Law Commons^™

Defending Breakthrough Innovation: The History And Future Of The State Of Patent Law, Max Oppenheimer

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Congress, while enacting at least six major revisions to patent law since 1793, has left the definition of patentable subject matter essentially unchanged. The Supreme Court, on the other hand, has been uncomfortable with the concept for more than a century. Despite this long-standing discomfort, it has struggled to advance a theoretical basis for its concern. In a series of recent cases, it has finally developed a theory as to why certain types of inventions, although embraced by the statutory definition, are nonetheless unpatentable. The theory, in effect, abandons the federal government’s role in protecting those inventions. This article explores …

Patent Exhaustion And Federalism: A Historical Note, Herbert J. Hovenkamp

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This essay, written as a response to John F. Duffy and Richard Hynes, Statutory Domain and the Commercial Law of Intellectual Property, 102 VA. L. REV. 1 (2016), argues that the patent exhaustion (first sale) doctrine developed as a creature of federalism, intended to divide the line between the law of patents, which by that time had become exclusively federal, and the law of patented things, which were governed by the states. Late nineteenth and early twentieth century courts were explicit on the point, in decisions stretching from the 1850s well into the twentieth century.

By the second half of …

Antitrust And Information Technologies, Herbert J. Hovenkamp

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Technological change strongly affects the use of information to facilitate anticompetitive practices. The effects result mainly from digitization and the many products and processes that it enables. These technologies of information also account for a significant portion of the difficulties that antitrust law encounters when its addresses intellectual property rights. In addition, changes in the technologies of information affect the structures of certain products, in the process either increasing or decreasing the potential for competitive harm.

For example, digital technology affects the way firms exercise market power, but it also imposes serious measurement difficulties. The digital revolution has occurred in …

Taking Patents, Gregory Dolin, Irina D. Manta

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The America Invents Act (AIA) was widely hailed as a remedy to the excessive number of patents that the Patent & Trademark Office issued, and especially ones that would later turn out to be invalid. In its efforts to eradicate “patent trolls” and fend off other ills, however, the AIA introduced serious constitutional problems that this Article brings to the fore. We argue that the AIA’s new “second-look” mechanisms in the form of Inter Partes Review (IPR) and Covered Business Method Review (CBMR) have greatly altered the scope of vested patent rights by modifying the boundaries of existing patents. The …

The Emergence Of Classical American Patent Law, Herbert J. Hovenkamp

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One enduring historical debate concerns whether the American Constitution was intended to be "classical" -- referring to a theory of statecraft that maximizes the role of private markets and minimizes the role of government in economic affairs. The most central and powerful proposition of classical constitutionalism is that the government's role in economic development should be minimal. First, private rights in property and contract exist prior to any community needs for development. Second, if a particular project is worthwhile the market itself will make it occur. Third, when the government attempts to induce development politics inevitably distorts the decision making. …

Copyright And Good Faith Purchasers, Shyamkrishna Balganesh

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Good faith purchasers for value — individuals who unknowingly and in good faith purchase property from a seller whose own actions in obtaining the property are of questionable legality — have long obtained special protection under the common law. Despite the seller’s own actions being tainted, such purchasers obtain valid title themselves and are allowed to freely alienate the property without any restriction. Modern copyright law, however, does just the opposite. Individuals who unknowingly and in good faith purchase property embodying an unauthorized copy of a protected work are altogether precluded from subsequently alienating such property, or risk running afoul …

Trademark Exhaustion And The Internet Of Resold Things, Yvette Joy Liebesman

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Over the past ten years, casual resellers have migrated from garage sales, swap meets, and classified ads to eBay and Craigslist, turning side hobbies into lucrative businesses. Today, 30 million new ads are posted on Craigslist every month, and six million new listings are posted daily on eBay.¹ The explosive online market has affected the sales of new goods, troubling manufacturers² who seek to curtail the growth of this secondary market through several avenues—some legitimate, and others not so much. For example, to combat diversion to resellers outside of its official distribution chain, Tiffany, Inc., the well-known jeweler, …

The Other Side Of Garcia:The Right Of Publicity And Copyright Preemption, Jennifer E. Rothman

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This essay is adapted from a talk that I gave on October 2, 2015 at Columbia Law School’s annual Kernochan Center Symposium. The all-day conference focused on Copyright Outside the Box. The essay considers the aftermath of Garcia v. Google, Inc., and the Ninth Circuit’s suggestion in that case that Garcia might have a right of publicity claim against the filmmakers, even though her copyright claim failed.

The essay provides a partial update of my prior work, Copyright Preemption and the Right of Publicity, 36 U.C. Davis L. Rev. 199 (2002), and suggests that despite numerous cases over …

The Questionable Origins Of The Copyright Infringement Analysis, Shyamkrishna Balganesh

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Central to modern copyright law is its test for determining infringement, famously developed by Judge Jerome Frank in the landmark case of Arnstein v. Porter. The “Arnstein test,” which courts continue to apply, demands that the analysis be divided into two components, actual copying — the question whether the defendant did in fact copy, and improper appropriation — the question whether such copying, if it did exist, was unlawful. Somewhat counter-intuitively though, the test treats both components as pure questions of fact, requiring that even the question of improper appropriation go to a jury. This jury-centric approach continues to influence …

The Dual-Grant Theory Of Fair Use, Abraham Bell, Gideon Parchomovsky

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Fair use is one of modern law's most fascinating and troubling doctrines. It is amorphous and vague, and notoriously difficult to apply. It is, at the same time, vitally important in copyright and perhaps the most frequently raised and litigated issue in the law of intellectual property.

This article offers a novel theory of fair use that provides both a better understanding of the underlying principles and better tools for applying the doctrine.

In contrast with the dominant understanding of fair use in the literature — that fair use addresses market failure — the article proposes viewing fair use as …