Intellectual Property Law Commons^™

We're All Pirates Now: Making Do In A Precarious Ip Ecosystem, Jessica Silbey

Faculty Scholarship

Fifteen years after the Piracy Paradox explained how most anti-copying protection is unnecessary for a thriving fashion industry, we face another piracy paradox: with broader and stronger IP laws and a digital economy in which IP enforcement is more draconian than ever, what explains the ubiquity of everyday copying, sharing, re-making and re-mixing practices that are the life blood of the internet's expressive and innovative ecosystems? Drawing on empirical data from a decade of research, this short essay provides two examples of this "new piracy paradox": a legal regime that ostensibly punishes piracy in a culture in which it is …

The Patently Unexceptional Venue Statute, Paul Gugliuzza, Megan M. La Belle

Faculty Scholarship

Legal doctrines developed by the U.S. Court of Appeals for the Federal Circuit are often derided as “exceptionalist,” particularly on issues of procedure. The court’s interpretation of the venue statute for patent infringement suits seems, at first glance, to fit that mold. According to the Federal Circuit, the statute places few constraints on the plaintiff’s choice of forum when suing corporate defendants. This permissive venue rule has lead critics to suggest that the court is, once again, outside the mainstream. The Supreme Court’s recent grant of certiorari in TC Heartland v. Kraft Foods would seem to indicate that those critics …

Regulating Patent Assertions, Paul Gugliuzza

Faculty Scholarship

Recent years have seen a proliferation of statutes regulating and lawsuits challenging patent enforcement conduct. The Federal Circuit, however, has held that acts of patent enforcement are illegal only if there is clear and convincing evidence both that the patent holder’s infringement allegations were objectively baseless and that the patent holder knew or should have known its allegations were baseless. This chapter summarizes recent efforts by state governments and the federal government to control patent enforcement behavior, questions the broad immunity the Federal Circuit has conferred on patent holders, and seeks to improve pending federal legislation governing patent enforcement. In …

Early Filing And Functional Claiming, Paul Gugliuzza

Faculty Scholarship

A major problem in the patent system is that many patents claim far more than the patentee actually invented. In his perceptive article, Ready for Patenting, Mark Lemley argues that this overclaiming is caused in part by legal doctrines that encourage inventors to file a patent application as early as possible, often before — or even instead of — building their invention. Patents issued from early-filed applications, Lemley argues, tend to be overly broad because the applicant does not yet know how the invention actually works.

This response essay, part of the Boston University Law Review’s symposium on Notice Failure …

How Oracle Erred: Functionality, Useful Articles, And The Future Of Computer Copyright, Wendy J. Gordon

Faculty Scholarship

In Oracle v. Google (2015), the Federal Circuit addressed whether the " method header " components of a dominant computer program were uncopyrightable as " merging " with the headers' ideas or function. Google had copied the headers to ease the ability of third-party programmers to interact with Google's Android platform. The court rebuffed the copyrightability challenge; it reasoned that because the plaintiff's expression might have been written in alternative forms, there was no " merger " of idea and expression. But the Oracle court may have been asking the wrong question. In Lotus v. Borland (1995), the owner of …

Patent Trolls And Preemption, Paul Gugliuzza

Faculty Scholarship

Patent law is usually thought to be the domain of the federal government, not state governments. Yet over half the states have recently passed statutes outlawing unfair or deceptive assertions of patent infringement. The statutes are aimed at fighting so-called patent trolls, particularly those who send letters to users of allegedly infringing technology — as opposed to the manufacturers of that technology — demanding that each user purchase a license for a few thousand dollars or else face an infringement suit. The Federal Circuit, however, has held that state law claims challenging acts of patent enforcement are preempted by the …

Patent Litigation Reform: The Courts, Congress, And The Federal Rules Of Civil Procedure, Paul Gugliuzza

Faculty Scholarship

Barely three years after passing the America Invents Act, Congress is again considering patent reform legislation. At least fourteen patent reform bills were introduced in the recently concluded 113th Congress. Several of those bills focused specifically on patent litigation, proposing, among other things, to impose heightened pleading requirements on plaintiffs, to limit discovery, and to create a presumption that the losing party should pay the winner’s attorneys’ fees. None of the proposals became law, but one of the bills (the Innovation Act) passed the House of Representatives. In addition, scholars continue to call for reform, and Republican members of Congress …

Patent Law Federalism, Paul Gugliuzza

Faculty Scholarship

Most lawsuits arising under federal law can be filed in either state or federal court. Patent suits, however, may be filed only in federal court. Why do patent cases receive exceptional treatment? The usual answer is that federal courts, unlike state courts, provide uniformity and expertise in patent matters. This Article analyzes whether exclusive jurisdiction actually serves those policy aims and concludes that the uniformity-expertise rationale is overstated. If exclusive federal patent jurisdiction is to be justified, attention must also be given to pragmatic considerations, such as the respective quality of state and federal trial courts, the courts’ ability to …

Explaining The ‘Unpredictable’: An Empirical Analysis Of U.S. Patent Infringement Awards, Samantha Zyontz, Michael J. Mazzeo, Jonathan Hillel

Faculty Scholarship

Patent infringement awards are commonly thought to be unpredictable, which raises concerns that patents can lead to unjust enrichment and impede the progress of innovation. We investigate the unpredictability of patent damages by conducting a large-scale econometric analysis of award values. We begin by analyzing the outcomes of 340 cases decided in US federal courts between 1995 and 2008 in which infringement was found and damages were awarded. Our data include the amount awarded, along with information about the litigants, case specifics and economic value of the patents-at-issue. Using these data, we construct an econometric model that explains over 75% …

Ip Injury And The Institutions Of Patent Law, Paul Gugliuzza

Faculty Scholarship

This paper reviews Creation Without Restraint: Promoting Liberty and Rivalry in Innovation, the pathbreaking book by Christina Bohannan and Herbert Hovenkamp (Oxford Univ. Press 2012). The Review begins by summarizing the book’s descriptive insights and analyzing one of its important normative proposals: the adoption of an IP injury requirement. This requirement would demand that infringement plaintiffs prove -- before obtaining damages or an injunction -- an injury to the incentive to innovate. After explaining how this requirement is easy to justify under governing law and is largely consistent with recent Supreme Court decisions in the field of patent law, the …

Infringement Once Removed: The Perils Of Hyperlinking To Infringing Content, Stacey Dogan

Faculty Scholarship

This Article contends that the basic premise of Sony---that context and effect must play a role in evaluating allegations of secondary liability for copyright infringement-has application beyond the isolated case of equipment manufacture. More specifically, I propose a modified Sony framework for evaluating secondary liability for linking to infringing content. While this approach repudiates the strict view of secondary liability in favor of a more nuanced analysis, it stops short of advocating wholesale immunity for linkers. To the contrary, I contend that certain links, like certain acts of direct infringement, threaten copyright law's incentives with few compensating benefits to the …

Cd-Rom Symposium Transcript Two - 1992, Wendy J. Gordon

Scholarship Chronologically

MR. METALITZ: I think the point there is that amputation of authorship is really kind of an artifact of the registration process. You wouldn't be that concerned.

Draft Of Desert Theory - 1985, Wendy J. Gordon

Scholarship Chronologically

The first condition of Lockean theory is that property applies only to labor which appropriates something out of the common. Similarly, possession theory in American law applies only to appropriations of things which are unclaimed. While an intellectual product might seem to be drawn out of the ether, it can in fact be a difficult question whether its producers have drawn on more than commonly-owned resources.

Notes On Desert Theory: The No-Harm Notion - 1985, Wendy J. Gordon

Scholarship Chronologically

At first blush, the creation of i/p seems to meet this test of Locke’s proviso, namely, that strangers cannot complain of the ownership if after the appropriation, “there was as good left, as that already possessed, and more than he knew what to do with, or his industry could reach to.” There would seem to be a nearly infinite store of possible melodies, poems, novels, ideas; granting ownership over one variant which has been reduced to expression by a creator wouldn’t seem to interfere with the stranger’s ability to create his own.

Notes On Demarcation And Other Issues - 1985, Wendy J. Gordon

Scholarship Chronologically

Not only is there a problem with demarking the resource (e.g., the problem of larger and larger generality that Hand tries to deal with) but there's also a problem with demarking the TYPE OF USE. In DOW JONES, for example, the defendant was merely making reference to (not copying)the average; ditto the NFL case.

Draft Of Conceptual/Linguistic Analysis - 1984, Wendy J. Gordon

Scholarship Chronologically

Conceptually, what I'm interested in here is the extent to which the labels “tort” and “property” have utility. So I am interested in discovering also what these categories mean, how they can be used, and the danger in their misuse.