Intellectual Property Law Commons^™

Trademark Fame And Corpus Linguistics, Jake Linford, Kyra Nelson

Scholarly Publications

Trademark law recognizes that the same word can mean different things in different commercial contexts. Legal protection might extend to two or more owners who use the same symbol (like Delta) to indicate different sources of disparate goods or services, such as airlines and faucets. Generally, only those uses that threaten to confuse consumers-the use of similar symbols on identical or related goods-are subject to legal sanction.

But the law extends special protection to famous trademarks, not only against confusing use, but also against dilution: non-confusing use that blurs or tarnishes the distinctiveness of the famous mark. The result of …

Intangible Justice? Intellectual Property Disputes And Canadian Small Claims Courts, Anthony D. Rosborough, Reagan Seidler

Articles, Book Chapters, & Popular Press

This article investigates the jurisdiction and institutional competence of Canadian small claims courts and tribunals with respect to complex claims, and in particular, intellectual property (IP) claims. Recent research points to an increase in these types of claims. A doctrinal analysis finds small claims bodies have wide jurisdiction over intellectual property infringement, contract, and licensing disputes. They can also rule on issues of validity, though they cannot affect registrations in the databases of the Canadian Intellectual Property Office. Remedies including damages, accountings, and the recovery of infringing goods are available in many provinces. As to their capacity, the article assesses …

A Functional Approach To Agency (In)Action, Lidiya Mishchenko

SMU Law Review

In the last five years, the Supreme Court has had a frenzied approach to judicial review of agency action, with two wings of the Court pulling it in opposite directions. The ideological divide of the Court on deference to agency action was on stark display in three recent cases dealing with the Patent and Trademark Office’s (PTO’s) new proceeding for reevaluating issued patents (inter partes review (IPR)). Specifically, in three vacillating opinions, the Court expanded, contracted, and then again expanded the scope of whether and to what extent a decision by the PTO Director to institute this new proceeding can …

Trademark Law And Consumer Constraints, Laura A. Heymann

Faculty Publications

Trademark law’s focus is on the consumer. Both the trademark literature and the marketing literature, however, tend to assume a consumer with few constraints on economic or cognitive processing resources. For example, scholars have argued that some confusion in the marketplace is not only inevitable but is also an overall positive in that encountering confusion trains consumers to be more resourceful and to learn how to interpret marketing communications more carefully. But not all consumers have the same level of cognitive and economic resources. Disadvantaged consumers—such as those not literate in the English language, those with lower socioeconomic status, and …

Whose Progress?, Laura A. Heymann

Faculty Publications

Article I, Section 8, Clause 8 of the U.S. Constitution provides that Congress shall have power “to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” These words have been the subject of countless books and scholarly articles. Professor Silbey’s engaging contribution [in Against Progress: Intellectual Property Law and Fundamental Values in the Internet Age] to the conversation focuses on one word—progress—and what it should mean as we think about intellectual property law’s motivations and justifications in the twenty-first century.

But even …

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 …

Pay-To-Playlist: The Commerce Of Music Streaming, Christopher Buccafusco, Kristelia García

Faculty Scholarship

Payola—sometimes referred to as “pay-for-play”—is the undisclosed payment, or acceptance of payment, in cash or in kind, for promotion of a song, album, or artist. Some form of pay-for-play has existed in the music industry since the nineteenth century. Most prominently, the term has been used to refer to the practice of musicians and record labels paying radio DJs to play certain songs in order to boost their popularity and sales. Since the middle of the twentieth century, the FCC has regulated this behavior—ostensibly because of its propensity to harm consumers and competition—by requiring that broadcasters disclose such payments.

As …

The (Unnoticed) Revitalization Of The Doctrine Of Equivalents, Daryl Lim

Faculty Scholarly Works

Over the past century, few patent issues have been considered so often by the Supreme Court of the United States as the doctrine of equivalents (“DOE”). This judge-made rule deals with a question that lies at the heart of patent policy—what is the best way to define property rights in an invention? The doctrine gives patentees an opportunity to ensnare an accused device that does not literally infringe a patent claim if the accused device is substantially similar to each claim limitation. Patentees enjoy this advantage, but it comes at a cost to the public, who must face the uncertainty …

Blockchain And The Genesis Of Creative Justice To Disintermediate Creativity, Tonya M. Evans

Faculty Scholarly Works

Historically, the art market has been shrouded in opaqueness and exclusivity, permissioned access and asymmetry of information that rivals the systemic ills of legacy financial markets that led to the Great Recession. Moreover, legacy art market stakeholders have, through the centuries, been entrenched in elitist and inequitable notions of art that excluded Black artists. These legacy intermediaries have also consistently demonstrated a deep and enduring disdain for any art connected to the digital world. That is, until the age of COVID-19 and the dramatically increasing value and dominance of the non-fungible token (NFT) market.

This Essay explores why, and how, …

Under A Nifty Light: Trademark Considerations For The New Digital World, Willajeane Mclean

Faculty Articles and Papers

No abstract provided.

Contracting Tools For Transportation Data, Suzanne Bell, Olivia Dworkin

Journal of Law and Mobility

Troves of transportation data can be, and are, produced by smart infrastructure. Municipalities collect various kinds of transportation data, including traffic information such as accidents, flows, and volumes; bicycle information such as bike counts; pedestrian information such as pedestrian counts; smart bus stop information; street mapping information; location information for traffic signals; mapping details such as the miles of city streets; and information on roadwork and infrastructure planning such as construction or road closures expected to affect traffic.

Governments, educational institutions, non-profit enterprises, and businesses find transportation data useful for purposes such as improving infrastructure, reducing traffic congestion, improving vehicle …

Confronting Intellectual Property Nationalism, Cynthia M. Ho

Faculty Publications & Other Works

Stories about nations engaging in vaccine (and medical) nationalism by hoarding limited COVID-19 vaccines and treatments are widespread, but there is a hidden phenomenon that has exacerbated vaccine nationalism and prolonged the pandemic: intellectual property nationalism or “IP nationalism.” This Article coins and explains this term and highlights its negative impacts. Essentially, some nations, primarily of the Global North, are hoarding essential knowledge protected by intellectual property (IP). This Article argues that IP nationalism has contributed to millions of unnecessary deaths and limited the growth of the global economy. Meanwhile, countries and pharmaceutical companies obscure the role of IP nationalism …

Stumbling Over Trips: The International Intellectual Property Waiver Petition And The U.S. Executive, Jordan Paradise, Christina Conroy

Faculty Publications & Other Works

This article examines the relationship among intellectual property (IP) law protections; United States (U.S.) and international law and policy; and the actualization of diagnostics, drugs, and vaccines in the time of the COVID-19 coronavirus. Two key international treaties that relate to IP law--The Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement and the Doha Declaration on the TRIPS Agreement and Public Health (Doha Declaration) - establish international norms for the protection of IP. Core aspects of each of these treaties are described along with the role of the World Trade Organization (WTO) and concepts of compulsory licensing. As a result …

Stumbling Over Trips: The International Intellectual Property Waiver Petition And The U.S. Executive, Jordan Paradise, Christina Conroy

Faculty Publications & Other Works

This article examines the relationship among intellectual property (IP) law protections; United States (U.S.) and international law and policy; and the actualization of diagnostics, drugs, and vaccines in the time of the COVID-19 coronavirus. Two key international treaties that relate to IP law--The Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement and the Doha Declaration on the TRIPS Agreement and Public Health (Doha Declaration) - establish international norms for the protection of IP. Core aspects of each of these treaties are described along with the role of the World Trade Organization (WTO) and concepts of compulsory licensing. As a result …

Comment: On Patents And Appropriations—And Tragedies, David O. Taylor

Washington and Lee Law Review

I write to provide a few remarks concerning Sasha Hoyt’s illuminating work published in the pages of this journal. In it, Hoyt addresses the impact of the Supreme Court’s patent eligibility decisions on private investment in the development of medical diagnostic technologies. As an initial matter, I want to congratulate Hoyt for tackling an important topic. As Hoyt discusses, medical diagnostic technologies enable the diagnosis of diseases and other medical conditions such as genetic disorders, and early and accurate diagnosis may lead to early treatments and, ultimately, at least in some cases, saved lives. But the creation of medical diagnostic …

“I Bet You Don’T Get What We Get”: An Intersectional Analysis Of Technology-Facilitated Violence Experienced By Racialized Women Anti- Violence Online Activists In Canada, Nasreen Rajani

Canadian Journal of Law and Technology

Despite growing attention to violence that women face in online settings, a relatively small proportion of academic work centres on the experiences and perspectives of racialized women in Canada. Informed by an intersectional framework, I draw on semi-structured interviews with nine women across Canada, all of whom are involved in anti-violence online activism, about their experiences of technology-facilitated violence (TFV). Their experiences revealed less prominent narratives, including instances of TFV beyond instances of intimate partner violence (IPV) and beyond sources of anonymous trolling by supposed white men, such as violence perpetrated by peers, white women, and racialized men. In this …

Intimate Images And Authors’ Rights: Non- Consensual Disclosure And The Copyright Disconnect, Meghan Sali

Canadian Journal of Law and Technology

This article responds to a brand of legal realpolitik that says using property law to respond to the non-consensual distribution of intimate images (NCDII) is appropriate and even necessary, because its remedial frameworks are well developed and provide the relief that is often most sought after by targets of an assault: the immediate removal of photos from online platforms. While some targets are not considered the ‘‘authors’’ of their intimate images, most of the images that are the subject of NCDII are selfies, taken by the target themselves. In these cases, that person rightfully owns the copyright in those images …

On The Internet, Nobody Knows You Are A Dog: Contested Authorship Of Digital Evidence In Cases Of Gender-Based Violence, Suzie Dunn, Moira Aikenhead

Canadian Journal of Law and Technology

We examine various aspects of digital evidence at GBV trials, drawing on relevant Canadian criminal case law. First, we describe some of the unique challenges related to electronic documents generally with respect to determining authorship. Second, we review some of the historical and ongoing practices within the criminal justice system that rely on harmful gendered myths about GBV and note the potential for these myths to emerge in relation to digital evidence. Third, we discuss the duty of investigating police officers to gather the necessary available digital evidence to demonstrate authorship and note potential gaps in current investigatory practices that …

Responding To Deficiencies In The Architecture Of Privacy: Co-Regulation As The Path Forward For Data Protection On Social Networking Sites, Laurent Cre ́Peau

Canadian Journal of Law and Technology

Social Networking Sites like Facebook, Twitter and the like are a ubiquitous part of contemporary culture. Yet, as exemplified on numerous occasions, most recently in the Cambridge Analytica scandal that shook Facebook in 2018, these sites pose major concerns for personal data protection. Whereas self-regulation has characterized the general regulatory mindset since the early days of the Internet, it is no longer viable given the threat social media poses to user privacy. This article notes the deficiencies of self-regulatory models of privacy and contends jurisdictions like Canada should ensure they have strong data protection regulations to adequately protect the public. …

Artificial Intelligence In Canadian Healthcare: Will The Law Protect Us From Algorithmic Bias Resulting In Discrimination?, Bradley Henderson, Colleen M. Flood, Teresa Scassa

Canadian Journal of Law and Technology

In this article, we canvas why AI may perpetuate or exacerbate extant discrimination through a review of the training, development, and implementation of healthcare-related AI applications and set out policy options to militate against such discrimination. The article is divided into eight short parts including this introduction. Part II focuses on explaining AI, some of its basic functions and processes, and its relevance to healthcare. In Part III, we define and explain the difference and relationship between algorithmic bias and data bias, both of which can result in discrimination in healthcare settings, and provide some prominent examples of healthcare-related AI …

Character Copyrightability In Chaos: How Unclear Character Copyrightability Tests Lead To Improper Result, Kathleen Hanley

American University Law Review

Copyright law for fictional characters has been inconsistent since the first character copyright case in 1930. The lack of explicit statutory protection for fictional characters has led circuit courts to develop varying tests to determine character copyrightability. Several of these tests stray from the well-established constitutional principle that copyright protection is available for any work that exhibits a minimal level of originality and creativity. This Comment analyzes three different character copyright tests: (1) the “distinctly delineated” test, (2) the Towle test, and (3) the “stock character” test and argues that the “stock character” test is the appropriate test for courts …

The Subject Strikes Back: Intellectual Property Law, Visual Pleasure, And Resistance In The Arts, John Tehranian

American University Law Review

In which we discuss self-infringement, monkey selfies, wildlife, Oscar Wilde, (Richard) Prince, Prince (Rogers Nelson), kissing sailors, the metaphor of the hunt, fatwās, the Masters, the male gaze, revenge porn, peeping Toms, surveillance art, nudes at the Met, Rastafarians, celebutantes, Andy Warhol, Jeff Koons, Rockwellian tranquility, and the Three Stooges.

Patent Eligibility And Cancer Therapy, Christopher B. Seaman

Washington and Lee Law Review

As an empirical legal scholar, I am pleased to report that Sasha Hoyt has done what very few law students—and even many law professors—could achieve. She successfully conducted a novel empirical study to assess the real-world impact of a U.S. Supreme Court decision, Mayo Collaborative Services v. Prometheus Laboratories, Inc., on venture capital (VC) investment in startups and other companies that develop medical diagnostic technology.

As Ms. Hoyt notes, patent protection is particularly important for startup companies, as it can help protect their innovations from unauthorized use, attract funding and other investments, and foster collaboration with third parties. In …

Copyright Takes To The Streets: Protecting Graffiti Under The Visual Artists Rights Act, Michaela S. Morrissey

Law Student Publications

Artists who choose the streets as their canvas—whether to beautify neighborhoods, spark political protest, or merely mark their territory—are faced with uncertainties when it comes to questions of copyright protection for their work. Prior to Castillo v. G&M Realty L.P., the rights granted to street artists had generally been uncharted territory. However, a verdict that pitted the rights of street artists against the rights of property owners finally gave street art the credibility many felt it long deserved. In Castillo, the United States Court of Appeals for the Second Circuit recognized graffiti as a work of visual art, thus …

Copyright Takes To The Streets: Protecting Graffiti Under The Visual Artists Rights Act, Michaela S. Morrissey

Law Student Publications

Artists who choose the streets as their canvas—whether to beautify neighborhoods, spark political protest, or merely mark their territory—are faced with uncertainties when it comes to questions of copyright protection for their work. Prior to Castillo v. G&M Realty L.P., the rights granted to street artists had generally been uncharted territory. However, a verdict that pitted the rights of street artists against the rights of property owners finally gave street art the credibility many felt it long deserved. In Castillo, the United States Court of Appeals for the Second Circuit recognized graffiti as a work of visual …

Book Review: Research Handbook On Design Law, Toshiko Takenaka Prof.

Book Reviews

Although recent US case law significantly increased the value of design patents, the European industry has long acknowledged the commercial value of product designs and developed EU-wide protection for the designs regardless of registration. According to recent statistics, both US and EU design patents and community design rights outperform utility patents on validity and infringement. The result of the community design rights is particularly surprising because both registered and unregistered design rights issue without any examination of substantive requirements. Effective product design protection is a key to success for consumer goods manufacturers to complete in the global market. However, there …

An Intellectual Property Fix For Platform Salesjacking, Eric E. Johnson

Faculty Articles

The aim of this Essay is to introduce an intellectual property angle to a current controversy that has been understood to be a matter for antitrust law. The controversy arises when a platform company--most famously Amazon--uses its platform to host a marketplace for independent retailers while simultaneously hosting itself as a retailer on the platform, thus competing as a retailer with an inside advantage. Critics say this setup allows platform firms to cherry-pick the best product ideas from small, independent retailers and then hijack their sales. This Essay seeks to advance the conversation about this controversy, making at least four …

The Deficiencies Of Oregon Ballot Measure 110, Jacob Towles

SMU Science and Technology Law Review

In 1970, the Federal Government enacted the Controlled Substance Act (CSA), which made certain drugs and substances illegal absent a medical prescription. The control of drugs through the CSA exists to prevent harm to the public. Nonetheless, some cities and states have enacted laws that allow for the benefit of selling or pleasure of using illegal drugs to outweigh the legal ramifications.

In November 2020, The Drug Addiction Treatment and Recovery Act, also known as Oregon Ballot Measure 110 (Measure 110), made Oregon the first state in the country to decriminalize all drugs. Measure 110 was enacted with the overarching …

Oculogica: An Eye-Catching Innovation In Health Care And The Privacy Implications Of Artificial Intelligence And Machine Learning In Diagnostics For The Human Brain, Samantha V. Ettari, Elijah Roden, Vishal Ahuja, Uzma Samadani

SMU Science and Technology Law Review

This article explores the use of Artificial Intelligence (AI) in emerging eye-tracking diagnostic technology, with a focus on both the patient data privacy and security regulations that firms, specifically device inventors and manufacturers, may face and how such firms can address the developing privacy and regulatory legal challenges. In addition, we discuss the ethical considerations of algorithmic bias, the impact such biases have on society and emerging technology, along with specific actions companies should take to maximize patient outcomes. Lastly, we offer a case study of Oculogica, an emerging digital health technology company—and its medical device (EyeBOX) – to illustrate …

Death Of The Limited License To Data: United States V. Van Buren, Nick Curley

SMU Science and Technology Law Review

The United States Supreme Court has normally viewed data as property. Yet in United States v. Van Buren, the Court abandoned the property law angle. Van Buren included examination of the Computer Fraud and Abuse Act’s applicability to a police officer who accepted a bribe from undercover agents to look up a phony license plate. The Court held that under the CFAA someone only “exceeds authorized access” when they properly access a computer and then improperly access files “that are off limits to [them].”

This Case Note explores why the Supreme Court should not have abandoned the property analogy …