Lawyer Behind Failing Sham To Protect Sketchy Patents Sends Bogus Copyright Cease & Desist To Blogger

from the a-bit-sensitive,-michael? dept

You may recall a story we had last fall on a really, really obnoxious and cynical scam to protect sketchy patents by "selling" the patents to Native American tribes. The details here are complex, and that original article has a longer explanation, but the very short version is that in 2010, Congress created a special appeals board to review patents to see whether they never should have been granted. This Patent and Trademark Appeals Board (PTAB) has actually been quite useful in getting rid of sketchy patents, which is why people with sketchy patents hate it, and are trying to get it declared unconstitutional by the Supreme Court.

But, while everyone waits on that some lawyers came up with a fairly devious plan to avoid PTAB review. It started when the PTAB agreed to dismiss some reviews of patents held by the University of Florida, after the University claimed that it had sovereign immunity as a state organization. The lawyers for the University of Florida, from the law firm of Shore Chan DePumpo based in Dallas, apparently sensed an opportunity. Realizing that a state-controlled organization could apparently avoid the entire PTAB process by claiming sovereign immunity, it realized that companies facing challenging PTAB reviews could potentially avoid doing so entirely by "selling" the patents to a "sovereign" organization, which would then license the exclusive rights back to the original patent holder. Effectively, the patent holder would pay a bit of money to some sort of sovereign operation, but would retain all of the rights as before, just structured as an exclusive license.

The big example of this from last fall was the pharmaceutical company Allergan, which seemed likely to lose some of its patents for the drug Restasis under PTAB review. So right before the PTAB was going to rule, the same lawyers engineered a "sale" of the patents to the St. Regis Mohawk Tribe. Allergan would pay the tribe $13.75 million basically for one purpose only: to magically exempt it from the PTAB process. As we noted at the time, this really does appear to be a sham sale for no other purpose than to avoid the PTAB.

The sham not only didn't work, it has backfired spectacularly. In February, the PTAB denied the tribe's motion, clearly recognizing what was going on:

Upon consideration of the record, and for the reasons discussed below, we determine the Tribe has not established that the doctrine of tribal sovereign immunity should be applied to these proceedings. Furthermore, we determine that these proceedings can continue even without the Tribe's participation in view of Allergan's retained ownership interests in the challenged patents. The Tribe's Motion is therefore denied.

Not only that, but the publicity of all of this woke up Congress, which introduced the PACED Act, which is directly designed to stop this kind of activity:

Senator Tom Cotton (R-Arkansas) and Senator Claire McCaskill (D-Missouri) along with Senators Pat Toomey (R-Pennsylvania), Joni Ernst (R-Iowa), David Perdue (R-Georgia) today introduced the Preserving Access to Cost Effective Drugs (PACED) Act, which restores the power of the Patent and Trade Office and federal courts, and the International Trade Commission to review patents regardless of sovereign immunity claims made as part of sham transactions.

In short, this scam hasn't worked out all that well. And it appears that the lead partner at Shore Chan DePumpo, Michael Shore, is a wee bit sensitive about all of this. Roy Schestowitz of the site Techrights.org has been writing about all of the PTAB shenanigans in numerous posts on his site. For example, here's a post he wrote on March 18th, about the anti-PTAB movement. That post, along with earlier posts about the PACED Act included a headshot of Michael Shore, the lawyer mentioned above.

Last week, another lawyer from Shore Chan DePumpo, Shukri Abdi, sent Schestowitz a laughably ridiculous cease and desist letter, claiming that Schestowitz was infringing on Shore's copyright in using a thumbnail of his headshot in those stories.

It has come to our attention that you are responsible for unlawfully publishing Michael Shore's photograph on the website www.techrights.org, as the named registrant and creator of the website, in violation of the United States Copyright Act. 17 U.S.C. § 101 et seq. We demand that you immediately cease such infringing activity, desist from such infringing activity in the future, and comply with the requirements set forth in this letter.

As you are no doubt aware, Mr. Shore has exclusive rights in his photographs, which you have widely reproduced, published, and/or distributed without permission. Your unauthorized reproduction, distribution, publication, and/or transmission of Mr. Shore's photograph on www.techrights.org, including the following webpages, constitutes copyright infringement.

The letter goes on to demand Schestowitz cease and desist from doing anything with the photograph and gives him until the end of this week to respond. In an abundance of caution, Schestowitz has done so. But he shouldn't need to. Abdi, a recent law school grad, specializes in patent and trademark issues, but considering she worked at the Intellectual Property Law Clinic in law school, one would hope that at some point someone taught her about Section 107 of copyright law, regarding exceptions to copyright law, including fair use. That starts out by noting that using works "for purposes such as criticism, comment, [and] news reporting" can be considered fair use, and thus non-infringing.

Indeed, there is a case that is directly on point on this issue, Dhillon v. Does, in which a lawyer named Harmeet Dhillon was upset about a website, called MungerGames, that published an article critical of her that included one of her own headshots that she had posted on the web. In other words, an identical situation to the one here. The court there found it to easily be fair use. And, of course, we won't even get that deeply into the open questions of whether or not Shore actually holds the copyright in this image. Abdi's letter states that Shore "has exclusive rights in his photographs" which is not entirely accurate. It's unclear who took this photo, but it clearly was not Shore. It is possible that there was an assignment of the copyright in the photo to Shore or that it was done under some sort of explicit work-made-for-hire agreement, but nowhere does the letter state that. Indeed, it seems to imply (incorrectly under the law) that Shore has exclusive rights in photos taken of him rather than by him. Notably, nowhere in the letter does Abdi suggest that Shore registered the copyright in the photo, which would be a necessary prerequisite to suing for statutory damages (there simply are no actual damages here anyway).

Of course, it's possible that Abdi knows all this and was just doing what the partners at her firm asked her to do, which was to send a purely bumptious, censorial threat to a blogger for daring to call out the sketchy legal practices of the law firm Shore Chan DePumpo in trying to craft sham patent sales for the sake of avoiding questionable patents getting invalidated by the PTAB. Of course, sending such a threat might just backfire, in the same way that Shore's plan to "sell" (wink, wink) patents to Native American tribes has backfired. Indeed, it might call attention to just how thin-skinned Michael Shore is, and how he's willing to have associates at his firm send out completely ridiculous, legally nonsensical threats in a weak attempt to try to scare off someone who was criticizing him.

And because this very story is about the headshot, and because using headshots is fair use, and because we're discussing it clearly, here is the headshot of Michael Shore:


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  • icon
    That Anonymous Coward (profile), 2 Apr 2018 @ 9:41am

    Go to law school... you'll get rich!!!

    I should have tried selling them this bridge I have in Brooklyn.

    reply to this | link to this | view in chronology ]

  • identicon
    NickM, 2 Apr 2018 @ 10:06am

    Technically, Shore could have taken the photo himself by using the timer feature on a camera. I highly doubt that happened, however.

    BTW, the Harmeet Dhillon picture was published by her own State Assembly campaign on the campaign website, making ownership questions even more interesting (and also adding campaign finance law into the mix).

    reply to this | link to this | view in chronology ]

    • identicon
      Anonymous Coward, 2 Apr 2018 @ 11:33am

      Re:

      Someone taking a picture with a timer does not negate their copyright.

      The photographer is still making artistic decisions such as:
      * Choosing what to photograph
      * Choosing when to photograph
      * Choosing how to photograph (lens,zooming,film vs digital etc)

      reply to this | link to this | view in chronology ]

      • identicon
        I.T. Guy, 2 Apr 2018 @ 11:38am

        Re: Re:

        So you saying If I set a camera up to shoot a pic a half an hour from now, me as the photographer:

        Choose what to photograph
        Choose how to photograph

        Your statement is too general... like most copyright hounds.

        reply to this | link to this | view in chronology ]

        • icon
          Jeff Green (profile), 2 Apr 2018 @ 1:29pm

          Re: Re: Re:

          I'm still pretty sure you'd own the copyright, unless some other agency were to change those settings. You chose what to photograph, in that you chose to photograph "whatever was in front of the camera in half an hour" and you chose to photograph it using the cameras self timer. These were foreseeable things.
          Many nature photographers do more or less this regularly and have no trouble asserting their copyright. The problem the monkey picture guy had was to tell the world that another agency had got involved.

          reply to this | link to this | view in chronology ]

  • icon
    Anonymous Anonymous Coward (profile), 2 Apr 2018 @ 10:09am

    Picture Replacement

    I think he should just replace each instance with another picture. Maybe even one he takes himself, to ensure no tender toes get stepped upon. May I recommend a picture of a dildo?

    reply to this | link to this | view in chronology ]

    • identicon
      I.T. Guy, 2 Apr 2018 @ 11:33am

      Re: Picture Replacement

      Even if he took the pic himself there is still a strong argument for fair use.


      As for the suggestion:
      Summers Eve comes to mind. :)

      reply to this | link to this | view in chronology ]

      • identicon
        SMU Alum, 2 Apr 2018 @ 1:54pm

        Re: Re: Picture Replacement

        I've known Michael Shore since he was an undergrad. Summer's Eve is a single use product. You'd need a picture of the Summer's Eve truck fully loaded leaving the plant to get the right order of magnitude.

        reply to this | link to this | view in chronology ]

    • identicon
      Christenson, 2 Apr 2018 @ 12:07pm

      Re: Picture Replacement

      lol...how about just adding devil horns, a forked tail, and dracula fangs? Those other things are, well, a little bit sexist!

      reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 2 Apr 2018 @ 12:50pm

    " It's unclear who took this photo, but it clearly was not Shore."

    It was a monkey, so it should be immediately clear to everyone that no copyright...oh. Wait.

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 2 Apr 2018 @ 8:09pm

    out_of_the_blue's heroes, ladies and gentlemen!

    reply to this | link to this | view in chronology ]

  • identicon
    carlb, 3 Apr 2018 @ 7:31am

    misuse of copyright common because copyright is easiest takedown

    I see this sort of thing routinely on sites which allow user-submitted content. A user expresses an (invariably negative) opinion of a corporate or biographical subject, the subject tries to misuse DMCA or copyright to make the discussion go away. A few examples:

    * A user submits a page which claims that Accenture looks to pay good money to employ new grads, until one realises the number of hours these people must work makes this medieval slavery; as hyperboly, the text is accompanied by depictions of slaves in chains a millennium ago. Some lawyer demands the entire page (which is a statement of opinion) magically go away because Accenture is a trademark and Accenture's logo is copyrighted. The upstream hosting provider turns tail and runs, not because the claim is valid but because they believe defending even a spurious claim would cost several thousand dollars - which is not profitable for them.

    * A leaked (or stolen) explicit video depicts Severina, a singer in eastern Europe, in an adulterous position with a married man. A user submits one still photo as evidence that the incident took place or as evidence of the video's existence. Some faceless lawyer then abuses DMCA to claim that Severina owns the copyright to the photo - when a media organisation in eastern Europe has already been to court and found that she is not the photographer and therefore not the creator of the photos for copyright purposes. The "chilling effects" database (lumendatabase.org) is full of examples of these notices - some are legit (if she stands on stage to sing a song, she has copyright in her music) but some are spurious (there are other issues with "involuntary porn", but this is not copyright).

    * For that matter, what about the Janet Jackson "wardrobe malfunction" at "the big game" whose trademarked name I shall not mention for legal reasons? I'm still seeing attempts to make that image go away by California folks I've never heard of popping out of the woodwork to claim she owns copyright in that image. No. I'd presume the photographers or news agencies taking the pictures own that copyright; she is not the photographer.

    There's also the pesky detail of "fair use" and "fair dealing". It's perfectly lawful to quote briefly from a copyrighted work to comment on that work.

    Unfortunately, the DMCA is full of official-sounding talk about statements being made "under penalty of perjury" but there's basically no way for webmasters to get that penalty imposed to stop DMCA abuse for reputational management or other purposes which have precious little to do with copyright. Even if a site is not in the US, the ambulance chasers will still flood it with abusive DMCA notices on the blind presumption that US law applies worldwide. I've even seen this happen when neither side had any US presence.

    reply to this | link to this | view in chronology ]

    • identicon
      Wendy Cockcroft, 4 Apr 2018 @ 7:25am

      Re: misuse of copyright common because copyright is easiest takedown

      That's not the only problem: Schestowitz doesn't have the ability to defend himself if these people go legal. This is why we need people like Mike to call these shysters out for the petty bullies they are. Thanks for doing this, Mike.

      reply to this | link to this | view in chronology ]


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