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Profiles in IP Law

An Interview with Jordan Breslow: Former General Counsel Etsy, Opsware, Silver Spring Networks, GeoWorks, & New Island Capital

Abioye Ella Mosheim

©2017. Published in Landslide, Vol. 9, No. 5, May/June 2017, 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.

Jordan Breslow is a leader in the tech industry where he has served as general counsel for a diverse group of organizations, including a global digital marketplace for entrepreneurs and a smart energy company. In addition to being an extraordinary general counsel, he is a musician, songwriter, and artisan.

You have served as general counsel in some of the most interesting tech companies. What led you to focus your career on that industry?

When I graduated law school, I was focused on music and entertainment, because I write and play music. I took an intellectual property (IP) class in law school, at UC Hastings, then practiced in Northern California, which was not exactly a hotbed of entertainment law. The PC revolution kicked into gear soon after I graduated. There is a lot of overlap between writing music and writing code.

For a while I worked for a small law firm that threw everything at me, including wills and trusts—an area in which nothing new had occurred for hundreds of years—and I was bored. Tech, on the other hand, was rapidly changing and interesting.

What is a typical day like for a general counsel in the tech industry?

There is no typical day. Some days are spent entirely in meetings. A lot of work as a general counsel is “raising attorneys,” very one-on-one. Other days I might think I’m going to work on, say, an employee handbook, but I’m interrupted. Instead, I’ll have to focus on privacy law, a patent lawsuit, an EU commerce issue, an HR issue, or a landlord-tenant dispute, so it’s all over. In a public company, obligations of disclosure to the SEC and shareholders connect to everything else you do. Often a company grows through acquisition so you may spend part of the day working on an M&A transaction. Or you may focus on tax and accounting issues, or spend time on the phone with board members.

How prominent a role has intellectual property played in your general counsel career?

Intellectual property has been a vital, integral part of my career. For tech companies building hardware, software, or web services, intellectual property and licensing are critical for success. When I started in the early ’80s, the focus was on copyright and how it applied to software—such as the sequence, structure, and organization of software, or the look and feel of software. There was skepticism about patents. Now the pendulum has swung to where people think more about patentability—for the worse, in my opinion. Litigation brought by patent trolls is a real problem. For branding and the like, working with trademarks is essential. But again, a general counsel is a generalist: even in a tech company, many non-IP challenges need the general counsel’s attention.

What are the biggest copyright challenges facing a general counsel in the tech industry today? Patents? Trademarks?

Copyright of software is well established, but the challenge now is that so many applications deliver content over the web, and that includes a lot of user-generated content. As a result, the Digital Millennium Copyright Act (DMCA) is a constant focus for the tech industry. The DMCA works fairly well, but it can be abused with dubious or overly broad takedown demands. An Internet service provider’s (ISP’s) safest response is to take down material as demanded, but it would be better if ISPs could assert some defenses on behalf of the users. Most ISPs are not brave enough or well-financed enough to resist a takedown notice.

A lot of takedown notices add trademarks as the basis for the takedown demand, and there’s no DMCA safe harbor for trademarks. So if an ISP receives a takedown notice that references trademarks, the ISP is pretty hard pressed to resist it. I recommend establishing a DMCA equivalent for trademarks.

Patents have been granted for business methods and technology that, in my opinion, should not be patentable. But the biggest problem in the patent arena is patent trolls—every tech company gets hit by at least one or a steady stream. It feels bad to be on the receiving end of that. We need patent reform.

What sorts of international IP issues have you dealt with as a general counsel?

I have worked for companies that have been U.S.-centric at the start. They seek protection in the United States and then face the question of where and when to seek protection for intellectual property outside the United States—that involves a lot of money, especially when dealing with trademarks and patents. Copyright is less of an issue because treaties work very well without much expense or registration requirements.

When dealing with challenges to their online content, U.S. tech companies tend to assume that they can invoke the DMCA worldwide, even though that is part of the U.S. copyright system. Online terms of use often assert that U.S. law—and thus the DMCA—will apply to overseas IP claims. Courts in other countries may think that approach is overreaching or that the U.S. IP laws do not apply.

Describe the intersection between social media and intellectual property.

So much has been written about the intersection between social media and intellectual property, and I sometimes think the concern is exaggerated. I think the legal community tends to greet new technology with a bit of hysteria, followed by an endless stream of continuing education seminars.

If you are using social media as a marketing tool, for example, you should be aware of the standard infringement issues and defenses that apply to any online content. Companies should have good education, policies, and protocols as to which employees are authorized to post on the company’s behalf, and what kinds of content those employees can post or repost. The policies should address intellectual property and should prohibit disclosure of trade secrets and inside information. Finally, companies should ensure that they, and not their employees, own the social media accounts and will have access to them after an employee leaves.

You served as general counsel in a smart energy company. What role does intellectual property play in the smart energy field?

A lot of patents touch on the smart energy field, including patents for radios, radio frequency technology, etc. When you’re working on networks for smart meters and on backend data processing for smart meters, the field is pretty patent-intensive. A few well-established, well-heeled companies are playing in the smart meter industry, so one has to proceed with caution. There are also a number of patent trolls, and that can frighten utilities that do not want to buy a lawsuit.

Did you know you wanted to specialize in intellectual property while in law school, or did that occur to you later in your legal career?

That came later in my legal career. I became interested in copyright in high school when I was writing songs. When I went to law school, they only offered a few IP classes. Intellectual property was not the big thing it is today. I was thinking about consumer protection in addition to entertainment and music law. When I had my own law firm, I practiced consumer protection law, but was quickly disillusioned. But it was a natural evolution for me to move from music law into intellectual property and technology.

What do you feel are some of the key strengths that you gathered in your general counsel career?

One of my core strengths is care and feeding of younger lawyers, or “raising lawyers.” I feel it’s my duty to train them to be able to take my job, or to get a general counsel job elsewhere. Pragmatism is also a strength. Too often the approach lawyers take is to focus on risk versus opportunity. I find that lawyers have a lot of seemingly logical proposals that do not work for lack of pragmatism. Translation of complex legal topics for lawyers and nonlawyers is also a key strength. I am a very big stickler for plain English in writing and speaking, and I firmly believe you can write almost any legal document in plain English.

Where do you see yourself next?

I will stay in tech professionally, preferably technology with a positive social impact. I’m inclined to get a bit more involved in social activism, especially post-election. That feels important to me. And I am working on a novel, and a book for lawyers on plain English in speaking and writing.

What would you say is the best piece of career advice that you received?

To be useful, to be brave—don’t always identify a risk and then run from it. And be willing to push back, which is tricky especially when you’re in-house and you’re pushing back against the CEO, for example. It may be intimidating to push back. You think you may be fired but often they respect you for it.

What piece of advice would you give to an IP attorney dreaming of one day becoming a general counsel?

Four things: (1) Bring mindfulness and emotional intelligence into your daily life and your daily practice of the law. It can make practice of the law more ethical, less contentious. If you are going to be a people manager, spend at least a couple of years in therapy to be emotionally aware. (2) Get broad exposure to as many different areas of law as possible. I went into my first in-house job with a background in intellectual property and licenses, and quickly had to learn about capital financing. I had to write a bridge loan document but did not know how. Go outside of your comfort zone. Shadow someone you know. You should be able to read a financial statement and understand taxes on at least a rudimentary level. (3) Learn to write in plain English. There may be a fear that doing so will alter the meaning, and that you risk malpractice, so you leave it as is. For example, “transfer, assign, convey”—do you really need all three? No. It takes guts and good lawyering to write and speak in plain English. (4) Do not lose sight of your values—they should inform everything you do. Always ask yourself, “Do I feel good about this? What’s my gut telling me?”

You are a musician and a basket maker. What is your instrument? How did you discover basket making?

My instruments? I trained in guitar, drums, piano, violin, and recently accordion. I am a good fake on any instruments I can get my hands on. But I am most accomplished on guitar. I don’t write songs as much anymore, but I play every day, and ad lib. I am putting together an album called Songs of Silicon Valley, which I will finish someday. And basket weaving—I’ve always admired baskets for the aesthetics/function combination. Six or seven years ago, I had knee surgery and my leg was up for a week, so I went on YouTube and learned how to make baskets.

Abioye Ella Mosheim

Abioye E. Mosheim is an attorney advisor in the Office of the General Counsel at the U.S. Copyright Office where she specializes in copyright registration and termination issues, 1201, FOIA, and privacy law. She also does pro bono litigation for the Legal Aid Society of the District of Columbia. Any views expressed here in no way represent the U.S. Copyright Office.