Patent Practitioner Ethics Rule Changes in USPTO

By Brent T. Yonehara

Several cases and proposed rule changes within that last few months harken changes to the professional ethics landscape for patent practitioners.

Patent Agent Privilege

Perhaps the biggest change in patent practitioner ethics is the proposed rule change for patent agent privilege, consistent with the 2016 Federal Circuit ruling in In re Queen’s University at Kingston, 820 F.3d 1287 (Fed. Cir. 2016).   In Queen’s University, the Federal Circuit enunciated, for the first time, a limited privilege protecting patent agent-client communications for the purposes of preparing and prosecuting patent applications.  Id. at 1302.  Fast forward ten months, and the USPTO recently annouced a proposed rule change, consistent with the Queen’s University ruling, governing patent agent privilege relating to discovery proceedings within the Patent Trial and Appeal Board (PTAB).  The USPTO’s proposed new rule § 42.57, whereby patent agents would be afforded a privilege similar to the attorney-client privilege, for any patent prosecution-related communication between the agent and client, the text which follows as:

(a) Privileged communications. A communication between a client and a domestic or foreign patent practitioner that is reasonably necessary or incident to the scope of the patent practitioner’s authority shall receive the same protections of privilege as if that communication were between a client and an attorney authorized to practice in the United States, including all limitations and exceptions.

(b) Definitions. The term ‘‘domestic patent practitioner’’ means a person who is registered by the United States Patent and Trademark Office to practice before the agency under section 11.6. ‘‘Foreign patent practitioner’’ means a person who is authorized to provide legal advice on patent matters in a foreign jurisdiction, provided that the jurisdiction establishes professional qualifications and the practitioner satisfies them, and regardless of whether that jurisdiction provides privilege or an equivalent under its laws.

Comments were due December 19, 2016, and the final rule change is forthcoming.  This would be a welcome addition to patent practice ethics, and provide a needed dose of uniformity between all registered patent practitioners, attorneys and agents alike.

Duty of Disclosure

Another proposed rule change to amend the duty of disclosure was published October 28, 2016.  This rule change was meant to bring USPTO practice in line with the Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011), ruling by the Federal Circuit.  In Therasense, the Federal Circuit raised the standard for a finding of inequitable conduct in order to “cure the problem of overdisclosure of marginally relevant prior art to the [US]PTO.”  Id. at 1291.  The Federal Circuit went on to state that only a “but-for” materiality would support a finding of inequitable conduct.  Id.

Comments were due on December 27, 2016, and were generally negative and widely divergent.  BIO specifically believed the duty of discloure should be abolished.  On the other hand, IPOA, AIPLA, and NAPP all favored a change to conform with the Therasense ruling.  More comments are anticipated to occur before a final rule is enacted.

Based on these two proposed rule changes, there appears to be major changes in the ethical landscape for patent practitioners in the near months to come.

ON-DEMAND CAR SERVICES AND PATENTS: A REVIEW

By Brent T. Yonehara

INTRODUCTION

            The growth of on-demand car sharing and ridesharing companies has become a phenomenon as a popular form of transportation in high-density urban areas.[1] This is especially true in San Francisco. Each company offers slight variants of the car sharing or ridesharing concepts. In car sharing, a car owner makes is car available for use by others within a community.[2] This is commonly understood as peer-to-peer sharing, and usually involves a fee.[3] In ridesharing, a car owner drives his car, sharing space within the car to other passengers to a specified destination.[4] This also involves some sort of fee arrangement.[5] As such, it seemed appropriate to review a selection of these companies’ intellectual property, and specifically patent, portfolios as to how their IP support each company’s business model.

OVERVIEW OF COMPANIES

            The following are five car share or rideshare tech startups located in San Francisco. There are a number of other car share companies – for example, City CarShare, the local non-profit which was the first car share company in San Francisco when it was founded in 2001[6]; and ZipCar, a for-profit car share company founded in 2000 and acquired by Avis Co. in 2013, headquartered in Boston, with a presence in San Francisco.[7] These are not discussed at length in this article since these companies have a lengthier legacy in the on-demand car service ecosystem. This article will focus on the startups in the industry.

Uber Technologies Inc.

            Uber, the behemoth of all ride shares, was founded in 2009, is based in San Francisco.[8] It recently raised $1.2 billion in funding,[9] and has a valuation of $50 billion.[10] The company’s business model uses a mobile-based app to link riders with driver-owned cars.[11] All aspects handled through the app, including GPS location, payment, and feedback.[12] It has recently been in the headlines with issues revolving around its drivers’ employment status,[13] credibility and hiring practices,[14] and controversial surge pricing.[15] The company is financed by several venture capital firms.[16]

Sidecar Technologies, Inc.

            Sidecar is a mobile-based app which connects riders with driver-owned cars (“peer-to-peer”), but unlike other car share or rideshare companies, allows the rider to enter price he is willing to pay.[17] Sidecar is based in San Francisco and was founded by Sunil Paul and Jahan Khanna in 2012.[18] It is available in 10 markets and financially backed by a number of well-known venture capital firms.[19]

Lyft Technologies, Inc.

            Utilizing a mobile-based app, a user-passenger can rideshare with a driver-owned car.[20] Lyft was founded in 2011 and headquarters in San Francisco, and is now one of the largest rideshare companies in the country.[21] It has three services and runs in 65 markets.[22] It has raised an astonishing $862.5 million in seven rounds of funding, as of May 2015.[23]

Getaround, Inc.

            A car sharing startup founded in 2013 and based in San Francisco, Getaround, Inc.’s business model is based on privately-owned cars being rented by others through a mobile-based app.[24] Getaround’s popularity resulted in the recent partnership with the SF Municipal Transportation Agency to allow 450 parking spaces around the city to be used for members at a discounted rate.[25]

RelayRides, Inc.

A car sharing startup founded in 2009 and headquartered in San Francisco, RelayRides, Inc. is similar to the business model of Getaround.[26] RelayRides recently raised an astonishing $52.5 million in financing.[27] The company claims far less overhead than traditional car share companies like Zipcar because its capital expenditures are minimal, resulting in a “superior” product.[28]

ANALYSIS

On-Demand Car Service Patents

            Uber does not have any issued utility patents.[29] However, Uber does have one design patent, D724,620, for an ornamental display screen GUI.[30] Uber also has nine published patent applications.[31] Sidecar has one issued patent, 6,356,838, for a “System and Method for Determining an Efficient Transportation Route,” issued to its co-founder, Sunil Paul, in 2002.[32] Sidecar does not have any published patent applications.[33] Furthermore, Lyft, Getaround, and RelayRides neither have any issued patents nor published patent applications.[34] Since all five on-demand car service companies are private, two interesting investors were revealed: General Motors Ventures and Google Ventures. Google Ventures has invested in Uber and Sidecar.[35] General Motor Ventures invested in RelayRides.[36] Google owns 871 issued patents or published patent applications focused on passenger/driver matching, vehicle routing, navigation, and mobile notifications.[37] General Motors owns 164 issued patents related to car services, including navigation, communications, mobile programming, and vehicle tracking.[38]

Alice Test

            The Supreme Court placed limitations on what can be construed as patentable subject matter in Alice Corp. v. CLS Bank Int’l.[39] Citing Mayo, the Court elucidated, as best as it could, a two-prong test to determine whether a claim is patent-eligible: first, if the claim at issue is directed to a patent-ineligible concept (e.g., process of nature, abstract idea, or law of nature), and second, if yes, determine if there is something significantly more to the claim than the patent-ineligible concept to make it patent-eligible subject matter.[40]

The oldest relevant issued patent is Sidecar’s ‘838 patent originally issued to Sunil Paul.[41] There are six independent claims. Five of these claims go to methods for finding an “efficient transportation route.”[42] This concept of “efficient transportation route” goes back hundreds, even thousands, of years, like when Columbus tried to find an efficient route to India,[43] or even when the ancient Greeks were discovering efficient trading routes throughout the Mediterranean.[44] Paul’s patent is really just an abstract idea. For example, Claim 1 reads:

  1. A computer-implemented method for determining an efficient transportation route comprising:

compiling travel data over one or more travel segments, said travel data transmitted from one or more transportation vehicles traveling over said travel segments;

receiving positional data associated with a transportation request, said positional data including an origin and a destination; and

providing a driver of a vehicle with a first efficient route from said origin to said destination using said travel data, said first efficient route including one or more of said travel segments,

wherein said destination is a pickup point of a passenger submitting a transportation request and said origin is a current position of said vehicle.[45]

This claim, when reduced to its basics, is just a method to find a more efficient transportation route, juxtaposed to modern times. Additionally, simply attaching it to a computer system is not enough to make it significantly more than just an abstract idea.[46] As such, it would be unlikely that Paul’s patent would survive a §101 invalidity challenge.[47] It was curious to note the lack of patents, or even pending patent applications, among the car service companies, and initially the thought was that Sidecar’s early patent would be enough to preempt others from entering that space. However, upon closer analysis of the ‘838 patent, it seems that Sidecar’s patent strategy could be undermined given the recent Alice decision.

Uber does not have the same issues as Sidecar in that it does not have any veritable patents or patent applications that could pass muster under the Alice regime. One recent patent application relates to its surge-pricing, “Enabling a User to Verify a Price Change for an On-Demand Service.[48] Claim 1 recites:

  1. A method for enabling a user to verify a price change for an on-demand service on a computing device, the method being performed by one or more processors and comprising:

determining a real-time price for providing the on-demand service to the user;

determining when the real-time price is equal to or exceeds a threshold price; and

in response to a request from the user for the on-demand service when the real-time price is equal to or exceeds the threshold price, providing an intermediate interface that the user is to correctly respond to before a service request can be transmitted to a service system.[49]

This method is really just a process which goes to the abstract idea of supply and demand, a basic economic theory espoused by Adam Smith.[50] While it could be argued that there is a computer system automating the process, it really does nothing to be “significantly more” than just an abstract idea. As such, Uber’s surge-pricing patent application would probably not be issued as a patent, especially in light of Alice.[51] It should be noted with caution, however, that Federal Circuit post-Alice decisions are still unsettled on patent eligibility; many more decisions need to be handed down before a concrete landscape develops on what is patentable and what is not.[52]

CONCLUSION

            On-demand car services are currently extremely popular. Intellectual property has always been used as an effective asset by many tech startups. However, this particular space is devoid of major patent estates among these car service companies. The reason may partly lie in the relative newness of the companies (all surveyed in this article were only formed within the last five-to-six years), but also partly due to the post-Alice world of software patents. The challenge for these companies, in order to remain competitive not just with each other but with the bigger tech companies like Google and Amazon, is to enhance their patent portfolios, vis-a-vis Alice.

[1] See generally Katherine Boehret, Baby, You Can Drive (or Ride in) My Car: the Basics of Car Sharing and Ride Sharing, The Wall Street Journal (viewed Nov. 12, 2013, 6:43 PM ET).

[2] See RelayRides Blog, What is the Difference Between Car Sharing and Ride Sharing? (March 15, 2013). A further delineation between ridesharing and carpooling, which is a mostly free and ad-hoc system of sharing of a car ride, should be made, and an even further delineation between ridesharing and taxi service. Id.

[3] Id.

[4] Id.

[5] Id.

[6] See About Us, City CarShare.org (viewed May 6, 2015).

[7] See Zipcar, CrunchBase (viewed May 6, 2015).

[8] See About, Uber (viewed May 6, 2015); Uber, CrunchBase (viewed May 6, 2015).

[9] See Karen Gullo, Uber and Lyft Drivers May Have Employee Status, Judge Says, Bloomberg Business (January 30, 2015, 2:46 PM PST).

[10] See Pui-Wing Tam & Michael J. de la Merced, Uber Fund-Raising Points to $50 Billion Valuation, The New York Times (May 9, 2015).

[11] See Uber, at https://www.uber.com/. In full disclosure, this author utilizes Uber’s services on an ongoing basis, but no solicitation or endorsement between Uber and the author has been made for a review of Uber’s ridesharing services.

[12] Id.

[13] See Gullo, supra note 5.

[14] See, e.g., Rebecca Fishbein, TLC: Uber Driver Accused of Assaulting Passenger Still Has His Cabbie License (May 2, 2015, 3:30 PM) (reporting on two criminal incidences involving Uber drivers, both which involved a female passenger allegedly assaulted by a male driver); Connor Skelding, 12-year-old Struck and Killed by Uber-affiliated Car, Capital (May 6, 2015, 9:06 PM) (reporting an accident involving an Uber driver striking a boy).

[15] See Chris Isidore, Uber Seeking Patent on Surge Pricing, CNNMoney (December 22, 2014, 12:41 PM ET).

[16] See About, supra note 8. Google Ventures is an investor. Id.

[17] See Our Story, Sidecar, at https://www.side.cr/about/ (viewed May 6, 2015).

[18] Id.

[19] Id. Google Ventures is one of its investors. Id.

[20] See About, Lyft (viewed May 6, 2015).

[21] See Romain Dillet, Lyft Wants to Provide the Perfect Transportation Option for Everyone, Techcrunch (May 5, 2015).

[22] Id.

[23] See Lyft, CrunchBase (viewed May 8, 2015).

[24] See About, Getaround (viewed May 6, 2015). See also Getaround, Crunchbase (viewed May 6, 2015).

[25] See Megan Rose Dickey, Getaround is Helping San Francisco Fix its Parking Problem, Business Insider (April 13, 2014, 11:41 AM).

[26] See About, RelayRides (viewed May 6, 2015).

[27] See Sean O’Neill, RelayRides Revs Up Car-Sharing, Fueled by $52M in Financing to Date, TNooz (January 12, 2015).

[28] Id.

[29] Search conducted in USPTO Patent Full-Text and Image Database (searched May 8, 2015).

[30] See USPTO Patent Full-Text and Image Database, (search criterion “Uber Technologies” in ‘Assignee Name’) (searched May 8, 2015).

[31] See USPTO Patent Application Full Text and Image Database, (search criterion “Uber Technologies” in ‘Assignee Name’) (searched May 8, 2015).

[32] See USPTO Patent Full-Text and Image Database, (search criterion “Paul, Sunil” in ‘Inventor Name’) (searched May 8, 2015).

[33] Search conducted in USPTO Patent Full-Text and Image Database (searched May 8, 2015).

[34] Search conducted in USPTO Patent Full-Text and Image Database (searched May 8, 2015).

[35] See Uber Investors, CrunchBase (viewed May 8, 2015); Sidecar Investors, CrunchBase (viewed May 8, 2015).

[36] See RelayRides Investors, CrunchBase (viewed May 8, 2015).

[37] Maulin Shah, Uber and Sidecar Patent Portfolios Lead the Ridesharing Industry, EnvisionIP (March 4, 2014, 1:32 PM).

[38] See USPTO Patent Full-Text and Image Database, (search criterion “General Motors” in ‘Assignee Name’) (searched May 8, 2015).

[39] 573 U.S.___ (2014) (slip op.).

[40] See Alice Corp. v. CLS Bank Int’l, 573 U.S. at 7 (slip op.). See also Dennis Crouch, Data Structures Patent Ineligible, Patently-O (July 23, 2014) (there is an initial “building block” of the patent-ineligible subject of the claim, and the “something more” aspect of whether the claim recites any additional inventive feature that goes beyond the mere abstractness of the idea).

[41] See supra note 32.

[42] See Sunil Paul, U.S. Patent No. 6,356,838 B1 (iss’d Mar. 12, 2002), at 11-14.

[43] See Dagmar Wernitznig, Europe’s Indians, Indians in Europe, University Press of America, Inc. (2007), p. v.

[44] See Heather Whipps, How Ancient Trade Changed the World, LiveScience (Feb. 17, 2008, 07:00 PM ET).

[45] See U.S. Pat. No. 6,356,838 B1 (Paul), at 11.

[46] See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1368 (Fed. Cir. 2011) (simply reciting “an unpatentable mental process for collecting data…” did not “become patentable by tossing in references to [I]nternet commerce.”). See also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 719 (Fed. Cir. 2014) (“…use of the Internet is not sufficient to save otherwise abstract claims from ineligibility under §101.” (citing CyberSource, 654 F.3d at 1370.)).

[47] See Jeff John Roberts, As Uber, Lyft, and Sidecar Count Patents, Warning Signs Ahead, GigaOm (Jan. 26, 2015, 6:00 AM PDT) (“Sidecar’s swagger with its 2002 patent could be a bluff, given that Uber or another defendant may have a good chance to invalidate it under patent law doctrines of obviousness or ineligible subject matter”).

[48] U.S. Pat. Appln. Pub. No. 2013/0268406 A1 (Oct. 10, 2013).

[49] See supra, at 10.

[50] See Henry Carter Adams, Outline of Lectures Upon Political Economy (1881), at 38 (“…the market price of very particular commodity is regulated by the proportion between the quantity which is actually brought to market, and the demand of those who are willing to pay the natural price of the commodity….”); Thomas Power, Are Government Laws Consistent with the Laws of Supply and Demand, J. School R.E. & Constr. Econ. 1, 4 (2007) (“…prices guide. . . individual decision makers to reach outcomes that maximize the welfare of society as a whole….”).

[51] See Roberts, supra note 47 (“’This application is really seeking to claim the basic idea of pricing and service, which is a concept Adam Smith discussed 200 years ago’.”).

[52] See Dennis Crouch, Federal Circuit Falls in Line: Supporting Strong Limits on Patent Eligibility, Patently-O (Sept. 3, 2014) (noting that the Federal Circuit has avoided delineating a clear test for abstract ideas).

BLURRED LINES OF MUSICAL COPYRIGHT INFRINGEMENT: THE “BLURRED LINES” CASE

By Brent T. Yonehara

Introduction

On March 10, 2015, a federal jury found singers Robin Thicke and Pharrell Williams infringed the copyright of Marvin Gaye’s song “Got to Give It Up.”[1] The jury verdict is the first significant copyright infringement ruling involving songwriting and music since 1994.[2] Almost immediately, criticism of the ruling appeared on the Web and social media, decrying the decision as stifling creativity and limiting singers and songwriters the ability to freely develop their craft.[3] The criticism, however, is somewhat a gut reaction; the actual judgment lies in the rather convoluted nature of copyright legal analysis. The case has ignited a major storm in the music world: when does homage and influence give way to creating a work so substantially similar to another that it constitutes copyright infringement?[4]

Background

Pharrell Williams is a Grammy-winning singer and songwriter, focused on R&B, rap, and pop.[5] Robin Thicke is a pop singer best known for deep R&B vocal skills.[6] “Blurred Lines” was one of the pair’s collaborations, and was the biggest song hit of 2013, with nearly $11 million in revenue and royalties.[7]

Marvin Gaye was a highly influential soul and R&B singer known for bringing sophistication to soul music by incorporating social, political, and personal issues into the music.[8] The estate was represented in the court case by Nona and Frankie Gaye, two of Marvin Gaye’s children.[9] Gaye’s song “Got To Give It Up” was recorded in 1977; Pharrell and Thicke recorded “Blurred Lines” in 2013.[10]

Analysis

In order to prevail in a copyright infringement claim, the plaintiff must show 1) plaintiff was owner of a valid copyright and 2) protected elements of the copyrighted work were copied by the defendant.[11] Assuming proper copyright ownership, copying can be shown by either direct or circumstantial evidence.[12] Proving copyright through circumstantial evidence involves 1) defendant’s access to the copyrighted work, and 2) substantial similarity between the copyrighted work and the infringed work.[13] Finally, the 9th Circuit applies a two-prong test to determine whether an infringing work is substantially similar to a copyrighted work is highly fact-based and case-specific.[14] First, an objective “extrinsic” test is applied, which is analyzed by the judge relying on expert testimony, primarily musicologists to establish substantial similarity.[15] Second, a subjective “intrinsic” test is analyzed by the jury during trial deliberations.[16]

Access

Demonstrating access is shown by proving defendant had access to plaintiff’s copyrighted work through actual knowledge or reasonable access to plaintiff’s work.[17] Here, Thicke’s own trial testimony and the court record works against their defense.[18] Court statements show that both Pharrell and Thicke in various interviews referenced Gaye during the songwriting process.[19] Pharrell admitted he was “trying to pretend” to be Gaye while writing “Blurred Lines,” while Thicke admitted he suggested to Pharrell “writing something like ‘Got to Give It Up’.”[20] Additionally, Thicke testified he lied in other interviews and various sworn legal documents that he tried claiming credit for writing “Blurred Lines.” [21] In Thicke’s own sworn deposition during discovery he admitted to “being high on Vicodin and alcohol when [he] showed up at the studio” to discuss recording ‘Blurred Lines’.”[22] In short, access was essentially a conceded element of the legal analysis, given to the success of Gaye’s original “Got to Give It Up” and the court record.[23]

Substantial Similarity

Substantial similarity is the second prong for copyright infringement. Each Court of Appeals circuit has its own analysis for determining substantial similarity. The “Blurred Lines” case was filed in federal district court in Los Angeles, or the Central District of California, which lies in the 9th Circuit Court of Appeals.[24] The 9th Circuit has an “extrinsic/intrinsic” test, which if fact-intensive and multi-layered with both lay and expert witness testimony.[25] Further, substantial similarity is not required in the event of direct or literal infringement (i.e., whole plagiarism of the copyrighted work).[26] Additionally, the 9th Circuit’s “Inverse Ratio” rule is analyzed where the higher the defendant’s access to the copyrighted material, the lower the similarity required to show infringement occurred.[27]

Before trial, the judge had already ruled that the sound recording for “Got To Give It Up” could not be heard in court for the legal reasoning that sound recordings were not copyright-protectable material until 1996 – nineteen years after the song was released.[28] As a result, only the lead sheets – the stripped-down instrumental documentation of the sound recordings – could be used in the court proceedings.[29] The side-by-side testimony revealed that there were similarities in the “signature phrase” – the opening lyrics and chorus opener – between the two songs.[30] Specifically, the opening Afro-beat base of A and E chords, and lyrics of “I used to go out to parties” in Gaye’s “Got To Give It Up” and “I’m gon’ take a good girl” in “Blurred Lines” were “stunning” and “highly unusual” in melodies.[31] Further, the melisma – notes, words, or phrases sung over several notes – of “girl” and “dancing” were found similar in both songs.[32] Still further, the so-called “hook” phrases of “Keep on dancin’” in “Got To Give It Up” and “Take a good girl” in “Blurred Lines” return immediately after the bar line, in reference to the timing of the key words of the song.[33] In summary, both songs shared striking similarities that a passing observer would have noticed the infringing copy as being derived from the original version which was ultimately the prevailing reason the jury found Pharrell and Thicke liable for copyright infringement.

Conclusion

The court action which culminated in the jury verdict against Thicke and Pharrell actually started with them when they filed a declaratory judgment action in August 2013.[34] Early on in the litigation, a media defense of Pharrell and Thicke by stating:

Look, technically it’s not plagiarized. It’s not the same chord progression. It’s a feeling. Because there’s a cowbell in it and a Fender Rhodes as the main instrumentation – that still doesn’t make it plagiarized. We all know it’s derivative. That’s how Pharrell works. Everything that Pharrell produces is derivative of another song – but it’s a homage.[35]

However, the defense is, in fact, copyright infringement. Copyright ownership includes rights to create derivative works. Pharrell’s and Thicke’s own argument is undermined when they claim that they did not commit copyright infringement if they initiated an action to seek judicial notice that they did not, in law, commit copyright infringement. By its nature, by filing for declaratory relief, Pharrell and Thicke must have known at some innate level that their actions would be perceived as being unlawful.

This is a very difficult case, and it should be noted that Pharrell and Thicke can appeal directly with the 9th Circuit. Copyright infringement, and specifically the “substantial similarity” test, with three or four tests spread among the thirteen circuits, needs clarity and simplicity which militates for further Supreme Court intervention.[36]

* Cite as Brent Yonehara, Blurred Lines of Musical Copyright Infringement: the “Blurred Lines” Case, Yonaxis IP Blog, found at http://yonaxis.blogspot.com/2015/03/blurred-lines-of-musical-copyright.html (March 13, 2015).

[1] See Victoria Kim, Randy Lewis and Ryan Faughnder, ‘Blurred Lines’ Ruling Stuns the Music Industry, L.A. Times, found at http://www.latimes.com/local/lanow/la-me-ln-blurred-lines-ruling-roiled-the-music-industry-20150310-story.html (March 11, 2015, 6:00 AM).

[2] See Ben Sisario & Noah Smith, ‘Blurred Lines’ Infringed on Marvin Gaye Copyright, Jury Rules, The New York Times, found at http://www.nytimes.com/2015/03/11/business/media/blurred-lines-infringed-on-marvin-gaye-copyright-jury-rules.html?_r=0 (March 10, 2015).

[3] See, e.g., Randall Roberts, ‘Blurred Lines’ Verdict a Blow to Creative Expression, L.A. Times, found at http://www.latimes.com/entertainment/music/posts/la-et-ms-blurred-lines-verdict-reaction-20150310-column.html (March 10, 2015, 5:50 PM) (criticizing the Blurred Lines verdict by stating “[p]op music is at its base a form of creative theft….”); Rebecca Hawkes, Blurred Lines vs Got to Give it Up: Twitter Reaction, The Telegraph, found at http://www.telegraph.co.uk/culture/music/music-news/11463368/Blurred-Lines-vs-Got-to-Give-it-Up-Twitter-reaction.html (March 11, 2015, 8:41 AM GMT) (cataloging reaction by Twitter users to the verdict, which seemed fairly equal in for and against).

[4] In full disclosure, this author owns copyrights in performing arts and source code.

[5] See Andy Kellman, Biography: Pharrell Williams, All Music, found at http://www.allmusic.com/artist/pharrell-williams-mn0000275757/biography (accessed March 11, 2015).

[6] See Andy Kellman, Biography: Robin Thicke, All Music, found at http://www.allmusic.com/artist/robin-thicke-mn0000238686/biography (accessed March 11, 2015).

[7] See Kim, Lewis & Faughnder, supra note 1.

[8] See Jason Ankeny, Biography: Marvin Gaye, found at http://www.allmusic.com/artist/marvin-gaye-mn0000316834/biography (accessed March 11, 2015).

[9] See Sisario & Smith, supra note 2.

[10] See Austin Siegemund-Broka, How Similar is ‘Blurred Lines’ To A 1977 Marvin Gaye Hit?, The Hollywood Reporter, found at http://www.hollywoodreporter.com/thr-esq/how-similar-is-blurred-lines-778635 (March 3, 2015 5:00 AM PST).

[11] See Emily Miao & Nicole E. Grimm, The Blurred Lines of Copyright Infringement of Music Even Blurrier as the Robin Thicke v. Marvin Gaye’s Estate Lawsuit Continues, MBHD IP Snippets, found at http://www.mbhb.com/pubs/xpqPublicationDetail.aspx?xpST=PubDetail&pub=271#_ftn37 (Winter 2014); Feist Publications, Inc. v. Rural Tel. Serv. Co., Inc., 499 U.S. 340, 361 (1991).

[12] Straughter v. Raymond, U.S.D.C. Case No. CV 08-2180-CAS, 2011 WL 3651350 at *8 (C.D. Cal. Aug. 19, 2011).

[13] Swirsky v. Carey, 376 F.3d 841, 844 (9th Cir. 2004).

[14] See Miao & Grimm, supra note 9.

[15] Three Boys Music Corp. v. Bolton, 212 F.3d 477, 485 (9th Cir. 2000).

[16] Smith v. Jackson, 84 F.3d 1213, 1218 (9th Cir. 1996).

[17] See Jason v. Fonda, 526 F. Supp. 774, 776 (C.D.Cal. 1981), aff’d, 698 F.2d 966 (9th Cir. 1982).

[18] See Sisario & Smith, supra note 2.

[19] See Kim, Lewis & Faughnder, supra note 1.

[20] Id.

[21] See August Brown, Robin Thicke on ‘Blurred Lines’: ‘I was high on Vicodin and alcohol’, L.A. Times, found at http://www.latimes.com/entertainment/music/posts/la-et-ms-robin-thicke-blurred-lines-deposition-high-vicodin-alcohol-20140915-story.html (September 15, 2014, 7:19 PM).

[22] Id.

[23] Id.

[24] See Miao & Grimm, supra note 9.

[25] Id.

[26] See Range Road Music, Inc. v. East Coast Foods, Inc., 668 F.3d 1148, 1154 (9th Circ. 2012).

[27] Straughter, at *13.

[28] See Siegemund-Broka, supra note 10.

[29] Id.

[30] Id.

[31] Id.

[32] Id.

[33] Id.

[34] See Carrie Battan, Robin Thicke, Pharrell and T.I. Sue Marvin Gaye’s Family and Funkadelic Over “Blurred Lines”, Pitchfork, found at http://pitchfork.com/news/51936-robin-thicke-pharrell-and-ti-sue-marvin-gayes-family-and-funkadelic-over-blurred-lines/ (August 13, 2013, 10:36 AM EDT).

[35] See Anna Silman, Robin Thicke’s “Blurred Lines” Clusterf***: A Very Brief History, Salon, found at http://www.salon.com/2015/02/25/robin_thickes_blurred_lines_clusterf_a_very_brief_history/ (February 25, 2015, 5:24 PM UTC) (quoting Questlove in his defense of Pharrell’s songwriting of “Blurred Lines”).

[36] See, e.g., Amy B. Cohen, Masking Copyright Decisionmaking: The Meaninglessness of Substantial Similarity, 20 U.C. Davis L. Rev. 719, 753 (1987) (criticizing the 9th Circuit approach to substantial similarity as a flawed attempt to resolve issues with the traditional approach); Sergiu Gherman, Harmony and its Functionality: A Gloss on the Substantial Similarity Test in Music Copyrights, 19 Fordham Intell. Prop. Media & Ent. L.J. 483, 492 (2008) (arguing a new simplistic test of harmonic functionality); Timothy C. Smith, Towards A Consistent Test for Substantial Similarity Regarding Infringement of Copyrighted Aspects of Computer Programs, 22 Golden Gate U. L.R. 431 (1992) (arguing for a new standardized test for substantial similarity, albeit limited to copyrighted computer programs).

ALICE IN WONDERLAND: SOFTWARE PATENTS IN LIGHT OF ALICE CORP. v. CLS BANK INT’L

By Brent T. Yonehara

INTRODUCTION

Alice Corporation v. CLS Bank International was recently decided by the U.S. Supreme Court in the closing days of its 2013-2014 term.[1] In Alice, the Supreme Court found that patent claims that do not “transform” from patent-ineligible subject matter to a patent-eligible invention were abstract ideas outside the scope of 35 U.S.C. §101.[2] News has been mostly favorable of the Alice decision.[3] However, it has not been unanimous. Critics’ comments of the Alice ruling range from indignant[4] to excoriating.[5] This paper examines the Alice decision by analyzing its new test to determine whether software claims are patent-eligible subject matter.

DISCUSSION

Analyzing Alice

Software patents, and business methods, may occupy a demilitarized zone of questionable claims construction.[6] The Supreme Court has long held that “laws of nature, natural phenomena, and abstracts ideas are not patentable.”[7] In Alice, The Supreme Court begins its analysis by reviewing its previous ruling in Mayo v. Prometheus. [8] In Mayo, patents involving therapeutic drugs were at issue.[9] Independent claim 1, a method claim, was directed toward the drug and dosage administration[10] and the process in which the thiopurine compounds metabolize to produce the therapeutic result.[11] The Court held that this process was nothing more than a law of nature, and thus not patentable.[12] The Mayo Court further enunciated a two-step test to determine patentability.[13] This test was then applied by the Alice Court to determine whether software patent claims are patentable.[14]

The first question is whether the claims at issue are directed toward an unpatentable subject matter.[15] If the answer is “yes,” then the second question is whether taking the claim individually and “as an ordered combination” produce any other elements to transform the claim into a patentable subject matter.[16]

The Alice method claims in U.S. Patent No. 5,970,479 (‘479) at issue were directed toward intermediated settlement.[17] The Court found that the Alice’s claims were only abstract ideas.[18] Additionally, the Court found that these claims failed to transform the mere idea into something patentable.[19] The claims merely required rudimentary computer implementation, which was not enough “transformation” to a patent-eligible invention.[20] The Court noted that the introduction of a computer did not make the invention “substantial and meaningful.”[21] Furthermore, the Court observed that the functions performed by a computer during each step of the method claim’s process were only “conventional,” and taken “as an ordered combination” did not add anything that “[was] already present when the steps [were] considered separately.” [22] As such, the Court invalidated the Alice method claims.[23]

Analyzing the Alice Aftermath

So, what is the practical effect of Alice? Certainly, the standard for what is patentable software and what is unpatentable ideas has gotten higher.[24] The software industry has been mostly exuberant, if not cautious, about the result from Alice. One commentator sees the Alice patents invalidation as necessary to “ridding the American patents of poor software, business process, and genetic patents.”[25] Another commentator seemed effusive since rendering some software patent claims as non-patentable ideas would be an additional weapon in the industry’s battle against patent trolls.[26] (I note, however, an errata in this commentator’s article – he noted that some in the industry want to move toward having software trademarked. Software, of course, cannot be trademarked, per se, although the trade name could be. The source code has long been protected as copyrightable media of expression.)[27]

Legal experts and commentators have been less than complimentary to the high court’s decision-rendering. One commentator labels the decision as “intellectually bankrupt,” since it makes issuing software patent claims (method, system, or computer-readable medium) more difficult.[28] A former United States Patent and Trademark Office (USPTO) director expressed disappointment because Alice did not provide needed clarity in determining patent-eligible software claims.[29] A law professor commentator, though, had the exact opposite reaction, noting that Alice provided a clearer path than the Bilski case enunciated with business methods.[30]

One thing of interest to note is the reaction from Australia’s high-tech community, and the intellectual property office, in particular. Since the now invalidated ‘479 patent claims priority to Australian patents, and which also provide priorities for European, Japanese, Chinese, Canadian, and New Zealand patents,[31] the Supreme Court’s invalidation could spur cancellation or invalidation proceedings in these respective jurisdictions.

CONCLUSION

Alice brought some finality, and for some, a little more certainty, for software patents after the Federal Circuit’s mess in the appellate ruling from over a year ago.[32] Like the fictional Alice, who fell into a world of amazement and wonder, the Alice ruling has dropped upon the high tech world a bit of both, as well. Some may be amazed (or, for others, dazed) by what is now plausible – a test which can determine what software claims are patentable and what are not. Still others will wonder about the day when software can be deemed patentable at all, or not. Until that day arrives, it keeps the rest of us in the IP world occupied with our day jobs.

By Brent Yonehara. Originally published at http://yonaxis.blogspot.com/2014/06/alice-in-wonderland-software-patents-in.html (June 26, 2014).

[1] See Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S.___ (2014) (slip op.), available at http://www.supremecourt.gov/opinions/13pdf/13-298_7lh8.pdf.

[2] Id. at___ (slip op. at 5-6).

[3] See, e.g., Julie Samuels, Patent Trolls Are Mortally Wounded, Slate, at http://www.slate.com/articles/technology/future_tense/2014/06/alice_v_cls_bank_supreme_court_gets_software_patent_ruling_right.html (June 20, 2014, 1:47 PM) (stating Alice Corp. furthers the goal of moving away from poorly-drafted software patents); Business Software Alliance, Supreme Court’s CLS Bank Decision Is a Victory for Innovation, Says BSA, at http://www.bsa.org/news-and-events/news/2014/june/06192014clsdecision (June 19, 2014) (noting the Court came to the right decision in Alice).

[4] See Free Software Foundation, US Supreme Court Makes Right Decision to Nix Alice Corp. Patent, but More Work Needed to End Software Patents for Good, at https://www.fsf.org/news/fsf-statement-on-alice-corp-v-cls-bank (June 19, 2014, 4:55 PM) (“Software patents are a noxious weed that needs to be ripped out by the roots.”).

[5] See Gene Quinn, SCOTUS Rules Alice Software Claims Patent Ineligible, IPWatchdog Blog, at http://www.ipwatchdog.com/2014/06/19/scotus-rules-alice-software-claims-patent-ineligible/id=50120/ (June 19, 2014, 6:44 PM) (commenting, unapologetically, that Alice was naively written and is an “asinine” decision.).

[6] See Daniel Fisher, Alice Corp. Patent Ruling Is Good For Software Firms, Bad News For Trolls, Forbes, at http://www.forbes.com/sites/danielfisher/2014/06/19/patent-lawyers-software-companies-like-alice-corp-ruling-trolls-not-so-much/ (June 19, 2014, 2:39 PM) (inferring, with some reluctance, that Alice was correct but currently business methods are tenuously patentable subject matter.).

[7] See Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.___ (2013) (slip op., 11).

[8] See Mayo Collaborative Services v. Prometheus Labs., Inc., 566 U.S.___ (2012) (slip op., 8-10), available at http://www.supremecourt.gov/opinions/11pdf/10-1150.pdf.

[9] Id. at ___ (slip op., 4-5).

[10] Id. at___ (slip op., 5-6).

[11] Id. at___ (slip op., 8).

[12] Id. at___ (slip op., 8-9).

[13] Id.

[14] See Alice, supra note 1, at___ (slip op., 7).

[15] Id.

[16] Id.

[17] See CLS Bank Int’l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1285, 106 U.S.P.Q.2D 1696 (Fed. Cir. 2013) (en banc). Method claim 33 of Patent No. 5,970,479 states: “A method of exchanging obligations as between parties, each party holding a credit record and a debit record with an exchange institution, the credit records and debit records for exchange of predetermined obligations, the method comprising the steps of:

(a) creating a shadow credit record and a shadow debit record for each stakeholder party to be held independently by a supervisory institution from the exchange institutions;

(b) obtaining from each exchange institution a start-of-day balance for each shadow credit record and shadow debit record;

(c) for each transaction resulting in an exchange obligation, the supervisory institution adjusting each respective party’s shadow credit record or shadow debit record, allowing only these transactions that do not result in the value of the shadow debit record being less than the value of the shadow credit record at any time, each said adjustment taking place in chronological order; and

(d) at the end-of-day, the supervisory institution instructing ones of the exchange institutions to exchange credit or debits to the credit record and debit record of the respective parties in accordance with the adjustments of the said permitted transactions, the credits and debits being irrevocable, time invariant obligations placed on the exchange institutions. Id.

[18] See Alice, supra note 1, at___ (slip op., 7).

[19] Id. at___, (slip op., 10).

[20] Id. at ___, (slip op. 10-11).

[21] Id. at___, (slip op., 14).

[22] Id. at___, (slip op., 15).

[23] The system claims and computer-readable medium claims were also thrown out by the Alice Court. Id. at____, (slip op., 16).

[24] See Brian Fung , The Supreme Court’s Decision on Software Patents Still Doesn’t Settle the Bigger Question, The Washington Post, available at http://www.washingtonpost.com/blogs/the-switch/wp/2014/06/20/the-supreme-courts-decision-on-software-patents-still-doesnt-settle-the-bigger-question/ (June 20, 2014).

[25] See Steven J. Vaughan-Nichols, Software Patents Take a Hit, But They’re Far From Dead, ZDNet, at http://www.zdnet.com/software-patents-take-a-hit-but-theyre-far-from-dead-7000030745/ (June 19, 2014, 14:10 PDT).

[26] See Seth Rosenblatt, Supreme Court Raises Bar on Software Patent Claims, CNET, at http://www.cnet.com/news/despite-supreme-court-decision-software-still-eligible-for-patents/ (June 19, 2014, 1:36 PM PDT).

[27] In all fairness, however, I should give this commentator the benefit of the doubt; he does not have a legal background nuanced in the idiosyncrasy of intellectual property laws.

[28] See Quinn, supra note 5 (quoting Q. Todd Dickinson, Director of the USPTO under President Clinton, stating that the Court should have given more clarity to the issue of software patent claims).

[29] Id.

[30] See Rob Preston, Supreme Court Toughens Business Process Patent Test, InformationWeek, at http://www.informationweek.com/software/enterprise-applications/supreme-court-toughens-business-process-patent-test/a/d-id/1278736 (June 20, 2014, 11:16 AM) (quoting Professor Robin Feldman of University of California, Hastings College of the Law in stating that “the Court sent a strong message with the Alice decision.”) See also Bilski v. Kappos, 561 U.S. 593, 599 (2010) (holding business method claims directed toward financial risk hedging was too abstract an idea to be patentable).

[31] See ESPACENET database search, conducted June 26, 2014, at http://worldwide.espacenet.com/publicationDetails/inpadocPatentFamily?CC=US&NR=5970479A&KC=A&FT=D&ND=3&date=19991019&DB=EPODOC&locale=en_EP (June 26, 2014).

[32] See CLS Bank Int’l, supra note 17.

WASHINGTON REDSKINS SKINNED: EFFECT OF THE TTAB’S CANCELLATION

By Brent T. Yonehara

INTRODUCTION

There has been recent controversy regarding the use of the Washington Redskins trade name.[1] Today, the Trademark Trial and Appeal Board (TTAB) summarily cancelled six trademark registrations held by the Pro Football, Inc..[2] Many people, including President Obama, have objected to the continued use of the REDSKINS mark.[3] While there is an anticipated appeal of the TTAB decision, this ruling represents a major victory for Native Americans who see the term as a derogatory and racially offensive slur consistent with the Lanham Act’s Section 2(a) prohibition of disparaging marks.

DISCUSSION

The six service mark registrations at issue include:[4]

Mark Registration No. Class
THE REDSKINS (stylized) 0836122 entertainment services – namely, football exhibitions rendered in stadia and through the media of radio and television broadcasts, in Class 41
WASHINGTON REDSKINS 0978824 entertainment services – namely, presentations of professional football contests, in Class 41
WASHINGTON REDSKINS and design 0986668 entertainment services – namely, presentations of professional football contests, in Class 41
THE REDSKINS and design 0987127 entertainment services – namely, presentations of professional football contests, in Class 41
REDSKINS 1085092 entertainment services – namely, presentations of professional football contests, in Class 41
REDSKINETTES 1606810 entertainment services, namely, cheerleaders who perform dance routines at professional football games and exhibitions and other personal appearances, in Class 41

The petitioners in the cancellation proceeding were five Native Americans.[5] This proceeding was altogether separate from another lawsuit brought by another group of Native Americans against the Pro Football, Inc., the official name of The Washington Redskins organization.[6] In that very convoluted litigation, Harjo v. Pro Football, Inc., the petitioners raised a disparagement claim similar to the Blackhorse petitioners.[7] However, the Harjo case completed its circuitous judicial travails only dealing with procedural issues (and specifically the equitable defense of laches), and never addressed the underlying substantive trademark issue of disparagement.[8]

Trademark Claim of Disparagement

Historically, the term “redskin” meant a scalped head of a killed Native American, which, under the colonial English Phips Proclamation policy, was designed to eliminate existing Native American tribes as English colonists expanded their territorial reach in the Americas.[9]

Section 2(a) of the Lanham Act states that no trademark registration is allowed if it:

(a) consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute . . . [10]

The TTAB reviewed both historical context and expert testimony in determining whether REDSKINS was, in fact, “immoral, deceptive, or scandalous.” Consequently, it found that the term was a “racially designation,” referring to the skin color of Native Americans, and throughout modern history, the lexicon became known to be “offensive, disparaging, contemptuous or not preferred.”[11]   The TTAB, utilizing the “substantial composite” test,[12] determined that a substantial composite of Native Americans found the term “redskins” to be derogatory at the time of the registrations.[13] This evidence was enough for the TTAB to cancel the six Redskins service mark registrations.[14]

Effects of Cancellation

Currently, the TTAB ruling only strips federal trademark registration benefits, namely, allowing a trademark owner to sue alleged infringers under a number of federal trademark causes of action. The practical effect of the ruling is somewhat muted since it would mean anyone could, for example, sell merchandise with the REDSKINS logo and not face a trademark action under federal laws.[15]

However, this does not mean Pro Football does not have a remedy under common law or state trademark statutes.[16] Since Pro Football maintains a principal place of business in Virginia[17] and was incorporated in Maryland,[18] it could seek remedy under Virginia or Maryland trademark or common laws, since Pro Football owns state trademark registrations in Virginia and Maryland.[19] The legal judgments, if any, would be limited to the jurisdictions each respective state. Theoretically, the Blackhorse petitioners could also seek to cancel the state registrations.

Furthermore, Pro Football can also appeal the TTAB decision to the federal courts, which they will do, as expected.[20] This will open the door to an entirely new, and probably protracted, litigation proceeding with an unknown outcome.

On a related note, the TTAB ruling does not affect the domain name registration for “redskins.com,” which is owned by Pro Football.[21] A domain name cancellation would entail commencing a completely separate, administrative proceeding under the Uniform Dispute Resolution Policy (UDRP) through an ICANN registered administrative hearing body.[22] However, the Blackhorse petitioners may have a difficult case showing that redskins.com is confusingly similar, being used in bad faith, and which Pro Football does not have legitimate interests in REDSKINS.[23] Pro Football, though, would have some difficulty with its affirmative defense under the IP Defensive Registration conditions because of the cancelled federal registration.[24] In any case, it would be a lengthy, and quite expensive, endeavor.

CONCLUSION

The TTAB ruling is a victory for Native American history and culture, who have faced centuries of English, and later, American repression.[25] Recently, there has been a movement to address the offensive usages of the Native American persona in sports[26] and academia[27]. The ruling itself may be limited in certain legal scope and jurisdiction. However, symbolically, it represents a change in the public’s perception of the REDSKINS trademark, and more importantly, redress for the Native American people.

By Brent Yonehara. Originally published at http://yonaxis.blogspot.com/2014/06/washington-redskins-skinned-effect-of.html (June 18, 2014).

[1] See, e.g., Maya Rhodan, 50 Senators Demand Washington Redskins Change Their Name, Time, at http://time.com/108893/washington-redskins-name-senators/ (May 22, 2014).

[2] See Blackhorse et al. v. Pro Football, Inc., ___USPQ.2d___ (TTAB 2014), available at http://ttabvue.uspto.gov/ttabvue/v?pno=92046185&pty=CAN&eno=199 (last visited June 18, 2014).

[3] See Theresa Vargas & Annys Shin, President Obama says, ‘I’d think about changing’ name of Washington Redskins, The Washington Post, at http://www.washingtonpost.com/local/president-obama-says-id-think-about-changing-name-of-washington-redskins/2013/10/05/e170b914-2b70-11e3-8ade-a1f23cda135e_story.html (Oct. 5, 2013).

[4] See Blackhorse, supra note 2 at 2-4.

[5] Id. at 7. A sixth petitioner withdrew during the pendency of the cancellation proceeding. Id. at n.8.

[6] See Harjo v. Pro Football, Inc., 30 USPQ.2d 1828 (TTAB 1994), rev’d 284 F.Supp.2d 96 (D.D.C. 2003), rev’d 415 F.3d 44 (D.C. Cir. 2005), aff’d 565 F.3d 880 (D.C. Cir. 2009).

[7] See Harjo, supra note 5.

[8] See Blackhorse, supra note 2 at 6.

[9] See Baxter Holmes, A ‘Redskin’ is the Scalped Head of a Native American, Sold, Like a Pelt, for Cash, Esquire, at http://www.esquire.com/blogs/news/true-redskins-meaning (June 17, 2014); but see Dan Snyder, Letter from Washington Redskins Owner Dan Snyder to Fans, at http://www.washingtonpost.com/local/letter-from-washington-redskins-owner-dan-snyder-to-fans/2013/10/09/e7670ba0-30fe-11e3-8627-c5d7de0a046b_story.html (October 9, 2013) (“The name was never a label. It was, and continues to be, a badge of honor.”).

[10] See Lanham Act §2(a), 15 U.S.C. §1052(a), at http://www.bitlaw.com/source/15usc/1052.html.

[11] See Blackhorse, supra note 2 at 59-61.

[12] Determining whether a mark meets §2(a) requires that the views of the referenced group are “reasonably determined by the views of a substantial composite thereof (emphasis added).” See Pro-Football, Inc. v. Harjo, 284 F.Supp.2d 96, 144-145 (D.D.C. 2003). A substantial composite does not have to be a majority of the allegedly offended group. See In re Heeb Media LLC, 89 USPQ.2d 1071, 1074 (TTAB 2008). Additionally, the relevant viewpoint is not a majority but a substantial component of the general public in the context of contemporary attitudes. See In re Mavety Media Group Ltd., 33 F.3d 1367, 1382 (Fed. Cir. 1994).

[13] See Blackhorse, supra note 2 at 68.

[14] Id. at 72.

[15] See Erik Brady, How Will Pending Trademark Ruling Impact Redskins Name?, USA Today Sports, at http://www.usatoday.com/story/sports/nfl/redskins/2014/05/28/washington-redskins-mascot-controversy-trademark-daniel-snyder/9680563/ (May 28, 2014, 9:23 PM EDT).

[16] Id. See also Media Fact Sheet, USPTO TTAB Decision (Cancellation No. 92046185), at http://www.uspto.gov/news/USPTO_Official_Fact_Sheet_on_TTAB_decision_in_Blackhorse_v_Pro_Football_Inc.pdf (June 18, 2014).

[17] See State Corporation Commission Business Search database, Commonwealth of Virginia, at https://sccefile.scc.virginia.gov/Business/F024104 (last visited June 18, 2014) (Reg. No. F0241044, formation date of July 21, 1971).

[18] See Department of Assessments & Taxation, State of Maryland database, at http://sdatcert3.resiusa.org/UCC-Charter/DisplayEntity_b.aspx?EntityID=D00176966&EntityName=PRO-FOOTBALL%2c+INC.+++++++++++++++++++++++++++++++++++++++++&TabNum=1 (last visited June 18, 2014) (Dept. No. 300176966, formation date of December 4, 1936).

[19] See Division of Securities & Retail Franchising, Trademarks and Service Marks Registered in Virginia database, at https://www.scc.virginia.gov/srf/SERFWEB/RegistrationSearches/WebForms/Search.aspx?SearchType=TMSM (last visited June 18, 2014) (WASHINGTON REDSKINS, registered February 14, 1995, with first use date of July 31, 1972); Trademarks & Service Marks Database, Maryland Secretary of State, at http://www.sos.state.md.us/registrations/trademarks/TMSearch.aspx (last visited June 18, 2014) (11 separate registrations).

[20] See Frank Schwab, Washington Redskins Will Appeal Trademark Office Ruling Over ‘Disparaging’ Nickname, Yahoo Sports, at http://sports.yahoo.com/blogs/nfl-shutdown-corner/u-s–patent-and-trademark-office-cancels-washington-redskins–trademarks-144712305.html (June 18, 2014).

[21] See Whois database, at http://who.is/whois/redskins.com (last visited June 18, 2014) (redskins.com, registered through MarkMonitor, Inc., registered on July 29, 1996, and expiring on July 28, 2014).

[22] See generally ICANN, Uniform Domain Name Dispute Resolution Policy (UDRP), at https://www.icann.org/resources/pages/policy-2012-02-25-en (last visited June 18, 2014).

[23] See UDRP Rules §3(b)(ix)(1)-(3), at https://www.icann.org/resources/pages/rules-be-2012-02-25-en (last visited June 18, 2014).

[24] See UDRP Intellectual Property Defensive Registration Challenge Policy §4(b)(iii), at https://www.icann.org/resources/pages/ipdrcp-2012-02-25-en (last visited June 18, 2014) (“the trademark or service mark registration is of national effect” (emphasis added)).

[25] See generally Sarah Harding, Justifying Repatriation of Native American Cultural Property, 72 Ind.L.J. 723 (1997); Lenora Ledwon, Native American Life Stories and “Authorship”: Legal and Ethical Issues, 9 St. Thomas L. Rev. 69 (1996).

[26] See generally Ethan G. Zlotchew, “Scandalous” or “Disparaging”? It Should Make a Difference in Opposition and Cancellations Actions: Views on the Lanham Act’s Section 2(a) Prohibitions Using the Example of Native American Symbolism in Athletics, 22 Colum.-VLA J.L. & Arts 217 (1998); George Likourezos, A Case of First Impression: American Indians Seek Cancellation of Trademarked Term “Redskins”, 78 J. Pat. Trademark Off. Soc’y 275 (Apr. 1996).

[27] See generally Daniel J. Trainor, Native American Mascots, Schools, and the Title VI Hostile Environment, 1995 U. Ill. L.R. 971 (1995); Stanford Native American Cultural Center, The Removal of the Indian Mascot of Stanford, at http://nacc.stanford.edu/mascot.html (last visited June 18, 2014).

#TWITTERSPATENTS: ANALYSIS OF @TWITTER’S PATENT STRATEGY

By Brent T. Yonehara

INTRODUCTION

There has been a lot of commentary on Twitter, Inc.’s lack of patent portfolio.[1] It has only increased in light of Twitter’s recent disclosure that growth potential has begun to wane with unique users remaining stagnant at around 255 million users.[2] Furthermore, its chief operating officer resigned resulting from poor growth results for which he was charged with expansion.[3] These are disturbing signs from a company that only had an initial public offering (IPO) in November of last year, and questions about the soundness of its patent strategy.

DISCUSSION

A search of the United States Patent and Trademark Office (USPTO)’s patent database reveals that the company that valued at $21.7 billion,[4] through its own prosecution, only holds four patents to its name.[5] One additional Patent Cooperation Treaty (PCT) application was found on the PATENTSCOPE database at the World Intellectual Property Organization (WIPO)’s website.[6] The issued patents and patent applications are listed below:

8,682,895 Content resonance
8,612,529 Method and system for suggesting messages and accounts from a real-time messaging platform
8,448,084 User interface mechanics
8,401,009 Device independent message distribution platform
20120089681 Prioritizing Messages Within a Message Network
WO/2014/028871 Search Infrastructure

This chart does not include the nearly 900-patent estate purchased from IBM for a heady price tag of $36 million earlier this year, in order to stave off what would have been a costly patent infringement litigation filed by IBM against Twitter.[7] This would increase Twitter’s patent estate to 956, up from the nine which it owned prior to its initial public offering in November 2013.[8] It should be noted that these patents have not been formally assigned to Twitter and officially recorded with the USPTO so that the public records reflect Twitter’s ownership of these patents.[9]

Twitter’s product can be encapsulated in two of its originally-owned patents: US 8,448,084 (‘084 patent), entitled “User interface mechanics”[10] and US 8,401,009 (‘009 patent), entitled “Device independent message distribution platform.[11]

The ‘084 patent contains two independent claims. Claim 1 is a method claim directed towards scrollable content through inputted scrolled commands.[12] Claim 11 is a software claim related to method in Claim 1.[13] The ‘009 patent contains three independent claims. Claim 1 is a method claim directed towards broadcasting text messages through a computer screen.[14] Claim 9 is a software claim related to the method in Claim 1.[15] Claim 16 is a computer system claim related to both Claims 1 and 9.[16]

So, what does this all mean? The limited number of patents leads some commentators to conclude Twitter is pursuing a defensive patent strategy aimed at limiting patent infringement litigation directed toward Twitter.[17] This is correlated to the new patent agreement which Twitter requires its engineering staff to sign as part of its patent invention disclosure program.[18] The so-called “Innovator’s Patent Agreement,” begins as a standard patent assignment document which nearly every other company requires to be executed by its engineering staff, with the perfunctory preamble, consideration clauses, and specification of the patent or patent application for assignment.[19] However, further down the document, Clause 2 specifies that the subject patent is to be used for defensive purposes only.[20] By refusing offensive patent assertion against allegedly infringing competitors, Twitter can then take advantage of the smaller competitor’s innovations without going through the lengthy and expensive negotiations for licensing that competitor’s intellectual properties.[21]

There are a few problems with this defensive patent strategy. First, it does not prevent another (probably larger) company from litigating a patent suit against Twitter.[22] Without a pack of patents in its arsenal, Twitter will be unable to sufficiently counterclaim defenses to these suits.[23] Second, it is a well-established process that every successful tech company must follow: grow your patent estate.[24] A large patent portfolio helps to keep competition at bay until the company can expand on its innovations, or create new ones. One thing that Twitter is doing along the licensing route is get involved with the Open Invention Network, Linux’ patent protection licensing pool.[25] However, this alone may not be enough to help Twitter’s bottom line.

CONCLUSION

In conclusion, Twitter has been noble in its pursuit of a patent strategy designed away from offensively protecting its core innovations. However, a “Make Love, Not War” policy does not encourage confidence among shareholders of a publicly-traded company; whatever the lofty ideals of the company may not jive with the rough-and-tumble world of the high tech industry. In this world, only those that continually innovate survive; Twitter is showing alarming signs, at this early stage post-IPO, that its patent strategy will reduce it to a Silicon Valley Darwinist experiment.

By Brent Yonehara. Originally published at: http://yonaxis.blogspot.com/2014/06/normal-0-false-false-false-en-us-x-none.html (June 14, 2014).

[1] See, e.g., Mike Masnick, Is Twitter’s Patent Strategy to Not Get Any Patents?, TechDirt, retrieved June 13, 2014 from https://www.techdirt.com/articles/20101013/10402211413/is-twitter-s-patent-strategy-to-not-get-any-patents.shtml (October 15, 2010, 6:40 AM) (positing that Twitter’s patent strategy leads to questions of whether the company is actually inventing anything innovative); Gene Quinn & Steve Brachmann, Facebook and Twitter: Patent Strategies for Social Media, IPWatchdog, retrieved June 13, 2014 from http://www.ipwatchdog.com/2014/02/14/facebook-and-twitter-patent-strategies-for-social-media/id=48004/ (February 14, 2014, 4:48 PM) (theorizing that a tech company that can develop a robust patent portfolio as a strategic management tool is in a better position to grow revenue, something which Twitter is not currently doing).

[2] See Nicole Perlroth, Revenue Up at Twitter, but Growth Is a Worry, The New York Times, retrieved June 13, 2014 from http://www.nytimes.com/2014/04/30/technology/twitter-revenue-jumps-but-user-figures-worry-wall-st.html?_r=0 (April 29, 2014).

[3] See Supriya Kurane & Gerry Shih, Twitter Chief Operating Officer Resigns as Growth Lags, Reuters, retrieved June 13, 2014 from http://www.reuters.com/article/2014/06/12/us-twitter-managementchanges-idUSKBN0EN07420140612 (June 12, 2014, 4:31 PM EDT).

[4] See Peter Cohan, Are Twitter Shares Worth $60?, Forbes, retrieved June 13, 2014 from http://www.forbes.com/sites/petercohan/2014/06/13/are-twitter-shares-worth-60/ (June 13, 2014, 9:15 AM) (noting that market valuation is down 47% from the January peak of $41.2 billion).

[5] Search conducted of USPTO Patent Full-Text and Image Database on June 13, 2014.

[6] Search conducted of PATENTSCOPE database on June 13, 2014.

[7] See Joe Mullin, Twitter Paid $36 Million over IBM Patent Threat, Arstechnica, retrieved June 13, 2014 from http://arstechnica.com/business/2014/03/twitter-paid-36-million-over-ibm-patent-threat/ (March 8, 2014, 9:49 AM PDT) (noting that the $36 million purchase price amounted to more than 5 percent of Twitter’s 2013 revenue); Klint Finley, Twitter Pays $36 Million to Avoid IBM Patent Suit, Wired, retrieved June 13, 2014 from http://www.wired.com/2014/03/twitter-ibm/ (March 7, 2014, 2:42 PM) (noting from Twitter’s SEC disclosure that it currently owns 956 patents, with 100 applications pending, up from nine before its November 2013 IPO).

[8] See Finley, supra note 6. The Twitter’s patent estate does not include nine patents obtained through acquisition of TweetDeck, Bluefin Labs, and Dasient. See George Anders, Twitter’s Odd Patent Portfolio: No Sign of 140-Character Gold, Forbes, retrieved from http://www.forbes.com/sites/georgeanders/2013/09/14/twitters-slim-patent-portfolio-lacks-any-140-character-gold/ (September 14, 2013, 6:41 PM).

[9] Based on experience, perfecting assignee name changes and assignments takes anywhere between six months to two years, depending on the complexity of the acquisition, volume of patents in question, and jurisdictional requirements.

[10] See User interface mechanics, United States Patent 8448084, Free Patents Online, retrieved June 13, 2014 from http://www.freepatentsonline.com/8448084.html (June 13, 2014).

[11] See Device independent message distribution platform, United States Patent 8401009, Free Patents Online, retrieved June 13, 2014 from http://www.freepatentsonline.com/8401009.html (June 13, 2014).

[12] See ‘084 patent, supra note 8.

[13] Id.

[14] See ‘009 patent, supra note 9.

[15] Id.

[16] Id.

[17] See Finley, supra note 6; see also Bruce Horwitz, Twitter’s MAD IP Policy – Don’t Try it Yourself, Intellectual Property Directions Blog, retrieved June 13, 2014 from http://techroadmap.com/ipdirections/tag/defensive-patent-strategy/ (May 1, 2012, 6:14 PM) (likening Twitter’s IP policy to the Cold War nuclear deténte policy of Mutual Assured Destruction).

[18] Id.

[19] See Innovator’s Patent Assignment, Version 1.0, GitHub, Inc., retrieved June 13, 2014 from https://github.com/twitter/innovators-patent-agreement/blob/master/innovators-patent-agreement.md#innovators-patent-agreement-ipa-version-10 (May 21, 2013).

[20] Id. (“ . . . The Company, on behalf of itself and its successors, transferees, and assignees (collectively the ‘Assignee’), agrees not to assert any claims of any Patents which may be granted on any of the above applications unless asserted for a Defensive Purpose. An assertion of claims of the Patents shall be considered for a ‘Defensive Purpose’ if the claims are asserted . . . (a) against an Entity that has filed . . . a patent infringement lawsuit against Assignee . . . ; (b) against an Entity that has filed . . . a patent infringement lawsuit against another in the past ten years . . . ; or (c) otherwise to deter a patent litigation threat . . . . “).

[21] See Horwitz, supra note 15; Finley, supra note 6. This type of strategy also raises trademark management and brand protection issues, especially because as Twitter acquiesces in a potential infringer’s use of its trademarks, it runs the risk of having an equitable defense of laches or estoppel being used against it in the event of an actual trademark infringement litigation.

[22] See Finley, supra note 6.

[23] See Anders, supra note 7.

[24] Id. Other large tech companies have sizable patent estates: Google, Inc., has 3,370 issued patents as of 2013, Yahoo!, Inc., has 1,449, Facebook, Inc., has 143, Zynga, Inc., has 83, Netflix, Inc., has 21, and LinkedIn, Inc., has 5. Id.

[25] See Steven J. Vaughan-Nichols, Cisco and Twitter Join Linux Patent Protection Pool, ZDNet, retrieved June 13, 2014 from http://www.zdnet.com/blog/open-source/cisco-and-twitter-join-linux-patent-protection-pool/9372 (August 10, 2011, 7:56 AM PDT).

BIG DATA: A REVIEW OF THE EMERGING PHENOMENON

By Brent T. Yonehara

INTRODUCTION

A new phenomenon is turning the world of technology upside-down. It is “Big Data.”[1] In this digital age, our everyday electronic necessities utilize an increasing amount of data. Multiply this by all of our spouses, colleagues, and neighbors and this makes all of this into a really big stack of data. Further multiply this by all of our colleagues’ spouses and neighbors, and you get “Big Data.” This paper will look at the emerging Big Data technology which is taking hold in the information technology industry. Part II will briefly define Big Data. Part III will discuss the importance of Big Data. Part IV will quickly review the various tools and technologies that are being used to cull the Big Data resources. Part V looks at the major players and users of Big Data. Finally, Part VI concludes that Big Data represents an exciting New World for information technology.

WHAT IS BIG DATA?

New phenomena tend to have issues defining themselves. Big Data is no different. There are a number of definitions for Big Data. One commentator defines “big data” as datasets that are too large for the average database to process.[2] Another defines it as a ginormous amount of “bits and bytes strung across constellations of databases.”[3] Taking just these two definitions, one can extrapolate that Big Data is a nebulous, exoteric system of data, one that is constantly growing, and one that provides a terrene of potential wealth, as well as efficiency in business operations and qualitative data management. This is the brave new world of Big Data.

WHY DO WE NEED BIG DATA?

The nominal answer to why we need Big Data would be a rather perfunctory “because it exists.” Data that exists in such huge quantities becomes more and more necessary as our world becomes more and more digitally-dependent. Nevertheless, a better question might be: “Why does Big Data matter?”

For starters, the amount of Big Data is huge. Terabytes and gigabytes of data are thrown out by some commentators.[4] Others use petabytes and exabytes.[5] Still others prefer zettabytes.[6] To put this into perspective, a gigabyte is 1,000,000,000 bytes; a terabyte is 1,000,000,000,000 bytes. A petabyte is 1,000,000,000,000,000; an exabyte is 1,000,000,000,000,000,000. And, a zettabyte is 1,000,000,000,000,000,000,000 bytes. These are staggering numbers, with the amount of data growing each year.

Management of this data tsunami is important on a number of different planes. First, there is the wealth generation, and the corollary expense reduction, aspect of Big Data. Companies that are able to manage the large influx of data will be able to grow exponentially.[7] For example, through better and more efficient use of Big Data in its industry, healthcare companies could realize an annual $300 billion value, mostly as reductions in health-related costs.[8] Other private sector firms could increase profit margins by as much as 60 percent by analyzing Big Data for customer uses or preferences data that passes through their day-to-day operations. Additionally, public sector agencies (i.e., government) could realize billions of dollars in operational savings through better efficient data management.[9]

Another consideration is the job growth opportunities that will be developed as more companies become more aware to the needs of managing their own Big Data systems in-house.[10] By conservative estimate, the talent needed to analyze Big Data is estimated between 140,000 to 190,000 new positions in the next five years.[11] This statistic notes that it will take a number of years to properly educate and train this vast number of new data scientists, and consequently, there could be a drought of experienced data professionals equipped to handle Big Data analytics.[12] This figure does not contemplate the 1.5 million support specialists and managers that will be needed to supplement the data scientists.[13]

BIG DATA TOOLS & TECHNOLOGIES

A latent Big Data cottage industry that has begun to take shape within the last couple of years. Below are some of the tools and technologies that are currently being used or developed to corral the burgeoning Big Data.

MapReduce

MapReduce originated from Google.[14] The basic algorithm provides processing of huge amounts of data through a two-step process.[15] First, in the map step, queries are processed then converted into different sets of values.[16] Second, in the reduce step, data outputs from the map step are combined to form a more reduced set of tuples.[17]

Hadoop

Apache Hadoop is an open-source framework for handling Big Data, and is the most popular implementation of MapReduce.[18] It can process data from multiple data sources with highly intelligent ability to sort data for user tendencies and patterns, thereby facilitating better business decisions.[19] It is multi-purpose software emphasizing real-time data, including location-based data sources for weather or traffic-reporting, web-based or social media data, or transactional data.[20] Hadoop is currently the most popular and largest data analytics database system on the market, based, in part, on its open-source foundation.[21] In line with general Big Data revenue growth, Hadoop has a projected annual growth rate of 60%.[22]

NoSQL

NoSQL is a non-relational database which focuses on unstructured or semi-structured data.[23] In exchange for read-write consistency found in traditional databases, it focuses on scalability and distributed processing.[24] It is an open-source system, and there are various database types which fall under the NoSQL classification, including key-values stores, document stores, column stores, and graph stores.[25]

Accumulo

Accumulo is a column-oriented database from the Apache family of Big Data software. While traditional row-oriented databases favor poorly on query performance, column-oriented databases allow mass data compression and, thus, faster query performance.[26]

Hive

Apache Hive is a Java-based, bridge application which works in conjunction with a Hadoop cluster.[27] Originally proprietary from Facebook, it is now an open-source system, and supports Hadoop with analysis of large chunks of data.[28]

PIG

Apache PIG is utilized in a Perl-like language, as opposed to the more common SQL language, and works in conjunction with a Hadoop cluster.[29] It was originally developed by Yahoo! and is also, now, open-source.[30]

WibiData

WibiData is a web analytics software which allows websites to maximize user data through real-time user behavior, and thereby enable the website to provide more personalized content.[31]

PLATFORA

PLATFORA is a software that allows Hadoop to turn user’s queries to automate Hadoop jobs.[32] This, in turn, allows the end user to simplify and organize Hadoop datasets more effectively.[33]

SkyTree

A machine learning and data analytics platform, SkyTree makes machine learning a viable alternative to traditional manual review or exploration of data, which, given the voluminous amount of Big Data, makes manual exploration uneconomical or unfeasible.[34]

WHO USES BIG DATA & WHY?

Based on the customers for the above-mentioned tools and technologies, there are major Silicon Valley players in Big Data. Cloudera is the major developer of Hadoop clusters.[35] Hadoop is used for intensive data analysis at Yahoo!, Facebook, LinkedIn, and eBay.[36] Twitter, Hulu, and IBM are also using open source Big Data analytics frameworks for assisting with user data analysis and production.[37] New job postings for Hadoop engineers from AT&T Interactive, Sears, PayPal, AOL, and Deloitte indicate that a human resource investment in Big Data analytics.[38] These are only a few major companies, but it is anticipated to grow as the need to harness Big Data for commercialization becomes more apparent to companies.

CONCLUSION

Big Data represents an exciting new world for the IT industry. Specifically, Big Data will have a lasting impact on database professionals.[39] With the emergence of Big Data, it will no longer be enough to just buy a database and hook it up to a hard drive. Rather, distributed databases and multiple servers and hard drives will be the norm.[40] Big Data also will impact other industries. Issues left unsettled involve data policies, data security, privacy, and intellectual property.[41] Nevertheless, the Big Data phenomenon will remain a fascinating aspect of IT in the near future.

By Brent Yonehara. Originally published at http://yonaxis.blogspot.com/2014/02/big-data-review-of-emerging-phenomenon.html (Feb. 15, 2014).

[1] According to one commentator, Big Data originated in 1944 by Fremont Rider, the librarian of Wesleyan University, see Gill Press, A Very Short History of Big Data, Forbes, retrieved February 13, 2014 from http://www.forbes.com/sites/gilpress/2013/05/09/a-very-short-history-of-big-data/ (May 9, 2013, 9:45 AM). Another commentator, and perhaps more precisely, originates Big Data from the 1990s during lunch conversations at Silicon Graphics, Inc., see Francis X. Diebold, A Personal Perspective on the Origin(s) and Development of “Big Data”: The Phenomenon, the Term, and the Discipline, retrieved February 13, 2014 from http://www.ssc.upenn.edu/~fdiebold/papers/paper112/Diebold_Big_Data.pdf (Nov. 26, 2012).

[2] See James Manyika, Michael Chui, Brad Brown, Jacques Bughin, Richard Dobbs, Charles Roxburgh & Angela Hung Byers. Big data: the next frontier for innovation, competition, and productivity. McKinsey Global Institute White Paper: Executive Summary. Retrieved Nov. 18, 2013 from http://www.mckinsey.com/insights/business_technology/big_data_the_next_frontier_for_innovation. (May 2011), at p. 1.

[3] See Joe McKendrick, Data Integration Evolves Into a Science as Much as an Art, Database Trends & Appls. (Sept. 2011), 4-8, at p. 5.

[4] Id.

[5] See Manyika et al., supra note 2, at 4.

[6] See News. Computer Weekly. Computer Database. Document URL: http://go.galegroup.com/ps/i.do?id=GALE%7CA252643305&v=2.1&u=regis&it=r&p=CDB&sw=w&asid=94762bb8773544aefdd21d97334d96be, GDN: GALE|A252643305, (Mar. 11, 2011).

[7] See McKendrick, supra note 3, at 5; Manyika et al., supra note 2, at 2.

[8] See Manyika et al., supra at 2.

[9] Id.

[10] See Carolyn Duffy Marsan. ‘Big data’ creating big career opportunities for IT pros; new jobs expected for developers, administrators, as well as emerging ‘data scientist’ role. Network World. Retrieved November 18, 2013 from http://www.networkworld.com/news/2012/030612-big-data-careers-256939.html, (Mar. 6, 2012, 8:07 AM EST).

[11] See Manyika et al., supra at 11.

[12] Id.

[13] Id.

[14] See Big data. Wikipedia. Retrieved November 18, 2013 from http://en.wikipedia.org/wiki/Big_data. (2013, November 17).

[15] See Thoran Rodrigues, 10 emerging technologies for Big Data. TechRepublic. Retrieved from http://www.techrepublic.com/blog/big-data-analytics/10-emerging-technologies-for-big-data/. (Dec. 4, 2012) (interviewing Dr. Satwant Kaur on the 10 emerging technologies that will be the biggest Big Data technologies in the near future).

[16] Id.

[17] Id.

[18] See Nicholas Kolakowski, Microsoft Windows Azure server will leverage Apache Hadoop. eWeek. Retrieved November 18, 2013 from http://www.eweek.com/c/a/Cloud-Computing/Microsofts-Windows-Azure-Server-Will-Leverage-Apache-Hadoop-207862/ (Oct. 11, 2011). .

[19] Id.

[20] See Rodrigues, supra note 15.

[21] See Matt Asay, Why proprietary Big Data technologies have no hope of competing with Hadoop. ReadWrite. Retrieved November 18, 2013 from http://readwrite.com/2013/10/28/why-proprietary-big-data-technologies-have-no-hope-of-competing-with-hadoop#awesm=~onG7TeTMleP9NP. (Oct. 28, 2013).

[22] Id.

[23] See Rodrigues, supra.

[24] Id.

[25] Id.

[26] Id.

[27] Id.

[28] Id.

[29] Id.

[30] Id.

[31] Id.

[32] Id.

[33] Id.

[34] Id.

[35] See Cloudera, Inc., About Us. Retrieved November 18, 2013 from http://www.cloudera.com/content/cloudera/en/about.html. (2013).

[36] See Marsan, supra note 10.

[37] See Kolakowski, supra note 18.

[38] See Marsan, supra.

[39] See McKendrick, supra.

[40] See Marsan, supra.

[41] See Manyika et al., supra at 11.

VOTING MACHINES, SECURITY, AND THE ROLE OF SOFTWARE PRACTITIONERS

By Brent T. Yonehara

Undoubtedly, the right of suffrage is a fundamental matter in a free and democratic society. Especially since the right to exercise the franchise in a free and unimpaired manner is preservative of other basic civil and political rights, any alleged infringement of the rights of citizens to vote must be carefully and meticulously scrutinized.[1]

 INTRODUCTION

In Reynolds, the Court held that state legislative districts had to be drawn with roughly the same populations.[2] Although Reynolds is a seminal voting rights decision prohibiting geographic discrimination in violation of the Equal Protection Clause, it has applicability to contemporary usage of technology in electronic voting machines.[3] In the 2008 presidential election, a thousand votes were “lost” in Ohio as a result of a voting machine software glitch.[4] Elections officials could not verify over 12,000 votes in New Mexico in 2002.[5] A similar incident occurred in Nevada.[6] These software-based electronic voting machines are known as Direct Recording Electronics (DREs).[7] Security has been a widely discussed topic among DREs since 2000.[8] DREs’ security issues directly hinder a voter’s ability to vote.[9] As such, these mechanisms need careful and meticulous scrutiny. Part II discusses more in depth the security issues surrounding DREs. Part III discusses the role of software practitioners in resolving some of these security issues. Part IV concludes with a cautionary note that software industry professionals can play a role in ensuring everyone’s vote is protected and sacrosanct.

SECURITY ISSUES

Not all technology actually makes our lives easier.[10] It is fairly simple to conduct man-in-the-middle attacks and hacking of, and malicious code release within, DREs.[11] Security is an absolute necessity in voting systems.[12] Without it, a vote becomes meaningless or trivial, like an informal office party tally or a non-scientific social media poll.

Several commentators have revealed deep flaws in the security of DREs. Man-in-the-middle attacks, where a microprocessor is implanted into a machine and a vote is then externally controlled, are possible.[13] Reverse engineering and hacking on voting machines have also been conducted in order to expose their security vulnerabilities.[14] These modulated hacking exercises have indicated that DREs are extremely vulnerable to mischief.[15] Vote-stealing and denial-of-service attacks could be implemented.[16] Vote-stealing would move votes from one candidate to another; denial-of-service would render the DRE unusable on Election Day.[17] Tampering with the hash tables within the DRE software – specifically, by rewriting Candidate class’ hashCode() and equals() methods, two candidates would be merged as one; thus, votes for either would be ordered for a single candidate.[18] Also, through manipulation of command-line options, a machine could have authenticating communications disrupted, thereby disabling that machine.[19]

Malicious code can also be introduced into the DREs, through either lax measures pre-election storage of the devices or surreptitious day-of-election activity.[20] Malicious code, like viruses or Trojan horses, could be released on one machine through rather mundane software upgrades via a memory card; as the technician moves from machine to machine, the code is introduced to each successive machine.[21] All of these scenarios would eviscerate the voter’s intent and undermine electoral integrity.

ROLE OF SOFTWARE PRACTITIONERS

No right is more precious in a free country than that of having a voice in the election of those who make the laws under which, as good citizens, we must live. Other rights, even the most basic, are illusory if the right to vote is undermined. Our Constitution leaves no room for classification of people in a way that unnecessarily abridges this right.[22]

In a vigorously contested election, a vote is a precious commodity.[23] Deliberately tampering with the voter’s intent undermines that the preciousness of that vote for both voter and candidate. As the first line of defense, software practitioners are in a critical role to resolve these security issues surrounding electronic voting machines.[24] Software practitioners, through their understanding and expertise of software as a profession, can use this erudition to shepherd the design, development, testing, and maintenance of DREs.[25] Because the software engineering process is a highly convoluted, and technically complex, it requires people from divergent professions to build a system that can deftly protect the vote but also malleably work with different electoral jurisdictions’ rules.[26] A software professional is the only one capable of possessing both understanding of the technical requirements for a machine and the more disparate policy requirements of election laws.[27] In their role as project manager, software practitioners can advocate for changes to electronic voting laws around the country, which can, unlike other industries like cars and airplanes that must report to a governmental agency, have regulatory oversight over DREs.[28]

Lax security practices at the voting machine manufacturer’s assembly and distribution site, as well as insufficient security during storage of these machines are also contributory weaknesses in which an opportunity is opened to create mischief into the electoral process.[29] One commentator observed that the entire DRE software, including the BIOS, bootloader, OS, and applications could be tampered with by an erstwhile cyber-terrorist.[30] This same commentator has proposed security architecture designed to validate DREs prior to Election Day.[31] This security validation could be implemented on DREs by the poll workers.[32] If based on validation there is evidence of tampering, the machine could be taken off-line before the poll doors open for elections.[33] This commentator, and other commentators like him, could use their knowledge and expertise to work with state elections officials, as well as DRE manufacturers to implement such security architecture.[34]

Conducting paper audit trails correlative with each DRE use during an election is also recommended.[35] Additionally, stricter software engineering processes within voting machine companies are needed; as a group, software engineers within these companies should advocate for these more rigorous processes in order to prevent malicious code releases within DREs.[36] In one incident, a Linux kernel hacking job was caught before the modification into the final voting system when the hack was processed by higher levels of scrutiny during the engineering process.[37] These incidences, though, are not typical, and illustrate areas of improvement which software practitioners can play a more potent role.[38]

CONCLUSION

In Reynolds, Chief Justice Warren wrote “[t]o the extent that a citizen’s right to vote is debased, he is that much less a citizen.”[39] Numerous commentators have reported that DREs were susceptible to man-in-the-middle and denial-of-service attacks, malware infiltration, and hacking.[40] As long as there are security issues with DREs, the cherished right to vote – upon which countless people throughout history have died fighting to achieve – will continue to be undermined in what should be the most tech-friendly country in the world. While neither blame nor responsibility rests on their shoulders, software practitioners must use their professional expertise to assist in resolving these issues. It is best to have software patches and architectures handled by software engineers rather than politicians and policy wonks. As one commentator puts it, until changes are made to the design, development, and testing of DREs, the “very core of our democracy is in danger.”[41] He is absolutely right.

By Brent Yonehara.  Originally published at: http://yonaxis.blogspot.com/2014/02/voting-machines-security-and-role-of.html (Feb. 15, 2014).

[1] Reynolds v. Sims, 377 U.S. 533, 561-62 (1964).

[2] Id. at 572-73.

[3] See Kim Zetter. Report: Voting machine errors highlight urgent need for U.S. database. Wired. Retrieved Jan. 3, 2014 from <http://www.wired.com/threatlevel/2010/09/voting-machine-database/&gt; (Sept. 10, 2010, 10:15 AM).

[4] Id.

[5] Id.

[6] Id.

[7] See Ryan Gardner, Sujata Garera, & Aviel D. Rubin. On the difficulty of validating voting machine software. 2007 USENIX/ACCURATE Electronic Voting Technology Workshop (EVT ’07). Retrieved Jan. 3, 2014 from http://citeseerx.ist.psu.edu/viewdoc/download?doi=10.1.1.119.9233&rep=rep1&type=pdf&gt; (Aug. 2007).

[8] Id.

[9] See generally Steve Ragan, IT Security When Protection Becomes Prohibitive, Slashdot. Retrieved February 13, 2014 from http://slashdot.org/topic/bi/it-security-when-protection-becomes-prohibitive/ (January 28, 2013) (hypothesizing that security as a business measure is slowly killing work productivity and innovation, and is, in a much larger sense, a “cloud” for the modern world as a whole).

[10] See e.g. David Berlind, For All the Good It Does, Technology Often Fails Us in Big Ways, ZDNet, <http://www.zdnet.com/blog/btl/for-all-the-good-it-does-technology-often-fails-us-in-big-ways/2237&gt; (Retrieved Feb. 13, 2014) (arguing the government is using Big Brother-like use of technology to invade our privacy); Ivan Babovic, New Technology is Not Always a Good Thing, UN Special, <http://www.unspecial.org/2012/06/new-technology-always-good-thing/&gt; (Retrieved Feb. 13, 2014) (positing that some new technology is sometimes bad business decision-making).

[11] See Roger Johnston (as told to Suzanne LaBarre). How I hacked an electronic voting machine. Popular Science. Retrieved Jan. 3, 2014 from <http://www.popsci.com/gadgets/article/2012-11/how-i-hacked-electronic-voting-machine&gt;. (Nov. 5, 2012); Gardner et al., supra at note 7; Jonathan Bannet, David W. Price, Algis Rudys, Justin Singer & Dan S. Wallach, Hack-a-Vote: Security Issues with Electronic Voting Systems, 2 No. 1 IEEE Sec. & Priv., 32; Ariel J. Feldman, J. Alex Halderman & Edward W. Felten, Security Analysis of the Diebold AccuVote-TS voting machine. 2007 USENIX/ACCURATE Electronic Voting Technology Workshop (EVT’07). Retrieved Jan. 3, 2014 from <https://www.usenix.org/legacy/events/evt07/tech/full_papers/feldman/feldman_html/&gt; (Aug. 2007).

[12] See Feldman et al., supra note 11.

[13] See Johnston, supra note 11.

[14] See Bannet et al., supra note 11, at 32; Feldman, supra.

[15] Id.

[16] See Bannet et al., supra at 34.

[17] Id.

[18] Id.

[19] Id. at 34.

[20] See Feldman et al., supra.

[21] See Bannet et al., supra at 34; Feldman et al., supra.

[22] Wesberry v. Sanders, 376 U.S. 17-18 (1964).

[23] See e.g. Editor, Colorado’s Undecided Voters Are a Hot Election Commodity, KUOW.ORG, Retrieved February 13, 2014 from < http://kuow.org/post/colorados-undecided-voters-are-hot-election-commodity&gt; (Oct. 2, 2012, 12:33 AM).

[24] See Bannet et al., supra at 34.

[25] See Anthony Lonergan. Dependability of electronic voting machines, p. 42. Retrieved January 3, 2014 from <http://core.kmi.open.ac.uk/download/pdf/10851634.pdf‎> (Aug. 2007); Zetter, supra note 3.

[26] Id.

[27] Zetter, supra.

[28] Id.

[29] Gardner et al., supra.

[30] Id.

[31] Id.

[32] Id.

[33] Id.

[34] Id.

[35] See Bannet et al., supra at 36.

[36] Id.

[37] Id.

[38] Id.

[39] Reynolds, at 567.

[40] See Bannet et al., supra at 34-35.

[41] See Davide Balzarotti, Greg Banks, Marco Cova, Viktoria Felmetsger, Richard Kemmerer, William Robertson, Fredrik Valeur & Giovanni Vigna, Are Your Votes Really Counted? Testing the Security of Real-world Electronic Voting Systems, Proc. of the 2008 Int’l Symp. Soft. Testing & Anal., pp. 237-248. ACM. Retrieved January 3, 2014 from <http://citeseerx.ist.psu.edu/viewdoc/download?doi=10.1.1.156.1894&rep=rep1&type=pdf&gt; (Jul. 2008).

THE CAPTIVE AUDIENCE DOCTRINE: A RETURN TO “DEGENERATE” ART OR TRUE REGULATION OF OFFENSIVE ART?

By Brent T. Yonehara

Modern art is Communistic because it is distorted and ugly, because it does not glorify our beautiful country, our cheering and smiling people, and our material progress. Modern art . . . has become the purveyor of a destructive, degenerate, ugly, pornographic, Marxist, anti-American ideology.

– Representative George Dondero[1]

A cleansing of our culture must extend to nearly all fields. Theater, art, literature, cinema, press, posters, and window displays must be cleansed of all manifestations of our rotting world and placed in the service of a moral, political, and cultural idea. Public life must be freed from the stifling perfume of our modern eroticism . . . .

– Adolf Hitler[2]

Introduction

Censorship and the arts have long been conjoined controversies, dating back to the Byzantine period, through the Inquisition and the Catholic Church’s attempts to make art subservient to the Church, to Soviet and Nazi attempts to make art conform to a specific political ideological dogma.[3] Censorship is not a foreign concept, existing in the McCarthy era and 1990s conservative efforts against perceived “communist” art.[4]

This article attempts to discuss the relevant aspects of censorship and First Amendment protections for free expression, and the captive audience doctrine, which allows even protectable art to be regulated if the observer had no choice but to see the art. The captive audience doctrine is a relatively new phenomenon in American constitutional jurisprudence. The burden has long been on the observer to look elsewhere if the artwork offends his “sensibilities” where the artwork may be protectable First Amendment speech.[5] The U.S. Supreme Court has also enunciated that observers must make the best of their situation by “simply averting their eyes.”[6] In addition, passing observation of offensive, or even obscene, artwork goes to the notion of censorship of free flow of information in a marketplace of ideas that is anathema to a democratic society.[7]

This article will examine the development of the captive audience doctrine and analyze the relatively little case law dealing with captive audiences. For purposes of brevity, this article will not contemplate ancillary issues concerning type of forum and speech content, and will focus exclusively on the general propositions of the captive audience doctrine. The article will then argue that the captive audience doctrine in its barest essential form an aspect of censorship which does not merit a place in a modern democratic society like twenty-first century America.[8]

Development of the Captive Audience Doctrine

            The captive audience doctrine is really the confluence of two powerful policies clashing in today’s society: on one hand, free expression; on the other, the substantial privacy interests of the observer who desires not to see the artwork.[9]

The basis of the captive audience doctrine can be traced back to a famous article on privacy by Louis Brandeis and Samuel Warren in 1890.[10] In their article, Brandeis and Warren first espoused the oft-used phrase “right to be let alone.”[11] The argument goes that the observer has a right to not see offensive art, and hence a right to privacy.[12] The “right to be let alone” has never been sufficiently defined with clarity. As such, the captive audience doctrine lacks any precise definition. As a result, the captive audience doctrine has been described as being “dangerously encompassing.”[13] Nevertheless, the Supreme Court has required a “substantial privacy interest” to have been invaded in order for the Government to limit or restrict offensive expression.[14] A “substantial privacy interest” in the context of art is extremely vague. One’s acceptance of so-called “good” art is another’s rejection as “bad” art. As a result, the determination of whether a particular artwork offends someone to the point of invading that person’s privacy interests makes the captive audience doctrine lack application to the art world.

Two different theories under the captive audience doctrine began to emerge. First, there is the private captive audience, that which is within one’s own home.[15] The analysis here is limited. An offensive painting resting on a wall in a private residence would raise little controversy to the unsuspecting passerby. The second, and most relevant theory, is the captive audience in public. Because offensive artwork is mostly observed in a public forum, like a gallery or open space, any analysis will be limited to the captive audience in public. Currently, the Supreme Court has not been willing to extend the captive audience protections to unwanted speech in public.[16]

The U.S. Supreme Court placed its spin on the doctrine into the context of an obscenity analysis with its landmark case, Miller v. California.[17] Miller’s three-prong test for obscenity enunciated what speech is protectable under the First Amendment, and what speech is deemed obscene, and thus unprotected.[18] Because Miller determined what speech could be suppressed, the doctrinal scrutiny turned to speech that fell inside Miller’s scope. Thus, the captive audience doctrine focuses on the regulation of protected speech, and whether even protected speech should be regulated. However, just because people are in a situation where they are subjected to art that is offensive to them does not justify that the artwork is obscene enough to be removed. As a matter of fact, the U.S. Supreme Court has never held that mere presence of a captive audience scenario was enough to justify speech limitations.[19] Nevertheless, the Court has held that the First Amendment protects even offensive speech because it has some artistic, social, literary, or political value.[20]

Another Supreme Court case, Cohen v. California,[21] placed limits on the captive audience doctrine’s grip on free expression. Cohen was protesting the Vietnam War by wearing a jacket with the words “Fuck the Draft” emblazoned on the back of the jacket as he walked through a federal courthouse.[22] The Court found in favor of Cohen and overturned his conviction.[23] The concern was that people at the courthouse conducting judicial business were “captive” as a result of Cohen’s political speech. Although the Court did not specify the captive audience doctrine in its ruling, its rationale touched upon keywords of a captive audience analysis. The Court made note of California’s argument that Cohen’s expression was “thrust upon unwilling or unsuspecting viewers.”[24] The Court stated, “those in the courthouse could effectively avoid bombardment of their sensibilities simply by averting their eyes.”[25] By moving one’s eyes elsewhere, the onlookers would prevent aversion to Cohen’s statement. At the same time, such “averting one’s eyes” would represent minimal effort, in comparison to the government’s determination of what expression is acceptable, thus offering a “convenient guise for banning the expression of unpopular views.”[26] This “avert one’s eyes” test is a starting point for captive audience analyses.

Application of the Captive Audience Doctrine to Art Cases

The Trifecta of Captive Audience Cases

In Close v. Lederle,[27] a University of Massachusetts art instructor was given permission to display his artwork in a hallway in the student union, which was used occasionally for art displays.[28] As the court noted, the exhibition was quite controversial, consisting of male and female nudes in “clinical detail.”[29] The court of appeals dismissed instructor’s case, stating that the plaintiff’s constitutional interests were minimal, and the passerby’s privacy interests in the hallway were substantial enough to justify the removal of the display from the walls.[30]

In Claudio v. United States,[31] a larger-than-life size painting of a woman accompanied by a black wire hanger and a blood-streaked fetus was displayed on a wall in the lobby of a federal building.[32] The district court found that Claudio’s display of the painting was properly removed because the “offensive expression was physically attached to the courthouse itself, and it was so large and situated in such a location that anyone entering the building had to look at it.”[33] Claudio stands for the proposition that works can be removed because of the nature of the artwork’s subject, despite the “avert one’s eyes” doctrine created by Cohen. As a result, courts are readily carving out Swiss cheese-like exceptions out of free expression rights established under the First Amendment disguised under the captive audience doctrine.

In Piarowski v. Prairie State College,[34] three stain-glassed windows in the student union were painted in the likeness of characters inspired by Aristophanes’ Lysistrata.[35] The controversy stems from the women looking too racially African-American and thus, was offensive to many in the Prairie College community.[36] After complaints, the window paintings were ordered removed to another area of the building, a fourth floor exhibition room, which was not readily visible from outside of the building.[37] The court held that the paintings could be removed, because the student union was not technically open to the public for display of artwork, but rather was only occasionally available based on invitation extended to specific artists.[38] Additionally, the court noted, “relocation is not suppression, and if reasonable, is not forbidden.”[39] It should be noted that Hitler made similar remarks when Jews were relocated from the urban centers to concentration camps.[40] While the removal of three window paintings certainly does not rise to the level of the deaths of six million people, the tones are eerily similar. Piarowski essentially stands for the proposition that any works, even questionably offensive works, could be removed and relocated. Yet, in spite of this, relocation of the offending artworks under the captive audience doctrine would still not amount to suppression to offend First Amendment principles.

Taken collectively, Close, Claudio, and Piarowski advance the captive audience doctrine, and erode the encouragement of free expression established under Cohen and Miller. All three rulings claim to protect the sensibilities of passersby. However, these claims are ludicrous. A litany of cases has held that expression cannot be suppressed merely because certain viewers will be offended.[41] One court observed that it is a fine line between protecting against viewers’ revulsion and preventing retribution through removal or suppression.[42] The fine line which courts must employ is one of caution on the side of prevention of suppression of ideas and expression. Additionally, a disturbing side note consistent with all three cases is the fact that the judges all made their displeasures of the artworks at issue known in their rulings. Both the Close and Claudio courts factored into their rulings the questionable or controversial natures of the artworks[43] The Piarowski court approved of the college’s conduct based on the “sexually explicit and racially insulting” artwork.[44] Such blatant bias leaves open the question of how well judges can objectively adjudicate issues of art when they themselves so brashly opine their personal contempt for the artworks for which they adjudicate.[45] While not entirely uncommon that judges make known their personal biases in opinions, it does create an atmosphere where judges are now determining what is “good” art and what is “bad” art, creating a separate type of censorship based on the judge’s personal predilection.

Analysis

            The Supreme Court has never held that mere presence of a captive audience scenario is sufficient to justify speech restrictions.[46] As noted by several commentators, the captive audience doctrine has become a “dangerous tool in hands of a court in search of a justification for speech restrictions.”[47]

Nazis and Dondero: An Unholy Marriage

In his book, Mein Kampf, Adolf Hitler attacked modern art, including its novel schools of thought — Dadaism, Futurism, and Cubism — as decadent products of twentieth-century society.[48] In the 1930s, Adolf Hitler pursued a policy of Nazi palingenesis, or creation of a new order of Nazi art and culture, based exclusively on German artistic values, or Volksgemeinschaft.[49] Anything falling outside of German cultural values was thus deemed “degenerate,” and was subject to sanitization.[50] In 1949, George Dondero, an obscure Republican representative from Michigan, read a speech before Congress on how modern art has changed the face of America and democracy.[51] In that speech, Dondero commented that modern art was “depraved” and “destructive” to America because it was inspired by Communist ideals.[52]

The comments of Representative Dondero and Hitler almost are a perfect match. The two rile against the same genre of art (modern art), as an affront to the society and destructive to the advancement of his particular country. In 1937, Hitler put together an art exhibit in Munich, showcasing artworks from Jewish, gypsy, socialist, German expressionist and abstract artists which were considered “degenerate” art.[53] Both Hitler and Dondero held positions of leadership in their governments, and both made sharp distinctions between artwork which glorified their respective national and political identities and those artwork which, in their views, did not. Hitler sought to eliminate “degenerate” art because it fostered aesthetic forms which were not “life-asserting” and contributed to the post-World War I German decline.[54] Dondero sought to denigrate modern art as a corollary of Soviet communist principles.[55] Through their advocacy, both Hitler and Dondero attempted to distinguish legitimate art and illegitimate art: modern art to Dondero, degenerate art to Hitler.[56] Both actively utilized media sources to vilify modern and degenerate arts.[57]

Captive Audience Doctrine and Censorship by the Courts

This mentality has translated over to the American courts and the flourishing of the captive audience doctrine. The Claudio court commented on the right of individuals to not listen to speech as a corollary of the freedom of speech. Individuals certainly have the right to avoid speech if it disgusts, or even offends, to the observer.

However, the Claudio rationale, rather than distinguishing itself, goes directly counter to Cohen.[58] Cohen requires that objectionable art pervade the onlooker’s privacy in an “essentially intolerable manner” that it creates a captive audience scenario.[59] The Claudio judge never specifically addressed whether a passerby’s privacy was violated in such an “essentially intolerable manner” so as to create a captive audience scenario, but nevertheless employed it as a basis for removal of the artwork from the court lobby.[60] The work was located in the entry hall of a federal building. The judge rationalized his decision on the fact that the sculpture was so large and physically attached to the building that no one had any choice but to see the it.[61] By doing so, the Claudio judge created a standard that geographic locations and the size of the artwork determined the piece as regulable under the captive audience doctrine or not. Claudio raised the distinction of the size of Cohen’s words on his jacket compared to the display at the federal building in Claudio.[62] Frankly, a person going to a courthouse is going there on some legitimate business, and would probably be more concerned with the carrying out of the business, be it going to a courtroom, or jury selection, or the court clerk’s office. The ability of one to “avert his eyes” could be ascertained without complication of viewing the artwork because that person was at the courthouse for some other reason than to see the artwork. In other words, a person traveling to the court would have no issue averting his eyes because that person would be more concerned about the conduct of whatever legal business that that person came to the court in the first place, rather than be forced to view an ornamental artpiece in the court’s lobby.

Additionally, Judge Fox in Claudio made certain to remove the artwork from the lobby because he felt many people going to the federal building would be of the mistaken belief that the government endorsed the display.[63] In Piarowski, Judge Posner placed weight on the fact that there was a likelihood that the “sexually explicit and racially offensive artwork” would be attributed to the college when rendering his decision.[64] However, the Supreme Court refused to prevent local officials from removing a Ku Klux Klan cross from a public plaza, rationalizing that just because some people may falsely assume government endorsement of the cross, it was not enough to restrict free expression.[65] The Court noted that just because the offensive display is erected “close to the symbols of government,” it is not enough to prevent free expression just because there may be a likelihood of confusing private speech as public speech.[66] In addition, the Court pointedly commented that if the government is concerned about any misperception on the part of people confusing private and government speech, the government can simply put a disclaimer noting that the display is private speech only.[67] This is what the Claudio court should have ordered, instead of removal of an admittedly non-obscene artwork.[68]

Based on the foregoing, the location or size of the artwork does not matter. Censorship is censorship. Removal and relocation amounts to different types of censorship. Close made overtures that the limited space of the hallway made observers a captive audience.[69] However, another circuit’s decision rationalized completely in the opposite direction. In Hopper v. City of Pasco,[70] two artists’ works were barred from public display in the hallways of the newly remodeled city hall.[71] The sculptures were deemed too “controversial.”[72] The Ninth Circuit panel found no merit in the argument that the location of the works, in a public hallway, would create a captive audience scenario in which children would be exposed to the artworks.[73] The court reasoned that because Pasco officials opened up the hallway for display of local art, the mere fact that a work fosters controversy was not sufficient to suppress the art’s display.[74] Hopper and Close represent a confusion in the arena of free expression of art. One the one hand, a court refused an art display in a hallway because of the captive nature the hall had on passersby. On the other hand, a court chastised the refusal of an art display in a similar hallway. The Close court observed that “freedom of speech must recognize, at least within limits, freedom not to listen.”[75] Yet, even the Supreme Court has held that the freedom not to listen is not absolute.[76] By not granting certiorari to determine the scope of the captive audience in these situations, the Supreme Court only perpetuates an air of confusion. Thus, based on this patchwork of circuit opinions, the circuits can continue to circumvent the Miller test for obscenity and the Cohen’s “avert one’s eyes” doctrine, suppressing what would otherwise be protectable First Amendment art.

The danger of the captive audience doctrine is that it could silence speech that under regular circumstances would be constitutional under the First Amendment. The captive audience would retain a “veto power” over the artwork. This veto would stand to “undermine the entire freedom of speech fabric.”[77]

People should have no right not to listen just because the speech they encounter is personally offensive, but may not be offensive to another, or even the majority of others.[78] Generally, people control what speech is allowed into the home.[79] Generally, policy has been to maintain broad free expression rights to those expressions which are in public areas.[80] The discussion should essentially end there. However, the captive audience doctrine complicates practical considerations of display of artworks in public spaces.[81] Rather than encouraging free expression, courts have invoked the captive audience doctrine to craft censorship of generally non-obscene expression. This is the exact type of censorship that was utilized by Hitler to create a New Order in Nazi Germany in the 1930s.

Other Problems Involving the Internet

The rise of the captive audience doctrine is especially problematic for other reasons, as well. In twenty-first century America, where technology is pushing the limits and application of existing laws, the captive audience doctrine remains out of place in an era of the Internet.[82] Who is the captive audience when viewing the Claudio art display from a web site? The person in the comforts and anonymity of the home? The web surfer who stumbles upon an offensive web site? The primary problem with regulation of speech on the Internet is that enforcement is a practical impossibility, because of the global and transnational nature of the Internet.[83] In effect, a captive audience scenario in cyberspace would force operators to censor out information which is admittedly legal, yet offensive, works.

The problem lies with the captive audience doctrine itself. While in theory it has been meant to protect unwilling viewers, the contours of the captive audience doctrine remain unsettled.[84] The only limitation enunciated by the Supreme Court as to the breadth of the captive audience doctrine is that it a person can “avert the eyes.” However, to what extent does the “avert one’s eyes” doctrine no longer a burden? Is it reasonable that a federal employee avert her eyes in order to prevent seeing Claudio’s display every time she enters the federal building? Is she captive if she happens to look up to see the display on the wall? A commentator raised a similar problem where a person shouts anti-Semitic epithets to a Jewish man walking down the street.[85] The man ignores the remarks, and proceeds to his destination.[86] Is the man captive? Or, is the mental “tuning out” equivalent to the “avert one’s eyes”?[87] The captive audience doctrine remains silent as to these types of scenarios. As a result, when art should be the highest protected form of expression under the First Amendment,[88] it is restricted by the confines of the captive audience doctrine.[89] This makes the doctrine an uneasy fit under a constitutional scheme designed to promote artistic freedom and free expression.

Thus, the captive audience doctrine’s lack of definition, inability to apply effectively with contemporary technology issues, and failure to prevent legitimate free expression from censorship necessitates the doctrine’s extinction.

Conclusion

            The captive audience doctrine, borne out of the limitations on constitutional protection for free expression, is an overreaching attempt by the courts to overprotect unwilling observers from viewing that free expression. In light of the limited case law on the captive audience doctrine, and of the existing case law, the complete elimination of doctrine would not be entirely out of order. The captive audience doctrine hearkens back to a day when protection of unwilling viewers from commercial and offensive speech. However, its application today in an ever-changing and highly informational society makes the captive audience doctrine a legal anachronism.

Brent Yonehara, originally published at: http://yonaxis.blogspot.com/2013/05/the-captive-audience-doctrine-return-to.html (May 15, 2013).

        [1] See John Henry Merryman & Albert E. Elsen, Law, Ethics and the Visual Arts 439 (3d ed. 1998).

        [2] Mein Kampf, vol. I, ch. X (1925), available at http://www.stormfront.org/crusader/texts/mk/mkv1ch10.html.

        [3] See generally, Merryman & Elsen, supra note 1, at 407-50 (chronicling various censorship movements throughout history from the Byzantine and Renaissance periods to the regimes of Hitler and Stalin of the last century).

        [4] See, e.g., Pat Buchanan on the Issues: The Internet Brigade, The Culture War, available at http://www.buchanan.org/000-c-culture.html (“we Americans are locked in a cultural war for the soul of our country”).

        [5] See Laurence Tribe, American Constitutional Law § 12-19, at 948 (2d ed. 1988); accord Rodney A. Smolla, 1 Smolla & Nimmer on Freedom of Speech § 5:1, at 5-2 (3d ed. 2001).

        [6] See Ernoznik v. City of Jacksonville, 422 U.S. 205 (1975). The Court observed:

The plain, if at times disquieting, truth is that in our pluralistic society, constantly proliferating new and ingenious forms of expression, “we are inescapably captive audiences for many purposes.” Much that we encounter offends our esthetic, if not our political and moral, sensibilities. Nevertheless, the Constitution does not permit the government to decide which types of otherwise protected speech are sufficiently offensive to require protection for the unwilling listener or viewer. Rather, . . . the burden normally falls upon the viewer to “avoid further bombardment of [his] sensibilities simply by averting his eyes.”

Id. at 210-11.

See also United States v. Playboy Ent. Group, Inc., 529 U.S. 803 (2000), where the Court noted:

Our precedents teach these principles [w]here the designed benefit of a content-based speech restriction is to shield the sensibilities of listeners, the general rule is that the right of expression prevails, even where no less restrictive alternative exists. We are expected to protect our own sensibilities “simply by averting our eyes.”

Id. at 813.

        [7] See Smolla, supra note 5, at 5-4.

        [8] See Philip T.K. Daniel & Vesta A.H. Daniel, A Legal Portrait of the Artist and Art Educator in Free Expression and Cyberspace, 140 Ed. Law Rep. 431, 433 (arguing that strict liability and lack of constitutional protections on the Internet inhibit creative expression and art education in cyberspace).

        [9] See Laura L. Stapleton & Matthew McMurphy, The First Amendment and Related Issues 13 (Dec. 2000), (visited Feb. 17, 2002) available at http://www.jw.com/articles/details.cfm?articlenum=119.

        [10] See Marcy Strauss, Redefining the Captive Audience Doctrine, 19 Hastings Const. L.Q. 85, 86, n.6 (1991).

        [11] See Louis D. Brandeis & Samuel D. Warren, The Right to Privacy, 4 Harv. L. Rev. 193, 195 (1890).

        [12] See Strauss, supra note 10, at 86; Brandeis & Warren, supra note 11, at 210-11. Brandeis & Warren never specifically discuss a right not to see offensive art, but discuss the right of privacy as one which should be protected on very broad terms under the laws.

        [13] See Strauss, supra note 10, at 86.

        [14] Cohen v. California, 403 U.S. 15, 21 (1971).

        [15] The Court rejected a captive audience theory inside one’s private residence. See FCC v. Pacifica Foundation, 438 U.S. 726, 748-49 (1978). In Pacifica, a person listening to a radio broadcast of comedian George Carlin’s “Seven Dirty Words” performance was not deemed a captive listener because the listener could have simply turned off or changed the radio station. Compare Frisby v. Schultz, 487 U.S. 474, 485 (1988) (“There is simply no right to force speech into the home of an unwilling listener”); Rowan v. United States Post Office Dep’t, 397 U.S. 728, 736 (1970) (“In today’s complex society we are inescapably captive audiences for many purposes, but a sufficient measure of individual autonomy must survive to permit every householder to exercise control over unwanted mail”).

        [16] Schenk v. Pro-Choice Network, 519 U.S. 357, 383 (1997) (“There is no right to be free of unwelcome speech on the public streets . . . .”) (Scalia, J., concurring in part and dissenting in part).

        [17] 413 U.S. 15 (1973).

        [18] The Miller test is: (a) whether the average person, applying contemporary community standards, would find that the work, taken as a whole, appeals to the prurient interest; (b) whether the work depicts or describes, in a patently offensive way, sexual conduct specifically defined by the applicable state law, and (c) whether the work, taken as a whole, lacks serious literary, artistic, political, or scientific value, (a) whether the average person, applying contemporary community standards, would find that the work, taken as a whole, appeals to the prurient interest; (b) whether the work depicts or describes, in a patently offensive way, sexual conduct specifically defined by the applicable state law, and (c) whether the work, taken as a whole, lacks serious literary, artistic, political, or scientific value. Id. at 24-25.

        [19] See Eugene Volokh, Freedom of Speech and Appellate Review in Workplace Harassment Cases, 90 Nw. U. L. Rev. 1009, 1023 (1996).

        [20] See Dawn Johnson, It’s 1996: Do You Know Where Your Cyberkids Are? Captive Audiences and Content Regulation on the Internet, 15 J. Marshall J. Computer & Info. L. 51, 62 (1996).

        [21] 403 U.S. 15 (1971).

        [22] Id. at 16-17.

        [23] Id. at 15.

        [24] Id. at 21.

        [25] Id.

        [26] Id. at 25.

        [27] 424 F.2d 988 (1st Cir. 1970), cert. denied, 400 U.S. 903 (1970).

        [28] Id. at 989.

        [29] Id. at 989-90. The court remarked in closing, “With all due respect, this is a case that should never have been brought.” Id at 991.

        [30] Id. at 990.

        [31] 836 F. Supp. 1230 (E.D.N.C. 1993), aff’d, 28 F.3d 1208 (4th Cir. 1994).

        [32] Id. at 1232-33. The Claudio judge made little effort to hide his apparent disgust for the painting with comments like “visual horror” and “inarticulable inappropriateness” to describe the painting littered throughout the ruling. Id. at 1232, 1235.

        [33] Id. at 1232.

        [34] 759 F.2d 625 (7th Cir. 1985), cert. denied, 474 U.S. 1007 (1985).

        [35] Id. at 627. Aristophanes was an ancient Greek playwright. Lysistrata is a comedy in which Spartan and Athenian women go on a sex strike to end the Peloponnesian War. See Merryman & Elsen, supra note 1, at 494.

        [36] 759 F.2d at 627.

        [37] Id. at 628.

        [38] Id. at 629.

        [39] Id. at 630.

        [40] See Holocaust Info.net, Hitler’s Role in the Persecution of the Jews By the Nazi Regime, (visited Apr. 26, 2002), available at http://www.holocaust-info.net/long1.html. Hitler used terms such as “removal,” “resettlement,” “evacuation,” and “extirpation” to camouflage the genocide of the Jews. Id.

        [41] See, e.g., United States ex rel. v. Radich, 385 F. Supp. 165, 179 (S.D.N.Y. 1974); Papish v. Univ. of Mo., 410 U.S. 667, 670 (1973); Gooding v. Wilson, 405 U.S. 518 (1972); Cohen v. California, 403 U.S. at 15; Street v. United States, 394 U.S. 576, 592 (1969).

        [42] 385 F. Supp. at 179.

        [43] See 424 F.2d at 989; 836 F. Supp. at 1235.

        [44] See 759 F.2d at 632.

        [45] See Marcus C. Johnson, Let Freedom Reign, 53 Rutgers L. Rev. 485, 493-94 (2001) (commenting on how judges often find against artists if the artwork tends to lack political speech, which many jurists and commentators consider vital for First Amendment protections); Daniel Mach, The Bold and the Beautiful: Art, Public Spaces, and the First Amendment, 72 N.Y.U. L. Rev. 383, 411-12 (1997) (commenting that because political speech is necessary to the First Amendment mission, judges will often deny protection to the artwork if its viewpoint lacks a political message).

        [46] See Volokh, supra note 19, at 1023.

        [47] See Mach, supra note 21, at 410.

        [48] See Hector Feliciano, The Lost Museum (Dec. 1998), (visited Mar. 10, 2002) available at http://www.bparis.com/newsletter1464/newsletter_show.htm?doc_id=6472&attrib_id=1947.

        [49] See Roger Griffin, Nazi Art: Romantic Twilight or Post-modernist Dawn?, (visited Mar. 10, 2002) available at http://www.brookes.ac.uk/schools/humanities/Roger/NAZIART.htm, (reviewing Keith Hartley, The Romantic Spirit in German Art 1790-1990, 18 Oxford Art J. 103-7 (1995)).

        [50] Id. The rejuvenation of Volksgemeinschaft coincided with the elimination of “degenerate” art, and included works which either depicted or were created by Jews, gays, communists/socialists, physically or mentally handicapped, and various “asocial” categories, including swing-music fans. Id.

        [51] See Merryman & Elsen, supra note 1, at 439.

        [52] See id. Representative Dondero was trained as a lawyer, and had no training as an art critic or in art theory or history. Id.

        [53] See Hellmut Lehman-Haupt, Art Under a Dictatorship 78 (1954), in Merryman & Elsen, supra note 1, at 433. There was no specific definition for “degenerate” art, but obviously anything that did not propagandize the Nazi political and cultural machines fell into this category.

        [54] See Griffin, supra note 49.

        [55] See Merryman & Elsen, supra note 1, at 439-40.

        [56] Compare William Hauptmann, The Suppression of Art in the McCarthy Decade, Artforum (Oct. 1973), at 48-52, in Merryman & Elsen, supra note 1, at 440 (Dondero said, “modern art is a term that nauseates me. No one is attempting to stifle self-expression, but we are attempting to protect and preserve legitimate art as we have always known it in the U.S.”), and Lehman-Haupt, supra note 54, at 433 (Hitler argued that modern art attacked the culture and national art treasures of Germany).

        [57] See Merryman & Elsen, supra note 1, at 442. Hitler’s propaganda chief, Joseph Goebbels, systematically attacked the Bauhaus art form as anti-German. See Oskar Schlemmer, Letter to Minister Goebbels (1933), in Merryman & Elsen, supra note 1, at 438. William Randolph Hearst, closely aligned with Dondero, used his empire of newspapers and magazines to attack modern art as communist influenced artwork. See Merryman & Elsen, supra note 1, at 442.

        [58] The Claudio court claims to rely upon United States v. Kokinda, 497 U.S. 720, 725 (1990), as the basis for its decision, but that case was decided by a plurality of the Court.

        [59] See Stapleton & McCarthy, supra note 9, at 14.

        [60] Id.

        [61] 836 F. Supp. at 1235.

        [62] Id. at 1235 (“[The display] was so large and situated in such a location that anyone entering the building had to look at it”).

        [63] Id.

        [64] 759 F.2d at 632.

        [65] See Capitol Square Review Advisory Board v. Pinette, 115 S. Ct. 2440, 2448 (1995).

        [66] Id. (Scalia, J., concurring).

        [67] Id. at 2450.

        [68] Claudio v. United States, 836 F. Supp. 1219, 1222, aff’d, 28 F.3d 1208 (4th Cir. 1994).

        [69] 424 F.2d at 990.

        [70] 241 F.3d 1067 (9th Cir. 2001), cert. denied, 122 S. Ct. 346 (2001).

        [71] Id. at 1069-70.

        [72] Id. at 1070. One of the banned works was a sculpture depicted a large, nude woman lying on a flat surface; her backside is to the observer. Id. at 1072. Another banned work was a series of linoleum prints which depicted a nude couple in silhouette and outline form against a variety of backdrops from post-war Germany, and in a variety of poses and embraces. Id.

        [73] Id. at 1082, n.16 (“Given the location . . . of the banned works, we find no merit in the city’s theory that children and/or city employees were a captive audience”).

        [74] Id. at 1081.

        [75] 424 F.2d at 991.

        [76] See supra note 16.

        [77] See Strauss, supra note 10, at 104 (quoting Melville Nimmer, The Freedom of Speech, 1-33 (1984)).

        [78] See Leslie Gielow Jacobs, Is There an Obligation to Listen?, 32 U. Mich. J.L. Ref. 489, 503-4 (1999).

        [79] Id. at 539-40 (arguing that there is an obligation to listen to speech, even if that speech is offensive).

        [80] Id. at 541-42.

        [81] See Strauss, supra note 10, at 101-3 (arguing that because there are no limitations on the captive audience doctrine, there are practical problems with determining the context of the doctrine).

        [82] See Lawrence Lessig, Cyberspace Prosecutor, Feb. 21, 2000, (visited Mar. 19, 2002), available at http://lessig.org/content/standard/0,1902,10885,00.html. The Internet was designed to allow a free flow of information. Id.

        [83] See D. Johnson, supra note 20, at 90-93 (arguing that the Internet cannot be regulated because it is a global computer network).

        [84] See Mach, supra note 45, at 409-10.

        [85] See Strauss, supra note 10, at 103.

        [86] Id.

        [87] Id. But see Richard Delgado, Words That Wound: A Tort Action for Racial Insults, Epithets and Name Calling, 17 Harv.-C.R.-C.L. L. Rev. 133, 175 (1982) (arguing that racial insults make an audience captive, whereas one cannot avert their ears).

        [88] See Marci A. Hamilton, Art Speech, 49 Vand. L. Rev. 73, 109-10 (1996) (“No less than any other mode of expression encompassed by the Speech Clause, art is the lifespring of liberty in the face of representative democracy”).

        [89] See Mach, supra note 45, at 408-9.

CITIZENS UNITED v. FEC: THE CORRUPTION OF THE AMERICAN POLITICAL PROCESS THROUGH INDEPENDENT CORPORATE EXPENDITURES

By Brent T. Yonehara

Introduction

There are myriad reasons on how corporate special interests have decimated the American political system. Jack Abramoff traded gifts for votes and tax breaks in a scandal that rocked Congress in 2005.[1] Big Tobacco contributed $46.7 million to defeat a recent California ballot measure to tax cigarettes to fund cancer research.[2] In order to fully explore this topic, an entire treatise could be prepared. However, for brevity, this essay is limited in scope to the narrower topic of independent corporate expenditures and its corruptive influence on the political process as illustrated by the recent U.S. Supreme Court ruling in Citizens United v. FEC.[3] The following is a discussion of three reasons why the political process has not been enhanced as a result of the Citizens United ruling. Part II argues independent corporate expenditures have corrupted the political process. Part III argues free speech rights have been undermined (and not strengthened) as a result of Citizens United. Part IV argues that electoral integrity has been damaged as a result of Citizens United. Parts II-IV begin with arguments in favor of independent corporate expenditures, followed by arguments supporting the main proposition that the American political process has been corrupted by independent corporate expenditures. Part V concludes that corporate special interests do not enhance, but rather corrupt the American political process.

  1. Independent Corporate Expenditures Corrupt the Political Process

Citizens United held that a corporation may independently contribute money to a political cause as a matter of its First Amendment guaranteed right of free speech.[4] The legal theory of First Amendment free speech protection is premised on the U.S. Constitution’s guarantee that “Congress will make no law . . . abridging the freedom of speech . . . .”[5] Political speech rights are fully protected under the Constitution.[6] As such, the Citizens United court determined that the only corporate political speech (i.e., independent expenditures) which could be constitutionally limited was speech that amounted to quid pro quo corruption.[7] Corporate political speech outside of a quid pro quo context is fully protected by the First Amendment.[8] Here, Citizens United was a corporation which produced a documentary, Hillary: The Movie, highly critical of the presidential candidacy of former Senator Hillary Rodham Clinton.[9] Through its voice-over narration and critical interviews, it left little doubt that the movie was an express advocacy against a possible Hillary Clinton’s presidency.[10] The Court held that any type of speech, outside of quid pro quo corruptive speech, which interferes with the corporate free speech rights is inconsistent with the constitutional protections guaranteed by the First Amendment.[11] As the Citizens United majority wrote, it would be “stranger than fiction . . . to make political speech . . . a crime.”[12] As such, expenditures as speech should be given the highest level of constitutional protection because its denial would undermine the very tenets of the First Amendment’s guarantee of free speech.[13] Furthermore, Citizens United upheld the requirement that the funds are properly disclosed in accordance with federal law.[14] According to the Court, disclosure requirements allow the necessary transparency so informed decisions can be made during the electoral process.[15]

However, government should work vigorously to prevent corruption in the body politic because it is a compelling government interest.[16] Either by design or by coincidence, Citizens United has allowed corporate special interests to freely inject millions of dollars into the campaigning process, thus corrupting the political process.[17] American legal history is replete with Supreme Court decisions enforcing Congressional attempts to limit corruption in elections or the electoral process.[18] It is a cold, hard truth that electoral campaigns are expensive.[19] Since politicians require money in order to run a campaign, it would be expected that they raise as much money as possible. This is where corporate special interests enter the picture. Prior to Citizens United, corporate special interests could only independently contribute those amounts of money consistent with federal or state restrictions.[20] After Citizens United, corporate special interests can now contribute unlimited amounts of money for a political cause under the guise of First Amendment protection.[21] Additionally, disclosure requirements are meaningless where a large sum of money can enter the political process, but the contributor can remain hidden behind the Byzantine web of loopholes governing super political action committees (“Super PACs”).[22] Transparency means little if disclosure of these independent contributors is immediate and publicly accessible.[23] In this regard, Citizens United created an atmosphere where corporate interests can throw a tremendous amount of money into the political process.[24] This also represents a very small number of wealthy special interests with the resources to fund a well-financed campaign.[25] This, in turn, has created an aura of corruption because there is an inferred reason for the influx of money – namely, to influence political decision-making.[26] As the Supreme Court noted: “corruption is a subversion of the political process . . . and the hallmark of corruption is the financial quid pro quo: dollars for political favors.”[27] As such, independent corporate expenditures have had a corruptive effect on the political process, only amplified by the Citizens United case.

Citizens United Undermines, Not Strengthens, Free Speech Rights

Citizens United solidified the proposition that a corporation’s political speech cannot be suppressed.[28] Citizens United reinforced the idea that corporations are “persons,” and as such, have the same rights under the U.S. Constitution.[29] By extension, a corporation, as “a person,” may exercise its free speech rights by using independent expenditures for advocating for or against various issues in which it feels compelled to do so.[30] The Citizens United court built its rationale around the decision in Buckley v. Valeo,[31] where the Court held limitations on expenditures to one’s own campaign violated the First Amendment.[32] Prohibiting independent corporate expenditures would be a ban on free speech itself.[33] Furthermore, the Citizens United Court postulated that the Constitution never explicitly denied free speech rights to an association of persons – i.e., a corporation.[34] The Court compared the Frank Capra classic Mr. Smith Goes to Washington to Hillary.[35] Both films were produced by corporations with a clear, critical political message.[36] The only difference between the films was that the former was a work of fiction and the latter was not.[37] The Court opined that if corporate political speech, in the form of independent campaign expenditures, was suppressed, Mr. Smith would have been banned from distribution.[38] Therefore, the Court decided independent corporate expenditures were fully guaranteed by the First Amendment.[39]

However, the First Amendment’s right to free speech has never been absolute under all circumstances; on the contrary, there are many limitations to free speech given the context and the players involved.[40] Moreover, speech, either spoken or symbolic, is stated by a living person. Corporations are not people.[41] Of course, corporations are necessary for living persons to transact business in their daily lives.[42] Nevertheless, the Constitution was not written by a group of corporations; on the contrary, it was written by a group of living, breathing natural persons – people with thoughts, feelings, and beliefs.[43] A corporation is a legal fiction borne out of the necessity to assist people in their economic interests or pursuits of happiness.[44] As such, “corporate speech is [] derivative speech . . . [or] speech by proxy.”[45] A corporation cannot burn a flag in protest of national politics.[46] A corporation cannot wear a jacket embroidered with a profanity and walk into a public square to protest an unjust war.[47] Only a natural person can do these things.[48] But because corporations are allowed to the same political speech as those of the common person, independent corporate expenditures have overwhelmed the political forum.[49] These huge amounts of expenditures may appear to be legitimate political speech, but in practice, it works to drown out all other political campaigning speech.[50] In this respect, the free speech of corporate special interests undermines the free speech rights of those individuals who do not have the ability to contribute vast amounts of money.[51] Those with the ability to spend the most money can speak the loudest when it comes to free speech – and this arguably would violate the Constitution’s Equal Protections Clause in that the laws are to be evenly applied to all “persons.”[52]

Corporate Special Interests Have Damaged Electoral Integrity

Justice Antonin Scalia, who voted with the Citizens United majority, made two observations when discussing the landmark case.[53] First, if people are dismayed by the political speech in political advertisements they should just simply “turn off the TV.”[54] Continuing his argument, most voters are savvy enough to shut out campaign ads which they do not agree with.[55] Scalia further postulated that protecting the electoral process cannot be combatted by placing limitations on political speech.[56] Attacks on speech are still a restriction on speech regardless of who the speaker is.[57] Should the Democratic Party or Republican Party be banned from advertising on behalf of each party’s candidates in each election simply because each is a corporation?[58] Scalia believes not, and further surmises that speech cannot be limited based on speakers because the First Amendment was not written directed toward speakers, but rather the speech.[59] Scalia’s second point was that if there was any criticism of the Citizens United case it should not be directed toward the Supreme Court but rather Congress, whose members are constitutionally vested with making laws to directly combat the issue of special interest money in elections.[60] The Supreme Court can only interpret the case in light of the Constitution and cannot legislate.[61] Therefore, Congress should enact a law to change the current electoral system – incidentally, the same system which Congress created.[62] In other words, the electoral process is created by Congressional authority and not by Supreme Court opinion.[63] As such, its integrity is dictated by the laws enacted by Congress.

However, while Justice Scalia has a compelling argument in favor of the Citizens United ruling, simply turning off a television does not comport with the reality of how today’s voter obtains information. One cannot simply turn off the television especially when political speech can be viewed from a variety of technological media, including a computer, smartphone, or tablet, as well as more traditional media like a radio or magazine.[64] The ecosystem in which political speech exists will be reduced to nothing more than an auction, where the bidder who speaks with the most amount money wins.[65] Additionally, regulating electoral integrity is not predicated on deoxygenating a vibrant and thriving First Amendment heritage.[66] An even-handed restriction on speech has been deemed necessary if to protect the integrity of the electoral process.[67] Justice John Paul Stevens, the lead dissenter in Citizens United, wrote in his concurring opinion in Austin v. Michigan Chamber of Commerce that regulatory electoral laws are designed as such to prevent the creation of so-called “political debts.”[68] Government has a compelling interest in ensuring that there is no undue influence upon politicians from outside interests.[69] In doing so, Government, in its role as regulator of the political process, can achieve equilibrium by narrowly tailoring a restriction on speech in order to uphold electoral integrity.[70] Independent corporate expenditures do not have to be completely banned; nay, this itself would be a violation of free speech.[71] Yet, expenditures can be limited in amount or by the speaker in a manner that would not obstruct the First Amendment and still protect electoral virtue at the same time.[72]

Conclusion

Let it be clearly stated: this essay does not advocate for burdensome regulation on the freedom of free speech.[73] Free speech, as both a commonly understood principle and a well-analyzed corpus of legal jurisprudence, is a constitutionally-protected right. As a matter of constitutional law, it is an area which the Supreme Court must aggressively safeguard against unnecessary regulation, as opposed to another area of law, say, for example, torts or contracts which can rely on market forces to dictate legal behavior.[74] However, corporate special interests should not be allowed free reign to expend unlimited amounts of expenditures in the name of political speech.[75] Citizens United created an electoral Berlin Wall with permissible free speech on one side and protection of the electoral process on the other. In practice, a new Cold War has emerged with the advent of Super PACs and unlimited money from special interests. In 2008, $37 million was spent on independent expenditures.[76] In 2012, two years after the Citizens United ruling was issued, more than $181 million has been spent so far, and there are still more than three months left in the presidential campaign season.[77] Free speech is one thing; however, a tsunami of speech from one player which drowns out speech from all others does little to promote a dynamic forum for the First Amendment except for those few wealthy corporate special interests.[78] In fact, it reduces electoral integrity as the influx of money into the political process will cause voters to lose faith in our electoral system.[79] Exemplifying this concept is the U.S. Senate’s failure to pass the DISCLOSE Act just earlier this month.[80] When the 1st Baron Acton proclaimed that “power tends to corrupt but absolute power corrupts absolutely,” he meant it in the context of an ecclesiastical debate.[81] However, one-hundred fifteen years later, his oft-mentioned quote still holds relevancy today. Substitute “power” with “money” and it encapsulates the debate surrounding campaign finance reform. However, given the nature of American politics today, it is certain that the American political process has been severely damaged by the proliferation of independent corporate expenditures, and sadly, there does not appear to be a near-term resolution to the matter.

* B.A., Political Science, University of California, Santa Barbara, 1993; J.D., California Western School of Law, 2000.   Originally published in yonaxis.blogspot.com, http://yonaxis.blogspot.com/2013/05/this-has-nothing-to-do-with.html (May 15, 2013).

[1] See Jack Abramoff: The Lobbyist’s Playbook, CBS News, at http://www.cbsnews.com/8301-18560_162-57319075/jack-abramoff-the-lobbyists-playbook/?tag=contentMain;contentBody (publ’d Nov. 6, 2011, orig. aired on 60 Minutes on Nov. 6, 2011).

[2] See Stephen Stock, et al., The Investigative Unit Follows Prop 29 Money Trail, NBC Bay Area News, at http://www.nbcbayarea.com/investigations/The-Investigative-Unit-Follows-Prop-29-Money-Trail–156450895.html (publ’d Jun. 4, 2012).

[3] Citizens United v. Fed. Elections Comm’n, 558 U.S. ___, 130 S. Ct. 876 (2010) [hereinafter Citizens United].

[4] Citizens United, 558 U.S. at 53-54.

[5] U.S. Const. amend. I (“Congress shall make no law respecting an establishment of religion, or prohibiting the free exercise thereof; or abridging the freedom of speech, or of the press; or the right of the people peaceably to assemble, and to petition the Government for redress of grievances”).

[6] Citizens United, 558 U.S. at 76, citing First Nat’l Bank of Boston v. Bellotti, 435 U.S. 765, 784 (1978).

[7] Id., 558 U.S. at 93. Quid pro quo corruption is defined as corruption where campaign money is traded for political favors. Id. at 29.

[8] Id. at 43.

[9] Citizens United, 558 U.S. at 2.

[10] Id. at 57-58.

[11] Id. at 89-90.

[12] Id. at 56.

[13] Id.

[14] Id. at 55.

[15] Id. (Kennedy, J.) (“This transparency enables the electorate to make informed decisions and give proper weight to different speakers and messages”).

[16] See Davis v. Fed. Elections Comm’n, 554 U.S. 724, 741 (2008); see also Citizens United, 558 U.S. at 75 (Stevens, J., dissenting) (“Corruption operates along a spectrum, and the majority’s apparent belief that quid pro quo arrangements can be neatly demarcated from other improper influences does not accord with the theory or reality of politics.”).

[17] Lawrence Lessig, Democracy After Citizens United, Boston Review, at http://bostonreview.net/BR35.5/lessig.php (publ’d Sept./Oct. 2010) (arguing special interest funding of public campaigns has corrupted the integrity of Congress as an institution).

[18] See Calif. Med. Assn. v. Fed. Elec. Comm’n, 453 U.S. 182 (1981) (affirming law that limits corporate campaign contributions to a political committee); Fed. Elec. Comm’n v. Nat’l Right to Work Comm., 459 U.S. 197 (1982) (holding that a corporate interests are outweighed by Congressional legislation designed to root out corruption in the electoral process); Fed. Elec. Comm’n v. Mass. Cit. for Life, Inc., 479 U.S. 138 (1986) (upholding state law prohibiting independent corporate expenditures in primary elections); Fed. Elec. Comm’n v. Beaumont, 539 U.S. 146 (2003) (upholding federal law prohibiting nonprofit advocacy corporations’ independent expenditures to campaigns); McConnell v. Fed. Elec. Comm’n, 540 U.S. 93 (2003), partially overruled by Citizens United, 558 U.S. at 50 (Kennedy, J.) (upholding McCain-Feingold Act restrictions on “soft money” – expenditures used to increase voter turnout or registration); Fed. Elec. Comm’n v. Wisc. Right to Life, Inc., 551 U.S. 449 (2007) (upholding McCain-Feingold Act to ban issue ads 30 days of a federal election as long as the ad advocated election or defeat of a candidate).

[19] See Arthur Delaney, 2010 Midterm Elections To Be Most Expensive Ever: Analysis, Huffington Post, at http://www.huffingtonpost.com/2010/02/23/2010-midterm-elections-to_n_473131.html (publ’d Apr. 25, 2010; updated May 25, 2011).

[20] See Austin v. Mich. Chamber of Commerce 494 U.S. 652, 660 (1990), overruled by Citizens United, 558 U.S. at 53.

[21] See Lessig, supra note 4.

[22] See Sam Stein, Super PAC Disclosure Requirements Hot Topic of Conversation Among GOP Candidates, Huffington Post, at http://www.huffingtonpost.com/2012/01/05/2012-election-new-hampshire-primary-super-pac_n_1186413.html (publ’d Jan. 5, 2012).

[23] Id.

[24] Id.

[25] See Alan Simpson, Special Interests Distort Elections, Politico, at http://www.politico.com/news/stories/0411/53597.html (publ’d Apr. 25, 2011 4:41 AM EDT). Alan Simpson is a former Republican senator from Wyoming who co-chairs the Americans for Campaign Reform, along with former Senators Bill Bradley of New Jersey, Bob Kerrey of Nebraska, both Democrats, and Warren Rudman of New Hampshire, a Republican. Id.

[26] Id. But cf. Citizens United at 45 (Kennedy, J.) (holding that independent expenditures do not amount to quid pro quo corruption).

[27] See Fed. Elections Comm’n v. Nat’l Conservative Political Action Comm., 470 U.S. 480, 497 (1985). See also Lessig, supra note 4 (querying whether the Court should have made a dividing line between quid pro quo corruption and all other types of corruptions).

[28] Citizens United, 558 U.S. at 50.

[29] Id. at 25, citing Bellotti, 435 U.S. at 778, n. 14.

[30] Id. at 55-6.

[31] 424 U.S. 1 (1976).

[32] Id. at 58.

[33] Citizens United, 558 U.S. at 22.

[34] Citizens United at 1 (Scalia, J., concurring).

[35] Id. at 56.

[36] Id.

[37] Id.

[38] Id.

[39] Id. at 57.

[40] See, e.g., Brandenburg v. U.S., 395 U.S. 444 (1969) (limiting speech where one openly speaks of violent action against the government); Hazelwood v. Kuhlmeier, 484 U.S. 260 (1988) (limiting speech of school newspapers because school newspapers enjoy fewer First Amendment protections); N.Y. Times v. Sullivan, 376 U.S. 254 (1964) (limiting speech where a person defames another if the statement contained “actual malice”); Cent. Hudson Gas & Elec. Corp. v. Pub. Service Comm’n, 447 U.S. 557 (1980) (limiting commercial speech found constitutional as long as analysis of regulation is performed); Miller v. Calif., 413 U.S. 15 (1973) (limiting free speech protections for obscene materials based on a three-pronged test).

[41] Citizens United, 558 at 76 (Stevens, J., dissenting) (“…corporations have no conscience, no beliefs, no feelings, no thoughts, no dislikes….”).

[42] Id.

[43] Id.

[44] Id.

[45] Id. at 77.

[46] See Texas v. Johnson, 491 U.S. 397 (1989).

[47] See Cohen v. California, 403 U.S. 15 (1971), but see Snyder v. Phelps, 562 U.S.___, 131 S. Ct. 1207 (2011) (upholding an organization’s right to have its members protest on a public sidewalk as protected free speech under the First Amendment).

[48] Citizens United at 77 (Stevens, J., dissenting) (positing the question of “who” actually speaks when a corporation “speaks,” as there are a number of different actors involved in the operation of a corporation versus that of an individual).

[49] See Jessica Levinson, Citizens United Gives Free Speech a High Price, Politico, at http://www.politico.com/news/stories/0612/77647.html (publ’d Jun. 20, 2012).

[50] Id.

[51] Id.

[52] See Santa Clara County v. S. Pac. R.R. Co., 118 U.S. 394, 410 (1886) (holding that a corporation can claim the same Fourteenth Amendment equal protections as a natural person).

[53] See Jeffrey Collins, Justice Scalia on Unlimited Political Ads: Turn Off the TV, Huffington Post, at http://www.huffingtonpost.com/2012/01/21/justice-scalia-on-unlimit_n_1221080.html (publ’d Jan. 21, 2012, 3:41 PM ET).

[54] Id.

[55] Id.

[56] Citizens United at 7 (Scalia, J., concurring).

[57] Id.

[58] Id. at 9.

[59] Id. at 8.

[60] See Collins, supra note 47.

[61] Id.

[62] Id.

[63] Citizens United at 8 (Scalia, J., concurring).

[64] See Lauren Finney, The Internet vs. Citizens United, Bill Moyers, at http://billmoyers.com/2012/06/07/the-internet-v-citizens-united/ (publ’d Jun. 7, 2012).

[65] See CBS News, Ex-Justice John Paul Stevens Keeps Doubts on Supreme Court’s Citizens United ruling, CBSNews.com, at http://www.cbsnews.com/8301-250_162-57444175/ex-justice-john-paul-stevens-keeps-doubts-on-supreme-courts-citizens-united-ruling/, (publ’d May 30, 2012, 10:38 PM).

[66] See Lessig, supra note 4.

[67] See Crawford v. Marion County Elec. Board, 553 U.S. 181, 187 (2008).

[68] See Austin, 494 U.S. at 678 (Stevens, J., concurring) (“The overriding concern behind the enactment of statutes . . . was the problem of corruption of elected representatives through the creation of political debts.”)

[69] Id.

[70] Id. at 669 (Marshall, J.).

[71] See Lessig, supra note 4.

[72] Id.

[73] Id.

[74] Id.

[75] Id.

[76] See Center for Responsive Politics, Total Outside Spending by Election Cycle, Excluding Party Committees, OpenSecrets.org, at http://www.opensecrets.org/outsidespending/cycle_tots.php?cycle=2012&view=Y&chart=N#viewpt (viewed Jul. 21, 2012).

[77] Id.

[78] See Lessig, supra note 4.

[79] Id.

[80] See Dan Froomkin, Disclose Act Vote Railroaded by Mitch McConnell, Senate Dems Claim, Huffington Post, at http://www.huffingtonpost.com/2012/07/18/disclose-act_n_1683573.html (publ’d Jul. 18, 2012). The DISCLOSE Act would have required disclosure of a donor of $10,000 or more by any independent groups which spends a minimum of $10,000 on campaign ads. Id.

[81] See, e.g., John Dalberg-Acton, 1st Baron Acton, Wikipedia, at http://en.wikipedia.org/wiki/John_Dalberg-Acton,_1st_Baron_Acton (last updated Jun. 13, 2012).