A Report from the USC IP Institute

Irene Chen
J.D. Candidate 2015, UCI Law

Namita Thakker
J.D. Candidate 2015, UCI Law

Members of the Intellectual Property and Cyberlaw Society

On March 14, 2013, at the 2013 USC Intellectual Property Institute, the Honorable Andrew Guilford, of the Central District of California and a member of the UCI Law Board of Visitors, spoke on a panel with other federal judges, including the Honorable Randall Rader of the Federal Circuit, the Honorable William Alsup of the Northern District of California, the Honorable Rodney Gilstrap of the Eastern District of Texas, and the Honorable John Kronstadt, also of the Central District of California. These distinguished members of the bench were concerned that judicial inefficiency results when, in patent cases, lawyers are quick to allege a laundry list of infringements. Some of the judges advocated limiting the number of claims a plaintiff can allege, or increasing filing fees for more than a few claims. However, other judges were concerned that this limited approach to claim construction may have a negative effect on due process. In the end, they seemed to agree that lawyers should limit allegations as they see fit, especially in cases that will turn on the resolution of just a few claims. Furthermore, the judges questioned the necessity of judges’ roles as gatekeepers. They all agreed that a good cross-examination of an expert or a special master is important to the jury’s understanding of relevant issues in the inherent complexity of a case involving patents. When lawyers make competent arguments, they relieve judges of the uncomfortable burden of making determinations about issues about which they may not have expertise. The Honorable Gilstrap also expressed to the Honorable Rader his wish that the Federal Circuit be more diligent in case management by closely examining the ramifications of Federal Circuit decisions on trial judges before allowing those decisions to be published. The Honorable Rader, in turn, strongly encouraged the district court judges to be more aware of the need to reduce the costs of patent litigation.

The Institute featured other panel discussions about recent changes in copyright, trademark, and patent law. In one panel discussion, the speakers focused on tensions and the need for balance between free speech and brand protection, especially in this age of social media. Christy Susman, Senior Attorney of Trademarks at Jack Daniel’s Properties, relayed the importance of respecting and even valuing trademark infringers in the social media age. Recently, an author co-opted Jack Daniels’ famous graphic for the cover of his novel. Instead of seeking aggressive enforcement, Susman, in conjunction with members of the marketing team, wrote a polite and humorous cease-and-desist letter, asking the author to change the cover of his book in future editions, and even offering to contribute to the cost of doing so. Because any infringer with internet access can destroy a brand’s image, a kinder approach can lead to better results, even an endorsement by the infringer, who potentially has his or her own cadre of online followers. The speakers also emphasized the need for understanding one’s adversary and understanding the threat. For instance, when a man created a site called “Get a First Life,” a parody of Linden Labs’ “Second Life,” Linden Labs took an unconventional approach by sending the man a “Permit-and-Proceed” letter, rather than the usual cease-and-desist letter. The letter demonstrated the company’s ability to distinguish between a non-infringing parody and a genuine infringement of its trademark, and quickly spread across the Internet as a positive movement in trademark law.

Here is some language from Linden Lab’s “Permit-and-Proceed” letter:

We do not believe that reasonable people would argue as to whether the website located at http://www.getafirstlife.com/ constitutes parody – it clearly is. Linden Lab is well known among its customers and in the general business community as a company with enlightened and well-informed views regarding intellectual property rights, including the fair use doctrine, open source licensing, and other principles that support creativity and self-expression. We know parody when we see it. Moreover, Linden Lab objects to any implication that it would employ lawyers incapable of distinguishing such obvious parody. Indeed, any competent attorney is well aware that the outcome of sending a cease-and-desist letter regarding a parody is only to draw more attention to such parody, and to invite public scorn and ridicule of the humor-impaired legal counsel. Linden Lab is well-known for having strict hiring standards, including a requirement for having a sense of humor, from which our lawyers receive no exception. In conclusion, your invitation to submit a cease-and-desist letter is hereby rejected.

Intellectual property continues to be a quickly evolving sector of the law. This year’s Intellectual Property Institute was an exciting and informative overview of the past year’s intellectual property activity and trends, and we look forward to see what next year’s Institute has in store for us.