Intellectual Property Law Commons^™

Substance, Procedure, And The Divided Patent Power, Joseph S. Miller

Scholarly Works

The Patent Office has the power to issue rules that “shall govern the conduct of proceedings in the Office,” 35 U.S.C. § 2(b)(2), but not the power to issue substantive rules. It has been this way since 1870, when Congress first granted the Office this regulatory power, in nearly these same words. Just how broad is this grant? How should a reviewing court determine whether a challenged Patent Office rule is procedural (and thus valid) or substantive (and thus invalid)? It is remarkable that in 2010, 140 years after Congress gave the Patent Office this power, the proper sorting standard …

The Architectural Works Copyright Protection Act At Twenty: Has Full Protection Made A Difference?, David Shipley

Scholarly Works

Even though our copyright statutes were silent about architecture until 1990, it was well established that plans, blueprints and models were copyrightable writings under the 1909 Act's category of "drawings or plastic works of a scientific or technical character," and then as "pictorial, graphic, and sculptural works" under the 1976 Act. The scope of an architect's copyright protection was, however, quite limited. The unauthorized copying of plans or blueprints constituted infringement, but most authorities concluded that plans were not infringed by using them, without the architect's permission, to construct the building they depicted. Moreover, the prevailing view was that an …

Journal Of Intellectual Property Law Editorial Board, 2010-2011, Journal Of Intellectual Property Law

Materials from All Student Organizations

No abstract provided.

Intellectual Property Law And Entertainment Law Issues, Martin Kretschmer, W. Bruce Burch, John L. Turner, Bertis E. Downs Iv

Other Lectures and Presentations

The University of Georgia School of Law's Dean Rusk Center hosted an intellectual property law lecture featuring Martin Kretschmer, professor of information jurisprudence and director of the Centre for Intellectual Property Policy & Management at Bournemouth University, U.K. Kretschmer discussed his groundbreaking work in artist compensation in the European Union as well as the contractual structures that drive creative industries on April 6 at 1:30 p.m. in the Larry Walker Room of Dean Rusk Hall. His lecture was followed by comments from W. Bruce Burch, UGA director of Interdisciplinary Certificate in Music Business; Bertis E. Downs IV, Georgia Law adjunct …

Journal Of Intellectual Property Law Managing Board, 2010-2011, Journal Of Intellectual Property Law

Materials from All Student Organizations

No abstract provided.

A Dangerous Undertaking Indeed: Juvenile Humor, Raunchy Jokes, Obscene Materials And Bad Taste In Copyright, David E. Shipley

Scholarly Works

Some of the most important statements in our nation’s rich copyright jurisprudence were written by Justice Holmes over a century ago in Bleistein v. Donaldson Lithographing Co.,a case holding that circus posters were entitled to copyright protection.

In Bleistein, Justice Holmes stated that “[i]t would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of [writings, illustrations, music and other forms of expression] outside of the narrowest and most obvious limits.” This announced what has been called the principle of “aesthetic non-discrimination.

“Pull My Finger Fred,” and many other …

The Public's Domain In Trademark Law: A First Amendment Theory Of The Consumer, Laura A. Heymann

Georgia Law Review

First Amendment theories of trademark law tend to focus on the need of speakers to employ trademarks in creating new speech-in parodies, comparative advertising, and other communicative endeavors. An alternative use of the First Amendment in trademark law, however, would focus on the rights of consumers to autonomy as they make choices about how to respond to trademark meaning. First Amendment doctrine in other areas of the law involving persuasive communications provides useful material on which to draw when constructing the autonomous consumer. With that consumer more fully realized, modern expansions of trademark law, such as dilution and initial interest …

Journal Of Intellectual Property Law Editorial And Managing Boards, 2008-2009, Journal Of Intellectual Property Law

Materials from All Student Organizations

No abstract provided.

Level Of Skill And Long-Felt Need: Notes On A Forgotten Future, Joe Miller

Scholarly Works

The Supreme Court's KSR decision transforms the way we think about patent law's ordinary artisan. The ordinary artisan, the Supreme Court states, is also a person of ordinary creativity, not an automaton. This transformation, which sweeps aside a contrary precept that had informed the Federal Circuit's nonobviousness jurisprudence for a generation, raises a key question: How do we fill out the rest of our conception, in a given case, of the ordinary artisan's level of skill at the time the invention was made? Reaching back to a large vein of case law typified by Judge Learned Hand's decisions about nonobviousness, …

Glannon Guide To Property: Learning Property Through Multiple-Choice Questions And Analysis, James C. Smith

Books

Reproduced with the permission of Aspen Publishers from Smith, James Charles. 2008. The Glannon Guide to Property: Learning Property through Multiple-choice Questions and Analysis. Austin: Wolters Kluwer Law & Business/Aspen Publishers.

Remixing Obviousness, Joseph S. Miller

Scholarly Works

In April 2007, the Supreme Court, for the first time in 41 years, decided a case about the basic contours of patent law's nonobviousness standard. The case, KSR, upends 25 years of Federal Circuit jurisprudence, and on a legal requirement that every patent must satisfy. In this essay, I show how KSR dismantles two predicates that have long shaped Federal Circuit nonobviousness cases - namely, the intertwined premises that hindsight-driven distortion is the gravest risk to an accurate nonobviousness requirement, and that the person of ordinary skill in the art (from whose perspective nonobviousness is judge) is singularly uncreative. In …

Putting The Brakes On Drugs: The Impact Of Ksr V. Teleflex On Pharmaceutical Patenting Strategies, Diane C. Renbarger

Georgia Law Review

In its 2007 KSR v. Teleflex decision, the Supreme Court permitted KSR International Co. to manufacture an adjustable gas pedal in spite of a competitor's patent. The ruling struck down the Federal Circuit's test to determine whether a patent is obvious and thereby invalid. Since the decision, there has been speculation about how much, if at all, the Supreme Court's decision changed patent validity standards,and particularly about how the decision will influence pharmaceutical patenting. This Note examines the impact KSRv. Teleflex may have on the pharmaceutical industry. Pharmaceutical patenting laws and early court decisions applying the reasoning of KSR v. …

A Key To Unlocking Your Iphone: Eliminating Wireless Service Providers' Use Of United States Copyright Law To Limit Consumer Choice And Provider Competition, Tate M. Keenan

Georgia Law Review

While consumers have a choice whether to purchase an iPhone, they have no choice in the wireless service provider that is linked to it. This is just one example of what has become a regular practice in the world of American cellular phones--cell phone locking. Today, modern American cell phone users stand at the mercy of wireless service providers. They are placed in this position in part because wireless service providers have had the inadvertent luxury of being overly protected by United States copyright law. As the law stands today, wireless service providers are not only free to lock handsets …

The Ongoing Royalty: What Remedy Should A Patent Holder Receive When A Permanent Injunction Is Denied?, Tim Carlton

Georgia Law Review

Until recently, when an accused patent infringer was found liable for infringement, the Federal Circuit would grant,upon request, a permanent injunction preventing the infringer from further engaging in the infringing activity. In eBay v. MercExchange, the Supreme Court, in a rare review of a patent case, changed the Federal Circuit's standard of automatically granting permanent injunctions upon a finding of infringement. As a result, district courts are faced with a new dilemma: How should damages be calculated when a permanent injunction is denied? Some district courts that denied the patent holder's request for a permanent injunction have imposed an ongoing …

Freedom Of The Press 2.0, Edward Lee

Georgia Law Review

In today's digital age, copyright law is changing. It now attempts to regulate machines. Over the past twenty years, and particularly with the advent of the Internet, copyright holders increasingly have invoked copyright law to regulate directly-even to prohibit-the manufacture and sale of technology that facilitates mass dissemination of expressive works. Although the concerns of copyright holders about the ease of digital copying are understandable,the expansion of copyright law to regulate technologies raises troubling questions. Can the government, consistent with the First Amendment, use copyright law to regulate technologies that facilitate the dissemination of speech? If so, are there any …

Thin But Not Anorexic: Copyright Protection For Compilations And Other Fact Works, David E. Shipley

Scholarly Works

Questions about the copyrightability of compilations and other low authorship fact works, and about the scope of protection, have continued to trouble courts long after the Supreme Court's landmark decision in Feist Publications, Inc. v. Rural Telephone Services Co. in 1991. Justice O'Connor's opinion, explaining why a standard white pages telephone directory did not meet the constitutional and statutory requirements for copyright protection, defined an original work of authorship as one that is independently created by its author and that evidences at least a minimal level of creativity. The latter requirement has been elusive, in part because Justice O'Connor defined …

Transaction Costs And Patent Reform, Paul J. Heald

Scholarly Works

This article considers current proposals for patent law reform in light of a simple theory about intellectual property law: In a world without transactions costs, the assignment of property rights is not necessary to stimulate the optimal production of creative goods. Because potential users of inventions could contract for their creation, a compelling justification for granting property rights in these intangibles is the reduction of real-world transaction and information costs that hinder, or make impossible, contract formation between users and creators. Proposals for patent law reform, therefore, should be evaluated by whether a change in legal rights, or in the …

Congressional Authority Over Intellectual Property Policy After Eldred V. Ashcroft: Deference, Empty Limitations, And Risks To The Public Domain, David E. Shipley

Scholarly Works

The United States Supreme Court upheld the Copyright Term Extension Act of 1998 (CTEA) in Eldred v. Ashcroft. The Court ruled that Congress had not exceeded its authority under the Copyright Clause by extending the copyright term twenty years and applying this extension retroactively to existing copyrighted works that otherwise would have entered the public domain at the end of their current, nonextended terms. The majority found a rational basis for CTEA and showed great deference to the authority of Congress to set policy that, in its judgment, effectuates the aims of the Copyright Clause. Although this deference to …

Patent Ships Sail An Antitrust Sea, Joseph S. Miller

Scholarly Works

This brief essay arises from my participation in an April 2006 conference at Seattle University Law School, entitled At the Intersection of Antitrust and Intellectual Property Law: Looking Both Ways to Avoid a Collision. This intersection metaphor is a common one for describing antitrust law's relationship with intellectual property law, among both courts and commentators. This essay explores a different metaphor: patent ships sail an antitrust sea, protecting those aboard from competition's harshest dangers - but only for a time. The nautical metaphor evokes three ideas that the crossroads metaphor does not. First, vigorous competition is the pervasive, baseline reality; …

Amendment To Publication Agreement, University Of Georgia School Of Law

Institutional Repository Supporting Materials

Faculty members are asked to append this addendum to any article publication agreement that does not explicitly allow posting the final published version into the Digital Commons and onto their personal webpages, such as Selected Works.

Standard Setting, Patents, And Access Lock-In: Rand Licensing And The Theory Of The Firm, Joseph S. Miller

Scholarly Works

Many leading voluntary standard-setting organizations (SSOs) have adopted intellectual property (IP) policies under which participants must promise to license any patents on technology that they contribute to a standard, and to do so on reasonable and nondiscriminatory terms (RAND). The standard setting literature includes a substantial focus on the widespread use of this RAND promise. A common refrain in these analyses of the RAND promise is that its meaning is dysfunctionally uncertain. We know more about the RAND promise, however, than the existing literature suggests. I show that we already know the RAND promise's core meaning, and why it remains …

Big Entertainment Needs A Sequel To The Highly Anticipated Flop: Mgm V. Grokster, Anuj Desai

Georgia Law Review

The entertainmentindustry's attempts to police copyright infringement by targeting technologies that enable copying of protected works remain unworkable. More than twenty years ago, Hollywood initiated this strategy when it sued Sony, claiming users copied protected broadcast TV shows using Sony's Betamax, thus branding Sony a contributory infringer. The Supreme Court, however, rejected this argument in Sony Corp. of Am. v. Universal City Studios, Inc. and found that Sony was not liable as it had no knowledge of the infringement and its product was capable of substantialnoninfringing uses. The Sony doctrine was revived in the late 1990s when it was successfully …

Collateralizing Intellectual Property, Xuan-Thao Nguyen

Georgia Law Review

This Article argues that the process of collateralization of intellectual property lacks transparency.Consequently, the current Article 9 of the Uniform Commercial Code may unfairly advance secured creditor's rights at the expense of intellectual property creators-such as authors and inventors-who are the debtors, and ultimately at the expense of society as a whole. The hidden costs of using intellectual property rights as collateral in secured transactions may prevent intellectual property creators from creating future works based on their early creations. This Article identifies and critiques the collateralization of intellectual property,revealing the complexity of intersecting secured transaction law, namely Article 9 of …

Confronting Myths And Myopia On The Road From Doha, Daniel R. Cahoy

Georgia Law Review

Recent patent compulsory licenses issued by Thailand and Brazil have focused attention on this property rights safety valve as a means for balancing access and innovation in essential medicines. While derided in some quarters,many view these measures as a legitimate exercise of the flexibilities that exist in international intellectual property agreements, recently enhanced as a result of the WTO's Doha round of trade negotiations. But the increasing willingness to utilize patent compulsory licenses faces a troubled future: the international framework is dangerously ambiguous and significantly misaligned. Chief among the concerns is the level of compensation owed to a patent owner …

The Problem Of Social Cost In A Genetically Modified Age, Paul J. Heald, James C. Smith

Scholarly Works

In Part I of this Article, we apply the Coase Theorem and its most useful corollary to the problem of pollen drift. We conclude that the liability of pollen polluters should be governed by balancing rules against nuisance law, to be applied on a case-by-case basis, rather than by a blanket liability or immunity rule. We also conclude that truly bystanding non-GMO farmers should have a viable defense to patent infringement because liability would result in the application of a reverse Pigovian tax that cannot be justified under accepted economic theory. Only a contextual approach can account for the wide …

The Antitrust Legality Of Pharmaceutical Patent Litigation Settlements, James F. Ponsoldt, W. Hennen Ehrenclou

Scholarly Works

Several federal courts of appeal have recently ruled on the issue of whether a pharmaceutical patent infringement settlement, pursuant to which a generic drug manufacturer agrees to forgo marketing a particular drug in return for monetary payments from a patent-holding “pioneer” drug manufacturer, is a violation of antitrust law. These payments are termed “reverse payments” because, contrary to normal settlements, the plaintiff makes a lump sum payment to the defendant. Reverse payments have sparked considerable academic comment and controversy. Even more recently, the Federal Trade Commission (“Commission”) and the Solicitor General have expressed views on the issue, in the context …

Pollen Drift And The Bystanding Farmer: Harmonizing Patent Law And Common Law On The Technological Frontier, Paul J. Heald, James C. Smith

Popular Media

Patent law provides an impressive laundry list of defenses available to farmers who are the victims of unwanted pollen drift. The common law works hand-in-hand with patent law to ensure that a farmer’s choices are respected. Strong arguments can be made that positive economic relief should be afforded to farmers who can show the value of their crop has been diminished due to pollen drift. GMO pollen drift is a new, high-tech problem, but well-established principles of federal and state law appear prepared to offer viable low-tech solutions.

Enhancing Patent Disclosure For Faithful Claim Construction, Joe Miller

Scholarly Works

Claim construction jurisprudence is in disarray. The U.S. Court of Appeals for the Federal Circuit reverses trial court claim construction decisions at a worryingly high rate. The proportion of Federal Circuit claim construction opinions that include separate concurrences or dissents continues to grow. And the muddled mix of issues the Federal Circuit framed for en banc review in the Phillips case suggests that the court is having trouble reaching consensus on what the central questions are, much less on how to answer them. Perhaps the path to adequately predictable claim construction is continued tinkering with the analytical constructs internal to …

American Corporate Copyright: A Brilliant, Uncoordinated Plan, Paul J. Heald

Scholarly Works

At first glance, American copyright law and policy seem to be dictated entirely by a monolithic block of corporate rightsholders. Over the last twenty years, powerful interests including Disney, the American Society of Composers, Authors, and Publishers (ASCAP), Microsoft, and the American Motion Picture Association (AMPA), have successfully lobbied Congress for copyright term extensions, copyright restoration, software anticircumvention legislation, protection against audio bootlegging, and a series of bilateral and international agreements designed to increase protection for American copyright owners overseas. Even the failure to protect databases in America, widely touted as a victory for the public interest, has been driven …

What Do Flexible Road Signs, Children's Clothes And The Allied Campaign In Europe During Wwii Have In Common? The Public Domain And The Supreme Court's Intellectual Property Jurisprudence, David E. Shipley

Scholarly Works

Part I of this article discusses the impact of the Sears, Compco and Bonito Boats, and the uncertainty over whether the principles of federal intellectual property announced in these decisions serve as limitations on the scope of protection that can be afforded under trademark legislation enacted by Congress under its Commerce Clause power. Part II presents the Supreme Court's reaffirmation of fundamental principles intellectual property policy in a series of cases decided in the last decade: Qualitex, Wal-Mart, TrafFix, Mosley and Dastar. Part III summarizes some of the common themes emerging from these decisions …