Law Commons^™

On Red-Haired Waitresses, Shakespeare, And Product Configuration: A Response To Justice Stevens, 1 J. Marshall Rev. Intell. Prop. L. 218 (2002), Kenneth L. Port

UIC Review of Intellectual Property Law

Justice John Paul Stevens’ Inaugural Lecture in Trademark Law honoring Beverly Pattishall truly is a memorable read. Justice Stevens has provided a clear rationale for the Supreme Court’s most recent line of trade dress cases that most thought impossible. In fact, most have not even thought that there was a rationale, let alone a clear one, to a line of cases where the Court seems to be straining to balance the competing interests in American trademark jurisprudence. Rather than the arbitrary conclusion reached by the Supreme Court in distinguishing product configuration from product packaging, most commentators have recommended a more …

Trade Dress Protection And The Problem Of Distinctiveness, 1 J. Marshall Rev. Intell. Prop. L. 225 (2002), Mark V.B. Partridge

UIC Review of Intellectual Property Law

The problem of trade dress protection is this: What rules should we apply to trade dress protection to best satisfy the goals of trademark law? The merit of various proposed solutions can be measured by evaluating how effective they are in achieving those goals in various disputes. Both distinctiveness and likelihood of confusion should be understood from the perspective of the relevant public, not from that of the court, the trademark owner or the infringer. The questions we seek to answer only have coherent meaning if we consider the perception of the public. Otherwise, we are unable to determine if …

The Three Stages To Successful Appellate Advocacy Before The Federal Circuit, 1 J. Marshall Rev. Intell. Prop. L. 238 (2002), Charles W. Shifley

UIC Review of Intellectual Property Law

To succeed at the CAFC, the advocate must succeed in three stages of appeal. The first stage of appeal is actually the stage of proceedings in the trial court. The trial court proceedings are the first stage of appeal because in the absence of correct advocacy in the trial court, there is no opportunity for appeal. The action in the trial court need not be the success of winning at trial. It must, however, at least be the success of preserving issues for appeal – preserving critical error that cannot be remedied at the trial level. In the second stage …

Research Versus Development: Patent Pooling, Innovation And Standardization In The Software Industry, 1 J. Marshall Rev. Intell. Prop. L. 274 (2002), Daniel Lin

UIC Review of Intellectual Property Law

Despite the impressive pace of modern invention, a certain “patent thicket” effect that may be impeding what has become an increasingly difficult road to the commercialization of new technologies. Specifically, as new technologies build upon old technologies, they necessarily become increasingly complex, and as a result, are often subject to the protection of multiple patents, covering both the new cumulative technologies as well as old foundational technologies. The difficulties of acquiring licenses (e.g. hold-out problems) for all such patents has the potential to stifle the development and commercialization of these new technologies. As such, patent pooling, once condemned as facilitating …

Employee Inventors, The Dual Ladder, And The Useful Arts: From Thomas Paine To The "Dilbert Boycott", 1 J. Marshall Rev. Intell. Prop. L. 310 (2002), Ronald E. Andermann

UIC Review of Intellectual Property Law

To address limitations on the promotion of the progress of the useful arts, the Framers provided a Constitutional grant in the Patent Clause. They did so despite Thomas Jefferson’s concerns. However, limitations on the promotion of the useful arts continue today, often in very subtle ways. The evolution of dual-ladder corporate organizations as described in Martens has given rise to one such limitation—the phenomenon identified as the “Dilbert boycott.” Also, financially lucrative markets can give rise to abusive limitations on the promotion of the useful arts as in Synthroid. Combining these limitations with Thomas Jefferson’s fears of even limited monopolies …

The Nexus Requirement And The Fatal Injury: Does An Offer To Sell An Infringing Product Give Rise To A Duty To Defend Under A Cgl?, 1 J. Marshall Rev. Intell. Prop. L. 344 (2002), Willard L. Hemsworth Iii

UIC Review of Intellectual Property Law

Case law in the area of patent infringement has held that patent infringement cannot occur in the course of an insured's advertising activities as a matter of law. In 1996, the United States added “offer to sell” as one of the enumerated offenses of direct patent infringement to 35 U.S.C. §271(a). Since that time, there has been little deviation or fluctuation from the above mentioned principle, especially in litigation where a patentee’s search for insurance coverage from their CGL policies “Adverting Injury” provision. This Comment discusses the necessity of the court system to reexamine the modification to 35 U.S.C. §271(a), …

Go To Jail - Do Not Pass Go, Do Not Pay Civil Damages: The United States’ Hesitation Towards The International Convention On Cybercrime’S Copyright Provisions, 1 J. Marshall Rev. Intell. Prop. L. 364 (2002), Adrienne N. Kitchen

UIC Review of Intellectual Property Law

The problem of combating copyright infringement increases tenfold when considered in light of today’s global and digital environment. As more authors seek copyright protection, others seek to get around it by evading jurisdictional reach. The Council of Europe has developed the world’s first International Convention on Cybercrime, which incorporates harsh substantive copyright provisions but neglects to include effective enforcement protocols. This Comment proposes that the United States not rush to adopt the Council of Europe’s Convention, but rather seek a more definitive and effective solution in a singularly-focused agreement on intellectual property rights in a global economic context.

Prosecution Laches As A Defense To Infringement: Just In Case There Are Any More Submarines Under Water, 1 J. Marshall Rev. Intell. Prop. L. 383 (2002), Gregory F. Sutthiwan

UIC Review of Intellectual Property Law

The comment examines prosecution history laches as an infringement defense in the context of the pending litigation against the Jerome Lemelson Medical Education & Research Foundation. Jerome Lemelson amassed over five hundred patents during his lifetime. Of these, a few key patents have priority based on initial disclosures over forty years ago. Through multiple continuances however, the patents were not issued until decades later and are thus currently enforceable. Lemelson’s foundation has been aggressively seeking royalties based on these, so called “submarine patents,” against bar-code technology users. This comment discusses the problems posed by “submarine patents” and proposes guidelines for …

How Extra-Copyright Protection Of Databases Can Be Constitutional, Justin Hughes

Articles

Following the Supreme Court's 1991 Feist decision, intellectual property and Constitutional law scholars have debated whether extra-copyright protection of databases can be established by Congress under its Commerce Clause power. This article presents the problem as one of the gravitational zone of the Commerce Clause versus that of the Copyright and Patent Clause. The article reasons that the Supreme Court decisions in International News Service v. Associated Press, Zacchini v. Scripps-Howard, and the 19th century Trademark Cases all point to the possibility of limited protection of databases under the Commerce Clause. The Article also considers the constitutionality of extra-copyright protection …

Effective Appellate Practice Before The Federal Circuit, 2 J. Marshall Rev. Intell. Prop. L. 1 (2002), Richard Linn

UIC Review of Intellectual Property Law

Like our sister appellate courts, we are a “court of errors.” We do not re-try cases. Our charge is to review proceedings in the courts and administrative agencies over which we have appellate jurisdiction and to correct errors that affect the outcome of those proceedings. Our ability to do that effectively and efficiently depends in large measure on how well the members of the practicing bar bring the errors to our attention for adjudication. To assist the bar in this task, I make the following observations and offer a few suggestions on what I have learned about effective appellate practice …

The Genetic Age: Who Owns The Genome?: A Symposium On Intellectual Property And The Human Genome, 2 J. Marshall Rev. Intell. Prop. L. 6 (2002), Scott A. Brown, Q. Todd Dickinson, Stephen P.A. Fodor, Justin Gillis, Lee H. Hamilton, Eric S. Lander, Pilar Ossorio

UIC Review of Intellectual Property Law

A Symposium on Intellectual Property Co-Sponsored by The Woodrow Wilson Center. Featuring the remarks of Scott A. Brown, J.D.; Q. Todd Dickinson, J.D.; Stephen P.A. Fodor, Ph.D.; Justin Gillis; Hon. Lee H. Hamilton; Eric S. Lander, Ph.D.; and Pilar Ossorio, Ph.D., J.D.

"Interpretive Necromancy" Or Prudent Patent Policy? The Supreme Court’S “Arising Under” Blunder In Holmes Group V. Vornado, 2 J. Marshall Rev. Intell. Prop. L. 57 (2002), Janice M. Mueller

UIC Review of Intellectual Property Law

No abstract provided.

An Information Society Approach To Privacy Legislation: How To Enhance Privacy While Maximizing Information Value, 2 J. Marshall Rev. Intell. Prop. L. 71 (2002), Dana Beldiman

UIC Review of Intellectual Property Law

No abstract provided.

Mickey Mouse & Sonny Bono Go To Court: The Copyright Term Extension Act And Its Effect On Current And Future Rights, 2 J. Marshall Rev. Intell. Prop. L. 95 (2002), Victoria A. Grzelak

UIC Review of Intellectual Property Law

No abstract provided.

Has The Reasonable Experimentation Doctrine Become Unreasonable?: Rethinking The Reasonable Experimentation Doctrine In Light Of Automated Experimental Techniques, 2 J. Marshall Rev. Intell. Prop. L. 116 (2002), Mark H. Hopkins

UIC Review of Intellectual Property Law

No abstract provided.

A Practical Solution To Claim Construction: Stopgap Measures While Waiting For Reform, 2 J. Marshall Rev. Intell. Prop. L. 138 (2002), Stephen L. Sheldon

UIC Review of Intellectual Property Law

No abstract provided.

Federal Intellectual Property Law V. State Sovereignty: Can Congress Win?, 2 J. Marshall Rev. Intell. Prop. L. 159 (2002), Himanshu Vyas

UIC Review of Intellectual Property Law

No abstract provided.

Reconsidering Estoppel: Patent Administration And The Failure Of Festo, R. Polk Wagner

All Faculty Scholarship

Last Term, in Festo Corporation v. Shoketsu Kinzoku Kogyo Kabashuki Co., the United States Supreme Court missed perhaps the most important opportunity for patent law reform in two decades. At the core of the failure to grasp the implications of "prosecution history estoppel" - a judicially-crafted principle limiting the enforceable scope of patents based on acts occurring during their application process - is the heretofore universal (but ultimately unsupportable) view of the doctrine as an arbitrary ex post limitation on patent scope. This Article demonstrates the serious flaws in this traditionalist approach, and develops a new theory of prosecution history …

Law And Information Platforms, Philip J. Weiser

Publications

No abstract provided.

Subjecting Rembrandt To The Rule Of Law: Rule-Based Solutions For Determining The Patentability Of Business Methods, R. Carl Moy

Faculty Scholarship

This article is an attempt to refine the substantive law of patents as to reestablish the patent system's control over the determination of whether business methods are patentable. It offers a framework for addressing business methods that allows the system to stay focused on the traditional goals of the statutory subject-matter requirement. It solves some of the problems that modern business methods present. The problems that it does not solve, it at least explains in a manner that sheds some light on the nature of the tasks that remain. This article takes considerable notice of how the relevant legal rules …

"The Exclusive Right To Their Writings": Copyright And Control In The Digital Age, Jane C. Ginsburg

Faculty Scholarship

In this article, I will explore the concept of control and the meaning of exclusive rights in the constitutional text, the pre-1976 Copyright Act regime, and the 1976 Act. I then consider the new technology cases from piano rolls through videotaperecorders, as well as Congress' responses to new technological means of exploitation. I make two submissions. First, I conclude that when copyright owners seek to eliminate a new kind of dissemination, and when courts do not deem that dissemination harmful to copyright owners, courts decline to find infringement, even though the legal and economic analysis that support those determinations often …

Incomplete Compensation For Takings, Thomas W. Merrill

Faculty Scholarship

If a tribunal determines that a state actor has expropriated foreign investment property, or, under Chapter 11 of the North American Free Trade Agreement (NAFTA), that a state actor has adopted a regulation that is "tantamount to" an expropriation of foreign investment property, then that tribunal must determine the amount of compensation owed. International law has developed methods to determine the size of a compensation award when a state formally expropriates property. But the notion, reflected in Chapter 11 of NAFTA, that states may be required to pay compensation to foreign investors for what are, in effect, regulatory takings, is …

Vangrack's Explanations: Treating The Truth As A Mere Matter Of "Form", Jeffery Fagan, James S. Liebman, Valerie West

Faculty Scholarship

We welcome criticism by responsible scholars and readers, and the chance to address it in journals that enforce appropriate standards of accuracy and integrity. We have done just that in exchanges in Judicature and the Indiana Law Journal.

But the inaccuracies in Adam VanGrack's Note, and new problems with his present explanation, lead us to conclude that it is not useful to exchange views with him in the Washington University Law Quarterly. Beyond all is Mr. VanGrack's dismissal of matters serious enough to trigger an extraordinary instruction to explain himself in print, and to prompt him to rescind …

Misstatements Of Fact In Adam Vangrack's Student Note: A Letter To The Editors Of The Washington University Law Quarterly, Jeffery Fagan, James S. Liebman, Valerie West

Faculty Scholarship

The Quarterly's Fall 2001 issue published a Note reviewing our report, A Broken System: Error Rates in Capital Cases, 1973-1995. That Note has three inaccuracies that are so clear and frequently repeated, and are the result of such clear cite-checking lapses, that remedial steps are required. These matters do not involve differences of opinion, judgment, or interpretation between us and the Note's author. Matters of that sort are appropriately addressed in a response. All instead are misstatements of fact that result from the Quarterly's failure to fulfill its basic obligation to check the accuracy of verifiable factual statements it …

Toward A "New Deal" For Copyright In The Information Age, Pamela Samuelson

Michigan Law Review

Jessica Litman believes the public needs a very good copyright lawyer, and if I have not mistaken her intentions, she is volunteering for the job (pp. 70-73). A century of Congressional deference to industry-negotiated compromises has produced, she argues, a copyright law that is both incomprehensible and unfair. This incomprehensibility might be tolerable if copyright law governed only commercial relations among industry participants, all of whom have copyright counsel. To the extent that copyright law applies to the conduct of ordinary persons, its incomprehensibility presents serious difficulties. Moreover, to the extent that copyright law makes illegal many ordinary activities of …

Digital Copyright And The "Progress Of Science, Jessica D. Litman

Articles

Let me start with a truism: Networked digital technology has transformed information and the way we interact with it. Digital information is dynamic rather than fixed. What we think of as “documents” can change constantly. That’s challenged our notions of what it means to archive material.

How Copyright Got A Bad Name For Itself, Jane C. Ginsburg

Faculty Scholarship

This Essay does not attempt a comprehensive review of recent U.S. copyright legislation and caselaw. Instead, it offers an analytical framework that will allow me to be both informative and opinionated. I propose first to expose some examples of the kind of copyright owner overreaching that has correctly given copyright a bad name. I then will argue that not all the bad publicity is deserved. Rather, much of the last years' legislation and caselaw, instead of overreaching, appropriately reaches out to address new problems prompted by new technologies, so as to strike a happier balance between copyright owner, intermediary, and …

Patent Signals, Clarisa Long

Faculty Scholarship

Courts and commentators often treat intellectual property as if the private value of the rights stemmed entirely from the control legal rules conferred over the protected subject matter. While the literature has devoted an enormous amount of time, paper, and ink to the discussion of whether legal rules grant the optimal amount of exclusivity, it has not considered whether it has been examining all the functions of patents This Article provides a new general framework for analyzing the function and effect of intellectual property rules. Rather than focusing on patents as a mechanism for privatizing information, this Article instead frames …

The Mead Doctrine: Rules And Standards, Meta-Rules And Meta-Standards, Thomas W. Merrill

Faculty Scholarship

United States v. Mead Corp. is the U.S. Supreme Court's most important pronouncement to date about the scope of the Chevron doctrine. According to Justice Scalia's dissenting opinion, Mead is "one of the most significant opinions ever rendered by the Court dealing with the judicial review of administrative action." Justice Scalia also thought that the consequences of "the Mead doctrine," as he called it, "will be enormous, and almost uniformly bad."

Justice Scalia's indictment of Mead was driven by his attachment to rules and dislike of standards. He saw Mead as shifting the practice of deference away from the …

De-Bugging Open Source Software Licensing, Robert W. Gomulkiewicz

Articles

Home computer users and businesses often rely on software developed by unconventional programmers known as "hackers." Hackers claim that the code they develop is superior in quality to the code developed by commercial software firms because hackers freely share the code they develop. This code sharing enables a multitude of programmers from around the world to rapidly find and fix bugs. The legal mechanism that enables hackers to deploy this worldwide team of de-buggers is a license agreement or, to be more precise,an assortment of license agreements known as "open source" licenses.

Although open source software developers may regularly fix …