A book launch at the MIT Media Lab on February 2, 2012

By Elettra Bietti – Edited by Andrew Segna

On the sixth floor of the MIT Media Lab, Rebecca MacKinnon started the presentation of her new book Consent of the Networked: The World Struggle for Internet Freedom by warning us about the threats around the Internet’s future. Are we going toward democracy or toward its opposite? How do we make sure that the Internet evolves in a democratic way? The Internet, according to Ms. MacKinnon, must not be taken for granted.

Ms. MacKinnon argued that state laws will never provide sufficient protection for the Internet as foreign laws systematically undermine their effects. After mentioning multi-jurisdictional issues, she went on to discuss the more abstract relationship between citizens and government. Companies are increasingly crucial in the Internet’s eco-system. She asked the audience how we can make sure that government actually represents the people when it regulates companies and whether it should regulate at all. The relationship between the State and its citizens appears to have eroded, and its erosion begs the question of what new form regulation of the online realm should take. The Magna Carta and John Locke’s ideas about government and property are no longer a persuasive guide for regulators, who must find inspiration elsewhere.

If the pre-Internet period can be metaphorically represented as a time of scarcity, a desert of ideas, the Internet revolution can instead be represented as a tropical storm, the implications of which we, as inhabitants of the desert, are still unequipped to face and fully understand. According to Ms. MacKinnon, although we are far from knowing the values we will need to promote or the ways in which we will want to promote them, we are aware that something important has changed in our current social structure. She mentioned a few ideas and solutions discussed in her book for implementing openness online: open digital commons, multi-stakeholder Internet governance, development of declarations of the rights of Netizens, the Global Network Initiative which promotes online accountability for businesses, and other efforts of transparency including the Google Transparency Report, as well as forms of dialogue and consultation with users. The ultimate goal, Ms. MacKinnon pointed out, is to preserve liberty online. As the fight for the Internet’s ecology becomes fiercer, we are increasingly responsible for the preservation of our online liberties. Given the number of players and the interests at stake, maintaining the Internet as a free space for online public discussions is and will be a challenge, as the SOPA legislation showed.

Overall, the event was greatly inspirational and reminded us that the Internet is not a given and that we need to act to make sure the Internet becomes what we want it to be.

The event is available online on the Berkman Center’s YouTube channel on the following link: http://www.youtube.com/watch?v=FpUQDeSgp8A.

Elettra Bietti is a LL.M. student at Harvard Law School.

Federal Circuit Clarifies the Fame Standard for Trade Dilution
By Sonal Mittal – Edited by Laura Fishwick

Coach Servs., Inc., v. Triumph Learning L.L.C., No. 2011-1129 (Fed. Cir. Feb. 21, 2012)
Slip Opinion

The Court of Appeals for the Federal Circuit affirmed-in-part the decision of the Trademark Trial and Appeal Board (“Board”), which had dismissed the notice of  opposition filed by Coach Services, Inc. (“CSI”) opposing the registration of the COACH mark by Triumph Learning L.L.C. (“Triumph”). The Federal Circuit upheld the Board’s holding that CSI failed to prove that Triumph’s educational materials were likely to dilute CSI’s luxury travel brand. In so holding, the court provided an example of a level of fame that is insufficient to qualify for protection from brand dilution under the Lanham Act.

PatentlyO provides an overview of the case. TrademarkAttorneys praises the decision as a just response to major luxury label’s attempt to enforce a trademark without any legitimate economic need to do so. The TTABlog concurs that the case provides an interesting benchmark for the level of fame required to achieve trade dilution in the context of two disparate market sectors—luxury travel goods and educational services.  (more…)

District court holds that an advertisement-like salute to Michael Jordan is constitutionally protected free speech
By Abby Lauer – Edited by Laura Fishwick

Jordan v. Jewel Food Stores, Inc., 2012 WL 512584 (N.D. Ill., Feb. 15, 2012)
Slip Opinion (hosted by Justia.com)

The Northern District of Illinois has ruled that a national grocery store chain’s reference to basketball superstar Michael Jordan in a page published in a commemorative issue of Sports Illustrated is constitutionally protected free speech. The court has accordingly granted defendant Jewel Food Store’s motion for summary judgment as far as the First Amendment issue is concerned.

The district court held that Jewel’s page constituted noncommercial speech because it did not propose a commercial transaction. Instead, the page merely congratulated Jordan on his accomplishments, and Jewel’s logo and slogan were used “to ensure that the congratulatory message sounded like it was coming from Jewel and not from any other person or entity.” Jordan v. Jewel Food Stores, Inc., 2012 WL 512584, at *4. In addition to the general noncommercial speech inquiry, the Northern District of Illinois also applied the Supreme Court’s subsidiary three-factor test to determine whether speech is commercial, and the court found that the test favored finding Jewel’s page to be noncommercial speech.

ESPN Chicago provides an overview of the case. Rebecca Tushnet’s 43(B)log offers a detailed description of the district court’s holding and analysis.  (more…)

Justice Department Approves Google/Motorola Merger and Other Patent Acquisitions
By Jacob Rogers – Edited by Jonathan Allred

Investigations of Google Inc.’s Acquisition of Motorola Mobility Holdings Inc. and the Acquisitions of Certain Patents by Apple Inc., Microsoft Corp. and Research in Motion Ltd. (Feb. 13 2012).
Decision

On Monday, February 13, 2012, the Antitrust Division of the U.S. Dept. of Justice approved the merger between Google Inc. and Motorola Mobility Holdings Inc. as well as the acquisition of additional patents by Apple Inc., Microsoft Corp., and Research in Motion Ltd.

The Dept. of Justice’s decision allows the acquisitions, which concentrates technology patents in fewer hands, to go forward. Google, once it completes its merger, will acquire approximately 17,000 patents from Motorola as well as an additional 6,800 pending patents. Microsoft, Apple, RIM and others organized as a group under the name Rockstar Bidco will be able to complete their acquisition of approximately 6,000 patents and patent applications that they purchased from the Nortel bankruptcy auction. In addition, Apple will be able to separately acquire an undisclosed number of patents from CPTN Holdings, LLC, which were formerly owned by Novell.

After the purchases, Microsoft and Apple committed to supporting the existing licensing commitments made by Nortel and Novell. However, Google has not made a similar firm commitment with regard to the Motorola patents.

Steven J. Vaughan-Nichols, blogging for ZDnet, suggests that the Motorola merger is a move by Google to constrain Apple’s ability to initiate future lawsuits without needing to enforce its patents. According to Vaughan-Nicols, by agreeing to license its patents on fair, reasonable and non-discriminatory (“FRAND”) terms, Google is making a gesture of peace that Apple will reciprocate, rather than risk injunctions against its next generation of iPhone and iPad releases. PC Magazine suggests that Google’s purchase of Motorola may have been motivated by its inability to acquire any of the Nortel patents. However, the Antitrust Division Report notes that Google’s commitment to the FRAND standard is less clear than the commitments made by Microsoft and Apple. (more…)

Federal Circuit Affirms $371 Million Judgment Against W.L. Gore
By Michael Hoven – Edited by Matt Gelfand

Bard Peripheral Vascular, Inc. v. W.L. Gore & Assocs., No. 2010-1050 (Fed. Cir. Feb. 10, 2012)
Slip opinion

The Court of Appeals for the Federal Circuit affirmed a decision from the District of Arizona, which upheld a jury verdict that W.L. Gore & Associates’s employee had not jointly invented a vascular graft patented by Bard Peripheral Vascular, and that Gore had willfully infringed Bard’s patent. In addition, the Federal Circuit affirmed the lower court’s award of enhanced damages of $371 million, plus attorneys’ fees, costs, and an ongoing royalty to Bard.

The Federal Circuit held that there was substantial evidence to support the jury’s finding of willful infringement and that the district court had not abused its authority in awarding enhanced damages, fees, costs, and a royalty to Bard. Although Gore’s employee had supplied tubes of the substance ePTFE to the inventor behind the Bard patent so that ePTFE could be tested for suitability in vascular grafts, the court reasoned that the inventor of the Bard patent had the key insight into exactly how to fabricate ePTFE into successful vascular grafts, which was not anticipated by the work of Gore or other researchers investigating the use of ePTFE in such grafts. Further, the court rejected Gore’s argument that its employee was a joint inventor, pointing to evidence that the inventor of graft reduced the invention to practice without assistance from Gore. In so holding, the court stated that a researcher, if provided with a material to investigate a possible application, can claim an invention in his or her insight into the precise characteristics that make the material suitable for the application.

Bloomberg provides an overview of the case. The Patent Prospector says the patent at issue and its decades-long legal battle demonstrate that the patent system is broken. IP Biz noted the sharp exchange of words between the majority and the dissent. (more…)