Thank you for sharing!

Your article was successfully shared with the contacts you provided.
IP magazine recently asked several prominent intellectual property practitioners, law professors and public policy advocates for their thoughts on what they consider to be the most currently pressing problems in the field of digital-related intellectual property law. Here’s what they had to say: For the past 20 years, technologists have been free to bring innovative products to market thanks to the U.S. Supreme Court decision in Universal City Studios v. Sony, 464 U.S. 417 (1984), which upheld Sony’s right to make and sell videocassette recorders because of their substantial non-infringing uses. Now pending before the Ninth Circuit is MGM’s appeal of a ruling that Grokster is free to distribute peer-to-peer file-sharing software having substantial non-infringing uses. MGM wants courts to impose liability on technologists if they intentionally design products to enable infringement, if the primary uses of their products are infringing or if they neglected to pursue alternative designs that would minimize the potential for infringement even though the Supreme Court considered and rejected these alternative standards in Sony. The Ninth Circuit’s ruling in MGM will have profound implications for the future of the information technology industry. — Pamela Samuelson, co-director, Berkeley Center for Law & Technology, Boalt Hall School of Law On the part of the motion picture industry, we envision a future where every movie and TV show ever made is available on demand in every home, in a consumer-friendly design and at an affordable price. Piracy, however, threatens to delay, if not destroy, that future. Rampant online piracy such as is taking place on peer-to-peer networks creates a problem that, while beneficial in the short term to the technically savvy, free-riding pirates, denies the vast majority of consumers an opportunity to access legal content on easy-to-use legitimate services. Content owners must take full advantage of technological developments and provide consumers with legitimate alternatives to piracy. Consumers must be made to understand that there is no free lunch — and no free content. It is wrong to steal, and unrestrained online theft will kill the geese that lay the golden eggs. Although existing copyright laws provide adequate rights to content owners, effective enforcement of those rights requires some new legal tools. And although technical mandates should be avoided as much as possible, narrowly targeted mandates are necessary in some instances, such as to prevent redistribution of free, off-air digital TV broadcasts and to prevent circumvention of digital protection measures by converting content to analog and then back to digital formats. Aggressive civil and criminal enforcement is necessary to deter those whose moral compass does not direct them away from online theft. There must be consequences to those who do not obey the law. — Fritz Attaway, senior vice president and general counsel, Motion Picture Association of America An alarming development that cuts across all industries and sectors of the economy is the increased assertion of business-method patents against a business’s core and non-core technology. At least in part, this has come about because the plaintiffs bar has discovered that the business-method patent field is ripe for commercial exploitation. Technology-related companies can expect to receive a patent demand letter every other week, if not more frequently. Even companies in low-tech areas that nonetheless utilize technology for their day-to-day operations receive several of these demand letters every year. The vast majority of the patents referenced in these letters or lawsuits are business-method patents, which purport to claim some method or system that, in fact, existed within the industry for a period of many years, if not decades. Many of these cases amount to little more than shakedowns, with the patentee or patent assignee demanding an amount that is so far below the cost of defense that the company has little choice but to pay blood money to resolve the demand. Many companies, disinclined to capitulate to what they perceive as extortion, spend millions of dollars to litigate a patent that is eventually held invalid or not infringed. Is there a solution in the offing? That’s unlikely unless and until (a) the Patent and Trademark Office begins to put the brakes on the issuance of non-inventive business-method patents; (b) the Federal Circuit modifies the existing presumptions and burdens of proof in patent infringement litigation (where the plaintiff enjoys the presumption that its patent is valid and the defendant must prove invalidity or inequitable conduct by clear and convincing evidence); (c) district court judges begin to impose serious fee awards against plaintiffs who truly had no basis to assert the patent in the first instance; (d) trade organizations in each industry sector make themselves available on a systematic basis to their members to defend against these sorts of suits; and (e) businesses begin to resist settlement of spurious patent suits. All of which means, as a practical matter, that the defense bar can continue to expect to see these sorts of suits for many years to come. — Claude Stern, Oliver & Hedges The most important issue on the horizon in digital intellectual property is reform of the Digital Millennium Copyright Act. Written in 1998 to prevent the production and use of hacking tools by those who would infringe encrypted copyrights, it’s fair to say the DMCA has been used for virtually anything except its intended purpose. Copyright owners have used the law to sue the media for linking to banned tools, makers of software that permits owners of a DVD to make a legal backup copy, makers of replacement ink cartridges for printers and makers of replacement garage door openers. This is law run amok. The overbroad language of the DMCA — and its illusory promise to protect fair use — must be remedied. — Mark Lemley, co-director, Berkeley Center for Law & Technology, Boalt Hall School of Law Copyright on the Internet is the new battle�front in cyberspace. It will be fascinating to see what happens next in the file-sharing wars now that both sides have become such archenemies in this newest crusade. Trademark owners were the first wave of IP owners waging war in cyberspace, with disputes over domain names and metatags. While those skirmishes continue, the basic rules and practical tools for combating infringement have largely been established. The answer to the trademark problems on the Internet was a combination of legal tools, pragmatism (corporate purchases of prime domain name real estate) and patience with technological and cultural evolution. The blitzkrieg against cybersquatters began petering out because search engines became more popular than typing in guessed-at URLs when it came to finding information on the Internet. In contrast, copyright owners (particularly those in the music industry) are still largely focused on a predominantly legal approach. By devoting the vast bulk of its time and money to legal campaigns, the copyright industry is only digging itself into a deeper hole. Witness the transformation from centralized file-sharing programs to decentralized programs to the burgeoning development of programs that are either encrypted or based overseas. Only time will tell if the copyright industry’s whack-a-mole legal maneuvers breed even more resilient and destructive rodents. — Megan Gray, solo practitioner The greatest challenge for U.S. copyright doctrine at the moment is to resist ever more invidious amendments by Congress. As time goes on, lawmakers exercise less and less deliberation and inject ever more diffuse and random elements into the Copyright Act. For example, in the TEACH Act passed in November 2002, the Copyright Office recommended to Congress that it clarify the scope of fair use in the context of distance education. Obliging that request, the House and Senate reports that accompany the bill contain identical statements aimed at safeguarding fair use in that context. The only problem is that those statements interpret absolutely nothing that Congress legislated into law. Accordingly, those pious words are a dead letter in terms of actually affecting the laws of the United States. Although they were evidently inserted to make someone feel good, their operative effect is nil. That situation is actually fairly benign compared to Congress’ enactment in December 2002 of an amendment known as the Small Webcaster Settlement Act. That statute represented an attempt to remedy some language that was incoherent from a 1998 law regulating webcasting. The language that Congress actually passed represented an agreed compromise by all the interested parties. However, those parties were insistent that their compromise of the moment not have a precedential impact. For that reason, the language that they drafted for inclusion in Title 17 of the United States Code deliberately omitted all of the key terms. In addition, the key portion of the Act, passed on Dec. 4, 2002, created a window that closed on Dec. 15, 2002. It does not take higher mathematical prowess to compute that the entire operative period of this latest amendment was 11 days. In other words, Congress facilitated the parties getting together to resolve a private dispute — and in doing so, wrote in concrete various provisions that continue to remain in Title 17 of the United States Code. These small examples evince some of the negative trends in lawmaking that we see coming out of Washington with increasing regularity. All parties can only benefit if that trend comes to a screeching halt and Congress returns to its role of promulgating laws of general application and of permanent import rather than serving as the facilitator of private and parochial disputes. — David Nimmer, of counsel, Irell & Manella The most pressing matter in the area of digital IP is the collateral damage the information technology industry may suffer as a result of the entertainment industry’s war on Internet infringement. In the Grokster case, the content providers are seeking to overturn the Supreme Court’s Betamax standard, which has been so critical to the development of the information technology sector over the past 20 years. The entertainment industry also is pursuing technology mandates that will impede innovation. Today it’s the broadcast flag, tomorrow it will be the analog hole. Surely these will serve as precedents for more mandates. Section 1201 of the DMCA is being employed to prevent interoperability in cases involving embedded software. In state legislatures, the Motion Picture Association of America is advocating “theft of service” legislation that will allow content providers to regulate what products the consumer can use as part of their home network systems. Finally, proposed legislation intended to target peer-to-peer software could place heavy burdens on a wide range of software that offers legitimate uses. If these various initiatives succeed, the IT industry will be severely harmed. — Jonathan Band, partner, Morrison & Foerster The globalization of commerce through the Internet continues to create challenges for IP owners. While the Internet allows for immediate access to the world, it also requires greater resources for the protection of intellectual property as it continues to be governed by the laws of individual countries and not by global standards. What may be a protectable trademark in one country may not be so in another. What may constitute fair use of copyright or trademark in one country may amount to an infringing use elsewhere. From domain names to file sharing to privacy to Internet advertising to encryption, there remain differing standards and differing results depending on the laws of the country addressing the issue. Yet because of the pervasiveness of the Internet, there never has been a greater need for global and uniform touchstones. This global reach requires lawyers to be creative and innovative in helping companies create new business models that not only protect intellectual property and generate revenue, but also respond to the demands of customers who have become accustomed to the convenience and immediacy of the digital world. — Rochelle Alpert, partner, Morgan, Lewis & Bockius When it comes to copyright in the digital environment, peer-to-peer file sharing reminds me of the physics of black holes. The gravitational field exerted by the issue is so powerful that it distorts every legal doctrine that approaches it. As a result, we’ve seen doctrines designed to protect online privacy, anonymity, fair use and innovation put in jeopardy when they drift too close to the entertainment industry’s litigation crusade. We at EFF are concerned about the public interest implications of this, as highlighted by the recording industry’s efforts to force Internet service providers to identify their customers for lawsuits. But I predict copyright developments in 2004 will also threaten technology and online service companies directly, drawing them deeper into the copyright policy debates both in court and Congress. The Ninth Circuit’s ruling in another EFF case, MGM v. Grokster, expected later this year, will be the blockbuster for the commercial technology sector. — Fred von Lohmann, senior IP attorney, Electronic Frontier Foundation The DMCA already prohibits some fair use of copyrighted materials and some development of consumer-friendly product substitutes. But the breadth of its impact is just beginning to be felt. Techniques for digital rights management — the digital wrappers that exploit the DMCA’s prohibition on circumvention of technologies that can restrict uses that might otherwise be deemed fair — are moving from the fringe to the mainstream. Similarly, manufacturers are just beginning to exploit the DMCA to exclude competitive technologies that could substitute for the original, but only by circumventing an “access control” embedded in the original. In response, we should expect the evolution of a new theory of “DMCA misuse.” The “copyright misuse” and “patent misuse” doctrines have long served as a limitation on the excessive expansion of those statutory monopolies. The misuse doctrines bar rights holders attempting to use their statutory grants to extend their power beyond the monopoly intended by the statute, that is, to accomplish anti-competitive results and antitrust violations. The DMCA creates a different, but no less statutory, monopoly. When deployed not to protect genuine interests in copyrights — the reach of which are inherently constrained by the fair use doctrine, and that do not include the exclusion of competitive technologies independent of the copyrighted work itself — the DMCA is being misused. The courts must evolve the appropriate limitations. — Laurence Pulgram, i>partner, Fenwick & West

This content has been archived. It is available through our partners, LexisNexis® and Bloomberg Law.

To view this content, please continue to their sites.

Not a Lexis Advance® Subscriber?
Subscribe Now

Not a Bloomberg Law Subscriber?
Subscribe Now

Why am I seeing this?

LexisNexis® and Bloomberg Law are third party online distributors of the broad collection of current and archived versions of ALM's legal news publications. LexisNexis® and Bloomberg Law customers are able to access and use ALM's content, including content from the National Law Journal, The American Lawyer, Legaltech News, The New York Law Journal, and Corporate Counsel, as well as other sources of legal information.

For questions call 1-877-256-2472 or contact us at [email protected]


ALM Legal Publication Newsletters

Sign Up Today and Never Miss Another Story.

As part of your digital membership, you can sign up for an unlimited number of a wide range of complimentary newsletters. Visit your My Account page to make your selections. Get the timely legal news and critical analysis you cannot afford to miss. Tailored just for you. In your inbox. Every day.

Copyright © 2021 ALM Media Properties, LLC. All Rights Reserved.