It’s Not All about Patents

Lisa A. Dunner

©2014. Published in Landslide, Vol. 7, No. 2, November/December 2014, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

It may be because own my practice concentrates on trademark and copyright law and not on patent law, but it seems that a substantial portion of news coverage in our field over the past few years has been dominated by patent reform. Without question, the 2011 Leahy-Smith America Invents Act (AIA) merits the attention of all IP practitioners, but it has seen an inordinate monopoly of press for some time—both before its enactment and now with aspects of its practical implementation that will follow for years to come. Equally important to us, however, is the issue of copyright reform, which has been lying just below the radar—that is, until now.

It may have taken a case like American Broadcasting Cos v. Aereo for the public to truly appreciate that reform is necessary and that the law needs to catch up with technological changes. In Aereo, the U.S. Supreme Court’s ruling that Aereo performed copyrighted works publicly by means of transmissions meant that thousands of Aereo subscribers’ efforts to untether from cable were quickly stamped out by the Court. The ruling, in my opinion, was correct, but while the Court did its best to narrowly tailor its holding and to emphasize that its decision was not meant to stifle technological innovation, this remains to be seen. In particular, the decision provided no clarity on the Copyright Act’s application to newer technologies like remote DVR and cloud storage providers.

The decision in Kirtsaeng v. John Wiley & Sons, Inc. similarly sparked the attention of the public. In Kirtsaeng, the Court held that there is no geographical restriction on the “first sale” doctrine, and that this doctrine applies to copies of a copyrighted work lawfully made abroad. Many were affected by this ruling, especially publishers, who likely believe that they were affected the most. Publishers now need to rethink their business models since distribution of books internationally could mean that less expensively priced foreign books potentially could be brought back into the U.S. at a profit to the importer. Developing nations are also affected by the decision in Kirtsaeng, since international cutbacks by publishers will mean that these countries will have less access to lower priced textbooks. Other groups, like libraries, were pleased with the outcome, since most U.S. libraries have collections of books that were manufactured abroad.

Apart from these two landmark decisions, copyright trolls are adding to the mix. The issue of trolls has been well known for quite some time, but only in the context of patents. Copyright trolls have been just as active and troublesome—but only recently have they taken on a higher profile.

A company called Righthaven LLC earned the dubious distinction of being the first copyright troll by developing and implementing a business model that involved enforcing third party copyright claims against infringers. Righthaven brought hundreds of cases in federal court against thousands of John Does, yet Righthaven never created, produced, or distributed any copyrighted content. Dozens of other trolls have followed suit, all of whom utilize the distinctive, aggressive, often bullying tactics to intimidate defendants into settling. The problem has escalated, and the issue has now been brought before Congress when, on July 23 of this year, several individuals testified on the subject at the House Judiciary Courts, Intellectual Property, and the Internet Subcommittee hearing.

As a result of these and other issues, many are advocating for change in our copyright laws, and there is no bigger proponent of change than Maria Pallante, the Register of Copyrights. The U.S. Copyright Office’s recent release of the Public Draft of New Compendium of Copyright Office Practices is evidence of her initiative to bring U.S. copyright laws and practice in sync with advances in technology and newer ways of doing business. This version of the Compendium is the first major revision in more than two decades, and it is the first one to focus on making the practices and standards of the Copyright Office more accessible and transparent. The Copyright Office is also directing its efforts to other important issues, including full performance rights in sound recordings, orphan works, the notice and takedown provision of the DMCA safe harbor for user-generated content, and how fair use should apply in the digital world. Fortunately, we have a Register who believes in change and who is pushing for “The Next Great Copyright Act.”

The ABA-IPL Section is actively monitoring and addressing these issues and others, as they percolate through our committees and divisions, up to Council, and within the ABA if policy is required to act for change in the courts and in Congress. Revisions to our long-standing statutes don’t come easily, but now that the hype about AIA has died down a bit, we might just get the kind of change that we need.

Lisa A. Dunner

Lisa A. Dunner is chair of the ABA Section of Intellectual Property Law. She is managing partner at Dunner Law PLLC with a practice focusing on trademarks, unfair competition, copyright, e-commerce, and transactional matters.