BERKELEY TECHNOLOGY LAW JOURNAL Research Articles

Design Patents are Theft, Not Just a 'Fraud on the Public,' Who Need Legislation to Restore Their Repair Rights

This Comment, forthcoming in the Berkeley Technology Law Journal, commends the excellent and timely historical analysis of Menell and Corren addressing design patent law and the awful historical development of its current functionality doctrine. Peter S. Menell & Ella Corren, Design Patent Law’s Identity Crisis, 35 Berkeley Tech. L.J. __ (2021). But their cogent analysis fails to focus adequately on the harm to the public from such fraud and restricts the scope of the fraud to functionality. Instead, I argue that design patents and the law surrounding them have been a series of category errors from the beginning. The entire concept of a design patent is a “fraud upon the public,” and it is the public that loses its rights (and pays from its metaphorical wallet) when that fraud occurs. The Comment traces these various category errors, suggesting that design rights be relegated to a sui generis regime rather than included in a technological patent regime.

Fair Use For Free, or Permitted-but-Paid?

The U.S. Supreme Court in Sony Corporation of America v. Universal City Studios fended a fork in the fair use road. The Court there upset the longstanding expectation that uses would rarely, if ever, be fair when the whole of a work was copied. In the aftermath of that decision, lower courts have rendered a plethora of decisions deeming the copying of an entire work (even with no additional authorship contribution) a fair use, and therefore “free” in both senses of the word. A perceived social benefit or some market failure appears to motivate these decisions. This is because fair use is an on/off switch: either the challenged use is an infringement of copyright or it is a fair use, which section 107 declares “is not an infringement of copyright.” As a result, either the copyright owner can stop the use, or the user not only is dispensed from obtaining permission, but also owes no compensation for the use. I contend that fair use for free should be available only where a second author copies in the creation of a new work (instances which I will call productive uses). By contrast, when the entire work is copied for essentially distributive purposes, courts and legislatures should sometimes allow the use, but subject it to an obligation to compensate authors and rights holders. This is not a radical idea: the United States is in fact an outlier in the broader international landscape of copyright exceptions. Many countries have permittedbut-paid regimes for various uses, including those by libraries, educational institutions, and technologies. Indeed, the United States has some as well, particularly respecting new technological modes of dissemination. For many authors and other members of the creative communities, while their works stoke the engines of others’ enterprises, the Internet age has proffered more rags than riches. Creators should be compensated for the non-creative reuse of their works. © 2014 Jane C. Ginsburg. † Morton L. Janklow Professor of Literary and Artistic Property Law, Columbia Law School. Many thanks for research assistance to Trey Brewer, Arjun Jaikumar, and Olena Ripnick, all Columbia Law School class of 2014. Thanks also for observations and criticisms to June Besek, Jack Browning, Irene Calboli, David Carson, Jacqueline Charlesworth, Susy Frankel, Wendy J. Gordon, Brad Greenberg, Lital Helman, Bert Lazerow, Yafit Lev-Aretz, Jessica Litman, Tony Reese, Pamela Samuelson, Paul Spera, Eva Subotnik, and Edouard Treppoz, and to Shyamkrishna Balganesh, Christopher Yoo, and the participants in the University of Pennsylvania copyright colloquium; to Jennifer Rothman and Jay Dougherty and the participants in the Loyola Law School faculty workshop, and to my colleagues at the Columbia Law School faculty workshop. Much gratitude to Barton Beebe for sharing his database of fair use cases. This article benefited from the support of the Philippe P. Dauman Faculty Research Fund. 1384 BERKELEY TECHNOLOGY LAW JOURNAL [Vol. 29:1383

Copyrightable Subject Matter in the "Next Great Copyright Act"

The drafters of the Next Great Copyright Act will have to establish the subject matter that their statute will protect. Currently, the 1976 Copyright Act protects a very broad range of subject matter, though its reach is not unlimited. Perfume, for example, falls outside all of the categories of subject matter protected in the current statute. The question of what subject matter copyright law protects has been largely, though not entirely, uncontroversial in recent years, and this Article does not propose that the Next Great Copyright Act expand or contract copyright’s subject matter. Instead, it draws on experience under the current act and its predecessor (the 1909 Copyright Act) to offer lessons to guide legislators in drafting a new statute’s subject-matter provisions. Most importantly, Congress should expressly and exhaustively enumerate in the statute all of the categories of subject matter that it intends to protect. Congress should not delegate authority to the courts or the Copyright Office to find other, unenumerated categories of subject matter copyrightable. In the past, Congress appears to have left open the possibility that subject matter not enumerated in the statute—such as, for example, perfume under the 1976 Act—might nevertheless be copyrightable, either by writing a statute (the 1909 Act) that could be read to protect every type of authorship that the Constitution authorizes Congress to protect or by indicating (in the 1976 Act) that the statutory list of categories of copyrightable subject matter is nonexhaustive. The Next Great Copyright Act should reject both approaches. In addition to identifying all of the categories of authorship that it wishes to protect, Congress should statutorily define each enumerated category, and should do so with sufficient breadth that rapid technological developments do not quickly make the definitions obsolete. The current statute, in contrast to the 1909 Act, demonstrates how this can be done. Finally, Congress should make clear that works of authorship incorporating preexisting material—in particular, compilations of preexisting material—are copyrightable only if they come within one of the expressly enumerated categories. © 2014 R. Anthony Reese. † Chancellor’s Professor of Law, University of California, Irvine. Thanks to the participants in the symposium, and to Jane Ginsburg, Rob Kasunic, Jessica Litman, Lydia Loren, Pam Samuelson, Chris Sprigman, and Molly Van Houweling for helpful discussions on the topic of copyright’s subject matter. Thanks also to Chris Buccafusco, Ed Lee, David Schwartz, the participants in the Spring 2013 Chicago IP Colloquium, and the participants in the January 2012 Vanderbilt JET Copyright & Creativity Symposium for comments on an earlier draft paper on this topic. 1490 BERKELEY TECHNOLOGY LAW JOURNAL [Vol. 29:1489 Following these principles in establishing the subject matter protected by the Next Great Copyright Act would improve upon the 1976 Act’s provisions and would resolve a number of uncertainties generated by the current statutory language.

Understanding the Federal Circuit: An Expert Community Approach

The Court of Appeals for the Federal Circuit (“CAFC”)—the appeals court in charge of virtually all patent cases—has been fraught with controversy since its creation in 1982. To its critics, the Federal Circuit engages in puzzling behaviors, out of step with its role as an Article III appellate court. The Federal Circuit shows little deference to district courts on questions of fact and to the Patent and Trademark Office (“PTO”) on technical issues. It surprisingly resorts to formalistic rules in an area of the law that requires flexibility to adapt to changing technological landscapes. These criticisms have become increasingly salient, leading to calls for an end to the Federal Circuit’s exclusive jurisdiction over patent appeals. Several explanations have been put forth to account for these puzzling behaviors. Yet, none can fully explain the range of unique Federal Circuit conduct. Without a full explanation for Federal Circuit behavior, however, the debate over Federal Circuit jurisdiction will remain gridlocked. Drawing upon studies from the sociology of expertise, this Article provides a model of Federal Circuit decision-making that explains and predicts Federal Circuit behavior as a product of four distinct but interrelated expert community features: (1) epistemic control, (2) codification, (3) typecasting, and (4) inability to self-coordinate. The drive that expert communities exhibit for maximal control and autonomy over their knowledge base— referred to as epistemic control—explains why the Federal Circuit is less likely to defer to solutions proposed by other expert communities, such as the PTO, than would be expected of generalist courts. Those motivations also predict that expert communities such as the Federal Circuit will be more likely to defy non-expert superior generalists, such as the Supreme Court, than would be expected under traditional accounts of behavior in judicial hierarchies. The codification feature of expert communities gives a richer account than © 2015 Laura G. Pedraza-Farina † Assistant Professor, Northwestern University Law School, laura.pedrazafarina@law.northwestern.edu. I thank Jonas Anderson, Adam Candeub, Brian Casey, Kevin Emerson Collins, Mariana Craciun, Shari Diamond, Rochelle Dreyfuss, Peter diCola, Gil Eyal, Roger Ford, Ezra Friedman, John Golden, Paul Gugliuzza, Shubha Ghosh, Tonja Jacobi, Andrew Koppelman, Joshua Kleinfeld, Peter Lee, Orly Lobel, Peter Menell, Jide Nzelibe, Lisa Larrimore Ouellette, Matthew Sag, Joshua Sarnoff, David Schwartz, Nadav Shoked, Matthew Spitzer, Kristen Stilt, Melissa Wasserman, and audiences at Northwestern Law School, the American Bar Foundation, DePaul Law School, the 2014 Intellectual Property Scholars Conference, PatCon 2014, Works-in-Progress in Intellectual Property 2014, the 7th Annual Junior Scholars in Intellectual Property Conference, Michigan State University Law School, and the 2014 Intellectual Property Scholars Roundtable for their helpful comments and feedback. Jason Portis and Ryan Whalen provided excellent research assistance. 90 BERKELEY TECHNOLOGY LAW JOURNAL [Vol. 30:1 existing narratives of when and why the Federal Circuit may prefer inflexible rules of decision over flexible standards. It predicts that the Federal Circuit will resort to rules not only to simplify technical knowledge or control subordinate communities, but also to build external legitimacy and manage internal dissent. Normatively, this model offers a path out of the gridlock by revealing a framework to evaluate and design proposals for Federal Circuit reform. To minimize the distortive effects of typecasting in the context of a centralized court, while retaining the advantages of expertise, this Article proposes the use of advisory panels to house technological, sociological, and economic expertise. Additionally, the model has important implications beyond the Federal Circuit, as it provides a novel theoretical lens to analyze the behavior of other specialized courts.

How Fair Use Can Help Solve the Orphan Works Problem

Many works that libraries, archives, and historical societies would like to digitize are “orphan works,” that is, works for which the copyright holder either is unknown or cannot be located after a diligent search. Due to copyright risk if an owner later shows up, nonprofit libraries and similar institutions have been reluctant to digitize and make these works available, greatly limiting access to important cultural and historical information. While a legislative fix may soon be proposed, this Article argues that legislation is not necessary to enable some uses of orphan works by nonprofit libraries and archives. Instead, U.S. copyright law’s fair use doctrine, which allows certain unpermissioned uses of copyrighted works, provides a partial solution. Though it is an incomplete solution, fair use has some significant advantages over other approaches through which libraries and archives could make publicly beneficial uses of orphan works. Under fair use, there is no need to develop a licensing system, significantly reducing administrative and transactional costs, and eliminating socially wasteful license fees for works that are not on the market, and for which an owner is unlikely to exist. Second, fair use has the flexibility to accommodate change over time as libraries and archives discover the best ways to search for owners, preserve works, and make them available. Finally, allowing fair use of orphans by libraries and archives helps fulfill copyright’s critical purposes of promoting the dissemination of knowledge and supporting speech and free expression. © 2012 Jennifer M. Urban. † Assistant Clinical Professor of Law, University of California, Berkeley School of Law. The author gratefully acknowledges the many thoughtful ideas and helpful comments of Ty Alper, Roxanna Altholz, Michelle Anderson, Michael Donaldson, James Grimmelmann, David Hansen, Edward Lee, Mark Lemley, Saira Mohammed, Pamela Samuelson, Jason Schultz, Christopher Sprigman, and Karen Tani, participants in the Orphan Works & Mass Digitization: Obstacles & Opportunities conference [hereinafter Berkeley Orphan Works Conference], and participants in the 12th Annual Intellectual Property Scholars Conference. This Article is output of the Berkeley Digital Library Copyright Project, generously supported by funding from the Alfred P. Sloan Foundation. More information about the Berkeley Digital Library Project can be found at http://www.law.berkeley.edu/12040.htm. I especially thank Ana Enriquez for excellent research assistance. The thoughts contained in this Article represent my individual academic conclusions and opinions, and should not be attributed to any client I represent or the Samuelson Law, Technology & Public Policy Clinic, which I direct. In addition, the University of California, where I am a faculty member, is a defendant in the Authors Guild, Inc. v. HathiTrust suit; however, I do not represent, and in no way speak for, the University of California or any other party in the case. 1379-1430_URBAN_031013_FINAL (DO NOT DELETE) 3/10/2013 10:36 PM 1380 BERKELEY TECHNOLOGY LAW JOURNAL [Vol. 27:1379

Disagreeable Privacy Policies: Mismatches between Meaning and Users’ Understanding

Privacy policies are verbose, difficult to understand, take too long to read, and may be the least-read items on most websites even as users express growing concerns about information collection practices. For all their faults, though, privacy policies remain the single most important source of information for users to attempt to learn how companies collect, use, and share data. Likewise, these policies form the basis for the selfregulatory notice and choice framework that is designed and promoted as a replacement for regulation. The underlying value and legitimacy of notice and choice depends, however, on the ability of users to understand privacy policies. This paper investigates the differences in interpretation among expert, knowledgeable, and typical users and explores whether these groups can understand the practices described in privacy policies at a level sufficient to support rational decision-making. This paper seeks © 2015 Joel R. Reidenberg, Travis Breaux, Lorrie Faith Cranor, Brian French, Amanda Grannis, James T. Graves, Fei Liu, Aleecia McDonald, Thomas B. Norton, Rohan Ramanath, N. Cameron Russell, Norman Sadeh and Florian Schaub. † For their comments on this study, the authors would like to acknowledge and thank Alessandro Acquisti, Noah A. Smith, and Shomir Wilson, and the participants at the 2014 TPRC 42nd Research Conference on Communication, Information and Internet Policy. Funding for this project was provided, in part, by the National Science Foundation under its Secure and Trustworthy Computing (SaTC) initiative grants 1330596, 1330214, and 1330141 for “TWC SBE: Option: Frontier: Collaborative: Towards Effective Web Privacy Notice and Choice: A Multi-Disciplinary Prospective” and by a Fordham Law School Faculty Research Grant. †† Respectively, Stanley D. and Nikki Waxberg Chair and Professor of Law, Fordham University; Assistant Professor of Computer Science, Carnegie Mellon University; Professor of Computer Science and Engineering & Public Policy, Carnegie Mellon University: Senior Research Programmer, Carnegie Mellon University; Research Fellow, Fordham Center on Law and Information Policy; Ph.D Candidate (Engineering and Public Policy) Carnegie Mellon University; Ph.D Candidate (Computer Science), Carnegie Mellon University; Director of Privacy, Stanford Center for Internet & Society; Privacy Fellow, Fordham Center on Law and Information Policy; Masters Candidate (Computer Science), Carnegie Mellon University; Executive Director, Fordham Center on Law and Information Policy; Professor of Computer Science, Carnegie Mellon University; Postdoctoral Fellow (Computer Science), Carnegie Mellon University. 40 BERKELEY TECHNOLOGY LAW JOURNAL [Vol. 30:1 to fill an important gap in the understanding of privacy policies through primary research on user interpretation and to inform the development of technologies combining natural language processing, machine learning, and crowdsourcing for policy interpretation and summarization. For this research, we recruited a group of law and public policy graduate students at Fordham University, Carnegie Mellon University, and the University of Pittsburgh (“knowledgeable users”) and presented these law and policy researchers with a set of privacy policies from companies in the e-commerce and news and entertainment industries. We asked them nine basic questions about the policies’ statements regarding data collection, data use, and retention. We then presented the same set of policies to a group of privacy experts and to a group of crowd workers representing typical Internet users. The findings show areas of common understanding across all groups for certain data collection and deletion practices, but also demonstrate very important discrepancies in the interpretation of privacy policy language, particularly with respect to data sharing. The discordant interpretations arose both within groups and between the experts and the two other groups. The presence of these significant discrepancies has critical implications. First, the common understandings of some attributes of described data practices mean that semiautomated extraction of meaning from website privacy policies may be able to assist typical users and improve the effectiveness of notice by conveying the true meaning of these policies. However, the disagreements among experts and disagreement between experts and the other groups reflect that ambiguous wording in typical privacy policies undermines the ability of privacy policies to effectively convey notice of data practices to the general public. The results of this research will, consequently, have significant policy implications for the construction of the notice and choice framework and for the U.S. reliance on this approach. The gap in interpretation indicates that privacy policies may be misleading the general public and that those policies could be considered legally unfair and deceptive. And, where websites are not effectively conveying privacy policies to consumers in a way that a “reasonable person” could, in fact, understand the policies, “notice and choice” fails as a framework. Such a failure has broad international implications since websites extend their reach beyond the United States.

A Few Kind Words for Absolute Infringement Liability in Patent Law

The goal of this Article is to partially defend patent law’s absolute liability rule. Most scholars question the utility of absolute liability, which makes it irrelevant whether an infringement defendant copied from the patentee or independently invented the patented invention. This Article draws from two literatures in making a defense. First, it looks to studies of how technological information is communicated or “diffused.” These studies, together with research by psychologists on “inadvertent copying,” demonstrate that ideas are sometimes copied in obscure and subtle ways, leaving little or no evidence that copying has indeed occurred. Next, the Article turns to the literature on optimal standards of care in tort law, which is used to describe what would happen if U.S. law changed to require patentees to show copying. Potential patent infringement defendants—a class that includes virtually all people and companies performing research and development—might well impose strict limitations on receipt of technological information. This would help rebut allegations of copying, reducing the risk of legal liability. Such strict limitations would stifle innovation because technological communities thrive on ubiquitous and unregulated communication. Patent law, as it stands, encourages communication by making proof of copying irrelevant in patent cases. As a consequence, researchers (as potential patent infringement defendants) currently have no reason to restrict their access to technical communications. To further support the case for absolute liability, this Article looks to both copyright law and common law rules on the theft of ideas. Both require proof of copying, and both have led potential defendants to invest in restrictive measures designed to prove that they had no access to third party ideas. By requiring only proof that the infringer is using an invention covered by the patentee’s claims, patent law dispenses with the need to prove that the infringer copied from the patentee. This means that researchers have very little incentive to protect against receipt of outside information. Potential infringers get no payoff from disproving contact with a patentee because the reduced incidence of copying that would follow from lack of DOI: http://dx.doi.org/10.15779/Z38285T © 2016 Robert P. Merges. † Wilson, Sonsini, Goodrich & Rosati Professor of Law, University of California, Berkeley, School of Law. Thanks to participants in Professor Rebecca Eisenberg’s IP Scholarship Seminar at the University of Michigan in 2012; to participants in the IP Scholars Conference at Berkeley in August, 2014; and, as always, to the excellent editorial assistance from the BTLJ editors and staff. I am absolutely liable for all remaining errors. 2 BERKELEY TECHNOLOGY LAW JOURNAL [Vol. 31:1 contact is irrelevant under patent law. No one invests in restricting contact, and information flows freely. The obvious downside of the current regime is that sometimes, an infringement defendant will really be a true independent inventor; no copying, subtle or otherwise, took place. In these cases, as the literature shows, absolute liability imposes significant costs. These costs must be weighed against the benefits of information freely shared under the current absolute liability regime. It is hard to say how the costs and benefit net out. Under these circumstances, a recent innovation in U.S. patent law, the new “prior commercial use” defense under the America Invents Act (AIA), may prove helpful. This defense permits one who can prove early commercialization of an invention to avoid liability, even though he or she otherwise infringes. Because commercialization before a patentee’s filing date will often be associated with independent invention, this rule reduces some of the costs of the absolute liability standard. It is difficult to say whether this combination of (1) absolute liability, plus (2) an exception for early commercialization, provides the optimal set of incentives for potential patent infringers. But at least the prior commercial use rule encourages activity that has independent social value, i.e., rapid introduction to the market. Given the real benefits to the longstanding rule of absolute liability in patent law, providing an exception under these circumstances makes for a reasonable policy.

Sovereignty Under Siege: Corporate Challenges to Domestic Intellectual Property Decisions

Countries face a new threat that strikes at their ability to balance protection of intellectual property rights against other priorities, such as public health. They may have to pay substantial compensation to companies that dislike domestic intellectual property laws. This threat is much more significant than the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS”), a landmark international agreement concluded twenty years ago, that for the first time required all countries to provide “minimum” levels of intellectual property rights; before that time, countries were not obligated to provide any such rights at all. Since the conclusion of TRIPS, policymakers and scholars have strived to preserve local flexibilities to consider domestic policies, such as public health. However, those flexibilities may quickly evaporate if companies can bring claims against countries for compromising private investments under so-called “investor-state arbitration” claims. This is not a theoretical problem—Eli Lilly is currently seeking $500 million in compensation from Canada because Canadian courts invalidated two of its patents under prevailing law. In addition, there are unique issues raised by Eli Lily’s claim that transcend broader concerns raised by scholars and commentators concerning investor-state disputes. In particular, if Eli Lilly’s claim succeeds, it will disrupt internationally accepted norms that permit countries to have different standards of protection. This Article provides a detailed analysis of Eli Lilly’s case of first impression. In so doing, the Article both explains why an arbitration tribunal should reject Eli Lilly’s claims, and predicts the likely impending threats to domestic regulation of public health that intersect with the interests of pharmaceutical companies. This Article ultimately proposes specific language to incorporate in pending agreements to forestall such predicted harms. © 2015 Cynthia M. Ho † Clifford E. Vickrey Research Professor, Loyola University Chicago School of Law. I would like to thank Karen Cross, Christophe Douaire de Bondy, Susan Franck, James Gathii, Christi Guerinni, Yaniv Heled, Molly Beutz Land, Margaret Moses, and Jerome Reichman for comments or other assistance on earlier drafts, as well as participants at IPSC 2014. In addition, many thanks to the assistance of librarian Patricia Scott, as well as research assistant Jean Liu for their excellent help. 214 BERKELEY TECHNOLOGY LAW JOURNAL [Vol. 30:1

The Role of Patent Law in Knowledge Codification

Berkeley Technology Law Journal Volume 23 Issue 3 Summer Article 1 February 2014 The Role of Patent Law in Knowledge Codification Dan L. Burk Follow this and additional works at: http://scholarship.law.berkeley.edu/btlj Recommended Citation Dan L. Burk, The Role of Patent Law in Knowledge Codification, 23 Berkeley Tech. L.J. 1009 (2008). Available at: http://scholarship.law.berkeley.edu/btlj/vol23/iss3/1 This Article is brought to you for free and open access by the Law Journals and Related Materials at Berkeley Law Scholarship Repository. It has been accepted for inclusion in Berkeley Technology Law Journal by an authorized administrator of Berkeley Law Scholarship Repository. For more information, please contact jcera@law.berkeley.edu.

All of This Has Happened before and All of This Will Happen Again: Innovation in Copyright Licensing

Claims that copyright licensing can substitute for fair use have a long history. This Article focuses on a new cycle of the copyright licensing debate, which has brought revised arguments in favor of universal copyright licensing. First, the new arrangements offered by large copyright owners often purport to sanction the large-scale creation of derivative works, rather than mere reproductions, which were the focus of earlier blanket licensing efforts. Second, the new licenses are often free. Rather than demanding royalties as in the past, copyright owners just want a piece of the action—along with the right to claim that unlicensed uses are infringing. In a world where licenses are readily and cheaply available, the argument will go, it is unfair not to get one. This development, copyright owners hope, will combat increasingly fair use–favorable case law. This Article describes three key examples of recent innovations in licensing-like arrangements in the noncommercial or formerly noncommercial spheres—Getty Images’ new free embedding of millions of its photos, YouTube’s Content ID, and Amazon’s Kindle Worlds—and discusses how uses of works under these arrangements differ from their unlicensed alternatives in ways both subtle and profound. These differences change the nature of the communications and communities at issue, illustrating why licensing can never substitute for transformative fair use even when licenses are routinely available. Ultimately, as courts have already recognized, the mere desire of copyright owners to extract value from a market—especially when they desire to extract it from third parties rather than licensees— should not affect the scope of fair use. 1. See Battlestar Galactica (NBC Universal Television 2004–2007; Universal Media Studios 2007–2009). © 2014 Rebecca Tushnet. † Professor of Law, Georgetown University. Thanks to Julie Cohen for helpful comments. 1447-1488_TUSHNET_FINAL.DOCX (DO NOT DELETE) 2/12/15 5:42 PM 1448 BERKELEY TECHNOLOGY LAW JOURNAL [Vol. 29:1447

Thirty Years of Flawed Incentives: an Empirical and Economic Analysis of Hatch-Waxman Patent-Term Restoration

Thirty years ago, the Drug Price Competition and Patent Term Restoration Act (“Hatch-Waxman”) created a new foundation for pharmaceutical innovation by extending patent term for pharmaceutical patents and expanding access to generics. This Article explores the effects of Hatch-Waxman’s patent-term restoration provisions through an empirical and economic analysis and concludes that major structural reforms are needed. The life of a pharmaceutical patent continues to be highly unpredictable and subject to numerous biases and inefficiencies. For example: effective patent term for Hatch-Waxman patents can vary from several months to fourteen years; biologics receive more than a year and a half more patent protection than medical devices; and the implementation of the Uruguay Round General Agreement on Tariffs and Trade (“GATT”) has caused billions of dollars of windfall gains and losses while accelerating reliance on improvements over new products. Moreover, Hatch-Waxman’s unnecessary and heavy-handed incentivization of obtaining FDA approval as quickly as possible places adequate safety and efficacy testing in direct conflict with brand name pharmaceuticals’ profit motives. This Article thus recommends moving towards a system of market exclusivity that provides pre-defined periods of protection for novel pharmaceutical products. © 2014 Jaime F. Cardenas-Navia. † Jaime is an associate at Fitzpatrick Cella Harper & Scinto’s New York office whose practice focuses on complex patent litigation. The views expressed in this Article belong solely to the Author. Many thanks to Scott Chambers, Nancy Linck, Hans Sauer, Jay Thomas, and Alexis Perry for their advice and guidance, with a special thanks to Hans for suggesting this Article topic. A final thank-you to my mother, Nelly Navia, and father, Jaime Cardenas-Garcia, for a lifetime of support. 1302 BERKELEY TECHNOLOGY LAW JOURNAL [Vol. 29:1301

Technologies and Policies to Connect the Next Five Billion

In this Article, we present a broadband deployment framework describing how “the next five billion” may be connected to the Internet in the future. This framework identifies the most promising Internet technologies and the areas where they should be deployed. To summarize, we see wireless platforms being used in rural markets and other areas that will benefit greatly from a high degree of shared infrastructure, particularly with an electrical powering solution. Over time, fiber-based networks will gradually fill across the network, migrating from the core to the edge. In our research, we also describe and promote a certain set of policies (many of which may not require laws) that will facilitate the prompt and efficient deployment of broadband infrastructure. These policies include (1) promoting shared infrastructure, (2) liberalizing spectrum policy, (3) facilitating access and interconnection through Internet exchange points, (4) creating an ecosystem that stimulates demand for broadband (and associated innovation, entrepreneurship, and technical experimentation), and (5) sharing information and discussing best practices among parties with common interests within geographical regions. © 2014 David Reed, Jennifer Haroon & Patrick S. Ryan. † The Principle Investigator for this project is David P. Reed, Ph.D., otherwise authors are listed alphabetically. Author David Reed is Faculty Director and Scholar in Residence at the University of Colorado Interdisciplinary Telecommunications Program. Author Jennifer Haroon is a Principal, Access Strategy and Operations at Google. Author Patrick S. Ryan, Ph.D., is Senior Policy Counsel for International Relations and Free Expression at Google and Senior Affiliated Researcher at the Katholieke Universiteit Leuven (Belgium). The opinions expressed here are those of the authors and do not reflect the opinions of their employers. 1206 BERKELEY TECHNOLOGY LAW JOURNAL [Vol. 29:1205

Federalism in Transition: Recalibrating the Federal-State Regulatory Balance for the All-IP Era

The United States is in the midst of a historic technological transition. Millions of Americans are rapidly replacing “plain old telephone service” (“POTS”) with more advanced alternatives, including wireless telephony, Voice over Internet Protocol (“VoIP”), videoenabled chatting, and non-voice services like texting and social media. Many of these services are delivered over borderless broadband networks via the Internet Protocol (“IP”). The flexibility and modularity inherent in these newer, lightly regulated digital networks stand in sharp contrast to the highly regulated analog public switched telephone network (“PSTN”), with its vast system of copper lines and switches that served as the nation’s only means of voice communication for more than a century. In recognition of this clear shift and the enormous economic opportunities enabled by broadband, and in an effort to hasten the completion of what by all accounts has been a consumer-driven transition, the Federal Communications Commission (“FCC”) has begun the important task of modernizing the policy infrastructure governing the nation’s communications sector. This essential endeavor recognizes that the modern communications marketplace requires a regulatory framework built around and informed by the competitive dynamics, consumer expectations, and business models evident in today’s marketplace. Such forthright federal leadership is critical, but it alone will not guarantee a successful transition. Indeed, the states, primarily through their public utility commissions (“PUCs”), have long played a central role in regulating intrastate aspects of POTS and the PSTN, positioning themselves as de facto (some argue de jure) partners in any effort to modernize the laws and policies impacting the U.S. communications infrastructure. This partnership, however, has not always operated smoothly. Technological innovation, shifts in consumer demand, and a variety of other factors have, on numerous occasions, resulted in protracted legal battles over the proper demarcation of regulatory authority between state PUCs and the FCC. These disagreements have become more acute in the broadband era as PUCs attempt to assert continued primacy in the regulation of communications services provided in their states. Continued legal combat between the states and the federal government—and the uncertainty that it engenders—is ultimately harmful because it serves only to impede the organic forces that are driving this transition. Efforts to © 2014 Charles M. Davidson & Michael J. Santorelli. † Director, Advanced Communications Law & Policy Institute at New York Law School. †† Director, Advanced Communications Law & Policy Institute at New York Law School. The authors would like to thank the Journal staff for excellent editorial assistance. All errors and views are those of the authors only. 1132 BERKELEY TECHNOLOGY LAW JOURNAL [Vol. 29:1131 complete the ongoing IP transition should thus address the equally complex task of recalibrating regulatory federalism for a world dominated by IP networks and services. This Article focuses on this particular aspect of the transition: how to apportion regulatory authority between the states and the federal government in a way that reflects the dynamic nature of the modern communications market while also assuring continued consumer protections.

Trademark Territoriality in Cyberspace: an Internet Framework for Common-Law Trademarks

The Internet has quickly become the next frontier for those seeking to take advantage of free-market competition by doing business online. In addition to having products or services to sell, an Internet presence has become critically important for businesses that want to connect with consumers near and far. While most businesses use trademarks like words, logos, slogans, and other designations to facilitate such consumer connections across the geographically borderless Internet, many of these businesses have not availed themselves of state or federal registration mechanisms for those trademarks. While unregistered trademarks, also known as common-law trademarks, have historically been entitled to legal protection in geographically delimited territorial zones, current trademark jurisprudence is grounded in the physical world and provides scant guidance on the geographic extent of common-law trademark protection in the Internet context. In addition, when such unregistered trademarks inevitably collide with other similar, unregistered trademarks in cyberspace, it is unclear whether the current law, grounded in the concurrent-use doctrine, can survive in an Internet environment. This Article analyzes previous models for evaluating unregistered trademarks used in the Internet context and proposes that these models are insufficient to deal with the myriad issues raised in cyberspace. It provides an updated model for establishing geographic rights through Internet use and offers a middle-ground approach to concurrent Internet use of common-law trademarks. © 2014 Shontavia Johnson. † Assistant Professor of Law, Drake University Law School. The Author thanks Edmund J. Sease and the faculty of Drake University Law School for helpful comments, advice, and ideas on earlier versions of this Article. Thanks also to Madelyn Smith and Nicholas Krob for excellent research and editorial assistance. 1254 BERKELEY TECHNOLOGY LAW JOURNAL [Vol. 29:1253

What Happens in the Cloud: Software as a Service and Copyrights

What happens in the cloud? Copyright owners are concerned. Users of cloud services upload, share, and download copies of software and other files without their owners’ permission and access copyrighted works beyond or in violation of access limitations. Also, copyright owners find it hard to keep up with initiatives of cloud service providers, which constantly introduce new technologies that make copyrighted works available in new formats and business models. What happens in the cloud stays in the cloud. In the cloud, software is no longer commercialized by distributing physical copies to users. Instead, users remotely access and use software copies that remain on the cloud provider’s servers. Software copies stay in the cloud. This raises questions as to if and how copyright law protects the interests of software copyright owners, users, and the public in the cloud. Answering such questions requires an understanding of exactly what happens in the cloud in terms of copying software. This is the focus of the Article. Although cloud offerings are often global and multi-jurisdictional, the copyright laws governing the services remain territorial and national. This Article examines primarily U.S. copyright law, which applies where companies have been most innovative and active in developing cloud offerings, but also briefly takes a look at copyright laws in the EU, the second most developed and active jurisdiction with respect to software copyrights. After Part I provides a general introduction to the topic, Part II gives a technological overview. Part III assesses in detail when and how the exclusive statutory rights under U.S. copyright law are implicated in a number of typical software-as-a-service scenarios. Part IV analyses the same scenarios under copyright laws in Europe for comparison purposes. Part V briefly looks at the complexities of cross-border scenarios and Part VI concludes with an outlook regarding potential legal and policy implications of what happens in the cloud to software copies. © 2014 Lothar Determann. † Lothar Determann teaches computer, Internet, and data privacy law at Freie Universitat Berlin, University of California, Berkeley School of Law, and Hastings College of the Law, San Francisco and practices technology law as a partner with Baker & McKenzie LLP, admitted in California and Germany. The Author thanks Bruce Perens for contributions and explanations on technical details, his partner Ben Allgrove (Baker & McKenzie, London) for comments on EU and U.K. copyright law, and Helena Engfeldt for assistance with research and edits. As with all articles, opinions expressed are those of the Author only, not his firm’s, clients’, or others’. 1096 BERKELEY TECHNOLOGY LAW JOURNAL [Vol. 29:1095

Compelling Passwords from Third Parties: Why the Fourth and Fifth Amendments Do Not Adequately Protect Individuals when Third Parties are Forced to Hand Over Passwords

In 2012, the FBI served a search warrant on Google when a suspect––a user of Google’s phone services––refused to answer any questions about his cellphone, or provide the agents with the password to unlock it. The search warrant compelled Google to hand over the password information and other identifying information for the cellphone (account log-in, password reset, and manufacturer default code), which Google refused to do. Google’s refusal implicates a host of issues regarding our current understanding of privacy and self-incrimination protections and concerns legal scholars with what will happen to these doctrines if the government can simply bypass an individual and obtain passwords from a third party. This Article only begins to scratch the surface of this complex debate by analyzing the extent to which the Fourth and Fifth Amendments protect individuals when the government forces third parties to hand over their passwords, and will illustrate why these amendments do not adequately protect individuals in these situations. With constantly evolving technology and almost daily reports of the government accessing electronic communications and communication records, the time is ripe for Congress to legislate the issue of the government compelling private information, such as passwords, from third parties. © 2015 Sarah Wilson † J.D., Northwestern University School of Law, 2014; B.A., International Relations Global Business, University of Southern California, 2008. I would like to thank the members of the Berkeley Technology Law Journal, Jason Marsico, and Karin Lee for their invaluable comments and edits in developing this article. Most importantly, I would like to thank Matt Hienton for his love, support, and encouragement. 2 BERKELEY TECHNOLOGY LAW JOURNAL [Vol. 30:1

Seven Reasons Why Trade Secrets Are Increasingly Important

As technology reshapes the way we live and work, propelling the American economy toward one based on informational assets, trade secrets have never been more important. The ascent of the importance of trade secrets has unleashed an unprecedented boom in litigation, in legislation, and in media and scholarly attention. It has produced damages awards in the hundreds of millions of dollars, and prompted federal authorities to pursue aggressive criminal investigations. The author, an experienced trade secrets litigator, identifies seven factors behind this phenomenon: (1) digital technology; (2) a mobile workforce; (3) the rising value of intellectual property, of which trade secrets are a part; (4) the widespread adoption of the Uniform Trade Secrets Act; (5) trade secrets’ flexible definition; (6) an increase in international threats; and (7) the shifting calculus between whether to pursue patent or trade secret protection. Whether each of these factors will continue to fuel trade secret growth remains uncertain; societal norms fluctuate, political winds shift. But taken together, these seven trends suggest that the business of trade secrets will only assume greater importance in the years ahead. © 2012 David S. Almeling. † David S. Almeling is a Counsel at O’Melveny & Myers LLP in the firm’s San Francisco office. The opinions expressed in this article do not necessarily reflect the views of O’Melveny or its clients, and it should not be relied upon as legal advice. 1091_1118_ALMELING_WEB_110612 (DO NOT DELETE) 11/6/2012 5:27 PM 1092 BERKELEY TECHNOLOGY LAW JOURNAL [Vol. 27:1091

Free Trade in Patented Goods: International Exhaustion for Patents

Modern international trade law seeks to increase global welfare by lowering barriers to trade and encouraging international competition. This “free trade” approach, while originally applied to reduce tariffs on trade, has been extended to challenge non-tariff barriers, with modern trade agreements targeting telecommunication regulations, industrial and product safety standards, and intellectual property rules. Patent law, however, remains inconsistent with free-trade principles by allowing patent holders to subdivide the world market along national borders and to forbid trade in patented goods from one nation to another. This Article demonstrates that the doctrines thwarting free trade in patented goods are protectionist remnants of long-abandoned pre-Industrial Age economic theories, and the modern arguments for restricting international trade in patented goods—most notably, the possible desirability of permitting price discrimination—provide an insufficient justification for restricting trade across national frontiers. The Article concludes that modern patent law doctrine should be modified to permit free international trade in patented goods and that, if price discrimination or other goals are thought desirable, better alternatives are available to achieve those goals. © 2014 Sarah R. Wasserman Rajec. † Lecturer in Law and Fellow in Law, Science & Technology, Stanford Law School. I would like to thank Sean Bottomley, Robert Brauneis, Dan Burk, John Duffy, Rebecca Eisenberg, Andrew Gilden, Paul Goldstein, Tomas Gomez-Arostegui, Timothy Holbrook, Mark Lemley, Benjamin Liu, Amelia Rinehart, Jacob Sherkow, Marketa Trimble, Molly Van Houweling, Peter Yu, and participants in the World Intellectual Property Organization’s Seventh Advanced Intellectual Property Research Seminar, the 2013 Intellectual Property Scholars Conference, the Sixth Annual Junior Scholars in IP Workshop at Michigan State University College of Law, and faculty presentation at Brooklyn Law School, Drexel, Fordham, Northern Kentucky University, University of New Hampshire, The Ohio State University Moritz College of Law, The University of Pittsburgh School of Law, and William & Mary Law School. I would also like to thank Max Wallot for his excellent research assistance. 318 BERKELEY TECHNOLOGY LAW JOURNAL [Vol. 29:317

Is There a There There - Toward Greater Certainty for Internet Jurisdiction

The unique challenge presented by the Internet is that compliance with local laws is rarely sufficient to assure a business that it has limited its exposure to legal risk. Since websites are accessible worldwide, the prospect that a website owner might be haled into a courtroom in a faroff jurisdiction is much more than a mere academic exercise, it is a very real possibility. The article identifies why the challenge of adequately accounting for the legal risk arising from Internet jurisdiction has been aggravated in recent years by the adoption of the Zippo legal framework, commonly referred to as the passive versus active test. The test provides parties with only limited guidance and often results in detrimental judicial decisions from a policy perspective. Given the inadequacies of the Zippo passive versus active test, it is now fitting to identify a more effective standard for determining when it is appropriate to assert jurisdiction in cases involving predominantly Internet-based contacts. With the benefit of the Zippo experience, the new test should remain technology neutral so as to: a) remain relevant despite ever-changing web technologies; b) create incentives that, at a minimum, do not discourage online interactivity; and c) provide sufficient certainty so that the legal risk of operating online can be effectively assessed in advance. The solution submitted in the article is to move toward a targetingbased analysis. Unlike the Zippo approach, a targeting analysis would © 2001 Michael Geist. t Assistant Professor, University of Ottawa Faculty of Law, and Director of ECommerce Law, Goodmans LLP. The author would like to thank the Uniform Law Conference of Canada and Industry Canada for their financial support in sponsoring this paper; Teresa David and William Karam for their research assistance; Vaso Maric, Rene Geist, Harvey Goldschmid, Ted Killheffer, Denis Rice, as well as the participants at the Consumer Measures Committee/Uniform Law Conference of Canada April 2001 Workshop on Consumer Protection and Jurisdiction in Electronic Commerce, the TPRC 2001 Conference, and the Georgetown University Advanced E-commerce Institute, for their comments on earlier versions of this paper; the editors of the BERKELEY TECHNOLOGY LAW JOURNAL for their excellent work in bringing this paper to publication; and to Allison Geffen for her continued love and support. Any errors or omissions remain the sole responsibility of the author. 1346 BERKELEY TECHNOLOGY LAW JOURNAL [Vol. 16:1345 seek to identify the intentions of the parties and to assess the steps taken to either enter or avoid a particular jurisdiction. Targeting would also lessen the reliance on an effects analysis, the source of considerable uncertainty since Internet-based activity can ordinarily be said to create some effects in most jurisdictions.

Realspace Sovereigns in Cyberspace: Problems with the Anticybersquatting Consumer Protection Act

This Article seeks to fill a critical gap in the current literature relating to the international ordering of cyberspace: the link between jurisdictional assertions by realspace sovereigns and their effects on the global effort to administer the Internet. We analyze the United States' response to disputes over domain names, the Anticybersquatting Consumer Protection Act (ACPA), which permits a trademark owner to seek cancellation or transfer of the domain name by proceeding in rem against the domain name itself, thereby expanding the scope of the ACPA to encompass disputes with little direct connection to the United States. Congress appears to have developed 15 U.S.C. § 1125(d)(2) based on a misunderstanding of the constitutional requirements for adjudicative jurisdiction in the U.S. courts; and early court decisions interpreting the provision have perpetuated the misunderstanding. This Article argues that there exist no cases of foreign cybersquatting (aside from certain cases involving anonymous registrants) as to which the in rem provision will be both applicable and constitutional. The ACPA is notable for its aggressive approach to jurisdiction, and its expansive view of jurisdiction reveals the extent to which realspace sovereigns have a critical, and yet overlooked, role in the continued viability of a global unsegmented domain name system. By mapping the logical control over the domain name system-the distributed hierarchy that is the basis of the system's design--onto realspace territory, the potential for sovereign regulation of the system becomes apparent, either under the recognized principles of prescriptive jurisdiction in international law or as a de facto result of the geographic facts of the domain name system. We contend that the ACPA exemplifies uncoordinated actions that are likely to result in segmentation of the domain name system and thus a decline in social welfare. t Assistant Professors University of Pennsylvania Law School. We thank Stuart Benjamin, Paul Berman, Stephen Burbank, Dan Burk, Michael Froomkin, Edward Hartnett, Geoffrey Hazard, Mark Lemley, Curtis Reitz and participants at the 29th Research Conference on Communication, Information and Internet Policy. Remaining mistakes are our own. BERKELEY TECHNOLOGY LAW JOURNAL