WAKE FOREST JOURNAL OF BUSINESS AND INTELLECTUAL PROPERTY LAW

VOLUME 19 NUMBER 1 FALL 2018

HOW TO CLAIM SOMETHING WHEN THE INVENTIVE ASPECT IS A NATURAL LAW Peter A. Hecker 1

COMMENT: HOW THE ACTIONS OF KYLE BASS HAVE FORCED THE USPTO TO EXPAND THE DUTY OF CANDOR AND GOOD FAITH Christopher Lewis 11

COPYRIGHTING DNA: AN OFF-LABEL USE Devdatta Malshe 34

COMMENT: ALEXA, TRANSMIT CLIENT DATA TO AMAZON: ETHICAL CONSIDERATIONS FOR ATTORNEYS LOOKING FORWARD TO VIRTUAL ASSISTANTS Whitney L. Hosey 51

COMMENT: ALWAYS EAT THE FINE PRINT: WHY 3D PRINTED FOOD WILL FINALLY WARRANT INTELLECTUAL PROPERTY PROTECTION FOR RECIPES Jeff Rodgers 72

ABOUT THE JOURNAL

The WAKE FOREST JOURNAL OF BUSINESS AND INTELLECTUAL PROPERTY LAW is a student organization sponsored by Wake Forest University School of Law dedicated to the examination of intellectual property in the legal context. Originally established as the Wake Forest Intellectual Property Law Journal in 2001, the new focus and form of the Journal, adopted in 2010, provides a forum for the exploration of business law and intellectual property issues generally, as well as the points of intersection between the two, primarily through the publication of legal scholarship. The Journal publishes four print issues annually. Additionally, the Journal sponsors an annual symposium dedicated to the implications of intellectual property law in a specific context. In 2009, the Journal launched an academic blog for the advancement of professional discourse on relevant issues, with content generated by both staff members and practitioners, which is open to comment from the legal community. The Journal’s student staff members are selected for membership based upon academic achievement, performance in an annual writing competition, or extensive experience in the field of intellectual property or business. The Journal invites the submission of legal scholarship in the form of articles, notes, comments, and empirical studies for publication in the Journal’s published print issues. Submissions are reviewed by the Manuscripts Editor, and decisions to extend offers of publication are made by the Board of Editors in conjunction with the Board of Advisors and the Faculty Advisors. The Board of Editors works closely and collaboratively with authors to prepare pieces for publication. Manuscript submissions should be accompanied by a cover letter and curriculum vitae, and may be sent electronically to [email protected] or by mail to:

Manuscripts Editor Wake Forest Journal of Business and Intellectual Property Law Wake Forest University School of Law P.O. Box 7206 Reynolda Station Winston-Salem, North Carolina 27109

COPYRIGHT © 2019 WAKE FOREST JOURNAL OF BUSINESS AND INTELLECTUAL PROPERTY LAW

ISSN 2164-6937 (Print) ISSN 2164-6945 (Online)

BOARD OF ADVISORS

DANNY M. AWDEH BARBARA LENTZ Finnegan Henderson Farabow Professor, Wake Forest Garrett & Dunner LLP University School of Law Washington, DC Winston-Salem, North Carolina

CHARLES W. CALKINS JAMES L. LESTER Kilpatrick Townsend & Stockton MacCord Mason PLLC LLP Greensboro, North Carolina Winston-Salem, North Carolina MICHAEL S. MIRELES TRIP COYNE Professor, University of the Ward and Smith, P.A. Pacific, McGeorge School of Law Wilmington, North Carolina Sacramento, California

RODRICK J. ENNS JUSTIN R. NIFONG Enns & Archer LLP NK Patent Law Winston-Salem, North Carolina Raleigh, North Carolina

EDWARD R. ERGENZINGER, JR., ALAN PALMITER PH.D. Professor, Wake Forest FisherBoyles LLP University School of Law Charlotte, North Carolina Winston-Salem, North Carolina

JASON D. GARDNER ABIGAIL L. PERDUE Kilpatrick Townsend & Stockton Associate Professor, Wake Forest LLP University School of Law Atlanta, Georgia Winston-Salem, North Carolina

STEVEN GARDNER COE W. RAMSEY Kilpatrick Townsend & Stockton, Brooks Pierce LLP Raleigh, North Carolina Winston-Salem, North Carolina T. ROBERT REHM, JR. ROB HUNTER Smith, Anderson, Blount, Clearing House Payments Dorsett, Mitchell, & Jernigan, Company L.L.C. LLP New York, NY & Winston-Salem, Raleigh, North Carolina NC SIMONE ROSE DIRK D. LASTER Professor, Wake Forest Williams Mullen University School of Law Richmond, Virginia Winston-Salem, North Carolina

Editor-in-Chief WHITNEY L. HOSEY

Managing Editor YUSUF A. BROWN

Marketing & Online Editor Manuscripts Editor GABRIELA MEJIAS JUSTINE PARRY Symposium Editor Executive Articles Editors NITI PARTHASARATHY CHARLOTTE LOPER WILLIAM REINGOLD Development Editor TRACEA RICE JOSEPH M. DOUGHERTY II Articles Editors Senior Notes and Comments Editor AVERY BARBER ABIGAIL JACOBS CAMRYN KEETER Notes and Comments Editors KAYLEN LOFLIN JUSTINE MARIE WRIGHT ASHLEY BOUCHEZ MICHAEL JOHNSON Research Editor GREGORY M. VOLK FRANCE BEARD

Editorial Staff ALINA E. BOSANAC RALPH J. D’AGONSTINO III E. CARSON LANE LUCAS W. BROWN MAUREEN M. GALLAGHER CHRISTOPHER L. LEWIS JAMIE DANIEL BURCHETTE ANDREW W. HOMER MORGAN N. MCPHERSON JORDAN A. BURKE JULIANA S. INMAN JAMES R. SIPE III JESSICA L. CANNON SARAH R. WARREN PATRICK WILSON

Staff Members NICK BLACKWOOD ELLE JOHNSON DAN NORTON RACHAEL H. BOYD HALEY M. KAVANAUGH RACHEL PHELPS PENDER JORDAN CASTROVERDE JAMES N. KURITZKES JOSH RANDALL SARAH V. FRITSCH MELISSA LAWRENCE AMBER RAZZANO KATIE GANO ANNA KILLORAN LONG RAINSFORD REEL JASON A. GONZALEZ WILL MACFARLANE NATHANIEL I. REIFF MEGAN LEIGH GRIER TIM MISNER JOSH REVILLA LAUREN IRWIN SAMANTHA A. MOENCH KYLE STOCKS PHILLIP M. JESTER AMBER M. MORTON ALEXIS A. WRIGHT VANDEN NIBERT

Faculty Advisors ALAN PALMITER SIMONE A. ROSE

WAKE FOREST JOURNAL OF BUSINESS AND INTELLECTUAL PROPERTY LAW

VOLUME 19 FALL 2018 NUMBER 1

HOW TO CLAIM SOMETHING WHEN THE INVENTIVE ASPECT IS A NATURAL LAW

Peter A. Hecker†

I. INTRODUCTION ...... 2 II. THE INVENTIVE ASPECT OF THE CLAIMS OF VANDA WAS A NATURAL LAW ...... 4 III. WHAT TO DO NOW ...... 7

† © 2019 Peter Hecker is an associate at Knobbe Martens in San Diego, CA where he practices intellectual property law. He received his J.D. in 2017 from J.Reuben Clark Law School, Brigham Young University. Peter may be reached at [email protected]. Thanks to Brenden Gingrich, PhD, JD, partner in the San Diego office of Knobbe Martens, for his insight on the strategies for applying Vanda for overcoming § 101 rejections. 2 WAKE FOREST J. [VOL. 19 BUS. & INTELL. PROP. L.

NAVIGATING THE EVER-CHANGING LAW OF PATENT ELIGIBILITY PRESENTS NUMEROUS PITFALLS. RECENTLY, THE FEDERAL CIRCUIT MADE A SURPRISE MOVE BY HOLDING THAT PATENT CLAIMS FEATURING A NOVEL DIAGNOSTIC DISCOVERY WERE NOT DIRECTED TO A NATURAL LAW EVEN THOUGH THE NATURAL LAW AT ISSUE WAS PLAINLY THE ONLY INVENTIVE ASPECT OF THE CLAIMS. THIS PRESENTS OPPORTUNITIES FOR PATENT PRACTITIONERS. THE PATENT OFFICE HAS INSTRUCTED EXAMINERS TO IGNORE WHETHER METHOD OF TREATMENT CLAIMS THAT PRACTICALLY APPLY NATURAL RELATIONSHIPS INCLUDE ROUTINE OR CONVENTIONAL STEPS. THUS, PATENT CLAIMS THAT COVER NEWLY DISCOVERED NATURAL PRINCIPLES CAN BE GARNISHED INTO PATENT ELIGIBILITY WITHOUT HAVING TO UNDERGO THE USUAL FULL INVENTIVENESS INQUIRY IF THEY ARE DRAFTED CAREFULLY.

I. INTRODUCTION This paper discusses recent Federal Circuit case law relating to whether a patent claim is directed to a judicial exception, such as a natural law.1 In Vanda v. West-Ward, the court concluded that claims were not directed to a judicial exception even though on the outset they appear very similar to the claims in Mayo.2 The difference, as the majority pointed out, was that the claims in Vanda were applied in a specific manner.3 The dissent’s view was that the claims included a judicial exception, and that there was nothing new other than the routine and conventional step of administering a drug to a patient.4 Overall, the Federal Circuit extended itself to define clear bounds for some patents that might fall within the scope of what would otherwise be ineligible under Mayo but that lack the preemption issues normally associated with ineligible subject matter.5 In short, Vanda limited the reach of Mayo and Alice by concluding that patent claims were not directed to a law of nature, even where the claims relied on a natural law for their inventive concept.6 Part of the dispute in Vanda was over a patent on methods of treating a schizophrenic patient with iloperidone. 7 The treatment included

1 See, e.g., Vanda Pharms. Inc. v. West-Ward Pharms. Int’l Ltd., 887 F.3d 1117, 1133 (Fed. Cir. 2018) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 74–75 (2012)). 2 Id. at 1134. 3 Id. at 1136. 4 Id. at 1142–43 (Prost, C.J., dissenting). 5 See id. at 1135–36. 6 Id. at 1134. The court refers to the Supreme Court’s two-part test for determining patent eligibility as the “Mayo/Alice analysis.” Id. at 1140 (Prost, C.J., dissenting) (citing Mayo, 566 U.S. 66; Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U. S. 208 (2014)). 7 Id. at 1121. continued . . . 2018] HOW TO CLAIM WHEN NATURAL LAW 3 IS INVENTIVE ASPECT genotyping the patient for a gene called CYP2D6, and giving the patient a low iloperidone dose of 12 mg/day, instead of up to 24 mg/day, to decrease cardiovascular side-effects if the genotype indicated that the patient was a poor CYP2D6 metabolizer. 8 In the majority opinion, Judges Lourie and Hughes noted that “too broad an interpretation of [ineligible subject matter] could eviscerate patent law…” because “all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.”9 The judges then concluded that the claims were not directed to patent-ineligible subject matter where they were “directed to a specific method of treatment for specific patients using a specific compound at specific doses to achieve a specific outcome.”10 Judge Prost dissented. She stated that the claims did “no more than simply direct the relevant audience to apply [the law of nature].” 11 Referencing Mayo, she reasoned that “reciting specific metes and bounds in the claims did not prevent the Supreme Court from concluding those claims set forth a natural law.”12 Thus, she concluded that the claims were directed to a law of nature, and that they failed step 2 of the Mayo analysis because all that was left was a routine and conventional step of administering the dose.13 Both the majority and the dissent tried to stay true to the Mayo and Alice jurisprudence, but in different ways.14 Of course, Judge Prost is right that in a broad sense simply administering drugs is routine and conventional for doctors, and, because the claims recite and rely on a natural law, that analysis may be necessary.15 But the majority seems to be taking a step back and looking at the bigger picture when they draw a limit based on the preemption doctrine,16 which was the impetus for creating judicial exceptions in the first place.17 Based on the opinion

8 Id. 9 Id. at 1134 (quoting Mayo, 566 U.S. at 71). 10 Id. at 1134, 1136. 11 Id. at 1140 (Prost, C.J., dissenting). 12 Id. at 1140–41 (Prost, C.J., dissenting). 13 Id. at 1142–43 (Prost, C.J., dissenting). 14 See id. (“Whatever weight can be ascribed to the foregoing statements about methods of treatment, we remain beholden to the holding of Mayo, which, in my view, requires us to find the claims directed to a natural law at step one.”). 15 Id. at 1142 (Prost, C.J., dissenting). 16 Id. at 1135 (“[U]nlike the claim in Mayo, to the extent that preemption is a concern, the ‘610 patent claims do not tie up the doctor’s subsequent treatment decision.”). 17 See Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1343 (Fed. Cir. 2018) (discussing the history of judicial exceptions as they relate to the preemption doctrine. In past cases, “[Inventors received a patent containing at least one claim directed to a particular technical solution to a problem, . . . but each inventor also continued . . .

4 WAKE FOREST J. [VOL. 19 BUS. & INTELL. PROP. L. in Vanda, it is clear that the inventive concept of a patent claim can be separated from what the claim is directed toward.18

II. THE INVENTIVE ASPECT OF THE CLAIMS OF VANDA WAS A NATURAL LAW In Vanda, the Federal Circuit bypassed the Mayo test at Step 1 even though the claims’ inventive concept was essentially a natural law.19 The District Court of Delaware apparently considered the inventive concept to be a natural law because it stated that the claims depend on a law of nature and concluded that the discovered relationship made the claims non-obvious.20 The Federal Circuit noted the district court’s conclusion about the claims’ dependence on laws of nature, and the majority did not appear to disagree with it.21 Because the non-obviousness standard is akin to and overlaps with Mayo’s inventiveness inquiry, 22 the district court’s discussion on obviousness is relevant to Mayo’s inventiveness standard. 23 In discussing non-obviousness, the district court said, “[t]he claimed invention relies on the relationship between the ratio of P95 and P88 metabolites in the iloperidone metabolic pathway in the blood and the risk of QTc prolongation in iloperidone patients.” 24 Similarly, in discussing subject matter eligibility, the court stated that “the asserted claims depend upon laws of nature,” specifically, “the relationship between iloperidone, CYP2D6 metabolism, and QTc prolongation.”25 Thus, based on the district court’s analysis, the nonobvious or inventive aspect of the invention was a natural law.26 The court eventually said

lost a claim that encompassed all solutions for achieving a desired result.”). 18 See Vanda Pharms., 887 F.3d at 1136 (“At bottom, the claims here are directed to a specific method of treatment for specific patients using a specific compound at specific doses to achieve a specific outcome. They are different from Mayo. They recite more than the natural relationship between CYP2D6 metabolizer genotype and the risk of QTc prolongation. Instead, they recite a method of treating patients based on this relationship that makes iloperidone safer by lowering the risk of QTc prolongation. Accordingly, the claims are patent eligible.”). 19 Id. at 1140–43 (Prost, C.J., dissenting). 20 Vanda Pharms. Inc. v. Roxane Labs., Inc., 203 F. Supp. 3d 412, 427–28 (D. Del. 2016), aff’d, Vanda Pharms., 887 F.3d 1117. 21 Vanda Pharms., 887 F.3d at 1123 (quoting Roxane Labs., 203 F. Supp. 3d at 428). 22 See Peter Hecker, How an Old Non-Statutory Doctrine Got Worked into the § 101 Test for Patent Eligibility, 99 J. PAT. & TRADEMARK OFF. SOC’Y 4 (2017) (discussing the analogy between the non-obvious standard and obviousness.) 23 See generally Roxane Labs., 203 F. Supp. 3d at 412. 24 Id. at 425. 25 Id. at 428–29. 26 Id. at 428. continued . . . 2018] HOW TO CLAIM WHEN NATURAL LAW 5 IS INVENTIVE ASPECT that the defendant did not prove “that the precise test and the discovered results were routine or conventional,” 27 thereby suggesting that the asserted natural law could be inventive. Additionally, the parties’ arguments as presented by the district court overlapped with regard to obviousness and § 101 eligibility.28 For example, the relationship between CYP2D6 and iloperidone metabolism was argued by the patent holder to be nonobvious,29 and by the defendant to be a law of nature30 (Table 1). The defendant went on to say all that was left to transform the claims was routine and conventional: a mere dose adjustment that a person ordinarily skilled in the art would naturally discover in performing FDA-mandated studies,31 and used this same argument to say the drug was obvious.32

27 Id. at 429 (emphasis added). 28 See id. at 425–26. 29 Id. at 426. 30 Id. at 428. 31 Id. 32 Id. at 426.

6 WAKE FOREST J. [VOL. 19 BUS. & INTELL. PROP. L.

Table 1. Arguments and District Court’s Analysis in Vanda Pharms. § 103 Obviousness § 101 Eligibility Court’s analysis: “The claimed Court’s analysis: “The asserted invention relies on the claims depend upon laws of relationship between the ratio of nature. . . . [T]he claims depend P95 and P88 metabolites in the on the relationship between iloperidone metabolic pathway in iloperidone, CYP2D6 the blood and the risk of QTc metabolism, and QTc prolongation in iloperidone prolongation.”34 patients.”33 Defendant’s argument: The Patent holder’s argument: “The patent embodies a law of prior art does not teach that nature—“that a patient’s CYP2D6 is important in CYP2D6 enzymatic activity iloperidone metabolism in the affects their metabolism of body”35 iloperidone”36 Defendant’s argument: “The Defendant’s argument: “a person ‘610 Patent is obvious because ordinarily skilled in the art would the FDA would have required naturally discover the invention clinical pharmacology studies to in performing FDA-mandated examine how the drug is studies.”38 metabolized”37

The majority in the Federal Circuit decision noted the district court’s determination of the claims’ dependence on a natural law and did not seem to disagree.39 The court stated that the inventors recognized the natural relationships and claimed an application of the relationship, rather than the relationship itself.40 The dissent pointed out that the district court found the unpredictable results of clinical testing regarding the relationship among CYP2D6, iloperidone, and QTc prolongation to form the basis of non-obviousness, and no other aspect of the claims made it nonobvious.41 Indeed, the patent itself cited the discovery of

33 Id. at 425. 34 Id. at 428–29. 35 Id. at 426. 36 Id. at 428. 37 Id. at 426. 38 Id. at 428. 39 Vanda Pharms. Inc. v. West-Ward Pharms. Int’l Ltd., 887 F.3d 1117, 1123 (Fed. Cir. 2018) (citing Roxane Labs., 203 F. Supp. 3d at 428). 40 Id. at 1135. 41 Id. at 1143 n.1 (Prost, C.J., dissenting). continued . . . 2018] HOW TO CLAIM WHEN NATURAL LAW 7 IS INVENTIVE ASPECT the relationship as the invention of the patent.42

III. WHAT TO DO NOW Now that we know a claim can be patent eligible even if its inventive concept is a natural law, how can we take advantage of this when prosecuting patents? First, the inventive aspect needs to be apparent to get over the § 103 non-obviousness requirement, but it should be “only touch[ed] upon”43 in a way that draws the focus to an application of the law rather than to the law itself. One way to apply the teachings of Vanda is to copy the form of its claims.44 If the invention you are claiming is a diagnostic method, dress it up as a treatment based on the diagnosis. For example, suppose you discovered that Vandase, an enzyme encoded by a well-known gene, enhances patent bar passage rates when expressed at high levels. You will likely get a § 101 subject matter rejection if you claim “a method for predicting whether a subject will pass a patent bar, comprising: obtaining an expression level of a nucleic acid encoding Vandase; and prognosing whether the subject will pass the patent bar based on said expression.” You may have better luck, however, if you try something like this in the application: a method for treating a subject suffering from the patent bar, comprising: obtaining an expression level of a nucleic acid encoding Vandase; prognosing whether the subject will have difficulty passing the patent bar based on said expression; and administering a patent bar preparation course comprising videos of John White or Gene Quinn for 8- 12 hours per day for 4-8 weeks if the subject is prognosed as having difficulty passing the patent bar based on said expression, and administering a patent bar preparation course comprising 1-2 hours per day of past patent bar questions for 1-2 weeks if the subject is prognosed as not having difficulty passing the patent bar based on said expression. In such a case, you could argue that like the claim in Vanda, which

42 Id. at 1140 (Prost, C.J., dissenting). 43 Brief for Appellee at 45, Vanda Pharms. 887 F.3d at 1133 (No. 2016-2707, 2016-2708). 44 Vanda Pharms. 887 F.3d at 1134 (finding Vanda’s claims sufficient to satisfy the test for patent eligibility). continued . . .

8 WAKE FOREST J. [VOL. 19 BUS. & INTELL. PROP. L. was patent eligible, this claim only touches upon a law of nature but is directed to a method of treatment because it recites a specific treatment for specific patients using a specific study strategy at specific doses.45 Note that in the above method of treatment claim, the only inventive aspect is likely the discovery that high Vandase expression levels increase patent bar passage rates. Because genome-wide expression assays are performed on a routine basis, and because the gene encoding Vandase is well-known, the first step of the method, obtaining an expression level of a nucleic acid encoding Vandase, would likely be considered well-known, routine, and conventional.46 Likewise, patent bar preparation courses that include John White and Gene Quinn for several hours a day, or reviewing past patent bar questions for a few hours, are routine and conventional because people generally already pursue those courses of study.47 Thus, if the claim were reviewed by a person who, like Judge Prost, thought the claims were directed to their inventive aspect, which is a law of nature, that person would probably think the claims were patent ineligible because they do not recite any other inventive aspect that would amount to significantly more than the law of nature.48 If your patent examiner does think like Chief Justice Prost, you can remind him or her that the Patent Office has published a memo49 making clear that the Patent Office is following the law set forth in Vanda.50 In particular, the memo points out that the Federal Circuit did not consider whether the treatment steps were routine or conventional when making its “directed to” determination, and states that: (1) ‘method of treatment’ claims that practically apply natural relationships should be considered patent eligible under Step 2A of the USPTO's subject matter eligibility guidance; and (2) it is not necessary for ‘method of treatment’ claims that practically apply natural relationships to include nonroutine or unconventional

45 See id. at 1136 (“At bottom, the claims here are directed to a specific method of treatment for specific patients using a specific compound at specific doses to achieve a specific outcome. They are different from Mayo.”) 46 Nature Educ., Proteins and Gene Expression, SCITABLE, https://www.nature.com/scitable/topic/proteins-and-gene-expression-14122688 (last visited Sept. 28, 2018). 47 Patent Practice Training for Newbies, IPWATCHDOG (Nov. 26, 2018 4:00 PM), http://www.ipwatchdog.com/event/patent-practice-training-nov-2018-2/. 48 See Vanda Pharms., 887 F.3d at 1140 (Prost, C.J. dissenting). 49 See Memorandum from Robert W. Bahr, Deputy Comm’r for Patent Examination Policy to Patent Examining Corps (June 7, 2018), https://www.uspto.gov/sites/default/files/documents/memo-vanda-20180607.PDF. 50Id. at 2. continued . . . 2018] HOW TO CLAIM WHEN NATURAL LAW 9 IS INVENTIVE ASPECT

steps to be considered patent eligible under 35 U.S.C. § 101.51 Thus, you can argue that method of treatment claims are outside the scope of § 101 scrutiny and are patent eligible. Of course you can always still make the backup argument that your claims are in-line with the patent eligible examples given by the Patent Office,52 and argue that even if your method of treatment claims are directed to a law of nature, they still recite significantly more. In the Vandase example above, you might say as a backup argument that the claims are like the Julitis53 example in the Patent Office Examples. Such an argument might proceed as follows. Claim 6 of the Julitis example is directed to a method of diagnosing and treating Julitis comprising detecting the presence of JUL-1, diagnosing the patient with Julitis when the presence of JUL-1 is detected, and administering anti- TNF antibodies to the diagnosed patient. 54 The claim is considered inventive even though the diagnosing step was a natural law/abstract idea, and administering anti-TNF to Julitis patients was conventional.55 This is because when “viewed as a combination,” the additional elements (including the treatment step) “amount to a claim as a whole that adds meaningful limits on the use of the exception.”56 Likewise, one could argue that the additional steps including the administration step of the Vandase example amount to a claim as a whole that adds meaningful limits on the use of the exception.57 More broadly, the Federal Circuit interprets the directed to step of Alice and Mayo to mean that if a claim recites an application of a natural law or other judicial exception specifically enough, then the claim does not have to have to satisfy the significantly more hurdle.58 For example, in Interval Licensing v. AOL, the court noted that in past cases where claims were directed to an abstract idea, the claims “failed to recite a practical way of applying” the underlying idea.59 The more practically and specifically you can draft your claim to be an application of a natural law or other judicial exception, the better your chances are of withstanding or avoiding a § 101 rejection. 60

51Id (emphasis removed). 52 Subject Matter Eligibility Examples: Life Sciences, USPTO 3–4 (2016), https://www.uspto.gov/sites/default/files/documents/ieg-may-2016-ex.pdf. 53 Id. at 9–16. 54 Id. at 15. 55 Id. 56 Id. 57 Id. 58 Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1342 (Fed. Cir. 2018). 59 Id. at 1343. 60 See id. (discussing instances where court has found exceptions to §101). continued . . .

10 WAKE FOREST J. [VOL. 19 BUS. & INTELL. PROP. L.

Claims that pass muster in the abstract idea realm tend to “recite a specific improvement over prior systems”61 or that enable a computer or other conventional device “to do things it could not do before.”62 Likewise, a claim with an underlying natural law can avoid Alice and Mayo by reciting a specific application that the natural law by itself could not do (like treat a patient).63 Overall, having what would be considered a natural law does not doom your claim, even if the claim would not have been inventive otherwise.64 You just need to define an application of the law that is specific enough.65

61 Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356, 1363 (Fed. Cir. 2018). 62 Id. at 1362 (quoting Finjan, Inc., v. Blue Coat Sys., Inc., 879 F.3d 1299, 1305 (Fed. Cir. 2018)). 63 Vanda Pharms. Inc. v. West-Ward Pharms. Int’l Ltd., 887 F.3d 1117, 1136 (Fed. Cir. 2018) (distinguishing the claims from Mayo because “they recite more than the natural relationship.”). 64 Id. at 1123 (quoting Vanda Pharms. Inc., v. Roxane, 203 F. Supp. 3d 412, 428 (D. Del. 2016)). 65 Id. at 1136 (distinguishing the claims from Mayo because “they recite more than the natural relationship”). WAKE FOREST JOURNAL OF BUSINESS AND INTELLECTUAL PROPERTY LAW

VOLUME 19 FALL 2018 NUMBER 1

COMMENT: HOW THE ACTIONS OF KYLE BASS HAVE FORCED THE USPTO TO EXPAND THE DUTY OF CANDOR AND GOOD FAITH

Christopher Lewis†

I. INTRODUCTION ...... 12 II. BACKGROUND ...... 17 III. THE DUTY OF CANDOR AND GOOD FAITH ...... 22 IV. KYLE BASS AND HIS ABUSE OF THE PATENT SYSTEM ...... 26 V. WHAT THE DUTY OF GOOD FAITH AND CANDOR MEANS FOR KYLE BASS ...... 29 VI. CONCLUSION ...... 32

† © 2019 Christopher Lewis received his B.S. in Electrical Engineering at Clemson University in May 2016 and is expected to graduate from Wake Forest School of Law in May 2019. He would like to thank the professors at Wake Forest School of Law for their help and inspiration and the Board of Editors and Staff for their help in the editing process. He would also like to thank his wife, parents, brothers, and sister for their unwavering love and support, without whom this would not have been possible. 12 WAKE FOREST J. [VOL. 19 BUS. & INTELL. PROP. L.

I. INTRODUCTION Patent laws by their very nature disclose an exclusionary right upon the patent owner, and it is for this reason that patent laws often become controversial.1 Whether it be in defining the powerful rights given to the patent owner or balancing patent laws with other laws, patent laws can be very troublesome to the legal scholar.2 In addition, because of the broad grant of rights given to the patent owner, the patent system is ripe for abuse from many different fronts. One such way that some have alleged the patent system is being abused is through patent trolls.3 A patent troll is aptly named because he or she acquires a patent without any desire to use the patent and simply lies in wait, waiting for someone to abuse the patent rights.4 The patent troll is gambling that the patent will someday prove valuable so that he or she “can sue the developer to recover damages for patent infringement.” 5 Whereas ordinarily an accused patent infringer would be able to bring a counterclaim of infringement, the patent troll is immune to this claim as he or she is not using the patent in the market.6 As the patent troll is abusing the patent system for his or her own gain, the patent troll would appear to be taking advantage of the patent system as it was not originally intended to be used.7 The patent system was not intended to be used in this way as patents were originally granted in order to incentivize the growth of the market.8 The concept behind patents is that by granting the exclusionary right to the patent owner, the patent owner will be more likely to invent as he or she knows that he or she will be rewarded through exclusive use.9 The theory then is that the exclusionary right will cause market growth.10 The patent troll is not engaging in conduct that will cause market growth. Instead, the patent troll is likely to cause market stagnation as patent owners may become wary of investing further money in future

1 Dylan M. Carson & Avril G. Love, Off-Label Use of the Cartwright Act: Will Cipro Require State Courts to Assess Federal Patent Validity in Pay-for-Delay Cases?, 24 COMPETITION: J. ANTITRUST, UCL & PRIVACY SEC. ST. B. CAL., no. 2, 2015, at 7, 8. 2 Id. 3 Doug Harvey, Comment, Reinventing the U.S. Patent System: A Discussion of Patent Reform Through an Analysis of the Proposed Patent Reform Act of 2005, 38 TEX. TECH L. REV. 1133, 1162 (2006). 4 Id. 5 Id. 6 Id. 7 Id. 8 See Carson & Love, supra note 1, at 8. 9 Id. 10 See id. continued . . . 2018] HOW THE ACTIONS OF KYLE BASS 13 FORCED THE USPTO inventions.11 Courts generally do not approve of patent trolls and are wary of the suits they bring because they circumvent the original meaning of the patent system; therefore, one aim of the patent system is to ensure that the original principles behind its formation are upheld.12 However, the dislike of patent trolls goes beyond the realm of the court and instead pervades society as groups are coming forward to protect certain high-profile patents from patent trolls.13 Furthermore, patent trolls are generally seen as entities that are bad for the marketplace.14 The pervasive attitude towards patent trolls illustrates the type of conduct that the patent system and society have generally described as being against the principles of the patent system.15 While the patent system has not created firm rules to control the patent troll, courts are constantly dealing with them and, therefore, creating common law that is useful in deciding how to treat patent trolls.16 The common law rules governing patent trolls will be demonstrative in combatting similar issues within the patent system. Like a patent troll, Kyle Bass (Mr. Bass) has sought to take advantage of the patent system by abusing the rights provided by the patent system to the general public.17 Mr. Bass uses one central method in his interactions with the patent system, which allows him “to mount legal challenges against questionable drug patents as part of an investment strategy that would bet on the share prices of targeted companies failing.”18 Mr. Bass’s process involves the “filing of an

11 See Harvey, supra note 3, at 1162 (“Generally, an accused infringer can bring a counterclaim for infringement against the plaintiff, but because patent [trolls] do not otherwise participate in the marketplace . . . they are immune to such counterclaims.”) (internal quotations omitted). 12 See generally Sean Alfano, Patent Trolls Feed on Technology, CBS (Feb. 24, 2006, 7:14 PM), https://www.cbsnews.com/news/patent-trolls-feed-on-technology (discussing a federal judge’s delay in ruling on a patent infringement law suit involving patent trolls reflected how patent troll behavior is likely not what the Founding Fathers intended). 13 See Gavin Clarke, EVIL Patent TROLLS Poised to Attack OpenStack, Says Linux Protection Squad: Open-Source Cloud’s Own Openness a Problem, THE REGISTER (Oct. 2, 2014, 1:27 PM), http://www.theregister.co.uk/2014/10/02/oin_openstack_warning. 14 Harvey, supra note 3, at 1162. 15 See Alfano, supra note 12. 16 Larry Downes, The U.S. Supreme Court is Reining in Patent Trolls, Which is a Win for Innovation, HARV. BUS. REV. (June 2, 2017), https://hbr.org/2017/06/the- u-s-supreme-court-is-reining-in-patent-trolls-which-is-a-win-for-innovation. 17 See generally Gene Quinn, Patent Abuse or Genius? Is Kyle Bass Abusing the Patent System?, IPWATCHDOG (Apr. 8, 2015), www.ipwatchdog.com/2015/04/08/is- kyle-bass-abusing-the-patent-system/id=56613 (“Indeed, if Bass is successful it could be catastrophic for the industry.”). 18 Andrew Ward, Kyle Bass Plans Legal Action on Pharma Patents, FIN. TIMES continued . . .

14 WAKE FOREST J. [VOL. 19 BUS. & INTELL. PROP. L. action with the United States Patent and Trademark Office (USPTO) to invalidate certain pharmaceutical drug patents by seeking an inter partes review,” and then shorting the stock of the patent owner before announcing the inter partes review (“IPR”), which theoretically would result in a windfall to Mr. Bass as the stock market accounts for this challenge.19 Like a patent troll, Mr. Bass has no desire to actually use the patent constructively and instead, Mr. Bass is seeking only to affect the stock prices of the patent owner for his own monetary benefit.20 Mr. Bass has faced strong industry backlash as many agree that it is wrong “that a wealthy business man should be able to reap financial rewards for a situation he creates.”21 Additionally, “pharmaceutical companies claim his methods are an abuse of process and stock manipulation.”22 The pervasive attitude towards Mr. Bass is generally one of contempt, as society has shown the USPTO that they do not approve of his exploitive conduct. 23 The duty of candor and good faith is one requirement that the USPTO places on potential patent owners to thwart potential misuse similar to the conduct of Mr. Bass.24 The duty of candor and good faith ensures that “U.S. patent applicants must act with candor, good faith, and honesty during patent prosecution with the USPTO” as it requires that “applicants must provide the USPTO with all material prior art known to them.”25 The duty of candor and good faith extends to the conduct of patent applicants during the patent application process to guard the powerful rights that are granted by the USPTO.26 The interest protected by the USPTO is primarily one of public interest as the USPTO is seeking to promote “the most effective patent examination” by protecting the very nature of the patent process.27 While the duty of good faith and candor has been in place in some aspect since 1977, proponents have argued for the adoption of the duty of good faith and candor in new, previously

(Jan. 7, 2015), https://www.ft.com/content/a2a706a0-969c-11e4-922f-00144feabdc0. 19 Kenneth J. Costa, Note, Patent System Manipulation: Hedge Funds Abusing IPR, Poor Patent Quality & Pharmaceutical Monopolies, 35 CARDOZO ARTS & ENT. L.J. 177, 178 (2016). 20 See id. 21 Quinn, supra note 17. 22 Costa, supra note 19, at 179. 23 Id. 24 Gina M. Bicknell, Note, To Disclose or Not to Disclose: Duty of Candor Obligations of the United States and Foreign Patent Offices, 83 CHI.-KENT L. REV. 425, 428 (2008). 25 Id. at 428. 26 See id. 27 Duty to Disclose Information Material to Patentability, 37 C.F.R. § 1.56(a) (2018). continued . . . 2018] HOW THE ACTIONS OF KYLE BASS 15 FORCED THE USPTO uncovered, situations.28 Proponents of these changes have argued that the duty of good faith and candor lacks teeth in its application as the USPTO does not investigate potential violations of the duty and instead the investigation is delegated to the litigation arena.29 Consequently, violations of the duty are difficult to prove. At best, proving a violation requires a showing of clear and convincing evidence.30 These are just a few of the many different problems that have been argued over in the duty of candor and good faith.31 However, as to Mr. Bass, it seems that the court is willing to expand the duty of good faith and candor beyond its previously construed boundaries to include the actions of parties who are using the patent system in ways like Mr. Bass.32 As illustrated above, the duty of candor and good faith would not ordinarily apply to Mr. Bass as the duty is limited to “every person who is substantially involved in the prosecution of an application.” 33 Instead, Mr. Bass’s method involves filing an IPR after the patent has been issued.34 He has no involvement in the patent application process as the patents that he challenges have already been issued.35 However, as mentioned before, the general consensus is that this behavior is not approved as can be seen by the general failure of his method.36 Because Mr. Bass’s motivations appear to be primarily pecuniary, his monetary return is a good indicator of his success and while Mr. Bass has targeted fourteen different medicines, only three were invalidated and these invalidations did not lead to a decrease in stock prices as Mr. Bass had suggested.37 The most damning factor to Mr. Bass is that a patent that he unsuccessfully challenged was later successfully challenged by a generic-drug company.38 This would seem to suggest that the USPTO disfavors the actions of Mr. Bass up to the point of treating him

28 See, e.g., David Hricik, Aerial Boundaries: The Duty of Candor as a Limitation on the Duty of Patent Practitioners to Advocate for Maximum Patent Coverage, 44 S. TEX. L. REV. 205, 244–246 (2002) (critiquing the current application of the duty of good faith and candor). 29 See id. at 242. 30 Id. at 243. 31 See id. at 242–58 (exploring other problems raised regarding the duty of candor and good faith). 32 See infra Part IV. 33 Hricik, supra note 28, at 241. 34 Costa, supra note 19, at 178. 35 Id. 36 Susan Decker, Dallas’ Kyle Bass Blames Big Pharma ‘Cabal’ for Lost Fights Over Drug Prices, DALL. NEWS (Apr. 2017), https://www.dallasnews.com/business/health-care/2017/04/10/dallas-kyle-bass- blames-big-pharma-cabal-lost-fights-drug-prices. 37 Id. 38 Id. continued . . .

16 WAKE FOREST J. [VOL. 19 BUS. & INTELL. PROP. L. differently. However, Mr. Bass appears to be following the proper methods and requirements of the USPTO.39 Therefore, the USPTO appears to be analyzing Mr. Bass’s motivations for challenging these patents in a mutant good faith analysis.40 This is an extension of the duty of good faith and candor beyond its customaries boundaries of those “associated with the filing prosecution of a patent application.”41 The USPTO, through its treatment of Mr. Bass, is extending the duty of good faith and candor to include those involved in the IPR process just as it has treated patent trolls with disfavor. This Comment is focused on the duty of good faith and candor and how it is changing in response to new stimuli, namely Mr. Bass and his abuse of the IPR system. While the USPTO has not explicitly stated that they are expanding the duty of good faith and candor to encompass his behavior, their actions propose otherwise.42 Part II of this Comment will examine the central concepts behind the patent system, the difficulties in joining patent laws with the U.S. legal system, and the problems that have resulted from the implementation of patent laws. Part II will also examine how the USPTO has responded to these problems and the different solutions that have been proposed. Part III will examine the duty of good faith and candor and the requirements that it places upon participants in the patent application process. In Part III, this Comment will also examine the problems that have arisen within the duty of good faith and candor and the solutions that have been proposed. Part IV will examine Mr. Bass’s situation, how his actions relate to the patent system, the view that the USPTO takes, and the general view of his actions. Additionally, Part IV will also analyze the IPR process and how Mr. Bass was able to abuse this process for his own benefit. Part V will examine how the duty of good faith and candor has been expanded so as to include Mr. Bass and others choosing to use the IPR process. Part V will also include a comparative analysis between Mr. Bass and other separate issues within the patent system that have recently arisen. Lastly, Part VI will conclude with possible resolutions to the unwritten expansion of the duty of good faith and candor.

39 See Costa, supra note 19, at 177–78. 40 Bicknell, supra note 24, at 428. 41 37 C.F.R. § 1.56(a) (2018). 42 Jan Wolfe, Hedge Fund Manager Kyle Bass Loses Challenge to Acorda Patents, REUTERS (Mar. 10, 2017, 5:42 PM), https://www.reuters.com/article/ip- patent-acorda/hedge-fund-manager-kyle-bass-loses-challenge-to-acorda-patents- idUSL2N1GN20G. 2018] HOW THE ACTIONS OF KYLE BASS 17 FORCED THE USPTO

II. BACKGROUND Patent laws are a peculiar conglomeration of different rights and limitations. 43 While patent law was primarily instituted to promote competition and encourage innovation among inventors, it also places strict limitations on how inventors can use their inventions.44 In the broader context of public rights, patent law is unique in that “most government attempts to restrict lawful public conduct are met with protests in the streets, editorials condemning the practice, or lawsuits seeking to eliminate or limit the government-imposed restrictions.”45 Instead, patent law offers “a government-issued, government-enforced right [to] one person (or their assigns) to prevent others from engaging in lawful activity.”46 This presents an interesting dichotomy between the invasive and restrictive behavior of the USPTO and the powerful rights that are granted to every patent owner. Inventors have seemingly determined that the various rights and protections that are given under patent law are worth the hassle of the duties and limitations imposed upon them.47 This tension with patent laws is also seen in the way that patent laws interact with other areas of law.48 Patent laws have an interesting history of cooperation with other laws in the American legal system. While patent laws create “an incentive to innovate by granting a limited right to exclude others from making, using, or selling a useful new product or invention,” this does not always flow well with other legal ideas.49 Patent laws provide a boost to the market by giving patent owners exclusionary rights, other laws such as antitrust laws explicitly prohibit this exclusionary and anti- competitive behavior. 50 Therefore, the current layout of patent law seemingly is in direct contrast with other areas of law, namely antitrust law.51 This has resulted in great tension as “courts grapple with the tension between a patent’s grant of the lawful right to exclude and

43 Clark D. Assay, Intellectual Property Law Hybridization, 87 COLO. L. REV. 65, 79–80 (2016) (“Indeed, design patents grant exclusive rights in the aesthetic, nonfunctional qualities of an article of manufacture, rather than the utilitarian ideas behind it.”). 44 Robert J. McAughan, Jr. & Jeffrey A. Andrews, Patent Law Primer—What Is Patentable?, 45 THE ADVOC. (TEX.) 8, 8 (2008). 45 Id. 46 Id. 47 Id. 48 Id. at 10. 49 Carson & Love, supra note 1, at 8. 50 Id. 51 See id. (“At the heart of pay-for-delay lawsuits is the tension between antitrust law and patent law.”). continued . . .

18 WAKE FOREST J. [VOL. 19 BUS. & INTELL. PROP. L. antitrust law’s proscription on exclusionary conduct.”52 As a result, the tension caused by patent law has forced the American legal system to adapt patent law to fit within the confines of the American legal system.53 However, the resulting chaos has left many areas of patent law unsettled, such as “the effect under the antitrust laws, if any, that the evolution of a patent monopoly into an economic monopoly might have upon a patent holder’s right to exercise the exclusionary power ordinarily inherent in a patent.”54 This has resulted in deep concern over potentially undermining the patent law system at the expense of antitrust law implications.55 As a result, the legal system has had to fix the holes created by the exploitation of the differences between the two systems.56 However, as patent laws have been forced to carve out their own niche within the greater macrocosm of law, new developments have arisen that have caused patent laws to grow and expand with the changing tides.57 Throughout the history of the patent system, courts and legislators have struggled with defining the proper response: “[m]ost of the patent laws, however, have undergone repeated changes . . . the most significant changes were made in the Patent Act of 1952.”58 One of the primary issues that has been debated is the injunctive process for patents.59 Injunctive relief is notoriously easy to obtain as a result of the “loose guidelines provided to the courts by Section 283.”60 In patent law, the courts hold virtually unfettered injunctive power as “[t]he several courts having jurisdiction of cases under this title may grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable.”61 This broad grant of power allows the court to

52 Id. 53 See Dan L. Burk & Mark A. Lemley, Policy Levers in Patent Law, 89 VA. L. REV. 1575, 1576 (2003) (noting that the Supreme Court has “held that patent standards in the United States are designed to adapt flexibly to both old and new technologies”). 54 SCM Corp. v. Xerox Corp., 645 F.2d 1195, 1204 (2d Cir. 1981). 55 See id. 56 See id. 57 Michael R. Patrick, Intellectual Property Law, GP SOLO, Apr. 2013, at 16, 17, https://www.americanbar.org/publications/gp_solo/2013/march_april/intellectual_pr operty_law.html. 58 Harvey, supra note 3, at 1136. 59 See, e.g., Jaideep Venkatesan, Compulsory Licensing of Nonpracticing Patentees After eBay v. MercExchange, 14 VA. J.L. & TECH. 26, 27–30 (2009) (discussing criticisms of injunctive relief in patent cases, specifically after the decision in eBay Inc. v. MercExchange, LLC, 547 U.S. 388, 391 (2006)). 60 Harvey, supra note 3, at 1157. 61 35 U.S.C. § 283 (2018). continued . . . 2018] HOW THE ACTIONS OF KYLE BASS 19 FORCED THE USPTO choose when to apply powerful injunctions to protect the patent owner when the court sees fit.62 These injunctions can have a disastrous effect on the accused as it can force them to shut down their businesses, ignore potential profits, etc. while “awaiting judgment on the underlying infringement claim.”63 Because of the manner in which courts grant a patent to one entity, injunctions are preferred as they retain this individualistic right; however, critics note that courts have been hesitant to accept the true weight of this injunctive power. 64 The difficulty comes in weighing the protections that should be offered to the patent owner to prevent potential appropriation with the protections that should be offered to the alleged infringer in case the alleged infringer is not found to have used the patent.65 Over the course of the patent system’s existence, critics have been quick to denote the problems within the system; however, they have also laid out several solutions to these problems that have been met with varied success. 66 In order to aid the patent owner who has been infringed upon, the courts created a “general rule that an injunction will issue when infringement has been adjudged, absent a sound reason for denying it,” which allowed for a broad presumption in favor of injunctions.67 In later review of the district court’s general rule by the Supreme Court, it was decided that the familiar “principles of equity” require “a plaintiff seeking a permanent injunction [to] satisfy a four- factor test before a court may grant such relief.”68 The Supreme Court explicitly found that “[n]othing in the Patent Act indicates that Congress intended such a departure,” and the Patent Act only provides that this relief may be equitably provided.69 The back and forth between the courts illustrates the extent to which the courts are willing to mold the patent system to fit changes in law or perception. Critics of the patent system have also decried the claim of willful infringement as it has been claimed in “almost every patent

62 See Christopher A. Cotropia, Post-Expiration Patent Injunctions, 7 TEX. INTELL. PROP. L.J. 105, 108–09 (1998) (providing a sample of cases where courts ordered injunctions for various reasons). 63 Harvey, supra note 3, at 1157. 64 See id. at 1154 –55, 1157. 65 Herbert F. Schwartz, Injunctive Relief in Patent Cases, 50 ALB. L. REV. 565, 565–66 (1986). 66 See, e.g., Carl Shapiro, Patent System Reform: Economic Analysis and Critique, 19 BERKELEY TECH. L.J. 1017, 1017 (2004) (discussing how “the chorus of complaints” regarding the patent system led the Federal Trade Commission and Department of Justice to recommend major reforms of the system). 67 Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1247 (Fed. Cir. 1989) (citing W.L. Gore & Assocs., Inc. v. Garlock, Inc., 842 F.2d 1275, 1281 (Fed. Cir. 1988)). 68 eBay Inc. v. MercExchange, LLC, 547 U.S. 388, 391 (2006). 69 Id. at 391–92. continued . . .

20 WAKE FOREST J. [VOL. 19 BUS. & INTELL. PROP. L. infringement case.”70 In 1983, willful infringement was interpreted to capture any “potential infringer [who] has actual notice of another’s patent rights[;] he has an affirmative duty to exercise due care to determine whether or not he is infringing.”71 This standard imposes a duty upon the potential infringer “to seek and obtain competent legal advice from counsel before the initiation of any possible infringing activity.”72 As the court is allowed to increase damages up to threefold, willful infringement can be disastrous for an infringing party. 73 Because this claim requires subjective knowledge from the accused, critics note that it could cause potential patent infringers to avoid doing thorough patent searches so that they may argue that the infringement was not willful.74 Critics then allege that this defeats the purpose of the patent system by encouraging patent infringement.75 Various solutions have been offered to fix the alleged problems with the willful infringement test over the years.76 In 2007, the Seagate court decided that “the state of mind of the accused infringer is not relevant to this objective inquiry.”77 Under the Seagate test, courts required parties seeking to show willful infringement to show “by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent” and that the risk “was either known or so obvious that it should have been known to the accused infringer.”78 This led to a great deal of confusion among the courts as “the Seagate test excludes from discretionary punishment many of the most culpable offenders” who infringe a patent intentionally and maliciously, yet the court is unable to find the proper evidence to support the test for willful infringement.79 The Halo Court noted that in the case of such a malicious abuser “it is not clear why an independent showing of objective recklessness should be a prerequisite to enhanced damages.”80 The Supreme Court then decided to further change the rule so as to grant district courts the power “to punish the

70 Harvey, supra note 3, at 1154. 71 Underwater Devices Inc. v. Morrison-Knudsen Co., 717 F.2d 1380, 1389 (Fed. Cir. 1983), overruled by In re Seagate Tech., LLC, 497 F.3d 1360 (Fed. Cir. 2007). 72 Id. at 1390. 73 35 U.S.C. § 284 (2018). 74 Harvey, supra note 3, at 1154–55. 75 Id. 76 See, e.g., id. at 1155 (proposing that courts raise the standard of proof for willful infringement). 77 In re Seagate Tech., LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007), abrogated by Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923 (2016). 78 Id. 79 Halo Elecs., Inc., 136 S. Ct. at 1926. 80 Id. continued . . . 2018] HOW THE ACTIONS OF KYLE BASS 21 FORCED THE USPTO full range of culpable behavior . . . free from the inelastic constraints of the Seagate test” while generally reserving the heightened punishment “for egregious cases typified by willful misconduct.”81 The solutions offered for the willful infringement claim illustrate the extent to which the courts are willing to go in expanding and changing the patent system to fit the needs of society. Willful infringement claims and claims for injunctive relief are just two of the many areas of patent law that have been thoroughly debated and vetted over the years.82 The solutions offered in these two areas are demonstrative of the readiness of courts and the USPTO to change patent law for the better through the common law. By fixating on the general reception of these laws, the court is able to use common law to fix these problems.83 One area in which patent law has not been as ready to expand is the duty of good faith and candor.84 The duty of good faith and candor has been in place since 1977; however, it has not changed substantially in the 41 years of implementation. 85 One proposed change was included in Section 5 of the proposed Patent Reform Act of 2005 which would create a “duty of candor and good faith for all parties involved with the patent application process” that would be governed and regulated by the USPTO.86 This would grant the USPTO the power to investigate a variety of violations of this duty, which proponents of the Act allege would eliminate the overwhelming use of the inequitable conduct defense.87 While it is hard to establish a violation in the courts under the current interpretation of the duty of good faith and candor, the proposed change in the duty of good faith and candor would force the USPTO to monitor violations of the duty.88 Consequently, this would allow the USPTO to focus on actual instances where the individual has promulgated actual fraud upon it.89 By shifting the responsibility from the courts to the USPTO, this act would allow the party most knowledgeable about the overall process to decide

81 Id. at 1933–34. 82 See generally id. (reviewing the test for treble damages in willful infringement action); Elizabeth E. Millard, Note, Injunctive Relief in Patent Infringement Cases: Should Courts Apply a Rebuttable Presumption of Irreparable Harm After eBay, Inc. v. Mercexchange, LLC, 52 ST. LOUIS L. REV. 985, 987 (2008) (“Since eBay, some district courts have held that there is still a presumption of irreparable harm in the preliminary injunction context, but others have rejected this notion.”). 83 See Halo Elecs. Inc., 136 S. Ct. at 1928. 84 See Bicknell, supra note 24, at 428–29. 85 Id. at 428. 86 Harvey, supra note 3, at 1152. 87 Id. 88 Id. 89 Id. continued . . .

22 WAKE FOREST J. [VOL. 19 BUS. & INTELL. PROP. L. whether actual fraud was shown.90 While the Patent Reform Act of 2005 proposed one change to the duty of good faith and candor, the duty has not seen as many expansions or changes as other areas of patent law.91 This, however, changed upon Mr. Bass’s treatment by the USPTO, which established that the USPTO is willing to expand the duty of good faith and candor beyond the customary treatment of the USPTO and the courts. 92 However, the resulting problem is how far are they willing to expand it and what effect will his treatment have on patent applications and those involved. As was seen with both the injunctive process and willful infringement, the primary source of law that allows for the expansion of patent laws is the common law.93 Mr. Bass’s treatment in the IPR process demonstrates that the adjudicative body is expanding the duty of good faith and candor to new realms.94 Patent law has previously shown that it is willing to adapt to the changing climate and that is crucial in how it considers the duty of candor and good faith.95 In establishing how the duty of good faith and candor has changed, it is crucial to first analyze what the duty of candor and good faith was originated for and how this could change.

III. THE DUTY OF CANDOR AND GOOD FAITH The duty of candor and good faith acts as a bar to certain conduct during the patent application process as a way of regulating those involved in a patent application.96 This duty requires that “U.S. patent applicants must act with candor, good faith, and honesty during patent prosecution with the USPTO”, and this duty has been in effect since 1977.97 This multi-faceted duty often arises in regards to the duty it imposes upon patent applicants to disclose “all material prior art known to them”, which will include “all references useful for determining the novelty and non-obviousness of a patent applicant’s claimed subject

90 See Bicknell, supra note 24, at 440–41 (providing a brief background of how the USPTO addresses the issue of fraud). 91 See Harvey, supra note 3, at 1136, 1138. 92 See infra Part V. 93 Devin Salmon, A Sign of the Times? A Brief Look at the Trend of Patent Cases Before the US Supreme Court, IP.COM (July 5, 2017), https://ip.com/blog/a- sign-of-the-times-a-brief-look-at-the-trend-of-patent-cases-before-the-us-supreme- court/. 94 See infra Part V. 95 See Harvey, supra note 3, at 1136 (providing a short history of statutes Congress has passed since 1793). 96 Bicknell, supra note 24, at 428. 97 Id. continued . . . 2018] HOW THE ACTIONS OF KYLE BASS 23 FORCED THE USPTO matter.”98 The concept of the duty of good faith and candor, however, can run afoul of the ordinary conceptualization of the U.S. legal system.99 The duty of good faith and candor would seemingly conflict with the duty of confidentiality that would suggest that the patenting party should avoid revealing this self-deprecating information.100 By requiring each party to disclose all material prior art known to them, the USPTO is forcing each party involved to disclose material that might ordinarily be protected by confidentiality rules. 101 This is demonstrative of the great import that is given to the duty of candor and good faith as “[e]ven critics of the inequitable conduct defense recognize that the underlying duty to disclose material information serves obvious and legitimate purposes.” 102 Therefore, the duty of candor and good faith is an important piece of the patent application process. The duty of candor and good faith is of even greater importance because under the regulations of the patent system “a patent is presumed valid” and “one of the USPTO’s most important functions is to ensure it does not a grant a patent on subject matter already known or used by others.”103 The presumption of validity places the USPTO in a difficult position as the odds are seemingly weighed in favor of the patent applicant. 104 The USPTO therefore must “rely upon [the patenting party’s] integrity and deal with them in a spirit of trust and confidence.”105 It is through this duty of candor and good faith that the USPTO is able to meet the duty that it owes to patentees by ensuring that these restrictive holds on the competitive market are only granted to those who are deserving.106 Inherent in the duty of good faith and candor is public policy as “[a] patent by its very nature is affected with a public interest,” and “[t]he public interest is best served, and the most effective patent examination occurs when, at the time an application is being examined, the Office is aware of and evaluates the teachings of all information material to patentability.” 107 Therefore, the public interest is the primary push for the duty of candor and good faith; consequently, this illustrates the focus and the view that the legislative

98 Id. 99 See Hricik, supra note 28, at 246–47. 100 Id. 101 Id. 102 Id. at 244. 103 Bicknell, supra note 24, at 428. 104 Id. 105 Hricik, supra note 28, at 241. 106 Id. at 243. 107 Duty to Disclose Information Material to Patentability, 37 C.F.R. § 1.56(a) (2018). continued . . .

24 WAKE FOREST J. [VOL. 19 BUS. & INTELL. PROP. L. and adjudicative parties should take when choosing whether or not to expand the duty of candor and good faith. The public interest can primarily be seen through their regard of a party and his or her conduct and the effect that this conduct has upon the public.108 To understand how a legislating body will change the duty of candor and good faith, it is important to understand the current boundaries of this area of law. The duty of candor and good faith is not limited to impacting what is required from the patent applicant. 109 Instead it reaches “each individual associated with the filing and prosecution of a patent application.”110 Consequently, everyone involved in the process of filing the patent must meet the requirements of the duty of good faith and candor or the patent could be invalidated.111 The duty of good faith and candor is not limited to the parties appearing before the USPTO in the application process. 112 Instead the duty stretches to include inventors, patent attorneys, agents, and any person substantively involved in the preparation or prosecution of the application.113 This places a high requirement on the patent applicant as they must ensure that everyone involved in the process meets the duty of good faith and candor.114 As the patent process has come to involve many different people whom the patenting party is responsible for, it places a high standard on the patent applicant to account for each party that is corresponding with the USPTO or involved in applying for the patent.115 The duty of good faith and candor establishes guidelines for how patent applicants should interact with the USPTO during the process of applying for a patent; however, it is not unlimited in its scope.116 Under the current formulation of the duty of candor, patent applicants are not required “to disclose all possible information the applicant knows of that may be related to the patent or to conduct a search of prior documents . . . for unknown information that could contribute to the examiner’s evaluation of the four patentability requirements.” 117 However, because the patent process involves one party appealing to

108 See id. 109 Id. 110 Id. 111 See id. 112 Id. 113 Id. § 1.56(c). 114 See id. 115 See id. 116 See Bicknell, supra note 24, at 428. 117 Elizabeth Peters, Are We Living in a Material World?: An Analysis of the Federal Circuit’s Materiality Standard Under the Patent Doctrine of Inequitable Conduct, 93 IOWA L. REV. 1519, 1526 (2008). continued . . . 2018] HOW THE ACTIONS OF KYLE BASS 25 FORCED THE USPTO the USPTO for a patent, the duty of candor does establish that the party asking for a patent must disclose known information that could prove important to the USPTO in its analysis of the patent application.118 This forces the patenting party to reveal all information that could influence the USPTO’s decision.119 If the court discovers that the patenting party failed to reveal any material information, the patent could be subject to a future challenge of the patent’s validity.120 Furthermore, if the patenting party attempts to enforce the patent, the accused infringer can and often will argue that the patenting party engaged in inequitable conduct, a complete defense to infringement. 121 The accused infringer then faces the burden of proving that the patenting party engaged in inequitable conduct through “clear and convincing evidence that [the undisclosed information was] material to the prosecution of [the patenting party’s] patent, and that [the patenting party] intended to deceive the PTO by failing to disclose those pieces of information.”122 All the accused infringer must show is that the patenting party engaged in this conduct during some portion of the patenting process and the USPTO will rule that the entire patent is unenforceable.123 The duty of candor and good faith is therefore a very powerful tool when used properly and it actually has wide support among both patent holders and patent lawyers even though patent infringers do not tend to support it for obvious reasons.124 The USPTO is able then to use the duty of good faith and candor to ensure that patent applicants are exhibiting a standard of care during the application process.125 However, the question becomes how the duty of candor and good faith should adapt to different situations such as Mr. Bass and his abuse of the patent system. Mr. Bass is not technically within the purview of the duty of good faith and candor as he is not involved in the patent application process and instead is simply filing an IPR. However, the USPTO, through its dismissal of Mr. Bass’s IPRs has shown that it is expanding the duty of good faith and candor to include conduct such as

118 Id. 119 See id. 120 Id. at 1519. 121 Id. at 1523. 122 Id. at 1529. 123 Id. at 1542. 124 See Harvey, supra note 3, at 1152 (“Due to its subjective nature, the inequitable conduct defense is time consuming and expensive, and the abuse of the defense adds to the delays and increases the costs of litigation.”). 125 See id. (“Limiting the inequitable conduct defense to cases of actual fraud and establishing a more manageable USPTO-controlled duty of candor will potentially make the defense less attractive, resulting in reduced litigation.”). continued . . .

26 WAKE FOREST J. [VOL. 19 BUS. & INTELL. PROP. L. his.126

IV. KYLE BASS AND HIS ABUSE OF THE PATENT SYSTEM Kyle Bass is a hedge fund manager for Hayman Capital Management who, in 2015, devised a novel method for taking advantage of the patent system by shorting the stock of various companies, primarily pharmaceutical companies. 127 The method of using the IPR process to short the stock of companies was not common in the industry before Mr. Bass become involved; therefore, the USPTO has been forced to completely analyze the issue anew by considering the benefits of allowing Mr. Bass’s conduct to subsist.128 Mr. Bass’s method of shorting the stock is centralized around the IPR process through which Mr. Bass challenges the validity of various pharmaceutical patents by filing an action with the USPTO which then allows the IPR to be analyzed by the Patent Trial and Appeal Board (“PTAB”).129 The IPR process was established via statute which allows “[a] petitioner in an inter partes review [to] request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.”130 These challenges work much in the same way of an invalidity challenge which “asserts that the patent holder did not satisfy the basic requirements to obtain a patent, usually because the claimed invention was not novel or would have been obvious when it was invented.”131 However, unlike an invalidity challenge a “person who is not the owner of a patent may file with the [Patent] Office a petition to institute an inter partes review of the patent.” 132 The openness of the IPR process allows for parties like Mr. Bass to file an action against different patents alleging that they were improperly issued.133 The IPR process was instituted to alleviate several problems within

126 See Costa, supra note 19, at 188–89 (emphasizing the “shocking turn of events” that emerged from Mr. Bass’s case). 127 Id. at 178. 128 Id. at 184. 129 Id. at 178. 130 35 U.S.C. § 311(b) (2018). 131 Roger Allan Ford, Patent Invalidity Versus Noninfringement, 99 CORNELL L. REV. 71, 73–74 (2013). 132 35 U.S.C. § 311(a). 133 See generally Joe Mullin, Supreme Court Will Weigh in on Troll-Killing Patent-Review Process, ARS TECHNICA (June 13, 2017, 9:10 AM), https://arstechnica.com/tec-policy/2017/06/supreme-court-will-weigh-in-on-troll- killing-patent-review-process/ (discussing the effect of IPRs on patent trolling). continued . . . 2018] HOW THE ACTIONS OF KYLE BASS 27 FORCED THE USPTO the patent system in that “challenging bad patents in court can be hard and very expensive,” “challenges are often decided by a judge or jury with little technical knowledge,” and it is crucial “for the public to have the ability to challenge bad patents.” 134 However, where the IPR process was originally instituted to allow the public to challenge bad patents that rightfully belong to the public, Mr. Bass has no intention to actually make use of the patent. 135 Instead, Mr. Bass then uses his position as a hedge fund manager to decrease the value of the stock of the company whose patent he is challenging, for his own pecuniary benefit.136 In theory, after announcing that the company’s patent has been challenged, the stock price will drop and Mr. Bass will earn a profit after having shorted the stock.137 Mr. Bass has become the primary user of this method and “[a]s of February 2016, Mr. Bass has filed thirty- seven such actions.”138 Mr. Bass alleges his focus lies in “benefit[ting] patients by increasing competition in the market place, thus causing prescription prices to decrease for Medicare patients and everyone else.” 139 Mr. Bass has increasingly tried to argue that he is a Robin Hood of the patent world where “when I win everybody wins. The only person that loses are the shareholders and the managements teams of the companies that I’m challenging.”140 Mr. Bass seems to be arguing that his intentions are focused on more than just money and consequentially, his conduct should be allowed. These allegations are met with resistance on both sides as the pharmaceutical industry alleges that his challenges are “an abuse of process and stock manipulation.”141 Additionally, “familiarity with post grant procedures at the USPTO and why they were created in the first place” has caused the industry to feel as if Mr. Bass is extorting the patent system for his own benefit.142 While Mr. Bass argues that he is only “targeting pharmaceutical corporations that hold bad patents or patents, that are extended by a change in the dosage or some other minute detail,” the consensus among the industry and the general public

134 Vera Ranieri, EFF Files Brief in Support of Ability to Challenge Bad Patents at the Patent Office, ELECTRONIC FRONTIER FOUND. (Oct. 30, 2017), https://www.eff.org/deeplinks/2017/10/eff-files-brief-support-ability-challenge-bad- patents-patent-office. 135 Costa, supra note 19, at 178. 136 Id. 137 Id. 138 Id. 139 Id. at 178–79. 140 Javier Hasse, Kyle Bass Explains the ‘Patent Trolls’ Situation in the Pharma Industry, YAHOO FIN. (Jan. 3, 2016), https://finance.yahoo.com/news/kyle-bass- explains-patent-trolls-013820193.html. 141 Costa, supra note 19, at 179. 142 Quinn, supra note 17. continued . . .

28 WAKE FOREST J. [VOL. 19 BUS. & INTELL. PROP. L. is that this is not true. 143 The claim appears to be dubious at best because hedge funds like Mr. Bass’s are focused on challenging the patents of pharmaceutical companies primarily for their own financial benefit.144 Not only are these pharmaceutical companies notorious for holding bad patents which are susceptible to the IPR process, hedge funds also commonly believe that the stocks of pharmaceutical companies are valued too high making them easy subjects to short the stock of.145 Therefore, while Mr. Bass has claimed that his attack on the patent system is primarily motivated out of a greater concern for the public wellbeing, the public perception of him appears to disagree.146 As mentioned previously, Mr. Bass has filed thirty-seven IPR actions seeking to invalidate various pharmaceutical patents.147 These actions have not been very successful as “only three of the fourteen medicines . . . targeted at the U.S. patent office were invalidated. None led to lower drug prices. Short-term share drops in companies he petitioned didn’t endure.” 148 The USPTO’s response to Mr. Bass’s IPRs is indicative that they do not approve of his conduct and that it is not a viable avenue; however, the most damning fact to Mr. Bass is that “a generic-drug company achieved what Bass could not: Patents he unsuccessfully challenged on Acorda Therapeutics Inc.’s multiple sclerosis drug Ampyra were thrown out in a court case.”149 Because a generic manufacturer was allowed to do what Mr. Bass was not, the USPTO appears to be saying that Mr. Bass’s conduct was improper. But the USPTO has been careful not to directly say this as they acknowledge that a pecuniary interest is inherent to “nearly every patent and nearly every inter partes review. As such, an economic motive for challenging a patent claim does not itself raise abuse of process issues. We take no position on the merits of short-selling as an investment strategy other than that it is legal.”150 However, this statement does not appear to be congruous with the fact that a generic drug manufacturer was able to invalidate a patent that Mr. Bass was not able to. 151 Consequently, the USPTO is drawing a distinction between Mr. Bass

143 Costa, supra note 19, at 179. 144 See id. at 186 (“The pharmaceutical companies argue that the hedge funds are using IPR to manipulate markets and earn private financial gains, which constitutes an abuse of process . . . and should be dismissed as such.”). 145 Id. at 186–87. 146 See id. 147 Id. at 178. 148 Decker, supra note 36. 149 Id. 150 Coal. for Affordable Drugs VI, LLC v. Celgene Corp., Nos. IPR2015-01092, -01096, -01102, -01103, -01169 (P.T.A.B. Sept. 25, 2015). 151 See Decker, supra note 36. continued . . . 2018] HOW THE ACTIONS OF KYLE BASS 29 FORCED THE USPTO and other parties; this distinction is captured within the expanded duty of good faith and candor.

V. WHAT THE DUTY OF GOOD FAITH AND CANDOR MEANS FOR KYLE BASS Mr. Bass’s conduct is in danger of running afoul of the patent system as his conduct is seen to be by some as “blatant illegal market manipulation.”152 However, because the USPTO recently announced that his behavior was legal, it is restricted in its analysis of Mr. Bass’s conduct.153 While it could be argued that this would fall within the purview of the anti-competitive bar imposed by antitrust law, patent law, itself contradicting antitrust law to a certain degree, exists in combat with antitrust law and it would be difficult for a court to argue that it should be inserted now.154 In contrast, the duty of good faith and candor, a duty that explicitly exists in the field of patent law, is primarily supported by those in the patent industry who argue that it benefits the patent system as a whole.155 As the duty of candor and good faith is limited to those involved in the patent application process, the question becomes how should the duty of candor grow to encompass the conduct of Mr. Bass.156 Because he is not directly involved with the patent application process, the original confines of the duty of candor and good faith would not encompass his conduct. 157 However, the recent conduct of the USPTO suggests that they have modified the duty to encompass Mr. Bass’s conduct. When Mr. Bass filed an IPR against fourteen medicines, only three of the medicines were invalidated, which illustrates that the USPTO has generally looked with disfavor upon Mr. Bass’s method.158 It is illustrative that while he did see share drops in the companies that owned the patents for the invalidated medicines, the share drops were short-term and therefore, the method has not worked for Mr. Bass.159 This on its own would seem to suggest that Mr. Bass is unlikely to win on these IPR claims, and as he has almost stopped bringing new cases entirely, it looks as if he has abandoned this

152 Costa, supra note 19, at 178. 153 See Coal. for Affordable Drugs VI, LLC, Nos. IPR2015-01092, -01096, - 01102, -01103, -01169. 154 Carson & Love, supra note 1, at 8–9. 155 See Harvey, supra note 3, at 1152. 156 See Bicknell, supra note 24, at 428–31. 157 See id. (stating that the duty of candor and good faith applies to U.S. patent applicants). 158 See Decker, supra note 36. 159 Id. continued . . .

30 WAKE FOREST J. [VOL. 19 BUS. & INTELL. PROP. L. method.160 However, the duty of good faith and candor question is raised when it was revealed that after Mr. Bass failed in his IPR action against Acorda Therapeutics Inc.’s drug Ampyra, a generic-drug manufacturer was able to get the same patent thrown out.161 By denying the claim of Mr. Bass, yet allowing a generic-drug manufacturer to bring the same claim, this seems to be illustrative that the USPTO is examining the motives of the parties bringing the action against each patent. In the original conceptualization of the duty of good faith and candor, it only applied to parties involved in the patent application process.162 However, by denying Mr. Bass’s IPR of the Ampyra drug, the USPTO has established a flexing of the boundaries of the duty of good faith and candor. Like patent applicants, the IPR process involves a party appealing ex parte to the USPTO for a certain action against a patent.163 The difference between the two is primarily that the patent applicant is seeking patent approval, while the IPR petitioner is seeking patent invalidation.164 However, the motives are primarily the same as a party in either situation has a high motive to convince the USPTO to rule in their favor.165 As with the patent application process, during the IPR process the public interest should require that the IPR applicant “act with candor, good faith, and honesty” during the process.166 However, the conduct of Mr. Bass does not fit as easily within the conceptualization of this duty as previously seen within the patent application process.167 Instead, when the USPTO ruled against his IPR application, it appeared to look primarily at his motives in bringing the action.168 Therefore, the USPTO has expanded the duty of candor and good faith beyond its ordinary limitations as it was previously limited to the patent application process and now includes an analysis of the motives of the applicant in the IPR process. The duty of good faith and candor in Mr. Bass’s case appears to be primarily focused on his motives in bringing the action and the public consensus on his actions. Mr. Bass’s primary focus appears to be in allowing “he and his shareholders [to] profit by challenging patents.”169

160 Id. 161 Id. 162 37 C.F.R. § 1.56(c) (2018). 163 Ann E. Motl, Note, Inter Partes Review: Ensuring Effective Patent Litigation Through Estoppel, 99 MINN. L. REV. 1975, 1976 (2015). 164 Id. at 1977. 165 Id. at 1979. 166 Bicknell, supra note 24, at 428. 167 Costa, supra note 19, at 187–88. 168 Id. at 177–78, 188. 169 Id. at 178. continued . . . 2018] HOW THE ACTIONS OF KYLE BASS 31 FORCED THE USPTO

Because patent laws are meant to “provide an incentive to innovate,” Mr. Bass’s actions run contrary to the central premise of patents laws and therefore, the USPTO is apt to look at his actions with disfavor.170 Like patent trolls who “rarely intend to use the patent to research, develop, or manufacture the underlying invention,” Mr. Bass has failed to show that he has any interest in furthering the patent system and its ideals.171 While Mr. Bass alleges that his “goal is to benefit patients by increasing competition thus causing prescription prices to decrease for Medicare patients and everyone else,” he has failed to illustrate this in his actions and it appears that his motives are pecuniary primarily.172 As Mr. Bass has failed in his method of attacking the patent system where others have succeeded, 173 the USPTO appears to be examining Mr. Bass’s motives in bringing the challenges. It appears the USPTO has created a de-facto extension of the duty of good faith and candor. However, the reasoning behind the extension of the duty of good faith and candor goes beyond an analysis of Mr. Bass’s motives and includes an examination of the general public consensus as to Mr. Bass and his conduct.174 Like patent trolls, Mr. Bass and his ilk are often portrayed in a bad light and “it still feels wrong to many in the industry that a wealthy businessman should be able to reap financial rewards for a situation he creates.”175 While Mr. Bass argues that “Medicare and U.S. consumers pay the ultimate price for the evergreening of bad patents by the pharma cabal,” the discerning public seems to generally believe that he is not actually helping the industry move forward.176 Legal scholars have even come forward proposing different methods to “facilitate an environment where generic drug companies can enter the market place more quickly” recognizing the issues that Mr. Bass poses to the future preservation of generic drug companies if he were allowed to succeed in his challenges. 177 Considered in unison with his questionable motives, it is clear that the USPTO has focused on his motives and the perception of those motives in extending the duty of good faith and candor to include his conduct even though the common law has yet to reflect that.

170 Carson & Love, supra note 1, at 8. 171 Harvey, supra note 3, at 1162. 172 Costa, supra note 19, at 178–79. 173 See Decker, supra note 36. 174 See Quinn, supra note 17. 175 Id. 176 Daniel Fisher, Hard Times for Patent Trolls and Challengers as Courts, Targets Fight Back, FORBES (Mar. 24, 2017, 9:46 AM), https://www.forbes.com/sites/danielfisher/2017/03/24/hard-times-for-patent-trolls- and-challengers-as-courts-targets-fight-back/#60f5bc6b2e7f. 177 Costa, supra note 19, at 180. continued . . .

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VI. CONCLUSION Various solutions have been offered to fix the alleged problems with the willful infringement test over the years.178 In 2007, the Seagate court decided that “the state of mind of the accused infringer is not relevant to this objective inquiry.”179 Under the Seagate test, courts required parties seeking to show willful infringement to show “by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent” and that the risk “was either known or so obvious that it should have been known to the accused infringer.”180 This led to a great deal of confusion among the courts as “the Seagate test excludes from discretionary punishment many of the most culpable offenders” who infringe a patent intentionally and maliciously, yet the court is unable to find the proper evidence to support the test for willful infringement.181 These solutions can then be debated before going to the courts where they become part of the common law by which most of the changes in patent laws come.182 While the duty of candor and good faith is not new to the area of patent law, critics of the patent system have worked to shape it into something that fits the needs of patent law and, like most laws and duties within patent law, it is a constantly shifting duty.183 As in Mr. Bass’s case, the USPTO has shifted the duty of good faith and candor that was ordinarily constrained to patent applicants and those involved in the patent application process, to include those involved in the IPR process such as Mr. Bass.184 It not only increases the breadth of who falls under the duty of candor and good faith, it also expands the duty of candor and good faith to include potential motives of the applicant.185 This is evident because the USPTO denied Mr. Bass’s IPR, while allowing a generic drug manufacturer’s claim against the patent to move forward.186 The major difference between these two appealing parties

178 See Harvey, supra note 3, at 1151. 179 See Shapiro, supra note 66, at 1019–20. 180 See id. 181 See Harvey, supra note 3, at 1152. 182 Id. at 1150. 183 See id. at 1152. 184 Bicknell, supra note 24, at 428. 185 See Harold C. Wegner, Patent Simpification Sans Patent Fraud, 20 AIPLA Q.J. 211, 214 n.11 (1992) (“Injecting the inequitable conduct issue into patent litigation wreaks havoc in the patentee’s camp. The inequitable conduct defense places the patentee on the defensive, subjects the motives and conduct of the patentee’s personnel to intense scrutiny, and provides an avenue for discovery of attorney-client and work product documents.”) 186 See Decker, supra note 36. continued . . . 2018] HOW THE ACTIONS OF KYLE BASS 33 FORCED THE USPTO is that Mr. Bass was not intending to use the IPR process so that he might use the patent, instead he was using the process for his own financial benefit.187 Additionally, many other parties in the patent field agree that it is wrong “that a wealthy businessman should be able to reap financial rewards for a situation he creates.”188 Therefore, there is a high incentive for the USPTO to expand the duty of candor and good faith as it is generally a public policy concern and public policy dictates that Mr. Bass’s conduct is wrong.189 As the USPTO appears to have implicitly expanded the duty of candor and good faith, it should now explicitly include the actions of Mr. Bass as a violation of the duty of good faith and candor. Just as the common law creates new patent laws, the USPTO’s actions in dealing with Mr. Bass have created new rules that govern the IPR process and those involved.190 While this most likely was not considered in the original conceptualization of the duty of candor and good faith, the public interest dictates that the USPTO should allow the duty of good faith and candor to grow to meet the policy needs of this ever changing area of law.191 The recent action of the USPTO serves a strong purpose in deterring further conduct like Mr. Bass’s; however, without a clear indication by the governing body, there will be some debate as to what their response actually means.192 Therefore, it is in the best interest of the USPTO to promptly issue a regulation stating the change in the duty of good faith and candor. While Mr. Bass no longer appears to be promulgating new challenges using this method, by explicitly placing this implicit expansion of the duty of good faith and candor into law, new, potential infringers will be thwarted.193

187 See id. 188 Quinn, supra note 17. 189 See Bicknell, supra note 24, at 428. 190 See Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923, 1926 (2016). 191 37 C.F.R. § 1.56(a) (2018). 192 See Decker, supra note 36. 193 See id.

WAKE FOREST JOURNAL OF BUSINESS AND INTELLECTUAL PROPERTY LAW

VOLUME 19 FALL 2018 NUMBER 1

COPYRIGHTING DNA: AN OFF-LABEL USE

Devdatta Malshe†

I. INTRODUCTION ...... 35 II. RATIONALE ...... 36 III. OBSERVATIONS ...... 43 IV. DISCUSSION ...... 46 A. IDEA-EXPRESSION DIVIDE ...... 47 B. AFC- ABSTRACTION FILTRATION COMPARISON ...... 47 C. MERGER DOCTRINE- FUNCTIONALITY DOCTRINE ...... 49 V. CONCLUSION ...... 50

† © 2019 Devdatta Malshe is a member of Bar Council of Maharashtra and Goa and was Editor of law quarterly-a journal of records, ‘Industrial Property Law Reporter’ from 2002-08. Recently, Malshe has published a monograph (Routledge) ‘Patent Pools Competition Law and Biotechnology’ ISBN: 978-1-138-58090-9. 2018] COPYRIGHTING DNA 35

POST ASSOCIATION FOR MOLECULAR PATHOLOGY V. MYRIAD GENETICS (“MYRIAD”) EVENTS ARE VIEWED FROM AN APPROACH WHERE CDNA IS DEEMED COPYRIGHTABLE SUBJECT MATTER. THE BASIC ANALYSIS SHOWS THAT THE IMPACT OF THIS PRONOUNCEMENT WILL BE FELT CONSIDERABLY IN AREAS OF INTELLECTUAL PROPERTY, NOTABLY PATENTS. THIS BASIC ANALYSIS MERITS CLOSER SCRUTINY AND PRESENTS AN EXTRAORDINARY CHALLENGE TO ESTABLISHED CONCEPTS, SUCH AS IDEA EXPRESSION DIVIDE, ABSTRACTION FILTRATION COMPARISON (“AFC”), MERGER DOCTRINE, AND FUNCTIONALITY DOCTRINE. THEREFORE, THE STRATEGIES USED IN FILING CLAIMS AND DEFENSES, ALONG WITH THE CHALLENGES THAT ACCOMPANY THEM, PRESENT RARE OPPORTUNITY FOR THE STUDY OF LAW AND ITS THEORIES.

THE ACTUAL HAPPENING OR NON-HAPPENING OF SUCH BOLD INCIDENT “CLAIM OF COPYRIGHT,” THOUGH UNCERTAIN, IS ENTIRELY DEPENDENT ON CHOICES MADE BY AN INDIVIDUAL. NEVERTHELESS, THE EFFECT OF SUCH APPLICATION, WHETHER IT RESULTS IN GRANT OR DENIAL OF COPYRIGHT, SHALL CERTAINLY LEAD TO LOSS OF PATENT.

I. INTRODUCTION The momentum generated by the United States Supreme Court’s decision in Myriad has generated extensive discussion.1 Additionally, this decision has led to substantial changes in researchers’ consideration of available intellectual property protection. 2 The United States Supreme Court unambiguously held that DNA, merely isolated, does not generate patent rights, when the court at length discussed the issue:

Myriad did not create or alter either the genetic information encoded in the BCRA1 and BCRA2 genes or the genetic structure of the DNA. . . . . Groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the §101 inquiry. . . . Myriad found the location of the BRCA1 andBRCA2 genes, but that discovery, by itself, does not render the BRCA genes “new . . . composition[s] of matter,” that are patent eligible.

1 Jorge L. Contreras, Narratives of Gene Patenting, 43 FLA. ST. U. L. REV. 1133, 1134 (2016). 2 MICHELE WALES & EDDIE CARTIER, THE IMPACT OF MYRIAD ON THE FUTURE DEVELOPMENT AND COMMERCIALIZATION OF DNA-BASED THERAPIES AND DIAGNOSTICS 2 (2015), http://perspectivesinmedicine.cshlp.org/content/5/12/a020925.full.pdf+html.

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Indeed, Myriad’s patent descriptions highlight the problem with its claims. . . . Myriad seeks to import these extensive research efforts into the §101 patent eligibility inquiry. But extensive effort alone is insufficient to satisfy the demands of §101...... 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. . . . [T]he 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. . . .3

These words elucidate the position with abundant precision and also opened a forum to debate ‘cDNA and kind protection available for such. Even prior to this seminal decision another debate was already occurring, focused on copyrighting the DNA itself.4 This concept is supported by the legal theory of copyright as well as the Copyright Act of 1976.5 Before proceeding further, an inquiry has to be made as to what the Myriad decision provided and what it will lead to as well.

II. RATIONALE Copyright as a concept and theory was borne to specifically protect an author’s art.6 “Art” originally meant writings.7 Over the years the definition expanded to include photographs as well as movies.8 It has

3 Ass’n for Molecular Pathology et al. v. Myriad Genetics, Inc., 569 U.S. 576, 590–95 (2013). 4 Irving Kayton, Copyright in Living Genetically Engineered Works, 50 GEO. WASH. L. REV. 191, 201 (1982). 5 Id. 6 Copyright Timeline: A History of Copyright in the United States, ASS’N OF RES. LIBRARIES, http://www.arl.org/focus-areas/copyright-ip/2486-copyright- timeline#.W7vhfi-ZORs (last visited Oct. 8, 2018). 7 See The Statute of Anne – 1710, HISTORY OF COPYRIGHT L., http://historyofcopyright.org/pb/wp_ff342f50/wp_ff342f50.html (last visited Oct. 16, 2018) (explaining the Statute of Anne was the first major copyright law and it provided protection to written works such as books). 8 See Art, ENG. OXFORD DICTIONARY (2d ed. 1989). continued . . . 2018] COPYRIGHTING DNA 37

further evolved to include computer programs as basic elements of copyrights.9 These expansionist tendencies prove that the definition is flexible, and both courts and lawmakers may be willing to expand the definition further. This question came to visit us again in 2013.10 The conundrum continues as the supposed articulation of a definition is still missing.11 However, the U.S. Supreme Court has made it clear that natural DNA sequences are not patentable.12 The corollary of this decision is that synthetic or man-made DNA sequences are potentially patentable. 13 This restatement does bring some clarity, but that clarity also brings problems. The resulting action is now going to be a scramble to get man-made DNA copyright protection. To some extent it will mean undoing work that willfully put considerable information into the public domain, such as the map of the human genome.14 A feature that needs to be understood is that copyright is one of the three most utilized intellectual property rights and is comparatively easier to obtain than a trademark or patent.15 This ease is shown mainly by comparing monetary costs, effort, and technical hurdles in cases of patent applications.16 The difference in difficulty is partly due to the fact that the primary test for patentability is substantial novelty. While originality is required for copyright, it is a diluted form of novelty, thus making filings for copyrights comparatively easier.17 An aspect that makes copyrights a very interesting phenomenon is the Berne Convention for the Protection of Literary and Artistic Works (“Berne Convention”) and the Universal Copyright Convention

9 What Does Copyright Protect?, COPYRIGHT.GOV, https://www.copyright.gov/help/faq/faq-protect.html (last visited Oct. 17, 2018). 10 Ass’n for Molecular Pathology et al. v. Myriad Genetics, Inc., 569 U.S. 576 (2013). 11 Id. at 579. 12 Id. 13 Id.; see Kayton, supra note 4, at 199–200. 14 See Kayton, supra note 4, at 192–94, 210 (explaining that an inventor derives value from copyrighting an invention, however, it may be more advantageous for an inventor to keep invented material out of the public domain). 15 See Copyright Basics, COPYRIGHT ALLIANCE, https://copyrightalliance.org/ca_faq_post/difference-copyright-patent-trademark/ (last visited Oct. 3, 2018). 16 See, e.g., Lucas S. Osborn, Of PhDs, Pirates, and the Public: Three- Dimensional Printing Technology and the Arts, 1 TEX. A&M L. REV. 811, 835 (2014). 17 James L. Buchwalter, Construction and Application of Copyright Act – Supreme Court Cases, 24 A.L.R. FED. 3D ART. 6 § 10 (2017). continued . . .

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(“UCC”).18 These international treaties give published works universal protection.19 This trait is entirely missing when one deals with a patent application.20 Unlike patent protection, which has jurisdictional limits, in the case of copyrights jurisdictional limits are mitigated due in part to the two abovementioned international treaties.21 It would likely be difficult for any intellectual property law practitioner to come across a case where a copyright has been denied under either the UCC or Berne Convention, unless of course publication took place in a non- member state.22 While in the case of patents, despite the presence of the Patent Co-operation Treaty (“PCT”), which allows one single application to be transmitted to all the signatory countries, the complexity of actual prosecution of patent application remains.23 An applicant has to satisfy the novelty test in all jurisdictions.24 Each country applies its own tests. 25 This is the case even when countries do share and have a

18 The Berne Convention for the Protection of Literary and Artistic Works, 828 U.N.T.S. 221 Sept. 9, 1886, amended Sept. 28, 1979 [hereinafter The Berne Convention]; Universal Copyright Convention, 6 U.S.T. 2731, 216 U.N.T.S. 132 Sept. 6, 1952. 19 See Universal Copyright Convention, ENCYCLOPEDIA BRITANNICA (July 20, 1998), https://www.britannica.com/topic/Universal-Copyright-Convention; see also Berne Convention, ENCYCLOPEDIA BRITANNICA (Apr. 12, 2018), https://www.britannica.com/topic/Berne-Convention. 20 See International Patent Protection, FURMAN IP L. & STRATEGY, https://www.furmanip.com/ip-law/patents/international-filing-options/ (explaining that patent protection is limited to the country where the patent is granted). But see International Patent Cooperation, USPTO (Dec. 8, 2017, 10:10 AM), https://www.uspto.gov/patents-getting-started/international-patent-cooperation (describing the Office of International Patent Cooperation intent to improve the international patent system by increasing certainty of international patent protection). 21 International Patent Protection, supra note 20 (“A patent only protects your invention in the country in which it is granted.”); see Universal Copyright Convention, supra note 19 (outlining how the Universal Copyright Convention expanded copyright protection beyond jurisdictional limits); see also Berne Convention, supra note 18 (outlining how the Berne Convention also expanded copyright protection beyond jurisdictional limits). 22 See Steve Schlackman, Is My Copyright Internationally Protected?, ART L. J. (Sept. 15, 2013), https://alj.artrepreneur.com/copyright-internationally-protected/. 23 Patent Cooperation Treaty, U. S. PAT. AND TRADEMARK OFF., https://www.uspto.gov/patents-getting-started/international-protection/office-policy- and-international-affairs-patent (last visited Oct. 8, 2018). 24 Id.; see also Patent Cooperation Treaty art. 33, June 19, 1970, 28 U.S.T. 7645, 1160 U.N.T.S. (“The objective of the international preliminary examination is to formulate a preliminary and non-binding opinion on the questions whether the claimed invention appears to be novel. . . . For the purposes of the international preliminary examination, a claimed invention shall be considered novel if it is not anticipated by the prior art as defined in the Regulations.”) 25 Jeffrey M. Kaden, Patent Protection and the Novelty Requirement, GOTTLIEB, RACKMAN & REISMAN, P.C., https://grr.com/publications/patent-protection-novelty- continued . . . 2018] COPYRIGHTING DNA 39

common group like a combined European Application.26 Even if you are in a European Patent Convention country, you are still limited within the group.27 For a copyright applicant this is not the case.28 What the applicant publishes in one convention country is accepted without discussion worldwide.29 When we link these features together, we get a copyright system that can effectively bypass jurisdictional limits set under patent mechanism, while also providing an enormous term of protection with a low entry threshold.30 This same logic can be applied to cDNAs. First, once a sequence-whole or snippet is published either in hard copy or online in a UCC or Berne Convention country, the author gets universal protection which would otherwise be hard to get. 31 Second, this universal protection is obtained at an exceptionally small or near zero cost.32 Third, the requirement threshold for such is abysmally low, but the effectiveness is the same.33 A plus-point for the author is there is no inventiveness test required.34 This system presents a major benefit for the author and an unimaginable headache for the other researchers and authors. The benefits mentioned above are just a few, but there is one more benefit known as “spiking the guns” of your competitors.35 In essence, publication destroys the concept of novelty which is

requirement (last visited Oct. 12, 2018). 26 European Patents – The Basics, MEWBURN ELLIS, http://mewburn.com/resource/european-patents-the-basics (last visited Oct. 12, 2018). 27 Id. 28 The Berne Convention, supra note 18 at art. 6. 29 Id. 30 Id. at art. 7 (life of author plus 50 years minimum, signatory Countries are free to provide extended term). 31 LEXISNEXIS & SQUIRE SANDERS, INT’L ASPECTS OF COPYRIGHT 3 (Oct. 2012), https://www.squirepattonboggs.com/~/media/files/insights/publications/2012/10/inte rnational-aspects-of-copyright/files/international-aspects-of-copyright-practice- note/fileattachment/international-aspects-of-copyright-practice-note.pdf (“Berne and the UCC create a system of reciprocity of copyright enforcement.”) 32 See id. (stating that a copyright owner covered under Berne or the UCC would not have follow particular formalities “such as registering their copyright in that country.”) 33 Fesit Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 362 (1991) (“The standard of originality [for copyright] is low, but it does exist.”) 34 Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d 99, 103 (2d. Cir. 1951) (explaining that unlike a copyrightee, a patentee must be the “first inventor or discoverer”). 35 Spike Someone’s Guns, MERRIAM-WEBSTER DICTIONARY (11th ed. 2016). continued . . .

40 WAKE FOREST J. [VOL. 19 BUS. & INTELL. PROP. L. central to a patent.36 Once novelty, the most essential part of a patent, is lost then the entire endeavor of research is a worthless journey. As mentioned earlier, copyright does not demand novelty in the same breath and breadth as demanded by patent. 37 Copyright’s lowered standard provides the first mover with a tremendous advantage.38 For patents, the effect of publication is the same whether it is intentional or unintentional.39 This is true regardless of the means of communicating with the public, whether it is by patent application, 40 as a research article, or as a book. Once published, it is published forever.41 But the very fact that it is published has the opposite effect on copyrighted works as it does on patents.42 Publication means obtaining a copyright, while publication of a patent means permanent loss of said patent.43 In this race of publish or perish, the meaning takes a really sinister connotation when one deals with patents. Another aspect one needs to deal with is the differing terms these two protections offer. 44 Such differences shall become impossibly harsh when DNA is viewed as a copyright. One more thing that allows intellectual property rights to become even more effective is having one right does not preclude an applicant from having another right for the same work.45

36 35 U.S.C. § 102 (2012). 37 Mazer v. Stein, 347 U.S. 201, 218 (1954). 38 Kathryn McMahon, Interoperability: Indispensability and Special Responsibility in High Technology Markets, 9 TUL. J. TECH. & INTELL. PROP. 123, 130 (2007). 39 See ROBERT CALVERT, PATENT PRACTICE & MANAGEMENT FOR INVENTORS AND EXECUTIVES 95 (1950). 40 See, e.g., Zbinden’s Patent Application, [2002] RPC 13. 41 See id. at 318. 42 See SUBCOMM. ON PATENTS, TRADEMARKS AND COPYRIGHTS, COMM. ON THE JUDICIARY. 86TH CONG. COPYRIGHT LAW REVISION 2 (Comm. Print 1960). 43 Compare 17 U.S.C. § 104(b) (2012), with 35 U.S.C. § 181–82 (stating that abandonment of the invention is a possible consequence for unauthorized disclosures or publications). 44 Compare 17 U.S.C. § 106, with 35 U.S.C. § 271. 45 See, e.g., Mazer v. Stein, 347 U.S. 201, 217 (1954) (“Neither the Copyright Statute nor any other says that because a thing is patentable it may not be copyrighted.”) (interpreting the Copyright Act of 1909, which was amended in 1976); Oracle Am., Inc. v. Google Inc., 750 F.3d 1339, 1380–81 (Fed. Cir. 2014) (stating that the Supreme Court has made it clear that a work may be patentable and copyrightable in declining to hold that software programs are solely protected under patent law). See also Andrew Beckerman-Rodau, The Problem with Intellectual Property Rights: Subject Matter Expansion, 13 YALE J.L. & TECH. 35, 73 (2010) (“Simultaneously protecting the same aspect of a product – as opposed to different aspects of the product – under different bodies of intellectual property law” was historically rejected by courts, however, modern case law “has allowed such continued . . . 2018] COPYRIGHTING DNA 41

While this may sound strange, taking a deeper look at the timelines required easily supports this conclusion. 46 This supposed oddity is possible if the applicant is willing to time his or her moves and act accordingly.47 Such bidding of time enables the applicant to obtain twin protections from both patent and copyright.48 This timeline allows an applicant to be the holder of patent and copyright simultaneously. 49 This is also the case regarding DNA, specifically cDNA. 50 U.S. Supreme Court’s decision in Myriad expressly prohibited patent protection for naturally occurring DNA, but the opinion left out synthetically prepared DNA and cDNA. 51 This means artificially prepared genes, synthetic genes, are protectable.52 Synthetic genome is nothing new to biology. 53 Similarly, it also includes strands and or snippets.54 Post the judicial pronouncement in Myriad, an inquiry needs to be undertaken as to whether such protection is possible.55 To achieve this end, one needs to take a close look at decision already made when the Copyright Act of 1976 (“Copyright Act) was amended in 1980.56 The words in the Copyright Act refer to computer program only.57 But if we use an expansionist view and read the same words in a broader sense, a qualitatively different result shall be obtained. Current wording of the Copyright Act does limits scope. Section

simultaneous protection.”) 46 See, e.g., Kayton, supra note 4 at 216 (discussing the sequencing of simultaneous copyright and patent protection as it applied to inventors of genetic works). 47 See id. 48 See id. 49 See id. 50 See id.; Ass’n for Molecular Pathology et al. v. Myriad Genetics, Inc., 569 U.S. 576, 594 (2013). 51 Ass’n for Molecular Pathology, 569 U.S. at 595 (“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. . .”) 52 See id. 53 Stephen M. Maurer, Symposia: End of the Beginning or Beginning of the End? Synthetic Biology’s Stalled Security Agenda and the Prospects for Restarting it, 45 VAL. U.L. REV. 1387, 1391 (2011). 54 See, e.g., Stuart Fox, First Live Organism with Synthetic Genome Created, LIVE SCI. (May 20, 2010, 8:06 AM), https://www.livescience.com/6486-live- organism-synthetic-genome-created.html. 55 Ass’n for Molecular Pathology, 569 U.S. at 596 (“Scientific alteration of the genetic code presents a different inquiry, and we express no opinion about the application of § 101 to such endeavors.”) 56 Evan Finkel, Copyright Protection for Computer Software in the Nineties, 7 SANTA CLARA COMPUT. & HIGH TECH. L.J. 215, 215 (1991). 57 17 U.S.C. § 101 (2012). continued . . .

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101 of the Copyright Act states “a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result.”58 If just one word is replaced a different and broader meaning is possible. Replacing “computer” with “cell” would make the same section applicable to DNA/cDNA.59 A synthetic biologist and biotechnologist/geneticist will confirm that there is no better way to describe role of either computer code and/or DNA code.60 The question becomes if these two are so equal then why deny protection to one that is granted to another? The issues officially remain unresolved; however, there may be an unofficial resolution. Simply file cDNA details as printed per requirements of the Copyright Act and affix a copyright notice.61 This possibility is often overlooked because copyrights are looked at as applying to only serious works of art, best-sellers, and most certainly computer programs.62 However, the Copyright Act does not forbid an individual from being a publisher.63 Any person can file his or her own work or get it published because upon completion of certain formalities copyright automatically attaches. 64 Plus if the work is published in either the UCC or Berne Convention countries, then the author gets world-wide protection.65 The question then becomes whether an amendment to the Copyright Act is required to make copyright law cDNA/DNA friendly? The current form of the Copyright Act is very much copyright friendly, even though it is not explicitly stated. As, the Copyright Act does not expressly or implicitly reject or forbid cDNA status as copyrightable material, the presumption is that it is copyrightable material.66 In the absence of a clear no from the act,

58 Id. 59 See Deoxyribonucleic Acid (DNA), NAT’L HUM. GENOME RES. INST., https://www.genome.gov/25520880/ (last updated June 16, 2015) (defining DNA); see also 17 U.S.C. § 101. 60 Matt Swayne, Turning Biologists into Programmers, PA. ST. U. NEWS (Oct. 14, 2013), http://news.psu.edu/story/291323/2013/10/14/research/turning-biologists- programmers. 61 17 U.S.C. § 106. 62 See Lior Zemer, 4 What Copyright Is: Time to Remember the Basics, BUFF. INTELL. PROP. L.J. 54, 64 (2006). 63 See 17 U.S.C. §§ 106, 201. 64 Id. 65 See International Copyright, COPYRIGHT.GOV, https://www.copyright.gov/fls/fl100.html (last visited Oct. 17, 2017) (explaining that there is no “international copyright,” but most countries offer protection to foreign works under the Berne Convention and the Universal Copyright Convention (UCC)). 66 See Kayton, supra note 4 at 198–99 (explaining that the Copyright Act of continued . . . 2018] COPYRIGHTING DNA 43

the presumption can be made that cDNA is copyrightable material.67 Further developments of cDNA as copyrightable material will be straightforward as far as the Copyright Act is concerned. Still, an applicant should be aware that such use of cDNA is still a grey area. There is no official statement or pronouncement particularly denying or accepting described usage of the Copyright Act or its application. In terms of patent law, it may be denoted as an off-label use of the legislation. It is proposed that such use is possible by simply having a wider reading of the same provision of the Copyright Act by either registration authorities or judicial authorities.

III. OBSERVATIONS As the Copyright Act does not clearly refuse the grant of protection to cDNA, we can move forward with the premise that cDNa qualifies for copyright protection. Consequently, the prospect of facing copyrighted cDNA is real. Thus, the problems that shall arise and will be faced are serious. Least of the problems is the term of protection that is the life of the author plus 70 years.68 Copyright law was chiefly designed to protect artistic expression in form of writings, works of authors, paintings, etc.69 These expressions have a built-in commercial value and support active trade and commerce. 70 Nonetheless, the subject copyright protects from depredations is of a different nature than cDNA. Copyright is more closely associated with paintings or sculptures that are one-of-a-kind when produced.71 While licensing the use of a book is a rather novel concept, it is not so for pieces of art.72 Similarly, copyright protects the owner’s right in form of expressions or writings. 73 Copyright does not prevent some other author from expressing that author’s own creativity. 74 The second

1976 provides copyright protection from the moment a literary work is created and genetically engineered works, such as those that make up DNA, are literary works). 67 Id. 68 17 U.S.C. § 302(a). 69 Diane L. Kilpatrick-Lee, Criminal Copyright Law: Preventing a Clear Danger to the U.S. Economy or Clearly Preventing the Original Purpose of Copyright Law, 14 U. BALT. INTELL. PROP. L.J. 87, 93 (2005). 70 Id. at 94. 71 See Walter Benjamin, The Work of Art in the Age of Mechanical Reproduction, in ILLUMINATIONS (Schocken Books ed., 1969). 72 United States Copyright Office a Brief Introduction and History, COPYRIGHT.GOV, https://www.copyright.gov/circs/circ1a.html (last visited Oct. 8, 2018) (describing the role and history of the U.S. Copyright Office). 73 Id. 74 Feist Publ’n, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345 (1991) (stating that originality requires “only that the work was independently created by the author continued . . .

44 WAKE FOREST J. [VOL. 19 BUS. & INTELL. PROP. L. author may write upon the same topic, use basically the same plot line, but treatment may still be different. 75 The second author also gets protection for the copyright for the work produced.76 Likewise, a third author and fourth and so on and so forth may acquire rights. 77 Regardless, all the subsequent authors’ works qualify for copyright protections.78 For example, the specifics of the subsequent authors’ written literary works can be similar, but cannot be worded the exact same way as the original copyrighted work.79 This is the point where copyright diverges from patent. In patent, no additional application is possible on the same piece by a different applicant, unless the applicant shows further innovation.80

(as opposed to copied from other works), and that it possesses at least some minimal degree of creativity”). 75 See e.g., Duffy v. Penguin Books USA, Inc., 4. F. Supp. 2d 268, 273 (S.D.N.Y. 1998) (“Although the books discuss the same subject matter in these passages, [the purported infringing book] does not mimic either [earlier book] sufficiently to amount to improper appropriation.”) 76 Cf. Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49, 54 (2d Cir. 1936) (“[I]f by some magic a man who had never known it were to compose anew Keats’s Ode on a Grecian Urn, he would be an ‘author,’ and [could] copyright[] it.”) 77 17 U.S.C. § 101 (2012) (defining “derivative work”); 17 U.S.C. § 103(a) (providing copyright protection to compilations and derivative works); see generally Twin Peaks Prods., Inc. v. Publ’ns Int'l, Ltd., 996 F.2d 1366 (2d Cir. 1993) (holding a book based on television scripts was a "derivative work" based on copyrighted work, where the book contained a substantial amount of material from the teleplays, merely transformed from one medium into another); Polygram Records, Inc. v. Legacy Entm’t Grp., LLC, 205 S.W.3d 439 (Tenn. Ct. App. 2006) (holding the copyright in a derivative work extends only to the material contributed by the author of such work). 78 17 U.S.C. § 103(b) (providing further that the copyright in such work is independent of, and does not affect or enlarge the scope, duration, ownership, or subsistence of, any copyright protection in the preexisting material); see generally Stewart v. Abend, 495 U.S. 207 (1990) (granting copyright protection to aspects of a derivative work added by the derivative author, but the element drawn from the preexisting work remains on grant from the owner of the preexisting work); Rand McNally & Co. v. Fleet Mgmt. Sys., Inc., 591 F. Supp. 726 (N.D. Ill. 1983) (granting copyright protection over the preexisting material employed in a derivative work to a derivative author only when he contributes additional matter to the preexisting work that constitutes more than a minimal contribution to it). 79 U.S. CONST. art. I, § 8, cl. 8; 17 U.S.C. § 107 (setting forth a list of factors to be considered in determining whether the use made of a work in any particular case is a “fair use”); see generally Castle Rock Entm’t, Inc. v. Carol Pub. Grp., Inc., 150 F.3d 132 (2d Cir. 1998) (deciding whether an author had infringed the copyright of a television series, held that the author's taking had crossed the de minimis threshold); Warner Bros. Entm’t Inc. v. RDR Books, 575 F. Supp. 2d 513 (S.D.N.Y. 2008) (holding the fair use doctrine is designed to fulfill Copyright Act’s purpose of promoting the progress of science and useful arts by balancing the simultaneous needs to protect copyrighted material and to allow others to build upon it). 80 See 35 U.S.C. § 102(a)(1) (prohibiting a patent where the claimed invention continued . . . 2018] COPYRIGHTING DNA 45

Conversely, in the case of cDNA, the expressions would be the same.81 Thus, making anything similar in existence is nearly impossible as the only possible expression is presented and published. This reduces any possibility of competing expression from a different author- researcher. Such expressiveness makes it ironclad; with no more room for maneuvering. This aspect transforms copyright into that of patent. 82 But such conversion of status was not what the legislators had in mind.83 This is an unintended fall out of off label use of the Copyright Act. Furthermore, though copyright transforms into patent, but for the effects of application it remains copyright. The result is loss of convenience of various patent doctrines that are completely missing since these concepts are specially meant for patents ‘lex specialis’.84 With this as background, a researcher is faced with considerable hardship. He is facing copyright protected research with an enormous term of protection where working around the barrier is impossible. This level of protection is something that makes a mockery of the intention behind the Copyright Act.85 This happens because the first applicant gets patent protection; essentially it is a novel form of copyright that offers the protection of a patent without having the same strict requirements of a patent.86 The patent process includes not only a novelty requirement, but also an extensive application. 87 Recall that the Copyright Act does not demand an application for protection.88 Such ease of entry and impenetrable armor of protection will allow was patented previously). 81 See Megan Krench, New Supreme Court Decision Rules That cDNA Is Patentable What It Means for Research and Genetic Testing, SCIENTIFIC AMERICAN (July 9, 2013), https://blogs.scientificamerican.com/guest-blog/new-supreme-court- decision-rules-that-cdna-is-patentablewhat-it-means-for-research-and-genetic- testing/ (explaining that allowing patents for cDNA will allow the patent holder to control certain field of research). 82 Compare 35 U.S.C. § 102(a)(1) (requiring novelty for patent registration), with 17 U.S.C. § 102(a) (requiring that a copyright feature an original work of authorship rather than novelty). 83 Evan H. Tallmadge, Patenting Natural Products After Myriad, 30 HARV. J.L. & TECH. 569, 589 (2017). 84 Id. at 590. 85 Id. 86 RICH GOLDSTEIN, ABA CONSUMER GUIDE TO OBTAINING A PATENT: A PRACTICAL RESOURCE FOR HELPING ENTREPRENEURS & INNOVATORS PROTECT THEIR IDEAS 34 (2016). 87 DEBORAH E. BOUCHOUX, PROTECTING YOUR COMPANY’S INTELLECTUAL PROPERTY: A PRACTICAL GUIDE TO TRADEMARKS, COPYRIGHTS, PATENTS & TRADE SECRETS 162–63 (2001). 88 Id. at 108. continued . . .

46 WAKE FOREST J. [VOL. 19 BUS. & INTELL. PROP. L. a lot of speculative publication.89 In the modern era, satisfaction of the Copyright Act only demands that published matter be affixed with notice.90 This is a very easy and inexpensive requirement to fulfill.91 However, the case of acquiring such new protection creates several new problems.

IV. DISCUSSION The applicant/author of cDNA/DNA should take notice that the idea expressed above are easier said than done. If and when an author- researcher-applicant takes such steps and posts the grant of copyright to another who wishes to or undertakes the challenge, then the following dialogue shall demand a closer look. It presents certain defenses to the challenger who faces a daunting task of reversing grant of copyright post publication—a rare-event.92 Any discussion about cDNA in the purview of copyrights, requires us to deliberate all the aspects that need to be raised when a challenge is issued to a cDNA copyright grant. Comparing cDNA to computer programs is beneficial because the two have an equivalent subject matter of copyright. The applicant must face the same tests and requirements that govern the grant of copyright to computer programs when seeking protection of cDNA.93 Therefore, cDNA shall be graded according to the same set of principles: the literal copying is prohibited along with non-literal work, but subject “to the extent that they incorporate authorship in programmer's expression of original ideas, as distinguished from the ideas themselves.”94

89 Kayton, supra note 4 at 198. 90 Id.;17 U.S.C. § 102(a) (2012). 91 See Kayton, supra note 4 at 198 (stating that “[a]lthough most genetic works cannot be seen, the 1976 Act does not require visual perception. . . . Because genetic works are not visually perceivable, the genetic engineer is free from the burden of copyright marking in almost all instances.”). 92 37 C.F.R. § 201.7 (2018). 93 Christoper M. Holman, Charting the Contours of a Copyright Regime Optimized for Engineered Genetic Code, 69 OKLA. L. REV. 399, 431–32 (2017) (comparing the standards of copyright between cDNA and between software programs). 94 Computer Assocs. Int’l, Inc. v. Altai, Inc., 982 F.2d 693, 703 (2d Cir. 1992) (quoting H.R. REP. NO. 94-1476, at 54 (1976)). 2018] COPYRIGHTING DNA 47

A. Idea-Expression Divide

Clear separation between the idea regarding what the material is and the expression as to how to implement that idea is an accepted feature.95 The same issue exists in patents as well, where ideas are non-patentable, but expression of the idea through invention is patentable.96 Here the specifics of the expression are to be identified and separated from the rest of the clutter. In short specifics are protected, but wide-angle omnibus protection is not.97 Such protection is available only to the extent of specific expression.98 It limits the amount of protection the code has.99 This policy has been a guiding beacon while dealing with software copyright applications.100 As a result, the same is likely to guide cDNA copyright. Therefore, the limitation to absolute protection of a program's structure, sequence and organization is already present.101 The same guiding hand is the methodology that shall govern cDNA copyright and its relevant applications.

B. AFC- Abstraction Filtration Comparison

Already courts in both the United States and European Union have drawn sufficient distinction between their earlier concepts. We have a clear statement from the Fifth Circuit stating “we decline to embrace Whelan”102 Similar approaches in recent times have been taken by the

95 Id. 96 General Information Concerning Patents, U.S. PAT. AND TRADEMARK OFF., (Oct. 2015), https://www.uspto.gov/patents-getting-started/general-information- concerning-patents. 97 Computer Assocs. Int’l, Inc., 983 F.2d at 703. 98 Mazer v. Stein, 74 U.S. 460, 470 (1954). 99 U.S. CONG., OFFICE OF TECH. ASSESSMENT, INTELLECTUAL PROPERTY RIGHTS IN AN AGE OF ELECTRONICS AND INFORMATION 61 (“For patents, the boundaries of ownership in an invention encompass only the novel features of that invention.”) 100 Edward Samuels, The Idea-Expression Dichotomy in Copyright Law, 56 TENN. L.J. 321, 355 (1989). 101 Computer Assocs. Int’l, Inc. v. Altai, Inc., 982 F.2d 693, 701–02 (2d Cir. 1992). 102 Plains Cotton Co-op Ass’n v. Goodpasture Comput. Serv., Inc., 807 F.2d 1256, 1262 (5th Cir. 1987); see generally, Cary S. Kappel, Copyright Protection of SSO: Replete with Internal Deficiencies and Practical Dangers, 59 FORDHAM L.R. 699 (1991) (citing Whelan Assocs., Inc. v. Jaslow Dental Lab., Inc., 797 F.2d 1222 (3d Cir. 1986) (discussing the internal issues within the case). In Whelan the court introduced Structure Sequence Organization (SSO), a concept to deal with matters pertaining to computer programs and copyright. By this decision protection to computer program was extended beyond actual code and also to structure sequence and organization of the program itself. This case ushered an era what many continued . . .

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European Court of Justice (“ECJ”) in dealing with application programming interface. 103 The ECJ specifically stated: “neither the functionality of a computer program nor the programming language and the format of data files used in a computer program in order to exploit certain of its functions constitute a form of expression. Accordingly, they do not enjoy copyright protection.”104 This position has generally limited the breadth of various claims and the follow-up verdicts have also provided incentive on a case by case basis regarding equally important fair use concepts.105 The Abstraction Filtration Comparison (“AFC”) is now a kind of standard for specific expression, which a cDNA application will be subject to as well. The AFC tests clearly limit the breadth by distinguishing between a mere idea and its expression.106 The next level filters out whatever is dictated by efficiency and expression mandated along with whatever is taken from public domain.107 The opinions from courts both in the United States and ECJ are resolute as to what is protectable and what is not.108 The problem that shall be faced is of a different variety and nature as cDNA which, by its very class, is a definite expression.109 It will not criticized as of excessive protectionism and suppressing innovation. Whelan, 797 F.2d at 1222. The SSO was replaced by the AFC test which was first introduced in 1992 by the Second Circuit. Comput. Assocs. Int’l, Inc., v. Altai, 982 F.2d 693 (2d. Cir. 1992). 103 Rachel King, Programming Languages ‘Do Not Enjoy Copyright Protection’ EU Court Says, CNET, (May 3, 2012, 5:01 AM), https://www.cnet.com/news/programming-languages-do-not-enjoy-copyright- protection-eu-court-says/ 104 Dan Farber & Rachel King, Oracle v. Google Jury Returns Partial Verdict, Favoring Oracle, CNET (May 7, 2012, 11:30 AM), https://www.cnet.com/news/oracle-v-google-jury-returns-partial-verdict-favoring- oracle/. 105 See generally Matteo Mancinella, Copyright Subject Matter and A "Light" for Designers' Rights, 29 SANTA CLARA COMPUT. & HIGH TECH. L.J. 523, 533–38 (2013) (discussing the ECJ’s position when dealing with application programming interface). 106 See Country Kids ’N City Slicks, Inc. v. Sheen, 77 F.3d 1280, 1284–85 (10th Cir. 1996) (“At the abstraction step, we separate the ideas (and basic utilitarian functions), which are not protectable, from the particular expression of the work. Then, we filter out the non-protectable components of the product from the original expression. Finally, we compare the remaining protected elements to the allegedly copied work to determine if the two works are substantially similar.”). 107 Computer Assocs. Int’l, Inc. v. Altai, Inc., 982 F.2d 693, 707 (2d Cir. 1992). 108See Saby Ghoshray, Interpreting Myriad: Acquiring Patent Law’s Meaning Through Contemporary Jurisprudence and Humanistic Viewpoints of Common Heritage of DNA, 10 J. MARSHALL REV. INTELL. PROP. L. 508, 538 (2011). 109See Cary S. Kappel, Copyright Protection of SSO: Replete with Internal Deficiencies and Practical Dangers, 59 FORDHAM L. REV. 699, 704 (1991). continued . . . 2018] COPYRIGHTING DNA 49

be something taken from either public domain or anywhere else, and as mentioned earlier cDNA is a very specific expression.110 Therefore, having another bit/piece of cDNA doing exactly the same thing in a similar or identical fashion will be stretching it too thin. At this stage copyright shall transform or mutate into patent, but may still have protection claims under the Copyright Act. Due to such transformation, the need arises to review the application for copyright protection using the multiple tests designed for this purpose.

C. Merger Doctrine- Functionality Doctrine

cDNA is purely functional, a totally synthetic creation operationalizing precise ideas of the researcher-applicant, 111 thereby making idea-expression separation impossible. An impasse is then reached as separation between the idea and expression is going to be difficult with cDNAs. Mirroring of one over the other is so complete that they become fused. One can’t isolate the idea from its expression. The resulting position makes idea-expression separation impracticable, as what is one is the other. This is parallel to “Scènes à faire” where certain characters are essential characters and are therefore non-protectable. 112 An issue arises when all of the characters are considered essential. The Tenth Circuit113 addressed the question when it held: “hardware standards and mechanical specifications, software standards and compatibility requirements, computer manufacturer design standards, target industry practices and demands, and computer industry programming practices were un-protectable ‘scènes à faire’for computer programs.”114 The resulting position makes revisiting certain aspects of assertion to protection necessary. Even if a challenger is successful, he may be left without a meaningful remedy. While reversal of a copyright may be possible, it is impossible to reverse the effects of what has been published and entered into public consciousness.

110 See supra text accompanying note 106. 111 Richard Weinmeyer & Tobin Klutsy, Supreme Court to Myriad Genetics: Synthetic DNA is Patentable, but Genes Are Not, 17 AMERICAN MED. ASS’N J. OF ETHICS 849, 851 (2015) (defining cDNA as “synthetically created DNA”). 112 See Gates Rubber Co. v. Bando Chemical Indus., Ltd., 9 F.3d 823, 838 (10th Cir. 1993). 113 Id. 114 Id.

50 WAKE FOREST J. [VOL. 19 BUS. & INTELL. PROP. L.

V. CONCLUSION [cDNA’s] road to copyright as proposed earlier is not a frequented road. With the passage of time authorities have come up with newer approaches or modifying existing responses to meet challenges thrown by newer obstacles in form of technology.115 This has led to reanalysis of existing thoughts and also modified existing responses, either in form of fresh look at regulations or amendments from the legislature.116 Whether in the form of modern theories like the AFC test or adapting older concepts like idea-expression theory or scènes à faire,117 the distance travelled will be considerable and is going to make tackling the issues difficult. The complexity from standpoint of an applicant is in challenging existing or established set of order and from legislature’s a likely well- reasoned and well balanced response. The author-researcher-applicant and the legislature are going to have to face this difficulty together. The applicant by challenging the existing set of order and the legislature by determining how to qualify/model the response. Every applicant shall have to find answers to tests and modify their application accordingly. The response cannot be that one accepts or repudiates it as a whole, but must be a reasoned reply. The jury of peers is still out and the match is yet to begin. But one thing is certain, whether we shall see a bold move or not, the act of publication automatically grants protection. 118 Undoing the act of publication and the ensuing effect on intellectual property is going to be a challenge!

115 Id. 116 Cf. Edward Samuels, The Idea Expression Dichotomy in Copyright Law, 56 TENN. L. REV. 321, 355–370 (1989) (analyzing how copyright theories could be applied to computer programs). 117 Id. 118 Rich Stim, Copyright Protection: What it Is, How it Works, STANFORD COPYRIGHT AND FAIR USE, https://fairuse.stanford.edu/overview/faqs/copyright- protection/ (last visited Oct. 8, 2018).

WAKE FOREST JOURNAL OF BUSINESS AND INTELLECTUAL PROPERTY LAW

VOLUME 19 FALL 2018 NUMBER 1

COMMENT: ALEXA, TRANSMIT CLIENT DATA TO AMAZON: ETHICAL CONSIDERATIONS FOR ATTORNEYS LOOKING FORWARD TO VIRTUAL ASSISTANTS

Whitney L. Hosey†

I. INTRODUCTION ...... 52 II. IS BIG BUSINESS WATCHING? HOW A.I. SYSTEMS COLLECT AND STORE DATA ...... 52 III. ALEXA, CAN CONVENIENCE BE ETHICAL? ...... 57 IV. ETHICAL TECHNOLOGY AND THE EVOLVING WORKPLACE ...... 66 A. RECOMMENDATION 1: WHEN OPERATING IN SECURE WORKSPACE DEVICES SHOULD BE UNPLUGGED BEFORE ENGAGING IN ANY ORAL COMMUNICATION...... 68 B. RECOMMENDATION 2: PLATFORMS LIKE AMAZON AND GOOGLE COULD DEVELOP SECURE CLOUD SPACE...... 68 C. RECOMMENDATION 3: BE AWARE AND BE OPEN WITH THE CLIENT...... 69 V. CONCLUSION ...... 71

† © 2019 Whitney Hosey is a J.D. Candidate, Wake Forest School of Law where she currently serves as the Editor-in-Chief of the Journal of Business and Intellectual Property Law. Whitney is a graduate of the University of Virginia where she earned her B.A. in History and Government. Whitney would like to thank Professors Simone Rose and Abigail Perdue for their editing and writing assistance. She would also like to extend her sincere gratitude to the Journal’s incredible Board of Editors and Staff. Finally Whitney would like to thank her family and friends for their unending support and love. 52 WAKE FOREST J. [VOL. 19 BUS. & INTELL. PROP. L.

I. INTRODUCTION Amazon’s Alexa is moving beyond the home into offices, cars, and PC’s, and even in your vacuum cleaner. 1 Amazon continues to advertise Alexa as a virtual assistant capable of helping with everyday tasks.2 But Amazon’s next target is business.3 Amazon is not the only company looking to push artificial intelligence (A.I.) in the workplace. Both Cisco and Microsoft have also developed their own virtual assistants.4 The current “Amazon for Business” platform is aimed at basic tasks such as booking meetings, but as the technology develops, so may its functional capabilities via its voice recognition and processing software. 5 Business software companies and computer companies are already integrating these systems into their programs to make the transition smoother.6 This comment focuses on the need for attorneys, whose positions require a high level of confidentiality, to consider their ethical obligations as these technologies become more prevalent in society.7 Part II provides an overview on how technologies like Amazon’s Alexa function.8 Part III analyzes the applicable American Bar Association’s Model Rules of Professional Conduct (Model Rules) and how some state bar associations have handled changes in technology.9 Finally, to avoid ethical violations, Part IV offers a few suggestions for attorneys who might consider purchasing or already have an A.I. device for their office.

II. IS BIG BUSINESS WATCHING? HOW A.I. SYSTEMS COLLECT AND STORE DATA A.I. is defined as “a branch of computer science dealing with the simulation of intelligent behavior in computers.”10 Usually intelligence

1 Matthew Finnegan, Amazon Alexa Arrives on Windows 10 PCs as Virtual Assistants Go to Work, COMPUTERWORLD (Jan. 10, 2018, 10:47 AM), https://www.computerworld.com/article/3246636/collaboration/amazon-alexa- arrives-on-windows-10-pcs-as-virtual-assistants-go-to-work.html. 2 See id. 3 Id. 4 Matthew Finnegan, With Spark Assistant, Cisco Adds Voice-Activated A.I. to Videoconferencing, COMPUTERWORLD (Nov. 3, 2017, 1:31 PM), https://www.computerworld.com/article/3236147/collaboration/with-spark-assistant- cisco-adds-voice-activated-ai-to-videoconferencing.html. 5 Finnegan, supra note 1. 6 Id. 7 See infra Part V. 8 See infra Part II. 9 See infra Part III. 10 Artificial Intelligence, MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY (11th continued . . . 2018] ALEXA TRANSMIT CLIENT DATA 53

refers to the concept of human intelligence.11 The end goal of A.I. is to advance the technology so that it can “reason, learn, self-collect information, create knowledge, communicate autonomously, and manipulate their environment in unexpected fashions.” 12 In other words, A.I. developers are looking to eventually replace or enhance certain human professional functions with machines.13 A.I. systems are complex and within the field there are various classifications and distinctions between platforms. 14 One category of A.I. known as “strong” allows these machines to “think, reason, and deduce” in a manner at least similar to the human brain.15 As of right now, there is no “strong” A.I. available for commercial use, but an example would be a developer programming a computer “to have perception, beliefs and have other cognitive states that are normally only ascribed to humans.”16 The most prominent classification of A.I. in the current market is “weak” A.I., which is when the computer or system mimics human activity without the ability to actually reason or think for itself.17 An example of “weak” A.I. is Apple’s auto-correct feature, which is able to assess the user’s intended spelling and automatically correct the error.18 Because “strong” A.I. systems are not prevalent in the market, this comment will only focus on “weak” A.I. systems. Commercially available systems like Amazon’s Echo Dot Alexa, Google Home, and Apple’s Siri are “weak” A.I. devices which leverage “automatic speech recognition (ASR) and natural language understanding (NLU) engines that enable a system to instantly recognize and respond to voice requests.19 These systems can help users with daily tasks such as setting reminders, adding calendar meetings, and even providing up to date traffic information for the user’s common route. 20 When triggered by the wake word, these ed. 2005). 11 Daniel Ben-Ari et al., Artificial Intelligence in the Practice of Law: An Analysis and Proof of Concept Experiment, 23 RICH. J.L. & TECH 4, 4–5 (2017). 12 Id. at 5. 13 Id. 14 See generally id. at 5–8 (discussing the two categories of A.I. and each categories’ A.I. applications). 15 Id. at 6. 16 Strong Artificial Intelligence, TECHOPEDIA, https://www.techopedia.com/definition/31622/strong-artificial-intelligence-strong-ai (last visited Mar. 2, 2018). 17 Ben-Ari et al., supra note 11, at 7. 18 See id. at 8 (suggesting that “weak” A.I. includes word processing programs that automatically correct spelling). 19 Shelly Palmer, Just How Dangerous is Alexa?, ADAGE (Jan. 3, 2017), adage.com/article/digitalnext/amazon-alexa-dangerous/307328/. 20 Hillary Brill & Scott Jones, Little Things and Big Challenges: Information continued . . .

54 WAKE FOREST J. [VOL. 19 BUS. & INTELL. PROP. L. devices actively engage with the user and “either stream or record the voice requests to servers which access the requests and form responses.” 21 The wake word varies from system to system, but generally there are multiple ways to activate the device.22 The problem is that unless you manually turn these devices’ microphones off they are always listening, even if it is passively. 23 Alexa actually starts recording “a fraction of a second” before the wake word, and Google Home “listens to snippets of conversations” in order to be instantly responsive at all times.24 The information is then stored for approximately sixty seconds so the responses can be “situationally aware and ‘instant.’” 25 In-home devices are not the only pieces of technology listening.26 In fact, Apple’s Siri comes to life by simply holding the home button, connecting the device to a user’s car, or saying “Hey Siri.”27 It is also important to note that these devices are not just listening for the specific device owner’s voice. Instead, Siri may be activated by anyone in the vicinity saying its name.28 And it’s not just Apple, some Samsung Galaxy users have commented that Samsung’s A.I. assistant Bixby is automatically activated at random, meaning it too is passively listening.29 Even more disturbing is Alexa’s recent bout with the giggles, where Alexa users have heard unprompted laughter coming out of their Alexa device.30 These devices are becoming more

Privacy and the Internet of Things, 66 AM. U.L. REV. 1183, 1193 (2017). 21 Peggy Wojkowski, Alexa, Am I Violating Legal Ethics?, CHI.-KENT C. L. INST. FOR SCI. L. & TECH. BLOG (May 31, 2017), blogs.kentlaw.iit.edu/islat/2017/05/31/alexa-violating-legal-ethics/. A “wake word” or wake-up term is the phrase or utterance which transitions the system from passive to active listening. See also Jules Polonetsky & Stacey Gray, The Internet of Things as a Tool for Inclusion and Equality, 69 FED. COMM. L.J. 103, 115 (2017). 22 Eric Boughman, Is There an Echo in Here? What You Need to Consider About Privacy Protection, FORBES: LEGAL COUNCIL (Sept. 18, 2017, 9:00 AM), https://www.forbes.com/sites/forbeslegalcouncil/2017/09/18/is-there-an-echo-in- here-what-you-need-to-consider-about-privacy-protection/#68ea694538fd. 23 Id. 24 Id. 25 Palmer, supra note 19. 26 Boughman, supra note 22. 27 Use Siri on All Your Apple Devices, APPLE: SUPPORT, https://support.apple.com/en-us/HT204389 (last visited Sept. 20, 2018). 28 See Boughman, supra note 22. 29 See id. See also, e.g., u/MSFT1776, Discussion, Anybody’s Bixby Getting Activated Randomly?, REDDIT (Sept. 20, 2018, 3:07 PM), https://www.reddit.com/r/GalaxyS8/comments/6odl1t/discussion_anybodys_bixby_g etting_activated/. 30 Rachel Sandler, Amazon Says It’s Aware that Some Echo Devices Are Creepily Laughing at People and It’s Working On A Fix, INSIDER (Mar. 7, 2018), http://www.thisisinsider.com/amazon-confirms-echo-devices-laughing-working-fix- 2018- continued . . . 2018] ALEXA TRANSMIT CLIENT DATA 55

prevalent. As of December 2017, Amazon reported that it has sold “tens of millions of Alexa-enabled devices.”31 In April 2017, the company even unveiled an advanced version called Echo Show, which features a camera rather than just voice capabilities.32 So where does that sixty seconds of pre-recording go? According to Amazon, allegedly it is erased and replaced with the next sixty seconds of audio recording. 33 However, per Alexa’s terms of use agreement, “if you access third-party services and apps through Alexa, Amazon can share the content of your requests with those third parties.” 34 Interactions with Alexa such as voice recordings and searches are stored on the cloud, an accessible area where information is stored on the Internet instead of a user’s computer. 35 Thus, the information in the cloud is potentially subject to subpoena like any phone record or browser history.36 The distinction between what is and what is not stored is that until the wake word is spoken neither Amazon or Google are storing the everyday conversations of individuals in the room.37 Instead the data that is stored is anything spoken, searched, or overheard when the device is actively listening. 38 “Amazon handles the information received from Alexa in accordance with its privacy policy.”39 While users can review and delete the stored information on the cloud, the

3?utm_content=buffer54013&utm_medium=social&utm_source=facebook.com&ut m_campaign=buffer-insider-main. 31 Amazon Celebrates Biggest Holiday; More Than Four Million People Trialed Prime in One Week Alone This Season, YAHOO FIN. (Dec. 26, 2017), https://finance.yahoo.com/news/amazon-celebrates-biggest-holiday-more- 141500776.html. 32 Haley Sweetland Edwards, Alexa Takes the Stand: Listening Devices Raise Privacy Issues, TIME (May 4, 2017), time.com/4766611/alexa-takes-the-stand- listening-devices-raise-privacy-issues/. 33 Palmer, supra note 19. 34 Boughman, supra note 22. 35 Id.; David Goldman, What is the Cloud?, CNN: TECH (Sept. 4, 2014), http://money.cnn.com/2014/09/03/technology/enterprise/what-is-the- cloud/index.html (defining “the cloud”). 36 Amazon refuses to comply with an Arkansas Judge’s order to release audio data from a murder suspect’s artificially intelligent speaker to Arkansas authorities. No decision has been made as to whether Amazon will be forced to comply. David Lohr, Amazon Refuses to Comply with Police Request in Arkansas Murder Case, HUFFINGTON POST (Dec. 28, 2016, 7:14 PM), https://www.huffingtonpost.com/entry/amazon-arkansas-murder- case_us_58642d86e4b0eb586488082c; Palmer, supra note 19. 37 Jake Swearingen, Can an Amazon Echo Testify Against You?, SELECT ALL (Dec. 27, 2016), http://nymag.com/selectall/2016/12/can-an-amazon-echo-testify- against-you.html. 38 Boughman, supra note 22. 39 Id. continued . . .

56 WAKE FOREST J. [VOL. 19 BUS. & INTELL. PROP. L. companies discourage deleting interaction histories because it reduces the ability to create a profile with personalized features.40 Many users purchase “weak” A.I. systems for in home use; however, commercial A.I. developers like Amazon are now pushing for businesses to take advantage of these systems in order to make their offices more efficient and productive.41 In fact, Amazon is so focused on getting Alexa into businesses that Amazon worked with Thomas Reuters Elite Workspace group to develop the Workspace Assistant.42 The system includes a billable hours feature which allows users to track their billable hours simply by saying “Alexa, track my time.” 43 Workspace Assistant only works within the Workspace platform rather than relying on Amazon itself. 44 According to a statement by Eric Ruud, Managing Director of Thomas Reuters Legal Enterprise Solutions, while the system may leverage Amazon’s technology, Workspace Assistant “always [operates] within the firm’s security walls.”45 Always-on devices provide many convenience benefits to users. Not only can they be helpful in assisting with daily routine, but now they can also visibly show you the five-day forecast, make video calls, and play a user’s favorite music video.46 However, there are many risks associated with this technology as well, including the ability to create unique profiles on individuals, and store information which can potentially be leveraged against them in a legal proceeding.47 There is a vast array of literature available regarding the privacy concerns of individuals.48 Nonetheless, what appears to be missing, and what this comment will address, is the ethical dilemma an attorney faces when deciding whether convenience in the form of a “weak” A.I. system, even one developed by Reuters, is prohibited by the Model Rules surrounding communication, storage of confidential client or prospective client information, and responsibilities regarding non- lawyer assistants.49 Part III below addresses which Model Rules may

40 Id. 41 See Finnegan, supra note 1. 42 Robert Ambrogi, Now Lawyers Can Say, ‘Alexa, Track My Time’, LAWSITES (May 9, 2017), https://www.lawsitesblog.com/2017/05/now-lawyers-can-say-alexa- track-time.html. 43 Id. 44 Id. 45 Id. 46 David Pierce, Review: Amazon Echo Show, WIRED (June 16, 2017, 12:00 PM), https://www.wired.com/2017/06/review-amazon-echo-show/. 47 Allison S. Bohm et al., Privacy and Liberty in an Always-On, Always Listening World, 19 COLUM. SCI. & TECH. L. REV. 1, 8 (2017). 48 See, e.g., Bohm, supra note 47; Brill & Jones, supra note 20. 49 See infra Part IV. continued . . . 2018] ALEXA TRANSMIT CLIENT DATA 57

be implicated in this decision.50

III. ALEXA, CAN CONVENIENCE BE ETHICAL? The Model Rules of Professional Conduct were promulgated by the American Bar Association in 1983 in order to provide attorneys and legal professionals with a baseline standard for legal ethics and professional responsibility.51 While the ABA Model Rules themselves are recommendations which states may choose to adopt, as of 2015, forty-nine of the fifty United States have adopted them in whole or in part.52 California is the only state that has not adopted the Model Rules in any fashion.53 It is important to note that other statutes and court- created laws also govern attorney behavior outside of the Rules an attorney’s state adopts.54 While some jurisdictions may differ slightly, the Model Rules still serve as a resource to refer to when deciding whether having an A.I. system like Alexa or Google Home in a legal office is ethical (the ethical dilemma). Specifically, Model Rules 1.4, 1.6, 1.18, and 5.3 are significant. 55 Model Rule 1.4(a)(1) states in relevant part that a “lawyer shall promptly inform the client of any decision or circumstance with respect to which the client’s informed consent (…), as defined by rule 1.0(e), is required by these Rules.”56 Model Rule 1.0(e) provides the definition of “informed consent” as “the agreement by a person to a proposed course of conduct after the lawyer has communicated adequate information and explanation about the material risks of and reasonably available alternatives to the proposed course of conduct.”57 The first step in satisfactorily following Model Rule 1.4(a)(1) is figuring out when informed consent is required. 58 Informed consent is required when a rule states the client must give informed consent. 59 An attorney must inform the client “about the

50 See infra Part III. 51 See RUSSELL G. PEARCE ET AL., PROFESSIONAL RESPONSIBILITY: A CONTEMPORARY APPROACH 6–7 (Louis Higgins et al. eds., 3d ed. 2011). 52 Jurisdictions That Have Adopted the ABA Model Rules of Professional Conduct, A.B.A.: CTR. FOR PROF. RESP., https://www.americanbar.org/groups/professional_responsibility/publications/model _rules_of_professional_conduct/alpha_list_state_adopting_model_rules.html (last updated Mar. 28, 2018). 53 Id. 54 PEARCE ET AL., supra note 51, at 8. 55 See infra Part III. 56 MODEL RULES OF PROF’L CONDUCT r. 1.4(a)(1) (AM. BAR ASS’N 2016). 57 Id. at r. 1.0(e). 58 Ronald L. Trope & Sarah Jane Hughes, Contemporary Issues in Cyberlaw: Red Skies in the Morning - Professional Ethics at the Dawn of Cloud Computing, 38 WM. MITCHELL L. REV. 111, 229 (2011). 59 See, e.g., MODEL RULES OF PROF’L CONDUCT r. 1.6(a) (AM. BAR ASS’N 2016) continued . . .

58 WAKE FOREST J. [VOL. 19 BUS. & INTELL. PROP. L. advantages and disadvantages of revelation in language the client can understand.”60 Under some rules informed consent must be expressly given in writing, while others allow for implied authorization as long as the attorney has properly informed the client about his or her rights.61 Regardless, “informed consent requires an understanding of the risks and benefits” of the client’s pending decision.62 An ethical attorney fulfills his or her professional obligation only when he or she provides the proper information, informs the client of the risks associated with following the attorney’s proposed course of action, and then provides alternatives all within a reasonable time frame.63 Model Rules 1.0(e) and 1.4(a)(1) act as important red flags to attorneys, signaling that when the words “informed consent” are used in another Model Rule, the attorney must remain vigilant in his communication.64 This leads directly to the next Model Rule implicated in the ethical dilemma, which is Model Rule 1.6(a).65 Model Rule 1.6(a) states that a “lawyer shall not reveal information relating to the representation of a client unless the client gives informed consent, the disclosure is impliedly authorized in order to carry out the representation, or the disclosure is permitted by paragraph (b).” 66 Model Rule 1.6(b) then goes on to explicitly state when disclosure is permitted, allowing disclosure for the purposes of preventing the client from coming to harm if the information is not disclosed, preventing harm to others, or protecting the lawyer himself or herself in a legal controversy.67 Model Rule 1.6 is implicated in the ethical dilemma because unless

(explaining that a client must give informed consent when waiving confidentiality). 60 Banner v. City of Flint, 99 Fed. App’x 29, 36 (6th Cir. 2004) (affirming the District Court’s finding that an attorney violated Model Rule 1.6 when failing to inform a potential client about their confidentiality rights). 61 Compare MODEL RULES OF PROF’L CONDUCT r. 1.7(b)(4) (AM. BAR ASS’N 2016) (requiring that each affected client give informed consent in writing), with MODEL RULES OF PROF’L CONDUCT r. 1.6(a) (AM. BAR ASS’N 2016) (noting that implied authorization to disclose information may exist if required to carry out representation). 62 Dean R. Dietrich, Ethics: Obtaining Client’s ‘Informed Consent’ to Disclose Information, 83 WIS. LAW. 11 (Nov. 1, 2010), https://www.wisbar.org/NewsPublications/WisconsinLawyer/Pages/Article.aspx?Vo lume=83&Issue=11&ArticleID=1918 (quoting MODEL RULES OF PROF’L CONDUCT r. 3.12 (AM. BAR ASS’N, 6th ed. 2007). 63 See MODEL RULES OF PROF’L CONDUCT r. 1.0(e) &1.4(a)(1) (AM. BAR ASS’N 2016). 64 See id. 65 Id. at r. 1.6(a). 66 Id. 67 Id. at r. 1.6(b). continued . . . 2018] ALEXA TRANSMIT CLIENT DATA 59

a client explicitly elects to disclose information relating to the lawyer’s representation of himself or herself to a third party, or one of the exceptions in Model Rule 1.6(b) is triggered, then the lawyer must not reveal information.68 Although, in some circumstances the disclosure is implied if revelation is required as part of representation. 69 The comment to Model Rule 1.6 is helpful in establishing the purpose of limiting information shared with others.70 Comment Two notes that clients need “to communicate fully and frankly with the lawyer even as to embarrassing or legally damaging subject matter.”71 Therefore, it follows that if a client is encouraged to share embarrassing or other confidential subject matter, the attorney should be able to ensure that third parties will not be able to leverage that information against them.72 Comment four to Model Rule 1.6 further emphasizes that “this prohibition also applies to disclosures by a lawyer that do not in themselves reveal protected information but could reasonably lead to the discovery of such information by a third person.”73 Assurances that information from privileged client meetings will not be disclosed would be difficult to achieve with always-on technologies like Alexa or Siri present.74 These devices can be triggered with relative ease, as noted in Part I 75; therefore, unless the attorney were to disclose that he or she owned one of these devices and the client consented to their use, or if the attorney took steps to manually deactivate the device, the attorney would likely violate Model Rule 1.6(a).76 The violation arises when the always-on device hears or thinks it hears the wake word, causing the device to record and transmit the data back to the cloud, which is owned by Amazon—a third party.77 As emphasized in Part I, Amazon uses all data collected to create profiles and even transmits data to other third parties.78 This means that the attorney has inadvertently revealed information pertaining to a client, without the client’s consent and thus he or she is in violation of Model Rule 1.6.79 The next Model Rule implicated in the ethical dilemma is Model Rule 1.18(a) and (b), which outline the duties owed to a prospective

68 See id. at r. 1.6(a). 69 Id. 70 See id. at r. 1.6 cmt. 1. 71 Id. at r. 1.6 cmt. 2. 72 See id. 73 Id. at r. 1.6 cmt. 4. 74 See infra text accompanying notes 76–80. 75 See supra Part I. 76 MODEL RULES OF PROF’L CONDUCT r. 1.6 (AM. BAR ASS’N 2016). 77 See supra text accompanying notes 21–24, 36–37. 78 See supra Part I. 79 MODEL RULES OF PROF’L CONDUCT r. 1.6 (AM. BAR ASS’N 2016). continued . . .

60 WAKE FOREST J. [VOL. 19 BUS. & INTELL. PROP. L. client.80 Model Rule 1.18(a) defines who is a prospective client, while Model Rule 1.18(b) details an attorney’s duties to prospective clients who do not engage in a further attorney-client relationship. In relevant part, Model Rule 1.18(b) denotes that “a lawyer who had discussions with a prospective client shall not use or reveal information learned in the consultation . . . .”81 Model Rule 1.18 differs from Model Rule 1.6 in that it pertains to those who may not agree to have the attorney represent them, but instead merely sought a consultation or discussed the possibility of forming an attorney-client relationship. 82 It also differs because in Model Rule 1.6 the ABA outlines the times when an attorney may or must reveal information relating to his or her representation of a client.83 However, no such allowance is made in Model Rule 1.18.84 While prospective clients should be protected, the ABA does distinguish the prospective from the actual client noting that “prospective clients should receive some but not all of the protection afforded clients.”85 As the commentary to Model Rule 1.18 notes: It is often necessary for a prospective client to reveal information to the lawyer during an initial consultation prior to the decision about formation of a client-lawyer relationship. The lawyer often must learn such information to determine whether there is a conflict of interest with an existing client and whether the matter is one that the lawyer is willing to undertake.86 Just as Model Rule 1.6 protects client information in confidential meetings, so too does Model Rule 1.18 protect the information of a prospective client.87 The same analysis would then apply regarding whether having an A.I. system is allowed under the Model Rules.88 If a prospective client walks into an attorney’s office where an A.I. system is present, the attorney should either disclose that the system may potentially activate, or take steps to ensure that the device is not actively listening.89

80 Id. at r. 1.18(a)-(b). 81 Id. at r. 1.18(b). 82 See id. at r. 1.6 cmt. 1; see also id. at r. 1.18(a). 83 Id. at r. 1.6(a)-(b). 84 See generally id. at r. 1.18 (making no mention of exceptions about revelation of prospective client materials in any subparts of the Rule). 85 Id. at r. 1.18 cmt. 1. 86 Id. at r. 1.18 cmt. 3. 87 Id. at r. 1.18(b). 88 Compare id. at r. 1.18(d)(2), with id. at r. 1.6(c). 89 Id. at r. 1.4(a) (requiring lawyers to disclose any circumstance regarding a continued . . . 2018] ALEXA TRANSMIT CLIENT DATA 61

Finally, Model Rule 5.3, which governs the behavior of non-lawyer assistants and indicates the responsibilities of attorneys in the non- lawyer’s supervision, is implicated.90 While Model Rule 5.3 clearly intended for this section to apply to human beings, it may help guide the decision of the attorney facing the ethical dilemma. 91 Model Rule 5.3(b) directs that an attorney with supervisory authority over the non- lawyer assistant “shall make reasonable efforts to ensure that the person’s conduct is compatible with the professional obligations of the lawyer.” 92 Model Rule 5.3(c) elaborates on when the lawyer is responsible for the non-lawyer’s failure to abide by the Model Rules, unambiguously noting that if the attorney fails to take remedial action when he or she is aware of the conduct and can mitigate or avoid the consequences of the failure then he or she is responsible for the non- lawyer’s actions.93 While Model Rule 5.3 may apply to hired persons, 94 it could eventually extend to A.I. assistants like Workspace Assistant or Siri. As A.I. systems become more complex and develop greater cognitive skills attorneys may be tempted to leverage these devices for legal research, automation, or predictive capabilities. 95 Legal automation already occurs.96 For example, LegalZoom can generate form documents based on user input. 97 Other services generate similar forms and have dramatically improved as more and more users become comfortable with the idea of online legal services. 98 Meanwhile Workspace Assistant “can calculate time spent on specific matters,” as well as “answer questions relating to billable hours.”99 As these technologies progress, attorneys may begin to rely on them more frequently for easy form generation or convenience purposes, thus eliminating the need for

client’s informed consent). 90 Id. at r. 5.3(c)(2). 91 See id. at r. 5.3(a). 92 Id. at r. 5.3(b). 93 Id. at r. 5.3(c)(2). 94 See generally id. at r. 5.3. 95 Ben Allgrove & Yoon Chae, Considerations for Attorneys Using Artificial Intelligence, LAW 360 (Feb. 14, 2018), https://www.law360.com/articles/1009857/considerations-for-attorneys-using- artificial-intelligence. 96 Id. 97 Id. 98 Id. 99 Victor Li, Amazon's Alexa Can Now Track Billable Hours, ABA J. (May 10, 2017, 9:29 AM), http://www.abajournal.com/news/article/amazons_alexa_can_now_track_billable_ho urs. continued . . .

62 WAKE FOREST J. [VOL. 19 BUS. & INTELL. PROP. L. as many human resources.100 But then the question becomes, who is responsible when the automated form is incorrect, or an error occurs? Obviously, the attorney supervising should be held accountable,101 but does Model Rule 5.3 apply? As it stands, the Model Rules are silent on technology specific errors.102 Therefore, legal scholars should consider whether Model Rule 5.3 should extend to A.I. non-lawyer assistants before issues arise. This is not to say that the Model Rules are averse to technology. In fact, the ABA updated the Model Rules in 2013 to include a requirement that attorneys stay competent by “keep[ing] abreast of changes in the law and its practice, including the benefits and risks associated with relevant technology.”103 In the comment to Model Rule 1.6, the ABA clarifies that an attorney is not in violation of the rule if information is accessed without authorization or inadvertently disclosed if the attorney made reasonable efforts to prevent the unauthorized access or disclosure.104 The reasonableness of the efforts are assessed in a variety of ways, including: the sensitivity of the information, the likelihood of disclosure if additional safeguards are not employed, the cost of employing additional safeguards, the difficulty of implementing the safeguards, and the extent to which the safeguards adversely affect the lawyer’s ability to represent clients (e.g., by making a device or important piece of software excessively difficult to use).105 The last portion of the comment specifically refers to technology, and suggests that the goal of keeping information secure is balanced by an attorney’s ability to take advantage of changing technologies.106 In other words, the ABA has no desire to make technologies so difficult to use that it renders such technology useless to an attorney.107 However,

100 Allgrove, supra note 95. 101 See MODEL RULES OF PROF’L CONDUCT r. 5.3 (AM. BAR ASS’N 2016) (assigning responsibility for the conduct of supervised non-lawyers to the supervising lawyer). 102 See generally MODEL RULES OF PROF’L CONDUCT (AM. BAR ASS’N 2016) (failing to provide protocol for technology errors where no human was involved in making the error). 103 Id. at r. 1.1 cmt. 8. See also Matthew Haydo, ABA Amends Model Rules of Professional Conduct to Address Changes Brought by Technology and Globalization, JDSUPRA (May 7, 2013), https://www.jdsupra.com/legalnews/aba- amends-model-rules-of-professional-c-23504/. 104 MODEL RULES OF PROF’L CONDUCT r. 1.6 cmt. 18 (AM. BAR ASS’N 2016). 105 Id. 106 See id. 107 See id. continued . . . 2018] ALEXA TRANSMIT CLIENT DATA 63

the attorney must show the ABA that he or she has taken reasonable steps to ensure the technology keeps the client’s information secure in compliance with the actual language of Model Rule 1.6.108 Consistent with the Model Rule’s comments on technology, some states have released Formal Ethics Opinions to supplement their own rules to be more technology friendly. 109 For example, in 2010, the Florida Bar Association’s Formal Ethics Opinion 10-2 (Opinion 10-2) outlined in detail the steps Florida attorneys must take in order to secure client information on hard drive devices such as flash drives and personal digital assistants (PDA’s), which even just eight years later seem like outdated technologies.110 Opinion 10-2 created a four-step process for ensuring compliance with Florida Rules 4-1.1, 4-1.6(a), 4- 5.3(b), the Florida state equivalent of Model Rules 1.1 (Competence), 1.6 (Confidentiality), and 5.3 (Duty to Supervise). 111 These Florida measures included: (1) identification of the potential threat to confidentiality along with the development and implementation of policies to address the potential threat to confidentiality; (2) inventory of the Devices that contain Hard Drives or other Storage Media; (3) supervision of nonlawyers to obtain adequate assurances that confidentiality will be maintained; and (4) responsibility for sanitization of the Device by requiring meaningful assurances from the vendor at the intake of the Device and confirmation or certification of the sanitization at the disposition of the Device.112 The rationale for Opinion 10-2 was that many lawyers were “intentionally and unintentionally stor[ing] their clients’ information on these [d]evices.” in an attempt to keep up with growing use of technology in the workplace; therefore, the Florida Bar Board of Governors needed to supply the attorneys with guidance to avoid ethical

108 See id. at r. 1.6 cmt. 19. 109 See Fla. Bar, Ethics Op. 10-2 (2010), https://www.floridabar.org/etopinions/etopinion-10-2/; Cal. State Bar Comm. on Prof'l Responsibility & Conduct, Formal Op. 2010-179 (2010), www.calbar.ca.gov/Portals/0/documents/ethics/Opinions/2010-179-Interim-No-08- 0002-PAW.pdf. 110 Fla. Bar, Formal Op. 10-2 (2010), https://www.floridabar.org/etopinions/etopinion-10-2/. 111 Id.; MODEL RULES OF PROF’L CONDUCT r. 1.1, 1.6, 5.3 (AM. BAR ASS’N 2016). 112 Fla. Bar, Ethics Op. 10-2 (2010), https://www.floridabar.org/etopinions/etopinion-10-2/. continued . . .

64 WAKE FOREST J. [VOL. 19 BUS. & INTELL. PROP. L. conflicts while also allowing the firms to change over time.113 Similarly, the State Bar of California Standing Committee on Professional Responsibility and Conduct (the Committee), which has not adopted the Model Rules, released a Formal Ethics Opinion on transmission of client data which could be susceptible to unauthorized access by third parties (California Opinion).114 Describing technology as an “indispensable tool of law,” the Committee created a hypothetical in which a new Associate first takes his work computer to a local coffee shop where he researches and sends emails to the client over a public wireless network.115 Then the Associate travels home with the laptop where he accessed client files on his personal wireless network in order to complete a project and continue to communicate via email to his client.116 In today’s busy world, taking a work laptop home or to lunch to continue working after hours is not uncommon.117 However, as the Committee noted, without appropriate safe guards, a public wireless network or an unsecured network can easily be accessed by others who are not privy to private communications.118 In order to assess whether the Associate is subject to discipline under California’s Ethical Rules, the Committee set up a six-part test to determine whether the use of technology constitutes a violation of confidentiality or competence.119 Those six steps included: (1) the level of security attendant to the use of that technology, including whether reasonable precautions may be taken when using the technology to increase the level of security; (2) the legal ramifications to a third party who intercepts, accesses or exceeds authorized use of the electronic information; (3) the degree of sensitivity of the information; (4) the possible impact on

113 Id. 114 Cal. State Bar Comm. on Prof'l. Responsibility & Conduct, Formal Op. 2010- 179 (2010), www.calbar.ca.gov/Portals/0/documents/ethics/Opinions/2010-179- Interim-No-08-0002-PAW.pdf. 115 Id. 116 Id. 117 See Sarah Landrum, How Millennials are Making Work from Home Work, FORBES (Mar. 31, 2017), https://www.forbes.com/sites/sarahlandrum/2017/03/31/how-millennials-are- making-work-from-home-work/#2cdd765752d2. 118 Cal. State Bar Comm. on Prof'l. Responsibility & Conduct, Formal Op. 2010- 179 (2010), www.calbar.ca.gov/Portals/0/documents/ethics/Opinions/2010-179- Interim-No-08-0002-PAW.pdf. 119 Cal. State Bar Comm. on Prof'l. Responsibility & Conduct, Formal Op. 2010-179 (2010), www.calbar.ca.gov/Portals/0/documents/ethics/Opinions/2010- 179-Interim-No-08-0002-PAW.pdf. continued . . . 2018] ALEXA TRANSMIT CLIENT DATA 65

the client of an inadvertent disclosure of privileged or confidential information or work product; (5) the urgency of the situation; and (6) the client’s instructions and circumstances, such as access by others to the client’s devices and communications.120 Under these standards, the associate risks breaching his client’s confidentiality at the coffee shop because the public network was not secure. 121 However, the Committee, recognizing that working in a coffee shop is not uncommon, noted that the Associate could take additional steps such as “using a combination of file encryption, encryption of wireless transmissions and a personal firewall.”122 The Committee even suggested that, depending on the sensitivity of the matter, the attorney’s extra steps in protecting the information may not be enough. 123 The Committee had similar feelings regarding the attorney’s personal wireless network, but it felt that working on the matter at home over a private network was less concerning than working on a client matter in public.124 The California Opinion and Opinion 10-2 highlight the state bar associations’ understanding that technology needs to be in the workplace. 125 But these opinions also emphasize the importance of attorney supervision and understanding of the technologies which they are utilizing. 126 While these opinions cover technologies which are seemingly out of date, the standards they set forth to determine the reasonable steps an attorney may take can be applied to technologies like Alexa.127 By identifying the Model Rules which may presently conflict with allowing technologies like Alexa or Workspace Assistant in the workplace attorneys, the ABA, attorneys, and tech companies can work together to ensure that client information is protected and attorneys are not at risk of an ethical violation while staying current with technological trends. Part III below suggests how the standards from the Model Rule Comment 1.6, Opinion 10-2, and the California Opinion might be applied to A.I. systems like Alexa and Workspace Assistant.128 Part III will also suggest precautions which attorneys and firms may

120 Id. at 1. 121 Id. at 7. 122 Id. 123 Id. 124 Id. 125 See id.; Fla. Bar, Ethics Op. 10-2 (2010), https://www.floridabar.org/etopinions/etopinion-10-2/. 126 Id. 127 Id. 128 See infra Part III. continued . . .

66 WAKE FOREST J. [VOL. 19 BUS. & INTELL. PROP. L. initiate on their own to bring clients peace of mind while also allowing these A.I. systems to assist attorneys.129

IV. ETHICAL TECHNOLOGY AND THE EVOLVING WORKPLACE Looking to Model Rule 1.6 comment eighteen (Comment Eighteen), the factors listed in Part II play a critical role in assessing whether the attorney has violated his or her ethical duty.130 Of particular importance to the ethical dilemma of whether or not an A.I. assistant violates the Model Rules is the cost of employing additional safeguards, the difficulty of implementing those safe guards, and the likelihood of disclosure.131 A.I. systems like Alexa or Google Home are managed largely by the platform which owns the technology.132 Meanwhile a system like Workspace Assistant’s billable hours feature on Alexa runs within the Reuters Elite 3E secure platform, and is protected behind the specific law firm’s firewalls with little interaction with Amazon other than leveraging the ASR capabilities of the device.133 Applying Comment Eighteen’s test to the two A.I. assistants helps distinguish which system would be allowed under the existing rule and which would require further analysis.134 For a regular Alexa there are almost no safeguards, merely Amazon’s privacy policy which only governs how the device may be used and what information Amazon itself may be privy to.135 The likelihood of disclosure is also a concern given that Amazon is able to store recorded data in the cloud, which can then be subpoenaed.136 More importantly more research has shown that Alexa, like practically all connected devices, can indeed be hacked.137

129 See infra Part III. 130 See supra Part II. 131 MODEL RULES OF PROF’L CONDUCT r. 1.6 cmt. 18 (AM. BAR ASS’N 2016). 132 Richard Baguley & Colin McDonald, Appliance Science: Alexa, how does Alexa work? The science of the Amazon Echo, CNET (Aug. 4, 2016), https://www.cnet.com/news/appliance-science-alexa-how-does-alexa-work-the- science-of-amazons-echo/. 133 Press Release, Thomson Reuters, Elite 3E Brings the Convenience of Amazon Alexa to Time and Billing (May 4, 2017), https://www.thomsonreuters.com/en/press-releases/2017/may/elite-3e-brings- convenience-of-amazon-alexa-to-time-and-billing.html. 134 MODEL RULES OF PROF’L CONDUCT r. 1.6 cmt. 18. 135 See Alexa Terms of Use, AMAZON, https://www.amazon.com/gp/help/customer/display.html?nodeId=201809740 (last updated May 17, 2018). 136 See Lohr, supra note 36. 137 Mark Barnes, Alexa, Are You Listening?, MWR LABS (Aug. 1, 2017), https://labs.mwrinfosecurity.com/blog/alexa-are-you-listening; Jay McGregor, Listening-In On A Hacked Amazon Echo is Terrifying, FORBES (Sept. 7, 2017), https://www.forbes.com/sites/jaymcgregor/2017/09/07/listening-in-on-a-hacked- continued . . . 2018] ALEXA TRANSMIT CLIENT DATA 67

Thus, a normal Alexa run by the Amazon platform has already failed two of the three important elements in Comment Eighteen.138 On the other side of the spectrum is Workspace Assistant, which uses Alexa but is not run on the Amazon platform. 139 Workspace Assistant, which is the application that allows Alexa to record billable hour information, uses a platform called Elite Workspace designed by Thomas Reuters, which operates as a business management platform for law firms. 140 Elite Workspace, including the Workspace Assistant, works within the firm’s existing security walls, thus addressing the issue of disclosure and addressing the difficulty of implementing safeguards to ensure the information does not leak. 141 The Elite Workspace platform does require firms to purchase the platform thereby addressing the third prong of Comment Eighteen’s main concerns, which is the cost of implementation.142 While specific costs were not available to the author, the platform is priced to sell. 143 Meanwhile Workspace Assistant is free if Elite Workspace has already been purchased, so there is no added cost to the user.144 What is unclear with Workspace Assistant is whether it must be constantly running for the billable hours to be tracked.145 If Workspace Assistant is on, does this mean Alexa is actively listening? For example, if an attorney said “Alexa, track hours for client matter 1234-77” presumably this would activate the Workspace Assistant feature that would begin timing.146 The problem is that if Workspace Assistant is actively running, this may also mean that Alexa is recording because it is actively listening.147 Therefore, if a client is in the room with the attorney or if the attorney is on the phone, those conversations may be recorded because the device is still “a low touch into the Amazon

amazon-echo-is-terrifying/#4c69cafa5c7f. 138 See supra Part II. 139 Press Release, Thomson Reuters, Elite 3E Brings the Convenience of Amazon Alexa to Time and Billing (May 4, 2017), https://www.thomsonreuters.com/en/press-releases/2017/may/elite-3e-brings- convenience-of-amazon-alexa-to-time-and-billing.html. 140 Thomson Reuters, 3E Workspace, THOMSON REUTERS ELITE, http://www.elite.com/3e/lawyer-experience/workspace/ (last viewed Mar. 11, 2018). 141 Ambrogi, supra note 42. 142 See supra Part II. 143 See Ambrogi, supra note 42. 144 Press Release, Thomson Reuters, Elite 3E Brings the Convenience of Amazon Alexa to Time and Billing (May 4, 2017), https://www.thomsonreuters.com/en/press-releases/2017/may/elite-3e-brings- convenience-of-amazon-alexa-to-time-and-billing.html. 145 See id. 146 See Li, supra note 99. 147 Ambrogi, supra note 42. continued . . .

68 WAKE FOREST J. [VOL. 19 BUS. & INTELL. PROP. L. environment.”148

A. Recommendation 1: When Operating in Secure Workspace Devices Should Be Unplugged Before Engaging in Any Oral Communication.

To ensure Workspace Assistant does not violate the Model Rule 1.6, when an attorney begins billable hours within the platform he or she should either gain written informed consent from the client per Model Rule 1.6(a), or the device should be unplugged before any oral communication regarding the client’s representation begins. 149 Following the conversation, the attorney should manually input the time in which the conversation took place, unless written informed consent from the client has been granted. To attain informed consent, the attorney should advise the client of the Workspace Assistant’s presence, inform the client exactly what will be recorded, and inform the client of his or her right to confidentiality.150 Regarding potential clients under Model Rule 1.18, Workspace Assistant should be turned off to avoid any confusion.151 Since no client matter number would exist there is no reason to have Workspace Assistant on. If the firm requires the attorney to bill hours relating to potential client meetings, the attorney may manually input those hours. This will avoid unnecessary potential client confusion and ensure the attorney’s compliance with the Model Rules.152

B. Recommendation 2: Platforms Like Amazon and Google Could Develop Secure Cloud Space.

Much like Reuters has developed a secure network to house Workspace Assistant data, it would behoove platforms like Amazon and Google to develop a business friendly cloud space that could be encrypted. 153 Amazon has already developed Alexa for Business, which is capable of performing tasks such as alerting the information technology department to a technical issue, controlling conference room equipment, and even providing the latest company sales data.154 Alexa

148 Id. 149 See MODEL RULES OF PROF’L CONDUCT r. 1.6(c) (AM. BAR ASS’N 2016). 150 Id. 151 See MODEL RULES OF PROF’L CONDUCT r. 1.18. 152 Id. 153 Vince Vela, Doctoring Up Cybersecurity Standards: A Solution to Adequate Internet Security Measures Post Wyndham, 3 TEX. A&M J. PROP. L. 243, 245–46 (2016). 154 Jason Hilner, Cheat Sheet: Alexa for Business, TECHREPUBLIC (Dec. 1, continued . . . 2018] ALEXA TRANSMIT CLIENT DATA 69

for Business is compatible with multiple applications including WebEx, Microsoft Office 365, and Polycom, but it does not seem to offer a secure cloud storage space for all of the information Alexa is retrieving.155 So while an employee has the ability to customize his or her Alexa work experience with his or her personal preferences, he or she is unable to secure his or her data in an encrypted space. 156 Therefore, before a firm decides to invest in Alexa for Business, it would be beneficial for Amazon to develop a platform that secures all of the stored data collected around the office, from client phone calls recorded by the Alexa in the hallway to recorded conferences occurring via Alexa enabled WebEx.157 These encrypted clouds may be able to operate within the firm’s existing firewalls, or they could be an entirely separate cloud space, which would allow attorneys to still have an Alexa with the peace of mind in knowing that they have taken steps to secure the data by applying additional safe guards with little difficulty in compliance with Comment Eighteen.

C. Recommendation 3: Be Aware and Be Open with the Client.

Firms can look to Opinion 10-2, the California Opinion, or their own state ethics opinions to determine how technology compliance with the state Rules is assessed by their state bar.158 In reviewing Opinion 10-2, identifying the technology that may result in unauthorized access, keeping an inventory of the technology used in the space, providing adequate supervision of staff and other non-lawyers utilizing the technology, disposing of the device properly when no longer in use, and certifying that the device has properly been wiped are all steps attorneys can take to proactively ensure that they are in compliance with the Rules of Professional Conduct.159 In order to identify the technology and understand how it should properly be monitored and disposed of, attorneys need to be aware of how the technology actually works.160

2017), https://www.techrepublic.com/article/cheat-sheet-alexa-for-business/. 155 Id. 156 Id. 157 Id. 158 See generally Fla. Bar, Ethics Op. 10-2 (2010), https://www.floridabar.org/etopinions/etopinion-10-2/; Cal. State Bar Comm. on Prof'l Responsibility & Conduct, Formal Op. 2010-179 (2010), www.calbar.ca.gov/Portals/0/documents/ethics/Opinions/2010-179-Interim-No-08- 0002-PAW.pdf. 159 See Fla. Bar, Ethics Op. 10-2 (2010), https://www.floridabar.org/etopinions/etopinion-10-2/. 160 See MODEL RULES OF PROF’L. CONDUCT r. 1.1 cmt. 8 (AM. BAR ASS’N 2016) (noting an attorney should understand the “risks and benefits of the technology”). continued . . .

70 WAKE FOREST J. [VOL. 19 BUS. & INTELL. PROP. L.

Without a thorough understanding of such technology it is impossible for the attorney to adequately inform the client of the device’s presence and the risks and benefits associated with utilizing the device; therefore, the client cannot give his or her informed consent to the device’s use regarding the client’s representation, which is a violation of Model Rule 1.6(a).161 As it stands, an attorney would need to get informed consent by every client or potential client should a regular Alexa system be installed and in use in the office space by either the attorney or those under the supervision of the attorney.162 A normal Alexa system has a low level of security; unless the attorney is using Workspace Assistant, he or she has not taken any additional steps to increase the level of security.163 Furthermore, the legal ramifications to the third party who intercepts the information housed in the Alexa cloud (e.g., Amazon) are still unclear. 164 An attorney needs to be able to assess the level of security associated with the technology and analyze the possible impact on the client should the information recorded and saved in the Alexa cloud space be released or accessed without authorization.165 As is the case with most situations, a client’s instructions also matter, but the client cannot give instructions regarding the device’s use if he or she is not made aware of its presence.166 In sum, unless an attorney, or a staff member, using an Alexa ensures that the device is not recording by unplugging the device during relevant oral communications including, phone calls, in person meetings, or staff meetings regarding the client matter, the client should be made aware of the device’s presence and the risks and benefits associated with it. 167 After a client has been

161 Id.; Banner v. City of Flint, 99 Fed.Appx. 29, 36 (6th Cir. 2004). 162 See MODEL RULES OF PROF’L. CONDUCT r.1.6, 1.18; see also Cal. State Bar Comm. on Prof'l. Responsibility & Conduct, Formal Op. 2010-179 (2010), www.calbar.ca.gov/Portals/0/documents/ethics/Opinions/2010-179-Interim-No-08- 0002-PAW.pdf. 163 Id. 164 In one case, a defendant, in conjunction with Amazon, agreed to release Alexa Data to Prosecutors in a murder trial. Previously Amazon had fought the Court order to release the Alexa recordings, but no Court decision was rendered because Defendant voluntarily released the information.) See Andrew Blake, Amazon Gives Up Alexa Data Sought in Murder Probe, THE WASHINGTON TIMES (Mar. 8, 2017), https://www.washingtontimes.com/news/2017/mar/8/amazon-gives- alexa-data-sought-murder-probe/. 165 See Cal. State Bar Comm. on Prof'l. Responsibility & Conduct, Formal Op. 2010-179 (2010), www.calbar.ca.gov/Portals/0/documents/ethics/Opinions/2010- 179-Interim-No-08-0002-PAW.pdf. 166 Id. 167 See MODEL RULES OF PROF’L CONDUCT r. 1.6, 1.18 (AM. BAR ASS’N 2016); Fla. Bar, Ethics Op. 10-2, (2010), https://www.floridabar.org/etopinions/etopinion- 10-2/./; Cal. State Bar Comm. on Prof'l. Responsibility & Conduct, Formal Op. continued . . . 2018] ALEXA TRANSMIT CLIENT DATA 71

adequately informed, the attorney should get the client to sign a document stating that he or she is aware of the device and, after being adequately appraised of his or her rights, gives his or her informed consent to the device’s use.168

V. CONCLUSION As technology proceeds to develop at a rapid pace, attorneys are tasked with ensuring they keep up with the latest innovations. 169 However, they cannot forsake a client’s confidentiality or risk a client’s information later being leveraged against them because the attorney or a staff member was unaware that his or her weak A.I. system was recording and storing that information. 170 By working closely with technology developers to create secure cloud storage space, providing continuing legal education centered around how these devices can be used properly in an office space, and adequately informing clients of their rights, attorneys can and should leverage new A.I. technology to become faster, more efficient, and more cost effective in their businesses.

2010-179 (2010), www.calbar.ca.gov/Portals/0/documents/ethics/Opinions/2010- 179-Interim-No-08-0002-PAW.pdf. 168 See MODEL RULES OF PROF’L CONDUCT r. 1.6, 1.18 (AM. BAR ASS’N 2016). 169 See MODEL RULES OF PROF’L CONDUCT 1.1 cmt. 8. 170 See MODEL RULES OF PROF’L CONDUCT 1.6, 1.18, 5.3.

WAKE FOREST JOURNAL OF BUSINESS AND INTELLECTUAL PROPERTY LAW

VOLUME 19 FALL 2018 NUMBER 1

COMMENT: ALWAYS EAT THE FINE PRINT: WHY 3D PRINTED FOOD WILL FINALLY WARRANT INTELLECTUAL PROPERTY PROTECTION FOR RECIPES

Jeff Rodgers†

I. INTRODUCTION ...... 73 II. THE TECHNOLOGY BEHIND 3D PRINTED FOOD ...... 77 III. PRINTED FOOD UNDER THE TRADE SECRET RUBRIC...... 79 A. CURRENT TRADE SECRET LAW ...... 80 B. TRADE SECRET PROTECTION WITHIN THE FOOD INDUSTRY ...... 82 C. ADVANCES IN 3D PRINTING WILL DESTROY THE POWER OF TRADE SECRET PROTECTION ...... 83 IV. PRINTED FOOD CANNOT FIT WITHIN THE SCOPE OF EXISTING IP LAW ...... 85 A. PRINTED FOOD VS. THE PATENT ...... 86 B. PRINTED FOOD VS. THE TRADEMARK...... 90 C. PRINTED FOOD VS. THE COPYRIGHT...... 95 V. NO EASY SOLUTION FOR “TRADE RECIPES” ...... 98 VI. CONCLUSION ...... 101

† © 2019 J.D. Candidate, University of Southern California Gould School of Law, 2019. The author would first and foremost like to thank the Wake Forest Journal of Business and Intellectual Property Law executive board and staff members for their outstanding work in preparing this note for publication. The author would also like to thank Professors Robert K. Rasmussen and Eileen Decker for their invaluable contributions, as well as Farah Tabibkhoei, whose knowledge of 3D printing was the guiding light that made this note remotely possible. 2018] ALWAYS EAT THE FINE PRINT 73

I. INTRODUCTION “Tea. Earl Grey. Hot.” – Captain Jean-Luc Picard1

For Trekkies,2 Earl Grey tea is not just a beverage; it is the signature drink of perhaps the most beloved character in all of Star Trek.3 Fans also instantly associate the tea with one of Star Trek’s most well-known inventions: the replicator.4 A replicator could create food and drink from any rematerialized matter, which “[m]ost people found . . . to taste exactly the same as ‘real’ food.”5 While creating food out of thin air is still relegated to science fiction, its concept is no longer a mere fantasy. Just as many concepts invented for Star Trek have now become a normal part of everyday life,6 it is only a matter of time before the replicator will become a household item as commonplace as the washing machine.7 However, in this universe we will not know it as a replicator; it will be known as the 3D printer.8 While not a particularly new technology, 3D printing is slowly entering the mainstream of society.9 If its full potential is realized, 3D printing has the potential to revolutionize nearly every industry, in both positive and negative ways.10 Adopting 3D printing technologies will reduce nearly all costs associated with manufacturing,11 and storage and warehousing costs will all but cease to exist.12 The accessibility of 3D

1 Star Trek: The Next Generation: Contagion (Paramount Television Mar. 18, 1989). 2 See Tom E. Pinkerton, Trekkie, URB. DICTIONARY (Nov. 18, 2002), https://www.urbandictionary.com/define.php?term=Trekkie (defining a “Trekkie” as “a devoted fan” of the Star Trek franchise and its derivative media). But see, TREKKIES (NEO Motion Pictures 1997) (analyzing an intracultural segregation amongst fans who take offense to “Trekkie” and prefer the term “Trekker”). 3 See Picard Named Best Star Trek Captain, STAR TREK (Feb. 27, 2012), http://www.startrek.com/article/picard-named-best-star-trek-captain. 4 See Replicator, MEMORY ALPHA, http://memory- alpha.wikia.com/wiki/Replicator (last visited Sept. 25, 2018). 5 Id. 6See Matthew Loffhagen, 15 Star Trek Gadgets That Exist in Real Life, SCREEN RANT (July 4, 2016), https://screenrant.com/star-trek-real-life-gadgets/ (highlighting that cell phones, Siri, Bluetooth, and the iPad all have their roots in Star Trek). 7 See id. 8 See David Gewirtz, I’ve Seen the Future of 3D Printing (Think Star Trek Replicator), ZDNET (July 7, 2017, 11:34 AM), http://www.zdnet.com/article/ive- seen-the-future-of-3d-printing-think-star-trek-replicator/. 9 See Avi Reichental, The Future Of 3-D Printing, FORBES (Jan. 23, 2018, 7:00 AM), https://www.forbes.com/sites/forbestechcouncil/2018/01/23/the-future-of-3-d- printing/#2bf0797865f6. 10 See JOHN HORNICK, 3D PRINTING WILL ROCK THE WORLD 4–5, 169 (2015). 11 Id. at 4–5. 12 See id. at 26 (discussing the positive effects 3D printing will have on the continued . . .

74 WAKE FOREST J. [VOL. 19 BUS. & INTELL. PROP. L. printing allows for customization of products at any scale, 13 and its minimal carbon footprint will even aid with climate change. 14 Domestic use is around the corner, and a 3D printer will be in every home, “enabl[ing] everyone to become [a] creator of things.”15 However, this great potential also comes with incredible risk, and intellectual property could experience the most drastic losses. Research and consulting firm, Gartner, predicts that while 3D printing will reach $13.4 billion in global revenue in 2018, it will simultaneously create $100 billion of losses in intellectual property.16 Furthermore, this figure inherently only includes losses actually protected by intellectual property.17 For 3D printed items unprotected by current intellectual property law, any losses will only add to Gartner’s number. 18 3D printing creates virtually unlimited opportunity, but once there is a 3D printer in every home, connected to the internet, and waiting to download and print any item, 3D printing piracy will be inevitable.19 This will hurt one industry perhaps more than any other: 3D-printed food.20 As Hod Lipson 21 envisions via the website for his Creative Machines Lab group at Columbia University: You want to bake a special cake for your mom, so you boot up the 3-D printer in your kitchen. Loaded with a dozen cartridges filled with pastes of chocolate, marzipan, and other ingredients, the machine downloads

carbon footprint). 13 See id. at 41 (“Each design for each product was destined to remain essentially unchanged in thousands or millions of exact copies.”) 14 See id. at 25–26. 15 Paula-Mai Sepp et. al., Intellectual Property Protection of 3D Printing Using Secured Streaming, in THE FUTURE OF LAW AND ETECHNOLOGIES 81, 82 (Tanel Kerikmäe & Addi Rull eds., 2016). 16 See Sarah Craig, Note, Protection for Printing: An Analysis of Copyright Protection for 3D Printing, 2017 U. ILL. L. REV. 307, 309 (2017). 17 Id. at 310. 18 John Hornick, IP Licensing in a 3D Printed World, FINNEGAN (Feb. 27, 2015), https://www.finnegan.com/en/insights/ip-licensing-in-a-3d-printed- world.html. 19 See id. 20 This article will broadly refer to this concept as either printed food, food printing, or food printers. 21 Lipson is generally seen as the foremost expert on printed food and is leading the way in advancing the technology. See Tyler Koslow, Columbia Professor Hod Lipson Leads the Food 3D Printing Revolution with New Printer Prototype, 3DPRINT (Aug. 1, 2016), https://3dprint.com/144449/lipson-food-3d-printing/. See generally Hod Lipson, COLUM., http://me.columbia.edu/hod-lipson (last visited Sept. 24, 2018) (providing a brief biography on Lipson). continued . . . 2018] ALWAYS EAT THE FINE PRINT 75

instructions from the Internet. You key in a specific texture, size, and flavor, and then you insert a 3-D message in the center—Happy Birthday, Mom!—to be revealed only after she takes a bite. The machine does the rest, assembling and baking a pastry so scrumptious it rivals a virtuoso chef’s in richness and complexity. Your mother loves it so much that she insists you send a slice of the same cake—in the form of a digital recipe— to your Uncle Norman’s printer as well. Your 3-D cake recipe gets so many raves, in fact, that you decide to sell the recipe online for 99 cents a download.22 This vision foresees vast potential for the printed food industry, with both small and large businesses able to upend traditional means of production and monetize their food via download, not unlike iTunes or any other pay-per-view streaming service.23 But with the sweet comes the sour. As we learned from the various legal controversies surrounding Napster nearly twenty years ago, anything that can be downloaded can be pirated. 24 Internet piracy sites like ThePirateBay.org and 1337x.to are already sharing pirated 3D printing files.25 Just as pirates have easily distributed music and movies across the internet, a single aspiring “food pirate” could easily copy Lipson’s hypothetical cake recipe and share it across the internet.26 Just as music and film piracy destroyed any pirate’s desire to pay for media, food piracy would destroy any desire to pay for food, and any business built around the ninety-nine cent cake recipe would fail before it could even begin. 27 Yet while the various record labels used copyright law to pursue claims against Napster,28 no member of the printed food industry

22 Digital Food, CREATIVE MACHINES LAB, https://www.creativemachineslab.com/digital-food.html (last visited Sept. 24, 2018). 23 See generally Choosing a Business Model, APP STORE, https://developer.apple.com/app-store/business-models/ (last visited Sept. 24, 2018). 24 See Craig, supra note 16, at 335 (“The decentralized piracy faced by 3D printing is not unique. The music industry faced a similar situation upon the advent of Napster and the rise of digital distribution.”) 25 The Pirate Bay even has a specific section of its site for 3D printing files, or “physibles.” See Sepp et al., supra note 15, at 83 n.8. 26 See id. at 82 (“New digital technologies have made copying a lot easier than it has been before, and we have already witnessed the collateral damage in relation to copying of music and movies.”) 27 See, e.g., Brian Stelter & Brad Stone, Digital Pirates Winning Battle with Studios, N.Y. TIMES (Feb. 4, 2009), https://www.nytimes.com/2009/02/05/business/media/05piracy.html. 28 See A & M Records, Inc. v. Napster, Inc., 114 F. Supp. 2d 896, 900 (N.D. Cal. 2000). Due to the litigation, Napster was forced to shut down in July 2001 and ultimately filed for bankruptcy in June 2002. UMG Recording, Inc. v. Bertelsmann continued . . .

76 WAKE FOREST J. [VOL. 19 BUS. & INTELL. PROP. L. would be able to pursue civil or criminal claims against food pirates or file-sharing websites because recipes are not protected under traditional intellectual property laws.29 Because recipes are not protected by traditional intellectual property such as patents, trademarks, or copyrights, corporations are forced to rely on trade secret laws.30 As awareness of food printing increases, and the benefits of downloading printed food become more appealing to the public, corporations will want to exploit that interest and offer their foods for download.31 But without protection from food piracy, any recipes offered for download could be easily hacked, and long-held secret recipes would be revealed to the world.32 Essentially, trade secret protection for food will become toothless, and the technology will flounder because no food producer will enter the printed food industry and risk their most valuable information.33 This note will analyze why printed food will require some form of intellectual property protection, and why current laws are insufficient to address the eventual needs of the industry. Part II will explain the technology and functionality of 3D printers and printed food. Part III will examine current trade secret law, its current application within the various sectors of the food industry, and why it will be futile in any fight against internet food piracy. Part IV will analyze printed food under each of the major intellectual property frameworks—patent law, trademark law, and copyright law—and why none of them can be effectively used as a tool against internet food piracy any more than trade secret law can. Finally, part V will analyze the key requirements any protection would need, as well as the difficult issues a lawmaking body would need to consider when deciding just how much protection to afford printed food.

AG (In re Napster Copyright Litig.), 479 F.3d 1078, 1082 (9th Cir. 2007). 29 See, e.g., Richard E. Kaye, Annotation, Application of Copyright Law to Cookbooks, Recipes, Cooking Shows, and the Like, 61 A.L.R. Fed. 2d 81 (2012). 30 See generally Joseph Brees, Note, Trade Secrets Go Federal – Parade to Follow, 12 J. BUS & TECH. L. 277, 280 (2017) (providing background information on corporations’ heavy reliance on trade secrets). 31 See, e.g., Lydia Mahon, 3D Printed Food – A Growing Market, 3D PRINTING INDUSTRY, (June 30, 2017, 3:00 PM), https://3dprintingindustry.com/news/3d- printed-food-growing-market-83916/ (providing a list of corporations exploring the use of 3D printing in its food production and distribution). 32 See generally Digital Food, supra note 22 (demonstrating how recipes would be downloaded from the internet and easily shared). 33 Kyle Wiggers, From Pixels to Plate, Food Has Become 3D Printing’s Delicious New Frontier, DIGITAL TRENDS, (Apr. 19, 2017, 2:44 AM), https://www.digitaltrends.com/cool-tech/3d-food-printers-how-they-could-change- what-you-eat (asserting that commercial producers of food use 3D printing to reduce time and resource costs). continued . . . 2018] ALWAYS EAT THE FINE PRINT 77

II. THE TECHNOLOGY BEHIND 3D PRINTED FOOD Much of manufacturing today (and since the Industrial Revolution) has been what is now classified as “subtractive manufacturing”— starting with a large product and sculpting it down (or “subtracting”) to fit the desired shape.34 This inherently creates loss and waste, as the subtracted materials are usually not reusable and must be disposed of.35 3D printing, on the other hand, is referred to as “additive manufacturing”—starting with a literal blank slate and creating the desired object from the ground up.36 Much like a traditional printer prints a single layer of ink onto paper, a 3D printer prints a single layer of a specific material (usually plastic, but potentially anything) at a time onto the slate, building up from the previous layer.37 This continues layer by layer, building up until the object is fully formed.38 A 3D printer knows what to print by receiving a Computer Aided Design, or CAD file.39 An object is either designed or scanned on a computer, and the final “blueprint” CAD file is converted into a universal file format, typically using an .stl file extension. 40 Once finalized, the .stl file is ready to be sent to the 3D printer, which uses the file to print out whatever design is contained within the file.41 Even though the .stl format creates a finalized file for printing, the design can still be edited or adjusted, and there are many free programs available online that will edit any .stl file.42 While this accessibility aligns with the social norms encouraged by the online 3D printing community,43 it also acts as a virtual invitation to online pirates looking to freely distribute 3D printing designs, thereby infringing the rights of

34 See HORNICK, supra note 10, at 3. 35 See id. at 4. 36 Id. at 3–4. 37 See id. 38 Id. at 4. 39 See Michael Weinberg, It Will Be Awesome If They Don’t Screw It Up, PUB. KNOWLEDGE 2 (Nov. 2010), https://www.publicknowledge.org/files/docs/3DPrintingPaper PublicKnowledge.pdf. 40 See Michael Weinberg, What’s the Deal with Copyright and 3D Printing?, PUB. KNOWLEDGE 14–15 (Jan. 2013), https://www.publicknowledge.org/files/What's%20the%20Deal%20with%20 Copyright_%20Final%20version2.pdf. 41 See id. at 14. 42 See, e.g., Frederik Bedrich, 7 Free STL Editors + How to Edit and Repair STL Files, ALL3DP (Oct. 11, 2017), https://all3dp.com/1/7-free-stl-editors-edit-repair-stl- files/. 43 Online 3D printing communities fervently support a free and open of environment of sharing and collaboration, and users are encouraged to use each other’s designs. See Weinberg, supra note 40, at 5. continued . . .

78 WAKE FOREST J. [VOL. 19 BUS. & INTELL. PROP. L. intellectual property owners.44 While printed food is still relatively unheard of by many outside of the industry, the technology has been around since 2005, when Hod Lipson and his group at Cornell University developed what is generally believed to be the first food printer.45 The number of food options available in 3D printing has since exploded. Mélisse, 46 a two-star Michelin restaurant in Santa Monica, California, uses 3D printed croutons for their French onion soup.47 Dylan’s Candy Bar is a store that helps customers design and print their own gummy candies based on photographs, allowing them to even eat a gummy of their own face based on a “selfie” picture.48 Food printers are advanced enough to print pasta, fruit, burgers, cookies, lollipops, chewing gum, or absinthe. 49 Developers have even invented brand new foods with “edible growth”—food injected with live organisms that “cook” the food in its package.50 Today, the technology can even combine multiple ingredients and print full meals and prepared dishes, leading to a future where any meal can be ordered online and printed at home.51 Beehex’s Chef 3D already prints fully customizable pizzas, allowing customers to choose their own crust, sauce, and cheese.52 The technology will only get better; as

44 See HORNICK, supra note 10, at 175 (“In fact, 3D printing could lead to counterfeiting on steroids.”) 45 While food printing was invented around the same time that 3D printing in general became affordable at the consumer level, it did not have much success until the developments by Hodson’s group at Cornell. See, e.g., 3D Food Printing, EDUTECH WIKI, https://edutechwiki.unige.ch/en/3D_food_printing (last modified Apr. 20, 2017); Tyler Pincombe, Who Invented 3D Printable Food?, PREZI (June 3, 2016), https://prezi.com/ikwbvbyu_f_b/who-invented-3d-printable-food/?webgl=0. 46 Melisse, https://www.melisse.com/ (last visited Mar. 8, 2018). 47 See Tess, Santa Monica Restaurant Mélisse Reinvents Classic French Onion Soup with 3D Printed Twist, 3DERS.ORG (Apr. 3, 2017), https://www.3ders.org/articles/20170403-santa-monica-restaurant-melisse-reinvents- classic-french-onion-soup-with-3d-printed-twist.html. 48 See 3D Gummy Candy Printing, DYLAN’S CANDY BAR, https://www.dylanscandybar.com/personalized-candy/3d-candy-printing.html (last visited Feb. 2, 2018). See generally Megan Giller, Eat My Face: I Made a 3D- Printed Candy Selfie at Dylan’s Candy Bar, THE SPOON (Oct. 10, 2016), https://thespoon.tech/eat-my-face-i-made-a-3d-printed-candy-selfie-at-dylans-candy- bar/ (describing a customer’s personal experience with Dylan’s Candy Bar). 49 See Symposium, 3D-Printed Food, 17 MINN. J.L. SCI. & TECH. 855, 858-59 (2016). 50 Id. at 859. 51 Id. at 860. 52 Leanna Garfield, This Robot Can 3D-Print and Bake a Pizza in Six Minutes, BUS. INSIDER (Mar. 4, 2017 12:16 AM), http://www.businessinsider.com/beehex- pizza-3d-printer-2017-3. The Chef 3D also allows for fully customized shapes and designs, even President Donald Trump’s face. Id. continued . . . 2018] ALWAYS EAT THE FINE PRINT 79

Lipson envisioned, food printers will inevitably be able to combine a myriad of ingredients, with the ability to create virtually any recipe.53 Such potential would create a massively exploitable market by allowing food manufacturers to allow customers to “download” the food into their home food printers.54 This would strongly appeal to businesses and food manufacturing companies because it reallocates virtually all production costs onto the customers.55 A company could distribute the CAD files for food from its website (or a similar server or application) to the customer, and it could either be a one-time purchase of the file or a single-use “rental” of the CAD file streamed directly to the customer’s printer.56 In addition to food printers, and 3D printing in general, there are also 3D scanners that can scan an object and convert its shape and design into a software blueprint.57 Beyond the exterior of an object, they “can be used to scan the interior of objects, resulting in digital files that, when 3D printed, exactly reproduce the original object, inside and out.”58 3D scanners can already scan common household objects and will only improve, until eventually a person will be able to scan an object with her phone and send the scan to her printer at home so that it will be waiting for her when she returns.59 It is only a matter of time before a person can use that same scanner to scan any piece of food, determine its recipe, and print that same food in her home at any time for no additional cost beyond the ingredients.

III. PRINTED FOOD UNDER THE TRADE SECRET RUBRIC Food, recipes, and culinary creations currently exist within the “negative spaces” of intellectual property, 60 which are areas and industries of genuine creativity that are nonetheless afforded little to no

53 See Koslow, supra note 21 and accompanying text. 54 See id. (stating that edible 3D creations will become part of daily life and some food manufacturers have already started to capitalize on this market). 55 Should a business shut down its traditional food manufacturing line of business and distribute its food exclusively via downloads and food printers, a food manufacturer could potentially gain income solely from its intellectual property and potentially be seen as a software company. See id. (acknowledging that unique software programs are a main component of the food printing business). 56 See Weinberg, supra note 39, at 6 (discussing how a CAD file can be distributed). 57 See HORNICK, supra note 10, at 45 (“Using 3D design software, the designer can create a design from scratch, modify an existing digital blueprint, or reverse engineer an existing product.”) 58 Id. 59 See id. at 46, 109. 60 See Kal Raustiala & Christopher Sprigman, The Piracy Paradox: Innovation and Intellectual Property in Fashion Design, 92 VA. L. REV. 1687, 1768 (2006). continued . . .

80 WAKE FOREST J. [VOL. 19 BUS. & INTELL. PROP. L. formal intellectual property protection. 61 Without formal legal protection, these negative spaces are free to be copied and appropriated without penalty, regardless of the amount of effort put into developing, selling, or marketing a product or idea.62 Instead, a recipe holder’s only option is to guard his or her creation under trade secret law, which protects commercially valuable information that is kept confidential and provides a competitive advantage for the holder of the information.63 Trade secret protection is integral to the global economy and is critical to many businesses engaging in international commerce.64 “U.S. publicly traded companies own five trillion dollars in trade secret information,” and yet trade secret misappropriation is so rampant that it is believed to cost the United States upwards of three percent of its entire Gross Domestic Product.65 While most intellectual property owners can pursue both civil and criminal claims should their works be pirated, trade secret holders have little to no legal options against pirates once their confidential information is released onto the internet. 66 But any argument will require an understanding of what current trade secret law is, how the food industry protects its recipes today, and why the current law will not provide any relief to recipe holders in the face of decentralized internet piracy.

A. Current Trade Secret Law

At its core, “trade secret law protects competitively significant secret information.” 67 A trade secret is information 68 that “derives

61 Id. at 1764. 62 Providing such protection as a reward for a party’s efforts is known as the “sweat of the brow” doctrine, which was explicitly rejected in Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 354–56 (1991). 63 See Brees, supra note 30, at 280. 64 See id. (“In fact, multiple U.S. International Trade Commission surveys indicate that internationally engaged businesses have . . . trade secrets making up a majority of [their] intellectual property portfolios.”). 65 Id. at 280–81. 66 Cf. HORNICK, supra note 10, at 176 (“Once-thriving companies may find it impossible to stay in business because they lose control of their products and blueprints.”). 67 1 ROGER M. MILGRIM & ERIC E. BENSEN, MILGRIM ON TRADE SECRETS § 1.01 (2017). 68 “Information” includes “all forms and types of financial, business, scientific, technical, economic, or engineering information, including patterns, plans, compilations, program devices, formulas, designs, prototypes, methods, techniques, processes, procedures, programs or codes, whether tangible or intangible.” 18 U.S.C. § 1839(3) (2012). continued . . . 2018] ALWAYS EAT THE FINE PRINT 81

independent economic value . . . from not being generally known to . . . another person who can obtain economic value from the disclosure or use of the information,” in which its owner “has taken reasonable measures to keep [a] secret.” 69 Misappropriation of a trade secret generally occurs when it is acquired, used, or disclosed without authorization from its owner.70 Trade secrets could potentially remain protected for an infinite duration as long as the secret’s owner continues to successfully protect its secrecy; however, once information is revealed to the world, it is no longer a secret and any protection ceases to exist.71 Even if a misappropriated trade secret is published online, a secret holder is only able to recover its losses from the publishing party; the information’s secrecy is destroyed, and anyone else who uses the published information is not liable for misappropriation because the information is no longer a secret. 72 This encourages owners to do whatever is necessary to prevent any exposure of their secrets.73 While misappropriation has generally been policed by trade secret owners via civil claims,74 there has also been federal criminal liability for theft of trade secrets since Congress passed the Economic Espionage

69 Id. 70 See MILGRIM, supra note 67, § 1.01. 71 Michael Goldman, Comment, Cooking and Copyright: When Chefs and Restaurateurs Should Receive Copyright Protection for Recipes and Aspects of Their Professional Repertoires, 23 SETON HALL J. SPORTS & ENT. L. 153, 184 (2013). 72 See id. 73 See id. 74 In the civil arena, trade secret law has largely been a creature of state law, with forty-seven states adopting legislation based heavily on the Uniform Trade Secrets Act (the “UTSA”), a uniform statute proposed by the American Law Institute in the late 1970s. See MILGRIM, supra note 67. However, the civil remedies for trade secret violation received a major expansion in 2016 when President Obama signed the Defend Trade Secrets Act (the “DTSA”) into law, which created a federal civil remedy for misappropriation of trade secrets related to a product or service in interstate commerce while explicitly avoiding preemption of any preexisting state trade secret law. 18 U.S.C. § 1838 (2012); Thomas Muccifori & Daniel DeFiglio, Jam Recipe Yields 1st DTSA Verdict, LAW360 (Mar. 28, 2017, 1:09 PM), https://www.law360.com/articles/906046/jam-recipe-yields-1st-dtsa-verdict (delivering, ironically, the first verdict under the DTSA for misappropriation of a food recipe). The DTSA also amended the existing federal trade secret law to match the definitions of the UTSA, thus essentially federalizing the UTSA. See MILGRIM, supra note 67. While the DTSA is still very young, and there is much that needs to be clarified, because of its inherent uniformity nationwide, this note will analyze food piracy’s impact on trade secrets under the DTSA. See generally Conor Tucker, The DTSA’s Federalism Problem: Federal Court Jurisdiction over Trade Secrets, 28 FORDHAM INTELL. PROP. MEDIA & ENT. L.J. 1, 4–7 (2017) (analyzing what does and does not qualify for trade secret protection under the DTSA, as well as the potential for “trade secret trolls”). continued . . .

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Act (EEA) in 1996. 75 A person can be guilty of criminal misappropriation by, inter alia, taking, copying, downloading, uploading, transmitting, or delivering a trade secret.76 Misappropriation can occur even by merely possessing the secret if she knows it has been stolen or misappropriated, although any finding of liability for possession of a trade secret inherently requires that the information is still a trade secret at the time of possession.77 Punishment of a person can be up to five million dollars or fifteen years imprisonment, or both.78

B. Trade Secret Protection Within the Food Industry

Cuisine and the food industry exist in a vacuum where recipes can freely flow between parties without legal repercussion because they receive so little protection from intellectual property law.79 Despite the potential chilling effects on culinary innovation, sharing recipes is generally socially accepted and the industry has flourished. The rise of Instagram and proliferation of cooking shows have created a massive demand for, as well as a constant supply of, fresh and original foods presented in unique fashions.80 But these social norms are not followed by all chefs, and certainly not by large-scale industrial and retail food manufacturers, who instead choose to rely on trade secret law to protect their recipes. 81 A nondisclosure agreement is considered a reasonable measure sufficient to maintain trade secret protection for smaller-scale establishments such as restaurants and food truck chefs, but corporations usually take much

75 Economic Espionage Act of 1996, Pub. L. No. 104-294, 110 Stat. 3488 (1996) (codified at 18 U.S.C. §§ 1831-39 (2012)). 76 18 U.S.C. § 1831(a)(1)-(3) (2012). 77 See id. 78 18 U.S.C. § 1831(a)(5). 79 See Caroline M. Reebs, Sweet or Sour: Extending Copyright Protection to Food Art, 22 DEPAUL J. ART TECH. & INTELL. PROP. L. 41, 44 (2011) (“If food art possesses sufficiently underlying traits, then by analogy identical legal protections may be warranted.”) 80 See Mary Grace Hyland, A Taste of the Current Protection Offered by Intellectual Property Law to Molecular Gastronomy, 8 CYBARIS INTELL. PROP. L. REV. 155, 161–62 (2017) (discussing the effects of social media on the culinary industry). While chefs and restaurants occasionally steal the signature recipes of others (known in the Orange County culinary community as “swagger jacking”), legal options such as litigation are rarely employed due to the lack of intellectual property protection for recipes, instead focusing on reputational harm and publicly shaming those who would “jack” a chef’s “swagger”. The Katchup #22: Food Industry Swagger Jackers, FOODBEAST (Sept. 8, 2017), https://soundcloud.com/foodbeast/katchup-22-food-industry-copycats [hereinafter Swagger Jackers]. 81 See Brees, supra note 30, at 280. continued . . . 2018] ALWAYS EAT THE FINE PRINT 83

stronger measures to protect their recipes.82 The Coca-Cola “Secret Formula,” arguably the most valuable trade secret in history, is kept in a vault at all times to maintain its secrecy.83 McDonald’s protected their “special sauce” recipe so vigorously they actually lost the original formula, and were forced to change the recipe for a number of years.84 Kentucky Fried Chicken undertakes particularly extraordinary efforts to protect its Original Recipe. 85 Although the recipe was originally developed by its founder, the real Colonel Harlan Sanders, KFC outsources production of the seasoning to two separate suppliers, Sexton and Stange.86 In addition to nondisclosure agreements, each supplier is only supplied with half of the recipe, with neither producer knowing the ingredients of the other half.87 Once produced, the two halves are then combined together to create the true Original Recipe blend, which is then distributed to KFC franchisees.88 By doing this, not only does KFC satisfy reasonable efforts to maintain the recipe’s secrecy, “KFC [does] not disclose[] its trade secrets to anyone.”89

C. Advances in 3D Printing Will Destroy the Power of Trade Secret Protection

As mentioned in Part II, if food manufacturers (especially those relying on trade secret laws to protect their recipes) choose to enter the printed food market and sell their food online, consumers will essentially be able to purchase and “download” a CAD file for food. Much like Star Trek’s replicator, should Krispy Kreme enter this market, one will be able to order a donut from KrispyKreme.com (or from wherever Krispy Kreme chooses to offer their donuts) on one’s home computer, purchase the donut, and have a fully edible Krispy Kreme donut sitting in one’s home food printer within moments.90 This

82 See R. Mark Halligan & David A. Haas, The Secret of Trade Secret Success, FORBES (Feb. 19, 2010, 8:30 PM), https://www.forbes.com/2010/02/19/protecting- trade-secrets-leadership-managing-halligan-haas.html#51f97f641372. 83 Emily Ely, The Most Valuable Trade Secret Ever−and How it Stayed That Way, TRACKLIGHT (June 22, 2014), https://blog.traklight.com/the-most-valuable- trade-secret-ever. 84 David Greising & Jim Kirk, McDonald’s Finds Missing Ingredient, CHI. TRIB. (June 27, 2004), http://www.chicagotribune.com/chi-0406270263jun27- story.html. 85 See KFC Corp. v. Marion-Kay Co., 620 F. Supp. 1160, 1172 (S.D. Ind. 1985) (explaining that KFC’s Original Recipe is protected as a trade secret). 86 Id. at 1170. 87 Id. at 1172. 88 See id. 89 Id. 90 See Jacopo Prisco, ‘Foodini’ Machine Lets You Print Edible Burgers, Pizza, continued . . .

84 WAKE FOREST J. [VOL. 19 BUS. & INTELL. PROP. L. business model inherently requires the Krispy Kreme recipe to be included inside the CAD file so the food printer knows what ingredients to combine.91 Decoding the recipes nestled inside CAD files will be relatively easy for hackers and pirates, and nothing will prevent them from posting unlocked and unprotected copies of recipes aggressively protected for decades. 92 And while it is true that posting the recipe to a torrent website like The Pirate Bay would most likely qualify for civil and criminal trade secret misappropriation, the anonymous nature of online piracy makes discovering the identity of the pirate extremely difficult, if not impossible.93 Even if companies create a special recipe unique to food printing (so as to protect the original “true” recipe), they will still be powerless to pursue any action if the pirate’s identity cannot be uncovered.94 Furthermore, any attempts to prosecute those who download and further proliferate pirated CAD files for printed food will be fruitless because the recipe inside a pirated CAD file will no longer have trade secret protection.95 While copying or downloading a trade secret does constitute “acquiring” under civil misappropriation, and is explicitly a crime under the EEA, those definitions only apply if the copied or

Chocolate, CNN (Dec. 31, 2014, 1:06 AM), https://www.cnn.com/2014/11/06/tech/innovation/foodini-machine-print- food/index.html. 91 See Rebecca Matulka & Matty Greene, How 3D Printers Work, ENERGY.GOV (June 19, 2014), https://www.energy.gov/articles/how-3d-printers-work. 92 While parties and businesses could easily place Digital Rights Management (DRM) and other security measures on their files, history has shown that virtually any digital encryption can be overcome. See, e.g., CD Crack: Magic Marker Indeed, WIRED (May 20, 2002, 11:35 AM), https://www.wired.com/2002/05/cd-crack- magic-marker-indeed/ (circumventing Sony’s “copy-proof” DRM technology for music CDs by simply using a marker on the outside of the disc); Jamie Condliffe, You Can Hack Keurig’s DRM With Scotch Tape to Use Knock-Off Coffee Pods, GIZMODO (Dec. 11, 2014, 7:00 AM), https://gizmodo.com/you-can-hack-keurigs- drm-with-scotch-tape-to-use-knock-1669713772 (“The result: cheap pods merrily burst . . . forth into your mug while Keurig looks on wondering why it even bothered investing in DRM in the first place.” (emphasis added)); Sarah Perez, Android DRM Cracked! Pirating Apps is “Easy,” READWRITE (Aug. 24, 2010), https://readwrite.com/2010/08/24/android_drm_cracked_pirating_apps_is_easy/. 93 See HORNICK, supra note 10, at 197–98. 94 See Nick Bilton, Internet Pirates Will Always Win, N.Y. TIMES (Aug. 4, 2012), https://www.nytimes.com/2012/08/05/sunday-review/internet-pirates-will- always-win.html. 95 See Lorna Caddy, Challenging CAD File Sharing, TAYLOR WESSING (Apr. 2013) https://www.taylorwessing.com/download/article_cad_file_sharing.html#.W65VhHt Ki4Q. continued . . . 2018] ALWAYS EAT THE FINE PRINT 85

downloaded information is a trade secret.96 Once the pirated CAD file is posted to a site like The Pirate Bay, it will be in a public forum for everyone to view and the recipe’s secrecy is destroyed.97 The recipe loses all trade secret protection and it can be freely downloaded without fear of criminal prosecution or civil action.98 The only legally liable party will be the original hacker, assuming her identity can even be determined.99 In essence, if a thing can be hacked, it will be hacked, and without greater protection for 3D printed food, piracy will run rampant without fear of civil action or criminal prosecution.100 The potential for loss will create such a chilling effect that the printed food industry will never be able to reach its full potential because no business will want to assume the risks associated with entering the market.101 Greater protection will be needed, even if it is a minimum amount that gives food the same protection as other printed designs and objects, but current intellectual property laws are inadequate for printed food.102 With every advance in 3D printing, “trade secret protection” edges closer to becoming an oxymoron.

IV. PRINTED FOOD CANNOT FIT WITHIN THE SCOPE OF EXISTING IP LAW Any technology-related legislation is inherently not forward- looking, simply because (at best) it is based on an understanding of current technology at the time the law is written.103 If a bill involving

96 See Peter J. Torren, Misappropriation of a Trade Secret Under the DTSA, IPWATCHDOG (Jun. 10, 2016), https://www.ipwatchdog.com/2016/06/10/misappropriation-trade-secret- dtsa/id=69826/ (discussing how courts use circumstantial evidence to establish a violation in these cases). 97 See HORNICK, supra note 10, at 197 (“The immense power of 3D printing away from control will be wielded by consumers, industrial customers, and governments who become makers, making or repairing the things they need for their own use rather than buying them.”) 98 Id. at 198. 99 See id. at 199 (acknowledging that, in the context of music, the “likelihood is low that [an] industry will sue individuals for sharing a few music files”). 100 Cf. id. at 200 (“Pirates bent on IP infringement will likely remain one step ahead of any technological solution.”) 101 See id. at 199–200. 102 See id. at 198–99. 103 Such issues are further compounded when our lawmaking bodies do not understand technology from the previous decade. See, e.g., Victor Tangermann, Hearings Show Congress Doesn’t Understand Facebook Well Enough to Regulate It, FUTURISM (Apr. 11, 2018), https://futurism.com/hearings-congress-doesnt- understand-facebook-regulation/ (analyzing Facebook creator Mark Zuckerberg’s testimony before Congress regarding Cambridge Analytica). continued . . .

86 WAKE FOREST J. [VOL. 19 BUS. & INTELL. PROP. L. technology is passed, it may very well be obsolete the day after it is signed into law.104 Food companies will undoubtedly demand some new or alternative form of intellectual property protection to supplement the inevitable holes of trade secret law before entering the printed food industry. 105 The easy solution may be to squeeze the technology to fit within the confines of existing law, but a technology as disruptive as printed food probably requires new legislation. This section analyzes the various possible “easy” solutions, including officially extending the other forms of intellectual property to printed food, and why they will not be successful.

A. Printed Food vs. the Patent

The origins of patent law lie within the Constitution, which grants Congress power to “promote the Progress of Science.” 106 Congress does this via the United States Patent and Trademark Office (PTO),107 which grants a patent for any discovery that is new, useful, 108 and nonobvious.109 If granted, a patent holder has the exclusive right to make, use, sell, offer to sell, or import her discovery for twenty years.110 However, in exchange for this monopoly, any patent application must also include a written description “in such full, clear, concise, and exact

104 See Christopher Wolf & Jules Polonetsky, Privacy Concerns and Technological Change: The Legislative Option, THE HILL (Jan. 31, 2012, 2:57 PM), https://thehill.com/blogs/congress-blog/technology/207613-christopher-wolf-and- jules-polonetsky-co-chairs-future-of-privacy-forum (explaining how “technology- specific laws may be outmoded as soon as they come into force”). 105 See generally Jia Li, Inside Views: To Print or Not to Print: Innovation and IP Issues in 3D Printing, INTELL. PROP. WATCH (July 19, 2017), www.ip- watch.org/2017/07/19/print-not-print-innovation-ip-issues-3d-printing/ (giving an overview of how to protect intellectual property assets as 3D printing becomes more prominent). 106 U.S. CONST. art. I, § 8, cl. 8. 107 See About Us, USPTO, https://www.uspto.gov/about-us (last visited Oct. 22, 2018). 108 See 35 U.S.C. § 101 (2012) (“Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”) Such inventions and discoveries are known as “utility” patents, while the patent system also protects what are known as “design” and “plant” patents. 1-1 DONALD S. CHISUM, CHISUM ON PATENTS § 1.01 (2018). However, since “utility is the relevant option for the culinary industry,” this note will only analyze the applicability of utility patents. Emily Cunningham, Note, Protecting Cuisine Under the Rubric of Intellectual Property Law: Should the Law Play a Bigger Role in the Kitchen?, 9 J. HIGH TECH. L. 21, 33 (2009). 109 See 35 U.S.C. § 103 (2017). 110 See 35 U.S.C. § 154(a)(2) (2017). continued . . . 2018] ALWAYS EAT THE FINE PRINT 87

terms as to enable any person skilled in the [pertinent] art” to reproduce the discovery that is published by the PTO.111 Historically, patent law has been rarely used by the food industry for recipes, not only because of the “high standard of originality” required for patent protection but also because the protection afforded is often counterintuitive to a company’s needs.112 Even though recipes are considered to be “compositions of matter” under 35 U.S.C. § 101,113 any patent applications for recipes are usually rejected because the PTO sees them as neither new nor nonobvious. 114 Instead of protecting culinary recipes, patent law is seen to protect culinary techniques; no matter how new or inventive a recipe is, it will not receive patent protection if it uses traditional cooking methods.115 Even if traditional recipes could be patented, members of the food industry otherwise relying on trade secret law would most likely elect not to patent their foods because of the disclosure requirement. Patent applications are a matter of public record, which would require recipe holders (particularly those previously relying on trade secret protection) to reveal their recipe to the world, even if the application is denied.116 Furthermore, with protection only lasting for twenty years, any recipe used in mass commerce would inherently have no economic value two decades after its patent application because it would be in the public domain and known to the world. 117 In this way, patent are almost opposite to trade secrets because public disclosure is required for patent protection, and yet strictly forbidden for trade secret protection. 118 Nevertheless, some companies have opted to pursue patents on their recipes—and even succeeded—but only to see those patents later invalidated in court.119

111 35 U.S.C. § 112(a) (2017). 112 Naomi Straus, Comment, Trade Dress Protection for Cuisine: Monetizing Creativity in a Low-IP Industry, 60 UCLA L. REV. 182, 198 (2012). 113 See Cunningham, supra note 108, at 33 n.109. 114 See id. 115 See Straus, supra note 112, at 198 (“[P]atent laws cannot be used to protect restaurant dishes that are created using classic cooking techniques or fail to meet the high standards of originality that the patent system requires because these dishes do not fulfill the requirement that an invention be novel and nonobvious.”) 116 See Cunningham, supra note 108, at 34–35. 117 See id. at 35. 118 See Kewanee v. Bicron, 416 U.S. 470, 474, 489 (1974) (holding that state trade secret law is not preempted by federal patent law because a patent’s disclosure requirement can inherently never conflict with protections afforded a properly maintained trade secret). 119 See Procter & Gamble Co. v. Nabisco Brands, 711 F. Supp. 759, 760–61 (D. Del. 1989) (invalidating P&G’s patent on a “crispy on the outside and chewy on the inside” cookie because the same idea was published in a 1968 cookbook, thereby no continued . . .

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Within the 3D printing industry as a whole, it is not clear just how far patent law can or will extend.120 A CAD file itself would probably meet the newness requirement, but any design based on a previously existing object or item created via subtractive manufacturing may be per se ineligible for patent protection due to lack of novelty. 121 Computer software and files are ineligible for patent protection without an “inventive concept” that takes the software beyond a mere computer implementation of an already existing idea, but within the 3D printing context it is difficult to determine whether a CAD file used to additively manufacture a previously known item is sufficient enough to qualify as an inventive concept.122 However, any uncertainty has not stopped the industry from vigorously applying for patents.123 In this decade alone (through 2016), over 4400 3D printing related applications were filed, and the PTO registered nearly 2600 of them, but it is not clear how many have been for CAD files, if any at all.124 However, even if Congress explicitly extended patent protection to printed food, piracy would still go unchecked because file sharing would not infringe the patent, and any actual infringement would be virtually unprovable.125 Patent infringement occurs when one “makes, uses, offers to sell, or sells any patented invention” without longer being a “new” recipe). Similarly, the J.M. Smucker Company attempted to enforce its patent on a crustless peanut butter and jelly sandwich in Albie’s Foods v. Menusaver Inc., 170 F. Supp. 2d 736, 738 (E.D. Mich. 2001), but this backfired; their patent was declared invalid because pinching the edges of the crustless sandwich to form a seal was found to be obvious. Ex parte Kretchman, No. 2003- 1775, 2003 WL 23507731, at *2 (B.P.A.I. Dec. 10, 2003). 120 See Symposium, Intellectual Property and Additive Manufacturing/3D Printing: Strategies and Challenges of Applying Traditional IP Laws to a Transformative Technology, 17 MINN. J.L. SCI. & TECH. 881, 894 (2016) [hereinafter Transformative Technology] (“[T]he ability to claim patent rights in a 3D digital model itself remains unclear.”) 121 See HORNICK, supra note 10, at 194 (“Why print a trademarked product when you can print a generic substitute . . . .”) 122 See Transformative Technology, supra note 120, at 887 (citing Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2348, 2350, 2357 (2014)). 123 Id. at 904. 124 See John Hornick, 3D Printing Patent Landscape, 3DPRINT.COM (July 17, 2017) https://3dprint.com/181207/3d-printing-patent-landscape/ (charting the number of applications and registrations related to 3D printing from 1996-2016). Hornick’s figures may actually be understated. Cf. Lyndsey Gilpin, 3D Printing: 10 Factors Still Holding It Back, TECHREPUBLIC (Feb. 19, 2014, 11:33 A.M.), https://www.techrepublic.com/article/3d-printing-10-factors-still-holding-it-back/ (claiming the PTO received over 6800 3D printing patent applications in the previous decade). 125 See Peter Twomey, A New Dimension to Intellectual Property Infringement: An Evaluation of the Intellectual Property Issues Associated with 3D Printing, 17 TRINITY C. L. REV. 14, 25 (2014). continued . . . 2018] ALWAYS EAT THE FINE PRINT 89

permission.126 Internet piracy does not fit within that definition, and so pirating a CAD file and sharing it via torrents or any other file sharing method can never constitute patent infringement, even if a pirate sells the file online. 127 Sharing a blueprint or schematic for a patented invention merely circulates what is already public record, 128 and so downloading from sites like The Pirate Bay would be completely legal because “the mere possession or downloading of a file is not enough to create infringement liability.”129 Instead, patent infringement would not occur until a person physically prints the food from a pirated CAD file.130 The food is the infringing product, and would serve as the proof of infringement, except food is intended to be eaten. Once consumed, any evidence of patent infringement is essentially destroyed. 131 Furthermore, since Congress has been oddly reluctant to criminalize patent infringement, food piracy can never be a crime under current law. 132 Therefore, while patent law may not be able to effectively protect 3D-printed objects in general, it absolutely cannot protect 3D printed food.

126 35 U.S.C. § 271(a) (2012). But see 35 U.S.C. § 154(a) (1) (giving a patent owner a monopoly over the same activity that constitutes infringement). 127 See Twomey, supra note 125, at 25. 128 See id. 129 See Weinberg, supra note 39, at 12. While patent law does provide liability for contributory infringement under 35 U.S.C. § 271, the level of proof required may not be feasible with internet piracy. See supra note 93 and accompanying text. Contributory infringement requires not only the taking of affirmative steps with intent to infringe (an element probably fairly easy to establish), but it also requires knowledge that the specific infringing activity occurred. 35 U.S.C. § 271(c) (2017). Neither the hosting website nor any pirates sharing the file could be found liable unless they had specific knowledge that a CAD file was used to print a patented food or item; this is unlikely. See Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754, 761, 770 (2011); Twomey, supra note 125, at 24–25; Transformative Technology, supra note 120, at 892–93. 130 See Weinberg, supra note 39, at 12. 131 There are conceivable situations where evidence could remain, like if printed food was part of a piece of art or if the actual printing process was filmed, but these scenarios would be rare. See id. 132 Irina D. Manta, The Puzzle of Criminal Sanctions for Intellectual Property Infringement, 24 HARV. J.L. & TECH. 469, 488 (2011) (citing Dowling v. United States, 473 U.S. 207, 227 (1985)). Despite the Supreme Court confirming Congress has the “undoubted power to do so,” Congress has made no moves to criminalize patent infringement since the 1985 decision. Dowling, 473 U.S. at 227.

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B. Printed Food vs. the Trademark

At its core, trademark is anything that can be used to identify the source of goods or services.133 While trademarks were initially defined by the Lanham Act as “any word, name, symbol, or device, or any combination thereof,” 134 the definitions of symbols and devices has expanded over time to include shapes, sounds, scents, and “almost anything at all that is capable of carrying meaning,” 135 but a mark cannot qualify for trademark protection if it has any functional aspects. 136 Whether a mark qualifies for registration with the PTO depends on whether it is distinctive enough to identify the good or service to which it is attached.137 Any mark considered to be inherently distinctive will be accepted for publication and registration by the PTO.138 Any marks found not to be inherently distinctive must acquire distinctiveness—also referred to as secondary meaning—via “proof of substantially exclusive and continuous use” before the PTO will allow registration. 139 While anything can potentially acquire enough distinctiveness to identify another good or service, it can never serve as a trademark for itself.140 Unlike patents and copyrights, which Congress has direct authority to legislate under the Constitution, 141 Congress’ power to legislate trademarks comes from the commerce clause.142 Because of this, a

133 Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 162 (1995). 134 15 U.S.C. § 1127 (2012). 135 Qualitex Co., 514 U.S. at 162. 136 Traffix Devices v. Mktg. Displays, 532 U.S. 23, 35 (2001) (barring trade dress protection for a spring device on the back of a highway sign because it served a functional purpose and functional items are preempted by patent law). 137 See 15 U.S.C. § 1052(a) (2017). 138 See 15 U.S.C. § 1052(e) (“No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless . . . [it] is merely descriptive.”). 139 15 U.S.C. § 1052(f). 140 See Oliveira v. Frito-Lay, Inc., 251 F.3d 56, 62 (2d Cir. 2001). The plaintiff in Oliveira, famous for singing “The Girl from Ipanema”, sought trademark protection for her performance on that song. The Court refused to extend protection because granting her performance “the status of trademark for itself would stretch the definition of trademark too far . . . .” Id. 141 U.S. CONST. art. I, § 8, cl. 8 (giving Congress the power “[t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries”). 142 See In re Trade-Mark Cases, 100 U.S. 82, 97 (1879) (stating that Congress could only regulate “the kind of commerce which Congress is authorized to regulate [under the Commerce Clause],” not intrastate commerce); see also U.S. CONST. art. I, §8, cl. 3, (granting Congress power “[t]o regulate commerce . . . among the several states”). continued . . . 2018] ALWAYS EAT THE FINE PRINT 91

trademark cannot acquire federal protection until it is “use[d] in commerce,” and loses any protection once the mark’s use in commerce ends.143 At the same time, merely copying or displaying a mark outside of commerce is not enough to violate a trademark, so a use in commerce is also required for any unauthorized use to rise to the level of trademark infringement.144 The Lanham Act defines a “use” as when a mark “is placed in any manner on [] goods or their containers or the displays associated therewith” and those goods “are sold or transported in commerce.”145 Therefore, “a trademark violation occurs only when an offending trademark is applied to commercial goods and services.”146 Protection via trademark law may be ideal for the printed food industry, but extending the Lanham Act to encompass food is problematic. Since federal protection lasts for as long as a trademark is used in commerce, a mark continuously used in commerce has the potential to last forever. 147 This provides the industry a greater advantage than patents and copyrights because those protections are only “secur[ed] for limited times.” 148 Since the ultimate goal in extending intellectual property protection to printed food is to protect what can no longer be protected by trade secret (the recipe), any trademark protection would need to apply to the recipe within a CAD file. 149 This is difficult for multiple reasons: not only must any trademark represent another good or service, meaning the recipe could never serve as a source identifier for itself,150 a mark is ineligible for protection if it possesses any functional aspects.151 While a court could rule that the recipe in a printed food CAD file is a nonfunctional aspect, it is more likely that the recipe would be considered functional because it serves the functional purpose of telling the food printer what to create.152 Not only is a recipe ineligible for direct trademark protection

143 See Cunningham, supra note 108, at 29 (stating that “trademark laws protect . . . only the way in which the product or service is presented to consumers”). 144 See Weinberg, supra note 39, at 8. 145 15 U.S.C. § 1127 (2012). 146 San Francisco Arts & Athletics, Inc. v. U.S. Olympic Comm., 483 U.S. 522, 566 (1987) (O’Connor, J., concurring and dissenting) (alteration in original). 147 See Cunningham, supra note 108, at 29. 148 U.S. CONST. art. I, § 8, cl. 8. 149 See generally Aaron Wright, Copyright and Trademark in 3D, CARDOZO LAW, https://cardozo.yu.edu/copyright-and-trademark-3d (last visited Sept. 28, 2018) (analyzing potential copyright and trademark issues arising from 3D printing). 150 Cunningham, supra note 108, at 29. 151 See Traffix Devices v. Mktg. Displays, 532 U.S. 23, 35 (2001). 152 See Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165 (1995) (stating that a product feature is functional when it is essential to the use or purpose of the article). continued . . .

92 WAKE FOREST J. [VOL. 19 BUS. & INTELL. PROP. L. because of its functionality, but extending trademark to the flavor of printed food would also be a difficult bar to overcome because flavors are probably not distinctive enough to qualify for trademark protection.153 While courts have been hesitant to rule that flavors and tastes are per se ineligible for trademark protection,154 a flavor unique enough to serve as a source identifier is difficult to accomplish because flavors probably are not inherently distinctive.155 As a sense, taste is significantly more subjective than sight or sound, which by its very nature makes flavors less distinguishable. 156 Because trademark protection turns on distinctiveness, and given the subjectiveness of taste, any flavor would probably have to gain secondary meaning before qualifying for any trademark protection.157 This makes it difficult for any two people (let alone Twelve Angry Men158) to agree on whether a food’s flavor is unique enough to acquire distinctiveness. After all, how often does a new food taste like chicken?159 Another option recipe holders may try is to push for trade dress protection in the actual printed food, but they will also probably find the protection insufficient for their needs. Trade dress protection applies to the overall image of a product, which can include a variety of features such as size, shape, color, and more.160 When it comes to trade dress of goods, infringement usually involves the packaging or labeling of a good, but protection can also extend to the good itself if its design is distinctive enough.161 Recipe holders entering the printed food industry could potentially design their foods with a distinctive shape and thus attempt to claim trade dress protection in how the food is presented once printed,162 which would be appealing to the industry because trade dress can potentially be inherently distinctive and therefore not require five

153 See In re N.V. Organon, 79 U.S.P.Q.2d 1639, 1650 (T.T.A.B. 2006) (holding that consumers generally do not regard flavors as trademarks, but adding that a flavor is most likely not inherently distinctive, meaning it would have to acquire distinctiveness in the marketplace in order to qualify for trademark protection). 154 See id. 155 See id. 156 Krishnendu Ray, Domesticating Cuisine: Food and Aesthetics on American Television, 7 GASTRONOMICA J. FOOD &CULTURE 50, 57 (2007) (“Literal taste is unconscious, subjective, and too intimate to allow for any discursive elaboration.”) 157 See In re N.V. Organon, 79 U.S.P.Q.2d at 1640–41. 158 TWELVE ANGRY MEN (MGM Studios 1957). 159 Cf. THE MATRIX (Warner Bros. 1999) (suggesting that multiple foods tasting like chicken is a result of a computer simulated reality failing to generate a sufficient number of distinctive flavors). 160 John H. Harland Co. v. Clark Checks, Inc., 711 F.2d 966, 980 (1983). 161 See id. (providing examples of cases focusing on distinctive attributes). 162 See generally 74 AM. JUR. 2D Trademarks and Tradenames § 1 (2011) (defining the nature and purpose of trademarks). continued . . . 2018] ALWAYS EAT THE FINE PRINT 93

years of continuous use to acquire secondary meaning.163 However, trade dress protection probably would not be available to foods with amorphous qualities (such as spaghetti or any liquid recipes like Coca- Cola).164 Furthermore, with the ability to easily edit .stl files, any trade dress protection would be useless when pirates can simply access the file and alter the design of the food so it no longer bears its distinctive shape.165 On the other hand, devising a way to tie 3D printed food to trademarks would be desirable for manufacturers because the protection provided would be roughly similar to the protection provided by trade secret law. 166 Trademarks are, in a way, intrinsically linked to destruction of trade secrets, particularly with uninventive and unprotectable information such as recipes.167 If a pirate were to hack a printed food file and post a CAD file on a site like The Pirate Bay that contains the KFC Original Recipe, the destroyed secret is not the recipe itself; after all, someone somewhere has undoubtedly combined the same eleven herbs and spices via independent creation.168 Instead, the destroyed secret is that KFC uses this specific recipe. The power of sharing a CAD file containing KFC’s Original Recipe lies in associating the file with KFC, so any pirate would inherently need to use a KFC mark to identify KFC’s recipe. 169 Without including the KFC trademark in the file name or as some other form or label, no one would know the file contains their Original Recipe and its status as a trade secret is maintained. However, using a trademark in this manner would require trademark law to protect file names and metadata, and current law is unclear as to whether a file name could constitute a commercial

163 See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 767 (1992) (ruling that trade dress does not require secondary meaning to be eligible for trademark protection). 164 Harland, 711 F.2d at 980. 165 See id. 166 See 18 U.S.C. § 1839(3) (2012). 167 See RESTATEMENT (FIRST) OF TORTS § 757 cmt. b (AM. LAW INST. 1939). 168 See Joe Gray, KFC Recipe Challenge Puts Secret 11 Herbs and Spices to the Test, SEATTLE TIMES (Aug. 29, 2016, 6:02 AM), https://www.seattletimes.com/life/food-drink/kfc-recipe-challenge-puts-secret-11- herbs-and-spices-to-the-test/. 169 Kentucky Fried Chicken has a number of registered trademarks associated with their fried chicken services. See, e.g., KENTUCKY FRIED CHICKEN, Registration No. 0815167; KFC, Registration No. 1807753. Trademark registrations can be examined using the Trademark Electronic Search System (TESS), UNITED STATES PATENT AND TRADEMARK OFFICE, http://tess2.uspto.gov (last updated Sept. 28, 2018), but when searching for older marks such as KENTUCKY FRIED CHICKEN the zero will need to be included when searching by registration number. continued . . .

94 WAKE FOREST J. [VOL. 19 BUS. & INTELL. PROP. L. use under the Lanham Act and Commerce Clause requirements.170 However, just like with patent law, the most significant barrier to using trademark law to protect printed food from internet piracy is that file sharing by itself probably cannot infringe a trademark.171 Because trademark infringement requires that the mark be used in commerce, any noncommercial use of a mark cannot violate trademark law.172 This is a problem. Internet piracy seeks to avoid commerce, not participate in it.173 Just as the goal of online piracy in music and movies was to consume entertainment free of charge, the goal of domestic printed food piracy would be to consume any food free of charge (or for merely the cost of the food “ink”). Since any pirated printed food would need to be resold to infringe any trademarks,174 civil trademark law in its current form cannot protect printed food from domestic internet piracy any better than patent law. Unlike patent law, there can be criminal liability for trademark infringement under 18 U.S.C. § 2320, which punishes anyone who intentionally traffics in counterfeit goods.175 While there is no explicit language requiring a “use in commerce,” food piracy still may not meet the requirements for criminal trademark infringement based on the language of the statute. 176 Under the statute, “traffic” means “to transport or transfer . . . to another for purposes of . . . private financial

170 Compare Bally Total Fitness Holding Corp. v. Faber, 29 F. Supp. 2d 1161, 1167 (C.D. Cal. 1998) (holding that the defendant’s posting of a “Bally sucks” web page did not identify any goods and was not a commercial use in any way, and therefore he could not be liable for trademark dilution), with Sega Enters. v. MAPHIA, 948 F.Supp. 923, 939 (N.D. Cal. 1996) (finding the defendant infringed Sega’s trademarks and copyrights by offering emulated versions of Sega’s video games for free download as an incentive to purchase his “Super Magic Drive” copying devices). Both cases are comparable to and distinguishable from food piracy; the defendant in Bally was not offering anything in commerce but also had a clear First Amendment defense in his use of Bally’s mark to criticize them, Faber, 29 F. Supp. 2d at 1167, while the defendant in Sega was providing pirated copies of software for free but also used the software in commerce by providing that software as an inducement to purchase his goods. MAPHIA, 948 F.Supp. at 935. The court in Sega makes no mention of whether trademark infringement still would have occurred if the games had no commercial nexus to the Super Magic Drives. See id. at 939. 171 See Twomey, supra note 125; see also Weinberg, supra note 39, at 8. 172 See Weinberg, supra note 39, at 8. 173 See Ben Depoorter, Intellectual Property Infringements & 3D Printing: Decentralized Piracy, 65 HASTINGS L.J. 1483, 1495 (2014). 174 See Weinberg, supra note 39, at 8. 175 18 U.S.C. § 2320(a)(1) (2018). 176 Id.; see also Weinberg, supra note 39, at 8 (“Unlike patent or copyright, it is not copying a trademark that creates a trademark violation. Instead, it is using that trademark in commerce . . . that results in a violation.”) continued . . . 2018] ALWAYS EAT THE FINE PRINT 95

gain,” and “financial gain” is defined as “the receipt, or expected receipt, of anything of value.”177 Assuming the pirated recipe has value after its secrecy is destroyed, this could theoretically apply to downloading a CAD file for printed food, but the statute explicitly does not allow the government “to bring a criminal cause of action . . . for the repackaging of genuine goods or services not intended to deceive or confuse.”178 For food piracy, the CAD file is genuine, and by using an owner’s trademark the intent is not to deceive or confuse but to accurately identify the source of the goods. Internet piracy does little more than alter the channel through which the good is received, so criminal trademark infringement will most likely be just as ineffective as its civil counterpart.179

C. Printed Food vs. the Copyright

Copyright protects “original works of authorship fixed in a tangible medium of expression.”180 This essentially applies to only the creative expressions of an idea, but never the idea itself.181 Unlike patent or trademark law, which require registration of a work before granting it protection, copyright law extends protection to a creative work immediately upon fixation, 182 which the Copyright Act defines as occurring when a work is embodied in a medium stable enough for it to be reproduced.183 On the surface, copyright protection seems like the most appropriate form of intellectual property protection for printed food because a copyright has a comfortable history of handling infringement in different media. 184 Online piracy until now has chiefly involved

177 18 U.S.C. § 2320(f) (2012). 178 18 U.S.C. § 2320(g). 179 See Rebecca Dunlevy, Note, Internet Immunity: The Limits of Contributory Trademark Infringement Against Online Service Providers, 22 FORDHAM INTELL. PROP. MEDIA & ENT. L.J. 927, 936–38 (2012) (discussing the ineffectiveness of criminal counterfeit and civil trademark infringement statutes). 180 17 U.S.C. § 102 (2012). 181 Bryan J. Vogel, Note, Casting 3D Printing’s Coming IP Litigation: Usual Suspects and Dark Horses, 86 PAT. TRADEMARK & COPYRIGHT J. 1209, 1211 (Oct. 11, 2013), https://www.robinskaplan.com/~/media/pdfs/casting%203d%20printings%20coming %20ip%20litigation%20usual%20suspects%20and%20dark%20horses.pdf?la=en. 182 Id. 183 See 17 U.S.C. § 101 (2012). 184 Lucas S. Osborn, Doctrinal Quandaries with 3D Printing and Intellectual Property, 27 INTELL. PROP. LITIG. 18, 22 (2016); see also Weinberg, supra note 39, at 12 n.36 (“When downloading a file, a user creates a copy of that file on her own hard drive, thus implicating copyright.”) continued . . .

96 WAKE FOREST J. [VOL. 19 BUS. & INTELL. PROP. L. copyrights, and the subject matter involves computer software, which Congress specifically granted copyright protection to in 1980. 185 Furthermore, since both sculptural designs and blueprints are also explicitly protected by copyright, either the objects inside CAD files could qualify as sculptural designs or the CAD file itself could be classified as a blueprint.186 There are also many scholars who believe recipes already qualify for copyright protection under the language of the Copyright Act of 1976, arguing that generating a new or original food is an expression of creativity.187 In this way, “[CAD] files are certainly protectable by copyright,” but it is not necessarily a guarantee.188 Another advantage for printed food is that its functionality naturally resolves issues that previously barred food from copyrightability. Kim Seng Co. v. J&A Importers Inc., a recent case related to copyright in food, illustrates these issues. 189 In Kim Seng, the copyright infringement claim involved a picture of a bowl of noodles that the plaintiff featured on its product’s packaging.190 The plaintiff argued it owned a copyright not only in the photo of the bowl of noodles, but also in the underlying bowl of noodles itself, claiming the food was a sculptural work.191 The court held that the bowl of noodles in question was not copyrightable because the food “cannot be separated from [its] utilitarian function, which is to be eaten,” nor can it satisfy copyright’s fixation requirement because the food is perishable.192 While Kim Seng analyzed copyright in noodles, it also inadvertently highlighted the key differences between traditional food and printed food. 193 Any perishable food will be ineligible for copyright because its inevitable

185 17 U.S.C. §§ 101, 117 (2012); see Weinberg, supra note 40, at 3. 186 Weinberg, supra note 40, at 8, 17 n.55. 187 See, e.g., Reebs, supra note 79, at 42. But see id. at 46 (noting how some argue that recipes “are substantially derivative” and “do not warrant the full arsenal of intellectual property protection”). However, as Reebs states, the “norm of sharing” in the culinary industry is common to all art forms, and even relied upon to foster further creation or innovation. Compare POINT BREAK (Largo Entertainment & JVC Entertainment Inc. 1991) (featuring an undercover FBI agent who infiltrates the exotic Los Angeles surfing scene to catch a group of adrenaline-loving bank robbers), with THE FAST AND THE FURIOUS (Universal Pictures 2001) (featuring an undercover police officer who infiltrates the exotic Los Angeles street racing scene to catch a group of adrenaline-loving cargo thieves). 188 Weinberg, supra note 40, at 14. 189 810 F. Supp. 2d 1046 (C.D. Cal. 2011). 190 Id. at 1050. 191 Id. 192 Id. at 1053–54 (noting, however, that the arrange and position of the food in the bowl could meet the minimal levels of creativity required to gain copyright protection). 193 See id. at 1054. continued . . . 2018] ALWAYS EAT THE FINE PRINT 97

decomposition means it cannot meet the fixation requirement, and this does not change with printed food.194 But printed food is fixed because the CAD file is a “tangible medium of expression” that is “sufficiently permanent or stable to permit [printed food] to be . . . reproduced” exactly the same way each time.195 Extending copyright protection to 3D printed food would also create protection under the Digital Millennium Copyright Act, which has been an essential tool in copyright owners’ attempts to combat internet piracy in music and film,196 as well as criminal liability of up to ten years per offense.197 However, even if the CAD files for 3D-printed food were protected under copyright, there are still significant hurdles to overcome because it is unclear how much of the file is protected.198 While useful articles are not protected by copyright, the creative aspects of those articles are copyrightable if they can be conceptually separated from the article itself.199 The concept of separability was unclear for a long time, with significant circuit court splits, but the Supreme Court recently set down the rule for separability in Star Athletica, LLC v. Varsity Brands, Inc.200 Star Athletica was a landmark decision for copyright law, not only for clarifying the separability doctrine but also for extending the scope of copyrightability to clothing and fashion, an industry previously understood to occupy one of intellectual property’s negative spaces alongside food.201 Under the Star Athletica separability test, the goal is to determine whether the potentially copyrightable aspects of a functional item can be conceptually separated from the item itself. If they can, and those separable aspects meet the minimum requirements for protection (authorship, minimal creativity, fixation, etc.), then those aspects are protected by copyright. 202 As Kim Seng shows, foods’ functional purpose to be eaten prevents any copyright protection.203 As long as courts consider food and recipes to be functional or utilitarian, then under Star Athletica any copyright protection in the CAD file for 3D printed food would extend only to the design of the food as a sculptural work, and not to the actual contents of the food.204 While this

194 See id. 195 17 U.S.C. § 101 (2012). 196 See HORNICK, supra note 10, at 193. 197 18 U.S.C. § 2319 (2012). 198 See Craig, supra note 16, at 323. 199 See 17 U.S.C. § 101 (2012). 200 Star Athletica, LLC v. Varsity Brands, Inc., 137 S. Ct. 1002, 1007 (2017). 201 Id. at 1009; Raustiala & Sprigman, supra note 60, at 1764. 202 Star Athletica, 137 S. Ct. at 1007. 203 Kim Seng Co. v. J & A Importers, Inc., 810 F. Supp. 2d 1046, 1053 (C.D. Cal. 2011). 204 See Star Athletica, 137 S. Ct. at 1002. continued . . .

98 WAKE FOREST J. [VOL. 19 BUS. & INTELL. PROP. L. would probably be sufficient to protect the CAD file itself, recipe holders could still potentially fall victim to piracy. The availability of free .stl editors makes it easy for any pirate familiar with an editing program to open the file and edit the sculptural design of the food itself until its shape is no longer substantially similar enough to the original CAD file to establish copyright infringement. 205 Any copyrightable elements would be altered or removed, and the resulting CAD file would be free to circulate across the internet without recourse because it would not violate any intellectual property protection.206 Furthermore, a CAD file for 3D printed food may not even gain copyright protection as a structural work in the first place because it may not even meet the minimal threshold of creativity for copyright protection.207 Any work that attempts to merely recreate an already existing work in a different medium does not qualify for copyright protection because it adds no creative expression to the underlying work.208 Therefore, “many 3D designs that simply represent an object without additional context may lack severable creative elements (and therefore copyright protection).”209 In addition, there is also a policy argument that could be made against providing intellectual property protection of any kind to any 3D- printed food. The purpose of copyright law is to encourage and stimulate creativity, 210 but extending this protection to businesses already protecting their recipes via trade secret functions more as an incentive for businesses to embrace a new technology.211 Creating a printable version of food for home consumption does not stimulate creativity, it merely encourages transitioning already existing information to a new medium.

V. NO EASY SOLUTION FOR “TRADE RECIPES” Since no form of intellectual property can give the industry the protection it needs to fight food piracy, a new form of intellectual property will most likely be needed. Developing this new framework would most likely be painful and tedious, which this author does not envy given it is such a difficult task. But any new law should seek to

205 See Weinberg, supra note 40, at 3. 206 See Oliver Smith, CAD, Copyright and Creative Commons – Part 1, The Infringement Saga Continues, STRATASYS (Feb. 26, 2016), http://consulting.stratasys.com/2016/02/cad-copyright-and-creative-commons-the- infringement-saga-continues/. 207 See HORNICK, supra note 10, at 192. 208 See id. 209 Weinberg, supra note 40, at 17. 210 Reebs, supra note 79, at 48. 211 See Jeanne C. Fromer, A Psychology of Intellectual Property, 104 NW. U. L. REV. 1441, 1472 (2010). 2018] ALWAYS EAT THE FINE PRINT 99

provide a minimal level of protection necessary to incentivize businesses to enter the market, while still allowing enough freedom for culinary innovation to flourish. This section analyzes the risks and potential pitfalls that could be encountered on the road to developing what this note will deem “trade recipe” protection. The first issue to consider is how Congress would have authority under the Constitution to protect trade recipes. Using the commerce clause is a nonstarter and should not even be considered because, as previously mentioned, the purpose of internet piracy in general is to avoid commerce. If a commerce requirement cannot be met with food piracy under trademark law, there is no reason it could be met for trade recipe protection.212 Instead, Congress will probably have to approach trade recipe protection under the intellectual property clause and classify trade recipes as either “writings” or “discoveries.” 213 This would force Congress to place a time limit on the duration of trade recipe protection, since Congress only has authority to “secure for limited times.”214 Since “limited” essentially means “not unlimited,” it would probably be challenged in court, but theoretically even a thousand year term of protection would be constitutional.215 As for defining infringement, the bar for what constitutes trade recipe infringement should probably be as high as reasonably possible. Copyright relies on a standard of substantial similarity, but for trade recipes the more appropriate standard would likely be something closer to exact similarity. 216 The slightest change in the amount of an ingredient can drastically alter a food’s flavor, and requiring exact similarity would help ensure businesses don’t get trade recipe protection for recipes of foods they do not actually make.217 By limiting the scope of infringement to either exact similarity or at most extremely minute differences (for example, “extreme” similarity), the recipe will remain protected while other foods can be developed. This also aligns with the social norms of the culinary community, and would continue to encourage creativity and innovation.218 Extreme similarity could be

212 See Weinberg, supra note 39, at 8. 213 U.S. CONST. art. I, § 8, cl. 8. 214 U.S. CONST. art. I, § 8, cl. 8. 215 See Malla Pollack, The Right to Know?: Delimiting Database Protection at the Juncture of the Commerce Clause, the Intellectual Property Clause, and the First Amendment, 17 CARDOZO ARTS & ENT. L.J. 47, 60 (1999). 216 See, e.g., Eric Rogers, Comment, Substantially Unfair: An Empirical Examination of Copyright Substantial Similarity Analysis Among the Federal Circuits, 2013 MICH. ST. L. REV. 893, 897 (2013). 217 See generally supra text accompanying notes 111, 217. 218 See FOODBEAST, supra note 80 (debating a form of IP for food that should allow for all but the smallest of differences, with “even a tablespoon different” being continued . . .

100 WAKE FOREST J. [VOL. 19 BUS. & INTELL. PROP. L. determined by the amount of each ingredient being within a certain percentage of each other. Conversely, instead of a complicated set of hardline percentages or measurements, it may be simpler to treat extreme similarity as a question of fact and leave it for a jury to decide. Perhaps the key factor is control. For trade secret owners, legal protection is a reward for owners of information who place restrictions and controls that are necessary to prevent misappropriation or disclosure, but those owners must also show that the information is controlled.219 If the amount of protection for printed food should be as close as possible to what trade secret law provides, then it only makes sense to require businesses to maintain similar controls on their CAD files in order to maintain legal protection for the files. But if a recipe is extracted from the CAD file and widely published online, why continue to protect it? Posting a recipe on torrent sites for free distribution destroys its secrecy, and its owner can no longer derive any economic value from preventing its disclosure.220 Requiring businesses to control and guard publicly disclosed information like a trade secret is economically inefficient and an illogical waste of resources.221 At the same time, if controlling the recipe is not required, there would be no incentive not to freely and irresponsibly disclose the recipe to the public without the risk of losing any trade recipe protection.222 Furthermore, similar to issues already cropping up with traditional 3D printing, a food service business could potentially disseminate the recipe then turn around and immediately pursue infringement claims against anyone using the recipe, even if it is used without the assistance of a food printer.223 Ultimately, the goal will most likely be to adhere as closely as possible to the protection provided by trade secret law. Trade recipes will need enough protection to convince businesses that the potential risks associated with entering the printed food industry are outweighed by the potential rewards; at the same time, the protection should not be so broad that it gives a business an inequitable monopoly over general food concepts and stifles culinary innovation. Much like Congress’s sufficient to avoid infringement). 219 See supra text accompanying note 71. 220 See supra text accompanying notes 93–94. 221 See generally supra text accompanying notes 82–89. 222 See generally John R. Thomas, The Role of Trade Secrets in Innovation Policy, CONG. RES. SERV. 1 (Jan. 15, 2014), https://fas.org/sgp/crs/secrecy/R41391.pdf (providing an overview of the law and policy of trade secrets). 223 See Timothy Holbrook, How 3D Printing Threatens Our Patent System, THE CONVERSATION, (Jan. 6, 2016, 6:06 AM), http://theconversation.com/how-3d- printing-threatens-our-patent-system-52665. continued . . . 2018] ALWAYS EAT THE FINE PRINT 101

focus on other areas where patent trolling has become problematic, Congress needs to ensure the protection is not overly broad and owners cannot become “trade recipe trolls,” abuse their rights, and stifle creativity.224

VI. CONCLUSION This note has largely focused on how to protect printed food, but there is also the question of whether any legal protection would even successfully punish or prevent food piracy. Even with such strong criminal punishments, the Economic Espionage Act has been largely ineffective since its adoption in 1996, with only ten total convictions in its first eighteen years.225 Even if copyright protection was explicitly extended to printed food, there is still a question of whether enforcement would be effective. Films and music have been protected by the DMCA since its inception, but copyright owners ultimately abandoned the hunt for downloaders and pirates simply because it was not effective, and instead opted to pursue more cooperative models.226 Today, research shows that internet piracy is more popular than it has ever been in online culture.227 Take this response to a DMCA takedown notice by The Pirate Bay, which is no more belligerent than their usual responses and only serves to encourage a culture of piracy: Hello and thank you for contacting us. We have shut down the website in question. Oh wait, just kidding. We haven’t . . . . You’re free to demand anything you want. So are we. We demand that you cease and desist sending letters like this, since they’re frivolous and meaningless. Where should I send the bill for the consumed diskspace and bandwidth?228

224 Katie Johnson, Congress Must Stand With Innovators Against Patent Trolls, THE HILL, (Mar. 26, 2017), https://thehill.com/blogs/pundits-blog/lawmaker- news/325673-congress-must-stand-with-innovators-against-patent-trolls. 225 Economic Espionage and Trade Secret Theft: Are Our Laws Adequate for Today’s Threats?: Hearing before the Subcomm. On Crime and Terrorism of the Comm. On the Judiciary, 113th Congress 2d Sess. (2014), https://www.gpo.gov/fdsys/pkg/CHRG-113shrg96009/pdf/CHRG-113shrg96009.pdf (testimony by Randall C. Coleman, Assistant Director in charge of the FBI’s Counterintelligence Division). 226 Depoorter, supra note 174, at 1494. 227 Ernesto Van de Sar, Online Piracy is More Popular Than Ever, Research Suggests, TORRENT FREAK, (Mar. 21, 2018), https://torrentfreak.com/online-piracy- is-more-popular-than-ever-research-suggests-180321/. 228 Cathie Lomeli, The Hilarious The Pirate Bay’s Legal Responses Will Make Your ROFL!, BEE BULLETIN (May 21, 2015), https://beebulletin.com/hilarious- pirate-bay-legal-responses/. continued . . .

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The questions raised in this note are not simple, and they will not have simple answers, but there needs to be an attempt.229 “3D printing brings the ‘Napster’ revolution of [internet piracy] to the doorstep of manufacturers and retails of physical articles,”230 and this will be no different for the printed food industry once it enters the mainstream. But as the technology advances, it will become more and more difficult do protect trade secrets.231 The printed food industry will most likely need the participation of the large corporations to reach its full potential, but no business will enter the printed food market if a single hacker could easily devalue its most important assets. 232 3D printing technology is already in the process of reshaping the world, and mostly for the better.233 The potential gains in drastically reducing production costs, world hunger, and climate change are an immense benefit to the entire world, and while those benefits should not be ignored, the potential for abuse creates too high a risk for the businesses with the most capital.234 The law needs to change for society to fully maximize the potentials of the technology. 3D printing, and printed food, can revolutionize nearly every aspect of our everyday lives, but it is going to need a push to get there. Star Trek portrays a future where money no longer exists, supposedly because “acquisition of wealth [will] no longer [be] the driving force in our lives.”235 This implies that humankind chose to serve society instead of money, but perhaps it was not a choice. Perhaps disruptive technologies like the replicator made capitalism obsolete. Perhaps the replicator was the catalyst, and technology that can create food and drink at will, for free, simply eliminated the need for concepts such as money and commerce. Will 3D printing and printed food be that catalyst, and make capitalism obsolete? As with nearly all legal questions, the answer is “maybe”.

229 See Weinberg, supra note 40, at 22. 230 Depoorter, supra note 173, at 1495. 231 Cf. id. (noting that “3D printing technologies will make it increasingly difficult to enforce IP rights on physical items”). 232 Cf. Craig, supra note 16, at 317–18 (noting that the motivations behind Congress enacting the DMCA surrounded copyright owners and their hesitation to post their works online “without reasonable assurance that they will be protected against massive piracy”) (quoting 63 AM. JUR. PROOF OF FACTS 3D Proof of Copyright Infringement by File Sharing § 6 (2016)). 233 Jeff Desjardins, INFOGRAPHIC: All the ways 3D printing is changing the world, BUSINESS INSIDER (Sept. 28, 2017, 8:59 PM), https://www.businessinsider.com/infographic-3d-printing-2017–9. 234 Preparing for the Risks of 3D Printing in Manufacturing, TRAVELERS, https://www.travelers.com/business-insights/industries/technology/preparing-for- risks-of-3d-printing-in-manufacturing (last visited Sept. 28, 2018). 235 STAR TREK: FIRST CONTACT (Paramount Pictures 1996).