Intellectual Property Law Commons^™

Ai & Ip Innovation & Creativity In An Age Of Accelerated Change, 52 Akron L. Rev. 813 (2018), Daryl Lim

UIC Law Open Access Faculty Scholarship

From a glimmer in the eye of a Victorian woman ahead of her time, AI has become a cornerstone of innovation that “will be the defining technology of our time.” Around 2016, the convergence of computing power, funding, data, and open-source platforms tipped us into an AIdriven 4IR. AI can make a difference in accelerating disruptive innovation by bringing a data-driven approach to invention and creation. To do so, the law must embrace change and innovation as an imperative in a journey towards an ever-shifting horizon. In the creative arts, the work for hire doctrine provides a pragmatic legal vehicle …

Non-Conventional Copyright: Do New And Atypical Works Deserve Protection?, Enrico Bonadio & Nicola Lucchi Eds., Edward Elgar Publishing, 2018, 128-149., Cathay Y. N. Smith

Faculty Books & Book Chapters

No abstract provided.

Masthead

Catholic University Journal of Law and Technology

No abstract provided.

Deepfake Videos: When Seeing Isn't Believing, Holly Kathleen Hall

Catholic University Journal of Law and Technology

Videos, known as deepfakes, use readily available software to create a work that shows people saying and doing things they may never have uttered or engaged in. The technology making the videos appear very authentic is advancing at such a rate that people may not be able to detect if the videos are fact or fiction. Given the hasty acceptance of other forms of fake news in society, deepfake videos have the ability to affect the nature of information the public receives about candidates and policies. This study examines the potential use of deepfake videos in the democratic process, analyzes …

Intellectual Property And The Prisoner’S Dilemma: A Game Theory Justification Of Copyrights, Patents, And Trade Secrets, Adam D. Moore

Fordham Intellectual Property, Media and Entertainment Law Journal

In this article, I will offer an argument for the protection of intellectual property based on individual self-interest and prudence. In large part, this argument will parallel considerations that arise in a prisoner’s dilemma game. In brief, allowing content to be unprotected in terms of free access leads to a sub-optimal outcome where creation and innovation are suppressed. Adopting the institutions of copyright, patent, and trade secret is one way to avoid these sub-optimal results.

Liability For Providing Hyperlinks To Copyright-Infringing Content: International And Comparative Law Perspectives, Jane C. Ginsburg, Luke Ali Budiardjo

Faculty Scholarship

Hyperlinking, at once an essential means of navigating the Internet, but also a frequent means to enable infringement of copyright, challenges courts to articulate the legal norms that underpin domestic and international copyright law, in order to ensure effective enforcement of exclusive rights on the one hand, while preserving open communication on the Internet on the other. Several recent cases, primarily in the European Union, demonstrate the difficulties of enforcing the right of communication to the public (or, in U.S. copyright parlance, the right of public performance by transmission) against those who provide hyperlinks that effectively deliver infringing content to …

Life, Liberty, And Trade Secrets: Intellectual Property In The Criminal Justice System, Rebecca Wexler

Faculty Scholarship

The criminal justice system is becoming automated. At every stage, from policing to evidence to parole, machine learning and other computer systems guide outcomes. Widespread debates over the pros and cons of these technologies have overlooked a crucial issue: ownership. Developers often claim that details about how their tools work are trade secrets and refuse to disclose that information to criminal defendants or their attorneys. The introduction of intellectual property claims into the criminal justice system raises undertheorized tensions between life, liberty, and property interests.

This Article offers the first wide-ranging account of trade secret evidence in criminal cases and …

The Problem With Ptab's Power Over Section 101, Kristen Jakobsen Osenga

Law Faculty Publications

The doctrine of patent eligible subject matter under 35 U.S.C. § 101 is a “real mess.” Other apt terms to describe this doctrine, and the jurisprudence surrounding it, include “chaos” and “crisis.” Few question whether patent eligible subject matter is a problem; however, many do not realize how high the stakes are and how dire the consequences. The erosion of patent protection, in part due to the “chaos,” impacts the willingness of companies to invest in innovation. This is especially true in today’s most important technologies where innovations occur in the spaces most likely to be flagged as ineligible subject …

Ignorance Over Innovation: Why Misunderstanding Standard Setting Organizations Will Hinder Technological Progress, Kristen Jakobsen Osenga

Law Faculty Publications

On January 17, 2017, the Federal Trade Commission (FTC) sued Qualcomm Inc. in federal district court, alleging antitrust violations in the company's licensing of semiconductor chips used in cell phones and more. The suit alleges, in part, that Qualcomm refuses to license its patents that cover innovations incorporated in technology standards (standard-essential patents, or SEPs), in contradiction of the company's promise to license this intellectual property on fair, reasonable, and nondiscriminatory (FRAND) terms. According to the FTC, Qualcomm's behavior reduces competitors' ability to participate in the market, raises prices paid by consumers for products incorporating the standardized technology, and at …

Higher Education And The Dmca, James Gibson, Christopher A. Cotropia

Law Faculty Publications

The nearly twenty-year history of the Digital Millennium Copyright Act’s safe harbor provisions has been marked by criticism from content owners, online service providers, and end users. Content owners complain about the cost of monitoring online content and sending takedown notices. Online service providers complain about the cost of receiving and processing the notices. And end users complain about their legitimate use of copyrighted works being subject to DMCA takedown. Colleges and universities have been at the forefront of this controversy; as providers of online services to their students, they have been a focus of both Congress and copyright owners. …

What Happened To The Public’S Interest In Patent Law?, Kristen Jakobsen Osenga

Law Faculty Publications

Protecting intellectual property is the government’s most important tool to encourage innovation, as our country has understood since its founding. The Constitution provides for the grant of exclusive patent rights to “promote the progress of science and the useful arts.” Thomas Jefferson, who was initially skeptical of the value of patents, later remarked, “An Act of Congress authorising [sic] the issuing patents for new discoveries has given a spring to invention beyond my conception.” From the very first patent, issued in 1790, to the 10 millionth patent, issued in June 2018,4 the United States has seen remarkable amounts of invention …

Standing With A Bundle Of Sticks: The All Substantial Rights Doctrine In Action, Christopher J. Morten

Faculty Scholarship

This Article provides an overview of the Federal Circuit’s all substantial rights doctrine. Surveying decades of case law, this Article seeks to clarify this confusing area of the law and set out the essential rules for those engaged in patent licensing, patent assignment, and patent litigation. This Article begins by explaining why effective ownership of a patent is critical to standing, and then describes the framework through which courts determine whether a party is, in fact, in possession of all substantial rights and is therefore the effective owner. While there are many factors that courts may consider, certain rights take …

Foreign Authors' Enforcement Of U.S. Reversion Rights, Jane C. Ginsburg

Faculty Scholarship

Thank you to all of the participants, and especially the first two panelists, for setting one part of the scene. I am going to talk about the United States’ termination right and some Berne and private international law consequences or implications of the termination right.

First, however, I’d like to advert to the two goals Rebecca Giblin referenced in her talk. One is remuneration, the other is dissemination. Author-protective laws in other countries also address dissemination. As Séverine Dusollier mentioned, a number of national laws include an obligation to exploit the work: if the publisher does not exploit the work, …

The Erie/Sears/Compco Squeeze: Erie’S Effects On Unfair Competition And Trade Secret Law, Sharon Sandeen

Faculty Scholarship

On the occasion of the 80th anniversary of the Supreme Court's famous decision in Erie Railroad v. Tompkins, this article explores the consequences of that decision on the development of unfair competition law in the United States. It details efforts by lawyers and legislators to grapple with those consequences and provides an overview of the evolution of unfair competition law in the U.S. since Erie, with a particular focus on trade secret law.

A Patiently Offensive Test: Proposing Changes To The Test For Design Patent Infringement, Carl J. Hall

Valparaiso University Law Review

No abstract provided.

The Drug Repurposing Ecosystem: Intellectual Property Incentives, Market Exclusivity, And The Future Of "New" Medicines, Sam F. Halabi

Faculty Publications

The pharmaceutical industry is in a state of fundamental transition. New drug approvals have slowed, patents on blockbuster drugs are expiring, and costs associated with developing new drugs are escalating and yielding fewer viable drug candidates. As a result, pharmaceutical firms have turned to a number of alternative strategies for growth. One of these strategies is "drug repurposing"-finding new ways to deploy approved drugs or abandoned clinical candidates in new disease areas. Despite the efficiency advantages of repurposing drugs, there is broad agreement that there is insufficient repurposing activity because of numerous intellectual property protection and market failures. This Article …

The Trademark Disclaimer Provision Of The Lanham Act: Is Uspto Flexibility Worth Litigant Ambiguity?, 17 J. Marshall Rev. Intell. Prop. L. 305 (2018), Scott Locke

UIC Review of Intellectual Property Law

Most trademark applicants and the attorneys who counsel them are familiar with the requirement that they disclaim terms within their trademarks because those terms are descriptive or generic. The United States Patent and Trademark Office’s authority to direct applicants to disclaim terms is codified in the Trademark Disclaimer Provision of the Lanham Act, which provides examiners with a great deal of discretion. The same provision has been interpreted as providing applicants with the options of: taking conflicting positions, e.g., that the term is neither descriptive nor generic in the context of their marks, when asserting common law rights; and pursuing …

Patent Pilot Program Perspectives: Patent Litigation In The Northern District Of Illinois, 17 J. Marshall Rev. Intell. Prop. L. 348 (2018)

UIC Review of Intellectual Property Law

A Patent Pilot Program, or PPP, is geared towards giving designated judges in various districts more experience with patent cases. The Volume 17 RIPL Executive Board interviewed several participating judges in the Northern District of Illinois’ PPP.

This note is comprised of interviews with Judge Thomas M. Durkin, Judge Matthew F. Kennelly, and Judge Rebecca R. Pallmeyer of the United States District Court, Northern District of Illinois; taken over the course of May and June of 2017 by the Volume 17 RIPL Board members Kaylee Willis and Benjamin Lockyer. Its contents compile a uniform effort by both the judges interviewed …

Deja Vu Or Copyright Infringement? Why Melania Trump Infringed On Michelle Obama's Copyrighted Speech Through Subconscious Copying, 17 J. Marshall Rev. Intell. Prop. L. 360 (2018), Danielle Mobley

UIC Review of Intellectual Property Law

In 2016, Melania Trump recited a beautiful speech at the Republican National Convention that had portions which sounded exactly like a speech given by Michelle Obama at the Democratic National Convention in 2008. Mrs. Trump feigned ignorance of the 2008 DNC speech, and essentially the speech was superseded by another news story within a week. While some critics claim plagiarism, Mrs. Obama could have a potential copyright infringement claim against Mrs. Trump based on the context of the speech, the actual portions lifted from Mrs. Obama’s speech, and the doctrine of subconscious copying. This article first examines the elements Mrs. …

The Supreme Court: A Help Or A Hindrance To The Federal Circuit's Mission?, 17 J. Marshall Rev. Intell. Prop. L. 298 (2018), Donald Dunner

UIC Review of Intellectual Property Law

Before the establishment of the Federal Circuit, the system of patent enforcement was deeply flawed, with the circuit courts then responsible for reviewing district court patent decisions harboring widely varying attitudinal views in the interpretation of the patent law. Suggestions for solving the problem through a single specialized appellate patent court were consistently rejected due to general hostility to specialized courts. The formation of the Federal Circuit in 1982 initially appeared to solve the problem in providing uniform and predictable rules governing the enforcement of patents, an essential aspect of the court’s mission. The Supreme Court did not provide any …

Knowledge/Skill Standards Of A "Person Skilled In Art": A Concern Less Visited, 17 Marshall Rev. Intell. Prop. L. 588 (2018), Naina Khanna, Jasmeet Gulati

UIC Review of Intellectual Property Law

The law is differential across jurisdictions when it comes to the skill standard required for the PSITA/PHOSITA in Patent Law. This article will analyze the various levels of skill addressed throughout European, Indian, and U.S. Patent Law. Whether the level of skill be ‘ordinary’, ‘extraordinary’ or otherwise, discrepencies exist throughout the court systems, manuals of examination and the like. Much hinges on the determination of patentability when the expertise or level of skill of the PSITA/PHOSITA is often vague and indeterminative. It is submitted that since the advancement in technology is taking place at a very rapid scale and every …

The Balances Of Two Trademark Rights: Generation Systems In Japan's Trademark Laws, 17 J. Marshall Rev. Intell. Prop. L. 608 (2018), Weiguang Wu

UIC Review of Intellectual Property Law

This article consists of 6 sections. In Section I, the article mainly introduces the basic theory of a trademark right as a private right and its purpose. A trademark right as a private right is purposeful to protect goodwill of trademark users, which is their labor fruits during trademark use in the course of business. A trademark right generated by use is called a right subsisting upon use (RSUU) system, which is mainly adopted in common law countries. A trademark right generated by registration is called a right subsisting upon registration (RSUR) system, which is mainly adopted by civil law …

Law, Brands, And Innovation: How Trademark Law Helps To Create Fashion Innovation, 17 J. Marshall Rev. Intell. Prop. L. 492 (2018), Dayoung Chung

UIC Review of Intellectual Property Law

This Article explores the role of trademark law in the fashion industry. For years, the fashion industry has drawn legal scholars’ attention for its maintenance of creative endeavors within a legal environment that offers limited protection against design copying. Some influential legal studies argued that copying paradoxically helps the fashion industry as unregulated copying stimulates the creation of new designs. Yet, this Article observes that the driver for new design creation is already built into the contemporary fashion industry. The question should rather be directed at who creates fashion and how the role of the law, if any, aids the …

The Slants Decision Understates The Value Of Trademark Registration In Promoting Speech - Correctly Decided With A Conclusory Analysis, 17 J. Marshall Rev. Intell. Prop. L. 380 (2018), David Brezina

UIC Review of Intellectual Property Law

The highly anticipated case of Matal v. Tam resulted in the band, The Slants, eventually being able to register their band name as a trademark, with a goal in mind to reclaim Asian stereotypes. Despite this decision, it is not immediately clear how having a registration enhances the registrant’s right to use the mark as a part of free speech, when the Court observes that Tam could call his band The Slants even without registration. This article touches on the Tam case, by analyzing both the positive and negative rights that federal trademark registration yields. By expanding on a variety …

Delaying Competition: How Sound Public Policy And Rigorous Antitrust Scrutiny Can Be Applied To Controversial Patent Settlements, 17 J. Marshall Rev. Intell. Prop. L. 655 (2018), Sam Hensel

UIC Review of Intellectual Property Law

The rising costs of prescription drugs are a growing concern for many Americans. The restraint of trade for pharmaceutical drugs is a cause of rising costs for consumers, as companies seek to push potential competitors out of the market to maintain profits. This unlawful restraint of trade will be discussed in this comment. Specifically, this comment will focus on "Pay for Delay" agreements, mostly between generic versus brand name pharmaceutical manufacturers. The proliferation of these agreements only leads to an unsustainable market that discourages innovation and advancement, and promotes fraud, as invalid patents are used as leverage to prevent generics …

A Battle Between Moral Rights And Freedom Of Expression: How Would Moral Rights Empower The "Charging Bull" Against The "Fearless Girl"?, 117 J. Marshall Rev. Intell. Prop. L. 672 (2018), Tzu-I Lee

UIC Review of Intellectual Property Law

No abstract provided.

Foreign Patent Decisions And Harmonization: A View Of The Presumption Against Giving Foreign Patent Decisions Preclusive Effect In United States Proceedings In Light Of Patent Law International Harmonization, 18 J. Marshall Rev. Intell. Prop. L. 1 (2018), Roberto Rosas

UIC Review of Intellectual Property Law

This article takes a look at the important issue of global harmonization in patent law. The article takes a snapshot at issues such as recognition and enforcement of foreign patent decisions, and how courts in the United States resolve foreign patent laws disputes brought before them. Although there are numerous legal topics that can be addressed in the subject of international patent law, this article takes special focus on the pressure put on the strong presumption of territoriality in patent law because of the rapid and still growing globalization and internalization of markets and intellectual property; while also discussing on …

Trade Secret Law: The Role Of Information Governance Professionals, 18 J. Marshall Rev. Intell. Prop. L. 27 (2018), William Lynch Schaller

UIC Review of Intellectual Property Law

Trade secrets are rapidly becoming the most important assets of many businesses. Information Governance (IG) professionals can and should play an integral part in managing company trade secrets, but not all companies have IG professionals and not all IG professionals understand the meaning of "trade secrets." This article maps the many facets of trade law and practice that are of potential interest to all IG professionals. It also highlights the different roles IG professionals can play with respect to trade secrets, from cataloging to monitoring to testifying.

When Open Source Software Encounters Patents: Blockchain As An Example To Explore The Dilemma And Solutions, 18 J. Marshall Rev. Intell. Prop. L. 55 (2018), Huang-Chih Sung

UIC Review of Intellectual Property Law

The original blockchain developers set the core programs, development interfaces, and application software of the blockchain as open source software, which are open to all developers for free. They have never thought of collecting royalties by claiming copyright, nor did they apply for patents. Since then, however, many follow-up blockchain developers applied the core programs to further developments and filed a large numbers of patent applications, causing the original blockchain developers to be very concerned about whether these patents will otherwise slow down or even endanger the innovation of blockchain technology. Consequently, finding legal solutions for the conflicts between open …

Making The List: What Does It Take To Make A Patient List A Trade Secret?, 18 J. Marshall Rev. Intell. Prop. L. 83 (2018), Sara Ghantous

UIC Review of Intellectual Property Law

What exactly makes a patient list a trade secret? This question has been a topic of heated debate for the last thirty years. It turns out that there is no right answer to this question. Long story short: it depends. The enumerated factors in the Uniform Trade Secrets Act (UTSA) lack specificity, and the courts fan to clarify how to meet the UTSA’s ambiguous standards. Because there is no clear approach to determine whether a patient list enjoys trade secret protection, there is no way for physicians to know the proper measures to take in gathering, maintaining, and protecting patient …