Intellectual Property Law Commons^™

How To Fix The Google Book Search Settlement, James Grimmelmann

Faculty Scholarship

The proposed settlement in the Google Book Search case should be approved with strings attached. The project will be immensely good for society, and the proposed deal is a fair one for Google, for authors, and for publishers. The public interest demands, however, that the settlement be modified first. It creates two new entities—the Books Rights Registry Leviathan and the Google Book Search Behemoth—with dangerously concentrated power over the publishing industry. Left unchecked, they could trample on consumers in any number of ways. We the public have a right to demand that those entities be subject to healthy, pro-competitive oversight, …

Rethinking Consideration In The Electronic Age, Robert A. Hillman, Maureen O'Rourke

Cornell Law Faculty Working Papers

Our fast-paced age of electronic agreements that ostensibly govern transactions as diverse as downloading software, ordering goods, and engaging in collaborative development projects raises questions regarding the suitability of contract law as the appropriate legal framework. While this question arises in many settings, we focus here on the free and open source software (FOSS) movement because of the maturity and success of its model and the ubiquity of its software. We explore in particular whether open source licenses are supported by consideration, and argue that they are, and that open source licenses are contracts. We further argue that a contractual …

Green Technology In Developing Countries: Creating Accessibility Through A Global Exchange Forum, Michael Hasper

Duke Law & Technology Review

As they pursue economic development, developing countries possess high demand for processes and technologies that have climate-friendly methods or alternatives. However, these nations currently face barriers to entry because of trade policies and intellectual property regulations that render procurement of these technologies cost-prohibitive. In light of the recent breakdown in negotiations at the United Nations climate conference in Bali to remove tariffs on green technology, a new approach to green technology diffusion should be considered in order to balance the demand among developing nations for fluid technology transfers with the profit-driven needs and intellectual property considerations of technology holders. A …

Decoding The Dmca Safe Harbors, Edward Lee

All Faculty Scholarship

The DMCA is a decade old, which, in Internet time, may well be closer to a century. Although the DMCA safe harbors have helped to foster tremendous growth in web applications in our Web 2.0 world, several very basic aspects of the DMCA safe harbors remain uncertain. These uncertainties, along with the relative lack of litigation over the DMCA in the past ten years, have threatened to undermine the whole purpose of the DMCA safe harbors by failing to inform the public and technology companies of what steps they need to undertake to fall within the safe harbors. In several …

The End Of The (Virtual) World, Joshua A.T. Fairfield

Scholarly Articles

Virtual worlds have been the next big thing for some time now. In 2008, more than 100 public virtual worlds received venture capital funding - a significant increase over previous years. Yet virtual worlds have been going bankrupt faster than ever, including several high-profile firms and worlds. Every technology goes through a shakedown phase, and for virtual worlds the current recession has served as a catalyst for a downturn that, although not unexpected, is nevertheless startling in both numbers and rapidity.

This article examines the intimate relationship between how a virtual world begins life and how it ends. The amount …

Antitrust Law - A Stranger In The Wikinomics World? Regulating Anti-Competitive Use Of The Drm/Dmca Regime, 27 J. Marshall J. Computer & Info. L. 1 (2009), Rachel Aridor-Hershkovitz

UIC John Marshall Journal of Information Technology & Privacy Law

Unlike traditional markets, Information Technology (“IT”) markets are characterized by special and unique features that shall be discussed in this paper. Competition in IT markets is dynamic; nonmarket based information production models (‘peer production’) play a significant role in IT markets; and IT market are usually data market rather than product market. The combination of the legal rule prohibiting circumvention of technological measure under the DMCA and the use of DRMs, created a new regime, the DRM/DMCA regime, which bestows the entertainment industry with a new and strong right to control the access to and use of the copyrighted work. …

United States Reexamination Procedures: Recent Trends, Strategies And Impact On Patent Practice, 8 J. Marshall Rev. Intell. Prop. L. 381 (2009), Greg H. Gardella, Emily A. Berger

UIC Review of Intellectual Property Law

Reexamination is playing a significant role in the patent landscape. The United States Patent and Trademark Office is reexamining and invalidating more patent claims than ever before. Potential infringers, aware of this trend, can benefit from reexamination proceedings initiated before, during, and after litigation. Moreover, a prevalent reexamination system benefits both the public and industry. Efficient reexamination enables parties to challenge overly broad patents at a reasonable cost which reduces transaction costs, promoting innovation. Patent holders have responded by crafting narrow claims which fair well before the patent office and in court. The current reexamination trend, if continued, will have …

Fender Bender: 3d Computer Modeling Of Commercial Objects And The Meshwerks V. Toyota Decision, 8 J. Marshall Rev. Intell. Prop. L. 429 (2009), Andrew C. Landsman

UIC Review of Intellectual Property Law

The Ninth Circuit Court of Appeals established a standard of originality for three-dimensional wireframe computer models for purposes of copyright protection in Meshwerks, Inc. v. Toyota Motor Sales USA, Inc. The court applied the standard of originality used by courts when assessing the originality of photographs. In doing so, the court created a test for wireframes that precludes any wireframe from acquiring copyright protection. This comment proposes that courts reconsider the holding in Meshwerks and treat wireframes as sculptures rather than photographs, which would allow wireframes to be copyrightable.

Proveris Scientific Corp. V. Innovasystems, Inc. Sinks Safe Harbor Protection For Research Tools, 8 J. Marshall Rev. Intell. Prop. L. 452 (2009), Erin M. Mckibben

UIC Review of Intellectual Property Law

The use of research tools is critical for pharmaceutical companies to conduct timely and efficient research in the development of new drugs. Traditionally, the use of all patented inventions during drug development that are reasonably related to submission of information to the Food and Drug Administration for regulatory review has been protected under the section 271(e)(1) safe harbor provision. Recently, the Federal Circuit narrowed the scope of the safe harbor provision excluding the use of certain patented research tools. The effect of this decision on research tools may negatively impact the public by raising the cost of pharmaceutical companies’ research …

Four Opinions By Chief Judge Markey On Limiting Patent Enforcement, 8 J. Marshall Rev. Intell. Prop. L. (Special Issue) 34 (2009), Joseph R. Re

UIC Review of Intellectual Property Law

Many commentators have characterized Judge Markey and the United States Court of Appeals for the Federal Circuit as being biased in favor of patent holders. These four opinions exemplify Judge Markey’s support of a strong patent system, a system that must include strong defenses against parties that have either wrongly obtained or misused patent rights.

Clean Technology Transfer And Intellectual Property Rights, Nitya Nanda, Nidhi Srivastava

Sustainable Development Law & Policy

No abstract provided.

Intellectual Property Rights To Enhance International Clean Tech Transfers, Anastasia Lewandoski

Sustainable Development Law & Policy

No abstract provided.

Masthead, Volume 1 Issue 1 (2009)

Journal of Law, Technology, & the Internet

No abstract provided.

Licensing Technology To The Brics: The Case For Adr, Aaron Pereira

Cardozo Journal of Conflict Resolution

This Note seeks to explore the application of mechanisms of Alternative Dispute Resolution ("ADR") to overcome problems associated with the traditional methods of international patent litigation, with a focus on the BRIC countries. It starts with an outline of patent rights including their international licensing. The Note will then move on to a discussion of the present mechanisms of international patent protection and perceived problems with the current system, the ways in which ADR can help overcome these problems and the limitations of ADR in this field. Finally, the Note will examine the enforcement of ADR awards, the application of …

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 …

Patent Reform Should Not Leave Innovation Behind, 8 J. Marshall Rev. Intell. Prop. L. 328 (2009), Carl E. Gulbrandsen, Stephanie Adamany, Sandra Haberny, Jason Sheasby

UIC Review of Intellectual Property Law

The most recent push for patent reform established competing groups supporting individual agendas. In view of current economic difficulties, however, the focus on innovation should be ever more important. By enacting the Bayh-Dole Act in 1980, the federal government invested in innovation and unlocked American industrial potential through Universities. The current reform has provisions that limit disclosure and facilitate patent challenging which increases costs to inventors and adds responsibilities to an already overloaded patent office. This article addresses a number of the proposed reforms and the effect on University innovation.

The New "Extra-Ordinary" Observer Test For Design Patent Infringement–On A Crash Course With The Supreme Court's Precedent In Gorham V. White, 8 J. Marshall Rev. Intell. Prop. L. 354 (2009), Christopher V. Carani

UIC Review of Intellectual Property Law

Over one hundred and thirty-five years ago the U.S. Supreme Court, in Gorham v. White, laid down the test for design patent infringement called the “ordinary observer” test—one that is administered through the eyes of men generally. It has remained the test ever since. Recently, in Arminak & Assoc., Inc. v. Saint-Gobain Calmar, Inc and Egyptian Goddess, Inc. v. Swisa, Inc., the Federal Circuit has improperly replaced this “ordinary observer” test with an “extra-ordinary observer” test—one that uses persons who are versed in the trade. In order to bring design patent jurisprudence in line with the U.S. Supreme Court’s jurisprudence …

Do As We Say, Not As We Do: A Study Of The Well-Known Marks Doctrine In The United States, 8 J. Marshall Rev. Intell. Prop. L. 412 (2009), Andrew M. Cook

UIC Review of Intellectual Property Law

Treaties such as the Paris Convention and the TRIPS Agreement protect well-known marks around the world, but there is currently uncertainty as to whether these marks can be protected in the United States. While a signatory to those treaties, recent decisions in the Second and Ninth Circuits leave the circuits split on whether foreign well-known marks are protectable within the United States. Without a circuit harmonization, the United States remains in a hypocritical position, demanding treaty compliance from other nations while failing to meet its treaty obligations. The uncertainty is efficiently and effectively resolved with a statutory amendment to section …

Obviousness Before And After Judge Markey, 8 J. Marshall Rev. Intell. Prop. L. (Special Issue) 9 (2009), Mark J. Abate

UIC Review of Intellectual Property Law

Chief Judge Howard T. Markey left an everlasting mark on the meaning of obviousness under 35 U.S.C. § 103. Chief Judge Markey viewed all inventions as combinations of old elements because, in his own words, “Only God works from nothing. Man must work with old elements.” Chief Judge Markey’s obviousness jurisprudence can be characterized by three fundamental principles. First, he looked at an invention as a whole. Second, he looked for real world evidence of nonobviousness because it was a reliable indicator of obviousness. Third, he avoided the dangers of hindsight bias by looking for a reason to combine a …

Inequitable Conduct, Gross Negligence And The Kingsdown Decision, 8 J. Marshall Rev. Intell. Prop. L. (Special Issue) 18 (2009), Jim Carmichael, Cameron Weiffenbach

UIC Review of Intellectual Property Law

Rule 56 was promulgated in 1948 to address inequitable conduct and fraud before the United States Patent Office in response to major Supreme Court decisions in the 1930’s and 1940’s. Further development of rule continued through decisions and amendments into the 1980’s. Judge Markey authored several decisions at the Federal Circuit addressing the standard of intent required to find inequitable conduct in the 1980’s. The impact of these decisions culminated in his Kingsdown Medical Consultants, Ltd v. Hollister, Inc. opinion resulting in a 1992 amendment to Rule 56. This article analyzes the development of Rule 56 and Judge Markey’s influence …

The Role Of Juries In Managing Patent Enforcement: Judge Howard Markey's Opinions And Writings, 8 J. Marshall Rev. Intell. Prop. L. (Special Issue) 41 (2009), John R. Alison

UIC Review of Intellectual Property Law

In the 1970s, a trial by jury was rare in patent cases. By the time Chief Judge Markey left the United States Court of Appeals for the Federal Circuit in 1989, jury trials had become the norm. Throughout Judge Markey’s time on the bench he exerted great energy to promote, define, and improve the role of law juries in patent cases. This speech by Judge Markey’s former law clerk, John R. Alison, discusses the three Markey Principles. The first principle of Judge Markey is the fundamental right to a jury trial in patent cases. Second, proceedings in jury trials for …

The Legacy Of Judge Howard T. Markey, 8 J. Marshall Rev. Intell. Prop. L. (Special Issue) 1 (2009), Antonin Scalia

UIC Review of Intellectual Property Law

On September 16, 2008, Associate Justice of the Supreme Court of the United States Antonin Scalia delivered a speech on the legacy of the late Howard T. Markey. The speech was given at The John Marshall Law School’s The Legacy of Judge Howard T. Markey Symposium, held at the law school in Chicago, Illinois. The text of the speech appears here.

Money For Nothing And Music For Free? Why The Riaa Should Continue To Sue Illegal File-Sharers, 9 J. Marshall Rev. Intell. Prop. L. 1 (2009), William Henslee

UIC Review of Intellectual Property Law

The Recording Industry Association of America (―RIAA) has sued over 35,000 people for illegal file-sharing music, or uploading and downloading music. The RIAA has sued anyone under its ―making available‖ theory, or anyone who offers to distribute copyrighted music without the owner‘s consent. However, the United States Circuit Courts of Appeals are split on whether copyright infringement occurs when a file is ―made available‖ or when there is actual dissemination of a file. Due to this split, the RIAA has negotiated deals with internet service providers to penalize individuals who illegally share files. This article analyzes a recent decision, Capitol …

Open Borders, Intellectual Property & Federal Criminal Trade Secret Law, 9 J. Marshall Rev. Intell. Prop. L. 24 (2009), Shubha Ghosh

UIC Review of Intellectual Property Law

Many scholars have demonstrated that labor mobility between firms has lead to the economic success of Silicon Valley. California‘s policy against enforcing covenants not to compete has been shown to provide the legal infrastructure for high labor mobility. Does the argument extend to mobility of skilled labor across national borders? This Article addresses that question in the context of the Economic Espionage Act of 1996, the first federal criminal trade secret law in the United States. By analyzing the scholarly literature and the case law under the Act, the author presents a theoretical framework for assessing the Act based on …

Magazine Publishers Exhale: Exploiting Collective Works After Greenberg, 9 J. Marshall Rev. Intell. Prop. L. 161 (2009), Jason Koransky

UIC Review of Intellectual Property Law

The National Geographic Society simply intended to offer an innovative digital product to consumers—its complete archives in digital format—when it released The Complete National Geographic CD-ROM. The CD-ROM, however, had a much different impact as well. The litigation that followed its release, in particular Greenberg v. National Geographic Society, offered publishers‘ some clarity in regard to the scope of section 201(c) rights to reproduce collective works in digital formats. Greenberg, however, did not address the full range of copyright issues that publishers and freelance contributors alike encounter in reproducing collective works in new digital formats brought about by advances in …