Intellectual Property Law Commons^™

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, …

In Pursuit Of Profit Maximization By Restricting Parallel Imports: The U.S. Copyright Owner And Taiwan Copyright Law, Soojin Kim

Washington International Law Journal

Parallel importation occurs when goods which are authorized by the copyright owner to be sold only in a specific territory abroad are imported, without the copyright owner's authorization, into a non-authorized market. Parallel importation into Taiwan has been cause for concern for both U.S. copyright owners and their Taiwan licensees because such importation undermines their control over the marketing of copyrighted goods. A copyright owner may wish to market goods differently in different countries, setting the price of goods sold in one country higher than in another country. This Comment discusses the role of U.S. political pressure in Taiwan's enactment …

Drug Price Regulation And Compulsory Licensing For Pharmaceutical Patents: The New Zealand Connection, John M. Wechkin

Washington International Law Journal

This Comment addresses effects of the 1992 rescission of compulsory licensing laws for pharmaceutical patents in New Zealand. The Comment summarizes the history behind the change in law, the effect the change has had, projections for future effects, and the degree to which the change brings New Zealand law into compliance with proposed General Agreement on Trade and Tariffs ("GAT") provisions. The effects of the repeal on drug prices appear to be masked by changes in New Zealand's pharmaceutical price support system. Both changes are illustrative of the continuing conflict over technology protection in the marketplace, a conflict which is …

In Re Epstein: A Case Of Patent Hearsay, Dennis M. De Guzman

Washington Law Review

In In re Epstein, the Federal Circuit held that the United States Patent and Trademark Office may rely on hearsay evidence to reject patent applications. This Note examines the effects of the Epstein decision against the backdrop of software patenting and how administrative agencies have traditionally approached the problem of evaluating hearsay. It argues that the Patent and Trademark Office should articulate standards when scrutinizing hearsay in order to provide guidance to examiners and applicants, to prevent placing an unfair burden on applicants, and to thwart the abuse of the patent system.

A Shifting Barrier? Difficulties Obtaining Patent Infringement Damages In Japan, Scott K. Dinwiddie

Washington Law Review

American economic interests previously have criticized the Japanese patent system as a trade barrier. Recent agreements between the United States and Japan should help reduce the difficulties Americans have had obtaining patents in Japan. However, Americans who acquire Japanese patents are likely to be disappointed and discouraged by the formal protection afforded their new property. The patent enforcement system in Japan provides limited judicial remedies. Equitable relief is difficult to enforce. The full value of monetary damages is extremely difficult to prove, and the possibility for equitable recovery of damages in excess of those proved does not exist. The cost …

Proposed Changes To Japanese And United States Patent Law Enforcement Systems, Marvin Mostenbocker

Washington International Law Journal

Recent changes made to Japanese and American patent procedural laws have not addressed the contentious issue of patent enforcement. Purely technical decisions concerning patent rights and their enforcement need to be consistent between jurisdictions of each country. Courts of both countries are second guessing purely technical decisions of their patent offices and interfering with the smooth and predictable development of new technology and its associated rights. This particularly hurts noncitizen patentees who are unfamiliar with the particular legal customs of the other country. It is proposed that technical patent scope determination during Japanese patent infringement litigation be delegated to the …

Lost And Foundry: Forging A New Approach To Patent Licensing Agreements, Lawrence D. Graham

Washington Law Review

The Federal Circuit has been inconsistent in its treatment of patent licensing agreements held by foundries. Recently, the Federal Circuit held that a foundry contract is a sale of goods that severs the right of the patentee with respect to the buyer under the patent exhaustion doctrine. In addition, it held that the applicable license would be construed to allow foundry rights unless the patentee could prove otherwise. This Note analyzes a string of Federal Circuit cases involving foundries and patent licenses. It concludes that a foundry contract should be viewed as a sale of services rather than a sale …

Revision Of The Japanese Patent And Utlility Model System, Nobuo Monya, Marvin Motsenbocker, Hiroki Mitsumata

Washington International Law Journal

As part of the international harmonization of industrial property rights, in the summer of 1992 a U.S. advisory committee published recommendations concerning revisions to the patent system. The Industrial Property Council of Japan also published a report at the end of 1992 concerning revisions to the patent law and utility model law. Soon thereafter the U.S. administration in Washington changed, and the U.S. position on patent law harmonization became unclear. Japan, however, enacted its report into legislation. Japan revised the relevant parts of its Patent Law (Law No. 26 of 1993) on April 16, 1993, and the revisions were promulgated …

Vagueness And Enforceability: Potential Problems Of The 1991 Thai Trademark Act, Sakda Thanitcul

Washington International Law Journal

In 1991, Thailand adopted a new Trademark Act, which, among other goals, increased protection of trademark and service mark agreements. However, enforcement of these new rules has not been clearly defined. In the first portion of this article, the author examines the new rules for trademark agreements in Thailand. These rules give extensive discretion to the Thai Registrar, yet have potential problems in enforcing standards such as quality control. The next section examines Thai public policy, and analyzes how other industrialized nations enforce their policies on trademarks. Finally, the article recommends that Thailand increase quality control, and more carefully define …

The Wright Enabling Disclosure For Biotechnology Patents, Karen S. Canady

Washington Law Review

The disclosure in a patent specification must enable others to make and use the claimed invention. In the competitive biotechnology industry, companies often seek broad claims to protect contemplated embodiments of their inventions that have not yet been reduced to practice. In In re Wright, the Federal Circuit recently challenged this approach when it upheld the rejection, for lack of enablement, of all but the narrowest claims to a vaccine genetically engineered to protect against retroviruses. This decision unreasonably elevates the established standard for enablement by limiting biotechnological patent protection to only those embodiments of a claimed invention whose success …

Software Copyright Infringement Claims After Mai Systems V. Peak Computer, Trinnie Arriola

Washington Law Review

In MAI Systems Corp. v. Peak Computer, Inc. the Ninth Circuit Court of Appeals held that Peak committed copyright infringement by running MAI operating system software incidental to Peak's repair of the computer system. The court rejected Peak's section 117 defense under the Copyright Act because it refused to recognize a licensee of computer software as an "owner" of a copy of software. This Note argues that the decision contravenes both the substance and principles of federal copyright law, and unnecessarily harms computer owners. It suggests a two-tiered analysis that courts should follow when evaluating copyright infringement claims involving software …

Digital Image Reproduction, Distribution And Protection: Legal Remedies And Industrywide Alternatives, Jonathan A. Franklin

Librarians' Articles

Section II of this article describes the existing legal claims and remedies available to creators and distributors of stock photos who are confronted with the unauthorized use of their images. Section III discusses the alternatives to individual licensing and enforcement actions. After concluding that a centralized computer distribution and accounting system would best'serve the creators and distributors, section IV suggests how existing industry standards can help tailor the implementation of the collecting society model. Section V briefly discusses the international implications of such a distribution scheme, focusing on the problems of variable copyright terms and foreign collecting societies.

This article …

Recent Developments In Copyright Protection For Computer Software In The United States And Japan, Yutaka Nakamura

Washington International Law Journal

Many current legal issues pertaining to copyright of computer software involve defining the scope of protection of non-literal expression, such as "user interface" and "look and feel," in contrast to literal expression, such as "source code," to which ownership may be more clearly attributed. Superficially, it appears that the case law pertaining to non-literal expression is developing differently in Japan and the United States. This comment demonstrates that, however, while Japanese and U.S. courts have been applying formally different analytical criteria, the decisions of both have been similar in seeking equity-oriented solutions.

Special 301: An Effective Tool Against Thailand's Intellectual Property Violations, Preeti Sinha

Washington International Law Journal

Special 301 of the 1988 Omnibus Trade and Competitiveness Act grants the United States Trade Representative the authority to target countries that do not adequately protect intellectual property rights. The USTR has been investigating and negotiating with several countries, including Thailand, in an effort to improve intellectual property protections for American products. As a result, Thailand has instituted noteworthy changes in its copyright and patent laws. This Comment recommends that the USTR continue to negotiate with Thailand, and that the USTR continue to exert pressure on Thailand. This Comment also suggests that because Thailand has taken steps to improve protection …

How The East Was Won: A Critique Of U.S. Tactics In Negotiating Patent Protection For Pharmaceuticals In Thailand, Michael Begg

Washington International Law Journal

In February 1992, Thailand amended its patent law to provide patent protection for drugs. The amendment resulted from pressure by the United States pharmaceutical industry and the United States Trade Representative; it was not a Thai internal policy decision. Bleak prospects in the U.S. drug market due to a climate of increasing restraints on drug prices have led the Pharmaceutical Manufacturers Association to push for patent protection for their products abroad. Consequently, the United States Trade Representative pressured Thailand to amend its Patent Act to include pharmaceuticals, threatening to use Section 337 of the Trade and Tariff Act of 1930 …

The Case Against Copyright Protection For Programmable Logic Devices, Stephen C. Bishop

Washington Law Review

Several commentators have argued that copyright protection should extend to protect logic equations incorporated in a type of semiconductor chip called a programmable logic device (PLD). They reach this result by analogizing to the storage of computer software in memory chips, an embodiment that is currently protected under the copyright laws. This Comment analyzes logic equations incorporated in a PLD with respect to the copyright statute, utilitarian device doctrine, and the legislative history of the Semiconductor Chip Protection Act. It concludes that copyright protection should not extend to protect the logic equations incorporated in a PLD.

Federal Moral Rights For Visual Artists: Contract Theory And Analysis, Russ Versteeg

Washington Law Review

This Article is intended neither as an introduction to contract principles for visual artists nor as a comprehensive analysis or study of art law contracts. Nor is this Article intended as a "how to negotiate a contract" manual for visual artists with annotations and forms. Works such as these already exist and are available for both attorneys and artists. Furthermore, this Article is not an exhaustive treatment of the philosophical, political and sociological forces that shaped the American recognition of moral rights for visual artists under the United States Copyright Act. Instead, this Article looks critically at the immediate, potential …

Extending The New Patent Misuse Limitation To Copyright: Lasercomb America, Inc. V. Reynolds, Toshiko Takenaka

Articles

This Article examines the decisional history that shaped the misuse doctrine and the interplay between the misuse defense and antitrust liability in patent and copyright infringement litigation. In particular, by examining the public interest and policy considerations underlying patent and antitrust laws, this Article compares and evaluates the new view that misuse must be analyzed by the conventional antitrust theories expressed by Judge Posner in USM Corp. v. SPS Technologies Inc. and the traditional view that was derived from the equity doctrine expressed in Morton Salt v. G.S. Suppiger.

Furthermore, this Article reviews the legislative history and the impact …

The Nonobviousness Of Inventions: In Search Of A Functional Standard, Kathleen N. Mckereghan

Washington Law Review

The Patent Act of 1952 introduced the nonobviousness requirement into patentability analysis. Historically vague, the nonobviousness requirement remains poorly defined. Courts currently use a variety of tests for nonobviousness, none of which correctly reflects the requirement's constitutional and technical role. This Comment proposes a functional standard embodying four elements: constitutional policy, technical advance, logical analysis, and active perspective.

The Substantial Identity Rule Under The Japanese Novelty Standard, Toshiko Takenaka

Articles

This article compares the novelty standard under Japanese patent law with the novelty standard under American patent law. This article first explains the structure of the novelty and inventive step provisions under Japanese patent law and examines the interpretation and basic legal theories of these provisions. The inventive step standard developed out of the novelty standard. Thus, to understand the inventive step standard, it is necessary to understand the novelty standard.

Next, this article discusses the unique features of the Japanese novelty standard. The strict novelty requirements of the patent laws of the United States and European countries are contrasted …

Willful Copyright Infringement: In Search Of A Standard, Jeffrey M. Thomas

Washington Law Review

The Copyright Act of 1976 provides for an increase in statutory damages where copyright infringement is willful. Because it is undefined in the Act, the meaning of willfulness is left to judicial interpretation. Courts have disagreed on the proper definition of willfulness and adopted tests that are vague and sometimes inconsistent with the Act's statutory damages provision. This Comment proposes an alternative to the present definitions and tests, and suggests that courts adapt a two-part willfulness test from the patent law test, which requires knowledge and an affirmative duty to investigate.

A Thousand Clones: The Scope Of Copyright Protection In The "Look And Feel" Of Computer Programs—Digital Communications Associates, Inc. V. Softklone Distributing Corp., 659 F. Supp. 449 (N.D. Ga. 1987), Alan S. Middleton

Washington Law Review

In Digital Communications Associates, Inc. v. Softklone Distributing Corp., the United States District Court for the Northern District of Georgia rejected "standardization" as a reason to deny copyright protection to user interface design. The court also rejected the proposition, advanced six months earlier in Broderbund Software, Inc. v. Unison World, Inc., that copyright protection of the underlying computer program extends to the screen displays generated by that program. Once it found the screen displays to be separately copyrightable, the Softklone court evaluated each feature of the display individually, and extended copyright protection to some elements of the user …

A Thousand Clones: The Scope Of Copyright Protection In The "Look And Feel" Of Computer Programs—Digital Communications Associates, Inc. V. Softklone Distributing Corp., 659 F. Supp. 449 (N.D. Ga. 1987), Alan S. Middleton

Washington Law Review

In Digital Communications Associates, Inc. v. Softklone Distributing Corp., the United States District Court for the Northern District of Georgia rejected "standardization" as a reason to deny copyright protection to user interface design. The court also rejected the proposition, advanced six months earlier in Broderbund Software, Inc. v. Unison World, Inc., that copyright protection of the underlying computer program extends to the screen displays generated by that program. Once it found the screen displays to be separately copyrightable, the Softklone court evaluated each feature of the display individually, and extended copyright protection to some elements of the user interface. Although …

Biological Deposits Necessary For Patent Protection: An Expansion Of Permissible Procedure—In Re Lundak, 773 F.2d 1216, 227 U.S.P.Q (Bna) 90 (Fed. Cir. 1985), Debra K. Leith

Washington Law Review

The standard for biological deposits necessary for compliance with the enablement provisions of the Patent Act of 1952 (codified at Title 35 U.S.C.) has been altered by the Federal Circuit Court of Appeals in In re Lundak. Before Lundak, patent applications dependent on the use of biological materials called for the deposit of a biological sample in an independent depository, out of the inventor's control, on or before the filing date. The Lundak decision now permits an inventor to retain control of the deposit during prosecution of the patent application, so long as the public is guaranteed access to the …

Patent Infringement: Redefining The "Making" Standard To Include Partial Assemblies—Paper Converting Machine Co. V. Magna-Graphics Corp., 745 F.2d 11 (Fed. Cir. 1984), Stuart Watt

Washington Law Review

In Paper Converting Machine Co. v. Magna-Graphics Corp., the Federal Circuit rejected the traditional operable assembly standard for determining a "making." In its place, the court adopted a more flexible standard that included partial assemblies that have no significant noninfringing purpose. This test for infringement significantly broadens patent protection and further restricts the permissible activity of competitors allowed during the patent term. The court's standard grants the patent owner a de facto monopoly beyond the expiration date by restricting competitors from making preparations to enter the market after the patent expires. The decision represents a movement by the Federal Circuit …

Patent Infringement: Redefining The "Making" Standard To Include Partial Assemblies—Paper Converting Machine Co. V. Magna-Graphics Corp., 745 F.2d 11 (Fed. Cir. 1984), Stuart Watt

Washington Law Review

In Paper Converting Machine Co. v. Magna-Graphics Corp., the Federal Circuit rejected the traditional operable assembly standard for determining a "making." In its place, the court adopted a more flexible standard that included partial assemblies that have no significant noninfringing purpose. This test for infringement significantly broadens patent protection and further restricts the permissible activity of competitors allowed during the patent term. The court's standard grants the patent owner a de facto monopoly beyond the expiration date by restricting competitors from making preparations to enter the market after the patent expires. The decision represents a movement by the Federal Circuit …

Protecting Intellectual Property In Taiwan—Non-Recognized United States Corporations And Their Treaty Right Of Access To Courts, Michael M. Hickman

Washington Law Review

As global trade grows, intellectual property rights become increasingly important. United States corporations must often seek redress for infringement of their intellectual property rights in foreign forums. Taiwan has an international reputation for commercial counterfeiting. United States corporations with no presence in Taiwan are sometimes victims of infringement there. This Note describes the problems a non-recognized United States corporation presently faces in protecting its intellectual property rights in Taiwan and proposes a solution embodied in the United States-Republic of China (ROC) Treaty of Friendship, Commerce, and Navigation (FCN Treaty). A criminal case instituted by Apple Computer in Taiwan illustrates the …

Patenting Inventions That Embody Computer Programs Held As Trade Secrets—White Consolidated Industries V. Vega Servo-Control, 713 F.2d 788 (Fed. Cir. 1983), Ellen Lauver Weber

Washington Law Review

An inventor develops a numerical control system that allows a computer program to control the complex operation of machine tools such as drill bits. One of the elements in the numerical control system is a trade secret available only from the inventor. The inventor would like to patent the system as a whole, but an inventor must generally disclose how the invention works in order to obtain a patent. Must this inventor completely disclose how the trade secret works in order to obtain a patent on the whole system? The Federal Circuit Court of Appeals said "yes" in White Consolidated …

Copyright And Factual Works—Is Research Protected?—Miller V. Universal City Studios, Inc., 650 F.2d 1365 (5th Cir. 1981), Edwin K. Sato

Washington Law Review

Gene Miller, a reporter for the Miami Herald, collaborated with a kidnapping victim in writing the book 83 Hours Till Dawn. The book detailed the victim's experience of being placed in a coffin-like container and buried alive in the Georgia woods for five days. Universal City Studios negotiated with Miller to purchase the movie rights to the work, but no agreement was reached. Nevertheless, Universal produced and aired a television movie about the kidnapping. Miller brought an action alleging that Universal's making of the movie infringed his copyright in the book. The trial court instructed the jury that, while facts …

Antitrust Problems In International Technology Transfers—United States V. Westinghouse Electric Corp., 648 F.2d 642 (9th Cir. 2981), Christina Marie Ager

Washington Law Review

In 1970 the Department of Justice brought an antitrust action against Westinghouse Electric Corporation and two Japanese corporations, Mitsubishi Electric Corporation (MELCO) and Mitsubishi Heavy Industries Ltd. (MHI) (together Mitsubishi). The government alleged violations of section 1 of the Sherman Act. Since 1923 the defendants or their predecessors had a series of technology-sharing agreements under which Westinghouse granted licenses of its Japanese patents to Mitsubishi. It excluded its counterpart patents in the United States and Canada from the agreements. The government contended that Mitsubishi had become so dependent on Westinghouse technology because of the technology-sharing agreements that it could not …