TIPLJ: Volume 18

Issue 1 – Fall 2009


One Trademark Per Source

Citation: 18 Tex. Intell. Prop. L. J. 1 (2009)

Author: David W. Barnes

About: Distinguished Research Professor of Law at Seton Hall University.

Abstract: This article proposes and justifies a radical restructuring of trademark law limiting trademark protection to one mark per source, a “single signal” rule. It argues that the proper scope of trademark law requires emphasizing source-indicating function of trademarks and liberating the product-describing function. It suggests a program for minimizing the dislocation costs to consumers and suppliers that result from removing trademark protection from many famous marks.


So Long as You Live Under My Roof, You’ll Live by… Whose Rules?: Ending the Extraterritorial Application of Patent Law

Citation: 18 Tex. Intell. Prop. L. J. 55 (2009)

Author: Jacob A. Schroeder

About: J.D., The George Washington University Law School, May 2009; B.S., Computer Engineering, Purdue University, May 2005.

Abstract: Addresses, from an international law perspective, how intellectual property protection has changed and should continue to change in today’s globalized economy. Changes should ensure that incentives remain in place for inventors as the world shifts from independent national markets to the flourishing of international trade on the global marketplace.


Single-Firm Opportunism and the FTC’s Rambus Defeat: Implications for Section 2 of the Sherman Act

Citation: 18 Tex. Intell. Prop. L. J. 97 (2009)

Author: Christopher Hardee

About: Christopher Hardee is an Attorney in the Antitrust Division of the United States Department of Justice. J.D., 1994, Yale Law School. The views expressed here are solely those of the author and do not purport to reflect the views of the United States Department of Justice.

Abstract: This article explores the implications of the Rambus, Inc. v. FTC decision for SSO cases and attempts to outline a proper, limited role for antitrust enforcement against single-firm conduct involving breaches of contractual duties or vague ethical obligations.


Star Power in the Lone Star State: The Right of Publicity in Texas

Citation: 18 Tex. Intell. Prop. L. J. 123 (2009)

Author: Keith Jaasma

About: Of Counsel, Patterson & Sheridan, LLP. The author would like to thank Professor Paul Stancil of the College of Law at the University of Illinois, David Clark, Esq., and Jackob Ben-Ezra of the Texas Intellectual Property Law Journal for their invaluable assistance with substantive ideas and the editing of this article. This article is dedicated to my wife, Amy, and my children, Ella, Juliana, and Henry.

Abstract: This article discusses the elements of a right of publicity claim for both living and deceased individuals under Texas law, as well as issues regarding damages and attorneys’ fees, federal preemption, and sovereign immunity. In addition to detailing the current state of Texas law, this article suggests that the right of publicity should not be extended to business entities, that courts should be flexible in considering damages claims based on right of publicity violations, and that the right of publicity for the deceased terminates on the fiftieth anniversary of that individual’s death given the Texas Property Code’s clear statement that names or likenesses of individuals may be used for “any purpose” fifty years after that person’s death. Moreover, this article argues that courts applying Texas law should not follow the holding of the Ninth Circuit in White v. Samsung Electronics America, Inc., in which the court held that Vanna White’s “identity” had been appropriated by Samsung’s use of a robot with a blond wig in an advertisement featuring the “Wheel of Fortune” set, where it could not be argued reasonably that White was endorsing Samsung TVs. Lastly, this article suggests that courts should proceed with caution when analyzing whether commercial uses of photographs of the non-famous are used for the “value” associated with their images.


Issue 2 – Winter 2009


Collective Management of Music Copyright in the Digital Age: The Online Clearinghouse

Citation: 18 Tex. Intell. Prop. L. J. 195 (2010)

Author: Brian R. Day

About: J.D., The George Washington University Law School, Expected May 2010; B.A., University of San Diego, May 2007.

Abstract: On February 4, 2009, Senator Patrick Leahy introduced the The Performance Rights Act to the Senate, joined by Representative John Conyers in the House of Representatives. Thirty-eight years after sound recordings were first granted federal copyright protection against unauthorized reproduction and distribution, and more than ten years after gaining a limited digital performance right, legislation is pending that would once again expand the scope of sound recording copyright to encompass terrestrial radio broadcasts – broadcasts that have historically been exempt from sound recording performance royalties. The fighters in this brawl are sophisticated heavyweights. In one corner of the ring are record labels – an industry in distress, which has consistently struggled to adapt to the digital market. In the other are the broadcasters – a media behemoth whose cries of promotional compensation seem increasingly unconvincing in our digital world. Standing on the sidelines are music fans that rely more and more on digital performances, unknowingly thinning record label wallets, and perhaps stalling creativity, in the process. Instead of (or in addition to) seeking remuneration from terrestrial radio stations, this paper suggests that sound recording copyright holders should seek to further expand their digital performance right to permit collection of royalties from websites which regularly perform user-generated audiovisual works. In consideration for an annual blanket fee, these performance-based sites would be secure against DMCA notice-and-takedown proceedings and infringement actions from participating sound recording copyright owners. Such a compromise would permit sound recording copyright holders to receive just compensation for their works performed online, save sites like YouTube millions in administrative and legal fees, and permit users to freely and fairly post sound recordings online.


The State of the Patent Exhaustion Doctrine, Post-Quanta v. LG Electronics

Citation: 18 Tex. Intell. Prop. L. J. 237 (2010)

Author: Kyle Costello

About: J.D. Candidate, University of Wisconsin Law School, May 2010; B.S., Biological Sciences, Marquette University, May 2006. Recipient of the 2009 Foley & Lardner, LLP intellectual property writing competition grand prize.

Abstract: As it relates to the patent exhaustion doctrine, this article proposes a means to reconcile the Supreme Court’s Quanta v. LG Electronics decision with the prior Federal Circuit decision in Mallinckrodt, Inc. v. Medipart. It argues that contractual use restrictions on the sale of a patented article, which are reasonably related to the scope of the patent, can still be enforced through the patentee’s infringement action against a breaching purchaser.


Resolving Inequitable Conduct Claims Accordng to Kingsdown

Citation: 18 Tex. Intell. Prop. L. J. 269 (2010)

Author: Brett Thompsen

About: Candidate for J.D., The University of Texas School of Law, May 2010; B.S. Electrical Engineering, Northern Arizona University, May 2000.

Abstract: This Note investigates the varying standards that have been used for finding deceptive intent in inequitable conduct cases. The Federal Circuit sat en banc in Kingsdown Medical Consultants v. Hollister to hold that gross negligence alone is not enough to warrant an inference of deceptive intent. However, recent Federal Circuit cases have found deceptive intent where (1) highly material information was withheld; (2) the patentee knew of the information and knew or should have known of its materiality; and (3) the patentee has not provided a credible explanation for the withholding. This Note analyzes whether the first prong improperly conflates inequitable conduct’s two basic elements of materiality and intent, whether the second prong represents a negligence standard expressly overruled by Kingsdown, and whether the third prong improperly shifts the burden of proof to the patentee. In order to comply with Kingsdown, this Note suggests abandoning the three-prong test and adopting the more rigid test for deceptive intent used by the Federal Circuit panel in Star Scientific, Inc. v. R.J. Reynolds Tobacco Co.


Abolishing the Missing-Claim Rule for Judicial Cancellations

Citation: 18 Tex. Intell. Prop. L. J. 297 (2010)

Author: Ryan Vacca

About: Ryan Vacca is a Visiting Professor at the University of Denver College of Law.

Abstract: Section 37 of the Lanham Act vests courts with the power to order the Director of the U.S. Patent and Trademark Office (PTO) to cancel trademark registrations. This power to “rectify the register” is discretionary, and since the act’s enactment in 1946, courts have routinely granted cancellation requests when the trademark’s invalidity was established in the trial court proceedings. However, that is not always the outcome. Some courts refuse to exercise their power to rectify the register under section 37 even with a proven and valid basis for cancellation. This article examines cases where the district courts refused to cancel invalid trademarks even though a basis for cancellation had been established. In some cases, the appellate courts have reversed, holding that this was an abuse of discretion. In others, the Courts of Appeals have affirmed the refusal to cancel. Why the difference? The distinguishing fact appears to be that in cases where cancellation was ultimately ordered, the party seeking cancellation affirmatively sought cancellation via a cause of action—typically a counterclaim in an infringement suit. In cases where cancellation was ultimately rejected, the common theme seems to be that the party did not request cancellation as a claim, but instead requested cancellation as a remedy in a motion. This article takes a close look at the claim requirement and argues that not only should a party not have to file a claim, but also courts should exercise their section 37 cancellation powers sua sponte when a mark’s invalidity has already been proved. Additionally, on appeal, a failure to cancel under section 37 when invalidity has been established should be characterized as a per se abuse of discretion. These sensible proposals benefit the public by driving down producers’ costs and consumer prices and freeing up already overburdened administrative resources, while only placing a negligible burden on the courts, and they do not pose the same problems that typically cause objections to sua sponte action. Moreover, a sua sponte cancellation requirement will not require judges to engage in complex statutory interpretation. These proposals can easily be read consistently with section 37’s existing language. In Part II, I briefly introduce the trademark registration system and point out the benefits of registration to both trademark owners and the public. In Part III, I discuss the cancellation system for registered trademarks, including the two cancellation methods (before the Trademark Trial and Appeal Board (TTAB) and the courts), the grounds for cancellation, and the procedures for seeking cancellation before the TTAB. In Part IV, I review the case law where cancellation under section 37 was initially refused and explore why some refusals were affirmed while others were reversed—ultimately concluding that a failure to file a claim is the distinguishing factor. I further illustrate in this part why refusing to cancel the registration puts an additional burden on the litigant seeking cancellation, why the litigant may reasonably shirk this burden, and how this ultimately harms the public. Finally, in Part V, I explain the proposals discussed above, detailing how these proposals are more efficient, how they advance trademark law’s purpose, and how courts can easily implement them. Ultimately, I urge district courts to adopt a standard practice of ordering cancellation when the registered mark has been found invalid, and for the Courts of Appeals or Supreme Court to adopt a per se abuse of discretion standard for such a circumstance. Alternatively, Congress should amend section 37 to reflect these proposals.


Issue 3 – Spring 2010


Ramifications of Joint Infringement Theory on Emerging Technology Patents

Citation: 18 Tex. Intell. Prop. L. J. 335 (2010)

Author: W. Keith Robinson

About: Mr. Robinson is an associate with Foley & Lardner, L.L.P.

Abstract: Section II of this article discusses the Federal Circuit’s view of joint infringement theory as articulated in its two most recent opinions. Section III analyzes how district courts have applied the Federal Circuit’s holdings in BMC Resources and Muniauction. In addition, it highlights evidence that may be favorable to a successful assertion of infringement under a theory of joint infringement. Finally, Section IV examines how claims can be drafted to avoid reliance on joint infringement theory during litigation.


Differential Patent Terms and the Commercial Capacity of Innovation

Citation: 18 Tex. Intell. Prop. L. J. 373 (2010)

Author: Amir H. Khoury

About: Lecturer, Faculty of Law, Tel Aviv University. This article was written while I was a Cegla Fellow. My sincere thanks go to the Cegla Center for Interdisciplinary Research of the Law, Tel Aviv University. My thanks to Hanoch Dagan, Ariel Porat Michael Birnhack and Barak Atiram for their remarks and comments. Also, my thanks to Amit Itay, my research assistant, for his research input during the initial stages of this project and for reviewing the final draft of this research.

Abstract: “There is nothing magical about the length of a seventeen-or twenty-year term. Congress clearly has the power to change the term to any limited period of time, and alternatively could structure the patent term so that different types of patented subject matter had different patent lengths.”

During the past four decades much has been written, both in legal and economic literature, about the elements that should determine the scope of patent protection. While one segment of that research advances the view that patent rights (the patent breadth), in and of themselves are sufficient for attaining the optimal degree of socially-desirable patent protection, the other segment contends that the patent term (length) needs to be factored in. My research taps into this debate and emphasizes the need to discontinue the use of a single patent term for all types of patents. Specifically, I propose using a differential patent term, in which duration is contingent on the type of innovation and its underlying technology. Here, I resort to, among other things, the Strasbourg Agreement Concerning the International Patent Classification, a system of classification that can contribute towards applying the patent length factor in an efficient and relatively cheap manner.


Counterfeit Fashion: The Interplay Between Copyright and Trademark Law in Original Fashion Design and Designer Knockoffs

Citation: 18 Tex. Intell. Prop. L. J. 419 (2010)

Author: Kevin V. Tu

About: Attorney, Davis Wright Tremaine LLP, Seattle, Washington. This article reflects the views of the author and not necessarily of Davis Wright Tremaine LLP, its partners or its clients. The author would like to thank Professor Kate O’Neill, University of Washington School of Law, for her assistance during the infancy of this article. The author would also like to thank his wife, Carly Tu, for her unending love and support.

Abstract: The fashion and apparel industry is big business in both the United States and abroad. With the growth of the fashion industry and the role of the media in disseminating fashion commentary, public awareness about prominent fashion designers, and the creations of such designers is at an all-time high. The popularity and status attached to certain designers and their trademark designs, therefore, has led to the rise of “style piracy.” A style pirate will copy a designer’s original creative work to capitalize on the popularity or desirability of the product. The copying can occur in varying degrees, including attempts to pass off counterfeit copies as the original or the creation of “designer-inspired” products that seek to profit by giving the impression of relatedness to the original. Despite the potential loss of substantial revenue and exclusive control over the use of original designs facing designers, few legal rights exist to protect these valuable creative and economic interests from misuse by style pirates. Specifically, United States laws extend spotty legal protections, at best, against counterfeit and knockoff designs. The Copyright Act fails to provide adequate protection because its protection is generally limited to non-utilitarian designs. Thus, the inherent usefulness of apparel traditionally exists as a barrier to protection through copyright law. Given the shortcomings of copyright law, many designers have turned to trademark law and secondary meaning in trademarks as a means of circumventing the requirements of copyright law in order to defend against style pirates and achieve some modest level of design protection. Although trademark law has been extended to utilitarian items in some cases, only a small portion of designs will ever reach the level of recognition and notoriety required for this type of protection. The interplay of both copyright and trademark law in this area highlights (1) the fact that neither copyright law nor trademark law affords sufficient protection for the original designs of fashion designers and (2) the need for a more comprehensive plan for protecting creative but utilitarian works such as fashion designs. Based on the shortcomings of the copyright and trademark laws to provide adequate rights and remedies for fashion designers, this article argues that the copyright eligibility requirements should be extended to encompass the original and creative elements of fashion designs, such that the framework of copyright law, and not trademark law, becomes the primary method of design protection.


Paticularizing Patent Pleading: Pleading Patent Infringement in a Post-Twombly World

Citation: 18 Tex. Intell. Prop. L. J. 451 (2010)

Author: Jonathan L. Moore

About: Associate, Bowman and Brooke LLP, Richmond, Virginia. J.D., 2009, University of Richmond School of Law, summa cum laude. The author would like to thank Christopher Cotropia for his helpful comments and suggestions on this article.

Abstract: The Supreme Court’s recent jurisprudence has reinvigorated the role of pleading in civil litigation. As a result, in order to survive a motion to dismiss, plaintiffs must now include more detailed allegations that demonstrate a plausible entitlement to relief.

This article examines how these changes interact with the pleading requirements for patent infringement litigation. In recent years, the number of patent infringement lawsuits has increased dramatically, in part because of lax notice pleading requirements. This patent litigation explosion imposes exorbitant costs on defendants and has a detrimental effect on innovation.

As courts begin to apply the new plausibility pleading regime, this article argues that they should seize the opportunity to rein in abusive patent litigation by requiring particularized allegations of infringement. Adopting this regime effectuates Twombly and Iqbal, reduces the number of nuisance-value patent infringement suits, and begins to address the problems that cause the patent system to inhibit, rather than promote, progress in science and the useful arts.