Law Commons^™

Data Types, Data Doubts & Data Trusts, João Marinotti

Articles by Maurer Faculty

Data is not monolithic. Nonetheless, the word is frequently used indiscriminately—in reference to a number of distinct concepts. It may refer to information writ large, or specifically to personally identifiable information, discrete digital files, trade secrets, and even to sets of AI-generated content. Yet each of these types of “data” requires different governance regimes in commerce, in life, and in law. Despite this diversity, the singular concept of data trusts is promulgated as a solution to our collective data governance problems. Data trusts—meant to cover all of these types of data—are said to promote personal privacy, increase corporate transparency, facilitate …

Hoosier Athletes Get An Assist From Law Students Through Name, Image And Likeness Initiative, James Owsley Boyd

Keep Up With the Latest News from the Law School (blog)

Student-athletes at Indiana University Bloomington will get an assist from their peers at the IU Maurer School of Law under a new Name, Image and Likeness Initiative through the school’s Center for Intellectual Property Research.

As student-athletes navigate the still-emerging complexities of the NCAA’s new policy surrounding name, image and likeness — also referred to as NIL — they’ll now have a homefield advantage: one of the country’s top intellectual property clinics.

Understanding Illicit Insemination And Fertility Fraud From Patient Experience To Legal Reform, Jody L. Madeira

Articles by Maurer Faculty

Recently, several cases have been filed in North America and Europe alleging that fertility physicians inseminated former patients with their own sperm only to have this conduct come to light decades later when their unsuspecting adult children use direct-to-consumer genetic tests and learn that they are not biologically related to their fathers and often that they have multiple half-siblings. For instance, Donald Cline of Indianapolis, Indiana, has over sixty doctor-conceived children, with more continuing to come forward. Although these cases induce disgust, it has thus far proven difficult to hold these physicians legally accountable because their conduct falls within gaps …

Training Post-Millennial Ip Lawyers: A Field Guide, Mark D. Janis, Norman J. Hedges

Articles by Maurer Faculty

We’re intellectual property (IP) law professors. Postmillennials are our current and future customers. So we’re figuring out a few things about who post-millennials are and how we can mentor them effectively to start them on the path to becoming the next generation of outstanding IP lawyers.

Here are a few things we’re learning, and a few teaching strategies that we’ve developed. We hope that by sharing them, we can give IP lawyers some insights about what to expect from their new hires and how to help them advance professionally.

Patent Pool Outsiders, Michael Mattioli

Articles by Maurer Faculty

Individuals who decline to join cooperative groups — outsiders — raise concerns in many areas of law and policy. From trade policy to climate agreements to class action procedures, the fundamental concern is the same: a single member of the group who drops out could weaken the remaining union. This Article analyzes the outsider problem as it affects patents.

The outsider question has important bearing on patent and antitrust policy. By centralizing and simplifying complex patent licensing deals, patent pools conserve tremendous transaction costs. This allows for the widespread production and competitive sale of many useful technologies, particularly in the …

How Should Damages Be Calculated For Design Patent Infringement?, Mark D. Janis

Articles by Maurer Faculty

No abstract provided.

The Data-Pooling Problem, Michael Mattioli

Articles by Maurer Faculty

American innovation policy as expressed through intellectual property law contains a curious gap: it encourages individual research investments, but does little to facilitate cooperation among inventors, which is often a necessary precondition for innovation. This Article provides an in-depth analysis of a policy problem that relates to this gap: increasingly, public and private innovation investments depend upon the willingness of private firms and institutions to cooperatively pool industrial, commercial, and scientific data. Data holders often have powerful disincentives to cooperate with one another, however. As a result, important research that the federal government has sought to encourage through intellectual property …

Mr. Nicolson's Cane, Mark D. Janis

Articles by Maurer Faculty

One of the most widely-recognized artifacts in American patent law iconography is also among its most peculiar: Samuel Nicolson’s cane. The cane played a leading role in the Court’s analysis in American Nicholson v. City of Elizabeth, a nineteenth-century decision that has become a fixture in the patent law canon. The case is the leading enunciation of the doctrine of experimental use, which spares inventors from forfeiting patent rights when they can show that otherwise disqualifying sales or uses were undertaken as experiments to perfect their inventions. This paper argues that the modern experimental use doctrine needs to rediscover its …

Sheldon Halpern And The Right Of Publicity, Marshall A. Leaffer

Articles by Maurer Faculty

No abstract provided.

Measuring The Costs And Benefits Of Patent Pools, Michael Mattioli, Robert P. Merges

Articles by Maurer Faculty

This Article addresses a policy question that has challenged scholars and lawmakers since the 1850s: Do the transaction cost benefits of patent pools outweigh their potential for consumer harm? This question has special importance today. Patent pools are on the increase, due to large numbers of patents in critical industries such as software and mobile phones. In this Article, we present the first empirically-based estimate of the transaction costs savings engendered by patent pools. Drawing on interviews with administrators of prominent pools, we document the costs of assembling and administering a functioning pool. We then estimate the transaction costs that …

Disclosing Designs, Mark D. Janis, Jason Du Mont

Articles by Maurer Faculty

While patent scholars have subjected disclosure doctrines to considerable scrutiny in the context of utility patent law, very little has been written about the role of those doctrines in design patent law. At first blush, this is not surprising: modern design patent documents usually contain short disclosures comprised primarily of drawings, accompanied by very little text. Although this might suggest limited aspirations for design patent disclosures, the story is more complex. Design patents contain only a pro forma claim; it is the disclosure that defines the scope of the protected design. Moreover, although the modern practice of relying primarily on …

Expressive Eligibility, Mark D. Janis, Timothy R. Holbrook

Articles by Maurer Faculty

What is the ultimate objective of the patent eligibility inquiry? The recent eligibility case law — a frenzied outpouring of opinions from many esteemed judges — has revealed little while mystifying much. Scholars haven’t fared much better, although it isn’t for lack of trying. Our scholarly colleagues have offered a multitude of intriguing new perspectives on the analysis — drawing on history, the philosophy of science, semiotics, institutional choice, and so on. But we continue to wonder exactly what the eligibility inquiry is for.

In addressing that question here, we’re following a familiar methodological tradition: we propose to reimagine eligibility …

Patent-Eligible Processes: An Audience Perspective, Mark D. Janis, Timothy R. Holbrook

Articles by Maurer Faculty

Many of the problems with modern patent-eligibility analysis can be traced back to a fundamental philosophical divide between judges who treat eligibility as the primary tool for effectuating patent policy and those who take patent-eligibility as nothing more than a coarse filter to be invoked in rare cases. After several years in which the coarse filter approach seemed to have the upper hand, the eligibility-as-king approach now is firmly in ascendancy. This Article, resists that trend, exploring more centrist approaches to patent-eligibility, particularly in the context of process inventions. This Article first examines the practice of undertaking an eligibility analysis …

Learning From Lin: Lessons And Cautions From The Natural Commons For The Knowledge Commons, Daniel H. Cole

Articles by Maurer Faculty

No abstract provided.

Virtual Designs, Mark D. Janis, Jason J. Du Mont

Articles by Maurer Faculty

Industrial design is migrating to the virtual world, and the design patent system is migrating with it. The U.S. Patent and Trademark Office (USPTO) has already granted several thousand design patents on virtual designs, patents that cover the designs of graphical user interfaces for smartphones, tablets, and other products, as well as the designs of icons or other artifacts of various virtual environments. Many more such design patent applications are pending; in fact, U.S. design patent applications for virtual designs represent one of the fastest growing forms of design subject matter at the USPTO.

Our project is the first comprehensive …

Power And Governance In Patent Pools, Michael Mattioli

Articles by Maurer Faculty

The recent influx of patent pools, research consortia, and similar cooperative groups led by companies at the vanguard of American innovation has raised a pressing question: How does collective action influence the incentive to innovate? This question hinges on how patent pools are internally governed — a topic that has not been deeply examined by legal scholars. Through an original study of fifty-two private agreements, this Article pulls back the veil on patent licensing collectives to examine whether such organizations are designed to encourage long-term innovation.

This study draws on collective patent license agreements spanning the years 1856 to 2013 …

Disclosing Big Data, Michael Mattioli

Articles by Maurer Faculty

This Article reveals that the law is failing to adequately encourage producers of “big data” to disclose their most innovative work to the public. “Big data” refers to a new industrial and scientific phenomenon that holds the potential to transform diverse industries—from medicine, to energy, to online services. At the heart of this phenomenon are innovative and complex practices by which experts shape featureless digital records into valuable information products. The fact that these big data practices are unlikely to be widely disclosed to the public is worrisome for familiar reasons: the law generally prefers to induce technological disclosure in …

Big Business, Big Government And Big Legal Questions, Michael Mattioli, Todd Vare

Articles by Maurer Faculty

No abstract provided.

Book Review. Music & Copyright In America: Toward The Celestial Jukebox By Kevin Parks, Michelle M. Botek

Articles by Maurer Faculty

No abstract provided.

A Twenty-Year Retrospective On United States Trademark Law In Ten Cases, Marshall Leaffer

Articles by Maurer Faculty

No abstract provided.

Communities Of Innovation, Michael Mattioli

Articles by Maurer Faculty

This Article examines and evaluates the theory that patent holders privately self-correct the government’s excessive apportionment of patent rights by means of various cooperative efforts including patent pools, research consortia, and similar licensing collectives. According to some experts, these efforts are proof that market participants have the wisdom and the will to collectively disarm their patent arsenals in order to advance long-term innovation. But until now, this theory of market self-correction has not been evaluated through empirical study. Drawing on interviews and original research, this Article provides an ethnographic view of collective patent licensing episodes. Amidst these stories of success …

Patent Law's Audience, Mark D. Janis, Timothy R. Holbrook

Articles by Maurer Faculty

Many rules of patent law rest on a false premise about their target audience. Rules of patentability purport to provide subtle incentives to innovators. However, innovators typically encounter these rules only indirectly, through intermediaries such as lawyers, venture capitalists, managers, and others. Rules of patent scope strive to provide notice of the boundaries of the patent right to anyone whose activities might approach those boundaries, including, in theory, any member of the general public. But the rules of patent scope are practically incomprehensible to the general public. In this Article, we argue that rules of patent law should be designed …

Tuning The Obviousness Inquiry After Ksr, Mark D. Janis

Articles by Maurer Faculty

One of the most important and delicate judicial tasks in patent law is to keep the obviousness doctrine in reasonable working order. There are several reasons why the obviousness doctrine has been the subject of frequent judicial tinkering. First, patentability doctrines interact with each other, so doctrinal alterations that seem to be entirely external to the obviousness doctrine frequently have ripple effects on obviousness. The interaction between the utility and obviousness doctrines provides one good example. Second, the obviousness doctrine is internally complex. Cases in the chemical and biotechnology areas over the past several decades have amply illustrated this point. …

Functionality In Design Protection Systems, Mark D. Janis, Jason J. Du Mont

Articles by Maurer Faculty

In comparison to functionality doctrine in trade dress cases, scholars have paid relatively little attention to the role of functionality doctrine in design protection systems such as the U.S. design patent system and the EU Community Design regime. Yet functionality considerations potentially affect many validity and scope determinations in the design protection area. In this Article, we critically evaluate judicial application of the functionality doctrine in design protection systems, focusing on the U.S. design patent and EU design protection regimes. We argue that the doctrine as applied in these settings is too often aimless and inconsistent. Some simple doctrinal refinements …

Partial Patents, Michael Mattioli, Gideon Parchomovsky

Articles by Maurer Faculty

In this Article, we propose a way to improve the workings of the patent system. Unlike most extant reform proposals that focus on the USPTO and the Federal Circuit and the procedures they employ, our proposal is conceptual in nature. We introduce two new intellectual property forms—“quasi-patents” and “semi-patents.” Quasi-patents, as we define them, would avail only against direct business competitors of the inventor, but not against anyone else. Semi-patents would have the same scope as traditional patents, but their grant would be conditioned on an applicant’s consent to publish all research information pertaining to the protected invention. These two …

Book Review. European Copyright Law: A Commentary., Marshall A. Leaffer

Articles by Maurer Faculty

No abstract provided.

Statute Of Anne: Today And Tomorrow, Marshall Leaffer, Peter Jaszi, Craig Joyce, Tyler Ochoa

Articles by Maurer Faculty

No abstract provided.

Panel Ii: The Global Contours Of Ip Protection For Trade Dress, Industrial Design, Applied Art, And Project Configuration, Mark D. Janis, Susan Scafidi, Orit Fischman Afori, Wendy J. Gordon, Jonathan Moskin

Articles by Maurer Faculty

No abstract provided.

Cooling-Off And Secondary Markets: Consumer Choice In The Digital Domain, Michael Mattioli

Articles by Maurer Faculty

This article studies the law and economics of cooling-off periods and secondary markets for online media. The discussion is fueled by a current debate: In July 2009, the online retail juggernaut, Amazon.com, remotely deleted literary classics from consumers’ portable “Kindle” reading devices. The public outcry and class-action lawsuit that followed have reinvigorated an ongoing debate about how much control digital media distributors should wield. Pundits and plaintiffs argue that too often, digital distributors like Amazon impair consumer freedom by misusing Digital Rights Management (DRM) software systems. However, these same systems could also provide significant benefits that have largely gone ignored. …

Patent Misuse And Innovation, Marshall Leaffer

Articles by Maurer Faculty

No abstract provided.