Intellectual Property Law Commons^™

Let's Make A Deal: Negotiating Resolution Of Intellectual Property Disputes Through Mandatory Mediation At The Federal Circuit, 6 J. Marshall Rev. Intell. Prop. L. 365 (2007), Wendy Levenson Dean

UIC Review of Intellectual Property Law

In 2006, the United States Court of Appeals for the Federal Circuit implemented a mandatory mediation program for parties in all counseled cases, including intellectual property disputes. This program offers the parties incentives to settle, such as providing neutral mediators with intellectual property expertise at no cost to the litigants. This article explains how the Federal Circuit’s Mediation Program works and provides an overview of the Guidelines. This article concludes that the Federal Circuit firmly stands behind the mandatory mediation program for intellectual property disputes and believes the process can only serve to benefit all parties involved.

One Step Outside The Country, One Step Back From Patent Infringement, Katherine E. White

Law Faculty Research Publications

No abstract provided.

The Proliferation Of Tax Strategy Patents: Has Patenting Gone Too Far?, 7 J. Marshall Rev. Intell. Prop. L. 202 (2007), Anish Parikh

UIC Review of Intellectual Property Law

Many people employ an accountant or tax attorney to assist them with the paying of their taxes. Tax practitioners may utilize various tax strategies in determining how a taxpayer should allocate his money. These tax strategies fall into the category of business methods. It was widely held that patents could not be granted for methods of doing business; however, this changed in 1998 when the Court of Appeals for the Federal Circuit upheld the patentability of an investment structure in State Street Bank & Trust Company v. Signature Financial Group, Inc. More recently, in Wealth Transfer Group v. Rowe, the …

Application Service Providing, Copyright, And Licensing, 25 J. Marshall J. Computer & Info. L. 79 (2007), Michael P. Widmer

UIC John Marshall Journal of Information Technology & Privacy Law

Application Service Providing ("ASP"), where a vendor hosts a software application on her server and grants customers access to the application over a network -- without the software application itself being installed on the user’s computer -- is used by many, e.g. in the form of Web based e-mail services, and grows ever more important. This article argues that although ASP mainly raises questions (i) that come up in the context of traditional use of computer programs; or (ii) that have been addressed in the context of online use of works other than software, ASP has significantly different copyright implications …

Slingbox: Copyright, Fair Use, And Access To Television Programming Anywhere In The World, 25 J. Marshall J. Computer & Info. L. 187 (2007), Shekar Sathyanarayana

UIC John Marshall Journal of Information Technology & Privacy Law

No abstract provided.

What Is Patentable Subject Matter? The Supreme Court Dismisses Labcorp V. Metabolite Laboratories, But The Issue Is Not Going Away, Sue Ann Mota

Marquette Intellectual Property Law Review

Patent law seeks to strike a balance regarding patentable subject matter between overprotection, which can impede the free exchange of ideas, and under-protection, which can lessen the incentive to invent. This article summarizes the Supreme Court's recent decision to dismiss Laboratory Corporation of America Holdings v. Metabolite Laboratories, Inc., passing on the opportunity to consider the issue of what constitutes patentable subject matter under the Patent Act, and the author outlines recommendations for when the issue is raise by future litigants.

The Proper Scope Of Patentability In International Law, Shawn J. Kolitch

Marquette Intellectual Property Law Review

Patent law encourages innovation, but the harm caused by some inventions may outweigh the benefits of disclosure. This article examines the environmental and public health consequences of patent laws around the world and argues that the patent incentive should be selectively removed to mitigate the harmful effects of granting patents without regard to the invention-specific impacts of doing so.

Why Do We Have Trade Secrets?, Michael Risch

Marquette Intellectual Property Law Review

Trade secrets are arguably the most important and most litigated form of intellectual property. This article explores the history of trade secret law in the United States and examines why it is that every state has opted to protect secret information, even though such protection is antithetical to the policies of access associated with patent law and non-protection of facts associated with copyright law.

International Copyright Law And Litigation: A Mechanism For Improvement, Roberto Garza Barbosa

Marquette Intellectual Property Law Review

This article outlines the challenges of international copyright litigation and considers rights and remedies available under TRIPs and the laws of various national copyright statutes. To keep pace with new technology, the author proposes a mechanism for the enforcement of existing rights around the world, while counter the prevailing problems of the ease of infringement and expense of enforcement.

Breaking The Law To Break Into The Black: Patent Infringement As A Business Strategy , Eric C. Wrzesinski

Marquette Intellectual Property Law Review

Corporations and businesses make important decisions everyday that affect their financial viability and market image. This article analyzes the phenomenon of patent infringement, considering whether firms consciously decide to infringe certain patents as a sound business strategy, or whether such cases arise spontaneously due to incomplete and careless research of prior art by infringing firms. The author considers the extent to which patent infringement may remain an effective business strategy for technology-producing firms, even when not employed willfully, due to the inadequate deterrence function of current U.S. patent laws.

Table Of Contents

Marquette Intellectual Property Law Review

None.

Gone In A Blink: The Overlooked Privacy Problems Caused By Contactless Payment Systems, Shane L. Smith

Marquette Intellectual Property Law Review

The use of RFID technology in contactless payment devices presents an expanding menu of challenges and concerns to privacy advocates. While rapid, creative advances have been made by contactless payment system issuers, neither privacy advocates nor lawmakers have used the same creative visions to address the privacy problems caused by contactless payment systems. The author proposes a legislative response to address privacy concerns without stifling technological developments.

Table Of Contents

Marquette Intellectual Property Law Review

None.

Super-Copyright: Contracts, Preemption, And The Structure Of Copyright Policymaking, Viva R. Moffat

Sturm College of Law: Faculty Scholarship

Adhesion contracts, many of them now in clickwrap or browsewrap form, proliferate and govern nearly every commercial transaction and most of the ways in which the modern consumer interacts with the world. Virtually every one of these contracts contains a limitation on copyright's fair use doctrine. These widespread and non-negotiated restrictions on fair use ("super-copyright" provisions) conflict with and stand as an obstacle to the achievement of federal purposes, but most courts and many commentators have rejected preemption as the appropriate doctrinal tool for addressing challenges to these provisions. This Article argues that enforcement of super-copyright provisions ought to be …

Hollywood Vs. The People Of The United States Of America: Regulating High-Definition Content And Associated Anti-Piracy Copyright Concerns, 6 J. Marshall Rev. Intell. Prop. L. 525 (2007), Timothy M. Cho

UIC Review of Intellectual Property Law

With Blu-ray Disc (“BD”) and HD-DVD poised to take over the $24.6 billion home video market, the issue of copy protection is the most significant obstacle to overcome before this new technological era can be fully ushered in. This comment proposes that impending Advanced Access Content System (“AACS”) implementation and Digital Millennium Copyright Act (“DMCA”) enforcement are not effective remedies for protecting copyrighted material and curbing rampant piracy in connection with BD and HD-DVD. Limiting the proposed scope of the DMCA, rejecting analog hole legislation, and creating low cost digital marketplace alternatives to illicit activity are the best ways to …

What Does Forum Shopping In The Eastern District Of Texas Mean For Patent Reform?, 6 J. Marshall Rev. Intell. Prop. L. 570 (2007), Alisha Kay Taylor

UIC Review of Intellectual Property Law

The Eastern District of Texas has recently become a rocket docket for patent litigation owing to the adoption of Judge T. John Ward’s local patent rules. However, the disproportional amount of patent cases filed in the Eastern District is evidence of plaintiffs forum shopping. Notwithstanding the benefit of forum shopping in creating, by default, patent law expertise in certain district courts, the existence of forum shopping illuminates the reality that patent law application is not uniformly applied throughout the district courts. This comment proposes a mandatory post-grant opposition proceeding occurring at the Board of Patent Appeals and Interferences of the …

Reason Or Madness: A Defense Of Copyright's Growing Pains, 7 J. Marshall Rev. Intell. Prop. L. 1 (2007), Marc H. Greenberg

UIC Review of Intellectual Property Law

A growing conflict between the creators and owners of expressive works protected by copyright law and the community of users and distributors of those works has focused on whether the law is so restrictive that it no longer meets the constitutional mandate that intellectual property law should serve to promote the growth and development of useful and expressive works. Has the scope of copyright's growth been reasonable, or are its restrictions madness, and harmful to the development and distribution of art? This article explores the seven leading criticisms leveled against copyright's expansion, and examines one recent effort at legislative reform …

Atlantic Recording Corporation V. Xm Satellite Radio: A Brief Analysis Of The Case And Its Implications For U.S. Copyright Law, Lyle Preslar

Vanderbilt Journal of Entertainment & Technology Law

In May 2006, the Recording Industry Association of America ("RIAA"), representing the four major record labels, brought suit against XM Satellite Radio, Inc. ('XM') in the U.S. District Court for the Southern District of New York.' The plaintiffs allege that XM's introduction of its new service utilizing certain satellite radio receivers, including Pioneer's "inno" (the "inno"), dubbed "XM+MP3,"constitutes "massive wholesale infringement" of RIAA members' copyrighted sound recordings. The plaintiffs claim that XM's new service allows XM subscribers to record broadcasted songs, store them in playlist form, and replay them at the user's will, "effectively provid[ing] a digital download service." This …

Illinois Tool Works: Allocating The Burden Of Proving Market Power In Patent Tying Cases, Dennis J. Abdelnour

Northwestern Journal of Technology and Intellectual Property

No abstract provided.

From Infringement To Innovation: Counterfeiting And Enforcement In The Brics, J. Benjamin Bai, Keith D. Lindenbaum, Yi Qian, Cynthia Ho

Northwestern Journal of Technology and Intellectual Property

No abstract provided.

Ntp V. Rim: The Diverging Law Between System And Method Claim Infringement, Stephen P. Cole

The University of New Hampshire Law Review

[Excerpt] “Almost thirty years after the landmark decision of Decca Ltd. v. United States, the Federal Circuit had an opportunity to reevaluate the extraterritorial limits of U.S. patent law in NTP, Inc. v. Research in Motion, Ltd. After withdrawing its initial opinion (“NTP I”) and issuing a second opinion (“NTP II”), the court held that a system having a component located outside U.S. jurisdiction could be subject to U.S. patent law. The court held as a matter of law, however, that a process in which a step is performed outside U.S. jurisdiction could not be subject to U.S. patent law. …

Addressing The Incoherency Of The Preemption Provision Of The Copyright Act Of 1976, Joseph P. Bauer

Vanderbilt Journal of Entertainment & Technology Law

Section 301 of the Copyright Act of 1976 expressly preempts state law actions that are within the "general scope of copyright" and that assert claims that are "equivalent to" the rights conferred by the Act. The Act eliminated the previous system of common law copyright for unpublished works, which had prevailed under the prior 1909 Copyright Act. By federalizing copyright law, the drafters of the statute sought to achieve uniformity and to avoid the potential for state protection of infinite duration.

The legislative history of § 301 stated that this preemption provision was set forth "in the clearest and most …

The Sunset Of "Quality Control" In Modern Trademark Licensing, Irene Calboli

American University Law Review

Historically, based on the premise that trademark protection is about consumer welfare, trademark law has allowed trademark licensing only as long as licensors control the quality of the products bearing the licensed marks. Ever since its adoption, however, this rule has been difficult to enforce because it hinges on a concept that is ambiguous and difficult to frame in a legal context: quality control. Unsurprisingly, the consequence has been inconsistent case law and much uncertainty as to what represents valid licensing. In addition, in the past decades, courts have proven increasingly reticent to strictly apply this rule and have declared …

Survey Of The Federal Circuit's Patent Law Decisions In 2006: A New Chapter In The Ongoing Dialogue With The Supreme Court, Gregory A. Castanias, Lawrence D. Rosenberg, Michael S. Fried, Todd R. Geremia

American University Law Review

In 2006, the Federal Circuit decided only one portion of one patent case en banc, and that was done mainly as a procedural matter (the entire case was not argued to an en banc court) in order to reconcile prior conflicting precedent on the issue of induced patent infringement with the recent Supreme Court decision in Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd., involving induced copyright infringement. But in light of the Supreme Court’s much more muscular review of the Federal Circuit’s patent cases—which may not even reflect the full extent of the Court’s interest in the Federal Circuit’s patent decisions—the …

Patent Ships Sail An Antitrust Sea, Joseph Scott Miller

Seattle University Law Review

The deeper truths evoked by patent ships sailing an antitrust sea are three. First, free competition is the pervasive, baseline reality, the background norm; patent protection is the temporary, partial exception. Second, we grasp both patent and antitrust policy with a common science: economics. Third, although neither patent nor antitrust law doctrines are good tools for fixing fundamental problems in the other body of law, both bodies of law help us better understand the shortcomings of the other. I explore these ideas in turn, below.

Fostering Economic Growth In The High-Technology Field: Washington Should Abandon Its Recognition Of The Inevitable Disclosure Doctrine, Sarah J. Taylor

Seattle University Law Review

Part II of this Comment discusses the history and need for trade secret law, while providing an overview of Washington's current application of trade secret law. This Part also notes the risks associated with enforcing a valid trade secret misappropriation claim. Part III addresses the history and importance of noncompetition agreements, as well as their inherent conflict with the notion of employee mobility. Washington's recognition of reasonable noncompetition agreements is also discussed. Part IV discusses the modem application of the doctrine of inevitable disclosure, as well as the benefits and costs of recognizing the doctrine in Washington. Finally, Part V …

Your Licensor Has A License To Kill, And It May Be Yours: Why The Ninth Circuit Should Resist Bankruptcy Law That Threatens Intellectual Property Licensing Rights, Jon Minear

Seattle University Law Review

In recent opinions, the U.S. Court of Appeals for the Seventh Circuit has interpreted the Bankruptcy Code ("the Code") in a manner that makes inaction or ignorance perilous for IP licensees whose licensor declares bankruptcy. Although Congress amended the Code to protect a licensee from losing technology rights in these situations, the Seventh Circuit has narrowly interpreted a strikingly similar bankruptcy provision involving real-estate leases and, in doing so, has cast doubt on the efficacy of the licensee protections found in section 365(n) of the Code. In addition, this circuit has broadly interpreted another Code section dealing with title-clearing sales …

Transcript: Introduction To The Third Annual Ip/Gender: The Unmapped Connections Symposium, Victoria F. Phillips

American University Journal of Gender, Social Policy & the Law

No abstract provided.

Transcript: Opening Remarks, Peter Jaszi

American University Journal of Gender, Social Policy & the Law

No abstract provided.

Transcript: Introductory Remarks To Panel 1, Christine Farley

American University Journal of Gender, Social Policy & the Law

No abstract provided.