Intellectual Property Law Commons^™

Ebay's Practical Effect: Two Differing Visions, Jay Dratler Jr.

Akron Intellectual Property Journal

This short paper examines the likely effect of the Court's three opinions on the actual practice of intellectual property cases in their remedial phase. The first part briefly discusses the unanimous opinion and its likely economic effect in increasing the already daunting complexity-and therefore the already considerable cost-of intellectual property litigation. The second part examines the first concurring opinion and the effect of its implicit suggestion that nothing much has really changed. The third part examines the possible practical effect of the second concurring opinion. The conclusion then offers a few general observations on where remedial practice in patent cases …

Ebay And The Blackberry: A Media Coverage Case Study, Lisa A. Dolak, Blaine T. Bettinger

Akron Intellectual Property Journal

This paper centers on media coverage relating to eBay and related patent system developments. In particular, it provides a quantitative comparison between media coverage of eBay and that relating to another recent patent case: the litigation between NTP, Inc. and Research in Motion, Ltd. involving the popular BlackBerry® handheld wireless communications device, and examines the extent and nature of the NTP-related coverage in light of the co-pendency of the two cases and the issues they share in common. In so doing, it facilitates consideration of the experience of news coverage consumers - including, presumably, Supreme Court Justices - while eBay …

Russia And Allofmp3.Com: Why The Wto And Wipo Must Create A New System For Resolving Copyright Disputes In The Digital Age, Brian A. Benko

Akron Intellectual Property Journal

This article uses Russian law and Russian-based AllofMP3.com to analyze the private dispute resolution system of the World Intellectual Property Organization 14 ("WIPO"), and the nation-based dispute resolution system of the World Trade Organization 15 ("WTO"). Section I provides an overview of AllofMP3.com and the current system of resolving international copyright dispute. Section 11 applies and analyzes the WIPO Center's private party based dispute resolution system, and the WTO's nation based dispute resolution system. Section III proposes a new system for resolving international copyright disputes in the Digital Age. Section IV concludes this article with a few thoughts on the …

Are The Secrecy Order Compensation Provisions Of The Patent Act Constitutional Under The Fifth Amendment?, Adam J. Citrin

Akron Intellectual Property Journal

The secrecy order provisions of the Patent Act' raise a number of issues under the U.S. Constitution. The primary focus of this note is on the Fifth Amendment issues raised by the Invention Secrecy Act.

Reconciling The "Moral Rights" Of Authors With The First Amendment Right Of Free Speech, John T. Cross

Akron Intellectual Property Journal

The article concludes that the First Amendment does not significantly limit the enforcement of those moral rights recognized by state and federal law. Several features of moral rights laws support this conclusion. First, many acts that infringe moral rights do not qualify as speech, and therefore receive no First Amendment protection. For example, the droit de suite, or resale right, is clearly constitutional under this rationale, as it involves no speech whatsoever. Second, even when the offending act is speech, most moral rights laws can be justified, depending on the circumstances, by one or more of several arguments. Indeed, many …

Patent Litigation In Japan, David W. Hill, Shinichi Murata

Akron Intellectual Property Journal

This article will explore how patent litigation in Japan has changed and will also compare and contrast aspects of patent litigation in the U.S. and Japan.

In Part II, we show recent statistical data on Japanese patent infringement litigation. Parts III and IV briefly review the Japanese judicial system and legal professionals in the area of intellectual property. Part V addresses patent-infringement actions in Japan and the recent amendments of the Code of Civil Procedure and the Patent Law. Next, Parts VI and VII discuss infringement analysis and possible defenses in patent-infringement litigation. Part VIII reviews how to calculate the …

"And If It Wasn't For Me[Rrick], Then Where Would You Be Ms. Gypsy Rose Lee?" An Argument For Copyright Protection For Theatre Directors Through A Reasonable Definition Of Theatrical Stage Directions And An Understanding Of The Theatre Company, Carlos A. Guerrero

Akron Intellectual Property Journal

Federal courts have yet to decide whether stage directions are copyrightable works, and it is unlikely that the Tam Lim lawsuit or the Urinetown controversy will bring such a decision. In the past decade, a federal court resolution as to the copyrightability of theatrical stage directions has been delayed by out of court settlements. Additionally, conflicting views by the legal6 and the artistic community's predictions of catastrophic consequences if copyright protection is extended to theatrical directors have blurred the predictability of a resolution. This article argues that theatrical stage directions should be afforded copyright protection. First, this article gives a …

Phillips V. Awh Corporation: Asking Questions, But Refusing To Hear The Answer - A Critical Analysis Of The Court Of Appeals For The Federal Circuit's Recent Decision Regarding The Use Of Dictionaries And The Standard Of Review In Claim Construction, Christopher A. Jethrow

Akron Intellectual Property Journal

This note begins in Section II by summarizing the history of the patent system and introducing two of the main issues raised in Phillips v. AWH Corp. Section III gives the history of Phillips v. AWH Corp. and how it has progressed through the legal system. Section IV analyzes the two main issues raised in Phillips and the impact of the decision. Finally, Section V concludes with closing remarks for the future of patent law in the United States.

The Lawyer's Duty Of Disclosure Ethics And Sarbanes-Oxley The New Conundrum For Patent Lawyers, Abraham C. Reich, Steven J. Rocci

Akron Intellectual Property Journal

The general purpose of this paper is to sensitize intellectual property lawyers to the potential impact on their practice created by Sarbanes-Oxley. At a more detailed level, and because of the unique challenges facing them, this paper addresses Sarbanes-Oxley's potential impact on patent lawyers who practice before the PTO, even when it is the patent lawyer's sole practice. To that end, this paper will highlight relevant portions of Rule 56, the relevant ethical code sections, and the pertinent considerations under Sarbanes-Oxley.

Injunctive Relief In The Itc Post Ebay, John F. Rabena, Kim E. Choate

Akron Intellectual Property Journal

The Supreme Court's decision in eBay Inc. v. MercExchange drastically changed the bargaining landscape for patent owners and accused infringers. Gone is the default threat of an injunction, at least for disputes that are limited to district court enforcement. Some expect the impact of eBay to usher patent owners to the U.S. International Trade Commission (ITC) in situations where jurisdiction can be met, because the ITC escapes eBay's mandate. But injunctive relief in the ITC is not foolproof. Both patent owners and accused infringers need to know the pitfalls that loom in the ITC's injunctive procedures.

The Return Of The Supreme Court To Patent Law, Timothy R. Holbrook

Akron Intellectual Property Journal

The diverse set of patent-related cases decided by the Supreme Court has demonstrated that the Court is not only concerned with narrow issues that generally fall within the penumbra of constitutional issues. Instead, the recent set of cases selected for certiorari primarily related to the core aspects of patent law. During this unsettled period in patent law, with calls for reform coming from commentators and Congress itself, the Court is beginning to articulate its viewpoints on the appropriate scope of protection afforded by patents. The following section discusses the most recent cases before the Court that either are patent cases …

The Effects Of The Fair Use Doctrine On Text-Book Publishing And Copying; Part Ii, Roger Billings

Akron Law Review

Although not expressly authorized by law, it has, through custom, become regarded as a fair use for scholars to make handwritten copies of copyrighted materials needed for research. The basis for allowing hand-copying is that it is such a slow, tedious method of reproduction that scholars usually choose to purchase the complete work rather than to hand-copy excerpts from it. Consequently, hand-copying does not significantly reduce publishers' sales. However, this reasoning obviously cannot be applied to photocopying. As photocopying, a fast and convenient process, becomes cheaper than buying the book, when a professor desires to make a complete volume for …

The Effect Of The Fair Use Doctrine On Text-Book Publishing And Copying, Roger Billings

Akron Law Review

Perhaps nowhere will photocopying be more beneficial than in the field of education. The question is, what effect will it have on publishing? Senator Quentin Burdick stated the basic problem when he said, ". . . [Y]ou have someone who spends years in perfecting a textbook, and all of a sudden it is used free of charge. Where does he sell textbooks?" The problem of unauthorized photocopying of textbooks is considered one of the more difficult ones encountered in the area of fair use, an area itself regarded as one of the most troublesome in the whole law of copyright. …

The Misapplication Of Antitrust Theory To Patent License Conditions, Theodore L. Bowes

Akron Law Review

OVER THE past few years, there has been wide debate over patent license law, the law regarding the conditions patent owners can legally impose on licensees or the permissible scope of license grants. The controversy came to a head in 1970 when Senator Scott of Pennsylvania introduced amendments' to a then-pending bill intended to revise the patent laws. According to the Senator, the amendments were intended to stabilize and codify license law. The amendments were rejected in the subcommittee and the bill was not enacted.

The Misapplication Of Antitrust Theory To Patent License Conditions, Theodore L. Bowes

Akron Law Review

OVER THE past few years, there has been wide debate over patent license law, the law regarding the conditions patent owners can legally impose on licensees or the permissible scope of license grants. The controversy came to a head in 1970 when Senator Scott of Pennsylvania introduced amendments' to a then-pending bill intended to revise the patent laws. According to the Senator, the amendments were intended to stabilize and codify license law. The amendments were rejected in the subcommittee and the bill was not enacted.

Patentability Of Micro-Organisms, Diamond V. Chakrabarty, Ann Amer Brennan

Akron Law Review

The decision rendered by the Supreme Court in Diamond v. Chakrabarty allows the new science of biotechnology to come out of the closet and to take its place in the public domain with other scientific achievements that have, for better or for worse, shaped the industrial life of the United States. It is probable that the products which will result from this emerging science will affect each of us in some way during our lifetimes.

The Protection Of Property Rights In Computer Software, Edward W. Rilee

Akron Law Review

During the last decade a number of attempts have been made by the courts in the realm of patent and copyright law to settle the issue of the protection of property rights in computer software. These traditional methods of protection, however, have not been able to assimilate this relatively new technological invention. Likewise, at the start of a new decade, little or no progress towards a comprehensive form of software protection can be detected. This paper will examine the problems associated with using federal patent or copyright law to provide computer software protection and discuss why state trade secret protection …

Patent Law Reform Via The Federal Courts Improvement Act Of 1982: The Transformation Of Patentability Jurisprudence, Timothy J. O'Hearn

Akron Law Review

The Federal Courts Improvement Act was signed into law on April 2, 1982. Set for an effective date of October 1, 1982, the result of this enactment has been the merger of the Court of Customs and Patent Appeals and the Court of Claims into a new appellate federal court: the Court of Appeals for the Federal Circuit. Unlike most appellate courts, the jurisdiction of the new Federal Circuit is determined primarily by subject matter, rather than geography. As a result, this change in the federal judiciary will be felt directly in only a few special legal subject areas. Among …

Protecting The High-Tech Frontier: The Need For Stronger Process Patent Laws, Bruce Kramer

Akron Law Review

But difficulties exist in transforming technological possibilities into realities. Aside from scientific and engineering problems, legal obstacles stand in the way of technological development. One major legal impediment is the lack of protection afforded by U.S. process patent laws. All too often, foreign companies infringe on process patents obtained by American companies. For example, Sohio developed a process to manufacture ceramic heat seals for turbine engines and obtained a patent on it, but Japanese competitor Kyocera soon entered the market with a similar process." Other major companies which claim their process patents have been violated include Allied-Signal, Corning Glass Works, …

In Re Newman: The Federal Circuit Dismantles An Obstacle For Perpetual Motion Patent Applicants, Bruce Kramer

Akron Law Review

This note first gives a general background on perpetual motion, because a basic understanding of the subject is helpful in getting a good perspective on the case. Next, the note provides the factual setting of the case leading to the court's decision. Then, the note examines the rationale the court used in reaching its decision. Lastly, the note provides additional insight into the legal problems posed by perpetual motion, both in general and in the In re Newman case in particular.

You Can't Always Get What You Want But Digital Sampling Can Get What You Need!, Ronald Mark Wells

Akron Law Review

This comment will examine copyright law, its role in the popular music industry, and its relationship with digital sampling. To lay the groundwork, Part I will examine the function of copyright law as it relates to musical compositions. Part II will then peruse the area of sound recordings. Finally, Part III will take a critical look at digital sound sampling and its legitimacy in relation to present copyright law

Shifting Sentiments Toward Antitrust Enforcement: The Impact Upon Antitrust Enforcement In Licensing Of Patented Technology Arrangements Containing Tying Agreements, Michael L. Jordan

Akron Law Review

Nothing so drastic as the repeal of the antitrust laws has occurred. However, considerable leeway exists for changing attitudes to alter judicial interpretation and government enforcement of the relevant statutes. This comment scrutinizes one antitrust issue with potential international significance: tying arrangements in licensing of patented technology. This comment also analyzes the impact of changing attitudes on antitrust law enforcement in this area.

Film Artists Bushwhacked By The Coloroids: One-Hundredth Congress To The Rescue?, Nicholas Swyrydenko

Akron Law Review

The late, great film director, John Huston, in a videotaped speech prepared specially before his death for presentation at a Senate hearing on the issue of the colorization of black and white films, raged that he and other film artists, who had worked to produce such classic films as The Maltese Falcon, were being "bushwhacked by the coloroids," and he pleaded with Congress to step in to preserve that work.' This comment will trace the response of the One-Hundredth Congress to the pleas of John Huston and other film artists to preserve the original integrity of their films, and …

The Human Genome: A Patenting Dilemma, Pamela Docherty

Akron Law Review

This Comment will address the conflict between the U.S. patent laws and biotechnology by focusing on the NIH patent application.

The first part of this Comment discusses the objectives and statutory requirements of the patent system, which the NIH application purportedly did not meet. Next, this Comment focuses on the debate between NIH and its detractors. It explains NIH's reasons for its actions and discusses the criticisms leveled at the agency. Finally, this Comment presents solutions to the problems that have been uncovered by this debate regarding the patentability of genes.

Hilmer Doctrine And Patent System Harmonization: What Does A Foreign Inventor Have At Stake?, Kevin L. Leffel

Akron Law Review

The following discussion begins with a historical analysis that outlines the boundaries and illustrates the basis of Hilmer doctrine. Examples of the effects of Hilmer doctrine are presented as part of that discussion. Next, effects of the application of Hilmer doctrine after an interference are discussed followed by an analysis of the Patent Harmonization Act of 1992.

Copyright Infringement Of Musical Compositions: A Systematic Appproach, E. Scott Fruehwald

Akron Law Review

This article addresses the problems that courts face when dealing with copyright infringement of musical compositions. Infringement of music presents special problems for judges and juries because music is an intuitive art that is nonverbal and nonvisual. Consequently, traditional methods of establishing infringement are often unreliable when applied to music.

This paper will concentrate on the question of whether a composition that is similar to, but not the same as, another work infringes on the other work. I This inquiry is both qualitative and quantitative. First, one must establish that the first work employs material from the second work. Determining …

Gray Market Goods Produced By Foreign Affiliates Of The U.S. Trademark Owner: Should The Lanham Act Provide A Remedy?, Steven M. Auvil

Akron Law Review

I shall argue that, with limited exceptions, the problem posed by genuine gray market imports from an affiliated source is not a trademark problem per se, and as such federal relief must come from Congress in the form of sui generis legislation. First, I shall briefly examine the historical background of this problem and discuss the debate leading up to the K Mart decision. Second, I shall discuss the nature of the trademark right, provisions under the Lanham Act that safeguard that right and several illustrative gray market cases decided thereunder. Third, I shall discuss the relationship between the trademark …

The "On-Sale" Bar To Patentability: Actual Reduction To Practice Not Required In Pfaff V. Wells Electronics, Inc., Daniel J. Whitman

Akron Law Review

A patent grants to an inventor the exclusive right to prevent others from making, using, or selling his invention throughout the United States. However, an inventor is statutorily barred from receiving a patent for an invention that was “on sale” prior to one year before his U.S. filing date. An offer to sell cannot bar patentability until an invention exists. The general issue in applying the “on sale” bar is “[a]t what point is the invention sufficiently developed such that, coupled with an offer to sell, the inventor’s commercial activities invoke the on sale bar?” The United States Supreme Court’s …

Human Creativity For Economic Development: Patents Propel Technology, Robert M. Sherwood

Akron Law Review

Intellectual property both leads and lags the development of new technology. It lags in the sense that developments usually precede the law. Today science is accelerating so rapidly that the lawyers and policy analysts can barely grasp what the new questions are, much less supply answers. How are we to adapt the historic forms of protection to deal with new things like patents for genetically modified life forms, or for the Internet? Yet, this process of adaptation is not new. There was a time when maps were all the rage in Europe and judges puzzled over how much difference was …

Copyright Tensions In A Digital Age, John D. Shuff, Geoffrey T. Holtz

Akron Law Review

The rapid and exponential expansion of our ability to duplicate and disseminate information by digital means has rejuvenated inherent tensions in the law pertaining to copyright and has created some new ones. Not since the advent of radio in the early 1900s have such tensions come so squarely into focus. Even though courts are rarely, if ever, called upon to address certain of these tensions since the passage of the Copyright Act of 1976, they are being called upon to do so now