Law Commons^™

Trademarks And Related Rights: Highlights For 2009-10, David S. Welkowitz

Akron Intellectual Property Journal

However, the most important part of the [Rescuecom Corp. v. Google, Inc.] opinion was not the decision itself, or its reasoning. Rather, it was the Appendix that the court annexed to its opinion that made the decision extraordinary. As law students, we are all taught that federal courts will not issue advisory opinions. But it is difficult to view the Rescuecom Appendix as anything other than an advisory opinion. And its breadth is rather sweeping. The court embarked on a fairly lengthy discussion of the history and purpose of the “use in commerce” definition. It concluded that it …

Intersection Between The Patent System And Antitrust Laws: Patents Speeding, Antitrust Yielding, Innovation Bleeding!, Stijepko Tokic

Akron Intellectual Property Journal

In this article, I explain the interaction between the two laws and describe the ways in which these two extremely important areas of government regulation are and are not in tension. I argue that the conflict between the two laws is overstated, but the proper balance is far from being found. The reason for that is a notion that the current state of the patent system is more of a hindrance than a spur to innovation and competition due to overprotection and broadening of patent rights, lowering of standards to grant patents, chronic inefficiency of the Patent and Trademark Office …

An Introduction To U.S. Export Control: Regulations For Patent Practitioners, Michael K. Carrier

Akron Intellectual Property Journal

This article presents basic information on the U.S. export control laws most relevant to U.S. patent practice, including the preparation and filing of patent applications related to commercial items, and the intended audience of this article is the U.S. patent practitioner who does not routinely deal with export-controlled subject matter. If the patent practitioner intends to: export technical information from the U.S. for the purpose of having a patent application prepared; hire or work with foreign nationals (who may or may not actually be in the U.S.) in conducting technical research or patentability and invalidity searches; or help prepare patent …

Recent Developments In Private Enforcement Of The Can-Spam Act, Vanessa J. Reid

Akron Intellectual Property Journal

This note discusses recent developments in the area of private enforcement of the federal CAN-SPAM Act. The article is divided into four sections. The first section describes the history and background of the spam problem, while the second outlines historical attempts to combat spam, culminating in the passage of the CAN-SPAM Act. The third section details a series of recent cases in which private entities have attempted to enforce the CAN-SPAM Act, and how courts have attempted to fashion a broader standard for the Act's private standing provision without opening the door to an excessive number of lawsuits. The final …

A View Of The Hierarchy Of Patent Rights, Trips, And The Canadian Patent Act, Jacob R. Osborn

Akron Intellectual Property Journal

In this paper, Section I introduces the international dimension of intellectual property with respect to the Trade Related Aspects of Intellectual Property (TRIPS) Agreement and the Dispute Settlement Understanding for resolving conflicts thereupon. Section II proceeds to examine two facets of the Canadian Patent Act: the Regulatory Review Exception and the Stockpiling Exception. While the international judicial authority determined that the Regulatory Review Exception was in conformity with TRIPS, the authority also found the Stock Piling Exception in violation of Article 30 of the TRIPS Agreement. Finally, Section III offers an alternative, historical approach to construing TRIPS, based on the …

What Blogging Might Teach About Cybernorms, Jacqueline D. Lipton

Akron Intellectual Property Journal

While the literature on social norms as online regulators has achieved some prominence in the cyberlaw area, there is still scant examination of particular online norms and of the ways in which norms interact with other forms of regulation. The aim of this article is to reverse that trend by providing a detailed examination of one apparently emerging norm in the blogosphere-the norm against "hijacking" a blog post by hyperlinking to another blog in the comment feed for the original blog post. For example, consider a situation where Blogger A posts her advice for cooking a souffle and allows readers …

Once More Unto The Breach: An Analysis Of Legal, Technological, And Policy Issues Involving Data Breach Notification Statutes, Dana J. Lesemann

Akron Intellectual Property Journal

This Article addresses the legal, technological, and policy issues surrounding U.S. data breach notification statutes and recommends steps that state and federal regulatory agencies should take to improve and harmonize those statutes. Part I of this Article provides background on the data breaches that gave rise to the enactment of notification statutes. Part II addresses the varying definitions of "personal information" in the state statutes-the data that is protected by the statute and whose breach must be revealed to consumers. Part III analyzes how states define the data breach itself, particularly whether states rely on a strict liability standard, on …

The Criminal Liability Of Artificial Intelligence Entities - From Science Fiction To Legal Social Control, Gabriel Hallevy

Akron Intellectual Property Journal

The modem question relating to Al entities becomes: Does the growing intelligence of Al entities subject them to legal social control as any other legal entity?This article attempts to work out a legal solution to the problem of the criminal liability of Al entities. At the outset, a definition of an Al entity will be presented. Based on that definition, this article will then propose and introduce three models of Al entity criminal liability:

(1) The Perpetration-via-Another Liability Model

(2) The Natural-Probable-Consequence Liability Model

(3) The Direct Liability Model.

How (Not) To Discourage The Unscrupulous Copyist, Peter Ludwig

Akron Intellectual Property Journal

This article explores how the U.S. and Japanese courts implement the doctrine of equivalents when determining patent infringement. The doctrine of equivalents is a balance of, on one hand, the public's interest to know the metes and bounds of the patent, and on the other hand, the private interest of the patentee to be granted a sufficient scope for the granted patent. After comparing and contrasting the implementation of the doctrine in Japan and the United States, I propose a new method that places the burden on the patent practitioner, before infringement proceedings begin, to determine the proper scope of …

Construing Patent Claims In Light Of The Specification Versus Importing Claim Limitations From The Specification: Is There Any Difference?, Rob Harmer

Akron Intellectual Property Journal

This Comment proceeds in three parts. Part II discusses the purpose of claim construction and the components of a patent application most relevant to construing patent claims. This Part also discusses the standard of appellate review for claim construction, the sources of evidence used in construing patent claims, and the two conflicting claim construction canons. Part III highlights the conflict between the canons of avoiding importing claim limitations from the specification and construing patent claims in light of the specification. Again, when construing patent claims in light of intrinsic evidence, courts often inherently import limitations from the same intrinsic evidence. …

Fashion Design Protection: The Eternal Plight Of The "Soft Sculpture", Kimberly A. Harchuck

Akron Intellectual Property Journal

This writing begs to answer the ninety-year-old question of whether or not fashion designs should be protected by law. In answering this question, Section II explores design protection in the United States and the actions taken for almost a full century in determining the legal protection of fashion. Section III discusses the many facets of fashion design, as information technology and art. Section IV reviews the evolution of copying, its benefits and detriments, and the theories proposing protection against copies. Section V addresses current U.S. intellectual property laws affecting fashion as well as the protections of individual European countries and …

Virtual Property, Real Concerns, Nelson Dacunha

Akron Intellectual Property Journal

The status of digital property protection, especially in virtual worlds, is uncertain to say the least. These are the issues that I will review in this note.

In section II, I will discuss the foundations of virtual worlds and their growth from pre-computer roots to present day sprawling universes. This background will provide a foundation for novices in the virtual world realm and an anchor for the important role that these games play in the lives of not only young Americans, but people of all ages and nationalities around the world.

Part III will discuss the critical characteristics of virtual …

The Tragedy Of (Ignoring) The Information Semicommons: A Cultural Environmental Perspective, Robert Cunningham

Akron Intellectual Property Journal

The second enclosure movement critique is familiar theoretical territory for scholars concerned with the creeping maximalist impulse of Intellectual Property Rights (IPRs). Just as the first enclosure movement relating to real property created controversies concerning social contract and the advertised efficiencies of private real property, so too these concerns are echoed within the context of IPRs. This paper employs the emergent discourse of cultural environmentalism so as to diagnose and resolve IPR issues evident within the information environment. Cultural environmentalism borrows, begs, and steals analytical frameworks from environmentalism, such as those relating to the commons, public choice theory, welfare economics, …

Permissible Product Hopping: Why A Per Se Legal Rule Barring Antitrust Liability Is Necessary To Protect Future Innovation In The Pharmaceutical Industry, Michelle L. Ethier

Akron Intellectual Property Journal

Pharmaceutical product hopping is a relatively new phenomenon in which a brand-name pharmaceutical company tactically reformulates a drug and patents the reformulation in an attempt to avoid competition by a generic competitor. When viewed in the context of the HatchWaxman framework, product hopping can effectively eliminate generic competitors from the market, thereby implicating § 2 of the Sherman Act. In addressing antitrust liability, this Note advocates a per se legal approach to product hopping so long as the hop is supported by a valid patent. Although some have argued that deference to the United States Patent and Trademark Office and …

Recent Developments In Patent Law, Kristen Jakobsen Osenga

Akron Intellectual Property Journal

In the last year, the landscape of patent law was altered by court opinions from the Supreme Court and U.S. Court of Appeals for the Federal Circuit, as well as in opinions rendered by the Board of Patent Appeals and Interferences (hereafter BPAI) at the United States Patent and Trademark Office. In addition, patent reform legislation was introduced that could have shaken up patent practice even further. Although none of the reform proposals were passed, revised versions of these legislative initiatives have already been introduced in 2009.2 This brief write-up summarizes many (but by no means all) of the important …

Examining Distinctive Jurisprudence In The Federal Circuit: Consequences Of A Specialized Court, Alan B. Parker

Akron Intellectual Property Journal

After reviewing jurisprudence that is consistent with the predicted behavior of specialized courts, this paper will discuss some recent Supreme Court cases which address some of the Circuit's distinctive jurisprudence. In addition to examining evidence of characteristics consistent with specialization-caused effects, this paper will highlight several examples suggesting that the perception is growing at the Supreme Court that the Circuit is behaving as a specialized court developing distinctive jargon and rules, and unduly tending to its constituency. That perception may or may not be justified, but there are signs that the CAFC is responding to the perception in its early …

The Sony Legacy: Secondary Liability Perspectives, Robert I. Reis

Akron Intellectual Property Journal

Sony seeded the ongoing conundrum of balancing protected intellectual property rights with the potential of technologies that enhance the use of intellectual content. New technologies that enable use also remove many copy limitations. Traditional remedies against individual infringers served their purpose of compensation and deterrence. These forms of action have been weakened where the jurisdictional, monetary and administrative underpinnings of legal administration are compromised. This complex of factors is further exacerbated by the clash between conflicting ends of protecting intellectual property rights while at the same time ensuring appropriate public beneficial use. Most enabling technologies have the potential for fundamental …

Interlocutory Claim Construction Appeals: A Better Legislative Solution, Harold C. Wegner

Akron Intellectual Property Journal

This paper commences with a consideration of current reform legislation that is a reaction to Cybor Corp. v. FAS Techs., Inc. and a high claim construction reversal rate. The problem may be traced to the notorious Federal Circuit opinion in Cybor. A surprisingly widely supported proposal for interlocutory claim construction appeals that had been pushed in the 110th Congress has been reformulated in a new version now pending in the Senate.

The Saga Continues: Secondary Liability For Copyright Infringement Theory, Practice And Predictions, Connie Davis Powell

Akron Intellectual Property Journal

This article begins by outlining the development of secondary liability theory for copyrights, followed by a discussion highlighting the overly-active role the judiciary has played in its development, and closes with addressing the future of secondary liability for copyrights based on its potential application in current litigation.

Making Others Do The Work: Secondary Liability And The Creation Of A General Obligation To The Copyright Industries, Liam O'Melinn

Akron Intellectual Property Journal

This Essay argues that the growth of secondary liability actions represents a larger attempt to impose a general obligation to protect the copyrights of the content industries, and that the full significance of secondary liability cannot be understood unless it is considered alongside other manifestations of this tendency. This Essay contends that secondary liability takes on a much greater meaning when it is seen as closely related to other efforts in extending responsibility for protecting copyrights: in the Digital Millennium Copyright Act, in various measures intended to increase the government's responsibility for copyright enforcement, in attempts to make universities accountable …

Looking For Fair Use In The Dmca's Safety Dance, Ira S. Nathenson

Akron Intellectual Property Journal

Today, it is encouraging to hear another Senator - now, Senator McCain - speak up for fair use, but it is also worth noting that McCain voted for the Senate version of the DMCA. Regardless, McCain's request to YouTube contains an intriguing premise: implicit in it is the assumption that fair use can be protected under Section 512 as it exists without amendment. In this Article, I test McCain's assumption, asking whether we can interpret Section 512 to better foster fair use. I believe that we can. In this Article, I argue that copyright owners must consider fair or other …

Toward Non-Neutral First Principles Of Private Law: Designing Secondary Liability Rules For New Technological Uses, Thomas C. Folsom

Akron Intellectual Property Journal

A series of recent cases revisits secondary liability in intellectual property law, solving some particular problems but without providing completely specified rules that are predictable and principled. Prior law already includes several varieties of secondary liability with a rationale for each. Together, these old and new sources point the way towards a synthesis, which may allow for a designed solution that is more fully specified, at least in respect of new technological uses. When all is said, secondary liability in intellectual property law still turns on two essential questions: (1) is there someone who is liable for direct infringement, and …

Palsgraf, Principles Of Tort Law, And The Persistent Need For Common-Law Judgment In Ip Infringement Cases, Jay Dratler Jr.

Akron Intellectual Property Journal

This short paper attempts to show how courts can build-and are building-a rational jurisprudence of secondary liability for IP infringement upon the foundation of these two great common-law principles of tort law: proximate cause and culpability. Besides this introduction (Part I), the paper has four sections. Part II discusses the notion of proximate cause and its application to cases assessing liability for IP infringement. It also explores a modem, economic test for proximate cause: the concept of least-cost avoider. Part III discusses the principle of culpability in cases of secondary liability and how to reconcile it with the traditional strictness …

Contributory Infringers And Good Samaritans, Mark Bartholomew

Akron Intellectual Property Journal

Part I of this Essay describes existing contributory infringement doctrine. Part II examines the circumstances in tort law where courts have found that the relationship between the defendant and the direct actor justifies imposition of a duty to control the latter. Interestingly, the ability to manage the actions of the direct actor is not the only requirement for imposing such a duty. Part III applies these findings from tort law to the specialized context of intellectual property.

Ebay Rx, Tracy A. Thomas

Akron Intellectual Property Journal

From a remedial perspective, the decision of the U.S. Supreme Court in eBay Inc. v. MercExchange, L.L.C. reopened the age-old question of what it means to award equitable relief. In eBay, the Court rejected a permanent injunction issued by the U.S. Court of Appeals for the Federal Circuit to protect a business-method patent that defendant eBay had infringed on its successful auction website. This essay diagnoses the remedial problem in eBay as the improper use of presumptions for equitable relief that effectively prioritizes selected legal rights. It offers a prescriptive cure for the problem in the traditional balancing of the …

Ip Remedies After Ebay: Assessing The Impact On Trademark Law, Sandra Rierson

Akron Intellectual Property Journal

The Supreme Court's decision in eBay Inc. v. MercExchange, L.L.C. changed the law regarding remedies in patent cases - specifically the "general rule... that a permanent injunction will issue once infringement and validity have been adjudged. Prior to eBay, the Federal Circuit held that injunctive relief was an inappropriate remedy for patent infringement only in a narrow category of cases in which enjoining an infringer would frustrate an important public interest. The Supreme Court rejected that assumption, holding instead that plaintiffs seeking this form of remedy for patent infringement were required to satisfy the traditional, four-factor test for injunctive relief. …

Rights And Remedies Post Ebay V. Mercexchange - Deep Waters Stirred, Robert I. Reis

Akron Intellectual Property Journal

eBay confirms the adage that good things often come in small packages. The court concisely focused on the inherent requirements of discretionary equitable relief in the use of injunctive remedies. The opinion informed that categorical presumptions based on presumed incidents of property rights did not satisfy the requirements of appropriate discretionary consideration. The four prongs of the requisite test "restated" for issuance of an injunction imposed the burden of proof on the plaintiff and all four factors which follow be deliberated by the court: (1) a finding of irreparable injury, (2) a finding of inadequate remedy at law for compensation, …

The Effects Of Ebay: Discretion, Statutory Damages, And Private Attorneys-General, Liam O'Melinn

Akron Intellectual Property Journal

If it were not already an apt time to consider the effects of the Supreme Court's eBay v. MercExchange decision, several recent developments serve as reminders of the importance of the issues addressed in the case: In Capitol v. Thomas the recording industry has succeeded in securing a $222,000 judgment in statutory damages for copyright infringement, a software patent infringement suit was filed in October 2007 by IP Innovation and Licensing against Novell and Redhat-seemingly the first suit to target Linux-and the PTO has rejected most of the claims in Amazon's 1-Click patent.

The eBay decision appears to assert that …

Constructed And Enhanced Equities Under Ebay: Whose Right Is It Anyway?, Richard S. Gruner

Akron Intellectual Property Journal

This article treats the injunction issuance standards announced in eBay Inc. v. MercExchange, LLC, as the starting point for patent enforcement planning by sophisticated clients and their patent and corporate attorneys. The eBay standards imply a set of circumstances in which a patent holder will be well-positioned to obtain a patent enforcement injunction, circumstances that patent holders may be able to reach through well-crafted strategic moves. This article explores the actions that a pure licensee patent holder can take to improve its position and establish "constructed equities" that will enhance its chances of obtaining a patent enforcement injunction.

Truth In Intellectual Property Revisited: Embracing Ebay At The Edge, Thomas C. Folsom

Akron Intellectual Property Journal

In addition to whatever else it might do to serve the public interest, intellectual property diminishes the commons. To that extent, any particular intellectual property claim intersects the public interest and affects more than just the immediate parties. Not only does intellectual property diminish the commons, but also each of its disciplines contains an almost casually incoherent metaphysic. There is incoherence, if not at the core, at least at the critical edges of intellectual property law that is systemic and fundamental. Notwithstanding over 200 years of practice in the United States, the goal of establishing a sufficiently principled, practical and …