Law Commons^™

Infringement Episodes, Shani Shisha

Faculty Journal Articles and Book Chapters

For decades, copyright scholars have waged a spirited campaign against statutory damages. Our remedial system, critics say, is an incoherent mess. The core problem is that copyright holders can recover a separate award of statutory damages for every infringed work. As a result, damages can rapidly add up in any case involving multiple works. Because the number of statutory awards is tethered to the number of works, even trivial claims can lead to crippling damages. Commentators, policymakers, and judges have criticized this system as arbitrary and overbroad. And yet it endures. This Article argues that copyright’s per-work scheme has obscured, …

Fair Use V. Free Use: A Comparative Study Of American And Russian Copyright Exemptions, Eduard Bershitskiy

LL.M. Essays & Theses

Many U.S. lawyers are under the well-deserved, but still not entirely accurate, impression that copyright infringement in Russia is a huge free-for-all. This comparative paper, which juxtaposes Russian and American copyright exemptions, seeks to partially refute that skeptic view by showing that, in fact, Russian copyright law has developed a relatively coherent system of exceptions and limitations to exclusive rights. This paper begins with a brief overview of Russian copyright law and general remarks on its exemptions. It then focuses on statutory and, where appropriate, case-law comparison of particular copyright exemptions in the Part 4 of the Russian Civil Code …

Defining "Use In Commerce": The Supreme Court's Evolving Extraterritorial Application Of The Lanham Act, Hannah Lief

American University Business Law Review

On June 29, 2023, the Supreme Court redefined the scope of the extraterritorial impact of the Trademark Act of 1946, also known as the Lanham Act (the “Act”). Overturning the ruling by the Tenth Circuit, the Court narrowed the focus of the Act to solely domestic uses in commerce. While the Court acknowledged that it had interpreted the statute in a manner that granted Congress expansive power over foreign conduct, it stated that the broad language of the Lanham Act does not indicate international application. By instituting newfound principles on congressional authority under the Lanham Act, U.S. trademark registrants can …

On Copyright Utilitarianism, Patrick R. Goold, David A. Simon

Indiana Law Journal

Utilitarians typically argue that the state should grant copyright to authors only when doing so promotes utility. In recent years, however, this argument has faced three criticisms. As a normative matter, critics argue that a utilitarian copyright system is neither just nor attractive. As an epistemological matter, critics argue that society cannot ever know whether copyright promotes utility. And as an interpretive matter, critics argue that utilitarianism fails to appreciate what copyright is really all about: progress of the sciences and useful arts. And so, an increasing number of scholars conclude that copyright should be awarded, not when doing so …

Comparative Intellectual Property & Religion, Tabrez Y. Ebrahim

IP Theory

This Article introduces religion to comparative IP scholarship and explains how faith-based considerations can enhance it. Comparative IP scholars have extensively studied different IP laws in different jurisdictions, but they seemed to suggest an erroneous view that comparative IP and religion are like two parallel lines without intersection. Building on these scholars’ work, this Article discusses religion’s role in fostering a new vehicle for discussion and a new normative lens with the aim of ascertaining the existence and extent of religion in legal systems, serving as part of the comparison methodology between legal systems with potential for influencing the policy …

Knowledge Commons Past, Present, And Future, Michael J. Madison

Lewis & Clark Law Review

The project now known as Governing Knowledge Commons, or GKC, was launched more than 15 years ago on the intuition that skepticism of intellectual property law and information exclusivity was grounded in anecdote and ideology rather than in empiricism. Structured, systematic, empirical research on mechanisms of knowledge sharing was needed. GKC aimed to help scholars produce it. Over multiple books, case studies, and other work, the scope of GKC has expanded considerably, from innovation to governance; from invention and creativity to data, privacy, and markets; and from social dilemmas focused on things to governance strategies directed to communities and collectives. …

Sharing Pathogen Sequence Data For Global Scientific Research Under The Nagoya Protocol To The Convention On Biological Diversity, Jerome H. Reichman, Carolina Dos S. Ribeiro, George B. Haringhuizen, Paul F. Uhlir

Faculty Scholarship

The Nagoya Protocol to the Convention on Biological Diversity (CBD) has threatened to impede access to genetic resources and related data for cross-border scientific research. In principle, every use of genetic resources would require a set of contracts under the CBD, in a “bilateral” regime. The related transaction costs could overwhelm many transnational research undertakings, affecting even public health responses to outbreaks and epidemics. However, the Nagoya Protocol also offers a unique opportunity to resolve this dilemma, despite struggles to define the meaning and coverage of “digital sequence information.” The coverage of genetic sequence data under the CBD remains controversial …

Confusion Over Trademark Extraterritoriality ... And Beyond, Timothy R. Holbrook, Anshu Garg

American University Law Review

The Supreme Court afforded the Lanham Act extraterritorial reach over seventy years ago in Steele v. Bulova, but its recent extraterritoriality jurisprudence called that decision into question. This Article explains the history of trademark extraterritoriality and the splits that emerged among the circuit courts of appeals. It then canvases all of the Supreme Court’s recent decisions on the presumption against extraterritoriality and their effort to reinvigorate and standardize the law in that regard.

We then provide a detailed exploration of the Supreme Court’s decision in Abitron Austria GmbH v. Hetronic International, Inc. Next, we critique the decision and explore its …

Talking Scents: Copyrightability Of Fragrance & Intellectual Property Protection In The Perfume Industry, Margaret M. Donnelly

Law Student Publications

Designer fashion brands are well-known for their aggressive brand protection techniques and unwavering commitment to protecting the exclusivity of their products. After all, it is this exclusivity that drives demand for luxury products in the first place. Additionally, a new trend of duplicate or “dupe” products that are more accessible, noncounterfeited replicas of high-end goods presents a new problem for these luxury brands. Despite high-end brands’ best efforts, the luxury goods industry is still plagued by counterfeiting and piracy issues, as well as the emerging threat of replicated dupe products that drive luxury sales down. From notorious counterfeit marketplaces like …

African Americans And Women In The Us Ip Economy, Arneda K. Perkins

Cybaris®

No abstract provided.

Solving The Consideration Problem In Non-Compete Agreements: Continued At-Will Employment Is Inadequate Consideration, Alexander H. Ferrone

Marquette Intellectual Property & Innovation Law Review

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The Original Instagram: Whose Property Is It?, Sue Altmeyer

Akron Law Faculty Publications

This article examines why the “Original Creation and Transfer” test is a better approach than implied transfer when determining ownership of a social media account. The Original Creation and Transfer test promotes judicial economy, clarity, and predictability. It also has the advantages of a property rule, namely encouraging investment, reducing litigation, and allowing employee mobility. This test achieves the proper balance between worker and employer rights and yields fair results in test cases. Additionally, a uniform law should be created based on the Original Creation and Transfer test to help promote uniformity across jurisdictions.

Committed To Copyright's Constitutional Role, Michael W. Carroll

Scholarly Articles in Law Reviews & Journals

Who is Pam Samuelson? She is many things to many people: scholar, teacher, mentor, leader, advocate, and friend, to name a few. One could easily add “force of nature” to the list. This Article suggests adding the term “loyalist” to argue that an important through-line in Pam’s work has been an unwavering commitment to understanding and promoting copyright law’s ability to serve its purpose in our constitutional order.

Impossibility Of Artificial Inventors, Mateusz Blaszczyk

Scholarly Works

Recently, the United Kingdom Supreme Court decided that only natural persons can be considered inventors. A year before, the United States Court of Appeals for the Federal Circuit issued a similar decision. In fact, so have many of the courts all over the world. This Article analyzes these decisions, argues that the courts got it right, and finds that artificial inventorship is at odds with patent law doctrine, theory, and philosophy. This Article challenges the intellectual property (IP) post-humanists, exposing the analytical and normative perils of their argumentation, and recommends against getting rid of the nominally central place of humans …

Intellectual Property And The Myth Of Nonrivalry, James Y. Stern

Faculty Publications

The concept of rivalry is central to modern accounts of property. When one person’s use of a resource is incompatible with another’s, a system of rights to determine its use may be necessary. It is commonly asserted, however, that informational goods like inventions and expressive works are nonrivalrous and that intellectual property rights must therefore be subject to special limitation, if they should even exist at all.

This Article examines the idea of rivalry more closely and makes a series of claims about the analysis of rivalrousness for purposes of such arguments. Within that framework, it argues that rivalry should …

Patent Term Tailoring, Sarah R. Wasserman Rajec

Faculty Publications

Patent rights are designed to encourage innovation with both the promise of a patent and with its expiration. Currently, patent term lasts from issuance until twenty years from the application date, with minor exceptions. The patent term is limited so that rewards for past invention do not overly hinder future progress. Although the goal is laudable, a uniform patent term is a blunt instrument to achieve such a nuanced balance. Historically, the patent system was not averse to tailoring terms through, for example, individually granted extensions to undercompensated inventors or term curtailment when a foreign patent holder failed to “work” …

Communication Decency Act And The Intellectual Property Exception, Casey Windsor

American University Business Law Review

As the internet proliferated in the 1990s, Congress became concerned with courts impeding the advancement of the internet and the distribution of obscene materials. Congress passed Section 230 of the Communication Decency Act (CDA), which was part of the Telecommunications Act of 1996. Section 230(c), known as the “Good Samaritan” provision, gave broad immunity to interactive computer services providers (ISPs) who monitor third-party content posted to their website.3 Section 230 created the regulatory foundation for modern day ISPs, including social media websites like Facebook.

Extra-Legal Uses Of Tm, Clark Asay, Lareina Hingson, Stephanie Plamondon

Faculty Scholarship

Theoretical accounts of trademark law suggest that trademarks serve multiple marketplace functions, including protecting consumers and producers from unfair dealing, reducing consumer search costs, and incentivizing higher quality goods and services. Producers of goods and services often use the ‘TM’ symbol to signal their assertion of legal rights in a mark, arguably helping advance these goals. But recently, an interesting phenomenon has arisen in which individuals not engaged in typical commercial activities have been using the TM signifier in ways that don’t necessarily correspond to the symbol’s legal function. These so-called “extra-legal” uses of the TM symbol can offer insights …

Insuring Judgements And The Disclosure Gap, Jonathan Stroud, Sam Korte

American University Law Review

Judgment preservation insurance (“JPI”) is a newer, under-the-radar financial innovation upending the litigation landscape today. By insuring plaintiffs' trial victories on appeal, these policies neutralize the risk of reversal, but have been criticized for preventing settlement and extending disputes. Despite JPI's growing use, a regulatory blind spot allows these policies to remain concealed from the courts throughout the appellate process. We spotlight JPI, contrast it with widely used litigation insurance products, and propose appellate disclosure requirements in line with existing insurance disclosure rules. These simple changes would close the disclosure gap on appeal.

Seed Patents: Enabling Innovation Beyond Biological Deposits, Ellaina Sanders

American University Law Review

In J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred International, Inc., the Supreme Court held that new sexually reproducing plant varieties are patentable subject matter. This allowed breeders and seed companies to protect their intellectual property in new seeds by obtaining utility patents so long as they meet the other statutory requirements, such as enablement. Unlike other intellectual property protection for new plant varieties, utility patents require the patent disclosure to include enough information that a person of ordinary skill in the art could make and use the invention without undue experimentation. In In re Wands, the Federal Circuit …

Copyright And The Training Of Human Authors And Generative Machines, Robert Brauneis

GW Law Faculty Publications & Other Works

There are many limitations on copyright of which human authors can and do take advantage as they are learning. However, there is no blanket fair use immunity for use of copyrighted works to educate human authors, even though those authors typically do not go on to create substantially similar works. Human authors typically end up paying, directly or indirectly, for most of the copyrighted works from which they learn. Should it be different when human beings use copyrighted works to train generative AI models? This article concludes that it should not, in spite of two prominent arguments to the contrary. …

Antitrust Regulation Of Copyright Markets, Jacob Noti-Victor, Xiyin Tang

Articles

Late last year, a federal court sided with the Department of Justice and blocked the planned merger of book publishers Simon & Schuster and Penguin Random House. The decision was a rare collision between antitrust law and the deeply consolidated copyright content industries. Over the course of the past decade, acquisitions and mergers in the recording, music publishing, and audiovisual space have left just a handful of juggernaut content producers in their wake. Moreover, new technology companies that have entered the content-creation and distribution markets have begun to leverage their scale to further their own industry consolidation.

This Article examines …

Jack Daniel’S And The Unfulfilled Promise Of Trademark Use, Stacey Dogan, Jessica Silbey

Faculty Scholarship

In Jack Daniel’s v. VIP Products, the Supreme Court announced a bright-line rule: whatever speech protections govern the use of trademarks in artistic works, no such rule applies “when an alleged infringer uses a trademark in the way the Lanham Act most cares about: as a designation of source for the infringer’s own goods.” Those who engage in “trademark use,” in other words, must face the usual likelihood-of-confusion standard, regardless of whether their use also has expressive dimensions. The Jack Daniel’s defendant conceded that it was engaged in trademark use, so the opinion did not do the hard work …

The Subsistence And Enforcement Of Copyright And Trademark Rights In The Metaverse, Cheng Lim Saw, Zheng Wen Samuel Chan

Research Collection Yong Pung How School Of Law

The metaverse has been widely hailed as a symbol of technological progress, presenting an immersive virtual realm that has the potential to transform how individuals engage in social and commercial activities. However, this conception of a borderless virtual world - which purportedly transcends the capabilities and reach of Web 2.0 - sits uncomfortably with the territorial nature of intellectual property rights. This chapter examines the complexities surrounding the subsistence and enforcement of intellectual property rights within the metaverse, with a specific focus on copyright and trademarks. Especial attention is paid to issues concerning choice of law and jurisdiction. Finally, the …

Panel 2: Trademark Law, Stacey Dogan, Christine Haight Farley, Jessica Silbey, Rebecca Tushnet, Felix Wu

Faculty Scholarship

But that's because, you know, trademark law has interpreted the concept of confusion quite broadly to include, among other things, a notion of sponsorship confusion that might make you think it's a licensed product. All right. And then, in a somewhat circular way, it was decided that the existence of licensing markets is enough to show the way in which consumers are going to be confused about licensing. So that's the theory that Jack Daniel's brings. One of two theories. So that was one of two theories. The other one was a dilution, and in particular dilution by tarnishment, claiming …

A Matter Of Facts: The Evolution Of Copyright’S Fact-Exclusion And Its Implications For Disinformation And Democracy, Jessica Silbey

Faculty Scholarship

The Article begins with a puzzle: the curious absence of an express fact-exclusion from copyright protection in both the Copyright Act and its legislative history despite it being a well-founded legal principle. It traces arguments in the foundational Supreme Court case (Feist Publications v. Rural Telephone Service) and in the Copyright Act’s legislative history to discern a basis for the fact-exclusion. That research trail produces a legal genealogy of the fact-exclusion based in early copyright common law anchored by canonical cases, Baker v. Selden, Burrow-Giles v. Sarony, and Wheaton v. Peters. Surprisingly, none of them …

Access To Justice For Black Inventors, Jordana R. Goodman, Khamal Patterson

Vanderbilt Law Review

To receive a patent, an inventor must meet certain inventive and procedural standards. Their invention must be novel, nonobvious, and written in such a way that any person skilled in the inventive subject can make and use the invention without undue experimentation. This process is far from objective.

An inventor is not always communicating within their own social circle. An inventor is required to communicate their invention so that a patent examiner believes a person having ordinary skill in the art ("PHOSITA") would recognize the invention as nonobvious. Moreover, a fictitious skilled person must be able to make and use …

Why The Supreme Court Rejected The Prospect Theory Of Copyright Scope, Michael W. Carroll

Scholarly Articles in Law Reviews & Journals

In Google LLC v. Oracle America, Inc. (“Google v. Oracle”), and again in Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith (“Warhol”), the parties and various amici presented the Court with a variety of arguments about the relationship between a copyright owner's right to make derivative works from a protected work and a user's right to make fair uses of that same work. At bottom, these arguments were about the proper, or even optimal, scope of copyright. This Essay argues that these arguments were instead grounded in a form of ““prospect theory” of copyright scope that would give …

Brief For Former And Current Law Library Directors, Professors, And Academics As Amici Curiae In Support Of Defendant-Appellant, Michelle M. Wu, Austin Martin Williams

Georgetown Law Faculty Publications and Other Works

The Copyright Act and libraries have a shared purpose: to spread knowledge to the public. See Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 574 (1994) (noting the purpose of copyright is “[t]o promote the Progress of Science and useful Arts”). Libraries rely on balanced, careful application of the fair use balancing test to achieve that purpose. Amici respectfully submit that the District Court's decision collapsed copyright law's multi-part fair-use balancing test into a theory focused primarily on economics. Amici further respectfully submit that the District Court's fair-use analysis was broadly applied to Internet Archive's (IA) activities without distinguishing …

A Critical Librarianship Approach For Teaching Patent Searching: Who Becomes An Inventor In America?, Dave Zwicky, Ilana Stonebraker

Libraries Faculty and Staff Scholarship and Research

The ways in which a technology is invented, owned, and approved are strongly influenced by the same oppressive and exclusionary structures that critical librarianship interrogates. Patents, limited-term grants of rights to inventions, are issued to inventors in exchange for detailed specifications of the invention. This paper examines current practices used by business librarians in teaching students how to find patents and how these practices could be critically informed given the nature of the United States patent system as it exists today. An output of this work is a suggested lesson plan with recommended resources.