Intellectual Property Law Commons^™

Who Are You? Difficulties In Obtaining Trademark Protection For Domain Names, Luke M. Rona

Washington Journal of Law, Technology & Arts

Three appellate decisions illustrate the difficulty of acquiring trademark protection for domain names that include a top-level domain (“TLD”), such as “.com.” Courts have characterized these marks as generic or merely descriptive, which carries implications for the party seeking registration: generic marks cannot be protected, while descriptive marks can, assuming they possess a secondary meaning that makes the mark distinctive. Generic and descriptive domain names often indicate the services a company provides, with the addition of the “.com” TLD to indicate online services. One key test of genericness is whether the public identifies the mark with a service generally or …

Fostering The Business Of Innovation: The Untold Story Of Bowers V. Baystate Technologies, Robert W. Gomulkiewicz

Washington Journal of Law, Technology & Arts

Perhaps the law review literature does not need another article on the Federal Circuit’s Bowers v. Baystate Technologies case. That case has received more than its share of attention from commentators, all criticizing Judge Rader’s majority opinion and most extolling the virtues of Judge Dyk’s dissent. Despite the storm of scholarly criticism, however, courts have followed Judge Rader’s opinion. This Article tells the untold story of why courts have been wise to do so. The Article explains how commentators have argued that federal intellectual property law should have preempted Bowers’ claims for breach of a shrinkwrap license prohibition on reverse …

Patent Law's Falstaff: Inequitable Conduct, The Federal Circuit, And Therasense, John M. Golden

Washington Journal of Law, Technology & Arts

For decades, the relationship between the U.S. Court of Appeals for the Federal Circuit and patent law’s doctrine of inequitable conduct has resembled that between Shakespeare’s Prince Hal and John Falstaff. The former recognizes the excess, the deservedly ill repute, even the at least occasional wickedness of the latter, but cannot tear away from his close companion. Likewise, for decades, Federal Circuit judges have criticized the excesses of the defense of inequitable conduct, which can render a patent unenforceable as a result of misrepresentation or nondisclosure to the U.S. Patent and Trademark Office. Nevertheless, U.S. patent law remains wedded to …

Chief Judge Rader's Material Contribution To Geographic Indicator Analysis, Signe H. Naeve

Washington Journal of Law, Technology & Arts

Geographic indicators—trademarks that use a place name to indicate goods or services—are now theoretically easier to register, even if the good or service does not actually come from that place. This shift is a result of three cases, two authored by Chief Judge Randall R. Rader of the Federal Circuit Court of Appeals (California Innovations and Les Halles), and one where he served on the panel (Spirits International). These cases made it more difficult for a trademark examiner to reject an application for a primarily geographically deceptively misdescriptive mark by adding a materiality requirement. However, raising the bar was not …

Tuning The Obviousness Inquiry After Ksr, Mark D. Janis

Washington Journal of Law, Technology & Arts

One of the most important and delicate judicial tasks in patent law is to keep the obviousness doctrine in reasonable working order. There are several reasons why the obviousness doctrine has been the subject of frequent judicial tinkering. First, patentability doctrines interact with each other, so doctrinal alterations that seem to be entirely external to the obviousness doctrine frequently have ripple effects on obviousness. The interaction between the utility and obviousness doctrines provides one good example. Second, the obviousness doctrine is internally complex. Cases in the chemical and biotechnology areas over the past several decades have amply illustrated this point. …

Chief Judge Rader's Contribution To Comparative Patent Law, Toshiko Takenaka

Washington Journal of Law, Technology & Arts

Chief Judge Rader influences patent jurisprudence in other nations through his interaction with judges and lawyers from these jurisdictions. He also uses the comparative method to gain insights from experiences in these jurisdictions to improve U.S. patent jurisprudence. This Article discusses opinions authored by Chief Judge Rader from the comparative law perspective. It discusses his influence on European and Japanese patent jurisprudence in the three areas: the (I) patent eligibility, (II) nonobviousness, and (III) enablement-written description requirements. Judge Rader likewise used his knowledge of foreign jurisprudence to interpret U.S. patent statutes and to develop doctrines in these areas.

Celebrating Contributions Of Chief Judge Rader To Patent Infringement Jurisprudence, Katherine E. White

Washington Journal of Law, Technology & Arts

Chief Judge Rader’s judicial opinions contribute significantly to patent infringement jurisprudence. He writes from a teacher’s perspective, providing context and a clear lens through which legal issues may be examined. His deep reverence for the rule of law pervades his opinions, as he injects a cadre of principles governing his approach. Each opinion builds a foundation made of consistency and clarity in upholding the fundamental purposes underlying the patent grant.

Influencing The Evolving Ip System And Law Of China Through International Outreach, Esther H. Lim

Washington Journal of Law, Technology & Arts

No individual U.S. judge has influenced the evolving IP system and law of China through international outreach more than Chief Judge Rader of the Federal Circuit. Through tireless efforts, he has made an indelible footprint in the history of Chinese IP law as a judge, a professor, and an author. Chief Judge Rader has garnered rock-star status in China through dedication and commitment to contribute to, and to be a part of, China’s IP system and law. He has secured a legendary standing and will be long remembered by the Chinese IP community as an ambassador of IP and judicial …

Efforts To Establish Clear Standards For Exhaustion In Japan, Kaoru Kuroda, Eiji Katayama

Washington Journal of Law, Technology & Arts

The Honorable Chief Judge Rader has often emphasized the importance of establishing clear standards in the field of patent law. Similarly, Japanese courts in this field seem to make an effort to present a clear rule in their holdings. Patent exhaustion theory is one of the fields where a clear and concrete standard by the courts is especially needed. This Article explains several clear standards held by Japanese courts regarding this issue. It then discusses a problem raised by establishing clear standards by courts in a civil law country like Japan and also presents the Japanese Government’s efforts to ensure …

Trademark Apologetic Justice: China And The Three Laws, Xuan-Thao Nguyen

Articles

The article will proceed as follows. Part I discusses the three bodies of law constituting China’s trademark jurisprudence by tracing the development of Trademark Law, Anti-Unfair Competition Law and Civil Law. All of these laws contain relevant provisions pertaining to trademark reputation and remedies, including injunction, damages and public apology to eliminate any bad effects. As China Supreme People’s Court has a significant role in shaping trademark jurisprudence and apologetic justice, Part I also analyzes judicial directives that provide guidance and instructions to the lower courts in addressing trademark reputation remedies.

An analysis of only statutes and judicial directives, however, …

Apologies As Intellectual Property Remedies: Lessons From China, Xuan-Thao Nguyen

Articles

It is a frequent refrain that “the world is shrinking.” In this same vein, the global influence of China is clearly rising. Chinese businesses are becoming more prominent in the global market, and as such, the influence and effect of Chinese law is likewise gaining in import. Chinese intellectual property law is no different.

One notable aspect of Chinese intellectual property law is the availability of apology as a remedy. Despite a culture that places a high value on apology, and considerable legal scholarship and precedent regarding apology as remedy, many in the United States scoff at the notion of …

Patents As Promoters Of Competition: The Guild Origins Of Patent Law In The Venetian Republic, Ted Sichelman, Sean O'Connor

Articles

Part II of this Article describes the artisan and merchant guild systems of the Venetian Republic. Part III explores the emergence of the patent system as a means for foreigners and Venetian citizens to compete with the guilds, as well as the eventual addition of negative exclusive rights to the basic license form of positive patent privileges. In so doing, contrary to the speculation of some scholars, we reject with near certainty the contention that the first patent law statute granting exclusionary rights for—in modern parlance—technological inventions was a silk-specific directive enacted by the Venetian Grand Council in the late …

Hired To Invent Vs. Works Made For Hire: Resolving The Inconsistency Among Rights Of Corporate Personhood, Authorship, And Inventorship, Sean M. O'Connor

Articles

This Essay focuses on the interrelation of three legal doctrines that affect the allocation of ownership and attribution of products of the human mind. The first, corporate personhood, grants corporations rights of personhood similar to those of natural persons. The second, the work-made-for-hire doctrine (WMFH) under copyright law, allocates ownership and attribution for copyrightable works to the employer of the natural-person author—even where that employer is a nonnatural, legal person such as a corporation. And the third, shop rights and the hired-to-invent exception, permits courts to grant equitable licenses or assignments to employers for their employees’ inventions.

These three doctrines …

Cheaper Watches And Copyright Law: Navigating "Gray Markets" After The Supreme Court's Split In Costco V. Omega, S.A., Parker A. Howell

Washington Journal of Law, Technology & Arts

Some manufacturers seek to prevent unauthorized importation and sale of their foreign-made products, called “gray market” goods or “parallel imports,” through copyright law. U.S. copyright law prohibits importation of copyrighted works without the copyright owner’s permission. At least one manufacturer, Omega, sought to extend this protection to its watches, a useful product, by affixing copyrighted logos. In Costco v. Omega, S.A., Omega claimed Costco violated its distribution right by selling the watches in the U.S., while Costco contended that a first sale abroad had extinguished Omega’s rights. The case reached the U.S. Supreme Court, which affirmed by an evenly …

Loaded Question: Examining Loadable Kernel Modules Under The General Public License V2, Curt Blake, Joseph Probst

Washington Journal of Law, Technology & Arts

This Article examines the intersection of Linux loadable kernel modules and the license under which Linux is distributed, the General Public License (GPL) Version 2. Section I of this Article discusses ambiguous terms contained within the GPL and various interpretations of these ambiguities. Next, Section II analyzes the changing scope of legal protection for computer software, particularly as it pertains to derivative works and as applied to loadable kernel modules. Section III highlights provisions contained within the GPL that may attempt to reach beyond a traditional works analysis and examines these provisions in light of recent developments at the intersection …

Taxing Facebook Code: Debugging The Tax Code And Software, Xuan-Thao Nguyen, Jeffrey A. Maine

Articles

This article sets out to analyze both intellectual property laws and tax systems as applied to computer software. It analyzes software within intellectual property's established doctrinal framework, a difficult task due to the fact that software can encompass some combination of the traits of copyrights, trade dress, patents, and trade secrets. It then examines both the federal and state tax systems governing software. It shows that fitting software within current tax schemes presents unique challenges, as software contains both tangible and intangible elements, is subject to varying intellectual property protections, and can be delivered through various media. The article argues …

Fostering The Business Of Innovation: The Untold Story Of Bowers V. Baystate Technologies, Robert W. Gomulkiewicz

Articles

Perhaps the law review literature does not need another article on the Federal Circuit’s case [320 F.3d 1317 (Fed. Cir. 2003, cert denied, 123 S.Ct. 2588 (2003)]. That case has received more than its share of attention from commentators, all criticizing Judge Rader’s majority opinion and most extolling the virtues of Judge Dyk’s dissent. Despite the storm of scholarly criticism, however, courts have followed Judge Rader’s opinion.

This Article tells the untold story of why courts have been wise to do so. The Article explains how commentators have argued that federal intellectual property law should have preempted Bowers’ claims …

Serious Flaw Of Employee Invention Ownership Under The Bayh-Dole Act In Stanford V. Roche: Finding The Missing Piece Of The Puzzle In The German Employee Invention Act, Toshiko Takenaka

Articles

This article argues that the current Bayh-Dole Act is incomplete because the Act fails to provide a mechanism for contractors to secure the ownership of federally funded inventions from their employees. Part I of this Article discusses this flaw in the current Bayh-Dole Act, highlighted by Stanford v. Roche, and argues that a historical accident resulted in this flaw due to Congress's failure to pass a series of bills based on the German EIA. Passages in the Bayh-Dole Act suggest that the Act assumes a transfer by operation of law to secure the ownership of federally funded inventions through …

Cross-Border Contributory Patent Infringement In Germany, Heinz Goddar

Washington Journal of Law, Technology & Arts

This Article examines recent German court decisions analyzing Section 10 of the German Patent Act (“PatG”), which governs cases of contributory patent infringement, focusing in particular on the implications of recent decisions on potential cross-border infringement. The Article offers recommendations on how judicial scrutiny of contributory infringement in Germany may be streamlined in light of potential evidentiary problems and concludes with a case study of how German courts might analyze a situation like that faced by the United States Court of Appeals for the Federal Circuit in AT&T v. Microsoft.

End User Liability For Sofware Developed With Trade Secrets, Jeff Patterson

Washington Journal of Law, Technology & Arts

The National Conference of Commissioners on Uniform State Laws (NCCUSL) developed the Uniform Trade Secrets Act (UTSA) to unify the laws regulating the improper use of secret, economically advantageous information. However, consumers often procure software and other products without knowledge of any trade secrets used in the production of the products. Some companies have sought remedies against end users of products developed using trade secrets. But in Silvaco Data Systems v. Intel Corp., a California appeals court considering this issue in the software context held that execution of compiled object code, which is not easily interpreted by humans, is …

Copyright Infringement Liability Of Placeshifting Services In The United States And Japan, Naoya Isoda

Washington Journal of Law, Technology & Arts

Placeshifting is a convenient service that enables customers to enjoy television programs from their home countries even if they are in foreign countries. Placeshifting works by receiving/recording a television program in one country and then transmitting the digital data to customers everywhere in the world via the Internet upon each customer’s request. Because placeshifting may be involved with recording and/or transmitting copyrighted content, service providers must face the question whether they may be liable for copyright infringement. In the United States, the Second Circuit in Cartoon Network v. CSC Holdings decided the legality of placeshifting by requiring a “volition element” …

A Matter Of Access: How Bypassing Drm Does Not Always Violate The Dmca, Alicia Hoffer

Washington Journal of Law, Technology & Arts

In the last decade, several federal circuit courts have applied the anti-circumvention provisions of the Digital Millennium Copyright Act (DMCA) to determine what forms of unauthorized access to copyrighted work are prohibited. Courts have considered Digital Rights Management (DRM) disputes concerning access to both copyrighted digital-media and manufactured products. The Second and Ninth Circuits have applied the DMCA in digital media cases to protect the owners of digital copyrighted works. The Fifth, Sixth, and Federal Circuits have applied the DMCA in manufactured-product cases, holding that bypassing DRM controls does not violate the DMCA under certain circumstances. These differing conclusions stem …

Open For Trouble: Amending Washington's Open Public Meetings Act To Preserve University Patent Rights, Vladimir Lozan

Washington Law Review

Times have changed. Science is no longer “a perfect working model of democracy,” so transparent that it does not need supervision by outsiders. Instead, science is now regulated at the federal and state level. At the federal level, laws and regulations require peer review meetings for research at state public universities to ensure compliance with federal funding mandates. At the state level, the Washington Open Public Meetings Act (OPMA) requires that peer review meetings at state universities be open to the public. When a scientist presents during one of these peer review meetings, the state university may lose patent rights …

A Survey Of The Dmca's Copyright Management Information Protections: The Dmca's Cmi Landscape After All Headline News And Mcclatchey, Susuk Lim

Washington Journal of Law, Technology & Arts

Copyright management information (CMI), defined by the Digital Millennium Copyright Act (DMCA), is information conveyed with a copyrighted work that identifies the owner and nature of that copyright. Although the DMCA prohibits the knowing removal of CMI under 17 U.S.C. § 1202(b), district court decisions relating to CMI are split on whether its provisions apply only to digital forms or also extend to non-digital CMI conveyance. This Article describes the current state of CMI jurisprudence and the expected effects of possible interpretive outcomes.

The History Of Intellectual Property Taxation: Promoting Innovations And Other Intellectual Property Goals, Xuan-Thao Nguyen, Jeffrey A. Maine

Articles

No abstract provided.

Fame Law: Requiring Proof Of National Fame In Trademark Law, Xuan-Thao Nguyen

Articles

The public has always been infatuated with fame. Trademark law likewise has a long history of infatuation with fame. Protecting the fame embodied in a trademark against dilutive use by others has not been easy. The difficulty stems from the wording of the statute and judicial failure to understand the “fame” requirement. The fundamental question centers on what level of fame is required for the property-like protection against subsequent uses that dilute the famous trademark. This Article argues for national fame to be the requisite requirement for property-like anti-dilution protection under trademark law. The Article recommends that the proof of …

A Special Rule For Compound Protection For Dna-Sequences Impact Of The Ecj "Monsanto" Decision On Patent Practice, Jan B. Krauss, Toshiko Takenaka

Articles

This article will analyze the Monsanto decision, and criticize the European Court of Justice's interpretation of Article 9 as being incomplete, in particular for failing to take account of all articles and recitals in the Biotech Directive relating to the scope of protection. It will argue that applying the concept of a function-limited protection is unnecessary if a claim directed to an isolated DNA sequence is properly interpreted. It will also discuss the possible impact not only on the protection scope but also on the patentability of gene patents.

The Aftermath Of Stanford V. Roche: Which Law Of Assignments Governs?, Sean M. O'Connor

Articles

The discovery and commercialization of biotechnology innovations often rely on collaborations between universities and for-profit firms. In the United States, the federal government funds much of university life sciences research and, under the Bayh-Dole Act, has some rights to research arising from that funding.

Two important strands of invention ownership issues in this web of collaboration arose under litigation that culminated in the recent United States Supreme Court decision Board of Trustees of Leland Stanford Junior University v. Roche Molecular Systems, Inc. (“Stanford v. Roche” or “Stanford”). The first is the question of whether Bayh-Dole …

Intellectual Property, Innovation, And The Future: Toward A Better Model For Educating Leaders In Intellectual Property Law, Robert W. Gomulkiewicz

Articles

Intellectual property (IP) sits at the center of the global economy. Today, producers and users of intellectual property come from both developed and developing nations. Intellectual property matters as much to China and India as it does to Germany and the United States. This reality has driven a monumental demand for lawyers who have expertise in intellectual property law. These lawyers are the new leaders in intellectual property law.

The global demand for intellectual property law-trained lawyers triggered a "big bang" in the creation of advanced intellectual property law programs (IP Programs) at American law schools. The new leaders in …

The "Three Strikes" Policy In Korean Copyright Act 2009: Safe Or Out?, Sun-Young Moon, Daeup Kim

Washington Journal of Law, Technology & Arts

Korea has grown to be one of the Internet powers in a short period. Because of insufficient copyright protection, Korea recently revised the Korean Copyright Act to reinforce protection of copyright and promote sound distribution of copyrighted works. The new law allows the Minister of Culture, Sports and Tourism to issue orders and the Korea Copyright Commission to issue recommendations. Orders and recommendations are distinguished by the subject of the issuance and the legal force. Orders and recommendations enable online service providers to delete or stop transmission of illegal reproductions, give warning notices to infringers, or suspend the account of …