2023 Fall Conference

C-IP² Annual Fall Conference

First Sale:
The Role of IP Rights in Markets

Thursday, October 12, &
Friday, October 13, 2023

Hosted in person at Mason Square
(formerly the Arlington Campus)

— Approved for 7 Hours of VA CLE —

C-IP²’s 2023 Annual Conference explores IP issues arising from major Supreme Court decisions, new licensing approaches, national security issues, and tech innovation (Metaverse, crypto, NFTs, and generative AI). Impacted doctrines include first sale, SEP and FRAND, TRIPS waiver, functional claiming, so-called patent thickets, and more. Join leading academics, practitioners, industry heads, and judges to work through the most important new developments in IP, tech, and the arts.

The conference will be held in-person only and will be recorded and posted to C-IP²’s YouTube channel.

Register Here

CONFERENCE MATERIALS

Virtual Program (coming soon)

CLE Materials (coming soon)

CONFERENCE PROGRAM

THURSDAY, OCTOBER 12, 2023

All times are in Eastern Daylight Time Zone (EDT)

11:45 AM – 12:45 PM: Registration & Refreshments
Location: Van Metre Hall Art Gallery

12:45 – 1:00 PM: Welcoming Remarks
Location: Van Metre Hall Auditorium, Room #134

- Joshua A. Kresh, Interim Executive Director, Center for Intellectual Property x Innovation Policy, George Mason University Antonin Scalia Law School (bio)
- Ken Randall, Allison and Dorothy Rouse Dean and George Mason University Foundation Professor of Law, George Mason University Antonin Scalia Law School (bio)

1:00 – 1:20 PM: Setting the Stage: The Dubious Origins of Patent Exhaustion and First Sale
Location: Van Metre Hall Auditorium, Room #134

- Seán M. O’Connor, Professor of Law, George Mason University – Antonin Scalia Law School; Faculty Advisor, Center for Intellectual Property x Innovation Policy (C-IP²); Faculty Advisor, Innovation Law Clinic (bio)

1:20 – 2:35 PM: Panel 1: What’s next for copyright and licensing after Warhol and Internet Archive?
Location: Van Metre Hall Auditorium, Room #134

In May, the Supreme Court clarified in Andy Warhol Foundation for the Visual Arts, Inc v. Goldsmith how it intends for lower courts to apply the transformative fair use test. It ruled against the Foundation’s assertion that licensing Warhol’s Orange Prince to Conde Nast for a commemorative magazine cover was fair use. The majority supported its ruling among other reasons, on the grounds that commentary or criticism that targets an original work may have compelling reason to … borro[w] from it.” That is not true when “an original work and a secondary use share the same or highly similar purposes,” especially when “the secondary use is of a commercial nature.” A few weeks earlier, in a case concerning the publishing community and the Internet Archive, the Federal District Court for the Southern District of New York likewise rejected Internet Archive’s transformativeness argument, holding that “[a]n eBook recast from a print book is a paradigmatic example of a derivative work.”

What are the implications from these decisions for traditional as well as emerging new business models for creators and users of copyrighted works?

How do these two decisions implicate various licensing arrangements, other types of format-shifting, and relevant copyright doctrines parties use to avoid license requirements (e.g. first sale)?

Are there any issues with crossover implications for related concepts/doctrines/developments in trademark or patent law that we should be alert to?

This All “C-Suite” panel of legal experts will give their perspectives on what the future holds for copyright and licensing after these and other important legal decisions.

- Kevin Amer, Chief Legal Officer, The Authors Guild; Adjunct Professor, George Mason University – Antonin Scalia Law School (bio)
- Dave Hansen, Executive Director, Authors Alliance (bio)
- Terry Hart, General Counsel, Association of American Publishers (AAP) (bio)
- Karyn Temple, SEVP and Global General Counsel, Motion Picture Association (MPA) (bio)
- Moderator: Sandra Aistars, Clinical Professor, George Mason University – Antonin Scalia Law School; Senior Fellow for Copyright Research and Policy & Senior Scholar, Center for Intellectual Property x Innovation Policy (C-IP²) (bio)

2:35 – 2:50 PM: Break

2:50 – 4:05 PM: Concurrent Panels

Panel 2A: SEP Licensing & Proposed Legislation: Is there a problem & are these the fixes? (with the Global Antitrust Institute (GAI) at George Mason University Antonin Scalia Law School)
Location: Van Metre Hall, Auditorium #134

There have been proposed legislation both in the European Commission and in the United States to address concerns about SEP licensing and litigation. One provision of specific interest in the EC proposal is that the European Patent Office would determine aggregate royalty rates for registered SEPS. A similar provision in the Standard Essential Royalty Act (SERA) in the US would lodge SEP rate setting in an independent court. While there’s obviously high interest in legislating in this space, the first question is whether there’s even a problem that needs to be fixed. This panel will address the question of whether there’s a problem surrounding rate setting, what the exact problem is, and whether the EC proposal or SERA is likely to actually fix the real problem.

- - - Jorge L. Contreras, James T. Jensen Endowed Professor for Transactional Law; Director, Program on Intellectual Property and Technology Law, University of Utah S.J. Quinney College of Law (bio)
    - Dr. Roya Ghafele, Managing Director, OxFirst; Visiting Professor, IP Law, School of Law, Brunel University (bio)
    - David J. Kappos, Partner, Cravath, Swaine, & Moore; Former Under Secretary of Commerce for Intellectual Property of United States (bio)
    - Keith Mallinson, Founder, WiseHarbor (bio)
    - Moderator: The Honorable Douglas H. Ginsburg, U.S. Court of Appeals; Professor of Law, George Mason University – Antonin Scalia Law School (bio)

Panel 2B: Copyrights and Trademarks in the Metaverse
Location: Van Metre Hall, Multi-Purpose Room #126

The metaverse and Web3 pose complex intellectual property questions that brands, courts, and scholars are just beginning to explore. Luxury retail houses partner with gaming companies; brands launch virtual fashionwear; avatars drape themselves in logos and perform popular choreographed dances; sellers auction virtual receipts that can be cashed in for tangible goods; artists create copyrightable works in the metaverse and sell them outside of it, or vice-versa; and trademark owners register their marks for virtual uses. Some of these uses of trademarks and copyrighted works also raise questions about first sale doctrine and its boundaries and exceptions. This panel will explore trademark and copyright issues in the metaverse from the perspectives of various stakeholders, building on conversations begun during the C-IP² summer roundtable.

- - - Dale Cendali, Partner, Kirkland & Ellis LLP (bio)
    - Troy Dow, Vice President & Counsel, Government Relations and IP Legal Policy & Strategy, The Walt Disney Company (bio)
    - Jon M. Garon, Professor of Law, Director of Intellectual Property, Cybersecurity and Technology Law Program, Nova Southeastern University Shepard Broad College of Law (bio)
    - Daryl Lim, Laddie Montague Jr. Chair, Associate Dean for Research and Innovation, Founding Director of the IP and Innovative Initiative, Penn State Dickinson Law (bio)
    - Moderator: Alexandra Jane Roberts, Professor of Law and Media, Northeastern University; Senior Fellow for Trademarks, Center for Intellectual Property x Innovation Policy (C-IP²) (bio)

4:05 – 4:25 PM: Break

4:25 – 5:40 PM: Concurrent Panels

Panel 3A: Expansion of the TRIPS Waiver, parallel importation, anti-diversion provision, and the potential effect of the waiver on markets for COVID-related pharmaceuticals
Location: Van Metre Hall, Auditorium #134

Last year’s waiver of the TRIPS compulsory licensing requirements for patents related to COVID-19 vaccines has raised many questions of whether it was either necessary or effective. Now, however, WTO members also are discussing whether to extend the waiver to COVID-19 therapeutics and diagnostics, a move that could have much wider ranging implications. While vaccines are typically pathogen-specific, for example, therapeutics such as antivirals are not. Is extension of the TRIPS waiver to therapeutics actually necessary? And just as importantly, does the waiver’s provisions adequately protect incentives to continue to invest in vaccines, therapeutics, diagnostics, and their underlying technologies?

- - - Dr. Walter Copan, Vice President for Research and Technology Transfer, Colorado School of Mines; Senior Adviser and Co-Founder, “Renewing American Innovation,” Center for Strategic and International Studies (CSIS) (bio)
    - Ernest Kawka, Deputy Vice President, PhRMA (bio)
    - Dr. Christine McDaniel, Senior Research Fellow, Mercatus Center at George Mason University; Nonresident Fellow, Clayton Yeutter Institute of International Trade and Finance at the University of Nebraska-Lincoln; Adjunct Faculty, The Johns Hopkins University – Paul H. Nitze School of Advanced International Studies (SAIS); Adjunct Faculty, The George Washington University (bio)
    - Eric Solovy, Vice President and Legal Counsel, Qualcomm (bio)
    - Moderator: Mark F. Schultz, Goodyear Tire & Rubber Company Chair in Intellectual Property Law & Director, Center for Intellectual Property Law and Technology, Akron Law;Senior Scholar, Center for Intellectual Property x Innovation Policy (C-IP²) (bio)

Panel 3B: SEP Licensing & FRAND Issues: Where are the hotspots?
Location: Van Metre Hall, Multi-Purpose Room #126

This panel will look at some of the interesting issues with respect to FRAND obligations, including litigation as price discovery (and the role other venues may play), royalty base vs. licensing level, the role of comparable licenses and what licenses should be viewed as comparable, whether volume discounts and/or patent pool caps are actually FRAND, and – of course – the evergreen issue of whether FRAND means that we should alter the general rules of patent law.

- - - Curtis Dodd, Chief Licensing Officer and Chief Intellectual Property Officer, Harfang IP Investment Corp. (bio)
    - Fabian Gonell, Senior Vice President, Licensing Strategy & Legal Counsel, Qualcomm (bio)
    - Dr. Tim Pohlmann, CEO, LexisNexis IPlytics (bio)
    - Timothy D. Syrett, Partner, WilmerHale (bio)
    - Moderator: Kristen Osenga, Associate Dean for Academic Affairs, Austin E. Owen Research Scholar & Professor of Law, University of Richmond School of Law; Senior Fellow for Innovation Policy & Senior Scholar, Center for Intellectual Property x Innovation Policy (C-IP²) (bio)

5:40 PM: Conference Adjourns

5:45 – 7:00 PM: Reception Co-Hosted with GMU Intellectual Property Law Society

FRIDAY, OCTOBER 13, 2023

All times are in Eastern Daylight Time Zone (EDT)

8:00 – 9:00 AM: Registration & Light Breakfast

9:00 – 10:15 AM: Panel 4: Amgen/functional claiming
Location: Van Metre Hall, Auditorium #134

This session examines functional claiming after the Supreme Court’s Amgen decision. It will focus on functional claiming in life sciences patents, along with exploring, how, if at all, the decision will impact functional claiming in software and other areas.

- Justin J. Hasford, Partner, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP (bio)
- Michael Penn, Vice President, Intellectual Property, BlueRock Therapeutics
- Joshua D. Sarnoff, Professor of Law, DePaul University College of Law (bio)
- Saurabh Vishnubhakat, Professor of Law, Director, Intellectual Property and Information Law Program, Cardozo Law (bio)
- Moderator: Mel Bostwick, Partner, Orrick Herrington (bio)

10:15 – 10:35 AM: Break

10:35 – 11:50 AM: Concurrent Panels

Panel 5A: Generative AI and human authorship
Location: Van Metre Hall, Auditorium #134

Recent and pending copyright lawsuits raise issues implicating the rights of subjects in photographic images. Meanwhile, a variety of parties have filed lawsuits or are otherwise challenging the ethics and legality of training generative AI systems on copyrighted works created by human authors without first seeking permission/paying compensation to the owners of the training materials, and the USCO is defending its decision to require human authorship as a pre-condition for copyright registration in federal litigation brought by the owner of a Creativity Machine that allegedly autonomously authored an artistic work. The USCO has also issued guidelines for submitting registration applications for works created in whole or in part using generative AI and is receiving multiple precedent-setting applications for registrations from authors working with AI tools. This panel pairs academics with some of the participants in these disputes to provide further insight and pose questions we should be considering in order to make legal and public policy decisions that are consistent with the aims of the Constitution.

- - - Keith Kupferschmid, President and CEO, The Copyright Alliance (bio)
    - Van Lindberg, Partner, Taylor English (bio)
    - Molly Torsen Stech, General Counsel, International Association of Scientific, Technical and Medical Publishers (STM); Adjunct Associate Professor of Law, American University Washington College of Law (bio)
    - John Tehranian, Paul W. Wildman Chair & Professor of Law, Southwestern Law School; Visiting Professor, UCLA School of Law (2023); Founding Partner, One LLP (bio)
    - Moderator: Sandra Aistars, Clinical Professor, George Mason University – Antonin Scalia Law School; Senior Fellow for Copyright Research and Policy & Senior Scholar, Center for Intellectual Property x Innovation Policy (C-IP²) (bio)

Panel 5B: Patent Thickets
Location: Van Metre Hall, Multi-Purpose Room #126

Much recent commentary has argued that patent thickets have delayed follow-on therapeutics from entering the biopharmaceutical market. The term “patent thicket,” however, has been used in various and often inconsistent ways. Biopharmaceutical patents also operate in a very different space than patents in any other technological field. Thus, any critical view of supposed thickets in this space must carefully distinguish not only between technologies but also between small-molecule drugs and biologics, as well as control for patent scope, the differences between drug products and drug substances, and so on.

- - - The Honorable F. Scott Kieff, Fred C. Stevenson Research Professor, George Washington University Law School, Former Commissioner, U.S. International Trade Commission; Senior Scholar, Center for Intellectual Property x Innovation Policy (bio)
    - Emily Michiko Morris, David L. Brennan Endowed Chair, Associate Professor, andAssociate Director of the Center for Intellectual Property Law & Technology, University of Akron School of Law; Senior Fellow for Life Science and Scholar, Center for Intellectual Property x Innovation Policy (bio)
    - Kevin E. Noonan, Ph.D., Partner, MBHB; Co-Founder, Patent Docs (bio)
    - Hans Sauer, Deputy General Counsel and Vice President for Intellectual Property, Biotechnology Innovation Organization (BIO); Adjunct Professor, Georgetown University Law Center (bio)
    - Moderator: The Honorable Susan G. Braden, Chief Judge (Retired), United States Court of Federal Claims; Jurist in Residence, Center for Intellectual Property x Innovation Policy (bio)

11:50 AM – 1:20 PM: Plated Lunch
Location: Van Metre Hall, Multi-Purpose Room #125

1:30 – 2:45 PM: Concurrent Panels

Panel 6A: SEP Licensing & the European Courts:   What are they doing right?
Location: Van Metre Hall, Auditorium #134

This panel will look at how courts in Europe are applying FRAND, with a primary focus on the UK courts and what they’re getting right. This panel will also consider FRAND cases from Germany and the UPC and compare the outcomes there to the cases from the UK.

- - - Ken Adamo, Principal, Law Office of KRAdamo (bio)
    - Justus Baron, Adjunct Professor of Law, Senior Research Associate, Northwestern University School of Law (bio)
    - Dr. Claudia Tapia, President, 4iP Council; Director, IPR Policy and Legal Academic Research, Ericsson (bio)
    - John Kolakowski, Head of IP Regulatory Affairs, North America; Director, Licensing, Nokia Technologies (bio)
    - Moderator: Andrei Iancu, Partner, Sullivan & Cromwell; Chairman of the Board, UCLA Technology Development Group; Senior Adviser, Center for Strategic and International Studies (CSIS), and Former Director, USPTO (bio)

Panel 6B: The Limits of First Sale in Trademark Law: Upcycling & Material Alteration
Location: Van Metre Hall, Multi-Purpose Room #126

The basic principle of first sale in trademark law provides that purchasers of genuine goods bearing others’ trademarks or trade dress are free to do what they want with them, including re-sell them as is or in altered form. But the doctrine may not protect from infringement or dilution claims the sale of products that have been materially altered or no longer meet the trademark owner’s quality control standards. Disputes over upcycling and creative uses of trademarked goods, from Chanel button jewelry and White Claw candles to MSCHF’s “Satan Shoes” (reconfigured Nikes) and “Sunday Service” (repackaged Chick-fil-A sandwiches) have brought renewed attention to the doctrine. This panel will explore those recent cases and make predictions about the future of trademark first sale.

- - - Evan Gourvitz, Counsel, Ropes & Gray LLP (bio)
    - Daniel R. Cahoy, Robert G. and Caroline Schwartz Professor, The Pennsylvania State University’s Smeal College of Business; Research Director, Center for the Business of Sustainability; Senior Scholar, Center for Intellectual Property x Innovation Policy (C-IP²) (bio)
    - Sari Mazzurco, Assistant Professor of Law, SMU Dedman School of Law (bio)
    - Moderator: Alexandra Jane Roberts, Professor of Law and Media, Northeastern University; Senior Fellow for Trademarks, Center for Intellectual Property x Innovation Policy (C-IP²) (bio)

2:45 – 3:05 PM: Break

3:05 – 4:20 PM: Panel 7: Semiconductor Supply Chain (with the National Security Institute (NSI) at George Mason University Antonin Scalia Law School)
Location: Van Metre Hall, Auditorium #134

China has made great strides in bolstering their supply chains for the same precious metals the U.S. depends on for commodity chips and advanced chips. These semiconductors are the backbone to modern society. Every person is directly affected by the supply these chips involved in our day-to-day lives. The question remains whether the U.S. is secure in its supply of these chips. This panel will address the following key themes:
– what can the U.S. government do to protect the American economy from the fallout with a potential conflict in Taiwan;
-is America and the allied commercial sector prepared for a dramatic shift in our supply chains;
-what has Congress already done, and what more must they do the shore-up, or ‘friend shore’ our supply chains?

- Vishal Amin, Head of IP Policy, Intel (bio)
- Jonathan Lang, Practice Head, Trade & Supply Chain, Eurasia Group (bio)
- Meredith Broadbent, SeniorAdvisor (Non-resident), Scholl Chair in International Business, Center for Strategic International Studies (CSIS); Member of Board of Directors, Virginia Hospital Center; Member of Board of Trustees, United States Capitol Historical Society; Member Board of Trustees, Western Reserve Academy (bio)
- Sarah Stewart, CEO and Executive Director, Silverado Policy Accelerator; Visiting Fellow; National Security Institute; Policy Advisor, Climate Leadership Council Center for Climate and Trade (bio)
- Moderator: Jamil Jaffer, Founder and Executive Director, National Security Institute; Assistant Professor of Law andDirector, National Security Law & Policy Program, George Mason University – Antonin Scalia Law School (bio)

4:20 – 4:30 PM: Closing Remarks

- Joshua A. Kresh, Interim Executive Director, Center for Intellectual Property x Innovation Policy, George Mason University – Antonin Scalia Law School (bio)

CONFERENCE SPONSORS

(Sponsors logos will be added shortly)

Sustaining Donors

— The Association of American Publishers — AbbVie — Biotechnology Innovation Organization —

— The Copyright Alliance — The Walt Disney Company — Ericsson — Motion Picture Association —

— NBCUniversal — Nokia Technologies — Novartis — PhRMA — RELX —

— Recording Industry Association of America — Via LA Licensing —

Gold Level

— Via LA Licensing —

Silver Level

— Harfang IP — Kirkland & Ellis LLP —

Valued Support