Intellectual Property Law Commons^™

Sovereign Immunity For Rent: How The Commodification Of Tribal Sovereign Immunity Reflects The Failures Of The U.S. Patent System, Katrina G. Geddes

Fordham Intellectual Property, Media and Entertainment Law Journal

Last year, a Fortune 500 pharmaceutical company attempted to rent the sovereign immunity of an American Indian tribe in order to shield its patents on a dry-eye drug from invalidation by generic competitors in inter partes review. Pharmaceutical firms are notorious for pursuing unconventional methods to extend the duration of their patents and, in this sense, the maneuver is unsurprising. The exploitation, however, of an historically disenfranchised community with limited economic opportunities is particularly unsettling. This Article will provide, firstly, a factual summary of the legal background of this case; secondly, a review of the February 2018 decision of the …

Will Artificial Intelligence Eat The Law? The Rise Of Hybrid Social-Ordering Systems, Tim Wu

Faculty Scholarship

Software has partially or fully displaced many former human activities, such as catching speeders or flying airplanes, and proven itself able to surpass humans in certain contests, like Chess and Jeopardy. What are the prospects for the displacement of human courts as the centerpiece of legal decision-making? Based on the case study of hate speech control on major tech platforms, particularly on Twitter and Facebook, this Essay suggests displacement of human courts remains a distant prospect, but suggests that hybrid machine – human systems are the predictable future of legal adjudication, and that there lies some hope in that combination, …

Minds, Machines, And The Law: The Case Of Volition In Copyright Law, Mala Chatterjee, Jeanne C. Fromer

Faculty Scholarship

The increasing prevalence of ever-sophisticated technology permits machines to stand in for or augment humans in a growing number of contexts. The questions of whether, when, and how the so-called actions of machines can and should result in legal liability thus will also become more practically pressing. One important set of questions that the law will inevitably need to confront is whether machines can have mental states, or — at least — something sufficiently like mental states for the purposes of the law. This is because a number of areas of law have explicit or implicit mental state requirements for …

Authors And Machines, Jane C. Ginsburg, Luke Ali Budiardjo

Faculty Scholarship

Machines, by providing the means of mass production of works of authorship, engendered copyright law. Throughout history, the emergence of new technologies tested the concept of authorship, and courts in response endeavored to clarify copyright’s foundational principles. Today, developments in computer science have created a new form of machine, the “artificially intelligent” (AI) system apparently endowed with “computational creativity.” AI systems introduce challenging variations on the perennial question of what makes one an “author” in copyright law: Is the creator of a generative program automatically the author of the works her process begets, even if she cannot anticipate the contents …

Who Owns (What We Characterize As) The News?, Laura A. Heymann

Faculty Publications

Will Slauter’s Who Owns the News? (2019) is subtitled A History of Copyright, but it could just as easily have been subtitled A History of Journalism. Slauter’s thoughtful and detailed story of the battle among newspaper publishers to secure legal and other protection for their work product is inseparable from questions about what it means for something to be “news” in the first place—and, indeed, whether “journalism” is something different from “news.” Developments subsequent to Slauter’s history—the emergence of the journalist as a literary figure, the heightened need to see news publishing as an economic (and profitable) enterprise, and the …

Reasonable Appropriation And Reader Response, Laura A. Heymann

Faculty Publications

Since the U.S. Supreme Court’s decision in Campbell v. Acuff-Rose Music, Inc., many courts have considered, when evaluating a claim of fair use in copyright, whether the defendant’s use of the plaintiff’s work is “transformative,” which the Campbell Court described as “add[ing] something new, with a further purpose or different character, altering the first with new expression, meaning, or message.”

In Cariou v. Prince, the Second Circuit shifted the focus of the analysis, both confirming that a work could be transformative even if it did not comment on the original work or its author and stating that the key to …

Data Scraping As A Cause Of Action: Limiting Use Of The Cfaa And Trespass In Online Copying Cases, Kathleen C. Riley

Fordham Intellectual Property, Media and Entertainment Law Journal

In recent years, online platforms have used claims such as the Computer Fraud and Abuse Act (“CFAA”) and trespass to curb data scraping, or copying of web content accomplished using robots or web crawlers. However, as the term “data scraping” implies, the content typically copied is data or information that is not protected by intellectual property law, and the means by which the copying occurs is not considered to be hacking. Trespass and the CFAA are both concerned with authorization, but in data scraping cases, these torts are used in such a way that implies that real property norms exist …

Towards A Jurisprudence Of Fashion, Susan Scafidi

Fordham Intellectual Property, Media and Entertainment Law Journal

No abstract provided.

The Future Of Facial Recognition Is Not Fully Known: Developing Privacy And Security Regulatory Mechanisms For Facial Recognition In The Retail Sector, Elias Wright

Fordham Intellectual Property, Media and Entertainment Law Journal

In recent years, advances in facial recognition technology have resulted in a rapid expansion in the prevalence of private sector biometric technologies. Facial recognition, while providing new potentials for safety and security and personalized marketing by retailers implicates complicated questions about the nature of consumer privacy and surveillance where a “collection imperative” incentivize corporate actors to accumulate increasingly massive reservoirs of consumer data. However, the law has not yet fully developed to address the unique risks to consumers through the use of this technology. This Note examines existing regulatory mechanisms, finding that consumer sensitivities and the opaque nature of the …

Dirty Little Secrets: Fracking Fluids, Dubious Trade Secrets, Confidential Contamination, And The Public Health Information Vacuum, Elliot Fink

Fordham Intellectual Property, Media and Entertainment Law Journal

While the carbon energy industry has frequently claimed that hydraulic fracturing processes and ingredients are proprietary and protected by trade secret laws, their large scale and volume nationwide and the well-documented dangers that they pose to public health have brought fracking under scrutiny. When individuals have been adversely impacted in their own backyards, weak federal and state laws and regulation have generally left these impacted citizens with little to no recourse and part of this problem stems from questionable uses of privacy law, specifically dubious claims of trade secrecy. Focusing specifically on Pennsylvania as a model of insufficient state regulation …

Implementing Privacy Policy: Who Should Do What?, David Hyman, William E. Kovacic

Fordham Intellectual Property, Media and Entertainment Law Journal

Academic scholarship on privacy has focused on the substantive rules and policies governing the protection of personal data. An extensive literature has debated alternative approaches for defining how private and public institutions can collect and use information about individuals. But, the attention given to the what of U.S. privacy regulation has overshadowed consideration of how and by whom privacy policy should be formulated and implemented.

U.S. privacy policy is an amalgam of activity by a myriad of federal, state, and local government agencies. But, the quality of substantive privacy law depends greatly on which agency or agencies are running the …

What's In A Name? The Terms "Commercial" And "Mediation" In The Singapore Convention On Mediation, Ellen E. Deason

Cardozo Journal of Conflict Resolution

One could interpret Shakespeare's famous quote as standing for the proposition that labels do not alter the essence of the thing named. In this article I draw inspiration from the quote to provide a foil for examining the use of the terms "commercial" and "mediation" in the Singapore Convention and Mediation Model Law. I will consider how the terms are framed and defined, the extent to which the names and their associated meanings introduce new ideas, and how their use might matter for the interpretation of important concepts in these instruments. Part I of the article discusses the term "commercial" …

Novel Adaptation To Stage And Screen: Rethinking The Contractual And Creative Process, Jennifer Rainville Mccabe

Cardozo Journal of Conflict Resolution

No abstract provided.

Does Trips Stop International Ip Free-Riders, Sam F. Halabi

Faculty Publications

Innovation policy-a relatively new phrase for an old set of top-down competitiveness approaches (e.g. "industrial policy," "science policy," "research policy," and "technology policy")-is necessarily a combination of centralized investment, structure of private-sector incentives, and public policy priorities.This combination has always been unwieldy, multivariate, and politically charged. As a result, constituencies favoring one or other approaches (e.g. longer patent protection, more funding of public universities and research infrastructure, tariff or non-tariff import measures) have lacked a unifying framework through which to analyze shared problems. In Innovation Policy Pluralism, Daniel J. Hemel and Lisa Larrimore Ouellette provide that framework. With a focus …

Special Report - From Start-Up To Scale-Up: A Report On The Innovation Clinic In Canada, Giuseppina D'Agostino

Commissioned Reports, Studies and Public Policy Documents

Intellectual property (IP) legal clinics play a crucial role in helping Canadian inventors and entrepreneurs bring their inventions to market while strengthening the foundations of the country’s innovation ecosystem. IP legal clinics provide pro bono IP information and assistance to under-resourced inventors who are not served by the profession. At the same time, when based at law schools, these clinics provide experiential learning opportunities to law students who want to work in the IP profession, which contributes to their career development and increases their legal and interpersonal acumen. These client and student-facing goals improve the ability of Canadians to recognize, …

The Uncertain Protection Of "Derivative" Trade Secrets, 18 J. Marshall Rev. Intell. Prop. L. 241 (2019), Benjamin Bradford, Remi Jaffre

UIC Review of Intellectual Property Law

This article discusses when a trade secret misappropriation claim can be premised on the acquisition, disclosure, or use of a product or method derived from a trade secret, rather than the acquisition, disclosure, or use of a trade secret itself. Although this question is likely to take on increasing importance as digital products that were made through the use of trade secrets and that can easily be copied become a larger part of everyday life, courts have rarely focused on it and have not come to any consensus. In this article, we survey the existing, inconsistent case law and analyze …

Intersection Of Antitrust Laws With Evolving Frand Terms In Standard Essential Patent Disputes, 18 J. Marshall Rev. Intell. Prop. L. 259 (2019), Claire Guo

UIC Review of Intellectual Property Law

This article addresses the issues of overlapping enforcement of antitrust laws and FRAND (Fair, reasonable and non-discriminatory terms) in standard essential disputes. Briefly, this article observes that the evolving FRAND terms will affect the degree that antitrust laws may intervene into SEP license practice. Part I of this article is a brief introduction to the background and main sections. Part II describes the evolvement of FRAND into a globally converged standard of royalty determination and a process through joint efforts of global courts. Part III discusses the changing interaction of FRAND with antitrust laws in three major jurisdictions, respectively China, …

Nationalizing Trips: An Examination Through Exceptions, 18 J. Marshall Rev. Intell. Prop. L. 285 (2019), Evan Tallmadge

UIC Review of Intellectual Property Law

What should not be patentable? The Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS”) codifies certain categories of subject matter that nations can exclude from patent protection. This Article examines how nations have interpreted these exclusions through an analysis of their national manuals of patent examining procedure and more importantly what explicit exceptions to patentability these countries have listed. The Article proceeds to analyze both the similarities and differences in approaches towards exclusions that attempt to ban the same subject matter from patentability and differences in what countries have chosen to bar from patenting. The Article concludes with an …

The Golden Claims: Necessary Support For Nonprovisional Application Prior Art References To Be Granted Provisional Application Filing Dates During Inter Partes Review Proceedings, 18 J. Marshall Rev. Intell. Prop. L. 326 (2019), Madison Makeever

UIC Review of Intellectual Property Law

Whether to beat an impending disclosure, disclose the most information possible, or simply to get the earliest possible filing date, provisional patent applications are a beneficial way to protect your patent rights. The few formal and statutory requirements allow provisionals to be prepared on a rush basis. The Federal Circuit held in 2017 that published nonprovisional applications can constitute prior art as of its provisional filing date but only as to elements in the application. However, ambiguity regarding published applications in the Federal Circuit’s 2015 precedent for awarding a patent it’s provisional filing date may lead to increased patent invalidation …

There Has Been An Infringement Of My Work And My Circuit Does Not Allow Me To Sue! The Time Has Come To Hash-Out The Federal Circuit Court Discrepancy On Copyright Registration, 18 J. Marshall Rev. Intell. Prop. L. 344 (2019), Thomas Placzek

UIC Review of Intellectual Property Law

The time has come to relieve the ambiguity created by the continued lack of consensus regarding the proper interpretation of 17 U.S.C. § 411(a). The persistent split amongst the various Federal Courts regarding the meaning of § 411(a)’s registration requirement allows some fortunate artists to immediately enforce their rights in a number of jurisdictions, while artists from other jurisdictions are prohibited from immediately enforcing the same rights. Several circuit and district courts subscribe to the “application approach,” while others employ the “registration approach.” This comment delves into the rationale behind the respective approaches, and discusses the arguments made for and …

Abstraction In Software Patents (And How To Fix It), 18 J. Marshall Rev. Intell. Prop. L. 364 (2019), Athul Acharya

UIC Review of Intellectual Property Law

Software has long posed a quandary for patent law. As many have observed, software is an abstract technology—but abstract ideas are supposedly ineligible for patenting. This Article explores just what that means, what it doesn’t mean, and what might fix the problem of abstraction in software patents. This Article offers two related ways to understand the abstract nature of software. First, computer science defines itself as a “science of abstraction,” and that self-definition finds real doctrinal purchase. Second, software code is designed to be what the doctrine calls “functional”—to describe abstract results that can be executed on heterogenous hardware without …

Overcoming Abstract Idea Exception Of Patent Subject Matter Eligibility Under 2019 Revised Patent Subject Matter Eligibility Guidance, 18 J. Marshall Rev. Intell. Prop. L. 382 (2019), Sangik Bae

UIC Review of Intellectual Property Law

This article discusses the judicial abstract idea exception of the current patent subject matter eligibility under 35 U.S.C. § 101. The current § 101 jurisprudence has been heavily criticized by lower courts and patent-stakeholders because it is hard to delineate the scope of the abstract idea exception within the current patent eligibility standard. In response, the United States Patent and Trademark Office (USPTO) issued the 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG). This article addresses the issue of whether the 2019 PEG fills the gap in the ambiguity of the test by summarizing the 2019 PEG. Then, the …

The F Word - An Early Empirical Study Of Trademark Registration Of Scandalous And Immoral Marks In The Aftermath Of The In Re Brunetti Decision, 18 J. Marshall Rev. Intell. Prop. L. 404 (2019), Vicenc Feliu

UIC Review of Intellectual Property Law

This article seeks to create an early empirical benchmark on registrations of marks that would have failed registration as “scandalous” or “immoral” under Lanham Act Section 2(a) before the Court of Appeals for the Federal Circuit’s In re Brunetti decision of December 2017 and to briefly examine the possible outcome of the Supreme Court’s grant of certiorari on that case. The Brunetti decision followed closely behind the Supreme Court’s Matal v. Tam and put an end to examiners denying registration on the basis of Section 2(a). In Tam, the Supreme Court reasoned that Section 2(a) embodied restrictions on free speech, …

Scandal In The Us And Australian Wine Industry! Trademarks And Gis As A Consumer Magnet?, 118 J. Marshall Rev. Intell. Prop. L. 421 (2019), Sarah Hinchliffe

UIC Review of Intellectual Property Law

In a dense global market, wine is heavily reliant on catering to the needs of consumers. Consumers, as part of the decision-making process, rely on information – comprising information type, and the way that it is portrayed. This article identifies branding opportunities for New World wineries – particularly in the United States and Australia – to capitalize on without compromising innovation in branding nor breaching IP law. It highlights that wineries in the New World have a plethora of opportunity to create a spunk and pizazz effect in their branding. At the same time, it cautions what wineries should avoid …

The Perspiration Principle,18 J. Marshall Rev. Intell. Prop. L. 463 (2019), Doug Lichtman

UIC Review of Intellectual Property Law

Should copyright be awarded in an instance where a work of authorship lacks inspiration and is instead simply the result of necessary and genuine hard work? Should patents likewise be offered to inventors whose achievements derive not from any flash of genius but from sweat and labor alone? In this Essay, Professor Lichtman revisits the economic case in favor of a "perspiration principle" under which hard work would be a sufficient trigger for intellectual property protection, even in instances where the resulting achievements lack the creative spark that patent and copyright law typically require.

Insolvency And Trademarks: How The Bankruptcy Code's Treatment Of Trademarks Promotes Naked Licensing, 18 J. Marshall Rev. Intell. Prop. L. 475 (2019), Michael Hopkins

UIC Review of Intellectual Property Law

In 1988, Congress amended § 365 of the Bankruptcy Code, which deals with the rejection of executory contracts, in order to allow intellectual property licensees to retain usage rights. However, this amendment did not include adding trademarks to the Bankruptcy Code’s definition of “intellectual property.” As such, Circuit Courts are divided on what remedies are available to trademark licensees following a licensor’s rejection of their agreement. Recently, the circuit split escalated when the First Circuit decided Mission Product Holdings, Inc. v. Tempnology, LLC, which was inconsistent with the Seventh Circuit’s 2014 holding in Sunbeam Products, Inc. v. Chicago American Manufacturing. …

When Enough Is Not Enough: Can Post Filing Experimental Data Bridge The Gap In Patent Disclosure Of Non-Enabling Specifications In The Unpredictable Arts?, 18 J. Marshall Rev. Intell. Prop. L. 496 (2019), Fei Sha

UIC Review of Intellectual Property Law

On issues of 35 U.S.C. §112, the Federal Circuit has been inconsistent in determining the extent to which patent applicants need to disclose examples of their claimed inventions in patent specifications to fully enable their patent claims. Confusion as to how many or what types of examples amount to sufficient disclosure is augmented for inventions in the unpredictable arts, such as chemistry, biotechnology, and pharmaceuticals. Current practice skewing towards disclosure of examples in greater numbers is a misguided effort to satisfy enablement, as shown by patents at issue in two recent Federal Circuit cases. A qualitative approach to disclosure is …

The Forking Phenomenon And The Future Of Cryptocurrency In The Law, 19 Uic Rev. Intell. Prop. L. 1 (2019), Chelsea Button

UIC Review of Intellectual Property Law

In the evolving and ever-changing world of cryptocurrency, new and exciting phenomena arise, including hard forks. Hard forks occur when two groups supporting a cryptocurrency disagree on how the code should evolve. If the changes are incompatible, the code diverges into two chains, essentially doubling the amount of each holder’s coin. Forking a coin is theoretically easy. However, maintaining a fork requires great effort and support by members of the community. This Article discusses the November 15, 2018 Bitcoin Cash hard fork and subsequent lawsuit, analyzing anti-trust, negligence, and conversion claims. Forcing de facto fiduciary duties on developers and miners …

Louboutin Heels And The Competition Goals Of Eu Trade Mark Law, 19 Uic Rev. Intell. Prop. L. 38 (2019), Cesar Ramirez-Montes

UIC Review of Intellectual Property Law

This article critically examines the judicial applications of the EU functionality doctrine and argues that recent CJEU decisions are at odds with the EU legislator’s declared intention to give functionality a much greater role in promoting product market competition. As a statutory ground for refusing registration even in the presence of consumer association and established goodwill, EU functionality serves to avoid undue competitive advantages by refusing protection in support of freedom to compete. EU functionality represents a significant obstacle to registration for purely natural, technical and value adding signs representing the shape of the goods. As of 2015, the wording …

Patent Infringement Under 35 U.S.C. § 271(G) For Goods Made In The United States, 19 Uic Rev. Intell. Prop. L. 64 (2019), Peter Hecker

UIC Review of Intellectual Property Law

Section 271(g) filled a loophole that allowed companies to escape patent infringement by producing goods overseas and then importing them. In filling this loophole, Congress may have unintentionally broadened patent liability for the production and use of goods in the United States. This paper discusses important ramifications of this broadened language and encourages the Federal Circuit or Congress to clarify the extent of patent infringement under Section 271(g).