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With the District of Columbia’s Superior Court grappling with a severe judicial backlog and burnout, the U.S. Senate has taken a crucial step by confirming two new associate judges this week. With the Senate’s approval of  and , the District of Columbia’s Superior Court is set to receive a much-needed boost. The new judges, expected to be sworn in early next week, are a significant step towards addressing the court’s backlog crisis. A recent report highlighted that many D.C. residents are experiencing years-long delays for case resolutions, exacerbated by a high number of judicial vacancies. Chief Judge Anita Josey-Herring has expressed serious concerns, stating that the court is at a “breaking point.”  Unlike other cities, D.C. must wait for Senate confirmation of its local judges. Thirteen of the 62 judicial positions have been vacant for months, despite 11 nominations from the White House. To date, a Senate committee has advanced six of these nominees. The District’s Superior Court handles a wide array of cases, from criminal matters to civil disputes. Current records show significant stress across these areas, with judges in civil courts managing 400 cases each—double the recommended load. In the domestic violence court, four judges each averaged 1,900 cases last year. Additionally, the average time for resolving serious felony cases has increased by nearly seven months since 2019, now taking almost two years. The Senate Committee on Homeland Security & Governmental Affairs took further action by hearing testimonies from five additional Superior Court nominees. The court handles some of the highest case volumes in the nation, and prolonged vacancies on the bench add to the strain, said Chairman Gary Peters, a Democrat from Michigan. Peters then urged his colleagues to join in confirming “these well-qualified nominees.” In addition to the vacancies in the Superior Court, the D.C. Court of Appeals has had an unfilled position since 2013. Douglas Buchanan, a spokesman for D.C. Courts, stressed the importance of continued Senate attention to the issue. “It is essential that the members of the United States Senate continue to focus on addressing this crisis so that the D.C. Courts can do all that we can to provide fair and timely justice to all of those we serve across the District of Columbia,” Buchanan said.

Judge vacancies In both New York and Vermont, judge vacancies are chief among the reasons for the states’ court backlogs. In September, the New York City Bar Association  calling on the state legislature to work toward repealing the state’s constitutionally prescribed cap on the number of judges that can be elected to the state’s supreme courts. The state has one supreme court per county, totaling 62 across the state. The cap, originally enacted in 1846, limits the number of state supreme court judges to one for every 50,000 residents of a judicial district. New York state has nearly 120,000 pending cases, according to the most recent  available. In 2022, the state’s court system resolved more than 2.1 million cases, according to its The New York State Unified Court System did not respond to multiple requests for comment on the status of the state’s backlog or efforts to reduce it. Judges on other lower courts are tasked with stepping in when there are vacancies on state supreme courts, even if they were not initially elected for such roles, said Elizabeth Kocienda, the New York City Bar Association’s director of advocacy. This practice leads to backlogs in criminal, civil and family law cases, as lower court judges must handle cases outside their usual purview. And this routine reassignment contributes to vacancies on the lower courts, exacerbating the existing backlog, Kocienda said. “You end up with this mishmash of judges that are sitting on the supreme court with varying levels of experience, varying levels of all different practice areas,” Kocienda said. “They weren’t necessarily intended for that court, so it just creates a lot of downstream problems in other areas.” A  to increase the number of state supreme court judges is already in committee in both the New York Assembly and the Senate. In December, Democratic Gov. Kathy Hochul signed a  to increase the number of state supreme court judges in three districts. The law also raises the number of judges serving on other courts, including family courts in New York City. Hochul also has expressed support for repealing the cap on the number of supreme court judges in the state, including a  for the measure in her State of the State agenda released earlier this month. The Vermont Judiciary, which encompasses the state’s entire court system, faced judge shortages at different times over the past year, leading to the reassignment of judges from their regular dockets to cover cases in other areas. This reshuffling prevented them from presiding over their own cases simultaneously, resulting in a reduction in scheduled hearings and a slowdown in case processing across both courts, according to Teri Corsones, Vermont’s court administrator. As of Jan. 16, there were over 35,500 pending cases statewide, according to data from the Vermont Judiciary. About 42%, or 15,294 of those pending cases, are criminal cases. That’s double the amount of pending criminal cases pre-pandemic. While five vacant judge positions were filled in November, the state still has one judicial vacancy and one magistrate vacancy. “We’ve been able to make slow but steady progress in addressing the backlog since resuming fully open courts, but greater progress has been hampered by the number of judge vacancies,” Corsones wrote in an email to Stateline. Vermont’s pretrial detainee population increased about 10% between 2019 and 2023, which means hundreds of people have languished in the state’s correctional facilities without being convicted of a crime, according to Nick Deml, the commissioner of the Vermont Department of Corrections. “It’s gonna take multiple lines of effort, attacking different parts of this problem,” Deml said. “There’s not going to be one silver bullet that solves the backlog.” Democratic state Rep. William Notte introduced a bill that would combine a person’s multiple misdemeanor theft charges into a single felony charge, which aims to reduce the time spent in court. Notte, who sits on the House Judiciary Committee, said the committee also plans to explore other measures designed to reduce the state’s backlog, such as expanding drug court statewide and streamlining the process for presenting judicial nominees to the governor. The Vermont Judiciary asked the legislature to fund two additional judge positions and 10 judicial assistants, Corsones wrote in an email. The judiciary is also “actively exploring” a funding request for a third additional judge position.

Despite historic case backlogs, dozens of city judges are pushing pencils instead of banging gavels because there is not enough staff to conduct courtroom trials, judges and court officers told The Post. The state court system in New York City is operating at only “70 percent” of capacity and is down 250 officers and 250 clerks, charges Dennis Quirk, president of the New York State Court Officers Association. “There are judges who could be working who aren’t working, and it’s the public that’s getting [cheated],” Quirk said. “The judges can’t talk about it on the record, but I can tell you that they complain about it every day to the powers that be,” he said. “It’s been going on for the last two years and it’s getting worse. Every day there are judges sitting in chambers not able to conduct trials because there is not enough manpower.”

The gears of justice are currently grinding against a significant obstacle: a widespread court staffing shortage. Across the United States, judicial systems are grappling with a shortage of essential court staff, ranging from judges to court reporters, resulting in alarming consequences. This article delves into the implications of this issue, drawing insights from various sources, including the “State of the Judiciary” reports from Nebraska and New York, reports from Iowa and Florida, and coverage from reputable news outlets such as The Gazette and The Mercury News. The State of the Judiciary in Nebraska: An Alarming Revelation The “State of the Judiciary 2023” report from the Nebraska Supreme Court reveals a sobering picture of the crisis at hand1. The report underscores how a lack of adequate staffing in the courts is leading to substantial delays in case processing, backlogs, and an overall sluggish judicial system. The judiciary’s ability to promptly deliver justice is compromised, leaving citizens waiting for their day in court. Moreover, the Nebraska Supreme Court emphasizes that the shortage is not limited to any one area but affects the entire justice system. The impact on lower courts, appellate courts, and specialized courts is visible and palpable. This comprehensive account sheds light on the broader implications of the court staffing shortage, revealing the urgency of addressing the issue on a systemic level.

The threats technology poses to intimate privacy extend beyond individual expression, Citron warned, it also poses a threat to national security. Deepfakes, increasingly realistic, faked audio or video recordings, could alter the outcomes of an election. Imagine if a convincing video of President Biden admitting to “stealing” U.S. elections, or a speech altered to look and sound like a declaration of war, proliferated across social media. As deepfakes become more realistic too, democracy and our democratic discourse suffer. Citron pointed out that women, people of color, the LGBTQ+ community and other vulnerable groups are often the “canaries in the coalmine” for digital threats that could extend to the larger population. Currently, around 95 percent of deepfakes circulating on the internet are women’s faces placed onto pornography. The practice is not only deeply traumatizing for victims, but also pulls women offline, as evidenced by the case of Indian journalist Rana Ayyub, whose face was placed on a pornographic video, faced internet harassment, and doxxing to silence her reporting on the Modhi government. In a post-Dobbs environment, the risks of intimate privacy data violations become even more dangerous, according to Citron. Data associated with period tracking apps, health information, and location services could be sold by data brokers to law enforcement to prosecute pregnant people who seek or obtain an abortion. As UC Davis Law Professor Elizabeth Joh warns, “Dobbs reminds us of how little control we have over our digital selves and emphasizes how digital rights are also reproductive rights.” Digital surveillance over women’s reproductive lives will likely disproportionately impact women of color and women with fewer resources. During the conversation with Citron, several participants asked what, legally and personally, can be done to protect us from the perils of deepfakes and other intimate privacy violations. Citron proposes reforms to Section 230 of the Communications Decency Act, which provides broad immunity to tech platforms for content posted by third parties, even discriminatory content, unless the platform materially contributed to the content. In testimony before Congress, Citron contended that not all platforms on the internet should be considered good faith actors. Some “bad Samaritans,” as she calls them, such as revenge porn websites, should be denied the blanket immunity for content that Section 230 offers. Such reforms complement proposals that Professor Mary Anne Franks discussed at CFR this past summer, in which she shared steps the White House Gender Policy Council is taking with the launch of a task force to address online harassment and abuse. Ultimately, regulating the ability of private companies to collect certain types of data, like intimate privacy data, will make us less vulnerable to its weaponization. If intimate privacy were legally a civil right, argues Citron, companies would be obligated to protect the information, rather than profit from it.

Our national security is under attack. Social media platforms are porous, making it easier for bad actors to access private information, track users, and spread lies. Russia has expanded its ability to unleash propaganda around the world, promoting its anti-West views on a global stage. Its invasion of Ukraine marked an escalation in Russia’s longstanding information operations against open democracies. TikTok, under the influence of the Chinese Communist Party, has access to a vast amount of private data, which can be used in information wars against its adversaries. Both internal and external bad actors continue to weaponize social media today to weaken democracy in the United States. Some social media companies continue to generate pages for terrorist groups like ISIS to use, while others direct casual social media users to the pages of extremists through their algorithms. Social media companies’ approach to mitigating these problems is ad hoc, at best.

Data brokerage is a threat to democracy. Without robust national privacy safeguards, entire databases of citizen information are ready for purchase, whether to predatory loan companies, law enforcement agencies, or even malicious foreign actors. Federal privacy bills that don’t give sufficient attention to data brokerage will therefore fail to tackle an enormous portion of the data surveillance economy, and will leave civil rights, national security, and public-private boundaries vulnerable in the process. Large data brokers—like Acxiom, CoreLogic, and Epsilon—tout the detail of their data on millions or even billions of people. CoreLogic, for instance, advertises its real estate and property information on 99.9 percent of the US population. Acxiom promotes 11,000-plus “data attributes,” from auto loan information to travel preferences, on 2.5 billion people (all to help brands connect with people “ethically,” it adds). This level of data collection and aggregation enables remarkably specific profiling. Need to run ads targeting poor families in rural areas? Check out one data broker’s “Rural and Barely Making It” data set. Or how about racially profiling financial vulnerability? Buy another company’s “Ethnic Second-City Strugglers” data set. These are just some of the disturbing titles captured in a 2013 Senate report on the industry’s data products, which have only expanded since. Many other brokers advertise their ability to identify subgroups upon subgroups of individuals through criteria like race, gender, marital status, and income level, all sensitive characteristics that citizens likely didn’t know would end up in a database—let alone up for sale. These companies often acquire the information through purchase, licensing, or other sharing agreements with third parties. Oracle, for example, “owns and works with” over 80 data brokers, according to a 2019 Financial Times report, aggregating information on everything from consumer shopping to internet behavior. However, many companies also scrape data that is publicly viewable on the internet and then aggregate it for sale or sharing. “People search” websites often fall into this latter category—compiling public records (property filings, court documents, voting registrations, etc.) on individuals and then letting anyone on the internet search for their information. All of these unchecked practices undermine civil rights. Companies that boast holding thousands of data points on millions or billions of people—all for selling them to whomever is buying—themselves represent the aggregation of unrestrained surveillance power. This is particularly dangerous to the less powerful. As centuries of surveillance in the United States have made undeniably clear, the impact of stockpiling individuals’ personal information will fall hardest on the already oppressed or marginalized: the poor, Black and brown communities, Indigenous populations, LGBTQ+ individuals, undocumented immigrants. “People search” websites in particular can publicize addresses and thus enable intimate partner violence or doxing. The strong financial incentives to sell data, with virtually nonexistent limitations, gives these companies every reason to share their data with others, including those who use it for harm. Law enforcement already buys up data from brokers. The Department of Homeland Security, including subagencies responsible for putting children in cages, have purchased cell phone location data on millions of Americans, home address information to support deportations, and home utility data for investigations, among others. The Federal Bureau of Investigation has also been purchasing cell phone location data from data broker Venntel. These practices circumvent democratic accountability: Agencies buy the information without warrants, and in doing so may bypass prohibitions on companies handing data directly to law enforcement. Plus, the data may not even be accurate. An investigation by The Markup identified dozens of US cases over the last decade where individuals were denied housing because screening companies used bad information, often purchased from data brokers or pulled from “people search” broker websites. Citizens also get rejected from jobs because of background checks relying on incorrect data. The unregulated sale of massive databases of citizen information—and the unregulated aggregation and publication of that information online—also undermines national security. This was one of the missing elements of the policy debate over TikTok. If the US government is concerned about foreign authoritarian powers building detailed profiles on citizens, or even just on government personnel, then data brokers’ ability to sell, share, or publish intimate data sets on Americans with virtually no restriction should be of urgent concern too. Foreign powers could buy this data through shell companies or steal it by hacking. It could then be used to run microtargeted election ads. It could be used to inform counterintelligence operations or identify persons of interest in the business community. Criminal groups could even use this information to target politicians or judges.

The Federal Trade Commission (FTC) is the nation’s primary consumer protection body, and while some have called for a new data protection agency, most believe the FTC should be the body responsible for data security and privacy. Indeed, the FTC already enforces some privacy legislation and seeks to expand on its role in data privacy. As federal data and privacy bills are considered, it is therefore critical that we understand the role the FTC might play in overseeing and enforcing such legislation as well as the important role that lawmakers will have in setting parameters for the FTC. The issues related to rulemaking and enforcement authority are especially important and complex. Unchecked or overly prescriptive authority risks unwieldy regulation that could harm innovation and business, but too little authority risks insufficient protection from privacy harms and overly rigid protections that cannot adapt to rapidly changing technology. We must work to avoid both ends of this spectrum and, instead, strike a balance that ensures that the FTC is appropriately resourced to deliver on the agency’s promise to protect citizens and their data. As a result of our engagement with stakeholders, we believe the key to striking the right balance lies in “guided FTC rulemaking” in a federal law, echoed by privacy experts and private sector companies alike. With such an approach, Congress would be tasked with establishing clear guardrails and definitions around the type of rulemaking authority the FTC could use, the targeted areas in which that authority could be applied, and the means by which such efforts could be undertaken. Parameters for assessing penalties would also be key in ensuring that the enforcement of violations is carried out in a way that upholds compliance rather than conveying a perception of unguided fining.

I am writing to you on behalf of the American Intellectual Property Law Association (AIPLA) regarding the pending immigration reform legislation that would transfer jurisdiction over immigration appeals to the U.S. Court of Appeals for the Federal Circuit. We believe that such broadening of the Federal Circuit’s jurisdiction would seriously hinder the court’s ability to render high quality, timely decisions on patent appeals from district courts, and patent and trademark appeals from the U.S. Patent and Trademark Office. This runs directly counter to the present efforts of Congress to otherwise reform and improve this nation’s patent system. We take no position on other specific elements of the legislation or on the underlying need for immigration reform. Our concern focuses solely on the proposed shift in appellate jurisdiction, which we believe will do more harm than good. AIPLA is a national bar association whose approximately 16,000 members are primarily lawyers in private and corporate practice, in government service, and in the academic community. AIPLA represents a wide and diverse spectrum of individuals, companies, and institutions involved directly or indirectly in the practice of patent, trademark, copyright, and unfair competition law, as well as other fields of law affecting intellectual property. Our members represent both owners and users of intellectual property, and have a keen interest in an efficient federal judicial system. The Court of Appeals for the Federal Circuit was established in 1982 after more than a decade of deliberate study and Congressional consideration. The Hruska Commission (chaired by Senator Roman Hruska) conducted a study lasting nearly three years before recommending to Congress the establishment of a national appeals court to consider patent cases. It took two Administrations, several Congresses, and a number of hearings in both the House and Senate before legislation establishing the Federal Circuit was finally enacted. Over the past 26 years the Court, through its thoughtful and deliberate opinions, has made great progress in providing stability and consistency in the patent law. Removing immigration appeals from the general jurisdiction of the twelve regional Courts of Appeals and centralizing it in the Federal Circuit is an enormous change. Leaving aside the impact, both pro and con, on the affected litigants, the Federal Circuit is simply not equipped to undertake the more than 12,000 requests for review of deportation orders that twelve courts now share each year. The Federal Circuit currently has no expertise or experience in the field of immigration law. While the legislation envisions adding three judges to the twelve currently on the Court, we have serious concerns whether this increase will be adequate. Judge Posner has calculated that, even with the three additional judges proposed in the legislation, each of the fifteen Federal Circuit judges would be responsible for about 820 immigration cases per year, on the average—an incredibly large number that we believe will have a significant adverse impact on the remainder of the court’s docket. It seems inevitable that the proposed legislation will have a dramatic, negative impact on Federal Circuit decisions in patent cases and appeals from the USPTO. Such an increased caseload will necessarily delay decisions in these appeals, which in turn will cause uncertainty over patent and trademark rights and interfere with business investments in technological innovation. Beyond mere delay, the Federal Circuit's ability to issue consistent, predictable opinions in patent cases will be complicated by an increase in the number of judges. If conflicts in panel opinions increase, the inefficient and often contentious en banc process will have to be used more often, further adding to the overall burden on the court. Business can effectively deal with decisions, positive or negative, but it cannot deal with protracted uncertainty caused by inconsistent opinions or long delays in judicial review.

Yet the appeal of the standing dismissal to the federal judge is impossible to ignore. The massive and increasing caseload in the federal courts is well known. In the data-protection context, cases typically promise to be long and involved. Most arise from large-scale data breaches or inappropriate, indiscriminate data collection. As such, they are usually brought as class actions and implicate complex technical issues. One can certainly understand why overworked judges might be eager to get such cases off their dockets.

Because federal courts operate with limited judicial resources, judicial efficiency is critical to ensuring that courts can meet the obligations of a burgeoning caseload. 38

[[FN 38]]

The surge in patent applications and in patents granted did not occur without a cost. It is often impossible for companies willing to innovate on the previous knowledge stock protected by patents to obtain the ex-ante licensing agreements needed for their innovations. This impossibility is especially likely when rights are dispersed among several holders. Significant coordination costs may arise, and problems in aligning different interests can make innovation difficult or even impossible. Moreover, any company willing to introduce significant changes in products and processes faces the risk of “unconscious ignorance” due to increasingly compelling IP blindness. For Benassi and Di Minin (2009), as technologies evolve at a faster pace and become more likely to converge, companies pursuing innovative strategies may violate other companies’ rights. Violation occurs because time to innovation and time to market are much shorter than the time required to complete the process of fling a patent application and being granted the patent. Companies may thus unintentionally violate existing patents, no matter how many resources they commit to IP management to monitor all possible innovators. Not surprisingly, the surge in patent applications parallels a signifcant increase in patent litigation. Bessen and Meurer (2012) found that the total cost of lawsuits was large compared to estimated legal fees, estimates of patent value, and R&D spending. Although faith-based IP tends to justify IP as a moral end in itself (Lemley, 2015), evidence from ongoing research suggests the importance of careful consideration not only of the pros and the cons of the patent system but also of the economic, institutional, and legal effects resulting from the spread of patents. The market for patents and its challenges form one of the most significant issues in this regard.

3. Substantive Patent Laws - If You Build It, They Will Come Another reason applicants have inundated the USPTO with applications is because U.S. patent law has exceedingly liberal requirements for patentability and strongly favors patent holders. Thus, the appeal of a U.S. patent is generally much greater than patents in other jurisdictions. As discussed earlier, the USPTO must not discriminate on the grounds of national origin when extending patent protection. The office also does not discriminate on the grounds of subject matter, and seemingly, any true showing of an inventive step. Coupled with the empowerment of the U.S. patent holder in court, applications flood the office from all over the world. The scope of endeavors contemplated by the U.S. patent system certainly drives application numbers. In the United States, an inventor may seek a patent for "any- thing under the sun made by man.""3 Patent protection has recently been extended to inventions directed towards biotechnology in Diamond v. Chakrabarty,"' computer software in Diamond v. Diehr,3 and even methods of doing business in State Street Bank & Trust Co. v. Signature Fin. Group, Inc."3 This expansion of patentable subject matter has partially contributed to the increase in applications." In the wake of Chakrabarty"' and the Bayh-Dole Act,"' there has been a flood of biotechnology patents on early stage research."' While the extension of patent protection to computer software inventions has received critical attention, the rise of so-called business method patents has been seen as a blight on innovation, and the USPTO."' Following State Street,"4 the number of business method applications has exploded."' Accordingly, the backlog and pendency periods in the art unit responsible for examining these applications are staggering.4 These changes in patentable subject matter impact non-resident filings as well. The rest of the world is not as liberal in its protection of biotechnology inventions.' Likewise, the granting of software and business method patents by the USPTO has a tremendous extraterritorial impact. The world's other major markets have been far more hostile towards extending patent protection to these abstract inventions."' But, "in an inter- connected internet world, software patents granted in one key jurisdiction will have a global impact. Foreign applicants are therefore encouraged to get in on the act or suffer the business consequences, even if their applications would be refused in Europe or Japan."' Therefore, foreign filings directed towards USPTO-exclusive subject matter have a considerable impact on application numbers. While the pool of patentable subject matter has expanded greatly, the depth of that pool is shallow...very shallow. An applicant that meets the requirements of patentability "shall be entitled to a patent."1' The primary gatekeeper of patentability is that an invention not be obvious to the person having ordinary skill in the art." But the gatekeeper is failing.' The doctrine of non-obvious relegates the decision of patentability to a series of abstract tests rather than a true assessment of commercial merit and societal benefit."' As a result, examiners can-not seem to reject applications no matter how trivial. Seemingly, the concept of if you build it, they will come, holds true to patentees; low thresholds incentivize applications. And applications have been filed for the most frivolous, underwhelming, and arguably blatantly obvious "inventions," and patents have issued." 'There has been "a proliferation of patent awards of dubious merit"' This lessened threshold further encourages applications from non-residents who view the USPTO as more likely to grant a patent that would be rejected elsewhere." This low threshold has con- tributed to the flood of poor quality applications originating from so-called inventors around the world. The strength of the patent right also drives application demand. The patent holder's ability to sue those who infringe the patented invention is the government's quid pro quo for the patent holder's disclosure of the underlying innovation to society And the government lives up to its end of the bargain by extending powerful rights to patent holders. There is a strong presumption that an issued patent is valid and this showing can only be rebutted by a potential infringer by clear and convincing evidence." The patent holder, however, must prove infringement by a mere preponderance of the evidence.' The deck is clearly stacked against infringers from the start. It only gets worse for alleged infringers from there. Courts have become markedly sympathetic to patentees since the creation of the Court of Appeals for the Federal Circuit in 1982."6 Also, the infringement action is more liberally construed in the United States. The doctrine of equivalents extends the exclusionary power of the patent to cover substantial similar products that are the equivalent of the claimed invention. ' This form of infringement is rarely adopted elsewhere. 6 The actual work that this doctrine does for patent holders has been questioned. 63 But, its mere existence is another strong, if only symbolic, indication of a distinctly pro-patent legal system. Further tilting the scales are the drastic remedies available to patent holders,164 the uncertainty that accompanies jury trials, 61 and the exorbitant costs of defending an infringement action.66 This pro-patent litigation setup emboldens patent holders. It also makes alleged infringers more like- lv to settle, even when the asserted patent is of questionable quality. 6 Either way, patent holders win. If you know you are always going to win, why wouldn't you play? Thus, the unquestionably pro- patent and pro-patentee setup keeps the applications coming. 4. Strategic Reasons - Patents as Poker Chips & Ballistic Missiles A shift in the paradigmatic value of patents has also increased the number of applications. Traditionally, the patent grant has been recognized as "an efficient method of enabling the benefits of research and development to be internalized, this promoting innovation and technological progress.""'9 However, patents are often sought for reasons far removed from recouping R&D investment costs and product commercialization. '7Applications are filed for a diverse number of strategic reasons. Patents are routinely treated as poker chips, facilitating the bargaining for technology necessitated by the interdependence of the Information Age. In addition, firms increasingly seek to amass broad and overlapping patent rights as a means to threaten competitors when bar- gaining fails. There has been a clear shift in the commercial value of information technology and, as a result, the value of patents.' Knowledge is to the 21" century what capital was to the 20' century.172 Fixed material assets are no longer essential to commercial success; access to technology drives progress. During the Industrial Age, one commercial product could easily be covered by one patent. But, in the Information Age, one commercial product may be covered by tens, hundreds, or thousands of patents owned by diverse entities.' Accessing such a degree of tech- nology requires cooperation, often with competitors, to leverage outside knowl- edge-based resources.' Innovation is the product of interdependence.'' In many industries, patent licensing arrangements are essential.'" Thus, patent holders can derive value from the patent by licensing this exclusive right.'" Even companies who do not practice the patent can still extract financial value through licens- ing.1 In fact, most patentees are only able to realize the patent's value by collaborat- ing with others.1' In addition to recovering R&D costs and generating licensing revenue, patents are also valuable as an indicator of firm health and staff performance, a means to access capital investment, and as a means to pro- tect market position.'" Patents, like poker chips, can be used as a status symbol, a nec- essary buy-in to a revenue stream, or sim- ply cashed in for monetary value. Innovators need access to patented infor- mation. As a player's patent portfolio grows, its relative bargaining power at the table over others who need access to the information grows. Therefore, patents serve an important part in commercial negotiations. There is a constant struggle to gain more chips; more information access.

Patent backlogs may also impose costs through lowering the quality of the patents granted as examiners strive to process applications more quickly in the face of rising workloads. As patent offices seek to hire more staff rapidly in response to rising numbers of applications, the proportion of senior staff decreases, and those staff spend more time training the new hires (Pinkos, 2005). In recent years plenty of anecdotal evidence has cited falls in patent quality, although to date there has been little empirical evidence of this effect (Hedlund, 2007). A reduction of patent quality, if this does result from patent backlogs can be costly for three main reasons (Hedlund, 2007). First, if examiners are incorrectly granting applications, it may encourage firms to pursue patents for potentially infringing inventions because they know that there is a possibility of grants. The backlog problem is then exacerbated, as more applications are attracted. Second, a low quality patent system creates an environment where infringement and litigation are more likely, as the validity of patents is questionable. Again, this may create an incentive to file more low quality patent applications to take advantage of this.

The purpose of the patent system is to encourage innovation. Inventors are invited to disclose their innovations to the public in return for a temporary monopoly over their use. Disclosure allows anybody to learn and improve an invention. Monopoly allows the inventor to reap private benefits of premium pricing. Mansfield (1986, p. 174) found that more than 30% of pharmaceutical inventions would not have been introduced in the absence of a patent system. The sheer uncertainty associated with drug trials and lengthy approval procedures do not warrant investment without the insurance of patent-induced monopoly pricing. On the contrary, Scotchmer (1991) has discussed how strong patent protection to early innovations can deter follow-on innovations, especially in complex product industries, thus acting against public interests. The patent system is thus responsible to strike a balance between public interest and the rights of inventors. The historical backdrop of the patent system is briefly discussed in Chapter 2. Here, I will discuss the current trend in global patenting to explain why patent life cycle is important, and why I study technological overlap and patent disputes. [[[IMAGE OMITTED]]] Figure 1 presents the patenting trends in the top five patent offices. The staggering volumes of patent filings in the last 30 years shows the increasing importance of non-tangible intellectual property in the knowledge economy. Innovators clearly respond to incentives offered by patent systems that also results in competition over monopoly rights. A higher demand for patents is responsible for lower quality and backlog in patent offices (van Pottelsberghe, 2011). There are many explanations for such a rise in patenting. New areas like business methods and computer software have slowly opened up for patent protection (Lerner, 2006; Bessen and Hunt, 2007; Hall, 2009). The traditional motive to obtain exclusion rights for innovations is no longer the only motive to patent (Levin, et al., 1987; Cohen, et al., 2000; Holgersson, 2013). New motives to patent include forearming against lawsuits, increasing negotiation power, build credibility before investors, obtaining freedom to operate, and the like (Blind, et al., 2006; Somaya 2012). Many scholars have studied the drivers of such a rise in patent applications (Hall and Ziedonis, 2001). Others have studied the resulting congestion in patent offices that are driving down the quality of patent applications (Harhoff and Wagner, 2009; Régibeau and Rockett, 2010). The phenomenal rise in patent filings has left all major patent offices overwhelmed with backlog. This has led to: (i) lengthy life cycles of patent applications between filing, grant, and even beyond (ii) increase in post-grant disputes as weak and overlapping patents often leak through the system

On Dec. 27, 2020, the Trademark Modernization Act of 2020 (TMA) became law. A key component of that legislation was the codification in Section 34(a) of the Lanham Act of the common-law principle that a trademark owner seeking injunctive relief in actions for trademark infringement and unfair competition under Sections 32 and 43 of the Lanham Act is entitled to a rebuttable presumption of irreparable harm. The presumption arises upon the movant demonstrating liability at the proof stage, or a showing of a likelihood of liability in the context of motions for expedited relief seeking a temporary restraining order or a preliminary injunction. By enacting legislation confirming the existence of the presumption of irreparable harm in cases of trademark infringement and unfair competition, many commentators predicted that litigants would be dissuaded from the forum shopping in which many engaged after the existence of the presumption was called into question following the U.S. Supreme Court decisions in eBay, Inc. v. MercExchange, 547 U.S. 388 (2006), and Winter v. Natural Resources Defense Council, Inc., 555 U.S. 7 (2008). Unfortunately, even with the TMA’s confirmation of the presumption’s existence, the probability that litigants will continue forum shopping remains high because of Congress’s failure to provide additional guidance relating to application of the presumption. This article explores developments (both positive and negative) in the post-TMA world in which courts have wrestled with implementation of the presumption of irreparable harm in trademark cases. The Good Prior to the TMA’s enactment, largely as a result of the eBay and Winter decisions, a significant debate emerged whether the holdings in these cases should apply to Lanham Act cases involving trademark infringement and unfair competition. Some courts ignored eBay and Winter altogether and found the presumption applicable. Other courts either hinted or expressly held that the presumption no longer applied and therefore required the plaintiff to provide affirmative evidence of irreparable harm to establish that factor. Because of the divergence of decisions on whether the presumption remained applicable, those seeking injunctive relief in trademark cases were forced to assess carefully the law of the jurisdiction in which they were pursuing that relief, and to ascertain whether or not evidence of irreparable harm would be required, as well as the types and quantity of evidence of irreparable harm courts in that jurisdiction had found will satisfy that burden. Similarly, nonmovants were required to assess what evidence courts in the applicable jurisdiction had found to be persuasive in overcoming the trademark owner’s evidence of harm. The good news is that the TMA has now resolved the debate at least as to the presumption’s existence. This expressly abrogates court decisions that applied eBay and Winter to trademark cases and eliminated the presumption of irreparable harm. Another development falling in the “good” category is that post-TMA courts appear to agree that the confirmed presumption shifts only the burden of production rather than the burden of proof to a defendant against which it is asserted. The Third Circuit’s opinion in Nichino America, Inc. v. Valent U.S.A. LLC, 44 F.4th 180 (3d Cir. 2022), provides one of the more detailed analyses of this issue. Nichino America involved a dispute between two manufacturers of pesticides used in farming. The plaintiff offered a pesticide product under the Centaur mark and sued the defendant after it introduced a pesticide product under the Senstar mark. The plaintiff moved for a preliminary injunction. Although the district court found that the plaintiff had established a likelihood of success on the merits and was therefore entitled to a rebuttable presumption of irreparable harm under the TMA, it also found the defendant had rebutted the presumption. The plaintiff then appealed the denial of the preliminary injunction to the Third Circuit. At the outset, the Third Circuit, like the district court, acknowledged that the TMA created a rebuttable presumption of irreparable harm. The Third Circuit added, however, that the TMA failed to explain how the presumption should be applied. According to the court, in such cases Federal Rule of Evidence 301 provided a default rule as to how the presumption should be applied in federal cases. The court added that Rule 301 only provided for the evidentiary burden of production to be shifted to the party against whom the presumption is directed. The allocation did not shift the burden of persuasion, which remains on the party who had it originally. With that framework in mind, the Third Circuit provided the following step-by-step instructions for applying the TMA’s rebuttable presumption: Step 1. Courts first consider the plaintiff’s evidence only as it relates to the likelihood of success factor. Step 2. If the plaintiff’s evidence establishes likely infringement or unfair competition, the TMA’s presumption is triggered, and the burden of product shifts to the defendant to introduce evidence sufficient for a reasonable fact finder to consider that consumer confusion is unlikely to cause irreparable harm. Step 3. If a defendant successfully rebuts the TMA’s presumption by making this evidentiary showing, the presumption has no further effect. The burden of proof then returns to the plaintiff to point to affirmative evidence proving as a factual matter that irreparable harm is likely absent an injunction. Nichino America’s Rule 301 approach has been mirrored by other post-TMA courts as well. See, e.g., Pizza Inn, Inc. v. Allen’s Dynamic Food, Inc., No. CIV-23-00164-PRW, 2023 WL 3015297 at *3 (W.D. Okla. Apr. 19, 2023); Vital Pharms. v. PhD Mktg., Inc., No. CV 20-6745-RSWL-JCx, 2021 WL 6881866, at *5 (C.D. Cal. Mar 12, 2021). The Bad Although confirmation of the existence of the presumption is a boon for trademark owners, Congress unfortunately passed on an opportunity to go further and provide concrete guidance as to the mechanics of the presumption, including its weight and the amount of evidence required to establish and overcome it. Many industry organizations, including the American Bar Association, International Trademark Association, and American Intellectual Property Law Association had heavily lobbied Congress for these legislative clarifications prior to the TMA’s enactment. Indeed, even the House of Representatives Committee on the Judiciary had observed prior to the TMA’s passage the existence of uncertainty as to the evidence required to demonstrate irreparable harm: In Adidas [adidas Am., Inc. v. Sketchers USA, Inc., 890 F. 3d 747, 759 (9th Cir. 2018)] and similar cases, it is unclear what additional evidence could or should be provided to establish irreparable harm given the evidence of record already demonstrating consumer confusion or loss of control over the brand. Thus, while the Ninth Circuit, for instance, states that “[e]vidence of loss of control over business reputation and damage to goodwill could constitute irreparable harm,” when presented with evidence of actual consumer confusion, a district court nonetheless concluded that it “simply underscores consumer confusion, not irreparable harm” — demonstrating an unwillingness to conclude that such confusion is the sort of the irreparable harm typically addressed by equitable relief. In sum, trademark litigants in courts adopting eBay are faced with uncertainty over what constitutes sufficient evidence of irreparable injury. H.R. Rep. No. 116-645, at 19 (2020). Because of Congress’s inaction, post-TMA courts have exhibited nearly unbridled discretion in assigning the presumption whatever weight they desire. This has resulted in a broad range of judicial views of the presumption’s weight from “slight” to “heavy.” Compare Nishino Am., 44 F.4th at 186, with Savage Tavern, Inc. v. Signature Stag, LLC, 589 F. Supp. 3d 624, 659 (N.D. Tex. 2022), and Theorem, Inc. v. Citrusbyte, LLC, No. CV 21-4660-GW-AGRx, 2021 WL 5750238, at *8 (C.D. Cal. Nov. 16, 2021), order entered, No. CV 21-4660-GW-AGRx, 2021 WL 6206964 (C.D. Cal. Dec. 27, 2021), stay pending appeal denied, No. CV 21-4660-GW-AGRx, 2022 WL 13314041 (C.D. Cal. Jan. 18, 2022), appeal dismissed, Nos. 21-56289, 21-56385, 2022 WL 1721193 (9th Cir. May 23, 2022). And this confusion as to the presumption’s weight has not been alleviated by the language used by courts in characterizing the presumption, such as describing it as a “bursting bubble.” Some courts have used that description to indicate that the presumption is slight, whereas others have characterized it as heavy. Another development falling in the “bad” category is that a surprising number of courts in virtually every circuit — and apparently litigants as well — have remained oblivious to the changes imposed by the TMA as to the presumption of irreparable harm, although the instances of this appear to be diminishing. See, e.g., Leather Bros., Inc. v. Springhaus, LLC, No. 6:23-cv-439-WWB-LHP, 2023 WL 2584457 (M.D. Fla. Mar. 21, 2023); Richardson v. Cascade Skating Rink, No. 19-8935-NLH-MJS, 2022 WL 833319 (D. N.J. Mar. 21, 2022); Sycamore Brewing, LLC v. Stone Brewing Co., No. 3:22-CV-00148-FDW-DSC, 2022 WL 1185895 (W.D.N.C. Apr. 21, 2022). Accordingly, trademark owners would do well to inform courts in their briefing of the TMA’s existence and their reliance on the TMA’s confirmation of the existence of the presumption. Otherwise, decisions may be reached by the court relying on eBay and Winter or on other less favorable pre-TMA law of the circuit at issue. The Ugly Congress’s deliberate election not to provide additional parameters and guideposts as to the presumption of irreparable harm analysis has led to some presumably unanticipated negative consequences in applications of the presumption, at least from the perspective of trademark owners. For example, both before and after the TMA courts had historically only allowed defendants to rebut the presumption by reliance on equitable principles such as delay, a showing of purely pecuniary injuries, or demonstration that the nonmovant had or would soon cease the allegedly infringing activity. Courts had also routinely rejected defendants’ efforts simply to rehash evidence considered in the likelihood-of-confusion analysis to rebut the presumption of irreparable harm. However, the Third Circuit in Nichino America, Inc. v. Valent U.S.A. LLC, recently ruled that a defendant could (and did) rebut the presumption by relying on a single element of that analysis. As indicated above, Nichino America involved a dispute between two pesticide manufacturers. The plaintiff moved for a preliminary injunction after the defendant introduced its competing product, which was denied by the district court and affirmed by the Third Circuit. In assessing the plaintiff’s likelihood of success on the merits, the Third Circuit endorsed the district court’s analysis of the plaintiff’s infringement claim utilizing the 10-factor analysis adopted by the court in Interpace Corp. v. Lapp, Inc., 721 F.2d 460, 462-63 (3d Cir. 1983). The Third Circuit observed that the district court concluded five of the Lapp factors favored the plaintiff, two were neutral and three (overall degree in similarity, consumer purchasing habits and the defendant’s intent) favored the defendant. Based on that tally, both the district court and Third Circuit found the plaintiff had established a likelihood of success on the merits and was entitled to a presumption of irreparable harm under the TMA. But then the district court and Third Circuit deviated from established law when they turned to whether the defendant had rebutted the presumption. Rather than resorting to an analysis of equitable considerations, both courts instead allowed the defendant to conflate the likelihood-of-confusion and irreparable harm elements and rely on a single Lapp factor (i.e., that the relevant consumers were sophisticated buyers who exercise great care in purchasing pesticides) to rebut the presumption. Stated another way, after concluding that this likelihood-of-confusion factor along with others favoring the defendant were insufficient to overcome the plaintiff’s likelihood of success on the merits, that factor alone was deemed sufficient to rebut the presumption. Nichino America may turn out to be an aberration for trademark owners going forward. However, it is now controlling law in the Third Circuit, and, should other courts adopt the Third Circuit’s conflated analysis, the presumption’s weight will be weakened nearly to the point of nonexistence. Finally, several recent decisions have also demonstrated the risks trademark owners now face where they rely solely on the presumption of irreparable harm to establish the balance-of-harms element in the preliminary injunction analysis. At least two post-TMA courts have held that despite the fact the plaintiff had established a likelihood of success on the merits and that the defendant had failed to rebut the presumption, the plaintiff was still found not to be entitled to injunctive relief because the balance-of-harms factor was viewed by the court as favoring the defendant. See, Concord Music Grp., Inc. v. STAX. Pty Ltd., No. 2:22-cv-03331-AB (PVCx), 2023 WL 2977495, at *7-8 (C.D. Cal. Apr. 6, 2023), appeal filed, No. 23-55352 (9th Cir. Apr. 17, 2023); Kohler Co. v. Whistling Oak Apartments LLC, No. 20-CV-1563, 2021 WL 2434203, at *10-14 (E.D. Wis. June 14, 2021). This departs from the approach many courts adopted pre-TMA, as they usually held that when a defendant was shown to have improperly used a plaintiff’s trademark, the threat and harm to the plaintiff outweighed the threat and harm to the defendant.

In earlier articles, I have discussed the benefits of federal registration of trademarks, how they differ from patents and copyrighted materials, and how far you should go to protect your marks. But, when someone decides to take the ultimate step to initiate litigation, I find that they often have little understanding of the process, the timelines, the costs, and the burdens involved. This article is meant to give a high-level view of what a litigation entails, either at the U.S. Patent and Trademark Office or in federal court. Two Venues If your goal is to oppose the pending registration of another person’s trademark, or to cancel such a registration after it issues, you will generally bring your case to the USPTO’s Trademark Trials and Appeals Board (TTAB). On the other hand, if you believe that someone is infringing your trademark and you want to seek monetary damages, you will file a lawsuit in a U.S. District Court. There is overlap in these proceedings; for example, you can seek to cancel a registered trademark as part of a court case, but there are differences as well; e.g., you cannot seek monetary damages at the TTAB. Generally, though, the processes in both venues are similar. Before Filing – Due Diligence Whether at the TTAB or in federal court, before you file your case, you are obligated to ensure that you have a proper basis for doing so. Your attorney will ask many questions and likely want to see some documentation. This is their due diligence process to see whether you have reasonable grounds to bring your case and to assess your likelihood of success in the matter. They are looking for such issues as: whether you own a valid trademark and have standing to bring the case; whether the other party has a valid trademark and, if so, which party has priority in its rights; the similarity of the two trademarks and their channels of trade; evidence of when and how the other party has used its mark, etc. If, after reviewing these materials, the attorney agrees that you have a reasonable basis for your case, they will draft the initial filing documents. In the TTAB, these would be a Notice of Opposition or a Petition for Cancellation; in federal court, it would be a Complaint. For simplicity sake, I will refer to all of these documents as complaints. Filing the Complaint Your attorney will synthesize the material you provide into a complaint. While complaints have a required structure that is somewhat dry and formulaic, because it is the first opportunity to educate the TTAB or judge as to what the case is about, it should paint a very clear picture of how you have been aggrieved and the other party is responsible. The cost of this stage of the case will depend upon the complexity of the issues and, of course, your attorney’s hourly rate. For a complex case, it may take as much as 30-40 hours of attorney time to do the legal research, analysis, investigation, and draft the complaint. The government filing fees for the complaint, whether at the TTAB or in federal court are $400. Discovery This is the stage of litigation of which clients tend to have the least understanding, and for good reason. It’s a complex array of processes and rules and is frequently the source of many disputes between the parties. For this reason, it is also often the most expensive part of the litigation process. As a general matter, “discovery” is the process through which you get information from the other side in order to try to prove your case. In both TTAB proceedings and court litigations, the discovery process is fairly broad, meaning that you are allowed to ask for a wide array of information from the other side. Court litigations, however, are broader in scope because, for example, those cases usually involve monetary damages, which are not at issue in TTAB proceedings. This is also one of the reasons that court litigations are more expensive. There are four basic tools in discovery: interrogatories, requests for production, requests for admission, and depositions. Interrogatories are simply questions you ask the other side and they are required to answer. For example, you might ask the other party to describe the dates and circumstances under which they created and adopted their trademark. Requests for production are how you ask the other party to provide you with documents or other tangible items in their possession. As an example, you might ask the other party to produce documents that demonstrate the geographic areas in which they have sold products under the challenged trademark. Requests for admission are statements of fact that you ask the other side to admit or deny. These can be useful to narrow the issues and pin your opponent down on specific points. For example, you might ask the other party to admit that they did not use their trademark before a particular date. Depositions are probably the most dreaded discovery tool. Through a deposition, you subpoena a witness to physically appear in a room with your attorney and to answer questions under oath in the presence of a stenographer and/or video recorder that will take down their every word. Depending upon the complexity of the case, these depositions may last as long as 7 hours, each. Often, there will be several rounds of written discovery between the parties before depositions are taken. This enables the parties to review the documents and narrow the issues so they may ask more pointed questions of the deposition witnesses. This written discovery process can be lengthy, arduous, and disruptive to the parties’ businesses. The parties generally have 30 days to respond to each discovery request, so the whole discovery process can take anywhere from several months to several years in more complicated cases. In addition to drafting and responding to each other’s requests, the attorneys will often have protracted discovery disputes, arguing about the scope of the requests, the disclosure of confidential business information, or the application of attorney-client privilege. Most clients dramatically underestimate the amount of time it will take to complete discovery, the amount of time and effort they will have to spend in collecting documents and responding to requests, and the costs involved. Experts All of the discovery issues mentioned above relate to what are called “fact witnesses.” This can be anyone who has factual information relevant to the case. In most instances, the requests will be directed to the company and/or individual owners or employees of the company. In some cases, the litigants may also seek discovery from third parties who have no direct involvement in the matter, but nevertheless have information relevant to the case. There is another category of discovery, however, relating to expert witnesses. In trademark cases, experts will sometimes be called by one or both sides to provide opinions as to whether there is a likelihood that the relevant public will be confused as to the source of goods due to the similarity of the two trademarks. Sometimes these experts will conduct surveys of the public. The experts will then draft a written report of their findings and stating their opinions. The other side will usually then take a deposition of the expert to try to expose weaknesses in their opinions. While experts can be extremely useful, they also dramatically add to the cost of the litigation due to their fees as well as the cost of associated discovery. Motions Throughout the case, but particularly after discovery, each party may file a variety of motions with the TTAB or court. A motion is a document requesting the court to decide an issue. For example, if the other party refuses to provide certain requested documents, you might file a motion to compel, asking the court to require the party to produce the documents. There may also be motions to dismiss the case, motions for sanctions for abusing the discovery process, motions to exclude evidence or disqualify an expert, and many more. After discovery is completed, the parties will often file a motion for summary judgment, in which the party claims that there are no material facts in dispute between the parties and therefore they are entitled to win the case as a matter of law. With all motions, the other party will have an opportunity to file a written opposition to the motion. In some cases, the motion will be decided by the court just on the basis of these written briefs, but for more complex issues, the parties or the court may request an oral hearing to present the issues to the court in-person. Trial Up to this point, the processes at the TTAB and in federal court are very similar. This is where they diverge significantly. At the TTAB, the plaintiff will have a period of time in which they may present evidence to the board in support of their case. They first have to make “pre-trial disclosures,” telling the board and the other party what witnesses they will present, for example. Then there will be a “trial” period during which they present their case: they will submit various documents and affidavits, and may take testimonial depositions of the witnesses either through live testimony or written questions. At the conclusion of this period, the defendant will have an opportunity to do the same. The plaintiff will then have an additional period for rebuttal. Once these “trial” periods are complete, each side will have an opportunity to file a brief, arguing the facts to the board. This entire process from the beginning of the plaintiff’s trial phase, to the filing of the last brief, may take as long as 9-10 months. Upon completion of the briefs, one or both parties may ask the board for an oral hearing. After all of the briefs are completed and, if requested, the hearing has taken place, the Board will then take all of the evidence under consideration and render its decision. This process may take several more months. By contrast, a trial in federal court is the process with which people are more familiar. As with a TTAB proceeding, the parties will make certain disclosures to the court and may argue about what evidence may be presented, but the trial phase itself is what people typically expect. It is a live process in front of a jury and/or judge in which the parties may call witnesses to testify and may present physical evidence for the court’s consideration. It is a more interactive process, where each side may cross examine each other’s witnesses immediately. The whole trial process generally may take a couple days to several weeks. Conclusion Whether at the TTAB or in federal court, a trademark litigation is a lengthy, costly, and exhausting endeavor. Whenever possible, parties should attempt alternative means to resolve disputes that are far less burdensome. But, when litigation cannot be avoided, the parties should at least have a full understanding of the timeline, the processes, and the costs involved. While most cases at the TTAB and in federal court settle, the parties should be prepared for the case to go all the way through trial. Every case is different, but parties should expect a trademark case to take 1 ½ – 2 years to complete, sometimes more. A TTAB case that goes to trial will certainly cost in the tens of thousands of dollars and often will reach six figures. A federal court case will start in the hundreds of thousands and may reach seven figures in more complicated matters. It is imperative that the parties have a full and frank discussion with their attorneys about all of the issues discussed herein.

Among other things, these factors are designed to ensure that the determination of whether one mark infringes another is not merely a subjective decision about whether the second-comer’s mark so closely resembles the first-comer’s mark that it would be unfair to allow the later entrant to continue. Trademark law does not confer a “right in gross” to a mark but, rather, confers rights limited to what is necessary to prevent consumer confusion and protect the good will of the trademark owner.9 Thus, trademark infringement typically is not determined based solely upon a side-by-side comparison of the two marks.10 ¶9 In determining whether confusion is likely, evidence of actual confusion is often given considerable weight and preferred status. Some courts view evidence of actual confusion as “persuasive” evidence of likelihood of confusion.11 Other courts have used a variety of adjectival phrases to describe the utility of the presence or lack of evidence of actual confusion.12 Some decisions even give evidence of actual confusion status as a seen as representative examples of how others in the marketplace are likely to react.14 As put by one court: “[a]ctual confusion is . . . extremely probative of the likelihood of confusion, in that proof of confusion by actual customers is strong evidence that a hypothetical reasonable customer would also be deceived.”15 As another court explained: “[i]f enough people have been actually confused, then a likelihood that people are confused is established.”16 Not all evidence of actual confusion, however, is entitled to preferred or favored status. Rather, such evidence must first survive the particular level of scrutiny given to evidence of the types at issue by the jurisdiction in question.17 ¶10 Notwithstanding this seeming judicial preference, statements giving undue weight to evidence of actual confusion are not consistent with other judicial pronouncements regarding the infringement test as a multi-factor test or with other judicial pronouncements giving preferred status to other factors in that test. For example, a number of courts have stated that the similarity of the parties’ marks is the most important factor in determining likely confusion.18 Intuitively, that approach makes characterizing evidence of “past confusion” as “persuasive proof that future confusion is likely” but holding that reported instances of confusion were “negligible in light of extent of defendant’s activities and where “countervailing circumstances . . . lessen[ed] significantly the impact of any actual confusion which may have occurred”); AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 353 (9th Cir. 1979) (“[T]his factor is weighed heavily only when there is evidence of past confusion or, perhaps, when the particular circumstances indicate such evidence should have been available.”); Holiday Inns, Inc. v. Holiday Out in Am., 481 F.2d 445, 448-49 (5th Cir. 1973) (noting that plaintiff was attempting to use evidence of actual confusion to shift burden of proof to defendant but finding evidence of actual confusion to be insufficient). Mark D. Robins sense. Where the parties are competitors for the same type of goods, at least one court has gone one step further to opine that, in such cases, courts generally need not look beyond the marks at issue.19 Indeed, try as the courts may to escape the appearance of subjective comparisons between the parties’ marks by using a multi-factor test, nearly all judicial recitations of factors place the similarity of the marks first in the list of factors. Judges reason that, ultimately, it is the similarity of the marks that will drive consumer confusion. Yet, in instances where the defendant intended to trade on the plaintiff’s good will, that factor has also been recognized to have potential preeminent status.20 Courts in the Seventh Circuit have deemed three factors—similarity of the marks, the defendant’s intent, and actual confusion—to be the most important.21 In other cases, courts have found different subsets of the likelihood of confusion factors to be of paramount importance, with emphasis on the similarity of marks.22 Two commentators have deemed the most important factors to be the strength of the plaintiff’s mark, the similarity between the marks, and the defendant’s intent.23 In any event, actual confusion is but one of several factors relevant to determining the likelihood of confusion.

A trademark is among the most valuable pieces of that a company or individual owns. A trademark is words, symbols, and/or designs defining the owner’s product or service in the public imagination, differentiating it from competitors. If someone infringes upon a trademark, this may threaten the trademark holder’s source of income. Trademark holders seek to preserve their trademarks against another party’s infringement by cease-and-desist orders or, if such orders aren’t honored by the offender, trademark litigation. They will claim that trademark infringement—the other party’s unauthorized use of a trademark in relation to goods and/or services—stands to diminish and tarnish their own trademark’s value. An infringed-upon trademark holder will file a civil lawsuit in either state or federal court. Given that much trademark infringement occurs on a regional or national scale, trademark owners file more often in federal court. Trademark rights Unlike patent protections, which have a 15- or 20-year lifespan, trademark rights are potentially permanent. That said, a trademark owner must renew their trademark every 10 years, and the trademark must be in commercial use during that period in order to qualify for renewal. Should the trademark owner fail to renew in time, or if the trademark is no longer considered to be in general use, the United States Patent and Trademark Office (USPTO) may cancel the trademark. Upon cancellation, the owner may reapply for trademark registration. If the trademark isn’t in use at present, the owner must list when the trademark was last used in commerce, when its use will resume, and why the trademark currently isn’t in use. The trademark owner files a signed statement (“Declaration of Use,” or Section 8) with the USPTO, claiming that their trademark is being used in commerce. The trademark holder provides such information as: Goods and services for which the trademark is used; and Examples of the trademark in use (such as images of labels attached to goods for sale). Trademark owners also file a Declaration of Incontestability (Section 15). If the USPTO agrees the trademark is incontestable, various aspects of its registration can’t be challenged by third parties, such as the trademark’s validity. The statement includes affirmations that there are no pending or ongoing legal proceedings involving ownership of the trademark in the USPTO or in a court of law. What are the main claims in trademark infringement? In trademark litigation, a plaintiff typically makes one or both of the following claims concerning the . 1) Likelihood of confusion. The trademark holder argues that the similarity of its trademark and the defendant’s will confuse customers as to who is providing the products or services in question. To establish likelihood of confusion, a trademark holder lists such factors as: Proximity of competing trademarks (same geographic region, similar or same types of product/services, same marketing channels used); Similarity of competing trademarks, such as a design that suggests the plaintiff’s trademark or a name similar to the plaintiff’s; Testimony of consumer confusion (for example, a consumer claiming they purchased a trademark infringer’s product under the assumption they were buying from the trademark holder). 2) Trademark dilution. Here a trademark holder claims that the infringing party’s trademark will diminish the holder’s original trademark. Plaintiffs argue that a rival, unauthorized trademark, similar in image or name, reduces their trademark’s distinctiveness and thus dilutes its value to the trademark holder. If the infringer uses a similar trademark for a controversial purpose (such as in an adult-themed business), the plaintiff may argue such usage tarnishes the value of the original trademark by associating it in the public eye with controversial or undesirable activities. What happens if you infringe a trademark? If the trademark owner proves infringement in court, remedies include the following: An injunction preventing the defendant from using the trademark in the future; An order requiring the destruction or forfeiture of defendant’s infringing products; Monetary relief, including any profits the defendant made on the infringed products/services, to compensate business losses for the plaintiff. How much does it cost to litigate a trademark? Trademark infringement lawsuits that advance to trial are estimated to cost . What is the trademark prosecution process like? While trademark infringement proceedings vary from jurisdiction to jurisdiction, litigation typically takes at least a year, and often longer. Cases can be expedited if the plaintiff convinces a judge that the situation mandates it—claiming that a trademark infringement threatens an upcoming product rollout, for example. To support a trademark infringement claim in court, a plaintiff must prove: It owns the trademark in question. Typically it cites the trademark’s listing on the USPTO’s Principal Register, which gives it the legal presumption of validity and ownership of the trademark, and the exclusive right to use it nationwide in connection with goods or services listed in the registration. It has priority: that its trademark pre-dates the defendant’s trademark, which also may be registered with the USPTO. Further, the trademark owner isn’t the only party who can sue an infringer. Parties with exclusive and non-exclusive licenses to sell or distribute a trademarked product/service can also file a lawsuit. To have standing to sue, the person or entity must show a cognizable interest in the trademark infringement. Plaintiffs will sue for: Primary (or direct) infringement, claiming the defendant is using without their consent, in commerce, a reproduction, variation, imitation or copy of a registered mark in a way likely to confuse, and possibly deceive. Secondary infringement, claiming the defendant has induced another party to infringe upon the trademark, or contributed to the infringement in some manner. A defendant may counter these claims with various strategies in court, including: Challenging the claimed trademark. Defense counsel may petition to cancel the trademark with the USPTO’s Trademark Trial and Appeal Board. They may argue the trademark registration wasn’t valid (such as the trademark not being used in commerce) or that the defendant’s trademark had preceded it. Denying the alleged infringement. The defendant argues that its trademark is dissimilar enough from the plaintiff’s that no confusion or dilution will result from it. It may argue that the plaintiff’s trademark lacks sufficient distinction (like a Boston-based grocery store called Boston Grocery). Much depends on the plaintiff convincing the court that the trademark infringement in question has passed a “likelihood of confusion” test. Confusingly itself, each circuit court has a different set of criteria, ranging from the Second Circuit’s eight Polaroid factors to the Federal Circuit’s 13 DuPont factors. Despite the number of factors, the criteria is fundamentally similar across circuit courts. A trademark infringement will depend upon, among other factors: strength/distinctiveness of plaintiff trademark; proximity/competitiveness of plaintiff and defendant’s business; comparative quality of plaintiff and defendant’s products; evidence that the imitative trademark was adopted in bad faith; and sophistication of consumers in relevant markets, and evidence of confusion. Case studies of trademark litigation In (2016), coffee retailer Starbucks sued for trademark infringement. In 1995, Starbucks trademarked the brand name “Frappuccino” for its blended ice coffee drinks. The name was originally trademarked four years earlier by Boston’s Coffee Connection; however, Starbucks acquired the trademark upon buying Coffee Connection. In the mid-2010s, Obsidian (which operates under the name Coffee Culture) began offering the “Freddoccino,” a blended ice coffee drink. Upon learning this, Starbucks sued for infringement. Starbucks argued that the trademarks had multiple similarities: both are portmanteaus (two words combined to form a third); both have four syllables, starting with “Fr” and ending in “cino”; both evoke “a European-inspired cold coffee beverage.” Further, Starbucks argued that Obsidian served its drink in similar-sized cups with similar circular logos. As per its filing, Starbucks claimed “Obsidian’s conduct is diluting the distinctive quality of Starbucks’ famous FRAPPUCCINO® mark and is likely to confuse consumers into believing that Obsidian’s products are affiliated with, or are endorsed or approved by, Starbucks, when in fact they are not.” Starbucks claimed dilution of its Frappuccino trademark and that Obsidian had acted in bad faith. The case is still ongoing. Similarity of colors Another case involves the question of whether using a similar color as a competitor entails trademark infringement. In (2014), T–Mobile sued to stop Aio Wireless from using a plum color in promoting its consumer wireless telecommunications services and products. T-Mobile claimed that all major telecommunications companies employ color as a key part of their marketing campaigns (hence “Verizon red,” “Sprint yellow,” “T–Mobile magenta”). T-Mobile claimed Aio had infringed upon its trademark magenta when it used “a confusingly similar plum color.” In court, T-Mobile offered expert testimony that telecom companies have a long history of “leveraging” colors for their brands, and that in 2007, T-Mobile had registered the magenta mark on the Supplemental Register and subsequently registered further iterations incorporating the magenta mark with other elements identifying its telecommunications services. It demonstrated a 15-plus-year history of using magenta prominently in its print, in-store, and television promotions. Further helping T-Mobile’s case was the introduction of emails from Aio (and their parent company AT&T) executives which both acknowledged their strategic intention was to court T-Mobile customers while admitting that two brand colors could be too similar. Finding that “T–Mobile magenta has acquired secondary meaning in the marketplace” and that Aio’s “use of…its plum color will likely cause confusion between Aio and T–Mobile and that the loss of goodwill and potential customers poses a substantial threat of irreparable injury to T–Mobile,” the court ruled that Aio was barred from using the plum color in advertisements, websites, and stores in its marketing campaign and that it must destroy any previous advertisements/promotions using the plum color. Overlaps in intellectual property Trademarks are one segment of a broader category of intellectual property (IP). The other main segments of IP are patents, trade secrets, and copyrights. There are . Length of protection is a key one: have a two-decade lifespan, extend to the life of the creator plus 70 years, and as seen above, trademarks are potentially eternal depending on renewals, as are (until the owner divulges the information publicly). Trademarks also differ from patents in intention. Trademarks are meant to protect names, designs, and images used to distinguish the holder in the public marketplace. Patents, by contrast, may not ever be used in a product for sale—they are meant to protect the holder’s invention from others’ infringement. There can be overlap in litigation. In the case of T-Mobile above, if the company found that a competitor had violated its patent for a particular type of telecom device and was also using a similar color or logo in promoting it, T-Mobile would likely consider suing for both patent and trademark infringement.

4. Issues Current copyright laws are unsatisfactory about whether an ISP infringes a server's copyrights by facilitating its subscribers' extraction of preexisting mate- rials compiled in the server's electronic files. Current copyright law issues in- clude: (1) the unsettled duration requirement in the RAM-copy doctrine; (2) a fair use defense that is both time consuming to maintain and whose outcome is hard to predict; and (3) the doctrine of copyright misuse, which is also fact- specific and may be limited to antitrust claims. As described in Part I.A.l, the role of the duration requirement in the RAM- copy test is unsettled. How should courts decide what constitutes "a period of more than a transitory duration"?102 The scale of time in the digital world differs from that of the real world. Judging by the standard of computer time, just a few seconds may be sufficient for a copy to be fixed,103 while the word "transitory" may mean at least minutes or days in the real world.104 A fixed figure for all contexts seems impossible and unfeasible, because with the development of new technology any fixed threshold could soon become outmoded. But courts should not therefore forgo their duty to make a rational construction of the "copy" defi- nition. It may be reasonable to expect fair use to resolve this problem.105 The fair use defense is a defendant's final and most reliable fortress against a copyright infringement claim. The fair use doctrine, however, is an ex post standard.106 No party can know for sure whether the use qualifies as a fair use until the court reaches its decision. Moreover, this defense is fact-dependent, which means that most cases must go through a time and resource consuming discovery process and even trial before the court can resolve this issue. Of course, when "the parties dispute only ultimate conclusions to be drawn from an admitted set of facts, the court may resolve the fair use defense ... on a summary judgment."107 But defendants still bear a heavy burden of proving each factor enumerated in the statute.108 So the determination of fair use is a resource intensive endeavor and the outcome is hard to predict. Like the fair use doctrine, the defense of copyright misuse is fact-specific and therefore time consuming as well. But unlike the fair use defense, courts disagree about whether this doctrine should be applied independently from anti- trust laws.109 The scope of the copyright misuse doctrine "is not well understood in practice," either. 1 10 Thus, the doctrine of copyright misuse could pose more problems than those of the fair use defense. The uncertainties in the construction of the duration requirement and in the affirmative defenses thus necessitate a clearer and simpler standard in determin- ing the existence of infringement, at least when such a standard is feasible. The "transitory duration" element of the statutory definition of fixation may provide a standard for an important class of cases.