Intellectual Property Law Commons^™

Should There Be A Presumption Favoring Awards Of Attorney’S Fees In Copyright Litigation?, 12 J. Marshall Rev. Intell. Prop. L. 630 (2013), William T. Mcgrath

UIC Review of Intellectual Property Law

Section 505 of the Copyright Act allows courts to award attorney’s fees to the prevailing party in a copyright case. Almost twenty years ago, the Supreme Court in Fogerty resolved a split among the circuits over the interpretation of that statute. First, it held that courts should apply several nonexclusive factors when determining if the prevailing party, whether defendant or plaintiff, should be entitled to recover attorney’s fees. Second, the Court refused to apply a presumption that the prevailing party will automatically recover attorney’s fees, opting instead for the districts courts to apply “equitable discretion” in awarding fees. But in …

Idea Into Practice: How Well Does U.S. Patent Law Implement Modern Innovation Theory, 12 J. Marshall Rev. Intell. Prop. L. 644 (2013), Stephen M. Maurer

UIC Review of Intellectual Property Law

The U.S. Supreme Court’s decision in Graham v. John Deere (1966) placed neoclassical economic insights at the heart of modern patent law. But economic theory has moved on. Since the 1990s, legal scholars have repeatedly mined the discipline to propose ad hoc rules for individual industries, such as biotech and software. So far, however, they have almost always ignored the literature’s broader lessons for doctrine. This article asks how well today’s patent doctrine follows and occasionally departs from modern economic principles. The analysis begins by reviewing what neoclassical economists have learned about innovation since the 1970s. Legal scholars usually divide …

A Context-Sensitive Inquiry: The Interpretation Of Meaning In Cases Of Visual Appropriation Art, 12 J. Marshall Rev. Intell. Prop. L. 746 (2013), Elizabeth Winkowski

UIC Review of Intellectual Property Law

As Andy Warhol’s famous depiction of a soup can has demonstrated, the meaning of a work depends on its context. While the Campbell’s label signified one thing to shoppers in supermarkets, it raised new questions when presented as a work of art. Warhol’s work is just one example of what has come to be known as appropriation art, an artistic practice that borrows and repurposes images from the media, popular culture, and other sources. Unsurprisingly, this art form is in frequent tension with copyright law. This comment suggests that in analyzing the“purpose and character” factor of the fair use inquiry, …

Million-Card Monte: Reforming The Markush Claim Post-Aia To Save Synthetic Chemical Innovation, 12 J. Marshall Rev. Intell. Prop. L. 720 (2013), Adam Sussman

UIC Review of Intellectual Property Law

The Markush patent claim arose as a solution to the challenging problem of describing inventions that could not be defined any other way than by a list of the members of a group. The original Markush group, claimed in 1923, listed only three alternatives; in the years since, the populations of these groups have swelled to totals beyond calculation, as pharmaceutical companies took advantage of the opportunity to claim multitudes of alternative chemical compounds by systematically iterating the functional groups at various molecular positions. However, without completing the now-impossible task of synthesizing and testing each of innumerable chemical compounds for …

Reverse Payment Settlements: The U.S. Supreme Court Has Finally Agreed To Resolve The Issue, 12 J. Marshall Rev. Intell. Prop. L. 787 (2013), Tyler Cho

UIC Review of Intellectual Property Law

Paragraph IV of the Hatch-Waxman Act provides a mechanism for litigating pharmaceutical patent infringement disputes. Many of these cases have been settled with “reverse payments” from the brand to the generic in return for delayed generic entry. The U.S. Federal Trade Commission (FTC) has contested a number of these settlements with mixed results. On July 16, 2012, the U.S. Court of Appeals for the Third Circuit issued a decision holding that pharmaceutical patent settlements that restrict generic entry and contain a payment to the generic company are presumptively unlawful under U.S. antitrust laws. By holding that a patent settlement can …

Directed To Or Encompassing A Human Organism: How Section 33 Of The America Invents Act May Threaten The Future Of Biotechnology, 12 J. Marshall Rev. Intell. Prop. L. 768 (2013), Ava Caffarini

UIC Review of Intellectual Property Law

Biotechnology is a rapidly growing field that has pushed the limits of patent eligible subject matter. In response to the expansion of biotechnology, critics have emerged with both economic and moral concerns over the development and patenting of these technologies. On the economic front, critics are wary of the potential development of an“anticommons.” On the moral front, critics are concerned with the potential to erode human dignity and “play God.” Congress has responded to the moral concerns with section 33 of the America Invents Act. Section 33 states that“[n]otwithstanding any other provision of law, no patent may issue on a …

I Like Cabernet And Merlot But I'M Not Drinking Bordeaux: Certified Confusion, 13 J. Marshall Rev. Intell. Prop. L. 203 (2013), Angela Huisingh

UIC Review of Intellectual Property Law

A trademark’s purpose is to help consumers identify a service or product’s source. To this end, trademark owners may prevent others from using their marks on similar goods. But to ensure that a few savvy businesspersons do not monopolize certain terms, the Lanham Act carves out specific exceptions to trademark protection. Some of these exceptions include indications of geographic origin, such as Bordeaux and Napa Valley. Wine, however, has long been identified primarily by the geographic region in which its grapes grow. To ameliorate this fundamental divide, and to preserve the integrity of their Geographical Indications in the eyes of …

How The Internet Has Removed The Historical Rationale For "Non-Analogous Arts", 13 J. Marshall Rev. Intell. Prop. L. 68 (2013), Hal Milton

UIC Review of Intellectual Property Law

The growth of the Internet has affected countless aspects of daily life, including the patent system. Internet-based legal research has grown considerably, given the convenience of general search agents such as Google, legally-focused search agents such as Westlaw and Lexis, and patent-focused search agents such as the PAIR system of the United States Patent and Trademark Office. These legal research tools have not only made it easier to find prior art, they have also expanded the volume of information that is available to one of ordinary skill in the art. Consequently, the traditional rules of so-called “analogous arts” are changing. …

Chinese National Well-Known Trademarks And Local Famous Trademarks In Light Of The 2013 Trademark Law: Status, Effect, And Adequacy, 13 J. Marshall Rev. Intell. Prop. L. 225 (2013), Paul Kossof

UIC Review of Intellectual Property Law

Chinese national well-known trademarks (中国驰名商标) and local famous trademarks (本地著名商标) are two distinct unique intellectual property rights in the People’s Republic of China (“PRC”). Intellectual property attorneys in the PRC, especially foreign consultants, often encounter challenges in understanding these trademark rights including various legislative, administrative, and judicial documents, differences between local regulations, and the general lack of information and translations. The third revision to the Trademark Law, which takes effect on May 1, 2014, will bring widespread domestic attention to this subject because the new law bans the use of national well-known trademarks on products, packaging, and advertising. The author …

Application Of The Hatch-Waxman Act's Safe Harbor Provision Following Momenta, 13 J. Marshall Rev. Intell. Prop. L. 1 (2013), Alfred C. Server

UIC Review of Intellectual Property Law

The Federal Circuit’s recent decision in Momenta v. Amphastar highlights the continuing uncertainty regarding the scope of the statutory exemption from patent infringement provided in 35 U.S.C. § 271(e)(1). The statute states that “[i]t shall not be an act of infringement to make, use, offer to sell, or sell within the United States or import into the United States a patented invention . . . solely for uses reasonably related to the development and submission of information under a Federal law which regulates the manufacture, use, or sale of drugs or veterinary biological products.” Since its adoption in 1984 with …

Memetic Theory, Trademarks & The Viral Meme Mark, 13 J. Marshall Rev. Intell. Prop. L. 96 (2013), Shontavia Jackson Johnson

UIC Review of Intellectual Property Law

This Article proposes that memetic theory is a useful lens through which to view trademarks, particularly as there has been a rise in the number of applications for culturally-driven words and catchphrases in the United States Patent and Trademark Office. Memetic theory, or memetics, is a scientific field related to how units of information evolve and replicate. These units of information, called memes, undergo a process of natural selection comparable to that of genes. To survive as trademarks, memes must not only exist in the proper form, but they must also subsist in an environment where replication, variation, and selection …

Comparing Apples And Oranges In Trademark Law: Challenging International And Constitutional Validity Of Plain Packaging Of Tobacco Products, 13 J. Marshall Rev. Intell. Prop. L. 130 (2013), Sarah A. Hinchliffe

UIC Review of Intellectual Property Law

Plain packaging, a new tobacco control tool being considered by a growing number of countries, mandates the removal of all attractive and promotional aspects of tobacco product packages. As a result of plain packaging, the only authorized feature remaining on a tobacco package is the brand name, displayed in a standardized font, size, color, and location on the package. At issue is the meaning of “use” of trademarks on plain packaging, and whether plain packaging amounts to the creation of an invalid encumbrance. The tobacco industry and other regulated sectors (including wine, fast-food, and pharmaceuticals) also believe that plain packaging …

Copyright Trolls, Defining The Line Between Legal Ransom Letters And Defending Digital Rights: Turning Piracy Into A Business Model Or Protecting Creative From Internet Lawlessness?, 13 J. Marshall Rev. Intell. Prop. L. 170 (2013), Luke S. Curran

UIC Review of Intellectual Property Law

The scarlet letter of the term “troll” has long been affixed to the lapel of businesses within the patent context. This pejorative term, however, has had little relevance or widespread public recognition within the domain of copyright law until 2010. Since the awakening of the “copyright troll,” several non-author rights holders have recently adopted and propagated a substantially modified version of this sue-to-settle paradigm within the context of copyright law while introducing it to the scale of mass-litigation. Further, the amorphous term “copyright troll” traditionally characterizes a business practice of acquiring unenforced copyrights that are being infringed upon through various …

Joinder Of Anonymous Defendants In Bittorrent Copyright Litigation: The Potential For Abuse And Possible Reform, Gregory S. Mortenson

Student Works

No abstract provided.

No Laughing Matter: An Argument In Favor Of Allowing Satire Under Fair Use, Laura Terwilliger

Student Works

No abstract provided.

How The Looming Fight Over Termination Of Transfers Under § 203 Of The Copyright Act Provides A Pause Point For Deeper Insights Into The Current State Of American Copyright Law, Jared Pickell

Student Works

No abstract provided.

Problems In Sharing The Surplus, Roger D. Blair, Thomas Knight

UF Law Faculty Publications

Dennis Carlton and Allan Shampine have addressed opportunistic and strategic behavior by standard-essential patent owners. After a standard has been specified, and sunk investments have been made by those who would implement the standard, the holder of a standard-essential patent can demand more for the patent license than it could have demanded ex ante. This sort of ex post opportunism can lead to economically inefficient outcomes. The solution is to limit such patent holders to “fair, reasonable, and non-discriminatory” (FRAND) patent license fees. Carlton and Shampine have advanced our understanding of precisely what this means.

The remainder of this article …

A Last Step Rule For Direct Infringement Of Process Claims: Clarifying Indirect Infringement And Narrowing Joint Infringement, Stephen W. Moore

Cleveland State Law Review

This Note proposes that the party who performs the last step of a patented process should be liable for direct infringement. Under this “Last Step Rule,” patented products and processes would be treated similarly—which is consistent with past decisions and is implied in the patent statute. As will be shown in this Note, adopting the Last Step Rule would make finding indirect patent infringement more straightforward and would limit the doctrine of joint infringement to claims for direct infringement. The proposed rule will be shown to be logically sound, supported by case law precedent, and consistent with the language and …

The Indeterminacy Critique And The Trespass Fallacy, Shine Tu

Law Faculty Scholarship

No abstract provided.

The Right Not To Use In Property And Patent Law, Oskar Liivak, Eduardo M. Peñalver

Cornell Law Review

No abstract provided.