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Texas Intellectual Property Law Journal
Volume 17

Issue 1 - Fall 2008


The Future of Inline Web Designing After Perfect 10
 
Citation:
17 Tex. Intell. Prop. L.J. 1 (2008)
 
Author:
Lee Burgunder and Barry Floyd
 
About:
Lee Burgunder and Barry Floyd are, respectively, Professor of Law and Public Policy and Professor of Information Systems at California Polytechnic State University, San Luis Obispo. Professor Burgunder received his J.D. and M.B.A. from Stanford University in 1981 and his A.B. from Dartmouth College in 1977. He was previously an attorney with Patton Boggs and Blow in Washington, D.C. Professor Floyd received his Ph.D. in Computers and Information Systems and M.B.A. from the University of Michigan and his M.S. in Systems Science and B.S. in Mathematics from Michigan State University.
 
Abstract:
In a copyright lawsuit brought by Perfect 10 against Google, the Ninth Circuit Court of Appeals ruled in 2007 that Internet sites do not directly infringe display rights by including copyrighted material within their web pages through inline linking or framing (“inline web designing”) techniques. Given the architecture of the Internet, which can best be analogized to a form of public auditorium, this conclusion is clearly correct. Nevertheless, this does not mean that web site designers necessarily have a green light in terms of copyrights to do anything they wish through these methods because they still may violate derivative rights, especially in light of emerging developments in web design, processing power, and Internet technologies. In particular, this Article demonstrates that website developers using inline web designing could violate derivative rights, depending on the extent of any alterations to the copyrighted material, the degree of integration with surrounding elements, the potential economic effects, and the amount of control given to web site visitors over the appearance of the copyrighted content.


Fragging the Patent Frags: Restricting Expressed Sequence Tag Patenting Using the Enablement-Commensurate-in-Scope-with-the-Claims Requirement
 
Citation:
17 Tex. Intell. Prop. L.J. 49 (2008)
 
Author:
Kevin T. Kelly
 
About:
Mr. Kelly received his J.D. and LL.M. in Biotechnology and Genomics from Sandra Day O’Connor College of Law, Arizona State University in 2006. He is currently a judicial law clerk to the Honorable Peter C. Lewis, United States District Court, Southern District of California.
 
Abstract:
Broad product claims on expressed sequence tags (ESTs) are undesirable because they can be used to stifle innovation. Having such a patent would enable the owner to discover and claim ownership rights over several parts of a genome where such DNA sequences may bind. Moreover, the patentee of an EST may be able to exclude others from making or marketing a commercial product such as a therapeutic protein or a genetic diagnostic test that incorporates the DNA sequence for its use. This Article proposes an approach using 35 U.S.C. § 112, paragraph 1, to restrict EST claims only to known use or uses that are enabled in the specification.


Dumb Inventors Rejoice: How Daiichi Sankyo v. Apotex Violated the Federal Patent Statute
 
Citation:
17 Tex. Intell. Prop. L.J. 81 (2008)
 
Author:
Nicholas J. Gingo
 
About:
Mr. Gingo received his J.D. from Chicago-Kent College of Law in 2008.
 
Abstract:
This Article examines the Federal Circuit’s current test for resolving the level of ordinary skill in the art in patent cases as applied in Daiichi Sankyo Co. v. Apotex, Inc. Specifically, this Article first explains how recent Supreme Court and Federal Circuit decisions have placed an increased emphasis on the resolution of the level of ordinary skill in the art in making the ultimate nonobviousness determination. This Article then goes on to examine the evolution of the Federal Circuit’s test for resolving the level of ordinary skill in the art and how that test, in its most recent application, is contrary to § 103 of the Patent Act. Simply put, the Federal Circuit erred in Daiichi when it focused solely on the inventor’s level of skill in determining the level of ordinary skill in the art. Finally, this Article concludes by recommending that the Federal Circuit’s test for resolving the level of ordinary skill in the art be revised to specifically exclude any consideration of the inventor’s skill level.


Goldilocks and the Three Federal Dilution Standards: An Empirical Review
 
Citation:
17 Tex. Intell. Prop. L.J. 101 (2008)
 
Author:
Justin J. Gunnell
 
About:
Mr. Gunnell is an associate in the New York office of Latham & Watkins LLP. He received his J.D. from Cornell Law School and B.A. in Policy Analysis and Management with Honors from Cornell University.
 
Abstract:
Under the Federal Trademark Dilution Act, dilution law appears to have added little in the way of an independent tool for litigants under the actual dilution standard. This Article addresses whether the changes later implemented under the Trademark Dilution Revision Act (TDRA) improved the usefulness of dilution law for such litigants. It appears that there may, in fact, be newfound hope for dilution law. This Article provides preliminary empirical results that reveal, over-all, plaintiffs seem to fare better under a likelihood of dilution standard than one of actual dilution. The results also reveal that some categories of dilution have become more plaintiff favorable than others. For instance, plaintiffs attacking a junior mark similar to the senior mark and used in the same or similar industry enjoyed the highest increase in success rates in moving from an actual to a likelihood of dilution standard.


Issue 2 - Winter 2009


Trade Secret Prices and High-Tech Devices: How Medical Device Manufacturers Are Seeking to Sustain Profits by Propertizing Prices
 
Citation:
17 Tex. Intell. Prop. L.J. 187 (2009)
 
Author:
Annemarie Bridy
 
About:
Associate Professor of Law, University of Idaho College of Law. B.A, Boston University; M.A. & Ph.D., Univeristy of California, Irvine; J.D., Temple University James E. Beasley School of Law. The author would like to thank David Post, Scott Burris, and Joyce Meyers for helpful feedback on an earlier draft of this Article.
 
Abstract:
In two recently settled cases, the medical device manufacturer Guidant claimed trade secret protection for the prices its customers have actually paid for devices. The settlements leave unanswered whether such a claim is legally cognizable under the Uniform Trade Secrets Act (UTSA). Prior to the UTSA’s adoption in most jurisdictions, the issue would have been decided under Section 757 of the First Restatement of Torts, which excludes ephemeral information, including transaction-specific sales price information, from the scope of trade secret protection. The uncertainty surrounding price secrecy in the UTSA context arises as an unintended consequence of a decision by the drafters of the UTSA to eliminate the common-law requirement that information be in continuous use in a business in order to qualify as a trade secret. Because the UTSA was intended only to codify and not to expand the scope of the common law of trade secrets, and because many courts deciding cases under the UTSA read the statutory definition of trade secret to be coextensive with the definition from Section 757, the Restatement’s requirement of non-ephemerality should be retained by courts when they evaluate the proprietary nature of price-paid information. This is consistent with both the purpose of the UTSA and the policies underlying trade secret protection. Just as importantly, preventing device manufacturers from propertizing prices preserves fair competition in the health care industry, where escalating prices are contributing to a national crisis.


The Search Engine Advertising Market: Lucrative Space or Trademark Liability?
 
Citation:
17 Tex. Intell. Prop. L.J. 223 (2009)
 
Author:
Jonathan J. Darrow & Gerald R. Ferrera
 
About:
Jonathan Darrow is Assistant Professor of Business Law at Plymouth State University. Professor Darrow is an L.L.M. candidate, 2009, of Harvard University. He received his J.D. from Duke University, his M.B.A from Boston College, and his B.S. from Cornell University.

Gerald Ferrera is the Gregory H. Adamian Professor of Law at Bentley College. Professor Ferrera serves as Executive Director of the Bentley Global Cyberlaw Center and received his J.D. from the New England School of Law, his M.S.T. from Bentley College, and his B.S. from Boston College.
 
Abstract:
Internet search engines such as Google are a modern tool that consumers can use to efficiently find the products and services that they seek. Trademarks have served this same function for consumers long before the advent of the Internet. But trademark law and Internet search engines can conflict with each other, as demonstrated in 2007 when American Airlines sued Google over its AdWords program, which allows advertisers to target advertisements to search engine users based on keywords entered by users into the Google search engine—including keywords that are other parties’ trademarked terms. This Article proposes that the underlying goals of trademark law, including the protection of consumers and the promotion of a fair and freely competitive market, should guide the resolution of the search engine advertising debate. This Article also explains how the initial interest confusion doctrine has been overextended in the Internet context and posits a critical flaw in the seminal initial interest confusion case of Brookfield Communications v. West Coast Entertainment, and distinguishes search engine advertising from other online uses of trademarks, including metatags, pop-up advertisements, and domain names. The Article concludes with recommendations for search engines and litigants, and advocates for the judicial and legislative encouragement of search engine advertising while maintaining a watchful eye to guard against consumer confusion.


Global Warming Trend? The Creeping Indulgence of Fair Use in International Copyright Law
 
Citation:
17 Tex. Intell. Prop. L.J. 267 (2009)
 
Author:
Richard J. Peltz
 
About:
Richard Peltz is Professor of Law at William H. Bowen School of Law, University of Arkansas at Little Rock. He received his J.D. from Duke University in 1995. He was previously an attorney with Venable, Baetjer & Howard in Baltimore.
 
Abstract:
In her 2000 article Toward an International Fair Use Doctrine, Professor Ruth Okediji hypothesized that the internationalization of copyright law would threaten the freedom of expression if some doctrine akin to U.S. fair use were not established as an international legal norm. Acknowledging the central concern of the Okediji article, this Article analyzes research and legal developments since that article to determine how the present state of the “fair use” concept in international copyright law differs from its state in 2000. The Article concludes that in the last eight years, although there has been no formal adoption of an international fair use doctrine, the concept has escaped its disfavored status as a U.S. peculiarity and achieved some traction in international legal circles.


Plain Language Patents
 
Citation:
17 Tex. Intell. Prop. L.J. 289 (2009)
 
Author:
Robin Feldman
 
About:
Professor of Law, Director, Law & Bioscience Project, U.C. Hastings College of the Law.
 
Abstract:
Nowhere is the process of interpretation more difficult than where law and science interact in the form of drafting and interpreting patents. The multitude of unfamiliar terms and concepts exacerbates the problems inherent in developing appropriate legal doctrines to encourage scientific innovation. Where the legal system must interact with science in this challenging manner, we should move towards speaking in a common language, one that will be susceptible to the process of interpretation and adaptation that is essential to law. Whenever possible, we should avoid the creation of languages and forums that are insulated from the common discourse.


If You Ain’t Cheating You Ain’t Trying: “Spygate” and the Legal Implications of Trying Too Hard
 
Citation:
17 Tex. Intell. Prop. L.J. 305 (2009)
 
Author:
Samuel J. Horovitz
 
About:
J.D., 2008, University of Florida Levin College of Law; B.S. in Journalism, 2005, University of Florida.
 
Abstract:
“Spygate”—the popular name (with the obligatory suffix “gate” that is socially required of all conspiracy nicknames) for the Patriots’ week-one cheating scandal involving the use of video-recording equipment to try to steal play signals from the New York Jets—had not only earned the Patriots enough negative karma to ensure a to-be-determined loss of the most grueling proportions, but it had also cast a shadow of doubt upon the team’s prior accomplishments: a dynasty that included three Super Bowl victories in the span of less than a decade. As the facts of the scandal unfold, the Patriots will certainly be required to defend their actions in the court of public opinion. Focusing on trade secret jurisprudence, this Article examines the extent to which the team might also be required to defend those actions in a court of law.


Issue 3 - Spring 2009


Conditions and Covenants in License Contracts: Tales from a Test of the Artistic License
 
Citation:
17 Tex. Intell. Prop. L. J. 335 (2009)
 
Author:
Robert W. Gomulkiewicz
 
About:
Professor of Law and Co-Director, Intellectual Property Law & Policy Graduate Program, University of Washington School of Law. Washington Law Foundation Scholar. 2008–09 Visiting Scholar, Oxford University.
 
Abstract:
The Federal Circuit upheld the Artistic License in Jacobsen v. Katzer, establishing at long last that open source licenses are enforceable. Although that outcome received most of the headlines, the case’s greater significance lies elsewhere. Jacobsen v. Katzer teaches valuable lessons about conditions and covenants in license contracts, lessons that apply to licenses of all persuasions. Moreover, the case raises an important question about the interplay between contract and intellectual property law: Can licensors manipulate the distinction between covenants and conditions in such a way that upsets the delicate balance in copyright law? This article explores the lessons taught by Jacobsen v. Katzer and the open issue that it leaves, concluding with a proposal that supports the business model innovation characterized by open source licensing.


Finding a Foundation: Copyright and the Creative Act
 
Citation:
17 Tex. Intell. Prop. L. J. 363 (2009)
 
Author:
Darren Hudson Hick
 
About:
Darren Hudson Hick (Ph.D., University of Maryland) is Visiting Professor of Philosophy at Bucknell University.
 
Abstract:
Approaches to grounding the “right” of copyright come in a variety of forms. In the United States, two views dominate the field, both historically and theoretically: copyright as a natural right and copyright as a positive instrumental right. The first is typically framed in terms of Lockean property rights and the second in terms of a state-sanctioned monopoly stemming from the U.S. Constitution. In this paper, I outline these two views and show why each ultimately fails to adequately ground our notion of copyright, for reasons both internal and external to each theory. Having shown that the right to copyright, as we traditionally understand it, cannot be supported by these theories, I sketch my own view of copyright as a creative right and then consider some reasonable and probable responses to this view.


Inequitable Conduct: Shifting Standards for Patent Applicants, Prosecutors, and Litigators
 
Citation:
17 Tex. Intell. Prop. L. J. 385 (2009)
 
Author:
Kate McElhone, Ph.D.
 
About:
Dr. McElhone is currently serving as a Law Clerk to the Honorable Jeffrey T. Miller, United States District Court for the Southern District of California. She received her A.B. in Chemistry from Duke University and her Ph.D. in Organic Chemistry from the University of California, Berkeley. Prior to law school, Dr. McElhone performed pharmaceutical research, investigating potential therapeutics for psoriasis, Alzheimer’s Disease, and depression. She graduated from the University of San Diego School of Law, magna cum laude, in 2008.
 
Abstract:
Despite earlier attempts by the Federal Circuit and the PTO to rein in claims of inequitable conduct by alleged patent infringers, in recent years, courts have relaxed the doctrine’s standard, leading to a resurgence in the defense’s vitality. At the same time, the PTO has proposed strict requirements for how applicants must meet their duty of disclosure, which in some ways conflict with judicial standards. The constantly shifting standards leave applicants, litigators, and courts with great uncertainty, especially since a patent may be evaluated based on a standard in place at the time of litigation—perhaps a decade or more after its prosecution. To support a strong, reliable patent system, Congress, the courts, and the PTO must work together to define a clear, predictable standard for inequitable conduct.


Of Mice and Men: Why an Anticommons Has Not Emerged in Biotechnological Research
 
Citation:
17 Tex. Intell. Prop. L. J. 413 (2009)
 
Author:
Chester J. Shiu
 
About:
J.D., conferral expected May 2009, The University of Texas School of Law; M.S., 2006, Biomedical Informatics, Stanford University School of Medicine; and B.S., 2005, Biomedical Computation—Cellular/Molecular Track, Stanford University. Before attending law school Chester Shiu performed research in molecular dynamics, bioinformatics, and oncology.
 
Abstract:
In 1998 Michael Heller and Rebecca Eisenberg posited that excessive patenting of fundamental biomedical innovations might create a “tragedy of the anticommons.” A decade later, their dire predictions have not come to pass, an outcome which calls much of the legal scholarship on the topic into question. This Article proposes that legal commentators’ theoretical arguments have largely ignored two very important factors. First, the National Institutes of Health (NIH)—the single most important actor in the biomedical research industry—has played an active role in keeping the biomedical research domain open. In particular, regardless of what the current patent regime may theoretically permit, the NIH has, with great success, actively opposed the formation of a biomedical anticommons by exercising its dominant market power in the biomedical research arena. Thus, any reasonable assessment of biomedical innovation must account for both the current patent regime and the NIH’s proactive role, something that has not yet been attempted. Second, biomedical discoveries vary in their ability to affect downstream research. This Article undertakes a categorization of biomedical innovations into technically sensible groups and considers the anticommons potential for each. The net result of this categorization is that the majority of biomedical patents are very limited in how they can affect downstream research, and therefore their ability to contribute towards an anticommons thicket is minimal. In short, this Article advances two observations that help explain why a biomedical anticommons has not been observed: active opposition by the NIH and commentators’ misreading of the downstream blocking potential of many biomedical patents.


 
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