amp6-1 cv amp6-1 cv 1/30/2015 5:26 pm page 2 american ... · why gamers should turn to...

AMERICAN UNIVERSITY

INTELLECTUAL PROPERTY BRIEF

VOLUME 6 ISSUE 1

ARTICLES

THE NEW GTLD PROGRAM

OR THE MORE THINGS CHANGE, THE MORE THINGS STAY THE SAME Jack Vidovich

MY ONLINE ME: WHY GAMERS SHOULD TURN TO

CALIFORNIA’S RIGHT OF PUBLICITY LAWS

IN PROTECTING THEIR ONLINE AVATARS Breanne Hoke

BETWEEN SCYLLA AND CHARYBDIS: PATENTABILITY AND MORALITY RELATED

TO HUMAN EMBRYONIC STEM CELLS Li Jiang

Vol. 6, No. 1—

AM

ER

ICA

N U

NIV

ER

SITY

INT

EL

LE

CT

UA

L P

RO

PE

RT

Y B

RIE

F—

Pgs.1to98

amp6-1_cv_amp6-1_cv 1/30/2015 5:26 PM Page 2

CREATIVE COMMONS PAGE (DO NOT DELETE) 10/22/2013 2:46 PM

ASTERISK (DO NOT DELETE) 10/18/2013 4:16 PM

IP BRIEF MASTHEA D 6.1 FINA L (DO NOT DELETE) 1/27/2015 8:16 PM

AMERICAN UNIVERSITY INTELLECTUAL PROPERTY BRIEF

4801 Massachusetts Avenue, N.W., Suite 227 • Washington, D.C. 20016 E-mail: [email protected]

www.ipbrief.net

SARAH O’CONNOR

Senior Managing Editor

JACK VIDOVICH

Senior Copyright Editor

SEMPIAN SOORIAKUMAR

Outreach & Events Chair

Blog Editors

JEREMY M ERKEL

NICHOLAS GORDON

DAN COTE M ARK PATRICK

JACQUELINE M ORLEY

LEIGH COLIHAN

DARLENE TZOU

DANIEL KIM

RENATO PEREZ

TAORAN SUN AVA FARSHIDI

ALI TOUMADJ

JARRAD WOOD Senior Articles Editor

LAURA C. WHITWORTH

Senior Patent Editor

RAPH YOUNGHOON KIM

Short Circuit Editor

Senior Staff

ALEXANDER COREN

NICK CROVO

ELSADIG ELBADAWI

SCOTT STRICKLAND RONNY VALDES

CHRIS WELLINGTON

M ARY JEAN KIM

CORI STEDMAN

LAUREN BURKE CHARLES FRANK

SHANTEL WILLIAMS PETER HRUBIEC

CAILE M ORRIS

ELAINE DING

NOEMIE GUILLAUME

AURELIE M ATHIEU KRISTIN LOCKHART

CHRISTINE REA

ALEXANDRA EL-BAYEH

Editor-in-Chief

SARA BENNETT

Senior Trademark Editor

JOEL THAYER

Senior Technical Editor

GIDGET BENITEZ

Symposium Chair

Junior Staff

AMY CHEN

GEORGE JOHN

TYLER KING UGOOMA DANIEL

VI M AI

WINNIE HAGEMEYER

KATELEN WALSH

VOLUME 6 JANUARY 2015 ISSUE 1

6.1 TOC 6.1.2015 (1) (DO NOT DELETE) 1/29/2015 1:09 PM

ARTICLES

THE NEW GTLD PROGRAM

OR THE MORE THINGS CHANGE,

THE MORE THINGS STAY THE SAME .…... .….........Jack Vidovich 1

MY ONLINE ME:

WHY GAMERS SHOULD TURN TO

CALIFORNIA’S RIGHT OF PUBLICITY LAWS

IN PROTECTING THEIR ONLINE AVATARS .....…....Breanne Hoke 27

BETWEEN SCYLLA AND CHARYBDIS:

PATENTABILITY AND MORALITY RELATED

TO HUMAN EMBRYONIC STEM CELLS...………...….....Li Jiang 53

AMERICAN UNIVERSITY INTELLECTUAL PROPERTY BRIEF

VOLUME 6 JANUARY 2015 ISSUE 1

VID OV ICH_FIN AL (DO NOT D ELETE) 1/27/2015 8:04 PM

1

THE NEW GTLD PROGRAM OR THE MORE

THINGS CHANGE, THE MORE THINGS STAY

THE SAME

JACK VIDOVICH*

ABSTRACT

The New Generic Top Level Domain Program purports to increase the

amount of domain names available on the Internet. This Article suggests that The Program will not meet its stated goals. The Article demonstrates this shortcoming by analyzing the jurisprudence from the Legal Rights

Objection and forecasting how other courts and panels will absorb these principles, and adjudicate gTLD disputes in the near future. Ultimately, the standard of review protects not only a mark as it exists, but also proximate

variations of the mark that radiate from the original mark and satisfy the standard of customer confusion. Thus, major marks that already dominate the field do not lose their grip, but rather swallow up and absorb these

proximate marks under this standard of confusion. This absorption of proximate marks into existing marks saps the language’s ontology of its semantic wealth, and thus will not expand the availability of marks in URL

space.

* J.D. Candidate at American University Washington College of Law 2015. I would like to

thank Professor Christine Farley for her guidance and input on this Article, as well as the

Intellectual Property Brief staff for its indefatigable efforts. I would also like to thank my

brothers: the topic stemmed from a joke that devolved into a discussion and somehow

culminated into this Article. All errors are the author’s and the author’s alone.


2 AMERICAN UNIV. INTELLECTUAL PROPERTY BRIEF Vol. 6:1

TABLE OF CONTENTS

Abstract ................................................................................................. 1 Introduction ........................................................................................... 2 I. The History and Workings of The Program ........................................... 6 II. Trademarks Colliding ........................................................................ 7 III. The Legal Rights Objection and What It Suggests About Future

SLD Disputes............................................................................. 10 A. What Is the Legal Rights Objection? ....................................... 10 B. Mechanics of the Legal Rights Objection................................. 12 C. Stare Decisis .......................................................................... 13

IV. The Cases ...................................................................................... 13 A. Del Monte ............................................................................. 13

1. The Case ......................................................................... 13 2. Analysis .......................................................................... 15

B. Direct .................................................................................... 16 1. The Case ......................................................................... 16 2. Analysis .......................................................................... 18

C. Weibo/微博 ........................................................................... 18 1. The Case ......................................................................... 18 2. Analysis .......................................................................... 19

V. The More Things Change, The More Things Stay the Same................ 20 A. Summary of Findings ............................................................ 20 B. Micro: Implications for the SLD Cases? .................................. 21 C. Macro: Implications for Making More Land Available?............ 22

1. Do Major Players Have to Act?......................................... 22 2. Do Minor Players Get to Act? ........................................... 23

Conclusion........................................................................................... 23 Appendix ............................................................................................. 25

INTRODUCTION

The Internet is a virtual world divided into tracks of land. Users can locate these tracks and access their unique address by typing in a precise domain name.

1 As the Internet has become more prevalent in Americans’

lives,2 commentators have voiced growing concerns about the domain

1. See Brittany Shoot, The Great Internet Land Grab, NEW YORKER (Aug. 28, 2013)

http://www.newyorker.com/online/blogs/elements/2013/08/web-domains-great-internet-

land-grab.html (likening The New gTLD Program to a land grab).

2. As of May 2013, an estimated eighty -five percent of American adults use the

Internet. Trend Data (Adults), Pew Internet & American Life Project, PEW RESEARCH


2015 THE NEW GTLD PROGRAM 3

name system. The “most economical and memorable” names have mostly been claimed,

3 and new websites are disadvantaged when trying to design

names that will effectively attract user traffic, assumedly away from the

entrenched nobility that have already captured major segments of the Internet’s marketplace.

4 In response to this, the Internet Corporation for

Assigned Names and Numbers (“ICANN”), a non-governmental

organization that helps users connect to websites across the net,5 launched

“The New Generic Top Level Domain Program” (“The Program”).6 The

Program’s purpose is to allow for the creation of new generic top-level

CENTER, http://www.pewinternet.org/files/2014/02/12-internet-users-in-2014.jpg. (last

visited Dec. 14, 2013). As of July 2011, ninety -five percent of teenagers use the Internet.

Trend Data (Teens), Pew Internet & American Life Project, PEW RESEARCH CENTER,

http://www.pewinternet.org/data-trend/teens/internet-user-demographics/ (last visited Dec.

14, 2013). One can only speculate that given the ever-diminishing costs of mobile Internet

devices such as tablets and smart phones that even more Americans are connected to the

Internet than these numbers would suggest.

3. Shoot, supra note 1 (suggesting that the two most important goals of the New

gTLD Program is to create new tracks of land and allow users with non-Latin languages to

communicate to communicate to the server in their “native tongue”).

4. Alexa, an Internet traffic monitoring service, ranks Google, Facebook, Youtube,

Yahoo, and Amazon as the five most visited websites in the United States, respectively.

Top Sites in United States, ALEXA, http://www.alexa.com/topsites/countries/US (last visited

Dec. 14, 2013). This ranking persists internationally as well, except Amazon is dethroned to

tenth place and is replaced by Baidu, a Chinese language search engine. Top Sites, ALEXA,

http://www.alexa.com/topsites (last visited Nov. 10, 2014). Google, the hegemon, is

estimated by some to compose forty percent of all Internet traffic. Tom Worstall,

Fascinating Number: Google is Now 40% of the Internet, FORBES, (Aug. 17, 2013, 8:15

AM), http://www.forbes.com/sites/timworstall/2013/08/17/fascinating-number-google-is-

now-40-of-the-internet/. Yet a recent report has found that 61.5% of all Internet activity is

conducted not by humans, but by bots that crawl the web, capable of anything from stealing

data to aid search engines like Google cache the Internet. See Leo Kelion, Bots Now

Account for 61% of Web Traffic, BBC (Dec. 12, 2013 8:42 ET),

http://www.bbc.co.uk/news/technology-25346235 (noting that there were more “good” bots

than malicious ones).

5. Welcome to ICANN!, INTERNET CORPORATION FOR ASSIGNED NAMES AND

NUMBERS, http://www.icann.org/en/about/welcome (last visited Dec. 14, 2013). It does this

on two levels: On the technical level it is the mechanism through which people

communicate with the Internet and on the policy level it “policies for how the ‘names and

numbers’ of the Internet should run.” Id. (“In more technical terms, [ICANN] coordinates

the Internet Assigned Numbers Authority (IANA) functions, which are key technical

services critical to the continued operations of the Internet’s underlying address book, the

Domain Name System (DNS).” Id.

6. ICANN, NEW GTLD DISPUTE RESOLUTION PROCEEDINGS, 2 (2012). The TRIPS

agreement was negotiated between 1984 through 1995, before domain names were a

consideration, and as a result domain names are not addressed in the TRIPS agreement.

CHRISTINE HAIGHT FARLEY, GLOBAL ISSUES IN TRADEMARK LAW 309 (Thompson West

2014).



domains (“gTLDs”) to be registered and implemented in the following years, thus harkening an unprecedented

7 increase in the amount of names at

the top-level domain while simultaneously freeing space for domain names

globally.8

Commentators on The Program have made two observations on which this article will focus. First, The Program did not just create a forum to buy

up titles, but created whole new worlds to be fought over, divided, and conquered.

9 An entity’s decision not to take part in The Program is just as

meaningful as actively participating in it.10

The gravity of The Program’s

effects on the Internet’s real estate was such that it would affect those who participated, and those who remained neutral.

11 These same commentators,

however, also flagged potential problems, such as an increase in

cybersquatting and typosquatting disputes.12

Second, The Program’s stated purpose is to enhance “competition and

consumer choice, and enable the benefits of innovation via the introduction

of new gTLDs.”13

The assumption is that by implementing a process to create and release new names with which to explore and play, established and new users will have more building blocks to construct their domain

names and web presence.14

Users can apply for specific gTLDs that they

7. Before the launch of The Program, there were only twenty -two available gTLDs.

ICANN Approves Historic Change to Internet’s Domain Name System: Board Votes to

Launch New Generic Top-Level Domains, INTERNET CORPORATION FOR ASSIGNED NAMES

AND NUMBERS, (June 20, 2011)

http://www.icann.org/en/news/announcements/announcement-20jun11-en.htm (including

the familiar <.com>, <.net>, and <.gov>).

8. See infra Part II. (discussing the various cases of SLD and gTLD combinations)

9. See Shoot, supra note 1 (land grab).

10. Dennis S. Prahl & Eric Null, The New Generic Top-Level Domain Program: A

New Era of Risk for Trademark Owners and The Internet, 101 TRADEMARK REP 1757, 1760

(2011).

11. See id; RUSH, Freewill, in PERMANENT WAVES (Universal Special Products 1980)

(“If you choose not to decide, you still have made a choice.”).

12. Prahl & Null, supra note 10, at 1760. Cybersquatting occurs when “a person other

than the owner of a well-known trademark registers that trademark as an Internet domain

name and then attempts to profit from it either by ransoming the domain name back to the

trademark owner or by using the domain name to divert business from the trademark owner

to the owner of the domain name.” Cybersquatting, LEGAL INFORMATION INSTITUTE,

http://www.law.cornell.edu/wex/cybersquatting (last visited Oct. 10, 2014). Typosquatting

is a variation of cybersquatting and occurs when a users tries to profit from other users’

misspelling or mistyping of a domain name and redirecting the traffic to some other site.

Typosquating, LEGAL INFORMATION INSTITUTE,

http://www.law.cornell.edu/wex/typosquatting (last visited Nov. 11, 2014).

13. About The Program, INTERNET CORPORATION FOR ASSIGNED NAMES AND NUMBERS,

http://newgtlds.icann.org/en/about/program (last visited Nov. 10, 2014) (emphasis added).

14. See id. The building blocks are the gTLD and SLD. See infra Part II.



would like to use,15

or users that cannot afford the costs of the process ($185,000),

16 will be able to combine the new gTLDs with previous or

existing second level domains to create new, and hopefully attractive,

domain names.17

Despite this purported optimism, this Comment suggests that, given the nature of precedent dealing with the new gTLDs, The Program will not free up as much space for newcomer websites, at least not

as much as would be hoped.18

Even though the most radical changes appear to take place at the top-

level domain—after all, this is where all the action is taking place—its

effects extend to the lower levels of the domain, notably the second-level domain (SLD).

19 This level is where much of the novel trademark issues

will take place. The SLD is not an inert placeholder, but an active

designator, rich in information that conveys a tremendous amount of material to the users.

20 As this Comment will demonstrate, the SLD creates

a pairing problem in which multiple trademark interests collide.21

Part I provides background on gTLDs, ICANN, and The Program. Part II introduces the now defunct but still important “legal rights objection” (“LRO”) that was implemented during the registration process, and its use

in evaluating future trademark issues. Part III explores the World Intellectual Property Organization’s (“WIPO”) reasoning in granting objections to several applied for gTLDs, and Part IV predicts how panels

will handle future trademark issues at the second-level domain given the analysis in previous cases.

15. INTERNATIONAL CORPORATION OF ASSIGNED NAMES AND NUMBERS, GTLD

APPLICANT GUIDEBOOK 1-41 (2012) (evaluation fee) [hereinafter GUIDEBOOK]. High costs

greatly favors companies with the capital to make these investments. But see About Donuts,

DONUTS, http://www.donuts.co/about/ (raising $100 million to apply for 307 gTLDS)

16. See generally GUIDEBOOK, supra note 15, at 1-3–1-23.

17. Shoot, supra note 1.

18. See infra Part IV (discussing the implications of the precedent from the legal rights

objection).

19. Not to dismiss the importance of the third-level domain, but since <www.> and

<.m> have become so ubiquitous in designing a domain name they should be treated as

constants while the SLD and TLD are the variable.

20. This example is more colorfully illustrated by a proposed top level domain

<.sucks>. .sucks, UNITED DOMAINS, http://www.uniteddomains.com/new-top-level-

domain/sucks-domain-registration/ (last visited Dec. 14, 2013). Currently, three companies

a vying for <.sucks>‘s registration, and it is expected to launch sometime in the second

quarter of 2015. Id. Assuming that Google does not register a <www.google.sucks> as a

website or as a trademark, it is likely that someone else will register the new domain name.

Perhaps the new website will contain unflattering remarks about Google; perhaps it will

contain nothing. In any event the circumstances are ripe for a cybersquatting issue, resulting

in extortive licensing problem.

21. See infra Part II (providing a more in-depth analysis of issues with the SLD).



I. THE HISTORY AND WORKINGS OF THE PROGRAM

Domain names are the addresses of the Internet. A user types the

domain name into her web browser’s uniform resource locator (“URL”), and the browser communicates with the domain name system to connect her with the desired website.

22 When the network reads a domain name,

such as <www.google.com>, it reads it right to left.23

First, there is the top-level domain, here, “<.com>.”

24 Resting in the middle is the second-level

domain (“SLD”), “<google>.”25

The SLD contains the most recognizable

part of the domain name; indeed when the public refers to Google, they are invoking its trade name, which happens to be its SLD.

26 There are

countless examples of this: Yahoo, YouTube, Amazon, and Facebook to

name a few.27

Finally, the address begins with the third-level domain, “<www.>.”

28 These elements are combined and read under the protocols

established by the domain name system allowing users to surf from

website-to-website. The domain name system is governed by ICANN.

29 In 2011, ICANN’s

Board of Directors voted to expand the amount of gTLDs available on the

Internet.30

As opposed to the limitations of the previous model,31

the new gTLDs would be able to “end with almost any word in any language” including non-Latin characters.

32

Applications for The Program were accepted between January 12, 2012 and April 12, 2012.

33 Since the end of the registration period, 1,930

22. See Marshall Brian & Stephanie Crawford, How Domain Name Servers Work ,

HOWSTUFFWORKS, http://computer.howstuffworks.com/dns.htm (last visited Nov. 10, 2014)

(explaining the mechanics in greater technical depth).

23. What Is A Domain Name?, WHAT IS M Y IP ADDRESS,

http://whatismyipaddress.com/domain-name (last visited Nov. 10, 2014).

24. Prahl & Null, supra note 10, at 1761.

25. Id.

26. See Domain Names, THE ENTREPRENEUR NETWORK,

http://tenonline.org/sref/df10/dfl.pdf (“[A SLD] typically refers to the organization or entity

associated with the IP address.”).

27. See supra note 4 and accompanying text.

28. Prahl & Null, supra note 10, at 1761. While <www.> is the most common third-

level domain, <.m>, for mobile devices, is becoming increasingly popular. Id

29. See ICANN Approves Historic Change to Internet’s Domain Name System, supra

note 7.

30. Id. (ending with thirteen approving, one opposed, and two abstaining). Chairman

of ICANN’s Board, Peter Denegate Thrush, stated “Today’s decision will usher in a new

Internet age.” Id.

31. See generally, e.g, Lawerence Lessig, THE FUTURE OF IDEAS 26–48 (2001)

(discussing John Postel and the origins of the domain name system).

32. Id.

33. ICANN Approves Historic Change to Internet’s Domain Name System, supra note



applications have been filed.34

It is projected to take up to nine months to one year from the close of the application date for all the applications to be sorted through and delegated.

35 Some gTLDs have already been approved

and issued,36

and many more will be issued in the months to come. Indeed, before the new gTLDs were even released, the legal field was blanketed in SLD name disputes.

37 No doubt, The Program is radically altering the way

users, domain owners, and lawyers experience, as well as interact with, the Internet.

38

II. TRADEMARKS COLLIDING

Given the volume of registrants, many of which were major companies,39

trademark disputes were inevitable.

40 Domain names and their individual

elements, whether they are meaningful or meaningless words, letters, numbers, or symbols, do not exist in a vacuum, and much like chemistry, combine chaotically from separate and distinct elements to produce wholly

new creations with wholly new properties.41

Realizing this, ICANN attempted to resolve all disputes at the top-level by implementing a series

7.

34. Program Statistics, INTERNET CORPORATION FOR ASSIGNED NAMES AND NUMBERS,

http://newgtlds.icann.org/en/program-status/statistics (last visited Dec. 20, 2013) (911 in

North America). ICANN only estimated that it would receive between 250-500

applications. FARLEY, supra note 6, at 340.

35. Prahl & Null, supra note 10, at 1758.

36. On October 21, 2013, ICANN released the first four new TLDs to proceed to

delegation. Christine Willett, First New gTLDs Get the Green Light for Delegation, ICANN

BLOG (Oct. 21, 2013) http://blog.icann.org/2013/10/first-new-gtlds-get-the-green-light-for-

delegation/. They included four non-Latin words: <.كة ب ش >, Arabic for “Web;” <.онлайн>,

Russian for “Online;” <.сайт>, Russian for “website;” and, <.游戏>, Chinese for “game.”

Id.

37. FARLEY, supra note 6, at 340 (noting WIPO handled a record-setting 2,884 domain

name disputes in 2012 alone).

38. See Johnathan D. Gworek, ICANN Release Latest Draft of New Generic Top-Level

Domain (gTLDs) Applicant Guidebook , M ORSE BARNS-BROWN PENDLETON, (May 2011)

http://www.mbbp.com/resources/iptech/gtlds-domains.html (discussing how industry

leaders believe allowing the free registry of TLDs will cause a paradigm shift in domain

name use) l.

39. Zane Bundey, Over Half of the Most Innovative Companies Also Invested in New

gTLDs, GTLD STRATEGY (Oct. 8, 2013) http://gtldstrategy.com/2013/10/08/over-half-of-

the-most-innovative-companies-also-invested-in-new-gtlds/ (including Apple, Amazon, and

Google).

40. See, e.g., infra Section IV (detailing several disputes).

41. See ENCYCLOPEDIA BRITANNICA (15th ed. 2010) (defining “collision theory,” in

which atoms in a closed environment careen into each other and form new compounds).

Analogously, when SLDs and gTLDs “collide” they form a panoply of compound domain

names.



of objections interested parties could levee before a problematic gTLD was released into the world.

42 One such objection was the Legal Rights

Objection (“LRO”), which is the one this article addresses.43

The Legal Rights Objection was a legal standard designed to solve conflicts between established marks and potentially problematic marks arising from the newly applied for gTLDs.

44 Call this “Case One.”

Theoretically, all these issues were already handled under the Legal Rights Objection, and since the last determination was made on September 11, 2013,

45 Case One should no longer be a major concern. Assuming none of

these potential conflicts were overlooked by the concerned parties, their trademark dispute would likely have to be resolved using ICANN’s Uniform Domain-Name Dispute-Resolution Policy.

46 But more than sand

has slipped through ICANN’s cautious hands; their objections were not designed to deal with trademark issues at the second-level of the URL.

It would have been impractical for ICANN to try and determine how

each new gTLD would interact with previous and new SLDs.47

Still, The Program opens Pandora’s box, and the specters at the second-level will haunt the system unless the courts establish a method for handling this type

of dispute. There are two more trademark issues that arise from the introduction of

42. See GUIDEBOOK, supra note 15, at §§ 1.1.2.3, 1.1.2.6 (detailing the methods and

limitations of filing formal objections to an application)..

43. See supra Part III.

44. Cf. Trademark Clearinghouse for Rights Holders, ICANN,

http://newgtlds.icann.org/en/about/trademark-clearinghouse/rights-holders (last visited

Nov. 11, 2014) (explaining the protection ICANN offers trademark holders from trademark

infringement by gTLDs); see also Uniform Domain Name Dispute Resolution Policy,

ICANN (Oct. 24, 1999), https://www.icann.org/resources/pages/policy-2012-02-25-en

(establishing ICANN’s mechanism for allowing third party complaints against a domain

name owner who may be infringing on the third party ’s trademark rights). ICANN, NEW

GTLD DISPUTE RESOLUTION PROCEEDINGS, 2–3.

45. WIPO ADR, WIPO ARBITRATION AND M EDIATION CENTER END REPORT ON LEGAL

RIGHTS OBJECTION 2 (2013).

46. See Uniform Domain-Name Dispute-Resolution Policy, INTERNET CORPORATION

FOR ASSIGNED NAMES AND NUMBERS, http://www.icann.org/en/help/dndr/udrp (last visited

Dec. 14, 2013).

47. Assuming that just one-hundred gTLDs were approved, a conservative fraction of

the applicants, there are still 112,261,502 registered domain names that just use the <.com>

TLD. See, e.g., Domain Counts & Internet Statistics, WHOIS, http://www.whois.sc/internet-

statistics/ (last visited Dec. 14, 2013) (approximately 148,380,534 total). If even a fraction

of those domain names had unique SLD names, say 10,000, ICANN would have still have

had to predict the outcome for a million combinations. Thus ICANN’s agnosticism on SLD

disputes is not the result of lack of foresight, but of practicality. This Article posits that

precedent from the legal rights objection will set the framework for how future courts will

approach SLD disputes on a case-by-case basis. See infra Part IV.



new gTLDs. “Case Two” occurs when a new gTLD is combined with an established SLD. For example, <google> is a well-established SLD, and <.food> is a new TLD.

48 There is no evidence to suggest that Google

intends to launch a website under the <www.google.food> domain name. Yet what is to stop some third party from registering its own <www.google.food> to use legitimately, “squat on,” or try to extort a

reasonable or unreasonable license from Google?49

This is a novel, untried part of the law, because The Program and its legal mechanisms have not yet been tested, and it will require some jurisprudential gymnastics to

determine how the courts will approach these cases. The final trademark issue, “Case Three,” is subtle, but just as possible as

the previous cases. It happens when a seemingly benign SLD combines

with another seemingly benign gTLD to create an infringing hybrid. While this may be rare, the introduction of non-English and non-Latin gTLDs

50

increases the chances of unintentional infringement. This presents several

issues, primarily in the practicable legal sphere and in the abstract moral sphere. In the legal sphere, there is a strong likelihood of heterogenic parties and legal systems. This means parties that speak different

languages,51

avail to different international jurisdictions, rules, and generally different assumptions about their world and how the wordmarks interact with its marketplace. This makes questions about bad faith,

customer confusion, and other elements that flesh out the legal analysis less concrete. In the moral sphere, at least from a moral intentionalism

52 stance,

the registrant has not knowingly infringed some other party’s mark,

48. Using the alias, Charleston Registry Road Inc., Google applied for 101 new TLDs.

Application Status, INTERNET CORPORATION FOR ASSIGNED NAMES AND NUMBERS,

https://gtldresult.icann.org/application-result/applicationstatus/viewstatus (last visited Dec.

14, 2013) (applying for <.google>, <.game>, <.blog>, and <.app>). It did not apply for

<.food>. See id.

49. These last two actions; domain name squatting and extorting gratuitous licenses

have been curbed by Congress, but they still raise complicated questions of intent and

evidence that makes it difficult for the justice system to root out these activities entirely.

See 15 U.S.C. § 1125(d)(i) (2012) (codifying a bad faith element in the Anticybersquatting

Act).

50. Many English words have completely unexpected meanings in other languages,

and vice versa. For example, “gripe” translates to “Flu” in Spanish, and “red” means

“network” or “Internet.” List of New gTLDs Donuts Applied For, DOMAIN TYPER,

https://domaintyper.com/new-gTLD/applicant/Donuts (last visited Dec. 14, 2013) (including

<.gripe> and <.red>).

51. Languages can be further deconstructed such that people who speak the same

language proper, e.g. English, may have radically different meanings for identical words,

e.g. compare Staten Island-English to Tallahassee-English.

52. See generally Moral Reasoning, STANFORD ENCYCLOPEDIA OF PHILOSOPHY

http://plato.stanford.edu/entries/reasoning-moral/ (last visited Oct. 20, 2014).



because the registrant is not aware of the word in the other language (syntax) or that the words as combined as such created a new meaning, or at least one he or she was unaware of (semantic). Although the moral

question elucidates interesting and universal questions about the trademark system, this Note will only focus on the registration issues.

For example, by themselves, the SLD <.channel> and the gTLD

<.orange> appear harmless.53

When the two are combined, the domain name becomes <www.channel.orange>. Orange Brand Services Limited, a multinational telecommunications company that applied for <.orange>,

54

may have a legitimate interest in creating some channel-based Internet service, the company may have never considered Frank Ocean, whose album “Channel Orange” helped earned the young star a Grammy while

selling over half-a-million albums.55

At this point, neither Orange nor Frank Ocean has applied for a trademark in “channel orange.”

56 But the

point remains illustrative; it is difficult for the registrants to conceive of

these scenarios, and it throws many unsuspecting parties in infringement disputes. Case Three raises questions about how courts should treat innocent infringements that are registered in good faith and are ignorant of

a potential trademark dispute. The three cases of trademark infringement that result from The Program

are summarized in “Chart 1” in the appendix. Despite the novelty of the

issues these cases entail, jurisprudence arising from the Legal Rights Objection may provide some clues as to how courts will behave in future proceedings.

III. THE LEGAL RIGHTS OBJECTION AND WHAT IT SUGGESTS ABOUT

FUTURE SLD DISPUTES

A. What Is the Legal Rights Objection?

ICANN set in place a series of objections so that concerned parties could

53. Orange Brand Services Limited applied for the gTLD <.orange>. Application

Details, INTERNET CORPORATION FOR ASSIGNED NAMES AND NUMBERS,

https://gtldresult.icann.org/application-result/applicationstatus/applicationdetails/1660 (last

visited Dec. 14, 2013) (Application ID: 1-958-59844).

54. Orange serves over 232 million customers in thirty -two countries. About, ORANGE,

http://www.orange.com/en/home (last visited Nov. 10, 2014).

55. Cyrus Langhorne, Sales Wrap: Bruno Mars Lead the Way, Kendrick Lamar Exits

Top 20, Frank Ocean Strikes Gold, SOHH, (Feb. 20, 2013 7:03 PM)

http://www.sohh.com/2013/02/bruno_mars_leads_the_way_kendrick_lamar.html.

56. In fact, some third party did over a decade ago, but has since abandoned it. See

CHANNEL ORANGE, Registration No. 0920090 (abandoned Nov. 3, 2003) (registering

“Channel Orange” for use in audio-visual entertainment systems, such as televisions and

stereos).



object to the registration of potentially infringing gTLDs, also known as “strings.”

57 The objection pertains to cases in which “the string comprising

the potential new gTLD infringes the existing legal rights of others that are

recognized as enforceable under generally acceptable and internationally recognized principles of law.”

58 Cases under this objection were delegated

to and adjudicated by Arbitration and Mediation Center of the WIPO.59

If the objection were successful, ICANN would not approve the applied-for gTLD for the applicant to register and use.

60 ICANN provided

trademark owners until March 13, 2013, to file a formal Legal Rights

Objection to any gTLD application.61

Of the 1,930 of applications filed, only sixty-seven

62 strings were challenged under the Legal Rights

Objection.63

Of these objections, only three of the objections were

sustained (two of which contained dissents), thus blocking the offending gTLDs.

64 This Article focuses on these three successful Legal Rights

Objections because these cases probe the limits of what the panel, using

“generally accepted and internationally recognized principles of law,”65

is prepared to consider infringing. Moreover, a deeper analysis of how the court approached the criteria and factors from the gTLD Applicant

Guidebook66

will shed light on how courts and panels adjudicating domain name issues will weigh such factors and allow lawyers to better anticipate the outcome of future disputes involving any of the cases discussed above

in Part II. This Article will also demonstrate that the guidance provided by the Legal Rights Objection, contrary to The Program’s stated objective,

57. Objection Determinations, INTERNET CORPORATION FOR ASSIGNED NAMES AND

NUMBERS, http://newgtlds.icann.org/en/program-status/odr/determination (last visited Dec.

20, 2013) (including the string confusion objection, limited public interest objection, and

community objection).

58. ICANN, NEW GTLD DISPUTE RESOLUTION PROCEEDINGS, 2–3 (emphasis added).

59. Id. at 3.

60. See GUIDEBOOK, supra note 15, at 3-18.

61. Id.

62. See Legal Rights Objection under ICANN’s New gTLD Program, WORLD

INTELLECTUAL PROPERTY ORGANIZATION, http://www.wipo.int/amc/en/domains/lro (last

visited Dec. 20, 2013) (totaling only 35 unique strings).

63. See id.; see also WIPO Guide to the Uniform Domain Name Dispute Resolution

Policy (UDRP), WORLD INTELLECTUAL PROPERTY ORGANIZATION,

http://www.wipo.int/amc/en/domains/guide/ (last visited Dec. 20, 2013) (containing

information on the purpose and practice of WIPO’s Uniform Dispute Resolution Policy

(“UDRP”)).

64. See supra Part III. In spite of the objections put in place, commentators predict a

swell in gTLD disputes in the years to come. See FARLEY, supra note 6, at 340 (noting

WIPO handled a record-setting 2,884 domain name disputes in 2012 alone).

65. GUIDEBOOK, supra note 15, at P-2–P-3.

66. Id. at 3-18; infra Part III.B.



will not make more space available on the Internet.67

B. Mechanics of the Legal Rights Objection

ICANN placed the Arbitration and Mediation Center at WIPO in charge

of adjudicating Legal Rights Objections.68

When WIPO examines a string to determine if the Legal Rights Objection should be sustained, it applies the DRSP rules.

69 WIPO defined the existing Legal Rights Objection as

“the string comprising the potential new gTLD infringes the existing legal rights of others that are recognized or enforceable under the generally accepted and internationally recognized principles of law.”

70

The generally acceptable and internationally recognized principles of trademark law were reduced to three criteria in section 3.5.2 of the gTLD Applicant Guidebook, the procedures established by ICANN to govern The

Program.71

Infringement would be found if the applicant’s string: (1) “takes unfair advantage of the distinctive characteristic or reputation of the objector’s mark;”

72 (2) “unjustly impairs the distinctive character of

objector’s mark;”73

or, (3) “otherwise creates confusion between the applied for gTLD and the registered mark.”

74

Underlying these criteria, the Guidebook also lists eight non-exclusive factors to evaluate trademark issues.

75 These factors are not weighed

equally, but those that were given the most weight when determining whether to block a registrant’s application were made more apparent by the subsequent panels’ holdings.

76 The most important factors are:

(1) “Whether the applied for gTLD is identical or similar, including in appearance, phonetic sound, or meaning to the Objector’s existing mark.”

77 (“Factor

One”); (2) “Whether the Objector’s acquisition or use of rights in the mark has been bona fide.”

78 (“Factor Two”);

67. See infra Part V.

68. GUIDEBOOK, supra note 15, at P-3.

69. Id.

70. Id. at 2–P-3 (emphasis added).

71. Id. at 3-18.

72. Id. This resembles well-known marks in European law. See also Country

Correspondence, WORLD TRADEMARK REVIEW (2008).

73. GUIDEBOOK, supra note 15, at 3-18. This resembles dilution in United States’ law.

See 15 U.S.C. § 1125 (2012).

74. Id. This resembles likelihood of confusion in United States’ law.

75. GUIDEBOOK, supra note 15, at 3-19.

76. See generally infra Part III.

77. GUIDEBOOK, supra note 15, at 3-19.

78. Id.



(4) “[W]hether the applicant . . . had knowledge of the objector’s mark, or could not have reasonably been unaware of that mark, and including whether the applicant has engaged in a pattern of conduct whereby it applied for or operates TLDs or registrations in TLDs which are identical or confusingly similar to the marks of others.”

79 (“Factor Four”);

(8) “Whether the applicant’s intended use of the gTLD would create a likelihood of confusion with the objector’s mark as to the source, sponsorship, affiliation, or endorsement of the gTLD.”

80 (“Factor Eight”).

With this guidance, WIPO’s panels made their determinations. The three objections that were sustained are detailed in the next Part of this Article.

C. Stare Decisis

Before examining WIPO panels’ decisions, it is important to note how future panels will utilize these decisions. “The findings of the panel will be

considered an expert determination and advice that ICANN will accept within the dispute resolution process.”

81 Although this precedent may not

be authoritative or binding on future panels, it will certainly be persuasive.

IV. THE CASES

The following cases are the only three in which WIPO upheld the

respondent’s Legal Rights Objection.82

The following sections will begin by discussing the facts and holdings of each case, followed by an analysis discussing what effects these holdings may have on future cases.

A. Del Monte

1. The Case

The applied-for gTLD was <.delmonte>.83

The objector, Del Monte International, is one of the largest producers and distributors of food

products in the United States,84

and owns several word and device marks in

79. Id. (essentially a bad faith element),

80. Id.

81. GUIDEBOOK, supra note 15, at 3-17 (emphasis added).

82. See Legal Rights Objections under ICANN’s New gTLD Program, WORLD

INTELLECTUAL PROPERTY ORGANIZATION, http://www.wipo.int/amc/en/domains/lro (last

visited Dec. 18, 2013).

83. Del Monte Corp v. Del Monte Int’l GmBH, Case No. LRO2013-0001, 1 (2013).

84. Id. at 1–2 (noting the “Del Monte” mark generated approximately $3.7 billion

dollars in net sales in 2012, and that objector’s product can be found in eight out of ten



the country, one such mark is, “Del Monte”,85

registered for fresh and canned vegetables, fresh and canned fruits, canned fruit and vegetable juices, canned fish, dried fruits, pickles, vegetable relishes, hot peppers,

and catsup.86

Due to the mark’s longstanding use, the panel considered “Del Monte” a “well-known mark.”

87 Finally, Del Monte International

owns the domain <delmonte.com>.88

The respondent operates in similar market channels as the objector, although they were not direct competitors. Respondent also owns several trademarks, some of which were assigned to it in October 2011.

89 This is

the result of a licensing agreement entered into by the objector and respondent, in which the objector granted the respondent limited use of objector’s “Del Monte” trademark on certain processed food products in

Europe, the Middle East, and Africa.90

The license explicitly reserved the right for the objector to register and enforce the “Del Monte” trademark.

91

Despite the seemingly clear terms of the license, respondent applied for the

<.delmonte> gTLD without notice to objector.92

Objector alleged that the registration should be rejected because the registration could potentially confuse “consumers, distributors, growers, and manufacturers.”

93

The panel majority94

noted that even though this was a contract heavy case, precedent established by the Uniform Dispute Resolution Procedure (“UDRP”) states that licensing disputes are outside the scope of the

UDRP’s jurisdiction. This panel decided to make its evaluation without regards for the contractual limitations because of that.

95 All eight factors

favored the objector except for Factor Six,96

which was found to be

households in the United States).

85. Id. at 2. Registration number 881,339, dated November 25, 1969, and claiming

first use in commerce on October 1, 1891.

86. Id.

87. Id. at 2–3.

88. DELMOTE.COM Registration No. 75483288 (abandoned March 27, 2001).

89. Id.

90. Id. at 3. The agreement makes clear that the assigned trademark still remains the

“sole and exclusive property” of the objector. Id.

91. Id.

92. Id.

93. Id.

94. The majority consisted of two panelists, with the third dissenting. Id. at 1, 12.

95. Del Monte Int’l GmBH, Case No. LRO2013-0001 at 4 (reiterating that the purpose

of these proceedings is to prevent “the extortionate behavior known as cybersquatting”).

96. GUIDEBOOK, supra note 15, at 3-19 (“Whether the Respondent has marks or other

intellectual property rights in the sign corresponding to the gTLD, and, if so, whether any

acquisition of such a right in the sign, and use of the sign, has been bona fide, and whether

the purported or likely use of the gTLD by the Respondent is consistent with such

acquisition or use.”).



inconclusive.97

The panel majority upheld the opposition and found that allowing registration would “create an impermissible likelihood of confusion between the applied-for gTLD and the Trade Mark.”

98

This holding was made despite objector offering “zero proof”99

that the applied-for gTLD would cause customer confusion and that two companies sharing a trademark in their domain is common in the international

market.100

Still, when evaluating Factor Eight on customer confusion, the majority found:

The Objector has established at least a prima facie case

that the Respondent’s intended use of the applied-for gTLD . . . is likely to unsettle the delicate balance struck by the competing interests of the parties under the

licensing arrangements and, more importantly, is likely to create an impermissible likelihood of confusion with the Objector’s Trade Mark as to the source, sponsorship,

affiliation or endorsement of the applied-for gTLD.101

Despite this nuanced and subtle approach to confusion, the panel found

that the customer confusion from Factor Eight,102

combined with the other

factors, favored rejecting of the applied-for gTLD.103

The dissenting panelist, while disagreeing with the majority’s

interpretation of several other factors, was not convinced that there would

be market confusion. He did not believe customers would be confused by the new gTLD

104 because the objector has established a practice of

allowing respondent and other parties to use the “Del Monte” trademark in

several other domain names, such as <delmonteonline.com> and <delmontenet.com> and that this has not caused market confusion.

105

2. Analysis

The Del Monte case gives some valuable insight into how future domain name disputes will be approached. First, contracts and licenses can be used judiciously and strategically to try and preempt disputes before they

97. Del Monte Int’l GmBH, Case No. LRO2013-0001 at 4 (reiterating that the purpose

of these proceedings is to prevent people from extortionate actions).

98. Id. at 10.

99. Id. at 4 (“[N]or is such confusion plausible given the parties’ long-standing,

simultaneous use of domain names comprising the Trade Mark.”).

100. Id. at 9.

101. Id.

102. Id. at 11 (“particularly”).

103. Id.

104. Id. at 12.

105. Id.



happen. Second, while most legal disputes require a harm to have occurred before a suit is ripe,

106 domain name disputes can rely heavily not just on

the manifestation of a likelihood of confusion, but the likelihood of

customer confusion to block a potentially infringing domain name.107

The New gTLD Program and the SLD issues that arise as a result of it are, after all, novel. Finally, and perhaps most importantly, is the panel’s seemingly

low threshold for establishing customer confusion in the domain name arena.

108 While this case alone does not make sufficiently clear how

strongly the panel’s weigh potential confusion, the following Legal Rights

Objections cases engender the principle.

B. Direct

1. The Case

The applied-for gTLD was <.direct>.109

DIRECTTV, objector, provides

digital television services under its “DIRECTV”110

mark as well as other marks containing the word “direct.”

111 It is a popular service, with twenty

million subscribers in the United States and fifteen million other

subscribers worldwide.112

Respondent, Dish DBS Corporation, is a satellite television provider.

113 It is a direct competitor with the objector, and they

vie for the same customer base.114

Prior to this case, there was no evidence that respondent had used the mark “direct” or any derivative of the word as a trademark in line with its business.

115 The Vice President for Dish DBS Corporation, Vivek

Khemka, submitted an affidavit swearing that Dish DBS filed the gTLD in “good faith” and as part of its plan to offer greater connectivity to its customers.

116 Respondent also denied that it wanted to use <.direct> as a

trademark, and that the word “direct” is too generic as to be granted

106. U.S. CONST. art. 3, § 2, cl. 2 (case and controversy).

107. Del Monte Int’l GmBH, No. LRO2013-0001 at 11 (giving the most weight to factor

eight).

108. Id. at 9 (establishing only a “prima facia” case).

109. The DirectTV Group Inc. v. Dish DBS Corp., No. LRO2013-0005, 1 (2013).

110. DIRECTV Registration No. 85,580,999.

111. The DirectTV Group Inc., No. LRO2013-0005 at 2.

112. Id. at 2. Between 2008 and 2012, the DIRECTTV brand was ranked one of the

world’s 500 most valuable brands by BrandFinance. Id.

113. Id.

114. Id. At the time of the panel’s deliberation, the respondent was running television

advertisements aimed at the objector’s customer base. Id. at 4–5. Note that the parties in the

Del Monte case were not direct competitors.

115. Id.

116. The DirectTV Group Inc., Case No. LRO2013-0005 at 4.



trademark protection in general.117

Finally, respondent did not believe that the applied-for gTLD would cause customer confusion.

118

Notwithstanding the respondent’s arguments, the panel upheld the

objection.119

Indeed, all eight factors favored objector, but the panel placed greater emphasis on some factors over others. Its determination mainly focused on the fact that respondent applied for the gTLD in bad faith

120 “for

the sole purpose of disrupting the business of the Objector.”121

The panel found bad faith because respondent had never used the “direct” mark before and was well aware it was in direct competition with the objector.

122

Respondent’s assertion that it applied for the <.direct> because the respondent “provides services (in the generic sense) directly to consumers [was] viewed by the Panel as a contrivance.”

123

The panel also gave more insight into other factors. Factor One will weigh in favor of an objector if the trademark and the applied-for gTLD are to be “identical or similar.”

124 The panel noted that even though the

applied-for gTLD “direct” was not identical to “DIRECTV” because it was missing the “v,” it was similar enough, and that Factor One does not require that the two words being compared be “confusingly similar,” just

similar.125

Factor Three concerns whether the relevant consumer base would

confuse the applied-for gTLD with an objector’s mark.126

Respondent

submitted a study to persuade the panel that there would be no confusion, but the panel disagreed with the methodology of the report and dismissed it.

127 Respondent proffered a survey that asked people in the relevant

market which company with which they would most associate the hypothetical domain <television.direct>, but this strategy backfired.

128

Nine out of the total forty-six participants associated the domain with the

117. Id.

118. Id.

119. Id.

120. Id.

121. Id. at 7.

122. Id.

123. Id. But see Sina Corp. v. Tencent Holding Ltd., No. LRO2013-0040 (2013)

(opposite analysis).

124. GUIDEBOOK, supra note 15, at 3-19 (discussing Factor One).

125. The DirectTV Group Inc., Case No. LRO2013-0005 at 5–6. “DIRECTV” is a

fanciful word while “direct” has a defined meaning, and the presence of absence of one

letter does not overshadow the affect these meanings have in the customers’ minds. Cf. id.

126. GUIDEBOOK, supra note 15, at 3-18. (Section 3.5.1). Though a separate factor, the

findings here are relevant to making Factor Eight determinations.

127. The DirectTV Group Inc., No. LRO2013-0005 at *6 (Dr. Maronick’s survey).

128. Id. at 6.



objector.129

This meant that only nineteen percent of the relevant sector associated the hypothetical domain name with the objector, yet the panel found it sufficient enough to weigh Factor Three in objector’s favor.

130

This survey also played into the panel’s Factor Eight analysis, and it ruled that there would be an impermissible likelihood of confusion.

131

2. Analysis

The Direct case helps elucidate just how low the confusion bar is in these gTLD disputes. While the Del Monte case established it as low, even when no evidence was submitted,

132 here at least nineteen percent confusion was

sufficient. This number should not be treated as a floor or even quantitative; it is possible that even less customer confusion is enough to infringe another’s mark when registering a new domain name. The number

is merely illustrative of how low the panels have set the bar for customer confusion. Finally, especially in the context in which both parties are direct competitors, the panel weighed bad faith registration heavily against

registrant.133

But as will be shown in the final case, bad faith is not given as much weight as others.

C. Weibo/微博

1. The Case

Finally, in this case the applied for gTLD was <.微博> and its pinyin was <.weibo> [hereinafter “weibo” or “<.weibo>“].

134 Weibo

135 is a new

Chinese word that roughly translates into “micro-blogging service.”136

Objector, Sina Corporation, is a “Chinese online media company” for international communications.

137 It is a massive company: under the

129. Id.

130. Id. The hypothetical survey appears to be somewhat biased in that the SLD chosen

was one the customer base would have most likely associated with the objector. Had the

hypothetical domain been <service.direct>, which is nondescript, or <fresh.direct>, an

online grocery delivery service, the results of the survey may have come out very

differently. Still, with the new gTLDs and their untested interactions with SLDs, the panel

may simply want to test if there is at least one definite instance of confusion and not concern

itself with more fringe issues of confusion.

131. Id. at 8.



134. Sina Corp., No. LRO2013-0040, at 2.

135. WEIBO, Registration No. 7,649,615. Note, this is a Chinese Trademark

registration.


137. Id.



<weibo.com> title, it boasted five hundred and three million registered users in 2012.

138 Respondent, Tenecent Holding Limited, is a competing

telecommunication service and online advertiser.139

Nine hundred ninety

million users have accounts with the respondent’s instant messaging service, and in 2010, the respondent launched “Tencent微,” a micro-blogging website that currently maintains 373 million users.

140 Respondent

applied for the gTLD and the objector filed its complaint.141

The majority of the panel upheld the objection.

142 The panel rested most

of its opinion on the fact that the respondent’s use of weibo in a gTLD

would “unjustifiably impair the distinctive character of the Objector’s mark . . . .”

143 Many of the factors were viewed as inconclusive,

however.144

Unlike the Direct case, the majority determined that Factor

Four, regarding bad faith registration, was not present here.145

Again, Factor Eight, concerning consumer confusion, was found to weigh in favor of the objector.

146 The panel remained agnostic on how it calculated the

likelihood of confusion.147

The lone dissenting panelist was not convinced that the evidence supported the conclusion that “weibo” was not generic.

148

2. Analysis

The Weibo case demonstrates that the bad faith registration factor is a consideration, but it is not weighed very heavily in the panel’s overall determination (at least when such a consideration is not present).

149 Like

both previous cases, Factor Eight on creating a likelihood of customer confusion was present,

150 and the panel likely placed great weight on this

factor because most of the other factors were dismissed as inconclusive. It

probably helped that both objector and respondent had massive customer

138. Id. The objector claims that it made significant investments to advertise its weibo

mark. Id.

139. Id.

140. Id.; There appears to be some dispute over whether China would invalidate the

weibo mark entirely for being too generic, but the panel tables this concern. Id. at 3

(acquiring a distinctive character). The panel held that there is evidence that the mark

would mislead the public and violate Article 10.1(8) of the Chinese Trademark Law in this

case. Id. at 4.


142. Id. at 5.

143. Id. at 4.

144. See generally id. at 6–8.

145. Id. at 7.

146. Id. at 8.

147. See Sina Corp., No. LRO2013-0040, at 8.

148. Id. at 9.

149. Id. at 7.

150. Id. at 8.



bases, numbering in the hundreds of millions. With millions of customers using two popular yet distinct services, it is likely that some customers would be confused by the gTLD, and this inference is probably why the

panel did not require much evidence to prove customer confusion.

V. THE MORE THINGS CHANGE, THE MORE THINGS STAY THE SAME

A. Summary of Findings

Looking at these three successful objections, we can make several determinations about how the WIPO panels weigh the eight factors and how future panels will apply this jurisprudence to issues with the

combination of the new gTLDs with SLDs. It is assumed that all disputes with gTLDs are settled, and the analysis will focus solely on the SLD.

First, in all three cases, the SLD was a well-known mark. The panel

either acknowledged this explicitly151

or implicitly given the size of their customer base.

152 Thus, in future disputes, if one party wants to block

another from registering a domain name, it will help if the objecting party

is a well-known entity or uses a well-known mark. Second, it will help an objecting party to show that the applied for

domain name is identical or similar to the objecting party’s trademark153

and that the objecting party had a bone fide use or acquisition of the mark

154

Third, and to a lesser extent, it may help to show that the applied-for

domain name was done in bad faith.155

Though this did play a major role in the Direct case, Weibo demonstrates that bad faith is not necessary (though it may be sufficient).

156 To show that the applied for domain name and the

objecting party are direct competitors may also be instructive in blocking a registration based on bad faith.

Finally, and most importantly, the objecting party should show that the

applied-for domain name would cause confusion in the relevant market.157

The confusion standard is fairly low, only nineteen percent in Direct,

158 and

required almost no evidence in the other two objections. The panel can

151. Del Monte Int’l GmBH, No. LRO2013-0001 at 4 (“zero proof”).

152. GUIDEBOOK, supra note 15, at 3-19 (Factor One); see The DirectTV Group Inc.,

No. LRO2013-0005, at 6; Sina Corp., No. LRO2013-0040, at 7.

153. The DirectTV Group Inc., No. LRO2013-0005, at 5–6.

154. GUIDEBOOK, supra note 15, at 3-19 (factor two). This was present in all three cases

but was not controversial enough to merit much discussion.

155. Id. (factor three).


157. This factor is present in all the objections and seemed to be given the most weight.

158. The DirectTV Group Inc., No. LRO2013-0005, at 6.



only speculate on the types of harms or effects a new gTLD presents, given the novelty of The Program, and that is likely why panels are so cautious when setting a confusion threshold. Issues with the SLD are even more

novel, because, unlike the gTLD disputes, there are no guidelines on how courts should address such issues. Indeed, the purpose of this Article is to try and determine, based on precedent from the legal rights objection, what

factors courts can use to assess future disputes. These findings look very similar to the procedure laid out by the UDRP

developed by ICANN.159

Under the UDRP, a domain name can be blocked

from registration or reassigned if it is, (1) “identical or confusingly similar” to another trademark, (2) if the registrant has no legitimate interest in the domain name, or (3) if the domain name has be registered in bad faith.

160

Unsurprisingly, the Guidebook and panel used familiar criteria; the gTLD Program is unprecedented in using rules and procedures that both the panels and practitioners are familiar with, which helps reduce uncertainty.

B. Micro: Implications for the SLD Cases?

Harkening back to the three cases described in Part II, we can now use the principles outlined from the Legal Rights Objection cases to evaluate

how courts will make future assessments about new gTLD registrations. All cases will make use of the above analysis, but subtle differences in how domain names are formed will have substantial effects on what factors

future courts will use in their evaluations. Case One, combining an SLD with a gTLD, is largely a moot issue.

Barring any oversight, these disputes were resolved by WIPO’s Legal

Rights Objection. If, however, such an oversight was made, there are two possibilities. First, the courts could simply look to the original eight-factor test used in the Legal Rights Objection proceedings. Or because of how

similar the Legal Rights Objection and UDRP are; there is nothing to indicate that courts cannot or will not do look to this established test. At least here they have some precedent from the other cases to help guide their

determination. Second, courts can treat the old SLD as a new one, which means it would receive the same treatment as Case Two.

Case Two concerns the combination of a new SLD with a new gTLD in

which there are trademark concerns with the SLD.161

First, the objector would have to show that the applied-for domain name, at least the SLD, is

159. See generally ICANN, UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY

(1999).

160. Id. at 4(a)(i)-(iii).

161. Note that Case Two looks and operates similarly to the UDRP.



identical or similar to the objector’s mark,162

and that the objector has a bona fide interest in said mark.

163 Most likely, a court would look to see if

the applied for domain name would create a likelihood of confusion in the

relevant market.164

This standard is relatively low and the objector may not have to present much evidence, if any, to show market confusion.

165 If the

two parties are direct competitors, the objector can attempt to show bad

faith registration,166

though this is not necessary for blocking a domain name. Even if the two parties are not direct competitors, bad faith can still be shown if the registrant has shown pattern cybersquatting behavior.

167

Finally, Case Three is complex. Assume all of the analysis for Case Two would remain the same, but it will be more difficult to prove bad faith in many of these cases, especially for infringing cases that are in foreign

languages because the registrant may have overlooked or been ignorant to the latent infringement. The low threshold for the confusion standard would still apply, and courts would likely balance this factor most.

C. Macro: Implications for Making More Land Available?

1. Do Major Players Have to Act?

Commentators have suggested The Program will affect both those who participate in the registration process and those that do not.

168 The major

companies especially would have to register for new gTLDs or update their portfolios with old SLD, and register it with a new gTLD to preempt any competitor or third party from cybersquatting on potentially new domain

names, or infringing old ones. Yet given the precedent for the legal rights objection, major companies may not have to do much to protect their brand name.

First, most major companies have well-known marks or very popular marks that would be considered well-known. Thus a major party, here the objector, would have to claim that the offending domain name is

substantially similar to its mark (in which the objector has a bona fide interest) and that there is a strong likelihood of confusion in the market over that domain name.

169 Moreover, because it is a well-known mark, it

may be easier for the objector to make the claim that this was a bad faith

162. GUIDEBOOK, supra note 15, at 3-19 (factor one).

163. Id. (factor two).

164. Id. (factor eight).

165. See Del Monte Int’l GmBH, No. LRO2013-0001 at 4.


167. GUIDEBOOK, supra note 15, at 3-19 (describing factor four).

168. Id.

169. GUIDEBOOK, supra note 15, at 3-19 (factor one).



registration trying to piggyback on the success of the objector’s brand.170

This has two effects: first, major companies with well-known marks do

not have to register as many new domain names to block others because the

low confusion standard has far reaching protections for well-known marks. Thus, it does not matter if the major company had made a choice to register with a certain new gTLD or not, because due to the low threshold of

confusion, major companies almost de facto own those domains or can at least prevent others from owning it. The second involves minor players.

2. Do Minor Players Get to Act?

Part of the purported goal of the introduction of new gTLDs was to expand the real estate on the Internet.

171 Yet with this low confusion bar,

there does not appear to be much smaller players can do to grab more land.

First, any attempt to try and use a SLD that is identical or similar to an established a well-known one will likely immediately trigger a bad faith registration concern. While this is not the court’s heaviest factor, it does

not help the registrant obtain new land. Finally, if a smaller player were trying to register a new domain name that made use of identical or similar words established by the major players, the confusion analysis would

trigger, and since it is low, the minor player would be placed at an extreme disadvantage and likely have their registration denied.

172 Thus the small

players are still stuck with their increasingly limited pool of SLDs, and

their only chance to make something “memorable” is by creating a new SLD or obtain a gTLD.

CONCLUSION

Although The New gTLD Program was launched with the best intentions of opening up domain names on the Internet, precedent for the Legal Rights

Objection demonstrates that its effects will be limited. This issue is mostly due to the low threshold established for customer confusion, in which some objectors may not have to proffer any evidence, but merely suggest that

because of the magnitude of their name, customers would automatically become confused.

Thus, both the established actors and new coming actors of the Internet

170. In the hypothetical examples of <www.google.food>, the owner of that domain

may want Google’s clientele to believe that Google has established and endorses this new

service, and attempt to cash in on some of Google’s hard-earned good will.

171. Shoot, supra note 1.

172. New registrants can try and register entirely new SLDs with new gTLDs, but the

Shoot article implies that this is very difficult to do, and the Program’s purpose was to free

up popular names, which does not appear to be the case. See id. (describing the difficulties

of implementing the program for its intended purpose).



will not see much meaningful change. The major actors are shielded by powerful bad faith and customer confusion standards so that they do not have to worry about competitors or greenhorns registering potentially

profit-siphoning domain names because the courts will likely strike such applications down before being registered. Minor actors will either be blocked at all attempts to use the SLDs the Program implied it wanted to

make available, or they will use new and unpopular ones. In both cases, the position of the aristocracy and the emerging mercantile class do not appear much different under the Program then they were before, and far

from the perhaps apocryphal prospect of a land rush, The New GTLD Program may prove to merely expensively reinforce the barriers of the already existing enclosure.

VIDOVICH_FINAL (DO NOT DELETE) 1/29/2015 2:20 PM


APPENDIX

The chart represents all possible combinations of new and old gTLDs

and SLDs and their consequences. Again, third-level domains act like

constants so they would have no affect on this analysis. In order to make a

valid domain name, a gTLD must pair with a SLD. Valid pairings are

highlighted in lighter shade of grey and invalid pairings are highlighted in a

darker shade of grey. A description of potential issues and resolutions are

detailed in the boxes.

Chart 1: Pairings of gTLDs and SLDs

Old gTLD New gTLD Old SLD New SLD

Old gTLD

ICANN

delegated all

the old

gTLDs

Case One

Already exists

or can be

registered if

no trademark

in old SLD

Can be

registered if

no third-party

owns a

trademark in

new SLD

New gTLD

Case One

Auction or

license

Case One

Case Two

Case Three

Case Two

Case Three

Old SLD

Already exits

or can be

registered if

no trademark

in old SLD

Case One

Case Two

Case Three

Trademark

dispute if old

SLD is

protected

Trademark

dispute if old

SLD is

protected

New SLD

Can be

registered if

no trademark

in new SLD

Case Two

Case Three

Trademark

dispute over

ownership

Auction,

license, or

litigation

HOKE_FINAL DRAFT (DO NOT DELETE) 1/29/2015 4:34 PM

27

MY ONLINE ME: WHY GAMERS SHOULD TURN TO CALIFORNIA’S RIGHT OF

PUBLICITY LAWS IN PROTECTING THEIR ONLINE AVATARS

BREANNE HOKE*

ABSTRACT

California is well known for protecting against the unauthorized use of

one’s identity, otherwise known as the right of publicity. This historical

protection is likely due to California’s desire to ensure the economic

prosperity of Hollywood’s entertainment industry. However, California

has established itself as a leader in a new entertainment industry: computer

gaming. Companies such as Linden Lab and Blizzard, both located in

California, have helped to create some of the most extensive and realistic

games that the gaming world has ever seen. Specifically, these companies

have developed extremely popular MMORPGs (massively multiplayer

online role-playing games) that boast billions of dollars in revenue each

year. In these realistic games, players assume the role of a character.

These characters, known as avatars, are designed and controlled by

gamers. Many gamers find that this online persona is an extension of their

identity, and some have called for a protection against others infringing

upon this identity. Currently in debate, is whether gamers can control the

likeness of their online avatars under the right of publicity doctrine. This

article will analyze whether gamers can and should be given the right of

publicity over their avatars under California law.

* Juris Doctor Candidate, May 2015, American University Washington College of Law;

Bachelor of Arts in Political Science, 2011, University of California Irvine. My deepest

gratitude to the American University Intellectual Property Brief for their hard work and

dedication in preparing this article for publication. Thank you to my parents, family, and

friends for their unconditional love and support.

HOKE_FIN AL DRAF T (DO NOT DELETE) 1/27/2015 8:24 PM


TABLE OF CONTENTS

Abstract ............................................................................................... 27 Introduction ......................................................................................... 29 I. A Dual Attack: California’s Statutory and Common Law Right of

Publicity .................................................................................... 32 A. What is the Right of Publicity? ............................................... 32 B. The Right of Publicity in California ......................................... 33 C. California’s Statutory Right of Publicity .................................. 34 D. California’s Common Law Right of Publicity .......................... 36 E. Comparing the Statute and the Common Law........................... 37 F. The Benefits of Bringing Both Claims to Court – Two is

Always Better Than One ...................................................... 38 G. Limitations on the Right of Publicity ....................................... 38 i. Copyright Preemption .............................................................. 38

ii. First Amendment Limitations ........................................... 39 iii. Statute of Limitations...................................................... 39

II. A Gamer’s Right of Publicity Over His or Her Avatar ........................ 40 A. Creating an Avatar ................................................................. 40 B. A Gamer’s Right of Publicity Over His or Her Avatar Under

the California Statute ........................................................... 41 C. A Gamer’s Right of Publicity Under the California Common

Law .................................................................................... 42 D. How Will Right of Publicity Limitations Affect a Gamer’s

Claim? ................................................................................ 45 i. Copyright Preemption ....................................................... 45 ii. First Amendment Limitations ........................................... 47 iii. Statute of Limitations...................................................... 47

E. Do MMORPG User Agreements Prevent a Gamer From Retaining the Right of Publicity Over One’s Avatar? ............. 48

III. Should the California Right of Publicity Laws Extend to Allow Gamers to Control the Commercial Use of Their Avatars? ............ 49 A. Under the statute? .................................................................. 49 B. Under the Common Law? ....................................................... 49 C. Policy Concerns ..................................................................... 50

Conclusions ......................................................................................... 51


2015 MY ONLINE ME 29

INTRODUCTION

Lillie and Hawkins met four years ago atop a waterfall overlooking a lush green valley—the kind of magical tableau you find only in romance novels, or in sophisticated virtual universes. The two had stumbled upon each other in Second Life, the 3-D computer world where nearly a million people log in regularly, communicating via digital representations of themselves, or avatars . . . . Before they’d ever seen or heard each other’s real voices, they got “married” in Second Life, like 43,000 other couples, typing their vows while their avatars stood atop the waterfall where they first met.

In four years, Lillie and Hawkins have seen each other in the flesh just three times. Their life as a couple exists almost entirely online. In Second Life, they go on dates that would be impossible in the real world. They fly over cities and land on rooftops, go scuba diving on a moment’s notice. Physical intimacy is out, but they use the technology to fake it as best they can. They hold hands. They kiss . . . . At night, they hookup headphones, so that even while they sleep, they can hear each other breathing.

1

Millions of people interact in online games via digital representations of themselves referred to as “avatars.”

2 These avatars are completely

controlled by the gamer.3 The avatar moves when directed to by the

gamer;4 the avatar’s voice comes from the gamer; the emotions that the

avatar expresses are emoted by the gamer.5 The entire look of the avatar is

1. Jessica Bennett, Avatars: Love and Desire in the Digital Age, NEWSWEEK (Apr.

17, 2011, 10:46 PM), http://www.thedailybeast.com/newsweek/2009/04/13/a-geek-love-

story.html.

2. See Bennett, supra note 1 (characterizing avatars as “digital representations” of

online gamers).

3. See generally, Basic Movement Controls, SECOND LIFE,

http://community.secondlife.com/t5/English-Knowledge-Base/Basic-movement-controls/ta-

p/700033 (last visited Oct. 11, 2013) (explaining basic avatar controls to be used by the

gamer including how to walk, run, fly, and jump).

4. See id.

5. See Bennett, supra note 1 (explaining that gamers show emotion through the use of

their avatars by holding hands, kissing, and using their real voices to communicate to each

other). But cf. JJ Ventrella, Direct Manipulation of Avatar for Expression and Animation

Editing, AVATAR PUPPETEERING, http://www.avatarpuppeteering.com/ (last visited Oct.

11, 2013) (arguing that current technology allows users to control their characters, but does

not fully allow them to express their emotions online because the technology required for

such actions is extremely complex); see id. (noting that game developers are working to

improve current technology to allow players to have more creative freedom in developing

real human characteristics in their avatars; characteristics such as behavior, facial and body

expression, and fluid movement).



designed by the gamer, from eye shape, color, and size, to the clothes the avatar wears.

6 Although the avatar may not look entirely like the gamer,

7 it

is clear that game users tend to genuinely identify with their online

personas.8 To the online gaming world, these avatars are their Internet

identities.9

Time and again, articles, blogs, and documentaries have highlighted the

video game love story in which people from different ends of the world meet, and even become married through online games that do not require them to physically be in the same place.

10

Some users may have a sentimental attachment to their online identities as shown above, however; others may have a monetary incentive to protect the identity of their online avatar. These MMORPG games produce

billions of dollars in revenue a year.11

An average gamer spends around 1,000 hours a year playing video games.

12 For each hour that a gamer

spends in an MMORPG game, the gamer can increase both the popularity

6. See generally Controlling Your Avatar’s Appearance, SECOND LIFE,

http://community.secondlife.com/t5/English-Knowledge-Base/Controlling-your-avatar-s-

appearance/ta-p/700709 (last visited Oct. 11, 2013) (explaining how to create the visual look

of an avatar).

7. See generally Marla Popova, Alter Ego: Portraits of Gamers Next to Their

Avatars, BRAIN PICKINGS, http://www.brainpickings.org/index.php/2011/12/14/alter-ego-

robbie-cooper/ (last visited Oct. 11, 2013) (displaying visually avatars next to their human

counterparts).

8. See generally, Kristina Dell, How Second Life Affects Real Life, TIME (May 12,

2008) (arguing that one’s online identity is inextricably intertwined with one’s real world

identity; each tending to affect the other).

9. See id.; What is an Avatar?, SECOND LIFE, http://secondlife.com/whatis/avatar/

(last visited Oct. 11, 2013) (stating that an online avatar is “you – only in [3-D]”).

10. See, e.g., Stephanie Rosenbloom, It’s Love at First Kill, N.Y. TIMES (Apr. 22,

2011), http://www.nytimes.com/2011/04/24/fashion/24avatar.html?pagewanted=all&_r=0

(writing about a couple who met and fell in love through the use of their online avatars); M Y

AVATAR AND M E (Milton Media ApS and Fenris Film & Multimedia ApS 2010)

(documenting the developing relationship between two online avatars and their real life

counterparts); Lifestyles and Relationships, SECOND LIFE,

http://community.secondlife.com/t5/Lifestyles-and-Relationships/Share-your-SL-love-

stories/td-p/1006959 (last visited Oct. 11, 2013) (providing a forum for gamers to share their

own avatar love stories).

11. See Alec Meer, MMORPG revenue to reach $8bn by 2014, GAME INDUSTRY

INTERNATIONAL (Aug. 11, 2010), http://www.gamesindustry.biz/articles/2010-08-11-

mmorpg-revenue-to-grow-60-percent-this-year (stating that the MMORPG market was

worth about $5 billion in 2009, $6 billion in 2010, and predicted to increase to $8 billion by

the year 2014).

12. See Kristina Dell, supra note 8 (stating that on average, gamers spend around

twenty hours a week playing MMORPG games).



and the potential economic value of his or her character.13

Some avatars are known world-wide, and some even have a brand

attached to their identity.14

Avatars can become “famous” through a

variety of modes; some are well known land developers, fashion designers, models, or even creators.

15 Many famous gamers have used their avatar

fame to earn real world revenue.16

As a result, the gaming world has tried

to retain ownership over their avatars.17

Unfortunately, gamers are usually required to license away the intellectual property rights over their avatars by agreeing to the Terms of Service in MMORPG games.

18 However, as

13. See, e.g., Julia Layton, Can I make my living in second life?, HOW STUFF WORKS,

http://computer.howstuffworks.com/internet/social-networking/information/second-life-

job.htm (explaining that internationally known companies such as Toyota and Sony are

developing a virtual presence in MMORPGs, and are paying long-time avatars to develop

them).

14. See, e.g., People, SECOND LIFE WIKIA, http://secondlife.wikia.com/wiki/People

(last visited Oct. 11, 2013) (hereinafter People) (noting “Archivist Llewellyn” as one of the

most prominent players on second life); see also id. (crediting Archivist Llewellyn as

founding and directing the Neil A. Armstrong Library and Archives, the first virtual library

recognized by the Library of Congress, as well as becoming the winner of the Federal

Virtual Worlds Challenge promoted by the White House and sponsored by the Department

of Defense); User: Archivist Llewellyn, SECOND LIFE WIKIA,

http://wiki.secondlife.com/wiki/User:Archivist_Llewellyn (last visited Nov. 7, 2014)

(providing a comprehensive overview of Archivist Llewellyn’s on and offline

achievements); Archivist Llewellyn, SECOND LIFE WIKIA,

http://secondlife.wikia.com/wiki/User:Archivist.Llewellyn (last visited Nov. 7, 2014)

(providing more information on Archivist Llewellyn’s successes, and also providing

pictures of her online avatar as well pictures of her in real life).

15. See generally People, supra note 14 (listing some of the most prominent players in

second life, followed by a brief description of why they are famous).

16. See Layton, supra note 13 (citing Second Life creator, David Kirkpatrick, as stating

that hundreds of gamers are currently making a monthly income in excess of $1,000); see

also id. (noting that the lines between virtual commerce and “real world” commerce no

longer exist).

17. See Mike Kent, Massive Multi-player Online Games and the Developing Political

Economy of Cyberspace, FAST CAPITALISM, Issue 4.1 (2008), available at

http://www.uta.edu/huma/agger/fastcapitalism/4_1/kent.html (stating that there is a battle

between gamers and game-makers over the intellectual property rights for online gaming

avatars).

18. See, e.g., World of Warcraft End User License Agreement, BLIZZARD ENTER. (Dec.

12, 2013), http://us.blizzard.com/en-us/company/legal/wow_eula.html (requiring users to

acknowledge that “all title, ownership rights and intellectual property rights in and to the

Game and all copies thereof (including without limitation any titles, computer code, themes,

objects, characters, character names, stories, dialog, catch phrases, locations, concepts,

artwork, character inventories, structural or landscape designs, animations, sounds, musical

compositions and recordings, audio-visual effects, storylines, character likenesses, methods

of operation, moral rights, and any related documentation) are owned or licensed by

Blizzard”); see Oliver A. Khan, Me, Myself, and My Avatar: The Right to the Likeness of



some have suggested, gamers may be able to retain some economic control of their avatars through the right of publicity.

19

The right of publicity, which acts as a bar against unauthorized uses of

identity,20

is readily accepted in California.21

Additionally, several of the leading MMORPG gaming companies are headquartered in California.

22

Thus, any claims against these companies will likely be brought in a

California court.23

Therefore, this article will first explain California’s right of publicity laws. Second, this article will analyze whether a gamer can be granted the right of publicity over his or her avatar, and will further

explain the rights that can realistically be retained in light of gaming user agreements. Third, this artricle will examine whether a gamer should be given the right of publicity over his or her avatar.

I. A DUAL ATTACK: CALIFORNIA’S STATUTORY AND COMMON LAW

RIGHT OF PUBLICITY

A. What is the Right of Publicity?

The right of publicity is not universal; it is not accepted in all fifty states,

24 nor is it congruent between the states that do accept the right.

25

Generally, the right of publicity protects against unauthorized uses of a person’s name, likeness, and identity.

26 Although some state right of

Our Digital Selves, 5 I/S: J.L. & POL’Y FOR INFO. SOC’Y 447, 454 (2010) (stating that

“players must waive any rights they have in their characters”).

19. See generally Khan, supra note 18 (analyzing whether a gamer could viably bring a

right of publicity claim for his or her avatar).

20. See Right of Publicity, LEGAL INFORMATION INSTITUTE,

http://www.law.cornell.edu/wex/publicity (stating that “the right of publicity prevents the

unauthorized commercial use of an individual’s name, likeness, or other recognizable

aspects of one’s persona”).

21. See Max Kimbrough & Tammy Cummings, The Right of Publicity,

http://www.artsandbusinessphila.org/pvla/documents/RightofPublicity.pdf (stating that of

all the states that allow right of publicity claims, California is the best state in which to bring

a right of publicity claim because of the state’s broad statutes).

22. See LINDEN LAB, http://lindenlab.com/contact (last visited Nov. 7, 2014) (listing

San Francisco, California as the Linden Lab headquarters); BLIZZARD,

http://us.blizzard.com/en-us/company/about/contact.html (last visited Nov 7, 2014) (listing

Irvine, California as the Blizzard headquarters).

23. Cf. Fed. R. Civ P. 4(k).

24. See Kimbrough & Cummings, supra note 21 (stating that “several states have laws

that protect a celebrity’s right of publicity, however most do not”).

25. See Khan, supra note 18, at 450-51 (comparing how right of publicity laws vary

from state to state); see also Kimbrough & Cummings, supra note 21 (explaining

differences between New York and California right of publicity laws).

26. Right of Publicity: An Overview, LEGAL INFORMATION INSTITUTE,



publicity statutes only protect individuals with celebrity status, the common view is that the right of publicity extends to every individual.

27

The right of publicity is largely viewed as a relatively recent legal

development28

that stems from the right of privacy,29

but is now considered a part of the intellectual property family.

30 Similar to other intellectual

property policy rationales, the right of publicity is intended to reward those

who put time and effort into their work and thereby allow the skill to be provided to the public as a whole.

31

B. The Right of Publicity in California

California is well known for its protection of the right of publicity.32

Not only have the most notable right of publicity cases been litigated in California,

33 but the state also provides two different ways to protect

http://www.law.cornell.edu/wex/publicity (last visited Nov. 7, 2014); see Kimbrough &

Cummings, supra note 21, at 1 (noting that the “right of publicity protects an individual’s

interest in the commercial exploitation of his or her name or likeness” and “gives an

individual the exclusive right to license the use of his or her identity for commercial

endorsement”).

27. Cf. Brief History of RoP, RIGHT OF PUBLICITY, http://rightofpublicity.com/brief-

history-of-rop (last visited July 28, 2014)(stating that “the majority view is that the Right of

Publicity extends to every individual, not just those who are famous,” but “as a practical

matter, Right of Publicity disputes usually involve celebrities, since it is they who possess

the names and images that help hype advertisements and sell products”).

28. See Michael Madow, Private Ownership of Public Image: Popular Culture and

Publicity Rights, 81 CAL. L. REV. 127, 146-149 (1993) (noting that many see the right of

publicity as a new law resulting from the emergence of Hollywood’s golden age, but

provides evidence that the spirit of the right of publicity has been around for several

hundred years); see generally Samuel D. Warren & Louis D. Brandeis, The Right to

Privacy, 4 HARV. L. REV. 193 (1890) (proposing the right of publicity first).

29. See Madow, supra note 28, at 167 (quoting Thomas McCarthy ’s view that the right

of publicity was “carved out of the general right of privacy,” and questioning whether the

right of publicity stems from the right of privacy or whether it stems from a frustration of it).

30. See Brief History of RoP, supra note 27 (noting that “the Right of Publicity is often

confused with its more recognized cousins in the intellectual property family, copyright and

trademark”).

31. See Lugosi v. Universal Pictures, 630 P. 2d 435, 441 (Cal. 1979) (en banc)

(providing the parallels between copyright and right of publicity rationales); see also id.

(noting that the purpose of granting copyright protection is to encourage people to expend

time and money into intellectual and artistic creation, and thereby secure the benefits for

society as a whole); id. at 840 (noting that the purpose of granting the right of publicity is to

encourage people to expend time and resources to develop the skills or achievements

necessary for public recognition that not only benefit the individual, but tends to benefit

society as a whole).

32. Cf. Kimbrough & Cummings, supra note 21 (stating that of all the states that

accept the right, California provides the most liberal laws).

33. See Notable Cases, RIGHT OF PUBLICITY, http://rightofpublicity.com/notable-cases



against unauthorized uses of one’s identity.34

The first protection of the right of publicity is codified in California Law.

35 The second protection is

rooted within California’s common law.36

The statute and the common law

protect in different ways, and both can be used simultaneously in a right of publicity suit.

37

C. California’s Statutory Right of Publicity

The California statutory right of publicity protects against unauthorized use of “another’s name, voice, signature, photograph, or likeness.”

38

The term “another’s” is extremely liberal, and is not limited by celebrity

status,39

or even status as a living person. Several states mandate that the persona receiving protection must be famous.

40 Although many of

California’s right of publicity cases involve famous people, the court has

never placed such limits on the protection.41

Furthermore, other states specify that the persona receiving protection must be a “living person.”

42

Again, California places no such limits.43

On the contrary, California has a

separate statute protecting posthumous rights of publicity.44

The right lasts for seventy years after the death of the persona, and is treated as a property right.

45 Therefore, even after one has passed, one’s heirs can still prosecute

(last visited July 28, 2014) (listing the most notable right of publicity cases; the majority of

which have been litigated in California).

34. See CAL. CIV. CODE § 3344 (1971) (providing the statutory right of publicity);

White v. Samsung Electronics Am., Inc., 971 F.2d 1395, 1397 (9th Cir. 1992) (providing the

California common law right of publicity).

35. § 3344.

36. White, 971 F. 2d at 1397 (stating the four part test for a California common law

right of publicity claim).

37. See § 3344(g) (allowing remedies to be cumulative and in addition to any others

provided for by law).

38. § 3344(a).

39. See KNB Enter. v. Matthews, 78 Cal. App. 4th 362, 367 (2000) (stating that

“although the unauthorized appropriation of an obscure plaintiff’s name, voice, signature,

photograph, or likeness would not inflict as great an economic injury as would be suffered

by a celebrity plaintiff, California’s appropriation statute is not limited to celebrity

plaintiffs”).

40. Cf. supra note 27 and accompanying text.


42. See, e.g., N.Y. CIV. RIGHTS LAW § 50 (McKinney)(providing the term “living

person” as a qualification for protection under the statute).

43. See CAL. CIV. CODE § 3344.1 (West) (allowing for posthumous persona

protection).

44. See id.

45. See id.; see also California Right of Publicity, DIGITAL M EDIA LAW PROJECT,

http://www.dmlp.org/legal-guide/california-right-publicity-law (last visited Nov. 7, 2014)

(stating that the California right of publicity “lasts for 70 years after death, and is considered



against unauthorized uses of the identity.46

The term “voice” within the meaning of the statute only applies to one’s

actual voice.47

In Midler v. Ford, a well-known case for statutory voice

infringement, Bette Midler, a popular singer, declined to sing a song for the defendant’s use in a commercial.

48 The defendant, without Midler’s

consent, hired a sound-alike to sing the song instead.49

The district court

first ruled that Midler had “no grounds for protection.”50

However, the Ninth Circuit ruled that although the statutory right of publicity did not protect imitations of one’s voice, the common law right of publicity could

protect such imitations.51

The statute defines “photograph” as “any photograph or photographic

reproduction, still or moving, or any videotape or live television

transmission, of any person, such that the person is readily identifiable.”52

A person is readily identifiable “when one who views the photograph with the naked eye can reasonably determine that the person depicted in the

photograph is the same person who is complaining of its unauthorized use.”

53 Thus, if a plaintiff’s image is altered to the point where the plaintiff

is no longer recognizable, the statute cannot offer protection.

The Ninth Circuit determined that the statutory meaning of the word “likeness” modifies the term photograph, and is merely meant to protect a visual image of a person other than a photograph.

54 Courts have used the

a freely transferable, licensable, descendible property right”).

46. See, e.g., The Hebrew Univ. of Jerusalem v. Gen. Motors, LLC, No. cv-03790

AHM (Cal. Dist. Ct. Mar. 16, 2012), available at

http://rightofpublicity.com/pdf/cases/einstein-v-gm.pdf (showing that under the California

statutory right of publicity, Albert Einstein’s image could still be protected after his death;

however, not for an unlimited time).

47. See generally Midler v. Ford Motor Co., 849 F.2d 460 (9th Cir. 1988).

48. Id. at 461.

49. Id. at 461-62 (the impersonator was instructed by the defendant to sound as much

like Bette Midler as possible); see also id. (noting that after the commercial aired, Midler

and the impersonator were told by friends and family that the song sounded like Midler).

50. See generally Midler v. Ford Motor Co., 1987 U.S. Dist. LEXIS 14367 (C.D. Cal.

Aug. 13, 1987); see also Midler, 849 F.2d at 462 (noting that no case had ever prevailed on

imitation of voice alone; additionally, while the legislature had included the term “likeness”

after the term “photograph,” the legislature did not include the words “imitation of voice”

after the term “voice”).

51. See Midler, 849 F.2d at 463-64 (ruling that although imitation of one’s voice does

not violate ones right of publicity under the statute, it is an infringement upon one’s identity

which is protected under the California common law right of publicity).

52. CAL. CIV. CODE § 3344(b).

53. § 3344(b)(1).

54. See Midler, 849 F.2d at 463; see also Newcombe v. Adolf Coors Co., 157 F.3d

686, 692-93 (9th Cir. 1998).



“readily identifiable” test to conclude that a “likeness” can be infringed upon by a variety of different mediums, including but not limited to, drawings and robots.

55 Generally, the less detailed the “likeness” is, the

less protection it will receive.56

Once a plaintiff can show that his or her “name, voice, signature,

photograph, or likeness” has been used without authorization, the plaintiff

must then meet a three-step test.57

First, that there was a knowing use of the plaintiff’s identity.

58 Second, the use was for advertising purposes.

59

Third, the use and the commercial purpose have a direct connection.60

D. California’s Common Law Right of Publicity

The California common law right of publicity requires that the plaintiff supply four allegations.

61 First, that the defendant used the plaintiff’s

identity.62

Second, the appropriation of the plaintiff’s name or likeness was to the defendant’s advantage, commercial or otherwise.

63 Third, the

plaintiff did not consent to the use.64

Fourth, and last, the plaintiff must

allege that there was resulting injury.65

The Ninth Circuit has made it clear that the focus of the common law

right of publicity is to protect one’s identity; name or likeness as described

above merely help enhance the definition of identity.66

Because of this

55. Wendt v. Host Int’l, Inc., 125 F.3d 806, (9th Cir. 1997).

56. See, e.g., Newcombe, 157 F.3d at 692-93 (9th Cir. 1998) (concluding that a

drawing of a famous baseball player that had certain recognizable features could be

considered infringement of one’s likeness under the statute); Wendt, 125 F.3d 806 (ruling

that robots with a great deal of detail reminiscent of the persona could infringe ones likeness

under the California Statute); White v. Samsung Electronics Am., Inc., 971 F.2d 1395 (9th

Cir. 1992)(noting that insufficient detail reminiscent of the persona will not amount to

statutory infringement of ones likeness).

57. See Newcombe, 157 F.3d at 692; see also DIGITAL M EDIA LAW PROJECT, supra note

45 (confirming that the Newcombe test is to be applied in all statutory cases).

58. Newcombe, 157 F.3d at 692.

59. Id.

60. Id.

61. White, 971 F.2d at 1397 (providing the four necessary allegations).

62. Id.

63. Id.

64. Id.

65. Id.

66. See Abdul-Jabbar v. Gen. Motors Corp., 85 F.3d 407, 413-414 (9th Cir. 1996)

(providing that California’s common law right of publicity is not limited to the

appropriation of name or likeness, but instead is focused on the appropriation of the

plaintiff’s identity); see also DIGITAL M EDIA LAW PROJECT, supra note 45 (commenting that

“though the second prong of the standard four-step test mentions ‘name or likeness,’ courts

have held that the common law right is actually much broader; the focus instead is on the



focus, the common law is generally more expansive than the statutory protection.

67 For example, in Midler v. Ford, Midler could not prevail

under the statute for voice imitation, but could proceed under the common

law because her voice equated to her identity.68

Additionally, in White v. Samsung, the court ruled that a robot with some of Vanna White’s identifying characteristics (wig, jewelry, and dress) was not a statutory

violation of her likeness, but was a common law violation of her identity.69

Lastly in, Motschenbarcher v. F.J. Reynolds Tobacco, one of the broadest interpretations of identity, the Ninth Circuit found that a racecar driver’s

car equated to his identity under the statute even though the driver could not be seen.

70

E. Comparing the Statute and the Common Law

Liberality, knowledge, and use differentiate the common law right of publicity from the statutory right of publicity.

71 As previously mentioned,

a common law claim for the right of publicity is much more liberal than a

statutory claim.72

Additionally, the statute requires a knowing use,73

whereas mistake or negligence are not defenses against commercial appropriation under common law.

74 Lastly, the statute requires that the use

be for commercial purposes,75

yet the common law prohibits any type of misappropriation.

76

term ‘identity’”).

67. See DIGITAL M EDIA LAW PROJECT, supra note 45 (noting that “courts have

interpreted ‘identity’ broadly, covering more uses than does the statutory right of

publicity”).

68. See generally Midler v. Ford Motor Co., 849 F.2d 460 (9th Cir. 1988).

69. See generally White v. Samsung Electronics Am., Inc., 971 F.2d 1395(9th Cir.

1992).

70. See Motschenbacher v. R. J. Reynolds Tobacco Co., 498 F.2d 821, 822 (9th Cir.

1974) (ruling that defendant’s use of a car that was identical to plaintiff’s well known

racing car was a violation of his common law right of publicity).

71. See generally DIGITAL M EDIA LAW PROJECT, supra note 45 (comparing the

California statutory right of publicity claim to the California common law right of publicity

claim).

72. See, e.g., Midler, 849 F.2d 460; White, 971 F.2d 1395; Motschenbacher, 498 F.2d

at 822 (9th Cir. 1974) (demonstrating that the common law right of publicity is more

flexible than the statutory right).

73. See CAL. CIV. CODE § 3344(a)(1971) (stating that “[A]ny person who knowingly

uses another’s name, voice, signature . . . shall be liable. . . .”(emphasis added)).

74. See White, 971 F.2d at 1397 (explaining that the common law infringement test

merely requires that the “defendant used the plaintiff’s identity” without consent).

75. See Newcombe, 157 F.3d at 692 (explaining the second prong of the statutory

infringement test requires “use for advertising purposes” only).

76. See White, 971 F.2d at 1397 (requiring that “the appropriation of the plaintiff’s



F. The Benefits of Bringing Both Claims to Court – Two is Always Better Than One

The common law right of publicity is additional to, not codified by, the statute.

77 Therefore, one can bring both a right of publicity common law

suit and a statutory suit.78

Several right of publicity cases have been

brought under both the common law and the statute.79

Usually where one claim fails, the other prevails.

80

G. Limitations on the Right of Publicity

California’s right of publicity laws may be extremely expansive; however, the right can be limited by copyright preemption, First Amendment limitations, and statute of limitations.

81

i. Copyright Preemption

Because copyright law is provided for in the U.S. Constitution,82

a state right of publicity claim (either statutory or common law) can be preempted

if it is too similar to a copyright claim.83

Copyright protection is limited to original works of authorship that have been fixed in a tangible medium of expression.

84 The six exclusive rights granted by copyright are limited to

the right to copy, to produce derivative works, to distribute copies, to perform publically, to display publically, and to digitally perform the

name or likeness was to the defendant’s advantage, commercial or otherwise”).

77. See § 3344(g) (stating that “the remedies provided for in this section are cumulative

and shall be in addition to any others provided for by law”).

78. See id.

79. See, e.g., Midler, 849 F.2d 460 (asserting both a common law and right of publicity

claim); White, 971 F.2d 1395 (asserting both a common law and right of publicity claim);

Motschenbacher, 498 F.2d 821 (9th Cir. 1974) (asserting both a common law and right of

publicity claim).

80. See, e.g., Midler, 849 F.2d 460 (losing under the statute but prevailing under the

common law); White, 971 F.2d 1395 (losing under the statute but prevailing under the

common law); Motschenbacher, 498 F.2d 821 (losing under the statute but prevailing under

the common law).

81. See DIGITAL M EDIA LAW PROJECT, supra note 45 (noting that “a right of publicity

claim—either statutory or under the common law—fails if it is too similar to a copyright

claim”); see also id. (noting that “the First Amendment also limits the extent to which rights

of publicity can limit speech about matters of public interest”); see also id. (noting that

“both the statutory and common law right of publicity claims are subject to a two-year

statute of limitations.”).

82. See U.S. CONST. Art. I, § 8, cl. 8 (providing Congress the power to regulate

copyright protection).

83. DIGITAL M EDIA LAW PROJECT, supra note 5.

84. See 17 U.S.C. § 102 (2014) (providing the subject matter and scope of copyright

law).



work.85

In Fleet v. CBS, Inc., a case in which the state right of publicity claim was preempted by federal copyright law, the court ruled that for preemption to occur, a two-part test must be met.

86 First, the claim must fit

within the subject matter of copyright protection.87

Second, the right asserted must be equivalent to the exclusive rights granted by copyright.

88

ii. First Amendment Limitations

Similarly, because free speech stems from the U.S. Constitution,89

a free speech defense will trump a state right of publicity claim.

90 The California

right of publicity statute clearly lays out First Amendment exceptions.91

Specifically, the statute allows for one’s identity to be used in connection with news, public affairs, sports, and politics.

92 Thus, the Ninth Circuit

usually refers to the statutory exemptions when a defendant argues a First

Amendment defense.93

However, the common law right of publicity does not provide these same exceptions, and therefore the court has had to weigh First Amendment considerations with right of publicity considerations.

94

iii. Statute of Limitations

Any right of publicity claim brought in California has a two-year statute of limitation.

95 For material appearing on a website, the Ninth Circuit has

held that the statute retriggers when the subject matter is “substantively

85. Id. § 106 (listing the six exclusive rights of copyright law).

86. See Fleet v. CBS, Inc., 58 Cal. Rptr. 2d 645, 650 (1996) (explaining the two part

test); see also Del Madera Props. v. Rhodes & Gardner, Inc., 820 F.2d 973, 976 (9th Cir.

1987); Trenton v. Infinity Broad. Corp., 865 F. Supp. 1416, 1427-28 (C.D. Cal. 1994).

87. See Fleet, 58 Cal. Rptr. 2d at 650 (describing the first part of the two part test).

88. See id. (describing the second part of the two part test).

89. See U.S. CONST. amend. I (mandating that Congress cannot abridge free speech).

90. See DIGITAL M EDIA LAW PROJECT, supra note 45.

91. CAL. CIV. CODE § 3344(d).

92. Id. § 3344.

93. See, e.g., Gionfriddo v. Major League Baseball, 94 Cal. App. 4th 400, 415-17 (Cal.

Ct. App. 2001); see also DIGITAL M EDIA LAW PROJECT, supra note 45 (stating that “courts

often focus on this statutory safe harbor, instead of the First Amendment directly, when

confronting statutory right-of-publicity claims”).

94. See, e.g., Hoffman v. Capital Cities/ABC, Inc., 255 F.3d 1180 (9th Cir. 2001)

(weighing free speech interests with right of publicity interests, and stating that in a non-

commercial free speech use, the plaintiff cannot prevail unless actual malice is shown); see

DIGITAL M EDIA LAW PROJECT, supra note 45 (stating that “the First Amendment is more

often directly relevant in common law right of publicity cases, since there is no statutory

safe harbor.”).

95. See generally Christoff v. Nestle USA, Inc., 47 Cal. 4th 468, 474 (2009); accord

DIGITAL M EDIA LAW PROJECT, supra note 45.



altered or added to, or the website is directed towards a new audience.”96

II. A GAMER’S RIGHT OF PUBLICITY OVER HIS OR HER AVATAR

This section will argue that the gamer’s real life identity is protected under the right of publicity, and that the avatar is simply a legal extension of that protection. This is necessary not only to be afforded protection

under California right of publicity laws, but also necessary to avoid being limited by a gaming company’s Terms of Service. Further, this section will show that the California statutory right of publicity is more limited than the

common law right of publicity, and thus, a right of publicity suit for an avatar will be more successful under the common law. Lastly, this section will use a well-known avatar to help facilitate an understanding of the key

differences between a statutory claim and a common law claim, and also demonstrate the value of having rights over one’s avatar.

A. Creating an Avatar

Current technology has allowed gamers to create avatars in all shapes and sizes.

97 Some are created to look like two-dimensional replicas of their

human counterparts, while others are designed to be more fantastical.98

One of the most famous players on Second Life, Archivist Llewellyn,99

designed her avatar to look like a replica of her true self.

100 The avatar has

the same hair color and length as the gamer; the avatar has the same body

type as the gamer; and the avatar’s facial features match the gamer.101

Archivist Llewellyn, being the founder and director of the first virtual library recognized by the Library of Congress, as well as becoming the

winner of the Federal Virtual Worlds Challenge promoted by the White House and sponsored by the Department of Defense, has an obvious incentive to retain economic control over her avatar.

102 Therefore, this

article will use Archivist Llewellyn’s avatar to show how California’s

96. See Yeager v. Bowlin, 693 F.3d 1076, 1082 (9th Cir. 2012) cert. denied, 133 S. Ct.

2026 (2013), reh’g denied, 12-1047, 2013 WL 4045219 (U.S. Aug. 12, 2013) (noting the

statute of limitations website standard); see also id. (noting that the statute of limitations is

not retriggered every time the website is revised).

97. See Popova, supra note 7 (displaying a wide range of different avatars next to their

human counterparts).

98. See id.


100. Archivist Llewellyn, supra note 14 (providing pictures of her online avatar as well

pictures of her in real life).

101. See id. (providing a video of Archivist Llewellyn in avatar form, and providing

pictures of the true gamer behind the avatar).




statutory and common law right of publicity claims can help gamers retain some economic control over their avatars.

B. A Gamer’s Right of Publicity Over His or Her Avatar Under the California Statute

When bringing a statutory right of publicity claim for an online avatar, the gamer will necessarily need to claim that another is infringing upon his

or her human “likeness.” Not only is likeness the most lenient term in the statute,

103 but it is also the most relevant.

As previously stated, the term likeness modifies the word photograph

within the statute.104

Without authorized consent, it is illegal under the statute to take a photo (“a visual image that is obtained by using a camera”)

105 and similarly illegal to create a likeness (“a visual image of a

person other than a photograph”)106

where the plaintiff is readily identifiable.

107

To determine if the plaintiff is readily identifiable, the court relies on

recognizable characteristics of the known personality to show infringement.

108 For example, in Newcombe v. Adolf Coors Co.,

109 a case

wherein a famous pitcher sued the Coors beer company over an

advertisement of a faceless baseball player, the court determined that Newcomb’s likeness was misappropriated because the photograph contained certain recognizable features such as Newcomb’s jersey number,

similar style of jersey, and pitcher stance.110

Conversely, in White v. Samsung Electronics America, Inc. a case wherein Vanna White sued Samsung for advertising a futuristic robot that mimicked Vanna White, the

court ruled that there was no “likeness” infringement because although the robot shared Vanna’s same style of dress, hair, and jewelry, these elements were too generic, and no real recognizable aspects of Vanna’s persona were

used.111

Given the current case law, if Archivist Llewellyn were to bring a


104. See Newcombe v. Adolf Coors Co., 157 F.3d 686, 690 (9th Cir. 1998) (ruling that

“likeness” is intended to modify the word photograph).

105. Id. at 692.

106. Id.

107. See Newcombe, 157 F.3d at 692; accord Wendt v. Host Int’l, 125 F.3d 806, 811

(9th Cir. 1997); White v. Samsung Electr. Am., Inc., 971 F.2d 1395, 1397 (9th Cir. 1992)

(interpreting likeness in the same fashion).

108. See generally Newcombe, 157 F.3d at 692; White, 989 F.2d at 1514.

109. See Newcombe, 157 F.3d 686 (9th Cir. 1998).

110. See id. at 693.

111. See generally White, 989 F.2d 1512.



statutory right of publicity claim, her avatar would likely be seen as a readily identifiable likeness.

112 First, her avatar is a moving visual and

interactive character that arguably fits the likeness test (a visual image of a

person other than a photograph).113

Second, because her avatar shares nearly all the same physical qualities as her human counterpart,

114 similar

to the Newcombe case, it would be difficult for a court to determine that she

is not “readily identifiable.” However, if Archivist Llewellyn’s avatar were visually different than her human form, a court would likely compare and contrast prominent characteristics of the gamer and the avatar. If the

characteristics were not similar enough, as seen by the White case, the court would be unable to allow the right of publicity claim to prevail.

115

Therefore, it is clear that under the statute, avatar protection hinges on

whether the avatar resembles the gamer. If Archivist Llewellyn proves that her avatar is a readily identifiable

likeness, the statute requires her to show that an infringer knowingly used

Llewellyn’s avatar.116

Second, the use of her avatar was for advertising purposes.

117 Finally, the use of her avatar and the subsequent use’s

commercial purpose have a direct connection.118

These elements combined

would make Llewellyn’s avatar claim actionable.

C. A Gamer’s Right of Publicity Under the California Common Law

The common law right of publicity is much more liberal than the

statutory right,119

and would likely be a more viable route through which a plaintiff may initiate a right of publicity suit for any avatar, regardless of whether the avatar resembles the gamer.

Under the common law right of publicity, the plaintiff must allege four things.

120 First, that the defendant used the plaintiff’s identity.

121 Second,

that the appropriation of the plaintiff’s name or likeness was to the

112. See id. (requiring the plaintiff to be readily identifiable in a likeness dispute).

113. See id. (defining “likeness”).

114. See Archivist Llewellyn, supra note 14.

115. See Newcombe, 157 F. 3d at 692 (requiring that the plaintiff be readily

identifiable).

116. Id. (listing the first step of a statutory infringement suit).

117. Id. (listing the second step of a statutory infringement suit).

118. Id. (listing the third step in the statutory infringement suit).

119. See generally Midler v. Ford Motor Co., 849 F.2d 460 (9th Cir. 1988); White v.

Samsung Electr. Am., Inc., 971 F.2d 1395, 1395 (9th Cir. 1992); Motschenbacher v. R. J.

Reynolds Tobacco Co., 498 F.2d 821, 822 (9th Cir. 1974) (all cases demonstrating that the

common law right of publicity is more flexible than the statutory right); see also, DIGITAL

M EDIA LAW PROJECT, supra note 45.

120. See White, 971 F.2d at 1397.

121. See id.



defendant’s advantage, commercial or otherwise.122

Third, the plaintiff did not consent to the subsequent use.

123 Fourth, and lastly, the plaintiff must

allege that she suffered an injury as a result of the other’s use.124

Because

the common law focuses so heavily on the “identity” analysis,125

a gamer will necessarily have to argue that an avatar is an “identity” of the gamer.

The most supportive case in favor of showing that an avatar can be

considered an identity is Motschenbarcher v. F.J. Reynolds.126

In Mostchenbaracher, a professional racecar driver sued a cigarette company under the California common law right of publicity for using his identity in

connection with a national commercial.127

In the commercial, the racecar driver’s human likeness was not identifiable; in fact, the body of the driver was not visible at all.

128 Instead, the commercial exploited the driver’s

uniquely decorated car.129

Originally, the lower court found that because no human image was visible in the commercial, there could be no infringement on the plaintiff’s identity.

130 Thus, he could not prevail under

the common law.131

However, the appellate court, finding in the spirit of the right of publicity, held that the plaintiff could prevail.

132 The court

determined that although the public could not see the driver, the distinct

decorations of the driver’s car led some to infer that the person driving the car was the plaintiff.

133 This decision shows the following: first, policy

rationale is important when deciding a common law claim.134

Second, the

court can protect an image that does not look like a person.135

Finally, the court can find infringement where the public assumes association.

136

In a common law right of publicity suit, an avatar in the gaming world is

likely equivalent to a distinctive automobile on the racetrack. Similar to a

122. See id.

123. See id.

124. See id.


126. 498 F.2d 821 (9th Cir. 1974).

127. See id. at 822.

128. See id.

129. See id.

130. See id.

131. See id.

132. See Motschenbacher v. R. J. Reynolds Tobacco Co., 498 F.2d 821, 822 (9th Cir.

1974); see also Lugosi v. Universal Pictures, 603 P.2d 425, 431 (Cal. 1979) (noting that the

purpose of granting the right of publicity is to encourage and reward people to expend time

and resources to develop the skills or achievements necessary for public recognition that not

only benefit the individual, but tends to benefit society as a whole).

133. See Motschenbacher, 498 F.2d at 827.

134. See generally id.





racecar on the track, an avatar in the gaming world is the physical representation of the human figure to the public. Although the representation may not look like the human figure, similar in nature to a

racecar, the sight of the avatar is inextricably intertwined with the identity of the human. The audience knows key facts about the gamer’s reputation simply by looking at the avatar or hearing the avatar’s name. Similar to a

racecar driver, gamers spend hours enhancing their skills, their reputation, and their persona for the public.

137 It would be incongruent for a California

court to award protection for a racecar driver’s specially designed car, but

not award gamer’s protection for their specially designed avatars. Avatars may have an even more compelling case for publicity rights

because key attributes of the gamer are provided to the public through the

avatar (whereas this is not true of a racecar).138

For example, the voice of the avatar is usually that of the gamer, the emotions that the avatar exudes are those of the gamer, and in totality, the gamer puts more of his or her

personal attributes into an avatar than a racecar driver puts into a car.139

Under current case law, if Archivist Llewellyn’s was to bring a claim

under the common law, she could cite to Motschenbarcher in supporting

the proposition that her online avatar is her virtual identity,140

and likely be provided protection. Additionally, even if her avatar did not look like her human form, she could still be afforded protection under the common law.

Motschenbacher eliminates the need to compare and contrast distinguishing characteristics between the image and the persona, it merely requires that the public associate the image with the identity of the

persona.141

Once Archivist Llewellyn proves that her avatar is her online identity,

the common law also requires her to show that another used her avatar to

their advantage,142

without her consent,143

and this caused her injury.144

137. See Dell, supra note 8 (stating that people on average spend around twenty hours a

week playing MMORPG games: twenty hours a week for fifty two weeks is at least 1,040

hours of gaming a year).

138. See Bennett, supra note 1 (showing how gamers control the interactions of their

online characters, i.e., holding hands, kissing, using real voices to communicate to each

other).

139. See id.; Motschenbacher, 498 F.2d 821 at 827 (observing that a car is an inanimate

object).

140. But see Robinson v. HSBC Bank USA, 732 F. Supp. 2d 976, 984 (N.D. Cal. 2010)

(suggesting that Motschenbacher should only be applied to cases in which the association

between the object and the persona are immediately identifiable).

141. See Motschenbacher, 498 F.2d at 827 (ruling based on public’s association of the

racecar driver with his specially designed racecar).

142. See Newcombe v. Adolf Coors Co., 157 F.3d 686, 692 (9th Cir. 1998) (ruling that

when a likeness is used to advertise a product, this is a commercial advantage, and it meets



Hypothetically, this could play out in a variety of different ways. Similar to regular right of publicity cases, a company could use Archivist Llewellyn’s avatar image to promote or advertise a product; alternatively,

another gamer could create an avatar that looked like Archivist Llewellyn (and possibly use a similar character name) in an attempt to ride off her avatar’s game experience and prestige.

145 In these scenarios, Archivist

Llewellyn could clearly meet the common law requirements insofar as advertising using another’s identity without consent has been ruled to be a commercial advantage.

146 Additionally, injury is easily proven when

compensation is absent.147

D. How Will Right of Publicity Limitations Affect a Gamer’s Claim?

i. Copyright Preemption

If a gamer brings a right of publicity claim over his or her avatar, a

plaintiff will most likely assert that federal copyright law preempts the claim.

148 A right of publicity claim will be prevented from prevailing if the

court finds that the claim is better suited as a copyright claim.149

Specifically, a right of publicity claim needs to fit within the subject matter of copyright,

150 and be limited to the six exclusive rights granted by

copyright law.151

the first prong of the test).

143. See id. (noting that the no consent requirement is straight forward).

144. See id. (ruling that a plaintiff is injured when he or she is not compensated for the

use of his or her likeness when said likeness is used in an advertisement); see White v.

Samsung Electr. Am., Inc., 971 F.2d 1395, 1397 (9th Cir. 1992) (laying out the four

necessary allegations).



147. See Newcomb, 157 F.3d at 692 (ruling that a plaintiff is injured when he or she is

not compensated for the use of his or her likeness when said likeness is used in an

advertisement).

148. See Khan, supra note 18.

149. See id.; KNB Enterprises v. Matthews, 78 Cal. App. 4th 362, 368 (2000) (writing

“California law concerning right to publicity, as any state statute or law, is subject to

preemption under the supremacy clause of the United States Constitution if it ‘actually

conflicts with a valid federal statute’ or ‘stands as an obstacle to the accomplishment and

execution of the full purposes and objectives of Congress.’” (citing Edgar v. MITE Corp.

102 S.Ct. 2629 (1982)); see DIGITAL M EDIA LAW PROJECT, supra note 45.

150. See 17 U.S.C. § 103 (providing that copyright subject matter only exists in

“original works of authorship fixed in any tangible medium of expression, now known or

later developed, from which they can be perceived, reproduced, or otherwise communicated,

either directly or with the aid of a machine or device”).

151. Fleet v. CBS, Inc., 50 Cal. App. 4th 1911, 1919 (1996) (noting the two part

copyright test); accord KNB Enterprises v. Matthews, 78 Cal. App. 4th at 369; Khan, supra



California courts have very rarely determined that a right of publicity case is preempted by copyright. One prominent preemption case that exists in California is Fleet v. CBS.

152 The case arose when several actors were

not paid for their performance in a movie that CBS later distributed to the public.

153 One of the many claims that the actors brought was for

infringement of their right of publicity.154

The court ruled that their state

right of publicity claims were preempted because the totality of the actors’ claims were limited to the copyrighted work.

155 However, Fleet v. CBS is

not the norm. In KNB Enterprises v. Matthews,156

a subsequent case to

Fleet with similar right of publicity claims, the court ruled that there was no copyright preemption, and stated that Fleet v. CBS only “stands for the solid proposition that performers in a copyrighted film may not use their

statutory right of publicity to prevent the exclusive copyright holder from distributing the film.”

157 Lastly, the court in KNB Enterprises stated that

right of publicity claims are “generally not preempted by the Copyright

Act” because the essence of the right of publicity lies within its privacy roots, and although one’s persona may exist in copyrightable works, the claims protected by the right of publicity are extremely different.

158

Therefore, if a gamer such as Archivist Llewellyn were to bring a right of publicity suit, and a defendant argued that federal copyright laws preempted her claim, she could argue that her claim is not preempted

because she is not seeking protection for the copyright in the avatar, but is seeking protection of her persona. She would additionally cite to KNB Enterprises to show that right of publicity claims are generally not

preempted by the copyright act because the purpose and subject matter of both rarely overlap.

159 Lastly, she would need to distinguish her case from

Fleet v. CBS by stating that Fleet is limited to performances in copyrighted

films, and her case does not fit within those bounds. Additionally, she could parallel her case to cases like KNB Enterprises in which the right of

note 18.

152. 50 Cal. App. 4th 1911 (1996).




156. KNB Enterprises v. Matthews,78 Cal. App. 4th 362 (2000).

157. Id. at 372.

158. See id. at 722-23 (stating that “right of publicity claims generally are not preempted

by the Copyright Act” and “Invasion of privacy may sometimes occur by acts of

reproduction, distribution, performance, or display, but inasmuch as the essence of the tort

does not lie in such acts, pre-emption should not apply”, and similarly “the same may be

said of the right of publicity . . . name and likeness do not become a work of authorship

simply because they are embodied in a copyrightable work such as a photograph”).

159. See id.



publicity claims were not preempted despite the fact that the personality’s image existed in a copyrighted work.

ii. First Amendment Limitations

In a suit for the right of publicity over one’s avatar, First Amendment limitations will likely come up in ways that the court has never seen before. Generally, the court does not have to adjudicate First Amendment claims

under the statute because the statute clearly lays out First Amendment exceptions to the right of publicity.

160 However, in the past, the court has

had to weigh First Amendment claims with right of publicity claims when

the claim was brought under the common law because the common law does not expressly lay out First Amendment exceptions.

161 In such

instances, the court has usually dealt with the use of ones image in

connection with a media source, usually a newspaper or news report.162

In cases where the right of publicity has been used in connection with a noncommercial speech from a media source, the Ninth Circuit requires a

showing of actual malice.163

Although the court has not balanced the First Amendment claims of online media sources (such as chat rooms, and discussion boards) and one’s right of publicity, it is unlikely that the Ninth

Circuit would develop a new standard for those forums. Therefore, a court is likely to require that in the online world, First Amendment claims trump right of publicity claims unless the plaintiff can prove actual malice.

164

iii. Statute of Limitations

The statute of limitations will present several interesting problems that will center around when the statute of limitations begins. California courts

have determined that in the online context, the statute of limitations is retriggered when the content is substantially altered.

165 It is unclear how

this will transfer over to an online video game. Thinking in a paralleled

manner, it might be imagined that a court would start the statute of limitations as soon as an infringement occurred, and would retrigger the statute of limitations every time the image was substantially altered.

166

However, the court may go a different route all together and retrigger the statute of limitations every time the infringer intentionally posed as the

160. See DIGITAL M EDIA LAW PROJECT, supra note 45.

161. See id.

162. See id.

163. See Hoffman v. Capital Cities/ABC, Inc., 255 F.3d 1180, 1186-87 (9th Cir. 2001).

164. See Hoffman, 255 F.3d at 1186-87 (showing that actual malice is required).

165. See Yeager v. Bowlin, 693 F.3d 1076, 1082 (9th Cir. 2012) cert. denied, 133 S. Ct.

2026 (U.S. 2013) reh’g denied, 2013 WL 4045219 (U.S. Aug. 12, 2013).

166. See Yeager, 693 F.3d at 1082.



persona. However, it is unlikely that the court will retrigger the statute every time the infringer logs onto the game and leads the public to believe that he or she is the plaintiff. This would inevitably diminish the purpose

of the statute of limitations.167

E. Do MMORPG User Agreements Prevent a Gamer From Retaining the Right of Publicity Over One’s Avatar?

Generally, MMORPG user agreements license away a gamer’s intellectual property rights created in the game,

168 but respect intellectual

property rights created outside of the game.169

A key example would be if

someone created a popular trademark in the game world, he or she could not retain economic control over that trademark because of user agreement limitations.

170 However, if a company had an established trademark (say

the Nike Swoosh), the company could both use the mark inside of the game to market its shoes, and at the same time prevent others from using the mark. In the latter, the license agreement would merely act as a bar against

bringing a claim against the gaming company. The key to retaining economic control over an intellectual property right

in the gaming world, one would need to show that the right existed prior to

using the game.171

The prior existence of a right of publicity claim over an avatar would be easier to show than a copyright or trademark claim for an avatar because the right of publicity springs from the identity of the gamer

(which exists before the user plays the game), whereas copyright and trademark rights spring from the creation of the avatar itself (which only exists after the gamer logs into the game and creates the character).

172

167. See Suzette M. Malveaux, Statutes of Limitations: A Policy Analysis in the Context

of Reparations Litigation, 74 GEO. WASH. L. REV. 68, 74-75 (2005) (stating that “the general

law of limitations has been justified by the federal court system as serving primarily three

major purposes: providing fairness to the defendant, promoting efficiency, and ensuring

institutional legitimacy”).

168. See BLIZZARD ENTERTAINMENT, supra note 18 (stating that all intellectual property

rights in and to the Game, including characters, character names, and character likenesses

are owned or licensed by Blizzard). But cf. Terms of Service, LINDEN LAB,

http://lindenlab.com/tos (last visited July 30, 2014) (allowing players to have more liberal

intellectual property rights in user generated content).

169. Cf. Intellectual Property, LINDEN LAB,

http://wiki.secondlife.com/wiki/Intellectual_Property (last modified Apr. 24, 2012).

170. See BLIZZARD ENTERTAINMENT, supra note 18 (stating that all “intellectual

property rights in and to the Game . . . are owned or licensed by Blizzard”).

171. See LINDEN LAB, supra note 169.

172. See 17 U.S.C. § 102 (2012) (copyright subject matter eligibility); 15 U.S.C. § 1051

(trademark registration requirements); CAL. CIV. CODE § 3344 (2014) (California’s right of

publicity requirements).



Therefore, if a gamer argues that his or her right of publicity springs from his or her person, and existed prior to the signing of the licensing agreement, the agreement will likely bar a right of publicity claim against

the gaming company, but will not prevent gamers from bringing appropriate right of publicity claims against other parties that use the avatar likeness for commercial or other exploitation.

III. SHOULD THE CALIFORNIA RIGHT OF PUBLICITY LAWS EXTEND TO

ALLOW GAMERS TO CONTROL THE COMMERCIAL USE OF THEIR

AVATARS?

A. Under the statute?

Under current statutory law, only avatars that look like their human counterpart can receive protection. Although this leaves out a great

majority of the avatar population, the statute should not expand to give all gamers commercial control of their avatars. Expanding the statute beyond what it currently covers would diminish the legal effect of the statute.

173

The statute was established to create a separate, coherent, and clear way for the public to establish the right of publicity.

174 If courts expand the

statute beyond the bounds of its explicit words, the court will more or less

bring the statute back into the realm of the common law. This will likely have the effect of taking away the two different causes of action, and give plaintiffs one route to receive protection where they would have previously

had two.175

B. Under the Common Law?

Courts should grant gamers the right of publicity over their avatars under

the California common law because compared to other cases that have received protection, it seems that protecting gaming avatars is well within the bounds of case precedent; specifically, it is within the bounds of the

Motschenbacher decision which mandates that any symbol which the public readily associates with a persona’s identity is protectable.

176

Because online avatars are gamer’s online identities in more way than one,

Motschenbacher appropriately paves the way for protection. Additionally, courts would not need to expand upon any of the key elements of the

173. See generally DIGITAL M EDIA LAW PROJECT, supra note 45 (noting that the statute

was created in an effort to complement and enhance the common law right of publicity).

174. See id.

175. CAL. CIV. CODE § 3344(g) (allowing plaintiffs to bring both a statutory and

common law claim).

176. See generally Motschenbacher, 498 F.2d 821.



common law right of publicity, as it would with the statute.177

C. Policy Concerns

As it stands now, gamers have not currently found a viable way to

economically control the use of their avatars.178

Gaming companies have explicitly tried to prevent this ownership through the use of mandatory licensing embedded in User Agreements and Terms of Service.

179 It is not

clear why gaming companies refuse to allow gamers to retain rights over their avatars; however, a few suggestions might be that by not granting users rights over their avatars, the gaming companies avoid litigation of

their users infringing on each others avatars.180

With less litigation, the game has less problems, less unhappy users, and the company continues to profit.

181 Another theory could simply be that the gaming companies

believe that the avatars are built by the use of company technology and believe that others should not profit off of their creation (even if the gamer personally designed the character).

182 In the end, the bottom line is that

gaming companies have tried their best through the use of licensing agreements to keep avatar infringement and ownership suits out of the courts.

183 As a result, courts have not had very many cases involving

ownership of video game avatars. Because the courts have not had many cases that deal with these

circumstances, the court should be wary about inviting this kind of

litigation into the courtroom. If gamers are found to have the right of publicity over the gaming avatars, there may be a large influx of gamer infringement cases, and the court must be ready to draw the line on what

infringement means in this context, and further draw the line on how far the right extends. In today’s ever increasing use of Avatars, not only in the game space, but also in the social media space, this cause of action may

177. See Motschenbacher, 498 F.2d 821; CAL. CIV. CODE § 3344.

178. See Your Avatar Forum, SECOND LIFE, http://community.secondlife.com/t5/Your-

Avatar/Selling-Avatars-in-world-RL/td-p/1240225 (last visited Nov. 7, 2014) (users

explaining why they believe gamers are not granted ownership of their avatar accounts).

179. See, e.g., Terms of Service, LINDEN LAB, http://lindenlab.com/tos (last visited Nov.

7, 2014); BLIZZARD ENTERTAINMENT, supra note 18.

180. See Your Avatar Forum, SECOND LIFE, http://community.secondlife.com/t5/Your-

Avatar/Selling-Avatars-in-world-RL/td-p/1240225 (last visited Nov. 7, 2014) (users

explaining why they believe gamers are not granted ownership of their avatar accounts).

181. See Mike Kent, Massive Multi-player Online Games and the Developing Political

Economy of Cyberspace, FAST CAPITALISM (2008)

http://www.uta.edu/huma/agger/fastcapitalism/4_1/kent.html.

182. See id.

183. See, e.g., Terms of Service, LINDEN LAB, http://lindenlab.com/tos (last visited Oct.

11, 2013).



affect more than just the gaming world. If a court allows the right of publicity cause of action as described above, a right of publicity claim may theoretically also apply to users who bring a suit for their social media

accounts. Additionally, the larger policy behind California’s liberal use of the right

of publicity is to promote its economy, which is dependent upon the

entertainment industry.184

In this new entertainment industry however, there is a worry that granting gamers the right of publicity over their avatars may actually hinder rather than spur the gaming industry.

On the other hand, there are policy implications for not granting gamers the right of publicity over their avatars. First and foremost, granting gamers the right of publicity over their avatars comports with the larger

policy rational behind intellectual property; namely to reward those who expend time and effort in creating a profitable product, and hinder the efforts of those who intend to profit off of another’s hard work without

paying for the rights to use it.185

Failing to address the policy behind intellectual property rights could stifle a potentially profitable online gaming marketplace.

Balancing the benefits with the risks; specifically not granting the right of publicity and risk losing a potentially profitable new marketplace, with the alternative of granting the right of publicity and risking new and

unclear litigation, a court should grant the right of publicity. As stated above, granting the right of publicity comports with intellectual property policy, and would create a whole new marketplace for thousands of users.

Not granting the right would simply ask courts to do what they have always done, interpret old doctrines in new circumstances. Although the litigation may cause some havoc for gaming companies, it is doubtful that this will

decrease their user numbers. In fact, the ability to profit off of one’s avatar may entice more users to play these types of games.

CONCLUSIONS

When looking to whether a gamer can be given the right of publicity in California over his avatar, it is likely that one will not receive protection

under the statute, unless the avatar is virtually identical to the gamer. In contrast, because the common law focuses on the term “identity,” which has shown to be very liberal, a gamer can easily be afforded the common

184. See Madow, supra note 28.

185. See generally Andrew Beckerman-Rodau, The Right of Publicity: A Doctrine Gone

Wild?, IPWATCHDOG (Mar. 11, 2010, 7:15 PM),

http://www.ipwatchdog.com/2010/03/11/the-right-of-publicity-a-doctrine-gone-

wild/id=9647/.



law right of publicity over his or her avatar. However, when bringing a suit, a gamer must be aware of the three limitations on the right of publicity. Copyright preemption only occurs where a copyright claim is

brought under the guise of a right of publicity claim. As the courts have mentioned, this is a very rare occurrence, and would not likely preclude a claim over an avatar. Additionally, First Amendment and statute of

limitations issues are an unknown danger in an avatar right of publicity case. Lastly, potential litigants may assert that right of publicity claims are barred by gaming licensing agreements, and this may be true if the gamer

was to assert a claim against the gaming company, but this does not prevent the gamer from bringing a claim against other entities that may wish to misappropriate the image of an avatar for commercial benefit.

In sum, a gamer can and should be able to bring a right of publicity claim against an infringer under the common law, and will not likely be stifled by copyright preemption, First Amendment preemption, statute of

limitations, or licensing agreement issues.

JIANG_ FINAL (1) (DO NOT DELETE) 1/29/2015 1:25 PM

53

BETWEEN SCYLLA AND CHARYBDIS: PATENTABILITY AND MORALITY RELATED

TO HUMAN EMBRYONIC STEM CELLS

LI JIANG*

ABSTRACT

The patentability of inventions related to Human Embryonic Stem Cells

(HESC) is challenged by the morality provision of various nations’

regulations.1 This Article discusses whether it is a matter of expediency to

prohibit granting patents to HESC-related inventions based on morality-

based provisions, and it concludes that this is not appropriate. To claim

this, the Article explores typical cases and regulations in the European

Union, United States, and China. However, different areas adopt various

approaches in dealing with this extremely complex issue. This comparison

sheds light on the inappropriate combination of morality and patentability

in the EU and China. The comparison of these areas also demonstrates

infusing patent law with morality is both inefficient and ineffective as

morality is not a criterion that patent authorities should consider.

* Li Jiang holds a Ph.D. from Bangor University Law School, a LL. M from Shandong

University, and a B.S. in Biotechnology from University of Science and Technology

Beijing, The author would like to thank Dr Shi Wei for his invaluable input, as well as the

staff of the Intellectual Property Brief for their tremendous work and care, without which

this publication would not be possible.

1. See Article 53(a) of European Patent Convention (stating that “European patents

shall not be granted in respect of inventions the commercial exploitation of which would be

contrary to ‘ordre public’ or morality; such exploitation shall not be deemed to be so

contrary merely because it is prohibited by law or regulation in some or all of the

Contracting States”); see also Article 5 of Patent Law of the People’s Republic of China

(stating that patent rights shall not be granted for invention-creations that violate the law or

social ethics or harm public interests); Article 32 of Korean Patent Law (stating that

inventions liable to contravene the public order or morality or cause injury to the public

health shall not be patentable).

JIA NG_ FIN AL (1) (DO NOT DELETE) 1/27/2015 8:27 PM


Additionally, in terms of funds invested into research, the reward of a patent seems to have been overvalued. This Article argues that it is better to establish the specific authority to monitor HESC research instead of

infusing morality with patentability. A patent system without a moral clause would be beneficial to move HESC research forward.

TABLE OF CONTENTS

Abstract ............................................................................................... 53 Introduction ......................................................................................... 55 I. The European Union: Inconsistent Interpretations of Moral

Provisions in Patent Law............................................................. 60 A. How to assess the morality? .................................................... 61

1. Howard Florey/Relaxin: the “abhorrence” standard with rebuttable presumption approach ..................................... 61

2. Harvard/Onco-mouse: The “unacceptability” standard........ 62 3. Plant Genetic Systems v. Greenpeace: The conflict

between “abhorrence” standard and “unacceptability”

standard ......................................................................... 63 B. Whether HESC-related inventions should be included in

“human embryo?” What is the scope of “industrial or

commercial use?” ................................................................ 65 1. University of Edinburgh: A broad approach by the

Opposition Division on the interpretation of “human

embryos” ....................................................................... 66 2. Use of embryos/WARF (G2/06): The landmark ruling

by the European Patent Office (EPO) patenting HESC ...... 68 3. Oliver Brüstle v. Greenpeace: The decision by

European Court of Justice on patenting HESC.................. 72 II China: inconsistent moral standards between patent law and

practical application.................................................................... 74 A. Whether Article 5 of the patent law excludes inventions

related to HESC? ................................................................. 75 1. Advanced Cell Technology related to the differentiation

of HESC and its culture method: lacking the explanation of “embryo” and “industrial or commercial

purpose” ........................................................................ 75 2. Shanghai Genon Biological Product: HESCs with the

possibility of developing into human being are within

the scope of “human embryo” ......................................... 77 3. Case the Regents of the University of California: It is

improper to trace the origin of the world’s first HESC


2015 BETWEEN SCYLLA AND CHARYBDIS 55

lines; therefore, established stem cell lines are allowed ..... 79 B. Low moral status of human embryos in practical application..... 81 C. High moral status of the human embryo in patent law............... 81

III. The United States: Inconsistent Policies on Federal Funding Control of HESC Research.......................................................... 83 A. Wisconsin Alumni Research Foundation (WARF): the

opening of “human embryo farms” ....................................... 84 B. Political interventions—the federal funding control of HESC

research under moral concerns.............................................. 86 1. The National Institutes of Health Revitalization Act:

Allow Federal Funding of Research Related to Embryos at the Early Stage ............................................. 87

2. Dickey-Wicker Amendment: No Federal Funding on HESC Research Involving Destruction of an Embryo ....... 88

3. NIH Guideline 2000 ......................................................... 89 4. The Bush Compromise accepted the narrow explanation

of Dickey-Wicker Amendment but exercised the executive power instead of legal power to allocate

funding .......................................................................... 90 5. The Report from the President Council on Bioethics

clarified that the enforcement law was the Dickey

Amendment ................................................................... 92 6. Executive order by President Obama: Reversing The

Bush Compromise .......................................................... 93 7. The result of the battle over the Dickey-Wicker

Amendment: The Obama Administration funding policy of HESC research could move forward .................. 94

Conclusion........................................................................................... 96

INTRODUCTION

Inventions related to Human Embryonic Stem Cells (HESC) as a patentable subject matter are in considerable flux.

2 In most circumstances,

2. See Amanda Odell West, The Absence of Informed Consent to Commercial

Exploitation for Inventions Developed from Human Biological Material: A Bar to

Patentability?, 3 INTELL. PROP . Q. 373, 390 (2009) (arguing that inventions using human

biological matter should submit “evidence of ethical approval” with its application to the

EPO); Amanda Warren-Jones, A Mouse in Sheep’s Clothing: The Challenge to the Patent

Morality Criterion Posed by “Dolly”, 20 EUR. INTELL. PROP . REV. 445, 450 (1998)

(discussing the obstacles presented to HESC-related inventions under the current European

patent system); see also Graeme Laurie, Patenting Stem Cells of Human Origin, 26 EUR.

INTELL. PROP . REV. 59, 59 (2004) (expressing concern over the “bioethical aspects of the



morality and law may not coincide, yet moral obstacles are significant for inventions related to HESC research. Patent examiners inevitably encounter moral issues when examining applications related to HESC. The

connection between law and morality in HESC is natural and “hardly new.”

3 The creation, operation, and interpretation of the patent system is

inherently linked to moral standards.4 Some consider the marriage of law

and morality in this area to be in “a hopelessly confused state.”5

Different from the patentability of other inventions, morality plays an important role in patenting HESC inventions. Therefore, we must ask

whether it is reasonable to reject HESC inventions on moral grounds. Every jurisdiction develops its own answer to this question due to the diversity of moral standards and the territorial patent system.

6 On the one

hand, the patent prohibition of HESC related inventions based on morality issues is unreasonable since the supposedly immoral research has already been carried out.

7 This immoral research should neither be funded nor

initiated instead of being ineligible for patenting because, even if prohibited from patenting, the immoral research has already been carried out. Moral considerations are deeply rooted in the EU—and this is even true in the

United Kingdom, which has liberal policies towards HESC research.8 In

the EU, in order to harmonize HESC regulation, regulators have erected a

law”).

3. See Peter Drahos, Biotechnology Patents, Markets and Morality, 21 EUR. INTELL.

PROP . REV. 441, 441 (1999) (pointing out “[s]ome areas of law invite adjudicators to draw

on morality in the process of legal decision-making. Somewhat surprisingly, given its

characterization as a tool of economic regulation, patent law does just this . . . The express

connection between patent law and morality is hardly new”).

4. Id.

5. See Laurie, supra note 2 at 65 (stating that the introduction of HESC technology

has demonstrated that the system is flawed).

6. For example, the US patent system does not preclude patenting HESC inventions.

See U.S. Patent, No. 5,843,780 (filed Jan. 18, 1996) (issued Dec. 1, 1998), U.S. Patent No.

6,200,806 (filed Jun. 26, 1998) (issued Mar. 13, 2001), and U.S. Patent No. 7,029,913 (filed

Oct. 18, 2001) (issued Apr. 18, 2006). The EU patent system precludes patenting HESC

inventions; see generally Use of embryos/WARF, G 2/06 [2009] 5 OJ EPO 306.

7. See generally Use of embryos/WARF, G 2/06 [2009] 5 OJ EPO 306 (explaining

that practicing the invention conflicts with concepts of morality, not the act of patenting the

invention).

8. See Aurora Plomer, Beyond the HFE Act 1990: The Regulation of Stem Cell

Research in the UK, 10 MED. L. REV. 132, 132-44 (2002) (stating that “[t]he UK currently

stands alone in Europe in permitting the creation of human embryos specifically for research

purposes, including the use of cloning techniques”); see also Dame Mary Warnock DBE,

The Warnock Report, HUMAN FERTILIZATION AND EMBRYOLOGY AUTHORITIES (June 26,

1984), available at http://www.hfea.gov.uk/2068.html (discussing two extreme views: one is

from members of the Catholic Church who believe human embryos have human status, and

another is from utilitarians who insist human embryos have no moral status).



moral barrier to patenting HESC-related inventions.9 The moral barrier in

patent law is ineffective and inefficient. First, although the European Patent Convention made a great effort to harmonize the patentability and morality

of HESC through the EU Biotechnology Directive,10

the morality standards for patentability are inconsistently interpreted, specifically by including the definitions for morality, human embryo, industrial use, and commercial

use.11

In addition, the European Court of Justice (ECJ) and the European Patent Office’s (EPO) dual system of assessing morality standards has resulted in legal uncertainty.

12 Also, member states have different

interpretations for adapting the moral exclusion of the European Patent Convention.

13 This legal inconsistency has added procedural complexity

and thus hampered technological advancement. Second, many HESC

related research projects are funded by the EU; however, the results of these research projects cannot be patented.

14 Taken to its logical end,

‘immoral’ research should not receive EU funding in the first place if it

cannot later be patented for these reasons. If the research could be funded by the EU, this research should be morally examined before being concluded because funding research projects that are precluded from patent

protection is a waste of money and time. Therefore, we should reconsider how much patent law can accommodate morality issues.

9. Article 53(a) of European Patent Convention (“European patents shall not be

granted in respect of inventions the commercial exploitation of which would be contrary to

‘ordre public’ or morality.”).

10. See Article 53(a) of European Patent Convention; Directive 98/44/EC of the

European Parliament and of the Council: Of July 6, 1998 of the Legal Protection of

Biotechnological Inventions (arguing for greater legal protections for biotechnological

inventions).

11. See Laurie, supra note 2 at 59-66 (stating that “despite the fact that disquiet and

discussions of an ethic nature held up the adoption of the biotechnology Directive for so

long, it is far from clear that we are any further forward in developing uniform, logical,

principled, and defensible ethical guidelines within European patent law”).

12. See generally Use of embryos/WARF, G 2/06 [2009] 5 OJ EPO.306.

13. See generally ÅSA HELLSTADIUS, A COMPARATIVE ANALYSIS OF THE NATIONAL

IMPLEMENTATION OF THE DIRECTIVE’S M ORALITY CLAUSE, IN EMBRYONIC STEM CELL

PATENTS: EUROPEAN PATENT LAW AND ETHICS 96-148 (Aurora Plomer & Paul Torremans

eds., 1st ed. Oxford University Press) (2009).

14. “Since 2007, the EU had funded twenty -seven collaborative health research

projects involving the use of human embryonic stem cells with an EU contribution of about

€157 million. Human embryonic stem cell research projects represent approximately one

third of health projects on all forms of stem cells. In addition, the European Research

Council had funded 10 projects for an EU financial contribution of about €19 million and

there have been twenty-four Marie Skłodowska-Curie actions involving human embryonic

stem cell research worth €23 million.” European Citizens’ Initiative: European

Commission replies to ‘One of Us’ – Q&A, European Commission (May 28, 2014),

europa.eu/rapid/press-release_MEMO-14-385_en.doc.



On the other hand, the patent prohibition of HESC-related inventions based on morality issues does not seem to be an effective method of controlling immoral research. For example, although China’s patent law

contains a moral exclusion clause, doctors remain uncertain as to the types of research they are permitted to conduct due to ambivalence towards moral and medicals risks.

15 This article takes the view that the adoption of

the moral exclusion clause in patent law by Chinese regulators merely reflects the perception that the moral exclusion represents an international custom. However, interpretations of the moral exclusion clause in patent

law are severely lacking. The considerable gap left by the moral provision makes it confusing and controversial. There are reports of many promising stem cell therapies, such as stem cell therapy for cardiac repair, Graft-

Versus-Host disease, limb ischemla, liver disease, and neural repair being conducted in Chinese hospitals.

16 However, these therapies are still not

tested by clinic trial and are unsafe for patients. In response to pressure

from stem cell market demands, some scientists from areas with restrictive policies, such as the EU, will move to areas that have permissive policies or alternatively, some might conduct research in more permissive regions ,

such as China. Thus, HESC research involving cloning and other sensitive procedures will become more difficult to monitor, resulting in biomedical adventurism, which may disrupt the legal and social infrastructure of the

world.17

This article then discusses whether HESC research can be monitored in

circumstances when morality issues are not the barriers to patenting. After

exploring the U.S.’s HESC-related regulations, the author believes that it is technically manageable and pragmatically meaningful to supervise HESC research without moral exclusion in patent law. For example, there is no

moral exclusion in US patent regulation.18

The U.S. government takes a rather practical approach of patenting in order to remain competitive in the HESC market.

19 HESC-related inventions are not prohibited from

15. Ole Döring, China’s Struggle for Practical Regulations in Medical Ethics, 4

NATURE REV. GENETICS 233-39 (2003).

16. See Lianming Liao and Robert Chunhua Zhao, An Overview of Stem-Cell Based

Clinical Trials in China, 17 STEM CELLS AND DEV. 613, 613-618 (2008) (discussing China’s

progressive “therapeutic application” of stem cell technologies).

17. Ole Doring, Chinese Researchers Promote Biomedical Regulations: What are the

Motives of the Biopolitical Dawn in China and Where are they Heading?, 14 KENNEDY

INST. ETHICS J. 39, 42 (2004) (commenting that “the positivistic principle ‘if an action is not

illegal, by definition, it is legal’ does not apply in China. Taking advantage of the fact that

policymaking lags behind scientific and economic development, in terms of the entire legal

and social infrastructure, amounts to biomedical adventurism”).

18. 35 U.S.C. §§ 101-103.

19. See generally Comment, Gabriel S. Gross, Federally Funding Human Embryonic



patenting for moral reasons.20

Federal funding is only used for morally acceptable HESC research, which provides an important tool for monitoring HESC research.

21 Although this hands-off approach is market

orientated,22

opponents have strongly criticized this approach for its lack of ethical and social considerations.

23 This article argues that funding control

is a better way to monitor HESC research. From an economic perspective,

deciding to prohibit immoral research at the initial stage saves both time and money.

The above comparison of the U.S., EU, and China demonstrates that

integrating morality into patent law is both inefficient and ineffective. Morality is not a criterion that patent authorities should be tasked with assessing. Even if the results of HESC research cannot be patented, it

could still be performed and funded. However, immoral research should be prohibited from the outset instead of at the patent application stage. Moreover, from an economic point of view, restricting immoral research

from the beginning could save a tremendous amount of time and money. Additionally, in terms of funds invested into research, the reward of a patent seems to have been overvalued. A patent system without a moral

clause would be more beneficial for advancing HESC research. The EU and Chinese Patent Offices should not be responsible for examining the morality of HESC inventions; instead, these decisions should be left to

separate special organization, such as the Ethics Committee. Therefore, this Article argues that it would be more economically viable to implement specific legal regulations applicable to HESC research than to include a

general moral exclusion in the patent law. This Article presents moral concerns surrounding HESC patenting in

three parts. Part I explores the incongruous interpretations of moral

standards and “industrial or commercial use” in EU case law. The inconsistent interpretation of moral provisions has resulted in controversy and confusion in the patentability of HESC-related inventions, which

would certainly become a barrier to technological progress. Part II

Stem Cell Research: An Administrative Analysis, 2000 WIS. L. REV. 855, 858, 883 (2000)

(using the “Chevron Two-Step” to analyze the Department of Health and Human Services’

interpretation of federal law governing stem cell research funding).

20. §§ 101-103.

21. See Gross, supra note 19.

22. National Bioethics Advisory Commission, Ethical Issues in Human Stem Cell

Research, Volume 1 Report and Recommendations of the National Advisory Commission

(Sept. 13, 1999), available at https://bioethicsarchive.georgetown.edu/nbac/stemcell.pdf.

23. See Michael J. Malinowsk & Nick Littlefield, Transformation of a Research

Platform Into Commercial Products: The Impact of US Federal Policy on Biotechnology,

THE COMMERCIALIZATION OF GENETIC RESEARCH: ETHICAL, LEGAL, AND POLICY ISSUES 80,

80 (Timothy A. Caulfield & Bryn Williams-Jones eds., 1st ed. 1999).



examines the effect of moral provisions in the Chinese patent system. The vast interpretive scope left by China’s moral provision makes this provision confusing and controversial. The uncertain interpretation regarding

morality and patentability of HESC-related invention results in poor supervision of HESC research. Part III discusses the developing policies of HESC research in the U.S. Instead of moral exclusion in patentability, the

U.S. regulates and controls federal funding. The federal funding control of HESC research may provide an alternative approach to patent control. Moreover, the inconsistent policies adopted by different administrations

leave the patentability of HESC-related inventions vulnerable to market demands. Through a detailed, section-by-section comparison of each approach adopted in these three areas, this Article demonstrates that moral

exclusion is unnecessary in patent law.

I. THE EUROPEAN UNION: INCONSISTENT INTERPRETATIONS OF MORAL

PROVISIONS IN PATENT LAW

The EU regulation of HESC research related to moral concerns infuses patent examination with a moral assessment.

24 Despite many scholars’ and

legal practitioners’ belief that patent law is not the proper vehicle for enforcing morality and that patent examiners are not moral experts,

25 the

EU patent-granting agencies are responsible for interpreting moral

provisions.26

European Biotechnology Directive 98/44/EC explicitly states that inventions that involve the “use[] of human embryos for industrial or commercial purpose” cannot be patented.

27 However, the question

24. See Article 53(a) of European Patent Convention (stating “Europ ean patents shall

not be granted in respect of (a) inventions the commercial exploitation of which would be

contrary to ‘ordre public’ or morality”).

25. See Leland Stanford/MODIFIED ANIMALS, 2002 EPOR 2, at point 51 (stating the

Opposition Division of European Patent Office has noticed this difference and commented

that “it cannot be the role of the EPO to act as a moral censor and invoke the provisions of

Article 53(a) EPC to refuse on ethical grounds to grant a patent on legal research and

directed to an invention indisputably associated with medical benefits”); see William

Cornish, David Llewelyn, &Tanya Aplin, INTELLECTUAL PROPERTY: PATENTS, COPYRIGHT,

TRADEMARKS AND ALLIED RIGHTS 881 (7th ed. 2010) (pointing out that morality and patent

law should be divided because patent system is not an appropriated arena for moral

discussion); see also Julia Black, Regulation as Facilitation: Negotiating the Genetic

Revolution, 61 M OD. L. REV. 621, 649 (1998) (stating that the objective, technical and legal

nature of patent law is contrary to the morality that is inherently “malleable, subjective and

emotive”).

26. See Relaxin/Howard Florey Institute, T 0272/95 [2002] EPOR; see also Plant

Genetic Systems/Glutamine Synthetase Inhibitors, T356/93 [1995] EPOR 361;

HARVARD/Onco-mouse, T19/90, [1990].

27. Directive 98/44/EC, of the European Parliament and of the Council of 6 July 1998

on the Legal Protection of Biotechnological Inventions, art. 42, 1998 O.J. (L 213).



remains: how should the law assess morality along with the scope of the industrial or commercial use referenced in the Directive?

A. How to assess the morality?

At the EU level, the European Patent Convention contains a morality clause that excludes patenting immoral inventions,

28 whereas the morality

standard developed in case law has established inconsistent standards (i.e.,

“abhorrence” versus “unacceptability”).

1. Howard Florey/Relaxin: the “abhorrence” standard with rebuttable

presumption approach

The “abhorrence” standard is drawn from Howard Florey/Relaxin,29

which considers a patent application related to the DNA sequence coding for relaxin—the unexpected second form of the human hormone that helps

relax the uterus during childbirth and reduce the need for Cesarean sections.

30 The patent was initially granted in 1991, but the Green Party

opposed it in the European Parliament. One of the Green Party’s primary

objections was that the issuance of the patent was contrary to morality.31

The Opposition Division of the Patent Office first cited the “abhorrence” standard established in the Plant Genetic Systems case.

32 The Opposition

Division then established a “rebuttable presumption”33

approach to the “abhorrence” standard.

34 Based on this standard, the Relaxin patent did not

28. Article 53(a) of European Patent Convention (stating that “[e]uropean patents shall

not be granted in respect of . . . inventions the commercial exploitation of which would be

contrary to ‘ordre public’ or morality”).

29. Relaxin, 1995 OJ EPO 388 (Opposition Div. 1994) (holding that the the test for the

abhorrence standard is whether it is probable that the general public would find the

invention so abhorrent that granting patent rights would be inconceivable.).

30. See F. GARY CUNNINGHAM ET AL., WILLIAMS OBSTENTRICS 41 (Dwight Rouse et al,

eds., 22d ed. 2005) (explaining the role of relaxin to “promote uterine vascular vasodilation

and myometrial smooth muscle relaxation); see generally R. Stephen Crespi, The Human

Embryo and Patent Law—A Major Challenge Ahead?, 28 EUR. INTELL. PROP . REV. 569

(2006) (discussing the effect of developing biotechnologies on the patent laws in

industrialized countries).

31. Case T-0272/95, Relaxin/Howard Florey Institute, [2002] EPOR (summarizing that

the Green Party opposed the European patent 112.149 that was granted to the Howard

Florey Institute of Experimental Physiology and Medicine for human H-2 relaxin, a

hormone involved in reproduction, and a DNA sequence coding for the hormone).

32. Case T-356/93, Plant cells/Plant Genetic Systems, [1995] EPOR (“It would

undoubtedly be against ‘ordre public’ or morality to propose a misuse or destructive use of

these [genetic engineering] techniques.”).

33. See Yan Min, Morality —An Equivocal Area in the Patent System, 34 EUR. IN TELL.

PROP . REV. 261, 263 (2012).

34. See Relaxin, 1995 OJ EPO 388 (holding that “[a] fair test to apply is to consider



go against “widely-accepted moral standards of behavior”, therefore, the Green Party’s morality objection is invalid.

35

This decision applies the general principle of narrowly interpreting the

exclusion of patentability.36

When the opponent requested to conduct a public survey of “what would be patentable,” the Opposition Division refused to issue it and indicated that the EPO is not the proper organization

to determine fundamental moral questions.37

Therefore, to some extent, the “abhorrence” standard is much lower than the “unacceptability” standard discussed below.

2. Harvard/Onco-mouse: The “unacceptability” standard

The “unacceptability” standard is mainly implied in the “Onco-mouse” case, which involves the patentability of genetically modified mice that are

useful in cancer research.38

In 1992, the Examining Division granted the Onco-mouse patent,

39 which was then challenged on the ground that the

invention violated the morality requirement of Article 53(a) of the

European Patent Convention (EPC).40

The Technical Appeal Board (TBA) cited the “unacceptability” definition in Plant Genetic Systems v. Greenpeace as the possible reason for unpatentability.

41 The TBA

therefore developed the “unacceptability” standard, which balances the “acceptable suffering” and “unacceptable suffering.”

42 The analysis from

this balancing test in this case weighed in favor of patentability due to the

invention’s massive benefits.

whether it is probable that the public in general would regard the invention as so abhorrent

that the grant of patent rights would be inconceivable. If it is clear that this is the case,

objection should be raised under Article 53(a); otherwise not”).

35. See Yan Min, supra note 33 (internal quotation marks omitted).

36. For a rationale of the Directive, see Crespi, supra note 30, at 571.

37. See R. v. Leland Stanford/MODIFIED ANIMALS, [2002] EPOR 2 (Opposition Div.

2001). at point 51 (stating the Opposition Division of European Patent Office has

commented that “it cannot be the role of the EPO to act as a moral censor and invoke the

provisions of Article 53(a) EPC to refuse on ethical grounds to grant a patent on legal

research and directed to an invention indisputably associated with medical benefits”).

38. Case T-19/90, Onco-mouse/HARVARD (EPO 1990).

39. Eur. Patent No. 0 169 672 A1 (filed June 24, 1985) (detailing the method for

producing transgenic animals).

40. See Article 53(a).

41. See Case T-356/93, Plant cells/Plant Genetic Systems, [1995] EPOR 16 (stating

that “the concept of morality is related to the belief that some behavior is right and

acceptable, whereas other behavior is wrong, and this belief is founded on the totality of the

accepted norms that are deeply rooted in a particular culture”).

42. Case T-315/03, Transgenic animal/Harvard, [2005] EPOR 2, 8, 17 (explaining

how the TBA weighs the suffering of animals and possible risks to the environment and the

invention’s usefulness to mankind).



The EPO has therefore developed two moral standards: a balancing test to determine whether the “unacceptability” standard applies as well as a rebuttable presumption that the “abhorrence” standard applies. The

“abhorrence” standard provides minimum morality-based protections.43

The “unacceptability” standard is frequently implicated in patent applications related to life.

44 The EPO can adopt different moral standards

during the initial examination and the appeal stages of a human biotechnology patent application.

45 The two above-mentioned

methodologies are fundamentally different: “the ‘balancing exercise’

incorporate[s] diverse issues in direct competition to each other;” conversely, “the ‘rebuttable presumption’ [examines] a raft of issues to determine if any one of them [constitutes] an ‘abhorrence.’”

46 The

distinction between these two standards is significant because “under the ‘balancing exercise’ all of the issues considered form part of the reason why the invention is patentable or not: whereas the ‘rebuttable

presumption’ approach identifies a single issue upon which the decision rests.”

47 In the foreseeable future, the equivocal interpretations of the

moral provision in patent law will be a barrier to the great medical

potential.48

3. Plant Genetic Systems v. Greenpeace: The conflict between

“abhorrence” standard and “unacceptability” standard

Both the “abhorrence” and “unacceptability” standards are discussed and

43. See Margo A. Bagley, A Global Controversy: The Role of Morality in

Biotechnology Patent Law, 57 U. VA. L. SCH. PUB. L. & LEGAL THEORY WORKING PAPER

SERIES 332, 333, 335 (2007) (commenting that this “unacceptability” standard is certainly a

lower hurdle for an invention to overcome than the balancing test); see also Min, supra note

33 at 264.

44. See Min, supra note 33 at 264 (explaining how this standard most likely applies to

animal and plant biotechnology).

45. Amanda Warren-Jones, Finding a “Common Morality Codex” For Biotech—A

Question of Substance, 39 INT’L REV. INTELL. PROP . & COMPETITION L. 638, 652-53 (2008).

46. Id. at 653.

47. Id. (observing that the difference between the two standards can be the difference

between the patentee being able to resolve the problem by amending the claim or having to

consign the invention to ignominy).

48. See Min, supra note 33 at 265 (commenting that “[t]his is because, on one hand,

the so-called morality exception is favoured by the Greens, animal welfare activists and

environmentalists as a powerful weapon against biotechnology inventions, and consequently

they prefer a stricter moral standard which is in stark contrast to the proponents of genetic

engineering who prefer a loose standard; and on the other hand, in contemporary society

there are few, if any, inventions so obviously immoral as to raise little difficulty in denying

a grant of patent on the ground of morality”).



applied in Plant Genetic Systems. This case involved the application for a patent in glutamine synthetase inhibitors that help plants and seeds resist weeds and fungal diseases.

49 The granted patent was challenged by

Greenpeace, which argued that it created serious environmental risks.50

The Opposition Division initially refused to exercise the balancing test

established in the Onco-mouse case by claiming that the “unacceptability”

standard is not the only way to assess patentability.51

Because the moral provision acts as an emergency safeguard, the Opposition Division further stated that patents should not be granted for inventions that are universally

regarded as outrageous.52

The reason that the Opposition Division adopted the “abhorrence” standard instead of the “unacceptability” balancing test was that “balancing does not even come into play unless concrete societal

disadvantages of the invention are presented.”53

Therefore, the Opposition Division held that only “in those very limited cases in which there is an overwhelming consensus that the exploitation of an invention would be

immoral may an invention be excluded from patentability under Article 53(a).”

54

By contrast, the TBA seems to apply the “unacceptability” rather than

the “abhorrence” standard. Based on the interpretation of morality by the TBA,

55 an assessment of morality cannot possibly be achieved by

balancing benefits and disadvantages because there is no sufficient

evidence of true benefits or disadvantages.56

However, the possibility

49. Case T-356/93, Plant cells/Plant Genetic Systems, [1995] EPOR 24.

50. Id. at 8 (explaining that “[t]he exploitation of the present invention resulted in

serious, irreversible environmental risks: the treated plants themselves could become weeds;

Herbicide-resistance could spread to other plants; [and] the ecosystems could be damaged”).

51. Id. at 12 (disclosing that the Opposition Division found that the “invention did not

belong to the category of inventions which the public in general would have regarded as

being so abhorrent or so dangerous that the grant of patent rights should have been

inconceivable. The EPO should apply the exclusions from patentability under Article 53(a)

EPC only in such extreme cases”).

52. See id.; see also Amanda Warren-Jones, Vital Parameters for Patent Morality—A

Question of Form, 2 J. INTELL. PROP . L. & PRAC. 832, 837 n.31 (2007).

53. See Bagley, supra note 43 at 333.

54. See Warren-Jones, supra note 45 at 642.

55. See Case T-356/93, Plant cells/Plant Genetic Systems, [1995] EPOR (TBA) at 16

(explaining that due to the nature of the EPC, the TBA historically explained “the concept of

morality is related to the belief that some behavior is right and acceptable whereas other

behaviour is wrong, this belief being founded on the totality of the accepted norms that are

deeply rooted in a particular culture”).

56. Id. at 18 (“In the present case, since no sufficient evidence of actual disadvantages

has been adduced, the assessment of patentability with regard to Article 53(a) EPC may not

be based on the so-called ‘balancing exercise’ of benefits and disadvantages, as submitted

by the Appellants. The Board observes that such a ‘balancing exercise’ is not the only way



remains that a morality assessment could involve assessing potential benefits and disadvantages. Different from the Onco-mouse case where the environmental risk is an appropriate consideration for unacceptable patent,

in Plant Genetic Systems, the Board found “the possibility of risks traditionally has no bearing on whether a patent is granted or not.”

57

The above analysis shows that the EPO conducts moral assessments

inconsistently, leading to a cycle of misapplication. Even in the EPO’s decisions, two competing standards, “abhorrence” and “unacceptability,” may be applied. Moreover, this dual system provides no clear guidance on

which approach is appropriate in any particular case.58

This confusion is well demonstrated in Plant Genetic Systems because it would apply the “rebuttable presumption” approach to the “abhorrence” standard. The only

remaining issue would be “how this standard and methodology are to operate in practice [which would] require[] an analysis of the evidence [that] forms the basis of the decision.”

59 Amanda Warren-Jones, a legal

scholar from University of Sheffield, advances three arguments to favor the abhorrence approach.

60 While alternatively, it may be improper to balance

issues involving human-beings from either an ethical or an evidentiary

perspective.61

B. Whether HESC-related inventions should be included in “human embryo?” What is the scope of “industrial or commercial use?”

Another enduring ambiguous aspect of morality is commercial exploitation. The scope of the “industrial or commercial use” in Article 53(a) of the EPC determines the arena for the moral assessment. In patent

examination, morality is capable of being determined only if commercial

of assessing patentability with regard to Article 53(a) EPC, but just one possible way,

perhaps useful in situations in which an actual damage and/or disadvantage (e.g. suffering of

animals as in the case of decision T 19/90) exists.”).

57. Id. at 31.

58. Warren-Jones, supra note 45, at 654 (analyzing this issue and arguing that “only

one defensible approach . . . offers cohesion in the European patent system”).

59. Id.

60. Id. at 653 (arguing that first, unlike the “unacceptability” standard that covers all

issues related to whether a patent should be granted, the “abhorrence” standard focuses on a

single issue on which to base a decision. Second, “it is not possible to weigh competing

issues to determine ‘abhorrence’ because [that concept] is an absolute that does not permit

fine [logical distinctions] in the way that ‘unacceptability’ does.” Third, the EPO has

already identified cases involving “abhorrent” inventions. Only when such examinations are

appealed based on that issue might a decision be reversed).

61. Id. at 654-61 (noting that “[t]he President in the WARF case pointed out that

adoption of a ‘balancing exercise’ at the initial examination stage imposes an ethical

assessment beyond the ability and mandate of patent offices”).



exploitation has been assured.62

1. University of Edinburgh: A broad approach by the Opposition Division

on the interpretation of “human embryos”

The scope of the exclusion of the “use of human embryos for industrial or commercial use” was first addressed in University of Edinburgh/Stem Cell Isolation.

63 That case involved a European patent held by the

University of Edinburgh’s Austin Smith and Peter Mountford and addressed methods of selecting for animal stem cells (including HESC).

64

To further complicate matters, a term used in the patent claim referred to

animals, but did not exclude humans.65

Accordingly, fourteen parties opposed the patent, including those of Germany and the Netherlands, because it might cover HESC, not just animal stem cells. Those parties

filed in the Opposition Division66

on the ground that granting the patent would violate Article 53(a) of the EPC.

67

The Opposition Division distinguished between fact and opinion and

finally concluded that, based on the Biotechnology Directive, HESC-related inventions derived from destruction of human embryos are not patentable.

68 First, the Opposition Division acknowledged two opposing

views concerning the scope of the term “human embryo,” as used in Article 53(a) of the EPC: the narrow interpretation was understood to mean “human embryos” and the broad interpretation was understood to mean

“human embryos together with the cells retrieved from the destruction of those embryos—namely, human ES cells.”

69 Next, the Opposition Division

noted that Article 53(a) of the EPC is equivalent to Article 6(2) of the

62. Warren-Jones, supra note 2, at 447 (observing that “[e]xamination at the patenting

stage requires that morality be determined before exploitation has become assured[, and

that] it is [therefore] inevitable that any assessment at such an early stage in the invention’s

commercial development will entail some considerations which will consequentially prove

superfluous”).

63. Case T-1079/03, University of Edinburgh/Stem Cell Isolation (Edinburgh), EP

949131742 unreported, July 21, 2003, Opposition Division.

64. Id.

65. Id.

66. Id.

67. Directive 98/44/EC, of the European Parliament and of the Council of 6 July 1998

on the Legal Protection of Biotechnological Inventions, art. [1998] 42 OJ EPO (L 213)

(stating within the preamble of the Council Directive that European patents should not be

granted for inventions involving “uses of human embryos for industrial or commercial

purposes”).

68. University of Edinburgh/Stem Cell Isolation (Edinburgh), T-1079/03 EP

949131742 unreported, July 21, 2003, Opposition Division.

69. Crespi, supra note 30, at 572.



Directive.70

The interpretation of the Directive towards the morality of HESC-related inventions, as set forth in its recitals, is that HESC fall within the scope of the term “human embryo.”

71 Thus, the Opposition

Division held that the broad interpretation was appropriate. With regard to the term “industrial or commercial use,” the Opposition

Division stressed that “use” of HESC-related invention should be

considered patenting in the event that such invention is morally acceptable.

72 In University of Edinburgh/Stem Cell Isolation, the

application refers to using HESC which were obtained by destroying

human embryos; since using HESCs was ethically unacceptable, it is unnecessary to consider patenting the “use” of such invention. Under the Opposition Division’s ruling, it is also immoral to use spare embryos from

in vitro fertilization (“IVF”) procedures and embryos created for research since both involve the destruction of human embryos.

73

However, a former board of Appeal Member at the EPO, Claudio

Germinario, expressed a different opinion; specifically, that to conform to a previous TBA ruling, the term “human embryo” in Article 6(2) of the Directive should be interpreted narrowly.

74 He pointed out that “the scope

70. Council Directive 98/44/EC, art. 6, 1998 O.J. (L 213) (EC). The directive provides:

“Inventions shall be considered unpatentable where their commercial exploitation would be

contrary to ‘ordre public’ or morality; however, exploitation shall not be deemed to be so

contrary merely because it is prohibited by law or regulation . . . . On the basis of paragraph

one, the following, in particular, shall be considered unpatentable: (a) processes for cloning

human beings; (b) processes for modifying the germ line genetic identity of human beings;

(c) uses of human embryos for industrial or commercial purposes; and (d) processes for

modifying the genetic identity of animals which are likely to cause them suffering without

any substantial medical benefit to man or animal, and also animals resulting from such

processes.” Compare id. with Article 53(a) European Patent Convention; see University of

Edinburgh/Stem Cell Isolation (Edinburgh), T-1079/03 EP 949131742 unreported, July 21,

2003, Opposition Division, at 22.

71. Recital 16 of the Directive provides that “it is important to assert the principle that

the human body, at any stage in its formation or development, including germ cells, and the

simple discovery of one of its elements or one of its products, including the sequence or

partial sequence of a human gene, cannot be patented.” Council Directive 98/44/EC, ¶ 16,

1998 O.J. (L 213) (EC).

72. University of Edinburgh/Stem Cell Isolation (Edinburgh), T-1079/03 EP

949131742 unreported, July 21, 2003, Opposition Division (stating that if the patenting of a

product is ethically unacceptable, it is hardly conceivable that the patenting of “uses” of this

product could be judged differently).

73. Id.

74. Claudio Germinario, The Value of Life, 163 PATENT WORLD 16, 18 (2004) (arguing

that the function of the patent claims in defining the scope of protection provides a practical

workable solution to these issues. Thus insofar as the actual claims themselves do no

encompass any reference to the embryo or preceding step in which the embryo is actually

used).



of the protection conferred by a patent is given by the wording of the claims interpreted.”

75 He believed that since the destruction process was

not claimed, patenting HESCs was not not a violation even though these

cells were derived from human embryo.76

He further stated that if HESCs are “available through importation or from many other sources,” the patent application does not necessarily include “the prohibited stage of producing

the first generation of freshly disaggregated embryonic cells.”77

Therefore, no moral prohibition should be used against using the imported human ES cells.

78

2. Use of embryos/WARF (G2/06): The landmark ruling by the European Patent Office (EPO) patenting HESC

WARF addressed the same questions as University of Edinburgh.79

This

case involved a European patent application by the Wisconsin Alumni Research Foundation (WARF) titled “Primate embryonic stem cells,” covering the derivation and cultures of pluripotent embryonic stem cell

lines.80

The patent description shows that WARF’s claims address inventions obtained through a method that involves destroying human embryos.

81 Although the application does not directly claim that method,

human embryos are inevitably destroyed because the method is the only way to obtain the invention.

82 In 2004, the EPO’s Examining Division

denied the application.83

The examiners held that the claims violated

Article 53(a), in conjunction with Rule 28(c) of EPC 2000,84

because “as

75. Id.

76. Id. (stating that although admittedly any such process must begin with the

destruction of a human embryo this would appear to be immaterial to the patenting of the

process and cell lines thus obtained in so far as the prohibited step is not claimed.).

77. Id.

78. Id. (applying his analysis to the University of Edinburgh case).

79. See generally Use of embryos/WARF, G 2/06 [2009] 5 OJ EPO 306.

80. Eur. Pat. App. No. 96,903,521 published as EP0770125 (claiming that a cell

culture comprising primate embryonic stem cells that “(i) are capable of proliferation in an

in vitro culture for over one year, (ii) maintain a karyotype in which all chromosomes

normally characteristic of the primate species are present and are not noticeably altered by

the culturing, (iii) maintain the potential throughout the culture to differentiate into

derivatives of endoderm, mesoderm, and ectoderm tissues, and (iv) are prevented from

differentiating when cultured on a fibroblast feeder layer.”).

81. Use of embryos/WARF, G 2/06, [2009] 5 OJ EPO, at 308 (EPO Enlarged Broad of

Appeal 2009).

82. Id.

83. Id. at 309.

84. See id.; see also Implementing Regulations, European Patent Convention, Nov. 29,

2000, Rule 28(c) (providing that “[u]nder Article 53(a), European patents shall not be

granted in respect of biotechnological Inventions which, in particular, concern the



regards the generation of human embryonic stem cell cultures, the use of human embryos as starting material was described in the application as originally filed as being indispensable.”

85 Although the patent application

did not directly claim human embryos, the invention is related to them and exclusively relies on them.

86 The examiners also concluded that the use of

human embryos as a starting material is a use for industrial purposes within

the scope of Rule 28(c) of the EPC 2000, and therefore could not be patented.

87

The decision was appealed and turned over to the Board of Appeals in

2004.88

However, the Board did not rectify the decision and referred four questions to the Enlarged Board of Appeal (EBA).

89 The first question is

procedural and concerns the effective time of Rule 28(c).90

Regardless of

the answer to that question, the requirements of Article 53(a) should be met beyond Rule 28(c).

91 The second and third questions referred to the main

issue in the case: the patentability of inventions involving the destruction

of human embryos. The core argument in the case related to the proper approach for interpreting the phrase “use human embryos for industrial or commercial use.”

92 The fourth question related to whether the decision in

this case was binding when the method for which the patent was sought was capable of being accomplished without destroying human embryos as of the filing date.

93

In 2008, the EBA answered the four questions and decided that no patent

following: . . . c) uses of human embryos for industrial or commercial purposes”).

85. Use of embryos/WARF, 5 OJ EPO at 309.

86. Eur. Pat. App. No. 96,903,521 published as EP0770125.

87. Use of embryos/WARF, 5 OJ EPO at 327-28.

88. Id.

89. Id. at 307-08 (stating that four questions are: “(1) Does Rule 28(c) EPC extend to

patent applications whose claimed subject-matter comprises a product derived from human

embryos? (2) If the answer to question 1 is yes, does Rule 23d(c) [now 28(c)] EPC forbid

the patenting of claims directed to products (here: human embryonic stem cell cultures)

which – as described in the application - at the filing date could be prepared exclusively by a

method which necessarily involved the destruction of the human embryos from which the

said products are derived, if the said method is not part of the claims? (3) If the answer to

question 1 or 2 is no, does Article 53(a) EPC forbid patenting such claims? (4) In the

context of questions 2 and 3, is it of relevance that after the filing date the same products

could be obtained without having to recur to a method necessarily involving the destruction

of human embryos (here: e.g. derivation from available human embryonic cell lines)?”).

90. Use of embryos/WARF, G 2/06 [2009] 5 OJ EPO 306.

91. Id. at 321-22 (noting that Rule 23d(c) contains the same wording as Article 53(a)

EPC, which took effect in 1973).

92. Ewan Nettleton, EPO’s Enlarged Board Rules on Patenting Stem Cell Inventions, 4

J. INTELL. PROP . L. & PRAC. 306, 307 (2009).

93. Use of embryos/WARF, G2/06 [2009] 5 OJ EPO 306.



would be granted on inventions related to the destruction of human embryos.

94 First, the EBA affirmed that Rule 28(c) is retroactive to patent

applications prior to enforcement.95

Second, the EBA stated that the

rationale underlying Rule 28(c) is “the prohibition of the misuse or commodification of embryos.”

96 The exclusion of Rule 28(c) listed in

Recital 42 of the Directive applies only when human embryos are used for

a “therapeutic or diagnostic purpose.”97

The EBA further held that legislators deliberately declined to provide either a precise definition or a restricted interpretation of the term “embryo.”

98 With respect to the

appellant’s allegation that the claim does not cover human embryo destruction, the EBA identified the term used in Rule 28(c) as an “invention,” not a “claim.”

99 The HESC derivation method disclosed in the

description involved the destruction of the embryo.100

Since the destruction of the embryo is an “essential and integral” part of the invention, the use of the human embryos is for “industrial or commercial exploitation.”

101 The

appellant attempted to defend its destruction of human embryos as not for “industrial or commercial use.”

102 However, the EBA disagreed and noted

that human embryo destruction is one step of the manufacturing procedure

described in the claim.103

Creating an invention that inevitably destroys

94. Id.

95. Use of embryos/WARF, G 2/06 5 OJ EPO at 322.

96. Id. at 323-24.

97. Council Directive No. 98/44/EC, 1997 O.J. (L 213) 13, 16 (providing that

“whereas, moreover, uses of human embryos for industrial or commercial purposes must

also be excluded from patentability; whereas in any case such exclusion does not affect

inventions for therapeutic or diagnostic purposes that are applied to the human embryo and

are useful to it”).

98. Use of embryos/WARF, 5 OJ EPO at 325.

99. Id. at 326 (stating that “this Rule (as well as the corresponding provision of the

Directive) does not mention claims, but refers to “invention” in the context of its

exploitation. What needs to be looked at is not just the explicit wording of the claims but the

technical teaching of the application as a whole as to how the invention is to be performed.

Before human embryonic stem cell cultures can be used they have to be made. Since in the

case referred to the Enlarged Board the only teaching of how to perform the invention to

make human embryonic stem cell cultures is the use (involving their destruction) of human

embryos, this invention falls under the prohibition of Rule 28(c)”).

100. Id. at 327 (finding that the destruction of the human embryo under the derivation

method is an integral and essential part of the industrial or commercial exploitation of t he

claimed invention and thus violates the prohibition of Rule 28(c)).

101. Id.

102. Id.

103. Id. at 329 (“[I]t is important to point out that it is not the fact of the patenting itself

that is considered to be against the ordre public or morality, but it is the performing of the

invention, which includes a step (the use involving its destruction of a human embryo) that

has to be considered to contravene those concepts.”); see Council Directive No. 98/44/EC,



human embryos is one type of commercial exploitation. The patentability criterions apply to all steps of inventions. Since the invention covered the step that involved the destruction of human embryo, the patent application

was rejected for its violation of the morality provisions.104

Third, the EBA indicated its decision had no influence over the patentability of general inventions relating to human stem cells or human stem-cell cultures.

105

This case represents a rare instance in which an appellant requested the European Patent Convention (EPO) refer a patent question to the European Court of Justice (ECJ) for the reason that Rule 28(c) is the same as Article

6(2)(c) of the Directive.106

It is rare because “the Boards of Appeal of the EPO are not courts or tribunals of a member state of the EU, and there is no power under the EPC for a Board of Appeal to refer questions to the

ECJ.”107

However, neither the EPC nor the Implementing Regulations grant any authority to refer questions of law to the European Court of Justice.

108 The conjunction of Rule 28(c) of EPC with Article 6(2)(c) of the

Directive did not compel the conclusion that “the European Court of Justice now has jurisdiction to decide matters for the European Patent Office under the European Patent Convention.”

109 The Biotechnology Directive should

be used by the EPO only as a supplementary method of interpretation, not as a direct source.

110 Therefore, the EBA believed that the EPO should not

seek ECJ guidance.

The EBA’s decision has had a significant and profound influence on the field of HESC research. It has removed doubt on some fundamental issues and built a foundation of legal certainty for Rule 28(c).

111 It unveiled the

1997 O.J. (L 213) 39 (“Whereas ordre public and morality correspond in particular to ethical

or moral principles recognized in a member state, respect for which is particularly important

in the field of biotechnology in view of the potential scope of inventions in this field and

their inherent relationship to living matter; whereas such ethical or moral principles

supplement the standard legal examinations under patent law regardless of the technical

field of the invention.”).

104. See Use of embryos/WARF, G 2/06 [2009] 5 OJ EPO 306.

105. Id. at 312.

106. See Rule 28 of EPC (providing that “under Article53(a), European patents shall not

be granted in respect of biotechnological inventions which, in particular, concern the

following: (a) processes for cloning human beings; (b) processes for modifying the germ

line genetic identity of human beings; (c) uses of human embryos for industrial or

commercial purposes; (d) processes for modifying the genetic identity of animals which are

likely to cause them suffering without any substantial medical benefit to man or animal, and

also animals resulting from such processes”).

107. WARF, G2/06 at 6.

108. Id. G2/06 at 3.

109. Id. at 6.

110. Id.

111. Min, supra note 33.



moral dilemma in patentability of HESC-related inventions and leaves space for evaluating the scope of Rule 28(c).

112 Some scientists predicted

that the decision would encourage European companies to develop new

HESC technology because the old technology is not patentable.113

3. Oliver Brüstle v. Greenpeace: The decision by European Court of

Justice on patenting HESC

The ECJ and the EPO have similar concerns regarding the patentability of inventions involving human-embryo destruction. In Oliver Brüstle v. Greenpeace,

114 the ECJ addressed the same two questions as the WARF

case—namely the definition of the term “human embryos” and the scope of “industrial or commercial use” under Article 6(2) of the Directive—before concluding that the invention was not patentable.

115 The case involved a

patent that had been overturned by the German Federal Patent Court.116

The patent claims did not cover the production of HESC, but its methods of obtaining the cells were inevitably related to human-embryo destruction.

117

However, unlike the situation in WARF, the HESC in this case had been obtained from existing HESC lines, consistent with German Embryo Protection Act.

118

On March 10, 2011, the court concluded that, regardless of whether the description contained any reference to the use of embryos, the invention is not patentable since the patent “necessitates the prior destruction of human

embryos.”119

The decision, authored by Judge Bot, appears to bring trouble

112. See, e.g., Pierre Treichel, Case Comment G2/06 and the Verdict of Immorality, 40

INT’L. REV. IN TELL. PROP . & COMPETITION L. 450, 450 (2009) (positing an interpretation of

prohibiting patents for “all the possible variants of the prohibited inventions in different

circumstances”).

113. See James Randerson, Europe Rejects Patent Governing Use of Embryonic Stem

Cells, The Guardian (Nov. 27 2008),

http://www.guardian.co.uk/science/2008/nov/27/embryonic-stem-cells-patent (discussing

the implication the decision has on companies that develop technologies based on human

embryonic stem cells).

114. Case C-34/10, Brüstle v. Greenpeace eV. 200 E.C.R. I-09821 (2011).

115. See id. at 23 (outlining two of the main questions in the case in determining

whether the invention is patentable).

116. German Patent No. DE 19756864 C5.

117. See id. (claiming the isolation and purification of precursor cells generated from

embryonic stem cells and explaining that embryonic stem cells emerge from pluripotent

stem cells in the very early stages of the development of a fetus).

118. The Embryo Protection Act, Federal Law Gazette, pt. 1 no. 69 (1991); see also Jan

P. Beckmann, On the German Debate on Human Embryonic Stem Cell Research, 29 J.

MED. & PHIL. 603-21 (discussing Germany’s allowance of HESC research based on the

existing HESC lines).

119. Case C-34/10, Brüstle v. Greenpeace e.V., 8 (March 10, 2011),



beyond the patentability issue.120

For example, the ruling might encourage other countries to adopt restrictive approach or total bans on the research.

121

Some scholars have commented that the decision is too restrictive.122

They

further state that without patent protection, the medical stem-cell industry will lose its incentive to develop HESC-based therapies.

123 Some existing

achievements, developed through research under the European

Commission and various EU member states, would also be nullified by a ban on patentability.

124 Finally, these commentators express hope that the

ECJ’s Grand Chamber “deliberate on the full implications before making a

legally binding ruling.”125

The ECJ’s Grand Chamber ruled against patentability on October 18,

2011.126

The ECJ held that even already-existing HESC have been

harvested from human embryos.127

Therefore, inventions involving either newly derived HESC or HESC obtained from established stem cell lines are excluded from patentability.

128 Moreover, “use for industrial or

commercial purposes” under Article 6(2) includes the use of human embryos for scientific research.

129 Austin Smith,

130 who wrote a letter

criticizing the March 10th decision, complained that, “we are funded to do

research for the public good, yet prevented from taking our discoveries to

http://curia.europa.eu/juris/document/document.jsf?text=&docid=81836&pageIndex=0&doc

lang=EN&mode=lst&dir=&occ=first&part=1&cid=99614.

120. Id. (stating that “the exclusion from patentability concerning the use of human

embryos for industrial or commercial purposes [set out in Article 6(2)(c) of the Directive

98/44] also covers the use of human embryos for purposes of scientific research,” only use

of therapeutic or diagnostic purposes which is applied to the human embryo and is useful to

it being patentable).

121. See Alison Abbott, Europe Rules Against Stem-Cell Patents: Work with Human

Embryonic Stem Cells is ‘Contrary to Ethics,’ 471 NATURE 280, 281 (2011).

122. See id. at 281 (remarking that the opinion placed too much emphasis on cell-line

origin and thus ignored the time at which a line has been established).

123. Id.

124. Austin Smith, No to Ban on Stem Cell Patents 472 Nature 418 (2011) (listing drug

development and cell-replacement therapy as examples of achievements that would be

nullified by a ban on patentability).

125. Id.

126. Case C-34/10, Brüstle v Greenpeace, 2011 E.C.R. I-9849, I-9876-77 (holding that

“the exclusion from patentability concerning the use of human embryos . . . also covers the

use of human embryos for the purposes of scientific research”).

127. Id.

128. Id.

129. Id. at I-9877 (holding that only uses for therapeutic or diagnostic purposes are not

barred from patent under Article 6(2)).

130. See Smith, supra note 125 (Austin Smith is affiliated with the Welcome Trust

Centre for Stem Cell Research at the University of Cambridge).



the market place where they could be developed into new medicines.”131

The verdict might have the unfortunate effect of driving stem cell scientists out of Europe and blocking the development of some therapies derived

from stem cells. From the Brüstle ruling, we can conclude that the EU has erected a

barrier to patenting HESC-related inventions. Moral considerations are

deeply rooted in the EU—even in the UK, which has liberal policies towards HESC research.

132 Despite the huge efforts made in the HESC

regulations, there remains an inconsistency related to whether a moral

examination is properly an element of patent law.133

The ECJ and the EPO’s dual system of assessing morality standards has resulted in legal uncertainty. Therefore, we should reconsider how far patent law can

accommodate the morality issues. This article argues, the EPO should not take the responsibility of examining the morality of HESC inventions: it would be better to leave such decisions to the Ethics Committee.

134

II CHINA: INCONSISTENT MORAL STANDARDS BETWEEN PATENT LAW AND

PRACTICAL APPLICATION

Compared to the EU, China’s policy on HESC-related research and applications is relatively liberal and supported by Chinese culture and values.

135 Because the Chinese people have reached a consensus that

abortion is legal, in China, embryos are not typically treated as persons.136

131. Emma, European Court Bans Stem-Cell Patents, EURO STEM CELL (Oct. 18, 2011)

http://www.eurostemcell.org/node/21554.

132. See Department of Health & Social Security, REPORT OF THE COMMITTEE OF

INQUIRY INTO HUMAN FERTILISATION AND EMBRYOLOGY (“The Warnock Report”) (1984),

available at http://www.hfea.gov.uk/2068.html (providing a dissenting view from those in

the UK who believe the human embryo has a special status and should not be used for

research,). But see Aurora Plomer, Beyond the HFE Act 1990: The Regulation of Stem Cell

Research in the UK, 10 M ED. L. REV. 132, 133 (2002) (“The UK currently stands alone in

Europe in permitting the creation of human embryos specifically for research purposes,

including the use of cloning techniques.”).

133. See Laurie, supra note 2, at 61 (“[D]espite the fact that disquiet and discussions of

an ethic nature held up the adoption of the biotechnology Directive for so long, it is far from

clear that we are any further forward in developing uniform, logical, principled and

defensible ethical guidelines within European patent law.”).

134. Ethical committee should involve individuals from diverse backgrounds who support

HESC research with three major functions: providing clinical ethics consultation,

developing or revising policies on HESC research, and monitoring research and clinical

ethics.

135. Döring, supra note 15, at 236 (stating that “[t]he Chinese believe in the importance

of individual autonomy, but they also believe that this right of autonomy is guided by social

needs”).

136. Fu Jun Ying & Zhao Yun Hua, Analysis of Related Policy, Funds and Outputs on



Generally, human embryo use is not considered to be immoral by the Chinese.

137 However, similar to the EPC, the Patent Law of the People’s

Republic of China (PRC) also contains a moral prohibition.138

Specifically,

Article 5 of the PRC states that “patent right shall not be granted for invention-creations that violate the law or social ethics, or harm public interests.”

139 According to the Commission on Legislative Affairs, the

social morality standard depends on public acceptability.140

If an invention is accepted by the public and allowed under the moral standard, it can be patented.

141 Conversely, inventions such as artificial human organs for

non-medical use and human-animal hybrid embryos are non-patentable for morality reasons.

142

A. Whether Article 5 of the patent law excludes inventions related to HESC?

As shown by the following analysis, HESC differentiation and culturing methods are both prohibited by the patent law. In addition, preparations of

pre-implantation embryo for therapeutic cloning use are not patentable. However, inventions related to existing HESC lines are not contrary to morality under the Article 5 of Patent Law.

143

1. Advanced Cell Technology related to the differentiation of HESC and its culture method: lacking the explanation of “embryo” and “industrial or

commercial purpose”

Advanced Cell Technology’s144

January 24, 2005 patent application

Stem Cells in China, 15 J. CLINICAL REHABILITATIVE TISSUE ENGINEERING RESEARCH 256,

257 (2011).

137. Liu Lidong, Analysis of the Possibility Apply for Patent of Human Embryonic S tem

Cell, 30 HOSP . M GMT. FORUM 9, 11 (2013).

138. See Article 5 of Patent Law of the People’s Republic of China (promulgated by

Standing Comm. Nat’l People’s Cong., Dec. 27, 2008, effective Oct. 1, 2009), available at

http://www.wipo.int/wipolex/en/details.jsp?id=6511.

139. Id.

140. The Development and Morality of Human Embryonic Stem Cell, The State

Intellectual Property Office of P.R.C, available at

http://www.sipo.gov.cn/mtjj/2006/200804/t20080401_362185.html.

141. Id.

142. See generally Part II Chapter 1, Guidelines for Patent Examination, State

Intellectual Property Office, People’s Republic of China (promulgated by the Standing

Comm. Nat’l People’s Cong., Jan. 21, 2010, effective Feb. 1, 2010), available at

http://www.wipo.int/wipolex/en/details.jsp?id=6511 (listing types of inventions for which

no patent can be granted).

143. See id. ; see also the patent law of People’s Republic of China, available at

http://www.sipo.gov.cn/zcfg/flfg/zl/fljxzfg/200812/t20081230_435796.html.

144. See generally Company Overview, ACT: ADVANCED CALL TECHNOLOGY,



covered methods for improved cell-based therapies for retinal degeneration and for differentiating HESC.

145 Initially, the claims covered the

differentiation of HESC into retinal pigment epithelial cells used to treat

retinal degeneration.146

Under Article 5, the patent could not be granted unless it deleted that claim.

147

A similar situation also occurred in the context of Beijing University’s

May 17, 2006 patent application related to a method for culturing HESC in a special culturing medium.

148 The patent applicant deleted claims

involving HESC culturing before the patent was granted.149

Likewise, the

authorization of a patent application covering methods of preparing feeder-cell-free, xeno-free HESC and stem-cell cultures specified the elimination of the HESC culturing methods that had been included in the applicant’s

public specification.150

It is well established in this case that patent could not be granted to the

differentiation of HESC and its culture method. However, neither

“embryo” nor “industrial or commercial purpose” were defined in this case. Although the Chinese Patent Office encountered the same problems as the European Office,

151 it neither provided any explicit explanation nor offered

http://www.advancedcell.com/about-act/company-overview/ (last visited July 15, 2014)

(giving background on Advanced Cell Technology, Inc., a biotechnology company that

specializes in the development of cellular therapies using stem cell-based technologies).

145. Patent Application No. CN 1968608 A, May 23, 2007, available at

http://www.google.com/patents/CN1968608A?cl=en (claiming methods for improved cell-

based therapies for retinal degeneration and for differentiating HESC and human embryo-

derived retinal cells).

146. Id.

147. Id.

148. Patent Application No. CN 1844374 A, May 17, 2006, available at

http://www.google.com/patents/CN1844374A?cl=fr (“Culture method for human embryonic

stem cell and special culture medium thereof.”).

149. Id.

150. Patent Application No. CN 100549163C, Oct. 14, 2009, available at

http://www.google.com.tr/patents/CN100549163C?cl=zh-CN (relating to the use of feeder

cells for the method of propagating a culture system and a human embryot ic stem cell line);

Patent Application No. CN 1748025A, Mar. 15, 2006, available at

http://www.google.com.tr/patents/CN1748025A?cl=zh-CN (claiming a method of

preparation of feeder cells-free, xeno-free human embryonic stem cells and stem cell

cultures).

151. Brian Salter, Governing Stem Cell Science in China and India: Emerging

Economics and the Global Politics of Innovation, 27 NEW GENETICS & SOCIE TY 145, 154

(2008) (stating that with its accession to the World Trade Organization (WTO) in 2001,

China agreed to conform to the requirements of the Trade Related Aspects of Intellectual

Property Rights (TRIPS) Agreement. Since then China has cooperated frequently with the

World Intellectual Property Organization (WIPO) and the European Patent Office (EPO) on

personnel training and promoted IPR teaching and research in over seventy universities); see



any approach for future judgment.

2. Shanghai Genon Biological Product: HESCs with the possibility of

developing into human being are within the scope of “human embryo”

On November 2 1999, Shanghai Genon Biological Product Co. Ltd.’s (“Genon”) patent referred to the preparation of pre-implantation embryos for therapeutic cloning use.

152 The publication date of the patent application

was July 11, 2001.153

In 2003, the PRC’s Intellectual Property Office (IPO) rejected the application pursuant to Article 5. The decision was made for the several reasons. First, the method used in the invention

involved mixing a donor nuclear cell and non-mammal cytoplasm derived from donor oocytes. The reconstructed cell is stimulated and transplanted into non-human mammals.

154 Finally, the cell is developed into early

embryos, which is contrary to the morality provisions under the Article 5. The IPO held that because the cell contains complete genetic information, the early embryo should be identified as a human embryo. The preparation

method for an early embryo is equivalent to human cloning. Therefore, the invention falls within the moral exclusion of Article 5.

155 Second, the IPO

held that the invention was for industrial and commercial purposes, and

therefore violated Article 5.156

Third, as stated in the patent claim, the

also Tang Huadong and Wang Dapeng, The Analysis of the Patentability of Human

Embryonic Stem Cell, 5 INTELLECTUAL PROPERTY 52, 54 (2013).

152. Shanghai Genon Biological Product Co. Ltd. became the high and new technology

enterprise in Shanghai, Little Giant Breeding enterprise, important enterprise of feed

industry in Shanghai and the main unit which drafts out the national standard of “[s]pray

dried globin protein powder for feed.” The company has taken on a large number of special

government projects such as an industrialization project of high and new technologies from

National Development and Reform Commission, National Spark Plan, an innovation fund

for medium and small enterprise, domestic cooperation projects in Shanghai, which

“develop agriculture by science and technology projects” in Shanghai, and “four news”

technology projects in Shanghai, available at http://www.cngenon.com/

153. CN 99119951.0, available at http://www.pss-

system.gov.cn/sipopublicsearch/search/searchHome-

searchIndex.shtml?params=991CFE73D4DF553253D44E119219BF31366856FF4B152226

CAE4DB031259396A.

154. See The 5972 re-examination decision by the patent review committee, available at

http://app.sipo-reexam.gov.cn/reexam_out/searchdoc/decidedetail.jsp?jdh=FS5972&lx=fs;

see also Wu Zhou Min, The 5972 Re-examination Decision by the Patent Review

Committee-the Preparation of Pre-implantation Embryos for Therapeutic Cloning Use,

available at http://www.bioipr.com/biopharma-ipr/1108/.

155. Id.

156. Wu Zhou Min, The 5972 Re-examination Decision by the Patent Review

Committee- the Preparation of Pre-implantation Embryos for Therapeutic Cloning Use,

available at http://www.bioipr.com/biopharma-ipr/1108/.



resulting embryo would be a human-animal hybrid, which is forbidden by the patent-examination guidelines.

157

In 2004, Genon appealed to the patent review committee making several

arguments. First, although the embryo includes human genetic information, the embryo is a human-animal hybrid, not a human embryo. Thus, the invention is not related to the industrial or commercial use of a

human embryo.158

Second, the embryo created by this method has no possibility of becoming human because claims 1-10 of the application contain no human-cloning steps.

159 Third, the invention represented one

aspect of human organ transplantation technology.160

Therefore, the invention is properly classified as therapeutic cloning. Neither its aim nor its method involved human cloning. In conclusion, the invention did not

contravene the law, morality, or the public interest.161

Yet the committee reexamined the patent application and concluded that

the invention is unlawful based on Article 5 for two reasons.162

First, the

nuclei donor’s genetic information had a decisive impact on the cell’s overall performance. Genon’s patent application contained human nuclei materials that possessed the characteristics of human cells.

163 As claimed

in the patent application, the invention is primarily used for the purpose of tissue or organ transplantation. If so, the invention could not exclude the possibility of developing into a human being. However, the committee did

not ignore the possibility that the embryonic cells could exhibit the characteristics of an animal.

164 In that situation, the method still violates

public morality because it changes the genetic identity of a human germ

line. Second, the claim does not exclude the possibility of the early embryos developing into humans. Genon did not provide any evidence to prove that the embryos could not develop into human being.

165 It has been

speculated that HESC has the legal status of human being since HESC comes with the possibility of developing into human being. Therefore, the inventions related to HESC are against public morality under Article 5 of

patent law. The argument in this case seems to provide an interpretation of “human embryo.” However, many ambiguous aspects remain, especially in

157. Id.

158. Id.

159. Id.

160. Id.

161. Id; see also Liu Lidong, Analysis of the Possibility Apply for Patent of Human

Embryonic Stem Cell, 30 HOSPITAL M ANAGEMENT FORUM 9, 11 (2013).

162. Id.

163. Id.

164. Id.

165. Id.



how broadly or narrowly to construe the possibility of HESCs developing into a human being.

3. Case the Regents of the University of California: It is improper to trace

the origin of the world’s first HESC lines; therefore, established stem cell lines are allowed

The next patent application that we consider was filed by the Regents of

the University of California in 2003 and covered oligodendrocytes derived from HESC for remyelination and the treatment of spinal-cord injuries.

166

The IPO held that this invention violated Articles 5 and 22 of the PCR.167

The committee believed that the patent specification and claims in their entirety related to HESCs obtained from human embryos, thus violating social morality through the use of human embryos for industrial or

commercial purposes. In addition, the pluripotent cell derived from non-embryonic tissue required bone marrow or other human or animal tissues through a surgical method for non-therapeutic purposes. Thus, the

invention could not satisfy the utility standard set forth in Article 22.168

The applicant appealed to the patent review committee on the following

two grounds. First, the HESC aspect of the invention had been removed

from the patent specification, and the cell lines used in the invention belong to established, mature, already-commercialized HESC lines.

169 Second,

166. See the 42698 re-examination decision of the patent review committee, available at

http://app.sipo-reexam.gov.cn/reexam_out/searchdoc/decidedetail.jsp?jdh=42698&lx=fs.

167. Patent Law of the People’s Republic of China (promulgated by the Standing

Comm. of the Seventh Nat’l People’s Cong., Sept. 4, 1992, effective January 1, 1993)

Article 5 http://www.chinatrademarkoffice.com/about/laws2.html#2 (providing that “No

patent right shall be granted for any invention-creation that is contrary to the laws of the

State or social morality or that is detrimental to public interest.”); Patent Law of the

People’s Republic of China (promulgated by the Standing Comm. of the Seventh Nat’l

People’s Cong., Sept. 4, 1992, effective January 1, 1993) Article 22

http://www.chinatrademarkoffice.com/about/laws2.html#2. (“Any invention or utility model

for which patent right may be granted must possess novelty, inventiveness and practical

applicability. ‘Novelty’ means that, before the date of filing, no identical invention or utility

model has been publicly disclosed in publications in the country or abroad or has been

publicly used or made known to the public by any other means in the country, nor has any

other person filed previously with the patent office an application which described the

identical invention or utility model and was published after the said date of filing.

‘Inventiveness’ means that, as compared with the technology existing before the date of

filing the invention has prominent substantive features and represents a notable progress and

that the utility model has substantive features and represents progress. ‘Practical

Applicability’ means that the invention or utility model can be made or used and can

produce effective results.”).

168. Id. 169. Id.



the application’s claims explicitly excluded direct decomposition from the human-embryo or HESC-related technology solution. In addition, the application had deleted all industrial or commercial uses of human

embryos.170

With respect to Article 5, the applicant argued that the origin of HESC

lines should not be traced in perpetuity.171

The starting material of the

application consisted of established HESC lines capable of unlimited in vitro proliferation. In the prior art, there are many ways to obtain mature and stable HESC lines. Moreover, it is improper to trace the origin of the

world’s first HESC lines. Using established HESC lines could decrease human-embryo abuse and in turn, limit the use of HESCs to mature strains. Therefore, the application does not violate Article 5’s social-morality

provision.172

The board recognized that it is inappropriate to trace the origin of HESC

lines, and that using established stem cell lines is allowed by the morality

provisions in the patent law. However, in the following decision 24343 made by the Patent Reexamination Committee, the committee held that although HESCs could be obtained from commercial channels, the source

of HESCs still rely on the destruction of the human embryo.173

More definitively, the culture of HESCs had significant problems like being time-consuming, difficult to operate, and easy to contaminate. As a result,

established cell lines are not the steady and long-term source of HESC. Subsequently, the argument that using established HESCs could end the destruction of human embryo was unrealistic.

174

The uncertainty decision promulgated by the Patent Office is due to the misunderstanding of the moral provision.

175 The moral standard as well as

the relevant definition should be clarified and developed as soon as

possible.

170. Id.

171. Id.

172. Id.

173. The 24343 re-examination decision of the patent review committee, available at

http://app.sipo-reexam.gov.cn/reexam_out/searchdoc/decidedetail.jsp?jdh=FS24343&lx=fs.

174. Id.

175. See Warren-Jones, supra note 52, at 660 (observing that the lack of consensus in

the supplication of the morality provision suggests that there is a fundamental

misunderstanding regarding the definition and application of the provision. The closer this

analysis gets to achieving an operative understanding of the provision, the greater recourse

to commentators to bridge the gaps in practice).



B. Low moral status of human embryos in practical application

Contrary to popular assumptions, Chinese people place value on life.176

Based on Confucian philosophy, life begins at birth.177

A human embryo holds the status of a pre-human being. Accordingly, the moral status of a human embryo is not equal that of a human-being. Moreover, abortion is

not prohibited and is sometimes compulsory under China’s “one-child policy.”

178 A survey about the moral status of HESC research carried out

in hospitals shows that more than fifty percent of doctors believe that

human embryos are not human beings and that more than seventy percent of doctors support HESC research.

179 Under China’s civil law, civil rights

begin at birth.180

A fetus is not a legal entity: in other words, fetuses are not

human-beings. Therefore, China’s moral standards are very different from those of

Western countries. Even considering the existence of varying local

circumstances, China has a much lower moral standard related to HESC research than do Western countries.

181

C. High moral status of the human embryo in patent law

The first edition of China’s patent law was drafted with reference to the patent law of other countries, particularly the UK.

182 Article 5 of the Patent

176. Achim Rosemann, Life Without Value? Voices of Embryo Donors for hESC

Research in China, IIAS NEWSLETTER (Winter 2009), at 17 (concluding that “[e]qually

flawed appears the assumption that due to the high number of abortions carried out in the

context of the one-child policy, the value of early forms of human life are generally of low

regard among Chinese people.”).

177. Han Xin, The Ideological of Confucius, available at

http://www.confuchina.com/10%20lishi/kongzi%20sixiang.htm.

178. Jing-Bao Nie, Behind The Silence. Chinese Voices On Abortion 100, 104 (2005).

179. Qiu Xiang Xing, Gao Zhi Yan, Wang De Yan, Wang Ming Xv, Shen Ming Xian

and Chen Ren Biao, A SURVEY AND DISCUSSION ON ETHICAL ISSUES OF HUMAN EMBRYONIC

STEM CELL RESEARCH, 1 M ED. & PHILO. 8 (2004).

180. See General Principles of the Civil Law of the People’s Republic of China

(effective January 1, 1987) Article 9 P.R.C. Laws (providing that “[a] citizen shall have the

capacity for civil rights from birth to death and shall enjoy civil rights and assume civil

obligations in accordance with the law”).

181. See Margaret E. Sleeboom-Faulkner, National Risk Signatures and Human

Embryonic Stem Cell Research in Mainland China, 12 HEALTH, RISK & SOC’Y 491, 496-97

(2010) (describing that “[w]hen in 2001 President Bush announced a moratorium on the

federal funding of stem cell research, China, as some other countries in Asia (India,

Singapore, South Korea, Japan and Taiwan), denied any engagement with the ethics that had

informed the decision. In fact, they were ready to jump into the bioethical vacuum it had

created. This vacuum was alleged to be a result of Western moral scruples about using

fertilised human cells, allegedly absent in the East.”).

182. Wei Dong, Study on Patentability of Human Embryonic Stem Cell Related



law of P.R.C. is the same as Article 53 of the European Directive.183

Additionally, in the later revision to the patent law, Article 5 was not substantially modified. Is it proper to include a moral exclusion in the

patent law though? This article takes the view that patent law should not be used as a tool to prohibit unethical research because the law’s primary goals are to protect inventions and encourage creation. The principles and

clauses contained in the patent law should represent the spirit of that law. With respect to moral exclusions, HESC research could still be continued or sponsored in the absence of patent protection for the resulting

products.184

For example, in China, unverified stem cell therapy could be carried out in the clinics and hospitals.

185

Although China’s moral standards seem to be lower than those of

Western countries in practical application, according to the patent-examination guidelines, it is forbidden to patent the use of embryos for commercial or industrial purposes.

186 As in Europe, the Chinese patent

regulations contain no direct definition of “embryo” or “commercial or industrial purpose.” Thus, the Chinese patent office has encountered the same problems as the European office. However, unlike Europe, Chinese

regulators have not needed to consider the issue of conflicting moral standards among member states.

Since China’s moral standards on this issue are much lower than those in

Europe,187

it is likely that Chinese regulators have adopted the moral exclusion in patent law primarily due to the belief that it represents an international custom. In response to pressures from stem cell markets,

some scientists from countries with restrictive policies will rush areas that

Inventions, East China University of Political Science and Law, master thesis (2011).

183. European Directive 98/44/EC on Biotechnology.

184. See Laurie, supra note Error! Bookmark not defined., at 64 (stating how one

may argue that the absence of patent protection may discourage research but not researching

would be an inefficient manner to tackle moral concerns and thus research will continue).

185. See Lianming Liao & Robert Chunhua Zhao, An Overview of Stem Cell-Based

Clinical Trials in China, 17 STEM CELLS & DEV. 613, 615 (2008) (reporting that “the Fourth

Military Medical University of China further used peripheral blood monocytes that had been

induced to differentiate into functional hepatocytes in vitro to treat patients with hepatitis B

virus (HBV)-related decompensated liver cirrhosis”); see also Haidan Chen, Stem Cell

Governance in China: From Bench to Bedside?, 28 NEW GENETICS & SOCIETY 267, 2274

(2009) (reporting that “Beike Biotech was set up in Shenzhen, the first special economic

zone of China on 18 July 2005. It collaborates with hospitals and treats patients in the

hospitals and then shares the resulting profit. Until 2008 Beike cooperated with thirteen

hospitals; six centers were added in 2008, and five new centers will be initiated in 2009”).

186. GUIDELINES FOR PATENT EXAMINATION, STATE INTELLECTUAL PROPERTY OFFICE,

PEOPLE’S REPUBLIC OF CHINA.

187. See Liu Lidong, supra note 162.



have permissive policies or alternatively, some might engage in the activities conducted in more permissive areas. Likewise, Chinese scientists and doctors will blur what can and cannot be done due to a lack of medical

risks or moral concerns. HESC research involving therapeutic cloning and other sensitive procedures cannot be effectively monitored, resulting in “biomedical adventurism”

188 that could create a nightmare for the entire

legal and social infrastructure. Therefore, it would be more appropriate or effective to issue a specific

regulation related to moral standards for HESC research. Any invention

permitted by that specific law should be patentable. Immoral research should be forbidden from the beginning instead of at the patent-application stage.

189 Moreover, from an economic point of view, restricting immoral

research from the beginning could save a tremendous amount of time and money. It would be more effective to implement specific legal regulations applicable to HESC research than to include a general moral exclusion in

the patent law.

III. THE UNITED STATES: INCONSISTENT POLICIES ON FEDERAL FUNDING

CONTROL OF HESC RESEARCH

In the U.S., regulation of HESC research primarily centers on federal funding control, not moral control. The story of HESC regulations in the

U.S. involves a battle between the executive and judicial branches, along with a battle between federal and state government.

190 For decades, the

primary moral concern addressed by HESC regulation involved whether an

embryo is a legal person.191

Unlike in the EU and China, U.S. patent law does not contain a moral exclusion. According to Juicy Whip, Inc. v. Orange Bang, the United States Court of Appeal for the Federal Circuit

held that the Patent Office should not play a role in determining whether an invention is moral.

192 In 1980, however, the United States Supreme Court

188. Doring, supra note 17, at 42 (commenting that the positivistic principle “if an

action is not illegal, by definition, it is legal” does not apply in China. Taking advantage of

the fact that policymaking lags behind scientific and economic development, in terms of the

entire legal and social infrastructure, amounts to biomedical adventurism).

189. Zhu Huan, Patentability of Embryonic Stem Cells Related Inventions , East China

University of Political Science and Law, Master’s Thesis (2008).

190. See Owen C. B. Hughes, Alan L Jakimo and Michael J. Malinowski, United States

Regulation of Stem Cell Research: Recasting Government’s Role and Questions to be

Solved, 37 HOFSTRA L. REV. 383 (2008) (overview of the development of U.S. law on

stem cell research).

191. G. Bahadur and M. Morrison, Patenting Human Pluripotent Cells: Balancing

Commercial, Academic and Ethical Interests 25 HUMAN REPRODUCTION 14-21 (2010).

192. Juicy Whip, Inc. v. Orange Bang, 185 F.3d 1364 (Fed. Cir. 1999) (finding that a

beverage dispenser that simulated a fake display of churning juice, when the juice was not in



opened the door to grant patents on “non-naturally occurring living substances” in Diamond v. Chakrabarty.

193 Since then, thousands of genes,

animals, and other organic materials have been the subjects of patent

protection.

A. Wisconsin Alumni Research Foundation (WARF): the opening of “human embryo farms”

The focal points of world debate on the issue of HESC are three fundamental patents held by the Wisconsin Alumni Research Foundation (“WARF”). In 1998, after James Thomson published work on the isolation

of embryonic stem cell lines, WARF (as his representative) applied to the USPTO to patent that work. Three basic patents, known as the 780, 806 and 913 patents, were issued.

194 The claims of these patents are quite

broad.195

Patents 780 and 806 claim product embryonic cells. Patent 913 claims both product embryonic stem cells and the method of obtaining them.

WARF holds a fee-based and royalty-bearing license to make, use, and sell HESC lines. WARF has been widely criticized for its restrictive policy towards educational and scientific institutions.

196 In the commercial area,

WARF transferred an exclusive license to Geron to develop products derived from the patents. Because the patents cover broad HESC technology, any commercial potential is restricted to exploitation by

fact fresh lacked utility and was therefore unpatentable).

193. See Diamond v. Chakrabarty, 447 U.S. 303 (1980) (upholding application asserting

thirty-six claims related to Chakrabarty’s invention of a bacterium from the genus

Pseudomonas containing therein at least two stable energy -generating plasmids). The patent

examiner allowed the claims falling into the first two categories, but rejected claims for the

bacteria. Id. His decision rested on two grounds: (1) that micro-organisms are products of

nature and (2) that as living things they are not patentable subject matter under 35 U.S.C. §

101. Id.

194. United States Patent No. 5,843,780, December 1, 1998 (covering a purified

preparation of primate embryonic stem cells); United States Patent, 6,200,806, March 13,

2001 (containing a purified preparation of pluripotent human embryonic stem cell); United

States Patent, 7,029,913, April 18, 2006 (including a replicating in vitro cell culture of

human embryonic stem cells comprising cells).

195. See K. Bergman and G.D. Graff, The Global Stem Cell Patent Landscape:

Implications for Efficient Technology Transfer and Commercial Development, 5 NATURE

BIOTECHNOLOGY 419, 419 (2007) (finding these patents are to be some of “the strongest

intellectual property holdings in the whole stem cell field, establishing control at the very

root of all possible lineages of cellular differentiation[.]”).

196. See Aurora Plomer, Kenneth S Taymor and Christopher Thomas Scott, Challenges

to Human Embryonic Stem Cell Patents, 2 CELL STEM CELL 13, 13 (2008) (criticizing

WARF for slowing distribution of cell lines and cast a shadow over the ability of

researchers to advance knowledge).



Geron.197

Although the three patents application were refused for reasons of moral

concern by the EU, in the US, they were challenged for technical reasons.

The Foundation for the Taxpayer and Consumer Rights, in conjunction with the New York-based Public Patent Foundation, challenged the patents on grounds of obviousness with respect to the prior art.

198 In addition,

biomedical researchers worried that the USPTO’s lax practices could stifle scientific innovation by granting patent holders overly broad rights over basic knowledge and research tools.

199 In response to concerns related to

impeding scientific and economic progress due to the lack of guidelines for its patenting criteria, the USPTO received both oppositions.

Subsequently, WARF’s patent application was appealed amidst intense

criticism. One objection related to the cost and restrictiveness imposed on researchers by WARF’s licensing practices.

200 However, it is possible that,

the reason for the high cost of HESC research is the patent licensing fees.

For example, the Thomson patents allow WARF to demand money from anyone who wants to use its stem cells, thus increasing the cost of research and restricting that research to those who can afford to pay.

201 Critics have

called WARF’s approach to licensing “overly costly, cumbersome and restrictive.”

202 Although opponents of HESC research have attempted to

use the patent system to stop what they consider unethical research, there is

little basis in the U.S. patent law for moral barriers against the WARF patents.

203 It appears that one of the reasons that no explicit morality clause

197. Rovert Lanza from Advanced Cell Technology in Worcester, Massachusetts,

claimed that “we would be sued if we even tried to develop insulin-producing cells to treat

diabetes.” Constance Holden, US Patent Office Casts Doubt on Wisconsin Stem Cell

Patents, 316 SCIENCE M AGAZINE. 182, 182 (2007).

198. Request for Ex Parte Reexamination of US Patent No. 5,843,780, Request for Ex

Parte Reexamination of US Patent No 6,200,806, and Request for Inter Parties

Reexamination of US Patent No 7,029,913.

199. David B Resnik, Embryonic Stem Cell Patents and Human Dignity, 15 HEALTH

CARE ANAL 211-222 (2007).

200. See John M. Golden, WARF’s Stem Cell Patents and Tensions Between Public and

Private Sector Approaches to Research, 38 J. L. M ED. & ETHICS 314, 315 (2010).

201. See Terry Devitt, Wisconsin Scientists Culture Elusive Embryonic Stem Cells,

(Nov. 6, 1998) available at http://www.news.wisc.edu/3327 (stating that finding ways to

direct the human embryonic stem cells to become specific cells of clinical importance is an

important next step required before new therapies can be developed).

202. See Golden, supra note 200, at 315 (stating the WARF’s patents cover many HESC

lines in the U.S. and have been used to assert control over many beyond the scope of the

patent).

203. Id. (analyzing that U.S. patent law provides comparatively little basis for such a

morality-oriented barrier to WARF’s patents. Instead, challenges to WARF’s patents in the

United States have attacked the value of Thomson’s scientific contribution).



exists in U.S. patent law is the lack of an intense debate and discussion in the U.S. over whether HESC should be considered patent-eligible subject matter.

B. Political interventions—the federal funding control of HESC research under moral concerns

It is necessary to have an overview of the core of U.S. political system—

the social contract—before looking into the specific issue of HESC.204

With respect to HESC research, the question of whether stem cells are persons is not hotly debated in the U.S. Instead, the focus of the argument

is whether federal funding should be granted for HESC research. Indeed, there are no federal regulations in the United States that restrict HESC research. On the contrary, control over HESC research relates to the

allocation of federal funding.205

There are three levels of federal funding of HESC research: (1) complete prohibition, (2) limited prohibition, and (3) permission. For a long time, the government banned federal funding of any

research that involved human embryos.206

However, in 1996, pursuant to Executive Order 12,975, the National

Bioethics Advisory Commission (“NBAC”) was established to protect “the

rights and welfare of human research subjects and issues in the management and use of genetic information.”

207

NBAC’s establishment was a profound historical event in the regulation

of HESC research because it “increased the awareness of U.S. and foreign governments, international groups, the research community, and the public about complex bioethical issues, thereby helping to provide a forum for

public debate.”208

In the meantime, President Clinton required relevant

204. JEAN JACQUES ROUSSEAU, THE SOCIAL CONTRACT, 1-138 (1st ed., 2010) (stating

that the social contract can be described as follows: “Each of us puts his person and all of

his power in common under the supreme direction of the general will; and in a body we

receive each member as an indivisible part of the whole”).

205. Christine Vestal, Stem Cell Research at the Crossroads of Religion and Polit ics,

PEW FORUM PAPER (July 17, 2008), available at http://pewforum.org/Science-and-

Bioethics/Stem-Cell-Research-at-the-Crossroads-of-Religion-and-Politics.aspx.

206. See PAUL MURRAY M CNEILL, THE ETHICS AND POLITICS OF HUMAN

EXPERIMENTATION 119 (1st ed., 1993) (providing an overview of “balancing interests of

researchers against the protection of the interests of subjects of human experimentation”);

see also Kyla Dunn, The Politics of Stem Cells, NOVA SCIENCENOW (Jan. 4 2005)

available at http://www.pbs.org/wgbh/nova/body/stem-cells-politics.html (discussing the

illegality of using federal funds for “any experiment that creates or destroys a human

embryo”).

207. Exec. Order No. 12,975, 3 C.F.R. 1759 (1995).

208. EISEMAN ELISA, THE NATIONAL BIOETHICS ADVISORY COMMISSION: CONTRIBU TING

TO PUBLIC POLICY 130 (1st ed., 2003).



executive agencies, within the NBAC, to report their opinions on developing human-subject-protection policies.

209 Based on an NBAC

report, President Clinton signed the “Cloning Prohibition Act of 1997” to

ban the creation of babies through somatic cell nuclear transfer cloning.210

Although the history of federal involvement in HESC research is quite complex, these events are distinguishable from the jurisdictional battle over

federal regulation of HESC research.

1. The National Institutes of Health Revitalization Act: Allow Federal

Funding of Research Related to Embryos at the Early Stage

The Department of Health and Human Services (“HHS”) is the chief U.S. government agency providing human services, granting federal research funds, and providing health insurance. HHS consists of eleven

operating divisions. Among these divisions, the National Institutes of Health (“NIH”) is responsible for funding biomedical and health-related research. Initially, research related to human subjects was prohibited from

receiving federal funds. In September 1988, the NIH Advisory Committee voted to lift the moratorium on the use of federal funds for fetal-tissue transplantation research.

211 In 1993, President Clinton, supported by the

NIH review panel, lifted the moratorium, and a congressional hearing followed.

212

Next, the National Institutes of Health Revitalization Act authorized

federal funding of research involving human fetal tissue transplantation.213

This Act also paved the way for federal funding of research related to early-stage embryos.

214 With the endorsement of the National Institutes of

209. Mary Leinhos, The US National Bioethics Advisory Commission as a Boundary

Organism, 32 SCI. & PUB. POL. 423, 426 (2005) (“The Commission was granted the

authority to deliberate on additional issues raised by the general public, other federal bodies

and organizations, or NBAC itself.”).

210. Id. at 427 (stating that “[c]onsistent with the NBAC’s recommendation, the

President’s legislative proposal contained a five-year prohibition on the use of somatic cell

nuclear transfer to create human beings and directed the NBAC to report to the President

after four and one-half years about whether to continue the ban.”).

211. NAT’L INSTS. OF HEALTH, HUMAN FETAL TISSUE TRANSPLANTATION RESEARCH

(1988).

212. Helen M. Maroney, Bioethical Catch-22: The Moratorium on Federal Funding of

Fetal Tissue Transplantation Research and the NIH Revitalization Amendments , 9 J.

CONTEMP . HEALTH L. & POL’Y. 485, 487 (1993).

213. Research on Human Fetal Tissue Amendments Act of 1993, 42 U.S.C. § 289g-1

note (2012).

214. Doe v. Shalala, 862 F. Supp. 1421, 1424 (1994) (commenting on the Act as

follows: “This law [the Revitalization Act] amended existing federal regulations governing

research on human embryos, which required such research to be reviewed by an EAB before

such research might proceed. Because prior presidential administrations apparently chose



Health Revitalization Act, in 1994, the NIH set up the Human Embryo Research Panel to develop policies for the use of embryos and the moral scope of that research.

2. Dickey-Wicker Amendment: No Federal Funding on HESC Research Involving Destruction of an Embryo

Contrary to his previous position, President Clinton issued an executive

order to ban federal funding of HESC research in the wake of a resounding Democratic electoral defeat.

215 In 1995, consistent with President Clinton’s

declaration, Congress overrode the decision to sponsor some types of stem-

cell research. The Dickey-Wicker Amendment, named for Representatives Jay Dickey and Roger Wicker, was approved by Congress.

216 The Dickey-

Wicker Amendment is a rider to other legislation concerning HHS. It is the

first regulation to focus specifically on embryo research and is also the United States’ most important regulation regarding HESC research. Subpart A of the Amendment reflects an endorsement of the existing

prohibition on embryo creation. Parallel to Subpart A, Subpart B adds a ban on federal funding of any research involving embryos obtained from in vitro fertilization (IVF) procedures.

217 It is clear that research involved

with the destruction of embryos is excluded from federal funding. However, the problem of research using already-destroyed embryos from IVF is still unsettled, which has led to debate.

Despite the lack of federal funding, HESC research has developed and flourished with private support. In 1998, scientists claimed that they had successfully derived stem cells from human embryos and emphasized the

potential of stem cells to grow into specific cells.218

Following this

not to appoint an EAB, no funding for such research had in fact been approved. What the

new law did was to reverse the conditions for in vitro fertilization research: it could go

forward unless disapproved. Previously it could not go forward unless approved”).

215. Heather J Meeker, Issues of Property, Ethics and Consent in the Transplantation of

Fetal Reproductive Tissue, 9 BERKELEY TECH. L. J. 185, 187 (1994) (citing profound ethical

and moral questions associated with the subject, refused to follow the contrary

recommendation of a National Institutes of Health panel).

216. Dickey Amendment, Pub. L. 111-8, § 509, 123 Stat. 803 (1996).

217. Id. (The Amendment’s prohibitions read as follows: (a) None of the funds made

available in this Act may be used for—(1) The creation of a human embryo or embryos for

research purposes; (2) Research in which a human embryo or embryos are destroyed,

discarded, or knowingly subjected to risk of injury or death greater than that allowed for

research on fetuses in uteri. (b) For purposes of this section, the term ‘human embryo or

embryos’ includes any organism, not protected as a human subject under 45 CFR 46 as of

the date of the enactment of this Act, that is derived by fertilization, parthenogenesis,

cloning, or any other means from one or more human gametes or human diploid cells).

218. James A Thomson, Embryonic Stem Cell Lines Derived from Human Blastocysts,

282 SCI. 1145, 1145-46 (1998).



landmark development, on January 15, 1999, top HHS lawyer Harriet Rabb declared that the Dickey-Wicker Amendment should not apply to derived stem cells because such cells “are not a human embryo within the statutory

definition.”219

Therefore, HHS took the position that the NIH could provide federal funding to HESC research on the ground that a stem cell could not become an organism because it had not been implanted into a

uterus.220

In response to the HHS opinion, the NIH appointed a group of experts to

develop appropriate guidelines. Meanwhile, the notion that federal funds

could be used for HESC research was backed by the Clinton administration.

221 However, seventy-seven Congressional opponents wrote

two letters to the Secretary of HHS to criticize the provision allowing

federal funding to HESC research.222

3. NIH Guideline 2000

Regardless of the National Institutes of Health Revitalization Act and the

Dickey-Wicker Amendment’s contradictory interpretations, the NIH published a Guideline outlining funding-ineligible types of HESC research.

223 The Guideline restricts the scope of federal funds to stem cells

219. See Letter from Harriet Rabb, Gen. Counsel, Dep’t of Health & Human Servs., to

Harold Varmus, Director, NIH, (Jan. 15, 1999) (General Counsel Rabb determined that the

statutory ban on human embryonic research defined an embryo as an “organism” that, when

implanted in the uterus, is capable of becoming a human being); see also JUDITH A JOHNSON

& ERIN D WILLIAMS, CRS REPORT: STEM CELL RESEARCH: FEDERAL RESEARCH FUNDING

AND OVERSIGHT, 7 (Apr. 18, 2007) available at

http://www.fas.org/sgp/crs/misc/RL33540.pdf.

220. Meredith Wadman, Embryonic Stem Cell Research Exempt from Ban, NIH is Told,

397 NATURE 185-86 (1999) (quoting an NIH official, “this opinion allows us to proceed

carefully and thoughtfully with a line of research that has enormous potential for the

treatment of almost every disease and condition”).

221. See Eliot Marshall, Ethicists Back Stem Cell Research, White House Treads

Cautiously, 285 SCI. 502, 503 (1999).

222. Meredith Wadman, Congress May Block Stem Cell Research, 397 NATURE 639,

639 (1999) (The writer claimed that Rabb “makes a specious distinction by reading the law

narrowly” to apply only to the act of destroying embryos, and not more broadly to include

any research that depends on their destruction; Jay Dickey, the author of the existing ban,

also stated that stem-cell derivation was “precisely the kind of research for which we

intended to ban, and did ban, federal funding”).

223. Clinton administration NIH Guidelines for embryonic stem cell funding, 65 Fed.

Reg. 51,975, Aug. 25, 2000. The Guidelines state that the following research areas are

ineligible for NIH funding:

A. The derivation of pluripotent stem cells from human embryos; B. Research in

which human pluripotent stem cells are utilized to create or contribute to a human

embryo; C. Research utilizing pluripotent stem cells derived from human embryos

created for research purposes, rather than for fertility treatment; D. Research in



derived from ‘human embryos created for the purposes of fertility treatment and exceeded the clinical need of the individuals seeking such treatment’.

224 The Guideline also established a national review panel, the

NIH Human Pluripotent Stem Cell Review Group.225

However, before the NIH could provide funding, the Bush

Administration took power and conducted a legal review of Clinton-era

policy. Implementation of the Guideline was halted and federal funding was never granted. Nevertheless, the Clinton Administration had already opened the door for federal funding of HESC research.

226

4. The Bush Compromise accepted the narrow explanation of Dickey-Wicker Amendment but exercised the executive power instead of legal

power to allocate funding

Immediately after President Bush took office in January 2001, he ordered “another look at the options regarding HESC research policy,” including a review of Rabb’s decision.

227 Next, President Bush articulated

his own policy by suspending the NIH’s implementation of funding and repealing the NIH Guideline.

228 Some scientists and patients expressed

anger and frustration with this decision.229

which human pluripotent stem cells were derived using somatic cell nuclear

transfer, i.e., the transfer of a human somatic cell nucleus into a human or animal

egg; E. Research utilizing human pluripotent stem cells derived using somat ic cell

nuclear transfer, i.e., the transfer of a human somatic cell nucleus into a human or

animal egg; F. Research in which human pluripotent stem cells are combined with

an animal embryo; and G. Research in which human pluripotent stem cells are used

in combination with somatic cell nuclear transfer for the purposes of the

reproductive cloning of a human.

224. Id.

225. Nicholas Wade, New Rules on Use of Human Embryos in Cell Research, N.Y.

TIMES, (Aug. 24, 2000) http://www.nytimes.com/2000/08/24/us/new-rules-on-use-of-

human-embryos-in-cell-research.html?pagewanted=all&src=pm.

(President Clinton commented that the Guideline was a proper because “we cannot walk

away from the potential to save lives and improve lives, to help people literally to get up and

walk, to do all kinds of things we could never have imagined”).

226. Kyla Dunn, The Politics of Stem Cells, NOVA SCIENCE NOW, (Sept. 13, 2014, 3:37

PM), http://www.pbs.org/wgbh/nova/body/stem-cells-politics.html.

227. The President’s Council on Bioethics, The Administration’s Human Embryonic

Stem Cell Research Funding Policy: Moral and Political Foundations , THE PRESIDENT’S

COUNCIL ON BIOETHICS (Sept. 13, 2014, 4:11 PM),

https://bioethicsarchive.georgetown.edu/pcbe/index.html.

228. Id.

229. Rick Weiss, Bush Administration Order Halts Stem Cell Meeting; NIH Planned

Session to Review Fund Requests, WASH. POST, at A02 (Apr. 21, 2001) (reporting that one

member of NIH criticized that “the decision certainly is holding up research that could

potentially affect many of people with a number of different diseases . . . . Nobel laureate



On August 9, 2001, President Bush launched his newly crafted policy for HESC research in a national television speech. He announced that to avoid sanctioning or encouraging further destruction of human embryos, federal

grants would only be available for research using the sixty four stem cell lines that were already in existence.

230

President Bush’s view on the ethics of HESC research were quite

different from that of President Clinton.231

Stem cell separation results in the deprivation of the embryo’s human potential because it destroys the embryo. Thus, President Bush decided to “allow federal funds to be used

for research on these existing stem cell lines, where the life-and-death decision has already been made.”

232

After the new policy was implemented, its moral, legal, and political

implications were hotly debated among media, politicians, scientists, and organizations. The Bush policy was known as “The Bush Compromise.” One reason for that characterization is that the policy apparently straddles

the line between the conservative and liberal views on the question of governing federal funding. Another possible reason is that the policy tried to satisfy both the scientific communities and pro-life communities.

233 To

some extent, The Bush Compromise accepted the narrow view exemplified by the Dickey-Wicker Amendment. However, The Bush Compromise also adopted a new, broad concept of embryonic human life. In addition, The

Bush Compromise changed the executive and legislative branches’ positions on the question of federal funding for HESC research. It not only acknowledged Congress’s sole authority to legislate but also exercised

Paul Berg feared that U.S. researchers stand to lose their edge in the biomedical revolution

because Britain, France and Canada have been passing more liberal rules for research on

embryo cells”).

230. Press Release, White House, White House Fact Sheet on Embryonic Stem Cell

Research (Aug. 9, 2001), available at http://www.presidency.ucsb.edu/ws/?pid=79025..

(The new policy provided as follows: “Federal funds will only be used for research on

existing stem cell lines that were derived: (1) with the informed consent of the donors; (2)

from excess embryos created solely for reproductive purposes; and (3) without any financial

inducements to the donors. No federal funds will be used for: (1) the derivation or use of

stem cell lines derived from newly destroyed embryos; (2) the creation of any human

embryos for research purposes; or (3) the cloning of human embryos for any purpose”).

231. Press release, George W. Bush, President George W.Bush’s Address on Stem Cell

Research (Aug. 9, 2001), available at

http://edition.cnn.com/2001/ALLPOLITICS/08/09/bush.transcript/ (describing the embryo

as “a snowflake in that each of these embryos is unique, with the unique genetic potential of

an individual human being” and recommending that under the Bush policy, “a five-day-old

cluster of stem cells is not an embryo, not yet an individual, but a pre-embryo”).

232. Id.

233. Patrick Walsh, Stemming the Tide of Stem Cell Research: The Bush Compromise,

38 J. M ARSHALL L. REV. 1061, 1077 (2005).



executive power to allocate funding.234

This new policy inevitably raised many concerns that scientists might move to other countries.

235

5. The Report from the President Council on Bioethics clarified that the

enforcement law was the Dickey Amendment

Following a public announcement on August 9th, President Bush established the Presidential Council on Bioethics. According to the Kass

statement, the Council aims to provide “an adequate moral and ethical lens through which to view particular developments in their proper scope and depth.”

236 It was quite different from previous councils because the White

House was in charge of appointing its members. Chairman Kass proclaimed that the Council would listen to both religious and secular voices in its consideration of HESC research.

Following its proceedings, in January 2004, the Council published a report on monitoring stem-cell research. The report summarizes ethical, legal and policy issues around applications of stem cell research.

237 The

report concluded that the Dickey-Wicker Amendment was enforceable law. Federal funds should not be used to “encourage the exploitation or destruction of nascent human life, even if scientific and medical benefits

might come from such acts.”238

The research should aim to cure deadly diseases provided it respects important moral boundaries. Meanwhile, the award of federal funding is a significant issue to be handled with care.

239

234. O. Carter Snead, The Pedagogical Significance of the Bush Stem Cell Policy: A

Window into Bioethical Regulation in the United States, 5 YALE J. HEALTH POL’Y. L. &

ETHICS 491, 498 (2005) (demonstrating “both an acknowledgement of Congress’s sole

authority to appropriate federal funds and a robust exercise of the President’s authority as

head of the executive branch to allocate the appropriated funding according to the

[a]dministration’s priorities”).

235. See Tom Abate, UCSF Stem Cell Expert Leaving U.S./Scientist Fears That

Political Uncertainty Threatens His Research, SAN FRANCISCO CHRONICLE, July 17, 2001,

http://www.sfgate.com/health/article/UCSF-stem-cell-expert-leaving-U-S-Scientist-

2899802.php (documenting one biology professor’s move from San Francisco to Britain in

order to continue his research on human embryonic stem cells).

236. See Monitoring Stem Cell Research: Reports by the President’s Council on

Bioethics (Jan. 2004), available at https://bioethicsarchive.georgetown.edu/pcbe/.

237. See Letter from Leon R. Kass M.D., Chairman of the President’s Council on

Bioethics, to President Bush (March 31, 2004), available at

http://bioethics.georgetown.edu/pcbe/reports/reproductionandresponsibility/transmittal.html

(summarizing the main points addressed in the report).

238. Patrick Walsh, Stemming the Tide of Stem Cell Research: The Bush Compromise,

38 J. M ARSHALL L. REV. 1061, 1077 (2005).

239. Id. at 1078 (proposing a four-part test to determine status of embryotic tissue for

research and suggesting the President Bush institute a federal agency to oversee subsequent

research).



The council also announced reports on alternative sources of stem cells, human cloning, human dignity, and bioethics. However, these reports did not have a substantial effect on public debate in the U.S.

240 The Council’s

approach was criticized as “entertaining with the spectacle of enhanced bodies and immortal lives but offering little meaningful and substantive ethical analysis.”

241

6. Executive order by President Obama: Reversing The Bush Compromise

Its practical import aside, The Bush Compromise had pedagogical significance for legal developments in regulating HESC research. The

General Council of the President’s Council on Bioethics evaluated The Bush Compromise as “provid[ing] an unparalleled window into the nature and substance of ‘bioethical regulation’ within the unique framework of the

American system of government.”242

However, President Obama has expressed dissatisfaction with the policy restricting federal funding of HESC research.

243

On March 9, 2009, President Obama signed an executive order to lift the ban on HESC funding. Research related to embryonic stem cell lines created after August 2001 could receive federal funding. Privately funded

research was not affected. However, the creation of stem cell lines involving the destruction of embryos was still prohibited from receiving federal funds.

244

The order did not clearly describe standards for which stem cell lines would be eligible for federal funds. The rule unlocking federal funding was challenged by the Dickey-Wicker Amendment, which prohibited

240. Leigh Turner, Science, Politics and the President’s Council on Bioethics, 22

NATURE BIOTECH. 509, 509 (2004) (commenting that while the reports did not have “a

dramatic effect on public debates,” the recent membership shake up in the US President’s

Council put the Council “back in the limelight”).

241. Leigh Turner, Has the President’s Council on Bioethics Missed the Boat?, 327 THE

BMJ 629, 629 (2003).

242. See Snead, supra note 235 at 234, at 492.

243. Obama Overturns Bush Policy on Stem Cells, CNN (Mar. 9, 2009),

http://articles.cnn.com/2009-03-09/politics/obama.stem.cells_1_cancer-and-spinal-cord-

embryonic-cell-research?_s=PM:POLITICS (quoting President Obama where he

commented that “[i]n recent years, when it comes to stem cell research, rather than

furthering discovery, our government has forced what I believe is a false choice between

sound science and moral values”); see also Exec. Order No. 13,505, 3 C.F.R. 229 (2010).

244. See Exec. Order No. 13,505, 3 C.F.R. 229 (2010) (stating that Section 1 of the

executive order provides as follows: “Research involving human embryonic stem cells and

human non-embryonic stem cells has the potential to lead to better understanding and

treatment of many disabling diseases and conditions. Advances over the past decade in this

promising scientific field have been encouraging, leading to broad agreement in the

scientific community that the research should be supported by Federal funds”).



funding of HESC research involving the destruction of embryos. The NIH attempted to finish answering a host of morally and politically complicated questions within 120 days.

245 Because the order was challenged by the

Dickey-Wicker Amendment, the President let Congress decide whether to overturn the statutory ban on federal funding on research related to embryo.

246 Despite some weaknesses in the order, it is still a remarkable

milestone in HESC research and as President Obama commented:

Today, with the Executive Order I am about to sign, we will bring the change that so many scientists and researchers; doctors and innovators; patients and loved ones have hoped for, and fought for, these past eight years: we will lift the ban on federal funding for promising embryonic stem cell research. We will vigorously support scientists who pursue this research. And we will aim for America to lead the world in the discoveries that it one day may yield.

247

7. The result of the battle over the Dickey-Wicker Amendment: The Obama

Administration funding policy of HESC research could move forward

NIH planned to implement new guidelines to suggest how federal funds should be used for HESC research.

248 This was welcome news to scientists

who had applauded President Obama’s new policy.249

However, in a shocking case issued on August 23, 2010, a Federal District Court judge ruled against the Obama executive order.

250 In Sherley v. Sebelius, the

District Court held that federal funding for HESC research clearly violated the Dickey-Wicker Amendment, which prohibits research where a “human embryo is destroyed, discarded, or knowingly subject to risk of injury or

245. See Rob Stein, Obama’s Order on Stem Cells Leaves Key Questions to NIH, THE

WASHINGTON POST (Mar. 10, 2009), http://www.washingtonpost.com/wp-

dyn/content/article/2009/03/09/AR2009030903156.html.

246. See Sheryl Gay Stolberg, Obama is Leaving Some Stem Cell Issues to Congress ,

N.Y. TIMES (Mar. 8 2009), http://www.nytimes.com/2009/03/09/us/politics/09stem.html.

247. See Jesse Lee, “A Debt of Gratitude to So Many Tireless Advocates,” WHITE

HOUSE BLOG (Mar. 9, 2009, 12:09 PM), http://www.whitehouse.gov/blog/09/03/09/A-debt-

of-gratitude-to-so-many-tireless-advocates/.

248. See generally Devin Dwyer, NIH Issues New Stem Cell Research Guidelines as

Obama Administration Prepares to Appeal Court Ruling, POLITICAL PUNCH BLOG (Aug. 31,

2010) http://abcnews.go.com/blogs/politics/2010/08/nih-issues-new-stem-cell-research-

guidelines-as-obama-administration-prepares-to-appeal-court-ruling/.

249. Id.

250. See Sherley v. Sebelius, 704 F. Supp. 2d 63, 71-72 (D.D.C. 2010) (overruling the

National Institutes of Health Guidelines for Human Cell Research, which were promulgated

in response to President Obama’s Executive Order, because embryonic stem cell research

involves the destruction of an embryo in violation of the Dickey -Wicker Amendment).



death greater than that allowed under applicable regulations.”251

On the same day of the ruling, the Obama administration decided to

appeal because of the judgment’s potential to block federal funding of

HESC research.252

On September 9, 2010, the United States Court of Appeals for the District of Columbia overturned the District Court’s ruling and provided temporary permission for federal funding of HESC research. 253

The harm caused by the District Court’s ruling “poured sand into that engine of discovery.”

254 A few months later, at the request of the federal

government, a federal appellate court reinstated the presidential policy and

suspended the injunction issued by the district court.255

The court dispute over the Dickey-Wicker Amendment flared up again

on April 29, 2011 when the appellate court permanently overturned the

district court’s injunction, holding that the Dickey-Wicker Amendment was ambiguous.

256 The NIH applauded the ruling, with a spokesperson stating,

“I am delighted and relieved to learn of the decision of the Court of

Appeals.”257

The ruling was reconfirmed on July 27, 2011, when a federal judge dismissed the legal challenge to government funding of HESC research.

258 Ultimately, President Obama’s policy allowing funding for

251. Id. (finding that the new NIH Guidelines allowed federal funding of HESC

research, which involves the destruction of embryos).

252. See generally Dwyer, supra note 248, 248 (criticizing that the ruling as one that

could “cause irreparable damage and delay potential breakthroughs to improve care for

people living with serious diseases and conditions . . . the injunction threatens to stop

progress in one of the most encouraging areas of biomedical research”).

253. See Janice Hopkins Tanne, US Court Temporarily Lifts Ban Imposed in August on

Stem Cell Research, THE BMJ (Sept. 10, 2010),

http://www.bmj.com/content/341/bmj.c4981.

254. Id. (stating that “[t]he ruling threw the field into disarray, immediately halting

some projects and causing the US National Institutes of Health (NIH) to put a hold on many

research grants”).

255. See Ubaka Ogbogu, US Appeal Court Reinstates Obama’s Funding Policy on Stem

Cell Research, STEM CELL NETWORK, (May 2, 2011),

http://scnblog.typepad.com/scnblog/2011/05/us-appeal-court-obama-funding-policy-stem-

cell-research.html.

256. See Bill Mears, Appeals Court Lifts Ban on Federal Funding For Stem-Cell

Research, CNN, http://articles.cnn.com/2011-04-29/us/stem.cells_1_stem-cell-research-cell-

types-ban-research?_s=PM:US (last visited July 14, 2014, 10:47 AM),.

257. Maggie Fox, Appeals Court Hands Obama a Stem-Cell Victory, NATIONAL

JOURNAL (Apr. 29, 2011), http://www.nationaljournal.com/healthcare/appeals-court-hands-

obama-a-stem-cell-victory-20110429.

258. George Annas, Embryo research was born political, STEM CELLS: BIOLOGY,

BIOETHICS, AND APPLICATIONS (Oct. 28, 2010),

http://stemcellbioethics.wikischolars.columbia.edu/Legal+and+Political+History+of+Stem+

Cell+Science (reporting that the US Court of Appeals for the District of Columbia lifted an

injunction imposed last year by a U.S. District judge, who said all embryonic stem cell



HESC research was allowed to proceed. From the above, it is evident that law and morality often overlap,

especially when the government is involved. Law shapes and provides a

mechanism to balance various government interests including, curing diseases, scientific advances, and human dignity. The regulation of HESC research is not a simple permission or prohibition. In previous years, the

complexity of this issue has been demonstrated by the federal government’s strategies. Nevertheless, HESC research is worthy of attention from the White House and Congress. It appears as if the U.S.

government takes the approach of patenting first and asking questions later. This hands-off approach is market oriented.

259 Opponents have strongly

criticized this approach for its lack of ethical and social considerations.260

Scientific research can be conducted with little public oversight. In addition, when federal funding is limited, private funding is still allowed, which might lead to even less moral considerations related to HESC

research. Therefore, this article argues, it would be reasonable to remove moral review of HESC from the patent law. Regulating federal funding to HESC research is not only morally acceptable but also provides an

important tool for monitoring HESC research. Federal funding should be allowed in HESC research; rather than patent law restrictions.

CONCLUSION

As has been demonstrated, few can deny the intrinsic link between HESC and morality.

261 This article argues that we should effectively

control and monitor this questionable technology. The problem is whether such control should be within the patent law system. The approach adopted by the EU and China involves inserting moral provisions into their patent

law to limit the patentability of inventions related to HESC, whereas the U.S. has not. The U.S. government’s approach uses federal-funding control instead of patent control. Reviewing these various approaches,

research at the National Institutes of Health amounted to destruction of embryos, in

violation of congressional spending laws).

259. See NATIONAL BIOETHICS ADVISORY COMMISSION, ETHICAL ISSUES IN HUMAN STEM

CELL RESEARCH: REPORT AND RECOMMENDATIONS OF THE NATIONAL BIOETHICS AD VISORY

COMMISSION 59 (1999), available at https://scholarworks.iupui.edu/handle/1805/23

(discussing the causal link between federal support for basic biotechnology research and

firms developing marketable products).

260. Michael J. Malinowsk and Nick Littlefield, Transformation of a Research Platform

Into Commercial Products: The Impact of United States Federal Policy on Biotechnology,

in TIMOTHY A. CAULFIELD AND BRYN WILLIAMS-JONES, THE COMMERCIALIZATION OF

GENETIC RESEARCH: ETHICAL, LEGAL AND POLICY ISSUES, at 29-53 (1999).

261. See Warren-Jones, supra note 52, at 638-61.



morality should play the role of initially filtering what research is appropriate instead of regulating through the patent system.

262 Because

even if the results of HESC research can be patented, HESC research could

still be performed and funded. Therefore, immoral research should be prohibited at the beginning instead of at the patent-application stage. In addition, although the EU and China consider morality in granting patents,

there is no direct moral standard, moral definition or defined meaning of industrial or commercial use, which inevitably results in legal inconsistency. It seems better to establish the specific authority to monitor

HESC-related research pursuant to specific regulations before such research is conducted. Moreover, morality clauses in patent law aim to reduce the adverse impact of broad patents that might develop

insupportable drugs and therapies. In terms of funds invested into such research, the reward represented by patent seems overvalued. Therefore, this article concludes, a patent system without a morality clause would be a

critical step forward for HESC research. Infusing moral exclusions into patent law is both inefficient and ineffective.

262. Id. (concluding that “it is time that the core morality provision is no longer viewed

as a fundamental regulator of new technology—it is an initial filter and it should never

become more than that”).

amp6-1 cv amp6-1 cv 1/30/2015 5:26 pm page 2 american ... · why gamers should turn to...

Documents