Intellectual Property Law Commons^™

Certification (And) Marks – Understanding Usage And Practices Among Standards Organizations, Brad Biddle, Vigdis Bronder, Jorge L. Contreras

Utah Law Faculty Scholarship

In addition to creating technical standards that describe how different products or services interoperate, many standards development organizations (SDOs) also perform testing services that are designed to ensure that products that ostensibly comply with a standard actually work together. SDOs frequently call this process “certification,” and authorize implementers that pass the testing process to use a logo or similar mark. Certification marks are a type of trademark that would seem to be tailor-made for this process. Our empirical analysis shows that SDOs use certification marks only relatively rarely, however. This dissonance is striking, providing insight into both the remarkably sophisticated …

Jack Daniel’S Highlights The Second And Ninth Circuit’S Divide On The Application Of The Rogers Test, Hannah Knab

American University Business Law Review

No abstract provided.

“Fair” In The Future? Long-Term Limitations Of The Supreme Court’S Use Of Incrementalism In Fair Use Jurisprudence, Jonathan Alexander Fisher

Fordham Intellectual Property, Media and Entertainment Law Journal

April 2021 marked the most recent instance of the Supreme Court discussing copyright law, and more specifically fair use, in Google LLC v. Oracle America, Inc. The April 2021 decision notably resolved the case solely on fair use grounds, avoiding a difficult question as to the copyrightability of computer code that generates software user interfaces. By resolving this specific case in this manner, the Supreme Court’s actions seemingly confirm a pattern among fair use cases in which rulings made “narrowly” on the unique factual predicate often produce unclear applications within the “broader” context of fair use. Given the flexible, judge-made …

Help Was Not On The Way: Intellectual Property Liability Relief In A Pandemic Era, Kim Vu-Dinh

Faculty Scholarship

On January 21, 2020, the United States recorded its first case of COVID-19. By April of that same year, numerous hospitals across the nation had exhausted entire reserves of personal protective equipment (PPE), with looming uncertainty as to when they would be replenished. As infection numbers increased exponentially, global demand for some types of PPE increased by 1000%.

Volunteers across the nation assembled teams of makers—some professionals, but also scores of amateurs—to craft the critical equipment needed to slow down the onslaught of the pandemic. From creating cloth masks to ventilator pistons, nonprofits and everyday citizens were able to partially …

Patent Reality Checks: Eliminating Patents On Fake, Impossible And Other Inoperative Inventions, Jorge L. Contreras

Utah Law Faculty Scholarship

The recent assertion of patents originally held by Theranos, the defunct blood analysis company whose founders are under federal indictment for fraud, highlights the existence of patents that might claim non-existent or inoperative inventions. While such patents may ultimately be subject to validity challenges in court, their issuance nevertheless has harmful effects on markets and innovation. I propose several administrative and legislative measures directed toward the elimination of patents claiming inoperative inventions including (1) increasing USPTO efforts to detect potentially inoperable inventions, (2) heightening examination requirements, including a certification of enablement, for certain inventions, (3) enabling greater public input into …

'In The Public Interest' - University Technology Transfer And The Nine Points Document – An Empirical Assessment, Jorge L. Contreras

Utah Law Faculty Scholarship

In 2007, eleven major U.S. research universities and the Association of American Medical Colleges signed an accord titled “In the Public Interest: Nine Points to Consider in Licensing University Technology.” It outlined a range of issues that universities should consider when licensing their technology to the private sector - from reservations of rights and limitations on exclusivity to refraining from dealing with patent assertion entities to making medical technologies accessible at affordable prices. More than talking points, the document proposed specific contractual clauses intended to promote the educational and public welfare missions of universities. Today, more than one hundred academic …

Patents On 5g Standards Are Not Matters Of National Security, Jorge L. Contreras

Utah Law Faculty Scholarship

Recent arguments for stronger patent rights, particularly on 5G wireless telecommunications technologies, are relevant to discussions of national industrial policy and economic development, but are not matters of national security.

Balance And Standardization: Implications For Competition And Antitrust Analysis, Justus Baron, Jorge L. Contreras, Pierre Larouche

Utah Law Faculty Scholarship

Most technical standards development organizations (SDOs) have adopted internal policies embodying “due process” criteria such as openness, balance of interests, consensus decision making, and appeals. Unlike other aspects of SDO governance, relatively little scholarly research has considered the history, scope, and interpretation of SDO balance requirements. Likewise, existing case law and agency guidance offer little assistance in understanding precisely how these balance principles translate into specific antitrust requirements that apply to standards development. Given the absence of specific guidance on the meaning and implications of balance requirements for SDOs under the antitrust laws, it is necessary to review the development …

Extraordinary Writ Or Ordinary Remedy? Mandamus At The Federal Circuit, Jonas Anderson, Paul R. Gugliuzza, Jason Rantanen

Utah Law Faculty Scholarship

Ordinarily, in federal court, only case-ending judgments can be appealed. The writ of mandamus is one exception to that so-called final judgment rule. Mandamus permits a litigant who is dissatisfied with a lower court ruling to obtain immediate reversal if, among other things, the ruling was indisputably wrong and the party seeking mandamus has no other way to get relief. This exacting standard stems from mandamus’s origin as one of the common law’s “extraordinary” writs. Federal courts of appeals typically issue mandamus once or twice per year at most. 

In patent cases, however, mandamus is a remarkably ordinary form of …

Beyond Compulsory Licensing: Pfizer Shares Its Covid-19 Medicines With The Patent Pool, Chenglin Liu

Faculty Articles

On March 15, 2022, the United States, European Union, India, and South Africa reached an agreement on the waiver of intellectual property rights (IP rights) for COVID-19 vaccines. The waiver agreement has rekindled the debate on the balance between IP rights protection and equitable access to medicines during a public health crisis. India, South Africa, and other developing countries maintain that a waiver was the only way to make vaccines affordable and accessible. Leading pharmaceutical companies argue that the waiver will stifle innovation and make lifesaving medicines less accessible. Both sides have seemingly overlooked Pfizer's voluntary agreement with the Medicines …

The Case For The Ccb: A Defense Of The Constitutionality Of The Copyright Claims Board, Adam Vischio

Kernochan Center for Law, Media, and the Arts

Copyright litigation is expensive. Since copyright is federal law, disputes must be heard in federal court. Federal litigation can be prohibitively costly for creators bringing small claims, essentially leaving them with a right without a remedy against infringement of their work. Congress sought to alleviate this financial burden in 2020 when it passed the Copyright Alternative in Small-Claims Enforcement (“CASE”) Act, thus creating the Copyright Claims Board (“CCB”) to adjudicate small copyright disputes.

Opponents raised constitutional concerns about the CCB throughout the legislative process. The concerns included the fact that the CCB officers would wield unreviewable power and that Congress …

Checklist For Open Access Publishers On Implementing The Unesco Recommendation On Open Science, Unesco, Oaspa

Copyright, Fair Use, Scholarly Communication, etc.

Within the subset of open scientific knowledge, this document refers to scientific publications that include, inter alia, journal articles and books, research reports and conference papers. These publications may be, contain or be accompanied by original scientific research results, research data, software, source code, source materials, workflows and protocols, digital representations of pictorial and graphical materials and scholarly multimedia material. According to the UNESCO Recommendation on Open Science, access to scientific knowledge should be as open as possible, and may need to be restricted, in specific circumstance, for example to protect human rights, confidentiality, intellectual property rights, personal information, threatened …

The Application Of The Right To Be Forgotten In The Machine Learning Context: From The Perspective Of European Laws, Zeyu Zhao

Catholic University Journal of Law and Technology

The right to be forgotten has been evolving for decades along with the progress of different statutes and cases and, finally, independently enacted by the General Data Protection Regulation, making it widely applied across Europe. However, the related provisions in the regulation fail to enable machine learning systems to realistically forget the personal information which is stored and processed therein.

This failure is not only because existing European rules do not stipulate standard codes of conduct and corresponding responsibilities for the parties involved, but they also cannot accommodate themselves to the new environment of machine learning, where specific information can …

Laws In Conversation: What The First Amendment Can Teach Us About Section 230, Haley Griffin

Fordham Intellectual Property, Media and Entertainment Law Journal

As the law surrounding regulation of online intermediaries developed, the First Amendment and Section 230 emerged as two central players. Though different bodies of law, their jurisprudence intersects at several points: both display procedural interactions, implicate free speech concerns, apply to intermediaries engaged in publisher and editorial behaviors, and consider good faith and scienter. However, despite these commonalities, discussion of the First Amendment and Section 230 has largely been siloed.

This Note places First Amendment and Section 230 jurisprudence in conversation with one another to determine which specific intermediary behaviors are addressed by each law. Although many cases discuss “traditional …

Tailoring Ex Machina: Perspectives On Personalized Law, Gregory Klass

Georgetown Law Faculty Publications and Other Works

In their book Personalized Law: Different Rules for Different People, Omri Ben-Shahar and Ariel Porat propose a radical approach to lawmaking: using of big data and artificial intelligence to tailor legal dictates to the individual histories and characteristics of persons they affect. This essay critically discusses that proposal.

It first examines normative differences among the Ben-Shahar and Porat’s proposals for personalizing laws. There are important differences, for example, between using big data and artificial intelligence to tailor how a private legal power can be exercised to the capacities and interests of the power-holder and imposing different speed limits on …

Homography Of Inventorship: Dabus And Valuing Inventors, Jordana Goodman

Faculty Scholarship

On July 28, 2021, the Device for the Autonomous Bootstrapping of Unified Sentience ("DAB US") became the first computer to be recognized as a patent inventor. Due to the advocacy of DAB US's inventor, Dr. Stephen Thaler, the world's definition of "inventor" has finally fractured - dividing patent regimes between recognition of machine inventorship and lack thereof This division has sparked many scholarly conversations about inventorship contribution, but none have discussed the implications of a homographic inventorship.

This Article addresses the implications of international homographic inventorship - where countries have different notions and rules concerning patent inventorship - and the …

Who Benefits?: How The Aia Hurt Deceptively Non-Joined Inventors, Jordana N. Goodman

Faculty Scholarship

Congress enacted the America Invents Act (“AIA”) to bolster economic development, sustain American innovation, and protect American jobs. This pro-business legislation, however, overlooked one actor critical to any successful innovation endeavor: the inventor. The AIA created access barriers, preventing inventors from efficiently and effectively seeking the entire remedy spectrum to which they are entitled. Paul Morinville and others have opined that the new first-to-file system put small inventors out of business, naming the AIA the single worst disaster in the history of the U.S. patent system. Beyond the filing and subject matter changes, the AIA created fundamental access to justice …

Program & Proceedings Of The 2022 Colloquium Of The Stony Brook University Intellectual Property Partners Female Perspectives On Entrepreneurship And Research How Diverse Perspectives Inspire Creativity, Drive Innovation, And Encourage Inclusive Economic Growth, Clovia Hamilton, Elizabeth Dougherty, Amanda Elam, Pamela J. Kalbfleisch, Siri Terjesen, Jennifer L. Woolley

Technology & Society Faculty Publications

Diverse and varied perspectives are not only central to our institutional mission, but are essential to our society, as we hope to create a more inclusive, more sustainable and ultimately brighter world. Diverse perspectives and collaboration between different institutions, fields and industries must become the norm. This is the program and proceeding of Stony Brook University's colloquium on female perspectives on entrepreneurship and research and how diverse perspectives inspire creativity, drive innovation, and encourage inclusive economic growth. This was a much-needed discussion in January 2022 that's important for the development of entrepreneurship and research worldwide. At Stony Brook University, the …

Female Perspectives On Entrepreneurship And Research How Diverse Perspectives Inspire Creativity, Drive Innovation, And Encourage Inclusive Economic Growth, Clovia Hamilton, Elizabeth Dougherty, Amanda Elam, Pamela J. Kalbfleisch, Siri P. Terjesen, Jennifer L. Woolley

Technology & Society Faculty Publications

Diverse and varied perspectives are not only central to our institutional mission, but are essential to our society, as we hope to create a more inclusive, more sustainable and ultimately brighter world. Diverse perspectives and collaboration between different institutions, fields and industries must become the norm. This is the program and proceeding of Stony Brook University's colloquium on female perspectives on entrepreneurship and research and how diverse perspectives inspire creativity, drive innovation, and encourage inclusive economic growth. This was a much-needed discussion in January 2022 that's important for the development of entrepreneurship and research worldwide. At Stony Brook University, the …

Female Perspectives On Entrepreneurship And Research How Diverse Perspectives Inspire Creativity, Drive Innovation, And Encourage Inclusive Economic Growth, Clovia Hamilton, Elizabeth Dougherty, Amanda Elam, Pamela J. Kalbfleisch, Siri P. Terjesen, Jennifer L. Woolley

Technology & Society Faculty Publications

Diverse and varied perspectives are not only central to our institutional mission, but are essential to our society, as we hope to create a more inclusive, more sustainable and ultimately brighter world. Diverse perspectives and collaboration between different institutions, fields and industries must become the norm. This is the program and proceeding of Stony Brook University's colloquium on female perspectives on entrepreneurship and research and how diverse perspectives inspire creativity, drive innovation, and encourage inclusive economic growth. This was a much-needed discussion in January 2022 that's important for the development of entrepreneurship and research worldwide. At Stony Brook University, the …

Based On A True Story: The Ever-Expanding Progeny Of Rogers V. Grimaldi, Zachary Shufro

Fordham Intellectual Property, Media and Entertainment Law Journal

Trademark law limits the extent and manner to which individuals can use a surprisingly large percentage of common words in the English language. Indeed, as one empirical study of trademark registrations revealed, “when we use our language, nearly three-quarters of the time we are using a word that someone has claimed as a trademark.” Because trademark law grants a negative right to the mark-holder—that is to say, a right to prevent others from using that trademarked word in certain manners and contexts—it inherently conflicts with the First Amendment. In assessing the resulting discord from such a conflict, courts have several …

Speak Out: Verifying And Unmasking Cryptocurrency User Identity, Hadar Y. Jabotinsky, Michal Lavi

Fordham Intellectual Property, Media and Entertainment Law Journal

Terror attacks pose a serious threat to public safety and national security. New technologies assist these attacks, magnify them, and render them deadlier. The more funding terrorist organizations manage to raise, the greater their capacity to recruit members, organize, and commit terror attacks. Since the September 11, 2001 terror attacks, law enforcement agencies have increased their efforts to develop more anti-terrorism and anti-money laundering regulations, which are designed to block the flow of financing of terrorism and cut off its oxygen. However, at present, most regulatory measures focus on traditional currencies. As these restrictions become more successful, the likelihood that …

Reconceptualizing Open Access To Theses And Dissertations, Orit Fischman Afori, Dalit Ken-Dror Feldman

Fordham Intellectual Property, Media and Entertainment Law Journal

The global COVID-19 crisis has turned public attention to the special need for accessing those cutting-edge studies that are needed for further scientific innovation. Theses and dissertations (TDs) are prominent examples of such studies. TDs are academic research projects conducted by graduate students to acquire a high academic degree, such as a PhD. They encompass not only knowledge about basic science but also knowledge that generates social and economic value for society. Therefore, access to TDs is imperative for promoting science and innovation.

Open access to scientific publications has been in the focus of public policy discourse for two decades, …

Are Cryptopunks Copyrightable?, Brian L. Frye

Law Faculty Scholarly Articles

Larva Labs’s CryptoPunks NFTs are iconic. Created in 2017, they were among the first NFTs on the Ethereum blockchain. Four years later, they are among the most valuable, selling for anywhere from $200,000 to millions of dollars.

The CryptoPunks collection consists of 10,000 NFTs, each of which is associated with a unique CryptoPunks image. Everyone knows who owns each CryptoPunks NFT. The Ethereum blockchain provides indelible proof. But people disagree about who owns - and who should own - the copyright in the CryptoPunks images. Most CryptoPunks NFT owners believe they should own the copyright in the image associated with …

20 Years Of Trade Secrets Scholarship (2002-2022), Sharon Sandeen

Faculty Scholarship

No abstract provided.

The Impact Of Uncertainty Regarding Patent Eligible Subject Matter For Investment In U.S. Medical Diagnostic Technologies, A. Sasha Hoyt

Washington and Lee Law Review

Historically, 35 U.S.C. § 101, the statute governing patent eligible subject matter, has been construed broadly—with its legislative history indicating that it should cover “anything under the sun that is made by man.” The Supreme Court crafted three exceptions to § 101: (1) abstract ideas, (2) laws of nature, and (3) natural phenomena. In recent years, the Supreme Court’s eligibility jurisprudence has further narrowed § 101 to effectively exclude meritorious medical diagnostic methods. Indeed, since the Court’s decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc., the Federal Circuit has held every single diagnostic method claim brought before it …

The Problems With Trade Secret Protection/Overprotection In Asia, Kung-Chung Liu

Research Collection Yong Pung How School Of Law

Trade secret protection law has been an important complement to patent law and has gained increasing importance over the last three decades, not least in Asia. Major Asian countries are now at a crossroads, as some (Japan, Korea, Thailand, Taiwan, and China) are following the US approach to criminalizing trade secret infringement and imposing harsher penalties on economic espionage (Japan, Korea, Taiwan, and China). This paper identifies many of the problems associated with trade secret protection, provides indicators of the overprotection of trade secrets, and warns against its many side effects. It then points out the crossroads that Asian economies …

Copyright Ownership Of Movies And Films In Canada: Who's On First?, David Vaver

Editorials and Commentaries

No abstract provided.

“Inducing” Copyright Infringement In Canada: Is It A Thing?, David Vaver

Editorials and Commentaries

Is there such a thing as “inducing” copyright infringement? There isn’t in the United Kingdom, but the Federal Court in Bell Canada v L3D Distributing Inc (INL3D) 2021 FC 832 (“L3D Distributing”) thought there was in Canada and the defendants had done it. Indeed, the court thought that inducing infringement, which to date had been considered wrong only in respect of patents, applied to all forms of intellectual property (“IP”).

A La Recherche De Breyer Perdu, 21 Uic Rev. Intell. Prop. L. 38 (2022), Shubha Ghosh

UIC Review of Intellectual Property Law

No abstract provided.