Intellectual Property Law Commons^™

Hired To Invent Vs. Works Made For Hire: Resolving The Inconsistency Among Rights Of Corporate Personhood, Authorship, And Inventorship, Sean M. O'Connor

Articles

This Essay focuses on the interrelation of three legal doctrines that affect the allocation of ownership and attribution of products of the human mind. The first, corporate personhood, grants corporations rights of personhood similar to those of natural persons. The second, the work-made-for-hire doctrine (WMFH) under copyright law, allocates ownership and attribution for copyrightable works to the employer of the natural-person author—even where that employer is a nonnatural, legal person such as a corporation. And the third, shop rights and the hired-to-invent exception, permits courts to grant equitable licenses or assignments to employers for their employees’ inventions.

These three doctrines …

Serious Flaw Of Employee Invention Ownership Under The Bayh-Dole Act In Stanford V. Roche: Finding The Missing Piece Of The Puzzle In The German Employee Invention Act, Toshiko Takenaka

Articles

This article argues that the current Bayh-Dole Act is incomplete because the Act fails to provide a mechanism for contractors to secure the ownership of federally funded inventions from their employees. Part I of this Article discusses this flaw in the current Bayh-Dole Act, highlighted by Stanford v. Roche, and argues that a historical accident resulted in this flaw due to Congress's failure to pass a series of bills based on the German EIA. Passages in the Bayh-Dole Act suggest that the Act assumes a transfer by operation of law to secure the ownership of federally funded inventions through …

Taxing Facebook Code: Debugging The Tax Code And Software, Xuan-Thao Nguyen, Jeffrey A. Maine

Articles

This article sets out to analyze both intellectual property laws and tax systems as applied to computer software. It analyzes software within intellectual property's established doctrinal framework, a difficult task due to the fact that software can encompass some combination of the traits of copyrights, trade dress, patents, and trade secrets. It then examines both the federal and state tax systems governing software. It shows that fitting software within current tax schemes presents unique challenges, as software contains both tangible and intangible elements, is subject to varying intellectual property protections, and can be delivered through various media. The article argues …

Trademark And Copyright Enforcement In The Shadow Of Ip Law, William T. Gallagher

Santa Clara High Technology Law Journal

In recent years, as Congress has created new intellectual property (IP) rights and courts have often interpreted those rights broadly, legal scholars have frequently decried the expanded scope of protection afforded IP owners in most substantive areas of IP law. According to this critique, the over-expansion of IP rights throughout the past two decades harms competition, chills free speech, and diminishes the public domain as increasingly broad areas of social life are brought within the scope of strong IP protection. While this over-expansion theory reflects an important—indeed, foundational—policy debate concerning the proper balance between IP owners’ rights and the public’s …

Fostering The Business Of Innovation: The Untold Story Of Bowers V. Baystate Technologies, Robert W. Gomulkiewicz

Articles

Perhaps the law review literature does not need another article on the Federal Circuit’s case [320 F.3d 1317 (Fed. Cir. 2003, cert denied, 123 S.Ct. 2588 (2003)]. That case has received more than its share of attention from commentators, all criticizing Judge Rader’s majority opinion and most extolling the virtues of Judge Dyk’s dissent. Despite the storm of scholarly criticism, however, courts have followed Judge Rader’s opinion.

This Article tells the untold story of why courts have been wise to do so. The Article explains how commentators have argued that federal intellectual property law should have preempted Bowers’ claims …

Loaded Question: Examining Loadable Kernel Modules Under The General Public License V2, Curt Blake, Joseph Probst

Washington Journal of Law, Technology & Arts

This Article examines the intersection of Linux loadable kernel modules and the license under which Linux is distributed, the General Public License (GPL) Version 2. Section I of this Article discusses ambiguous terms contained within the GPL and various interpretations of these ambiguities. Next, Section II analyzes the changing scope of legal protection for computer software, particularly as it pertains to derivative works and as applied to loadable kernel modules. Section III highlights provisions contained within the GPL that may attempt to reach beyond a traditional works analysis and examines these provisions in light of recent developments at the intersection …

The Right Of Publicity In New York And California: A Critical Analysis, Paul Czarnota

Jeffrey S. Moorad Sports Law Journal (1994 - )

The article provides an analysis of the right of publicity under the state laws of New York and California as of September 2012, focusing on the application of the laws to celebrities and the illegal use of their identities in advertising and trade. The New York right to publicity tort laws reportedly protect a celebrity's name, portrait, and voice from unauthorized use by third parties. The New York case Roberson v. Rochester Folding Box Co. is also mentioned.

Veblen Brands, Jeremy N. Sheff

Faculty Publications

The subject of this Article is the legal regime that regulates the struggle for control of a luxury brand across various cross-cutting cleavages in American society—global competition over wealth and status. Rights under federal trademark law, whether asserted under statutory provisions relating to simple trademark infringement or the more specialized provisions relating to trademark counterfeiting, are grounded in the doctrine of post-sale confusion.

Post-sale confusion as a doctrine unto itself has received surprisingly little critical attention. What literature does exist either characterizes post-sale confusion as merely one example of broader trends in intellectual property, or else discusses the economic or …

Accentuate The Normative: A Response To Professor Mckenna, Jeremy N. Sheff

Faculty Publications

In his article, “A Consumer Decision-Making Theory of Trade-mark Law,” 98 Va. L. Rev. 67 (2012), Professor Mark McKenna makes two significant claims. The first is that the dominant Law and Economics theory of trademark law—the search-costs theory of the Chicago School—is in some way connected to recent undesirable expansions of trademark rights. The second is that a preferable theory of trademark law—one that would result in more tightly circumscribed and socially beneficial notions of trademark rights—would take consumer decision making, rather than search costs, as its guiding principle. I find myself sympathetic to these arguments, and yet I believe …

Speaking Of Moral Rights: A Conversation Between Eva E. Subotnik And Jane C. Ginsburg, Eva E. Subotnik, Jane C. Ginsburg

Faculty Publications

This piece is the transcription of a conversation between two law faculty members speaking about moral rights in the digital age. Prof. Subotnik questions Prof. Ginsburg about some of the legal and technological developments that have occurred since Prof. Ginsburg’s 2001 essay, Have Moral Rights Come of (Digital) Age in the United States?. "If moral rights have come of digital age, should their realization be achieved by conveying more information about the copy, or by controlling the copy itself?" This question is now asked from the vantage point of 2012, ten years since Prof. Ginsburg first posed it.

Fear And Loathing In Trademark Enforcement, Jeremy N. Sheff

Faculty Publications

Much academic commentary these days concludes that trademark enforcement has become overly aggressive. Commentators argue that the increasingly expansive claims of rights by well-funded trademark owners are unreasonable, and thus that lawsuits asserting those rights amount to trademark bullying. But I think many, if not most, trademark practitioners would take the contrary view that enforcement can only barely keep up with the constantly evolving and worsening threats to their clients' brands, particularly internationally and online. The purpose of this Essay is to try and bridge these two positions by critiquing each one from the perspective of the other. The first …

The Evolution Of Consumer Privacy Law: How Privacy By Design Can Benefit From Insights In Commercial Law And Standardization, Muharem Kianieff

Canadian Journal of Law and Technology

This article considers the effectiveness of the present privacy regimes in North America as it relates to the protection of consumer information that is gathered in the ordinary course of business. It is argued that the present moves towards a Privacy by Design approach shows great potential and can gain valuable insights from established doctrines in commercial and consumer protection law. Moreover, it is proposed that the aims of such an approach can be achieved by deeming personal information and behavioral data to be the property of the individual that it pertains to. It is then suggested that a regulatory …

Regulating The Cloud: A Comparative Analysis Of The Current And Proposed Privacy Frameworks In Canada And The European Union, David Krebs

Canadian Journal of Law and Technology

Cloud computing is a growing phenomenon and promises greater efficiency and reduced-cost computing. However, some of the basic technological and business-related features of the Cloud are at odds with personal data protection laws. Canada and the European Union share similar core values related to privacy/data protection, and both regions aim to increase their competitiveness regarding cloud computing. Having these two similarities in mind, this paper explores the current legal and stakeholder landscape in Canada and the European Union with respect to cloud computing, data protection and how adoption of the model can be advanced. The analysis shows that neither of …

In Defence Of A Defence - A Demonstrable Legitimate And Non-Infringing Purpose As A Full Defence To Anti-Circumvention Legislation, Andrew Yolles

Canadian Journal of Law and Technology

In this essay, I will argue that making a demonstrable lawful and non-infringing purpose a full defence to copyright infringement by circumvention of a TPM addresses many of the concerns raised by the currently proposed legislation, while avoiding the pitfalls of directly linking anti-circumvention laws with actual copyright infringement. As the ratification of the WIPO Internet treaties is the foremost concern for this legislation, I will begin with a discussion as to how this model can successfully implement the treaties’ anti-circumvention provisions where the Bill C-60 model may have failed. I will then explain why this model strikes a better …

Book Review: R.L. Campbell, Legal Issues In Electronic Commerce, Robert J. Currie

Canadian Journal of Law and Technology

The juncture of “law and technology” from a legal education point of view is an interesting one. Successfully engaging with law and technology requires stu- dents (of all ages and stripes) to absorb at least some of the substance of many discrete areas of law, as well as to assess how technology creates nexuses between them and challenges some of their underlying notions. As electronic commerce increasingly becomes the bread and butter of many law practices, this need comes into sharper relief — one has to grasp a large variety of fundamentals and simultaneously generate some insight as to where …

Book Review: William F. Patry, How To Fix Copyright, Graham Reynolds

Canadian Journal of Law and Technology

In How to Fix Copyright, William F. Patry, one of America’s leading experts on copyright, calls for a “top-to-bottom, systemic overhaul” of copyright laws. For a Canadian readership in the midst of our own process of copyright reform, such a call to action is both timely and relevant.

Smoke And Mirrors: America Invents Act 2011: A Chill In The Air, Robert I. Reis

Journal Articles

Summer

Genes 101: Are Human Genes Patentable Subject Matter?, Andrew Bowman

Richmond Journal of Law & Technology

Genes are the fundamental building blocks of all living things. They dictate hair color, eye color, even susceptibility to cancer. As such, genes inherently possess untold power. The ability of a sole company to wield this omnipotence makes a human gene patent highly sought after.

Must Licenses Be Contracts? Consent And Notice In Intellectual Property, Mark R. Patterson

Faculty Scholarship

Intellectual property owners often seek to provide access to their patented or copyrighted works while at the same time imposing restrictions on that access. One example of this approach is “field-of-use” licensing in patent law, which permits licensees to use the patented invention but only in certain ways. Another is open-source licensing in copyright law, where copyright owners typically require licensees that incorporate open-source software in other products to license those other products on an open-source basis as well. Surprisingly, though, the legal requirements for granting restricted access are unclear. The source of the lack of clarity is the ill-defined …

A Proposal For An Alternate Dispute Resolution Process For The Fashion Industry After The Innovative Design Protection And Piracy Prevention Act, David Reap

Cardozo Journal of Conflict Resolution

This Note will explore the way alternative dispute resolution can be used to ensure that the proposed IDPPPA meets its stated goal without unnecessarily chilling creative efforts of unproven designers. Though the bill is aimed at stopping the proliferation of design copying (knockoffs), insiders are concerned that the bill will dissuade designers from producing designs that merely incorporate elements from other designs ("inspired-by" designs). Some believe that the judiciary will interpret the IDPPPA expansively, resulting in the punishment of designers who produce knockoffs as well as those who draw inspiration from other designs. However, a chilling effect could be mitigated …