Yesterday, President Obama nominated Second Circuit Judge Sonia Sotomayor to replace retiring Justice David Souter.  To no one’s surprise, newspapers, blogs and TV news programs across the country immediately began scrutinizing Judge Sotomayor’s personal and professional background, including her judicial record.  This blog is no different of course, except that it focuses on intellectual property issues and therefore will examine Sotomayor’s experience exclusively from an IP standpoint.

In looking at Judge Satomayor’s background and experience in IP cases, there’s really not many cases to look back on.  While sitting on the bench on the U.S. Court of Appeals for the Second Circuit she did issue decisions in numerous trademark disputes.  But none of these cases seems particularly noteworthy.  Nor did there seem to be any overarching viewpoint that can be gleamed from a quick review of these cases.   

However, Sotomayor has issued decision in a few very significant IP cases.  In 2002, she issued a decision in one of the first rulings involving the Anti-Cybersquatting Consumer Protection Act.  Her decision helped establish the parameters of how and where claims under the ACPA could be brought by trademark owners.  The Act, which was enacted in 1999, makes it illegal for someone to register a domain name that is either a trademarked term or an individual’s name with the sole intent of selling the rights to that domain name for a profit.  One important provision in the law allows trademark owners to bring an in rem suit (which is a suit against the domain name itself, instead of against the registrant of the domain name).  The 2002 ruling in Mattel Inc. v.Barbie-Club.com (which was discussed in a prior blog issued by Sotomayor clarified that such in rem jurisdiction only applied in the judicial district where the domain name register, registry or other authority is located. 

Most significantly, Judge Sotomayor also was involved in the most well publicized and controversial copyright case affecting the digital content industry in recent memory.  The case --  Tasini v. New York Times -- arose when several periodical publishers and aggregators began transferring their collective works from analog to digital.  Their agreements with freelance writers and photographers whose underlying works were included in these collective works were often silent as to whether the freelancers granted these publishers the right to do this.  The publishers argued that the freelancers authorization was not necessary because under Section 201(c) of the Copyright Act they did not need the permission of the freelancers to produce a revised version of the original edition of their newspapers, magazines and other collective works in which these freelance articles and photographs appeared.  Thus, one of the issues in the case was whether electronic reproduction of a newspaper or periodical constitutes a revision of the original print edition.   Sotomayor, while serving as a judge of the U.S. District Court for the Southern District of New York, granted summary judgment to the periodical publishers and database owners by ruling that they were entitled, under Section 201(c), to republish their collective works in electronic media without seeking permission of the authors of any underlying works contained in these collective works. 

Sotomayor’s opinion was thoughtful and articulate, and, in my view, correct.  Unfortunately, the U.S. Court of Appeals for the Second Circuit did not see it that way.  The Second Circuit held that the revision right held by creators of a collective work under Section 201(c) does not include the right to republish the collective work in electronic media.  This decision was subsequently affirmed  7-2 by the Supreme Court.

Lastly, while serving on the bench in the Second Circuit, Judge Sotomayor also decided the important onl;ine contracting case of Specht v. Netscape Communications Corp..  In the case, the Second Circuit declined to enforce contract terms that were accessible only through a link found at the bottom of a web page.  Sotomayor found that because "[p]laintiffs were responding to an offer that did not carry an immediately visible notice of the existence of license terms or require unambiguous manifestation of assent to those terms" a reasonably prudent consumer would not have known of the existence of license terms and therefore this was not sufficient to place consumers on inquiry or constructive notice of those terms.”