Life as an IP Lawyer: Washington, D.C.

The AmeriKat's professional life, be it on the Kat or sat at her desk litigating her hours away, involves a huge amount of coordination, support and opposition with lawyers from all over the world. One of the IPKat's key objectives is to bring this global IP community closer together by sharing IP decisions, legislation and practice from across the world with our readers, with the aim that by understanding our unique perspectives on the culture of IP practice we can work together to make IP a success story for innovators, creators, users and the public. With those grand aims, the AmeriKat thought it would be worthwhile to ask the next generation of global IP lawyers to illuminate IP practice in their jurisdiction, as well as to give readers some fun reading over their lunch-al-desko

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Rachel Fertig

For the ninth in the series, we travel 3600 miles south west to Washington, D.C., where Rachel Fertig (former Ringer Honors Fellow at the US Copyright Office and soon-to-be associate at Morgan Lewis) is working to break down the silos of IP specialties, dreams of practicing in Milan and lunch with Barbara Ringer.  The AmeriKat randomly met Rachel while waiting for a cab on the streets of DC after last year's ChIPs Next Generation Event, so for those of you attending this year's NextGen and Summit Rachel has some DC tips for you!


**The views expressed in this article are those of the author, Rachel Fertig, and do not represent the official views of the U.S. Copyright Office.

What can you see from your office window right now?

This is actually a long-running joke among Copyright Office staff, but most of us don’t have windows. The Copyright Office is part of the Library of Congress and is located in the Madison Building—originally designed as a storage facility for the Library’s rapidly expanding collection of creative works. The Library’s staffing needs expanded over time as well, so room was also made in the Madison Building for the Copyright Office and other Library staff. That said, when you are lucky enough to get a window, the view is quite stunning because the Office sits at the top of Capitol Hill in Washington, DC and has views of Congress, the Jefferson Building (the main Library building), and the Supreme Court.

When did you know that you wanted to pursue a career in IP?

I was really interested in fashion, economics, and politics growing up, and I distinctly remember telling my classmates in high school that I wanted to pursue a career in international intellectual property law (not that I completely understood what that meant). When I started college, I decided to triple-major in International Political Economy, French, and Asian Studies, and wrote my senior thesis on combating counterfeit pharmaceutical production in China. I continued to study IP and international trade in law school, and was fortunate to turn a summer internship with the Association of American Publishers into a permanent counsel position, where I worked on both international copyright enforcement and domestic copyright law modernization.

Although my practice has focused on copyright, my love of fashion and branding still shows up in my “trademark” style of only wearing Louboutins—which started with the three essential pairs I bought as a law school graduation present.

That building to the north east is the Madison Building
(Photo credit: Carol Highsmith, Library Congress)

Walk us through a typical day...

My typical day starts around 5:00am with a “high-intensity interval training” workout, which helps boost my energy for the day. Then I get ready for work, walk my dog, and listen to my morning news podcasts on my walk to the office. As a Ringer Fellow, my day could focus on domestic and/or international copyright law questions.  The Barbara A. Ringer Copyright Honors Fellowship gives selected young lawyers an 18- to 24-month opportunity to work as an attorney-advisor across all departments within the Copyright Office, including the Office of General Counsel and Office of Policy & International Affairs.

During my time at the Copyright Office I’ve worked on a variety of projects from helping to develop the U.S. Government’s position for the Supreme Court’s review of Star Athletica, L.L.C. v. Varsity Brands, Inc. (addressing the scope of copyright protection for designs incorporated into useful articles, e.g., graphic designs on a cheerleading uniform) to supporting the Office’s public policy study evaluating the effectiveness of ISP safe harbors and online copyright protection (the Section 512 Study) to reviewing and updating the 1,168-page Compendium of U.S. Copyright Office Practices (2017 ed.), which provides public guidance on just about everything related to copyright registration and recordation under U.S. law.

I usually left the office around 7:30pm, took things to finish reading, walked home (in sneakers, not the Louboutins), cooked dinner, and unwound from the day reading with my dog.

(P.S. Applications for the Ringer Fellowship are being accepted from July – September 15 this year.)

What are the key differences in your system that clients/other lawyers from outside the jurisdiction find surprising or strange?

U.S. copyright law is, I think, quite well understood around the world, but our system of music licensing is probably the thing that most lawyers from outside the United States would find “strange.” Whereas many countries have collective rights organizations that can efficiently license all necessary rights for public performance of musical works, the U.S. licensing system involves: (1) multiple collective rights organizations (called performing rights organizations, or “PROs”); (2) oversight from the Department of Justice’s Antitrust Division and rates set by federal district courts for the two largest PROs; and (3) a default rule allowing a single author of a jointly-authored work to license the entire work without the consent of co-authors. Digital-interactive public performance rights for sound recordings are negotiated in the free market (e.g., Spotify), although digital-non-interactive public performance rights for sound recordings are governed by a statutory license with rates determined by an administrative panel of judges (the Copyright Royalty Board). And beyond performance rights, U.S. copyright law involves a mix of other collective rights organizations, free market negotiations, as well as statutory and compulsory licenses. Helpfully, the Copyright Office published an overview and recommendations for simplifying this system in 2015: Copyright and the Music Marketplace.

One other quick issue to note is that the United States is a common-law system with 13 separate “circuits” in which the appellate courts set binding precedent for their geographic area of jurisdiction. This means that the binding interpretation of the Copyright Act may differ between these circuits, which is referred to as a “circuit split.” To resolve such splits, parties often ask the Supreme Court to review a case and provide a unifying interpretation of the law. For example, before the Supreme Court took the Star Athletica case, there were as many as nine separate tests for determining the scope of copyright protection for an artistic feature incorporated into a useful article. These ranged from the Fifth Circuit’s “marketability” test (essentially finding an artistic feature protectable by copyright if it would be marketable as art after being separated from the useful article) to the Second Circuit’s “design-process” test (protecting designs resulting from aesthetic choices instead of functional considerations). The Supreme Court rejected both of these tests and crafted a new unified standard in March 2017.

Rachel and her Louboutins
(Photo credit:  Emma Raviv, co-Ringer Fellow)

What are the key challenges that are facing the next generation of IP lawyers in your jurisdiction? How are those challenges different from the previous generation?

As a millennial, I’m part of the “next generation” of IP lawyers. From discussions with my peers as well my five years of practice in DC, I think the biggest challenge for the next generation of IP lawyers is to work more collaboratively across IP specialties and business sectors to develop policies, businesses, and enforcement strategies that foster a sustainable creative economy. The current generation has identified the stumbling blocks, for instance, the ways copyright and internet laws are not meeting critical needs of the content and tech industries or the public. The next generation, particularly in the copyright sector, needs to attract talented, tech-savvy lawyers who can develop solutions that support long-term creativity and innovation. To do so, these IP lawyers need to actively work to break down the silos between different IP law specialties because everything is intertwined in the digital economy.

For my part, as co-chair of the DC Chapter of the Copyright Society, I’ve worked on reaching out to other IP groups and hope to foster more cross-IP dialogue going forward.

What are the misnomers that people have about IP practice in your jurisdiction?

There are probably more misnomers than one can count. One big one is that people think the U.S. Copyright Office is part of the U.S. Patent and Trademark Office (“PTO”). As noted above, the Copyright Office is actually part of the Library of Congress. Although the PTO does have a great copyright group, section 701 of the Copyright Act directs the Copyright Office to:

(1) administer the Copyright Act (including all registration and recordation of copyrights);
(2) advise Congress on national and international issues relating to copyright;
(3) assist other federal agencies and the courts on copyright matters;
(4) participate in international meetings (like WIPO);
(5) conduct studies on copyright law and administrative policy; and
(6) provide public education about copyright.

I would note, however, that the somewhat anomalous legal structure of the Copyright Office has been the subject of repeated discussion in Congress about whether the Office should be part of a unified IP Office, part of the Patent and Trademark Office, or made into an independent agency. This discussion is part Congress’ ongoing review of the Copyright Act, which has led to legislative proposals such as the CODE Act.

If you could change one thing about IP practice in your jurisdiction, what would it be?

I would love to create more entry-level jobs for young lawyers to work on copyright law and policy. Through the Copyright Society and the internship program at the Copyright Office, I’ve met many students with a passion for music, film, books, photography, technology, and software who want to find a way to work in copyright when they graduate. Jobs right out of law school, however, are hard to find at a law firm or otherwise, but the need for more copyright lawyers seems apparent with creation, sharing, and adaptation of copyrighted works becoming a key part of popular digital culture from internet memes to musical mashups to fanfiction.

What gives you the biggest thrill in your job?

Without a doubt, the biggest thrill for me is meeting creators and learning how and why copyright protection has made it possible for them to write, film, compose, and code some of the most enlightening and entertaining works that help to connect people around the globe.

What are the top trends or cases that we should be looking out for in your jurisdiction?

Trends in fair use analysis are worth watching—and summaries of notable decisions are posted on the Copyright Office’s Fair Use Index.

The cherry blossoms in DC
(Photo credit:  Rachel Fertig)

Specific non-fair use cases to watch include:

• United States v. Broadcast Music Inc. This case is currently on appeal in the Second Circuit and is likely to have a significant impact on how the two largest PROs in the United States license performance rights for musical works. (Docket No. 16-cv-03830).

• Capitol Records, LLC v. ReDigi Inc. This case is also on appeal in the Second Circuit and will address whether copyright law permits consumers to resell legally-acquired digital content as is permitted under the “first sale” doctrine for physical copies of books, CDs, and other copyrighted works. (Docket No. 16-cv-02321).

• Green v. U.S. Department of Justice. This case is in the D.C. district court and challenges the constitutionality of the Copyright Office/Library of Congress rulemaking process that creates 3-year exemptions to statutory prohibitions against circumvention of technological protection measures that control access to copyrighted works. These exemptions provide important flexibility in the law to facilitate free expression, access for the visually impaired, and technology research and innovation. (Docket No. 16-cv-01492)

I think it’s also important to watch Congress to see if they enact any legislation to address issues from the House Judiciary Committee’s first policy proposal, including modernization of music licensing and the creation of an administrative court to adjudicate small copyright claims.

Additionally, I’d monitor announcements from the Copyright Office, which is working on policy reports and recommendations regarding safe harbors and online protection of copyrighted works; moral rights; mass digitization; and exceptions and limitations for cultural institutions (libraries, archives, and museums).

To be successful in your jurisdiction, what are the key skills a young IP lawyer needs?

To be successful, a young lawyer needs passion, excellent research and writing skills, and an open mind.

Many copyright issues involve contrasting judicial and scholarly opinions, evolving technologies, and additional legal considerations from free speech to antitrust to international trade. Although there are few entry-level copyright law jobs, it has certainly been my experience that young lawyers are eagerly included in the field when they can combine genuine interest with excellent research and compelling analysis of the law (as it is or should be).

What are you going to/what did you eat for lunch today?

For lunch today, I’ve made an arugula salad with grilled salmon, herbed quinoa, roasted peppers, red onions, avocado, and pesto vinaigrette.

What other jurisdictions do you work with the most in your practice?

My work focuses on U.S. copyright law, but during my fellowship, I also examined issues in Canada, Mexico, and assisted other attorneys in the office with China, India, and the Middle East. Lawyers in the Office of Policy & International Affairs are assigned various regions and help the Office track copyright developments around globe in order to provide guidance to the U.S. as well as foreign governments.

Looking into your crystal ball, where do you see the profession in 10 years’ time?

Today, the copyright debates in Washington are often described as battles in a copyright v. tech war. In 10 years, however, I think (hope!) there will be a more collaborative legal environment for three main reasons: (1) the content industries will have more efficient and effective strategies for adapting to and embracing new technologies (e.g., blockchain); (2) lawyers will have greater technology literacy, which will improve communication between the tech and copyright lawyers; and (3) Congress will have completed its copyright revisions, which will hopefully give courts greater guidance in balancing the public and private interests presented in modern copyright cases.

If you could practice IP law anywhere else in the world for a year, where would that be and why?

I would love to practice in Paris or Milan to learn about copyright, design, and trademark law in the fashion industry. Working on the Star Athletica case was such a fun way to mix my love of IP law and fashion, and I know that the protection strategies are a bit different in the EU, so I’d love to learn more about how they work.

If you could have lunch with someone famous in the IP world (judge, lawyer, inventor, politician, alive or dead), who would that be and why, and where would you take them?

The Great Hall at the Library of Congress
(Photo credit: Carol Highsmith)

Perhaps it’s because I’m currently serving as a Ringer Fellow, but I would love to have lunch with Barbara Ringer. For a number of projects, I’ve read memos she drafted in the 1950s and have been in awe at the clarity and longevity of her insights. Even more significantly, Barbara Ringer fought against discrimination to become the first female Register of Copyrights, led much of the drafting of the current Copyright Act, and was known for harmonizing divergent points of view on domestic and international copyright issues. She is the epitome of a role model. Given that she spent a good amount of time in Paris, I think it’d be lovely to talk with her about fighting for the rights of creators over brunch at Le Diplomate in DC.

What is the best piece of advice you have ever been given?

Be part of the solution, not part of the problem.

This is my mother’s go-to advice for any issue, and it has served me well professionally and personally. Instead of focusing on flaws, there always seems to be more value in working to create or support a solution that improves upon the status quo.

If our readers were to come to your city, what are the top three things you recommend they see, do and eat (in that order)?

See the Cherry Blossoms in peak bloom around the Jefferson Memorial (typically in late March or early April).

Go on the guided tour of the Library of Congress’ Jefferson Building, which includes explanations of the mosaics, quotes, and sculptures in the Great Hall.

Eat a burger. There’s so much good food to eat, but for the American experience, definitely have a burger. I’d recommend either the Grilled Bacon Smoke Burger at Del Campo (with grilled avocado, onions, smoked tomato, and provolone) or the Proper Burger at Duke’s Grocery (with melted gouda, dill pickles, charred red onions, Thai sweet chili sauce, rocket, garlic aioli, and a runny egg).