Intellectual Property Law Commons^™

Patenting Frankenstein's Monster: Exploring The Patentability Of Artificial Organ Systems And Methodologies, Jordana Goodman

Faculty Scholarship

The conception of Frankenstein’s monster bridges the ever-narrowing divide between man and machine. Long before Congress codified Section 33(a) of the America Invents Act (“AIA”), Mary Shelley’s vague description of the monster’s creation has left people wondering: what defines a human organism? Through an analysis of patent law and scientific progress in the development of artificial organ systems, this paper explores the boundaries of patentable subject matter in the United States and attempts to clarify Congress’s determination that “no patent may issue on a claim directed to or encompassing a human organism.” Though patent law should incentivize development of artificial …

An Empirical Study Of The Copyright Practices Of American Law Journals, Brian L. Frye, Franklin L. Runge, Christopher J. Ryan Jr.

Law Faculty Scholarly Articles

This article presents an empirical study of the copyright practices of American law journals in relation to copyright ownership and fair use, based on a 24-question survey. It concludes that many American law journals have adopted copyright policies that are inconsistent with the expectations of legal scholars and the scope of copyright protection. Specifically, many law journals have adopted copyright policies that effectively preclude open-access publishing, and unnecessarily limit the fair use of copyrighted works. In addition, it appears that some law journals may not understand their own copyright policies. This article proposes the creation of a Code of Copyright …

Against Creativity, Brian L. Frye

Law Faculty Scholarly Articles

According to the Supreme Court, copyright requires both independent creation and creativity. The independent creation requirement provides that copyright cannot protect an element of a work of authorship that is copied from a previously existing work. But scholars disagree about the meaning of and justification for the creativity requirement.

The creativity requirement should be abandoned because it is irrelevant to the scope of copyrightable subject matter and distorts copyright doctrine by encouraging inefficient “creativity rhetoric.” The purpose of copyright is to encourage the production of economically valuable works of authorship, not creativity.

The Myth Of Uniformity In Ip Laws, Sharon Sandeen

Faculty Scholarship

When Congress enacts federal laws, it is often because of the asserted benefits of a “uniform” law and the, often unspoken, assumption that federal laws are somehow more uniform than uniform state laws. In fact, the uniformity argument was a primary justification for the enactment of both the Defend Trade Secrets Act of 2016 and the EU Trade Secret Directive.

The quest for uniformity, particularly with respect to laws that relate to intellectual property rights, is an old story in the United States. During the drafting of the U.S. Constitution, the existence of inconsistent state laws was a central reason …

Revising Racial Patents In An Era Of Precision Medicine, Jonathan Kahn

Faculty Scholarship

In 2006, I published an article examining the rising use of racial categories in biomedical patents in the aftermath of the successful completion of the Human Genome Project and the production of the first draft of a complete human genome. Ten years on, it now seems time to revisit the issue and consider it in light of the current era of “Precision Medicine” so prominently promoted by President Obama in his 2015 State of the Union address where he announced a $215 million proposal for the Precision Medicine Initiative as “a bold new research effort to revolutionize how we improve …

Toward A Federal Jurisprudence Of Trade Secret Law, Sharon Sandeen, Christopher B. Seaman

Faculty Scholarship

The May 2016 enactment of the Defend Trade Secrets Act of 2016 (DTSA), which created a new federal civil cause of action for trade secret misappropriation, raises a host of issues that federal courts will have to consider under their original subject matter jurisdiction, rather than applying state law through the courts’ diversity jurisdiction. This means that for the first time, an extensive body of federal jurisprudence will be developed to govern the civil protection and enforcement of trade secrets in the United States. In addition, due to the DTSA’s changes to the existing federal criminal law governing trade secrets, …

The Commodification Of Trademarks: Some Final Thoughts On Trademark Dilution, Kenneth L. Port

Faculty Scholarship

This article is an explication of the trend toward commodification of famous or putatively famous trademarks and the resultant urging that the FTDA be repealed. This article starts with a literature review showing that the vast majority of commentators have been severely critical of the FTDA. This has been ignored by Congress. The article next pursues Congress's blind support of the FTDA and suggests that more thought and analysis from Congress is still required. The article next explains the data regarding FTDA claims. All reported cases from 1996 through 2015 are coded and examined. The conclusion, looking at the data, …

An Empirical Study Of Law Journal Copyright Practices, 16 J. Marshall Rev. Intell. Prop. L. 207 (2017), Brian Frye, Christopher Ryan, Franklin Runge

UIC Review of Intellectual Property Law

This article presents an empirical study of the copyright practices of American law journals in relation to copyright ownership and fair use, based on a 24-question survey. It concludes that many American law journals have adopted copyright policies that are inconsistent with the expectations of legal scholars and the scope of copyright protection. Specifically, many law journals have adopted copyright policies that effectively preclude open-access publishing, and unnecessarily limit the fair use of copyrighted works. In addition, it appears that some law journals may not understand their own copyright policies. This article proposes the creation of a Code of Copyright …

Alice-Backed Securitization: Start-Ups’ New Alternative To Venture Capital, 16 J. Marshall Rev. Intell. Prop. L. 246 (2017), Robert Laverty

UIC Review of Intellectual Property Law

As of 2016, the United States software industry added $1.07 trillion in total value to the U.S. economy alone. Today, it’s no mystery that high-tech solutions are embedded in the fabric of our world. Venture Capital has been the dominant source of funding for startup and midsize high-tech firms for the last two decades. However, Venture Capital funding comes at a hefty cost. Young developing high-tech firms are often forced to bargain large shares of their ownership and managerial control to receive the funding they need to realize their potential. But, what if high-tech firms didn’t have to make such …

Blocking Ad Blockers, 16 J. Marshall Rev. Intell. Prop. L. 272 (2017), Tyler Barbacovi

UIC Review of Intellectual Property Law

The prevalence of ad blocking software (software that prevents the loading of web based advertisements) is a growing problem for website owners and content creators who rely on advertising revenue to earn money. While the number of ad block users continues to increase, there has thus far been no significant legal challenge to ad blocking in the United States. This comment examines how a website owner, through a combination of technological improvements and the anti-circumvention provisions of the Digital Millennium Copyright Act, could successfully raise a legal challenge against the purveyors of ad blocking software.

If It's In The Game: Is There Liability For User-Generated Characters' Likeness?, 16 J. Marshall Rev. Intell. Prop. L. 291 (2017), Jason Zenor

UIC Review of Intellectual Property Law

In cases like Keller and No Doubt v. Activision, the federal courts held that the use of celebrity's likeness was a violation of the right of publicity. In response, EA Sports suspended production of college sports games. But most games still allow for gamers to create their own avatars. With game systems now being connected, gamers can download user-created content many of which will have the likeness of famous people, thus circumventing the holdings in Keller and No Doubt. Accordingly, this article examines how this type of user generated content fits within the law of appropriation. First, this article discusses …

Restoring Rogers: Video Games, False Association Claims, And The “Explicitly Misleading” Use Of Trademarks, 16 J. Marshall Rev. Intell. Prop. L. 306 (2017), William K. Ford

UIC Review of Intellectual Property Law

Courts have long struggled with how to balance false association claims brought under the Lanham Act with the protections for speech under the First Amendment. The leading approach is the Rogers test, but this test comes in multiple forms with varying degrees of protection for speech. A substantial portion of the litigation raising this issue now involves video games, a medium that more so than others, likely needs the benefit of a clear rule that protects speech. The original version of the test is the simplest and the one most protective of speech. In 2013, the Ninth Circuit endorsed the …

Gotta Catch . . . A Lawsuit? A Legal Insight Into The Intellectual, Civil, And Criminal Battlefield Pokémon Go Has Downloaded Onto Smartphones And Properties Around The World, 16 J. Marshall Rev. Intell. Prop. L. 329 (2017), Andrew Rossow

UIC Review of Intellectual Property Law

Our society, and its millennials, have entered the digital age, whereby almost everything is conducted and perpetuated through electronic devices. Smartphones have dominated the mobile device market and have allowed its users to download mobile applications and games to the device. Pokémon Go, is the latest trend in mobile gaming and the start to a bright future of augmented reality. But what happens when augmented reality meets the physical world? Do our modern-day statutes and laws extend into the cyberspace that it is augmented reality? What happens when a user of an augmented reality game enters onto the property of …

The Ambush At Rio, 16 J. Marshall Rev. Intell. Prop. L. 350 (2017), Adam Epstein

UIC Review of Intellectual Property Law

The purpose of this article is to explore the role of the International Olympic Committee’s (IOC) codified marketing policy known as Rule 40 which emerged to prevent ambush marketing of its biennial events. Rule 40 has quickly evolved into a controversial rule for athletes, coaches and sponsors alike who are involved in the Olympic Movement. The IOC believes that social media is a ubiquitous threat to its intellectual property during the Olympic Games akin to traditional print and television ambush marketing campaigns. As a result, the 2016 Rio De Janeiro (Rio) Summer Olympic Games represented the most intense clash between …

The Courts' Interpretations Of Legitimate Business Purposes, With Applications To Lexmark, 16 J. Marshall Rev. Intell. Prop. L. 411 (2017), W. Lesser

UIC Review of Intellectual Property Law

Courts frequently must assess 'intent'. This article applies to the interpretation the intent of "legitimate business purposes" as a justification for restrictive use licensing agreements for patented products. Generally, the 'first sale' doctrine terminates the use rights of the patent holder. However, if the sale is conditioned on some use limitations and violators of those terms are liable for infringement. The courts, suggested in Mitchell v. Hawley (1872) and formalized in Mallinckrodt v. Medipart (1992), have allowed use restrictions based on license terms. Restrictions are disallowed under the affirmative defense of patent invalidity, such as from an antitrust violation. This …

It’S My Mark, I Can Offend If I Want To! The Waning Of The Government’S Power To Protect Its Citizens From Widespread Discriminatory Marks, 16 J. Marshall Rev. Intell. Prop. L. 505 (2017), Paul Sanders

UIC Review of Intellectual Property Law

There is an inherent tension between the First Amendment and trademark law. For over 100 years the United States Patent and Trademark Office has protected American citizens from Marks of ill repute. In the wake of the In re Tam decision, this may become more difficult if not impossible. This comment analyzes In re Tam, as well as explores the First Amendment guarantee of free speech and trademark law, and how each intersects with each other. Additionally, this comment proposes solutions that will allow the government to continue protecting its citizens from Marks that should have no place in commerce.

Candidates Shouldn’T “Cruz” Through Political Campaigns: Why Asking For Permission To Use Music Is Becoming So Important On The Campaign Trail, 16 J. Marshall Rev. Intell. Prop. L. 457 (2017), Courtney Willits

UIC Review of Intellectual Property Law

Music has always been used by candidates running for political office as a way to advertise themselves to potential voters. Throughout the years, a battle between political candidates and musicians has grown due to problems caused by music licensing. Currently, an issue in law exists between politicians who obtain proper music licenses versus musicians who have a right of publicity, stating they do not want to be associated with certain candidates' political views. This comment analyzes the recent copyright case against former 2016 presidential candidate Ted Cruz, and the role it could play in this area of law. Additionally, this …

Putting Yourself In The Shoes Of A Patent Examiner: Overview Of The United States Patent And Trademark Office (Uspto) Patent Examiner Production (Count) System, 17 J. Marshall Rev. Intell. Prop. L. 32 (2017), Naira Rezende Simmons

UIC Review of Intellectual Property Law

The mission of the United States Patent and Trademark Office (USPTO) is to ensure that the Intellectual Property system contributes to a strong global economy, encourages investment in innovation, and fosters entrepreneurial spirit. In order to ensure that the large volume of newly filed patent applications are examined in a reasonable timeframe, the USPTO has a system for determining the average amount of time an examiner should spend examining a patent application. Under the current production system, productivity is assessed based on Production Units (“PUs”) achieved relative to the Examiner’s production goal. The production goal is calculated for each examiner …

The Global Protection Of Traditional Knowledge: Searching For The Minimum Consensus, 17 J. Marshall Rev. Intell. Prop. L. 42 (2017), Aman Gebru

UIC Review of Intellectual Property Law

The protection of traditional knowledge (TK) – the know-how, skills, innovations and practices of indigenous peoples and local communities has been a subject of heated debate in many international forums. TK has proved to be useful as an input in modern industries. For instance, pharmaceutical companies have used medicinal TK to develop drugs more quickly. Despite its value, TK faces an alarming rate of loss and there are many initiatives that attempt to preserve it for posterity. However, almost every major issue on TK protection is contentious, including whether international TK protection is necessary or if domestic legislation alone would …

Living To See His Glory Days: Why Hamilton's Lin Manuel Miranda Is Not Liable For Copyright Infringement, But Other Writers And Composers Are, 17 J. Marshall Rev. Intell. Prop. L. 92 (2017), Deidre Davis

UIC Review of Intellectual Property Law

This comment discusses the idea of individuals receiving preliminary permissions of copyrighted works before using the work as a component of their own. By doing so, an individual has a better opportunity to avoid copyright infringement. Lin Manuel Miranda, the writer of the musical Hamilton, took preliminary measures to avoid copyright infringement, and these measures will be examined throughout this comment. Copyright infringement cases and other infringement cases will be addressed, as well as a proposal to simplify obtaining preliminary permissions in copyrighted works.

Samsung V. Apple, Life Technologies V. Promega, Sca Hygiene Products V. First Quality Baby Products, Tc Heartland V. Kraft, Impression Products V. Lexmark, And Sandoz V. Amgen: The U.S. Supreme Court Decides Six Patent Cases In 2016-17, 17 J. Marshall Rev. Intell. Prop. L. 162 (2017), Sue Ann Ganske

UIC Review of Intellectual Property Law

The United States Supreme Court decided six very important patent cases in the 2016-17 term, Samsung Electronics Co., Ltd. v. Apple Inc., called the “design patent case of the century,” Life Technologies Corp. v. Promega Corp., an international supply chain patent case, SCA Hygiene Products v. First Quality Baby Products, LLC, where the doctrine of laches was not a defense in a patent infringement case, TC Heartland LLC v. Kraft Foods Group Brands LLC, which dealt with patent venue statute, Impression Products, Inc. v. Lexmark International, Inc., which held that the authorized first sale of a patented item exhausts the …

Avoiding The Rabbit Hole: An Ontological Model For Determining Section 101 Patent-Eligibility Under Alice, 17 J. Marshall Rev. Intell. Prop. L. 192 (2017), Alan J. Gocha

UIC Review of Intellectual Property Law

In Alice Corp. Pty. v. CLS Bank International, 134 S. Ct. 2347 (2014), the Supreme Court established a two-part test for determining whether a patent claim is directed at the patent-ineligible category of abstract ideas. Unfortunately, however, the Supreme Court in Alice offered little clarification as to what constitutes an abstract idea—leaving innovators and competitors uncertain as to their legal rights. Likewise, instead of creating a definitive test, the Federal Circuit has proceeded by engaging in self-referential argument by analogy. This article, Avoiding the Rabbit Hole: An Ontological Model for Determining Section 101 Patent-Eligibility under Alice, argues that the Supreme …

Traditional Knowledge Digital Library: "A Silver Bullet" In The War Against Biopiracy?, 17 J. Marshall Rev. Intell. Prop. L. 214 (2017), Seemantani Sharma

UIC Review of Intellectual Property Law

India has long been a victim of the emotionally expulsive wrong of biopiracy at the behest of Western corporations. Traditional Knowledge Digital Library (TKDL), a digital repository of traditional medicinal knowledge was a reaction to this act of “unjust enrichment”. While there is ample scholarly discourse on the biopiracy of Indian traditional knowledge (TK), there is scant literature critically evaluating TKDL as a tool for the protection of TK. This paper attempts to highlight some of the defects and inadequacies pervading TKDL, which inhibits its characterisation as a “silver bullet” in the war against biopiracy. Though laudatory, TKDL with its …

Tc Heartland Llc V. Kraft Foods Group Brands And The Big Debate About East Texas: How A Delaware Case Leaves Patent Venue Unsettled And Presages As Applied Challenges To The Constitutionality Of Narrow Venue Interpretations, 17 J. Marshall Rev. Intell. Prop. L. 232 (2017), Jesse Snyder

UIC Review of Intellectual Property Law

Lack of sanguinity for patent holders was manifest after the Supreme Court’s May 22, 2017, opinion in TC Heartland LLC v. Kraft Foods Group Brands LLC. Yet whether TC Heartland—a case from the U.S. District Court for the District of Delaware—represents a fait accompli against forum shopping remains debatable. Writing for the Court in a unanimous opinion, Justice Clarence Thomas rejected the U.S. Court of Appeals for the Federal Circuit’s interpretation that an intervening amendment to the general venue statute broadened the scope of venue for patent cases. The patent venue statute, 28 U.S.C. § 1400(b), provides that “[a]ny civil …

Avoiding The Chaos Of Maryjane - A Conventional Approach To Intellectual Property Protection Of Marijuana, 17 J. Marshall Rev. Intell. Prop. L. 278 (2017), Kaylee Willis

UIC Review of Intellectual Property Law

Whether you are considering the ever-popular recreational use, or recent medicinal developments, marijuana is a highly discussed controversial substance. With revenue from marijuana into the billions of dollars, it is no wonder it has been trying to reach into the intellectual property arena. This comment specifically looks into the patent arena and the obstacles that come with an attempt to seek, and enforce protection of marijuana-based patent applications. With the USPTO’s plant and utility patent options, there is perhaps more than one way to pass marijuana-based substances as patent-eligible subject matter. The largest obstacle for this type of intellectual property …

The Circular Logic Of Actavis, Joshua B. Fischman

American University Law Review

No abstract provided.

Big Pharma Monopoly: Why Consumers Keep Landing On "Park Place" And How The Game Is Rigged, Mark S. Levy

American University Law Review

No abstract provided.

Patents V. Antitrust: Preempting Conflict, Matthew G. Sipe

American University Law Review

No abstract provided.

At&T V. Microsoft: A District Judge's Perspective, William H. Pauley Iii

American University Law Review

No abstract provided.

The Federal Circuit's Acquiescence (?), Timothy R. Holbrook

American University Law Review

No abstract provided.