Intellectual Property Law Commons^™

Liberating The Library: Fair Use Mostly Upheld For University E-Reserves In Cambridge University Press V. Becker, Jennifer Findley

Mercer Law Review

Libraries and universities across the country had Georgia on their minds as they waited in anticipation for over a year for the outcome of a case. before the United States District Court for the Northern District of Georgia. On May 11, 2012, in Cambridge University Press v. Becker, Judge Orinda Evans answered a question of vital importance to librarians and university officials ever since the passage of the Copyright Act of 1976: does copyright infringement occur if a nonprofit institution makes copies for the classroom for a nonprofit educational purpose? In a 350-page opinion, the court answered with a …

Administering Mayo To Patents In Medicine And Biotechnology: Appropriate Dosage Or Risk Of Toxic Side Effects?, Lauren Miller

Mercer Law Review

In Mayo Collaborative Services v. Prometheus Laboratories, Inc., the United States Supreme Court considered whether it would uphold patents on the "bounty" arising from laws of nature, specifically, diagnostic tests based on natural laws that determined the efficacy and toxicity of certain thiopurine drugs. In a unanimous ruling, the Court invalidated the patents, which were held by respondent Prometheus Laboratories, Inc. (Prometheus). The Court ultimately concluded that the processes for which Prometheus claimed patents did not add "significantly more" to the underlying laws of nature, and thus did not warrant patent protection. The Mayo decision is likely to have …

Genomics Unbound: The Scientific And Legal Case Against Patents Based On Naturally Occurring Dna Sequences, Fazal Khan, Lindsay Kessler

Nevada Law Journal

No abstract provided.

Copyright Essentialism And The Performativity Of Remedies, Andrew Gilden

William & Mary Law Review

This Article critically examines the interrelationship between substantive copyright protections and the remedies available for infringement. Drawing from constitutional remedies scholarship and poststructural theories of performativity, it argues that a court’s awareness of the likely remedy award in a particular dispute —combined with its normative view of how future actors should address similar disputes—“reaches back” and shapes the determination of the parties’ respective rights.

Copyright scholars have long sought to limit the availability of injunctive relief, and several recent court decisions have adopted this reform. For example, in Salinger v. Colting the Second Circuit vacated a preliminary injunction against a …

Does The Us Patent System Need A Patent Small Claims Proceeding?, Colleen Chien, Michael J. Guo

Faculty Publications

Patent litigation is expensive. The primary motivation for the creation of a patent small claims proceeding is to make enforcement more affordable. However, in the twenty or so years since the American Intellectual Property Law Association (AIPLA) first endorsed the idea of a small claims patent court through Resolution 401‐4, the patent litigation landscape has drastically changed. Although patent litigation costs are still high, the equities have shifted. The marketplace for patents has developed, providing more options than previously existed to monetize and assert patents. However, the cost of patent defense has not gone down, and small companies cannot afford …

Is There Confusion In The Law Of Trade Marks In Singapore? Staywell Hospitality Group Pty Ltd V Starwood Hotels & Resorts Worldwide, Inc [2013] 1 Slr 489, David Llewelyn

Research Collection Yong Pung How School Of Law

The wording of s 8(2)(b) of the Trade Marks Act – which sets out the relative ground for refusal of a trade mark application for a mark that is the same or similar to an earlier mark registered in relation to the same or similar goods or services as long as there is a likelihood of confusion – is identical to that in s 27(2)(b) relating to infringement of a trade mark. The wording is taken from ss 5(2) and 10(2) of the UK Trade Marks Act 1994 (which in turn derives from the European Council Trade Marks Directive). The …

Will Fda Data Exclusivity Make Biologic Patents Passé?, Vincent J. Roth

Santa Clara High Technology Law Journal

Much controversy has ensued over the current twelve-year data exclusivity period afforded to biosimilars, pursuant to the Biologics Price Competition and Innovation Act of 2009 (BPCI).

Many commentators speculate whether data exclusivity will overtake patents as the preferred method of intellectual property protection for new biologic drugs. A comparison of data exclusivity with the patent system, however, reveals few similarities and many differences. Moreover, legislative gaps and absent industry mechanisms leave a void that is a barrier to entry in the biosimilars market, referred to here as “regulatory impracticality.”

A survey was conducted with senior management at biopharma companies regarding …

State Taxation Of Cloud Computing, Stephen J. Lusch

Santa Clara High Technology Law Journal

As the digital environment in which we live continues to change at speeds that were unfathomable two decades ago, archaic state tax systems have struggled to keep pace. Cloud computing is the latest innovation to introduce considerable complexity into the state and local tax system. Cloud computing is prevalent in many aspects of the user experience with companies such as Apple, Amazon, and Google now providing their traditional services via a cloud component. With three primary service models and countless transactional forms, cloud computing is difficult to fit into most current tax systems. Though some jurisdictions have begun to issue …

Downloading, Distributing, And Damages In The Digital Domain: The Need For Copyright Remedy Reform, Joe Donnini

Santa Clara High Technology Law Journal

Should copyright remedy laws be changed to address the proliferation of sharing of online content? On one hand, harsh penalties may improve compensation and infringement deterrence; on the other hand, harsh penalties may harm the interests of free expression and the enrichment of society through sharing. This article focuses on identifying the ideal level of enforcement and proposes a new remedy scheme to appropriately address social media sharing versus commercial misappropriation.

In order to do that, Part I of this article explores the purposes of compensation and deterrence that are behind the copyright statutory remedy scheme. Thereafter, Part II sheds …

Ten Years Of Inter Partes Patent Reexamination Appeals: An Empirical View, Eric J. Rogers

Santa Clara High Technology Law Journal

An empirical analysis of the first ten years of decisions by the Board Patent Appeals and Interferences regarding inter partes patent reexamination appeals was conducted. The analysis of 101 cases focused on answering three broad questions: (1) How accurate are the specialist patent examiners of the Central Reexamination Unit of the U.S. Patent and Trademark Office? (2) Do patent owners or third party requestors fare better in appeals of decisions in inter partes reexamination proceedings? (3) Which types of appeals are more likely to be successful? The examiners’ determinations were upheld more than three fourths of the time; third party …

Increasing Access To The Results Of Federally Funded Scientific Research (February 22, 2013)

Copyright, Fair Use, Scholarly Communication, etc.

Increasing Access to the Results of Federally Funded Scientific Research (February 22, 2013)

A Case For The Public Domain, Clark Asay

Faculty Scholarship

Over the past several decades open license movements have proven highly successful in the software and content worlds. Such movements rely in part on the belief that greater freedom of use triggers innovative activity that is superior to what a restrictive IP approach produces. Ironically, such open license movements also rely on IP rights to promote their vision of freedom and openness. They do so through IP licenses that, while granting significant freedoms, also impose certain conditions on users such as the “copyleft” requirement in the software world. Such movements rely on this IP-based approach due to fears that, without …

A Legislative Proposal To End Bootlegging In The Patent System, James Van Santen

Pepperdine Law Review

No abstract provided.

Copyright And The Musical Arrangement: An Analysis Of The Law And Problems Pertaining To This Specialized Form Of Derivative Work, Joel L. Friedman

Pepperdine Law Review

No abstract provided.

Diamond V. Chakrabarty: Oil Eaters: Alive And Patentable, Dennis J. Walsh

Pepperdine Law Review

Congress is empowered, under article I, section 8 of the United States Constitution, to create patent laws that encourage the promotion of arts and sciences. In the congressional fulfillment of this task, the courts have been confused as to what products are worthy of patent protection under the patent statutes. One illustration of this confusion is the recent controversy of whether living organisms fit into the statutory patentable classification of section 101 of the 1952 Patent Act. The recent United States Supreme Court decision of Diamond v. Chakrabarty has ended this confusion by holding that living micro bacteria is patentable …

Protection Of Intellectual Property Rights In Computers And Computer Programs: Recent Developments , Alan C. Rose

Pepperdine Law Review

The following article examines the protection offered to computers and computer programs, under the various applicable patent, copyright and trade secret laws. Concerning patent protection; the author discusses the history and current status of the patent laws, and analyzes in detail the landmark case of Diamond v. Diehr. Discussed also is an analysis of copyright protection for computer programs, offered by the 1980 amendments to section 117 of the 1976 Copyright Act; which paved the way for the increased protection.

Droit De Suite: Only Congress Can Grant Royalty Protection For Artists, Lynn K. Warren

Pepperdine Law Review

Congress has enacted the 1976 Copyright Act which does not grant resale royalties to fine artists. It does, however, add a strong preemption provision that was not a part of the 1909 Act. This provision emphatically preempts any state law granting a right equivalent to a right granted by the federal statute to any work which is the subject matter of copyright. In its desire to increase protection for fine artists, the State of California has enacted the first droit de suite legislation in the United States, patterned after European copyright law, which extends resale royalties to fine artists. This …

Software Patents & Functional Claiming, Colleen Chien, Aashish Karkhanis

Faculty Publications

On Feb 12, 2013, the PTO held a roundtable about software patents at Stanford. Software patents have received a lot of attention and we don't believe it is undue: software patents are behind a disproportionate share of patent litigations -- more specifically, over half (55%) of all patent defendants and 82% of PAE ("patent troll") defendants are there because of a software patent, applying the Graham-Vishnubhakat definition to data provided by RPX Corporation. In this presentation, we more rigorously apply 35 USC 112(f) in accordance with the proposal Mark Lemley outlines in his WIRED oped "Let's Go Back to Claiming …

Copyright Update 2013, Margaret Ann Wilkinson

Law Presentations

No abstract provided.

Seed Patents, Patent Exhaustion, And Third Parties - Bowman V. Monsanto Co., Dennis D. Crouch

Faculty Publications

Monsanto patents cover genetically modified glyphosate-resistant soybeans. A farmer purchased soybeans from a commodity market and argues that the “first sale doctrine” exhausts the patent rights as to those soybeans and their progeny. If successful, the farmer can save and replant the soybeans without paying licensing fees. Monsanto argues that exhaustion does not apply to new soybeans grown through replanting; even rights in the parent seeds are exhausted. In addition, Monsanto argues that the purchased soybeans are bound by a use-restriction servitude that bars farmers from planting seeds purchased from the commodity market.

Unchanging E-Discovery In The Patent Courts, Daniel B. Garrie, Yoav M. Griver

Washington Journal of Law, Technology & Arts

This Article analyzes the Federal Circuit’s Model Order Regarding E-Discovery in Patent Cases (the “Model Order”). The Article briefly describes the purpose behind the Model Order, describes its key provisions, analyzes the Model Order to identify some areas of continuing concern, and defines predictive coding to examine the impact, or lack thereof, on the Model Order. The Author concludes that, while it is beyond refute that the Model Order is an appropriate step toward controlling and managing e-discovery, the Model Order is only the first step. In this regard, several problems, as set forth below, can potentially arise when counsel …

Personalized Medicine, Genetic Exceptionalism, And The Rule Of Law: An Analysis Of The Prevailing Justification For Invalidating Brca1/2 Patents In Association Of Molecular Pathology V. Uspto, Kristen L. Burge

Washington Journal of Law, Technology & Arts

As medicine advances toward a more personalized model, the significance of genetic information is growing exponentially. While unlocking the genetic code has advanced the state of medicine, it has also reinvigorated the debate over the boundaries of patentable subject matter. The potential clash between having access to state-of-the-art medicine and protecting intellectual property investments came to a head in the case, Association of Molecular Pathology v. USPTO (“Myriad”). This Article analyzes the legal opinion rendered by the district court through the unique lens of genetic exceptionalism—a concept previously reserved to social science and public policy. Then, this Article …

Of Smart Phone Wars And Software Patents, Stuart Graham, Saurabh Vishnubhakat

Faculty Scholarship

Among the main criticisms currently confronting the US Patent and Trademark Office are concerns about software patents and what role they play in the web of litigation now proceeding in the smart phone industry. We will examine the evidence on the litigation and the treatment by the Patent Office of patents that include software elements. We present specific empirical evidence regarding the examination by the Patent Office of software patents, their validity, and their role in the smart phone wars. More broadly, this article discusses the competing values at work in the patent system and how the system has dealt …

The Presumption Of Patentability, Sean B. Seymore

Vanderbilt Law School Faculty Publications

When the Framers of the United States Constitution granted Congress the authority to create a patent system, they certainty did not envision a patent as an a priori entitlement. As it stands now, anyone who files a patent application on anything is entitled to a presumption of patentability. A patent examiner who seeks to challenge patentability faces the dual burden of building a prima facie case of unpatentability and carrying the ultimate burden of proof. Thus, from the outset, an applicant is in a very good position; but the examiner’s limited resources, time pressures, and production goals tip the scales …

Rohauer Revisited: "Rear Window," Copyright Reversions, Renewals, Terminations, Derivative Works And Fair Use , Richard Colby

Pepperdine Law Review

No abstract provided.

Copyright And The First Amendment: Freedom Or Monopoly Of Expression?, Henry S. Hoberman

Pepperdine Law Review

No abstract provided.

Sufficiently Supervised Commissioned Workers: Mythical Beasts Sculpted From Old Law, Alexander Lambrous

Pepperdine Law Review

No abstract provided.

States Escape Liability For Copyright Infringement?, Michelle V. Francis

Pepperdine Law Review

No abstract provided.

Masck V. Sports Illustrated, United States District Court For The Eastern District Of Michigan

Historical and Topical Legal Documents

No abstract provided.

A Descendible Right Of Publicity: Has The Time Finally Come For A National Standard?, J. Steven Bingman

Pepperdine Law Review

No abstract provided.