Intellectual Property Law Commons^™

Why Pay For What's Free?: Minimizing The Patent Threat To Free And Open Source Software, 7 J. Marshall Rev. Intell. Prop. L. 595 (2008), Kirk D. Rowe

UIC Review of Intellectual Property Law

The growing popularity of free and open source software as a viable alternative to proprietary software has made it an unwitting participant in an inevitable intellectual property law confrontation that will pit patent against copyright. Where proprietary software is primarily protected by patents, which seek to exclude others from the use of specific ideas, open source software utilizes a variation of copyright protection, which seeks to force the inclusion rather than the exclusion of third parties’ access to expression. Because these methods of protection are as different as the software models themselves, it is difficult to predict the outcome of …

Copyright Misuses, Fair Use, And Abuse: How Sports And Media Companies Are Overreaching Their Copyright Protections, 7 J. Marshall Rev. Intell. Prop. L. 621 (2008), Cory Tadlock

UIC Review of Intellectual Property Law

A recent FTC complaint has generated questions about the legality and effects of blanket copyright warnings issued by large sports and media companies. Copyright warnings from the NFL, MLB, and major motion picture studios often assert that no use whatsoever of their materials can be made without express permission, contrary to several provisions of U.S. copyright law. This comment proposes limiting the content and language of such warnings so consumers have a clearer view of what copyright law allows, and are not intimidated into foregoing their rights to use protected works. Exceptions like fair use and the idea-expression dichotomy prevent …

Chief Judge Paul R. Michel's Address To The Federal Circuit Judicial Conference On The State Of The Court, 7 J. Marshall Rev. Intell. Prop. L. 647 (2008), Paul R. Michel

UIC Review of Intellectual Property Law

On May 15, 2008, Chief Judge of the United States Court of Appeals for the Federal Circuit Paul R. Michel delivered the annual State of the Court speech. Chief Judge Michel delivered this speech during the Federal Circuit Judicial Conference, held at the Grand Hyatt hotel in Washington. The text of that speech and the corresponding graphics appear here.

Protection Of U.S. Trade Secret Assets: Critical Amendments To The Economic Espionage Act Of 1996, 7 J. Marshall Rev. Intell. Prop. L. 656 (2008), R. Mark Halligan

UIC Review of Intellectual Property Law

In order to protect the economic interests of the United States, the Economic Espionage Act was enacted in 1996. Although intended to prevent and deter trade secret theft, the EEA is limited to criminal prosecutions. Critical amendments to the EEA are required to create a civil cause of action in the new information-based economy and the international marketplace. The following proposed amendments to the EEA provide a federal civil cause of action, allowing companies to protect trade secret assets and to ensure the continued growth and protection of trade secret assets in the international marketplace.

Post-Quanta, Post-Sale Patentee Controls, 7 J. Marshall Rev. Intell. Prop. L. 682 (2008), Harold C. Wegner

UIC Review of Intellectual Property Law

In Quanta Computer, Inc. v. LG Electronics, Inc., the Supreme Court recalibrated the balance between the rights of a patentee to contractually control the post-sale transfer and the use of patented goods. Specifically, the Court extended the doctrine of patent exhaustion to cover the exhaustion of patents not recited in the license, as well as the practice of technology that does not infringe any patent, but which can only be used in a manner by customers that would infringe a patent. While Quanta arose out of facts concerning computer technology, the implications of this decision will be widespread, permeating diverse …

Throwing Judge Bryson's Curveball: A Pro Patent View Of Process Claims As Patent-Eligible Subject Matter, 7 J. Marshall Rev. Intell. Prop. L. 701 (2008), Christopher A. Harkins

UIC Review of Intellectual Property Law

Can a baseball pitcher patent a method of throwing a curveball? On May 8, 2008, Judge Bryson posed that hypothetical as a way of stressing a point during the oral argument of In re Bilski, one of the most highly-attended hearings in the twenty-five year history of the Federal Circuit. In the Bilski case, the Federal Circuit will decide whether to embrace a new patentability test that redefines what is patent-eligible subject matter in the United States, or to create a fourth no-no to patent eligibility. At stake are many computer software patents and business method patents that form the …

Honoring Trademarks: The Battle To Preserve Native American Imagery In The National Collegiate Athletic Association, 7 J. Marshall Rev. Intell. Prop. L. 735 (2008), Ian Botnick

UIC Review of Intellectual Property Law

On August 5, 2005, the National Collegiate Athletic Association introduced its plan to end the use of Native American mascots, nicknames and imagery. Schools were required to change their offensive nicknames and mascots and were forced to stop using trademarks bearing Native American imagery. The NCAA ban presents the question of whether schools affected by the ban can bring a trademark action against the NCAA. One interpretation of trademark law provides a school with no redress because the NCAA has not created a competing mark. However, the other interpretation of trademark law provides a school with a valid trademark claim …

Must The Jury Reach A Verdict? The Constitutionality Of Eliminating Juries In Patent Trials By Creating An Article I Tribunal, 7 J. Marshall Rev. Intell. Prop. L. 754 (2008), Daniel P. Sullivan

UIC Review of Intellectual Property Law

The February 2007 jury verdict against Microsoft totaling $1.52 billion marked the largest in a patent case ever, following the prevailing trend of juries awarding extraordinarily high damages. Because patent law deals with complex technology and complicated issues of fact and law, and because empirical evidence concludes that juries have significant biases in favor of patentees and against alleged infringers, this comment calls into question whether or not twelve lay persons are sufficiently equipped to handle patent trials. In lieu of juries rendering verdicts in patent trials – and even in lieu of U.S. District Court judges adjudicating patent trials …

The Uneven Application Of Twombly In Patent Cases: An Argument For Leveling The Playing Field, 8 J. Marshall Rev. Intell. Prop. L. 1 (2008), R. David Donoghue

UIC Review of Intellectual Property Law

The Supreme Court's recent Twombly decision has tightened pleading standards by retiring Conley v. Gibson’s “no set of facts” language. While Twombly has been applied beyond antitrust law, its impact on patent pleadings is not yet settled. Currently, a troubling dichotomy has emerged: lower courts are holding defendants to a heightened pleading standard for affirmative defenses and counterclaims, while allowing plaintiffs to continue the pre-Twombly “bare-bones” pleadings practice. This dichotomy is inconsistent with the Twombly Court’s goal of controlling the ballooning size of and costs of complex civil litigation. Holding patent plaintiffs to a heightened pleading standard would be at …

What The Story Of The Invention Of The Transistor Teaches Us About 21st Century Patent Practice, 8 J. Marshall Rev. Intell. Prop. L. 80 (2008), Lawrence B. Ebert

UIC Review of Intellectual Property Law

In 1947, scientists at Bell Laboratories internally disclosed a remarkable new invention that would later become known as the “transistor.” Following the initial disclosure, Bell Labs methodically planned and facilitated the patenting, publication, and licensing of this new technology. The manner in which Bell Labs handled the disclosure and licensing of this pioneering invention provides a template that present-day inventors would be well-advised to emulate.

Sacking Super Sack: Using Existing Rules To Prevent Patentees From Fleeing An Improvident Patent Infringement Lawsuit, 8 J. Marshall Rev. Intell. Prop. L. 90 (2008), Vangelis Economou

UIC Review of Intellectual Property Law

The Federal Circuit’s Super Sack decision is striking: a patentee’s covenant-not-to-sue for infringement divested the court of subject-matter jurisdiction in deciding the invalidity counterclaim. However, the intent and spirit of the Declaratory Judgment Act and of Federal Rule of Civil Procedure 41(a)(2) suggest that Super Sack may have missed the mark. An in-depth analysis of the Declaratory Judgment Act, Federal Rule of Civil Procedure 41(a)(2), and post-Super Sack patent cases reveals numerous policy reasons for the Federal Circuit to overturn Super Sack.

The Computer Fraud And Abuse Act: A Vehicle For Litigating Trade Secrets In Federal Court, 8 J. Marshall Rev. Intell. Prop. L. 155 (2008), Graham M. Liccardi

UIC Review of Intellectual Property Law

Federal jurisdictions are split on the reach of the Computer Fraud and Abuse Act (“CFAA”) in situations where computer-stored trade secrets are stolen by former employees who possessed authorization to access and use the trade secret information. This comment explores both the broad and narrow interpretations of the CFAA. It proposes that courts adopt the broad interpretation, which includes principles of agency law, in order to determine when an employee is “without authorization” under the CFAA. Courts should also adopt the broad interpretation in situations where trade secrets are stolen because an employee is only granted a “limited license” to …

An Immoral Fight: Shielding Moral Rights With First Amendment Jurisprudence When Fair Use Battles With Actual Malice, 8 J. Marshall Rev. Intell. Prop. L. 190 (2008), Mark A. Petrolis

UIC Review of Intellectual Property Law

Moral rights give an artist personal rights to her work. Because an artist puts her personality, spirit, and soul into the creation of her work, her honor and reputation may be harmed if her works are mistreated. In 1990, the Visual Artists Rights Act incorporated moral rights into U.S. copyright law. However, fair use became an absolute defense to moral rights violations. This comment proposes that fair use should not be an absolute defense, and applies First Amendment jurisprudence developed from defamation law to both fair use and moral rights. Defamation shares similarities with both. Like moral rights, defamation law …

The Curse Of "Copying", 7 J. Marshall Rev. Intell. Prop. L. 296 (2008), Kenneth R. Adamo, Ryan B. Mccrum, Susan M. Gerber

UIC Review of Intellectual Property Law

The concept of “copying” has long been involved with various aspects of intellectual property law, particularly in regard to patents and trademarks. In the absence of legally determined exclusive rights, “copying” is permitted, and is in fact, encouraged. However, because the term “copying” carries an undercurrent of disapproval and unfavorable practices, it is a favorite of patentees looking to portray an accused infringer in the most negative light, especially before a jury. Hence, the curse of “copying.” This article will review the current state of “copying” by addressing the substantive precedent in areas where “copying” has traditionally had a substantive …

Feca Matter: An Epic Copyright Infringement Trial, Congressional Interference, And The Diminution Of Moral Rights In The United States Of America, 7 J. Marshall Rev. Intell. Prop. L. 376 (2008), Jacob Armstrong

UIC Review of Intellectual Property Law

Film directors suffered a setback in their collective efforts to maintain the integrity of their films after they are released to the public. In 2005, Congress passed the Family Entertainment Copyright Act, which contained the Family Movie Act, a piece of safe harbor legislation designed to save certain businesses and business practices from ongoing litigation. This Act was not only legislative interference with an ongoing trial, but also served to remove the topic of moral rights from public dialogue. Repealing the Family Movie Act would be a step towards affording directors the ability to prevent misattribution and mutilation of their …

Making A Federal Case For Copyrighting Stage Directions: Einhorn V. Mergatroyd Productions, 7 J. Marshall Rev. Intell. Prop. L. 393 (2008), Jennifer J. Maxwell

UIC Review of Intellectual Property Law

To date, no court has ruled on whether stage directions are copyrightable. Einhorn v. Mergatroyd Productions is the most recent case to directly address the copyrightability of stage directions and blocking scripts. However, the court was unable to decide the copyright issue because both parties to the suit failed to address a series of questions necessary to the resolution of the claim. Nonetheless, the Einhorn decision gives hope to future directors because it highlights the issues crucial to proving a case of copyright infringement of stage directions. This comment advocates for the copyright protection of stage directions that fulfill the …

Patents Of Damocles, Christopher R. Leslie

Indiana Law Journal

No abstract provided.

The Social Contract And Authorship: Allocating Entitlements In The Copyright System., Alina Ng

Journal Articles

No abstract provided.

Patients Without Borders: The Emerging Global Market For Patients And The Evolution Of Modern Health Care, Nathan Cortez

Indiana Law Journal

No abstract provided.

Combining The Components Of Life: The Application Of Patent Extraterritoriality Doctrine To Biotechnology, Jennifer L. Schuster

Indiana Law Journal

No abstract provided.

Noncompliance, Nonenforcement, Nonproblem? Rethinking The Anticommons In Biomedical Research, Rebecca S. Eisenberg

Articles

A decade ago the biomedical research community was sounding alarm bells about the impact of intellectual property (IP) rights on the ability of scientists to do their work. Controversies and delays in negotiating terms of access to patented mice and genes, databases of scientific information, and tangible research materials all pointed toward the same conclusion: that IP claims were undermining traditional sharing norms to the detriment of science. Michael Heller and I highlighted one dimension of this concern: that too many IP rights in "upstream" research results could paradoxically restrict "downstream" research and product development by making it too costly …

Just What The Doctor Ordered: A Two-Step Standard For Pharmaceutical Patent Settlements, George A. O'Brien

Journal of Business & Technology Law

No abstract provided.

Accommodating The Needs Of Iconsumers: Making Sure They Get Their Money’S Worth Of Digital Entertainment, Lucie Guibault

Articles, Book Chapters, & Popular Press

The current methods of distributing music and film on the mass-market, either off-line or on-line, raise two types of consumer protection issues. First, consumers are not always in a position to know what they can and cannot do with their digital hardware and content. A lack of proper information and the ensuing failure of the products to meet the consumer’s expectations inevitably leads to discontent. In addition, as weaker party in the transaction, consumers have often no other choice but to accept or refuse the restrictive terms of use, even if these could be regarded as unfair. This paper examines …

Asking For Money Back - Chilling Commercialization Or Recouping Public Trust In The Context Of Stem Cell Research?, Matthew Herder

Articles, Book Chapters, & Popular Press

As publicly funded institutions have increasingly embraced the goal of commercializing scientific research, concerns about private appropriation have become familiar refrain. One commonly suggested remedy is to create some kind of 'recoupment' provision whereby the State, on behalf of the public, receives a certain percentage of profits realized. The Bayh-Dole Act originally included a recoupment provision but it was deleted by a legislative committee. Countries around the globe attempting to emulate Bayh-Dole have, whether by design or default, reinforced the underlying logic against recoupment, which is essentially as follows: obligations to provide direct financial returns undermine the commercialization process and …

On The Importance Of Intellectual Property Rights For E-Science And The Integrated Health Record, Giuseppina D'Agostino, Chris Hinds, Marina Jirotka, Charles Meyer

Articles & Book Chapters

An integrated health record (IHR) that enables clinical data to be shared at a national level has profound implications for medical research. Data that have been useful primarily within a single clinic will instead be free to move rapidly around a national network infrastructure. This raises challenges for technologists, clinical practice, and for the governance of these data. This article considers one specific issue that is currently poorly understood: how intellectual property (IP) relates to the sharing of medical data for research on large-scale electronic networks. Based on an understanding of current practices, this article presents recommendations for the governance …

"See Me, Feel Me, Touch Me, Hea[R] Me" (And Maybe Smell And Taste Me, Too): I Am A Trademark – A Us Perspective, Jane C. Ginsburg

Faculty Scholarship

The preceding chapter, “Between a sign and a brand,” addresses the current law in the UK and the EU regarding which signs can be a registered trademark, and the scope of protection a trademark receives. Jennifer Davis also considers the extent to which that scope does or should cover the more ineffable subject matter of “brand values.” This comment from the perspective of United States trademark law will follow a similar plan. It first will address what is (and is not) a trademark, focusing on the extensions of trademarks beyond traditional word marks and design marks (logos; trade dress [get-up]) …

Recording Artists, Work For Hire, Employment, And Appropriation, Matt Stahl

Studio for Law and Culture

Authorship and ownership exist in a curious relation in U.S. copyright law. In theory and common sense, authorship underwrites and is the condition of ownership, but in practice ownership can establish authorship retroactively. Distinctions between proprietary and non-proprietary creative cultural workers, in this view, turn in no essential way on evidence of “creativity” or the investment of “personality” in cultural creation. This paper examines a legislative struggle between recording artists and the recording industry over the status of their stock-in-trade, sound recordings. In 2000, recording artists obtained the repeal of a 1999 law allocating authorship and ownership of recordings to …

The Need For Speed (And Grace): Issues In A First-Inventor-To-File World, Margo A. Bagley

Faculty Articles

“One is the loneliest number that you’ll ever do.” This lyric applies to the United States which, since 1998, stands alone among the world’s patent systems in awarding patents to the first person to invent a claimed invention (first to invent, or “FTI”) as opposed to the first inventor to file an application claiming the invention (“FITF”). But its lonely days may soon be over: a provision in pending patent reform legislation will (if passed) move the United States from FTI to FITF and end its solitary stance.

Some argue that the U.S. already has a de facto FITF system, …

Intellectual Property And Alternatives: Strategies For Green Innovation, Jerome H. Reichman, Arti K. Rai, Richard G. Newell, Jonathan B. Wiener

Faculty Scholarship

This report provides an analysis of how intellectual property rights (IPRs), and alternatives to IPRs, might operate in green innovation. Part I of the paper discusses the economics of green innovation, including the important role that will need to be played by the private sector. Part II discusses the IPR issues, principally involving patents, that may arise if and when GHG externalities are addressed through the appropriate pricing of greenhouse gases. Part III addresses alternatives to traditional patents and exclusive licenses, including patent pools, liability rules, and prizes.

Choosing Metaphors, Jessica Litman

Book Chapters

The copyright law on the books is a large aggregation of specific statutory provisions; it goes on and on for pages and pages. When most people talk about copyright, though, they don't mean the long complicated statute codified in title I7 of the U.S. Code. Most people's idea of copyright law takes the form of a collection of principles and norms. They understand that those principles are expressed, if sometimes imperfectly, in the statutory language and the case law interpreting it, but they tend to believe that the underlying principles are what count. It is, thus, unsurprising that the rhetoric …