SONA and Songwriters Fight DOJ’s Misguided 100% Licensing Rule

Things are heating up in the lawsuit filed by Songwriters of North America and three of its members (SONA) challenging the new gloss of the Department of Justice (DOJ) on the 75-year-old consent decrees that govern the licensing practices of ASCAP and BMI, the two largest performance rights organizations (PROs). SONA sued the DOJ on September 13, 2016, questioning the DOJ’s reinterpretation of the consent decrees to require the PROs to license all of the works in their repertories on a 100% basis. As reported by Billboard yesterday, CPIP Senior Scholar & Director, Copyright Research and Policy Sandra Aistars is assisting SONA’s legal team at Gerard Fox Law PC in the litigation.

After completing a two-year review of the ASCAP and BMI consent decrees, the DOJ issued a statement on August 4, 2016, concluding that the decrees require the two PROs to offer only “full-work licenses.” On this view, the PROs would not be able to continue licensing the fractional interests in the musical compositions owned by the songwriters they represent. As the U.S. Copyright Office noted in early-2016, such fractional licensing is a “longstanding practice of the music industry.” Nevertheless, the DOJ claimed that the change “should not meaningfully disrupt the status quo in the licensing of public performance rights.”

This assertion was immediately challenged by the PROs. ASCAP President Paul Williams issued a statement that same day vowing to work with BMI “to overturn the DOJ’s decision” in both Congress and the courts. BMI filed a letter with District Judge Louis L. Stanton, who oversees BMI’s consent decree, announcing its intention to seek a declaration that the decree “does not require 100% licensing.” Six weeks later, Judge Stanton issued an opinion declaring that BMI’s consent decree “neither bars fractional licensing nor requires full-work licensing.” The victory was celebrated as a win for songwriters, and both ASCAP and BMI issued statements praising the decision. The DOJ has since appealed the issue to the Second Circuit.

In its complaint filed in the District of Columbia, SONA argues that the DOJ’s 100% licensing rule violates songwriters’ due process rights, both substantive and procedural, under the Fifth Amendment as well as the Administrative Procedures Act. Calling the DOJ’s rule “a dramatic departure from the status quo,” SONA points out that it will “limit and undermine the creative and economic activities” of songwriters by forcing them to “undertake the burdensome and potentially costly process of revisiting and amending their core business practices, private contracts, and collaborative relationships” in order to comply.

Arguing that the case should be dismissed, the DOJ challenges the standing of SONA to even invoke the court’s jurisdiction. The DOJ claims that any harm caused by the consent decrees is too speculative and remote to create an actual case or controversy, and it suggests that no songwriters have been deprived of any protected liberty or property interest under the Due Process Clause. In its opposition brief filed this past Tuesday, SONA strongly opposes that contention:

[P]laintiffs have alleged and will prove at trial that [the DOJ’s] new rule has caused immediate injuries and will cause imminent injuries to each plaintiff, thus establishing standing. Plaintiffs have also pleaded facts sufficient to show that the government’s action is interfering with their freedom to contract, freedom of association, and freedom of speech, and that the government has taken their valuable intellectual-property rights without compensation, thus violating plaintiffs’ substantive and procedural due-process rights.

Admonishing the DOJ’s “casual disregard for the welfare and livelihoods of America’s songwriters,” SONA points out that, under the DOJ’s new rule, songwriters will:

  • Be deprived of the ability to choose the PRO that will license their shares of coauthored works;
  • Be required to withdraw works from representation by ASCAP or BMI;
  • Have songs that they must license outside of the PRO system;
  • Need to cede administrative control over their copyrights, including the right to collect royalties, to unaffiliated third parties;
  • Be compelled to renegotiate existing contractual relationships on a song-by-song basis;
  • Be forced to consider whether they should decline to collaborate with creators who are not members of the same PRO; and
  • Have reason to consider withdrawing from ASCAP or BMI altogether.
  • Now that President Trump is in office, there is new leadership at the DOJ. Jeff Sessions was sworn in as the U.S. Attorney General earlier today, and Brent Snyder took over as acting director of the DOJ’s Antitrust Division less than three weeks ago. Just last week, the DOJ asked the Second Circuit for an extra 90 days to file its opening brief in its appeal of Judge Stanton’s ruling that the BMI consent decree does not require 100% licensing. According to the DOJ, the “requested extension is necessary to allow new leadership in the Department of Justice adequate time to familiarize themselves with the issues.” Perhaps there is hope that the DOJ will discontinue its misguided push for a 100% licensing rule that will inevitably threaten the livelihoods of songwriters.

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

    By Andrew Baluch[1] & Devlin Hartline

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

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

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

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


    1. Keith R. Blackwell

    Supreme Court of Georgia (2012 – present)

    Prior Judicial Experience

    Court of Appeals of Georgia (2010 – 2012)

    Prior Legal Experience

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

    Education

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

    Intellectual Property Cases Decided as a Judge

    Patent: 0

    Trademark: 1 total (in favor of owner)

    Copyright: 0

    Trade Secret: 0

    Intellectual Property Cases Argued in Private Practice

    Patent: 0

    Trademark: 0

    Copyright: 0

    Trade Secret: 0

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

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    2. Charles T. Canady

    Florida Supreme Court (2008 – present)

    Prior Judicial Experience

    Florida Second District Court of Appeal (2002 – 2008)

    Prior Legislative Experience

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

    Prior Legal Experience

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

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

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

    Education

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

    Intellectual Property Cases Decided as a Judge

    Patent: 1 total (in favor of malpractice defendant law firm and against client patentee)

    Trademark: 2 total (all in favor of owner)

    Copyright: 0

    Trade Secret: 0

    Intellectual Property Cases Argued in Private Practice

    Patent: 0

    Trademark: 0

    Copyright: 0

    Trade Secret: 0

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

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    3. Steven M. Colloton

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

    Prior Judicial Experience

    None

    Prior Legal Experience

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

    Education

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

    Intellectual Property Cases Decided as a Judge

    Patent: 2 total (all in favor of infringer)

    Trademark: 9 total (7 in favor of owner; 2 in favor of infringer)

    Copyright: 1 total (in favor of owner)

    Trade Secret: 0

    Intellectual Property Cases Argued in Private Practice

    Patent: 0

    Trademark: 0

    Copyright: 0

    Trade Secret: 0

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

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    4. Allison H. Eid

    Colorado Supreme Court (2006 – present)

    Prior Judicial Experience

    None

    Prior Legal Experience

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

    Education

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

    Intellectual Property Cases Decided as a Judge

    Patent: 0

    Trademark: 0

    Copyright: 0

    Trade Secret: 1 total (dissenting in favor of infringer)

    Intellectual Property Cases Argued in Private Practice

    Patent: 0 (but in 1 case analogizing to patent law for “full compensation” damages)

    Trademark: 0

    Copyright: 0

    Trade Secret: 0

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

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    5. Neil M. Gorsuch

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

    Prior Judicial Experience

    None

    Prior Legal Experience

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

    Education

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

    Intellectual Property Cases Decided as a Judge

    Patent: 0

    Trademark: 7 total (2 in favor of owner; 5 in favor of infringer)

    Copyright: 4 total (all in favor of infringer)

    Trade Secret: 3 total (2 in favor of owner; 1 in favor of infringer)

    Intellectual Property Cases Argued in Private Practice

    Patent: 0

    Trademark: 0

    Copyright: 0

    Trade Secret: 0

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

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    6. Raymond W. Gruender

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

    Prior Judicial Experience

    None

    Prior Legal Experience

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

    Education

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

    Intellectual Property Cases Decided as a Judge

    Patent: 0

    Trademark: 5 total (5 in favor of owner

    Copyright: 7 total (4 in favor of owner; 3 in favor of infringer)

    Trade Secret: 2 total (1 in favor of owner; 1 in favor of infringer)

    Intellectual Property Cases Argued in Private Practice

    Patent: 0

    Trademark: 0

    Copyright: 1 total (amicus brief on behalf of U.S. Copyright Office)

    Trade Secret: 0

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

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    7. Thomas M. Hardiman

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

    Prior Judicial Experience

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

    Prior Legal Experience

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

    Education

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

    Intellectual Property Cases Decided as a Judge

    Patent: 1 total (in favor of negligent law firm)

    Trademark: 6 total (5 in favor of owner; 1 in favor of infringer)

    Copyright: 5 total (3 in favor of owner; 2 in favor of infringer)

    Trade Secret: 3 total (1 in favor of owner; 2 in favor of infringer)

    Intellectual Property Cases Argued in Private Practice

    Patent: 0

    Trademark: 0

    Copyright: 0

    Trade Secret: 0

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

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    8. Raymond M. Kethledge

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

    Prior Judicial Experience

    None

    Prior Legal Experience

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

    Education

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

    Intellectual Property Cases Decided as a Judge

    Patent: 0

    Trademark: 4 total (3 in favor of owner; 1 in favor of infringer)

    Copyright: 2 total (1 in favor of owner; 1 in favor of infringer)

    Trade Secret: 1 total (in favor of infringer)

    Intellectual Property Cases Argued in Private Practice

    Patent: 5 total (all on behalf of infringer/generic pharmaceutical company)

    Trademark: 0

    Copyright: 0

    Trade Secret: 0

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

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    9. Joan L. Larsen

    Michigan Supreme Court (2015 – present)

    Prior Judicial Experience

    None

    Prior Legal Experience

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

    Education

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

    Intellectual Property Cases Decided as a Judge

    Patent: 0

    Trademark: 0

    Copyright: 0

    Trade Secret: 0

    Intellectual Property Cases Argued in Private Practice

    Patent: 0

    Trademark: 0

    Copyright: 0

    Trade Secret: 0

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    10. Michael S. Lee

    U.S. Senator (R-UT) (2011 – present)

    Prior Legislative Experience

    None

    Prior Legal Experience

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

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

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

    Education

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

    Intellectual Property Cases Decided as a Judge

    Patent: N/A

    Trademark: N/A

    Copyright: N/A

    Trade Secret: N/A

    Intellectual Property Cases Argued in Private Practice

    Patent: 1 total (on behalf of infringer Deutsche Bank)

    Trademark: 0

    Copyright: 0

    Trade Secret: 0

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

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    11. Thomas R. Lee

    Utah Supreme Court (2010 – present)

    Prior Judicial Experience

    None

    Prior Legal Experience

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

    Scholarly Articles on Intellectual Property

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

    Education

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

    Intellectual Property Cases Decided as a Judge

    Patent: 0

    Trademark: 0

    Copyright: 0

    Trade Secret: 3 total (all in favor of owner)

    Intellectual Property Cases Argued in Private Practice

    Patent: 0

    Trademark: 27 total (all on behalf of owner)

    Copyright: 2 total (1 on behalf of owner; 1 on behalf of infringer)

    Trade Secret: 1 total (on behalf of infringer)

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

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    12. Edward M. Mansfield

    Iowa Supreme Court (2011 – present)

    Prior Judicial Experience

    Iowa Court of Appeals (2009 – 2011)

    Prior Legal Experience

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

    Education

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

    Intellectual Property Cases Decided as a Judge

    Patent: 0

    Trademark: 0

    Copyright: 0

    Trade Secret: 0

    Intellectual Property Cases Argued in Private Practice

    Patent: 1 total (on behalf of owner)

    Trademark: 1 total (on behalf of infringer)

    Copyright: 1 total (on behalf of infringer)

    Trade Secret: 1 total (on behalf of owner)

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

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    13. Federico A. Moreno

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

    Prior Judicial Experience

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

    Prior Legal Experience

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

    Education

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

    Intellectual Property Cases Decided as a Judge

    Patent: 3 (1 in favor of owner; 2 in favor of infringer)

    Trademark: 15 (11 in favor of owner; 4 in favor of infringer)

    Copyright: 9 (7 in favor of owner; 2 in favor of infringer)

    Trade Secret: 3 (2 in favor of owner; 1 in favor of infringer)

    Intellectual Property Cases Argued in Private Practice

    Patent: 0

    Trademark: 0

    Copyright: 0

    Trade Secret: 0

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

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    14. William H. Pryor, Jr.

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

    Prior Judicial Experience

    None

    Prior Legal Experience

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

    Education

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

    Intellectual Property Cases Decided as a Judge

    Patent: 0

    Trademark: 3 total (all in favor of owner)

    Copyright: 3 total (all in favor of infringer)

    Trade Secret: 0

    Intellectual Property Cases Argued in Private Practice

    Patent: 0

    Trademark: 0

    Copyright: 0

    Trade Secret: 0

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

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    15. Margaret A. Ryan

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

    Prior Judicial Experience

    None

    Prior Legal Experience

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

    Education

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

    Intellectual Property Cases Decided as a Judge

    Patent: 0

    Trademark: 0

    Copyright: 0

    Trade Secret: 0

    Intellectual Property Cases Argued in Private Practice

    Patent: 0

    Trademark: 0

    Copyright: 0

    Trade Secret: 0

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    16. David R. Stras

    Minnesota Supreme Court (2010 – present)

    Prior Judicial Experience

    None

    Prior Legal Experience

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

    Education

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

    Intellectual Property Cases Decided as a Judge

    Patent: 0

    Trademark: 0

    Copyright: 0

    Trade Secret: 1 total (in favor of owner)

    Intellectual Property Cases Argued in Private Practice

    Patent: 0

    Trademark: 0

    Copyright: 0

    Trade Secret: 0

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

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    17. Diane S. Sykes

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

    Prior Judicial Experience

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

    Prior Legal Experience

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

    Education

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

    Intellectual Property Cases Decided as a Judge

    Patent: 4 total (3 in favor of owner; 1 in favor of infringer)

    Trademark: 5 total (2 in favor of owner; 3 in favor of infringer)

    Copyright: 8 total (4 in favor of owner; 4 in favor of infringer)

    Trade Secret: 2 total (all in favor of infringer)

    Intellectual Property Cases Argued in Private Practice

    Patent: 0

    Trademark: 0

    Copyright: 0

    Trade Secret: 0

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

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    18. Amul R. Thapar

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

    Prior Judicial Experience

    None

    Prior Legal Experience

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

    Education

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

    Intellectual Property Cases Decided as a Judge

    Patent: 0

    Trademark: 1 total (in favor of infringer)

    Copyright: 1 total (in favor of owner)

    Trade Secret: 1 total (in favor of owner)

    Intellectual Property Cases Argued in Private Practice

    Patent: 0

    Trademark: 0

    Copyright: 0

    Trade Secret: 0

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

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    19. Timothy M. Tymkovich

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

    Prior Judicial Experience

    None

    Prior Legal Experience

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

    Education

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

    Intellectual Property Cases Decided as a Judge

    Patent: 1 total (in favor of owner)

    Trademark: 5 total (4 in favor of owner; 1 in favor of infringer)

    Copyright: 6 total (1 in favor of owner; 5 in favor of infringer)

    Trade Secret: 2 total (1 in favor of owner; 1 in favor of infringer)

    Intellectual Property Cases Argued in Private Practice

    Patent: 0

    Trademark: 0

    Copyright: 0

    Trade Secret: 0

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

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    20. Don R. Willett

    Supreme Court of Texas (2005 – present)

    Prior Judicial Experience

    None

    Prior Legal Experience

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

    Education

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

    Intellectual Property Cases Decided as a Judge

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

    Trademark: 0

    Copyright: 0

    Trade Secret: 0

    Intellectual Property Cases Argued in Private Practice

    Patent: 0

    Trademark: 0

    Copyright: 0

    Trade Secret: 0

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

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    21. Robert P. Young, Jr.

    Michigan Supreme Court (1999 – present)

    Prior Judicial Experience

    Michigan Court of Appeals (1995 – 1999)

    Prior Legal Experience

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

    Education

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

    Intellectual Property Cases Decided as a Judge

    Patent: 0

    Trademark: 1 total (in favor of owner)

    Copyright: 0

    Trade Secret: 0

    Intellectual Property Cases Argued in Private Practice

    Patent: 0

    Trademark: 0

    Copyright: 0

    Trade Secret: 0

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

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

    Second Circuit Brings Some Sanity Back to Transformative Fair Use

    The Second Circuit handed down an opinion in TCA Television v. McCollum earlier this week holding that a play’s inclusion of Abbott and Costello’s famous “Who’s on First?” routine was not transformative fair use. Given how expansive transformativeness has become lately, especially in the Second Circuit, the opinion is somewhat surprising. What’s more, it’s not clear that the appellate court even needed to reach the fair use issue since it held for the defendants on the alternate ground of lack of ownership. If anything, it appears that this particular panel of judges went out of its way to push back on—and bring some much-needed sanity to—transformative fair use doctrine in the Second Circuit.

    The play at issue, “Hand to God,” features an introverted boy named Jason who communicates through his alter ego sock puppet named Tyrone. In order to impress a girl, Jason and Tyrone perform over one minute of the “Who’s on First?” routine, with Jason as Abbott and Tyrone as Costello. The plaintiffs, including Abbott and Costello’s heirs, sent the defendants, producers and author of the play, a cease and desist letter. When the defendants refused to remove the scene from the play, the plaintiffs sued for copyright infringement. On the first fair use factor, which looks at the “purpose and character of the use,” the district court held that Jason/Tyrone’s almost-verbatim recitation of the heart of the “Who’s on First?” routine was “highly transformative”—so transformative that it was “determinative” of fair use.

    The standard for transformativeness, which comes from the Supreme Court’s opinion in Campbell v. Acuff-Rose, looks at “whether the new work merely ‘supersede[s] the objects’ of the original creation” or whether it “instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message[.]” The district court held that “Hand to God” used “Who’s on First?” for a different—and thus transformative—purpose, namely, to proffer a “darkly comedic critique of the social norms governing a small town in the Bible Belt.” While Abbott and Costello’s routine was standard vaudevillian fare, the district court reasoned that the play used it for a more dramatic purpose.

    The Second Circuit rejected the district court’s conclusion, pointing out that “the critical inquiry is whether the new work uses the copyrighted material itself for a purpose, or imbues it with a character, different from that for which it was created.” In other words, it’s not enough for “Hand to God” to have a different purpose than “Who’s on First?” The issue is whether “Hand to God” used “Who’s on First?” for a different purpose than Abbott and Costello used the routine. The Second Circuit held that it did not: “The Play may convey a dark critique of society, but it does not transform Abbott and Costello’s Routine so that it conveys that message.”

    The disagreement between the district court and the Second Circuit is subtle, yet important. The lower court determined that having Jason/Tyrone recite the “Who’s on First?” routine was transformative because it gave the audience a glimpse into Jason’s psyche. Whereas Jason is seemingly kind and soft-spoken on the surface, it becomes clear through his sock puppet persona Tyrone that there’s much murkiness beneath. And to the extent that Jason/Tyrone’s recitation of “Who’s on First?” is comedic, the district court thought that the “audience laughs at Jason’s lies, not, as the Plaintiffs claim, simply the words of the Routine itself.”

    By contrast, the Second Circuit held that this “reasoning is flawed in that what it identifies are the general artistic and critical purpose and character of the Play.” Moreover, the district court failed to identify how the “defendants’ extensive copying of a famous comedy routine was necessary to this purpose, much less how the character of the Routine was transformed by defendants’ use.” The Second Circuit’s approach here recognizes that fair use is premised upon necessity, that is, there needs to be a justification for copying the specific original work. In this case, the point of having Jason/Tyrone recite “Who’s on First?” was to demonstrate that Jason was lying when he later claimed to have written it. But that could have been accomplished by using any recognizable work.

    As the Second Circuit noted, “the particular subject of the lie—the Routine—appears irrelevant to that purpose.” And as such, the defendants’ use of “Who’s on First?” had “no bearing on the original work” and lacked the required “justification to qualify for a fair use defense.” This reasoning sounds very close to requiring the copyist to comment upon the original, a principle that, for better or worse, was rejected by the Second Circuit in Cariou v. Prince. Indeed, the appellate panel here mentioned Cariou, noting that, “although commentary frequently constitutes fair use, it is not essential that a new creative work comment on an incorporated copyrighted work to be transformative.” Nevertheless, the Second Circuit easily distinguished Cariou since there the artist at least changed the original work.

    The Second Circuit’s opinion is a refreshing reminder that, despite what some would prefer, not everything arguably-transformative is transformative fair use. If the defendants wanted to use a copyrighted work within the play, the proper course would have been to negotiate a license or to not use the work at all. And given the way “Who’s on First?” was used within the play, there was certainly no shortage of alternatives that could have sufficed. It’s also nice to see that some judges in the Second Circuit are skeptical of cases like Cariou, which the panel here referred to as “the high-water mark of our court’s recognition of transformative works.” The panel also rightfully noted that an overly-expansive view of transformativeness threatens a copyright owner’s exclusive right to prepare derivative works. And the fact that this push-back is coming from within the Second Circuit makes it all the more interesting.

    FTC’s PAE Study Makes Unsupported Recommendations

    Cross-posted from the Center for the Protection of Intellectual Property (CPIP) blog.

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

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

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

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

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

    Papers

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

    Essays

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

    Professors Mislead FCC on Basic Copyright Law

    Cross-posted from the Center for the Protection of Intellectual Property (CPIP) blog.

    In a letter submitted to the FCC late last week defending the Commission’s deeply flawed set-top box proposal,[1] a group of professors make an incredible claim: Everyone is perfectly free to distribute copyrighted works online however they please. No license? No problem! According to these professors, many of whom teach copyright law, copyright owners have no distribution right in cyberspace. If you think this sounds wrong, you’re right! This claim sounds ridiculous because it is ridiculous, and it’s simply amazing—and troubling—that professors would mislead the FCC in this way.

    The professors argue that a copyright owner’s “right to distribute encompasses the distribution of physical copies of a work, not electronic transmissions.” In support, they cite no case law whatsoever. There’s a good reason for this: None exists. The reality is that every single court that has ever considered this argument on the merits has rejected it. Time and again, this argument has been summarily dismissed by the courts. As the Nimmer on Copyright treatise puts it: “No court has held to the contrary on this issue[.]” Yet, the professors present this to the FCC as an accurate description of the law, with no equivocation whatsoever.

    In their defense, one can make a plausible argument that this follows from certain parts of the Copyright Act. And the professors do in fact cite these parts. They quote Section 106(3), which gives copyright owners the exclusive right “to distribute copies . . . of the copyrighted work to the public,” and Section 101, which says that “copies are material objects.” At first blush, one could question how it’s possible to distribute a “material object” online. Indeed, many academics have questioned this very thing. For example, one professor wrote in 2001 that “transmitting copyrightable works over a computer network such as the Internet do[es] not involve any transfer of such material objects.” On this view, transfers over digital networks are not distributions of material objects.

    While some academics may insist that this is the only way to interpret the Copyright Act, the reality is that the courts have uniformly interpreted it differently. Many courts have explicitly rejected the textual argument that there are no digital distributions, and many others have just assumed that such digital distribution rights exist. As the district court in Arista Records v. Greubel noted in 2006, despite “scholarly articles reflecting debate over the scope” of the distribution right, “the courts have not hesitated to find copyright infringement by distribution in cases of file-sharing or electronic transmission of copyrighted works.” The district court then cited opinions by the Supreme Court in New York Times v. Tasini, the Seventh Circuit in In re Aimster, and the Ninth Circuit in A&M Records v. Napster that applied the distribution right in cyberspace without even flinching.

    Perhaps the most in-depth analysis of the issue comes from London-Sire v. Doe, where District Judge Nancy Gertner held in 2008 that it “makes no difference that the distribution occurs electronically[.]” Judge Gertner reasoned that “[w]hat matters in the marketplace is not whether a material object ‘changes hands,’ but whether, when the transaction is completed, the distributee has a material object.” Even though the “distributee” has a different “material object”—the hard drive or other storage media where the file resides—Judge Gertner held that a digital distribution has taken place nonetheless. She warned that “an overly literal definition of ‘material object’ . . . ignores the phrase’s purpose in the copyright statutes.”

    Other courts have adopted this reasoning. For example, the district court in Capitol Records v. ReDigi cited London-Sire approvingly: “[T]he Court agrees that ‘[a]n electronic file transfer is plainly within the sort of transaction that § 106(3) was intended to reach [and] … fit[s] within the definition of ‘distribution’ of a phonorecord.’” The court then held that the distribution right exists in cyberspace: “Accordingly, the court concludes that . . . the sale of digital music files on ReDigi’s website infringes Capitol’s exclusive right of distribution.” Likewise, just last year, the district court in BMG v. Cox relied on London-Sire in holding that, “[n]ot only can electronic files be ‘material objects,’ but transferring files using a BitTorrent protocol satisfies the transactional element of distribution.”

    The fact is that courts have not wavered in finding that the distribution right applies online. As one district court said in 2012, “[i]n the electronic context, copies may be distributed electronically.” The point is so well-settled that it defies logic to claim otherwise, and it’s certainly consistent with other parts of the Copyright Act. For instance, Section 506(a)(1)(B) makes it a crime to “willfully” infringe by “distribution, including by electronic means[.]” And Section 115(c)(3)(A) creates a compulsory license “to distribute . . . by means of a digital transmission[.]” If digital distributions didn’t implicate the public distribution right, it wouldn’t be a crime to distribute “by electronic means,” and one wouldn’t need a license to distribute “by means of a digital transmission.”

    To claim that the “right to distribute encompasses the distribution of physical copies of a work, not electronic transmissions,” as the professors do, is simply wrong. There’s certainly an argument that can be made, but it’s not an accurate description of the law—which is how the professors present it. Everyone knows the distribution right exists online, and it’s industry practice to license digital distributions. Do you think iTunes and Amazon pay for distribution licenses because they just feel like it? It’s disturbing that professors would state without any qualification that electronic transmissions don’t implicate the distribution rights of copyright owners. And if they’re willing to say that, it makes you wonder what else they’re willing to say.


    [1] My colleagues and I have written extensively about the copyright concerns with the FCC’s set-top box proposal. See, for example, here, here, here, and here. The FCC now claims that a revised version of its proposal addresses these concerns, but the new language has not yet been released. Despite this fact, these professors claim that the yet-to-be-released proposal “does not interfere with any legitimate copyright interests of programmers, and that it is within the Commission’s authority to implement.” We’ll save our analysis of the new proposal for when the text itself is made available.