I remember the first time I laid my hands on a BIC pen. I was in junior high school and the kids down the street seemed to have stumbled over a treasure trove of them. They were . . . well . . . simply beautiful . . . as was the way they glided across the Windex-blue lined paper populating my denim-covered school binder. (yes, I stole "Windex-blue" from the L.A. Times article on Paul Newman's recent lamented death).
Who knew I was just beginning to develop an actual aesthetic (see MOMA collection here).
SI is one of the best IP blogs to appear on the scene in some time and I don't link to it nearly enough. With Blawg Review #179 I'm hoping that S.I. will begin to get the readership it deserves -- like -- a MILLION unique hits a year -- that's how essential it is to the IP practitioner.
Today, check out the great links SI organized under the following topics: Intellectual Property News and Opinion; Patents; Trade Secrets; Trademarks; Cyberlaw and the all important miscellaneous, entitled appropriately to the ballpoint pen topic, P.S.
Finally, the all-important reminder:
Blawg Review has information about next week's host, and instructions how to get your blawg posts reviewed in upcoming issues. Of particular interest to everyone interested in Intellectual Property law and policy might be the November 10th presentation of Blawg Review #185 by Global Intellectual Property Strategist Duncan Bucknell at his indispensible IP Think Tank weblog.
Of course, all those neat papers purchased in September were torn and crammed into my Pee Chee folder by the end of the term. Someday, an ode to the Pee Chee.
Why LegalTED? Because we're using 18th Century dispute resolution technology to solve 21st Century conflicts. Because we're all scratching our heads over items like the one below from SlashDot -- IBM Wants a Patent on Finding Areas Lacking Patents posting them, and then going on with our business days as if there weren't anything we could do about it -- waiting for Congress, for instance, to solve a problem that rests in our own hands.
"It sounds like a goof — especially coming from a company that pledged to raise the bar on patent quality — but the USPTO last week disclosed that IBM is seeking a patent for Methodologies and Analytics Tools for Identifying White Space Opportunities in a Given Industry, which Big Blue explains allows one 'to maximize the value of its IP by investigating and identifying areas of relevant patent 'white space' in an industry, where white space is a term generally used to designate one or more technical fields in which little or no IP may exist,' and filling those voids with the creation of additional IP."
I'm back from the State Bar Convention, in Monterey, no less, and not a single lawyer I spoke to had ever even heard of the TED Conference (except my good friend Lilys McCoy for whom I imagine I've now irrevocably disqualified myself as her mediator).
IN a time when scientists are trying to patent the very genetic code that creates life, it may not be too surprising to learn that a variety of organizations — from trade groups and legal publishers to the government itself — claim copyright to the basic code that governs our society.
Carl Malamud runs PublicResource.org, which provides the text of statutes, court decisions and construction codes at no charge.
Well, it is still a bit of a head-scratcher. Let me try to explain.
To be clear, it has been established by the United States Supreme Court (no less) that the law and judicial decisions cannot be copyrighted. They are in the public domain and can be used and reused in any way possible, even resold.
Yet, in the real world, judicial decisions and laws and regulations can be exceedingly hard to find without paying for them, either in book form or online. And that doesn’t even include quasi-official material like the numeric codes doctors are required to use when filing for Medicaid or Medicare payments or the fire safety codes that builders are required to follow.
“The law is pretty clear that laws and judicial opinions and regulations are not protected by copyright laws,” said Pamela Samuelson, a professor at Boalt Hall School of Law at the University of California, Berkeley. “That isn’t to say that people aren’t going to try.”
So the first question (other than who will be on the Steering Committee besides the few passionate advocates of transformation I've already spoken to) is this: WHAT IS THE QUESTION?
In Friday's Daily Journal, mediator and former U.S. ambassador Pierre-Richard Prosper talks about his efforts to help the Bratz/Mattel parties settle their long-running patent infringement lawsuit. Mediator Mike Young wonders about mediation confidentiality as both Prosper and counsel talk about the potential to settle the case and the way in which trial proceedings have impeded resolution.
Though the disclosures are general, I'd be cautious in talking to the press about on-going mediations, particularly where the mediator is talking to the parties nearly every day as Prosper says he is.
There's a word to the wise contained in today's appellate opinion on mediation confidentiality Rael v. Davis,expressly holding that all parties to a mediation must agree to waive confidentiality in writing and in person, not through counsel. Excerpts from the DJ article troubling Mike are below. You can read the entire article only if you're a subscriber.
September 19, 2008
DOLL DIPLOMACY
A former ambassador is called in as a mediator to help toy makers settle their expensive differences.
By Jason W. Armstrong
Daily Journal Staff Writer
RIVERSIDE - Pierre-Richard Prosper has helped guide a lot of high-stakes negotiations. His job as U.S. ambassador in charge of the secretary of state's Office of War Crimes Issues several years ago included forging agreements with foreign ministers on the return of their nationals held at Guantanamo Bay, Cuba.
Later, along with his duties as counsel at Arent Fox in Los Angeles, Prosper became an oft-tapped mediator in complex cases . . .
But he said this week his latest meditation - helping to settle a four-year federal court battle that is essentially a hair-pulling dust-up between two dolls - has proven to be one of his thorniest assignments. . . .
"We are in the midst of litigation - the fog of war," Prosper said. "Both parties firmly believe in the strength of their positions. Getting them to move from their respective corners is a major challenge."
But Prosper said he "firmly" believes "there is an agreement out there that can be reached."
"The real question is, is there the political will to reach such an agreement?" he said. "That's the harder issue."
The litigation involving the edgy, wide-eyed Bratz - dolls credited with cutting into sales of Mattel's longstanding Barbie - has been gritty: Mattel sued MGA, accusing the Bratz manufacturer of pirating its concept for the highly lucrative line by working on the idea with a Mattel employee . . .
Christa M. Anderson, an attorney for Bryant, said Prosper's persistence stood out. While she said she couldn't comment directly on his negotiations in the case, Anderson said he "worked very hard" to achieve a consensus.
"He's good at bringing the parties back to the table again and again through creative ideas and persistence," Anderson, a partner with Keker & Van Nest in San Francisco, said. "He's very diligent."
In the Mattel-MGA spat, Prosper said the parties have appeared close to an agreement on several occasions. But numerous clashes between the lawyers and sudden twists and maneuvers in the trial drove a wedge into discussions, Prosper said. He declined to discuss specific instances.
"There were a couple of times in the past weeks where we have moved closer to [an agreement], but then because of events in court its caused us to take a step back," Prosper said.
Prosper declined to comment on the negotiations, but Larian told the Wall Street Journal last week that he was "open to all different options as long as they are reasonable." He told the paper he would be willing to share with Mattel a portion of royalties from the "first generation" of Bratz dolls manufactured in 2001, but he refused to share other revenues and future sales of the line.
Thomas Nolan, lead trial attorney for MGA in the case, declined to comment on settlement talks. He is a partner with Skadden Arps Slate Meagher & Flom in Los Angeles.
John Quinn, lead trial lawyer for Mattel, also wouldn't discuss the negotiations. Quinn is a name partner with Quinn Emanuel Urquhart Oliver & Hedges in Los Angeles.
But both men said they appreciated Prosper's tenacity.
He "won't give up," Quinn said.
Nolan agreed, and said he admires Prosper's "ability to stay calm" when "everyone else around him is emotional."
In the Bratz case, for the past several weeks, Prosper said he's had almost daily in-person or telephonic meetings with the lawyers and executive officers for Mattel and MGA.
"This case has an interesting landscape that has constantly shifted, so it's required almost daily communications with the parties," Prosper said.
Prosper has been credited with successfully negotiating, along with former Secretary of State Colin Powell and others, with Serbia to hand over former Yugoslavian leader How does Prosper compare war crimes negotiations to the doll fight he's now immersed in?
"The parties are in the throes of litigation, and this is the most important thing to them," Prosper said. "But this case isn't about life or death. It's about dolls and money. There are more important things we should be spending our time and resources on."
When I prepare for an IP mediation, I take the parties' briefs and make flow charts, mind maps and checklists from them. Though your deathless prose is a joy to me as an old Lit Major, writer and literary journal editor, it's not so useful to me in getting what I need to understand about a complex commercial transaction really quickly, including the party relationships, legal and fatual issues, party interests, points of potential impasse, junctures at which party differences might be put to good negotiation advantage and similarities that might be used to smooth the way toward a reasonable settlement that makes good business sense for everyone.
Here's what I tell my litigants -- MAKE THE CHARTS FOR ME. If you're the only "side" that does this, I'm far more likely to keep YOUR CHART before me throughout the course of the negotiation. And though I do not see my primary role as a 13th juror -- particularly in cases where the lawyers have being living with the case for years -- the opinions I express -- sometimes reluctantly -- on the merits, do have an effect on the parties' decision to settle and their valuation of the case.
At PrawfsBlawg Marc Blitz pondered the privacy implications of a video game that you control with your mind. Meanwhile Sam Bayard from The Citizen Media Law Projectblogged that YouTube announced changes to its community guidelines last week, prohibiting the upload of videos inciting others to commit violent acts, giving Senator Lieberman a partial victory on terrorist videos.
On Pointwondered whether the 11th US Circuit Court of Appeals tried to cover up a particularly deplorable decision in a civil-rights case by not publishing it, only to have the videotape of a Florida police officer repeatedly tasering a handcuffed motorist showing up on YouTube - with the apparent support of the dissenting judge.
Adam Frucci noted that an anti-consumer 8,000 words update to AT&T's 2,500 pages-long customer agreement (called a "guidebook" by the company) probably won't be read by many of its customers, but it is attracting attention from regulators who may require the telecom giant to rein it in.
Mike Masnick doubted that peer review is sufficient to help the somewhat dysfunctional American patent system. Gene Quinn wrote that patent trolling has subverted the system from one protecting innovation to one simply redistributing wealth.
Susan Crawford, the founder of One Web Day, urged us to contribute to the e-Democracy Time Capsule at timecapsule.onewebday.org:
Anyone across the country and the world can contribute by adding text, images, and video that celebrates e-Democracy to an open blog. We invite you to add the following entries:
Best of the e-Democracy Web: Your favorite tools, citizen journalist site, etc. What empowers you to act online?
E-democracy heroes: Brag about your friends and colleagues- who is behind the best political technology, content, and critical policy fights today?
Legislation and Policy: What are the issues we face in delivering the best possible future for e-Democracy?
Letters to the future: How do you see the e-Democracy Web growing (or failing) in the future?
However, one law blogger is in a little bit of trouble with the Recording Industry Association of America seeking to have attorney-blogger Ray Beckerman declared a "vexatious" litigator. According to Wired'sThreat Level blog the RIAA alleges that Beckerman, one of the nation's few attorneys who defends accused file sharers, "has maintained an anti-recording industry blog during the course of this case and has consistently posted virtually every one of his baseless motions on his blog seeking to bolster his public relations campaign and embarrass plaintiffs ... Such vexatious conduct demeans the integrity of these judicial proceedings and warrants this imposition of sanctions." Read more here and visit Beckerman's blog, Recording Industry vs The People.
When I celebrate the fact that the means of production are now in the hands of the people, I'm not talking about the ten-fingers of your 13-year-old daughter (great as her uploaded videos of the family cat might be).
The Guide takes its name from its publisher and editor Ken Kobré whose textbook (below, right) has been the widest-selling text on photojournalism in the world for nearly thirty years.
I'd be excited about this new way to find quality moving journalism on the 'net whether or not my good friend journalist-mediator Jerry Lazar wasn't serving as Editorial Director -- a guy with some of the best instincts for quality journalism in the country. Here's how the Kobre Guide describes itself:
This project is an antidote to comprehensive Web video portals, such as YouTube and MetaCafe... We're focusing instead on handpicked, high-quality documentary-style journalism that is being produced primarily by major media outlets -- and frustratingly difficult for consumers to find...
We're a "curated" site (to use the latest buzzword, now that "edited" seems to have lost favor), which means that we're relying on discerning eyes and ears of people like YOU (and not search engines or web bots) to help alert and point us to the creme de la creme ...
We've already located scores of prizeworthy multimedia gems to showcase at launch, and now we're soliciting input from smart folks like you, who are in a position to know about and share the good stuff out there...
Criteria? ... Think "60 Minutes" TV newsmagazine-style journalism (NOT daily news or event coverage) -- but geared for the Web... Mainly video, but also compelling audio-slideshows, or a hybrid thereof...
In short: True (nonfiction) journalism Web multimedia stories of the highest professional quality...
Every time I ask attorneys to identify the single worst drawback of arbitration, their overwhelming answer is “no appeal." With Arbitration comes the nightmare of losing for no good reason with no possible fix.
In March of this year, the Supreme Court closed the door to the best solution, finding that contracting parties who choose arbitration lack the power to write appellate review into their arbitration agreements. Hall Street Associates, LLC v. Mattel, Inc. (2008) __U.S.__, 128 S.Ct. 1396. (see opinion below)
Just last week, the California Supreme Court, addressing the very same issue under the California Arbitration Act, re-opened the door. Cable Connection, Inc. v. DirecTV.
Both the Federal Arbitration Act and the California Arbitration Act expressly provide that an award may be vacated if it is “in excess of the arbitrator’s powers.” FAA section 10; CAA section 1286.2. The question presented to both courts was whether parties may contractually define those powers by providing that arbitrators who fail to base an arbitral award on the law exceed them. The United States Supreme Court answered: “No, parties may not define those powers.” The California Supreme Court declared the opposite: “Yes, they may.”
A Tale of Two Visions
In Hall Street, the U.S. Supreme Court made the finality of erroneous awards a feature so hard-wired into arbitration's nature that it cannot be contractually averted. The California Supreme Court, by contrast, makes arbitration a malleable institution whose features may be designed by the contracting parties. For the U.S. Supreme Court, arbitration’s essential virtues are efficiency and finality. For the California Supreme Court, arbitration's essential virtue is customizability –– efficient for those who seek efficiency and reliable in its outcomes for those who crave predictability.
Last November, before either decision was issued, I mispredicted in a post at the Settle It Now Negotiation Blog that the United States Supreme Court would side with the freedom of contracting parties to protect themselves against lawless awards. I did so not only because a majority of the Circuit courts had thus far gone that way (the First, Third, Fourth, Fifth and Sixth, with the Ninth teetering hopelessly back and forth and the Second not yet heard from) but also because the power of the argument was blindingly evident:
Congress expressly said Courts may vacate when the arbitrator exceeds his power [I said]. It never prohibited the contracting parties from defining what those powers are…. What Congress said it intended was to put arbitration agreements “on the same footing” as all other agreements. That should mean “carry out what the parties contracted for” as long as their contract is neither illegal nor contrary to public policy.
This is why the U.S. Supreme Court's decision was so disappointing. It didn't deny contractual freedom on ordinary grounds of illegality or contravention of established public policy, but on the ground that “maintain[ing] arbitration’s . . . . virtue of resolving disputes straightaway” is essential. Apparently the Court feels obliged to protect this one beneficial trait of arbitration against the supposed peril of those who might use arbitration for its other benefits.
For the same reason, the California Supreme Court's decision is gratifying, particularly as it pauses to note frank mystification by what the U.S. Supreme Court has done. Before upholding the rights of people who are of legal age and sound mind to opt for the rule of law and expect the courts to honor their wishes, the Court noted that "[b]efore Hall Street, we would have had no difficulty concluding that enforcing agreements for judicial review on the merits is consistent with the fundamental purpose of the FAA [the Federal Arbitration Act].” The California Court went on to counter the notion that arbitration has any single essential characteristic -- such as finality -- explaining,
Review on the merits has been deemed incompatible with the goals of finality and informality that are served by arbitration and protected by the arbitration statutes. However, … those policies draw their strength from the agreement of the parties. It is the parties who are best situated to weigh the advantages of traditional arbitration against the benefits of court review for the correction of legal error.
Id. at 31.
Finding no reason to fear that parties favoring dependability over efficiency imperil any public interest, the California Court found it quite legitimate for "sophisticated parties in high stakes cases" to "desire . . . . the protection afforded by review for legal error" in light of their often unfortunate experience with arbitration awards that "deviated from the parties’ expectations in startling ways.” Rather than harming the institution of arbitration, the Court concluded that “the development of alternative dispute resolution is advanced by enabling private parties to choose procedures with which they are comfortable.” Id.at 33 (emphasis added).
We Dug Our Own Hole
How did we reach the point where a state court, rather than the U.S. Supreme Court, would protect the parties’ freedom to contract for a private adjudication that calls upon the rule of law? I believe that we –– the ADR community –– have done this to ourselves. Endless tracts on the benefits of arbitration tout its primary benefit (compared to litigation) as its efficiency, isolating a common characteristic of many arbitrations and universalizing it into a necessary trait of all arbitrations.
The largest private ADR provider in the world, the American Arbitration Association, saw fit to file an amicus brief in the Hall Street matter, opposing its own customers' contractual freedom on the ground that arbitration's fruits cannot properly be anything other than finality and efficiency, even if parties want it to produce something more appealing for them. As the AAA argued,
Permitting enhanced judicial review by contract would not only eviscerate the principle of finality in individual cases, but would likely transform arbitration into traditional litigation. If procedural efficiencies in arbitration were lost, and if courts increasingly intervened in the process, the value of arbitration would inevitably decline.
AAA Amicus Curiae Brief, p. 6
That efficiency and finality are necessary features of arbitration is not a new argument, and it has been made elsewhere than in the courts. Stephen Ware, the most insightful intellect in the field of Arbitration today, brilliantly decries the habit of many fellow ADR academicians to reify arbitration into an institution having necessary features apart from the contracts that create it. Responding to ADR guru Edward Brunet’s attempt to inventory the “core values of arbitration,” Ware says:
I do have one quibble with [that approach]. Unlike Professor Brunet, I do not see secrecy, arbitrator expertise, adjudication efficiency or finality as necessary values of arbitration. I see autonomy as the value that transcends those other values. Because arbitration law gives the parties autonomy, they can choose to have their arbitration be secret or not. Because arbitration law gives the parties autonomy, they can choose to have their arbitration use quick and efficient procedures or not. . Because arbitration law gives the parties autonomy, they can chose to make their arbitration final or – by having an appellate arbitration panel or expanding the grounds for vacatur – not.
It is certainly true that most parties to arbitration agreements choose to use their autonomy to advance the values of secrecy, arbitrator expertise, adjudicatory efficiency and finality. But, in my view, that does not show that these are core values of arbitration; it shows that these are core values of most of the parties who agree to arbitrate.
Brunet, Speidel, Sternlight and Ware, Arbitration Law in America, a Critical Assessment, Cambridge University Press, 2006, p. 339 The Solution is Simple -- Leave the Federal Arbitration Act in the Dust
What are the implications of the California Supreme Court rejecting this limited view of arbitration? Quite simply: it reestablishes a critically needed arbitration vehicle that the United States Supreme Court had eliminated. The addition (or retention) of this vessel to the ADR fleet does not impair the rest. Nor is our ability to use this vessel undermined by the United States Supreme Court’s limiting interpretation of its own arbitration institution –– that created by the Federal Arbitration Act. That Act does not preempt the States' ability to go in the opposite direction from the FAA, even under the auspices of identically worded legislation. Counsel concerned about preserving judicial review do not have the contractual freedom to provide for such review in contacts governed by the FAA, but they absolutely have the contractual freedom to specify that their contracts are not governed by the FAA.
The upshot: For those with California disputes, or those in states whose courts have taken their own arbitration acts in the same direction California has taken its, or for those in states whose choice of law rules permit a binding contractual provision that California Law applies (procedural geeks will know this is not so far fetched; interestingly, the Cable Connection case itself began with a motion to compel proceeding in Oklahoma) the solution is simple: draft the arbitration clause to specify that the arbitration shall be governed by the law of an appropriate friendly state [e.g. the California Arbitration Act]. Otherwise stated: Leave the Federal Arbitration Act in the dust.
The irony: This is exactly the opposite of the advice sensible counsel would have given last year for those concerned with finding refuge from erroneous awards. Last year, four appellate courts in California had said you can’t contract for review, while the majority of the Federal Circuit Courts had said you can. Even those circuits that did not allow the parties to agree to review could give the cold comfort of potential reversal for extremely bad awards under the “manifest disregard” doctrine, a doctrine that has been expressly rejected by the California Supreme Court applying the California Arbitration Act.
California the New Delaware?
Decades ago, Corporations found a refuge from the anarchy of irrational or incompetently administered corporate law when the tiny state of Delaware turned itself into a Mecca for such matters. It is not far-fetched to envision California as an analogous Mecca for Arbitration. In this fertile ground, arbitrations reviewable on the merits –– a species of arbitration the U.S. Supreme Court viewed as a platypus too weird to exist –– will be permitted to thrive.
Attorney-Mediator-Arbitrator Jay McCauley will soon be joining IP ADR as a regular blogger. We'll provide his specific IP expertise in the bio soon to be included above. Until then, here are Jay's essential credentials.
After practicing since 1980 as a Harvard Law School educated, AV rated trial and appellate lawyer, Jay McCauley turned his experience and skills to full-time mediation and arbitration in 1998. He has had extensive training at the Straus Institute for Dispute Resolution, and now teaches as an adjunct professor at that Institute. He serves on the Large Complex Case Panel as well as the Employment panel of the American Arbitration Association, where he has handled a broad range of disputes, including several whose value has exceeded $50 million. He also serves as a mediator with Judicate West, where he specializes in the resolution of complex business, employment and real property disputes.
California claims copyright to its laws, and warns people not to share them. And that's not sitting right with Internet gadfly, and open-access hero, Carl Malamud. He has spent the last couple months scanning tens of thousands of pages containing city, county and state laws — think building codes, banking laws, etc. Malamud wants California to sue him,
I remember the first time I laid my hands on a BIC pen. I was in junior high school and the kids down the street seemed to have stumbled over a treasure trove of them. They were . . . well . . . simply beautiful . . . as was the way they glided across the Windex-blue lined paper populating my denim-covered school binder. (yes, I stole "Windex-blue" from the L.A. Times article on Paul Newman's recent lamented death). 
