Intellectual Property Law Commons^™

Technological Self-Sufficiency And The Role Of Novelty Traps, Rochelle C. Dreyfuss, Daniel Benoliel

Vanderbilt Journal of Entertainment & Technology Law

The COVID pandemic has demonstrated the tragic consequences of technological dependency. Unable to manufacture vaccines for themselves, developing countries must rely on obtaining supplies from other nations. While strong arguments have been made to waive international obligations under the TRIPS Agreement to permit these countries to freely use COVID-related patented inventions, it is not clear that this move would produce sufficient vaccines to meet global demand. Considerable scholarship has been devoted to the question of how to help these countries reach the technological frontier and become technologically independent. In this Article, we identify a novel source of their problem: a …

Barriers To Criminal Enforcement Against Counterfeiting In China, Daniel C.K. Chow

Vanderbilt Journal of Entertainment & Technology Law

Multinational companies (MNCs) with valuable trademarks in China seek criminal enforcement against counterfeiting because other available avenues of relief, such as administrative and judicial remedies, have proven to be ineffective. While MNCs prefer enforcement through China’s Police, the Public Security Bureau (PSB), many MNCs are unaware of the significant hidden dangers of using the PSB.

Most MNCs will delegate enforcement of trademark rights to their Chinese subsidiaries. These subsidiaries are known to make illegal payments to the PSB that may violate the laws of the PRC as well as the United States Foreign Corrupt Practices Act (FCPA). These acts expose …

Unauthorized And Unwise: The Lawful Use Requirement In Trademark Law, Robert A. Mikos

Vanderbilt Law School Faculty Publications

For decades, the United States Patent and Trademark Office ("PTO") has required trademark owners to comply with sundry nontrademark laws governing the sale of their trademarked goods and services. Pursuant to this "lawful use requirement," the Agency has refused or even cancelled registration of thousands of marks used on everything from Schedule 1 controlled substances to mislabeled soap. This Article subjects the Agency's lawful use requirement to long-overdue scrutiny. It suggests that in requiring compliance with other laws for registration, the PTO has lost sight of the one statute it is supposed to administer. In the process, the Agency has …

A Compulsory Solution To The Machine Problem, Cole G. Merritt

Vanderbilt Law School Faculty Publications

Artificial Intelligence (AI) is already disrupting and will likely continue to disrupt many industries. Despite the role AI already plays, AI systems are becoming increasingly powerful. Ultimately, these systems may become a powerful tool that can lead to the discovery of important inventions or significantly reduce the time required to discover these inventions. Even now, AI systems are independently inventing. However, the resulting AI-generated inventions are unable to receive patent protection under current US patent law. This unpatentability may lead to inefficient results and ineffectively serves the goals of patent law.

To embrace the development and power of AI, Congress …

A Modern Reconceptualization Of Copyrights As Public Rights, Matthew L. Pangle

Vanderbilt Journal of Entertainment & Technology Law

Copyright law is at a crossroads. In the wake of Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC, the patent, copyright, and intellectual property regimes as a whole, are primed for a modern reconceptualization. At the heart of this reconceptualization is the distinction between public rights, those vindicated by public offices for the public good, and private rights, those vindicated by private citizens for their exclusive government-granted monopolies. Thanks to Oil States, patent rights now exist in two separate bundles-—a public bundle including the patent grant itself and a private bundle consisting of a patent owner’s exclusivity rights. …

Breaking The Status Quo Of International Design Law: How The United States' Design Law Frustrates The Purpose Of The Hague Agreement, Nicholas P. Mack

Vanderbilt Journal of Transnational Law

This Note explores how the United States' substantive law frustrates the purpose of an international procedural agreement. The Hague Agreement Concerning the International Registration of Industrial Designs revolutionized the process of applying for industrial design protections on a global scale. The Hague Agreement's purpose is to support easily and efficiently acquired industrial design protections in contracting parties to the agreement by simplifying procedures for obtaining protection. The United States-a country without a coherent and dedicated industrial design law-joined this agreement with effect in 2015, allowing designers around the world to easily apply for industrial design protections in the United States. …

The Death Of The Genus Claim, Sean B. Seymore, Dimitry Karshted, Mark A. Lemley

Vanderbilt Law School Faculty Publications

The central feature of patent law in the chemical, biotechnology, and pharmaceutical industries is the genus claim a patent claim that covers not just one specific chemical but a group of related chemicals. Genus claims are everywhere, and any patent lawyer will tell you they are critical to effective patent protection. But as we show in this Article, the law has changed dramatically in the last thirty years, to the point where it is nearly impossible to maintain a valid genus claim. Courts almost always hold them invalid, either at trial or on appeal. Remarkably, courts do this without acknowledging …

Originality's Other Path, Joseph A. Fishman

Vanderbilt Law School Faculty Publications

Drawing on original archival research, this Article challenges the standard account of what originality doctrine is and what courts can do with it. It identifies Nelson's forgotten copyright legacy: a still-growing line of cases that treats music differently, sometimes even more analogously to patentable inventions than to other authorial works. These decisions seem to function as a hidden enclave within originality's larger domain, playing by rules that others couldn't get away with. They form originality's other path, much less trod than the familiar one but with a doctrinal story of its own to tell. Originality and nonobviousness's parallel beginnings reveal …

The Library Of Babel For Prior Art: Using Artificial Intelligence To Mass Produce Prior Art In Patent Law, Lucas R. Yordy

Vanderbilt Law Review

Artificial intelligence is playing an increasingly important role in the invention and innovation processes of our society. To date, though, much of the academic discussion on the interaction of artificial intelligence and the patent system focuses on the patentability of inventions produced by artificial intelligence. Little attention has been paid to organizations that are seeking to use artificial intelligence to defeat the patentability of otherwise patent-worthy inventions by mass producing prior art. This Note seeks to highlight the consequences of allowing mass-produced, AI-generated prior art to render valuable inventions unpatentable. Specifically, this Note concludes that AI-generated prior art decreases the …

The Research Patent, Sean B. Seymore

Vanderbilt Law Review

The patent system gives courts the discretion to tailor patentability standards flexibly across technologies to provide optimal incentives for innovation. For chemical inventions, the courts deem them unpatentable if the chemical lacks a practical, non-research-based use at the time patent protection is sought. The fear is that an early-stage patent on a research input would confer too much control over yet-unknown uses for the chemical, thereby potentially hindering downstream innovation. Yet, denying patents on research inputs can frustrate patent law’s broad goal of protecting and promoting scientific and technological advances.

This Article addresses this problem by proposing a new form …

Promoting Patent Practitioner Diversity: Expanding Non-Jd Pathways And Removing Barriers, Christopher M. Turoski

Vanderbilt Journal of Entertainment & Technology Law

The patent field suffers from a reciprocal problem: the cost of becoming a Registered Patent Attorney is high, and the diversity of the patent bar is low. The high cost of law school tuition (over $50,000 per year at some schools) prices out individuals from less privileged backgrounds, thereby decreasing the number of diverse candidates who could become Registered Patent Attorneys. The relatively low number of students with science, technology, or engineering (STE) degrees also restricts the number of diverse candidates who could become Registered Patent Attorneys. These factors contribute to a lack of diversity in the patent bar, reflecting …

Pausing The Game: Esports Developers’ Copyright Claims To Prevent Or Restrict Tournament Play, Alexander Tu

Vanderbilt Journal of Entertainment & Technology Law

Unlike traditional sports, esports are-—at their core—-video games, which must be designed and programmed by a game company. These video game developers are the copyright owners of the esports titles they create, which, in turn, results in continued developer control even after a player has purchased or downloaded the game. Because there is no relevant court precedent that is directly applicable to the world of esports, game developers unimpededly exert their copyright authority in order to restrict third-party tournaments that utilize their games, and in some cases, prevent those events from occurring altogether. This use of copyright authority is an …

Let Me Get My Glasses, I Can’T Hear You: Sheet Music, Copyright, And Led Zeppelin, Brandon P. Evans

Vanderbilt Journal of Entertainment & Technology Law

Musical copyright infringement cases are experiencing an identity crisis. The crisis is that courts are beginning their analyses of the similarities between compositions by examining visual, rather than aural, evidence. Prior to the 1976 Copyright Act, copyright protection extended only to musical works reduced to sheet music. That sheet music, which is filed with the US Copyright Office (Copyright Office) as a “deposit copy,” represents the sum of the composition’s copyright protection. Even though Congress amended the Copyright Act to allow for sound recordings of a composition to function as a deposit copy post-1976, courts—particularly the Ninth Circuit—begin evaluating musical …

Adapting Indian Copyright: Bollywood, Indian Cultural Adaptation, And The Path To Economic Development, Michael P. Goodyear

Vanderbilt Journal of Entertainment & Technology Law

Bollywood and the Indian film industry have enjoyed enormous success, being among the largest movie producers in the world. Yet, despite the bright image of Indian cinema producing over a thousand movies a year and selling billions of tickets, the industry has faced controversy over the practice of copying expression, sometimes practically scene for scene, from US and other international films and adapting them into a version that reflects Indian social and cinematic customs and mores (“Indian cultural adaptation”). A long-standing practice, Indian cultural adaptation in Bollywood has only attracted the attention of Hollywood studios in the past twenty years, …

When Art Might Constitute A Taking: A Takings Clause Inquiry Under The Visual Artists Rights Act, Thomas A. Shelburne

Vanderbilt Journal of Entertainment & Technology Law

At first glance, a federal statute protecting the moral rights of artists and their artwork seems like a unanimous victory. But it turns out that government action protecting certain works of art attached to buildings may give rise to a valid takings clause claim under the Fifth Amendment. Without compensation, a regulation requiring a landowner to maintain someone else’s property on his land would constitute a taking. The Visual Artists Rights Act of 1990 (VARA) requires landowners to maintain protected artwork attached to buildings or potentially face statutory damages. Although only one court has heard and subsequently denied a takings …

Intellectual Property As A Determinant Of Health, Ana S. Rutschman

Vanderbilt Journal of Transnational Law

Public health literature has long recognized the existence of determinants of health, a set of socioeconomic conditions that affect health risks and health outcomes across the world. The World Health Organization defines these determinants as “forces and systems” consisting of “factors combin[ing] together to affect the health of individuals and communities.” Frameworks relying on determinants of health have been widely adopted by countries in the global South and North alike, as well as international institutional players, several of which are direct or indirect players in transnational intellectual property (IP) policymaking. Issues raised by the implementation of IP policies, however, are …

The Research Patent, Sean B. Seymore

Vanderbilt Law School Faculty Publications

The patent system gives courts the discretion to tailor patentability standards flexibly across technologies to provide optimal incentives for innovation. For chemical inventions, the courts deem them unpatentable if the chemical lacks a practical, non-research-based use at the time patent protection is sought. The fear is that an early-stage patent on a research input would confer too much control over yet-unknown uses for the chemical, thereby potentially hindering downstream innovation. Yet, denying patents on research inputs can frustrate patent law's broad goal of protecting and promoting scientific and technological advances.

This Article addresses this problem by proposing a new form …

Race Cartels: How Constructor Collaboration Is Curbing Innovation In Formula 1, Chandler C. Gerard-Reimer

Vanderbilt Journal of Entertainment & Technology Law

Formula 1 is in the midst of a copycat scandal: technology has made it possible for teams to reverse engineer clones of competitors’ race cars. This is a less than ideal state of affairs for the championship series, which prides itself on being the pinnacle of motorsport and automotive innovation, thanks in large part to the cars’ rapid rate of technological advancement. In order to address this problem, the Fédération Internationale de l’Automobile (FIA), Formula 1’s governing body, must increase independent innovation efforts by amending the technical regulations to restrict the extent of presently allowed inter-team collaboration. Worried that the …

"The New Weapon Of Choice": Law's Current Inability To Properly Address Deepfake Pornography, Anne Pechenik Gieseke

Vanderbilt Law Review

Deepfake technology uses artificial intelligence to realistically manipulate videos by splicing one person’s face onto another’s. While this technology has innocuous usages, some perpetrators have instead used it to create deepfake pornography. These creators use images ripped from social media sites to construct—or request the generation of—a pornographic video showcasing any woman who has shared images of herself online. And while this technology sounds complex enough to be relegated to Hollywood production studios, it is rapidly becoming free and easy-to-use. The implications of deepfake pornography seep into all facets of victims’ lives. Not only does deepfake pornography shatter these victims’ …

The Machine As Author, Daniel J. Gervais

Vanderbilt Law School Faculty Publications

Machines are increasingly good at emulating humans and laying siege to what has been a strictly human outpost: intellectual creativity.

At this juncture, we cannot know with certainty how high machines will reach on the creativity ladder when compared to, or measured against, their human counterparts, but we do know this. They are far enough already to force us to ask a genuinely hard and complex question, one that intellectual property (“IP”) scholars and courts will need to answer soon; namely, whether copyrights should be granted to productions made not by humans but by machines.

This Article’s specific objective is …

Tonal Concept And Feel, Joseph P. Fishman

Vanderbilt Law School Faculty Publications

This essay is part of the Cardozo Arts and Entertainment Law Journal’s symposium issue revisiting the Ninth Circuit's now fifty-year-old copyright decision in Roth Greeting Cards v. United Card Co. Roth famously pushed a holistic “total concept and feel” approach to assessing similarity between the parties’ works, as opposed to a dissective one that would analyze the works’ individual components. While Roth itself was a case about visual works, courts over the last two decades have imported its total concept and feel standard into music cases. That approach has become a common target for critics of today’s music-infringement litigation trends. …

Rejection Hurts: Trademark Licenses And The Bankruptcy Code, Amanda E. James

Vanderbilt Law Review

Section 365 of the Bankruptcy Code empowers debtors to reject burdensome executory contracts. From 1988 until May 2019, the effect of such a rejection on trademark licenses was unclear. The Supreme Court’s recent decision in Mission Product Holdings, Inc. v. Tempnology, LLC settled the matter definitively: all rejections under § 365(g) operate exactly as a breach would outside the bankruptcy context. As such, if the trademark license would allow the licensee to continue using the mark after a breach, the licensee may continue to use the mark after a rejection. While this decision comports with the language of the Code …

Patenting New Uses For Old Inventions, Sean B. Seymore

Vanderbilt Law School Faculty Publications

A bedrock principle of patent law is that old inventions cannot be patented. And a new use for an old invention does not render the old invention patentable. This is because patent law requires novelty--an invention must be new. But while a new use for an old invention does not make the old invention patentable, the new use itself might be patentable. In fact, new-use patents comprise a significant part of the patent landscape-particularly in pharmaceuticals, when drug companies obtain new-use patents to repurpose old drugs. This trend has fueled debates over follow-on innovation and patent quality. But there is …

Patenting New Uses For Old Inventions, Sean B. Seymore

Vanderbilt Law Review

A bedrock principle of patent law is that old inventions cannot be patented. And a new use for an old invention does not render the old invention patentable. This is because patent law requires novelty—an invention must be new. But while a new use for an old invention does not make the old invention patentable, the new use itself might be patentable. In fact, new-use patents comprise a significant part of the patent landscape—particularly in pharmaceuticals, when drug companies obtain new-use patents to repurpose old drugs. This trend has fueled debates over follow-on innovation and patent quality. But there is …

Privative Copyright, Shyamkrishna Balganesh

Vanderbilt Law Review

“Privative” copyright claims are infringement actions brought by authors for the unauthorized public dissemination of works that are private, unpublished, and revelatory of the author’s personal identity. Driven by considerations of authorial autonomy, dignity, and personality rather than monetary value, these claims are almost as old as Anglo-American copyright law itself. Yet modern thinking has attempted to undermine their place within copyright law and sought to move them into the domain of privacy law. This Article challenges the dominant view and argues that privative copyright claims form a legitimate part of the copyright landscape. It shows how privative copyright claims …

Franchise Participants As Proper Patent Opponents: Walker Process Claims, Robert W. Emerson

Vanderbilt Journal of Entertainment & Technology Law

Franchise parties may be sued for patent infringement, or they may seek to sue others for an antitrust injury as the result of a fraudulently obtained patent. Indeed, franchisors and franchisees may simultaneously fall under both categories-sued for infringement but aggrieved because the very basis of that suit is illegitimate in their eyes. These franchise parties may turn for relief to a patent-validity challenge authorized in the seminal case Walker Process Equipment, Inc. v. Food Machine & Chemical Corp. Franchise participants-franchisees and franchisors alike-may be the ideal Walker Process claimants. When these types of cases occur, the damages within the …

The Effects Of Myriad And Mayo On Molecular-Test Development In The United States And Europe: Interviews From The Frontline, Johnathon Liddicoat, Kathleen Liddell, Mateo Aboy

Vanderbilt Journal of Entertainment & Technology Law

US Supreme Court decisions in Mayo Collaborative Services v. Prometheus Laboratories and Association for Molecular Pathology v. Myriad Genetics Inc. caused US and European law on what is patentable subject matter to diverge significantly. Both cases related to molecular tests and changed decades of patent practice. Whether the decisions adversely affect the development of molecular tests in the United States and Europe has been a matter of much speculation but limited empirical investigation. This interview-based study has three main findings. First, Myriad and Mayo have negatively affected the development of some molecular tests. Notably, half of the US university technology-transfer …

Traditional Knowledge In Taiwan: A Call For Greater Participation Of Indigenous Peoples In The Global Intellectual Property Marketplace, James M. Cooper

Vanderbilt Journal of Transnational Law

This Article explores the plight of the Aborigines of Taiwan and the legal protections that exist for their Traditional Knowledge. While Taiwan continues to face international isolation with a diminished number of states recognizing the Republic of China as the seat of China, the island's government has taken limited steps to recognize language, cultural, and economic rights of its Indigenous peoples. International law has not been helpful in protecting Traditional Knowledge, but Taiwan could use its vast economic resources and positive track record in protecting some of these rights to further its goals of international recognition. This Article details the …

Algorithmic Speech And Freedom Of Expression, Alan Sears

Vanderbilt Journal of Transnational Law

Algorithms have become increasingly common, and with this development, so have algorithms that approximate human speech. This has introduced new issues with which courts and legislators will have to grapple. Courts in the United States have found that search engine results are a form of speech that is protected by the Constitution, and cases in Europe concerning liability for autocomplete suggestions have led to varied results. Beyond these instances, insight into how courts handle algorithmic speech are few and far between.

By focusing on three categories of algorithmic speech, defined as curated production, interactive/responsive production, and semi-autonomous production, this Article …

The Price Of Closing The Value Gap: How The Music Industry Hacked Eu Copyright Reform, Annemarie Bridy

Vanderbilt Journal of Entertainment & Technology Law

Sweeping changes are coming to copyright law in the European Union. Following four years of negotiations, the European Parliament in April 2019 approved the final text of the Digital Single Market (DSM) Directive. The new directive contains provisions for enhancing cross-border access to content available through digital subscription services, enabling new uses of copyrighted works for education and research, and, most controversially, "clarifying" the role of online services in the distribution of copyrighted works.

Article 17 of the DSM Directive is directed to the last of these goals. It was designed to address the so-called value gap-the music industry's longstanding …