President Obama recently announced that he intends to nominate Judge Sonia Sotomayor to be a Justice of the U.S. Supreme Court, filling the seat vacated by Justice David Souter. If appointed, she could have a very significant impact on IP and technology issues. In private practice, Sotomayor frequently represented IP holders, and in her years on the bench, she has authored many opinions treating IP and technology related issues.

One such case is Swedenburg v. Kelly, which involved the regulation of internet wine sales. In that case, Sotomayor joined in the opinion of a three judge panel of the 2nd Circuit Court of Appeals holding that states may protect in-state wineries from out-of-state competition. The Supreme Court ultimately reversed that judgment in a 5-4 opinion in Granholm v. Heald. Judge Souter joined the majority in Granholm in holding that states cannot protect their own wineries from out of state competition. This case is particularly important to the technology community because it is the leading U.S. Supreme Court case addressing the application of the rarely invoked Dormant Commerce Clause to state regulation of internet commerce. With all of the automobile dealerships losing their franchises and the restructuring of the auto industry, look for significant legal action in the area of disintermediation.

As a district court judge, Sotomayor also wrote the opinions of the U.S. District Court (SDNY) in the influential copyright case of Tasini v. New York Times. In that case, Sotomayor ruled in favor of the periodical publisher defendants and against the freelance author plaintiffs. Her opinions in this case can be found here and here. Sotomayor's ruling seemed to strain the application of 17 U.S.C. § 201(c) which provides that

"copyright in each separate contribution to a collective work is distinct from copyright in the collective work as a whole, and vests initially in the author of the contribution. In the absence of an express transfer of the copyright or of any rights under it, the owner of copyright in the collective work is presumed to have acquired only the privilege of reproducing and distributing the contribution as a part of that particular collective work, any revision of that collective work, and any later collective work in the same series."

In this case, the defendants had simply made the plaintiff's articles a part of their content databases that they then licensed to others. Sotomayor was reversed by a three judge panel of the Second Circuit Court of Appeals with its refreshingly succinct analysis: "the District Court is mistaken." The Supreme Court similarly held that the defendants did not have a privilege under §201(c) of the Copyright Act to include the freelance articles in their electronic databases. Justice Ginsburg wrote the opinion, in which Justice Souter joined. It was a 7-2 opinion.

Sotomayor wrote the opinion of the U.S. District Court for the Southern District of New York in Castle Rock v. Carol Publishing Group. In that case, Sotomayor applied a fair use analysis in a copyright infringement case where the defendant had published a 132 page book titled "SAT: The Seinfeld Aptitude Test" which contained trivia questions about the television program. The plaintiff, which owned the copyrights in the television program Seinfeld filed suit alleging copyright infringement, and the defendant asserted the affirmative defense fair use. Sotomayor applied a "potential market" analysis in ultimately concluding that the market for works such as those created by the defendant is one that should properly be left to the Plaintiff's exclusive control. This case, and the cases that Sotomayor relied upon for her "potential market" analysis have been often criticized by leading authorities on copyright law, including Judge Richard Posner in his opinion in Ty v. PIL.

Sotomayor also wrote the opinion of the U.S. Court of Appeals for the Second Circuit in Sprecht v. Netscape, which addressed the issue of online contract formation. In Sprecht, the Court held that the plaintiffs were not bound by license terms applicable to free software where they would not have learned of the existence of those terms unless, prior to executing the download, they had scrolled down the webpage to a screen located below the download button. The Sprecht case has been recognized as a solid, common sense application of existing legal doctrine to the new territory of online contract formation.