Intellectual Property Law Commons^™

Curiosities Of Standing In Trade Secret Law, Charles T. Graves

Northwestern Journal of Technology and Intellectual Property

Standing under the Uniform Trade Secrets Act – the right to pursue a misappropriation claim – is a vexing question when compared to patent, copyright, and trademark law. Instead of requiring ownership or license rights as a condition to sue, courts often find that mere possession of an asserted trade secret suffices for standing, even when the provenance of the information is murky. In some cases, courts even allow trade secret plaintiffs to claim intellectual property rights in the preferences and desires expressed to them by their customers in lawsuits designed to stop former employees from doing business with those …

The Power Of Local: Nearby Innovators Dominate Patented Technology Development, Richard Gruner

Northwestern Journal of Technology and Intellectual Property

Advances by nearby innovators – close enough to interact in person – play key roles in patented technology development. Patents frequently cite nearby innovations, identifying these local innovations as the background for further patented inventions. Such citations reveal narrow geographic areas with intensely active innovation communities advancing similar projects and technologies. Local innovators – working within a commutable distance of 40 miles or less of each other – accounted for 25 percent of all patent citations between 2010 and 2019 and about 21 percent of citations by disinterested patent examiners reviewing patent applications. These percentages of citations to local advances …

Compulsory Licensing: A Potential Solution To The Antitrust Dilemma Of Technology Standards Setting, Shen Peng

Northwestern Journal of Technology and Intellectual Property

The Constitution grants patent owners exclusive rights over their inventions to “promote the Progress of Science.”1 This clause was drafted based on the belief that monetary incentives granted to the first inventor, such as the proceeds from selling and licensing the invention, will foster new ideas and accelerate innovation to the benefit of the public welfare. However, when the first inventor is the sole benefactor of the rewards from the innovation, subsequent innovation may be stifled.

For instance, the first person to invent the idea of a mobile phone but lacking the right to use the underlying technologies essential to …

A Loaded God Complex: The Unconstitutionality Of The Executive Branch’S Unilaterally Withholding Zero-Days, Brendan Gilligan

Northwestern Journal of Technology and Intellectual Property

No abstract provided.

Video Games And The First Amendment, Eli Pales

Northwestern Journal of Technology and Intellectual Property

The video game industry is massive, with an annual revenue of $180 billion worldwide; $60 billion of that in America alone. For context, the industry’s size is greater than that of the movie, book, and music industries combined. Yet, despite this market dominance, the video game industry is relatively new. Only in the 2011 decision of Brown v. Entertainment Merchants Association did the Supreme Court extend First Amendment protection to games. Still, the Court failed to define the scope of the game medium. As understood by an average person, a video game could be something as simple as Pac-Man or …

Quantum Copyright Law: Schrödinger’S Cat, Banksy’S Shredder, And Art On The Edge, Richard Chused

Northwestern Journal of Technology and Intellectual Property

An object has been assembled by artists I know that presents a fascinating set of conundrums about the relationships between quantum physics, shredders, random surprises, the value of art, and copyright law. Seems fantastical, right? And so it is. The object of concern is a metal box a little under four feet tall, about eighteen inches deep, and a bit less than three feet wide. The box is welded together along all twelve of its edges. It has an opening across one side. And there is a small control panel on top.

Before the box was welded shut, a set …

Copyright And Federalism: Why State Waiver Of Sovereign Immunity Is The Best Remedy For State Copyright Infringement, Leroy J. Ellis V

Northwestern Journal of Technology and Intellectual Property

When a photographer intentionally takes a picture of a subject, or a writer puts a story to paper, the resulting works are protected by copyright. That protection is bolstered after the authors register their works with the Copyright Office. All private parties, from individuals to corporations, can be sued for infringing on the work should they use it without pay or permission.

However, what happens when the infringer is not a private party? What happens when the state or a state entity is the infringer? What happens when a public university decides to use a copyright owner’s work without pay …

Rethinking Equitable Estoppel In Patent Law, Joshua J. Lustig

Northwestern Journal of Technology and Intellectual Property

In almost every context, the Federal Circuit has used estoppel doctrines to provide protection to parties from some sort of injustice. Yet recently, with equitable estoppel, the Federal Circuit has decided to infuse concepts of Article III justiciability to justify limiting the doctrine as only applicable to issued patents. In doing so, the Federal Circuit has ignored the long history behind equitable estoppel in favor of a rule that is improperly rationalized by the Constitution. This note argues that Federal Circuit's recent equitable estoppel jurisprudence is inconsistent with equity's goal of fairness and presents a new theory of equitable estoppel …

Countering Personalized Speech, Leon G. Ho

Northwestern Journal of Technology and Intellectual Property

Social media platforms use personalization algorithms to make content curation decisions for each end user. These personalized recommendation decisions are essentially speech conveying a platform's predictions on content relevance for each end user. Yet, they are causing some of the worst problems on the internet. First, they facilitate the precipitous spread of mis- and disinformation by exploiting the very same biases and insecurities that drive end user engagement with such content. Second, they exacerbate social media addiction and related mental health harms by leveraging users' affective needs to drive engagement to greater and greater heights. Lastly, they erode end user …

Muddy Waters: Fair Use Implications Of Google Llc V. Oracle America, Inc., Gary Myers

Northwestern Journal of Technology and Intellectual Property

Ooh

In the muddy water we’re falling

Ooh In the muddy water we’re crawling

Holds me down

Hold me now

Sold me out

In the muddy waters we’re falling

— Laura Pergolizzi (LP) - “Muddy Waters,” Lost On You (Vagrant Records 2016)

The United States Supreme Court ruling in Google LLC v. Oracle America, Inc. ended a long-running dispute between two giant technology companies. The case, which first began in 2010, has received considerable attention and commentary with regard to the scope of copyright protection for software and then about the contours of the fair use defense. The Court ultimately …

A Musical Cue For Fashion: How Compulsory Licenses And Sampling Can Shape Fashion Design Copyright, Caroline Olivier

Northwestern Journal of Technology and Intellectual Property

The fashion industry is the Wild West of intellectual property law. Fashion design protection is essentially non-existent, and designers take what they want when they want in the form of inspiration or complete copying. As technology advances and enables fashion designs to disseminate at high-tech speeds, there is no longer room for an apathetic approach to fashion intellectual property. If the law is a means for protecting the hard work of up-and-coming artists and providing incentives for innovation, changes must be made.

This note demonstrates how the fashion industry can adopt a copyright and licensing scheme similar to that of …

Maximizing Social Welfare Through The Tailoring Of Patent Duration And Using Algorithms To Calculate Optimal Patent Duration, Alvaro Cure Dominguez

Northwestern Journal of Technology and Intellectual Property

Patents are legal devices granted by the government that confer inventors exclusive rights to their invention for a limited time. In exchange, the U.S. government requires the inventors to publicly disclose their invention to allow individuals to recreate it upon expiration of the exclusivity period. Previously, academics regarded patents as a necessary means to overcome the free-rider dilemma (“FRD”), and they assumed that, without patents, society would be deprived of many potentially valuable innovations. This model has come under criticism. Researchers point to cases where inventors would have innovated regardless of a patent grant. They also highlight instances where patent …

Ostrich With Its Head In The Sand: The Law, Inventorship, & Artificial Intelligence, Ben Kovach

Northwestern Journal of Technology and Intellectual Property

As artificial intelligence (AI) system’s capabilities advance, the law has struggled to keep pace. Nowhere is this more evident than patent law’s refusal to recognize AI as an inventor. This is precisely what happened when, in 2020, the U.S. Patent and Trademark Office (USPTO) ruled that it will not accept an AI system as a named inventor on a patent.

This note explores untenable legal fiction that the USPTO’s ruling has created. First, it explores the current state of AI systems, focusing on those capable of invention. Next, it examines patent law’s inventorship doctrine and the USPTO’s application of that …

Governing The Unknown: How The Development Of Intellectual Property Law In Space Will Shape The Next Great Era Of Exploration, Exploitation, And Invention, Lauren Peterson

Northwestern Journal of Technology and Intellectual Property

No abstract provided.

The Internet Archive’S National Emergency Library: Is There An Emergency Fair Use Superpower?, Aaron Schwabach

Northwestern Journal of Technology and Intellectual Property

On March 24, 2020, the Internet Archive announced that it would create a National Emergency Library offering no-waitlist borrowing of all of the books in its collection. In effect, this allowed unlimited, if temporary, downloads of copyrighted works. The National Emergency Library was presented as a response to the current national and global public health crisis; however, nothing in either the Copyright Act, 17 U.S.C. § 108 or the aspirational documents of ControlledDigitalLending.org provides a legal basis for a library to lend out more copies of a work at one time than it actually owns. Nor does the case law …

You Belong With Me: Recording Artists’ Fight For Ownership Of Their Masters, Ann Herman

Northwestern Journal of Technology and Intellectual Property

Copyright law, governed by the Copyright Act, is based on utilitarian theory, which balances artists’ interests in ownership of theircreations with the public’s interest in accessing and enjoying such creations. Copyright law provides for rights for creators of sound recordings, which include master rights—the recording artist’s copyright in the recording. Taylor Swift has brought the concept of master rights into the forefront of pop culture. In June 2019, Swift’s masters—the original sound recordings of her songs—were sold, and she publicly aired her dissatisfaction with the sale, as well as with overall premise that artists do not have a complete right …

Startups And Investors And Trolls, Oh My!: How Commercialization Patents Can Benefit Startup Innovation, Robert Chou

Northwestern Journal of Technology and Intellectual Property

Venture-backed startups play a crucial role in innovation and advancing our technology. However, the development of secondary markets for patents and the proliferation of patent assertion entities starting in the early twenty-first century has made the patent ecosystem a difficult environment for startups to navigate. Startups face challenges that their more established counterparts do not. First, startups must rely heavily on external sources of funding and, as a result, many decide to file for patents early in their lifecycle to signal their value to potential investors. Second, patent assertion entities threaten startups with patent infringement suits at a disproportionately high …

All Your Air Right Are Belong To Us, Chad J. Pomeroy

Northwestern Journal of Technology and Intellectual Property

Privacy and property rights are tricky subjects for a variety of reasons. One reason is that they have a unique relationship with each other, and this Article focuses on one of those areas of intersection – that of air rights and invasion of privacy. This is a timely topic due the advent of drones, and this Article will argue that drone surveillance constitutes common law trespass and that any statute or regulation that permits such activity is in derogation of common law and so should be subject to particularly careful thought and consideration.

This is not as straightforward a thesis …

Quality In European Trade Mark Law, Andrew Griffiths

Northwestern Journal of Technology and Intellectual Property

This article addresses the capacity of trade marks to provide assurance concerning product quality and the importance of this capacity in promoting competition and various forms of innovation. It considers the meaning of “quality” in this context and shows how this can include the aesthetic and intangible characteristics of products as well as their functional and material characteristics. And it is suggested that quality assurance should cover the whole range of variable product characteristics to which at least some consumers attach value. This is because the key economic problem that underlies the need for this assurance is the difficulty that …

Addressing The Impediments Copyright Imposes On The Use Of Patent Specifications And Prior Art Documents To Improve Patent Quality, Ben Mceniery

Northwestern Journal of Technology and Intellectual Property

This article considers from an Australian perspective the impediments that copyright law places in the path of those who seek to use patent specifications and non-patent prior art documents in ways that are necessary to the proper functioning of the patent system. Until recently, copyright law in Australia had limited the uses to which members of the public could put patent specifications in that country. Those impediments have been removed as a result of an important legislative change to the way in which copyright in patent specifications can be enforced. The change gives the public a greater freedom to make …

Hero With A Thousand Copyright Violations: Modern Myth And An Argument For Universally Transformative Fan Fiction, Natalie H. Montano

Northwestern Journal of Technology and Intellectual Property

Copyright law is designed to protect the ownership and financial rights of the original author of a literary work. However, the internet has created new opportunities for amateur writers to create their own fan fiction based on such literary works. Borrowing from the ideas and characters of a work, fan fiction authors build upon and re-imagine these stories. Such fan works should be protected under the Fair Use Defense, but the power imbalance between amateur fan fiction authors and successful published authors often leads to the eradication of fan stories from the public domain.

This Comment argues that fan fiction …

The Orphan Drug Act: How The Fda Unlawfully Usurped Market Exclusivity, Sumin Kim

Northwestern Journal of Technology and Intellectual Property

The Board of KV Pharmaceutical bet the company on the success of Makena®, a pre-term birth drug. However, in the midst of a public outcry over the excessive pricing of Makena®, the FDA declared that it would not honor the market exclusivity that KV Pharmaceutical had obtained for Makena® under the Orphan Drug Act. As a result, KV Pharmaceutical filed for Chapter 11 bankruptcy. This Note analyzes the situation under the lens of the Takings Clause of the Fifth Amendment. Specifically, I argue that market exclusivity for Makena® was private property and thus, the FDA unlawfully usurped KV Pharmaceutical’s private …

Heavyweight Bots In The Clouds: The Wrong Incentives And Poorly Crafted Balances That Lead To The Blocking Of Information Online, Anjanette H. Raymond

Northwestern Journal of Technology and Intellectual Property

The United States and the European Union have long recognized the need to protect ISPs from potential liability from customers using their services to infringe intellectual property rights. These protections arise from a long-standing belief that intellectual property right holders should bear the burden of protecting their property, even in the quick moving Internet environment. However, a recent series of cases has called into question the ISPs’ liability protections as their technology is often the only real means to prevent wide scale infringing activity. This series has caused courts to revisit ISPs’ liability and to impose a ‘cooperative burden’ requiring …

Patent Claims Revisited, Dargaye Churnet

Northwestern Journal of Technology and Intellectual Property

This paper proposes that the most beneficial patent reform begins with claim drafting regulations. Part I serves as an introduction. Part II highlights the problems with the nation’s current patent system. This section discusses how each of these problems is caused in part by the current claim drafting regulations. Part III reviews the changes made by the America Invents Act. Part IV proposes new regulations for claim drafting that will offer more significant benefits than those provided by the America Invents Act. Specifically, this paper argues that by requiring applicants to include a claim chart defining each claim limitation, examiners …

See No Evil: How The Supreme Court’S Decision In Global-Tech Appliances, Inc. V. Seb S.A. Further Muddles The Intent Element Of Induced Infringement, Jeremy Adler

Northwestern Journal of Technology and Intellectual Property

The Supreme Court in Global-Tech Appliances, Inc. v. SEB S.A. clarified the requisite intent for induced patent infringement when it applied the concept of willful blindness. This Article argues that the Court’s decision was misguided and complicates an already confused doctrine. The Article first explores inducement jurisprudence up to and including the Global-Tech decision, and then reviews the doctrine of willful blindness and its application in the criminal context. The Author then argues that using willful blindness in the patent context creates practical and theoretical difficulties that only deepen uncertainty for innovators who seek to avoid infringement liability.

Strategies For Trade Secrets Protection In China, J. Benjamin Bai, Guoping Da

Northwestern Journal of Technology and Intellectual Property

No abstract provided.

The Role Of Dna Patents In Genetic Test Innovation And Access, Andrew S. Robertson

Northwestern Journal of Technology and Intellectual Property

No abstract provided.

Timing The Choice Of Law By Contract, Dolly Wu

Northwestern Journal of Technology and Intellectual Property

No abstract provided.

Prometheus Laboratories V. Mayo Clinic’S Gift To The Biotech Industry: A Study Of Patent-Eligibility Of Medical Treatment And Diagnostic Methods After Bilski, Dan Hoang

Northwestern Journal of Technology and Intellectual Property

No abstract provided.

“I’M Litigatin’ It”: Infringement, Dilution, And Parody Under The Lanham Act, Patrick Emerson

Northwestern Journal of Technology and Intellectual Property

No abstract provided.