Profiles in IP Law—An Interview with Shira Perlmutter: Administrator for Policy and External Affairs, U.S. Patent and Trademark Office

Vol. 5 No. 1

By

Mary Rasenberger is a partner in the New York office of the IP, entertainment, and media law firm Cowan, DeBaets, Abrahams & Sheppard LLP. She counsels clients in all areas of copyright and related rights. She can be reached at mrasenberger@cdas.com. Eleanor M. Lackman is a litigation partner in the New York office of Cowan, DeBaets, Abrahams & Sheppard LLP, where her practice focuses on copyright and trademark matters. She can be reached at elackman@cdas.com.

Shira, thank you for joining us today in this interview for Landslide® magazine. We appreciate your willingness to speak with us. We’d like to start by asking you about your new position at the U.S. Patent & Trademark Office (USPTO) as Administrator for Policy and External Affairs. Can you tell us what your primary responsibilities are in that position?

The part of the office that I manage is responsible for policy issues and international matters. Our office is divided loosely into six groups. One is the policy group, which deals with the substantive areas of patent, trademarks, copyrights, trade, and enforcement. Within enforcement we handle trade secrets as well. Then we have an Office of Governmental Affairs and Office of the Chief Economist, which is a new role created by Under Secretary David Kappos.

 

We have the Global Intellectual Property Academy, which conducts training of foreign government officials and U.S. law enforcement agencies, as well as educating U.S. small- and medium-sized enterprises on how to make the most effective use of the intellectual property system domestically and internationally. We also have a team of international intellectual property attachés who are based in our embassies in various countries around the world, helping U.S. citizens with intellectual property problems and promoting U.S. government policies. Finally, of course, we have a very important administrative group that actually keeps the office running. To summarize what we do, we advise the Administration on policy issues in intellectual property, including legislation and international negotiations, as well as administering the training and educational program.

 

Does your office deal specifically with copyright or is it all forms of intellectual property?

We deal with all forms of intellectual property. The policy group has teams that cover, respectively, patents, trademarks, copyrights, trade, and enforcement.

 

You’ve had a very distinguished career in copyright law already and you’ve held a variety of different positions in the field over the years. Can you talk about some of your prior positions and how they may have influenced the insights you bring to your current position?

The common thread between all the different jobs I’ve held is clearly copyright. That has been my main academic and personal interest since I was in law school. I have taken a number of different positions where I thought I would learn something interesting and add a different element of experience that would complement what I had done in the past. I started out as a practicing lawyer in New York and found that very valuable in understanding what happens in the courtroom and how licenses and contractual provisions are negotiated. The academic side—my experience as a law professor—helped me get a broader and deeper understanding of the law rather than focusing just on the specific issues that come up in practice. Working at the Copyright Office gave me experience in dealing with policy and legislative matters and participating in international negotiations. The position at the World Intellectual Property Organization (WIPO) and the International Federation of the Phonographic Industry (IFPI) provided opportunities to see how things work outside of the United States. Both the positions at Time Warner and at IFPI gave me a better understanding of the practical aspects of running a business based on intellectual property. It has been very useful to be able to augment the theoretical aspects of the law with an understanding of how the law operates in practice, both in terms of setting up a market and in enforcing rights in the courts. In terms of my work on the international side, having had the opportunity to work outside the United States, both in an intergovernmental organization and with the private sector, gave me insight into other ways of thinking that can be very useful when engaging in international discussions.

 

Can you describe what interested you in copyright law in the first place?

It was primarily my background in music. I was a singer while I was in graduate school in voice. When I decided to go to law school, I wanted to go into a field that related to music in some way. I looked at entertainment law and then in the end found copyright law more intellectually interesting.

 

Did you go right into academia out of law school?

Not right away. At the beginning of my career, I practiced law in New York for seven years. I had always had an interest in academia. My parents are both professors, and I had always assumed I would be an academic at some point. I thought I would practice law for a while, learn something, and then look to teach.

 

Please describe the role of your division at the USPTO in making trade policy and representing the diversity of U.S. intellectual property interests, including the copyright interest. In general, who do you interface with and what is the scope of your responsibility with respect to trade policy and U.S. representation?

We do a wide range of things in my office. We work closely with other agencies on the substantive intellectual property issues. Internationally, we lead delegations to WIPO, with the participation of other agencies with an interest in the topic. On trade matters, we advise the U.S. Trade Representative (USTR) in negotiations as experts on intellectual property. We also work within the interagency process, both as part of the Commerce Department and more broadly as part of the Administration in formulating positions on the whole range of intellectual property policy issues, both domestic and international.

 

With respect to copyright itself, how does it fit into the Patent & Trademark Office and where do you see the U.S. interest in copyright overlapping or coinciding with interest in other intellectual property fields such as patent and trademark?

The PTO’s Policy and External Affairs Office plays a role in advising the Administration on copyright issues as part of the overall intellectual property system. In terms of the similarities among the different IP fields, they share a common theme of providing incentives for creation and for innovation. The Commerce Department issued a report recently on the economic contributions of intellectual property-intensive industries to the U.S. economy, and that report covered copyrights as well as patents and trademarks. As to differences, we spend a lot of time working cooperatively with other patent and trademark offices around the world on work-sharing projects, on common issues having to do with filing and registration requirements, so that’s something that our office does in those other fields and does not do in copyright. Then, of course, these days there is a tremendous public interest in copyright, especially in the online environment. Many members of the public interact with the copyright system on a regular basis more than they do with the patent or trademark system, as everyone on the Internet is both a creator and a user of copyrighted works. Therefore, there’s much more public awareness and interest in the system today, whereas patents and trademarks remain more of a business interest.

 

Can you explain a bit of the difference between the responsibilities of the USPTO and the Copyright Office from the government’s perspective? A lot of people probably don’t even realize that the USPTO has this copyright function as well, so it would be helpful to get an understanding of what the USPTO’s role is in copyright and how you work with the Copyright Office.

We work cooperatively with the Copyright Office and consult with each other on the substantive issues on a regular basis. They as well as we advise the USTR in trade negotiations and they participate as an important part of the U.S. delegation at WIPO on all copyright-related issues. So in the international theater, we’re working closely together. On U.S. policy issues, their primary role is as the advisor to Congress and our primary role is advising the administration.

 

In terms of other government agencies that you work with, you specifically mentioned WIPO and USTR. How about the Intellectual Property Enforcement Coordinator (IPEC) Office, the State Department, and other agencies within the government?

Yes, we work with a wide range of agencies. In addition to USTR, we work regularly with the State Department on international matters and with the IPEC’s Office on the enforcement aspects of our work.

 

Anyone else?

We also work closely with the other offices in the Department of Commerce, as well as in the White House.

 

What challenges does the USPTO face in international policy discussions and do you have suggestions for key strategies for working with or overcoming those challenges?

I think there are a number of challenges. One is public awareness, or lack thereof. We need to figure out ways to better educate the public about what intellectual property is about, why it matters, and what we’re trying to achieve. Often there can be misunderstandings that can lead to political controversy, which might be avoided or minimized if there were opportunities to do more public education along the way. So that is one challenge: How do we make people aware of why we’re doing what we’re doing as a government and as an international community? The second challenge is that not all countries see intellectual property as an equal priority, so that can make the international discussions complicated. Sometimes there can be disconnect between what the intellectual property experts in any particular country’s capital are doing and what the international diplomats are doing. And, of course, the diplomats have many issues on their plates simultaneously, which might be traded off against each other. One way to overcome those challenges is to as much as possible identify and focus on mutual interests. The recent negotiation of the Beijing Audiovisual Performances Treaty is a good example, where countries of all levels of development from around the world came together in pursuit of a common goal, which was establishing a good system of international protection for performers in audiovisual works. That can not only lead to progress in the area of mutual interest, but hopefully the positive dynamic of working together can carry over to other discussions as well. A lot can also be done in partnering with different countries on public education, training of government officials, and technology transfer in a very broad sense, working together to share expertise.

 

Can you describe what you like most about working in intellectual property and specifically copyright, which you’ve spent most of your career focusing on, and if there’s anything that you haven’t liked?

What I’ve always enjoyed from the beginning is the intellectual challenge of copyright. I think it presents a very interesting combination of highly technical issues and highly philosophical issues. Questions like, what is originality, and what is substantial similarity, and what uses are fair use, are profound and almost philosophical. At the same time, there are very technical issues about compulsory licenses and termination of rights. I find that mix extremely challenging and interesting. I also like working in a field where you’re dealing with creativity and the question of how to promote creativity for the benefit of society. Whether you’re a lawyer dealing with clients or a government official talking to stakeholders, there is a high proportion of people who are creative and working in interesting fields. Those are the positives. In terms of what I like least, it’s the fact that the issues have become more polarized and you have people talking about copyright wars. It has become more difficult to have calm, reasoned debates than it used to be. I’m hoping that to some extent that’s just a phase we’re going through and we will emerge in a better place eventually.

 

I couldn’t agree more. What do you think are the top three biggest issues for copyright today?

I’ve been dividing all of the issues that face us into three general categories as I’ve thought about where we’re going in the copyright field. In terms of the big picture, one challenge is continuing to maintain an appropriate balance in the law as we update it to deal with new technology. That’s always been a challenge for copyright, but it gets more and more difficult as the pace of technological change has gotten so dizzyingly fast. The second challenge is figuring out a way to ensure that copyright stays meaningful in the digital environment, which means that we need to find ways to allow copyright to continue to be enforced. Finally, meeting the challenges of developing new and more effective licensing systems in the digital environment is an exciting new area, but there are some growing pains involved and it takes, perhaps, more time than people would like. Within any one of those three categories, there are a lot of pressing specific challenges, but overall I would look at those three as the overarching areas of focus.

 

You mentioned the polarization in copyright today. Where do you think we’ll be in 10 years? Will copyright owners be better off? Will there be more or less infringement? Will there be less polarization as you indicated you hope there will be? Do you have any thoughts about copyright law down the road?

By nature I tend to be a cautious optimist, and I am cautiously optimistic that copyright owners will be better off in 10 years than they are today. I don’t know exactly how the changes in the law will look and what mix of ways to keep copyright meaningful and to ensure appropriate compensation we will end up with in 10 years. But I do think and hope that we will find solutions that can benefit everyone. And by everyone, I mean the creators, the copyright owners, the new businesses that are evolving and the consumers. What I hope will happen—and there may be some indications that it’s starting to happen—is that the view of illegal downloading as hip may be wearing off and we will be able to see, as new business models continue to evolve, that we can return to what you might call a more rational environment for enjoying content while appropriately respecting and compensating creators.

 

Going back to your current position at the USPTO, do you have any specific goals for the next two or three years of what you’d like to accomplish there?

I’d like first of all to contribute to providing the technical analysis and some ideas to help move thinking forward on the challenges for copyright on the Internet. From a personal perspective, I certainly see that as a top priority. Second, the Office is very committed to moving forward on international patent harmonization, now that we’ve taken a big step unilaterally in that direction with enactment of the America Invents Act. The third major goal is helping to build on the positive momentum that hopefully has started in the multilateral discussions with the successful conclusion of the Beijing Treaty—not only on other issues at WIPO, but perhaps in other forums as well.

 

Let me ask you a question about the meetings in Beijing. I heard news reports that the atmosphere there was very positive and congenial and I know that at WIPO in recent years that has not always been the case. What do you think made this meeting a little more congenial and positive? Do you think that will be true for the upcoming meetings on the exceptions agenda?

I think the main reason it was congenial and positive is that all of the countries participating really believed in the goal of this treaty and wanted to move it forward. They wanted to help actors and other performers in film and we were so close to the goal; in 2000, we had agreed on 19 out of 20 articles, and the 20th article had been agreed to before we went to Beijing. We knew we were so close and everybody wanted a positive result. We walked in with a shared interest and a focus on the idea that we couldn’t fail again. That was a very good way to start the diplomatic conference. In terms of whether that spirit of cooperation will be carried over, nothing is ever so simple that we had one success and now everyone will cooperate on everything. There are still going to be divergent views and positions, and I’m sure there will be difficulties. But what did happen in that negotiation was a general feeling that everyone participated with goodwill, everyone treated each other with respect, and everyone engaged in a spirit of compromise and cooperation. I think the positive impact of that interaction will help ease the interactions to come over the next few months and years.

 

Thank you. We have one last question. As a former law professor, is there anything that you’d recommend to a law student considering going into intellectual property law today?

Yes, a few things. I often get people asking me this question. Perhaps most important is to make your interest in the field known. It is important to show that you are able to think and write on intellectual property issues at a sophisticated level. So if you can, publish a few things just to show anyone who looks at your resume that you are committed to the field and able to initiate something on your own and express yourself. It is also very valuable to join some of the associations that specialize in intellectual property, where you can learn about the cutting-edge issues and also meet those who work in the field. Having an open mind to new options is always helpful, not to have a preconceived notion about exactly what you want to do when. I should say, for the first point, making your interest known, there are many ways to do that, including taking the courses that are available to you in law school or doing an internship. I also think it’s helpful to develop basic legal skills because intellectual property-specific jobs tend to be offered to someone who already knows how to practice or knows how to negotiate a license or knows something beyond what they learned in law school. If you develop some skills first that makes it much easier to get your foot in the door.

 

Shira, on behalf of the ABA-IPL Section and Landslide magazine, we’d like to thank you for this very informative interview.

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