Intellectual Property Law Commons^™

Open Access: “Information Wants To Be Free”?, Richard Poynder

Copyright, Fair Use, Scholarly Communication, etc.

The main points made in this document:

- Internet mantras like information wants to be free misled OA advocates about what is possible in an online world. Amongst other things, these mantras led to the mistaken belief that publishing would be very much cheaper on the internet.

- BOAI was intended to achieve three things: to resolve the longstanding problems of affordability, accessibility, and equity that have long dogged scholarly communication.

- It now seems unlikely that the affordability and equity problems will be resolved, which will impact disproportionately negatively on those in the Global South. And if the geopolitical …

Legal Terms Of Use And Public Genealogy Websites, Jorge L. Contreras, Kyle Schultz, Craig Teerlink, Tim Maness, Laurence Meyer, Lisa Cannon-Albright

Utah Law Faculty Scholarship

Public genealogy websites, to which individuals upload family history, genealogy, and sometimes individual genetic data, have been used in an increasing number of public health, epidemiological, and genetic studies. Yet there is little awareness among researchers of the legal rules that govern the use of these online resources. We analyzed the online Terms of Use (TOU) applicable to 17 popular genealogy websites and found that none of them expressly permit scientific research, while at least 13 contain restrictions that may limit or prohibit scientific research using data obtained from those sites. In order to ensure that researchers who use genealogy …

Preserving Fabled Amateurism: The Benefits Of The Ncaa’S Adoption Of The Olympic Amateurism Model, John Kealey

Journal of Law and Policy

After a century of denying student-athletes from receiving compensation outside the cost of attendance for their athletic contributions to their respective universities, the NCAA finally announced it would change its amateurism rule. The change came in response to multiple class action lawsuits and, more recently, legislation from many states, namely California and New York, which would have mandated that universities do not interfere with student-athletes desire to commercially exploit their own names, image, and likenesses. However, these statutes are potentially flawed in that each could exacerbate or perpetuate the anti-trust and first amendment issues inherent to the current amateurism rule. …

Pledging Intellectual Property For Covid-19, Jorge L. Contreras

Utah Law Faculty Scholarship

COVID-19 differs from other recent public health crises with respect to its sudden onset, its rapid spread, the lack of any known vaccine or cure and resulting shortages of critical medical equipment. The convergence of these factors has prompted both governments and IPR holders around the world to seek ways to increase the availability of IPR necessary to combat the pandemic. Governmental compulsory licensing, IPR pools and voluntary IPR pledges have all been used in the past, though in situations that differ in important respects from the COVID-19 pandemic. Each is designed to result, to a greater or lesser degree, …

First Sale And Exhaustion, Jorge L. Contreras

Utah Law Faculty Scholarship

This chapter in the forthcoming case book "Intellectual Property Licensing and Transactions: Theory and Practice" addresses issues of first sale and exhaustion for licensing transactions involving patents, copyrights and trademarks. Among the issues considered are licensing versus sale of software, patent exhaustion, post-sale restrictions, international exhaustion and gray market imports.

U.S. Federal Genomic Data Release And Access Policies, Jorge L. Contreras

Utah Law Faculty Scholarship

Researchers today have access to a vast aggregation of human and nonhuman genomic data, largely on an open access basis. According to the Joint Genome Institute’s Genomes OnLine Database (GOLD), data from more than 40,000 sequencing projects around the world, representing more than 375,000 different organisms, were publicly available to researchers as of July 2020. The availability of this tremendous public resource is due, in large part, to the data release policies developed a quarter century ago, toward the beginning of the Human Genome Project (HGP), which have been carried forward, in modified form, to the present. These policies impose …

Antitrust And Competition Issues, Jorge L. Contreras

Utah Law Faculty Scholarship

This Chapter offers a broad overview of the impact of U.S. antitrust laws on IP licensing and transactions. A basic understanding of antitrust law is critical to the analysis of IP licensing arrangements, whether concerning patents, copyrights or trademarks. This chapter offers a summary of the antitrust doctrines that arise frequently in IP and technology-focused transactions — price fixing and market allocation, resale price maintenance, tying, monopolization, refusals to deal, standard setting and pay-for-delay settlements, with coverage of the major cases and enforcement agency guidance. Antitrust issues also play a role in the analysis of joint ventures, which are discussed …

A Historical Note On The Assignment Of Pesticide Common Names, Jorge L. Contreras

Utah Law Faculty Scholarship

Thousands of pesticides, herbicides, and related chemical products are used today to control disease-bearing insect populations and enable large-scale agricultural production that feeds much of the world. This short note traces the history of one small but important aspect of this industry—the assignment of common names to pesticides and related products. The little-known history of pesticide common names is illustrative of a few important points. First, it demonstrates the trend exhibited in many fields for the development of standards to migrate from a governmental agency to a US-based standards organization to an international standards organization. Second, it evidences the concern …

Will China's New Anti-Suit Injunctions Shift The Balance Of Global Frand Litigation?, Jorge L. Contreras

Utah Law Faculty Scholarship

By issuing anti-suit injunctions (ASIs) in Conversant v. Huawei and InterDigital v. Xiaomi in late 2020, Chinese courts have signaled a new willingness to vie for jurisdictional authority in global battles over standard-essential patents and FRAND licensing. While the Supreme People’s Court in Conversant largely followed the pattern of US and UK courts that have issued ASIs in similar cases, the ruling of the Wuhan court in InterDigital is far broader in two major respects. First, its geographic scope is not limited to the country in which InterDigital sought injunctive relief (India), but extends to all jurisdictions in the world. …

Financial Terms In License Agreements, Jorge L. Contreras

Utah Law Faculty Scholarship

This chapter in the forthcoming casebook Intellectual Property Licensing and Transactions: Theory and Practice (2020, forthcoming), discusses the financial terms of IP licensing agreements including fixed payments, running royalties, sublicensing income, milestone payments, equity compensation and cost reimbursement, as well as most-favored and audit clauses. Numerous areas of recent controversy are addressed including the establishment of royalty rates through the entire market value rule (EMVR) versus the smallest salable patent practicing unit (SSPPU) rule, royalties for bundled rights, rules of thumb discredited by the courts, royalty escalation clauses and more. Examples are drawn primarily from biotechnology, high-tech and copyright licensing …

No License, No Problem – Is Qualcomm’S Ninth Circuit Antitrust Victory A Patent Exhaustion Defeat?, Jorge L. Contreras, Jorge L. Contreras

Utah Law Faculty Scholarship

The Ninth Circuit’s recent decision in FTC v. Qualcomm (9th Cir., Aug. 11, 2020) is generally viewed as a resounding victory for Qualcomm. But in praising Qualcomm’s egalitarian approach toward rival chip makers, the Ninth Circuit points out that instead of granting licenses to these rivals, Qualcomm merely “declines to enforce its patents” against them “even though they practice Qualcomm’s patents”. As such, the Ninth Circuit states that Qualcomm’s “policy toward rival chipmakers could be characterized as ‘no license, no problem’”. Yet, from the standpoint of patent exhaustion, this approach could actually be a very big problem, not only for …

Super-Statutory Contracting, Kristelia A. García

Washington Law Review

The conventional wisdom is that property rules induce more—and more efficient—contracting, and that when faced with rigid property rules, intellectual property owners will contract into more flexible liability rules. A series of recent, private copyright deals show some intellectual property owners doing just the opposite: faced with statutory liability rules, they are contracting for more protection than that dictated by law, something this Article calls “super-statutory contracting”—either by opting for a stronger, more tailored liability rule, or by contracting into property rule protection. Through a series of deal analyses, this Article explores this counterintuitive phenomenon, and updates seminal thinking on …

Copyright's Fixation Requirement: Is It Still Needed?, Attamongkol Tantratian

Maurer Theses and Dissertations

While the United States requires fixation for an original work to be entitled to federal copyright protection, many other countries ignore such requirement. The difference could lead to partial copyright protection standards across jurisdictions over certain works that are not fixed. Examples of such works include extemporaneous speeches, lectures, improvisational performances, and contemporary arts that are transitory. Moreover, with today’s rapid development of arts and technologies, creative works can be presented via new media without being fixed in a traditional way. The examples include live streams of lectures and music performances, which have become part of the “new normal.” In …

Unregistered Patents, Miriam Marcowitz-Bitton, Emily Michiko Morris

Washington Law Review

Although all should be treated equally under the law, patent law has long been known to favor some less than others. Patentable technology is highly heterogeneous, covering everything from minute improvements in electronics to pioneering new artificial organs, but patent protection itself is purely a one-size-fits-all system. Patents thus overreward some while underrewarding others. On the one hand, patents overreward low-investment, low-value inventions by granting them the same twenty-year term of protection as those that required much higher investments and yield much higher social value. The resulting glut of low-quality patents has contributed greatly to the “patent crisis” of opportunistic …

Brief For The Coalition Against Patent Abuse As Amicus Curiae In Support No Party, Charles Duan

Amicus Briefs & Court Filings

Perhaps unexpectedly, a case on the constitutionality of the Patent Trial and Appeal Board has major significance to the pressing policy crisis of drug prices in the United States. Erroneously issued patents monopolize medical therapies, making them unaffordable or inaccessible to numerous Americans. The inter partes review proceedings that the Board conducts have repeatedly and successfully overcome such patents, enabling competition and dramatically lowering prices. This Court should ensure the continued viability of the Board and of inter partes review, by preserving the Board’s objectivity and independence from executive branch political influence.

Artificial Intelligence, The Law-Machine Interface, And Fair Use Automation, Peter K. Yu

Faculty Scholarship

From IBM Watson's success in Jeopardy! to Google DeepMind's victories in Go, the past decade has seen artificial intelligence advancing in leaps and bounds. Such advances have captured the attention of not only computer experts and academic commentators but also policymakers, the mass media and the public at large. In recent years, legal scholars have also actively explored how artificial intelligence will impact the law. Such exploration has resulted in a fast-growing body of scholarship.

One area that has not received sufficient policy and scholarly attention concerns the law-machine interface in a hybrid environment in which both humans and intelligent …

National Cybersecurity Innovation, Tabrez Y. Ebrahim

West Virginia Law Review

National cybersecurity plays a crucial role in protecting our critical infrastructure, such as telecommunication networks, the electricity grid, and even financial transactions. Most discussions about promoting national cybersecurity focus on governance structures, international relations, and political science. In contrast, this Article proposes a different agenda and one that promotes the use of innovation mechanisms for technological advancement. By promoting inducements for technological developments, such innovation mechanisms encourage the advancement of national cybersecurity solutions. In exploring possible solutions, this Article asks whether the government or markets can provide national cybersecurity innovation. This inquiry is a fragment of a much larger literature …

The Double-Edged Sword Of Medical Patents: How Monopolies On Healthcare Products Disparately Impact Certain American Populations, Sarah Mcgraw

The University of Cincinnati Intellectual Property and Computer Law Journal

No abstract provided.

What The Supreme Court Is Likely To Do In The Presently Pending Case Google V. Oracle, Jennifer Campbell

The University of Cincinnati Intellectual Property and Computer Law Journal

No abstract provided.

Can David Really Beat Goliath? A Look Into The Anti-Competitive Restrictions Of Apple Inc. And Google, Llc, Emily Feeley

The University of Cincinnati Intellectual Property and Computer Law Journal

No abstract provided.

Intellectual Property And The End Of Work, Camilla A. Hrdy

Florida Law Review

The conventional wisdom is that intellectual property (IP) is good for jobs. Indeed, according to legislators and the U.S. patent office, IP “creates jobs.” But this is not quite right. A primary function of IP is to increase the amount of innovation in the economy. Yet a significant subset of the innovations protected by IP rights, from self-service kiosks to self-driving cars, are in fact labor-saving and indeed labor-displacing. They reduce the amount of paid human labor required to complete a task. Therefore, to the extent IP is successful at incentivizing innovation, IP actually contributes to job loss. More precisely, …

Staking The Boundaries Of Software Copyrights In The Shadow Of Patents, Pamela Samuelson

Florida Law Review

Ever since the venerable Supreme Court opinion in Baker v. Selden, courts and commentators have overwhelmingly endorsed the rule that copyright and utility patent protections for intellectual creations are mutually exclusive. That is, an intellectual creation may be eligible for copyright or utility patent protection, but not both. Original works of authorship are channeled to the copyright regime, while novel and nonobvious technologies are channeled to the patent system.

The well-established mutual exclusivity rule for copyright and utility patents was recently renounced, as applied to computer program innovations, by the Court of Appeals for the Federal Circuit (CAFC) in …

What If Artificial Intelligence Wrote This? Artificial Intelligence And Copyright Law, Victor M. Palace

Florida Law Review

The increasing sophistication and proliferation of artificial intelligence has given rise to a provoking question in copyright law: Who is the copyright owner of a work created by autonomous artificial intelligence? In other words, when a machine learns, thinks, and acts without human input, and it creates a work, what person should own the copyright, if any? This Note explains why this is a pressing question and why current laws and practices fail to address the issue. It then analyzes the arguments for and against the possible choices: the artificial intelligence, the user, the programmer, the company that owns the …

The Scope Of Ipr Estoppel: A Statutory, Historical, And Normative Analysis, Christa J. Laser

Florida Law Review

When Congress implemented inter partes review (IPR) and other patent post-grant proceedings through the passage of the America Invents Act (AIA) in 2011, it provided that petitioners would be estopped in later proceedings from raising grounds for invalidity that they “raised or reasonably could have raised during that inter partes review.” 35 U.S.C. § 315(e)(2). However, substantial uncertainty in interpretation of this provision causes an enormous impact on an accused patent infringer’s decision of whether and on what grounds to petition for review. One reading of the statutory estoppel provision suggests that “during that inter partes review” refers to the …

Economic Analyses Of Federal Scientific Collections: Methods For Documenting Costs And Benefits, David E. Schindel, Economic Study Group Of The Interagency Working Group On Scientific Collections

Copyright, Fair Use, Scholarly Communication, etc.

Federal object-based scientific collections have been created to serve agency missions and, in a few cases, to comply with legislative and regulatory mandates. “Project collections” (those managed by the researchers who obtained them for restricted use) and their costs and benefits were considered too varied for standard methodologies that assess costs and benefits. In a few cases, departments and agencies are required by legislation or regulations to retain objects in long-term “institutional collections.” In most cases, decisions to retain objects are based on long-term costs relative to the perceived potential for benefits to taxpayers. Federal collections vary in their philosophies …

Copyright And The Brain, Mark Bartholomew

Journal Articles

This Article exploresthe intersection of copyright law, aesthetic theory, and neuroscience. The current test for copyright infringement requires a court or jury to assess whether the parties’ works are “substantially similar” from the vantage point of the “ordinary observer. ”Embedded within this test are several assumptions about audiences and art. Brain science calls these assumptions into question. The substantial similarity test posits that aesthetic reactions are unmeasurable and uniform. In actuality, they can be quantified and vary depending on audience and artistic medium. Neuroscience has already reconfigured the law in many areas, from tort damages to the death penalty. Now …

Intellectual Property Rights And The Rule Of Law, Jorge L. Contreras

Utah Law Faculty Scholarship

The subject of this conference is the “Rule of Law”, so I would like to address my opening comments to a trending narrative that casts opposition to the demands of patent holders as a form of lawlessness. This narrative specifically takes aim at a practice that has been termed “efficient infringement” – the idea that a firm may rationally decide to infringe patents either because it will be too costly for the patent holder to enforce its rights in court, or because it is happy to take its chances in court, where an asserted patent may be invalidated and where …

The Care Principles For Indigenous Data Governance, Stephanie Russo Carroll, Ibrahim Garba, Oscar L. Figueroa-Rodríguez, Jarita Holbrook, Raymond Lovett, Simeon Materechera, Mark Parsons, Kay Raseroka, Desi Rodriguez-Lonebear, Robyn Rowe, Rodrigo Sara, Jennifer D. Walker, Jane Anderson, Maui Hudson

Copyright, Fair Use, Scholarly Communication, etc.

Concerns about secondary use of data and limited opportunities for benefit-sharing have focused attention on the tension that Indigenous communities feel between (1) protecting Indigenous rights and interests in Indigenous data (including traditional knowledges) and (2) supporting open data, machine learning, broad data sharing, and big data initiatives. The International Indigenous Data Sovereignty Interest Group (within the Research Data Alliance) is a network of nation-state based Indigenous data sovereignty networks and individuals that developed the ‘CARE Principles for Indigenous Data Governance’ (Collective Benefit, Authority to Control, Responsibility, and Ethics) in consultation with Indigenous Peoples, scholars, non-profit organizations, and governments. The …

Fashion Design Piracy: An Issue Of Intellectual Property Or Economic Impact?, Vendela Dente

Fordham Undergraduate Law Review

Currently, United States law offers no fashion design protection against design piracy. The fashion industry profits from pioneering creative content; yet, this content lies outside the domain of intellectual property law. Fashion designs are inevitably undervalued by consumers and the industry due to the lack of protection of original designs for the benefit of the industry's monetary value. Fashion design can be protected under copyright, trademark and patent law but these laws provide ambiguity and strict requirements for fashion labels. This Note will discuss the effects of fashion piracy both on innovation and the fashion industry’s bottom line.

Forecasting Crime? Algorithmic Prediction And The Doctrine Of Police Entrapment, Mathew Zaia

Canadian Journal of Law and Technology

As the Commissioners of Police in mid-19th century England illustrate above, the prevention of crime is an inherent function of public policing. To carry out their function of detecting and combating crime, police frequently endeavour to locate and use new tools enabling them to pre-empt criminal activity.2 Many conceptual policing models that drive law enforcement’s focus have been highlighted in scholarly literature: community, problem-oriented, CompStat- driven (short for computer statistics), harm-focused, and order maintenance policing. Developments in modern technology provide additional tools, allowing police forces to delve deeper into suspects’ behaviour and uncover previously unknown patterns of information. Such developments …