Thursday, December 01, 2016
Greetings from a First-Time GuestPrawf
This is my blogging debut – thanks for having me as a guest this month! I’m an assistant professor at University of Toledo College of Law, where I teach Torts, Legal Ethics, a seminar on social media discovery, and, as of next semester, Privacy & Data Security Law. I mainly write on social media & the law (which is basically the law of the horse but with emojis). I thought December would be a great month for my guest stint, as post-election analysis would die down and we once again would be interested in seemingly trivial things, like social media. So much for that!
But I still intend to blog about social media topics, including social media’s post-election angst. Other topics will include top social networks your students use (spoiler alert: it’s Snapchat), Facebook tools to tame your out-of-control news feed, social media issues in legal ethics, and Twitter tips for academics. I’ll also write a bit about the sharing economy & tort law, my other area of interest.
So thanks again for having me and I look forward to a great month!
Happy December, everyone. Thanks to all of our November guests, as well as our election bloggers (I will post a single post with all the election-related writings later today).
And please welcome our December guests: David Lander (Saint Louis), Kevin Lapp (Loyola-LA), Scott Maravilla (ALJ), and Agnieszka McPeak (Toledo).
Wednesday, November 30, 2016
Sponsored Post: Learning Criminal Procedure
The ABA, employers, and students themselves tell us that law schools must do more to produce students who are better equipped to enter the practice of law. The goal of complete practice-readiness might be something of a tall order. True competence in even one area of the law may take five or even ten years to develop. We have our students for just three. But, there is certainly much more we can be doing to make our students what we will call “practice-primed.” There are steps we can take during those three years to ensure that the students have the basic knowledge they will need as young lawyers. There are things we can do to ensure students are exposed to a fuller array of the skills they will need in practice, not just the narrow range that has been the focus of more traditional approaches to the curriculum. This is a large part of the reason we came together to write the Learning Criminal Procedure.
And, so many former students report back that they are using the book precisely as we intended: First, as a learning tool to expose them to criminal procedure doctrine. And, then as a desk reference to help them navigate the early years of practice as defense attorneys or prosecutors.
As a learning tool, Learning Criminal Procedure eschews the traditional method of law school teaching, which asks students to read cases and then derive the law by parsing through the court’s decisions. Instead, the book presents the applicable legal rule to the students in the very first section of each chapter. The next section uses case summaries to explore the scope and policy behind the rule. The book takes this approach because it frees up class time for you and your students—instead of guiding them through the cases to eventually arrive at the rule, you can start with the rule and then use the text in class to engage students with the doctrine in the many ways students will see the doctrine deployed in practice. For example, when teaching students about Terry’s stop-and-frisk doctrine, you might first work through each of the review problems that we present at the end of each chapter, allowing students to immediately apply the knowledge they have learned and use the law as a practitioner would. After you have a sense that students have a preliminary grasp on the material, you can then do a deeper dive. For example, you might explore one of the simulations mapped out in the Teacher’s Manual and require your students to use their newly acquired knowledge in the dynamic environment of role play.
As a desk reference, your students can use the book to refresh their knowledge and inform their thinking after they have moved out into practice. The book’s clear organization and direct approach to presenting the law make it easy for new lawyers to refer back to the book when they have a specific legal question. Indeed, former students routinely report back that the book has been essential to them as they bridge the gap between law school and the early years of practice. Just the other day, a former student reported that his first draft of a response to a suppression motion had been adopted with few changes by the supervising attorney at the state prosecutor’s office. “Your book was essential to that draft,” the student said. Mission accomplished.
Tuesday, November 08, 2016
Law School Election Night Blogs
This year at least three law schools are holding Election Night events to watch returns come in and provide election law commentary. I'm currently with 10-12 members of the UK Election Law Society, and students are blogging here (after I approve the posts). William & Mary law students are blogging here. And Ohio State's Election Law @ Moritz students and faculty are providing insights here.
These events are a great way to engage students in election law issues while also providing important commentary to the community. I'm proud that a few years ago some students formed the UK Election Law Society on their own, and the event tonight is largely student-driven. Please hop on over to the website throughout the evening!
Tuesday, November 01, 2016
Welcome to November and either the end of the republican experiment or just another election.
Our October election symposium will continue at least through Election Day and perhaps through November. Meanwhile, we welcome new November guests to the mix--Andrea Boyack (Washburn), Dave Fagundes (Houston), Tracy Pearl (Texas Tech), and Margaret Ryznar (Indiana-Indianapolis).
Enjoy the month.
Friday, September 30, 2016
Thanks to our September guests, who may be sticking around for a few extra days.
For October, we are going to try something different with our guest slate. With the election looming, we decided to do a month-long symposium, with expert guests writing about the election, election law, and related issues, such as what might happen after the election and in the new administration. I am happy to introduce Josh Douglas (Kentucky), Ned Foley (Ohio State-Moritz), Lisa Manheim (Washington), Michael Morley (Barry), Bertrall Ross (Berkeley) and Franita Tolson (Florida State). They will be with us for October and perhaps through to the election in early November.
We look forward to a great, and unique, month of posts, from our guests and our regular bloggers.
Monday, September 05, 2016
Blowin' Down the Road
I had good intentions to post a few more times, but Hurricane Hermine had other plans. And so it goes. But I'm glad that Prawfs provided a platform for my live-blogging experiment from the Intellectual Property Scholars Conference at Stanford. I hoped for a bigger turnout, but a few dedicated souls shared some wonderful summaries of fascinating scholarship. Perhaps I'll try again next year. If you have clever ideas to encourage more scholars attending multi-track conferences to live-blog or tweet the panels they attend, please share your ideas in the comments.
In the meantime, I'm thankful that Hermine only landed a glancing blow on funky Tallahassee, and that family, friends, and community members made the experience bearable. Hermine may spend more time in the North Atlantic, so I hope my northern colleagues stay safe.
Until next time!
Thursday, September 01, 2016
What to expect this month
Since my modest reputation doesn't usually precede me by very far, please let me introduce myself a bit. I am starting my third year as an assistant professor at Howard University School of Law, where I teach contracts, consumer financial law, bankruptcy and commercial law classes. I write primarily about bankruptcy issues. This month, I intend to primarily blog about the business of higher education. To get a flavor of what I intend to write about, you can check out my earlier blog posts and my forthcoming article on the topic. But I also intend to use this platform to highlight interesting scholarship by other commercial law/bankruptcy folks and to note interesting developments in the consumer law or contracts law spaces.
Thanks to everyone at Prawfs for having me this month! I'm excited to contribute to the community, instead of just obsessing over the submission angsting threads.
Thanks to our August guests, who may be sticking around for a few more days.
And welcome to our September guests--Matthew Bruckner (Howard), Jennifer Bard (Dean at Cincinnati), Jeffrey Lipshaw (Suffolk), Jack Preis (Richmond), and Ari Waldman (New York Law).
Wednesday, August 31, 2016
Bard Signing In
Let me start my third visit to Prawfs Blog with warm thanks to Howard Wasserman and to my fellow bloggers for the work they have done keeping this forum going. As the public information about Professor Markel’s murder becomes increasingly lurid, I’d rather focus on his work than on the circumstances of his tragic death. And from the beginning his work on this blog was to provide legal academics a forum to talk to each-other about matters of interest to them—whether it was highlighting a new study, commenting on a case or talking about legal academe.
As a brief self introduction, I’m starting my second year as the very proud dean of the absolutely amazing University of Cincinnati College of Law. Every day I hear something about what one of our faculty, alumni, staff or students are doing and I’m proud to have a role in sustaining the framework that allows these things to happen at our historic law school. So I’m going to talk about legal education. But as an engaged health law academic specializing in ethical issues in public health, the unchecked spread of Zika in the United States is also going to be a topic of discussion. Thank you for having me. It is a real honor to be included.
Posted by Jennifer Bard on August 31, 2016 at 09:37 PM in Article Spotlight, Blogging, Culture, Current Affairs, Dan Markel, Howard Wasserman, Information and Technology, Life of Law Schools, Lipshaw | Permalink
Wednesday, August 24, 2016
Hear, hear--Blogging Edition
Update: One more on where blogs have gone over their fifteen years of life.
Friday, August 12, 2016
Patent Doctrine (& Copyrightable) Subject Matter - IPSC 2016
Patent Doctrine (& Copyrightable) Subject Matter - IPSC 2016
Guest Post by Andres Sawicki, U. Miami
Are Engineered Genetic Sequences Copyrightable?: The U.S. Copyright Office Addresses a Matter of First Impression – Chris Holman, Claes Gustafsson& Andrew Torrance
Data-Generated Patents, Eligibility, & Information Flow –Brenda Simon
Inventive Application, Legal Transplants, Pre-Funk, and Judicial Policymaking –Josh Sarnoff
The Impact on Investment in Research and Development of the Supreme Court’s Eligibility Decisions – David Taylor
The Fallacy of Mayo’s Double Invention Requirement for Patenting of Scientific Discoveries – Peter Menell &Jeffrey Lefstin
Holman, Gustaffson, & Torrance—Are Engineered Sequences Copyrightable?: The U.S. Copyright Office Addresses a Matter of First Impression
Holman: Couple years ago, talked about why engineered DNA should be copyrightable. Big conceptual leap was extending c to software, so going to DNA no big deal. A lot of people have made this argument. Irving Kayton around the time when software was deemed copyrightable was shocked, perplexed when asked whether DNA should be too. And then wrote that it should be copyrightable. Drew Endy—synthentic biologist at Stanford—anyone who is involved in synthetic biology can’t understand why you can’t copyright genetic code. Holman worked with founders of DNA 2.0. It’s like Microsoft saying they sell plastic because they sell DVDs with software on it—DNA 2.0 doesn’t sell DNA, they sell the content encoded in it.
Holman and Torrance got the Prancer sequence from DNA 2.0 and submitted registration request to Copyright Office in July 2012. Received generic form rejection in August 2012. In November 2012, submitted appeal requesting reconsideration. Took 14 months until they heard from Director of Copyright Policy, apologizing for delay saying it’s a matter of first impression and an important issue. Director ultimately rejected registration with six reasons. Holman going to refute each.
Main argument from Copyright Office is that engineered sequences don’t fall with statutorily enumerated category. But statute uses “include” and legislative history shows the list is illustrative and not limitative. A lot of this came up in Bikram yoga case too. Nimmer similarly says if something is sufficiently analogous to existing subject matter, it should fit. Goldstein makes similar points, citing House Report.
Copyright Office says Congress amended statute to include software. Holman & Torrance draw analogy between software and genetic code. Amendment introduced limitations on software copyright, and defined computer programs. The CONTU report form 1979 is the basis for why Congress believed that software is copyrightable. Conclusion of report was that no legislative change required to make software copyrightable because it already was. Compare to architectural works amendment, which did add category. CONTU report was policy-based: large investment to create, cheap to copy, needs IP. Same applies to engineered DNA. History, in 1960s, Copyright Office took position software not copyrightable, but led to rule of doubt.
Office also said we can’t do prior art search. But Office doesn’t do searches for anything. Plus, it had no ability back in the 1960s with software. And it should be incumbent on Office to develop capacity.
Office also said no overlapping copyright and patent protection. But Oracle v Google and JEM v Pioneer to the contrary.
Office also said 102(b). But engineered DNA can be protected without violating 102(b).
Functionality arg. But so are copyrightable software programs, which don’t need artistic expression.
Bias against copyrightable expression in a biological system.
Q: Agree with first premise that software can be covered by both copyright and patent. But disagree with ultimate arg, and Oracle is mistaken. You can’t protect functional things under copyright. Software was done for anti-piracy benefits. CONTU retained idea-expression dichotomy. You can protect code, but not underlying functionality. Can you do that for DNA?
A: Yes, lots of redundancy in DNA.
Q: Oh so you can use junk code?
A: It’s not junk. There are an astronomical number of ways of coding for a protein.
Q: So if someone were to take our code for fluorescent protein and reverse engineer, you can prevent piracy of your version, but not their reverse engineered effort.
A: That’s exactly right. There is merger analysis and inoperability and a bunch of things you can import from software. The advantage over patent—imagine these in PAE hands. A troll asserted fluorescent protein patent. DNA 2.0 doesn’t want to prevent others from using function. They just want to prevent piracy.
Church wrote book in English letters and in DNA. So you can use DNA to encode English language.
Q: Why is life plus 70 the right regime?
A: I think it should be shorter, but I still think it’s not so bad because scope of protection isn’t terrible.
Q: Analogy to software a great start, but need to talk more about merger discussions. The premise was that if you can’t implement functionality another way, no protection. For the moment, we don’t know how to code DNA functionality multiple ways. What are the implications of locking up DNA code?
A: Think about Monstano—a farmer saving seeds. That’s piracy. They aren’t changing the code. But, if you have another company with a lab that does same function with different code, that should be permitted. For a small protein, because there are multiple ways to code, if you tried to make the identical protein, there are so many redundancies, if you make one code, there isn’t enough matter in universe to make all possible versions of that function.
Q: In software, I started my career talking about tailoring for software. I think software is a different animal because of functionality and interoperability. I think you’d be better off following a hybrid or sui generis proposal like semiconductor. If industry wants to support you, they might be able to get it. It’s just DNA is not close enough to other copyrightable stuff aside from software.
A: Yeah, when I got the rejection from the Office, DNA 2.0 didn’t want to appeal to federal court. But we are getting a lot of interest from lawyers who are pushing for these kinds of cases. And yeah, I agree that semiconductors and other countries’ fashion design protections might be a better model.
Simon—Data-Generating Patents, Eligibility, and Information Flow
Simon: I’ll discuss intersection of patent eligibility and info flow. Sup Ct has expressed concern about patent exclusivity impeding flow of info. Sichelman and I introduced idea of patents that generate data. They are patents that by design generate valuable data. Will talk about Sup Ct language reflecting info-flow concerns. Will discuss whether those decisions express concern not only about downstream tech, but also downstream data. Will also talk about unintended consequences of restricting eligibility.
Examples of data-generating patents. Genetic testing, sleep trackers, heart-rate monitors. True, ordinary use of patented inventions might generate data about ways to improve the design of that invention—e.g., garden hose. Data-generating patents different because data about users or world itself distinct from information about the patented invention. When these patents are issued, might create market power over not only invention, but data as well. Unlike trade secret law that has safeguards like reverse engineering or independent discovery. Tech advances in big data era have made this protection even more valuable.
Sup Ct decisions have expressed concern about some patents impeding flow of info. Karshtedt has a nice paper on Breyer’s parallels between copyright and patent. In Mayo, Breyer pointed to possibility that exclusivity might impede flow of info, and provided some examples. Raising price of using ideas. Cost of searching. Costly licensing agreements. Court later describes ways that patents on laws of nature can impede technology on later discovered features of metabolites, and individual patient characteristics. This latter stuff is something that the patent holder may have exclusive access to because of its data-generating patent.
AMP v. Myriad denied patentability to naturally-occurring genes and the info they encode. Thomas referred back to Mayo, balance between incentives and impeding info flow. Emphasizing info flow characteristics may show court’s concern with patentee leveraging patent exclusivity to exercise power over data gathered as a result of its patent. Myriad refuses to contribute patient data to public databases. That means competitors have limited data to use for their own research. Myriad reaped a bunch of lead-time advantages.
Final decision is Breyer’s LabCorp dissent from cert dismissal. Even way back in 2006, three Justices were commenting that patents can restrict flow of information. Also note that more recent case—Bilski—used similar language. Methods of hedging risk unpatentable. Stevens concurrence cited LabCorp and expressed concern with “Information Age” issues. Patent on foundational technology—sequencing or internet search—that provides for preclusive effect can prevent competitors from generating or accessing data.
Typically, concerns about info flow in patent seem puzzling. Disclosure is the quid pro quo, although we can argue about how effective it is. Data-generating patents raise a distinct issue—the patent allows for the generation of data that is then protected via trade secret.
Primary factor for determining whether they restrict info flow is whether they have a preemptive effect on marketplace competition for data. Contact lens with info about diabetes wouldn’t have preemptive effect because there are other ways to get the info about diabetes. May be problematic from ethical or privacy perspective, but not from info flow perspective.
Unintended consequences. Even if we can narrowly tailor restrictions, we have a problem that we will reduce disclosure overall because inventors will keep these inventions as trade secrets. Maybe we can counterbalance by imposing some data disclosure requirements. Might need some data exclusivity period to ensure that incentives are maintained. Prizes and rewards and sui generis protection possible too.
Q: Will this be industry-specific? Could imagine in software or electronics patents, the data re sales, usage, etc would be valuable in the same way that patient data might be valuable, so unless you want all of the data, you will have to limit by industry.
A: Most concerning patents at first blush are medical for public health reasons. But some of the data you are talking about, there’s a little bit of a blur. Imagine a deep brain stimulator measuring information from consumers. Is that commercial data? For some of these implementable devices or similar things like fitbit—how many hours of sleep you get—how much of that is health data? I would hesitate to implement strong industry-specific limitations. I would focus on preemptive character.
Q: To extent you identify a different class of invention, maybe there is an enablement angle. Maybe some of the data has to be accessible? That would need a significant rethinking of enablement, but it suggests that the standard might be different by data-generating patents.
A: But we’d have to dramatically change enablement requirement because it’s set at time of filing. Some have proposed something like this—maybe at time of maintenance fees. I can only imagine can of worms. It’s an interesting suggestion though.
Q: Can make the case that a lot of data wouldn’t be generated at all. Myriad a great example. Patients’ complaint was that medical community said patients shouldn’t be able to look at their own data.
A: Ted and I wrote a bit about prospect theory and coordination considerations. I think the conclusion to draw from this is that information flow concerns might be undercut by overly limiting patentable subject matters.
Inventive Application, Legal Transplants, Pre-Funk, and Judicial Policymaking –Josh Sarnoff
Sarnoff: Lefstin has a very good and thorough discussion of Neilson. Established line between principles in the abstract, which weren’t patentable, and applications, which were patentable. I think Lefstin does a great job of explaining that this is a practical application. From brief, legislative record says no inventive application hurdle. Not sure I agree. Might be overstated, especially with respect to composition of matter. LeRoy and O’Reilly. O’Reilly in particular brings Neilson to US. Two years before these cases was Hotchkiss,
which had human creativity and ingenuity requirement. So question is what do we do with the discovery itself—is that part of the creativity or not? My view is that when the dicta comes to US, we have the inventive application requirement.
I don’t think the true origin of inventive application is Funk Bros. I think Jeff does great job with 1952 Act legislative history, which decided not to overturn Funk. So if that case was inventive application, it would still be the law post-1952. Cases shortly after the Act made clear they understood inventive application is part of the law. Question whether it’s a good thing. And Congress didn’t eliminate ability of courts to modify law, subject to one constraint.
Flook relied on Funk too. Congress hasn’t reputed Funk. Should courts repudiate inventive application? I argued before, Ansonia Brass has the non-analogous use requirement, Reisenfeld said it too; non-analogous use is there for a good reason. We don’t want to lock up what the previous world of human inventions has given us. We want creative advances. There are earlier strains on non-analogous uses. Robinson and Leck say discovery of what nature can do is good, but lock up with patent rights only things that nature doesn’t itself do. Non-analogous things of what nature does. If new use is inventive in the other sense, it is non-obvious.
Why should we care? Mostly non-utilitarian moral views from 18th century. McCleod says this is God’s gift and locking up is a moral sin. Lockean view that we owe equal concern for each other. I think this is a better way to put it. Science itself shouldn’t be protected by patent rights. We can allow patents for inventive applications that aren’t just the world itself. If there are applications that allow you to effectively lock up the natural thing, then just do away with restriction on locking up natural thing.
Comparative perspective—scientific results are the common property of all mankind.
Prior art treatment dicta are followed, inventive application is required. Courts remain free to establish eligibility rules regarding applications of nature according to best policy.
Q: Under your view, you give Morse a claim—why not recognize that a lot of this area is overclaiming, and that was something potentially at issue in Neilson. Having a practical application is good. When you have a scientific law or principle, implicit in that is some fairly substantial scientific advance. What we don’t have is when is a discovery eligible?
A: If we’re gonna allow non-practical application, we might as well allow patenting discovery. If that stuff should be free for all to use, then granting a limited application just because you were the first makes no sense. If you can write the seventeen applications, that makes no sense too.
Q: Does statute matter at all? Two points. At time of Funk, for many authors, ingenuity was tied to [didn’t catch this]? How do we deal with Federico, finding a new property of a substance is ok—why?
A: You still had to have a non-analogous use. In terms of statute, it matters as a presumption. Once you recognize Funk was the law, Congress didn’t reverse, courts after
recognize it, then the answer is the law. Since then, other courts have played around and changed it. Now the Supreme Court is changing too. If you care about fidelity to 1952, fine. But I think Congress left it open in 1952. Didn’t change it but also didn’t prevent changes. Only question if there is a constitutional constraint on treatment of scientific discoveries. I don’t think Court will go there, esp post Eldred, but there’s a non-frivolous argument.
Q: Court has tended to lump all the excluded categories together. And Mayo suggests it doesn’t matter how narrow or specific your principle is.
A: Science and nature is pre-existing. Abstract ideas—we have no idea what that means. I view it as some abstract ideas are fundamental to how the world works. I am more sympathetic to smaller things that should be treated as human creativity. But we have no theory of abstract ideas so it’s a total mess. Still doesn’t tell you most important question—what level of incremental creativity, which requires some theory of difference. If we went to invention, we would have some theory. That’s something courts can build over time. Preemption makes no sense. I think Breyer has made a hash of the law. I would rather see us fund scientific discovery through taxes, but who knows.
The Impact on Investment in Research and Development of the Supreme Court’s Eligibility Decisions – David Taylor
Taylor: Haven’t done the empirical work on this yet, but just getting started. Interested in impact of 101 on R&D. We all know the two-part test. Caveat that I am reporter for AIPLA 101 task force, and this doesn’t represent their views. But lots of people view the current test as bad and are thinking about going to Congress. Would be nice to have data about extent to which Court’s decisions have impacted investment. I want to study that by surveying VC to test hypotheses. First hypo: four recent decisions have impacted decisions. Second: Impact significant. Third: Impact negative.
Want to look at diverse firms at various stages of VC funding and tech areas. Two types of questions. Have Court decisions impacted, including knowledge of decisions. And then indirectly without mentioning decisions, how has decision-making changed over time. I want database of VC firms from 2016 and from 2009. Plan to ask about activities from 2006-15. Survey only about US.
Some ideas. “In your opinion” questions about effect of patents on investment in invention and marketing. Meat of survey—on the left are tech areas and then effect on each area. Next question is on effect on each industry area. Are they aware of the decisions by name. Effects of particular cases on financing. How much, which decisions, and what has impact been—direction, tech, and industry. Between which tech areas—out of which and into which. Some broad questions about type of financing in time period. Then, if willing, amount of money invested by year. Want to go to 2006 to get behind Fed Circ Bilski decision. Can also look at size of investor.
Where it gets difficult and ugly is to ask particular questions about type of tech are by percentage by year. And then more complicated by industry. That’s it.
Q: Useful to get more granular to ask about whether decisions change to ability to get patent, changes to likelihood of getting sued, and then changes to uncertainty?
A: I like that. Especially the question about uncertainty.
Q: A question to get a bead on—decision of VC to fund a company is hugely complex. Questions to get directly at that? How do patent eligibility cases affect your decisions?
A: Maybe ask some sorting or ranking of factors about relevant importance?
Q: I’d change order of questions. You raise salience of decisions at the outset. I’d ask questions about investments first. And make them coarser so your response rate goes up. And then you will want to bury salience of eligibility. Also, you should do a five-point scale rather than three-point.
A: Great. Thanks.
Q: Narrow point—is patent protection important at all? And why? Often hear that it is part of an exit strategy. Broader question—why should we care? Real question is substitution effects. Ask legislators if they are going to change funding decisions in response.
A: Also why limit to patents?
Q: That’s my question too. Ask about non-patent appropriability mechanisms. For the people who answer no, this isn’t important to me. Question if that’s because they have substitutes available.
Q: You can still ask patent-specific questions, just do it at the end, and don’t let them go back.
The Fallacy of Mayo’s Double Invention Requirement for Patenting of Scientific Discoveries – Peter Menell &Jeffrey Lefstin
Menell: Want to fully credit Josh for his influence on Mayo. This is unusual for me because I usually do normative work, but this is historical, and Jeff is great with that. So we are doing a historical, interpretive paper. We agree that biosciences is an area where patents have been relatively successful. Four points. First, not explicitly in brief, when you peel back layers of Mayo, you realize Josh wrote it. Second, we don’t have any briefing or cases on a key word in the statute: “discovers.” Then we’ll go to a couple of historical points.
One q I have come to appreciate, it would be amazing if Justices could figure out everything on their own. This idea of omniscience is under-addressed. But they are human. Opening brief and petitioner briefs, mostly short. Most influential was Josh’s. Then a bunch on either side, including the government, saying this patent is just garbage on 102 or 103, and leave it at that. When we get to the outcome, the Court got the language from Josh. He talks about the requirement of prior art treatment, from O’Reilly. I think it was a mistake, though.
I’ll talk about the statute. There is this word “discovers.” I was taught to start with text, then structure, and then go higher up if you like. It is in Constitution, and then in patent acts throughout the years carry the language. Order has changed, but we’ve had discoveries throughout. Then a finding from Senate Report in 1836, that talks about much has been discovered but much unrevealed, and the mysteries of nature unfolded. He was talking about science. So no question at beginning of industrial revolution we are talking about science. And then it’s not discussed until the Plant Patent Act of 1930.
Lefstin: Assuming we care about statutory text, if you go to legislative history, a lot of concern about whether discovery of plant was constitutionally patentable. The meaning of invent at time of Constitution included discovery. For Plant Patent Act, we get some examples of what it means to invent or discover. Includes finding a plant in your backyard. Why do we care? Because Congress uses utility patent statute as home for Plant Patent Act. It reads “invented or discovered.” Maybe text doesn’t matter. Or maybe conventional propagation was in first and second. Or maybe they mean different things in the two places it comes up in statute, which I don’t think is tenable. 1952 reports indicate no change. I am less convinced than Josh about Funk Bros implications—don’t think Congress knew about it.
Menell: Another great discovery. Credit Jeff for discovering true meaning of Morse case. He claimed all uses of electromagnetism. In doing so, they cite to hot blast cases. The language is we must treat the case as if the principle was well known. Why? Out of context, Stevens and Breyer are making a plausible interpretation, but it’s completely incorrect. They were using this to postulate that if this were the same as the Minter case, it would still fit within the category of a machine. Morse got it right—unlike Neilson, where all methods of pre-heating improved blast furnace, not all methods of electromagnetism communicate at a distance. Stevens found that same language out of context in Flook and said treat the algorithm as unknown. We forgot about this because Diehr, which we thought overruled it.
Then we get to Mayo. Quotes the same passage. The question was: did Neilson inventively apply pre-heating? Yes, says Breyer, here are the unconventional steps. Jeff points out that Neilson case rejects inventive application argument.
Jeff: Main challenge of Neilson was enablement problem.
Menell: Treating the principle as well-known was about whether this qualifies as a machine. Under the Minter case, which had to do with self-adjusting chair, they decided it was a machine. We wanted in Sequenom to realize they misread the case. If you look at district courts now, it’s a disaster. And Patent Office is worse. So now algorithms are no longer relevant to invention. Go ask Forsyth Hall people. Can’t do AI without algorithms. I would take view that let’s take software out. But I think we’re going to spend another decade chasing our tails with a dysfunctional system.
Q: Quick point. I totally agree with Jeff on discussion of English cases. Clearly, they didn’t understand language they were reporting. They didn’t have substantial novelty requirement. We had just gone to non-obviousness. Then what do we make of the import of the language into our system, which was different from the other system. Who knows? But we did build on it in a variety of ways. Point is Congress hasn’t adequately addressed. Courts
have gone back and forth, and it’s really an open question. Courts are free to enforce inventive application, Congress is free to get rid of it entirely.
A: If Court wants to adopt the rule, then that would be fine. But they have to deal with text. Yours was the only brief with any substance on this issue. There is no case dealing with “discovers.” There are people who think—I don’t think religion solves the problem. A lot of my students say E=mc2, but the annealing patent is just understanding the properties of copper.
Q: How much has to do with the loss of a real utility requirement in patent law? In terms of practical application, seems that we’re just talking about utility requirement. Why aren’t people pushing the reinvigoration of that doctrine? One of the old cases talked about practical utility. That gets rid of a lot of the abstract idea problems.
A: But that creates the problems of State Street. A useful Arts test with utility req might work. Even in Alice, there was concurring opinion that said Stevens was right. Court should’ve taken State Street. Unfortunately, Court isn’t selecting cases right. I’m really upset they took Apple v. Samsung on the wrong issue. And then they take the cheerleader case, which is much worse if you want to define functionality. They aren’t getting the right issues. Maybe there were other things about Sequenom that troubled them. We need to error correct. But I don’t think the Court will.
Industrial utility highlights for me that these are legislative determinations.
Q: Alex Kasner piece in Stanford is great. What did they mean by “discovery”? And he does a long historical analysis.
A: When I think about Sequenom, I am astounded that the Supreme Court didn’t want to take this on. It is a breakthrough. It is a woman’s health issue. I’ve been told by Ariosa representatives that the patent was poorly drafted. But why wouldn’t it make sense to at least say this is the kind of breakthrough that is eligible. I don’t see that the Court has a good grasp of how people will respond. Seems odd to say if you do Nobel quality research, you are ineligible.
Commons - IPSC 2016
Commons - Breakout Session IV - IPSC 2016
Licensing Open Government Data – Jyh-An Lee
The Romance of the Commons – Sean Pager
3d Bioprinting Patent Boundaries – Tabrez Ebrahim
The North American Mitochondrial Disease Consortium: An Emerging Knowledge Commons – Brett Frischmann & Katherine Strandburg
Licensing Open Government Data – Jyh-An Lee
Abstract: Governments around the world create and collect enormous amount of a wide range of data. For various policy reasons, open data has become a popular government practice and international movement in recent years. It is estimated that more than 250 national or local governments from around 50 developed and developing countries have launched open government data initiatives. Businesses have developed innovative applications, products, and services based on open government data. Open data policies have wide been recognized as a tool to foster government transparency and economic growth. Open data policy involves various legal issues. Among others, it is critically important for governments involved in the open data movement to devise a most appropriate legal way to release its data, and intellectual property (IP) licensing has been viewed as one of the main obstacles for governments’ open data releasing. Entrepreneurs may hesitate to use or re-use government data if there is no reliable licensing or clear legal arrangement. This Article focuses on legal issues associated with open government data licenses. Different government agencies with different policy goals have chosen different licensing terms to release their data. This Article compares current open data licenses and argues that licenses terms reflects policy considerations, which are quite different from those contemplated in business transactions or shared in typical commons communities. The licensing of government data also concerns some fundamental IP issues, which are not covered or analyzed in depth in current literature.
Victoria Stodden: Two questions about incrementalism - 1) What happens when someone applies a totally inappropriate license to data (share-alike, etc.)? 2) How do you cope with evolving / changing data sets?
A: 1) Compatability is the issue. For a creative common license, they can be interoperable. Some regions have taken account of compatibility in the license. But you are right that share-alike is not the most appropriate for government data licenses. In this paper, I argue that preventing commons from shrinking is not a policy goal, because the data is always there. 2) In regions that protect data, there is a danger that if you make a significant addition every year, you could protect data forever.
Sean Pager: <Couldn't hear Sean's question over some construction noise>
A: It's not easy to apply commercial concepts to a publicly funded database.
Brett Frischmann: In the U.S., there was a debate about needing to grant patent rights to incentivize universities to use information generated. Does that pop up in the public sector data context, like weather or traffic data? Do we need exclusive rights to incentivize use of the data?
A: One example, in the Netherlands, data generated about the city of Amsterdam has been made open access.
The Romance of the Commons – Sean Pager
I may be the anti-commons paper. I'm trying to push back on some rhetoric used by commons proponents in the copyright context that borders on magical thinking. Romantic commons theory is the opposite of romantic authorship, but ends up at the same dystopian endpoint. Romantic authorship critique: Copyright skeptics picked up a French deconstruction of the importance of authors. Copyright skeptics suggest that corporate entities usurp the benefits and use authors like a stalking horse to that end.
Now, the romantic commons critique engages in some of the same magical thinking about the Internet and its ability to suspend the gravity of economic and commercial reality. Authors are undervalued and under-rewarded, while powerful corporate entities take advantage of the primacy of free movement of information on the Internet to usurp profits while authors fail to benefit. But the romantic commons critique mistakes volume for quality. People still send money to acquire commercial, professional content. Beyond a certain scale, it is difficult to make creative content for free. The romantic commons critique also mistakes technology for talent: home computers that duplicate 20th century technology doesn't turn the owner of the tech into a valuable creator. There is abundant content, but not of sufficient scope and ambition made by people with sufficient talent. Failing to compensate authors and incentivize creativity leaves us in a situation where, like the Olympics in the early 20th century, the only one who can afford to train / create are the ones who are independently wealthy.
Annemarie Bridy: 1) Define copyright skeptic. 2) Are we undervaluing authors, or simply a certain type of author? You seem focused on a certain type of professional, commercial level author. Why?
Sean Pager: 1) I am responding in part to the logic in papers like Lemley - IP in a World with No Scarcity. That paper makes a number of the claims I'm directly critiquing. Diane Zimmerman, Eric Johnson - These are the copyright skeptics to whom I'm responding. 2) I think copyright needs to make allowances for non-professional authors, but I think the magic commons thinking undervalues professional level authorship.
Annemarie: You seem to be making a value judgment.
Sean: I am, measured economically, the money people are willing to spend.
Brett Frischmann / Victoria: Can you back that claim in aggregate value?
Sean: I'm thinking per work.
Victoria: If everyone were willing to part with 1/8 of a cent, frictionless, it might generate more money than fewer $5 tickets.
Brett: Are they necessarily mutually exclusive?
Sean: Not necessarily.
Mike Madison: Scholars who make your style of argument more powerfully - Jane Ginsburg, among others, are making an express value-based, ethical argument. They are making a desert argument that isn't captured by a value-based, economic argument. The economic argument you are making may not be supportable. You are saying the dynamics of the system aren't making the things we (should) value.\
Sean: I'm talking about the rhetoric, not the economics per se.
Brett: McKenna is working about ambiguity of normative ends. There are a variety of ways to construct the world: fully supported professional class. You may need to think through the tradeoffs, and it may be difficult to make strong claims. 2) I'm not sure this is "commons" - you are using a romantic version of commons that is convenient for you, but I don't know if this is commons.
Mike: It sounds like you are talking to John Perry Barlow in 1996. That's not commons.
Brett: We commons scholars don't talk about commons this way.
Jyh-An Lee: Is there another term that might work?
Mike: I don't know what it is.
3d Bioprinting Patent Boundaries – Tabrez Ebrahim
3d Printing is an additive form of printing objects. 3d Bioprinting is a means of printing biologic material (tissues, organs) using the same additive process. For example, you can take tissue from someone's genetic makeup and print a tissue or organ. A potential problem - this sounds like a human organism, and under patent law, you can't patent a human organism. My paper is aims to define the boundaries of patentability and patent scope, and to analyze the ethics and morality involved.
Even if human organisms are not patentable, method claims, for example, might be patentable. In Europe, there is a morality test for living organisms (Article 53(a)).
With regard to ethics / morals, I'm investigating, in part whether patent law does / should embody ethical values in addition to economic values.
Is 3D bioprinting different from and deserving greater scrutiny than 3D printing? Should it be regulated differently than 3D printing?
I make two proposals: 1) claims of 3D printing should be shourter to avoid overreacher. 2) patent law should develop ethical limits, perhaps an "ethical PHOSITA (person having ordinary skill in the art), and perhaps the PTO should hire examiners with an ethical background.
One potential patentable claim: a Beauregard claim structure to claim what is printed in an electronic CAD file (storage medium). Are there limits when there are biologic elements? Is this "abstract material," post Alice? Is this a type of manufacture, or just abstract data?
I propose limiting the duration of the patent if we patent it, to enable quicker access. We might also consider regulatory limits on what can be marketed, although still patented.
Brett: Say more about ethical PHOSITAs.
Tabrez: I claim that there are ethical norms embedded, but not clearly defined, and we should clarify the ethics. There should be a morality inquiry regarding the PHOSITA.
Sapna Kumar: From an institutional design perspective, the PTO doesn't show any talent for ethical judgment. The FDA, on the other hand, is an entity that makes ethical judgments. Why not the FDA?
Jyh-An: When you say "needs more scrutiny," what needs more scrutiny?
Tabrez: Patentable subject matter - we should be making an ethical inquiry.
Mike: Deven Desai has been doing the most interesting big-picture examination of 3d printing technologies generally. His view is that 3d technology heralds the cusp of another industrial revolution - 3d printing is the steam. By raising the ethical implications of mechanical production and bioethics, you are adding something to the big picture. You have the introduction to a really interesting project, if you think beyond the technical questions for a certain subset of patents, and think broader about the intersection of 3d printing, health law, and ethics.
Brett: I find the patentability of this technology least interesting, and ethical, moral, and regulatory questions more interesting. In these sorts of fields, its often all about the upside. It's hard for me to know what the downsides are. Classifying and describing the downsides of what we do and don't know would be useful from an ethical / regulatory perspective. That's where I want to see you go.
Governing Medical Commons – Mike Madison, Brett Frischmann & Katherine Strandburg
This is a descriptive project. Knowledge commons = knowledge and information sharing institutions. The knowledge commons framework is a template for empirical research. We are trying to untangle empirical questions about tragic commons, scarcity, and abundance questions. We are looking at the institutions that try to solve knowledge and information production and distribution questions, coordination of researchers, preservation of information, etc. We are trying to capture what's actually going on, over time, systematically. We argue that collective action to solve these collective action dilemmas is 1) possible 2) without state intervention or strong IP rights. We are inspired by Elinor Ostrom's Instututional Analysis framework.
Our first book, Governing Knowledge Commons, collects case studies on how knowledge commons are working. Our new book takes the same research framework looking at a more specific framework, Governing Medical Commons. We'll probably focus domain by domain in the future.
What have we learned so far? No strong conclusions, but here are the headline takeaways: 1) knowledge commons may confront diverse obstacles / social dilemmas, which are not as simple as the free rider / tragic commons binary. 2) Knowledge commons operate / are nested within other complex systems. 3) Knowledge commons often depend on shared infrastructure. 4) Informal governance institutions, including trusted leadership, often play key roles. 5) Commons seem to play an important role in early stages of some industries. 6) There are many and complex motivations for individual participants.
In the medical commons context, we see the same things, but here are a few specific insights: 1) clustering and nesting - we see supply side, demand side, and infrastructural commons. 2) Data curation and coordination problems become clear. 3) Trusted leadership becomes critical. Social hierarchies continue to play a role - not clearly egalitarian systems. 4) Commons, esp. in this context, doesn't mean the absence of state intervention.
Jyh-An: What's unique about medical commons?
Mike: It's hard to say in the abstract. This is our first domain specific book. But we chose medicine first in part because Brett and Kathy conducted an early case study in a medical area. Many scholars were engaging in relevant research in health and biotech. It's hard to say that knowledge commons are dominant / particularly salient in medicine. I want to do research into education knowledge commons. Michael Burstein is interested in entrepreneur knowledge commons. Then we can start explaining how different knowledge commons are distinctive, if they are.
Amy Kapczynski: It may be interesting to ask, for example, how communities handle disputes. And it may be value to import this to conventional IP regimes / thinking.
Mike: Ostrom's design principles are curious, because they seem more like rules and guidelines. We spend 6-7 years trying to figure out how to do Ostrom-like inquiry that was flexible enough to investigate what we want to. It is important to think about porting into standard IP literature, and also information science people / IS community. Political scientists, institutional economists, are asking similar questions.
The North American Mitochondrial Disease Consortium: An Emerging Knowledge Commons – Brett Frischmann & Katherine Strandburg
To respond to Amy's last question, we've looked at dispute resolution. For some knowledge commons, it ends up being unimportant.
Amy: We made need more systematic inquiry into dispute resolution. Some case studies get at it, and some don't.
Brett: Ostrom's design principles arose from 30 years of case studies. We need to cast a broad net as we figure out how to get at what we want to know.
Our latest case study looks at another rare disease and a consortium looking at how to treat the disease. Rare disease researchers face challenges - they are treating a relatively small community, and information sharing and coordination is a critical issue. They want drugs / pharma, but you need data to attract pharma, so you need cooperation from a small community of patients and researchers. The consortium we studied, NAMDC, is a nested commons. The network and the consortium within the network is a good test bed for our framework and methodology.
A nested commons is various consortia that share protocols and research ideas at the macro level, and we zoom in on one member of these Rare Disease Consortia. The consortium we looked at has different members of the commons that belong to different institutions, like NIH, Pharma companies, and clinical research sites. And you can zoom in on a clinical research site like a hospital, and find another commons - different researchers, patients, families, and etc.
Main objectives for RDCRCs: 1) Creating pool of research subjects / patient data; 2) sustain / grow community 3) promote knowledge sharing among members of community, and to outsiders; 4) cooperate with patients in setting research agenda priorities; 5) translating research into treatment.
Consortia are complex environments. Researchers hope that solving mitochondrial disease may actually provide information that helps with other treatment.
In applying the knowledge commons framework to our study of this commons, we focused on seven "action areas", grouped in three categories: 1) Creating / sustaining collaborative research community 2) developing / managing shared pool of research subjects / patient data / biological specimens; and 3) managing relationships with pre-existing mitochondrial disease organizations. NAMDC is a new organization facing two challenges - a) treating patients, and dealing with the diagnostic dilemma - how best to treat patients when you have little data and b) developing a community and governance institutions. This lets us see an early history of a knowledge commons.
Two problems manifest: research criteria is sometimes too strict, and sometimes there are data entry problems and conflicting opinions about how to code data received.
Sean Pager: A law question / datapoint. A researcher had a relationship with a group of patients, in a quasi-contractual relationship with patients. When the researcher left, the university kept the data, and a court concluded the university could do so, despite patient displeasure, and patient understanding that their relationship was with the researcher. Are these consortiums thinking about the ownership question?
Brett: Interesting question.
Mike: Data ownership is the undiscovered country w/r/t university research. Despite the facts there are massive amounts of data generated, stored, and used, the lack of attention at all to basic law / governance questions is striking.
Victoria: Or everyone assumes they own it.
Brett: Not held as a trade secret.
Annemarie: My husband works in this field, and there are many collective action / coordination problems.
Brett: NAMDC owns / restricts access to data. Data is deposited at multiple institutions.
Victoria: Participants say they want their data to be open, but standard informed consent principles seem to cut in the other direction.
Brett: There is a data use policy. If you are a NAMDC researcher, you can get access, buy you have to have your research project approved. Universities haven't asserted ownership to date. The NIH grants anonymized public access after five years. And I'm not seeing that patients in this research consortium about open access as much as privacy.
Yvette Liebesman: Some members of these communities are willing to take greater risks.
Amy: If hacking data is a crime, you do own data. People can't use property, so they are trying to use contract to govern data, which functionally works a lot like property. Contract does allow for some control over third parties.
Mike: Who the "my" is in "my data" is a complicated question, between patients, researchers, and the university.
Thursday, August 11, 2016
IP, The Constitution, and the Courts - IPSC 2016
IPSC 2016 - Breakout Session III - IP, The Constitution, and the Courts
Lexmark and the Holding Dicta Distinction – Andrew Michaels
Established Rights, the Takings Clause, and Patent Law – Jason Rantanen
A Free Speech Right to Trademark Protection? – Lisa Ramsey
Lexmark and the Holding Dicta Distinction – Andrew Michaels
How do we distinguish dicta from holding? This project uses the Federal Circuit's dispute in Lexmark (on remand) over the breadth of the holding in Quanta. As Paul Gugliuzza summarized it for me (I was a late arriver), Michael's argument is that, rather than treating holding/dicta as a binary distinction, we should envision a spectrum of the types of things that courts say in their opinions.
A spectrum approach to holding v. dicta might helpfully restrict courts. If a holding says "No red convertibles in the park", we might worry about a case where a subsequent court says the opinion requires a holding of no vehicles in the park. They are not unrelated, but perhaps still dicta. Broader statements should have less capacity to bind than narrower holdings.
Jason Rantanen: This is interesting. We often see doctrinal pronouncement in Federal Circuit's case, much broader than necessary to decide the case. We also see language from earlier court opinions that are clearly dicta. Panels in the Federal Circuit nevertheless use it later. I wonder, however, whether we should take into account how the court is using the language. For example, do we bind the court to holding language only, or might they be appealing to the persuasiveness of early reasoning. Your spectrum focuses on text as it appears in the early opinion, but is that too narrow? Can dicta apply?
Andrew - Sometimes dicta is well considered. But if the court pretends it's a holding, and acts as if it is bound, then they are failing to adjudicate the dispute, and that's a problem.
Paul Gugliuzza - I think the Federal Circuit may engage in some over-use of dicta. Is there a prescriptive payoff to this spectrum? How does the court determine whether to follow the statement or not?
Andrew - The payoff is to require courts to deal more directly with the question of dicta.
Pam Samuelson - I think it's interesting when dicta becomes a holding, over time, and solves a problem. For example, the 3rd Circuit (Whelan) case had a lot of broad dicta that led to a lot of litigation. But the 2d Circuit also included a lot of dicta in Computer Assocs. v. Altai, and the dicta from the that case seems to have knocked out Whelan, and been followed, correctly from Pam's view, in many other circuits.
A subsequent observation from Paul: I think the spectrum provides an interesting descriptive contribution, but I wonder whether, instead of arguing whether a statement is holding or dicta, we'd just end up arguing about (1) where on the spectrum a particular statement falls and (2) whether, given its location on the spectrum, it's binding law or not.
A Problem of Subject Matter: Patent Demand Letters and the Federal Circuit’s Jurisdiction – Charles Duan & Kerry Sheehan
States are passing laws designed to cabin patent demand letters. We might presume that the Federal Circuit has primacy, but this paper argues the question isn't so cut and dried. The Supreme Court, in a case about attorney malpractice, held that there should be a balance struck between the interests of the federal courts and the state's consumer protection laws.
In a demand letter case, we could ask whether 1) this raises a sufficient issue of federal patent law, and 2) is the law unconstitutional or improper. To understand the second question, look to the Federal Circuit's Globetrotter case. The patent holder threatened to send letters to the defendant's clients. The defendants sued for tortious interference, and Fed. Cir. held that the Patent Act preempted acts that prevent sending demand letters.
We argue there is an odd disconnect in the Federal Circuit's analysis. It's a mistake that makes the Federal Circuit's jurisdiction appear larger than it is.
What is the right policy outcome? Should the Federal Circuit have primacy here? The uniformity issues that inspired the creation of the Federal Circuit doesn't necessarily reach every case that touches on patent law, and perhaps these demand letter cases are outside the needs of the uniformity requirement.
Jake Linford: I'm unclear on where the line is between the stuff the Federal Circuit controls and the stuff it doesn't. It sounds circular to me. Help me understand.
Charles: The Supreme Court doesn't take the view that the Federal Circuit is the final arbiter of all patent issues. The Christensen and Gund cases are examples where the Supreme Court put the responsibility with the Seventh Circuit and Texas courts respectively. Questions of validity of the patent may go to the Federal Circuit, but not claims about a clearly invalid patent.
Lisa Ramsey: One of the reasons this is so important is because people will get different results before a state court than the Federal Circuit. Is that right?
Charles: It's unclear. If we sort some cases for the Federal Circuit and others for the states, we might get divergent outcomes.
Pam Samuelson: How does the issue of validity of the patent get to the Federal Circuit if the case starts in state courts?
Charles: Removal is the mechanism.
Pam: If so, then how do we take the ability of the Federal Circuit away? If the Federal Circuit decides whether it has jurisdiction...
Charles: Perhaps the Supreme Court takes cert?
Paul Gugliuzza: What triggers the arising under jurisdiction of the patent clause? Isn't this a matter of patent jurisdiction?
Charles: I'm not sure this meets the Constitutional language...
Paul: The Federal Circuit may rely on Globetrotter, even if I disagree with them.
Paul Gugliuzza sent me the following summary of the Duan - Sheehan paper, which I find much better than my own:
Established Rights, the Takings Clause, and Patent Law – Jason Rantanen
Recent arguments have suggested that when patent laws change, the takings clause may be implicated. I wanted to understand the analytical reasoning behind the takings claim. Takings case law is a deep, Alice-in-Wonderland rabbit hole. How does it actually apply to patent law?
1) Jason agrees that patents are property subject to takings clause. (The Federal Circuit said no, in Zoltec, when the government infringes the patent. The Supreme Court, instead, suggested in dicta in the raisin takings case, that patents are the type of property subject to the takings clause)
2) But it's inappropriate to cut and paste takings case law to patent cases. Patents aren't like rights in real property. We know what a takings of a coal mind looks like. Patents aren't the same. In addition, one key right "taken" is the right to use, and the patent holder doesn't lose the right to use, only the right to exclude or alienate. So application of standard takings cases is difficult.
3) The question is instead whether the new law changes or destroys an "established property right" in the patent. That's the taking, if there is one. What's an established property right? The type associated with property, established with a high degree of legal certainty. See, for example, the Penn Central case, where the Supreme Court is looking for certain rights. If we are looking for high degree of legal certainty, many aspects of patent law has changed significantly and frequently over time. Patent has replaced the entire statutory framework at least four times, with only very minor exceptions. For example, when Congress passed the 1836 Patent Act, it replaced the prior act, and also applied the new act to pending litigation. There are many similarities, but this is a new draft. Same with the 1952 Act: "It shall apply to unexpired patents." Damages changed dramatically, as summarized in Halo v. Pulse. Patent owners used to get treble damages automatically, and they don't anymore. Patent holders in 1836 lost that right while claims were pending.
Lisa Ramsey: One argument against cancellation in the Redskins case is takings.
Jason Rantanen: The Redskins case considers whether the right was valid in the first place, which falls outside of standard takings analysis.
Camilla Hrdy: You may want to consider why the Supreme Court has held a trade secret can be taken. If so, why not a patent?
A Free Speech Right to Trademark Protection? – Lisa Ramsey
The Federal Circuit recently held that the 2(a) bar against registering disparaging trademarks is unconstitutional. Lisa's paper aims to make two unique contributions to literature on disparaging trademarks and the First Amendment:
- Is there a right under international treaties to be able to register a disparaging or scandalous trademark? The answer is no.
- A framework of six elements that should be applied in deciding whether laws against offensive trademarks run afoul of free speech rights.
The U.S. is not the only country that bans registration of scandalous marks. Canada even bans use.
We are members of the Paris Convention, which gives signees the discretion to decide whether to deny a registration on the grounds that a mark is contrary to morality or public order.
Lisa's framework (and 2(a) seems to meet most of these conditions):
- Is there government action? Who regulates the expression?
- Suppression, punishment, or harm: How does the regulation harm expression? Are there unconstitutional conditions imposed on speakers by denying the benefit? Lisa says no, because the benefit being denied is the right to restrict the speech of others.
- Expression. What is being regulated?
- Is this individual or government speech? Whose expression is regulated?
- No categorical exclusion for the expression: Is the regulation justified because of a categorical exclusion, like obscenity or misleading commercial expression?
- Does the regulation fail constitutional scrutiny? Is it content-neutral or content-based? That triggers different levels of scrutiny in the U.S.
What could the Court do if it wants to uphold 2(a)? 1) Say it's not suppression or punishment, and the unconditional conditions doctrine does not apply, under factor 2. 2) It satisfies the scrutiny under 6. 3) Make a "traditional contours" argument like in Eldred and Golan.
Saurabh Vishnubhakat: Pushing on Lisa's state action analysis, if we apply Shelly v. Kramer broadly (where the Supreme Court refused to allow the enforcement of racially restrictive covenants in court, and which may be limited to its fact), that may suggest everything is potentially a state action?
Rebecca Tushnet: If the Court is taking a "hands off" approach to conflicts between trademarks and the First Amendment, then doesn't hands off mean no registration? Isn't that state action?
Lisa: It is state action.
Rebecca: Then isn't everything state action.
Lisa: There are real benefits to registration that impacts the first amendment. Demand letters work better when backed by a registration. And when you have a registration, it's easier to push claims that some see as questionable, like dilution and merchandising cases.
Charles Duan: When it comes to disparaging marks, those have particularly strong expression value - used to express feelings, and therefore even worse to restrict than other registrations.
Pam: Is there an international standard?
Lisa: No, as I read the law, each country has discretion to set up the system it prefers.
Posted by Jake Linford on August 11, 2016 at 08:45 PM in Blogging, Civil Procedure, Constitutional thoughts, First Amendment, Information and Technology, Intellectual Property, International Law, Judicial Process, Property, Science | Permalink | Comments (0)
Copyright Doctrine: IPSC2016
IPSC - Breakout Session II - Copyright Doctrine
Summaries and discussion below the break. If I didn't know the questioner, I didn't guess. If you asked a question and I missed you, feel free to identify yourself in the comments.
Copyright State of Mind – Edward Lee
Authorship and Audience Appeal – Tim McFarlin
Free as the Heir?: Contextualizing the Role of Copyright Successors – Eva Subotnik
Leveraging Death: IP Estates and Shared Mourning – Andrew Gilden
Copyright State of Mind – Edward Lee
Offering a descriptive taxonomy about how state of mind is used in copyright law.
2d Circuit in Prince v. Cariou: transformative use, the first factor in the fair use test: objective state of mind
9th Circuit in Lenz v. Universal: DMCA 512(f) violation: subjective state of mind
State of mind re: copyright liability - it is often said that copyright infringement strict liability. This differs from criminal law, where mens rea (criminal intent) typically matters.
If we look beyond liability, state of mind figures prominently in many different copyright doctrine. For example, authorship, including intent to be joint authors (both objective indicia and subjective intent). We haven't considered the intent of the lawsuit - are we protecting copyright or privacy, for example, but Judge McKeown on the Ninth Circuit recently argued we should. For ISPs, we have the red flag cases which have both subjective and objective elements.
Dave Fagundes: Property also deals with intent. Adverse possession and first possession have a whole mess of intent-related doctrines. Perhaps the ownership intent doctrines might help conceptualize these issues.
Pam Samuelson: Think about remedies as well. Innocent infringement, as well as willful infringement. It can play out also in relation to injunctive relief. Plaintiff's state of mind might matter with regard to obtaining injunctive relief. See also the new Kirtsaeng attorneys' fee case.
Ed Lee: Perhaps I should also look at the Supreme Court's patent cases.
Matthew Sag: If there is a universal theory about what state of mind should be for any of these doctrines, is there a logic that connects us to why we have copyright in the first place?
Ed Lee: I'm skeptical of a uniform theory. See, for instance, DMCA which is a negotiation between stakeholders.
Dmitry Karshtedt: My understanding is that civil liability more objective than subjective, while for criminal liability, intent is more subjective. and should we see the same play out in copyright?
Reforming Infringement – Abraham Bell & Gideon Parchomovsky
We have an immodest goal of reforming remedies in copyright, more systematically including culpability in the analysis. Under the reformed regime, we would treat inadvertent infringement (where the infringer was unaware and couldn't reasonable become aware) and willful infringement (blatant disregard of copyright law) different from standard infringements (with a reasonable risk assumption).
The close cases are in the middle category of standard infringement. The default is standard infringement. Compensatory damages should be awarded in every case. Injunctions would be rare and no restitution for lost profits awarded in the inadvertent cases. We are trying to preserve statutory damages only for cases where it is difficult to prove actual damages. So the defendant in the standard infringement case could argue that statutory damages exceed actual damages.
Why bring it in? 1) Information forcing - incentivize owners of copyright to clarify ownership and terms of licenses. 2) Avoid overdeterrence of follow-on creation. 3) Increase fairness.
Ted Sichelman: In the patent context, we worry about transaction / licensing costs. It may matter for copyright as well. For example, if the work is an orphan work, why should I face huge potential liability?
Abraham: The inquiry should account for the difficulty of finding the copyright owner.
Ian Ayres: Does any kind of negligence go to willfulness because there is no reasonable basis for non-infringement?
Abraham: It's not clear how we would calculate such a thing: What is a reasonable risk, re: evaluation of risk of law. We're treating standard as a residual category. But we are still arguing about this point.
Pam Samuelson: Have you been thinking about remedies re: secondary liability? The framework appears to deal with direct liability, but secondary liability cases may be the more complicated cases, where we wonder how culpable is the platform? The statute tries to grapple with through 512.
Abraham: We didn't think about secondary liability until we talked with Lisa Ramsey last week.
Pam: Secondary liability is the area that needs the most reform!
Abraham: We'll have to bracket this right now. Secondary seems to follow primary, and we don't have a better model right now.
Shyam Balganesh: How much of your proposal unravels other parts of the system? Are you accounting for systemic effects? For example, if information forcing matters, why not deal with that through a heightened notice requirement? Do you think infringement is independently problematic, or is it the best place for achieving information forcing goals?
Abraham: Unlike information forcing, overdeterrence is harder to fix with levers in other places. This isn't the only way to accomplish these goals, and we don't claim that, or that it's the best way.
Jerry Liu: Is it necessary, from an overdeterrence standpoint, to distinguish between willful and standard infringement? Google Books was arguably willful infringement, but it was also efficient infringement.
Abraham: I think Google probably was a standard infringer, from a culpability standpoint. They took a fair use gamble, and they won.
Jerry: How about the MP3.com case?
Abraham: You can make an argument that format change / transferring medium is fair use, so standard.
Authorship and Audience Appeal – Tim McFarlin
Recent projects have looked at disputes between Chuck Berry and his piano player, and Orson Welles and a script-writer. In both cases, questions of audience appeal have been nagging at me, and I want to explore that further.
Can we better use audience appeal in the infringement context than the authorship context?
Audience appeal, from the Aalmuhammed v. Lee case (9th Cir 2000), is an important factor. Audience appeal turns on both contributions, (by potential coauthors), but "the share of each in the success cannot be appraised," citing Learned Hand. If that's right, and we can't evaluate audience appeal in the authorship context, is it a junk factor? If we can, how do we do it? And if we can, should we?
What do courts do with audience appeal? Mentioned in 21 cases, but 9 ignored it in reaching the decision. 9 found it weighed in favor of joint authorship, and 3 found it weighed against joint authorship?
How do we appraise it? If we find evidence of audience appeal from both contributions, at what point is the smaller contribution too small? 60/40?
Might audience appeal help with questions of infringement, for example in the Taurus / Led Zepellin case? Might we consider the appeal of Stairway to Heaven v. the appeal of Spirit's Taurus as a reason for public interest to weigh against injunctive relief? See Abend v. MCA (9th Cir. 1998).
Jake Linford: Perhaps talk to Paul Heald about his research on how musicians copy from each other. There is some potential danger in using audience appeal to decide infringement, injunctive relief, or damages, because that leads to a copyright regime where the party who is best-placed to take advantage of the works gets to use and make money with it, even if that party doesn't pay.
Peter DiCola: You are right to challenge Learned Hand. Audience appeal can be appraised. The question is whether it can be appraised convincingly. The part about in general where does audience appeal matter may be too general, and may not be at the heart of your paper.
Pam Samuelson: Some works have audience appeal, some don't, and it might not be relevant for unconventional expressive works For example, the internal design of computer programs are not appealing. You may need to unpack works where appeal matters and where it doesn't.
Jani McCutcheon: Watch where trademark and copyright protection overlap on this issue.
Free as the Heir?: Contextualizing the Role of Copyright Successors – Eva Subotnik
This paper is inspired by two recent controversies surrounding Harper Lee and To Kill a Mockingbird: the appearance of Go Set a Watchmen, and the decision by her estate to pull the student-priced paperback from the marketplace. Both of these stories are murky. Lee may not have been in her right mind when Go Set a Watchmen was released, and the announcement from Hachette about the student-priced paperback suggest both the estate and Lee wanted the low-priced version discontinued.
Should motivations of the author or the heir matter for copyright decisions? Eva argues that it should. The law should be tougher on post-death copyright successors. We should treat them more like stewards, and require some duties on their part. If copyright ownership limits post-mordem access, heirs should be encouraged to take care.
What might stewardship mean? It has its origins in theology, traditionally applied to land. It's taken on a secular cast today. Stewardship suggests that the owner has duties as well as rights. Stewardship has something in common with commons advocates - copyright should be forward looking, and concerned about future generations. Bobbi Kwall has argued that authors are stewards, and I think it should be applied to heirs as well. Unlike authors, publishers, and distributors who did work with the work, stewardships step in as recipients of a gift, and perhaps they should step into some duties.
Application: Eva doesn't argue for a statutory change, and it's not clear stewardship would change the analysis of the Harper Lee issues, but stewardship could change fair use analysis, for example with biographers and scholars. When the heir has the ownership of a sole copy, stewardship could matter [JL: unclear to me how]. Perhaps stewardship could allow authors to better shape stewardship of their legacy. [JL: Doesn't the termination provision already exclude wills?]
Brad Greenberg: A potential disconnect between assignments and statutory heirs of termination rights. What if the author's assignee is a good steward, and the children are poor heirs, from a stewardship standpoint? Is Stewart v. Abend's analysis of the renewal right a problem for your analysis? Should we also apply stewardship duties to non-author copyright owners?
Eva: To my mind, a post-death successor gains enhanced prominence in managing the copyright after death, and I'm trying to say something specific to that group of copyright owners.
Dave Fagundes: I like the idea of stewardship, but it's still inchoate, and I can't tell to whom is the steward responsible? The work? The public? The author's intent? What if authors wanted their families to be taken care of?
Eva: You could also add the author's legacy, which may differ from author's intent. [JL: This reminds me of Mira Sundara Rajan's project from the first breakout session.]
Ed Lee: Perhaps the moral rights of integrity literature could also be helpful, which is more about legacy than children.
Giancarlo Frosio: French case 2007 might be helpful. See also Kant.
Leveraging Death: IP Estates and Shared Mourning – Andrew Gilden
Scholars seem to distrust claims by estates and heirs, but the tend to succeed in advocating for statutory change, and winning cases before the courts. But I found some recent claims that sound in mourning and grief that perhaps we shouldn't discount in copyright and right of publicity cases.
IP Narratives that are traditionally invoked:
1) Anti-exploitation. Randy California was badgered for years to sue Jimmy Page, but his heirs stepped in to claim some recognition for him.
2) Family privacy. James Joyce / J.D. Salinger estates
3) Purity narratives. Limit downstream uses, especially those that raise potential sexual purity.
4) Inheritance. It's all that the author left to the family.
5) Custody (like child custody). Children as caretakers of the work.
Copyright scholarship tends to ignore these types of claims, but we see them invoked successfully in cases like family businesses, bodily disposition, organs and genetic information, digital assets, like email, and succession laws dealing with omitted family members.
What would happen if IP took these interests seriously? Perhaps there is a desire for shared mourning and grief, both by authors' heir and fans. Fans circulate and disseminate broadly as part of public mourning, but mourning families look inward, seek silence, achieve some semblance of privacy. These interests might not be as irrational as we might think.
One solution might be to bring issues of estate planning more to the fore. Marvin Gaye and Frank Sinatra created a family business when they secured copyright, whether they meant to or not.
Rebecca Curtin: You've made a very sympathetic case, and you've repeatedly spoken about family. Do you mean family, or could you include designated heirs, like the Ray Charles foundation? What might that mean?
Andrew: We may need to think differently about those who inherit intestate and those who don't.
Brad Greenberg: The incentive theory of inheritance suggests that authors will create in part to benefit children. But there could be a labor theory of inheritance: this was the authors, like the children, and it goes to the children. In addition, is this really about IP, or just copyright?
Andrew: Copyright and right of publicity. My take is more of the labor than the incentive theory.
Q: Why does the right publicity survive death?
Andrew: Jennifer Rothman has a very good paper on this. Right of publicity is labelled as property, and property descends, so in some states it descends.
Peter DiCola: I enjoy the presentation, and I ask not to upset the applecart, but what might the First Amendment tell us about these arguments about importance of controlling meaning?
Andrew: I don't think these insights should change fair use outcomes, but my concern is that heirs' motivations are okay, especially in light of how they work in other cases. The emotional appeals are not inherently problematic. (Although I have some problems with the purity rationale).
Jake Linford: Is this project normative as well as descriptive?
Andrew: It started more descriptive, but normatively, I see no problem. Prescriptively, perhaps we could ask authors to be more clear about how their intent at registration / protection, for example.
Giancarlo: Is there space for a moral rights style argument here?
Andrew: Perhaps attribution is the best moral rights claim.
Giancarlo: Is there a mechanism is the composers of Blurred Lines had said no? Can you make the heirs grant a license?
Andrew: Blurred Lines is a declaratory judgment action - the derivative authors brought the case to foreclose liability.
Tim: The estate's emotional appeal in the Taurus complaint may have been somewhat strategic, trying to deal with the perception of greedy, rent-seeking heirs by promising to give money to sick children.
IP for Characters & Symbols: IPSC 2016
IPSC 2016 Breakout Session I: IP for Characters and Symbols
I summarize the following presentations, and the discussions about them, below the fold. If I didn't know an audience participant, I didn't include a name, but if you are an anonymous commenter, tell us who you are in the comments.
Is Copyright an Author’s Right? An Authorship Perspective on Copyright Law – Mira Sundara Rajan
Works of Fiction: The Misconception of Literary Characters as Copyright Works – Jani McCutcheon
Zombie Cinderella and the Undead Public Domain – Rebecca Curtin
Trademarks, Core Values and Cultural Leadership – Deborah Gerhardt
Intellectual Property in Internet Folklore – Cathay Smith
Mira Sundara Rajan, Is Copyright an Author's Right? An Authorship Perspective on Copyright Law
Copyright is arguably the only regime designed to promote culture, and that should mean providing income to creators. But many authors struggle to make a legitimate income. Mira is concerned that copyright isn't correctly calibrated to that end. At a minimum, authors need more voice.
Lisa Ramsey asks whether Mira plans to frame this as a human right or some other way.
Mira: International law mentions a moral right of authors as a form of human rights. But the Berne treaty may effectively embody human rights in automatic protection at creation.
LRamsey: But then might the human right to copyright conflict with a human right to free speech? And if corporations hold copyright, is it proper to think about copyright as a human right?
Shyam Balganesh: There are two ways to look at copyright - looking at authors rights, and looking at the acts that authors take. You propose that the net income of authors is low, but it's not clear that copyright is the right mechanism to enhance their welfare. Perhaps authorship is the better focus than authors.
Mira: Japan grants to corporations something that looks like a human right in authorship functions, and Japan is an outlier here.
Jani McCutcheon, Works of Fiction: The Misconception of Literary Characters as Copyright Works
Fictional characters qualify as protectable copyright works in large part because of a problematic Learned Hand opinion, Nichols v. Universal Pictures Corp. But to protect characters as works, they must be identifiable. But where is the character perceived? You can't excise the character from the text, and characters are more abstraction than expression. If we are separating characters out as works, is there a right and a wrong way to read or construct the character. If not, it may be impossible to define the character as a protectable work. Characters traverse different media, which further complicates the question.
Deborah Gerhardt: Copyright has so many tests for the same thing. I love clear rules, I love the Feist opinion because it is clear. I'm resistant to your analysis because it gives us an entirely different originality test for characters than anything else.
Jani: I'm not sure we should be looking for a way to define the character, and I wouldn't apply the test to characters at all.
Betsy Rosenblatt: I'm quite sympathetic to the project, but I'll ask a question I've been asked. Why isn't this a problem for all of copyright? Reader response theory suggests all interaction with copyrighted works is dialogic. If so, this is a universal problem for copyrighted works. Perhaps this is similar to [Guy Rub and Margot Kaminski's] zoom-in, zoom-0ut problem.
Jani: This may be a broader phenomenon.
Lisa Ramsey: This reminds me of Betsy's work on Sherlock Holmes. But I'm conflicted. Some characters are well-delineated. If I add Harry Potter to my law school novel, is there any infringement? Of what?
Jami: What do we mean by take Harry Potter? Under my analysis, if little of the expression has been taken, and there is little / no substantial similarity between the works, there is no infringement. Admittedly, the name is potent, but because of trademark significance.
Inayat Chaudhry: What if there are characters like Calvin & Hobbes, and the whole work is based on the characters?
Jami: This is a hybrid work, with visual and literary components, which complicates the analysis.
Seagull Haiyan Song: I agree the current test doesn't work. But if copyright protection isn't the right solution, should there be something else? Protection of character rights as such?
Rebecca Curtin, Zombie Cinderella and the Undead Public Domain
[Is this the best title of the conference?]
Someone tried to register "Zombie Cinderella" as a mark for a doll. There was an initial refusal grounded in confusion with Disney's Cinderella. The Trademark Trial & Appeal Board reversed the refusal, holding the "Cinderella" part of Disney's mark was a conceptually weak indicator, in part b/c of third party dolls on the market, and in part b/c of long history of the Cinderella story.
The danger here is that the signal sent is that Disney should have worked harder to protect the mark. And we see protectable marks for Cinderella soap, cosmetics, etc., and that doesn't seem problematic in the same way. Is Cinderella generic for dolls? That doesn't seem quite right, and genericism doesn't fully animate what the public domain story lends to the underlying good.
Instead, I'm thinking in terms of extending the aesthetic functionality doctrine to cultural elements. Trademark needs a doctrine to deal with the use of fairy tale princesses as trademarks or brands.
Betsy: Aesthetic functionality is what Tyler Ochoa suggested to me instead of genericism as the solution to the Sherlock Holmes problem. I want to make a push for genericism (I'm glad you didn't go to descriptive). You are right - it's not descriptive for dolls, but it is the generic descriptor for the character. You can't call Sherlock anything other than Sherlock, and you can't call Cinderella anything other than Cinderella. We use nominative fair use to deal with it on the infringement side, but we should have to. Here, the term Cinderella is generic for what the product represents. AF is a poor fit: oxymoronic, and it seems to ask whether we buy something because it is pretty / attractive.
Deborah Gerhardt: Perhaps we need a public domain for characters like these.
Ann Bartow: Is this like copyright title, where you don't get protection in titles? [Jake: trademark handles title differently, for books - no protection for a single book, but protection for a series of books (Harry Potter & ___) or magazines.
Ed Lee: I would prefer a more full-throated defense of the public domain created by the copyrighted work aspect. You could try to recapture a trademark public domain - what's the proper boundary of a copyrighted [cultural?] character in the public domain. [JL: Is this then a Dastar problem - no trademark protection because the character as cultural artifact in doll context belongs in the copyright bucket, and protection has expired?]
Laura Heymann: You may benefit from disaggregating the individual aspects of Cinderella and her characteristics. United used Rhapsody in Blue - the fact that it's in the public domain doesn't necessarily mean it cannot have some trademark function, so more careful pulling apart may be valuable.
Deborah Gerhardt, Trademarks, Core Values and Cultural Leadership
A trademark may represent core values around which a community can coalesce. When you look at a brand community, what values does it have? Is the communal identity potential harmed by dilution, for example?
For example, brands are now pressured to make a stand on cultural issues. Target, for example, acted to restrict open gun carry in its stores. Here the brand is used as a tool for political reform. PayPal refused to bring in a business center in direct response to North Carolina's HB 2.
To have a mark strong enough to support a dilution claim, perhaps some identifiable core value is the minimum. If so, dilution harm is a disruption between the core value and the ostensibly diluting use. Goldfish crackers with marijuana - there may be disruption between core values and the brand. Louis Vuitton parody toy handbags? No disruption of the core value, merely playing with the core value. [JL: If that's right, is this anything more than a parody non-parody analysis? Not clear to me.]
Andrew Gilden: Does your "core values" require a popular political stance, or cultural buy in? If the majority turns in favor of equality, is this really a "core" value.
Deborah: Imagine that someone else had interfered with Ashley Madison's ability to signal its core value of secrecy and discretion. That might be a core value that the majority of Americans doesn't "value," but it at the core of Ashley Madison's brand identity.
Andrew: What if Christian Mingle tried to adopt an abandoned Ashley Madison brand.
Deborah: Sometimes core values are forged in crisis.
Seagull: Core values, under your definition, seem like they must be shifting.
Laura Heymann: Do you need to distinguish between value and core attribute?
Cathay Smith - Intellectual Property in Internet Folklore
Are there protectable rights in internet folklore? My project looks at the evolution of Slenderman, his propertization, and the coming movie, to investigate this question, and ask who is benefitted and harmed.
The character first showed up on the Something Awful website, in an image posted by Victor Surge. At first, people posted their own "sightings" of Slenderman without claiming any ownership of the character. But as the character has become more popular, parties have begun claiming ownership rights. At least two short films posted online were taken down after receiving a takedown notice. But the provenance of the ownership is uncertain. The claims lead to a chilling effect.
Is there ownership in Slenderman? Cathay argues no - Slenderman as we understand him wasn't fully developed with the first Victor Surge posts, but collectively as he became popular. She also argues factual estoppel - if the author(s) claim Slenderman is a real person and posted sightings are factual, then copyright claims might be estopped. Rights in the name of the title / name are also weak, under Rogers v. Grimaldi.
Normatively, property rights seem unjust. The Hollywood blockbuster isn't giving back to the community. This is also a nice example of chilling effects. In addition, propertization runs counter to community norms and ethos.
Ed Lee: Copyright might be a bad fit. Perhaps attribution, as a sui generis right, should be respected.
Cathay: Do you mean giving rights to the community, or preventing propertization of something created by the community.
Ed Lee: There are a range of options. I mean something more unleashed / free than standard property rights.
Lisa Ramsey: This reminds me of the orphan works problem - who is the owner? There are also joint works problems. So under current copyright doctrine, if people are fixing individual images, those seem independently protectable. Are the derivative works, derived from what version of the character, and if so, can you get protection in them?
Q: Is this character just a standard bogeyman? How much of this is really new? [Lisa Ramsey: Scenes-a-faire]
Seagull: Might we get something from creative commons analysis.
Q: Other commons uses of musical communities might also be valuable to consider.
IPSC 2016 First Plenary Session
Thanks to Rachel Sachs for the following summary of the opening plenary session at IPSC! The following papers are summarized, and Q&A recounted, below the fold.
Scarcity of Attention in a World without IP
What’s In vs. What’s Out: How IP’s Boundary Rules Shape Innovation
Mark McKenna & Christopher Sprigman
What We Buy When We “Buy Now”
Aaron Perzanowski & Chris Hoofnagle
Jake Linford: Attention Scarcity in a World without Copyright
The standard account of copyright is that we have it and impose artificial scarcity so that artists can recoup their sunk costs in creating information. But the costs of creating/disseminating information have fallen, and some argue that maybe we should narrow copyright as a result.
This paper argues that narrowing copyright for this reason may be too hasty! It does so by introducing a complicating wrinkle: attention scarcity. The cheaper it is to disseminate information and the more information we get, it may create information gluts. Information gluts can impose costs on consumers, including consumers of copyrighted expression. And the competition for scarce attention is often a zero-sum affair, in which competitors benefit by using copyrighted expression (some of which they don’t pay for and thus use impermissibly) to attract and manipulate scarce attention. As such, some calls to reduce copyright protection may worsen these problems of attention scarcity and information gluts.
Linford does consider the possibility that less copyright protection is better for attention scarcity. What might happen if we reduce copyright protection? One option is that we have less entry. If we have narrower protection then there’s less incentive to enter, but then at the same time there are lower “expression costs.” With copyright retained, you have a relatively higher incentive to create, but you also have higher expression costs. Linford’s concern is that lowering protection might result in less creative or distinct entry, things that are more similar to each other, which is duplicative and results in wasteful racing to capture the first-mover advantages for derivative works. Here, Linford relies on recent work by Joe Fishman (Vanderbilt) arguing that constraints imposed by copyright can sometimes push creators to be even more creative, work that is supported by recent psychological research.
Lemley question: It turns out that crowdsourcing is at least as good and maybe better than expert selection in helping us separate good from bad creative works. So yes, if twenty people make a derivative Star Wars movie, the crowd is good at telling us which is good and bad. Are we really worse off?
Linford: One key danger is that Lucas has to rush out The Empire Strikes Back to compete with those twenty derivative movies, and we may be concerned about the effect of that pressure.
Betsy Rosenblatt: We live in a world where trends are pervasive, even in a world with heavy copyright. One successful horror film leads to twenty more mediocre ones. People tire of sameness. The solution doesn’t seem to be “stop the trend from happening,” it seems to be “let the trend run itself out.” Information scarcity may not create the problem/solution set Linford is describing.
Linford: Thinks what’s more likely is that trends will purge themselves by, instead of having 20 horror movies that pick up the tropes of the genre, you end up with 20 more identical horror movies. The more you narrow it, the more similar those interpretations are.
Central question: What sorts of things are sorted into the utility patent system rather than design patent, copyright, or trademark law? This matters for the current utility patent debates over patentable subject matter but more importantly for the tructure of the system overall. Copyright, trademark, and design patents all have doctrines designed to exclude useful or functional matter on the grounds that such matter is the proper domain of utility patent law. They define themselves in opposition to utility patent law. They all police the boundaries differently, and with different levels of rigor. They don’t do it because the material doesn’t otherwise meet the requirement of those systems – functional material may still indicate source (trademark) or have expressive content (copyright) – but they do it because we think it’s the domain of utility patent law. Mark & Kathy STrandburg have called this the Utility Patent Supremacy Principle. This only works if the other systems have a reasonably clear view of what belongs to the utility patent system.
However, in their view the sense of utility patents deployed in other areas of IP is quite reductive and intuitive, and lack of a clear sense of patent law’s boundaries creates problems both for patent law and these other fields. It’s especially hard to apply when utility patent eligibility is in flux, as it is now. Patent law itself has an inconsistent sense of its own grounding – what counts as technological innovation?
Conundrum: there’s a widespread belief that utility patent law focuses on technological innovation, but in practice that’s inconsistently enforced. Yet all other areas of IP act as if there’s a clear sense of what utility patent law is about (technological innovation) and that other areas of IP should defer to utility patents in that area.
Provides as an example the Varsity Brands case, decided by the Sixth Circuit and scheduled to be heard at the Supreme Court this upcoming term. What divided the appellate opinions in that case was their assessment of functionality. For the majority, the chevrons on the cheerleader uniforms just served to cover the body. But for the dissent, the function is to identify the wearer as a cheerleader. And in that chase, the chevrons are not separable. But if the function is just to cover the body, chevrons are separable and thus copyrightable. This case turns on the definition of functionality and what kinds of functionality the courts are supposed to keep out of copyright, which is undertheorized, as they’ve been arguing.
Linford: What’s the right answer in terms of which way should we push the doctrine?
McKenna: The paper is mostly diagnostic, it’s not prescriptive. The primary point is to identify a paradox at the heart of the system, if you think of the various forms of IP as a cohesive system. We don’t have a particular answer yet.
Ouellette: Where do you think this causes the most difficulty? Overlap may not obviously create problems.
McKenna: Overlap does create some problems, makes it more difficult for people to know what the bounds are of permissible conduct and expression. The accumulation of rights is a problem at least some times for overprotection. When we think about what kind of fair use rights we want to give, as an example, we don’t account for the possibility of overlap.
Sprigman: Some things will end up being protected in multiple ways, but some things won’t end up being protected at all – patent law may kick things out on grounds of novelty or non-obviousness, but other fields will kick it out as being functional.
Janet Freilich: Patent Clutter
Patent claims point out and distinctly claim the invention, and they’re often thought to be shorthand for and synonymous with the invention. But there are few empirical studies of these claims. This study asks whether claims are really only about the invention, or whether claims do a lot more than just point out the invention. The method she uses is to look at whether language appearing in the claim language also appears in the specification. We should care about this because if something in the claim isn’t discussed in the specification, it’s unlikely to be new or used in a new way, or alternatively it may fail the enablement or written description requirements.
Freilich finds that a great deal of claim language (roughly 25%) appears rarely or never in the specification. An average of 9.4% of claim words appear nowhere in the specification, 8.3% appear once, 7.5% appear twice. She calls this non-inventive language, and about 90% of it appears in dependent claims. Patents that have more non-inventive language have fewer forward citations and it’s less likely that the patent is maintained, two common measures (though imperfect) of patent value. Her theory is that language in the claims but not the specification is not part of the core invention of the patent.
Freilich considers limitations of her study. For instance, her methodology can’t account for drawings. She also can’t account for genus/species discussions.
Why do patentees do this? There’s an information transmission functions for the patentees. It may also serve a decoy function – competitors may not be sure what you’re planning to do with an invention. It might help to avoid rejection during prosecution. And it might provide insurance against future commercial uncertainty or litigation.
Freilich argues that some of these claims may not satisfy the enablement and written description requirements. There’s also a clarity difficulty here. Claims are already hard to read – non-inventive language makes claims more difficult to read even, especially because the additions by definition are not defined in the specification. Examiners also report struggling with non-inventive language, making their jobs harder. It also makes patents hard to search, when you use keyword searches (a lot of false positives). It may also create the illusion of a patent thicket in an area.
Ultimately, Freilich urges us to think of claims as very complicated and doing more than just describing the invention. It opens up questions like what does the ideal claim look like? There is a tradeoff between precisions and concision. It may not be practical to get rid of all of this, but some of this is clearly problematic.
Fromer: Troubled by the assumption that what’s in the claim language is the only thing that relates to the invention. The specification is frozen at the time the patent is filed, but claims may be amended throughout prosecution. Without looking at the original claim language, it’s difficult to make these kinds of conclusions. More generally, there are many ways to express something and often in practice the specification is more heavily written by the inventors, while the claims are written by lawyers. It doesn’t mean it’s not inventive, just that different people write something in different ways.
Freilich: This is not a precise proxy, but in general patent prosecutors try to ensure that what’sin the claims is reflected in the specification. And she does have some data on claims as proposed versus
granted. A good amount of patents add non-inventive language during prosecution, but others take it out or remain the same.
Vishnubhakat: What you describe as non-inventive language could be language in the claim and simply be what the inventor regards as her invention. If you have it in the claims and not the specification, it could be ill-enabled and described but still satisfy novelty and nonobviousness. So the finding that 9.4% of words never appear in the specification suggests that if this is a story about people who are inventing things and not describing well enough to claim the full scope of the invention is that they’re leaving claim scope on the table, and that seems consistent with a finding that about 10% of patent grants are first-action allowances where there’s not a back-and-forth between examiners and patent applications.
This project builds on a big question: what does it mean to own something? What does it mean to buy something? The now-famous Amazon 1984 case is a big example of why this is a difficult question. Some people look at this and say that consumers understand that they’re buying a license to something, not a copy of it. Perzanowski has never heard a consumer say this. Perzanowski & Hoofnagle set out to understand how consumers perceive this language.
They created a fictitious marketplace and surveyed almost 1300 consumers and asked them about what the “buy now” language means. They screened consumers to be sure that they were all in the market for digital books, music, or movies, and ensured representativeness – pretty close to census data on nearly all metrics. They sorted them into three categories. They saw a page for an ebook, an mp3 album, or a digital movie. Each respondent could also choose between different titles within those media forms. Look at the ebook category as an example. Some people got the “buy now” button for a digital item, some people got “buy now” for a paperback copy, some people got a “license now” button for a digital item, and some people got a little notice about what they were permitted to do with the digital item they were paying for.
Key findings: 1. The “Buy Now” button misleads a substantial number of consumers about the rights they acquire in digital media. Substantial numbers of people think they can lend, gift, or devise these copies by will. The number of people who think they “own” a product drops significantly between people who saw “buy now” or “license now,” although the “license now” group still had a high percentage of people in the lending and gift categories. Many subjects, though, chose “don’t know” in the “license now” group.
2. Those misperceptions are material to consumer decision making. More than half of the respondents would pay more for digital goods that enabled lending, reselling, or using device of that choice, and respondents said they would prefer to retain those rights. And many consumers said they were more likely to download things illegally or stream them if they didn’t have those rights.
3. Replacing the buy now button with a short notice explaining the rights coming with the copy significantly reduced misperceptions. The short notice group seeing the ebook shows significant reductions in the owning, lending, gift, will, and resale categories. However, this wasn’t true for the digital movie group.
Goldman: I wonder if you can tell a different story from the data, which is that it’s really hard to educate consumers. You can still argue that most consumers aren’t getting the message even in the short notice group. What is the best way to educate them?
Perzanowski: Keep in mind that these people had precisely one exposure for ten or fifteen seconds to the short notice. He’d imagine that with repeated exposure you might see those results increasing more. Further, he’s not a professional user interface developer, and someone who has expertise in this might be able to improve it. It’s a promising avenue for improving consumer understanding but more work needs to be done. What we might see is instead of consumers learning is that they don’t bother to read it, which is the opposite of what we’d hope for.
Tuesday, August 09, 2016
The Stanford Live-Blogging Experiment
This weekend, August 11-12, Stanford Law School hosts the Intellectual Property Scholars Conference. My colleagues and I will present 146 papers in two days. That requires concurrent tracks, and I inevitably miss hearing some brilliant scholars present interesting projects. I'm going to use my platform on Prawfs to contribute to the solution: I'm live-blogging the panels I attend. You can follow along here this weekend.
I didn't invent live-blogging at academic conferences; I assume Rebecca Tushnet did. At a minimum, she's a prolific live-blogger, and I expect she'll provide excellent summaries of those panels she attends at IPSC. But Rebecca and I can't cover every panel. That's where you come in. If you are attending IPSC, you can send a summary of the panels you attend to jlinford(at)law.fsu.edu, and I will post them here on Prawfsblawg. With your help, we can cover every session.
In addition, if you plan to live-tweet IPSC 2016, send me your twitter handle, and I'll post it as well. I'll do some IPSC-related tweeting @LinfordInfo, and I expect to see frequent updates from @scholzlauren and others.
Sunday, August 07, 2016
MarkelFest! at SEALS--Tonight
We will continue the SEALS tradition of holding a MarkelFest! happy hour at SEALS. Come drink, catch up, watch the Olympics, and remember Dan. It will be at 9 p.m. on Sunday (this evening), August 7, in the Seaglass Lounge at the Omni.
Hope to see everyone there.
Wednesday, August 03, 2016
MarkelFest! at SEALS
We will continue the SEALS tradition of holding a MarkelFest! happy hour at SEALS. Come to drink, catch up, watch the Olympics, and remember Dan. It will be at 9 p.m. on Sunday, August 7, in the Seaglass Lounge at the Omni.
Hope to see everyone there.
Tuesday, August 02, 2016
Guest Blogger | Ben Edwards - Doing Due Diligence on a Financial Adviser
First, thank you to the folks at at PrawfsBlawg for the invitation to join as a guest blogger for August. PrawfsBlawg has been an incredibly valuable resource. I'm grateful for the opportunity to write for this audience. I recently finished my first year as an Assistant Professor of Law at Barry University Dwayne O. Andreas School of Law in currently sweltering Orlando, Florida. I teach Business Organizations, Securities Regulation, Securities Litigation, & Professional Responsibility and write about securities litigation, financial products, and retail investor protection. While at PrawfsBlawg, I plan to write about the the retail side of securities law with a focus on providing some useful information. There are new and interesting things going on in this space that should be fun to talk about. I'll also try to cover topics of interest to the community generally.
Turning to that front, I want to talk about doing basic due diligence on a financial adviser. It's a common problem. Imagine: a beloved and trusting relative comes to you and tells you about the "really sharp" financial adviser encountered at an educational seminar. Plus, this adviser even sprang for the meal! What a nice person! More, your relative plans to turn over a good chunk of retirement money to this market-savvy professional. What sort of vetting can you do when all you have is the financial adviser's name? The first thing to know is that the term "financial adviser" lacks any real meaning. The title appears on business cards for con artists, stockbrokers, registered investment advisers, insurance salespeople, financial planners, and others. Fortunately, there are some relatively easy ways to get more information.
If you don't do anything else, you should run an adviser's name through the BrokerCheck portal provided by the Financial Industry Regulatory Authority (FINRA). If the financial adviser is registered as a stockbroker or as an investment adviser, BrokerCheck will pull up some of their information or redirect you to an SEC website with detailed information. It'll tell you whether the person is registered, some employment history, and will reveal certain "disclosures" -- often red flags that would indicate that a particular financial adviser may be associated with problems. FINRA has even run ads advertising the importance of checking a financial adviser's background. If the person claims to be stockbroker and doesn't show up in the database, it's either the wrong name or a con artist.
While BrokerCheck can get you started, FINRA doesn't tell you the whole story. There may be things you should know that have been expunged or otherwise obscured that you can still find out fairly quickly. After the jump, I cover how to see get the rest of the picture and look like a wizard to your friends.
It helps to have context to evaluate whether to use a particular financial adviser. Should it trouble you that three complaints have been filed in a fifteen year career? How common are complaints? FINRA does not provide any of this information.
Fortunately, some business school professors have provided some useful context. It turns out that about 7% of brokers have misconduct records. These brokers may be five times as likely to have future misconduct show up on their records. This means that the easiest way to cut risk may be to avoid brokers with misconduct histories. While a lot of brokers lose their jobs for misconduct, almost half will be rehired at less reputable firms. The distribution of problematic financial advisers also provides some interesting information. Even though only 7% of brokers have potential misconduct disclosures, some firms have higher concentrations among their ranks. For example, about 15% of the brokers associated with UBS Financial Services have misconduct disclosures. Oppenheimer & Co. has even more with about 20%. A follow-up study found that particular firms may pose even higher risks:
These six firms - Aegis Capital, Summit Brokerage Services, National Securities, Centaurus Financial, Independent Financial Group and Kovack Securities employ a far higher percentage of brokers associated with investor harm events than other firms. These six highest-risk firms are also among the top ten firms ranked by percentage of current brokers who were previously fired by other firms after customer allegations of misconduct. 7.71% of the registered brokers in these six high risk firms have been fired at least once by a previous employer after allegations of misconduct, 10 times the average of 0.78% of the remaining 204 brokerage firms.
If an otherwise upstanding financial adviser is associated with a particularly high-risk firm, it may make sense to pick a different adviser.
You should also know that these studies work off compromised databases. BrokerCheck only shows a partial picture because many financial advisers have managed to have complaints expunged from their records. In instances where an investor settles an arbitration claim against a financial adviser, FINRA arbitrators routinely agree to expunge the existence of the complaint from the public record. One study found that FINRA arbitrators granted 90% of these requests for expungement. In some instances, state regulators have even struggled to block the expungement of complaints from the public record.
Like Harry Potter's Mad-Eye Moody, you too can see the invisible. You can uncover whether (and possibly how many times) a financial adviser has used this process to scrub records by checking a different database. FINRA makes its arbitration awards available. While complaints may not show up on BrokerCheck, you may find whether a financial adviser has had complaints expunged by running their name or registration number through this awards database. The arbitration award granting expungement still shows up in that database. Wizardry.
Of course, some financial advisers may have used the expungement process to remove truly frivolous complaints. Still, you probably want to know if a particular financial adviser regularly attracts complaints from disgruntled customers.
Monday, August 01, 2016
The Long Journey Home
It's a pleasure to be back for another round of blogging. I'm excited to share some thoughts about copyright and trademark law this month. But right now, I have traveling on my mind - my family is finishing what my ten-year old calls "an epic road trip." We've driven through ten states already, and we'll drive through four more big (mid)western states, and recross several others, before we are done. In honor of the trip, I'll share one of my favorite traveling songs: The Long Journey Home by Rodney Crowell. Feel free to share songs that make you think of or yearn for travel in the comments. More substance to come in subsequent posts.
As July turns into August (and the end of my writing summer looms), we bid thanks to our July visitors, some of whom might be sticking around for some extra days. And we welcome our August visitors--Shima Baughman (Utah), Benjamin Edwards (Barry), and Jake Linford (FSU).
Welcome and enjoy the month.
Monday, July 04, 2016
Greetings from the Netherlands (and happy Fourth of July to US readers)
Thanks to Howard for inviting me to join you here at Prawfs this month! To introduce myself, I'm an American (and a California-trained lawyer) working in legal academia in The Netherlands. For just over a year now, I've been a researcher in the Law and Technology department at Tilburg Law School, where I also teach privacy and surveillance law subjects. I'm a JD/PhD (Information Science), and I enjoy mixing legal and empirical research as much as I can. I am looking forward to blogging about a few themes over the coming weeks, including questions related to policing, criminal procedure, and criminal law, especially as they relate to privacy and access to information concerns. I also anticipate mixing in some posts about socio-legal research and interdisciplinary approaches to studying law, as well as some issues that will hopefully be relevant especially to junior or aspiring members of the academy. I look forward to engaging with you over the next month or so on these topics.
My first substantive post (coming in the next day or two), will address and ask some questions about the legal implications of police officers wearing body cameras into private homes, as this is something I've been grappling with in my own socio-legal field research with two police agencies in Washington State over the past 22 months. I think there are some interesting and unresolved issues raised by this particular use of technology, both in terms of the federal Fourth Amendment, but also stemming from varying state constitutional and statutory rules about criminal procedure, privacy (including eavesdropping), and public access to footage.
Saturday, July 02, 2016
Greetings! I’m happy to be guest-blogging here after a long absence. For those who don’t know me, I teach Criminal Law, Criminal Procedure, and related courses at Salmon P. Chase College of Law at Northern Kentucky University, and I write mostly in Criminal Procedure. Much of my work has been centered around identifying and elaborating upon what I see as a neglected federalism component in the Bill of Rights. This month, I hope to blog about that, as well as some items related to teaching, the mechanics of writing, the latest Supreme Court Term, and my new-ish role as Associate Dean for Faculty Development at my school.
Friday, July 01, 2016
Happy July. Happy Canada Day, in honor of Paul, Dan, and our Canadian readership. And happy Fourth of July weekend.
Thanks to our June guests, who may be sticking around for the holiday weekend.
And welcome to our July guests--Jessie Hill (Case Western), Michael Mannheimer (Northern Kentucky), Eric Miller (Loyola LA), Bryce Newell (Tilburg), and Scott Skinner-Thompson (NYU).
Wednesday, June 01, 2016
As June marks the official start of the academic summer (i.e., when I actually have to get cracking on my summer research projects), we welcome our new visitors for the month: Hadar Aviram (UC Hastings), David Fontana (George Washington) Ajay Mehrotra (American bar Foundation), Andra Robertson (Case Western), and John Stinneford (Florida).
And thanks to our May guests, who may be sticking around for a couple of extra days.
Tuesday, May 31, 2016
So, What Exactly is the ABF?
Thanks to Sarah and Howard for re-inviting me to post about the American Bar Foundation (ABF). Many PrawfsBlawg readers may already know what the ABF is and what it does, but since I became the new ABF Director back in the fall, I’ve learned not to take anything about the ABF for granted. So, let me begin by describing what exactly the ABF is.
Since I’m a historian, let me start with a brief history. The ABF was founded in 1952 by the American Bar Association (ABA) to be an independent research institute for the empirical study of law. The founding fathers (and they were unsurprisingly all men) were leading ABA members, including then ABA President Robert G. Storey. They all believed the organized bar ought to have a research affiliate that studies issues relevant to understanding how the law works on the ground.
But more importantly they also believed that the American legal profession had a public duty to help improve the “machinery of justice,” as they put it. And one way to do that was to create a research center dedicated to the objective and independent study of law, legal institutions, legal processes.
Over time, the ABF has become one of the premier research institutes for the empirical and interdisciplinary study of law. Although it is often confused as being a part of the ABA, the ABF has consistently been an autonomous and impartial research institute. Since I’m also a tax law scholar, let me point out that the ABF is a 501(c)(3) non-profit; whereas the ABA is a 501(c)(6), which means it is a non-profit “commercially-oriented” organization. The ABA, as the official voice of the American legal profession, is permitted to lobby government and engage in political activity, whereas the ABF is not. Contributions to the ABF are also tax-deductible, but those to the ABA are not.
More colloquially, most people who know something about the ABF often describe it in a number of ways. For some, it’s a kind of law school without law students, or something akin to think-tank focusing on law. Think of it as a cross between the Russell Sage Foundation or the Institute for Advanced Study and the Rand Institute for Civil Justice. Given our roots in the legal profession, the ABF is not quite a pure science research institute, but neither is it purely an applied ABA “lawyer’s workshop.”
Like the other research institutions mentioned above, the ABF has a research faculty that consists of a group of full-time researchers, mainly social scientists and legal scholars, and a group of joint-appointees from Chicago-area schools. This group of research faculty conducts empirical and interdisciplinary research on law, writ large. In my next post, I’ll describe in greater detail some of the classic and recent ABF research projects.
Thursday, May 26, 2016
Arrest in Dan's death
As many of you know doubt have heard, Tallahassee Police have announced an arrest in Dan's death. Sigfredo Garcia was arrested yesterday evening. The probable cause affidavit for the murder charge has been sealed and the investigation remains ongoing. TPD declined to give further details at a press conference this morning.
We have written very little here about Dan's death (as opposed to about Dan himself) to avoid the speculation and general b.s. that has surrounded this tragedy. We are happy to write about genuine news and may occasionally check back in as the case progresses.
Comments on this post are closed.
Wednesday, May 04, 2016
Hello Again Prawfs
I'm very excited to be back on Prawfs. For my money, blogging on this site before going on the market was an unreservedly positive experience: I got exposure to folks I would never have "met," got to discuss issues that were of interest to me, test out some ideas and, as one of my new colleagues said the other day of blogging, got to exercise my writing muscles. That's what I need right now; my writing muscles have atrophied over the past six months or so. Thus, I'm particularly grateful to be blogging this month.
Before October, when writing took a back seat to job searching, I was writing about the criminal justice system's response to police as suspects and defendants, so some of my posts will be about that including one I hope to post today or tomorrow, with the teaser title "The Most Inappropriate Comment from a Police Union Yet?" I also hope to write a little bit about my experience on the market and some other areas that interest me but aren't in my typical wheelhouse.
A quick group therapy question -- do others fear each time they finish an article that it will surely be the last (g00d) idea they ever have? I've only written a few articles but feel this acutely each time I'm faced with a blank slate. Tips on breaking through this wall?
Sunday, May 01, 2016
Happy May Day.
Thanks to our April visitors, who may linger for an extra day or so. It's been a great month, particularly with Chris FAQ posts, which reflect the spirit of what Dan was trying to start here so many years ago.
And welcome to our May visitors: William Berry (Mississippi), Megan LaBelle (Catholic), Kate Levine (headed for St. John's), Ray Partain (Aberdeen), Andy Spalding (Richmond), and Marcia Yablon-Zug (South Carolina).
Tuesday, April 05, 2016
A Brief Hello
Hi. Thanks to Howard for the opportunity to guest bl(o/aw)g here this month. For those who don't me, I teach criminal law, evidence, and criminal procedure at the Elon University School of Law in Greensboro, North Carolina, and I write about technologies of crime prevention and criminal informants. I hope to cover a broad range of topics while I'm here: a bit on my research interests, as well as some thoughts on teaching, law school curricula, and some of the challenges I've encountered in my still-relatively-brief career in legal academia. See you soon.
Thursday, March 31, 2016
Welcome to April.
Thanks to all our March visitors, who may be sticking around for a few extra days.
For April, we welcome Sam Bagenstos (Michigan), Andrew Ferguson (UDC), Stuart Ford (John Marshall-Chicago), Amy Landers (Drexel), Michael Rich (Elon), and Chris Walker (The Ohio State). And Eric Carpenter (FIU) has two more episodes of Serial to go.
Also, it's about time to begin lining up visitors for next year, beginning in July. If you are interested in a month-long guest stint, let me know.
Monday, March 14, 2016
Back From Spring Break
Loyola is back in session after a week of spring break, which got me thinking, fellow prawfs: what do you do over your Spring Break? (I'm assuming some significant percentage of you either are, like me, just back or are just entering yours.)
I'll go first, of course. Since my kids' break won't arrive for another month or so, spring break isn't a big travel time for me; mostly, it's catching up on stuff I fell behind on and doing family stuff that needs to be done. But I did get in two big things last week:
- I cleaned my office. And that's a big thing. As I throw myself into various writing projects, piles of sources stack up all over my desk. But now those stacks are largely gone, either recycled or organized in places I can comfortably get to them.
- I practiced my saxophone. Years (and years and years) ago, I was a halfway decent musician. But the rigors of law school, kids, and apartment living have made playing a lot harder. Still, I love to play and, while my acoustic guitar and electric piano are fun, I miss what was my primary instrument throughout my teenage years. But I got five days of playing in last week, which is probably four days more than I've done in the last ten or fifteen years. Now the trick will be to keep it up when I'm at work during the day.
So how about you?
Monday, February 29, 2016
It seems as if it took a bit longer for March to come in like a lion this year.
Anyway, welcome to our March guests--Sam Brunson (Loyola), Brian Clarke (Charlotte), Seth Davis (UC-Irvine), Jose Gabilondo (FIU), Rhett Larson (Arizona State), and Mark Moller (DePaul). Also, my colleague Eric Carpenter will continue his weekly write-ups on Serial, Season Two. And thanks to our February guests, some of whom may be sticking around for a few extra days.
Wednesday, February 10, 2016
Race and the Law Prof Blog on Alternative Constitution Day
While I'm plugging stuff... the Race and the Law Prof Blog is hosting a blog-symposium on Alternative Constitution day, that is, on the idea that along with (or even instead of) celebrating September 17, we ought to be celebrating the refounding represented by the Reconstruction Amendments, and their renewal of the Constitutional promise of equality for all. There's still an opportunity to submit posts, and there are a number of existing posts. Here's mine (which is unsurprisingly about the rule of law and its relationship to racialized police as well as private violence), but I like the others better---particular can't-miss posts (among many) include Saru Matambanadzo's post on personhood, Craig Jackson's on social rights, and Nancy Leong's thoughtful critique of free speech absolutism. But go read them all.
Tuesday, February 02, 2016
Thanks to Howard for the invitation and the welcome. I am truly delighted to be guest blogging on Prawfs this month. For those of you I have yet to have the pleasure to know, I am a long-time die-hard proceduralist. I teach Civil Procedure, Administrative Law, and Federal Courts, and this semester for the first time, have added perhaps my first “substantive” course, National Security Law. Although any good proceduralist knows the substance/procedure dichotomy is murky, if not entirely false, I will admit that the move away from procedure has in fact felt uncomfortable, though certainly exciting.
In some ways, teaching National Security Law was the next, inevitable step for me. I have written about procedural aspects of government secrecy for essentially my whole (short) academic career. For a long time I fought full engagement with national security, hoping instead to address problems with procedural rights and remedies for all kinds of secrecy equally. But the truth is that our deepest government secrecy problems today concern security, and national security secrets are not treated the same as other secrets.
As you may have guessed by now, I am planning to use my time here to share my thoughts on the intersection between government secrecy, procedural justice, and national security. Before I get to national security, though, I will begin with a few posts on a slightly orthogonal topic: the corporate and commercial use of the Freedom of Information Act. I will share with you some of the findings I report in my forthcoming article FOIA, Inc., which is based on original data collected from six federal agencies’ records. While I think the findings are, in and of themselves, quite surprising and worthy of consideration, I hope by the end of my series, when I engage more fully with national security secrecy, I can make the connection between these two threads apparent.
I am looking forward to the month!
Monday, February 01, 2016
Happy February, now with even more days!
Thanks to our January visitors--Ann Marie, Zak, Deborah, Jody, and Jan; some of them may be hanging around for a few extra days to do some final posts.
And welcome to our February visitors--Miriam Baer (Brooklyn, back after a long absence), Josh Douglas (Kentucky), Paul Gowder (Iowa), first-time GuestPrawf Margaret Kwoka (Denver), Eric Miller (Loyola), Ajay Mehrotra (Indiana;Northwestern and American Bar Foundation), and Jonathan Witmer-Rich (Cleveland-Marshall). In addition, Eric Carpenter will continue reviewing Season Two of Serial.
Saturday, January 23, 2016
Harvard Hillel Conversation and Shabbat Dinner in Memory of Dan
After the jump is an announcement about an event on April 15, sponsored by Harvard Hillel and the Markel Family--a Law School Conversation and Shabbat Dinner in Memory of Dan. Spread the word. We will post additional announcements as the event draws near.
Harvard Hillel and the Markel Family present a
Harvard Law School Conversation and Harvard Hillel Shabbat Dinner
in Memory of Dan Markel
Martha Minow, Morgan and Helen Chu Dean and Professor of Law, Harvard Law School
Noarh Feldman, Felix Frankurter Professor of Law, Harvard Law School
Friday, April 15, 2016
• Conversation at 5 p.m. in the Milstein East Room, Wasserstein Building, Harvard Law School
• Shabbat Dinner at 7:45 p.m. at Harvard Hillel's Rosovsky Hall (following optional Shabbat evening service)
A shuttle bus will be available before Shabbat for those who prefer not to walk across Harvard Yard from Harvard Law School to Harvard Hillel
Details, including registration links, will be forthcoming.
Friday, January 01, 2016
Rotations and AALS Happy Hour
Happy New Year to all the Prawfs family.
Thanks to all our December guests. And welcome to our returning guests for January: Ann Marie Marciarille (UMKC), Zak Kramer (Arizona State), Deborah Borman (Northwestern), Jordy Singer (New England), and Jan Osei Tutu (FIU). In addition, my FIU colleague Eric Carpenter will continue covering Season 2 of Serial and Bowe Bergdahl.
Also, we will be hosting a MarkelFest! Happy Hour at AALS next week. It will be on Thursday evening, January 7; time and place TBD. We will post details as soon as we have them worked out. But mark your calendar to continue Dan's AALS tradition.
Thursday, December 31, 2015
Signing Off and Happy New YearAt the stroke of midnight, my coach will turn into a pumpkin, my nice clothes to rags, and my guest blogging stint will come to an end. I want to thank Howard for giving me this opportunity. I've enjoyed engaging with the PrawfsBlawg community, and hope that you will have me back in the future. This has been a great way to close one year and begin another. Happy New Year!
Monday, December 14, 2015
Serial, Season 2
Serial is back, this season covering the story of former-POW/current court-martial defendant Bowe Bergdahl. My colleague Eric Carpenter will blog the season here, posting weekly commentaries on each episode. Eric served in the Army for twenty years, both in JAG and as a combat officer, and he teaches military justice, so he can write about both the military and legal angles to the story.
Sunday, December 06, 2015
Remembering Law and Letters
My first blogging experience was as a guest blogger with the Law and Letters blog by Belle Lettre. Belle was an aspiring law professor with a scholarly focus on employment law. I discovered her blog through a link from PrawfsBlawg. We struck up a correspondence, which lead to my short stint on her site. I posted under the pseudonym Zorba after Zorba the Greek, which was an inside joke between us based on one of her posts. The pseudonym was more of an online persona than any concern with what I was writing. It was a lot of fun.
My favorite post was a commentary on working with non-lawyers. I found that many of the programs I supported at the FAA were comprised of individuals with no connection to the legal profession. They tended to view lawyers as popularized on television or books. Whenever I breached the stereotype, I'd receive comments like, "You're the first lawyer I ever liked."
It is nice to come full circle in a manner of speaking with PrawfsBlawg.
Monday, November 30, 2015
Happy December. Thanks to our November guests, who will be closing up shop in the next couple days.
Our December guests include Jessica Berch (Concordia), Chad DeVeaux (Concordia), Andrew Gilden (Grey Fellow, Stanford), and Scott Maravilla (an ALJ at the Federal Aviation Administration). Returning guests are Ian Bartrum (UNLV) and Jay Wexler (Boston University). Welcome and we look forward to a great month.
Tuesday, November 03, 2015
Go to a Different Blog
It's great to be here!
For my first post this month, I'm going to do something odd -- tell you to go to *different* blog. (Hopefully Howard and the Prawfs gang won't take away my keys!) That's right: today is Election Day, and the students in the University of Kentucky's Election Law Society are running an election analysis blog. They'll be posting about election law issues that will arise during the vote casting and counting process -- for Kentucky elections and nationwide. Every post is vetted by me first, so (hopefully) they are substantively sound.
So go vote -- and then hop on over to http://www.uky.edu/electionlaw for a jolly-good Election Day time!
Sunday, November 01, 2015
Happy November and Standard Time.
Thanks to our October guests, who may have a few final words. And welcome to our November guests--returners Eric Carpenter (FIU), Josh Douglas (Kentucky), Adam Kolber (Brooklyn), and Margaret Ryznar (Indiana-Indianapolis) and first-timers Brian Frye (Kentucky) and Caprice Roberts (Savannah).
Wednesday, October 07, 2015
Should the Umpqua shooter's mother be liable?
Chris Harper-Mercer was 26 years old when he killed 9 people last week. He was a troubled young man living at home, who should not have had access to guns. And yet he had access to 14 of them. http://www.nytimes.com/2015/10/06/us/mother-of-oregon-gunman-wrote-of-keeping-firearms.html?_r=0
Chris lived with his mother, Laurel Harper. Laurel bragged about keeping fully loaded magazines for her AR-15 and AK-47 semiautomatic rifles in easy access in her house. Laurel also knew that Chris had emotional problems. Should Laurel, and other parents of mass shooters, be held liable for the actions of their adult children?
Professor Shaundra Lewis, (Thurgood Marshall School of Law), asks this question in her timely piece, The Cost of Raising a Killer--Parental Liability for the Parents of Adult Mass Murderers, 61 Villanova L. Rev. 1 (forthcoming 2015). http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2669869 As she explains in her abstract:
[T]he shooter’s parents almost always knew their offspring were seriously mentally ill beforehand . . . Despite knowing her son was severely mentally unstable, Nancy [Lanza] left her son home unsupervised with unfettered access to her arsenal of weapons while she went on vacation. This provided her son with the perfect opportunity to make a practice run to Sandy Hook Elementary School, where he later used her firearms to shoot and kill kindergartners and first-graders.
Using Nancy Lanza’s case and other notorious mass shooting cases as examples, this article [explores] if, and under what circumstances, a parent can be held civilly liable for their adult child’s mass shooting pursuant to general common law negligence jurisprudence [particularly] parental negligence law. [It first] address[es] whether there can be parental liability for parents of adult mass shooters based upon a special relationship under current law. [Then it analyzes] negligence [doctrines] in general and its complexities, as well as explores whether a duty to protect or warn can be established in mass shooting cases. [Next it] examines whether the parents in the real-life examples referenced above breached a duty to protect or warn [and] whether those parents’ breaches caused the shooting victims’ injuries or deaths. [The Article] concludes that in some circumstances parents can, and should, be held liable for their misfeasance or nonfeasance that leads to their child’s mass killing. It further posits that the . . . possibility of parents being subjected to financial liability for their child’s mass shooting will not only incentivize parents to take more aggressive measures to keep firearms out of their mentally unstable child’s hands but to obtain the mental health assistance their child so desperately needs—measures that in the end will make everyone (including their child) safer. [The Article concludes with] advice to parents for dealing with significantly mentally ill, adult offspring residing in their home.
Although I agree that financial liability would incentive parents to limit access to guns, I wonder whether it might also encourage parents to cut ties with their adult children precisely when they need the most support. Nonetheless, Lewis’s article shines a light on the sadly recurring question of whether parents should be responsible for the preventable actions of their adult children.
I’m Andy Kim, Assistant Professor at Concordia University School of Law. My own research focuses on criminal law and empirical analysis of the law. I’ll be guest blogging for the month. Hope you enjoy!
Sunday, October 04, 2015
Today is the 10th anniversary of my first post on Prawfs. I started the day after the Harriet Miers nomination -- the nomination that launched the blawgosphere. I was only a guest blogger, but then this happened, and Dan invited me to stay on permanently. It has been a wonderful experience. I cannot imagine where I would be right now in my career without Dan and Prawfs. Blogging here enabled me to be a part of the national conversation with other scholars (and future FTC commissioners) on the controversies of the day. It got me to meet (and cyber-meet) a lot of really interesting law profs through book clubs, the Research Canons Project, open-source casebook conversations, everyday blogging, and the Prawfs (& cosponsors) Happy Hours that Dan masterminded. I never made a PrawfsFest!, which I really regret, but as part of the Prawfs community I met a lot more folks than I ever would have met otherwise in the academy.
The last few years have been tough for law students, law schools, and law profs. And the last year has been particularly hard as we continue to mourn Dan's absence. The Prawfs community has stayed strong in Dan's memory, and I know the site will continue to offer a place for "raw profs" young and old to meet, greet, tell us a little about themselves and their work, and make connections with the national community.
It is with sadness, then, that I tell you that I am leaving PrawfsBlawg. I will be joining the Conglomerate to do more blogging on corporate and employment law issues. I haven't done much blogging in the past year, and I haven't done much subject-area blogging in much longer than that. And I've probably done too much blogging about law schools and the issues they face. If you're interested in some of my bigger picture perspectives, you can check out "Funding Legal Scholarship" and "Law Students and Legal Scholarship," both of which started as blog posts here. (And I continue to think that AALS should be a bigger player here, even in the face of Dean Rodriguez's naysaying.)
So this is a goodbye -- at least in my capacity as "perma-prawf." I look forward to Prawfs sticking around for at least a few more decades, serving as a place for folks in the law school universe to share ideas, concerns, and sentiments. And I look forward to participating in that community. Thanks to everyone here for their hard work and generosity of spirit. And one more "thanks" to you, Dan -- you are the root for all that has followed.
Thursday, October 01, 2015
Happy October. A farewell and thanks to our September guests, who may have a few final words.
And welcome to our October guests: Returning to Prawfs are Eugene Mazos (Wake Forest), Deborah Ahrens (Seattle), Andrew Siegel (Seattle), and Fredrick Vars (Alabama). And joining us for the first time are Rhett Larson (Arizona State), Andrew Kim (Concordia), and Kalyani Robbins (my colleague at FIU).
Monday, September 14, 2015
Subconscious Juror Bias
I am a big fan of juries. But it is our job as lawyers to be sure that we structure the process of summoning, seating, and using juries in a way that maximizes their effectiveness. I have argued that we need to do a better job of writing instructions they can understand (because they really try), and that broader jury question formats are more consistent with the political and instruments purposes of the jury. My interest became more than academic when I actually served as a juror in a criminal trial in 2014. That experience reinforced my theoretical expectations: a very diverse group of jurors analyzed the evidence, listened to and learned from each other, deliberated carefully, referred to the court's instructions, and took the process very seriously.
I was so enthusiastic about the experience that, the following semester, I taught a seminar about juries. The students read a lot of empirical information about juries -- from selection through deliberation and on to post-service issues. And they did a bit of research of their own. (The students also blogged, which I recommend as a way to get students to think and write). One issue kept coming up in almost every context: the impact of juror biases, especially racial biases, on the entire jury system. The Batson process would be laughable if the impact weren't so serious. In addition, as in other areas of the law, subconscious bias on the part of people who believe themselves to be racism-free is hard to prove.
That's why I found this recent New Jersey case, State v. Brown & Smith, so fascinating. Brown and Smith were charged with carjacking, and their defense was that they were not the carjackers. During jury deliberations, Juror #4 told two other jurors that she had seen two African-Americans in her neighborhood and this made her “nervous” because this was not typical in the area where she lived. She therefore thought this “may have had some kind of sinister connection to the trial.” The judge questioned all three jurors and assured them that they were not in danger, but the jurors' assumptions about race went largely unexamined.
In considering on appeal whether the jurors should have been removed, the Appellate Division got it:
When Juror 4 inferred a sinister conspiratorial purpose from a facially innocuous event, based only on the race of the participants, she revealed a deeply-rooted, latent racial bias that required her removal from the jury. The trial judge erred in permitting her to remain on the jury and continue deliberating merely based on the juror's self-serving denial of racial bias. Her initial instinctive, subliminal association of race with criminality or wrong-doing far trumped her subsequent assurances of impartiality. In her willingness to come forward and candidly report her misgivings, Juror 4 also revealed her unawareness of how engrained her racial bias was in her subconscious. This incongruity between Juror 4's conscious acts and latent beliefs is one of the most pernicious, unintended aspects of our jury system. (p. 3 of PDF)
The court wrote at length about the trial process, hoping to provide guidance to trial judges that would make clear that the trial judge's attitude -- "[W]e expect to some extent people have developed certain prejudices, some fixed ways of thinking" -- is unacceptable. A juror's assurance that he or she has no biases, or can set them aside, should not overcome evidence of lurking racial profiling.
By the way: for a wonderful weekly email with news related to both civil and criminal juries, subscribe to the National Center for State Court's Jur-E Bulletin.