NFTs: Coming Soon to a Patent Portfolio Near You?

By: Hannah Avery

At this point the craze surrounding NFTs is far from breaking news. NFTs (“non-fungible tokens”) have been created for everything from the “Disaster Girl” meme to the world’s first tweet. They have been the subject of numerous articles, publications, and blogs, including this blog by the Washington Journal of Law, Technology, and the Arts’ Associate Editor-in-Chief Joanna Mirsch, discussing video game-related NFTs. Despite NFTs’ widespread popularity, early “NFT craze” trends seemed at odds with established American intellectual property rights, with many works being minted as NFTs without the consent of the original creator. At the very least, ownership of NFTs was widely regarded as independent of ownership of the underlying intellectual property rights. But… what if they weren’t?

While the sale of an NFT by itself does not automatically confer the underlying IP rights, the use of self-executing contracts in conjunction with the sale of an NFT can. This is the exact type of transaction that IBM was betting on when it teamed up with IPwe to create a platform for block-chain-enabled IP transactions. The IBM/IPwe platform transfers patent rights by building a smart contract with standardized terms into the token. The patent owner is able to set the terms of that contract, including what information is public and what is not. With this big bet on patent NFTs by IBM, the launch of IPwe’s secure licensing & selling capabilities, and the first sale of a patent and the related patent rights as an NFT in April 2021, many forward-looking patent-holders may be wondering whether they should convert their patent portfolios to NFTs.

Unsurprisingly, the press release for the IBM-IPwe partnership touts a number of benefits of blockchain-based IP transactions including increased transparency, reduced transaction costs, and greatly improved capacity for patent-holders to manage, value, and transfer their IP assets. Additionally, blockchain-based patent transactions could help to prevent future SEP licensing disputes and/or to simplify their resolution. However, there are also a number of potential risks which could dissuade those who would otherwise be early-adopters.

Increased transparency of ownership

Since the introduction of blockchain technology, one of its most praised features has been the unique ability to create an indisputable record of a series of transactions. As applied to patent rights, this feature would allow users to track the ownership of patent NFTs and the transactions associated with patent license NFTs. This tracking mechanism would provide clarity of ownership of the patent rights. According to IPwe’s Chief IP Officer Cheryl Milone Cowles, “distributed network verification . . . provides the confidence of transacting with a clear current title and history.” While such assurance is undoubtedly appealing to potential investors, it may be too good to be true… at least for now. Given the nature of this technology and the current case law governing patent ownership disputes, situations could arise where a legal approach or remedy would be unclear. Some experts have raised concerns including: whether an owner of a patent whose NFT was stolen through a ransomware attack would be able to reestablish ownership through the legal system; whether a court would recognize transfer of a patent via NFT absent a more standard, written assignment; and, if courts do prove willing to recognize such an assignment via an NFT sale, what evidence will be considered sufficient to demonstrate ownership. Such uncertainties could easily lead to unfavorable, or simply unsatisfying,  outcomes for purchasers.

Cost-reduction

Historically, the costs of obtaining, maintaining, and licensing IP have been high. Therefore, the promise of a platform that could lower those costs, as IPwe claims, would be welcome news to many players in the IP space. While the technology behind the platform may be complicated, the theory of potential cost-savings is simple — the smart contracts included in token sales, as discussed above, would replace the current process of IP sales and licensing that is laden with attorneys fees, paperwork, and onerous contract negotiations. Such savings would be embraced by any organization accustomed to shouldering the burden, but it has the potential to be game-changing for small and medium-sized companies who may have previously been reluctant to engage in IP-related transactions because of current prohibitive costs.

Portfolio management

While tokenizing IP assets may interfere with a company’s existing portfolio management strategies, such disruption of existing strategies could also reap rewards for the first movers in this space. For example, the potential for easy resale of an IP asset could increase the value of that asset at the time of the initial sale. Or, standard essential patent holders could also utilize smart contracts to avoid expensive litigation while capturing licensing fees with each sale or resale. The possibilities are endless.

* * *

All in all, tokenizing patent assets may reduce the costs associated with patent licensing and streamline portfolio reporting. However, early adopters of this approach will have to navigate uncertain legal areas regarding the ownership of their tokenized IP rights. In our information-based economy, adopters could be risking some of their most valuable assets in their effort to become an industry leader. Is it worth the risk?

Balancing Labor Law and Client Confidentiality in the Social Media Age

By: Kimberly Shely

It is common knowledge that lawyers have a professional duty to reasonably ensure their employees abide by the Rules of Professional Conduct (RPCs). This ethical duty includes training their employees on how to maintain client confidences. Lawyers need to address proper social media etiquette with their nonlawyer employees to ensure that they understand that “confidential client information” cannot be discussed or shared on their personal social media platforms. However, lawyers must balance these ethical obligations with employees’ legal rights under labor laws. The National Labor Relations Act (NLRA) provides employees protection in engaging in concerted activity to better their working environment, and the National Labor Relations Board (NLRB) has extended this to include social media posts. Lawyers can balance protecting client confidences with their employees’ rights under the NLRA.

Lawyer’s Duties Under the ABA Model Rules of Professional Conduct

The applicable RPCs are Rule 5.3 Responsibilities Regarding Nonlawyer Assistance and Rule 1.6 Confidentiality of Information. Rule 5.3(b) explains that “a lawyer having direct supervisory authority over the nonlawyer shall make reasonable efforts to ensure that the person’s conduct is compatible with the professional obligations of the lawyer.” In particular, Comment 2 clarifies that it is the lawyer’s responsibility to instruct and supervise the nonlawyer employees, “particularly regarding the obligation not to disclose the information relating to representation of the client . . . .” This is consistent with a lawyer’s duties under Rule 1.6(c) to make reasonable efforts to prevent the “unauthorized disclosure of . . . information relating to the representation of a client.” Comment 18 in Rule 1.6 again emphasizes it is the lawyer’s duty to competently safeguard client information, including by those the lawyer has direct supervisory authority over. The NLRA is not an exception to this Rule.

The NLRA Applies to Your Employees, Even Without a Union

The NLRA was created to protect employees in private-sector workplaces and allow them to seek better working conditions without risking retaliation. A key feature of the NLRA is Section 7 in that “[e]mployees shall have the right . . . to engage in other concerted activities for the purpose of collective bargaining or other mutual aid or protection . . . .” A common misunderstanding of the NLRA is the assumption that it only applies to employees that are already in a union or attempting to join a union. However, “concerted activity” protections in Section 7 of the NLRA extend to any employee that meets the statutory definition, regardless of their union status. 

The statutory definitions of “employee” and “employer” make it clear that the NLRA extends to nonlawyer employees in a private law firm. NLRA Section 2(3) defines “employee” to include essentially any employee of a particular employer, except for agricultural workers, those working for a family member in domestic services, independent contractors, or a NLRA defined “supervisor.” This broad definition of “employee” would encompass nonlawyer employees described in Comment 2 of Rule 5.3 of the RPCs.

Private law firms, and by extension the lawyers within, would be considered “employers” under the NLRA. The NLRA Section 2(2) definition of “employer” is similarly broad and “includes any person acting as an agent of an employer, directly or indirectly, but shall not include the United States or any wholly owned Government corporation . . . or any labor organization . . . .” Nonlawyer employees and lawyers in private law firms meet the NLRA definitions, and therefore Section 7 of the NLRA applies to private law firms. 

Your Employees’ Social Media Rights Under the NLRA

Lawyers must be aware that Section 8(a)(1) of the NLRA makes it “an unfair labor practice for an employer to interfere with, restrain, or coerce employees in the exercise of rights guaranteed in section 7.” Again, these Section 7 rights extend to employees who are not represented by a union. An employer can potentially commit an Unfair Labor Practice even without a unionized workplace. The “concerted activity” protections in Section 7 give employees “the right to act with coworkers to address work-related issues in many ways.” Some of the most common examples of “concerted activity” are talking with coworkers about wages, hours, and working conditions in an effort to improve them. 

The NLRB established in Hispanics United of Buffalo that Facebook and other forms of social media are a valid platform for Section 7 concerted activity discussions. In this matter, an employee posted on Facebook about her frustrations with a fellow coworker and in that post, the employee asked her other coworkers how they felt about the situation. The employees involved in the Facebook discussion were discharged because of the posts. The Board found that firing these employees violated Section 8(a)(1). It was a violation because the NLRB viewed the Facebook posts as “concerted activity,” which therefore meant it was protected under Section 7

How to Balance Nonlawyer Employee’s NLRA Social Media Rights with the RPCs

While safeguarding client confidentiality is a core and essential component of lawyers’ duties to their clients, an outright social media ban on any discussion of the workplace will run afoul of the NLRA. In its Boeing Company decision, the NLRB established a two-pronged test to determine whether a facially neutral workplace rule would violate Section 7, and lead to a Section 8(a)(1) violation. The Board reviews two aspects: “(i) the nature and extent of the potential impact on NLRA rights, and (ii) legitimate justifications associated with the rule.”  

The NLRB issued an Advice Memorandum regarding an issue with an online disparagement rule from Stange Law Firm. Although the disparagement rule was a violation of Section 8(a)(1), the memo provides guidance on an employer’s use of a “savings clause.” 

“For a clause to cure a workplace rule that otherwise has an unlawful impact on Section 7 rights, the Board has said that the clause must do more than generally refer to the Act or Section 7 rights. An effective savings clause should address ‘the broad panoply of rights protected by Section 7‘ as well as be prominent and proximate to the rule that it purports to inform.”

A properly executed “savings clause” should effectively inform nonlawyer employees of their rights under Section 7. This clause should clearly differentiate their Section 7 rights from the rule prohibiting discussions of confidential client information on social media. Lawyers have legitimate justifications in protecting client confidences. 

Lawyers should already be providing robust confidentiality training to their nonlawyer employees. Nonlawyer employees should understand that confidential client information under RPC Rule 1.6(a) includes information relating to the representation of a client. This confidentiality training should provide guidance on appropriate social media use. While employees may have a right under the NLRA to discuss wages, hours and working conditions, that right does not give them permission to disclose any information that would identify a specific client or client matter. 

By properly training nonlawyer employees on maintaining client confidences, including on their personal social media accounts, lawyers can fulfill their professional obligations under the Rules of Professional Conduct. Lawyers should provide employees with specific examples of what they can and cannot post, and clearly explain what employee’s rights are under Section 7 of the NLRA. Such training will then – hopefully – put lawyers in compliance with both the Rules of Professional Conduct and the National Labor Relations Act. 

Applying Learnings From COVID-19 to Disseminating Climate Change Technology Solutions

By: Jason Anterasian

COVID-19 vaccines and new technologies fighting climate change face the same perils.

COVID-19 has upended the world and we are entering our third year of the pandemic.  When the pandemic first emerged, private biopharmaceutical companies such as Pfizer, Moderna, and Johnson & Johnson quickly developed COVID-19 vaccines.  Such rapid vaccine development was possible in part because these companies benefited from receiving government funding for COVID-19 vaccine research and development, advanced purchase orders from the government for the vaccines, or both.  COVID-19 vaccines also built on prior decades of mRNA vaccine research that had been largely funded by the government.  The biopharmaceutical companies now have patents on the vaccines and trade secrets on the manufacturing and commercializing of the vaccines, which have been cited as causes of the inequitable vaccine rollout throughout the world.  According to the Global Dashboard for Vaccine Equity, 67% of individuals in high-income countries have been vaccinated with at least one dose of the vaccine as of January 5, 2022, compared to 11% in low-income countries.  The divide between the developed and developing worlds has created problems globally, as it has produced breeding grounds for the virus, resulting in new variants such as Omicron that prolong the pandemic.  

While COVID-19 may seem like a unique crisis, another global crisis is emerging: climate change.  Like COVID-19, climate change has severe ramifications on global health, as extreme weather and natural disasters, extreme heat, environmental degradation and loss of biodiversity, water and food supply impacts, water quality impacts, and increased allergens and air pollutants all threaten public health.  Rich, developed countries emit the most greenhouse gases today; in developing countries, quality of life is increasing and will continue to increase – which is fantastic – but this will come with increased greenhouse gas emissions, as there is limited ability for these countries to pay the higher costs that exist today for green technology.  Similar to COVID-19 vaccines, new technologies must be invented and widely distributed throughout the developed and developing worlds to prevent (or slow down) a climate crisis.  Governments are the largest funders of efforts to develop new green technologies. As these technologies are created, patents and trade secrets in the new technologies will inevitably exist. As a result, we must learn from the COVID-19 vaccine rollout and avoid intellectual property becoming a barrier to global access and adoption of new green technologies.  A world in which only developed countries are using green technologies will not stop a climate crisis, as increased emissions in the developing world contribute to climate change, producing global effects.

Current laws and international agreements are insufficient solutions to disseminate green technologies.

Neither international agreements nor freedom of information laws provides a sufficient solution to ensure global access to new green technologies.  The 1994 Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) established minimum intellectual property standards for countries in the World Trade Organization (WTO), and its Article 7 encourages “dissemination of technology . . . . in a manner conducive to social and economic welfare.”  TRIPS Article 31 also allows for compulsory licensing of patented technologies without authorization of rights holders in times of “national emergency or other circumstances of extreme urgency.”  Given TRIPS’ support of technology dissemination, green technology’s contribution to public welfare, and a climate crisis likely constituting an “emergency,” compulsory licensing under TRIPS is an avenue countries could take to circumvent patents in green technology.  However, compulsory licensing is an imperfect solution because it threatens to destroy incentives to innovate and can lead to backlash from patent owners and their home countries.  Also, there are many new large and small green technologies that must be developed across all sectors of our lives, such as manufacturing, energy, agriculture, and travel, to avoid a climate crisis.  This expansiveness makes it difficult to define the scope of which inventions would qualify for compulsory licensing. 

Similarly, while over one hundred countries have freedom of information laws, these laws are likely insufficient to circumvent intellectual property barriers and produce global use of new green technologies.  For example, the US Freedom of Information Act (FOIA) requires disclosure of recorded information held by public authorities, subject to listed exemptions.  “Any person,” including foreign nationals, can file a FOIA request.  A private company who partners with the government to build and test a green technology could have its information disclosed under FOIA, if the information is on the government’s records.  However, trade secrets are explicitly exempted from FOIA (Exemption 4).  Additionally, in 2019 the Supreme Court ruled in Food Marketing Institute v. Argus Leader Media that a private company’s information will remain confidential under this exemption as long as the company customarily and actually treats the information as private and provides it to the government under an assurance of privacy.  As a result, Exemption 4 makes it difficult for the trade secrets of a private company’s new green technology to be disclosed under FOIA, preventing dissemination.  

With proactiveness, patents, trade secrets, and tacit knowledge of green technology can be disseminated to the developing world.

Ultimately, advancements in green technology will come largely from funding by governments and innovation by companies in the developed world, and these technologies will come with patents, trade secrets, and tacit knowledge.  However, applying the lessons from COVID-19 to climate change, we cannot let intellectual property become a barrier to the implementation of new green technologies in the developing world.

Governments must aid private companies in both the supply of green technologies by funding innovation and the demand for it by growing the market via policy changes, given how inexpensive current practices like fossil fuels are compared to green technologies.  In exchange, governments must proactively look for ways to ensure these technologies can be disseminated throughout the world.  First, with respect to patents, the government should be enough of a co-inventor/patent owner such that it can license the new technology to the developing world at no additional cost compared to current alternatives.  Second, with respect to trade secrets, the government should require private companies to disclose helpful information related to green technology, to enable the developing world to manufacture and commercialize the technology.  This can be done by requiring private companies to spend certain amounts of time counseling and partnering with their peers in the developing world, and also by requiring private companies to contribute knowledge to global organizations such as the Green Climate Fund that work to aid developing countries in combating climate change.  Third, with respect to tacit knowledge, to the extent it is not a trade secret but is documented, tacit knowledge can be disclosed under freedom of information laws such as FOIA.

Ultimately, the COVID-19 pandemic has shown the increasing connectedness of our world and the importance of global adoption of new technologies to solve global challenges.  The US government and governments of the developed world should learn from COVID-19, and beyond funding supply for new green technologies to fight climate change, they should leverage their influence to ensure broad global access to these new technologies.  If this is done, some of the IP pitfalls that have prolonged the COVID-19 pandemic can be avoided in the fight against climate change. 

So You Want to Invalidate a Patent? The PTAB May Be Your Friend!

By: Mark Stepanyuk

Challenging the validity of a patent versus patent infringement

If you have a patent and you think somebody is infringing on that patent, you may be able to sue them for patent infringement. Alternatively, if you think somebody has an inadequate patent, you can prospectively challenge its validity. Although historically these two causes of action have largely overlapped, they are very much distinct. This blog post is about the rise of a relatively new mechanism for challenging patent validity in the United States.

What is the PTAB?

The Patent Trial and Appeal Board (PTAB) was formed in 2012 as part of the Leahy-Smith America Invents Act (probably most known for changing the U.S. Patent system from “first-to-invent” to “first-to-file.”) The PTAB replaced the Board of Patent Appeals and Interferences at the U.S. Patent and Trademark Office (USPTO). In general, PTAB handles appeals and conducts trials. Appeals proceedings mostly involve cases where applicants wish to review the examiner’s decisions regarding their patents or claims (such as rejections). 

PTAB trials, on the other hand, are where the magic happens in challenging patent validity. The PTAB’s trial division handles proceedings such as Inter-Partes Reviews (IPR) and Post Grant Reviews. They also used to handle Covered Business Method reviews, which was historically the second most popular proceeding, but that program sunsetted and ended in September 2020. The vast majority of trial petitions filed at the PTAB are IPR’s (which accounted for about 93% of PTAB trial proceedings in 2021.) 

How do you actually challenge patent validity?

If you’re a business competing with someone who holds a patent that you think is inadequate or you are worried that what you are doing may infringe on their patent, you can attempt to invalidate their patent(s) or claim(s). Generally speaking, this can be done by bringing a case either to Federal District Court or to the PTAB (also in some circumstances, you can go to the Court of Federal Claims or the International Trade Commission.) Sometimes parties also choose to bring their case to multiple courts, although there are notable limits. Each choice has its own set of requirements, costs, and benefits. For instance, filing in Federal District Court requires a “case or controversy.” At the PTAB, there is no such requirement. However, there is a petition phase and a trial phase. Not all petitions become instituted and make it to the trial phase, though parties may file multiple petitions (there are differences between institution rates by “petition” and “patent.”) Also notably, the USPTO has been cracking down on “serial petitioners” (i.e., parties filing multiple petitions targeting the same patent.) 

Why have PTAB trials gained traction as a tool to challenge patent validity?

In the last decade, initiating PTAB trials has become a viable strategy for some businesses seeking to invalidate or weaken the patent portfolios of their competitors. There are many reasons for this. First, the average cost of filing and prosecuting a PTAB trial proceeding (IPR) is averaging far less than doing so in Federal District Court. If the expected value of initiating an IPR proceeding exceeds its cost, the firm is more likely to undertake the proceeding. Second, it’s easier to invalidate a patent at the PTAB than in Federal District Court. The presumption that a patent is valid does not exist in the PTAB and challengers only need to show by a “preponderance of the evidence” that claims are unpatentable to invalidate. Whereas in Federal District Court, challengers need to overcome the much higher standard of “clear and convincing evidence” to invalidate the patent, due to the jurisdictional presumption that the patent is valid. Third, there has been broader claim construction at the PTAB which has led to increased invalidation under Section 103 (non-obviousness) because it allowed for more prior art to be considered – although now the PTAB uses the Phillips standard for claim construction (the same as in Federal District Courts.) Fourth, standing is not required to initiate a PTAB trial proceeding. In the case of IPRs, any third party that has not already filed and has not been served with a complaint alleging patent infringement more than one year prior may initiate the proceeding. Most other PTAB trial rules and standards can be found here. For these reasons and likely others, it’s become a relatively more popular tool in handling patent disputes for patentees and non-patent holders alike. 

The PTAB has been controversial since its inception as part of the AIA in 2012

The constitutionality of the PTAB has been challenged on multiple occasions and in each case it has been upheld. In Oil States Energy Services, the Supreme Court held that Congress has significant latitude to assign adjudication of public rights to entities other than Article III Courts (i.e., the PTAB). The closest constitutional challenge to the PTAB was probably in United States v. Arthrex. In that case, the Supreme Court held that the PTAB’s structure was unconstitutional (by violating the Appointments Clause in which Administrative Patent Judges were not appointed “principal officers”), but this was easily remedied by having the Director review final decisions at the PTAB. Other controversy stems from disparate economic consequences of PTAB trials. Many inventors that are patent-holders are not fans of this emergent mechanism to challenge patent invalidity. These inventors complain that the PTAB has turned into a predatory regime with a bias against unsophisticated patentees. Ultimately, they argue that PTAB trials have become an anti-competitive tool for large companies to bully or threaten start-ups. One inventor argues that in part due to repeatedly filed petitions, patents that have been subject to a PTAB final written decision have an 84% invalidation rate.

The goal of patent law and the way forward

The administrative tradeoff between expeditiousness and thoroughness in the U.S. patent law system has been evident from the time of the “Commissioners for the Promotion of Useful Arts.” In an early letter, Thomas Jefferson wrote, “[of the law of granting and refusing patents] I saw with what slow progress a system of general rules could be matured.” Indeed, the America Invents Act was yet another iteration aiming at maturity. Congress’s goals for the PTAB part of the America Invents Act was: to create a faster and less costly alternative to Article III court-based patent litigation; to sweep away low hanging fruit (weed out patents that probably should not have been issued in the first place); and to lighten the dockets of federal district courts, which have been overwhelmed with Non-Practicing Entity (i.e., “patent troll”) suits. To a significant extent, many of these goals were achieved, and pretty much any bright-line rule is bound to discriminate against edge cases. This is why we have general rules and specific rules, and specific rules are more easily changeable. 

As the specific rules within the PTAB will continue to evolve, many disagree about the direction and pace of change. Here’s a paper that argues for more specific reforms likely to be addressed within the USPTO. The authors argue that the current benefits of PTAB proceedings do not necessarily outweigh its costs and point out inefficiencies. They call for more changes to deal with “uncertain estoppel litigation rules” (i.e., serial IPR petitioners, and other costs associated with doubling-up.) Other arguments call for more drastic reform such as repealing the PTAB

Since its inception in the United States in 2012, the PTAB has risen in popularity as a tool to challenge the validity of patents. Despite parties being able to challenge patent validity in other forums, the PTAB’s advantages have made it an economically viable candidate for many patentees and non-patent holders alike. Although it has been the subject of controversy, the PTAB and the U.S. patent law system more generally will continue to mature and be shaped by American jurisprudence. As for now, exposure to the filter of the PTAB will continue to be part of the patent bargain between an inventor and society.

Between the Supreme Court, Congress, and the Embedded Post: A Need for Copyright Clarification

By: Gracie Loesser

You may know already that copying an image from the internet and pasting it onto your website or blog can get you into trouble. But you might be surprised to learn that embedding images can get you in just as much trouble.

Both methods of sharing media implicate Section 106 of the U.S. Copyright Act, which gives copyright holders the exclusive right to “display the…work publicly,” meaning all other individuals are not allowed to “show a copy of it, either directly or by means of a film, slide, television image, or any other device or process…” or they may be brought to court for copyright infringement. Although copying and pasting another person’s copyrighted content on to your webpage is widely accepted as an act of infringement by U.S. courts, the use of embedding technology to accomplish the same task is still an unsettled question.    

What is embedding, anyway?

Embedding technology allows anyone to render a visual image of remote content directly onto their own webpage, functioning as a kind of window into the external page. Embedding provides a much more polished and digestible presentation than a simple URL link and eliminates the need for viewers to leave the page at all. Embedding content is easier now than ever before, as social media applications, web hosting services, and other platforms offer user-friendly tools that facilitate embedding nearly every kind of content imaginable.

The problem is that U.S. courts are torn on whether this now-ubiquitous form of content sharing constitutes infringement.

Is unlicensed embedding a violation of the Copyright Act?

The Ninth Circuit and the Southern District of New York are staunchly divided on the legality of unauthorized embedding, and the Southern District’s recent rulings have only sharpened that divide.

The Ninth Circuit first addressed the issue in 2007. In Perfect 10 v. Google, the court articulated a standard which it called the “server rule,” holding that website publishers who embed copyrighted material into their pages are not guilty of infringement. The court reasoned that embedding content did not constitute a “display” of the material under Section 101 of the Copyright Act, since the website publisher was merely creating a frame to view the material on the original host server. Several courts have since adopted and applied the “server rule” in infringement cases.

Over the last fourteen years, the Ninth Circuit’s “server rule” has faced scrutiny from courts and legal experts. One of the most vocal opponents to the rule has been the Southern District of New York. The Southern District first explicitly rejected the “server rule” in 2018, finding “no basis for a rule that allows the physical location or possession of an image to determine who may or may not have ‘displayed’ a work within the meaning of the Copyright Act.” The District Court has maintained its position over the years, most recently this past July 2021 in Nicklen v. Sinclair Broadcast Group.

How can we reach a consensus?

Given the near-ubiquitous use of embedding tools on the internet, U.S. copyright holders and internet users deserve a clear answer. That answer could come from either the Supreme Court or Congress.

The Supreme Court has not indicated an interest in weighing in, but this issue does seem prime for the Court’s review. Mindful of the public’s interest in judicial predictability, the Supreme Court will often grant certiorari for cases involving legal questions that lower courts can’t agree on. In the present issue, there is obvious disagreement among courts on how to resolve embedding copyright infringement claims, and the resolution of this split will have major implications for social media providers, news organizations, and other internet users. More broadly, the questions implicated are not limited to embedding, but are indicative of a larger concern: adapting the Copyright Act to address developing technologies. The Supreme Court will likely continue to face questions regarding the role of copyright protection in the ever-evolving digital world over the next five to ten years.

Congress could also take action. Indeed, Congress may be a better vehicle for modernizing existing copyright law since the current difficulty arises mainly from the fact that the Copyright Act does not sufficiently address the reality of our current media landscape. Legal scholars are actively encouraging Congress to take action by amending the Copyright Act, but it is unclear whether Congress has the political motivation to pursue such legislation. Congress seems more polarized than ever, and its inability or unwillingness to pass substantial bipartisan legislation suggests a prompt legislative remedy is unlikely.

Meanwhile, the demand for user-friendly content sharing options shows no signs of slowing. As developers unveil new technologies to meet this demand, the U.S. legal profession will need to keep pace to make sure that U.S. copyright law is reflective of our increasingly digital world.