Law Commons^™

Using Creativity To Fight A $60 Billion Consumer Problem—Counterfeit Goods, Xuan-Thao Nguyen, Maxim H. Waldbaum

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For centuries, consumers have been willing to pay exorbitant prices for unique or premiumquality goods. Throughout the evolution of the "designer label" market, counterfeiters have lurked in the shadows of the economic landscape. Thus, the problem of counterfeit goods represents nothing new in the global economy.

Legal-Ware: Contract And Copyright In The Digital Age, Michael J. Madison

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ProCD, Inc. v. Zeidenberg, which enforced a shrinkwrap license for computer software, has encouraged the expansion of the shrinkwrap form beyond computer programs, forward, onto the Internet, and backward, toward such traditional works as books and magazines. Authors and publishers are using that case to advance norms of information use that exclude, practically and conceptually, a robust public domain and a meaningful doctrine of fair use. Contesting such efforts by focusing on the contractual nature of traditional shrinkwrap, by relying on market principles, on adhesion theory, on commercial law concepts of usage and custom, or on federal preemption doctrine, feeds …

Upstream Patents = Downstream Bottlenecks, Rebecca S. Eisenberg, Michael A. Heller

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Thirty years ago in Science, Garrett Hardin introduced the metaphor "tragedy of the commons" to help explain overpopulation, air pollution, and species extinction. People often overuse resources they own in common because they have no incentive to conserve. Today, Hardin's metaphor is central to debates in economics, law, and science and powerful justification for privatizing commons property. While the metaphor highlights the cost of overuse when governments allow too many people to use a scarce resource, it misses the possibility of underuse when governments give too many people rights to exclude others. Privatization can solve one tragedy, but cause another.

Copyright Law And Electronic Access To Information, Jessica D. Litman

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At the same time as we have been discovering the Internet’s enormous potential to enhance access to information and revolutionize the ways libraries do business, the Internet’s high profile in popular media has made it the focus of a wide spectrum of fears about the future. This paper focuses on pending proposals to amend copyright law to enhance the control copyright owners wield over the appearance of their works on digital networks. These proposals would stifle libraries’ use of the Internet. Libraries and their supporters must participate in the copyright debate, and think creatively about new models for copyright. The …

Intellectual Property Issues In Genomics, Rebecca S. Eisenberg

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Controversy over intellectual property rights in the results of large-scale cDNA sequencing raises intriguing questions about the roles of the public and private sectors in genomics research, and about who stands to benefit (and who stands to lose) from the private appropriation of genomic information. While the US Patent and Trademark Office has rejected patent applications on cDNA fragments of unknown function from the National Institutes of Health, private firms have pursued three distinct strategies for exploiting unpatented cDNA sequence information: exclusive licensing, non-exclusive licensing and dedication to the public domain.

Norms And Property In The Middle Kingdom, Glenn R. Butterton

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No abstract provided.

A Brief Defense Of Mass Market Software License Agreements, Robert W. Gomulkiewicz

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In the rapidly changing world of personal computer software, the end user license agreement ("EULA") has endured. The EULA is a familiar component of most personal computer software transactions. Many commentators, however, have maligned the practice of standard form software licensing. A survey of the literature on the subject might lead one to conclude that there are only critics--and no proponents--of EULAs.

Despite the din of criticism, EULAs continue to be widely usedby almost every mass-market software publisher, even though the cost of doing so is significant. This Article explains the value of EULAs for both software publishers and users, …

Doctrine Of Equivalents After Hilton Davis: A Comparative Law Analysis, Toshiko Takenaka

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This Article will address a number of major topics. First, it discusses the Federal Circuit's renewed interest in Graver Tank and the merger of the infringement test with the patentability test established by the Supreme Court in Graham v. John Deere Co. Then, this Article responds to the dissenting judges in Hilton Davis who emphasized the danger of uncertainty that stems from the in-principle application of the doctrine of equivalents. This response explains that the application of the doctrine does not increase the uncertainty in determining infringement but, rather, encourages clear, definitive claim drafting. It then examines the relationship …

Public Research And Private Development: Patents And Technology Transfer In Government-Sponsored Research, Rebecca S. Eisenberg

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This article revisits the logical and empirical basis for current government patent policy in order to shed light on the competing interests at stake and to begin to assess how the system is operating in practice. Such an inquiry is justified in part by the significance of federally-sponsored research and development to the overall U.S. research effort. Although the share of national expenditures for research and development borne by the federal government has declined since 1980, federal funding in 1995 still accounted for approximately thirty-six percent of total national outlays for research and development' and nearly fifty-eight percent of outlays …

Does A Cultural Barrier To Intellectual Property Trade Exist? The Japanese Example, Toshiko Takenaka

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What is the so-called "cultural barrier to intellectual property trade?" No definition for this phrase readily came to me when I began exploring the topic. Japanese intellectual property scholars and professionals strongly suspect that their U.S. counterparts, who find institutional or economic explanations for discrepancies between European and American business customs, nevertheless tend to attribute the differences between Japanese and American business practices to cultural differences. Three popular arguments offered to substantiate this "cultural barrier to intellectual property trade" theory are: (1) the application of the concepts of competition and monopoly to intangibles such as technology and ideas is foreign …

Intellectual Property At The Public-Private Divide: The Case Of Large-Scale Cdna Sequencing, Rebecca S. Eisenberg

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The Human Genome Project provides fertile ground for studying the role of intellectual property at the wavering boundary between public and private research science. It involves a major commitment of both public and private research funds in an area that is of significant interest both to research scientists working in university and government laboratories and to commercial firms. It thus provides a wealth of new scientific discoveries that are simultaneously potential candidates for commercial development and inputs into further research. Its obvious implications for human health raise the stakes of getting the balance between private property and public access right, …

Opinion Letter As To The Patentability Of Certain Inventions Associated With The Identification Of Partial Cdna Sequences, Rebecca S. Eisenberg, Robert P. Merges

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You have asked for our legal opinion on the patentability of inventions claimed in U.S. patent applications 07/716,831, filed June 21, 1991 (the '831 application, or .'831"), 07/837,195, filed September 25, 1992 ("'195"), and 07/952,911, filed February 12, 1993 (."911"), all filed in the name of Craig Venter and others and assigned to the National Institutes of Health "(NIH)." We understand that NIH has abandoned these patent applications and has no present intention of filing similar applications in the future, but that NIH remains interested in the patenting of human DNA sequences from a broader public policy perspective. We have …

Reply To Comments On The Patentability Of Certain Inventions Associated With The Identification Of Partial Cdna Sequences, Rebecca S. Eisenberg, Robert P. Merges

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A brief reply is in order to clarify our position on the patenting of research tools. We stand by the statement that "there are reasons to be wary of patents on research tools," but that statement should not be understood as a broad condemnation of patents on research tools in all contexts. Indeed, immediately after the cited language our opinion letter acknowledges that withholding patent protection from research tools could undermine private incentives to develop research tools and to make them available to investigators or lead to greater reliance on trade secrecy. Unlike the government, which purports to pursue patent …

A Technology Policy Perspective On The Nih Gene Patenting Controversy, Rebecca S. Eisenberg

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This article will use the NIH patent controversy as a focal point for considering when the results of government-sponsored research should be patented and when they should be dedicated to the public domain. First, this article will review the recent history of federal government policy on patenting the results of government-sponsored research. Next, this article will highlight some of the complexities involved in achieving technology transfer from the public sector to the private sector that current policy may oversimplify. With this background, this article will return to a more detailed analysis of the NIH cDNA patenting controversy and consider the …

Limiting The Role Of Patents In Technology Transfer, Rebecca Sue Eisenberg

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Federal policy since 1980 has reflected an increasingly confident presumption that patenting discoveries made in the course of government-sponsored research is the most effective way to promote technology transfer and commercial development of those discoveries in the private sector. Whereas policymakers in the past may have thought that the best way to achieve widespread use of government-sponsored research was to make the results freely available to the public, the new propatent policy stresses the need for exclusive rights as an incentive for industry to undertake the further investment to bring new products to market. Although this propatent policy may make …

Limiting The Role Of Patents In Technology Transfer, Rebecca S. Eisenberg

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Federal policy since 1980 has reflected an increasingly confident presumption that patenting discoveries made in the course of government-sponsored research is the most effective way to promote technology transfer and commercial development of those discoveries in the private sector. Whereas policymakers in the past may have thought that the best way to achieve widespread use of government-sponsored research was to make the results freely available to the public, the new propatent policy stresses the need for exclusive rights as an incentive for industry to undertake the further investment to bring new products to market. Although this propatent policy may make …

Extending The New Patent Misuse Limitation To Copyright: Lasercomb America, Inc. V. Reynolds, Toshiko Takenaka

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This Article examines the decisional history that shaped the misuse doctrine and the interplay between the misuse defense and antitrust liability in patent and copyright infringement litigation. In particular, by examining the public interest and policy considerations underlying patent and antitrust laws, this Article compares and evaluates the new view that misuse must be analyzed by the conventional antitrust theories expressed by Judge Posner in USM Corp. v. SPS Technologies Inc. and the traditional view that was derived from the equity doctrine expressed in Morton Salt v. G.S. Suppiger.

Furthermore, this Article reviews the legislative history and the impact …

Copyright As Myth, Jessica D. Litman

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It has become fashionable to seek to formulate, or reformulate, copyright law as an expression of overarching grand theory. Perhaps the most prominent manifestation of this trend has been the recasting of copyright law in the mold of economic incentives; a more recent upstart competitor seeks to reclaim the debate by invoking the philosophical precepts of Hohfeld, Hegel and Locke. Occasionally, the literature gives us polite debates about which of the competing theoretical models is more misguided. Meanwhile, another voice in the copyright literature has been complaining that the law is remarkably unaccommodating of the actual process of creating works …

The Substantial Identity Rule Under The Japanese Novelty Standard, Toshiko Takenaka

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This article compares the novelty standard under Japanese patent law with the novelty standard under American patent law. This article first explains the structure of the novelty and inventive step provisions under Japanese patent law and examines the interpretation and basic legal theories of these provisions. The inventive step standard developed out of the novelty standard. Thus, to understand the inventive step standard, it is necessary to understand the novelty standard.

Next, this article discusses the unique features of the Japanese novelty standard. The strict novelty requirements of the patent laws of the United States and European countries are contrasted …

The Public Domain, Jessica D. Litman

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This article examines the public domain by looking at the gulf between what authors really do and the way the law perceives them. Part I outlines the basics of copyright as a species of property and introduces the public domain's place within the copyright scheme. Copyright grants authors" ' rights modeled on real property in order to encourage authorship by providing authors with markets in which they can seek compensation for their creations. Because parcels of authorship are intangible, however, the law faces *problems in determining the ownership and boundaries of its property grants. In particular, the concept of "originality," …

Patenting The Human Genome, Rebecca S. Eisenberg

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The increasing promise of federal funding for mapping and sequencing the human genome has brought with it renewed attention in the research science community to issues of intellectual property protection for products of biotechnology research. Echoing concerns raised a decade ago in the debate over commercialization of academic biomedical research, scientists have called for the free availability of all information generated through the Human Genome Project and have argued against allowing private intellectual property rights in such knowledge. Meanwhile, private parties have quietly been obtaining patents on bits and pieces of the human genome from the Patent and Trademark Office …

Copyright Legislation And Technological Change, Jessica D. Litman

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Throughout its history, copyright law has had difficulty accommodating technological change. Although the substance of copyright legislation in this century has evolved from meetings among industry representatives whose avowed purpose was to draft legislation that provided for the future,6 the resulting statutes have done so poorly. The language of copyright statutes has been phrased in fact-specific language that has grown obsolete as new modes and mediums of copyrightable expression have developed. Whatever copyright statute has been on the books has been routinely, and justifiably, criticized as outmoded.7 In this Article, I suggest that the nature of the legislative process we …

Patents And The Progress Of Science: Exclusive Rights And Experimental Use, Rebecca S. Eisenberg

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In this article I analyze the proper scope of an experimental use exemption from patent infringement liability by comparing the rationales behind promoting technological progress through granting exclusive patent rights in inventions with competing arguments for promoting scientific progress by allowing all investigators to enjoy free access to the discoveries of other scientists. I begin by reviewing key features of the patent laws and theoretical justifications for granting patent monopolies in order to clarify the implications of existing patent doctrine and theory for an experimental use exemption. I then look to the literature in the sociology, history, and philosophy of …

Performer's Rights And Digital Sampling Under U.S. And Japanese Law, Jessica D. Litman

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A year or two ago, one of my copyright students called to my attention a problem that seemed to him to pose unique difficulties for the copyright statute. The problem arises because of a technology called digital sampling.' Digital sampling is a new threat to performers' rights that has grown out of the combination of digital recording technology with music synthesizer technology. This threat is a very recent one. Indeed, the digital sampling problem is so new that copyright lawyers haven't yet figured out how to think about it.

Proprietary Rights And The Norms Of Science In Biotechnology Research, Rebecca S. Eisenberg

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As basic research in biotechnology yields increasing commercial applications, scientists and their research sponsors have become more eager to protect the commercial value of research discoveries through intellectual property law. Some scientists fear that these commercial incentives will weaken or even undermine the norms that have traditionally governed scientific research. In this Article, Professor Eisenberg examines the interaction of proprietary rights in inventions with these traditional scientific norms. Trade secrecy, she argues, is an undesirable strategy for protection of basic research discoveries because it impedes dissemination of new knowledge to the scientific community. She finds that patent law is in …

Copyright, Compromise And Legislative History, Jessica D. Litman

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Copyright law gives authors a "property right." But what kind of property right? Indeed, a property right in what? The answers to these questions should be apparent from a perusal of title seventeen of the United States Code-the statute that confers the "property" right.' Courts, however, have apparently found title seventeen an unhelpful guide. For the most part, they look elsewhere for answers, relying primarily on prior courts' constructions of an earlier and very different statute on the same subject. 2

The Patentability Of Living Microorganisms: Diamond V. Chakrabarty, Daniel H. Foote

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Microbiologists have made great advances in modifying gene structures to create new forms of life. In Diamond v. Chakrabarty, the Supreme Court addressed for the first time the patentability of a living microorganism. In a 5-4 decision that has been condemned as heralding the advent of Aldous Huxley's Brave New World, the Court held that the living nature of a microorganism is no bar to patenting it.

State Law Of Patent Exploitation, Edward H. Cooper

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The main purpose of the present inquiry is to determine whether second thoughts support or undermine the instinctive supposition that the doctrines surrounding cooperative use of patents should be federal. The original creator of a patented invention is seldom in a position to exploit its commercial potential alone; even if the invention is created by the employee of a vast enterprise, it is almost inevitable that the patent will be assigned to his employer. Patent licensing plays a vitally important role in the development of many inventions. The contract doctrines surrounding such transactions, and various other consensual undertakings relating to …

Patent Law: Secret Use As Affecting Right To A Patent, John B. Waite

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An unusually obvious piece of judicial legislation, of practical importance to the manufacturing world, was promulgated in the case of Macbeth-Evans Glass Co. v. General Electric Co., 246 Fed. 695. The facts were that in 1903 Macbeth had invented a process for making glass. Since that time the plaintiff company, of which Macbeth was president, had been using that process. This use had, however, been "secret". In 1910 an employee of the plaintiff revealed the process to the Jefferson Glass Co., which at once began to use it, but on application of the Macbeth Co. the state court enjoined the …

Limitations Upon The Use, After Sale, Of Patented Articles, John B. Waite

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In the case of Motion Picture Patents Co. v. Universal Film Co., 37 Sup. Ct. 416, the Supreme Court has just rendered a decision which reverses the much discussed case of Henry v. Dick Co., 224 U. S. 1. The opinion was by a divided court, however, as three of the justices dissented, and Justice McREYNOLDS "concurred in the result" only. It can, therefore, hardly be said to settle the ultimate rule as in contradiction to that followed in Henry v. Dick Co., and discussion of the case is of something more than mere academic value. The facts were that …