Law Commons^™

Alice's Adventures In Oz: Revealing The Man Behind The Curtain, David Swetnam-Burland, Stacy O. Stitham

Akron Intellectual Property Journal

According to the Supreme Court's contrariwise thinking, in the world of Alice Corp. Pty. Ltd. v. CLS Bank Internation, Section 101 can and should be used early in litigation to distinguish a genuine, patentable invention from a sham-that is, to expose to scrutiny the idea behind the curtain.

Alice In Wonderland V. Cls Bank: The Supreme Court's Fantastic Adventure Into Section 101 Abstract Idea Jurisprudence, Annal D. Vyas

Akron Intellectual Property Journal

This Article proposes a solution to the current problems surrounding section 101 and patent-eligibility. Specifically, it advocates for an amendment to section 101 of the Patent Act that eliminates the abstract idea exception when conducting a patent eligibility analysis. This approach has several advantages, including the fact that judges no longer need to provide logically contortioned explanations as to why one idea is "abstract" and another is not. Nor will judges have to decide whether an abstract idea can still be patent eligible by virtue of being an "inventive concept of an abstract idea."

Part II of this Article reviews …

Lights! Camera! Infringement? Exploring The Boundaries Of Whether Fan Films Violate Copyrights, Jyme Mariani

Akron Intellectual Property Journal

This Thesis examines the situation that de los Rios and other fan filmmakers face because of the inherent conflict fan films have with the original author’s intellectual property rights. It outlines the culture and specifics of fan fiction and the different subgenres within it and their relationship with one another. This Thesis also traces the origins of fan films to gain a better understanding of why filmmakers create them and the potential legal battles that have developed over time. The potential legal issues discussed address the rights of the original author and how courts have interpreted copyright protection for individual …

Designing Food, Owning The Cornucopia: What The Patented Peanut Butter & Jelly Sandwich Might Teach About Gmos, Modified Foods, The Replicator, And Non-Scarcity Economics, Thomas C. Folsom

Akron Intellectual Property Journal

Imagine for purposes of discussion that the technology for designing and building an actual cornucopia—something that embodies code, genetically modified organisms, or other techniques for producing, modifying, creating, or duplicating food (call it neo-tech food design)— exists, works, and is safe. To frame the problems of neo-tech food design, I start with what ought to be an easy case of low-tech food design, the peanut butter and jelly sandwich. Since it is a prime example of an incremental improvement invention, and hence like very many other inventions that are routinely patented, it must be asked: was there a problem? And …

Food Patents: The Unintended Consequences, Jay Dratler Jr.

Akron Intellectual Property Journal

This short paper explores the unintended consequences of this strong economic incentive. The underlying assumptions of patent law and its economic incentive are that innovation is good, and newer is better. But is that always so? Science and history suggest maybe not, for some very fundamental reasons. And there are reasons to believe that the risks of unintended consequences of innovation in food may be more hazardous than those in other fields of innovation.

Redigi And The Resale Of Digital Media: The Courts Reject A Digital First Sale Doctrine And Sustain The Imbalance Between Copyright Owners And Consumers, Monica L. Dobson

Akron Intellectual Property Journal

Part II of this comment will explain the history of the first sale doctrine, observe how Congress has modified the doctrine over time, and examine how the courts have interpreted the doctrine in light of various technological innovations. Part III will address the problems associated with digital media and examine the concerns of both copyright owners and consumers surrounding a digital first sale doctrine. Part IV will discuss the recent federal district court case, Capitol Records, LLC v. ReDigi Inc., which dealt with the issue of the first sale doctrine’s applicability to digital media, and explain why the court …

Internationalization And Local Elements: Research On Recent Amendments To The Trademark Law Of China, Xiaoqing Feng

Akron Intellectual Property Journal

This article will explore varying aspects of the amendments of the Chinese Trademark Law. Part Two deals with detailed analysis and the reasons for the third amendment of the Trademark Law; this part is composed of five sections. The first section discusses the perfection of the application system for trademark registration, including the increase of the number of elements eligible for trademark registration, the implementation of “one trademark for multi categories,” the improvement of the system of opposition, the introduction of a proposal review system, and the availability for submitting electronic applications. The second section discusses (1) the improvement of …

The Experiences Of Trips-Compliant Patent Law Reforms In Brazil, India, And South Africa And Lessons For Bangladesh, M. Monirul Azam

Akron Intellectual Property Journal

This study analyzes the policy options used by Brazil, India, and South Africa in their transitions to a TRIPS-compliant patent law and their introduction of pharmaceutical patents. This comparative review can be used to explore possible policy options that can also be utilized by LDCs, including Bangladesh.

Intellectual Property And Public Health - A White Paper, Ryan Vacca, James Ming Chen, Jay Dratler Jr., Tom Folsom, Timothy Hall, Yaniv Heled, Frank Pasquale, Elizabeth Reilly, Jeff Samuels, Katherine J. Strandburg, Kara W. Swanson, Andrew W. Torrance, Katharine Van Tassel

Akron Intellectual Property Journal

On October 26, 2012, The University of Akron School of Law's Center for Intellectual Property and Technology hosted its Sixth Annual IP Scholars Forum. In attendance were thirteen legal scholars with expertise and an interest in IP and public health who met to discuss problems and potential solutions at the intersection of these fields. This report summarizes this discussion by describing the problems raised, areas of agreement and disagreement between the participants, suggestions and solutions made by participants, and the subsequent evaluations of these suggestions and solutions.

Led by the moderator, participants at the Forum focused generally on three broad …

The Quantified Self Movement: Legal Challenges And Benefits Of Personal Biometric Data Tracking, Timothy S. Hall

Akron Intellectual Property Journal

This article explores some of the potential pitfalls associated with collection of detailed individual biometric or health-related information, and demonstrates that current laws and regulations are not well designed to protect users of these devices and apps from unauthorized use or misuse of their data. Health information is among the most sensitive, intimate, and potentially damaging personal information one may possess, and health policymakers have made health information privacy a priority for decades for good reason. The Health Insurance Portability and Accountability Act of 1996 (HIPAA) was one of the major health policy legislative achievements of the 1990s. However, HIPAA …

Bioprospect Theory, James Ming Chen

Akron Intellectual Property Journal

Conventional wisdom treats biodiversity and biotechnology as rivalrous values. The global south is home to most of earth's vanishing species, while the global north holds the capital and technology needed to develop this natural wealth. The south argues that intellectual property laws enable pharmaceutical companies and seed breeders in the industrialized north to commit biopiracy. By contrast, the United States has characterized calls for profit-sharing as a threat to the global life sciences industry. Both sides magnify the dispute, on the apparent consensus that commercial exploitation of genetic resources holds the key to biodiversity conservation.

Both sides of this debate …

Ip And Health Care: New Drugs Pricing And Medical Mistakes, Jay Dratler Jr.

Akron Intellectual Property Journal

I propose to address briefly two important IP questions from an economic perspective: patented drug pricing in an international context and trade secret protection for health care outcomes. The first will involve some algebra; the second involves a bit of common sense that so far seems to have eluded us.

The Technological Edge, Elizabeth I. Winston

Akron Intellectual Property Journal

Protecting the bargain inherent in the patent system is central to the determination of patentable subject matter. If an applicant invents something novel, non-obvious, and useful and provides a written description that enables others to practice the invention, then the applicant is rewarded with the right to exclude others from making, using, selling, or offering to sell for a limited time the invention. The Patent Act provides an incentive to invest in innovation leading to new inventions and "reflects a balance between the need to encourage innovation and the avoidance of monopolies which stifle competition without any concomitant advance in …

No Method To The Madness: The Failure Of Section 14 Of The Patent Reform Act Of 2011 To Make Any Obvious Changes For The Better, Darryl C. Wilson

Akron Intellectual Property Journal

This article briefly examines the short history of openly expressed concerns regarding tax patents and the legislative response crafted to address them. The goal here is not so much to argue in favor of tax patents, although there is nothing wrong with them in terms of basic legal principles, as it is to criticize the weak language of the bill, which in attempting to satisfy so many, or perhaps based on the substantive lack of understanding of the bill sponsors, led to the poor draftsmanship of an unnecessary part of the new patent act.

Smoke And Mirrors: America Invents Act 2011: A Chill In The Air, Robert I. Reis

Akron Intellectual Property Journal

The primary focus of this article is on but a few of the distinct representations reflected in the provisions of the Act and their implications as America Invents is phased in over the next eighteen months. These first three changes address (1) the backlog in the Patent Office by hiring additional examiners, (2) the elimination of the best mode requirement as a defense in an infringement action, (3) the expanding adjudicatory role of the Patent Office in supplemental reviews, derivation proceedings, intra partes review or a post-grant review relative to constitutional due process and separation of powers questions, and (4) …

Minority Report: Real Patent Reform, Maybe Later - The America Invents Act And The Quasi-Recodification Solution, Thomas C. Folsom

Akron Intellectual Property Journal

This Article has three parts. In Part One, I describe what Congress claims to have done, then what the Act actually has done, and therefore what is the most that can be hoped to come from it. In considering what Congress has done, I briefly outline the theoretical basis of the new hybrid system, neither first-to-invent nor first-to-file, but rather a "first to declare" system with a one-year grace period that is both a shield and a sword to the declarant. More importantly, Congress has indicated it believes the new system is compatible with the Constitutional grant, and I suggest …

America Invents The Supplemental Examination, But Retains The Duty Of Candor: Questions And Implications, Lisa A. Dolak

Akron Intellectual Property Journal

This paper considers these duty-of-candor-related issues-issues that the USPTO, the courts, patent owners, and patent challengers may face in the wake of the enactment of the AIA's provisions relating to supplemental examination, But first, by way of background, Part II presents an overview of the legislation relating to supplemental examination and explores how supplemental examination might operate, in light of its apparent goals. Part III considers questions relating to the overlay of supplemental examination on the existing U.S. patent application and enforcement regime, with particular focus on its interplay with the applicant's duty of candor. As that section illustrates, the …

Patent Attorney Malpractice: Case-Within-A-Case-Within-A-Case, A. Samuel Oddi

Akron Intellectual Property Journal

This article will first provide a brief history of the jurisdictional controversy between federal courts and between federal courts and state courts. Then, the question will be examined of how the subject matter jurisdictional question has been resolved with respect to patent attorney malpractice cases to the extent it has been to date in the federal and state courts. The manner in which the case-within-a-case doctrine or methodology has been used in deciding the jurisdictional question will also be investigated. In addition, the relevance of the use of the judgment or non-judgment model to determine patent attorney malpractice will be …

Trademarks In 2010 (And 2011): Dilution Takes Center Stage, David S. Welkowitz

Akron Intellectual Property Journal

From the hundreds of trademark cases decided in any year, it is often difficult to discern any particular theme. There are cases from many different areas raising very disparate issues. In 2010, however, trademark dilution stands out as the area with the most prominent doctrinal opinions. In addition to three court of appeals decisions, there were five significant Trademark Trial and Appeal Board (“TTAB”) decisions from an entity whose prior involvement in dilution had been very much the exception. These dilution opinions form the centerpiece of this discussion.

There were, of course, other notable decisions involving contributory infringement and the …

The First Sale Doctrine After Costco: Brilliantly Reconciling Decades Of Legislative Revision; The Forgotten Curse Of The Manufacturing Clause; Or Just Plain Bad Statutory Drafting?, Patrick J. Coyne

Akron Intellectual Property Journal

This paper presents the case for two alternative results: (1) The first sale defense applies in Costco for the same reasons that required its application in Quality King. As Justice Stevens wrote in Quality King, “once the copyright owner places a copyrighted item in the stream of commerce by selling it, he has exhausted his exclusive statutory right to control its distribution”; or (2) The first sale defense does not limit infringement liability for unauthorized importation under 17 U.S.C. § 602(a) because the act of importation involves neither a sale nor disposition of a copy that would trigger …

The Ethics Of Deception: Pretext Investigations In Trademark Cases, Phillip Barengolts

Akron Intellectual Property Journal

Pretext investigations of trademark infringement usually implicate one or more of four rules of professional responsibility: truthful communications, communications with adverse parties represented by counsel, communications with parties unrepresented by counsel, and the prohibition of deceptive behavior. There is an additional rule on using paralegals or non-lawyer assistants to do the actual investigation which also comes into play on occasion.

The Imperfect State Of Patent Perfection, Yongae Jun

Akron Intellectual Property Journal

The state of the law regarding perfection of security interests in patents is uncertain. Attorneys advise their clients to record with both the state and the federal registration systems in order to perfect their security interests. Moreover, the Supreme Court missed its opportunity to clarify the ambiguity when it denied certiorari to Cybernetic Services. This comment will attempt to make sense of this area of the law and formulate an opinion as to what the law should be. Part II of this comment will interpret Section 261 through textual analysis, canons of construction, and legislative history. Part III will explore …

Checks, Balance And Judicial Wizardry: Constitutional Delegation And Congressional Legislation, Robert I. Reis

Akron Intellectual Property Journal

Recent Supreme Court activity regarding "intellectual property" may lead some to believe the increase in cases has some further meaning beyond the decisions themselves. The interests they represent and the source of power to enact legislation in the field raise distinct issues that may inform of current judicial interest and concern. These don't necessarily delineate the constitutional role of the Court relative to the delegation under Article I, Section Eight, Clause 8 of the United States Constitution. A gathering of cases using conventional search resources and techniques yielded 666 patent cases and 73 copyright cases. This essay is not intended …

What Is The Mclaw In Malaysia?, Amy Moscato-Wolter

Akron Intellectual Property Journal

This article will discuss the extent of protection given to McDonald's interest in the prefix "Mc" in the United States as a result of the case McDonald's Corp. v. Druck & Gerner, D.D.S., P.C., d/bla McDental (hereinafter McDental), where it was determined that the "Mc" family of marks can even be protected when affixed to the name of a generic non-food item. Such success, however, has not been matched in other parts of the world. I will also discuss McCurry Restaurant (KL) Sdn Bhd v. McDonalds Corp. (hereinafter McCurry), where a Malaysian court determined that the "Mc" prefix coupled …

Threatening The Founding Ideal Of A Republic Of Letters: An Assessment Of The Supreme Court's Copyright Decisions Over The First Decade Of The Twenty-First Century, Susanna Frederick Fischer

Akron Intellectual Property Journal

Disregard for the social value of a modern Republic of Letters like that so revered by Madison and Jefferson is a conspicuous hallmark of the Supreme Court's recent copyright case law. The four decisions in which the Court has issued full opinions since 2001 (New York Times Co. v. Tasini (2001), Eldred v. Ashcroft (2003), MGM Studios, Inc. v. Grokster, Ltd. (2005), and Reed Elsevier, Inc. v. Muchnick (2010)) indicate that a majority of the Court does not share with Jefferson and Madison a belief in the civic importance of protecting widespread public access to creative works and knowledge. …

The Supreme Court And The Federal Circuit: A Case Of Supervision By Generalists, Jay Dratler Jr.

Akron Intellectual Property Journal

Many of the "general rules" that the Federal Circuit developed in its effort to simplify patent law turned out to be too crabbed and formalistic to do the job that Jefferson intended. As a result, the Supreme Court has had to step in. In virtually every case where it has done so, the High Court has rejected a narrow, formulaic rule proposed by the Federal Circuit and opted for something more general and flexible.

This paper analyzes some key cases of that sort. In the process, it attempts to answer the question "why"? Why did a specialized court fail to …

Federal Trademark Remedies: A Proposal For Reform, Mark A. Thurmon

Akron Intellectual Property Journal

It is time to take this problem seriously and reform the remedial rules of the Lanham Act. This article presents a specific proposal for reform that includes the following key changes:

• statutory damages are available as an alternative to actual damages, and this new remedy is available to prevailing trademark owners in all actions under the Lanham Act;
• the defendant's profits remedy is limited to those profits attributable to the infringement, but this remedy is available to prevailing trademark owners in all actions under the Lanham Act (i.e., proof of willful infringement or some other type of bad faith is …

Extending Copyright Misuse To An Affirmative Cause Of Action, Michael E. Rubinstein

Akron Intellectual Property Journal

This Comment will discuss the copyright misuse doctrine. Part I will introduce Redbox, explain how its business model functions, and describe the history between Redbox and the movie studios involved in the recent litigation. Part II will provide a history and background of the copyright misuse doctrine and how it has been applied in the various circuit courts that have adopted the doctrine. Part II will also touch upon the first sale doctrine, which will be applied to the litigation between Redbox and the studios. Part III will present a proposal for extending the copyright misuse doctrine into an affirmative …

Managing Inequitable Conduct By Legislation And/Or Regulation, Alan J. Kasper

Akron Intellectual Property Journal

The defense of “inequitable conduct” in patent litigation is rooted in equity and derives, not from any legislative formulation or regulatory construct, but instead from the principles of “unclean hands.” In Precision Instrument Mfg. Co. v. Automotive Maintenance Mach. Co., the United States Supreme Court dismissed a case brought by a patent owner because the patent in suit and certain related contracts were “perjury tainted” and “inequitable conduct impregnated Automotive’s entire cause of action.” The Precision Instrument case and the only two other earlier decisions by the Supreme Court to consider an unclean hands defense, “involved overt fraud, …

Legal Interpretation By Computer: A Survey Of Interpretive Rules, Eric Engle

Akron Intellectual Property Journal

This article presents a survey of legal interpretive rules. The rules presented in this survey are used as the rule base in the computer program accompanying this article, an expert system. The computer program models legal decision-making and uses the rules presented to make legal decisions, generating a report to justify the decision reached. Legal interpretation is chosen as a model for computation representation because understanding interpretive methods is useful for any jurist seeking creative arguments. This survey of legal interpretive rules is of both a theoretical and practical interest.