By Christopher L. Kuyper
5 Shidler J. L. Com. & Tech. 14 (2009)
Intellectual Property
11/13/2009
Businesses that launch new products or services generally understand the risk of suits for patent infringement from competitors and other patent holders. Such risks are especially high when the first business ("commercializer") holds no patents on the product or service. However, commercializers that do have patents or patent applications covering their new product or service may be less aware of another lurking risk: a competitor or other party ("challenger") owning a separate patent application. In such a scenario, a challenger may provoke a patent interference proceeding to challenge the date of invention for the commercializer's patent or patent application. This Article explores these potential scenarios and analyzes limitations to a challenger's ability to aggressively provoke an interference proceeding.
By Riana Pfefferkorn
5 Shidler J.L. Com. & Tech. 2 (2008)
Intellectual Property
9/23/2008
“Trademark keying” is the practice of buying and selling trademarked terms as keywords in search engine advertising campaigns. In September 2006, a federal district court in Rescuecom Corp. v. Google, Inc. held that the practice does not constitute trademark use, a threshold criterion in a trademark infringement claim. Since Rescuecom, the focus of trademark keying litigation has shifted, giving some guidance to potential litigants. In addition, the U.S. Court of Appeals for the Second Circuit has diverged from other circuits. While federal courts within the Second Circuit have fashioned the emerging rule that an advertiser’s internal use of trademarked terms as search engine keywords, without more, is not a trademark use within the meaning of the Lanham Act, courts in other circuits have consistently held that such internal use does constitute trademark use. This Article evaluates the diverging lines of recent cases giving rise to these two approaches, explores what implications the split holds for potential litigants, and provides general guidelines for businesses wishing to avoid infringement claims for trademark keying.
by Karen Horowitz
4 Shidler J. L. Com. & Tech. 8 (2008)
Intellectual Property
2/25/2008
To date, the Recording Industry Association of America (RIAA) has become increasingly tough on the illegal downloading of copyrighted materials. In light of the increased prevalence of suits against minors or persons with little ability to pay, individuals or institutions that provide the means for the infringing activities, such as guardians or network owners (including, for example, the owner of an unsecured home network or the owner of an Internet café), need to be aware of the potential liability they might face. To place liability upon an individual or institution providing Internet access, a plaintiff could file suit for indirect copyright infringement under the doctrines of vicarious liability, contributory infringement, or inducement. Alternatively, to receive damages from the guardian of a minor child, the plaintiff could file suit against the minor child and attempt to satisfy any judgment from that claim through state parental liability statutes. This Article will discuss these approaches to liability and the risks facing these classes of actors.
by Jeffrey Bashaw
4 Shidler J. L. Com. & Tech. 7 (2007)
Intellectual Property
10/17/2007
In Aspex Eyewear v. Miracle Optics, a patent infringement claim was initially dismissed because the court found that the parties bringing suit, a patentee and a patent sub-licensee, lacked standing because although the patentee had given all substantial rights to a licensee, the sub-licensee’s license did not convey “all substantial rights.” Thus, neither party had “all substantial rights,” the traditional threshold test for patent licensee standing. While the Federal Circuit ultimately reversed and allowed the suit to go forward, the case demonstrates how the current patent standing rule only magnifies the expense of litigating an infringement suit by requiring additional resources for debating “all substantial rights.” This Article analyzes the current standing rules for licensees of intellectual property under the various federal intellectual property statutes. In general, exclusive licensees have standing to sue, either alone or by joining the licensor. Although the fundamental motivation for this rule is sound, the rule can be unnecessarily rigid as applied and can prevent licensing arrangements from reflecting the intent of the parties. This article will also analyze FRCP 19’s approach, which provides a more flexible and predictable rule.
by Shaobin Zhu
4 Shidler J. L. Com. & Tech. 4 (2007)
Intellectual Property
6/6/2007
Free/Open Source Software (“FOSS”) licenses generally give developers and users the freedom to run software for any purpose, to study and modify software, and to redistribute copies of either the original or the modified software without paying royalties to previous developers. The FOSS community is facing increasing threats from software patents, especially from entities outside the FOSS community. This Article discusses patent rights under FOSS licenses, including the GNU General Public License (“GPL”) 2.0 and draft 3.0, the Apache License and the Mozilla Public License (“MPL”). It also addresses how current GPL draft 3.0 attempts to reconcile the conflict between software freedom/innovation and patent protection, and to resolve the compatibility of GPL draft 3.0 with other FOSS licenses.
By Ari Okano
3 Shidler J. L. Com. & Tech. 13 (2007)
Intellectual Property
4/6/2007
Internet companies, libraries, and archives increasingly are digitizing literary information and providing access to digitized content through Internet search engines. This Article compares digital book search engines from Google, Yahoo!, Amazon.com, and MSN and highlights the different approaches to each of these models. In the fall of 2005, two copyright infringement lawsuits were filed against Google for their new search engine, Google Book Search. At issue in both lawsuits is a component of Google Book Search, Google’s Library Project, through which Google is digitizing the entire library content — including copyrighted material — of the University of Michigan library. This Article examines the limits of the fair use defense to copyright infringement in the Google cases to help establish what is permissible with respect to digitizing copyrighted materials and providing associated search features.