Intellectual Property Law Commons^™

Completing The Picture Of Uncertain Patent Scope, Greg Reilly

Faculty Scholarship

This Commentary addresses the intertwined relationship of claim construction, indefiniteness, and uncertain patent scope. Claim construction is a necessary threshold step and, if effective, can resolve uncertainties in claim scope, reducing the need to invalidate claims as indefinite, as discussed in Part II. Part III demonstrates how the Federal Circuit’s failed claim construction rules accentuate, rather than resolve, ambiguities in claim scope. Part IV explains how the ineffectiveness of claim construction increases the need for an effective indefiniteness doctrine, but, perversely, both decreased the effectiveness of the Federal Circuit’s pre-Nautilus standard and renders any stricter standard too draconian. Part IV …

Aggregating Defendants, Greg Reilly

Faculty Scholarship

No procedural topic has garnered more attention in the past fifty years than the class action and aggregation of plaintiffs. Yet, almost nothing has been written about aggregating defendants. This topic is of increasing importance. Recent efforts by patent “trolls” and Bit- Torrent copyright plaintiffs to aggregate unrelated defendants for similar but independent acts of infringement have provoked strong opposition from defendants, courts, and even Congress. The visceral resistance to defendant aggregation is puzzling. The aggregation of similarly situated plaintiffs is seen as creating benefits for both plaintiffs and the judicial system. The benefits that justify plaintiff aggregation also seem …

Patent Dialogue, Jonas Anderson

Scholarly Articles in Law Reviews & Journals

This Article examines the unique dialogic relationship that exists between the Supreme Court and Congress concerning patent law. In most areas of the law, Congress and the Supreme Court engage directly with each other to craft legal rules. When it comes to patent law, however, Congress and the Court often interact via an intermediary institution: the U.S. Court of Appeals for the Federal Circuit. In patent law, dialogue often begins when Congress or the Supreme Court acts as a dialogic catalyst, signaling reform priorities to which the Federal Circuit often responds.

Appreciating the unique nature of patent dialogue has important …

Congress As A Catalyst Of Patent Reform At The Federal Circuit, Jonas Anderson

Scholarly Articles in Law Reviews & Journals

The U.S. Court of Appeals for the Federal Circuit is the dominant institution in patent law. The court’s control over patent law and policy has led to a host of academic proposals to shift power away from the court and towards other institutions, including the U.S. Supreme Court, the U.S. Patent and Trademark Office, and federal district courts. Surprisingly, however, academics have largely dismissed Congress as a potential institutional check on the Federal Circuit. Congress, it is felt, is too slow, too divided, and too beholden to special interests to effectively monitor changes in innovation and respond with appropriate reforms. …

Intellectual Property Geographies, Peter K. Yu

Faculty Scholarship

Written for a special issue on intellectual property and geography, this article outlines three sets of mismatches that demonstrate the vitality, utility and richness of analyzing intellectual property developments through a geographical lens. The article begins by examining economic geography, focusing on the tensions and conflicts between territorial borders and sub-national innovation (including those relating to obligations under the WTO TRIPS Agreement). This article then examines the oft-found mismatch between political geography and cultural geography. Illustrating this mismatch is the challenge of protecting traditional knowledge and traditional cultural expressions. The article concludes by exploring the growing mismatch between legal geography …

Redressing The Patent Imbalance In Genetic Testing, Cheng Lim Saw

Research Collection Yong Pung How School Of Law

In one of the most highly anticipated decisions emanating from the apex Court in the US in recent times, the US Supreme Court in Association for Molecular Pathology v Myriad Genetics Inc was asked to consider, in the main, the patentability of a naturally occurring gene sequence which had been specifically isolated from the human genome. Although the patent was eventually denied, this seminal case will certainly not be the last word on what is clearly a very controversial subject, at least outside of the US.

Overlapping Copyright And Trademark Protection: A Call For Concern And Action, Irene Calboli

Research Collection Yong Pung How School Of Law

Currently, many forms of intellectual property can qualify for protection both under trademark and copyright law. Granting trademark protection for these works has the potential to negatively impact the social bargain upon which copyright protection is built and justified. Over the past few decades several judicial decisions have recognized this overlapping protection; generally, however, the majority of courts have proved reluctant to comprehensively address the issue, and have consistently accepted that trademark protection can apply to creative works when they are used to identify products offered for sale in the market. This perceived judicial support has contributed to further overlapping …

Betty Boop And The Return Of Aesthetic Functionality: A Bitter Medicine Against 'Mutant Copyrights'?, Irene Calboli

Research Collection Yong Pung How School Of Law

This article offers a brief overview of the history and developments of the doctrine of aesthetic functionality in the United States and examines the recent decisions in Fleischer Studios, Inc v AVELA, Inc. In particular, the article argues that the courts in Fleischer added an important element to the interpretation of the doctrine, namely the fact that the courts seemed willing to resort to aesthetic functionality to counter the consequences resulting from the practice of using trade mark protection as an additional form of protection for copyrighted, or once copyrighted, creative works.

Food For Thought: Genetically Modified Seeds As De Facto Standard Essential Patents, Benjamin M. Cole, Brent J. Horton, Ryan G. Vacca

Akron Law Faculty Publications

For several years, courts have been improperly calculating damages in cases involving the unlicensed use of genetically-modified (GM) seed technology. In particular, when courts determine patent damages based on the hypothetical negotiation method, they err in exaggerating these damages to a point where no rational negotiator would agree. In response, we propose a limited affirmative defense of an implied license due to the patent’s status as a de facto standard essential patent. To be classified as a de facto standard essential patent, the farmer must prove three elements that reflect the peculiarities of GM seeds used in farming: (1) dominance, …

We Need To Talk About Aereo: Copyright-Avoiding Business Models, Cloud Storage And A Principled Reading Of The "Transmit" Clause, Rebecca Giblin, Jane C. Ginsburg

Faculty Scholarship

Businesses are exploiting perceived gaps in the structure of copyright rights by ingeniously designing their technologies to fulfill demand for individual access through a structure of personalized copies and playback engineered in ways intended to implicate neither the public performance nor the reproduction rights. The archetypal example is Aereo Inc.’s system for providing online access to broadcast television. Aereo allows users to tune into individual antennae to stream TV to themselves, near-live, online. Aereo’s activities look a lot like the retransmission of broadcast signals, an activity which Congress has made very clear must result in remuneration for rightholders. However, Aereo’s …

Judging Similarity, Shyamkrishna Balganesh, Irina D. Manta, Tess Wilkinson-Ryan

Faculty Scholarship

Copyright law’s requirement of substantial similarity requires a court to satisfy itself that a defendant’s copying, even when shown to exist as a factual matter, is quantitatively and qualitatively enough to render it actionable as infringement. By the time a jury reaches the question of substantial similarity, however, the court has usually heard and analyzed a good deal of evidence about: the plaintiff, the defendant, the creativity involved, the process through which the work was created, the reasons for which the work was produced, the defendant’s own creative efforts and behavior, and, on occasion, the market effects of the defendant’s …

Book Review, Rebecca Wexler

Faculty Scholarship

Authors have skeptics. Patrick Burkart writes for his. Critics describe the pirate political movement as uninformed and unreliable. Burkart disagrees. He argues that pirates can help protect the digital commons from a dangerous upward ratchet of intellectual property rights (IPR). Activists within the pirate movement define the digital commons as information resources created by the Internet, including Wikipedia, remixes, and fan fiction.

Unplanned Coauthorship, Shyamkrishna Balganesh

Faculty Scholarship

Unplanned coauthorship refers to the process by which contributors to a creative work are treated by copyright law as coauthors of the work based entirely on their observable behavior during its creation. The process entails a court imputing the status of coauthors to the parties ex post, usually during a claim for copyright infringement. For years now, courts and scholars have struggled to identify a coherent rationale for unplanned coauthorship and situate it within copyright’s set of goals and objectives. This Article offers a novel framework for understanding the rules of unplanned coauthorship using insights from theories of shared intentionality. …

Asking The Right Questions In Copyright Cases: Lessons From Aereo And Its International Brethren, Rebecca Giblin, Jane C. Ginsburg

Faculty Scholarship

Aereo was a US-based service that made unique copies of broadcast programs from individual antennae for each requesting user, for individual retransmission near-live or at some point in the future. To the uninitiated, it makes no sense for a company to design a television transmission service that utilises thousands of tiny antennae and thousands of copies to deliver signals to users. Wouldn’t it be much more efficient to use just one of each? And surely, when it comes to copyright liability, wouldn’t more copies result in more infringement, not less? However, Aereo’s strategy made a lot of sense when viewed …

Letter From The U.S.: Exclusive Rights, Exceptions, And Uncertain Compliance With International Norms – Part Ii (Fair Use), Jane C. Ginsburg

Faculty Scholarship

This survey of recent U.S. fair use decisions examines the domestic evolution of the doctrine, particularly in light of the significant expansion of noninfringing “transformative” uses. The article also considers the U.S.’ compliance with its international obligations under the Berne Convention and the TRIPs Accord, and inquires whether the substantial enlargement of the application of the U.S. fair use exception exceeds the leeway that the Berne Convention, art. 9(2), WCT art. 10, and TRIPs art. 13 grant to member states to provide for exceptions and limitations to copyright.

Letter From The U.S.: Exclusive Rights, Exceptions, And Uncertain Compliance With International Norms – Part I (Making Available Right), Jane C. Ginsburg

Faculty Scholarship

This Letter from the U.S. addresses U.S. compliance with its international obligation to implement the “making available right” set out in art. 8 of the 1996 WIPO Copyright Treaty. The “umbrella solution” which enabled member states to protect the “making available to the public of [authors’] works in such a way that members of the public may access these works from a place and at a time individually chosen by them” through a combination of extant exclusive rights, notably the distribution right and the public performance right, has not in the U.S. afforded secure coverage of the full scope of …

On Aereo And "Avoision", Rebecca Giblin, Jane C. Ginsburg

Faculty Scholarship

Avoision describes conduct which seeks to exploit 'the differences between a law's goals and its self-defined limits' – a phenomenon particularly apparent in tax law. This short paper explains how the technology company Aereo utilised avoision strategies in an attempt to design its way out of liability under US copyright law. The authors argue that existing formulations encourage such strategies by applying differently depending on how the transaction is structured, resulting in a wasteful devotion of resources to hyper-technical compliance with the letter rather than meaning and purpose of the law.?

Corrective Justice And Copyright Infringement, Patrick R. Goold

Vanderbilt Journal of Entertainment & Technology Law

This Article demonstrates that one important goal of copyright infringement cases is the achievement of corrective justice. The importance of corrective justice to the copyright system is demonstrated by the law's continual reliance on a bilateral litigation model. Sadly, because scholars and lawmakers often conceive of copyright in solely economic terms, corrective justice is often overlooked and demonstrable unfairness occurs as a result. This Article discusses three areas of contemporary copyright law where the failure to consider corrective justice leads to unfair outcomes: the provision of statutory damages in civil copyright claims, the availability of attorney's fees, and mass copyright …

"What He Said." The Transformative Potential Of The Use Of Copyrighted Content In Political Campaigns--Or--How A Win For Mitt Romney Might Have Been A Victory For Free Speech, Deidre A. Keller

Vanderbilt Journal of Entertainment & Technology Law

In January 2012, Mitt Romney's campaign received a cease-and-desist letter charging, among other things, that its use of news footage concerning Newt Gingrich's ethics problems in the House of Representatives constituted a violation of NBC's copyright. This is just the latest such charge and came amidst similar allegations against the Gingrich and Bachmann campaigns and in the wake of similar allegations against both the McCain and Obama campaigns in 2008. Such allegations have plagued political campaigns as far back as Reagan's in 1984. The existing literature is nearly devoid of a consideration of such uses as political speech protected by …

The Institutional Progress Clause, Jake Linford

Vanderbilt Journal of Entertainment & Technology Law

There is a curious anomaly at the intersection of copyright and free speech. In cases like Citizens United v. Federal Election Commission, the United States Supreme Court has exhibited a profound distaste for tailoring free speech rights and restrictions based on the identity of the speaker. The Copyright Act, however, is full of such tailoring, extending special rights to some classes of copyright owners and special defenses to some classes of users. A Supreme Court serious about maintaining speaker neutrality would be appalled.

A set of compromises at the heart of the Copyright Act reflects interest-group lobbying rather than a …

Appropriation Without Representation? The Limited Role Of Indigenous Groups In Wipo's Intergovernmental Committee On Intellectual Property And Genetic Resources, Traditional Knowledge, And Folklore, Veronica Gordon

Vanderbilt Journal of Entertainment & Technology Law

The World Intellectual Property Organization's (WIPO) Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge, and Folklore (IGC) is currently engaged in text-based negotiations to develop an international legal instrument, or set of instruments, that will effectively protect traditional knowledge, traditional cultural expressions, and genetic resources. Yet, the people who will arguably be most affected by the ultimate instrument(s)--indigenous peoples and local communities--are not able to fully participate in these negotiations. Instead, WIPO deems them "Observers." They cannot formally present proposals, amendments, or motions, and cannot vote at IGC sessions. Thus, their limited influence implicates questions of equity, sovereignty, …

Foreigners In Us Patent Litigation: An Empirical Study Of Patent Cases Filed In Nine Us Federal District Courts In 2004, 2009, And 2012, Marketa Trimble

Vanderbilt Journal of Entertainment & Technology Law

One of the greatest challenges facing patent holders is the enforcement of their rights against foreign (non-US) infringers. Jurisdictional rules can prevent patent holders from filing patent infringement suits where they have the greatest likelihood of success in enforcement, such as where the infringer is located, has its seat, or holds its assets. Instead, patent holders must file lawsuits in the country where the infringed patent was issued. But filing a patent lawsuit in a US court against a non-US infringer may be subject to various difficulties associated with the fact that US substantive patent law (particularly as regards its …

Exceptional Authorship: The Role Of Copyright Exceptions In Promoting Creativity, Jane C. Ginsburg

Faculty Scholarship

A lawyer for an immense copyright-exploiting corporation, casting himself as a defender of authors’ rights, challenged his interlocutor’s incredulity with the following assertion: given today’s diversity of authors, ‘more of them depend on limitations and exceptions than on exclusive rights’. Some might cringe at the resemblance of this credo to Orwell’s ‘Freedom Is Slavery!’ Nonetheless, I would like to take seriously the proposition that today’s authors need copyright exceptions and limitations more than they need exclusive rights.

First, I will test the proposition by examining what one might call authorship-oriented exceptions, from ‘fair abridgement’ in early English cases to the …

A New Framework For Assessing Clinical Data Transparency Initiatives, Erika Lietzan

Faculty Publications

Biopharmaceutical companies submit vast amounts of clinical data and analysis to support approval of their medicines, expecting the information to be kept confidential, as has been the practice of regulators around the world for decades. Over the last ten years, however, pressure has been mounting for regulators or industry to release this information. Legal scholars have generally taken the view that no relevant doctrines or bodies of law preclude the release of this material and that public policy considerations compel its release. This article argues that the scholarship to date has overlooked key considerations: the special issues presented by operation …

Stare Indecisis: The Federal Circuit's En Banc Battle Against Itself And Business In Lighting Ballast Control, Llc V. Philips Electronics North America Corp., Ronny Valdes

American University Business Law Review

No abstract provided.

Toward A Jurisprudence Of Drug Regulation, Matthew Herder

Articles, Book Chapters, & Popular Press

Efforts to foster transparency in biopharmaceutical regulation are well underway: drug manufacturers are, for example, legally required to register clinical trials and share research results in the United States and Europe. Recently, the policy conversation has shifted toward the disclosure of clinical trial data, not just trial designs and basic results. Here, I argue that clinical trial registration and disclosure of clinical trial data are necessary but insufficient. There is also a need to ensure that regulatory decisions that flow from clinical trials — whether positive (i.e. product approvals) or negative (i.e. abandoned products, product refusals, and withdrawals) — are …

Faustian Perspective On Digitization: Making A Deal With The Devil, Lucie Guibault

Articles, Book Chapters, & Popular Press

Digitization of library material, archives and museum collections, arts organizations repositories is progressing rapidly, and opens up new possibilities of accessing, using and re-using the knowledge embodied in cultural heritage. By giving new purpose and function to works, it enhances the value of the public domain and enriches the public sphere. However, digitization also creates the conditions for the rise of new proprietary entitlements over cultural objects. Such ‘informational monopolies’ are often justified as necessary to recoup the high costs of digitization, or as the basis to provide additional sources of income for the cultural institutions. At the same time, …

Myspace, Inc. V. Graphon Corp.: Ignoring The Basic Premise That 101 Must Come Before 102 And 103, Emmanuel A. Fishelman

Journal of Business & Technology Law

No abstract provided.

Declaration On Patent Protection: Regulatory Sovereignty Under Trips, Reto Hilty, Matthias Lamping, Dan L. Burk, Carlos M. Correa, Peter Drahos, N. S. Gopalakrishnan, Henning Große Ruse-Khan, Annette Kur, Geertrui Van Overwalle, Jerome Reichman, Hanns Ullrich

Faculty Scholarship

As a framework regulation for innovation markets, the patent system needs to be tailored to the innovation process, which it is supposed to serve, and to the competitive environment, within which it must operate. In order to ensure an efficient functionality of the patent system as an innovation policy tool, patent rights ought to be defined, justified and continually reconsidered by reference to their socio-economic benefits and costs.

Sovereign states should retain the discretion to adopt a patent system that best suits their technological capabilities as well as their social, cultural and economic needs and priorities, with the proviso that …

The Failed Promise Of User Fees: Empirical Evidence From The United States Patent And Trademark Office, Michael D. Frakes, Melissa F. Wasserman

Faculty Scholarship

In an attempt to shed light on the impact of user-fee financing structures on the behavior of administrative agencies, we explore the relationship between the funding structure of the Patent and Trademark Office (PTO) and its examination practices. We suggest that the PTO’s reliance on prior grantees to subsidize current applicants exposes the Agency to a risk that its obligatory costs will surpass incoming fee collections. When such risks materialize, we hypothesize, and thereafter document, that the PTO will restore financial balance by extending preferential examination treatment—i.e., higher granting propensities and/or shorter wait times—to some technologies over others.