The Federal Lawyer: Spring 2023

The Glass Cage: Unleashing America’s Underrepresented

EDITORIAL BOARD

Editor in Chief

Andrew J. Doyle doyle_andrew@msn.com

Associate Editor

James W. Satola jsatola@roadrunner.com

Managing Editor

Heather Rigby (240) 404-6488 social@fedbar.org

Book Review Editors

Elizabeth Kelley

Peter M. Mansfield

Judicial Profile Editors

Hope Forsyth

Hon. Karoline Mehalchick

Articles Editors

Kristine Adams-Urbinati

Anna Archer

Sara L. Gold

Niles Illich

Jon Jay Lieberman

Bruce A. McKenna

Jeffrie Boysen Lewis

Amanda Thom

Stewart Michael Young

Columns Editor

Ira Cohen

Senior Proof Editor

Ellen M. Denum

Proof Editors

Tamar Rebecca Birckhead

John Black

Leonid Feller

Reid Jones

Michelle Quist

Kirsten Samantha Ronholt

Benjamin R. Syroka

The Federal Lawyer (ISSN: 1080-675X) is published quarterly, four times per year by the Federal Bar Association, 1220 N. Fillmore St., Ste. 444, Arlington, VA, 22201 Tel, (571) 481-9126, Fax (571) 481-9090, Email: social@fedbar.org.

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Editorial Policy: The views published in The Federal Lawyer do not necessarily imply approval by the FBA or any agency or firm with which the authors are associated. All copyrights held by the FBA unless otherwise noted by the author. The appearance of advertisements and new product or service information in The Federal Lawyer does not constitute endorsement of such products or services by the FBA. Manuscripts: The Federal Lawyer accepts unsolicited manuscripts, which, if accepted for publication, are subject to editing. Manuscripts must be original and should appeal to a diverse audience. Visit www.fedbar.org/ tflwritersguidelines for writers guidelines.

COLUMNS

3 President’s Message

FBA Takes Its Priorities to DC

By Matthew C. Moschella

5 Beltway Bulletin

Who Cares What You Think?

By Cissy Jackson and Dan Renberg

8 At Sidebar Pro Bono Volunteering: Federal Government Attorneys Can and Do Make a Difference

By Andrew J. Doyle

12 From the Foundation Hail, Fellow, Well Met

By Aaron Bulloff

13 Bankruptcy Brief When Does Fraud Not Require Intent?

By Judge Craig Gargotta

17 Thought Sponsor Climate Change is Forcing Indigenous Communities to Relocate With Little Assistance From the Federal Government—But Congress Can Make It Easier

By Geoff Strommer

BOOK REVIEWS

62 The Local: A Legal Thriller

Reviewed by Conor Craft

63 Citizen Justice: The Environmental Legacy of William O. Douglas Public Advocate and Conservation Champion

Reviewed by Gustavo A. Gelpí

64 Shaping the Bar: The Future of Attorney Licensing

Reviewed by Marsha Griggs

65 Alan Ellis’ Federal Prison Guidebook (Revision 6)

Reviewed by Elizabeth Kelley

66 The Boys From Biloxi

Reviewed by Peter Mansfield

DEPARTMENT

69 Supreme Court Previews

1220 N. Fillmore St., Ste. 444 Arlington, VA 22201

Ph: (571) 481-9100 • F: (571) 481-9090 fba@fedbar.org • www.fedbar.org

BOARD OF DIRECTORS

President • Matthew C. Moschella mcmoschella@sherin.com

President-Elect • Jonathan O. Hafen jhafen@parrbrown.com

Treasurer • Glen R. McMurry gmcmurry@taftlaw.com

Hon. Alison S. Bachus bachusa@superiorcourt.maricopa.gov

Ernest T. Bartol etbartol@bartollaw.com

Bonnie S. Greenberg bonnie_baltimore@yahoo.com

Anna W. Howard anna.howard@uga.edu

Joseph S. Leventhal joseph.leventhal@dinsmore.com

Adine S. Momoh adine.momoh@stinson.com

Nancy Morisseau nancy.morisseau@nationalgrid.com

Michelle M. Pettit michelle.pettit@usdoj.gov

Rachel V. Rose rvrose@rvrose.com

Kelly T. Scalise ktscalise@liskow.com

Michael S. Vitale mvitale@bakerlaw.com

Ex Officio Members

Amy E. Boyle aboyle@mjsbjustice.com

Anh Le Kremer akremer@nystromcounseling.com

Scott P. Lopez splopez@lawson-weitzen.com

Hon. Karoline Mehalchick karoline_mehalchick@pamd.uscourts.gov

Nathan A. Olin nate@oliplaw.com

NATIONAL STAFF

Executive Director Stacy King sking@fedbar.org

Deputy Director R. Yvonne Cockram ycockram@fedbar.org

Director of Membership and Chapters Dominick Alcid dalcid@fedbar.org

Managing Editor Heather Rigby social@fedbar.org

Outreach and Foundation Manager Cathy Barrie cbarrie@fedbar.org

Program Coordinator, Membership & Events

Marisa Beam mbeam@fedbar.org

Membership Coordinator Clarise Diggs cdiggs@fedbar.org

Program Coordinator Daniel Hamilton dhamilton@fedbar.org

Director of Sections and Divisions

Mike McCarthy mmccarthy@fedbar.org

Marketing Director Zac Crisco social@fedbar.org

Senior Conference Manager Caitlin Rider crider@fedbar.org

Leadership Support & Board Specialist Shaniece Rigans srigans@fedbar.org

Program Coordinator, Conference & Webinars

Nikki Toledo mtoledo@fedbar.org

Administrative Coordinator Kim Wonson kwonson@fedbar.org

Database & Technology Administrator Miles Woolever mwoolever@fedbar.org

VICE PRESIDENTS FOR THE CIRCUITS

First Circuit Scott P. Lopez

Second Circuit

Olivera Medenica

Dina T. Miller

Third Circuit

Christian T. Haugsby

Fourth Circuit

Kacy L. Hunt

Fifth Circuit

Mark L. Barbre

Paul D. Barkhurst

Sixth Circuit

Jade K. Smarda

Seventh Circuit

Melissa Schoenbein

Eighth Circuit

David A. Goodwin

Ninth Circuit

Jody A. Corrales

Darrel J. Gardner

Tenth Circuit

Kristen R. Angelos

Kate Simpson

Eleventh Circuit

Lauren L. Millcarek

Oliver A. Ruiz III

D.C. Circuit

Patricia D. Ryan

SECTION AND DIVISION CHAIRS

Chair, Sections and Divisions

Council

Nathan A. Olin

Admiralty Law

Michelle Otero Valdes

Alternative Dispute Resolution

James N. Downey

Antitrust and Trade Regulations

Robert E. Hauberg Jr.

Banking Law

John Court

Bankruptcy Law

Angela Sheffler Abreu

Civil Rights Law

Kyle J. Kaiser

Corporate and Association Counsel

Lawson E. Fite

Criminal Law

Madison Bader

Environment, Energy & Natural Resources

Vacant

Federal Career Service

Dina T. Miller

Federal Litigation

Andrea L. Marconi

Government Contracts

Vacant

Health Law

Thomas S. Schneidau

Immigration Law

Kate Melloy Goettel

Indian Law

Helen B. Padilla

Intellectual Property Law

Oliver Alan Ruiz

International Law

Bijan Kasraie

Judiciary

Hon. Karoline Mehalchick

Labor and Employment Law

Mary Augusta Smith

Law Student

Jenifer Tomchak

LGBTQ+ Law

Mario Choi

Qui Tam

Megan Mocho

Securities Law

Vacant

Senior Lawyers

Albert Lionel Jacobs Jr.

Social Security Law

Jerrold A. Sulcove

State and Local Government Relations

Vacant

Taxation

Daniel Strickland

Transportation and

Transportation Security Law

Sarah Bell Nural

Veterans and Military Law

Frank J. McGovern

Younger Lawyers

Amy E. Boyle

FBA Takes Its Priorities to DC

By Matthew C. Moschella

Matthew C. Moschella

is chair of the Litigation Department at Sherin and Lodgen and a partner in the firm’s Litigation and Employment Departments. He represents companies and individuals in a wide variety of civil matters in state and federal courts across the country as well as in arbitration proceedings. Moschella also represents employers concerning complaints filed against them with state and federal administrative agencies. In addition to representing clients in various types of civil litigation, he counsels clients in a wide variety of industries on employment risk management issues. Moschella is also an adjunct professor at New England Law Boston, where he teaches contract drafting. Following law school, he was a law clerk to Hon. Judith Gail Dein, U.S. magistrate judge, U.S. District Court for the District of Massachusetts.

On March 23, 2023—thanks to the extensive efforts of our Government Relations Committee (led by Chair Ben Robinson) and our outside Government Relations Counsel (Dan Renberg, Cissy Jackson, and their team at ArentFox Schiff), FBA had an incredibly productive Capitol Hill Day. This was the first in-person Capital Hill Day since 2019. Collectively, more than 80 FBA members from numerous states had approximately 150 meetings with various senators, representatives, and members of their staffs. The meetings focused on the FBA’s 2023 legislative policy priorities, which are summarized below.

1. Judicial Security. The FBA commends Congress for passing the Daniel Anderl Judicial Security and Privacy Act last year (which was subsequently signed into law by President Biden). The act will protect federal judges and their families by making it easier for them to have personally identifiable information (PII) removed from the internet. Our democracy depends on judges who are free to make decisions without fear of retribution. Members of the federal judiciary, however, have been exposed to an increased number of personal threats in connection with their roles, rising from 926 in 2015 to 4,449 in 2019.

Now it is essential for Congress to appropriate the modest funding authorized by this new law so that the government can provide the critical protections that the act envisioned. Specifically, the FBA is urging Congress to appropriate funds for the attorney general to make grants to states and local governments that operate a database or registry that contains covered information so they can respond to judicial requests for PII to be removed. Further, Congress should appropriate funds to expand the capabilities of the Office of Protective Intelligence of the U.S. Marshals Judicial Security Division to ensure that it can better perform, anticipate, and deter threats to the federal judiciary.

The FBA encourages members of Congress to submit a request to the Appropriations Committee for the funds needed to implement the act, either via a joint letter or individually.

2. Establishing New Federal Judgeships. The FBA supports legislation to relieve the country’s severely overburdened federal courts by increasing the number of federal judgeships. The federal courts are facing enormous caseloads, and the increasing backlog is adversely impacting both access to, and the administration of, justice. Congress last enacted a comprehensive bill to increase the number of appellate and district judgeships in 1990, and judicial workloads have increased substantially since then. The Administrative Office of U.S. Courts recently released its report and recommended adding 66 district court judges and two court of appeals judges. Senators Coons and Young and Representative Issa introduced bills last Congress, and our understanding is that they will be reintroducing their bills soon. Their bipartisan JUDGES Act would add new federal district judgeships in two batches: half in 2025 and half in 2029. This is a creative solution designed to overcome the objections of adding judgeships that will be immediately filled by the party then in control. In addition, there may be a reintroduction of a more robust and immediate proposal by Representative Hank Johnson. The FBA urges members of Congress to consider cosponsoring legislation to increase the number of federal judge-

Florida delegation: Oliver Ruiz, Michelle Otero Valdes, Ben Robinson, Tal Lifshitz, Jeremy Bloor, Ronika Carter, Mike Vitale.

ships and to let Judiciary Committee leaders know that this policy issue needs to be a higher priority for Congress this year.

3. Judiciary Funding. The FBA is committed to supporting the annual budget for the federal judiciary, which has submitted a total request of $9.1 billion for Fiscal Year 2024 for Article III courts. This includes $8.3 billion in discretionary appropriations and $796 million in mandatory appropriations. The funds are used for salaries and expenses for the entire judicial branch, the cost of space, retirement, court security, including hardening of facilities, and IT. The FBA is encouraging members of Congress to ask the Appropriations Committee to provide the Judiciary’s requested amount.

4. Creation of an Independent Immigration Court. The FBA has spent years helping draft model legislation that would establish an independent Article I Immigration Court. The FBA is working with Representative Lofgren and Senator Gillibrand and others to introduce this legislation in the near future, hopefully on a bipartisan basis. As background, immigration judges are part of the U.S. Department of Justice, and there is a case backlog of 1.6 million immigration cases. The bill would use the power of Congress under Article I to create a new court, just as it created the U.S. Tax Court and the Court of Appeals for Veterans Claims when these courts were removed from Treasury and the Department of Veterans Affairs, respectively. An independent immigration court would not set immigration policy—that would continue to be the responsibility of the Executive Branch. Rather, the immigration judges would just apply law and regulations—whatever they are—to individual cases.

The FBA has worked alongside stakeholders on this initiative, including the National Association of Immigration Judges and the American Immigration Lawyers Association. More than 120 prestigious legal organizations support this proposal. Establishing an Article I immigration court would provide transparency to the public regarding removal proceedings, judicial conduct, and, if necessary, discipline. Moreover, judges would be allowed to manage their caseloads without the undue political pressure that exists in the current system. Further, locating immigration courts in a political branch of government undermines Congress’ carefully designed immigration laws and the current case backlog is the direct result of politicization of these courts.

The FBA is encouraging members of Congress, once Representative Lofgren and Senator Gillibrand circulate a draft bill, to cosponsor it or otherwise support the bill as the House and Senate consider it.

Although we had an incredibly productive day on Capital Hill, the FBA’s work on these initiatives is not even close to done. Please continue to contact your legislators about supporting these initiatives, and also look out for the FBA’s frequent action emails about specific steps to take. 

Top: Virginia delegation with Rep. Ben Cline: Betty Stevens, Rep. Cline, and Andy Clark. Bottom: Former Senator Doug Jones, Senator Sheldon Whitehouse, and FBA President Matt Moschella at the CHD kickoff breakfast. Sen. Whitehouse gave remarks before the 85 FBA advocates began their day on the Hill.

Who Cares What You Think?

By Cissy Jackson and Dan Renberg

Your elected representatives do.

When most Americans think of the First Amendment to the U.S. Constitution, they think of freedom of speech, freedom of religion, and perhaps freedom of the press. They often forget that the First Amendment also protects “the right of the people… to petition the Government for a redress of grievances,” though it is an ancient and important privilege dating back to the Magna Carta in 1215. Writing for the majority in United Mine Workers of America v. Illinois State Bar Association, 1 Justice Hugo Black began his analysis by describing the right to petition as “among the most precious liberties safeguarded by the Bill of Rights.” Indeed, the right of citizens to ask their government to solve a problem or correct an injustice is fundamental to the concept of representative government.

most important aspect is engaging in a dialogue. Eliciting questions or concerns and finding opportunities to follow up allow you to reinforce the points in your initial presentation.

Cissy Jackson served as counsel and national security adviser to Sen. Doug Jones, D-Ala. before joining ArentFox Schiff. She also has extensive experience in the private practice of law, handling white collar, False Claims Act, grand jury investigation, and commercial property tax appeal matters. Jackson has represented multinational corporations, small businesses, and individuals in high-stakes civil and criminal litigation. Dan Renberg, a former senior Senate staff member and presidential appointee, has helped numerous clients since joining ArentFox Schiff as a partner in 2003. Recognized as a top federal lobbyist, one of Renberg’s advocacy efforts was included as one of the “Top 10 Lobbying Triumphs of 2009” by The Hill, and he has been listed annually since 2014 in The Best Lawyers in America.

Of course, a petition derives significance from its response, but the response can take many forms and can evolve over time. Exercising the right to petition can highlight an issue and start a public conversation that can lead to a variety of outcomes not limited to legislation or regulation.

Members of Congress pay close attention to the concerns brought to their attention by their constituents. Many, if not most, offices keep tallies of emails, calls, letters, and meetings, sorted by issue and further broken down by those in favor and those against. This information is of the utmost interest to the members when they are deciding whether to vote for or against a particular bill, resolution, or nominee, but it also is an important avenue for bringing a new issue to the attention of the members, who may decide to investigate, conduct hearings, produce reports, write letters, make speeches, publish op-eds, and possibly originate legislation on that topic.

According to a survey of congressional staff,2 direct constituent contacts are by far the most influential. The act of traveling to Washington underscores the significance of the issue to the constituent, but traveling to Washington is not an option for most Americans. Virtual meetings have become normal and can be very effective, not to mention more efficient, for all parties. The most important aspect of any communication with a member of Congress or their staff—whether it’s in person, on Zoom, or by email—is putting the issue in a personal context. The second

Many of the thousands of bills filed each year are highly controversial and partisan, but the FBA does not wade into those policy debates. Since the FBA is nonpartisan, and its mission is to improve federal jurisprudence for all Americans, the role of its members in advocacy is essential, especially since not as many individuals and organizations often lobby on these issues. Armed with facts, your job is to demonstrate that the problem is real, it is significant enough to warrant congressional attention, and the solution you propose is the best. There were 17,812 measures introduced during the last Congress, but only 1,228 bills—7%—became law.3 Vigorously exercising your First Amendment right to petition is critical to, and is very effective in, elevating your issue to the top of the stack.

Our ArentFox Schiff colleague, retired North Dakota Senator Byron Dorgan, tells a story that beautifully illustrates the power of grassroots advocacy:

If anyone ever wonders whether grassroots lobbying works, they should talk to Brenda Neubauer from Bismarck, North Dakota.

I was holding a town meeting one evening to hear from my constituents. The nearly 200 people at the meeting offered opinions on a lot of things that concerned them.

Toward the end of the meeting, a young woman near the back of the room stood up and said, “Mr. Senator, I am going to tell you a story about my son, and I’m going to tell you what I want you to do to help him.”

That woman was Brenda Neubauer. I didn’t know her, but I listened carefully to her story about her son, Jack. She told me that Jack had a hemophiliac blood disease. The medicine he was taking to manage this horrible disease cost $30,000 per month. She said she had a good health insurance plan that was paying for the

medicine—until it stopped after reaching a lifetime limit of $1 million when he was 12 years old. She said she had no idea that her insurance policy had a lifetime limit of $1 million.

Then she described the danger to her son’s health if he could not get the medicine he needed.

“Senator Dorgan,” she said, “You need to fix this! You need to help my son and so many other Americans who have purchased health insurance and mistakenly believed they were fully insured.”

I left the town meeting that night thinking about this mother who was standing in a crowd talking about her son and his health. Frankly, I was surprised to learn that there were many health insurance policies that had limits that most policy holders were unaware of.

Following that meeting, Brenda Neubauer began showing up at nearly every event I was attending in my state, and she continued to tell the story about her son. I began to understand that there were many thousands of families like hers in our country who were having to file bankruptcy because their

insurance policies were not covering the cost of treatment for their diseases.

I decided I would work to fix this issue. I met with Brenda and others, and I decided I was going to insist that new health care legislation the Congress was writing should eliminate the lifetime limits on health insurance policies. When the Affordable Care Act was finally enacted, it included a provision I added to eliminate the lifetime limits, and the cost of fixing this problem, spread over the costs of all policies, was insignificant. I was happy to have accomplished that, but I know the real reason it happened was because a mother stood up at a town hall meeting and asked for help with her problem. And she never quit until it was done. 

Endnotes

1389 U.S. 217, 222 (1967).

2Citizen-Centric Advocacy: The Untapped Power of Constituent Engagement, Cong. Mgmt. Found., 2017. https://www. congressfoundation.org/storage/documents/CMF_Pubs/cmfcitizen-centric-advocacy.pdf.

3 "Statistics and Historical Comparison." https://www.govtrack.us/ congress/bills/statistics.

INSURANCE TAX SEMINAR

June 1-2, 2023

JW Marriott • Washington, D.C.

A Dialogue with Government Personnel on Insurance Issue s

This year’s in-person seminar will feature topical tax discussions between industry tax professionals, tax advisors, consultants, and government tax professionals.

Attendees will get the latest tax news on IRS guidance and other developments, and hear real-time commentary and perspectives from numerous industry tax specialists. Seminar panels have been crafted to cover a range of viewpoints on the latest insurance company, insurance product, international, and other relevant and timely tax topics.

Co-Hosted by the Section on Taxation

Registration Now Open!

Visit: https://www.fedbar.org/event/instax23/

Follow the FBA:

Pro Bono Volunteering: Federal Government Attorneys Can and Do Make a Difference

By Andrew J. Doyle

“As early as the 1970’s, efforts have been made to encourage federal government attorneys to engage in pro bono work. Perceived conflicts of interest and other obstacles have been slowly removed or refined by each Administration to facilitate attorneys’ involvement in this professional duty.”1 To better understand more recent efforts to promote federal government attorneys’ pro bono engagement―and to demystify volunteering for current or prospective federal government attorneys―I interviewed Laura Klein, the Pro Bono Program Manager of the United States Department of Justice’s (DOJ) Office for Access to Justice (ATJ).

Q: In a nutshell, what is the mission of ATJ pertaining to pro bono legal services, and how do you and the Pro Bono Program go about fulfilling it?

One of the guiding principles of the Department of Justice’s newly re-established Office for Access to Justice is increasing access to legal assistance for all. Expanding pro bono legal services is a key tool in this pursuit. The Federal Government Pro Bono Program, which has been led by DOJ since the 1990’s, fits perfectly into ATJ’s mission and therefore was moved there in 2022. In the short time that the Pro Bono Program has been a part of ATJ, it has more than doubled its resources and has new support for expansion to involve more federal government attorneys than ever before. Perhaps the most exciting news is that ATJ has hired an additional attorney to manage the Pro Bono Program. With this new support, the Pro Bono Program is poised to launch branches in more cities around the country and to explore innovative tools and policies which will make it easier for federal government attorneys to engage in pro bono activity.

Q: Can you comment generally on the state of pro bono in the United States? How dire are the needs?

The need for pro bono legal assistance in our country cannot be overstated. The numbers are shocking. The Legal Services Corporation’s most recent report announced that 92% of low-income Americans’ legal

needs go unmet every year.2 Without access to legal information and assistance, people may be evicted from their homes, lose custody of their children, face domestic violence, are harassed by creditors, and more, all without knowing their rights.

Q: While there are thousands of federal government attorneys throughout the United States, they are but a fraction of the bar at large. How much difference can federal government attorneys really make?

Federal government attorneys can make an enormous difference both on a large and small scale. If thousands of attorneys who are not currently doing pro bono work started to engage, it would be very impactful for the thousands of people receiving their assistance. While we do focus on increasing actual numbers of volunteers and reaching as many people as possible, it is not just about volume. Each case is important, and the assistance to one person which saves them from eviction or provides a safe and stable home for a child is the essence of pro bono assistance. When someone receives legal assistance, it increases their odds for a better outcome and helps to restore

Andrew J. Doyle is the Editor in Chief of The Federal Lawyer. He practices law with the U.S. Department of Justice’s Environment & Natural Resources Division. He writes (and volunteers for pro bono work) in his personal capacity.

their faith in our system as a whole. Every volunteer who contributes to that effort makes a tremendous difference.

Q: What skills can federal government attorneys sharpen by providing pro bono services?

Pro bono work makes us better attorneys by allowing us to expand our skill set. Whether it is by learning a new subject matter, like housing or family law, or practicing new skills, like interviewing clients or drafting wills, we have the opportunity to develop professionally. We have access to the expertise of the legal services organizations which provide training and mentoring, giving us the chance to break out of our everyday legal routine with the benefit of guidance and advice. Beyond our legal skills, pro bono work gives us a window into our own communities, giving us a unique opportunity to meet people outside of our daily circles. In addition to the clients who we help, we meet other attorneys in our legal community and gain exposure to organizations and services we might not otherwise find.

Q: In terms of internal processes, is it cumbersome for federal government attorneys to obtain approval to provide pro bono legal services in their personal capacity?

While the process varies from agency to agency, most agencies have created a straightforward process for internal approval. It usually involves approval from the attorney’s supervisor and/or ethics officer. Most agencies have a pro bono coordinator who can help facilitate the process as well. Getting approval is a safeguard to be sure attorneys are not engaging in work which will create a conflict of interest with their federal employment, so it benefits both the volunteer and the agency.

Q: How does it work if some volunteering can only be done during business hours (e.g., court hearings)?

It is important to recognize that pro bono work is done in an attorney’s individual capacity, not their official capacity as a federal employee. Therefore, the work should generally be done on the attorney’s personal time. There are many pro bono opportunities which do not interfere with the regular workday. However, there are some situations where that isn’t possible, like court appearances. Volunteers have a few options, depending on their agencies’ pro bono policies. Over 20 agencies have policies which allow for administrative leave for pro bono activity which cannot be accomplished outside of business hours. For example, the Departments of Justice and Labor allow for 30 hours of administrative leave per year and the Departments of Homeland Security and Energy allow for 40 hours.

Q: Are there pro bono volunteer opportunities for federal government attorneys regardless of what type of law they practice?

Absolutely. It does not matter what type of law an attorney practices for the government. We can volunteer at legal clinics, handle litigation, assist with transactional matters, draft wills, and more. Our attorneys assist with housing, family law, employment, consumer debt, domestic violence, and many other issues. As I mentioned earlier, the legal services organizations provide training and mentoring so that volunteers can provide competent advice outside of their usual area of expertise.

The only restrictions on the type of pro bono work a federal government attorney can do involve conflicts of interest. We cannot engage in any pro bono activity in which the federal government has a direct and substantial interest pursuant to 18 U.S.C. § 205. In short, if a federal agency is involved in a matter, our volunteers should not provide assistance related to that matter. Examples of areas of law

which our volunteers should avoid include immigration, federal public benefits such as Social Security and Medicare, federal tax matters, and veterans’ benefits. Additionally, agencies have their own supplemental regulations that restrict providing assistance in areas specifically related to that agency’s work. For example, Department of Justice employees are prohibited from providing assistance on criminal matters, whether federal, state, or local. 5 C.F.R. § 3801.106. Therefore, while an attorney at the Department of Housing and Urban Development can assist with a criminal issue like expungement, a DOJ attorney cannot. These are just a few examples of conflicts. It is important that any federal employee seeking to do pro bono work contact their agency pro bono coordinator and/or ethics office for guidance before starting any pro bono project.

Q: During the COVID-19 pandemic, there have been opportunities to volunteer remotely. Do you expect that to continue?

The development of remote legal services and pro bono opportunities during the pandemic has made it easier for attorneys to volunteer and for some clients to access assistance, so I do think they will continue in some form. However, it is far from a settled issue. First, remote services are not always easier for pro bono clients. If a client lacks access to technology, they should not be shut out of services. Second, during the pandemic, courts held hearings remotely and made it very easy for pro bono volunteers to represent clients. Many courts now have returned to in-person evidentiary hearings, although some have kept status conferences and other appearances remote. Similarly, many pro bono clinics became remote during the pandemic and have remained that way, but others are now returning to in-person services to be sure clients have access even without technology. As the courts and legal services organizations experiment and explore these options, we will continue to see a mix of in-person and remote pro bono opportunities.

Q: The District of Columbia Court of Appeals conditionally allows federal government (and other) attorneys who are licensed elsewhere to provide pro bono legal services in D.C. under the supervision of a D.C.-licensed attorney.3 Do many states have similar rules?

Yes, other states have similar rules which allow out-of-state attorneys to do pro bono work and they, like D.C. Court of Appeals Rule 49, have allowed many attorneys to do pro bono work and many clients to get help who would otherwise have not. In D.C. alone, hundreds of clients get help from attorneys licensed in other states every year. Currently, Arizona, Colorado, Illinois, Maryland, New Jersey, and Texas have such rules. Compliance procedures vary in each jurisdiction, but they are all fairly simple. The Federal Government Pro Bono Program has information about each rule and can provide guidance to interested attorneys.

Q: In the absence of such a policy, do you have any advice for federal government attorneys who find themselves in a state or other jurisdiction that does not have a policy like D.C.’s? Can it still be feasible to provide pro bono legal services in such locations?

For attorneys who are not licensed where they are practicing, and have no exception like D.C.’s rule, their pro bono options will be more limited. They can partner with an attorney who is licensed in the jurisdiction and provide behind-the-scenes assistance to a client. They can volunteer for law-related education programs that need attorneys, such as Street Law, mock trial, and moot court programs. They may also be able to volunteer remotely in the state where they

are licensed. Before doing so, they need to check on the rules of the jurisdiction where they live to be sure that providing the remote assistance will not qualify as the unauthorized practice of law in that state even though the advice is being provided out of state.

Q: What would you say to a federal government attorney who is interested in volunteering but hesitates because of the time commitment or just a general fear of the unknown?

I encourage everyone to give it a try. For those with limited time, we have a wide range of opportunities, including short-term commitments, which only take a few hours. Many legal clinics are during lunch, an evening, or a weekend day. Volunteers provide brief advice and do not take a case or agree to any ongoing services. Some states have online opportunities where a client posts a question and attorneys can post a response whenever they have time. Even for matters that involve representation, there are opportunities that are done within a couple of weeks, such as drafting wills. Some litigation lasts longer than a few weeks, but it may not involve a lot of work throughout, such as adoption cases. Whatever an attorney’s schedule may be, there is a pro bono opportunity that will fit.

For attorneys who are nervous about engaging in a new area of law or trying an unfamiliar legal skill, there are numerous resources that provide training and mentoring. The organizations which the Federal Government Pro Bono Program publicizes have been screened to be sure that they offer that support.

Q: What is the best way for federal government attorneys to learn more about the Federal Government Pro Bono Program?

Most agencies have a pro bono coordinator. That person is the best source of guidance for opportunities available to their agencies’ employees. A list of agency coordinators is posted on www.probono. net/governmentprobono/, which also has a lot of other great information about how to get involved, such as volunteer guides for each branch of our Pro Bono Program. Finally, government attorneys are welcome to contact me directly at Laura.F.Klein@usdoj.gov. I am always happy to help! 

Endnotes

1U.S. Dep’t of Justice, Office of Access to Justice, Pro Bono Program, About the Program, available at https://www.justice.gov/ atj/pro-bono-program (last visited Feb. 20, 2023).

2The Justice Gap: The Unmet Civil Legal Needs of Low-Income Americans. Legal Services Corporation Report (May 2022), available at https://justicegap.lsc.gov/ (last visited Mar. 4, 2023).

3D.C. Ct. App. R. 49(c)(9) provides:

(9) Pro Bono.

(A) Attorneys Working Pro Bono. A person who is not a D.C. Bar Member may provide pro bono legal services, and may hold out as authorized to provide those services, if the person:

(i) is or was admitted in another United States jurisdiction, or previously was a D.C. Bar Member;

(ii) was not disbarred or suspended for disciplinary reasons, and has not resigned with charges pending, in any United States jurisdiction or court;

(iii) is supervised by a D.C. Bar Member on each pro bono matter;

(iv) gives prominent notice in all business documents specifically concerning each pro bono matter that the person’s work on the matter is supervised by a D.C. Bar Member and that the person is not a D.C. Bar Member;

(v) if the matter involves appearance in the District of Columbia

Court of Appeals or the Superior Court of the District of Columbia, the person, in the first pleading or other paper filed with the court, identifies the supervising D.C. Bar Member by name, address, e-mail address, telephone number, and D.C. Bar number;

(vi) is not employed by the Public Defender Service or a non-profit organization that provides pro bono legal services; and

(vii) provides services on each pro bono matter in affiliation with either:

(a) a non-profit organization in the District of Columbia that routinely provides pro bono legal services; or

(b) the legal pro bono program of the person’s employer, if the employer is not a law firm.

(B) Law School Graduates Seeking Admission to a Bar. A person who is not a D.C. Bar Member may provide pro bono legal services and may hold out as authorized to provide pro bono legal services if:

(i) the person graduated from an American Bar Association-approved law school; (ii) the person’s first application to be admitted in a United States jurisdiction is pending;

(iii) the person is trained and supervised by a D.C. Bar Member who is affiliated with the Public Defender Service or a non-profit organization that provides pro bono legal services on each pro bono matter; and

(iv) the person gives prominent notice in all business documents specifically concerning each pro bono matter that the person’s work on the matter is supervised by a D.C. Bar Member and that the person is not admitted to practice law in any United States jurisdiction.

(C) Applicability of Rules of Professional Conduct. A person practicing under Rule 49(c)(9) is subject to the power and jurisdiction of the courts of the District of Columbia, and must abide by the District of Columbia Rules of Professional Conduct.

Editorial Policy

The Federal Lawyer is the magazine of the Federal Bar Association. It serves the needs of the association and its members, as well as those of the legal profession as a whole and the public.

The Federal Lawyer is edited by members of its Editorial Board, who are all members of the Federal Bar Association. Editorial and publication decisions are based on the board’s judgment.

The views expressed in The Federal Lawyer are those of the authors and do not necessarily reflect the views of the association or of the Editorial Board. Articles and letters to the editor in response are welcome.

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Hail, Fellow, Well Met

By Aaron Bulloff

The leadership of the FBA’s Foundation is vested in its Fellows. So, who are the Fellows, and why should one be a Fellow?

1. The Who

Aaron Bulloff is a long-tenured FBA and National Council member who has held numerous chapter and national positions.  He is a Charter Life Member of the Foundation’s Fellows and in 2015 received the Earl Kintner Award. He can be reached at canoelaw@ gmail.com.

The Fellows program was started in 2002 to recognize FBA members who have demonstrated exceptional commitment to—and leadership with—the FBA and the legal community. Its charter class was comprised of some 30-odd FBA members. With the acceptance of the January nomination of Nate Olin to be a Fellow by the Foundation Board, the number of Fellows now totals 272. There are Charter Fellows, Charter Life Fellows, Life Fellows, Sustaining Life Fellows, Fellows, and Honorary Fellows. To become a Fellow, one must be a member of the FBA for five years, in good standing in the Association, an individual of demonstrable leadership roles in the Association, and accepting of an obligation to make a $1,500 contribution to the Foundation in three year’s time. An individual may self-nominate to become a Fellow or may be nominated by another to become a Fellow. The Foundation Board votes upon a nomination, and one accepted as a Fellow is inducted during either the Midyear meeting or the National Convention. A Life Fellow is an individual who has fully completed the monetary contribution to the Foundation; a Sustaining Life Fellow is one who voluntarily continues to contribute at least $150 yearly. In exceptional circumstances the five-year membership requirement may be waived by the Board.

In addition to the 272 Fellows, there are a number of Honorary Fellows, whose membership entails no financial obligation. This group is primarily composed of former and current U.S. Supreme Court Justices, including Justices Stephen Breyer, Ruth Bader Ginsburg, Neil Gorsuch, Elena Kagan, Sandra Day O’Connor, Antonin Scalia, Sonia Sotomayor and Clarence Thomas. Justice Gorsuch has hosted Fellows at the Supreme Court where he presented scholarships to student recipients of Foundation awards.

2. The Why

First, being a Fellow should not be viewed as an honor; it is an honor. Only about 2% of the Association’s members are Fellows of the Foundation. Such status

means not only that one is recognized as a leader in the FBA but that the person is a leader. Only steadfast FBA leadership confers Fellow status.

Second, Fellows receive invitations to programs extended only to them and their guests. An example is the Supreme Court evening mentioned above. Another is the Champagne Toast Reception at the National Convention, at which the incoming Foundation President is recognized. Yet another is the annual Fellows Dinner held annually at Midyear. Magic happens at that dinner. The very first one witnessed a marriage proposal (fortunately declined to the happiness of all). Others have witnessed Spanish ballads, selections from The Rocky Horror Show, stand-up comedy, and lemon juggling. At the 2017 dinner, “The Tale of the Two Dollar Bet” was recited, resulting in $10,000 in actual contributions (not pledges) to the Foundation in less than 25 minutes. At yet another Fellows dinner, $50,000 in pledges to the Foundation was secured from a select few.

Third, and perhaps most importantly, Fellowship results in service to the Foundation and all the good and wonderful charitable work that the Foundation does. Fellows are the members of the Foundation’s committees that determine the grants and scholarships the Foundation awards. Fellows become the members of the Foundation Board, and as such, they become the stewards of the Foundation’s investment portfolio, and they chart the course of the Foundation in any current year and in the future. The Foundation is the charitable arm of the Federal Bar Association, and members of the Fellows program are the individuals who collectively determine how that arm is exercised.

3. The Future

The Foundation Board recognizes that the Foundation, and commensurately, the Fellows program, has been insufficiently visible to many Fellows and to many other members of the FBA. The benefits of Fellowship can be better demonstrated. We are committed to changing these concerns. At the Foundation’s Strategic Planning Retreat held in January, these matters were thoroughly discussed. I shall report on the retreat at a future date. Rest assured, we are working to make being a Fellow as meaningful as continued on page 16

When Does Fraud Not Require Intent?

By Chief Bankruptcy Judge Craig A. Gargotta - WDTX

Judge Craig A. Gargotta was appointed a bankruptcy judge to the Western District of Texas in 2007. He became chief judge in 2021. Judge Gargotta formerly served as editor-in-chief for The Federal Lawyer from 2002-2008 and was chair of the bankruptcy section from 2017-2019. Judge Gargotta is a fellow of the Federal Bar Foundation.

The United States Supreme Court decided that debts arising from another person’s fraud can be barred from discharge by imputing the fraud to the debtor, even when there is no act, omission, intent, or knowledge on the part of the debtor.1 The case was argued on December 6, 2022, and the Supreme Court rendered a 9-0 opinion (written by Justice Barrett) on February 22, 2023. The decision employed a textual analysis that found that the plain language of U.S. Bankruptcy Code § 523(a)(2)(A) does not require a specific actor, intent, or culpability in imputing fraud from one actor to another.2

The bankruptcy court in In re Bartenwerfer (Buckley v. Bartenwerfer) had to determine whether a judgment against the Bartenwerfers, who fraudulently withheld information concerning material defects in real property they sold Buckley, was nondischargeable under the code.3 The Bartenwerfers bought and remodeled a home and then sold it to Buckley.4 Buckley sued the Bartenwerfers in state court alleging that the Bartenwerfers failed to disclose material defects in the home.5 Buckley obtained a judgment, and the Bartenwerfers filed a Chapter 7 bankruptcy—seeking to discharge the state court judgment.6 Buckley filed an adversary proceeding against the Bartenwerfers alleging that the judgment was nondischargeable under 11 U.S.C. § 523(a)(2)(A). Section 523(a)(2) (A) provides in relevant part that “a discharge under section 727… does not discharge an individual debtor from any debt… obtained by false pretenses, a false representation, or actual fraud.”

The bankruptcy court applied collateral estoppel to the state court judgment, finding that three of the five requisite elements to apply collateral estoppel under California law had been met.7 The bankruptcy court determined that the falsity of the representations and the intent to deceive were not actually litigated in state court, so Buckley had to seek factual findings from the bankruptcy court on these elements.8 The bankruptcy court noted that Mr. Bartenwerfer’s bankruptcy court testimony conflicted with his testimony in state court, finding that Mr. Bartenwerfer attempted to shield Mrs. Bartenwerfer from any fraudulent findings assessed against her by testifying that Mr. Bartenwerfer alone was responsible for the material omissions in the Real Estate Transfer Disclosure Statement.9 Nonetheless,

the bankruptcy court found that the testimony in the state court trial was that Mrs. Bartenwerfer authorized Mr. Bartenwerfer to fill out the disclosure statement on her behalf.10

The Bartenwerfers argued at trial that Mr. Bartenwerfer’s alleged fraudulent conduct could not be imputed to his wife based upon their marital relationship.11 The bankruptcy court agreed but found that an agency relationship existed between the Bartenwerfers based on their partnership regarding the remodel project.12 The Bartenwerfers moved for a directed verdict under Fed. R. Civ. P. 52(c), arguing that Buckley failed to prove by a preponderance of the evidence that Mrs. Bartenwerfer had the requisite knowledge of the misrepresentations and omissions regarding the material defects in the home or intent to defraud.13 The bankruptcy court denied the motion. The bankruptcy court also found that, because Mrs. Bartenwerfer signed the disclosure statement, and that she would benefit financially from the completion of the remodel of the home and subsequent sale, that was a sufficient basis for a finding of fraud against Mrs. Bartenwerfer.14 As such, the bankruptcy court found that Buckley’s judgment was nondischargeable as to both defendants.

Buckley and the Bartenwerfers filed cross-appeals to the Bankruptcy Appellate Panel for the Ninth Circuit (BAP). A number of issues were raised on appeal, including the bankruptcy court’s determination that Mr. Bartenwerfer’s fraud could be imputed to Mrs. Bartenwerfer.15 The BAP agreed with the bankruptcy court that a marital relationship by itself is insufficient to impute the fraud of one spouse to another.16 The BAP further held that a business or agency relationship was necessary for Mr. Bartenwerfer’s fraud to be imputed to Mrs. Bartenwerfer.17 The BAP agreed with the bankruptcy court that a partnership/agency relationship was established between the Bartenwerfers because Mrs. Bartenwerfer had signed the seller’s disclosures and sales contract, and Mrs. Bartenwerfer would benefit financially from the sale of the home.18 The BAP disagreed with the bankruptcy court, however, regarding the bankruptcy court’s denial of the Bartenwerfers’ rule 52(c) motion, finding that for the bankruptcy court to have denied the rule 52(c) motion, the bankruptcy court needed to make a specific finding that Mrs. Bartenwerfer “‘knew or had reason

to know’ of Mr. Bartenwerfer’s fraudulent omissions.”19 The BAP found that the bankruptcy court made no such finding, and concluded that the bankruptcy court appeared to have imposed judgment against Mrs. Bartenwerfer solely on the basis of an agency relationship.20 The BAP reversed the bankruptcy court, concluding that absent a finding that Mrs. Bartenwerfer knew or had reason to know about Mr. Bartenwerfer’s fraudulent omissions, the bankruptcy court could not make a legal determination of if the Buckley judgment was nondischargeable as to Mrs. Bartenwerfer.21

The BAP then remanded the case back to the bankruptcy court to make specific findings as to Mrs. Bartenwerfer’s knowledge of Mr. Bartenwerfer’s fraudulent omissions, specifically what Mrs. Bartenwerfer should have known about her husband’s fraudulent omissions regarding the material defects in the home. On remand, the bankruptcy court made extensive findings as to what Mrs. Bartenwerfer “should have known” about Mr. Bartenwerfer’s fraudulent omissions on the material defects.22 The bankruptcy court found that Mrs. Bartenwerfer was not involved in the day-to-day remodeling of the home, nor did she interact with the construction workers, architect, or consultants.23 Notably, the bankruptcy court explained that although Mrs. Bartenwerfer had signed the Real Estate Transfer Disclosure Statement, it was apparent that she had little, if any, personal knowledge regarding the defects in the home and did not confirm the accuracy of the representations on the disclosure statement.24 Moreover, the bankruptcy court found that Mrs. Bartenwerfer relied upon her husband’s false representations contained in the disclosure statement and in responses to discovery.25 The bankruptcy court concluded that Mrs. Bartenwerfer had no personal knowledge about the property’s defects and relied on her husband for any information concerning the condition of the property.26

The bankruptcy court then analyzed whether all the elements for determining if Mrs. Bartenwerfer was liable under § 523(a)(2) (A) were met. The Ninth Circuit (as do other circuit courts) requires that a creditor must prove by a preponderance of the evidence five elements:

(1) the debtor made a fraudulent misrepresentation or omission, or engaged in deceptive conduct; (2) the debtor knew of the falsity or deceptiveness of his or her statements or conduct; (3) the debtor made the representation with the intention and purpose of deceiving the creditor; (4) the creditor justifiably relied on the representation; and (5) the creditor suffered damage as a proximate result of the debtor’s fraudulent statements or conduct.27

The bankruptcy court determined that the only issue on remand was “whether Mrs. Bartenwerfer knew or should have known of her husband’s fraud, such that it can be imputed to her for purposes of section 523(a)(2)(A).”28 The bankruptcy court held that the seminal case for imputation of fraud in the Ninth Circuit is In re Huh. 29 The Huh Court held that imputation of an agent’s fraud to the agent’s principal requires proof of the agent’s culpability, which means that the principal knew or should have known of the agent’s fraud.30 The bankruptcy court observed that Huh “does not discuss what efforts, if any, a debtor must make to avoid a finding that he or she should have known of the agent’s fraud.”31 The bankruptcy court noted that there is no controlling authority in the Ninth Circuit regarding what a debtor “should have known,” and thoroughly examined case law

from other circuit courts. The bankruptcy court found after surveying the relevant case law that the common thread in all the cases was that “the debtor knew of—but ignored—facts and circumstances that should have prompted him to investigate the truth of representations made by his agent.”32 In Bartenwerfer on remand, the bankruptcy court held that:

[none] of the other relevant caselaw requires a debtor to independently verify each and every representation made by his or her agent. If debtors were held to such a standard, it would render debtors liable for all misrepresentations made by their agents – a standard the BAP has rejected. Huh, 506 B.R. at 266. The Walker33 standard implicitly acknowledges that a principal must be able to trust and rely on his or her agent unless the principal knows or has reason to know of cause not to, and rightfully so. Otherwise, there would be little point to principal-agent relationships. It is only where a debtor learns of facts that require investigation into the agent’s conduct but fails to undertake such an inquiry that a court can find that the debtor “should have known” of the agent’s fraud and can impute such fraud to the debtor.34

The judgment creditor appealed to the BAP, inter alia, that the bankruptcy court incorrectly declined to impute to the debtor-wife the debtor-husband’s established fraud.35 The BAP affirmed the bankruptcy court’s construction of Huh and other case law, holding that:

Huh does not set forth efforts Mrs. Bartenwerfer must have taken to avoid a finding that she “should have known” of her agent’s fraud, the bankruptcy court appropriately consulted cases where courts imputed liability under the Huh and Walker “should have known” rule for guidance in determining if she “should have known” of Mr. Bartenwerfer’s fraud. It noted commonalities among these cases: “[i]n each of the foregoing cases, the debtor knew of—but ignored—facts and circumstances that should have prompted him to investigate the truth of representations made by his agent” and “the debtor’s willful refusal to pay minimal attention to the activities of their agents amounted to reckless indifference.” Id. at 685.36

The Ninth Circuit, in a short opinion, reversed the bankruptcy court and BAP, ruling that binding Supreme Court and Ninth Circuit precedent hold that a partner is responsible for the partner’s fraud when the fraud was performed “on behalf of the partnership and in the ordinary course of business of the partnership.”37 The Ninth Circuit determined that Mrs. Bartenwerfer’s debt is nondischargeable regardless of her knowledge of fraud and that using the “knew or should have known” standard was incorrect.38

The Supreme Court granted certiorari.39 By way of background, the Supreme Court generally only considers a few bankruptcy cases each term. More remarkable is the fact that both debtors’ and creditor’s counsel persisted through the appellate process multiple times before the Court granted certiorari. Rarely do consumer bankruptcy cases make it to the Supreme Court given that the cost and time of the appeal may exceed the amount of the claim at issue. That said, the petitioner argued that the Ninth Circuit’s reliance in the Bartenwerfer decision on Strang v. Bradner40 is misplaced and is contrary to

Hardie v. Swafford Bros. Dry Good Co.41, which declined to deny the discharge to an innocent debtor for fraud of another.

The petitioner argued in its Petition for Certiorari that: the issue potentially impacts every joint transaction or endeavor that may be construed as a partnership, including transactions involving married persons and couples, even the sale of a family home. Moreover, the aforesaid split of authorities among circuit courts makes the outcome depend upon geography and happenstance rather than the merits or substantive law.42

The Petition for Certiorari states the circuit courts are split on the imputation of fraud from one partner to the other, noting that the Fifth Circuit43 has denied a discharge without any level of scienter with the Eighth Circuit44 holding that the “knew or should have known” standard should apply. Moreover, the Petitioner argued that the Ninth Circuit’s determination further deepens the split of authorities because the Ninth Circuit does not require any scienter for an agent or partner of an individual found liable for fraud.45 Notably, the Petition for Certiorari argues that the Supreme Court has found that scienter is required for finding of fraud under § 523(a)(2)(A).46 Specifically, the Supreme Court held in Field v. Mans that Congress could have created a bar to discharge for unintentional conduct, but it did not.47

If Congress really had wished to bar discharge to a debtor who made unintentional and wholly immaterial misrepresentations having no effect on a creditor’s decision, it could have provided that. It would, however, take a very clear provision to convince anyone of anything so odd, and nothing so odd has ever been apparent to the courts that have previously construed this statute, routinely requiring intent, reliance, and materiality before applying § 523(a)(2)(A).48

The respondent, in its Brief for the Respondent in Opposition, argued that the plain text of § 523(a)(2)(A) does not require scienter or apply a standard of if the debtor “knew or should have known” of the fraud.49 Moreover, the respondent correctly notes that some of the provisions of § 523(a)(2) such as willful and malicious injury by the debtor to another under § 523(a)(6) require a state of mind, where others such as a debt for a “domestic support obligation” under § 523(a)(5) do not require a state of mind.50 Rather, the respondent points out that some of the exceptions to discharge under § 523(a) focus on the character of the debt—such as a domestic support obligation and the policy of not allowing those debts to be discharged. As such, respondent argues that had Congress wanted to include a state of mind component in § 523(a)(2)(A), Congress could have done so.51 Further, the plain text of the statute expressly provides “any debt” for “money… obtained by… actual fraud” cannot be discharged.52 Respondent further argues that § 523(a)(2)(A) does not contain a “knew or should have known” requirement.53

The Supreme Court affirmed the Ninth Circuit. The Court’s opinion in Bartenwerfer v. Buckley parses § 523(a)(2)(A) into three parts as it relates to Mrs. Bartenwerfer—(1) she is an “individual debtor”; (2) the judgment is a “debt”; and (3) the sale proceeds were obtained by David Bartenwerfer’s “fraudulent misrepresentations.”54 The Court noted that the § 523(a)(2)(A) is written in the passive

voice; that is, § 523(a)(2)(A) does not specify a fraudulent actor.55 Further, the Court found that Congress framed § 523(a)(2)(A) on an event (the fraud) “that occurs without respect to a specific actor, and, therefore without respect to any actor’s intent or culpability.”56 The Court held that “[t]he debt must result from someone’s fraud, but Congress was ‘agnosti[c]’ about who committed it.”57 The Court further noted that common law fraud is not limited to the wrongdoer.58 The Court also found that its prior precedent—Strang v. Bradner—was still binding precedent and that Congress’s subsequent amendments to the exceptions to discharge for fraud (the precursors to § 523(a)(2)) did not evince a Congressional intent to override Strang, but rather embrace Strang’s holding that a principal of an actor who commits fraud can be liable for the fraud without any intent.59 Finally, the Court was unmoved by Bartenwerfer’s contention that its ruling would negatively impact the honest, but unfortunate debtor, and eviscerate the fresh discharge.60 Rather, the Court concluded that “a faultless individual is responsible for another’s debt only when the two have a special relationship, and even then, defenses to liability are available.”61 The Court further observed that when Congress balanced the equities of a debtor’s fresh start versus a creditor’s enforcement of a debt, Congress determined that in the context of this case that a creditor’s right to enforce his judgment overrides a debtor’s fresh start.62

As such, the Court determined that public policy (protection of the innocent but unfortunate debtor from the fraudulent acts of a partner or agent), must yield to the text of the statute (§ 523(a) (2)(A)), which does not include the “knew or should have known” standard. Bankruptcy lawyers will have to counsel their clients about the imputation consequences of a partner or agent being held liable for fraud to another agent or principal. Further, the benefits of one partner/spouse/principal’s discharge will be seriously diluted, if not eliminated, by the Supreme Court affirming the Ninth Circuit.

Endnotes

1Bartenwerfer v. Buckley, No. 21-908, slip op. Feb. 22, 2023, 598 U.S. _ (2023).

2Id. at 1.

3549 B.R. 222 (Bankr. N.D. Cal. 2016)

4Id. at 225.

5Id.

6Id.

7Id. at 227.

8Id.

9Id. at 228.

10Id

11Id. at 226 n.3.

12Id.

13Id

14Id.

15Bartenwerfer v. Buckley, Nos. 16-1277, 16-1299, 2017 WL 6553392 (9th Cir. B.A.P. Dec. 22, 2017) (unpublished).

162017 WL 6553392, at *9.

17Id.

18Id. at *10.

19Id.

20Id.

21Id

22In re Bartenwerfer (Buckley v. Bartenwerfer), 596 B.R. 675, 677-81 Spring

Judicial Profile Writers Wanted

(Bankr. N.D. Cal. 2019).

23Id. at 681.

24Id. at 679-80.

25Id.

26Id. at 681.

27596 B.R. at 681 (citing In re Slyman, 234 F.3d 1081, 1085 (9th Cir. 2000)).

28Id. at 682.

29506 B.R. 257 (9th Cir. B.A.P. 2014).

30Bartenwerfer, 596 B.R. at 683 (citing Huh, 506 B.R. at 271-72).

31Id

32Id. at 685.

33Walker v. Citizens State Bank (In re Walker), 726 F.2d 452, 454 (8th Cir. 1984) (applying “knew or should have known” standard).

34Id. at 686.

35Buckley v. Bartenwerfer, No. 19-1016, No. 19-1025, 2020 WL 1970506 (9th Cir. B.A.P. Apr. 23, 2020).

362020 WL 1970506, at *4.

37Buckley v. Bartenwerfer, 860 Fed. App’x 544, 546 (9th Cir. Aug. 12, 2021) (citing Strang v. Bradner, 114 U.S. 555, 561 (1885); In re Cecchini, 780 F.2d 1440, 1444 (9th Cir. 1986) (holding a partner responsible for a tortfeasor/partner’s fraud when the fraud was performed “on behalf of the partnership and in the ordinary course of the business of the partnership”), overruled in other part by Kawaauhau v. Geiger, 523 U.S. 57 (1998))

fact to the injury of innocent persons who deal with him as representing the firm, … his partners cannot escape pecuniary responsibility therefor upon the ground that such misrepresentations were made without their knowledge”).

41165 Fed. 588, 591 (1908) (“the liability of the innocent partner for the torts of the wicked partner committed within the scope of the partnership is based on the application of the principles of agency, and is restricted to pecuniary liability alone”).

42Bartenwerfer v. Buckley, No. 21-908, Petition for Writ of Certiorari at 4.

43Deodati v. M.M. Winkler & Assocs. (In re M.M. Winkler & Assocs.), 239 F.3d 746, 751 (5th Cir. 2001).

44Walker v. Citizens State Bank (In re Walker), 726 F.2d 452, 454 (8th Cir. 1984).

45Petition for Certiorari at 9, 11.

46Field v. Mans, 516 U.S. 59, 60 (1995).

47516 U.S. at 68.

48Id

49Brief of the Respondent in Opposition at 9.

50Id. at 10.

51Id

52Id. at 14.

53Id.

54Bartenwerfer v. Buckley, No. 21-908, slip. op. at 4 (U.S. Feb. 22, 2023).

55Id.

56Id. (citation omitted).

The Federal Lawyer is looking to recruit current law clerks, former law clerks, and other attorneys who would be interested in writing a judicial profile of a federal judicial officer in your jurisdiction. A judicial profile is approximately 1,500-2,000 words and is usually accompanied by a formal portrait and, when possible, personal photographs of the judge. Judicial profiles do not follow a standard formula, but each profile usually addresses personal topics such as the judge’s reasons for becoming a lawyer, his/her commitment to justice, how he/she has mentored lawyers and law clerks, etc. If you are interested in writing a judicial profile, we would like to hear from you. Please send an email to social@fedbar.org.

38Id. at 547.

39Bartenwerfer v. Buckley, 142 S. Ct. 2675 (May 2, 2022).

40114 U.S. 555, 561 (1885) (“in the conduct of partnership business, … one partner makes false or fraudulent misrepresentations of

From the Foundation continued from page 12

possible. In return, I ask two things: First, let the Foundation Board—and me—know your views on how that can happen and, further, how you think the Foundation can effect its mission. Second, nominate someone to be a Fellow. Fellows really are the lifeblood of the Foundation. We are 272 strong now; there is room for more.

I look forward to hearing from you.

Cheers, Aaron

57Id. (citation omitted).

58Id. (citation omitted).

59Id. at 9-10.

60Id. at 10-11.

61Id. at 11.

62Id

Climate Change Is Forcing Indigenous Communities to Relocate With Little Assistance from the Federal Government—But Congress Can Make it Easier?

By Geoff Strommer

Geoff Strommer is a partner at Hobbs, Straus, Dean and Walker, LLP, a national law firm that has specialized in representing tribes and tribal organizations throughout the United States for 40 years. The author wishes to thank Joel Neimeyer, P.E., long-time Alaskan and former federal engineer, who graciously reviewed a draft and provided very helpful insights into issues related to Alaska. He would also like to thank his colleagues Caitrin McCarron Shuy and Craig Jacobson for their help with this article.

As climate change becomes more and more of a reality for our planet, some of the most impacted communities are America’s indigenous people. Tribal Nations (including Alaska Native villages) throughout the United States are experiencing climate threats such as flooding, erosion, permafrost degradation, ocean acidification, increased wildfires, extended drought, and changes in seasons that have put our homelands and our ways of life in jeopardy. Unlike many others in our society, they are rooted to their ancestral homelands. If circumstances change due to climate instability— flooding, habitat loss, diminished drinking water, incapacity to engage in subsistence activities—Tribal Nations often have nowhere else to go.

For a number of indigenous communities located in coastal areas of the United States, the impacts of climate change have forced these tribes and Alaska Native villages to make the difficult decision to relocate their community to higher ground or pursue managed retreat. Yet, there are few options for tribes in this situation when it comes to federal support. Alaska Native villages are in remote locations, and land ownership issues are complex. Generally speaking, in the lower 48 United States, Tribal Nations have land that is held in trust by the federal government for the benefit of the tribe and exercise their own sovereign authority on their lands. But with limited economic development opportunities and without a local tax base, it is complex (if not impossible) to finance the relocation of a community. Similarly, small Tribal Nations must navigate an intricate web of permitting and planning regulations with the state and federal government just to begin to develop these solutions. Getting their land, or new reservation, in trust can take years—time they do not have.

Challenges for Tribal Communities

For example, the Shoalwater Bay Indian Tribe, located in southwestern Washington State on the shores of Willapa Bay, is planning to relocate their community uphill as their current reservation is washing into the Pacific Ocean. Any major storm or tsunami event could wipe out their entire community. The tribe has purchased some land for this relocation, but the land they own is not adequately suited for development. More land may be needed, and currently there is no infrastructure at all. Their estimated cost of the relocation is $130-$140 million. This is an immense sum for a small rural community.

The Shoalwater Bay Indian Tribe is not the only one in this situation. In 2020, the Bureau of Indian Affairs (BIA) estimated that the cost of relocating tribal communities would be $1.4 billion for tribes in the lower 48 and $3.4 billion in Alaska. Yet, federal investment continues to lag, despite the immense need. Congress also allocated $8 million for this purpose directly in fiscal year 2022 through the BIA and separately an additional $130 million in the Bipartisan Infrastructure Law, which was enacted at the end of 2021.1 However, BIA estimates that tribes will only receive this funding in a maximum of $3 million increments.2 Recognizing the limited federal funding available directly to Tribes, in FY 2022, Representative Derek Kilmer (D-WA) secured over $3.6 million for three tribes in his congressional district using the “Congressionally directed spending” process (formerly known as “earmarks”) for relocation. Despite this notable progress, with billions of dollars of need, these dribbles of funding will not make a difference for many communities before it is too late.

In Alaska, Native Villages have been assisted by the Denali Commission, which is a federal governmental body designated by President Obama in 2015 “to help coordinate federal, state, and tribal resources to assist communities in developing and implementing short- and long-term solutions to address the impacts of climate change, including coastal erosion, flooding, and permafrost degradation.”3 But the Commission “does not have statutory authority to lead and coordinate federal assistance….” While other interagency coordination groups do exist, they often prioritize their own agendas or lack continuity as federal leadership changes.4 The U.S. Army Corps of Engineers does significant “protect in place” solutions for several tribes and Alaska Native Villages. Others have developed one-off projects for tribal communities in need of relocation, but this is not the norm, and funding does not flow in the coordinated way that is necessary to relocate an entire village or reservation.

In the case of the Native Village of Newtok, the village received (as of 2019) $64 million in funds from federal agencies, the state of Alaska and other organizations to relocate their community of 400 residents.5 But they report that relocation efforts have taken many years due to the “challenges piecing together support from many federal programs with varying purposes and requirements.”6 Obama Administration officials thought that the Denali Commission would be able to convince other federal agencies to follow suit with discretionary dollars. In the case of Mertarvik (the new site of the Native Village of Newtok), that did not happen. The tribe still has to compete for grant funding with each and every federal agency.

Lack of Federal Coordination

Federal funding is often triggered by the occurrence of a disaster, rather than the pre-planning to avoid a disaster through relocation. Even when a Tribal Nation submits a formal disaster declaration, there can be little chance that they get approved since, according to the Federal Emergency Management Agency (FEMA), “slow-moving disasters” do not qualify for federal assistance under the Stafford Act,7 though there is little statutory support for such an assertion. Without much direct federal support, Tribal Nations are forced to find funding that is marginally targeted for infrastructure improvements to support village relocation. But these funds are often for discrete projects and require matching funds that small communities just do not have. In other words, it is a constant game of federal funding Whack-a-Mole—that is, if one was trying to smash round moles into square holes.

In 2020, the Government Accountability Office (GAO) noted that there is no clear federal authority designed to support climate migration/relocation efforts. According to GAO, “Unclear federal leadership is the key challenge to climate migration as a resilience strategy. Because no federal agency has the authority to lead federal assistance for climate migration, support for climate migration efforts has been provided on an ad hoc basis.”8 GAO also found that this strategy led to increased federal financial risk, as it is more fiscally responsible to relocate before disaster hits. Similarly, a 2020 BIA report on climate change relocation needs in Indian Country directly acknowledged this challenge:

Although some [Tribal Nations] have been able to obtain federal assistance for projects in relocating villages to higher ground… [n]o relocation-specific programs exist, therefore funding is pieced together from agencies such as [The Depart-

ment of Housing and Urban Development] on housing, BIA on planning and transportation, [the Federal Emergency Management Agency] on emergency measures, [U.S. Army Corps of Engineers] for engineering solutions to erosion issues, [the Indian Health Service] for health infrastructure, and the [Bureau of Indian Education] for schools/education infrastructure, etc. This patchwork approach leaves gaps in actions due to the criteria of each program and requirements of each (i.e., cost share, technical aptitude needed). Providing the direction for a coordinated, multi-organizational framework would help to address gaps among agency programs.9

GAO has identified no less than 30 different federal agencies that could assist for this purpose, and yet not a single policy directive is currently in place that brings them together. Furthermore, “…implementing projects in this way is not cost effective, for example, because agencies may pay to mobilize supplies, equipment, and people to remote locations multiple times for one relocation.” 10 For example, building a new village on raw land requires road construction as one of the first projects so construction vehicles and equipment can make it to the new site. Yet, prior to the road being built, it is important to install water, sewer, electric, and broadband utilities. Funding for all those discrete purposes would come from various federal agencies.

In addition to federal funding challenges, Tribal Nations in the lower 48 face long delays and challenges with placing their new land into trust, or even paying for land acquisition. When land is placed into trust it is owned by the federal government and held in trust for the benefit of the tribe. The tribe remains sovereign over these lands, resulting in improved efficiency of management. The process required to place federal land into trust can take years to cycle through the Department of the Interior (DOI)—even with full support of a local community, and without jurisdictional or environmental complications. While the Biden Administration has solicited tribal feedback on how to improve the land-into-trust process, any final process that could help tribal communities facing immediate threats due to climate change seems a long way off.

These failures do not only impact Tribal Nations. Many Tribal communities in rural coastal areas today are major economic forces in their local regions. The Shoalwater Bay Indian Tribe, for example, is the largest employer in Pacific County. Roads that run through or adjacent to tribal reservations can be state-operated roads. In rural Alaska, the Alaska Native health care system often provides the only health care access for the entire population of a village. Tribes are integrated with their communities. Failure to secure their future is not only a failure to uphold the trust and treaty responsibility to indigenous peoples, but will fail rural non-Native communities as well.

In short, Tribal Nations are stuck in an impossible situation that is not of their own making. They are located on lands that have largely been prescribed to them by the complex history of land loss and the role of the federal government. Many tribes signed treaties confining them to certain boundaries, or were limited to certain lands by executive orders, but now many of those lands are at risk. At the same time, they are stranded on their own with only nominal support from federal and state partners.

Seeking a Legislative Solution

Clearly, the federal government must do more to assist these Tribal Nations in securing safe, stable, permanent homelands. In the

current political environment, it is unlikely that Congress would appropriate billions of additional dollars to support a single program. But what Congress can do is make it easier for tribes to access the funding that is available in a timely and efficient manner.

The Shoalwater Bay Indian Tribe, along with partners at the Affiliated Tribes of Northwest Indians are urging Congress to create a program that would allow tribes to enhance their coordination between indigenous communities who are forced to relocate due to the impacts of climate change.

As proposed, the Federal Funding Flexibility in Tribal Climate Resiliency Act would allow the integration of federal programs implemented for purposes related to climate change, including housing, infrastructure, and economic development; and would provide funding based on tribal or Indian status, competitive or noncompetitive processes, or block grants. Too often, when tribes compete for scarce federal resources through the competitive grant making process, those with larger staff and larger base resources are those who are most successful. The system disfavors smaller communities since they do not have the staff to apply for and then maintain the grants. When looking at a program as enormous and complex as a village relocation, this issue is even more serious. Smaller tribes simply do not have the bandwidth to manage and apply for the dozens of grants it will take to implement a relocation process.

The proposed legislation would also instruct the DOI to create an expedited fee-to-trust process for this purpose; it would create an interagency coordinated funding timetable process for determining when funding is expected to be apportioned and available; and it includes time-period requirements for transfers of funds.

Importantly, the bill would create a coordinated intergovernmental program authorizing an environmental review process for increasing efficiency by carrying out reviews concurrently and creating a one-year coordinated timetable. This last piece is essential to avoid delays and help Tribal Nations manage a complex process.

The bill would also create a tribal working group to advise the eligible federal agencies, who are coordinated by an interdepartmental memorandum of agreement. Many of these recommendations have been supported by GAO. By having this coordination explicitly required and outlined in statute, it will insulate Tribal Nations from changing political priorities as administrations change.

This program is not the first of its kind. The DOI already administers a similar program for workforce development and assistance programs known as the “477 Program.” We know this model can be effective, and will be of great relief to many tribal communities who are staring down the ever-quickening impacts of climate change.

Conclusion

Tribal communities are facing real and immediate threats due to disasters driven or exacerbated by climate change, but tribal governments lack the necessary resources, infrastructure and supports to relocate. It is critical that the federal government step up to help these communities as they face elimination. At the very least, the federal government should cut red tape and provide essential coordination to those communities who need to relocate their services. Without these changes, small communities will still be waiting for relief when the next disaster hits. 

Endnotes

1There was an additional $220 million for “Tribal Climate Resilience” appropriated in the Inflation Reduction Act in 2022, but this funding is not specific to relocation.

2Bureau of Indian Affairs Projects for Irrigation and Power, Safety of Dams and Water Sanitation Construction, Climate Resilience and Relocation Implementation of the Bipartisan Infrastructure Law, Initial Spend Plan, Dept. of Interior , Feb. 16, 2022, at pg. 13.

3A Climate Migration Pilot Program Could Enhance the Nation’s Resilience and Reduce Federal Fiscal Exposure, U.S. Gov't Accountability Off., GAO-20-488, July 6, 2020, at pg. 16, https://www.gao.gov/products/gao-20-488.

4Alaska Native Issues: Federal Agencies Could Enhance Support for Native Village Efforts to Address Environmental Threats, U.S. Gov't Accountability Off., GAO-22-104241, May 18, 2022, at pg. 29-30, https://www.gao.gov/products/gao-22-104241

5Id.

6Id

7Id, at 16-17.

8Id, at opening summary.

9The Unmet Infrastructure Needs of Tribal Communities and Alaska Native Villages in Process of Relocating to Higher Ground as a Result of Climate Change, U.S. Dep't of Interior, Bureau of Indian Affairs/Office of Trust Services, Tribal Climate Resilience Program, May 2020, at pg. 6, https://www.bia.gov/ sites/default/files/dup/assets/bia/ots/tcrp/Informational_Report. pdf.

10Alaska Native Issues: Federal Agencies Could Enhance Support for Native Village Efforts to Address Environmental Threats, U.S. Gov't Accountability Off., GAO-22-104241, May 18, 2022, at pg. 37, https://www.gao.gov/products/gao-22-104241

Profiles in D&I Leadership

The Diversity, Equity, and Inclusion Communications Subcommittee coordinated a series of judicial interviews focusing on federal judges’ experiences and life-lessons. What follows is the compilation of profile articles that resulted from the Subcommittee’s efforts. Thank you to each of the judges and their interviewer for their time and commitment. And thank you to Tara Norgard and Lisa Kpor, the respective past and present Committee chairs, for their support of this work.

Kiera Murphy Member of the DEI Communications Subcommittee

All profiles originally published in fedbarblog.

Hon. Nannette Brown

Judge of the United States District Court for the Eastern District of Louisiana

by Eura Chang

Chief Judge Nannette Jolivette Brown is chief judge of the United States District Court for the Eastern District of Louisiana. When she was appointed by President Barack Obama in 2011, Chief Judge Brown became the first African American woman to serve on any Louisiana federal district court. Before her appointment to the bench, she served as deputy mayor and city attorney for the city of New Orleans. The chief judge joined Eura Chang, a recent law school graduate, to discuss, among other things, the important roles of community-building and respect in diversity and inclusion efforts.

Eura Chang: Because it was the Federal Bar Association that brought us together, could you tell us what you have enjoyed about being a member of the FBA, and why you would encourage new attorneys, like myself, to join?

Chief Judge Brown: I was always quite aware of the pressures and expectations of always being the first minority in certain environments, so I knew it was important to be involved in the bar and in the community in New Orleans. The FBA has such a wide variety of ways you can get involved, big and small, and they have such a wonderful reputation with the federal court here. It has evolved tremendously from the association I enjoyed over 30 years ago to the one that I ultimately became president of in 2019. It is so much more inclusive, so much more engaged. It is an organization that I’m so proud to be a part of. Being involved in the FBA has allowed me to grow professionally as well as personally.

EC: Well, you’ve sold me on getting more involved with the FBA chapter in Minnesota! Earlier in your response, you touched on, I think very humbly, often being the first as a woman of color, but I do want to recognize that when you were appointed by President Barack Obama to the court of the Eastern District of Louisiana in 2011 that you became the first Black woman to be sworn to the federal district court in the state of Louisiana. I’d love to hear more about what you think is the importance of having diverse voices and backgrounds serving on the bench.

CJB: Look, there are a lot of qualified people, and I’m very humbled that I was chosen. When the people that are appointed to do this job are a reflection of the community at-large, that gives legitimacy and confidence to the people we serve. I am the first African American woman [on the Louisiana district court bench] but

I’m also among the first in my family to go to college and to graduate from college. I can tell you that when I look across the bench, I honestly connect with the litigants, the victims, those being prosecuted. My broad and inclusive background allows me to be less judgmental of the things that don’t matter and focus on the law. I truly believe that I can connect and understand and listen to everyone no matter their background because mine and my family’s is so varied and diverse. It is my job to put all my personal feelings aside and judge based on the merits of their case. I think the diverse experience I have allows me to do that. We don’t just want to be objective and fair; we want to appear objective and fair. That is what the law requires! When you look at the bench and there’s a variety of people with a variety of backgrounds, it illustrates the many freedoms that we have in this country and the rights and privileges that those of us here are sworn to uphold.

[On building respect in the courtroom]

CJB: I like to ask jurors what we can do better, and I always ask, “Did you feel respected?” I want to know if there were any needs that we did not meet, anything that we were insensitive about. In my chambers, we find this amusing because… ok, have you ever heard of Moon Pies? I provide a lot of snacks because I want to keep the jurors awake, and so once they complained, “Why do you have banana Moon Pies? Nobody eats banana, I need chocolate Moon Pies!” And so, I’m like “Ok! We’re fixing it.” But we do try to keep connected because you can never sacrifice your service to the public. And to the people who come here and rely so heavily on our system, we want to make sure that our employees understand what this building represents and what our responsibilities are to uphold that.

Things move efficiently [in the Eastern District of Louisiana] because we address our motions promptly and move our docket efficiently, and that’s out of respect. Clients and litigants should not be waiting around. It is a sign of respect for the people we serve. Everyone wants to demand respect, but you have got to be willing to extend it. It is a two-way street, and we have to set the tone as judges.

EC: I’m curious to hear your perspective as someone who has had a commitment to diversity and inclusion for her entire life and career. I live in Minnesota, which was the starting place of the uprisings following the murder of George Floyd. We recently passed two years since that summer and the increased focus, including from the FBA, on diversity and inclusion. How do you suggest that we keep this momentum moving forward and make sure that we continue to prioritize diversity and inclusion?

CJB: You really have to know your history and remember defining moments. I remember when I was growing up seeing photographs of Emmett Till that had been published in the African American media. That searing reality sticks with you. The circumstances surrounding his death was our justice system at its worst, and you really can’t sweep those things under the rug. Those are the things that we know about, and they represent so many of the things that we don’t see. You just can’t forget your history and having grown up in the segregated south, I am ever reminded of what happens when we ignore the realities around us, when we stop listening to people, when we separate ourselves on any ground. What makes this country so wonderful is our ability to open our hearts and minds to each other. I benefitted from that sort of open-mindedness as a child myself and I try to teach it to my own children and exercise it in my daily life. But what I’m so proud of is that there was a whole new generation of people in this country born long after me who

didn’t live through the Civil Rights movement who saw that moment when George Floyd was killed and knew this is not the country they wanted. They wanted better not just for themselves but for their fellow Americans. We just can’t forget those moments because we don’t want to backslide. I try not to get too comfortable that I forget those uncomfortable moments. If we don’t know the tragic moments in our history, we’ll repeat them.

EC: Chief Judge, you are a trailblazer in the legal profession who has opened up a path for many to follow. Do you have any advice for those law students or new attorneys who might be considered the first in their field?

CJB: If you’re a lawyer, you know you take an oath. First priority is to serve honorably and abide by that oath. Embedded in that is how you treat people. I would also say to honor your values and don’t be afraid to be a changemaker. Sometimes it’s so much easier to just go along because it’s unpopular to speak out. I know that my presence, my mere presence, can make people feel uncomfortable so I try to work hard at upholding my values and being true to myself and my country by setting an example. If you’re in a position to make a difference and a change, then when the opportunity arises, you can’t be afraid. There’s also nothing wrong with noticing if someone feels like they don’t belong. It’s important to reach out when people have those feelings, and you should work hard to connect with people. We are more alike than unalike, like Maya Angelou said. When you can gain trust and confidence and when people know and understand that you have the same values, you can really make change. It’s much easier to persuade people to do the right thing and think more broadly then.

[On how trailblazing is not about charging forward by yourself, but about bringing others with you]

CJB: Because to be honest, I’m very humbled by that title. I’ve never thought of myself as a trailblazer. I’m so honored that people see that in me, and when I look around and consider where I came from to be here, it’s quite an accomplishment, and I’m very fortunate and appreciate that. There’s a point in your life when you realize that it just can’t be about you. You can’t get to the top of an organization or in the federal judiciary unless you have peers you can confide in and rely upon. Getting to the top is not really blazing and knocking anybody down. I often see that is a misunderstanding that people have. Accomplishing most things requires relationship building, requires gaining the trust and confidence and respect of your peers. You have to be willing to open doors for a peer, to provide some opportunity for someone else, know your own strengths and weaknesses so you can pair up with other people and be stronger and accomplish career goals together. People who really rise to the top have that skill, have that ability, and are inclusive on so many levels. I never thought of trailblazers so literally—people who are actually trailblazers have mastered the way of bringing people on board, gaining their confidence. That’s not necessarily what you think of trailblazing, it’s probably much more subtle than people realize. You can’t get to or stay at the top alone.

EC: I have just one final question—autumn is starting, and I’m curious what upcoming things you’re looking forward to this fall.

CJB: Well, it’s a new court season, I’m excited about that. In a couple of weeks, I’m going to Tel Aviv, Israel to participate in a delegation in the International Judges’ Association, so I’m very excited to interact with judges from all around the world. On a personal level, I’m looking forward to the holiday season because I have such a wonderful support

system in my two children and my husband. October also begins a new judicial calendar, so I look forward to what my docket will be and the precedence from the circuit and Supreme Court. I’m excited about my new law clerks coming on board and what we will tackle next. I’m just looking forward to all those things. 

Eura Chang is an associate attorney at Lockridge Grindal Nauen PLLP in Minneapolis, MN where she works primarily in the antitrust and data breach practice groups. She recently graduated from the University of Minnesota Law School where she served as a Note and Comment Editor on the Minnesota Law Review, a student director in the Immigration and Human Rights Clinic, and Co-President of the Asian Pacific American Law Students Association.

Hon. Gustavo A. Gelpí

Judge of the U.S. Court of Appeals for the First Circuit

by Aaron J. Richards

A native of San Juan, Puerto Rico, Judge Gustavo A. Gelpí and his two younger siblings were raised by their parents, grandparents, and close relatives. His “very close-knit” family provided him with an enjoyable childhood and a strong foundation that has shaped who he is today. A proud father of two, Judge Gelpí has sought to follow the example his father set in both his legal practice and devotion to family. Growing up, Judge Gelpí went to bilingual schools where he studied Spanish and English. While recounting his childhood, Judge Gelpí noted that he was grateful for the principles instilled in him at home and in primary and secondary school at the Academia del Perpetuo Socorro, which he believes are reflected in his jurisprudence.

Judge Gelpí obtained his Bachelor of Arts from Brandeis University and his Juris Doctor from Suffolk University Law School. While in Boston, during the Larry Bird championship years, Judge Gelpí enjoyed supporting the hometown Boston Celtics, attending over 200 regular season and playoff games at the historic Boston Garden. To date, Judge Gelpí continues to support the Celtics, attending several games each year. He cherishes the many lessons learned from one of his greatest inspirations, Larry Bird, whom he views as a model of hard work, discipline, overcoming adversity, and going the extra mile. Judge Gelpí has sought to embody these characteristics in his everyday life and work.

Judge Gelpí has benefited from numerous mentors and role models throughout his life. Some of Judge Gelpí’s earliest mentors made a lasting impression on his career and work ethic. Judge Gelpí’s high school chemistry teacher, Mrs. Mariloly Lopez; World History teacher, Mr. José Leavitt; and his coach, Mr. Carlos Ruiz, pushed him to always go above and beyond his comfort level. While in law school, Judge Gelpí found a great mentor in civil procedure professor Joseph Glannon. His mentorship inspired Judge Gelpí’s love and passion for the law and his familiarity with civil procedure. After law school,

Judge Gelpí served as a judicial law clerk for the Honorable Juan M. Pérez-Giménez, United States District Judge for the District of Puerto Rico. Judge Pérez-Giménez was also a great mentor, friend, and an inspiration as a judge. While clerking for Judge Pérez-Giménez, Judge Gelpí met the Honorable David Souter, Associate Justice of the United States Supreme Court, when he had just joined the nation’s highest court. Over the years, Justice Souter and he remained in touch. Justice Souter became, and remains, a role model and a source of inspiration who Judge Gelpí has striven to emulate in his role as an appellate judge. In addition, Judge Gelpí has found role models and inspiration in the judicial leadership of other U.S. Supreme Court Justices, such as, the Honorable Sonia Sotomayor and the Honorable Stephen Breyer. In his time as a federal public defender, Judge Gelpí appeared before numerous judges of Puerto Rico’s federal district court and the First Circuit Court of Appeals, learning from, and developing meaningful relationships with, each judge.

For over 30 years, Judge Gelpí has been an active member of the FBA. He served as its National President and was the first Article III judge to serve in this capacity. Serving in numerous roles at the FBA prior to his presidency, Judge Gelpí was committed to diversifying the organization and focused on “promoting benchmarks, relationships, and judicial independence.” He credits the FBA with giving him the space to grow as an attorney and writer while serving as an editor of The Federal Lawyer

Judge Gelpí’s various professional experiences have shaped his perspective on the law and his "holistic" approach to adjudicating cases. Having served as a Federal Public Defender, Solicitor General for the Commonwealth of Puerto Rico, civil practitioner in private practice, magistrate judge, district court judge, and appellate judge, Judge Gelpí is keenly aware of the impact of his decisions on the community. Regardless of a litigant's background, he provides the same opportunity for each person to be heard and receive fair treatment. Over the course of his 15-year career as a magistrate and district court judge, Judge Gelpí authored more than 1,000 opinions and presided over almost 70 jury trials, with a reversal rate of less than 4%. Because of his work with the federal public defenders, Judge Gelpí believes that employing effective communication and treating criminal defendants with respect and dignity—no matter the charges against them—are indispensable to the administration of justice.

As a “living embodiment of Article III,” Judge Gelpí ensures that the Constitution and the laws of the country are upheld and protected. Judge Gelpí loves his job; even on his toughest days, he always goes home with the satisfaction and honor of having served his country. While serving as a district judge, he enjoyed settling cases and helping litigants leave with a favorable outcome for all. In criminal cases, Judge Gelpí strove to apply appropriate sentences and was gratified when former defendants became productive members of society. He cites sentencing as the toughest part of his job as a district judge. A happier judicial duty for Judge Gelpí is performing naturalization ceremonies for new U.S. citizens. Judge Gelpí has performed naturalization ceremonies in Puerto Rico, Guam, and Boston, and recalls with particular fondness a ceremony held in Boston where a diverse group of 400 candidates received U.S. citizenship. A highlight of these ceremonies for Judge Gelpí is reciting the Pledge of Allegiance at the ceremony's conclusion with the new citizens and their family members.

Another aspect of Judge Gelpí’s job in which he takes special pride is selecting judicial law clerks. As a former clerk himself, Judge Gelpí

understands how vital clerks are to judges as well as how crucial a judge's mentorship is to his or her clerks, often maturing into a lifelong relationship. For this reason, Judge Gelpí personally reviews each application and interviews potential candidates. By considering a myriad of factors, Judge Gelpí selects clerks who are hard-working, amenable to peer review, experts in legal research and writing, and team players who contribute to the overall cohesion of his chambers.

When asked about his most memorable cases, Judge Gelpí shared two: the first Clean Water Act case tried in the United States before a jury, and a case involving the largest consent decree in the nation between U.S. Department of Justice and Puerto Rico’s Police Department. Judge Gelpí is proud of the progress the Puerto Rico Police Department made under his court monitoring, particularly the promotion of women and minorities into the highest ranks of the department based on merit and expertise. By requiring more training and instituting a full curriculum at the police academy, Judge Gelpí brought about tangible police reform during his oversight of the consent decree. From LGBTQ rights to rights under the Americans with Disabilities Act, Judge Gelpí has never hesitated to uphold the Constitution and to defend the rights afforded to each American.

As the first public defender to sit on the First Circuit, Judge Gelpí brings a unique perspective to panel deliberations and a holistic approach to the adjudication of appeals. During his Senate confirmation hearing, Judge Gelpí was amazed by the overwhelming support he received from various organizations and groups in Puerto Rico and across the nation. He often reflects on how blessed he is and how he holds this job in high esteem. Judge Gelpí stated that “this is a great nation with 200 plus years of history… and for two hours the country’s time was devoted to me during my confirmation hearing.” Even though Congress remains politically polarized, Judge Gelpí was grateful for the bipartisan support he received for his confirmation. Since his Senate confirmation, Judge Gelpí has enjoyed having the opportunity to set precedent for the First Circuit. Judge Gelpí strives for excellence in opinion writing and values the appellate peer review editorial process. Although he “could not be the Larry Bird on the basketball court,” he strives to be “the Larry Bird in the court of justice.” As such, Judge Gelpí drafts opinions that are meticulous, accessible, and rooted in the Constitution.

Reflecting on advice to share with future attorneys, Judge Gelpí encourages new attorneys to become learned in the law and participate wherever possible in trainings, moot courts, and mock trials. He recommends that law students take a variety of courses that expand their understanding of the law and lead them outside of their comfort zones. Similarly, he advises attorneys to cultivate well-roundedness, encouraging them “to try at least one case, work on an appeal, do pro bono work, and know a little bit about everything.” In addition, he recommends that young attorneys join organizations like the FBA, find mentors, and develop relationships with other attorneys and judges. He encourages new attorneys to not be afraid to speak up and out for what is right, because "we are a Democracy!” Most of all, Judge Gelpí implores each attorney and future attorney to remain ethical and continue putting in hard work, opining that nothing worth having comes easy.

Judge Gelpí cherishes his life’s story and would not change any chapter within it. He is most proud of keeping his commitment to being present for his children and all their important events, despite his busy schedule. Although Judge Gelpí makes numerous sacrifices in his capacity as a judge, he finds ways to make space for leisure reading,

traveling, and spending time with his loved ones and friends.

An avid reader, in his spare time Judge Gelpí enjoys reading in both Spanish and English and across multiple genres, including science fiction, history, and biography. One of his favorite books is The Personal Memoirs of Ulysses S. Grant. In addition, he enjoys James Fenimore Cooper books, such as The Last of the Mohicans, as well as the John Carter of Mars and Tarzan of the Apes series by Edgar Rice Burroughs, among others. He also holds a 10,000-volume collection of comic books from his childhood. Aside from reading, Judge Gelpí enjoys watching sports and movies. His favorite movie genres are superhero movies and classic horror movies from the 1930s and 1940s. In particular, Hoosiers (1986), The Mark of Zorro (1940), and Frankenstein Meets the Wolf Man (1943) are among his favorites. As a former basketball and volleyball player, he continues to stay fit by jogging on the beach, swimming, and walking almost everywhere. Judge Gelpí also has a passion for travel. He has traveled throughout South America, Central Europe, and almost all of the United States— he has visited 45 of the 50 states and hopes to visit the last five states when work permits.

Looking forward, Judge Gelpí recognizes that technology has been essential to improving judicial efficiency but warns against lawyers using technology as a substitute for preparedness. As the landscape of the judiciary and the First Circuit evolve, Judge Gelpí is honored to be part of that change. Judge Gelpí looks forward to making his contribution to society and hopes to inspire the next generation to pursue a career that effects positive change in their respective communities. 

Aaron Richards is a third-year law student at North Carolina Central University School of Law. Aaron received a B.A. in Anthropology and minor in Spanish, cum laude with Advanced Honors Distinction, from Georgia State University. Currently, he serves as a 2022 Justice John Paul Stevens Fellow at the Federal Public Defenders Office (EDNC) in Raleigh, North Carolina. In addition, Aaron serves on the Communications Subcommittee for the Federal Bar Association’s Diversity & Inclusion Standing Committee.

Hon. Diane Humetewa

Judge of the U.S. District Court for the District of Arizona

by Harpreet Mahal

Harpreet Mahal: How did you decide to become a lawyer?

Judge Humetewa: I spent the first four years after college in the U.S. Attorney's Office providing advocacy services for victims of mostly violent crimes in Indian Country. After a couple of years, I started receiving encouragement from lawyers who would say to me, “You should think about going to law school. You need to be a prosecutor advocating for these victims in the courtroom.” I had never considered it before, because there

were no lawyers in my family, extended family, or who I personally knew. One day I walked into my office and there were law school applications on my desk, and my supervisor said, “You really should fill these out.” I did what I was told, but I never thought that I would be accepted. But lo and behold, a few months later, I was! Then I had to decide whether I was going to leave a job that I really enjoyed and embark on this new educational path, of which I knew nothing. I guess it really was not a choice that I made on my own, but something that I was coaxed into. The rest is history.

HM: When did you realize that law was the path you were meant to be on?

Judge Humetewa: I only realized law was my true calling after graduating from law school, and about a year into my first job as a lawyer. At that time, I was counsel in the U.S. Senate Indian Affairs Committee in Washington, D.C. The committee is responsible for federal policies and laws that impacted the nation's Indian tribes and native people. In doing that work, I saw how policymaking at the federal level affected Indian Country and peoples nationally—from our health care to our education systems. Before that, I understood the breadth and history of tribes in Arizona, but I had only a surface level understanding of what it meant to engage in policymaking affecting all the nation’s tribes. So, the work brought me a sense of real fulfillment as well as personal enlightenment. I understood for the first time in my life that the decisions about the day-to-day lives of Indian people, such as my family, my grandparents, and those before us, were generally made in Washington, by people who were not Native American and who didn't come from these communities. I really understood the importance of the work and how careful it had to be.

Then, as a more experienced federal prosecutor, I was often sought out as a national speaker on prosecuting crimes in Indian Country, and those involving Native American cultural resources. I was one of only a handful of tribal member lawyers with that experience, so it was clear to me that I could and should use my education combined with my personal background to enhance the way justice is served in Indian Country.

HM: Were you able to find mentors early on in your career who understood your background and your experiences?

Judge Humetewa: I found mentors easily, but not necessarily ones who shared my background. For example, Senior Judge Stephen M. McNamee, who is here in this district, was the U.S. Attorney who hired me for the victim advocate position. He also encouraged me to think about going to law school. He would introduce me to other lawyers. Edwin Meese was the United States Attorney General when I was a victim advocate, and Judge McNamee made a special effort to have me and the other extern, also a Native American, meet Attorney General Meese. He would ask for our advice, and I would think, “I’m this 20-something-year-old, barely out of college, and the U.S. Attorney is asking for my opinions.” So, people like Senior Judge McNamee were real advocates for my professional growth. Former U.S. Attorney Paul K. Charlton, and retired AUSA Wallace Kleindienst, a renowned prosecutor, were also very encouraging. Though they did not share my background, they welcomed my opinions, including how to work with tribal people more effectively. They encouraged my participation in the office’s work and presented me with challenging work which made me more confident. Ninth Circuit Chief Judge Mary H. Murguia was also instrumental in my development as a junior federal prosecutor. As my immediate supervisor, she gave me honest feedback and provided me with many growth

opportunities. These are just a few of the accomplished people who gave me time and who let me learn from them.

HM: Do you see that there are more people now that have that understanding and that can serve as mentors for future generations?

Judge Humetewa: I do. I'm encouraged by the number of law students today who are from diverse populations. There was a stark lack of diversity when I was in law school and in my early years of practice. Tribal member lawyers and mentors were rare. Yet, I found individuals who selflessly provided me with their professional guidance. Though a lack of diversity is still prevalent in private practice, and certainly on the bench, I do see the cultivation of future mentors from the educational and professional experiences that are now being made available to people from diverse backgrounds, including from once exclusive institutions. This, in turn, provides law firms and federal agencies with a more diverse pool of lawyers who can serve as mentors. When you see successful lawyers with whom you share a common culture or life challenge, that, in and of itself, can build self-confidence.

HM: During your time in law school, did you have an idea that you would want to one day be on the bench, or is that something that came later?

Judge Humetewa: Not at all. When I had the opportunity to be the U.S. Attorney for Arizona, my husband told me I should take the U.S. Attorney position if it would help me become a federal judge. Frankly, until then I had never thought about being a federal judge. It never dawned on me because I did not see people with my background appointed to federal judge positions. As a former victim advocate and AUSA, working in the very federal court in which I sit, I was familiar with the entire federal bench. All the judges were male, all of them were Anglo, and most were from generations of lawyers, or they had political influence in Arizona. But hearing my husband voice the idea, and say it with confidence, made me think for the first time that maybe it is possible. And it was. In our Sandra Day O'Connor Courthouse, there's a portrait gallery of all of the district judges appointed chronologically. I often tell law students, especially those that come from diverse backgrounds, to walk that portrait wall and observe the changes in diversity of these positions. You see when the first female district court judge was appointed, then the first Latina judge, and so on. They are encouraged by that.

HM: How has your time as a victim advocate before law school shaped how you view the justice system today?

Judge Humetewa: It gave me a real-world view of how the federal courts actually work, and particularly how the federal courts interface with Indian Country and its populations. I saw the disconnect that is built into the system of justice for Native Americans, and how far removed the process is from their communities. Victims and witnesses would ask why their case was in federal court and not tribal court. I had a desire to learn more about that. So, I took federal Indian law and tribal courts classes in law school, and then sought the externship in the U.S. Senate Indian Affairs Committee.

I continue to see that for many Native Americans, our federal justice system is still too far removed. They do not necessarily feel included in the process. As a prosecutor, my early experiences with victims helped me hone my casework to be sensitive to their culture and communities and drove me to encourage tribal awareness and participation in the process. But today, I still see that our federal justice system for many Native Americans, is still too far removed. As a district judge, I have tried to focus on how our courts can be more

accessible to Indian tribes and citizens. It’s an ongoing process.

HM: Did your time as an appellate judge for the Hopi Tribe help inform how you view judicial process or provide any perspective on judicial process that can be applied more generally?

Judge Humetewa: It taught me how to develop case law based on Hopi custom and practice when there is no written law. I was fortunate to be mentored by the late chief justice at the time, Emory Sekaquaptewa, the first Hopi law school graduate. He recruited several federal judges who were his classmates, the late District Judges Robert C. Broomfield and Paul G. Rosenblatt, to help develop the Hopi tribal court. It was his vision to infuse Hopi custom, practice, and tradition into the law whenever possible.

At the Hopi Appellate court, we did what our earliest Supreme Court justices did: develop common law in the absence of written law. This enabled me to understand the tensions that arise when you have a constitution, like the Hopi Constitution which was drafted by federal agents, that conflicts with Hopi custom and practice. Those experiences emphasized the importance of each written word in writing the common law as precedent, and how to write so our reasoning could be understood by the people. It also prepared me for my eventual sittings with the Ninth Circuit Appellate Court, which is similar to our Hopi Appellate Court process. I learned the nuances of collaboration.

HM: Do you have any advice for diverse law students and newer lawyers?

Judge Humetewa: Embrace your time in law school. I treated law school like an obstacle to overcome. The law school process intimidated me, so I did not appreciate the journey, and it wasn’t as enjoyable as it could have been. My advice is to participate in the organizations and do not box yourself into an area of law or career path just because others expect it of you. Be mindful that your current classmates may be your future colleagues or adversary in law, so get to know them. Visit state, tribal and federal courts, especially if you want to be a litigator. And consider that your first job as a lawyer is part of your ongoing legal education. We learn many subjects in law school, but mastering the practice of law takes time.

HM: How did you get involved in the Federal Bar Association? What drove your involvement in the Federal Bar Association's diversity and inclusion efforts?

Judge Humetewa: As a law student, I had the opportunity to attend the Indian Law Section of the Federal Bar Association's annual conference. It was the first time I met Indian lawyers who were also members of the FBA. They were welcoming and encouraging. I met Lawrence Baca, a renowned U.S. Department of Justice lawyer, Walter EchoHawk, who worked at the Native American Rights Fund, and others. That was my first real exposure to the FBA, and I learned why it was relevant to Native practitioners and Indian Country. The federal courts are directly involved in the lives of my community and federal lawyers represent tribes and tribal people. The work I sought to pursue was predominantly federal, so it made sense to observe these practitioners and to pay attention to what the FBA was doing.

I became involved with many of the diversity efforts by invitation. We judges are isolated. So, the FBA provides a meaningful way to stay connected with what’s going on with federal court practitioners, and to contribute to the federal bar. My involvement also tends to focus on diversity and the challenges of underrepresented populations in the law profession, many of whom are interested in public service, with federal agencies or Indian tribal governments. But because the FBA consists of people who practice in the federal courts, they have a genuine interest

in evaluating its processes and procedures, as well as addressing ways to improve the practice of law in the federal courts for everyone.

HM: Are there specific diversity and inclusion efforts that you would like to see in the future from the Federal Bar Association?

Judge Humetewa: A challenge for every federal bar chapter is how to develop opportunities to appear in federal court. There are few opportunities for novice lawyers, and fewer still if you are not a federal prosecutor or defender. Additionally, it is rare to have Native lawyers appear in federal court. This makes it more difficult when it comes time to serve as an officer of the FBA, as a Representative of the Circuit, or to be considered for future judicial positions. So, developing paths to federal practice is key. Cultivating mentors from federal practice would help. In Arizona, we also have opportunities for pro bono work for self-represented individuals, including incarcerated persons. So, I would like to see newer lawyers and those with diverse backgrounds provided with opportunities to appear in federal courts.

I tell those whom I swear in to practice in our district court to consider joining the local FBA and to make efforts to attend the monthly luncheons. It will give them an idea of what's going on in our federal courts and what's happening among the federal bar members. Participation in the FBA can make the practice of law in federal courts less intimidating. And I believe that personal participation helps to build a better legal community. 

Harpreet Mahal is an associate at Carlson Caspers, an intellectual property boutique law firm in Minneapolis, MN. He attended the University of Minnesota Law School, where he gained experience through the Intellectual Property Moot Court, the Intellectual Property and Entrepreneurship Clinic, and the Clemency Project Practicum (now the Clemency Project Clinic). Prior to law school, he received an MS from Wayne State University School of Medicine, where he was in a neuroscience lab focused on traumatic brain injury and spinal cord injury research. Harpreet is active in several professional organizations including the Minnesota State Bar Association, the Minnesota Asian Pacific American Bar Association, and the Federal Bar Association.

Hon. Mimi Tsankov

Judge of the New York Federal Plaza Immigration Court

by Nayeon Kim

Nayeon Kim: What life stories and motivations fueled your passion for the law and ultimately led you to the bench? And what do you do within the immigration system?

Judge Tsankov1: I always thought that I would become a lawyer starting from when I was in second grade—no doubt because my father was a lawyer. But, over time, I really developed my interest in the law, and remember reading a book in high school called The Brethren. It offered an inside look at the workings of the Supreme Court. I have always been fascinated about the way that courts

work—how judicial law clerks support the judges, and how decision-making is rendered at various courts.

As to my interest in the immigration system, back in 1993, an Asylum Officer Corps was being established at the U.S. Department of Justice. Prior to that, there had not been a group dedicated within the government to look at human rights concerns and applications for asylum within the U.S. So, I was part of the initial group in New York about five years out of law school. Prior to that, I worked for two years at a big law firm doing some work in international law. Then I spent two-and-a-half years at the Peace Corps as an attorney with their Office of Inspector General.

NK: How have your diverse life experiences and perspectives helped you make thoughtful and reasoned judicial decisions?

Judge Tsankov: Everybody brings their personal experiences to every role they play in life. As an immigration judge, you must also, of course, fit within the responsibilities of the position. So, I, personally, have a natural interest in understanding the immigrant experience. I’m married to an immigrant; while in law school, I took courses in international law and served on my law school’s international law journal; and I completed a master’s degree in international relations in foreign affairs. So, I’m drawn to these topics. I can’t say that it really informs one’s decision making on the bench. But I can say that it makes the role one that animates me professionally. It is a welcome responsibility to serve in this role because I have such a strong connection to and admiration for the challenges that so many people are going through as they embark on any immigration process.

NK: Why did you get involved with FBA, and why do you engage in the FBA’s D&I efforts?

Judge Tsankov: Very early on in my career, I realized that participating in organizations, especially national organizations, would be helpful not only for my career in terms of networking, but also just to develop me as a better lawyer. So, I joined the Federal Bar Association and immediately joined the Immigration Law Section. And then over time, I realized there were many additional ways I could serve the FBA membership. Within the Immigration Law Section, I was able to lead a multi-day, multi-track conference offering continuing legal education to a wide variety of attorneys, as many were participants working in government, with non-governmental organizations, some were working in academia, and others were working in law firms. I later moved on to lead the FBA International Law Section, and to lead a number of programs on international courts and tribunals. So, it’s through those types of experiences that I solidified my involvement in the Federal Bar Association. That ultimately led to my being elected to a position on the Board of Directors. While I’ve been at the Board of Directors, I’ve served as the board liaison to the FBA’s Diversity, Equity, and Inclusion committee. So, it’s a bit of a roundabout way that I ended up getting as involved in DEI as I have. But I’m telling you this background because diversity, equity, and inclusion issues are a part of every single thing you will do as a lawyer and as a participant in various organizations.

NK: What lessons would you say you’ve taken away about diversity and inclusion from your time both as an immigration judge and a pro bono liaison judge?

Judge Tsankov: I try to focus on inclusion in every aspect of my work and in every role that I have in the community. One of the roles that I currently have is president of the National Association of Immigration Judges. I founded and chair that group’s Diversity, Equity, and Inclusion committee. In addition, I hold various leadership roles

within the Department of Justice’s Gender and Equality Network. So, what do you do when you’re in those various roles and you’re trying to really influence and support greater levels of inclusion? Well, one of the options you have is publishing articles. Recently, I published an article in The Federal Lawyer magazine on the work that we have been doing on diversity and inclusion. In addition, I have a leadership role at the National Association of Women Judges. So, we reprinted that article in their journal, Counterbalance, as well, because that group is an FBA partner, and they have an interest in the same topic. I was able, through one article, to reach two very interested audiences that might not have had much knowledge about the work that attorneys at the Department of Justice are doing through DOJ Gender Equality Network and NAIJ’s Diversity, Equity, and Inclusion committee. I guess the message here is get involved in organizations because with them supporting you, you have a broader impact and can more successfully improve and address diversity and inclusion efforts.

NK: How did you get involved with working with the United Nations? What kind of work do you do with them?

Judge Tsankov: In my NAIJ capacity, I am a member of the American Bar Association’s Representatives and Observers to the United Nations. Recently, I was very involved in organizing an event at the United Nations Commission on the Status of Women where we talked about judicial independence and the rule of law in the context of the judiciary. That program considered how a diverse judiciary inspires confidence in outcomes. And you need that confidence in the fairness of outcomes in order to ensure that the parties feel as if the rule of law has been respected. Fortunately, over the past several decades, we have seen the entry of many women judges into spaces where they had historically been excluded. It is very important to ensure that a wide range diversity should be reflected in our judiciary so that the people that are putting their faith in the system have confidence that it upholds the rule of law. Our systems are stronger when stakeholders know that the individuals making decisions are also a reflection of them. That is why I devote a lot of attention to trying to support diversity, equity, and inclusion in the judiciary, including at the immigration court.

NK: What advice do you have for law students and new lawyers on succeeding in the legal profession?

Judge Tsankov: I would say get involved in organizations to the extent that you have the bandwidth, such as the FBA, the ABA, National Association of Women Judges, your local and regional bars, and affinity bars. Get involved in as many as you feel that you can participate in in a meaningful way. I find that there is a lot of crossover in my role in all of these various organizations.

NK: What’s your favorite hobby?

Judge Tsankov: I have always been involved in the arts. My husband is an actor, and years ago we staged a play together in Washington, D.C. So, these days, he’s still involved in film and television. And I do a lot of work with him preparing for auditions, and parts that he has in various TV and film opportunities. It’s very much a family affair as every week we all—including our two children living in NYC, serve as readers for him in his auditions. That requires a lot of devotion, time, and effort. And it’s fun and creative.

Endnotes

1Judge Mimi Tsankov speaks in her capacity as President of the continued on page 40

The Glass Cage: Unleashing America’s Underrepresented Innovators

DANIEL SLOAN

In the patent game, there are more losers than winners.1 During the last decade, there has perhaps been no bigger loser than the small inventor.2 And even if small-time inventors do manage to produce their golden goose, they often lack the time and financial resources to protect their egg-layer. Congress recently sought to change that by appending two bipartisan bills3 affecting intellectual property to the Consolidated Appropriations Act, 2023. This article addresses one of those bills, The Unleashing American Innovators Act of 2022. President Joe Biden signed the Consolidated Appropriations Act, 20234 into law on Dec. 29, 2022. Despite best intentions, a glass cage5 persists.

At its core, the act tries to make the U.S. Patent and Trademark Office (USPTO) more accessible to America’s innovators regardless of geographic or demographic origin.6 It has seven sections: (101) the short title, (102) definitions, (103) satellite offices, (104) community outreach offices, (105) patent pro bono programs updates, (106) pre-prosecution assessment pilot program, and (107) small and micro entity fee reduction. Section 101 gives us the appropriate cita-

tion for the act as a division of the Consolidated Appropriations Act.7 Section 102 expands the definition of “patent pro bono programs” and creates a new “Southeast Region of the United States” for the USPTO.8 The definitions section also explains that the term “Office” means the USPTO and that “Director” means the Under Secretary of Commerce for Intellectual Property and Director of the Office.9 Thus, this article uses the terms Office and USPTO interchangeably and uses the term Director as used in the act.

Connecting with the Patent Office:

Outreach is the focus of § 103. The previous congressional statutory note from the 2011 Leahy-Smith America Invents Act (AIA)10 established a satellite office program. Its purpose was to “increase outreach activities to better connect patent filers and innovators with the Office.”11 As a result, the USPTO now has offices in San Jose, CA, as well as Dallas and Denver.12 These offices were selected under the AIA’s consideration guidelines and followed the 2010 selection of Detroit as the first USPTO satellite office.13 These offices have been a success.14 Even so, “millions of potential American inventors from underrepresented groups” have been left behind.15

Section 103 directs the USPTO to increase outreach activities, consistent with the AIA’s previous congressional note. The amended note in § 103 is broader in scope than the AIA note, referring to “individual inventors, small businesses, veterans, low-income populations, students, rural populations, and any geographic group of innovators” that the Director determines are underrepresented. It also expands the AIA’s instruction to “enhance patent examiner

retention” to retain administrative patent judges and examiners from broader economic, geographic, and demographic backgrounds.16

What’s more, this section reflects congressional intent to create satellite offices that reach underrepresented communities without unmooring the USPTO from community institutions. Section 103 specifies the existence of “anchor institutions,” like hospitals and institutions of higher education, as factors the USPTO will consider when selecting sites for new satellite offices.17 More specifically, the act instructs the Director to complete a study to determine whether more satellite offices are necessary to achieve the original aims of the AIA’s satellite office subsection and to achieve increased participation by diverse innovators in the patent system.

The new “Southeast Region of the United States” created in § 102 of the act includes Virginia, North Carolina, South Carolina, Georgia, Florida, Tennessee, Alabama, Mississippi, Louisiana, and Arkansas. Essentially, this takes all the southeastern parts of the former Texas and East Coast regions and combines them into a single sixth region. So, the act’s satellite subsection creates the southeast regional office and instructs the Director to consider the existence of patent-intensive industries near proposed new satellite offices. The Director must consider how many research-intensive institutions are near the site as well as how the state and local government already support intellectual property intensive industries near a proposed site before selecting a new site for the southeast region’s satellite office.18 The Director has three years to establish the new office.

Section 104 works together with the AIA’s establishment of satellite offices by establishing a new type of outreach office. It instructs the Director to establish at least four “community outreach offices” within the next five years.19 At least one of these offices will be in a new northern New England region, serving Vermont, New Hampshire, and Maine. The Director must give preference to a location that has at least one public and one private institution of higher education.20 The location should also have fewer than 15 patent attorneys.21 The Director must also give preference to a location where women, minorities, or veterans own less than 45% of businesses.22

The purposes of these community outreach offices are to assist with the AIA’s satellite office outreach activities and to partner with local groups (local community organizations, higher education, businesses, and so on) to create community-based programs.23 Although the act uses the term “institute of higher education” several times, it does not define it. In comparison, the AIA, at 35 U.S.C.A. §§ 123, 273, uses the definition from the Higher Education Act of 1965, 20 U.S.C.A. § 1001(a). Because part of this act concerns micro entities, and the AIA section defining micro entities uses the definition from 20 U.S.C. § 1001(a), perhaps the USPTO will also use that particular definition.

The goal of having community outreach offices partner with local groups to create community-based programs is to provide education about the patent system and to “promote the career benefits of innovation and entrepreneurship.”24 The outreach offices will also educate underrepresented populations about the resources available to potential patent applicants, which relates to the goal mentioned in § 103.25

Though the act’s goals are admirable, I would like to bring attention to several minor issues. First, the USPTO already has a method to file applications electronically.26 Given this, the physical expansion of larger satellite offices into only a few areas makes little sense. If Congress’s aim is to increase innovation across the United States, it

makes more sense to establish smaller satellite offices in cities across the country rather than establishing the functional equivalent of innovation “super-markets.” Using a multiple “neighborhood market” sized office approach would do more to achieve Congress’s goal of reaching underrepresented groups. And while higher education deserves a place in the discussion, putting satellite and outreach offices in locations where there are already places of higher learning reinforces the idea that institutions of higher education are where innovation has to happen.

Further, prioritizing locations with 15 or fewer patent attorneys conflicts with the act’s main goal to increase pro bono involvement. Perhaps the new locations would bring in more attorneys after the fact. That assumes patent attorneys will prioritize USPTO’s locations instead of personal factors, like the presence of their extended family, the initial availability of jobs, and the status of industry in the area.

In sum, the act’s expansion of the satellite program is progress, but it also seems a bit misguided in that it adheres to some out-ofdate ideas about how innovation happens in 2023.

USPTO Studies:

Like the satellite program, the pro bono patent programs have expanded over a brief period.27 Even in the limited time the AIA-created programs have operated, they have “empower[ed] low-income innovators” while educating future lawyers.28 Along with the satellite office study and to build on the AIA’s initial success, § 105 requires the Director to complete a patent pro bono programs study within a year and submit the results to both the House and Senate Committees on the Judiciary. The study will assess (i) if patent pro bono programs sufficiently serve prospective and existing applicants, (ii) whether the programs are sufficiently funded, (iii) whether the patent pro bono program’s participation requirements deter prospective applicants, (iv) whether prospective inventors are aware of patent pro bono programs, (v) what factors deter attorneys from participating in these programs, (vi) whether the programs would be improved by expanding them to non-attorney advocates (presumably, patent agents), and (vii) any other issue the Director determines appropriate.29

Similarly, § 107 gives the Director two years to complete a study on the fees charged by the office and submit the results to the same legislative committees mentioned in § 105.30 The study will determine whether fees deter patent applications filings by small and micro entities, whether fees should match examination cost, what incentives are created by using maintenance fees to cover examination costs, and whether the assessment’s results suggest changing the office’s fee structure. For both the pro bono programs and fees studies, the Director will make recommendations for administrative and legislative action as appropriate. The Director will also work with the advisory council and other parties to update the patent pro bono programs in response. The Director will work to expand eligibility to people who live in a household where the gross household income is less than or equal to four times the federal poverty line.31 In 2023, that number is around $58,000 for a household of one.32 Between the three studies mandated in the act’s seven sections, the Office has an interesting supplemental workload ahead.

Immediate Impact of Practical Components:

The act’s final two sections have the most immediate relevance to practicing attorneys. Section 106 gives the Director a year to estab-

lish a pilot program to help first-time patentees assess their potential patent applications’ strengths and weaknesses. The Director will ensure the notification process advises prospective patentees that this assessment is not an official patentability ruling from the office. The Director will also establish the conditions to participate in the program and determine reasonable limitations on resources the patent office can dedicate to helping prospective patentees. As a component, the Director will establish procedures to refer patent applicants to legal counsel (including through the patent pro bono programs) and establish procedures to protect confidential information disclosed by prospective patentees.33

It is hard to anticipate the ramifications of the new pre-prosecution assessment pilot program. On one hand, it will, with any luck, do exactly what Congress aims with these amendments. That is, to break the glass cage and encourage innovation in underrepresented parts of the American population. If new inventors obtain information about their applications’ strengths and weaknesses prior to filing, they may become more knowledgeable of the patent system’s complexity. Inventors receiving positive feedback on their application who may have otherwise been on the fence about filing a patent application might be convinced to take the plunge. On the other hand, new inventors may receive false encouragement leading them to spend time and resources on a patent that will never be granted. In any event, attorneys advising new inventors will want to keep an eye on this program, as well as any interactions with the statutory prior art and disclosure requirements of 35 U.S.C. § 102.

Returning to § 107, Congress has increased across the board fee discounts to small entity and micro entity patent application fees from 50% to 60% and from 75% to 80%, respectively.34 In exchange for this reduction in fees, the act adds a penalty for asserting false entitlement to small or micro entity status.35 The Director will determine the fine, but it will be at least three times the amount that the entity failed to pay as a result of the false assertion.36 Patent attorneys have had the duty to investigate entitlement to claim small entity status since its inception.37 That said, these penalties add a client consequence bite to the Office of Enrollment and Discipline’s toolkit. There is no mens rea for this new requirement, so it doesn’t matter if the falsehood was known.

Kurt Vonnegut stated it well when he wrote, “[the] most destructive untruth is that it is very easy for any American to make money.”38 So too, to innovate. We live in a time of cutting-edge CRISPR39 advances and artificial intelligence. The wide-spread availability of these technologies may do more to decentralize the innovation monopoly than any legislative action. Thus, time alone will tell if the Unleashing American Innovators Act can smash the glass cage. Until then, the small inventor remains the biggest loser. 

Daniel Sloan, Esq. is a 2021 Washburn Law School graduate and a term clerk with Justice Melissa Standridge of the Kansas Supreme Court. He will join the New Lawyers Group at Jones Day’s New York, NY office in Fall 2023 with the intent to work primarily in intellectual property matters. Daniel thanks the Federal Bar Association, Ira Cohen, for inspiring him to submit an article for publication, and his colleague, Michael Raven for edits. He also thanks his wife, Jessica Sloan, for her love and support. The views expressed within this article do not reflect the views of the Kansas Supreme Court and are purely the author’s own.

Endnotes

1Richard Gruner, Does Anybody See What I See?: Abandoned Patents and Their Impacts on Technology Development, 11 NYU J. Intell. Prop. & Ent. L. 77, 83 (2021).

2See, e.g., Paul Morinville, Why the IP system works against the small, IpWatchdog (Feb. 13, 2018), https://ipwatchdog. com/2018/02/13/ip-system-works-against-small/id=93634/.

3The “Inform Consumers Act” is the other bill that affects IP in the consolidation bill and it is beyond the scope of this article.

4Consolidated Appropriations Act, 2023, Pub. L. 117-328, 136 Stat 4459. For clarity purposes, only the Unleashing American Innovation Act of 2022 is referred to as “the Act.”

5The term “glass cage” as used in this article is an extension of the “glass ceiling” concept. Instead of the invisible barriers to upward mobility in the professional world, the cage is a metaphor for invisible barriers that constrain innovation due to systemic differences in geographic or demographic origin that plague underrepresented American innovators. It encompasses not only the acknowledged barriers that deter those in certain demographics from professional success, but also those unacknowledged barriers so pervasive as to create an invisible, yet nearly inescapable cage.

6This article refers to the United States Patent and Trademark Office as “USPTO” and to the Under Secretary of Commerce for Intellectual Property and Director of the Office as “the Director.”

7The Act, supra note 4, at div. W, sec. 101.

8Id. § 102.

9Id.

10Leahy-Smith America Invents Act, Pub. L. 112-29, 125 Stat 284 [hereinafter AIA].

11Id. § 23.

12See USPTO locations, https://www.uspto.gov/about-us/usptooffice-locations

13U.S.C.A. § 1 Note, (c)(1)(B).

14Report on the Satellite Offices, prepared by USPTO, https:// www.uspto.gov/sites/default/files/aia_implementation/USPTO_ AIASatelliteOfficesReport_2014Sept30_Online.pdf

15See Steve Brachmann, Inventor Diversity Advocacy Group Launches ‘Patent Academy in Latest Effort to Reach Underrepresented Inventors, IpWatchdog (July 14, 2022), https://ipwatchdog. com/2022/07/14/inventor-diversity-advocacy-group-launchespatent-academy-in-latest-effort-to-reach-underrepresentedinventors/id=150223/

16The Act, supra note 4, at div. W, sec. 103(a)(1)(B).

17Id. § 103(a)(2)(C).

18Id. § 103(b)(2).

19Id. § 104.

20Id. § 104(a)(3)(B)(i)(I).

21Id. § 104(a)(3)(B)(i)(II).

22Id. § (a)(3)(B)(ii).

23Id. § (b).

24Id.

25Id. § (b)(3).

26See, EFS-Web Guidance and Resources, USPTO (last visited Feb. 14, 2023), https://www.uspto.gov/patents/apply/applying-online/efsweb-guidance-and-resources.

27Jennifer M. McDowell, Saurabh Vishnubhakat, The USPTO Patent pro Bono program, 7 Cybaris Intell. Prop. L. Rev. 1, 46 (2015). continued on page 40

The Intersection of Trade Secrets and Data Privacy in the Digital Age

The digital age has been turbo-boosted by remote work in the wake of COVID-19,

and value of information in every type of business. It is no longer a question of whether your business has valuable information to protect. The question is how to maximize and preserve the value of that information in conjunction with various emerging—and sometimes unexpected— legal considerations. In this article, we discuss the intersection of trade secrets and data privacy laws

Trade secrets are a vital part of a business’s intellectual property portfolio. Until 2016, trade secrets were primarily creatures of state law. All states except for New York—which relies on common law— and North Carolina—which has its own statute—have adopted some form of the Uniform Trade Secrets Act (UTSA). In 2016, Congress enacted the Defend Trade Secrets Act (DTSA), which for the first time provided a federal civil statute protecting trade secret rights. The DTSA co-exists and is closely aligned with the UTSA but has a handful of unique provisions, such as an ability to obtain an ex parte seizure order in certain circumstances and a grant of legal immunity

to corporate whistleblowers. The DTSA extended the Economic Espionage Act of 1996, which criminalizes certain trade secret misappropriations.

Both the UTSA and the DTSA generally define trade secrets as (1) information, that (2) has independent economic value (3) resulting from not being generally known, where (4) the owner of the information makes reasonable efforts or measures to maintain the secrecy of that information. Trade secrets can take a variety of forms. Iconic examples include the formulation of Coca-Cola and the algorithm behind the New York Times bestseller lists. The vast majority of trade secrets are the bread and butter of everyday business, such as manufacturing details, customer lists, and methods of combining and processing data. Whether iconic or not, a business’ efforts to understand and protect the value of its trade secrets can prove to be a valuable investment of legal resources.

Many companies had a crash course in data privacy with the General Data Protection Regulation (GDPR), which went into effect in the European Union in May 2018. The goal of the GDPR is to enhance individuals’ control and rights over their personal data and simplify the regulatory environment for international business. The GDPR protects eight fundamental rights of “data subjects,” i.e., people whose data is collected: (1) the right to be informed about the collection and use of personal data (GDPR articles 12-14), (2) the right to access copies of personal data (GDPR article 15), (3) the right to rectification of inaccurate or outdated personal information (GDPR

TARA NORGARD AND HARPREET MAHAL

article 16), (4) the right to be forgotten and have personal information deleted (GDPR article 17), (5) the right to data portability, allowing transfer of personal data to another controller or to the data subjects themselves (GDPR article 20), (6) the right to restrict or suppress processing of personal data (GDPR article 18), (7) the right to object to processing of personal data (GDPR article 21), and (8) the right to object to automatic processing of personal data (GDPR article 22). The GDPR also protects the right to withdraw previously given consent to process personal data (GDPR article 7).

GDPR recitals, much like contract recitals, provide context for the GDPR’s binding articles. Recital 63 addresses the intersection of trade secret rights and the rights of the data subject and sets forth a balancing approach. Specifically, recital 63 states:

That right [of access] should not adversely affect the rights or freedoms of others, including trade secrets or intellectual property and in particular the copyright protecting the software. However, the result of those considerations should not be a refusal to provide all information to the data subject.1

In the United States, an evolving patchwork of federal and state laws and regulations governs data privacy. On the federal level, there are several sector or target-specific laws related to privacy, including the Fair Credit Reporting Act, the Health Insurance Portability and Accountability Act, the Gramm-Leach-Bliley Act, the Children’s Online Privacy Protection Act, and the Video Privacy Protection Act, along with their amendments and associated administrative rules. The American Data Privacy and Protection Act (ADPPA), a bipartisan attempt at a comprehensive federal privacy law, was introduced and passed through the House Energy and Commerce Committee last year—the closest a comprehensive federal privacy law has gotten to a floor vote. However, disagreements still exist over federal preemption and enforcement mechanisms. This year, during his State of the Union Address, President Biden said “[i]t’s time to pass bipartisan legislation to stop Big Tech from collecting personal data on kids and teenagers online, ban targeted advertising to children, and impose stricter limits on the personal data these companies collect on all of us,” demonstrating continued interest in passing a federal privacy law related to data collection.

Many states have introduced comprehensive state privacy bills, although only California (January 2020), Virginia (January 2023), Colorado (July 2023), Connecticut (July 2023), and Utah (December 2023) have passed legislation. California, in particular, with its second-generation data privacy law, California Privacy Rights Act (CPRA or “Proposition 24”), which went into effect in January 2023, may foreshadow the way other states will handle the right to data access and protection of trade secrets as these laws continue to emerge. California’s current data privacy law does not mention trade secrets. However, the Office of the Attorney General was tasked with “[e]stablishing any exceptions necessary to comply with state or federal law, including, but not limited to, those relating to trade secrets and intellectual property rights… with the intention that trade secrets should not be disclosed in response to a verifiable consumer request.”2 During the public comment period, the OAG rejected an outright carveout for trade secrets, but echoed a GDPR-like balancing test, noting that “the interests in favor of protecting trade secrets must be weighed against the need for disclosure.”3 Under the CPRA, rulemaking authority is given to a new administrative agency, the

California Privacy Protection Agency. The agency completed its public comments period in late 2021 and is now holding informational hearings before commencing formal rulemaking.

Trade Secret and Data Privacy Considerations in Litigation

In the United States, the intersection of trade secrets and data protection laws is an emerging—and critical—area to consider, both in litigation and investigations. For example, in Pure Power Boot Camp Inc. v. Warrior Fitness Boot Camp LLC, an employer suspected former employees of trade secret misappropriation in opening a competing military-style gym.4 The former employee had sent emails detailing actions supporting misappropriation claims, and the employer sued for trade secret misappropriation. Instead of filing a case and accessing information through discovery, the employer obtained access to emails in the former employee’s personal email accounts and new work account using saved password information on the former employee’s company device. The former employee countersued for violations of the Stored Communications Act (SCA). The court ultimately disallowed the use of that evidence for anything other than impeachment.5

A different set of facts—and outcome—was presented in Sunbelt Rentals Inc. v. Victor, where a former employee had linked a personal Apple account with an employer-owned iPhone and iPad.6 The employee returned the devices to his former employer without unlinking them and proceeded to link a new iPhone from his new employer to that same personal Apple account. As a result, the employee’s communications with his new employer were delivered to the former employer’s devices. When sued for trade secret misappropriation, the former employee alleged violation of the SCA. The court found that the passive nature of receiving those messages did not violate the SCA, and the evidence was allowed to be used in the case.7

Trade secret protection can also be implicated when investigating data breaches. When data breaches occur, companies oftentimes hire forensics services, either directly or through a law firm, to produce forensic reports on the data breach and help inform the path forward. These reports can contain—and if disclosed, have the potential to reveal—information related to a company’s trade secrets.

Company investigations of data breaches may implicate the work-product doctrine and the attorney-client privilege. For example, a 2013 cyberattack on Target led to the data breach of customer credit card information. In litigation that followed, there was a dispute over the production of documents created by the company’s Data Breach Task Force, which was created under the direction of Target’s lawyers, to understand risk and allow attorneys to provide legal advice in anticipation of litigation. The court in In re Target Corp. Customer Data Sec. Breach Litig. upheld an assertion of privilege in the second track of Target’s two-track approach to its data breach investigation: (1) an investigation for ordinary business purposes which has the potential to be produced in litigation and (2) an investigation to help lawyers provide legal advice in anticipation of litigation.8 Many companies have relied on a similar two-track approach since In re Target, with the first track being subject to discovery in litigation, and the second track benefiting from attorney-client and work product protections.

It is important to recognize that the two-track investigative approach may not be followed in all cases. One example of this is Wengui v. Clark Hill, a case where Guo Wengui, a billionaire property

developer accused of corruption in China, sued Clark Hill, the firm representing him for his asylum application in the United States, over a data breach that led to the online publication of his confidential information.9 Clark Hill hired a company through external counsel to generate a forensic report and asserted that its cybersecurity vendor had separately worked to investigate the attack and remediate for business purposes. In evaluating whether to grant a motion to compel production of documents, including the forensic report, the court noted that the legal advice track report included recommendations for technical security remediation, and that the report had been shared with firm leadership and IT (not just the attorneys), and found that neither work product doctrine nor attorney-client privilege applied to the report.10

These cases show that although it is still prudent to segregate the investigation of a data breach for purposes of business versus legal considerations, leaving trade secret information out of all forensic reports, if possible, may be wise.

Lessons from the EU

Several cases in the European Union have applied the balancing approach set forth in the GDPR, providing potential insight as to how courts in the United States might balance data privacy and trade secret rights under emerging U.S. law.

In an administrative action in Austria, a data subject sought access to how marketing scores determining the likelihood that a subject belonged to a demographic group were calculated. The company refused on trade secret grounds.11 The data protection authority in Austria, Österreichische Datenschutzbehörde, applied a balancing approach, ruling that the company did not have to disclose the algorithm or source code, but did have to disclose which input variables were used and why, the effect of the variable on outcome, the list of possible outcomes, and an explanation of the result.

A similar result came out of Denmark in 2019, where a pension company refused disclosure of a consultant’s health assessment of a data subject based on a claim that the information was a trade secret.12 The Danish data protection authority, Datatilsynet, recognized the interest of protecting internal decision-making and articulated a standard requiring “imminent risk of harm” to the trade secret in question. The matter ultimately was resolved with the company’s inability to establish that the information in question was a trade secret.

In Amsterdam, a Dutch court examined the risk to trade secrets when, in response to a data subject’s request and alleged violations of the GDPR, Uber refused to disclose information about an automated process to detect fraud and terminated driver accounts.13 The company argued that providing the information would risk divulging trade secrets about its anti-fraud process. The court found that the rideshare company was not required to provide the extensive disclosures required for automated decision-making, however, it did order the company to provide data subjects access to the personal data used for the decision to deactivate the data subject’s account in a way that would allow verification of the correctness and lawfulness of the data processing.

Conclusion

The juxtaposition of trade secrets, data privacy, and data security considerations creates both opportunities and risks for businesses. A recognition and understanding of this intersection will serve busi-

nesses well as data, and the laws that govern its value and protection, continue to emerge in the information age.

Tara is a partner with Carlson Caspers and a litigator focusing on intellectual property and high-stakes business matters in district and appellate courts and arbitrations across the country.  In addition to her primary IP practice, Tara has served as general counsel for the Receiver in the $160 million Trevor Cook Ponzi scheme, where her work on behalf of the Court and with federal agencies has earned her high regard for her work on sophisticated fraud and financial matters.

Tara founded and is immediate past-chair of the FBA’s D&I Committee and has served as President and on the Board of the Minnesota FBA Chapter for over a decade. Harpreet Mahal is an associate at Carlson Caspers, an intellectual property boutique law firm in Minneapolis, MN.  He attended the University of Minnesota Law School, where he gained experience through the Intellectual Property Moot Court, the Intellectual Property and Entrepreneurship Clinic, and the Clemency Project Practicum (now the Clemency Project Clinic).  Prior to law school, he received an MS from Wayne State University School of Medicine, where he was in a neuroscience lab focused on traumatic brain injury and spinal cord injury research.  Harpreet is active in several professional organizations including the Minnesota State Bar Association, the Minnesota Asian Pacific American Bar Association, and the Federal Bar Association.

Endnotes

1Council Regulation 2016/679, On the Protection of Natural Persons with Regard to the Processing of Personal Data and the Free Movement of Such Data (General Data Protection Regulation), 2016 O.J. (L 119) 1, 12.

2Cal. Civ. Code §1798.185(a)(3).

3Cal. Office of Atty. Gen., CCPA Final Statement of Reasons, Appendix A, Response #323.

4Pure Power Boot Camp, Inc. v. Warrior Fitness Boot Camp LLC, 587 F. Supp. 2d 548 (S.D.N.Y. 2008).

5Id. at 571.

6Sunbelt Rentals, Inc. v. Victor, 43 F. Supp. 3d 1026 (N.D. Cal. 2014).

7Id. at 1032.

8In re Target Corp. Customer Data Sec. Breach Litig., MDL No. 142522, 2015 WL 6777384, at *3 (D. Minn. Oct. 23, 2015).

9Wengui v. Clark Hill, PLC, 338 F.R.D. 7 (D.D.C. 2021).

10Id. at 14.

11DSB Austria 2020-0.436.002 DSB-D124.909.

12Datatilsynet 2019-31-1424.

13Rb. Amsterdam C/13/692003/HA RK 20-302.

When Body Art Becomes Ta-Too Much Legal Trouble

Resolving the Copyright Uncertainties of Tattoo Art Applied to the Human Form

SARA GOLD

Under the law, is a tattoo owned by the tattoo artist, by the tattooed person, or both?

Federal courts are increasingly grappling with these questions in tattoo-related copyright cases. Tattoo designs are two-dimensional art, and federal copyright law protects original pictorial works against unauthorized copying, reproduction, distribution, or public display unless a valid defense such as fair use applies.1 Unlike most pictorial art, tattoos are inked onto a living person, who has a personal right to their own image and likeness. Tattoos present an interesting intersection of these rights when it comes to original art that is inked onto the human body.

Presently, the federal courts cannot agree on whether a tattooed celebrity impedes the artist’s rights by authorizing third-party depictions that include the tattoo(s) as part of the celebrity’s own likeness. Notably, the courts disagree as to whether a tattoo artist grants an implied license to the client by virtue of integrating the artwork in ink onto the person’s body. As a result, there have been inconsistent outcomes on very similar matters.

The recent plethora of disputes involving sports video games makes the need for a unifying doctrine even more apparent. There should be a federal doctrine that, while not entirely denying copy-

right protection in tattoo art, rejects those copyright claims that are based on the accurate appearance of a person’s real-life tattoo as part of the person’s likeness.

To avoid conflict with patent law, the Copyright Act avoids protecting purely functional aspects of useful articles onto which artwork is emblazoned.2 A tattoo depicted on the celebrity, just like in real-life, can be seen as functional—serving as a personal identifier rather than as artistic expression that the Copyright Act strives to protect. A context-specific functionality approach can permit functional tattoo design uses while still prohibiting infringements of tattoo art for non-personal-identification purposes. Not only does this solution fit the goals of the Copyright Act, but it also promotes celebrities’ freedom to enter into third-party media contracts—as well as the public’s desire to consume celebrity culture.

Sports Video Game Controversies

A federal jury in Illinois recently found sports video game producer Take-Two Interactive, Inc. liable for copyright infringement because it depicted wrestler Randy Orton’s six tattoos as part of his avatar in the WWE 2K video game.3 The $3,750 verdict, which Take-Two is currently contesting, flatly contradicts an earlier New York federal decision that permitted Take-Two’s depictions of tattoos on NBA basketball players in a different game.4

The recent $3,750 jury verdict came from the Southern District of Illinois following the court’s denial of Take-Two’s summary judgment motion two years prior.5 Ruling on the motion, the court declined to find as a matter of law that Orton had an implied license to authorize the use of his tattoos in media as part of his overall likeness.6 The outcome of this issue, the court held, was based on

the understanding between Orton and his tattoo artist at the time the tattoo was created.7 Because the parties did not outright discuss these issues at that time, the existence of an implied license was an unresolved factual question suitable for a jury, the court held.8

Yet six months prior to that summary judgment decision, the Southern District of New York had ruled oppositely in a similar copyright dispute over Take-Two’s NBA 2K video game. The court granted summary judgment to Take-Two, holding that absent a contrary agreement, the players had an implied license to authorize the commercialization of their tattoos as part of their image/likeness.9 No different from the Orton case, the NBA players “neither requested nor agreed to limit the display or depiction of the images tattooed onto their bodies.”10 The plaintiff tattoo agency Solid Oak Sketches chose not to address these issues, even though it knew from the outset that the NBA players were “likely to appear in public, on television, in commercials, or in other forms of media,” the court said.11 As a result, NBA 2K was non-infringing as a matter of law.12

As commentators have noted, the inconsistent rulings across jurisdictions make it difficult for celebrities, tattoo artists, and entertainment companies to understand their legal obligations are when for depictions of tattooed celebrities.13 Due to this legal uncertainty, experts are advising attorneys that the safest course for media/ entertainment producers is to obtain licenses for tattoos wherever possible.14 However, a national consensus on this issue is desirable. If this inconsistency is to be resolved, it should be resolved in favor of permitting individuals to commercialize their image and likeness, including a faithful depiction of the tattoos that exist on the person’s body.

Context-Specific Copyright Enforcement Eligibility

Implied license is an imperfect framework to apply to the intellectual property implications of a tattoo artist inking a tattoo onto a client. Contract law is based on a “meeting of the minds;” because tattoo artists and clients rarely negotiate the copyright implications of the tattoos, there is no real factual basis to infer the parties’ actual intent, implied or otherwise. Some courts have deferred this issue to the jury on the basis of it being a factual question;15 however, in these cases, juries are no better equipped than the court to decide whether or not the parties specifically intended for the client to be able to commercialize his/her likeness without further compensation to the artist.

The better approach, under a functionality approach, is to reject copyright claims against tattoo depictions within true-to-life portrayals of the tattooed person. Other, non-functional, uses of the tattoo art that lack the same purpose of realism would still be potentially actionable under copyright law.

The Copyright Act already applies context-specific analysis to identify the copyright-enforceable elements of useful articles and architecture. Both functionality and public access considerations support the exemption of tattoos from copyright liability when used as part of celebrity depictions.

Tattoos are Functional and Unenforceable When Depicted as a Celebrity’s Personal Identifier

Copyright scholar David Nimmer first addressed functionality concerns with copyright protection of tattoos more than a decade ago in the context of a Mike Tyson tattoo dispute.16 He, however, posited that tattoos are wholly ineligible for copyright protection, a position that other scholars at the time viewed as extreme.17

Years later in Star Athletica v. Varsity Brands, the U.S. Supreme Court took a more nuanced, context-dependent approach in relation to a copyright dispute over cheerleader uniforms.18 In oral argument, the Court acknowledged the unique difficulty of evaluating art copyrightability when it comes to two-dimensional art that is “meant to fit onto a human body in a particular way.”19 The Court discussed the possibility that, in a useful article, the functionality of a design may depend on where the design appears. The attorneys and justices used camouflage designs as an example. A camouflage design, when used on military uniforms, may be functional and necessary as a means of concealment; the same design, when used on a lunchbox, is purely decorative.20

Not unlike a camouflage design on a military uniform, celebrity depictions that include the celebrity’s tattoos do so to accurately depict the real-life person, rather than to display the art for art’s sake. For much the same reason, the Ninth Circuit permitted registered trademarks to appear as minute parts of the real-world landscapes shown in Take-Two’s Grand Theft Auto video games.21 The fleeting appearance of a tattoo on an athlete in a sports game is qualitatively no different than the fleeting appearance of a trademarked establishment in a Grand Theft Auto game. Like in trademark law, verisimilitude in the copyright context can be considered a non-infringing functional use.

Notwithstanding, under this framework, tattoo depictions that depart from realism could still be copyright actionable, including uses that are either (a) not associated with the actual tattooed person, or (b) associated with the actual tattooed person but do not faithfully depict the tattoo as it appears on the real-life person. In either of these two scenarios, the functional identification quality is absent, making the use solely artistic and potentially actionable as infringement.

An example of a non-functional use is the tattoo design that Cardi B controversially borrowed to create cover art for her album, prompting a high-profile federal lawsuit in the Central District of California that received a jury verdict in late 2022. In Brophy v. Almanzar, Cardi B admitted that her design team found an image of plaintiff Brophy’s tattoo, copied it, made some alterations, and transposed it onto the bare back of a male model who was not Brophy.22 Rather than the tattoo artist suing for copyright infringement, Brophy himself sued for violation of his right of publicity. He argued that the elaborate back tattoo uniquely identified him and created the false impression that he was the man depicted on the album cover engaging in a sexual act with Cardi B.23 Ultimately, the jury found in Cardi B’s favor on the basis of fair use.24 Had the tattoo artist been inclined to sue, this would have exemplified a non-functional use of the tattoo design, for Cardi B’s team pilfered Brophy’s tattoo not to depict Brophy, but simply as a shortcut for finding an appropriately tattooed model or commissioning new artwork.

Real-Life Depictions Promote Public Access to Celebrity Culture

In addition, there are also public interest policy reasons supporting liability-free depictions of tattoos depicted as part of the person. The Copyright Act already disclaims liability for portrayals of public architectural works that include copyrightable artistic elements. Just like public buildings, celebrities are equally within the public zeitgeist and should be similarly copyright exempted to promote right of access to popular culture.

Architecture itself is copyrightable and enforceable against infringement but with limitation.25 Per the text of Copyright Act § 120(a), a constructed work of architecture does not include the right to prevent others from visually portraying the architecture so long as the building in which the work appears is located in or ordinarily visible from a public place.26

Applying this rule, the Ninth Circuit Court of Appeals held in Leicester v. Warner Brothers that the film Batman Forever was permitted to show a series of sculptures because the sculptures were part of a work of architecture in downtown Los Angeles.27 The court made clear that a plaintiff who contributes copyrightable elements to a work of architecture would only have a potential copyright claim against a use that is “divorced from the context of the building in which it was embodied, i.e., on a poster, t-shirt, or other print media.”28 Because the film depicted the sculptures only in their real-life context, there was no viable copyright claim.29 Courts have since applied § 120(a) to murals painted on buildings, which is quite analogous to tattoos inked on celebrities.30

The purpose of § 120, which is to enable artists to portray publicly visible edifices, applies just as strongly—if not even more so—to public figures in our celebrity-obsessed culture.31 Scholars are already commenting that requiring licenses from tattoo artists in order to depict tattooed celebrities adds expense and legal risk for companies like Take-Two. If the process becomes too legally risky, this could disincentivize portrayals of certain celebrities and restrict the public’s consumption of celebrity content. Moreover, celebrities themselves might be disincentivized from getting tattoos if they fear that it would complicate their future legal obligations—which could ultimately hurt the tattoo industry greater than a lost licensing fee. In addition to functionality concerns, the public’s interest in consuming celebrity content supports exempting these depictions from copyright liability to the tattoo artists.

Conclusion

For tattoos that are permanently inked onto a human body, the challenge is determining where the artist’s copyright ends and the celebrity’s autonomy over his/her likeness begins. Perhaps this distinction need not be complicated. To prevent tattoo artists from continuing to pursue copyright damages based on realistic portrayals of celebrities, these types of uses should be exempted from liability to advance functionality and public access interests.

The beauty of the functionality distinction is the ability to permit celebrities to commercialize their real-life likeness while still protecting the tattoo artist’s right to prosecute other thefts of a tattoo design for solely artistic purposes like in Brophy. Another advantage is that functionality creates more legal predictability than a contract law approach. Implied license requires discerning the legal intent of the artist and client when that intent is usually absent; as a result, the ultimate outcome ends up devolving into a subjective judgment about whether or not the tattoo artist deserves to be compensated—accounting for inconsistent judgments in different districts. Functionality ensures more predictability by focusing on the practical use of the tattoo rather than speculations about intent.

This framework need not work to the disadvantage of tattoo artists. They can choose to either charge more for their services or contractually require further compensation for the client’s future appearances. Moreover, a default principle favoring the client’s freedom of contract would avoid placing third parties, like Take-Two, in

the middle of these disputes. Rather than burdening entertainment companies with extensive clearance checks, the responsibility should be on the celebrity to honor any agreements that exist regarding future compensation to tattoo artists.

Ultimately, the artist’s copyright can be properly limited to the tattoo design itself—not the presence of the tattoo on the client. Just like a uniform designer does not own the cheerleader and a muralist does not own the building, so too should a tattoo artist not by default be permitted to monopolize the tattooed person. 

Sara Gold is an intellectual property litigator in Southern California. This article is dedicated to her father, Dr. Corey Gold, who modelled excellence and always supported her in her personal and intellectual pursuits. He will be dearly missed.

Endnotes

1Copyright Act of 1976, 17 U.S.C. §§ 101-1332 (2012).

2See 17 U.S.C. § 101 (The artist’s copyright in a useful article, such as fashion, extends only to those independently copyrightable pictorial, graphical, or sculptural elements that are separable from the useful article itself.)

3Kyle Jahner, WWE Tattoo Verdict Fails to Settle Complex Copyright Question, BL (Oct. 24, 2022), https://news.bloomberglaw.com/ us-law-week/wwe-tattoo-verdict-fails-to-settle-complex-copyrightquestion.

4Id. Following the verdict, Take-Two moved for judgment as a matter of law on the basis that fair use applied and that, moreover, there was no factual or evidentiary basis for the jury’s finding that Take-Two earned $3,750 profit from the game’s inclusion of Randy Orton with his tattoo. See Defendants’ Motion for Judgment as a Matter of Law, Alexander v. Take-Two Interactive Software, Inc., 489 F. Supp. 3d 812 (S.D. Ill. 2020).

5Aaron Moss, Tattoo Feud: Artist’s Copyright Case (Inexplicably) Sent to Trial, Copyright Lately (Oct. 7, 2020), https://copyrightlately. com/tattoo-artist-copyright-case-wwe-2k/.

6Alexander, 489 F. Supp. 3d at 812, 819.

7Id.

8Id

9Solid Oak Sketches, LLC v. 2K Games, Inc., 449 F. Supp. 3d 333, 346 (S.D.N.Y. 2020).

10Id

11Id.

12As of this publication, yet another NBA 2K tattoo dispute is set to be tried in 2023 in the Northern District of Ohio, in which the court denied summary judgment to Take-Two in 2022 akin to the Randy Orton case. If the case is ultimately tried, it will be interesting to see whether this jury is as sympathetic to the tattoo artist as the jury in the Orton tattoo trial. Hayden v. 2K Games, Inc., No. 1:17CV2635, 2022 U.S. Dist. LEXIS 170098, at *23 (N.D. Ohio Sep. 20, 2022).

13Jahner, supra note 3.

14Id.; Lawful Masses with Leonard French, Tattooist Wins Copyright Lawsuit Against 2K Games, YouTube (Oct. 19, 2022), https://www. youtube.com/watch?v=UqhAQ9eXoj8.

15E.g., Alexander, 489 F. Supp. 3d 812; Hayden, 2022 U.S. Dist.

LEXIS 170098.

16Kathleen Wills, That Tattoo on Her Shoulder: The Intersection of Copyright Law & Tattoos, 7 Tex. A&M J. Prop. L. 622, 625-626 (2021).

17Declaration of David Nimmer supporting Warner Bros.’ Memorandum in Opposition to Plaintiff’s Motion for Preliminary Injunction, Whitmill v. Warner Bros., No. 4:11-CV-752 (Dkt. No. 306) (E.D. Mo. 2011); Yolanda King, The Challenges “Facing” Copyright Protection for Tattoos, 92 Or. L. Rev. 129, 156 (2013).

18Star Athletica, L.L.C. v. Varsity Brands, Inc., 580 U.S. 405, 412, 137 S. Ct. 1002, 1009 (2017) (citing 17 U.S.C. § 101).

19Transcript of Oral Argument at 39, Star Athletica, L.L.C. v. Varsity Brands, Inc., 580 U.S. 405 (2017) (No. 15-866).

20Id. at 30-31; see Mala Chatterjee, Conceptual Separability as Conceivability: A Philosophical Analysis of the Useful Articles Doctrine, 93 N.Y.U. L. Rev. 558, 568 (2018).

21E.S.S. Entm’t 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095, 1100-01 (9th Cir. 2008); see Sara Gold, Honey Badger Don’t Care, but the Legal Community Does, 19 WAKE FOREST J. OF BUS. & INTELL. PROP. Law 381, 386-87 (2019).

Profiles in D&I Leadership continued from page 27

National Association of Immigration Judges.  The views she expresses here do not necessarily represent the official position of the United States Department of Justice, the Attorney General, or the Executive Office for Immigration Review. The views represent her personal opinions, which were formed after extensive consultation with the membership of NAIJ.

22Brophy v. Almanzar, 2020 U.S. Dist. LEXIS 247903, at *6-*7 (C.D. Cal. Dec. 4, 2020).

23Id. at *3.

24Kyle Jahner, Tat on Cardi B Album Didn’t Flout Man’s Image Rights, Jury Says, BL (Oct. 24, 2022), https://news.bloomberglaw.com/iplaw/tat-on-cardi-b-album-didnt-flout-mans-image-rights-jury-says.

2517 U.S.C. §§ 113, 120.

2617 U.S.C. § 120(a).

27Leicester v. Warner Brothers, 232 F.3d 1212, 1219 (9th Cir. 2000).

28Mercedes Benz, USA, LLC v. Lewis, No. 19-10948, 2019 U.S. Dist. LEXIS 154818, at *14 (E.D. Mich. Sep. 11, 2019), citing Leicester v. Warner Brothers, 232 F.3d 1212, 1219 (9th Cir. 2000).

29Id.

30See Elizabeth Bourne, Architectural Works Copyright Protection Act, the Section 120(a) Limitation, and its Application to Murals, Colligan Law LLP (Jan. 31, 2023), https://insights.colliganlaw. com/post/102i6ph/architectural-works-copyright-protection-actthe-section-120a-limitation-and.

31Mercedes Benz, 2019 U.S. Dist. LEXIS 154818, at *14.

Nayeon Kim graduated from the City University of New York School of Law and currently works at the Bronx Defenders Civil Action Practice. Prior to law school, Nayeon worked with asylum seekers in El Paso, Texas and San Francisco. In California, Nayeon taught incarcerated students at San Quentin State Prison. During law school, Nayeon interned for the Advancement Project, Homeboy Industries, Public Defender Service of D.C., Southern Center for Human Rights, Center for Appellate Litigation, and the Southern District of New York.

The Glass Cage continued from page 31

28Id.

29The Act, supra note. 4, at sec. 105.

30Id. §107.

31Id.

32That number was calculated by multiplying the 2023 annual update to the Department of Health and Human Services’ Poverty Guidelines. See 45 C.F.R. pt. 1611, App. A (2023).

33Id. § 106.

34The Act, supra note 4, at sec. 107.

35Id.

36Id.

37See MPEP 509.03(a) (9th ed. Rev. 10 Oct. 2019), Duty to Investigate Entitlement to Claim Small Entity Status.

38Kurt Vonnegut, Slaughterhouse-Five, or, The Children’s Crusade: A Duty-Dance with Death, Delacorte (1969) at pg. 183.

39CRISPR stands for Clustered Regularly Interspaced Short Palindromic Repeats and it is a tool used in gene editing. For further information, see Questions and Answers about CRISPR, Broad Inst. (last accessed Feb. 14, 2023), https://www.broadinstitute.org/whatbroad/areas-focus/project-spotlight/questions-and-answers-aboutcrispr

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Remote Workers? Why They Matter for Venue in Patent Cases

FIONA BELL, PHILIP A. ECKERT, SHARON A. ISRAEL

Working from home exploded in popularity throughout the pandemic.

Remote working raised a host of new issues—both business and legal—for companies. However, there is one issue that may not occur to companies when considering their remote working policies: the effect remote workers may have on where a company can be sued for patent infringement.

Venue for patent infringement cases is different from venue in other federal cases, and litigants often spend considerable time and money fighting over venue in such cases, due to differences—real and perceived—between various district courts.1 Companies that may be subject to patent infringement actions should be aware of how the presence of remote workers, in conjunction with a company’s remote work policies, might affect the courts where they can (and cannot) be sued. Companies can use this knowledge to structure remote work policies in a way that helps prevent or minimize the risk of being subject to venue in district courts that the company may consider to be undesirable, and avoid surprise.

What companies may find surprising is that even a single employee working from his or her home may subject them to a patent infringement suit in the district court with jurisdiction over that area (assuming that infringement is alleged to take place in that district). Knowing when and how remote employees can create such a risk is important for companies facing frequent patent litigation. This

article explains patent venue law, and then provides considerations for companies with remote workers that wish to minimize risks associated with being sued in venues with which they have limited connection.

A (Very) Brief Primer on the History of Venue in Patent Infringement Cases

Congress made venue in patent infringement actions different from venue in other federal cases over 100 years ago.2 The patent venue statute states that: “any civil action for patent infringement may be brought in the judicial district [1] where the defendant resides, or [2] where the defendant has committed acts of infringement and has a regular and established place of business.”3 Since the late 1800s, the prevailing interpretation of the patent venue statute has swung like a pendulum, vacillating between extremely broad and quite narrow.4 In 1990, the “residence” prong of this test was interpreted broadly by the Federal Circuit, such that a plaintiff could generally maintain venue in any court that had personal jurisdiction over the defendant.5 As a result, companies were subject to patent infringement suits in district courts all over the nation—generally, wherever they sold or offered the product or service at issue.

However, in 2017, the pendulum swung back again, with the Supreme Court’s decision in TC Heartland. 6 The Court held that a corporation’s “residence” was limited to the state in which it was incorporated. Accordingly, under the “residence” prong of the statute, venue over a defendant was only proper in the district court(s) within the state in which it was incorporated.7

This caused litigants to refocus their attention on the second portion of the venue statute, which states that venue is proper in dis-

tricts “where the defendant has committed acts of infringement and has a regular and established place of business.”8 Notably, there is no required nexus between the required “acts of infringement” and the work or operations conducted at the “regular and established place of business.” All that is required is an allegation that infringement has occurred within the district, and that there is a single regular and established place of business of the defendant within that district. For example, if a company had a storefront selling goods in the district, it could be subject to litigation in that district, even though the store may not sell or have anything to do with the infringing product. So the question quickly became: “What, exactly, qualifies as a regular and established place of business”?9

Just four months after the decision in TC Heartland issued, the Federal Circuit provided an analytical framework for answering this question. In In re Cray, the court considered a case where a plaintiff had sued a defendant for patent infringement in the Eastern District of Texas based on the presence of two employees working remotely from their homes in that district.10 The court held that the district was not a proper venue for the case, and defined a three-part test for determining what constitutes a regular and established place of business: “(1) there must be a physical place in the district; (2) it must be a regular and established place of business; and (3) it must be the place of the defendant.”11 Broadly speaking, these steps require, respectively, a place that (1) is real, rather than “virtual”; (2) is somewhat fixed, or permanent, where business is conducted for the company; and that (3) the company has “ratified” as its own.12

Since In re Cray issued, there has been a large amount of litigation over what, exactly, qualifies as a “regular and established place of business” of a corporation, and district courts have been attempting to apply its analytical framework to a wide variety of scenarios. Often, courts have come to differing results. In response, the Federal Circuit has received many petitions for writs of mandamus on decisions related to venue. And the Court has granted a number of such petitions, helping to clarify what does—and does not—subject a company to venue.

Although litigation on this issue has cooled down somewhat, it is still frequently raised by those who have been accused of patent infringement (particularly in the Eastern and Western Districts of Texas), and the law is still developing with respect to remote workers. Although there were some cases dealing with “remote workers” prior to 1990, in the years just after TC Heartland and In re Cray, they generally pertained to sales people who resided and worked within a district, working at home and/or travelling to different sites within the district to make pitches or service customers there.13 Their presence in a district was often required by the company, as a part of their job, and—as a result—they often stored large amounts of “pitch” materials and/or equipment for display at their homes, and companies often reimbursed them for housing costs and/or equipment.14 As in In re Cray, some courts found that the homes of these workers constituted “regular and established places of business” of the company, and therefore subjected to the company to venue in that district—even if these persons were the only company employees located there.15

Then, in 2020, COVID-19 upended how we work, and the presence of “remote workers” became a much larger (and thornier) issue with respect to venue in patent cases.16 Remote workers are no longer just sales people—they have every type of role, from engineer to accountant, and the company may not need them to reside or

work in any particular location, and can allow them to work from a location of their choosing. Accordingly, courts have now been forced to wrestle with the issue of when—and how—the presence of these broader categories of remote workers within a district can subject a company to venue there.

When Does A Remote Worker’s Location Count as a “Regular and Established Place of Business”?

Decisions from district courts (as well as orders on petitions for writs of mandamus from the Federal Circuit) have developed some basic guideposts for interpreting and applying the three part test set forth in In re Cray with respect to remote workers In this article, we refer to those parts as the (1) “physical place” requirement, (2) the “regular and established” or “fixed” place of business requirement, and (3) the “of the defendant” or “ratification” requirement.

In general, remote workers or, rather, the places they work from, are almost always going to meet requirement (1). Remote workers that are required to reside and work in that location (or at least in the district) are likely to meet requirement (2). However, if they are not required to live or work there, and/or do not routinely work from any one location, then their presence may not be deemed sufficiently “fixed,” and thus fail to meet requirement (2). Accordingly, the contents of employment agreements and company policies can be determinative with respect to this requirement. The most contentious (and opaque) part of the test is, at present, requirement (3)— whether the physical place where a worker performs his or her work is deemed to be “of the defendant.” This is a fact specific inquiry, often depending on whether the company pays for the “physical place,” what—and how much—equipment the company supplies or pays for at that place, and the degree to which it exercises control (if any) over that place. We discuss each of these requirements in more depth below.

A Physical Place

Courts have found that a locker,17 a shelf in a retail store,18 and a server on a shelf in a data center qualify as a “physical place.”19 However, a “physical place” is more typically something like an office building, or a home, or a stall at a market. With respect to remote work, any place a worker sits to do their work could be considered a “physical place” sufficient to meet the requirements of In re Cray. This could include a home, a co-working space, or even a coffee shop or park. Accordingly, it is highly likely that just about anywhere a remote worker works would be considered a sufficient “physical space” for venue.20

A “Fixed” Place of Business

Anywhere a remote employee performs work for his or her employer will likely be deemed a place where business is being conducted, and thus a “place of business.” Accordingly, the question with respect to this requirement is whether that location is sufficiently “fixed.” This prong requires analysis of the “permanence of the location, whether the activity at the location is sporadic, and, if the place is an employee’s home, whether the employee can move out of the district without the approval of his employer.”21 In other words, if a remote worker generally works in a single place, or even a collection of nearby places, courts will likely consider it fixed even if it switches between a house, coffee shop, and a park with some regularity.22 What remains unclear is if a remote worker moves around often, for example, using AirBnb, or similar, to work one month in Austin, one month in San Francisco,

and another month in Boise. Such a work pattern may indeed be too “sporadic” to constitute a fixed place of business.23

Courts have held that the mere presence of remote employees within in a district is not sufficient to meet this requirement.24 If employees are allowed to move out of a district (or state) without affecting their job—that is, a company does not require or condition their employment upon residing within that general area or state, then the place where they work may not be deemed sufficiently “fixed” for the purposes of venue.25 This fact also weighs against the third prong, making it less likely the company has ratified the home office.26

A Place “Of” or “Ratified By” The Defendant

Even if employees work (that is, “conduct business”) in a “fixed” physical place, the company must be deemed to have ratified that place as its own, in order for that place to subject the company to venue within that district. Courts have found that a company has “ratified” a place as its own when it owns or leases that place, exercises control over it, holds it out as its own, and/or stores (or pays for) company materials there.27 However, courts have varied over the amount of control, the amount and type of equipment, and the type of “reimbursement” that are sufficient to meet this requirement.28 Control is not evidenced by simply employing people at a certain site. Merely paying a few employees that work at a third-party site the defendant does not otherwise control does not make the third-party site ratified by the defendant. Instead, such an arrangement only shows a “traditional arms-length contractual relationship,” not any control strong enough to show ratification.29 Section III, below, discusses further factors that contribute to ratification.30

It remains to be defined exactly how much company property must be stored in the home to count as ratification, but there are guideposts. A single salesperson’s home office was “of the defendant” in RegenLabs due to storage of sales demonstratives there. In other cases, remote salespeople’s home offices were not found to be ratified where they did not store any inventory or demonstratives there. This begs the question of how much company equipment is enough. Presumably, in Greatgigz, and similar cases, where the home offices were found to be not “of the defendant,” the home employees still used some company equipment, such as their work computers. But these regular, everyday tools of modern knowledge work, like computers or printers, do not appear to count as company equipment.31

There may be a “specialized equipment” test developing in this regard; how specific to the job the company equipment is may matter. The Federal Circuit recently denied a petition for writ of mandamus to transfer venue out of a district where the defendant had a remote employee who stored specialized company equipment stored at their home. The quality and quantity of the equipment drove the court’s reasoning. The opinion meticulously listed each item used for testing specialized electronic power supplies, counting “two oscilloscopes, four to five power supplies, two electric loads, a logic analyzer, a soldering iron, a multimeter, a function generator, three to five samples of microcontrollers, MOSFETs, five op-amps ten to fifteen comparators, twenty inductors, and fifty sample demonstration boards.” The court determined this much equipment, when provided by the company, was sufficient to ratify the employee’s house as a place of the defendant, thereby making it a regular and established place of business.

Such a test may limit options for companies in technical fields, or those that sell goods as opposed to services. In fact, on denial of

a petition for writ of mandamus, one judge dissented, arguing such an application threatens to turn the ratification requirement into a “leaky sieve” that can “accommodate avoidance of the basic requirements of the statute.”32 The dissent highlighted the developing nature of remote work and patent venue and its increasing relevance in the work-from-home era. Accordingly, at this juncture, companies still do not have clear guidance regarding what type of, and how much, equipment they can provide remote employees before they effectively ratify the employee’s workspace as their own.

Exemplary Cases

A review of some recent district court decisions provides guidance. In RegenLab USA v. Estar Techs. Ltd., 33 a single remote sales representative working from their New York home qualified as a regular and established place of business because the company targeted sales in the region, preferred its sales representatives to live in their covered regions, and stored company sales demonstratives in that home. The home was a physical place, satisfying step one of the Cray test. At step two, the court found the home was fixed because the company targeted these sales jobs for the New York area and preferred their employees to live there.34 Finally, at step three, the defendant ratified that home as their place of business because they specifically solicited New York sales and wanted the employee to live there, and critically, they stored sales demonstratives at the home.35 Thus, the single employee’s house established patent venue for the company in New York.

Greatgigz v. Ziprecruiter typifies a situation many companies probably faced in 2020: The defendant previously leased a coworking space in Austin for 17 of its employees there.36 When the pandemic hit, the company closed its coworking office and ended its lease.37 The employees did not move away but continued to work near Austin in their respective homes.38 The court found these home offices were neither fixed nor “of the defendant.” While there previously was a regular and established place of business in the rented coworking space, the new dispersed employee home offices were not enough. The home offices were not fixed because the employees could freely move without fear of affecting their job: The company committed to not requiring its employees to come back to the office for a specified time.39 And the company did not ratify the home offices as their own because they did not pay for, exercise control over, or store any goods at those homes.40 Simply advertising that some employees worked in Austin and posting Austin-area job listings was not enough to ratify those home offices.41 Greatgigz exemplifies how to avoid venue where a company has an office: Close the office, do not require employees to stay in district, and do not store any inventory at their homes.42

Furthermore, comparing Greatgigiz to RegenLabs illustrates that the number of employee home offices is immaterial—if one house meets the Cray factors, that is enough for venue, but if those home offices do not meet the Cray factors, increasing their number to 17 does not change the outcome. Even if there are many employees in a district, if they do not store any company materials at their homes nor perform “live demonstrations, evaluations, trainings, and/or presentations” from those homes, they probably do not confer venue.

Takeaways

The law regarding the application of the venue statute to remote workers and remote work policies is still developing. However, a few things have become clear. If a company rents a coworking spaces

for 50 employees, then that space will be considered a “regular and established place of business” sufficient to confer venue within that district (assuming that there are also alleged acts of infringement within the district). On the other hand, if a company does not provide or rent a workspace for its employees but, rather, lets them work from location(s) of their choosing, and indicates (via employment contract or otherwise) that they are not required to stay in district, and/or that their employment is not conditioned upon staying in the district, and does not provide more than basic everyday teleworking tools to these employees (e.g., a computers, printer, etc.), and does not reimburse these workers for the cost of the places in which they work (if any), then it is unlikely that the company will be deemed subject to venue in that district, based on the presence of these workers alone.

However, it should be noted that corporate sales employees deserve special consideration and focus with respect to this analysis. Due to their public-facing role, often geographically fixed nature, and propensity or need for storing company inventory at their homes, it appears that remote sales employees are more likely to have their workplace location deemed as a “regular and established places of business” of the defendant than other employees.

This leaves companies with a few things to think about in their remote work programs:

• Check employee contracts for requirements that employees remain in district. Conditioning employment on residence within a specific area can potentially make their home offices “regular and established” and “of the defendant.”

• Check if the company is reimbursing employees for any portion of their rent or mortgage or for a co-working space—paying for the place can make it more likely to be “of the defendant.”

• Check what supplies and equipment are provided to employees, or for which employees reimbursed (and at what cost to the company). Further, determine what type of equipment is provided to employees. Is any employee provided with more than just “standard” office computing equipment—e.g., more than a computer and printer? Specialized equipment is more likely to make the home office “of the defendant.”

Remote work is here to stay, and with it comes new legal implications. Companies should be cognizant about where they may be subject to venue for patent infringement, analyze their work-fromhome policies, and plan accordingly. 

plaintiff and defendant side and leverages her electrical engineering background to understand the intricacies of her clients’ products and technologies. Phil is an associate in Shook, Hardy & Bacon’s Kansas City office representing clients in intellectual property litigation matters. He has a background in computer science and software development. As a developer himself, he understands the business operations and challenges his clients face.

The views expressed in this article are those of the authors and should not be attributes to Shook, Hardy, & Bacon LLP, or its clients.

Endnotes

1The general venue statue is 28 U.S.C. § 1391, while the patent venue statute is set forth in 28 U.S.C. § 1400(b).

2The modern patent venue statute traces its roots to 1897, when Congress made a special venue statute after accidentally legislating some patent cases entirely out of federal jurisdiction. See TC Heartland v. Kraft Foods, 581 U.S. 258, 264 (2017) (citing In re Hohorst, 150 U.S. 653, 662, (1893); Act of Mar. 3, 1897, ch. 395, 29 Stat. 695).

328 U.S.C. § 1400(b).

4See, e.g., TC Heartland, 581 U.S. 258 at 265-67 (tracing narrow venue requirements of Fourco Glass in 1957, to much broader venue requirements of VE Holdings in 1990) (citing Fourco Glass Co. v. Transmirra Products Corp., 353 U.S. 222, 226 (1957); VE Holding Corp. v. Johnson Gas Appliance Co., 917 F.2d 1574 (1990)).

5VE Holding Corp. v. Johnson Gas Appliance Co., 917 F.2d 1574 (1990)(finding general venue statute definitions applied to patent venue);(TC Heartland v. Kraft Foods, 581 U.S. 258, (2017)).

6(TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 581 U.S. 258, 266-267 (2017))(clarifying that judicial interpretations of words in the general venue statute do not apply to the patent venue statute).

7Id. at 264-265.

828 U.S.C. § 1400.

9See, e.g., FN. 19, infra, collecting cases analyzing whether shelf space or computers qualify as a regular and established place of business.

10In re Cray, 871 F.3d 1355 (Fed. Cir. 2017).

11Id., 1365.

12Id., 1362-63.

13See, e.g., In re Cordis Corp., 769 F.2d 733 (Fed. Cir. 1985) (venue proper in state where two sales representatives worked from home offices there); Johnston v. IVAC Corp., 681 F. Supp. 959 (D. Mass. 1987) (venue improper where only a few sales representative worked from home offices in state); cf. Personal Audio v. Google, Inc., 280 F. Supp. 922 (E.D. Tex., 2017) (venue improper where, inter alia, a few employees worked from home in district but company did not require them to live there, store property there, or otherwise hold it out as their place of business or control those homes).

14See, e.g., In re Cordis Corp., 769 F.2d 733 (Fed. Cir. 1985) (employees kept “sales kits” in their homes containing company property for demonstrations); RegenLab USA LLC v. Estar Techs. Ltd., 335 F. Supp. 3d 526, 552 (S.D.N.Y. 2018) (employees conducted demonstrations in nearby customer offices).

15In re Cordis Corp., 769 F.2d 733; RegenLab USA LLC v. Estar Techs. Ltd., 335 F. Supp. 3d 526.

Sharon Israel is a Chambers-ranked IP litigator, having litigated cases in district courts throughout the country, the Patent Trial and Appeal Board, and before the Federal Circuit. She is a partner in Shook, Hardy & Bacon’s Houston office, has served in leadership roles in numerous organizations, and is a frequent speaker on IP-related topics. Fiona Bell’s practice focuses on complex intellectual property litigation, developing case strategies through trial and appeal. As a senior counsel in Shook, Hardy & Bacon’s Houston office, Fiona represents clients on both the

16McKinsey & Co., Americans are Embracing Flexible Work—and They Want Even More of it (June 2022) (estimating 55 million Americans (35% of workers) can work remote full-time, and these numbers are higher in patent-heavy industries like computer, engineering, or life science jobs); see also, Ben Wigert, Sangeeta Agrawal, Gallup, Returning to the Office: The Current, Preferred, and

Future State of Remote Work (Aug. 2022) (noting increase in hybrid work, but that fully remote work is still expected to triple 2019 figures).

17Tinnus Enters. v Telebrands, 2018 U.S. Dist. LEXIS 79068 (E.D. Tex., 2018).

18Rensselaer Polytechnic v. Amazon, 2019 U.S. Dist. LEXIS 136436 (N.D.N.Y., 2019).

19There is considerable divergence of opinion on whether telecommunications equipment or servers constitute a physical place or confer venue. See, e.g., Seven Networks v. Google, 2018 U.S. Dist. LEXIS 176265 (E.D. Tex. 2018) (servers are a physical place); Peerless Network, Inc. v. Blitz Telecom Consulting, 2018 U.S. Dist. LEXIS 49628 (S.D.N.Y. March 26, 2018) (telecommunication equipment for processing calls were a physical place but did not confer venue); but see BMC Software, Inc. v. Cherwell Software, No. 1:17-cv-1074 (E.D. Va. Dec. 21, 2017) (back-up servers were a physical place); Personal Audio v. Google, 280 F. Supp. 3d 922 (E.D. Tex., 2017) (servers were a physical place).

20While beyond the scope of this article, a laptop is probably not sufficient to satisfy the physical place requirement. “The statute requires a ‘place,’ i.e., ‘[a] building or a part of a building set apart for any purpose’ or ‘quarters of any kind’ from which business is conducted … [not merely] a virtual space or electronic communications from one person to another.” In re Cray Inc., 871 F.3d 1355, 1362 (Fed. Cir. 2017).

21GreatGigz Sols., LLC v. ZipRecruiter, Inc., No. W-21-CV-00172ADA, 2022 WL 432558, at 4 (W.D. Tex., 2022) (citing In re Cray Inc., 871 F.3d, at 1362-63).

22See, e.g., W. View Rsch., LLC v. BMW of N. Am., LLC, 2018 WL 4367378, at 5 (S.D. Cal., 2018).

23In re Cray Inc., 871 F.3d, at 1362.

24See e.g., Personal Audio v. Google, 280 F. Supp. 3d 922; Rosco, Inc. v. Safety Vision LLC, 2020 WL 5603794, at 3 (S.D.N.Y., 2020); C.R. Bard, Inc. v. Smiths Med. ASD, Inc., No. 12-CV-36, 20202 WL 6710425, at 8, 12 (D. Utah, 2020).

25GreatGigz Sols., LLC v. ZipRecruiter, Inc., 2022 WL 432558, at 5 (W.D. Tex., 2022) (“[T]o determine whether the place is “of the defendant” and not solely the place of the defendant’s employee, courts consider: … (3) whether the defendant conditioned the employee’s employment on continued residence in the district.”)

26Id.

27W. View Rsch., v. BMW of N. Am.2018 WL 4367378, at 5 (S.D. Cal. Feb. 5, 2018) (citing In re Cray, 871 F.3d 1362, 1363).

28See, e.g., Uni-Sys. v. U.S. Tennis Ass’n Natn’l Tennis Ctr.I, 2020 WL 1694490, at 45-46 (E.D.N.Y., 2020) (collecting cases)(“Several courts have considered and rejected, explicitly or implicitly, the notion that a customer’s location is equivalent to one of the defendant.”).

29AGIS Software Dev., LLC v. ZTE Corp., 2018 WL 4854023, at 3 (E.D. Tex., 2018).

30As mentioned above, courts have also held that whether or not an employee is required to live in that place may factor into this determination—making it a consideration for more than one prong of the Cray analysis. GreatGigz Sols., LLC v. ZipRecruiter, Inc., 2022 WL 432558, at 5.

31See, e.g., Bel Power Sols. Inc. v. Monolithic Power Sys., Inc., 2022 WL 2161056, at 3 (W.D. Tex., 2022) (typical office tools, like reimbursing for internet service or mobile phone, are not enough to ratify where reimbursement not conditioned on living in district)(citing RegenLab

USA LLC v. Estar Techs. Ltd. 335 F. Supp. 3d 526, 552 (S.D.N.Y. 2018)).

32In re Monolithic Power Sys., Inc., 50 F.4th 157, 162 (Fed. Cir. 2022) 33335 F. Supp. 3d 526, 552 (S.D.N.Y. 2018).

34Id., 550-51.

35Id., 552. 362022 WL 432558, at 5 (W.D. Tex. 2022).

37Id. at 2.

38Id. at 2.

39Id. at 5. See also Green Fitness Equip. Co. v. Precor Inc, 2018 WL 3207967, at 4 (N.D. Cal., 2018) (remote workers not tethered to geographic area weighs heavily against their homes being a regular and established place of business).

40Id. at 5.

41Id. at 5. The job listings specifically allowed candidates to locate anywhere in the United States.

42Employee count relative to company size may matter too: the Greatgigz court noted that while 17 employees work in Austin, it had over 1,000 employees working at other established offices. Id. at 5.

FTC Non-Compete Ban: A Right to Unfairly Compete?

Non-compete agreements (NCAs) play a unique and important role in protecting a company’s intellectual property. They prevent trade secrets and other valuable business information from falling into the hands of a competitor, providing a level of certainty to all parties—the old employer, the employee, and the new employer—that avoids unnecessary suspicion and litigation. Courts in every jurisdiction vigilantly guard against abuse of NCAs, enforcing them only if they meet strict standards of reasonableness.

The Federal Trade Commission (FTC) is seeking to upend this entire system. The agency recently proposed a rule that would ban all NCAs for all employees nationwide and require employers to affirmatively rescind existing NCAs (the Non-Compete Rule).1

The Non-Compete Rule is a radical departure from the FTC’s historic antitrust enforcement practice. It is doubtful whether the agency has competition-rulemaking authority at all, and a proposal as expansive as the Non-Compete Rule is likely to provoke judicial skepticism. The Non-Compete Rule also attempts to supplant longstanding common law and statutory criteria for evaluating NCAs, which is unlikely to be well received by courts.

The Role of Non-Competes in IP Protection

Some forms of intellectual property are comparatively easy to define and protect. A patent contains detailed technical specifications—and even pictures—of the protected invention. While inventions can be

mind-numbingly complex (look at any pharmaceutical patent), the issued patent is like a fence conspicuously marking the property line beyond which only those with permission may venture. Likewise, a registered trademark can draw clear boundaries around a unique artistic design or clever branding.

Trade secrets, on the other hand, include a wide variety of business information that has commercial value derived from the fact that it remains secret. Trade secrets include concrete information like the formula for a secret recipe, but a trade secret might also be a combination of countless factors that combine to form something both proprietary and valuable.

The law has long recognized a legitimate interest even for this more nebulous type of intellectual property. The common law developed causes of action for theft of trade secrets and most jurisdictions have codified those protections in some variant of the Uniform Trade Secrets Act.

These protections, along with contractual nondisclosure obligations, are often inadequate in situations where an employee gains an understanding of a company’s most sensitive internal workings, whether that’s technical processes or more intangible “know-how” about how the business operates. It is often impossible for employees in this position to move to a direct competitor without using, even involuntarily, the proprietary information developed at great expense by their former employers. At its most extreme, the risk of this scenario is recognized in the “inevitable disclosure” doctrine.2

This is the gap NCAs have historically filled.3 These contractual provisions protect an employer’s “legitimate interest in restraining the employee from appropriating valuable trade information… to which he has had access in the course of his employment.” At the same time, the employee benefits from being able to move to anoth-

LEE WHITESELL & JILLIAN BECK

er position without risk of betraying the employer’s confidence, even inadvertently. NCAs thus provide certainty for both parties.

Fair and Unfair Competition

Because NCAs explicitly restrain competition, they are subject to higher scrutiny than virtually any other type of contract provision. This scrutiny stems from the bedrock principle enshrined in American law that agreements “unreasonably in restraint of trade” are unenforceable.4

Courts and legislatures at the federal and state levels have developed a robust framework for assessing whether an NCA is “reasonable,” weighing the employer’s legitimate interests against the restraint on the employee’s freedom and the potential harm to competition. While there is some variance across jurisdictions, the basic considerations are the same:

• An NCA must be ancillary to an otherwise valid agreement—no freestanding promises not to compete.

• The duration and geographic scope must not be greater than necessary to protect the business’s legitimate interests.

• The NCA must not impose undue burden on the employee or harm to the public.5

Some states have codified this common-law rubric by statute.6 Other states have gone further by eliminating or severely limiting the use of NCAs. California, North Dakota, and Oklahoma prohibit non-competes in employment contracts altogether.7 Maine, Maryland, New Hampshire, Rhode Island, Illinois, and Washington ban NCAs for low wage workers.8 Massachusetts requires a 10-day written notice, provides the employee a right to counsel, caps the duration of any non-compete at one year, and requires the employer to pay the worker during the noncompete period.9 Nevada and Oregon recently passed similar legislation.10

Regardless of the jurisdiction, the goal is the same: “to allow only reasonable restraints that protect against unfair competition”—including the misuse of intellectual property.11

The FTC’s Competition Mandate

Promoting fair competition is not solely the province of the states. Federal statutes prohibit a broad range of anti-competitive activity, from agreements “in restraint of trade” and monopolies to price discrimination and anticompetitive mergers. Enforcement of the federal antitrust program is committed to the U.S. Department of Justice and the FTC, which “collectively share responsibility for the enforcement of these statutes.”12

Section 5 of the Federal Trade Commission Act (FTCA) prohibits “unfair methods of competition” and “empowers and directs” the FTC to “prevent” any such prohibited practice.13 There is little dispute that these provisions grant the FTC “‘standalone’ authority to address acts or practices that are anticompetitive but may not fall within the scope of the Sherman or Clayton Acts.”14 The FTC has, however, historically confined its standalone antitrust enforcement to policing “incipient” violations of the antitrust laws, such as “invitations” to collude.15 This longstanding approach—affirmed most recently in the 2015 Statement—has aligned the FTC with both the Department of Justice and the federal judiciary.

The current FTC has repudiated this status quo. Three Commissioners—a majority—voted to withdraw the 2015 Statement and

issued a statement asserting that the agency’s historic practice of hewing close to the antitrust statutes “abrogates the Commission’s congressionally mandated duty to use its expertise to combat unfair methods of competition even if they do not violate a separate antitrust statute.”16 Last November, the Commission released new guidance that vastly expands the agency’s definition of “unfair methods of competition” and all but eliminates consideration of efficiencies or other business justifications.

FTC Competition Rulemaking

In addition to its broader view of what falls within the FTC’s purview, the current administration has taken an aggressive view of the powers available to the agency to carry out its enforcement duties. Section 5 contains extensive provisions setting out the FTC’s investigatory and adjudicative functions. In part because of this statutory emphasis, the Commission has always operated largely through administrative hearings and challenging business practices in court— and not by formal rulemaking. That, too, is changing.

Tracing the impetus for this change leads back to current FTC Chair Lina Khan, whom President Biden appointed to the Commission shortly after taking office. In 2020, Khan—already known for her student law review article Amazon’s Antitrust Paradox17—published an article in the Chicago Law Review called The Case for “Unfair Methods of Competition” Rulemaking, arguing that the FTC possesses much broader rulemaking authority than it has traditionally exercised.

Shortly after appointing Khan, the president issued an executive order that “encouraged” the Commission to “exercise the FTC’s statutory rulemaking authority under the [FTCA] to curtail the unfair use of non-compete clauses.”18 The FTC almost immediately thereafter withdrew the 2015 Statement, asserting the agency’s power to engage in “competition rulemaking”—including “to prohibit conduct that does not violate other antitrust laws.”19 Observers recognized this statement as a sharp departure from historic § 5 enforcement practice, and cautioned that moving so abruptly could well backfire on Khan’s plans for the FTC.20

Competition Rulemaking: A Question of Power

The Non-Compete Rule was the FTC’s first major flex of the Commission’s renewed interest in competition rulemaking in line with its new vigorous enforcement approach. The problem for the agency is that it likely does not have the power to promulgate this rule.

First, it is doubtful that Congress conferred antitrust rulemaking authority on the FTC. The FTCA provision charging the FTC with preventing unfair methods of competition is contained in the first subsection of § 5. Nowhere in the remaining 13 subsections is the FTC given rulemaking power. In fact, the rest of § 5 sets out a detailed adjudicatory process that applies when “the Commission shall have reason to believe” someone is violating § 5(a).

If § 5 itself does not authorize the FTC to issue prospective antitrust rules with the force of law, neither does it provide that it is the exclusive means of enforcement available to the FTC. There is another candidate for the source of rulemaking power. Section 6 of the act sets out “Other Powers” of the FTC, most of which are functions incidental to investigations. But the second clause of the seventh subsection provides that the “Commission shall also have power… to make rules and regulations for the purpose of carrying out the provisions” of the statute.

In its 1973 National Petroleum Refiners decision, the D.C. Circuit

held that these few words buried in § 6(g) were sufficient to grant the FTC sweeping rulemaking authority to enforce the FTCA’s “prevention” mandate. This is the thin reed on which the FTC rests its claim to authority to comprehensively regulate vast swathes of economic activity historically left to the states. In its Notice of Proposed Rulemaking (NPRM), the Commission simply refers to § 5 and § 6(g) and cites National Petroleum.

There are several reasons to doubt the continued vitality of National Petroleum, not least because the panel’s analysis is largely “anachronistic.”21 The D.C. Circuit relied heavily on legislative intent in a spirit of deference to administrative expedience, both of which are all but banished in today’s jurisprudence. It is difficult to imagine any modern court describing—approvingly—an agency’s power in such broad terms:

The FTC’s charter to prevent unfair methods of competition is tantamount to a power to scrutinize and to control, subject of course to judicial review, the variety of contracting devices and other means of business policy that may contradict the letter or the spirit of the antitrust laws.22

The National Petroleum court rejected the argument that § 5’s express grant of adjudicatory power implies the exclusion of other forms of enforcement, describing the expresio unius “maxim” as “increasingly considered unreliable.”23 Whatever the trend at the time, this canon of construction is ascendant today. In a recent decision, a unanimous U.S. Supreme Court invoked “the rule that ‘when Congress includes particular language in one section of a statute but omits it in another section of the same Act,’ we generally take the choice to be deliberate.”24 Indeed, just last term, the Court vacated the FTC’s attempt to use one section of the FTCA to obtain “equitable monetary relief” because, among other things, the statute elsewhere sets out the procedure for monetary recovery.25

The Non-Compete Rule is particularly problematic in its current form. Federal courts now apply much higher scrutiny “to the manner in which Congress is likely to delegate a policy decision of such economic and political magnitude to an administrative agency.”26 And the Court has repeatedly held that it “expects Congress to speak clearly when authorizing an agency to exercise powers of vast economic and political significance.”27 The Non-Compete Rule is at least as capacious as the regulations courts have struck down under this standard. The chairwoman of the House of Representatives Committee on Education and the Workforce wrote to the FTC citing these “major questions” concerns, accusing the Commission of “flagrantly overreaching beyond its congressionally delegated authority.”28

That Congress itself has been serially ambiguous about the FTC’s antitrust rulemaking authority makes the Non-Compete Rule even less likely to survive judicial challenge. When “agencies assert highly consequential power beyond what Congress could reasonably be understood to have granted,” the regulator “must point to ‘clear congressional authorization’ for the power it claims.”29 But Congress affirmatively refused to address the existence or extent of the FTC’s antitrust rulemaking authority when, two years after National Petroleum, it passed the Magnuson-Moss Act.30 That statute authorizes the FTC to promulgate rules “with respect to unfair or deceptive acts or practices”—the other prong of § 5—but is fastidiously agnostic about “ any authority of the Commission to prescribe rules… with respect to unfair methods of competition.”

The breathtaking “economic and political significance” of the Non-Compete Rule, and its departure from the FTC’s customary approach, will almost certainly be too much weight to place on a single clause buried in a list of investigatory powers ancillary to a detailed adjudicatory scheme that Congress plainly intended as the agency’s means of enforcement.

Are Non-Compete Agreements “Unfair”?

Even if the FTC has competition-rulemaking powers, it can only exercise that authority consistent with the FTCA. While the FTCA prohibits “unfair methods of competition,” it does not delegate to the FTC the power to enumerate those methods or otherwise further define the statutory language. Whether in a direct challenge to the Non-Compete Rule itself, or as part of a specific enforcement action, the courts will have to determine whether NCAs are in fact “unfair methods of competition.”

The difficulty for the FTC is that the answer to this interpretive question is a decisive “sometimes.”

In this respect, the Non-Compete Rule may be futile. As set out in the proposed rule, the FTC itself already enforces § 5 with respect to “unfair” NCAs. In those cases, the FTC must establish that the employer’s use of NCAs is an “unfair method of competition.” It seems unlikely that a court would conclude that an NCA is manifestly reasonable under the extensive common-law analysis designed precisely to assess reasonableness but is nevertheless an “unfair method of competition.” The reasonableness inquiry is the fairness inquiry.

The Commission’s criticism that “the existing legal frameworks governing non-compete clauses” were “formed decades ago” says both too much and not enough. The common law of covenants not to compete is centuries, not decades, in the making: the “seminal case on restrictive covenants”31 was decided in 1711, and discusses many of the same concerns courts today analyze when evaluating NCAs.32 And because it is “among the most ancient rules of the common law,” it did not “form” at any particular point.33 It evolves with each new case, subject to statutory revision, reflecting the customs and mores of the people to whom it applies.

The Non-Compete Rule seeks to abolish this entire ancient, living body of law—and its robust rubric for evaluating the fairness of NCAs—and replace it with the will of what one former FTC Commissioner calls “a bare majority of FTC commissioners managing whatever private economic affairs they want.”34 Whether this is wise or appropriate is a matter of debate; whether it will change anything in the courtroom is doubtful; that it will elicit vociferous challenge and invite acute judicial scrutiny is assured.

A Hatchet Instead of a Scalpel

The FTC majority spends a great deal of space in the proposed rule discussing the apparent overuse of non-competes for large swathes of employees with access to little or no proprietary information. A senior FTC staff member was quoted in the press release announcing the rule: “The proposed rule would ensure that employers can’t exploit their outsized bargaining power to limit workers’ opportunities and stifle competition.”35 The proposed rule highlights longstanding “concerns that workers [are] vulnerable to exploitation under non-compete clauses,” which “threaten workers’ ability to practice their trades and earn a living.”36

The FTC’s solicitousness towards labor may be commendable, but it provides little justification for the Non-Compete Rule’s na-

tionwide, exceptionless ban. The proposed rule itself acknowledges that many of the justifications for the rule do not apply to senior executives and solicits comment on other types of employees that might warrant different treatment. One of those comments by the Medical Society of New Jersey “strongly” opposes the proposed rule as applied to doctors:

In many circumstances, restrictive covenants between individual physicians and group practices or hospitals are a business necessity. For example, restrictive covenants are a reasonable protection of an employer’s investment in a newly hired physician, where the physician may have received an incentive payment to join a group, or where, from a business perspective, the physician is being carried by the group during the early years of the physician’s practice.37

An alternative might start by tracking the Freedom to Compete Act cosponsored by senators Marco Rubio, R-FL, and Maggie Hassan, D-NH.38 That bill would have widely banned NCAs, but did not apply to executive, professional, and administrative professionals already exempt from other labor regulations. Like similar legislation on the subject in the past decade, the Freedom to Compete Act did not make it out of committee.39

But even that is still too blunt an instrument. There are countless non-exempt employees that currently receive highly sensitive business information. The nature and forms of intellectual property are as diverse as American business itself, which makes the delicate balance between the employee’s freedom to compete and the business’s proprietary information a poor candidate for uniform national regulation.

Certain Uncertainty

The FTC majority justifies its preference for a categorical ban on the grounds that it provides more certainty than alternatives like a rebuttable presumption of unreasonableness. But this ignores the significant uncertainty that will result from the sudden abolition of this traditional protection of often nebulous intellectual property interests.

Indeed, one of the main attractions of NCAs is that they provide certainty for both the employer and employee. It is already illegal for employees to use their employer’s trade secrets for a competitor. But “it is often impossible to spell out in advance in specific terms the confidential information for which protection will be desired,” making it difficult for the parties to know where precisely to draw the line.40 And an employee may be in such a sensitive position that, in the words of one court, the employee “cannot be loyal both to his promise to his former employer and to his new obligations to the [new] company”41 because the “new employment will inevitably lead him to rely on the [old employer’s] trade secrets.”42

In these and similar situations, “the most effective protective device is an enforceable postemployment covenant not to compete.”43 Subject to the usual scrutiny of the restraint’s reasonableness, “satisfactory protection of a trade secret may require a prohibition of work for a competitor along lines involving use of the secret for a reasonable period.”44 Rather than fretting over whether proprietary information is being misused when the employee moves on, the employee simply agrees not to work for a competitor for a limited amount of time in a limited geography. Any “leakage” outside of that

time and place is largely consigned to the category of acceptable loss. Without the availability of NCAs, this mutually beneficial arrangement will give way to suspicion. When departing for a similar position elsewhere, employees will wonder whether his or her contributions to the new employer’s business might be tainted by the information and know-how acquired at the old job. The previous employer will likewise be extremely wary of the employee’s discretion, and more likely to ascribe any market success on the new employer’s part to intellectual property theft. More litigation is likely to result between the former employer, new employer, and the employee, raising costs for all involved—litigation that will not have the benefit of the common law’s long history “balancing competing public policies of employee mobility and protection of trade secrets.”45

The unintended economic consequences of the Non-Compete Rule are also a source of significant uncertainty. Will employers reduce compensation to reflect the increased vulnerability of their competitive position? The economic literature suggests that non-competes increase earnings for corporate executives and physicians, and that these gains are absent in states that ban such agreements. What other sectors of the economy will see decreased wages?

Will employers be less willing to share essential business information with new workers? Some firms already use “training repayment agreements” to ensure their investments in human capital are not being paid to competitors. These programs may themselves be considered a “non-compete clause” under the proposed rule’s “functional test” if the repayment “is not reasonably related to the costs the employer incurred for training the worker.”46

If anything is certain, it is that litigation over suspicions of misappropriation, and what “functions” as an NCA, will provide gainful employment for lawyers for a long time.

Break Glass?

Regardless of the fate of the Non-Compete Rule, employers should take this opportunity to evaluate their approach to confidential information and “get their trade secrets house in order.”47 This is good business hygiene and will help position the company for whatever may come from the FTC.

• Identify your trade secrets. In order to determine the best way to protect your trade secrets, you have to know what those trade secrets are. Ask yourself what information you have that you would not want a competitor to have. That is a good starting point for your list. If there is any doubt, protect valuable information as if it were a trade secret.

• Decide who needs to know. Employees should only have access to your trade secrets if they have a business reason to see the information. Use facility access controls and information security solutions, such as password-protection and encryption, to make sure that your information is accessed only on a need-to-know basis. If the Non-Compete Rule goes into effect, employers will have to be even more cautious before sharing sensitive information with their own employees.

• Review employee contracts (and get rid of unnecessary NCAs). The Non-Compete Rule identifies what appears to be a legitimate problem with overuse of NCAs. Ensure that your employment agreements for contracted employees have robust confidentiality and nondisclosure provisions but consider whether every employee currently under an NCA really needs to be.

•

Keep your confidentiality policies current and make sure employees are aware of them. Company policies should detail the procedures in place to protect trade secrets. These policies should be regularly reviewed to capture any changes in business operations. Require employees to acknowledge in writing that they will abide by these policies and provide initial and ongoing training to ensure there is no question about what you expect.

• Use non-disclosure agreements. Trade secrets should only be shared outside your company if the recipient needs the information for the business you are doing together. Before you share, enter a robust non-disclosure agreement. The recipient should acknowledge they are receiving your trade secrets and that they have obligations to keep them secret. While the FTC acknowledges that “the protection of trade secrets and other limited confidential business information is widely recognized as a legitimate use of NDAs,” employers should beware of making these agreements “so broad in scope that they serve as de facto non-compete clauses” under the proposed rule’s “functional test.”48

• Prepare for employee departures. Your trade secrets are particularly vulnerable to disclosure when your employees depart for new opportunities. Ensure that your policies clearly require departing employees to immediately return any of the company’s confidential information, no matter the format. Develop protocols for additional access restrictions that you can implement immediately upon learning that an employee is departing and monitor departing employees’ activity to ensure they do not download sensitive information prior to their departure or share it with a third party via email. If you uncover any red flags, work closely with your in-house legal team and/or external counsel to investigate immediately.

Perhaps more conscientious self-regulation will encourage the FTC to narrow the Non-Compete Rule. The proposed rule itself invites comment on possible alternatives including a rebuttable presumption rather than a categorical ban, “different standards for different categories of workers,” notice or reporting requirements, or combinations of these options.

At the time of writing, there are nearly 12,000 comments on the Non-Compete Rule and the FTC has extended the comment period to just before this article will be published. By the time you read this article, then, the Non-Compete Rule may look very different—or may be on its way to enactment in the CFR.

Lee Whitesell and Jillian Beck are trial lawyers in the Houston office of Hogan Lovells, where they handle a wide range of complex commercial disputes. Lee is a strategic litigator who deploys creative solutions to complex legal problems for clients in the technology, energy, and life sciences industries. He also handles litigation in bankruptcy proceedings for both debtors and creditors. Lee serves on the board of directors for the Southern District of Texas Chapter and chairs the Chapter’s Blask Fellowship committee, which administers scholarships to law students with summer internships in federal public service. Jillian focuses her practice on trade secrets and technology litigation, with a knack for translating complex ideas into persuasive stories for judges and juries. She is also the leader of the firm’s Global Energy Studio, an industry think tank that combines legal

expertise and market insights. Jillian is a member of the Law360 Texas Editorial Board and serves on the Houston Bar Association Law Week Committee.

Endnotes

1FTC, Notice of Proposed Rulemaking: Non-Compete Clause Rule, 88 FR 3482-01.

2W.L. Gore & Assocs., Inc. v. Wu, No. CIV.A. 263-N, 2006 WL 2692584, at *17 & n.109 (Del. Ch. Sept. 15, 2006) (collecting cases), aff’d, 918 A.2d 1171 (Del. 2007).

3See, e.g., Sonotone Corp. v. Baldwin, 42 S.E.2d 352, 353 (N.C. 1947); Vulcan Detinning Co. v. Am. Can Co., 67 A. 339, 343 (N.J. Eq. 1907).

4See, e.g., Restatement (Second) of Contracts § 186(1); 15 U.S.C. § 1 (Sherman Act).

5See Restatement, supra n.2; Cont’l Group, Inc. v. Kinsley, 422 F. Supp. 838, 843 (D. Conn. 1976) (“The covenant must be reasonable both in scope and duration, and even then is enforced only when necessary to protect against use or disclosure of trade secrets or other confidential information, or solicitation of customers, or when the employee’s services are deemed unique or extraordinary.”).

6E.g. Mich. Comp. L. § 445.774a; Tex. Bus. & Com. Code § 15.50. 7Cal. Bus. & Prof. Code § 16600; North Dakota Cent. Code § 9-0801–06; Okla Stat. § 15-219A.

8See Chris Marr, Employee Noncompete Clause Limits Adopted by Three More States, Bloomberg Law (June 29, 2021).

9See Mass. Gen. L. c. 149, § 24L. 10See Oregon S.B. 169 (2021); Nevada A.B. 47 (2021).

11Loewen Group Acquisition Corp. v. Matthews, 2000 OK CIV APP 109, ¶ 14, 12 P.3d 977, 980.

12See U.S. Gov’t Accountability Office, Antitrust: DOJ and FTC Jurisdictions Overlap, but Conflicts are Infrequent (Jan. 3, 2023).

1315 U.S.C. § 45(a)(1)–(2).

14FTC, Statement of Enforcement Principles Regarding “Unfair Methods of Competition” Under Section 5 of the FTC Act (Aug. 13, 2015), https://www.ftc.gov/system/files/documents/public_ statements/735201/150813section5enforcement.pdf (2015 Statement); see Atl. Ref. Co. v. FTC, 381 U.S. 357, 369 (1965) (“It has long been recognized that there are many unfair methods of competition that do not assume the proportions of antitrust violations.”); FTC v. Brown Shoe Co., 384 U.S. 316, 320–21 (1966) (“the Commission has broad powers to declare trade practices unfair . . . with regard to trade practices which conflict with the basic policies of the Sherman and Clayton Acts even though such practices may not actually violate these laws”); FTC v. Cement Inst., 333 U.S. 683, 694 (1948) (“although all conduct violative of the Sherman Act may likewise come within the unfair trade practice prohibitions of the Trade Commission Act, the converse is not necessarily true”).

15In the 2015 Statement, for example, the Commission affirmed its commitment applying the “rule of reason” familiar to antitrust practitioners. The rule of reason, which applies to all but the most facially anticompetitive behaviors like price fixing, weighs an activity’s potential to harm “competition or the competitive process” against its “associated . . . efficiencies and business justifications.”

16Edith Ramirez, Chair of the FTC under President Obama at the time of the 2015 Statement, is a partner at the authors’ law firm. Ms. Ramirez was not involved in writing this article. Any views expressed in this article are solely those of the authors.

17Lina M. Kahn, Amazon’s Antitrust Paradox, 133 Yale L. J. 564 (2017).

18EO 14036, Promoting Competition in the American Economy, 86 FR

36987 at § 5(h) (July 9, 2021).

19FTC, Statement of the Commission On the Withdrawal of the Statement of Enforcement Principles Regarding “Unfair Methods of Competition” Under Section 5 of the FTC Act (July 9, 2021).

20See Gregory J. Werden & Luke Froeb, Can the FTC Turn Back the Clock?, ABA Antitrust Magazine Online (Oct. 29, 2021).

21See Maureen K. Ohlhausen & Ben Rossen, Dead End Road: National Petroleum Refiners Association and FTC ‘Unfair Methods of Competition’ Rulemaking, Truth on the Market Blog (July 13, 2022).

22National Petroleum Refiners Ass’n v. FTC, 482 F.2d 672, 684–65 (D.C. Cir. 1973).

23Id.

24Bartenwerfer v. Buckley, 143 S. Ct. 665, 673 (2023) (quoting Badgerow v. Walters, 142 S. Ct. 1310, 1318 (2022)).

25AMG Capital Mgmt., LLC v. FTC, 141 S. Ct. 1341 (2021).

26FDA v. Brown & Williamson Tobacco Corp., 529 U.S. 120, 133 (2000).

27See, e.g., Nat’l Fed’n of Indep. Bus. v. OSHA, 142 S. Ct. 661, 665 (2022) (quoting Ala. Ass’n of Realtors v. HHS, 141 S. Ct. 2485, 2489 (2021)).

28Letter of Rep. Virginia Foxx to Lina M. Khan (March 27, 2023).

29W. Virginia v. EPA, 142 S. Ct. 2587, 2614 (2022) (quoting Util. Air Regulatory Group v. EPA, 573 U.S. 302, 324, (2014)).

30Magnuson-Moss Warranty—Federal Trade Commission

Improvement Act, codified at 15 U.S.C. § 2301 et seq.

31Catherine L. Fisk, Working Knowledge: Trade Secrets, Restrictive Covenants in Employment, and the Rise of Corporate Intellectual Property, 1800-1920, 52 Hastings L. J. 441, 454 (2001).

32See Mitchel v. Reynolds, 24 E.R. 347 (Q.B. 1711) (discussing requirement that restraint of trade must be supported by consideration and limited in scope to mitigate “mischief which may arise” and “the great abuses these voluntary restraints are liable to”); Dyer’s Case, Y.B. 2 Hen. 5, fol. 5, Michaelmas, pl. 26 (Eng. 1414).

33Alger v. Thacher, 36 Mass. 51, 52–54 (1837).

34Noah Joshua Phillips, Against Antitrust Regulation, American Enterprise Institute (Oct. 13, 2022) at 6.

35FTC, FTC Proposes Rule to Ban Noncompete Clauses, Which Hurt Workers and Harm Competition, https://www.ftc.gov/news-events/ news/press-releases/2023/01/ftc-proposes-rule-ban-noncompeteclauses-which-hurt-workers-harm-competition.

36FTC, supra n.1 at 48 (citing Mitchel).

37Comment of Medical Society of New Jersey, Non-Compete Clause Rulemaking, P201200 (March 28, 2023).

38S.2375.

39Workforce Mobility Act, S.483; H.R.1367; MOVE Act, S.1504, H.R.2873, H.R.2454.

40Harlan M. Blake, Employee Agreements Not to Compete, 73 Harv. L. Rev. 625, 669 (1960).

41Eastman Kodak Co. v. Powers Film Prods., 189 A.D. 556, 561–62 (N.Y. App. Div. 1919).

42PepsiCo, Inc. v. Redmond, 54 F.3d 1262, 1269 (7th Cir. 1995).

43Blake, supra n.40 at 670.

44Allis-Chalmers Mfg. Co. v. Cont’l Aviation & Eng’g Corp., 255 F. Supp. 645, 654 (E.D. Mich. 1966).

45Whyte v. Schlage Lock Co., 125 Cal. Rptr. 2d 277, 292 (Cal. App. 2002) (rejecting inevitable disclosure doctrine); see also LeJeune v. Coin Acceptors, Inc., 849 A.2d 451, 471 (Md. 2004) (same: “Maryland

has a policy in favor of employee mobility similar to that of California.”).

46Non-Compete Clause Rule, 88 FR 3482-01

47Society for Human Resources Management, How Should Employers Respond to Proposal to Ban Noncompete Agreements?, https://www.shrm.org/ResourcesAndTools/hr-topics/talentacquisition/pages/how-should-employers-respond-ftc-proposalban-noncompete-agreements.aspx (accessed Feb. 28, 2023).

48FTC supra n.1 at 11, 99, 106–111.

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BLAZING EARLY HISTORY OF THE U.S. PATENT OFFICE: FEATURING DR. THORNTON’S FIERY SPEECH TO THE REDCOATS, AND THE GREAT CONFLAGRATIONS OF THE 1800s

IRA COHEN, B.A., J.D., LL.M.

Next came the Patent laws. These began in England in 1624; and, in this country, with the adoption of our constitution. Before then, any man might instantly use what another had invented; so that the inventor had no special advantage from his own invention. The patent system changed this; secured to the inventor, for a limited time, the exclusive use of his invention; and thereby added the fuel of interest to the fire of genius, in the discovery and production of new and useful things.”1 (Emphasis added.)

Abraham Lincoln

For well over two centuries, the essential responsibility of the United States Patent and Trademark Office (USPTO) 2 has neither altered nor faltered, to wit: To promote the progress of science and the useful arts by securing to inventors the exclusive right to their respective discoveries.

Congress established the USPTO to issue patents and trademarks (and service marks) on behalf of the federal government.3 In 1802, the Patent Office began as a separate and distinct bureau, within the Department of State, and its clerk was dubbed the “Superintendent of Patents.” The revised patent laws of 1836, inter alia, reorganized

the Patent Office and formally denominated the lead official as “Commissioner of Patents.” Later, in a game of governmental “musical chairs,” the Patent Office shifted over from the Department of State to the Department of Interior in 1849. Subsequently, in 1925, it was transferred to the Department of Commerce—where it remains to this day. The name was changed to the Patent and Trademark Office (1975) and, finally, changed to its current incarnation as the United States Patent and Trademark Office (2000).4

Almost 165 years ago, on April 6, 1858, Abraham Lincoln delivered his first lecture, entitled “Discoveries and Inventions,” before the Young Men’s Association of Bloomington, Illinois. About nine years earlier, in 1849, Lincoln, himself an amateur inventor, had received United States Letters Patent No. 6,469, for a “Manner of Buoying Vessels.” Honest Abe remains, to date, the only U.S. president ever to hold a patent.

Lincoln’s antebellum choice of words regarding patents may well be viewed, in retrospect, as prophetic. That is because, during the 19th century, the Patent Office was plagued by not one but three disastrous fires (transpiring in 1814, 1836, and 1877, respectively) which, directly or indirectly, served to shape the course of its long and illustrious history.

Introduction

The system of patents in England traced its roots back to the early medieval period. By the 1500s, the English monarchs ordinarily would grant letters patent to favored persons, or those ready, willing,

and able to pay for the monopoly granted.5 Not surprisingly, the power was used, and abused, to make money for the Crown6; in response, the English courts started to make rulings which served to delimit the monarch’s arbitrary and capricious issuance of patents.

Eventually, James I of England (1566-1625), the first “King of Great Britain,” was forced to revoke all existing monopolies and declare that they were only to be used for the inventors or introducers of original inventions for a fixed number of years. That guiding principle then was embedded into the Statute of Monopolies under which Parliament restricted the Crown›s power.7

During Colonial times here in America, local inventors also had a stream to travel down to obtain patents; the process was navigated by means of petitions submitted to the colony’s legislature. In that vein, it appears that, as long ago as 1641, Samuel Winslow, a resident of Massachusetts, was granted the first patent in North America, for a new salt-producing process, as issued by the Massachusetts General Court.8

As for America’s staunch Revolutionary War ally, France, that country’s modern-day patenting system came into being roughly around the same time as the American version, during the French Revolution in 1791.9 Notably, patents were granted without examination, inasmuch as an inventor’s right was considered as derived from natural law. Unlike the United States, however, on the continent, the Parisian patent costs were very high (ranging from 500 to 1,500 French francs).

Admittedly, however, it was England’s Statute of Monopolies (1624) and the English legal system relating to patents that formed the solid groundwork for patent law in common-law- based nations including, but not limited to, the United States, New Zealand, and Australia. Albeit the statute proscribed many royalist monopolies, it did expressly preserve the authority to issue “letters patent” for inventions of new manufacture for a period of up to 14 years.

It was founding father (and later, president) James Madison who set the stage for American innovation literally for generations to come.10 In Madison’s view, the right to intellectual property was predicated upon the philosophy of natural rights, and under the “labor” theory of property, to wit, a person had a right to what he produced with his own labor, whether physical or mental in nature.

During the Constitutional Convention, on Aug. 18, 1787, Madison proposed that Congress be empowered “to encourage, by proper premiums & provisions, the advancement of useful knowledge and discoveries.” The need for a federal patenting system, as opposed to a crazy patch-quilt of state regimes, was already well-understood. The so-called Committee of Detail took Madison’s proposal, combined it with recommendations by Madison and Charles Pinckney for literary copyright protections, and conjured up the now-familiar Copyright and Patent Clause:

“[The Congress shall have power] 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.”

United States Constitution, Article I, Section 8, Clause 8.

The Convention approved the clause unanimously without further discussion.11

In January of 1790, President George Washington delivered his first State of the Union address. Spring arrived and, a week before

founding father Benjamin Franklin died, President George Washington stamped his imprimatur on the legislative bill which laid the foundations of the modern American patent system on the 10th day of April of that year.

The American patenting system, for the first time, recognized an inventor’s legal right to profit from his own invention. Thus, the law awarded inventors a piece of the patent pie as if it were the fruits of a mental harvest and, thereby, encouraged future innovation by protecting the same as a private property right (albeit for a limited, specified period.)

Under earlier (foreign) systems, the inventors might be granted privileges at the whim and caprice of the monarch or, in lieu thereof, by special legislative enactment. To illustrate, in 1421, Filippo Brunelleschi, a Florentine architect, was afforded a monopoly for a crane system for transporting marble. Two decades later, John of Utynam, a Flemish glassmaker, was granted a 20-year English patent relative to the art of stained-glass manufacture. The 15th century also witnessed the passing, by the Senate in Renaissance Venice, in 1474, of what many scholars deem to be the first true patent law.12

Fast-forward a tad over 300 years. The neophyte American experiment in liberty and democracy was bustling with developments and events.13 On or about April 15, 1790, Thomas Jefferson sent two copies of the Act of 1790 to the Governors of the dozen states that had ratified the Constitution:

“I have the honor to send you herein enclosed two copies duly authenticated of the Act to promote the progress of the useful arts, and of being with sentiments of the most perfect respect, Your Excellency’s most obedient & most humble servant, Thomas Jefferson.”14

Business in the patent market, in 1790, was not brisk. Indeed, only three patents in total were granted the entire year.

“From April to July they awaited a successful applicant. When he came at last, the three Cabinet officers—Jefferson, Knox, and Randolph—sat in solemn dignity to determine that Samuel Hopkins was entitled to a patent for his new method of making potash and pearl ash.”15

Thus, the very first U.S. patent was granted, on July 31st, to Mr. Samuel Hopkins of Pittsford, Vermont. Hopkins’ invention was an improvement in the making of potash (a substance derived from the ash of burned plant matter) which, in turn, was utilized to make soap and other useful consumer items.

In order to handle the eventual influx of patent applications, the Patent Board Commission of the United States was formed during that same year, comprised of only three Members, to wit: U.S. Secretary of State Thomas Jefferson,16 U.S. Secretary of War Henry Knox,17 and U.S. Attorney General Edmund Randolph.18

The Hopkins’ patent boasted a few additional novelties or trivial technical and procedural factoids worth mentioning. No formal process for examination had been yet devised or prescribed. So, the patent initially was reviewed by none other than Thomas Jefferson, then Secretary of State, and himself an inventor of sorts (e.g., his portable desk, invented in 1775). Once done with his study of the matter at hand, Jefferson (sometimes referred to as the “First Patent Examiner”) passed the Hopkins patent application along to the Secretary

of War for his review and then obtained signatures from the Attorney General and, finally, from President Washington himself.19

Under this infant patenting process, allegedly patentable inventions would be evaluated on merit and originality. During that inaugural year, only two more patent applications were received, however, the pair of which were issued after careful deliberation and collection of more “John Hancocks.” The applications and, thus, patent protections, were a great bargain, as they only set back the applicant about $4.00. Still quantifiably modest, business soon started to pick up on the American patent scene.

At some point in or around 1791, as the collection of miniaturized patent models20 mushroomed, and the stacks of papers mounted, Jefferson and his colleagues evidently came to the realization that that the examination of patents should not be foisted upon the already pre-occupied members of the U.S. Cabinet. The sparks of American ingenuity and the flame of inventive spirits, though grand traits in the overall scheme of things, were beginning to inundate Jefferson’s office. Jefferson had good cause to exclaim that: “the patent act has given a spring to invention beyond my comprehension.”21

The Patent Law was revised in 1793, and a simple registration system was ushered into place. The Inventor-Applicant who submitted a model, swore that the invention was original, and paid a fee of $30.00 (approximately $899.38 in 2023 dollars), could count on a patent being granted. And the Honorable Messrs. Jefferson, Hopkins, and Randolph soon were to be let off the hook, free once again to attend more pressing matters of state.

In 1793, the changes to the law meant, among other things, that such matters were placed squarely, and exclusively, on the shoulders of the Secretary of State. As the flood of applications for patents continued, further streamlining and organization became both necessary and desirable. The Patent Board Commission was disbanded and replaced by a Clerk in the office of the U.S. Department of State.

Accordingly, by that time, all patent examining duties were reassigned to a single State Department clerk, inasmuch as the Patent Office was not formed until nine years later in 1802.22 At present, the federal governmental organ that handles such duties employs over 10,000 people and has issued, in total, in excess of ten million patents both to American citizens and foreign nationals. As of February of 2023, USPTO has issued more than 11.5 million U.S. Letters Patents.

After James Madison23 took office as the second U.S. Secretary of State (1801-1809), under President Jefferson, he pushed for Congress to set up a separate Patent Office, but the lawmakers declined the proposal. Undaunted, Madison figured out a workable alternative. Instead, he created a Patent Office within the State Department which he headed. In 1800, the State Department, including the Patent Office, was housed temporarily in the same building as the U.S. Treasury Office.

In May of 1802, President Jefferson appointed William Thornton, a close friend of Madison, as the Patent Clerk, at a salary of $1,400 per year, to take charge of the burgeoning business of patent review. During one period, Thornton was paid $2,000 a year as the “Superintendent” of Patents24, at the same time acting as justice of the peace (being entitled to certain fees), a commissioner of bankruptcy, and a member of the levy court. Thus, Thornton was the first person to have official charge over U.S. patents, but his greatest impacts on the Patent Office were still down the road a piece.

To be sure, Dr. William Thornton (1759-1828), was a bona fide exemplar of an early American “Renaissance Man.” A civil engineer by

profession, Thornton was a true polymath, not to mention a medical doctor, and an architect. He had designed the original U.S. Capitol building and was, himself, an inventor. As the first Superintendent of the Patent Office, he was, by most accounts, a deeply devoted government servant. Though it has been said that Congress paid him far too little, and grossly underfunded and understaffed his office, Thornton, along with his wife Anna Maria, dutifully copied patents at home in their own free time.

Secretary of State Madison urged Congress to give Thornton money for his Patent Office work. Moreover, a physical working space would be required.

In 1810, Thornton moved the patent models, and the patent papers into a portion of “Blodgett’s Hotel,” a building that had been purchased, at a bargain basement price, by the federal government, located on the north side of E street, between Seventh and Eighth streets. Despite the name, it was not a hotel. The Patent Office occupied the east end and shared the building with the U.S. Post Office.25 The United States Patent Office and the Post Office remained in this building until the Second Great Fire which occurred in 1836. (See discussion, infra.)

Today, the building would be found in the Penn Quarter (Chinatown) of Washington, D.C. In 1800, the U.S. Theatre moved into the edifice. Later, and still to this day, the building on the property became the Hotel Morocco, situated at 700 F Street NW, a stone’s throw from the National Portrait Gallery and the U.S. Navy Memorial Plaza.

Blodgett’s Hotel previously was the largest privately-owned structure in Washington; it had been constructed by Samuel Blodgett, Jr. (1757-1814), a merchant and Massachusetts native, as part of a bizarre lottery scheme to pay for public buildings in Washington. The “hotel,” in fact, was to be the lottery’s grand prize, having been designed by James Hoban (1758-1831), the same architect who designed The White House. The lottery scam, however, turned more into Blodgett’s blunder, and Blodgett not only lost the shirt off his back but ended up in a debtor’s prison.26 After the fact, the federal government gleefully took over the building and slated it to be utilized for U.S. government offices.

Thornton’s job was by no means an easy one and he appears to have been sorely underpaid. In that regard, he did not always hide his true feelings about his health, the less-than-plum nature of the position, his lack of compensation, and the thought of getting a new “situation” (job); indeed, he was not beyond petitioning then-President Jefferson for aid and assistance, as he did, in the mournful letter below penned on May 8, 1812 (prior to the First Great Patent Office Fire of 1814):

I have been for six months past much affected by symptoms of palsy at one time nearly speechless, and almost comatose; several times since exceedingly affected, & scarcely able to move my hands, & now my feet begin to be affected also; I am electrified and rubbed with vitriolic Ether almost daily, & am under a Course of Medicines, but I begin almost to despair of recovery; unless I can change my situation; for my severe Duties confine me very much. The Patents have increased exceedingly, and produce now nearly $7000 per Annum, though when I entered on the Duties not more than $1400 were produced. My Salary was raised to two thousand Dollars by the present Presidt before he left the Secy of State’s Office,

but his Successor not asking for a sufficient Appropriation I was only occasionally paid at that rate, & lately by taking into the Secy’s Office more Clerks, they have absorbed the provision from which I was paid, & Congress have not yet made any Appropriation for the Deficiency & have only provided a continuance of $1400. Mr. Burwell & some other of my Friends, Members of the Comme. of Ways & Means, to whom this is referred, I believe are favourable, but I doubt whether the house will be found so. If not I mean to solicit (but it may be in vain) the Appointment of Consul to London, which I believe is yet unfilled. –I have not seen any of my relatives for more than 20 years, & the change of Climate might aid my recovery, if it should please the Almighty to grant me a respite from pain, which is now become almost constant. – I am, dear Sir, very sincerely & with the highest respect & consid. Yrs &c.

William Thornton”27

In April of 1816, President Madison did tell Congress that the Patent Office ought to be afforded the status of a separate bureau. Still, no action in that regard was then taken and it further appears that compensation for the head man lagged behind other government leadership positions. In 1829, Dr. John C. Craig, the third Superintendent of Patents likewise complained of the relative lack of pay.

During the 1820s, Thornton was a member of the prestigious society, the Columbian Institute for the Promotion of Arts and Sciences, which counted among its members former presidents Andrew Jackson and John Quincy Adams, together with many other prominent contemporaries, including well-known representatives of the military, government service, medical, and other professions.28 Dr. Thornton held the position of Superintendent of Patents from June 1, 1802 until 16 years later, when, on March 28, 1828 he died with his boots on. Thornton was laid to rest in the Congressional Cemetery, in a tomb comparable to those afforded to senators and representatives. His grand funeral procession included the President of the United States, and members of the Cabinet and Congress.29

For more on the Blazing History of the U.S. Patent Office, be sure to read Part Two in The Federal Lawyer Supp., a digital edition of the magazine to be published in early July 2023.

Ira Cohen, Esq., B.A., J.D., LL.M., is an Intellectual Property Attorney and is the founder and principal of Ira Cohen, P.A. of Weston,  FL.  He is a member of the Florida and New York Bars, has been practicing law for 42 years, and is rated AV Pre-Eminent® by Martindale Hubbell.® Attorney Cohen served as Judicial Law Clerk to the Honorable Harold J. Raby, United States Magistrate Judge for the Southern District of New York (1982-85). Ira also is the Immediate Past Chair of the FBA’s Intellectual Property Law Section, a proud Sustaining Member of the Federal Bar Association, a Lifetime Fellow of the Foundation of FBA, the Columns Editor for The Federal Lawyer, an FBA Moot Court Judge, a Member of FBA National Council, and an FBA Mentor.  Ira can be reached at icohen@ictrademarksandcopyrights.com

Endnotes

1Source: Collected Works of Abraham Lincoln, edited by Roy P. Basler, et al.; www.azquotes.com.Abraham Lincoln, “Speeches and Letters of Abraham Lincoln(1832-1865)(Easy Read Super Large 20 pt Edition)”, p. 14.

2It did not become the United States Patent and Trademark Office (USPTO) until the year 2000.

3Trademarks (and service marks), unlike patents and copyrights (which are creatures of the U.S. Constitution), also can be registered at the state level.

4The current Commissioner for Patents is Vaishali Udupa (who commenced service on January 17, 2023). The Commissioner for Trademarks, at present, is David Gooder.

5“Blackstone’s Commentaries”. “THE king’s grants are also matter of public record. For, as St. Germyn ſays, the king’s excellency is so high in the law, that no freehold may be given to the king, nor derived from him, but by matter of record. And to this end a variety of offices are erected, communicating in a regular ſubordination one with another, through which all the king’s grants muſt paſs, and be tranſcribed, and enrolled; that the ſame may by narrowly inſpected by his officers, who will inform him if any thing contained therein is improper, or unlawful to be granted. Theſe grants, whether of lands, honours, liberties, franchiſes, or ought beſides, are contained in charters, or letters patent, that is, open letters, literae patentes: ſo called becauſe they are not ſealed up, but expoſed to open view, with the great ſeal pendant at the bottom; and are uſually directed or addreſſed by the king to all his ſubjects at large. And therein they differ from certain other letters of the king, ſealed alſo with his great ſeal, but directed to particular perſons, and for particular purpoſes: which therefore, not being proper for public inſpection, are cloſed up and ſealed on the outſide, and are thereupon called writs cloſe, literae clauſae; and are recorded in the cloſe-rolls, in the ſame manner as the others are in the patent-rolls...” Book 21, Ch 21, p. 345 (1758). https://avalon.law.yale.edu/18th_century/blackstone_bk2ch21.asp 6Patents were given, for example, to favored courtiers for vinegar and playing cards. Kwong, Matt, Six significant moments in patent history, Nov. 4, 2014, http;//www.reuters.com/article/us-moments-patentidUSKBNOIN1Y120141104.

721 Jac 1 c3 (introduced by Sir Edward Coke), passed on 29 May 1624.

8CORTADA, JAMES W., RISE OF THE KNOWLEDGE WORKER, VOL. 8 OF RESOURCES FOR THE KNOWLEDGE-BASED ECONOMY, 141 (1998).

9Patent specifications (i.e., the concept of publishing the description of the invention) were introduced by King Henry II of France (15191559) in the year 1555.

10As president, Madison made another yet appointment that greatly influenced the future of American patents. Having appointed Joseph Story to become a U.S. Supreme Court Justice, in 1811, Story served on the high court for over three decades, authoring no less than forty opinions relating to the subject of patent law.

11Writing in Federalist Paper 43, under the nom de plume, “PUBLIUS,” Madison stated: “The utility of this power will scarcely be questioned. The copyright of authors has been solemnly adjudged, in Great Britain, to be a right of common law. The right to useful inventions seems with equal reason to belong to the inventors. The public good fully coincides in both cases with the claims of individuals. The States cannot separately make effectual provisions for either of the cases...” The Federalist No. 43, at 1 (James Madison). https://avalon.law.yale.edu/18th_century/fed43.asp His fellow Founding Fathers Alexander Hamilton and John Jay also used the same pseudonym.

12Some scholars posit that there is evidence that a form of patent rights was recognized as early as in the time of Ancient

Greece. It is believed, for example, that, around 500 BCE, in the early Greek city of Sybaris, exclusive rights were granted, for a period of one year, to creators of unique culinary dishes.

13The federal government had moved its headquarters from New York City to Philadelphia in November of 1790.

14RAAB Collection, www.raabcollection.com/presidentialautographs/thomas-jefferson-patent-act.

15History of the United States Patent Office, The Patent Office Pony, Prologue—The Centennial Celebration, www.myoutbox.netr/ popch00.htm

16Jefferson, of Virginian stock (1743-1826), was an American Founding Father, the principal author of The Declaration of Independence, and the 3rd President of the United States (18011809).

17Knox, of Boston, Massachusetts (1750-1806), was the former Chief Artillery Officer of the Continental Army under General George Washington.

18Randolph, of Williamsburg, Virginia (1753-1813), was the 1st Attorney General of the U.S. (1789-1794), and previously had served as the aide-de-camp to General George Washington, as well as the 7th Gov. of Virginia and, later, the 2d Secretary of State of the United States.

19The original document is still in existence and is housed at the Chicago Historical Society.

20The model requirement was included because many applicants lacked literacy skills at that time. The working models, which were intended to convey the nature and purpose of the submitted invention, had to be no larger than 12 inches by 12 inches. See “The Early History of the Patent Office,” LexisNexis IP, Oct. 26, 2015, https://www.lexisnexisip.com/knowledge-center/the-early-historyof-the-u-s-patent-office/

21Id.

22See, generally, KENNETH W. DOBYNS, THE PATENT OFFICE PONY: A HISTORY OF THE EARLY PATENT OFFICE (reprint edition, 1997).

23Madison (1751-1836), an American statesman, Founding Father and, later, the 4th President of the U.S. (1809-1817), also is remembered as the “Father of the Constitution” (as he is recognized as the principal drafter of both the Constitution and the Bill of Rights).

24Congress referred to the position as the “Keeper” of patents; Thornton may have given himself the other title.

25The United States Post Office Department was established on February 20, 1792, by the signing of the Postal Service Act, based upon the Constitutional authority empowering Congress to “establish Post Offices and Post Roads.” U.S. Constitution, Art. I, Section 8, Clause 7.

26Though it may surprise many modern-day readers, various colonial American jurisdictions had hitherto established debtors’ prisons largely based upon the British model. Indeed, they were quite prevalent in the U.S. at least until the mid-nineteenth century. Later on, the poorhouses or the poor farms were viewed as more humane societal alternatives. Believe it or not, jurist James Wilson, one of the signers of the Declaration of Independence, served time, in 1792, in a debtors’ prison… during his tenure as an Associate Justice of the U.S. Supreme Court! (1789-1798), as a result of land speculation in New York and Pennsylvania. Kindig, Thomas, “James Wilson 17421798”. ushistory.org/declaration/signers/Wilson.html. Retrieved

on 27 Dec. 2018. Under federal law, imprisonment for debt was abolished in 1833, but the practice persisted in many states. See Wendy McElroy, The Return of the Debtors’ Prison?, The Independent Institute, April 1, 2008.

27‘William Thornton to Thomas Jefferson, 8 May 1812”, Founders Online, National Archives, last modified June 13, 2018, http:// founders.archives.gov/documents/Jefferson/03-05-02-0020-0001. 28Rathbun, Richard (1904). The Columbian institute for the promotion of arts and sciences: A Washington Society of 1816-1838. Bulletin of the United States National Museum, October 18, 1917. Retrieved 26 Dec. 2018. The first “learned society” established in Washington, it was organized on June 28, 1816. The second article of its constitution stated: “The Institute shall consist of mathematical, physical, moral and political sciences, general literature and fine arts.”

29On Thornton’s tomb was etched in stone his motto, “Deo Spes Meo.” [I hope to God]. History of the Architects of the Capitol, https:// www.govinfo.gov/content/pkg/GPO-CDOC-108hdoc240/pdf/ GPO-CDOC-108hdoc240-2-11.pdf.

The Local: A Legal Thriller

By Joey Hartstone

Published: June 14, 2022; Doubleday

E-Book, 305 pages, $28.00

Reviewed by: Conor Craft Marshall, Texas: Small-town lawyer James Euchre’s only legal experience is serving as local counsel for intellectual property litigation in the Eastern District of Texas, where Judge Gerald Gardner rules the patent docket like his personal fiefdom. But when Gardner is murdered and Euchre’s client— the head of a prosperous tech company facing an infringement lawsuit—becomes the chief suspect, Euchre abruptly finds himself trying a case with much higher stakes than reasonable royalties.

Joey Hartstone’s The Local leads the reader through the ups and downs of Euchre’s first murder trial, and as always in a legal thriller, lawyers will need to suspend their disbelief to some degree: Euchre happens to be the last person who saw Judge Gardner alive, only hours before his death, but of course a compelling story requires that Euchre serve as defense counsel, not a mere witness. Some of the asides about patent law

seem to go off the rails. (At one point, a seasoned patent litigator confidently tells the court, “It goes without saying that one can patent an idea.” But see Gottschalk v. Benson, 409 U.S. 63, 71 (1972): “It is conceded that one may not patent an idea.”). And though Euchre has no experience as a criminal lawyer, his rich client—with the pick of attorneys from across the country— adamantly wants Euchre defending his life all the same.

Still, Hartstone gets enough of the law right—throwing out terms like “Markman hearing” and distinguishing between district judges and magistrate judges—to create a sense of verisimilitude. The underlying premise of the novel is also grounded in reality. At least until 2017 (see TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 581 U.S. 258 (2017)), Marshall and the Eastern District of Texas were indeed the premier locations for patent litigation in the United States, and even after TC Heartland, a different district in Texas (until recent changes in the distribution of patent cases among its divisions) became the new preferred venue for plenty of patent plaintiffs. A lawyer in Euchre’s position could easily have found rich clients and lots of work as local counsel. All in all, as long as the reader doesn’t mind the occasional melodramatic hearing, the inaccuracies shouldn’t bother.

Besides, the stories of Euchre’s past, and the mystery behind the murder, are both more engrossing than the legal wranglings. As good authors commonly do, Hartstone drops hints about Euchre’s background early in the novel and presents a flawed character who obviously suffered trauma in his life. The full revelation of Euchre’s personal history comes late in the novel, and when it does, it proves satisfying. Hartstone creates a backstory that explains Euchre’s foibles and also offers a hopeful hint of a man who regrets his mistakes and, at bottom, hopes to learn from them to better care for others.

Readers looking for romance will also find a dash of it, though the romance contributed much less to Euchre’s character than his backstory. Euchre’s romantic interest seemed at times to be a literary

convenience, inserted so that Euchre would have someone to whom he could explain his backstory for the reader’s benefit.

More illuminating than the romance was Euchre’s relationship with a much-maligned fellow attorney from Marshall, Samuel Earl Whelan. The two have clashed routinely and sometimes physically, as Whelan at one point took a swing at Euchre in open court. In the end, however, Euchre admirably demonstrates compassion and forgiveness for the man who wronged him. Hartstone also adds a touch of redemption for Whelan himself. One of Samuel Earl’s last acts in the novel shows how even a deeply flawed man can display loyalty and self-sacrifice, albeit— in this case—in a way that may not lead to justice.

The mystery, meanwhile, includes a legal thriller’s obligatory twists and turns, with assorted suspects who had motive, means, or opportunity to kill Judge Gardner. Hartstone adds to the drama by creating a sympathetic defendant for Euchre’s client. Like Euchre and Samuel Earl, defendant Amir Zawar has his flaws but also his redeeming qualities. Zawar has a hot temper and passion he sometimes can’t control, but principally, he is a man with big dreams and impressive dedication. The hardworking son of hardworking immigrants, he built his tech company from the ground up; he’s an American success story a reader can root for. A darker aspect of Zawar’s character emerges later in the novel, but for most of the story, he’s a rags-to-riches entrepreneur who has put his faith in the American legal system. It’s up to Euchre to prove that faith wasn’t misplaced, and I found myself hoping he was up to the task.

Euchre, of course, has his work cut out for him. Set aside the complete lack of criminal experience; he also has evidence pointing in different directions, numerous leads to run down, and an often uncooperative client. Hartstone, though, weaves in hints along the way to guide the reader and our protagonist towards the right answer, and when Euchre finally unmasks the murderer, the explanation and the evidence hold together fairly well: not so far-fetched

as to make the reader’s eyes roll, but not so obvious as to be easily guessed.

Some potential plot points or aspects of the characters do go unexplored. Euchre’s budding romance has little impact on the novel’s story, and every lawyer in the novel, Euchre especially, seems to drink heavily— perhaps an undeveloped allusion to the rate of substance abuse in the legal profession. Still, a focus on the main plot is hardly a fault in a thriller; the story proceeds apace to the conclusion, and the reader need not wait long to see the mystery solved.

Overall? Don’t read The Local if you want any tips on practicing law but do read it to enjoy guessing at the murderer and seeing if you can beat our protagonist to the conclusion.

Conor Craft graduated from the University of Illinois College of Law and has spent his legal career with the federal government, including the last seven years at the Department of Justice.

Citizen Justice: The Environmental Legacy of William O. Douglas Public Advocate and Conservation Champion

By M.  Margaret McKeown

Published: Sept. 1, 2022; Potomac Books

Hardcover, 288 pages, $29.95

Reviewed by: Gustavo A. Gelpí

Justice William O. Douglas is popularly remembered as the longest-tenured justice

in history, as a civil libertarian, prolific writer of books, and the author of Griswold v. Connecticut (1965), which established the constitutional right to privacy. In this book, however, Judge Margaret McKeown, of the United States Court of Appeals for the Ninth Circuit, ably paints a vivid picture of his legacy as an environmental champion, both within the high court through his legal writings, and, of greater impact, without his robe as citizen justice. She also addresses the ethical issues presented by his advocacy and extrajudicial activism.

The book consists of 11 chapters threading Douglas’s life between his beloved wilderness and Washington, D.C. Born in Minnesota in 1898, he moved with his parents to Washington state as a toddler, spending most of his adolescent life in the natural beauty of Yakima. As chapter one narrates, following an early bout with polio, Douglas constantly trekked the landscape surrounding Mount Adams and Mount Rainier. Not only did he recover his health, but he immersed himself in nature. Years later, this would become the basis of his conservationist path. Following his graduation from Whitman College, he headed east to Columbia Law School, graduating at the top of his class and serving as a member of its law review. During the next 14 years, he trampolined from corporate law practice to academia—at Yale Law School, to the chairmanship of the Securities and Exchange Commission, and finally to the Supreme Court.

Chapter two paints Douglas’s early tenure at the Supreme Court, during which he became part of the political lifeblood of the nation’s capital, frequently meeting with the President, cabinet members, ambassadors, and members of Congress—both socially and to discuss important national and international issues. At one point, he was even considered a potential presidential candidate. In the 1940s, the dividing line between what federal judges could and could not do outside the courtroom was blurry, to say the least.

Chapters three and four bring us to 1954, a pivotal year for Douglas’s conservation campaigns, which he would continue throughout his life. That year, a proposed highway endorsed by the Washington Post was to raze the Chesapeake and Ohio Canal, which he frequently hiked when in D.C. Douglas, in turn, invited members of the Post’s editorial board to join him in walking the 189 miles of the canal. These power

walks convinced the Post to change its views and ultimately preserved the canal. They also led to further long-distance walks across the nation, supported by Douglas’s national prominence as depicted in chapter five.

Following the success of the canal hike, Douglas joined a scientific expedition into the Alaskan wilderness in 1956. Worried that this vast natural expanse would be jeopardized by logging and oil drilling, Douglas lobbied the Eisenhower administration to preserve 8.9 million acres to protect wildlife and wilderness and recreational values. This area would be expanded by future administrations over the following decades. Next, in 1958, Douglas, joined by members of conservation groups, set his efforts on his beloved Washington state and the Olympic National Park, leading a beach protest walk to successfully stop the proposed extension of U.S. Highway 101, which would have put an end to the country’s longest stretch of natural coastline. This protest hike, followed by a second in 1964, sounded the death knell on the highway and saved the coastline.

Chapter six reveals how Douglas slid into D.C.’s power corridors to lead his ambitious conservation crusade until his retirement in 1975. With Presidents Eisenhower, Kennedy, and Johnson, cabinet members, and members of Congress, he employed his advocacy. No federal agency with the ability to impact the environment was safe from his grasp, including the Tennessee Valley Authority, Bureau of Mines, Public Roads Administration, National Park Service, Forest Service, Department of the Interior, and the Army Corps of Engineers. In an unprecedented interview for Playboy magazine, he assailed the agencies for their lack of environmental sensitivity and for despoiling natural resources. A canoe trip protest at the Buffalo River in Arkansas and another at the Red River Gorge in Kentucky arguably culminated in President Johnson signing The Wilderness Act into law.

Chapter seven further expands on Douglas’s outreach efforts. He was a member and board member, respectively, of the Sierra Club and The Wilderness Society. He continued writing to members of Congress and publishing articles in Living Wilderness’s newsletter. He lobbied to stop logging in Oregon’s Minam Valley. Seeking to broaden his audience, he wrote articles for Ladies Home Journal, Reader’s Digest, National Geographic, the Bulletin of Atom Scientists, and many others. And, besides legal books, he

wrote books chronicling his life’s connection with nature, exposing readers to natural sites, such as Of Men and Mountains and My Wilderness: The Pacific West.

We now walk into the confines of the Supreme Court itself in chapters eight and nine, which tell of Douglas’s mission from the bench to teach the public about conservation. In most cases he did so in dissent. In 1967 he made one of the first references to “ecology,” and in 1970 he was the first justice to use “environmental” in a court opinion. In Udall v. Federal Power Commission (1967), Douglas authored the majority opinion which stopped the construction of a dam on the Snake River in Idaho and held that a public interest existed in protecting the river and its wildlife. In the landmark Sierra Club v. Morton (1972), however, he stood in dissent. The majority held that the Sierra Club had no standing to sue to stop a development in the Sierra Nevada Mountain Range, as it did not allege an injury to itself nor to its members. Douglas, on the other hand, passionately understood that the club had standing given that the environmental harm was the injury itself and the environment cannot speak for itself.

The final two chapters recount Douglas’s many preservation battles: protecting the Miniam River in Oregon against 51 miles of roads to facilitate logging; saving Miners Ridge in Washington state as a national park; and doing the same towards the end of his life for the Cougar Lakes Basin in the Cascades Mountain Range. Finally, we are left to wonder whether Douglas’s conservation advocacy during his 36 years on the Supreme Court would have been possible under the current judicial ethics landscape.

Just as Dr. Seuss’s The Lorax spoke for the trees, “for the trees have no tongues,” so spoke Douglas for the environment as citizen justice. Along with President Theodore Roosevelt and Sierra Club founder John Muir, Douglas’s longevity permitted him to speak out on behalf of nature during a great part of the 20th century from both the bench and wilderness. Thanks to Judge McKeown, Justice Douglas, now more than ever, continues to stand as a giant of environmental law and advocacy.

Hon. Gustavo A. Gelpí was appointed to the U.S. Court of Appeals for the First Circuit in October 2021. He is a past president of the FBA.

Shaping the Bar: The Future of Attorney Licensing

By Joan W. Howarth

Published: December 2022; Stanford University

Press

Hardcover, 240 pages, $35.00

Reviewed by: Marsha Griggs

Shaping the Bar is a must-read for practicing attorneys. Author Joan Howarth, a lawschool professor and former dean, dives deep into the purpose and problematic history of attorney licensure in the United States. Howarth proposes pathways to bar admission that, unlike the timed, multiple-choice memory tests, are anchored in the actual skills of competent client representation. Howarth subdivides her book in to four equally thought provoking sections that: 1) trace the origins of bar admission back to colonial times; 2) offer psychometric and practical critique of the validity of the bar exam as a test of minimum competency; 3) call out the persistent racial disparities in bar exam performance and its impact on the profession; and 4) provide an actionable roadmap to a better system of attorney licensure that prioritizes the skill and input of those engaged in the practice of law. Howarth easily captures an audience of attorney readers as she prefaces chapter one by recounting her experience of studying for the California Bar Exam and awaiting and receiving the results. Describing the day

that she found her name on the pass list for the California Bar Exam, she “was delighted to never again have to think about the bar exam.” As Howarth deftly points out, too many of us—once admitted to practice— make the bar exam a distant memory and pay little or no attention to the process by which we determine an aspiring attorney’s worthiness to practice law. While not unreasonable to put the painful memory of the bar exam in the distant recesses of our minds, Professor Howarth reminds us that it is our professional responsibility to both know and have input in determining what minimum competence to practice law really means.

Howarth unflinchingly demonstrates that the current system of licensure by bar exam is insufficient to offer the public the protection it claims because timed, closed-book bar exams do not validly measure attorney competency, and the present-day bar exams perpetuate—once intentional—racial disparities that keep the legal profession “86% white.” This groundbreaking book calls attention to the “rhetoric of public protection” that is more precisely aimed at protecting the profession than those served by it.

Part one unwinds the interconnection of the American Bar Association (ABA) to the Association of American Law Schools (AALS), and to the National Conference of Bar Examiners (NCBE) that was built on the mutual distrust of non-elite law schools and a shared preference to keep the profession male and white. Howarth describes an outright consanguineous relationship between these regulatory entities. Howarth points out that their weighty influence over the judiciary and the practicing bar has resulted in great judicial deference to the NCBE and state bar examiners, as courts have routinely sided with bar examiners in civil rights cases. That deference, as Howarth describes, includes exemption from Title IV standards, a deferential rational-basis standard, and impenetrable protection from judicial scrutiny. Howarth pulls no punches as she describes, in stark contrast, “the power structure and protection afforded to bar examiners is juxtaposed against the history of purposeful discrimination and exclusion by state bar examiners.”

Part two lays plain legal education’s irrational disdain for the practice of law, evidenced by law schools’ widespread adoption of the Langedellian model of instruction. Howarth is critical of the hiring models employed by most law schools—ones that prioritize doctoral degrees over law-practice

experience—leaving future lawyers to be taught primarily by faculty with little to no law-practice experience. She points out that law schools require far less clinical experience than other professional schools. Howarth identifies distressing false assumptions that knowledge of case law rules is separate from and more important than practice skills. Howarth says, “these assumptions have become cascading fallacies of the bar exam, each step taking us further from what lawyers do.”

Highlighting the gap between legal education and law practice, Howarth says the deliberate push away from practice skills in law schools spills over to the bar exam because “licensers have had to look almost entirely to legal education for bar exam content.“ Howarth reiterates longstanding criticism that the bar exam lacks sufficient validity, arguably by design as the exam is modeled after what law schools teach instead of on what lawyers need to know how to do. Howarth takes the unarguable stance that the primary task of the law professors and bar examiners—who are the gatekeepers of the profession—should be to understand what minimum competence in a lawyer looks like.

With receipts in hand, Howarth offers evidence that state bar exams and the multistate bar exams controlled by the NCBE have never been validated. Meaning, as she explains, that “no job analysis or other scientific study links the exam’s content to the skills and knowledge needed by new attorneys.” Describing decades of lost opportunities to engage in practice validity studies, and more recent opportunities to lean into the McCrate Report and the IAALS Building a Better Bar Study, Howarth laments that “nothing guarantees that a law school graduate will have ever set foot in a law office” or a courtroom.

In part three, Howarth offers a bold solution to redress longstanding issues of exclusion, intrusion, and inconsistency in character-and-fitness determinations. The character and fitness process has kept out individuals due to race, ethnicity, LGBTQ status, political activism, gender identity, financial status, and mental health history. She says that predictions about future misconduct are often wrong. Howarth proposes that state bars shift some character-and-fitness scrutiny away from bar applicants to attorneys in practice. She suggests that state bar associations should invest resources into monitoring

and preventing attorney misconduct. She also proposes that law schools should better prepare students to cope with the stresses of law practice by emphasizing professional-identity formation at all stages of the law school curriculum. She says, “teaching or learning the rules of professional responsibility is much easier than teaching or learning how to follow them. But both are possible.”

Shaping the Bar ends as it began, with an underscored emphasis on public protection by ensuring that newly admitted attorneys demonstrate minimum competence to be entrusted with client representation. Tackling the problems analyzed in parts one through three, part four lays the framework for a licensure structure centered around the skill of practicing law and not the rote memorization of legal rules that may be unrelated to the new attorney’s practice area, or even the law of the jurisdiction where the new attorney will practice. According to Howarth, better public protection will require “greater jurisdictional leadership,” and arguably more input and participation from those who practice law.

Howarth presents a licensure framework that is well-defined and possible to implement. She offers 12 foundational principles for thinking about more effective ways to protect the public through attorney licensing. I list only five of the principles here:

• New lawyers should have to participate in a “clinical residency” under the supervision of a licensed attorney before receiving a law license;

• Bar exams should test performance skills, not rote memorization of common law rules;

• Jurisdictions should offer multiple pathways to bar licensure;

• Authority to regulate the profession (entry and discipline) should rest entirely in the state courts and state bar associations, and not in test distributors or commercial bar preparation companies; and

• Once licensed, attorneys should have to engage in a modest self-assessment to periodically reassess practice competency.

The only question left unanswered by Professor Howarth’s exhaustively researched book is whether a system of legal education and licensure that cherishes the practice of law instead of disregarding it—one where status hierarchy does not privilege those without law practice experience over those

with it—would be the condition precedent for the rollout of her plan or the professional utopia that will result from it. 

Marsha Griggs is an associate professor at Washburn School of Law where she teaches Professional Responsibility and Remedies. Before teaching she practiced commercial litigation and served as Assistant Regional Counsel for the Federal Bureau of Prisons.

Alan Ellis’ Federal Prison Guidebook (Revision 6)

By Alan Ellis, Maureen Baird

Published: Jan. 1, 2022; James Publishing

Paperback, 600 pages, $299.95

Reviewed by: Elizabeth Kelley

I have reviewed several editions of Alan Ellis’ Federal Prison Guidebook for The Federal Lawyer. The reason I always volunteer to review the latest edition is that each time, there is important new material. This edition is no exception.

Ellis is a longtime—bordering legendary—criminal defense lawyer. He has established himself as a pioneering specialist in federal sentencing. Others have come after him, but he remains the first. The Federal Prison Guidebook is now in its 24th edition, or as its publisher states on the cover, revision six. With one exception, it has been reliably published every two years since 1998. The evolution of the book is itself a story.

It all began many years ago when Ellis was a brand-new lawyer practicing in State College, Pennsylvania. He tried two jury cas-

es, and both times, his clients were convicted. An experienced lawyer offered him some advice: First, when the government refers to your client by a derogatory term, do not nod your head in agreement. Second, in closing argument, don’t say your client didn’t do it; rather, wrap your arms around the flag and argue reasonable doubt. In his next jury trial, Ellis followed this advice, and his client was acquitted. Nonetheless, Ellis decided he wasn’t cut out for this and changed the focus of his practice. He began representing people at parole hearings and, eventually, built a nationwide practice.

At that time, the Bureau of Prisons published a relatively thin guide to prisons. In 1998, it stopped publication. Ellis decided that it was a valuable resource, and that if the bureau was not going to publish it, he would. Thus, he began self-publishing the Federal Prison Guidebook. In 2010, he was approached by James Publishing, who offered Ellis a lifetime contract for producing a new edition every two years. A look at the guide over the years shows that it has grown in length and that various experts in the field of federal sentencing have contributed chapters—such as Mark Allenbaugh, Jonathan Edelstein, J. Michael Henderson, and Doug Passon. Former Bureau of Prisons warden, Maureen Baird, joined Ellis in this edition as a co-editor.

This latest volume follows the same organization as past editions. The first half of this two-and-a-half-inch book (it doesn’t have page numbers but rather section numbers) is both a deep dive into and an intricate examination of all aspects of federal sentencing and post-conviction remedies. (It is this level of detail which caused a criminal defense lawyer with whom I have worked to say that not having a copy of the guide is malpractice.) The first chapter is “Federal Prisons 101”—it discusses everything from reporting to prison to metal health resources to commissary. Other chapters cover prison placement, RDAP (Residential Drug Abuse Program), and how to do time. In this edition, there are over a dozen new sections on topics such as compassionate release, the First Step Act, and loss calculation in white collar sentencing.

The second half of the guidebook is a description of every federal prison in the country. It is arranged by region (i.e., Mid-Atlantic, Western), and contains details on counseling, health, and rehab services; mail policy; and location (along with information

on the closest airport, which is particularly helpful for prisons located in remote areas).

Granted, much of the content in the guidebook is available online. Many of its sections appeared as articles in other publications, and the Bureau of Prisons maintains a webpage for each of its facilities. However, one of advantages of the guide is that all the material is collected in one comprehensive volume. Additionally, although Ellis and most of the other contributors are criminal defense lawyers, the guide is filled with facts and objective detail, thus being a valuable resource for anyone involved in the federal criminal justice system—including judges, assistant U.S. attorneys, and probation officers.

My prediction is that the next edition will be even more valuable. First, the U.S. Sentencing Commission, for the first time in many years, has a full slate of appointees, and as of the writing of this review, is busy drafting new policies. Second, Colette Peters was recently appointed director of the bureau; she has been tasked with much-needed reform, and for the sake of the more than 158,000 individuals who are incarcerated within the federal system, there will likely be many changes by the time the 2025 edition is released.

The Boys From Biloxi

By John Grisham

Published: Oct. 18, 2022; Doubleday

Hardcover, 454 pages, $29.95

Reviewed by: Peter Mansfield

Prostitution. Strip clubs. Gambling. Mobsters. Illegal booze. Homemade bombs. Contract killers. Beachside assassinations. Cockfighting. Armed robbery. Stolen jewelry. A category-five hurricane. Misbehaving servicemen. Crooked cops. Drug smuggling. Confidential informants. Daring prisonbreak. Suicide. Capital punishment.

If that sounds like too much frenetic activity for one book, you’re probably unfamiliar with the many previous works of lawyer/ novelist John Grisham. In The Boys From Biloxi, his 51st(!) book, Grisham stages these events over the course of about 30 years in the scenic, but hardly sleepy, beachside town of Biloxi, located in south Mississippi along the Gulf of Mexico.

The story tracks two generations of families, the Malcos and Rudys, who originally emigrated from Croatia to the Mississippi gulf coast in the early 20th century. The action begins in earnest in the late 1950s. As the de facto boss of the loosely organized Dixie mafia, Lance Malco has begun consolidating his empire of illegal alcohol, gambling, and prostitution at nightclubs along beachside Highway 90. In contrast, idealistic family man, Jesse Rudy, is commuting to evening law school in New Orleans. Meanwhile, their sons, Hugh and Keith, are close friends and star together on the local Little League baseball team.

By the 1960s, both patriarchs are firmly committed to their chosen vocations. While Lance is willing to employ any violent means to justify his end—a near monopoly on beachside vice, Jesse has graduated law school, built a successful civil-law practice, and grown increasingly frustrated with local law enforcement’s permissive attitude towards the massive crime syndicates on the coast. Their respective offspring have shown interest in following in their fathers’ footsteps. Hugh Malco becomes a mobster’s apprentice, while Keith Rudy enrolls in law school.

Hurricane Camille brings unprecedented fury and destruction to mark the end of the 1960s in Biloxi. Having built up a reservoir of goodwill in the community by suing insurance companies after the storm, Jesse is elected district attorney in the 1970s on a reform platform. He quickly sets his prosecutorial target on organized crime, which pits the Rudys squarely against the Malcos. Father against father. Son against son. The conflict is palpable, the stakes are high, and the maneuvers are Machiavellian. By the

end of the decade, each major character has crossed a personal Rubicon, setting in motion a series of events with life-changing ramifications for each character.

Grisham employs several time-tested storytelling motifs in the book. The feuding-families theme may remind readers of Romeo and Juliet, or perhaps Wuthering Heights. The friends-turned-foes trope pops up in Julius Caesar and The Count of Monte Cristo. Finally, the dynamics between trailblazing fathers and imitating sons hearken back to The Godfather.

Regular Grisham readers will also recognize several of his own thematic calling cards

in The Boys From Biloxi. Like most of his fiction, the protagonists are idealistic attorneys in the south attempting to overcome nearly insurmountable odds against evil forces of corruption and greed. In fact, Grisham’s protagonists often seem drawn from a classic Frank Capra script, like Mr. Smith Goes to Washington. Grisham frequently populates his stories with colorful fringe characters who have just enough backstory to make them interesting. Finally, as he previously explored in books like The Chamber, The Testament, The Summons, and Sycamore Row, Grisham’s latest work again examines the intergenerational weight of family virtues

and vices.

Grisham’s fiction seldom takes deep dives into legal intricacies that would get lost on lay readers. The Boys From Biloxi is no exception. In fact, some of the courtroom dialogue is a bit cringeworthy. Likewise, his laissez faire approach to ex parte communications with the court is unrealistic, even for fictional attorneys and judges. But attorney-readers may find his description of equity litigation in Mississippi chancery court interesting. Grisham also takes a foray into insurance-coverage disputes after Hurricane Camille, though his narrative seems more likely based on knowledge of litigation

after Hurricanes Katrina and Sandy, rather than historic scholarship from the 1970s dockets. Grisham is an outspoken opponent of the death penalty; unlike The Chamber, The Confession, or The Innocent Man, capital punishment isn’t the central focus of this book. Nonetheless, its few appearances in the text reflect the author’s longstanding views on its inefficacy.

Two of Grisham’s greatest strengths—a swift pace and strong sense of place—are on full display in The Boys From Biloxi. The book is divided into four parts. About midway through part two, the pace of activity accelerates and never lets up until the final page. The first 100 pages or so are slower only by comparison, but are necessary for the author to establish the culture, geography, and economics of the 1950s–70s era Mississippi gulf coast, all of which figure prominently in the storyline.

That’s not to say the book is flawless. In fact, there are two errors in continuity that

suggest hasty or insufficient editing. In one, a meeting begins in a conference room in Pascagoula, Miss., but transitions mid-page to a courthouse in Biloxi, over 20 miles away. In the other, a character dies just before a lengthy prison term at the end of one chapter, though later chapters refer not only to the ostensible fact of his incarceration, but even the prison’s location. Doubleday will presumably make these minor corrections before the paperback printing.

But one wholly unwarranted criticism is that Grisham’s story could never occur in real life. As in many cases, truth is stranger than fiction. While a detailed discussion of real events may spoil some plot elements from The Boys From Biloxi, curious readers can easily research the fates of Judge Vincent Sherry, Biloxi councilwoman Margaret Sherry, and Biloxi mayor Pete Halat.

The author is unquestionably at home in the setting and subject matter of the book. Grisham grew up in Mississippi in the

1960s–70s, attended college and law school there, and was a member of the Mississippi bar and, at one point, the Mississippi House of Representatives. His familiarity with the Sherry/Halat matter is nearly certain, and his vivid descriptions of historic Biloxi-based vice are probably based more on his personal recollection than second-hand press reports.

In sum, The Boys From Biloxi is a rollicking ride down Highway 90 in a bygone era of lawlessness and corruption on the coast. Like most of his prior novels, Grisham’s latest is perfect light reading for vacation or travel. Lawyers seeking an interesting, and not terribly taxing, tale as a break from legal work that’s way too often the inverse would do well to pick up a copy. 

Federal

Peter M. Mansfield practices law in New Orleans, just 90 miles east of Biloxi.

Supreme Court Previews

The previews are contributed by the Legal Information Institute, a nonprofit activity of Cornell Law School. The previews include an in-depth look at two cases plus executive summaries of other cases before the Supreme Court. The executive summaries include a link to the full text of the preview.

Glacier Northwest, Inc. v. International Brotherhood of Teamsters (No. 21-1449)

Oral argument: Jan. 10, 2023

Question as Framed for the Court by the Parties

Whether the National Labor Relations Act impliedly preempts a state tort claim against a union for intentionally destroying an employer’s property in the course of a labor dispute.

Facts

The National Labor Relations Act (NLRA) gives employees the right to collectively bargain and to undertake “concerted activities for… mutual aid or protection.” Concerted activities include the right to strike. The NLRA also prohibits unfair labor practices, which include employer interference with concerted activities. The National Labor Relations Board (NLRB) hears claims of unfair labor practices and can issue injunctive relief but cannot award damages for an injury caused by tortious conduct.

Glacier Northwest, Inc. (Glacier) sells and delivers concrete using “ready-mix” trucks that mix the concrete during transit. Because concrete hardens quickly when mixing ceases, Glacier must deliver the concrete on the day of mixing and cannot let the concrete sit inside the truck for too long.

On August 11, 2017, Glacier’s truck drivers in King County, Washington, members of the International Brotherhood of Teamsters Local 174 (Local 174), went on strike during negotiations over a new collective bargaining agreement. Because Local 174 coordinated the strike to occur during Glacier’s prime concrete delivery time, many

drivers’ trucks were full of concrete during the strike. Several of the striking drivers returned their trucks to Glacier’s local site without emptying them or notifying Glacier about the undelivered concrete. The remaining workers at Glacier hastily removed the concrete from the trucks before it could solidify and damage the trucks. The undelivered concrete, left to harden, could not be salvaged for sale.

Glacier sued Local 174, raising tort claims regarding the ruined concrete. Local 174 responded by filing a complaint with the NLRB, alleging that the lawsuit constituted unlawful retaliation against concerted activities. Local 174 then filed a motion to dismiss Glacier’s tort claims, contending they were preempted by the NLRA. The trial court agreed and granted the motion.

The Washington Court of Appeals reversed. Citing the U.S. Supreme Court’s decision in San Diego Bldg. Trades Council v. Garmon, a pivotal case on preemption, the court stated that a claim is preempted by the NLRA when it involves conduct that is “arguably protected” under the NLRA; however, the court concluded that Local 174 did not engage in protected conduct when the truck drivers ruined Glacier’s concrete.

The Washington Supreme Court reversed the state appellate court’s decision. The state supreme court also relied on Garmon but concluded that a walkout “is a type of strike possibly protected by” the NLRA. The court emphasized the importance of deferring to the NLRB when an activity is even “arguably” subject to the NLRA due to the agency’s expertise. The court further determined that the appellate court erred in applying the “local interest” exception to preemption. The court noted the focus of the local interest exception

inquiry is whether intimidation and violence were present to give the state a compelling interest in asserting jurisdiction. The court concluded that the destruction of the concrete was not intimidation or violence.

The Washington Supreme Court remanded the case with instructions to dismiss Glacier’s claims. The U.S. Supreme Court granted Glacier certiorari on October 3, 2022.

Legal Analysis

WHETHER STRATEGICALLY-TIMED STRIKES ARE “ARGUABLY PROTECTED” UNDER THE NLRA

Glacier maintains that the striking drivers intentionally destroyed its property by leaving the concrete to harden. Glacier argues that because intentional property destruction is not “arguably protected,” preemption is not required in this case under the Garmon rule, which states a claim is preempted by the NLRA when it involves conduct that is “arguably protected” under the NLRA. Glacier contends that this language requires Local 174 to show that the NLRB could decide in its favor. According to Glacier, a mere “conclusory assertion” does not suffice to show that an activity is arguably protected; instead, Glacier argues that Local 174 must show that its interpretation of the NLRA is not “plainly contrary” to the NLRA’s text and has not been “authoritatively rejected” by courts or the NLRB.

Glacier maintains Local 174 cannot meet this burden. First, Glacier argues that protecting intentional destruction of property does not align with the Act’s goal: encouraging collective bargaining. According to Glacier, “concerted activity” should be interpreted considering the specific activities mentioned in the NLRA. Second, Glacier argues that precedent makes clear that employees have no right under the NLRA to engage in unlawful conduct. Although Glacier concedes striking is a lawful activity, it maintains that employees cannot deliberately time a strike to maximize property damage and then claim NLRA protection. Glacier asserts that the NLRB itself has recognized that striking employees must take “reasonable precautions” to avoid damage to their employer’s property.

Glacier distinguishes “ordinary work stoppages” and their resultant economic effects from strikes deliberately timed to inflict maximum damage. Glacier also contends that damage to a company’s property is different than causing mere loss in profits. According to Glacier, the requirement of reasonable precautions would be meaningless if there were a “federally protected right” to intentionally cause property destruction.

Finally, Glacier contends it is inconsequential that the NLRB General Counsel issued a complaint against it for unfair labor practices after the Washington Supreme Court found preemption. Glacier argues that the complaint amounts to an “unreasonable” assertion of a “regional director” and is insufficient to rebut the text of the NLRA and legal precedent.

Local 174 counters that, by issuing a complaint against Glacier, the NLRB General Counsel signaled the NLRB’s belief that Local 174’s conduct was “actually protected” under the NLRA. According to Local 174, this makes it certain that the striking drivers’ actions were at least “arguably protected.”

Local 174 further argues that, because its interpretation is not “plainly contrary” to the statutory language and has not been “authoritatively rejected” by courts or the NLRB, the striking workers’ conduct was “arguably protected.” Local 174 argues that the General Counsel’s independent investigation and the resultant NLRB complaint against Glacier indicates there is sufficient evidence that “the charges have merit.” Local 174 contends that if the charges have merit, they must not be “plainly contrary” to the NLRA’s language and must not have previously been “authoritatively rejected.” Local 174 also points out that deferring to the NLRB is a mere “jurisdictional hiatus,” because if the NLRB determines Local 174’s conduct was not protected, Glacier can proceed on its tort claims in state court.

Local 174 argues that the drivers engaged in the “mere act of stopping work,” and did not intentionally destroy Glacier’s property. Local 174 contends that strikes are protected even if the timing results in economic harm or makes such harm foreseeable. First, Local 174 points to the language of the NLRA, which states a strike is protected even if it causes an “interruption of operations.” Second, Local 174 cites several cases where opportunistically timed strikes were deemed protected. According to Local 174, in both the prior cases and on

the present facts, there was no “affirmative” act that caused physical damage; instead, the workers merely stopped working. Local 174 contends that if those examples were “actually protected,” the circumstances here must be at least “arguably protected.”

Local 174 points out that showing an interpretation has not been “authoritatively rejected” is a low bar. Local 174 claims that even if Glacier can distinguish the cases that Local 174 cites, Local 174 should prevail because its position is not “authoritatively rejected.” According to Local 174, inflicting economic loss is the motivating reason of any protected strike, so the “purpose” is not distinguishable. Finally, Local 174 rebuts Glacier’s argument that striking employees must take “reasonable precautions.” Local 174 argues that “reasonable precautions” have only been required where there is a “danger of aggravated injury to persons or premises.” Local 174 maintains that the truck drivers put no one at risk of injury with their actions.

THE LOCAL INTEREST EXCEPTION TO PREEMPTION

Glacier highlights that the local interest exception to preemption provides that where an activity implicates interests that are “deeply rooted in local feeling and responsibility,” states are not preempted from providing damages for injury caused by the activity. Glacier argues that, even if Local 174’s intentional destruction of Glacier’s concrete is “arguably protected,” the local interest exception applies to exempt Glacier’s tort claims from preemption. According to Glacier, tortious conduct––including intentional destruction of property––has long been recognized as an area of local interest for states. Glacier points out that the NLRA cannot provide damages for injury caused by tortious activity, meaning the state has a heightened interest in hearing the case to provide damages and prevent further “disrespect for the law” from occurring.

Local 174 responds that the local interest exception applies only where conduct is “arguably prohibited,” not where it is “arguably protected.” According to Local 174, a state cannot regulate “conduct that Congress intended to protect,” and that risk is always present when conduct is “arguably protected.” Further, Local 174 argues that the remedy issue Glacier points to is illusory because if Local 174’s activity was indeed protected, Washington state could not provide damages anyway, and if the activity turns out to be un-

protected, Glacier can then seek damages in state court. Additionally, Local 174 contends that even if the local interest exception is extended to “arguably protected” cases, mere work stoppages would not be enough for the local interest exception to apply, since there must be “violence and imminent threats to the public order” for the exception to apply.

Discussion

BALANCING EMPLOYER AND UNION BARGAINING POWER

Coalition for a Democratic Workplace et al. (Coalition), in support of Glacier, argues that authorizing unlawful methods of creating economic pressure would give unions an overwhelming bargaining advantage. While the Coalition acknowledges that the NLRA authorizes unions to inflict economic harm upon employers via strikes as a legitimate bargaining tactic, it argues that Congress assumed unions would be limited to lawful economic weapons. The Coalition asserts that tortious intentional destruction of property is too powerful a weapon because employers would bear not just financial but also logistical and reputational harms.

United Brotherhood of Carpenters and Joiners of America et al. (“Brotherhood”), in support of Local 174, counters that the balance of bargaining power includes the right to strike and the incidental loss of perishable products. The Brotherhood maintains that strikes inherently function by inflicting economic loss and pressure on employers. The Brotherhood suggests that, because Glacier produces perishable concrete on an ongoing basis, any strike by the trucker’s union was bound to cause property damage. The Brotherhood concludes that recognizing tort liability would disincentivize strikes and erode the congressional balance of negotiating power in industries involving perishable products.

RESOLVING LABOR DISPUTES IN THE PROPER FORUM

The Coalition, in support of Glacier, argues that depriving employers of their ability to bring tort claims arising out of labor disputes in state court leaves them entirely without recourse and undermines the states’ traditional role in protecting their citizens’ rights. The Coalition observes that the NLRB cannot award damages for torts, meaning that employers who suffer tortious harms and whose claims are preempted cannot recover. The Coalition adds that intentional destruction of property in labor

disputes imposes collateral harms on local communities, thus generating local interest. The Coalition adds that employers will pass on the cost of potential property damage to employees and consumers via decreased wages and increased prices.

A group of law professors (Professors), in support of Local 174, counter that the NLRA conferred primary jurisdiction on the NLRB to adjudicate labor disputes and resolve claims arising from use of economic weapons. The Professors assert that, following the Gilded Age, Congress intentionally stripped the courts of jurisdiction to decide the permissibility of labor strikes. The Professors add that decades of NLRB precedent facilitate clear and nationally uniform application of labor law.

Written by Ronahn Clarke and Amanda Shoemaker. Edited by Danielle Dominguez.

Full text available at https://www.law. cornell.edu/supct/cert/21-1449. 

Gonzalez v. Google LLC (No. 21-1333)

Oral argument: Feb. 21, 2023

Question as Framed for the Court by the Parties

Whether Section 230(c)(1) of the Communications Decency Act immunizes interactive computer services when they make targeted recommendations of information provided by another information content provider, or only limits the liability of interactive computer services when they engage in traditional editorial functions (such as deciding whether to display or withdraw) with regard to such information.

Facts

In 2015, Nohemi Gonzalez, a U.S. citizen, was killed in a terrorist attack in Paris. The following day, The Islamic State of Iraq and Syria (ISIS) claimed responsibility by issuing a written statement and posting a YouTube video. YouTube, which is owned by Respondent Google LLC (Google), is an online platform for users to post, share, view, and comment on videos. As YouTube’s owner, Google can review and remove any content on the platform that violates its policies.

Reynaldo Gonzalez, the victim’s father, along with other family members, filed a complaint against Google for damages pursuant to 18 U.S.C. § 2333, the Antiterrorism Act (ATA). The ATA gives U.S. citizens the opportunity to recover damages for injuries suffered “by reason of an act of interna-

tional terrorism.” According to Gonzalez’s complaint, Google is secondarily liable for Nohemi’s death because Google “aided and abetted an act of international terrorism” in violation of § 2333(d) by allowing ISIS to “recruit members, plan terrorist attacks, issue terrorist threats, instill fear, and intimidate civilian populations” through YouTube.

Specifically, Gonzalez alleged that Google is liable because it used computer algorithms to recommend videos published by ISIS or related to ISIS to its users. In this way, Gonzalez claimed that Google was helping ISIS spread the organization’s message. Moreover, Gonzalez claimed that Google is liable because it failed to remove, or sometimes removed only a portion of, the content posted by ISIS or related to ISIS, although it has the authority, as YouTube’s owner, to remove such content completely from YouTube. Based on the aforementioned acts or failures to act by Google, Gonzalez asserted that YouTube had become “an essential and integral part” as well as “a unique and powerful tool of communication” of ISIS’s terrorist campaign program.

Google moved to dismiss the complaint pursuant to 47 U.S.C. § 230 of the Communications Decency Act (Section 230), which provides immunity to online platforms, such as YouTube, from civil liability based on third-party content. The district court granted Google’s motion to dismiss, reasoning that Google is entitled to immunity under Section 230 because the producer of the recommended videos was ISIS, not YouTube. The Ninth Circuit affirmed the district court’s decision, holding that Section 230 immunity applied to content recommendations so long as YouTube recommended non-harmful content based on the same neutral criteria as the harmful content. Plaintiffs filed a timely petition for rehearing en banc, and a majority of the Ninth Circuit voted to deny rehearing en banc The U.S. Supreme Court granted certiorari on October 3, 2022.

Legal Analysis DEFINITION OF “PUBLISHER” UNDER SECTION 230

Gonzalez argues that YouTube, a subsidiary of Google, is not a publisher or speaker as defined under Section 230 when it recommends third-party content to users, and therefore should not be able to raise a Section 230 defense in this case. Gonzalez explains that a Section 230 defense is available when the defendant can show that (1)

the plaintiff’s claim treats the defendant “as the publisher or speaker” of the third-party content; (2) the content is provided by “another information content provider”; and (3) the defendant acts as a “provider . . . or user of an interactive computer service.”

On the first element, Gonzalez distinguishes between the everyday and legal meanings of the term “publisher,” arguing that Congress intended for “publisher or speaker” under Section 230 to refer to its narrower legal meaning under defamation law. Gonzales points out that Section 230 was originally enacted to overrule Stratton Oakmont, Inc. v. Prodigy Services, a state defamation case in New York which found that publishers that censor or remove problematic materials can be held liable for the content they affirmatively choose to publish. Gonzalez argues that YouTube does not qualify under the defense, because the claim here is not focused on YouTube’s dissemination of harmful materials, but rather on YouTube’s recommendation of them. According to Gonzalez, even if Congress intended for the everyday meaning of “publisher” to apply, YouTube’s recommendation function still does not fall under the protection of Section 230.

Gonzalez concedes that some recommendation-based claims might qualify for a Section 230 defense, but for Gonzalez, the key issue is whether the recommendation directly sends harmful third-party content to users in the form of a file, or whether it merely includes information about third-party content in the form of a URL or a notification. Gonzalez asserts that sending a file is an act of publication, whereas sending a URL or notification is not. Thus, according to Gonzalez, when YouTube recommends ISIS-related videos to users, YouTube is not acting as a “publisher or speaker” under Section 230 because it is merely sending users information about the video in the form of a URL, and thus the Section 230 defense cannot shield Google from liability under the ATA.

Google counters that YouTube is a “publisher” under Section 230. Google contends that the Supreme Court typically reads statutory language according to its everyday meaning and that, in consequence, “publisher” in Section 230 should be read in this manner. Google explains that, under the term’s everyday meaning, publishing refers to the act of selecting and ordering content; newspapers and broadcasters publish, for example, by selecting and ordering content

to match a print layout or to fill specific time slots. Google contends that YouTube, similarly, selects and orders content using algorithms for publication to its “Up Next” feed; since YouTube applies the same neutral criteria to all its content, YouTube should qualify for immunity as a publisher under Section 230.

Google also claims that regardless of whether Congress intended for the legal or everyday meaning of “publisher or speaker” to apply, YouTube should still qualify as a “publisher or speaker” under Section 230. Even under the narrower meaning of “publisher,” Google points out that the Supreme Court deems defamation defendants to be “publishers” simply because they arrange content. Referring to the surrounding text of the statute, and specifically 47 U.S.C. §§ 230(f)(2) and (f)(4), Google points out that Congress explicitly intended for “publishing” in Section 230 to include selecting content via algorithms.

Thus, according to Google, YouTube is a “publisher” under the plain text of the statute because it filters and recommends videos for users using algorithms. In response to Gonzalez’s distinction between the acts of recommendation and dissemination, Google counters that the internet has obscured the difference between publication and distribution, causing them to happen at almost the same time.

RECOMMENDATION OF THIRD-PARTY CONTENT AS “INFORMATION PROVIDED BY ANOTHER INFORMATION CONTENT PROVIDER”

Regarding the statute’s second element, Gonzalez argues that YouTube’s recommendations do not qualify as “information provided by another information content provider” under Section 230 because they are generated by YouTube, itself, not by another information content provider. Specifically, Gonzalez explains that when YouTube’s recommendations contain URLs, these URLs are not “information provided by another information content provider” for the purposes of Section 230.

Finally, regarding the inapplicability of the statute’s third element, Gonzalez points out that a defendant can only trigger the Section 230 defense when it acts as a “provider . . . of an interactive computer service.” According to Gonzalez, to qualify as interactive, a computer service must send content in response to a user’s request for information. Gonzalez points out that You-

Tube sends unrequested videos to users via an automated recommender algorithm.

Google counters that plaintiffs cannot hold defendants liable for merely providing access to “information provided by another information provider” when they did not, themselves, create or develop the harmful content. Google cites a Sixth Circuit case, O’Kroley v. Fastcase, Inc., where the plaintiff based their claim on Google’s previews of third-party websites on its search feed. According to Google, the Sixth Circuit held that under Section 230, Google could not be held liable for merely providing access to third-party content in the form of automatically-generated excerpts from those websites. From Google’s perspective, Google’s previews are analogous to YouTube’s “Up Next” feed, and therefore the phrase “information provided by another information content provider” cannot be interpreted to exclude YouTube’s recommender function from the protections of Section 230. Since YouTube did not create or develop the ISIS videos, but merely provided access to them, Google argues that YouTube should be able to assert immunity under Section 230.

In response to Gonzalez’s argument that YouTube’s recommendations do not qualify as an “interactive computer service,” Google contends that nothing in the text of Section 230 requires computer services to exclusively provide users with content they request. Google therefore concludes that YouTube qualifies as “interactive computer service” under Section 230(f)(2) because it allows, and thus “enable[s]”, “access by multiple users” to content stored on YouTube’s servers.

Discussion

EFFECTS ON THE GROWTH OF THE MODERN INTERNET

Counter Extremism Project and Hany Farid (CEP), in support of Gonzalez, states that rejecting the application of Section 230 immunity to online platform service companies, such as Google in this case, would not necessarily threaten the growth of the modern internet. CEP points out that the modern internet is no longer “a fragile new means of communication” that could easily be damaged in its growth by law enforcement’s efforts to police harmful content. CEP emphasizes that Google and other mega-platforms possess considerable power to stem the spread of harmful content; they can act to lessen the risk of injury to users. Wikimedia Foundation (Wikimedia), in

support of Google, counters that the modern online community needs the protection of Section 230 immunity to flourish. Wikimedia argues that Section 230 allows small companies and non-profits with limited funds to exist and thrive by ensuring them protection from the risk of litigation and high litigation costs. Wikimedia states that Section 230 promotes the development of the modern internet by permitting a diverse portfolio of companies, as opposed to an oligarchy of a few mega-platforms, to thrive without the fear of litigation.

PRESERVATION OF ONLINE FREE SPEECH

Giffords Law Center to Prevent Gun Violence (Giffords), in support of Gonzalez, states that granting broad Section 230 immunity to online platforms would reduce checks on hate speech. Giffords argues that when platforms lack adequate mechanisms to combat hate speech, users tend to “self-censor” to avoid being targeted by prevalent hate-speech groups. Giffords claims that this consequence directly runs contrary to the ideal of an online free “marketplace of ideas.”

Internet Law Scholars (ILS), in support of Google, counters that Section 230’s legal immunity has been vital to the development of a safer and more diverse online environment because it liberates online platforms from the fear of liability for their users’ actions. ILS warns that denying Section 230 immunity to algorithmic selection processes, such as YouTube’s recommendation algorithm, would lead platforms to over moderate their content to avoid liability. ILS points out that this censorship would directly contradict the free speech values that characterize many online communities.

Written by Yue (Wendy) Wu and Wentao Yang. Edited by Amaris Cuchanski. Full text available at https://www.law. cornell.edu/supct/cert/21-1333. 

Ohio Adjutant General’s Department v. Federal Labor Relations Authority (No. 21-1454)

Oral argument: Jan. 9, 2023

Court below: U.S. Court of Appeals for the Sixth Circuit

The Supreme Court in this case will determine whether the Federal Labor Relations Authority (FLRA) has jurisdiction to regulate state militia labor practices. The Ohio

Adjutant General, Ohio Adjutant General’s Department, and the Ohio National Guard contend that the Ohio National Guard is under state control and that Congress has not expressly included state militias in the Federal Service Labor-Management Relations Statute, and thus the state militias are not subject to the FLRA’s jurisdiction. In contrast, the FLRA maintains that the Guard is subject to the FLRA’s jurisdiction because the statute memorialized various federal regulations providing collective bargaining rights to dual status technicians, and the FLRA’s jurisdiction is necessary to such rights. This case has significant implications for federal military power, labor relations for state militias, and the balance of power between state and federal governments.

Full text available at https://www.law. cornell.edu/supct/cert/21-1454.

Financial Oversight and Management Board for Puerto Rico v. Centro de Periodismo Investigativo, Inc. (No. 22-96)

Oral argument: Jan. 11, 2023

Court below: U.S. Court of Appeals for the First Circuit

This case asks the Supreme Court to consider whether the Puerto Rico Oversight, Management, and Economic Stability Act (PROMESA), which created the Financial Oversight and Management Board for Puerto Rico (Board), abrogates the Board’s sovereign immunity by granting general jurisdiction to federal courts over claims against the Board. The Board argues that PROMESA does not abrogate its sovereign immunity, since the statutory language of PROMESA does not explicitly revoke its sovereign immunity. In contrast, the Centro de Periodismo Investigativo, Inc. (CPI) contends that PROMESA abrogates the Board’s sovereign immunity because the statutory language, read in conjunction with prior case law regarding the abrogation doctrine as well as the legislative history of PROMESA, implicitly revokes the Board’s sovereign immunity. The outcome of this case will profoundly impact the Board’s operations and public oversight of the Board’s financial decisions.

Full text available at https://www.law. cornell.edu/supct/cert/22-96.

Turkiye Halk Bankasi A.S. v. United States (No. 21-1450)

Oral argument: Jan. 17, 2023

Court below: U.S. Court of Appeals for the Second Circuit

The Turkish government owns the majority of a bank called Turkiye Halk Bankasi (Halkbank), which a grand jury indicted for multiple counts of fraud in 2019. Halkbank, however, argues that it should be immune from any criminal prosecution by the United States because of the Foreign Sovereign Immunities Act (FSIA). The FSIA explicitly provides immunity from civil actions for foreign governments and their instrumentalities, but the Supreme Court has never stated whether it also applies to criminal prosecutions. If foreign governments are not granted immunity from criminal prosecution under the FSIA, then, as the United States argues, 18 U.S.C. § 3231 explicitly authorizes district courts to hear the case. The Supreme Court’s decision could affect international relations between countries if they fear criminal prosecution by the United States. It could also impact the United States’ ability to protect its national security from foreign government-owned entities that fund terrorists.

Full text available at https://www.law. cornell.edu/supct/cert/21-1450. 

Santos-Zacaria v. Garland (No. 21-1436)

Oral argument: Jan. 17, 2023

Court below: U.S. Court of Appeals for the Fifth Circuit

This case asks the Supreme Court to determine whether a petitioner must file a motion to reconsider with the Board of Immigration Appeals to satisfy the exhaustion requirement (8 U.S.C. § 1252(d)(1)) of the Illegal Immigration Reform and Immigrant Responsibility Act of 1996 (IIRIRA) and whether this requirement is jurisdictional or a waivable claims-processing rule. Leon Santos-Zacaria argues that the exhaustion requirement is a claims-processing rule because the statute does not mention jurisdiction, and Congress must clearly state that a procedural requirement is jurisdictional for it to be so. Santos-Zacaria further argues that the exhaustion requirement pertains only to remedies available to the alien as of right, which Santos-Zacaria asserts does not include reconsideration. U.S. Attorney General, Merrick Garland, counters that the exhaustion requirement is jurisdictional

because the statute is written with language like that which is used to define the scope of appellate jurisdiction. Garland further asserts that the exhaustion requirement encompasses issue exhaustion, which includes reconsideration, because the applicant must give the agency a chance to correct its own mistakes before resorting to appellate review. The outcome of this case will determine the accessibility of judicial review of asylum application decisions.

Full text available at https://www.law. cornell.edu/supct/cert/21-1436.

Perez v. Sturgis Public Schools (No. 21-887)

Oral argument: Jan. 18, 2023

Court below: U.S. Court of Appeals for the Sixth Circuit This case asks the Supreme Court to determine whether settlement with a school satisfies the exhaustion requirement under the Individuals with Disabilities Education Act (IDEA) so that a student might bring a claim for monetary damages in a district court. Miguel Luna Perez asserts that IDEA’s exhaustion is satisfied by a settlement with a school, not only by a decision on the merits. Perez further argues that requiring individuals to exhaust their claims in lieu of settlement would be futile. Further, Perez asserts that allowing non-IDEA claims to proceed without IDEA exhaustion would not cause individuals to bypass the administrative IDEA process. Sturgis Public Schools and Sturgis Board of Education (Sturgis) counter that settlement is insufficient for exhaustion requirements especially when the individual seeks monetary damages. Sturgis further contends that allowing non-IDEA claims to proceed without IDEA exhaustion might result in parents seeking monetary damages in the courts to the detriment of their child’s free appropriate public education. The outcome of this case has important implications on the substantive rights of children with disabilities in terms of the dispute resolution proceedings between the schools and parents.

Full text available at https://www.law. cornell.edu/supct/cert/21-887. 

Twitter, Inc. v. Taamneh (No. 21-1496)

Oral argument: Feb. 22, 2023

Court below: U.S. Court of Appeals for the Ninth Circuit This case asks the Supreme Court to determine whether social media platforms such as

Twitter, Facebook, and Google provide substantial assistance to terrorists by allegedly not taking meaningful action to prevent such terrorists from using their services. This case also asks the Supreme Court to determine whether the same social media platforms can be held liable under the Justice Against Sponsors of Terrorism Act (JASTA), even if their services were not used in connection with the specific act of terrorism that caused injury to the plaintiff. Twitter contends that a defendant does not knowingly provide substantial assistance through general awareness that terrorists were among its many users, and that liability cannot stem from

such generalized assistance to a terrorist organization. Mehier Taamneh counters that whether Twitter and other defendants know of terrorist use of their services is a question of fact, and, at this stage, the Court need only decide that plaintiff’s factual allegation is plausible. Taamneh also argues that liability exists when a defendant substantially assists international terrorism and that JASTA’s text doesn’t limit liability to action that has a direct connection to the specific attack that injures the plaintiff.

Full text available at https://www.law. cornell.edu/supct/cert/21-1496. 

Chapter Exchange

SIXTH CIRCUIT

Dayton Chapter

The Dayton Chapter held a “Success as a Young Attorney” event at the U.S. Bankruptcy Court in February. The U.S. Attorney for the Southern District of Ohio, Ken Parker, spoke to law students and younger attorneys who are mentees in the Chapter’s mentorship program. 

Northern District of Ohio

Bill of Rights Birthday Party

In what has become a tradition for the FBA Northern District of Ohio Chapter, the Civics Committee of the FBA-NDOC visited the third-grade class at Cleveland International Elementary School to celebrate the December 15th birthday of the Bill of Rights. The organizers of the event were Matthew Gurbach and Warren McClurg, the Chapter’s Civics Committee co-chairs, and presenters were Judge Philip Calabrese of the U.S. District Court for the Northern District of Ohio, Judge Emily Hagan of the Cuyahoga County Court of Common Pleas, and Jim Satola, a Law Clerk to Senior Judge Donald Nugent of the U.S. District Court.

Top: The NDOH Chapter visits Cleveland International Elementary School. Bottom: (L to R) Treasurer Alison McMinn (Forman Watkins), Vice-President Blythe Lollar (Nelson Mullins Riley Scarborough), Bankruptcy Judge Selene Maddox (Northern District), President Nick Morisani (Phelps Dunbar), Executive Director Dean Jim Rosenblatt (Mississippi College School of Law).

Dayton Chapter: U.S. Attorney for the Southern District of Ohio, Ken Parker (center), stands with attendees of the "Success as a Young Attorney" event in February.

The program format was a free-range presentation of the various amendments of the Bill of Rights with very active Q&A from the third-grade class… and ending, as always, with birthday cupcakes provided by the FBA-NDOC! 

SEVENTH CIRCUIT Mississippi Chapter

The Mississippi Chapter hosted a Bankruptcy meeting at the Capital Club that allowed the bankruptcy judges to comment on the issues they encounter and to answer questions from the many bankruptcy practitioners who attended. No one had yet faced crypto currency bankruptcy issues. 

The Student Chapter at Mississippi College School of Law hosted U.S. Magistrate Judge Michael Parker for a lunch meeting to a room overflowing with interested students. Judge Parker described his road to the bench and offered practice pointers. Judge Parker’s judicial clerk Justin Starling spoke about his work in Judge Parker’s chambers and encouraged the students to pursue a judicial clerkship.

U.S. District Court Chief Judge Dan Jordan spoke to the Mississippi Chapter at a luncheon meeting at the Capital Club in Jackson before a full house. Chief Judge Jordan provided his yearly update for the Southern District, offered practice tips, and discussed issues related to the court and law enforcement. Robert Hauberg of Baker Donelson was recognized for his 50 years of practice. Blythe Lollar assumed the presidency from Nick Morisani, and a new slate of officers was approved. 

Mississippi Chapter: Vice-President Alison McMinn (Forman Watkins Krutz Tardy), President Blythe Lollar (Nelson Mullins Riley & Scarborough), Chief Judge Jordan, Robert Hauberg (Baker Donelson), Past President Nick Morisani (Phelps Dunbar) and Executive Director Dean Jim Rosenblatt (Mississippi College School of Law).

Mississippi Chapter: (left to right) Advisor Dean Jim Rosenblatt (Mississippi College School of Law (MC Law)), Clerk Justin Starling, Magistrate Judge Michael Parker (Southern District), President Cailin Sims (MC Law), and Past President Calvin Combs (MC Law).

Member Spotlight

Summer Aubrey

Xavier Barraza

George Barron

Jo Belasco

Michael Brown Esq

Julianne Cantellops-Cueli

Eleanor Chung

Bruce Coane

Sydne Collier

Brigid Collins

John Danyluk

Julie Elliot

David Feldman

Laura Flores Bachman

Gregg Gallian

Kelsey Gee

Benjamin Glassman

Tania Groover

Adrienne Harreveld*

Ethan Hazel*

Monte Jackel

Samantha Jaffe

Adam Kessel

Paul Knettel

Mark Kokanovich*

Michael Lampert*

Michelle Long

Jenny Magallanes

Carla Miller-James

Isaac Tom Monah

Brian Nally

Rachel O’Neil

Raj Parekh

James Phillips

Bennett Rawicki

Courtney Rimann

John Rimann

Ralph Roberts

Alyssa Schaefer

Edith Schatelowitz

Cristina Squiers

Michael Steinmark

Erika Tatum

Julie Thomas

Brian Wright

Patsy Yung Micale

Erik Zimmerman

FIRST CIRCUIT

Hon. Raymond L.

Acosta Puerto Rico

Jason Aguilo

Maria de los Angeles

Gonzalez

Albeniz Couret-Fuentes

Sheila M. Cruz-Rodriguez

Giselle Lopez-Soler*

Coral Odiot

Jose Perez

Arlene Perez-Borrero

Nicole Rodriguez Velazquez

Massachusetts

Noah Frank

Rachel Greenberg

Adam Johnson

Erynn Otsuki

Stephen Riden

Joel Smith

Rhode Island

Hanorah Tyer-Witek

SECOND CIRCUIT

Eastern District of New York

Chartrisse Adlam

John Barrie

John DiMascio

Cassandra Ficano

Elyse Patterson

Dawn Pipek Guidone*

Southern District of New York

Claire Amodio

Ashley Biggs

Jan Howard Brown

Lorena Guzm·n-Dìaz*

Elisha Kobre

Hamsa Mahendranathan

Timothy McInnis*

Scott+Scott LLP

THIRD CIRCUIT

Delaware

Valerie Caras

Colin Keith

Claudia Pare

Conor Wilson

Eastern District of Pennsylvania

Kelley Bregenzer

Middle District of Pennsylvania

Langdon Ramsburg

FOURTH CIRCUIT

Eastern District of North Carolina

Keith Anthony

Sophia Blair

William Dowling

Katherine Englander

Michael Goldsticker

Scott Lemmon

Raymond Tarlton

Swain Wood

Hampton Roads

Allison Melton

Maryland

Henry Andrews

Ariana DeJan-Lenoir

Michael Elliker

Jason Galek

Johanna Hendriksen

Jay Holland*

William King

William Krulak

Lauren Lake

Sabrina Marquez

Brian Moffet

Gwen Tromley*

Alexus Viegas*

Middle District of North Carolina

Andrew Carter

Northern Virginia

Madison Beatty

Abdel-Rahman Hamed

Abigail Johansen

Teresa Love*

Katherine McKerall

Jan Pederson*

Kevin Richards

Kevin Sprenger

Richmond

Joan Davis

Christopher Salerno

Evan Tucker

South Carolina

Joanna Stroud

Johanna Valenzuela

Western District of North Carolina

Robert Anderson

Western District of Virginia

Dana Cormier

Melissa Friedman

Andrea Harris

FIFTH CIRCUIT

5th Circuit At Large

Paul Miller

Austin

Robin Baessler

Emily Bamesberger

Katherine Chiarello

William Davis

Wayne Meissner

Baton Rouge

Brad Cranmer

Dallas

Kara Carreras

Alison Clement

Allison Cook*

Jacob Durst

William Fox

Gemma Galeoto

Stephanie Gase

Henry Glasscock

Blake Glatstein

Tiffany Hunt

Josh Jones

Robert Krakow

Karina Loya

Ryan Niedermair

Leo Park

Brantley Smith*

Camrie Ventry

Madison Walker

Ellen Yost

Tom Zavala

Fort Worth

James Graham

Catherine Stanley*

Varghese PLLC

Mississippi

Mary Clift Abdalla

Chris Espy

Nicholas Toca

New Orleans

Beth Abramson

Ashlee Adams

Sierra Ambrose

Allie Amedee

Sarah Bacot

Mary Baker

Andre Bellefontaine

Ryan Bergeron

Brendan Besh

Raven Bourque

Alexander Brewster

Hannah Brewton

Nicholas Brown

Morgan Brown

Valkyrie Buffa

James Busenlener

Grant Butler

N. Caldwell

Caroline Campagna

Micah Carper

Lyle Cayce

Nicholas Chauvin

Angelina Christina

Allyson Colomb

Karl Connor

Bailey Cranford

Angelle Crochet

Patrick Crosby

Alexis Curtis

Michael Danon

Marisa Del Turco

Gabrielle DeVille

Diana Dilday

Stevan Dittman

Collyn DuBose

Brian Edwards

Estelle Eiserloh

Jonathan Forester*

Madeline Fosberg

Ethan Garner

Peyton Gascon

Amanda George

Hanna Gettys

Jaina Green

Jack Griffin

Elizabeth Griffin

Robert Guidry

Olivia Guidry

Madison Harvey

Brooke Hathaway

Seth Huye

Eric Lamurri

Nowal Jamhour

Kaylin Jolivette

Carly Jonakin

Victor Jones

Kimberly Kauth

Mary Claire Kramer

Brittany LaCombe

Calder Lamb

Austn Lanier

Christopher Lemieux*

Mary Logue

Hailey Maldonado

Karla Martinez

Shearil Matthews

Elise McCanless

Charles Meeks

Gillian Miculek

James Morock

Emily Mueller

Kelli Murphy

Cameron Murray

Lawson Nguyen

Brennan O’Keefe

Kieron Oliver

Christopher Otten

Sarah Perkins

Dylan Perry

Drake Pierce

Victoria Pitre

Breanne Pregeant

Kelicia Raya

Margo Richard

Hayden Robert

Aaron Ruffin

Thomas Sanderson

Dylan Scully

Katherine Sepcich

Jessie Shifalo

Sarah Skidmore

Claris Smith

Bonnie Smith

Steven Spires

Brandon Sprague

Harper Street

Katherine Thorstad

Antonio Torres

Christen Triche

Christopher Vidrine

Justine Ware

Abigail Weiland

Camille Wharton

Brooke Wilson

San Antonio

Erica Giese

Southern District of Texas

Christina Cullom

Jennifer DeVlugt

Mauricio Garcia

Dewey Gonsoulin

Ashlee Grant

Kristen Luck

*Denotes Sustaining Member

Diana Quiroga

Emil Sadykhov

SIXTH CIRCUIT

Chattanooga

Crystle Carrion

Cincinnati-Northern Kentucky, John W.

Peck

Zenaida Lockard

Lillian Ramser

Adair Smith

Columbus

Ali Haque

Lauren Hilsheimer

Samantha Pugh

Matthew Scott

Jenna Seychel*

Dayton

Glenn Bellamy

Neil Berman

Callum Morris

Patricia Riley

Eastern District of Michigan

Debra Freid*

David Jenuwine

Memphis Mid-South

Allie Harbor*

Alexis Moyle

John Matthew Orr

Susanna Shea

Nashville

Sandra Inc.*

Northern District of Ohio

Joshua Friedman

Jacqueline Meese-Martinez

William Peseski

Sarah Welch

Western District of Michigan

Elizabeth Badovinac

Hala Jarbou

Ashwin Trehan

John Lyle

SEVENTH CIRCUIT

Central District of Illinois

Jeremy Reppy*

Chicago

Ryan Blackney

M. Nieves Bolanos

Megan DeMarco

Sharon Desh

Orly Henry

Keri Holleb Hotaling

Natasha Jenkins

Benjamin Morrell

Justin Mulaire

Robin Potter

Adam Prom

Matthew Ruza

Dru Selden

Kurt Siegal

Jeronimo Simonovis

Chad Skarpiak*

Indianapolis Christopher Cody

Lafayette/Acadiana

Dwazendra Smith

Southern District of Illinois

Laura Beasley

Kyle Childress

Kelly Crosby

Zoe Gross

Jennifer Maloney

Wisconsin

Nathaniel Cade*

Robert Lundberg

EIGHTH CIRCUIT

Arkansas

Lisa Mahlum*

Iowa

Austin Peiffer

Leonard Strand

Minnesota

Bonny Birkeland

Jonathan Bye

Katherine Chen

Sean Copeland

Noah Cozad

Ryan Downes

Samantha Ellingson

Tess Erickson

Laura Goforth

Margarita Gokhberg

Jack Graves

Adam Johnson

Jason Johnston

Dustin Jones

Christine Jordan

Brea Khwaja*

Stephanie Lamphere

David Larson

Emily McAdam

Megan Miller

Michael Miller

Stephanie Morales

Joseph Nelson

David Olsen

Kristin Parker

Joy Parker

Pounnaphone Phomtalikhith

Vince Reuter

Grace Rouser

Richard Sauceda

Leslie Schiltgen

Lauren Schoeberl

Kevin Sieben

Aaron Thom

Bailey Twyman-Metzger

Kyle Wislocky

St. Louis Mark Blanton*

Zachary Bluestone

Sanford Boxerman

John Davis

Edward Dowd*

Daniel Levy

Stephanie Zipfel

NINTH CIRCUIT

Alaska Mark Cucci

Hawaii

William Awong

Victoria Braga

Ciara Kahahane

Kenneth Lapides

Aimee Lum

Matthew Mannisto

Melissa Marushige

Nicholas McLean

Traci Morita

Idaho

Erika Birch

Laird Lucas

Los Angeles

Maria Audero

Marta Burg

Elizabeth Burnett

Sophia Carrillo

Lana Choi

Sylvia Ewald

Maame Ewusi-Mensah

Frimpong

Steven Friedland

Adam Kamenstein*

Jean Reisz

Sina Safvati

Nicole Van Dyk

Thomas Vidal

Matthew Wallace

Gregory Wilkinson

Galen Williams

Nevada

Norma Guariglia

Patricia Lenzi

Jessica Perlick

Northern District of California

Kevin Boutin

Winston Chan

Barbara Chisholm

Shari Covington

Sara Dutschke

Jeff Keohane

Andrew Kirtley

Randall Knox

Shailika Kotiya*

Evan Seite*

Blanca Vaughan

Orange County

Joanna Ardalan

James Azadian

Peter Bohan

Stacy Dominguez

John Holcomb

Asad Karamally

Catriona Lavery

Sean Lobb

Joseph Meyers

Mariana Noli

Michael Schachter

Rina Stinson

Jason Tkaczuk

Oregon

Andrew Ho

Sophia von Bergen

Phoenix

Kacie Donovan

Andrew Federhar

Jessica Kemper

Michael Marion*

Anthony Proano

Lindsay Short

Henry Whitmer

Sacramento

Jason Rios

Joseph Wiseman

San Diego

Cynthia Aaron

Brandon Adams

Michael Attanasio

Thane Bauz

Steven Coopersmith

Sean Costa

Jake Dascanio

Matthew Dhaiti

Noelle Dorman

Samuel Eggleton

Joseph Fordjour

Joelle Foxwell

Sarah Garbuzov

Hala Hammi

Christine Harbster

Amy Holmes

Katherine Hurrelbrink

Leonardo Husid

Emily Hyatt

Ginger Jacobs

Randall Kay

Amy Lam

Marissa Lebert

Zandra Lopez

Shelby Lorenzi

Alaina Lynch

Amanda Maher-Balduf

Jennifer Martin

Victor Mastromarco

Shireen Matthews

Austin McCall

Michael Merriman

Domanique Moore

Kourtney Morrison

Michael Nunez

Steven J. Poliakoff

Vaishali Roggen

Shabnam Saadatkhah

Kelley Sheehan

David Sizemore

Lyndsay Skenica

Erica Skerven

Andrew Steger

Christina Tran

Madhavan Vajapeyam

Minh Vu

Taylor Walsh

Courtney West

Joseph Woodson

San Joaquin Valley

Mary Margaret Sasso

Jacob Thomasy

Washington State

James Bellis

Lael Echo-Hawk

Austin Popham

Kayla Stahman

Stefanie Swan

William D. Browning

Tucson

Matthew Kilby

Sarah Precup

Kaitlyn Quigley

Matthew Ramirez

TENTH CIRCUIT

Colorado

Lindsay Dofelmier

William Raley

Lisa Wendt

Kansas and Western District of Missouri

George Allan

Samantha Angell

Monica A Bennett

Hope Bentley

Maggie Boyd

George Brand

Whitney Casement

Erica Clinton

Kim Farha

Alec Guy

Julia Kitsmiller

Isabella Neuberg

Hope Radke

Jenny Schorgl

Dahnika Short

Brenda Yoakum-Kriz

New Mexico

Robert Silva

Naomi Whitehead

Northern/Eastern Oklahoma

Robert Carter

Paula Inman

Oklahoma City

Kymberly Cravatt

Katherine Crowley

Sarah Lee

Gossett Parrish

Jacob Yturri

Utah

Michael Anderson

Victoria Luman

William McMurray

ELEVENTH CIRCUIT

Atlanta

Vincent Davis

Christopher Gleason

Thomas Grant

Susan Gouinlock*

David Jaffer

Lawrence Kunin

Eric Larson

Lucy Lu*

Broward County

Scott Cagan

Gavin Gaukroger

Marlon Weiss

Jacksonville

Nicholas McNamara

Mobile

Harold Wasden

Montgomery

Jeffrey Beaverstock

North Alabama

David Edeli

Orlando

Meghan Boyle

Valerie Chartier-Hogancamp

Taylor Chatting

James DCruz

Katherine Katz

Michel Scala

Palm Beach

Robert Machate

Selene Vazquez

South Florida

Tal Aburos

Max Eichenblatt

Dianne Fischer

Zachary Gorwitz

Brant Hadaway

Brandon Hechtman

Ana Kauffmann

Jonathan Kobrinski

Ismael Labrador

Douglas Lehtinen

W. Taylor Loe

Carol Lumpkin

Francis Murray

Veronica Rabinowitz

Kelly Shami

Ana Varela

Tampa Bay

Emily Ayvazian

Avery Holloman

Michael Kolcun

Beatriz Miranda

Audrey Schechter

Mirelis Valle

Burton Wiand

Howard Williams

D.C. CIRCUIT

Capitol Hill

Christine Nell

Johnnie Peace

District of Columbia

Sean Belanger

Daniel Bever

Clifford Bloomfield

Lucy Chang

Mario de Castro

Julia Giffin

Mark Grundvig

Hannah Hawkins

Jacob Hopkins

James Jordan

Shadi Karimi*

Shelley Leonard

Michael Leotta

Nathaniel Pollock

Lori Rubin*

Timothy O. Schranck

Julia Shagovac

Olga Torres*

Alexandra Williams

Federal Bar Association Calendar of Events



MAY

MAY 5–6

2023 Annual Immigration Law Conference

MAY 18

2023 Supreme Court Admissions Ceremony

JUNE

JUNE 1–2

2023 Insurance Tax Seminar

SEPTEMBER

SEPTEMBER 21–23

FBA Annual Meeting & Convention – Memphis, TN