Trademark and Copyright Enforcement in the Shadow of IP Law

In recent years, as Congress has created new intellectual property (IP) rights and courts have often interpreted those rights broadly, legal scholars have frequently decried the expanded scope of protection afforded IP owners in most substantive areas of IP law. According to this critique, the over-expansion of IP rights throughout the past two decades harms competition, chills free speech, and diminishes the public domain as increasingly broad areas of social life are brought within the scope of strong IP protection. While this over-expansion theory reflects an important—indeed, foundational—policy debate concerning the proper balance between IP owners’ rights and the public’s rights of access to the information, ideas, and expressions that IP protects, it is incomplete because it focuses largely on what Congress or the courts do. In reality, most enforcement of IP rights takes place not in court, but in the everyday practices of IP owners and their lawyers. “Cease and desist” letters, phone calls, and negotiations with alleged infringers constitute the bulk of IP enforcement efforts in trademark and copyright practice. To be sure, these efforts take place in the “shadow” of IP law and are therefore influenced by it. But it is in these everyday practices—and not in trial or appellate courts—that most IP rights are asserted, resisted, and negotiated. Thus, if we want to know whether IP rights are over-enforced or over-extended, we need to know how, why, and to what effect these rights are exercised in the everyday practices of IP owners and their lawyers. To date, however, IP scholarship has focused virtually no attention on this critical arena of everyday practice. This Article presents findings from a qualitative empirical study of the trademark and copyright disputing process outside of court, based on original data derived from semi-structured interviews with experienced IP attorneys who advise clients on how to enforce their rights. This research is one of the first studies to examine how trademark and copyright claims are actually enforced in practice. One significant finding from this study is that “repeat player” trademark and copyright owners (and their lawyers) knowingly assert weak IP claims at times—precisely because it works, as enforcement targets are unable or unwilling to resist claims that may lack legal merit due to the costs and uncertainties of threatened litigation. Moreover, the lawyers who assert weak IP claims have ready practical and ethical justifications for their actions. This study also suggests that legal sanctions directed at deterring over-reaching IP enforcement are unlikely to be effective because most such over-reaching occurs in informal disputing processes outside of the legal system

Review of Judging Credentials: Nonlawyer Judges and the Politics of Professionalism by Doris Marie Provine

Doris Marie Provine\u27s Judging Credentials is a provocative work that draws on and furthers the critical approach to the study of professions. The book is a study of judges in lower courts of limited jurisdiction who are not lawyers, a group of considerable size. There are over 13,000 of them in the United States. In this work Provine examines the legal profession\u27s assertion that these judges are inferior to judges who are lawyers. Contrary to both professional claims and popular belief, Provine argues that lay judges in America\u27s lower courts perform as well as their lawyer counterparts. Her conclusions derive from extensive original survey data as well as from a thorough analysis of the pertinent literature on lay judges. Provine argues that although characterizations of lay judges\u27 incompetence are empirically unsubstantiated, they nevertheless reveal much about the political and cultural control exerted by professions. Provine\u27s work demystifies lawyers\u27 mandate for monopoly control over judgeships, and it challenges professional ideology while simultaneously exposing its considerable force in contemporary society

IP Legal Ethics in the Everyday Practice of Law: An Empirical Perspective on Patent Litigators

This article presents preliminary findings from a qualitative empirical study of patent litigators. Part of a larger and ongoing project studying intellectual property lawyers in patent, trademark, and copyright enforcement and litigation actions, this article focuses on ethical decision-making by patent litigators in the pretrial discovery process. The article is based on data from in-depth, semistructured interviews with fifty-five patent litigators and from a detailed case study of the infamous Qualcomm patent sanctions case. The article critically examines how patent litigators perceive of and respond to ethical issues that arise in the discovery process. It also analyzes the structural and cultural factors that influence ethical decision-making, as patent litigators navigate the multiple and often conflicting demands made throughout the discovery process by clients, firms, colleagues, and ethical rules. A significant finding from this study is that the threat of Qualcomm-like discovery sanctions is largely irrelevant to the everyday practice of patent litigators and has had little effect on their ethical decision-making. To-date there are few empirical studies of intellectual property lawyers or of legal ethics “in action.” This study begins to fill that gap

14th Annual Recent Developments in IP Law and Policy Conference

14th Annual Recent Developments in IP Law and Policy ConferenceGolden Gate University School of LawProgram Schedule October 30, 2015 Room 220

Book Review: The Oxford Handbook of Empirical Legal Rearch

The Oxford Handbook of Empirical Legal Research, edited by Peter Cane and Herbert M. Kritzer, is an excellent scholarly resource that is especially timely given the recent resurgence of interest by (mostly) legal academics in the empirical study of law. As the editors suggest, it is precisely because of this resurgent interest that it is important to understand contemporary empirical legal research in the context of its historical and institutional roots and in light of ongoing scholarly debate about the most appropriate methodologies for conducting this type of research

15th Annual Recent Developments in IP Law and Policy Conference

Program booklet for the 15th Annual Recent Developments in IP Law and Policy Conference at Golden Gate University School of Law. Program: Registration/Check-in 8:30 – 9:00 2nd floor lobby Welcoming Remarks 9:00 – 9:15 - Director William Gallagher - University President David Fike Patent Law Year in Review 9:15 – 10:15 - Justin Beck (Beck, Bismonte & Finley LLP) - Brian Mitchell (Mitchell & Company) Morning Break 10:15 – 10:30 Trademark Law 10:30 – 11:30 Thomas Harvey (Coblentz, Patch, Duffy and Bass, LLP) Privacy Law 11:30 – 12:30 Adam Sand (Shopkick.com) Lunch 12:30 – 1:45 Pick up lunch in 2nd floor. lobby Keynote Presentation 1:45 - 2:45 John Cabeca (Director, Silicon Valley U.S. Patent and Trademark Office) Afternoon Break 2:45 – 3:00 How to Keep a Secret 3:00 – 4:00 Amy Van Zant (Orrick LLP) Careers in IP Law (Panel) 4:00 – 5:00 - Moderator: Eric Gelwicks (LiveNation) - David Murphy (Kabam) - Geoff Piper (Box) - Kiffanie Stahle (Stahle Law and The Artist\u27s JD) - Michael Sutliffe (Blakely Sokoloff Taylor & Zafman LLP) Closing Remarks 5:00 – 5:15 Director William Gallagher Post-conference Reception 5:15 – 7:00 Room 621

15th Annual Recent Developments in IP Law and Policy Conference

Program booklet for the 15th Annual Recent Developments in IP Law and Policy Conference at Golden Gate University School of Law. Program: Registration/Check-in 8:30 – 9:00 2nd floor lobby Welcoming Remarks 9:00 – 9:15 - Director William Gallagher - University President David Fike Patent Law Year in Review 9:15 – 10:15 - Justin Beck (Beck, Bismonte & Finley LLP) - Brian Mitchell (Mitchell & Company) Morning Break 10:15 – 10:30 Trademark Law 10:30 – 11:30 Thomas Harvey (Coblentz, Patch, Duffy and Bass, LLP) Privacy Law 11:30 – 12:30 Adam Sand (Shopkick.com) Lunch 12:30 – 1:45 Pick up lunch in 2nd floor. lobby Keynote Presentation 1:45 - 2:45 John Cabeca (Director, Silicon Valley U.S. Patent and Trademark Office) Afternoon Break 2:45 – 3:00 How to Keep a Secret 3:00 – 4:00 Amy Van Zant (Orrick LLP) Careers in IP Law (Panel) 4:00 – 5:00 - Moderator: Eric Gelwicks (LiveNation) - David Murphy (Kabam) - Geoff Piper (Box) - Kiffanie Stahle (Stahle Law and The Artist\u27s JD) - Michael Sutliffe (Blakely Sokoloff Taylor & Zafman LLP) Closing Remarks 5:00 – 5:15 Director William Gallagher Post-conference Reception 5:15 – 7:00 Room 621

Book Review: The Oxford Handbook of Empirical Legal Rearch

The Oxford Handbook of Empirical Legal Research, edited by Peter Cane and Herbert M. Kritzer, is an excellent scholarly resource that is especially timely given the recent resurgence of interest by (mostly) legal academics in the empirical study of law. As the editors suggest, it is precisely because of this resurgent interest that it is important to understand contemporary empirical legal research in the context of its historical and institutional roots and in light of ongoing scholarly debate about the most appropriate methodologies for conducting this type of research

15th Annual Recent Developments in IP Law and Policy Conference

Program booklet for the 15th Annual Recent Developments in IP Law and Policy Conference at Golden Gate University School of Law. Program: Registration/Check-in 8:30 – 9:00 2nd floor lobby Welcoming Remarks 9:00 – 9:15 - Director William Gallagher - University President David Fike Patent Law Year in Review 9:15 – 10:15 - Justin Beck (Beck, Bismonte & Finley LLP) - Brian Mitchell (Mitchell & Company) Morning Break 10:15 – 10:30 Trademark Law 10:30 – 11:30 Thomas Harvey (Coblentz, Patch, Duffy and Bass, LLP) Privacy Law 11:30 – 12:30 Adam Sand (Shopkick.com) Lunch 12:30 – 1:45 Pick up lunch in 2nd floor. lobby Keynote Presentation 1:45 - 2:45 John Cabeca (Director, Silicon Valley U.S. Patent and Trademark Office) Afternoon Break 2:45 – 3:00 How to Keep a Secret 3:00 – 4:00 Amy Van Zant (Orrick LLP) Careers in IP Law (Panel) 4:00 – 5:00 - Moderator: Eric Gelwicks (LiveNation) - David Murphy (Kabam) - Geoff Piper (Box) - Kiffanie Stahle (Stahle Law and The Artist\u27s JD) - Michael Sutliffe (Blakely Sokoloff Taylor & Zafman LLP) Closing Remarks 5:00 – 5:15 Director William Gallagher Post-conference Reception 5:15 – 7:00 Room 621