Intellectual Property Law Commons^™

Procd, Inc. V. Zeidenberg: The End Does Not Justify The Means In Federal Copyright Analysis, Brett L. Tolman

BYU Law Review

No abstract provided.

Everybody's Got Something To Hide Except Me And My Patented Monkey: Patentability Of Cloned Organisms, 16 J. Marshall J. Computer & Info. L. 971 (1998), Timothy G. Hofmeyer

UIC John Marshall Journal of Information Technology & Privacy Law

The advent of patent protection for genetically engineered inventions occurred in 1980 with the landmark Supreme Court decision in Diamond v. Chakrabarty. Following the lead of the Supreme Court, the Patent and Trademark Office ("PTO"), in 1987, issued a new regulatory ruling that expanded the PTO's statutory interpretation of 35 U.S.C. § 101 patentable subject matter to include devices based upon nonnatural occurring manufacture or composition of matter resulting from some level of human intervention in the modification of nonhuman organisms. One year following the PTO proclamation, the first patent for a transgenic animal issue to Professors Leder and Stewart …

Lost In Cyberspace: The Digital Demise Of The First-Sale Doctrine, 16 J. Marshall J. Computer & Info. L. 825 (1998), Keith Kupferschmid

UIC John Marshall Journal of Information Technology & Privacy Law

The Internet offers a means to create, copy and distribute copyrighted works of a quality and in a volume that was simply unknown before the World Wide Web was developed. A single Web page can be viewed by any of the millions of people with Internet access anywhere around the world, and "viewed" in terms of the Internet necessarily means "copied." This presents a problem when considered in the light of the First-Sale doctrine, which is part and parcel of § 109 of the Copyright Act. The doctrine allows a person to make a single copy of a copyrighted work …

Procd, Inc. V. Zeidenberg And Article 2b: Finally, The Validation Of Shrink-Wrap Licenses, 16 J. Marshall J. Computer & Info. L. 439 (1998), Joseph C. Wang

UIC John Marshall Journal of Information Technology & Privacy Law

In ProCD, Inc. v. Zeidenberg, the Seventh Circuit validated a licensor's shrink-wrap license. This court was one of the first courts to validate such licenses. The case involved a graduate student, Zeidenberg, who purchased ProCD's telephone directory software program which contained the shrink-wrap license at issue. After Zeidenberg took the software home, he downloaded the information in the software into his computer and put the information onto a website, despite the language on the computer screen prohibiting such dissemination of the software's contents. Then, Zeidenberg allowed Internet users to use his website to access the directory originally located on the …

Who Owns The Web Site?: The Ultimate Question When A Hiring Party Has A Falling-Out With The Web Site Designer, 16 J. Marshall J. Computer & Info. L. 857 (1998), Rinaldo Del Gallo Iii

UIC John Marshall Journal of Information Technology & Privacy Law

The question is "Who owns your web site?" This question is difficult to answer absent a copyright assignment clause since no one knows who the owner of the web site is under current law. There are several problems that occur when a web designer is placed in a position against the hiring party in determining ownership rights to a web site. It is important to distinguish ownership rights to a web site, since most contractual agreements between a web site designer and a hiring party do not address this issue. Every day, hundreds of new web sites are appearing and …

Foreword: "Article Of Manufacture" Patent Claims For Computer Instruction, 17 J. Marshall J. Computer & Info. L. 1 (1998), Allen B. Wagner

UIC John Marshall Journal of Information Technology & Privacy Law

No abstract provided.

Patenting Computer Science: Are Computer Instruction Writings Patentable?, 17 J. Marshall J. Computer & Info. L. 5 (1998), Allen B. Wagner

UIC John Marshall Journal of Information Technology & Privacy Law

This paper opposes the IBM/PTO proposal to patent (as an article of manufacture) computer instruction fixed on computer readable media (so called media or Beauregard claims). The juridical issue raised is whether patents are limited to the utilitarian embodiment of inventions (the instructed machine) or may be extended to include mere symbolic expression (the machine instruction) fixed in a tangible medium. In Part I, the author argues (a) patenting symbolic expression breaches the intellectual property premise prohibiting property interests in mere abstract ideas, by avoiding both copyright merger and patent preemption doctrines, and (b) contrary to the PTO analysis, patents …

The Relative Roles Of Patent And Copyright In The Protection Of Computer Programs, 17 J. Marshall J. Computer & Info. L. 41 (1998), Dennis S. Karjala

UIC John Marshall Journal of Information Technology & Privacy Law

The author approaches the problem of software patents from the perspective of copyright, where the debate over the appropriate scope of protection for computer programs continues to rage. This debate has largely followed the copyright tradition of considering copyright as a stand-alone statute, capable of resolving all of its problems with very little reference to other legal regimes and, in particular, with very little reference to patent law. It appears to the author that patent law has also gone about its business relating to software, from Benson to Beauregard, as if patent law were essentially the only relevant player. The …

A New Frontier In Patents: Patent Claims To Propagated Signals, 17 J. Marshall J. Computer & Info. L. 75 (1998), Jeffrey R. Kuester, Scott A. Horstemeyer, Daniel J. Santos

UIC John Marshall Journal of Information Technology & Privacy Law

If you thought "Beauregard" claims were a slippery slope to an uncertain end, you were right! The new frontier after In re Beauregard is the "propagated signal" claim -- a claim directed to a manufactured transient phenomenon, such as an electrical, optical, or acoustical signal, that could further revolutionize the way communications and software companies protect their intellectual property. It can make procuring patents less expensive and result in more extensive coverage, while challenging the limits of conventional wisdom. This new claim type will be viewed by some as a threat, and by others, as yet another step in the …

Patentability Of Computer Software Instruction As An "Article Of Manufacture": Software As Such As The Right Stuff, 17 J. Marshall J. Computer & Info. L. 89 (1998), Vincent Chiappetta

UIC John Marshall Journal of Information Technology & Privacy Law

The last five years have witnessed a dramatic shift in the approach taken by the Court of Appeals for the Federal Circuit ("CAFC") and, under the CAFC's stern if somewhat incomplete guidance, the United States Patent and Trademark Office ("PTO") to the seemingly intractable problem of determining whether software inventions qualify as patentable subject matter under the United States patent laws. Beginning with a series of CAFC decisions in 1994 and culminating with the PTO's issuance of its Final Examination Guidelines for Computer-Related Inventions (the "Guidelines") in 1996, the paradigm shifted from a "mathematical algorithm" based analytic structure to an …

Of Text, Technique, And The Tangible: Drafting Patent Claims Around Patent Rules, 17 J. Marshall J. Computer & Info. L. 219 (1998), John R. Thomas

UIC John Marshall Journal of Information Technology & Privacy Law

Courts have long recognized and policed attempts to contract around the patent code. Settled law establishes that the proprietor of a patent which enjoys market power cannot extend that patent beyond its statutory term or restrain competition in an unpatented product via contract. Yet today a far more subtle and fundamental mechanism for drafting around the statute has materialized: the humble patent instrument itself. Patent drafters have only partially realized the remarkable set of tools they now possess for expanding the scope of patent-eligible subject matter, augmenting the market power of issued patents, and avoiding core precepts of the patent …

Statutory Subject Matter And Hybrid Claiming, 17 J. Marshall J. Computer & Info. L. 277 (1998), R. Carl Moy

UIC John Marshall Journal of Information Technology & Privacy Law

The statutory subject matter provision of the United States patent code is one of that law's murkiest provisions. It has been the subject of repeated cases before the United States Supreme Court. Despite this, confusion and disagreement among the lower courts remains substantial. Much of the literature agrees that the law is in disarray. This paper isolates and treats one such problem: that of dealing with so-called "hybrid" inventions. Hybrid inventions are those that consist of both statutory and non-statutory elements grouped together. As such, their basic nature presents a classification problem. Hybrid inventions are mongrels, neither purely statutory nor …

Authors As "Licensors" Of "Informational Rights" Under U.C.C. Article 2b, Jane C. Ginsburg

Faculty Scholarship

U.C.C. Articles 2B of the Uniform Commercial Code was designed primarily to regulate online and mass market transactions, particularly the licensing of computer software. Its effects, however, will extend to authors of works other than computer software. This Article considers the effects Article 2B would have on dealings between those authors and the exploiters of the authors' works. By reducing procedural barriers to the formation of licenses, Article 2B would make it all too easy for an author to assent to contract terms that may heavily favor an exploiter of the author's work. On the other hand, default contract terms …

Withdrawal Of The Reference: Rights, Rules, And Remedies For Unwelcomed Web-Linking, Walter Effross

Scholarly Articles in Law Reviews & Journals

No abstract provided.

Price Discrimination, Personal Use And Piracy: Copyright Protection Of Digital Works, Michael J. Meurer

Buffalo Law Review

No abstract provided.

Perfecting A Security Interest In Computer Software Copyrights: Getting It Right, 15 J. Marshall J. Computer & Info. L. 855 (1997), Aimee A. Watterberg

UIC John Marshall Journal of Information Technology & Privacy Law

The rapid development of computer technology has led software companies to seek financial support from various commercial lenders. Lenders are typically unaccustomed and unwilling to lend money on the security of intellectual property. The fear of lenders is well founded because lenders face a considerable risk in lending money on contemporary and intangible collateral. As a result of the unavailability of funds, technology based companies would be hindered in their efforts to promote new programs. The unclarity of laws with respect to obtaining a security interest has created obstacles for parties on both sides of the transaction -- the lender …

Trademark Law On The Internet - Will It Scale? The Challenge To Develop International Trademark Law, 16 J. Marshall J. Computer & Info. L. 3 (1997), David W. Maher

UIC John Marshall Journal of Information Technology & Privacy Law

The author states that the rapid growth of the Internet has caused a serious collision between the efficient functioning of Domain Name Systems and the claims of trademark owners. U.S. Courts have recognized that domain names can have trademark implications. Trademarks are important because organizations responsible for allocation and registration of domain names must take trademarks and trademark law into account. The International Trademark Association (INTA) sets forth principles that should apply to the use of trademarks in the Domain Name System. The author's comment focuses on how to accommodate the interests and rights of trademark owners in the DNS …

Electronic Commerce On The Internet: Legal Developments In Taiwan, 16 J. Marshall J. Computer & Info. L. 77 (1997), George C. C. Chen

UIC John Marshall Journal of Information Technology & Privacy Law

The purpose of this article is to share information about "outstanding legal issues" that Taiwan has experienced in its use of the Internet. It does through five topics. First, the issue of contracts is addressed using the present laws in Taiwan. Contracts are based on an "offer" by one party and "acceptance" of a second party. Digital products displayed on the Internet are said to constitute an offer when it bears a price, but a legal question arises out of how to constitute acceptance. Taiwan law looks to the law of the country where the offer was made to govern …

Nba V. Motorola And Stats, Inc.: The Second Circuit Properly Limits The "Hot News Doctrine", 16 J. Marshall J. Computer & Info. L. 197 (1997), Alan D. Lieb

UIC John Marshall Journal of Information Technology & Privacy Law

The Second Circuit Court of Appeals recently handed down a decision which can be seen as a victory for supporters of free dissemination on the Internet. At issue was whether dissemination of real-time sports data infringed the NBA's copyright of broadcast material, and if not whether the use of NBA game statistics was a misappropriation of the NBA's property. In 1994, Motorola teamed up with STATS (Sports Team Analysis and Tracking Systems of Missouri, Inc.) to provide real-time updates of professional sports scores and information to subscribers of pagers as well as on-line services. STATS also provides sports information to …

Right On The Mark: Defining The Nexus Between Trademarks And Internet Domain Names, 15 J. Marshall J. Computer & Info. L. 277 (1997), G. Peter Albert Jr.

UIC John Marshall Journal of Information Technology & Privacy Law

The Internet is a rapidly expanding global network. The Internet provides a virtual marketplace in which many small companies are given the opportunity to have increased leverage to compete with their larger corporate counterparts. Businesses are establishing their presence on the Internet through the creation of a domain name. The domain name is an alphanumeric address that identifies a specific location on the Internet. Each domain name reflects a distinct address that distinguishes it from any other. Similarly, qualification of a word or symbol as a trademark must include the following three elements: (1) "function" to identify and distinguish the …

A Request To The High Court: Don't Let The Patent Laws Be Distracted By A Flashy Trade Dress, 15 J. Marshall J. Computer & Info. L. 323 (1997), Manotti L. Jenkins

UIC John Marshall Journal of Information Technology & Privacy Law

The United States Court of Appeals for the Tenth Circuit, in Vornado Air Circulation Systems Inc. v. Duracraft Corp., held in the negative the issue of "whether a product configuration is entitled to trade dress protection when it is or has been a significant inventive component of an invention covered by a utility patent." The court viewed the case involved as an issue of the "intersection of the Patent Act and the Lanham Trade-Mark Act," and reasoned that "patent policy dictates" that the Patent Act should prevail in these situations. The United States Supreme Court denied certiorari upon appeal by …

A Primer On Trademark Law And Internet Addresses, 15 J. Marshall J. Computer & Info. L. 465 (1997), David J. Loundy

UIC John Marshall Journal of Information Technology & Privacy Law

The conflicts arising over Internet addresses generally fall within four categories: trademarks as second-level domains; second-level domains that are similar to trademarks; trademarks as third-level domain/machine names; and trademarks as userIDs. When confronted with the four categories, a court will generally analyze the problem by looking at the likelihood of confusion, applying the dilution statutes, and determining if the trademark has been blurred or tarnished. The likelihood of confusion analysis looks at: the degree of similarity between the marks in appearance and suggestion; the similarity of the product or services; the area and manner of concurrent use; the degree of …

Orderly Expansion Of The International Top-Level Domains: Concurrent Trademark Users Need A Way Out Of The Internet Trademark Quagmire, 15 J. Marshall J. Computer & Info. L. 521 (1997), David B. Nash

UIC John Marshall Journal of Information Technology & Privacy Law

Organizations that want to conduct business on the Internet have to register with Network Solutions, Inc. (NSI). The Internet was created as a network designed by the Defense Department to test a fail safe network. The National Science Foundation connects to the Internet five supercomputing centers, which connects most public colleges to the Internet. The World Wide Web was the first service that was opened to individuals and for commercial use. Commercial success on the Internet depends on the ease with which consumers can find the organization on-line. If the company has established good will in the public, the company …

The Copyright Battle: Emerging International Rules And Roadblocks On The Global Information Infrastructure, 15 J. Marshall J. Computer & Info. L. 759 (1997), Stephen Fraser

UIC John Marshall Journal of Information Technology & Privacy Law

This article discusses intellectual property rights on the Global Information Infrastructure (GII) as affected by the evolution of the Internet. It outlines the battle between the advocates of total copyright protection and the advocates of minimal copyright protection. The article examines all of the proposed national and international laws affecting copyright protection on the GII, beginning with the minimal protections outlined in the Berne Convention and the problems involved in its enforcement and continuing with its successors, the General Agreement on Tariffs and Trade (GATT)/World Trade Organization (WTO). The article reviews the history of international copyright protection and the different …

The West German Smorgasbord Approach To Intellectual Property Protection Of Computer Software, 15 J. Marshall J. Computer & Info. L. 883 (1997), Larry N. Woodard

UIC John Marshall Journal of Information Technology & Privacy Law

There is a lack of efficient protection for intellectual property within the computer software medium. Intellectual property of computer software has traditionally been protected by copyrights and relatively recently has been afforded protection of its intellectual property via patents. The distinction between a computer's hardware and a computer's software is decreasing; likewise, the distinction for such protection, namely patents and copyrights, respectively, should be decreased or eliminated, as well. After a brief comparative analysis of patent and copyright protection for computer software, an alternative to the current system of protection for software intellectual property exists. The nature of the software …

Legal Aspects - Software Reverse Engineering And Copyright: Past, Present And Future, 31 J. Marshall L. Rev. 1 (1997), Brian C. Behrens, Reuven R. Levary

UIC Law Review

No abstract provided.

Obtaining And Enforcing Trade Dress For Computer Graphical User Interfaces - A Practitioner's Guide, John P. Musone

Richmond Journal of Law & Technology

A computer program that successfully incorporates an intuitive graphical user interface possesses a tremendous competitive advantage over its competitors. Interface development accordingly has become a critical aspect of software development. Without legal protection, however, this advantage is illusory as competitors are otherwise free to copy unprotected interface features. Interface creators have predominately used copyright law to protect the overall "look and feel" of their interfaces. However, copyright protection for interfaces increasingly appears to be the exception rather than the rule.

Is Turn About Fair Play? Copyright Law And The Fair Use Of Computer Software Loaded Into Ram, Chad G. Asarch

Michigan Law Review

Computer systems, especially those in heavy-use commercial settings, often require routine maintenance to continue functioning properly. Many businesses turn to an independent service organization ("IS0") to provide computer maintenance services because ISOs frequently charge less than the original equipment manufacturer ("OEM") for those services. The tremendous growth in computer use has spawned a multi-billion dollar computer maintenance industry in the United States, and ISOs and OEMs have become engaged in fierce competition for this computer service business. The struggle between ISOs and OEMs to capture this expanding market has spilled over into the courts, spawning a number of recent decisions …

Fixation On Fixation: Why Imposing Old Copyright Law On New Technology Will Not Work, Douglas J. Mason

Indiana Law Journal

No abstract provided.

Reverse Engineering Of Computer Software And U.S. Antitrust Law, Robert H. Lande, Sturgis M. Sobin

All Faculty Scholarship

This article explores when efforts by firms to restrict reverse engineering of their software, and corresponding agreements by other firms not to reverse engineer this software, could raise significant antitrust issues.

This article provides an overview of how the laws prohibiting certain acts of monopolization, attempted monopolization, refusals to deal, and tying might apply to restrictions and agreements concerning the reverse engineering of computer software. As a necessary predicate to this analysis, the article first briefly describes the contours of intellectual property protection for software, including the fair use and the copyright misuse doctrines.