Bowman v. Monsanto: Unlimited Right to Sue on Self-Replicating Genetic Technology?

On February 19, 2013, the United States Supreme Court heard oral arguments in Bowman v. Monsanto, Docket No. 11-076, a currently a pending decision. This case involves the question of whether the patent exhaustion doctrine applies to seeds, a self-replicating technology. A blog article entitled "A Soybean in the Supreme Court" does a snappy job of describing the case and the issue in layman’s terms. The two lower courts that have already decided on the matter both concluded in favor of the chemical giant, Monsanto. My argument is that this is one of many cases where the law has not caught up with technology. A seed (and, for that matter, a baby animal) is not like any non-self-replicating product, and policy should be changed to take account of the difference.

As aptly summarized by authors Raustiala and Sprigman, Mr. Bowman, now seventy-five years old, bought seed from Monsanto and signed a standard agreement not to use the seeds for anything but one planting, to give away the seeds or save any of their progeny. The agreement is recited in the decision of the most recent court to decide the case, the Federal Circuit, sitting in Indiana: Monsanto Co. v. Bowman, 657 F.3d 1341 (Fed. Cir. 2011). He later decided to plant a second crop in the growing season, and for this riskier venture, he purchased cheap seeds, more often used for animal feed, from a grain elevator where farmers sell discarded seeds. While Mr. Bowman was upfront with Monsanto, he did save seeds from the second crop, and planted them in following years. Monsanto eventually investigated his crops, found second planting seeds to contain its patented technology, and sued for multiple infringement of two patents.

The seeds he bought were "Roundup-Ready" soybean seeds. "Roundup-Ready" seeds have been genetically modified to live through a spraying with Monsanto’s "Roundup" herbicide, made with N-phosphonomethylglycene, commonly known as glyphosate. The herbicide will kill all other plant life in the field, eliminating weeds in a situation where hand-weeding would not be economically feasible, but other herbicides were only intermittently effective. But only "Roundup-Ready" soybeans will survive it. A non-patented older variety would wilt. This solution to the “weed problem” is described in the District Court case, Monsanto Co. v. Bowman, 686 F.Supp. 2d 834 (S.D. Ind. 2009).

The particular patents in the "Roundup-Ready" soybeans are patents 605 and 247E. The 605 patent is for the use of viral nucleic acid from the cauliflower mosaic virus, which is able to infect plant cells, as a method of introduction of new genetic material into plant cells. Using the 605 patent in the soybean, Monsanto was able to introduce the particular transformation covered by patent 247E, in which protein-encoding plant cells that encode for a glyphosate-tolerant enzyme were added. This created the glyphosate resistance in the "Roundup-Ready" soybeans.

Mr. Bowman argued that the patent on the seeds sold to the grain elevator was exhausted when the first farmers bought the seeds. The patent exhaustion doctrine limits the right of a patent holder to sue on that patent after the patented good has been sold. “A Soybean in the Supreme Court” gives a good example; if you buy a car containing many patents, and sell it to someone else, you’re not liable for infringement, because the patents in the car were exhausted at the first sale. The analogous doctrine in copyright law is the first sale doctrine. Many exclusive rights under copyright are exhausted once the physical copy is purchased, so if you sell a used book, there is no infringement problem. Nevertheless, you cannot make a copy of a Cadillac and then sell it as your own invention. That’s what Monsanto argued: by saving seeds that turned out to have the genetic characteristics that made them glyphosate-resistant, and planting them for a second crop in serial years, Mr. Bowman was replicating the technology.

Both the District Court and Federal Circuit came to the conclusion that if you make a copy of a seed by growing a plant and then saving its seed, you are infringing a patent—even after it has been sold twice. The exhaustion doctrine did not apply. Nevertheless, this non-traditional view of the exhaustion doctrine amply demonstrates the difference between a plant and a car. A car is made and done with. By its nature, a car eliminates the expectation that it will reproduce itself, and therefore the need to investigate car dealerships and local driveways, worry about in whose hands this car is, and sue repeatedly to remind owners that they cannot make a copy, all of which Monsanto does to maintain its patent rights over its genetically modified soybeans.

Raustiala and Sprigman point out that at least two of the Supreme Court Justices, Sotomayor and Chief Justice Roberts, appeared to be on the side of Monsanto. Chief Justice Roberts expressed the opinion that no one would want to make improved seed varieties if the patents could eventually be taken and replicated. This is the seminal reason for the existence of patents: to encourage people to invent and improve goods by ensuring financial reward for that invention. Justice Sotomayor said, “The exhaustion doctrine permits you to use the good that you buy,” but not to make another item out of the item you bought. On the other hand, when a “good” that gives birth, or sprouts, produces additional little replica goods, people need do very little to be hauled into court.

I would suggest the U.S. at least institute a policy to keep genetically modified crops from mixing with other crops. The European Union adopted regulations ensuring the traceability of genetically modified crops, while acknowledging that “certain traces of GMOs (genetically modified organisms) in products may be adventitious or technically unavoidable.” The regulations are accompanied by guidelines to be followed as best practices to prevent the mixing of ordinary, genetically modified, and organic crops. Neither are militaristic in restriction of patented self-replicating plants, but the existence of such regulations merely acknowledges the problem and tries to create a framework to control these patented goods. The life inherent in the genes of a seed does not know to whom it belongs, and will, like the Kudzu vine on southern roadsides, take over, if given the chance.

The U.S. should not let its self-determination and independence as a nation convince it that corporations may profit on their, yes, fascinating, yes, amazing patents, without limit. The blog that first drew my attention suggests that this is only the first wave in a sea of litigation to come, noting that many patents are already held on animals. I am completely at a loss to say what can be done legally with a patented animal: classified as a good, similar to a seed in its reproductive capabilities, but, at least in the case of Dolly, the cloned sheep, similar to humans in that it is warm-blooded and gives birth to live young. On the "Roundup-Ready" issue, counsel for Mr. Bowman made a few policy arguments in District Court, including the argument that Monsanto should have the responsibility to warn the grain elevator, or the farmers that sold the seed to it, about mixing. The District Court stated in reply that it “may disagree with the decision to award unconditional patent protection to Monsanto . . . but this court does not make policy; rather, it interprets and enforces the law, which, in this case, does not support Bowman.” Let’s make that policy now.

Skype: A New Way to Testify

In time, distance and illness may no longer excuse some witnesses from testifying in court. Courts are gradually becoming more accepting of the use of technology in courtrooms to promote efficiency and fairness at trial. However, while using technology, such as Skype, in the courtroom instead of in-person testimony may simply be another progressive step taken by courts into the twenty-first century, it also gives rise to legal controversy.

Rule 804 of the Federal Rules of Evidence provides an exception to the rule against hearsay when a witness is unavailable due to infirmity, unavoidable absence, or forfeiture. Furthermore, the Sixth Amendment to the United States Constitution gives criminal defendants the right to “confront” witnesses who testify against them. The defendants have the right to be present and in view while the witness testifies, and also enjoys the right to cross-examine such witness. When a witness is unable to testify in court, the defendant should have had an opportunity to cross-examine the witness in order for the admissibility of testimonial out-of-court statements.

Skype is a web-based service that allows individuals to make free Internet video phone calls. If one has a laptop or mobile phone with a solid Internet connection and a front-facing camera, they could reach another person, or people, almost anywhere in the world for a video phone call.

Recently, there have been a few instances in civil and criminal cases, where courts have allowed the use of Skype so a witness could testify. In one instance, Law Technology News reported that an out-of-state witness was allowed to testify against the government via Skype in a criminal case because the defendant could not afford the witness’s travel costs. There were a few technological glitches during the witness’s testimony due to a few brief Internet disconnections, yet there was a large flat screen television set up in the courtroom for the jury, and others in the courtroom, to see. This decision by the Georgia Superior Court raised Confrontation Clause issues because the witness’s testimony was technically made out of court. However, since the defendant is calling this witness to testify via Skype, his confrontation rights were not at risk. In another instance reported by the Wall Street Journal Law Blog, a bedridden man looking to extend a protection order against his estranged wife was allowed to testify from his home using Skype. The lawyer used his iPad for the Skype call so the judge and opposing attorney could watch the call. In spite of some connection issues during the testimony, those involved found that using Skype was more efficient and cost-effective than the accommodations needed to bring the witness into court.

It was only a matter of time before court adopted this advance in technology. Attorneys use information from Facebook and e-mail as evidence, for example, so it is not surprising that video conferencing technology is slowly being implemented into courtrooms. While it is understandable why some may hesitate to accept the use of such technology for evidentiary or constitutional reasons, courts already find some forms of video technology acceptable in pleas, depositions, and testimony from children. Furthermore, when one makes a Skype call, attorneys for both parties may direct or cross-examine the witness as they normally would during testimony in court, thus the Confrontation Clause argument is weakened. The use of Skype may also help in saving money for all parties by limiting travel or special accommodation expenses. However, some money is necessary in equipping courtrooms with adequate technology and service connections to make Skype calls run more smoothly. Nevertheless, if courts are able to work out the technological kinks in making Skype calls to out-of-court witnesses, this may be an effective and economical solution to problems of getting certain witnesses into the courtroom.

Drone Strikes Threaten Due Process

The chairman of the Senate Intelligence Committee, Dianne Feinstein, recently said that she will review proposed legislation that would create a special court, analogous to the Foreign Intelligence Surveillance Court, tasked with reviewing drone strikes ordered by the executive branch. A push for such legislation comes during an administration that has utilized drone strikes more than any other. During the Bush administration, less than 50 drone strikes were executed, while during the Obama administration more that 360 have been launched. Of the many people killed in these drone strikes, at least 4 have been U.S. citizens—Anwar al-Awlaki being the most notorious.

This recent course of action raises an interesting constitutional question: do drone strikes targeting U.S. citizens violate the due process clause of the Constitution? The Fifth Amendment precludes the government from depriving a U.S. citizen of life without due process of law; essentially meaning that if the executive branch orders the death of a U.S. citizen without judicial approval, they have violated the citizen’s constitutional right to due process.

Michael Isikoff of NBC News acquired a Department of Justice white paper that illustrates the U.S. government’s position with regard to lethal force against senior operational leaders of al-Qaida, who are also U.S. citizens. According to the white paper, the government may order the death of such a target when a high level U.S. government official, informed of the facts, determines: 1) that the target poses an imminent threat of violent attack against the United States, 2) that capturing the target would be unreasonable, although this option is continually monitored in the event that it becomes reasonable, and 3) that the operation would not violate relevant principles of the laws of war. The U.S. government’s position is that when these circumstances have been met, the target has received sufficient due process and that the constitution has not been violated.

This standard, however, does not apply a typical interpretation of the word “imminent.” According to the white paper, imminence does not require the threat of violent attack to take place in the immediate future because the nature of terrorist attacks requires a broader interpretation. This broader interpretation calls for incorporating the window of opportunity for the attack, the mitigation of collateral damage, and the likelihood that the use of lethal force will prevent an attack against the United States. Theoretically, this definition allows the government to launch a lethal drone strike against a U.S. citizen at anytime, regardless of how close the target is to realizing a violent attack against the United States.

This raises many questions. Who is this high-level U.S. official in the government determining whether or not this standard has been met? What standard is used to determine if due process has been satisfied if the targeted U.S. citizen is not a senior leader of al-Qaida? These are the very questions that have led the public and Congress to consider whether or not judicial oversight of these lethal drone strikes is necessary.

A promising form of judicial oversight could be a special court tasked with reviewing the facts of a proposed drone strike and approving the strike or denying it. This court could be similar to the Foreign Intelligence Surveillance Court (FISC) that was created in response to concerns that the executive branch was abusing its authority to conduct domestic electronic surveillance in the interest of national security. Typically, if the government wants to engage in domestic electronic surveillance, one of eleven judges on FISC must review each application in a closed hearing and grant the warrant. However, if the government believes an emergency situation exists that would preclude the government from following this procedure in time, it may act without a warrant so long as it reasonably believes that the surveillance is constitutional and a judge on the FISC is notified, among other requirements.

A special court empowered to review the executive branch’s decision to execute a lethal drone strike is an appropriate safeguard, consistent with our traditional governmental structure. The need for such a court is further solidified by allegations made by former top U.S. officials such as Stanley A. McChrystal, former leader of the Joint Special Operations Command, and Michael V. Hayden, former C.I.A. director, who suggest that U.S. drone strikes in Pakistan and Yemen are now more frequently targeting low-level militants. This suggests that the administration is becoming increasingly more liberal with use of drone strikes, which could certainly increase the risk for collateral damage. Also, this increase in targeting low-level militants does not instill confidence that the executive branch will apply the standard illustrated in the white paper when U.S. citizens are the targeted low-level militants. The white paper only justifies targeting U.S. citizens who are senior operational leaders of al-Qaida and who are continually planning attacks against the U.S. Since low-level militants are less likely to fall within the definition of an operational leader, yet attacks on low-level militants are becoming more frequent, it is not clear what standard the executive branch uses to determine if a U.S. citizen who is a low-level militant has been afforded due process. This ambiguity suggests that an independent court is necessary to ensure that the executive branch affords all targeted U.S. citizens due process.

The government’s stipulation that the three-point standard for killing a U.S. citizen in a foreign country provides a citizen with sufficient due process is not adequate. The nature of terrorism and the threat it poses to the United States does not outweigh the substantial interest a U.S. citizen has in their own life. By ordering the death of a U.S. citizen without judicial approval, the executive branch is exceeding the power afforded to it by the constitution by taking the life of its own citizen without due process of law. To prevent future instances of these unilateral decisions, a special court, similar to the FISC, should be established to review and approve any executive branch decision to execute lethal drone strikes targeting both U.S. citizens and non-U.S. citizens.

Court Approves Warrantless Police Surveillance Cameras

Judge William Griesbach ruled that the Drug Enforcement Administration (DEA) was legally permitted to install hidden cameras on rural private property without a warrant. The DEA’s purpose for installing the multiple cameras was to obtain evidence in a large-scale marijuana growing operation. Five Marinette County residents were charged last July with violating federal drugs laws after more 1,000 marijuana plants were discovered. Council for the defendants attempted to have video surveillance excluded from evidence under the Fourth Amendment prohibition of unfair governmental searches and seizures. But the defense’s argument did little to convince Judge Griesbach to not admit the tapes.

The charges were the result of an extensive two-month drug investigation, which culminated in a bust last summer involving over 200 federal and state police. While things are not looking too good for the defendants, one wonders what effects Judge Griesbach’s ruling will have on future criminal investigation and litigation. U.S. Magistrate Judge William Callahan admitted the video evidence on grounds that, “The Supreme Court has upheld the use of technology as a substitute for ordinary police surveillance.” Judge Callahan cited a 1984 Supreme Court case, Oliver v. United States, in which the court ruled the government’s intrusion on an open area constituted trespass at common law, but did was not “search” protected by the fourth amendment. 466 U.S. 170, 184 (1984).

However, Judge Griesbach’s ruling was contrary to the Supreme Court’s decision last January. In the previous case, the Supreme Court held that installing GPS tracking devices without a warrant violated the Fourth Amendment. The Supreme Court has yet to rule on warrantless cell phone tracking devices but the hot-button issue is currently before the Court. While Judge Griesbach’s ruling will likely not influence the Supreme Court’s upcoming decision, it may have a significant impact on future evidentiary hearings regarding police surveillance.

As stated previously, the use of covert digital surveillance cameras without a warrant is just one of many technological surveillance innovations garnering attention in the courts. Police monitoring evokes legitimate concerns for Fourth Amendment rights but the increasing police surveillance is also a violation of ordinary citizens’ privacy rights. The objectives of the police may be to ensure public well being, but those objectives must be cautious not to strip the public of fundamental rights in the process. As technology advances, the capabilities of police surveillance will expand and the degree of privacy invasion we allow in exchange for peacekeeping purposes remains to be seen.

Where You At?: Privacy Concerns with Automated License Plate Readers

Two months have passed since the ACLU and its associates sent a letter under the Freedom of Information Act to the DOJ, DOT, and DHS requesting the government’s automated license plate readers’ (ALPR) records. After little to no response the ACLU of Massachusetts was obligated to file suit against the DOJ and the DHS in federal court on September 25th.

The ACLU’s main concern is focused on why and how the government is using these records in regards to ordinary citizens.

On July 30, the ACLU filed an open-records request, also referred to as a Freedom of Information Act request, asking the government to provide records and information in regards to the ALPR’s uses since January 1, 2006. The demands were by no means “light lifting”; the letter was roughly six pages in length. Yet, most American citizens would have found it justified, especially since the government’s use of ALPRs continues to expand leading to a further invasion of ordinary citizens’ privacy rights.

The ALPRs are small radio sized boxes and are adhered to police cars or other static objects along the roadways. A reader can snap over 1,000 pictures of license plates per minute, while also noting the time, date and location of the vehicle. Once a license plate number is obtained the reader is able to search criminal databases. The device is beneficial for tracking stolen cars, wanted criminals and those with expired registrations, but also records mass amounts ordinary citizens’ information. Thus, the ACLU is alarmed with the amount of information obtained by the readers and how it is being protected and used. The federal agencies' failure to respond to the ACLU’s requests raised even greater concerns and forced the ACLU to seek legal action.

The ALPRs are unfortunately just another form of government surveillance being disputed in the courts. A Wall Street Journal analysis states that the government records information about an ordinary American citizen in 20 different manners a day. But unlike cell phones and online tracking, license plates do not have an off button and chances are if you're driving around or even parked at Kwiki Mart, the federal government knows this and has your daily activities on file. Clearly this raises Fourteenth Amendment privacy concerns specifically in regards to ordinary citizens whose privacy freedoms are not diminished by a criminal record.

Furthermore, the expense of surveillance technology, including the ALPRs has diminished throughout the years, to the extent that even private entities have invested in the devices. Many are also concerned as whether or not the current databases are safe from hackers. Considering the massive amount of information ALPRs record on daily basis what would happen if they were hacked or information was leaked? Forget the government watching your every move. What about criminals, stalkers or your mom?!

The underlying focus of the ACLU is to learn what the federal government is doing with all this information. It is easy to assume that the ALPRs can or soon will be combined with speed detectors and other video surveillance. Could this mean traffic tickets will soon be sent and received in the mail? The influx on most district or traffic courts would be astronomical, as if these courts are not already busy enough.

Lastly, could this information be used as evidence in trial cases, and if so, how accurate is the information? Most of photographs are only of the license plate and do not include the passengers, car make, or model. Hopefully, the ACLU’s recent legal actions will soon shed some light on ALPRs and how they may be infringing on our privacy rights.

Texas Jury Invalidates Patent on the “Interactive Web”

Photo Entitled "sorry-no-internet-today-2.half" by Timsparke on Flickr

On February 9, 2012, an eight-member jury in the East Texas Federal District Court decided that a patent claiming ownership of the interactive web was invalid. Michael Doyle and his patent-holding company Eolas Technologies brought a patent infringement suit against some of the largest companies in the world, including, among others, Google, Yahoo, Amazon, YouTube, and Apple. The thrust of the claim was that a patent gave Doyle and his company ownership over certain features of the interactive web, including rotating pictures and streaming video.

Though the USPTO initially rejected the patent after it was filed in 1994, even after several re-examinations, Doyle persisted and eventually received the fought for patent in 1998. After the USPTO awarded the patent to Doyle and his company, they failed to put it to any practical use. Eolas holds many patents relating to the technology industry, and the only use it makes of them is to sue others for infringement. Another well-known case was an infringement action brought against Microsoft’s Internet Explorer, for which Eolas received a hefty settlement. These actions led many critics to give Doyle and his company the loathsome title of “patent troll.”

The defendants in the “interactive web” infringement suit argued vehemently that it was not Doyle’s invention, but rather Pei-Yuan Wei and his Viola browser, or Dave Raggett and his <embed> tag, that brought about the interactive web. In the end, the East Texas jury decided in favor of the defendants and found that Doyle’s patent was invalid. The defendants avoided a potential $600 million verdict, and perhaps a more challenging fate of needing to find a work-around for Doyle’s patent.

Though a patent holder is not required to make use of his patent, the actions of Doyle and Eolas Technologies highlight the nightmare that “patent trolls” can cause. The defendants in this lawsuit were forced to spend millions of dollars defending themselves against these infringement claims, as well as the possibility of losing the right to use the very technology that their companies were built upon. Perhaps public policy should call for a change to patent law wherein patent holders lose their right to the patent if they do not implement it after a certain number of years.

Facebook and the State of Washington Join Forces in Fighting Online Spam

Photo titled "Dislike" by Charlotte Road on Flickr

For the first time since the enactment of the federal CAN-SPAM Act, a state government and a private company joined forces in protecting consumers from spammers/scammers. On January 26, 2012, Facebook and the State of Washington filed two separate lawsuits against internet marketing company Adscend Media, alleging violations of the anti-spam law. Specifically, they claimed that Adscend Media tricked Facebook users into clicking deceptive links that appeared as recommendations from their friends. These deceptive links led users to disclose their personal information, direct them to advertising sites, and continued the cycle of spreading spam to their friends.

The CAN-SPAM Act was enacted by Congress in 2003, aiming to protect consumers from unsolicited commercial email. It requires that all commercial electronic mail must clearly and conspicuously identify the message as an ad in the subject line, clearly and conspicuously disclose to the recipient an opt-out right to not receive future emails in the text body, and cease transmission of commercial emails within 10 days of recipient of the opt-out request. The Act also establishes tough penalties of up to $16,000 for each separate email, it also grants the government and private parties the right to bring civil and criminal action against violators.

The Act covers all commercial messages, defined as “any electronic mail message the primary purpose of which is the commercial advertisement or promotion of a commercial product or service.” Courts have interpreted “electronic mail message” broadly, reasoning that such a broad interpretation is consistent with Congress’ intent to curtail the number of misleading commercial messages that overburden the infrastructure of the internet. In Myspace v. Wallace and Myspace v. the Globe.com, Inc., the Central District Court of California defined an electronic mail message as a message deliverable to a unique electronic mail address. An electronic mail address is a form of electronic communications, including a traditional email address, inbox, and other alternative forms. A message posted on a Facebook wall, news feed, or home page is an electronic mail message.

The Act grants a limited right to a private party (namely internet access service providers) to bring a civil action against alleged offenders in federal court. In order to have standing to bring such action, an internet access service provider must show an adverse effect by the violation of the Act. “An adverse effect” can be a very high standard in some jurisdictions, requiring an actual harm from specific messages, rather than a general harm from receiving messages. Despite the limited private right and high standard of proving an adverse effect, more and more private entities enjoy the success against spammers. For example, Facebook has been awarded millions of dollars in judgments under the CAN-SPAM Act since 2008, including a $873.3 million judgment against a Canadian-based site for illegally using Facebook user’s log-in information to distribute spam, and a $711 million judgment against “spam king” Sanford Wallace for fraudulently gaining access to Facebook accounts and using them to send spam throughout the Facebook network.

States have the right to bring a civil action on behalf of their residents if they reasonably believe that the interests of their residents has been or is threatened or adversely affected by commercial email senders. States can either seek to enjoin future violations, or recover monetary damage. The bar for the later is much higher than the former. A state must prove that an alleged offender had actual or implied knowledge for the alleged unlawful conduct in order to recover monetary damage which is not required in an enjoinment action.

In the current joint action against Adscend Media, it is likely that both Facebook and the State of Washington have a good chance of winning. Under the broad interpretations promulgated by the courts, messages Adscend Media sent to Facebook users were electronic messages because they reached destinations receivable by Facebook users. These messages were fraudulent, as they were not recommended by Facebook users’ friends as their outward appearance would suggest. The messages were deceptive and intended to direct unsuspecting Facebook users to third party commercial sites so as to obtain the user’s personal information. Facebook suffered damages because its rights were violated. The interests of citizens of Washington State were compromised because they were tricked into disclosing personal information and pay for unwanted subscription services through spam. Adscend Media’s alleged unlawful conduct is not likely unintentional, if their actual or implied knowledge can be proven. It is not only likely to pay damages to Facebook, but also to Facebook’s users in the Washington.

Copyright Office Releases Discussion of “Mass Digitization”

Photo Titled "Kindle/Nook Hollow Book Holder" by Conduit_Press

Just this past month the Copyright Office released a forty page document entitled Legal Issues in Mass Digitization: A Preliminary Analysis and Discussion Document. The document is supplemented with multiple useful appendixes and comes in at just under one hundred pages total. What could possibly motivate the Copyright Office to go to such lengths? The answer is Google. More specifically, Google Books and a variety of organizations throughout the world that are attempting to compress as much printed or published material as possible into a digital medium. The problem is that the printed material, overwhelmingly books, is most likely under copyright with an owner who must grant permission for such copying. Hence copyrights.

The cases that led to this report and raised most of these concerns are Authors Guild v. Google Inc., 770 F. Supp. 2d 666 (S.D.N.Y. 2011), and the companion case American Society of Media Photographers, Inc. v. Google Inc., Civil No. 10-2977 (S.D.N.Y.). Google has been scanning books, many copyrighted, since 2004 and made full copies available to users of partner academic libraries and samples available to the general public via the internet. The report notes that the court was concerned “that exclusive rights afforded by copyright law should not be usurped as a matter of convenience, and that policy initiatives that redefine the relationship between copyright law and new technology are in the first instance the proper domain of Congress, not the courts." Google attempted to settle the matter at one point but he Department of Justice was concerned that Google’s behavior would continue and have negative long-term implications. Though settlements are expected, future litigation is almost inevitable.

The document goes on to describe how books are being mass digitized and who the interested parties are. Google is obviously one of these parties. A conglomerate made up of twelve well-known universities, Google, Microsoft and the Internet Archive created the HathiTrust Digital Library that contains three billion pages of scanned content. European governments have also partnered with private organizations to digitize as much cultural and scientific resources as possible. The Library of Congress, the Smithsonian Institution, and the National Archives all have detailed digital plans for the future as well. It is definitely worth noting that there is already a vast amount of literary work available online throughout the world. The EU, France, Germany, and China are all working on government funded projects to digitize books that are considered imperative to the preservation of history.

The fourth part of the report analyzes how copyright laws, specifically licensing, interact with book digitization initiatives. Under the Copyright Act a copyright owner possesses a “bundle of rights” that includes the right to exploit the digital rights of their work however they see fit. The Copyright Act also grants a limited exception to libraries and their ability to make copies of books. The report also notes “it is difficult to imagine an exception to copyright applying to the commercial partners of libraries.” The Fair Use exception is discussed but no concrete predictions for its application can be arrived at. Fair Use is employed as a defense once the court finds infringement, which analyzes the motives and individual circumstances of the infringer on a case-by-case basis. The last issue raised in the fourth part of the report is “orphan works.” The term orphan work is used to describe a copyrighted work without a locatable owner to obtain permission from. Congress has discussed a “safe harbor” for certain organizations that are using orphan works as long as the work is no longer used if the copyright owner reappears and objects to its use.

Licensing schemes are discussed in the last part of the report covering both direct licensing and collective licensing. Collective licensing would encompass voluntary (direct negotiation between licensee and licensor), extended (requiring some form of legislation to allow groups to bargain on behalf of licensee and licensor), and compulsory (basically forcing the copyright holder to license the use of the work) methods.

Many of the concerns brought up in this document are analogous to the concerns society and business had with the invention and rise in popularity of copiers/Xerox machines and videocassette recorders/VCRs. The use of digitized books by members of non-profit organizations like universities and public libraries does not seem to be the main problem here because the library will most likely be a good faith partner that can be negotiated or renegotiated with. The long-term concerns seem to be centered on what framework needs to be put in place to protect copyright owners from technology that isn’t “here” yet. If you told an author twenty years ago that their most lucrative royalties would come from tablets, Nooks, or Kindles they would try to have you committed. But, many if not most people’s lives now revolve around digital content. It would not be fair if that stick in copyright owner’s bundle of rights is compromised; it may ultimately prove to be the most valuable stick.

The full document can be found here: OFFICE OF THE REGISTER OF COPYRIGHTS, LEGAL ISSUES IN MASS DIGITIZATION: A PRELIMINARY ANALYSIS AND DISCUSSION DOCUMENT, (2011), available at http://www.copyright.gov/docs/massdigitization/USCOMassDigitization_October2011.pdf

Ban on French Cop-Watching Website

Photo titled "Anti-Sarkozy Demonstration & Riots (28) - 06May07, Paris (France)" by Phillipe Leroyer

Following French President Nicolas Sarkozy’s call for a more “civilized Internet,” a French court recently placed an immediate block on French website Copwatch Nord Paris, which monitored controversial actions of the French police. The website offered various images and videos of police officers while arresting suspects, including such acts as allegedly taunting protestors and committing acts of violence against members of ethnic minorities, reports the NY Times.

The French police welcomed the court’s decision, believing that the site was responsible for inciting violence against the them. Jean-Claude Delage, secretary general of the police union, Alliance Police Nationale, told Agence France Presse that the court “analyzed the situation perfectly,” stating the court had “made the right decision.”

Free speech activists, on the other hand, find the ban on the website to be an unacceptable censor, but consistent with the French government’s policy of imposing strict control over the Internet. Amnesty International issued a report in 2009 which criticized France for its police brutality, which it noted, is rarely investigated. The recently banned cop-watching website was an attempt to expose these alleged injustices.

The cop-watching movement and corresponding websites originated in the United States and have been protected by the First Amendment of the U.S. Constitution. Unfortunately for French advocates of free speech on the Internet, there is no equivalent to the First Amendment in French law. Given that no such protections exist for the French, the court was able to help Sarkozy in his attempt to clean up the Internet while free speech went by the wayside.

For further reading see:

Eric Pfanner, Court Orders French Cop-Watching Site Blocked, N.Y. TIMES, Oct. 16, 2011, available at http://www.nytimes.com/2011/10/17/technology/court-orders-french-cop-watching-site-blocked.html?_r=2&ref=technology.

Police Abuse Goes Unchecked, AMNESTY INT’L, Apr. 2, 2009, available at http://www.amnesty.org/en/news-and-updates/report/police-abuse-goes-unchecked-france-20090402.

Today Congress Giveth, Tomorrow They Taketh Away

Post oral argument and in feverous anticipation of the Supreme Court's opinion, I offer this belated summary of the procedural history of Golan v. Holder, 609 F. 3d 1076 (10th Cir. 2010). The Court's forthcoming opinion will have major implications regarding Congress' constitutional power and the predictability of copyright licensors and licensees worldwide.

Golan, et al., v. Holder is a challenge to the constitutionality of Section 514 of the Uruguay Round Agreements Act of 1989. Section 514 implements Article 18 of the Berne Convention of 1994, which would square copyright law in the United States with copyright law in over one hundred other countries. Much of this case is somewhat familiar territory because the Supreme Court heard a challenge to copyright extensions specifically in Eldred v. Ashcroft, 537 U.S. 186 (2003). In Eldred, the Court found that the “limited Times” language in the Constitution did not preclude Congress from extending copyright terms. Golan is distinguishable from Eldred because the legislation in question, Section 514, is retroactive, not an extension. The plaintiffs in Golan case range from conductors of symphonies, record labels, to motion picture production companies that use public domain works without a license. Well known works by Igor Stravinsky and H.G. Wells are just a couple examples of works that would be affected by Section 514. The plaintiffs’ key argument is that they relied on these works remaining in the public domain and Congress has never granted a retroactive copyright since the first Copyright Act of 1790. The defendants are copyright owners that would like to control the use of potentially lucrative works no longer covered by copyright. The amicus briefs for both petitioner and respondent are compelling because they are not simply public domain advocates versus copyright holders and licensors who are hoping to make a buck.

The first time around, a Colorado district court granted summary judgment to the plaintiffs. On appeal, the court remanded the case back down to the district court with instructions to determine whether Section 514 was content-based or content-neutral. This determination would inform how Section 514 would be analyzed. A content-neutral determination would deserve intermediate scrutiny and content-based would bring on the strict-scrutiny lens. The court found Section 514 to be content-neutral and again granted summary judgment for the plaintiffs holding Section 514 unconstitutional.

The Tenth Circuit Court of Appeals reversed the district court’s judgment and remanded the case with instructions to grant the government’s motion of summary judgment. The Tenth Circuit, using intermediate scrutiny, determined that Section 514 addresses an important government interest and a real harm. The court also determined that Section 514 would cure these harms. These determinations justified Congress’ intention. The court of appeals also determined that the plaintiffs’ speech and reliance on the works remaining in the public domain was not restricted therefore the First Amendment was not violated by Section 514.

This case brings the clash of author and public into the legal spotlight once again. One major negative consequence of this retroactive reinstatement of copyrights is the possibility that a work without a business minded copyright holder will be protected but underexposed or underutilized by the public. A possible positive outcome is that authors or the transferees will now aggressively market these newly protected works because monetary value will suddenly be at stake. The biggest drawback is that one of the major goals of the Copyright Act of 1976 was increased predictability for authors and copyright holders alike. But predictability is not what either party is getting. What if one of your most profitable business models was to capitalize off of copyrighted works that had fallen into the public domain? Without a contingency plan your business might be ruined.

For a discussion of the legal issues stemming from Golan v. Holder, see “Supreme Court Preview – Golan v. Holder: Can Congress Remove Works from the Public Domain?” by Anna Shapell

Supreme Court Preview – Golan v. Holder: Can Congress Remove Works from the Public Domain?

On Wednesday, October 5th, the Supreme Court heard arguments for Golan v. Holder, to decide whether Article I, § 8, cl. 8 of the Constitution prohibits Congress from taking works out of the public domain. This clause, known as the Progress Clause, exists to “promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” Essentially, the Court’s task is to decide whether Congress can restore copyright protection for works whose copyright protection has already expired. For the purposes of Golan, analyzing the phrase “for limited times” will be particularly important to the Court as they discuss whether that limited time status is revocable by Congress for certain works—specifically foreign works.

U.S. copyright laws have always been formulated to accord with the time limitation mandated by the Progress Clause. Originally, or at least commencing with the 1909 Act, copyrighted works, so long as they complied with the requirements of notice and registration, were granted with a twenty-eight year period of copyrightability, which was renewable for a subsequent term of equal duration. This Act was then superseded by the Copyright Act of 1976. Regarding the term of protection under the 1976 Act, works created prior to 1976 received an extension amounting to fifty plus the life of the author. Subsequently, the Berne Convention was held, and in 1988, a two-part implementation took place. First, signatories to the Act are required to recognize the works of authors from other signatory countries, and second, all works (with an exception) shall have copyright protection for at least fifty years after the author’s death. It was not until 1998 and the enactment of the Copyright Term Extension Act (CTEA), more affectionately dubbed the “Sonny Bono Bonus Act,” that copyright duration as it exists today was implemented. The Act extended the duration of a copyright to the life of the author plus seventy years. Additionally, it stipulated that any works created in or after 1923 were, as they were still under copyright protection in 1998, were granted additional protection until 2019 or later. As a matter of course, since works created prior to January 1, 1978 (the triggering date for the 1976 Act) would naturally lapse into the public domain, the 1998 Act included that such works were to remain protected until 2047. Often the 1998 Act is called the Mickey Mouse Extension Act, because it was largely believed that the extension was granted in order to postpone the date at which copyright protection for Mickey Mouse would enter the public domain. And it is here that the issues in Golan arose.

Golan is irrevocably tied to another Supreme Court case of note, Eldred v. Ashcroft, decided in 2003. In Eldred, the plaintiff operated a website that displayed what new works entering the public domain were every year. The 1998 Act effectively put Eldred out of business, however, since per the Act, the next time any works will enter the public domain is 2019; Eldred would have to go on hiatus for quite some time before his website could finally be updated. Ultimately, the Court upheld the constitutionality of the CTEA. Represented by copyright advocate and champion Lawrence Lessig, Eldred made several arguments essentially claiming that this extension was just one of many the public could expect in order to prevent certain works from ever lapsing into the public domain. Lessig argued that the extension violated the limited nature of the Progress Clause, and invariably became unlimited. The solicitor general, arguing on behalf of the attorney general, countered by explaining that the very act of setting a time limit—seventy years plus the life of the author—was inherently limited because it set a hard date at which a copyrighted work would no longer be protected. The Court agreed with this argument, and others, and upheld the constitutionality of the Act 7-2. The ultimate impact of Eldred was to uphold the notion that Congress, empowered through the Progress Clause, is the appropriate body for setting the relevant limit.

Returning to Golan, the result of Eldred initially doomed Golan; the U.S. District Court for the District of Colorado dismissed the primary issue of whether the 1998 Act violated the limited time element of the Progress Clause. That case, originally under the name Golan v. Ashcroft in accordance with the fact that John Ashcroft was the attorney general at the time of suit, morphed into Golan v. Holder, as Attorney General Eric Holder was attorney general in 2009 when the suit was brought again. Under this new title, a new Act was brought under scrutiny: the 1994 Uruguay Rounds Agreement Act (URAA). This Act relies heavily on the restoration provisions of the Berne Convention. Under the 1988 Act, foreign works still copyrighted in their source country but that were not in the United States were restored to copyright protection in the U.S. But, in a twist, the United States refused to sign on to this particular aspect of the Berne Convention, and the criticism it faced as a result of this denouncement was remedied by the passing of the URAA. The relevant provision of the URAA restored copyright protection to foreign works that were previously not copyrighted in the United States. It is this provision of the URAA— in addition to the restoration provisions of the CTEA—with which Golan took issue.

As Eldred did for the CTEA, Golan challenges that the URAA violates the limitedness of copyright law by restoring certain foreign works to copyright protection. This argument was not persuasive at the district court level, nor at the in the Appeals Court for the Tenth Circuit. The Supreme Court then granted certiorari on March 7, 2011 for review in its upcoming term.

While oral arguments have been made, the outcome of this case in the Supreme Court could mean many things for the right of the public to copy works that have entered the public domain by virtue of the lapse of their copyright protection. Some argue that withdrawing certain works from the public domain will stifle creativity and discourage the production of new works. Preserving Congress’s right to restore copyright protection to works of its choosing opens up the possibility for doing so for unlimited works. Perhaps if Congress deems it necessary in the future, it will restore copyright protection to works it decides are worthy of continued protection. Advocates argue that the concept of a free and open public commons, one in which artists are free to draw on other works for inspiration, is threatened by a shrinking public domain. It is believed that focusing the Court’s attention on the integrity of the public domain, indeed, the public domain which allows U.S. artists and authors to use the foreign works at issue as a foundation for their own work, is at risk.

Conversely, the government could potentially argue that this practice of restoring copyright protection to certain works is a prerogative Congress has exercised before. The natural byproduct of passing new copyright laws extended copyright protection to works that would have lapsed by for the extension. For example, works created prior to 1978 were gifted with additional years of protection; those who sought to rely on the lapsing of the copyright for those works into the public domain were, at that time, disappointed, but the constitutionality of the 1978 was ultimately upheld. The same could be said for the extensions granted under Berne and the CETA, and therefore, the government could argue, for the sake of consistency, the Court should hold that the extensions under the URAA are similarly constitutional.

This case could finally settle the right of Congress to exclusively control the setting of the limits for copyrighted works. So long as there is a limit, it is the privilege of Congress to set that limit within reason. And in light of the rapidity of technological advancements and the impact that invariably has on the creation of new types of works, not allowing Congress to exclusively control the setting of limits certainly emphasizes a clear bottom line: those who believe the creative commons should be inherently public are hereby being disabused of that notion. In other words, copyright protection persists for the purpose of protecting the rights of artists and authors to continue to create without the threat of copying, which is the basic purpose of the Progress Clause. It will be interesting to see which side prevails, and whether the Court opts to sanctify the superiority of Congress in this matter, or instead upholds the accessibility of knowledge and ideas.

For an analysis of the procedural history of Golan v. Holder, see “Today Congress Giveth, Tomorrow They Taketh Away” by Charles Glyman.

Supreme Court Says "GAME OVER" to Law Banning Minors from Purchasing Violent Video Games

Photo titled "Supreme Court Violent Videogame Trial Courtroom Drawings" courtesy of Zero-Lives on Flickr

This summer, the United States Supreme Court held that a California statute banning the sale or rental of “violent video games” to minors was unconstitutional. Justice Scalia, writing for the majority, held that video games qualified for First Amendment protection, that violent video games were not excluded from protection based on the Court’s obscenity jurisprudence, that violent video games were not unique so as to be their own category of unprotected speech, and that the California statute failed to meet strict scrutiny. Justice Alito and the Chief Justice concurred, with Justices Thomas and Breyer filing separate dissents.

The court briefly addressed whether video games as a technological medium qualified as speech protected under the First Amendment. Comparing video games to books, plays, and movies, the Court quickly held that video games were a protected form of speech.

The Court then addressed the issue of whether violent video games were considered obscenity, a form of non-protected speech. Focusing on the Court’s obscenity jurisprudence, Justice Scalia aptly noted that obscenity had been limited to certain sexually explicit content. The Court has had the opportunity to expand this definition on several occasions, including to violence, most recently in U.S. v. Stevens, but has declined to do so.

In holding that violent video games were not obscenity, the Court next addressed whether violent video games should be their own category of non-protected speech. Leaning on his originalist tendencies, Justice Scalia recounted the historical absence of banning minors from accessing violent content. The Court referenced the violence portrayed in Grimm’s Fairy Tales, Homer’s Odyssey, and Dante’s Inferno—stories that are currently, and historically have been, read to minors. Citing this historical exposure to violence, the Court found no reason to carve out a new exception for violent video games from the First Amendment.

At that point, the Court turned to a traditional strict scrutiny analysis, reiterating that a restriction of protected speech was presumptively invalid unless the state could demonstrate that the statute was narrowly tailored to serve a compelling government interest. Justice Scalia was quick to point to the lack of a causal link between minors playing violent video games and harm to minors. Without an actual harm that needed preventing, the Court logically held that the state had no compelling interest, and therefore the statute was unconstitutional.

The Court’s decision in Brown v. EMA is consistent with their First Amendment jurisprudence and is a victory for free speech, minors, and the video game industry. A full copy of the Court’s decision may be found here.

A New Litigation Tactic: Use of the Ipad

Image by Malabooboo

As one of the latest technological revolutions, the Ipad is making headway into the legal system. Initially, the Ipad demonstrated its use in the classroom, corporate presentations and even in the medical field. Recently, the Ipad has showcased its practical use during witness examination and closing argument.

Traditionally, evidence has been presented on blow-up foam boards illustrating charts, pictures, etc. As the technological boom in the mid to late nineties occurred, the practice to present evidence to jurors with the latest technology became customary. In 1996, inData introduced TrialDirector software, enabling trial teams to exhibit documents and video depositions on a projection screen. The capabilities of this technology have since expanded to aid in the trial preparation process.

Each aforementioned method has their downfalls. Foam boards can become overwhelming to jurors when a large quantity of evidence must be presented. TrialDirector may require an IT professional on-site in case complications arise. To avoid these issues, some attorneys are turning to the Ipad as their solution.

What makes the Ipad more practical than other trial presentation methods is the versatility that its applications and features offer. The Ipad offers three trial presentation applications: RLTC Evidence, Exhibit A and TrialPad. Through these applications, evidence is seamlessly presented onto a projection screen from the Ipad’s display screen. All of the Ipad’s features (such as the ability to zoom in and out with fingers scrolling on the screen) are available for use with these applications. For example, as the user zooms in on the Ipad, the same occurs on the projection screen. This enables the user to focus in on a particular point at any moment, providing an opportunity to effectively articulate argument coupled with support that is easily viewed on the projection screen by jurors. Similarly, words or phrases can be effortlessly highlighted, further drawing the jurors’ attention to necessary information as attorneys read documents aloud.

The Ipad is distinguished from its trial presentation competitors through the flexibility of the device itself. The Ipad has brought sophisticated computer technology to a portable, lightweight device. Attorneys can walk around the courtroom with the Ipad in hand, and with a 10-hour battery life the concern for the Ipad crashing is non-existent.

As Ipad technology and the presentation applications that it offers develop, its use in the courtroom will expand. Ipad has already released an updated version of the TrialPad presentation application, “TrialPad 2”, which among other features now allows for PDF’s, video files and split-screen displays. The Ipad offers an impressive, user-friendly and effective method to present evidence during witness examination and closing argument. The sky is the limit for the Ipad.

Slash Not Welcome in the Jungle: Axl Rose Sues Activision Over Use of Slash's Image in Guitar Hero III

Axl Rose is suing Activision for $20 million for allegedly breaking its promise not to include images of Slash, his former band mate in Guns N’ Roses, in Guitar Hero III. Mr. Rose claims that this promise was a condition of his granting Activision a license to use the song “Welcome to the Jungle” in Guitar Hero III. This promise was allegedly in the form of a written agreement in a series of emails. An animated version of Slash appears on the cover of the videogame. The suit claims fraud and breach of contract amongst other causes for relief.

It may be difficult to prove breach of contract due to the parol evidence rule. The parol evidence rule concerns what can be admitted as evidence when the court considers a contract. California’s parol evidence rule states that “[t]erms set forth in a writing intended by the parties as a final expression of their agreement with respect to such terms as are included therein may not be contradicted by evidence of any prior agreement . . . .” Cal. Civ. Proc. Code § 1856(a) (2007).

A full parol evidence analysis is beyond the scope of this blog entry, and would require a copy of the contract, all relevant material, and the actual complaint; therefore this blog post will concentrate on just one limited aspect. If the court finds that the parties had a contract that was a “writing intended by the parties as a final expression of their agreement,” that will affect the admissibility of evidence of a prior agreement. If the email agreement to not use Slash’s image was made prior to the contract, that agreement will not be admissible as evidence to contradict the contract.

Prior agreements can, nevertheless, be admitted to show fraud. Under California law, the key language which defines fraudulent deceit is “[o]ne who willfully deceives another with intent to induce him to alter his position to his injury . . . .” Cal. Civ. Code § 1709 (2009). Deceit is defined as:

1. The suggestion, as a fact, of that which is not true, by one who does not believe it to be true; 2. The assertion, as a fact, of that which is not true, by one who has no reasonable ground for believing it to be true; 3. The suppression of a fact, by one who is bound to disclose it, or who gives information of other facts which are likely to mislead for want of communication of that fact; or, 4. A promise, made without any intention of performing it.

Cal. Civ. Code § 1710 (2009). In order for Mr. Rose to succeed with a fraud claim, he will have to prove that Activision purposely deceived him with the intention of getting him to license “Welcome to the Jungle” to Activision. Fraud cases are often difficult to prove, as there is rarely a “smoking gun” to show the fraudulent intention, and instead, must often rely on the fact-finder to impute intent based on circumstantial evidence. Yet, the fraud claim may wind up being stronger than the breach of contract claim because the parol evidence rule can absolutely bar evidence from even being considered at trial.