The Volokh Conspiracy

The Supreme Court today issued its much-awaited decision in the Myriad Technologies case.  At issue in the case were Myriad’s patents on  the BRCA1 and BRCA2 genes — genes which are important genetic markers for determining susceptibility to breast cancer.  Myriad discovered “the precise location” of the two genes (on chromosomes 17 and 13), and sequenced the two genes to determine the precise nucleotide pattern in each.  That information, in turn, enabled Myriad to develop medical tests that are useful for detecting mutations in a patient’s BRCA1 and BRCA2 genes and thereby assessing whether the patient has an increased risk of cancer.  Because of the patents, Myriad claimed the “exclusive right to isolate an individual’s BRCA1 and BRCA2 genes” — that is, the exclusive right to perform these diagnostic tests, because isolating the gene in any individual constituted an  infringement of their patent.

Myriad also had patents covering the so-called “cDNA” — composite DNA.  These are nucleotide strands derived from the genes, but not identical to them; the cDNA for the BRCA1 gene consists of only those portions of the gene  (the “exons”) that are used during the process of protein production, and it omits the non-coding portions of the original gene (“introns”).

The Court (9-0, opinion by Thomas) invalidated Myriad’s patents on the genes themselves, because Myriad had not “created” anything but had rather  ”discovered” the naturally-occurring characteristics (location and sequence) of the genes in question:

It is undisputed that Myriad did not create or alter any of the genetic information encoded in the BRCA1 and BRCA2 genes. The location and order of the nucleotides existed in nature before Myriad found them. Nor did Myriad create or alter the genetic structure of DNA. Instead, Myriad’s principal contribution was uncovering the precise location and genetic sequence of the BRCA1 and BRCA2 genes within chromosomes 17 and 13. . . . To be sure, it found an important and useful gene, but separating that gene from its surrounding genetic material is not an act of invention. Groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the §101 inquiry.

The cDNA, however, is patentable, because it does not exist as such in nature, and is therefore the product of human invention:

cDNA does not present the same obstacles to patentability as naturally occurring, isolated DNA segments. As already explained, creation of a cDNA sequence from mRNA results in an exons-only molecule that is not naturally occurring. Petitioners concede that cDNA differs from natural DNA in that “the non-coding regions have been removed.” They nevertheless argue that cDNA is not patent eligible because “[t]he nucleotide sequence of cDNA is dictated by nature, not by the lab technician.” That may be so, but the lab technician unquestionably creates something new when cDNA is made. cDNA retains the naturally occurring exons of DNA, but it is distinct from the DNA from which it was derived. As a result, cDNA is not a “product of nature” and is patent eligible under §101 [of the Patent Act].

All well and good.  I think the Court got it right on this one — I have never understood the contortions that were required to allow naturally-occurring genetic material, without alteration in its composition, to be patented, and I’m glad the Court shares that view.

There was only one Justice writing separately — Justice Scalia, whose opinion concurring in part and concurring in the judgment reads in its entirety as follows:

I join the judgment of the Court, and all of its opinion except Part I–A and some portions of the rest of the opinion going into fine details of molecular biology. I am unable to affirm those details on my own knowledge or even my own belief. It suffices for me to affirm, having studied the opinions below and the expert briefs presented here, that the portion of DNA isolated from its natural state sought to be patented is identical to that portion of the DNA in its natural state; and that complementary DNA (cDNA) is a synthetic creation not normally present in nature.

I don’t mean to pick on Justice Scalia, but I’m genuinely confused by this.  On the one hand, this case is all about  ”fine details of molecular biology,” like it or not; the differences between cDNA and ordinary DNA are details of molecular biology and are at the heart of the case.  Why is this case different from one where, say, the Court has to understand the intricacies of inter-bank money transfer practices and processes in order to render its decision – I’ve never seen Justice Scalia distance himself from the “details” of those (very complicated) matters.

And more troubling:  does this mean that in all of the other opinions to which Justice Scalia lent his name he was “affirm[ing] the details on my own knowledge or even my own belief”??  Here’s some language from an earlier patent case this term, Bowman v. Monsanto, from Justice Kagan’s opinion for the Court (which Scalia joined without additional comment):

Respondent Monsanto invented a genetic modification that enables soybean plants to survive exposure to glyphosate, the active ingredient in many herbicides (including Monsanto’s own Roundup). Monsanto markets soybean seed containing this altered genetic material as Roundup Ready seed. Farmers planting that seed can use a glyphosatebased herbicide to kill weeds without damaging their crops. Two patents issued to Monsanto cover various aspects of its Roundup Ready technology, including a seed incorporating the genetic alteration. . . . Because glyphosate resistance comes from the seed’s genetic material, that trait is passed on from the planted seed to the harvested soybeans: Indeed, a single Roundup Ready seed can grow a plant containing dozens of genetically identical beans, each of which, if replanted, can grow another such plant—and so on and so on.

Inamsuch as Scalia didn’t qualify his position in that case, is he “affirming” all of those details?  On what basis?  And if so, what makes molecular biology different from seed biology?  I don’t get it.

Eugene has a somewhat different take on Justice Scalia’s now-infamous footnote than I did . . . He writes

[M]y sense is that the footnote is just a somewhat indirect way to remind lawyers of a useful rule of brief writing — always decode any abbreviations that you use.

Of course, as David points out, it’s not hard for readers to figure out what most abbreviations stand for, with just a bit of research, and the name of the association isn’t that critical in this case in any event. But I take Justice Scalia’s point to be that lawyers shouldn’t put judges to the trouble of doing that research. If you use an abbreviation that your reader is unlikely to know, or for that matter any specialized term that your reader is unlikely to know, make it easy on the reader: define it up front. And don’t just assume that the definition doesn’t matter; the reader of your brief might not share your view. In this case, for instance, a reader might think that understanding what the organization calls itself (especially when it’s a young organization, whose original full name isn’t shrouded in the mists of antiquity) might give him a better picture of the case, and might be annoyed that no decoding was given.

Well, I certainly agree with that “useful rule” — always decode abbreviations just in case you’re reader doesn’t know them.  If you’re talking about the DMCA, or ISPs, or SOPA, or the VAT, or NSAID drugs, or the POSITA, or . . . tell the reader what you mean.

But I do think that an abbreviation in a party’s name calls for relaxing that rule – unless for some reason it actually matters for the case.  WRKO, Inc. v. FCC — would we expect the lawyers to tell the court that “RKO” was chosen because it stands for “Radio Kingdom of Ohio,” or “Rachel Kelleher O’Brian,” or “Random Kowtowing Operaphiles”?  And would it be appropriate for the court drop a footnote like Scalia’s if the lawyers didn’t  explain its origins?   Does Exxon, Inc. have to explain where its name came from?  [And, to satisfy the judges, how to pronounce it?!**]

Though I don’t want to make more of this than one should make of it, I do think there’s a point of some importance here.  The rule that trumps Eugene’s “useful rule” is: you can call yourself whatever you  please,  for reasons you want to make public or for reasons you don’t want to make public or for no reason at all.  It’s just none of the court’s business – unless it has some relevance to the issues raised in the case.

So I received a few interesting responses from readers to my post on Justice Scalia’s silly footnote in City of Arlington v. FCC.  First, Jacob Gershman over on wsj.com writes:

Hmm ... I hadn’t thought of that angle, to be honest; but this is hardly a case that raises any real ethical concerns, I wouldn’t think.  I would not think that it would be inappropriate for a Justice to consult a dictionary, or a book on English grammar, before submitting an opinon; nor is it inappropriate to take “judicial notice” of everyday events.  I would think a judge could write, in a case in which, say, Time-Warner Inc. was a party, something about the large office building T-W owns at Columbus Circle in New York, even if that fact were not in the official record of the case.  If the party’s name bore the SLIGHTEST significance for the case, I might agree that there’s a line to be drawn – but this was entirely gratuitous on Scalia’s part; HE raised the “issue,” and I think it’s incumbent upon him to check his facts so that he doesn’t end up looking like a bit of a dope.

Facts about language, the law, and the world (untethered to the specific facts giving rise to the litigation) — all these a judge might (and should) research beyond the record. But here — in this Supreme Court case — the fact is about a party to the litigation. It is the party’s name. I do not think a judge can look beyond the record because the parties already have an obligation to list their names on the docket (and in the pleadings) and if the parties are not forthcoming in regard to their own name, then the filing can be contested by their adversaries.Indeed, I have seen judges throw cases out sua sponte where a party tried to bring litigation under an assumed name or anonymously (absent putting forward facts supporting good cause). Scalia has a right to expect that by the time litigation reaches him, the record will already clearly reflect the names of the parties. If it does not, then something is really wrong with the system.

Imagine if a civil action goes to final judgment, and then after a monetary award is granted to the prevailing party, the non-prevailing party states that an affiliate or subsidiary with a similar name was the (judgment proof) defendant and the parent refuses to pay up. Then you need a whole collateral case to determine who was the non-prevailing party in the first action. That’s just not on; the system cannot work that way. Litigation must end. We have to know who the parties are before the court during the actual litigation and not discover that important fact afterwards in follow up litigation.

Your characterizing a party’s name as not connected to the facts giving rise to the case may be true. But who you sue or fail to sue is a strategic decision (and it may be a strategic failure). A party might not clarify its name or its status (corp, llp, llc, etc) for strategic reasons — and Scalia cannot on his own figure out who the party is before him based on ... what his clerks find on the internet. I practiced in Delaware for a few years and I cannot remember any case where a court of record clarified the status of a party by requesting official documents from Delaware records or archives or maintained by the Secretary of State’s office (which maintains info on whether a business entity is in good standing). All that must be put forward by the parties.

It was the lawyers and the lower courts which seriously failed here.
In my view, Scalia’s comments were far too kind.

Stuart and Jonathan have both commented on the legal analysis in today’s City of Arlington v. FCC opinion from the Supreme Court, about which I have nothing to say.  I want to direct your attention to footnote 1 in Justice Scalia’s opinion for the majority.  He has just introduced one of the parties, “CTIA-The Wireless Association,” and in the footnote he continues:

“This is not a typographical error. CTIA—The Wireless Association was the name of the petitioner. CTIA is presumably an (unpronounceable) acronym, but even the organization’s website does not say what itstands for. That secret, known only to wireless-service-provider insiders, we will not disclose here.”

This is a really embarrassing bit of nonsense — smarmy and snarky and extraordinarily stupid.

First:  0.45 seconds of work reveals that CTIA originally stood for the “Cellular Telephone Industry Association.”  It’s not a big mystery, “known only to wireless-service-provider insiders”: that’s what it says on the organization’s Wikipedia page.  So Scalia’s footnote communicates, to me, that he has never heard of “the Internet” and the very amazing things called “search engines” that let you “retrieve information” very, very quickly

And why that snarky remark about how it’s unpronounceable?  Let’s see ... can Justice Scalia pronounce “FBI”?  (here’s a hint: “eff-bee-eye”).  DHS?    KLM Airlines?

If this were a student paper, I’d circle this and write something like:  “Really bad footnote – why highlight your own cluelessness in the very first footnote.”  From the Supreme Court, it’s really a bit embarrassing.  Reminds me, again, of what Justice Jackson said many years ago:  We’re not final because we’re infallible, we’re infallible because we’re final.

[Thanks to Peter Shane for the pointer]

Back last fall, I suggested (here, and here) that there appeared to be some movement among the Republicans to take on the mantle of “Internet freedom/innovation” as a political position, both because it is an issue on which the Democrats, with their hands deep into Hollywood’s pockets and vice versa, are very vulnerable, and because it might be a way of salvaging the votes of an entire generation that they’re on the verge of losing completely.

More evidence that something is afoot:  First, there’s the “Internet governance” bill making its way through the House, containing little more than a simple statement of policy: “It is the policy of the United States to preserve and advance the successful multistakeholder model that governs the Internet.”  The bill was passed out of the relevant Subcommittee on a straight party-line vote, strangely enough . . .

And now Bob Goodlatte (R-VA), chairman of the House Judiciary Committee, has announced that the Committee will conduct a “wide review of our nation’s copyright laws and related enforcement mechanisms,” involving a “comprehensive series of hearings on U.S. copyright law in the months ahead [whose] goal will be to determine whether the laws are still working in the digital age.”  I’m not sure exactly what he has in mind – but if the Republicans are smart, they’ll get on the right side (and the Republican Study Committee itself has provided a good blueprint on that) of this issue.

David Bollier and John Clippinger have an extremely interesting short essay on “The Next Great Internet Disruption: Authority and Governance” that is well worth reading.  They start from Reed’s Law:

When we look back on the past twenty years of Internet history, we can more fully appreciate the prescience of David P. Reed’s seminal 1999 paper on “Group Forming Networks” (GFNs).  “Reed’s Law” posits that value in networks increases exponentially as interactions move from a broadcasting model that offers “best content” (in which value is described by n, the number of consumers) to a network of peer-to-peer transactions (where the network’s value is based on “most members” and mathematically described by n²).  But by far the most valuable networks are based on those that facilitate group affiliations, Reed concluded.  When users have tools for “free and responsible association for common purposes,” he found, the value of the network soars exponentially to 2ⁿ – a fantastically large number.   This is the Group Forming Network.  Reed predicted that “the dominant value in a typical network tends to shift from one category to another as the scale of the network increases.…”

It’s a little geeky, yes – [and, if you're interested, I've got a somewhat longer and, I think, reasonably intelligible discussion in chapter 3 of  my book, here] — but I’ve long thought and still believe that it embodies a principle of the highest significance in understanding what the Net is and what it might become.  As I’ve said ad nauseum over the years to anyone who will listen, the Internet is, in a most important sense, entirely a phenomenon of large scale;  it is different from the hundreds of thousands or millions of other networks and inter-networks and inter-inter-networks out there in the world solely because of its enormous size.  Size matters, because (Reed’s Law) value of a network enabling peer-to-peer connectivity scales exponentially with the number of members of the network — as it gets bigger, it gets (a lot) more better; as it gets better, more people want to join;more people want to join; as more people join, it gets bigger; . . . and so on.

The Internet mastered peer-to-peer communication pretty early on – with the development of the various email, instant messaging, and ultimately P2P file-sharing, protocols.  And it did, indeed, keep getting bigger and bigger, and more and more attractive to new entrants, . . .

But Reed’s Law shows that in GFNs – group-forming networks, networks that allow users to form groups of any size, from 2 to the number of machines on the network  – value scales much, much more rapidly as the network gets bigger; hyper-geometrically, the mathematicians call it.

[To give you an idea, here’s a little table showing the difference between something growing exponentially (fast) and something growing hyper-geometrically (really, really, fast).
N                exponential scaling (N²)       hyper-geomteric scaling (2^N)

1                       1                                                 2
10                    100                                            1024
50                   2,500                                        1,125,899,907,000,000
100                 10,000                                      126,765,600,000,000,000,000,000,000,000

You get the idea.
The Internet has only just begun — with the development of applications like Facebook, Twitter, and Wikipedia — to realize the power of GFNs, and the success of those platforms is due in significant measure to their ability to enable each user to form (and/or become part of) diverse groups of enormously varying sizes.  One thing I can promise you:  the group-forming capabilities of these applications will look hilariously primitive in 5 to 10 years.

What does this have to do with Internet governance? A great deal, and possibly everything.  Governance is nothing more (or less) than the processes through which groups articulate norms and rules that are binding on their members, and their policies and procedures for dealing with other groups.  With a more robust ecosystem of group-formation tools at our disposal, it is easier to imagine, in Bollier and Clippinger’s words, “the emergence of new sorts of effective, quasi-autonomous governance and self-provisioning” on the Net — that could achieve both greater legitimacy than territorially-based governance institutions (because they could be much more closely aligned with each individual’s voluntary consent to abide by the rules) and which could be more effective, in the a-territorial networked world, at dealing with harmful conduct that institutions whose powers are territorially defined.

And, as I’ve said many times before, imagining it is the first step towards its realization – necessary (though not sufficient).

Thanks for David Johnson for the pointer.

Update:  Reader Samuel East has set my terminology straight, for the record:

The insight is correct, but unfortunately the terminology isn’t: N^2 growth is polynomial (not exponential), and 2^N growth is exponential or geometric (same thing, but not “hyper-geometric” or “hyper-exponential”). Wikipedia’s page on Big O Notation has a useful chart (buried under a pageful of math-ese, naturally). Anyhow, group-forming behavior actually is factorial (one could accurately describe it as “hyper-geometric”). So for accuracy, 2^N is actually a bit small:

N    N^2     N! (factorial)
1    1       1
10   100     3,628,800
50   2,500   3.04*10^64
100  10,000  9.33*10^157

British conductor Colin Davis died this past Sunday, age 85.  Davis was an extraordinarily gifted musician – to my ears, the greatest conductor of the last 30 years* (the one possible exception: James Levine).  He holds a special place in my affections because he “taught” me what conductors do, and how important they are.  In ’79 or ’80, my wife and I saw him conduct the Boston Symphony in a performance of Berlioz’ Symphony Fantastique at Tanglewood.  Just coincidentally, 2 weeks earlier, in NYC, I had heard a performance of the same piece by a conductor whose name I won’t reveal — turgid, plodding, and a real snore.  As that was the first time I had ever heard the piece, I (naturally, and stupidly) thought it meant that the piece was turgid, plodding, and a real snore.  Then we heard what Davis and the BSO could do with it.  To this day, it remains the most electrifying orchestral performance I’ve ever heard.  It hit me – that was his instrument! The whole orchestra was his instrument!  He was like a great pianist making a piece come alive, but with an instrument that was 1000 times more complex, with 1000 times more variations in color, and texture, and sound.  He built up a tension over the course of the 40 minutes or so that was damn near unbearable.  I distinctly remember the feeling at the very end – our seats were up towards the front, but somehow you just knew that there were four or five thousand people sitting behind you who were going to erupt the moment the piece was over.  And so it was – it was as though the entire audience had hot pokers applied to their asses at the last chord, every single person in the hall leapt to his/her feet, all of that pent up energy released at last.  I’ve been to fabulous live performances by, among others, Dylan, the Band, the Stones, Springsteen & the E Street Band, Joplin, Hendrix, The Police, . . . . but I can’t remember anything topping that moment.

* There are lots and lots of great Davis recordings, needless to say – my own favorites: the Sibelius Symphonies, and his indescribably delicious Cosi Fan Tutte.

ATX Brands LLC, which owns Bikinis Sports Bar and Grill (in Bikinis, TX), has obtained a federal trademark for the mark “Breastaurant” in connection with “restaurants and bars.”  [I was hoping that this Yahoo story got it wrong somehow - but I checked at the Trademark Office site, and indeed, the term has been registered as a trademark.]

It’s a nice, textbook example of something that does not get trademark protection.  There is a fundamental principle of trademark law:  generic terms — terms that define a class of goods or services — can never get trademark protection.

Here’s the article from Yahoo News:

While Hooters, Twin Peaks, the Tilted Kilt and other chain restaurants that feature bodacious waitresses in skimpy outfits have been called “breastaurants” for years, the owner of the Texas-based Bikinis Bar and Grill is the first to make it official.  Doug Guller, CEO of ATX Brands LLC, which owns Bikinis Sports Bar and Grill, announced today he has trademarked the term “breastaurant” through the United States Patent and Trademark Office, meaning his company is the only one who can describe itself with the term.

“We’re really excited about receiving this federal trademark,” Guller said in a statement. “Our team has worked hard over the last seven years to offer a unique experience to our fans. It just further solidifies that Bikinis Sports Bar & Grill is America’s ONLY breastaurant.” . . . 

The trademark is a major move in the “breastaurant” industry. . . . Breastaurants are $1 billion-plus industry, and places like Twin Peaks, the Tilted Kilt, Bone Daddy’s and others are in a heated fight to knock the reigning breastaurant king, Hooters,off its throne.. . . Also competing is Canz, a New York-based roadhouse-themed sports bar that did what many would consider to be impossible. It successfully launched in the middle of the recession and the customers came flocking in. “Our profits ranged a little over $2 million in our first year in 2008 and showed great signs of growth,” said Canz owner Tim Lorito.  Three restaurants later, Lorito said, the formula or sports, beer and, of course, lots of young ladies — waitresses wear tight black tanks and jean shorts — is working.”I think being a great breastaurant goes hand in hand with being a great sports bar,” Lorito said. “I think the atmosphere that that creates gives us an advantage over any other of our competitors.”

That’s five separate uses of the word “breastaurant” in its generic sense — to describe a class of restaurants.  It is not being used to distinguish one restaurant from another (the real function of a trademark).  EVEN THE TRADEMARK OWNER USES THE TERM IN ITS GENERIC SENSE:  When Guller says “Bikinis Sports Bar is America’s ONLY breastaurant” he’s using a (trademarkable) identifier for his restaurant (“Bikinis Bar and Grill”) and saying that it is a member — indeed, the only member — in this particular class of restaurants (“breastaurants”).

That is a textbook generic identifier.  How in Heaven’s name this could have slipped by the Trademark Office is completely beyond me.

[Thanks to R. Vesprey for the pointer]

Here’s an interesting case:  Someone posts a video on YouTube showing State Rep.Tarah Toohil (R PA) as a young woman smoking what appears to be a bong and about to kiss a woman sitting nearby.  Rep. Toohil acknowledges that she is the young woman in the video, but in  a video response says “I am not that young woman today,” and denouncing this “blatant and personal attack on me as a legislator ...”

So far so good.  But next, “Anonymous” posts a video, just before election day, urging Toohil to change her position on legalization of marijuana or else face additional “exposure” of her “secrets.”

It featured an image of an empty suit, with a question mark in place of a head, as well as a montage of the black-and-white Guy Fawkes masks that were popularized by the film V for Vendetta and that have become a symbol for protests such as the Occupy movement.  The 85-second video borrowed the slogan of Anonymous, the elusive hackers who have taken on everyone from the Church of Scientology to banks: “We are Anonymous. We are Legion. We do not forgive, we do not forget. Expect us.” The voice-over, female and British-accented, said the “legions” were disappointed by Toohil’s response to the surfacing of photos showing her with what appeared to be marijuana. The voice demanded she support decriminalizing the drug – or else. “Everyone has secrets,” the voice intoned. “Please do not give us a reason to expose yours.”

The PA State police is investigating this as a possible felony.  The Phil. Inquirer story quotes George Parry, a Philadelphia defense lawyer and former state and federal prosecutor, who said, after reviewing the “secrets” video, that “on its face, it could constitute criminal conduct in that it aims to sway a legislator.

“This appears to be an attempt to influence legislative action . . . a threat to cause harm to this legislator’s reputation,” he said. “And I think that has broader social implications than just a private citizen being subjected to blackmail.”

I must say, I wonder about this.  Surely it can’t be enough to “threaten to cause harm to a legislator’s reputation” to land one in prison — that,surely, is what newspapers and bloggers do all the time, and is at the core of what the First Amendment is designed to protect; a legislator’s “reputation” surely being a matter of the most significant public concern.  I take it we would all agree that the law does not (and could not, consistent with the first Amendment), prohibit me from walking into Rep Toohil’s office and saying:

1.  “Rep Toohil, if you don’t change your position on legalization of marijuana, I am going to urge all my friends to vote against you.”

2. “Rep Toohil, if you don’t change your position on legalization of marijuana, I am going to publish the paper I have written, analyzing your votes in the legislature and showing that you are a closet Liberal.”

3  “Rep Toohil, if you don’t change your position on legalization of marijuana, I am not going to give you that $10,000 contribution I was planning to give your campaign committee.”

4.  “Rep Toohil, if you don’t change your position on legalization of marijuana, I’m going to attack you in every forum I can to try to get you defeated at the polls.”

And I take it we would all agree that if I were to say:

“Rep Toohil, if you don’t change your position on legalization of marijuana,I’m going to kidnap your daughter and/or set your house on fire”

Pennsylvania can and would throw me in jail.

This case, then, does seem to fall into a rather interesting middle ground:

“Rep Toohil, if you don’t change your position on legalization of marijuana, we are going to reveal true facts about you that you would rather not have revealed.”

Is that — can that be — a criminal offense?  Without (a) any threat of physical harm or (b) any demand for payment in exchange for withholding the “secrets”?

The Court’s opinion in the Kirtsaeng v. John Wiley case, which came out on Tuesday, has some interesting fodder for those looking for glimpses of how copyright law is evolving these days.  The case centered on a hyper-technical question involving three interlocking statutory sections in the Copyright Act (I blogged about it in some detail here and won’t repeat that earlier dissection of the complicated statutory issues) with some quite significant real-world implications.

The basic question was this:  can Mr. Kirtsaeng purchase a copy of a John Wiley textbook that was lawfully manufactured (i.e., with the permission of the copyright owner) overseas, bring that copy into the United States, and re-sell it?  Copyright law clearly permits you to re-sell lawfully-manufactured books purchased here in the United States.  It also (thanks to the Court’s decision in the Quality King case a few years ago) permits you to re-sell books that you may have purchased overseas but which were manufactured here in the US.  The question here was whether re-sale right (the so-called “first sale doctrine”) applies to copies purchased and manufactured overseas and imported into the US.

Wiley argued that it didn’t – that the Copyright Act, which gives the re-sale right (in sec. 109(a)) only to the “owners of copies lawfully made under this title,” (i.e., Title 17 of the US Code, the US Copyright Act) imposes a geographical restriction on the re-sale right.  Copies are “lawfully made under this title,” Wiley argued, if they are “made in territories in which the Copyright Act is law” (i.e., the United States).

The Court – in a utterly brilliant opinion by Justice Breyer, a minor classic of the “here are all the reasons why my arguments are better than yours” school of opinion-writing — rejected Wiley’s argument and refused to impose the geographical restriction Wiley sought.

The language of §109(a) read literally favors [a] nongeographical interpretation, namely, that “lawfullymade under this title” means made “in accordance with” or “in compliance with” the Copyright Act. The language of §109(a) says nothing about geography. The word “under” can mean “[i]n accordance with.” 18 Oxford English Dictionary 950 (2d ed. 1989). See also Black’s Law Dictionary 1525 (6th ed. 1990) (“according to”). And a nongeographical interpretation provides each word of the five-wordphrase with a distinct purpose. The first two words of the phrase, “lawfully made,” suggest an effort to distinguishthose copies that were made lawfully from those that werenot, and the last three words, “under this title,” set forth the standard of “lawful[ness].” Thus, the nongeographical reading is simple, it promotes a traditional copyright objective (combatting piracy), and it makes word-by-word linguistic sense.

“The geographical interpretation, however, bristles with linguistic difficulties” – which the opinion then proceeds to catalogue with considerable scrupulousness.  It’s something of a tour de force – well worth reading, though I suspect that 33 pages construing 5 words in the Copyright Act will only appeal to hardened copyright aficianodos or the hopelessly insane).  It is chock full of nice turns of phrase; for instance, confronted with dictum from an earlier Supreme Court case which appeared to suggest that Wiley’s reading was the correct one, Breyer writes:

We cannot, however, give the [earlier] statement the legal weight for which Wiley argues. The language“lawfully made under this title” was not at issue in [the earlier case]; the point before us now was not then fully argued; we did not canvas the considerations we have here set forth; we there said nothing to suggest that the example assumes a “first sale”; and we there hedged our statement with the word “presumably.” Most importantly, the statement is pure dictum. It is dictum contained in a rebuttal to a counterargument. And it is unnecessary dictum even in that respect. Is the Court having once written dicta calling a tomato a vegetable bound to deny that it is a fruit forever after?

It is entirely persuasive, to my eye, as a matter of statutory construction.  [Indeed, I'll go out on a limb here and suggest that it may be one of those rare opinions that ends up having swayed a vote.  In 2010, the Court was presented with precisely the same issue as here in the Omega v. Costco case; Justice Kagan recused herself from that one for some reason, and the Court split 4-4.  With the same issue in front if it, and with Kagan now participating, it ends up 6-3.  Somebody switched from the copyright owner's side (Omega/Wiley) to the re-seller's side (Costco/Kirtsaeng), and I would not be at all surprised to learn that it was because Breyer's opinion actually made sense).

Moreover, it is better copyright policy.  As I wrote in my earlier posting, the rule Wiley argued for would have given publishers a substantial incentive to move all of their manufacturing facilities (for books, and CDs, and DVDs and . . .) overseas, because they would only be able to prevent arbitrage, and maintain their price discrimination and market segmentation, with respect to those foreign-manufactured copies.  It is hard to believe -- impossible, actually -- that Congress intended that result.

And perhaps most importantly of all, it also takes what I think is the correct interpretive stance with respect to construing ambiguities (of which there are many) in the Copyright Act:  When in doubt, construe the statute to favor the public interest (in low-cost informational goods, and wide dissemination of creative works) over the parochial interest of the copyright holders.  It's a kind of anti-monopoly presumption; Congress, of course, can adjust the balance if it wishes, but where it hasn't spoken clearly (and it is very difficult for me to imagine a place where it has spoken less clearly than here), choose that reading of the statute that yields the greatest public benefit, not the one that gives copyright holders the broadest rights.  Justice Breyer is becoming (here, but also in his dissenting opinion in Eldred v Ashcroft, and his concurring opinion in MGM v. Grokster) the heir to Justice Stevens' (and, before him, Justices Black's and Justice Douglas') position as spokesman for this strong anti-monopolist presumption:

[Copyright involves] a balance of competing claims upon the public interest:  Creative work is to be encouraged and rewarded, but private motivation must ultimately serve the cause of promoting broad public availability of literature, music, and the other arts.  The immediate effect of our copyright law is to secure a fair return for an author’s’ creative labor.  But the ultimate aim is, by this incentive, to stimulate artistic creativity for the general public good. . . . The sole interest of the United States lies not in authorial reward, but in the general benefits derived by the public from the labor of authors,” . . . and when [the statute's] literal terms [are] ambiguous, the Copyright Act must be construed in light of this basic purpose.”  Sony v. Universal Pictures (Stevens, J)

We will, I’m quite certain, need a strong advocate for the public benefit in the years ahead, and it’s good to see Breyer assuming the mantle.

On January 18, 2013, the Circuit Court in Wayne County preliminarily approved a settlement in a class action charging that  McDonald’s had sold non-”halal” Chicken Mcnuggets that had been advertised as “halal.”  A local activist named Majed Moughni was unhappy with the settlement terms (which required McDonalds to pay some money to two local Dearborn charities, along with a hefty fee to the plaintiffs’ lawyers, but nothing for the other class members), so he began a Facebook campaign (“Dearborn Area Community Members”) where he criticized the settlement terms and tried to  organize opposition to it.

So far, so good.  But the plaintiffs’  lawyers filed an action seeking an injunction against Moughni’s Facebook page, asking  that Moughni be required to take everything he had said about the case down, and to post on his Facebook page instead what they said (and what the Court had said).

Unbelievably enough, the court granted the motion and entered a preliminary injunction; finding that  Moughni had made “materially false, deceptive and misleading statements concerning the settlement . . . and concerning the rights of the members of the Settlement Class,” and that Moughni “thereby engaged in deliberate and abusive conduct which has created a likelihood of confusion of class members, adversely has effected the administration of justice and has undermined this Court’s responsibility and authority to protect Class members from such abuses,” the Court

(a) ordered Moughni to remove all statements about the case from his Facebook page and to replace them with the Court’s own expression, and the parties’ own expression, about the proposed settlement, in the form of the preliminary approval order and class notice;

(b)  enjoined him from making any other statements about the case in any other forum—whether in person or electronically, or to the press;

(c)  ordered him to identify to the Court and the parties those class members who had associated themselves with Moughni’s point of view by using the Facebook “like” and comment functions; and

(d) forbade him from  “dissemination, circulation or publication” or any form for opting out or objecting to the settlement.

I don’t know why episodes like this get me so riled up, but they do.  It’s the worst kind of judicial over-reaching – protecting the court’s own turf from dissension and criticixm by exploiting its power over defendants.  Fortunately, Public Citizen has stepped in to move to vacate the injunction (aided, I’m told, by the ACLU of Michigan).  Good luck to them -

[Thanks to Paul Levy for the pointer]

[NOTE:  This brief essay comes from my friend and colleague David Johnson [from whom I first learned about Hypercard on our old Mac SE, many years ago)/DP]

Why we need an Open Source Hypercard

By: David R. Johnson

Livecode has launched a kickstarter campaign to raise the funds needed to allow it to re-engineer their latter day version of Hypercard, release it to open source developers, and make it free to everyone for non-commercial use.

You should back this campaign.

As I will explain, an open source Livecode will enrich education, increase interest in science and engineering, teach problem solving skills, and create a new form of literacy,

When Hypercard was first shipped with the newly released MacIntosh computer, millions of people who had never even thought about programming started to use it to create interactive software. Its scripting language was so much like natural English that most people could teach themselves how to build things by simply looking at some examples built by others.

Tragically, Apple didn’t appreciate what it had and withdrew support for its Hypercard program (ceasing to ship it with the hardware). But the “everyone can code” flame was kept alive, barely, by various successor products from other companies. LiveCode, now distributed by Runtime Revolution of Scotland, is a much more powerful, but just as accessible, successor.

The problem is that no one knows about LiveCode. No one teaches kids how to program with it. The large community of Hypercard enthusiasts is aging.  And the fact that anyone can write software, for their own purposes, has been washed away by “computer labs” that think all they need to teach is how to use applications and the presumptively more powerful, but much less accessible, technology of the web. I love the internet. I teach Internet law! But the gap between reading and writing interactive screen-based works has widened as the functions of online sites have become more complex.

As cell phones and tablets and app stores have begun to compete with the web, Hypercard (I mean Livecode) may get a second chance. It can build software for PCs, Macs, iPhones, Android phones and even Linux devices. The joy and wonder of seeing software they themselves built running on their own phone may yet spark the imagination of today’s teens.

Most people black out at the sight of javascript, much less C++. I certainly do. But we know from the Hypercard experience that anyone can approach an english-like scripting language that makes it easy to lay out a screen and experiment with small snippets of commands. “Put this word into field Fred”. “Move that button right 10” “Ask ‘what is your name?’ and put it into nameholder.”  Livecode moves instantly between building and running modes. It’s “card” and “stack” metaphor is easy to understand.

Writing code should be viewed as an essential element of everyone’s education. We need to understand how the robots we are using work! Indeed, we need to be able to build them for our own purposes, without having to raise VC money or go to the IT department. If-then loops, setting variables, sending messages up a hierarchical message path, thinking through the architecture and behaviors of a software program, learning how to persist in the face of inevitable bugs, are all good training for problem solving of every sort.

There are some other student friendly options out there. Scratch from MIT is a great starting place for younger kids. Mozilla is working hard to encourage “webmakers”. And Khan’s code academy is a valuable online learning tool. But LiveCode gives older students and amateurs the ability to build more complex and powerful software and to distribute their work in more diverse environments. It facilitates experimental, iterative, coding, rather than requiring a novice to master lots of complex syntax before getting anything interesting done. And it is (almost) a language everyone already knows!

One great feature of Livecode is that it allows a novice (amateur programmer) to learn how to make the software do something just when that user has decided that that something is worth doing. Kids learning to code may build a game of the their own invention or just make an interactive greeting card for a grandparent. They will learn how to code in order to achieve their own goals. That’s far more engaging than trying to memorize complex syntax just because that is what is taught in a computer class. As Hypercard showed, classes aren’t even necessary.

If RunRev gets the resources it needs, it will make Livecode available for free to every student and teacher. (In its day, teachers used Hypercard to build all manner of innovative educational programs.) Experience in Scotland, RunRev’s home, has shown that high school students taught to build software in Livecode are twice as likely to develop an interest in science, technology, math and engineering. Even history and art students will be drawn in by the ability to manipulate its graphical tools. Young children are using Livecode to build interactive maps.

There is no telling what the next generation of Hypercard enthusiasts might come up with. Of course, as was true in Hypercard’s time, lots of not very polished software will be created by amateurs. But we know from the web that enabling innovation and distributed publishing can also produce lots of great new things.

After we got the printing press, it took a while for everyone to learn to read. And a bit longer for everyone to learn to write. We now understand how empowering those skills are, even for people who are not professional readers or writers. Writing software is a form of literacy no less needed by the entire population, even those who will never become professionals paid to code.

Educational games for our students ought to be built by teachers (and students!), not engineers. Expert systems dispensing legal advice ought to be built by lawyers, not engineers. Anyone who needs a little bit of interactivity to help achieve a personal goal ought to be able to build it on their own. Apps will become more innovative, substantive and valuable if they spring from the minds of people solving their own problems.

Livecode, in the hands of a skilled user, is as powerful as any other software out there. It has been used by NASA and by professional programmers who view it as their secret weapon. But it is also approachable by girls who hate math, by rank amateurs (like me) who write messy code but enjoy every minute of it, by anyone who speaks English and can use the built in dictionary. If the kickstarter project succeeds, an open source LiveCode may extended to reach people who speak other languages as well.

I was one of the early Mac users who found it exciting to learn how to “program” with Hypercard. (My first program involved teaching some graphical fish to learn how to school. What a kick when they swam around the shark!) I now use Livecode to build interactive games for my law students. Sure, my code is messy and, well, amateurish. But it works and helps my students study law.

My students all avidly use the internet and smart phones and iPads, but most don’t realize that even the math phobic among them really could learn how to code. They won’t become professional programmers. But they would understand technology in a deeper way, gain a tool that helps them solve their own problems, and have fun. It’s time we gave all students — and everyone else — a chance to become literate in this new way.

Everyone in the world can code. Let’s start now.

In my Copyright Law class, I’m teaching a fairly well-known (in copyright circles) trilogy of cases from the 9th Circuit on the permissible scope of copying of computer software (MAI v. Peak Computer, 991 F.2d 511 (1993), Triad Sys. v. Southeastern Express 64 F.3d 1330, (1995), and Wall Data, v. Los Angeles County Sheriff’s Dep’t, 447 F.3d 769 (2006).  I came across this in the Wall Data opinion; here’s the entire first paragraph at the very start of the “Analysis” section of the opinion [447 F3d 776-7]:

“The 1976 Copyright Act defines a ‘computer program’ as ‘a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result.’  We have long held that a computer program is copyrightable as a ‘tangible medium of expression.’  Apple Computer, Inc. v. Formula Int’l, Inc., 725 F.2d 521, 524-25 (9th Cir. 1984).”

That second sentence is really egregious; nobody who knows the first thing about copyright law would write a sentence like that, and nobody who knows the first thing about copyright law would leave it in a document they were writing.  “A computer program is copyrightable as a ‘tangible medium of expression.”  It’s gibberish; I would deduct points from a 1L exam for a sentence like that one.  To anyone who knows the first thing about copyright law, it’s like fingernails on the blackboard.

What the court meant to say was something like:  We have long held that a computer program is a copyrightable work of authorship that receives protection as soon as it is embodied in ‘a tangible medium of expression.’  Not ‘as a tangible medium,’ but ‘embodied in a tangible medium.’

It’s not too big a deal for the case itself – the defendant was not really disputing that the plaintiff’s computer programs were protected by copyright, so nothing much really turns on it.  But it’s not trivial, either – the relationship between the “copyrightable work” (in this case, the computer program) and the “tangible medium of expression” (the statutory phrase describing the material object in which the work is embodied, like a hard disk or CD), is quite fundamental to understanding the way that copyright law works.

But really – in 2006, on the 9th Circuit, in a case that involved some pretty complicated copyright issues that somebody had to be studying (a clerk?  at least one of the judges??), nobody noticed that the sentence at the very start of the substantive portion of the opinion was complete and utter nonsense?  (Pregerson, Schroeder, and Trott were the judges).  And nobody has taken the trouble to correct the error by amending the opinion?  Here’s the syllogism:

If you know anything about copyright law, you fix this sentence because it makes no sense.

The court did not fix the sentence.

It doesn’t know anything about copyright law.

As consumers of judicial opinions, aren’t we entitled to ignore everything the court says later in the opinion about copyright law, since they obviously don’t know what they’re talking about?

And shouldn’t there be a public repository where opinions like this are shown to contain utter nonsense so that the rest of us can ignore them?

A nice discussion by Larry Downes, over on Forbes.com, about the trials and tribulations of the Uber ride-dispatching service and what it says about the relationship between regulation and innovation.

Lots and lots of nice, and nicely-wrought, Jeffersonian echoes, to my ears, in Obama’s speech today.

We recall that what binds this nation together is not the colors of our skin or the tenets of our faith or the origins of our names. What makes us exceptional – what makes us American – is our allegiance to an idea, articulated in a declaration made more than two centuries ago:   “We hold these truths to be self-evident, that all men are created equal, that they are endowed by their Creator with certain unalienable rights, that among these are Life, Liberty, and the pursuit of Happiness.”   Today we continue a never-ending journey, to bridge the meaning of those words with the realities of our time. For history tells us that while these truths may be self-evident, they have never been self-executing; that while freedom is a gift from God, it must be secured by His people here on Earth. . . .

We, the people, declare today that the most evident of truths – that all of us are created equal – is the star that guides us still.

That’s a pretty terrific little phrase:  “while these truths may be self-evident, they have never been self-executing.”  Very annoyed I didn’t think of that myself.