TIPLJ: Volume 11

Issue 1 – Fall 2002


Ending the Seventh Amendment Confusion: A Critical Analysis of the Right to a Jury Trial in Trademark Cases

Citation: 11 Tex. Intell. Prop. L.J. 1 (2002)

Author: Mark A. Thurmon

About: Assistant Professor of Law, University of Florida, Levin College of Law. This Article is dedicated to Louis T. Pirkey, my friend and mentor. I thank Sara Modi for her assistance with the early research for this Article. This project took me well outside the realm of intellectual property, my chosen field of study. I am enormously grateful for the feedback provided by leading scholars from the civil procedure and remedies fields. I owe a particular debt to Douglas Laycock for taking the time to help me through the Seventh Amendment thicket. Tom Cotter, Chris Slobogin, Thomas D. Rowe, Jr., Kenneth L. Port, Doug Rendleman, and Amy Mashburn also provided helpful feedback on earlier drafts. This project was aided by a summer research grant from the Levin College of Law.

Abstract: It is time to end the confusion surrounding the Seventh Amendment right to a jury trial in trademark cases. The first step toward clarity is to recognize that Dairy Queen was a damages case. The decision is entirely unremarkable within the context of trademark law because there never has been any controversy concerning the legal nature of the damages remedy. Dairy Queen provides no answer to the more difficult question of whether a claim for defendant’s profits is legal or equitable. To answer that question, and it must be answered to end the current confusion, one must go beyond Dairy Queen.

A careful Seventh Amendment analysis is needed to determine whether the profits remedy in trademark cases is legal or equitable. This analysis is complex because of the mixed legal and equitable history of the restitution theory (i.e., the defendant’s profits award is a form of restitution) and because the profits awards in early trademark cases were largely compensatory. In addition, significant changes in the nature of trademark actions may have altered the nature of the profits remedy. Yet, despite these difficulties, the analysis provided below suggests the profits remedy in trademark cases is an equitable remedy and does not create a right to a jury trial.


Interpreting Claim Preambles: An Analytic Framework

Citation: 11 Tex. Intell. Prop. L.J. 117 (2002)

Author: Stephen P. Koch

About: ExxonMobil Upstream Research Company, Houston, Texas.

Abstract: Prior commentary and most court opinions have tended to address claim preamble interpretations from a strict patent law perspective, relying on Kropa and its progeny for language referencing an invention’s properties, use, or structure to conclude whether or not a claim preamble was limiting. That approach has overlooked a fundamental aspect of claim interpretation—if, as is often stated, claim interpretation is to begin with the words themselves, the analysis must look at how the words are used in a grammatical sense, not merely at what the words may mean in a definitional sense. The approach argued herein, that the analysis of claim preambles must take into account both the inherent meanings of the words that are used and the grammatical manner in which they are used, provides this additional logical component to the preamble interpretation issue. Reliance on this approach provides a structure on which future courts, and the patent community, can more clearly, and more consistently, determine patent claim preamble significance.


Recent Developments in Copyright Law

Citation: 11 Tex. Intell. Prop. L.J. 163 (2002)

Author: Mark D. Perdue & Cory J. Feinberg

About: Mark D. Perdue received his BSME from University of Texas at Austin in 1988 and his JD 1991. He is a Shareholder at Zisman Law Firm, PC in Dallas, Texas. Cory J. Feinberg received his BA from the University of Kansas in 1998 and his JD from SMU in 2001. He is an Associate at Zisman Law Firm, PC in Dallas, Texas.

Abstract: This Article reports recent developments in copyright law by examining and reporting the cases published in the from August 2001 until and through July 2002. It errs on the side of inclusiveness, reporting whatever developments have occurred in the last year.

During this period, the “hackers’” first challenges to the anti-circumvention provisions of the Digital Millennium Copyright Act are reported in the cases of Russian software developer Dmitri Skylarov and DeCSS DVD decryption software (see Section VII).

Also, the Eleventh Circuit handed down its full ruling disposing of the preliminary injunction against the publication of “The Wind Done Gone” (see Section V), finding it likely to be a parodic fair use.

A number of cases also reflect the tension between “new-media” broadcasters (internet streamers and broadcasters) and the RIAA. This battle is just now taking shape on the judicial, legislative, and public-opinion fronts (see Section III.C).


Issue 2 – Winter 2003


The Race to Patent the Genome: Free Riders, Hold Ups, and the Future of Medical Breakthroughs

Citation: 11 Tex. Intell. Prop. L.J. 221 (2003)

Author: Laurie L. Hill

About: Associate, Morrison & Foerster, L.L.P., San Diego, California; J.D., 2002, University of Texas School of Law; Ph.D., Microbiology & Immunology, 1993, Thomas Jefferson University. The author thanks Jane Cohen for her many helpful insights and guidance with this Article and Bill Dow, Karen Dow, and Laurie Owen for their comments and suggestions.

Abstract: Human genes are a rich frontier for both scientific advancement and a young biotechnology industry. Gene patents stand at the crossroads between research and biotechnology with distinct incentives, economic realities, and ultimate goals. With these distinctions in mind, a reexamination of gene patents and consideration of modifications to the current system must be contemplated thoughtfully and thoroughly. Most importantly, if changes are to be made, now is the time. The social benefit of this wealth of new scientific knowledge must be balanced against the urge to own the genome for the sake of science, biotechnology, and, most importantly, the individual that medical progress will save.


The Best Patent Practice or Mere Compromise? A Review of the Current Draft of the Substantive Patent Law Treaty and a Proposal for a “First-To-Invent” Exception for Domestic Applicants

Citation: 11 Tex. Intell. Prop. L.J. 259 (2003)

Author: Toshiko Takenaka, Ph.D.

About: Toshiko Takenaka is an Associate Professor of Law and Director of Center for Advanced Study and Research on Intellectual Property (CASRIP) and Intellectual Property and Technology LL.M. Program at the University of Washington School of Law. She received an LL.B. from Seikei University, Tokyo in 1981 and an LL.M. and Ph.D. from the University of Washington in 1990 and 1992. I would like to thank Prof. Rochelle Dreyfuss at New York University School of Law and Mr. Stephen Kunin at the U.S. Patent and Trademark Office (USPTO) for their invaluable comments and helpful discussions, and my research assistants Ms. Mary Atkinson, Ms. Elaine Abeyta-Montoya and Mr. Joe Meara, for their editing on my several drafts.

Abstract: Accordingly, in Part I of this paper I review the past efforts of patent harmonization. In Part II, I review the current draft of the SPLT and compare its major articles with Title 35 of the United States Code, the European Patent Convention (EPC), and Japanese Patent Law (JPL). In Part III, I analyze the changes expected by the integration of the SPLT into U.S. patent practice and examine if such changes would result in the best patent practice. I propose that the best practice takes into account underlying patent policies in such instances in which the changes merely reflect a compromise with the European/Japanese practice. In particular, in Part III, I also argue that such changes brought about by the SPLT are marginal because the current U.S. system is, in reality, a first-to-file system with limited exceptions for first-to-invent priority. Implementation of the SPLT in the United States only requires removing that exception and introducing a simple, user-friendly system that is particularly beneficial to applicants with limited resources. However, all the legitimate benefits of and compelling policy reasons for a first-to-file system still may not convince die-hard first-to-invent advocates. Therefore, in Part IV, I propose maintaining an exception for use of the existing system and creation of a quasi-second tier system for patent protection. Such a system will give these first-to-invent advocates a chance to experience the acclaimed benefits of the first-to-file system while keeping first-to-invent options open until they are ready to completely convert to the first-to-file regime.


Recent Developments in Trademark Law: Elusive Dilution and Sorting the Resulting Confusion

Citation: 11 Tex. Intell. Prop. L.J. 351 (2003)

Author: Steve Meleen, Susan J. Hightower, & Martin Hernandez

About: The authors are attorneys at Fulbright & Jaworski, LLP.

Abstract: The past year was another active one for the trademark bar. Both courts and lawyers are sorting through the fallout from the two recent Supreme Court trade dress cases, and the Court has now decided its first case addressing the Federal Trademark Dilution Act of 1995 (FTDA). Dilution and trade dress issues continued to receive a lot of attention in addition to the regular steady flow of infringement cases. While the number of Internet cases may be declining, several important precedents were set this past year. This paper surveys these and other trademark-related topics handled by the courts in 2002.


Digital Millennium? Technological Protections for Copyright on the Internet

Citation: 11 Tex. Intell. Prop. L.J. 417 (2003)

Author: Brian Leubitz

About: Associate, Knobbe, Martens, Olsen, & Bear, L.L.P., San Francisco, California; J.D., 2003, University of Texas School of Law. Sidley, Austin, Brown, & Wood paper competition for 2002.

Abstract: The recording and movie industries estimate that they will lose a combined $7.5 billion in annual revenue due to piracy. If the solution to this problem must be congressionally compelled, all efforts should be made to avoid the incursion on fair use and privacy. Most importantly, it should be user-friendly. The proposals that are already in Congress clearly do not meet these standards. Not only do they limit fair use, but they also are seemingly designed to be difficult to use.

This Article has attempted to outline a solution that would provide reasonable accommodations for the fair-use doctrine, ease-of-use, and privacy, all while attempting to fairly compensate the copyright owner. However, every proposal has its problems. Congress needs to recognize that the hasty regulation of this field could irreparably damage the growth of the Internet. Congress and other regulating bodies need to appreciate the effects of their actions before resorting to regulation. This is particularly important with regard to the Internet. Technological changes can easily sweep away the benefits of regulation, leaving only costs. If we proceed with caution, America can find a reasonable solution that both accommodates as many viewpoints as possible and allows the Internet to continue to grow and prosper.


Issue 3 – Spring 2003


From Broadcast to Webcast: Copyright Law and Streaming Media

Citation: 11 Tex. Intell. Prop. L.J. 447 (2003)

Author: Matt Jackson

About: College of Communications, The Pennsylvania State University

Abstract: This Article examines the copyright issues facing streaming media and the statutory license fees established by the Librarian of Congress. The Article discusses the arcane requirements for digital performances, the controversy over how ephemeral RAM copies should be treated, and the current rulemaking on the statutory digital performance license. Streaming media face complex requirements detailing what constitutes a non-interactive transmission eligible for a statutory license under section 114 of the Copyright Act. Section 114 calls for a statutory license for the digital transmissions of sound recordings (digital performances) that meet certain eligibility requirements. In addition, section 112 provides for a statutory license for the ephemeral copies made in the course of those transmissions.

A Copyright Arbitration Royalty Panel (CARP) issued a report on February 20, 2002, recommending that different rates be adopted for Internet transmissions depending on whether the transmission is a simulcast by a terrestrial broadcaster or a “free standing” transmission. The fee was 7¢ per 100 performances for simulcasts and 14¢ per 100 performances for Internet-only transmissions. The Librarian of Congress rejected the rate for Internet-only transmissions and set the rate for all webcasts at 7¢ per 100 performances (non-CPB non-commercial broadcasters who transmit webcasts will pay a rate of 2¢ per 100 performances).

An analysis of the rate reveals that the section 114 license is significantly more expensive than the corresponding license for the underlying musical work (a ratio of 3.5 to 1 compared to a ratio of 1 to 1 in other countries). The new rate favors radio stations and large, established webcast aggregators over small, independent webcasters who would be better served by a percentage-of-revenue metric. The current law’s broadcasting exemption gives over-the-air radio an unfair advantage over webcasting. That exemption should be eliminated and future CARPs should be allowed to consider public interest objectives when setting the royalty rate. However, in the long run, the current rate may give less popular recording artists an opportunity to gain attention and reduce the power of the music oligopoly. Just as important, the current rate encourages new creative uses for streaming technology.


Recent Developments in Patent Law—Decisions by the U.S. Court of Appeals for the Federal Circuit

Citation: 11 Tex. Intell. Prop. L.J. 483 (2003)

Author: Gale R. Peterson & Derrick A. Pizarro

About: The authors are attorneys at Cox & Smith Incorporated, San Antonio, Texas.

Abstract: The year 2002 saw many significant developments in patent law. This Article presents a survey of those developments as they emerged through United States Supreme Court and Federal Circuit holdings. Prosecution history estoppel, the best mode requirement, and claim construction are some of the areas addressed by significant 2002 decisions.


Intellectual Property and Nanotechnology

Citation: 11 Tex. Intell. Prop. L.J. 649 (2003)

Author: Dr. Barry Newberger

About: Winstead Sechrest & Minick P.C.; B.S., Carnegie Mellon University; Ph.D., Princeton University; J.D., The University of Texas School of Law.

Abstract: Editor’s note: On February 28, 2003, The Journal hosted the Fourth Annual Intellectual Property Law Symposium. Dr. Newberger, an IP practitioner in all areas, has experience in preparing and prosecuting patents in areas such as carbon nanotechnology, fiber optic technology, field emission devices, and signal processing technology using wavelet transforms. The following is an edited transcript of Dr. Newberger’s presentation.

In summarizing, I have tried to convey a sense that nanotechnology is an emerging technology with exciting prospects for IP, in both the near term and for many years into the future. The importance of IP and securing IP rights are recognized by the players, and the mix of players—particularly the role of government sponsorship, combined with the ever present time and cost constraints—may shape strategies for protecting nanotechnology IP.