Intellectual Property Law Commons^™

The Misapplication Of Antitrust Theory To Patent License Conditions, Theodore L. Bowes

Akron Law Review

OVER THE past few years, there has been wide debate over patent license law, the law regarding the conditions patent owners can legally impose on licensees or the permissible scope of license grants. The controversy came to a head in 1970 when Senator Scott of Pennsylvania introduced amendments' to a then-pending bill intended to revise the patent laws. According to the Senator, the amendments were intended to stabilize and codify license law. The amendments were rejected in the subcommittee and the bill was not enacted.

Real-Time Sports Data And The First Amendment, Ryan M. Rodenberg, John T. Holden, Asa D. Brown

Washington Journal of Law, Technology & Arts

Technological advancements have created an emergent challenge for organizations attempting to monetize real-time information. Real-time data as a commodity is especially relevant in the sports industry. Sports leagues increasingly seek to control the dissemination of real-time data in conjunction with lucrative distribution agreements. We analyze the legal status of real-time sports data under both intellectual property law and the First Amendment, with our case-by-case analysis extending to spectators, gamblers, journalists, and non-gambling entrepreneurs. Although we conclude that the First Amendment protections are broad across all four categories, particularly when the underlying sporting event takes place on public land, we find …

From Inwood To Internet And Beyond: Assessing The Web Host-User Relationship In Contributory Online Trademark Infringement, Julie Liu

Washington Journal of Law, Technology & Arts

While courts have created a doctrine of contributory trademark infringement in response to the expansion of goods and services from brick-and-mortar to the Internet, the exact duties of web hosts under the rule are not yet clear. Despite judicial attempts to carve out new standards to define traditional requirements, the application of these standards remains inconsistent and has left unresolved ambiguities. The disparities between the standards may be balanced through an analysis of the affirmative duties imposed by the law on online service providers, as well as a closer look at the relationship between a service provider and user. This …

International Trade V. International Property Lawyers: Globalization And The Brazilian Legal Profession, Vitor Martins Dias

Maurer Theses and Dissertations

This work analyzes a distinctive characteristic of the globalizing Brazilian legal profession. Namely, intellectual property (IP) lawyers who once were leaders in opening the Brazilian economy and were key players in cross-border transactions are now losing ground to their peers with an expertise in international trade. The thesis of this article is that the manner in which Brazilian lawyers are being educated is in shambles. Generally speaking, Brazilian legal education has, overall, become degraded and provincial. Yet, Brazilian international trade lawyers, unlike Brazilian IP-lawyers, have overcome their deficient legal training by seeking legal education abroad. By traveling overseas, especially to …

Graffitti And The Visual Artists Rights Act, Amy Wang

Washington Journal of Law, Technology & Arts

Common adornments on the sides of freight trains, highway underpasses, and dark alleyways, aerosol paint designs now also boast recent appearances on high-fashion runways, in Top 40 music videos, and even at sophisticated art auctions. Graffiti, by any other name, is still generally associated with gang activity. However, the acceptance of street art by pop culture has legitimized spray painting as another expression of modern art and aerosol artists have proven they deserve recognition. Nonetheless, while intellectual property law extends protection to benefit other artists, its application is limited as a recourse for graffiti artists. Why? Because the irony of …

The Broken System Of Parallel Patent Proceedings: How To Create A Unified, One-Judgment System, Christopher Ilardi

Cardozo Law Review

No abstract provided.

Patentability Of Micro-Organisms, Diamond V. Chakrabarty, Ann Amer Brennan

Akron Law Review

The decision rendered by the Supreme Court in Diamond v. Chakrabarty allows the new science of biotechnology to come out of the closet and to take its place in the public domain with other scientific achievements that have, for better or for worse, shaped the industrial life of the United States. It is probable that the products which will result from this emerging science will affect each of us in some way during our lifetimes.

The Protection Of Property Rights In Computer Software, Edward W. Rilee

Akron Law Review

During the last decade a number of attempts have been made by the courts in the realm of patent and copyright law to settle the issue of the protection of property rights in computer software. These traditional methods of protection, however, have not been able to assimilate this relatively new technological invention. Likewise, at the start of a new decade, little or no progress towards a comprehensive form of software protection can be detected. This paper will examine the problems associated with using federal patent or copyright law to provide computer software protection and discuss why state trade secret protection …

Patent Law Reform Via The Federal Courts Improvement Act Of 1982: The Transformation Of Patentability Jurisprudence, Timothy J. O'Hearn

Akron Law Review

The Federal Courts Improvement Act was signed into law on April 2, 1982. Set for an effective date of October 1, 1982, the result of this enactment has been the merger of the Court of Customs and Patent Appeals and the Court of Claims into a new appellate federal court: the Court of Appeals for the Federal Circuit. Unlike most appellate courts, the jurisdiction of the new Federal Circuit is determined primarily by subject matter, rather than geography. As a result, this change in the federal judiciary will be felt directly in only a few special legal subject areas. Among …

Protecting The High-Tech Frontier: The Need For Stronger Process Patent Laws, Bruce Kramer

Akron Law Review

But difficulties exist in transforming technological possibilities into realities. Aside from scientific and engineering problems, legal obstacles stand in the way of technological development. One major legal impediment is the lack of protection afforded by U.S. process patent laws. All too often, foreign companies infringe on process patents obtained by American companies. For example, Sohio developed a process to manufacture ceramic heat seals for turbine engines and obtained a patent on it, but Japanese competitor Kyocera soon entered the market with a similar process." Other major companies which claim their process patents have been violated include Allied-Signal, Corning Glass Works, …

In Re Newman: The Federal Circuit Dismantles An Obstacle For Perpetual Motion Patent Applicants, Bruce Kramer

Akron Law Review

This note first gives a general background on perpetual motion, because a basic understanding of the subject is helpful in getting a good perspective on the case. Next, the note provides the factual setting of the case leading to the court's decision. Then, the note examines the rationale the court used in reaching its decision. Lastly, the note provides additional insight into the legal problems posed by perpetual motion, both in general and in the In re Newman case in particular.

Pirates Or Privateers: Examining The Risks Of Conflicting International Regimes Through The Lens Of U.S.-Gambling, Eric A. Heath

Georgia Journal of International & Comparative Law

No abstract provided.

You Can't Always Get What You Want But Digital Sampling Can Get What You Need!, Ronald Mark Wells

Akron Law Review

This comment will examine copyright law, its role in the popular music industry, and its relationship with digital sampling. To lay the groundwork, Part I will examine the function of copyright law as it relates to musical compositions. Part II will then peruse the area of sound recordings. Finally, Part III will take a critical look at digital sound sampling and its legitimacy in relation to present copyright law

Shifting Sentiments Toward Antitrust Enforcement: The Impact Upon Antitrust Enforcement In Licensing Of Patented Technology Arrangements Containing Tying Agreements, Michael L. Jordan

Akron Law Review

Nothing so drastic as the repeal of the antitrust laws has occurred. However, considerable leeway exists for changing attitudes to alter judicial interpretation and government enforcement of the relevant statutes. This comment scrutinizes one antitrust issue with potential international significance: tying arrangements in licensing of patented technology. This comment also analyzes the impact of changing attitudes on antitrust law enforcement in this area.

Film Artists Bushwhacked By The Coloroids: One-Hundredth Congress To The Rescue?, Nicholas Swyrydenko

Akron Law Review

The late, great film director, John Huston, in a videotaped speech prepared specially before his death for presentation at a Senate hearing on the issue of the colorization of black and white films, raged that he and other film artists, who had worked to produce such classic films as The Maltese Falcon, were being "bushwhacked by the coloroids," and he pleaded with Congress to step in to preserve that work.' This comment will trace the response of the One-Hundredth Congress to the pleas of John Huston and other film artists to preserve the original integrity of their films, and …

The Human Genome: A Patenting Dilemma, Pamela Docherty

Akron Law Review

This Comment will address the conflict between the U.S. patent laws and biotechnology by focusing on the NIH patent application.

The first part of this Comment discusses the objectives and statutory requirements of the patent system, which the NIH application purportedly did not meet. Next, this Comment focuses on the debate between NIH and its detractors. It explains NIH's reasons for its actions and discusses the criticisms leveled at the agency. Finally, this Comment presents solutions to the problems that have been uncovered by this debate regarding the patentability of genes.

Hilmer Doctrine And Patent System Harmonization: What Does A Foreign Inventor Have At Stake?, Kevin L. Leffel

Akron Law Review

The following discussion begins with a historical analysis that outlines the boundaries and illustrates the basis of Hilmer doctrine. Examples of the effects of Hilmer doctrine are presented as part of that discussion. Next, effects of the application of Hilmer doctrine after an interference are discussed followed by an analysis of the Patent Harmonization Act of 1992.

Copyright Infringement Of Musical Compositions: A Systematic Appproach, E. Scott Fruehwald

Akron Law Review

This article addresses the problems that courts face when dealing with copyright infringement of musical compositions. Infringement of music presents special problems for judges and juries because music is an intuitive art that is nonverbal and nonvisual. Consequently, traditional methods of establishing infringement are often unreliable when applied to music.

This paper will concentrate on the question of whether a composition that is similar to, but not the same as, another work infringes on the other work. I This inquiry is both qualitative and quantitative. First, one must establish that the first work employs material from the second work. Determining …

Eldred & The New Rationality, Brian L. Frye

Law Faculty Scholarly Articles

Historically, the rational basis test has been a constitutional rubber stamp. In Eldred v. Ashcroft and Golan v. Holder, the Supreme Court applied the rational basis test and respectively held that Congress could extend the copyright term of existing works and restore copyright protection of public domain works, despite evidence that Congress intended to benefit copyright owners at the expense of the public. But in Lawrence v. Texas and United States v. Windsor, the Supreme Court seems to have applied the rational basis test and held that state and federal laws were unconstitutional because they were motivated by …

Gray Market Goods Produced By Foreign Affiliates Of The U.S. Trademark Owner: Should The Lanham Act Provide A Remedy?, Steven M. Auvil

Akron Law Review

I shall argue that, with limited exceptions, the problem posed by genuine gray market imports from an affiliated source is not a trademark problem per se, and as such federal relief must come from Congress in the form of sui generis legislation. First, I shall briefly examine the historical background of this problem and discuss the debate leading up to the K Mart decision. Second, I shall discuss the nature of the trademark right, provisions under the Lanham Act that safeguard that right and several illustrative gray market cases decided thereunder. Third, I shall discuss the relationship between the trademark …

The "On-Sale" Bar To Patentability: Actual Reduction To Practice Not Required In Pfaff V. Wells Electronics, Inc., Daniel J. Whitman

Akron Law Review

A patent grants to an inventor the exclusive right to prevent others from making, using, or selling his invention throughout the United States. However, an inventor is statutorily barred from receiving a patent for an invention that was “on sale” prior to one year before his U.S. filing date. An offer to sell cannot bar patentability until an invention exists. The general issue in applying the “on sale” bar is “[a]t what point is the invention sufficiently developed such that, coupled with an offer to sell, the inventor’s commercial activities invoke the on sale bar?” The United States Supreme Court’s …

Human Creativity For Economic Development: Patents Propel Technology, Robert M. Sherwood

Akron Law Review

Intellectual property both leads and lags the development of new technology. It lags in the sense that developments usually precede the law. Today science is accelerating so rapidly that the lawyers and policy analysts can barely grasp what the new questions are, much less supply answers. How are we to adapt the historic forms of protection to deal with new things like patents for genetically modified life forms, or for the Internet? Yet, this process of adaptation is not new. There was a time when maps were all the rage in Europe and judges puzzled over how much difference was …

The Mouse That Trolled: The Long And Tortuous History Of A Gene Mutation Patent That Became An Expensive Impediment To Alzheimer's Research, Tania Bubela, Saurabh Vishnubhakat, Robert Cook-Deegan

Faculty Scholarship

This case study presents the tale of the academic discovery of a rare mutation for early-onset Alzheimer's disease that was patented by a sole inventor and licensed to a non-practicing entity (NPE), the Alzheimer's Institute of America (AIA). Our aims are (1) to relate this story about patents, research tools, and impediments to medical progress, and (2) to inform ongoing debates about how patents affect research, disposition of university inventions, and the distribution of benefits from publicly funded research. We present an account of the hunt for Alzheimer's genes, their patenting, assignment, and enforcement based on literature, litigation records and …

Copyright Tensions In A Digital Age, John D. Shuff, Geoffrey T. Holtz

Akron Law Review

The rapid and exponential expansion of our ability to duplicate and disseminate information by digital means has rejuvenated inherent tensions in the law pertaining to copyright and has created some new ones. Not since the advent of radio in the early 1900s have such tensions come so squarely into focus. Even though courts are rarely, if ever, called upon to address certain of these tensions since the passage of the Copyright Act of 1976, they are being called upon to do so now

Festo Corp. V. Shoketsu Kinzoku Kogyo Kabushiki Co.: A Fog Between The Bars, Mark R. Hull

Akron Law Review

This Note examines the interplay between the judicially-created patent law rules of prosecution history estoppel and the doctrine of equivalents. Part II explores the development of these rules as well as their effects and underlying goals. Part II also discusses landmark Supreme Court decisions regarding the doctrine of equivalents and prosecution history estoppel and how the Federal Circuit has applied these rules. Part III discusses the United States Supreme Court decision in Festo Corporation v. Shoketsu Kinzoku Kogyo Kabushiki Co.

Finally, Part IV analyzes the Festo decision, explains that the decision will likely increase the cost and complexity of patent …

Know Thyself As You Know Thy Enemy: Setting Goals And Keeping Focus When Mediating Ip Disputes, Michael H. King, Peter N. Witty

Akron Law Review

Therefore, while we briefly discuss the expected improvements to the mediation process following the enactment of the Uniform Mediation Act, we want to put aside the reality that mediation can work in some situations and instead focus on identifying and overcoming various impediments to a successful mediation. Specifically, we want to address two points: (1) the importance of defining realistic objectives for the process, and (2) the importance of staying focused on obtaining those objectives.

I'Ll Make Him An Offer He Can't Refuse: A Proposed Model For Alternative Dispute Resolution In Intellectual Property Disputes, Kevin M. Lemley

Akron Law Review

This article will discuss alternative dispute resolution in intellectual property disputes. A conceptual approach will be applied in an effort to better formulate the parties’ strategies towards litigation or alternative dispute resolution. Alternative dispute resolution (ADR) is a maturing area of the law, and its application to intellectual property disputes is complicated.1 These complications make any analysis difficult to organize. This article will discuss the underlying components of ADR and intellectual property disputes in a step-by-step fashion. Part I of this article discusses intellectual property rights and presents two conceptual interests underlying these rights. Deciding whether to litigate or pursue …

Antitrust Issues In The Litigation And Settlement Of Infringement Claims, Deborah A. Coleman

Akron Law Review

Although the owner of intellectual property rights is privileged to enforce those rights through litigation and to settle such litigation on satisfactory terms, infringement actions or case settlements can create liability for antitrust violations or unfair competition. Most importantly, an agreement in restraint of trade is not sheltered from antitrust scrutiny because it is made in the context of settling threatened or actual infringement litigation. That a patent confers a limited legal monopoly in a product, method or process is only one fact that is taken into account in evaluating whether the terms under which infringement litigation is settled unfairly …

The Disclosure Requirements Of The 1952 Patent Act: Looking Back And A New Statute For The Next Fifty Years, Harold C. Wegner

Akron Law Review

The 1952 Patent Act was a major event in terms of cutting and pasting together the various patent laws from the previous eighty or so years into the first patent law codification of the twentieth century. The great bulk was a mere codification of principles, going back in some cases to the earliest patent laws of the eighteenth century, that was the work of P. J. Federico.2 Of the three major changes made to the patent law in 1952, each was primarily the work of the late Giles Sutherland Rich,3 with his revision of Section 112 to introduce “means” claiming-perhaps …

The Written Description Requirement, Robert Greene Sterne, Patrick E. Garrett, Theodore A. Wood

Akron Law Review

It is now well accepted that this provision of the 1952 Patent Act (Patent Act) includes a written description requirement that is separate and distinct from the enablement requirement. Thus, a specification may enable one of ordinary skill to make or use a claimed invention, but still not adequately describe the invention in a way that the public knows that the inventor was in possession of the claimed invention at the time of filing the application. For example, a patent specification that discloses various patterns of eight wooden shingles, does not necessarily provide written description for a claim amendment that …