When the City of Boston was essentially shut down while law enforcement pursued the alleged Boston Marathon bombers on April 19, BU Law had to cancel its long-awaited groundbreaking of the Sumner M. Redstone Building. Six months later, the BU Law community remains “Boston Strong,” and on October 25, 2013, will hold a celebration of its new building, named in honor of the law school’s former IP faculty member and lead benefactor. I look forward to seeing many of you at the celebration!
In this issue, we highlight the accomplishments of our leading faculty, whose contributions to the legal field have been recognized by Boston University and by scholars across the academy. We also to welcome to BU Law a new IP faculty member, Associate Professor of Law Paul Gugliuzza, from the University of Florida Levin College of Law. The accomplishments of our students and recent graduates in the IP field are also great points of pride for our community.
As the new academic year begins, I am happy to report that the BU Law intellectual property program continues to garner positive attention from legal scholars, law students and employers. Please enjoy this issue of our newsletter.
Maureen A. O'Rourke
Professor of Law
Michaels Faculty Research Scholar
Boston Strong: Building celebration rescheduled after marathon tragedy
Kicking off Alumni Reunion Weekend, the Sumner M. Redstone Building Celebration will be held on Friday, October 25 at 2:30 p.m. on Alpert Mall. The event will feature remarks by BU President Robert A. Brown, Boston Mayor Thomas M. Menino, and BU Law student Meghan Kelly (’15), and will be followed by a reception in the law tower. It is also a demonstration of the “Boston Strong” spirit, as the groundbreaking ceremony on April 19 had to be cancelled during Boston’s daylong “shelter-in-place” while law enforcement searched for the alleged perpetrators of the Boston Marathon tragedy.
The building is named for media executive Sumner Redstone, who made an $18 million gift to the law school last year. He has lectured on intellectual property issues in the entertainment industry at universities across the country and created one of the nation's first courses of its kind, "The Law of the Entertainment Industries," at BU Law after joining the faculty in 1982. "This school is where two of my passions meet: education and the law," he noted in a 2007 lecture at BU Law. Redstone taught at BU Law through much of the 1980s, and the IP curriculum that he helped forge continues to be recognized nationally as one of the School's strengths.
White House cites BU Law faculty's research on cost of 'patent trolls'
A White House report, "Patent Assertion and U.S. Innovation," that was released in June, cites the research of Professor of Law Michael Meurer and Lecturer in Law James Bessen in its initiative to clamp down on "patent trolls". The report notes that the BU Law faculty members' study found that "defendants and licensees paid $29 billion in 2011, a 400% increase from 2005" to patent assertion entities and that "less than 25% of this money flowed back to innovation."
Two papers on this subject that were co-written by Meurer and Bessen made the Top 10 list of the most downloaded intellectual property research papers on the Social Science Research Network (SSRN). As of July 26, 2013, “The Private and Social Costs of Patent Trolls,” had been downloaded 3,563 times, ranking it #5, while the “The Direct Costs from NPE Disputes” had been downloaded 3,472 times, ranking it #8.
In "The Private and Social Costs of Patent Trolls," which was posted September 19, 2011, Bessen and Meurer, along with co-author Jennifer Ford (’11), make the case that lawsuits by “patent trolls” cost companies half a trillion dollars between 1990 and 2010. Following up on that study, Bessen and Meurer estimated in “The Direct Costs from NPE Disputes,” which was posted June 28, 2012, that the direct costs to defendants arising from these non-practicing entities’ (NPEs) patent assertions totaled $29 billion in 2011.
Hylton is third law professor in four years to earn BU's highest faculty honor
When Boston University named Professor of Law Keith Hylton a William Fairfield Warren Distinguished Professor in 2013, he became the third law school faculty member in four years to be awarded the highest distinction bestowed by the University upon senior faculty members who remain actively involved in research, scholarship, teaching and the University’s civic life. Hylton is a prolific scholar who is widely recognized for his work across a broad spectrum of topics in law and economics, including labor law, tort law, antitrust, intellectual property, civil procedure and empirical legal analysis. In 2011, Professor of Law Wendy Gordon was named a Warren Professor. She is renowned for her application of philosophy and economics to copyright and related common-law areas and for her work on fair use. The award was also bestowed in 2009 upon George Annas, a professor in the Schools of Law and Medicine and chair of the School of Public Health’s Department of Health Law, Bioethics & Human Rights. Ten BU professors have received the honor since the award was created in 2008.
BU Law celebrates publication of Laws of Creation: Property Rights in the World of Ideas
The BU Law community gathered Monday, November 26 in Barristers Hall to salute the publication of Professor Keith Hylton’s book, Laws of Creation: Property Rights in the World of Ideas, co-authored with former BU Law Dean Ronald Cass.
Hylton and Cass’ comprehensive defense of traditional intellectual property laws offers a well-timed response to recent critics who claim that changing technology undermines the case for such legislation. Through a common law framework, they argue that technological advances in fact strengthen the need for property rights in order to incentivize investment in innovation.
To foster discussion, the celebratory symposium brought together three distinguished IP scholars—Professor Michael Meurer of BU Law, Assistant Professor David Olson of Boston College Law School and Professor Henry Smith of Harvard Law School—to comment on Hylton and Cass’ book. While Cass was unable to attend, Hylton was on hand to respond.
Dean Maureen O’Rourke offered opening remarks, praising Laws of Creation as an example of pertinent scholarship and Hylton as a “very serious and productive scholar” who “brings the orientation of law and economics to intellectual property law in a thoughtful and productive way.”
Professor Wendy Gordon, who served as moderator, complimented the scope of the project: “The book is very ambitious, ranging from examining the potential functions of property rights in a primitive state of nature to examining intellectual property in the context of the 21st century’s newest technologies.”
Similarly, the commentators commended the book in its clear, comprehensive and methodical overview of what is a largely disparate field. Professor Olson applauded Laws of Creation in its method as “the type of analysis that is not often considered clearly enough … as an approach to IP … and is well-needed.” Professor Smith added, “This is a really significant book, achieving a delicate task through a really interesting method and providing overview. I’m in awe that people are able to do so much in one book.”
In his response, Professor Hylton remarked on how the collaborative writing process enhanced the end product by capitalizing on the authors’ diverse, individual strengths. While Cass’ expertise lies in legislation, Hylton’s general interest in frameworks in law and economics helped structure the book. He stated, “What was important to both of us is emphasizing the framework, the way of thinking about IP law that we thought had not been stated with sufficient clarity in recent literature, which has taken a very negative tone to IP.”
“This book is all about policy,” Hylton said. “If I were a student that was going to take an IP course, I would want to see this kind of policy analysis … and to see it early, before I took the course.”
Alex Garens (’12) was awarded second place in the Boston Patent Law Association Writing Competition for his paper “Will Copyrights Expire in 2019? Revisiting the Copyright Clause: ‘Limited Times’ and Copyright Term Extensions in the Wake of Golan.” The competition awards papers that contribute to knowledge of intellectual property law and engage the creative thought process.
Garens first learned about the contest from a classmate and Professor of Law Stacey Dogan, whom he took for a trademark class and an IP & Internet seminar. “I could tell from the minute that Alex started studying trademark law that he had a special knack and a passion for the field,” Dogan says. “Alex had talked to me about his article, and when I received notice of the BPLA writing competition, I recommended that he apply.”
Originally published in the Wake Forest Journal of Business and Intellectual Property Law, the paper explores Golan v. Holder (2012) and Eldred v. Ashcroft (2003) to determine how the Supreme Court could rule on a legal challenge to a future copyright extension. Garens concludes that the Supreme Court should remain skeptical of future extensions and could deem a future extension unconstitutional on several analytical grounds.
“I had a background and personal passion in media and journalism before law school, so anything that spills over into art or culture interests me very much,” Garens says.
The Supreme Court ruling of Eldred v. Ashcroft (2003) caught Garens’ attention, but the early-2012 ruling in of Golan v. Holder (2012) inspired him to look closer at what could happen in the future of copyright extensions.
Garens majored in legal studies at the University of Wisconsin-Madison and always had an interest in IP law. After taking a trademarks class in his 3L year, he found his passion. “I went to law school with a vague notion I was interested in IP,” Garens says. “I knew this is what I wanted to do and didn’t want to settle for anything else.”
Garens currently works as an associate at Grossman, Tucker, Perreault & Pfleger, a firm that exclusively focuses on IP matters. He specializes in trademark, copyright and Internet law issues.
“I couldn't be happier that Alex is out there practicing trademark law,” Dogan says. “He works hard and approaches any question with precision and rigor. He will undoubtedly pursue his career with the same rigor, commitment and cheerful enthusiasm that he brought to class.”
In the future, Garens wants to continue in this line of work at his current firm. “I see myself at my firm right now,” Garens says. “I love the people, and I love what I’m doing.”
Students take third for Best Written Submission at Oxford IP competition
BU Law students Ari Sacharow (’13) and Amy Luo (’13), took third place in the Best Written Submission category at the Oxford Intellectual Property Moot Court Competition, held at Oxford University, March 14-16. The Oxford IP moot selects the top 20 teams to compete from among all the teams that enter written submissions. This year 36 teams entered written submissions, and BU Law and Indiana University Maurer School of Law were the only schools from the United States to be accepted to the competition.
The BU Law team lost three very close preliminary rounds against the teams from the National University of Singapore, the London School of Economics and the University of Ottawa before defeating the team from the University of Western Ontario in an equally close match. Three of the teams BU Law faced—all but past moot champion the London School of Economics team—advanced to the Octofinal round, and the team from the University of Ottawa ultimately won the competition. The team argued extremely well, incorporating feedback from the judges to make changes to their style and presentation. (Typical appellate style in the United States is very different from appellate style in the United Kingdom.) Those changes and improvements ultimately led them to winning the final preliminary round.
New BU Law associate professor to teach civil procedure and IP law
Paul Gugliuzza has joined the full-time faculty as an associate professor of law who will teach courses in civil procedure and intellectual property law. His research lies at the intersection of those fields, with a particular focus on patent litigation. Gugliuzza’s recent articles include “The Federal Circuit as a Federal Court,” published in the William & Mary Law Review, and “Rethinking Federal Circuit Jurisdiction,” published in the Georgetown Law Journal. He graduated summa cum laude from Tulane University School of Law, clerked for Judge Ronald M. Gould on the U.S. Court of Appeals for the Ninth Circuit, and practiced in the Issues and Appeals group at Jones Day in Washington, D.C. Prior to joining the faculty at BU Law, Gugliuzza was a visiting assistant professor at the University of Florida Levin College of Law.
Dogan co-writes paper on phenomenon of brands that parody other brands
Professor of Law Stacey Dogan has co-authored a paper, "Parody as Brand," with Stanford Professor of Law Mark Lemley that will be published in the UC-Davis Law Review. This article takes a look at the phenomenon of brands that parody other brands, such as South Butt, Chewy Vuitton, and Charbucks. She also published a review of Robert G. Bone’s article, “Taking the Confusion Out of ‘Likelihood of Confusion’: Toward a More Sensible Approach to Trademark Infringement” on the Intellectual Property Jotwell Web site on December 5, 2012. In April, Dogan was interviewed for a Marketplace article, “Can you trademark a rally cry like ‘Boston Strong’?” about Born Into It’s efforts to trademark the phrase “Boston Strong.” Dogan participated in a panel discussion on “Conceptual Questions about Registration” at the Fifth Annual Trademark Scholars’ Roundtable at Indiana University’s Maruer School of Law and discussed "Parody as Brand" at a faculty workshop at Vermont Law School.
Upcoming Speaking Engagements
Burdens of Persuasion in Trademark Law, Faculty workshop at Notre Dame Law School, September 13, 2013
Burdens of Persuasion in Trademark Law, Faculty workshop at Fordham Law School, October 10, 2013
Secondary Trademark Infringement in the US: Law and Policy, at International Conference on Secondary Liability for Trademark Infringement, Columbia Law School, November 8, 2013
Participant, Academic Roundtable on U.S. and European Design Law, Max Planck Institute, Munich, Germany, Nov. 22-23, 2013
Senior scholar and reviewer, Vanderbilt Junior Intellectual Property Scholars Roundtable, Vanderbilt Law School, Mar 1-2, 2014
Scholarship in Progress
"Haelan Laboratories v. Topps Chewing Gum: Publicity as a Legal Right," in Rochelle Cooper Dreyfuss & Jane C. Ginsburg (eds.), Intellectual Property at the Edge: The Contested Contours of IP (forthcoming 2013). This book chapter examines the right of publicity, from baseball cards through fantasy sports and video games.
Gordon weighs in on court ruling against student who downloaded songs
William Fairfield Warren Distinguished Professor Wendy Gordon wrote “The Lost Logic of Deterrence: When ‘Sending A Message’ To The Masses Outstrips Fairness” for WBUR’s Cognoscenti blog on July 11, 2013, that addressed the First Circuit Court of Appeals’ decision to uphold the $675,000 award that former BU student Joel Tenenbaum had been ordered to pay the Recording Industry Association of America for illegally downloading and sharing songs on the Internet. She also wrote a column, "Secrets of the Tag Tuck Sisterhood, " that appeared in the Boston Herald on June 15. In July Gordon presented her article, "The Concept of 'Harm' in Copyright", which has appeared on several SSRN "Top Ten" lists, to the Annual Congress of the Society for Economic Analysis of Copyright Issues. She also presented her essay, "Dissemination Must Serve Authors: Errors of the U.S. Supreme Court," at the Intellectual Property Scholars Conference in August. A Russian translation of the chapter that she co-authored with Robert Bone in Volume II Encyclopedia of Law & Economics 189-223 (B. Bouckaert & G. DeGeest, Eds., Edward Elgar 2000) has been published under the title, “Копирайт Авторы: Венди Гордон, Роберт Боне Опубликовано”. In October, Gordon will serve as a commentator at the 6th Annual Junior Scholars in Intellectual Property Workshop at Michigan State University College of Law.
Scholarship in Progress
Professor Gordon has several works in progress, including:
- “The Concept of ‘Harm’ in Copyright: Employing the Disanalogy of Trespass,” Intellectual Property and the Common Law, Cambridge University Press (forthcoming)
- "Copyright and Tort as Mirror Images: On Not Mistaking for the Right Hand What the Left Hand is Doing," Intellectual Property, Innovation and Competition A. Nicita, G. Ramello & F. M. Scherer, eds., Routledge (forthcoming)
- Fair Use, chapter for Handbook on the Economics of Copyright for Students and Teachers (R. Watt, ed. (forthcoming)
Hylton publishes Laws of Creation: Property Rights in the World of Ideas
In 2012, Harvard University Press published Laws of Creation: Property Rights in the World of Ideas, co-authored by William Fairfield Warren Distinguished Professor of Law Keith Hylton and former BU Law Dean Ronald Cass. In the book, which focuses on the key debates that have arisen with the field of IP law, the authors argue that IP laws help create both a wealthier society and inspire more innovation than those of alternative legal systems.
Hylton was also quoted extensively in the media regarding a U.S. judge’s ruling in July that Apple violated antitrust laws by conspiring with book publishers to raise the price of e-books.
"Trial Selection Theory and Evidence: A Review," with Haizhen Lin, in v.10 Encyclopedia of Law and Economics: Procedural Law and Economics 2d ed., Chris Sanchirico, ed., Edward Elgar Publishing (forthcoming).
"An Economic Perspective on Preemption," 53 Boston College Law Review 203 (2012)
"The Economics of Third-Party Financed Litigation," 8 Journal of Law, Economics & Policy 701 (2012)
Research Handbook on the Economics of Criminal Law, Edward Elgar, with Alon Harel, co-editor (2012)
"Some Notes on Property Rules, Liability Rules, and Criminal Law," in Research Handbook on the Economics of Criminal Law, K. Hylton & A. Harel, eds., Edward Elgar (2012)
“The Economics of Necessity,” 41 Journal of Legal Studies 269 (2012)
“Negligence, Causation, and Incentives for Care,” 35 International Review of Law and Economics 80 (2013)
Meurer participates in webinar and joint public workshop on patent trolls
Professor of Law Michael Meurer participated in a World Congress webinar, “Debate: What Patent Troll Problem? A $29 Billion ‘Business’ and Counting” on February 12. He also participated in a joint public workshop on patent assertion entity behavior, held by the U.S. Department of Justice and the Federal Trade Commission in December.
"The Private and Social Costs of Patent Trolls," 34:4 Regulation 26 (2011-12)
Dean Maureen O'Rourke, a Michaels Faculty Research Scholar, moderated a panel, "Focus on: Uniform Commercial Code, 50 Years Later," that included Teresa Harmon of Sidley Austin LLP, lawyer Harry Sigman, and Neil Cohen, a professor at Brooklyn Law School, on May 29 at Suffolk Law School. She also participated in the discussion of Professor of Law Keith Hylton's book, Laws of Creation: Property Rights in the World of Ideas, held at BU Law on November 26.
"ALI Principles of the Law of Software Contracts: Some Proposals for a Global Software Licensing Policy," with Robert A. Hillman, in Research Handbook on Intellectual Property Licensing 54, Jacques de Werra, ed., Edward Elgar (2013)
2012 Statutory and Case Supplement to Copyright in a Global Information Economy, with J. Cohen, L. Loren & R. Okediji, 3d ed., Aspen Law & Business (2012)
Outterson supports LDC Members' request to WTO for TRIPS extension
Professor of Law Kevin Outterson joined with 130+ academics who specialize in international intellectual property and trade law, development studies, human rights, and other related disciplines in signing a letter to support the extension request by Least Developed Country (LDC) Members of the World Trade Organization for an unconditional extension of the time period within which LDC Members must become compliant with the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs). He also spoke at the Intellectual Property and Religious Thought conference at the University of St. Thomas in April. Outterson's work on the unique IP issues associated with antibiotics is being supported by the FDA, The Brookings Institution, and an upcoming conference at Chatham House.
"Plunging into Endless Difficulties: Medicaid and Coercion in National Federation of Independent Business v. Sebelius," with N. Huberfield & E. W. Leonard, 93 Boston University Law Review 1 (2013)
Without Principals: Regulating the Duty of Loyalty for Non Profit
Corporations Through the Intermediate Sanctions Tax Regulations," with
C. B. Eisenberg, 5 Pepperdine Journal of Business Entrepreneurship & the Law 243 (2012)
"All Pain, No GAIN: Need for Prudent Antimicrobial Use Provisions to Complement the GAIN Act," 30:1 APUA Clinical Newsletter 13 (2012)
Amici Curiae Brief on Behalf of the Department of Health and Human Services, DHHS v. Florida, U.S. Supreme Court No. 11-398 (Jan. 13, 2012) [ACA litigation, minimum coverage provision]
Amici Curiae Brief on Behalf of the Department of Health and Human Services, Florida v. DHHS, U.S. Supreme Court (Feb. 17, 2012) [ACA litigation, Medicaid expansion]
"Combatting Antibiotic Resistance Through the Health Impact Fund," with T. Pogge & A. Hollis, in The Globalization of Health Care: Legal and Ethical Issues Glenn I. Cohen, ed., Oxford University Press (2012)
for Drug Ads? The Constitution Does Not Require Congress to Subsidize
Direct-To-Consumer Prescription Drug Advertisements," with S.
Speiser, 52 Santa Clara Law Review 453 (2012)
"Poverty Tourism, Justice, and Policy: Can Ethical Ideals Form the Basis of New Regulations?" E. Selinger & K. Whyte, 14 Public Integrity 39 (2011-12)
"Regulating Compounding Pharmacies after NECC," 367 New England Journal of Medicine 1969 (Nov. 22, 2012)
- During 2013, Lecturer in Law Russell Beck participated in two Boston Bar Association panel discussions, Intellectual Property Year in Review and the 5th Annual Symposium on Employee Non-Compete Agreements, Trade Secrets and Job Creation. Beck, a partner at Beck Reed Riden LLP, was honored in the 2013 Chambers USA Guide as one of its “Notable Practitioners.” He will teach Trade Secrets and Restrictive Covenants at BU Law during the spring semester.
- Lecturer in Law James Bessen co-wrote an editorial, “Tax the Patent Trolls” with Brian Love, an assistant professor at Santa Clara University School of Law, which was published by USA Today on July 24, 2013. In the column, they argue that charging annual maintenance fees for patents and forcing losers in patent lawsuits to pay the winner’s fees would cut the number of patent trolls.
- Lecturer in Law Joseph Darby, who teaches Structuring Intellectual Property Ownership, joined the Tax Group of Sullivan & Worcester LLP as a partner in the firm’s Boston office in May 2013. He is an authority on the taxation of intellectual property, including the migration of valuable intellectual property to offshore jurisdictions, and the tax-efficient licensing and/or sale of intellectual property rights. Before joining Sullivan & Worcester, he was a shareholder at Greenberg Traurig.
- Lecturer in Law Jerrold Neeff, who teaches Entertainment Law, moderated a panel, “New Media: Entertainment’s Digital Future” at the Harvard Law School Entertainment Law Symposium: The Globalization of the Entertainment Industry – A Double-Edge Sword?, which was held last November at Harvard Law School.
- Visiting Assistant Professor of Law Lior Zemer delivered a talk on “The End of Users’ Rights in Israel” at the 32nd Annual Congress meeting of the International Association for the Advancement of Teaching and Research in Intellectual Property (ATRIP), which was held June 23-26, 2013 at Oxford University.
Introducing students to the perspectives and expertise of leading scholars and practitioners has always been a hallmark of the BU Law IP program. The presentations of guest speakers and the dialogue that ensues enrich students' experiences and equip them with a deeper understanding of the subject matter. Additionally, by bringing together current and future IP lawyers through networking events, talented students receive career education, while firms and organizations engage with some of the brightest talent soon to be entering the work force.
IP Speaker Series
BU Law's IP Speaker Series brings a robust roster of leading IP law thinkers to campus to interact with students and faculty in workshop settings. This fall, we are excited to welcome two distinguished guests to campus:
Barbara Lauriat ('04), a lecturer in intellectual property law at King's College London, visiting this semester as a Global Fellow at NYU School of Law, will deliver a talk at BU Law on Tuesday, October 15. Her topic is "Copyright, Left & Center: Studies of Anglo-American Copyright in a Political Context."
John Simson, the executive in residence at American University's Kogod School of Business and adjunct professor of law at Georgetown Law, is a well-known entertainment lawyer/manager/producer, particularly celebrated for his pioneering work as executive director of SoundExchange (2001-2010). He will deliver "Performance Rights for Sound Recordings" on Monday, November 4 at BU Law.
Many more IP speakers will be speaking on campus in the spring semester, including:
- Professor Graeme Dinwoodie, University of Oxford Faculty of Law
- Associate Professor and chair, Ethical and Cultural Implications of Technological Innovations, Abraham Drassinower, University of Toronto Faculty of Law
- Associate Professor Paul Gugliuzza, Boston University School of Law
- William L. Prosser Professor of Law Ruth Okediji, University of Minnesota Law School
- Professor Megan Richardson, University of Melbourne Law School
- Professor Jessica Silbey,Suffolk Law School.
Speakers from the 2012-2013 series included:
- Kevin Collins, patent scholar and professor of law at Washington University in St. Louis
- Brett Frischmann, director of the Intellectual Property & Information Law Program at Cardozo Law School.
IP Faculty Roundtable Discussions
BU Law IP professors will participate in two faculty roundtable discussions on intellectual property issues this fall at BU Law:
The LexMark Case and False Advertising
Thursday, October 10
International IP Issues
Wednesday, December 4
IP Networking & Career Education Events
BU Law hosts IP law networking and career education events for students throughout the year:
- Michael Lin ('96), who manages the Life Sciences Group in Marks & Clerk's Hong Kong and Beijing offices, will provide individual advising for students September 11.
Last spring, the following IP professionals came to BU Law to meet with students:
• Christopher Reed, senior advisor for policy & special projects at the U.S. Copyright Office, provided individual advising to students on March 20.
• The March 25th seminar, “Practicing IP Law at Fish & Richardson,” featured two principals from the firm, Tonya Drake (’07) and Mike Hamlin.
• Mark Dighton, director of law school relations at the Patent Bar Association, discussed the Patent Bar Exam during a presentation on March 25.
• Joshua Miller (’12) and Nathan Speed (’07), IP associates at Wolf Greenfield, met with students interested in patent litigation to discuss “A Day in the Life of a Patent Litigator” on April 17.
• Meenakshy Chakravarty (’08) and Rachel Emsley, attorneys from Finnegan, Henderson, Farabow, Garrett & Dunner LLP, one of the largest IP Law firms in the world, delivered a presentation, “Strategies for a Successful Career in IP Law: Advice from Finnegan,” on April 18.