Intellectual Property Law Commons^™

Content, Purpose, Or Both?, Rebecca Tushnet

Georgetown Law Faculty Publications and Other Works

Most debates about the proper meaning of “transformativeness” in fair use are really about a larger shift towards more robust fair use. Part I of this short Article explores the copyright-restrictionist turn towards defending fair use, whereas in the past critics of copyright’s broad scope were more likely to argue that fair use was too fragile to protect free speech and creativity in the digital age. Part II looks at some of the major cases supporting that rhetorical and political shift. Although it hasn’t broken decisively with the past, current case law makes more salient the freedoms many types of …

(Don't) Give It Up Or Turnit A Loose: State Law Copyright Protection Of Pre-1972 Sound Recordings In Blank-Slate Jurisdictions Like Georgia, Payton M. Bradford

Georgia Law Review

The issue of pre-1972 sound recordings-devoid of federal copyright protection-has emerged as an important legal issue with changes in how musicians are collecting royalties for music. Sound recordings have a complicated and fragmented history under United States copyright law. While recognized as a separate form of creative work from musical compositions since the early twentieth century, they nonetheless remained unprotected as separate works under federal law until 1972. Any sound recordings fixed prior to February 15, 1972, however, remain unprotected under federal law and are subject to common law copyright or state statutes. A majority of states, including Georgia, lack …

Patent Law: Cases & Materials ~ Version 2.0, Joseph S. Miller

Books

The book contains edited cases, patent figures, and excerpts, along with brief introductions on patent law. This book is designed for use in close conjunction with a specific softcover hornbook published by Wolters Kluwer, Janice Mueller’s, Patent Law, Fourth Edition (Aspen Student Treatise Series 2013). If you decide to use this case collection to teach a course of your own — as I hope people will — please check back to ensure that you have the most up-to-date version. This version, which is 2.0, was posted in June 2015.

Reproduced and linked with permission of the author.

Here Come The Trade Secret Trolls, David S. Levine, Sharon Sandeen

Faculty Scholarship

Within the past few years, the U.S. federal government has been forced to confront the massive but hard-to-quantify problem of foreign and state-sponsored cyberespionage against U.S. corporations, from Boeing to small technology start-ups, and (as of this writing) perhaps Sony Pictures Entertainment. As part of that effort, Congress has taken up the Defend Trade Secrets Act and the Trade Secret Protection Act, which would create a private cause of action under the federal Economic Espionage Act. This Article addresses the possibility of introducing trolling behavior — using litigation as a means to extract settlement payments from unsuspecting defendants — to …

Legal And Social Implications Of The 3d Printing Revolution, Alexander J. Mendoza

CMC Senior Theses

ABSTRACT

Emerging 3D printing technologies bring with it the potential to transform everyday consumers into manufacturers of every product imaginable. However, this impending wave of newfound technological capability is bound to crash against our present conventional system of laws and regulations. In this paper, the strengths and weaknesses of our current intellectual property framework are examined, and its ability to tackle the future 3D printing market is assessed. Particular attention is paid to our modern formation of copyright and patent law, including an analysis of the Digital Millennium Copyright Act (DMCA), the Repair-Reconstruction Doctrine and other substantial legal protocol. The …

Trademark Extortion Revisited: A Response To Vogel And Schachter, Kenneth L. Port

Faculty Scholarship

Trademark bullying (a.k.a. trademark extortion) is a very controversial notion in trademark litigation in the United States. There, for sure, is a lot of illegitimate trademark infringement happening. Anecdotally, we also know that trademark holders often overstep in the assertion of their otherwise legitimate rights. For the first time, this article documents how large a problem trademark bullying is and how often it happens. Trademark bullying occurs when there is evidence that a trademark holder asserts a non-famous mark against a non-competing entity on or in connection with goods or services into which the plaintiff has no reasonable expectation of …

Revisiting Park ‘N Fly: In Pursuit Of Constraints On Trademark Bullies, Kenneth L. Port

Faculty Scholarship

The Supreme Court has been inextricably constraining the trademark right in the last 15 years. The Court first embarked in a wholesale expansion of the trademark right and now the Court is engaged in an effort to rein it back in.

The expansion started in 1985 with Park ‘N Fly v. Dollar Park & Fly. The Court there held that a descriptive and otherwise unenforceable trademark is made enforceable and the appropriate subject of an offensive action to enjoin a competing use if it is incontestable. The Court overruled Park ‘N Fly by implication with KP Permanent Makeup v. Lastings. …

Three Hundred Nos: An Empirical Analysis Of The First 300+ Denials Of Institution For Inter Partes And Covered Business Method Patent Reviews Prior To In Re Cuozzo Speed Technologies, Llc, 14 J. Marshall Rev. Intell. Prop. L. 112 (2015), Jarrad Wood, Jonathan Stroud

UIC Review of Intellectual Property Law

Tasked in 2011 with creating powerful new patent review trial regimes, the U.S. Patent and Trademark Office—through the efforts of their freshly empowered quasi-judicial body, the Patent Trial and Appeal Board—set to creating a fast-paced trial with limited discovery and concentrated efficiency. For two years, the proceedings have proved potent, holding unpatentable many of the claims that reached decisions on the merits. Yet a small subsection of petitions never make it past the starting gate, resulting in wasted time and effort on the parts of petitioners—and likely sighs of relief from the rights-holders. The AIA exempted institution decisions from appellate …

Public Standards And Patent Damages, 14 J. Marshall Rev. Intell. Prop. L. 199 (2015), Ben Johnson

UIC Review of Intellectual Property Law

Some markets require legislation in order to exist. The products and/or services offered by those markets may be covered by one or more letters patent. In certain of those markets, a situation arises in which a private party owns a right to exclude others from participating in that publicly-enabled market. These situations may be referred to “public standards.” Like their cousins in the private sector, public standards require special consideration when it comes to determining potential compensation to the patentee from its competitors. Following the lead of the Western District of Washington, this paper recommends a modification of the traditional …

Music As Cultural Heritage: Analysis Of The Means Of Preventing The Exploitation Of Intangible Cultural Heritage, 14 J. Marshall Rev. Intell. Prop. L. 228 (2015), Ronald Inawat

UIC Review of Intellectual Property Law

What started out as a law school requirement quickly snowballed into an analysis of the relationship between intellectual property and cultural heritage. I am a music guy at heart, having played piano since I was five years old, having composed one song (after multiple tries), and now working directly with musicians and artists. So when I began researching a topic for an article that would connect the dots between the cultural heritage and its respective music, I could only come across legal doctrine and articles that focused heavily on tangible art and artifacts. So what happened to the music? After …

Patently Preempted, 14 J. Marshall Rev. Intell. Prop. L. 268 (2015), Nick Vogel

UIC Review of Intellectual Property Law

Small and medium size businesses often take advantage of the latest advancements in technology. Doing so, however, now seems to carry the risk of patent infringement. In 2012, so called patent trolls, also known as Non Practicing Entities, began sending letters to small and medium sized businesses demanding money in exchange for a license to use allegedly patented technology. Many saw the demands as an abuse of the patent system. In response, states have passed or are considering statutes that outlaw patent holders from delivering a bad faith notice of infringement. The State of Vermont was the first to address …

Did Copyright Kill The Radio Star? Why The Recorded Music Industry And Copyright Act Should Welcome Webcasters Into The Fold, 14 J. Marshall Rev. Intell. Prop. L. 292 (2015), Patrick Koncel

UIC Review of Intellectual Property Law

The Copyright Act has not kept pace with the times, and the next revolution is going full stream ahead. Rather than adapt, entrenched interests at the Copyright table push for more protection, while new technologies are demonized and underrepresented. The resulting Copyright Act’s provisions relating to internet-based radio, ranging from passive over-the-air broadcasts to fully interactive music hosting sites, are a patchwork of accommodations and concessions to these interests. For all non-interactive services, licensing music typically occurs within the Copyright Act’s compulsory licensing system. For interactive webcasters, licensing negotiations take place with the copyright holders directly. These negotiations have proven …

How Law Defines Art, 14 J. Marshall Rev. Intell. Prop. L. 314 (2015), Derek Fincham

UIC Review of Intellectual Property Law

Defining art is both hard and subjective. But in lots of contexts the law must arrive at a just solution to hard and subjective questions. The art community has largely neglected the task of defining artworks. This neglect has crept into legal disputes, particularly those involving conceptual art which has loosened the limits of aesthetics, form, function, and composition. This makes crafting a definition of art even more challenging. Yet the Law has an important part to play in resolving art disputes—courts end up defining art no matter how cautiously they approach the question. They do not set out to …

A Rose By Any Other Name: How An Illusionist Used Copyright Law As A Patent, 14 J. Marshall Rev. Intell. Prop. L. 357 (2015), Sydney Beckman

UIC Review of Intellectual Property Law

Teller is a famous illusionist who, in recent years, has been performing a stage act with Penn Jillete in Las Vegas, Nevada. Teller’s signature trick, known as “Shadows,” was copied by a magician in Belgium who offered to sell the method. The Belgian’s trick, titled “The Rose and Her Shadow,” was virtually identical to Teller’s illusion. That which we call a rose by any other name . . . Teller wanted the Belgian magician to stop offering the trick for sale. After an unsuccessful attempt to negotiate, Teller took his dispute to federal court. His goal? To protect that which …

The Next Great Copyright Act And The Future Of Radio, 14 J. Marshall Rev. Intell. Prop. L. 378 (2015), Christopher Doval, Don Anque, Maesea Mccalpin

UIC Review of Intellectual Property Law

With the advancement of digital broadcasting technologies, the lack of a revision to copyright law has created a creative and distribution bottleneck for artists by companies. The current range for compulsory licensing agreements does not protect the interests of artists through modern digital transmission tools, and leaves them fending for themselves if they wish to have access to new digital platforms. Moreover organizations, such as the Recording Industry Association of America, are in greater positions of power when applying existing copyright laws and definitions to new technologies that innovators never intended to be analogous to pre-existing technologies to begin with. …

On Art Attacks: At The Confluence Of Shock, Appropriation, And The Law, 14 J. Marshall Rev. Intell. Prop. L. 392 (2015), Rachel Buker

UIC Review of Intellectual Property Law

Does the law adequately recognize the expansive nature of art, especially in scenarios involving controversial acts of appropriation art? Of particular curiosity is just how the law should treat acts of artistic appropriation involving the creation of artwork on top of other original works of art, or art attacks. This is an issue that has been largely unaddressed by the courts outside the realm of criminal proceedings. However, the legal implications of such acts reach far beyond crimes and property torts, involving copyright, moral rights, freedom of expression, and the preservation of cultural heritage. Indeed, the issues are not just …

Some Speculation About Mirror Neurons And Copyright, 14 J. Marshall Rev. Intell. Prop. L. 410 (2015), Stephen Mcjohn

UIC Review of Intellectual Property Law

Copyright plays a central role in regulating cultural transmission. Authors are given exclusive rights to copy, adapt, distribute, perform and display their works. These rights have limits, most notable fair use and the non-protection of ideas. In setting the bounds of those limits, courts implicitly follow some basic folk psychology. This paper would explore how neuroscience can be used to illuminate and challenge those background assumptions. Copyright law implicitly assumes that literal copying is not necessary for cultural transmission. If there are many ways to express the same idea, then transmission of an idea will not be restricted by prohibiting …

Pulling The 'Trigger' On The Hatch-Waxman Act's 180-Day Exclusivity Using Inter Partes Review, 14 J. Marshall Rev. Intell. Prop. L. 453 (2015), Jaimin Shah

UIC Review of Intellectual Property Law

The America Invents Act has put in place quick and efficient mechanisms for challenging granted patents in an Article I adversarial setting. And the Hatch-Waxman Act has been the roadmap for generic drug approval-related patent infringement action in Article III courts. An interesting, heretofore unaddressed question lurks at an intersection of the two pieces of enterprising legislation: What impact should a final decision canceling patent claims under the AIA setting have on the forfeiture of 180-day exclusivity under the Hatch-Waxman Act? The 180-day exclusivity is an important piece in the Hatch-Waxman game of chess. This comment presents both the case …

The Law As Art Material, 14 J. Marshall Rev. Intell. Prop. L. 418 (2015), Daniel Mellis

UIC Review of Intellectual Property Law

Daniel Mellis is an artist who incorporates the law and legal language into his work. This article discusses four such works: I. A postcard that predicts when its copyright will expire. II. A performance piece that uses the Visual Artists Rights Act to turn money into Art. III. An installation about the fourth amendment on the paper bags at a liquor store. IV. A bureaucratic entity that allows people to renounce, not their citizenship, but rather their symbolic attachment in a nation state or empire.

Revisited 2015: Protection Of U.S. Trade Secret Assets: Critical Amendments To The Economic Espionage Act Of 1996, 14 J. Marshall Rev. Intell. Prop. L. 476 (2015), R. Mark Halligan

UIC Review of Intellectual Property Law

In order to protect the national and economic interests of the United States, the Economic Espionage Act was enacted in 1996. Although intended to prevent and deter trade secret theft, the EEA is limited to criminal prosecutions. Critical amendments to the EEA are required to create a civil cause of action in the new information-based economy and the international marketplace. In 2008, the author recommended two critical amendments to the Economic Espionage Act that have been vetted and have been the subject of legislative proposals for the past 7 years. The author now revisits developments since 2008 and underscores the …

The Economics Of Memory: How Copyright Decides Which Books Do (And Don’T) Become Classics, 14 J. Marshall Rev. Intell. Prop. L. 521 (2015), Stephen Maurer

UIC Review of Intellectual Property Law

Legal scholars usually analyze copyright as an incentive and sometime obstacle to creation. This encourages us to see publishers as middlemen who siphon off rents that would be better spent on authors. By comparison, recent social science research emphasizes that word-of-mouth markets are highly imperfect. This means that many deserving titles will never find readers unless some publisher takes the trouble to market them. But this second view is deeply subversive. After all, the need for publishers – and reward – does not end when a book is published. At least in principle, copyright should last forever. The trouble with …

Who Owns Ellen's Oscar Selfie? Deciphering Rights Of Attribution Concerning User Generated Content On Social Media, 14 J. Marshall Rev. Intell. Prop. L. 564 (2015), Michael Reed

UIC Review of Intellectual Property Law

One of the most memorable moments of the 2014 Academy Awards was Ellen DeGeneres’s famous selfie taken with Bradley Cooper, Meryl Streep, and other famous friends. This so-called “Oscar Selfie” has been estimated to be worth millions of advertising dollars for the event’s sponsor, Samsung. DeGeneres’ use of selfies as a promotional tool was novel method of documenting Hollywood’s greatest night which proved an undeniable successful. However, the fact that Bradley Cooper actually captured the Oscar Selfie raises a number of important questions about how user-generated content distributed through social media fits into existing intellectual property law. At the heart …

Can I Show You Something? The Public Use Bar And Overemphasis On Public Access, 14 J. Marshall Rev. Intell. Prop. L. 590 (2015), Benjamin Lee

UIC Review of Intellectual Property Law

The public use bar has long been a shield protecting the public against unscrupulous inventors hoping to create public dependency before seeking patent monopolization. Courts have repeatedly sided in favor of protecting the public interest. But how much protection do inventors themselves deserve in this battle of interests? This comment examines the history and application of the tests for public use utilized by the courts. Going further, the comment highlights the Federal Circuit’s low corroborating evidence requirement in Pronova Biopharma Norge AS v. Teva Pharmaceuticals USA and questions whether this comports with the policies underlying patent law or too readily …

The Building Blocks Of Copyright Protection For Architectural Works: Roadblock Or Masterpiece?, 14 J. Marshall Rev. Intell. Prop. L. 607 (2015), Vaughn Drozd

UIC Review of Intellectual Property Law

The current test for determining substantial similarity for architectural works is detrimental to the utility of the United States as well as architects’ creativity. The “total concept and feel” test is ill-equipped to determine whether architectural copyright infringement has occurred, as it does take into account the value that many architectural works provide to society. Further, the “ordinary observer” is an artificial concept that cannot be used to determine whether copyright infringement has occurred with such a highly technical field as architecture. This comment breaks down the current system used to analyze copyright infringement for architectural works. Then, this comment …

Patent Troll: The Brewing Storm Of Patent Reform In The United States Of America, 15 J. Marshall Rev. Intell. Prop. L. 63 (2015), Prachi Agarwal

UIC Review of Intellectual Property Law

“Patent trolls” have been a problem in the U.S. for many years, creating a storm of patent reform in all three branches of the U.S. government. The modus operandi of these companies (known as non-practicing entities “NPEs” or Patent Assertion Entities “PAEs”) is to acquire patents with no intention of practicing the invention or developing their products and with the sole purpose of licensing them aggressively or instituting lawsuits against infringers. This practice has been criticized as being anti-competitive as it curbs economic growth and technological development and stifles competition. The U.S. Congress’ first attempt to control the patent troll …

The Intersection Between Ucc Article 9 And Intellectual Property: The Need For A National, Centralized Filing System For Ip, 15 J. Marshall Rev. Intell. Prop. L. 83 (2015), Willa Gibson

UIC Review of Intellectual Property Law

Intellectual property has emerged as a commercially valuable and dominant asset to our economy promoting innovative technological developments that have and continue to stimulate economic growth promoting our free-enterprise, market-based system. Secured transactions involving intellectual property also promotes and stimulates our economic growth. Such transactions provide innovators with much needed capital to design, develop, and market their intellectual property. Despite the economic benefits derived from secured financing involving such property, legal uncertainty exists whether federal or state law governs how to perfect best security interests in intellectual property. Having a perfected security interest in collateral puts a lender in its …

The Conflict Between An Athlete’S Right Of Publicity And The First Amendment, 15 J. Marshall Rev. Intell. Prop. L. 117 (2015), Edward Kuester

UIC Review of Intellectual Property Law

The recent rise of fantasy sports has created a conflict between an athlete’s right of publicity and the First Amendment of the Constitution. The legal question being discussed is whether athletes have a right of publicity in their identity, specifically their performance statistics and biographical information. If a right of publicity violation does exist, courts will have to determine whether a fantasy provider’s First Amendment privilege can prevail against an athlete’s publicity rights. This comment examines recent litigation surrounding athletes’ identities and the problems courts have in balancing the conflict between an athlete’s right of publicity and the First Amendment. …

From The Statute Of Anne To Z.Z. Top: The Strange World Of American Sound Recordings, How It Came About, And Why It Will Never Go Away, 15 J. Marshall Rev. Intell. Prop. L. 1 (2015), Bruce Epperson

UIC Review of Intellectual Property Law

Uniquely among all industrialized nations, the United States extended no copyright protection to sound recordings until 1972. The individual aural representation captured for playback could only be protected by the common or statutory laws of individual states. This feature was carried forward into the comprehensive revision of the Copyright Act implemented on January 1, 1978. Although the Copyright Act contained a sweeping provision that brought works created prior to the legislation under federal protection, pre-1972 sound recordings were specifically exempted. The extent to which this lack of status has created a legal and environmental void is best demonstrated by a …

Court Competition For Patent Cases, Jonas Anderson

Scholarly Articles in Law Reviews & Journals

The traditional academic explanation for forum shopping is simple: litigants prefer to file cases in courts that offer some substantial advantage — either legal or procedural — over all other courts. But the traditional explanation fails to account for competition for litigants among courts. This Article suggests that forum shopping in patent law is driven in part by the creation of procedural and administrative distinctions among courts that are designed to attract, or in some cases to repel, patent litigants.

This Article makes two primary contributions to the literature, one theoretical and one normative. First, it theorizes that judicial competition …

Fair Use, Girl Talk, And Digital Sampling: An Empirical Study Of Music Sampling's Effect On The Market For Copyrighted Works, William M. Schuster Ii

Oklahoma Law Review

This Article presents an empirical study of digital sampling’s effect on the sales of copyrighted songs and how this effect should influence the fair use analysis. To conduct this research, a group of previously sampled songs was identified and sales information for these songs was collected. The over 350 songs sampled in musician Gregg Gillis’s (also known as Girl Talk’s) most recent album presents an ideal dataset because the album’s instantaneous popularity allows for its influence to be analyzed through a comparison of the sampled songs’ sales immediately before and after release. Collecting and comparing sales information for these songs …