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Full-Text Articles in Law

Public Rights After Oil States Energy, Adam J. Macleod Mar 2020

Public Rights After Oil States Energy, Adam J. Macleod

Notre Dame Law Review

The concept of public rights plays an important role in the jurisprudence of the Supreme Court of the United States. But as the decision in Oil States last Term revealed, the Court has often used the term to refer to three different concepts with different jurisprudential implications. Using insights drawn from historical and analytical jurisprudence, this Article distinguishes the three concepts and examines how each of them is at work in patent law. A precise reading of Oil States also bears lessons for other areas of law that implicate both private rights and duties and the administration of public, regulatory ...


The Supreme Court Bar At The Bar Of Patents, Paul R. Gugliuzza Mar 2020

The Supreme Court Bar At The Bar Of Patents, Paul R. Gugliuzza

Notre Dame Law Review

Over the past two decades, a few dozen lawyers have come to dominate practice before the U.S. Supreme Court. By many accounts, these elite lawyers—whose clients are often among the largest corporations in the world—have spurred the Court to hear more cases that businesses care about and to decide those cases in favor of their clients. The Supreme Court’s recent caselaw on antitrust, arbitration, punitive damages, class actions, and more provides copious examples.

Though it is often overlooked in discussions of the emergent Supreme Court bar, patent law is another area in which the Court’s ...


Prior Art In The District Court, Stephen Yelderman Dec 2019

Prior Art In The District Court, Stephen Yelderman

Notre Dame Law Review

This Article is an empirical study of the evidence district courts rely upon when invalidating patents. To construct our dataset, we collected every district court ruling, verdict form, and opinion (whether reported or unreported) invalidating a patent claim over a six-and-a-half-year period. We then coded individual invalidity rulings based on the prior art supporting the court’s decision, observing 3320 invalidation events relying on 817 distinct prior art references.

The nature of the prior art relied upon to invalidate patents is relevant to two distinct sets of policy questions. First, this data sheds light on the value of district court ...


Existential Copyright And Professional Photography, Jessica Silbey, Eva E. Subotnik, Peter Dicola Dec 2019

Existential Copyright And Professional Photography, Jessica Silbey, Eva E. Subotnik, Peter Dicola

Notre Dame Law Review

Intellectual property law has intended benefits, but it also carries certain costs—deliberately so. Skeptics have asked: Why should intellectual property law exist at all? To get traction on that overly broad but still important inquiry, we decided to ask a new, preliminary question: What do creators in a particular industry actually use intellectual property for? In this first-of-its-kind study, we conducted thirty-two in-depth qualitative interviews of photographers about how copyright law functions within their creative and business practices. By learning the actual functions of copyright law on the ground, we can evaluate and contextualize existing theories of intellectual property ...


Patent Litigators Playing Cowboys And Indians At The Ptab, Michael E. Benson May 2019

Patent Litigators Playing Cowboys And Indians At The Ptab, Michael E. Benson

Notre Dame Law Review Reflection

This Essay concerns a new frontier of crafty strategy to keep patents from review by the Patent Trial and Appeal Board (PTAB)—the invocation of tribal sovereign immunity to prevent the PTAB from obtaining (subject-matter) jurisdiction over the patent invalidity dispute.

Part I of this Essay provides background information about a current case in which the litigant has attempted to use tribal sovereign immunity in order to avoid an inter partes review (IPR) proceeding before the PTAB. Part II provides a brief summary of the current relevant law (tribal, patent, administrative, etc.) pertaining to tribal sovereign immunity in the context ...


Clown Eggs, David Fagundes, Aaron Perzanowski Feb 2019

Clown Eggs, David Fagundes, Aaron Perzanowski

Notre Dame Law Review

Since 1946, many clowns have recorded their makeup by having it painted on eggs that are kept in a central registry in Wookey Hole, England. This tradition, which continues today, has been referred to alternately as a form of informal copyright registration and a means of protecting clowns’ property in their personae. This Article explores the Clown Egg Register and its surrounding practices from the perspective of law and social norms. In so doing, it makes several contributions. First, it contributes another chapter to the growing literature on the norms-based governance of intellectual property, showing how clowns—like comedians, roller ...


Why Do Startups Use Trade Secrets?, David S. Levine, Ted Sichelman Jan 2019

Why Do Startups Use Trade Secrets?, David S. Levine, Ted Sichelman

Notre Dame Law Review

Empirical studies of the use of trade secrecy are scant, and those focusing on startups, nonexistent. In this Article, we present the first set of data—drawn from the Berkeley Patent Survey—on the use of trade secrets by U.S. startup companies in the software, biotechnology, medical device, and hardware industries. Specifically, we report on the prevalence of trade secrecy usage among startups. Additionally, we assess the importance of trade secrets in relation to other forms of intellectual property protection and barriers to entry, such as patents, copyrights, firstmover advantage, and complementary assets. We segment these results by a ...


Prior Art In The District Court, Stephen Yelderman Jan 2019

Prior Art In The District Court, Stephen Yelderman

Journal Articles

This article is an empirical study of the evidence district courts rely upon when invalidating patents. To construct our dataset, we collected every district court ruling, verdict form, and opinion (whether reported or unreported) invalidating a patent claim over a six-and-a-half-year period. We then coded individual invalidation events based on the prior art supporting the court’s analysis. In the end, we observed 3,320 invalidation events based on 817 distinct prior art references.

The nature of the prior art relied upon to invalidate patents informs the value of district court litigation as an error correction tool. The public interest ...


Prior Art In Inter Partes Review, Stephen Yelderman Jan 2019

Prior Art In Inter Partes Review, Stephen Yelderman

Journal Articles

This Essay is an empirical study of the evidence the Patent Trial and Appeal Board relies upon when cancelling patents in inter partes review. To construct our dataset, we collected every final written decision invalidating a patent claim over a twelve-month period. We coded individual invalidation events on a reference-by-reference, claim-by-claim basis. Drawing on this dataset, we report a number of details about the prior art supporting patent cancellation, including the frequency with which U.S. patents, foreign patents, and printed publications were cited, the frequency with which the invalidating prior art would have been amenable to a pre-filing prior ...


Comparative Analysis Of Innovation Failures And Institutions In Context, Mark Mckenna Jan 2019

Comparative Analysis Of Innovation Failures And Institutions In Context, Mark Mckenna

Journal Articles

Many different legal and non-legal institutions govern and therefore shape knowledge production. It is tempting, given the various types of knowledge, knowledge producers, and systems with and within which knowledge and knowledge producers and users interact, to look for reductionist shortcuts — in general but especially in the context of comparative institutional analysis. The temptation should be resisted for it leads to either what Harold Demsetz called the Nirvana Fallacy or what Elinor Ostrom critiqued as myopic allegories.

We suggest that comparative institutional analysis must be accompanied by comparative failure analysis, by which we mean rigorous and contextual comparative analysis of ...


Technical Standards Meet Administrative Law: A Teaching Guide On Incorporation By Reference, Emily S. Bremer Jan 2019

Technical Standards Meet Administrative Law: A Teaching Guide On Incorporation By Reference, Emily S. Bremer

Journal Articles

When an agency incorporates by reference, it promulgates a rule that identifies—but does not reprint—material already published elsewhere. The incorporated materials thus become binding law without actually being printed in the agency's regulations. Sometimes the incorporated materials are privately developed technical standards, which are often copyrighted and available only for a fee. This restriction on access undermines transparency and public participation in the rulemaking process. Finding a solution is challenging because the problem is multidimensional, implicating public policy in the areas of administrative law, federal standards law and policy, and copyright.

This teaching guide is part of ...


Property And Equity In Trademark Law, Mark Mckenna Jan 2019

Property And Equity In Trademark Law, Mark Mckenna

Journal Articles

This essay, delivered as the Nies Lecture at Marquette Law School, focuses on changes in the doctrinal structure of trademark law over the course of the last century — specifically with respect to the relationship between trademark law’s limits and the broader common law of unfair competition. Changes in that relationship, I will argue, meaningfully increased trademark law's emphasis on property — what the plaintiff owns — and deemphasized legal rules that focused on the defendant’s conduct.


The Blessing Of Talent And The Curse Of Poverty: Rectifying Copyright Law's Implementation Of Authors' Material Interests In International Human Rights Law, Saleh Al-Sharieh May 2018

The Blessing Of Talent And The Curse Of Poverty: Rectifying Copyright Law's Implementation Of Authors' Material Interests In International Human Rights Law, Saleh Al-Sharieh

Notre Dame Journal of International & Comparative Law

The International Covenant on Economic, Social and Cultural Rights (ICESCR) grants authors the right to the protection of the material interests resulting from their intellectual works. The Committee on Economic, Social and Cultural Rights interpreted these interests to comprise the ability to achieve an adequate standard of living (as a minimum). This paper argues that copyright law provides a useful yet incomplete model for the protection of authors’ material interests. Copyright creates the legal environment necessary for establishing a market for intellectual works but does not guarantee its benefits to authors. Therefore, States Parties to the ICESCR should both tailor ...


Rejecting The De Minimis Defense To Infringement Of Sound Recording Copyrights, Michael G. Kubik Mar 2018

Rejecting The De Minimis Defense To Infringement Of Sound Recording Copyrights, Michael G. Kubik

Notre Dame Law Review

Part I of this Note examines the history of sound recording copyrights, the role of digital sampling in the music industry, and the basic principles and functions of the de minimis defense. Part II carefully dissects the Bridgeport and VMG opinions. Part III then considers the merits of each opinion and concludes that Bridgeport reached the correct conclusion. This argument rests on the statutory scheme of Title 17 of the U.S. Code and the plain text of its applicable provisions, bolstered by their legislative history, giving life to a unique statutory creature that thrives in a manner inconsistent with ...


Trademarks And Private Environmental Governance, David E. Adelman, Graeme W. Austin Jan 2018

Trademarks And Private Environmental Governance, David E. Adelman, Graeme W. Austin

Notre Dame Law Review

This Article examines the relationship between private environmental governance and trademark law. Over the past two decades, green trademarks and other forms of private governance have flourished in tandem with the retreat from national and international public law modalities of environmental regulation. The rising political opposition to environmental regulation partly accounts for this change. Also relevant is the rise of globalization, which due to jurisdictional and trade constraints has diminished the effective regulatory control countries have over products sold in their markets.

Private environmental governance is premised on consumers “voting with their wallets” by selecting products that reflect not just ...


Valuing Residual Goodwill After Trademark Forfeiture, Jake Linford Jan 2018

Valuing Residual Goodwill After Trademark Forfeiture, Jake Linford

Notre Dame Law Review

Trademarks contribute to an efficient market by helping consumers find products they like from sources they trust. This information-transmission function of trademarks can be upset if the law fails to reflect both how trademark owners communicate through marks and how consumers understand and use them. But many of trademark law’s forfeiture mechanisms (the ways a trademark can lose protection) ignore or discount consumer perception. This failure threatens not only to increase consumer search costs and consumer confusion, but also to distort markets.

For example, trademark protection may be forfeited when the mark owner interrupts or abandons use, even though ...


Internet Safe Harbors And The Transformation Of Copyright Law, Matthew Sag Jan 2018

Internet Safe Harbors And The Transformation Of Copyright Law, Matthew Sag

Notre Dame Law Review

This Article explores the potential displacement of substantive copyright law in the increasingly important online environment. In 1998, Congress enacted a system of intermediary safe harbors as part of the Digital Millennium Copyright Act (DMCA). The internet safe harbors and the associated system of notice-and-takedown fundamentally changed the incentives of platforms, users, and rightsholders in relation to claims of copyright infringement. These different incentives interact to yield a functional balance of copyright online that diverges markedly from the experience of copyright law in traditional media environments. More recently, private agreements between rightsholders and large commercial internet platforms have been made ...


Proximate Vs. Geographic Limits On Patent Damages, Stephen Yelderman Jan 2018

Proximate Vs. Geographic Limits On Patent Damages, Stephen Yelderman

Journal Articles

The exclusive rights of a U.S. patent are limited in two important ways. First, a patent has a technical scope—only the products and methods set out in the patent’s claims may constitute infringement. Second, a patent has a geographic scope—making, using, or selling the products or methods described in the patent’s claims will only constitute infringement if that activity takes place in the United States. These boundaries are foundational features of the patent system: there can be no liability for U.S. patent infringement without an act that falls within both the technical and geographic ...


Claiming Design, Mark Mckenna Jan 2018

Claiming Design, Mark Mckenna

Journal Articles

Design stands out among intellectual property subject matter in terms of the extent of overlapping protection available. Different forms of intellectual property usually protect different aspects of a product. In the design context, however, precisely the same features are often subject to design patent, trademark, and copyright protection-and parties commonly claim more than one of those forms. Yet, as we show, the claiming regimes of these three forms of design protection differ in significant ways: the timing of claims; claim format (particularly whether the claims are visual or verbal); the multiplicity of claims (whether and how one can make multiple ...


Honest Copying Practices, Joseph P. Fishman Nov 2017

Honest Copying Practices, Joseph P. Fishman

Notre Dame Law Review

One of intellectual property theory’s operating assumptions is that creating is hard while copying is easy. But it is not always so. Copies, though outwardly identical, can come from different processes, from cheap digital duplication to laborious handmade re-creation. Policymakers around the world face a choice whether such distinctions should affect liability. The two branches of intellectual property that condition liability on actual copying, copyright and trade secrecy, give different answers. Both in the United States and elsewhere, trade secrecy regimes distinguish between copying methods deemed illegitimate and those deemed legitimate, what international treaties call “honest commercial practices.” Copyright ...


Fashion's Function In Intellectual Property Law, Christopher Buccafusco, Jeanne C. Fromer Nov 2017

Fashion's Function In Intellectual Property Law, Christopher Buccafusco, Jeanne C. Fromer

Notre Dame Law Review

Clothing designs can be beautiful. But they are also functional. Fashion’s dual nature sits uneasily in intellectual property law, and its treatment by copyright, trademark, and design patent laws has often been perplexing. Much of this difficulty arises from an unclear understanding of the nature of functionality in fashion design. This Article proposes a robust account of fashion’s function. It argues that aspects of garment designs are functional not only when they affect the physical or technological performance of a garment but also when they affect the perception of the wearer’s body. Generally, clothes are not designed ...


(Un)Common Law Protection Of Certification Marks, Michelle B. Smit Nov 2017

(Un)Common Law Protection Of Certification Marks, Michelle B. Smit

Notre Dame Law Review

Part I of this Note defines and examines the general principles of certification marks. From that foundation, Part II provides an overview of the case law on unregistered common law certification marks. Part III analyzes the reasons why abuses of certification marks would increase under a commonlaw regime and posits that certification marks, therefore, should only exist under federal law. Finally, Part IV proposes several adjustments that should be made to the current certification mark registration system in order to address existing shortcomings that affect both consumers and third-party businesses.


Brief Of Amici Curiae On Behalf Of Intellectual Property Professors In Support Of Appellant And In Support Of Reversal, Mark Mckenna, Rebecca Tushnet Sep 2017

Brief Of Amici Curiae On Behalf Of Intellectual Property Professors In Support Of Appellant And In Support Of Reversal, Mark Mckenna, Rebecca Tushnet

Court Briefs

ASTM’s fundamental complaint is about unauthorized use of its intangible content—the standards for which it claims copyright ownership. Dastar unambiguously holds, however, that only confusion regarding the source of physical goods is actionable under the Lanham Act; confusion regarding the authorship of the standards or their authorization is not actionable. ASTM cannot avoid Dastar just because Public Resource creates digital copies of those standards. Consumers encounter the ASTM marks only as part of the standards, into which ATSM chose to embed the marks. As a result, any “confusion” could only be the result of the content itself. Dastar ...


Brief Of Amici Curiae Intellectual Property Law Professors In Favor Of Judgement As A Matter Of Law, Mark Mckenna, Rebecca Tushnet, John A. Conway Jun 2017

Brief Of Amici Curiae Intellectual Property Law Professors In Favor Of Judgement As A Matter Of Law, Mark Mckenna, Rebecca Tushnet, John A. Conway

Court Briefs

Plaintiff’s false designation of origin and false endorsement claims, such as they are, rest on the assertion that defendants falsely represented themselves as the origin of intellectual property on which the Oculus Rift is based. Those claims are barred by Dastar v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003), which holds that only confusion regarding the origin of physical goods is actionable under the Lanham Act.


The Demise Of The Functionality Doctrine In Design Patent Law, Perry J. Saidman May 2017

The Demise Of The Functionality Doctrine In Design Patent Law, Perry J. Saidman

Notre Dame Law Review

The doctrine of functionality, in both the validity and infringement contexts, has outlived its usefulness, and analyzing it is a waste of litigants’ and judicial resources.


Trademarks And Digital Goods, Mark P. Mckenna, Lucas S. Osborn May 2017

Trademarks And Digital Goods, Mark P. Mckenna, Lucas S. Osborn

Notre Dame Law Review

This article argues that the question of whether we should treat digital files as relevant goods is irreducibly one of policy, and it should not be reduced to mere formalism. Digital files should be treated as goods only when consumers’ interactions with the files sufficiently resemble their interactions with physical goods that they warrant the same treatment. In particular, this article argues that digital files should be treated as goods only when the origin of the files as such (not the content of those files) is material to consumers. That may turn out to be relatively rare. Indeed, this article ...


Did Ebay Irreparably Injure Trademark Law?, Mark A. Lemley May 2017

Did Ebay Irreparably Injure Trademark Law?, Mark A. Lemley

Notre Dame Law Review

This Article argues that, while the Supreme Court's holding in eBay v. MercExchange was a good—indeed, great—development in patent and copyright law, trademark is different. The purposes of trademark law—and whom it benefits—should lead us to treat trademark injunctions differently than patent and copyright injunctions. Further, trademark courts have misinterpreted eBay, treating each of the four factors the Court enumerated as a requirement rather than a consideration. That is a particular problem in trademark law, where proof of future injury can be elusive. And perhaps most remarkably, courts have expanded eBay in trademark cases at ...


Raising Walls Against Overlapping Rights: Preemption And The Right Of Publicity, Rebecca Tushnet May 2017

Raising Walls Against Overlapping Rights: Preemption And The Right Of Publicity, Rebecca Tushnet

Notre Dame Law Review

By comparing how preemption and First Amendment law have used purposive approaches to limit the right of publicity, we can see something about how boundary work in intellectual property law (IP) is done—badly, usually, with justifications that aren’t consistent or that assume that other regimes work differently than they actually do. One improvement would be to embrace categorical approaches, rather than unpredictable case-by-case balancing; both preemption and First Amendment doctrines can lend themselves to this approach. Another improvement would be to think of the First Amendment as an intellectual property regime of its own, one with general preemptive ...


Spill Your (Trade) Secrets: Knowledge Networks As Innovation Drivers, Laura G. Pedraza-Fariña May 2017

Spill Your (Trade) Secrets: Knowledge Networks As Innovation Drivers, Laura G. Pedraza-Fariña

Notre Dame Law Review

Theories of intellectual property take the individual inventor or the firm as the unit of innovation. But studies in economic sociology show that in complex fields where knowledge is rapidly advancing and widely dispersed among different firms, the locus of innovation is neither an individual nor a single firm. Rather, innovative ideas originate in the informal networks of learning and collaboration that cut across firms.

Understanding innovation in this subset of industries as emerging out of networks of informal information-sharing across firms challenges traditional utilitarian theories of trade secret law—which assume trade secret protection is needed to prevent excessive ...


Risk Regulation And Innovation: The Case Of Rights-Encumbered Biomedical Data Silos, Arti K. Rai May 2017

Risk Regulation And Innovation: The Case Of Rights-Encumbered Biomedical Data Silos, Arti K. Rai

Notre Dame Law Review

This Article discusses whether, and how, risk and social regulation can promote socially valuable innovation. The focus is on regulation as a force for creating a data infrastructure for future innovation. This Article briefly summarizes the history of overlapping and adjacent intellectual property rights in biomedical innovation. It then discusses the manner in which the Supreme Court’s reaction to such rights concentration may exacerbate legally-encumbered diagnostic data silos. It will go on to outlines the basic history of biopharmaceutical trial data silos as well as the core legal and policy arguments in favor of increasing access to the aggregated ...