Volume 22, Number 1
      •   Disabling Patentability for Skill-Based Inventions: Aligning Patent Law with Competition Policy  p. 1
      •   Not All Edits are Created Equal: The Edited Movie Industry’s Impact on Moral Rights and Derivative Works . . .  p. 51
      •   An Internet Advertising Service Can Constitute “Use in Commerce”  p. 89
      •   Reasonable Pricing – A New Twist for March-In Rights Under the Bayh-Dole Act  p. 149
      •   Metro-Goldwyn-Mayer Studios v. Grokster—The Supreme Court’s Balancing Act Between the Risks of . . .  p. 169
 
Volume 22, Number 2
      •   Podcasting and Copyright: The Impact of Regulation on New Communication Technologies  p. 187
      •   The Right of Integrity in Software: An Economic Analysis  p. 219
      •   Calibrating Patent Lifetimes  p. 269
      •   Geographical Indications of Origin: Should They Be Protected and Why? – An Analysis of the Issue From the . . .  p. 315
      •   Territorial Impact Factors: An Argument For Determining Patent Infringement Based Upon Impact on the U.S. . . .  p. 351
 
Volume 22, Number 3
      •   A Brief History of Indirect Liability for Patent Infringement  p. 369
      •   The Intent Element of Induced Infringement  p. 399
      •   Common-Sense (Federal) Common Law Adrift in a Statutory Sea, or Why Grokster was a Unanimous Decision  p. 413
      •   Secondary Liability for Trade Secret Misappropriation: A Comment  p. 529
      •   Rebalancing Section 512 to Protect Fair Users From Herds of Mice—Trampling Elephants, or a Little Due . . .  p. 547
      •   Importing Kazaa - Exporting Grokster  p. 577
 
Volume 22, Number 4

Disabling Patentability for Skill-Based Inventions: Aligning Patent Law with Competition Policy  ▲

Author: Neeraj Arora

Abstract

     This Article proposes that allowing patents on a new transindustry class of inventions, called skill-based inventions, is harmful to innovation. Skill-based inventions are defined as those inventions that rely upon the skill of the user for their efficacy. The primary argument advanced is that allowing patents on these inventions would significantly interfere with the natural development of innovation through competition on the free market. The federal circuit can surgically bar these inventions from patentability using a reinvigorated version of the § 112 enablement requirement.

    based business competition industry innovation invention method patent requirement skill

Volume 22
Issue 1
Page 1

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Not All Edits are Created Equal: The Edited Movie Industry’s Impact on Moral Rights and Derivative Works Doctrine  ▲

Author: Aaron Clark

Abstract

     Kate Winslet’s performance in Titanic helped propel the movie to become the highest grossing film of all time. One of her scenes in particular also begat an industry, and now a copyright controversy, when a small video store in Utah started snipping her nude scene out of customers’ videocassettes of the movie. Since then, the number of businesses offering edited VHS and DVD movies has increased dramatically. For at least as long as these new businesses have been editing movies, the directors of such movies have condemned the practice as violative of their moral rights to maintain the artistic integrity of their movies. Additionally, the practices of the edited movie industry also implicate potential copyright law violations, specifically regarding potential infringement of the movie studios’ exclusive right to prepare derivative works.
     The current CleanFlicks litigation in the Federal District Court of Colorado and the recently signed Family Movie Act look to offer definitive answers to the immediate questions of whether the current editing practices infringe the Studios’ and Directors’ moral rights or copyright protections. Those answers, though, will implicate more than the future viability of the edited movie industry. They also promise to add another chapter to American copyright law regarding the legitimacy of moral rights claims for works not specifically protected by statute, as well as the expansion or limitation of a copyright holder’s control over the preparation of derivative works of her product.
     This paper gauges the impact of the CleanFlicks case and the Family Movie Act on both sets of questions. Part II briefly examines the background of American copyright law involving the doctrine of moral rights and the right to prepare derivative works. Part III details the rise of the edited movie industry, the current technologies of digital editing and player control filtering, and the litigation both have provoked. Part IV then evaluates the moral rights and derivative works infringement claims raised in the CleanFlicks litigation, concluding that the Directors’ and Studios’ moral rights based Lanham Act Claims will likely fail, as well as the Studios’ allegations of copyright infringement by the Player Control Parties. The copyright claims raised against the Digital Editors, however, ultimately require a fair use evaluation, which slightly favors the Digital Editors. These conclusions are then considered in light of the potential impact of the Family Movie Act, which grants superfluous protection to the Player Control Parties and potentially negatively impacts the Digital Editors’ fair use claim. Finally, Part V evaluates the impact of the likely resolution of the CleanFlicks case on American copyright law and argues that the case portends the extinguishment of moral rights claims outside explicit statutory protection.
     With regards to a copyright holder’s right to prepare derivative works, the case should reinforce the bar against a first sale defense of derivative works infringement claims, but otherwise lead to greater restrictions. While the full extent of those restrictions rest upon the success or failure of the Digital Editors’ fair use claim, the current litigation and legislation at a minimum will restrict the definition of infringing derivative works to those that 1) possess some level of originality, and 2) have fixed the incorporated underlying work.

    court derivative digital edited editor moral movie movy original right

Volume 22
Issue 1
Page 51

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An Internet Advertising Service Can Constitute “Use in Commerce”  ▲

Author: Patrick Frye
    commerce complaint confusion court gator internet owner service trademark website

Volume 22
Issue 1
Page 89

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Reasonable Pricing – A New Twist for March-In Rights Under the Bayh-Dole Act  ▲

Authors: John H. Raubitschek and Norman J. Latker
    agency government invention license march patent price reasonable right university

Volume 22
Issue 1
Page 149

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Metro-Goldwyn-Mayer Studios v. Grokster—The Supreme Court’s Balancing Act Between the Risks of Third-Party Liability for Copyright Infringement and Rewards of Innovation  ▲

Author: Karen M. Kramer
    circuit copyright court defendant grokster infringement infringing liability napster technology

Volume 22
Issue 1
Page 169

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Podcasting and Copyright: The Impact of Regulation on New Communication Technologies  ▲

Authors: Edward L. Carter and Scott Lunt

Abstract

     With the relative democratization of broadcast communication brought about by the new media technologies of podcasting and Internet broadcasting, new questions have arisen regarding appropriate legal standards for regulatory efforts. In particular, Internet broadcasters and podcasters collide with licensing agencies responsible for implementing U.S. and foreign copyright law. Media convergence has caused confusion amongst policymakers, industry professionals and the public with respect to the application of traditional copyright law to these new technologies.
     This article explores how congressional legislation and federal court jurisprudence, combined with the efforts of private licensing agencies such as ASCAP, BMI and SoundExchange, impact the and podcasting. Lawmakers and jurists must assess whether the unique characteristics of these technologies justify legal treatment different than that applied to traditional communication media in accordance with long-standing principles. Although holders of copyrights in popular music sound recordings contend that the threat of easy and widespread piracy justifies increasing the rights of copyright holders in the digital world, Internet broadcasting and podcasting raise new questions about whether copyright law is fulfilling its constitutional purpose of promoting progress of artistic expression.
     This article first reviews the constitutional purpose of U.S. copyright law and the evolution of the Copyright Act. It then describes the current state of the Internet broadcasting and podcasting industries. Next, it discusses and analyzes the current collision between copyright law and the new podcasting technology. The article concludes with observations about the appropriateness of differential legal treatment based on the unique characteristics of Internet broadcasting and podcasting, and the implications of such a regulatory scheme.

    copyright internet licensing music podcast podcaster podcasting recording sound visited

Volume 22
Issue 2
Page 187

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The Right of Integrity in Software: An Economic Analysis  ▲

Author: Yonatan Even

Abstract

     This paper proposes a new framework for analysis of recent judicial trends in IP-related licensing and post-sale restrictions. It suggests that recent decisions have allowed IP holders to use such restrictions in order to expand the scope of their IP rights, and that such expansion has been allowed without examining its effects on innovation and creativity—and, subsequently, on competition in the market. The paper focuses on one instance of such expansion: the recognition of a right of integrity in software in the U.S. v. Microsoft decision. Following a brief presentation of the special characteristics of the software industry and the history of the right of integrity under U.S. law, the paper proceeds to present the main economic justifications for an abstract right of integrity and, building on these justifications, proposes a set of substantive tests that should be applied by courts before a right of integrity is applied to new subject matter. The paper then applies these substantive tests to demonstrate the undesirability—from an economic perspective—of the application of a right of integrity to software.

    analysis copyright court integrity microsoft moral product restriction right software

Volume 22
Issue 2
Page 219

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Calibrating Patent Lifetimes  ▲

Author: Eric E. Johnson

Abstract

     The patent system could better achieve its primary mission of incentivizing technological innovation by moving away from the onesize- fits-all 20-year term for patents and moving to a system of varying durations for different categories of invention. The current patent duration is arbitrary, the result of entrenched historical accident. Allowing upward variance from the 20-year term in discrete categories of invention offers the prospect of boosting innovation in impoverished technological sectors. Allowing downward variance in other categories would benefit overall social welfare by removing needless technological monopolization and associated deadweight loss.
     Current economic models and available economic data do not allow for the academic calculation of optimal patent lifetimes in the real world. This paper proposes practical procedural mechanisms to gather and synthesize information about innovation incentives and returns, and to make use of that information in decision-making paradigms that would vary patent terms to make the patent system more economically beneficial than it currently is.
     An appendix to this paper uses theoretical evolutionary biology to criticize economic theorists who have suggested that very long or even infinite durations for patents may be optimal.

    category duration economic incentive industry innovation invention patent protection system

Volume 22
Issue 2
Page 269

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Geographical Indications of Origin: Should They Be Protected and Why? – An Analysis of the Issue From the U.S. and EU Perspectives  ▲

Author: Lina Montén

Abstract

     As a result of the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS), geographical indications of origin (GIs) are for the first time afforded international protection as a separate branch of intellectual property, and have simultaneously become one of the most hotly contested areas within the World Trade Organization (WTO). Currently, inequalities exist amongst products, as the protection for wines and spirits is greater than that provided for all other products. Adding to the inequality, it is up to the individual WTO members to enact laws that enforce the TRIPS standards, which has resulted in inconsistent levels of protection from one country to another. In fact, the WTO is split between the European Union (EU) and the “Old World” in favor of greater protection for GIs, on one side, and the United States (U.S.) and the “New World” opposed to greater protection, on the other side.
     This article analyzes the GI debate that has ensued and examines whether GI protection, and particularly the extension thereof, is desirable from the perspectives of the U.S. and the EU. The article thereby specifically excludes the GI question with regard to developing countries. Section II defines GIs and explains why they need protection. Section III reviews the current state of the law, both international and national, focusing on the different approaches taken by Europe and the U.S. Section IV discusses the debate by exploring the various arguments presented by the respective sides. Finally, Section V finds that although GIs need protection, the current level of protection should not be extended.

    country european geographical indication origin product protection regulation trademark trip

Volume 22
Issue 2
Page 315

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Territorial Impact Factors: An Argument For Determining Patent Infringement Based Upon Impact on the U.S. Market  ▲

Author: Elizabeth M.N. Morris

Abstract

     The world has increasingly become a global marketplace. A product may have components manufactured in countries A, B, and C; assembled in country D; and offered for sale in country E. Furthermore, the use of that product may take place in country F or G. In this global marketplace, how is patent infringement determined? Traditionally, under United States law, patents have been given only territorial application. Thus, a competitor of a patented product can avoid an infringement suit by merely stepping outside of the country for one element of the process while still deriving most of his economic benefit within the United States. This narrow definition of patent infringement works poorly in a world with a global marketplace. Change is necessary.
     The current trend is to analyze extraterritorial use under 35 U.S.C. § 271 sections (f) and (g), the sections of the Patent Act that grant specific and limited extraterritorial protection. However, as can be seen in the recent cases of Eolas Tech. Inc., v. Microsoft Corp. and AT&T Corp. v. Microsoft Corp., both of which analyzed extraterritorial use under 35 U.S.C. § 271(f), it is easy for the courts to follow the letter of the statute but miss the purpose of patent protection in the United States.2 I argue that courts should stop the current trend and instead look to the precedent of the 2004 case of NTP, Inc., v. Research In Motion, Ltd. when interpreting infringement under the general infringement provision of 35 U.S.C. § 271(a).
     This paper argues that United States patent infringement cases should be analyzed based on factors that determine the economic impact on the United States market rather than based on the statutory technicalities of where each element is made, used, or sold. These factors that I refer to as “territorial impact factors” are: (1) control (2) beneficial use, and (3) ownership. Using these factors, courts can determine whether the impact from the potential infringement takes place primarily within the United States and thus affects the patent owner’s exclusive patent rights, or primarily outside of the United States and thus does not affect those exclusive rights.
     Part I gives a historical perspective of the United States’ position on the extraterritorial impact of patent law. It discusses the presumption that a patent applies only within the territorial boundaries of the United States. It then looks at several historic cases that have dealt with this presumption and analyzes how these cases would have been decided using the territorial impact factors.
     Part II discusses Deepsouth Packing Co., Inc v. Laitram Corp. and the statutory changes in 35 U.S.C. § 271(f) and § 271(g) enacted in reaction to the Court’s decision in Deepsouth.  It also discusses the current inconsistencies presented in cases that have attempted to define these new statutory sections.
     Part III discusses two subsequent cases, Decca Limited. v. The United States and NTP, Inc., v. Research In Motion, Ltd., which defined and refined the concept of “territorial impact factors,” although not specifically referring to them by that name.
     Finally, Part IV discusses the benefits of using territorial impact factors as an interpretation of 35 U.S.C. § 271(a), and why they are a better way to deal with extraterritorial issues than sections 271(f) and (g). Then it analyzes how Eolas Tech. Inc., v. Microsoft Corp. and AT&T Corp. v. Microsoft Corp. should have been decided using the territorial impact factors rather than 35 U.S.C. § 271(f).

    court factor impact infringement patent product section state territorial united

Volume 22
Issue 2
Page 351

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A Brief History of Indirect Liability for Patent Infringement  ▲

Author: Charles W. Adams

Abstract

     The Patent Act of 1952 codified liability for active inducement of infringement and contributory infringement in 35 U.S.C. § 271. The patent law doctrines of active inducement of infringement and contributory infringement had developed out of a line of cases in the nineteenth century, but the United States Supreme Court eventually ruled that they conflicted with the doctrine of patent misuse. The enactment of § 271 overruled the Supreme Court’s decisions that the defense of patent misuse prevailed over the doctrines of active inducement of infringement and contributory infringement. The Senate Report that accompanied the legislation indicated that active inducement of infringement was broader than contributory infringement and that contributory infringement was intended to cover the most common circumstance. The Sony and Grokster decisions make this history relevant to the indirect infringement of copyrights.

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Volume 22
Issue 3
Page 369

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The Intent Element of Induced Infringement  ▲

Author: Timothy R. Holbrook
    belief court induce inducement infringement infringer intent liability patent standard

Volume 22
Issue 3
Page 399

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Common-Sense (Federal) Common Law Adrift in a Statutory Sea, or Why Grokster was a Unanimous Decision  ▲

Author: Jay Dratler, Jr.
    common copyright court defendant grokster infringement liability secondary statutory technology

Volume 22
Issue 3
Page 413

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Secondary Liability for Trade Secret Misappropriation: A Comment  ▲

Author: Robert G. Bone
    liability problem professor report rustad secondary secret software survey trade

Volume 22
Issue 3
Page 529

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Rebalancing Section 512 to Protect Fair Users From Herds of Mice—Trampling Elephants, or a Little Due Process is not Such a Dangerous Thing  ▲

Author: Malla Pollack

Abstract

     I agree with the basic concept of 17 U.S.C. § 512; to protect Internet functionality, ISPs should have robust safe harbors against liability for their subscribers’ copyright infringement. However, the current details of the notice and take down system are both unfair to the general public and unnecessary to the economic health of the United States. I suggest a robust, statutorily established digital fair use right backed by a notice and take down procedure protecting fair users. At a minimum, use of a purchased music file on any of the purchaser’s equipment should be fair use. Preferably, all personal non-commercial use should be legal. Use or provision of technology to enable fair use should not violate Chapter 12 of Title 17. Additionally, ISPs should not be allowed (let alone incentivized) to cut off subscribers as repeat, online copyright infringers absent court decision on the alleged infringements.

    content copyright elephant hearing industry music network notice public section

Volume 22
Issue 3
Page 547

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Importing Kazaa - Exporting Grokster  ▲

Author: Graeme W. Austin
    copyright court domestic foreign grokster infringement international kazaa principle right

Volume 22
Issue 3
Page 577

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