Oct 11

Shutdown Jeopardizes Negotiations: Major American I.P. Interests in Asia on the Line. by Weining Bai L’16

As the temporary shutdown of government drags on in Washington, media outlets have gone to great lengths outlining its damaging impacts: our fish are no longer inspected as thoroughly, and the Panda Cam blackout is raising plenty of social media outrage. However, little attention has been paid to President Obama’s cancelled trip to Bali, where 21 heads of state currently gather for the Asia-Pacific Economic Cooperation (APEC) summit. Far more than a simple loss of formality, the President’s absence seriously jeopardizes negotiations that have far-reaching consequences in geo-politic, trade barriers, and, you guessed it, international intellectual property rights disputes.

Occurring concurrently at the APEC summit is the Trans-Pacific Partnership (TPP) negotiations involving 12 APEC nations, including the United States, Japan, Canada, Australia, and developing economies on the Pacific Rim like Malaysia, Brunei and Vietnam to establish the first broad trans-pacific free trade agreements of such scale.
The TPP agreement will include an intellectual property rights chapter including provisions for intellectual property protection for pharmaceutical developers. The American Provision for the I.P. Chapter of the TPP demands longer monopolies for pharmaceutical patent holders and heightened enforcement of existing UN regulations governing patent infringement. The new standards sought by the American provision are notably stricter than current UN regulations protecting patents internationally. Many developing economies, including those attending the TPP, depend on generic off-brand drugs for affordable access to medicine. There is significant political pressure within these countries to block or mitigate the American Provision. Indeed, critics of this American Provision have charged President Obama with attempting to impose American patent laws on the rest of the world.

There is hope that the Bali negotiations will finalize a trans-Pacific free trade agreement. Should the United States push through its proposed measures, the TPP will not only protect American patent rights in current TPP nations, but also set a working precedent from which the United States can negotiate with other major Asian economies, including China and India. China especially has expressed interest in joining the TPP in a few years. Should the United States be able to expand on current intellectual property right protection in East Asia through the TPP negotiations, the ramifications of convincing China and/or India to conform to these new standards would be huge. Expanding patent and copyright protection for American enterprises in Chinese and Indian markets has the potential to increase American exports to and lower our trade deficit with Asia by billions of dollars.

In Bali right now, the American negotiating position has been significantly weakened by Obama’s unplanned absence. After months of technocrats talking out logistics, the TPP negotiations have moved into the phase where heads of state make the political calls on the controversial points. This soap opera in Washington has forced the U.S. to negotiate without a comparable authority at the tables. The leaders in Bali still maintain that negotiations are in the final phase, and will be finalized by the end of 2013. This, then, will essentially be the last occasion for every TPP head of state to convene personally and strike the necessary compromises. The shutdown has forced the President to abandon this crucial stage of the negotiations, and jeopardizes the chances America’s agenda will be realized in the final agreement. Future windfalls American businesses and inventors could reap from this new standard of international intellectual property rights enforcement now hangs in the balance.

If you’re interested in keeping up with the negotiations in Bali, official updates from the United States Trade Representatives can be found here: http://www.ustr.gov/tpp

The American Provision that’s being proposed at the TPP conference has been provided to the public by Representative Darrell Issa, and can be found on the Citizens Trade official site: http://www.citizenstrade.org/ctc/wp-content/uploads/2011/10/TransPacificIP1.pdf

Mar 29

2013 Symposium – Creation Nation: IP & The Rise of Prosumerism

6th Annual PIPG Symposium

Creation Nation: IP & The Rise of Prosumerism

Read the rest of this entry »

Mar 20

Supreme Court Expands The “First Sale Doctrine” in Kirtsaeng v. John Wiley & Sons

On Tuesday, the Supreme Court ruled in Kirtsaeng v. John Wiley & Sons, No. 11–697, 2013 WL 1104736 (U.S. Mar. 19, 2013), to limit copyright protection by extending the “First Sale Doctrine” to include copyrighted works lawfully manufactured outside the United States. The doctrine permits owners of individual copies of a copyrighted work to sell that copy without the consent of the copyright holder. By extending the doctrine to include copies manufactured outside the United States, the Court has permitted importation of these copies, which often sell for significantly less in foreign countries than in the United States.

Kirtsaeng involves copies of textbooks published and sold in Asia by publisher John Wiley & Sons, then resold in the United States by Supap Kirtsaeng, a Thai national studying mathematics in the United States. Wiley sued for infringement, and won in both the Southern District of New York and in the Second Circuit Court of Appeals, both of which found Kirtsaeng’s assertion of the First Sale Doctrine to be prohibited because it did not apply to goods manufactured overseas.  In addition to reversing the decisions of the courts below, the Supreme Court’s ruling in Kirtsaeng overturns similar decisions in the Ninth Circuit and the Eastern District of Pennsylvania.

This decision further expands upon Quality King Distributors v. L’anza Research Int’l, 118 S.Ct. 1125 (1998), in which the Court held that copies manufactured in the United States, sold legally overseas and then resold in the United States, were subject to the First Sale Doctrine. The Kirtsaeng Court takes this concept one step further, applying the doctrine to copies manufactured overseas. The Court’s rulings in both Quality King and Kirtsaeng would seem to contravene the plain language of 17 U.S.C.A. § 602(a)(1), which expressly prohibits importing copies of copyrighted works acquired overseas without the copyright holder’s permission. However Justice Breyer, writing for the majority in Kirtsaeng, relied on the Quality King decision in finding that § 602(a)(1) incorporated the limitations that apply to the copyright holder’s exclusive distribution right, including the First Sale Doctrine.

Though the facts of Kirtsaeng apply directly to publishing, its effects are sure to be felt throughout the universe of copyright-protected works. For example, geographic price discrimination is common in the DVD market, where studios have relied on §602(a)(1) (as well as the relatively meager technological protection of regional codes) to prevent copies sold at low prices in developing nations from driving down prices in the United States market. The Court’s ruling in Kirtsaeng leaves studios with a potential dilemma: continue to sell DVDs at low prices in developing nations to avoid forsaking important markets, or raise prices to maintain margins in developed nations. Music labels face a similar predicament with CDs sold overseas. Only time will tell how markets for copyrighted consumer goods will ultimately react to Kirtsaeng.

Mar 18

2013 PIPG Symposium – 3.29.13

poster

Click here for detailed information

Mar 15

Ready or Not, Here She Comes!

Saturday, March 16th the America Invents Act comes into full effect. The Act is the largest patent law reform in decades. The biggest change to look out for, of course, is the new First Inventor to File system. No longer can an inventor secure protection for their invention just because they were the first to invent; now, they must be the first inventor to file that invention as well. That brings America in accord with the rest of the world but also maintains protection for inventors against copying of their inventions by only granting patents to inventors who independently invent the patented product. For more on the First Inventor to File read this Wired article.
The Act brings with it some other changes as well, notably a more expansive definition of prior art. For some of these other highlights read this short post and follow the links at the bottom of that article for even more.
Happy inventing, America!

Mar 06

Six Strikes and You’re Out!

If you engage in online file sharing, you could soon be the recipient of a stern warning! The new Copyright Alert System is a collaboration between Internet Service Providers and content owners. Content owners search file sharing sites for infringing content and then notify the Internet Service Providers (ISPs) when they find infringing content. The ISP, in turn, sends the infringing user a warning. Harmless so far. But get six such warnings and providers will take actions–or “mitigation measures”– such as throttling you internet speed. Wrongly accused? Worry not! For $35 you can appeal the decision (reimbursed if you prevail). So read this AP article while you still have that lightning-fast internet speed and watch this video that explains it all. Happy (legal) browsing!

Feb 26

The Super Bowl of Blog Posts!

Is the title to this blog post infringing? Well, it seems the NFL would assert that much…and more! In a recent television commercial, Samsung, the latest hand caught in the Intellectual Property cookie jar calls a blitz on the NFL’s aggressive enforcement of its trademarks and throws a flag on trademark law. Specifically, they imply that trademark law forbids use of NFL trademarked terms such as “Super Bowl” or team names, even in appropriate references, like referring to the “Big Game” itself. The entertaining commercial is posted here: Samsung’s NFL & Trademark Bashing Super Bowl Ad.

But Samsung may have overplayed their hand once again. While the NFL may indeed be Mama Bear protective of its trademarks, trademark law may not.

Professor R. Polk Wagner, an expert in Intellectual Property Law on the faculty at the University of Pennsylvania Law School, contends that the NFL is (perhaps overly) aggressively enforcing their trademarks because these marks are critically important to the business of the NFL. Similarly, fashion companies will go to great lengths to ensure exclusive use of their trademarks, often asserting trademark infringement even where they may not have the right to stop the use. As an example (without comment of course) see this PIPG Blog post discussing Louis Vuitton’s cease-and-desist action against this very organization.

Bullying aside, trademark infringement generally cannot be asserted when the use in question is simply naming the product described and not likely to cause any consumer confusion, Professor Wagner explains. For example, to say that this blog post is the Super Bowl of blog posts is prima facie infringement because I am using the NFL’s trademark of the Big Game to describe something else—my super blog post. But to say this is a blog post about the Super Bowl is not infringement because I am using the trademark to identify the thing it is protected to mark—the Big Game—which is what this blog post is about (sort of).

So how does the NFL get away with it? Why must Samsung refer to “El Plato Supreme’” or “the Big Game” when the game has a name—the Super Bowl!? Frankly, because if the NFL (or Louis Vuitton for that matter) wants to sue, they can sue. And regardless of the merits, litigation is expensive. Even the threat of a lawsuit can serve as an effective deterrent. In short, if this blog post should disappear…well, you will know why.

 

Feb 09

IP In-House: Corporate Careers in the Media, Fashion, Tech, and Pharmaceutical Industries

IP In-House Flyer 11x17 imagePenn Law Intellectual Property Group (PIPG) is proud to present a career panel featuring leading In-House Counsel from the Media, Fashion, Tech & Pharmaceutical Industries. Our panelists will discuss how intellectual property is prominent in their in-house roles, how they achieved their corporate positions, and offer summer and long-term career advice for students of all levels. Whether you’re interested in patents, copyright, or trademarks, our distinguished speakers’ experience spans all areas of IP!

The all-star cast of speakers:

Media: 
VERNON CHU
General Counsel
BBC Worldwide Americas

Fashion:
SHERRY JETTER
HMX Group, Polo Ralph Lauren, Donna Karan

Tech:
FREDERIC BECKLEY
General Counsel, EVP
MeetMe, Inc.

Pharmaceutical: 
CHARLES KINZIG
VP, Global Patent Litigation Governance and Corporate IP
GlaxoSmithKline

Moderated by our very own Professor CYNTHIA DAHL,
Director
Penn Law Detkin Intellectual Property and Technology Legal Clinic

Wednesday, February 13th. 4:30 – 6:00 pm.

Location: Gittis 214 (Penn law School). Catered Reception to follow. Don’t miss this great networking opp!

Sponsored by PIPG and GAPSA

 

SPEAKER BIOS

 

401-Chu-VernonVernon G. Chu (General Counsel; BBC Worldwide Americas)

Mr. Chu has been the head of the legal department of BBC Worldwide Americas (BBCWA), since July 1999. He is responsible for all legal matters affecting BBCWA in North and South America. He coordinates policy issues with BBC Worldwide in London such as fair-trading, trademark and copyright policy. He is responsible for the legal aspects of BBCWA’s cable channel, BBC America, its content and production business which produces US network shows such as Dancing With The Stars, Top Gear and Torchwood, and BBCWA’s global licensing and digital entertainment and gaming business.

In December 2007, Mr. Chu was selected as the 2007 Counsel of the Year by the Association of Media and Entertainment Counsel. Before joining BBCWA, he had been an associate with Kay Collyer & Boose in New York City from 1989-1995. As an attorney, his responsibilities included negotiating production and distribution agreements with networks, cable and public broadcasters and financing agreements for production of motion pictures, television series, specials and documentaries.

Mr. Chu graduated from the Wharton School in Philadelphia in 1982 with honors and a degree in accounting and economics. In 1985 he received his MBA from Cornell University. A year later, he graduated Cum Laude from Cornell Law School.

 

Sherry Jetter HMX Group Fashion Rep Career PanelSherry Jetter (Former General Counsel and SVP at HMX Group, VP of Intellectual Property at Polo Ralph Lauren, Assistant General Counsel at Donna Karan Co.)

Ms. Jetter has been an in house practitioner in the fashion industry for over 22 years. Among her corporate roles, Ms. Jetter has become an expert in brand protection, intellectual property and licensing.

Most recently, Ms. Jetter held the position of Senior Vice President and General Counsel at HMX Group, a New York City-based apparel manufacturer that owned the American brands Hickey Freeman, Bobby Jones, and its Hart Schaffner Marx flagship label, which President Obama wore to his first inauguration.

Prior to joining HMX, Ms. Jetter worked for 10 years at Polo Ralph Lauren Corporation as its Vice President of Intellectual Property and Legal Affairs. She got her start in the fashion industry at the Donna Karan Company as its first in house counsel and eventually served as the company’s Assistant General Counsel, Senior Director of Intellectual Property.

In October, 2012, Ms. Jetter started her own practice counseling clients in the fashion industry.

Ms. Jetter is a 1983 Cum Laude graduate of Barnard College, Columbia University and received her JD from Brooklyn Law School in 1986.

 

Beckley, Fred IP Inhouse photo Frederic Beckley (General Counsel & Executive Vice President, Business Affairs; MeetMe Inc.)

Mr. Beckley is the General Counsel and Executive Vice President, Business Affairs of MeetMe, Inc., the public market leader for social discovery. He joined the company in 2011 as its first General Counsel and is responsible also for content moderation, customer relations, and human resources.

Prior to joining MeetMe, Fred served as General Counsel and Executive Vice President, Business Development of TruePosition, Inc. Previously he held a number of positions at Verizon Corporation. Mr. Beckley began his professional career in private practice, first as an associate on the Mergers and Acquisitions Team at Dechert, Price & Roads and then as an associate in the Commercial Department of Pepper, Hamilton & Scheetz.

Mr. Beckley holds a J.D. from Yale Law School, an M.A.R. from Yale Divinity School, and a B.A. from the University of Pennsylvania.

About MeetMe, Inc.

MeetMe® is the leading social network for meeting new people in the US and the public market leader for social discovery (NYSE MKT: MEET). MeetMe makes meeting new people fun through social games and apps, monetized by both advertising and virtual currency. With 60% of traffic coming from mobile, MeetMe is fast becoming the social gathering place for the mobile generation. The company operates MeetMe.com and MeetMe apps on iPhone, iPad, and Android in English, Spanish, Portuguese, French, Italian and German.

 

Charles Kinzig imageCharles M. Kinzig (Vice-President, Global Patent Litigation Governance and Corporate IP Policy; GlaxoSmithKline)

Mr. Kinzig has held various positions within the IP department, counseling on intellectual property matters, preparing and prosecuting patent applications, licensing, and litigating patents. He assumed responsibility for managing the U.S. Corporate Intellectual Property department of SmithKline Beecham in 1998, which handled patent solicitation, prosecution, due diligence, litigation, and counseling activities for the company’s commercial operations and R&D in the U.S.  Through merger, the company became GlaxoSmithKline, and he assumed similar responsibilities for North and South America prior to his current position.

Mr. Kinzig graduated from The Johns Hopkins University with a B.A. and M.A. in Organic Chemistry, and spent over a decade in the medicinal chemistry group at Smith Kline & French Laboratories in Philadelphia, engaged primarily in drug design and discovery.  He left the R&D organization to join the patent department, and received his J.D. from Temple University’s Beasley School of Law.

 

Professor Cynthia Dahl (Director, Penn Law Detkin Intellectual Property and Technology Legal Clinic)

 Professor Dahl joins Penn Law as the Director of the new Detkin Intellectual Property and Technology Legal Clinic. She specializes in the business applications of intellectual property and technology. While Senior IP Counsel for TruePosition, Inc. a Liberty Media-owned international wireless location company, she grew the company’s extensive patent portfolio, drafted all manner of intellectual property agreements, managed litigation and advocated on behalf of the company in front of international standards bodies. Prior to working at TruePosition, she was a litigation associate at Holland and Hart LLP, and Pennie and Edmonds LLP. Before launching her legal career, she counseled artists at Volunteer Lawyers for the Arts in New York, and held several jobs in policy and the press, including working for Senator Bill Bradley (D-NJ) and Nina Totenberg at National Public Radio.

Professor Dahl graduated with a B.A. from Yale in 1991 and with a J.D. from Stanford Law School in 1998.

Jan 24

Landmark Gene Patenting Case Heading Back to the Supreme Court

The protracted battle over the patenting of the BRCA breast cancer mutations witnessed another volley in late November the Supreme Court granted certiorari (in part) to take up the case against Myriad Genetics, the Utah-based biotechnology firm who holds the patent. The case stands to have a major impact on the emerging field of personalized medicine, where physicians armed with complete genetic data on patients can tailor treatment plans to match an individual’s specific physiology. The patent system has long upheld the idea that “laws of nature” cannot be patented, however our growing technical and scientific abilities have increasingly blurred the critical distinction between patentable innovation and unpatentable discovery.

Laying Claim to a Genetic Variant

At its heart, this case hinges on the patent claims of Myriad Genetics, which include a claim to the BRCA1 and BRCA2 mutations, two genetic variants which are known to significantly increase a woman’s probability of developing breast and ovarian cancer. The application of this patent by Myriad Genetics has created a monopoly on screening for this variant, with the patent-holder’s lab being the only one in the nation performing all commercial tests for the BRCA mutations. Though this claim has been challenged, the US Court of Appeals for the Federal Circuit affirmed the validity of the patent in July of 2011, holding that the complimentary DNA developed to interact with this variation was an invention, and sufficiently distinct from the underlying natural processes to be patentable. Ass’n for Molecular Pathology v. U.S. Patent & Trademark Office, 653 F.3d 1329 (Fed. Cir. 2011). Following the denial of two requests for a rehearing the case seemed settled until  the  of 2012.

A Ray of Hope for Opponents of Gene Patenting

The Supreme Court’s recent decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc. appeared to be the signal that detractors of gene patenting were looking for. That case, decided in March of 2012, struck down a patent on a technique for calibrating dosage of an autoimmune medication, holding that the patent did not diverge sufficiently from the underlying law of nature, and as such was not patentable. On it’s face, this case bears a striking similarity to the case against Myriad Genetics. In both instances, observations of underlying facts of biology serve as the lynch pin for the claimed patient.

With this in mind, the ACLU, who is trying the case on behalf of a host of plaintiffs, filed a petition of certiorari, asking the court to take up the Myriad Genetics case in light of their findings in Mayo Collaborative Services. The court apparently agreed, as they vacated the Federal Circuit Court of Appeals decision and asked that court to revisit the case in light of the Mayo decision. Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 132 S. Ct. 1794, 182 L. Ed. 2d 613 (2012).  Given the court’s decision to remand the case, it seemed certain that Myriad’s patent would be invalidated. Nevertheless, the Court of Appeals essentially reaffirmed their previous decision, claiming the case was distinguishable from the Mayo Collaborative case, while both tests involved the observation of natural reactions, the Myriad technique uses man-made cells in the testing process, rather than observing purely natural metabolism. This ruling fundamentally upholds the right to patent genes, and reinforces the exclusive right of Myriad to test for the BRCA variation.

Following the Federal Circuit Court of Appeals Court’s ruling, the ACLU again petitioned the Supreme Court for certiorari. Representatives of the ACLU stated that they believe the appellate court failed to “fully consider or correctly apply” the Mayo Collaborative case. The court granted certiorari in part to answer the principle question of the appeal: Are human genes patentable?  Ass’n for Molecular Pathology v. Myriad Genetics, Inc, 133 S. Ct. 694 (U.S. 2012).

Assessing the Potential Impact of Myriad Genetics

The potential impact of the Myriad Genetics case is difficult to understate. Genes are the fundamental blueprints for human physiology, and we are only beginning to unravel the vast complexity of their application. By allowing private organizations to patent genes or gene variants, we run a serious risk of inhibiting discovery in this critical field by instilling a fear in scientist of facing patent infringement litigation as a result of their work.

On a more practical level, the diagnostic monopoly being enforced by the court allows Myriad Genetics to charge over $3,000 for the test. In contrast, many predict that scientists will be able to sequence an individual’s entire genome for a mere $1,000 in just a few years. The ability to access this incredibly valuable diagnostic information could be hindered if gene patents continue to be enforced. For example, if a patient’s whole genome is sequenced, it may be the case that her physician can’t share the results of the screening in terms of any BRCA outcomes without paying Myriad Genetics for the right to do so. Multiply this result by the thousands of genes that have been patented to this point, and the development of inexpensive full-genome screening could be undermined entirely, depriving the medical field of a critical diagnostic tool.

To date, the damage incurred by enforcing Myriad’s BRCA patent has been relatively minimal. Nevertheless, as the industry continues to grow and more and more genes are patented, this question is likely to arise more and more, with potentially greater consequences than we have seen in this case. Now that the Supreme Court has chosen to hear the case against Myriad Genetics, we may see the first definitive ruling on the patentability of human genes as early as this summer. We will continue to track this case on the blog through the Supreme Court arguments this spring and the ruling this summer. To track these and other interesting developments in the IP world, subscribe to the blog using the link to the right.

Nov 29

Fifty Shades Too Grey? written by Jonathan Feder

With millions in book sales and a movie in the works it is a question that is all too obvious to ignore—does Fifty Shades of Grey infringe on the copyright of Stephenie Meyer’s Twilight series from which it was adapted? (Find the text of Ewan Morrison’s article in which he explores the same question here)

Federal law, specifically 17 U.S.C.A. § 106, gives the owner of a copyright the exclusive right to prepare or authorize “derivative works based upon the copyrighted work.” But the fair use doctrine found in § 107 generally allows copying of the theme or ideas of copyrighted work though not its particular expression. Protected expression typically includes particular plot elements and characters as well as the “total concept and feel” of the work. Roth Greeting Cards v. United Card Co., 429 F.2d 1106, 1110 (9th Cir. 1970). In short, the ordinary person should not recognize the work “as having been taken from the copyrighted source.” Bradbury v. Columbia Broadcasting System, Inc., 287 F.2d 478, 485 (9th Cir. 1961).

Has E.L. James in her book Fifty Shades of Grey crossed the line of infringement? Unfortunately there is no bright line test. In general terms, the idea of a young innocent girl falling for the perfect male but with one fatal flaw, be it blood-sucking or an erotic need to control, is not copyrightable. See Doody v. Penguin Group (USA) Inc., 673 F. Supp. 2d 1144, 1156 (D. Haw. 2009). Neither could the general setting of Seattle, Washington or the meet, date, break up, make up, marry, have kids sequence. But even if no single similarity would be subject to infringement, courts have held the arrangement or “combination of many different elements” as well as the order in which an author strings together concrete elements and the relationships between characters may command protection. Roth 429 F.2d at 1110.

Since Ms. James wrote the Fifty Shades trilogy as fan fiction for Twilight it is fair to conclude that she substantially copied the idea. The question therefore, is a factual one; did E.L. James in writing her work of fan fiction copy so much of the “total concept and feel” from the original work that a reasonable person would see that similarity? Id.

I invite you to be the one man jury. Go with your gut, consider Ms. James rendering of ideas, “the total sequence of events and the relationships between the major characters”, and you decide whether her work does in fact infringe on Twilight. Berkic v. Crichton, 761 F.2d 1289, 1293 (9th Cir. 1985).

And then take a deep breath. Because your favorite author probably won’t get sued. No suit has been brought to date and if history is any guide, presumably no suit will be brought. Why not? Many authors were themselves writers of fan fiction when they were young, many are flattered by the fan participation, and some even encourage it while very few condemn it. The few that have fought back have only succeeded in alienating the very fans they sought to secure. See Aaron Schwabach, The Harry Potter Lexicon and the World of Fandom: Fan Fiction, Outsider Works, and Copyright, 70 U. Pitt. L. Rev. 387, 415 (2009).

It seems that for now fan fiction lies in that grey area of law, neither wholly accepted nor wholly enforced. How much grey is still okay? All we know to date is—at least fifty shades.

Older posts «

» Newer posts