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The Academic Voice Newsletter of the AIPLA Education Committee Fall 2014


The Academic Voice From the Education Committee Chair Together with my CoChair, Mickie Piatt, and the newsletter's Editorin-Chief, Donika Pentcheva, we welcome you to our newlylaunched newsletter, The Academic Voice. Our vision for the newsletter is to provide you with the latest news on pending IP legislation, recent case law, amicus briefs, scholarly articles, and other relevant information for educators and practitioners.

The newsletter is also meant to facilitate information sharing, to highlight members, and to update you on the Education Committee's recent activities and upcoming events. We trust that you will find the information in this newsletter useful and invite you to publish with us in our upcoming editions. Ehab Samuel is Intellectual Property Counsel at Manatt, Phelps & Phillips LLP. He can be reached at esamuel@manatt.com.

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From the Editor-in-Chief It is with great pride that I invite you to peruse the first edition of The Academic Voice, the newsletter of the American Intellectual Property Law Association Education Committee. My vision for the newsletter is that it will be a forum for law professors and others in the legal education community to freely express their thoughts and ideas. An active dialog between practitioners

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and academics will serve both communities, resulting in a healthier and more robust environment for all. By using “Issuu� as our publisher, I hope you will be motivated to share and comment on any part of the publication that inspires you! Donika Pentcheva is a Registered Patent Attorney at Westman, Champlin & Koehler, P.A. and Vice President of the Board of Directors at Merrick, Inc. She can be reached at dpentcheva@wck.com.


The Academic Voice In This Issue

Recent Developments ......................................................................................................................................................4 Adjunct Professor of the Issue ....................................................................................................................................... 5 Question of the Moment ................................................................................................................................................. 6 Recent Publications .......................................................................................................................................................... 7 Full-Time Professor of the Issue .................................................................................................................................... 8 International Professor of the Issue .............................................................................................................................. 9 Upcoming Events .............................................................................................................................................................. 9

Free membership for full-time IP law professors

Access to AIPLA publications & news Writing opportunities Daily IP News via AIPLA Newsstand emails AIPLA Direct Newsletters on legislation and regulatory updates AIPLA Quarterly Journal, Report of the Economic Survey (biannually) AIPLA e-Bulletin on AIPLA Committee activities after each major meeting

Benefits to joining AIPLA

Connect with and access to authors of Seminar and Conference papers

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Participation at Meetings, Seminars and Webinars speaking opportunities discount for full-time IP law professors for attendance at seminars and conferences


The Academic Voice Recent Developments Law Professors File Amicus Brief in Apple v. Samsung Appeal Calling For Apportionment of Profits in Design Patent Damage Awards On May 29, 2014, a group of 27 law professors submitted an amicus brief in support of Samsung Electronics in the pending appeal of the Apple’s judgment for infringement of design patents. Apple, Inc. v. Samsung Electronics Co., Ltd., Case Nos. 2014-1335 and 20141368 (Fed. Cir. 2014). In the appeal, Samsung challenges the damages awarded by the U.S. Dist. Ct. for the Northern District of California for infringement of multiple Apple design patents covering aspects of Apple’s iPhone smartphone. The brief, written by Mark Lemley of Stanford Law School, argues that the district court’s interpretation of the design patent damages provision, 35 U.S.C. § 289, was incorrect. U.S. Dist. Ct. Judge Lucy H. Koh ruled that the measure of damages for infringing a design patent is the infringer’s entire profit from the sale of infringing products. The court rejected Samsung’s arguments that profits should be apportioned, with only profits directly resulting from the patented design features included in the damage award. The professors argued that the CAFC should rule that in design patent cases, the infringer’s profits may be included in damages only when they result from the infringed design. First, the brief argued that a non-apportionment rule does not make sense in light of the role design patent protection plays in modern products. Unlike the design patents common in 1887, when the

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language now found in § 289 was added to the statute, today’s design patents often do not cover the design of an entire product. For example, Apple asserted several patents covering the design of product components, displays, and icons. Also, modern products such as smartphones contain scores of functional features protected by utility patents. For those products, the notion that a single design patent is responsible for the entire profit is untenable. Furthermore, the professors noted that for such products, customers make their purchasing decisions mainly based on functional characteristics of competing products, rather than ornamental features. The brief also argued that § 289 could be construed to require apportionment. Although the statute does not expressly mention apportionment, the professors noted that the extent of damages clearly must be limited by some element of proof. In addition, the second paragraph of § 289, disallowing duplicative damages, refers to the defendant’s profits measure as “the profit made from the infringement.” The professors argued that that phrase could be seen as the source of an apportionment requirement. By Prof. David C. Berry Western Michigan Univ. - Cooley Law School berryd@cooley.edu


The Academic Voice Adjunct Professor of the Issue Professor Donald Cameron

The Adjunct Professor highlighted in this issue of the Education Committee newsletter is Donald M. Cameron who is a partner in the Toronto law firm of Bereskin & Parr LLP where he is a member of the Litigation practice group. Don is also an adjunct professor of law at the University of Toronto, Faculty of Law, and Osgoode Hall Law School at York University, where he has taught patent and trade secret law at both the undergraduate and graduate levels. In addition to his law practice and his teaching, Don has managed to find time to write numerous intellectual property articles produce educational videos in the area of litigation and podcasts on IP law. He is the Editor of the CANADIAN IP BENCHBOOKS, a set of texts on Canadian patent, trademark and copyright law. “Writing and teaching go hand in hand,” Don says. “They both make you stop and look a little deeper into the principles at play and how the law is shifting.” AIPLA is fortunate that Don has also managed to be active with the Education Committee, most recently as the Chair of the Subcommittee on Professors and Adjunct Professors. Don has spearheaded an initiative to begin mapping subjects taught by faculty, both full- and part-time, as the initial step in creating avenues of discussion and exchange with people who are close to each other, but might not have been aware of it. He has also led discussions on the LinkedIn discussion group that the subcommittee began. “The LinkedIn Group is a great way for busy practitioners who are also IP Adjunct Profs to share ideas and resources with each other and with full time Profs.” Don was also an enthusiastic participant in the Committee Expo where he encouraged attendees to the Mid-Winter meeting in Phoenix to become active with the Education Committee. Don sees a lot of potential. “There’s a lot of brainpower in our Sub-Committee and the AIPLA is hoping to draw from it as a resource for speakers, authors for newsletter articles and to use as another route to reach out to the academic community and law students.”

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The Academic Voice Question of the Moment TRADE SECRET LAW—TO FED OR NOT TO FED? On 26 August 2014, 31 law professors sent a letter containing their objections to the proposed bipartisan legislation that is currently pending in both the House and the Senate which addresses federal protection of trade secrets. The Defend Trade Secrets Act of 2014 (S. 2267) and the Trade Secrets Protection Act of 2014 (H.R. 5233) propose, among others, to create a federal civil remedy for theft of trade secrets. AIPLA has supported this legislation which, according to R. Milligan in the 13 Aug 2014 Trading Secrets blog, is gaining momentum and pay be addressed as soon as the upcoming session of Congress. Although the Economic Espionage Act has provided criminal liability for trade secret misappropriation, there has been perennial discussion suggesting that there is a need for a federalization of trade secret law. Neither of the pending bills actually goes that far, creating a federal civil private cause of action, but not a substantive body of trade secret law, instead continuing to rely on the state legislative and common law. It is substantially for that reason that the law professors have opposed the pending legislation. As Professor Christopher Seaman (one of the signers of the letter) sets out in his guest post on Dennis Crouch’s Patently-O blog, one of the primary reasons for the objections is that the legislation would not actually create greater uniformity than already exists under the state laws and there would be a danger that this move would create two parallel systems of substantive law, one federal and one state. In addition to those two objections, the letter lists the following: 1.

The acts are imbalanced and could be used for anti-competitive purposes.

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2. The acts increase the risk of accidental disclosure of trade secrets. 3. The acts have potential ancillary negative impacts on access to information, collaboration among businesses and mobility of labor. Prof. Seaman also voices the concern that a federalization of trade secre law may undermining the disclosure of patentable inventions by providing a stronger alternative to turn to trade secrecy for protection rather than the patent system. His full paper is forthcoming in the Virginia Law Review and is currently available on the Social Science Research Network (ssrn.com). The recent increase in the use of the EEA as well as the incidence of trade secrets litigation has brought this subject to the fore and after many years of debate within the Trade Secret Committee of AIPLA, there is greater support of a federalization of trade secret law than in the past. WHAT DO YOU THINK? DISCUSSION . . .

JOIN THE

A discussion has begun on the LinkedIn Group page for the Law School Professor Subcommittee of the AIPLA Education Committee which you can join (simply request to join the group if you have not already become a member). We will convey the feeling of the group and the points made to the AIPLA Trade Secret Committee going forward. This is your opportunity to actively participate in an discussion and debate that is important today. By Mickie A. Piatt Vice Chair, AIPLA Education Committee Deputy Director, Program in Intellectual Property Law & Associate Professor of Law Chicago-Kent College of Law, IIT


The Academic Voice Recent Publications Considering Trademark and Speech Rights through the Lens of Regulating Tobacco My primary area of research is trademark law, although I teach all areas of intellectual property law most recently offering a course in design law. Within trademark law, I am fascinated by the issues in international and comparative trademark law and have recently written about exhaustion, territoriality, domain names and geographical indications. I also have an ongoing project of explaining the history and significance of the little-known Pan-American Convention on Trademarks. But when a human rights or public interest issue emerges in trademark law, I am drawn to it. The disparagement cases and the Australian plain packaging dispute both have this significance for me. The R*dsk*ns cases have caused me to write a law review article, a book chapter and several op-eds and blog posts. And although I hope to explore the international trademark law dimensions of plain packaging legislation, I took this opportunity to think about it within the context of regulating tobacco trademarks under U.S. law. I was asked to speak on a panel about speech and trademarks at AIPLA’s 2013 Annual Meeting and thought it would be fun to contrast the protection of speech rights in trademark law with the protection of tobacco trademarks in speech law. Afterward, I decided to collaborate with a former student, Kavita DeVaney, to further develop the thesis. The paper we have written is titled “Considering Trademark and Speech Rights through the Lens of Regulating Tobacco.� We note that many tobacco company trademarks, such as MARLBORO, are extremely valuable.

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But valuable trademarks are often vulnerable both to copyists and to parodists. Tobacco trademarks face the additional vulnerability of onerous public health regulations, which can limit their appearance and use. When tobacco companies challenge these health regulations they do so on the grounds that the regulations violate their speech rights. The law that is applied in these challenges is well developed, clear and predictable. When tobacco companies challenge third-party uses of their marks, the speech rights involved are dealt with in a distinctly different manner. Under trademark law there is an assortment of approaches to protecting speech therefore making it difficult to predict outcomes. How can the non-false use of a trademark be so robustly protected as speech in one case and so slackly protected in another? Juxtaposing these areas of law through the litigation strategies of one industry reveals curious presuppositions about speech in both laws. By Christine Haight Farley. Ms. Farley is a Professor of Law at American University Washington College of Law. Professor Farley served as Associate Dean for Faculty and Academic Affairs from 2007 to 2011 and as CoDirector of the Program on Information Justice and Intellectual Property from 2005 to 2009. She is the author of numerous articles on intellectual property law and a forthcoming casebook on international trademark law. She has recently been selected as a Fulbright Senior Specialist for intellectual property law.


The Academic Voice Full-Time Professor of the Issue Professor Graeme Dinwoodie Graeme Dinwoodie, Professor of Intellectual Property and Information Technology Law at the University of Oxford, is the featured faculty member for the Education Newsletter in this inaugural issue. Prof. Dinwoodie is a long-time member of AIPLA and his background, scholarship, and activities personify the current recognition of the internationalization of intellectual property today. As Prof. Dinwoodie notes, “twenty years ago international intellectual property law was seen by many as a niche subject, but it now part of the core program in most leading schools. This is seen not only with courses in international and comparative aspects of IP, but in the discussions than take place in core domestic courses: the international dimension structures the development of domestic law.” Prof. Dinwoodie was previously professor of law and director of the Program in IP Law at Chicago-Kent College of Law and before that taught at the University of Cincinnati College of Law and as a visiting professor at the University of Pennsylvania School of Law. He has also held a Chair in Intellectual Property Law at Queen Mary College, University of London. He has received numerous awards and recognition for both his teaching and his scholarship. Early in his career he was an associate with Sullivan and Cromwell in New York. He holds a First Class Honors LL.B. degree from the University of Glasgow, and LL.M. from Harvard Law School, and a J.S.D. from Columbia Law School.

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The emphasis on the international and comparative aspects of IP is seen in his scholarship which includes INTERNATIONAL INTELLECTUAL PROPERTY LAW AND POLICY (2d ed. 2008) (with Hennessey, Perlmutter and Austin) as well as in his numerous professional activities. For example, he has served as a consultant to the World Intellectual Property Organization on matters of private international law, an advisor to the American Law Institute Project on Principles of Jurisdiction and Recognition of Judgments in Intellectual Property Matters, to name a few of his many engagements. Prof. Dinwoodie is currently the Past-President of the International Association for the Advancement of Teaching and Research in Intellectual Property (ATRIP), and his role as ATRIP President over the past two years gave him the opportunity to renew contacts in Geneva that were first established when he served on the AIPLA Trademark Treaties and International Law Committee. Prof. Dinwoodie has been happy to see the current emphasis that AIPLA has placed on international activities and policies and the interactions with members of the IP community that have been facilitated by AIPLA and particularly by the relationship with AIPPI. He was pleased to see the Education Committee recognizing the trends towards internationalization of IP: “Policymakers and practitioners – especially AIPLA – have long recognized the importance of viewing our field through an international lens, and it is heartening to see the Education Committee highlight this aspect of the discipline, because it is equally important for scholars and educators.”


The Academic Voice International Professor of the Issue Professor Juan Rodrigo Pimentel Juan Rodrigo Pimentel is a part-time graduate-level Intellectual Property Law Professor at the Panamerican University, focusing to apply patent, trademark and copyright in real life business strategies. The topic is IP (patents, trademarks, copyrights), include basics either for Mexico and internationally via the Patent Prosecution Highways, the Patent Cooperation Treaty Office, the U.S. Patent and Trademark Office, the European Patent Office, and the Madrid Protocol System. He has also authored case studies to identify how to apply these figures in the real life business. He recently published an article covering patent metrics. Professor Pimentel is also the head of the Patent Prosecution Department at Arochi & Lindner’s office in Mexico City. He has over ten years of experience in the intellectual property field. He consults clients on patent project management, product development, patent portfolio management, technology transfer and patent metrics.

Upcoming Events 

Professor Adam Mossoff from George Mason University School of Law, Arlington, VA, will moderate a panel during Track 1 of the 2014 AIPLA Annual Meeting in Washington, D.C. on Friday, October 24, 2014, from 2:00 p.m. to 3:30 p.m. on the topic of “Litigation: Reliance on Invalidity Opinions in Litigation; The Contributions of NPEs and PAEs to Patent Litigation.”

Professor Wendy J. Gordon from Boston University School of Law, Boston, MA, will also speak during the 2014 AIPLA Annual Meeting on Friday, October 24, 2014, from 3:30 p.m. to 5:30 p.m. on “Separability Analysis in Design Copyrights – Time for a Permanent Change.”

Please join the AIPLA Education Committee at the first inaugural Law School Alumni Reception at the 2014 Annual Meeting! The Reception will take place on October 24, 2014 from 6:30 p.m. to 7:30 p.m. Please see the last page of the Newsletter for more information.

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AIPLA’s Education Committee presents: The First Inaugural

Law School Alumni Reception at the 2014 Annual Meeting October 24

6:30–7:30 pm

The reception provides an opportunity for

practitioners

IP

to reconnect with fellow alums

and students from various Law Schools, as they mingle and network at AIPLA’s Annual Meeting and continue development of their respective alumni network.

It’s an IP Reunion!*

reconnect. mingle. network.

*While registration for the Annual Meeting is not required for alumni, law professors, or law students of sponsoring law schools to attend the Reception, it is strongly encouraged. Annual Meeting registration costs for law professors and law students are significantly discounted to ensure cost is not a barrier to attendance, and that these groups are able to receive the full benefit of AIPLA’s educational programs.

donate.

Sponsorship Level: Benefits: $1,000

$500

• • • • • • •

One 6-foot table to display materials representing your school Sponsor name in Annual Meeting Program and event signage Sponsor Ribbons Sponsorship listing on the AIPLA website Recognition in Annual Meeting eBulletin (online circulation 15,000) Recognition at Thursday Luncheon Ability to send email invitation to alumni & students

Shared 6-foot table to display materials representing your school with at least one other school Sponsor name in Annual Meeting Program and event signage Sponsor Ribbons Sponsorship listing on the AIPLA website Recognition in Annual Meeting eBulletin (online circulation 15,000) Recognition at Thursday Luncheon Ability to send email invitation to alumni & students

• • • • • •

• (list must be provided to AIPLA)

• (list must be provided to AIPLA)

Visit www.aipla.org/learningcenter/AM2014/pages for more information

The Academic Voice - Fall 2014 Issue  

A publication of the Education Committee of the American Intellectual Property Law Association (AIPLA).

The Academic Voice - Fall 2014 Issue  

A publication of the Education Committee of the American Intellectual Property Law Association (AIPLA).

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