Intellectual Property Law Commons^™

Set The Statutes Straight: Amending The Lanham Act To Dispel The Confusion Regarding Reverse Confusion, Inna Kaminer

Loyola of Los Angeles Entertainment Law Review

The typical case of alleged trademark infringement, i.e., “forward confusion,” involves a larger and more established “senior user” and a smaller and less powerful “junior user.” The secondary junior user wrongfully uses the first senior user’s mark as its own, and thus benefits from the senior user’s more established goodwill. In ruling on a senior user’s trademark infringement claim, the court will use a set of “likelihood of confusion” factors to determine if consumers are confusing the junior user’s goods for that of the senior. Each circuit’s factors vary, but they are harmonious. The issue that this Note explores is …

The Uniformed Topograhy Of Patent Scope, Janet Freilich

Faculty Scholarship

Setting and ascertaining patent scope are among the most important questions in patent law. However, we cannot accurately set patent scope. This is because patent scope has a sequence-of- information problem. Patent scope is set at the time that a patent is granted, while the information necessary to set and measure patent scope is not obtained until many years later. In consequence, the scope of any given patent is very likely to contain significant "error," meaning that the scope is broader or narrower than the theoretical ideal (the minimum amount of scope necessary to incentivize innovation). Deviation from the theoretical …

Freedom Of Expression And Morality-Based Impediments To The Enforcement Of Intellectual Property Rights, Marc J. Randazza

Nevada Law Journal

No abstract provided.

Who Gets Paid? Section 365(N) Royalty Payments Under "Zombie Licenses" After A Sale Of Ip, Christopher G. Bradley

Law Faculty Popular Media

This short article discusses the Bankruptcy Code's unusual treatment of certain intellectual property licenses. First, it gives a brief overview of § 365(n) of the Bankruptcy Code. It then provides a short analysis of a difficult but important question: If a licensee of a debtor’s intellectual property opts to retain its license rights under § 365(n), who should receive the stream of licensing payments in the event that the IP is sold: the buyer of the IP, or the debtor in bankruptcy? The answer that has emerged in some of the case law is somewhat surprising -- after providing nuanced …

International Trade V. International Property Lawyers: Globalization And The Brazilian Legal Profession, Vitor Martins Dias

Maurer Theses and Dissertations

This work analyzes a distinctive characteristic of the globalizing Brazilian legal profession. Namely, intellectual property (IP) lawyers who once were leaders in opening the Brazilian economy and were key players in cross-border transactions are now losing ground to their peers with an expertise in international trade. The thesis of this article is that the manner in which Brazilian lawyers are being educated is in shambles. Generally speaking, Brazilian legal education has, overall, become degraded and provincial. Yet, Brazilian international trade lawyers, unlike Brazilian IP-lawyers, have overcome their deficient legal training by seeking legal education abroad. By traveling overseas, especially to …

The Human Genome: A Patenting Dilemma, Pamela Docherty

Akron Law Review

This Comment will address the conflict between the U.S. patent laws and biotechnology by focusing on the NIH patent application.

The first part of this Comment discusses the objectives and statutory requirements of the patent system, which the NIH application purportedly did not meet. Next, this Comment focuses on the debate between NIH and its detractors. It explains NIH's reasons for its actions and discusses the criticisms leveled at the agency. Finally, this Comment presents solutions to the problems that have been uncovered by this debate regarding the patentability of genes.

Hilmer Doctrine And Patent System Harmonization: What Does A Foreign Inventor Have At Stake?, Kevin L. Leffel

Akron Law Review

The following discussion begins with a historical analysis that outlines the boundaries and illustrates the basis of Hilmer doctrine. Examples of the effects of Hilmer doctrine are presented as part of that discussion. Next, effects of the application of Hilmer doctrine after an interference are discussed followed by an analysis of the Patent Harmonization Act of 1992.

Eldred & The New Rationality, Brian L. Frye

Law Faculty Scholarly Articles

Historically, the rational basis test has been a constitutional rubber stamp. In Eldred v. Ashcroft and Golan v. Holder, the Supreme Court applied the rational basis test and respectively held that Congress could extend the copyright term of existing works and restore copyright protection of public domain works, despite evidence that Congress intended to benefit copyright owners at the expense of the public. But in Lawrence v. Texas and United States v. Windsor, the Supreme Court seems to have applied the rational basis test and held that state and federal laws were unconstitutional because they were motivated by …

Human Creativity For Economic Development: Patents Propel Technology, Robert M. Sherwood

Akron Law Review

Intellectual property both leads and lags the development of new technology. It lags in the sense that developments usually precede the law. Today science is accelerating so rapidly that the lawyers and policy analysts can barely grasp what the new questions are, much less supply answers. How are we to adapt the historic forms of protection to deal with new things like patents for genetically modified life forms, or for the Internet? Yet, this process of adaptation is not new. There was a time when maps were all the rage in Europe and judges puzzled over how much difference was …

Know Thyself As You Know Thy Enemy: Setting Goals And Keeping Focus When Mediating Ip Disputes, Michael H. King, Peter N. Witty

Akron Law Review

Therefore, while we briefly discuss the expected improvements to the mediation process following the enactment of the Uniform Mediation Act, we want to put aside the reality that mediation can work in some situations and instead focus on identifying and overcoming various impediments to a successful mediation. Specifically, we want to address two points: (1) the importance of defining realistic objectives for the process, and (2) the importance of staying focused on obtaining those objectives.

I'Ll Make Him An Offer He Can't Refuse: A Proposed Model For Alternative Dispute Resolution In Intellectual Property Disputes, Kevin M. Lemley

Akron Law Review

This article will discuss alternative dispute resolution in intellectual property disputes. A conceptual approach will be applied in an effort to better formulate the parties’ strategies towards litigation or alternative dispute resolution. Alternative dispute resolution (ADR) is a maturing area of the law, and its application to intellectual property disputes is complicated.1 These complications make any analysis difficult to organize. This article will discuss the underlying components of ADR and intellectual property disputes in a step-by-step fashion. Part I of this article discusses intellectual property rights and presents two conceptual interests underlying these rights. Deciding whether to litigate or pursue …

Antitrust Issues In The Litigation And Settlement Of Infringement Claims, Deborah A. Coleman

Akron Law Review

Although the owner of intellectual property rights is privileged to enforce those rights through litigation and to settle such litigation on satisfactory terms, infringement actions or case settlements can create liability for antitrust violations or unfair competition. Most importantly, an agreement in restraint of trade is not sheltered from antitrust scrutiny because it is made in the context of settling threatened or actual infringement litigation. That a patent confers a limited legal monopoly in a product, method or process is only one fact that is taken into account in evaluating whether the terms under which infringement litigation is settled unfairly …

The Disclosure Requirements Of The 1952 Patent Act: Looking Back And A New Statute For The Next Fifty Years, Harold C. Wegner

Akron Law Review

The 1952 Patent Act was a major event in terms of cutting and pasting together the various patent laws from the previous eighty or so years into the first patent law codification of the twentieth century. The great bulk was a mere codification of principles, going back in some cases to the earliest patent laws of the eighteenth century, that was the work of P. J. Federico.2 Of the three major changes made to the patent law in 1952, each was primarily the work of the late Giles Sutherland Rich,3 with his revision of Section 112 to introduce “means” claiming-perhaps …

Comment: The Tiger Woods Case - Has The Sixth Circuit Abandoned Trademark Law? Etw Corp. V. Jireh Publishing, Inc., Joseph R. Dreitler

Akron Law Review

For more than fifty years, the United States Court of Appeals for the Sixth Circuit vigilantly protected the intellectual property rights of trademark owners and persons seeking protection of their privacy and rights of publicity. Less than two years ago, that changed. In a turnaround remarkable for its suddenness and completeness, the court veered away from protecting intellectual property rights. Perhaps the reason for the departure lies in the stinging reversals of two of its decisions by the United States Supreme Court, or perhaps it lies in a string of admittedly questionable cases brought by overreaching plaintiffs. Regardless of the …

Alice In Wonderland Meets The U.S. Patent System, Jay Dratler Jr.

Akron Law Review

The attached article outlines in some detail why I think it matters in two particular fields—software and business methods—in which the PTO has issued, and the Federal Circuit has upheld, what I think are too many patents on non-inventions. The following remarks take a broader and longer-range view of patents generally.

The first reason why having a properly balanced patent system matters relates to the historical period in which we find ourselves. The world is now in the process of transferring the self-evident benefits of robust innovation, free markets, and free trade from Anglo-American and other advanced societies to the …

Intellectual Property Rights In Virtual Environments: Considering The Rights Of Owners, Programmers And Virtual Avatars, Woodrow Barfield

Akron Law Review

An emerging issue in online role-playing games is whether the licensor or participant owns the virtual property (such as a virtual avatar) created while the game is being played...Such rights have real world consequences for the objects created in the virtual world...Commercial software has been designed to allow people to create their own interactive, emoting 3D avatar using photographs of their individual faces, and their own unique voice as templates...Virtual environments can be designed for single inhabitants, such as a solo flight trainee, or for many, simultaneous participants... Further, people who spend significant amounts of time in virtual environments are …

A Brief Essay On The Importance Of Time In International Conventions Of Intellectual Property Rights, Vincenzo Vinciguerra

Akron Law Review

This essay will briefly address the issue of time in some fundamental international conventions on Intellectual Property Rights (IPRs). Primarily, this article concentrates on four current international conventions and discusses the importance and international relevance of the time factor in each convention. The first part introduces two characteristic ideas of time inherited from philosophical thought. It also describes how “linearity,” one characteristic time can assume, might be a way to think of the legal system. This article does not delve into philosophical aspects of this issue; they are merely a cue to analyze the issue of time in the context …

Copyright As Charity, Brian L. Frye

Law Faculty Scholarly Articles

Copyright and charity law are generally considered distinct and unrelated bodies of law. But they are actually quite similar and complement each other. Both copyright and charity law are intended to increase social welfare by solving market and government failures in public goods caused by free riding. Copyright solves market and government failures in works of authorship by providing an indirect subsidy to marginal authors, and charity law solves market and government failures in charitable goods by providing an indirect subsidy to marginal donors. Copyright and charity law complement each other by solving market and government failures in works of …

Ip As Metaphor, Brian L. Frye

Law Faculty Scholarly Articles

Everybody hates intellectual property trolls. They are parasites, who abuse intellectual property by forcing innovators to pay an unjust toll. Even worse are intellectual property pirates. They are thieves, who steal intellectual property by using it without the consent of its owner. By contrast, everybody loves innovators. They are farmers, entitled to reap what they have sown and enjoy the fruits of their labor.

But trolls, pirates, and farmers are metaphors. A "troll" abuses intellectual property only if its ownership or use of that intellectual property is unjustified, a "pirate" steals intellectual property only if the ownership of that intellectual …

Pace Intellectual Property, Sports & Entertainment Law Forum, Volume 5, Issue 1, Spring 2015

Pace Intellectual Property, Sports & Entertainment Law Forum

The staff of PIPSELF has worked diligently this year in selecting and preparing original and appealing articles concerning emerging issues in the fields of intellectual property, sports, and entertainment law for this issue. We welcome our readers to send comments and feedback: e-mail us at [email protected], visit our Twitter @PIPSELF, or ‘like’ us on Facebook at “Pace Intellectual Property, Sports & Entertainment Law Forum.”

What's It Worth To Keep A Secret?, Gavin C. Reid, Nicola Searle, Saurabh Vishnubhakat

Faculty Scholarship

This article is the first major study of protection and valuation of trade secrets under federal criminal law. Trade secrecy is more important than ever as an economic complement and substitute for other intellectual property protections, particularly patents. Accordingly, U.S. public policy correctly places a growing emphasis on characterizing the scope of trade secrets, creating incentives for their productive use, and imposing penalties for their theft. Yet amid this complex ecosystem of legal doctrine, economic policy, commercial strategy, and enforcement, there is little research or consensus on how to assign value to trade secrets. One reason for this gap is …

The Constitutionality Of Design Patents, Ralph D. Clifford, Richard J. Peltz-Steele

Chicago-Kent Journal of Intellectual Property

Design patents have been part of American law since 1842. In that time, only just over 600,000 design patents have been issued, with more than half of these being granted in the last twenty years. This quantity is dramatically fewer than the number of utility patents issued which is rapidly approaching 9,000,000 issued patents. Possibly because of the low usage of design patents over time, no case law and little literature address the constitutional issues raised by them. This article intends to overcome that shortcoming. Two constitutional aspects of design patents will be examined.

First, congressional authority to adopt the …

Smu Consolidates Intellectual Property (Ip) Expertise, Launches New Centre For Ip Research, Singapore Management University

SMU Press Releases and News

The creation, management and protection of intellectual assets and related rights (IPRs) have moved to the top of national, regional and global agendas over the last 20 years. Today, IP has become a key driver of global economic growth. The Singapore Government has also identified IP as a new growth area for Singapore and is on a mission to develop the country as an IP hub with vibrant IP industries. It is against this backdrop that SMU today launches the new Applied Research Centre for Intellectual Assets and the Law in Asia (ARCIALA). The launch event was graced by Guest-of-honour …

When Is A Patent Exhausted? Licensing Patents On A Claim-By-Claim Basis, Lucas Dahlin

Chicago-Kent Law Review

The patent exhaustion doctrine is meant to protect legitimate purchasers of patented items from post-sale restrictions imposed by patent owners. The courts, however, have recently expanded the doctrine of patent exhaustion by holding that the sale of a device which “partially” practices a patent exhausts that patent in its entirety. This holding essentially precludes patent owners from licensing their patents on a claim-by-claim basis. As inventions become more complex and require more parties working in concert to bring an idea to market, the inability to license patents on a claim-by-claim basis will lead to inventors being unable to fully monetize …

The Case Against Federalizing Trade Secrecy, Christopher B. Seaman

Scholarly Articles

Trade secrecy is unique among the major intellectual property (IP) doctrines because it is governed primarily by state law. Recently, however, a number of influential actors — including legislators, academics, and organizations representing IP attorneys and owners — have proposed creating a private civil cause of action for trade secret misappropriation under federal law. Proponents assert that federalizing trade secrecy would provide numerous benefits, including substantive uniformity, the availability of a federal forum for misappropriation litigation, and the creation of a unified national regime governing IP rights.

This Article engages in the first systematic critique of the claim that federalizing …

Andy Warhol’S Pantry, Brian L. Frye

Law Faculty Scholarly Articles

This Article examines Andy Warhol’s use of food and food products as a metaphor for commerce and consumption. It observes that Warhol’s use of images and marks was often inconsistent with copyright and trademark doctrine, and suggests that the fair use doctrine should in-corporate a “Warhol test.”

Law, History And Lessons In The Crispr Patent Conflict, Jacob S. Sherkow

Articles & Chapters

Predicting the outcome of the ongoing patent disputes surrounding genome-editing technology is equal parts patent analysis and history.

Genome-editing technology based on clustered, regularly interspaced, short palindromic repeats (CRISPR) and CRISPR associated protein 9 (Cas9) has generated great excitement in both academia and industry. But a potential patent dispute between two sets of inventors has left the biotech community pondering its fate. Understanding several facets of patent law and history may provide some lessons about the probable — and best — outcome for the dispute.

Hacking Trademark Law For Collaborative Communities, Yana Welinder, Stephen Laporte

Fordham Intellectual Property, Media and Entertainment Law Journal

Collaborative communities create popular work with widely recognized brands, such as Wikipedia, Linux, Android, and Firefox. Trademark law can provide protections to members of these communities and the users of their products so that they can rely on the brands to identify the original projects. This Article explores the conflict between collaborative communities and trademark law. While collaborative communities thrive on openness and decentralization, trademark law requires centralized quality control and various formalities. This Article introduces a descriptive taxonomy of “hacks” that collaborative communities have used to try to mitigate the tensions between their values and trademark law. These hacks …

British Invasion: Importing The United Kingdom's Orphan Works Solution To United States Copyright Law, Abigail Bunce

Northwestern University Law Review

No abstract provided.

Nsfw: An Empirical Study Of Scandalous Trademarks, Megan M. Carpenter, Mary Garner

Law Faculty Scholarship

This project is an empirical analysis of trademarks that have received rejections based on their “scandalous” nature. It is the first of its kind.

The Lanham Act bars registration for trademarks that are “scandalous” and “immoral.” While much has been written on the morality provisions in the Lanham Act, this piece is the first scholarly project that engages an empirical analysis of the Section 2(a) rejections based on scandalousness; it contains a look behind the scenes at how the morality provisions are applied throughout the trademark registration process. This study analyzes which marks are being rejected, what evidence is being …