On May 26, 2009 President Barack Obama named Judge Sonia Sotomayor as his Supreme Court nominee to replace Justice David Souter.  While anytime a new Justice joins the Court a myriad of issues resurface in the political debate, Judge Sotomayor’s nomination poses an interesting perspective on the future of intellectual property litigation.

          After serving as a public prosecutor for many years, Judge Sotomayor joined the private New York law firm Pavia & Harcourt in 1984, specializing in intellectual property law.  During her eight years with the firm, Judge Sotomayor represented top clients like Ferrari and Fendi, specifically suing counterfeiters to stop them from importing fake Fendi goods.  According to a profile printed by The New York Times on May 26, 2009, “if the firm had a tip from the United States Customs Office about a suspicious shipment, Ms. Sotomayor would often be involved in the risky maneuver of going to the warehouse to have the merchandise seized. One incident that figures largely in firm lore was a seizure in Chinatown, where the counterfeiters ran away and Ms. Sotomayor got on a motorcycle and gave chase.” Sheryl Stolberg, Sotomayor, a Trailblazer and a Dreamer, The New York Times, May 26, 2009 available at http://www.nytimes.com/2009/05/27/us/politics/27websotomayor.html 
          While Judge Sotomayor has ruled on a variety of legal topics during her time on the bench, including appeals in over 3000 cases and writing 380 majority opinions during her time on the federal district court, she also has been involved in two key copyright cases that help illuminate her stance on IP litigation, Tasini v. New York  Times Co., 972 F. Supp. 804 (S. D.N.Y. 1997) and Castle Rock Entertainment v. Carol Publishing Group, 955 F. Supp 260 (S.D.N.Y. 1997).
          Tasini v. New York Times Co. 972 F. Supp 804, originally decided by Sotomayor in 1997, involved a copyright infringement suit brought against The New York Times and other news organizations by several freelance journalists.  The freelance journalists claimed that the publishers improperly distributed articles they had written to Lexis/Nexis without their permission, while the publishers claimed the articles fell under the collective work copyright privilege according to § 201(c) of the Federal Copyright Act of 1976.  The collective work copyright is one “in which a number of contributions, constituting separate and independent works in themselves, are assembled into a collective whole.” Id. at 809 (citing 17 U.S.C. § 101).  Under the collective work copyright doctrine “the owner of the copyright in the collective work is presumed to have acquired only the privilege of reproducing and distributing the contribution as part of that particular collective work, any revision of that collective work, and any later collective work in the same series.” Id. at 809 (citing 17 U.S.C. § 201(c)).  In the case, the freelance journalists asserted that the publishers had gone beyond the privileges granted in §201(c) because the republishing in Lexis/Nexis did not constitute a “revision of that collective work.”
          Sotomayor ruled in favor of the publishers, holding that they were entitled to reproduce articles within the Lexis/Nexis database under the protection of the collective work copyright.  Sotomayor examined the plain language of the statute and the legislative history in reaching the conclusion that the terms “privilege,” “reproducing” or “any revision” found in §201(c) of the Federal Copyright Act did not impose any significant limitations upon publishers.  Id. at 820.  Ultimately, Judge Sotomayor held that “a privilege is transferrable; a reproduction can occur in any medium; and “any revision” might include a major revision.  The key limitation imposed upon publishers under Section 201(c) rests in the fact that publishers are permitted only to reproduce a particular plaintiff's article “as part of” a revised version of “that collective work” in which the article originally appeared.”  Id. at 820.  However, while Sotomayor took a more pro-business approach and expansive reading of the Federal Copyright Act in Tasini, she was ultimately overruled by both the appellate court and the US Supreme Court.  In finding for the freelance journalists, the Supreme Court in a 7-2 decision held that the collective work copyright privilege did not apply because articles in Lexis/Nexis do not appear as a collective work, but rather each article is treated and appears as a separate item when a user conducts a search in the database. 
          In the same year Tasini was decided, Judge Sotomayor also ruled on the copyright infringement case Castle Rock Entertainment v. Carol Publishing Group, 955 F. Supp. 260 (S.D.N.Y. 1997).  Castle Rock Entertainment, which owns the copyright of the popular television show Seinfeld, brought suit against Carol Publishing Group for publishing a book entitled The Seinfeld Aptitude Test (SAT).  The book consisted of 643 trivia questions testing the readers’ knowledge of the events and characters depicted in the show.  While Carol, who did not receive permission from Castle Rock Entertainment to publish the trivia book, argued that it only copied “un-copyrightable facts” about the show, Judge Sotomayor ultimately rejected their theory.  Id. at 266.  Judge Sotomayor focused on the fact that SAT did not pose factual biographical questions about the show, such as “who acts in the program, who directs or produces the show, how many seasons it has run, etc.  Instead, SAT pose[d] questions about the events depicted during episodes of the Seinfeld show.”  Id. at 266. 
          In addition to finding that the trivia book’s questions were predominately focused on the creative components of Seinfeld and not mere facts, Judge Sotomayor also focused her analysis on the four statutory factors regarding fair use.  Under the Federal Copyright Act of 1976, “the fair use of a copyrighted work … for purposes such as criticism, news reporting, teaching …, scholarship, or research, is not an infringement of copyright.” Id. at 267 (citing 17 USC § 107).  In evaluating whether or not copyrighted information was used according to the fair use doctrine, courts examine four factors: “1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.”  Id. at 267 (citing 17 USC §107).  Judge Sotomayor conducted a careful analysis of each factor and found that on the whole, SAT did not represent a fair use of Seinfeld.  Her explanation of the four factors shows a strong command of IP law, particularly her analysis of the fourth factor where she recognized that potential markets includes both those market areas that the copyright owner has engaged in and those market areas one has affirmatively decided not to pursue.  Judge Sotomayor reasoned that “artists express themselves not merely by deciding what to create from their original work, but by deciding what not to create as well.”  Id. at 272.  The Second Circuit ultimately affirmed Judge Sotomayor’s decision.
          Judge Sotomayor also wrote the majority opinion in two key cybersquatting cases, Storey v. Cello Holdings LLC 347 F. 3d 370 (2^nd Cir. NY 2003) and Mattel, Inc v. Barbie-Club.com 310 F. 3d 293 (2^nd Cir. 2002).  While both cases address more procedural issues rather substantive issues, they illustrate Judge Sotomayor’s experience in dealing with the dense statutory requirements that are so often critical in IP and media law cases.  In Storey v. Cello Holdings, LLC, Sotomayor addressed the ever growing conflict between trademark rights holders and internet domain-name registrants, “where the former seek to prevent consumer confusion by policing others’ use of the trademarks that identify their goods, services or identities, the latter have acquired rights in domain names, which may be identical or confusingly similar to trademarks, through a first-come, first-serve process that does not consider trademark rights.”  Id. at 373.  Sotomayor overturned the Southern District of New York’s ruling that a trademark owner’s earlier litigation under the Uniform Domain-Name Dispute-Resolution Policy (UDRP) barred it from seeking relief under the Anti-cybersquatting Consumer Protection Act (ACPA). 
          In Mattel Inc. v. Barbie-club.com, 310 F. 3d 293 (2^nd Cir. 2002), she held that a federal court may obtain in rem jurisdiction over a domain name under the ACPA only in a district in which the domain name registrar or other domain-name authority is located.  While the ruling was clearly based on plain language of the ACPA, Judge Sotomayor explicitly rejected the prevailing thought that federal court jurisdiction could be created in any federal district merely by “depositing” written evidence of the domain registration with the trial court.  If Judge Sotomayor is confirmed as the next Supreme Court Justice, she would be the only justice to come to the bench with prior experience ruling on cyberlaw issues.