The 14th Annual Richard C. Sughrue Symposium on Intellectual Property Law and Policy begins in one hour! David Kappos, director of the USPTO will discuss the America Invents Act, the biggest patent law reform since 1836, during the keynote address at 12:45. Follow the whole event live on Twitter  #akronlawip

The University of Akron School of Law Center for Intellectual Property Law and Technology welcomes Professor Yang Ming of the Peking University School of Law in Beijing, China as a visiting professor.

“Dean Belsky and I welcome Professor Yang Ming to Akron Law, where he will teach a course on Chinese Intellectual Property Law,” says Professor Jeffrey Samuels, director of the Akron Law Intellectual Property Center for Law and Technology. “His visit follows a trip Dean Belsky and I made in October 2010 to Peking University Law School. In the future, we plan on further faculty exchanges, as well as student exchanges and other collaborative ventures.”

In addition to teaching, Ming will also speak to the Cleveland Intellectual Property Law Association, and serve as a panelist on International Intellectual Property Developments at the upcoming Richard C. Sughrue Symposium on Intellectual Property Law and Policy on March 19 at the John S. Knight Center in Akron. The symposium is co-sponsored by Akron Law and Sughrue Mion, PLLC.

Ming is associate professor of Peking University Law School, Ph.D. (People’s University of China); LLM (Zhongnan University of Economics and Law); LLB(Zhongnan University of Economics and Law) .He worked in Peking University Law School as a postdoctoral fellow and transferred to be a teacher since July 2006. He did studies in University of California Berkeley Law School as a visiting scholar from August  2008 to June  2009. His priority research areas are Intellectual Property Law, Internet Law and Competitive Law. Ming participated in the project of “the study on incorporeal property institution”, supported by the Ministry of Justice of the P.R.C and was awarded the First Prize of the Ministry of Justice Jurisprudence teaching material and academic achievement.

Ming‘s study was assessed at excellent level in the State Natural Science Foundation Project— “Intellectual Property Law in the Age of Knowledge Economy” and another achievement in the State Social Science Foundation Project—“Development of High Technology and Innovation of Civil Law” was evaluated at the first level. He has accomplished numerous academic publications, including the books, A Study on Intellectual Property Anspruch—with the Repression of Unfair Competition and Studies on essential problems of Intellectual Property (volume5) and the articles, the Intellectual Property Right of Music for Voices in a Chinese Opera, Chinese Opera Work and Chinese Opera Cinematographic Work—from the Case of Tian Xian Pei and Literary Work v. Artistic Work—Reflection on the Essential Theory Problems of Intellectual Property.

A welcome reception for Professor Ming will be held today in the law school atrium at 5 p.m. This event is free and open to the public.

Professor Will Huhn is quoted in today's New York Times regarding the legal challenge to Colorado's Tabor Amendment.

Professor Elizabeth Shaver is quoted in a Fortune article about Olympus' alleged business fraud. Check out what she has to say here .

Martin H. Belsky's lifelong pursuit of justice and fair treatment for all will be advanced by his election to board chair of the Anti-Defamation League region that covers Ohio, Kentucky, West Virginia and the western half of Pennsylvania.

Belsky, dean of Akron Law, was handed the gavel on Dec. 1 at the annual meeting of the Ohio/Kentucky/Allegheny Region.

Full Story

Long before her 17th birthday, Michelle McBee had set two goals for herself — serving in the U.S. Air Force and, one day, becoming a lawyer.

She has met her first goal and will achieve the second when she graduates in May from The University of Akron School of Law. But as Veterans Day approaches, McBee's thoughts are never far way from those still serving, and the needs of military veterans who are now trying to overcome a variety of obstacles as they forge new paths for themselves. Read more

The University of Akron School of Law announces the creation of a joint Juris Doctorate (J.D.) and Master of Laws (LL.M.) program in Intellectual Property.

 “The J.D./LL.M. in Intellectual Property (IP) program is a unique and efficient academic opportunity,” says Lauri Thorpe, assistant dean for Admissions.”Students may earn both the J.D. and the LL.M. in IP in three years (if full-time) or in four years (if part-time) including summers. Students earn 76 J.D. credits plus 12 IP credits at the J.D. level plus 12 IP credits at the LL.M. level for a total of 100 credits. This 100 credit hour requirement is only 12 more credits than our traditional 88 credit hour J.D. program. And there are some students who are also on track to also earn the M.B.A at the same time. It’s a no-brainer for students interested in IP to earn the J.D./LL.M., which can create a competitive edge in this challenging job market while also saving precious tuition dollars and valuable time.”

IP courses that students can or will take include Fundamentals of IP, Patent Policy, Copyright Law, Trademark and Unfair Competition Law, International IP Law, Entertainment Law and more. The full curriculum is available to view at  http://www.uakron.edu/law/curriculum/llm/index.dot.

This new joint program was developed under the leadership of Professor Jeffrey M. Samuels, director of the Akron Law Center for Intellectual Property Law and Technology.

"The new joint J.D./LL.M. program makes Akron Law’s IP program even more unique and desirable for potential students,” says Professor Samuels. “It will enhance our ability to attract students interested in IP and provide such students with the knowledge and skills they will need to be successful."

The Akron Law Center for Intellectual Property Law and Technology, one of few such centers in the United States, is one of the focus areas of the law school and contributes to the school’s national impact. The Center invites distinguished speakers to campus, hosts the annual Richard C. Sughrue Symposium on Intellectual Property Law and Policy, the annual IP Scholars Forum, and administers a Certificate program in IP Law, as well as of Master of Laws in IP Program.

Several Akron Law students have received recent recognition for their pro bono work in the community. Read the story here .

Akron Law is committed to community service and pro bono, which is a requirement for graduation. Under the terms of this requirement, Akron Law students must complete a minimum of 30 hours of community service prior to graduation. Of these 30 hours, at least 10 must be pro bono and five must be focused on serving those of limited financial means. The Akron Law faculty and administration hopes that this requirement will not only impact current students, but will also foster a spirit of service in Akron Law graduates as they move on to the practice of law. It is the duty and privilege of Akron Law, its students, and alumni to strive to better the communities that they live/work in.

 “Our law students donate hundreds of hours each year to projects in their communities. Their commitment to service makes a real difference in the lives of so many deserving people,” said Joann Sahl, assistant director of the Akron Law Legal Clinic and pro bono coordinator.

The Akron Law Alumni Association will hold its annual Alumni Awards Dinner at 5:30 p.m. on Friday, May 13 in the Student Union Ballroom. The honorees were chosen for their achievements in the legal profession and their communities.

The 2011 Outstanding Alumni Award honorees are Karen Bozzelli Campbell (’87), president, Akron General Development Foundation; Dale A. Normington (’69) retired associate general counsel, Sherwin-Williams Company; Steven P. Okey (’87) president, The Okey Law Firm, LPA; and Judge Brenda Burnham Unruh (’84), deceased, Summit County Court of Common Pleas. Wilson R. Huhn, C. Blake McDowell, Jr. Professor of Law and constitutional law fellow, UA School of Law, will receive an Honorary Alumni Award.

Irving B. Sugerman (’82), adjunct faculty member, will receive The John R. Quine Award as the Outstanding Adjunct Faculty Member; Professor Sarah M.R. Cravens, will receive the Thomas G. Byers Memorial Award for Outstanding Faculty Publication for her article “Judging Discretion: Contexts for Understanding the Role of Judgment;” and Robert L. Kinder (’03) will receive the Outstanding Alumni Publication Award for his article “Supreme Court Review of Federal Circuit Patent Cases: Placing the Recent Scrutiny in Context and Determining If It Will Continue.”

For registration information, visit here or contact Sue Staats at 330-972-7246 or staats@uakron.edu.

The University of Akron School of Law will hold its 87th Commencement Ceremony at 2 p.m. on Sunday, May 16 at E.J. Thomas Performing Arts Hall. The 2011 Akron Law commencement speaker will be Dr. Francis Gurry, director general of the World Intellectual Property Organization.

“During my years of government service and since, I have had frequent contact with Dr. Gurry and know him to be a most capable steward of the world’s major IP treaties and a leader in promoting the relationship between IP and economic development,” says Professor Jeff Samuels, director of the Akron Law Intellectual Property Center.

Gurry was appointed director general of the World Intellectual Property Organization (WIPO) on Oct. 1, 2008, and Secretary-General of its sister organization, the International Union for the Protection of New Varieties of Plants (UPOV), on Oct. 30, 2008.

Gurry began his WIPO career in 1985. He was instrumental in establishing the WIPO Arbitration and Mediation Center in 1994 and subsequently in developing the highly successful Uniform Domain Name Dispute Resolution Policy. He served on the WIPO senior management team from 1997, initially as Assistant Director General, then from 2003 as Deputy Director General.

Before joining WIPO, Gurry practiced as an attorney in Australia, and taught law at the University of Melbourne, Australia. He holds law degrees from the University of Melbourne and a Ph.D from the University of Cambridge, UK. He is an Honorary Professorial Fellow of the University of Melbourne, an Honorary Professor of Peking University and holds honorary doctorates from a number of universities.

He is the author of numerous publications and articles on intellectual property issues in international journals. An Australian national, Gurry speaks fluent English and French.

Professor Will Huhn is quoted in a Westlaw News and Insight story on gay marriage and the First Amendment. Read the story here .

Akron Law’s Annual Albert and Vern Oldham Intellectual Property Law Series will be held Thursday, April 7 at 5 p.m. Michael R. Klipper of Meyer, Klipper & Mohr, PLLC will give a lecture titled “The Intersection of Copyright Law and the Constitution.” For more than 20 years Klipper has worked on a number of issues in which the usually separate and distinct practice areas of constitutional law and copyright have intersected.  He will describe both specific instances in which these two subject areas have collided in Congress and the Courts and some of the legal and policy issues implicated therein.   Klipper's presentation is especially timely given that on March 7, 2011, the United States Supreme Court granted certiorari in Golan v. Holder where an act of Congress is challenged as unconstitutional because it exceeds Congress's authority under the Copyright Clause and violates the First Amendment's free speech protections.  Among other things, that case may provide some insights into the scope and nature of the public domain. For more information visit here . A reception will immediately follow the lecture.

The Akron Law Joseph G. Miller and William C. Becker Center for Professional Responsibility welcomes Professor Burnele Venable Powell from the University of South Carolina School of Law on Friday, April 8 at 4 p.m. Professor Powell's lecture, titled "What Counts When We Count on Lawyers Being Good? Preliminary Thoughts on the ABA National Lawyer Regulatory Data Bank" will focus on thoughts about lawyer discipline generated by his examination of the ABA’s national registry of reported incidents of disciplinary actions taken against lawyers in relation to suggestions about what the legal profession might do differently to increase ethical lawyer behavior. One hour of FREE CLE will be offered. Visit here for more details and registration information.

Ethics – Ethical Implications of Use of Private Investigators

Moderator/Commentor: Professor Jack Sahl, Akron Law
Panelist: Philip Barengolts, Pattishall McAuliffe

Mr. Barengolts is discussing ethical issues with respect to trademark pretext investigations.  Mr. Barengolts suggests there are 4 ethical rules that are of concern:

• Rule 4.1 – truthfulness in statements to others;

• Rules 4.2 & 4.3 – communications with persons represented by counsel or unrepresented; can't suggest disinterest; and

• Rule 8.4 – can't violate a rule through the acts of another.

Mr. Barengolts stated that the main case involving pretext investigations involves the Beatles.  The court said that engaging with sales personnel was okay when the investigators are pretending to be an ordinary average person and asking questions an ordinary consumer would ask.  In a subsequent case involving Italian furniture, a different court said the investigators posing as high-end furniture purchasers was also acceptable.

However, a later ruling created a conflict.  Mr. Barengolts said the investigators in this case asked questions concerning the acquisition of the allegedly infringing products and business practices.  In essence, asking more detailed questions than were posed in the earlier cases.  The difficulty is determining what level of questions are improper and who they can be asked to.

Mr. Barengolts noted that a court in Illinois compared the trademark pretext investigation to civil rights cases and declared these investigation to be appropriate as long as the investigator does not trick the other party into saying something they would not normally say.

Mr. Barengolts and Prof. Sahl suggested that lawyers clearly instruct their investigators on what is permissible and impermissible and do so in writing.  Most importantly, attorneys need to remind their investigators that they need to stick to their role and be consumers.  Furthermore, they suggest that attorneys not do the investigation yourself, because the attorney runs the risk of becoming a fact witness and losing the ability to represent their client in the case.

Panel Discussion: The Supreme Court's Patent Docket

Moderator: Professor Robert C. Kahrl, Akron Law

Panelists:
Gary Hoffman, Dickstein Shapiro LLP
Alan J. Kasper, Sughrue Mion, PLLC
Wayne Watkins, The University of Akron
Harold C. Wegner, Foley & Lardner

This panel is looking at the 3 cases pending in the Supreme Court (i4i, Stanford, and Global Tech) followed by a presentation on how to get your case in the Supreme Court.

Microsoft v. i4i (Gary Hoffman)

The issue is the burden of proof.  Since early 1980s, the standard has been "clear and convincing."  The particular prior art involved in this case was a prior use and this prior art was not before the PTO.  Microsoft argues that the clear and convincing standard is not in § 282 and because the PTO never considered this prior art, a preponderance of the evidence standard is appropriate.  i4i argues that the clear and convincing standard should be maintained because it is a long-standing precedent and the effects on US commerce would be negative.  Many amicus briefs have been filed in support of both sides (and neither side).

Why did the Supreme Court take this case?  Is it the existence of "patent trolls?"

What's the impact on value of patents and innovation? Mr. Hoffman notes he doesn't believe that changing the standard will have any effect on juries deciding invalidity.  He also questions what the parties will do if the standard is lowered?  Submit more prior art?  Less prior art?

Stanford Univ. v. Roche Molecular Systems (Wayne Watkins)

The Stanford employee assigned his future patent rights to Roche, but Stanford argues the invention belongs to it per the Bayh-Dole Act.   The Federal Circuit held the assignment to Roche was permissible.  The question the Supreme Court is answering is whether the Federal Circuit's ruling violates Bayh-Dole.

Mr. Watkins believes the Court took this case because of the conflict between the text of the statute and the intent and policy of the statute.

Global-Tech v. SEB (Alan Kasper)

The issue is whether the legal standard for the state of mind element of a claim for actively inducing infringement under § 271(b) is "deliberate indifference of a known risk" that an infringement may occur… or "purposeful, culpable expression and conduct" to encourage an infringement as the Court taught in MGM v. Grokster (a copyright case).

Mr. Kasper compared the statutory language of 271(a), (b), and (c) and finds a lack of language suggesting a standard for intent.  He further pointed out that there is a wide-ranging spectrum for the intent standard (ranging from no showing of knowledge or intent to a specific knowledge of the patent to deliberate indifference).

How to Get into the Supreme Court (Harold Wegner)

Mr. Wegner is discussing how to get your case before the Supreme Court.  Two suggestions he had, were, first, you need a bad decision by the Federal Circuit.  Second, you need good amicus briefing on the cert question.  Mr. Wegner is particular impressed with Prof. John Duffy's and other law professors' influence in this regard.

This post was written by Iken Sans, a law student at the University of Akron School of Law.

Panel Discussion: Implications of Costco on Exhaustion Doctrine

Moderator: Professor A. Samuel Oddi, Akron Law

Panelists:
Kenneth J. Burchfiel, Sughrue Mion, PLLC
Patrick J. Coyne, Finnegan, Henderson, Farabow, Garrett & Dunner
Wayne M. Serra, Ulmer & Berne, LLP
Professor Ryan Vacca, Akron Law

Mr. Patrick J. Coyne

Mr. Patrick Coyne opened the discussion with the exhaustion doctrine in the context of copyright law. He discussed several historical cases and their impact on the exhaustion doctrine.

The First-Sale principle was first established in Bobbs-Merril v. Straus. Straus purchased copies of the book and refused to sell them at the price Bobbs demanded. Straus prevailed.

In K-Mart v. Cartier, the Supreme upheld Custom’s interpretation of the statute that Customs is not required to bar parallel imports of gray market goods.

The Costco case included a very small global design. The design was registered, not aesthetic, and used to control the importation of the good. The court did not even address the issue of whether was it even a copyright. The Supreme Court did not clarify substantial issues that still need resolved.

The take away from these cases was that if the good is made in the US, or the first sale occurs in the US, then the First Sale Doctrine applies.

Mr. Coyne also discussed the legislative history. The history shows that the focus was on piracy and that where work was transferred was important, not where the work was made or sold.

Who does Mr. Coyne think should have won? Costco should have one hands down.

First, what does it mean to be “made under this title?” Where the work was made does not matter because the Berne Convention made where the work was created insignificant. In addition, exhaustion occurs by a sale, it does not matter where the actual sale occurs. Costco has created a “parade of horribles” because the Supreme Court interpretation includes those that have purchased a good overseas and later transfer the good to someone in the States as infringers.

Professor Ryan Vacca

Professor Vacca discussed Trademarks and the shift in the exhaustion doctrine from an emphasis on relationships to a rule of universality. For the last century, the rule of universality applied, a good legally made in one country can be imported into another country without violating a trademark. So how does this relate to copyrights? Gray goods.

1^st scenario – US Co purchased and registers TM from independent Foreign Co

Infringing and barred under Tariff and Lanham Act

2^nd – US CO registers TM; US Co and Foreign Co are affiliated

Not infringing

3^rd – US Co authorizes independent Foreign Co to use TM abroad

Infringing

Lanham and Tariff Acts created exceptions to exporting TM goods

The key is the relationship between the US Co and foreign entity. If there was an affiliation, there is no infringement and the importation is not barred. Another important key is goods analysis. If the good is materially different, then it is infringing and the importation is barred. If the good is NOT materially different, then it is not infringing. For example, Cabbage Patch Dolls. Spanish manufacturer licensed to make and sell only in Spain. A third party purchased dolls and important them into the US. The birth certificates were in Spanish, not English, therefore the product was materially different and infringing.

The goods analysis is really is a superimposition onto the relationship analysis. The goods are evaluated first, and then analysis goes to the relationship analysis. However, this is not a good approach under copyright law because importing an identical product undermines the author’s interests.

Mr. Kenneth J. Burchfiel

Mr. Burchfiel does not believe Costco has application to patent law. There is very little precedent on the question of whether a foreign sale of a US good that is authorized by the patent owner is later re-imported without the owner’s permission infringes. The issue surrounding the territorial restriction in Costco is to what extend to 271(g) limitations apply to section 154?

Patent exhaustion is a judge-made doctrine loosely tied to a statute. There is an express importation right under the Patent Act. In addition there is judicial antipathy to price fixing. Can the patentee sell a product and limit the rights of subsequent users?

The Patent Exhaustion Doctrine provides that the initial authorized sale of a patented item terminates all patent rights to that item. (LGE v. Quanta) Therefore most patent exhaustion cases revolve around contracts to determine what is an authorized sale, when did the sale take place, etc.

Fuji v. Jazz had many conclusory statements without supporting reasoning. In that case, Jazz would buy the old Fuji disposable cameras, with Fuji’s permission, in other countries, recondition them, and import them into the US. The court in that case said, “US patent rights are not exhausted by products of foreign provenance….. A different rule applies in the copyright context.” The Second Circuit is in contradiction with this opinion and there’s hope that the SC will take-up the issue for clarification at some point in the future.

Mr. Wayne M. Serra

Mr. Serra discussed the implications of Costco in the software industry. He stressed that we are in a digital age, causing an innovative disruption, decimating some traditional industries like the newspaper industry. Music industry has also dealt with disruptive innovations beginning with 8-track tapes and later compact discs. The MP3 file format now allows music files to be compressed enough to making internet transfer practical.

Many software cases just avoid the Exhaustion Doctrine. In Vernor v. Autodesk, the first sale doctrine did not apply to licensing arrangements for software. Licenses had a transfer restriction as part of the agreement. In UMG Recordings, Inc. v. Augusto (9^th Cir. 2010), however, the exhaustion doctrine applied because UMG did nothing to ensure users accepted the license, therefore UMG’s license failed.

He concluded with stating that companies are taking advantage of the importance of court decisions. Restive licensing agreements are being enforced by courts.

IP Symposium: The Future of the Nation's Patent and Copyright Systems

Panelists:
The Honorable Paul R. Michel, former chief judge, U.S. Court of Appeals for the Federal Circuit

The Honorable Marybeth Peters, former U.S. Register of Copyrights

Marybeth Peters

Register Peters started off her talk discussing the biggest challenges in her job as Register of Copyrights.  These included the following:

• Formalities being voluntary as a result of joining the Berne Convention.
• DMCA requires the Copyright Office to create exemptions to access controls.  These took a lot more time and effort than she expected.
• We're becoming a more digitized world and issues of territoriality are challenging.  The suggestions for compulsory licensing are not a good idea.
• Making the Copyright Office more digital and accessible.

Next, she discussed the challenges in the future for copyright law.  She commented that the challenges are:

• We have a digital networked worldwide society and content can travel all over the world very quickly.
• Even if you're not a pirate, getting licenses is "a distressing exercise."  This is especially the case in a world where everyone wants everything immediately.
• The copyright law is pretty outdated. A complete revision is essential.

Finally, Register Peters discussed some proposed solutions to some of the currently existing problems, including and noting that:

• We need to revise the copyright law, but this isn't realistic.  Nonetheless, individual problems can be solved legislatively.
• Giving the DOJ the power to shut down rogue web sites (proposed by Senator Leahy).
• Orphan works problem – limit the liability of people who do diligent searches for the copyright owner.  Google Books has stifled this.
• The private sector – creators and users – need to sit down and work out solutions.  Congress isn't going to do it.  Guidelines and best practices can and should be done.
• Licensing innovations.  Statutory licensing isn't a good idea, but collective licensing (along the lines of ASCAP and BMI) may be a good idea.  Fair use is not a good enough solution because of its uncertainty.

 Paul Michel

Judge Michel began by discussing the challenge he faced while sitting on the Federal Circuit.  He said, "The problem of being on the court is that you don't have 1^st Amendment rights."  He stepped down because he figured he could do more good off the court than on – trying to educate members of Congress and their staffers. 

Judge Michel then explained that he thought the key players who will be involved in trying to rebalance patent law are: (1) Congress, (2) Supreme Court; (3) PTO; (4) Federal Circuit; (5) White House; (6) mainstream media; (7) K-Street lobbyists.

Judge Michel commented on the pending patent reform legislation.  He predicted that a patent reform bill will pass, even if it doesn't do much.  The three most contentious issues, according to Judge Michel are: (1) first-to-file; (2) post-grant review; and (3) financing of the PTO (fee diversion from PTO to other government programs).  Judge Michel believes first-to-file will be adopted, but the scope of the grace period may be changed.  With respect to post-grant review, Judge Michel thought one of the two procedures will pass, but what the thresholds should be is an open question, although will probably be more modest than what was proposed in the Senate.  Finally, with respect to fee diversion, Judge Michel thought the House will not ban diversion.

Judge Michel concluded with a couple thoughts on Microsoft v. I4i and how the Federal Circuit will change.  He thinks the Supreme Court will reverse the Federal Circuit and apply a preponderance of the evidence standard across the board (i.e. get rid of the clear and convincing standard altogether). 

 With respect to changes to the Federal Circuit, Judge Michel predicted that there will be three additional slots opening on the court in the next 18 months.  The debate will be should the nominees be someone with an interest in patent law or more of a generalist.  The White House will obviously play a major role in the development of the court.

Trademark Law Developments

Professor David Welkowitz, Whittier Law School discussed 5 different issues involving trademark law (dilution, adwords, contributory liability, aesthetic functionality, and rights of publicity).
Dilution

Victoria's Secret v. Moseley was decided by the Supreme Court several years ago, but it's still around.  On remand, the only claim left is the tarnishment claim.  The 6^th Circuit says there's an inference or presumption of tarnishment when the mark is being used in a sexual manner.  Professor Welkowitz questions whether this presumption can realistically be rebutted?  He also wonders if the same presumption will be raised in contexts involving drugs.

Visa v. JSL  is a blurring claim.  "Visa" is a real word and has a real connotation and the defendant argued it was using the ordinary word in its ordinary context.  The 9^th Circuit said this was not the case because it was being used as a trademark and not for providing the goods or services in which the word would be used for (e.g. providing travel documentation).

The Trademark Trial and Appeal Board (TTAB) hadn't really decided very many trademark dilution cases, but last year the TTAB has shown more interest in dilution cases (5 during the last year).  One case is National Pork Board v. Supreme Lobster & Seafood Co. in which the TTAB determined that there was a likelihood of dilution involving "Pork – the other white meat."  Another is Coach v. Triumph Learning, which found that the mark COACH was not famous because dilution is concerned with the general public, not just consumers (e.g. handbag consumers). 

AdWords

Rosetta Stone v. Google.  Google sells words (many times trademarked words) to advertisers.  Trademark owners object to Google selling these words.  The district court held that AdWords are essential to the operation of Google's search engine.  Professor Welkowitz thinks this is an odd application of the functionality test.  This case is currently on appeal to the 4^th Circuit and Professor Welkowitz thinks the 4^th Circuit will come to a different conclusion on the functionality issue.

Contributory Liability

Tiffany v. eBay involved contributory liability for counterfeits sold on eBay.  eBay was not a direct infringer – it wasn't selling the counterfeit goods, but eBay certainly knew that there were some counterfeit goods being sold on its site.  The question was how particularized must that knowledge be to be liable.  The Second Circuit, similar to the YouTube decision, held that the knowledge needs to be particularized.

Aesthetic Functionality

Fleischer Studios v. AVELA (9^th Cir. 2011) – consumers aren't buying Betty Boop merchandise not because they think it's official or produced by a certain source, but instead they're buying the products because they want Betty Boop merchandise.  Because of this, the image of Betty Boop was found to be functional.

 Rights of Publicity

Keller v. Elec. Arts – a videogame case using real college football players.  A college football play brought suit alleging a violation of his right of publicity under California law.  The question was whether this was a transformative use.  The court said the videogame producer was just using the image of the player and not transforming it at all.

Copyright Law Developments

Robert W. Clarida, Cowan Liebowitz & Latman

Mr. Clarida began with a discussion on Viacom v. YouTube (currently on appeal to Second Circuit).  YouTube argues the § 512(c) safe harbor protects it and unless Viacom gives a takedown notice, YouTube is protected.  Viacom argues that § 512(c) doesn't apply because YouTube was "aware of facts or circumstances from which infringing activity is apparent."   Judge Stanton (SDNY) says just knowing that there is some general infringement going on is not enough – a red flag is needed.  The court based its decision on the "no monitoring rule" of the DMCA which says there's no obligation to monitor the site and check the content that's coming in (§ 512(m)).  Mr. Clarida says the red flag standard by Judge Stanton is too high and hopefully the Second Circuit will clear it up on appeal.

Next, Mr. Clarida addressed the Supreme Court's decision in Reed Elsevier v. Muchnick, which involves the copyright registration requirement of § 411(a) of the Copyright Act.  Section 411(a) states that a copyright owner needs to register registered the work before being able to sue for copyright infringement.  The Supreme Court said the registration requirement is not jurisdictional, but is a claim-processing rule.  The difference is that the argument can be waived if not raised.  To be jurisdictional, the statute must clearly say it's jurisdictional, otherwise it's a claim-processing rule.  This ruling was based on an employment discrimination case.  The Supreme Court's decision in this case differed from about 200 lower court cases that were decided to the contrary.   Mr. Clarida claims this has created a looser world for copyright.

Salinger v. Colting (2nd Circuit 2010) was a fair use case involving JD Salinger's classic book, Catcher in the Rye.  The district court said there was no fair use and granted an injunction.  The Second Circuit said no fair use, but reversed on granting of preliminary injunction because the district court presumed irreparable harm contrary to the Supreme Court's decision in eBay v. Mercexchange (a patent case).

Mr. Clarida said these cases suggest that copyright practitioners need to look beyond copyright law when advising their clients and arguing before the courts. They need to consider patent law and even employment discrimination concepts.

Soft Entertainment v. Dodger Productions (CD Cal. 2010) involves a 7 second clip from the Ed Sullivan Show.  The question was fair use.  The court said use of this clip constituted fair use because this clip was a historical reference point and that the introduction by Ed Sullivan was not the heart of the work, but merely an artery to the heart of the work.

Bouchat v. Baltimore Ravens (4th Circuit 2010).  Mr. Bouchat designed a logo for the Ravens, which looked very similar to the logo eventually adopted by the Ravens.  Ultimately, the Ravens subsequently changed their logo.  The court found no fair use, because, in part, there's a market for throw-back merchandise.  Comparing Bouchat and Soft Entertainment, Mr. Clarida said "fair use is absolutely a crapshoot. You're really just flipping a coin."

Next Mr. Clarida discussed Golan v. Holder, a case where the Supreme Court granted recently granted cert.  The Copyright Act brings back into copyright works of foreign origin that had fallen into the public domain.  It is argued that the portion of the Copyright Act that brought these works back under copyright law violates the 1st Amendment, because the traditional contours of copyright protection have been altered because we've never brought works out of the public domain. 

Finally, Mr. Clarida covered a couple of VARA cases.  In Mass. Museum of Contemporary Art v. Buchel (1^st Cir. 2010), the court held that an unfinished work of art is a work of art protected by VARA.  Kleinman v. City of San Marcos (5^th Cir. 2010), involved a "car bash" that took place when a new store opened.  The city ticketed the artist saying you can't have a junk car on your front yard.  The artist claimed this violates VARA.  The 5^th Circuit said these bashed cars didn't count as a work of visual art because this is a merchandising/promotional item.

Patent Law Developments

Donald S. Chisum, Co-founder, Chisum Patent Academy, Author, Chisum on Patents

Mr. Chisum discussed updates in patent law during the past year.  Starting with the Supreme Court's opinion in Bilski, which dealt with patentable subject matter and rejected the Court of Appeals for the Federal Circuit's machine or transformation test as the sole test for patentable processes, Mr. Chisum discussed how the Supreme Court's opinion has really left us in the dark with respect to what constitutes an unpatentable abstract idea.   Then noting a couple of cases decided by the Federal Circuit, Mr. Chisum suggested that the Federal Circuit is refusing to define abstractness, despite the Supreme Court's instruction to do so.

Mr. Chisum next reviewed the Federal Circuit's opinion in Ariad Pharmaceuticals, which held that the written description requirement for patentability exists separately from the enablement requirement.

Afterward, Mr. Chisum reviewed a few pending Supreme Court cases – Global-Tech Appliances, Microsoft v. i4i, and Standford v. Roche Molecular Systems.  Global-Tech involves the question of whether deliberate indifference to a known risk (knowledge of a patent) meets the requirements of 271(b).  Mr. Chisum thought the Federal Circuit did a good job on this case and was surprised the Supreme Court took the case.  Microsoft v. i4i involves what the burden of proof for showing patent invalidity is for situations where the prior art was not before the PTO.  Stanford involves the assignment of rights by an employee/inventor to a third party and how this relates to the Bayh-Dole Act.

Mr. Chisum concluded with thoughts on inequitable conduct in the Therasense case, which is currently pending before the Federal Circuit and some interesting cases on obviousness in the wake of the Supreme Court's KSR decision.

The Law School Admission Council has designated February as DiscoverLaw.org Month.  As part of a continuing commitment to diversity, The University of Akron School of Law and the Law School Admission Council will co-sponsor Discover Law Day Program. Prospective law students can learn about the opportunities at Akron Law by attending an open house from 1 to 3 p.m. on Saturday, Feb. 19. This is event is free and open to the public.  The program will include an admissions and financial aid session; a mock law class; and a student and alumni panel discussion. Prior to the open house, guided tours of the law school will be available beginning at noon. Free parking will be available in Lot 34, south of the law school. The law school is located at 150 University Avenue. Attendees can register to attend online here .

Akron Law Professor and Blogger Ryan Vacca is quoted in an Associated Press story on Mardi Gras costume copyrights. This story, which was picked up by several sites nationwide, is available via the New York Times  here .

Yesterday, Akron Law announced its new clinic program, the Akron Law Criminal Expungement Clinic. Aviva Wilcher, an Akron Law graduate, will direct the program and Professor J. Dean Carro will oversee the program. The Clinic is funded from a $10,000 grant from the City of Akron. Under the direction of Wilcox and Carro, Akron Law students will assist those convicted of nonviolent crimes in having them expunged from their record. Read more about this intiative here, here and here .

Dr. Helen Free, a member of Akron Law’s Intellectual Property Advisory Council, was awarded a 2009 National Medal of Technology and Innovation on Nov. 18, 2010  by President Obama.  Dr. Free received the prestigious award for work in the field of medical and clinical urinalysis testing.  She and her husband, the late Dr. Alfred Free, were both chemists with Miles Laboratories (now Bayer Corporation) and were instrumental in the development of the “dip and read” test that allowed diabetics to instantly monitor their blood glucose levels from the privacy of their homes.  She is a consultant for Bayer AG.

Akron Law, as part of National Pro Bono week, made a donation to the Akron Community Legal Aid office. The $430 donation was given to Sarah Stratton, director of Community Legal Aid on Thursday, Nov. 18.

As part of Akron Law’s continued efforts to educate students on the importance of pro bono work, the school organized a fundraising event held Oct. 22 as part of pro bono week. The event consisted of games such as jousting and cornhole, and faculty and students paid a fee to participate, which went towards the donation to the Akron Community Legal Aid office.

“This event had two goals: to bring students and faculty together in a lighter setting and to communicate to students the pressing needs that face legal aid societies throughout the U.S.,” said Dean Martin H. Belsky. “I am pleased that both goals were accomplished.”