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Welcome to the website of the Internet and Intellectual Property Justice Clinic, a University of San Francisco School of Law clinical program that provides legal assistance to parties in intellectual property matters. For more information, see the "About Us" page.

Our website includes commentary from our students on cutting-edge internet law and intellectual property topics. Those posts are listed below, and more are archived under "Pages" on the right. Enjoy!

Copyright and Clothing

By Elisa G.

   The Innovative Design and Privacy Prevention Act (IDPPPA) was first introduced on August 5, 2010 by New York senator Charles C. Schumer in an effort to provide more protection to fashion designers. If passed, the bill will offer intellectual property protection in an industry that often depends on the use of copying.

   Currently, nothing in U.S intellectual property law protects the design of practical articles such as clothing. Intellectual property rights, copyright, trademark, and patent laws do not protect the clothing industry and its designers. Previous attempts to solve this problem, most notably the Design Piracy Prohibition Act (DPPA), have failed to win congressional approval.

   The IDPPPA provides limited protection to fashion.  If passed the IDPPA would protect only “unique designs” and only “substantially identical” copies would be illegal. For qualifying designs, the bill would offer protection by prohibiting unauthorized importation, sale, or distribution of any infringing design for three years. Remedies would include statutory damages or an infringer’s profits, injunctive relief, and destruction of infringing articles.

   Supporters of this bill say the ability to receive royalties from the production of knockoffs would encourage the investment of capital in design activity and therefore boost the entire apparel industry. Supporters say that the three-year protection is enough time to award research and development without hindering creativity and progress in products based on the protected design.

   However, the IDPPPA has its share of critics. A strong concern is that the bill will hurt the fashion industry. Critics argue that much of the growth and creativity in fashion depends on imitation. These critics argue that the concept of the “trend” is what sells fashion. Because of this, they argue, copyright protection for clothing fashion would cause prices to rise and the creative cycle to slow down. Others critics argue that once in the hands of lawyers and judges, such a law will expand to harm both designers and consumers. They say that the only people who will benefit from this law are lawyers and those who can afford costly lawsuits.

   According to insiders, the bill is likely to pass. Should intellectual property protection be given to this industry, the result might be that imitation may no longer be the sincerest form of compliment but instead an expensive ticket to the courtroom.

iPhone Jailbreaking and the DMCA

By Sinny T.

   The Digital Millennium Copyright Act (DMCA) was originally enacted to prohibit “circumvention” of digital rights management and “other technical protection measures” used to protect and control access to copyrighted works. The DMCA has since cast a wide net to protect copyrighted material even when the use of the copyright materials arguably may be permissible under fair use guidelines.

   In order to curtail DMCA’s overly restrictive implications, the DMCA provides that the Library of Congress possesses the power to define exceptions under the DMCA for legitimate, non-infringing uses of copyrighted material. Pursuant to this power the Librarian of Congress has recently issued a public statement declaring that it was legal to bypass a cell phone’s operating system (particularly iPhone) on the particular software it will run to get “lawfully obtained” programs to operate.

   Apple, Inc. has maintained tight control over the types of programs allowed to run on the iPhone, namely, applications (a.k.a. Apps) pre-approved by Apple and which only could be purchased through the App Store. But, with the Library of Congress’ new ruling, Apple’s ability to police and prohibit jailbroken iPhones has vanished. A jailbroken iphone allows the user to bypass the restriction Apple places on iPhones to only allow the installation of applications from the App Store.

   Here’s how the argument had developed over this issue between Apple and “jailbreakers”:

   Apple argues that it has the right to control the software on its devices and jailbroken, altered phones infringes upon Apple’s copyright for Apple’s operating system. Apple further argues that altering the phone encourages pirated applications, exposes iPhones to security risks, and hampers the user’s overall iPhone experience.

   Jailbreaking proponents, however, argue that users should be allowed to customize their phones as they see fit and to have freedom to use features or programs that fall outside of the App Store. Furthermore, allowing this ability to customize phones will in fact bolster iPhone sales and appeal when Apple would not have such a restrictive grip over its products and application store.

   The current Library of Congress ruling allows jailbreaking iPhone users a big sigh of relief as to fear of prosecution.  The ruling also alleviates any concerns about bringing a jailbroken iPhone into the Apple Store for repair or analysis. 

   Although negative publicity over the leak of a secret phone prototype and iPhone 4 antenna problems have chipped away Apple’s iron control over its products, sales figures have not been impacted. Consumers continue to purchase Apple products regardless of any government ruling or unsavory publicity.

   The Library of Congress exception has also allowed artists to remix copyright-protected video content for noncommercial work, and renewed its approval for cellphone owners to “unlock” their devices in order to allow its operation under other wireless carriers.

HP v. Hurd: Trade Secret Misappropriation and Inevitable Disclosure in California

By Patrick U.

    On September 7, 2010, Hewlett-Packard (HP) filed a complaint against Mark Hurd, former HP President and CEO, in an effort to obtain an injunction to prevent Hurd from joining competitor Oracle as President and member of the board.  HP alleged (1) breach of contract and (2) threatened misappropriation of trade secrets.  The claim for breach of contract alleged that Hurd was under contractual obligations to maintain the confidentiality of HP’s trade secrets, and that Hurd violated those obligations.  The threatened misappropriation claim alleges that, in his position at Oracle, it will be impossible for Hurd to avoid using or disclosing HP’s trade secrets. 

    On September 20, 2010, HP and Oracle reached a settlement that would allow Hurd to join Oracle.  The details of the settlement are confidential, but an SEC filing indicates that Hurd forfeited a large chunk of HP stock options and experts suspect Hurd agreed not to participate in certain business decisions.  Hurd will likely not be allowed to make business decisions for a period of time in areas involving Oracle’s growing hardware business.

    This note will analyze HP’s claims on their merits and take a quick look at California’s rejection of the inevitable disclosure doctrine.

HP’s Claims

    HP’s claims are really one and the same.  HP is claiming that Hurd is in breach of his employment contract because he will inevitably disclose information he is under an obligation to keep confidential. The second cause of action, threatened misappropriation of trade secrets, is an extension of this theory.  That, regardless of the employment contract, Hurd will inevitably disclose HP’s statutorily protected trade secrets in his new role at Oracle.

    The inevitable disclosure doctrine arises from Cal. Civ. Code § 3426.2(a): “Actual or threatened misappropriation may be enjoined.”  Threatened misappropriation has been interpreted, in some jurisdictions, to include situations in which a former employee would “inevitably” disclose trade secrets.  Schlage Lock Co. v. Whyte, 101 Cal. App. 4th 1443 (2002).  The seminal case on the inevitable disclosure doctrine is Pepsico v. Redmond, in which a former Pepsi executive takes a job at Quaker Oats and Pepsi seeks an injunction to prevent the move.  54 F.3d 1262 (7th Cir. 1995).  The court held that “a plaintiff may prove a claim of trade secret misappropriation by demonstrating that defendant’s new employment will inevitably lead him to rely on the plaintiff’s trade secrets.”  Id.

    Plaintiff in Schlage attempted to apply the inevitable disclosure doctrine in California.  101 Cal. App. 4th 1443.  In California, non-compete agreements in employment contracts are per se void. Cal. Prof. Bus. Code § 16600.  Through this statute, California seeks to promote employee mobility and protect a person’s right to earn a living.  In Schlage, the California Court of Appeals declined to extend the doctrine to threatened misappropriation cases in California, reasoning that it creates an “after-the-fact covenant not to compete restricting employee mobility.”  101 Cal. App. 4th at 1447.

    In HP v. Hurd, both causes of action were likely to fail because of California’s policy of favoring employee mobility.  Despite the suit’s lack of merit, Hurd (Oracle) and HP settled quickly because of the deep relationship between the two companies.  The companies have around 140,000 customers in common, and 40% of Oracle software runs on HP machines.  The suit would have soured relations between two companies who have long been synergistic.  Interestingly, hiring Hurd signifies Oracle’s hardware ambitions, which is most likely why HP brought the suit in the first place.  A legal “firing across the bow.”  Watch for this relationship to degrade further over the next few years.

The Value of a “-book”: Facebook v. Teachbook

 By Carlos R.

   On August 18, 2010 Facebook, Inc., better known as Facebook.com, one of the world’s most popular Internet websites, filed a federal lawsuit against Teachbook.com LLC alleging trademark infringement due to the use of Teachbook.com’s “-book” suffix in its registered domain name. This will be a case of first impression in the Northern District of California, and will test the ability of wholly online services to trademark otherwise generic portions of their domain name.

   This suit against Teachbook is the main warning shot of a carefully launched campaign against other social networking websites that use the “-book” suffix in their domain names. Besides this  suit other sites that received cease and desist letters from Facebook to refrain from using “-book” in their name were Placebook, Redneckbook, Doctorbook, Vetbook, and Geezerbook. Many of these sites complied and were taken down. Teachbook may have been specifically targeted because it was planning a large nation-wide launch in the fall of 2010 and has explicitly advertised itself as an alternative to Facebook for teachers.

   Another targeted site, Lamebook, recently turned the tables and filed their own proactive trademark proceedings in the Western District of Texas against Facebook. Lamebook seeks declaratory judgment it is protected by the free speech element of the First Amendment as a parody and that it is a non-competitor of Facebook since it does not offer any social networking services.

   Many tech commentators on the Internet have suspected that Facebook's campaign was coordinated as a response to the release of David Fincher and Aaron Sorkin’s largely unflattering film adaptation of the events that led to the foundation of Facebook titled The Social Network. The lawsuit may also have much to do with the fact that many in Silicon Valley are betting on social networking websites expanding in the future and that Facebook sought to make a clear statement that it will protect its trademark name from dilution and infringement from imitators at all costs.

   Trademark law differs from copyright and patent law in that for a trademark to be  enforceable it must be in use in the marketplace. The central theories behind trademark law is that a mark will help identify goods in the marketplace and serve the dual purpose of protecting consumers from being tricked by imitator goods and also giving the owners of the mark a cause of action against competitors who piggyback off the success of the original mark to sell their own goods. A mark is considered "in use" once it is a recognizable indicator of a particular good in the marketplace. Marks can be things such as words, logo designs, colors, sounds, smells, or any combination of features that accomplishes the purpose of identifying one good.

   Words are often tricky to trademark because they can easily be found to be “generic” and not subject to trademark protections. Generic words are common or descriptive terms. For example a trademark for “apple” would be impossible to establish if one was selling apples. However, the more unique the mark to the good the better chance of success in obtaining a trademark. If one used the term “apple” to establish a mark in the computer hardware world they have a much higher likelihood of being successful (if not for the fact that Steve Jobs has gotten there first.)

   Domain names online may be considered trademarks because domain names are the central tool used by online consumers to access online goods and services. Facebook is operating under the central theory that they have established use in the marketplace and registered the name “Facebook” as a trademark for the purpose of online social networking.

   In the August 18th complaint against Teachbook the plaintiffs made two primary accusations against Teachbook.

   First, Facebook alleges trademark infringement based on the fact that the suffix “-book” causes Facebook and Teachbook to sound similar which may lead to confusion. They also claim Teachbook is directly competing for the same market pool as both Facebook and Teachbook operate online and both offer social networking to working professionals.

   Second, Facebook alleges dilution of its name brand. Facebook claims that Teachbook will weaken the strength of Facebook’s name, which has been expensive to build and maintain. Allowing a direct competitor to piggyback off the name recognition of Facebook, particularly through the use of “-book” in its domain name, will allow others to do the same and weaken the overall name brand of Facebook. The key wording here is that adding the term “-book” to the Teachbook domain name is wholly arbitrary to the function of it’s service as a social networking site for teachers, and that the only possible explanation for its use is to make consumers identify it through Facebook’s own name.

   The dilution cause of action may clearly be the stronger of the two. A similar case was decided in the fast food world earlier this year in Malaysia, where the nations highest court ended a lengthy eight year court battle between McDonalds and McCurry, an Indian-food based fast food chain. The allegations by McDonalds were very similar to the allegations made by Facebook, particularly to how the prefix “Mc-” was being used by McCurry to cause confusion among consumers and piggyback off McDonald’s name brand. For it’s own part McCurry claimed the “Mc” stood for “Malaysian Chicken” and that they were not direct competitors with McDonalds as they did not sell American fast food. The Malaysian court bought both of these arguments and found no infringement on McCurry’s part.

   The Facebook v. Teachbook case however will be fought in the Northern District of California. American Federal Courts are known to more friendly to intellectual property holders than courts in other areas of the world. It will be interesting to see which direction the court decides to go with. A win on Facebook’s part could shut down any running social networking site with the suffix “-book” and give Facebook a complete monopoly on the name and, in many ways, protect it from any competitors whose presence might be healthier for the marketplace. On the other side a win by Teachbook might open a floodgate for competitors to drown out any current value of “-book” in Facebook’s name and possibly spread the trend to other popular domain names.

   In either case the court will have a difficult time parsing through the worth of suffixes and prefixes on domain names and what value they have to the overall value of the name. I expect this will become an important issue as the Internet marketplace grows in the future. This is a case to keep an eye on.

Google-Verizon's Net Neutrality Proposal

By Yeon Soo C.

   Two Internets could emerge:  the public” information highway” we know today, and a private one with faster lanes and expensive tolls.

   The principle of “network neutrality” requires companies providing internet service to treat all sources of data equally.  Network Neutrality also requires no restrictions by internet service providers or governments on content, sites, platforms, and the modes of communication.

   Currently, Internet users get access to any web site on an equal basis: Foreign and domestic sites, large corporation home pages and low traffic blogs all show up on a user’s screen in the same manner when their addresses are typed into a browser.

   But, now there is a passionate debate over whether companies providing internet service should be able to give preferential treatment to content providers who pay for faster transmission, or, to their own content, in effect creating a two-tier Web.  This two-tier Web would have a fast lane and a slow lane, and the means to block or impede content containing controversial points of view.

   The Federal Communications Commission (“FCC”) has kept things the way they presently are. However, the FCC’s ability to do so has been in doubt since a federal appeals decision in April 2010 restricted its authority over broadband service: The Comcast Corporation, the nations’ largest cable company, challenged the FCC’s authority to impose the “net neutrality” obligations on broadband providers. The FCC argued that such rules are needed to prevent phone and cable companies from using their control over Internet access to favor some online content and services over others. The US Court of Appeals for the District of Columbia, however, held that the FCC lacks the authority to require broadband providers to give equal treatment to all Internet traffic flowing over their networks. 

   There is still another point of view on this issue. Recently, two leading players in internet service and content – Google and Verizon – came out with a joint proposal that took a different approach. In a joint policy statement Google and Verizon issued in August 2010, they proposed that regulators enforce the principle of net neutrality on wired connections but not on the wireless internet.

   Some large Internet and telecommunications companies – Google, Verizon, AT&T – as well as some startup companies showed positive reaction to this “Google and Verizon’s two-tier web” proposal.  The main reason for their support of the Google and Verizon’s two-tier proposal is that this proposal gives carriers the flexibility they need to be able to manage their networks. They argue that there should be an internet service that remains open and neutral, but that does not necessarily mean there shouldn’t also be premium options to appeal to some for a better consumer experience. Of course, it would also generate revenue for those companies who favor the two-tier approach.

   I fear, however, that there is the possibility of a negative impact from having a two-tier web in any form. Technology companies and consumer advocacy groups – Facebook, Amazon, Ebay – also strongly oppose the two-tier web proposal. If the proposal were to be adopted, the Internet would not be quite as open anymore. There is a great value in preserving an open Internet that is accessible to innovators – regardless of their size of wealth. The Internet we have today has promoted a vibrant and competitive marketplace where consumers have ultimate control over the content and services delivered through their Internet connections.

Performing Rights Organizations

By Shoshana L.

    Since the 1909 Copyright Act, copyright holders in the United States have held the exclusive right to the public performance of their works. A public performance occurs “at a place open to the public or at any place where a substantial number of persons outside of a normal circle of a family and its social acquaintances is gathered.” 17 U.S.C. § 110 (2006).

    Enforcing the copyright holder’s right presents a problem. To truly police this right, the holder must monitor a range of performance venues from strip malls to strip clubs. How could one individual, or a small group of owners, hope to enforce their rights against impermissible use across the United States?

Basics of PRS/PRO

    In the music industry, copyright holders are able to employ a type of collective rights administration called Performance Rights Organizations (PRO) or Performance Rights Societies (PRS).  Composers, lyricists and publishers join together as part of an entity which can negotiate licenses, extract royalties and monitor the enforcement of each member’s copyright when performed in public venues, TV and radio. Council of Better Business Bureaus, Music in the Marketplace, 12/14/2007, http://www.bbb.org/us/article/music-in-the-marketplace-3072. The first such group formed in 1914 under the name American Society of Composers, Authors and Publishers (ASCAP). ASCAP’S leadership of songwriters included many important songwriters of the day.

    The composer Victor Herbert, ASCAP’s first president, played the most important part in ensuring the survival of PROs. Mr. Herbert sued a restaurant called Shanley’s for performing his compositions on the piano for the entertainment of diners without paying any compensation to him. When the U.S. Supreme Court ruled upon the matter (in addition to a related suit against Hilliard Hotel Company), Justice Holmes remarked that “[i]f music did not pay, it would be given up. If it pays, it pays out of the public's pocket. Whether it pays or not, the purpose of employing it is profit, and that is enough.” Herbert v. Shanley Co., 242 U.S. 591, 595 (1917). Holmes’ comment, arguably vague, has been interpreted as establishing the legality of PROs, as PROs seek to ensure the profit from copyright goes to copyright holders. See 174th St. & St. Nicholas Ave. Amusement Co. v. Maxwell, 169 N.Y.S. 895, 895 (N.Y. Sup. Ct. 1918). Following ASCAP’s lead, but to represent different interests, two other groups have also arisen: BMI (Broadcast Music, Inc.) and SESAC (Society of European Stage Actors and Composers).

    The efficiency of PROs results from the use of blanket licenses. A blanket license grants a licensee the right to perform any or all the works in the PRO’s repertory. Council of Better Business Bureaus, Music in the Marketplace, 12/14/2007, http://www.bbb.org/us/article/music-in-the-marketplace-3072. Originally, PROs tailored their licenses to the medium and user. As a result of decisions regarding antitrust and unfair competition in New York and the Second Circuit, licenses today are non-exclusive, without discrimination in license rates terms or conditions among similarly situated users. ASCAP’s licenses are not considered a monopoly because artists retain the right and ability to license their works themselves, and ASCAP licenses do not discriminate in price between licenses similarly situated. U.S. v. ASCAP, 1940-1943 Trade Cas. para. 62,104 (S.D.N.Y. 1941). Similarly, when a Buffalo TV station challenged the blanket license in its region, the Second Circuit found options available in single-program licenses for use or source licenses with the copyright holders themselves. Buffalo Broadcast Co., Inc. v. ASCAP, 744 F.2d. 917, 933 (2nd Cir. 1984). It should be noted that ASCAP’s leading competitor, BMI, does not operate under such agreement so writers and publishers may be treated differently. Bernard Korman & I. Fred Koenigsberg, Performing Rights in Music and Performing Rights Societies, 238, PLI/Pat 9, 65 (1986).

    Each PRO monitors various public venues to seek out new licenses and enforce existing ones. Based upon the copyright statute, these public venues include restaurants, bars, clubs and hotels where live or recorded music is played; shopping malls; stores that play broadcast or recorded music; spas, gyms or other sites that offer exercise to music; trade shows; conventions; dance studios; skating rinks; private clubs or fraternal organizations; offices and stores that use “music on hold” for telephone customers; sports teams; colleges and universities; amusement parks; bowling centers; and the Internet. Also, businesses traditionally associated with the performance of music such as radio and television networks and stations, and concert promoters are tracked for non-dramatic performance of works. “Dramatico-musical works” are distinguished from “performing rights” and thus must be licensed directly from the copyright holder or a separate organization.

    Initially, ASCAP employed quasi-lawyer sleuths to uncover infringing establishments. In exchange for discovering infringement, the lawyer received the right to represent ASCAP in the case. This practice was criticized as verging on “barratry,” (the overzealous solicitation of legal work), in at least one case. Buck v. Elm Lodge, Inc., 29 U.S.P.Q. 444 (N.D.N.Y. 1936). The criticism led ASCAP to rely solely upon staff to search for infringing establishments, a practice also in place at BMI and SESAC.

    PRO staff members identify establishments through local advertising and other sources which indicate venues that publically play music. Sites which have not previously entered an agreement receive a visit from a field representative. The representative presents the owner with two options: purchase a license to continue using the work or face a copyright infringement suit. The sites which choose to agree to one of ASCAP, BMI or SECAC’s blanket licenses then must cooperate by handing over royalties. Local radio and TV stations generally provide representative samples from which the PRO can determine the number of uses of copyrighted works. Larger venues such as network TV stations and airlines provide complete logs of the music played.

Paying Owners

    Generally, the owners of the establishment which has entered a license agreement are responsible for handing over fees to the PRO. If an establishment pays a service to “pipe in” background music, as by playing a radio station, the service bears responsibility for paying license fees. The Better Business Bureau notes that federal courts have been rather strict in holding an establishment liable for payment. Establishments have attempted and failed to circumvent payment by claiming that performers were hired as independent contractors; or were not paid by the club owner and worked only for tips; or that the owner specifically instructed the musicians not to play copyrighted music; or not to play specific songs; or not to play music in the repertory of a particular performing rights organization; or even that the owner did not know the music actually performed was copyrighted.

    As PROs need money to operate, copyright holders receive a figure less than the performance license. First, PROs deduct operating expenses. The remainder is divided among members based upon two factors. The first measures the quantity of times a particular work is played, determined via a survey which quantifies the appearance of each piece of music at a given venue. The second quantifies the amount of the work performed. Where less than the entire work is used, as with a jingle or TV show themes, the performer receives proportionally less than if the entire song had aired. Korman & Koenigsberg at 74.

    Challenges to legality and fairness continue to be issues for PROs.  However, none to date have succeeded in proving price fixing or antitrust violations. Discontent did, however, lead Congress to enact The Fairness in Music Licensing Act of 1998. The Act, codified at 17 U.S.C. § 513, permits individual proprietors of 7 or fewer non-publically traded establishments in which non-dramatic musical works are performed publically to claim a PRO has demanded an unreasonable license rate or fee and to require the PRO to receive a reasonable license fee.

User Generate Parody Videos and Copyright Owners’ Duty Under DMCA

By James P.

    With the increasing popularity of user-generated content on the Internet and the ease with which users can manipulate media with readily accessible technology, it is no surprise that copyright owners are aggressively fightin to keep unauthorized content off websites like YouTube. At odds with the Copyright Owners’ interest in controlling the use of their content are the rights of individuals to express their own creativity while engaging in a “fair use” of another’s work, often through the creation of parody. A particularly dramatic scene from the 2004 film “Downfall” is a magnet for such parody creators, who superimpose captions over the film, “chang[ing] Hitler's words …  into satirical commentaries on everything from annoying World Cup vuvuzela horns to the collapse of real estate values.” Evangelista, Benny, Parody, Copyright law clash in online clips, San Francisco Chronicle, July 22, 2010 (available online at http://www.sfgate.com/cgi-bin/article.cgi?f=/c/a/2010/07/22/BUQV1EHV9G.DTL). In an effort to protect its copyright, Downfall’s producer began utilizing YouTube’s online mechanism for identifying copyrighted works.

    Even though the producer’s and studio’s main argument was that the entire film “Downfall” can be “viewed online in 10-minute increments without compensation for the studio, producers or actors.”  However, the studio’s search for violations “also netted the parody videos,” a significant number of which have been removed pursuant to YouTube’s compliance with the Digital Millennium Copyright Act. The question remains, in its zealous attempt to protect copyrighted work from infringement, what steps must a copyright owner take to ensure that it does not target fair use of a copyrighted work and trigger erroneous takedowns? 

Fair Use Under US Copyright Law

    The fair use doctrine is found in Section 107 of the Copyright Act, 17 U.S.C. Section 107.  Under that section, in order to determine whether a work qualifies for the fair use defense, courts must look at (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) The amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work. This statute doctrine codifies the federal common-law test articulated in Folsom v. Marsh (1841). As Justice Storey articulated, “[a] reviewer may fairly cite largely from the original work, if his design be really and truly to use the passages for the purposes of fair and reasonable criticism.” Folsom v. Marsh, 9 F.Cas. 342 (1841). To test the reviewers true intentions, Justice Storey articulates a balancing test that “look[s] to the nature and objects of the selections made, the quantity and value of the materials used, and the degree in which the use may prejudice the sale, or diminish the profits, or supersede the objects, of the original work. I.d. Section 107 applies not only to criticism to all uses of copyright that meet the four-factor balancing test.

Fair Use and the DMCA?

    An unanswered question in Fair Use Doctrine is whether a Copyright owner must undertake an analysis of whether an allegedly infringing work qualifies for the statutory fair use defense before demanding a takedown under the Digital Millennium Copyright Act. The DMCA (17 USCA 1512(c)) creates a safe harbor from copyright infringement liability for an ISP who timely complies with a copyright owner’s notice to take down a work. The notice must be accompanied by an affidavit stating that the owner has a good faith believe that the work in question is infringing. The ISP then must take down the allegedly infringing work.

    Recently, however, the Northern District of CA determined that a copywriter owner must make “a good faith consideration of whether a particular use is fair use” before issuing a takedown notice, reasoning that “[r]equiring owners to consider fair use will help “ensure[ ] that the efficiency of the Internet will continue to improve and that the variety and quality of services on the Internet will expand” without compromising “the movies, music, software and literary works that are the fruit of American creative genius.” Lenz v. Universal Music Corp., 572 F.Supp.2d 1150 (N.D.Cal.,2008). Lenz involved a mother who posted a short clip of her toddler dancing to a Prince song on YouTube, triggering a DMCA notice to YouTube from Universal. The case is currently on appeal to the 9th Circuit Court of appeals. Should the 9th Circuit uphold the District Court’s ruling, Copyright owners must consider whether an allegedly infringing use is indeed a “fair use” before filing a takedown notice in the 9th Circuit.

Do the “Downfall” Parody Videos meet the Statutory Fair Use Test?

    Any inquiry into whether a particular use meets the statutory “Fair Use” test under Section 107 is fact-intensive. For example, the question is not whether the “Downfall” Parody videos as a complete set meet the “Fair Use” requirements. Indeed, there will be cases in which some videos do and some do not. Given the competing interests between the copyright owner and the parody creators, it seems wholly unfair to me that the producer of “Downfall” can systematically scan YouTube for any uses of their film and utilize the DMCA notice and takedown provisions to block all uses, without an inquiry into whether the particular use qualifies as “fair use.”

Should Human Genes be the Subject of Patent Protection?

By Eunji C.

    The mapping of the human genome was a huge innovation that had great possibilities for early detection of diseases. For some patients and doctors, however, this has been disappointing to put it mildly. While the United States Patent and Trademark Office (USPTO) does not grant patents over the actual genes in the human body, it grants patents for the purified and isolated gene sequences and genetic tests which correlate the genetic sequences and medical conditions. This has led to a monopoly on genetic testing for certain diseases such as breast cancer.

    The Constitution grants the Congress with the power to grant patents to "promote the Progress of Science and useful Arts." U.S. Const. art. I, § 8, cl. 8. The idea of the patent system is quid pro quo. The patent owner is granted the right to exclude others from making, using, or selling the patented invention for 20 years. This right provides an incentive for inventors to invest their time and effort on new innovations and recoup the cost as well as award them for their contribution to the progress of science. In exchange, the public receives benefits from new inventions and developments. Additionally, inventors are required to provide a full disclosure of the invention, making the invention public knowledge once the period of exclusivity is over. This must be a careful balancing because too much patent protection can impede rather than promote the objective of patent protection. Lab. Corp. of Am. Holdings v. Metabolite Labs,. Inc., 548 U.S. 124, 126-127 (2006).

   In order to be granted a patent, the invention must meet the requirements set out in the Patent Act: patentable subject matter, utility, novelty, and nonobviousness. The subject matter requirement has been interpreted very broadly as “anything under the sun that is made by man.” Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980). This, however, is not without limits. The Supreme Court stated that “laws of nature, physical phenomena, and abstract ideas” are not patentable. Id.  at 309. These are not inventions which were meant to be protected because they are naturally occurring phenomenon.

    The USPTO has been granting patents on purified and isolated human genes based on the idea that purified DNA should be treated as any other chemical compound. The word "isolated" has become very powerful in distinguishing a claimed gene from its naturally occurring counter parts. Currently, about 20% of human genes are patented.

    In the case Association for Molecular Pathology v. United States Patent and Trademark Office, Seven patents relating to BRCA1 and BRCA2 genes have been challenged as invalid. 702 F.Supp. 2d 181 (S.D.N.Y. 2010).  These genes correlate to increased risk of breast and ovarian cancer. Myriad Genetics Inc. owns the patents at issue and sells BRCA screening tests at about $3000 per test. Myriad stopped other companies and researchers from BRCA screening through cease and desist letters and lawsuits.

    The opponents of human gene patents argue that gene sequences are products of nature and thus are not patentable subject matter. Additionally, they argue that these patents are unconstitutional because they impede rather than promote the progress of science. Many researchers have ceased their work on the BRCA genes due to fear of a lawsuit, which impedes the development of improved genetic testing. Patent owners can block alternative tests and research that could lead to better and cheaper testing. In the worst case scenario, patent owners could prohibit others from conducting research while not even practicing the research themselves. Researchers and doctors have become infringers, subject to harsh monetary penalties. Myriad also does not permit researchers to tell the results of the tests to the patients involved, which makes them unable to meet their ethical obligations to the people in the research.

    More importantly, the gene patents are having negative impact on the patients. Many of the plaintiffs in the case are patients who could not afford the tests. The testing is not covered by a number of insurers. Also, patients are unable to get a secondary test from another lab to confirm their results before having to make difficult decisions. This violates the patient's right to bodily integrity and health and the idea that a person should be able to look at their own genome and see if there is a mutation without paying a license fee to someone else. In Ontario, Canada, where the patents are ignored, the testing costs about one third of the cost in the United States.

    There is also an increasing tendency to patent upstream inventions such as research tools instead of the products of research, as a way to make money on license agreements.

    Proponents of the gene patents argue that patent protection has been given to other innovations that are also derived from nature. Myriad argued that the patents are on the purified form of naturally occurring compounds. They argued that since the genes do not exist in nature in pure form, this satisfies the difference needed for the patent protection. Proponents of gene patents also argue that patents allow for the much needed investment. Researchers might be deterred from developing innovative tests and drugs if they can't protect the fruits of their labor. Myriad argued that substantial private investing went into their search on the BRCA genes since it takes about 5-15 years and $100 million to bring a new biologic drug to market. Myriad also pointed out that they are constantly improving the testing process and that they will do a second interpretation of the results.

    The District Court denied Myriad's argument and said patentable subject matter must be markedly different from a product of nature; there must be a transformation which leads to a distinctive name, character, or use. The court’s decision is based on the idea that there has been too much focus on the term "isolated" when the entire utility of the isolated gene lies in the fact that it is functionally indistinguishable from the natural version of the gene. This is because the purified form has the exact same information as the gene in the human body that the purified form can be used as a diagnostic tool. The court’s opinion concluded that that purification of a natural product, without more, is insufficient to transform the product into a patentable subject matter. The District Court recognized that this was a valuable scientific achievement for which Myriad deserves recognition, but said that that is not the same as being entitled to a patent. The case is now in the Court of Appeals.

    The outcome of this decision could have significant impact on the health care and biotechnology industry. One major factor is the patient's right to information and health care concerning their own body. With breast cancer being the second cause of death for women in the United States, this issue has impact over a major population. Another consideration is the biotechnology industry. Unlike the technology industry with lower development costs, biotechnology industry has huge regulatory and expense hurdles. This could make it impractical without the patent protection to recoup the cost needed. Additionally, while the decision of a District Court may not have strong value as precedent, if the Court of Appeals decides to uphold the District Court's decision, this will have an impact for all of the human gene patents. Companies that have filed their human gene patent applications, have already disclosed their innovation. If these patents become invalid, the innovation could become public knowledge without the patent applicants being rewarded for their innovation, and investments in the company would probably lose value.

    There are other possible solutions to address concerns of both sides of this question. For example, the current research exception is very narrow.  If there was an expanded exception for research, the gene patents would not impair the progress of science. Combined with a limited patent which excludes research and diagnostic tests, or a mandated compulsive licensing, patent owners could continue to benefit from the patent protection while research and personal health rights would not be affected.

    Considering the far reaching consequences of the BRCA genes decision, it is especially critical to ensure that these patents truly serve the goal of the patent system. With a creative approach, it is possible to promote innovation in the science industry while preserving the personal right to access and make informed decisions over one's own body.

Cyberbullying, Schools, and the Constitution

By Dale R.

     The suicides of two teenagers became the center of national attention in 2010.  Fifteen year old Phobe Prince, an Irish immigrant in Massachusetts killed herself after several months of being the victim of bullying at school and on-line.. More recently, an eighteen year old college freshman named Tyler Clementi jumped off the George Washington bridge after his roommate used a computer camera to record Clementi engaged in sexual activity with another man, and posted the video on the Internet. Both suicides resulted in criminal charges being filed against the alleged bullies.

    The suicides turned media and national attention to the growing problem of cyberbullying. Researchers Sameer Hinjua and Justin W. Patchin at the Cyberbullying Research Center found that about 20.8 percent of students under eighteen were the victims of cyberbullies according to a study conducted in February 2010.

    This commentary will discuss possible school responses to cyberbullying and potential legal restrictions that might apply to those responses.

    The Supreme Court famously upheld the free speech rights of students in the 1968 case Tinker v. Des Moines Independent School District. In Tinker, school administrators punished several students for wearing black armbands to protest the Vietnam War. The Supreme Court via Justice Fortas dismissed the suspensions as violations of the First Amendment. The Court held that schools can only discipline speech if it is creates a "substantial disruption" to the daily operation of the school. Later Supreme Court cases placed limitations on Tinker's sweep. For example, in Fraser v. Bethel School District (1986), The Supreme Court upheld the suspension of a student who, at an assembly, gave a speech filled with sexual innuendo. Chief Justice Burger wrote that the suspension was justified because schools play a vital role in teaching proper civil discourse and could punish students for speech that is lewd and vulgar.

    Courts often have found that many instances of cyberbullying and other cyberconduct by student's violate the Tinker standard. For example, the Pennsylvania Supreme Court upheld a student expulsion for a website the student created even though the site was created off campus.  In this case, J.S. v. Bethlehem School District, J.S., created an anonymous website attacking school administrators and teachers. He compared one teacher to the Nazis and asked for donations so he could hire a hitman to kill her. The Principal contacted the police and F.B.I. to discover the creator of the website and decided to expel J.S. after the F.B.I. stated they would not file criminal charges against him.

    The majority upheld the expulsion even though J.S. did not tell anyone at the school about the website and took it down voluntarily. The Court reasoned that Tinker's substantial disruption standard was met because the teacher-victim suffered emotional distress and needed to take a leave of absence because of the remarks.

    Many jurisdictions agree with the decision reached by the Pennsylvania court in J.S. and hold that schools need broad power to punish students for unacceptable conduct even if the actions occur off-campus and not during school hours.

    But in other jurisdictions, there are some courts that reach the opposite result. A federal court in California held that a suspension for cyberbullying violated the First Amendment and Due Process in J.C. v. Beverly Hills Unified School District. J.C. created a video mocking a fellow student named C.C. as a slut and posted the video on YouTube. The court noted that J.C., unlike J.S. in the case above, wanted other kids at school including the victim to see the video. J.C. received a two-day suspension. The court held that her suspension violated J.C.'s First Amendment rights because there was no substantial disruption to school activities and the kind of name-calling J.C. did on her video was the every day kind of bullying that school administrators can expect from students.

    J.C. also received support for her argument from California Education Code Section 48900(s). The court noted that the statute severely limits the scope of school jurisdiction and no reasonable person can interpret it to allow a school to punish a student for off-campus activities that were not connected to any school function or event.

    Many states are considering or have passed legislation to deal with cyberbullying. Oregon's law may represent a well-balanced approach. The Oregon law requires every school district set up a policy for cyberbullying but encourages schools to consult with students, parents, and teachers to create the policy. School districts are required to explicitly tell student's about the policy and the consequences of violations. The victims of cyberbullying maintain their rights to bring private lawsuits against their attackers but the statute itself expressly does not create a private right of action.

    My prediction is that the Prince and Clementi suicides will pressure states and school administrators to punish students for off-campus conduct even if it greatly expands school power in constitutionally questionable ways. This is troubling to me because it is probable that cyberbullies often attack their victims during school-hours as well non school hours and school administrators should focus their attention on in-school bullying to solve both problems. This desire to take action against cyber conduct may lead to harsh punishments for what might be considered  protected speech in other contexts.