The “Right” To Injunctive Relief For Patent Infringement ▲ | ||
Abstract Last term, in eBay Inc. v. MercExchange, L.L.C., the Court “seemingly” rejected the Federal Circuit’s longstanding practice of awarding permanent injunctive relief as a matter of course on the patentee establishing actual infringement. The Court concluded that federal courts should evaluate the availability of injunctive relief to redress continuing, actual infringement based on the traditional fourpart test. This paper explores the Court’s approach to injunctive relief in patent litigation. I argue that eBay supports an integrative view of Patent Act remedies that merges the availability of injunctive relief to the type of damages (royalties or lost profits) the patentee can claim under the Patent Act. In a nutshell, injunctive relief should ordinarily be limited to cases when the patentee seeks lost profits. In cases when the patentee seeks statutory royalties, injunctive relief should ordinarily be denied on the ground that the remedy at law is adequate. | court damage discretion injunction injunctive patent patentee relief remedy right Volume 24 Issue 1 Page 1 | |
The Myth Of Copyright’s Fair Use Doctrine As A Protector Of Free Speech ▲ | ||
Abstract This article debunks the myth that the fair use doctrine exists to protect the freedom of speech within copyright. Using the history of fair use in the courts and in Congress, as well as recent case law, the Article demonstrates that fair use is not, and never has been, intended or designed to restrain copyright in the face of the First Amendment. The conflict between copyright and free speech could be lessened by reforming the balance of interests within fair use to eliminate the focus on commercial use and to expand the understanding of the broader public-benefit purpose underlying the Supreme Court’s analysis of transformative uses. This broadening of what constitutes a “fair” purpose and character of a use would create an opportunity for judicial balancing of the interests promoted by both copyright and the First Amendment. | amendment commercial copyright court doctrine factor first interest purpose speech Volume 24 Issue 1 Page 31 | |
iPods And Prairie Fires: Designing Legal Regimes for Complex Intellectual Property Systems ▲ | ||
Abstract This article suggests that intellectual property works are the products of complex creative systems and, consequently, designers of legal regimes for the global information ecosystem can learn useful lessons from complexity theory. Several lessons can be drawn from simple analogies to two systems: the iPod music player and the tallgrass prairie ecosystem. First, good design of legal regimes requires empirical study of intellectual property systems. Empirical studies are likely to reveal significant variations among creative systems and one-size-fits-all laws may fail to optimize creation of intellectual property works. Second, there is a much wider variation in design possibilities than the traditional binary choice between private property and the public domain. Finally, legal regimes must tolerate certain chaotic elements essential to the sustainability of intellectual property systems. Such elements keep the systems poised at the edge of chaos where creativity lies. | chao complex complexity intellectual legal prairie property regime system theory Volume 24 Issue 1 Page 105 | |
KSR: It Was Not A Ghost ▲ | ||
Abstract In 1982, the Court of Appeals for the Federal Circuit adopted an interpretation of 35 U.S.C. § 103 that differed substantially from prior Supreme Court interpretations of the statute. Under Federal Circuit precedent, the act of filing of a patent application was said to vest in the applicant a provisional entitlement to patent protection for any process, machine, manufacture, or composition of matter that the applicant disclosed and claimed to be his or her “invention.” Under this view, § 103 functioned as a mere proviso to a presupposed entitlement to patent protection. Federal Circuit precedent enforced this supposed entitlement by means of a judicially-devised “test,” referred to as the “teaching-suggestion-motivation test,” under which the United States Patent and Trademark Office and United States courts were said to lack authority to hold that a patent claim was invalid under § 103 in the absence of some proven teaching, suggestion, or motivation to combine the relevant prior art teachings in the particular manner claimed. In KSR International Co. v. Teleflex Inc., the Supreme Court disapproved core premises of Federal Circuit precedent interpreting § 103. KSR reaffirms that § 103 did not abrogate, but to the contrary “codified” the pre-existing legal standard for patentability that the Court had announced in Hotchkiss v. Greenwood. KSR also makes clear that courts, not juries, have responsibility for determining the preemptive effect of undisputed prior art under § 103. | circuit claim court decision federal invention matter patent prior subject Volume 24 Issue 1 Page 131 | |
Seagate Equals Sea Change: The Federal Circuit Establishes a New Test For Proving Willful Infringement and Preserves the Sanctity of the Attorney-Client Privilege ▲ | ||
Abstract In a landmark decision, a unanimous Court of Appeals for the Federal Circuit established a new, more stringent standard for proving willful patent infringement and reaffirmed the sanctity of the attorney-client privilege in our adversarial system of justice. The case, In re Seagate Technology LLC, will have a profound effect on future patent litigation, as a finding of willful infringement often leads to an award of enhanced monetary damages to the patentee under 35 U.S.C. § 284. The decision also provides much needed clarity concerning the scope of waiver of the attorney-client privilege when a patent infringement defendant asserts the “advice of counsel” defense to a charge of willful patent infringement. | attorney client counsel court infringement opinion patent seagate trial willful Volume 24 Issue 1 Page 167 | |
Declaratory Judgment Practices After SanDisk v. STMicroelectronics ▲ | ||
and Abstract The Declaratory Judgment Act is a procedural device that was enacted in order to define the rights and legal relations of adverse parties. The declaratory judgment procedural device has been used by purported patent infringers as a sword to adjudicate the validity of the patents that they are allegedly infringing. Recent decisions in such cases as SanDisk v. STMicroelectronics, and MedImmune, Inc. v. Genentech, Inc., have given practitioners in patent law further insight into the standards that federal courts will use in granting a declaratory judgment on the validity of a patent in an infringement case. This note provides a brief overview of the declaratory judgment device, its development, and application in hallmark patent cases. | controversy court decision declaratory infringement judgment jurisdiction medimmune patent sandisk Volume 24 Issue 1 Page 185 | |
Antitrust And Trade Secrets: The U.S. and the EU Approach ▲ | ||
Abstract This paper examines the divergent approaches to application of antitrust principles to trade secrets in the EU and in the U.S. The U.S. antitrust enforcers recognize the need to protect trade secrets and treat them as a type of intellectual property. By contrast, the European Commission takes the view that trade secrets do not merit the same level of deference as that accorded to intellectual property rights. In Microsoft, the Commission decided that Microsoft’s refusal to disclose secret interoperability information to its competitors constituted an abuse of a dominant position because the refusal created an unfair competitive advantage for Microsoft. Moreover, as the recent controversy over the implementation of the Microsoft decision shows, the Commission position is that Microsoft does not have the right to charge royalties or control the secret interoperability information it was forced to disclose, unless such information qualifies for patent protection. The source of these divergent approaches may be the lack of harmonized EU standards of trade secret protection. Whereas U.S. antitrust authorities naturally relied on the harmonized principles of trade secrets law, the EU antitrust enforcers, lacking such uniform standards, have been using competition law to shape substantive trade secret laws. In doing so, they have undermined national trade secret protection measures and thus created a legal environment which may discourage private R&D investment and impede diffusion of technologies. | antitrust commission competition information license microsoft patent protection secret trade Volume 24 Issue 2 Page 207 | |
Laws Of Nature And The Business Of Biotechnology ▲ | ||
and Abstract The Supreme Court has shown an interest in the Intellectual Property area recently, particularly with respect to patentability under 35 U.S.C. §101. An appeal entitled LabCorp v. Metabolite raised the product of nature exception to patentability, but this issue was not decided by the full court. To understand what may happen in a similar appeal, the present article reviews what occurred in the LabCorp case, the relevant Supreme Court decisions that preceded it, and relevant case law that has arisen afterwards. This article also discusses the potential effect on biological and diagnostic claims that are already issued or pending. | brief claim court issue matter nature patent physical process subject Volume 24 Issue 2 Page 275 | |
Legal And Policy Aspects Of Internet Number Resources ▲ | ||
, , and Abstract This paper demonstrates the heightened need for a consistent legal and public policy approach to critical management issues regarding “Internet number resources,” which include Internet Protocol (“IP”) addresses and Autonomous System numbers. First, we provide background information on what IP addresses are and how they are used to route Internet traffic. Second, we describe the evolution of the Regional Internet Registries (“RIRs”). The RIRs are non-profit, non-governmental organizations of continental scope that derive their authority from the consent of the Internet community, and from the U.S. Government, which has encouraged the Internet’s private-sector institutions of governance. Third, we describe the open and transparent public policy process that currently creates Internet number resource allocation policies in the American Registry for Internet Numbers (“ARIN”) region, which is representative of the modestly different policy processes in each of the five RIRs. We also describe the more recent creation of the Number Resource Organization (“NRO”) and its modest role in global IP address policy development. Fourth, we contrast the legal nature of domain names with IP addresses, which has been the subject of recent judicial review. Fourth, we describe the serious potential problems resulting from the depletion of the supply of IPv4 addresses, the impact of “legacy” IPv4 address space, the need to adopt IPv6 applications, and other looming technical policy issues. | address addresse domain internet network number policy resource service visited Volume 24 Issue 2 Page 335 | |
Doubling Up the Horses in Midstream: Enhancing U.S. Patent Dispute Resolution by the PTO’s Adoption of the JPO’s Hantei Request System ▲ | ||
Abstract For entities seeking to preempt or defend against adverse claims of infringement, navigating the present U.S. patent dispute resolution system is a thorny path. Judicial standing requirements hinder a potential defendant from fully assessing its risks before making and placing in jeopardy certain investments or assuming negotiation costs, thereby increasing its accountability, the financial stakes, and the probability of retaliation. While the standing doctrine has become more favorable to would-be licensees over time, a readily accessible opining mechanism for infringement would usher in still more benefits, including those unachievable through either litigation or conventional forms of alternative dispute resolution. Although the United States Patent and Trademark Office currently lacks Congressional authorization, the agency, due to its familiarity with patent claims and technical expertise, would be a prime candidate for administering such an advisory determination procedure, comparable to the Hantei Request System offered by the Japanese Patent Office. Moreover, the domestic implementation of this system by the PTO will not suffer the same disadvantages endemic to Japan’s legal system. | claim court dispute hantei infringement litigation opinion patent request system Volume 24 Issue 2 Page 375 | |
The Effect of Video Franchising Reform on Net Neutrality: Does the Beginning of IP Convergence Mean that It Is Time For Net Neutrality Regulation? ▲ | ||
Abstract Recent video franchise legislation in several states allow telephone companies to begin to compete with cable companies in offering the triple play service of video, voice, and data over an Internet protocol. This article examines whether this regulatory trend provides new arguments for regulating net neutrality on the Internet. Net neutrality is the principle that Internet providers should not discriminate against unaffiliated content and applications on their networks. This article first provides an overview of the net neutrality debate and discusses the potential threats to net neutrality due to changes in video franchise legislation. In particular, the article examines the threats posed by increased competition and increased user bandwidth demand as a result of providing triple play service. The article then analyzes the current alternatives to net neutrality regulation and the costs of regulating net neutrality. This analysis leads to the conclusion that regulating net neutrality would be premature even in the face of new threats posed by changes in video franchise legislation. | application broadband cable internet network neutrality provider regulation service video Volume 24 Issue 2 Page 421 | |
The Continuing Debacle of U.S. Antidilution Law: Evidence from the First Year of Trademark Dilution Revision Act Case Law ▲ | ||
AbstractThis article evaluates the results of a quantitative study of all reported federal court opinions that analyzed an issue in antidilution law during a one year period after passage of the Trademark Dilution Revision Act of 2006 (TDRA). The article shows the remarkable extent to which courts continue to treat the dilution cause of action as superfluous to the infringement cause of action. As a result, antidilution law continues to have no appreciable effect on the outcomes of federal trademark cases or the remedies issuing from those outcomes. | action antidilution cause claim court dilution infringement lexi opinion trademark Volume 24 Issue 3 Page 449 | |
Schechter's Ideas in Historical Context and Dilution's Rocky Road ▲ | ||
AbstractDilution as a theory of trademark liability is something of a mystery. The theory persists despite an extremely poor fit with traditional trademark doctrine and standard trademark policies. This Article explores the mystery of dilution by tracing it back to its origins in Frank Schechter's famous 1927 Harvard Law Review article, The Rational Basis of Trademark Protection. Schechter’s argument for dilution must be understood against the broader economic, jurisprudential, and doctrinal background of his time. Schechter was a legal realist and his arguments for dilution were quintessentially realist in character. He believed that protecting marks from dilution was the true rationale for trademark protection because it best fit the way marks actually functioned in the marketplace. He urged courts to adopt the dilution theory because he believed that frank recognition of the true basis for trademark protection would lead to better decisions. Yet dilution never made serious headway until the late 1940s. The reason is not because Schechter’s contemporaries rejected the idea in principle, but rather because they saw a strategic advantage to using broad confusion theories to expand trademark protection. When states began to adopt anti-dilution statutes in the late 1940s, two developments played an important role. First, dilution found a strong and aggressive advocate in the person of Rudolf Callmann, and second, political factors favored action on the state level. This history of dilution’s origins and early reception provides useful background for understanding current debates and also helps explain why dilution is so much more controversial today than it was in Schechter’s time. | basis confusion dilution legal mark protection schechter state theory trademark Volume 24 Issue 3 Page 469 | |
A Linguistic Look at Trademark Dilution ▲ | ||
Abstract Trademark dilution, despite its significance as a cause of action in trademark law, has not been as heavily analyzed by scholars within the field of linguistics and law as one might expect. This article reviews contributions that linguists have made to trademark law and suggests that established linguistic methodologies might assist legal practitioners in formulating causes of actions based on trademark dilution. | american dictionary dilution generic genericness legal linguist linguistic mark trademark Volume 24 Issue 3 Page 507 | |
Trademark Dilution: Of Fame, Blurring, and Sealing Wax, with a Touch of Wisdom ▲ | ||
Abstract The Trademark Dilution Revision Act of 2006 (TDRA) purported to clarify dilution law. Although it may be too early for a complete assessment, there are initial indications that the result was more than mere “clarification.” Instead, the TDRA significantly altered the contours of dilution law and presented courts with a number of new unresolved issues. Some plausible interpretations of the newly “clarified” law, aided by continued judicial skepticism, may cause federal dilution based on claims of blurring to disappear almost entirely, an outcome that I suggest would have some merit. | case claim consumer court dilution famous federal likely mark trademark Volume 24 Issue 3 Page 521 | |
The Trademark Use Requirement in Dilution Cases ▲ | ||
and Abstract The trademark use doctrine plays a critical role in ensuring that trademark law serves its proper purpose of encouraging market exchange and lowering consumer search costs. As we have explained in detail elsewhere, the doctrine ensures that trademarks do not become a weapon used to suppress speech or to interfere with rather than promote the efficient operation of the marketplace. | commercial court defendant dilution famous language requirement statute trade trademark Volume 24 Issue 3 Page 541 | |
Dumping The “Designation Of Source” Requirement From The TDRA: A Response to the Alleged “Trademark Use Requirement In Dilution Cases” ▲ | ||
Abstract It will probably come as no great surprise to anyone who has read Professor Lemley’s and Professor Dogan’s article, The Trademark Use Requirement in Dilution Cases, that I disagree with much of it. In particular, I disagree with the main thesis of their article that the Trademark Dilution Revision Act of 2006 (“TDRA”)1 embodies a “trademark use requirement,” as well as their argument that the legislative history supports that conclusion. As explained in more detail below, the language of the TDRA as enacted fails to support that thesis (although I acknowledge there may be some superficial ambiguity in the phrase “use of a mark or trade name”).2 More importantly, the clear intent of the participants involved in negotiating changes in the bill (including the International Trademark Association [“INTA”], the American Intellectual Property Law Association [“AIPLA”], the American Civil Liberties Union [“ACLU”], and the applicable Congressional leaders and staff) was to remove the trademark use requirement originally proposed by INTA and supported by Professor Lemley at the Congressional hearing on the TDRA. | defendant designation dilution dogan lemley professor requirement source trade trademark Volume 24 Issue 3 Page 559 | |
Dilution and Competition Norms: The Case of Federal Trademark Dolution Claims Against Direct Competitors ▲ | ||
Abstract The field of intellectual property can be understood as a system of regulation governing the competitive process. A study of recent trademark dilution cases suggests that competition norms inform the dilution analysis. Thus, this article uses the example of trademark dilution to demonstrate that intellectual property can truly be viewed as competition policy. | competition consumer dilution intellectual market norm owner product property trademark Volume 24 Issue 3 Page 571 | |
Considering the Who, What, When, Where and How of Measuring Dilution ▲ | ||
Abstract The Trademark Dilution Revision Act of 2006 (TDRA) extended the cause of action for trademark dilution, clarifying that dilution may occur by blurring and tarnishment. However, certain considerations must necessarily be taken into account when measuring dilution. This paper considers factors related to measuring trademark dilution. Specifically, this article considers the who, what, when, where, and how of measuring dilution. | association comer dilution famous first plaintiff question respondent second survey Volume 24 Issue 3 Page 601 | |
Identical Cousins?: On the Road with Dilution and the Right of Publicity ▲ | ||
and Abstract The dilution doctrine and the right of publicity have a great deal in common, because both represent property-like rights that have evolved from legal doctrines largely unrelated to property concerns. Although both doctrines have engendered controversy in the United States, the dilution doctrine generally evokes greater skepticism and confusion. This article evaluates how these concepts are viewed in a number of jurisdictions outside the United States. From this examination, two conclusions emerge. First, despite the similarities between the doctrines, countries do not tend to adopt or reject them in tandem. Second, the degree to which each doctrine achieves widespread and well-understood acceptance in a particular country depends on whether and to what extent that doctrine has evolved from the nation’s own legal and cultural traditions. When a country adopts either of these doctrines largely as a result of international pressures or legislative mandates that have little foundation in domestic tradition,judicial confusion and/or resistance are common results. | court dilution known privacy protection publicity right trade trademark united Volume 24 Issue 3 Page 641 | |
State of the State: Is There a Future for State Dolution Laws? ▲ | ||
Abstract For almost fifty years, until the Federal Trademark Dilution Act arrived in 1996 (FTDA), state dilution laws existed in relative obscurity, below the radar screens of many trademark lawyers. After the passage of the Trademark Dilution Revision Act of 2006 (TDRA), there is little reason for the existence of a parallel, and non-uniform, set of state laws. However, neither express preemption nor repeal appears to be a realistic option in the foreseeable future. As long as they do not interfere with the operation of federal law, and do not upset the balances built into federal law, their continued existence will not significantly affect the path of trademark law. And, while state trademark law might have a limited role as a “gap filler,” that role must be circumscribed to prevent interference with the goals of federal law. | claim court dilution famous federal mark protection state statute trademark Volume 24 Issue 3 Page 681 | |
Virtual Property and Personhood ▲ | ||
Abstract As virtual worlds have increased in popularity, they have generated a great deal of interest in the legal community. A number of legal commentators have discussed property in the context of virtual worlds. This article specifically discusses the application of Margaret Jane Radin’s personhood theory to virtual world property. While application of Radin’s personhood theory is far from perfect, it provides useful insight into broader questions of individuals as persons. | object personal personhood player property radin right theory virtual world Volume 24 Issue 4 Page 715 | |
Virtual Trademarks ▲ | ||
and Abstract In this article, we discuss how trademark law might apply to virtual worlds and virtual economies. In Part I, we consider how trademark infringement in virtual worlds resembles and differs from trademark infringement in other media. In Part II, we look at the various business models of contemporary virtual worlds and how commerce takes place within them. In Part III, we consider the circumstances where trademark infringement may occur in virtual worlds by discussing questions of use, confusion, dilution and fair use. In Part IV, we examine the issue of contributory trademark infringement. | court dilution infringement product second service sneaker trademark virtual world Volume 24 Issue 4 Page 749 | |
User-Generated Content and the Future of Copyright: Part Two -- Agreements Between Users and Mega-Sites ▲ | ||
AbstractThis article examines issues surrounding the ownership of user generated content (UGC). In particular, it examines the contractual relationships that exist between the creators of UGC and the megasites that host the content. Furthermore, this article argues that many contracts, particularly those between minors and UGC mega-sites, are unconscionable and thus invalid on their terms. This means that these mega-sites are infringers on the copyright protected creative output of large numbers of their users. | bragg content contract copyright facebook property second site term user Volume 24 Issue 4 Page 829 | |
Outsource Software Development and Open Source: Coming of Age in the 2000S ▲ | ||
Abstract This article gives a brief overview of certain issues that outsource development service providers should consider to ensure open source software license compliance. Among other topics, this article considers various types of licenses, development tools, and addresses the “developer problem.” | customer development issue library license outsource provider software source version Volume 24 Issue 4 Page 869 | |
Governing Cyberspace: Law ▲ | ||
Abstract As explained in the “Note to the Reader,” this article is excerpted from Professor Post’s forthcoming book, In Search of Jefferson’s Moose: Notes on the State of Cyberspace (Oxford University Press, 2008). | cyberspace government internet jefferson people place state virtual world yahoo Volume 24 Issue 4 Page 883 | |
The Fizzy Experiment: Second Life, Virtual Property And A 1L Property Course ▲ | ||
and AbstractThis work is an attempt to sort out the relationship between virtual property and common law property. How are we to understand the relationship between a “virtual” table and an actual table? What does property in this context mean exactly? While many have written about this topic from a myriad of perspectives, we took a slightly different approach. We wanted to see what property elements were being used inside one virtual space—Second Life. We sought to understand the relationship between common law property and virtual property by combining our knowledge—a property professor with a cultural history background with an avid gamer turned law student. We called it the Fizzy Experiment. | concept fizzy group linden property right second student virtual world Volume 24 Issue 4 Page 915 | |
Patents: Hiding from History ▲ | ||
Abstract This essay analyzes how various patent rules, viewed together, indirectly cause a distorted historical record of technological development. Part II of this essay looks at a recent book, The Democratization of Invention, that relied heavily on patent records to reexamine acutely the historical role of intellectual property in economic development. Part III of this essay discusses how patent law today discourages an inventor from accurately disclosing her invention and its place in technological development. Instead, patent law indirectly encourages vague and overbroad descriptions of the invention. Case law on claim interpretation uses specific disclosures about the invention to limit the scope of the patent claims. This leads to patent drafters using what has been called “intentional obscurity.” Similarly, the law governing disclosure encourages inventors not to define their terms, or identify the category of invention in the preamble, or limit the claims to the actual invention. Likewise, inventors are at a disadvantage if they explain the advantages of the claimed invention or submit software code used to implement the invention. Even keeping informed on technology in the field may hurt the inventor. Reform of such rules could help the patent system today, and, as a byproduct, tomorrow’s history. Reforms that improve the quality of patent applications for their primary purposes (such as examination, licensing, and litigation) would likewise improve their value for the future. | claim disclosure history invention inventor patent record state technology united Volume 24 Issue 4 Page 961 | |
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Designed, built, and maintained by Journal students.
All marks are property of their respective owners.
All rights reserved.