Intellectual Property Law Commons^™

Abolishing The Missing-Claim Rule For Judicial Cancellations, Ryan Vacca

Faculty Publications

Section 3 7 of the Lanham Act vests courts with the power to order the Director of the U.S. Patent and Trademark Office (PTO) to cancel trademark registrations. This power to "rectify the register" is discretionary, and since the act's enactment in 1946, courts have routinely granted cancellation requests when the trademark's invalidity was established in the trial court proceedings. However, that is not always the outcome. Some courts refuse to exercise their power to rectify the register under section 3 7 even with a proven and valid basis for cancellation.

This article examines cases where the district courts refused …

The Grammar Of Trademarks, Laura A. Heymann

Faculty Publications

How do people talk when they talk about trademarks? If trademarks have
become, as linguist Geoffrey Nunberg suggests, our “new global tongue,”
perhaps we should pay greater attention to the grammar we use when we
talk about them. We use “Coke” to refer to the Coca-Cola beverage in the
North, and “coke” to refer to any kind of soda in the South, yet we still
manage to get the drinks we desire. We use trademarks as verbs—we
“xerox” a document or “tivo” a television program—without losing sight
of the fact that “Xerox” and “TiVo” are brands of particular products.
We …

Protection For Works Of Foreign Origin Under The 1909 Copyright Act, Tyler T. Ochoa

Faculty Publications

One of the principal goals of the 1909 Copyright Act was to simplify and streamline the formalities required to obtain copyright protection. Before the 1909 Copyright Act, authors had to register their works before publication in order to be eligible for copyright protection; and notice of the registration had to be included on all copies published in the United States. If a work was published anywhere in the world before registration, or if the notice was omitted when the work was published domestically, the work went into the public domain. Under the 1909 Act, however, authors only had to publish …

Book Review: Reviewing Part Iii Of Innovation For The 21st Century: Harnessing The Power Of Intellectual Property And Antitrust Law, Dennis D. Crouch

Faculty Publications

I have very much enjoyed reading Professor Michael Carrier's important new book on the intersection of law and innovation, and greatly appreciate his contributions to the field. In this short essay, I will focus my discussion on my sole area of expertise—patent law. Carrier takes-on the subject of patents in Part III of his book. I agree with most of what Carrier writes. To make this essay more interesting, I focus on some of our areas of apparent disagreement.

An Empirical Study Of The Role Of The Written Description Requirement In Patent Prosecution, Dennis D. Crouch

Faculty Publications

An en banc Federal Circuit is now considering whether Section 112 of the Patent Act as properly interpreted includes a written description requirement that is separate and distinct from the enablement requirement. Although the USPTO has no direct role in the infringement dispute, the government submitted an amicus curie brief arguing that a separate written description requirement is “necessary to permit the USPTO to perform its basic examination function.” However, when pressed during oral arguments the government could not point to any direct evidence supporting its contention.

This essay presents the results of a retrospective empirical study of the role …

Intellectual Property And Antitrust Limits On Contract: Comment, Matthew J. Holian, Neil Nguyen

Faculty Publications

In their chapter in Dynamic Competition and Public Policy (2001, Cambridge University Press), Burtis and Kobayashi never defined their model's discount rate, making replicating their simulation results difficult. Through our own simulations, we were able to verify their results when using a discount rate of 0.10. We also identified two new types of equilibria that the authors overlooked, doubling the number of distinct equilibria in the model.

A Tale Of (At Least) Two Authors: Focusing Copyright Law On Process Over Product, Laura A. Heymann

Faculty Publications

No abstract provided.

The Public's Domain In Trademark Law: A First Amendment Theory Of The Consumer, Laura A. Heymann

Faculty Publications

No abstract provided.

Of Trolls, Davids, Goliaths, And Kings: Narratives And Evidence In The Litigation Of High-Tech Patents, Colleen V. Chien

Faculty Publications

While each patent dispute is unique, most fit the profile of one of a limited number of patent litigation stories. A dispute between an independent inventor and a large company, for instance, is often cast in "David v. Goliath" terms. When two large companies fight over patents, in contrast, they are said to be playing the "sport of kings." Some corporations engage in "defensive patenting" in order to deter others from suing them. Patent licensing and enforcement entities who sue have been labeled "trolls." Finally, observers of the patent system call the use of patent litigation to impose or exploit …

Rethinking Anticircumvention's Interoperability Policy, Aaron K. Perzanowski

Faculty Publications

Interoperability is widely touted for its ability to spur incremental innovation, increase competition and consumer choice, and decrease barriers to accessibility. In light of these attributes, intellectual property law generally permits follow-on innovators to create products that interoperate with existing systems, even without permission. The anticircumvention provisions of the Digital Millennium Copyright Act ("DMCA") represent a troubling departure from this policy, resulting in patent-like rights to exclude technologies that interoperate with protected platforms. Although the DMCA contains internal safeguards to preserve interoperability, judicial misinterpretation and narrow statutory text render those safeguards largely ineffective.

One approach to counteracting the DMCA's restrictions …

Copyright Law: The Last Five Years Of Journal Coverage, Tyler T. Ochoa

Faculty Publications

Five years ago, I was asked to write an essay to celebrate the 20th anniversary of the Santa Clara Computer and High Technology Law Journal. In that essay, I surveyed the major developments in copyright law during the previous twenty years and documented how those developments had been chronicled (or foreshadowed) in the Journal. Today, as the Journal publishes the first issue of its 25th volume, I take this opportunity to look back at the Journal's coverage of copyright law during the past five years.

Brand Spillovers, Eric Goldman

Faculty Publications

This Article considers the spillover effects of trademarks - in particular, brand spillovers, which occur when consumer interest in a trademark increases the profits of third parties who do not own the trademark. Using techniques such as loss leaders and shelf space adjacency, retailers routinely create brand spillovers for their profit, and trademark law generally has not restricted these activities. Online intermediaries, such as search engines, also create and profit from brand spillovers by selling manufacturers' trademarks for advertising purposes (keyword triggering). However, in contrast to retailer practices, keyword triggering has sparked a heated and irresolute battle over its legitimacy …

Viewing Virtual Property Ownership Through The Lens Of Innovation, Ryan Vacca

Faculty Publications

Over the past several years, many scholars have wrestled with the idea of how property rights for items created in virtual worlds should be conceptualized. Some have discussed utilitarian models, others have examined a Lockean natural rights theory, and still others view virtual property merely as another form of intellectual property. Regardless of how virtual property is conceptualized and which theory it best fits, most, if not all, commentators agree that the law ought to recognize virtual property as property and vest someone with those rights.

This Article moves beyond the initial debate about how property rights in virtual property …

Everything Is Transformative: Fair Use And Reader Response, Laura A. Heymann

Faculty Publications

No abstract provided.

The Reasonable Person In Trademark Law, Laura A. Heymann

Faculty Publications

No abstract provided.

Expanding Preferential Treatment Under The Record Rental Amendment Beyond The Music Industry, Ryan Vacca

Faculty Publications

This Article explores the development of copyright law's first sale doctrine and the Record Rental Amendment (RRA) in light of the Sixth Circuit's interpretation of the RRA in Brilliance Audio, Inc. v. Haights Cross Communications, Inc. This Article does not take issue with the court's conclusion, but instead uses the differing conclusions of the majority and dissent to illustrate that the RRA exception is in need of Congressional clarification. This Article also examines whether the Record Rental Amendment should be amended to include audiobooks and other non-musical works, concluding that they should. The author then proposes two alternative amendments to …

F(R)Ee Expression: Reconciling Copyright & The First Amendment, Raymond Shih Ray Ku

Faculty Publications

This essay explores the relationship between copyright and free speech by critically evaluating the proposition that conflicts between the two can be eliminated because the Framers intended both to be engines for free expression. My purpose is not to set forth a comprehensive theory of copyright and free speech, but is more modest. This essay argues that while useful, reference to the Framers' intent only goes so far in avoiding conflicts between copyright and free speech, and when viewed outside of the facts presented by Harper & Row and Eldred, reliance upon the Framers' intent arguably increases such conflicts. Moreover, …

Rethinking Patent Law’S Uniformity Principle, Craig Allen Nard, John F. Duffy

Faculty Publications

Modern law on expert testimony insists, as a condition of admissibility, that the asserted expertise be determined by the trial judge to be reliable. Reliability is usually characterized as a dichotomous attribute of evidence, as if expertise were either reliable or unreliable. This article argues that making progress in the development of meaningful and appropriate restrictions on the admissibility of expert testimony requires that we abandon this conceptualization and understand the implications of endorsing a gradational notion of reliability in which evidence can be more or less reliable and in which a comparative assessment of reliability is prominent. Consistent with …

Promoting Diverse Cultural Expression: Lessons From The U.S. Copyright Wars, Raymond Shih Ray Ku

Faculty Publications

In 2007, the United Nations adopted the Convention on the Protection and Promotion of the Diversity of Cultural Expression (CCD) with the goal of creating an environment that encourages individuals and social groups to create, distribute, and have access to diverse cultural expression from their own cultural and from cultures around the world. With regard to domestic and international efforts to implement the CCD and reconcile its goals with other international norms, the author argues that valuable lessons can be learned from current trends and issues in U.S. copyright law. Specifically, the author argues that the current debate over copyright's …

Design Patents: An Alternative When The Low Standards Of Copyright Are Too High, Ryan Vacca

Faculty Publications

The standard for copyright protection is notoriously low - the work must be independently created by the author and possess a minimal degree of creativity. Nonetheless, even with that generous standard, the courts and the Copyright Office recognize that certain works do not contain even that minimum level of creativity such that they are categorically refused copyright protection. Blank forms, and other forms that do not convey information, fall within this category.

In contrast, and for good reason, the standard for design patent protection is much more burdensome. Design patents protect new, original, ornamental, and non-obvious designs. This more difficult …

A Panoptic Approach To Information Policy: Utilizing A More Balanced Theory Of Property In Order To Ensure The Existence Of A Prodigious Public Domain, Christine Galbraith Davik

Faculty Publications

Public access to ideas and information is critically important to creativity, competition, innovation, and a democratic culture. Nonetheless, material that belongs in the public domain is increasingly being transformed into private property. Data which was once freely available has become inaccessible as a result of legislatively or judicially sanctioned technological and contractual constraints. This is due in large part to the fact that lawmakers promulgating legislation and judges resolving disputes concerning data have failed to adequately take into account the multi-dimensional problems involved in controversies concerning access to ideas and information. The focus is often inappropriately centered on the tangible …

The Tragedy Of Trips, Peter M. Gerhart

Faculty Publications

This Article argues that sound intellectual property policy requires not only that the policymaker establish an appropriate incentive for invention but also that the policymaker determine how the cost of that incentive should be distributed across various classes of consumers. It is the distributive dimension of intellectual property policy that makes existing international institutions such an unsound mechanism for determining global rules for intellectual policy--the policymakers are simply not able to make the appropriate kinds of decisions. I suggest some ways in which institutional structures can be modified to achieve a better balance.

The (Boundedly) Rational Basis Of Trademark Liability, Jeremy N. Sheff

Faculty Publications

This article argues that trademark infringement and dilution are best understood as commercial behavior that manipulates the cognitive biases of consumers, and as such threatens to render their heuristic judgments persistently inaccurate. In this view, trademark liability—whether imposed under the label of infringement or dilution—serves neither to protect property rights of trademark owners, nor to protect them against the unfair trade practices of competitors, but to shape consumer markets in such a way as to conform to the innate cognitive processes of boundedly rational consumers. The trademark regime can thus be understood as a legal apparatus designed (albeit perhaps unconsciously) …

Metabranding And Intermediation: A Response To Professor Fleischer, Laura A. Heymann

Faculty Publications

No abstract provided.

The Trademark/Copyright Divide, Laura A. Heymann

Faculty Publications

No abstract provided.

Recent Developments In Copyright Law: Selected U.S. Supreme Court, Court Of Appeals, And District Court Opinions Between February 1, 2005 And May 1, 2006, Tyler T. Ochoa

Faculty Publications

This article highlights nine U.S. copyright law decisions handed down between February 1, 2005 and May 1, 2006. This review was originally delivered as a speech at The 50th Annual Conference of Developments in Intellectual Property Law held by The John Marshall Law School Center for Intellectual Property Law on May 26, 2006. Discussing a wide range of cases from peer-to-peer file sharing to standing, the analysis focuses on the most recent developments in copyright.

Giving Intellectual Property, Xuan-Thao Nguyen, Jeffrey A. Maine

Faculty Publications

The interdisciplinarity of intellectual property and taxation poses many challenges to the disparate existing norms in each field of law. This Article identifies and critiques the current tax regime governing the giving of intellectual property as a manifestation of the failure to understand the principles and policies underlying intellectual property and the firm. It proposes an incentives-based system that would encourage firms to extricate part of their repository of residual rights by surrendering their monopolistic ownership of intellectual property for the benefit of charitable organizations and, in turn, the development and growth of society.

The Penumbral Public Domain: Constitutional Limits On Quasi-Copyright Legislation, Aaron K. Perzanowski

Faculty Publications

This Article attempts to reconcile the breadth of the modern Commerce Clause with the notion of meaningful and enforceable limits on Congress' copyright authority under Article I, Section 8, Clause 8.

The Article aims to achieve two objectives. First, it seeks to outline a general approach to identifying and resolving inter-clause conflicts, sketching a methodology that has been lacking in the courts' sparse treatment of such conflicts. Second, it applies that general framework to the copyright power in order to outline the scope of constitutional prohibitions against quasi-copyright protections. In particular, this application focuses on the federal anti-bootlegging statutes and …

The Magnificence Of The Disaster: Reconstructing The Sony Bmg Rootkit Incident, Deirdre Mulligan, Aaron K. Perzanowski

Faculty Publications

Late in 2005, Sony BMG released millions of Compact Discs containing digital rights management technologies that threatened the security of its customers' computers and the integrity of the information infrastructure more broadly. This Article aims to identify the market, technological, and legal factors that appear to have led a presumably rational actor toward a strategy that in retrospect appears obviously and fundamentally misguided.

The Article first addresses the market-based rationales that likely influenced Sony BMG's deployment of these DRM systems and reveals that even the most charitable interpretation of Sony BMG's internal strategizing demonstrates a failure to adequately value security …

Copyright Lochnerism, Raymond Shih Ray Ku

Faculty Publications

Part I of this essay outlines the conflict between copyright and the First amendment as well as, the complementary argument for reconciling copyright and free speech, as it has been formulated by scholars and the Supreme Court. Part II discusses what I have referred to as the Framers' copyright and the extent to which arguments based upon the Framers' intent in this area may reconcile copyright and free speech. Lastly, Part III argues that reliance upon the complementary argument to deny any role for heightened First Amendment review in copyright cases is subject to two interrelated criticisms of Lochner. By …