A couple of idiosyncratic highlights for me so far include:

Tom Lee’s empirical analysis of how consumers perceive the semantic or linguistic content of trademarks as opposed to their context (as in placement on packaging). While it only addresses certain kinds of situations–that is, situations where there is lots of context available for the consumer–it provided interesting data.

Laura Heymann’s presentation about the law’s treatment of personal names and how it does or does not resemble the regime for trademark law, with a focus on the interaction between denotative (source-based) and connotative (association-based) meanings of both types of names. Legal regulation (or lack of it) of name changes of both kinds raises fascinating issues.

Lisa Ramsey’s discussion of brandjacking on social network sites, which can lead to serious harms but maybe not the kind of harm trademark law addresses. (I wondered if it is possible to make a clean and principled distinction between impersonation of a trademark or its holder vs. a misleading association with one.)

My good friend Jessica Silbey’s analysis, based on narrative theory, of the rhetoric used by “access movements” such as Free Culture, A2K, free software activism, and the like. She finds that these protests against existing IP law ironically share certain key features of the traditional story told to support expanded IP rights.

Mark Lemley and Mark McKenna’s article, “Irrelevant Confusion,” which I think is destined to become a watershed in trademark scholarship.

James Grimmelmann’s presentation of a piece he is writing with Paul Ohm where they identify a coherent school of thought within cyberlaw they call (for now) “architecturalism,” typified by Jonathan Zittrain’s recent book.

Surely others would make different lists out of the nearly 100 papers. (Maybe someone might even pick mine!). As usual, Rebecca Tushnet is providing great live-blogging of the sessions she attends. Thanks to the organizers for an incredibly stimulating event.

1. Patents increase the cost of using tax avoidance techniques, or loopholes. One of the standard critiques of intellectual property protection is that monopoly rent raises the cost of using the protected IP. Here, that shortcoming becomes a strength: the Treasury Department and IRS seek to discourage tax dodges. The cost of a patent license, or of inventing around a patented method, will push taxpayers away from using that loophole.
2. A patent-based system of tax minimization techniques may be preferable to the current system of trade secret and quasi-trade secret protection. Patents have a number of advantages over trade secrets: they disclose the contours and limitations of the protected technique; they’re temporally limited; and they serve a “prospecting function” (with a nod to Edmund Kitch), in that patents can make available to the Service and to Congress information about problems with the code, or about the most lucrative or effective ways to decrease taxes. This dovetails nicely with the IRS’s disclosure strategy for patented tax methods.
3. Many scholars fear that clients will be lured into believing that a tax planner has the blessing of the federal government when he/she advertises a “patented method” of reducing taxes. But this argument can be turned on its head: patents are public, and clients can examine the patent to discover how effective the tax planner’s technique really is, rather than relying on the “secret sauce” approach currently employed.
4. Congress has a policy response to bad tax patents ready to hand: it can change the tax code to eliminate problematic techniques. As noted in #2, patents may help spur such changes.
5. Patent law has doctrines that can mitigate the harm from tax patents – notably, the requirements of novelty, non-obviousness, and enablement to obtain a patent. These may be more narrowly tailored tools to address tax patent shortcomings than wiping out a category of statutory subject matter.
6. Perhaps most important to us IP geeks, tax patents helpfully focus attention on the systemic shortcomings of the current patent regime. Examiners are undercompensated and often have insufficient resources; prior art is scanty and difficult to locate for many areas; and the rules for examiners and patent agents, which mandate a scientific or technical background, no longer conform to the expertise needed to assess patents in some areas. Tax patents are particularly challenging because the field is in a transitional period: as it moves from treating minimization techniques as trade secrets (private) to patents (public), the set of prior art is naturally small. Firms have kept their innovations out of the public eye for competitive reasons, and may now be reluctant to disclose them either due to fears of losing exclusivity or because they, too, may wish to obtain patents. As Kristen noted, though, this concern plagues all new fields of patented inventions, and lessens over time as the store of prior art increases.

So, food for thought. I’ll have more to say in the next couple of posts about some of the problems and tensions of tax patents. See you in the Gaslamp Quarter!

The subject matter of patents has expanded explosively since the Federal Circuit approved the patenting of software and business methods in the seminal State Street
case. Recently, patents on tax planning methods have attracted the attention of courts, practitioners, academics and Congress. Yet there are radically different views of the problem and its possible solutions among practicing lawyers in the tax and IP bars. The IP bar tends to view business method patents as an appropriate expansion of the innovation incentive. The tax bar tends to view them as permitting inappropriate ownership of tax laws that are meant to apply equally to all taxpayers. The panel will discuss the ramifications of tax planning method patents for the tax and IP bars, the implications of recent developments and the patent reform legislation under consideration,
and the role of IP law in business generally.

Yeah, I know, patents and taxes first thing in the morning, but it’s not going to be the standard dull “take turns talking about a paper” presentation – Linda is making it much more free-wheeling, sort of like a blend of “Crossfire” and “Jerry Springer.” Let’s hope there are folding chairs available. See you there!

As I wrote when the Democrats took over Congress in 2006, these are not usually partisan issues and a switch in party control did not herald much change. At the time I especially lamented that Rep. Howard Berman (D-CA), who is wonderful on many issues but a relentless promoter of MPAA positions down the line on IP and communications law, was likely to take over the helm of the main intellectual property subcommittee. He did. Now, however, Lantos’ death opens up the chairmanship of the full House Foreign Affairs Committee. The chances that Berman will ascend to this post exceed 99% and, because members can hold only one chair at a time, someone else will get his IP spot. The next in line is Rep. Rick Boucher (D-VA), whose position on Info/Law issues is just about the exact opposite of Berman in every way. Indeed, as I also said back in ‘06, there is no one else in Congress with nearly the same emphasis on balanced information policy, with a special focus on library issues and fair use.

Now, as the Ars Technica story makes clear, one should not overstate the importance of this change. Berman will still sit on the IP subcommittee. The full Judiciary Committee will still be chaired by Rep. John Conyers (D-MI) who, while not ferociously wedded to the content industries like Berman, is at least going steady with them. (Again, I like Conyers in other ways too — but Info/Law is a funny issue in Washington…) And, of course, the general inertia in Congress against reform in these areas is great. But Boucher could do some fun stuff, including holding hearings on subjects Berman would ignore (DMCA abuses anyone? Digital libraries?). Perhaps he can move bills that were DOA in a Berman-chaired committee. One more caveat: Berman can keep both chairs temporarily, so the transfer to Boucher may not occur immediately. But since Boucher and Berman both hold safe seats and it is extremely unlikely that the Democrats will lose control of the House, it will happen eventually. (And my perusal of the current committee rosters suggests that Boucher has no other juicy chairs coming his way for a long time…)

Among the many interesting papers that I got to see, some of the highlights included:

• Rebecca’s paper about the difficulty of judging “falsity” in advance, as may be required in a world of increased protection for commercial speech;

• Christine Haight Farley on interesting gender issues and a concept of the brand as a feminine entity;

• Mark McKenna’s well-reasoned argument that both sides in the “trademark use” debate are partly right and partly wrong;

• Elizabeth Townsend Gard enthusiastically launching a project to help historians and other scholars in the very complex task of ascertaining whether particular items are in the public domain;

• Dan Burk’s discussion of institutional “codification” of knowledge — converting tacit knowledge in people’s head into concrete form that others can use — and how it intersects with IP law.

The abstracts for all these papers are on the WIPIP web site, though note that they are very much works in progress (hence the name) so should not be cited or quoted and will likely change a lot before their publication. I know that mine will, thanks in part to the helpful comments I got.

But this one may take the cake: in an intriguing attempt to extend the phenomenon of peer production to further frontiers, a project called Assignment Zero is coordinating the creation of crowdsourced journalism. These folks are trying to harness peer production, and do it outside the boundaries of any existing MSM outlet, yet produce final product that resembles the coherent balanced articles we expect from reported journalism. Wired magazine (and its companion web site) hope to publish some of the final pieces. One of the first topics, naturally enough, is Beth Noveck’s concept of Community Patent Review — an application of peer production to the review of patent applications, which the Patent Office is testing out in a pilot program. (And Assignment Zero needs volunteers to help produce the story…)

So, it’s peer-produced journalism about an application of peer production in government. I’ll be eager to see the results!

There is extensive live-blogging of the event available from both David Levine and Rebecca Tushnet. Some of my personal highlights:

• Greg Lastowka considering a world where virtual information increasingly merges with real space;
• Joe Miller speculating about a rejected 1948 proposal for testing nonobviousness in patent law;
• Mark Lemley wondering about the practice of “ignoring patents”;
• Mike Madison imagining the legal ramifications if the printing press were invented by the ancient Romans (and suggesting two alternative paths, one leading to a repressive copyright-supported worldwide theocracy and the other to just about the world we now inhabit!) [UPDATE: Mike recaps his own talk here];
• Julie Cromer ruminating on the complex copyright implications of government-produced satellite imagery now used in various maps and mash-ups (and explaining a lot of cool outer space law in the process);
• Rebecca Tushnet and Lisa Ramsey discussing — and at times debating — the relationship between First Amendment and trademark principles.

Much of the proceedings eventually will be published in the Michigan State Law Review.