Intellectual Property Law Commons^™

Claim Preambles And The Unassailable Patent Claim, 5 J. Marshall Rev. Intell. Prop. L. 121 (2005), Kyle D. Petaja

UIC Review of Intellectual Property Law

In order to diminish the extensive confusion surrounding claim preambles, one must not consider what a preamble should do; rather, it is helpful to consider what a preamble should not do. Traditionally, a preamble is defined as an introduction to a statute or deed stating the document’s basis, purpose, aim, justification, and objective. However, in patents, a claim preamble does not serve this purpose. While a preamble undeniably functions as an introduction to the rest of the claim, that claim is limited in scope and therefore, so too, is the preamble. The basis, purpose, aim, justification, and objective of the …

To Be Presumed Or Not To Be Presumed . . . That Is The Enablement Question, 5 J. Marshall Rev. Intell. Prop. L. 140 (2005), Kristina A. Walker

UIC Review of Intellectual Property Law

In 2003, the Federal Circuit in Amgen Inc. v. Hoechst Marion Roussel, Inc. placed the burden of proving a prior art patent’s § 112 nonenablement on the patentee instead of the accused infringer. The patentee even bears this burden when the unclaimed subject matter is asserted to anticipate the patent at issue. This comment focuses on three questions that were created by the decision in Amgen. First, is material in a printed publication equivalent to unclaimed material in a patent? Second, is the holding in Amgn based on a false premise because it may accord a presumption of § 112 …

Collateral Damage: The Effect Of The Database Debate On Other Acts Of Congress, 5 J. Marshall Rev. Intell. Prop. L. 78 (2005), Christopher A. Mohr

UIC Review of Intellectual Property Law

Under the reasoning in Unied States v. Martingon, declaring the federal bootlegging statute unconstitutional, databases, as “non-writings,” could not be protected under Congress’s copyright power or commerce power. In other words, Congress’s power under Article I, Section 8, Clause 8 serves to limit its ability to act under Article I, Section 8, Clause 3. Marignon’s rationale raises questions about a variety of prospective and existing legislation that protects “non-writings” for an unlimited time, such as the trademark dilution statute. This article examines the merits of this contention, arguing that the manner in which the Supreme Court has handled overlapping Article …

Legal And Practical Aspects Of Music Licensing For Motion Pictures, Vad Kushnir

Vanderbilt Journal of Entertainment & Technology Law

Most motion pictures contain both original music composed specifically for a particular film and preexisting music (usually popular songs). In order to use preexisting music in a motion picture, the movie studio must obtain the appropriate music licenses from the copyright proprietors. The process of licensing music for use in a motion picture can potentially involve three different types of music licenses. First, the movie producer must obtain a "synchronization license," which will allow the producer to synchronize the musical work with the on-screen visual images and to use the licensed musical work as part of the motion picture in …

When Trade Secrets Become Shackles: Fairness And The Inevitable Disclosure Doctrine, Elizabeth A. Rowe

UF Law Faculty Publications

Critics of the inevitable disclosure doctrine decry the inconsistency with which courts rule on these cases, and the difficulty in predicting case outcomes. They contend that courts are left to "grapple with a decidedly ... nebulous standard of 'inevitability."' Further, they claim the doctrine undermines the employee's fundamental right to move freely and pursue his or her livelihood.

Ultimately, both the problem and solution here are about fairness: fairness in the employer-employee relationship, fairness in the application of the law, and fairness in providing protection from unfair competition between competing employers. The crux of the opposition to the doctrine, in …

Analysis Of Options For Implementing Disclosure Of Origin Requirements In Intellectual Property Applications, Joshua D. Sarnoff, Carlos M. Correa

Traditional Knowledge and Culture

In 2002, the Conference of the Parties (COP) of the Convention on Biological Diversity (CBD) at its Sixth Meeting adopted the Bonn Guidelines to address access to genetic resources and fair and equitable benefit-sharing arising from use of those resources. In the Bonn Guidelines, the CBD COP invited Parties and governments to encourage disclosure of the country of origin of genetic resources and of associated traditional knowledge in applications for intellectual property where the subject matter of the application concerns or makes use of such knowledge in its development. Since 2002, various proposals to facilitate or to mandate such “disclosure …

A Proposed Quick Fix To The Dmca Overprotection Problem That Even A Content Provider Could Love . . . Or At Least Live With, Devon Thurtle

Seattle University Law Review

This article explains the evolution of the fair use doctrine, which historically prevented copyright holders from having too much control over their works by allowing certain legal and non-infringing fair uses of protected works. Part II explains how the United States Supreme Court developed the Betamax standard to apply the doctrine of fair use to a new technology: home video recorders. Part II also addresses how fair use and the Betamax standard might apply to digital technologies. Part III explains how the DMCA effectively abolished the defense of fair use and its application under the Betamax standard. Finally, Part IV …

Note: Exclusive Licensing Of Dna Diagnostics: Is There A Negative Effect On Quantity And Quality Of Healthcare Delivery That Compels Nih Rulemaking?, Edward Weck

William Mitchell Law Review

This comment surveys the costs of deoxyribonucleic acid (DNA) diagnostic tests and argues in favor of non-exclusive licensing as a means to provide broad access to affordable DNA diagnostic testing. Part II provides background information on genetic testing, patenting genes as applied to genetic testing, the Bayh-Dole Act, and technology transfer. In addition, Part II summarizes academic commentary regarding the implications of exclusive licensing for biotechnology. Scholars propose a number of solutions, including expanding the experimental use exception. Part III details proposed rulemaking for DNA diagnostics. Part IV reviews anecdotal examples of genetic testing for breast cancer, hereditary hemochromatosis, and …

Economic Analysis Of Technological Protection Measures, John A. Rothchild

Law Faculty Research Publications

No abstract provided.

When Will We Have Cross-Border Licensing Of Copyright And Related Rights In Europe?, Lucie Guibault

Articles, Book Chapters, & Popular Press

In Europe, much has been written recently about the collective management of copyright and related rights. April 2004 saw the publication of the European Commission’s Communication to the Council and the European Parliament on the Management of Copyright and Related Rights in the Internal Market. This communication confirms the Commission’s intention to adopt, in the not too distant future, a directive on the governance of the societies for collective management of copyright and related rights (collecting societies) in Europe. In addition to describing the current situation in the area of collective management of copyright and related rights in the European …

The First Amendment's Biggest Threat, Michael J. Gerhardt

Faculty Publications

No abstract provided.

God In The Machine: A New Structural Analysis Of Copyright's Fair Use Doctrine, Matthew Sag

Faculty Articles

Recognition of the structural role of fair use has the potential to mitigate some of the uncertainty of current fair use jurisprudence. The statutory framework for fair use both mitigates and causes uncertainty. It mitigates uncertainty by providing a consistent framework of analysis the four statutory factors. However, when judges apply the statutory factors without articulating or justifying their own assumptions, they increase uncertainty. The statutory factors mean nothing without certain a priori assumptions as to the scope of the copyright owner's rights. A more stable and predictable fair use jurisprudence would begin to emerge if those assumptions were made …

The Terminator As Eraser: How Arnold Schwarzenegger Used The Right Of Publicity To Terminate Non-Defamatory Political Speech, David Welkowitz, Tyler Ochoa

Faculty Publications

INTRODUCTION

While it is no longer unusual for a politician to have been a recent celebrity in the commercial world of entertainment, the Schwarzenegger bobblehead case is one of the rare cases in which a politician has filed a lawsuit asserting a right of publicity claim. However, the Schwarzenegger case and its settlement exposed some basic flaws in the analysis of celebrity rights problems, flaws that are not unique to its political context. Two of those flaws converged in this case and are the main subjects of this article. First, rights of publicity claims frequently are used as a "stealth" …

The Schwarzenegger Bobblehead Case: Introduction And Statement Of Facts, Tyler T. Ochoa

Faculty Publications

In May 2004, news media around the world buzzed after learning that Arnold Schwarzenegger, movie-star-turned Governor of California, had filed a lawsuit against an Ohio manufacturer of bobblehead dolls bearing his name and likeness. The case presented a seemingly stark choice between the right of a celebrity-politician to protect his image against commercial appropriation and the First Amendment rights of the public to lampoon that image, and commentators hoped that the case would set a precedent regarding how those rights should be balanced. Just three months later, however, before any court ruling had been made, the parties announced that they …

Using Intellectual Property Rights To Preserve The Global Genetic Commons: The International Treaty On Plant Genetic Resources For Food & Agriculture, Laurence R. Helfer

Faculty Scholarship

Over the last twenty years, national governments, patent owners, farmers, plant breeders, researchers, and a diverse array of non-governmental organizations (NGOs) have engaged in a vigorous debate over how to conserve and utilize the world's plant genetic diversity. On one side of this debate are advocates of a pure global commons regime, which would allow researchers, breeders, and farmers free and unfettered access to all plant genetic resources (PGRs), including those held in international seed banks, in national collections, and in situ on public lands. On the other side are advocates of a private property approach, which seeks to encourage …

The Problem Of New Uses, Rebecca S. Eisenberg

Articles

Discovering new uses for drugs that are already on the market seems like it ought to be the low-lying fruit of biopharmaceutical research and development (R&D). Firms have already made significant investments in developing these drugs and bringing them to market, including testing them in clinical trials, shepherding them through the FDA regulatory approval process, building production facilities, and training sales staff to market them to physicians. By this point, the drugs have begun to enjoy goodwill among patients and physicians and casual observations in the course of clinical experience may point to potential new uses. One might expect that …

Is The Monopoly Theory Of Trademarks Robust Or A Bust?, Harold R. Weinberg

Law Faculty Scholarly Articles

The "monopoly theory of trademarks" would "antitrustize" trademark law by incorporating antitrust legal precedent, economics, policies, reasoning, and terminology. The theory is comprised of six interrelated postulates contained in trademark law and scholarship. The postulates are (1) trademarks are monopolies; (2) trademark monopolies are like illegal antitrust monopolies because both harm competition; (3) trademark law is like antitrust law because both value competition; (4) trademark law is like antitrust law because both apply economic methodology to product markets; (5) an antitrust lens can help one understand trademarks and trademark law; and (6) an antitrust lens can help one decide whether …

The Constitutional Failing Of The Anticybersquatting Act, Ned Snow

Faculty Publications

Eminent domain and thought control are occurring in cyberspace. Through the Anticybersquatting Consumer Protection Act (ACPA), the government transfers domain names from domain-name owners to private parties based on the owners' bad-faith intent. The owners receive no just compensation. The private parties who are recipients of the domain names are trademark holders whose trademarks correspond with the domain names. Often the trademark holders have no property rights in those domain names: trademark law only allows mark holders to exclude others from making commercial use of their marks; it does not allow mark holders to reserve the marks for their own …

Do Patents Promote The Progress Of Justice?: Reflections On Varied Visions Of Justice, Cynthia M. Ho

Faculty Publications & Other Works

No abstract provided.

Inoculation Inventions: The Interplay Of Infringement And Immunity In The Development Of Biodefense Vaccines, Cynthia M. Ho

Faculty Publications & Other Works

No abstract provided.

From Sony To Grokster, The Failure Of The Copyright Doctrines Of Contributory Infringement And Vicarious Liability To Resolve The War Between Content And Destructive Technologies, Craig A. Grossman

Buffalo Law Review

No abstract provided.

Sanitizing The Obscene: Fighting For The Right To Edit Objectionable Film Content, Darcy Williams

Jeffrey S. Moorad Sports Law Journal (1994 - )

No abstract provided.

Doubtful Sex In Civil Law: Nineteenth And Early Twentieth Century Proposals For Ruling Hermaphroditism, Geertje Mak

Cardozo Journal of Equal Rights & Social Justice

The article examines 19th and early 20th-century proposals in France and Germany to introduce a "doubtful sex" category in civil law to address hermaphroditism. While French scholars focused on moral and social order, Germans emphasized humanitarian concerns, ultimately leading to increased medical control over sex determination.

Entrance Ramps, Tolls, And Express Lanes – Proposals For Decreasing Traffic Congestion In The Patent Office, Kristen Jakobsen Osenga

Law Faculty Publications

This Article proposes implementing a multitier patent system by the creation of two additional "roads" or routes that a patent application may follow. Because many patents are not sought with the intention of pursuing the traditional patent reward of commercialization or profit through access control, that is, the exercise of the limited patent monopoly, there is no reason for every single application to follow the current route. The creation of an auxiliary, or "side road," would decrease crowding on the current patent grant highway while still allowing the nontraditional applications to enter and traverse the patent grant system with different …

Not Playing Around: The Chilling Power Of The Federal Trademark Dilution Act Of 1995, Julie Zando-Dennis

Cardozo Journal of Equal Rights & Social Justice

The Federal Trademark Dilution Act of 1995 (FTDA) has become a powerful tool for corporations to suppress criticism and parody, undermining free speech by allowing broad claims of trademark dilution without requiring proof of consumer confusion. The note argues that the FTDA’s provisions against dilution, including blurring and tarnishment, disproportionately favor corporate interests over First Amendment rights, particularly in cases involving parody and satire. Courts have inconsistently applied the law, with some circuits offering protections for parody while others prioritize trademark protection, creating uncertainty and chilling artistic and activist expression. The note advocates for reform to balance trademark rights with …

When Does A Patent Right Become An Antitrust Wrong? Antitrust Liability For Refusals To Deal In Patented Goods, Aaron B. Rabinowitz

Richmond Journal of Law & Technology

[T]he benefit even of limited monopolies is too doubtful to be opposed to that of their general suppression.At the border of intellectual property monopolies and antitrust markets lies a field of dissonance yet to be harmonized by statute or the Supreme Court.

The Ghost Of Telecommunications Past, Philip J. Weiser

Publications

Paul Starr's The Creation of the Media presents modern policymakers with an important opportunity to consider the historical lessons of the telecommunications industry. This Book Review underscores how Starr's book richly explains some key components of U.S. information policy - such as relying on an integrated strategy of intellectual property, antitrust law, and telecommunications policy - and that some historical lessons are misplaced as to today's environment - such as a categorical skepticism of vertical integration. Moreover, Starr's account of telecommunications history explains that the U.S.'s success in promoting innovation in the information industries reflects our reluctance to manage key …

Harry Potter And The Law, Timothy S. Hall, Jeffrey E. Thomas, Danaya C. Wright, James Charles Smith, Aaron Schwabach, Joel Fishman, Daniel Austin Green, Andrew P. Morriss, Benjamin H. Barton

Faculty Works

The magnitude of the Harry Potter phenomenon alone would make it worthy of consideration; the fact that it is children's literature, and thus may play a significant part in forming a future generation's attitudes toward law and legal institutions, makes it even more so. The various contributions to this article explore various aspects of law and culture as presented in or viewed through the Harry Potter stories. The contributions of James Charles Smith and Danaya Wright address the depiction of families in the narratives and the limited role and development of family law. Benjamin H. Barton's contribution considers the failings …

Invention, Refinement And Patent Claim Scope: A New Perspective On The Doctrine Of Equivalents, Craig Allen Nard

Faculty Publications

The doctrine of equivalents (DOE) allows courts to expand the scope of patent rights granted by the Patent Office. The doctrine has been justified on fairness grounds, but it lacks a convincing economic justification. The standard economic justification holds that certain frictions block patent applicants from literally claiming appropriately broad rights, and thus, the DOE is available at trial to expand patent scope and overcome these frictions. The friction theory suffers from three main weaknesses. First, the theory is implausible on empirical grounds. Frictions such as limits of language, mistake, and unforeseeability are missing from the leading cases. Second, there …

Comptroller Of City Of New York V. Mayor Of New York (Decided July 29, 2004), Leslie Spitalnick

NYLS Law Review

No abstract provided.