Intellectual Property Law Commons^™

Patent Infringement Damages In Japan And The United States: Will Increased Patent Infringement Damage Awards Revive The Japanese Economy?, Toshiko Takenaka

Articles

This Article will look at the impact of the new Japanese legislation on patent infringement damages and will discuss whether the increase in damage awards contributes to the creation of breakthrough technology. To understand this impact, Part I will discuss pre-1998 legislation damages and highlight the difference between damages awarded by United States courts and those awarded by Japanese courts, by comparing United States and Japanese case examples. In examining the general tort and patent law theories, Part I will also try to identify the source of the difference and discuss how this difference is reflected in current United States …

Patent Infringement Damages In Japan And The United States: Will Increased Patent Infringement Damage Awards Revive The Japanese Economy?, Toshiko Takenaka

Articles

Accordingly, this Article will look at the impact of the new Japanese legislation on patent infringement damages and will discuss whether the increase in damage awards contributes to the creation of breakthrough technology. To understand this impact, Part I will discuss pre-1998 legislation damages and highlight the difference between damages awarded by United States courts and those awarded by Japanese courts, by comparing United States and Japanese case examples. In examining the general tort and patent law theories, Part I will also try to identify the source of the difference and discuss how this difference is reflected in current United …

A Circus Among The Circuits: Would The Truly Famous And Diluted Performer Please Stand Up? The Federal Trademark Dilution Act And Its Challenges, Xuan-Thao Nguyen

Articles

Sometimes, nothing is more painful than the truth. Congress passed the celebrated Federal Trademark Dilution Act of 1995 (“the Act” or the “Dilution Act”) with great hope that it would create a uniform anti-dilution law, end forum shopping, and encourage trademark owners to build brand equity with more ease. Congress was overwhelmingly in favor the Act, and thus passed it with little debate, leaving behind a sparse congressional record. In its haste to pass the Act, Congress failed to address whether the Act extends to product design marks; whether the Act requires proof of actual economic harm, or if likelihood …

A Proposed Test For Applying The Doctrine Of Equivalents To Biotechnology Inventions: The Nonobviousness Test, Qing Lin

Washington Law Review

In patent law, the doctrine of equivalents allows courts to find infringement if one makes or uses a device or process without substantial change from a patented invention. A test that clearly defines the appropriate scope of patent protection is crucial to development in various industries, especially in biotechnology, an industry that requires significant long-term investment. However, the most commonly applied test for determining equivalents is vague and fails to provide practical guidance. The "all elements" limitation to the test causes additional confusion. A more appropriate test for defining the scope of patent protection would be the "nonobviousness test," a …

A Unitary Asean Patent Law In The Aftermath Of Trips, Christian H. Nguyen

Washington International Law Journal

Members of the Association of Southeast Asian Nations ("ASEAN") have come to recognize that rigorous protection for industrial and technological innovations is essential to the economic viability of the Southeast Asian region. This recognition has heightened since the inception of the Agreement on Trade-Related Aspects of Intellectual Property Rights ("TRIPs"). TRIPs imposes minimum standards for patent protection upon signatories to the World Trade Organization, which includes most of the ASEAN member countries. Strict compliance with TRIPs standards can severely aggravate the administrative deficiencies in national patent systems, but such deficiencies can be considerably alleviated with the institution of a regional …

A Look At Damage Awards Under Japan's Trademark Law And Unfair Competition Prevention Law, Masumi Anna Osaki

Washington International Law Journal

Although the United States and Japan have similarly worded intellectual property statutes, significant differences in the stated statutory objectives as well as the substantive rights protected by those laws give rise to concern over the scope and quality of intellectual property protection offered in Japan. Collectivist values that frown upon personal gain have contributed to the less-than-adequate enforcement of individual intellectual property rights in Japan, and this socio-judicial ethic has been consistently reflected in the minimal damage awards granted by the courts. The courts' traditionally narrow construction of damage provisions in the intellectual property arena has resulted in the limitation …

The Dilemma Of Intellectual Property Piracy In China, Jennifer S. Fan

Articles

This Article analyzes the effectiveness of China's intellectual property laws and the role they play in China's foreign trade and investment. It gives an overview of how intellectual property laws developed in China and explains why they have been inadequate, especially with respect to the protection of the interests of U.S. companies. It then illustrates why America's response to the piracy of intellectual property has been largely ineffective. The Article explains why China's strides in intellectual property law have fallen short of expectations and offers alternative methods of protecting intellectual property rights in China.

The New Wild West: Measuring And Proving Fame And Dilution Under The Federal Trademark Dilution Act, Xuan-Thao Nguyen

Articles

The passage of the Federal Trademark Dilution Act of 1995 (the Dilution Act or Act) has been widely celebrated, as evidenced by the number of related articles, speeches and symposia. Commentators who applauded the adoption of the Dilution Act believed that a dilution claim would now be easier to prove by trademark owners against diluters because trademark owners would not have to establish the troublesome factual issue of consumer confusion. The courts have embraced the Act, and it has already proven to be an effective weapon for trademark owners. One court has even suggested trademark owners asserting claims of dilution …

The Use Of Preclusion Doctrine, Antisuit Injunctions, And Forum Non Conveniens Dismissals In Transnational Intellectual Property Litigation, Peter Nicolas

Articles

Conflicting standards among the federal circuits over the applicability of inherent powers in the transnational intellectual property context and the divided authority regarding the jurisdiction of U.S. federal courts over foreign intellectual property claims severely hamper the ability of federal district courts to use these tools in such a manner so as to prevent parties in transnational intellectual property suits from engaging in strategic behavior. This Comment seeks to reconcile these conflicts where possible and, where irreconcilable, to demonstrate that the text and history of federal statutes conferring subject matter jurisdiction on federal courts and placing limits on their issuance …

The Antitrust Duty To Deal And Intellectual Property Rights, James C. Burling, William F. Lee, Anita K. Krug

Articles

This Article discusses how courts have addressed so-called ‘"duty-to-deal" antitrust claims involving intellectual property, and what they should do in those circumstances to ensure appropriate deference to the competition goals of intellectual property doctrine.

Part II discusses duty-to-deal principles in the general case, where intellectual property rights are not at issue, noting that hard and fast rules have yet to emerge.

Part III discusses the approaches courts have taken in the intellectual property context and contends that, although many courts have conducted their analyses with a view to the objectives of patent law, at least two have not, with potentially …

Reevaluating The Forum Non Conveniens Doctrine In Multiterritorial Copyright Infringement Cases, Brenda Tiffany Dieck

Washington Law Review

The tension between the internationalization of copyright and the territorial remedies national laws provide is illustrated when the same infringer infringes a copyright in multiple countries. The copyright owner can bring suit in each country separately or attempt to consolidate all claims into one forum. Commentators have identified that in consolidated suits, even if jurisdiction over the foreign claims is proper, the discretionary forum non conveniens doctrine rmains a "wild card." This Comment explores in greater depth why the doctrine is unpredictable and argues that it is being abused by U.S. federal courts in multiterritorial copyright suits, exacerbating the problem …

Privately Legislated Intellectual Property Rights: Reconciling Freedom Of Contract With Public Good Uses Of Information, J.H. Reichman, Jonathan A. Franklin

Librarians' Articles

In an age of omnipresent clickwrap licenses, we acknowledge the need for a uniform set of default rules that would validate non-negotiable licenses as a mechanism for minimizing transaction costs likely to hinder economic development in a networked environment. However, we contend that any model of contract formation not driven by the traditional norms of mutual assent requires specially formulated doctrinal tools to avoid undermining long-established public good uses of information for such purposes as education and research, technical innovation, free speech, and the preservation of free competition.

With the convergence of digital and telecommunications technologies, creators and innovators who …

Unilateral Refusals To Deal In Intellectual Property After Image Techical Services, Inc. V. Eastman Kodak Co., Brian F. Ladenburg

Washington Law Review

While the Federal Patent and Copyright Acts give patent and copyright holders limited exclusive rights in intellectual property, the Sherman Act prohibits combinations or conspiracies that restrain trade and monopolization. Although firms possessing intellectual property generally exercise their statutory exclusionary rights without running afoul of the antitrust laws, conduct may plausibly be authorized by intellectual property law but forbidden by antitrust. In construing the two statutory schemes, federal courts have generally held that conduct authorized by the intellectual property laws, in the absence of some further inculpatory action, cannot form the basis for antitrust liability. The Ninth Circuit departed from …

In The Wake Of Lough V. Brunswick Corp.: Who Decides Experimental Purpose In 35 U.S.C. § 102(B) Public Use Cases?, Chad P. Webster

Washington Law Review

Pursuant to 35 U.S.C. § 102(b), a defendant can avoid liability for patent infringement if the patented invention was in public use in the United States more than one year prior to the date of patent application. Although "public use" is broadly construed to include most nonsecret uses, a nonsecret use pursued primarily for bona fide experimental purposes is merely an "experimental use." Experimental use negates the conclusion that an invention was in public use within the meaning of section 102(b). In Lough v. Brunswick Corp., the U.S. Court of Appeals for the Federal Circuit held that the issues …

Harmonizing The Japanese Patent Sytem With Its U.S. Counterpart Through Judge-Made Law: Interaction Between Japanese And U.S. Case Law Developments, Toshiko Takenaka

Washington International Law Journal

Japanese jurisprudence has been strongly influenced by German jurisprudence, but this trend is changing because more legal professionals including judges, patent attorneys and patent office examiners study at U.S. Law Schools. Some recent Japanese court decisions reflect this strong influence from U.S. jurisprudence. Particularly, the influence is significant in the field of patent claim interpretation, courts' power to review the validity, parallel importation and patent infringement damages. This article concludes that there are few significant differences remaining between the U.S. and Japanese patent laws, and Japanese courts' eagerness to adopt U.S patent law significantly contributes to harmonizing the remaining differences.

Determining The Scope Of A Copyright Owner's Right To Bar Imports: L'Anza Research International, Inc. V. Quality King Distributors, Maureen M. Cyr

Washington Law Review

In L'Anza Research International, Inc. v. Quality King Distributors, the Ninth Circuit held that a copyright owner's right to bar imports is not limited by the first sale doctrine, which ordinarily prohibits a copyright owner from controlling the further distribution of copies after the copyright owner has consented to their sale. This Note examines the importation right in light of the purposes of the Copyright Act's distribution and first sale provisions, congressional intent behind the importation right, and the underlying purposes of copyright law. The Note argues that the first sale doctrine properly limits a copyright owner's right to …

An Economic Analysis Of Intellectual Property Rights: Justifications And Problems Of Exclusive Rights, Incentives To Generate Information, And The Alternative Of A Government Run Reward System, Steve Calandrillo

Articles

This article examines and questions the traditional justifications for intellectual property (I.P.) rights in America (focusing on copyright and patent law), and explores incentives necessary to induce the creation of these works of information. I conclude that changes are needed to I.P. law in order to best foster society's dual goals of 1) promoting incentives to create I.P. works (such as currently patented drugs), while also 2) maximizing distribution of those products to all consumers who would stand to gain (and not merely those who can afford the monopoly price charged). Hence, I suggest the creation of a Government-Run Reward …

Using Creativity To Fight A $60 Billion Consumer Problem—Counterfeit Goods, Xuan-Thao Nguyen, Maxim H. Waldbaum

Articles

For centuries, consumers have been willing to pay exorbitant prices for unique or premiumquality goods. Throughout the evolution of the "designer label" market, counterfeiters have lurked in the shadows of the economic landscape. Thus, the problem of counterfeit goods represents nothing new in the global economy.

When Is Enough Enough? Reduction To Practice And Summary Judgment During Patent Priority Disputes, R. Douglas Bradley

Washington Law Review

This Note examines the current U.S. Patent and Trademark Office standards for determining patent priority in an interference proceeding. In particular, this Note reviews and criticizes the procedural rules governing the implementation of summary judgment in an interference. In Schendel v. Curtis, the U.S. Court of Appeals for the Federal Circuit had the opportunity to articulate a clear analytical framework to guide Administrative Patent Judges in the determination of what experimental evidence, and how much of it, a party must present to establish a prima facie showing of reduction to practice. This Note argues that, in an interference proceeding, …

The Author Effect After The "Death Of The Author": Copyright In A Postmodern Age, Elton Fukumoto

Washington Law Review

Copyright law employs terms and concepts, such as "originality" and "authorship," which the Romantic movement developed. Post-structuralism and Postmodernism, influential intellectual and artistic trends, have attacked the "author" concept by undermining its philosophical foundations. But when Postmodem artists act in accordance with their anti-author beliefs, they expose themselves to liability for copyright infringement. Recent copyright cases illustrate the courts' not entirely satisfactory response to the artistic appropriation of previous works. This Comment suggests that the courts read a pastiche exception, broader than the current exception for parody, into the fair use defense for copyright infringement.

Patent Term Extension Of Pharmaceuticals In Japan: So You Say You Want To Rush That Generic Drug To Market In Japan . . . Good Luck!, William T. Christiansen Ii

Washington International Law Journal

With the passage of the Drug Price Competition Act of 1984 in the United States, the recent German Supreme Court decision allowing for experimental use of patented pharmaceuticals, and indirectly through the adoption of the Supplemental Protection Certificate in Europe, Japan seems to be the lone large pharmaceutical market which does not allow in some way for the experimental use of patented drugs to gain regulatory approval for a generic equivalent. Japanese generic pharmaceutical manufacturers had, until recently, operated under the assumption that the testing of a generic equivalent to a patented drug to gain regulatory approval was allowable as …

Giving Credit Where Credit Is Due: Revisiting The Doctrine Of Reverse Passing Off In Trademark Law, John T. Cross

Washington Law Review

During the past twenty years, courts have increasingly come to accept a cause of action for "reverse passing off." Unlike the more typical case of passing off, reverse passing off occurs when a defendant sells a product manufactured by a plaintiff under the defendant's own mark. Despite this difference, courts regularly invoke federal and state trademark laws, including the Lanham Act, to give the plaintiff a right to recover. This Article challenges that conclusion. It argues that the Lanham Act does not actually support a cause of action against a defendant who engages in reverse passing off. In addition, most …

In Re Mahurkar: The Federal Circuit's Misapplied Focus On Commercialization In "On Sale" Bar Analysis, Hugh H. Matsubayashi

Washington Law Review

In In re Mahurkar Double Lumen Hemodialysis Catheter Patent Litigation, the Federal Circuit held that a "sham" sale of an invention did not implicate the statutory "on sale" bar, which makes unpatentable any invention placed on sale more than one year prior to the filing of a patent application. This Note analyzes the Mahurkar decision's focus on the lack of commercialization of the invention in finding that a valid U.C.C. sale of an invention already reduced to practice does not implicate the "on sale" bar. It argues that under traditional "on sale" bar standards, a commercialization analysis is only …

Attorney-Client Privilege Versus The Pto's Duty Of Candor: Resolving The Clash In Simultaneous Patent Representations, Todd M. Becker

Washington Law Review

Patent attorneys play dual roles: they are simultaneously attorneys and patent practitioners. Their dual role causes problems when the rules that govern one role conflict with the rules that govern the other. One such problem is illustrated in Molins PLC v. Textron, Inc., where a patent attorney simultaneously representing two clients was caught between the Patent & Trademark Office's duty of candor and the attorney's duty of confidentiality imposed by the rules of professional responsibility. The Molins decision presents a problem because it creates uncertainty about whether confidentiality can be maintained by using the attorney-client privilege to defeat the …

Legal Protection Of Trade Secrets In The People's Republic Of China, Yuan Cheng

Washington International Law Journal

The increasing need for an adequate legal framework for the protection of trade secrets in the People's Republic of China led to the 1993 promulgation of the Law for Countering Unfair Competition ("LCUC"). The LCUC has removed some of the barriers to obtaining effective remedies. Under the LCUC, the injured party can rely on a legal definition of "trade secrets," sue third parties, and expect that authorities will investigate violations. Nevertheless, barriers to adequate protection for trade secrets remain. In discussing the legal framework for trade secrets protection, this Article illustrates how the ambiguity of the LCUC's relationship with other …

Doctrine Of Equivalents After Hilton Davis: A Comparative Law Analysis, Toshiko Takenaka

Articles

This Article will address a number of major topics. First, it discusses the Federal Circuit's renewed interest in Graver Tank and the merger of the infringement test with the patentability test established by the Supreme Court in Graham v. John Deere Co. Then, this Article responds to the dissenting judges in Hilton Davis who emphasized the danger of uncertainty that stems from the in-principle application of the doctrine of equivalents. This response explains that the application of the doctrine does not increase the uncertainty in determining infringement but, rather, encourages clear, definitive claim drafting. It then examines the relationship …

Phonorecords And Forfeiture Of Common-Law Copyright In Music, Mark A. Bailey

Washington Law Review

A highly disputed issue surrounding the Copyright Act of 1909 is whether the public distribution and sale of recordings of a musical work constitutes "publication." Historically, unless the author followed the Act's formal requirements for obtaining statutory protection, publication injected the musical work irrevocably into the public domain. In a 1995 decision, La Cienega Music Co. v. ZZ Top, the Ninth Circuit unwisely broke from the tradition and common understanding in the music industry by holding that phonorecord distribution is a publication of musical compositions. After examining the history and purpose of the Copyright Act, as well as the …

Can Reverse Engineering Of Software Ever Be Fair Use? Application Of Cambell'S "Transformative Use" Concept, John A. Williams

Washington Law Review

Several years after Atari v. Nintendo and Sega v. Accolade, debate and confusion remain within the U.S. software industry and legal community concerning the appropriate application of copyright's fair use doctrine to reverse engineering of software. This Comment discusses why and how the U.S. Supreme Court's recent fair use analysis in Campbell v. Acuff-Rose Music should be applied to help resolve the reverse engineering issue. Not only would application of Campbell's approach promote consistency among courts and confidence within the software industry, but it also would safeguard copyright's ultimate objective: the advancement of society's growth in science and …

Copyright Protection For Architectural Design: A Conceptual And Practical Criticism, Gregory B. Hancks

Washington Law Review

The Architectural Works Copyright Protection Act of 1990 (AWCPA) extended copyright protection to architectural design as part of Congress's effort to conform U.S. law to the Berne Convention. U.S. courts previously had treated architecture as a "useful article" and generally had denied it protection under the "separability" doctrine. The AWCPA treats architecture similarly to other categories of copyrightable subject matter. Conceptually, this is inappropriate because (I) architectural design is a professional service, (2) architecture is a part of our public environment, and (3) architecture's expressive aspects cannot be adequately separated from its useful aspects. As a practical matter, the AWCPA …

A Brief Defense Of Mass Market Software License Agreements, Robert W. Gomulkiewicz

Articles

In the rapidly changing world of personal computer software, the end user license agreement ("EULA") has endured. The EULA is a familiar component of most personal computer software transactions. Many commentators, however, have maligned the practice of standard form software licensing. A survey of the literature on the subject might lead one to conclude that there are only critics--and no proponents--of EULAs.

Despite the din of criticism, EULAs continue to be widely usedby almost every mass-market software publisher, even though the cost of doing so is significant. This Article explains the value of EULAs for both software publishers and users, …