Intellectual Property Law Commons^™

The Public's Domain In Trademark Law: A First Amendment Theory Of The Consumer, Laura A. Heymann

Georgia Law Review

First Amendment theories of trademark law tend to focus on the need of speakers to employ trademarks in creating new speech-in parodies, comparative advertising, and other communicative endeavors. An alternative use of the First Amendment in trademark law, however, would focus on the rights of consumers to autonomy as they make choices about how to respond to trademark meaning. First Amendment doctrine in other areas of the law involving persuasive communications provides useful material on which to draw when constructing the autonomous consumer. With that consumer more fully realized, modern expansions of trademark law, such as dilution and initial interest …

Protecting Intellectual Property In China: A Selective Bibliography And Resource For Research, Robert H. Hu

Faculty Articles

This bibliography is intended to help American law students, attorneys, legal scholars, and law librarians to conduct research on Chinese intellectual property law, a topic of increasing importance, both theoretically and practically. The bibliography gathers books, book chapters, and law review articles to facilitate research in this subject area. Selected web sites are included to aid easy access to the Chinese IP laws, regulations, cases, and other relevant information.

International Legal Protection Of Trademarks In China, Robert H. Hu

Faculty Articles

This article addresses major trademark-related international regimes in which China participates. The article discusses the Chinese obligations under certain international treaties and agreements, both multilateral and bilateral, and use some Chinese court decisions to illustrate how these obligations are fulfilled in its judicial practice. Finally, the article provides an assessment of the effectiveness of these international regimes in China and offers observations on future development in protection through better enforcement. Three arguments are made: (1) International trademark law is taking roots in China; (2) China is taking its international obligations to protect trademarks seriously, and it has achieved much in …

The Flawed Nature Of The False Marking Statute, Elizabeth I. Winston

Scholarly Articles

In 2005, the United States Court of Appeals for the Federal Circuit rendered a decision on an “issue of first impression” interpreting a one hundred sixty-three year old provision of the United States Code - the “false marking” statute embodied in 35 U.S.C. § 292. It is false marking to mark as patented an unpatented article if done with the intent to deceive the public and, as such, is a fineable offense. The false marking statute remains one of only a handful of qui tam actions left intact from a rich history of varied incentives provided by the government for …

Introduction: Intellectual Property In The Age Of The Internet, Susanna Frederick Fischer

Scholarly Articles

No abstract provided.

Patenting Games: Baker V. Selden Revisited, Shubha Ghosh

Vanderbilt Journal of Entertainment & Technology Law

Patents are meant to protect the functional aspects of an invention. But patents, particularly patents on processes or methods, can cover non-functional, or expressive, activity. This Article explores this possibility in the context of patents covering games of various types. Patents on games can cover the actual play or use of a game with consequent implications for user-generated content produced by playing games. The Article documents this possibility in the area of fantasy sports and video games and proposes two solutions. The first solution relies on the Federal Circuit's recent decision in In "re Bilski," which restricts the patenting of …

Mass Culture And The Culture Of The Masses: A Manifesto For User-Generated Rights, Debora Halbert

Vanderbilt Journal of Entertainment & Technology Law

User-generated content is a term used to describe the division between culture produced as a commodity for consumption and the culture that is generated by people acting as creative beings without any market incentive. While under current copyright law all types of creativity are protected, the laws of copyright exist primarily to protect commercial forms of expression, not the non-commercial ones that form the foundation of user-generated content. The disconnect between what current copyright law protects and how most people create generates tensions that must be addressed. This Article presents an argument for broader protection of all creative work, including …

"Transformative" User-Generated Content In Copyright Law: Infringing Derivative Works Or Fair Use?, Mary W.S. Wong

Vanderbilt Journal of Entertainment & Technology Law

In the United States, the line between the type and level of transformation required for a copyrightable derivative work and that required to constitute fair use has not been drawn clearly. With the rise of user-generated content, this question (which arises in two distinct copyright contexts) has become even more important. At the same time, copyright law has generally shied away from defining authorship as a legal concept, preferring instead to develop and rely on the related (but not identical) concept of originality. This has resulted in a low copyrightability threshold that does not adequately account for the fact that …

Applying Old Theories To New Problems: How Adverse Possession Can Help Solve The Orphan Works Crisis, Megan L. Bibb

Vanderbilt Journal of Entertainment & Technology Law

This Note focuses on orphan works--works whose copyright owners cannot be found--and the problems they create for libraries and archives that wish to preserve and facilitate access to them. After describing the legal basis for the orphan works problem, the Note analyzes and critiques proposed legislative and scholarly solutions. After concluding that prior solutions fail to adequately address the needs of libraries and archives, the Note offers a solution based on the policy rationales underlying the traditional property concept of adverse possession, since the justifications that supported the advent of the adverse possession doctrine can also be applied to the …

Information May Want To Be Free, But Information Products Do Not: Protecting And Facilitating Transactions In Information Products, Kristen Jakobsen Osenga

Law Faculty Publications

Information products-products that are used to organize, provide context, and distribute information-have gone largely unprotected by intellectual property regimes. As a result, producers of information products, such as databases and software, have resorted to alternative mechanisms to protect their investments. These mechanisms have resulted in both over-protection and under-protection of the information products. Further, the uncertainty in the boundaries of coverage, coupled with the resort to self-help mechanisms, may well inhibit, rather than facilitate, information flow. What is needed is a sui generis protection scheme for information products that clearly defines the boundaries and protection requirements for these works and …

Describing Patents As Real Options, Christopher A. Cotropia

Law Faculty Publications

This Article continues the use of real options in patent law by taking a step back. The Article proceeds in three parts. Part II describes the concept of real options and catalogs the existing economics and law literature discussing patents as real options. The Article then lays a foundation for previous and future discussions by describing in detail how patents are like real options. Specifically, Part III. identifies the particular patent doctrines that make up the common components of a real option-the option price, the exercise price, the expiration date, and the value of the underlying asset. This descriptive analysis …

The Unreasonableness Of The Patent Office's 'Broadest Reasonable Interpretation' Standard, Christopher A. Cotropia

Law Faculty Publications

This article does what is long overdue: it fully explores the validity of the BRI standard. The previously articulated rationales behind the BRI standard are severely lacking. Not only does the BRI standard fail to provide the advantages touted by the courts that created the standard, the standard is contrary to both the patent statutes and the concept of a unitary patent system. It allows examiners to avoid difficult claim interpretation issues; it leads to improper and uncorrectable denials of patent protection; and it is incurably ambiguous. Given that the BRI standard is severely lacking, the courts and the USPTO …

Copying In Patent Law, Christopher A. Cotropia

Law Faculty Publications

Patent law is virtually alone in intellectual property (IP) in punishing independent development. To infringe a copyright or trade secret, defendants must copy the protected IP from the plaintiff, directly or indirectly. But patent infringement requires only that the defendant's product falls within the scope of the patent claims. Not only doesn't the defendant need to intend to infringe, but the defendant may be entirely unaware of the patent or the patentee and still face liability. Nonetheless, copying does play a role in some subsidiary patent doctrines, including damages rules, willfulness, and obviousness. More significantly, the rhetoric of patent law …

Modernizing Patent Law's Inequitable Conduct Doctrine, Christopher A. Cotropia

Law Faculty Publications

This Article's main finding is that the inequitable conduct doctrine has the ability to improve patent quality as long as the inherent tendency to overcomply with the doctrine by overloading the USPTO with information is kept in check. The Article reaches this conclusion by proceeding in five parts. Part II describes the current thinking on the inequitable conduct doctrine, with particular focus on the major critiques of the doctrine and proposed legislative and administrative responses. Part III of the Article begins the construction of a fundamental, conceptual framework for the doctrine by explaining how it impacts both patent quality and …

Copyright As Censorship - Part I, James Gibson

Law Faculty Publications

2010 marks the 300th anniversary of the Statute of Anne, the English legislation that ushered in the modern era of copyright law. The Statute of Anne is celebrated for a number of reasons, and perhaps foremost among them is its rejection of copyright as an instrument of censorship.

Before Parliament enacted the Statute, the distribution of books was controlled by the government through royal charters, which granted monopolies over printing and empowered the chartered firms to seize unauthorized books and bring their publishers before the courts. The Statute of Anne put an end to this practice and replaced it with …

The Case For (Considering) Regulation Of Technology, James Gibson

Law Faculty Publications

Given a choice, which would you prefer: A world in which it is easier to encrypt information than to decrypt it? A world in which decryption is easier than encryption? A world in which the two stand in a cost/benefit equipoise?

When the question is put like that, the answer seems to depend on how we weigh certain core values. For example, if we prefer privacy over order, we might prefer the first world. If we value order more than privacy, perhaps the second world is more to our liking.

As it happens, we live in the first world. Modern …

A Tale Of Two Development Agendas, Peter K. Yu

Faculty Scholarship

In October 2004, Argentina and Brazil introduced a proposal to establish the WIPO Development Agenda. Although scholars have focused primarily on this agenda, as well as the WTO Doha Development Agenda, development agendas have also been established at other international fora, such as those governing public health, human rights, biological diversity, food and agriculture, and information and communications. Interestingly, these development agendas bear strong resemblances to another set of development agendas less developed countries advanced in the 1960s and 1970s. Bringing together these two sets of development agendas, this article examines whether the present agenda can avoid the path of …

The Global Intellectual Property Order And Its Undetermined Future, Peter K. Yu

Faculty Scholarship

As an introduction to the inaugural issue of the new WIPO Journal, this essay highlights some of the key recent developments in the intellectual property field. The essay begins by discussing the increasingly complex, and at times incoherent, international legal order governing the protection and enforcement of intellectual property rights. It shows how much the system has been transformed since the launch of the Paris and Berne Conventions in the 1880s.

The essay then examines the increasingly polarized debate on intellectual property law and policy. Although the debate’s growing divisiveness is understandable, given the rapid expansion of intellectual property rights …

Catholic Social Teaching, The Rule Of Law, And Copyright Protection, Susanna Frederick Fischer

Scholarly Articles

The rule of law is currently under grave threat in cyberspace. Even as copyright laws have been strengthened in many ways in response to new digital technologies, these laws are widely disrespected and cannot be effectively enforced against all those who willfully flout them. The legislative response has been to strengthen copyright laws more and more, including expanding copyrightable subject matter, giving copyright owners new rights, and lengthening the copyright term. One example is the Copyright Term Extension Act of 1998. This amendment to federal copyright law retroactively extended the duration of copyright protection by twenty years. The judicial response …

The Sony Legacy: Secondary Liability Perspectives, Robert I. Reis

Journal Articles

No abstract provided.

Copyright, Trademark And Secondary Liability After Grokster, Mark Bartholomew

Journal Articles

Even though secondary infringement doctrine in both copyright and trademark stems from the same common law starting points, the doctrines have moved in very different directions, particularly in the last decade. As copyright litigants expanded their litigation strategy to include online intermediaries, secondary copyright liability was stretched to encompass a wider array of defendants with increasingly tangential relationships to the direct infringer. Meanwhile, even though similar online threats jeopardized the ability of trademark holders to safeguard their brands' goodwill, courts refused to implement a similar expansion for secondary trademark liability. Although courts are aware of this doctrinal double standard, they …

Contributory Infringers And Good Samaritans, Mark Bartholomew

Journal Articles

The introduction of online technologies has put increased pressure on the doctrine of contributory infringement as intellectual property rights holders switch their attention from direct infringers to Internet intermediaries. The Supreme Court has instructed lower courts to evaluate contributory infringement in light of traditional tort law. The common law of aiding and abetting, however, is so inconsistent as to offer no real guidance. A better approach lies in a separate but related area of tort doctrine. In a limited number of circumstances, tort law recognizes a duty to protect third parties from the actions of others. Like aiding and abetting, …

Cops, Robbers, And Search Engines: The Questionable Role Of Criminal Law In Contributory Infringement Doctrine, Mark Bartholomew

Journal Articles

Online technologies have created a new litigation locus for intellectual property rights holders, one that targets intermediaries, not direct infringers. This unprecedented litigation strategy has put sudden pressure on the courts to evaluate the liability of indirect infringers. Without a developed body of precedent at their disposal, judges have resorted to analogies from the criminal law of accomplice liability to set the boundaries of contributory infringement. Does it make sense for intellectual property regulation to depend on the same principles that animate criminal law? This Article maintains that it would be a mistake to remake contributory infringement law in criminal …