Employment-Based Immigration: Fifth Preference EB-5 Implications

By James Reiser

I. Introduction

In 1990, Congress implemented the Employment-Based Immigration Fifth Preference EB-5 Program (hereinafter “EB-5” or “EB-5 Program”) to stimulate the United States economy by allowing foreign investors to invest capital into companies to create jobs.[1]  The program has become problematic due to social, economic, and political changes.  The program is flawed in many respects as it creates problems of fraud and corruption regarding background checks and document verification.  There are also national security concerns.  While there has been an immense influx of investment since deployment, the implications of the deployment of the program far outweigh the positive economic gains generated by it.  Undoubtedly, the program must be changed, or removed altogether, to repair the vulnerabilities and to reduce the number of problematic scenarios caused the program’s weaknesses.

The name was coined for the fifth preference visa that participants receive for taking part and being approved for the program.[2]  In 1992, Congress created the Immigrant Investor Program, also known as the Regional Center Program, which sets aside EB-5 visas for participants who invest in commercial enterprises in association with regional centers approved by the United States Citizenship and Immigration Services (hereinafter “USCIS”) based on proposals for the purpose of promoting economic growth.[3]  An investor and his family members are granted a two-year conditional permanent resident visa once investor documents are verified and specified immigration forms are approved.[4]

Section II gives a background of the program, including some statistical information, application and petition requirements, and other important information.  Section III provides a discussion of the legislative intent of the program.  Section IV discusses the economic changes that have occurred in the United States over the past three decades and how these changes make the program less appropriate given its intent.  Section V discusses the various implications that have come about because of the program, whether intended or not.  Section VI addresses the need for reformation of the program due to the vast number of problems that have been created by EB-5.

II. Requirements

USCIS administers the EB-5 Program, which has multiple requirements that must be met in order to qualify for approval to obtain a visa.[5]  One requirement is that EB-5 investors must invest in a new commercial enterprise established after November 29, 1990.[6]  Investors can alternatively purchase an existing business that is restructured to create a new commercial enterprise or expand the existing business through investment resulting in a forty percent increase in number of employees or an increase in net worth of the business occurs.[7]  A commercial enterprise is defined as “activity formed for the ongoing conduct of lawful business including, but not limited to: [a] sole proprietorship[,] [p]artnership (whether limited or general)[,] [h]olding company[,] [j]oint venture[,] [c]orporation[,] [b]usiness trust[,] or [o]ther entity, which may be publicly or privately owned.”[8]

The second requirement is that the investment in the new commercial enterprise must create ten full-time positions for at least ten qualifying employees, and the new commercial enterprise, or a subsidiary, must itself be the employer of the qualifying employees.[9]  If the new commercial enterprise is within a regional center, then the full-time jobs created can either be created directly by an employer-employee relationship between the enterprise and the person it employs or indirectly by an outsider of the enterprise but created as a result of it.[10]  A qualifying employee is

a U.S. citizen, lawful permanent resident, or other immigrant authorized to work in the United States including, but not limited to, a conditional resident, a temporary resident, an asylee, a refugee, or a person residing in the United States under suspension of deportation. This definition does not include the immigrant investor; his or her spouse, sons, or daughters . . . .[11]


Full-time employment is established by a qualifying employee working a minimum of thirty-five hours per week for the new commercial enterprise or indirectly due to the new commercial enterprise with the allowance of a job-sharing arrangement.[12]

The final requirement that must be met to obtain an EB-5 visa is that the investor invests a minimum capital amount which is generally one million dollars, or five hundred thousand dollars in a rural or high unemployment area.[13]  A high unemployment area or a targeted employment area is an area that at the time of investment has experienced an unemployment rate of at least 150 percent of the national average rate.[14]  A rural area is a region not within either a metropolitan statistical location as determined by the Office of Management and Budget or the outer boundary of a city or town having a population of 20,000 or more in consonance with the most recent decennial census of the United States.[15]

The petition and application process require that a potential immigrant investor candidate submit an I-526 Form, designated the Immigrant Petition by Alien Entrepreneur.[16]  The petitioner or applicant must meet each element of the petition by merely a preponderance of the evidence.[17]  If the I-526 Form is approved, then an I-485 Form, the Application to Register Permanent Residence or Adjust Status, is to be filed with USCIS to adjust status to a conditional permanent resident within the United States.[18]  Alternatively, a DS-260, known as the Application for Immigrant Visa and Alien Registration, is to be filed with the U.S. Department of State for an EB-5 visa abroad for the purpose of seeking admission to the United States.[19]  After approval of either of these documents, the EB-5 investor and his or her derivative family members are granted a 2-year conditional permanent residency in the United States.[20]

Regional centers are public or private economic units in the United States that aid in promoting economic growth, particularly designated by USCIS for participation in the Immigrant Investor Program.[21]  As of October 10, 2018 there are 887 approved regional centers; however, approval as a regional center does not constitute USCIS endorsement of activities of that regional center, does not guarantee compliance with U.S. securities laws and does not minimize or eliminate risk for the investor.[22]  USCIS provides a list of approved regional centers but also disclaims investment liability on its Immigrant Investor Regional Centers webpage.[23]  USCIS further provides that the information available on this webpage is for informational purposes only.[24]

III. Legislative Intent

Congress passed the Immigration Act of 1990 to encourage investors and entrepreneurs with an interest in American business to invest capital.[25]  If an individual met the statutory requirements of the EB-5 program, then they were effectively on a fast track to obtaining a visa and ultimately purchasing conditional citizenship without having to go through the nationalization process by “purchasing” citizenship through investment.[26]  The congressional intent of the program was not incentivizing “purchasing visas,” but to inject capital into the United States from non-citizens.[27]  One scholar believes that

[t]he requirement of active engagement in the new enterprise is aimed at targeting an entrepreneur’s human capital investment contribution; this demonstrates Congress’s intent to attract entrepreneurs and not merely investors. The Senate Report also reveals specifically that the purpose of the EB-5 program was to create jobs for U.S. workers and to infuse new capital into the U.S. economy, “not to provide immigrant visas to wealthy individuals.”[28]


Essentially, the program incentivizes individuals with backgrounds and knowledge of running successful businesses to do so within the United States.  But while the idea of the program initially worked in theory, the early frameworks needed reform in order to ensure the EB-5 Program worked effectively.[29]

IV. Changing Times

            Since the creation of EB-5, there have been major improvements to the economy, including an increase in gross domestic product (hereinafter “GDP”), a decrease in unemployment, and an increase in United States stock markets.[30]  The program was enacted in 1990 and minimally altered in 1992.[31]  In 1990, the United States GDP was about $5,980,000,000 according to the World Bank.[32]  Compare this to the GDP of today, according to the U.S. Bureau of Economic Analysis, the United States GDP as of second quarter (Q2 2018) was $20,410,000,000, more than three times the 1990 valuation.[33]  The United States stock markets recovered in 1992 to a value equal to where they had been before a dip in 1987.[34]  The Immigration Act of 1990, which included the enactment of the EB-5 program, was created in order to provide employment opportunities for U.S. workers and to infuse capital into the country from foreign sources.[35]  Congress estimated as many as 4,000 foreign investors and their families would utilize the program to seek legal residence in the United States, bringing with them $4 billion in investment, ultimately creating 40,000 jobs each year.[36]  It must be noted that the United States Stock Market dipped substantially in October of 1987 and dipped again substantially in October, 1990,[37] further incentivizing Congress to come up with a program promoting a generation of capital investment and jobs in the United States.

Sparking investment by non-citizens in order to create jobs for qualified workers that do not have to be United States citizens is highly beneficial, especially because the United States unemployment rate fluctuated between 5.2 percent in 1989 and 7.5 percent in 1992.[38]  However, this bolster to the economy is unnecessary when unemployment is low.  As of July 2018, U.S. unemployment was at 3.9 percent, compared to 9.7 percent in 1982,[39] which may have triggered discussions of immigrant investor or similar programs at that time.  Less than 10 percent of total available EB-5 visas were issued between 1990 and 2010.[40]  This statistic shows that the program was not initially utilized as intended, partially due to the strict requirements and restrictions that were later relaxed or eliminated to increase EB-5 use.[41]  However, in easing requirements to expand access, increased use of the program has come with a fair share of vulnerabilities and unintended problems.

V. Implications

As requirements and regulation for the program have eased, there have been a growing number of concerns, including fraud.[42]  In October 2013, USCIS and the U.S. Securities Exchange Commission (hereinafter “SEC”) published an investor alert warning EB-5 investors that Regional Centers have falsely guaranteed a return and misused funds provided by EB-5 investors.[43]

With the immigration demographic constantly changing, along with an economy that has rapidly expanded since 2008, the number of applications received by USCIS has increased from 1,258 in 2008 to 12,165 in 2017.[44]  There is an uneven distribution of visas allocated to various countries as evidenced in 2014 when 10,692 applications were approved, over 85 percent of which were granted to Chinese investors.[45]  This bias potentially lies in the large population and the strong economy of China, but as the statistics show there is clearly a larger number of individuals coming from China than from the rest of the countries in the world combined.[46]  Although EB-5 and similar programs were not intended to be a safe-haven for corrupt officials, anyone with sufficient funds, intelligent counsel, and minimally sufficient evidence of funds can get a U.S. visa through the program.[47]  Powerful foreign officials suspected of corruption have utilized the EB-5 program to escape prosecution in their home country.[48]

As use of the program has expanded, there has been discussion of whether the capital requirements of $1,000,000 and $500,000 should be raised and whether an additional net worth requirement should be applied to investors for the EB-5 program.[49]

The United Kingdom, Netherlands, Australia, and Canada have similar programs with different requirements.[50]  These programs have been sought out by wealthy Chinese criminals and corrupt political figures, as a means of fleeing and expediting citizenship to escape the clutches of prosecution.[51]

VI. Conclusion

            Looking forward, there is a possibility for a decision in November 2018 to raise the minimum investment amounts for EB-5 investors.[52]  There is also a possibility for new legislation in November 2018 that would affect EB-5 relating to Department of Homeland Security appropriations for fiscal year 2019.[53]  Further, a deadline for discussion of EB-5 regional investor centers has been pushed to December 7, 2018; this is the date of the Continuing Resolution to extend the EB-5 Program.[54]  There has been intense debate about what is next for the EB-5 program.  There are many aspects to the program that should be amended or altered to meet the change in economic, political, and social circumstances.  Reform of the program is necessary in order to patch the vulnerabilities and slough of problems that have come about with the expanded interest in the program.  There is an immense need to increase the standard of review of evidenced funds of investment.  Further, business plans need to be analyzed and followed in order to ensure that funds are not misappropriated by individuals utilizing the investment for their project.  The initial investment minimum must be increased to meet the stronger economic conditions and in order to compete with other countries’ investment programs.  A third tier should be added that targets higher income and more developed areas that require greater investment and greater job creation.  This third tier should be the most highly regulated and analyzed by officials.  Finally, there needs to be more disclosure of statistical data, including a registry of individuals in the U.S. and their use of EB-5 funds to limit fraud and corruption.  This will allow for smoother regulation of cases so that misallocated funds can be recouped faster and more efficiently

Fraud, corruption, internal bias, increase of capital requirements, regulation, and data collection of investors and projects are just some of the areas where major alterations could be a key to the future success of the EB-5 Program.  Comparing similar programs of other countries, current economic data, future economic outlook, and analyzing problematic areas of the current programs will allow an efficient and necessary alteration to the EB-5 Program.  Immigration to the United States has always been a touchstone to expansion and growth of the country.  It is vital to allow people to come to the United States.  Nonetheless, fairness and safety are integral and are at stake in the EB-5 Program that has been in place for nearly three decades.

[1] EB-5, Immigrant Investor Program, U.S. Citizenship & Immigr. Services, https://www.uscis.gov/eb-5 (last visited Oct. 29, 2018).

[2] Id.

[3] Id.

[4] EB-5, Investors, U.S. Citizenship & Immigr. Services, https://www.uscis.gov/working-united-states/permanent-workers/employment-based-immigration-fifth-preference-eb-5/eb-5-investors (last updated May 8, 2017).

[5] EB-5, Immigrant Investor Program, supra note 1.

[6] Id.

[7] About the EB-5 Visa Classification, U.S. Citizenship & Immigr. Services, https://www.uscis.gov/working-united-states/permanent-workers/employment-based-immigration-fifth-preference-eb-5/about-eb-5-visa-classification (last updated Mar. 27, 2018).

[8] Id.

[9] Id.

[10] Id.

[11] Id.

[12] Id.

[13] Id.

[14] Id.

[15] Id.

[16] EB-5 Investors, supra note 4.  Necessary documentation includes: Form I-526, Immigrant Petition by Alien Entrepreneur, which also needs evidence of new commercial enterprise investment, evidence that the investor is or will be engaged in the management of the new commercial enterprise through either day-to-day managerial control or through policy formulation, evidence of investment of required capital amount ($1 million or $500,000 depending on the area), proof that the funds being utilized were obtained through lawful means (by any one of the following: foreign business registration records, relevant enterprise entity, personal, or any other tax returns filed within the last 5 years, evidence identifying any other source of capital, certified copies of judgments or civil/criminal litigation (pending or otherwise) involving money judgments from any court in or outside the United States within the past 15 years), evidence that the new commercial enterprise will create at least 10 full-time positions for qualifying employees or a business plan showing that the nature of the projected size of the new enterprise will result in a need for at least 10 qualifying employees, and evidence that the number of existing employees is or will be maintained for a 2-year period, with photocopies of tax records, Form I-9, Employment Eligibility Verification, or other relevant documents for qualifying employees, along with a business plan in support of the petition.  See id.

[17] Matter of Chawathe, 25 I. & N. Dec. 369, 375-76 (A.A.O. Oct. 20, 2010).

[18] EB-5 Investors, supra note 4.

[19] Id.

[20] Id.

[21] EB-5 Immigrant Investor Regional Centers, U.S. Citizenship & Immigr. Services, https://www.uscis.gov/working-united-states/permanent-workers/employment-based-immigration-fifth-preference-eb-5/eb-5-immigrant-investor-regional-centers (last updated June 6, 2018).

[22] Immigrant Investor Regional Centers, U.S. Citizenship & Immigr. Services, https://www.uscis.gov/working-united-states/permanent-workers/employment-based-immigration-fifth-preference-eb-5/immigrant-investor-regional-centers (last updated Sept. 10, 2018).

[23] Id.

[24] Id.

[25] History of the EB-5 Program, EB-5 investors, https://www.eb5investors.com/eb5-basics/history-of-eb5 (last visited Nov. 8, 2018).

[26] See P.J. Tobia & Marina Lopez, How Chinese Millionaires Buy U.S. Citizenship, PBS News Hour (May 14, 2015, 11:07 AM), http://www.pbs.org/newshour/updates/chinese-millionaires-buy-u-s-citizenship/.

[27] Beth MacDonald, The Immigrant Investor Program: Proposed Solutions to Particular Problems, 31 Law & Pol’y Int’l Bus. 403, 409 (2000) (“The main goals of the program are to create new employment for U.S. workers and to infuse new capital into the country and not to provide immigrant visas for wealthy individuals.” (internal quotation marks omitted)).

[28] Annie Anjung Lin, Splitting the EB-5 Program: A Proposal for Employment-Based Immigration Reform to Better Target Immigrant Entrepreneurs and Investors, 18 Chap. L. Rev. 527, 537-38 (2015) (citation omitted).

[29] MacDonald, supra note 27 (explaining the weakness of the 1990 Act).

[30] See Databases, Tables & Calculators by Subject, U.S. Dep’t Labor, https://data.bls.gov/pdq/SurveyOutputServlet (last visited Nov. 7, 2018); see also GDP (current US$), World Bank National Accounts Data, And OECD National Accounts Data Files, World Bank, https://data.worldbank.org/indicator/NY.GDP.MKTP.CD?end=2017&locations=US&start=1990 (last visited Aug. 31, 2018); Dow Jones – 100 Year Historical Chart, Macrotrends, https://www.macrotrends.net/1319/dow-jones-100-year-historical-chart (last visited Aug. 31, 2018).

[31] MacDonald, supra note 27.

[32] GDP (current US$), supra note 30.

[33] Gross Domestic Product: Second Quarter 2018 (Second Estimate); Corporate Profits: Second Quarter 2018 (Preliminary Estimate), U.S. Bureau Econ. Analysis (Aug. 29, 2018), https://www.bea.gov/news/2018/gross-domestic-product-second-quarter-2018-second-estimate-corporate-profits-second.

[34] Dow Jones – 100 Year Historical Chart, supra note 30.

[35] History of the EB-5 Program, supra note 25.

[36] Christine Ryan, Too Porous for Protection? Loopholes in EB-5 Investor Visa Oversight Are Cause for National Security Concern, 16 S.D. Intl. L.J. 417, 425 (2015).

[37] Dow Jones – 100 Year Historical Chart, supra note 30.

[38] Databases, Tables & Calculators by Subject, supra note 30.

[39] Id.

[40] Ryan, supra note 36, at 425.

[41] Id.

[42] See generally William A. Haddad, EB-5 Visa Fraud Cases-What Practitioners Need to Know, Pasquarello, Fink, Haddad, LLC, Sept./Oct. 2017, http://www.pasqfinklaw.com/uploads/8/1/9/0/8190135/eb5_visa_fraud_article.pdf.

[43] Ryan, supra note 36, at 433 (2015) (citing Investor Alert: Investment Scams Exploit Immigrant Investor Program, U.S. Sec. & Exchange Commission, Oct. 9, 2013, https://www.sec.gov/oiea/investor-alerts-bulletins/investor-alerts-ia_immigranthtm.html).

[44] Number of Form I526, Immigrant Petition by Alien Entrepreneur, by Fiscal Year, Quarter, and Case Status 20082018, U.S. Citizenship & Immigr. Services, https://www.uscis.gov/sites/default/files/USCIS/Resources/Reports%20and%20Studies/Immigration%20Forms%20Data/Employment-based/I526_performancedata_fy2018_qtr2.pdf (last visited Sept. 2, 2018).

[45] Taylor C. Byrley, Selling Citizenship to the Highest Bidder: A Proposal to Reform the United States EB-5 Investor Visa Program, 27 Ind. Intl. & Comp. L. Rev. 79, 96 (2017).

[46] Lee Li, Navigating EB-5 Visa Usage Statistics: A Historical and Current Perspective, 5 Int’l Perspectives 68 (2017), https://iiusa.org/blog/wp-content/uploads/2017/12/Navigating-EB-5-Visa-Usage-Statistics2C-A-Historical-and-Current-Perspective.pdf.

[47] Kyra Gurney et al., Suspected of Corruption at Home, Powerful Foreigners Find Refuge in the U.S., ProPublica (Dec. 9, 2016, 9 A.M.), https://www.propublica.org/article/corrupt-foreign-officials-find-refuge-in-united-states.

[48] Id.

[49] Byrley, supra note 45, at 111.

[50] See Quick Countries Comparison, Best Citizens, https://best-citizenships.com/countries.htm (last visited Oct. 4, 2018) for a list of 54 countries that have investor-based visa and immigration programs with a short summary comparing the program of each country.

[51] Andy J. Semotiuk, EB-5 Fraud Highlights Risks Of Investor Program, Forbes (Jan. 5, 2015, 1:50 P.M.), https://www.forbes.com/sites/andyjsemotiuk/2015/01/05/the-eb-5-investor-program-risks-and-rewards/#1fb1dd6d43a5 (referring to an increase of corrupt Chinese officials seeking to utilize the Australian Investor Based Immigration program, similar to the EB-5 program of the United States; there is cause for concern that this problem will also occur, if it has not already, through utilization of the EB-5 Program).

[52] RC program authorization (12/7/2018), Lucid Prof. Writing EB-5 Blog (Sept. 28 2018), https://blog.lucidtext.com/.

[53] Regulations update (Fall 2018), Lucid Prof. Writing EB-5 Blog (Oct. 17, 2018), https://blog.lucidtext.com/.

[54] RC program authorization (12/7/2018), supra note 50.


A Political Gaslight: Attorney General Jeff Sessions and Matter of A-B-

By Jessica Senat*

Gregory Anton: You see how it is, Elizabeth.

Elizabeth: I see JUST how it is, sir.[1]


Part I: Introduction

In Matter of A-B-,[2] Attorney General Jeff Sessions (hereinafter “A.G. Sessions”) reversed a decision that allowed women fleeing domestic violence to apply for asylum.[3]  A.G. Sessions used a rare authority, the “referral and review mechanism,” to refer the case to himself.[4]  In the opinion, he dismissed domestic and gang violence as a claim that is “unlikely to satisfy the statutory grounds for proving group persecution that the government is unable or unwilling to address.”[5]  The governing asylum statute states that an “applicant must establish that race, religion, nationality, membership in a particular social group, or political opinion was or will be at least one central reason for persecuting the applicant” when seeking asylum protection.[6]  A.G. Sessions did not implement new standards that may bar individuals who suffer gender-based violence from applying for refugee protection; his holding is directed at the Board of Immigration Appeals’ (hereinafter “BIA”) failure to apply precedent law.[7]  It is hard to distinguish this holding from surrounding dicta because the holding is overshadowed by his outdated views on gender-based persecution, over-generalized statements without factual backing, and inflated legal requirements that cause more confusion than clarity.

A.G. Sessions’ decision reflects a harsh reality: adjudicators still struggle to accept gender-based violence as a legitimate basis for persecution under refugee law.  This blog post will first discuss the legislative history of the asylum statute and the concept of gender-based persecution.[8]  The Refugee Convention, which was created as an answer to the refugee crisis after World War II,[9] was the foundation for asylum law in the United States.  It did not speak to gender-based violence as the drafters did not realize it existed.[10]  This  blog post will then discuss the “Particular Social Group” requirement.  Legislative history has shown that asylum law is amorphous.  It is riddled with inconsistent holdings between both administrative and judicial adjudication.[11]  The BIA attempted to provide a standard in determining the PSG requirement in Matter of Acosta, but the decision only fueled more confusion amongst the courts.[12]

Parts IV and V discuss how A.G. Sessions’ opinion arguably gaslights the American public.[13]  He trivializes gender-based persecution and undermines immigration policy by (1) abusing a rarely used procedural tool to refer immigration cases to himself; (2) incorporating over-generalized statements without factual or precedential support; and (3) conflating requirements under the asylum statute.  This blog post proposes administrative and legislative reform: the BIA should establish separate regulatory standards as guidance to determine whether gender-based violence is “acceptable” persecution under the immigration statute.  Furthermore, there should be a push for reforming the self-referral provision to prevent abuse of the authority.

Part II: Legislative History

            The history of refugee law in the United States errs more on the side of exclusivity than inclusivity.[14]  Discriminatory policies were prevalent throughout history.  An example of this is the Emergency Quota Acts of 1921 and 1924.[15]  Congress designed a quota system that limited the number of minorities permitted to enter the United States and made the process easier for Northern and Western Europeans.[16]  Remnants of these discriminatory policies remained under the enactment of the Immigration and Nationality Act (hereinafter “INA”) in 1955 and even after the quota system was eliminated under the amendments to the INA laws.[17]

In 1967, the United States began to take steps to eliminate discriminatory refugee policies.  Today’s immigration and refugee laws are based on the 1951 United Nations Convention Relating to the Status of Refugees or Refugee Convention.[18]  The Refugee Convention was a response to the refugee crisis left in the wake of World War II.  Its defined purpose was to protect any “person who faces serious human rights abuses where a state has failed in its fundamental obligation of protection for reasons of the person’s status or beliefs, resulting in fundamental marginalization and an inability of the person to vindicate his or her rights in his or her home country.”[19]  Under the Convention, an applicant only needed to show that he or she had a “well-founded fear” of persecution.[20]

Congress incorporated the provisions of the Refugee Convention when it signed the United Nations Protocol Relating to the Status of Refugees (the Protocol of 1967).[21]  However, it was not until the Refugee Act of 1980 where the United States removed geographical or ideological biases and expanded the definition of “refugee” to include all persons regardless of ethnicity or nationality.[22]  It also included the new Particular Social Group (hereinafter “PSG”) standard.  Under this standard, an applicant is required to prove that he or she is fleeing persecution on the basis of being a member of a particular social group.[23]

Part III: The Standard

Under 8 U.S.C. § 1158(b)(1)(B)(i),[24] the PSG requirement has been the source of various interpretations since enactment.  Mainly, the ambiguity of the term has caused many contradictions between the circuit courts and the BIA.  In 1987, the BIA sought to provide clarification on the term in Matter of Acosta.[25]  It stated that the “shared characteristic” is found in the fact that it cannot be changed.[26]

In 2008, the BIA established additional requirements for satisfying the PSG standard.[27]  In Matter of S-E-G- and Matter of E-A-G-, the BIA concluded that in order to satisfy the PSG standard, the group must be based on (1) an immutable and shared characteristic; (2) be socially visible; and (3) particularly defined.[28]  The BIA stated that “[t]he essence of the ‘particularity’ requirement . . . is whether the proposed group can accurately be described in a manner sufficiently distinct that the group would be recognized, in the society in question, as a discrete class of persons.”[29]  In Matter of M-E-V-G-,[30] the BIA further defined particularity as having “definable boundaries”; it must be defined specifically and not be “amorphous, overbroad, diffuse or subjective.”[31]  The “social visibility” element is satisfied if the society in question perceives the group as socially distinct.[32]  The PSG standard also requires causation, referred to as “nexus.”[33]  Nexus is established when the applicant shows that “his membership in a particular social group was or will be a central reason for his persecution.”[34]  The BIA stated that the persecutors’ views and motives are important in establishing nexus.[35]

a. Jumping Through Hoops of Fire: The Problem of Circularity with Social Distinction and Particularity Standards 

The BIA claimed to have clarified the PSG elements as separate but necessary.[36] However, BIA’s nitpicking creates a narrow standard for applicants, increases the burden of proof, and confuses the requirements with overlapping definitional terms.  In Rejecting the Children of Violence: Why U.S. Asylum Law Should Return to the Acosta Definition of “A Particular Social Group, Rachel Gonzalez Settlage noted the difficulty in proving the social distinction and the particularity requirement.[37]  Settlage stated “[p]articularity . . . suggests hard limits and requires specificity of definition. A group cannot be too broad or too diffuse.”[38]  However, if the applicant provides evidence proving that the society in question uses specific parameters to define the social group, rendering them “socially distinct,” these parameters may not satisfy the particularity requirement if the BIA finds that it is too “broad” or “amorphous.”[39]  Although Settlage discusses this difficulty for applicants that are fleeing gang violence,[40] the standards can frustrate applicants from various backgrounds.

b. The Difficulty of Proving Gender-Based Persecution[41]

The phrase “jumping through hoops of fire” is an accurate description of the process applicants must go through in order to establish asylum protections from domestic abuse.[42] Historically, the laws did not address gender-based violence.[43]  The definition of gender-based persecution can be divided into two categories: being persecuted as a woman and being persecuted because of being a woman.[44]  In Gender and the “Membership in A Particular Social Group” Category of the 1951 Refugee Convention, Andrea Binder stated that being persecuted as a woman relates to “forms of persecution that are gender-specific, such as rape, female genital mutilation (FGM), or domestic abuse.”[45]  The concept that women are persecuted because they are women “is often discussed in the context of the ‘membership in a particular group’ category.  The definition of refugee is deficient in addressing the concerns of persecuted women.”[46]

Historically, the Refugee Convention’s “main concern was to address the mass persecutions suffered by the European Jews and other targeted persons based on racial, religious and political grounds.”[47]  According to Binder, traditional definitions of human rights violations focused on abuse from the state instead of social or economic rights.[48]  This led to characterizing a woman’s experience as a “private matter” to be addressed by the government.[49]  Such “gender deficiency”[50] within the refugee law should not be carried over to modern day interpretations of asylum statutes.

Part IV: Modern-Day Gender-Based Persecution

It is not a secret that U.S. asylum laws do not include gender as one of the enumerated bases for persecution.[51] The BIA often conflates the two types of persecution women suffer into one broad category of domestic violence or dismisses them altogether.[52]  The archaic perspectives that places domestic violence as a private matter to be handled within the confines of the home is harmful for those who seek legal recourse in any context.  With this backdrop, Matter of A-R-C-G- is still viewed as a huge step forward for asylum law.  At the time, it signaled that the BIA was finally ready to address the problem of “gender-deficiency” within U.S. immigration laws.

a. Matter of A-R-C-G-

In Matter of A-R-C-G-,[53] respondent, a mother of three minors at the time, had entered the United States from Guatemala in 2005 to flee from her abusive husband.[54]  She filed a timely application for asylum and withholding of removal on behalf of herself and her three children.[55] It was undisputed that respondent was repeatedly abused by her husband.[56]  Respondent contacted the police many times, but the police failed to help her and arrest the husband after he hit her.[57]  She knew that her husband would harm her if she returned to Guatemala.[58]

On appeal, the Department of Homeland Security (hereinafter “DHS”) subsequently conceded that she satisfied the PSG requirement and only requested remand for further factual development.[59]  The BIA held that respondent successfully satisfied the particular social group requirement.[60]  The BIA looked to social factors when determining whether the group had a social distinction within the Guatemalan society:

Such evidence would include whether the society in question recognizes the need to offer protection to victims of domestic violence, including whether the country has criminal laws designated to protect domestic abuse victims, whether those laws are effectively enforced, and other sociopolitical factors.[61]


As this blog post suggests, these sociopolitical criteria are necessary not only for determining whether an applicant belongs to a particular social group, but for determining whether a government can actually handle civil domestic violence.  The BIA should use these factors to formulate a test that is subject to the Chevron test of judicial deference, and require courts and administrative judges to evaluate whether the government has the resources to address domestic violence.

b. In the Matter of A-B-

In Matter of A-B-, A.G. Sessions overruled Matter of A-R-C-G-, holding that the case was erroneously decided because it followed concessions made by the DHS as conclusive legal points instead of applicable law.[62]  This, he argued, prevented the BIA from holding that applicants fleeing domestic violence or gender-based violence are not likely to satisfy the requirements for asylum.[63]  Sessions’ opinion failed to provide any clarity for several reasons.

First, he confuses the standard to establish a presumption of future persecution and creates his own standard to establish persecution.[64]  A.G. Sessions states that in order to prove persecution, an applicant must show that (1) there was an intent to target a belief or characteristic; (2) the level of harm was severe; and (3)  the government is unable to control or prevent the harm.[65]  Although the elements are correct, A.G. Sessions mistakenly believes it proves an applicant has suffered persecution.  In actuality, an applicant must satisfy these elements to prove that he or she is in danger of future persecution.[66]

Second, most of his criticism was not backed with supporting evidence or cases.  A.G. Sessions stated that “the opinion has caused confusion because it recognized a new category of particular social groups based on private violence.”[67]  However, A.G. Sessions did not cite to any material or evidence that supports that statement.[68]  Another example demonstrating a lack of authority is his statement that while “there may be exceptional circumstances when victims of private criminal activity could meet these requirements, they must satisfy established standards when seeking asylum.”[69]  There has never been an exceptionality requirement for those who seek protection from domestic abuse.  A.G. Sessions himself does not cite to any precedent law to confirm this.[70]

In addition, A.G. Sessions incorrectly concluded that the PSG requirement failed in Matter of A-R-C-G- because “a particular social group must exist independently of the harm asserted in an application for asylum or statutory withholding of removal.”[71]   The well-founded fear of future persecution is an alternative argument available for applicants who may not be able to establish past persecution; the applicant must prove that he or she is in danger of future persecution.[72]

Part V: Conclusion

It is reasonable to suggest that A.G. Sessions’ opinion serves a broader goal in the form of political gaslighting.  The Trump Administration, Republican Party and the greater American population are familiar with this tactic in politics.[73]  A.G. Sessions’ opinion is an example of how to subtly subvert the greater issues of gender-based violence and the lack of acceptance of gender-based persecution.  He does this by implementing harrowing language that attacks America’s faltering sense of inclusivity under immigration law.  His confusing summation of asylum law requirements undermines the foundational principle of protecting a “person who faces serious human rights abuses” under asylum law.[74]  This only contributes to the growing inaccurate view of immigrants today.

* Jessica Senat, Law Student at Touro College Jacob D. Fuchsberg Law Center, class of 2020. Received a Bachelor of Arts in English Literature from Fordham University at Lincoln Center.

[1] Gaslight (Metro-Goldwyn-Mayer 1944) (a mystery-thriller film about a husband who manipulates his wife into believing that she is going insane).

[2] 27 I. & N. Dec. 316 (A.G. June 11, 2018).

[3] Id. at 317.

[4] The provision states in relevant part “[t]he Board shall refer to the Attorney General for review of its decision all cases that: (i) The Attorney General directs the  Board to refer to him.”  8 C.F.R. § 1003.1(h)(1) (2018).

[5] Matter of A-B-, 27 I. & N. Dec. at 320 (discussing that one must show that the government is unable to address violence or persecution in order to successfully apply for asylum).

[6] 8 U.S.C. § 1158(b)(1)(B)(i) (2018) (“To establish that the applicant is a refugee within the meaning of such section, the applicant must establish that race, religion, nationality, membership in a particular social group, or political opinion was or will be at least one central reason for persecuting the applicant.”).

[7] Matter of A-B-, 27 I. & N. Dec. at 333.

[8] Andrea Binder, Gender and the “Membership in a Particular Social Group” Category of the 1951 Refugee Convention, 10 Colum. J. Gender & L. 167 (2001).

[9] Id. at 169.

[10] Id. at 170.

[11] Benitez Ramos v. Holder, 589 F.3d 426 (7th Cir. 2009); Martinez v. Holder, 740 F.3d 902 (4th Cir. 2014), as revised (Jan. 27, 2014) (4th and 7th Circuits holding that being a former gang member is recognized as a particular social group); Arteaga v. Mukasey, 511 F.3d 940 (9th Cir. 2007); Gonzalez v. U.S. Atty. Gen., 820 F.3d 399 (11th Cir. 2016) (the 9th and 11th Circuits holding that former/current gang membership does not constitute a particular social group for the purposes of the Asylum statute).

[12] Matter of Acosta, 19 I. & N. Dec. 211, 211 (BIA March 1, 1985).

[13] Merriam-Webster defines Gaslighting as “manipulative behavior used to confuse people into thinking their reactions are so far off base that they’re crazy.”  Gaslighting, Merriam-Webster, https://www.merriam-webster.com/dictionary/gaslighting (last visited Oct. 26, 2018).

[14] Kathryn M. Bockley, A Historical Overview of Refugee Legislation: The Deception of Foreign Policy in the Land of Promise, 21 N.C. J. Int’l L. & Com. Reg. 253, 259 (1995); Refugee Timeline: Immigration and Naturalization Service Refugee Law and Policy Timeline, 1891-2003, U.S. Citizenship & Immigr. Services, https://www.uscis.gov/history-and-genealogy/our-history/refugee-timeline (last updated Feb. 20, 2018).

[15] Bockley, supra note 14, at 259.

[16] Bockley, supra note 14, at 259 (“The Quota Act set forth percentages of immigrants eligible for admission from both northern and southeastern Europe based on percentages derived from the U.S. Census Bureau.  However, immigration from the western European countries remained unrestricted . . . the Quota Act has been widely criticized for elevating the issues of race, ethnic prejudice and assimilation above any concerns for human suffering or the desperate situation of particular refugees.” (footnote omitted)).

[17] Refugee Timeline, supra note 14 (discussing that the INA got rid of the quota system but still included preferences that favored immigrants from eastern and northern Europe).

[18] Law of Asylum in the United States § 1:2 (2018) (explaining that, in the United States, there are three major forms of protections for refugees: asylum, withholding of removal, and convention against torture).

[19] Id.; see also Bockley, supra note 14, at 253.

[20] Bockley, supra note 14, at 253.

[21] Refugee Timeline, supra note 14.

[22] Refugee Timeline, supra note 14.

[23] Bockley, supra note 14, at 253; also see Melissa J. Hernandez Pimentel, The Invisible Refugee: Examining the Board of Immigration Appeals’ “Social Visibility” Doctrine, 76 Mo. L. Rev. 596 (2010).

[24] 8 U.S.C. § 1158(b)(1)(B)(i) (2018) (“To establish that the applicant is a refugee within the meaning of such section, the applicant must establish that race, religion, nationality, membership in a particular social group, or political opinion was or will be at least one central reason for persecuting the applicant.”).

[25] Matter of Acosta, 19 I. & N. Dec. 211, 233 (BIA March 1, 1985) (holding that the PSG requirement meant “persecution that is directed toward an individual who is a member of a group of persons all of whom share a common, immutable characteristic.  The shared characteristic might be an innate one such as sex, color, or kinship ties, or in some circumstances it might be a shared past experience such as former military leadership or land ownership”).

[26] Id.

[27] See Matter of S-E-G-, 24 I. & N. Dec. 579 (BIA July 30, 2008); Matter of E-A-G-, 24 I. & N. Dec. 591 (BIA July 30, 2008) (in both cases, respondents were fleeing gang violence, and the BIA reviewed the eligibility of persons who applied for asylum on the basis of being a member of a gang).

[28] Matter of S-E-G-, 24 I. & N. Dec. at 584; Matter of E-A-G-, 24 I. & N. Dec. at 593.

[29] Matter of S-E-G-, 24 I. & N. Dec. at 584.

[30] 26 I. & N. Dec. 227 (BIA Feb. 7, 2014).

[31] Id. at 240.

[32] Id. at 241.

[33] Id. at 242.

[34] Matter of W-G-R-, 26 I. & N. Dec. 208, 223 (BIA Feb. 7, 2014).

[35] Id. at 223 (“[T]he persecutor’s views play a greater role in determining whether persecution is infliction on account of the victim’s membership in a particular social group.”).

[36] Matter of M-E-V-G-, 26 I. & N. Dec. 227, 241 (BIA Feb. 7, 2014).

[37] Rachel Gonzalez Settlage, Rejecting the Children of Violence: Why U.S. Asylum Law Should Return to the Acosta Definition of “A Particular Social Group”, 30 Geo. Immigr. L.J. 287, 310 (2016).

[38] Id.

[39] Id.; see also Particular Social Group Practice Advisory: Applying for Asylum After Matter of M-E-V-G- and Matter of W-G-R, Nat’l Immigrant Just. Ctr., June 2018, https://www.immigrantjustice.org/sites/default/files/PSG%2520Practice%2520Advisory%2520and%2520Appendices-Final-1.22.16.pdf.

[40] Settlage, supra note 37, at 310.

[41] This blog post does not attempt to provide an exclusive definition of gender-based violence.  For the sake of the argument, the focus is to look into how it affects women under U.S. refugee and asylum laws.

[42] Courts often deny the petitioners characterization of the membership group he or she alleges to belong to: Gomez v. I.N.S., 947 F.2d 660 (2d Cir. 1991) (Petitioner appealed decision from BIA that denied asylum protection from guerrilla Salvadorian guerillas who raped and assaulted her. The Second Circuit concluded that Gomez “failed to produce evidence that women who have previously been abused by the guerillas” were a particular social group and that petitioner did not meet her evidentiary burden by submitting evidence of past persecution.); S.E.R.L. v. Attorney Gen. U.S., 894 F.3d 535, 555 (3d Cir. 2018) (holding that appellant failed to meet the social distinct standard because courts did not believe “immediate family members of Honduran women unable to leave a domestic relationship” was a socially distinct group in Honduras); Reyes v. Sessions, No. 17-9550, 2018 U.S. App. LEXIS 26376, at *7 (10th Cir. Sept. 18, 2018) (rejecting Appellant Castillo Reyes’s proposal that she belonged to a “social group of female victims of domestic violence “as is circularly defined by the harm suffered by its members and therefore isn’t a valid particular social group under the INA.”).

[43] Binder, supra note 8, at 169.

[44] Binder, supra note 8.

[45] Binder, supra note 8, at 167-168.

[46] Binder, supra note 8, at 168.

[47] Binder, supra note 8, at 169.

[48] Binder, supra note 8, at 169.

[49] Binder, supra note 8, at 169.

[50] Binder, supra note 8, at 167.

[51] Melanie Randall, Refugee Law and State Accountability for Violence Against Women: A Comparative Analysis of Legal Approaches to Recognizing Asylum Claims Based on Gender Persecution, 25 Harv. Women’s L.J. 281, 294 (2002) ( “U.S. refugee law has yet to grapple adequately with the fact that gender can form the basis of a ‘particular social group,’ and, as a result, some gender claims have been allowed but only through convoluted legal logic, while others have simply been denied.”).

[52] 8 U.S.C. § 1158(b)(1)(B)(i) (2018); see also In re Fauziya Kasinga, 21 I. & N. Dec. 357 (BIA June 13, 1996) (though this case was viewed as a breakthrough for addressing gender violence as an actual basis for asylum protection, it did not directly address persecution on account of gender but opted for a more narrow analysis instead).  See Randall, supra note 51, at 295.

[53] 26 I. & N. Dec. 388 (BIA August 26, 2014).

[54] Id. at 389.

[55] Id.

[56] Id.

[57] Id.

[58] Id.

[59] Id. at 392.

[60] Id. at 393-4.

[61] Id.

[62] Matter of A-B-, 27 I. & N. Dec. 316, 319 (A.G. June 11, 2018).

[63] Id.

[64] Asylum Practice Advisory: Applying for Asylum after Matter of A-B-, Nat’l Immigrant Just. Ctr., June 2018, https://www.immigrantjustice.org/sites/default/files/content-type/resource/documents/2018-06/Matter%20of%20A-B-%20Practice%20Advisory%20-%20Final%20-%206.21.18.pdf.

[65] Matter of A-B-, 27 I. & N. Dec. at 337.

[66] Asylum Practice Advisory, supra note 64.

[67] Matter of A-B-, 27 I. & N. Dec. at 319.

[68] Id.; “The fact that in some cases, Courts have found an A-R-C-G style PSG not viable based on the facts of the case, or that the asylum seeker was not a member of her proposed group, does not mean that A-R-C-G- is not workable, rather that it is a functioning legal tool.”  Asylum Practice Advisory, supra note 64.

[69] Matter of A-B-, 27 I. & N. Dec. at 317.

[70] Asylum Practice Advisory, supra note 64.

[71] Matter of A-B-, 27 I. & N. Dec. at 334-35 (“[I]f a group is defined by the persecution of its members then the definition of the group moots the need to establish actual persecution.”).

[72] Asylum Practice Advisory, supra note 64 (citing Lukwago v. Ashcroft, 329 F.3d 157 (3d Cir. 2003) (“a group based on the characteristic of having been forcibly recruited as a child soldier includes the harm of forced recruitment as a part of its definition and so would fail as to past persecution if the asylum seeker was arguing he had been persecuted in the form of forced recruitment because of his status as a forcibly recruited child solder.  But if vigilantes were targeting children who had been forced to be soldiers, the claim could prevail because the harm feared (e.g. attacks by vigilantes) is different from the harm that places one in the PSG.”)).

[73] Amanda Carpenter, I’m a Republican. Why is My Party Gaslighting America?, Politico (Jan. 30, 2018), https://www.politico.com/magazine/story/2018/01/30/republican-party-release-the-memo-gaslighting-america-216554; Heidi Li Feldman, What Lawyers Can and Should Do About Mendacity in Politics, 56 Duq. L. Rev. 125 (2017).

[74] Law of Asylum in the United States, supra note 18.

Section 230 of the Communications Decency Act, the FOSTA Amendment, and its Impact on Online Sex Trafficking

By Kaitlyn Wells


Historically, human trafficking has plagued societies for centuries, and modern advancements in science and technology have contributed to an increase in trafficking.  A contributing factor to the rise of human trafficking victims is the internet.  Section 230 of the Communications Decency Act (hereinafter “CDA”) played a significant role in the promotion of online sex trafficking.[1]  CDA § 230 provides immunity to providers and users of interactive computer services who publish information provided by third parties.[2]  “No provider or user of an interactive computer service shall be treated as the publisher or speaker of any information provided by another information content provider.”[3]

Websites such as Backpage.com have shielded themselves behind the CDA, an act created to regulate pornographic material on the internet, to avoid state criminal and civil litigation.[4]  The federal government had remained silent on this increasingly alarming issue until recently when the Senate passed a bill, called “The Allow States and Victims to Fight Online Sex Trafficking Act” (hereinafter “FOSTA”).[5]  President Donald Trump signed the bill into law on April 11, 2018.[6]

Section 2 of FOSTA states that § 230 of the CDA was not intended to afford legal protection to websites that “promote and facilitate prostitution and websites that facilitate traffickers in advertising the sale of unlawful sex acts with sex trafficking victims.”[7]  Since President Trump has signed the bill into law, FOSTA has met a great deal of criticism.  In June of 2018, The Electronic Frontier Foundation filed complaints in federal district court claiming FOSTA’s broad scope violates the First Amendment right to free speech.[8]  FOSTA, an amendment to § 230 of the CDA, is a necessary step towards combating online sex trafficking.  Part I will discuss a brief history of § 230 of the CDA; Part II will provide a brief history of sex trafficking; Part III will discuss the correlation between the CDA and online sex trafficking; and Part IV will discuss FOSTA and its critics.

Part I: The History of Section 230 of the CDA

Senator Jim Exon of Nebraska introduced the 1996 Amendment to the CDA.[9]  This Amendment extended the anti-harassment, indecency and anti-obscenity restrictions that were already placed on telephone calls to “telecommunication devices” and “interactive computer services.”[10]  The 1996 Amendment to the CDA stood for the premise that it was just as wrong to provide pornography to children on computers as it was to do it on the street or anywhere else.[11]  The CDA made it a crime to knowingly use an interactive computer to send indecent material in a mode accessible to children.[12]  The CDA does not ban any constitutionally protected materials from adults.  The Supreme Court has repeatedly recognized that protecting children from indecency is a compelling state interest.[13]   Congress modeled the CDA “after the existing dial-a-porn law which allow[ed] telephone sex services to ply their wares to adults but prohibit[ed] access by minors.”[14]  The Supreme Court held that the dial-a-porn law did not violate the First Amendment.[15]

In August of 1995, the Cox-Wyden Amendment was enacted which modified the CDA, and later became § 230 of the act.  The Cox-Wyden Amendment protected online services that make a “good faith effort” to restrict access to offensive material.[16]  “No provider or user of an interactive computer service shall be treated as the publisher or speaker of any information provided by another information content provider.”[17]  Many cases have been dismissed based on interactive service providers asserting the defense that, pursuant to § 230 of the CDA, they were not in violation of any laws.  More simply stated, providers and users assert the defense that they cannot be held liable for the actions of third-party publishers or speakers.[18]

In Zeran v. America Online, Inc.,[19] a customer sued America Online, an internet service provider, in federal district court because of alleged unreasonable delay in removing defamatory messages posted by an anonymous third-party user.[20]  The district court ruled in favor of America Online because section 230 of the CDA barred the customer’s claims.[21]  The district court held that Congress measured the weight of the speech interests implicated and elected to immunize service providers to avoid any restrictive result.[22]  The Fourth Circuit held that Congress intended to give broad immunity to internet providers when faced with possible liability because of messages originated by third-party users.[23]

For years, websites have been immune from liability under the CDA § 230 as long as the website is an interactive computer service and the posting is that of a third-party publisher or speaker.  It was not until websites began using this shield to avoid legal action regarding sex trafficking that the government finally stepped in.

Part II: History of Online Sex Trafficking

The National Human Trafficking Hotline (hereinafter “NHTH”) is a national anti-trafficking hotline servicing victims and survivors of human trafficking, as well as the anti-trafficking community in the United States.[24]  Since 2007, the NHTH reported a total of approximately 28,291 cases of sex trafficking, and in 2017 alone, the NHTH reported approximately 5,579 sexually trafficked victims, 1,954 of which were minors.[25]  NHTH defines trafficking as “[t]he recruitment, harboring, transportation, provision, obtaining, patronizing, or soliciting of a person for the purposes of a commercial sex act, in which the commercial sex act is induced by force, fraud, or coercion, or in which the person induced to perform such an act has not attained 18 years of age.”[26]  Human trafficking is the third fastest growing criminal activity.[27]  According to the International Labor Organization, there are approximately 40.3 million victims of human trafficking worldwide, with hundreds of thousands in the United States alone.[28]  In the United States a person is guilty of sex trafficking by force, fraud or coercion, under federal law, when:

(a)Whoever knowingly—

(1) in or affecting interstate or foreign commerce, or within the special maritime and territorial jurisdiction of the United States, recruits, entices, harbors, transports, provides, obtains, advertises, maintains, patronizes, or solicits by any means a person; or

(2) benefits, financially or by receiving anything of value, from participation in a venture which has engaged in an act described in violation of paragraph (1), knowing, or, except where the act constituting the violation of paragraph (1) is advertising, in reckless disregard of the fact, that means of force, threats of force, fraud, coercion described in subsection (e)(2), or any combination of such means will be used to cause the person to engage in a commercial sex act, or that the person has not attained the age of 18 years and will be caused to engage in a commercial sex act, shall be punished as provided in subsection (b).[29]


Under the United States definition, transportation or physical movement of the victim does not necessarily need to be present for the crime to occur.[30]  The mere presence of exploitation (force, fraud, or coercion) indicates whether a trafficking crime has occurred.[31]

Victims of sex trafficking can be in any number of services within the sex trafficking industry including, but not limited to, prostitution, strip clubs, live-sex shows, mail-order brides, escort services, and fake massage businesses.  Many victims of sex trafficking are sold and bought online through websites like Craigslist, Backpage, HarlotHub, Eros, and Switter, to name a few.  A common misconception about human trafficking is that the victims are all trafficked into the United States from other countries.  This is simply not the case.  While some victims are trafficked and transported into the United States, many of the trafficking victims are United States citizens.[32]  There is no single profile for trafficking victims; trafficking occurs in rural, suburban, and urban communities across the country.[33]  Victims of human trafficking can be adults and children and have diverse socio-economic backgrounds and different levels of education.[34]  Traffickers target victims using methods of recruitment and control that they find to be effective in compelling that victim into commercial sex.[35]  The internet alone allows for many people from all walks of life to fall victim to sex trafficking.[36]

Part III: The Correlation between the CDA and Online Sex Trafficking

Section 230 was intended to shield interactive internet sites from liability for subject matter posted by their users.[37]  It treats internet companies like libraries: a library is not responsible for the offense people take to the content of the books it carries, just like a website is not responsible for the offense that people take to comments and posts by other users.[38]  Backpage.com is a classified advertising website that was launched in 2004 and is similar to Craigslist.[39]  Backpage is most known for its “adult” classifieds section.  Backpage featured ads from prostitutes, escorts, and sex trafficking victims.[40]  Websites such as Backpage have shielded themselves behind the CDA to avoid state criminal and civil litigation.

Backpage consistently used § 230 of the CDA as a defense against liability until the FBI seized Backpage in February of 2018.[41]  Backpage would cite to the statute’s language that states “no provider or user of an interactive computer service shall be treated as the publisher or speaker of any information provided by another information content provider.”[42]  Backpage claimed that it could not be charged for online users content, i.e., a pimp posting an advertisement prostituting a victim of sex trafficking.[43]  The most notorious case regarding Backpage is Doe v. Backpage.com, LLC.[44]  In Doe, three sex trafficking victims sued Backpage.com alleging that Backpage created or changed, expressly or impliedly, the advertisements regarding these victims on its website.[45]  More specifically, Jane Doe 1, Jane Doe 2, and Jane Doe 3 alleged that Backpage violated the Trafficking Victims Protection Reauthorization Act of 2008, 18 U.S.C. § 1595; Massachusetts Anti-Human Trafficking and Victim Protection Act of 2010, Mass. Gen. Laws ch. 265, section 50; and Massachusetts Consumer Protection Act, Mass. Gen. Laws ch. 93A, section 9.[46]  Each Doe also alleged violations of their individual intellectual property rights.[47]  With regard to Jane Doe 1 and Jane Doe 2, the court held that their complaint was lacking factual allegations that reasonably supported the claim that Backpage created content.[48]  Therefore, the CDA barred their claims.[49]  However, with regard to the ad about Jane Doe 3, the court held that Backpage substantially changed the ad.[50]  Therefore, the CDA did not bar Jane Doe 3’s claims.[51]  There is no doubt that the actions of Backpage.com consistently hiding from liability under § 230 of the CDA was a factor Congress looked to when deciding whether to pass the FOSTA.

Part IV: The FOSTA and its Critics

The FOSTA was signed into law by President Trump on April 11, 2018.[52]  This Act is an amendment to 47 U.S.C. § 230.  FOSTA was necessary to express that it was not the intention of Congress to afford legal protection to websites that “promote and facilitate prostitution and websites that facilitate traffickers in advertising the sale of unlawful sex acts with sex trafficking victims.”[53]  More specifically, the FOSTA states:

(1) section 230 of the Communications Act of 1934 (47 U.S.C. § 230; commonly known as the “Communications Decency Act of 1996”) was never intended to provide legal protection to websites that unlawfully promote and facilitate prostitution and websites that facilitate traffickers in advertising the sale of unlawful sex acts with sex trafficking victims;

(2) websites that promote and facilitate prostitution have been reckless in allowing the sale of sex trafficking victims and have done nothing to prevent the trafficking of children and victims of force, fraud, and coercion; and

(3) clarification of such section is warranted to ensure that such section does not provide such protection to such websites.[54]


In response to FOSTA, the website Craigslist.com released a statement expressing that, due to FOSTA, Craigslist.com can be subject to criminal and civil liability when third-party users of the website misuse Craigslist’s personal advertisement section unlawfully.[55]  Craigslist further stated “[a]ny tool or service can be misused.  We can’t take such risk without jeopardizing all our other services, so we are regretfully taking craigslist personals offline.”[56]  A pimp can no longer solicit a sex trafficking victim on Craigslist.  However, an advocate for sex workers could argue that sex workers can no longer find work through Craigslist or Backpage.com, forcing him or her to look to the dark web or the streets for a job.

Prior to the FOSTA Amendment, the CDA was praised as a “core pillar of internet freedom” and “the most important law protecting free speech online” that “gave us the modern internet.”[57]  The Electronic Frontier Foundation (hereinafter “EFF”), a nonprofit that defends civil liberties in the digital world, is afraid that the increased potential for liability will cause online services to become much more restrictive and “err on the side of censorship.”[58]  The EFF was founded in 1990 and works to ensure that rights and freedoms are protected as the internet grows.[59]  According to the EFF, “FOSTA attacks online speakers who speak favorably about sex work by imposing harsh penalties for any website that might be seen as ‘facilitating’ prostitution or ‘contribute to sex trafficking.’”[60]

FOSTA is necessary to combat online sex trafficking.  There were flaws in the CDA that made FOSTA necessary.  The biggest flaw of the CDA was the enablement of Backpage using 47 U.S.C.S. § 230(c) as a shield, thereby allowing traffickers to use the website to sexually exploit victims on their website.[61]  A perfect example of Backpage using the CDA as a shield is the Doe case.[62]  However, if Doe were to have occurred after the enactment of FOSTA, Backpage would not have been able to hide behind the CDA so long as the plaintiffs could prove that Backpage promoted and facilitated prostitution and had done nothing to prevent the trafficking of children and victims.  After Backpage was seized, the CEO of Backpage, Carl Ferrer, pleaded guilty in three state courts to money laundering and conspiracy to facilitate prostitution.[63]  Backpage was doing precisely what the CDA was not supposed to protect—changing and creating ads and knowingly taking money from pimps to post ads on its website exploiting trafficking victims.[64]

In June of 2018, the EFF filed a complaint in federal district court claiming FOSTA’s broad scope violates the First Amendment.[65]  The EFF released a statement on its website about the lawsuit stating that it is asking the court to deem FOSTA unconstitutional.[66]  It further explains that, in its own opinion, the “law was written so poorly that it actually criminalizes a substantial amount of protected speech and, according to experts, actually hinders efforts to prosecute sex traffickers and aid victims.”[67]  This is simply untrue; the FOSTA was specifically created to help stop sex trafficking.  Senator Rob Portman, from Ohio, one of the creators of the law, explained that the FOSTA is not a free speech issue but instead about protecting victims of sex trafficking.[68]  The CDA protects websites so long as a website is not knowingly promoting or facilitating prostitution, which is a crime in forty-nine states, and facilitating traffickers in advertising sex trafficking victims.[69]  There is a compelling government interest in protecting people (adults and children) from being sexually exploited online.

Section 230 of the CDA limits the legal liability of interactive websites for content that was posted by a third party.  Section 2 of the FOSTA states that § 230 of the Communications Act of 1934 was not intended to afford legal protection to websites that “promote and facilitate prostitution and websites that facilitate traffickers in advertising the sale of unlawful sex acts with sex trafficking victims.”[70]  While the EFF argues that the FOSTA violates the First Amendment, the FOSTA is a necessary and long overdue amendment to the CDA and is a massive step towards combating online sex trafficking.

[1] Danah Boyd et al., Human Trafficking and Technology: A Framework for Understanding the Role of Technology in the Commercial Sexual Exploitation of Children in the U.S., http://www.indiana.edu/~traffick/_resources/_literature/_research/_assets/Human-Trafficking-and-Technology.pdf

[2] 47 U.S.C.S. § 230 (LexisNexis 2018).

[3] Id.

[4] Id.  Section 230 of the CDA was not part of the original Senate legislation but was separately introduced by Representatives Chris Cox of California and Ron Wyden of Oregon as the Internet Freedom and Family Empowerment Act.  Congressional Record, Congress.gov (Aug. 4, 1995), https://www.congress.gov/congressional-record/1995/08/04/house-section/article/H8460-1.  Cox and Wyden wanted to make sure that, while everyone in the United States has an open invitation to the internet, there is certain offensive material that children should not see.  Id.  The statute was intended to screen offensive material and to provide protection from taking on liability to computer “Good Samaritans,” which are online service providers who take steps to screen indecent and offensive material for their customers.  Id.  Section 230 established as policy that the United States does not wish to have content on the internet regulated by the Federal Government.  Id.

[5] Colin Lecher, Senate Passes Controversial Anti-Sex Trafficking Bill, Verge (Mar. 21, 2018, 4:23 PM), https://www.theverge.com/2018/3/21/17147688/senate-sesta-fosta-vote-anti-sex-trafficking.

[6] Tom Jackman, Trump signs ‘FOSTA’ Bill Targeting Online Sex Trafficking, Enables States and Victims to Pursue Websites, Wash. Post (April 11, 2018), https://www.washingtonpost.com/news/true-crime/wp/2018/04/11/trump-signs-fosta-bill-targeting-online-sex-trafficking-enables-states-and-victims-to-pursue-websites/?noredirect=on&utm_term=.21bafe66e9fd.

[7] 115 Pub. L. No. 164, 132 Stat. 1253 (2018).

[8] David Greene, EFF Sues to Invalidate FOSTA, an Unconstitutional Internet Censorship Law, EFF (June 28, 2018), https://www.eff.org/deeplinks/2018/06/eff-sues-invalidate-fosta-unconstitutional-internet-censorship-law.

[9] Robert Cannon, The Legislative History of Senator Exon’s Communications Decency Act: Regulating Barbarians on the Information Superhighway, 49 Fed. Comm. L.J. 51 (1996).

[10] Id. at 51.   An interactive computer service is “any information service, system, or access software provider that provides or enables computer access by multiple users to a computer server, including specifically a service or system that provides access to the Internet and such systems operated or services offered by libraries or educational institutions.”  47 U.S.C.S. § 230(f)(2) (LexisNexis 2018).

[11] Cannon, supra note 9, at 77.

[12] Cannon, supra note 9, at 57.

[13] Cannon, supra note 9, at 58.

[14] Jim Exon, The Communications Decency Act, 49 Fed. Comm. L.J. 95, 96 (1996).

[15] Id. at 96.  See Sable Commc’ns of Cal. v.   FCC, 492 U.S. 115 (1989).  Congress took great care in drafting the law to protect children from indecency as the Supreme Court had consistently acknowledged that as a compelling state interest.  Exon, supra note 14, at 96.

[16] Cannon, supra note 9, at 61.

[17] 47 U.S.C.S. § 230 (LexisNexis, 2018).

[18] Id.  § 230(c).

[19] 129 F.3d 327 (4th Cir. 1997).

[20] Id. at 328.

[21] Id. at 329.

[22] Id. at 331.

[23] Id. at 328.

[24] Human Trafficking, Human Trafficking Hotline, https://humantraffickinghotline.org/type-trafficking/human-trafficking (last visited Sept. 1, 2018).

[25] Id.

[26] Id.

[27] Id.

[28] Id.

[29] 18 U.S.C.S. § 1591 (LexisNexis 2018).

[30] Id.; 18 U.S.C.S. § 1584.  Fact Sheet: Human Trafficking, Office on Trafficking in Persons (Nov. 21, 2017), https://www.acf.hhs.gov/otip/resource/fshumantrafficking

[31] Fact Sheet: Human Trafficking, supra note 30.

[32] Fact Sheet: Human Trafficking, supra note 30.

[33] Fact Sheet: Human Trafficking, supra note 30.

[34] Fact Sheet: Human Trafficking, supra note 30.

[35] Fact Sheet: Human Trafficking, supra note 30.

[36] In Los Angeles, police arrested a teenage girl for prostitution.  U.S. Attorney’s Office, Man Pleads Guilty and Is Sentenced to 17½ Years in Federal Prison for Sex Trafficking of Minors, Fed. Bureau Investigation: L.A. Division, June 10, 2010, http://www.fbi.gov/losangeles/press-releases/2010/la061010.htm.  Investigators learned that the teenage girl was a runaway working for Dwayne Lawson.  Lawson “contacted the girl in the fall of 2008 on Myspace.com and, after promising to make her a ‘star,’ gave her a bus ticket from Florida to Las Vegas, Nevada.”  Id.  Once the teen arrived in Nevada, Lawson brought the girl to California where she worked for him as a prostitute.  Id.

[37] 47 U.S.C.S. § 230 (LexisNexis 2018).

[38] Emily Stewart, The Next Big Battle Over Internet Freedom is Here, Vox (Apr. 23, 2018, 12:20 PM), https://www.vox.com/policy-and-politics/2018/4/23/17237640/fosta-sesta-section-230-internet-freedom.

[39] Derek Hawkins, Backpage.com Shuts down Adult Services Ads after Relentless Pressure from Authorities, Washington Post, (January 10, 2017) https://www.washingtonpost.com/news/morning-mix/wp/2017/01/10/backpage-com-shuts-down-adult-services-ads-after-relentless-pressure-from-authorities/?utm_term=.5baa004c9824.

[40] Martha Irvine, Backpage Ad Site: Aider of Traffickers, or Way to Stop Them?, Seattle Times (Aug. 16, 2015, 6:44 PM), https://www.seattletimes.com/seattle-news/backpage-ad-site-aider-of-traffickers-or-way-to-stop-them/.

[41] Doe v. Backpage.com, LLC, No. 17-11069-LTS, 2018 U.S. Dist. LEXIS 53198 (D. Mass. Mar. 29, 2018); Backpage.com, LLC v. Lynch, 216 F. Supp. 3d 96 (D.D.C. 2016); Backpage.com, LLC v. Cooper, 939 F. Supp. 2d 805 (M.D. Tenn. 2013); Backpage.com, LLC v. Dart, No. 15 C 06340, 2015 U.S. Dist. LEXIS 112161 (N.D. Ill. Aug. 24, 2015).

[42] 47 U.S.C.S. § 230(c) (LexisNexis, 2018).

[43] Doe v. Backpage.com, LLC, No. 17-11069-LTS, 2018 U.S. Dist. LEXIS 53198, *5 (D. Mass. Mar. 29, 2018).

[44] Id.

[45] Id at *3.

[46] Id. at *2.

[47] Id.

[48] Id.

[49] Id. at *5.

[50] Id.

[51] Id.

[52] Colin Lecher, Senate Passes Controversial Anti-Sex Trafficking Bill, Verge (Mar. 21, 2018, 4:23 PM), https://www.theverge.com/2018/3/21/17147688/senate-sesta-fosta-vote-anti-sex-trafficking.

[53] 115 Pub. L. No. 164, 132 Stat. 1253 (2018).

[54] Id.

[55] FOSTA, Craigslist, https://www.craigslist.org/about/FOSTA (last visited Sept. 1, 2018).

[56] Id.

[57] Greene, supra note 8.

[58] Id.

[59] Id.

[60] Anna Schecter & Dennis Romero, FOSTA Sex Trafficking Law Becomes Center of Debate About Tech Responsibility, NBC News (July 19, 2018, 3:33 PM), https://www.nbcnews.com/tech/tech-news/sex-trafficking-bill-becomes-center-debate-about-tech-responsibility-n892876.

[61] Doe v. Backpage.com, LLC, No. 17-11069-LTS, 2018 U.S. Dist. LEXIS 53198, (D. Mass. Mar. 29, 2018); Backpage.com, LLC v. Lynch, 216 F. Supp. 3d 96 (D.D.C. 2016); Backpage.com, LLC v. Cooper, 939 F. Supp. 2d 805 (M.D. Tenn. 2013); Backpage.com, LLC v. Dart, No. 15 C 06340, 2015 U.S. Dist. LEXIS 112161 (N.D. Ill. Aug. 24, 2015).

[62] Doe v. Backpage.com, LLC, No. 17-11069-LTS, 2018 U.S. Dist. LEXIS 53198 (D. Mass. Mar. 29, 2018).

[63] Backpage CEO Carl Ferrer Says He’ll Testify Against Site’s Founders, NBC News (Apr. 12, 2018, 9:41 PM), https://www.nbcnews.com/news/us-news/backpage-ceo-carl-ferrer-says-he-ll-testify-against-site-n865616.

[64] Id.

[65] New Lawsuit Challenges FOSTA–The Federal Law Sparking Website Shutdowns, EFF (June 28, 2018), https://www.eff.org/press/releases/new-lawsuit-challenges-fosta-federal-law-sparking-website-shutdowns.

[66] Greene, supra note 8.

[67] Greene, supra note 8.

[68] Schecter & Romero, supra note 60.

[69] 47 U.S.C.S. § 230(c) (LexisNexis 2018).

[70] 115 Pub. L. No. 164, 132 Stat. 1253 (2018).

The Blurred Protection for the Feel or Groove of a Song under Copyright Law: Examining the Implications of Williams v. Gaye on Creativity in Music

By Olivia Lattanza


I. Introduction

In Williams v. Gaye,[1] the Ninth Circuit largely affirmed the judgment of the district court entered after the jury verdict finding that Pharrell Williams and Robin Thicke’s hit “Blurred Lines” infringed Marvin Gaye’s song “Got to Give It Up.”[2]  Although the Ninth Circuit’s decision turned on procedural grounds, namely the court’s deferential standard of review of the jury’s decision,[3] this case does not exemplify a straightforward and simple application of copyright law for several reasons.

While the 2013 hit “Blurred Lines” is subject to the protections under the Copyright Act of 1976, Gaye’s song is protected under the Copyright Act of 1909 because it was composed prior to January 1, 1978.[4]  Specifically, Gaye recorded “Got to Give it Up” in 1976, and he registered the work with the Copyright Office in 1977 by depositing sheet music based on the recorded version of his song.[5]  After his death, Frankie Christian Gaye, Nona Marvisa Gaye, and Marvin Gaye III inherited the copyright in Gaye’s song.[6]  Notably, the difference in copyright protection under both acts is central in determining what aspects of the song are protected.[7]  Under the Copyright Act of 1976, the actual sound recording of “Blurred Lines” is protected.[8]  In comparison, the 1909 Act requires that the work be published with notice or a deposit be made with the Copyright Office.[9]  While the actual recording of “Blurred Lines” is protected under the 1976 Act, the only protection of “Got to Give it Up” under the 1909 Act is in the musical composition.[10]

As a result, the district court excluded the sound recordings of both songs in this case.[11]  This meant that the jury did not compare the recorded versions of both songs, but only compared the “musical compositions” of elements extracted by the experts.[12]  However, in identifying the musical features present in both songs, the Gayes’ expert relied on elements that are not individually protectable.[13]  The similarity between the songs is not within the melody, lyrics, or harmony, but rather in the overall sound, groove, and vibe.[14]  It has been argued that this case should not have been sent to the jury because the jurors may have inaccurately evaluated the similarity in groove instead of the protected musical elements in the songs.[15]  Thus, this decision is groundbreaking as it improperly reinforces the notion that creating the “feel” of another song constitutes copyright infringement even if the melody and notes are completely different.[16]

Consequently, the Ninth Circuit’s affirmance of the jury’s decision inappropriately expanded the scope of copyright protection to the feel or groove of a song.[17]  Virtually every song or musical work has been inspired at least in part by some other artist or musical genre.[18]  By protecting the feel or groove of a song, the creative output of artists will essentially be destroyed.[19]  This blog post will argue that as long as the essential elements of a song are not copied, such as the melody, harmony, rhythm, or lyrics, the overall feel of a song should not be protected.  Therefore, in music copyright infringement cases, the Ninth Circuit should create a clearer rule for determining the “total concept and feel” of a work with respect to the feel of a song in the intrinsic analysis stage and reevaluate whether it is appropriate for the jury to hear cases involving the groove of a song.[20]

II. Overview of Copyright Law

In the United States Constitution, the Framers encouraged the creation of works “[t]o promote the Progress of Science and useful Arts.”[21]  Under the Copyright Act of 1976, copyright protection is secured “in original works of authorship fixed in any tangible medium of expression.”[22]  The 1976 Act expanded copyright protection to include both “musical works”[23] and “sound recordings.”[24]  In contrast, works subject to the 1909 Copyright Act “had to be published with notice or a deposit had to be made in the Copyright Office.”[25]  Thus, “under the 1909 Act, the work had to be reduced to sheet music or other manuscript form.”[26]

To succeed on a claim of copyright infringement, it is necessary to show “ownership of a valid copyright” and “copying of constituent elements of the work that are original.”[27]  Generally, any work subject to copyright protection must contain both originality and creativity.[28]  Nevertheless, “the requisite level of creativity is extremely low” for a work to be considered original.[29]  For musical works, originality is evident by the composer’s own effort and contribution to the song.[30]  While novelty is not required, originality means that the party claiming copyright protection did not copy another work.[31]  Likewise, creativity is represented by the musician’s use of rhythm, harmony, and melody.[32]  However, it is often difficult to obtain direct evidence of copying in music copyright infringement suits.[33]  In these cases, “a plaintiff may prove copying indirectly, with evidence showing that the defendant had access to the copyrighted work and that the purported copy is ‘substantially similar’ to the original.”[34]

To prove access of a musical work, the plaintiff may show “that its work was widely disseminated through sales of sheet music, records, and radio performances.”[35]  To determine substantial similarity, the Ninth Circuit utilizes “an objective extrinsic test and a subjective intrinsic test.”[36]  When applying the extrinsic test, “analytic dissection and expert testimony” are admissible in order to analyze objective criteria in the musical works.[37]  After the extrinsic phase has been satisfied, the jury will then apply the intrinsic test.[38]  In the subjective intrinsic test, the jury is presented with “whether the ordinary, reasonable person would find the total concept and feel of the works to be substantially similar.”[39]  Unlike the extrinsic test, expert testimony and analytic dissection are not admissible in this phase.[40]

III. Music Copyright Infringement Cases

To underscore the intricate and novel issue presented in this case, a brief application of copyright law in past music copyright infringement cases will be examined.  In some instances, a plaintiff may make a blatant and direct showing of copyright infringement.[41]  For example, in the song “Ice Ice Baby,” Vanilla Ice copied the bass line to the Queen and David Bowie song “Under Pressure” without asking for permission, resulting in a clear case of copyright infringement.[42]  However, absence of deliberate copying of another musical work does not prevent liability for copyright infringement.[43]  Specifically, George Harrison’s solo song “My Sweet Lord” was found to have subconsciously plagiarized the “pleasing combination of sounds” of “He’s So Fine” by The Chiffons.[44]  Although Harrison may not have deliberately copied the elements of “He’s So Fine,” the court held that Harrison was liable for copyright infringement since both songs were “virtually identical” and he had access to the song.[45]

In Selle v. Gibb,[46] Ronald Selle brought a copyright infringement suit against the Bee Gees arguing that their hit song “How Deep Is Your Love” copied his song “Let it End.”[47]  At trial, the expert witness testified that there were striking similarities between the songs, specifically in the Bee Gees’ use of identical rhythmic impulses and notes from Selle’s song.[48]  Although the jury found in favor of Selle, the judge granted the Bee Gees’ motion for judgment notwithstanding the verdict because Selle failed to show that the Bee Gees had access to his song.[49]  In fact, the Bee Gees introduced a work tape at trial showcasing their creative process of composing “How Deep is Your Love.”[50]  Thus, “a bare possibility” or mere speculation of access to a song is insufficient to prevail on a copyright infringement claim even if there is a striking similarity between songs.[51]

Moreover, in Three Boys Music Corp. v. Bolton,[52] the Ninth Circuit affirmed a jury verdict finding Michael Bolton’s 1991 song “Love is a Wonderful Thing” infringed the Isley Brothers’ 1964 hit of the same name.[53]  Evidence of access was provided and the jury found that Bolton was not only a fan and collector of the Isley Brothers’ music, but he also had access to the 1964 hit on both the radio and television.[54]  Next, the jury found infringement based on the substantial similarity of five unprotectable musical elements.[55]  Consequently, the Ninth Circuit applied judicial deference to the jury’s verdict in finding a case of copyright infringement.[56]

IV. Analysis

The Ninth Circuit’s decision improperly expanded the scope of copyright protection to the feel or groove of a song.[57]  In the dissenting opinion, Judge Nguyen stated, “The majority allows the Gayes to accomplish what no one has before: copyright a musical style . . . the majority establishes a dangerous precedent that strikes a devastating blow to future musicians and composers everywhere.”[58]  The majority opinion, on the other hand, declared that unlike the limited protections under the 1909 Act in this case, most cases in the future will arise under the 1976 Act, providing protections for works in sound recordings.[59]  However, even if the protections under the Copyright Act of 1976 applied in this case, that does not change the fact that the groove or style of a musical genre “is an unprotectable idea.”[60]  Therefore, although “Blurred Lines” and “Got to Give it Up” have an overall similar feel and vibe, the copyrightable elements of melody and lyrics are completely different.[61]

Additionally, virtually all music is inspired by another genre, style, or musician in some way.[62]  In fact, “[i]n the field of popular songs, many, if not most, compositions bear some similarity to prior songs.”[63]  If artists are unable to draw on their musical influences due to fear of copyright infringement, the degree of creativity in music will be severely limited.[64]  Thus, it has been argued that:

To suggest that this verdict will encourage better songwriting is to misunderstand the history of the arts. The freedom of artists and other creators to borrow from each other is connected with the principle that ideas cannot be copyrighted, a notion that is essential to free speech and artistic expression.[65]

Therefore, the Ninth Circuit’s decision creates a dangerous impediment to musical creativity as musicians will not know whether drawing inspiration from a song will result in copyright infringement.

Moreover, the Ninth Circuit’s intrinsic analysis stage should be clearer in music copyright infringement cases examining the groove or feel of another artist or musical genre.[66]  In particular, given that there are only a limited number of possible notes and chords, the courts have recognized that some pieces will contain “common themes.”[67]  In fact, Judge Learned Hand stated, “It must be remembered that, while there are an enormous number of possible permutations of the musical notes of the scale, only a few are pleasing; and much fewer still suit the infantile demands of the popular ear.  Recurrence is not therefore an inevitable badge of plagiarism.”[68]  Specifically, when lay jurors determine the “total concept and feel” of a work in the intrinsic stage, there is no clear test to determine whether a song evokes a similar feel or whether it infringes another song.[69]  In this case, it is clear that “Blurred Lines” and “Got to Give it Up” are similar in their “sonic environment,” but the core elements of melody, rhythm, and lyrics are not similar.[70]  Therefore, in determining substantial similarity in musical works, the Ninth Circuit should create a clearer rule for determining the “total concept and feel of a work” so that musicians will know whether their inspiration and borrowing of another work constitutes copyright infringement.

V. Conclusion

The Ninth Circuit decision in Williams v. Gaye has serious implications for the future of creativity in musical works.  In upholding the jury’s verdict that Thicke and Williams infringed Gaye’s song, when there was no similarity in the melody, lyrics, or harmonies, the Ninth Circuit essentially declared that the groove of a song is subject to copyright protection.  While the majority opinion emphasized that this case hinged on procedural grounds, the protections under the 1909 Act, and a deferential standard of review, the implications on musical creativity in evoking a style foster new concerns for musicians and artists.  Specifically, it is nearly impossible to say that a song is completely original without drawing inspiration from another artist, style, or genre.  If the groove of a song is protected under copyright law, musicians will be overly cautious into drawing on the style of another artist or genre, thereby stifling creativity. Therefore, it is vital for the Ninth Circuit to reconsider the intrinsic analysis stage with respect to the groove or feel of a song to clearly signify the line between infringement and inspiration.  Consequently, in order to preserve the creativity of music, the feel of a song should not be protected under copyright law.

[1] 885 F.3d 1150 (9th Cir. 2018).

[2] Id. at 1183.

[3] Id. at 1182.

[4] Id. at 1165; see Dolman v. Agee, 157 F.3d 708, 712 n.1 (“The 1909 Act is the applicable law in cases in which creation and publication of a work occurred before January 1, 1978, the effective date of the 1976 Act.”).

[5] Williams, 885 F.3d at 1160.

[6] Id.

[7] Beth Hutchens, How Sweet it is to be Sued by You (for Copyright Infringement), IP Watchdog (Feb. 19, 2015), http://www.ipwatchdog.com/2015/02/19/how-sweet-it-is-to-be-sued-by-you-for-copyright-infringement/id=54955.

[8] Williams, 885 F.3d at 1165; see 17 U.S.C. § 102(a)(7) (2016).

[9] Williams v. Bridgeport Music, Inc., No. LA CV13-06004 JAK, 2014 WL 7877773, at *8 (C.D. Cal. Oct. 30, 2014).

[10] Hutchens, supra note 7.

[11] Williams, 885 F.3d at 1165.

[12] David Post, Blurred Lines and Copyright Infringement, Wash. Post (Mar. 12, 2015), https://www.washingtonpost.com/news/volokh-conspiracy/wp/2015/03/12/blurred-lines-and-copyright-infringement/?noredirect=on&utm_term=.128eb87d3b51.

[13] Williams, 885 F.3d at 1187 (Nguyen, J., dissenting).

[14] Post, supra note 12.

[15] Melinda Newman, Top Lawyers On What Songwriters Must Learn From ‘Blurred Lines’ Verdict, Forbes (Mar. 11, 2015, 12:18 PM), https://www.forbes.com/sites/melindanewman/2015/03/11/top-lawyers-weigh-in-on-the-blurred-lines-verdict-and-what-songwriters-must-learn/#327891976bfa.

[16] Taylor Turville, Emulating vs. Infringement: The “Blurred Lines” of Copyright Law, 38 Whittier L. Rev. 199, 199 (2018).

[17] See Tim Wu, Why the “Blurred Lines” Copyright Verdict Should Be Thrown Out, New Yorker (Mar. 12, 2015), https://www.newyorker.com/culture/culture-desk/why-the-blurred-lines-copyright-verdict-should-be-thrown-out.

[18] Turville, supra note 16, at 218.

[19] See Randy Lewis, More Than 200 Musicians Rally Behind Appeal of ‘Blurred Lines’ Verdict, L.A. Times (Aug. 31, 2016), http://www.latimes.com/entertainment/music/la-et-ms-blurred-lines-appeal-musicians-20160831-snap-story.html (“The friend of the court brief argues that the ‘Blurred Lines’ verdict was flawed and that if it remains on the books it would create a profound chilling effect in the creative community because the similarities . . . had more to do with the general feel rather than specific musical elements in common.”).

[20] See Smith v. Jackson, 84 F.3d 1213, 1218 (9th Cir. 1996) (“[T]he subjective ‘intrinsic test’ asks whether an ‘ordinary, reasonable observer’ would find a substantial similarity of expression of the shared idea.” (citation omitted)).

[21] U.S. Const. art. 1, § 8, cl. 8.

[22] 17 U.S.C. § 102(a) (2016).

[23] Id. § 102(a)(2).

[24] Id. § 102(a)(7).

[25] Hutchens, supra note 7.

[26] 1 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 2.05[A] (2018).

[27] Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991).

[28] Nimmer, supra note 26, § 2.05[B].

[29] Feist, 499 U.S. at 345.

[30] Nimmer, supra note 26, § 2.05[B].

[31] Feist, 499 U.S. at 358.

[32] Nimmer, supra note 26, § 2.05[B].

[33] Copeland v. Bieber, 789 F.3d 484, 488 (4th Cir. 2015); see also Three Boys Music Corp. v. Bolton, 212 F.3d 477, 481 (9th Cir. 2000) (“Proof of copyright infringement is often highly circumstantial, particularly in cases involving music.”).

[34] Id. (citation omitted).

[35] 2 Paul Goldstein, Copyright: Principles, Law, and Practice §, at 91 (1989).

[36] Swirsky v. Carey, 376 F.3d 841, 845 (9th Cir. 2004).

[37] Sid & Marty Krofft Television Prods. Inc. v. McDonald’s Corp., 562 F.2d 1157, 1164 (9th Cir. 1977).

[38] Three Boys Music, 212 F.3d at 485.

[39] Id. (quoting Pasillas v. McDonald’s Corp., 927 F.2d 440, 442 (9th Cir. 1991)).

[40] Krofft, 562 F.2d at 1164.

[41] See Joe Lynch, 8 Songs Accused of Plagiarism That Hit No. 1 on the Billboard Hot 100, Billboard (Mar. 12, 2015), https://www.billboard.com/articles/news/list/6501950/songs-accused-plagiarism-no-1-hot-100-blurred-lines (explaining that many hit songs sound similar to previous songs due to theft or coincidence).

[42] Jordan Runtagh, Songs on Trial: 12 Landmark Music Copyright Cases, Rolling Stone (June 8, 2016, 4:24 PM), https://www.rollingstone.com/politics/politics-lists/songs-on-trial-12-landmark-music-copyright-cases-166396/george-harrison-vs-the-chiffons-1976-64089/.

[43] Bright Tunes Music Corp. v. Harrisongs Music, Ltd., 420 F. Supp. 177, 180-81 (S.D.N.Y. 1976).

[44] Id. at 180.

[45] Id. at 180-81; See Williams v. Gaye, 885 F.3d 1150, 1171 n.16 (explaining that while this case was under the 1909 Act, the commercial sound recordings were listened to by the factfinders).

[46] 741 F.2d 896 (7th Cir. 1984).

[47] Id. at 898.

[48] Id. at 899.

[49] Id.

[50] Id.

[51] Selle, 741 F.2d at 903.

[52] 212 F.3d 477 (9th Cir. 2000).

[53] Id. at 480.

[54] Id. at 483-85.

[55] Id. at 485; see Swirsky v. Carey, 376 F.3d 841, 849 (9th Cir. 2004) (stating that courts have considered different elements of a musical composition when determining substantial similarity).  “Music, like software programs and art objects, is not capable of ready classification into only five or six constituent elements; music is comprised of a large array of elements, some combination of which is protectable by copyright.”  Id.

[56] Three Boys Music, 212 F.3d at 482.

[57] See Wu, supra note 17 (“The question is not whether Pharrell borrowed from Gaye but whether Gaye owned the thing that was borrowed. And this is where the case falls apart.  For it was not any actual sequence of notes that Pharrell borrowed, but rather the general style of Gaye’s songs.  That is why ‘Blurred Lines’ sounds very much like a Marvin Gaye song.  But to say that something ‘sounds like’ something else does not amount to copyright infringement.”).

[58] Williams, 885 F.3d at 1183 (Nguyen, J., dissenting).

[59] Id. at 1182 n.27.

[60] Id. at 1185 (Nguyen, J., dissenting).

[61] Post, supra note 12.

[62] Turville, supra note 16, at 218.

[63] Nimmer, supra note 26, § 2.05[B].

[64] Brief for 212 Songwriters, Composers, Musicians, and Producers as Amici Curiae Supporting Appellants at 3, 10, Williams v. Gaye, 885 F.3d 1150 (9th Cir. 2018) (CA No. 15-56880).

[65] Wu, supra note 17.

[66] See Brief for Amici Curiae, supra note 64, at 12 n.4.

[67] Gaste v. Kaiserman, 863 F.2d 1061, 1068 (2d Cir. 1988).

[68] Darrell v. Joe Morris Music Co., 113 F.2d 80, 80 (2d Cir. 1940).

[69] Brief for Amici Curiae, supra note 64, at 12 n.4.

[70] Post, supra note 12.

How To Get Away With Murder: The “Gay Panic” Defense

by Omar T. Russo



In April of 2018, a jury found 69-year-old James Miller of Austin, Texas not guilty of murder for the 2015 slaying of his neighbor, Daniel Spencer.[1]  The jury convicted Miller of criminally negligent homicide, a crime that earned him a mere six months in jail and ten years of probation.[2]  Miller invited Spencer, his 32-year-old neighbor, to his house where they drank and listened to music; the two were musicians.[3]  According to Miller, he rejected a kiss from Spencer and stabbed him in a panic.[4]

Miller’s defense counsel argued that he acted in self-defense, which is one of the defenses defendants may assert, known unofficially as the “gay panic” defense.[5]  Only a handful of states have enacted legislation to proactively ban the defense, and similar legislation is pending at the federal level, in several states, and in the District of Columbia.[6]

The so-called “gay panic” defense stems from a phenomenon originally coined by psychotherapist Edward J. Kempf in 1920, who claimed that in his studies of heterosexual-identifying males, they became agitated, enraged and panicked by their acute homosexual thoughts or ideas.[7]  The concerns for psychological breakdown described by Kempf were not out of touch with the times, given the classification of “homosexuality” as a medically-recognized disorder until 1973.[8]

Today the gay panic defense continues to be used to influence jurors to mitigate a violent defendant’s conviction or sentence based on the premise that the victim was romantically interested in the defendant of the same sex that, consequently, struck some panic within the defendant and caused him or her to react violently.  The defense, based upon irrational “homophobia and transphobia, . . . send[s] the wrong message that violence against LGBT people is acceptable.”[9]  In an era post-pathological homosexuality, cases such as these move the focus of the case from the defendant to the victim.[10]  In order for this defense to work, defendants must prove that “the victim’s unwanted, nonviolent homosexual advance was characterized as an external stimulus causing the defendant’s homicidal reaction.”[11]

The basis for this defense is highly troublesome for another reason, namely, its equal protection implications.  If we swapped the victim’s supposed sexual identity with a religious identity or racial identity, then the defense would crumble.  Contemporarily, a defense of panic based on arbitrary characteristics of another person is illogical and poorly reflective of our current state of law, justice, and societal opinion.  The gay panic defense continues to perpetuate the message that LGBT people are frightening and somehow instill reasonable fear in people; that an LGBT individual’s unwanted and nonviolent romantic attempts are justification for violence and even murder.  To bring the issue of a victim’s sexual orientation to focus as a defense tactic is “like placing a woman’s sexual promiscuity at issue to show consent to rape.”[12]

Origins of the Gay Panic Defense

The first known use of the gay panic defense was the California case of People v. Rodriguez,[13] where the defendant argued that the victim touched him sexually while he urinated in an alley.[14]  In Rodriguez, the defendant beat to death an elderly man with a tree branch after following him into his yard where he was emptying his garbage.[15]  The defendant, however, argued that after his friends stole a woman’s purse, he ran to urinate in an alley and was grabbed in the process from behind.[16]  Fearing the man was “trying to engage in a homosexual act,” the defendant picked up the branch and beat the victim over the head.[17]

An expert testified at trial that the defendant was not acting under “acute homosexual panic,” but was sane when he committed the murder.[18]  The jury returned a verdict of guilty for murder in the second degree, rather than for murder in the first degree, with which the defendant was originally charged.[19]  This case opened the door for the gay panic defense as a mitigating factor for defendants’ violent actions.  Although the expert physician provided testimony as to the defendant’s sanity, which the jury accepted, the pervasive nature of the defendant’s story of having been touched while urinating led to a reduced conviction.

A Deeply Rooted LGBT Bias in the Law

As anti-gay sentiment grew in the first half of the twentieth century, laws developed to reflect the national opinion.  Through the enforcement of sodomy laws, many states engaged in “witch hunts” of gay men, which were the legal methods of criminalizing “gay conduct.”[20]  These sodomy laws were upheld by the Supreme Court’s 1986 landmark case, Bowers v. Hardwick,[21] in which the Court upheld a strict Georgia sodomy statue.  The defendant argued the statute that criminalized sodomy violated his constitutional rights to privacy and due process.[22]  Ultimately, the Court ruled in favor of Georgia,[23] essentially validating the sodomy laws of that state and others that were being used to punish gay men across the country.

The issue of sodomy laws would not be revisited by the Court until 2003, when it overturned its ruling in Bowers with its holding in Lawrence v. Texas.[24]  The Court held that the Texas sodomy statute that formed the basis for the case served “no legitimate state interest which [could] justify its intrusion into the personal and private life of the individual.”[25]  The Court set out that the Due Process Clause provides individuals the “full right to engage in their conduct without intervention of the government,” effectively invalidating state statutes prohibiting similar conduct to the Texas statute.[26]

The Impact of the Gay Panic Defense

Lawrence v. Texas stands, today, as a precursor to the national progression of LGBT rights.  Over a decade later, the Supreme Court continued its momentum in this area with its ruling in Obergefell v. Hodges,[27] effectively providing the right to marry to all citizens of the United States.[28]

Despite the public’s progressing views toward LGBT persons, and the law’s reluctant evolution in the same direction, gays and transgenders face violence at disproportionately high rates compared to any other group of people.[29]  The gay panic defense perpetuates the continued violence against LGBT persons by allowing perpetrators to have their sentences mitigated or avoid punishment entirely, solely on the basis of their victim’s actual or perceived sexual orientation or gender identity.[30]

While the gay panic defense itself is unrecognized in any jurisdiction in the country, defendants use it as an underlying defense to typically one of three recognized defenses: self-defense, provocation, or diminished capacity/insanity.[31]  By allowing a defendant to receive any benefit of the doubt for violence he perpetrates against another based solely on the victim’s LGBT status, or perceived status, is to play upon the implicit bias of some jurors and exacerbate the implication that LGBT persons do not matter.

Current and Pending Bans

States must act to proactively put an end to the use of gay panic defenses because of its detrimental impact to the proper function of the criminal justice system.  California, Illinois, and Rhode Island have each succeeded in passing legislation to that effect and are leading the nation on this front.


In 2014, California became the first state to ban the gay panic defense from being used in criminal proceedings, stating in relevant part:

For purposes of determining sudden quarrel or heat of passion . . . the provocation was not objectively reasonable if it resulted from the discovery of, knowledge about, or potential disclosure of the victim’s actual or perceived gender, gender identity, gender expression, or sexual orientation, including under circumstances in which the victim made an unwanted nonforcible romantic or sexual advance towards the defendant, or if the defendant and victim dated or had a romantic or sexual relationship.[32]

The bill limits a defendant’s ability to assert provocation as a defense for murder in reaction to a romantic interaction or attempt by a member of the same sex under the laws of the state. It is similar to the way state and federal laws protect rape victims in criminal trials through rape shield laws that limit a defendant’s ability to defend himself through probing into the victim’s sexual history.


Illinois followed, introducing two new provisions which limit the use of the defense:

Provided, however, that an action that does not otherwise mitigate first degree murder cannot qualify as a mitigating factor for first degree murder because of the discovery, knowledge, or disclosure of the victim’s sexual orientation. . . .[33]

Serious provocation is conduct sufficient to excite an intense passion in a reasonable person provided, however, that an action that does not otherwise constitute serious provocation cannot qualify as serious provocation because of the discovery, knowledge, or disclosure of the victim’s sexual orientation. . . .[34]

Illinois’ statute essentially states that the discovery of a victim’s sexual orientation or gender identity may not suffice for an assertion of the provocation defense, and more broadly that any attempt to mitigate the crime of murder will fail if based solely upon a similar discovery.

Rhode Island

Rhode Island’s statute is arguably the most encompassing law of the three states that have banned the gay panic defense.  Rhode Island’s statute bans the use of the “unrecognized” defense under the three official defenses through which it is typically brought: provocation, self-defense and diminished capacity.

[P]rovocation was not objectively reasonable if it resulted from the discovery of, knowledge about, or potential disclosure of the victim’s actual or perceived gender, gender identity, gender expression, or sexual orientation . . . a defendant does not suffer from reduced mental capacity based solely on the discovery or, knowledge about, or potential disclosure of the victim’s actual or perceived gender, gender identity, gender expression, or sexual orientation . . . A person is not justified in using force against another based solely on the discovery of, knowledge about, or potential disclosure of the victim’s actual or perceived gender, gender identity, gender expression, or sexual orientation. . . .[35]

Along with California, Illinois, and Rhode Island, similar legislation to ban the use of gay panic defenses is pending in New Jersey, Washington, and the District of Columbia.[36]  At the federal level, a bill is pending that would prohibit such defenses in federal criminal cases.[37]  The federal bill in relevant part states that “no nonviolent sexual advance or perception or belief, even if inaccurate, of the gender, gender identity or expression, or sexual orientation of an individual may be used to excuse or justify the conduct of an individual or mitigate the severity of an offense.”[38]  While successfully passing this bill at the federal level will eliminate this defense tactic in federal courts, state courts would not be bound by the law, and each state legislature must codify their own individual bans.


The gay panic defense is an outdated defense technique that abuses unfortunate lingering bias against the LGBT community to reduce a defendant’s perceived culpability or absolve them entirely.  Alarmingly, the defense harms LGBT people in the very forum in which they, as victims, should be able to seek justice and protection.

Victims of violent crimes in these cases deserve justice, but rather they and their families are often re-victimized, as violent offenders receive reduced convictions and sentences.  Modern society has progressed to a point where it would be absurd to allow our justice system to be hindered by an obstacle based on apathy for the lives of gay and transgender citizens.  Gay panic defense bans should be universally implemented to protect LGBT victims in the same way that rape shield laws protect victims of sexual assault across the nation.  The gay panic defense is an affront to LGBT people in this country and a weakness within the criminal justice system that must be managed by states taking the initiative to protect all their citizens.

[1] Jackie Salo, Man Who Used ‘Gay Panic’ Defense for Killing Neighbor Avoids Prison, N.Y. Post (Apr. 27, 2018, 5:28 PM), https://nypost.com/2018/04/27/man-who-used-gay-panic-defense-for-killing-neighbor-avoids-prison/.

[2] Id.

[3] Cleve R. Wootson, Jr., A Former Police Employee Said He Killed a Man in ‘a Gay Panic’ – an Actual Legal Defense That Worked, Wash. Post (Apr. 27, 2018), https://www.washingtonpost.com/news/post-nation/wp/2018/04/27/a-former-cop-said-he-killed-a-man-in-a-gay-panic-an-actual-legal-defense-that-worked/?noredirect=on&utm_term=.5aafde75b8f6.

[4] Id.

[5] William Shepherd, Gay and Trans Panic Defenses Resolution, 2013 A.B.A. Resol. 113A, at 6, https://lgbtbar.org/wp-content/uploads/sites/6/2014/02/Gay-and-Trans-Panic-Defenses-Resolution.pdf.

[6] Gay and Trans Panic Defense, LGBT B., https://lgbtbar.org/what-we-do/programs/gay-and-trans-panic-defense (last visited Sept. 1, 2018).

[7] Edward J. Kempf, Psychopathology 477 (1920), https://archive.org/details/39002086348753.med.yale.edu.

[8] Jack Drescher, Out of DSM: Depathologizing Homosexuality, 5 Behav. Sci. 565 (2015), https://www.ncbi.nlm.nih.gov/pmc/articles/PMC4695779.

[9] Jordan Blair Woods et al., Model Legislation for Eliminating the Gay and Trans Panic Defenses, Williams Inst., Sept. 2016, at 3, https://williamsinstitute.law.ucla.edu/wp-content/uploads/2016-Model-GayTransPanic-Ban-Laws-final.pdf.

[10] David Alan Perkiss, A New Strategy for Neutralizing the Gay Panic Defense at Trial: Lessons From the Lawrence King Case, 60 UCLA L. Rev. 778, 797 (2013).

[11] Id.


[12] Developments in the Law: Sexual Orientation and the Law, 102 Harv. L. Rev. 1508, 1548 n.187 (1989).

[13] 64 Cal. Rptr. 253 (Ct. App. 1967).

[14] Id. at 256.

[15] Id. at 253.

[16] Id. at 256.

[17] Id. at 255.

[18] Rodriguez, 64 Cal. Rptr. at 255.

[19] Id. at 254.

[20] Richard Weinmeyer, The Decriminalization of Sodomy in the United States, 16 AMA J. Ethics 916, 916-17 (2014).

[21] 478 U.S. 186 (1986).

[22] Id. at 188.

[23] Id.

[24] 539 U.S. 558 (2003).

[25] Id. at 578.

[26] Id.

[27] 135 S. Ct. 2584 (2015).

[28] Id. at 2605.

[29] Jaime M. Grant et al., Injustice At Every Turn: A Report of the National Transgender Discrimination Survey, Nat’l Ctr. Transgender Equality, 2011, at 2, https://endtransdiscrimination.org/PDFs/NTDS_Report.pdf.

[30] Woods et al., supra note 9, at 2.

[31] Shepherd, supra note 5.

[32] Assemb. 2501, 2013 Leg., Reg. Sess. (Cal. 2014).

[33] S. 1761, 100th Gen. Assemb., Reg. Sess. (Ill. 2017).

[34] Id.

[35] H.R. 7066, 2017 Leg. Sess. (R.I. 2018).

[36] LGBT B., supra note 6.

[37] Gay and Trans Panic Defense Prohibition Act of 2018, H.R. 6358, 115th Cong. (2018).

[38] Id. § 3.

Executive Privilege from the Judicial Process: Indictments, Criminal Proceedings, and Pardons

By Nicholas Maggio

On August 21, 2018, President Donald Trump’s former personal attorney, Michael Cohen, admitted in federal court that, during the 2016 campaign, Mr. Trump ordered him to arrange payments for two women with the principal purpose of influencing the election.[1]  This is a recent development surrounding the special counsel investigation into whether Russia interfered with the 2016 United States Presidential elections. Investigators are looking into any coordination between the Trump election campaign and Russian officials and whether President Trump obstructed justice by lying or withholding information from the investigation.[2]  Most notable about Mr. Cohen’s admission is that it directly implicates the president as a co-conspirator in a proven federal crime.[3]

However, it remains unclear whether a sitting United States president can be indicted.  In 1973, the Department of Justice Office of Legal Counsel (“OLC”) issued a memo arguing that a sitting president could not be indicted.[4]  It reiterated this argument in 2000 after President Clinton’s sex scandal.[5]  The OLC argued that the nature of criminal proceedings, including the indictment process, would unduly interfere with the conduct of the president.[6]  The memos equated an  indictment to an incapacitation of the president.[7]  Accordingly, the memos concluded that indicting a sitting president would unconstitutionally impair the executive from executing his constitutional obligations.[8]

It is uncertain whether these are official Department of Justice policies.  The OLC argues that these memos are binding policies.[9]  Robert Mueller, the head of the special investigation, stated he would follow these memos as they relate to bringing an indictment.[10]  Nevertheless, legal scholars disagree whether the memos are binding authority of prosecutors and the Special Counsel.[11]  For instance, the arguments set forth in these memos are not settled law as they are neither found in statutes nor case law.  No court, including the Supreme Court of the United States, has heard a case or ruled on whether a sitting president can be indicted.

The author argues that prosecutors should bring their indictments and let the Supreme Court decide the constitutionality of their action.  The Department of Justice’s memos should not preclude this issue from going to the nation’s highest court.  Article 2, section 1, clause 6 of the United States Constitution provides the precedent conditions and procedure for replacing a sitting president.[12]  Specifically, the clause details that a president’s “inability to discharge the powers and duties of said office” shall allow for a new officer to act as the president until the disability is removed or a new president is elected.[13]  Clauses 3 and 4 of the 25th Amendment further clarify replacement procedures when a president can no longer discharge his duties.[14]  Thus, if an indictment would interfere with the President discharging his constitutional duties, we should utilize the provisions already in place.

The Constitution

There are no constitutional provisions dealing with whether a sitting president can be criminally indicted.  The recorded discussions during the Constitutional Convention do not help clarify the issue of presidential immunity from indictments either.[15]  Instead, the Constitution provides for the conditions under which a President may be removed from office.

In article 2, section 1, clause 6, the Constitution reads in relevant part: “[i]n Case of the . . . [i]nability to discharge the Powers and Duties of the said Office, . . . the Congress may by Law provide the Case of Removal . . . .”[16]  The records of the Federal Convention do not provide much clarity concerning how criminal indictments relate to this provision.[17]

The lack of case law on the subject forces one to turn towards peripheral, secondary sources of authority.  Some early analysis of the Constitution highlights how our system allows for indictments of officials in contrast to the English system.[18]  For instance, Patrick Henry, an American attorney and Founding Father, gave a speech suggesting that a President could be  indicted while in office.[19]  Modern legal scholars recognize founding figures’ conclusions that a President should not enjoy immunity from indictment while in office.[20]

The 25th Amendment

The 25th Amendment serves to clarify the order of succession and procedures in place to succeed a President.  However, there is a lack of law or instances that help define when one should invoke this amendment.  In relevant part, section 3 of the 25th Amendment reads that:

Whenever the Vice President and a majority of either the principal officers of the executive departments or of such other body as Congress may by law provide, transmit to the President pro tempore of the Senate and the Speaker of the House of Representatives their written declaration that the President is unable to discharge the powers and duties of his office, the Vice President shall immediately assume the powers and duties of the office as Acting President.[21]

Before passing the 25th Amendment, Congress conducted studies among legal scholars to determine what qualifies as an “inability” under the Constitution.[22]  While some survey responses contend that a disability should be defined as what the founders could have medically contemplated at their time, others argue that it is a practical matter concerning whether the president is discharging the duties of his office.[23]

There is only a small pool of Presidents that had their powers removed under the 25th Amendment.  In 1985, President Reagan penned a letter charging then-Vice President Bush with discharging presidential powers and duties.  This precipitated Reagan’s undergoing surgery, which left him temporarily incapacitated.[24]  President Reagan soon resumed his powers after his surgery.[25]  In 2002, President George W. Bush penned a letter discharging his duties to the Vice President under the 25th Amendment.[26]  This letter also preceded a medical procedure that required sedation.[27]  President Bush discharged his duties again in 2007 before another routine medical procedure that required sedation.[28]  He resumed his powers shortly thereafter both times.[29]

Office of Legal Counsel Memoranda

In 1973, the Department of Justice OLC drafted a memorandum arguing that a sitting President could not be indicted.[30]  The memo explained that the attention necessary to defend a criminal indictment would “interfere with the President’s unique duties.”[31]  Accordingly, the memo concluded that an indictment would frustrate a President’s ability to carry out his duties to such an extent that any proceeding should be deferred until after his term.[32]  In 2000, the OLC reaffirmed these conclusions with another memorandum.[33]

Federal prosecutors are expected to follow official Department of Justice policies and regulations.[34] While it has been an official practice of the Department of Justice to refrain from indicting a President, it is unclear whether doing so is an official policy.[35]  The official nature of these memoranda and their frequency suggest that federal prosecutors would be bound by them.

Indictment as a Disability

            History would lend itself to the notion that the 25th Amendment’s third and fourth clause are reserved for medical incapacities.  Even in letters to Congress before drafting the Amendment, legal scholars argued that a disability could only be understood as the founders understood intellectual illness.[36]  Yet, others still argued that the inability to discharge duties should extend to practical matters.[37]

For constitutional purposes, a mental or physical disability is worth considering because of the impairments it places on one to carry out their work.  In theory, we are not concerned with disabilities that do not impair an officer’s ability to produce a quality work product.  Accordingly, administration officials are solely concerned with circumstances that afflict one’s ability to practically function.  If a condition, either mental, physical, or legal, prevents a president from discharging his duties in any way, then that should be considered a disability sufficient for invoking the 25th Amendment.

History shows us that a President can still be effective while attending to legal proceedings.  In December of 1998, the House of Representatives introduced articles of impeachment against President Bill Clinton.  Still, he enjoyed a 68% approval rating and a 72% rating among Americans that felt he could be effective and lead successful foreign policy endeavors.[38]  Moreover, President Clinton deployed troops, after rallying support, to Serbia in March of 1999 (a month after his impeachment proceeding).[39]  This achievement complemented domestic accomplishments, too.  For instance, President Clinton, a member of the Democratic Party, was able to negotiate with the Republican Party (“GOP”) and agreed on paying dues to the United Nations (“UN”), doubling afterschool programs, and the 100,000 teacher initiative.[40]  In President Clinton’s case, attending to legal proceedings did not seem to debilitate him from executing his duties.  Nevertheless, the consequences of legal proceedings did not appear to impair the credibility or function of the government.

Insulating a President from indictment allows for a likely criminal actor to exercise powers in our nation’s highest office.  This circumstance was occasioned during Nixon’s presidency.[41]  Because of Nixon’s position, he secured funds to bankroll cover-ups of the Watergate scandal.[42]  These operations spanned across two terms.[43]  An indictment could have intercepted and stopped these operations sooner than an impeachment.

One rebuttal to this argument is that Congress is charged with removing a President when he does something dastardly.  It seems important to note that impeachment is a political process.  As such, its instigation is subject to the whims of politicians.  Its success also requires a two-thirds majority vote by Congress.  Accordingly, it is possible that a President can commit a federal offense without being removed from office.  It does not necessarily follow that because a President does something “dastardly,” he will be removed from office.


The Constitution provides for replacing a President while in office.  As a nation, we have seen this procedure carried out on several occasions.  Further, the President can execute both foreign and domestic initiatives with success while attending to legal matters and wrestling with the consequences of them.

Most importantly, perhaps, is that Congress could effectively insulate a President’s removal from office following an impeachment.  This serves to keep a person, likely guilty of crimes, with the gambit of executive power at his disposal.  Our experiences with President Nixon and his proclivity for cover-ups indicate why this is problematic.

In sum, not only does the Constitution provide for replacing a disabled sitting President, but our laws and history allow holding them accountable with an indictment.  It is not only permissible, but imperative, that we hold our chief executive accountable for his criminal behavior.  Thus, prosecutors should bring indictments and let the Supreme Court resolve the constitutionality of bring such allegations.

[1]  William K. Rashbaum et al., Michael Cohen Says He Arranged Payments to Women at Trump’s Direction, N.Y. Times (Aug. 21, 2018), https://www.nytimes.com/2018/08/21/nyregion/michael-cohen-plea-deal-trump.html.

[2] Chris Strohm & Shannon Pettypiece, Mueller Weighs Putting Off Trump Obstruction Decision, Bloomberg (Mar. 12, 2018, 4:00 AM), https://www.bloomberg.com/news/articles/2018-03-12/mueller-is-said-to-weigh-putting-off-trump-obstruction-decision.

[3] Aaron Blake, Michael Cohen’s Plea Deal is Very Bad for Trump, Wash. Post (Aug. 21, 2018) https://www.washingtonpost.com/politics/2018/08/21/why-cohen-plea-deal-is-bad-trump-it-puts-him-very-close-an-actual-crime/?noredirect=on&utm_term=.d44a53a1ec1c (discussing Mr. Cohen pleading guilty to eight counts of financial crimes).

[4] Robert G. Dixon, Jr., Amenability of the President, Vice President and other Civil Officers to Federal Criminal Prosecution while in Office, Dep’t Just., Sept. 24, 1973, https://fas.org/irp/agency/doj/olc/092473.pdf.

[5] Randolph D. Moss, A Sitting President’s Amenability to Indictment and Criminal Prosecution, U.S. Dep’t Just., Oct. 16, 2000, https://www.justice.gov/file/19351/download.

[6] Id.

[7] Id.

[8] Id.

[9] Andrew Crespo, Is Mueller Bound by OLC’s Memos on Presidential Immunity?, Lawfare (July 25, 2017, 9:00 AM), https://www.lawfareblog.com/mueller-bound-olcs-memos-Presidential-immunity.

[10] Michael S. Schmidt et al., Mueller Won’t Indict Trump if He Finds Wrongdoing, Giuliani Says, N.Y. Times (May 16, 2018), https://www.nytimes.com/2018/05/16/us/politics/mueller-trump-indictment.html.

[11] Crespo, supra note 9.

[12] U.S. Const. art. II, § 1, cl. 6.

[13] Id.

[14] U.S. Const. amend. XXV, § 3 (“Whenever the President transmits to the President pro tempore of the Senate and the Speaker of the House of Representatives his written declaration that he is unable to discharge the powers and duties of his office, and until he transmits to them a written declaration to the contrary, such powers and duties shall be discharged by the Vice President as Acting President”).

[15] Eric M. Freedman, The Law As King and the King As Law: Is A President Immune from Criminal Prosecution Before Impeachment?, 20 Hastings Const. L.Q. 7, 16 (1992).

[16] U.S. Const. art. II, § 1, cl. 6.

[17]  See generally Max Farrand, The Records of the Federal Convention (1911), http://oll.libertyfund.org/titles/farrand-the-records-of-the-federal-convention-of-1787-3vols.

[18] William Rawle, A View of the Constitution of the United States of America 125-26 (1829), http://press-pubs.uchicago.edu/founders/documents/amendIIs9.html.

[19] Speech of Patrick Henry, Am. Hist., June 5, 1788, http://www.let.rug.nl/usa/documents/1786-1800/the-anti-federalist-papers/speech-of-patrick-henry-(june-5-1788).php.

[20] Freedman, supra note 15, at 13-15.

[21] U.S. Const. amend. XXV, § 3.

[22] Problem of Presidential Inability: Hearings Before the Spec. Subcomm. to Study Presidential Inability of the Comm. on the Judiciary H.R., 84th Cong. 16 (1956) [hereinafter “Hearings”].

[23] Id. at 18.

[24] Ronald Reagan, Letter to the President Pro Tempore of the Senate and the Speaker of the House on the President’s Resumption of His Powers and Duties Following Surgery, Am. Presidency Project, July 13, 1985, http://www.presidency.ucsb.edu/ws/?pid=38884.

[25] Id.

[26] George W. Bush, Letter to Congressional Leaders on Temporary Transfer of the Powers and Duties of President of the United States, Am. Presidency Project, June 29, 2002, http://www.presidency.ucsb.edu/ws/?pid=63676.

[27] Id.

[28] Bush, supra note 26.

[29] George W. Bush, Letter to Congressional Leaders on Resuming the Powers and Duties of the President of the United States, Am. Presidency Project, July 21, 2007, http://www.presidency.ucsb.edu/ws/?pid=75573.  See also Bush, supra note 26.

[30] Dixon, Jr., supra note 4.

[31] Dixon, Jr., supra note 4.

[32] Moss, supra note 5.

[33] Dixon, Jr., supra note 4.

[34] 9-27.000 – Principles of Federal Prosecution, U.S. Dep’t Just., https://www.justice.gov/jm/jm-9-27000-principles-federal-prosecution (last updated Sept. 19, 2018).

[35] Schmidt, supra note 10.

[36] Hearings, supra note 22.

[37] Hearings, supra note 22.

[38] Presidential Approval Ratings – Bill Clinton, Gallup: News, https://news.gallup.com/poll/116584/Presidential-approval-ratings-bill-clinton.aspx (last visited Oct. 2, 2018).

[39] Samuel J. Sarver, Effects of the Impeachment on Bill Clinton’s Staff, Cabinet, Agenda, and Legacy, Ill. St. U., https://pol.illinoisstate.edu/downloads/conferences/2006/Sarver13.pdf (last visited Oct. 2, 2018).

[40] Id.

[41] See generally John W. Dean, Blind Ambition (1976); Carl Bernstein & Bob Woodward, All The President’s Men (1974); Bob Woodward & Carl Bernstein, The Final Days (1976).

[42] Id.

[43] Id.

The Dram Shop Act: A Useful but Often Forgotten Tool by Estate Litigators

The Dram Shop Act: A Useful but Often Forgotten Tool by Estate Litigators
By. Kyle G. Durante, Esq.*

When thinking of estate tort litigation, the causes of action that come to mind for most practitioners and legal professionals are wrongful death,[1] survival/conscious pain and suffering claims,[2] and, for some, the violation of the right of sepulcher,[3] all the while, failing to realize the advantages and practical application of the Dram Shop Act. The Dram Shop Act, and its outgrowth of related statutes, allows practitioners to potentially seize additional recovery on behalf of their client when a decedent has died under certain circumstances; to wit: as a consequence of a person’s unlawful assistance and/or contribution towards a tortfeasor’s intoxication, which caused and/or contributed towards the decedent’s death.

Section 11-101 of New York General Obligations Law (hereinafter “GOL”) provides in pertinent part:

[a]ny person who shall be injured in person, property, means of support, or otherwise by any intoxicated person, or by reason of the intoxication of any person, whether resulting in his death or not, shall have a right of action against any person who shall, by unlawful selling to or unlawfully assisting in procuring liquor for such intoxicated person, have caused or contributed to such intoxication; and in any such action such person shall have a right to recover actual and exemplary damages.[4]

Moreover, section 11-103 of GOL provides in pertinent part:

[a]ny person who is injured in person, property, means of support or otherwise by a person whose abilities are impaired by the use of a controlled substance,[5] or by reason of such person’s impairment, shall have a right of action against any person who caused or contributed to such impairment by unlawfully selling to or unlawfully assisting in procuring a controlled substance for such person.[6]

A Dram Shop claim premised on the above-referenced statutes permits the recovery of damages in addition to any claim for wrongful death, sepulcher and/or survival claim; these and other common claims are premised upon a tortfeasor’s tortious conduct, while a Dram Shop claim is premised upon a statutory violation.[7] Moreover, in agreement with the stated purpose in the enactment of the Dram Shop Act, a Dram Shop claim permits the injured and/or his or her personal representative on behalf of his or her estate,[8] in the instance of death, to assert a claim against the person and/or entity that provided the intoxicated individual with the intoxicating substance.[9] As stated by the New York Assembly in enacting the Dram Shop statutes:

[u]nfortunately, recovery against the impaired individual is often not available for various reasons. The most common being that the individual is without significant assets or insurance to cover damages.

This bill recognizes that fault is not only on the person under the influence of drugs, but should be shared by the seller or procurer of illegal controlled substances. But for these illegal dealings in drugs, many accidents or intentional injuries would not occur.[10]

These statutes permit the injured and/or his estate to recover damages that otherwise would not be recoverable—a claim that would otherwise not be permitted at common law.[11]

In order to successfully pursue a claim pursuant to GOL § 11-101 and/or GOL § 11-103, the plaintiff must only prove that the person to be held liable must have “caused or contributed” to the tortfeasor’s condition, which ultimately led to the plaintiff’s injury and/or death, as opposed to GOL § 11-100,[12] which requires the plaintiff to prove that the defendant knowingly provided alcohol to a person under the age of 21. Thus, pursuant to GOL § 11-101 and/or GOL § 11-103, an injured and/or his estate will be able to recover damages against the person who provided the tortfeasor with alcohol and/or an intoxicating substance, so long as the plaintiff is able to prove that the act of providing the alcohol and/or controlled substance “caused or contributed” to the plaintiff’s injury and/or death.[13]

One of the significant differences between GOL § 11-101 and GOL § 11-103 is the category of defendants the statutes are applicable against. GOL § 11-101 only applies to the commercial sale of alcohol, and “one who merely provides alcoholic beverages, without remuneration or profit, [can] not be held liable under the Dram Shop Act.”[14] Nevertheless, GOL § 11-103 is applicable to commercial and/or individual providers of controlled substances.[15] The application of either of these Dram Shop statutes could produce a significant recovery for an injured person and/or his or her or her estate.

Based upon the number of published decisions citing these provisions, especially GOL § 11-103, it does not appear that practitioners are utilizing all means of recovery on behalf of their clients when asserting claims for wrongful death, sepulcher and/or a survival claim. Any time a decedent dies under circumstances where the tortfeasor may have possibly been under the influence of alcohol and/or a controlled substance at the time of their tortious act, practitioners must contemplate a possible Dram Shop claim, which could permit their clients to recover damages above and beyond common law torts.

* Associate Attorney, Abrams, Fensterman, Fensterman, Eisman, Formato, Ferrara, Wolf & Carone, LLP.; Juris Doctor, Summa Cum Laude, Touro College Jacob D. Fuchsberg Law Center; Bachelor of Arts in Political Science, The University at Buffalo, The State University of New York; Associate of Science in Criminal Justice, Erie Community College.

[1] A wrongful death cause of action permits the decedent’s intestate distributees to recover compensatory damages, which they sustained as a result of the decedent’s death and, in certain situations, special damages, punitive damages and attorney’s fees and costs. See N.Y. Est. Powers & Trusts Law [hereinafter “EPTL”] § 5-4.4 (McKinney 2018). The essential prima facie elements of a wrongful death claim are: “(1) the death of a human being, (2) the wrongful act, neglect or default of the defendant by which the decedent’s death was caused, (3) the survival of distributees who suffered pecuniary loss by reason of the death of the decedent and (4) the appointment of a personal representative of the decedent.” Chong v. N.Y.C. Transit Auth., 441 N.Y.S.2d 24 (App. Div. 2d Dep’t 1981) (internal citations omitted). See also Cruz v. City of New Rochelle, No. 13CV7432 (LMS), 2017 WL 1402122 (S.D.N.Y. Apr. 3, 2017) (applying New York substantive law and holding similarly).

[2] When a tort causes the decedent’s death, a wrongful death cause of action may lie but, in addition to such claim, the underlying tort that caused the decedent’s death does not abate merely because of death. EPTL § 11-3.2. A survivor claim permits the decedent’s estate, by virtue of a personal representative, to commence an action against the tortfeasor for the underlying tort and/or a tort that was committed against the decedent prior to his death, even if never filed by the decedent (so long as the claim is filed within the statute of limitations). Id. § 11-3.2(b); Stolarski v. Family Servs. of Westchester, Inc., 973 N.Y.S.2d 725 (App. Div. 2d Dep’t 2013). See also N.Y. C.P.L.R. § 215 (McKinney 2018) (discussing the statute of limitations for intentional torts); id. § 214 (discussing the statute of limitations for a negligence claim); id. § 210 (discussing the tolling and extending provisions in connection with the death of a claimant).

[3] A sepulcher cause of action is a common law right of the “surviving next of kin . . .  to the immediate possession of a decedent’s body for preservation and burial and that damages will be awarded against any person who unlawfully interferes with that right or improperly deals with the decedent’s body.” Lott v. State, 225 N.Y.S.2d 434 (Ct. Cl. 1962). See also Estate of Scheuer v. City of New York, 780 N.Y.S.2d 597 (App. Div. 1st Dep’t 2004); Henderson v. Kingsbrook Jewish Med. Ctr., 936 N.Y.S.2d 318 (App. Div. 2d Dep’t 2012); Melfi v. Mount Sinai Hosp., 877 N.Y.S.2d 300 (App. Div. 1st Dep’t 2009) (holding “the common-law right . . . gives the next of kin the absolute right to immediate possession of a decedent’s body for preservation and burial, and that damages will be awarded against any person who unlawfully interferes with that right or improperly deals with the decedent’s body.”). The essential prima facie elements of a sepulcher cause of action are: 1) that the defendant interfered with the plaintiff’s right to possess the decedent’s body; 2) the plaintiff had a right to possession of the remains; 3) the interference was unauthorized; 4) plaintiff was aware of the interference; 5) the interference caused the plaintiff mental suffering, or emotional/psychological injury, which is generally presumed; and 6) that the defendant proximately caused the plaintiff’s injury. Mack v. Brown, 919 N.Y.S.2d 166 (App. Div. 2d Dep’t 2011); Shepard v. Whitestar Dev. Corp., 977 N.Y.S.2d 844 (App. Div. 4th Dep’t 2014).

[4] N.Y. GOL § 11-101(1) (McKinney 2018).

[5] The term “controlled substance” includes substances as defined by sections 3302 and 3306 of the New York Public Health Law.

[6] GOL § 11-103(1)(a) (McKinney 2018) (footnote not in original). For a discussion of additional Dram Shop Claims, see GOL § 11-100 (McKinney 2018) (discussing liability when a person provides alcohol to a tortfeasor who is under the age of 21).

[7] See supra note 3; GOL § 11-101; § 11-103.

[8] Hereinafter, any reference to an action taken by a decedent’s estate is to be construed to mean a personal representative, as defined by EPTL § 1-2.13, on behalf of the estate.

[9] Assemb. 6145, 1983 Leg., Reg. Sess. (N.Y. 1983) (statement of Assemb. McCabe); S. 4185, 1983 Leg., Reg. Sess. (N.Y. 1983) (Sen. Barclay).

[10] Id.

[11] Terrigino v. Zaleski, 544 N.Y.S.2d 283, 285 (Sup. Ct. Monroe Cnty. 1989).

[12] Section 11-101 of the GOL is another portion of the Dram Shop Act, which permits the recovery of damages against a defendant who knowingly provides alcohol to a person under the age of 21, where that underage person caused the plaintiff’s injury and/or death. See supra note 6.

[13] Terrigino, 544 N.Y.S.2d at 285.

[14] Id. (citing Huyler v. Rose, 451 N.Y.S.2d 478 (App. Div. 4th Dep’t 1982); Gabrielle v. Craft, 428 N.Y.S.2d 84 (App. Div. 3d Dep’t 1980)). See also D’Amico v. Christie, 518 N.E.2d 896 (N.Y. 1987).

[15] Terrigino, 544 N.Y.S.2d at 286 (quoting People v. Lam Lek Chong, 379 N.E.2d 200 (N.Y. 1978) (“‘. . . any passing of drugs from one person to another would constitute a sale,’ and it is not necessary that the supplier receive something in return in order to constitute a sale.”) (alteration in original).

Dueling Claim Construction Standards at the PTAB and District Courts

Dueling Claim Construction Standards at the PTAB and District Courts

By John Sepulveda

The United States Patent and Trademark Office (“USPTO”) and the federal district courts currently use two different standards to construe patent claims in patents and patent applications.  The two standards are (1) the Broadest Reasonable Interpretation (“BRI”) Standard and (2) the Phillips Standard created by the Court of Appeals for the Federal Circuit (“CAFC”) in 2005.[1]

In general, the USPTO currently uses the broader BRI standard during patent prosecution and during America Invents Act (“AIA”) trial proceedings[2] conducted by the Patent Trial and Appeal Board (PTAB), a USPTO administrative tribunal.[3]  However, depending on the expiration date of the patent, the PTAB also uses the Phillips standards to construe patent claims.  Federal district courts and the International Trade Commission (“ITC”) use only the Phillips standard to construe patent claims.  Thus, the use of the two different standards is unfair because the USPTO, in general, uses an arguably broader standard in its AIA trial proceedings than federal courts use during patent infringement litigation.

Recently, the Director of the USPTO, Andrei Iancu, signed a Notice of Proposed Rulemaking (“NPRM”).[4]   If adopted, the proposed rules will shift how patent claims are interpreted in an issued patent or patent application by the PTAB.  This change creates greater consistency and predictable outcomes in litigation that would provide a much fairer playing field for patent owners.

BRI Standard

The BRI standard is applied to patents that will not expire before a final PTAB written decision.[5]  Under the BRI standard, the claim or claims at issue are given their “broadest reasonable construction in light of the specification of the patent in which it appears.”[6]  The USPTO sometimes uses this standard during patent prosecution to give claims their broadest reasonable interpretation.  The USPTO also uses this standard during reexamination proceedings and reissue proceedings, depending on whether the patent will expire before the final PTAB written decision.  During prosecution and AIA trial proceedings, the BRI standard can be used to invalidate patents whereby the claims of the challenged patents are interpreted based on an expanded scope of prior art.

Courts have justified the USPTO’s use of the BRI standard for several reasons.  First, the USPTO has used the BRI standard for over 100 years.  Moreover, the courts have asserted that the approach “serves the public interest” by interpreting claims broadly during examination such that they are not given “broader scope than is justified.”[7]  Any perceived unfairness during both reexamination and reissue proceedings is remedied, as an applicant may amend claims to “correct errors in claim language and adjust the scope of claim protection as needed.”[8]

There are several issues with the use of the BRI standard.  First, district courts may grapple with whether issue preclusion (collateral estoppel) applies to PTAB construction.  In addition, agency determinations have been held to have a preclusive effect in district court litigation.[9]  However, the CAFC has stated that for PTAB claim construction decisions made under the BRI standard, issue preclusion is unlikely to apply because differing claim construction standards are applied in each case.[10]  Thus, the PTAB ultimately does not litigate the same issue that is before the district court.[11]  Additionally, there have been cases of a patent being found valid and infringed in a district court action using the Phillips standard that have been subsequently found invalid by the USPTO under the BRI standard.[12]

Phillips Standard

The Phillips standard is used in cases where the patent at issue has already expired or will expire within 18 months from entry of the post-issuance petition.[13]  This standard is used in these cases because the owner’s opportunity for amending is “substantially diminished” when the patent expires.[14]  The claims are construed to have “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention . . . .”[15]  This is often referred to as “the ordinary and customary meaning.”[16]

One potential issue is that the Phillips standard can sometimes produce a narrower construction than the BRI standard, since the BRI standard focuses on the patent specification and excludes the other types of evidence taken into account by the Phillips standard.[17]  Therefore, the federal courts reliance on the Phillips standard may have the effect to impact strategy decisions and forum selection for both parties.

How the CAFC Has Applied These Standards Recently

In a recent case, In re Smith International, Inc.,[18] Smith owned a patent directed to a downhole drilling tool that included a “generally cylindrical tool body.”[19]  The patent was the subject of an ex parte reexamination, brought during the infringement case Smith initiated against Baker Hughes.[20]

Claim 28, as amended, read as follows:

  1. An expandable downhole tool for use in a drilling assembly positioned within a wellbore having an original diameter borehole and an enlarged diameter borehole, comprising:

a body; and

at least one non-pivotable, moveable arm having at least one borehole engaging pad adapted to accommodate cutting structures or wear structures or a combination thereof and having angled surfaces that engage said body to prevent said arm from vibrating in said second position;

wherein said at least one arm is moveable between a first position defining a collapsed diameter, and a second position defining an expanded diameter approximately equal to said enlarged diameter borehole.[21]

During reexamination, the PTAB affirmed the examiner’s BRI interpretation of “body” in the claims as a broad term that could encompass other components, such as “mandrel” and “cam sleeve,” because the claims lacked further limiting features and the specification did not prohibit such a reading.[22]  Given this interpretation, several claims were found to be anticipated and obvious.[23]  The Federal Circuit reversed this decision, finding that the PTAB’s construction of “body” was unreasonably broad.[24]  Whereas the claims recited “body” without any elaboration, the specification did not use the term in a generic manner.  The term “body” was consistently referred to as a component that was distinct from other components such as the mandrel.  The court rejected the PTAB’s reasoning that the specification did not proscribe its broad reading.[25]

The court held that BRI “is an interpretation that corresponds with what and how the inventor describes his invention in the specification, i.e., an interpretation that is ‘consistent with the specification.’”[26]  The court held that interpretation by the PTAB was not the broadest reasonable interpretation, but instead the “broadest possible interpretation” absent an express definition or prohibition.[27]

Proposed USPTO Rules

A NPRM was signed on May 3, 2018 by USPTO Director Andrei Iancu.[28]  Under the proposed approach, the USPTO would construe patent claims and proposed claims based on the record of the inter partes review (“IPR”), post-grant review (“PGR”), or covered business method patents (“CBM”) proceedings, taking into account the claim language itself, specification, and the prosecution history pertaining to the patent.[29]  According to the proposed rules, the USPTO would apply the principles that the Federal Circuit articulated in Phillips.[30]  The USPTO is also proposing amending the rules for PTAB trial proceedings to add that the USPTO will consider any prior claim construction determination concerning a term of the claim in a civil action, or an ITC proceeding, that is timely made of record in an IPR, PGR, or CBM proceeding.[31]  The purpose of the proposed rules includes ensuring consistency in claim construction between the PTAB and proceedings in district court or at the ITC, and to increase judicial efficiency.[32]


The proposed change in the claim construction standard from BRI to the Phillips standard could lead to greater uniformity and predictability between the claim constructions adopted by the PTAB and the federal courts.  If adopted, the new rules will harmonize the standard used for patentability and infringement.  The BRI standard has been outcome determinative in many proceedings.  In its current state, the discrepancy in claim interpretation standards often leads to unfair results.

[1] See Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005).  During patent infringement lawsuits, United States federal district courts construe patent claims using the Phillips standard.

[2] The AIA trial proceedings conducted by the PTAB include reexamination proceedings, reissue proceedings, inter partes review, post-grant review, covered business method patent proceedings, derivations, and interferences.

[3] The relevant AIA trial proceedings include the reexamination proceeding and the reissue proceeding.  A reexamination proceeding is a process whereby a third party or inventor can have a patent reexamined by a patent examiner to verify that the subject matter it claims is patentable.  MPEP § 2209 (9th ed. Rev. 8, Jan. 2018).  A reissue proceeding is instituted to correct an error in the patent such that the error resulting in the patent is deemed wholly or partly inoperative or invalid.  Id. § 1401.

[4] Gene Quinn, PTO Proposes Rulemaking to Implement Phillips Claim Construction at PTAB, IP Watchdog (May 8, 2018), http://www.ipwatchdog.com/2018/05/08/pto-proposed-rulemaking-phillips-claim-construction-ptab/id=96995/.

[5] The Federal Circuit’s en banc decision in Phillips expressly recognized that the USPTO employs the “broadest reasonable interpretation” standard.  415 F.3d at 1316.

[6] In re Cuozzo Speed Tech., LLC, 793 F.3d 1268, 1275 (Fed. Cir. 2015) (citation omitted).

[7] Id. at 1276; see also In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984).

[8] See Cuozzo, 793 F.3d at 1290 (citing Yamamoto, 740 F.2d at 1572).

[9] See, e.g., B & B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293, 1304-05 (2015).

[10] See SkyHawke Tech., LLC v. Deca Int’l Corp., 828 F.3d 1373, 1376-78 (Fed. Cir. 2016).

[11] See id.

[12] See PPC Broadband, Inc. v. Corning Optical Comm’s RF, LLC, 815 F.3d 734 (Fed. Cir. 2016) (discussing the analysis as to how the BRI and the Phillips standard can lead to different results).

[13] MPEP § 2111 (9th ed. Rev. 8, Jan. 2018).

[14] See In re Rambus Inc., 694 F.3d 42 (Fed. Cir. 2012).

[15] Phillips, 415 F.3d at 1314.

[16] Id.

[17]  See generally Facebook, Inc. v. Pragmatus AV, LLC, 582 F. App’x. 864 (Fed. Cir. 2014).

[18] 871 F.3d 1375 (Fed. Cir. 2017).

[19] Id. at 1377.

[20] Id. at 1378.

[21] Id. (emphasis in original).

[22] Id. at 1382.

[23] Smith, 871 F.3d at 1379.

[24] Id. at 1382.

[25] Id.

[26] Id. at 1383 (citation omitted).

[27] Id. (emphasis in original).

[28] Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 21221 (proposed May 9, 2018) (to be codified at 37 C.F.R. pt. 42).

[29] Id. at 21222.

[30] Id. at 21222-26.

[31] Id.

[32] Id. at 21223 (“The Office’s goal is to implement a fair and balanced approach, providing greater predictability and certainty in the patent system.”).

Meet the new Junior Staffers!

The Touro Law Review is pleased to welcome our 2018-19 Junior Staffers!


(Left to right) Top row: John Clennan, Justin Scharff, Derek Turhan, Nicholas Maggio; Second row from the top: Cody Getch, Maria Pavlatos, Emma Henry, Navneet Kaur; Third row from the top: Kaitlyn Wells, Wantee Ramkaran, Nicole Johnson, Ashley Mulligans, Paola Reynoso; fourth row from the top: Joseph Mizzi, Olivia Lattanza, Casey Gringrich, Frank Amaro, Robert Molinari; Front row: Jessica Senat and Omar Russo; Not photographed: Nicholas Calabria, Brian Grif, Sana Hussain, Gustave Passanante, James Reiser, Monika Santelli, and Samantha Sbrocchi.

Also, meet the  2018-19 Editorial Board!



Editorial Board

Michael Morales

Headshot_EICMichael, a fourth year, part-time evening law student at Touro Law Center, is the Editor-in-Chief of the Touro Law Review. As the Editor-in-Chief, Michael serves as the leader of the entire Editorial Board and staff of over fifty students. He is heavily involved in all levels of the publication process, ranging from author recruitment to final edits. Michael graduated from Worcester Polytechnic Institute in 2014 with a Bachelor of Science in Electrical and Computer Engineering. He worked as an electrical engineer for one year before starting his law school journey to pursue a career in intellectual property law. After three years of working as an engineer, Michael switched career paths from engineering to law and started his legal career as a legal intern at Canon, U.S.A., Inc. He is admitted to practice before the United States Patent and Trademark Office. He worked as a patent agent for Ryan, Mason & Lewis, L.L.P. where he helped secure patent protection for various clients. During the summer of 2018, Michael worked as a summer associate at Ropes & Gray, L.L.P. He has accepted an offer for full-time employment to work in the firm’s intellectual property litigation practice group in Manhattan after graduating and taking the bar examination.


Megan Mulholland


Megan is the Managing Editor of the Touro Law Review. As the Managing Editor, Megan assists the Editor-in-Chief in all final editing procedures and manages the senior and junior staff members. Megan graduated from St. John’s University in 2015 with a Bachelor of Science in Marketing & Business Management. Megan is a full time, third year law student at Touro Law Center. Megan has spent her past two summers working public interest internships for the Eastern District of the United States Attorney’s Office and for the New York City Law Department, Office of the Corporation Counsel. She also had the great pleasure of externing for the late Honorable Leonard Wexler. She fondly recalls sharing morning coffee with the Judge while he would recant exciting court room stories. Megan is pursuing a prosecutorial career in hopes of one day becoming an Assistant United States Attorney.


Helene Bruckner

image1 (2)Helene is the Issue Editor of the Touro Law Review. As Issue Editor, Helene assists the Editor-in-Chief and the Managing Editor in the final publication procedures such as proof-reading, source verifying, and article formatting. Helene is going into her third and final year of law school at Touro Law Center.  Helene is a member of the Touro Law Honors Program. Additionally, Helene works for Lexis Nexis as a student representative.  Helene enjoys spending time with her friends and family, kayaking, hiking, and playing sports.



Alexandria Tomanelli

Alexandria is the Articles Editor for the Touro Law Review. As Articles Editor, Alexandria recruits and solicits articles and authors for each Law Review issue. Alexandria is a third-year law student at the Touro College Jacob D. Fuchsberg Law Center. Her Note entitled A Drone’s Eye View: Why and How the Federal Aviation Administration Should Regulate Hobbyist Drone Use will be published this upcoming year. After graduating from LIU Post University in 2016 with a Bachelor’s of Arts degree in Political Science, Alexandria was accepted into Touro to pursue her passion for justice and advocacy. Alexandria has consistently earned a spot on the Dean’s List and was selected to serve as a Teacher’s Assistant for Professor Rena Seplowitz’s Property Law class. While balancing the academic rigor of law school, Alexandria was able to work as a summer associate for Rosicki, Rosicki & Associates as well as a legal extern during the Fall 2017 semester at Campolo, Middleton & McCormick LLP. This past summer she served as a Law Clerk for Jaspan Schlesinger LLP. In her free time, Alexandria loves to travel, practice yoga, and she is actively involved in philanthropic efforts for organizations such as the American Cancer Society and Autism Speaks. Publication inquires may be directed to Alexandria at either contact listed below.


Haley Baldwin


Haley is the Online Editor for the Touro Law Review. As Online Editor, Haley edits and manages our online bases such as the Touro Law Review Blog, the Touro Law Review website, and the Touro Law Review Facebook. Haley was born and raised in Eastern Long Island. She graduated from Stony Brook University with a Bachelor of Arts in Political Science, magna cum laude. Having interned with the Suffolk County DA’s Office for her entire law school career, she hopes to become a prosecutor in their office. She also had the pleasure of interning with the Honorable Mark D. Cohen in Riverhead Criminal Court. Her other interests include: civil rights, immigration, and her puppies – Darla and Donnie. Online publication inquiries can be directed to Haley at either contact listed below.


Kristen Lomando

FullSizeRenderKristen is the Business Editor of the Touro Law Review. As the Business Editor, Kristen manages the Law Review budget and deals with event planning. Kristen is a third-year law student at the Touro College Jacob D. Fuchsberg Law Center. After graduating from Briarcliffe College, with a Bachelor’s of Science degree in Pre-law, Kristen worked with Suffolk County Legislator Kate Browning and the Suffolk County Legislature. It was there her passion for public service was sparked. In 2016, Kristen was accepted into Touro where she began to purse a career in public interest. While balancing the rigors of law school, Kristen worked for the United States Attorney’s Office as a legal intern as well as a judicial extern during the  Spring 2018 semester with the Honorable Mark Cohen and the Honorable Martin Efman. This past summer, Kristen worked with Suffolk County Attorney’s Office – Family Court Bureau as a legal intern. After graduation, Kristen hopes to work as a prosecutor for the Suffolk County District Attorney’s Office. In her free time, Kristen enjoys hanging out with her friends, family, and her dog, Cooper! Business inquires may be directed to Kristen at any of the contacts listed below.


Steven Fink

SFSteven is a Notes Editor for the Touro Law Reivew. As a Notes Editor, Steven works closely with individual staff-authors to assist in editing and finalizing their papers for publication. Steven manages over ten staff-articles at a time. Steven began attending Touro Law as an evening student in 2016 after earning a B.B.A. from Hofstra University. Steven works as a paralegal and has over six years of experience handing real estate tax certiorari matters. He is planning on graduating from Touro in the Fall of 2019 and pursuing a career as a practicing tax certiorari attorney.


Madeleine Lazer


Madeleine is a Notes Editor for the Touro Law Review. As a Notes Editor, Madeleine works closely with individual staff-authors to assist in editing and finalizing their papers for publication. Madeleine manages over ten staff-articles at a time. Madeleine is a 3L, full-time student at Touro Law Center. She is involved in the Touro Law School community as the President of the Public Interest Organization at Touro (PILOT) and as a Writing Coach at the Touro Writing Center. As a graduate of SUNY New Paltz, with a Bachelor of Arts in Sociology: Human Services, Madeleine was drawn to law after interning at the Dutchess County Public Defender’s Office. She describes herself as a compassionate, yet no-nonsense intersectional feminist. Madeleine hopes to find a fulfilling career as a lawyer who represents and serves the special needs community. She enjoys long walks on the NYC streets for various parades and activist marches, as well as assortments of cheese, coffee, and cats. Madeleine knows that she has a cool last name, “Laser,” and takes pride in such fact! She looks forward to working with the incoming Touro Law Review students on their Notes and is excited for a fun-packed, anxiety-filled last year of law school!


Thomas Narducci

16-0154-AP4_2522 28Large29Thomas is a Notes Editor for the Touro Law Reivew. As a Notes Editor, Thomas works closely with individual staff-authors to assist in editing and finalizing their papers for publication. Thomas manages over ten staff-articles at a time. Thomas is a graduate of SUNY Albany with a bachelor’s degree majoring in Public Policy with a minor in History. During his tenure at SUNY, Thomas began his career in public service while externing at the New York State Assembly under Deputy Majority Leader Phil Ramos. With an interest towards public interest, Thomas decided to pursue his J.D. at Jacob D. Fuchsberg Touro Law Center. Thomas continued working in the public sector following his 1L year while working at the Suffolk County County Attorney’s Office and again during his 2L year while externing at the Suffolk County District Attorney’s Office, District Court Bureau. Thomas’s academic studies and experience in the public sector has provided him incredible insight into how community planning and local governments operate. Thomas is currently employed as a Law Clerk at Napoli Shkolnik where he is working vigorously on the Multi District Litigation concerning the opioid crisis currently infiltrating almost every community within the United States. Thomas uses most of his leisure time with his girlfriend, Maria, traveling, being foodies, and catching up on the latest Netflix releases. Thomas, a humongous sports fanatic, is often found watching The Mets in the summers, and The Rangers during the winters.


David Schneider

DSDavid is a Notes Editor for the Touro Law Reivew. As a Notes Editor, David works closely with individual staff-authors to assist in editing and finalizing their papers for publication. David manages over ten staff-articles at a time. David is a full time day student in his 3L year. Prior to enrolling at Touro, David worked in Matrimonial Law, Family Law, Personal Injury Law, Tenant and Landlord Law, and Commercial Law. During his 2L year, David has interned with Burner Law Group, Working in Elder Care Law and Estate Planning. David has continued to work in the Matrimonial and Family Law field during his summer breaks, and has accepted an offer to work in .


Alyssa Iuliano

AIAlyssa is a Research Editor for the Touro Law Review. As a Research Editor, Alyssa oversees junior and senior staff members’ editorial assignments. Alyssa manages over ten-staff members at a time. Alyssa graduated from SUNY Albany in December 2014 with a Bachelors of Science in Business Administration and a second major in History. She is currently a 4L in the part-time evening program and has wanted to be a lawyer since she was in middle school. During the day she works as a paralegal and legal intern in a plaintiff personal injury law firm where she has worked for over 4 years. In addition, Alyssa is a member of the Touro Law Women’s Bar Association and Phi Alpha Delta. Alyssa is pursuing a career in tort law and also has interests in estate planning, matrimonial law, corporate law, and special education law. In her free time, Alyssa likes to go running, read, and bake! She looks forward to working with all of the incoming Touro Law Review staff and is excited to complete her final year of law school.


Christopher Musachio

20180721_212046Christopher is a Research Editor for the Touro Law Review. As a Research Editor, Christopher oversees junior and senior staff members’ editorial assignments. Christopher manages over ten-staff members at a time. Chris is a student in his 3L year.  In addition to Research Editor for Law Review, he is Treasurer for the Intellectual Property Society and a member of the Honors Program.  Chris has externed with Bodner & O’Rourke, an intellectual property firm.  He has also interned with the late Judge Leonard Wexler and with Suffolk County Legal Aid Family Court Bureau.


Rachel Patrick

Rachel is a Research Editor for the Touro Law Review. As a Research Editor, Rachel oversees junior and senior staff members’ editorial assignments. Rachel manages over ten-staff members at a time. Rachel is a third-year law student at the Touro College Jacob D. Fuchsberg Law Center. Although she was originally a Biology major, Rachel fell in love with the law during an elective class and graduated with a Bachelor’s of Science degree in legal studies from St. John’s University in 2016. Rachel is an Honors Program Scholar and serves as  a Research Assistant for Professor Rena Seplowitz. Rachel’s note, It’s the Thought that Counts: The Conceptual Separability Confusion: Exploring the Ramifications of the Varsity Brands, Inc. v. Star Athletica, LLC Decision and its Elimination of the Distinction between Physical and Conceptual Separability, will be published this year.  In addition to her academic success, Rachel has acquired the necessary practical skills through her legal externships with the Late Honorable Leonard Wexler, a U.S. District Court Judge for the Eastern District of New York, and the U.S. Attorney’s Office. During her spare time, Rachel enjoys traveling and hiking.


David Spoerer

David is a Research Editor for the Touro Law Review. As a Research Editor, David oversees junior and senior staff members’ editorial assignments. David manages over ten-staff members at a time. David is an Honors Program Scholar at Touro College Jacob D. Fuchsberg Law Center. In 2015, David graduated from John Jay College of Criminal Justice and embarked on his journey of becoming a lawyer. During the summer of his 1L year, he worked as a Summer Associate in one of the largest and most prestigious law firms on Long Island, Certilman Balin Adler & Hyman, LLP. After spending the summer of 2017 working side-by-side with Howard M. Stein on multi-million dollar transactions, David started his second year of law school. Still excelling academically, David began his work on law review with other highly successful students at the law school. David spent the summer of 2018 working with the highly skilled and experienced trial lawyers at Dell&Dean, PLLC, gaining invaluable wisdom and experience one can only learn from working with the best personal injury lawyers on the island. David has a passion for personal injury law and loves helping the injured get the compensation they deserve. David also enjoys going to the gym, fishing, and playing basketball. Most importantly, he loves spending time with his family.