Intellectual Property Law Commons^™

Collateralizing Intellectual Property, Xuan-Thao Nguyen

Articles

This Article identifies and critiques the collateralization of intellectual property, revealing the complexity of intersecting secured transaction law, namely Article 9 of the Uniform Commercial Code, and doctrinal intellectual property laws such as patent law, copyright law, and trademark law. The inquiry challenges the silence surrounding the pervasive use of intellectual property as collateral in secured financing and suggests changes to the existing framework on secured financing law.

The Article proceeds as follows: Part II discusses the normative intellectual property rights for patents, copyrights, and trademarks and how such rights are utilized as corporate assets. Part III describes different forms …

Using Stock And Stock Options To Minimize Patent Royalty Payment Risks After Medimmune V. Genentech, Sean M. O'Connor

Articles

This Article proposes a more or less functional equivalent mechanism to a patent royalty stream through the use of stock and stock options in the licensee. The stock would coarsely track the overall fortunes of the licensee, while the options could be more finely tuned to vest and become exercisable upon events and milestones that would have been used for payments in a traditional license fee plus royalty stream licensing deal.

There may be problems of liquidity, of course, during the period where the licensee is still privately held and thus has no ready markets for its stock. But even …

Mgm V. Grokster: Adopting Patent Law's Active Inducement Doctrine And Shifting The Focus To Actions Of Alleged Indirect Infringers, Kristine Grigorian

Journal of Business & Technology Law

No abstract provided.

Copyright Under Siege: An Economic Analysis Of The Essential Facilities Doctrine And The Compulsory Licensing Of Copyrighted Works, 17 Alb. L.J. Sci. & Tech. 481 (2007), Daryl Lim

UIC Law Open Access Faculty Scholarship

No abstract provided.

Dissonant Harmonization: Limitations On "Cash N' Carry" Creativity, 70 Alb. L. Rev. 1163 (2007), Doris E. Long

UIC Law Open Access Faculty Scholarship

Even though creativity lies at the heart of present copyright laws, the impulse to create-or more precisely what triggers such creativity-remains largely unexamined. Coinciding with the digital demand for access to information, new standards for "cash 'n' carry" creativity are being urged with little regard to what level of authorial3 control may be required to ensure continued enrichment of the public domain through the creation of vibrant new works. Scientific, psychological, and sociological studies indicate that "cash 'n' carry" creativity fails to implement the critical triggering mechanisms for the creative impulse. Moreover, such "cash 'n' carry" attitudes toward authors' rights …

Overcoming The Achilles Heel Of Copyright Law, Haochen Sun

Northwestern Journal of Technology and Intellectual Property

No abstract provided.

Will India And China Profit From Technological Innovation?, David Orozco

Northwestern Journal of Technology and Intellectual Property

No abstract provided.

Northwestern Journal Of Technology And Intellectual Property Second Annual Symposium: Welcoming Remarks, David E. Van Zandt

Northwestern Journal of Technology and Intellectual Property

No abstract provided.

Technological Drivers Of Bric Economies: Public Versus Private Sector Control, Vipin Gupta, David M. Orozco, Linda Yueh

Northwestern Journal of Technology and Intellectual Property

No abstract provided.

The Existing Legal Infrastructure Of Brics: Where Have We Been And Where Are We Going?, Robert B. Ahdieh, Zhu (Julie) Lee, Srividhya Ragavan, Kevin Noonan, Clinton W. Francis

Northwestern Journal of Technology and Intellectual Property

No abstract provided.

Should Fashion Design Be Copyrightable?, Brandon Scruggs

Northwestern Journal of Technology and Intellectual Property

No abstract provided.

Fostering Creativity In Virtual Worlds: Easing The Restrictiveness Of Copyright For User-Created Content, Todd David Marcus

NYLS Law Review

No abstract provided.

Washington "Redskins" -Disparaging Term Or Valuable Tradition?: Legal And Economic Issues Concerning Harjo V. Pro-Football, Inc., Mark S. Nagel, Daniel A. Rascher

Fordham Intellectual Property, Media and Entertainment Law Journal

"I'll never change the name of the Redskins. You have my word on that. In addition to that, it's really what the Redskins mean that's not quite out there.., what it means is tradition. It means winning. It means a great tradition for the franchise."

-Daniel Snyder (owner of the Washington Redskins).

"A long habit of not thinking a thing wrong gives it a superficial appearance of being right, and raises at first a formidable outcry in defense of custom."

-Thomas Paine.

The Disputed Quality Of Software Patents, John R. Allison, Ronald J. Mann

Faculty Scholarship

We analyze the characteristics of the patents held by firms in the software industry. Unlike prior researchers, we rely on the examination of individual patents to determine which patents involve software inventions. This method of identifying the relevant patents is more laborious than the methods that previous scholars have used, but it produces a data set from which we can learn more about the role of patents in the software industry. In general, we find that patents the computer technology firms obtain on software inventions have more prior art references, claims, and forward citations than the patents that the same …

Of Mutant Copyrights, Mangled Trademarks, And Barbie's Beneficence: The Influence Of Copyright On Trademark Law, Jane C. Ginsburg

Faculty Scholarship

In Dastar Corp. v. Twentieth Century Fox Film Corp. Justice Scalia colorfully warned against resort to trademarks law to achieve protections unattainable by copyright, lest these claims generate "a species of mutant copyright law that limits the public's 'federal right to "copy and to use,"' expired copyrights." The facts of that controversy, in which the claimant appeared to be invoking time-unlimited trademark protection to end-run the exhausted (unrenewed) copyright term in a motion picture, justified the apprehension that unbridled trademark rights might stomp, Godzilla-like, over more docile copyright prerogatives. Unfortunately, in the Court's eagerness to forestall Darwinian disaster in intellectual …

On Copyright's Authorship Policy, Tim Wu

Faculty Scholarship

Making authors the masters of their own destiny has long been a stated aspiration of copyright. Yet more often than not, the real subjects of American copyright are distributors – book publishers, record labels, broadcasters, and others – who control the rights, bring the lawsuits, and take copyright as their "life-sustaining protection." Much of modern American copyright history, and particularly its legislative history, revolves on distributors either demanding more industry protection or fighting amongst themselves. It is distributors who make the great financial investments in copyrighted works, and distributors who arguably most need the incentives and protections that the system …

Creative Reading, Jessica D. Litman

Articles

Let me begin with something that Jamie Boyle wrote ten years ago in Intellectual Property Policy Online: A Young Person's Guide:' Copyright marks the attempt to achieve for texts and other works a balance in which the assumption of the system is that widespread use is possible without copying. The relative bundles of rights of the user and the owner achieve their balance based on a set of economic and technical assumptions about the meaning of normal use. For our purposes, I would like to generalize this as something that Boyle might have written if he had not in that …

Who Is Really Undermining The Patent System – “Patent Trolls” Or Congress?, 6 J. Marshall Rev. Intell. Prop. L. 185 (2007), Raymond P. Niro

UIC Review of Intellectual Property Law

“Patent troll” has entered the legal lexicon, stirring up heated debates over fundamental issues of patent rights. This article discusses the etymology of the term “patent troll” —from its beginnings as a deliberately derogatory term thrust forward as a defense to weaken the enforcement of patents against large corporations to its current manifestation as a call for patent reform. Interestingly, statistics show the “patent troll” problem is grossly overstated compared to the contentions of the corporate world. Moreover, enforcement of patents stimulates small business growth, innovation, and dissemination of knowledge to the public. This article suggests Congressional diversion of PTO …

The Federal Circuit's Inducement Conflict Resolution: The Flawed Foundation And Ignored Implications Of Dsu Medical, 6 J. Marshall Rev. Intell. Prop. L. 198 (2007), Eric L. Lane

UIC Review of Intellectual Property Law

After years of uncertainty regarding the level of intent required to prove liability for inducing patent infringement, the Federal Circuit, in DSU Medical Corp. v. JMS Co., finally endorsed the specific intent standard detailed in the court's Manville Sales Corp. v. Paramount Systems, Inc. decision. This article examines the ramifications of DSU Medical Corp., especially in relation to the opinion of counsel defense to willful infringement. This article argues that the Federal Circuit's reliance on Manville Sales and MGM Studios, Inc. v. Grokster was misplaced, and that the adoption of the specific intent standard results in an elevated importance of …

Toward A Pluralistic Theory On An Efficacious Patent Institution, 6 J. Marshall Rev. Intell. Prop. L. 220 (2007), Nari Lee

UIC Review of Intellectual Property Law

Time and time again, scholars have attempted to assess the efficacy of the intellectual property institution; these attempts have created a vast amount of literature. As impressive as the volume of work is that has been generated on this issue, so is the absence of a generally applicable theory of intellectual property, which either claims or disclaims the efficacy of the intellectual property institution. This article questions the existence of a general definition of efficiency that is applicable to the assessment of the patent institution. While it is true that the efficiency as applied to specific cases may be definable …

Post Saddam Restructuring Of Intellectual Property Rights In Iraq Through A Case Study Of Current Intellectual Property Practices In Lebanon, Egypt, And Jordan, 6 J. Marshall Rev. Intell. Prop. L. 250 (2007), Elizabeth Mirza Al-Dajani

UIC Review of Intellectual Property Law

When the United States invaded Iraq in 2003, it did so with the ambitious goal to completely transform an isolationist government into an international democracy. The Coalition forces created laws designed to conform Iraq to international standards, including three Orders tracking the language of the WTO and its IP enforcement mechanism, the TRIPs Agreement. These standards, however, are often inapposite of unique cultural and religious beliefs of an Arab Middle Eastern country that views ideas, concepts, and knowledge as communal. This comment analyzes similarly situated countries in various stages of dealing with the transition and suggests affirmative steps to expedite …

Sarbanes-Oxley: A Dark Cloud Over Intellectual Property And Business, 6 J. Marshall Rev. Intell. Prop. L. 272 (2007), Matthew D. Goodstein

UIC Review of Intellectual Property Law

The Sarbanes–Oxley Act seeks to improve corporate financial reporting and eliminate the frauds and improprieties that spurred the numerous accounting scandals. While Sarbanes–Oxley requires an immense amount of time and effort for compliance, the Act’s application to intellectual property is woefully lacking. This comment proposes that the proper remedy is increased definition within the language of the Act. Additionally, small businesses, whose activities have little effect on the financial markets, should be subject to fewer regulations within Sarbanes–Oxley. Without paring down ambiguous terms and limiting the scope of the Act, corporate officers are left in the dark about what constitutes …

Exculpatory Patent Opinions And Special Problems Regarding Waiver Of Privilege, 6 J. Marshall Rev. Intell. Prop. L. 313 (2007), William L. Lafuze, Matthew R. Rodgers, Michael A. Valek

UIC Review of Intellectual Property Law

When a patent owner alleges another infringed the patent, the owner inevitably also alleges that such infringement is willful. An accused infringer often defends a claim of willful infringement by asserting evidence that the accused infringer reasonably relied on the opinion of counsel. This article discusses the concept of willful infringement and the criteria necessary for an opinion of counsel to be deemed competent. Moreover, this article analyzes issues that arise as a consequence of using such patent opinions, with a special focus on attorney-client privilege and work-product immunity waiver. Finally the practical ways to minimize the problematic aspects of …

Valuation And Assessment Of Patents And Patent Portfolios Through Analytical Techniques, 6 J. Marshall Rev. Intell. Prop. L. 463 (2007), Michael S. Kramer

UIC Review of Intellectual Property Law

Patents today are essential assets for many companies, especially in high technology industries. Valuation of a patent is often essential in reaching an informed business decision on a matter involving technology. However, the inherent uniqueness of a patent typically makes value assessments complex, costly, and susceptible to inaccuracies. This article presents efficient and cost-effective analytical methods for valuing patents and patent portfolios.

A Memoir Of The First Chief Judge By The Fifth Chief Judge, 6 J. Marshall Rev. Intell. Prop. L. 310 (2007), Paul R. Michel

UIC Review of Intellectual Property Law

No abstract provided.

A New Day Yesterday: Benefit As The Foundation And Limit Of Exclusive Rights In Patent Law, 6 J. Marshall Rev. Intell. Prop. L. 373 (2007), N. Scott Pierce

UIC Review of Intellectual Property Law

The exclusive right afforded by patent protection to an inventor is in exchange for contribution to the public domain of an enabling disclosure of the subject matter claimed. The requirement of novelty and the prohibition against infringement are both based on statute, and linked in well-established judicial precedent as “that which infringes, if later, anticipates, if earlier.” See, e.g., Pairpearl Products, Inc. v. Joseph H. Meyer Bros., 58 F.2d 802 (D.C.D.M.S.D. 1932). Grant of a limited period of exclusivity to an inventor and interpretation of the scope of the right given in exchange for complete disclosure have engendered the judicial …

Issues Facing Legal Practitioners In Measuring Substantiality Of Contemporary Musical Expression, 6 J. Marshall Rev. Intell. Prop. L. 489 (2007), Alan Korn

UIC Review of Intellectual Property Law

Modern composers of jazz, avant-garde, hip-hop and world music increasingly rely upon unconventional sounds and advances in recording technology to create new and innovative musical works. As one might expect, courts now face the difficult challenge of applying traditional copyright analysis to these contemporary works to determine whether they embody protectable expression. This article highlights some of the issues specific to innovative musical works and the split among the U.S. Circuit Courts in how to measure the substantiality of these works. Copyright practitioners and composers alike should be aware of these challenges in evaluating the extent of copyright protection for …

A Two-Front Assault On The Stem Cell Patents, 6 J. Marshall Rev. Intell. Prop. L. 501 (2007), Dillon Beardsley

UIC Review of Intellectual Property Law

The recent establishment of human embryonic stem cell lines has inspired a new revolution in therapeutic treatments and cures for injuries or disease. Individual states have begun to circumvent the lack of federal funding by independently raising monetary support for the research. The patentee, The Wisconsin Alumni Research Foundation, has reminded those hoping to benefit from the state funding that the Foundation will require royalties for the commercial use of its patented technology. The loss of state taxpayer money to the patent holder ignited a challenge on the patents themselves. Interest groups requested a reexamination of the stem cell patents …

Will Youtube Sail Into The Dmca's Safe Harbor Or Sink For Internet Piracy?, 6 J. Marshall Rev. Intell. Prop. L. 550 (2007), Michael Driscoll

UIC Review of Intellectual Property Law

Is YouTube, the popular video sharing website, a new revolution in information sharing or a profitable clearing-house for unauthorized distribution of copyrighted material? YouTube’s critics claim that it falls within the latter category, in line with Napster and Grokster. This comment, however, determines that YouTube is fundamentally different from past infringers in that it complies with statutory provisions concerning the removal of copyrighted materials. Furthermore, YouTube’s central server architecture distinguishes it from peer-to-peer file sharing websites. This comment concludes that any comparison to Napster or Grokster issuperficial, and overlooks the potential benefits of YouTube to copyright

A Foreword To: A Panel Discussion On Obviousness In Patent Litigation: Ksr International V. Teleflex, 6 J. Marshall Rev. Intell. Prop. L. 590 (2007), Edward D. Manzo

UIC Review of Intellectual Property Law

In KSR International Co. v. Teleflex Inc., the Supreme Court adhered to its prior views that a constitutional standard applied in determining whether an invention is “obvious.” Further, the Federal Circuit’s teaching-suggestion-motivation (“TSM”) test, which stipulated that an invention is not obvious unless some teaching, suggestion, or motivation to combine the elements of the invention exists, cannot replace or limit the constitutional standard. KSR eliminated the Federal Circuit’s requirement, holding that the TSM test is only one way to find an invention obvious and that a common sense approach should be used. KSR also noted that all persons skilled in …