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The Academic Voice
Newsletter of the AIPLA Education Committee
Fall 2014
The Academic Voice
Page 2
From the Education Committee Chair Together with my Co-Chair, Mickie Piatt, and the newsletter's Editor-in-Chief, Donika Pentcheva, we welcome you to our newly-launched newsletter,
The Academic Voice. Our vision for the newsletter is to provide you with the latest news on pending IP legislation, recent case law, amicus briefs, scholarly articles, and other relevant information for educators and practitioners.
The newsletter is also meant to facilitate information sharing, to highlight members, and to update you on the Education Committee's recent activities and upcoming events. We trust that you will find the information in this newsletter useful and invite you to publish with us in our upcoming editions.
Ehab Samuel is Intellectual Property Counsel at
Manatt, Phelps & Phillips LLP.
He can be reached at [email protected].
________________________________________________________________________________
From the Editor-in-Chief
It is with great pride that I
invite you to peruse the
first edition of The Academic
Voice, the newsletter of the
American Intellectual
Property Law Association
Education Committee. My vision for the
newsletter is that it will be a forum for law
professors and others in the legal education
community to freely express their thoughts and
ideas. An active dialog between practitioners
and academics will serve both communities,
resulting in a healthier and more robust
environment for all. By using “Issuu” as our
publisher, I hope you will be motivated to share
and comment on any part of the publication that
inspires you!
Donika Pentcheva is a Registered Patent
Attorney at Westman, Champlin & Koehler,
P.A. and Vice President of the Board of Directors
at Merrick, Inc. She can be reached at
The Academic Voice
Page 3
In This Issue
Recent Developments ...................................................................................................................................................... 4
Adjunct Professor of the Issue ....................................................................................................................................... 5
Question of the Moment ................................................................................................................................................. 6
Recent Publications .......................................................................................................................................................... 7
Full-Time Professor of the Issue .................................................................................................................................... 8
International Professor of the Issue .............................................................................................................................. 9
Upcoming Events .............................................................................................................................................................. 9
Benefits to joining AIPLA
Free membership for full-time IP law
professors
Participation at Meetings, Seminars and
Webinars
speaking opportunities
discount for full-time IP law professors for
attendance at seminars and conferences
Access to AIPLA publications & news
Writing opportunities
Daily IP News via AIPLA Newsstand emails
AIPLA Direct Newsletters on legislation and regulatory updates
AIPLA Quarterly Journal, Report of the Economic Survey (biannually)
AIPLA e-Bulletin on AIPLA Committee activities after each major meeting
Connect with and access to authors of Seminar and Conference papers
The Academic Voice
Page 4
Recent Developments
Law Professors File Amicus Brief in Apple v. Samsung Appeal Calling For Apportionment of Profits in Design Patent Damage Awards
On May 29, 2014, a group of 27 law
professors submitted an amicus
brief in support of Samsung
Electronics in the pending appeal
of the Apple’s judgment for
infringement of design patents.
Apple, Inc. v. Samsung Electronics Co.,
Ltd., Case Nos. 2014-1335 and 2014-
1368 (Fed. Cir. 2014). In the
appeal, Samsung challenges the
damages awarded by the U.S. Dist.
Ct. for the Northern District of California for
infringement of multiple Apple design patents
covering aspects of Apple’s iPhone smartphone.
The brief, written by Mark Lemley of Stanford
Law School, argues that the district court’s
interpretation of the design patent damages
provision, 35 U.S.C. § 289, was incorrect. U.S.
Dist. Ct. Judge Lucy H. Koh ruled that the
measure of damages for infringing a design
patent is the infringer’s entire profit from the
sale of infringing products. The court rejected
Samsung’s arguments that profits should be
apportioned, with only profits directly resulting
from the patented design features included in
the damage award.
The professors argued that the CAFC should
rule that in design patent cases, the infringer’s
profits may be included in damages only when
they result from the infringed design. First, the
brief argued that a non-apportionment rule does
not make sense in light of the role design patent
protection plays in modern products. Unlike the
design patents common in 1887, when the
language now found in § 289 was
added to the statute, today’s design
patents often do not cover the design
of an entire product. For example,
Apple asserted several patents
covering the design of product
components, displays, and icons.
Also, modern products such as
smartphones contain scores of
functional features protected by
utility patents. For those products,
the notion that a single design patent is
responsible for the entire profit is untenable.
Furthermore, the professors noted that for such
products, customers make their purchasing
decisions mainly based on functional
characteristics of competing products, rather
than ornamental features.
The brief also argued that § 289 could be
construed to require apportionment. Although
the statute does not expressly mention
apportionment, the professors noted that the
extent of damages clearly must be limited by
some element of proof. In addition, the second
paragraph of § 289, disallowing duplicative
damages, refers to the defendant’s profits
measure as “the profit made from the
infringement.” The professors argued that that
phrase could be seen as the source of an
apportionment requirement.
By Prof. David C. Berry Western Michigan Univ. - Cooley Law School [email protected]
The Academic Voice
Page 5
Adjunct Professor of the Issue
Professor Donald Cameron
The Adjunct Professor highlighted in this issue of the Education Committee newsletter is Donald M.
Cameron who is a partner in the Toronto law firm of Bereskin & Parr LLP where he is a member of the
Litigation practice group. Don is also an adjunct professor of law at the University of Toronto, Faculty of
Law, and Osgoode Hall Law School at York University, where he has taught patent and trade secret law
at both the undergraduate and graduate levels.
In addition to his law practice and his teaching, Don has managed to find time to write numerous
intellectual property articles produce educational videos in the area of litigation and podcasts on IP law.
He is the Editor of the CANADIAN IP BENCHBOOKS, a set of texts on
Canadian patent, trademark and copyright law. “Writing and teaching
go hand in hand,” Don says. “They both make you stop and look a little
deeper into the principles at play and how the law is shifting.”
AIPLA is fortunate that Don has also managed to be active with the
Education Committee, most recently as the Chair of the
Subcommittee on Professors and Adjunct Professors. Don has
spearheaded an initiative to begin mapping subjects taught by faculty,
both full- and part-time, as the initial step in creating avenues of
discussion and exchange with people who are close to each other,
but might not have been aware of it. He has also led discussions on the LinkedIn discussion group that
the subcommittee began. “The LinkedIn Group is a great way for busy practitioners who are also IP
Adjunct Profs to share ideas and resources with each other and with full time Profs.”
Don was also an enthusiastic participant in the Committee Expo where he encouraged attendees to the
Mid-Winter meeting in Phoenix to become active with the Education Committee. Don sees a lot of
potential. “There’s a lot of brainpower in our Sub-Committee and the AIPLA is hoping to draw from it as
a resource for speakers, authors for newsletter articles and to use as another route to reach out to the
academic community and law students.”
The Academic Voice
Page 6
Question of the Moment TRADE SECRET LAW—TO FED OR NOT TO FED?
On 26 August 2014, 31 law professors sent a letter containing their objections to the proposed bipartisan legislation that is currently pending in both the House and the Senate which addresses federal protection of trade secrets. The Defend Trade Secrets Act of 2014 (S. 2267) and the Trade Secrets Protection Act of 2014 (H.R. 5233) propose, among others, to create a federal civil remedy for theft of trade secrets. AIPLA has supported this legislation which, according to R. Milligan in the 13 Aug 2014 Trading Secrets blog, is gaining momentum and pay be addressed as soon as the upcoming session of Congress. Although the Economic Espionage Act has provided criminal liability for trade secret misappropriation, there has been perennial discussion suggesting that there is a need for a federalization of trade secret law. Neither of the pending bills actually goes that far, creating a federal civil private cause of action, but not a substantive body of trade secret law, instead continuing to rely on the state legislative and common law. It is substantially for that reason that the law professors have opposed the pending legislation. As Professor Christopher Seaman (one of the signers of the letter) sets out in his guest post on Dennis Crouch’s Patently-O blog, one of the primary reasons for the objections is that the legislation would not actually create greater uniformity than already exists under the state laws and there would be a danger that this move would create two parallel systems of substantive law, one federal and one state. In addition to those two objections, the letter lists the following:
1. The acts are imbalanced and could be used for anti-competitive purposes.
2. The acts increase the risk of accidental disclosure of trade secrets.
3. The acts have potential ancillary negative impacts on access to information, collaboration among businesses and mobility of labor.
Prof. Seaman also voices the concern that a federalization of trade secre law may undermining the disclosure of patentable inventions by providing a stronger alternative to turn to trade secrecy for protection rather than the patent system. His full paper is forthcoming in the Virginia Law Review and is currently available on the Social Science Research Network (ssrn.com).
The recent increase in the use of the EEA as well as the incidence of trade secrets litigation has brought this subject to the fore and after many years of debate within the Trade Secret Committee of AIPLA, there is greater support of a federalization of trade secret law than in the past.
WHAT DO YOU THINK? JOIN THE DISCUSSION . . .
A discussion has begun on the LinkedIn Group page for the Law School Professor Subcommittee of the AIPLA Education Committee which you can join (simply request to join the group if you have not already become a member). We will convey the feeling of the group and the points made to the AIPLA Trade Secret Committee going forward. This is your opportunity to actively participate in an discussion and debate that is important today.
By Mickie A. Piatt
Vice Chair, AIPLA Education Committee
Deputy Director, Program in Intellectual
Property Law & Associate Professor of Law
Chicago-Kent College of Law, IIT
The Academic Voice
Page 7
Recent Publications
Considering Trademark and Speech Rights through the Lens of Regulating Tobacco
My primary area of research is trademark law,
although I teach all areas of intellectual property
law most recently offering a course in design
law. Within trademark law, I am fascinated by
the issues in international and comparative
trademark law and have recently written about
exhaustion, territoriality, domain
names and geographical
indications. I also have an on-
going project of explaining the
history and significance of the
little-known Pan-American
Convention on Trademarks. But
when a human rights or public
interest issue emerges in
trademark law, I am drawn to it.
The disparagement cases and the
Australian plain packaging
dispute both have this significance for me. The
R*dsk*ns cases have caused me to write a law
review article, a book chapter and several op-eds
and blog posts. And although I hope to explore
the international trademark law dimensions of
plain packaging legislation, I took this
opportunity to think about it within the
context of regulating tobacco trademarks under
U.S. law. I was asked to speak on a panel about
speech and trademarks at AIPLA’s 2013 Annual
Meeting and thought it would be fun to contrast
the protection of speech rights in trademark law
with the protection of tobacco trademarks in
speech law. Afterward, I decided to collaborate
with a former student, Kavita DeVaney, to
further develop the thesis.
The paper we have written is titled
“Considering Trademark and Speech Rights
through the Lens of Regulating Tobacco.” We
note that many tobacco company trademarks,
such as MARLBORO, are extremely valuable.
But valuable trademarks are often vulnerable
both to copyists and to parodists. Tobacco
trademarks face the additional vulnerability of
onerous public health regulations, which can
limit their appearance and use. When tobacco
companies challenge these health regulations
they do so on the grounds that the
regulations violate their speech
rights. The law that is applied in
these challenges is well
developed, clear and predictable.
When tobacco companies
challenge third-party uses of their
marks, the speech rights involved
are dealt with in a distinctly
different manner. Under
trademark law there is an
assortment of approaches to
protecting speech therefore making it difficult
to predict outcomes. How can the non-false use
of a trademark be so robustly protected as
speech in one case and so slackly protected in
another? Juxtaposing these areas of law through
the litigation strategies of one industry reveals
curious presuppositions about speech in both
laws.
By Christine Haight Farley. Ms. Farley is a
Professor of Law at American University
Washington College of Law. Professor Farley
served as Associate Dean for Faculty and
Academic Affairs from 2007 to 2011 and as Co-
Director of the Program on Information Justice
and Intellectual Property from 2005 to
2009. She is the author of numerous articles on
intellectual property law and a forthcoming
casebook on international trademark law. She
has recently been selected as a Fulbright Senior
Specialist for intellectual property law.
The Academic Voice
Page 8
Full-Time Professor of the Issue
Professor Graeme Dinwoodie
Graeme Dinwoodie, Professor of Intellectual
Property and Information Technology Law at
the University of Oxford, is the featured faculty
member for the Education Newsletter in this
inaugural issue. Prof. Dinwoodie is a long-time
member of AIPLA and his background,
scholarship, and activities personify the current
recognition of the internationalization of
intellectual property today. As Prof. Dinwoodie
notes, “twenty years ago international
intellectual property law was seen by many as a
niche subject, but it now part of the core
program in most leading schools. This is seen
not only with courses in
international and
comparative aspects of
IP, but in the
discussions than take
place in core domestic
courses: the
international dimension
structures the
development of domestic
law.”
Prof. Dinwoodie was previously professor of law
and director of the Program in IP Law at
Chicago-Kent College of Law and before that
taught at the University of Cincinnati College of
Law and as a visiting professor at the University
of Pennsylvania School of Law. He has also held
a Chair in Intellectual Property Law at Queen
Mary College, University of London. He has
received numerous awards and recognition for
both his teaching and his scholarship. Early in
his career he was an associate with Sullivan and
Cromwell in New York. He holds a First Class
Honors LL.B. degree from the University of
Glasgow, and LL.M. from Harvard Law School,
and a J.S.D. from Columbia Law School.
The emphasis on the international and
comparative aspects of IP is seen in his
scholarship which includes INTERNATIONAL
INTELLECTUAL PROPERTY LAW AND
POLICY (2d ed. 2008) (with Hennessey,
Perlmutter and Austin) as well as in his
numerous professional activities. For example,
he has served as a consultant to the World
Intellectual Property Organization on matters of
private international law, an advisor to the
American Law Institute Project on Principles of
Jurisdiction and Recognition of Judgments in
Intellectual Property Matters, to name a few of
his many engagements. Prof. Dinwoodie is
currently the Past-President of the International
Association for the Advancement of Teaching
and Research in Intellectual Property (ATRIP),
and his role as ATRIP President over the past
two years gave him the opportunity to renew
contacts in Geneva that were first established
when he served on the AIPLA Trademark
Treaties and International Law Committee.
Prof. Dinwoodie has been happy to see the
current emphasis that AIPLA has placed on
international activities and policies and the
interactions with members of the IP community
that have been facilitated by AIPLA and
particularly by the relationship with AIPPI. He
was pleased to see the Education Committee
recognizing the trends towards
internationalization of IP: “Policymakers and
practitioners – especially AIPLA – have long
recognized the importance of viewing our field
through an international lens, and it is
heartening to see the Education Committee
highlight this aspect of the discipline, because it
is equally important for scholars and educators.”
The Academic Voice
Page 9
International Professor of the Issue
Professor Juan Rodrigo Pimentel
Juan Rodrigo Pimentel is a part-time graduate-level Intellectual Property Law Professor at the
Panamerican University, focusing to apply patent, trademark and copyright in real life business
strategies. The topic is IP (patents, trademarks, copyrights), include
basics either for Mexico and internationally via the Patent
Prosecution Highways, the Patent Cooperation Treaty Office, the U.S.
Patent and Trademark Office, the European Patent Office, and the
Madrid Protocol System. He has also authored case studies to
identify how to apply these figures in the real life business. He
recently published an article covering patent metrics.
Professor Pimentel is also the head of the Patent Prosecution
Department at Arochi & Lindner’s office in Mexico City. He has over
ten years of experience in the intellectual property field. He consults clients on patent project
management, product development, patent portfolio management, technology transfer and patent
metrics.
Upcoming Events
Professor Adam Mossoff from George Mason University School of Law, Arlington, VA, will
moderate a panel during Track 1 of the 2014 AIPLA Annual Meeting in Washington, D.C. on
Friday, October 24, 2014, from 2:00 p.m. to 3:30 p.m. on the topic of “Litigation: Reliance on
Invalidity Opinions in Litigation; The Contributions of NPEs and PAEs to Patent Litigation.”
Professor Wendy J. Gordon from Boston University School of Law, Boston, MA, will also speak
during the 2014 AIPLA Annual Meeting on Friday, October 24, 2014, from 3:30 p.m. to 5:30 p.m.
on “Separability Analysis in Design Copyrights – Time for a Permanent Change.”
Please join the AIPLA Education Committee at the first inaugural Law School Alumni
Reception at the 2014 Annual Meeting! The Reception will take place on October 24, 2014 from
6:30 p.m. to 7:30 p.m. Please see the last page of the Newsletter for more information.
• One 6-foot table to display materials representing your school• Sponsor name in Annual Meeting Program and event signage• Sponsor Ribbons• Sponsorship listing on the AIPLA website• Recognition in Annual Meeting eBulletin (online circulation 15,000)• Recognition at Thursday Luncheon• Ability to send email invitation to alumni & students
• (list must be provided to AIPLA)
• Shared 6-foot table to display materials representing your school with at least one other school
• Sponsor name in Annual Meeting Program and event signage• Sponsor Ribbons• Sponsorship listing on the AIPLA website• Recognition in Annual Meeting eBulletin (online circulation 15,000)• Recognition at Thursday Luncheon• Ability to send email invitation to alumni & students
• (list must be provided to AIPLA)
$1,000 • One 6-foot table to display materials representing your school• Sponsor name in Annual Meeting Program and event signage• Sponsor Ribbons• Sponsorship listing on the AIPLA website• Recognition in Annual Meeting eBulletin (online circulation 15,000)• Recognition at Thursday Luncheon• Ability to send email invitation to alumni & students
• (list must be provided to AIPLA)
$500 • Shared 6-foot table to display materials representing your school with at least one other school
• Sponsor name in Annual Meeting Program and event signage• Sponsor Ribbons• Sponsorship listing on the AIPLA website• Recognition in Annual Meeting eBulletin (online circulation 15,000)• Recognition at Thursday Luncheon• Ability to send email invitation to alumni & students
• (list must be provided to AIPLA)
Sponsorship Level: Benefits:
AIPLA’s Education Committee presents:
at the 2014 Annual Meeting October 24 6:30–7:30 pm
donate. mingle. network.
reconnect.
The reception provides an opportunity for IP practitioners to reconnect with fellow alums
and students from various Law Schools, as they
mingle and network at AIPLA’s Annual Meeting
and continue development of their respective
alumni network.
It’s an IP Reunion!*
*While registration for the Annual Meeting is not required for alumni, law professors, or law students of sponsoring law schools to attend the Reception, it is strongly encouraged.
Annual Meeting registration costs for law professors and law students are significantly discounted to ensure cost is not a barrier to attendance, and that these groups are able to receive the full benefit of AIPLA’s educational programs.
The First Inaugural
Law School Alumni Reception
Visit www.aipla.org/learningcenter/AM2014/pages for more information