Intellectual Property Law Commons^™

The Right Of Publicity: Privacy Reimagined For New York?, Jennifer Rothman

Cardozo Arts & Entertainment Law Journal

No abstract provided.

Musical Innovation's Sworn Enemy: The Infringer, Stuart Anello

Cardozo Arts & Entertainment Law Journal

No abstract provided.

Ip Preparedness For Outbreak Diseases, Ana Santos Rutschman

All Faculty Scholarship

Outbreaks of infectious diseases will worsen, as illustrated by the recent back-to-back Ebola and Zika epidemics. The development of innovative drugs, especially in the form of vaccines, is key to minimizing future outbreaks, yet current intellectual property (IP) regimes are ineffective in supporting this goal.

IP scholarship has not adequately addressed the role of IP in the development of vaccines for outbreak diseases. This Article fills that void. Through case studies on the recent Ebola and Zika outbreaks, it provides the first descriptive analysis of the role of IP from the pre- to the post-outbreak stages, specifically identifying IP inefficiencies. …

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 …

Brief Of Intellectual Property Law Scholars As Amici Curiae In Support Of Neither Party, Westerngeco Llc V. Ion Geophysical Corp., No. 16-1011, Us Supreme Court, Timothy R. Holbrook, Ann Bartow, Dan L. Burk, Donald P. Harris, David C. Hricik, Amy L. Landers, Yvette Joy Liebesman, Lee Ann W. Lockridge, Jason Rantanen

All Faculty Scholarship

This amici curiae brief was filed on behalf of Intellectual Property Law Scholars in WesternGeco LLC v. Ion Geophysical Corp. in the U.S. Supreme Court. The question presented is:

"Whether the U.S. Court of Appeals for the Federal Circuit erred in holding that lost profits arising from prohibited combinations occurring outside of the United States are categorically unavailable in cases in which patent infringement is proven under 35 U.S.C. § 271(f)."

In RJR Nabisco, Inc. v. European Community, 136 S. Ct. 2090 (2016), the Supreme Court articulated a two-step method for assessing the extraterritorial reach of a US statute:

1. …

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 …

H&M V. Revok: Use Of Street Art In Commercial Ad Campaigns, Richard H. Chused

Other Publications

No abstract provided.

Justifying India's Patent Position To The United States International Trade Commission And Office Of The United States Trade Representative, Sean Flynn, Srividhya Ragavan, Brook Baker

Scholarly Articles in Law Reviews & Journals

No abstract provided.

Music Videos: The Gray Area In First Amendment Protected Speech And The Resulting Trademark Consequences, Lindsey Gold

Cardozo Law Review de•novo

This Note argues for a federal classification of music videos as noncommercial, artistic speech under the First Amendment. As an artistic expression of a singer, music videos are no longer the promotional mini-movies they once were; they are now utilized widely by artists to express their artistic preferences—including the communication of social, political, and cultural doctrine.

Reining In A 'Renegade' Court: Tc Heartland And The Eastern District Of Texas, Jonas Anderson

Scholarly Articles in Law Reviews & Journals

In TC Heartland v. Kraft Foods Group Brands, the Supreme Court tightened the venue requirement for patent cases, making it more difficult for a plaintiff to demonstrate that a district court has venue over a defendant. Many commentators, however, view TC Heartland as merely a “reshuffling” of the district courts that receive patent cases. Whereas before the case, a large percentage of patent cases were filed in the Eastern District of Texas, now, after TC Heartland, various other U.S. district courts (principally, the District of Delaware) have experienced an increase in patent infringement filings. Some commentators are unconvinced that this …

Court Capture, Jonas Anderson

Scholarly Articles in Law Reviews & Journals

Capture — the notion that a federal agency can become controlled by the industry the agency is supposed to be regulating — is a fundamental concern for administrative law scholars. Surprisingly, however, no thorough treatment of how capture theory applies to the federal judiciary has been done. The few scholars who have attempted to apply the insights of capture theory to federal courts have generally concluded that the federal courts are insulated from capture concerns.

This Article challenges the notion that the federal courts cannot be captured. It makes two primary arguments. As an initial matter, this Article makes the …

Inequality, Innovation, And Patents, Colleen V. Chien

Faculty Publications

This article explores the relationship between patents, innovation, and inequality, making three contributions. First, it reveals how shifts in patented innovation over the last several decades have contributed to broader social and economic shifts, away from manufacturing-based, domestic, and independent innovation, and towards digital, foreign, and corporate innovation, validating both optimistic accounts of immigration-driven, digital prosperity and pessimistic accounts of the shrinking role of domestic innovators. Second, it offers a framework for understanding the relationship between innovation and inequality that includes both the potentially inequality-increasing impacts of innovation and the potentially inequality-decreasing impacts of innovation and specifies the contribution of …

Dr. Seuss, The Juice And Fair Use Revisited: Two Decades Of Parody And Satire In Copyright Law, Tyler T. Ochoa

Faculty Publications

This essay will summarize some of the salient features and arguments made in the original article. It will also analyze copyright infringement cases in the last 20 years applying the fair use doctrine to parody and satire.

Squeeze Blood From Turnip: Abusing Trademark Law's Morality Provision In The Ttab, Cathay Y. N. Smith

Faculty Law Review Articles

Trademark law prohibits the registration of trademarks that are immoral or scandalous. This "Morality Provision"in trademark law has been criticized as being an unconstitutional abridgement of free speech and resulting in inconsistency and other problems at the USPTO examination stage. This essay exposes another problem with the Morality Provision, which is its abuse by third parties in the TTAB. This essay explores why the Morality Provision-and not any other provisions in trademark law-is susceptible to this type of abuse and outlines examples of these abusive cases in the TTAB. These cases show that, in inter partes proceedings in the TTAB, …

Claiming Design, Mark P. Mckenna

Journal Articles

Design stands out among intellectual property subject matter in terms of the extent of overlapping protection available. Different forms of intellectual property usually protect different aspects of a product. In the design context, however, precisely the same features are often subject to design patent, trademark, and copyright protection-and parties commonly claim more than one of those forms. Yet, as we show, the claiming regimes of these three forms of design protection differ in significant ways: the timing of claims; claim format (particularly whether the claims are visual or verbal); the multiplicity of claims (whether and how one can make multiple …

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.

Clarity In Remedies For Patent Cases, Ryan T. Holte

Akron Law Faculty Publications

This article examines the state of patent remedies following the Supreme Court's decision in eBay Inc. v. MercExchange, L.L.C. (2006), which altered the standard for granting injunctions in patent infringement cases. The author argues that over a decade of inconsistent application and discussion regarding the eBay precedent has led to confusion in patent remedies. The article provides:A historical overview of the eBay case and the procedural factors contributing to the current state of uncertainty. An empirical analysis highlighting differences in injunction decisions between district courts and the Federal Circuit, noting the latter's continued inclination toward granting injunctions.A discussion on the …

Top Tens In 2017: Patent, Trademark, Copyright And Trade Secret Cases, Stephen M. Mcjohn

Suffolk University Law School Faculty Works

The Supreme Court loosened the grip of patentees on their products, holding that contractual restrictions on patented product are ineffective to preserve patent rights. The Court also loosened the grip of the Eastern District of Texas on patent cases, announcing a narrower standard that will send more cases to Delaware. The Federal Circuit cases piled up on applying the Alice standard to filter nonpatentable abstract ideas from patentable inventions. Meanwhile, even as the constitutionality of the Patent Trial and Appeals Board pends before the Supreme Court, hundreds of PTAB decisions on the validity of patents move onward to the Federal …

Copyright As Market Prospect, Shyamkrishna Balganesh

Faculty Scholarship

For many decades now, copyright jurisprudence and scholarship have looked to the common law of torts – principally trespass and negligence – in order to understand copyright’s structure of entitlement and liability. This focus on property – and harm-based torts – has altogether ignored an area of tort law with significant import for our understanding of copyright law: tortious interference with a prospective economic advantage. This Article develops an understanding of copyright law using tortious interference with a prospect as a homology. Tortious interference with a prospect allows a plaintiff to recover when a defendant’s volitional actions interfere with a …

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 …

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 …

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 …

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, …

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 …

Intellectual Property As Seen By Barbie And Mickey: The Reciprocal Relationship Of Copyright And Trademark Law, Jane C. Ginsburg

Faculty Scholarship

Some years ago, caselaw on trademark parodies and similar unauthorized “speech” uses of trademarks could have led one to conclude that the law had no sense of humor. Over time, however, courts in the US and elsewhere began to leaven likelihood of confusion analyses with healthy skepticism regarding consumers’ alleged inability to perceive a joke. These decisions did not always expressly cite the copyright fair use defense, but the considerations underlying the copyright doctrine seemed to inform trademark analysis as well. The spillover effect may indeed have been inevitable, as several of the cases in which the fair use defense …

Behind The Steele Curtain: An Empirical Study Of Trademark Conflicts Law, 1952-2016, Tim W. Dornis

Vanderbilt Journal of Entertainment & Technology Law

The law on international trademark disputes is founded on precedent from 1952. Steele v. Bulova Watch Co. is the first and only Supreme Court decision addressing the question of how far the Lanham Act should be extended beyond the United States' national borders when international infringement is at issue. The decision laid the foundation for a three-pronged test that focuses on the factors of defendant nationality, effects on US commerce, and conflicts with foreign law. Although international trademark conflicts have multiplied dramatically--particularly throughout the last decade--there has been no systematic and comprehensive account of the actual state of the law. …

Eli Lilly And The International Investment Law Challenge To A Neo-Federal Ip Regime, Jason Yackee, Shubha Ghosh

Vanderbilt Journal of Entertainment & Technology Law

This Article examines the implications of the Eli Lilly case-and international investment law (IIL) more generally-for the operation of an international intellectual property (IP) regime that functions along the lines of the "neo-federalist" model developed by Professors Dinwoodie and Dreyfuss. The neo-federalist model involves a world in which the international IP regime grants national political communities substantial discretion to pursue their own visions of the normatively proper balance between the rights of IP creators and of those who seek to use it. Importantly, that discretion involves the ability to alter the existing normative balance in either the direction of more …

The Limits Of International Copyright Exceptions For Developing Countries, Ruth L. Okediji

Vanderbilt Journal of Entertainment & Technology Law

The relationship between intellectual property (IP) protection and economic development is not better understood today than it was five decades ago at the height of the independence era in the Global South. Development indicators in many developing and least-developed countries reflect poorly in precisely the areas that are most closely associated with copyright law's objectives, such as promoting democratic governance, facilitating a robust marketplace of ideas, fostering domestic markets in cultural goods, and improving access to knowledge. Moreover, evidence suggests that copyright law has not been critical to the business models of the creative sectors in leading emerging markets. These …

Table Of Contents

Catholic University Journal of Law and Technology

No abstract provided.

Monitoring Behavior: Universities, Nonprofits, Patents, And Litigation, Michael S. Mireles, Teo Firpo

McGeorge School of Law Scholarly Articles

This paper examines the confluence of two important issues concerning patent law. The two issues are the merits of the debate concerning the supposed “patent troll” crisis and the increased patenting and licensing of university and other nonprofit inventions, including the litigation of those patents.

First, there is a debate in the literature concerning the presence and scope of the problem concerning so-called “patent trolls.” To some, supposed “patent troll” behavior is ordinary litigation behavior, and to others, it points to problems with the patent litigation system. Indeed, some may argue that the benefits of “patent trolls” may outweigh the …