Intellectual Property Law Commons^™

Undetected Conflict-Of-Laws Problems In Cross-Border Online Copyright Infringement Cases, Marketa Trimble

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This article provides and analyzes data on copyright infringement cases filed in U.S. federal district courts in 2013; it focuses on infringement cases involving activity on the internet and discusses actual and potential conflict-of-laws issues that the cases raised or could have raised. The article complements the report entitled "Private International Law Issues in Online Intellectual Property Infringement Disputes with Cross-Border Elements: An Analysis of National Approaches" (the "Report"), which was published by the World Intellectual Property Organization in September 2015. In the Report its author, Professor Andrew F. Christie, discusses his empirical findings about the intersection of intellectual property …

Abercrombie 2.0 - Can We Get There From Here? The Thoughts On 'Suggestive Fair Use', Joseph S. Miller

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Professor Linford, unlike Caesar’s Antony, seeks not only to bury Abercrombie, but to praise it, at least in part. Using linguistic evidence, both historical and experimental, he would relocate a bobbled boundary—from the descriptive–suggestive transition to the suggestive–arbitrary transition—and thereby establish a reformed template for sorting word marks according to their source-signifying strength. The basic difference between acquired and inherent distinctiveness not only remains in Linford’s account, however; it draws new strength from insights about semantic change. Behold, Abercrombie 2.0! His recent article, which is both provocative and engaging, continues the reconstructive work Linford began in his critique of …

Discouraging Frivolous Copyright Infringement Claims: Fee Shifting Under Rule 11 Or 28 U.S.C. § 1927 As An Alternative To Awarding Attorney's Fees Under Section 505 Of The Copyright Act, David E. Shipley

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The United States Supreme Court’s 2016 decision in Kirtsaeng v. John Wiley & Sons resolved a disagreement over when it is appropriate to award attorney’s fees to a prevailing defendant under section 505 of the Copyright Act, and ended a perceived venue advantage for losing plaintiffs in some jurisdictions. The Court ruled unanimously that courts are correct to give substantial weight to the question of whether the losing side had a reasonable case to fight, but that the objective reasonableness of that side’s position does not give rise to a presumption against fee shifting. It made clear that other factors …

Can Dna Be Speech?, Jorge R. Roig

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DNA is generally regarded as the basic building block of life itself. In the most fundamental sense, DNA is nothing more than a chemical compound, albeit a very complex and peculiar one. DNA is an information-carrying molecule. The specific sequence of base pairs contained in a DNA molecule carries with it genetic information, and encodes for the creation of particular proteins. When taken as a whole, the DNA contained in a single human cell is a complete blueprint and instruction manual for the creation of that human being. In this article we discuss myriad current and developing ways in which …

Advancing National Intellectual Property Policies In A Transnational Context, Marketa Trimble

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The increasing frequency with which activities involving intellectual property (“IP”) cross national borders now warrants a clear definition of the territorial reach of national IP laws so that parties engaging in the activities can operate with sufficient notice of the laws applicable to their activities. Legislators, however, have not devoted adequate attention to the territorial delineation of IP law; in fact, legislators rarely draft IP statutes with any consideration of cross-border scenarios, and with few exceptions IP laws are designed with only single-country scenarios in mind. Delineating the reach of national IP laws is actually a complex matter because the …

The Multiplicity Of Copyright Laws On The Internet, Marketa Trimble

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From the early days of the Internet, commentators have warned that it would be impossible for those who act on the Internet (“Internet actors”) to comply with the copyright laws of all Internet-connected countries if the national copyright laws of all those countries were to apply simultaneously to Internet activity. A multiplicity of applicable copyright laws seems plausible at least when the Internet activity is ubiquitous — i.e., unrestricted by geoblocking or by other means — given the territoriality principle that governs international copyright law and the choice-of-law rules that countries typically use for copyright infringements.

This Article posits that …

Social Media, Sharing, And Intellectual Property Law, Leah Chan Grinvald

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No abstract provided.

Policing The Cease-And-Desist Letter, Leah Chan Grinvald

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Americans are renowned for being litigious. But only less than three percent of all disputes end up in court, and a paltry one percent of all filed lawsuits end with a decision on the merits. The reason for this paradox is that most disputes take place outside of the judicial system, and further, most disputes start and end with a cease-and-desist letter. This is particularly the case in the intellectual property area, where seasoned attorneys admit that much of their practice revolves around cease-and-desist letters. Although there is much to favor in the private resolution of disputes, there are economic …

Are We Serious About Performers' Rights?, Mary Lafrance

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Do performers have rights in the expressive works they help to create? Historically, the rights of performers have received far less attention that the rights of traditional authors. The law has been reluctant to recognize performers as authors and, to the extent that performers’ rights are recognized, they are secondary to, and more limited than, the rights of traditional authors. Recent developments, however, have brought performers’ intellectual property rights to the forefront. For a number of reasons, performers in the United States have increasingly begun to assert authorship rights in the works they help to create. In addition, recent international …

Digital Patent Infringement In An Era Of 3d Printing, Lucas S. Osborn, Timothy R. Holbrook

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The digital revolution has now moved beyond music and video files. A person can now translate three-dimensional objects into digital files and, at the press of a button, recreate those items via a 3D printer or similar device. Just as digitization placed pressure on the copyright system, so will these digital computer-aided design (“CAD”) files stress the patent system. Patents directed to physical objects can now have their value appropriated not only by the transfer of physical embodiments but also by the transferring of CAD files designed to print the invention. We term this phenomenon digital patent infringement.

In this …

A Case For Weakening Patent Rights, Lucas S. Osborn, Joshua M. Pearce, Amberlee Haselhuhn

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This Article contributes to the patent debate by observing that new and emerging technologies are radically altering the relative costs and benefits of the patent system. Although analysts cannot measure the patent system's numerous absolute costs and benefits, this Article demonstrates that new and emerging technologies are significantly reducing the research, development, and commercialization costs ("innovation costs") that are used by adherents to the incentive and prospect theories to justify the patent system's existence. All things being equal, if significantly, the relative need for the patent system has decreased and will continue to decrease. Thus, this Article argues that patents …

Clearing Rights For Entertainment Projects, Mary Lafrance

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No abstract provided.

Foreigners In U.S. Patent Litigation: An Empirical Study Of Patent Cases Filed In Nine U.S. Federal District Courts In 2004, 2009, And 2012, Marketa Trimble

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One of the greatest challenges facing patent holders is the enforcement of their rights against foreign (non-U.S.) infringers. Jurisdictional rules can prevent patent holders from filing patent infringement suits where they have the greatest likelihood of success in enforcement, such as where the infringer is located, has his seat, or holds his assets; instead, patent holders must file lawsuits in the country where the infringed patent was issued. But filing a patent lawsuit in a U.S. court against a non-U.S. infringer may be subject to various difficulties associated with the fact that U.S. substantive patent law (particularly as regards its …

The Territoriality Referendum, Marketa Trimble

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Many Internet users have encountered geoblocking tools – tools that prevent users from accessing certain content on the Internet based on the location from which the users are connecting to the Internet. Because at least some users want to access such content, they turn to tools that enable them to evade geoblocking, to appear on the Internet as if they were located in another location, and to access the content that is available in this other location. So far these activities appear to be under the radar of intellectual property (“IP”) owners, perhaps because geoblocking evasion by users for the …

Secondary Liability, Isp Immunity, And Incumbent Entrenchment, Marketa Trimble, Salil K. Mehra

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More than fifteen years have passed since the two major U.S. statutes concerning the secondary liability of Internet service providers were adopted--the Communications Decency Act and the Digital Millennium Copyright Act. The statutes have been criticized; however, very little of the criticism has come from Internet service providers, who have enjoyed the benefits of generous safe harbors and immunity from suit guaranteed by these statutes. This Article raises the question of whether these statutes contribute to incumbent entrenchment--solidifying the position of the existing Internet service providers to the detriment of potential new entrants. The current laws and industry self-regulation may …

A Material World: Using Trademark Law To Override Copyright's First Sale Rule For Imported Copies, Mary Lafrance

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When the Supreme Court held that the first sale rule of copyright law permits the unauthorized importation and domestic sale of lawfully made copies of copyrighted works, regardless of where those copies were made, copyright owners lost much of their ability to engage in territorial price discrimination. Publishers, film and record producers, and software and videogame makers could no longer use copyright law to prevent the importation and domestic resale of gray market copies, and therefore could no longer protect their domestic distributors against competition from cheaper imported copies.

However, many of these copyright owners can take advantage of a …

Conferring About The Conference (Recalibrating Copyright: Continuity, Contemporary Culture, And Change), Marketa Trimble

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Professor Marketa Trimble and her colleagues Professors Jessica Silbey and Aaron Perzanowski reflect on papers presented at the University of Houston Law Center's Institute for Intellectual Property & Information Law's annual conference held in Spring of 2014.

Of Phds, Pirates And The Public: Three-Dimensional Printing Technology And The Arts, Lucas S. Osborn

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No abstract provided.

Ripple Effects In The Law: The Broadening Meaning Of An "Offer To Sell" In Patent Law, Lucas S. Osborn

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No abstract provided.

The Empty Promise Of Vara: The Restrictive Application Of A Narrow Statute, David E. Shipley

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The Visual Artists Rights Act (VARA) was enacted by Congress in 1990 in order to bring our laws into compliance with Article 6bis of the Berne Convention and to acknowledge that protecting moral rights will foster “a climate of artistic worth and honor that encourages the author in the arduous act of creation.” The passage of this legislation is said to show Congress’s “belief that the art covered by the Act ‘meet[s] a special societal need, and [its] protection and preservation serves an important public interest.’”

Notwithstanding these lofty statements about artistic worth, honor and encouraging creation, VARA is a …

The Marrakesh Puzzle, Marketa Trimble

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This article analyzes the puzzle created by the 2013 Marrakesh Treaty in its provisions concerning the cross-border exchange of copies of copyrighted works made for use by persons who are “blind, visually impaired, or otherwise print disabled” (copies known as “accessible format copies”). The analysis should assist executive and legislative experts as they seek optimal methods for implementing the Treaty. The article provides an overview of the Treaty, notes its unique features, and examines in detail its provisions on the cross-border exchange of accessible format copies. The article discusses three possible sources for implementation tools – choice of law rules, …

How Trade Law Changed: Why It Should Change Again, John Linarelli

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No abstract provided.

Book Review: "Die Gemeinfreiheit: Begriff, Funktion, Dogmatik (The Public Domain: Concept, Function, Dogmatics)" By Alexander Peukert, Marketa Trimble

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The reviewer considers a recent book by Alexander Peukert, the professor of civil and commercial law who specializes in international intellectual property law at Goethe University in Frankfurt am Main, Germany. Peukert has devoted the book to defining the limits of the public domain – the realm of intellectual activity in which works are free for anyone to use because the works are not protected by intellectual property rights, are protected but the protection has expired, are subject to an exception to the rights under the law, or are unprotected because the owner of the rights chooses not to enforce …

Genomics Unbound: The Scientific And Legal Case Against Patents Based On Naturally Occurring Dna Sequences, Fazal Khan

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While there have been mixed opinions as to whether gene patents were dead in light of Prometheus,this Article argues that a proper understanding of patent law, genomics, and public policy concerns should lead to no other result. The primary focus of this piece is to rebut certain vested interests in the biotechnology industry and affirm the normative claim that gene patents improperly fetter genomics research and development. First, through the lens of the Myriad case, we will recount why there was such a strong public interest movement against recognizing such patents. Specifically, we will show how patents on naturally occurring …

The Patent System In Pre-1989 Czechoslovakia, Marketa Trimble

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The chapter analyzes patent law in Czechoslovakia in the period from 1945 until the end of communist rule in 1989. In addition to reviewing the legislative development of patent law – the laws on the books – the chapter explains the law in action, which includes the application of the law in practice and the attitudes of Czechoslovak society toward inventive activities and patenting. The chapter shows that post-1945 Czechoslovak patent law drew on a highly developed pre-1940 Czechoslovak patent law and practice that was based on the Austrian patent law inherited by Czechoslovakia in 1918 when it split from …

Wag The Dog: Using Incidental Intellectual Property Rights To Block Parallel Imports, Mary Lafrance

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Federal law grants owners of intellectual property rights different degrees of control over parallel imports depending on the nature of their exclusive rights. While trademark owners enjoy strong control over unauthorized imports bearing their marks, their protection is less comprehensive than that granted to owners of copyrights and patents. To broaden their rights, some trademark owners have incorporated copyrighted material into their products or packaging, enabling them to block otherwise lawful imports in contravention of the policies underlying trademark law. A 2013 Supreme Court decision has significantly narrowed the importation ban of copyright law, but there may be pressure to …

Error Costs & Ip Law, Joseph S. Miller

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A court in doubt about an ip statute’s scope can err in two ways. It can wrongly narrow the ip right’s reach, or wrongly broaden it. The latter error, however, is worse: A wrongly broadened ip statute effectively creates new property. To correct erroneous broadening, unlike erroneous narrowing, the legislature must thus eliminate a now-established property right. And that is very hard to do. Courts cannot, of course, avoid making at least some mistakes. Courts can, however, prefer the mistakes that are easier, not harder, for the legislature to correct. This essay explores this error-cost-based approach to ip statutes, as …

A Numerus Clausus Principle For Intellectual Property, Christina Mulligan

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Real property can only be held and conveyed in a small number of forms, such as fee simple, life estate, and lease. This principle is known as numerus clausus, meaning “the number is closed.” For centuries, the principle has been central to the common-law system of property rights. Scholars have justified it as a mechanism for facilitating effective property alienation, maintaining low transaction costs in the buying and selling of property, and keeping the scope of property owners’ rights clear.

In contrast, the numerus clausus principle is essentially nonexistent in intellectual property law. In the context of patents and copyrights, …

Wag The Dog: Using Incidental Intellectual Property Rights To Block Parallel Imports, Mary Lafrance

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Federal law grants owners of intellectual property rights different degrees of control over parallel imports depending on the nature of their exclusive rights. While trademark owners enjoy strong control over unauthorized imports bearing their marks, their protection is less comprehensive than that granted to owners of copyrights and patents. To broaden their rights, some trademark owners have incorporated copyrighted material into their products or packaging, enabling them to block otherwise lawful imports in contravention of the policies underlying trademark law. A 2013 Supreme Court decision has significantly narrowed the importation ban of copyright law, but there may be pressure to …

Streaming While Teaching: The Legality Of Using Person Streaming Video Accounts For The Classroom, Jonathan I. Ezor

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Educators are constantly seeking new sources of relevant material to illustrate doctrinal and practice topics. With the growing understanding of students’ different learning styles, as well as the expansion of high-speed network connections and large displays in the classroom, streaming video has begun gaining popularity as an educational tool. Films, television programs, and real-time and archived legislative and court sessions may provide examples (both positive and negative) to enhance pedagogy. One increasingly common source for streaming content is a commercial video provider such as Netflix, Amazon, and Hulu. Even where such providers do not offer educational or institutional services, educators …