ip + internet

Apple, Beatles, iTunes...

2006-05-08T08:43:00.000-07:00

For anyone interested in the Apple Computer/Apple Corps dispute over Apple Computer's reach into the music market, a British court decided that Apple Computer may use its logo in connection with its iTunes store. Article here.

Fibonacci Poems Reach new level of popularity

2006-04-23T08:46:00.000-07:00

If you are like me, when exams come around you choose to surf the web instead of studying. For those of you like this, you may be interested in reading about a form of poetry that is gaining some popularity over the web. Fibonacci, the mathematical based poetry that most of us did in middle school, has become popular as a result of one blogger. To read the article click here.

Google's Entrepreneurial Chinese Endeavor - Part 47

2006-04-23T06:13:00.000-07:00

Just kidding about the title. I just happened to see an article in today's N.Y. Times Magazine that goes into a lot of detail about what's driving Google's ongoing growth in the far East. If you are very interested (i.e., it's really long) and you're not tired of discussing or thinking about the issue in the first place, the article is found here.

If nothing else, the title is clever: Google's China Problem (and China's Google Problem). I'd like to write an article someday entitled: OSU Law's Beazley Problem (and Beazley's OSU Law Problems). Actually, maybe it'd have to be a treatise, rather than an article. Cheers everybody, happy exam studying!

Ohio, broadband access, election considerations...

2006-04-17T13:28:00.000-07:00

Ken Blackwell mentioned in his noon-time speech today that he supports universal broadband access (Ohio as the universe, of course) as part of his vision to revitalize Ohio's economy.

noon talk on municipal wifi

2006-04-13T08:57:00.000-07:00

http://www.osu.edu/events/eventView.php?Event_ID=380271

Drinko Hall Room 348

Angela's presentation:

2006-04-12T20:57:00.000-07:00

Angela’s presentation: Ringtones and the Copyright Act – striking the balance between the rights of copyright owners and the needs of the users in the digital world.

The current market for ringtones is a lucrative one. At present, ringtone companies charge users between $1.99 and $5.00 to download their favorite song. Ringtones funneled 3.5 billion into the music industry last year, there are over 180 million cellphones ringing in the U.S alone.
What is a ringtone/ringback/realtone?
A ringtone is a simple series of tones that sound like a favorite song. A realtone is a 20-30 second snippet of an actual sound recording. Ringbacks are the sound heard when making a call while the other party receives a ringing signal
Currently there is a controversy between music publishers, artists, performance rights organizations, ringtone vendors, and record labels over how the laws that govern the sales of its products apply to ringtones.
Section 115 of the Copyright Act governs compulsory licensing of the reproduction and distribution rights for nondramatical musical works by means of physical phonocards and digital phonorecord deliveries. Section 115 states that “reproduced works subject to compulsory fees cannot be fundamentally altered.” According to music publishers, if one takes just a 30 second snippet of a song (a ringtone) - that is a fundamental alteration. A mechanical compulsory license is not available unless the licensee records the entire composition not just a few seconds. Thus a ringtone is a derivative work and section 115 does not currently grant a licensee the right to create a derivative work instead ringtones ought to be subject to licensing negotiations.
For the purpose of paying music publishers, record labels would like to rely on the digital phonorecord delivery provisions of the Copyright Act, which would result in mechanical license fee payments of 8.5 cents per ring tone download. Record labels observe that ring tone distribution is accomplished by “distribution of a phonorecord of a nondramatic musical work by means of a digital transmission” which is just what the statute defines as a “digital phonorecord delivery.” (17 U.S.C. Section 115(c)(3)(A)).
Currently, any licensee who sells a ringtone has only to notify the Harry Fox Agency( a New York based collecting agency that acts as a clearing house for much of the licensing monies flowing to music publishers), of a sale and pay the 8.5 cents compulsory licensing fee per ringtone sold. Section 115 of the copyright act forces music publishers to accept relatively small “compulsory license” fees for their copyrighted works.
If, on the other hand ringtones are reproductions that make a significant change in a songs composition or consumer use Harry Fox and its clientele can refuse to license copyrighted work for ringtone use. And they can charge much more that 8.5 cents per unit sold for the right to do so.
Music publishers and artists control or own the copyright in any musical composition that is made into a ringtone. The owner of a copyright has the exclusive right to reproduce, distribute or copy the work as well as the right to perform the work.
Publishers insist on being paid because they have the exclusive right under Section 115 of the Copyright Act to distribute the work (the right to make ones work available to the public). The record companies and artists want to be paid because of their exclusive right under section 115 to reproduce the work. Record companies also claim that a ringtones most valuable property lies in the underlying master recording of the music that makes up the ringtone.
The artists and performance rights organizations such as ASCAP claim that when a ringtone provider takes a copyrighted work and allows the consumer to try out the ringtone, the right of public performance under Section 114 of the Copyright Act is being violated. They point to the performance of the ringtone itself and its intent to attract attention. This argument hinges on whether actually hearing the download being transmitted to the receiving device is necessary to constitute a public performance. If it is not a performance, then ringtone downloads are the same as digital phonorecord deliveries and the PRO’s receive no fee.
When dealing with Digital transmissions such as realtones it is difficult to determine which rights are implicated and therefore to whom a licensee should pay in order to secure the necessary rights. Ringtone companies are being faced with demands for payment from multiple representatives of the same copyright owner such as record label, music publishers, and performance rights organizations. Each of these groups are purporting to license a different right that is involved in the same transmission. Licensees end up paying twice for the right to make a digital transmission of a single work. This makes it extremely inefficient and unfair to require a licensee to seek out three separate licenses from three separate sources in order to compensate the same copyright owners for the right to engage in a single transmission of a single work. This can take up to six months to get all the licenses for just one song. Sometimes there are difficulties in locating the various copyright owners.
We need to get the song in the marketplace as quickly as possible- songs are not popular forever especially in the case of ringtones. The ringtone companies complaint is that the current system impedes their ability to get access to as broad a collection of songs as they need. We need a new system that makes it possible quickly and efficiently to clear the necessary exclusive rights for large numbers of works.
The compulsory license is 96 years old. It was originally implemented to combat the potential monopoly that record labels could have on the music industry. However, the means to provide music to the public have changed dramatically in the last decade. It is in need of reform especially in regard to the use of new digital technology to deliver music to the public.
SOLUTION
I propose that section 115 compulsory license be repealed and replaced with a designated collective licensing structure. Most countries such as Great Britain, Germany, and France have repealed their compulsory license schemes in exchange for private negotiations and collective licensing organizations to license both the public performance right and the reproduction and distribution rights for a musical composition. This essentially will create a one stop shop for obtaining licenses for one copyrighted work and streamline the royalty processing for copyright owners.. While nevertheless permitting each publisher to set its own rates. We already have ASCAP for performance rights which does not require a statutory license, why not offer the same for distribution and reproduction rights?
Congress should not set the mechanical license prices, the participants within the music industry should decide because they know the marketplace. Without the statutory 8.5 cents per unit payment the more popular songwriters would receive greater payments than the less popular ones. The more desired an item is, the higher the price should be commanded. The compulsory license is putting a ceiling on the royalty rate in privately negotiated licenses; it is placing a limit on the marketplace
Presently, the songwriters are hurting because royalties are not being distributed while a debate among publishers continues as to the proper royalty rate. These organizations will provide a more competitive environment in favor of the individual songwriter because they will have more of a choice in who administers their musical works. I understand the nature of the industry and would still require that these same organizations are subject to some type of governmental oversight.

Christine's presentation

2006-04-10T15:53:00.000-07:00

Christine’s Presentation: Trademarks as Metatags – Is This Trademark Infringement?

This issue is whether or not the use of a trademark as a metatag for a website of someone other than the trademark owner constitutes infringement.

Some background on Metatags and Search Engines: Metatags are HTML code used to describe the contents of web pages. The user can not see them but, they can be scanned by search engines. They are important for internet marketing strategy because many users will not look beyond the first 20 sites that are returned by a search. Thus, some designers use competitor trademarks as metatags in an attempt to lure the competitors’ customers to their site. However, metatags are not the sole factor in determining which pages are returned by a search. Rather search engines use a number of other factors. For example, Google uses over 100 factors including a PageRank algorithm. The single biggest factor on google is the number of other sites that link to a particular URL. Nevertheless, there have been a number of cases in which designers have been able to successfully manipulate metatags in order to alter search results and possibly confuse customers. By renouncing all responsibility in such cases, the search engines have provided little assistance to trademark owners. Google at least has a complaint procedure and claims it will conduct a “limited investigation of reasonable complaints.” I was not even able to find a procedure for Yahoo.

Metatag cases are different from other trademark infringement cases because metatags are invisible to the user. Thus, courts have found it difficult to apply traditional tests, such as the strength of conflicting marks and the degree of similarity between conflicting marks, for establishing likelihood of customer confusion (as required by the Lanham Act). A few courts have taken notice of the fact that the Internet market operates differently and have followed the “initial interest doctrine” in deciding such cases. In Playboy, the district court explained this doctrine as follows: Initial interest confusion, as coined by the Ninth Circuit, is a brand of confusion particularly applicable to the Internet. Generally speaking, initial interest confusion may result when a user conducts a search using a trademark term and the results of the search include web sites not sponsored by the holder of the trademark search term, but rather of competitors. The Ninth Circuit reasoned that the user may be diverted to an unsponsored site, and only realize that she has been diverted upon arriving at the competitor's site. Once there, however, even though the user knows she is not in the site initially sought, she may stay. In that way, the competitor has captured the trademark holder's potential visitors or customers.” Playboy Enters v. Netscape Communs. Corp., 55 F. Supp.2d. at 1074 citing (Brookfield Communs. Inc. v. West Coast Entertainment Corp., 174 F.3d at 1062-64).

Brookfield was the first case to deal directly with the metatag issue. The court concluded that West Coast improperly benefited from the goodwill in Brookfield's trademark by placing the mark in its metatags for the sole purpose of diverting customers to its own web site. The court reasoned that "web surfers looking for Brookfield's 'MovieBuff' products who are taken by a search engine to 'westcoastvideo.com' will find a database similar enough to 'MovieBuff' such that a sizeable number of consumers who were originally looking for Brookfield's product will simply decide to utilize West Coast's offerings instead." Even if the initial confusion is dispelled and the misdirected cus-tomers do not make a purchase, the act of purposefully generating pre-sale confusion by attracting or diverting potential customers by using another's trademark is sufficient to constitute trademark infringement. Paylago article from the IDEA: Journal of Law and Technology citing (Brookfield Communs. Inc. v. West Coast Entertainment Corp., 174 F.3d at 1062-64).

On the other hand, the 6th circuit has recognized the doctrine of initial interest confusion but, has never analyzed the metatag issue separately and even in other contexts has not applied the doctrine so broadly. The court has continued to look at other more traditional factors and has been primarily concerned with "whether the defendant's use of the disputed mark is likely to cause confusion among consumers regarding the origin of the goods offered by the parties." Gibson Guitar Corp. v. Paul Reed Smith Guitars, 423 F.3d 551 citing (Paccar Inc. v. Telescan Techs., 319 F.3d 243).

The broad view of the 9th circuit appears to be the majority. I would like to propose a more narrow view – similar to the 6th circuit requiring confusion as to source or possibly even confusion at the point of sale rather than pre-sale. I would like your opinions as to which doctrine you think is the best and why.

Milton's Presentation: Legal/Policy Analysis of the NSA Domestic Spying Program

2006-04-09T17:39:00.000-07:00

Was the secret NSA surveillance program legal? My research has led to the conclusion that there is a good argument supporting the constitutionality of the program, but it most likely violated the Foreign Intelligence Surveillance Act (FISA). The difficulty surrounding this issue is due to the details of how the surveillance was done being classified.

Here is what we know - On December 16, 2005 the New York Times reported that months after the Sept. 11 attacks, President Bush secretly authorized the National Security Agency to eavesdrop on Americans and others inside the United States to search for evidence of terrorist activity without the court-approved warrants ordinarily required for domestic spying.

Under a presidential order signed in 2002, the intelligence agency has monitored the international telephone calls and international e-mail messages of hundreds, perhaps thousands, of people inside the United States without warrants over the past three years in an effort to track possible ''dirty numbers'' linked to Al Qaeda.

The previously undisclosed decision to permit some eavesdropping inside the country without court approval was a major shift in American intelligence-gathering practices, particularly for the National Security Agency, whose mission is to spy on communications abroad. As a result, some officials familiar with the continuing operation have questioned whether the surveillance has stretched, if not crossed, constitutional limits on legal searches.

President Bush's rationale for eavesdropping on Americans without warrants rests on questionable legal ground, and Congress does not appear to have given him the authority to order the surveillance. The analysis, by the Congressional Research Service, a nonpartisan research arm of Congress, was the first official assessment of a question that has gripped Washington for three weeks: Did Mr. Bush act within the law when he ordered the National Security Agency, the country's most secretive spy agency, to eavesdrop on some Americans?

The report, requested by several members of Congress, reached no bottom-line conclusions on the legality of the program, in part because it said so many details remained classified. But it raised numerous doubts about the power to bypass Congress in ordering such operations, saying the legal rationale ''does not seem to be as well grounded'' as the administration's lawyers have argued.

The Legal Arguments. A full legal analysis of this issue encompasses the law under FISA, the Authorization to Use Military Force, and the inherent authority under the 4th Amendment.

Foreign Intelligence Surveillance Act. Congress enacted FISA in response to the Keith case. Specifically, 50 U.S.C. 1809 prohibits "electronic surveillance" except as authorized by statutory law: "A person is guilty of an offense if he intentionally . . . engages in electronic surveillance under color of law except as authorized by statute."

So what statutory authorization is there? Congress made clear back in 1978 that there are two, and only two, statutes that authorize wiretaps within the United States. One is “Title III,” which gives the rules for wiretaps for law enforcement. The other is the Foreign Intelligence Surveillance Act, which gives the rules for wiretaps for foreign intelligence purposes.
Since 1978, 18 U.S.C. Sec. 2511(2)(f) has said that Title III and FISA “shall be the exclusive means by which electronic surveillance ... and the interception of domestic wire and oral communications may be conducted.”

So that is why the NSA wiretaps appear illegal. Government officials can only wiretap “as authorized by statute” and the only statutes that count are Title III and FISA. The NSA wiretaps did not use the judicial procedures of either Title III or FISA. (Swireblog)

Authorization to Use Military Force (AUMF). The authorization states in relevant part:

AUTHORIZATION FOR USE OF UNITED STATES ARMED FORCES.(a) IN GENERAL.--That the President is authorized to use all necessary and appropriate force against those nations, organizations, or persons he determines planned, authorized, committed, or aided the terrorist attacks that occurred on September 11, 2001, or harbored such organizations or persons, in order to prevent any future acts of international terrorism against the United States by such nations, organizations or persons.

The Administration's claim is that the AUMF counts as a "statute" that authorizes the surveillance: 50 U.S.C. 1809 states that "A person is guilty of an offense if he intentionally . . . engages in electronic surveillance under color of law except as authorized by statute," so if the AUMF authorized the electronic surveillance, then the NSA program didn't violate FISA.The Supreme Court considered the legal effect of the AUMF in Hamdi v. Rumsfeld, which I plan to discuss because it is too lengthy to post here. Does the AUMF authorize the surveillance? The answer is not entire clear.

The Fourth Amendment. There are two arguments under the 4th Amendment - the border search exception and a national security exception.

The border search exception permits searches at the border of the United States "or its functional equivalent." United States v. Montoya De Hernandez, 473 U.S. 531, 538 (1985). The idea here is that the United States as a sovereign has a right to inspect stuff entering or exiting the country as a way of protecting its sovereign interests, and that the Fourth Amendment permits such searches. Courts have applied the border search exception in cases of PCs and computer hard drives; if you bring a computer into or out of the United States, the government can search your computer for contraband or other prohibited items at the airport or wherever you are entering or leaving the country. See, e.g., United States v. Ickes, 393 F.3d 501 (4th Cir. 2005) (Wilkinson, J.). (The Volokh Conspiracy)

The second argument is question of whether there is a national security exception to the Fourth Amendment that permits the government to conduct searches and surveillance for foreign intelligence surveillance. The Supreme Court left this question open in the so-called "Keith" case, United States v. United States District Court, in 1972. Justice Powell's opinion in the Keith case concluded that there was no national security exception to the Fourth Amendment for evidence collection involving domestic organizations, but expressly held open the possibility that such an exception existed for foreign intelligence collection. (The Volokh Conspiracy)

My conclusion and proposal: The NSA wiretapping is illegal under law but may be constitutional. If it is indeed constitutional, I believe that the president would have the authority to enact this program even if it is illegal under the law. I would propose keeping the program intact but allow for oversight by both the FISA court and the House and Senate Intelligence Committees. Since the program is done in secret, any objections would be ruled on by the FISA court only after an objection is made in either the House or Senate.

Issue I would like discussed:
1. I would like to know your views on the legal arguments presented. Are they persuasive? If not, what should be the proper response considering that the nation is at war?

2. What kind of oversight should this program have? Should it be evaluated only by the FISA court? Should the full Intelligence Committees in Congress by briefed? Should only the “gang of eight” by notified?

A better DRM?

2006-04-06T12:08:00.000-07:00

Sun Microsystems has proposed an open sourced DRM called DReaM (clever huh). The idea sounds odd at first, but it is interesting, basically it would be DRM to make companies happy, but to have it run across platforms so that once you buy your song you could use it on any device. (don't worry companies will figure out how to sell you a copy again somehow)
Even Larry Lessig (Stanford Law prof) likes the idea:

"In a world where DRM has become ubiquitous, we need to ensure that the ecology for creativity is bolstered, not stifled, by technology. We applaud Sun's efforts to rally the community around the development of open-source, royalty-free DRM standards that support 'fair use' and that don't block the development of Creative Commons ideals."

It isn't perfect though, and some still question if it is just an alternative to Play For Sure by Microsoft or Apple's DRM. However, one difference is the idea that devices able to play DReaM would be certified by an independent board, rather than by any company.

(see Wired article "Reasons to Love Open-Source DRM")

Users of Facebook, etc. beware

2006-04-05T19:04:00.000-07:00

This won't surprise many, but it is common for employers to scour the internet for any digital history of indiscretions. See article from Netscape/BusinessWeek about "You are what you post." And, according to students here at Moritz, our administration surveils Facebook and the like when considering giving references. I swear I don't have a tin-foil hat.

Unfortunate Effects of Easy Access

2006-04-05T12:22:00.000-07:00

Yesterday, Justin Berry, who was a porn star in the child pornography industry (and I call it an industry because that's what it is, whether you like it or not), testified in a Congressional hearing. He started doing webcam porn when he was 13. The irony is that his mother, whom he lived with at the time, works as a counsellor for sexually abused children or something related. NYTimes reporter, Eichenwald, first broke the story ("Through his webcam, a boy joins the sordid online world") last year. Apparently, the child porn industry is huge, conservatively estimated at $2 billion/year. One of the favored methods is to utilize various directory/blog services (such as myspace.com) to seek out young kids who have webcams and convince them, with words, cash, or presents, to perform sexual acts on the webcam. Typically, money is exchanged via paypal and credit cards. Alternatively, Amazon wish lists allow for "fans" to purchase gifts for the "stars" directly.

Mostly, the companies that make this process so easy with their helpful tools/products/services do it unwittingly. Although the child pornography industry has always been around, with the advent of easy-to-use technology, it has exploded (and continues to grow alarmingly). Justin turned in to the FBI records of his subscribers, amounting to about 1500 people, along with IP addresses and credit card numbers, including the Intel engineer primarily responsible for the P4 processor.

On several blogs, heated debates have erupted, (Here) (Here) (Here) mostly centered on Justin's culpability as a 13-year-old who "should have known better." That the adults who played a role in propogating child pornography should be prosecuted is a fairly unanimous concept, although the FBI/Department of Justice has done very little in this regard. Tomorrow, the DOJ will go in front of the same Congressional committee to answer some questions.

Edward's Presentation: Google Book Search: Fair use?

2006-04-03T21:07:00.000-07:00

Some of this may be a repeat for folks as we touched on some of this earlier in class. However, to refresh, Google Book Search (formerly Google Print) aims to allow people to search utilizing a full text search inside every printed book that is inside the collections of the contributor libraries that Google is in the process of scanning. From the scanned books there are going to be three categories of books, those in the public domain (and have no controversy over), those that the publisher has authorized to be searched (again no controversy), and a third category of books, including out of print books that are under copyright. Copyright owners have the option to opt-out, but part of the controversy comes from this choice, as Google has chosen not to do an opt-in system as they feel this would devalue the project greatly.

Google Book search presents the fascinating copyright question, that is for the first time being dealt with as the technology to develop such a collection is only being realized. The copyright question is where to draw the line for fair use and whether the Google Book Search falls under fair use despite copying and storing a complete copyrighted work that was published in print.

There are essentially two different questions that can be discussed, one of them is whether Google Book Search is legal under existing law, a secondary question is whether we want the law to allow them to or not.

In fall 2005 two different lawsuits were filed against Google for the Google Book Search, one is a class action lawsuit brought by the Author’s Guild and several authors and a second lawsuit was filed by a group of publishers including McGraw-Hill, Penguin, Simon & Schuster and John Wiley. The lawsuits allege “Massive copyright infringement” and request an injunction to stop and in the class-action suit they request damages.

Google’s copying of the full text of copyrighted books has two points of copyright violations as alleged in the lawsuits against them. The first violation (stage 1) occurs when Google scans the book which they didn’t purchase into their database and the book then resides in zeros and ones in a server farm. The second violation (stage 2) occurs when a user submits a search request to Google and Google scan through the database on its server through the full text and pulls up and displays a small segment of text a few sentences at most, on its website for the user.

The author’s and publishers state that either stage (although you can’t have stage 2 without stage 1) is a violation of copyright law.

Is it legal?

Field v. Google (District Court NV 2006)

Field alleged that Google violated his copyrights to 51 works he created by storing them in an online repository (cached in order to facilitate searching and other uses, including keyword highlighting) The court held for Google. In holding this they cited an implied license theory (posting on the web invites others, there was a meta tag established opt-out ability that Field knew about) a fair use theory (four factors from Copyright act)

Kelly v. Arriba Soft (336 F.3d 811, 9^th Circuit 2003)

Arriba Soft operated an internet based search engine that in its ‘crawl’ of the net copied photographs and converted them to ‘thumbnails’ displaying them later on a page of search results, with links to their original location. The 9^th Circuit held that this was fair use. This was despite the commercial nature of the use, Arriba Soft was not “trying to profit by selling Kelly’s images” which would have been a distinct difference. The court also found that the nature of the fair use was transformative in that it “improved access” as an indexing tool.

UMG Recordings v. MP3.com

MP3.com had a database of songs, which came from CDs it copied. Users of MP3.com’s “Beam-it Service” placed their copy a CD to authenticate their ownership. Following the authentication users were able to stream that album over the internet, essentially allowing them to “space shift” music that they already owned. The court held that this was a copyright violation as they were merely repackaging the same music and there was no claim for transformation.

Under the case law it seems that there is an argument for Google, by following the Kelly case. The argument under that case is that Google has partaken in fair use, when applying the four factor test. However, Google Book Search doesn’t have the implied license theory that was present in Kelly and it is debatable how much this weighed in, as MP3.com in terms of the medium transformation aspect is more on point, however MP3.com didn’t add functionality (the search function) and also was providing a full copy to users, whereas here they are not. The MP3.com case found the initial copying of the 50,000 CDs to be the violation, so here a court could get wrapped up the stage 1 aspect. Lastly in predicting the outcome of the lawsuit, the plaintiffs have chosen to sue not in the Ninth district, but in the Southern District of NY instead which is felt to be less likely to grant fair use.

Should it be legal:
Ignoring for the moment of how a court would rule in the US, it is interesting to debate the issue of whether such usage should be legal or should be fair (The legislature could declare it fair). The arguments for the search are numerous as anything that can advance ‘human knowledge’ is potentially a great tool for a society. Further such a research device potentially increases the market for books (a few studies show that sales have increased for books after being entered into the Google Book Search, Also Amazon.com which has a search inside feature has found that sales increase 9% for books that have the feature) Despite arguments that book publishers will create this functionality, as has begun to occur on Amazon, it is unrealistic to expect this due to the enormity of the task, nor is likely that this will be able to be put into one database, which is at the heart of the value of this project.

Closing Notes:

I will acknowledge that I am biased on this issue, therefore I hope that the class discussion will be useful in poking holes, providing new insights, or getting me to look at the issue in a new way.

Brian's Presentation: Awarding Injunctions Once Infringement is Found.

2006-04-03T06:53:00.000-07:00

My research paper will discuss when injunctions should be awarded after infringement is found. The two sides of the argument have surfaced in MercExchange LLC v. eBay, inc. 401 F.3d 1323 (Fed. Cir. 2005). The Supreme Court recently heard oral arguments in this case and the decision could have a huge impact on patent law.

The history of the case is as follows. In May of 2003, a jury found eBay liable for willful infringement and awarded damages in the range of $10-20 million (it is hard to say the exact number because on appeal many of the amounts were adjusted, dropped, or remanded). In August of 2003, MercExchange’s motion for a permanent injunction was denied by the District Court. The judge recognized he had discretion and identified four factors to consider before awarding an injunction. The factors were: (1) whether the patent holder would be subject to irreparable injury without an injunction, (2) whether the patent owner had an adequate remedy at law, (3) whether an injunction would be in the public interest, and (4) whether the balance of hardships tipped in the patent owner’s favor.

On appeal the Federal Circuit reversed and held that a permanent injunction should issue once infringement is found, except in exceptional circumstances (e.g., need to protect public health). The court noted that this was not an exceptional circumstance and awarded a permanent injunction. Subsequently, the Supreme Court granted eBay’s petition for certiorari. Below I’ll briefly present some arguments for the two views. Although eBay calls the current Fed. Cir. rule an “automatic injunction” rule, I am reluctant to use this label because both the Fed. Cir. and MercExchange acknowledge that the court does have some discretion. Until I come up with something better I will refer to eBay’s rule as the “high-level of discretion” rule and MercExchange’s rule as the “near-automatic” injunction rule.

“High-Level of discretion” rule (eBay)
- 35 U.S.C. § 283 contains permissive language: “may” grant an injunction.
- Prevent opportunistic behavior by trolls who extract disproportionate royalties to the detriment of innovation without practicing the patent.
- Problem because technology products are complex and may have hundreds of patents that read on them. A patent for a small part could cause large complex products to be pulled from the market due to one small infringing piece, regardless of the level of infringement.
- The above problem is multiplied by the fact many companies bought up lots of patents inexpensively, often in bankruptcy auctions, after the dotcom bust.
- eBay also argues that the field of technology should effect the likelihood of injunction, and in this case the patent is a business method, which is a less favored technology for patents.

“Near-automatic” injunction rule (MercExchange)
- Agrees four-factor test should apply, but states that the third and fourth factors (public interest and balance of hardships) strongly favor the patent owner.
- Right to exclude and not a right to damages that defines the essence of a patent owner’s rights as stated in 35 U.S.C. § 154.
- Right of exclusivity means nothing if court won’t enforce it.
- Constitutional argument: to provide the “exclusive right” to their discoveries. Article I, Clause 8.
- Denial of injunction would diminish the value of the incentive to innovate, need injunctions to attract capital. Expectation of injunction encourages investment in unproven and risky technologies that are expensive to develop.
- Possibility of injunction drives parties to settlement, and in some cases may serve as an equalizer for small company trying to fend of larger competitors.
- Too much discretion could result in compulsive license system.

I expect many more arguments to arise during our class discussion, but I hoped to provide an example of some of the arguments on each side. I can not comfortably side with either party as of right now. I initially backed eBay because I just felt trolls seemed to be cheating the system, then I was beginning to think that the right to exclusive use is the backbone of patent law and giving judges too much discretion would result in a compulsory license system. Right now I am in the middle, I hope the class discussion may push me one way or the other. If I wrote my paper right now I would probably support a rule with a presumption towards an injunction, but would work on creating a list of circumstances when they shouldn’t issue (and this case may be one of them). I also plan to present some solutions not presented by either party in the case.

reminder: paper presenters need to post by Friday of week before

2006-04-01T15:12:00.000-08:00

The spring break may have screwed people up. But we have to get back on track. If you still have a presentation to make, you must post your entry on this blog by the Friday in the week before your presentation.

Also, you need to turn in your outline on the Monday before the week of your presentation. If you forget these deadlines, you do so at your own risk to your grade.

Kirk's Presentation: Liability for Negligent Software Design

2006-03-30T22:55:00.000-08:00

The FBI conducted a survey in which they determined that approximately 87% of respondents had experienced a computer security incident, such as viruses or denial of service attacks. From the results of the survey, the FBI calculated that business lose approximately $67 billion dollars each year due to computer security incidents. Not only does this problem cause significant economic damage, but it also leads to loss of consumer confidence in the Internet (which itself leads to economic damages).

One way to stop cybercriminals is to punish them. In 1986, Congress enacted the Computer Fraud and Abuse Act (“CFAA”), 18 U.S.C. § 1030. This act provides both criminal and civil penalties against the cybercriminal. In addition to this act, there are state laws. However, these laws have not been effective. The rate of cybercrime continues to increase. In addition, although businesses can recover from the cybercriminal under CFAA, 18 U.S.C. § 1030(g), this right isn’t very valuable unless the cybercriminal is able to pay for the damage.

Another way to stop cybercriminals is to limit their ability to attack by creating better software. To encourage better software development, software developers should be held liable for poor software development that cybercriminals are able to exploit to carry out an attack on a business.

Under current law, software developers are easily able to avoid liability. To start with, CFAA specifically states that “no action may be brought under [this act] for the negligent design or manufacture of computer hardware, software, or firmware.” Tort law is inapplicable due to the superseding intentional act of the cybercriminal. In addition, the economic loss rule would limit recovery to physical and property damages, pure economic damage is generally not recoverable (based on the theory that pure economic liability should is covered by contract law). Related to tort law is product liability. Product liability is also limited by the economic loss rule. Another aspect of product liability law is the definition of a product. Some courts have held that software is not a product. Wilson v. Midway Games, Inc., 198 F.Supp.2d 167 (2002) (Plaintiff claimed the design and marketing of a game, Mortal Combat, caused Plaintiff’s son’s death. The court held the game was not a product.)

The definition of product is construed similarly to the definition of goods in UCC Article 2. Courts are split as to whether software is a good and therefore whether UCC Article 2 is applicable. Assuming software is a good, most software developers, particularly mass-market software, disclaim the implied warranty of merchantability and the implied warranty of a particular purpose. The express warranty cannot be disclaimed, but it can be easily limited to the terms of the license agreement through the parol evidence rule. The warranties in UCITA (which does apply to computer software) are similar to the UCC warranties.

My proposition is to create liability for negligently designed software. I know that it is impossible to create perfect software (in computation theory terms determining whether software meets specifications is undecidable), therefore strict liability would not be appropriate. Two possible methods of determining liability include: (1) foreseeable risks of harm posed by the software could have been reduced or avoided by the adoption of a reasonable alternative design by the software developer (this is similar to the Restatement (Third) of Products Liability § 2 approach); or (2) something along the lines of the Hand formula, balancing cost of damage times risk against the cost of developing software a better way.

Recovery would be allowed for purely economic damage (as well as physical and property damage). The liability would be limited by comparative or contributory negligence (software developers should not be held liable for the company that has lax network security or the user who opens the e-mail with the virus). Since the liability could be so great, the liability would simply be several liability; each negligent actor responsible for his or her own part.

There are two possible ways to implement this liability. The first is through federal legislation, enacted under the commerce clause. The benefit of federal legislation is uniformity. However, a federal right would pre-empt state tort law.

The biggest problem with this solution is that it might be difficult for a plaintiff to prove that the software was negligently designed. In addition, I am not sure what type of chilling effect it would have on the software industry.

Joe's Presentation on Athletes' Right of Publicity in their Names & Stats

2006-03-29T13:14:00.000-08:00

Attorneys and law students often refer to an area of law called “Sports Law,” which essentially means lawyers working for professional athletes, leagues, teams, advertisers, and others in engaged in the exhibition or promotion of sports. Many lawyers—even those who use the term—also call the concept of “sports law” a misnomer, because what it really involves is the intersection of various legal disciplines all at once. It’s probably not difficult to imagine the areas of law that impact sports on a regular basis—antitrust, labor, contract, insurance, real estate, and even criminal law. One area that sometimes gets overlooked when talking about sports law is its intersection with Intellectual Property law; namely copyright, trademark, and the all-but-forgotten right of publicity. Perhaps a reason that IP gets excluded from sports law is that patents aren’t generally a large factor.

A current battle in sports and IP law is being fought right now in a federal district court, where an online fantasy baseball operator has sued Major League Baseball and the MLBPA (Players’ Ass’n) to enjoin them from charging a licensing fee to any service making commercial use of players’ statistics.

First, a little background on fantasy sports is necessary. The Fantasy Sports industry trade group believes that 6 million people played fantasy baseball last year, and spent almost 15 days worth of time on it, and the industry is still growing at a rate of roughly 7% annually (and fantasy football is even more popular). Fantasy baseball—Rotisserie baseball—involves a group of people drafting players onto their “own” teams, and then keeping track of their team's statistics over the course of the season to see who wins. In today’s day of Internet communication the service provider does all the calculating and scoring, but before fantasy sports were online, contestants had to keep track of the stats themselves: They had a fantasy league "commissioner" who entered the stats weekly from the U.S.A. Today, and then mail reports to the team “managers.” Professor Michaels recall playing this way in the mid 1980s, when he discovered" such players as Edgar Martinez, Frank Thomas and Cecil Fielder.

The licensing fee being demanded by the League and Players’ Association is essentially being compelled so that the fantasy operators can use the players’ stats. Statistics of course are more or less facts, which are not copyrightable. See Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499 U.S. 340 (1991). Compilations of facts can be entitled to copyright protection, however the players’ names and statistics do not seem to supply the requisite "originality" necessary to warrant copyrightability. See Jack F. Williams, Who Owns the Back of a Baseball Card?: A Baseball Player’s Rights in his Performance Statistics, 23 Cardozo L. Rev. 1705, 1710–12 (May 2002).

While the copyright claim doesn’t seem to hold much water, more plausible is the claim that fantasy leagues violate the players’ right of publicity. The players’ right of publicity creates a substantive right in their names and “likenesses,” and prevents them from commercial exploitation without their own consent. See id. at 1713. There is one case that goes against the League in which some old-timers sued baseball for printing their names and stats in a program (since 1947, the uniform player contract has authorized such publication, but this claim was based on stats from earlier years). See Gionfriddo v. MLB, 94 Cal. App. 4th 400, (2001). MLB won and the players lost in that case, but now the League has come over to the player's side.
Although a right of publicity claim is colorable, there are a number of obstacles in the League’s way regarding the defense of the claim:

1. Right of Publicity is a state law claim (in most states). This is important for a couple of reasons--each state can have different elements that must be proven before the court will grant relief; and perhaps more importantly, since it's a state law claim there is no federal question jurisdiction. Therefore, a plaintiff would have to assert an alternative independent jurisdictional basis to get into federal court.

2. Assignment of Right of Publicity. How would the League sue for Right of Publicity in the first place? Right of Publicity is not like a trademark, in that it is not registrable per se. Also, Right of Publicity is not assignable in the same manner as a Patent, Copyright, or Trademark. To be sure, the right of publicity is assignable, but this type of assignment would be strictly scrutinized by the courts, because it is analogous to an "assignment in gross." In Trademark law, for example, an assignment in gross is considered abandonment. See, e.g., Hat Corp. v. D.L. Davis Corp., 4 F. Supp. 613 (D. Conn. 1933) (assignment of personal name by the son of the president of a famous hat mfr. was an assign. in gross, since the son had not been involved in the business); cf. Rick v. Buchansky, 609 F. Supp 1522 (S.D.N.Y.), dism'd 770 F.2d 157 (2d Cir. 1985) (musical act's mgr. is the owner of group's TM despite the turnover of members).

Part B, if you will, of bringing these suits is standing: Although the assignment of a right of publicity generally grants ownership to the assignee, this ownership is limited to offensive uses of the right (i.e., the right to exploit commercially). The personal interests protected under the right of privacy are usually untransferable, thus defensive uses of the right (i.e., asserting a claim for invasion of those rights against a 3d party) are only actionable by the assignor. See Restatement (Third) Unfair Comp. § 46(g).

3. Assuming no. 2 is correct, meaning the League could not assert itself as a plaintiff, each player would have to file his own suit against each alleged infringer. There is another possibility, however. See Allen v. Nat'l Video, 610 F. Supp. 612 (S.D.N.Y. 1985) (celebrity brought Lanham Act § 43(a) suit against defendant for using his look-alike in their TV commercials). The Woody Allen case is a good example of why Right of Publicity cases are difficult to win. The State of New York did not have a common law claim for Right of Publicity, so Allen brought a Lanham Act claim--because defendant's advertisements created a likelihood of consumer confusion as to the sponsorship of its goods.

Ordinarily, 43(a) is a broad section in the Lanham Act that is intended to provide relief when a defendant's goods or services are likely to cause consumer confusion about their source or origin. The district court found that the store’s advertisements were likely to cause consumer confusion as to whether Woody Allen was actually in the ads or not, and consequently whether Allen was endorsing the store. Along these lines, if the League could assert a claim that Fantasy players are likely to think that the Fantasy leagues they play are sponsored by MLB, then MLB could use 43(a). It's a stretch, but it worked for Allen.

Obviously, litigation of these claims will become convoluted, because of the way right of publicity is somewhat derived from privacy rights. See, e.g., J. Thomas McCarthy, Trademarks & Unfair Competition § 28:1, at 28–3 (1996); Prosser on Torts. Privacy seems a very unsettled area of law, and compounded with all the other legal issues, the League could have a difficult time defending these cases as they progress.

Apple having problems with iTunes musice store

2006-03-29T06:15:00.000-08:00

Apple is being sued by the Beatles' record company for violation of an agreement between the two companies over a trademark "field of use" conflict. Due to the WSJ being a paid subscription site I have copied and pasted the article below.

Apple, Beatles Face OffOver iTunes Music Store
Associated PressMarch 28, 2006 10:36 a.m.

LONDON -- Two legendary companies in the music industry are to meet Wednesday in a London courtroom to fight it out over what might be the world's most recognizable logo: A simple piece of fruit.

Apple Corps Ltd., the Beatles' record company and guardian of the band's musical heritage and business interests, is suing Apple Computer Inc., claiming the company violated a 1991 agreement by entering the music business with its iTunes online music store.

The case will be heard by Judge Martin Mann, who said during pretrial hearings that he was the owner of an iPod digital music player, which is used with the iTunes music store.
At issue is a 1991 pact that ended a long-running trademark fight between the two Apples in which each agreed not to tread on the other's toes by entering into a "field of use'' agreement over the trademark.

Apple Computer said in a statement that "unfortunately, Apple and Apple Corps now have differing interpretations of this agreement and will need to ask a court to resolve this dispute."
Apple Corps -- founded in 1968 and owned by surviving Beatles Paul McCartney and Ringo Starr, the widow of John Lennon and the estate of George Harrison -- is seeking both an injunction to enforce the 1991 agreement and monetary damages for the alleged contract breach.

The computer company's logo is a cartoonish apple with a neat bite out of the side; the record company is represented by a perfect, shiny green Granny Smith apple.
Apple Computer had asked to have the case heard in California, where it is based, but Judge Mann rejected that application in 2004 and ordered the case be heard at the stately Royal Courts of Justice in central London.
The iTunes music store first opened for business in the U.S. in April 2003; it is now available across Europe, in Australia, Japan, and Canada. About three million songs are downloaded every day from the service. In the U.S., most songs costs 99 cents; in the U.K, they fetch 79 pence ($1.38). Not available on the service are Beatles' songs, which haven't been licensed for downloading.

Presentation by Scott W.: US stance on internet gambling and the problem of money laundering

2006-03-29T06:01:00.000-08:00

Many foreign nations view gambling as a legitimate form of business and have therefore erected no barriers to the formation of websites which provide residents the chance to gamble for profit. As a result, many US residents have been able to access and bet on these offshore sites. Internet gambling has furthermore become a multi-billion dollar industry over the last decade. Due mainly to low start-up costs, high profit margins, few barriers to entry, and limited direct competition, it is likely more and more internet gambling sites will emerge.
Although there is no federal statute which directly addresses wagering on the internet, US v. Cohen established internet wagering as a wire communication. US v. Cohen, 260 F.3d 68 (S.D.N.Y. 1998). The Interstate Wire Act has been used as a federal platform upon which to prosecute internet gambling site providers. The language of the Act sets forth the following conditions: any business (1) engaged in the business of betting, who (2) knowingly use a wire communication facility to transmit bets, to (3) transmit bets in interstate commerce, as long as (4) one of the two parties (bettor or receiver of the bet) receive either money or credit from the outcome of the bet. 18 USC 1084. Furthermore, individual states have asserted jurisdiction over site operators, for example, in New York, the State Supreme Court found that a resident placing a bet on website had created a virtual casino, and thus, brought the casino operator within the jurisdiction of the State. The site’s operator had thereby violated Article 1 §9(1) of the New York Constitution. People v. World Interactive Gaming Corp., 185 Misc. 2d 852.
Last year, the WTO ruled in favor of Antigua (small island state in the Caribbean) against the United States for discriminatory treatment between foreign and local operators of horse betting. This was the fourth ruling on approximately this same complaint since 2003. The US has until April 3, 2006 to pass legislation which complies with the WTO’s ruling. Currently, the only bills on this subject appear to have a purpose contrary to the WTO ruling; essentially, they attempt to further restrict any form of gambling over the internet.
Due to the large amount of money being transmitted to and from these unregistered foreign websites, tracking funds is essentially impossible. Although most instances of money laundering occur through the formation of the internet casino, there are additional alternative ways to launder funds. As a result, money laundering has become too easy for sophisticated criminals through these sites. Money laundering is the act of making illegitimate cash into legitimate funds through hiding the cash’s origin. This is done in a three step process, (1) the placement stage, (2) the layering stage, and (3) the integration stage. Money laundering can be extremely complicated because the objective is to create a “paper trail.” This can be easily done for originators of online casinos as well as by gamblers who do not use certain methods to establish their account.
My proposal goes something like this…I think internet gambling should be legalized and regulated in the United States. I believe there should be federal licensing fees required for internet gambling sites who offer games of chance to US residents. Coupled with licensing fees, the federal government should require ISPs to prevent US gamblers to have access to unlicensed internet casinos. In conjunction, these two laws would greatly complicate, if not entirely bar, money launders from effectively laundering large amounts of cash. This would also protect US citizens from fraudulent websites, and bring in considerable revenue to the government.
I would like to hear the class’s input on whether these changes could effectively reduce the problems of money laundering today’s internet casinos produce.

No Problem, Mon

2006-03-24T08:52:00.000-08:00

I just got back from Jamaica this morning, and as a result I am completely clueless as to what's been going on in the world for the past week, but I caught these two IP/Internet articles in the New York Times from a few days ago that seem pretty interesting:

1. Justices Reach Out to Consider Patent Case

2. A Guest Blogger, and an Unwritten Law

Presentation by Jeong Ho: Reconsidering Diamond v. Chakrabarty in the Context of Business Method Patents

2006-03-17T18:35:00.000-08:00

My paper will discuss the problems involved in business method patents and propose reform of patent law to address them. Although the term “business method patents” is not precisely defined in any jurisdiction, it may be broadly defined as “a utility patent whose subject matter is a method of doing or conducting business.”

Courts initially recognized that methods of doing business could not be patented, creating the so-called “business method exception.” For example, in Hotel Security Checking Co. v. Lorraine Co., 160 F. 467 (2d Cir. 1908), the Second Circuit held that a patent on a “method of and means for cash-registering and account-checking” was invalid. The court also said that “[a] system of transacting business disconnected from the means for carrying out the system” is not a patentable subject matter.

However, as the Supreme Court held, in Diamond v. Charkrabarty, 447 U.S. 303 (1980), that “anything under the sun that is made by man” should be patentable except for law of nature, natural phenomena, and abstract ideas, the courts began to narrow the business method exception. In State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998), the Federal Circuit emphasized that business methods should be “subject to the same legal requirements for patentability as applied to any other process or method.”

State Street has significantly changed the way of doing business. Companies that had practiced novel business methods mainly relying on trade secret protection began to try to protect their business methods under the regime of patent law and have been flooding the PTO with business method applications. This has arguably resulted in some problems: backlog of patent examinations and issuance and enforcement of bad (or weak) business method patents against competitors.

As Amazon.com sued its competitor, Barnesandnoble.com, for infringement of its patent directed to “1-Click ordering” system, the Internet community complained that the patent was granted without adequate review of prior art, was too broad, and failed to meet the requirement for novelty and non-obviousness. Further, vehement controversies have arisen as to whether Internet-related business method patents are appropriate.

As to such concerns, the American Inventors Protection Act of 1999 is expected to assist Examiners in finding prior art. The PTO is required to publish patent applications after 18 months from the earliest filing date of the patent application. Upon the publication, any interest persons may interfere with the PTO prior to the issuance of a patent on the ground of anticipation and obviousness. Further, the PTO revised the Examination Guidelines, which includes a mandatory search for all applications in Class 705 (business practice class), second review of all allowed application in Class 705, and expansion of sampling size for quality review. Although these approaches would work to some extent, they would not seem to completely address the concerns.

Under the European Patent Convention, “Schemes, rules and methods for … doing business” are not regarded as being inventions and are not patentable. But if a new method solves a technical, rather than a purely administrative, problem, then it may be patentable. In Japan, business methods are well recognized and accepted as patentable subject matter. Inventions must be “a highly advanced creation of technical ideas by which a law of nature is utilized.” Thus, patents are not grated solely for business methods—they must contain a technical aspect that is both tangible and real. However, this requirement may be satisfied simply by specifying that the method is implemented using a computer or through the Internet.

I would like to propose revising the Patent Act to restrict patentable subject matters to those which involve technical features—e.g., to solve technical problems, to contain technical characteristics, and so on. Examiners are allowed to reject business method applications if they are regarded as lacking technical features. Then, the burden is shifted to the applicants who must show that the invention involves technical features to overcome the rejection.

If necessary, I would also propose establishing sui generis protection for “pure” business methods. Under this scheme, an applicant has to conduct a prior art search, and the subject matter must satisfy a higher standard of non-obviousness. And, the term for protect would be shorter than that of patent law—e.g., 5 years from issuance.

I would appreciate your comments and thoughts on the following:

(1) Should patents be granted only on subject matters that involve technical features?

(2) Should Internet-related business methods be regarded as involving technical features and be protected under patent law?

(3) Should “pure” business methods that do not involve any technical features be entitled to protection at all?

American Inventor

2006-03-16T12:34:00.000-08:00

Since we've been discussing so much patents, I thought everyone should be made aware of a great new TV show: American Inventor

Next Episode:
Thursday, March 16 at 8/7c
"Episode 101"
SERIES PREMIERE
This exciting series from Simon Cowell and the producers of American Idol about the biggest search ever for America's best new invention will premiere with a two-hour special, with coverage of open casting calls in Los Angeles, San Francisco and New York. Viewers will see inventors all of all ages present their most prized inventions, featuring everything from the wacky to the heart warming. Check it out at:

http://abc.go.com/primetime/americaninventor/about.html

Can you patent a stick?

2006-03-16T08:57:00.000-08:00

If you have doubts about the subject matter the examiners at the PTO allow to be patented, visit www.freepatentsonline.com. From the menu on the left side, click "Crazy Patents." Enjoy reading about inventions such as inclining coffins, a method for exercising your cat, a beerbrella (to keep the sun off your beer), etc. If you want to read the entire text of the patent, you'll need to register (which is free).

Nanobull is full of bull, it's not "nano"

2006-03-16T07:45:00.000-08:00

"Nanobull" is actually 10 micrometers by 7 micrometers, which is 10,000 nm by 7,000 nm. Regardless, it is still very small and provides a frame of reference for scale. Considering that a human hair is roughly 80 microns wide, you could fit 8 bulls across the diameter of a piece of hair. (i.e. bull-bull-bull-bull-bull-bull-bull-bull)

Is this a real Picasso?

2006-03-16T05:34:00.000-08:00

Costco sold this crayon drawing for $39,999 last year, with a putative certificate of authenticity by Picasso's daughter Maya Widmaier-Picasso. But is this really a Picasso? The daughter now says the certificate was forged. As for the print, it may be a fake, too. (More here)

I visited the Picasso museum in Paris last summer. Even if this crayon print were a Picasso (I have serious doubts), it would not be on my favorite Picassos list. And I love his body of work.

Google Privacy Case

2006-03-15T06:27:00.000-08:00

In a decision from US District Court, Google is forced to turn over 50,000 searches and 5,000 search queries to the Justice Department. The government hopes this information will help in protecting children under the Child Online Protection Act. The federal judge stated, "What I've been trying to balance is the interest society has in the litigation with the interest of a private company." See WSJ article here.

Week 10: John, Derek, Heon

2006-03-14T14:06:00.000-08:00

1. John talks about reforming the Digital Millennium Copyright Act (here)
2. Derek talks about patenting nanotechnology (here)
3. Heon talks about regulating spam (here)

work with Phil Collins?

2006-03-14T14:01:00.000-08:00

Starting Wednesday, British artist Phil Collins will be in Columbus for four months to begin a new project about the often adverse effects of reality television and talk shows on its participants. People who have had experiences on such programs and who would be willing to participate in the project should contact Jennifer Lange at blocked::mailto:jlange@wexarts.org or (614) 292-7617. In The Box, you can see Collins' "el mundo no escuchará (the world won't listen)," an exhilarating karaoke video "album" of Colombian fans singing along to tracks by 1980s' rock band The Smiths. The video runs 55 minutes and screens continuously throughout the day.

French law to address downloading

2006-03-14T06:09:00.000-08:00

I posted on my blog about how France is set to pass a law to increase penalities for illegal downloading, but also in the law it will expand users rights for purchased music online. What this means? Song purchased on iTunes would have to play on other brands besides iPods. See my post In re: The French to Crack iTunes? , or see the story on Reuters.

The Revolution: Internet users take over

2006-03-13T15:41:00.000-08:00

The reason that "Internet junkies" like me get excited about blogs is the potential they hold for ordinary people to create and publish their own speech. Businesses finally realize that consumers out there are not stupid receptacles for whatever they dish out.

The NYT has this excellent article today (here) describing how more and more businesses are trying to tap into this growing phenomenon. Not just blogs, but people creating short films, clips, animation, games, audio files, flash animation. I think Ed O should start putting his recipes online.

Here's a flavor (flav) of the article:

Still, user-created material increasingly competes for the audiences of traditional media companies and holds some appealing qualities as a business model. For one thing, it is cheap. And it taps into the social aspect of interactive media that has fueled the advance of the Internet.

It also represents an attempt to improve the quality of material online as people's desire to not only surf the Internet but also contribute to it rises at a breakneck pace. For example, the research firm Technorati estimates that in January there were 27 million blogs, and that number is doubling every 5.5 months, with 75,000 blogs created daily.

In re Derek's presentation

2006-03-11T10:51:00.000-08:00

OK, so I stole the title from Ed O's blog In re. I was surprised to see today on OSU's website that the cover story is about developing nanotechnology at OSU. (Check this out.)

John's Presentation: The Chilling Effect of the DMCA

2006-03-10T13:20:00.000-08:00

As members of the largest demographic group of consumers of entertainment products, we’ve all probably run into copyright mechanisms of one type or another. When we purchase CDs, DVDs, software, hardware, toys, e-books, etc., there is a good chance that the object has a built-in device to control access to or usage of the product. Did you ever pop in a DVD and find yourself sitting through ten minutes of commercials that you can’t skip? Do you own an iPod, or have you downloaded music for your iTunes? Have you bought any video games or any software for your computer in the last seven years? If you answered “yes” to any of these questions, then you’ve experienced copyright mechanisms in some way, whether you knew it or not.

Congress enacted the Digital Millennium Copyright Act (“DMCA”) in 1998 protecting the use of these access-control or copy-control devices. Specifically, section 1201 of the Copyright Act prohibits the circumvention of technological protection measures used by copyright owners to control access to their works. It also bans devices whose primary purpose is to enable circumvention of technical protection systems. Although the Clinton administration originally proposed these anti-circumvention rules as implementations of U.S. obligations under the World Intellectual Property Organization Copyright Treaty, the resulting provisions are far broader than the treaty required.

In response to pressure from the tech sector, Congress crafted certain exceptions to authorize legitimate circumvention. However, the exceptions are so narrow and shortsighted that they fail to protect legitimate, previously-protected uses of copyrighted technology. As a result, for the last several years since the enactment of the DMCA, various parties have used the act as a tool with which to threaten consumers and legitimate researchers, as well as other companies, with impending lawsuits. Interestingly, although section 1201(C)(1) specifically provides that nothing in section 1201 would “affect rights, remedies, limitations, or defenses to copyright infringement, including fair use, under this title,” the anti-device provision effectively makes this an empty promise. Unless modified, the anti-device provision has a harmful impact on competition and innovation.

My proposal is to broaden the exceptions provided by the DMCA to protect fair use, as Congress intended, to include other legitimate reasons for circumvention, as well as to clarify or narrow the anti-device provision of the DMCA. For example, under the current DMCA exceptions, a copyright owner who believes that an encrypted work contains an infringing version of one of his works can confirm his suspicions only by asking the potential infringer whether it is true; circumventing the technical protection system to access the encrypted material for this purpose is illegal.

Because the act is so broad and the exceptions so narrow, the DMCA creates a chilling effect on both scientific research and the freedom of speech. Currently, the website www.chillingeffects.org is attempting to track Cease and Desist Notices based on the DMCA, with 1631 listed thus far. I will provide examples of cases in class.

Derek's Presentation: Inventing things smaller than dust

2006-03-10T12:55:00.000-08:00

For my presentation, I will cover the current state of nanotechnology patents. First, I will show how nanotechnology represents a distinct break from preceding material sciences. Once nano-tech is properly regarded as a new field, I will make several arguments about how the patenting of nanotechnology should proceed. Second, I will observe how academic institutions as patent-holders present market problems for the optimal use of the science.

“Nanotechnology” covers items on the scale of 1-100 nm. A nanometer (nm) is one one-billionth of a meter. A human hair, for example, is about 80,000 nm across (National Nanotechnology Initiative). One hydrogen atom, the smallest atom, is roughly 0.1 nm wide. When materials exist on such small scales, their physical properties are different than when measured in a macroscopic sense. For instance, in the ammonia molecule (NH3), the nitrogen atom tunnels quantum-mechanically between the plane of the three hydrogen atoms. That means it basically disappears in the physical sense on one side of the hydrogens and reappears on the other side. This phenomenon is well-studied and the measurement of the oscillatory frequency provides the basis for measuring time on “atomic clocks.”

Given the nature of the science, nanotech patents are relatively new. However, the process that the USPTO uses to evaluate them might be problematic. As it currently exists, nanotech patents are examined by classical-science technology groups (bio, material sciences, chemical) with secondary consideration given to the nano-nature of the invention (but this approach is only as the 2005 creation of a subclass for nano patents). I would like to examine the standards as they exist and determine if they are sufficient to evaluate nanotechnology. For the reasons given, I anticipate that special focus should be given to the nano-nature of the inventions and this should be a consideration that trumps the classification into the traditional technology centers. I shall present a modified form of requirements for patentability that seem fit to this area.

A thought that I would like explore is whether the state of the art is so new that patenting fundamental elements could block off subsequent innovation. For that matter, the foundational elements of many “enabling technologies” first developed in a climate without or under limited patents (computers, software, bio-tech pre-Chakrabarty, transistors). This begs the ultimate question – should nanotechnology be subject to patent law at the present time?

Another interesting aspect of nanotechnology is that many academic institutions are at the forefront of the science, and therefore hold a significant number of patents. However, universities don’t have the economic incentive to exploit the technology the way private-sector developers do, and so the invention may be underutilized. If true, I propose a system of compulsory licensure so that businesses may have easier access to exploit the technology, while at the same time letting some of the benefit flow to the true “inventor.” This is probably a paper in itself, but I think it is an interesting and important issue.

I would appreciate my classmates’ thoughts on the following:

Material manipulated on the nanometer scale is arguably an engineered product. However, should the “products of nature” doctrine be a limit on the patentability of these near-atomic structures?

What about patenting foundational science? Should the building blocks of a discipline be proprietary?

What do you think of my proposals for patentability and licensing?

Presentation by Heon: "You've Got Spam Mail."

2006-03-10T10:14:00.000-08:00

You come home after one-week vacation in Orlando, during which you did not check your email, and when you check your email at home, you find that you’ve got 128 emails, but 90% of them are spam or junk emails. How do you feel? It is a reality, not an imaginary scenario at movies.

The Mail Abuse Prevention System (MAPS: http://www.mail-abuse.com/) defines "spam," IF: 1) the recipient's personal identity and context are irrelevant because the message is equally applicable to many other potential recipients; 2) the recipient has not verifiably granted deliberate, explicit, and still-revocable permission for it to be sent; AND 3) the transmission and reception of the message appears to the recipient to give a disproportionate benefit to the sender.

There are two email marketing methods – opt-in and opt-out. The “opt-in” system asks the consumers if they want to receive marketing materials before sending them. The “opt-out” system is the minimum acceptable standard, where the consumers have a viable way of discontinuing the reception of unwanted marketing emails. I think some spam mails do not have even the minimum standard of discontinuing the reception. I strongly support the opt-in system for the marketing or advertising emails, as I encourage the strict government regulations on spam mails.

Other than legal control on spam mails, individuals can also control the spam emails by filtering spam. An email user can customize his or her email account to block specified senders, or create general rules to filter certain emails. This method, however, uses the resources of the system, and sometimes filters out non-spam emails as well. Another type of filter employs the use of lists. This kind of filter works by automatically blocking any emails sent by a specific domain on a designated list, and list by MAPS, “Realtime Blackhole List,” is the most widely used. However, some people are against these lists because they are completely unregulated. It is possible that some ISP, who have unwittingly hosted a spammer, have had their entire network blocked, inconveniencing their innocent customers.

Another suggestion is to create an “e-stamp,” in a nominal amount per e-mail, and mail without the stamps would be blocked automatically. Innocent consumers may be a victim of e-stamp, and so e-stamps should be charged only to a sender who emails to a large number of recipients. E-stamp can reduce spam, if we think of the economics of spam. The response rate to unsolicited e-mail marketing is extremely low, but the costs of sending bulk emails are also negligible. Instead, the huge costs are shifted to businesses and consumers who use the internet, by upgrading storage space or using filtering software.

In 2003, Congress passed Controlling the Assault of Non-Solicited Pornography and Marketing Act of 2003 (CAN-SPAM Act). This act is primarily directed towards unsolicited commercial email sent through fraudulent means by illegitimate marketers. The act legalizes a class of spam that complies with certain requirements for truthfulness, denies a private right of action, and largely preempts state legislation related to spam.

I think CAN-SPAM Act adopts the minimum standard to reduce spam. While the CAN-SPAM Act restricts a minimum degree of spam, the Act is not enough to reduce spam. The act denies a private right of action under this act. The act preempts stronger state laws. Some states adopted more strict anti-spam regulation, like requiring labels on subject lines. The act also legalizes spam from legitimate marketers under opt-out system.

The common concerns regarding the constitutionality of state’s anti-spam laws are whether the laws violate the Commerce clause or the First Amendment right of free speech. The courts have held that the anti-spam statute met the requirement of the Commerce clause, because the state’s substantial legitimate interest in regulating spam against the burden on interstate commerce.

Spammers also challenged state anti-spam statutes under the First Amendment. However, privates actors, like ISP, may adopt whatever viable means they find to block spam without running afoul of the First Amendment, because private actors are not a government entity. In order for state actors to regulate speech, an important state interest must be articulated. One interest in regulating commercial speech is cost-shifting from the spammers to the consumers. The court also accepted that the government has interests in protecting the privacy of individuals in their homes and protecting consumers against abusive and fraudulent solicitation.

bravo

2006-03-10T07:36:00.000-08:00

I've really enjoyed the class discussion following the presentations. I think the presenters will all agree that your questions and comments have been extremely helpful in pointing out strengths and weaknesses in the arguments made. This is collaborative learning at its best. So keep up the good work. Also, I'd encourage the presenters to continue to talk to other classmates (and of course me) outside of class about your papers. In order to flesh out your ideas, it's often helpful to have someone else who can cut right through your arguments.

Music labels consider slowing down digital sales

2006-03-08T18:26:00.000-08:00

Here come the dinosaurs again: this time, the music labels are trying to preserve the "bundling" of songs on a CD, sold at higher prices than a digital single when unbundled. Hmmm. This sounds like a bad idea. (More here).

the Oscar goes to ... Three 6 Mafia

2006-03-08T13:10:00.000-08:00

A rap group named Three 6 Mafia won its first Oscar this week for the original song, "It's Hard Out Here for a Pimp." How true.

Being nominated for an Oscar gave the rap group incentive to clean up their act. Apparently, the original song had some content that may not be suitable for children. "I started changing the lyrics as soon as we got nominated, and I was happy to do it," Jordan Houston of Three 6 Mafia said here. "I would have changed the whole song, every line, if the Academy asked me to. Hey, man, come on. This is the Oscars." How true.

Google book search apparently helping sales

2006-03-08T11:42:00.000-08:00

Interesting to see an article on the postive sales effect that Google's book search has had on the sales of books that are in the 'deep backlist', those being books that have been forgotten and likely on obscure subjects.
See the story here

Roche gets a product patent in India.

2006-03-07T06:48:00.000-08:00

A Swiss drugmaker, Roche, obtained a product patent for its hepatitis therapy, Pegasys, in India. Roche said it was the first pharmaceutical company to secure a product patent after India introduced product patent rights in 2005 (here).

so you think you can blog?

2006-03-06T14:26:00.000-08:00

Ed O finally has some competition for best Moritz student blogger -- check out Lengthy Dictum. Now if only we could get those guys to train some of their fire -- with the rest of you -- on this class blog. Hope springs eternal.

Anyway, our very own Super-Blogger Professor Berman asked me to pass on the details of his Federalist Society talk with Howard Bashman (of How Appealing blog) right here in Columbus. Tuesday, March 14, 2006, 12:00 p.m., Athletic Club of Columbus, 136 East Broad Street, Columbus.

Here's a brief write-up: Recent studies estimate that over 500 law-related blogs, or “blawgs,” are in operation on the Web addressing legal issues of the day. Many of these blawgs covered in detail the two recent Supreme Court confirmations, and they continue to address breaking legal developments, including decisions from the United States Supreme Court. Joining us to discuss the popularity and growing influence of blawgs are the creators of two of the most popular blawgs

The Final Countdown

2006-03-06T14:18:00.000-08:00

As we enter the last half of the semester, I wanted to remind you all to review your notes from the "How to Write a Good Paper" lecture. The secret to getting an "A" starts with exhaustive research of your topic. Also, for the presenters who have yet to go, please re-read the syllabus for the requirements: outline to me on Monday in the week before your talk, meeting with me shortly thereafter, and then post on the blog by Friday. I would encourage you all to come see me to brainstorm more, if you have questions about your ideas along the way.

Final presenters

This week: Eric, David, Angela
Week 10: Heon, Derek, John
Spring break
Week 11: Jeong Ho, Joe B, Scott.
Week 12: Brian, Ed O, Kirk
Week 13: Milton, Christine

Week 9: Eric, David, and Angela

2006-03-05T15:47:00.000-08:00

For this week, the presenters are:

1. Eric on copyrighting or not stage directions(here)
2. David on sui generis IP protection for software (here)
3. Angela on copyrighting or not ringtones (MIA)

BlackBerry Dispute Settled!

2006-03-03T16:01:00.000-08:00

BlackBerry maker, Research In Motion, have agreed with NTP to settle the patent dispute over the BlackBerry device for $612.5 million (here).

Sui Generis Protection for Computer Software

2006-03-03T15:53:00.000-08:00

My topic focuses on the legal protection of computer software: how IP law currently protects software, the flaws of this approach, how separate sui generis computer software protection would work better, and how such a proposal will fit within the constitutional and practical framework of intellectual property. I’d like to focus the discussion primarily on the application of a sui generis right.

Currently, computer software is protected under both patent and copyright law. In a nutshell, I believe that computer software has in a sense has snuck under the patent umbrella through judicial decree, not through sound policy decision-making. For a good synopsis of the evolution of the computer software patent, read this short piece from Bitlaw:

Copyright, on the other hand, protects the expression of ideas. In that sense, when software is protected under copyright law, the protection only extends as far as the code itself, and not to the idea behind the code. Remarkable similarities can exist and still not infringe (Consider, for example, the similarities between Microsoft Windows and WordPerfect). The important part of computer software clearly isn’t the specific code the programmer writes, but the idea behind that code. In that sense, I feel that copyright isn’t properly applied to computer software, because it protects the wrong part of the work.

Furthermore, the fact that both patent and copyright apply currently creates the problem of overlapping protection. Numerous problems result from overlapping protection, but primarily the problem is excessive IP protection. For example, when both protections apply, the quid pro quo of the patent regime is subverted because the creation of derivative works based upon the patent will be prohibited by copyright. (For a more in-depth discussion, see “Mutant Copyrights and Backdoor Patents: The Problem of Overlapping Intellectual Property Protection” 19 BERKTLJ 1473.)

In my opinion, the best solution would be to create a new computer software right, which would be independent of both patent and copyright law. Although I have not fully fleshed out my idea, there are several provisions that I feel must be included. This sui generis right would have a durational limit of at most 5 years. Furthermore, it would not require the disclosure of source code. Finally, there would be no exclusive right to make derivative works (reverse engineering will be allowed).

I would appreciate your input on this proposal.

Finally, I will address the practical potential for implementation of a sui generis right. As I see it, there are two areas where potential roadblocks to establishing a sui generis right exist. First, whether the constitution as currently interpreted mandates application of copyright and patent law to computer software. Second, how can the transition from patent/copyright protection to sui generis protection occur smoothly?

Aside from any other questions you have, here are two specific issues I’d like to address in class:

There seems to be a constitutional basis for protecting computer software under patent and copyright law in the Copyright Clause: promotion of science and the useful arts. Both patent and copyright can arguably be said to accomplish this goal with respect to computer software patents. If a more efficient sui generis right existed, could this constitutional argument be undercut?
A sui generis right for software can be created in the US through new legislation. Could we effectively make the transition from protection under copyright/patent to this new form of protection, though? Could there be a workable distinction between computer software that isn’t patentable, and an invention that is?

Presentation: Copyright and Stage Direction

2006-03-03T14:01:00.000-08:00

First of all, let me preface this by saying that I have no background (or particular interest) in theater, so I would appreciate any and all suggestions/criticisms that relate to my current lack of understanding of the theater industry.

I am writing about a copyright case recently filed in the Southern District of New York (for more information see here). The case involves a director of an off-Broadway play who alleges that he contributed original stage directions to the play that were later used in the performance after he was fired by the producer. The director is now suing, claiming that he has a copyright interest in his contributions to the work.

This case presents two issues: (1) should a director have a copyright interest in non-literal expression such as stage directions that are contributed to a dramatic work and (2) if so, how do we characterize the director’s copyright interest in the contributed material? Although this problem is rather unique in that it does not arise in the television or film industries since directors, performers, etc. are employees subject to the works-made-for-hire doctrine (the studio owns all of the copyrightable contributions of the directors, cinematographers, etc.), the problem may arise in other contexts where a freelancer contributes copyrightable expression to another work without a contractual understanding between the parties.

With respect to the first issue, there is some support in the case law recognizing that a director’s non-literal expression may be protected under copyright law. See, e.g., Kalem Co. v. Harper Bros., 222 U.S. 55, 61 (1911) (“[D]rama may be achieved by action as well as by speech. Action can tell a story, display all the most vivid relations between men, and depict every kind of human emotion, without the aid of a word.”). Therefore, if the director contributes some form of original expression that goes beyond the written words of the play and if such expression is “fixed in a tangible medium of expression” either through written notations or video, it is possible (and appropriate) to recognize a copyright interest in the director’s contributions.

The real problem then is determining how to categorize the director’s copyright interest in stage directions. Copyright law currently recognizes joint authorship, but joint authorship only exists if the parties both have an intention to create a joint work. It is unlikely that the playwright in this case would have intended to create a joint work. In addition, the director’s copyright interest could be classified as a derivative work (or adaptation of the original), giving the director an independent interest in the stage directions themselves. However, in order to create a derivative work, the author of the underlying work (the playwright in this case) must give permission—either express or implied—to the author of the derivative work. Here again, there probably is little evidence to suggest that the playwright authorized the director to create a derivative work.

Therefore, I propose a contractual solution to the problem as is currently used in many other collaborative situations. The director could negotiate for some sort of derivative work or transfer his interest in the stage directions in exchange for a royalty. Although this is not currently the practice in the industry (at least with respect to directors), a greater awareness that a director may have a copyright interest in his contributions would enable directors to demand compensation for their contributions. It also gives the parties flexibility to determine the appropriate amount of compensation and the extent of the parties’ control over subsequent performances using the director’s work (even if the director is no longer associated with the production).

I would appreciate your comments or questions on any of this, but particularly:

1.) Do you think a director (or another type of freelancer) should be able to claim a copyright interest in original contributions to another work when there is no common understanding between the parties or intention to create a joint work?

2.) Do you think the contractual solution is the best solution to the problem, or do you believe another solution would be more appropriate?

3.) What problems do you see with this proposed solution?

4.) Are there other specific areas/industries where this type of problem might arise?

Hang in there

2006-03-03T08:03:00.000-08:00

I do appreciate that those of you who haven't had patent law may find it hard to get your arms around some of the complicated patent presentations. But I think it has been very useful for the patent presenters to hear from you because they need to make their arguments understandable to the class. Many of you who haven't had much, if any, patent law have already helped the presenters spot ambiguities in their arguments. So thank you for speaking up.

Also, for the rest of the semester, I think there are only 2 more patent topics. That's it. Hang in there!

The Mid-Term and second chances

2006-02-28T14:38:00.000-08:00

I read a thoughtful post by our resident blogger, the Big E, who wondered why there haven't been "as many 'intense' discussions [on this class blog] as one might have hoped." I wonder that, too. For a seminar about the Internet, we seem to underutilize what the Internet can offer.

Based on the great level of class discussion we've had, I know it's not because you don't have anything to say, or don't have a view. Instead of beating myself over the head trying to figure this out, I would hope you all re-energize and re-commit to participating for the few remaining weeks left, particularly in posting your comments to student presentations. That will have the most payoff for each presenter. (Of course, if you have reaction to this post, I'd love to hear them, too.)

Week 8: Ashik, Christine, Seongyoune

2006-02-27T04:52:00.001-08:00

1. Ashik Jahan - here on IP protection in India
2. Christine Easter - here on trademark claims for use of marks in metatags
3. Seongyoune Kang - here on how courts should interpret the preferred embodiment in a patent

Diminishing Internet Privacy Does Not Have To Mean Diminished Expectation Thereof

2006-02-27T04:52:00.000-08:00

Cyberthieves Silently Copy as You Type, N.Y. Times, Feb. 27, 2006.

It's a little creepy! I still believe, however, that the subjective expectation of privacy while on the Internet should not be compromised--in other words, while it might not be the safest (or brightest thing to do), maintaining some degree of naiveté is beneficial because it delays our privacy rights from being eroded away . . . at least until Congress does something about this growing problem.

Phone companies sell your phone records

2006-02-26T17:54:00.000-08:00

Just in case the pen register case didn't convince you that there is no subjective expectation of privacy in the phone numbers you call, consider this: your cell phone company will sell the records of who you called (the number, name, address, time, etc) to your -ex for cheap! (Article)

Google Controversy--the book one

2006-02-26T07:28:00.000-08:00

This article appeared in yesterday's N.Y. Times. Apparently the district court was not persuaded by Google's argument that its use of thumbnails was fair use.

Although I was particularly impressed by the way the article distinguishes between the district court and the Ninth Circuit, I was unable to discern what the final outcome was (i.e., whether this was a final appealable order, or just some pretrial ruling). This was also troubling throughout the BlackBerry case.

Does anybody else find it oftentimes difficult to follow lay-persons' coverage of court/legal news?

patent overload

2006-02-26T07:08:00.000-08:00

Good article on how patents might be hurting innovation (here).

Presentation: IP Protection in India

2006-02-24T22:54:00.000-08:00

By the year 2020, India could very well be a superpower. For decades, India’s economic power has been rapidly growing, particularly in the IT and pharmaceutical fields. India is a prime example, of how developing countries, who have long been resistant to comply with international intellectual property rights, have benefited from poor domestic enforcement of intellectual property rights. Indian Patent law did not recognize patenting of substances that result from chemical reactions, and they did not allow product patent protection for drugs. During the 1970's and 80',

India

's pharmaceutical industry grew rapidly as it focused on the manufacture of generic drugs, and on learning from products that had been developed elsewhere.

What is telling is that developing countries such as India are often quite capable in scientific skills. But they need the same flexibilities that today's developed countries had when they themselves were at a comparable stage of development. Higher and higher levels of IP protection, are extremely detrimental to developing countries. The primary objective of IP protection is often viewed as maximizing public welfare, and it is not surprising then, that developing countries are protecting their own interests.

The developed countries speak of 'development' in the context of Intellectual Property protection, but they do so with their own interests in mind. The term 'development' to the west means increasing a developing country's capacity to provide protection to the overwhelmingly developed country owners of IP rights. The message seems to be, protect our rights so that we can benefit, and then you too will eventually share and enjoy a piece of the pie. Such a view takes next to no consideration of India’s immediate public welfare. Especially since India has been the victim of biopiracy from corporations in developed countries. 'Biopiracy' refers to the ways that corporations - almost all from the developed world - claim ownership of, free ride on, or otherwise take unfair advantage of, the genetic resources and technologies of developing countries.

The current status of IP protection is very lacking. It is no wonder that millions of copies of films from Hollywood and Bollywood are illegally copied and distributed. Piracy is running wild in India. Struggling film directors are “borrowing” plots from hit American movies. In the U.S. a DVD can cost upwards of $20.00. The average person in India makes $500 a year. A pirated DVD fetches $1 in India, and if sold abroad, $10. The economic realities have further contributed to a general cultural apathy towards copyright and general IP protection.

Threats and pressure from the U.S. to strengthen IP laws, including a threat of reducing trade benefits, has been minimally successful. In the long run, alienating India may not be the best approach for U.S. foreign policy, or for furthering the objectives of TRIPs. Instead, For developing countries to benefit from providing IP protection to western rights holders there has to be some obligation on the part of developed countries to transfer technologies to developing countries, and to prevent further biopiracy. Only then will India and other developing countries accept the self-interest that exists in greater enforcement of IP laws.

Presentation: the invention is more than the preferred embodiment

2006-02-24T14:55:00.000-08:00

My paper topic relates to a very specific and recurring issue that is a source of great confusion in patent law. It has to do with whether the limitations (or elements) of a preferred embodiment can be used to narrow the scope of the claims of a patent.

A preferred embodiment is the inventor’s favored implementation of an invention and arises from the requirement that a patent applicant disclose the best mode to carry out an invention in addition to enabling a person of ordinary skill in the art to make and use it. It is described in the ‘specification’ portion of a patent (‘specification’ is often used interchangeably with ‘written description’ or ‘disclosure’). The ‘claims’ portion of a patent defines what the patent covers and what will infringe while the ‘specification’ teaches about the invention. A patent applicant will draft claims to cover as many embodiments as possible and usually does not expect the coverage of his patent to be limited to the embodiment(s) disclosed in the specification.

In most cases, the general rule is simple: courts cannot apply the limitations of a preferred embodiment to the claims. However, a number of cases have created exceptions to this rule and the Federal Circuit has not given much guidance as to when the limitations will apply. It is now possible for a patentee to sit on a patent believing that the invention will cover certain embodiments only to discover at litigation that the scope of the patent is narrower than expected (resulting in no liability for the infringer). Although the Federal Circuit admits that courts must not read a limitation from the written description into the claims, it dodges such allegations regarding its own decisions by characterizing what it does as reading the claims "in view of the specification." Some of the reasons given by the Federal Circuit for applying the limitations were that “the preferred embodiment is described in the specification as the invention itself” or that “the specification read as a whole leads to the inescapable conclusion that the claimed invention must include [the limitation] in every embodiment.” Reasons provided by lower courts such as “the preferred embodiment or best mode of an invention may qualify as a claim limitation when they are nothing more than the invention itself” are not any clearer.

As a result, when writing the specification portion, drafters of patent applications try to enumerate as many alternatives as possible in an embodiment while emphasizing that a list is not exclusive and avoid labeling an alternative as ‘preferred.’ However, I think there is too much burden on the applicant to guard against this problem due to the vague standard and some change in the law is necessary to provide predictability and clarity. Therefore, I suggest focusing our discussion on the following questions:

1. Since the best mode requirement is mostly responsible for the inclusion of preferred embodiments in the specification, should we do without or relax it so that patent applicants are less bound by what they disclose in the specification?

2. What would happen if the limitations of a preferred embodiment never applied or always applied?

3. Could the current law be formulated to provide more predictability? If not, what changes could be made for that purpose without drastically reforming the law?

4. The standard I would like to propose to determine whether or not a limitation from a preferred embodiment should apply to the claims is whether the limitation is 'reasonably related to patentability' (or necessary in order to secure a patent). This expression comes from the Festo case. Applying the exact same standard to our situation might not be without problems (because Festo didn't clarify what this meant) but I think the standard comes closest to what is suitable or a starting point. Circumstances I would include as reasonably related to patentability would be the application of limitations that was necessary to avoid prior art or to make a preferred amendment read on the claims.

The following illustrations show what is meant by applying the limitations of an embodiment to the claims:

- Illustration 1
A. Patent: claims include the terms "locking means," "locking element," and "locking member" but do not mention “play” which is a space between a locking groove on a first panel and the locking element of a panel adjacent to the first panel.
B. Written description: talks of the invention as a system "where a play exists between the locking groove and a locking surface on the locking element." Also mentioned is that play between components of the locking joint permits "displacement," allowing the panels to slide relative to one another.
C. Prosecution history: "because the applicant invoked play to overcome the prior art, which lacked displacement and disassembly," patentee cannot now contend that the parent patent claims a flooring system and method for installing that system without play.
D. CAFC held: play is a limitation of the claims (Alloc Inc. v. International Trade Commission).

- Illustration 2
A. Claims: Dry, dust-free and non-dusting, solid and homogenous atomized precipitated silica particulates essentially spheroidal in geometrical configuration.
B. Infringer: "dust-free and non-dusting" means "no dust cloud whatsoever.”
C. Assignee of patentee: "dust-free and non-dusting" means "very low dust."
D. Written description: a preferred embodiment suggests a minimum level of dust based on test results. There would be no infringement using this value.
E. CAFC: held for a claim construction that accepts this value as the applicable minimum for "dust-free and non-dusting" because it reconciles the ambiguous claims and the disclosure where otherwise the claims would not read on the preferred embodiment (Rhodia Chimie v. PPG Industries Inc.).

- Illustration 3
A. Claims: “In an elongate dilatation catheter of the type that can be slidably moved along a guide wire that can extend past a distal end of the catheter, wherein the guide wire is received in a guide wire lumen of the catheter, the guide wire extending from a distal guide wire lumen opening to a proximal guide wire lumen opening disposed in a portion of the catheter that is spaced distally from a proximal end of the catheter, the dilatation catheter including an inflatable balloon and an inflation lumen extending through the catheter separate from the guide wire lumen, an improvement comprising: a first proximal shaft section of the catheter defined by a relatively rigid metallic tube; a second shaft section disposed distally of the first shaft section, the second shaft section being relatively more flexible than the first shaft section; and a transition section disposed between the first shaft section and the second shaft section, the transition section including a transition member comprising a metallic element of gradually diminished dimension, the transition member extending adjacent to the proximal guide wire lumen opening, and the transition member having gradually decreasing rigidity in the distal direction to provide a relatively smooth transition between the first shaft section and the second shaft section."
B. Infringer's product: dual (or side-by-side) lumen configuration
C. Preferred embodiment: coaxial lumen configuration
D. Written description: discussed the advantages over dual lumen configuration
E. Prosecution history: nothing relevant
F. CAFC: held that claims are limited to catheters with coaxial lumens (Sci-Med Life Sys. Inc. v. Advanced Cardiovascular Sys. Inc.).

Internet surveillance, reporting, and the impact on the public

2006-02-23T10:15:00.000-08:00

The Center for Democracy and Technology (website) released a report this month that calls for modernization of privacy laws to keep back the tide of government surveillance programs. (Link to report, here and popular news account, here). The internet news article (by Agence Free Presse) was headlined "Big Brother watching email, computer data." On the one hand, that idea is a (likely) possibility and could be supported by CDT's study. On the other hand, it's an alarmist catch-phrase with possible political motivations that doesn't capture the reality of justified surveillance.
I wonder how the public-at-large perceives these technological issues. Can entire opinions be formed based on reading an internet news headline as opposed to the article, or even the study the article is based on? I bet that is probably true. If this is so, does it follow that private sector news source headlines (and stories) can reduce expectations of privacy?

Week 7: Aaron, Scott, Syed

2006-02-21T00:40:00.000-08:00

This is the first week of student presentations. Aaron, Scott, and Syed will be speaking. The rest of you are expected to read their posts and to comment on them in class, on the blog, and directly to the speakers. I haven't asked you to do much so far for the class -- light reading, all at no cost -- but this is where I really expect everyone to be thinking about the student proposals. It doesn't matter that you don't know much about a particular area -- you all are intelligent law students and should be able to provide some reaction to any topic presented.

Your homework for Thursday is to read each of these posts. If there is any part you don't understand as way of background, you should post a comment to the blog entry asking the person about it. This will help the presenter know what other background to discuss in class to make the topic understandable. I would recommend to the presenters to be able to discuss concrete examples or cases that help to illuminate the problem you are talking about for the rest of the class. You need to be able to speak in terms understandable for people who haven't had patent law.

1. Aaron's topic: reforming the current patent standards under Festo and progeny related to prosecution history estoppel (The very simplistic nutshell version of prosecution history estoppel is that a patentee can't later argue for infringement based on substantial similarity or equivalents if, during the application process, the patentee narrowed the patent claims to deal with objections of the Patent examiner. In other words, once you shrink your patent claims before the Patent office, you can't later expand them against a defendant.) See here.

2. Scott K's topic: reforming the patent system in regard to software patents, including adopting a fair use defense and requiring the disclosure of source code as a part of the application. See here.

3. Syed's topic: whether the law should recognize a constitutional expectation of privacy in Internet communications. See here.

Presentation: Expectation of Privacy in Internet Communications

2006-02-20T15:37:00.000-08:00

First of all, please, completely ignore my prior post for my presentation. I have changed my topic because my first one was a bad idea.

I will now be writing about the constitutional expectation of privacy in our internet communications. A brief overview of the law is this: An expectation of privacy has generally not been found to exist with regard to subscriber info given to ISP's, records of internet usage, or info about communications made on websites. With a few exceptions, courts have generally not found an expectation of privacy to exist in emails or electronic chat-room communications. A few issues that have recently been in the news deal with different servers collecting users' search terms and these being turned over to government agencies. Also, the NSA surveillance is an issue that would fall under this topic.

The internet has provided a new way for people to communicate and our laws have not quite caught up with modern technology. As different technologies emerge, society must decide how much privacy will be given to these new forms of communication. One commentators said: "many email users expect privacy in their messages, but the U.S. Constitution does not seem to reflect this expectation...according to Fourth Amendment jurisprudence, traditional privacy protections may not apply to email."

Courts have been applying the standard enunciated in Katz v. United States when deciding whether an individual has an expectation of privacy in internet communications. This test basically states that there must be a subjective expectation of privacy that society is willing to accept as reasonable. It's a two part test with an objective and subjective prong. The problem occurs in the fact that this case stated that it is unreasonable for one to expect privacy in information etc. that he/she has made available to the public. Because of the way that the internet works, most communications and information is available to at least one third party, the ISP or network administrator (not to mention the many hackers capable of gaining access), which could mean that all internet communication will be held to have no privacy protection.

I think that we need to come up with new law and policy to deal with this new technology. I believe that an application of the old law is not warranted when it comes to internet communications because this technology is unlike the technology of the past. One source of law exists, the Electronic Communications Privacy Act, but this Act does not deal with the issue of whether there is a reasonable expectation of privacy in such communications. No court has yet announced that the ECPA creates this expectation either. Furthermore, the ECPA offers little protection. Consider this: Title II requires a warrant to obtain stored email for up to 180 days (only 6 months), after that, no warrant is necessary. Good thing the ECPA gives full protection (always requires a warrant) for email that is in transit. Thus, we have full privacy rights for the few milliseconds that our emails are actually in transit. This is not the type of protection I think that most of us expect.

The issues that I would like to discuss in class:

1. Is Katz v. U.S. and traditional 4th Amendment jurisprudence capable of dealing with internet communications or should a new standard be devised? If so, any suggestions on what type of standards?

2. Should the fact that ISP's etc. have access to stored data and communications of their users give them the legal right to turn such data over to law enforcement or do internet users' have a reasonable expectation of privacy in their communications? Perhaps another related issue, one that we discussed a little in class, should these ISP's etc. even be allowed to keep such extensive records of the content of the users' communications?

3. One prong of the Katz test is the subjective expectation of privacy, does the fact that most people do not understand how the internet actually works allow for a valid argument of a subjective expectation of privacy?

4. With programs such as Carnivore and the current NSA surveillance, the government is freely accessing internet users' emails, search terms etc. without warrants, is Congress or the Court best equipped to handle this situation in fashioning the proper legal rules? There is a lot of fear that Congress works to slow to keep up with modern technology.

Fantasy Sports League Licensing

2006-02-18T09:55:00.000-08:00

Is somebody in our class researching this topic for their paper? Prof. Michaels mentioned that someone was writing their student note about it--could be the same, could be unrelated. But I'm just trying to figure it out so I don't research the exact same issues. You can e-mail me directly to discuss. Thanks.

Presentation: An Outdated Standard for Using the Doctrine of Equivalents

2006-02-18T07:57:00.000-08:00

Large corporations and innovators invest billions of dollars every year to protect their products and inventions. Each year these corporations believe that they can protect these products and inventions through obtaining patents. By obtaining these patents, powerful legal protection is given to the patent holder.

In patent prosecution practice, patent attorneys draft a set of claims to define the scope of rights given to a patent holder. Patent attorneys draft claims in a patent to garner the largest amount of rights. Broader claims, however, would most likely be covered by prior art and therefore the patent attorney would have to modify the claims in subsequent amendments. On the other hand, when an attorney drafts narrow claims, the patent is less likely to be infringed, which means that the patent holder’s patent is worth very little.

Patent infringement occurs in two ways. Literal infringement occurs when each and every element of a claim reads on the accused device. More relevant to this discussion is the doctrine of equivalents. The doctrine of equivalents extends the protection of the patentee’s rights beyond the literal boundaries of the claims which define the invention. The relevant test for using the doctrine of equivalents is whether the differences between the patentee’s invention and the accused infringing invention are insubstantial to the one of ordinary skill in the art.

During the past decade, however, the patent holder’s rights have been significantly diminished. Accordingly, a recent line of cases, known as the Festo decisions, has restricted the use of the doctrine of equivalents. In the Supreme Court decision of Festo Corp. v. Shoketsu Kinsoku Kogyo Kabushiki Co., the Court held that a presumption against the use of the doctrine of equivalents arises when prosecution history estoppel exists. Prosecution history delinieates concessions during the negotiation between the patent attorney and the patent examiner. Although the presumption is rebuttable, the Federal Circuit has further limited the use of the doctrine of equivalents in subsequent cases.

My paper will discuss whether the Festo standard is still a workable standard for using the doctrine of equivalents. One theory that I have developed is that the Festo standard should still be used because it makes sense that the patent applicant should not receive the doctrine of equivalents for something that he could not have claimed during the prosecution phase of the patent. On the other hand, the standard in which the Federal Circuits have developed, along with the Supreme Court, has restricted too much to the patent holder. The patent attorney would be unwilling to amend the patent application, which in economic terms would be less cost-efficient too society.

My proposed standard includes removing the Festo standard as it is used now. The standard I propose includes giving the patent holder the maximum amount of rights including the doctrine of equivalents. The maximum amount of rights should extend only to the point where prior art will not be infringed. Thus, if a patent attorney makes amendments in order to avoid infringement of another patent, then the doctrine of equivalents will not apply to that specific aspect.

I know my topic is very complex and diluted, so I will give more background information in my discussion. I would appreciate any type of comments or suggestions as to my proposed standard on Thursday. Thank You

- This is for Aaron's presentation.

podcasting: who wants to hear me?

2006-02-17T16:52:00.000-08:00

Visit here.

Presentation: Internet Regulation

2006-02-17T15:01:00.000-08:00

First of all, I will start of with the problem with my topic: It is much too broad. I need help narrowing my topic down to something that can be written about in 25 pages. Any help on a narrower topic that I could choose would be appreciated.

Basically I want to discuss internet regulation, government spying etc. and how this will have an effect on U.S. citizens' freedom of expression. The internet is used for a variety of purposes in the U.S. I feel that a knowledge that the government may be spying on our internet activities will suppress free speech and expression. I want to discuss different internet regulations in China, how these regulations effect peoples' privacy etc., and basically how such regulations are consistent with China's political ideology but not consistent with democratic values. By showing the way in which these regulations in China have the direct effect of suppressing political dissent, the introduction of new (controversial) ideas etc., I feel I can make some comparisons with the U.S. and how some of the regulations and current government practices will have this effect on our citizens. I do realize that the immediate effect here will be indirect. Citizens will not be punished for political dissent etc., but this type of speech will be suppressed if we think that we are being monitored.

Here is a list of questions that might be helpful to discuss so that I can narrow a topic:

1. Is freedom of expression/speech on the internet a necessary part of our democracy given the importance of the internet in our daily lives and its place as one of our primary means of communication?

2. Will the regulations of the internet and the government's ability to spy on its citizens by reading emails, gathering a list of our search terms etc. lead to a weakening of our democracy?

3. Do I sound too much like a conspiracy theorist by making the argument that such regulations are such a threat to our democracy that they could actually lead us to a totalitarian regime? Bush himself said that it would make his job so much easier if this country was led by a dictator and Plato argued that democracy was a terrible form of government because it could so easily be turned into a dictatorship?
Don't get me wrong, I don't think that this is happening right now, but I do feel we are chipping away at our democracy with the increased power of executive in light of the war on terror.

4. If the government is monitoring speech on the internet, by reading emails and search terms, in the name of preventing terrorism, what are the limits on the government from simply using this to prevent any type of political dissent that the government finds to be to extreme? Do all Muslims, or those with Islamic names, need to fear if they express their dissent and political ideas through this medium?

5. Do we need to allow government surveillance of our internet activities in order to prevent terrorism and different crimes?

6. Is the internet something that our government has the right to regulate and monitor in the first place? Many articles have been written that argue that the internet and its users should govern itself. I will present some of these ideas also.

I am not sure how to make a valid comparison between China's regulation and the type of activities going on in our country. I think that China is a model of how regulation of the internet and monitoring citizens' activities is used to supress free expression and political dissent. I basically want to show that if we allow such things to happen in our country, even if the stated purpose is not to supress dissent and expression, but to prevent terrorism, it will eventually lead to the same consequences.

I have not narrowed this topic enough and it is difficult to figure out what my proposal will be at this time. Generally, it will deal with the idea that we need to scrutinize the executive's actions more carefully and not allow our freedoms on the internet to be diminished. I would like to see an internet with very few regulations etc. without quite going to the point of internet anarchy.

I plan to research my topic much more between now and Thursday. I will be posting an update to narrow this topic more and explain my general idea a little better.

Presentation: Software Patents

2006-02-17T12:31:00.000-08:00

My paper will discuss reform relating to the protection offered to software based patents. Initially, I take the viewpoint that patent protection for software is justified under the current patent regime. However, I think the protection is too broad and modifications to the current system are needed to curb this protection.

One change I propose is to establish a patent fair use doctrine similar to that established under copyright law. This new doctrine will allow infringing activity to be excused if the activity is determined to be qualified as fair use. Some possible guidelines that will help a court determine if fair use exists are an evaluation of: the purpose of the infringing use, method of use, harm to the patentee by this use, and social benefit because of this use.

Issues that I would appreciate comments on include:
1) Should uses based on commercial incentives completely negate a fair use defense?
2) What if the use is directed toward the commercial end of marketing non-infringing software?
3) Should reverse engineering of software patents be protected under this fair use doctrine?
4) Any other factors the court should consider when determining fair use.

A second change that I propose is heightened disclosure requirements placed on the applicant submitting the software patent application as well as heightened examination practices by the examiners. The disclosure requirements include the applicant performing a prior art search and providing the results to the PTO with the filing of the application. In addition, the applicant is required to disclose the source code within the application in order to satisfy the enablement requirements currently in place. The novel aspects of the source code claimed by the applicant must be distinctly identified since the source code might include numerous lines of code that are not novel.

The heightened examination practices require the examiner to evaluate the techniques put forth by the software. The examiner should not focus on whether these techniques solve a new problem, but whether the techniques themselves are substantially new. Third parties may attack the novelty of the technique by submitting evidence that the techniques were used in the industry before the filing of the application, even though the techniques were never published as prior art.

Caution with E-mail

2006-02-17T08:35:00.000-08:00

This is not directly related to our class discussions, but illustrates how easily statements made in an e-mail can spread quickly. I guess you should keep your smart-alecky comments strictly to personal conversations these days. I've heard similar incidents occuring with blog posts. (Here)

ripping to iPod: is this fair use? RIAA says NO

2006-02-16T10:13:00.000-08:00

Update: so I usually don't read posts by dave by accident, and once again, he's upset about this. sorry, about the double post, somehow I missed that he hit this issue first...sorry dave.

So apparently the RIAA (Recording Industry Association of America) has said in a filing which was part of DMCA rule making procedures, that ripping music from CDs that someone owns to their iPod or other 'format shifting' isn't fair use, although permission may be granted sometimes. This goes against what they said during the Grokster oral arguments.

See story here or here
and also see the document here (pdf), which says in advocating their stance against backups (pg 40) "Even if CDs do become damaged, replacements are readily available at affordable prices" and that if you want such digital rights to buy from iTunes or elsewhere "Presumably, consumers concerned with the ability to make back up copies would choose to purchase music from a service that allowed such copying"
I guess if i understand it correctly you are allowed to make an analog backup copy by statute, but that in reality putting my cds on my iPod would potentially not be fair use, as an iPod user I think this is ridiculous, but I guess this doesn't surprise me

Correction re Spam

2006-02-16T06:49:00.000-08:00

Limewash made an interesting comment below, in response to the guy doing 5 years--true, he didn't plea guilty to the spam charges, per se, but it was the sending of spam that got him busted for fraud, inter alia.

I looked into this a little further, and found that the Federal Trade Commission is (one of) the agencies charged with going investigating and prosecuting these creeps. If you're fed up spam you can forward the e-mails to spam@uce.gov.

For more info, or to file a formal complaint visit http://www.ftc.gov/spam/ (although the info given on the site indicates that simply forwarding the e-mail starts the complaint process by itself). This website also appears to be a good resource for a number of federal guidelines as they affect consumers and e-commerce.*

*(Don't get your hopes up, though, it's still a gov't agency.)

The RIAA is at it again

2006-02-16T06:36:00.000-08:00

Here's an interesting read regarding the desire of the RIAA and its allies to increase the scope of copyright protection for their products. In essence, they suggest that backing up your legally purchased CDs is not a fair use.

I think the article makes a number of good points criticizing the proposal. To me, though, it just highlights what we've talked about before: the music industry would rather change the law than adapt to technology.

You Can Eat a Lot of Spam in 5 Years

2006-02-15T17:02:00.000-08:00

Sombody was asking about what should be done with the idiots behind the "cheap viagra," "penis enlargement," and other miscellaneous porn solicitations that seem to multiply every week. I'm not sure which ads this guy was pushing, but it got him five years in federal prison. I heard once that they serve Spam in prison--if that's still the case, then my hat's off to the government, because they finally made the punishment fit the crime . . . (here)

Congress Holds Hearings on Google in China

2006-02-15T06:36:00.000-08:00

Congress is putting pressure on Google and other Internet content providers to resist China's attempts to censor Internet content (see article here). The House subcommittee on Global Human Rights sees Google's participation in Internet censorship as aiding the Chinese government's efforts to stifle free expression, something that a U.S. corporation should not do. The problem: not every country has the same protections for free expression that we have. Bill Gates even noted that Germany has more restrictive rules than the U.S. So, what should companies like Google do...bow to foreign censorship demands or forego the opportunity to bring the Internet to the world (and revenues to their shareholders)? And should Congress be involved in this decision?

Ohio Priest Busted After Internet Solicitation

2006-02-14T05:21:00.000-08:00

The article is found here. In criminal law we studied a similar situation in which the man charged with claimed a defense of "impossibility." It also wreaks of entrapment, on the part of the police. Let me preface this by admitting that I don't have kids, which could realistically affect one's view of this issue, but is this really the way to protect children from these types of predators? Something about this just seems a little "off," for two reasons:

1) The crime could not actually be committed (see impossibility); and
2) Is punishing someone for this a little like the futuristic, sci-fi crime film Minority Report?

More on FISA . . .

2006-02-11T11:52:00.000-08:00

This is a follow-up to the Prof. Lee's FISA posting, but I wanted to post, as opposed to comment.

Either I misunderstood Prof. Kerr's position, when we discussed it in class, or he seems to have flipped sides: The 2 blogs he left about FISA judges seem to criticize them for not giving complete deference to the Executive. Isn't that good? I mean, do we really want members of the judiciary of this highly secret (in a sense that they have very little accountability to the public) court to be authorizing wiretaps on every whim?

Also, here's a plug for Peter Swire, who's speaking this week at the Barrister Club. As Prof. Lee said, he's done a lot of research in the area of FISA, and Internet privacy, and his lecture should be interesting. If you want some background, he wrote a great article on the surveillance laws and the FISA court. You should check it out, if you have 6-7 spare hours . . . Peter P. Swire, The System of Internet Surveillance Law, 72 Geo. Wash. L. Rev. 1306 (Aug. 2004).

The FISA Court v. NSA surveillance

2006-02-10T16:33:00.000-08:00

Professor Kerr has an interesting post here and here about how the FISA Court dealt and is dealing with the warrantless NSA surveillance.

Google and Privacy

2006-02-10T06:14:00.000-08:00

I know I said before I didn't have much of a problem with Google turning over information regarding searches, however, I read another article that would give Google access to a lot more information than merely what its users are searching for. This could create a lot more privacy issues.

dublin, oh, who knew?

2006-02-08T19:14:00.000-08:00

I used to think that Dublin, OH was filled with golf courses and a lot of nice homes. While that might be so, I didn't realize how wired Dublin was, apparently with some of the best broadband. Soon, they hope to be providing wi-fi. Someone tell Professor Berman -- he can blog anywhere now! (see here)

Paper topics

2006-02-07T07:41:00.000-08:00

I reviewed your paper topics and have emailed some of you to follow up. Angela, your email seems to be not working -- can you email me.

If I haven't emailed you, that means that, as an initial matter, I think your paper topic is OK (meaning someone else hadn't selected it and it was narrow enough). But the key in writing any good paper is coming up with a good thesis -- the position that you will be arguing. It shouldn't be a re-hash of what someone else already said. You should all be doing research of law review articles that have already been written to see if you have something new to say. Also, please email me to set up a meeting if you'd like to discuss things further at any point along the way.

Hearing on Net Fees

2006-02-07T07:19:00.000-08:00

Commerce Committe is holding a hearing today on whether broadband providers can charge content providers...
John Thorne, a Verizon senior vice president and deputy general counsel, was quoted saying "The network builders are spending a fortune constructing and maintaining the networks that Google intends to ride on with nothing but cheap servers. It is enjoying a free lunch that should, by any rational account, be the lunch of the facilities providers."

See story

Follow up on business method

2006-02-06T21:43:00.000-08:00

Prof. Lee asked in an earlier post if there was an early case with business method patent, this is pasted from my note, i'll keep it to a short snipet, due to the classes concerns about length...

"Hotel Security Check Co. v. Lorraine Co. was the first major case to deal with a business method patent question back 1908. Case dealt with a method for "cash-registering and account-checking." The Second Circuit struck down the patent claims in the case eventually finding invalidity due to prior knowledge. The court said that anyone conversant in the business could have come up with it.. Court was concerned mainly with if it was novel or not, not if it was eligible subject matter, however this didn’t open up the subject matter issue. It was not until recently in 1998 when the flood gates of business method patenting were opened up by the Supreme Court in State Street Bank & Trust Co. v. Signature Finacial Group, Inc. Data processing system for a financial services portfolio had been made in partnership, District Court said it was not subject matter under 35 U.S.C. §101. Appeals court changed this. State Street was reaffirmed in AT&T Corp. v. Excel Communications."

Seahawks

2006-02-06T05:48:00.000-08:00

I read an interesting article that the Seahawks and Texas A&M are in a dispute over use of the slogan "12th Man" and are heading to Federal Court. I thought it was timely with the Superbowl being yesterday. One unrelated thought on the Superbowl, I think there were many questionable calls that went Pittsburgh's way, perhaps making up for the officiating during the Colts game, I just had to throw that in there.

Beware: Disappearing Blog Entries

2006-02-05T13:27:00.000-08:00

I'm not sure if anybody saw my post yesterday re story on Google/Internet search privacy. Apparently it vanished, so here is an attempt to recreate . . . See Saul Hansell, Increasingly, Internet's Data Trail Leads to Court, N.Y. TIMES, Feb. 4, 2006, at A1.

The article addressed many of the same points we discussed in class, but provides some additional insight, most notably to Professor Lee's question about whether the search info could actually be tied to a particular user (hint: it probably can!).

Professor Kerr also contributed, "The big story is[,] the privacy law that protects your e-mail does not protect your Google search terms," (emphasis added). It looks like we may be headed for a Supreme Court showdown in the not too distant future . . .

My personal feeling on this is apprehension, given the recent changes in the Court. We really don't know where Justice Alito stands on privacy, and we can only hope that his view is a little more broad than Justice Scalia's. See, e.g., Lawrence v. Texas (Scalia, J., dissenting).

Specter skeptical of President's NSA surveillance

2006-02-05T09:09:00.000-08:00

Republican Senator Arlen Specter, chair of the Judiciary Committee (that will start hearings on Monday), says he's skeptical of the President's defense of the legality of the secret, warrantless NSA surveillance. (more here) I'm not sure, though, Specter was addressing the "inherent Executive authority" argument, as opposed to the statutory one (AUMF).

So far, through the confirmation process, Sen. Specter has been a very "straight shooter" and non-partisan. I'm glad he's chairing the upcoming hearings on the NSA surveillance.

stamps for business email

2006-02-04T13:11:00.000-08:00

We didn't get a chance to discuss "net favoritism v. neutrality" on Thursday, but here's an interesting example of net favoritism. AOL and Yahoo will give preferred status to business emails that pay for e-postage. (see here) I think the basic idea is that email with postage will not be screened through filters as spam and will be guaranteed of being delivered directly to your email box.

Google Searches

2006-02-03T08:24:00.000-08:00

The concern about whether or not Google should keep a cache of all the searches a user performs made me think about records other companies maintain. Department stores, for example, keep extensive databases of our purchases. If a credit card is used, the store database might have the name of the customer, what item was purchased, the date the purchase occurred, etc. Should they have restrictions on the records they keep about their customers and purchases? Or, do consumers realize that purchases shouldn't enjoy the same level of privacy as searches on Google?

Google caching doesn't infringe copyright

2006-02-02T10:55:00.000-08:00

A district court in Nevada so concludes, see article.

Man Sues Apple Claiming iPod Causes Hearing Loss

2006-02-02T09:53:00.000-08:00

Louisiana man alleges that Apple's iPod is "inherently defective in design and are not sufficiently adorned with adequate warnings regarding the likelihood of hearing loss." (article here).

Admittedly, this is not directly related to IP/Internet Law, however, I believe the iPod phenomenon shares the common nucleus of downloading music, and file sharing, which are one of the subjects of this course.

I'm not sure if Prof. Fairman would agree, but my personal feeling is that this claim has substantially less merit than either of the McLawsuits (Pelman v. McDonald's Corp., 396 F. Supp. 2d 439 (S.D.N.Y. 2005), and the other one with the hot coffee); so, I'd probably have to say it's frivolous.

Update in Blackberry Case

2006-02-02T09:51:00.000-08:00

There are some interesting developments in the Blackberry case (articles here and here). The PTO has now issued rejections to all of NTP's patent claims at issue, although NTP still has an opportunity to respond to these preliminary rejections. Also, the federal government has indicated its concern that an injunction shutting down RIM's network would make it impossible for government employees to continue using the devices (the government is exempt from any injunction that might be issued in the case). Thus, a complete shutdown at the end of this month is unlikely unless there is some way that RIM can continue providing the service only to government employees.

week 4: the future of the Internet

2006-02-01T14:22:00.000-08:00

Note: I've moved this to the top. Also, the Wired article (c) was not accessible, so I changed it.
Also, Professor Swire has a view that the NSA surveillance is illegal (here).

Issue 1: Government Surveillance, Monitoring, and Searches

a. NYT Article on gov't subpoena of Google (here)
b. Prof. Kerr on President Bush's warrantless NSA surveillance (here)
[ recommended optional: Kerr on the technology involved - here]
c. Google and government monitoring/filtering in China (here)

Issue 2: Net Favoritism v. Neutrality and Universal Access

a. Washington Post article on favoritism or preferred users (here)
b. Municipal "free" wi-fi. Craig Settles argues for (here)
Mercury News article on feasibility (here)
[recommended optional: Progress and Freedom Foundation, against (here)]

MPAA Piracy

2006-02-01T12:10:00.000-08:00

There was in an interesting article in the LA Times discussing an accusation that the Motion Picture Association of America ("MPAA") made a copy of a movie without permission of the filmmaker. The film, entitled "This Film is Not Yet Rated", looks at the movie rating system used by MPAA. One justification MPAA made for copying the movie was to distribute to its movie raters for their protection (the filmmaker allegedly spied on the movie raters to create the movie). See also discussion on EFF.

start blogging

2006-01-31T16:24:00.000-08:00

It's week 4. If you haven't posted or commented yet, it would be a good idea if you did. thanks

at&t sued for conspiring with Bush/NSA surveillance

2006-01-31T16:17:00.000-08:00

EFF filed a class action suit against AT&T for helping President Bush and the NSA engage in their warrantless surveillance of individuals, including US citizens. AT& T is alleged to have given, in violation of federal statute, the NSA access to their customer information database and contents of their communications. (See Wired article).

I haven't read the complaint, but, if Bush's NSA's warrantless surveillance is later found to be constitutional, I don't think private companies could be found in violation of federal law. The more thorny question arises if Bush's surveillance is deemed to be unconstutional.

Why software patents?

2006-01-30T18:54:00.000-08:00

According to CNET News.com, a U.K. judge, who specializes in IP laws, expressed his distaste for software patents (read here).
He attributed his concern about granting software patents to the searching for prior art. He opined that it would be "very difficult to stop very ordinary things from being patented."
He also criticized the U.S. for allowing "anything under the sun made by man" to be patented.
His position appears to conform to the European Parliament's rejection of the software patent directive last year.

arctic monkeys

2006-01-29T18:46:00.000-08:00

More from the NYT today. Their debut album sold over 360,000 copies last week, making it the fastest selling debut album in Britain ever. Apparently, better than the Beatles.

Inter Partes Reexamination

2006-01-27T16:34:00.000-08:00

Another possible method for reducing the number of bad patents being issued is to expand the ability for third-parties to participate in patent reexamination (inter partes reexamination). Currently, any third party who has some written prior art reference that would call into question one or more claims of an issued patent can request the PTO to reexamine those claims in light of the prior art reference. Until recently, a third-party requesting reexamination was not involved in the reexamiantion process after the intital request for reexamiantion, and the actual procedure was conducted ex parte between only the patent holder and the PTO.

Congress has since changed the law to allow third-parties to remain involved in the reexamiantion process. In this inter partes reexamination, interested third-parties can make their own arguments and counterarguments to the exmainer questioning the validity of the patent. The third-party also now has the right to appeal an adverse decision up to the Federal Circuit. Moreover, a patent owner cannot expand his claims during reexamination, so there is little risk involved in requesting reexamination.

However, few parties are willing to engage in inter partes reexamiantion because the law as currently written applies a sort of estoppel to prevent the third-party challenger from asserting any defenses or claims in subsequent litigation that were raised or could have been raised during reexamination. Hence, many interested third-parties are fearful that their participation in inter partes reexamination could prevent them from raising important claims or defenses in a subsequent infringement action based on the same patent. Instead, they choose to avoid inter partes reexamination so as not to "tie their hands" in subsequent infringement litigation.

Therefore, a change to the law allowing parties to participate in inter partes reexamination without giving up virtually all of their defenses would encourage more interested parties to challenge the validity of patents through reexamiantion. The benefits include lower litigation costs, validity determinations made by patent examiners who are presumably more experienced in the relevant technology than most judges, and reducing the number of bad patents. Although there are some collateral estoppel concerns involved in such a rule, these could be alleviated by only barring those defenses and claims that were "actually litigated." Thus, the third-party requesting reexamaination at least has some way of knowing which defenses he is actually surrendering. Furthermore, the benefits of defeating "bad" patents probably outweigh the costs of allowing some re-litigation of issues in the future.

This may not be the best solution, but it would at least provide some mechanism for reducing the number of bad patents while using a system that is already established and in-use in the PTO. I'm not sure how this differs from post-grant opposition in Europe...so maybe this proposal isn't any different from what's already on the table???

Why business methods?

2006-01-27T07:31:00.000-08:00

I was surprised by the strong support to protect business methods in our class yesterday. I apologize for the simplicity of the example, but consider the owner of patent on the conveyor belt used in grocery stores and the owner of the patent on the bar code reader. I'm not sure if I feel comfortable awarding strong patent protection to the inventor that patents the combination of these two items as a business method. Maybe the non-obvious standard should be raised considerably for business method patents.

The following article is an interesting read on a company trying to patent the business method of serving cereal and demonstrates how far protection for business methods could reach.

http://www.inthesetimes.com/site/main/article/2451/

Who cares if the labels go under?

2006-01-26T10:54:00.000-08:00

We keep talking about the downfall of the major record labels. Yes, it is possible that these labels will fall. But I think it is naive of any of us to think that the fall of these labels would give rise to a bunch of small independent studios putting out a bunch of new and never before heard greats. If the major labels fall, then they will be replaced with the independent labels that step up and make the move.

We discussed in class about the growing demand for independent companies and how people are beginning to use these companies to put out music at lower costs. Well, if this demand grows, so will the cost. If the major labels go under, and the demand/cost of the independents goes up, what do we think will happen to these independent companies? They will soon grow to corporate giants who control the industry and we are right back to square one. I just feel that the markets work this way, so the fall of the major labels won't change a thing.

patent reform(?): how to find prior art and "old" inventions

2006-01-26T08:36:00.000-08:00

One of the things we'll discuss today is the difficulty of the Patent Examiner to find out if an invention claimed in a patent application is actually new, or just something that already exists in the prior art.

Several groups have begun efforts to try to develop better databases and peer input for the prior art review. Here are two:

Open Source as Prior Art Initiative

IBM's The Peer to Patent Project

Where Will the Artists Go?

2006-01-26T06:33:00.000-08:00

I thought I'd post this up here as it is related, I had written this before our last class debate over the music industry. I'll note that I don't really believe exactly what I wrote here, but I thought it was a way of just trying to look at other sides of the issues here.

Where Will All The Artists Go If We Fail to Implement DRM and End the Scourge of Piracy In The Music Industry: An Examination Using The Lens Of Incentives.

It is possible to argue that economics is all about incentives, from this perspective we only do and don’t do think depending upon a push/pull mentality. An incentive is any factor, financial or non-financial, that provides motivation for a course of action, or counts as a reason for preferring one choice to alternatives. Incentives can be classified as remunerative (a financial or material reward), moral incentives, and lastly coercive incentives. To make a basic and possibly stupid example I’ll look at the act of stealing a loaf of bread, you have incentives, one of these would be to end your hunger at a cost of $0.00, the counter incentive (morality being one we’ll leave out) would be either a fine or jail time, which we will assume is greater than $0.00 to such a degree that even if relatively risk free, the percentage chance of being caught factored to the penalty outweighs the cost, so therefore, assuming again that we are hungry and we have the incentive to eat, we will value eating more than our $1.00 for the loaf of bread and we buy it instead of stealing it. Of course this is a real simple, basic level incentive idea, but sometimes when you start viewing situations such as the bread one as only being bound by monetary incentives we start to wonder would anyone do anything if they weren’t receiving monetary incentives, essentially what is the value of in the bread case your ethics, or in the case of anything else how much do the non-monetary factors cause you to show up at work.

Some in the media are awed and amazed when the movie star Julia Roberts who commands millions for a movie normally agrees to do a small role for free in a movie (Confessions of a Dangerous Mind). Well here there was an incentive, an attraction to the role, the cast, or the producers, which made her choose to do for free what she clearly could have found alternative employment to maximize her profit.

So at this point half of you are saying so what, how does this apply to copyrights, digital rights management, or music? The other half have wisely stopped reading this and are probably already on to something worthwhile.

The point is just this, how much incentive is necessary to have people create intellectual property, without rights protection the argument is that people will just copy and that nothing new will be created and we will have our intellectual commons dry up. (How many movies come out of China, versus US? is this really all due to IP protection though?)

Ask a musician what they would do if they couldn’t earn money being a musician and some might decide to be an attorney, but some might wait tables, and play music in their evenings, some might upload their songs on the internet as they hope to have people listen to them. It’s not clear what an artist would choose, (this being the mythical average creator) if they were offered a lucrative lifetime stipend but their music would be never let out to the public ever, or to live more modestly able to share their music with the world. At this point, we often confront the issue of the sell out artist? What is the sellout artist, one who chooses commercial riches over their art? In this case, and if we truly deplore this why would we care if we lost this, or are we worried that no one would really be singing or creating new music without.

Great artists come out of societies without compensation for such musicians (no evidence here), it isn’t clear there is an inherent right to control the sounds you make after you release them out into the world (they are vibrations, moving through the air no less)

A recent article in Wired -“The Year of Living DRMishly” warns that if DRM is taken too far, removing functionality from media then "It's inevitable that some people are going to make really good monies for a little money and distribute it on their own," Searls said. "There is too much talent out there that is going to take advantage of lower and lower threshold of production."

So to briefly sum this all up, maybe we don’t need to protect musicians, maybe copyrights (they were neighboring rights in some countries) were a fun idea for a while and now we can move along and pirate (oh wait no copyrights, I mean legally copy). This also doesn’t mean musicians can’t make money from selling concert tickets, CDs with nice packaging.

Ok so there are a lot of problems with what I have just argued, it goes against a lot of the ideals of IP rights in general and the droit d’auteur ideas. I just thought I’d think about what would happen with no such rights, as we get a little bit wrapped up in the whole need to protect music from illegal copying argument sometimes.

tomorrow's class - UPDATE

2006-01-25T06:58:00.000-08:00

Please consider what you would do to make the Patent Office better at winnowing out true inventions, from just obvious inventions or inventions that exist already in the prior art.

In addition to the readings already assigned (earlier post), please take a look at this short USA Today article on the daily work life of the patent examiner. It's a great read. Some of you have already read it for my IP class.

Also, the posts have been great so far! But we need to see more people on the blog. If you have yet to meet the weekly aspiration of 1 post or comment, please do so soon. thanks.

UPDATE: I've looked again at the reading for tomorrow's class. When I read them online, they look smaller than they are in print. In light of this, and my pledge to keep the reading light, I will make some of the readings optional, but recommended. Most are now very short news articles.

Assigned reading
1. Summary of FTC Report "To Promote innovation" (summary) - please focus on "The Software and Internet Industries"
2. bIPlog debate about patent reform (comment) -- optional recommended
3. what's a patent troll? (report)

4. Gregory Kirsch (lawyer) on business method patents (comment)
5. Is it obvious? In re Dembiczak (patent on pumpkin faced garbage bags (case) - optional recommended
6. Should we shut down Blackberry? (summary and report)

Do Record Companies Provide any Benefit

2006-01-24T13:37:00.000-08:00

Our class discussion about whether or not record companies actually provided any benefits really sparked my interest. In class I was really searching for a reason why they benefit society and nothing noteworthy came to mind. Over the weekend I had a further conversation about this with some friends, who are all big music fans and seem to be always looking for the next good unheard-of band.

Basically, the conclusions we came up with is that record companies probably do not bring much benefit to avid music fans who have a strong interest in searching the internet for new bands, going to shows, and actively keeping informed about music. I would classify myself as falling in this group, and consequently I found it hard to think of any benefits that record companies brought to me. I hear most of my new music through word of mouth. The one benefit we thought they might bring is to the average person who is more apathetic to music, whose attention is caught by the massive marketing ability of the large companies. We thought without these companies the overall interest and demand for music may decline overall. For example, I am sure there are plenty of people who are "fed" music through constant radio play and various promotions who consequently go to shows and purchase CDs who otherwise may not. This argument may be a stretch, but it seems hard to believe that these companies could be making so much money if they don’t provide anything; however, I am not oblivious to the lobbying power they have. Consequently, I can’t say I wouldn’t support a music industry without these record companies because it may mean more choice and lower prices for albums and concerts, but I think they may spark an greater interest in demand among people overall, as compared to other forms of entertainment. I can't say for certain whether this greater demand is good or not though.

Another interesting thing to think of is allofmp3.com. A friend of mine loves it for the ability to download any album for a few dollars a piece. However, after glancing over the site I figured it is a foreign website, and although you pay for the albums, the purchase is probably still in violation of U.S. copyright law. I’m guessing the company has some sort of license allowing them to legally sell it in certain foreign markets. Without giving any legal advice to my friend, as many of my professors have warned against, I mentioned it was probably illegal but I have yet to hear of any crackdowns on such sites or users of such sites. If anyone has heard otherwise, I’m sure my friends would like to know.

The "Next War in Copyright?"

2006-01-24T09:09:00.000-08:00

Lessig has an interesting post on his blog here (referencing his article here) on what he calls the "next war in copyright." In his article, he talks about the phenomenon of anime music videos (AMVs) in which Internet users take popular music and create music videos using scenes from Japanese anime. According to Lessig, about 30,000 people contribute to a website that contains these videos and about 500,000 users regularly visit the site.

I think the copyright owners' claims are pretty strong in that the people creating the AMVs are using copies of copyrighted music and animation to create derivative works. Moreover, as Lessig notes, the AMV creators are also circumventing encryption technology in some cases to gain access to copyrighted works, which is probably a violation of the DMCA. Thus, despite the promotional benefit to the copyright owners, they appear to have a pretty strong argument for infringement.

However, as Lessig notes on his blog (see above for link), it is likely that most people are going to side with the AMV creators--rather than the copyright owners--in this dispute, whereas most people in the Napster/Grokster/etc. case believed that the copyright owners were right in their claims of infringement regarding p2p technology. Part of the difference, he suggests, is that the AMV users are creating, not just taking.

Although I know very little about this particular phenomenon, I find the copyright issues very interesting. Also, as Lessig notes, the Internet has become a forum for dialogue and criticism of copyrighted works, which in the pre-digital world, could only be accomplished by discussing works in small groups of people.

So, assuming the copyright law would not protect the actions of the AMV creators, is this the sort of activity that copyright should prevent? Or is this type of creation and discussion important enough to warrant new protection? My personal (not legal) opinion is that the cost of stifling creativity outweighs the harm to the copyright owners in this case.

video game = a sport + $$$$$

2006-01-23T10:15:00.000-08:00

How would you like to earn $300,000? Well, are you good at playing video games? I was quite amazed watching this 60 minutes segment on Cyber Athlete Fatal1ty, who's already earned that much in video game competitions. He's treated like a superstar athlete by many adoring fans.

Maybe we're in the wrong line of business?

week 3: the future of patent

2006-01-20T05:38:00.000-08:00

A patent is a set of exclusive rights (to make, use, sell, offer to sell, and import) granted for an invention created by an inventor. The patent is the strongest form of IP, has few exceptions (no reverse engineering, no fair use), and lasts for 20 years from the date of filing the patent application.

In contrast to copyright law, patent law has faced stiffer calls for reform, in part based on criticism that patents are impeding innovation in some areas, such as computer software. The Federal Trade Commission issued a report "To Promote Innovation") (see here) partially critical of the current U.S. patent system, noting concerns of many industry folks that too many "bad patents" are being granted and that innovation is being dampened in the process. Consider the case of the patent (eventually declared invalid) that was granted by the Patent Office for making crustless peanut butter and jelly sandwiches (see here). Yes, you read that correctly.

The calls for reform have led to reform bills in Congress to change patent law to allow greater opportunity for third parties to challenge patents in "opposition" proceedings (a proceeding that thus far exists in other countries, but not the U.S.).

For this week, we'll consider: (1) should patent law be reformed because too many patents are being granted that impede innovation, and (2) if lawmakers are considering reforms in patent law to stop it from impeding innovation, why aren't they doing the same for copyright law?

Assigned reading
1. Summary of FTC Report "To Promote innovation" (summary)
2. bIPlog debate about patent reform (comment)
3. what's a patent troll? (report)

4. Gregory Kirsch (lawyer) on business method patents (comment)
5. Is it obvious? In re Dembiczak (patent on pumpkin faced garbage bags (case)
6. Should we shut down Blackberry? (summary and report)

Arctic Monkeys, the future of music?

2006-01-19T10:19:00.000-08:00

We'll be discussing the phenomenon of this UK band Artic Monkeys. They already are headed for two No. 1 singles, and they don't even have their first album out yet (Whatever People Say I Am, That's What I'm Not). Their success was achieved in part through the Internet. (See here).