2013 Symposium: Copyright Formalities for the Twenty-First Century: A Berne-compatible Approach

BTLJ is excited to welcome Daniel Gervais of Vanderbilt Law School on April 18–19, 2013 to the 17th Annual BTLJ/BCLT Symposium: Reform(aliz)ing Copyright for the Internet Age?.

This is a summary of Professor Gervais’s topic of discussion and forthcoming article:


The policy that copyright protection vests as soon as a work becomes fixed in a tangible medium has been a feature of American copyright jurisprudence for the past thirty-seven years. Nonetheless, there are many voices suggesting a return to a formalities-based copyright system. They make many valid points. First, there is little certainty regarding the ownership and terms-of-protection of creative works.  Second, formalities are required to ensure that only those works our system seeks to incentivize receive protection.  Third, in this digital age, compliance with formalities is needed more than ever due to the vast number of works being created and published. Fourth and finally, the ease of compliance in the digital environment (online registration, etc.) makes formalities much less burdensome.

Formality-free copyright was born out of necessity; it was required in order to assure global protection of copyrighted works in a time before the international harmonization of formalities was feasible. However, advocates of the current system point out that formality-free copyright was not only a means to this end. It has critical benefits. First, the message of incentivizing creativity is simplified.  Second, providing protection to all works prevents publishers and other content professionals from being able to sidestep professional creators by utilizing instead the unprotected works of amateurs, as American publishers had with English literature before copyright protection was extended to foreign works. Put differently, automatic copyright protection allows authors of all stations to create with confidence that their works will not be appropriated or exploited in a manner injurious to them.

International law also plays a role in determining the fate of formalities. Even if one were to conclude that the benefits of formality-free copyright are outweighed by the benefits of a copyright system with reinvigorated formalities, a rule prohibiting formalities as a condition on the existence or exercise of copyright is enshrined in both the Berne Convention and the TRIPS Agreement. Moreover, the re-introduction of formalities in the United States could have a disproportionate impact on authors in developing nations.

Is there a better way forward? To address the last point, one could reduce the complexity of the copyright registration process (possibly by eliminating the determination of copyrightability as a component of that process) and the related costs (to zero for authors in least-developed and a substantial discount for those in developing nations countries). However, the main suggestion of this paper is to focus on recordation of transfers as a pre-condition to a transferee’s entitlement to bring lawsuits and obtain an award of statutory damages.

/ Leave a comment

The Purpose of Copyright? Examining the Retracted Republican Study Committee Brief

Last Fall, Derek Khanna, then an intern at the Republican Study Committee (RSC) released a policy brief concerning copyright entitled “Three Myths about Copyright Law and Where to Start to Fix it.” Khanna insisted, based on a textualist reading of the constitution, that copyright has become too favorable to the interests of copyright holders rather than the public. Under the precept that a laissez faire market approach is ideal, he regards the current copyright system as an example of excessive government intervention.

RSC removed the brief from its website after less than 24 hours and promptly fired Khanna at the bequest of some Republican Congress members, but by then the post had garnered significant attention. Critics of copyright lauded the paper’s conclusion that the current system had overstepped its bounds, and Khanna’s Linkedin profile reveals an appearance on Fox News as well as positions with Yale Law School and the Department of Defense.

The brief also became a topic of discussion at CopyHype, Terry Hart’s blog devoted to an explanatory approach to copyright issues. Hart took on a fact-checking role regarding Khanna’s brief over the course of a blog post, as well as this statement about the role of evidence in copyright law.

In particular, Hart rebutted Khanna’s textualist reading of copyright’s purpose by focusing on legislative and judicial intent. Hart argues that, in fact, the purpose of copyright laws are the protection of artists and that intervention is in fact consistent with the government’s role in protecting personal property to support the existence of a free market.

Continue reading

Tagged , , , , , Leave a comment

Kirtsaeng v. John Wiley and Sons: Jet Lag and the First Sale Doctrine

The Supreme Court recently handed down its decision in Kirtsaeng v. John Wiley & Sons, a copyright exhaustion case concerning the sale of “gray-market” works published outside the United States and imported for sale.  In a surprisingly decisive 6-3 decision, the Court reversed the Second Circuit’s decision and held that the first sale doctrine applies to copyrighted works lawfully produced abroad.

The facts of the case center around the actions of a student by the name of Sarap Kirtsaeng, who sold “gray-market” textbooks imported from Thailand beginning in 1997.  Kirtsaeng, who did business on eBay under the handle “Bluechristine99,” set up a very lucrative online business wherein his relatives sent him textbooks from Thailand that he then sold to students in the U.S.  Since textbooks are significantly less expensive in Thailand than in the U.S., Kirtsaeng was able to realize a tidy profit of roughly $100,000—and effectively subsidize an undergraduate degree from Cornell University and a Ph.D. in math from the University of Southern California.  U.S. publishers caught wind of Kirtsaeng’s business and were not amused.  John Wiley filed suit and won in federal district court; the Second Circuit later affirmed, setting up a showdown in the Supreme Court.

Continue reading

Tagged , , , , , , , Leave a comment

Broad Covenant Not To Sue Does Away With Invalidity Counterclaims In Trademark Litigation

In Already LLC. v. Nike, Inc. the Supreme Court recently held that a broad covenant not to sue hinders defendant’s counterclaims of trademark invalidity. Therefore, by choosing to proffer a covenant not to sue, Nike eliminated any legal controversy between the parties such that Already was not able to raise counterclaims of invalidity and cancellation of Nike’s trademark. This trademark case grapples with the “case or controversy” requirement under Article III, Section 2, Clause 1 of the United States Constitution, as well as the Declaratory Judgment Act. It also gives trademark holders pointers for drafting effective covenants that can shield them from defendants’ challenges to the trademark validity and potential loss of the mark. However, this may not be an entirely helpful litigation strategy in every context, and trademark holders should proceed with caution if they choose to take advantage of such covenants as they may give rise to naked licensing and abandonment of the trademark.

Continue reading

Tagged , , , , , Leave a comment

U.S. v. Cotterman: Ninth Circuit Holds Reasonable Suspicion Required for Forensic Laptop Search at the Border

The Fourth Amendment generally requires that government searches must be reasonable, which typically can be satisfied via a warrant. Searches at the border, however, traditionally occupy a special status in connection with U.S. Fourth Amendment law. Recognizing that “the government’s interest in preventing the entry of unwanted persons and effects is at its zenith at the international border,” border searches are generally deemed “reasonable simply by virtue of the fact that they occur at the border.” While the Ninth Circuit has stated that the border is not an “anything goes” zone, the court has nevertheless previously held that reasonable suspicion is not required before searching electronic devices at the border. As a result, laptops and other electronic devices are commonly subject to cursory searches at the border. For some individuals, these searches can move beyond cursory review and include detailed forensic analysis that can reveal not only every file stored on the device, but also files that have previously been deleted.

Recently, however, the Ninth Circuit issued an en banc decision requiring that reasonable suspicion exist before boarder agents engage in forensic computer searches. The court also noted that password protecting an entire electronic device is not a factor that can be used to trigger reasonable suspicion. The decision is likely to impact law enforcement’s ability to engage in border searches of digital devices. Civil liberties groups have recognized the decision as providing some important additional 4th amendment protection for international travelers. 

Continue reading

Tagged , , , , , Leave a comment

Are Human Genes Patentable? A Preview of Association for Molecular Pathology v. USPTO (“The Myriad Case”)

On April 15, 2013, the Supreme Court will hear the oral arguments for one of the most highly anticipated patent law cases of last year: Association for Molecular Pathology, Inc, et al. v. USPTO, et al. The one and only question before the Supreme Court is whether isolated DNA containing all or portions of the BRCA1 and BRCA2 (Breast Cancer Susceptibility Genes 1 and 2) gene sequences are patentable under 35 U.S.C. § 101. This turns on whether the isolated DNA is just like the native DNA found in the human body, or whether it is transformed into a different compound by isolating it under lab conditions.

Procedural History

The case has had a protracted history reaching back to 2009. The American Civil Liberties Union (ACLU) and the Public Patent Foundation (PUBPAT) initially filed a lawsuit against Myriad Genetics, Directors of the University of Utah Research Foundation (UURF) and the United States Patent and Trademark Office (USPTO), claiming that patents on BRCA1 and BRCA2 violated 35 USC § 101 (the patentable subject matter statute), as well as Article 1, Section 8, Clause 8 of the US Constitution and the First and Fourteenth Amendments. On March 29, 2010, United States District Court for the Southern District of New York concluded that the isolated DNA is not “markedly different” from native DNA because both shared the same function of conveying information and had the same nucleotide sequence. Thus BRCA1 and BRCA2 were held to be unpatentable. The District Court also invalidated Myriad’s method patents, and dismissed the constitutional claims against the USPTO based on the doctrine of constitutional avoidance.

Continue reading

Tagged , , , , , , , Leave a comment

Bowman v. Monsanto: Patent Exhaustion and the Self-Replicating Invention

What’s the case about?

The Doctrine of Patent Exhaustion holds that the authorized sale of a patented item extinguishes all of the patent holder’s rights to it.  Any subsequent use of that item by the purchaser is not infringement.  In other words, the purchaser of a patented item can do whatever he or she likes with it.  But what if that item is capable of self-replication?  Does the patent holder have the right to control subsequent generations of the item?  This was the issue the Supreme Court confronted in Bowman v. Monsanto.

The story is this: Mr. Bowman, a farmer from Indiana, would plant soybeans two times each year.  For his first crop, he purchased Monsanto’s Roundup Ready seeds.  These seeds contained a patented genetic modification that made them resistant to the weed-killer Roundup.  To make this purchase, Bowman had to agree not to replant any of the 2nd generation soybeans.  He was allowed to plant the seeds once, but was prohibited from replanting the offspring.

Bowman complied with the terms of this agreement for his first crop, but he also planted a second crop of soybeans each year.  He purchased the seeds for this second crop not from Monsanto, but from a local grain elevator at a significantly lower price.  Bowman would sell some of the offspring from this crop and use the rest for replanting.

So how did Bowman infringe Monsanto’s patent?  Well, as it turned out, some of the seeds from the grain elevator contained the Roundup Ready technology.  Bowman knew this—he would plant these seeds and apply herbicide to them, killing all but the Roundup Ready ones.  Monsanto told Bowman to discontinue this practice.  When he refused, Monsanto filed a lawsuit seeking damages and an injunction.

Continue reading

Tagged , , , , 2 Comments

Can the FCC Comply With the President’s Call for Legalization of Cell Phone Unlocking?

On March 4, 2013, the White House officially responded to an online petition calling for the legalization of cell phone unlocking. The process of unlocking a cell phone usually refers to installing software that allows a cell phone to be used on multiple wireless carriers. Cell phone unlocking had previously been legal under an exemption granted by the Copyright Office pursuant to its DMCA 1201 Rulemaking powers; however, in 2012 the Copyright Office declined to renew the exemption.

Following the end of the exemption, several consumers protested the end of legal cell phone unlocking. A petition to the president was created, and crossed the recently raised 100,000-signature threshold, guaranteeing a response from the Administration. The White House responded to the petition astonishingly fast—within a weekend—by voicing strong support for cell phone unlocking. One of the suggestions put forth by the White House was that the Federal Communications Commission should investigate whether it is within their power to address the legalization of cell phone unlocking. Notably, this suggestion has been well received by the FCC, as Chairman Genachowski has expressed enthusiasm for the FCC investigating the issue. The question remains, however, whether there are steps the FCC can actually take that fall within their agency powers to address the issue. This post explores that question.

Continue reading

Tagged , , , , , , , , Leave a comment

BTLJ Holiday Patent Reform Round Up

We are now in the tail end of the season where millions of America brave wintry weather, TSA pat downs, and slow airplane wifi to spend quality time with loved ones. If gingerbread cookies and holiday shopping get old, you simply need a short break from a Top Gear marathon, or you are sick in bed with a mall-induced flu, we’ve put together a little holiday patent reform round up. This post will focus on three recent developments aimed at reforming our patent system: (1) the USPTO’s efforts ad crowd-sourcing the search for prior art, (2) heavyweight technology industry players’ newfound interest in lobbying Congress to take action on software patent reform, and (3) a recent conference at a Silicon Valley law school seeking solutions to problems surrounding software patents.

After much hand wringing regarding the state of the patent system in America, the cogs of political, academic, and legal reform are slowly turning. Just last year, Congress passed the America Invents Act (“AIA”), the first major patent reform legislation in decades. Despite certain landmark changes, such as moving from a first to invent to a first to file system for patent grants, some wonder whether the AIA alone will have a substantial effect on the recent proliferation of patent troll lawsuits.

Continue reading

Tagged , , , , , , , , , , , , 1 Comment

Apple’s Dispute Over iTunes Data Collection May Have Implications for the Future of Mobile Payments

This post was co-authored by Marion Bergeret, Berkeley Law LL.M. Candidate 2013, and Babak Siavoshy, Teaching Fellow, Samuelson Law, Technology & Public Policy Clinic. 

Last month the California Supreme Court heard oral argument in Apple v. Superior Court (Krescent), a consumer class action filed against Apple to contest the company’s collection of consumer personal information. The plaintiffs’ immediate target is online services like iTunes and the App Store, which they would like to see subjected to the same privacy laws as brick-and-mortar retailers. But the case may also have an impact on the privacy rights of customers using mobile payments apps like Square and Google Wallet.

At issue is the Song-Beverly Credit Card Act, a California law that prohibits retailers from asking for any “personal identification information” that is “unnecessary to the credit card transaction” as a condition for accepting a customer’s credit card payment.  The Supreme Court must decide whether the 1971 Act, which was last updated in 2011, precludes “online” retailers from collecting customers’ personal information—including address and telephone number—when processing credit card transactions.

Continue reading

Tagged , , , , , , Leave a comment