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The announced retirement of U.S. Supreme Court Justice Sandra Day O’Connor has provided politicians, the media and attorneys with an opportunity to fill the long, hot summer with speculation about her potential successor, Judge John G. Roberts Jr. of the U.S. Court of Appeals for the D.C. Circuit. As many have pointed out, Roberts’ relatively brief tenure on the bench has not given him an opportunity to build up a long track record of written opinions in any particular area of the law. When combined with his experience in private practice, however, the record shows that Roberts has had more than just a passing introduction to patent, trademark, and copyright law issues. That experience will be briefly digested here. PATENT AND TRADEMARK Obviously, Roberts has had no opportunity to decide patent infringement appeals while a member of the D.C. Circuit, since such issues are generally reserved for the Federal Circuit ( Holmes v. Vornado exceptions aside). In private practice, however, he played a substantive role in several important patent cases, both at the Federal Circuit and Supreme Court levels. TrafFix Devices Inc. v. Marketing Displays Inc., 532 U.S. 23 (2001), focused on the question of whether the subject matter of a utility patent could, after the end of the patent’s term, serve as a product’s protected trade dress. The case thus involved the sometimes-competing goals of patent and trademark law. Then-attorney Roberts argued before the Supreme Court on behalf of TrafFix Devices that such a position was contrary to the “patent bargain” that offered inventors a period of exclusivity in return for the invention becoming public property when the patent expires. The Court agreed, and in a unanimous opinion ruled that Marketing Displays could not claim trade dress protection in the functional aspects of its formerly-patented sign stand. In Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002), then-attorney Roberts filed an amicus brief with the Supreme Court supporting the petitioner, on behalf of Litton Industries. According to Roberts’ Senate Judiciary Committee questionnaire, the brief argued that the Federal Circuit’s decision — holding that patent holders cannot rely on the doctrine of equivalents if the holders had previously submitted an amendment to the U.S. Patent and Trademark Office that narrowed claims — was a taking of private property without just compensation, and should not be applied retroactively. The Supreme Court vacated the Federal Circuit’s decision, and held that claim-narrowing amendments do not always prevent patentees from relying on the doctrine of equivalents when prosecuting infringement lawsuits. Also on behalf of Litton Industries, Roberts argued before the Federal Circuit in Litton Systems, Inc. v. Honeywell, Inc., 238 F.3d 1376 (Fed. Cir. 2001). Litton had won a $1.2 billion jury verdict against Honeywell on patent and state tort grounds, but the district court entered judgment for Honeywell notwithstanding the verdict in Litton’s favor. The patent issue on appeal — whether Litton was estopped from relying on the doctrine of equivalents because it had amended its patent claims — was precluded by the Federal Circuit’s en banc ruling in Festo. Litton prevailed nonetheless on the state law issues, and the case was remanded for a new trial. COPYRIGHT Roberts has been a bit more active in the copyright arena, having been involved in at least one copyright-related case in private practice and several as a member of the D.C. Circuit. Feltner v. Columbia Pictures Television Inc., 523 U.S. 340 (1998), involved the question of whether the petitioner had a right to have his copyright claim decided by a jury. Then-attorney Roberts argued that the Copyright Act as well as the Seventh Amendment guaranteed the petitioner a right to a jury trial in his copyright infringement case. The Supreme Court rejected the Copyright Act argument, but agreed that the Seventh Amendment created such a right and remanded the case to the district court for a jury trial. Roberts was a member of the panel that decided Recording Industry of America, Inc. v. Verizon Internet Services, Inc., 351 F.3d 1229 (D.C. Cir. 2003), a case construing the subpoena provisions of the Digital Millennium Copyright Act (DMCA), 17 U.S.C. � 512(h). In that case, the Recording Industry of America (RIAA) served Verizon with subpoenas seeking the names of two Verizon subscribers who appeared to be making large numbers of .mp3 files available to others via peer-to-peer file-sharing programs. Verizon objected, and on appeal argued that the subpoena provisions of the act did not authorize issuing a subpoena to an Internet service provider acting solely as a conduit for communications where others (in this case, the two subscribers) determined the content of the communications. The panel agreed with Verizon’s argument (thus negating the need to consider others that Verizon had also presented). Applying a fairly strict constructionist methodology to the analysis of what it agreed was a complicated statute, the circuit determined that the focus of �512(h) was ISPs that hosted infringing content on their own servers. Because the RIAA had not served Verizon with a notice (a prerequisite to the subpoena) identifying any of the offending .mp3 files to be removed by Verizon — indeed, the RIAA could not do so, because the content was not under Verizon’s control — the court determined that the subpoenas should not have issued. The statute, the circuit determined, was not written broadly enough to include third-party content traded on peer-to-peer networks within its scope. “It is not the province of the courts, however, to rewrite the DMCA in order to make it fit a new and unforeseen internet architecture, no matter how damaging that development has been to the music industry or threatens being to the motion picture and software industries,” the court wrote. Earlier this year, Roberts wrote the opinion in Universal City Studios LLLP v. Peters, 402 F.3d 1238 (D.C. Cir. 2005), a much simpler case construing the compulsory licensing provisions of the Copyright Act and related regulations that require copyright owners to file annual claims to royalties held in a “pool” by the Copyright office “[d]uring the month of July in each year.” The plaintiffs were two studios whose royalty claims were not received by the copyright office until Aug. 2, 2001. The studios were unable to prove, consistent with the requirements of regulations issued by the Librarian of Congress, that the claims had in fact been sent during the month of July. As a result, the copyright office refused to pay out the royalties to the studios, leaving millions of dollars in royalties uncollected, a decision that for obvious reasons was vigorously challenged. Here, too, the court’s opinion strictly construed both the underlying statute and the related regulations. The final sentences of Roberts’ opinion give a fair sense of the nature of the preceding analysis: “Under the regulations, the studios are not entitled to royalties on a claim that arrives in August without a July U.S. postmark or a stamped postal receipt, regardless of how compelling the proof may be that the claim was mailed in July. The regulations themselves — all of them — define what constitutes a proper filing, under the express terms of the statute. See United States v. Locke, 471 U.S. 84, 103 (1985). And under those regulations, the studios are out of luck,” Roberts wrote. Roberts also was a member of a recent panel that evaluated the constitutionality of �514 of the Uruguay Round Agreements Act (URAA), implementing Article 18 of the Berne Convention for the Protection of Literary and Artistic Works. Luck’s Music Library, Inc. v. Gonzales, 407 F.3d 1262 (D.C. Cir. 2005), challenged the portions of the URAA that establishes the copyrights of foreign copyright holders in various works that were protected under the law of their home country, but that fell into the public domain in the United States for a variety of reasons. The plaintiffs rented or sold copyrighted material, and claimed that implementation of the provision meant they could no longer freely distribute some of the works in their portfolios. The court, relying heavily on Eldred v. Ashcroft, 537 U.S. 186 (2003), refused to agree that there was any prohibition in U.S. law against restoring copyright protection to works that had entered the public domain. It saw no substantial difference between adding to a copyright term that was about to expire (which was at issue in Eldred) and restoring copyright to that which had been in the public domain. CONCLUSION It is interesting, but somewhat futile, to read anything into the differences between Roberts’ position in Luck’s Music Library — permitting the restoration of protection for a work that had entered the public domain — and attorney Roberts’ successful advocacy of the “patent bargain” in TrafFix Devices — denying trade dress protection to an invention in the public domain. There are too many differences between the statutory regimes, the fact situations, and even Roberts’ respective roles as judge and advocate to arrive at any conclusion as to what meaning, if any, to draw from the two cases. What the record does appear to show is that, if confirmed, the Supreme Court’s newest justice will be one who has hands-on experience dealing with technology law issues including, thankfully, patent law issues. Indeed, Roberts includes both the TrafFixDevices and Litton Systems patent cases in his response to the Senate Judiciary Committee’s question asking for the 10 most significant litigated matters that he personally handled. His several copyright law decisions share a rigorous statutory analysis, deference to precedent, and a general wariness to resort to legislative history where a statute is clear on its face. Roberts, who less than five years ago was litigating patent issues before the Supreme Court, will introduce a welcome hands-on technical perspective to a Court that has not had a new member since Justice Stephen G. Breyer was appointed in 1994. Kelly D. Talcott is a partner at Kirkpatrick & Lockhart Nicholson Graham specializing in intellectual property and technology law.

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