Intellectual Property Law Commons^™

Preserving Internet Expression While Protecting Our Children: Solutions Following Ashcroft V. Aclu, Steven E. Merlis

Northwestern Journal of Technology and Intellectual Property

No abstract provided.

Defining The Limits Of The Eu Essential Facilities Doctrine On Intellectual Property Rights: The Primacy Of Securing Optimal Innovation, James Turney

Northwestern Journal of Technology and Intellectual Property

No abstract provided.

Legal Online Marketing Issues: The Opportunities And Challenges, Michael T. Zugelder

Finance Faculty Publications

This chapter will review several emerging issues associated with e-marketing from the perspective of Web sites including intellectual property, information management, and contracting. E-marketers in the years to come should not only consider the growing e-marketing opportunities but also be cognizant of the growing body of law governing marketing online. While the future may be bright and uniformity and fairness may prevail, current domestic and global law facing e-marketers is varied and the potential basis for liability. The law must be considered wherever e-marketers direct their efforts.

Holding Intellectual Property, Xuan-Thao Nguyen

Articles

The collapse of WorldCom, Inc., exposed a complex web of accounting irregularities. Within that web, recent filings by Dick Thornburgh, WorldCom's Bankruptcy Court Examiner, reveal a different type of scheme that involves the holding of intellectual property. Further scrutinizing the scheme reveals that WorldCom and its tax advisors, KPMG Peat Marwick LLP (KPMG), devised a tax avoidance scheme through the creation of an intellectual property holding company (IP holding company). This type of scheme has been widely and quietly utilized in the last twenty years by many corporations with substantial intellectual property.

Indeed, as state taxing authorities have become more …

General Public License 3.0: Hacking The Free Software Movement's Constitution, Robert W. Gomulkiewicz

Articles

The General Public License (GPL) enshrines a software hacker’s freedom to use code in important ways. Hackers often refer to the GPL as the free software movement’s “constitution.” Richard Stallman, founder of the Free Software Foundation (FSF) wrote the most recent version of the GPL, version 2.0, back in 1991. For a constitution, a fourteen-year-old document is young, but for a license, it is quite old. The revision process is finally underway, led by Stallman and Eben Moglen, FSF’s general counsel.

The release of GPL version 3.0 will be momentous for many reasons, but one reason stands out: The GPL …

In-Line Or Insane? The Federal Circuit's Recent Interpretation Of Festo In Honeywell V. Hamilton Sundstrand, Justin E. Gray

Northwestern Journal of Technology and Intellectual Property

No abstract provided.

Zippo Is Dying, Should It Be Dead?: The Exercise Of Personal Jurisdiction By U.S. Federal Courts Over Non-Domiciliary Defendants In Trademark Infringement Lawsuits Arising Out Of Cyberspace, Bunmi Awoyemi

Marquette Intellectual Property Law Review

Personal jurisdiction and the Internet has troubled the courts from the first. The analysis the court offered in Zippo Manufacturing Co. v. Zippo DOT Com, Inc. on its face appeared helpful for dealing with personal jurisdictional issues by the use of a "sliding scale": "[T]he likelihood that personal jurisdiction can be constitutionally exercised is directly proportionate to the nature and quality of commercial activity that an entity conducts over the Internet." putting aside the failure of many courts to restrict Zippo to its facts, The author argues that the Zippo court's analysis of specific personal jurisdiction in the Internet or …

Legal Protection Of Technological Measures Protecting Works Of Authorship: International Obligations And The Us Experience, Jane C. Ginsburg

Faculty Scholarship

The ongoing transposition of the EU Information Society Directive's requirement that member States adopt of legal prohibitions of the circumvention of technological protections of works of authorship occasions this review of international obligations and their implementation in the US. This article addresses the scope of international obligations the WIPO Copyright Treaties impose on member States to protect against circumvention, as well as the US experience with the Digital Millennium Copyright Act's prohibitions on circumvention of access and copy controls. It examines the text of the statute, codified at sec. 1201 of the 1976 Copyright Act, the five years of judicial …

Patents, Venture Capital, And Software Start-Ups, Ronald J. Mann, Thomas W. Sager

Faculty Scholarship

This paper analyzes the relation between the patenting behavior of startup firms and the progress of those firms through the venture capital cycle. Linking data relating to venture capital financing of software startup firms with data concerning the patents obtained by those firms, we find significant and robust positive correlations between patenting and several variables measuring the firm's performance (including number of rounds, total investment, exit status, receipt of late stage financing, and longevity). The data also show that (1) only about one in four venture-backed software firms acquired even one patent during the period of the study; (2) patenting …

An Idea Whose Time Has Come – But Where Will It Go, Jane C. Ginsburg

Faculty Scholarship

This Reply picks up where Professor Miller's bold proposal leaves off: with the private international law and international copyright implications of state common law protection for idea-submitters. We will first address the compatibility of the proposal with international copyright norms disqualifying ideas from copyright protection. We will then turn to the consequences of the proposal for a federal system. Professor Miller's article thoroughly examines one aspect of the federalism problem, that of federal copyright policy preemption of statebased idea protection. But in advocating a regime constricted to the fifty separate states, not all of whose courts choose to secure idea …

The Une Anticommons: Why The 1996 Telecom Reforms Blocked Innovation And Investment, Michael A. Heller

Faculty Scholarship

The United States is losing its competitive edge in telecommunications partly because of FCC mistakes in fragmenting property rights in, and in the regulatory oversight of local telephone facilities and services. As with postsocialist transition, reformers created a "tragedy of the anticommons" in which too many owners and regulators each can block the others' investments and all players forego innovation. By forcing existing companies to unbundle network elements (UNEs) and sell them too cheaply, the FCC has created an industry where the players cannibalize the legacy network, divert resources to regulatory arbitrage, and have little incentive for bold new investments.

Black Musical Traditions And Copyright Law: Historical Tensions, Candace G. Hines

Michigan Journal of Race and Law

This Note begins with a discussion of copyright law and then examines Black musical traditions and how they have conflicted with American copyright law through the years. Part I explains the history of American copyright law and its theoretical underpinnings. Part II relates common Black musical traditions in more detail. Part III illustrates how the foundations of Black musical traditions can be found in Negro Spirituals. Part IV outlines the notion of Black music as it evolved in ragtime. Part V describes how copyright undermined the traditions of blues, jazz, and R&B. Part VI explains how rock 'n' roll's prominence …

Copyright & Privacy - Through The Legislative Lens, 4 J. Marshall Rev. Intell. Prop. L. 266 (2005), Marybeth Peters

UIC Review of Intellectual Property Law

The Honorable Marybeth Peters, who has served since 1994 as the Register of Copyrights for the United States Copyright Office of the Library of Congress, presented a post-election report on the legislative agenda in Washington, D.C. regarding rejected, pending and future amendments to the copyright law of the United States. Register Peters also discussed the current policy role of the United States Copyright Office and several court actions that contest the constitutionality of various provisions of the copyright law.

Copyright & Privacy - Through The Technology Lens, 4 J. Marshall Rev. Intell. Prop. L. 242 (2005), Michael A. Geist, Doris E. Long, Leslie Ann Reis, David E. Sorkin, Fred Von Lohmann

UIC Review of Intellectual Property Law

How is new technology impacting on the more general question of privacy in cyberspace? Is the original notion of an expectation of anonymity on the internet still viable? Can technology pierce through the expectation of privacy even without judicial interference? Do individuals need protection from such technology? Is there technology available to protect the individual? Should these technological tools be regulated? Should the law differentiate between various types of alleged “illegal” behavior; e.g., IP infringement, defamation, possession of pornography and terrorism? Are there international standards that can assist in regulating the intersection between technology and privacy in cyberspace?

Copyright & Privacy - Through The Political Lens, 4 J. Marshall Rev. Intell. Prop. L. 306 (2005), William W. Fisher Iii, Hugh C. Hansen, Christopher Jay Hoofnagle, Howard P. Knopf, Declan Mccullagh, Ralph Oman, Matthew J. Oppenheim

UIC Review of Intellectual Property Law

Veteran beltway players discuss the politics of P2P technology and Privacy. How far can or should Congress go? Can the United States export its values or its laws in this area? Are content owners in a losing Luddite struggle? What is the role of litigators, lobbyists and legislators in this war?

Copyright & Privacy - Through The Privacy Lens, 4 J. Marshall Rev. Intell. Prop. L. 273 (2005), Julie E. Cohen, David E. Sorkin, Peter P. Swire

UIC Review of Intellectual Property Law

What legal tools do privacy advocates have available to defend an individual’s right to privacy? How far does this right go? How should these rights be defended—or if necessary—curtailed? What is the role of Government, of the practicing bar and of academics?

Copyright & Privacy - Through The Wide-Angle Lens, 4 J. Marshall Rev. Intell. Prop. L. 285 (2005), William W. Fisher Iii, Howard P. Knopf, Fred Von Lohmann, William B.T. Mock, Marybeth Peters, R. Anthony Reese

UIC Review of Intellectual Property Law

Some have proposed “alternative compensation schemes” as a means of compensating copyright owners and creators for P2P activity while avoiding litigation. Some have proposed a streamlined dispute resolution system that would allow for enforcement in a manner analogous to the UDRP model. Others question whether private copying should necessarily be viewed as illegal and whether any alternative compensation scheme is viable. With all of these proposals, the question remains as to whether “alternative compensation” is really alternative.

Transaction Costs And Antitrust Concerns In The Licensing Of Intellectual Property, 4 J. Marshall Rev. Intell. Prop. L. 325 (2005), Richard A. Posner

UIC Review of Intellectual Property Law

High transaction costs incurred in the licensing of intellectual property create a pressure on legal principles ranging from the fair use doctrine of copyright law to the tying doctrine in antitrust law. It appears, with some exceptions, that antitrust law is imposing excessive restrictions on the licensing of intellectual property. The effect of these restrictions, combined with the high transaction costs inherent in the licensing of intellectual property, is to prevent the maximally efficient allocation of IP resources.

Recent Developments In Trademark Law: Confusion, Free Speech And The Question Of Use, 4 J. Marshall Rev. Intell. Prop. L. 387 (2005), Chad J. Doellinger

UIC Review of Intellectual Property Law

The Supreme Court’s continued trend of refining trademark rights combined with a new concern for free speech and expression brings current and unresolved trademark issues to light. The large amount of activity in the development of trademark law in 2004 has brought additional uncertainty to trademark law. This article discusses recent Supreme Court trademark jurisprudence refining trademark rights, the development of recent trademark dilution cases, the role of use in commerce as applied to internet search engines and keyword issues, and the emphasis on free speech and expression.

Intellectual Property Implications In A Virtual Reality Environment, 4 J. Marshall Rev. Intell. Prop. L. 483 (2005), Timir Chheda

UIC Review of Intellectual Property Law

What will become of intellectual property interests in a world where virtual reality is a fact of life? To ponder this question we must step back from the sophisticated judicially created tests built around a framework of policy suited for modern reality and first consider whether such policy is viable given a virtual reality environment. Only then may we consider if the tests appropriately further such policy, and if not, modify the tests accordingly. This comment considers the policy and tests implicated when copyright, trademark, and patent law pass through the looking-glass and enter the realm of virtual reality.

Placing The Burden Back Where It Belongs: A Proposal To Eliminate The Affirmative Duty From Willful Infringement Analyses, 4 J. Marshall Rev. Intell. Prop. L. 509 (2005), Kevin J. Kelly

UIC Review of Intellectual Property Law

In order to further the objective of the patent system and maximize the public’s incentive to innovate, it is imperative that the patent laws maintain a balance between the interests of patent owners in excluding others from their patents and the interests of society in the continual progress of technology. The current law in willful infringement analysis upsets this balance with the affirmative duty of due care, which shifts the burden of proof in patent infringement suits from the plaintiff to the alleged infringer. The affirmative duty places a heavy burden on the public and is inconsistent with various common …

University Of Rochester V. G.D. Searle & Co.: Writing On The Wall, 4 J. Marshall Rev. Intell. Prop. L. 406 (2005), N. Scott Pierce

UIC Review of Intellectual Property Law

In patent law, the first paragraph of 35 U.S.C. § 112 is currently interpreted to include a written description requirement that is distinct from the requirement of enabling a person skilled in the art to make and use an invention. However, analyses of patent specifications under the “written description requirement” have relied on determinations of whether one skilled in the art would comprehend the scope of the claimed invention in view of the description provided, in effect continuing use of enablement as the statutory threshold for description purposes. The Court of Appeals for the Federal Circuit in University of Rochester …

Congress Wants To Give The Riaa Control Of Your Ipod: How The Induce Act Chills Innovation And Abrogates Sony, 4 J. Marshall Rev. Intell. Prop. L. 534 (2005), Michael Raucci

UIC Review of Intellectual Property Law

The addition of “active inducement” to the Copyright Act would compliment the doctrine of contributory liability by punishing those who actively encourage copyright infringement. Actively inducing infringement can include advertising an infringing use or other affirmative acts. Therefore, active inducement provides a technology-neutral standard that would not look to punish bad technology but rather bad actions by the technology distributor. In contrast, the reasonable person standard of the Inducing Infringement of Copyright Act of 2004 (“Induce Act”) permits an inappropriate extension of the exclusive rights given to copyright holders by lowering the threshold for litigation. Consequently, the Induce Act improperly …

"As The Federal Circuit Turns": The Supreme Court's Consideration Of Merck V. Integra And The Safe Harbor Provision, 4 J. Marshall Rev. Intell. Prop. L. 368 (2005), Blair M. Jacobs, Christina A. Ondrick

UIC Review of Intellectual Property Law

The Hatch-Waxman Act was enacted to balance the competing interests in the pharmaceutical marketplace between brand name and generic drug manufacturers. In the twenty years since its inception, the safe harbor provision contained in § 271(e)(1), has been interpreted to provide broad protection to those involved in research activities. However, in 2003, the Federal Circuit narrowly interpreted the safe harbor provision in a move that could potentially frustrate future research and improvements on patented technologies. Merck v. Integra is currently before the United States Supreme Court, who has the challenge of unraveling the competing interests involved. In order to encourage …

Abuse Of Public Use? Exploring The Smithkline V. Apotex Decision And The Future Of Public Use, 4 J. Marshall Rev. Intell. Prop. L. 559 (2005), Artem N. Sokolov

UIC Review of Intellectual Property Law

In SmithKline Beecham Corp. v. Apotx Corp., the court incorrectly applied the statutory public use bar and held the clinical trials did not constitute an experimental use. This ruling set the bar too high. Applying a narrow construction of the law, the CAFC invalidated a claim in a clear case of experimental use. The decision not only misapplied the precedent defining an “inherent” feature of the invention, but also essentially eliminated the need for applying the policies that underlie and define the public use bar under 35 U.S.C. § 102(b).

Is The Federal Circuit Ready To Accept Plenary Authority For Patent Appeals?, 4 J. Marshall Rev. Intell. Prop. L. 583 (2005), Meredith Martin Addy

UIC Review of Intellectual Property Law

Congress formed the U.S. Court of Appeals for the Federal Circuit in 1982 in part to improve uniformity in the interpretation of patent law and to eliminate forum shopping. However, in 2002, the Federal Circuit’s ability to achieve that goal was reduced when the U.S. Supreme Court, in Holmes Group v. Vornado, held that the Federal Circuit would not have jurisdiction in cases where a federal patent law issue arises only in a responsive pleading. Many commentators have argued that the Holmes decision runs afoul of the congressional mandate in forming the Federal Circuit. With the hope of addressing this …

The Third Door Is Off The Hinges: A Prospective Study On The Effects Of The Create Act Against Federal Patent Policies, 4 J. Marshall Rev. Intell. Prop. L. 597 (2005), Shane M. Popp

UIC Review of Intellectual Property Law

The CREATE Act has amended § 103 of the Patent Act to expand the definition of common ownership such that a claimed invention is deemed to be commonly owned with other subject matter when the two arise from the same “joint research agreement.” With the CREATE Act, Congress intended to promote research among inventive entities, but instead, Congress has relaxed the conditions for patentability to the point where a contract can circumvent an obviousness inquiry.

Pondering A “Baffling” Situation: The “Reconstruction” Of Claim Construction, 4 J. Marshall Rev. Intell. Prop. L. 623 (2005), Karen C. Mitch

UIC Review of Intellectual Property Law

Through an iterative use of the ordinary dictionary, claim construction would be more simple, cost effective and efficient in serving the public notice function of the claim. Since the decision in Markman, two divergent methods of claim construction have emerged; one referring to dictionary definitions first, the other referring to parts of the patent such as the specification first. Due to the confusion and differing outcomes the two methods bring about, there came a call by the United States Court of Appeals for the Federal Circuit for clarification. The recent en banc decision in Phillips reverted claim interpretation back to …

Is The Cure Worse Than The Disease? An Overview Of The Patent Reform Act Of 2005, 5 J. Marshall Rev. Intell. Prop. L. 55 (2005), James G. Mcewen

UIC Review of Intellectual Property Law

As a result of pressures from various groups and issues surrounding the current patent system, representative Lamar Smith introduced a bill which overhauls multiple aspects of patent practice. The patent reform act is designed to please or compromise between various industry groups while at the same time invigorating the patent system. Specifically, the Patent Reform Act proposes changes to the procedures for filing application, how the applications are filed and even how patents are enforced. In addition to the major publicized changes the Patent Reform Act proposes other alterations that, while receiving less notice, have just as much practical effect. …

Patent Tying Agreements: Presumptively Illegal?, 5 J. Marshall Rev. Intell. Prop. L. 94 (2005), Alison K. Hayden

UIC Review of Intellectual Property Law

On January 25, 2005, the CAFC decided the case of Independent Ink, Inc. v. Illinois Tool Works, Inc., holding that market power will be presumed in a tying agreement whenever a tying product is patented. This rule puts patent holders at a disadvantage, and will increase the amount of antitrust lawsuits brought against patent holders and holders of other exclusive intellectual property rights. Indeed, this rule conflicts with the intended effect of antitrust law. This comment proposes that tying agreements involving a patented product be evaluated the same way as all other tying agreements, and that the presumption of market …