Intellectual Property Law Commons^™

Universitytm: Trademark Rights Accretion In Higher Education, Jacob H. Rooksby

Law Faculty Publications

Colleges and universities are no strangers to intellectual property. In a higher education environment increasingly challenged by dwindling state appropriations and stagnant or declining tuition revenue, the pressure is on for colleges and universities to generate revenue via new channels. The commercialization of intellectual property has proven to be a popular, albeit imperfect, vehicle in furtherance of these efforts. Although there is no shortage of both legal and higher education commentary focusing on the treatment of patents and copyrights by institutions of higher education, trademark activity by colleges and universities largely has escaped attention. ...

Cease, Desist, And Laugh, James Gibson

Law Faculty Publications

Anyone who teaches intellectual property law knows how exciting the subject matter can be for students. They inundate professors not only with questions about the classroom material but also with news about emerging technologies, cutting-edge litigation, and legislative initiatives. And the attentive professor will seek to turn these exchanges into teaching moments.

One favorite of students involves a classic intellectual-property mechanism, the cease-and-desist letter. It’s a favorite, I think, because such correspondence can be over the top, and the responses can be quite funny – making this a perfect topic for this April Fool’s edition of IP Viewpoints. [...]

Copyright's Topography: An Empirical Study Of Copyright Litigation, Christopher A. Cotropia, James Gibson

Law Faculty Publications

One of the most important ways to measure the impact of copyright law is through empirical examination of actual copyright infringement cases. Yet scholars have universally overlooked this rich source of data. This study fills that gap through a comprehensive empirical analysis of copyright infringement litigation, examining the pleadings, motions, and dockets from more than nine hundred copyright lawsuits filed from 2005 through 2008. The data we collect allow us to examine a wide variety of copyright issues, such as the rate of settlements versus judgments; the incidence of litigation between major media companies, small firms, and individuals; the kinds …

International Covergence On The Need For Third Parties To Become Internet Copyright Police (But Why?), Dennis S. Karjala

Richmond Journal of Global Law & Business

No abstract provided.

Exposing Latent Patent Infringement, Bryan Blumenkopf

Richmond Journal of Law & Technology

Consider the following canonical patent infringement scenario. A

[1] plaintiff owns a patent with one or more claims to the patent’s underlying technology. Under 35 U.S.C. § 271(a), this plaintiff has the rights to manufacture, sell, use, or import the technology delineated by those claims.1 The defendant manufactures, sells, uses, or imports what appears to be the same technology. Because the claim language is not entirely clear, a judge construes the exact meaning of the claims in a preliminary hearing.2 Assuming that the patent is upheld as valid, a jury then determines whether the defendant’s device meets the limitations of …

Big Media In Copyright Litigation, James Gibson

Law Faculty Publications

What role does Big Media play in the courtroom?

Major media companies are often portrayed as aggressive drivers of expansive copyright, dominating every aspect of the legal landscape. When it comes to litigation, however, the truth is more nuanced. My colleague Chris Cotropia and I have recently completed a data collection project in which we examined pleadings from approximately 1,000 copyright cases filed over a four-year period (a statistically significant sample). We are still crunching the numbers, but what we’ve learned so far indicates that record labels, film studios, major software companies, and other behemoths of the copyright world end …

Myriad Choices: University Patents Under The Sun, Jacob H. Rooksby

Law Faculty Publications

How universities handle potentially patentable discoveries made by their faculty reflects important policy decision that affect the greater public. While few research administrators in higher education would dispute that any university-owned patent should be used for society's benefit, the relationship between patents and the public good may be less apparent to those whose primary familiarity with patents stems from recent news reports of "patent trolls" and billion-dollar battles in the smartphone industry. ...

Taking Note: On Copyrighting Students’ Lecture Notes, Matthew M. Pagett

Richmond Journal of Law & Technology

An essential element of individual property is the legal right to exclude others from enjoying it. If the property is private, the right of exclusion may be absolute; if the property is affected with a public interest, the right of exclusion is qualified. But the fact that a product of the mind has cost its producer money and labor, and has a value for which others are willing to pay, is not sufficient to ensure to it this legal attribute of property. The general rule of law is, that the noblest of human productions— knowledge, truths ascertained, conceptions, and ideas— …

Information Governance: It’S A Duty And It’S Smart Business, Charles R. Ragan

Richmond Journal of Law & Technology

A scant generation ago (twenty-five years), the World Wide Web—“an internet-based hypermedia initiative for global information sharing” —was largely a laboratory phenomenon. In 1994, the Clinton Administration urged world leaders to develop a global information superhighway, and the Information Age raced upon us. Now, Facebook has more than one billion accounts and most of us are constantly deluged by volumes of electronic information through e-mail, texts, social media, the Internet, cable systems, and others.

Cover Letter, Benjamin R. Fox

Richmond Journal of Law & Technology

The Richmond Journal of Law and Technology is proud to present its first issue of the 2013-2014 academic year. First published in 1995, JOLT is the world’s first exclusively online law review. JOLT strives to discuss new and emerging issues that fall squarely at the intersection of technology and the law. Today, with the publication of Issue One of its Twentieth Volume, JOLT aims to continue this tradition by providing relevant, insightful, and well-written articles that will drive discussion on these topics.

Not-So-Open Access To Legal Scholarship: Balancing Stakeholder Interests With Copyright Principles, Christopher J. Ryan Jr.

Richmond Journal of Law & Technology

Last February, John P. Holdren, director of the White House Office of Science and Technology Policy, issued a new policy designed to increase open access to federally-financed research. The memorandum, covering federal agencies with annual expenditures in excess of $100 million for scientific research and development, requires, inter alia, that: (1) agencies develop “clear and coordinated policies” to make federally- funded studies freely available to the public within one year of publication, and (2) researchers account for and manage the digital data resulting from federally-funded scientific research. In addition, the policy requires data from publicly-funded research to be stored for …

Four Ways In Which Kirtsaeng Might Be Undone, James Gibson

Law Faculty Publications

In my previous entry in this series, I discussed the Supreme Court’s long-awaited decision in Kirtsaeng v. John Wiley & Sons, involving the unauthorized resale in the United States of textbooks purchased overseas. Indeed, the Kirtsaeng case and the issue it presented have been a popular subject of IP Issues commentary; before the Supreme Court ruling, I wrote on the issue here and here, and Randy Picker had some commentary both beforeand after the opinion came down.

You can read those earlier entries for the details, but the outcome of the case is clear: U.S. copyright law does not prohibit …

When Tigers Bare Teeth: A Qualitative Study Of University Patent Enforcement, Jacob H. Rooksby

Law Faculty Publications

The pursuit of patents is a key avenue of economic development and revenue generation for American research universities, and one with significant policy implications for higher education. In a time of shifting funding models for higher education, the $1.8 billion dollars American universities generated in revenues in 2011 from licensing their patents makes patenting an attractive candidate for further university attention and resource investment. Spurred in part by the Bayh-Dole Act of 1980, research universities across the country have created vast institutional  apparatuses—typically centered in technology transfer offices (“TTOs”)—to help move ideas invented in the laboratory and classroom into commercial …

Google Books: Game, Set, But Not Match, James Gibson

Law Faculty Publications

It’s back: Google Books, our favorite topic in this Intellectual Property Viewpoints series. Google Books is the project through which Google has brought its search capability to the text of more than 20 millions books (with the number still growing). To do so, Google must scan the book and convert the scan to readable text. And there’s the problem: Scanning is copying, and copying raises the question of whether the massive project is a massive violation of the copyrights in all those books. Thus the Authors Guild v. Google class action brought by authors and publishers against Google in a …

Patent Applications And The Performance Of The U.S. Patent And Trademark Office, Christopher A. Cotropia

Law Faculty Publications

This Article reports data and analyses to facilitate answering these questions. The reported data was obtained from two sources. The first is the Workload Tables from the USPTO annual reports, called the "USPTO Performance and Accountability Reports," provided to the President, Congress, and public.' The second is data received from the USPTO in response to Freedom of Information Act ("FOIA") requests.3 From these two data sources, information such as the number of applications filed per year, the type of applications being filed and prosecuted, the pendency of these applications, and their disposition, including the number of them issued as patents, …

Innovation And Litigation: Tensions Between Universities And Patents And How To Fix Them, Jacob H. Rooksby

Law Faculty Publications

Universities that own patents have a problem. While nearly all are keen to enhance their revenue generated from patents, few are eager or prepared to enforce them in court, alone or with their exclusive licensees, should a third party deploy a product or process covered by a university-owned patent. Yet strict prudential standing requirements imposed by the United States Court of Appeals for the Federal Circuit (“CAFC”) effectively require university participation as plaintiffs in enforcement lawsuits over their exclusively licensed patents, regardless of a university’s effective ability or enthusiasm to participate in a given action. Supported by forty years of …

How Hard-Fought Is Copyright Litigation?, James Gibson

Law Faculty Publications

As I mentioned in my last essay, my colleague Chris Cotropia and I have recently completed a data collection project in which we examined pleadings from approximately 1,000 copyright cases filed in federal court over a four-year period. We are still evaluating the data, but our preliminary findings indicate that copyright litigation differs from other federal civil litigation; it takes longer and appears to be contested more – yet ends up in much the same place.

A little background first. During the period we studied (2005-2008), the cases fell into three broad categories. The first comprised those cases in which …

Finally, An Answer On Copyright, First Sale, And The Gray Market, James Gibson

Law Faculty Publications

In two past entries in this series, here and here, I discussed whether copyrighted goods manufactured abroad may be resold in the United States without having to get a new license from the copyright owner. When the goods are pirated – manufactured illegally – the answer is clearly no; that’s a classic black-market sale. But when the goods were manufactured abroad with the copyright owner’s consent, well, that’s different. In that case, the resale is what we call a gray-market sale. And there, the answer is less clear.

Or at least it was. But at long last, and after one …

The Top Three Copyright Cases Of 2012, James Gibson

Law Faculty Publications

In my last entry in this series, I examined three important patent law cases from 2012 – one at the Supreme Court level, one at the appellate level, and one at the trial court level. I’ll now do the same thing with regard to copyright cases.

My Supreme Court choice is Golan v. Holder, in which the Court upheld a statute that restored U.S. copyright protection to certain foreign works, thus removing them from the public domain. Such works had lost their protection – or had never acquired it in the first place – because of their failure to comply …

Information May Want To Be Free, But Information Products Do Not: Protecting & Facilitating Transactions In Information Products (Reprint), Kristen Osenga

Law Faculty Publications

Information products-products that are used to organize, provide context, and distribute information-have gone largely unprotected by intellectual property regimes. As a result, producers of information products, such as databases and software, have resorted to alternative mechanisms to protect their investments. These mechanisms have resulted in both over-protection and under-protection ofthe information products. Further, the uncertainty in the boundaries of coverage, coupled with the resort to self-help mechanisms, may well inhibit, rather than facilitate, information flow. What is needed is a sui generis protection scheme for information products that clearly defines the boundaries and protection requirements for these works and that …

Genes 101: Are Human Genes Patentable Subject Matter?, Andrew Bowman

Law Student Publications

This comment proposes a totality-of-the-circumstances approach to analyzing biological molecules under § 101 such that both the structure and its information is examined. Part II of this note reviews relevant precedent in patent law. Part III analyzes the Federal Circuit's Myriad decision, and Part IV explains the potential effects of the recent Supreme Court decision Mayo Collaborative Services v. Prometheus Laboratories. Finally, in Part V, the patent eligibility of human genes is examined. Analyzing this issue under the proposed totality-of-the-circumstances approach, this article concludes that isolated human genes are not patentable.

Who's The Author? A Bright-Line Rule For Specially Commissioned Works Made For Hire, Richard D. Palmieri

Law Student Publications

This comment argues that the best way to clarify the answer to the question "Who's the author?" (and thus to clarify whether the creator has a termination right) is to resolve the circuit split in favor of a bright-line rule requiring execution of the written agreement prior to the creation of the work. Part I introduces the legal framework under which the issue must be analyzed. Part II reviews the holdings on each side of the circuit split. Part III presents the arguments that both proper statutory construction of U.S. copyright law and the legislative history of the termination right, …

What Is The "Invention"?, Christopher A. Cotropia

Law Faculty Publications

Patent law is in flux, with recent disputes and changes in doctrine fueled by increased attention from the Supreme Court and en banc activity by the Federal Circuit. The natural reaction is to analyze each doctrinal area involved on its own. Upon a closer look, however, many patent cases concern a single, fundamental dispute. Conflicts in opinions on such issues as claim interpretation methodology and the written description requirement are really disagreements over which "invention" the courts should be considering. There are two concepts of invention currently in play in patent decisions. The first is an "external invention" definition, in …

Who's The Author? A Bright-Line Rule For Specially Commissioned Works Made For Hire, Richard D. Palmieri

University of Richmond Law Review

No abstract provided.

I 4 An I: Why Changing The Standard For Overcoming The Presumption Of Patent Validity Will Cause More Harm Than Good, John A. Morrissett

Law Student Publications

First, this paper describes the interests behind the presumption of patent validity and the historical treatment of the burden of proof required to overcome that presumption. While precedent does not bind the Supreme Court, it is important to consider how and why a particular standard has been applied in addition to Congress’s inaction in implementing a new standard. Second, this paper examines arguments in support of maintaining the status quo, changing to a preponderance of the evidence standard, and adopting a dual standard where some evidence must rise to the level of clear and convincing evidence while other evidence need …

Introduction: Contains Cover, Table Of Contents, Letter From The Editor, And Masthead, Ian Lambeets

Richmond Journal of Law & Technology

The Richmond Journal of Law and Technology is proud to present the fourth and final issue of the 2011-2012 academic year. This issue includes a dedication to Professor John Carroll written by Rick Klau, the Journal’s founder.

A Vaccine Approach To The Reverse Payment Illness, Scott Bergeson

Richmond Journal of Law & Technology

Big Brand Name develops and files a patent for a drug that kills bacteria in an innovative way. The drug is groundbreaking and potentially marketable, so Big Brand Name incurs the enormous cost (estimated at $868 million) and time of drug discovery research and safety determinations of clinical trials to bring the drug to market. Small Generic Company wants to sell the same drug but must wait until Big Brand Name’s patent expires or, in the alternative, Small Generic Company can file an Abbreviated New Drug Application (“ANDA”) with the FDA and allege Big Brand Name’s patent is invalid or …

Technologies-That-Must-Not-Be-Named: Understanding And Implementing Advanced Search Technologies In E-Discovery, Jacob Tingen

Richmond Journal of Law & Technology

The Federal Rules of Civil Procedure were created to promote the “just, speedy, and inexpensive determination of every action and proceeding.” Unfortunately, in the world of e-discovery, case determinations are often anything but speedy and inexpensive. The manual review process is notoriously one of the most expensive parts of litigation. Beyond expense, the time and effort required to carry out large-scale manual review places an immense burden on parties, nearly destroying the possibility of assessing the merits of early settlement before expensive review has already been carried out.

Trademark Tension, Part Ii, James Gibson

Law Faculty Publications

In the previous entry in this series, I discussed the narrow foundations of trademark law and its more recent expansion – in particular, how new approaches to trademark liability have departed from the law’s traditional focus on disputes about the source of competing goods. I continue that theme now by considering a tension that emerges from this expansion. Although trademark liability has expanded beyond source-identification, other aspects of trademark law have not, and these more traditional aspects can rise up and trap the unwary mark owner, or at least turn its expanded rights into expanded costs.

To understand the tension …

The Shape Of Things To Come: What We Can Learn From Patent Claim Length, Kristen Jakobsen Osenga

Law Faculty Publications

Technology is always changing. Patent law is also constantly evolving, as the courts and Congress continue to make significant changes to this area of law. But what about patents themselves? Some studies have looked at how patent specifications have changed over time, but no one has looked specifically at the most important aspect of a patent, its claims. Given the changes in technology and law, one would anticipate patent claims to have evolved.

Despite the expectations, this paper concludes that patent claim shape is largely unaffected by time, technology, crowded fields, or prosecution time. This paper suggests a possible reason …