Two related bills aimed at curbing rampant copyright and trademark infringement on the Internet are currently pending before the House and Senate.  While the bills have been endorsed by the RIAA and MPAA and have strong bipartisan support in Congress, they have come under fire by mainstream media and civil liberties groups who believe the bills would shift too much responsibility onto ISPs, advertisers, and payment processors while also giving the U.S. government and trademark and copyright holders too much power to block allegedly infringing websites without sufficient due process. The Senate PROTECT IP Act of 2011 (S.968) The bills began in the Senate, where Senator Patrick Leahy (D-VT) introduced the Preventing Real Online Threats to Economic Creativity and Theft of Intellectual Property Act,” or the PROTECT IP Act (“PIPA”) in May of 2011 (S.968). The PROTECT IP Act would establish a system where the Justice Department could take down websites dedicated to copyright-infringing or counterfeit activities, including sites that solely promote distribution of illegal copies, counterfeit goods, or anti-DRM technology.  The Act would give the DoJ the ability to obtain court orders preventing financial transaction providers, Internet advertising services, Internet service providers, and information location tools from linking to or processing financial transactions to or from the “rogue site.” Trademark and copyright holders would also be able to apply for a court injunction against the domain name to compel financial transaction providers and Internet advertising services to stop processing transactions to and placing ads on the website, if they have been harmed by the activities of the rogue website. The PROTECT IP Act was recently reviewed by the Senate Judiciary Committee and is still pending in the Senate. The House E-PARASITE Act (H.R.3261) The “Enforcing and Protecting American Rights Against Sites Intent on Theft and Exploitation,” or E-PARASITE Act, was introduced on October 26, 2011 by Rep. Lamar Smith (R-TX) (the bill was formerly known as the Stop Online Piracy Act, or SOPA) (H.R.3261). The E-PARASITE Act would authorize the DoJ to initiate federal court procedures against criminal activities conducted on foreign infringing sites engaging in copyright infringement, counterfeit goods, or theft of trade secrets.  Again, courts could issue orders to ISPs, payment network providers, search engines, and advertising services to take “technically feasible and reasonable measures” to prevent access to the rogue site. Similar to the PROTECT IP Act, trademark and copyright holders would use a process similar to the Digital Millennium Copyright Act (DMCA) to seek limited injunctive relief against the rogue site. The E-PARASITE Act was recently sent to the House Committee on the Judiciary where it was referred to the Subcommittee on Intellectual Property, Competition and the Internet. Proponents and Critics Proponents of the bills, including the Recording Industry Association of America (RIAA) and the Motion Picture Association of America (MPAA), maintain that the legislation is vital in order to address the widespread copyright and trademark infringement on the Internet.  See, for example:

• “RIAA chief: Copyright bills won't kill the Internet” at CNET;
• “The PROTECT IP Act : What You Need to Know” (pdf) by Creative America; and
• Fightonlinetheft.com.

There are also numerous critics of the bills who are concerned about the suppression of speech without due process and the effect of the bills on the Internet’s infrastructure, among other issues.  See, for example:

• “Stop Online Piracy Act would stop online innovation” at the SF Chronicle;
• “Coming Clean on SOPA” by the Future of Music Coalition;
• “A bipartisan attempt to regulate the Internet?” at the LA Times; and
• “And Speaking of the Inalienable Right to the Pursuit of Happiness . . .” at The Volokh Conspiracy.

Musician and pop culture icon Stefani Germanotta – better known to her fans as “Lady Gaga” – has actively protected her ‘distinctive’ brand since entering the national scene.  For example, she has required that photojournalists at her concerts assign all copyrights in their photographs to her, and recently filed a trademark infringement lawsuit against a company attempting to register the marks “Lady Gaga” and “Lady Gaga LG.”  A few weeks ago, however, Lady Gaga learned that she did not have rights in the domain name “ladygaga.org.” In August, Lady Gaga filed a Uniform Domain-Name Dispute-Resolution Policy (“UDRP”) complaint with the National Arbitration Forum (“NAF”) alleging that the domain violated her trademark rights and was intentionally registered in bad faith in order to capitalize on her fame.  Unfortunately for Lady Gaga, the NAF panel disagreed, finding that since the website hosted at ladygaga.org is a completely non-commercial fansite that disclaims any association with the musician, Lady Gaga had failed to show that the owner did not have a legitimate interest or right in the domain.  Lady Gaga’s legal team will undoubtedly be monitoring the site from this point forward, waiting for the day it involves or links to some commercial activity. Interestingly, the owner of the domain name, listed as “oranges arecool XD,” owns more than 2,000 domain names, including many related to celebrities (link). Take-Home Message While famous entities such as celebrities, companies, and universities usually have rights in domain names that attempt to take advantage of their fame, completely non-commercial “fansites” can be an exception.  To regain these domain names, the entity may have to consider alternatives to the UDRP process or litigation, such as offering to purchase the domain outright from the owner.

Upblog, my co-blogger Blaine linked a Daily Princetonian article that reported concern over some harm to "the scholarly industry." That phrase struck me, "the scholarly industry." What does it describe and evoke in a reader's mind? Is it a phrase that resonates positively, or negatively? It probably depends on the reader. "The Scholarly Industry" does suggest a pro-intellectual-property position in that it suggests that universities should be driving commerce and also the phrase evokes the classic industrial era, which was a time of growth under an intellectual property based legal regime.

The Open Access Movement is the name given to the trend among academics to retain copyrights in their scholarly work rather than assign them to a journal or other publishing entity.  One of the primary driving forces behind the movement is the desire to freely share information without pay-walls or other barriers. Princeton University recently joined this movement by formally adopting an open access policy for scholarly work produced at the university (see “Princeton University Faculty Commit to Open Access” and “Open access policy adopted”).  Under this policy, the faculty agreed to grant the University a “nonexclusive, irrevocable, worldwide license to exercise any and all copyrights in his or her scholarly articles published in any medium, whether now known or later invented, provided the articles are not sold by the University for a profit, and to authorize others to do the same.”  The policy is based on recommendations from a proposal (pdf) presented by the university’s Ad-hoc Faculty Committee to study Open Access earlier this year. Princeton joins several other universities who have similar open access policies.  Many of these universities recently formed the Coalition of Open Access Policy Institutions (“COAPI”), which hopes to “collaborate and share implementation strategies and advocate on a national level for institutions with open access policies.”

Earlier this year,135 university leaders across the country joined together in a pledge (pdf) to undertake greater efforts in commercializing university technology and to “ensure that the knowledge and technological breakthroughs developed through campus-based research was rapidly and broadly disseminated to advance the nation’s social and economic interests.” On September 16^th of this year – the same day that President Obama signed the America Invents Act into law – more than 40 of these universities released announcements discussing some of the specific efforts they have undertaken or plan to explore in response to their pledge.  A news release (pdf) from the Association of Public and Land-Grant Universities contains links to these announcements, including from New York University, SUNY Buffalo, and the University of Rochester, among others. A recent blog post from the Office of Science and Technology Policy at the White House (“America's Universities Growing the Economy With “Lab to Market” Initiatives”) further outlines some of the efforts planned by these universities.

Case:  CARNEGIE MELLON UNIVERSITY v. MARVELL TECHNOLOGY GROUP (W.D.Pa. 9-28-2011) What happened: Carnegie Mellon University tech transfer office circulated an invention disclosure relating to disc drives. The tech transfer office was informed that a different inventor from Seagate had previous worked on a similar technology, but the Seagate inventor stated that, “[The Carnegie Mellon professors’] invention is related, but goes beyond my work and is probably more interesting." It is unclear whether the tech transfer office knew that Seagate had already filed a patent application on the earlier work of its inventor. Perhaps not surprisingly given the encouragement of the Seagate inventor, Carnegie Mellon filed patent applications on the work of its inventors. In the fullness of time, Seagate got a patent for its early work and Carnegie Mellon got two patents for its later developments and refinements. Carnegie Mellon proceeded to sue Marvell for patent infringement. Marvell is defended based on the theory that many of the claims of the Carnegie Mellon patents were anticipated by the prior art Seagate patent. Decision: No summary judgment of invalidity because the claims of the Carnegie Mellon patents had certain limitations not disclosed in the Seagate patent. Comment: It does not appear that the Seagate work was cited to the U.S. Patent Office during examination of the Carnegie Mellon patents. If the Seagate work was not cited, then this may have been due to the fact that the Seagate application was not published (this was back in the 1990’s) and further because the Seagate patent had not yet issued (it would not issue until several years after the initial Carnegie Mellon application was issued). It is not clear how much the Carnegie Mellon tech transfer office even knew about the specifics of the earlier Seagate work when they were prosecuting the Carnegie Mellon patent applications. It is difficult to say whether Carnegie Mellon would have been in a better or worse position if the tech transfer office had investigated the early Seagate work as soon as they found out about it, and had explicitly dealt with the early Seagate work in the text of the Carnegie Mellon patent applications themselves. Importantly, the district court opinion does not suggest there was any duty to investigate the early Seagate work on the part of the Carnegie Mellon tech transfer office. From a practical perspective, things seem to be going well for Carnegie Mellon on these patents at least at this point.

Case: Board Of Regents Of The University Of Wisconsin System v. Phoenix International Software, Inc. (7th Cir., Aug. 5, 2011) What happened:

This case presents complex questions about the law of trademark and the law of sovereign immunity, as the latter applies to a state university. . . . Their dispute centers around two computer programs, each of which holds the registered trademark “CONDOR.” Their dispute centers around two computer programs, each of which holds the registered trademark “CONDOR.”

Decision: On the trademark issue, the appeals court held that the issue of trademark infringement by the university software product was sufficiently close such that a trial would be needed to decide that issue. On the sovereign immunity issue, the state university waived its sovereign immunity when it filed suit in the federal district court seeking to reverse a decision made by the Trademark Office. Comment: Be careful not to lose sovereign immunity by litigation conduct, such as the filing of lawsuits.

Article: At the Chronicle Of Higher Education website, Alex Campbell reports that UNC has put in place measures to prevent and minimize unauthorized file sharing by students. Specifically, computers that have file sharing software will not be allowed to connect to the campus network unless and until that student/computer is awarded a “hall pass.” This hall pass involves a student pledge to report illegal file sharing, and apparently some education on copyright law. Interesting Quote:

The university has already seen a big drop in the number of dorm computers that use file-sharing software, from about 1,000 last year to about 50 this year. Of those 50, about half have opted for the hall pass. The other half remain quarantined and unable to access the network, officials say.

Case: Nuvo Research Inc. v. McGrath (filed August 15, 2011, N.D. Cal.) What allegedly happened: In a complaint filed on August 15, 2011 in the Northern District of California court, Nuvo Research Inc. alleges that a UCSF professor, who had worked as a consultant for Nuvo, applied for a patent on an ALS (sometimes called Lou Gehrig’s Disease) drug that others at Nuvo invented. The university was not sued. The professor is currently performing clinical trials on the drug with ALS patients in conjunction with his own company. Comment: There seems to be some concern that this law suit could slow or stop the clinical trials of the ALS drug.

On September 8, 2011, six higher education related institutions released a joint statement endorsing the Leahy-Smith America Invents Act as passed by the Senate. The six institutions are the Association of American Universities, the American Council on Education, the Association of American Medical Colleges, Association of Public and Land-Grant Universities, the Association of University Technology Managers Council on Governmental Relations. The statement is up at the American Council on Education website. Interesting quote:

We appreciate that the concerns of universities and medical colleges were addressed in ways that ensure our institutions’ ability to carry out their public missions. These institutions are the nation’s principal source of the basic research that expands the frontiers of knowledge. The patent system plays a pivotal role in helping them transfer the discoveries made in their laboratories to the commercial sector for development into products and processes that benefit society. The associations’ position on patent reform closely followed recommendations by academic and industry leaders convened by the National Academies in 2004.

Association of Corporate Counsel website has an article about corporate counsels’ dealings with universities in the context of intellectual property intensive joint ventures. Much of the article is about practicing due diligence to be sure that patent ownership, patent equitable ownership and/or duties to assign future applications are clear and consistent as between the corporation and the university. the article then touches on a sometimes-sticky issue:

Finally, corporate counsel should request a meeting with the significant contributors to the inventions. Counsel for the university or nonprofit may not want to grant this request because the university often takes the position that the inventors are not essential to the negotiation process; however, it is critical to assess the inventor’s understanding of the arrangement and whether the inventor will continue to cooperate. Unlike large corporations, most universities and nonprofits provide a royalty stream to inventors associated with the licensing fees or revenue earned on those inventions. Since many of the inventions licensed are very early stage, it will be critical for the eventual commercial success of the technology to maintain an on-going dialogue with the inventor, and most importantly, include a “right of first refusal” or similar mechanism to ensure that as the inventor continues research on the basic idea, any improvements will be owned by your client.

Of course, whether extensive dialogue between the corporation and professor(s) will help things go smoothly, or otherwise, will depend upon the personalities and sophistication of those involved in a given university/corporate jv, but it is easy to understand why the corporation would want such a line of communication open.

From: An August 3, 2011 Intel press release:

These centers represent the next $30 million installment of Intel’s recently announced 5-year, $100 million ISTC program to increase university research and accelerate innovation in a handful of key areas. As with previously announced ISTCs for visual computing and secure computing, the new centers encourage tighter collaboration between university thought leaders and Intel. To encourage further collaboration, the ISTCs use open IP models with results publically available through technical publications and open-source software releases. (emphasis added)

Question: Much open source software has restrictions attached to it. Is it prudent to put legal oversight on these sorts of computer centers to make sure third part “open source restrictions” are complied with? Maybe this depends upon whether these computer centers will ever generate commercial software, or whether they will always remain uncommercialized.