Law Commons^™

Digital Market Perfection, Rory Van Loo

Michigan Law Review

Google’s, Apple’s, and other companies’ automated assistants are increasingly serving as personal shoppers. These digital intermediaries will save us time by purchasing grocery items, transferring bank accounts, and subscribing to cable. The literature has only begun to hint at the paradigm shift needed to navigate the legal risks and rewards of this coming era of automated commerce. This Article begins to fill that gap by surveying legal battles related to contract exit, data access, and deception that will determine the extent to which automated assistants are able to help consumers to search and switch, potentially bringing tremendous societal benefits. Whereas …

The Uncertain Protection Of "Derivative" Trade Secrets, 18 J. Marshall Rev. Intell. Prop. L. 241 (2019), Benjamin Bradford, Remi Jaffre

UIC Review of Intellectual Property Law

This article discusses when a trade secret misappropriation claim can be premised on the acquisition, disclosure, or use of a product or method derived from a trade secret, rather than the acquisition, disclosure, or use of a trade secret itself. Although this question is likely to take on increasing importance as digital products that were made through the use of trade secrets and that can easily be copied become a larger part of everyday life, courts have rarely focused on it and have not come to any consensus. In this article, we survey the existing, inconsistent case law and analyze …

The Golden Claims: Necessary Support For Nonprovisional Application Prior Art References To Be Granted Provisional Application Filing Dates During Inter Partes Review Proceedings, 18 J. Marshall Rev. Intell. Prop. L. 326 (2019), Madison Makeever

UIC Review of Intellectual Property Law

Whether to beat an impending disclosure, disclose the most information possible, or simply to get the earliest possible filing date, provisional patent applications are a beneficial way to protect your patent rights. The few formal and statutory requirements allow provisionals to be prepared on a rush basis. The Federal Circuit held in 2017 that published nonprovisional applications can constitute prior art as of its provisional filing date but only as to elements in the application. However, ambiguity regarding published applications in the Federal Circuit’s 2015 precedent for awarding a patent it’s provisional filing date may lead to increased patent invalidation …

There Has Been An Infringement Of My Work And My Circuit Does Not Allow Me To Sue! The Time Has Come To Hash-Out The Federal Circuit Court Discrepancy On Copyright Registration, 18 J. Marshall Rev. Intell. Prop. L. 344 (2019), Thomas Placzek

UIC Review of Intellectual Property Law

The time has come to relieve the ambiguity created by the continued lack of consensus regarding the proper interpretation of 17 U.S.C. § 411(a). The persistent split amongst the various Federal Courts regarding the meaning of § 411(a)’s registration requirement allows some fortunate artists to immediately enforce their rights in a number of jurisdictions, while artists from other jurisdictions are prohibited from immediately enforcing the same rights. Several circuit and district courts subscribe to the “application approach,” while others employ the “registration approach.” This comment delves into the rationale behind the respective approaches, and discusses the arguments made for and …

Intersection Of Antitrust Laws With Evolving Frand Terms In Standard Essential Patent Disputes, 18 J. Marshall Rev. Intell. Prop. L. 259 (2019), Claire Guo

UIC Review of Intellectual Property Law

This article addresses the issues of overlapping enforcement of antitrust laws and FRAND (Fair, reasonable and non-discriminatory terms) in standard essential disputes. Briefly, this article observes that the evolving FRAND terms will affect the degree that antitrust laws may intervene into SEP license practice. Part I of this article is a brief introduction to the background and main sections. Part II describes the evolvement of FRAND into a globally converged standard of royalty determination and a process through joint efforts of global courts. Part III discusses the changing interaction of FRAND with antitrust laws in three major jurisdictions, respectively China, …

Nationalizing Trips: An Examination Through Exceptions, 18 J. Marshall Rev. Intell. Prop. L. 285 (2019), Evan Tallmadge

UIC Review of Intellectual Property Law

What should not be patentable? The Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS”) codifies certain categories of subject matter that nations can exclude from patent protection. This Article examines how nations have interpreted these exclusions through an analysis of their national manuals of patent examining procedure and more importantly what explicit exceptions to patentability these countries have listed. The Article proceeds to analyze both the similarities and differences in approaches towards exclusions that attempt to ban the same subject matter from patentability and differences in what countries have chosen to bar from patenting. The Article concludes with an …

A Tale Of Two Pioneers: Trademarking A Tattoo, 18 J. Marshall Rev. Intell. Prop. L. 400 (2019), Jeanette Braun

UIC Review of Intellectual Property Law

This is a short article written in a creative style that narrates the story of the first tattoo that was federally registered as a trademark.

Abstraction In Software Patents (And How To Fix It), 18 J. Marshall Rev. Intell. Prop. L. 364 (2019), Athul Acharya

UIC Review of Intellectual Property Law

Software has long posed a quandary for patent law. As many have observed, software is an abstract technology—but abstract ideas are supposedly ineligible for patenting. This Article explores just what that means, what it doesn’t mean, and what might fix the problem of abstraction in software patents. This Article offers two related ways to understand the abstract nature of software. First, computer science defines itself as a “science of abstraction,” and that self-definition finds real doctrinal purchase. Second, software code is designed to be what the doctrine calls “functional”—to describe abstract results that can be executed on heterogenous hardware without …

The F Word - An Early Empirical Study Of Trademark Registration Of Scandalous And Immoral Marks In The Aftermath Of The In Re Brunetti Decision, 18 J. Marshall Rev. Intell. Prop. L. 404 (2019), Vicenc Feliu

UIC Review of Intellectual Property Law

This article seeks to create an early empirical benchmark on registrations of marks that would have failed registration as “scandalous” or “immoral” under Lanham Act Section 2(a) before the Court of Appeals for the Federal Circuit’s In re Brunetti decision of December 2017 and to briefly examine the possible outcome of the Supreme Court’s grant of certiorari on that case. The Brunetti decision followed closely behind the Supreme Court’s Matal v. Tam and put an end to examiners denying registration on the basis of Section 2(a). In Tam, the Supreme Court reasoned that Section 2(a) embodied restrictions on free speech, …

Insolvency And Trademarks: How The Bankruptcy Code's Treatment Of Trademarks Promotes Naked Licensing, 18 J. Marshall Rev. Intell. Prop. L. 475 (2019), Michael Hopkins

UIC Review of Intellectual Property Law

In 1988, Congress amended § 365 of the Bankruptcy Code, which deals with the rejection of executory contracts, in order to allow intellectual property licensees to retain usage rights. However, this amendment did not include adding trademarks to the Bankruptcy Code’s definition of “intellectual property.” As such, Circuit Courts are divided on what remedies are available to trademark licensees following a licensor’s rejection of their agreement. Recently, the circuit split escalated when the First Circuit decided Mission Product Holdings, Inc. v. Tempnology, LLC, which was inconsistent with the Seventh Circuit’s 2014 holding in Sunbeam Products, Inc. v. Chicago American Manufacturing. …

Patent Infringement Under 35 U.S.C. § 271(G) For Goods Made In The United States, 19 Uic Rev. Intell. Prop. L. 64 (2019), Peter Hecker

UIC Review of Intellectual Property Law

Section 271(g) filled a loophole that allowed companies to escape patent infringement by producing goods overseas and then importing them. In filling this loophole, Congress may have unintentionally broadened patent liability for the production and use of goods in the United States. This paper discusses important ramifications of this broadened language and encourages the Federal Circuit or Congress to clarify the extent of patent infringement under Section 271(g).

Louboutin Heels And The Competition Goals Of Eu Trade Mark Law, 19 Uic Rev. Intell. Prop. L. 38 (2019), Cesar Ramirez-Montes

UIC Review of Intellectual Property Law

This article critically examines the judicial applications of the EU functionality doctrine and argues that recent CJEU decisions are at odds with the EU legislator’s declared intention to give functionality a much greater role in promoting product market competition. As a statutory ground for refusing registration even in the presence of consumer association and established goodwill, EU functionality serves to avoid undue competitive advantages by refusing protection in support of freedom to compete. EU functionality represents a significant obstacle to registration for purely natural, technical and value adding signs representing the shape of the goods. As of 2015, the wording …

The New Approaches To Digital Anti-Piracy In The Entertainment Industry, 19 Uic Rev. Intell. Prop. L. 75 (2019), Igor Slabykh

UIC Review of Intellectual Property Law

This article is about digital anti-piracy. The entertainment industry has been combating piracy over the internet for the last 40 years. This article gives an overview of the digital anti-piracy approaches, analyzes the reasons why people commit piracy, demonstrates the disappointing results of the current state of anti-piracy, and offers new approaches that may help to reduce digital piracy.

The Forking Phenomenon And The Future Of Cryptocurrency In The Law, 19 Uic Rev. Intell. Prop. L. 1 (2019), Chelsea Button

UIC Review of Intellectual Property Law

In the evolving and ever-changing world of cryptocurrency, new and exciting phenomena arise, including hard forks. Hard forks occur when two groups supporting a cryptocurrency disagree on how the code should evolve. If the changes are incompatible, the code diverges into two chains, essentially doubling the amount of each holder’s coin. Forking a coin is theoretically easy. However, maintaining a fork requires great effort and support by members of the community. This Article discusses the November 15, 2018 Bitcoin Cash hard fork and subsequent lawsuit, analyzing anti-trust, negligence, and conversion claims. Forcing de facto fiduciary duties on developers and miners …

Administrative Truth: Comments On Cortez’S Information Mischief, David Thaw

Articles

This short essay responds to Professor Nathan Cortez’s argument describing an emerging “information policy” reflecting on the practices of President Donald J. Trump’s executive administration (the “Trump Administration”) regarding the development, release, and management of official information. Professor Cortez argues that viewed holistically, this information policy suggests a shift toward the use of information practices by administrative agencies for purposes other than “neutral principles” and rather focusing on a “more cynical [use] of government information.”

This argument may be well-founded, and the Trump Administration certainly has been criticized widely for the relationship between its public statements and widespread media interpretation …

Safe Social Spaces, Ari Ezra Waldman

Articles & Chapters

Technologies that mediate social interaction can put our privacy and our safety at risk. Harassment, intimate partner violence and surveillance, data insecurity, and revenge porn are just a few of harms that bedevil technosocial spaces and their users, particularly users from marginalized communities. This Article seeks to identify the building blocks of safe social spaces, or environments in which individuals can be free of privacy and safety dangers. Relying on analogies to offline social spaces—Alcoholics Anonymous meetings, teams of coworkers, and attorney-client relationships—this Article argues that if a social space is defined as an environment characterized by disclosure, then a …

Can Accessibility Liberate The "Lost Ark" Of Scholarly Work?: University Library Institutional Repositories Are "Places Of Public Accommodation”, 52 Uic J. Marshall L. Rev. 327 (2019), Raizel Liebler, Gregory Cunningham

UIC Law Review

For any body of knowledge – an ark of power or a corpus of scholarship – to be studied and used by people, it needs to be accessible to those seeking information. Universities, through their libraries, now aim to make more of the scholarship produced available for free to all through institutional repositories. However, the goal of being truly open for an institutional repository is more than the traditional definition of open access. It also means openness in a more general sense. Creating a scholarship-based online space also needs to take into consideration potential barriers for people with disabilities. This …

Massachusetts Lobstermen’S Association V. Ross, Daniel Brister

Public Land & Resources Law Review

President Obama established the first––and only––national monument in the Atlantic Ocean on September 15, 2016. Located 130 miles southeast of Cape Cod, Massachusetts, and comprised of 4,913 square miles of marine ecosystems rich in biodiversity, the protected area includes four underwater mountains and three submarine canyons. Plaintiff commercial lobster and fishing associations, seeking to overturn the designation, asserted that the Antiquities Act does not permit a president to establish marine national monuments. The U.S. District Court for the District of Columbia disagreed, upholding a president’s authority to protect offshore areas and vast ecosystems as objects of scientific interest, and dismissing …

Coin-Operated Capitalism, Shaanan Cohney, David A. Hoffman, Jeremy Sklaroff, David A. Wishnick

All Faculty Scholarship

This Article presents the legal literature’s first detailed analysis of the inner workings of Initial Coin Offerings. We characterize the ICO as an example of financial innovation, placing it in kinship with venture capital contracting, asset securitization, and (obviously) the IPO. We also take the form seriously as an example of technological innovation, where promoters are beginning to effectuate their promises to investors through computer code, rather than traditional contract. To understand the dynamics of this shift, we first collect contracts, “white papers,” and other contract-like documents for the fifty top-grossing ICOs of 2017. We then analyze how such projects’ …

Transparency And Algorithmic Governance, Cary Coglianese, David Lehr

All Faculty Scholarship

Machine-learning algorithms are improving and automating important functions in medicine, transportation, and business. Government officials have also started to take notice of the accuracy and speed that such algorithms provide, increasingly relying on them to aid with consequential public-sector functions, including tax administration, regulatory oversight, and benefits administration. Despite machine-learning algorithms’ superior predictive power over conventional analytic tools, algorithmic forecasts are difficult to understand and explain. Machine learning’s “black-box” nature has thus raised concern: Can algorithmic governance be squared with legal principles of governmental transparency? We analyze this question and conclude that machine-learning algorithms’ relative inscrutability does not pose a …

Artificial Intelligence And Law: An Overview, Harry Surden

Publications

Much has been written recently about artificial intelligence (AI) and law. But what is AI, and what is its relation to the practice and administration of law? This article addresses those questions by providing a high-level overview of AI and its use within law. The discussion aims to be nuanced but also understandable to those without a technical background. To that end, I first discuss AI generally. I then turn to AI and how it is being used by lawyers in the practice of law, people and companies who are governed by the law, and government officials who administer the …

Inside The Black Box Of Search Algorithms, Susan Nevelow Mart, Joe Breda, Ed Walters, Tito Sierra, Khalid Al-Kofahi

Publications

A behind-the-scenes look at the algorithms that rank results in Bloomberg Law, Fastcase, Lexis Advance, and Westlaw.

Recording As Heckling, Scott Skinner-Thompson

Publications

A growing body of authority recognizes that citizen recording of police officers and public space is protected by the First Amendment. But the judicial and scholarly momentum behind the emerging “right to record” fails to fully incorporate recording’s cost to another important right that also furthers First Amendment principles: the right to privacy.

This Article helps fill that gap by comprehensively analyzing the First Amendment interests of both the right to record and the right to privacy in public while highlighting the role of technology in altering the First Amendment landscape. Recording information can be critical to future speech and, …

Lessons From Literal Crashes For Code, Margot Kaminski

Publications

No abstract provided.

Back To The Future Of Cyber Insurance, Tom Baker

All Faculty Scholarship

Written for an insurance trade publication, this brief essay identifies five ways that insurers manage uncertainty in selling cyber insurance: (1) providing valuable services beyond risk transfer; (2) contract design, (3) rapid iteration of pricing and forms, (4) limits management and reinsurance, and (5) claims disputing. Cyber insurers provide easy-to-price loss prevention and mitigation services so that the value proposition includes more than the (difficult to price) risk transfer. Cyber insurers design their contracts to include narrowly defined categories of coverage, typically with separate limits and with claims-made coverage for liability risks, and traditional insurers design their contracts to limit …

Fourth Amendment Textualism, Jeffrey Bellin

Michigan Law Review

The Fourth Amendment’s prohibition of “unreasonable searches” is one of the most storied constitutional commands. Yet after decades of Supreme Court jurisprudence, a coherent definition of the term “search” remains surprisingly elusive. Even the justices know they have a problem. Recent opinions only halfheartedly apply the controlling “reasonable expectation of privacy” test and its wildly unpopular cousin, “third-party doctrine,” with a few justices in open revolt.

These fissures hint at the Court’s openness to a new approach. Unfortunately, no viable alternatives appear on the horizon. The justices themselves offer little in the way of a replacement. And scholars’ proposals exhibit …

Targeting Poverty In The Courts: Improving The Measurement Of Ability To Pay Fines, Meghan M. O'Neil, J.J. Prescott

Articles

Ability-to-pay determinations are essential when governments use money-based alternative sanctions, like fines, to enforce laws. One longstanding difficulty in the U.S. has been the extreme lack of guidance on how courts are to determine a litigant’s ability to pay. The result has been a seat-of-the-pants approach that is inefficient and inaccurate, and, as a consequence, very socially costly. Fortunately, online platform technology presents a promising avenue for reform. In particular, platform technology offers the potential to increase litigant access, reduce costs, and ensure consistent and fair treatment—all of which should lead to more accurate sanctions. We use interviews, surveys, and …

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

Faculty Scholarship

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 …

Data Generated By New Technologies And The Law: A Guide For Massachusetts Practitioners, Andrew Sellars

Faculty Scholarship

This brief paper, created as part of a training on new technologies and evidence for MCLE New England, outlines the standards used to compel disclosure of information under the Stored Communication Act, and reviews the types of data stored on various consumer devices and their likely custodians, as well as cases and notes relevant to each devices. The paper serves as a quick introduction and checklist for those considering gathering information from these devices in the course of investigations in Massachusetts. The devices outlined include cell phones, social media platforms, secure messaging services, fitness trackers, home assistant devices (or "smart …

Authors And Machines, Jane C. Ginsburg, Luke Ali Budiardjo

Faculty Scholarship

Machines, by providing the means of mass production of works of authorship, engendered copyright law. Throughout history, the emergence of new technologies tested the concept of authorship, and courts in response endeavored to clarify copyright’s foundational principles. Today, developments in computer science have created a new form of machine, the “artificially intelligent” (AI) system apparently endowed with “computational creativity.” AI systems introduce challenging variations on the perennial question of what makes one an “author” in copyright law: Is the creator of a generative program automatically the author of the works her process begets, even if she cannot anticipate the contents …