Apple’s iPad Design Patent Enforced

This past Tuesday, Apple obtained a preliminary injunction preventing Samsung from selling its Galaxy Tab tablet. A preliminary injunction was granted before the trial was concluded since Apple demonstrated that it would suffer probable success on the merits and irreparable harm. Interestingly, the basis for the injunction was a design patent (D504889) that Apple obtained for its iPad tablet.


Design patents only secure ornamental product attributes, so the patent term is somewhat of a misnomer since utility patents, issued for working inventions, are much more prevalent and are typically what comes to mind when the term patent is used.

For some time design patents were seen as offering little protection to their owners. The Cout of Appeals for the Federal Circuit’s decision in the Apple case, however, breathes new life into design patents.

Since design plays a large role in certain consumer product markets, for example, autos, jewelry, fashion, and consumer electronics, it seems like the courts are more willing to extend property rights to aesthetic innovations. In some markets, design is an important if not essential element of the consumer’s purchase criteria, a source of differentiation from competitors, and an important element of branding and goodwill.

Resorting to the legal system to protect designs, however, as anyone within Apple can attest, remains a lengthy, expensive and uncertain process. Apple first requested the injunction on July 2011 and only recently obtained the order to prevent Samsung from free-riding on Apple’s investments in design-based innovations.

Another important design-related intellectual property case that will be decided soon on appeal is the Louboutin red sole trademark case. This case is currently on appeal at a federal appellate court which will review the New York trial court’s decision to revoke Louboutin’s trademark for its famous and distinctive red sole. Trademarks have a dual purpose to protect consumers from confusion and to protect the property attributes of designs that have become sources of differentiation among consumers. If the New York appellate courts follow the logic of the appellate court in the Apple case, they will reverse the trial court judge and affirm Louboutin’s red sole as a validly procured property right.

Research Spotlight: Administrative Patent Levers

My most recent article, Administrative Patent Levers was accepted for publication in the Penn State Law Review. This article looks at the U.S. Patent and Trademark Office (PTO) and how they implement rules that are technology-specific and policy-oriented. This is a major departure from the PTO’s prior role since they have historically been limited to procedural rule making by the courts. The PTO’s implementation of administrative patent levers signals a potential new era of greater policy making by the PTO.

Huber Hurst Legal Studies Research Symposium

Once a year, the legal studies group at the University of Florida’s Warrington College of Business provide an opportunity for legal studies scholars to meet and share their research at the Huber Hurst Legal Studies Research Symposium. A few weeks ago, I had the honor and pleasure of serving as a discussant at the Hurst Seminar. Papers were presented on a variety of topics, including: advertising law, the Foreign Corrupt Practices Act, corporate law, tax law, international civil procedure and the deregulation of the legal profession.

A wonderful thing about being an academic is being able to travel to interesting places, like Gainseville. My wife and I enjoyed the city from the get go, stopping to dine at eclectic, fun places like Boca Fiesta. The outdoor patio at Boca Fiesta is worth visiting and their fusion cuisine tacos are out of this world. Next door, the Palomino Pool Hall offers an opportunity to spot local pool sharks and townies out for a night of leisure.

To top things off, my wife bought me a painting from a local sidewalk artist named Bill Peglar. I immediately fell in love with the painting since, to me, it perfectly represents Florida. The artist even said that he could “feel the humidity” in the painting.

Artist: Bill Peglar

Judge Rakoff Holds Bank and Regulator to a Higher Standard

The Wall Street Journal just ran a noteworthy article on Judge Jed Rakoff’s path-breaking judicial opinion.  Judge Rakoff, a federal trial court judge who sits in the Southern District of New York, recently refused to approve a settlement between the Securities and Exchange Commission (SEC) and Citibank because the settlement omits any facts that would justify its approval as one that furthers the public interest. Judge Rakoff makes known his views on the public policy implications of the case when he discusses “the transparency of financial markets whose gyrations have so depressed our economy and debilitated our lives.”

Refusing to approve the settlement would either compel the defendant to admit wrongdoing, or force the SEC to drop the case, or litigate it. By failing to approve a settlement reached willingly by both parties as a matter of public interest, Judge Rakoff has departed from a customary practice. If the decision is sustained on appeal, it might create an important legal precedent that could curtail the harmful practices that are committed by some professionals in the financial industry.

Strategically, Citibank would likely refrain from appealing the case to avoid creating binding future precedent that would apply to itself and others in the financial industry. One might think that the SEC, as a public institution charged with protecting consumers, would be more inclined to appeal the matter to actually establish the precedent.

As the Wall Street Journal article suggests, however, the SEC often has settled cases with defendants in the financial industry as a practical compromise to avoid risks and expense. It is clear, based on Judge Rakoff’s ruling, that he believes practicality and expedience were not enough to warrant subverting the public interest.

Steve Jobs: Creator and Intellectual Property Strategist

Like many others, I owe a lot to Steve Jobs. Some of the designs and intellectual property management strategies he pioneered at Apple were, and remain, the subject of my research and teaching. His work, along with that of the many talented people at Apple, continue to inspire me.

The New York Times has a nice interactive feature that allows you to view the many patents Steve Job helped usher in during his tenure at Apple. It provides a glimpse into the unique role Jobs had within Apple as a pioneering innovator and strategist.

Research Spotlight: Friends of the court: Using Amicus Briefs to Identify Corporate Advocacy Positions in Supreme Court Patent Litigation

Northwestern University’s Kellogg School of Management profiled my recent publication, co-authored with Kellogg faculty member James Conley. This work examines amicus (friend of the court) briefs submitted during U.S. Supreme Court patent litigation, and published in the University of Illinois Journal of Law, Technology & Policy.

Research Spotlight: Beyond the Board of Directors

In a Wake Forest Law Review article, FSU Law professor Kelli Alces provides a novel and intriguing recommendation to re-shape how corporations are governed in America. Her recommendation is to eliminate the board of directors as the ultimate decision-maker. From a legal realism perspective, which looks at human behavior as a driver of legal outcomes, it is worth rethinking the value and efficacy of the board as the supreme governing body in Corporate America. As professor Alces mentions:

“A firm’s investors and other influential constituents use their contract rights against the firm to influence management and monitor management more carefully than the board can to protect their interests and investments in the firm.”

Delaware corporate law and other statutes, however, require that corporations be governed by a board with some independent members. Investors and entrepreneurs who want to opt out of this structure may opt for the limited liability company, or LLC. LLCs, unlike corporations, do not require a board as the ultimate overseers of business decisions. Under LLC law, the owners may delegate or assign responsibility among themselves, or to managers.

Professor Alces’ paper is accessible on the Social Science Research Network (SSRN), here.

Epilogue: Dukes v. Wal-Mart

The dust is still settling after the U.S. Supreme Court handed down its decision in the Dukes v. Wal-Mart case. In its decision, the Court held that 1.5 million women could not be certified as a class against the retailer.

Federal Civil Procedure Rule 23(a) requires  that any party seeking class action certification must demonstrate that:

“(1) the class is so numerous that joinder of all members is impracticable,“(2) there are questions of law or fact common to the class, “(3) the claims or defenses of the representative parties are typical of the claims or defenses of the class, and “(4) the representative parties will fairly and adequately protect the interests of the class”

In the Dukes case, the lower district (trial) and appellate courts found that the evidence marshaled by the plaintiffs were indeed sufficient to allow certifying the 1.5 million female Wal-Mart employees as a class under the rules.

The evidence used to persuade the lower courts included statistical data that suggested differences in pay between men and women, anecdotal testimony from witnesses who alleged gender-based discrimination, and the social framework analysis of the plaintiff’s expert sociology witness. The social framework analysis was discussed in greater depth in a prior post on this blog.

The U.S. Supreme Court, however, held that this evidence was insufficient to meet the commonality requirement of Federal Rule 23(a). Under the Court’s analysis of relevant precedent, the Court required evidence of a systematic practice, or corporate policy that would trigger a legal issue common to all  1.5 million women in the class. The only evidence that the Court found addressed this requirement was the social framework analysis offered by the plaintiff’s expert, Dr. William Bielby. The Supreme Court, however, found the use of a social framework analysis was insufficient to demonstrate typicality. The Court said:

“Relying on “social framework” analysis, Bielby testified that Wal-Mart has a “strong corporate culture,” that makes it “‘vulnerable’” to “gender bias.” He could not, however, “determine with any specificity how regularly stereotypes play a meaningful role in employment decisions at Wal-Mart.” …

“The only corporate policy that the plaintiffs’ evidence convincingly establishes is Wal-Mart’s “policy” of allowing discretion by local supervisors over employment matters. On its face, of course, that is just the opposite of a uniform employment practice that would provide the commonality needed for a class action; it is a policy against having uniform employment practices.”

The Court then discussed that the typicality requirement is a threshold issue that can impact the results of statistics that suggest gender based discrimination.

As a practical matter, it is unlikely that any plaintiffs will be able to certify a nationwide class against a major corporation in discrimination cases unless the plaintiffs can show with sufficient evidence that typicality of harm or injury arises from pervasive managerial behavior, such as an identifiable corporate policy, or from observable and uniform practice.

On the other hand, broad and unidentifiable factors, such as tacit managerially sanctioned social norms, are not likely to satisfy the typicality requirement. In the Dukes case, the Supreme Court disregarded the theory that something as real, yet broadly conceived, as corporate culture can be used to legally establish typicality.

As discussed in the Court opinion’s syllabus:

“Respondents’ only evidence of a general discrimination policy was a sociologist’s analysis asserting that Wal-Mart’s corporate culture made it vulnerable to gender bias. But because he could not estimate what percent of Wal-Mart employment decisions might be determined by stereotypical thinking, his testimony was worlds away from “significant proof” that Wal-Mart “operated under a general policy of discrimination.”

So, even if there is some indication of a corporate culture and statistical evidence pointing to a gender-based pay gap, the courts are likely to require  direct evidence of an actual company practice that fosters the discrimination.

Supreme Court Issues Wal-Mart vs. Dukes Ruling

Today, the Supreme Court issued its much anticipated Wal-Mart v. Dukes ruling. In a few days, I’ll post a more in depth analysis of the decision, particularly as it applies to the Court’s dismissal of the plaintiffs’ central sociological theory, which alleged that Wal-Mart’s corporate culture promoted employment discrimination. The Court ultimately held that this theory was procedurally insufficient to certify 1.5 million women in a class action.

Take a look at the Court’s opinion here.

FL-GA Legal Studies Research Conference

Welcome to the informational site for the upcoming FL-GA Legal Studies Research Conference.

This inaugural conference will be hosted by The College of Business at Florida State University in October, 2011. After that, the conference  will rotate among the three other founding and participating institutions: The University of Georgia, The University of Florida and The Georgia Institute of Technology.

The event will bring together prolific and renowned legal studies in business scholars. These scholars routinely examine legal issues that confront managers who make decisions at the nexus of business and the law.

Please click on the Invitation to Register and the Conference Agenda to learn more about this exciting event.

The following list of presenters and attendees will be updated periodically, so please make sure to check back to learn more about the program.

Confirmed Presenters:

The Florida State University:

Chad Marzen, presenting: “OCIPs in the Future of the Insurance Industry: Legal and Regulatory Considerations”

Darren Prum, presenting “High Speed Rail in America:  An Evaluation of the Regulatory, Real Property, and Environmental Obstacles a Project will Encounter” (with Sarah L. Catz, University of California, Irvine)

University of Florida:

Robert W. Emerson, presenting: “Franchise Terminations: “Good Cause” Decoded”

Larry A. DiMatteo, presenting “An ‘All of the Above’ Theory of Legal Development”

The University of Georgia:

Alex Reed, presenting: “Subsidizing Hate: A Proposal to Reform the Internal Revenue Service’s Methodology Test”

Nathaniel Grow, presenting: “In Defense of Baseball’s Antitrust Exemption”

The Georgia Institute of Technology:

Seletha R. Butler, presenting: “All on Board! Strategies for Constructing Diverse Boards of Directors and Creating a Future Pipeline in a Borderless Global Marketplace”

Confirmed Attendants:

Stephen Bailey, The Florida State University

Seletha R. Butler, The Georgia Institute of Technology

Karie Davis-Nozemack, The Georgia Institute of Technology

Lucien J. Dhooge, The Georgia Institute of Technology

Larry A. DiMatteo, University of Florida

Robert W. Emerson, University of Florida

Nathaniel Grow, The University of Georgia

Chad Marzen, The Florida State University

Darren Prum, The Florida State University

Lee Reed, The University of Georgia

Alex Reed, The University of Georgia

David Orozco, The Florida State University

Bill Woodyard, The Florida State University