Intellectual Property Law Commons^™

Empirical Studies Of Claim Construction, Jonas Anderson

Working Papers

Patent claims define the scope of the patent right and hence are central to the operation of the patent system. Patent prosecutors devote substantial effort to crafting patent claims so as to maximize the scope of their right without “reading on” prior art (and thereby defeating novelty). Businesses seeking to enter a technology marketplace must be careful to avoid encroaching patent claims. Thus, when patentees enforce their rights, the interpretation of claim boundaries guides both validity and infringement analysis. Following the Supreme Court’s decision in Markman v. Westview Instruments (517 U.S. 370 (1996)), holding that “the construction of a patent, …

Registering Offense: The Prohibition Of Slurs As Trademarks, Christine Farley

Contributions to Books

Since 1967, Pro-Football has registered six marks that include the term “redskins,” a derogatory racial epithet that refers to Native Americans. The use of disparaging marks dates back to the 19th century when brands commercialized racial stereotypes, such as Aunt Jemima. Today, offensive marks, including those that ridicule race, ethnicity, gender and religion are proliferating prompting the question of what role trademark law plays in protecting the interests of diverse communities. Section 2(a) of the Lanham Act prohibits the registration of marks that consist of matter that may disparage or bring into contempt or disrepute any person, institution, or belief. …

Internet Freedom With Teeth, Charles Duan

Scholarly Articles in Law Reviews & Journals

"You make the very salient statement that we shouldn't lose sight of the fact that this is a case about teeth. Well, Markman was a case about dry cleaning. But nobody thinks of Markman as standing for anything about dry cleaning."

So went what was Chief Judge Prost's perhaps most striking question to the attorney for the International Trade Commission at oral argument in ClearCorrect Operating, LLC v. International Trade Commission, which is the focus of Professor Sapna Kumar's recent article Regulating Digital Trade. Yet this is what remains so fascinating about ClearCorrect: an administrative agency decision about idiosyncratic facts …

Intellectual Property And Gender: Reflections On Accomplishments And Methodology, Kara W. Swanson

American University Journal of Gender, Social Policy & the Law

No abstract provided.

2014 Patent Law Decisions On Key Issues At The Federal Circuit, Olivia T. Luk, Palash Basu, Ryan Dooley, Charles Green, Brian E. Haan

American University Law Review

No abstract provided.

The Federal Circuit And Ultramercial:Software And Business Method Patents Tumble Further Down The Rabbit Hole, Mark Patrick

American University Law Review

No abstract provided.

Applying Patent-Eligible Subject Matter Restriction, Jonas Anderson

Scholarly Articles in Law Reviews & Journals

The US Supreme Court's difficulty in promulgating a standard for patent-eligibility has not gone unnoticed in the academy. Hundreds of academic conferences, including this one, have been devoted to the topic. The goal of this Article is not to solve the seemingly intractable problem of patent-eligibility doctrine. The goal of this Article is rather more modest. Instead of normatively assessing patent-eligible subject matter doctrine, this Article seeks to identify which foundational theories of patent-eligible subject matter can most readily be applied by courts and the US Patent and Trademark Office via Section 101. In doing so, this Article categorizes the …

Code Of Best Practices In Fair Use For The Visual Arts, Peter Jaszi

Scholarly Articles in Law Reviews & Journals

No abstract provided.

Considering Trademark And Speech Rights Through The Lens Of Regulating Tobacco, Christine Haight Farley, Kavita Devaney

Scholarly Articles in Law Reviews & Journals

Many tobacco company trademarks, such as MARLBORO, are extremely valuable. But valuable trademarks are often vulnerable both to copyists and to parodists. Tobacco trademarks face the additional vulnerability of onerous public health regulations, which can limit their appearance and use. When tobacco companies challenge these health regulations they do so on the grounds that the regulations violate their First Amendment speech rights. The law that is applied in these challenges is well developed, clear and predictable. When tobacco companies challenge unauthorized third-party uses of their marks, the speech rights involved are dealt with in a distinctly different manner. Under trademark …

No Comment: Will Cariou V. Prince Alter Copyright Judges’ Taste In Art?, Christine Haight Farley

Scholarly Articles in Law Reviews & Journals

Even before Campbell v. Acuff-Rose Music, Inc. made transformativeness the name of the game in fair use law, judges have been in search of artistic speech in their copyright fair use determinations, especially in appropriation art cases. Judges often find themselves ascribing meaning both to the defendant’s work and the plaintiff’s work when comparing the two in order to determine whether defendant’s art is new. So while many commentators attribute appropriation artist Jeff Koons’s victory in Blanch v. Koons after a string of losses to the development in fair use law contributed by Campbell, I instead argue that it has …

Restoring The Fact/Law Distinction In Patent Claim Construction, Jonas Anderson

Scholarly Articles in Law Reviews & Journals

INTRODUCTION: Two decades ago, the Supreme Court sought to promote more effective, transparent patent litigation in Markman v. Westview Instruments1 by ruling that "the construction of a patent, including terms of art within its claim, is exclusively within the province of the court."'2 In so doing, the Court removed interpretation of patent claims from the black box of jury deliberations by holding that the Seventh Amendment right to a jury trial did not extend to patent claim construction. Failing to find clear historical evidence of how claim construction was handled in 179 1,' the Court turned to "the relative interpretive …

Considering Trademark And Speech Rights Through The Lens Of Regulating Tobacco, Christine Farley

Scholarly Articles in Law Reviews & Journals

Many tobacco company trademarks, such as MARLBORO, are extremely valuable. But valuable trademarks are often vulnerable both to copyists and to parodists. Tobacco trademarks face the additional vulnerability of onerous public health regulations, which can limit their appearance and use. When tobacco companies challenge these health regulations they do so on the grounds that the regulations violate their First Amendment speech rights. The law that is applied in these challenges is well developed, clear and predictable. When tobacco companies challenge unauthorized third-party uses of their marks, the speech rights involved are dealt with in a distinctly different manner. Under trademark …

Court Competition For Patent Cases, Jonas Anderson

Scholarly Articles in Law Reviews & Journals

The traditional academic explanation for forum shopping is simple: litigants prefer to file cases in courts that offer some substantial advantage — either legal or procedural — over all other courts. But the traditional explanation fails to account for competition for litigants among courts. This Article suggests that forum shopping in patent law is driven in part by the creation of procedural and administrative distinctions among courts that are designed to attract, or in some cases to repel, patent litigants.

This Article makes two primary contributions to the literature, one theoretical and one normative. First, it theorizes that judicial competition …

Brief For Amicus Curiae Law Professors And Scholars In Support Of Apellee, In Authors Guild V. Google, Inc., Michael W. Carroll, Brandon Butler, Meredith Jacob

Joint PIJIP/TLS Research Paper Series

No abstract provided.

An Overview Of The International Treatment Of Exceptions, Eric Schwartz

Joint PIJIP/TLS Research Paper Series

This article is intended as a very brief overview and history of the international treatment of “fair use” or its equivalent — that is, a general summary of the treaty obligations and national law exceptions (in statute or by common law) to the exclusive rights of authors and owners of copyrights.

Taming The Mongrel: Aligning Appellate Review Of Claim Construction With Its Evidentiary Character In Teva V. Sandoz, Jonas Anderson, Peter Menell, Arti Rai

Working Papers

In its seminal Markman decision, the Supreme Court sought to usher in a more effective, transparent patent litigation regime through its ruling that “the construction of a patent, including terms of art within its claim, is exclusively within the province of the court.” In the aftermath of this decision, the Federal Circuit adhered to its prior holding that claim construction is a “purely legal issue” subject to plenary de novo review, downplaying the Supreme Court’s more nuanced description of claim construction as a “mongrel practice” merely “within the province of the court.” Over nearly two decades of experience in the …

A Realist Approach To Copyright Law's Formalities, Michael W. Carroll

Joint PIJIP/TLS Research Paper Series

Rejecting the conventional story that formalities in copyright law were abolished by the Berne Convention, this Article demonstrates that privately administered systems of formalities play a significant role in the administration of copyright law worldwide. Indeed, they must because copyright is designed to support a transaction structure which requires rightsholders who seek to attract licensing partners to go through some formal step to identify themselves and the works in which they have a legal or beneficial interest. Canvassing the landscape of mandatory and voluntary public and private systems of formalities, this article argues that: (1) national policymakers retain more policy …

Territorial Exclusivity In U.S. Copyright And Trademark Law, Christine Farley

Scholarly Articles in Law Reviews & Journals

Currently, U.S. trademark and copyright law both adopt employ a regime of international exhaustion of rights with respect to parallel importation after the Supreme Court ruled in Kirtsaeng last term. This agreement belies the fact that these two areas of law have developed in nearly divergent directions and have resulted in faltering intellectual property and trade policies. Currently, interpretation of the first sale doctrine hinges on the particular legal characteristics of both trademarks and copyrights. When dealing with trademarks, courts ultimately focus on the source of origin, taking into account consumer expectations or, instead, focusing on the business relationship, if …

Territorial Exclusivity In U.S. Copyright And Trademark Law, Christine Haight Farley

Contributions to Books

Currently, U.S. trademark and copyright law both adopt employ a regime of international exhaustion of rights with respect to parallel importation after the Supreme Court ruled in Kirtsaeng last term. This agreement belies the fact that these two areas of law have developed in nearly divergent directions and have resulted in faltering intellectual property and trade policies. Currently, interpretation of the first sale doctrine hinges on the particular legal characteristics of both trademarks and copyrights. When dealing with trademarks, courts ultimately focus on the source of origin, taking into account consumer expectations or, instead, focusing on the business relationship, if …

Stare Indecisis: The Federal Circuit's En Banc Battle Against Itself And Business In Lighting Ballast Control, Llc V. Philips Electronics North America Corp., Ronny Valdes

American University Business Law Review

No abstract provided.

The Protection Of Geographical Indications In The Inter-American Convention, Christine Farley

Scholarly Articles in Law Reviews & Journals

The international community is currently deeply divided over the appropriate level of protection for Geographical Indications (“GIs”). This conflict has recently come to a head in the negotiations over the Transatlantic Trade and Investment Partnership Agreement (TTIP). GIs receive extensive protections within the European Union (EU) that go beyond international standards, while the United States is generally opposed to strengthening existing international GI protections. Given its current stance, it is remarkable that the US has since 1929 been bound by a little known international convention that ensures strong protection of GIs. Since that date, the US has been a member …

Patent Dialogue, Jonas Anderson

Scholarly Articles in Law Reviews & Journals

This Article examines the unique dialogic relationship that exists between the Supreme Court and Congress concerning patent law. In most areas of the law, Congress and the Supreme Court engage directly with each other to craft legal rules. When it comes to patent law, however, Congress and the Court often interact via an intermediary institution: the U.S. Court of Appeals for the Federal Circuit. In patent law, dialogue often begins when Congress or the Supreme Court acts as a dialogic catalyst, signaling reform priorities to which the Federal Circuit often responds.

Appreciating the unique nature of patent dialogue has important …

Pinterest And Copyright's Safe Harbors For Internet Providers, Michael W. Carroll

Scholarly Articles in Law Reviews & Journals

Has the time come to substantially revise the Copyright Act to better adapt the law to the ever-evolving digital environment? A number of influential sources appear to think so. If their initiatives gain momentum, it will be important to consider lessons learned from the first such effort fifteen years ago when Congress made far-reaching changes to copyright law by extending the term of copyright for twenty years and by enacting a package of reform proposals known as the Digital Millennium Copyright Act (“DMCA”). This Article intertwines the story of one important provision of the DMCA - safe harbors for Internet …

Congress As A Catalyst Of Patent Reform At The Federal Circuit, Jonas Anderson

Scholarly Articles in Law Reviews & Journals

The U.S. Court of Appeals for the Federal Circuit is the dominant institution in patent law. The court’s control over patent law and policy has led to a host of academic proposals to shift power away from the court and towards other institutions, including the U.S. Supreme Court, the U.S. Patent and Trademark Office, and federal district courts. Surprisingly, however, academics have largely dismissed Congress as a potential institutional check on the Federal Circuit. Congress, it is felt, is too slow, too divided, and too beholden to special interests to effectively monitor changes in innovation and respond with appropriate reforms. …

More Than The Sum Of All Parts: Taking On Ip And It Theft Through A Global Partnership, Andrew F. Popper

Scholarly Articles in Law Reviews & Journals

The core of this Article describes some of the efforts, both within and outside the United States, to control the epidemic of intellectual property and information technology (IP and IT) theft. Those engaged in the battle include prosecutors and judges, individuals and trade associations, and politicians and policymakers from all points on the political spectrum. And yet, even with so many forces working to stem the tide, the losses are staggering.

An innovator with the potential to change his or her future as well as the prosperity of the surrounding economy, whether in Kentucky or Kinshasa, will be dissuaded from …

The Protection Of Geographical Indications In The Inter-American Convention, Christine Haight Farley

Scholarly Articles in Law Reviews & Journals

The international community is currently deeply divided over the appropriate level of protection for Geographical Indications (“GIs”). This conflict has recently come to a head in the negotiations over the Transatlantic Trade and Investment Partnership Agreement (TTIP). GIs receive extensive protections within the European Union (EU) that go beyond international standards, while the United States is generally opposed to strengthening existing international GI protections.

Given its current stance, it is remarkable that the US has since 1929 been bound by a little known international convention that ensures strong protection of GIs. Since that date, the US has been a member …

Stabilizing Morality In Trademark Law, Christine Haight Farley

Scholarly Articles in Law Reviews & Journals

Almost all of the commentary concerning the statutory prohibition on registering offensive trademarks lambasts it as a misguided attempt to enforce civility through trademark law. This Article carefully considers the challenges accompanying section 2(a) of the U.S. Trademark Act and defends it as good policy. There are, however, a few instances in which the jurisprudence under section 2(a) has created more problems than it has solved. To alleviate these problems, this Article proposes judging words per se and abandoning the traditional trademark notion of evaluating words in context. Judging words per se is warranted given the very different objectives underlying …

Trips-Plus Trade And Investment Agreements: Why More May Be Less For Economic Development, Christine Farley

Scholarly Articles in Law Reviews & Journals

Conventional wisdom -- but not empirical research -- maintains that strong intellectual property (“IP”) rights trigger not only foreign direct investment, but also local innovation. Thus investors seek, and developing countries compete to offer, the highest levels of IP protections. But evaluating the level of IP protection in any given country has become increasingly complex. A proliferation of bilateral agreements, such as free trade agreements (“FTAs”) and bilateral investment treaties (“BITs”), intended to enhance the minimum standards set forth in The Agreement on Trade Related Aspects of Intellectual Property Rights (“TRIPS”), have created uncertainty about precisely what IP protections are …

The Three-Step Test Revisited: How To Use The Test’S Flexibility In National Copyright Law, Christophe Geiger, Daniel Gervais, Martin Senftleben

Joint PIJIP/TLS Research Paper Series

The first version of the three-step test emerged at the 1967 Stockholm Conference for the Revision of the Berne Convention. With the inclusion of versions of the test in the TRIPS Agreement of April 1994, the two WIPO “Internet” treaties of December 1996, the more recent Beijing Treaty on Audiovisual Performances of June 24, 2012, and the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired, or Otherwise Print Disabled (VIP Treaty) of June 27, 2013, the test has taken on the central function of allowing and enabling tailor-made solutions at the national level. …

Supreme Court Amicus Brief Of Law Professors In Support Of Petitioner, Abraham V. Alpha Chi Omega, Christine Farley

Scholarly Articles in Law Reviews & Journals

The Federal Lanham Act provides that injunctive relief, the primary remedy in trademark cases, is to be granted in accordance with the principles of equity. Expressly included among such equitable principles are the defenses of acquiescence, laches, and estoppel. Naturally, these defenses have become commonplace in defending against claims of trademark infringement. In the absence of a statute of limitations courts rely on the doctrine of laches, for example, to determine when trademark infringement claims have become stale. Our informal study of the district in which this case arises shows that from 2005 to 2011, nearly two thirds of answers …