Intellectual Property Law Commons^™

Socially Responsible Corporate Ip, J. Janewa Oseitutu

Vanderbilt Journal of Entertainment & Technology Law

Many companies practice corporate social responsibility (CSR) as part of their branding and public relations efforts. As part of their CSR strategies, some companies adopt voluntary codes of conduct in an effort to respect human rights. This Article contemplates the application of CSR principles to trade-related intellectual property (IP). In theory, patent and copyright laws promote progress and innovation, which is why IP rights are beneficial for both IP owners and for the public. Trademark rights encourage businesses to maintain certain standards and allow consumers to make more efficient choices. Though IP rights are often discussed in relation to the …

Behind The Steele Curtain: An Empirical Study Of Trademark Conflicts Law, 1952-2016, Tim W. Dornis

Vanderbilt Journal of Entertainment & Technology Law

The law on international trademark disputes is founded on precedent from 1952. Steele v. Bulova Watch Co. is the first and only Supreme Court decision addressing the question of how far the Lanham Act should be extended beyond the United States' national borders when international infringement is at issue. The decision laid the foundation for a three-pronged test that focuses on the factors of defendant nationality, effects on US commerce, and conflicts with foreign law. Although international trademark conflicts have multiplied dramatically--particularly throughout the last decade--there has been no systematic and comprehensive account of the actual state of the law. …

Eli Lilly And The International Investment Law Challenge To A Neo-Federal Ip Regime, Jason Yackee, Shubha Ghosh

Vanderbilt Journal of Entertainment & Technology Law

This Article examines the implications of the Eli Lilly case-and international investment law (IIL) more generally-for the operation of an international intellectual property (IP) regime that functions along the lines of the "neo-federalist" model developed by Professors Dinwoodie and Dreyfuss. The neo-federalist model involves a world in which the international IP regime grants national political communities substantial discretion to pursue their own visions of the normatively proper balance between the rights of IP creators and of those who seek to use it. Importantly, that discretion involves the ability to alter the existing normative balance in either the direction of more …

The Limits Of International Copyright Exceptions For Developing Countries, Ruth L. Okediji

Vanderbilt Journal of Entertainment & Technology Law

The relationship between intellectual property (IP) protection and economic development is not better understood today than it was five decades ago at the height of the independence era in the Global South. Development indicators in many developing and least-developed countries reflect poorly in precisely the areas that are most closely associated with copyright law's objectives, such as promoting democratic governance, facilitating a robust marketplace of ideas, fostering domestic markets in cultural goods, and improving access to knowledge. Moreover, evidence suggests that copyright law has not been critical to the business models of the creative sectors in leading emerging markets. These …

Honest Copying Practices, Joseph P. Fishman

Vanderbilt Law School Faculty Publications

One of intellectual property theory’s operating assumptions is that creating is hard while copying is easy. But it is not always so. Copies, though outwardly identical, can come from different processes, from cheap digital duplication to laborious handmade re-creation. Policymakers around the world face a choice whether such distinctions should affect liability. The two branches of intellectual property that condition liability on actual copying, copyright and trade secrecy, give different answers. Both in the United States and elsewhere, trade secrecy regimes distinguish between copying methods deemed illegitimate and those deemed legitimate, what international treaties call “honest commercial practices.” Copyright regimes, …

Uninformative Patents, Sean B. Seymore

Vanderbilt Law School Faculty Publications

It is a bedrock principle of patent law that an inventor need not know or understand how or why an invention works. The patent statute simply requires that the inventor explain how to make and use the invention. But explaining how to make and use something without understanding how or why it works yields patents with uninformative disclosures. Their teaching function is limited; someone who wants to understand or figure out the underlying scientific principles must turn elsewhere. This limited disclosure rule does not align with the norms of science and tends to make patent documents a less robust form …

A Distinction Without A Difference: Convergence In Claim Construction Standards, Laura E. Dolbow

Vanderbilt Law Review

In 2007, a district court found a patent for a medical device valid. While the district court litigation was pending, however, the Patent and Trademark Office ("PTO") found the exact same patent invalid. The Court of Appeals for the Federal Circuit then affirmed both decisions. At first glance, the idea that a patent could be found valid in one forum but invalid in another seems absurd. Yet the law condones these results: district courts and the PTO apply different claim construction standards. The Leahy-Smith America Invents Act of 2011 ("AIA") created new post-grant proceedings at the PTO to challenge patent …

Causal Responsibility And Patent Infringement, Dmitry Karshtedt

Vanderbilt Law Review

It is not uncommon for multiple parties in the stream of commercemanufacturers, distributors, end users-to be involved in the infringement of a single patent. Yet courts continue to struggle with such scenarios. Attempts to deal with them-particularly when plaintiffs asserted so-called method patents, which cover specific "steps," or actions-have produced results that defy commonsense notions of legal responsibility. In method patent cases, the patentee must clear much higher legal hurdles to prevail against a manufacturer who designed and supplied an infringing device than against an end user who simply bought that device and operated it as intended. The manufacturer can …

I Dissent: The Federal Circuit's "Great Dissenter," Her Influence On The Patent Dialogue, And Why It Matters, Daryl Lim

Vanderbilt Journal of Entertainment & Technology Law

This Article is the first study to comprehensively explore the centrality of the patent dialogue at the Court of Appeals for the Federal Circuit, the nation's principal patent court from empirical, doctrinal, and policy perspectives. It offers several insights into how the Federal Circuit reaches consensus and when it does not, serving as a window into its inner workings, a reference to academics, judges, and attorneys alike. More broadly, this Article provides a template to study the "legal dialogue" of other judges at the Federal Circuit, those in other Circuits, as well as those in other areas of the law. …

Promoting Access Over Ownership: Realigning Antitrust And Intellectual Property Law To Usher In An Era Of Collaborative Consumption, Adrian Kuenzler

Vanderbilt Journal of Entertainment & Technology Law

Following the US Supreme Court's endorsement of the promotion of consumer welfare as the single goal of antitrust and intellectual property laws, many courts have reasserted their commitment to the market access doctrine for antitrust and intellectual property law liability. These courts have rejected the Court's submission in GTE Sylvania to adhere to a strict output/profitability test concentrating predominantly on the positive and negative welfare effects regarding allegedly infringing conduct. This Article examines several important antitrust and intellectual property law decisions and locates within them a common flaw to express an intelligible, distinct doctrinal function for giving precedence to market …

Copyright Paternalism, Kevin J. Hickey

Vanderbilt Journal of Entertainment & Technology Law

The dominant justification for copyright is based on the notion that authors respond rationally to economic incentives. Despite the dominance of this incentive model, many aspects of existing copyright law are best understood as motivated by paternalism. Termination rights permit authors to rescind their own earlier assignments of copyright. The elimination of formalities protects careless authors from forfeitures of copyright if they fail to register the copyright or place appropriate notice on their works. The law limits how copyrights can be transferred, when rights in emerging media can be assigned, and which works can be designated as "made for hire" …

J.D. Salinger And Copyright's Rule Of The Shorter Term, E. Townsend Gard

Vanderbilt Journal of Entertainment & Technology Law

Recently, the small publishing house Devault-Graves took on the Salinger Estate in an, almost, epic battle to determine whether the copyright term had ended on three of Salinger's early short stories in each country around the world. Devault-Graves wanted a declaratory judgment stating that if the copyright term had expired in the United States, it would have expired in all other countries with a "rule of the shorter term" (RST). But copyright is never that simple, as Devault-Graves soon found out. This short-lived case provides a useful lens through which to view the property rights as defined by the "limited" …

How Photographs Infringe, Terry S. Kogan

Vanderbilt Journal of Entertainment & Technology Law

Courts and commentators have lavished attention on the question of what makes a photograph original and entitled to copyright protection. Far less attention has been devoted to the issue of how photographs infringe. This is the first Article to systematically explore the different ways in which a photograph can steal intellectual property. Photographs can infringe in two ways: by replication and by imitation. A photograph infringes by replication when, without permission, a photographer points her camera directly at a copyright-protected work--a sculpture, a painting, another photograph--and clicks the shutter. A photograph can also infringe by imitation. In such cases, the …

Humanizing Intellectual Property: Moving Beyond The Natural Rights Property Focus, J. Janewa Osei-Tutu

Vanderbilt Journal of Entertainment & Technology Law

This Article compares the natural rights property framework with the international human rights framework for intellectual property. These two frameworks share a common theoretical basis in the natural rights tradition but appear to lead to conflicting outcomes. Proponents of natural rights to intellectual property tend to support more expansive intellectual property protections. Yet, advocates of a human rights approach to intellectual property contend that human rights will have a moderating influence on intellectual property law. This Article is among the first scholarly works to explore the apparent conflict between these two important frameworks for intellectual property. It concludes that a …

Patents And Mobile Devices In India: An Empirical Survey, Jorge L. Contreras, Rohini Lakshane

Vanderbilt Journal of Transnational Law

Though India has the second-largest wireless subscriber base in the world, with more than 150 domestic mobile device vendors, it has, until recently, remained relatively unaffected by the global smartphone wars. Over the past few years, however, a growing number of patent enforcement actions have been brought by multinational firms against domestic Indian producers. These actions, which have largely resulted in judgments favoring foreign patent holders, have given rise to a variety of proposals for addressing this situation. In order to assess the potential impact of patents on the mobile device market in India, and to assist policy makers in …

The Rcep And Trans-Pacific Intellectual Property Norms, Peter K. Yu, Peter K. Yu

Vanderbilt Journal of Transnational Law

This Article examines the Regional Comprehensive Economic Partnership (RCEP) with a focus on the intellectual property norms that it seeks to develop. The first half of the Article focuses on the RCEP Agreement as a mega-regional agreement. It begins by briefly discussing the historical origins of the RCEP. It then explores three possible scenarios in which the RCEP Agreement will help shape trade and intellectual property norms in the Asia-Pacific region. Specifically, the Article evaluates the scenarios in which the agreement will function as a rival pact, a building block, and an alternative path. The second half of this Article …

Globalizing Property Law: An Institutional Analysis, Amnon Lehavi

Vanderbilt Journal of Transnational Law

This Article identifies the key role that institutions play in moving toward an effective cross-border regime in property law. Property is based on an in rem principle, which should provide a single system for ranking rights, powers, and priorities in assets that applies to all interested parties. In a global context, this feature of property law requires a cross-border legal ordering by an array of domestic and supranational institutions: legislative, administrative, and adjudicative.

The Article argues that the present fragmentation of property norms across national borders, and the incompleteness of supranational institutions that deal with property law, may place limits …

Reinvention, Sean B. Seymore

Vanderbilt Law School Faculty Publications

It is axiomatic that once an invention has been patented, it cannot be patented again. This aligns with the quid pro quo theory of patents — the public would receive nothing new in exchange for the second patent. Enforcing this rule is done through the novelty requirement, which bars a patent if the invention is already known. But the rule is hard to justify if the original patentee reneged on the quid pro quo by inadequately disclosing how to make and use the invention. The inadequate disclosure suggests that the original inventor did not invent anything and the public received …

The "Strict Liability" Of Direct Patent Infringement, Lynda J. Oswald

Vanderbilt Journal of Entertainment & Technology Law

In 1995, the Federal Circuit summarily attached the label of "strict liability" to direct patent infringement, even though that term does not appear in any US Patent Act enacted in the past two centuries. The catechism of "strict" direct patent infringement liability is now so well engrained in patent doctrine that it is easy to lose sight of how recent the advent of this terminology is in the case law, and how troublesome application of this standard has proven, even to the Federal Circuit, which created it. The first Patent Act (1790) preceded the emergence of tort law as a …

Evaluating Market Reactions To Non-Practicing Entity Litigation, Emiliano Giudici, Justin Blount

Vanderbilt Journal of Entertainment & Technology Law

An ongoing debate in patent law involves the role "non-practicing entities," sometimes called "patent trolls," serve in the patent system. Some argue they serve as valuable market intermediaries, while others contend they are a drain on innovation and an impediment to a well-functioning patent system. This Article adds to the data available in this debate by conducting an event study that analyzes the market reaction to patent litigation filed by large "mass aggregator" non-practicing entities against large publicly traded companies. This study advances the literature by attempting to reproduce the results of previous event studies done in this area with …

The Non-Recording, Non-Artist" Recording Artist": Expanding The Recording Artist's Brand Into Non-Music Arenas, Suzanne Kessler

Vanderbilt Journal of Entertainment & Technology Law

The changing nature of the music business presents earnings challenges for both record labels and recording artists. Historically, labels and artists entered into recording contracts pursuant to which the artists created music which the labels funded, distributed, marketed, and promoted. Many artists made good livings from music sales, earning dollars per album, while the labels profited even more. However, as digital delivery, especially streaming, now supplants physical records as the primary music consumption manner, the money that labels and artists realize from music sales has significantly decreased. In particular, artists earn fractions of pennies per track streamed. Labels, too, are …

Symposium: The Disclosure Function Of The Patent System, Sean B. Seymore

Vanderbilt Law Review

A fundamental goal of the patent system is to encourage the dissemination of technical knowledge.' The patent system achieves this goal through a quid pro quo-in exchange for the right to exclude, the inventor must fully disclose the technical details of the invention. As soon as a patent document publishes, there is hope that the public will use the technical details disclosed therein to improve upon the invention, to design around it, or to engage in other innovative activities. So while the patentee maintains the right to exclude others from practicing the invention until the patent expires, the technical information …

Disclosing Designs, Jason Du Mont, Mark D. Janis

Vanderbilt Law Review

The disclosure function figures prominently in many accounts of the utility patent system. But what of its role in the design patent system? Should it be dismissed as trivial? And if so, what are the practical consequences for design patent doctrine in view of the fact that the doctrines that implement the disclosure function in utility patent law also apply to design patents by statutory mandate? The disclosure theory posits that patent documents disclose technical information that serves as a quid pro quo for the patent grant. Even aside from controversies about whether the disclosure function is robust for utility …

Pierson, Peer Review, And Patent Law, Lisa L. Ouellette

Vanderbilt Law Review

When has a researcher done enough to merit a patent? Should the patent belong to the researcher who first suggests an invention or the one who brings it to fruition? The canonical dispute over a fox in Pierson v. Post is used to illustrate the competing policy considerations in deciding when to award a new property right, including providing efficient incentives, setting forth clear rules to guide future behavior, and respecting natural rights. In patent law, all of these considerations suggest that in practice, many patents are awarded too early, before an applicant has demonstrated that the invention is likely …

Patent Disclosures And Time, Timothy R. Holbrook

Vanderbilt Law Review

Patents by their very nature are pregnant with considerations of time. The exclusive rights they afford only last for a finite period- generally from issuance until twenty years from the filing date of the application. Moreover, since patents necessarily engage with the evolution of technology, patents reflect various "snap shots" in time that reflect the state of the art at a particular moment. Patent law must constantly wrestle with time. Many of these topics have been explored extensively in both judicial decisions and the literature. The most obvious example of considering the temporal aspect of patent law is ... obviousness. …

Legal Fictions And The Role Of Information In Patent Law, Craig A. Nard

Vanderbilt Law Review

In his 1974 Nobel Prize Lecture, Freidrich Hayek admonished us, as he did throughout so much of his work, about the limitations of our knowledge and stressed what knowledge we do have should be used "not to shape the results as the craftsman shapes his handiwork, but rather to cultivate a growth by providing the appropriate environment." This analogy-what Hayek referred to as the "pretense of knowledge"-is germane to legal systems where the common law plays a prominent role. Patent law is such a field. Judicial stewardship of the patent space can be seen as an institutional advantage, one that …

Contextualizing Patent Disclosure, Colleen V. Chien

Vanderbilt Law Review

One of the main justifications for a patent system is that patents disclose useful technical information that others can learn from. However, patents are not performing this function well. The average patent is written in legalese, uses vague language, and is hard to connect to commercial activity. Legal scholars have responded with calls to improve the patent document through better writing, more examples, and better enforcement of patent doctrines. The courts have sought to ensure that patent specifications are robust and justify the grant of a monopoly. This follows from the Supreme Court's characterization of technical teachings within a patent …

Physicalism And Patent Theory, Christopher A. Cotropia

Vanderbilt Law Review

United States patent law's view on the need for a physical embodiment of the invention, and the continued production and use of an embodiment, has varied over the last two centuries. In the early days, the requirement for 'physicalism" was high, with the inventor being required to actually reduce the invention to practice prior to patenting, and enforceability was tied to "working" the claimed invention. By the early 1900s, these requirements of physicalism disappeared. This changing view on physicalism speaks volumes as to which major patent theory the law emphasizes, with physicalism supporting the incentive to invent theory and the …

Nontechnical Disclosure, J. Jonas Anderson

Vanderbilt Law Review

One of the primary goals of the patent system is the broad dissemination of technical knowledge. Patent law forces inventors to disclose how their inventions work. Inventors seeking a patent are required to describe "the manner and process of making and using" the patented invention. Additionally, a patent must "enable any person skilled in the art.., to make and use" the invention. Despite this explicit statutory disclosure requirement, patent law could do better at ensuring that patents convey useful information to the public. Academics have vigorously debated about whether and to what degree the patent system performs its disclosure function. …

The Doctrinal Structure Of Patent Law's Enablement Requirement, Jason Rantanen

Vanderbilt Law Review

This Article examines the formal law of enablement, focusing on a perceived split in the enablement doctrine: whether disclosure of a single mode of an invention is necessarily sufficient to satisfy the requirement of enablement or whether the full scope of the claim must be enabled. In examining this split, this Article articulates the enablement inquiry in conceptual terms, identifying two elements of the courts' analyses that are implicit in every enablement determination: the nature of enablement disputes, as challenges and the articulation of a target or targets that must be enabled. , With this understanding in mind, the "full …