Intellectual Property Law Commons^™

Brief Amici Curiae Of Intellectual Property Professors In Support Of Petitioner, No. 18-600, Texas Advanced Optoelectronic Solutions, Inc. V. Renesas Electronics America, Inc., Timothy R. Holbrook, Ann Bartow, Andrew Chin, David C. Hricik, Yvette Joy Liebesman, Lucas Osborn

All Faculty Scholarship

To comply with the obligations of the Uruguay Round Agreements, particularly the Agreement on the Trade Related Aspects of Intellectual Property (TRIPS), Congress amended 35 U.S.C. § 271(a) to make it an act of infringement to “offer to sell” a patented invention within the United States. See Uruguay Round Agreements Act, Pub. L. No. 103-465, §§ 531-533, 108 Stat. 4809 (1994).

The Federal Circuit has interpreted this provision in a manner contrary to the presumption against the extraterritorial reach of United States laws. The Federal Circuit has held that location of the ultimate sale contemplated in the offer controls the …

Revisiting Innovative Technologies To Determine Substantial Similarity In Musical Composition Infringement Lawsuits, Yvette Joy Liebesman

All Faculty Scholarship

A music video by Sir Mashalot² combines six award-winning popular country-western songs,³ demonstrating the amazing similarity among the tunes. Not mentioned by the mash-up⁴ artist is that none of the songs are infringing on any of the others. While all copied the same chord progressions, none copied any protected copyrightable expression, and thus none of the authors of the melodies are infringing.

It is often difficult to determine if there has been unlawful copying of a song. Currently, a judge or jury relies on music experts who analyze the songs based on a limited number of characteristics …

Conceptual Separability As Conceivability: A Philosophical Analysis Of The Useful Articles Doctrine, Mala Chatterjee

Faculty Scholarship

In copyright law, the useful articles doctrine plays a significant role in defining the limits of copyright’s domain and the boundary between copyright and patent. But the implicated notion of “conceptual separability” has proved to be difficult to define, and the Supreme Court’s effort to define it in the recent case Star Athletica, L.L.C. v. Varsity Brands, Inc. is unsatisfying. In an effort to resolve this challenge, the present paper puts forth a novel test for conceptual separability, one that draws inspiration from the philosopher’s idea of conceivability. The test is the following question: “When you conceive of the relevant …

Critical Race Ip, Deidre Keller

Journal Publications

In this Article, written on the heels of Race + IP 2017, a conference we co-organized with Amit Basole1 and Jessica Silbey,we propose and articulate a theoretical framework for an interdisciplinary movement that we call Critical Race Intellectual Property (Critical Race IP).Specifically, we argue that given trends toward maximalist intellectual property policy, it is now more important than ever to study the racial investments and implications of the laws of copyright, trademark, patent, right of publicity, trade secret, and unfair competition in a manner that draws upon Critical Race Theory (CRT). Situating our argument in a historical context, we articulate …

Technological Rights Accretion, Kristelia A. García

Publications

No abstract provided.

The Supreme Court Puts The Brakes On Cuozzo Speed Technologies: Investigating The Intersection Of Administrative Law And The Judiciary, Jason Kuchar

Cybaris®

No abstract provided.

What Is Useful And Novel? The Collision Between Intellectual Property Protection And Regulation Regarding Medical Devices, James Sutherland

Cybaris®

No abstract provided.

Declining Student Interest In Patent Law Reflects Declining Job Opportunities: How The Weakening Of The United States Patent System Weakened The Patent Law Profession, Patricia A. Martone

Cybaris®

No abstract provided.

Tinker Meets The Cyberbully: A Federal Circuit Conflict Round-Up And Proposed New Standard For Off-Campus Speech, Benjamin A. Holden

Fordham Intellectual Property, Media and Entertainment Law Journal

Tinker v. Des Moines Independent Community School District, the seminal school speech case interpreting the First Amendment to the U.S. Constitution, was decided by the U.S. Supreme Court long before mobile devices and social media upended accepted norms governing how students behave at school. The new reality has brought with it new line-drawing challenges for public schools faced with the warring requirements of school discipline on the one hand, and the First Amendment on the other. The threshold unanswered question this Article presents is whether Tinker should give jurisdiction to public schools over student speech which originates off campus. …

Let’S Play: A Walkthrough Of Quarter-Century-Old Copyright Precedent As Applied To Modern Video Games, Kyle Coogan

Fordham Intellectual Property, Media and Entertainment Law Journal

Looking to the copyright protection over the audiovisual displays of video games, current precedent—created by extensive litigation in the 1980s over early arcade games—may be a round hole into which the square peg of today’s highly complex video games would have difficulty fitting. This is an issue that has increasing importance as the market for the passive consumption of video game audiovisual displays through tournament streams, walk-throughs, etc., continues to balloon. If courts were to apply precedent from litigation in the 1980s to video games as they exist today, the idea that copyright protection automatically attaches to any and all …

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

Fordham Intellectual Property, Media and Entertainment Law Journal

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 …

Watching Big Brother: A Citizen’S Right To Record Police, Vincent Nguyen

Fordham Intellectual Property, Media and Entertainment Law Journal

Due to growing technological advances and the ubiquity of mobile phones, it has become increasingly common for citizens to use these devices to photograph and record events. Though largely uncontroversial, when used to record public police activity, some citizens have been arrested and charged under state wiretapping r eavesdropping statutes. Over time, various circuit courts have held that this right to record public police actions is a protected activity. Most recently, however, the U.S. Court of Appeals for the Eighth Circuit affirmed a lower court decision, which held that this act of recording is unprotected, thereby exemplifying how circuit courts …

University Trademarks And “Mixed Speech” On College Campuses: A Case Study Of Gerlich V. Leath And Student Free Speech Rights, Nathan Converse

Fordham Intellectual Property, Media and Entertainment Law Journal

Higher education has long been a fundamental building block upon which American democracy is based. The guarantee of free speech is itself a revered liberty in the American polity; it has, in turn, served as the catalyst for higher education. Recent events on college campuses continue to reexamine universities’ role in their students’ education and push the legal boundaries on student speech rights. In many instances, however, students’ speech and expressive viewpoint conflicts with that of other students. Other times, students’ speech conflicts with the expressive interests of their university. This Article examines the latter instance in the context of …

Case Ip Law, Case Western Reserve University School Of Law, The Spangenberg Center For Law, Technology & The Arts

Case IP Law News

Vol. 5, # 1

• Fusion program examines the fundamentals powering the world’s fourth industrial revolution
• IP Venture Clinic helps launch student startup aimed at increasing efficiency in aerodynamics
• Law school signs international partnership agreement with the IÉSEG School of Management in France
• Graduating 3L Aaron Childs’ paper to be published in the Virginia Sports and Entertainment Law Journal
• Great Lakes Sports & Entertainment Law Academy available online
• Patent Pro Bono Program opens new doors for Ohio inventors
• Professor Craig Nard coauthors new book, Intellectual Property and the Judiciary 
• Zahra Smith joins IP Venture Clinic as director
• Masters in Patent Practice …

Multi-Time Machine V. Amazon: Confusion In The Likelihood Of Confusion Analysis, Thuy Michelle Nguyen

Loyola of Los Angeles Law Review

No abstract provided.

Progress Or Profit: Reconsidering The Shortened Statutory Period Scheme, Max Oppenheimer

All Faculty Scholarship

No abstract provided.

Beyond Copyright: Applying A Radical Idea--Expression Dichotomy To The Ownership Of Fictional Characters, Tze Ping Lim

Vanderbilt Journal of Entertainment & Technology Law

Copyright protection for fictional characters in the United States is expanding on an uncertain and incoherent basis. With the event of the case Towle v. DC Comics, courts have now applied three different tests to discern a character's copyrightability. Towle was a significant decision because it was the first time a US court had held that a car (the Batmobile) was a copyrightable character. Although courts have utilized the ideas-expression dichotomy to differentiate unprotectable character "ideas" from protectable character 'expressions', the dichotomy is unlikely to alleviate the law's uncertainty and incoherence. Both the US ideas-expression dichotomy and character copyrightability doctrines …

Bigger And Better Patent Examiner Statistics, Shine Tu

Faculty & Staff Scholarship

The American government charges the United States Patent and Trademark Office (USPTO) with reading and reviewing patent applications to determine what new or improved inventions, machines, and processes qualify for patent protection. Each application is reviewed by a specific patent examiner who theoretically applies the standards of patentability in an even, fair, unbiased and consistent manner. This task requires the examiner to not only be internally consistent with the applications she reviews but also consistent with the behavior of other examiners within the same technology center. I have conducted two studies based on data from hundreds of thousands of patents, …

Intellectual Property In Experience, Madhavi Sunder

Michigan Law Review

In today’s economy, consumers demand experiences. From Star Wars to Harry Potter, fans do not just want to watch or read about their favorite characters— they want to be them. They don the robes of Gryffindor, flick their wands, and drink the butterbeer. The owners of fantasy properties understand this, expanding their offerings from light sabers to the Galaxy’s Edge®, the new Disney Star Wars immersive theme park opening in 2019.Since Star Wars, Congress and the courts have abetted what is now a $262 billion-a-year industry in merchandising, fashioning “merchandising rights” appurtenant to copyrights and trademarks that give fantasy owners …

The "Broadest Reasonable Interpretation" And Applying Issue Preclusion To Administrative Patent Claim Construction, Jonathan I. Tietz

Michigan Law Review

Inventions are tangible. Yet patents comprise words, and words are imprecise. Thus, disputes over patents involve a process known as “claim construction,” which formally clarifies the meaning of a patent claim’s words and, therefore, the scope of the underlying property right. Adversarial claim construction commonly occurs in various Article III and Article I settings, such as district courts or the Patent Trial and Appeal Board (PTAB). When these proceedings ignore each other’s claim constructions, a patent’s scope can become inconsistent and unpredictable. The doctrine of issue preclusion could help with this problem. The Supreme Court recently reemphasized in B & …

The Uneasy Case For Patent Law, Rachel E. Sachs

Michigan Law Review

A central tenet of patent law scholarship holds that if any scientific field truly needs patents to stimulate progress, it is pharmaceuticals. Patents are thought to be critical in encouraging pharmaceutical companies to develop and commercialize new therapies, due to the high costs of researching diseases, developing treatments, and bringing drugs through the complex, expensive approval process. Scholars and policymakers often point to patent law’s apparent success in the pharmaceutical industry to justify broader calls for more expansive patent rights.

This Article challenges this conventional wisdom about the centrality of patents to drug development by presenting a case study of …

Why A Monkey’S Action Of Taking A Selfie Should Expand The Definition Of An Author In The Copyright Act, David Schneider

Touro Law Review

No abstract provided.

Solving The Riddle! Bridging The Gap In The Federal Circuit’S Definition Of “Regular And Established Place Of Business” To Prevent Patent Trolls From Forum Shopping, Michael A. Morales

Touro Law Review

No abstract provided.

Selling Attorney's Fees, Anthony J. Sebok

Articles

Attorneys in the United States are under increasing pressure to change and adopt practices commonly found in the world of finance and business. Over the past thirty years, the bar and legal academics have debated what to do; the focus of this debate has been whether to change Model Rule of Professional Conduct 5.4 to allow partnerships between attorneys and nonlawyers or partnerships owned by nonlawyer shareholders.

One of the reasons attorneys are debating changes to Rule 5.4 is that the practice of law depends on capital, and the old methods for raising capital are no longer sufficient. Rather than …

Validity And Constitutionality Of Inter Parte Reviews Before The U.S. Supreme Court, Helen Kathryn Emmons Kelly

Online Theses and Dissertations

For 400 years, courts have adjudicated disputes between private parties about the validity of patents. Inventors apply for patents to an administrative agency. Patent examiners review the application to determine whether or not an idea is valid to have a patent issued. Patent examiners are people and sometimes errors are made. An administrative agency must have an administrative avenue to review a potential error. Six years ago, Congress created a review with the implementation of inter parte reviews. An argument before the U.S. Supreme Court looks at whether or not Inter partes review violate Article III of the U.S. Constitution. …

Proximate Vs. Geographic Limits On Patent Damages, Stephen Yelderman

Journal Articles

The exclusive rights of a U.S. patent are limited in two important ways. First, a patent has a technical scope—only the products and methods set out in the patent’s claims may constitute infringement. Second, a patent has a geographic scope—making, using, or selling the products or methods described in the patent’s claims will only constitute infringement if that activity takes place in the United States. These boundaries are foundational features of the patent system: there can be no liability for U.S. patent infringement without an act that falls within both the technical and geographic scope of the patent.

Climate Change Innovation, Products And Services Under The Gatt/Wto System, Padideh Ala'i, David Gantz

Contributions to Books

This is Chapter 14 of the book entitled "Research Handbook on Intellectual Property and Climate Change", edited by Joshua D. Sarnoff and published in Spring 2016 by EE Elgar. The co-authors are Professors of Law specializing in International Trade Law.

The chapter aims to identify some of the major sources of tension between climate change-related measures proposed or implemented on the national level and the trading rules as they have been applied by the WTO dispute settlement bodies over the past nearly 20 years. The chapter first describes three categories of national approaches to climate change, and highlights the potential …

Pledging Patents For The Public Good: Rise And Fall Of The Eco-Patent Commons, Jorge L. Contreras, Bronwyn H. Hall, Christian Helmers

Utah Law Faculty Scholarship

Commons and pledge structures have been used to achieve various goals of patent holders, including the advancement of social and philanthropic aims. The article analyzes the formation and structure of a widely acclaimed effort to pool patents for the promotion of green/clean technologies – the Eco-Patent Commons (EcoPC) – as well as its actual impact on technology diffusion and the factors leading to its demise in 2016. We combine quantitative econometric techniques with qualitative interviews to paint the most complete picture of this innovative and ambitious effort to date. Our quantitative results show that the patents contributed to the EcoPC …

New York Right Of Publicity Law: Panel Discussion, Kevin Goering, Justin Hughes, Mary Lafrance, Jennifer Rothman, Nathan Siegel, Nancy Wolff, Jeremy Sheff

Cardozo Arts & Entertainment Law Journal

No abstract provided.

Brand Renegades Redux, Jeremy N. Sheff

Faculty Publications

In "Brand Renegades," 1 NYU J. Intell. Prop. & Ent. L. 128 (2011), I identified a new frontier in trademark enforcement: consumers who use branded products out of affiliation with some aspects of the image cultivated by the brand owner, but whose conspicuous consumption of the brand generates social meanings that are inconsistent with that image. As far-right political movements have built momentum in the consumer economies of the West, this type of "brand renegade" consumption has taken a much darker turn. Over the past two years, neo-Nazis and white supremacists have conspicuously adopted well-known brands in their bids to …