Intellectual Property Law Commons^™

Financing Innovation: Legal Development Of Intellectual Property As Security In Financing, 1845–2014, Xuan-Thao Nguyen

Articles

There is a need for both traditional and online lenders to appreciate the intellectual property assets held by small businesses. The intellectual property assets should be included in the analytics in assessing the overall health of a business seeking a loan or a line of credit for its new innovative product, idea, or vision. The Article ends with a brief conclusion that in order to maintain the United States’ innovative edge, attention to the access to financing by small businesses must be at the center of the discussion, and intellectual property must be recognized as part of that center.

Registering Offense: The Prohibition Of Slurs As Trademarks, Christine Farley

Contributions to Books

Since 1967, Pro-Football has registered six marks that include the term “redskins,” a derogatory racial epithet that refers to Native Americans. The use of disparaging marks dates back to the 19th century when brands commercialized racial stereotypes, such as Aunt Jemima. Today, offensive marks, including those that ridicule race, ethnicity, gender and religion are proliferating prompting the question of what role trademark law plays in protecting the interests of diverse communities. Section 2(a) of the Lanham Act prohibits the registration of marks that consist of matter that may disparage or bring into contempt or disrepute any person, institution, or belief. …

Campbell At 21/Sony At 31, Jessica D. Litman

Articles

When copyright lawyers gather to discuss fair use, the most common refrain is its alarming expansion. Their distress about fair use’s enlarged footprint seems completely untethered from any appreciation of the remarkable increase in exclusive copyright rights. In the nearly forty years since Congress enacted the 1976 copyright act, the rights of copyright owners have expanded markedly. Copyright owners’ demands for further expansion continue unabated. Meanwhile, they raise strident objections to proposals to add new privileges and exceptions to the statute to shelter non-infringing uses that might be implicated by their expanded rights. Copyright owners have used the resulting uncertainty …

The Lisbon Agreement: Why The United States Should Stop Fighting The Geneva Act, Danielle Dudding

Vanderbilt Journal of Entertainment & Technology Law

In May 2015, members of the World Intellectual Property Organization (WIPO) held a Diplomatic Conference that resulted in the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications. The Act modified the Lisbon Agreement (originally created in 1958), extending its previous protection of appellations of origin to geographical indications as well. The United States, which remains a non-party to the Lisbon Agreement, has been adamantly against the expansion of the Agreement to geographical indications. This Note explores the issues surrounding the Geneva Act, the state of the law and international agreements leading up to the Act, …

Expressive Eligibility, Mark D. Janis, Timothy R. Holbrook

Articles by Maurer Faculty

What is the ultimate objective of the patent eligibility inquiry? The recent eligibility case law — a frenzied outpouring of opinions from many esteemed judges — has revealed little while mystifying much. Scholars haven’t fared much better, although it isn’t for lack of trying. Our scholarly colleagues have offered a multitude of intriguing new perspectives on the analysis — drawing on history, the philosophy of science, semiotics, institutional choice, and so on. But we continue to wonder exactly what the eligibility inquiry is for.

In addressing that question here, we’re following a familiar methodological tradition: we propose to reimagine eligibility …

Developments In Synthetic Biology Are Altering The Ip Imperatives Of Biotechnology, Christopher M. Holman

Vanderbilt Journal of Entertainment & Technology Law

While the accomplishments of the biotechnology industry have been substantial, recent technological advances promise to dramatically increase the power and utility of the discipline over the coming years. The term "synthetic biology" has been coined to describe the application of these powerful new tools to the engineering of synthetic genetic sequences and organisms. In essence, synthetic biology represents the next iteration in the ongoing evolution of biotechnology, and hopes run high that in time, the fruits of synthetic biology will dwarf the past successes of conventional biotechnology. There is, however, some concern that the current patent-centric approach to Intellectual Property …

Entering The Innovation Twilight Zone: How Patent And Antitrust Law Must Work Together, Jeffrey I.D. Lewis, Maggie Wittlin

Vanderbilt Journal of Entertainment & Technology Law

Patent law and antitrust law have traded ascendancy over the last century, as courts and other institutions have tended to favor one at the expense of the other. In this Article, we take several steps toward stabilizing the doctrine surrounding these two branches of law. First, we argue that an optimal balance between patent rights and antitrust enforcement exists that will maximize consumer welfare, including promoting innovation and economic growth. Further, as Congress is the best institution to find this optimum, courts should enforce both statutes according to their literal text, which grants absolute patent rights but allows for more …

The Public Interest Inquiry For Permanent Injunctions Or Exclusion Orders: Shedding The Myopic Lens, P. Andrew Riley, Scott A. Allen

Vanderbilt Journal of Entertainment & Technology Law

President Obama's 2013 veto of a US International Trade Commission (ITC) exclusion order, issued to address Apple Inc.'s infringement of a patent owned by Samsung, thrust the ITC's public interest inquiry into the spotlight. Historically, however, these factors rarely weighed against a remedy at the ITC. Likewise, US district courts have rarely declined to issue a permanent injunction after finding a patent valid and infringed due solely to the public interest factor--the last of the four factors that the Supreme Court put in place in eBay Inc. v. Merc Exchange, L.L.C. More recent decisions addressing the public interest in both …

The Internet After Aereo: How To Save Innovation From The Public Performance Right, Patrick C. Tricker

Vanderbilt Journal of Entertainment & Technology Law

The Supreme Court's decision in American Broadcasting Companies, Inc. v. Aereo, Inc. overturned the Second Circuit's rule that separate copies create separate performances without clarifying the scope of a performance. The decision creates significant ambiguity surrounding the public performance right and potentially massive liability for cloud-computing companies. Since cloud computing allows customers to run programs remotely from a company's servers, two independent customers watching different copies of the same movie from the same cloud results in the cloud conducting a public performance. This Note examines this problem, concludes that the current public performance regime has become obsolete, and proposes a …

The Supreme Court Performs The Right Notes For Dish In Aereo, Lee B. Burgunder

Vanderbilt Journal of Entertainment & Technology Law

In American Broadcasting Companies, Inc. v. Aereo, Inc., the Supreme Court addressed whether a company publicly performs copyrighted works when it allocates separate antennas on its property to customers who individually decide what shows they each want to watch. This case was hotly debated because it provided a new opportunity for the Court to identify the responsible actors when copyrighted materials are transmitted over the Internet. Unfortunately, the Court ruled against Aereo without clearly articulating governing standards that might inform future decisions, relying instead on what the dissent called a "looks-like-cable-TV" approach. The deficiency has already provided additional ammunition for …

The International Copyright Problem And Durable Solutions, Susy Frankel

Vanderbilt Journal of Entertainment & Technology Law

The calls for copyright reform at both the national and international level are growing louder. Many authors, owners, distributors, users, and consumers are dissatisfied with the current regime, but solutions are not easy to find. Existing rules are inadequate to deal with copyright in the digital world and partial solutions are not likely to be durable. The problems of copyright are not confined to one jurisdiction. Just as the creation and dissemination of copyright works are global, copyright's legal problems are an international problem. Existing international rules alone cannot provide the solution to this policy debate, but they do have …

When Nominal Is Reasonable: Damages For The Unpracticed Patent, Oskar Liivak

Cornell Law Faculty Publications

To obtain a substantial patent damage award a patentee need not commercialize the patented invention; the patentee need only show that its patent was infringed. This surely incentivizes patenting but it dis-incentivizes innovation. Why commercialize yourself? The law allows you to wait for others to take the risks, and then you emerge later to lay claim to “in no event less than a reasonable” fraction of other people’s successes. It is rational to be a patent troll rather than an innovator. This troll-enabling interpretation of patent law’s reasonable royalty provision, however, is wrong as a matter of patent policy. Surprisingly, …

Empirical Studies Of Claim Construction, Jonas Anderson

Working Papers

Patent claims define the scope of the patent right and hence are central to the operation of the patent system. Patent prosecutors devote substantial effort to crafting patent claims so as to maximize the scope of their right without “reading on” prior art (and thereby defeating novelty). Businesses seeking to enter a technology marketplace must be careful to avoid encroaching patent claims. Thus, when patentees enforce their rights, the interpretation of claim boundaries guides both validity and infringement analysis. Following the Supreme Court’s decision in Markman v. Westview Instruments (517 U.S. 370 (1996)), holding that “the construction of a patent, …

Private International Law Aspects Of Authors' Contracts: The Dutch And French Examples, Jane C. Ginsburg, Pierre Sirinelli

Faculty Scholarship

Copyright generally vests in the author, the human creator of the work. But because, at least until recently, most authors have been ill-equipped to commercialize and disseminate their works on their own, the author has granted rights to intermediaries to market her works. Since most authors are the weaker parties to publishing, production, or distribution contracts, the resulting deal may favor the interests of the intermediary to the detriment of the author’s interests. Many national copyright laws have introduced a variety of corrective measures, from the very first copyright act, the 1710 British Statute of Anne, which instituted the author’s …

Two Models Of Unpatentable Subject Matter, Alan L. Durham

Santa Clara High Technology Law Journal

Patentable subject matter has become one of the most controversial areas of patent law. Efforts to articulate a lucid and productive theory of patentable subject matter must acknowledge that there are two competing models of unpatentable subject matter. One posits that natural laws, natural phenomena, and abstract ideas are themselves ineligible for patenting, and that each example of a natural law, natural phenomenon, or abstract idea further defines a class of inventions that cannot be patented because they lack an additional element of ingenuity—or “inventive concept”—that sufficiently distinguishes those inventions from their natural counterparts. This “penumbral” model of unpatentable subject …

All That Is Solid Melts Into Air: The Subject-Matter Eligibility Inquiry In The Age Of Cloud Computing, Scott T. Luan

Santa Clara High Technology Law Journal

This article critiques and refines the subject-matter eligibility inquiry in patent law by examining the process of creativity in the context of software-implemented inventions. As a substantive critique of § 101 jurisprudence, this article, informed by copyright law, proposes a working hypothesis for a general structure of the subject-matter eligibility inquiry in which a critical determination is the appropriate level of abstraction for claim construction. As a discursive critique of the limits and limitations of judicial language, this article argues that courts have incorrectly presumed that contemporary legal thought is equipped, conceptually and linguistically, to understand the full significance of …

Reconsidering The Standard For Enhanced Damages In Patent Cases In View Of Recent Guidance From The Supreme Court, Howard Wisnia, Thomas Jackman

Santa Clara High Technology Law Journal

This article examines whether the jurisprudence of the enhanced damages provision found in 35 U.S.C. § 284 should be modified in light of recent Supreme Court decisions that have altered the jurisprudence of the attorney’s fees provision found in 35 U.S.C. § 285. The authors conclude that a revision is needed to the standard for determining whether to award enhanced damages under § 284 and that juries as opposed to judges should determine whether to grant such an award as well as the amount of the award.

Limited Consumer Privacy Protections Against The Layers Of Big Data, Andrew W. Bagley, Justin S. Brown

Santa Clara High Technology Law Journal

Consumers give away their data voluntarily and involuntary through their everyday online interactions. Many of these interactions are governed by “click-wrap” agreements in which consumers agree to data use terms with their Internet service provider (ISP), content provider, or an entire computing ecosystem through various layers of the Internet. This phenomenon effectively means that consumers lose control of their data to an endless web of third party big-data brokers unaccountable to the user. All the while, the increasingly dynamic and valuable nature of datasets makes it difficult to predict how data collected today will be used in the future. To …

The Lost "Art" Of The Patent System, Sean M. O'Connor

Articles

Patent systems emerged in the early modern period of the West to incentivize development and dissemination of skills-based artisanal innovations. This approach appears to have been adopted by the Framers in drafting the Intellectual Property Clause.

Only later, in the Industrial Revolution, did ‘‘science’’ and ‘‘technology’’ begin to displace ‘‘art’’ as the perceived object of the U.S. patent system. This was in large part because of the emergence of the concept of ‘‘technology’’ itself as science-based innovation in artisanal and mechanized production.

The loss of an ‘‘art’’-based concept of the patent system is arguably causing some of the confusion over …

The Overlooked French Influence On The Intellectual Property Clause, Sean M. O'Connor

Articles

The Intellectual Property Clause (“IP Clause”) of the US Constitution has long been a puzzle for courts and commentators. It authorizes Congress to secure exclusive property rights for authors and inventors, but it does not use the terms “patent” or “copyright,” and its objects of “Science” and “useful Arts” do not cleanly map onto the subject matter of current patent and copyright systems.

As the Supreme Court has noted, under popular usage of the terms “arts” and “science,” one would expect patents to promote science and copyrights to promote arts, yet we know from the historical record that exactly the …

Institutionalizing The Uspto Law School Clinic Certification Program For Transactional Law Clinics, Jennifer S. Fan

Articles

With 188 transactional law clinics nationwide and the United States Patent and Trademark Office (“USPTO”) Law School Clinic Certification Program (“Program”) recently established as a statutory program of the USPTO, this Article argues that every transactional clinic that works on trademark and patent applications should apply to become part of the Program. In satisfying the participation requirements of the Program, transactional law clinics will usher in a new, uniform way to educate aspiring intellectual property attorneys. As a result, the law students will not only be “practice ready,” but also more effective attorneys once they are in practice. Participating in …

Impact Of Intellectual Property Promotion For Small And Medium Sized Enterprises (Smes) In South Korea: An Examination Of Ip Star Program Impact, Jongseok Yoon

MPA/MPP/MPFM Capstone Projects

The creation of new processes and technology - in a word, innovation - is a powerful factor that determine s the progress of economies. The creation of new processes and technology can be accelerated by Intellectual Property Rights (IPRs).

However, many Small and Medium-sized Enterprises (SMEs) do not get the most out of their use of the intellectual property, even though they represent over 90 percent of enterprise s in South Korea. As a result, the Korean Intellectual Property Office (KIPO) has initiated support services for Small and Medium-sized Enterprises.

This study 's main focus is to examine the impact …

In The Stewardship Of Business Model Innovation, Robert W. Gomulkiewicz

Articles

Patent law scholars often criticize the Federal Circuit because they think it favors patentees. The Supreme Court has reinforced this scholarly critique by taking an usually large number of patent cases in recent years, often reversing the Federal Circuit and admonishing it to avoid patent law exceptionalism.

The Federal Circuit’s perceived patent law exceptionalism motivated Professor Xuan-Thao Nguyen to write her article In the Name of Patent Stewardship: The Federal Circuit’s Overreach into Commercial Law. Professor Nguyen’s concerns about damage to commercial law are not trifles. When it comes to the stewardship of our information economy, the laws that …

Copyrights And Creativity: The Affects Of Copyrights On Fairy Tales, Dina Arouri

Honors Program Theses

This work attempts to argue for a correlative relationship between copyright law and the evolution of literary works. It uses the laws and common practices of intellectual property to achieve this hypothesis.

Standing Room Only: Madstad Engineering And The Potential To Challenge The Constitutionality Of The America Invents Act's "First-Inventor-To-File" Patenting System, Christopher J. Ferrell

Washington Journal of Law, Technology & Arts

In 2011, the Leahy–Smith America Invents Act (AIA) was signed into law, bringing significant changes to the Patent Act of 1952. Arguably, the most substantial change was the demise of the “American approach” to patent law: the “first-to-invent” patent filing system. Congress, by enacting the AIA, changed America's patent system from “first-to-invent” to “first-inventor-to-file,” sparking controversy among patent scholars and practitioners, with some individuals arguing that this change was unconstitutional. Recently, the Federal Circuit faced an issue of first impression when an inventor challenged the constitutionality of the first-inventor-to-file provisions of the AIA, and by extension the AIA as a …

Agricultural Biotechnology: Drawing On International Law To Promote Progress, J. Janewa Osei-Tutu

Articles

In Bowman v. Monsanto, the Supreme Court declined to apply the principle of exhaustion to limit the patentee's ability to control the reproduction of self-replicating inventions. This decision was justified from a patent law perspective on the basis that a patent holder has a right to prevent others from making the invention. But what happens when we take other perspectives into account? For instance, a farmer might have human rights or other rights that may need to be balanced against the patentee's right. Since globalized intellectual property standards were established through international agreements and much of the resistance to …

Copyright And The Living Dead?: Succession Law And The Postmortem Term, Eva E. Subotnik

Faculty Publications

(Excerpt)

Intellectual property (“IP”) policy in the United States is primarily aimed at stimulating the creative, inventive, and socially enriching behavior of the living. Yet one key aspect of our incentive-based regime is intimately linked to the death of the creative contributor. Specifically, the term of copyright generally lasts for seventy years following the death of the author. Such a feature is not the product of policy choices in place from time immemorial but rather reflects a contemporary decision to link the duration of exclusive rights to some fixed point in time beyond the author’s death. In particular, until the …

Free To Be You And Me? Copyright And Constraint, Rebecca Tushnet

Georgetown Law Faculty Publications and Other Works

Joseph P. Fishman’s Creating Around Copyright advances a provocative thesis: some restrictions on creativity can spur the development of additional creative solutions, and (some level of) copyright might be one of those restrictions. If Picasso was right that “forcing yourself to use restricted means is the sort of restraint that liberates invention,” then being forced by law to use restricted means might do the same thing, ultimately leading to more varied and thus more valuable works.

At the outset, it’s important to know the baseline against which we ought to evaluate Fishman’s claims. Most copyright restrictionists, of whom I count …

Identity Property: Protecting The New Ip In A Race-Relevant World, Philip Lee

Faculty Publications

(Excerpt)

This Article explores the relatively new idea in American legal thought that people of color are human beings whose dignity and selfhood are worthy of legal protection. While the value and protection of whiteness throughout American legal history is undeniable, non-whiteness has had a more turbulent history. For most of American history, the concept of non-whiteness was constructed by white society and reinforced by law—i.e., through a process of socio-legal construction—in a way that excluded its possessor from the fruits of citizenship. However, people of color have resisted this negative construction of selfhood. This resistance led to the development …

"Records Management Law" - A Necessary Major Field Of The Practice Of Law, Ken Chasse

Canadian Journal of Law and Technology

‘‘Records management law” will be a necessary area of specialization because: (1) electronic records are now produced by most commercial, communication, transmission of data, and social, formal, and semi-formal interactions; (2) therefore they are the foundation of many kinds of legislation; (3) records are the most frequently used kind of evidence in legal proceedings; and, (4) electronic records are as important to daily living as are motor vehicles, and will become more important. But the legal infrastructure of statutes, guidelines, and case law that controls the use of electronic records as evidence is very inadequate because it ignores these facts: …