Intellectual Property Law Commons^™

Living With Patents: Insights From Patent Misuse, Vincent Chiapetta

Marquette Intellectual Property Law Review

The Author argues that the patent misuse doctrine should be eliminated. Created almost a century ago as a response to patent power, it has now not only outlived its purpose but causes affirmative harm. Other more nuanced approaches, including antitrust law, produce superior results. Although the Federal Circuit has contained the doctrine, it cannot overrule Supreme Court misuse precedent. Accordingly, the Court should abolish the doctrine at the earliest opportunity or, failing prompt action, Congress should add the matter to its ongoing patent reform agenda. The misuse experience also provides valuable insights regarding how we can appropriately live with our …

Emerging Scholars Series: A Sui Generis Regime For Traditional Knowledge: The Cultural Divide In Intellectual Property Law, J. Janewa Oseitutu

Marquette Intellectual Property Law Review

Traditional knowledge can be protected, to some extent, under various intellectual property laws. However, for the most part, there is no effective international legal protection for this subject matter. This has led to proposals for a sui generis regime to protect traditional knowledge. The precise contours of the right are yet to be determined, but a sui generis right could include perpetual protection. It could also result in protection for historical communal works and for knowledge that may be useful but that is not inventive according to the standards of intellectual property law. Developing countries have been more supportive of …

Twitter Or Tweeter: Who Should Be Liable For A Right Of Publicity Violation Under The Cda?, Kristina M. Sesek

Marquette Intellectual Property Law Review

The Communications Decency Act (CDA), passed in 1996, immunized Internet service providers (ISPs) from being treated as the publisher or speaker of any information posted on their website by another person and from possible subsequent liability. The CDA also carved out an exemption for violations of intellectual property‹meaning an ISP could still be liable for information posted on their website by another person that violates an intellectual property right. However, the CDA did not spell out whether it intended to include only federal intellectual property rights or both federal and state intellectual property rights.

This Comment proposes two possible reasons …

The Performance Rights Act: A Lack Of Impact On A Transitioning Music Industry, Michael C. Yeh

Marquette Intellectual Property Law Review

The music industry is in a decline. Music sales are not creating the same profits as before, and rather than change or adapt, record labels are petitioning the legislature to create new modes of revenue. One way the music industry is petitioning the legislature to add a new source of revenue, without changing its archaic business model, is by pushing Congress to pass the Performance Rights Act. This Act proposes that analog radio stations pay musicians and artists royalties to play their songs on the air, just like on digital radio. While the Performance Rights Act looks great on the …

Can The Patent Office Be Fixed?, Mark A. Lemley

Marquette Intellectual Property Law Review

The Patent and Trademark Office (PTO) finds itself caught in a vise. On the one hand, it has been issuing a large number of dubious patents over the past twenty years, particularly in the software and electronic commerce space. It issues many more patents than its counterparts in Europe and Japan; roughly three-fourths of applicants ultimately get one or more patents, a higher percentage than in other countries. Complaints about those bad patents are legion, and indeed, when they make it to litigation, they are quite often held invalid. Even the ones that turn out to be valid are often …

Intellectual Property Colloquium Series: Canada And The Three-Step Test: A Step In Which Direction?, Ysolde Gendreau

Marquette Intellectual Property Law Review

In her lecture, Prof. Gendreau discusses the relationship between Canada and the United States when it comes to Copyright law. More specifically, Prof. Gendreau discusses the concept of fair dealing in education in Canada, and then discusses the Canadian provision in the context of international treaties, in particular the TRIPS Agreement and the Berne Convention.

Coercion Will Not Protect Trademark Owners In China, But An Understanding Of China's Culture Will: A Lesson The United States Has To Learn, Dalila Hoover

Marquette Intellectual Property Law Review

China remains the single largest producer of pirated and counterfeit goods in the world. The purpose of this article is to explore the different factors that have impeded effective trademark protection in China. In particular, this article analyzes the cultural barriers between the United States and China, and in doing so, helps one understand the climate of hostility between the two nations when it comes to trademark enforcement. This article further analyzes the constant pressure exercised by the United States against China, which has led to the adoption of trademark laws by the Chinese government at the national and international …

Acta Fool Or: How Rights Holders Learned To Stop Worrying And Love 512’S Subpoena Provisions, Colin E. Shanahan

Marquette Intellectual Property Law Review

This comment argues against the adoption of the proposed Anti-Counterfeiting Trade Agreement. Specifically, that the ACTA provision establishing “[p]rocedures enabling right holders who have given effective notification of a claimed infringement to expeditiously obtain information identifying the alleged infringer” should not extend the current subpoena provisions of 17 USC § 512(h) to encompass p2p networks. The Comment discusses the current U.S. law and cases, why the rights holders want the ACTA Agreeement and argues why the ACTA agreement should not be adopted.

Table Of Contents

Marquette Intellectual Property Law Review

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A Sui Generis Regime For Traditional Knowledge: The Cultural Divide In Intellectual Property Law, J. Janewa Oseitutu

Faculty Publications

To some extent, traditional knowledge can be protected under various intellectual property laws, but there is no effective international legal protection for this subject matter. This has led to proposals for a sui generis regime to protect traditional knowledge. The precise contours of the right are yet to be determined but a sui generis right could include perpetual protection. It could also result in protection for historical communal works and for knowledge that may be useful but that is not inventive according to the standards of intellectual property law.

Developing countries have been more supportive of an international traditional knowledge …

Can Law Improve Prevention And Treatment Of Cancer?, Roger Magnusson, Lawrence O. Gostin, David Studdert

O'Neill Institute Papers

The December 2011 issue of Public Health (the Journal of the Royal Society for Public Health) contains a symposium entitled: Legislate, Regulate, Litigate? Legal approaches to the prevention and treatment of cancer. This symposium explores the possibilities for using law and regulation – both internationally and at the national level – as the policy instrument for preventing and improving the treatment of cancer and other leading non-communicable diseases (NCDs). In this editorial, we argue that there is an urgent need for more legal scholarship on cancer and other leading NCDs, as well as greater dialogue between lawyers, public health practitioners …

Access To Digital Information: Gift Or Right?, Margaret Ann Wilkinson

Law Publications

The 21st century started with a bang, at least from the perspective of the widespread adoption of information technologies, and market hype for overvalued technology stock. There was a second bang shortly afterwards, when the bubble burst. We are now entering a period of greater stability for the appreciation of information technology in society, as well as sustained development, albeit in a financial environment that has become uncertain. This collection of essays addresses some of the issues that face our society in deciding how best to handle access to, and monopolies over, knowledge. It includes detailed examination of the social, …

The Ncaa And The Right Of Publicity: How The O'Bannon/Keller Case May Finally Level The Playing Field, Julia Brighton

UC Law SF Communications and Entertainment Journal

This note explores the potential impact of litigation pending against the National Collegiate Athletic Association ("NCAA"), the national governing body that.oversees college sports. The NCAA and its licensing partners make enormous profits from the sale of collegiate-branded merchandise. College athletes, on the other hand, are prevented from making money from commercial use of their names and likenesses by the NCAA's strict rules regarding amateurism. Former collegiate stars Ed O'Bannon and Sam Keller have accused the NCAA of profiting beyond the bounds of fairness by securing for itself and its member universities the exclusive right to all of the proceeds from …

I Can Has Lawyer? The Conflict Between The Participatory Culture Of The Internet And The Legal Profession, Lucille A. Jewel

UC Law SF Communications and Entertainment Journal

The Internet allows citizens to comment on public affairs with an amplified and unfiltered voice, creating an open, community-based "participatory culture" where robust debate flourishes. However, many of the ideals and practices of participatory culture clash with the traditional legal culture as it exists in the United States. This cultural conflict can be seen in emerging narratives, in the form of web blogs and lawyer emails that go "viral," in which lawyers comment on the lack of humanism within big law firm hiring and firing practices; expose the alienating work environments experienced by low-level contract attorneys; or criticize judges who …

Cultural Losses And Cultural Gains: Ethical Dilemmas In Wwii-Looted Art Repatriation Claims Against Public Institutions, Erin L. Thompson

UC Law SF Communications and Entertainment Journal

Alongside their campaign of physically exterminating the Jewish population of Europe, the Nazis carried out a highly organized plan of cultural genocide which involved the confiscation or forced sale of hundreds of thousands of pieces of art. Although a sizable number of these works were returned to their owners or their heirs by the Allied forces after the war, many disappeared into the hands of private possessors. Many remain hidden in private collections, but a number of these artworks were given to or purchased by museums or other public institutions. In recent decades, the heirs of Holocaust victims have been …

Is Your Furniture Spying On You?: Covert Use Of Gps In Advertising, Brandy Worden

UC Law SF Communications and Entertainment Journal

Advancements in technology have been paired with advertising. The result is personalized, but at times intrusive, advertising tactics. The Note uses an advertising campaign titled "The Real Good Experiment" ("the Experiment") as a case study to examine how advertising invades our personal spheres, and also how the legal framework should be fortified to protect consumer privacy.

The subjects of the Experiment brought furniture that had been seemingly abandoned into their homes only to later discover that the furniture had GPS devices hidden within them. The Note considers various categories of legal protection available when advertising invades consumer privacy. The Note …

Effective Reader Privacy For Electronic Books: A Proposal, Jennifer Elmore

UC Law SF Communications and Entertainment Journal

Historically, reader privacy has been heavily protected in the United States. Numerous library laws, bookstore laws, and Supreme Court opinions have affirmed and upheld reader privacy for traditional paper books. However, electronic readers and electronic books are becoming increasingly popular. These new devices are undoubtedly beneficial; however, with this new technology comes increased privacy concerns. The electronic format allows the reading and purchasing habits of consumers to be tracked in a way that was formerly impossible with traditional books. Electronic readers often track which books are purchased, which pages are read, and more. Additionally, the laws that apply to traditional …

File Sharing Is Dead! Long Live File Sharing! Recent Developments In The Law Of Secondary Liability For Copyright Infringement, Christian E. Mammen

UC Law SF Communications and Entertainment Journal

In the past several years, courts have issued a number of rulings on the issue of online service providers' secondary liability for copyright infringement in connection with online file sharing. Overall, it appears that the larger, more established providers who "play fair" with content owners tend to fare better than brasher, more rebellious providers. Is this correct because more rebellious providers are guiltier than the established ones? Or is there a double standard at play? Could the brash, rebellious "bad guys" ever win the protection of the safe harbor? It is difficult to make a direct apples-to-apples comparison, because each …

Facebook And Social Networks: The Government’S Newest Playground For Information And The Laws That Haven’T Quite Kept Pace, Danielle Levine

UC Law SF Communications and Entertainment Journal

With the rise of social networking sites such as Facebook, individuals are sharing information about themselves at alarming rates. With such copious amounts of personal information on the Internet, it is unsurprising that the government is using social networking sites to gain access to data for use in criminal investigations and prosecutions. This paper examines the ways in which social networking sites and the government's search for information collide. Part I looks at Facebook and discusses the ways the government has used Facebook and similar social networking sites in its investigations. Part II outlines the statutory framework through which the …

The Impact Of The Biosimilars Provision Of The Health Care Reform Bill On Innovation Investments, 10 J. Marshall Rev. Intell. Prop. L. 553 (2011), Katherine N. Addison

UIC Review of Intellectual Property Law

The Biologics Price Competition and Innovation Act of 2009 provides an abbreviated FDA approval pathway for biosimilars. The passage of this biosimilar legislation is a positive step toward retaining a robust biotechnology industry in the United States while also protecting innovators. The Act’s increased FDA exclusivity is welcome, but FDA exclusivity alone is insufficient to encourage and protect innovation and investment in biosimilars. Instead, the exclusivity provided by a patent term, together with the ability to adjust this term to compensate an applicant for U.S. Patent and Trademark Office and FDA delays, is necessary to ensure development of highly specialized …

Caveat Bibliotheca: The First Sale Doctrine And The Future Of Libraries After Omega V. Costco, 11 J. Marshall Rev. Intell. Prop. L. 414 (2011), Thomas J. Bacon

UIC Review of Intellectual Property Law

Having discovered that several of its watches, which were manufactured in Europe, were imported into the United States and sold without authorization, Omega, S.A. ("Omega") commenced an action against Costco Wholesale Corp. in 2005. These watches are a typical example of what are referred to either as parallel imports or gray market goods. In finding for Omega, the Ninth Circuit held that the first sale doctrine does not apply to goods created or produced outside the United States. Such a rule, however, poses grave problems for libraries, in that circulation materials are not required to have a place of manufacture …

Nature Or Nurture: Is There A Case Basis For A Judicially Created ‘Product Of Nature’ Exclusion? Are Genes Somehow Different?, 11 J Marshall Rev. Intell. Prop. L. 318 (2011), W. Lesser

UIC Review of Intellectual Property Law

The Myriad Genetics decision has rekindled the product of nature debate. This article analyzes legal decisions spanning the past century for products ranging from plants to man-made elements, which in sum provide guidance to the patentability of genes. The product of nature argument it is concluded confuses rather than clarifies patentability considerations. Patentability in the evaluated cases as well as for genes can be resolved more precisely under the utility, non-obviousness, disclosure, and enablement patentability requirements without a need for any additional judicially-created stipulation. As regards genes, there is an additional dimension for consideration which in the case law and …

The Conditional Sale Doctrine In A Post-Quanta World And Its Implications On Modern Licensing Agreements, 11 J. Marshall Rev. Intell. Prop. L. 295 (2011), William Lafuze, Justin Chen, Lavonne Burke

UIC Review of Intellectual Property Law

The exclusive rights of a patent owner to exclude others from making, using, or selling patented inventions are limited by the doctrine of patent exhaustion. This doctrine, also known as the first sale doctrine, states that upon the first authorized sale of a patented article in the United States, the article is removed from the patent monopoly, thus losing its patent protection. As a result of this first sale, any subsequent use or sale of the patented article is not an infringement of its corresponding patent. The Federal Circuit further established the conditional sale doctrine in Mallinckrodt, Inc. v. Medipart, …

The Throw Down Over Takedowns: An Analysis Of The Lenz Interpretation Of 17 U.S.C. § 512(F), 10 J. Marshall Rev. Intell. Prop. L. 792 (2011), Ian Rubenstrunk

UIC Review of Intellectual Property Law

Recently, a YouTube user and mother of two, Stephanie Lenz, filed a lawsuit against Universal Music Corporation which had the potential for broad impact on the internet. Everyone from politicians, to teachers, to musical artists could have gained more protection of their rights as internet users. With millions of people having access to the internet and YouTube “vloggers” reaching the million mark in subscribers, the court’s interpretation of 17 U.S.C. § 512(f) could have had a significant impact. The issue in the case was what “any damages” meant in a clause creating liability for a party that incorrectly has material …

Right Of Publicity: Is Behavioral Targeting Violating The Right To Control Your Identity Online?, 10 J. Marshall Rev. Intell. Prop. L. 811 (2011), Andrea Stein Fuelleman

UIC Review of Intellectual Property Law

Behavioral targeting (“BT”) is an advertising technique that receives a great deal of attention due in part to the balkanized self-regulatory policies that address consumer protection issues. The majority of the self-regulation policies, including the BT principles proposed by the Federal Trade Commission (“FTC”) focus on privacy issues but fail to discuss the impact BT may have on the right to control the commercial use of one’s identity. In discussing the right of publicity, many legal scholars agree that everyone has a right to control the commercial use of his or her identity, regardless of his or her status as …

Protecting The Gates Of Reasonable Royalty: A Damages Framework For Patent Infringement Cases, 11 J. Marshall Rev. Intell. Prop. L. 192 (2011), Merritt J. Hasbrouck

UIC Review of Intellectual Property Law

The reasonable royalty analysis in patent infringement cases remains confusing to juries because of the numerous and arbitrary methods of calculation. The use of confusing methodologies, such as the Georgia-Pacific analysis, the Entire Market Value Rule, and the former 25 percent rule, increase the risk of overcompensating patentees in patent infringement cases. Without suitable changes to the reasonable royalty analysis, damages award amounts will continue to increasingly undermine the incentive for subsequent inventors to create new products. Although the courts have had some success in establishing new methods, Congress should create a more rigid and clear test for use in …

Towards Symmetry In The Law Of Branding, Rebecca Tushnet

Fordham Intellectual Property, Media and Entertainment Law Journal

Companies sometimes want to abandon an old identity and rebrand with a new one. Trademark law probably does not have much to say about rebranding in itself. But we should be careful about how we think about rebranding and other undisclosed source relationships because, if not handled properly, law’s recognition of such techniques could end up reinforcing trademark owners’ ability to deter competition and control free speech.

Commercial Or Advertising Purpose Under Florida Statutes Section 540.08 Demystified, Michael L. Richmond

Faculty Scholarship

No abstract provided.

"Capital" Punishment: Evaluating An Investor's Secondary Copyright Infringement Liability After Veoh, James L. Proctor Jr.

Washington Journal of Law, Technology & Arts

In UMG Recordings, Inc. v. Veoh Networks, Inc., the U.S. District Court for the Central District of California considered claims that investors in a privately-held corpor-ation were secondarily liable for copyright infringement. The Veoh court findings, which set out current secondary copy-right infringement law, provide guidance for investors by clarifying their potential liability for copyright infringement committed by the company in which they invested. However, because the decision was fact-specific, this guidance is incomplete. For example, the court found that the investor neither controlled the infringing activities nor reaped direct financial benefit from them. This leaves open for further …

Exportability's Effect On Process Patent Enforcement: Why § 271(F) Export Restrictions Do Not Apply To Intangible Process Claims, Homer Yang-Hsien Hsu

Washington Journal of Law, Technology & Arts

Congress enacted 35 U.S.C. § 271(f) to broaden U.S. patent protection and prohibit shipping patented devices in smaller components for assembly overseas. Section 271(f) creates an infringement cause of action for sending comp-onents outside the United States for assembly. Whether § 271(f)—which clearly applies to physical things—also applies to process claims has been hotly debated. In Cardiac Pacemakers, Inc. v. St. Jude Med Inc., the United States Court of Appeals for the Federal Circuit held that § 271(f) does not apply to process claims because a compo-nent of a process claim is an intangible step that cannot be physically …