Intellectual Property Law Commons^™

Can Competition Considerations Trump Trademarks Rights?, Ioannis Kokkoris

Chicago-Kent Journal of Intellectual Property

Competition law has in the past tended to see suspiciously the protection of trademark as directly opposed to the goals of competition law. As this paper shows this view has been abandoned and substituted by a more synthetic approach in which the goals of trademark law and competition law are not incompatible but may be pursued conjunctly. The paper discusses the importance and practical feasibility of striking a balance between competition law and trademark rights, with a specific attention to the specificities of trademarks. The paper will focus on the issue of the compatibility between the goals of trademark law …

Ai Output: A Human Condition That Should Not Be Protected Now, Or Maybe Ever, Xiao Wang

Chicago-Kent Journal of Intellectual Property

AI is usually considered to be a form of automatic and autonomous work, but when applied to the creation of literary and artistic works, challenges arise in deciding whether the AI is the de facto author of its output and whether AI outputs or AI-generated products should be protected under the copyright system. This article argues that these outputs should be human creations because the working principles of AI determine that AI functions merely as a mathematical tool applied by humans to not only conceive of but also to execute the creation of AI outputs. The creativity reflected in these …

Insights From The First Year Of The Uspto's New Motion To Amend Pilot Program, Brooke M. Wilner, Amanda K. Murphy, Ph.D.

Chicago-Kent Journal of Intellectual Property

No abstract provided.

#Omg - Omissions As Media Gaffes: Endorsements In Social Media Advertisements And Influencers' Disclosure Obligations, Maximillian Plail

Chicago-Kent Journal of Intellectual Property

Court decisions in Germany tend to draw little media interest, but an exception to this comes in the form of decisions relating to disclosure obligations on social media, such as the recent case involving Cathy Hummels. Due to enforcement issues and the paucity of damages awarded to individual and companies, there is a significant lack of literature on this field of law. As a consequence, this study, which compares the U.S. and Germany while also proposing how, exactly, the law needs to change, is unique. Hardly any other area of law is home to this much ambiguity that affects such …

The Situation Of Orphan Works Under Different Jurisdictions, Bzhar Abdullah Ahmed

Chicago-Kent Journal of Intellectual Property

The article analyses the situation of orphan works solutions under several different international jurisdictions, examining each jurisdiction in turn. Various solutions for addressing the problem of orphan works are provided by the jurisdiction of each country, the most comprehensive scheme being offered by the law of the United Kingdom. The UK provides three types of solution: an exceptions-based model, compulsory licensing and extended collective licensing. The author demonstrates that as this problem largely has emerged with the proliferation of technology, some countries have not considered orphan works an issue serious enough to take steps to address. Some countries are still …

The Constitution Commandeth: Thou Shalt Not Protect The Same Subject Matter Under Design Patent And Trade Dress Laws, Kenneth B. Germain, Louis H. Sitler

Chicago-Kent Journal of Intellectual Property

For many years and still currently, it has been assumed—and even expressly asserted—that it is perfectly permissible to “stack” various legal theories (concurrently or consecutively) to protect nonfunctional “designs” for products. This is despite infrequent but cogent arguments that the available theories, notably design patents and product design trade dress—both of which are based upon federal statutes—are not Constitutionally compatible due to at least the concept of Superfluity. The authors of this article carefully examine the origin, nature, and meaning of these two types of IP protections in the context of their two Constitutional bases—the Patent/Copyright Clause and the Commerce …

Against Progress: Interventions About Equality In Supreme Court Cases About Copyright Law, Jessica Silbey

Chicago-Kent Journal of Intellectual Property

Despite expanding scope and the rise of “more” intellectual property, Against Progress demonstrates that turn-of-the century intellectual property practice challenges the “progress as more” paradigm. Through various methodological interventions – close reading of cases, doctrinal analysis, and various qualitative empirical methods – Against Progress demonstrates how contemporary accounts of intellectual property are not primarily anchored by claims of “more” or in economic growth terms. Instead, creative and innovative practices (and disputes concerning them) revolve around adjacent values and principles central to our constitutional system such as equality, privacy, and community or general welfare.

Two Centuries Of Trademark And Copyright Law: A Citation-Network-Analysis Approach, Joseph Scott Miller

Chicago-Kent Journal of Intellectual Property

The Supreme Court has decided many more patent cases than trademark or copyright cases. This is so not just in the past decade—the focus of the tenth annual Supreme Court IP Review at the Chicago-Kent College of Law, in September 2019—but in the past 20 decades. In gathering the entire body of the Court’s IP caselaw for study with cita-tion-network-analysis tools, I found that patent cases greatly outnum-ber trademark and copyright cases. Moreover, patent cases, especially patent and antitrust cases, dominate the metrics for the most central cases in the citation network.

Aesthetic Functionality At A Crossroads: What A Troublesome Doctrine Can Learn From Its Past, Xiaoren Wang

Chicago-Kent Journal of Intellectual Property

With the rise of branding and marketing, firms started using trade dress such as product features or packages to identify themselves. Some firms claim an exclusive trademark right on their trade dress. However, granting a trademark right to some trade dresses might hinder competition. For example, if one firm claims trademark on the heart-shaped candy box, it will prevent others from using the same package to compete in the Valentine’s Day sweets market. So U.S. courts developed a doctrine called aesthetic functionality to avoid the competition hindrance consequence. Aesthetic functionality refers to the situation where a trade dress has the …

Ai Patents: A Data Driven Approach, Brian S. Haney

Chicago-Kent Journal of Intellectual Property

While artificial intelligence (AI) research brings challenges, the resulting systems are no accident. In fact, academics, researchers, and industry professionals have been developing AI systems since the early 1900s. AI is a field uniquely positioned at the intersection of several scientific disciplines including computer science, applied mathematics, and neuroscience. The AI design process is meticulous, deliberate, and time-consuming – involving intensive mathematical theory, data processing, and computer programming. All the while, AI’s economic value is accelerating. As such, protecting the intellectual property (IP) springing from this work is a keystone for technology firms acting in competitive markets.

Choosing The Consequences Of Tam And Brunetti, Alfred C. Yen

Chicago-Kent Journal of Intellectual Property

In Matal v. Tam and Iancu v. Brunetti, the Supreme Court did something it has never done before – namely apply strict First Amendment scrutiny to trademark law. This is a big deal. Many have argued, to relatively little effect, that intellectual property laws, like trademarks, raise serious free speech problems. It is therefore significant news for the Court to declare portions of the Lanham Act unconstitutional not once, but twice.

Ranking Parallel Petitions Before The Ptab: A Survey, Monica Grewal, Heather Petruzzi, Wenli Gu Phd

Chicago-Kent Journal of Intellectual Property

To understand the trends in recent ranking practice, this article an-alyzes a subset of ranked parallel petitions that received an institution decision before or on February 20, 2020. Using a search filter in Docket Navigator to locate multiple petitions challenging the same pa-tent, the authors identified 39 occurrences of ranked parallel petitions that challenge the same claims of the same patents, as well as 2 occur-rences of ranked parallel petitions that challenge different claims of the same patent.

Unfettered Discretion: A Closer Look At The Board's Discretion To Deny Institution, Joel D. Sayres, Reid E. Dodge

Chicago-Kent Journal of Intellectual Property

To ensure that the doorway to IPRs was not limitless, Congress de-lineated a specific threshold before a trial could be instituted. That threshold is set forth in 35 U.S.C. § 314(a), which provides that IPR may not be instituted unless the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” However, the Board has increas-ingly identified circumstances in which it will not institute IPR, even where a petitioner satisfies this statutory threshold. Indeed, the Board has seemingly adopted the view that it has …

Expert Discovery Protections: Comparing District Courts With The Ptab, Blaine M. Hackman, Vi T. Tran, Katherine A. Helm

Chicago-Kent Journal of Intellectual Property

Expert witness testimony can be critical in patent litigation in all forums. In Patent Trial and Appeal Board (“PTAB”) proceedings, particularly inter partes review (“IPR”) and post-grant review (“PGR”), expert testimony through declarations and depositions plays a central role in both challenging and defending patents. In district courts, live expert testimony is key to proving infringement and invalidity. Accordingly, the legal protections governing the disclosure of expert testimony in discovery in both forums are carefully proscribed, but with notable distinctions.

Post-Ait Review Of Real Party In Interest Decisions, Stephanie M. Brooker, Robert Breetz, Matthew Johnson, Thomas Ritchie

Chicago-Kent Journal of Intellectual Property

Throughout the Patent Trial and Appeal Board’s (“PTAB”) history, patent owners have tried to leverage a petitioner’s alleged failure to name all real parties-in-interest (“RPIs”) as a way to achieve denial of an inter partes review (“IPR”) petition or trial termination. The effectiveness of those efforts has ebbed and flowed. Initially, some PTAB panels viewed naming of RPIs as a jurisdictional requirement, concluding that RPI-naming errors were not fixable after the 35 U.S.C. § 315(b) one-year bar. Petitioners could lose their petition filing date based on RPI missteps, resulting in then untimely petitions. Later decisions backed away from that hardline …

Renegade Riders And The Marks They Love: Can The Government Tear That Patch Right Off Your Leather Jacket?, Angela M. Nieves

Chicago-Kent Journal of Intellectual Property

A collective membership mark is a type of non-commercial trademark used to identify and associate with something or someone. In February 2019, a California district court ruled that the government could not forcibly seize from the Mongols Motorcycle Club their prized collective membership marks, seemingly halting a ten-year legal tug of war. The court held that forfeiture of these marks was not only unconstitutional, it was illogical.

This Comment explains how and why expressive marks like the Mongols’ should not be automatically deemed off limits to the government. It proposes a trademark-specific doctrine to help courts draw a constitutional line …

The Eleventh Auer: The Effect Of Kisor V. Wilkie On Rulemaking And Adjudication At The United States Patent And Trademark Office, Andrew Schneider, Jonathan Stroud

Chicago-Kent Journal of Intellectual Property

Courts have long deferred to an agency’s interpretation of an ambiguous rule or statute, in light of the agency’s relevant technical expertise. But some judges prefer that Article III courts review everything; and deferring often involves relying on an agency’s interpretation of a genuinely ambiguous statute—the oft-discussed Chevron deference doctrine. This Article analyzes the more nuanced Auer deference, where a court defers to an agency’s later interpretation of its own ambiguous rule or regulation. Recently, the Supreme Court took and decided Kisor v. Wilkie, which dramatically modified the Auer doctrine. While Kisor appealed a claim for veteran’s benefits that implicated …

Tripping Over The Eu Trade Secret Directive: "Reasonable Steps" To Get Back On Track, Bianca Fox

Chicago-Kent Journal of Intellectual Property

Trade secrets are a crucial tool for global firms today, including those that do business within the European Union (“EU”). The 2016 European Union Trade Secret Directive (“Directive”) attempted to establish uniform trade secret protection across all twenty-eight EU Member States but created problems in its wake. In particular, the Directive put no restrictions on whether Member States could specify certain “reasonable steps” that businesses must take in order to be afforded trade secret protection. This Article argues that Member States should be required to follow the trade secret definition laid out in Article 2 of the Directive and not …

German Law On Patent Injunctions: Legal Framework And Recent Developments, Peter Picht Phd

Chicago-Kent Journal of Intellectual Property

No abstract provided.

Into The Woods: A Biologic Patent Thicket Analysis, Jeffrey Wu, Claire Wan-Chiung Cheng

Chicago-Kent Journal of Intellectual Property

Some drug companies, brand biologic companies, in particular, have been accused of covering only a single drug with more than eighty patents. These drug patents accumulate to what critics claim as one of the major culprits of high drug prices— “patent thickets.” However, current literature mostly focuses on the substantial patent counts and less on the characteristics and the causes of these patent thickets; but to effectively understand and tackle this issue, more thorough discussions are necessary. This article aims to provide further insight into this issue by analyzing and comparing the U.S. patents that cover top-selling biologics and small-molecule …

Perfecting U.S. Patentable Subject Matter - Merging The European Approach And The American Principles, Ilija Ilijovski

Chicago-Kent Journal of Intellectual Property

This article illuminates the recent developments in the field of the subject matter eligibility of the inventions and offers a resolution to the crucial issues in the field. The solution for resolving of the crucial issues combines the current U.S. approach of affirmative defining of the scope of the subject matter of the patents and the approach of the European Patent Convention, of both affirmative and negative defining of the patentable subject matter. In particular, the article provides a draft legislation as a more sustainable and precise solution that emerged from the comparison between the experience of the participants in …

Discretionary Denials Of Ipr Institution, Jasper Tran, Matthew Chung, David Maiorana, Matthew Johnson

Chicago-Kent Journal of Intellectual Property

No abstract provided.

Litigating Invalidity After Ipr Resolution, Libbie Dimarco, Nathan Speed

Chicago-Kent Journal of Intellectual Property

It is becoming increasingly apparent that inter partes review (“IPR”) petitioner estoppel after the Patent Trial and Appeal Board (“PTAB”) issues a final written decision can have broad consequences on a petitioner’s invalidity defenses in civil actions. This article will examine the practical impact of IPR estoppel and discuss strategic considerations for IPR parties involved in parallel district court or International Trade Commission (“ITC”) actions. This article will address four main questions : (1) when and how a petitioner can use paper prior art in a § 102 or 103 defense after an unsuccessful IPR; (2) how IPR estoppel may …

The Disappointments Of Networks, Henry Fraser Phd

Chicago-Kent Journal of Intellectual Property

The past 25 years have seen a ‘turn to culture’ in copyright scholarship. This cultural turn has produced an expansive account of copyright’s disadvantages with respect to qualitative cultural and political goals such as: promoting democracy, individual self-authorship, expressive diversity, and more inclusive power distribution in shaping culture and discourse. The prevailing view among proponents of the cultural turn is that copyright stands in the way of the democratisation of creative and discursive spheres online. This article challenges that view. I contend that online, ‘free’ content economies—characterised by peer production, decentralised selection, and peer to peer content sharing—have not lived …

The Complicated Relationship Of Patent Examination And Invalidation, Gregory Reilly

All Faculty Scholarship

The conventional view is that the Patent Office examines patent applications before issuance to assure compliance with the statutory criteria of patentability. Ex post invalidation in district court litigation or Patent Office cancellation proceedings then reviews the Patent Office’s work to correct errors that result from the Patent Office’s shortcomings, bias, or “rational ignorance” that limits resources spent on examination because of the irrelevance of most patents. Scholars, the Federal Circuit, and the Supreme Court have all endorsed this conventional view. However, it is wrong—or at least overly simplistic. The American patent system is only partially a system of ex …

The Confusion Of Trademark Territoriality, Joseph Michael Levy

Chicago-Kent Journal of Intellectual Property

No abstract provided.

The Death Of Moral Freedom: How The Trademark Dilution Act Has Allowed Federal Courts To Punish Subjectively-Defined Immoral Secondary Use Of Trademarks, David E. Missirian

Chicago-Kent Journal of Intellectual Property

No abstract provided.

Patent Showdown At The N.D. C[Orr]Al, Peter S. Menell

Chicago-Kent Journal of Intellectual Property

No abstract provided.

Parity Analysis: Topological Considerations For Patent Valuation And Portfolio Management, James Skelley

Chicago-Kent Journal of Intellectual Property

No abstract provided.

Judge-Made Solutions To Patent Litigation, Sapna Kumar

Chicago-Kent Journal of Intellectual Property

No abstract provided.