Intellectual Property Law Commons^™

Disease Management And Liability In The Human Genome Era, Larry I. Palmer

Faculty Publications

No abstract provided.

The Festo Decision And The Return Of The Supreme Court To The Bar Of Patents, John F. Duffy

Faculty Publications

No abstract provided.

Origins And Meanings Of The Public Domain, Tyler T. Ochoa

Faculty Publications

This article surveys the history and development of the public domain in intellectual property law. The public domain has existed since time immemorial, and was first recognized in the Statute of Monopolies and the Statute of Anne, which placed time limits on patents and copyrights, after which the invention or work could be copied freely by anyone. The concept was enshrined in the U.S.Constitution and reflected in American patent and copyright laws. Before 1896, courts referred to matter not protected by patent or copyright law as "public property" or "common property. " In 1896,the U.S. Supreme Court imported the term …

The Copyrightability Of New Works Of Authorship: 'Xml Schemas' As An Example, I. Trotter Hardy

Faculty Publications

No abstract provided.

Process Considerations In The Age Of Markman And Mantras, Craig Allen Nard

Faculty Publications

This article asserts that although notions of uniformity and certainty have always been part of patent law parlance, since the Federal Circuit's decision in Markman v. Westview Instruments, Inc., these noble ends have achieved mantra status. In Markman, the Federal Circuit, in the name of uniformity and certainty, characterized claim interpretation as a question of law subject to de novo review, thus positioning itself as the arbiter of claim meaning. If the Federal Circuit is unwilling to exercise greater obeisance toward district court claim interpretations, this article argues that to achieve uniformity and certainty in the context of de novo …

Cybercoverage For Cyber-Risks: An Overview Of Insurers' Responses To The Perils Of E-Commerce, Robert H. Jerry Ii, Michele L. Mekel

Faculty Publications

With nearly seven percent of the world's population currently online and e-commerce forecast to hit $6.8 trillion by 2004, one need not be Nostradamus to predict that the Internet means great change for all industries - including the insurance industry. Presently, however, the proverbial cart is leading the horse as the insurance industry struggles to develop strategies to quantify, cover, and contain "cyber-risks." Policyholders also face new challenges as they confront the possibility that their traditional insurance coverages are woefully inadequate either to secure their electronic and intellectual property assets or to guard against their potential e-commerce liabilities to third …

Not So Different: Tangible, Intangible, Digital, And Analog Works And Their Comparison For Copyright Purposes, I. Trotter Hardy

Faculty Publications

No abstract provided.

Does Technology Require New Law?, David D. Friedman

Faculty Publications

Technological change affects the law in at least three ways: (1) by altering the cost of violating and enforcing existing legal rules; (2) by altering the underlying facts that justify legal rules; and (3) by changing the underlying facts implicitly assumed by the law, making existing legal concepts and categories obsolete, even meaningless. The legal system can choose to ignore such changes. Alternatively, it may selectively alter its rules legislatively or via judicial interpretation. In this essay I first discuss, as an interesting historical example, past technological changes relevant to copyright law and the law's response. I then go on …

Electronic Billboards Along The Information Superhighway: Liability Under The Lanham Act For Using Trademarks To Key Internet Banner Ads, Christine Galbraith Davik

Faculty Publications

With almost one billion web pages on the Internet today, a search engine is a necessity at times. But search engines are also for-profit ventures and the financial success of these sites hinges on advertising revenue. One of the ways in which these sites generate income is by selling “keywords” to advertisers. Although there has been only one judicial decision – Playboy Enterprises, Inc. v. Netscape Communications – involving banner ads keyed to trademarks, it will undoubtedly not be the last. This article argues that despite the invisible nature of this unauthorized trademark use, the common practice of keying a …

Statutory Interpretation, Property Rights, And Boundaries: The Nature And Limits Of Protection In Trademark Dilution, Trade Dress, And Product Configuration Cases, Gary Myers

Faculty Publications

This article, however, takes the view that the basic landscape in trademark law is unlikely to change in the near future. Congress has only recently enacted the Trademark Dilution Act, and there seems to be little movement to amend it dramatically, let alone repeal it. There have been several recently enacted amendments to the Lanham Act addressing functionality that make great sense and are consistent with the principles suggested here, as will be discussed below. Moreover, the Supreme Court in Two Pesos, Qualitex, Park ‘n’ Fly, and Samara has recently set forth rules that will allow trade dress claims to …

A Theory Of Claim Interpretation, Craig Allen Nard

Faculty Publications

This article explores the proper scope of judicial power in patent law by focusing on the Federal Circuit's theories of claim interpretation. A study of the court's claim interpretation jurisprudence reveals two schools of interpretation. I characterize these approaches as (1) hypertextualism, which is the predominant interpretative theory; and (2) pragmatic textualism, which is gradually asserting itself. The hypertextualist judge has an expansive view of judicial power, characterizing claim interpretation as a question of law subject to de novo review. This highly formalistic approach stresses textual fidelity and internal textual coherence, but eschews extrinsic evidence as an interpretive tool, portraying …

Understanding Internet Co-Branding Deals, Eric Goldman, Candice Lee

Faculty Publications

The Internet has spawned new business practices regarding the ways users access and obtain information and services. Because linking can create a network of web pages that appear integrated and seamless to users, many Internet companies enter what are known as co-branding relationships. This article addresses a common type of co-branding relationship in which a "provider" maintains a set of pages ("the co-branded site") that looks and feels like the "brander's" web site. The co-branded site is promoted on the brander's web site through linking.

Introduction: Tiger Woods And The First Amendment, Tyler T. Ochoa

Faculty Publications

Although the right of publicity has been recognized as a distinct common-law doctrine since 1953, only in recent years have courts begun to take the First Amendment seriously as a limit on the extent to which sports figures and other celebrities can use the doctrine to control the use of their images. It is widely recognized that the government may prohibit false and misleading speech, such as an advertisement that falsely implies an endorsement of a product by an individual, without violating the First Amendment. Similarly, it is generally acknowledged that the First Amendment protects the depiction of celebrities in …

Certainty, Fence Building, And The Useful Arts, Craig Allen Nard

Faculty Publications

In "Certainty, Fence Building, and the Useful Arts," 74 Ind. L.J. 759-800 (1999), the author, based upon contract theory, economic theory, and an empirical survey of federal district court judges, proposes that the United States adopt a patent opposition proceeding. Whereas United States trademark law allows for the publication of and third-party opposition to the issuance of a federal trademark, American patent law, unlike European and Asian patent systems, allows for no such proceeding regarding the patentability of a claimed invention before issuance.

Copyright And "New-Use" Technologies, I. Trotter Hardy

Faculty Publications

No abstract provided.

The Uncopyrightability Of Jokes, Allen Madison

Faculty Publications

This paper explains two foundational copyright doctrines, the scenes a faire doctrine and the merger doctrine. It illustrates the limiting effect these doctrines have on copyright protection for jokes.

Computer Ram 'Copies:' Hit Or Myth? Historical Perspectives On Caching As A Microcosm Of Current Copyright Concerns, I. Trotter Hardy

Faculty Publications

No abstract provided.

Response To David Nimmer, ‘Copyright In The Dead Sea Scrolls: Authorship And Originality’, Martha Woodmansee

Faculty Publications

Response to David Nimmer's article "Authorship and Originality."

On The Author Effect: Recovering Collectivity, Martha Woodmansee

Faculty Publications

No abstract provided.

Legitimacy And The Useful Arts, Craig Allen Nard

Faculty Publications

The fundamental question this Article addresses is who should be primarily responsible for making patent validity determinations: the courts5 or the Patent and Trademark Office (“PTO”)?6 Which entity *517 would best serve the constitutional goal of promoting the progress of the useful arts?

The Restatement's Rejection Of The Misappropriation Tort, Gary Myers

Faculty Publications

Some legal theories, like the proverbial vampire, refuse to die. The common law tort of misappropriation is one such legal theory, and the recent Restatement (Third) of Unfair Competition (Restatement) may finally lead to the demise of this outdated cause of action. Misappropriation began advisedly enough as a means of protecting certain intellectual property rights from unjust usurpation, often by direct competitors employing improper means. Arising before comprehensive copyright, patent, and trademark laws were fully developed, the tort may have played an important role in protecting intangible proprietary interests.The tort's high water mark was the 1918 Supreme Court decision in …

The Impact Of Recent Litigation On Interlibrary Loan And Document Delivery, James S. Heller

Faculty Publications

Professor Heller discusses how two recent federal copyright law decisions, Campbell v. Acuff-Rose Music in the United States Supreme Court and American Geophysical Union v. Texaco in the Second Circuit, may affect the interlibrary loan and document delivery services provided by libraries.

Re-Tailoring Jury Trial Rights, Richard C. Reuben

Faculty Publications

The debate over improving the civil justice system has gone through many permutations over the years. Discovery, punitive damages and alternative dispute resolution are but a few of the paths that have been pursued. A case argued to the U.S. Supreme Court in January addresses the question from yet another-and potentially a more fundamental direction: the reach of the Seventh Amendment's guarantee of a jury trial in civil cases in federal court.

Trademark Parody: Lessons From The Copyright Decision In Campbell V. Acuff-Rose Music, Gary Myers

Faculty Publications

Parodies have long provided many of us with amusement, entertainment,and sometimes even information. An effective parody can convey one or more messages with powerful effect. The message may be a political statement, social commentary, commercial speech, a bawdy joke, ridicule of a brand name, criticism of commercialism, or just plain humor for its own sake. Often someone's ox is being gored, or someone feels that a property right has been infringed. The party so injured often contemplates a lawsuit, and an array of legal theories are available to further that impulse. Perhaps copyright infringement is the claim, if some protectable …

Property (And Copyright) In Cyberspace, I. Trotter Hardy

Faculty Publications

No abstract provided.

Antitrust Liability Premised, Edward D. Cavanagh

Faculty Publications

(Excerpt)

This article will explore potential antitrust liability arising from attempted enforcement of invalid patents or trade secrets known to be invalid. A fundamental tension exists between the law of intellectual property and antitrust law. Federal patent laws and the state law doctrines of trade secrets confer on the holder exclusive rights to exploit an invention or creation and to exclude others from its use. The rationale of the patent laws and state intellectual property laws is to foster innovation and to provide inventors with protection for the fruits of their labor. By contrast, antitrust laws embody a public policy …

The Ancient Doctrine Of Trespass To Web Sites, I. Trotter Hardy

Faculty Publications

No abstract provided.

Deference, Defiance, And Useful Arts, Craig Allen Nard

Faculty Publications

My objective in this Article is to demonstrate that the PTO's patentability determinations are questions of policy and, therefore, the Federal Circuit's standards of review, as applied to these determinations, are unsound. With respect to the Commissioner's statutory interpretations, I intend to demonstrate that the court's “traditional factors of statutory construction,” which are used in such a way as to avoid deferring to the PTO, result in irrational decisions, or at the very least, an alternative theory of interpretation no more convincing than that put forth by the PTO. My principle assertion, grounded in both doctrine and policy, is that …

Contracts, Copyright And Preemption In A Digital World, I. Trotter Hardy

Faculty Publications

No abstract provided.

Banning The Cultural Exclusion: Free Trade And Copyrighted Goods, S. I. Strong

Faculty Publications

For centuries people have expressed themselves through creative works of art and literature, and since 1557 artists and authors have been able to protect their rights to their creative works through various national copyright laws. National copyright laws basically grant a monopoly in the use of the work to its creator. Copyrighted goods, however, are often easily transported across national boundaries, and thus national copyright laws may provide inadequate copyright protection in the international marketplace. The necessity for international copyright protection has been met to some extent by copyright conventions. International copyright conventions, like national copyright laws, define the scope …