Intellectual Property Law Commons^™

The Expansion Of Statutory Subject Matter Under The 1952 Patent Act, Robert Greene Sterne, Lawrence B. Bugaisky

Akron Law Review

It is quite surprising that a mere four words were sufficient to establish a fundamental framework for defining the categories of patentable inventions. This framework has successfully stood for a period of more than 200 years. The 1793 Patent Act defined the four classes of statutory subject matter as “art, machine, manufacture, or composition.” The 1952 Patent Act (“Patent Act” or “1952 Act”) replaced the term “art” with “process,” resulting in the current language of 35 U.S.C. § 101.

The legislative history of the Patent Act states that “art” as used in § 101: “is interpreted by the courts to …

Selecting An Appropriate Damages Expert In A Patent Case; An Examination Of The Current Status Of Daubert, Michael H. King, Steven M. Evans

Akron Law Review

The determination of damages is a critical part of any patent case. As a plaintiff, maximizing awarded damages, whether financial or injunctive, is the ultimate objective of the patent case. As a defendant, minimizing or preventing any awarded damages is the ultimate objective.

Multimillion dollar verdicts in patent cases are now the norm and hundred plus million dollar verdicts are becoming more frequent. A lawyer who fails to devote sufficient time to this critical component of a case does the client a disservice.

There are generally two types of damages in patent cases: lost profits and a reasonable royalty. A …

Comment: The Tiger Woods Case - Has The Sixth Circuit Abandoned Trademark Law? Etw Corp. V. Jireh Publishing, Inc., Joseph R. Dreitler

Akron Law Review

For more than fifty years, the United States Court of Appeals for the Sixth Circuit vigilantly protected the intellectual property rights of trademark owners and persons seeking protection of their privacy and rights of publicity. Less than two years ago, that changed. In a turnaround remarkable for its suddenness and completeness, the court veered away from protecting intellectual property rights. Perhaps the reason for the departure lies in the stinging reversals of two of its decisions by the United States Supreme Court, or perhaps it lies in a string of admittedly questionable cases brought by overreaching plaintiffs. Regardless of the …

Alice In Wonderland Meets The U.S. Patent System, Jay Dratler Jr.

Akron Law Review

The attached article outlines in some detail why I think it matters in two particular fields—software and business methods—in which the PTO has issued, and the Federal Circuit has upheld, what I think are too many patents on non-inventions. The following remarks take a broader and longer-range view of patents generally.

The first reason why having a properly balanced patent system matters relates to the historical period in which we find ourselves. The world is now in the process of transferring the self-evident benefits of robust innovation, free markets, and free trade from Anglo-American and other advanced societies to the …

The Case For Capsl: Architectural Solutions To Licensing And Distribution In Emerging Music Markets, Cody Duncan

Duke Law & Technology Review

Compulsory licensing in music has paved the way for a limited class of new noninteractive services. However, innovation and competition are stifled in the field of interactive or otherwise novel services due to high transaction costs inherent in direct licensing. While the creation of a new compulsory license available to a wider array of services may facilitate growth and diversity in new markets, it is unlikely that the legislative process can deliver a new compulsory regime in time to serve relevant interests. Furthermore, the risk exists that legislation written in response to contemporary technology will likely fail to recognize the …

Phillips V. Awh: Changing The Name Of The Game, David Potashnik

Akron Law Review

The Federal Circuit granted an en banc hearing of Phillips v. AWH Corp. to address the dichotomy existing in the Circuit’s jurisprudence. Because of the impact of claim construction on every litigated patent, Phillips has been deemed one of the most important cases in patent law since the landmark case of Markman v. Westview Instruments Inc. in the mid-1990s. In order to help the reader understand the implications of the case, the remainder of this Note is divided into four sections. Section II details the history and development of claim construction. Section I II discusses the Phillips case, including the …

Intellectual Property Rights In Virtual Environments: Considering The Rights Of Owners, Programmers And Virtual Avatars, Woodrow Barfield

Akron Law Review

An emerging issue in online role-playing games is whether the licensor or participant owns the virtual property (such as a virtual avatar) created while the game is being played...Such rights have real world consequences for the objects created in the virtual world...Commercial software has been designed to allow people to create their own interactive, emoting 3D avatar using photographs of their individual faces, and their own unique voice as templates...Virtual environments can be designed for single inhabitants, such as a solo flight trainee, or for many, simultaneous participants... Further, people who spend significant amounts of time in virtual environments are …

A Brief Essay On The Importance Of Time In International Conventions Of Intellectual Property Rights, Vincenzo Vinciguerra

Akron Law Review

This essay will briefly address the issue of time in some fundamental international conventions on Intellectual Property Rights (IPRs). Primarily, this article concentrates on four current international conventions and discusses the importance and international relevance of the time factor in each convention. The first part introduces two characteristic ideas of time inherited from philosophical thought. It also describes how “linearity,” one characteristic time can assume, might be a way to think of the legal system. This article does not delve into philosophical aspects of this issue; they are merely a cue to analyze the issue of time in the context …

Ebay V. Mercexchange: Traditional Four-Factor Test For Injunctive Relief Applies To Patent Cases, According To The Supreme Court, Sue Ann Mota

Akron Law Review

This article will examine the eBay litigation and landmark Supreme Court decision and its important impact. This decision may temporarily forestall patent reform by removing the threat of near-mandatory injunctive relief if patent infringement and validity is found and will let the court weigh the factors when deciding patent injunctive relief.

The "Printed Publication" Bar After Klopfenstein: Has The Federal Circuit Changed The Way Professors Should Talk About Science?, Sean B. Seymore

Akron Law Review

The key question for universities is how Klopfenstein will affect the way that science professors talk about science. To answer this question, Part II explores the conflict between a professor’s need to disseminate research and the university’s potential interest in seeking patent protection. The research talk, one of the most important forums for communication in the science community, is an objective measure of research success and scholarship. When a professor produces a patentable invention, university TTOs must balance the professor’s need to discuss the research against the strict statutory requirement to file within one year of public disclosure. If a …

The Medical Liability Exemption: A Path To Affordable Pharmaceuticals, Carrie E. Rosato

Florida State University Law Review

Patent monopolies are tolerated because we believe they promote progress that benefits society. What should be done when these monopolies actually increase human suffering? Drug prices in America are fifty to eighty percent higher than the rest of the world, meaning many cannot afford drugs that will improve or even save their lives. When striking a balance between the interests of the patent holder and that of the public, it is important to bear in mind that the rewards granted to patentees are secondary to the public benefit derived from their labors. The ideal solution would come from Congress creating …

The Scope Of Copyright Justice: A Psychological View Of The Sociolegal Construction Of A Pecuniary Human Right, David A. Bergan

Cardozo Public Law, Policy & Ethics Journal

No abstract provided.

United States Veteran's Affairs Agency (Va) Response To The Office Of Science And Technology Policy Memo, 2013: Public Access Plan (July 2015)

Copyright, Fair Use, Scholarly Communication, etc.

VA response to OSTP memo, 2013: Public Access Plan (July 2015)

Copyright As Charity, Brian L. Frye

Law Faculty Scholarly Articles

Copyright and charity law are generally considered distinct and unrelated bodies of law. But they are actually quite similar and complement each other. Both copyright and charity law are intended to increase social welfare by solving market and government failures in public goods caused by free riding. Copyright solves market and government failures in works of authorship by providing an indirect subsidy to marginal authors, and charity law solves market and government failures in charitable goods by providing an indirect subsidy to marginal donors. Copyright and charity law complement each other by solving market and government failures in works of …

Copyright Complements And Piracy-Induced Deadweight Loss, Jiarui (Jerry) Liu

Indiana Law Journal

Conventional wisdom suggests that copyright piracy may in effect reduce the deadweight loss resulting from copyright protection because it allows the public unlimited access to information goods at a price closer to marginal cost. It has been further contended that lower copyright protection would benefit society as a whole, as long as authors continue to receive sufficient incentives from alternative revenue streams in ancillary markets, for example, touring, advertising, and merchandizing. By evaluating the empirical evidence from the music, performance, and video game markets, this Article highlights a counterintuitive yet important point: copyright piracy, while decreasing the deadweight loss in …

Anatomy Of A Design Regime, Kathryn C. Moore

Indiana Journal of Global Legal Studies

Since the European Union adopted uniform sui generis design rights, an increasingly complex system of cumulative and overlapping intellectual property rights has emerged. While such harmonization offers several benefits, analyzing the interpretation and application of narrow legal requirements within the EU Community Design Rights may indicate whether such benefits will actually be realized. This paper examines Regulation 6/2002's definitions of "informed user" and "overall impression" as they apply to registered designs. After summarizing relevant case law and considering underlying policy goals of the EU Community design legislation, this paper explores whether these definitions could be more efficient and intellectually honest …

Ip As Metaphor, Brian L. Frye

Law Faculty Scholarly Articles

Everybody hates intellectual property trolls. They are parasites, who abuse intellectual property by forcing innovators to pay an unjust toll. Even worse are intellectual property pirates. They are thieves, who steal intellectual property by using it without the consent of its owner. By contrast, everybody loves innovators. They are farmers, entitled to reap what they have sown and enjoy the fruits of their labor.

But trolls, pirates, and farmers are metaphors. A "troll" abuses intellectual property only if its ownership or use of that intellectual property is unjustified, a "pirate" steals intellectual property only if the ownership of that intellectual …

Privatizing Human Rights? Creating Intellectual Property Rights From Human Rights Principles, David S. Welkowitz

Akron Law Review

This article focuses on one human rights treaty, the Convention, and the possible uses of its provisions to secure and expand intellectual property rights (“IP rights”). Although the Convention does not contain any provision specifically referencing IP rights, it does contain several provisions that could be used to expand IP rights. Furthermore, the existence of a substantial body of interpretive case law from the ECHR affords us a more detailed perspective on the manner in which the Convention could be used to further IP rights. Finally, the group of countries adhering to the Convention, though all part of Europe, represent …

When Tigers Bare Teeth: A Qualitative Study Of University Patent Enforcement, Jacob H. Rooksby

Akron Law Review

Part I provides a brief background on patent infringement litigation involving university plaintiffs, including information on the activity’s costs, historical incidence, and how leading voices within the technology transfer community view the activity. Part II details the methodology used in the study conducted for this article. It describes the research questions that guided the study, its theoretical framework, information on participants and how they were selected for inclusion, and other information concerning data collection. Finally, Part III presents and discusses the study’s findings, which are arrayed thematically.

Beyond Incentives: Expanding The Theoretical Framework For Patent Law Analysis, Ofer Tur-Sinai

Akron Law Review

This Article challenges this one-dimensional approach and calls for a more frequent use of non-utilitarian considerations in discussions of the patent system. To be sure, this Article does not call for the complete abolition of economic analysis of patent law, which, despite its shortcomings, remains the most important tool in the evaluation of legal rules in this arena, where the vast majority of the players are motivated primarily by economic considerations. However, it does call for a broader use of non-economic considerations, particularly those embedded in the labor theory and the personality theory, alongside the economic analysis. As will be …

Initial Impressions: Trademark Protection For Abbreviations Of Generic Or Descriptive Terms, Mary Lafrance

Akron Law Review

This article compares the approaches which different federal courts have adopted to address the distinctiveness of abbreviations where the underlying expression or information conveyed by the abbreviation is unprotectable either because it is generic or because it is descriptive and lacks secondary meaning. While this study is not intended as a comprehensive survey, it is designed to highlight the inconsistencies in approaches. The article concludes with some observations about the patterns and trends emerging from the unsettled decisional law.

Second Level Agreements, Yafit Lev-Aretz

Akron Law Review

This Article analyzes in-depth a significant practice that has not been recognized in legal scholarship. Their unique structure and the way in which Second Level Agreements have developed within the relatively short time of their existence have important consequences for the various players in the copyright market...The Article also offers a normative assessment of the benefits and shortcomings of the Second Level Agreements practice...The Article then carefully looks at the future of Second Level Agreements while reviewing four potential catalysts—the shift towards premium content, the Viacom v. Google ruling, the move towards disintermediation, and the rise of noncommercial licensing system. …

Sirius Xm Radio, Inc., Defendant: The Case For A Unified Federal Copyright System For Sound Recordings, Brian G. Shaffer

Pace Law Review

This article observes the surviving gap between state and federal protection of music recordings through the lens of the current litigation against Sirius XM. Part II sets out a history of copyright protection in the music industry. Part III outlines the relevant provisions of the federal Copyright Act and the Digital Millennium Copyright Act and the role played in the federal system by the Copyright Royalty Board. Part IV examines the pertinent statutory property protection of music recordings in the state of California. Part V then discusses the merits of the current lawsuits against Sirius XM. After considering the potential …

Freedom In My Heart, Karen Sandler

Events

No abstract provided.

Brief Of Amici Curiae Intellectual Property Law Professors In Support Of Appellees Canton Phoenix, Inc. And Bing Pan Zhu, Mark P. Mckenna, Joseph C. Gratz

Court Briefs

No. 14-36018
Slep-Tone Entertainment Corporation v. Canton Phoenix Incorporated

On Appeal from the United States District Court for the District of Oregon 3:14-cv-00764-PK Honorable J. Mosman

From the Summary of Argument

The District Court correctly determined that Slep-Tone’s trademark infringement and unfair competition claims are barred by Dastar v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003).

Slep-Tone’s fundamental complaint is about unauthorized use of its intangible content—karaoke tracks. Under Dastar, however, only confusion regarding the source of physical goods is actionable under the Lanham Act; confusion regarding the source of the karaoke tracks or their authorization …

Aereo, In-Line Linking, And A New Approach To Copyright Infringement For Emerging Technologies, Shannon Mcgovern

Catholic University Law Review

In an ever-changing technological landscape, strictly adhering to the language and definitions of the Copyright Act in cases involving emerging technologies may contravene the purpose and intent of copyright law. However, the Supreme Court’s 2014 opinion in American Broadcasting Cos. v. Aereo Inc. puts forth a commercial interest rationale that suggests copyright infringers may no longer be able to avoid liability based on perceived technological loopholes that have typically absolved online infringers of infringement liability. This Note argues that Aereo’s commercial interest rationale paves the way for a new approach to technologically complex copyright cases, particularly where in-line linking …

Trade Secrets Registry, Chagai Vinizky

Pace Law Review

The present article considers four aspects in which the trade secret method is less efficient than the patents method: litigation costs, transaction costs, financing costs, and employment costs. The main part of the article is devoted to the proposal of establishing a particular type of trade secrets registry, with the intention that it will reduce the above-mentioned costs and will improve the efficiency of the trade secret method. I propose a structure for the registration of trade secrets that is likely to solve most of the problems left unresolved by the escrow companies and the Indonesian legislation. A trade secret …

Managing Change In The Copyright Environment, Margaret Ann Wilkinson, Rob Tiessen

Law Presentations

Copyright holders and their agents intersect with libraries on many levels and in many ways. Many are represented by collective organizations. These organizations can sell individual licenses to uses of their works, or sell blanket licenses to packages of uses, or, indeed, apply to the Canadian Copyright Board to have tariffs imposed upon entire classes of libraries or institutions operating libraries. While the ways in which copyrighted materials are offered to libraries does not lie within a library's control, the response to a given offering does. This presentation will discuss the range of possible reactions to overtures from publishers, collectives …

Trade Secret Hacking, Online Data Breaches, And China's Cyberthreats, Peter K. Yu

Faculty Scholarship

Online hacking from China, Iran, North Korea, Russia, and other parts of the world has caught the attention of U.S. policymakers, commentators, and the American public. For example, the discussion of the systematic attacks launched by potentially government-sponsored Chinese hackers reinforces the view that China is using all means necessary to compete against the United States. Most recently, the unprecedented cyberattack on Sony's movie studio also delayed and scaled back the nationwide theatrical release of the film The Interview. This attack led President Obama to call for greater cooperation between the government and the private sector to protect cybersecurity and …

Sherlock Holmes And The Case Of The Lucrative Fandom: Recognizing The Economic Power Of Fanworks And Reimagining Fair Use In Copyright, Stacey M. Lantagne

Michigan Telecommunications & Technology Law Review

Fan culture, in the form of fan-created works like fanfiction, fanart, and fanvids, is often associated with the Internet. However, fandom has existed for as long as stories have been told. Sir Arthur Conan Doyle’s Sherlock Holmes stories inspired a passionate fandom long before the age of the Internet. Despite their persistence, fanworks have long existed in a gray area of copyright law. Determining if any given fanwork is infringing requires a fair use analysis. Although these analyses pay lip service to a requirement of aesthetic neutrality, they tend to become bogged down by unarticulated artistic judgments that hinge on …