Intellectual Property Law Commons^™

Authorizing Copyright Infringement And The Control Requirement: A Look At P2p File-Sharing And Distribution Of New Technology In The U.K., Australia, Canada, And Singapore, Jeffrey C.J. Lee

Canadian Journal of Law and Technology

The doctrine of authorizing copyright infringement has been used to deal with the marketing of new Ttechnology that might be employed by a user to infringe copyright, from the distribution of blank cassette tapes and double-cassette tape recorders to photocopiers. It is being tested yet again with the distribution of peer-to-peer file-sharing software that enables the online exchange of MP3 music and other copyrighted files. This article looks at the different positions adopted in several Commonwealth jurisdictions, and examines the policy considerations behind these positions. It looks at, in particular, the recent Australian case of Universal Music Australia Pty Ltd. …

Full Committee Hearing On The Importance Of Patent Reform On Small Business: Hearing Before The H. Comm. On Small Business, 110th Cong., Mar. 29, 2007 (Statement Of Professor John R. Thomas, Geo. U. L. Center), John R. Thomas

Testimony Before Congress

No abstract provided.

Where Will Consumers Find Privacy Protection From Rfids?: A Case For Federal Legislation, Serena G. Stein

Duke Law & Technology Review

With the birth of RFID technology, businesses gained the ability to tag products with practically invisible computer chips that relay information about consumer behavior to remote databases. Such tagging permits retailers and manufacturers to track the purchases, identities, and movements of their customers. In the absence of enforceable regulations, society risks being subjected to an unprecedented level of Orwellian surveillance. This iBrief addresses consumer privacy concerns stemming from the proliferation of RFID technology. It discusses why tort law, state legislation, FTC guidelines, and proposed regulations are insufficient methods to alleviate consumer privacy concerns and suggests amending various federal privacy laws, …

Is Kelly Shifting Under Google’S Feet? New Ninth Circuit Impact On The Google Library Project Litigation, Cameron W. Westin

Duke Law & Technology Review

The Google Library Project presents what many consider to be the perfect fair-use problem. The legal debate surrounding the Library Project has centered on the Ninth Circuit’s Kelly v. Arriba Soft. Yet recent case law presents new arguments for both sides of the Library Project litigation. This iBrief analyzes two Ninth Circuit district court decisions on fair use, Field v. Google, Inc. and Perfect 10 v. Google, Inc., and their impact on the Library Project litigation.

An Empirical Look At Software Patents, James Bessen, Robert M. Hunt

Faculty Scholarship

U.S. legal changes have made it easier to obtain patents on inventions that use software. Software patents have grown rapidly and now comprise 15 percent of all patents. They are acquired primarily by large manufacturing firms in industries known for strategic patenting; only 5 percent belong to software publishers. The very large increase in software patent propensity over time is not adequately explained by changes in R&D investments, employment of computer programmers, or productivity growth. The residual increase in patent propensity is consistent with a sizeable rise in the cost effectiveness of software patents during the 1990s. We find evidence …

Does Information Beget Information?, Dennis S. Karjala

Duke Law & Technology Review

Using the language of mathematics, Professor Polk Wagner has recently argued that the impossibility of fully appropriating the value of information in a rightsholder leads to the surprising conclusion that expanding the degree of control of intellectual property rights will, in the long run, increase the sum total of information not subject to ownership claims and therefore available as part of the cultural and technological base on which new growth and development can occur. Indeed, he claims that open information will grow according to the formula for compound interest, where the interest rate is 100% plus or minus a factor …

When Second Comes First: Correcting Patent’S Poor Secondary Incentives Through An Optional Patent Purchase System, Jordan Barry

ExpressO

As research has advanced, technologies have become more closely knit, and the relationships between them—both complementary and competitive—have become increasingly important. Unfortunately, the patent system’s use of monopoly power to reward innovators creates inefficient results by overly encouraging the development of substitute technologies and discouraging the development of complementary technologies. This paper explains how an optional patent purchase system could help ameliorate such problems and discusses the implications of such a system.

Internationalizing Copyright: How Claims Of International, Extraterritorial Copyright Infringement May Be Brought In U.S. Courts, Elliot Cook

ExpressO

This Comment assesses the use of the Alien Tort Statute (“ATS”) as a jurisdictional basis for claims of international copyright infringement occurring outside of the United States. Under the ATS, aliens may sue in United States district courts for torts that amount to violations of treaties or the law of nations.

Given that copyright infringement is a tort, an alien may only be able to establish ATS jurisdiction in a suit of extraterritorial infringement if the infringement violated a treaty or the law of nations. This comment argues that extraterritorial copyright infringement does indeed amount to a violation of the …

The Need For Software Innovation Policy, Christopher Riley

ExpressO

This paper examines the current legal treatment of software innovation. It argues that recent judicial standards for the regulation of software innovation do not adequately protect innovation. It presents an original standard for the regulation of software innovation, one intended to guide judicial decisions in contributory copyright liability, in interpretations of the Digital Millennium Copyright Act, and in every courtroom where a developer is on trial for the mere creation and distribution of software. The standard presented in this paper separates the questions of liability and remedy in order to produce an optimal dynamic balance of interests.

Ip And The Global Public Interest: Challenges And Opportunities, Jon R. Cavicchi, Stanley P. Kowalski

Law Faculty Scholarship

[Excerpt from article] Intellectual property (IP) capacity is essential for economic development, particularly as countries transition into the higher technology sectors, for example biotechnology. For developing countries, a commitment to minimal IP rights protection will determine inclusion in the World Trade Organization (WTO), facilitate access to foreign-direct investment, and accelerate economic development. However, on a more fundamental level, capacity in IP management will affect whether a country can provide basic health and nutritional needs for its citizens. For example, sustainable food security presents a serious challenge in many developing countries; as their economies rapidly emerge, urban centers expand, arable land …

An Afterword To: A Panel Discussion On Obviousness In Patent Litigation: Ksr International V. Teleflex, 6 J. Marshall Rev. Intell. Prop. L. 633 (2007), Constantine L. Trela, Jr.

UIC Review of Intellectual Property Law

In KSR International v. Teleflex, Inc., the Supreme Court may have sparked the question: How should obviousness be decided as a procedural matter? KSR reaffirmed the holding in Graham v. John Deere Co.—that obviousness is a legal determination decided against the background of particular facts. However, KSR moved beyond Graham and stated on a number of occasions that “the court” is to make various determinations. KSR’s language logically suggests that the jury is to answer interrogatories on specific factual questions and then the judge is to decide the obviousness issue based on those answers. How the Federal Circuit and the …

The Troll Next Door, 6 J. Marshall Rev. Intell. Prop. L. 292 (2007), Jennifer Kahaulelio Gregory

UIC Review of Intellectual Property Law

The term Patent Troll is increasingly permeating news headlines. This comment explains where the term came from and how the changing landscape of patent enforcement has contributed to the evolution of the Patent Troll. Some have suggested that segregating Patent Trolls from other patent enforcers will solve many of the patent system’s woes. This comment analyzes proposed ways of distinguishing Patent Trolls and reveals them all as prejudicial and ineffective. The use of the term Patent Troll is a mask for underlying fears based on real shortcomings in the patent system, which need to be addressed.

Let's Make A Deal: Negotiating Resolution Of Intellectual Property Disputes Through Mandatory Mediation At The Federal Circuit, 6 J. Marshall Rev. Intell. Prop. L. 365 (2007), Wendy Levenson Dean

UIC Review of Intellectual Property Law

In 2006, the United States Court of Appeals for the Federal Circuit implemented a mandatory mediation program for parties in all counseled cases, including intellectual property disputes. This program offers the parties incentives to settle, such as providing neutral mediators with intellectual property expertise at no cost to the litigants. This article explains how the Federal Circuit’s Mediation Program works and provides an overview of the Guidelines. This article concludes that the Federal Circuit firmly stands behind the mandatory mediation program for intellectual property disputes and believes the process can only serve to benefit all parties involved.

The Proliferation Of Tax Strategy Patents: Has Patenting Gone Too Far?, 7 J. Marshall Rev. Intell. Prop. L. 202 (2007), Anish Parikh

UIC Review of Intellectual Property Law

Many people employ an accountant or tax attorney to assist them with the paying of their taxes. Tax practitioners may utilize various tax strategies in determining how a taxpayer should allocate his money. These tax strategies fall into the category of business methods. It was widely held that patents could not be granted for methods of doing business; however, this changed in 1998 when the Court of Appeals for the Federal Circuit upheld the patentability of an investment structure in State Street Bank & Trust Company v. Signature Financial Group, Inc. More recently, in Wealth Transfer Group v. Rowe, the …

Application Service Providing, Copyright, And Licensing, 25 J. Marshall J. Computer & Info. L. 79 (2007), Michael P. Widmer

UIC John Marshall Journal of Information Technology & Privacy Law

Application Service Providing ("ASP"), where a vendor hosts a software application on her server and grants customers access to the application over a network -- without the software application itself being installed on the user’s computer -- is used by many, e.g. in the form of Web based e-mail services, and grows ever more important. This article argues that although ASP mainly raises questions (i) that come up in the context of traditional use of computer programs; or (ii) that have been addressed in the context of online use of works other than software, ASP has significantly different copyright implications …

Slingbox: Copyright, Fair Use, And Access To Television Programming Anywhere In The World, 25 J. Marshall J. Computer & Info. L. 187 (2007), Shekar Sathyanarayana

UIC John Marshall Journal of Information Technology & Privacy Law

No abstract provided.

Hollywood Vs. The People Of The United States Of America: Regulating High-Definition Content And Associated Anti-Piracy Copyright Concerns, 6 J. Marshall Rev. Intell. Prop. L. 525 (2007), Timothy M. Cho

UIC Review of Intellectual Property Law

With Blu-ray Disc (“BD”) and HD-DVD poised to take over the $24.6 billion home video market, the issue of copy protection is the most significant obstacle to overcome before this new technological era can be fully ushered in. This comment proposes that impending Advanced Access Content System (“AACS”) implementation and Digital Millennium Copyright Act (“DMCA”) enforcement are not effective remedies for protecting copyrighted material and curbing rampant piracy in connection with BD and HD-DVD. Limiting the proposed scope of the DMCA, rejecting analog hole legislation, and creating low cost digital marketplace alternatives to illicit activity are the best ways to …

What Does Forum Shopping In The Eastern District Of Texas Mean For Patent Reform?, 6 J. Marshall Rev. Intell. Prop. L. 570 (2007), Alisha Kay Taylor

UIC Review of Intellectual Property Law

The Eastern District of Texas has recently become a rocket docket for patent litigation owing to the adoption of Judge T. John Ward’s local patent rules. However, the disproportional amount of patent cases filed in the Eastern District is evidence of plaintiffs forum shopping. Notwithstanding the benefit of forum shopping in creating, by default, patent law expertise in certain district courts, the existence of forum shopping illuminates the reality that patent law application is not uniformly applied throughout the district courts. This comment proposes a mandatory post-grant opposition proceeding occurring at the Board of Patent Appeals and Interferences of the …

Reason Or Madness: A Defense Of Copyright's Growing Pains, 7 J. Marshall Rev. Intell. Prop. L. 1 (2007), Marc H. Greenberg

UIC Review of Intellectual Property Law

A growing conflict between the creators and owners of expressive works protected by copyright law and the community of users and distributors of those works has focused on whether the law is so restrictive that it no longer meets the constitutional mandate that intellectual property law should serve to promote the growth and development of useful and expressive works. Has the scope of copyright's growth been reasonable, or are its restrictions madness, and harmful to the development and distribution of art? This article explores the seven leading criticisms leveled against copyright's expansion, and examines one recent effort at legislative reform …

Contractual Expansion Of The Scope Of Patent Infringement Through Field-Of-Use Licensing, Mark R. Patterson

Faculty Scholarship

Patentees sometimes license their inventions through field-of-use licenses, which permit licensees to use the inventions, but only in specified ways. Field-of-use licensing is often procompetitive, because the ability to provide different licensing terms for different users can encourage broader licensing of inventions. But in recent United States cases, the Federal Circuit Court of Appeals and lower courts have upheld field-of-use licenses prohibiting activities that licensees would otherwise have been permitted by patent law, such as the repair and resale of patented products. The recent cases rely on the Federal Circuit's decision in Mallinckrodt, Inc. v. Medipart, Inc., where the court …

What Is Hiding In The Bushes - Ebay's Effect On Holdout Behavior In Patent Thickets, Gavin D. George

Michigan Telecommunications & Technology Law Review

Importantly, at least a few relevant patent holders are inevitably left out of an industry organization's collection of patents. These left-out patent holders, known as "holdouts," can undermine the collective arrangement with demand letters and infringement suits.[...] The first part of this Note explains why holdouts exist in the first place, given the benefits of joining an organization of collected patents. In the second part of this Note, I explore the lack of legal protections against holdout demands offered by pre-eBay patent law. The third part of this Note introduces the eBay decision as revolutionary addition to list of legal …

Restoring The Genetic Commons: A Common Sense Approach To Biotechnology Patents In The Wake Of Ksr V. Teleflex , Anna Bartow Laakmann

Michigan Telecommunications & Technology Law Review

In this Article, I argue that a new approach to biotechnology patenting is necessary to fully realize the tremendous potential of recent advances in our understanding of the human genome. Part I places the gene patenting debate in context by highlighting the key landmarks that have shaped the biotechnology industry and outlining the products and stakeholders that comprise the industry. Part II describes the current state of the law on biotechnology patents, summarizing the Federal Circuit's application of the various doctrines that collectively define the patent landscape's parameters. In this Part, I explain how the Federal Circuit's jurisprudence is tied …

Messages From The Front: Hard Earned Lessons On Information Security From The Ip Wars, 16 Mich. St. J. Int'l L. 71 (2007), Doris E. Long

UIC Law Open Access Faculty Scholarship

Cyberspace is often a battlefield with a wide array of armies posed to challenge one another across the increasing array of rhetoric and technology that has made it such a potent arena for global digital commerce. Perry Barlow's infamous demand that cyberspace be left to its own devices because of its unique unregulated nature may have been answered by Larry Lessig's reply that code may in fact be used to regulate cyberspace, but the reality is that social norming demands, the evanescence of technological controls, and the perceived utility of illicit conduct utilizing the internet make any regulation problematic at …

Copyright Under Siege: An Economic Analysis Of The Essential Facilities Doctrine And The Compulsory Licensing Of Copyrighted Works, 17 Alb. L.J. Sci. & Tech. 481 (2007), Daryl Lim

UIC Law Open Access Faculty Scholarship

No abstract provided.

Who Is Really Undermining The Patent System – “Patent Trolls” Or Congress?, 6 J. Marshall Rev. Intell. Prop. L. 185 (2007), Raymond P. Niro

UIC Review of Intellectual Property Law

“Patent troll” has entered the legal lexicon, stirring up heated debates over fundamental issues of patent rights. This article discusses the etymology of the term “patent troll” —from its beginnings as a deliberately derogatory term thrust forward as a defense to weaken the enforcement of patents against large corporations to its current manifestation as a call for patent reform. Interestingly, statistics show the “patent troll” problem is grossly overstated compared to the contentions of the corporate world. Moreover, enforcement of patents stimulates small business growth, innovation, and dissemination of knowledge to the public. This article suggests Congressional diversion of PTO …

The Federal Circuit's Inducement Conflict Resolution: The Flawed Foundation And Ignored Implications Of Dsu Medical, 6 J. Marshall Rev. Intell. Prop. L. 198 (2007), Eric L. Lane

UIC Review of Intellectual Property Law

After years of uncertainty regarding the level of intent required to prove liability for inducing patent infringement, the Federal Circuit, in DSU Medical Corp. v. JMS Co., finally endorsed the specific intent standard detailed in the court's Manville Sales Corp. v. Paramount Systems, Inc. decision. This article examines the ramifications of DSU Medical Corp., especially in relation to the opinion of counsel defense to willful infringement. This article argues that the Federal Circuit's reliance on Manville Sales and MGM Studios, Inc. v. Grokster was misplaced, and that the adoption of the specific intent standard results in an elevated importance of …

Toward A Pluralistic Theory On An Efficacious Patent Institution, 6 J. Marshall Rev. Intell. Prop. L. 220 (2007), Nari Lee

UIC Review of Intellectual Property Law

Time and time again, scholars have attempted to assess the efficacy of the intellectual property institution; these attempts have created a vast amount of literature. As impressive as the volume of work is that has been generated on this issue, so is the absence of a generally applicable theory of intellectual property, which either claims or disclaims the efficacy of the intellectual property institution. This article questions the existence of a general definition of efficiency that is applicable to the assessment of the patent institution. While it is true that the efficiency as applied to specific cases may be definable …

Post Saddam Restructuring Of Intellectual Property Rights In Iraq Through A Case Study Of Current Intellectual Property Practices In Lebanon, Egypt, And Jordan, 6 J. Marshall Rev. Intell. Prop. L. 250 (2007), Elizabeth Mirza Al-Dajani

UIC Review of Intellectual Property Law

When the United States invaded Iraq in 2003, it did so with the ambitious goal to completely transform an isolationist government into an international democracy. The Coalition forces created laws designed to conform Iraq to international standards, including three Orders tracking the language of the WTO and its IP enforcement mechanism, the TRIPs Agreement. These standards, however, are often inapposite of unique cultural and religious beliefs of an Arab Middle Eastern country that views ideas, concepts, and knowledge as communal. This comment analyzes similarly situated countries in various stages of dealing with the transition and suggests affirmative steps to expedite …

Sarbanes-Oxley: A Dark Cloud Over Intellectual Property And Business, 6 J. Marshall Rev. Intell. Prop. L. 272 (2007), Matthew D. Goodstein

UIC Review of Intellectual Property Law

The Sarbanes–Oxley Act seeks to improve corporate financial reporting and eliminate the frauds and improprieties that spurred the numerous accounting scandals. While Sarbanes–Oxley requires an immense amount of time and effort for compliance, the Act’s application to intellectual property is woefully lacking. This comment proposes that the proper remedy is increased definition within the language of the Act. Additionally, small businesses, whose activities have little effect on the financial markets, should be subject to fewer regulations within Sarbanes–Oxley. Without paring down ambiguous terms and limiting the scope of the Act, corporate officers are left in the dark about what constitutes …

Exculpatory Patent Opinions And Special Problems Regarding Waiver Of Privilege, 6 J. Marshall Rev. Intell. Prop. L. 313 (2007), William L. Lafuze, Matthew R. Rodgers, Michael A. Valek

UIC Review of Intellectual Property Law

When a patent owner alleges another infringed the patent, the owner inevitably also alleges that such infringement is willful. An accused infringer often defends a claim of willful infringement by asserting evidence that the accused infringer reasonably relied on the opinion of counsel. This article discusses the concept of willful infringement and the criteria necessary for an opinion of counsel to be deemed competent. Moreover, this article analyzes issues that arise as a consequence of using such patent opinions, with a special focus on attorney-client privilege and work-product immunity waiver. Finally the practical ways to minimize the problematic aspects of …