Intellectual Property Law Commons^™

The 1909 Copyright Act In International Context, Daniel J. Gervais

Vanderbilt Law School Faculty Publications

The passage of the 1909 U.S. Copyright Act was embedded in a significant period of evolution for international copyright law. Just a year before, the Berne Convention had been revised for the second time. This Berlin (1908) Act of the Convention in remembered in particular for the introduction of a broad prohibition against formalities concerning the "exercise and enjoyment" of copyright. 1909 was also just one year before a new copyright bill was brought before the Brit-ish Parliament. This Copyright Act, finally adopted in December 1911 and which entered into force in July 1, 1912, greatly influenced laws in many …

The Objectives And Principles Of The Trips Agreement, Peter K. Yu

Faculty Scholarship

The Agreement on Trade-Related Aspects of Intellectual Property Rights, which established the minimum standards for the protection and enforcement of intellectual property rights for WTO members, remains one of the more controversial international intellectual property agreements that have entered into force. Although that Agreement embraces a highly problematic super-size-fits-all approach, it includes a number of safeguards and flexibilities to facilitate economic development and to protect the public interest. Articles 7 and 8, in particular, lay out explicit and important objectives and principles that can play important roles in the interpretation and implementation of the Agreement.

Presented at the 2009 Santa …

The Role Of The Office Of The Administrative Law Judges Within The United States International Trade Commission, 8 J. Marshall Rev. Intell. Prop. L. 216 (2009), Carl C. Charneski

UIC Review of Intellectual Property Law

Section 337 of the Tariff Act of 1930 makes unlawful, specifically, the importation of products that infringe intellectual property rights. The U.S. International Trade Commission (“ITC”) is the forum in which all section 337 proceedings are adjudicated and, within the ITC, the Office of Administrative Law Judges handles all these proceedings. Section 337 cases can be exceedingly complex and technical, and the Administrative Law Judges (“ALJ”) are the initial triers of fact, administrators, and decision makers in every case. Thus, the amount of work that the ALJs—along with their staff—must meet to see these cases to completion can be substantial. …

The Distinctive Characteristics Of Section 337, 8 J. Marshall Rev. Intell. Prop. L. 231 (2009), Jay H. Reiziss

UIC Review of Intellectual Property Law

In an investigation by the International Trade Commission (“ITC” or “Commission”) under Section 337 of the Tariff Act of 1930 (“Section 337”) a complainant must satisfy two unique statutory criteria. First, a complainant must establish that the ITC has jurisdiction, usually by showing importation of an accused product. Second, a complainant must demonstrate that a domestic industry exists or is in the process of being established. A practitioner can be assured that the ITC’s jurisdiction is expansive and reaches foreign-based activities that affect U.S. commerce. Such actions can involve any unfair act and can be brought regardless of whether personal …

Post-Litigation Enforcement Of Remedial Orders Issued By The U.S. International Trade Commission In Section 337 Investigations, 8 J. Marshall Rev. Intell. Prop. L. 248 (2009), Merritt R. Blakeslee

UIC Review of Intellectual Property Law

There is a common misperception that enforcement of International Trade Commission (“ITC”) remedial orders is automatic and self implementing. In reality, such remedial orders are not self-implementing, are less-than-perfect enforcement tools, and their effective enforcement carries with it a number of practical difficulties. This paper explores the realities of enforcing the ITC’s remedial orders – exclusion orders, consent orders, and cease-and-desist orders – with the goal of giving both complainants and respondents a heightened appreciation of the tactics and strategies that can be effectively deployed following the conclusion of a Section 337 investigation and the issuance of one or more …

Gray Market Trademark Infringement Actions At The U.S. International Trade Commission: The Benefits Of The Forum And Analysis Of Relevant Cases, 8 J. Marshall Rev. Intell. Prop. L. 271 (2009), Joseph H. Heckendorn, Lyle B. Vander Schaaf

UIC Review of Intellectual Property Law

Trademark owners continue to enforce their trademarks against imports of gray market goods using Section 337 of the Tariff Act of 1930. In comparison to the federal court alternative, the International Trade Commission (“ITC”) offers a number of distinct advantages. In addition, ITC decisions in In re Certain Agricultural Vehicles and Components Thereof and In re Certain Hydraulic Excavators and Components Thereof have clarified what is required to enforce trademarks at the ITC. Trademark owners should heed the recent ITC decisions in deciding how to curb imports of infringing gray market goods.

The U.S. International Trade Commission's Growing Role In The Global Economy, 8 J. Marshall Rev. Intell. Prop. L. 290 (2009), Patricia Larios

UIC Review of Intellectual Property Law

The widespread offshoring of manufacturing operations has created dramatic efficiencies and meaningful cost savings for many U.S. businesses. But as an unintended consequence, the move to foreign manufacturing also has created challenges to the U.S. patent system and its ability to protect American businesses from infringing competition. U.S. District Courts are frequently an inadequate forum for litigating patent infringement suits involving an accused device manufactured abroad because of the difficulties associated with obtaining jurisdiction and proving infringement. Patent holders faced with such a situation, however, are not left without recourse. This article explores the different enforcement mechanisms available in the …

"Several Healthy Steps Away": New & Improved Products In Section 337 Investigations, 8 J. Marshall Rev. Intell. Prop. L. 309 (2009), Steven E. Adkins, John Evans

UIC Review of Intellectual Property Law

A business that imports “new and improved,” or redesigned, products into the United States should be aware of the procedures available to lessen the risk of violating standing orders of the United States International Trade Commission (“Commission”). In order to ensure that these products gain entry without violating an ITC order and accruing substantial penalties, it is imperative that the business know its options. Whether it requests a Customs ruling or uses a certification, or whether it petitions for an advisory opinion from the Commission, the business must be able to maneuver. This nuts-and-bolts guide provides examples and information on …

Bringing Down The Walls: How Technology Is Being Used To Thwart Parallel Importers Amid The International Confusion Concerning Exhaustion Of Rights, Ryan L. Vinelli

Cardozo Journal of International and Comparative Law

The note examines the tension between intellectual property rights and free trade, highlighting the conflict arising from market segmentation strategies employed by companies like Sony. It argues that the lack of a uniform international standard on the exhaustion of rights exacerbates this issue, suggesting that an international regime under the WTO could mitigate market segmentation and promote free trade.

The Graying Of The American Manufacturing Economy: Gray Markets, Parallel Importation, And A Tort Law Approach, Joseph Karl Grant

Journal Publications

This Article examines the history of the gray market in the United States through an analysis of both the domestic legislative framework and judicial treatment of gray market goods, primarily under trademark and copyright law. Part I of this Article provides a general introduction into the structural factors that cause parallel importation. Part II begins a discussion of trademarked goods by looking at the purposes of trademark law. Part III starts by discussing the relevant doctrines and provisions of the Copyright Act of 1976, which frame the gray market discussion. Part III concludes by examining the current debate and the …

Introduction: Symposium On Law, Entrepreneurship, And Economic Recovery, Anthony J. Luppino

Faculty Works

No abstract provided.

"Shelter Chic": Can The U.S. Government Make It Work?, Kristina R. Montanaro

Vanderbilt Journal of Transnational Law

This Note discusses government donations of seized counterfeit goods to charitable institutions and the implications of these practices. The Customs and Border Protection (CBP) contributions to the Red Cross for the Hurricane Katrina relief effort serve as a backdrop for important concepts. In making these contributions, the CBP relied on its emergency authority and a presidential proclamation to avoid basic statutory requirements that it (a) obtain consent from the right holders and (b) de-trademark counterfeit goods prior to donation. While the donations inarguably benefitted countless disaster victims and freed up valuable CBP warehouse space, they may have had a detrimental …

Building Intellectual Property Coalitions For Development, Peter K. Yu

Faculty Scholarship

The adoption of the WIPO Development Agenda in October 2007 has provided less developed countries with a rare and unprecedented opportunity to reshape the international intellectual property system in a way that would better advance their interests. However, if these countries are to succeed, they need to take advantage of the current momentum, coordinate better with other countries and nongovernmental organizations, and more actively share with others their experience, knowledge, and best practices.

Commissioned by the EDGE (Emerging Dynamic Global Economies) Network of the University of Ottawa, this paper begins by explaining how building intellectual property coalitions for development (IPC4D) …

The Global Intellectual Property Order And Its Undetermined Future, Peter K. Yu

Faculty Scholarship

As an introduction to the inaugural issue of the new WIPO Journal, this essay highlights some of the key recent developments in the intellectual property field. The essay begins by discussing the increasingly complex, and at times incoherent, international legal order governing the protection and enforcement of intellectual property rights. It shows how much the system has been transformed since the launch of the Paris and Berne Conventions in the 1880s.

The essay then examines the increasingly polarized debate on intellectual property law and policy. Although the debate’s growing divisiveness is understandable, given the rapid expansion of intellectual property rights …

A Tale Of Two Development Agendas, Peter K. Yu

Faculty Scholarship

In October 2004, Argentina and Brazil introduced a proposal to establish the WIPO Development Agenda. Although scholars have focused primarily on this agenda, as well as the WTO Doha Development Agenda, development agendas have also been established at other international fora, such as those governing public health, human rights, biological diversity, food and agriculture, and information and communications. Interestingly, these development agendas bear strong resemblances to another set of development agendas less developed countries advanced in the 1960s and 1970s. Bringing together these two sets of development agendas, this article examines whether the present agenda can avoid the path of …

Intellectual Property In The Twenty-First Century: Will The Developing Countries Lead Or Follow?, Jerome H. Reichman

Faculty Scholarship

This article continues the author's contributions on the subject of intellectual property protection in developing countries, and focuses on how those developing countries with growing technological prowess should accommodate their own national systems of innovation to the worldwide intellectual property regime emerging in the post-TRIPS period, with a view to maximizing global economic welfare in the foreseeable future.

Rethinking The Role Of Clinical Trial Data In International Intellectual Property Law: The Case For A Public Goods Approach, Jerome H. Reichman

Faculty Scholarship

This article is a later version of the author's presentation at the Eleventh Annual Honorable Helen Wilson Nies Memorial Lecture March 26, 2008. Clinical trials are currently used to test drugs; however, the risk and cost of clinical trials are increasing so drastically that the clinical trials may become unsustainable. This article evaluates the legal and economic trends of intellectual property protection for pharmaceutical clinical trial data. The protection of clinical trials has become an alternative to patents as market exclusivity encourages the development and testing of unpatentable pharmaceuticals. This author argues that clinical trials should be treated as a …

Protection Of Trademarks And Geographical Indications, Inessa Shalevich

Buffalo Intellectual Property Law Journal

No abstract provided.

Commoditizing Intellectual Property Rights: The Practicability Of A Commercialized And Transparent International Ipr Market And The Need For International Standards, Ian David Mcclure

Buffalo Intellectual Property Law Journal

No abstract provided.

International And Comparative Aspects Of Trademark Dilution, Mark D. Janis, Peter K. Yu

Faculty Scholarship

Extract:

In the United States, trademark antidilution protection is back—maybe. Proposed by Frank Schechter in the 1920s, adopted in various incarnations in some states over the next few decades, and ultimately introduced in a slightly different form in federal trademark law in 1995, the dilution provisions drew a cool reception in the courts. By the late 1990s, an increasingly restive judiciary was constraining the federal dilution provisions in various ways, most notably by requiring mark owners to prove actual dilution in order to establish liability, a requirement endorsed by the United States Supreme Court in Moseley v. V Secret Catalogue, …

New Paradigms For Protection Of Biodiversity, Srividhya Ragavan

Faculty Scholarship

The most successful bioprospecting venture was established in 1989 in Costa Rica. Interestingly, the distinction of being a forerunner in exploiting bioprospecting goes to India. In 1979, a full decade before Costa Rica, India established the TBGRI (Tropical Botanic Garden and Research Institute) at Trivandrum.

Yet, the TBGRI venture with the Kani Tribes, which had the potential to become a beacon of bioprospecting success, is showcased as the exemplar of failure. In this era of trade regime, the following paper asserts, bioprospecting ventures are important tools for developing countries. Countries like India and organizations like the TBGRI should learn from …

Access To Medicines, Brics Alliances, And Collective Action, Peter K. Yu

Faculty Scholarship

Most discussions on the public health implications of the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights focus on the right of less developed countries to issue compulsory licenses and the need for these countries to exploit flexibilities within the TRIPs Agreement. However, there are other means by which countries can enhance access to essential medicines. To provide an illustration of these other means, this article explores the possibility for greater collaboration among the BRICS countries (Brazil, Russia, India, China, and South Africa) and between these countries and other less developed countries.

This article begins by offering a brief …

Teaching International Intellectual Property Law, Peter K. Yu

Faculty Scholarship

Intellectual property law was in the backwater only a few decades ago. The Section on Intellectual Property Law of the Association of American Law Schools was not even founded until the early 1980s, and the creation of intellectual property specialty programs has been only a recent phenomenon. As senior legal scholars reminisce, early in their career, they would have been lucky to find a school that would allow them to teach a class on intellectual property law. Although intellectual property law teaching has come of age in the past decade, international intellectual property law courses remain nonexistent in more than …

Three Questions That Will Make You Rethink The U.S.-China Intellectual Property Debate, Peter K. Yu

Faculty Scholarship

The debate on China's piracy and counterfeiting problems has been ongoing for more than two decades. However, in the past few years, this debate has taken on a new sense of urgency and significance. In August 2008, the City of Beijing will host the Summer Olympic Games. Two years later, the 2010 World Expo will be held in Shanghai. In addition, two World Trade Organization dispute settlement panels were recently established to resolve disputes between China and the United States over inadequate enforcement of intellectual property rights and inadequate market access to U.S. media products. All of these developments, of …

Addressing Default Trends In Patent-Based Section 337 Proceedings In The United States International Trade Commission, John C. Evans

Michigan Law Review

Section 337 of the Tarif Act of 1930 empowers the United States International Trade Commission to investigate imports to ensure imports do not infringe on U.S. trademarks. The Commission permits patent, copyright, and trademark owners to notify the Commission of possibly infringing imports and to obtain exclusion orders that prevent importation of products that infringe their intellectual property. The total number of investigations increased from 1996 to 2005, yet the proportion of respondent defaults rose as well. The increase in defaults suggests there is some systemic difficulty in ensuring full participation. This Note argues that the res judicata effects of …

Three Questions That Will Make You Rethink The U.S.-China Intellectual Property Debate, 7 J. Marshall Rev. Intell. Prop. L. 412 (2008), Peter K. Yu

UIC Review of Intellectual Property Law

Commentators have attributed China’s piracy and counterfeiting problems to the lack of political will on the part of Chinese authorities. They have also cited the many political, social, economic, cultural, judicial, and technological problems that have arisen as a result of the country’s rapid economic transformation and accession to the WTO. This provocative essay advances a third explanation. It argues that the failure to resolve piracy and counterfeiting problems in China can be partly attributed to the lack of political will on the part of U.S. policymakers and the American public to put intellectual property protection at the very top …

"The Little State Department": Hollywood And The Mpaa's Influence On U.S. Trade Relations, Kevin Lee

Northwestern Journal of International Law & Business

In this article, I argue that the U.S. government has actively advocated domestic film industry interests in bilateral and multilateral trade agreements because of Hollywood's importance to the U.S. economy, and also because of the MPAA's influential lobbying efforts. Furthermore, I show that the MPAA has intervened directly in bilateral trade relations to protect its interests, even when such interests may run counter to the benefit of the U.S. economy.

Hiding Behind Nationality: The Temporary Presence Exception And Patent Infringement Avoidance, J. Jonas Anderson

Michigan Telecommunications & Technology Law Review

This Article argues that the temporary presence exception was not designed to allow conveyance owners the ability to select the most optimal patent system under which to be subject. It also examines the ramifications of the temporary presence exception on international commerce and concludes that increased use of the exception may result in reduced values for patents relating to international conveyances, reduced incentives to invest in and develop technologies in international conveyances, and a decrease in the quality of various domestic patent systems worldwide. Finally, this Article proposes a solution to these problems. The temporary presence exception has received some …

Beyond Microsoft: Intellectual Property, Peer Production And The Law's Concern With Market Dominance, 18 Fordham Intell. Prop. Media & Ent. L.J. 291 (2008), Daryl Lim

UIC Law Open Access Faculty Scholarship

No abstract provided.

Is Fame All There Is? - Beating Global Monopolists At Their Own Marketing Game, 40 Geo. Wash. Int'l L. Rev. 123 (2008), Doris E. Long

UIC Law Open Access Faculty Scholarship

In the global economy of the twenty-first century, "coca-colanization" has become a painful economic reality for developing nations. With new branding strategies and a legal protection regime that favors the famous marks of global monopolists, local businesses are not only losing market share, they are also losing their ability to compete in a new environment where leveraged marks often have little relevance to the actual value of the products or services for local consumers. To counter these trends, and add rationality to the global trademark regime, developing countries must develop new strategies and a conscious policy that not only values …