Intellectual Property Law Commons^™

The 101 Conundrum: Creating A Framework To Solve Problems Surrounding Interpretation Of 35 U.S.C. § 101, Robert Mazzola

Chicago-Kent Journal of Intellectual Property

No abstract provided.

The X Patents: Patents Issued Under The Patent Acts Of 1790 & 1793, Robert Berry

Librarian Publications

The earliest United States patents— sometimes called “name and date patents” because they were not numbered—are distinctive in many respects. Patent specifications were not required to include claims until the Patent Act of 1870. Moreover, while the 1790 Act required a substantive examination by a Patent Board, that requirement ended with the 1793 Act, when it was deemed too burdensome. Thereafter the evaluation of the sufficiency of patent specifications was left to the courts.

Richard Prince, Author Of The Catcher In The Rye: Transforming Fair Use Analysis, Brockenbrough A. Lamb

University of Richmond Law Review

No abstract provided.

Smu Consolidates Intellectual Property (Ip) Expertise, Launches New Centre For Ip Research, Singapore Management University

SMU Press Releases and News

The creation, management and protection of intellectual assets and related rights (IPRs) have moved to the top of national, regional and global agendas over the last 20 years. Today, IP has become a key driver of global economic growth. The Singapore Government has also identified IP as a new growth area for Singapore and is on a mission to develop the country as an IP hub with vibrant IP industries. It is against this backdrop that SMU today launches the new Applied Research Centre for Intellectual Assets and the Law in Asia (ARCIALA). The launch event was graced by Guest-of-honour …

Development Of Collective Trademark For Batik Industry In Kampung Batik Laweyan (Laweyan Batik’S Village), Solo, Agus Sardjono, Brian Amy Prasetyo, Derezka Gunti Larasati

Indonesia Law Review

Previous research found that the individual trademark system has not been effectively utilized to support the business of batik Smal Medium Enterprises (SMEs), particularly in several batik industry centers in Java, namely Bantul in Yogyakarta province, Kauman in Pekalongan and Laweyan in Solo. However, the fact that those SMEs gather in a community, organization, or kinships bring potentials for development of collective trademarks, which can address the problems that individual trademark cannot anticipate. The development of collective trademark can also be a strategy to anticipate the free-trade ‘attack,’ i.e. imported textiles with batik patterns/motifs; which are not the original Indonesian …

Expired Patents, Saurabh Vishnubhakat

Catholic University Law Review

This article presents a comprehensive empirical description of the public domain of technologies that have recently passed out of patent protection. From a new dataset of over 300,000 patents that expired during 2008–2012, the study examines technological, geographical, and procedural traits of newly public inventions as a basis for exploring the social value associated with their competitive use. Moreover, comparing these inventions to inventions newly patented during the same period enables more specific discussion of how the balance of innovation in the United States continues to change.

Restoring The Fact/Law Distinction In Patent Claim Construction, J. Jonas Anderson, Peter S. Menell

NULR Online

Two decades ago, the Supreme Court sought to promote more effective, transparent patent litigation in Markman v. Westview Instruments by ruling that “the construction of a patent, including terms of art within its claim, is exclusively within the province of the court.” In so doing, the Court removed interpretation of patent claims from the black box of jury deliberations by holding that the Seventh Amendment right to a jury trial did not extend to patent claim construction. Failing to find clear historical evidence of how claim construction was handled in 1791, the Court turned to “the relative interpretive skills of …

[Un]Happy Together: Why The Supremacy Clause Preempts State Law Digital Performance Rights In Radio-Like Streaming Of Pre-1972 Sound Recordings, Julie L. Ross

Georgetown Law Faculty Publications and Other Works

Lovers of the music of Frank Sinatra, Elvis Presley, Etta James, and hundreds of other recording artists whose records were made before February 15, 1972, may soon have a hard time hearing these great artists on any satellite or Internet radio service. Recently, two federal district courts have found that state laws were violated when satellite radio broadcaster Sirius XM Radio included pre-1972 sound recordings in its broadcasts without the owners’ permission, but these courts did not consider-–and the parties did not argue-–how the Supremacy Clause applies to those state law claims. This article argues that state laws purporting to …

Federal Circuit Addresses Damages In The Hatch-Waxman Context, Matthew D'Amore

Cornell Law Faculty Publications

No abstract provided.

Victor Can Keep His Little Secret Unless Victoria's Secret Is Actually Harmed, Shafeek Seddiq

Touro Law Review

No abstract provided.

When Is A Patent Exhausted? Licensing Patents On A Claim-By-Claim Basis, Lucas Dahlin

Chicago-Kent Law Review

The patent exhaustion doctrine is meant to protect legitimate purchasers of patented items from post-sale restrictions imposed by patent owners. The courts, however, have recently expanded the doctrine of patent exhaustion by holding that the sale of a device which “partially” practices a patent exhausts that patent in its entirety. This holding essentially precludes patent owners from licensing their patents on a claim-by-claim basis. As inventions become more complex and require more parties working in concert to bring an idea to market, the inability to license patents on a claim-by-claim basis will lead to inventors being unable to fully monetize …

The Case Against Federalizing Trade Secrecy, Christopher B. Seaman

Scholarly Articles

Trade secrecy is unique among the major intellectual property (IP) doctrines because it is governed primarily by state law. Recently, however, a number of influential actors — including legislators, academics, and organizations representing IP attorneys and owners — have proposed creating a private civil cause of action for trade secret misappropriation under federal law. Proponents assert that federalizing trade secrecy would provide numerous benefits, including substantive uniformity, the availability of a federal forum for misappropriation litigation, and the creation of a unified national regime governing IP rights.

This Article engages in the first systematic critique of the claim that federalizing …

Markman Twenty Years Later: Twenty Years Of Unintended Consequences, Jerry A. Riedinger

Washington Journal of Law, Technology & Arts

The Federal Circuit’s Markman decision removed juries from the claim interpretation process, thereby revolutionizing patent law. Designed to provide greater certainty and predictability, Markman nevertheless produced unintended consequences, increasing ambiguity and complexity. By declaring claim interpretation an entirely legal issue, the Federal Circuit imposed intricate and even contradictory rules, many resulting from the Federal Circuit’s long insistence that no issues of fact existed, so that claim construction was entirely subject to de novo review. The uncertainty was compounded by rules focused on semantic quibbles unrelated to what was invented. Increased burdens and continuing uncertainty followed.

Kamil Kubik: The Artist And Copyright Observed, Elizabeth Townsend Gard, Yvette J. Liebesman

IP Theory

For over 60 years—from the time he fled his native Czechoslovakia in 1948 until his death in August 2011—Kamil Kubik created amazing oil paintings and pastels. His art graces the walls of The Breakers in Palm Beach, Florida, the Old Ebbett Grill in Washington, DC, and the homes of Presidents, Governors, and celebrities. Many of his works were also printed as lithographs and serigraphs, and sold at more affordable prices than the four-to-five figures that he received for the originals. Fortunately, he was not dependent on the sale of these prints, as most of the original works were unprotected by …

Copyright As Contract, Jeffrey L. Harrison

UF Law Faculty Publications

Copyright is essentially a contract between the author and the public with the government acting as the agent of the public. The consideration received by authors is defined by duration and breadth of exclusivity. The consideration for the public is the creation of a "work" that will be available on a limited basis for the life of the author plus 70 years and then available without limit after that. If there were no transaction costs at all, it would be possible to "pay" authors different amounts of exclusivity. Perhaps a greeting card would get one holiday season of exclusivity, if …

The Federal Question In Patent-License Cases, Amelia Smith Rinehart

Indiana Law Journal

The patent law has long recognized a patent owner’s ability to license some interest in the patent by granting to others permission to tread upon the patent owner’s property rights without legal consequence. When one of the parties to a patent license decides to seek remedies from the other party for a license harm, the resulting litigation may be a patent-infringement case with a contract issue or a contract case with a patent issue. In most cases, the patent owner brings her suit against the licensee in federal court, alleging that the licensee breached the license contract and, as a …

The Protection Of Performers Under U.S. Law In Comparative Perspective, Daniel Gervais

IP Theory

The majority opinion of the Ninth Circuit panel in Garcia v. Google, Inc. stands for the proposition that an actor has copyright in her performance. The case was described as horrific and generated a significant amount of traffic on listservs and social media.

In the opinion, Chief Judge Kozinski made three key points. First, that there was originality in the performance, as required under Feist. The Feist court found that creative choices were necessary to generate sufficient originality to warrant copyright protection. Using Feist as backdrop, the Garcia majority found that:

An actor’s performance, when fixed, is copyrightable if …

Copyright And Cross-Cultural Borrowing: Indo-Western Musical Encounters, Arpan Banerjee

IP Theory

This article traces the history of how Western rock musicians and hip-hop musicians, separated by many decades, have borrowed elements from Indian music. Conversely, the article also discusses how Indian film music composers have frequently, and rather blatantly, copied Western melodies. While cross-cultural borrowing raises complex socio-political questions, this article focuses on some practical legal questions that arise from such borrowing. The article discusses lawsuits filed by artists in India and the United States — from a much-publicized lawsuit against Dr. Dre by the Indian film music composer Bappi Lahiri, to a more recent lawsuit against another Indian film composer …

No Comment: Will Cariou V. Prince Alter Copyright Judges’ Taste In Art?, Christine Haight Farley

IP Theory

Even before Campbell v. Acuff-Rose Music, Inc. made transformativeness the name of the game in fair use law, judges have been in search of artistic speech in their copyright fair use determinations, especially in appropriation art cases. Judges often find themselves ascribing meaning both to the defendant’s work and the plaintiff’s work when comparing the two in order to determine whether defendant’s art is new. So while many commentators attribute appropriation artist Jeff Koons’s victory in Blanch v. Koons after a string of losses to the development in fair use law contributed by Campbell, I instead argue that …

Are The Courts Singing A Different Tune When It Comes To Music?: What Ever Happened To Fair Use In Music Sampling Cases?, Michael B. Landau

IP Theory

As "fair use" has become more common as a defense to copyright infringement, often successfully, it has not gained any ground in cases involving music sampling. In the years since Campbell v. Acuff-Rose Music, Inc., we have seen the introduction of "transformative use" to fair use analysis. "Transformative use" has led to the holdings that thumbnail reproductions of photographs, parodies of novels, parodies of advertisements, changed artworks, the inclusion of legal briefs in searchable databases, the inclusion of music in film, and the mass digitization of millions of books are all "fair use." Almost every day we read of …

Commentary: Revisiting The Derivative Works Exception Of The Copyright Act Thirty Years After Mills Music, Robert S. Meitus

IP Theory

No abstract provided.

Living Gardens, Living Art, Living Tradition, Roberta R. Kwall

IP Theory

Copyright protection in the United States begins from the moment of a work’s “creation.”1 Although this rule is codified in the statute, the underlying issues of how and when “creation” occurs are rarely, if ever, explored. Under the current law, as soon as an author creates a copyrightable work of authorship and fixes that work in a tangible medium of expression, the work is entitled to protection. This formulation ignores the critical issues of whether fluid works of authorship that are constantly evolving can be subject to copyright protection and, if so, what is the scope of such protection. Not …

Are We Serious About Performers’ Rights?, Mary Lafrance

IP Theory

Do performers have rights in the expressive works they help to create? Historically, the rights of performers have received far less attention that the rights of traditional authors. The law has been reluctant to recognize performers as authors and, to the extent that performers’ rights are recognized, they are secondary to, and more limited than, the rights of traditional authors. Recent developments, however, have brought performers’ intellectual property rights to the forefront. For a number of reasons, performers in the United States have increasingly begun to assert authorship rights in the works they help to create. In addition, recent international …

Pre-1972 Sound Recordings: Why Does The Law Treat Them Differently?, June M. Besek

IP Theory

No abstract provided.

United States Response To Questionnaire Concerning Remuneration For The Use Of Works: Exclusivity V. Other Approaches, Bart M.J. Szewczyk, June M. Besek

Kernochan Center for Law, Media, and the Arts

ALAI-USA is the U.S. branch of ALAI (Association Littèraire et Artistique Internationale). ALAI-USA was started in the 1980's by the late Professor Melville B. Nimmer, and was later expanded by Professor John M. Kernochan.

Andy Warhol’S Pantry, Brian L. Frye

Law Faculty Scholarly Articles

This Article examines Andy Warhol’s use of food and food products as a metaphor for commerce and consumption. It observes that Warhol’s use of images and marks was often inconsistent with copyright and trademark doctrine, and suggests that the fair use doctrine should in-corporate a “Warhol test.”

Utility Model Patent: An Essential And Improving Patent Scheme In China, Victor Wang

Cardozo Journal of International and Comparative Law

The note argues that China's utility model patent (UMP) system, despite criticism, serves as a beneficial tool for both domestic and foreign inventors, particularly small and medium-sized enterprises (SMEs). While commentators often view the UMP as detrimental to innovation policies, the system's low inventiveness threshold, quick file-to-grant process, and affordability make it a practical solution for protecting incremental inventions. The note contends that the UMP aligns with China's current status as a developing nation and supports its innovation ecosystem, contrary to claims that it hinders progress.

Clark Memorandum: Spring 2015, J. Reuben Clark Law School, Byu Law School Alumni Association, J. Reuben Clark Law Society

The Clark Memorandum

• Watchmen on the Tower (Elder D. Todd Christofferson)
• Studying Law in the Light (Brett G. Scharffs)
• On Becoming a Spiritual Athlete (Steve Young)
• The Copyright Predicament (Clark D. Asay)
• The Case Against the Supreme Court (Erwin Chemerinsky)

Cognitive And Aesthetic Functionality In Trademark Law, Justin Hughes

Cardozo Law Review

No abstract provided.

Silent Similarity, Jessica D. Litman

Articles

From 1909 to 1930, U.S. courts grappled with claims by authors of prose works claiming that works in a new art form—silent movies—had infringed their copyrights. These cases laid the groundwork for much of modern copyright law, from their broad expansion of the reproduction right, to their puzzled grappling with the question how to compare works in dissimilar media, to their confusion over what sort of evidence should be relevant to show copyrightability, copying and infringement. Some of those cases—in particular, Nichols v. Universal Pictures—are canonical today. They are not, however, well-understood. In particular, the problem at the heart of …