Intellectual Property Law Commons^™

Reach Out And Touch Someone: Reflections On The 25th Anniversary Of Feist Publications, Inc. V. Rural Telephone Service Co., Tyler T. Ochoa, Craig Joyce

Faculty Publications

2016 marks the 25th anniversary of the Supreme Court’s opinion in Feist Publications, Inc. v. Rural Telephone Service Co., one of the Court’s landmark opinions in copyright law, and one that continues to define the standard of originality for copyrighted works in general and compilations of data in particular. The Feist case, however, was an unlikely candidate for landmark status. Only a handful of court opinions and academic authors had expressed dissatisfaction with the existing state of the law concerning originality and data compilations.scure sources which have enhanced greatly the pages that follow. Further, the Tenth Circuit’s opinion in Feist …

Much Ado About The Tpp's Effect On Pharmaceuticals, Emily M. Morris

Faculty Publications

The Trans-Pacific Partnership Agreement’s many provisions that were beneficial to the pharmaceutical industry have caused a good deal of controversy. Specifically, critics allege that the TPP’s provisions requiring that member states expand patentable subject matter, adjust pharmaceutical patent terms, and link regulatory marketing approval to a drug's patent status would have raised drug prices and hindered access to medicines, particularly in developing countries. Closer examination of these provisions as well as the various ways in which member states can modify or ameliorate the effects of these provisions suggests that their potential effect on drug prices and access to health care …

The Market For Software Innovation Through The Lens Of Patent Licenses And Sales, Colleen V. Chien

Faculty Publications

Software innovation is transforming the US economy. Yet our understanding of how patents and patent transactions support this innovation is limited, in part because of a lack of public information about patent licenses and sales. Claims about the patent marketplace, for example, extolling the virtues of intermediaries like non-practicing entities, or questioning the social utility of ex post patent licenses, tend not to be grounded in empirical evidence. This article brings much-needed data to the policy debate by analyzing transactional data from several proprietary databases of patent licenses and transfers, and reporting several novel findings. First I find that, despite …

What Is A "Useful Article" In Copyright Law After Star Athletica?, Tyler T. Ochoa

Faculty Publications

In Star Athletica, LLC v, Varsity Brands, Inc., the Supreme Court decided the appropriate test to determine when a feature of a useful article is protectable under §101 of the Copyright Act. However, there is an antecedent question that must be answered first before the Supreme Court's two part test in Star Athetica may be invoked.

Multinational Efforts To Limit Intellectual Property Income Shifting: The Oecd's Base Erosion And Profit Shifting (Beps) Project, Jeffrey A. Maine

Faculty Publications

Before 2017, there were two major international movements going on at the same time: (1) the Trans-Pacific Partnership (TPP) Agreement; and (2) the Organization for Economic Cooperation and Development’s (OECD’s) Base Erosion and Profit Shifting (BEPS) Project. The movements presented a unique opportunity to consider the intersection of a behemoth multinational trade agreement and ambitious multinational efforts to close international tax loopholes.

Although the TPP is essentially dead, as newly elected U.S. President Donald Trump unsigned the TPP as a matter of unilateral Executive power, the OECD’s BEPS Project is not. Indeed, many nations have been adopting BEPS Project proposals …

Enhancing Innovation In The Ugandan Agri-Food Sector: Progress, Constraints, And Possibilities, Travis Lybbert, Kritika Saxena, Julius Ecuru, Dick Kawooya, Sacha Wunsch-Vincent

Faculty Publications

No abstract provided.

The Intellectual Property Hostage In Trade Retaliation, Sarah R. Wasserman Rajec

Faculty Publications

Intellectual property law has become bound up in a debate about appropriate remedies for violations of the World Trade Organization Agreement. As an alternative to traditional countermeasures that consist of retaliation under the violated agreement, the World Trade Organization ("WTO ") contemplates that violations of one of its covered agreements may be remedied through "cross-retaliation, " or retaliation under another agreement. One form of cross-retaliation has garnered interest in recent years: the threat to suspend intellectual property rights in response to unrelated trade violations

Cross-retaliation through intellectual property rights suspension is theoretically appealing for its potential to avoid problems inherent …

Inter Partes Review: Current Thinking On What, When, Why, And How Much, Brian Love

Faculty Publications

Slide deck from a presentation as part of the Merchant & Gould's CLE program on Inter Partes Review.

Predictably Expensive: A Critical Look At Patent Litigation In The Eastern District Of Texas, Brian Love

Faculty Publications

In this Essay, we compare U.S. patent litigation across districts and consider possible explanations for the Eastern District of Texas’s popularity with patent plaintiffs. Rather than any one explanation, we conclude that what makes the Eastern District so attractive to patent plaintiffs is the accumulated effect of several marginal advantages — particularly with respect to the relative timing of discovery deadlines, transfer decisions, and claim construction — that make it predictably expensive for accused infringers to defend patent suits filed in East Texas. These findings tend to support ongoing efforts to pass patent reform legislation that would presumptively stay discovery …

Comparative Patent Quality, Colleen Chien

Faculty Publications

One of the most urgent problems with the US patent system is that there are too many patents of poor quality. Most blame the US Patent and Trademark Office (USPTO) – its mistakes, overly generous grant rate, and lack of consistency. But, the quality and quantity of patents in force is the product of three sets of decisions: to submit an application of certain quality (by the applicant), to grant the patent (by the patent office), and to renew a patent and keep it in force (by the applicant/patentee). Startling, there is no consensus way to measure patent quality. This …

Recalibrarting Patent Venue, Colleen V. Chien, Michael Risch

Faculty Publications

For most of patent law’s 200-year plus history, the rule has been that patentholders are permitted to sue defendants only in the district they inhabit. In 1990, the Federal Circuit changed this by enlarging the scope of permissible venue to all districts with personal jurisdiction over the defendant. Since then, patentees have flocked to fewer districts, and in 2015, brought more than 40% of their cases in a single rural district with 1% of the US population, the Eastern District of Texas. Fueled in particular by concerns that non-practicing entities (NPEs), who bring the majority of cases in the Eastern …

Patents Absent Adversaries, Sarah R. Wasserman Rajec

Faculty Publications

No abstract provided.

The Interaction Of Exhaustion And The General Law, Aaron K. Perzanowski, Ariel Katz, Guy A. Rub

Faculty Publications

In Statutory Domain and the Commercial Law of Intellectual Property, John Duffy and Richard Hynes argue that IP exhaustion — the doctrine that limits a patentee’s or copyright holder’s control over goods in the stream of commerce — was created and functions exclusively to confine IP law within its own domain and prevent it from displacing other laws.

In this essay, we explain why we are not persuaded. A central theme in Duffy and Haynes work is the argument that the common law did not play a role in the emergence and development of exhaustion. However, we show that the …

Human Development As A Core Objective Of Global Intellectual Property, J. Janewa Oseitutu

Faculty Publications

Global intellectual property obligations shape domestic laws and policies. More than twenty years since the first multilateral trade-based intellectual property agreement, critics contend that global intellectual property law prioritizes intellectual property rights over other interests, and profits over people. Faced with international intellectual-property obligations, nations have been forced to justify laws and policies designed to promote human development in areas such as health and education as exceptions to intellectual property protection. This is the result of legal interpretations that treat the objectives of intellectual property protection and human development as inconsistent with one another. Drawing on the objectives of trade …

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

Faculty Publications

The common law plays a prominent role in the development of American patent law. Judicial stewardship of the patent space can be seen as an institutional advantage, one that compares favorably to punctuated, and potentially more distortive or inartful, congressional action. The common law allows for a certain flexibility, and despite its deep allegiance to tradition, crust forms more readily on statutory law than the common law. One of the tools that reflects this institutional litheness is the use of legal fictions, which have been employed by judges in various areas of the law seemingly since the beginning of the …

The Irrelevance Of Nanotechnology Patents, Emily M. Morris

Faculty Publications

Although scientists have for decades now had the ability to manipulate matter at the atomic level, we have yet to see the nanotechnological revolution that these scientists predicted would follow. Despite the years of effort and billions of dollars that have been invested into research and development thus far, nanotechnology has yielded surprisingly few end-user applications. A number of commentators have blamed this lack of progress on the Bayh-Dole Act and other changes to patent law, arguing that, although these laws are supposed to stimulate technological development, they have in fact had the exact opposite effect when it comes to …

The Myths Of Data Exclusivity, Erika Lietzan

Faculty Publications

This article contributes to an ongoing academic and public policy dialogue over whether and on what terms U.S. law should provide “data exclusivity” for new medicines. Five years after a new drug has been approved on the basis of an extensive application that may have cost more than one billion dollars to generate, federal law permits submission of a much smaller application to market a duplicate version of the drug. This second application is a different type of application, and it may cost no more than a few million dollars to prepare. A similar sequence is true for biological medicines: …

International Intellectual Property Shelters, Sam F. Halabi

Faculty Publications

The battle over the reach and strength of international protections for intellectual property rights is one of the critical flashpoints between wealthy and low-income countries: those protections are perceived to obstruct access to essential medicines, thwart regulatory efforts to promote individual and population health, and undermine traditional forms of agriculture and food production. While scholars have thoroughly tracked the bilateral and multilateral trade and investment treaties responsible for the expansion of international intellectual property rights worldwide, they have paid significantly less attention to the strength and form that opposition to international intellectual property expansion has taken. This Article examines the …

Publication Of Government-Funded Research, Open Access, And The Public Interest, Julie Kimbrough, Laura N. Gasaway

Faculty Publications

Public access to government-funded research is an issue of tremendous importance to researchers, librarians, and ordinary citizens around the world. Based on the notion that taxpayers finance research through their tax dollars, research data should be available to them. Rapid, unfettered access to research publications provides access to medical research to patients, encourages further exploration and inquiry by other researchers, informs citizens, and advances scientific research. Scientists typically write articles that divulge the results of their government-funded research. Prior to the open access movement, these articles were published in commercially produced journals. Subscriptions to these journals are expensive, and cost …

The Author Was Not An Author: The Copyright Interests Of Photographic Subjects From Wilde To Garcia, Eva Subotnik

Faculty Publications

(Excerpt)

Toward the end of his dissent in the Ninth Circuit’s en banc opinion in Garcia v. Google, Judge Alex Kozinski remarked that “[w]hen modern works, such as films or plays, are produced, contributors will often create separate, copyrightable works as part of the process.” Judge Kozinski’s characterization of plays (or even films) as “modern works” opens the door to an examination of that claim with respect to another genre of “modern work[]”: the photograph.

As I will discuss, Judge Kozinski’s claim has not been true of the allocation of rights within that medium. It is therefore surprising that …

Copyright Policy And The Problem Of Generalizing, Eva E. Subotnik

Faculty Publications

(Excerpt)

Today we have heard a variety of concerns expressed by professional authors, artists and performers. But one of the toughest aspects of determining how to make the copyright system work better is generalizing about what is and is not working. In these brief remarks, I would like to identify three areas that demonstrate this difficulty.

At the outset, a disclaimer: I took the animating theme of this Symposium to be the improvement of the financial stake of individual authors in some kind of direct way. This mode of analysis should be distinguished from other approaches, equally valid, that would …

The History And Future Of E-Commerce Patents, Dennis D. Crouch, Mitchell L. Terry

Faculty Publications

The past two decades have seen a great rise in the patenting of e-commerce inventions. Now, those same patents are taking an equally great fall. In a series of four recent cases, the U.S. Supreme Court has shifted the doctrine of patent eligibility and, in the process, raised the bar for e-commerce and software patents - making it more difficult to obtain and enforce those types of patents.

Agricultural Biotechnology: Drawing On International Law To Promote Progress, J. Janewa Oseitutu

Faculty Publications

In Bowman v. Monsanto, the Supreme Court declined to apply the principle of exhaustion to limit the patentee’s ability to control the reproduction of self-replicating inventions. This decision was justified from a patent law perspective on the basis that patent holder has a right to prevent others from making the invention. But what happens when we take other perspectives into account? For instance, a farmer might have human rights or other rights that may need to be balanced against the patentee’s right. Since globalized intellectual property standards were established through international agreements and much of the resistance to intellectual property …

Corporate "Human Rights" To Intellectual Property Protection?, J. Janewa Oseitutu

Faculty Publications

The global intellectual property system protects the interests of intellectual property owners, sometimes to the detriment of competing interests like public health or access to knowledge. Some scholars have proposed a human rights framework for intellectual property as a way to inject balance into the current system. However, the assertion that human rights will bring balance is often coupled with the assumption that corporations are, by definition, excluded from human rights-based intellectual property claims. Yet, corporations have used, and are likely to continue to use, human rights law to ground their intellectual property claims. Since multinational corporations were a major …

Abc V. Aereo And The Humble Judge, James Y. Stern

Faculty Publications

No abstract provided.

Copyright And The Living Dead?: Succession Law And The Postmortem Term, Eva E. Subotnik

Faculty Publications

(Excerpt)

Intellectual property (“IP”) policy in the United States is primarily aimed at stimulating the creative, inventive, and socially enriching behavior of the living. Yet one key aspect of our incentive-based regime is intimately linked to the death of the creative contributor. Specifically, the term of copyright generally lasts for seventy years following the death of the author. Such a feature is not the product of policy choices in place from time immemorial but rather reflects a contemporary decision to link the duration of exclusive rights to some fixed point in time beyond the author’s death. In particular, until the …

Identity Property: Protecting The New Ip In A Race-Relevant World, Philip Lee

Faculty Publications

(Excerpt)

This Article explores the relatively new idea in American legal thought that people of color are human beings whose dignity and selfhood are worthy of legal protection. While the value and protection of whiteness throughout American legal history is undeniable, non-whiteness has had a more turbulent history. For most of American history, the concept of non-whiteness was constructed by white society and reinforced by law—i.e., through a process of socio-legal construction—in a way that excluded its possessor from the fruits of citizenship. However, people of color have resisted this negative construction of selfhood. This resistance led to the development …

Work Made For Hire - Analyzing The Multifactor Balancing Test, Ryan Vacca

Faculty Publications

Authorship of copyrighted works is oftentimes controlled by the 1976 Copyright Act's work made for hire doctrine. This doctrine states that works created by employees within the scope of their employment result in the employer, not the employee, being the author and initial copyright owner. One key determination in this analysis is whether the hired party is an employee or independent contractor. In 1989, the U.S. Supreme Court, in CCNV v. Reid, set forth a list of factors to distinguish employees from independent contractors. Unfortunately, the Supreme Court did not give further guidance on how to balance these factors. Three …

Multipolarity, Intellectual Property And The Internationalization Of Public Health Law, Sam F. Halabi

Faculty Publications

This Article critically examines the proliferation of international legal agreements addressing global health threats like the outbreak of infectious diseases, tobacco use and lack of access to affordable medicines. The conventional wisdom behind this trend is that a global normative shift has occurred which has caused states to regard health as “special” and less subject to the normal rules of international law making because health threats endanger all of humanity. This Article challenges that thesis, arguing that at the same time the number and scope of international health law treaties has grown, developed states have subordinated health law to intellectual …

Free Trade In Patented Goods: International Exhaustion For Patents, Sarah R. Wasserman Rajec

Faculty Publications

Modern international trade law seeks to increase global welfare by lowering barriers to trade and encouraging international competition. This “free trade” approach, while originally applied to reduce tariffs on trade, has been extended to challenge non-tariff barriers, with modern trade agreements targeting telecommunication regulations, industrial and product safety standards, and intellectual property rules. Patent law, however, remains inconsistent with free-trade principles by allowing patent holders to subdivide the world market along national borders and to forbid trade in patented goods from one nation to another. This Article demonstrates that the doctrines thwarting free trade in patented goods are protectionist remnants …