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Clinic files amicus brief in closely-watched Ninth Circuit copyright case

Guest post by recent USC Law grad Rom Bar-Nissim ’13, who was on the legal team on the brief.  Clinic interns Patrick Boyle and Patrick McCormick also worked on the project.

Today the Clinic filed an amicus brief in the Garcia v. Google case in the Ninth Circuit on behalf of long-time Clinic client the International Documentary Association as well as Film IndependentFredrik Gertten, and Morgan Spurlock.  We were absolutely thrilled to partner on this project with several of the best attorneys in the business:  Gary L. Bostwick, who carried the laboring oar on much of the drafting, Michael C. Donaldson, and Lincoln Bandlow

Garcia v. Google is a copyright case brought by an actress in the highly controversial film The Innocence of Muslims. The actress, who was lied to about the nature of her role, claimed a copyrightable interest in her 5-second performance; the Ninth Circuit Court of Appeals accepted her theory and ordered Google to disable access to all copies of the film.

The Clinic argued that the Ninth Circuit’s opinion will create three forms of chaos for independent filmmakers and will result in a chilling effect on filmmaking activity. First, the opinion makes it unclear to filmmakers when a “copyrightable interest” arises for someone who appears onscreen. Consequently, a filmmaker does not know when or whether to get a release. Second, the court appeared to state that unestablished filmmakers are not “employers . . . in the regular business of filmmaking” for copyright purposes. Employer status is important for burgeoning filmmakers. If a filmmaker is considered an employer of someone who makes a copyrightable contribution to the film, then the filmmaker owns the copyright in that contribution. Third, the court held that even if the filmmaker had an implied license from the actor or other contributor, there are limits on how far the filmmaker can stray from the actor’s understanding. Unfortunately, the court did not articulate how far the filmmaker can stray.

Ultimately, the chaos created by the Ninth Circuit’s opinion creates so much uncertainty for independent filmmakers that the only way forward will be to retain costly legal counsel. But even with counsel, many films may still be more likely to see a lawsuit then the light of day.

In making our argument, we solicited and used statements from Academy Award-nominated filmmakers like Josh Fox (GasLand) and Scott Hamilton Kennedy (The Garden). We also employed a wide array of films and examples to illustrate our arguments, including Easy RiderErrol Morris’s Tabloidskateboard viral videos, and reality TV. We also explored the humble beginnings of filmmakers like Christopher Nolan’s FollowingRobert Rodriguez’s El MariachiJim Jarmusch’s Permanent Vacation, and filmmaker Lee Storey who made the documentary Smile ‘Til it Hurts: The Up with People Story in her spare time while working as a lawyer and then successfully beat the IRS in court to be recognized as a filmmaker.

The brief is available here.

Clinic Members Speak on Orphan Works at Library of Congress

This week, Patrick Boyle, Patrick McCormick and Professor Lerner of the USC IP & Tech Law Clinic spoke at the Library of Congress on behalf of the International Documentary Association and Film Independent at a series of roundtable sessions hosted by the United States Copyright Office regarding the orphan works problem in copyright.
Orphan works are works that are clearly protected by copyright but for which the owner cannot be identified or located. Independent documentary and narrative filmmakers often seek to create new works that incorporate other works, but cannot find the rightsholder, and when that happens, that can prevent the use altogether.

At these roundtables, we spoke about a solution that would protect rightsholders while permitting uses of orphan works for creators and users who have conducted a good faith diligent search for the owner. With such a solution, filmmakers such as members of IDA and FIND–along with many other communities–would be able to make their films, find more rightsholders, and when no rightsholder can be found, use orphan works without fear of crushing liability or an injunction that would stop the project in its tracks.

You can read more about our work on the orphan works issue here: http://iptlc.usc.edu/index.php/clinic-submits-reply-comment-on-orphan-works-and-mass-digitization-to-u-s-copyright-office/

Read more about the roundtable here:http://copyright.gov/orphan/

 

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Clinic files second amicus brief on behalf of app developers in the U.S. Supreme Court

Yesterday, the USC IP & Tech Clinic filed another amicus brief with the Supreme Court in the case of Alice Corporation v. CLS Bank concerning the problems with overly broad and abstract patents. The Clinic, again representing the Application Developers Alliance, teamed up with Public Knowledge to co-author the brief to discuss the harmful consequences of the Federal Circuit’s inconsistent and sometimes formalistic approaches to patent subject matter eligibility, leading to flawed patents that cover basic concepts and ideas—the building blocks of innovation.  The brief shows that the central claim in the patent at issue can be implemented in just seven lines of computer code.  This demonstration shows that the claim, despite complex-looking language, covers nothing more than basic concepts dealing with third-party escrow systems.  We then go on to recommend that the Court clarify the law of patent eligibility with three simple pieces of guidance.

 

It was a pleasure to partner with the brilliant Charles Duan and Anna Sallstrom at Public Knowledge on this brief.  We hope that the Supreme Court will reaffirm that subject matter eligibility remains a substantive test, and not one that can be circumvented with clever draftsmanship.

Clinic files Public Comment with the FTC on Behalf of ADA regarding patent trolls

This afternoon the USC IP & Tech clinic filed a public comment on behalf of the Application Developers Alliance (ADA) regarding the proposed information collect on Patent Assertion Entities (PAEs). In the public comment, the Clinic supports the Federal Trade Commission’s (FTC) initiative to collect this information and encourages the FTC to utilize its statutory authority to ameliorate the harmful information imbalance in the current patent system. From the Comment [pdf]:

PAEs are victimizing countless ADA members through a variety of unfair, deceptive,
anticompetitive, and frustratingly opaque business practices. PAE holdup has become so common that PAEs now represent the principal threat to the continued growth and success of the app economy. But while app developers and many others have repeatedly been the targets of these business practices, which they believe to be widespread, there is no way to expose or examine them on a systemic basis. An FTC investigation, made pursuant to its § 6(b) authority, is the best and perhaps only way to obtain empirical data about PAE activity across the entire patent ecosystem.

Clinic Joins ADA and Other Law Schools to Help Startups Battle Patent Trolls

Today the Application Developers Alliance (ADA) announced that it will be partnering with the USC Intellectual Property and Technology Clinic and other law schools nationwide to form the Law School Patent Troll Defense Network.

From the announcement:

The Law School Patent Troll Defense Network (trolldefensenetwork.org) is a consortium of law school clinics that will provide free legal representation to small app developers and other entrepreneurs that have been threatened or sued by patent trolls. Clinics participating in the Network may also represent the Alliance in major patent cases affecting developers and the app community.

Clinic files amicus brief in U.S. Supreme Court

Wildtangent v. Ultramercial

Today the USC IP & Tech Clinic filed a brief on behalf of the Application Developers Alliance asking the Supreme Court to grant certiorari in the case of WildTangent v. Ultramercial. This is a case about whether a claim on using advertising as a substitute for currency, combined with eleven conventional steps and preformed on the internet via a “facilitator” can be eligible for patent protection. The Federal Circuit said yes. In the brief we argue that with this ill-advised decision, the Federal Circuit has immeasurably worsened critical flaws in the patent system that are already deeply affecting application developers. From the brief [pdf]:

“With this decision, the Federal Circuit has worsened critical flaws in the patent system that deeply affect application developers. Unlike other innovators, app developers work exclusively with software, and most are small businesses with little capital. As overly broad software patents have proliferated in recent years, non-practicing patent assertion entities have launched a wave of litigation and intimidation that has made it extremely difficult for many app developers to  operate. The Federal Circuit’s decision in this case exacerbates these problems by adding to its deep internal divisions over the proper threshold for patent eligibility. Furthermore, by announcing an overly permissive standard for eligibility, the Federal Circuit has immeasurably worsened the patent litigation crisis for app developers and small innovators everywhere.”

UPDATE: Stamped brief here.

 

 

Professor Jack Lerner on Huffington Post Live

 

On August 5, 2013, Professor Jack Lerner returned to HuffpostLive to further discuss the ongoing NSA controversy.  Professor Lerner and other guests (including USC’s own Professor Daria Roithmayr) assessed the recent Reuters report that showed that the NSA had been providing law enforcement information to the DEA, and then concealing the source of the leads obtained in this matter. 

 

 

Professor Lerner and Clinic Present to the California State Bar

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On July 9th, 2013, Professor Jack Lerner and Summer 2013 Clinic Interns, Michael Frank, Michelle Lee, and Diana Wade presented “What the NSA Surveillance Revelations Mean for the Ethics of Cloud Computing ” to the State Bar of California’s Cyberspace Law Committee. The presentation outlined the advantages and disadvantages of cloud computing for attorneys, as well as the different legal vectors by which the government can obtain electronic communications. The presentation further highlighted possible complications to the duties of competency and confidentiality and proposed steps attorneys should take when deciding whether to adopt a cloud computing service for their law firm. We concluded by discussing the requirement of due diligence when adopting cloud services in light of government surveillance activity and duties confidentiality.

 

 

Clinic Members Lead Seminar on Fair Use & the DMCA

On Monday April 22, 2013, the USC Intellectual Property and Technology Law Clinic gave a presentation to over 100 documentary filmmakers as part of the International Documentary Association‘s Doc U educational series on the exemption to the Digital Millennium Copyright Act (“DMCA”) that the clinic and Donaldson + Callif helped win for documentary filmmakers in 2012.

 

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The DMCA was enacted in 1998 and, among other things, made breaking technological locks that protect copyright material–like the encryption on DVDs–a crime.  This became a problem for documentary filmmakers because while fair use gives them the right to use material, more and more of it is locked up by the DMCA.  So the IPTLC helped obtain an exemption for documentary filmmakers in 2010 and again in 2012 that allows them to take from DVD’s and online sources for the purposes of commentary and criticism.  Unfortunately, the exemption is so long and complicated that even lawyers find it dauntingly complex.

Clinical interns Katharine Trendacosta and Garrett Lee, along with Professor Jack Lerner, created a seven-step analysis that allows documentary filmmakers to use the exemption and obtain videos for use in their films for purposes of criticism and commentary without having to hire a lawyer.  To start off the seminar, Dean Cheley of Donaldson + Callif gave a primer on fair use for documentary filmmakers.

We had a lot of fun at this event, which took place at the Cinefamily Theater.  Photos here and here.  In case you missed it, the presentation was filmed for IDA’s Doc U series and will be posted online for viewing in the near future.  Stay tuned!

 

 

Clinic hosts screening of landmark surf documentary “Accidental Icon: The Real Gidget Story”

On April 25, the IPTLC, together with the USC Entertainment Law Society, presented a screening of the documentary Accidental Icon: The Real Gidget Story. The Clinic worked on various copyright issues during the making of this film. Click the image below for the full size poster detailing the event.

 

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