A Publication of the New York Intellectual Property Law Association August/September 2015 The Report The Trademark as a Novel Innovation Index In This Issue By Brian J. Focarino* The Trademark as a Novel 4 Innovation Index ................1, 3-10 I. Pudding, Parks, and Products to innovate. We recognize that just of the Intellect because some ideas can be traded at a President’s Corner ...........................2 zero price does not mean that arriving Moving Up and Products of the intellect are differ- at all ideas incurs zero cost. To discour- 1 Moving On ..................................10 ent from a bowl of pudding. In eco- age free riding, and to incentivize inno- nomic terms, pudding is considered vation by ensuring that certain species What About Us? Pre-1972 Sound “rivalrous,” not in the way that the Hat- of ideas are entitled to excludability for Recordings, Music Licensing, ideas and Recording Artists’ Public fields and the McCoys are rivals, but by a period of time, we treat some Performance Rights virtue of the fact that if I get to a bowl of like we treat property, but property of in the Wake of Flo & Eddie pudding and eat it before someone else, the intellect.5 v. Sirius XM ............................11-23 it is “used up.” There is no more of it. The study of entrepreneurship August/September 2015 Ideas, on the other hand, are economi- “seeks to understand how opportunities 6 IP Media Links...........................24 cally “non-rival,” that is, one person’s are identified and exploited.” Valuable consumption of an idea does not nec- research in the field of entrepreneur- Conversations with the New essarily reduce the amount of the idea ship, therefore, involves “the scholarly Members of the NYIPLA 2 Board of Directors .................25-30 available to another person. My use examination of how, by whom, and with of English syntax in this sentence pre- what effects opportunities to create fu- NYIPLA Calendar ..........................31 vents no one from simultaneously using ture goods and services are discovered 7 Supreme Court 2014-2015 syntax to write another sentence some- [and] evaluated.” When studying the IP Case Review .......................32-37 where else. Language, unlike pudding, relationship that exists between entre- planes, and puppies, trades for nothing preneurship and intellectual property, Notable Trademark Trial and 3 Appeal Board Decisions .........38-39 in a market economy. But just like patents receive the most scholarly atten- products of the intellect are different tion.8 The attention makes sense when Historian’s Corner .........................40 from pudding, they are also, generally we consider that patents are closely as- 2015 U.S. Bar–JPO Liaison speaking, different from public parks. sociated with technical progress, grant Council Report ............................41 In addition to being non-rival, public temporary monopolies that incentivize parks are “non-excludable”—a pub- investment in research & development Reviews of CLE Programs lic park is freely available to all (taxes (R&D), and function as “vector[s] of and Events ..............................42-43 notwithstanding). The risk of treating technological dissemination” in and 9 Board of Directors ideas like we treat public parks is that of themselves. In a number of indus- Meeting Minutes ....................44-47 many of the entrepreneurs amongst us tries, however, “conventional forms of New Members ..........................47-48 would be unable to recoup the costs of invention (associated with patenting) inventing or creating. We would say are minimal, . so we must look else- g that an entrepreneur does not innovate where [to discern] innovative behav- because she, he, or it, has no incentive iour [sic].”10 This is particularly true cont. on page 3 The views expressed in The Report are the views of the authors except where Board of Directors approval is expressly indicated. © Copyright 2015 The New York Intellectual Property Law Association, Inc. N Y I P L A Page 1N Y www.NYIPL I P L A August/September A.org 2015 September 2015 In June, our Patent Law & Practice Committee submitted comments to a USPTO “Request for hat an honor it is for me to take the reins of Comments on Enhancing Patent Quality.” In it, such a collegial and renowned bar association the NYIPLA provided several ideas on how patent dedicatedW to intellectual property law! The NYIPLA quality can be improved, and commented on current has become a vital thought-leader in the national procedures used to evaluate patent quality. Please intellectual property community. To demonstrate our refer to the NYIPLA website for our full submission. commitment to intellectual property, one only has to Currently, the Patent Law & Practice Committee survey the current activities of our committees. is reviewing two new Requests from the USPTO The NYIPLA is thriving with its many active soliciting comments on PTAB procedures, e.g., committees who are the driving force of the NYIPLA. whether one or three APJs should decide Requests I’m sure your participation in a committee will to Institute an IPR. This Committee is particularly enrich your professional development and expand useful for practitioners confronting the new IPR, your network, be it with another committee member, CBM and PGR procedures as well as changes in a potential new client or finding a new job. Our patent prosecution rules. committees promote interaction amongst our members The Programs Committee is organizing our serving as a network for education and collaboration. hallmark CLE events, including the Fall One- Here are a few examples of the activities Day Patent CLE Seminar, the “Day of the Dinner” currently underway in NYIPLA committees and Luncheon CLE Program and many other events. opportunities available for members looking to This Committee spearheaded a special event held get involved: on September 30, 2015 at Fordham Law School, The Amicus Brief Committee is a virtual beehive designed to showcase the Southern District of New of activity addressing the most important and contro- York during its 225th anniversary year. This special versial IP issues of the day. On August 27, 2015, we event presented a live Markman hearing, entitled filed an important amicus brief at the U.S. Court of Wundaformer LLC v. Flex Studios, and was presided Appeals for the Federal Circuit in support of a petition over by the Honorable Jed Rakoff. for rehearing en banc by Sequenom, Inc. on the issue The NYIPLA also teamed up with the World of patent eligibility in Ariosa Diagnostics Inc. v. Se- Intellectual Property Organization to highlight quenom, Inc. Three other amicus briefs were also filed WIPO-specific services, such as international patent recently in the Akamai Technologies, Inc. v. Limelight and trademark filings as well as WIPO alternative Networks, the Lexmark International, Inc., v. Impres- dispute resolution services. This all-day event was sion Products, Inc., and the Cuozzo Speed Technolo- held on September 17th at the Benjamin N. Cardozo gies, LLC v. Michelle L. Lee cases. The continued dili- School of Law. gence and hard work of the Amicus Brief Committee Another special event took place on October is vital to the NYIPLA. 2, 2015 at the Western District of New York Court- The Legislative Action Committee (the “LAC”) house to honor the Honorable William Skretny’s has been actively following the progress of the pro- many years of dedicated service as Chief Judge posed patent bills in the Senate and the House. Earlier of the U.S. District Court for the Western District this year, the LAC submitted a White Paper to Con- of New York. The event featured a mock damages gress presenting the NYIPLA’s analysis of the pro- expert testimony presentation presided over by the posed legislation. More recently, we visited several Honorable William Skretny followed by a panel members of Congress, including Senators Charles discussion moderated by the Honorable Gregory Schumer, Patrick Leahy, Charles Grassley and Rich- Sleet, District Judge for the District of Delaware. ard Blumenthal, to discuss proposed provisions of These are just a few examples: We are bubbling the Senate bill. The LAC is highly visible for those with activity, focused on the future for the IP community. I invite you to join our PRESIDENT’S CORNER members interested in influencing the evolving statutory patent laws. committees and get that cutting-edge A special Committee has been advantage from the Association. busy organizing our next NYIPLA Finally, I would like to extend Presidents’ Forum, an invitation-only my grateful thanks to Anthony Lo event, to discuss in small-roundtable Cicero, my predecessor as President, format the current dilemma sur- for an excellent and successful term rounding the aftermath of Alice, in office. I also wish to thank each Mayo and Myriad. The Forum will member of the Board, the Executive be facilitated by immediate Past Office and each Committee Chair. President Anthony Lo Cicero and Dr. These are the leaders of the NYIPLA Marian Underweiser, IP Strategy & who provide the spark and drive that Policy Counsel at IBM, and will fea- make our organization special. ture discussion leaders including dis- trict court judges, USPTO leaders, a Dorothy R. Auth law school professor, and stakehold- ers in both the biotech and financial services areas. N Y I P L A Page 2 www.NYIPL A.org cont. from page 1 in our service sectors and consumer goods industries, zontal differentiation in a market can demonstrate that including