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 esamuel@manatt.com.

________________________________________________________________________________

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

dpentcheva@wck.com.

The Academic Voice

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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

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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 berryd@cooley.edu

The Academic Voice

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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

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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

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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

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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

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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