Cited in Kimble v. Marvel supreme court brief re patent misuse

Someone told me that I was cited in the respondent’s brief to the Supreme Court in Kimble v. Marvel Enterprises, Inc.

Indeed, patent-license negotiations may often fail to approximate the conditions presumed by the classical economic model of efficient bargaining. See, e.g., Sag & Rohde, Patent Reform and Differential Impact, 8 Minn. J.L. Sci. & Tech. 1, 36-37 (2007) (patent holder may have asymmetrically better information about the scope and validity of the patent) ~ Kimble v. Marvel Enterprises, Inc., 2015 WL 881759 (U.S.), 45 (U.S.,2015)

In Brulotte v. Thys Co. the Supreme Court ruled that, when patents are sold in return for a royalty payment, the purchaser was not obligated to continue these payments beyond the expiration date of the patents because doing so would over-compensate the seller of the patent and improperly extend the patent monopoly beyond the intended time limit.

In other words, it is patent misuse to try to extract  royalties for use of the patent post-term. That rule is now being challenged. For a summary of the issue in the case, see

Is IP property? An outline of the debate.

Is IP Property?

The debate about whether intellectual property is really property tends to proceed along the following lines.

Pro-property advocates observe that as a matter of definition exclusive and tradable rights should be thought of as property.

Anti-property advocates note that IP rights are limited in scope and duration and subject to a number of important public interest caveats.

Pro-property advocates respond with fascinating descriptions of the law relating to nuisance, easements, riparian rights and ancient Roman laws which hold the oceans and navigable waterways in public trust to show that, for every conceivable feature of IP rights that supposedly distinguishes them from property, there is in fact a property law antecedent.

Anti-property advocates respond by saying “but that is not what you mean when you say IP is property. You mean control that is absolute, unyielding and perpetual.”

Both sides then declare victory in the debate and revert to their initial positions.

Do not upgrade to Yosemite.

I am that burning feeling of rage as the computer freezes, then restarts with the last 15 minutes of beautifully crafted prose about the definition the the Transmit clause under the Copyright Act lost forever.

I switched to a Mac to avoid this feeling.

Screen Shot 2014-11-13 at 6.39.04 AM







Post Script: Dealing with a problem in the startup file seems to have resolved this instability.

Updated Copyright Trolling and Pornography Data for 2014


Copyright Lawsuits Filed in U.S. Federal Courts 2001 – 2014


This graphs is from my forthcoming article, Copyright Trolling, An Empirical Study. The graph illustrates the effect of two separate waves of John Doe litigation. The first wave was the recording industry’s battle with filesharing technology from 2004 through 2008. The second wave began in 2010 and continues through to the present and is dominated to a remarkable degree by lawsuits relating to pornography.

There is an article in the New Yorker Online today about this phenomenon with a a closeup view of one the major plaintiffs, Malibu Media, see THE BIGGEST FILER OF COPYRIGHT LAWSUITS? THIS EROTICA WEB SITE, BY GABE FRIEDMAN . Well worth a read.


Patent troll statistics, a correction

In a post on Friday I mentioned that in 2012, businesses and individuals targeted by patent aggregators and patent holding companies accounted for fifty-six percent of all patent defendants. That number should actually be 37.8% of all patent defendants. 

There are estimates of even higher numbers, see Colleen Chien, Patent Trolls by the Numbers reporting RPX’s estimate that  PAEs initiated 62% of all patent litigation suits in 2012. However, it is not exactly clear how RPX determines who is and is not a patent troll. Also RPX is in the business of providing “patent risk management services”, so it is not exactly a disinterested bystander in the patent troll debate.

Christopher A. Cotropia, Jay P. Kesan & David L. Schwartz, Unpacking Patent Assertion Entities (PAEs) have provided some great data on this issue – but it still needs to be read carefully to understand what it means.

Figure 3 of that paper reports patent litigation numbers in terms of the number of individual defendants sued.

On this metric:

  • suits by large aggregators and patent holding companies increased from 31.6% of all patent litigation in 2010 to 37.8% in 2012;
  • in contrast suits by operating companies went down from 48.9% in 2010 to 47.3% in 2012;
  • if you include the IP holding companies of operating companies, suits by operating companies went down from 51.0% in 2010 to 47.8% in 2012;

Cotropia, Kesan & Schwartz round out this picture by reporting the numbers for universities & colleges, individuals & family trusts, failed operating companies & failed start-ups, and technology development companies. Some of these suits may be troll litigation, but without case specific information it is hard to tell.


Garcia v. Google amicus briefs with very brief summaries

Due to the level of interest in Garcia v. Google, the Ninth Circuit has a dedicated page providing information and key court documents to the public.

I have listed the Amicus briefs along with very cursory descriptions below. The briefs are all quite short.

Internet Law Professors — addressing the implications of the Court’s decision for Section 230 of the Communications Decency Act.  Section 230 is vital to the health of e-commerce and web 2.0 businesses, it provides the legal foundation for many of the most popular websites that enable users to communicate with each other or the world at large.  The panel’s broad interpretation of copyright law undermines Section 230 immunity without even expressly considering it. * I am one of the Amici for this brief.

Professors of Intellectual Property Law — arguing that the Court’s opinion misinterprets the baseline requirements for copyrightability. ** This is the brief to read for students of copyright law.

Adobe Systems, et al. It is not surprising that eBay, Facebook, Gawker, Kickstarter, Pinterest, Tumblr, Twitter, and Yahoo!  would feel strongly about this case. These amici argue that the Court’s decision and order places too much responsibility on service providers to monitor their services and denies the public’s interest in free expression and access to information. They also argue that the Court’s order is unworkable and that the ruling poses a serious threat to online service providers’ businesses.

Netflix, Inc. — arguing that that the ruling creates a new species of copyright and risks wreaking havoc with established copyright and business rules on which third party distributors, such as Netflix, depend.

International Documentary Ass’n — arguing that the Court’s opinion has created uncertainty as to several fundamental concepts that are essential to modern filmmaking.

Floor64 (publisher of & Organization for Transformative Works —arguing that the Court’s decision undermines Congress’s goal of fostering online speech by effectively stripping intermediaries of the statutory protection they depend on to deliver it — i.e. the safe harbors created by the § 230 of the Communications Decency Act and the Digital Millennium Copyright Act (17 U.S.C. § 512).)

California Broadcasters — arguing that a finding that individual performances within films and television programs may be entitled to copyright protection creates uncertainly for entertainment media creators and distributors.

News Organizations — arguing that the Court’s decision did not properly consider important First Amendment interests and that it poses serious risk to news organizations that extend far beyond the unique facts of the case at hand.

Electronic Frontier Foundation, et al. — framing the issues in Constitutional terms and addressing the standard for preliminary injunctions.

Public Citizen Litigation Group — focusing on the correct standard for issuing an injunction restraining speech.