

Trademark Helps Movies Get Made and Protects Their Brands

Just as copyright protects several aspects of any given film, trademark helps establish and protect a movie’s brand while providing supplemental sources of financing. As studios move away from traditional film financing mechanisms due to economic recession, consolidation within the industry, and risk-aversion in credit markets, a growing number of producers are looking for new funding sources. Product placement has become an increasingly common source of financing, providing mutual benefit to producers and marketers.

Featuring recognizable brands in a film enables a producer to leverage the reputation and public perception of certain products to craft characters and settings. Indeed, a character may become identified with a particular brand or product—think James Bond driving an Aston Martin, ET eating Reeses Pieces, or Carrie Bradshaw wearing Manolo Blahnik. A product may even become a character itself, as with the Wilson volleyball in Castaway.

The inclusion of known brands lends authenticity to the world of the film and the characters inhabiting it. When Mia asks Sebastian to get the keys to her Prius from a valet in La La Land, and Sebastian sees nothing but Prius key fobs on the valet stand, more is communicated to the audience than just the type of car Mia drives. Viewers get a sense of the world in which Mia lives, her friends and associates, and her subculture and values.

And of course, Prius benefits from the connection with an acclaimed film that won multiple Academy awards. While product placement represents a creative choice, it is also a shrewd business move for producers in need of funds and marketers looking for more subtle promotional opportunities than the traditional hard-sell advertisement.

Additionally, trademark serves to protect merchandise and ancillary products created in connection with a film. Marketing trademark-protected clothing, toys, home appliances, bedding, wallpaper, and other film-related merchandise is another critical source of revenue for producers, particularly those hoping to build a film franchise. Just as copyright is central to film financing and content, trademarks make an increasingly vital contribution to production funding and the creation of on-screen worlds.

But Without Patented Technology, Films Wouldn’t Exist

In addition to copyright and trademark, patents also play an essential role in film. A patented invention—the kinetoscope—allowed individual, consecutive images imprinted onto film to be projected in order and at speeds capable of creating the illusion of movement. Thomas Edison, holder of the kinetoscope’s patent, began documenting the world around him and created the first microdocumentaries for exhibition to paying customers. Across the Atlantic, the Lumiere brothers also embraced the possibilities that early film technology offered, creating short fiction films, the most enduring of which, Trip to the Moon, is still watched to this day.

The original film technologies, to both capture and display moving images, gave birth to a new form of leisure and entertainment. In less than three decades an entire industry had been established to exploit the commercial value of film and to satisfy the growing public appetite for movies.

Sound recording and playback technology revolutionized the industry and were followed just a few years later by technicolor, the debut of which—in The Wizard of Oz—changed filmmaking forever. Patented technologies created, then upended, the film industry, and to this day provide the foundation upon which advancements in filmmaking and viewer experience are based.

Just as the development of VistaVision in the 1950s gave directors more onscreen real estate and enabled sweeping scenic compositions, the implementation of Dolby Surround Sound in the 1980s allowed composers and sound editors to weave rich sonic tapestries. Composers were able to create complex filmic symphonies, and sound editors could immerse the audience more deeply into the world of the film by literally enveloping them in the movie’s aural field.

The switch from analog to digital, and the integration of computer technology into filmmaking, allowed for special effects unlike anything seen before. Computer-generated images put an end to an era of hand-drawn animation and manual splicing, as entire worlds could be created and manipulated digitally. Today, the development of 3D and virtual reality technology are set to revolutionize the film industry, changing the way images are captured and exhibited. Add to the distribution mechanisms numerous exhibition platforms (laptop, tablet, cell phone, etc.), and it is obvious the central role that patented technology plays in film creation and consumption.

Conclusion

In any given film, copyright, trademark, and patent play crucial roles in crafting the story, securing financing, and translating script to screen. Copyright secures property rights in (and incentivizes the creation of) original films as well as adaptations of prior works, while trademark contributes to the development of setting and characters. As an industry founded on patented technology, filmmaking relies on the innovation made possible by a patent system that encourages and incentivizes inventors. Those who developed sound recording and transmission technology, technicolor, panoramic projection, and many other innovations at the heart of moviemaking could not—and would not—have done so without the assurance that they would own the fruits of their innovative labor.

Next time you settle into a plush reclining chair, as the lights dim and the trailers begin, think about all the intellectual property embedded in the story you watch play out on-screen, because without it, that story wouldn’t exist.

Tags author, copyright, derivative work, distribution right, film, intellectual property, La La Land, Mandi Hart, patent, publisher, Star Wars, technology, Thomas Edison, trademark, video producer

Innovate4Health

Innovate4Health: mPedigree Battles Counterfeit Drugs Through Innovative Verification System

Post author By Joshua Grove
Post date March 17, 2017

This post is one of a series in the #Innovate4Health policy research initiative.

Innovate4Health Counterfeit medicines sold under a product name without proper authorization are a serious threat to global public health. Classified by the World Health Organization (WHO) as substandard, spurious, falsely labelled, falsified and counterfeit (SSFFC) medical products, counterfeit drugs are regularly designed to appear identical to genuine products. However, they fail to effectively treat the disease or condition for which they were intended, and in some instances, they can cause adverse reactions or death.

A recent BBC investigation revealed a multi-billion-dollar global trade in counterfeit drugs resulting in 120,000 deaths a year in Africa alone. And though counterfeit drugs affect economies, health care systems, and patients worldwide, developing nations are most at risk, with an estimated counterfeit rate of 10%-30% of medicines sold. The prevalence of unauthorized drugs in countries with less advanced health care systems has created a dangerous pharmaceutical market with few resources to help consumers distinguish between a drug that could potentially save their life and something that might kill them.

hands holding a phone and a box of "Black Secret Mineral Creme to Powder Foundation SPF 15" In 2007, Ghanaian tech entrepreneur Bright Simons set out to address this troubling threat to public welfare by creating a way to quickly confirm the legitimacy of a pharmaceutical. Realizing that low literacy and technical capacity were limiting the efficacy of existing consumer-targeted controls such as holograms and bar codes, Simons wanted to create a user-friendly system that would help consumers instantly check the authenticity of a drug using their mobile device. Simons envisioned a verification mechanism that would not only enable consumers to protect themselves against dangerous counterfeits, but also help pharmaceutical manufacturers defend their brands and shield shopkeepers from the liability of selling fake drugs.

Simons partnered with drug companies and other stakeholders to upload pedigree information from individual packs of medicine into a central registry using standard mass serialization methods similar to those employed in the radio-frequency identification (RFID) barcode system familiar in the United States and other developed countries. Calling his company mPedigree, Simons built a mobile verification service that enables consumers to text a product code that is then checked against the registry of authentic medicines, instantly verifying that the medicine they’ve acquired is legitimate and safe.

Since forming mPedigree in 2009, Simons has brought his system to Nigeria, Kenya, and India, with pilot programs in Uganda, Tanzania, South Africa, and Bangladesh. In 2015, mPedigree codes appeared on over 500 million drug packets from clients such as AstraZeneca, Roche, and Sanofi, and its verification network has been essential in combating a serious counterfeit antimalarial drug scheme that was putting thousands of Africans at risk.

Though mPedigree is best known for its work with pharmaceutical certification, Simons has expanded its verification system to address counterfeits in other industries through his development of the cutting-edge supply chain transformation technologies, EarlySensor and Goldkeys.

mPedigree’s EarlySensor technology offers a proactive solution to companies plagued by unauthorized imitations by identifying patterns in counterfeiting activity and alerting partner government agencies of suspicious trends. The project “scans large pools of authentication, traceability, supply chain & logistical referencing, and user-generated data to mine insights and plot evolving patterns” to empower both manufacturers and consumers to predict counterfeiting activity before it occurs. EarlySensor technology is currently used by three major pharmaceutical and cosmetic companies in Nigeria, and empirical analysis has shown a 65% reduction in the circulation of counterfeit versions of their brands.

With Goldkeys, mPedigree has developed a set of web tools to provide brand owners with “complete, real-time, control of key events in their supply chain.” The technology enables companies to manage distribution networks and retail point integration, as well as track end-consumer activity through web applications and cloud computing. Goldkeys also allows consumers to “call in” their product by voice call or text on a mobile device to ensure authenticity and receive consumer support.

mPedigree - Bringing Quality to Life Through the combination of EarlySensor and Goldkeys, mPedigree’s innovative technology is facilitating the protection of both brand owners and consumers and ensuring that data collection and authentication mechanisms are leading to the safer distribution of medicines, cosmetics, seeds, and other essential products.

As a company dedicated to helping others protect their product reputation and brand, mPedigree understands the importance of effective IP rights and has utilized patent, copyright, and trademark protection in the development and commercialization of its own brands and services. In the early days of the company, as it formed partnerships with tech and pharmaceutical industry giants, mPedigree was careful to retain the rights to its creations, with Simons stating in a recent interview that, “[w]e had one interest to protect: our intellectual property.”

hands holding a phone and a seed packet By providing a dynamic link between consumers and manufacturers, mPedigree is making communications at the point of purchase routine and creating value for consumers, manufacturers, regulatory agencies, and sellers. A project ten years in the making, mPedigree is built on the recognition that protecting intellectual property—both mPedigree’s and its clients—can save lives.

Bright Simons’ vision and dedication to fighting the counterfeit drug epidemic in Africa and beyond through pharmaceutical verification is a testament to the vital role innovation and technology play in confronting global challenges, and as its motto states, mPedigree is indeed “bringing quality to life.”

*Images courtesy of mPedigree Global Image Archives

Tags Africa, Bright Simons, copyright, counterfeit drugs, EarlySensor, global health, Goldkeys, mPedigree, patent, trademark

Innovate4Health

Innovate4Health: Eye Exams On-the-Go with PEEK

Post author By Joshua Grove
Post date March 10, 2017

This post is one of a series in the #Innovate4Health policy research initiative.

Innovate4Health Hundreds of millions of people worldwide have vision problems that could be fixed or relieved if only they were diagnosed early enough. Unfortunately, current eye screening equipment is expensive, bulky, and requires specialists to operate it. As a result, the vast majority of patients in the developing world have limited or no access to eye screening services and often suffer unnecessarily from eye problems.

Innovative new applications for smartphones promise to take eye exams out of the doctor’s office and bring them to the people who need them most. Several promising solutions have emerged. Not only are they mobile, but they are also affordable and non-specialists can operate them.

These solutions could benefit vast numbers of people. According to data from the World Health Organization, 285 million people worldwide are visually impaired. Of this group, 39 million are blind and 246 million have low vision. About 90% of visually-impaired people live in low-income countries, where there is an acute shortage of practicing ophthalmologists. Yet, 80% of all visual disorders could be treated or even prevented if diagnosed at the outset.

When it comes to eye disorders, early diagnostics is the key. In fact, four out of five cases of visual impairment can be prevented or cured if timely detected. But in developing countries, there is a huge disparity between population size and the number of eye care providers. In Kenya, for example, there are only 86 ophthalmologists to cover a population of over 40 million people. Many of those who need eye care live in rural, distant areas and are often unable to get to clinics or hospitals to seek help until after it is too late. As a result, millions of people in low-income countries are losing their vision.

PEEK kit laid out One promising example of these new mobile diagnostic applications for eye care is the Portable Eye Examination Kit, or PEEK. PEEK is essentially an eye clinic that fits in a pocket. It combines both a traditional ophthalmoscope and a retinal camera in a smartphone, enabling affordable, fast, and easy eye examinations in the remotest of communities. PEEK consists of an app and a clip-on camera adapter that slides over a smartphone. Designed to be operated by community workers with minimum to no training, PEEK brings a low-cost and simple-to-use eye screening technology to the most underserved places of the world.

PEEK was born from Dr. Andrew Bastawrous’ frustrating experience trying to bring eye care to rural Kenyans. Bastawrous, a British eye surgeon, experienced a logistical nightmare attempting to transport the bulky, costly, and fragile eye equipment to remote areas of Kenya in 2007. Back then, Bastawrous was a PhD student at the London School of Hygiene and Tropical Medicine, working on a study of eye diseases that involved setting up 100 clinics in rural Kenya. One of the biggest problems facing Bastawrous was that the villages he visited often had no electricity or road access, making it very difficult to transport and use medical equipment.

However, Bastawrous observed that these remote villages did have cellular phone coverage. From that observation came the idea of a smartphone-based ophthalmic tool. To make this idea a reality, Bastawrous teamed up with software developer Stewart Jordan, biomedical engineer Mario Giardini, and ophthalmologist Iain Livingstone to found PEEK Vision. Since 2011, the PEEK team has relied on its expertise in international eye health, biomedical engineering, and ophthalmic research to develop smartphone-based visual assessment tools.

phone showing PEEK app image How does PEEK work? An app and a clip-on adapter use the smartphone’s built-in camera and flash to perform various eye exams within seconds. From basic testing for visual acuity, color and contrast sensitivity, and cataracts to scanning the retina, PEEK examination tools can help identify patients who need cataract surgery and detect early signs of diabetes, malaria, and other diseases. The PEEK clip-on adaptor itself can be made with a 3D printer and works with common smartphone models such as iPhone, Samsung, HTC, and Sony.

PEEK also enables efficient remote screening and treatment. A healthcare worker using PEEK can scan over 1,000 people per week. With minimal training, even non-healthcare workers can operate PEEK. Workers in the field can send information to eye care specialists, as PEEK makes high-quality images for further diagnosis and treatment readily available. PEEK also records patient contact information and GPS data, which it then emails to the treating physician.

The developers of PEEK have used IP rights to coordinate the development and deployment of this technology. They applied for a U.S. patent and have already obtained a U.S. trademark registration. PEEK tools are still in the process of being approved by the U.K. Medicines and Healthcare Products Regulatory Agency and the U.S. Food and Drug Administration.

PEEK is working with NGOs and private donors to deploy the technology. It received funding from the Queen Elizabeth Diamond Jubilee Trust in 2013 towards testing the technology in different communities around the world. In 2014, the company started a crowdfunding campaign on Indiegogo to seek additional funds. Donors had an option either to purchase a PEEK kit for themselves or to donate it to a clinic in need.

PEEK is a great example of how innovation can address global healthcare challenges. It is a low-cost and easy-to-use invention that builds on widely-available, popular technology. It has a tremendous potential to improve millions of lives.

*Images courtesy of Peek Vision Ltd

March 13, 2017, update from PEEK Vision: “Peek is a growing team and is working with many partners to achieve its mission to create tools and knowledge that radically increases access to eye care worldwide. In 2016 Peek Vision Ltd was set up as a company and any profits go to its owner, the Peek Vision Foundation.”

Tags Andrew Bastawrous, eye exam, Innovate4Health, patent, PEEK vision, smartphone, trademark

ITC Trademarks

CPIP Founders File Amicus Brief on Behalf of 11 Law Professors in Converse v. ITC

Post author By Joshua Grove
Post date February 3, 2017

CPIP Founders Adam Mossoff & Mark Schultz filed an amicus brief today on behalf of 11 law professors in Converse v. International Trade Commission, a trademark case currently before the Federal Circuit.

In late-2014, Converse filed a complaint with the International Trade Commission alleging that more than thirty companies, including Skechers, Walmart, New Balance, and Highline, were violating Section 337 of the Tariff Act of 1930 by importing and selling infringing shoes. Converse owns a registered trademark on the midsole of its iconic Chuck Taylor All Star shoe, including the signature toe cap, toe bumper, and midsole stripes:

An administrative law judge found that Converse owns a valid registered trademark and that each respondent sold at least one infringing knock-off. That opinion was later reversed by the Commission, which held that Converse’s registered trademark was invalid. In the Commission’s opinion, Converse failed to prove that its iconic midsole had acquired secondary meaning—though it nevertheless found that Converse’s trademark would have been violated had it been valid. Converse has now appealed that ruling to the Federal Circuit.

The amicus brief filed by Professors Mossoff & Schultz argues that the Commission failed to properly consider the fundamental role of trademark law in securing the productive labors of companies like Converse that create famous products like its Chuck Taylor All Star shoe. The brief was co-signed by Professors Gregory Dolin, Christopher Frerking, Hugh Hansen, Jay Kesan, Irina D. Manta, Kristen Osenga, Eric Priest, Ted Sichelman, and Saurabh Vishnubhakat.

The Summary of Argument from the amicus brief is copied below:

SUMMARY OF ARGUMENT

This case deals with one of the most iconic, long-lived brands in the footwear industry: the Chuck Taylor athletic shoe. As one of the first massively successful athletic shoe products—selling hundreds of millions of pairs over the past 80 years—the name and design of these athletic shoes is an exemplar of the successful commercial goodwill that trademark law is intended to promote and secure to innovative commercial enterprises like Converse. Unfortunately, the International Trade Commission (Commission) chose to ignore the fundamental importance of investment in goodwill—to trademark law generally and to the establishment of secondary meaning specifically.

The appellant addresses the numerous doctrinal and factual infirmities with the Commission’s decision, and thus amici offer an additional legal and policy insight into this case that is necessary to understand the full scope of the Commission’s error: the Commission contradicted a fundamental precept of modern trademark law that it secures the valuable goodwill created by companies like Converse through their productive labors in creating, manufacturing and marketing iconic, famous products like the Chuck Taylor athletic shoes. See Qualitex v Jacobson, 514 U.S. 159, 163-64 (1995) (“The law thereby encourages the production of quality products, and simultaneously discourages those who hope to sell inferior products by capitalizing on a consumer’s inability quickly to evaluate the quality of an item offered for sale.”).

In addition to protecting consumers from significant costs and other harms imposed on them by commercial pirates, it is a longstanding, fundamental policy in trademark law to secure the valuable goodwill created by innovative commercial enterprises in selling products in the marketplace. See, e.g., Partridge v. Menck, 5 N.Y. Ch. Ann. 572, 574 (1847) (stating a trademark owner “is entitled to protection against any other person who attempts to pirate upon [its] goodwill”). Courts recognize these two key, mutually reinforcing policies in trademark law—securing goodwill and protecting consumers—as two sides of the same coin. See Groenveld Transport Efficiency v Lubecore Intern., Inc., 730 F.3d 494, 512 (6th Cir. 2013) (“Trademark law’s likelihood-of-confusion requirement . . . incentivizes manufacturers to create robust brand recognition by consistently offering good products and good services, which results in more consumer satisfaction. That is the virtuous cycle envisioned by trademark law, including its trade-dress branch.”). These two policies necessarily work together to ensure that trademark law functions properly.

In this case, the Commission disregarded the dual policies that animate trademark law by focusing solely on consumer issues while denying Converse its justly earned legal protection for its long-established and valuable goodwill. Thus, amici believe that the Commission’s decision should be reversed solely on the grounds of this contradiction of fundamental trademark policy. This is a case in which commercial pirates have undoubtedly “tread closely on the heels of [a] very successful trademark,” and thus are within the “long shadow which competitors must avoid” that is cast by Converse’s valuable goodwill in its famous mark—the Chuck Taylor athletic shoe design. Kenner Parker Toys Inc. v. Rose Art Industries, Inc., 963 F2d 350, 353-54 (Fed. Cir. 1992) (quotations and citations omitted).

To read the amicus brief, please click here.

Tags Adam Mossoff, Chuck Taylor All Star, Converse, Federal Circuit, goodwill, infringement, International Trade Commission, ITC, labor, law professor, Mark Schultz, trademark

Innovation

How IP Helps Individuals

Post author By Joshua Grove
Post date January 25, 2017

This is the second in a series of posts summarizing CPIP’s 2016 Fall Conference, “Intellectual Property and Global Prosperity.” The Conference was held at Antonin Scalia Law School, George Mason University on October 6-7, 2016. Videos of the conference panels and keynote address, as well as other materials, are available on the conference website.

The second panel of CPIP’s 2016 Fall Conference discussed the positive impact of intellectual property (IP) on people’s lives. Day or night, wherever we are, IP is around us—from movies, music, books, smartphones, and computer tablets to essentials like transportation, clothing, food, and medicines—each involving some aspect of IP. Yet we rarely think of how these products are brought to us, or more importantly, the ways in which they have changed our personal and professional lives.

The panelists, Prof. Kristina Lybecker (Colorado College), Ken Stanwood (WiLAN), Howard Rachinski (Christian Copyright Licensing International), Stephen Bock (Church Music Publishers Association), and Prof. Mark Schultz (Southern Illinois University School of Law, Center for the Protection of Intellectual Property) revealed how intellectual property benefits individuals by creating jobs, promoting cultural diversity, and bringing innovative products, services, and medicines to marketplaces worldwide.

Prof. Kristina Lybecker discussed how intellectual property helps individuals by promoting innovation, job creation, and international trade. She presented an international competitiveness index showing that the most innovative economies have the strongest IP regimes. The opposite is also true, and economies with weaker IP protection are less innovative and competitive on a global scale. Comparing data from the top-30 countries that comprise nearly 80% of the global economy, including the U.S., U.K., France, Japan, Australia, and Singapore, Lybecker showed that the correlation between innovation and IP protection is indeed very strong.

Likewise, intellectual property contributes significantly to jobs, wages, and trade. Lybecker presented data showing that there are 55 million jobs in the U.S. supported by IP-intensive industries, representing 46% of all private sector employment. These industries contribute $5.8 trillion to U.S. output each year, accounting for nearly one-third of total GDP. Wages in IP-focused industries are 30% higher than in other sectors, and 74% of U.S. exports come from IP-related industries. Lybecker noted that stronger IP regimes attract greater foreign direct investment and R&D spending, which increases the spread of technology and spurs market growth.

Finally, Lybecker discussed the strong correlation between drug availability and IP rights in the pharmaceutical industry. Data shows that countries with the strongest IP protection enjoy the quickest launches for new medicines and the greatest availability of treatments and cures for their populations. The U.S., for example, has the strongest IP protection for both pharmaceutical products and processes, and it is a global leader in pharmaceutical innovation.

Ken Stanwood from WiLAN highlighted the role that intellectual property in the wireless sector plays in improving people’s lives. WiLAN invented a fundamental technology that is used in the Wi-Fi physical layer that was a significant stepping stone toward broadband cellular technologies like smartphones. Since then, wireless IP has created new markets and provided better access to existing markets. For example, wireless communications and GPS technology enable popular services such as Uber and Car2Go.

Stanwood discussed how wireless IP empowers women in developing countries. For instance, Grameen Bank’s “village phone” program provides microloans to women in Bangladesh to purchase cellphones that are then shared with others in their villages. Not only has this program improved the lives of individual women by increasing their role in the family, but it has also created social and economic benefits for the entire community by providing better access to health care, education, and business transactions.

The introduction of the portable eye examination kit in Africa was another of Stanwood’s examples of how wireless IP improves people’s lives. A special portable camera attached to a smartphone enables schools, remote health providers, emergency medical workers, nurses, and general practitioners to perform various eye exams for afar, including pupil assessment, retinal evaluation, cataract examination, and even to diagnose cerebral malaria.

Howard Rachinski and Stephen Bock discussed how IP in the church music industry benefits congregations. With over 350,000 churches in the U.S. and 2.18 billion Christians around the globe, the industry is massive both in publishing and consumption. Before the digital age, publishers distributed hymnals to churches while paying royalties to songwriters and copyright owners. Congregants sang only those songs found in the hymnals, which could often be decades old. The digital age, however, changed this paradigm, and people now want a larger variety of songs. This change in music consumption has brought many challenges.

Rachinski and Bock noted that the entire church music industry reconsidered its practices and searched for new ways to empower worship by facilitating access to legal content. Christian Copyright Licensing International (CCLI) contracted with copyright owners to aggregate their rights and make them available to churches for an affordable annual fee. CCLI currently works with 250,000 churches in 40 countries to provide more than 100,000 licensed songs of worship. Not only has this licensing scheme ensured the very survival of the church music industry, but it has also enabled more Christians to become professional songwriters.

Prof. Mark Schultz discussed how IP helps bring products to consumers. Organizations like the Gates Foundation often talk about how hard it is to bring medicines to people. In some places, vaccines are delivered on the backs of camels and donkeys. The World Health Organization estimates that nearly 2 billion people around the globe have no access to medicine. And yet, Schultz noted, some products are available in every corner of the world. For example, Coca-Cola sells 2 billion servings of its products daily across the globe.

Indeed, Schultz pointed to Coca-Cola as a valuable case study on international network distribution and asset management. The protection of its brand allows Coca-Cola to secure returns on investment, protect its good will, and prevent copying of its products. Coca-Cola reduces costs by working with nearby distributors to produce, bottle, and ship its products locally. Finally, Coca-Cola has a network of local stakeholders (licensees, distributors, and consumers) who are interested in genuine products being delivered to the market. Schultz noted that the system works best when the local IP system is stable.

Lastly, Schultz turned to the evidence establishing the correlation between strong IP rights and economic growth. He referred to one economic index that demonstrated a positive relationship between patent protection and importations into developing countries. Likewise, Schultz discussed the index he created with Prof. Douglas Lippoldt illustrating that the strength of the trade secret system has positive effects on exports. They found that stronger IP regimes lead to the delivery of more pharmaceuticals and the introduction of more technological services.

Together, the five panelists gave concrete examples of the critical role of IP in helping individuals both domestically and internationally. Not only does IP create jobs, new markets, and business opportunities, but it also enables access to healthcare, medicines, education, and technologies. A strong IP system bolsters innovation, invites investment, and brings products to people. With the right IP strategy, companies can continue innovating and making a positive impact on people’s lives.

Tags 2016 Fall Conference, access to medicine, copyright, Howard Rachinski, Ken Stanwood, Kristina Lybecker, Mark Schultz, Maryna Koberidze, patent, Stephen Bock, trade secret, trademark

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

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