The Prior Art

"Patent Trolls" — with them or against them?

Folks are choosing sides—first Howrey LLP (against), and now a veteran IP executive (against). Hat tip to Joff WIld's IAM blog for this one.

Dan McCurdy's new company, PatentFreedom, is an online community for companies to get and share intelligence about the non-practicing entities some critics call “patent trolls.” Membership is limited to “operating companies” with over $100 million of revenue that’s not from licensing, enforcing, or selling patents or other intellectual property. (Such revenue sometimes comes from the sale of “products,” which can be found on the shelves of most stores not located in North Korea.)

“Patent trolls know a lot about operating companies,” McCurdy told me today. Their targets, conversely, frequently know nothing at all. “Are they the only company being approached, or one of a thousand? Who funds them? How well funded they are?”

PatentFreedom will fill that void both with its own research and by creating a community where operating companies can exchange information, anonymously, if they desire.

But in order to found the new company, McCurdy will have to split from ThinkFire, the company he co-founded with Intellectual Ventures chieftain Nathan Myhrvold in 2001. The reason? Worries about conflicts of interest.  ThinkFire has an IP consulting and brokerage practice, as well as a group that provides licensing and litigation support to companies asserting patents, many on a contingency basis. It also helps companies defend against patent-infringement claims, billing hourly, like a law firm.

Also like most big law firms, ThinkFire plays both patent offense and patent defense. But PatentFreedom’s "fight-them-trolls" business model was too much; shortly before the April 14 launch, ThinkFire’s board decided it couldn’t play both sides on this one, and decided it will spin off  PatentFreedom as a separate company. McCurdy will officially move over to PatentFreedom in July.

Says McCurdy: “ThinkFire made the decision that it was not in its clients’ best interest to constrain the kind of advice that ThinkFire might be able to give to them, simply to meet the needs of PatentFreedom.”

Fear of conflicts, and perhaps hope for a competitive edge, already caused law firm Howrey LLP to actually agitate against so-called “patent trolls,” like the one pictured above, in its ads, as The Recorder reported in March. (free reg. required)

While we talked, McCurdy tapped into his database from his home office in Pennsylvania, browsing through electronic dossiers on—get ready—94 non-practicing entities, 249 affiliates, and more than 4,700 patents they’re known to hold. (Way more than the shuttered Patent Troll Tracker!) But McCurdy says he has no grudge against NPE’s; he’d just rather beat ‘em than join ‘em.

“When I walk into a cocktail party, I feel much better about myself saying that what I do is help companies defend themselves against NPE’s, or ‘patent trolls,’ than saying ‘I attack companies with patents I bought,’” he says. “I’m not saying that NPE’s are wrong… they have every right to pursue what they’re pursuing.” But targeted companies deserve tools that “at least somewhat equalize the playing field.”

So far close to 10 companies have joined, all “household names,” says McCurdy, and all confidential. He expects up to 20 by the time he officially leaves ThinkFire in July, and 50 members by year’s end.

Annual membership starts at $50,000. (Might make you feel like a subscription to IP Law & Business is a real bargain.)

Change in comment policy

This blog turned six months old on Tuesday. Happy half-birthday!

That makes it a good time to make a change in policy. This blog has been open to comments since the start, but they've been moderated, a decision I made early on I was very new to this. (I've published every comment submitted to me, verbatim.)

Well, I just managed to annoy myself with my own policy after having to approve my own comment. The policy is unnecessary. So, I'm going to allow unmoderated comments, in the interest of generating a more vigorous public conversation and... not annoying myself.

I won't ever alter a comment in any way. I won't delete anything unless it's incredibly uncivil or somehow illegal. If I do delete part or all of a comment for one of those extraordinary reasons, I will note that I have done so. Anonymous comments are fine. Have fun!

UPDATE: I wrote this post and then didn't immediately change the setting, so several comments on last few posts went unpublished until now. They've all been published and now, Monday May 12th, the new comment policy is truly in effect. Really!

 

What I don't get about in re Bilski: Why do any financial companies support business method patents?

What I don't get about the in re Bilski case argued Thursday at the Federal Circuit is this—why is there any division at all within the financial sector? The lines are a lot fuzzier than, say, the patent reform battle in D.C., which was Big Tech v. Big Pharma but became Big Tech v. Big Pharma et al.

But why would Goldman Sachs, see recent Economist, or any other financial services business, support business method patents? Or American Express and Accenture, as Mike Masnick notes? Seems like they all stand to lose much more than they gain from patent licensing and litigation, with the threat of another non-practicing entity like DataTreasury. From an industry-wide perspective, the relatively recent arms race doesn't make sense. (and of course the big banking industry trade group came out critical of State Street). So why would any (profitable) financial company be opposed to rolling back the 1998 State Street decision that allowed business method patents?

Are there some banks that have amassed giant arsenals—the Microsoft(s) of the banking world? (Microsoft had less than a dozen patents before the 1998 State Street decision, and now has thousands, according to a former IPLB reporter who was inside the Microsoft war room a year ago.)

Is there a giant settlement, or license agreement, or some other indicator of corporate behavior that would indicate why a particular financial company has a pro-BM patent standpoint? Who are the winners and losers of the first 10 years of biz-meth patent war? Who were the aggressors, the victims? I haven't been in the patents game long enough to know, but I'd sure be interested to talk to some lawyers or bank employees or anyone who thinks they know the real story of the stance of any particular company that has a Bilski amicus brief (like maybe the one they work for.) Litigation, licensing, everything. Let's start collecting the data.

On today's oral arguments, there's legal-geek commentary from an eyewitness here (via 271 blog, with more Bilski argument links). My own article on Bilski (with extras here) focused on issues outside the legal arguments entirely, but I still like linking to it and it has a cool picture.

PTT update: Long day closing our June issue delayed today's fourth post in my four-part series on the lawsuits against and subpoena of lawyer-blogger (and, perhaps, reporter) Patent Troll Tracker. I need a real weekend but that one is coming early next week.

(download Bilski oral arguments on the Fed. Circuit site)

Is the Patent Troll Tracker a reporter?

That’s the question at the heart of a flurry of documents filed in a San Jose federal court over the  past few weeks—and while the answer won't come in the instant dispute, the debate will weigh heavily on the lawyer-blogger during the defamation case pending against him in Texas.

Rick Frenkel lays out the background:

    Starting in May of 2007, Frenkel created the PTT to report on issues of interest to the patent community and the general public. The PTT advocates reform of the patent law system; it does not “systematically attack judges, lawyers, and parties to lawsuits” as Movants claim. Initially, postings on the PTT were not signed.
    Movants’ counsel, Raymond Niro (“Niro”), a lawyer specializing in intellectual property disputes, including patent cases, has a contrary editorial viewpoint that competes with the PTT. The two attorneys have traded lively, and sometimes heated, exchanges over patent issues; Niro in interviews with the press, and Frenkel on his website. Niro publicly alleged that a death threat aimed at him and his family was sponsored by the PTT, an allegation Frenkel denied. Niro also established a reward for anyone who would unmask the identity of the person behind the PTT, raising it from an initial offer of $5000 to $10,000 and finally $15,000 before Frenkel revealed himself as the author of the PTT. The reward, we understand, remains unclaimed.

Frenkel goes on to argue he’s a “non-party lawyer-journalist,” protected from compelled testimony by "the free press and speech protections of the First Amendment to the United States Constitution, as recognized by the common law Reporter’s Privilege doctrine, and the California Shield Law." Harris’ subpoena would compel him “to provide testimony and produce documents regarding confidential sources and unpublished information" protected by those laws, and is thus unjustified.

Frenkel cites Branzburg v. Hayes, a 1972 U.S. Supreme Court case that sets the rules on when a journalist can be subpoenaed, as well as the well-established California laws. Forced testimony “would result in a serious detriment to Frenkel’s future ability to gather and disseminate news,” he writes.

“The newsgathering efforts of a reporter such as Frenkel should not be made part of civil discovery between parties without a showing of the required elements set forth above… this type of burden is exactly what the federal and state common law and constitutional protections are designed to prevent.”

“Frenkel is and was engaged in the gathering and dissemination of news about intellectual property litigation on his Patent Troll Tracker website. The fact that Frenkel chose to disseminate news on a website, as opposed to a more traditional source of journalism, is irrelevant.”

What does Raymond Niro think of all this? He scarcely knows where to begin; the brief sizzles and jumps through Frenkel's various sins, calling him unqualified, unethical, threatening, a corporate stooge for Cisco, a writer of devilish anagrams and haikus, and most importantly, not a reporter. It also draws thin or non-existent connections between Frenkel, various Fish & Richardson attorneys (one of whom who appeared at a webinar with Frenkel; as in, the World Wide Web), and Google's Head of Patent and Patent Strategy, Michelle Lee. (Frenkel says he's never spoken with Lee, who is Google's top patent lawyer; Ray Niro, by way of contrast, sends correspondence her way quite often, if you catch my drift.)

Sin #1: Unqualified. Frenkel is an engineer and a lawyer, writes Niro, but...

"Frenkel has no degree in journalism; no professional training as a reporter; and has never been employed as a reporter or journalist. He has no public relations responsibilities at Cisco.  Indeed, after he was finally forced to admit he was the author of the ‘patent troll tracker’ blog, Cisco promptly muzzled him by insisting that his blog could continue to operate 'by invitation only.'"

(Frenkel shut down his blog only after he was sued twice for defamation; Cisco denied having “muzzled” him,  writing in court briefs that Frenkel’s decision to shut the blog down was “his alone.”)

Sin #2: Uncivil. Niro doesn't care for Frenkel’s sense of humor or wordplay. The brief condemns "offensive haikus" such as these:

Scott Harris lost his job ‘cause he wanted his Fish
And to eat it too.

Pesky ethics rules. Conflicts mean nothing to trolls
Help me, Ray, Help me!

And the anagrams... Those damned anagrams! ("Niro Scavone = Naive? Or Cons?")

Sin #3: Corporate stooge. Harris/Niro/ICR write: 

He was not engaged in “gathering news” but, rather, in promulgating propaganda favorable to his employer Cisco, in utter contempt for the ethical cannons that bind real reporters.

Frenkel’s covert attempts to promote the interests of Cisco make his blog into what
amounts to a paid advertisement for Cisco – and Cisco has effectively admitted as much… The shield law does not extend to Frenkel’s puffing for a commercial business such as Cisco.

Sin #4: Unethical. Frenkel’s blog is the “antithesis of journalism," writes Niro:

"Nowhere, however, does Frenkel confront or even acknowledge the principle that there is more to being a "reporter" who is gathering and disseminating "news" than typing words into a computer and broadcasting them to all and sundry over the internet.

It is for good reason that Frenkel and Cisco don’t examine too closely (or at all) what it  means to be a "reporter."  Whatever terms might be applied to Frenkel’s activities (and some of the labels that come to mind are not very complimentary), "reporting the news" isn’t one of them.

As set forth in the Statement of Facts, above, Frenkel has no education nor training whatever as a journalist.  If he had, he would have learned that his activities in connection with his “troll tracker” blog were the diametrical opposite of what “reporters” do.

Then Niro pulls out the Society of Professional Journalists' Code of Ethics, along with an ethics code from U.S.C.’s School of Journalism, and says that Frenkel regularly violated ethical principles of journalism, by 1) writing anonymously, 2) not revealing his sources (!), 3) writing unfair headlines, 4) concealing conflicts of interest that stemmed from his position at Cisco, 5) engaging in advocacy, and 6) being annoying. They lay it all out in an amazing chart that compares "What Journalistic Ethics Require" with "What Frenkel The Self-Proclaimed 'Reporter' Actually Did." (see pages 11-12 of ICR/Harris response brief, linked below.)

But of course, nobody needs a license or a degree to be a journalist (good thing, too.) Even before the age of 'participatory media' that's now blurring all the lines, the practice of finding and verifying facts is just that—a practice, one that's open to anyone in a free country.

And "propaganda" is in the eye of the beholder. Since I would maintain that anyone can be a journalist—even if you write articles favorable to your employer, (or unfavorable!) and even if they don’t have “formal training” (which until recently nobody had).

As to advocacy, there’s a long tradition of advocacy reporting that’s not any less legitimate than "mainstream" reporting, and having an opinion and expressing it doesn’t boot you out of the realm of journalism (and what a lofty realm it sounds like in this brief!) Whether or not a reporter has followed the SPJ "rules" doesn't have much to do, in my opinion, with whether they deserve protection or not. There simply is no journalism rulebook. Ethics policies are debated all the time, and change over time.

But the most backwards argument is that to qualify as a “real”reporter Frenkel would have to reveal his sources. What an obscene misreading of these professional codes attached as exhibits. For Frenkel to reveal who sent him news tips, emails, or other correspondence would be a betrayal of trust that no responsible journalist would allow. This is the plain difference between being transparent and betraying your friends.

Putting aside the anonymity aspect, Frenkel’s blog could be thought of as quite conservative, journalistically speaking. From day one he insisted that he would refuse to receive any non-public documents; some very successful reporters have built careers on making it clear they do accept such paperwork (e.g., the leaked grand jury transcripts that led to the BALCO stories). The PTT reporting was almost entirely opinion and public documents, and those who did fact-check his research, as Patently-O author Dennis Crouch did, found it accurate.

It’s a good question how far the reporter’s privilege should be extended; not everyone with a domain name can be allowed to evade a civil subpoena. But I don’t think Frenkel’s blog was even a close call. There’s no doubt in my mind that Frenkel was reporting the news, and will continue to be if and when he re-starts his blog; more than anything, he was my competitor.

Finally, anonymity. Writing anonymously, by definition, flunks the “transparency” test of—and the modifiers are important here!—contemporary, mainstream, professional journalism. But of course there is a long and proud historical tradition of writing anonymously about public issues, from the Federalist Papers onwards, well covered in Frenkel’s brief and by advocacy groups like EFF, which has defended anonymous bloggers in court. (Is it any surprise that a blogger with a $15,000 bounty on him would start sporting the EFF Bloggers' Rights logo?)

But there's a lot more to say about anonymous speech in the Internet age; and I would argue that the Patent Troll Tracker blog, more than other publications I've seen, raises weighty questions about anonymity, media, and power in the digital age.

That's all be too much for this already long post on an already long day. There's still some sunlight in San Francisco, and I need to catch a bit of it. Tomorrow I'll publish the fourth and final installment of this Patent Troll Tracker series: anonymity, the media, and the JPEG patent.

Other posts in this series:

• Part One: Scott Harris' lawyers drop Troll Tracker deposition demand.
• Part Two: Patent Troll Tracker speaks—and vows to return.

Documents related to the Patent Troll Tracker subpoena:

• ICR/Scott Harris Motion for Discovery in Chicago litigation (February 28,2008)
• Deposition topics demanded by ICR/Scott Harris
• Rick Frenkel Declaration (April 4, 2008), see also here.
• Rick Frenkel Motion to Quash asserting reporters’ privileges (April 7, 2008)
• Rick Frenkel’s Opposition to Motion to Compel  asserting reporters' privileges (April 21, 2008)
• Cisco Systems Motion to Quash (missing cover and signature page)
• ICR/Scott Harris Response to Motions to Quash (April 22, 2008) (document quoted in this post)
• Rick Frenkel’s Reply to ICR/Harris Response  (April 29, 2008)
• Cisco Systems Reply to ICR/Harris Response (April 29, 2008)

Copyright and patent news for May 8, 2008: Big content gives an inch, takes a mile on Capitol Hill; and two patent battles at the Federal Circuit

More posts to come on the Patent Troll Tracker saga later today, but a few things other things worth reporting this morning:

• This morning, the House of Representatives passed H.R. 4279, the so-called PRO-IP bill. The entertainment industry is crowing about that one, which will give them a long-sought after prize: a government commitment  to federal copyright cops at the Department of Justice.They’ll not only get a new “Intellectual Property Enforcement Division,” but the bill would carve out money from existing grants to combat computer crime and earmark part of that to police copyright infringement. Basically, the bill is meant to put some FBI muscle behind those FBI warnings on movies and TV shows.

Government lawyers, of course, would be far cheaper copyright cops than litigators at Hollywood law firms like Munger Tolles & Olson or Mitchell Silberberg & Knupp; especially when taxpayers foot the bill. And the industry might eventually get what it really wants—enforcement of criminal penalties.

The bill was sponsored by Detroit Democrat John Conyers. Only 11 Representatives voted against the bill on the floor—seven Republicans and four Democrats, including Silicon Valley Democrat Zoe Lofgren and former Democratic presidential candidate Dennis Kucinich.

• Before they took a mile, they gave an inch: the House IP subcommittee passed H.R. 5889, an “orphan works” bill that removes the massive penalties associated with copyright infringement if the work belongs to a copyright holder who can’t be identified or found. The bill was sponsored by Rep. Howard Berman, known as Hollywood's man in Washington. The bill moves ahead to the full Judiciary Committee. If passed, it goes into effect in 2013. Freedom to use orphan works has long been a cause of library activist like Internet Archive founder Brewster Kahle.

• Speaking of the Internet Archive, it was revealed yesterday that the FBI attempted to strongarm the non-profit into handing over subscriber information through the use of a national security letter. With the help of EFF attorneys, Kahle resisted, giving us the rare opportunity to take a look at what a (redacted) national security letter looks like. The letters have gag orders attached to them, so as EFF attorney Kurt Opsahl says, ""One of the most important victories here is that we can even say this letter was received." Recorder reporter Evan Hill has the Internet Archive story on today's Law.com newswire; EFF has more documents in Internet Archive v Mukasey, 07-6346-CW (N.D. Cal).

• Tafas v. Dudas will be appealed: When the Patent Office tried to put some limits on how many times patent applicants can come back wielding continuation applications, and how many claims can be put in a single patent, a large chunk of the patent bar revolted. Big pharma led a counterstrike, sued to stop the new PTO rules from taking effect, and won. Now the PTO has said they will appeal. Is it true that "USPTO = gluttons for punishment," as one commentator opined at Patently-O?

The battle lines here are similar to the patent reform debate: tech companies say the patents are needed to prevent abuses like the Lemelson “submarine patents,” which remained hidden  for decades and then were used to sue more or less the whole economy.

• Last but certainly not least, the Federal Circuit will hear arguments today in In Re Bilski, a potentially landmark patent case where a small Pennsylvania “financial engineering” company founded by Rand Warsaw and Bernard L. Bilski is trying to get a wide-ranging patent on hedging weather risk. Warsaw and Bilski have been accused of ripping off consumers by state authorities in Minnesota, as I reported last month. Looking forward to hearing the oral arguments.

Bilski amicus briefs are collected at Patently-O.
A critical history of software and business method patents from Mike Masnick at Techdirt.

Patent Troll Tracker speaks—and vows to return.

Part Two: The life, death, and promised re-birth of the Patent Troll Tracker blog. In Rick Frenkel's own words.

This is a transcription of Frenkel's five-page declaration dated April 4, 2008, case file N.D. California 08-80075-JF.

Note his promise to return to blogging at No. 9.

Declaration of Richard Frenkel in Support of Richard Frenkel's and Cisco Systems, Inc's Motions to Quash Subpoena and Motions for Protective Order

I, RICHARD FRENKEL, declare and state as follows:

1. I am an attorney and member of the California Bar since 1999, and am licensed to practice in California.

2. I have worked at Cisco since February 2006 as an attoney in the Intellectual Property Legal Department. As of April 2007, my full title became Director, Intellectual Property—Consumer & Emerging Technologies. Among my responsibilities since April 2007 has been oversight of certain patent litigation and other disputes involving the company, and management of employees doing the same.

3. On May 9, 2007, I began a news-oriented website called “Patent Troll Tracker.” My stated goal, in my first post, was “to educate the world on how many patent cases are out there that are filed by trolls.” I continued that education by providing regular news articles about cases filed by non-practicing entities colloquially known as “patent trolls.”

4. The Patent Troll Tracker website continued until late February 2008. During these nine months, I published over 180 articles about different facets of patent litigation and “patent trolls.”

5. Patent Troll Tracker was published regularly. For example, I had a monthly installment where I would review the patent litigation statistics from the previous month, and report on litigation filed by non-practicing entities. I call this by “Troll Call.” Besides the monthly feature, I would try to have an assortment of stories, about two or three per week, focusing on different interesting cases and the debate on patent reform issues.

6. Until earlier this year, I published the Patent Troll Tracker website anonymously. In September 2007, Chicago attorney Raymond P. Niro (“Niro”) contacted me, seeking to find out my true identity. Niro is well known for writing articles and interviews describing himself as the best protector of “patent trolls,” such as a July 20, 2006 article in IP Law & Business featuring Niro, titled “Meet the Original Patent Troll.” Starting with his mid-September 2007 contact to me, Niro began giving interviews publicly decrying my website, and wrote me several emails. I responded to some of his correspondence in my own website.

7. In late November 2007, I learned that Niro was offering a $5,000 information for reward leading to my identity. Later, he increased that award to $10,000, and then to $15,000. When news stories on other websites and magazines began discussing Niro’s reward, someone evidently posted a comment on the website Slashdot, which Niro claimed to be a death threat against him and his family.

8. I voluntarily disclosed my identity on my website on February 23, 2008. My understanding is that Niro claims he did not have to pay the reward.

9. After I revealed myself to be an attorney employed by Cisco, my employer and I were sued in Texas for defamation relating to an article I posted on October 18, 2007. As a result of the defamation lawsuit and related investigations, and since the Patent Troll Tracker website is a website that is published solely by me, I decided to temporarily suspend the website. I intend to resume the publication in the near future, after taking time to attend to some of the legal matters that need my immediate attention. When I resume the publication, I intend to continue to regularly report on patent reform issues as well as patent litigation filed across the country, focusing primarily on news about patent litigation filed by people or entities that are not making any products or providing any services related to the patents. At that time, the website will again be open to the public.

10. Niro was a guest on an internet radio program (“Lawyer 2 Lawyer”) on March 27, 2008, and repeated his criticisms of my website announcing that “I am going to be taking his deposition in a case shortly.” He also made reference to the Arkansas and Texas litigation where I am a defendant along with Cisco, stating that “I know Johnny Ward (the Arkansas Plaintiff) very well and I know Eric [Albritton] (the Texas plaintiff) too.” He then commented on the litigation in a way unfavorable to me.

11. On the morning of Saturday, March 29, as I was leaving the house, I found a subpoena on my doorstep.

12. The subpoena at issue comes from a case pending in the United States District Court for the Northern District of Illinois, Eastern Division, Case No. 078-C-5081, Illinois Computer Research, LLC v. Google, Inc. A true and correct copy of the subpoena is attached hereto as Exhibit C-1. My understanding is that the subpoena was issued at the request of the Plaintiff/Counterclaim Defendant Illinois Computer Research and a third party defendant and counterclaimant Scott C. Harris (“Harris”). The Defendant and Counter-Plaintiff is Fish & Richardson P.C. (“Fish”). ICR and Harris are represented by Raymond Niro of Niro, Scavone, Haller, and Niro. The only cited relationship in the subpoena that I am alleged to have with the Chicago case is “as a close associate of Fish.”

13. It is not true that I am a close associate of Fish. I have never been employed by Fish and during my career as a patent litigator before joining Cisco, I was personally adverse to Fish in at least two cases. When I joined Cisco, I learned that Fish was adverse to Cisco in a case pending in the District of Massachusetts. Up until this case was resolved in mid-October 2007, this conflict prevented Cisco from hiring Fish.

14. In mid-November, it is my understanding that Cisco hired Fish to take over representation of Cisco in a patent infringement case pending in Delaware. Although I do not have direct responsibility for this Delaware litigation involving Fish, I have been indirectly involved in that litigation.

15. As part of the ICR/Harris subpoena, I am being asked to testify about and produce documents regarding confidential sources and unpublished information that I have used to gather and report news about patent litigation on my Patent Troll Tracker website. The subpoena also attempts to compel me to testify about and to produce unpublished documents that I obtained and used for preparation of my communications to the public on my Patent Troll Tracker website. For example, Request No. 6 asks for “Investigative materials, sources for, and procedure for the Patent Troll Tracker blog articles identified in Exhibits A to C.”

16. Throughout the entire publication of Patent Troll Tracker, I have been engaged in newsgathering activities for the purpose of reporting on news about patent litigation and the debate regarding patent reform. I am concerned that if I am forced to produce unpublished information and to testify about and produce such material that it will result in a serious detriment to my ability to gather and disseminate the news.

17. For example, many of the ideas of my articles originated from tips readers would send me about patent lawsuits that were filed, or publicy-available corporate filings by shell corporations revealing the identity of their true owners. Should I be compelled to reveal my sources for these stories, readers will be less likely in the future to provide me with such information.

18. Moreover, the subpoena deposition topics and document requests are so grossly overbroad and are not properly limited to relevant and non-privileged information in the ICR/Harris/Fish litigation. As such, complying with the subpoena would impose an undue burden on me to attempt to comply. The subpoena, which I found on my doorstep on Saturday morning, March 29, 2008, only gave me nine days to produce numerous documents and only ten days before it required me to appear for a deposition. My objections for each and every document requested are set out by my counsel, George L. McWilliams, as an exhibit to his declaration, attached to Richard Frenkel’s Notice of Motion, Motion to Quash Subpoena; Motion for Protective Order; and Memorandum of Points and Authorities. I incorporate those objections by reference herein.

I declare under penalty of perjury that the foregoing is true and correct.
Executed on April 4, 2008.

Signed, Richard Frenkel

---------------------------------------------------------

Scanned PDF version of this document. <link>

Next, Part Three:
The question at the heart of the Harris-Frenkel dispute: Is the Patent Troll Tracker a reporter?

Part One: Scott Harris' lawyers drop Troll Tracker deposition demand.

Scott Harris' lawyers drop Troll Tracker deposition demand; Frenkel, Cisco say subpoena was meant to assist Texas lawyers' defamation attack

Part One: Scott Harris’ lawyers give up their effort today to depose Patent Troll Tracker blogger Rick Frenkel. Harris’ lawyers at Niro Scavone Haller & Niro (NSHN) had said they suspected Frenkel was working with opposing law firm Fish & Richardson, which is locked in litigation with its former top-billing lawyer and Niro Scavone client Scott C. Harris.

Cisco and Frenkel, in turn, claimed that Niro lawyers were using an overly-broad subpoena as a back-door route to uncovering evidence that could be used in the Arkansas and Texas pending defamation lawsuits against Frenkel and his employer. There was no secret alliance between  Fish & Richardson and Frenkel; rather, it was the Niro Scavone firm that could be sneakily helping Johnny Ward Jr. and Eric Albritton get more ammunition for their lawsuits, allege Frenkel his employer.

Harris' lawyers say they gave up on this deposition because Frenkel swore in his deposition that he had "no communication with anybody at Fish & Richardson concerning the underlying litigation and the related parties." That cancels the May 13 hearing that was scheduled in San Jose where Harris' lawyers would have faced off with attorneys representing Cisco and Frenkel.

From Frenkel's brief opposing deposition ("Movants" here means Scott Harris & Co.):

    The subpoena is, of course, much broader and seeks wide ranging information about the Patent Troll Tracker. Furthermore, we are informed and believe that the discovery in the Chicago case has put Movants on notice that Frenkel, consistent with his declaration in this matter, had no involvement with the Fish firm whatsoever regarding the Chicago case. We invite Movants to contradict our informed belief with evidence.
    What the court is left with is that Frenkel wrote matters displeasing to Movants and their counsel on the PTT. For this they have attempted to create an excuse to take his deposition. The subpoena raises not only issues of harassment and abuse, but also the right of speakers to publish their views free of legally imposed inquiry from and by the subjects of the articles when, as non-parties, they have no connection to the underlying litigation.
    The testimony sought may have relevance to the Arkansas and Texas litigation. The Arkansas and Texas litigation involve claims that Frenkel published defamatory comments on the PTT. Because portions of the discovery sought have no apparent relevance to the Chicago case but may have relevance to the Arkansas and Texas litigation, Frenkel fears that Movants' true motivation for issuing the subpoena and seeking to compel discovery is to circumvent the discovery orders of the Arkansas and Texas courts. Such conduct is a clear abuse of the subpoena power.

In its motion to quash, Cisco Systems makes similar arguments. The company points out that not only did Ray Niro put out a $15,000 (unclaimed) bounty to unmask Frenkel, but that when Niro was a guest on the Internet radio program "Lawyer 2 Lawyer" on March 27, he gave a friendly shout-out to the Texas lawyers behind the defamation suits, saying "I know Johnny Ward very well and I know Eric [Albritton] too."

From Cisco's Motion to Quash:

    Frenkel's Patent Troll Tracker is a popular website that provides interesting, timely, and important information to the patent community and others. As the name would suggest, its point of view was sometimes critical of shell corporations established solely for the purpose of filing patent litigation (colloquially known as "patent trolls") and thus, a counterpoint to Harris' website and Niro's written articles which generally extolled their virtue. A posting on October 18, 2007 of the Patent Troll Tracker has resulted in defamation litigation in separate federal courts in Arkansas (Texarkana) and Texas (Tyler) brought by two attorneys (not Niro or his firm).
    The following deposition Topics from the subpoena might have relevance to the Texas/Arkansas Suit but would seem to have nothing to do with the claims and defenses of the Chicago case:
    5. Factual bases for Patent Troll Tracker blog articles identified in Exhibits A to C.
    6. Investigative materials, sources for, and procedure for Patent Troll Tracker blog articles identified in Exhibits A to C.
    7. All Patent Troll Tracker blog entries concerning Scott Harris, Raymond P. Niro, NSHN, James B. Parker, Courtney Sherrer, or the relevant lawsuit.
    8. The origin and history of the Patent Troll Tracker blog.
    9. The decisions on subjects, including but not limited to Scott Harris, Raymond P. Niro, NSHN, James B. Parker, Courtney Sherrer, addressed in the Patent Troll Tracker blog.

"Harris' website" is presumably a reference to the remarkably named, and recently revived, www.imapatenttroll.com.

I'll continue this story over the next two posts.

Tomorrow, Part Two:  Patent Troll Tracker, in his own words.

Americans can't defeat Wal-Qaeda, but Brits will duel with Google: Trademarks stateside and across the pond

Google's feeling tough enough to fight its wars on two fronts when it comes to trademark law.  As I mentioned below, our May issue includes a story about the Rescuecom v. Google lawsuit at the 2nd Circuit, where Google is looking for a big win; today, Slashdot points to this TV news story about how Google intends to allow U.K. advertisers to buy ads on trademarked keywords, as they already do in the U.S. Of course, some mark-holders already are threatening to sue, as several have in the U.S. (they've all either lost, or lost badly.) No word in this story on when Google will implement this new policy, or such changes are in the works anywhere else.

Currently, if a British searcher types in "Ford cars," she'll see an organic link to Ford and possibly a paid ad for Ford, but won't see an ad for, say, Honda, while an American making the same search may see such competitors advertising. (Yahoo doesn't sell trademarked keywords in the U.S., but they'd like to—they weighed in with an amicus brief supporting Google in the Rescuecom case, together with eBay.)

Last month, I talked to Keker & Van Nest lawyer Michael Page, who is representing Google against Rescuecom in New York, and we talked about the differences between American & European trademark laws.

"European trademark laws are very different beasts," says Page. "They really think of it as owning the words, and you can’t use them. American laws are about protecting consumers." Some of the European trademark decisions have been "very harsh," he notes. "Germany and France are very both anti-speech; it's a sort of thought control. eBay has lost a series of decisions... They can’t allow anyone to list for sale World War II or Nazi memorabilia anywhere. It’s a fairly hostile environment for commerce and speech."

So, for example, it might be tougher for Georgia computer store owner Charles Smith to sell T-shirts and beer steins with slogans like Wal-Qaeda and Wal-ocaust outside a Wal-Mart in, say, Paris. (Is there such a thing?) But Smith resides in Georgia, where he is free to thumb his nose at the world's largest retailer and create bizarre and disturbing images like the ones pictured here. After Wal-Mart told him to cease and desist, Stanford Professor Larry Lessig hooked Smith up with lawyers from Public Citizen and the ACLU, who helped Smith win a complete victory in March after a two-year battle against the mega-store. In an 82-page smackdown, a federal judge basically told Wal-Mart that 1) Smith is a parodist, 2) it's a free country, and 3) deal.

Wal-Mart apparently paid $200,000 just to conduct a survey to measure alleged "consumer confusion," and probably paid millions to their Quinn Emanuel lawyers. And for what? Here's the best part: Smith sold all of 62 T-shirts, including 15 to one of Wal-Mart's outside law firms! Not exactly a weapon of mass dilution. (which law firm bought the shirts?? Inquiring minds want to know! Please email pics of any lawyers seen wearing Wal-Qaeda T-shirts.) Wal-Mart lost more than just money in this litigation: the judge ruled that the store has no common-law trademark claim to its yellow smiley face; that's not good timing, since the company's trademark on that symbol is being challenged at the Trademark Trial and Appeal Board.

Speaking personally, I think the term "Walocaust" is a heavy-handed and unfortunate metaphor that's likely to offend folks with connections to the real Holocaust. Using a Holocaust reference to discuss anything that's not actual genocide just isn't helpful to anyone, including would-be parodists and critics.

But Wal-Mart's attempt to label Smith as a lawbreaker for "diluting" and tarnishing their trademark is a good example of how trademark laws, like copyrights and patents, today reach far beyond their historical roots. Unlike copyrights and patents, which are monopolies granted as incentives to creators, trademarks are granted so that consumers clearly understand the true source of a good or service they're buying. We're all better off with only Wal-Mart being allowed to slap up a sign on its stores that says "Wal-Mart," because we know who we're buying from; but the thinking is, we're also better off knowing that if push comes to shove, we can always start selling Wal-Qaeda T-shirts.

Highlights from the May issue

The May issue of IP Law & Business is out. The cover story profiles 50 top IP people  under 45, and is available online. (free registration required)

More highlights from the May issue (subscribers only):

• Patent bar to E.D. Tex: enough is enough. AIPLA has filed a brief urging the U.S. Court of Appeals for the 5th Circuit to force East Texas judges to transfer more cases out of the district. It's an effort to head off more heavy-handed venue reform that could come from Congress, but there are already early signs that the local judiciary is thinking of ways to keep the patent docket heavy even if they lose this case, which involves a product liability lawsuit against Volkswagen.

• Keyword-advertising showdown in Manhattan: Google brings in the big guns, hoping for a solid win at the 2nd Circuit to make it clear that selling trademarked keywords is perfectly legal, pro-consumer—and not so different than traditional advertising practices.

J.K. Rowling's lawsuit against Harry Potter web site condemned by fellow author

Earlier this month, billionaire author J.K. Rowling was on the witness stand, alleging copyright infringement against a fan web site she once praised. The Harry Potter Lexicon, a fan site with essays, commentary and explanations, is maintained by Steven Vander Ark. Vander Ark is being represented in the litigation by Anthony Falzone, an attorney who heads up Stanford University's Fair Use Project.

This morning I read sci-fi author Orson Scott Card's well-written and truly damning critique of J.K. Rowling's behavior in this litigation. Card points out that all creative works borrow from what came before them, a point that seems like it should not be difficult to absorb. Mike Masnick at Techdirt excerpts the best parts, and I have reproduced his selection below, but as he says, it's really worth reading the whole thing. 

"This frivolous lawsuit puts at serious risk the entire tradition of commentary on fiction. Any student writing a paper about the Harry Potter books, any scholarly treatise about it, will certainly do everything she's complaining about. Once you publish fiction, Ms. Rowling, anybody is free to write about it, to comment on it, and to quote liberally from it, as long as the source is cited.... She let herself be talked into being outraged over a perfectly normal publishing activity, one that she had actually made use of herself during its web incarnation. Now she is suing somebody who has devoted years to promoting her work and making no money from his efforts -- which actually helped her make some of her bazillions of dollars. Talent does not excuse Rowling's ingratitude, her vanity, her greed, her bullying of the little guy, and her pathetic claims of emotional distress."

Joe Nocera of the New York Times wrote a great column a few months ago about the Harry Potter lawsuit and fair use which suggests that Ms. Rowling may be surrounded by people who misunderstand the role of the press in a free society. He wrote:

During my conversation with her representative, Mr. Blair, he pointed me to Ms. Rowling’s Web site, suggesting that would be the best place to find her response to the RDR Books case and the Harry Potter Lexicon. “You have our permission to quote from her Web site,” he said.

I already have that right, Mr. Blair. But thanks anyway.