Intellectual Property Law Commons^™

Some Speculation About Mirror Neurons And Copyright, 14 J. Marshall Rev. Intell. Prop. L. 410 (2015), Stephen Mcjohn

UIC Review of Intellectual Property Law

Copyright plays a central role in regulating cultural transmission. Authors are given exclusive rights to copy, adapt, distribute, perform and display their works. These rights have limits, most notable fair use and the non-protection of ideas. In setting the bounds of those limits, courts implicitly follow some basic folk psychology. This paper would explore how neuroscience can be used to illuminate and challenge those background assumptions. Copyright law implicitly assumes that literal copying is not necessary for cultural transmission. If there are many ways to express the same idea, then transmission of an idea will not be restricted by prohibiting …

Pulling The 'Trigger' On The Hatch-Waxman Act's 180-Day Exclusivity Using Inter Partes Review, 14 J. Marshall Rev. Intell. Prop. L. 453 (2015), Jaimin Shah

UIC Review of Intellectual Property Law

The America Invents Act has put in place quick and efficient mechanisms for challenging granted patents in an Article I adversarial setting. And the Hatch-Waxman Act has been the roadmap for generic drug approval-related patent infringement action in Article III courts. An interesting, heretofore unaddressed question lurks at an intersection of the two pieces of enterprising legislation: What impact should a final decision canceling patent claims under the AIA setting have on the forfeiture of 180-day exclusivity under the Hatch-Waxman Act? The 180-day exclusivity is an important piece in the Hatch-Waxman game of chess. This comment presents both the case …

The Law As Art Material, 14 J. Marshall Rev. Intell. Prop. L. 418 (2015), Daniel Mellis

UIC Review of Intellectual Property Law

Daniel Mellis is an artist who incorporates the law and legal language into his work. This article discusses four such works: I. A postcard that predicts when its copyright will expire. II. A performance piece that uses the Visual Artists Rights Act to turn money into Art. III. An installation about the fourth amendment on the paper bags at a liquor store. IV. A bureaucratic entity that allows people to renounce, not their citizenship, but rather their symbolic attachment in a nation state or empire.

Revisited 2015: Protection Of U.S. Trade Secret Assets: Critical Amendments To The Economic Espionage Act Of 1996, 14 J. Marshall Rev. Intell. Prop. L. 476 (2015), R. Mark Halligan

UIC Review of Intellectual Property Law

In order to protect the national and economic interests of the United States, the Economic Espionage Act was enacted in 1996. Although intended to prevent and deter trade secret theft, the EEA is limited to criminal prosecutions. Critical amendments to the EEA are required to create a civil cause of action in the new information-based economy and the international marketplace. In 2008, the author recommended two critical amendments to the Economic Espionage Act that have been vetted and have been the subject of legislative proposals for the past 7 years. The author now revisits developments since 2008 and underscores the …

The Economics Of Memory: How Copyright Decides Which Books Do (And Don’T) Become Classics, 14 J. Marshall Rev. Intell. Prop. L. 521 (2015), Stephen Maurer

UIC Review of Intellectual Property Law

Legal scholars usually analyze copyright as an incentive and sometime obstacle to creation. This encourages us to see publishers as middlemen who siphon off rents that would be better spent on authors. By comparison, recent social science research emphasizes that word-of-mouth markets are highly imperfect. This means that many deserving titles will never find readers unless some publisher takes the trouble to market them. But this second view is deeply subversive. After all, the need for publishers – and reward – does not end when a book is published. At least in principle, copyright should last forever. The trouble with …

Who Owns Ellen's Oscar Selfie? Deciphering Rights Of Attribution Concerning User Generated Content On Social Media, 14 J. Marshall Rev. Intell. Prop. L. 564 (2015), Michael Reed

UIC Review of Intellectual Property Law

One of the most memorable moments of the 2014 Academy Awards was Ellen DeGeneres’s famous selfie taken with Bradley Cooper, Meryl Streep, and other famous friends. This so-called “Oscar Selfie” has been estimated to be worth millions of advertising dollars for the event’s sponsor, Samsung. DeGeneres’ use of selfies as a promotional tool was novel method of documenting Hollywood’s greatest night which proved an undeniable successful. However, the fact that Bradley Cooper actually captured the Oscar Selfie raises a number of important questions about how user-generated content distributed through social media fits into existing intellectual property law. At the heart …

Can I Show You Something? The Public Use Bar And Overemphasis On Public Access, 14 J. Marshall Rev. Intell. Prop. L. 590 (2015), Benjamin Lee

UIC Review of Intellectual Property Law

The public use bar has long been a shield protecting the public against unscrupulous inventors hoping to create public dependency before seeking patent monopolization. Courts have repeatedly sided in favor of protecting the public interest. But how much protection do inventors themselves deserve in this battle of interests? This comment examines the history and application of the tests for public use utilized by the courts. Going further, the comment highlights the Federal Circuit’s low corroborating evidence requirement in Pronova Biopharma Norge AS v. Teva Pharmaceuticals USA and questions whether this comports with the policies underlying patent law or too readily …

The Building Blocks Of Copyright Protection For Architectural Works: Roadblock Or Masterpiece?, 14 J. Marshall Rev. Intell. Prop. L. 607 (2015), Vaughn Drozd

UIC Review of Intellectual Property Law

The current test for determining substantial similarity for architectural works is detrimental to the utility of the United States as well as architects’ creativity. The “total concept and feel” test is ill-equipped to determine whether architectural copyright infringement has occurred, as it does take into account the value that many architectural works provide to society. Further, the “ordinary observer” is an artificial concept that cannot be used to determine whether copyright infringement has occurred with such a highly technical field as architecture. This comment breaks down the current system used to analyze copyright infringement for architectural works. Then, this comment …

Patent Troll: The Brewing Storm Of Patent Reform In The United States Of America, 15 J. Marshall Rev. Intell. Prop. L. 63 (2015), Prachi Agarwal

UIC Review of Intellectual Property Law

“Patent trolls” have been a problem in the U.S. for many years, creating a storm of patent reform in all three branches of the U.S. government. The modus operandi of these companies (known as non-practicing entities “NPEs” or Patent Assertion Entities “PAEs”) is to acquire patents with no intention of practicing the invention or developing their products and with the sole purpose of licensing them aggressively or instituting lawsuits against infringers. This practice has been criticized as being anti-competitive as it curbs economic growth and technological development and stifles competition. The U.S. Congress’ first attempt to control the patent troll …

The Intersection Between Ucc Article 9 And Intellectual Property: The Need For A National, Centralized Filing System For Ip, 15 J. Marshall Rev. Intell. Prop. L. 83 (2015), Willa Gibson

UIC Review of Intellectual Property Law

Intellectual property has emerged as a commercially valuable and dominant asset to our economy promoting innovative technological developments that have and continue to stimulate economic growth promoting our free-enterprise, market-based system. Secured transactions involving intellectual property also promotes and stimulates our economic growth. Such transactions provide innovators with much needed capital to design, develop, and market their intellectual property. Despite the economic benefits derived from secured financing involving such property, legal uncertainty exists whether federal or state law governs how to perfect best security interests in intellectual property. Having a perfected security interest in collateral puts a lender in its …

The Conflict Between An Athlete’S Right Of Publicity And The First Amendment, 15 J. Marshall Rev. Intell. Prop. L. 117 (2015), Edward Kuester

UIC Review of Intellectual Property Law

The recent rise of fantasy sports has created a conflict between an athlete’s right of publicity and the First Amendment of the Constitution. The legal question being discussed is whether athletes have a right of publicity in their identity, specifically their performance statistics and biographical information. If a right of publicity violation does exist, courts will have to determine whether a fantasy provider’s First Amendment privilege can prevail against an athlete’s publicity rights. This comment examines recent litigation surrounding athletes’ identities and the problems courts have in balancing the conflict between an athlete’s right of publicity and the First Amendment. …

From The Statute Of Anne To Z.Z. Top: The Strange World Of American Sound Recordings, How It Came About, And Why It Will Never Go Away, 15 J. Marshall Rev. Intell. Prop. L. 1 (2015), Bruce Epperson

UIC Review of Intellectual Property Law

Uniquely among all industrialized nations, the United States extended no copyright protection to sound recordings until 1972. The individual aural representation captured for playback could only be protected by the common or statutory laws of individual states. This feature was carried forward into the comprehensive revision of the Copyright Act implemented on January 1, 1978. Although the Copyright Act contained a sweeping provision that brought works created prior to the legislation under federal protection, pre-1972 sound recordings were specifically exempted. The extent to which this lack of status has created a legal and environmental void is best demonstrated by a …

Toward A Patent Exhaustion Regime For Sustainable Development, 32 Berkeley J. Int'l Law. 330 (2014), Benjamin Liu

UIC Law Open Access Faculty Scholarship

This Article argues that the current exhaustion doctrine, when applied to the refurbishing industry, fails to balance its mandate of promoting technological progress with the broader program of sustainable development and is therefore unsuitable for countries on the modernization path. First, what constitutes an infringing “making” remains underdetermined. Second, the evidentiary hurdle for proving legal refurbishment is too onerous for the low margin and under-resourced refurbishing industry. Finally, the all-or-nothing approach to judging infringement fails to account for the nuanced cost-benefit nexus that exists between patentees, refurbishers, and society at large and discourages private ordering. To recalibrate the balance between …

Food Art: Protecting "Food Presentation" Under U.S. Intellectual Property Law, 14 J. Marshall Rev. Intell. Prop. L. 1 (2014), Cathay Smith

UIC Review of Intellectual Property Law

In 2006, a scandal broke in the culinary world. It was alleged that Robin Wickens, chef at (now closed) Interlude restaurant in Melbourne, Australia, had copied dishes by renowned American chefs Wylie Dufresne, Jose Andres, and Grant Achatz. It is not uncommon for chefs to borrow recipes from other chefs, and there has been a long culture of sharing in the cuisine industry. However, what made Wickens’ actions scandalous was that he had purportedly copied the artistic presentation and plating of other chefs’ dishes, not just their recipes.

This Article examines whether chefs can protect the artistic presentation or plating …

3(D) View Of India’S Patent Law: Social Justice Aspiration Meets Property Rights In Novartis V. Union Of India & Others, 13 J. Marshall Rev. Intell. Prop. L. 719 (2014), Saby Ghoshray

UIC Review of Intellectual Property Law

Not many constitutional decisions from developing countries find themselves at the center of global debate like the Indian Supreme Court’s Novartis decision invalidating the Gleevec patent. The patent was invalidated under amended Section 3(d) of the Indian Patents Act, which was amended to address some of the concerns of imbalance between the maximalist and minimalist cultures in the pharmaceutical context. Section 3(d) of the Indian Patent Act introduced a new threshold of patent eligibility for pharmaceutical innovation that requires applicants to demonstrate enhanced efficacy of their products. The objective of this Article is to get beyond the reactionary reviews of …

Shutting Down The Ex Parte Party: How To Keep Bittorrent Copyright Trolls From Abusing The Federal Court’S Discovery System, 31 J. Marshall J. Info. Tech. & Privacy L. 105 (2014), Jennifer L. Hunter

UIC John Marshall Journal of Information Technology & Privacy Law

No abstract provided.

The Right To Be Forgotten: Forced Amnesia In A Technological Age, 31 J. Marshall J. Info. Tech. & Privacy L. 133 (2014), Robert Bolton

UIC John Marshall Journal of Information Technology & Privacy Law

In the modern era, the connection between technology and one’s personal life has increased the number of moments recorded for posterity. While in many circumstances this is an ideal opportunity for fond recollection, it has the downside of displaying for others our less flattering moments. Because the Internet has such a wide scope, once something has entered its domain, it is virtually impossible to permanently remove. With a public increasingly perceiving this winnowing of privacy as a negative tendency, legislators both at home and abroad have made proposals that attempt to place restrictions on what content social media is allowed …

Rediscovering Cumulative Creativity From The Oral Formulaic Tradition To Digital Remix: Can I Get A Witness?, 13 J. Marshall Rev. Intell. Prop. L. 341 (2014), Giancarlo F. Frosio

UIC Review of Intellectual Property Law

For most of human history, the essential nature of creativity was understood to be cumulative and collective. This notion has been largely forgotten by modern policies that regulate creativity and speech. As hard as it may be to believe, the most valuable components of our immortal culture were created under a fully open regime with regard to access to pre-existing expressions and re-use. From the Platonic mimesis to Shakespeare’s “borrowed feathers,” the largest part of our culture has been produced under a paradigm in which imitation—even plagiarism—and social authorship formed constitutive elements of the creative moment. Pre-modern creativity spread from …

Navigating Cybersquatting Enforcement In The Expanding Internet, 13 J. Marshall Rev. Intell. Prop. L. 321 (2014), Jordan A. Arnot

UIC Review of Intellectual Property Law

It has always been a considerable task to police something as vast at the Internet for trademark violations and abuse. As the Internet develops with the ongoing launch of hundreds of new generic Top-Level Domains, so does the host of enforcement options available to those seeking to protect the value of trademarks and other intellectual property. This article outlines seven criteria to consider when selecting a remedy, or combination of remedies. The traditional cease and desist letter is still a viable and effective option, and so, of course, is litigation. These tools were greatly enhanced in 1999 when the Internet …

An Evolving Ncaa Leading To An Expanding Client List, 13 J. Marshall Rev. Intell. Prop. L. 463 (2014), Frank Battaglia

UIC Review of Intellectual Property Law

On the heels of the popular March Madness National Collegiate Athletic Association (“NCAA”) Basketball tournament, and following Northwestern University student-athletes’ success in unionizing, the extent of student-athlete publicity rights is now more contentious than ever. The divide between an ever-profiting NCAA and exploited NCAA student-athletes has sparked an evolving class-action lawsuit by former student-athletes, who challenge the licensing of their images and likenesses. This lawsuit has become a landmark test of the NCAA’s governance and notions about amateurism in college athletics. The outcome of this case will be a possible sign that compensation for both current and former student-athletes may …

Cls Bank V. Alice Corp.: What Does It Mean For Software Patent Eligibility?, 13 J. Marshall Rev. Intell. Prop. L. 601 (2014), Charles F. Green

UIC Review of Intellectual Property Law

For more than forty years, patent attorneys, software engineers, examiners, and judges have debated the patent eligibility of software. For most of the 1980s and 90s, the USPTO has viewed software as generally patent-eligible subject matter. Starting with the State Street v. Signature Financial case in 1998, courts have examined subject matter patent eligibility with greater scrutiny. This comment reviews six recent software patent eligibility cases, of which the court upheld software’s eligibility twice and rejected its eligibility four other times. In particular, the CLS Bank v. Alice Corp. case serves as a basis for examining several approaches to the …

The Impact Of The America Invents Act On Trade Secrets, 13 J. Marshall Rev. Intell. Prop. L. 497 (2014), Edward Manzo

UIC Review of Intellectual Property Law

The Leahy-Smith America Invents Act (“AIA”) is the largest revision to the patent statute in over sixty years. One might ask whether the AIA changed the balance between trade secret law and patent law and what the new relationship will be between these different approaches to protecting technology. This article answers four particular questions that arise in addressing this topic. First, what, if anything, the AIA says specifically about trade secrets; second, whether someone who commercially uses a trade secret for over one year can patent it under the AIA; third, whether a new inventor may patent an invention that …

A Solution-Based Approach To Rejecting Trademark Licenses In Bankruptcy, 13 J. Marshall Rev. Intell. Prop. L. 621 (2014), Chandra J. Critchelow

UIC Review of Intellectual Property Law

The Seventh Circuit created a circuit split in bankruptcy law regarding the rejection of trademark licenses in its 2011 decision in Sunbeam Prods., Inc. v. Chi. Am. Mfg. LLC. All other courts have held that when a trademark license is rejected under 11 U.S.C. § 365 in a Chapter 11 bankruptcy proceeding, the licensee may no longer use the licensed trademark. All other forms of intellectual property are subject to § 365(n), which prevents automatic termination of the licensee’s rights. In Sunbeam, the court held that the rejection of a trademark license under § 365 does not automatically terminate the …

Implementing And Enforcing Intellectual Property Rights In West Africa, 13 J. Marshall Rev. Intell. Prop. L. 782 (2014), Ganiyou Gassikia

UIC Review of Intellectual Property Law

The World Trade Organization (WTO) created the Trade-Related Intellectual Property Rights (TRIPS) Agreement to monitor and enforce intellectual property rights around the world, to uneven success. There are problems with enforcement in many developing countries, specifically countries in West Africa. By some estimates, for example, the majority of drugs used in those countries are counterfeit, which can lead to serious injury or even death for those using the counterfeit drugs. Stronger IP enforcement not only encourages innovation but can serve to reduce the risk of death of those in developing countries. There are major challenges facing implementation of IP rights …

The Consistently Inconsistent "Instance And Expense" Test: An Injustice To Comic Books, 14 J. Marshall Rev. Intell. Prop. L. 91 (2014), Thomas Deahl Ii

UIC Review of Intellectual Property Law

Joe Simon once said that “we always felt, we wuz robbed.” He is not alone. This article will discuss Jack Kirby’s estate’s case against Marvel and how the current state of the law robs creators of the rights to their own works. The evaluation of case law will show that the application of the ‘instance and expense’ test creates an injustice of inconsistent results in litigation, where creators attempt to regain control of their works. If the court continues to inconsistently apply the law to these work-for-hire cases, then the Supreme Court or Congress needs to address the intended purpose …

Rethinking Resistance: Reflections On The Cultural Lives Of Property, Collective Identity, And Intellectual Property, 47 J. Marshall L. Rev. 1349 (2014), Caroline Joan Picart

UIC Law Review

No abstract provided.

Remade In China: What Does Recycling Tell Us About The Chinese Patent System?, 82 Umkc L. Rev. 887 (2014), Benjamin Liu

UIC Law Open Access Faculty Scholarship

What can we expect of China's patent law during the tenure of President Xi Jinping? This article proffers a partial answer to this broad question through the close reading of patent allegations against Chinese refurbishers and recyclers. Although the doctrinal issues presented are specific, these disputes occupy a policy space where competing goals of development tear a slit in the glossy exterior of the “Chinese Dream” meme that comes to represent Xi's administration, a slit through which we may gain some insight into the direction of IP development in China.

In the process of domesticating a legal regime originated from …

Standard Essential Patents, Trolls, And The Smartphone Wars: Triangulating The End Game, 119 Penn St. L. Rev. 1 (2014), Daryl Lim

UIC Law Open Access Faculty Scholarship

Few legal issues in recent years have captured the public's attention more powerfully than litigation over standard essential patents (“SEPs”). This Article explains how SEP litigation overlaps with two other major centers of patent litigation--litigation involving smartphones and patent assertion entities (“PAEs”). It observes that attempting to pre-empt patent hold-ups by imposing blanket ex ante disclosure obligations and royalty caps on standard setting organizations (“SSOs”) is misdirected and counterproductive. Instead, the solution lies in clear and balanced rules to determine “fair, reasonable and non-discriminatory” (FRAND) royalties and injunctive relief. This solution will help parties make more realistic assessments of their …

Functional Elements In Patent Claims, As Construed By The Patent Trial And Appeal Board (Ptab), 13 J. Marshall Rev. Intell. Prop. L. 251 (2014), Tom Brody

UIC Review of Intellectual Property Law

Claims in patents include both structural elements and functional elements. Functional elements occur in various categories: (1) Functional elements that mandate a particular range of structures that are able to perform the required function; (2) Functional elements that mandate a particular cooperation between structures; (3) Compound noun/function functional elements, (4) Active-type functional elements; (5) “Capable of”-type functional elements, (6) Single-word structural elements that are typical nouns, but that are also functional elements, e.g., “plasticizer,” and (7) Quasi-functional elements that lack any patentable weight. This article discloses which of these types of functional elements confers the broadest claim scope, and which …

Will Nanotechnology Products Be Impacted By The Federal Courts’ “Product Of Nature’ Exception To Subject-Matter Eligibility Under 35 U.S.C. 101?, 13 J. Marshall Rev. Intell. Prop. L. 397 (2014), Laura W. Smalley

UIC Review of Intellectual Property Law

In 2013, the Supreme Court in Myriad held that DNA is a “product of nature” that is not patentable merely because it is isolated from the human body. The year before, the Supreme Court in Prometheus held that diagnostic tests that incorporate little more than a “law of nature” is not patent eligible. These two decisions altered the landscape of patent eligible subject matter under Section 101 of the patent statute. They not only impact the patent eligibility of isolated DNA or diagnostic tests, but they may also have far wider-ranging impact on other technological fields, including biotechnology and nanotechnology. …