Archive for 2014

Supreme Court sides with innovators in Alice Corp v. CLS Bank

Exciting news! Today, in a unanimous opinion, the Supreme Court struck a blow against overly abstract patents in Alice Corp v. CLS Bank. This Spring, the Clinic co-authored an amicus brief with Public Knowledge on behalf of the Application Developers Alliance urging this result. In our brief, we suggested three ways in which the Court could clarify the law of subject matter eligibility–and we were delighted to learn that the bulk of today’s opinion was devoted to two of the clarifications we recommended. First, the Court reiterated that merely implementing an abstract idea on a computer does not make it patent-eligible. Second, the Court made clear that patent claims are not more patent-eligible than method claims. 

Kudos to USC Clinic alumni Michelle Lee and Mikhail Brandon as well as our co-authors Charles Duan and Anna Sallstrom of PK.

The opinion can be found here.

Clinic submits comment on behalf of IDA and Film Independent to The U.S. Copyright Office on Orphan Works and Mass Digitization

Yesterday, the Clinic continued its long-time advocacy on behalf of documentary and independent filmmakers seeking orphan works reform by submitting a public comment to the United States Copyright Office on behalf of the International Documentary Association and Film Independent, together with co-counsel Michael C. Donaldson. Earlier this year, the Copyright Office held roundtable discussions and sought public comments on Orphan Works and how they relate to large-scale preservation efforts. This March, Clinic interns Patrick Boyle, Patrick McCormick, and Professor Jack Lerner participated in the roundtable hearings; today’s comment is a follow up to those discussions.

Orphan works are copyrighted works for which the rightsholder cannot be identified or located. Many artists use existing copyrighted works in their creation of new works. Sometimes the artist may rely on fair use, but often he or she needs to obtain a license. When a work is orphaned, however, obtaining a license is impossible: how do you get a license when you cannot find the owner, or even determine who the owner is? This means that if a filmmaker wants to use an orphan work, he or she must do so under threat that someone claiming to be the rightsholder will emerge and sue for infringement.

Legislative reform is urgently needed, and IDA and FIND continue to support the balanced approach to reform that the Copyright Office recommended in 2006: permit the use of orphan works after the user has done a diligent search, while compensating rightsholders who resurface and limiting harsh remedies such as statutory damages and injunctions for those who have done a search in good faith. We are pleased that the Copyright Office continues to pursue orphan works reform, and we look forward to the next steps in this process.

Transcripts from the roundtable discussions can be found here and here.

Information on the Copyright’s Office’s orphan works policy making activities can be found here.


USC News Spotlights Clinic Work in Supreme Court on Patent Policy

Yesterday, USC News spotlighted the work of the IP & Tech Clinic’s own Mikhail Brandon ’14 and Michelle Lee ’15, who filed two briefs in the Supreme Court this year as well as a comment with the Federal Trade Commission.  Read the story here.

You can read our own blog posts about the Clinic’s work this year on patent issues here, here, and here.

Michael Donaldson, Long-Time Friend of Clinic, Testifies to the Committee of the Judiciary’s Subcommittee on Courts, Intellectual Property, and the Internet regarding Orphan Works

As part of the clinic’s continuing work on the orphan works problem, we are excited to announce that Michael Donaldson of Donaldson + Callif, LLP, long-time friend of the clinic, former President of theInternational Documentary Association (IDA), and pro bono outside counsel for Film Independent(FIND), recently testified to the Committee of the Judiciary’s Subcommittee on Courts, Intellectual Property, and the Internet regarding the issue.

​Clinic members Patrick Boyle and Patrick McCormick helped Mr. Donaldson prepare his testimony, bringing to bear their experience testifying at the Orphan Works Roundtable Discussions held earlier this month at the U.S. Copyright Office.  This proved to be very valuable as the committee members asked several questions that raised issues discussed at the Roundtables.

Donaldson’s testimony included poignant stories from his clients who have been plagued by the orphan works problem.  He used these stories to explain how the orphan works situation negatively affects filmmaker clients and why a solution is desperately needed.  He also explained the proposed solution that IDA and FIND support, which would protect rightsholders while permitting uses of orphan works for creators and users who have conducted a good faith diligent search for the owner.

We congratulate Donaldson on an excellent job and we are confident that his testimony will be part of the process for finding a workable solution to the orphan works problem.


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:

Read more about the roundtable here:


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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.

USC Gould School of Law
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