The Forum's Articles section publishes scholarly, in-depth analyses of specific topics in intellectual property and technology law from law students, professors, practicing attorneys or judges and other professionals.
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"Articles" are © the date of publication by their respective authors, and are published by the Forum under license.
January 10, 2006
- Michael Fuller, "Fair Use" Trumps Likelihood of Confusion in Trademark Law - The Supreme Court Rules in KP Permanent v. Lasting Impression, 2006 B.C. Intell. Prop. & Tech. F. 011001
The Supreme Court recently held in KP Permanent v. Lasting Impression that an alleged trademark infringer relying on the “fair use” defense need not disprove the existence of consumer confusion. This paper examines the cases leading up to the KP Permanent decision, analyzes the factual and procedural history, and considers potential fallout from the Court’s decision. The author proposes a new test to determine whether a junior user's descriptive use of trademark is in fact "fair use."
November 5, 2005
- Sue Ann Mota, "For Limited Times": The Supreme Court Finds the Copyright Term Extension Act Constitutional in Eldred v. Ashcroft, But When Does It End?, 2005 B.C. Intell. Prop. & Tech. F. 110501
While the World Trade Organization's TRIPS agreement sets a minimum copyright term of author's life plus fifty years, both the U.S. and the E.U. have copyright terms longer than the global minimum for the WTO's members. The U.S. Congress in 1998 passed the Copyright Term Extension Act, which lengthened the copyright term by twenty years, to the author's life plus seventy years, or ninety-five years from creation or 125 years from publication, whichever comes first. The Supreme Court upheld this extension in 2003 in Eldred v. Ashcroft, but this author questions if Congress will again extend the copyright term, and if so, when does "for limited times" end?
November 3, 2005
- Michael Goldstein, Google's Literary Quest in Peril, 2005 B.C. Intell. Prop. & Tech. F. 110301
On September 20, 2005, The Author's Guild, an organization that represents over 8,000 writers, filed suit against Google's 'Google Print' project for copyright violation. The Author's Guild alleges violation of its exclusive reproduction, distribution and public display rights in the Google Print project to make books available for search on the internet. This article covers arguments for both sides.
September 30, 2005
- Aaron Miller, Repairing the Bayh-Dole Act: A Proposal for Restoring Non-Profit Access to University Science, 2005 B.C. Intell. Prop. & Tech. F. 093001
The U.S. Congress passed the Bayh-Dole Act in 1980 to allow recipients of federal funds, regardless of their for-profit or non-profit status, to patent their inventions. Universities have proven eager to patent their scientists' discoveries and in some cases have licensed them out for substantial amounts of money.
In 2002 the Court of Appeals of the Federal Circuit held in Madey vs. Duke University that the "experimental use" defense to patent infringement did not apply to most university research. This was partly because universities, having entered the patenting and licensing business, had started to look like commercial actors.
With schools patenting their best work, and a near-dead experimental use defense, academic scientists face serious obstacles to building on each other's discoveries for the advancement of science. This article suggests a scheme for restoring non-profit scientists' access to this lost "scientific commons" without hurting the interests of patent holders.
March 29, 2005
- Margo E. K. Reder, P2P File-Sharing: What the Supreme Court Has an Opportunity to Consider, 2005 B.C. Intell. Prop. & Tech. F. 032901
When the United States Supreme Court hears Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd. (04-480) on March 29th, it has an opportunity to consider for the first time, the rights, responsibilities and liabilities of p2p network creators and their users, the content industry, and ISPs. Over 25 of the world’s largest entertainment conglomerates joined together in petitioning the Supreme Court for a grant of certiorari. Petitioners characterize this case as "one of the most important copyright cases ever to reach this Court. Resolution of the question presented here will largely determine the value, indeed the very significance, of copyright in the digital era." Respondents agree that the stakes are considerable, observing that this "case raises a question of critical importance at the border between copyright and innovation: when should distributors of p2p software a multi-purpose tool be held liable for infringements that may be committed by end-users of the tool?"
June 8, 2004
- Lynette Paczkowski, The Best Offense Is a Good Defense: How the Washington Redskins Overcame Challenges to their Registered Trademarks, 2004 B.C. Intell. Prop. & Tech. F. 060803
A group of Native Americans brought suit against Pro-Football, the corporate owners of the Washington Redskins, alleging that the marks associated with the Redskins were offensive, disparaging, and scandalous. The TTAB held against the Petitioners on the scandalous claim, but held that the marks were disparaging and should be canceled in due course. The US District Court for the District of Columbia reversed this decision, finding that it was not supported by substantial evidence and was also precluded by the doctrine of laches. This article explores the initial TTAB decision, as well as its reversal by the district court, and also presents alternative viewpoints and hypothesizes a different standard under which to analyze disparagement claims.
June 8, 2004
- Tan Pham, Been Deep Linked? Apparent authority Might Link You To Liability, 2004 B.C. Intell. Prop. & Tech. F. 060802
Trademark law has not answered in detail the question of deep linking and trademark infringement. What may even become more of a problem to website owners is the notion of apparent authority from agency law. This article will discuss the interplay between the developing field of internet law in relation to agency law.
June 8, 2004
- John C. Hughs, The Disruption of the U.S. Constitutional Symmetry of Intellectual Property to Gain Conformity with an International Property Framework; A Road to a Global Market or a Tripping Point to the Gradual Collapse of the U.S. Economy?, 2004 B.C. Intell. Prop. & Tech. F. 060801
There is an ancient and true symmetrical balance between the independent inventor and the government that produces technological advancement. During the dark ages of Europe the Saracens of North Africa and Arabia lived in the light of freedom that produced technological advancement. To advance the production of technological advancement beyond the Saracens, the U.S. Constitution struck the proper balance between the independent inventor and the government. These constitutionally protected intellectual property rights have a substantial impact on the U.S. economy. An international intellectual property law framework has arisen that is now used as the template for U.S. intellectual property laws in place of the U.S. Constitution.
Does the AIPA of 1999 maintain or further destroy the precise patent law symmetry with the independent inventor, the University and the Small Business?
The legislative history behind the AIPA is most disturbing. The legislation was not composed or passed on behalf of the American people but rather it was pushed in a clandestine and unlawful fashion through U.S. Congress by an unrevealed force. The 17-year term was patched but not properly restored from the damage done to it by replacing it with a 20-year floating term in 1995. The new reexamination changes ostensibly help the quality of patents but are probably unnecessary. The right of first refusal defense was limited to the business methods patents.
Finally, the 18-month Pre-grant publication of all foreign-filed patents is direct evidence that the Patent Cooperation Treaty now takes precedence above the U.S. Constitution in the mind of the U.S. Congress.
The solution is to return to the U.S. Constitution and to ignore and obviate the international pressure to conform the quality of U.S. Patents down to third world standards. Foreign corporations and large multinational corporations are being permitted to break the social contract between the American people and the U.S. government with the force of the U.S. Congress. The consequence of this fissure may have forever crossed the tripping point to the gradual, yet progressive collapse of the U.S. economy.
October 31, 2003
- Jeremy T. Marr, Foreseeability as a Bar to the Doctrine of Equivalents, 2003 B.C. Intell. Prop. & Tech. F. 103101
The common-law doctrine of equivalents extends a patent's protection to cover certain similar devices that do not literally infringe on the patent's claims. Broad application of this doctrine can, however, create uncertainty as to how substantial an improvement a competitor must make to avoid non-literal infringement. This uncertainty can chill innovation by exposing the would-be improver to potential liability for infringement under a claim of equivalency. The courts created another rule, prosecution history estoppel, to cabin the expansion of protection provided by the doctrine of equivalents. Prosecution history estoppel prevents a patentee from claiming the equivalents that it surrendered during the prosecution of its patent. Both the U.S. Court of Appeals for the Federal Circuit and the U.S. Supreme Court have grappled with articulating the factual situations in which a patent's specification and prosecution history precludes the added protection afforded by the doctrine of equivalents. Several opinions in these cases suggest that a patentee should not be able to invoke the doctrine of equivalents to obtain protection from equivalents that one skilled in the art would have reasonably foreseen before the patent issued. This paper examines a series of cases related to the applicability of foreseeability to the doctrine of equivalents. It then attempts to synthesize the current state of the law in the area, and analyzes arguments for and against adopting a foreseeability rule.
March 31, 2003
- Miree Kim, Narrowing the Definition of an Interactive Service Provider under § 230 of the Communications Decency Act, 2003 B.C. Intell. Prop. & Tech. F. 033102
November 18, 2002
- R. Jonas Geissler, For Sale Signs in Cyberspace: Whether Federal Rule of Evidence 408 should be adapted to the Uniform Dispute Resolution Policy for Internet domain names to bar evidence of offers to settle from arbitration proceedings, 2002 B.C. Intell. Prop. & Tech. F. 111801
November 27, 2001
- Xavier Beltran, WHAT A LOCAL INTERNET COMPANY CAN DO ABOUT LEGAL UNCERTAINTY IN CYBERSPACE: A Policy Proposal on How To Deal with the International Jurisdictional, Judgment Enforcement, and Conflict of Law Problems Posed By the Internet, 2001 B.C. Intell. Prop. & Tech. F. 112701
Jurisdictional quandaries over what laws govern international Internet transactions and/or interactions and which can/should be effectively enforced remain uncertain. While some legal certainty in Internet business transactions is available through internationally enforceable forum-selection and choice of law agreements between contracting parties, there is no such certainty when international disputes arise outside of a contractual context. This paper first focuses specifically on what domestic internet companies should know about jurisdiction, enforcement of judgments, and conflict of law issues in cyberspace when a dispute arises outside of the contractual sphere. Second, it will suggest a way to think about law and cyberspace that may be better suited for the task of overcoming the legal uncertainty in cyberspace created by its current jurisdictional, conflict of law, and enforcement of judgments problems. Next, this presentation will brainstorm on how such a theory of approaching governance in cyberspace would work. Then, in section five, this presentation will suggest a policy proposal on how such an approach could be brought down to earth and made a reality. Lastly, in section six, the proposed policy will be applied to a hypothetical example (dealing with content regulation) in which the merits of the proposal’s ability to overcome the jurisdictional, enforcement of judgments, and conflict of law problems posed by the Internet today will be assessed.
November 13, 2001
- Robert V. Donahoe, Does Intermediate Copying of Computer Software for the Purpose of Reverse Engineering a Non-Infringing Product Infringe the Copyright in the Software?, 2001 B.C. Intell. Prop. & Tech. F. 111301
The process of decompiling the object code and using the source code to develop a compatible product is referred to as reverse engineering and may involve repeated copying of the copyrighted computer program. These copies are referred to as intermediate copies because the protected expression contained therein does not appear in the finished product. Software developers have successfully applied the affirmative defense of fair use to defeat claims that this intermediate copying violated the owner’s copyright in the computer programmer. Courts have found the equitable nature of the fair use defense useful in analyzing claims of computer program copyright infringement because the functional elements are unintelligible unless the object code is decompiled. In Sony v. Connectix, 203 F.3d 596 (9th Cir. 2000), the Ninth Circuit applied the fair use doctrine to further expand the ability of computer software developers to legally make intermediate copies of computer software for the purpose of developing non-infringing products. This memo analyzes the recent Connectix decision and the Sega decision to try and determine the boundaries of the fair use doctrine when applied to the intermediate copying of computer software for the purposes of reverse engineering. The memo concludes that Ninth Circuit’s reasoning supports intermediate copying as fair use where it is necessary and results in a final product that is transformative.November 5, 2000
- Sarah E. Akhtar and Robert C. Cumbow, WHY DOMAIN NAMES ARE NOT GENERIC: An Analysis of Why Domain Names Incorporating Generic Terms Are Entitled to Trademark Protection, 2000 B.C. Intell. Prop. & Tech. F. 110501
As the Internet continues to become an everyday part of people's lives, its widespread use is giving rise to complex and novel legal issues. In particular, trademark law is evolving to meet the rapid pace of the Internet. The legal community is currently analyzing traditional trademark legal principles to determine whether those principles sufficiently address the issues arising in today's high tech society. While the USPTO follows traditional trademark law for determining whether any trademark can obtain federal registration, "domain named" companies are provoking much discussion. Under traditional trademark principles, the current policy of the USPTO is to deny registration to a mark consisting of a generic term followed by a Top-Level Domain extension ("TLD"). This paper explores the proposition that domain names consisting of arguably generic terms followed by a TLD are still distinctive; therefore, they should still obtain and enjoy some level of trademark protection.January 28, 2000
- James G. Silva, Esq., Copyright Protection Of Biotechnology Works: Into The Dustbin Of History?, 2000 B.C. Intell. Prop. & Tech. F. 012801
Starting in the early 1980s, and ending in the very beginning of the 1990s, a number of scholarly commentators proposed that biotechnology works are proper subject matter for copyright protection. Typically, these commentators focused on the idea that DNA sequences may be copyrightable works of authorship. Many commentators argued that copyrighting biotechnology might be a good idea because it would allow protection of works that would not qualify for patent protection. This article explains the legal reasons why copyright protection for biotechnology works is either impermissible or of severely limited scope. In particular, this article will present the illustrative issue of copyright protection for DNA sequences engineered by scientists.
July 1, 1999
- Adam White Scoville, Clear Signatures, Obscure Signs, 1999 B.C. Intell. Prop. & Tech. F. 070101, 17 Cardozo Arts & Ent. L.J. 345
From Utah to the United Nations, dozens of diverse bodies have undertaken the frenzied drafting of digital signature legislation and certificate authority regulation. This article questions the predicate of these efforts: the assumption that current law presents, at best, uncertainties or, at worst, outright barriers to the use of electronic records and signatures. First, the article attempts to explain in layman's terms the technical foundations of electronic authentication and offer examples of pitfalls produced by existing law or ill-formed regulation. The common law treatment of signatures in electronic communications is analyzed, from the informal to the ultra-secure, to gauge the extent of legal uncertainty or conflict and identify crucial technological and policy issues that face the drafters of digital signature legislation. In the second half of the article, enacted and proposed state statutes, uniform and model laws on the national and international level, and federal legislation touching on electronic signatures are evaluated in terms of their ability to address the concerns so identified. Above all, these proposals are audited in light of the need that legislation be narrowly tailored to address demonstrated legal needs and obstacles, and the concern that these statutes grant no greater legal status than is appropriate to the actual security and reliability of the technologies at issue. This Article is published simultaneously by the Forum and the Cardozo Arts & Entertainment Law Journal. Also available in PDF format.
June 4, 1999
- Mark E. Harrington, On-line Copyright Infringement Liability for Internet Service Providers: Context, Cases & Recently Enacted Legislation, 1999 B.C. Intell. Prop. & Tech. F. 060401
The issue of on-line copyright infringement has been around since the use of the Internet started to expand rapidly in the early 1990's and has been the subject of extensive federal executive branch activities, court cases, and Congressional action. In the closing days of the 105th Congress, President Clinton signed into law a bill that addressed this issue; Title II of the Digital Millennium Copyright Act, the On-line Copyright Infringement Liability Limitation Act of 1998. This article analyzes the policy arguments, the court cases, and the legislative process that produced this law. Specifically, the article addresses: 1) the Clinton Administration's activities concerning this issue; 2) the statutory copyright law in general putting the specific issue of on-line copyright infringement liability in context by analyzing the five leading court cases in this area of law; 3) the policy arguments for and against the establishment of a limitation on copyright infringement liability for Internet Service Providers; and 4) why enacting this bill into law is a step in the right direction for the Internet.
May, 25 1999
- Mark D. Seltzer and Angela A. Burns, Criminal Consequences of Trade Secret Misappropriation: Does the Economic Espionage Act Insulate Trade Secrets from Theft and Render Civil Remedies Obsolete?, 1999 B.C. Intell. Prop. & Tech. F. 052501
The enactment of the Economic Espionage Act of 1996 was greeted with great fanfare as an unprecedented and broad federal attack on foreign and domestic trade secret misappropriation. Negligent, even inadvertent conversions of trade secrets seemed subject to criminal prosecution in the broad wake of the statute. Ultimately, however, the EEA is not a panacea for the victim of a trade secret misappropriation. A civil cause of action that seeks injunctive relief and economic compensation remains the preferred and, perhaps, the most effective method for a victim to achieve an expedited and comprehensive remedy. Indeed, United States v. Hsu, the single published opinion by a federal appellate court involving an EEA prosecution sends clear warning signals to American private industry of the perils of referring suspected trade secret misappropriation to the Department of Justice for criminal prosecution. The commencement of a federal criminal prosecution under the EEA may compel the disclosure of formerly confidential proprietary information to the defendant and defense counsel as part of discovery in the criminal case; the very same corporate secrets that the victim corporation sought to protect by making its referral to the Government. This article offers an analysis of the EEA and of the unintended perils which EEA criminal prosecution may hold for victims of trade secret theft, as well as a survey of federal EEA enforcement actions, and some indication of how to promote EEA compliance and guard against potential EEA violations.
April 8, 1999
- Scott L. Jones, A Safe Bet? State Control of Internet Gambling, 1999 B.C. Intell. Prop. & Tech. F. 040801
In this article, Scott L. Jones explores the current tensions that exist between Internet casinos and state gambling laws. The state of Colorado, which allows limited stakes gambling, is used as the test jurisdiction since its regulatory regime is both permissive of some practices and strictly prohibitory of others. The article examines the various solutions that have been proposed by the Internet gambling industry itself as well as the actions taken by Congress and the States' Attorneys General. Finally, Jones proposes a solution of international cooperation that will hopefully overcome the inherent limitations in the heretofore proposed solutions, allowing states to maintain their legitimate regulatory concerns while permitting Internet casinos to remain in operation.
October 11, 1998
- Michael B. Sapherstein, The Trademark Registrability of the Harley-Davidson Roar: A Multimedia Analysis, 1998 B.C. Intell. Prop. & Tech. F. 101101
On February 1, 1994, Harley-Davidson attempted to trademark the sound of its motorcycles. Michael B. Sapherstein here examines the question of whether a manufacturer can trademark the exhaust roar of its motor vehicle. This article features sound and graphics files so that the reader may compare the Harley exhaust roar and those of competitors' similar bikes.
April 24, 1998
- Maxim Voltchenko, Itar-Tass Russian News Agency v. Russian Kurier: Federal District Court Applies the Berne Convention, United States and Russian Copyright Laws to Prevent Piracy in Mass Media, 1998 B.C. Intell. Prop. & Tech. F. 042401
Itar-Tass News Agency v. Russian Kurier, decided in 1997, is a case interesting not only for its application of the Berne Convention and U.S. copyright law to an unusual fact-pattern, but also because it extensively discusses and applies new Russian copyright law. In this article, Maxim Voltchenko argues that despite the decision's imperfections, it nevertheless set an important precedent in fighting piracy in the international context.
March 11, 1998
- Steven M. Chernoff, Svyazinvest: A Failed Attempt at Creating a Big Contender, 1998 B.C. Intell. Prop. & Tech. F. 031102
In this article, Steven M. Chernoff describes Russia's efforts at attracting foreign capital and competition to the long-monolithic telecommunications market. The article tells the story of Svyazinvest, the state telecommunications holding company that was intended for stimulating foreign investment and modernizing the country's outdated phone networks.
February 2, 1998
- Pamela R. O'Brien, Judicial Response: A Safe Harbor in the "Fair Use" Doctrine, 1998 B.C. Intell. Prop. & Tech. F. 020201
Despite the cries of some commentators that copyright law is dead (or at least that they wish it was), copyright law is fully capable of responding to the challenges posed by the new technologies of the digital revolution. Through examination of a detailed hypothetical situation, Pamela R. O'Brien considers the legislative and judicial roles in addressing the issues raised by multimedia presentations.
January 20, 1998
- Fred M. Greguras, Systems-on-a-Chip: Intellectual Property and Licensing Issues,1998 B.C. Intell. Prop. & Tech. F. 012002
There is an accelerating trend in the electronics industry toward implementing an entire electronic system on a single chip through the integration of multiple, reusable, virtual components including both digital and analog circuitry. These systems perform specific functions (i.e. digital signal processor graphics controllers) and are sometimes interchangeably referred to as intellectual property ("ip cores embedded" or "ip building blocks"). In this article, Fred M. Greguras discusses the trend toward such semiconductor systems and its important licensing implications.
January 14, 1998
- Adam White Scoville, Not Quite Cryptus Horribilis: 1997's Developments in the Encryption Debate Have Pushed Sides Further Apart, 1998 B.C. Intell. Prop. & Tech. F. 011401
In late 1997, at least six bills or amendments on the use of encryption were either introduced or circulated in draft form. Seven congressional committees considered encryption legislation. A clear trend is emerging from these developments. Law enforcement and national security interests favoring restrictions on encryption are quickly growing further apart from civil liberties groups and computer and telecommunications industry associations favoring liberalization of encryption rules. This article surveys the current landscape of the encryption debate, and analyzes the major legislative proposals. By identifying their major provisions and policy decisions rather than advocating a particular solution, this article attempts to be a resource for those involved in the ongoing encryption debate. In addition, Appendix A and Appendix B provide detailed tables for side-by-side substantive comparison of the major provisions of all principal legislative proposals for liberalizing or increasing, respectively, the regulation of encryption.
December 12, 1997
- Jennifer Mencken, A Design for the Copyright of Fashion, 1997 B.C. Intell. Prop. & Tech. F. 121201
Garment designs, since they lie along the fringe area of creative expressions that exhibit the same qualities as protected matter, remain unaddressed under copyright revision. In this article, Jennifer Mencken suggests that the traditional reasoning which denied certain articles copyright protection is no longer reasonable, and that protection should now be extended to garment designs. Further, this paper proposes solutions to the problems of implementing copyright for fashion and what effect copyright will have on the garment industry and consumers.
November 14, 1997
- Eric Senunas, The 1997 GATS Agreement on Basic Telecommunications: A Triumph For Multilateralism, or the Market?, 1997 B.C. Intell. Prop. & Tech. F. 111401
In this paper, Eric Senunas argues that while the 1997 GATT Agreement to liberalize telecommunications was a triumph, it was less a triumph for the multilateral system and the GATT, and more a triumph of the power and influence of the emerging information economy. The article analyzes the weaknesses of the Uruguay Round's Agreement on Services, and discusses the changes in the global marketplace for telecommunications that drove a majority of the world's governments to agree to liberalize an industry that had, until quite recently, remained the province of government-owned monopolies.
October 28, 1997
- Michael B. Sapherstein, Intelligent Agents and Copyright: Internet Technology Outpaces the Law...Again, 1997 B.C. Intell. Prop. & Tech. F. 102801
The issue of when -- or whether -- the viewing, retrieval, transmission, or transfer of copyrighted files, data, or images by use of the Internet constitutes infringement is sure to lie at the crux of numerous Internet-related copyright lawsuits in years to come. In this article, Michael B. Sapherstein explores the question of whether the retrieval of copyrighted computer files by an intelligent agent can be considered infringement by its owner, operator, or initiator, as well as the ancillary issues of contributory liability and liability of the agent's designer, programmer, and owner.
April 15, 1997
- Kristen J. Mathews, Misunderstanding RAM: Digital Embodiments and Copyright, 1997 B.C. Intell. Prop. & Tech. F. 041501
In the opinion of the United States federal courts, digital software embodied in a computer's Random Access Memory (RAM) is sufficiently fixed to constitute a "reproduction" under the Copyright Act. As a reproduction, the creation of the RAM embodiment, or the loading of software into RAM, is a potential copyright infringement. In this article, Kristen J. Mathews argues that a RAM embodiment is not sufficiently fixed to be a reproduction under the Copyright Act's definitions. [Student Author]
[Note: Some items formerly in the Articles Section have been moved to the Commentary Section as of 4/27/1999.]