Brookings: Topics - U.S. Judiciary

An Examination of the Judicial Conduct and Disability System

Russell Wheeler — Thu, 25 Apr 2013 13:30:00 -0400

Editor's Note: Russell Wheeler testified before the House Judiciary Subcommittee hearing on the federal judicial conduct and disability system on April 25, 2013. The Judicial Conduct and Disability Act of 1980 authorizes any person to file a complaint alleging that a federal judge has engaged in conduct "prejudicial to the effective and expeditious administration of the business of the courts." The text which follows is Russell Wheeler's opening statement.

Chairman Coble, Ranking Member Watt, Vice-Chairman Marino, and members of the Subcommittee: Thank you for this opportunity to testify at this oversight hearing examining the federal judicial conduct and disability system, and thank you for the oversight itself. Proper legislative oversight of the other two branches is a vital part of the checks and balances embodied in the Constitution. By way of summary, I believe the judicial branch is doing, overall, a very good job of administering the Act, which largely involves sifting through a high number of insubstantial and often frivolous complaints to find the few that justify further investigation.

Since September 2005, I have been a Visiting Fellow in the Brookings Institution’s Governance Studies Program and president of the Governance Institute—a small, non-partisan, non-profit organization that since 1986 has analyzed various aspects of interbranch relations. In both positions I have been especially interested, among other things, in various aspects of judicial ethics regulation.

Before assuming these positions I was with the Federal Judicial Center, the federal courts’ research and education agency, serving as Deputy Director since 1991. While at the Judicial Center and for about a year at Brookings, I assisted the six-member Judicial Conduct and Disability Act Study Committee, appointed in May 2004 by Chief Justice William H. Rehnquist and often referred to as the “Breyer Committee,” after its chairman, Associate Justice Stephen G. Breyer. The committee—Justice Breyer, two former chief circuit judges, two former chief district judges, and the Chief Justice’s administrative assistant— reported to the Judicial Conference of the United States in September 2006,[1] after which a renamed Judicial Conference Judicial Conduct and Disability Committee developed new, mandatory rules governing the processing of complaints, rules that the Conference approved in March 2008. [2]

Credit for the report and the subsequent rules goes in part to the House Judiciary Committee and its then-chairman, Representative F. James Sensenbrenner, who called attention in early 2004 to what he regarded as an improper dismissal of a judicial conduct complaint he had filed (the Breyer Committee subsequently agreed that the dismissal was improper)[3]. Chief Justice Rehnquist said in announcing the committee appointments, “There has been some recent criticism from Congress about the way in which the Judicial Conduct and Disability Act ... is being implemented, and I decided the best way to see if there are any real problems is to have a committee look into it.”[4]

The relatively few problems highlighted by the Breyer Committee, and the process enhancements in the 2008 rules, have no doubt led to improvements in how the federal courts handle complaints filed under the Act, although, as the Committee report documented, the courts had already been doing, overall, a very good job. In this statement, I describe the Breyer Committee’s methods and principal findings, and then offer a few fairly modest suggestions to strengthen further the judicial conduct and disability system.

The Breyer Committee and Its Work

At the outset, let me make very clear that I speak only for myself and in no way claim to speak for the Breyer Committee (which went out of existence after it filed its report) or for any former members of the committee or its small research staff (or, for that matter, for my two current affiliations).

What it did Working with two Judicial Center researchers and one from the Administrative Office of the U.S. Courts (and me as a coordinator of sorts), the committee selected two samples of complaints terminated from 2001-03: a 593-complaint sample, selected to overrepresent complaints most likely to have alleged behavior covered by the Act (e.g., the sample included a larger percentage of complaints filed by attorneys than in the initial unmodified sample and a lower percentage of complaints filed by prisoners) and a separate sample of 100 terminations drawn totally at random. It also identified 17 complaints terminated from 2001 to 2005 that received press or legislative attention—“high visibility complaints”.[5]

The research staff reviewed the 593 complaints and terminations to identify “problematic” terminations, based on committee-approved definitional standards[6] and after committee review of a subset of initial staff reviews to ensure the staff was applying the standards as the committee wished. The committee members alone reviewed the smaller 100-case sample without staff assistance. (The various forms for reviewing the complaints are in the report appendices.)

The purpose of both reviews was not to determine if the subject judges had committed misconduct or displayed performance-degrading disabilities but rather to assess whether chief circuit judges and judicial councils applied the statute as intended—mainly whether the chief judge conducted a “limited inquiry” (as the Act authorizes) sufficient to justify dismissing the complaint or concluding the proceeding, but not an inquiry that invaded the investigatory role reserved for a special committee.

Finally, staff, using survey instruments approved by the committee, interviewed current former chief circuit judges and staff.

What it found The committee concluded that 3.4 percent of the 593 stratified sample of terminations were problematic, as were 2.0 percent of the terminations in the 100 straight random sample complaints (not surprising given the larger sample’s oversampling of likely meritorious complaints). The Committee found a greater proportion of problematic dispositions among the high-visibility complaints (five of the seventeen), which it attributed to those complaints’ greater likelihood to confront the chief judge or circuit council with more decisions, and thus a greater chance of at least one incorrect decision. The Committee expressed concern that these five problematic dispositions could take on outsize importance because of their visibility, and convey an inaccurate impression to the public and would-be filers of the Act’s effectiveness.

To be clear, this was a methodologically rigorous analysis that let the chips fall where they may. (The non-partisan American Judicature Society praised the report for “not hiding the federal judiciary's dirty linen in the closet,” and for “thoroughly discuss[ing] situations in which the judiciary's performance was deficient [and] the causes that may be responsible”.[7]) The committee imposed strict—some might even say too strict—criteria in its review of the terminations it assessed. For one example, a complaint by a prisoner alleged that the person on the bench in a hearing in his case was a young man, probably the judge’s intern, not the judge. The judge informed the chief circuit judge that he had no intern at the time of the hearing and his law clerk was a middle-aged woman, after which the chief judge dismissed the complaint. The committee characterized the allegation as “bizarre, [but] not so outlandish as to be what our Standard 4 calls ‘inherently incredible,’” and classified the disposition as problematic because the chief judge did not obtain, or order his staff to obtain, the electronic recording of the proceeding to verify that the voice on the tape was that of the judge.[8]

These findings suggest that, despite occasional problematic dispositions, proper administration of the Act is by and large engrained in the culture of federal judicial administration. One might ask whether a replication of the research conducted on a more recent sample of cases would find the same low level of problematic dispositions. Obviously, we cannot know that without the replication itself, but there are reasons to suspect that such a replication would find performance at least as favorable as that found by the committee. One reason is the mandatory committee rules and the tougher enforcement and oversight regime they mandate. Also, though, the Breyer Committee findings track very closely those of an earlier study, conducted in 1991-92, using the same basic methodology, for the statutory National Commission on Judicial Discipline and Removal, chaired by former Congressman Robert Kastenmeier. The earlier study used only one modified random sample (of 469 complaints) and found a 2.6 percent problematic disposition rate (compared to the 3.4 percent that the Breyer Committee found in its 593-case sample). The difference is not statistically significant.[9]

Informal discipline outside the Act Finally, the committee interviews tracked a widely shared view within the federal judiciary, namely that informal resolution of misconduct and disability, perhaps in the shadow of the Act, is more extensive than resolutions that result from formal complaints. This is especially so as to performance-degrading disability, which is rarely the basis for complaints under the statute.[10]

Committee Recommendations and Additional Steps

The Committee offered twelve recommendations, principally to provide additional information to chief judges and councils including a vigorous role for the Conduct Committee; to provide additional information about the Act to potential users; and to enhance publically available information about the Act and its implementation. The judicial branch, mainly through the new rules, has adopted many of the recommendations. I am also aware of Professor Arthur Hellman’s specific proposals to improve the implementation of the Act, mainly in the areas of transparency, disqualification of certain judges in judicial conduct proceedings, and review of chief judge and council orders. Professor Hellman is probably the country’s leading expert on the federal judicial and disability system. In general I share his concerns and endorse his proposals, and add here only a few additional comments.

The role of the Conduct Committee The Act is clear that the chief judge, upon receipt of a complaint, may undertake a “limited inquiry” but “shall not undertake to make findings of fact about any matter that is reasonably in dispute.”[11] A complainant may appeal a chief judge’s dismissal order to the judicial council, but a judicial council’s “denial of a petition for review of the chief judge’s order shall be final and conclusive and shall not be judicially reviewable on appeal or otherwise.”[12] Perhaps because of some reported instances in which chief judges appear to have dismissed complaints after making findings of fact of matters reasonably in dispute—dismissals affirmed by the respective judicial council—Rule 21 seeks, in the words of its commentary, “to fill a jurisdictional gap.” It authorizes the Conduct Committee to consider, on petition of a dissenting council member or on its own initiative, whether the chief judge should have appointed a special committee. This is an important role for the Conduct Committee, even if it would be needed rarely. I tend to agree with Professor Hellman that a statutory change would help to clarify the Conduct Committee’s authority in such situations, rare as they may be.

In a related vein, the Breyer Committee recommended that the judicial branch monitor the Act’s administration periodically, but doubted that “a full-blown replication of our research would be necessary each time. This was a labor-intensive process for us, for our staff, and for the judges and supporting personnel in the circuits.”[13] The Conduct Committee has taken an important step in this direction by examining of some of the universe of terminations it receives from the circuits and doing so in a manner the highly respected Committee chair, Judge Anthony Scirica, characterizes as similar to the Breyer Committee’s review. Just as the Breyer Committee published summary data on its review of the terminations it examined and explained why some terminations were problematic, the Conduct Committee might release similar periodic summary analyses.

Providing information on how the Act has been interpreted The commentary to Rule 3 states that the “responsibility for determining what constitutes misconduct under the statute [“conduct prejudicial to the effective and expeditious administration of the business of the courts,” 28 U.S.C. § 351(a),] is the province of the judicial council of the circuit subject to such review and limitations as are ordained by the statute and by these Rules.”

The judicial branch needs a transparent way of accessing the decisions of the judicial councils (and chief judges) in order to allow chief judges, council members, and other process participants and observers a means of identifying and assessing the determinations the councils are making—accessing what some have called the common law of judicial misconduct and disability.

One of the Breyer Committee’s main recommendations was for selected orders to be posted on the judicial branch website “in broad categories keyed to the Act’s provisions, and . . . with brief headnotes.”[14] This recommendation is embodied to a degree in the Rules’ promise that the Conduct Committee “will make available on the Federal Judiciary’s website . . . selected, illustrative orders, appropriately redacted, to provide additional information to the public on how complaints are addressed under the Act.”[15] The Conduct Committee’s forthcoming on-line Digest of Authorities can make a valuable contribution to this end.

The Act itself also requires each circuit to make available in the court of appeals clerks office all written orders implementing the Act’s provisions.[16] The Rules bolster that provision by suggesting the courts’ websites as an optional form for making the orders public, and, in terms of transparency and ease of access, website postings are obviously the better option.[17] A preliminary review of circuit practices as I prepared this statement suggest that these circuits do so[18]:

First	All orders from 2008 following, ranging in number from 14 to 45 per year.
Seventh	All orders since 2011 (93 in 2012, for example) with earlier years available on website archives.
Ninth	794 orders, from 2006 and later
Tenth	About 500, since January 2008
DC	Orders from 2011-2013 (53, for example in 2012)

Two other circuits (the Second and Fifth) have posted a small number of orders in high-visibility complaints, and the Federal Circuit has posted 24 orders from 2008, 2009, and 2010.

These postings are surely a positive, if incomplete, step. At the risk of sounding unappreciative of the posting circuits’ efforts, however, analyzing the orders, to compare dispositions of similar complaints, or to assess how different chief judges and councils define or interpret the statute and the governing rules, would require wading into an undifferentiated mass of orders (including routine council orders affirming chief judge dismissals), identified only by date, case number, and, in some circuits, a generic description (e.g., “Order, Chief Judge” or “Order, Judicial Council”). A more helpful typology is necessary (along with indicating the page length of each order as a rough way to identify non-routine orders).

Enhanced orientation for chief circuit judges

The Breyer Committee recommended an individual, in-court orientation program for each new chief circuit judge, provided by an experienced current or former chief judge and a member of the Administrative Office General Counsel’s office who staffs the Conduct Committee, and that the Federal Judicial Center develop a common core curriculum for the program to promote uniformity in the Act’s implementation. The recommendation, along with others, for on-tap resources, was designed to ensure “‘that the chief judge is not out there alone’.” [19] I do not believe the Conduct Committee to date has requested the Federal Judicial Center to develop such a program, or some other program toward the same end. It is worth exploring, however, whether the Center is in a position to develop and administer such a program and curriculum, and whether the Conduct Committee perceives a need for it in light of the other steps it is taking in its advisory role.

Providing information on the Act to potential users The courts, based on my most recent and admittedly non-exhaustive review have done a fairly good job with another transparency-related Breyer Committee recommendation, namely making information readily available on court website about the Act and how to file a complaint. Not all courts that post such material place it on the homepage, as the Committee recommended,[20] but for the most part I do not believe the information is hard to find. The Judicial Conference Committee on the Judicial Branch, under its former chair, Judge D. Brock Hornby, and current chair, Judge Robert A. Katzmann, with the assistance of its Administrative Office staff, has aggressively reminded the courts of the Rules requirements for such posting.[21] The Breyer Committee found, in 2006, only marginal compliance with a previous suggestion for such posting, and found that those courts that were posting the information on their websites did not experience a greater proportionate number of filings.[22] It accompanied its recommendation with a suggested paragraph warning would-be filers that the chief judge would dismiss their complaint if it related to the merits of an underlying decision, and a fair number of courts appear to have adopted that suggestion.

* * *

Thank you for the opportunity to testify this afternoon. I will do my best to answer any questions you may have.

[1] “Implementation of the Judicial Conduct and Disability Act of 1980, A Report to the Chief Justice,” (Sept, 2006), available at http://www.fjc.gov/library/fjc_catalog.nsf/autoframepage!openform&url=/library/fjc_catalog.nsf/DPublication!openform&parentunid=C6CA3DC8B22AC2D78525728B005C9BD3

[2] Available at http://www.uscourts.gov/Viewer.aspx?doc=/uscourts/RulesAndPolicies/Misconduct/jud_conduct_and_disability_308_app_B_rev.pdf

[3] See report, id at note 1, at 73-75.

[4] Id at 131.

[5] Id at 39ff.

[6] Id at Appendix E, 144ff.

[7] “Politics and Progress in Federal Judicial Accountability,” Judicature (Sep’t., Oct., 2006), available at http://www.ajs.org/ajs/ajs_editorial-template.asp?content_id=530

[8] Id at 53.

[9] Id at 95ff.

[10] Id at ch. 5.

[11] 28 U.S.C. §352(a)

[12] 28 U.S.C. §352(c)

[13] Report at 123.

[14] Id at 117.

[15] Rule 24(b).

[16] 28 U.S.C. §360(b)

[17] Rule 24(b)

[18] The orders are available at these links:
http://www.ca1.uscourts.gov/?content=judicialmis.php;
http://www.ca2.uscourts.gov/judmisconduct.htm;
http://www.ca5.uscourts.gov/JudicialMisconductOrders.aspx;
http://www.ca7.uscourts.gov/JM_Memo/jm_memo.html;
http://www.ce9.uscourts.gov/misconduct/judicial_misconduct.html;
http://www.ca9.uscourts.gov/misconduct/;
http://www.ca10.uscourts.gov/misconduct.php;
http://www.cadc.uscourts.gov/internet/misconduct.nsf/DocsByRDate?OpenView&count=100;
http://www.cafc.uscourts.gov/judicial-reports;

[19] Report at 113

[20] Report at 120-21.

[21] Rule 28

[22] Report at 33

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Russell Wheeler

Publication: House Judiciary Committee, Subcommittee on Courts, Intellectual Property and the Internet

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What's Behind all Those Judicial Vacancies Without Nominees?

Russell Wheeler — Thu, 18 Apr 2013 11:54:00 -0400

Last week, Senate Judiciary Committee ranking member Charles Grassley (R-IA.), said “we hear a lot about the vacancy rates. There are currently 86 vacancies for federal courts. But of course, you never hear the President mention the 62 vacancies that have no nominee. That is because those 62 vacancies represent nearly 75 percent of the total vacancies.”

This brief paper, after noting the considerable power that home state senators have over judicial nominations, reports that:

• Considerably fewer of the vacancies without nominees on April 12, 2013, could reasonably be expected to have had nominees by then, based on patterns in the previous two administrations.

• Of the vacancies without nominees, almost half are in states with two Republican senators, and those vacancies are older than those in other states.

• There are many more nominee-less vacancies now than at this point in President George Bush’s presidency.

• Of the vacancies that have received nominations, the time from vacancy to nomination was greater in states with two Republican senators.

• Although it is difficult to apportion responsibility for the number and age of nominee-less vacancies and the longer times from vacancy to nomination, we should consider a specific proposal for more transparency about pre-nomination negotiations that might produce more nominations, more quickly.

The Senate has long honored the concept of “senatorial courtesy”—a willingness to confirm judicial nominees only if the home state senators approve. Senate Judiciary Committee chair Patrick Leahy and most of his predecessors over the last half-century or more have refused to process nominees to whom home state senators have objected, although the form of the objections and the weight given to objections from majority and minority senators has varied.[1] This year, even the Senate majority leader couldn’t get a hearing for a Nevada state judge whom he had recommended, because his Republican colleague refused to let the nomination proceed. Home-state senators’ effective veto over judicial nominees leads to bargaining—how much currently, we outsiders can’t say—between the White House and home state senators to find nominees that the administration favors and that the home state senators are willing to let proceed. The practice now seems to be, in general, that senators propose district nominees to the White House and react to potential court of appeals nominees proposed to them by the White House.

Number and age of vacancies without nominees

As of Friday, April 12, 2013, 71 actual and future vacancies on the district courts did not have nominees before the Senate, nor did 13 court of appeals vacancies. (A “future” vacancy refers to a judgeship occupied by a judge in active status who has announced publically that s/he plans to leave active status at some future date. The Judicial Conference of the United States encourages judges to give a year’s notice of their intention to leave active status, but not all judges do so.)

Only 33 of the 71 district vacancies, however, and nine of the appellate vacancies occurred or were announced before the August 2012 recess. For this and the previous two administrations, vacancies occurring after those fourth-year recesses have not received nominations until mid-April or later of the fifth year, except for one of President Barack Obama’s nominees.[2] The 33 district and nine circuit vacancies also exclude those that became nominee-less when, after the August recess, a nominee withdrew or was not resubmitted. (For example, the Nevada nominee referenced above asked the president to withdraw her nomination on March 13, 2013. Although the president had nominated her in February 2012 for a vacancy created in August 2011, the new date of the vacancy is the date of the withdrawal, and, for that reason, is not one of the 33 district vacancies.)

District vacancies The table shows that of the 32 vacancies in district courts with Senate delegations, almost half—15—were in the 14 states with two Republican senators—including six in Texas, three in Georgia, and two in Kentucky.

Eight of the vacancies are in the18 states with two Democratic senators, including three in California and two in New York. Nine are in states with a mixed delegation, including two in Illinois, three in Pennsylvania, and two in Wisconsin (and one in Massachusetts that was announced three and a half years ago, when the state had a mixed delegation, even though the delegation reverted to all Democratic in January 2013). These 32 nominee-less vacancies include three that once had a nominee who dropped out—two in two-Republican senator states and one in a split-delegation state.

The nominee-less vacancies in the states with two Republican senators are considerably older than those in states with two Democratic senators—measured in average days from the vacancy date, here defined as when it was announced, when it was created if no announcement, or Inauguration Day for vacancies that Obama inherited. Average age of the district vacancies in states with two Republican senators is 672, versus 649 for states with mixed delegations, and 471 for states with two Democratic senators.

Court of appeals vacancies Court of appeals judgeships are not statutorily assigned to particular states within the circuit but strong and rarely disputed traditions dictate that each judgeship belongs to a particular state.

Of the six nominee-less appellate vacancies in states with Senate delegations, four are in states with two Republican senators (Georgia, Kansas, and two in Texas). One is in Wisconsin, where the incoming Republican senator made clear in early 2011 that he would veto a nominee whom the administration first submitted in 2010 and resubmitted in 2011. The Kansas vacancy also had a nominee who dropped out after the two senators would not allow the nomination to proceed. The other is a vacancy on the Ninth Circuit’s Court of Appeals—the oldest vacancy in the country—that has been the object of one of the rare interstate disputes over the seat’s proper location, this one between the California and Idaho Senate delegations. (The 1,543 days shown are from the 2009 Inauguration Day; the vacancy dates to 2004.)

The average age of the four nominee-less appellate vacancies in the judgeships from states with two Republican senators is 529 days and much longer for the Wisconsin vacancy.

Bush Administration Nominee-less Vacancies in April 2005

The current situation is different, certainly as to the district courts, than the one that prevailed early in President George W. Bush’s second term, as shown on the table below, indicating pre-2004 recess vacancies that had no nominees by mid-April 2005, and the days that had elapsed since the vacancies’ creation or announcement.

In 2005, there were five nominee-less district vacancies, as opposed to 33 now, in part because the Senate had confirmed 97 percent of Bush’s pre-recess district nominees, as opposed to 90 percent of Obama’s, and Bush submitted only three nominees from the recess through mid-April, versus 15 by Obama. The three nominee-less appellate vacancies are three fewer than the current six vacancies in states with Senate delegations. Two were in California, one a vacancy for which the administration did not resubmit its initial 2013 nominee due to the home state senators’ objections. The extended vacancy reflected in part a dispute over whether the judgeship belonged to Maryland or Virginia.

Time from vacancy to nomination

What about judgeships that got nominees, whether confirmed or not? The table below shows the total number of Obama district nominees as of April 12, 2013.

On average, the Obama administration has submitted its 171 district nominees 406 days after the date of vacancy. The average for the 28 nominees in states with two Republican senators was 457 days, compared to 412 for the 94 two-Democratic senator state nominees and 364 for the 43 split-delegation state nominees. These figures, though, show the analytical difficulties created by changes in the make-up of Senate delegations; three long-pending Pennsylvania nominations could be ascribed to either the mixed or two-Democratic group. I have ascribed them to the latter, but ascribing them to the former would increase the average days for mixed delegation state nominations to 419 and reduce those for two -Democratic states to 387.[3]

There was considerable variation within the three categories. The six Texas nominees waited on average 603 days from the date of vacancy (as defined above), while the four in South Carolina waited only 286. The nine in Florida, with its mixed delegation, waited 353 days. The two Pennsylvania nominations clearly ascribed to the mixed delegation group waited 665 and 850 days, while the three I ascribed (almost by a flip of the coin) to the two-Democratic category waited 1,152 days on average. The 20 New York nominees waited 399 days on average, and the six in Illinois when it had two Democratic senators waited 275 days.

Average days for making circuit nominations were lower in all categories. There were not enough nominations for individual states to identify reportable variations.

What explains these differences?

We can only speculate, but no doubt both the Obama White House and at least some of the senators bear some responsibility for the high number of long-lasting nominee-less vacancies, and the long times from vacancy to nomination. The 391 days on average from date of district vacancy to nomination in two-Democratic senator states under Obama is longer than the overall time for all nominations under Bush to this point—276 days on average (At this point, Bush circuit nominees had waited on average 300 days for nominations.)

Perhaps the Obama White House has been slower to suggest potential nominees in states with Republican senators, or react more slowly to suggestions from those senators. Perhaps Republican senators insist, more than their Democratic counterparts, on nominees they proposed over White House objections or object more to White House-proposed nominees. The entire Senate Republican caucus told the White House by a March 2009 letter that “if we are not consulted on, and approve of, a nominee from our states, the Republican Conference will be unable to support moving forward on that nominee. . . .”[4] Perhaps Democratic senators from mixed-delegation states are the hold-ups, or perhaps Democratic House of Representative delegations have also stymied quick nominations by insisting that the White House pay attention to them as well as to their Republican senator counterparts.

Because we can only speculate on White House-senator negotiations, consider the proposal by Columbia Law School’s Michael Shenkman, a former Senate Judiciary staffer who later worked in the Obama administration. He has proposed that White Houses publish “the status of pre-nomination negotiations, although not the names of the [potential] nominees themselves.”[5] Senators could call out what they regard as misleading administration information, bringing the dispute into the open for verification. All in all, “[l]ocal editorial pages across the country would be newly equipped to comment on who is holding up the filling of” vacancies.[6] (Shenkman’s proposal is aimed at district vacancies, because his main objective is to try to fix the somewhat more fixable district judge confirmation process. Restricting the greater transparency proposal to potential district nominees may be the best way to inject any transparency into the process at all. The proposal, though, may merit consideration for court of appeals vacancies as well.)

The form of disclosure would resemble the Administrative Office of the U.S. Courts’ on-line list of “Current Judicial Vacancies,”[7] from which I have drawn some of the data for this short analysis. It displays the vacancy and the date it was actually created, the previous incumbent, the name of any formally submitted nominee, and the date of the nomination. The administration Web page would add to this information, for each vacancy without a nominee, the date on which the incumbent gave notice of the forthcoming vacancy or the date the vacancy was created in the absence of such notice, the date when the White House received senators’ recommendations, and an administration statement on whether it is still considering the unnamed, potential candidates or whether the administration has requested new names.[8] Where the administration initially provides names to senators for comment, the list could identify the date the names were provided, the date of any senatorial response, and, again, whether the administration is still considering the candidates. The administration list, to repeat, would include no names except those of the previous incumbents and those of nominees formally submitted to the Senate.

Shenkman acknowledges that candidates submitted to the White House who are identified in senatorial press releases or by the rumor mill could be embarrassed if they do not get the nomination, but argues the “[a]dministration’s priority should be on the health of the overall process.” Senators might not like the light such a list would shed on their dealings with the White House, but Shenkman argues that it would be difficult for senators to frame a principled objection to such disclosures, which could help repair the overall process.

* * *

At the least, such a public list (and any disputes over its accuracy) would shed more light on the vacancy situation than merely counting the number of nominee-less vacancies.

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[1] See M. Sollenberg, The History of the Blue Slip in the Senate Committee on the Judiciary, 1917-Present (2003), http://wikileaks.org/wiki/CRS-RL32013 . Thanks to my colleague Sarah Binder for calling this document to my attention and for her comments on the phenomenon at issue.

[2] In February, Obama submitted a nominee to a vacancy announced in mid-August on the (senator-less) Court of Appeals for the Federal Circuit.

[3] The three dates of vacancy were in early to mid 2009, when the state had two Democratic senators after Arlen Specter’s switch in April 2009, and persisted through the almost two years of the two-Democratic delegation until nominations in mid-and late 2012, when the state had had a mixed delegation for over a year and a half.

[4] Manu Raju, “Republicans Warn Obama on Judges,” Politico, March 2, 2009, available at http://www.politico.com/news/stories/0309/19526.html.

[5]M. Shenkman, Decoupling District from Circuit Bench Nominations: A Proposal to Put Trial Bench Confirmations on Track,” 65 Ark. L. Rev. 217, at 299 (2012).

[6] Id. at 302.

[7] See star note at p. 1.

[8] Shenkman, op cit at 300.

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Russell Wheeler

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Filling Judicial Vacancies In Obama's Second Term—Some Prospects

Russell Wheeler — Mon, 28 Jan 2013 15:00:00 -0500

A recent American Constitution Society Issues Brief I authored considers various proposals to fix the broken process of filling judicial vacancies during the second Obama term.

As documented in a December Brookings paper, partly updated in the ACS Brief, filling those vacancies in the first Obama term was hampered by the comparative paucity of nominations, especially for the district courts, by the slow pace of those nominations, and by long periods from vacancy to nomination, and from nomination to floor vote. On almost all those measures, the administration’s and the Senate’s performance in Obama’s first term lagged behind those in the Clinton and Bush first terms.

This continuing breakdown in the process has at least two deleterious effects. First, judicial vacancies, which declined in Clinton’s and Bush’s first terms, increased during Obama’s. Empty judgeships hamper the federal courts’ ability to do their jobs—to sort out contractual disputes and other matters that, left unresolved, contribute to economic uncertainty, as well dispose of criminal complaints and adjudicate claims of discrimination and civil liberties violations.

Second, though, the nomination and confirmation process itself has increasingly become a factor discouraging well-qualified potential district and circuit judges from putting themselves up for consideration. The 223 days on average from nomination to confirmation of district judges—up from 154 days in Bush’s first term and 93 in Clinton’s— leads potential candidates, especially lawyers in private practice, to ask whether they can afford to go into nomination limbo for eight months—perhaps much longer—especially when confirmation, unlike in earlier years, is something other than a sure thing. And the job is less attractive: growing caseloads but negligible increases in judgeships over the last several decades, changes in the case mix—more drug and immigration violations in the district courts, for example—and stagnant judicial salaries with declining buying power, a special problem for would-be judges in high-cost areas.

We should not want to return to the average nine days from nomination to confirmation faced by Harding’s nominees, but the roughly 60 to 70 day averages in the Carter and Reagan administrations are a reasonable goal, even if “reasonable” does not mean “attainable.”

The recent Senate rules changes may ameliorate the wait for district judges. Previously, the mere threat of a filibuster over a nomination made any majority leader reluctant to bring a nominee to the floor, because even if the Senate voted to end the filibuster, it faced the possibility of up to 30 hours of debate before a vote on the nomination itself. The rules change reduces that post-cloture debate time for district judges to two hours, which should make the majority leader more likely to risk a cloture vote without fear of squandering a lot of valuable floor time simply to get some district confirmations.

That the rule does not apply to circuit (or Supreme Court) nominees makes a certain perverse sense, in that those nominations have been more contentious. In Obama’s first term, 46 percent of district confirmations were by voice vote or unanimous consent, double the 23 percent of circuit confirmations that went that route. And, on roll call votes, 11 percent of district confirmations received 11 or more negative votes, versus 24 percent of circuit confirmations. The rules change may be a step toward putting district and circuit nominations on different paths, as advocated, for example, by Columbia Law School’s Michael Shenkman.

The rules change, however, does nothing to speed the time from vacancy to nomination, which rose from 370 days on average in Clinton’s first term for district judges and 276 in Bush’s to 406 in Obama’s. During that time, an active rumor mill can spew invidious speculation about potential candidates and their chances of nomination.

This delay results in part from bargaining between home state senators and the White House; the senators’ bargaining bargaining chip is a threat to kill a nominee by refusing to allow Judiciary Committee hearings on a nominee of whom they disapprove. The White House could shed some sunlight on the process by publicizing the status of its negotiations with home state senators over a vacancy (without revealing the names of any potential nominees). Such publicizing would also afford senators an opportunity to contest, publically, White House assertions. The result—equipping editorial writers and others to pressure those standing the in the way of expeditious nominations. (This is another Shenkman proposal.)

The nomination and confirmation process in Obama’s second term may reveal the effect, if any, of the rules change (and, if implemented, publicizing the status of pre-nomination negotiations). They have more promise than other proposals, also analyzed in the ACS Issues Brief, including time tables for the steps in the process and fast-track procedures for nominees endorsed by senators’ allegedly bi-partisan vetting committees.

Bigger changes, however, are highly unlikely in the midst of the second term’s confirmation battles. For that reason, the administration might consider creation of a three-branch, truly bi-partisan task force to develop more substantial proposals that could be debated in the 2016 campaign and perhaps implemented by the next president and the 115th Senate. But implementation is likely only if all parties realize that it is in their self-interest to fix the broken judicial nomination and confirmation process.

Authors

Russell Wheeler

Image Source: © Chip East / Reuters

Can Copyrighted Works Purchased Abroad Be Resold In the United States?

John Villasenor — Sun, 21 Oct 2012 00:00:00 -0400

Next week, the Supreme Court is set to hear arguments in Kirtsaeng v. John Wiley & Sons, Inc., a case that will have fundamental consequences for the global flow of books, music, movies, and other copyrighted material.

Foreign students studying in the U.S. have long known that textbooks can often be purchased much less expensively in their home countries. Supap Kirtsaeng, who originally came to the United States from Thailand as a student in 1997, built a business around this arbitrage opportunity, asking family members in Thailand to legally purchase textbooks and ship them to the United States, where he then resold them for a profit on sites such as eBay. In September 2008, publisher John Wiley & Sons, Inc. filed a complaint in a New York federal district court asserting, among other things, that Kirtsaeng’s actions constituted copyright infringement. A jury agreed, imposing damages of $75,000 for each infringed work. Kirtsaeng appealed to the Second Circuit, which affirmed the district court’s decision, and then to the Supreme Court, which will hear oral arguments on October 29.

Common sense would hold that a person who legally acquires copyrighted material such as a book or music CD generally has the right to resell it at a later time. And indeed, under the “first sale” doctrine, a person in possession of a copy of a work that was “lawfully made under this title” [Title 17 of the U.S. Code, which contains U.S. copyright law] “is entitled, without the authority of the copyright owner, to sell or otherwise dispose of” it. For instance, if you legally purchase a book or music CD, the owners of the associated copyrights can’t prevent you from later selling it at a garage sale or donating it to a library.

Or can they? If the product was manufactured and purchased overseas, the answer isn’t clear. The uncertainty arises due to the interpretation of the phrase “lawfully made under this title” and to a separate statute that prohibits the importation into the United States, “without the authority of the owner of copyright,” of copies of a work “acquired outside the United States.” Thus, a person who legally purchases a copyrighted work abroad and wants to resell it domestically can be caught between two ambiguous and potentially contradictory provisions of copyright law. Does the first sale doctrine provide the right to resell the work? Or is that right foreclosed because exercising it would of necessity involve a prohibited importation?

Unsurprisingly, the jurisprudence on this issue is complex and sometimes contradictory. In the 1998 Quality King decision, the Supreme Court considered hair care products bearing copyrighted labels that had been manufactured in the U.S., sold abroad and subsequently re-imported and sold without authorization in the U.S. The “whole point of the first sale doctrine,” wrote the Court in Quality King, “is that once the copyright owner places a copyrighted item in the stream of commerce by selling it, he has exhausted his exclusive statutory right to control its distribution.” But is that always true, or does it only hold when the item was manufactured in the United States?

In affirming the copyright infringement judgment against Kirtsaeng, the Second Circuit held in 2011 that “the first sale doctrine does not apply to copies manufactured outside of the United States.” Taken to its logical extreme, this interpretation could provide American companies that manufacture overseas with an extraordinary level of control over the secondary market for their products. The Third Circuit, by contrast, concluded [PDF] in a (pre-Quality King) 1988 ruling involving product label copyrights that “a first sale by the copyright owner extinguishes any later right to control importation of those copies.” Aspects of this tension in U.S. copyright law were also considered – though not fully resolved – by the Ninth Circuit in 1996 and 2008.

Kirtsaeng has attracted a large number of amicus briefs, with the American Library Association, Costco, eBay, Goodwill Industries International, Google, the National Association of Chain Drug Stores, and a group of leading American art museums backing Kirtsaeng. Costco, for example, writes [PDF] that the “first-sale doctrine plays an important role in Costco’s ability” to sell “genuine brand-name merchandise to its members at prices lower than its competitors,” and that Wiley’s position “that copies made abroad would have enjoyed significantly greater copyright protection than those made at home is inconceivable.” Goodwill argues [PDF] that the Second Circuit’s Kirtsaeng decision, if affirmed by the Supreme Court, could have “a catastrophic effect on the viability of the secondary market and, consequently, on Goodwill’s ability to provide needed community-based services.”

The American Bar Association, the American Intellectual Property Law Association (AIPLA), the Motion Picture Association of America (MPAA), and the Recording Industry Association of America (RIAA) have filed briefs supporting Wiley. The AIPLA argues [PDF] that Kirtsaeng infringed Wiley’s copyrights by the act of importing the textbooks, and that the first-sale defense regarding their subsequent sale is thus irrelevant. According to [PDF] the MPAA and RIAA, the motion picture and music industries “rely on the ability to divide rights across markets and to plan for and control the timing and manner of the release of their works in different markets around the world.”

One of the ironies of Kirtsaeng is that it involves shipping copyrighted works across an ocean in paper form, an approach more typical of the last century than the present one. While enormous amounts of copyrighted material still travels in shipping containers – think, for example, of the software included in consumer electronics products and automobiles – a growing fraction of written, audio, and audiovisual content is transported by fiber optic cable and stored in the cloud. The concepts of location and importation are thus more complex than in the past. And, with appropriate updating of copyright and licensing frameworks, cross-border flows of copyrighted material can be an opportunity for copyright owners, not a threat.

In the immediate term, however, the question is how to handle Kirtsaeng in the context of current American copyright law. Congress could not have anticipated all of the complexities of today’s copyright landscape when it enacted the Copyright Act of 1976. But it almost certainly wouldn’t have wanted the consequences that could arise if the Second Circuit’s Kirtsaeng decision is affirmed.

Authors

John Villasenor

Publication: Forbes

Image Source: © Jose Luis Magaua / Reuters

Preview of New Supreme Court Term

Russell Wheeler — Fri, 28 Sep 2012 00:00:00 -0400

With 40 cases queued up, the U.S. Supreme Court is poised to begin its 2012 term on Monday, October 1. More than half the roster is comprised of criminal justice or federal judicial procedure cases but this session will likely be shaped by a few key cases, including race in the classroom, human rights violations overseas, and voting rights here at home. Visiting Fellow Russell Wheeler previews the session, noting that some of these cases will spark intense scrutiny.

Video

Preview of New Supreme Court Term

Will Drones Outflank the Fourth Amendment?

John Villasenor — Thu, 20 Sep 2012 00:00:00 -0400

In a word, no. The Fourth Amendment, which provides the “right of the people to be secure in their persons, houses, papers, and effects, against unreasonable searches and seizures,” has been a cornerstone of privacy from government intrusion since 1791. It has served us well across more than two centuries of technology advances, and there is no reason to expect that it will suddenly lose its protective power when domestic use of unmanned aircraft becomes common.

In February 2012, President Obama signed an FAA bill into law that provides for the integration of “drones,” or more properly, unmanned aerial vehicles (UAVs), into the nation’s airspace. This has generated legitimate concerns that UAVs could be used by the government in ways that infringe privacy rights, particularly in light of three 1980s-era Supreme Court decisions that found no Fourth Amendment violation in warrantless observations from manned government aircraft.

In 1986, the Court ruled in California v. Ciraolo that police officers who identified marijuana plants in a suspect’s backyard from a plane at an altitude of 1000 feet did not violate the Fourth Amendment. Three years later in Florida v. Riley, a majority of justices reached the same conclusion regarding observations of marijuana plants in a greenhouse from a helicopter at 400 feet. And in Dow Chemical Co. v. United States, a 1986 decision addressing government use of a commercial mapping camera to take aerial photographs of an industrial facility (as opposed to the “curtilage” of home considered in Ciraolo and Riley), the Court ruled in favor of the government.

These decisions do indeed indicate that government investigators will sometimes be able to use UAVs without a warrant. However, that does not mean that all government UAV observations, no matter how invasive, will be constitutional. In fact, a careful review of the opinions in these and other relevant Supreme Court cases suggests that the Fourth Amendment may provide significantly more protection than is often assumed.

In Ciraolo, for example, the Court held that the “Fourth Amendment simply does not require the police traveling in the public airways at this altitude [1000 feet] to obtain a warrant in order to observe what is visible to the naked eye.” A UAV equipped with an imaging system capturing much more detail than could the human eye would fall outside the scope of this holding. So, too, would one operating outside of public navigable airspace, though defining exactly where that lies for UAVs can be complex.

In Riley, which also involved naked eye observations, Justice White and the three other justices who joined his opinion found no Fourth Amendment violation in part because “no intimate details connected with the use of the home or curtilage were observed.” Justice O’Connor’s Riley concurrence emphasized that reasonable expectations of privacy, and not “compliance with FAA regulations alone,” should determine the constitutionality of aerial observations.

The Dow Chemical Court concluded that “the open areas of an industrial plant complex are not analogous to the ‘curtilage’ of a dwelling for purposes of aerial surveillance.” Yet, even under that much lower privacy standard, the Court implied the existence of some constitutional bounds, noting that “the photographs here are not so revealing of intimate details as to raise constitutional concerns.”

Several more recent Supreme Court decisions in non-aviation cases are also relevant to UAV privacy. In 2001, the Court ruled against the government in a case involving use of a ground-based thermal imager to detect an indoor marijuana growing operation by measuring the temperature of the roof and outside wall of a house. Writing for the Court in Kyllo v. United States, Justice Scalia expressed concern that allowing the government to freely collect any information “emanating from a house” would put people “at the mercy of advancing technology – including imaging technology that could discern all human activity in the home.” The rule adopted by the Kyllo Court provides that when “the Government uses a device that is not in general public use, to explore details of the home that would previously have been unknowable without physical intrusion, the surveillance is a ‘search’ and is presumptively unreasonable without a warrant.”

As has often been noted (including in Justice Stevens’ dissent in Kyllo), the “not in general public use” restriction can weaken with time as a formerly rare technology becomes common. However, Kyllo stops well short of endorsing the constitutionality of using a commonly available technology to observe a home. As Justice Scalia wrote in response to the dissent on this specific point, the thermal imaging in Kyllo was not “routine.” The Kyllo Court did not need to address the question of observations using routine technology, and specifically declined to do so.

Under a balanced reading of Kyllo, government use of a UAV to reveal “details of the home that would previously have been unknowable without physical intrusion” would be unconstitutional today. Ten years from now, when UAVs will be common, that still may be the case – but that conclusion will need to come from a ruling other than Kyllo.

Most recently, the Supreme Court found against the government in United States v. Jones [PDF], a January 2012 decision that addressed the constitutionality of affixing a GPS tracking device to a vehicle without a valid warrant. While the basis for the decision was narrow – the Court found a Fourth Amendment violation in the physical trespass that occurred during the placement of the GPS device on the vehicle – the aspects of the Jones opinions addressing extended surveillance are directly relevant to long-endurance UAVs.

The opinion of the Court, delivered by Justice Scalia, stated that extended electronic surveillance “without an accompanying trespass” may be unconstitutional, but noted that the “present case does not require us to answer that question.” In a concurrence, Justice Alito wrote that “the use of longer term GPS monitoring in investigations of most offenses impinges on expectations of privacy.” And in a separate concurrence, Justice Sotomayor noted the “existence of a reasonable societal expectation of privacy in the sum of one’s public movements.” Thus, the justices are on record recognizing the constitutionality question raised by new technologies enabling extended surveillance, though they deferred its resolution to another day.

In the aggregate, these rulings provide cause for optimism that, with respect to government UAV observations, the Fourth Amendment will be reasonably protective. Whether it will be sufficiently protective is a different question, and one well worth attention. But when engaging in that discussion, it is important not to lose sight of the substantial constitutional foundation we already have.

Authors

John Villasenor

Publication: Forbes

Image Source: © Reuters Photographer / Reuters

Obama’s Judicial Confirmations at the Election Year Summer Recess, and Prospects for the Fall

Russell Wheeler — Thu, 02 Aug 2012 11:36:00 -0400

On June 14, Roll Call reported that Senate Republicans had invoked the “Thurmond Rule” and would not allow votes for any more pending court of appeals nominees in the run up to the 2012 presidential election. Both parties have at least paid lip-service to the "rule" in some form, anticipating the possibility that come January, their presidential candidate will be nominating judges. (Why June 14 is discussed here. No blanket moratorium on district confirmations is probably because Senates controlled by both parties have approved district nominations well into the election years.)

Confirmations slowed in July and August of 2012, as they did in previous election years. Only one circuit nominee in the four previous election years got confirmed after June (viz., July 21, 2000). And this year, Republicans beat back a July 30 effort to allow a vote on an Oklahoma circuit nominee supported by the state’s two Republican senators. Except for 16 district confirmations in July and August 1996, there have been only a handful of district confirmations in those months in election years: four in 2000 and this year, and one each in the other two years.

Even though circuit confirmations are apparently over for 2012, President Obama’s circuit confirmation success rate so far stacks up fairly well compared to those of his immediate predecessors. His district numbers lag behind, but some late-year confirmations could improve his tally, as they did those of his immediate predecessors. Unlike under Clinton or Bush, district vacancies have increased rather than decreased under Obama, but that can be explained in part by the much greater number of district judges who have left active judicial service (creating vacancies) under Obama than under Clinton or Bush during the same time period.

Confirmations Slow Down in Presidential Election Years

As in previous presidential election years, the Senate will recess in early August for campaigning and conventions. Here are confirmation rates at the summer recess for Obama’s 2009-12 term and for his immediate predecessors’ two terms—for the election years and, for comparison, for the three-plus years leading up to the summer break. For example, in 1996, up to the August 2 break, the Senate confirmed 18 of President Clinton’s 39 district nominees—those carried over from 1995 and those submitted in 1996 (for a 46 percent rate). From Inauguration Day in January 1993 through August 2, 1996, the Senate confirmed 87 percent of his 195 district nominees.

District Confirmations at Summer Recess *
	Election Year Only	Term to Recess	Recess Date
1993-96 (Clinton)	46% (18/39)	87% (169/195)	Aug. 2
1996-2000	57% (27/47)	82% (132/161)	Jul. 27
2001-04 (Bush)	73% (24/33)	93% (162/174)	Jul. 22
2005-08	33% (14/43)	73% (83/114)	Aug. 1
2009-12 (Obama)	52% (28/54)	80% (125/156)	Aug. 3
*In all tables, the base numbers are nominees, not nominations; one nominated in one Congress then renominated in next counts as a single nominee. The district figures exclude the term-limited territorial court judges.

Obama’s district confirmation rate, 52 percent so far in 2012, is roughly in the middle of the four preceding election years. His 80 percent rate over the three-plus years of his presidency, however, surpasses only that of President Bush in his second term.

Obama’s circuit confirmation rate, 45 percent so far in 2012, is greater than either predecessor’s, and his 71 percent rate overall is only exceeded by the 77 percent rate in Clinton’s first term.

Court of Appeals Confirmations at Summer Recess
	Election Year Only	Term to Recess	Recess Date
1993-96 (Clinton)	18% (2/11)	77% (30/39)	Aug. 2
1996-2000	35% (8/23)	63% (35/56)	Jul. 27
2001-04 (Bush)	24% (5/21)	67% (34/51)	Jul. 22
2005-08	27% (4/15)	60% (26/43)	Aug. 1
2009-12 (Obama)	45% (5/11)	71% (30/42)	Aug. 3

Numerous commentators have noted that judicial vacancies under Obama are greater now than they were on Inauguration Day, unlike in 2004 and 1996, which they attribute to Obama’s fewer nominations as well as the pace of confirmations.

The number of circuit vacancies at the 2012 summer recess—14— is the same as in January 2009. Clinton and Bush experienced the same thing--from 17 to 16 for Clinton and 13 to 13 for Bush.

District vacancies in the same periods decreased from 90 to 42 under Clinton and from 27 to 15 under Bush, but increased from 41 to 61 under Obama. One little-noted reason for that, however, is that many more district judges left active service during Obama’s administration than they did during Clinton’s or Bush’s during the same period. Under Obama, 144 district judges have left active service, mainly by taking senior status, but also through death, court of appeals appointments, resignation and retirement (and one conviction on impeachment.) The 144 is 27 greater than the 117 who left active service under Clinton in the same time period and 31 greater than the 113 who left active service under Bush, although Congress created 15 additional vacancies in 2002 through new judgeship legislation.

Possible Overall Four-Year Record

Obama’s full term circuit confirmation rate and numbers, while not spectacular, hold up fairly well in comparison to his predecessors’ terms (especially the more analogous first terms), but, even with some unlikely late year district confirmations, his district confirmation numbers and rate will lag behind his predecessors’ first term tallies.

Here are his current numbers and the final four-year numbers for his predecessors:

	District*	Court of Appeals*
1993-96	87% (169/195)	77% (30/39)
1996-2000	84% (136/161)	63% (35/56)
2001-04	97% (168/174)	67% (34/51)
2005-08	82% (93/114)	60% (26/43)
2009-8/3/12	80% (125/156)	71% (30/42)
*The base numbers, nominees (e.g., 195 and 39 in 1993-96), exclude the handfuls of nominees submitted after the presidential election year summer recesses, none of whom was confirmed.

Obama’s circuit confirmations are on a par with the four previous terms as to numbers. His 30 confirmations match Clinton’s first-term record and are four below Bush’s first term. They are five less than in Clinton’s second and four more than in Bush’s. His circuit confirmation rate—71 percent—is second highest of the five years, slightly below Clinton’s first term 77 percent and slightly above Bush’s first term 67 percent.

These confirmations have altered the balance in the courts of appeals. Eighty-one (49 percent) of the 165 circuit judges in active status on August 2 are Democratic appointees; when Obama took office, with the same number of active judges, the 65 Democratic appointees were 39 percent of the total. In January 2009, one of the 13 courts of appeals had a majority of Democratic appointees; today, six do, although some of the majorities are slim, and the balance of Republican and Democratic appointees is a weak predictor at best of decisional tendencies.

Obama’s district confirmations are a different story. As it stands now, Obama’s 125 confirmations, an 80 percent rate, are well below either of the final figures for the first terms of Clinton (87 percent) or Bush (97 percent), and slightly below those of their second terms.

Autumn confirmations, though, could change the final picture, as they have in previous election years. There will almost surely be no circuit confirmations for the rest of 2012 (despite some reports of possible post-election votes), just as there was none in the four previous years.

However, in all but one of those years, Clinton and Bush benefitted from post-recess district confirmations, as seen below. Most dramatically, at the August 2008 recess, the Democratically controlled Senate had confirmed 73 percent of Bush’s district nominees. Ten late-September confirmations—with Bush a lame duck and an Obama victory in November a distinct possibility—boosted the rate to 82 percent. (Of those ten confirmed nominees, eight had been waiting less than 100 days since their July 2008 nominations.)

District Confirmations
	At Recess' Start	After the Recess	Final Rate*
1993-96	87% (169/195)	0	87% (169/195)
1996-2000	82% (13/161)	4	84% (136/161)
2001-04	93% (162/174)	6	97% (168/174)
2005-08	73% (83/114)	10	82% (93/114)
2009-8/3/12	80% (125/156)	___	__% (___/156)
*Excluding post-recess nominees

Post-convention district confirmations in 2012 could also boost Obama’s final tallies. If the Senate, as in 2008, were to confirm ten more Obama district nominees—a huge “if”—his overall rate for the four years would rise to 87 percent. That’s the same as Clinton’s first term, although well below the 97 percent in Bush’s first term. Five autumn confirmations would raise the rate to 83 percent.

The nominees are certainly in place—24 currently pending. Come late September 2012, for comparison to the 2008 situation, three district nominees will have been pending for over 300 days, seven more for at least 200 days, 11 more for over 100 days, and three more at 94 days.

Despite the higher confirmation rate that ten late-year confirmations would produce, the number of first term Obama district judge confirmations would remain below those in both of his predecessors’ first terms, and below Clinton’s second term. They would outpace Bush’s second term. The number of judges confirmed, though, is partly a function of the number of nominees. The comparatively low number of Obama, and Bush second term, nominees, helps explain the comparatively low number of appointees.

Confirmation rates and numbers of confirmations are only one comparative measure of presidential-Senate judicial confirmation politics. Democrats claim, for example, that unlike Bush, Obama has nominated mainly middle-of-the road candidates for circuit judgeships, justifying more confirmations than the Senate has allowed, and that Bush’s comparatively low circuit confirmation record reflects in part a greater number of ideologically or otherwise unacceptable nominees. Republicans, obviously, express a different view, charging Democratic senators with initiating filibusters of highly qualified Bush nominees. But those and similar claims need enough time to permit accumulation and assessment of comparative voting records and are beyond the scope of this modest inquiry.

This piece was updated on August 5, 2012 to include the Senate's unscheduled confirmation vote held on August 2.

Authors

Russell Wheeler

Image Source: Darren Greenwood

‘Tis the Season for the Thurmond Rule

Sarah A. Binder — Thu, 14 Jun 2012 00:00:00 -0400

Senate Republicans made headlines this morning for invoking the so-called “Thurmond Rule,” a practice in which the Senate opposition party within six months of a presidential election often refuses to allow votes on nominations to vacancies on the Courts of Appeals. In more basic terms, opposition party senators in the run up to a presidential election filibuster all appellate (and sometimes district) court nominees. Observers of judicial selection have noted (here and here) that there is no such formal “rule.” But that hasn’t stopped senators from either party from talking about the practice as a rule or often even as a doctrine. Because both parties have, over time, valued their ability to block the president’s judicial nominees, keeping alive the Thurmond Rule has proved convenient for both parties at different times.

Not surprisingly then, the debate in presidential election years tends to focus on whether the Thurmond Rule has been invoked “too early,” rather than on whether or not it should be invoked at all. Critics today, for example, noted that a Democratic majority confirmed a Bush nominee in 2008 in late June and that a Democratic minority allowed a vote on a Bush nominee in late June 2004. That would be in contrast to Republicans shutting down confirmation votes this year in mid-June. (For the record, the winner for the earliest invocation of the Thurmond Rule is actually the Senate GOP, which in 1996 confirmed its last Clinton nominee on January 2nd.)

I’m not sure there’s much to be gained by judging which Senate party has abused the rule more in recent years. More interesting to me are why Republicans chose today to shut down appellate confirmations and what broader implications the Thurmond Rule has for our understanding of the state of the Senate.

First, I suspect that Republicans were less interested in the date on which they invoked the rule and more interested in the consequences of invoking it. If we assume that no more Courts of Appeals nominees will be confirmed in 2012, yesterday’s confirmation of Ninth Circuit nominee Andrew Hurwitz brings Obama’s confirmation rate for the 112th Congress to 52 percent. By surpassing the 50 percent mark, Obama’s record is in line with recent presidents’ success rates (measured each Congress) over the past decade. Invoking the Thurmond Doctrine before allowing Hurwitz to be confirmed would have allowed Democrats to call out Republicans for confirming less than half of Obama’s nominees; allowing more nominees to be confirmed after Hurwitz would have put Obama’s win rate significantly above the win rate of recent presidents. Indeed, Senator Grassley (R-Iowa) suggested as much today, noting that “By this time, nobody can say it’s not fair to this president based on the number of nominations we’ve put up.” The date of June 14th is less important, Grassley suggests, than its implications.

Second, it’s important not to lose sight of the broader strategy that underlies reliance on the Thurmond Rule. If we compare confirmation rates over presidential election and non-presidential election years, the difference is stark. Assuming no further appellate confirmations this year, on average 87 percent of nominations pending in non-presidential election years are confirmed; on average just 48 percent of nominations pending during a presidential election year are confirmed. That nearly forty point difference of course is time dependent. The difference in the two rates before 1980 is six percent; from 1980 to 2012, the difference is 43 percent. This isn’t surprising, but it is also emblematic of a broader opposition party strategy that has been in place for decades: Don’t let the other party confirm its nominees if there’s a chance (any chance, really) that your party’s nominee may win the keys to the White House. The prospects of controlling the White House—and with it the power to select nominees—has driven opposition parties to slow walk nominations in presidential election years for decades.

Finally, the persistence of the idea of a Thurmond rule or doctrine that compels and justifies opposition party tactics is a telling element of the modern Senate. As Steve Smith put it last night, the Thurmond Rule is “another example of senators turning obstructionism into a norm to justify dysfunctional behavior.” Senators from both parties perpetuate the chamber’s byzantine practices by engaging in these quadrennial debates about whether the other party has invoked the rule too early. They should instead focus on calling out the egregious behavior of blanket filibusters of the opposition’s candidates for the bench.

Authors

Sarah A. Binder

Publication: The Monkey Cage

Image Source: BILL FRYMIRE

The Strangely Tilted Playing Field of Music Copyright Royalties

John Villasenor — Fri, 25 May 2012 14:02:00 -0400

To say that copyright law is complex would be an understatement. At the most basic level, however, it is underpinned by a simple premise: that “authors” (including songwriters and recording artists) deserve to be compensated for the use of their creative works, and that society benefits if those works are broadly available. As the Supreme Court explained in a 1975 ruling:

The immediate effect of our copyright law is to secure a fair return for an “author’s” creative labor. But the ultimate aim is, by this incentive, to stimulate artistic creativity for the general public good.

The struggle to achieve this balance in the world of digital music has led to much debate, legislation, and litigation over the past 15 years, and the first half of 2012 has been no exception.

Since the mid-2000s, royalty rates for certain noninteractive digital audio streaming services – e.g. music delivered via satellite, the Internet, or digital cable – have generally been set by the Copyright Royalty Board (CRB), a panel of three Copyright Royalty Judges appointed by the Librarian of Congress.

The resulting royalties are paid to and distributed by SoundExchange, a non-profit performance rights organization spun off from the Recording Industry Association of America in 2003. As an alternative to paying the CRB rates under statutory licenses created by Congress, digital music service providers can, in theory, negotiate rates directly with record companies and pay the royalties directly to the record companies, bypassing SoundExchange. Whether they can do so in practice is the subject of a March 2012 federal antitrust complaint filed by Sirius XM against SoundExchange and A2IM, a record industry trade association for independent record labels.

Another potential fly in the ointment is the very constitutionality of the CRB itself, which has been repeatedly questioned over the years. That issue was argued before the DC Court of Appeals in February; a ruling is expected shortly. As David Oxenford wrote at Broadcast Law Blog, the case “could have important ramifications for many segments of the digital music industry and for Copyright law more generally.”

The antitrust and constitutional concerns related to the establishment of royalty rates for the use of sound recordings by digital music services are important. However, it’s also worth taking a step back and considering a more fundamental question: whether some of the policy objectives enshrined in copyright laws of the United States may stifle innovation and impede new business opportunities. The answer is yes.

The standard to be applied by the CRB in setting statutory royalty rates for digital music depends on the type of service offered. The standard used for certain “preexisting” satellite and digital cable radio subscription services (e.g. Sirius XM, Music Choice, and Muzak) that predate the Digital Millennium Copyright Act of 1998 (DMCA) requires the Copyright Royalty Judges to set rates that not only “maximize the availability of creative works to the public” and “afford the copyright owner a fair return for his or her creative work,” but also – and this is certainly not a call to innovation – to “minimize any disruptive impact on the structure of the industries involved and on generally prevailing industry practices.”

A different statutory rate setting standard is used for determining rates for certain other services, including Internet radio, broadcast simulcasters, and “new” (i.e., post-DMCA) subscription-based transmission services. It requires the Copyright Royalty Judges to establish rates that most clearly represent the rates that “would have been negotiated in the marketplace between a willing buyer and a willing seller,” but, in doing so, to also consider “competitive” information, including whether a service “may interfere with or may enhance the sound recording copyright owner’s other streams of revenue from its sound recordings.” This language, which preferentially protects the traditional business models and revenue streams of one class of participants in the ecosystem, reflects what Andrew Stockment [pdf] described in a 2010 Virginia Law Review paper as “the recording industry‘s argument that Internet radio is a threat.”

The “willing buyer, willing seller” framework has not worked ideally. According to Gary Greenstein, a copyright attorney with Wilson, Sonsini, Goodrich & Rosati, who previously served as general counsel for SoundExchange, “the willing buyer/willing seller standard, as it has been applied by the CRB, has resulted in rates that would likely drive many nonsubscription, Internet-based digital music services out of business.”

Mr. Greenstein explains that this is why Congress had to intervene in 2008, and again in 2009, and temporarily grant SoundExchange, a non-government entity, with the extraordinary power to negotiate lower rates than those established by the CRB that were binding on all copyright owners. That authority was critical in enabling webcasters such as music streaming company Pandora to obtain lower rates than those set by the CRB.

Those “lower” rates can still be very high when measured with respect to revenue. For example, for the fiscal quarter ending January 31, 2012, Pandora reported revenue of $81 million and content acquisition costs of $48 million. “If Congress hadn’t recognized that the CRB rates weren’t appropriate for Internet radio,” says Pandora Founder Tim Westergren, “there would be no Pandora. We wouldn’t have survived.”

The rates negotiated in 2009 will expire in 2015, raising the important question of whether, absent a negotiated agreement on royalty rates between SoundExchange and online streaming services for the years 2016 – 2020, Congress will need to step in again following another decision by the Copyright Royalty Judges applying the willing buyer/willing seller standard.

So where does all of this leave things? The short answer: in need of repair. America’s status as a global technology leader is due in large part to disruptive advances that upend prevailing industry practices, and in doing so, often interfere with streams of revenue flowing to less innovative incumbents. Yet this is precisely the sort of progress that is impeded by the current copyright system as it applies to certain digital music services.

Songwriters, recording artists, and record labels should be fairly paid for their work, and deserve the protections of a well-designed copyright royalty framework. But it’s also important not to lose sight of the public’s interest in having access, under reasonable terms, to copyrighted material. And that interest is no less valid if it happens to be served using non-traditional business models such as Internet radio.

According to a survey conducted by Arbitron and Edison Research in early 2012, an estimated 103 million Americans had listened to Internet radio in the month preceding the study. Internet radio has become an important mechanism to provide the public with access to music – a point worth keeping in mind when rethinking how to best set digital music royalty rates.

Authors

John Villasenor

Publication: Forbes

Image Source: Samantha Sais / Reuters

Patent Reform: Five Things Technology Companies Need to Know

John Villasenor — Mon, 14 May 2012 13:24:00 -0400

Intellectual property (IP), which includes not only patents, but also trademarks, copyrights, and trade secrets, can be a critical asset for companies of all sizes, and is almost always a major focus in acquisition and licensing discussions. The American patent system is undergoing a major shift thanks to the America Invents Act (AIA), which was signed into law by President Obama last September.

Here are five key aspects of the AIA that technology companies need to know.

1. Say goodbye to the “first to invent” patent system

The American patent system has traditionally been structured to award a patent to the earlier inventor – even if he or she files a patent application after a later-inventing competitor. However, in many other countries, the patent is awarded to the inventor who files the first patent application.

In part to bring the United States into closer alignment with the rest of the world, the AIA eliminates the first-to-invent system for U.S. patent applications with an effective filing date of March 16, 2013 or later. In its place will be a new system that is called “first-to-file,” though that is only a partially accurate description of the way things will actually work. The full explanation is more complicated, with public “disclosures” of an invention also playing an important new role with respect to patentability.

March 16, 2013 may seem like a long way in the future. However, technology companies need to be thinking about this change now. Patent applications filed before that date can still realize the benefits of the first-to-invent system. In addition, it will take time to ensure that everyone who communicates with the outside world about company technology–including executives, managers, marketers, developers, and salespeople–is fully aware of the new impact that disclosures will have with respect to patentability.

2. Tell us the best way to practice the invention. Or else . . .

An inventor filing for a patent is required to disclose the “best mode” that he or she knows of practicing the invention. This is part of the contract that forms the basis for the patent system: in exchange for teaching the public how to practice the invention, a patent holder is granted a time-limited right to exclude others from doing so.

Under pre-AIA patent law, an inventor’s failure to disclose the best mode during the patent application process was grounds for having the resulting patent declared invalid when it was later asserted in litigation. Under the AIA, however, that sanction has been removed. It’s a bit like posting a speed limit of 60 mph, but then adding a footnote saying “those who drive faster will not be cited.”

This apparent inconsistency has been the subject of spirited debate in the patent law community, with some people claiming, not at all unreasonably, that the best mode requirement is effectively gone. The U.S. Patent and Trademark Office (PTO) has [pdf] reiterated that the best mode requirement is still alive and well to obtain a patent – but with a key sanction for failure to do so off the table, the incentives have clearly changed.

So what should companies do? They should do the right thing and continue to disclose the best mode when applying for patents. Not only is it still the law (though perhaps not particularly enforceable), but future legislation may close this loophole. If that happens, companies that played by the rules will have patents more likely to withstand validity challenges in future litigation.

3. A faster way to get patents

According to a recent analysis posted on patent law blog Patently-O, it takes an average of nearly five years to get a U.S. patent (assuming that the clock starts ticking with the very first filing associated with a patent). Some of these delays are due to the backlog in the PTO, but inventors themselves often share some of the blame. However, even when inventors do everything right, the patent examination process can take years. This can be frustrating in the technology world, where product life cycles can be far shorter.

Following the enactment of the AIA, the PTO instituted a new (but [pdf] previously planned) prioritized patent examination program called Track One. By paying an additional fee, inventors can have their patent applications “processed to completion” in one year. Track One can be a very valuable option, particular for technology startups wanting to rapidly build a portfolio of issued (as opposed to pending) patents. The PTO currently limits the number of Track One patent applications to 10,000 per fiscal year.

4. How can I attack a patent? Let me count the ways . . .

The AIA substantially expands the mechanisms available to attack a patent – or even a pending patent – held by a competitor. For example, the AIA introduces a “post-grant review” that will enable third parties to challenge a patent issued within the previous nine months. In addition, as of September 2012, there will be a “pre-issuance submission” option that companies can use to explain to the PTO why a competitor’s pending patent application shouldn’t be granted. As if that weren’t enough, there are also two other reexamination and review procedures that third parties can use to challenge a patent through the PTO. And, patents can still be challenged in federal court and in the International Trade Commission.

What does this mean for technology companies? The answer depends on whether you’re on defense or offense. When filing patent applications, it’s more important than ever to do proper diligence to ensure a strong application that will be more robust to third-party attacks. Companies wishing to challenge issued or pending patents held by a competitor should get up to speed on the new procedures.

5. Trade secrets got a promotion!

The AIA includes a new defense to infringement based on [pdf] prior user rights. In English, here’s how this works: Suppose that your company comes up with an invention that it decides to retain as a trade secret. Now suppose that a competitor independently replicates the same invention and decides to patent it. If the competitor then sues your company for patent infringement, what happens? If your company was commercially using the competitor’s patented invention by a sufficiently early date, that commercial use can inoculate your company against an infringement finding.

Trade secrets retain the same advantages as before in terms of offering a competitive edge. However, thanks to the AIA, one of their risks–the possibility of being held liable for practicing your own trade secret–has been lowered.

The details of the above provisions, and the AIA generally, are complex. In addition, there is much about the AIA that remains uncertain, and will be clarified through PTO actions and the inevitable court tests. It’s important for companies wishing to successfully navigate this rapidly changing landscape to work with a good patent attorney or patent agent. Up-front investments in a good IP strategy are often returned many times over when a company is acquired or enters into patent licensing agreements.

In addition, while there’s certainly no need to turn everyone in the company into an expert on the ins and outs of patent reform, it would also be a mistake to assume that only the patent specialists need to care. Companies that proactively update their internal procedures and employee training to adapt to the AIA will be much better positioned to maximize the value of their IP portfolios.

Authors

John Villasenor

Publication: Forbes

Reaction to President Obama's Same-Sex Marriage Endorsement

Jonathan Rauch — Wed, 09 May 2012 00:00:00 -0400

Count me stunned that President Obama came out in favor of same-sex marriage, after years of straddling and waffling. I was among those who said he would (a) stay on the fence through the election, uncomfortable though that might be, because (b) there's more political downside than upside in bringing the issue forward and taking a stand that still alienates many swing voters.

Why, then, did he do it? And what does it mean?

As to why, various press accounts speculate that pressure from gay donors played an important role (gay money features prominently in his campaign), and that Vice President Biden's sudden emergence as "comfortable" with gay marriage, combined with Education Secretary Arne Duncan's endorsement, made Obama's straddle untenable--potentially dividing the party and alienating its pro-gay base in a year when unity and enthusiasm are essential.

To me, those explanations sound unconvincing, or at least incomplete. Gay money knows that the choice between Obama's Democrats and Mitt Romney's Republicans is as stark on gay issues as the divide ever has been. With Republicans in control of the White House and Congress, much of the progress that gay rights made under Obama would be endangered. Many Republicans want to reinstate the ban on gays in the military, reverse Obama's repudiation of the Defense of Marriage Act, and amend the U.S. Constitution to ban gay marriage. Gay donors have plenty of motivation to support Obama, with or without a gay-marriage endorsement.

As for the straddle, yes, it was becoming uncomfortable. It did make him look evasive and arguably weak. But, had he chosen to, Obama could have gotten away with it through November. This year's election is just not about social issues.

Although bringing forward a divisive social issue in an "economy, stupid" year seems unlikely to help either candidate, I suspect that the Romney camp is pretty happy about Obama's announcement. I'd guess that endorsing gay marriage mostly reinforces Obama's appeal to people who were going to vote for him anyway, largely in states that are Democratic. Swing voters in battleground states are more likely to be turned off than on, either because they disagree (as many black voters do, for example) or because they think the election should be about something else. If counting electoral votes were all the president was doing, I'd advise him to stay away--against my own convictions as a gay-marriage proponent.

What happened? Harry Truman was fond of quoting Mark Twain: "When in doubt, do right. This will gratify some people and astonish the rest." Now and then, politicians have a "goddammit" moment. Obama's position had clearly shifted on the issue (who was he kidding with his talk of having "evolved" but being unwilling to make news?), and there was never going to be a better time to make the switch than now--at least not while he is certain to be a non-lame-duck president.

So Obama decided it's worth a roll of the dice to make history. Which is what he has done.

As of his announcement, favoring gay marriage is now fully, indisputably, and permanently a mainstream political position. All hint of weirdness or stigma is gone. It is also now the stated position of one of the two major political parties (only 16 years after President Bill Clinton, a Democrat, signed the anti-gay-marriage Defense of Marriage Act). Precisely because the issue is unlikely to decide the election this year, November's result will not revoke the issue's promotion in status even if Obama loses. Though gay couples have not achieved full legal equality, gay marriage, as an issue, has achieved full political equality. That is a landmark in the ongoing marriage debate.

The courts, as Obama, the former law professor, must be well aware, will take notice. Two big gay-rights cases--one challenging California's revocation of gay marriage, the other challenging the Defense of Marriage Act--are on their way toward the Supreme Court. With his switch from ambivalence to advocacy, Obama is sending a signal to the courts that the country is ready for gay marriage, giving them more cover to uphold it. Courts may not go by poll results, but they do like to stay within the mainstream. And Obama has just moved it.

Authors

Jonathan Rauch

Image Source: Jonathan Alcorn / Reuters

The Real Immigration Debate Isn't About the Law

Audrey Singer and Jill Wilson — Fri, 27 Apr 2012 00:00:00 -0400

Anyone who keeps an eye on immigration in America is thinking about Arizona right now, as the U.S. Supreme Court considers the federal government’s lawsuit against Arizona’s SB 1070.

While the court digs into the legal nuances of pre-emption, let’s step back and consider what the debate is really about.

The Washington Post this week published an article about the architects of many state and local laws cracking down on illegal immigration, including Arizona’s—Michael Hethmon and Kris Kobach.

Hethmon, general counsel for the Immigration Reform Law Institute, says immigration is “on track to change the demographic makeup of the entire country. You know, what they call ‘minority-majority….’ How many countries have gone through a transition like that—peacefully, carefully? It’s theoretically possible, but we don’t have any examples.” He also predicts that if the Supreme Court upholds the Arizona law, this country will experience “the classic environment for, if you will, sort of nativist-type sentiment.... It should explode at the states or—even better—[Congress] will be provoked to take action.”

His admission that the proliferation of state and local action on immigration policy is about ethnicity and culture rather than legality doesn’t stand alone. Kobach echoes, “Change the individual decisions of particular illegal aliens, and they will decide to leave the country.” Which particular illegal residents is he referring to? If this is indeed about legality shouldn’t he be focused on all illegal residents?

Consider the Prince William County, Va. anti-illegal immigrant ordinance (authored by Hethmon) passed in 2007. In our 2009 case study, we found that county residents who pushed for the law acknowledged that the (presumed illegal) status of their new neighbors was secondary to the changes they were seeing on the ground such as to the outward appearance of houses and property, many of which could have been addressed by local zoning enforcement. But these residents supported the ordinance because it’s easier to focus on something as black and white as legal status than to face the difficult work of addressing neighborhood and cultural change.

Consider Kobach’s statement about our options for federal immigration reform: “We are constantly told that the only two options are massive roundups [of illegal immigrants] or an amnesty. But attrition through enforcement is the third way.”

He’s right and wrong. We are told that those are the only two options because people in his camp keep saying it. But it’s not true. The real third way is a legalization program allowing immigrants who have been living and working in the United States for several years and not committed other crimes to pay fines, learn English, and wait in line to become legal residents. If that is amnesty, then U.S. businesses and consumers have enjoyed a form of amnesty—cheap labor and cheap goods—all the years that our immigration system has failed to legally meet our demand for labor.

Hethmon acknowledges that the strategy of attrition is flawed: “What are you going to say to the people who say that you’re creating a climate of fear?” Hethmon recalled someone asking him recently. “I say, ‘Well, yeah, it’s not great. But it’s the best choice.

No, it’s not. The best choice is to set levels of legal immigration (both low- and high-skilled) that meet our demand for labor, enforce them at the border and the worksite, and then find a legal way for the millions of residents living in this country illegally to continue to contribute to our economy.

New analysis out this week from the Pew Hispanic Center showing that net migration from Mexico has dropped to zero suggests that the strategy of attrition has been a factor in some migrants’ decisions to leave the United States or not to come in the first place. But migration decisions are complicated, and the recession-driven drop in construction and service sector jobs north of the border combined with improving conditions in Mexico are other major contributors to this shift.

Figuring out how to integrate newcomers into our midst isn’t easy but we’ve been doing it—successfully by most counts—for generations. Hethmon argues that no society has yet succeeded in transitioning peacefully to “majority minority” status, but our history reveals that it’s possible here. Previous waves of immigrants —Southern and Eastern Europeans, Irish, and Chinese—have been vilified, yet today they are considered a positive part of the American story. So much so, in fact, that those once considered “minorities” (i.e. certain European immigrants) are now counted in the “non-minority” category.

The statements reported in the Post piece—and similar ones by many others over our history—reveal that the unease over illegal immigration is, at its heart, cultural. So let’s stop beating around the bush and get down to the difficult task of succeeding in this most important demographic experiment. If any country can do it, we can.

Authors

Audrey Singer
Jill Wilson

Publication: The Avenue, The New Republic

Image Source: Jason Reed / Reuters

Five Ways Companies Can Leverage Rights Under the America Invents Act

John Villasenor — Wed, 25 Apr 2012 16:38:00 -0400

Note: This is the fourth of a series of articles on the America Invents Act (AIA), the sweeping patent reform legislation signed into law in September 2011.

One of the most notable changes in the AIA provides companies accused of patent infringement with a new defense based on “prior user rights.” This might sound like a phrase that only a patent attorney could love, but in a world in which technology products are increasingly complex, the protections it provides can be vital. Here’s why:

Applying for patents on every one of the many inventions that go into today’s complex products isn’t practical. The costs and time commitments to actually write and file the applications would be prohibitive, and some of the resulting patents would be so specific that they would have limited commercial value. Some inventions are more effectively leveraged if they were held as trade secrets instead of being disclosed to the world through the patenting process.

What happens, however, if the invention that your company chooses to retain as a trade secret is independently replicated by a competitor who decides to patent it? If the competitor then sues your company for patent infringement, what can you do? This is where the new prior user rights defense can play a role.

If your company was commercially using the competitor’s patented invention by a sufficiently early date, that commercial use can inoculate your company against an infringement finding. This leaves your company free to continue using the invention without paying any royalties to the competitor who has patented it. The competitor can sue other people for infringement, but your company is off the hook.

Prior user rights aren’t new in US patent law; a provision covering business method patents has been in place since 1999. However, the AIA greatly expanded the scope of these rights. As Representative Lamar Smith (R-TX), one of the AIA’s sponsors, explained in a June 2011 speech in the House of Representatives:

The inclusion of prior user rights is essential to ensure that those who have invented and used a technology but choose not to disclose that technology--generally to ensure that they not disclose their trade secrets to foreign competitors--are provided a defense against someone who later patents the technology.

In effect, trade secrets just got a promotion: They retain the same advantages as before in terms of offering a competitive advantage, while one of their risks--the possibility of being held liable for practicing your own trade secret--has been lowered.

However, the AIA’s prior user rights provision doesn’t provide blanket immunity. For example, it can’t be used against patents that issued before September 16, 2011. In addition, prior user rights generally don’t apply if your company is accused of infringing a patent covering a university invention (the story of that exception and its implications may be worth a separate post of its own). And, if your company’s commercial use doesn’t occur early enough, the defense isn’t available.

What’s clear from the above is that if your company is sued for patent infringement, there’s a new defense that could be valuable. But does that mean there’s no need to give this aspect of patent reform any thought unless and until a patent lawsuit occurs? Absolutely not. Here are some things companies can do right now in light of this new provision:

In some respects, the shift from a first-to-invent to a first-to-file system decreases the protective power of internal documentation. However, that documentation can still be important for the prior user rights defense. The success of that defense will depend on the ability to show early commercial use of the invention--a task that will obviously be much easier if you’ve been careful with documentation.
In contrast with prior user rights provisions in many other countries, under the AIA those rights protect commercial use, but not preparation for commercial use. A trade secret that isn’t yet being commercially used can’t be used as a defense against infringement.
How do you handle an invention that isn’t valuable enough to patent, and isn’t likely to be particularly valuable as a trade secret either? If your company has no short term plans to commercially use the invention, but may want to do so in the future, it’s worth considering a pre-emptive public disclosure aimed at preventing anyone else from obtaining a patent that might later come back to bite you. (However, it’s important to be aware of the consequences of such a disclosure on your own company’s patent rights, particularly internationally.)
While it’s clear that the AIA’s prior user rights defense applies to a broad range of patents, the language of the AIA leaves some doubt regarding the precise breadth of that coverage. Companies should keep an eye out for case law or legislative actions that might clarify this issue in the future.
By increasing the value of trade secrets, the prior user rights defense alters the set of considerations involved in deciding how to handle new inventions.

While the full impact of the prior user rights defense on the American patent landscape won’t be known for many years, what’s clear now is that it can be an asset for the many companies that build today’s increasingly complex technology products.

Authors

John Villasenor

Publication: Fast Company

How to Protect Your Company from Invention Theft

John Villasenor — Mon, 09 Apr 2012 10:08:00 -0400

This is the third in a series of articles on the America Invents Act (AIA), the sweeping patent reform legislation signed into law in September 2011.

As I explained in the first post in this series, the AIA replaces the “first-to-invent” system with what is commonly called a “first-to-file” system. The first-to-file rules will apply to patent applications with an effective filing date of March 16, 2013 or later.

There has been much dispute over whether this shift will benefit American innovation over the long term. However, when it comes to the issue of intellectual property (IP) security, the verdict is already in: The first-to-file system increases the risk of invention theft.

To understand why, it’s helpful to consider an example. Suppose that an employee at your company, which we’ll call EthicalTech, has come up with a new invention. She has documented it internally and is currently engaged in discussions with colleagues and company management regarding when to file for a patent. Now suppose that one of her colleagues, in violation of his employment agreement (and quite possibly of various laws), decides to describe the idea to a friend who works for a competitor that we’ll call FraudCo. The friend presents the idea to his managers at FraudCo, who then quickly file for a patent on the stolen invention. A few weeks later, EthicalTech files its own patent application.

What happens? Under the outgoing first-to-invent system, the internal documentation created by the true inventor can ensure that the EthicalTech gets the patent, even though FraudCo filed first.

Under the incoming first-to-file system, however, things are more complicated--and far less favorable--for EthicalTech. Based on the dates alone, the U.S. Patent and Trademark Office (PTO) will assume that FraudCo has the rights to the patent since it filed first (and since neither company disclosed the invention prior to filing). To enable companies like EthicalTech to rectify the obvious injustice of this result, the first-to-file system includes a new “derivation proceeding” designed in part to provide a mechanism to recover stolen IP.

Under this proceeding, EthicalTech can file a petition with the PTO explaining the basis for its belief that FraudCo stole the invention. If the unscrupulous employee was foolish enough to use EthicalTech’s own email system to tell his equally unscrupulous friend at FraudCo about the invention, the theft can be easy to document. But suppose that the information was exchanged in a conversation.

In practice, it will often be difficult or impossible for EthicalTech to meet the PTO’s requirement of filing a petition “supported by substantial evidence” that the idea was stolen. An additional complication is that there is a relatively short window during which EthicalTech even has the right to file the petition. (The window lasts for one year and is tied to the PTO publication of a claim to the invention). EthicalTech can also choose to address the theft through litigation against FraudCo in federal court (under a different timing window for when it can file the complaint), though it would face challenges in establishing the theft in that venue as well.

The bottom line is that the first-to-file system is not friendly to companies that fall victim to IP theft. And, while it is seldom discussed in technology startup circles, IP theft is a significant and growing threat. If there’s any silver lining to this aspect of patent reform, it lies in spurring companies to reduce their exposure.

There are at least three ways in which IP can be stolen. First, a company’s computers can be accessed by an unauthorized outsider. Most corporate systems aren’t nearly as secure as their information technology managers would like to believe. As FBI Director Robert Mueller said in a March speech at the RSA Conference in San Francisco, “There are only two types of companies: Those that have been hacked, and those that will be.” Second, an unscrupulous insider can compromise IP. Third, a well-meaning but careless employee can inadvertently place company IP at risk.

Here are some steps that companies can take to increase IP security. These steps are useful in general, but will become particularly important with the move next March to the first-to-file system:

• Companies should educate employees regarding sound practices to safeguard IP. Unencrypted laptops, company emails forwarded to personal accounts, and careless conversations can all lead to IP landing in the wrong hands.

• In many technology companies, proprietary information is stored across a complex and rapidly evolving mix of local and cloud-based systems. In this type of dynamic environment, it’s important to make sure that a company’s IP security procedures keep pace with changes to its information technology infrastructure.

• Once the first-to-file system is in place, companies will have a much higher incentive to act quickly to protect new inventions. Protecting inventions quickly closes the window on both law-abiding competitors who independently arrive at the same idea and unethical competitors who apply for a patent based on stolen IP.

• Many technology employees change jobs often. This dynamism is an important ingredient in the success of technology hubs such as Silicon Valley and Austin. However, while exiting employees have every right to walk out the door with their talents, they don’t have the right to take company IP with them. Procedures should be reviewed and tightened to ensure that IP stays with the company when employees change jobs.

While much of the above is common-sense advice, startups often fail to follow it. The transition to first-to-file furnishes one more reason to ensure that one of your company’s most valuable assets--its IP--remains under your control.

This piece was originally published on Fast Company

Authors

John Villasenor

Publication: Fast Company

Image Source: John Foxx

Don’t Campaign Against the Supreme Court, Mr. President

William A. Galston — Thu, 05 Apr 2012 14:55:00 -0400

If the Supreme Court overturns key provisions of the Affordable Care Act, it will precipitate the largest confrontation between the Court and a president since the mid-1930s. Yes, the Court prevented Truman from seizing the steel mills and forced Nixon to give up the tapes. But in those instances the decision ended the controversy because the President chose not to prolong it.

Not so this time: President Obama has signaled his intention to make the Court a central issue in the fall campaign if it guts his signature policy achievement. Although this may be a shrewd short-term political calculation, it raises troubling questions about a president’s broader responsibilities to the constitutional order he is sworn to uphold.

There are good reasons why, if Obamacare is indeed overturned, it would be tempting for the President to mount an all-out attack on the Court in the presidential campaign. First, defeat typically energizes the losers more than victory does the winners. A negative decision by the Court would enrage liberals who have been lukewarm about the ACA and the Obama presidency. And the president would have no trouble channeling this renewed passion toward electoral mobilization.

Second—and more fundamentally—the American people have soured on the Court. Surveys done in the past two years find that three quarters of the respondents believe that justices’ political and ideological views sometimes influence their decisions. The Gallup trend question—“Do you approve or disapprove of the way the Supreme Court is handling its job?”—shows a 15-point decline, from 61 percent to 46 percent, in public approval of the Court since mid-2009. A Kaiser Family Foundation survey released last month found only 23 percent of the people expressing “a great deal” or “quite a lot” of confidence in the Supreme Court, versus 30 percent in the presidency (and only 6 percent in Congress). In other words, the Court is vulnerable to political attack.

But there are times when a president should refrain from exploiting a political opening, and this is one of them. The polarization of our politics has already produced a governance crisis; ours is a political system that finds it increasingly difficult even to perform routine functions, let alone agree on solutions to large problems. The inability to act decisively has gotten so bad, in fact, that it verges on a legitimacy crisis as well. The American people have withdrawn their trust from nearly all our governing institutions, and most believe that the government officially based on “We the people” responds instead to a myriad of narrow special interests.

An all-out attack by Obama on the Court, and its institutional role in American public life, would only make things worse—especially if it is framed in terms appropriated from his adversaries. On Monday, the President echoed conservatives’ long-standing critique of “judicial activism,” referred to the justices as an “unelected group of people,” and characterized the overturning of a law passed by a “democratically elected Congress” as an “unprecedented, extraordinary step.”

The president used to teach constitutional law, so he surely knows better. Although justices are nominated and confirmed by elected officials, the founders deliberately insulated the Court from everyday politics. They are “unelected” so they can do their job without being answerable to transient public sentiment. That is because their job is to judge democratically passed laws against constitutional standards and to serve as guardians of those standards, even when it is unpopular. But since judging requires judgment—since it is not mechanical—it is inherently controversial. One person’s judicial activism is another’s constitutional fidelity.

So if the Court does invalidate the individual mandate, Obama should take the conversation in a different direction. He should seize the opportunity to place this constitutional controversy in a broader context—to remind the American people that the substantive political agenda that conservatives are proposing is that of a return to the pre-New Deal era. This is as true of Republicans in Congress, who want to dismantle the welfare state, as it is of the “originalists” in the Supreme Court, who want to abandon the interpretation of the Commerce Clause that became a consensus after 1936 and made possible many of the programs Americans now cherish and take for granted. The 2012 election, he could argue, is a choice not just between two budgets or even two social philosophies, but also between a conception of government adequate to address the problems we face today and a conception that faces backward, not forward. Obama can pay deference to the Court’s prerogative to challenge legislation while attacking the vision of jurisprudence that is currently motivating its interventions.

I sincerely hope that it doesn’t come to this. In my previous column, I urged John Roberts to adopt a view of his role as chief justice that is informed by his responsibility for the legitimacy of the institution over which he presides. Especially in the context of the past decade, another decision split 5-to-4 along ideological lines might well convince the American people that their aspiration for a Court above normal politics is hopelessly naïve. But if that decision comes to pass, it is the president’s responsibility to minimize the damage by speaking to the people’s hopes rather than their fears, to their patriotism rather than their anger. That’s what Obama at his best has always done. And that’s why he was elected.

Authors

William A. Galston

Publication: The New Republic