TIPLJ: Volume 20

Issue 1 – Summer 2011


Strength of the International Trade Commission as a Patent Venue

Citation: 20 Tex. Intell. Prop. L.J. 1 (2011)

Author: Chistopher A. Cotropia

About: Professor of Law, Intellectual Property Institute, University of Richmond School of Law. This Article received a 2011 competitive grant from Samsung and Stanford Law School for scholarship in the area of patent remedies. Thanks go to Dawn-Marie Bey, Juliana Cofrancesco, Peter Lee, Karin Norton, and Rafael Pardo on an earlier draft.

Abstract: This Article reaches these conclusions by first, in Part I, describing the unique features of the ITC that make it a favored venue of patentees. Part II describes the Federal Circuit’s decision in Kyocera and the various postulates as to its impact. Part III describes the study, the specific data obtained, and the results. Part IV analyzes the results, looking at whether the predictions of Kyocera were true and what the data says about the ITC place in patent enforcement.


Ending Dilution Doublespeak: Reviving the Concept of Economic Harm in the Dilution Action

Citation: 20 Tex. Intell. Prop. L.J. 25 (2011)

Author: Alexander Dworkowitz

About: J.D. 2011, University of Pennsylvania Law School. The author would like to thank the staff of the Texas Intellectual Property Law Journal for the opportunity to publish and for their diligent work on the article.

Abstract: Part I describes five different theories of dilution. Part II examines cases decided after the passage of the TDRA and concludes that many judges have little sense of the theory of harm behind the dilution cause of action. Due to this confusion, some courts have found in favor of plaintiffs in dilution cases without articulating what harm the plaintiffs actually incurred. Part III examines the sources of the courts’ confusion, starting with Schechter’s vague conception of dilution. This Part focuses on the incentives of proponents of anti-dilution laws, noting that they have little reason to clarify the meaning of the doctrine. It also notes how the proponents of anti-dilution laws often use muddled language described as “doublespeak.” Part IV investigates the text and the legislative history of the statute, concluding that despite some lack of clarity in the dilution doctrine, the TDRA is rooted in a theory of protecting trademark owners from financial harm. Finally, Part V argues that courts should allow defendants to introduce evidence showing a lack of economic harm.


Modernizing Copyright Law

Citation: 20 Tex. Intell. Prop. L.J. 65 (2011)

Author: Miriam Bitton

About: 2010 Miriam Bitton, Associate Professor, Bar-Ilan University, Ramat-Gan, Israel; Visiting Assistant Professor, The Ohio State University Moritz College of Law. The author wishes to thank the following individuals for very helpful comments: Katya Assaf, Ann Bartow, Oren Bracha, Joshua A. Brook, Amy Cohen, Rebecca S. Eisenberg, Michael Froomkin, Jeanne Frommer, David Fagundes, Larry Garvin, Patrick Gudridge, Lital Helman, Robert Hillman, Scott Kieff, Jay Kesan, Roberta Kwall, Ed Lee, Mark Lemley, Emily M. Morris, Dotan Oliar, Sean Pager, Gideon Parchomovsky, Guy Rub, Ted M. Sichelman, Brenda Simon, Lior Zemer, and Diane Zimmerman. The author also wishes to thank seminar participants at the DePaul College of Law faculty seminar, University of Miami School of Law faculty seminar, the Ohio State University Moritz College of Law faculty seminar, the Bar-Ilan University Faculty of Law faculty seminar, the Columbus Intellectual Property Law Association March 2011 event, IP Theory Seminar at the Bar-Ilan University Faculty of Law, workshop participants of the 4th Annual Junior Scholars in IP Conference at Michigan State University (2011), conference participants at the WIPIP Conference, 2011(Boston University), and conference participants at the IP Scholars Conference, 2010 (UC Berkeley, Boalt Law). Last, but not least, many thanks are due to Reemon Silverman for excellent research assistance and very avid discussions.

Abstract: This Article offers a new perspective on the public domain problem, providing a better legal framework for modernizing copyright law and achieving openness while avoiding some (hopefully many) of the obstacles hindering previous frameworks. Previous proposals have attempted to address the contraction of the public domain by suggesting reforms that were either too narrow by virtue of their piecemeal approaches or too revolutionary in that they offered reforms that significantly departed from the current copyright framework in many ways. The framework offered in this Article attempts to mimic the modern creative environment because such an approach is more responsive to the needs and desires of the creative world while also remedying many of the ills of the current copyright system.

Building on the existing academic literature, this Article suggests that the rules concerning copyrightability should be modernized and designed on the basis of emerging practices. Based on these principles, the default rules concerning creative works would be reversed so that works will be subjected to what I call the “Gradual Dedication Model” (GDM). Under the proposed model, creative works would be dedicated gradually to the public domain, so that at first (GDM Phase 1) they would be owned by the public but at the same time would be subject to some use-restrictions for a set period of time. The use-restrictions would, in essence, reflect emerging practices of sharing for free. The only restrictions imposed would be a duty to attribute the work and a duty to similarly dedicate any derivative works under the GDM, while allowing copying, distribution, display, and public performance of the work, and derivative works based upon it, for both commercial and non-commercial purposes. After the set period of time, at GDM Phase 2, the work would be dedicated to the public domain with no strings attached, free for use by all with no use-restrictions.


No Bitin’ Allowed: A Hip-Hop Copying Paradigm for All of Us

Citation: 20 Tex. Intell. Prop. L.J. 115 (2011)

Author: Horace E. Anderson, Jr.

About: Associate Professor, Pace University School of Law. Many thanks to participants in the Akron University Law School IP Scholars Colloquium, the Fordham Law School Tri-State Region IP Workshop, and the Brooklyn Law School IP Law Colloquium, for insightful and useful comments. Big up to my Research Assistants: Douglas Doneson, Jeffrey Gorenstein, Anthony Iler, Asif Kumandan, Christopher O’Connor, Charles Scott, and Jeffrey Stewart.

Abstract: It is long past time to reform the Copyright Act. The law of copyright in the United States is at one of its periodic inflection points. In the past, major technological change and major shifts in the way copyrightable works were used have rightly led to major changes in the law. The invention of the printing press prompted the first codification of copyright. The popularity of the player piano contributed to a reevaluation of how musical works should be protected. The dawn of the computer age led to an explicit expansion of copyrightable subject matter to include computer programs. These are but a few examples of past inflection points; the current one demands a similar level of change. Today, owners of copyright face a world where digital technology has made it easy and cheap to reproduce, adapt, distribute, display, or perform the works of another. Equally important, a generation of users has grown up expecting to be able to freely usurp the traditional exclusive rights of the copyright owner. If the declining sales and audiences in the music, newspaper, and broadcast television industries tell us anything, it is that old legal paradigms regarding copying, and the business models built around them, are in jeopardy.


Issue 2 – Winter 2012


Res”Q”ing Patent Infringement Damages After ResQNet: The Dangers of Litigation Licenses as Evidence or a Reasonable Royalty

Citation: 20 Tex. Intell. Prop. L.J. 181 (2012)

Author: Layne S. Keele

About: Associate Professor of Law, Faulkner University’s Thomas Goode Jones School of Law. The author wishes to express his gratitude to Don Tiller and to Professors Mike DeBoer and Eric Voigt for their helpful insights and comments.

Abstract: Part 1 of this Article briefly recounts the history of patent damages and the development of the reasonable royalty as a damages standard. Part 2 examines the Federal Circuit’s precedent regarding litigation licenses and similar evidence in proving a reasonable royalty. Part 2 also explores the ResQNet decision, as well as several other recent Federal Circuit decisions clamping down on the evidence that can be used to prove a reasonable royalty. In addition, Part 2 explains the error that district courts commit when they view ResQNet as mandating the admission of litigation licenses and distills the ResQNet line of cases into a few paramount principles that the Federal Circuit applies in reviewing the evidence supporting reasonable royalty awards.

Because ResQNet does not mandate the admission of litigation licenses in reasonable royalty cases, admission of these licenses hinges largely on an analysis of the three Federal Rules of Evidence traditionally used to exclude litigation licenses–Rules 402 (relevance), 403 (balancing), and 408 (settlement agreements). Part 3 applies these rules to litigation licenses. Part 3 shows that Rule 402 is an improper basis for blanket exclusion, because litigation licenses are relevant to a reasonable royalty determination. For purposes of Rule 403 and Rule 408 (by extension of Rule 703), Part 3 examines the balance between the probative value of litigation licenses and their prejudicial effect. Part 3 also takes issue with the recent argument of one commentator that courts should admit litigation licenses while foreclosing discovery of related negotiations. Part 3 concludes that litigation licenses should be excluded from evidence in most cases.


The Power of Music: Applying First Amendment Scrutiny to Copyright Regulation of Internet Radio

Citation: 20 Tex. Intell. Prop. L.J. 233 (2012)

Author: Amanda Reid

About: Assistant Professor of Lawyering Process, Florida Coastal School of Law. J.D., University of Florida, Levin College of Law, 2004; Ph.D., University of Florida, College of Journalism and Communication, 2004; M.A., Florida State University, 1999; B.A., Florida State University, 1998. I am grateful for the thoughtful contributions of Michael Launer, Lucille Ponte, Christopher Roederer, and Jeffrey Schmitt. I also appreciate the able assistance of the TIPLJ editors. As always, any errors or deficiencies are entirely my responsibility.

Abstract: Part I of this Article discusses the intersection of copyright law and the First Amendment and provides an overview of the 2003 Eldred v. Ashcroft decision, where the Supreme Court declined to apply First Amendment scrutiny to the 1998 Sonny Bono Copyright Term Extension Act (CTEA). The Supreme Court’s most recent pronouncement on applying First Amendment scrutiny for copyright regulation is the logical starting point for the present discussion. While the Eldred decision provides a starting point for applying First Amendment scrutiny to copyright regulation, it does not decide the matter since the issue before the Eldred Court was the extension of the term rather than the scope of copyright protection.

Part II explores a growing body of literature documenting the power of music, from promoting the well-being of individuals to fostering reconciliation of cross-cultural disputes. The scholarship from these diverse disciplines underscores that the value of music extends beyond the private interests of the copyright holders. The current dialogue about the First Amendment interests affected by modern copyright law has not fully acknowledged the research that supports the unique communicative potential of music. Part II introduces this research into the legal literature.

Part III discusses Supreme Court jurisprudence that extends First Amendment protection to music, including a listener’s right to hear it and a speaker’s interest in playing it. Part IV traces the progression of copyright protection for music from its inception to the tangled mess of the royalty debate saga, including an explanation of the sound recording performance complement. This evolution of copyright protection informs the discussion of the “traditional contours” of copyright protection. Part V explores how the ever-expanding copyright protections have been used by incumbents to maintain market dominance without consideration of the First Amendment interests of listeners or Webcasters. And Part VI argues that current copyright regulations, which limit the number and arrangement of Webcasters’ playlists, fail First Amendment scrutiny.


Serious Flaw of Employee Invention Ownership Under the Bayh-Dole Act in Standford v. Roche: Finding the Missing Piece of the Puzzle in the German Employee Invention Act

Citation: 20 Tex. Intell. Prop. L.J. 281 (2012)

Author: Toshiko Takenaka

About: Washington Research Foundation/W. Simpson Professor of Technology Law, Director, Center for Advanced Study and Research on Intellectual Property (CASRIP), Director for Research, Law, Technology & Art Group, University of Washington School of Law. Visiting Professor, Waseda Law School, Tokyo, Japan. This paper is based on research that the author conducted in Germany at the Max Planck Institute for Intellectual Property and Competition Law in Munich and that research was supported by German Academic Exchange Services (Deutscher Akademischer Austasch Dienst: DAAD). The Author would like to thank the Munich Office of Boehmert & Boehmert for their generous support by providing office space and making their apartment available. She is particularly grateful for Prof. Heinz Goddar for the introduction of in-house counsels in the German industry. She is also grateful for Profs. Johann Adrian, Kurt Bartenbach, Theo Bodewig, Joseph Straus and all patent professionals and academics whom she interviewed for their comments on the German Employee Invention System. She is also grateful for invaluable comments provided by Profs. Sallie Stanford, Kathryn Watts and Michael Townsend, Mr. Clark Shores and Mr. Chuck Williams.

Abstract: This article argues that the current Bayh-Dole Act is incomplete because the Act fails to provide a mechanism for contractors to secure the ownership of federally funded inventions from their employees. Part I of this Article discusses this flaw in the current Bayh-Dole Act, highlighted by Stanford v. Roche, and argues that a historical accident resulted in this flaw due to Congress’s failure to pass a series of bills based on the German EIA. Passages in the Bayh-Dole Act suggest that the Act assumes a transfer by operation of law to secure the ownership of federally funded inventions through a mechanism provided by the German EIA based bills. Without such a mechanism, many federal funded inventions will fall outside of the Bayh-Dole Act if contractors fail to execute written assignments with inventors. Common law ownership rules do not provide any help to contractors because they can guarantee only non-transferable, royalty-free, nonexclusive licenses for the contractors. Many of the contractors, particularly universities, do not practice patents by themselves. Differing state laws and state legislative actions prevent assignment contracts between the contractors and their employee-inventors from securing the ownership of all federally funded inventions, thereby preventing the federal government from implementing a uniform policy.

In order to propose a mechanism for contractors to secure the ownership of federally funded inventions, Part II of this article examines a statutory model based on federal laws for handling inventions closely related to national security. These Acts provide an effective mechanism for securing rights in the ownership of inventions by operation of law. However, the increased administrative costs on both the United States Patent and Trademark Office (“USPTO”) and applicants would not justify adopting a similar mechanism for the Bayh-Dole Act.

Part III of this article examines the German EIA and compares it with the Bayh-Dole Act. Congress’s interest in the EIA resulted in the overall structure of Bayh-Dole Act sharing key features with the EIA and thus it should be easy for the Bayh-Dole Act to adopt an ownership transfer mechanism developed under the EIA. The comparison also reveals the lack of a mechanism in the current Bayh-Dole Act for protecting inventors’ rights to compensation when ownership is transferred to employers, although the Bayh-Dole Act does provide inventors a similar right to compensation.

Part IV of this article discusses which aspects of the German EIA should be adopted in the Bayh-Dole Act and how that adoption should take place. It will also propose adopting, from the EIA, a mechanism to protect inventors’ rights to compensation. Moreover, today’s university research environment makes it necessary for the federal government to apply the Bayh-Dole restrictions and conditions to federally funded inventions created by students and visiting researchers, regardless of employment status with the contractors. With just compensation through royalty sharing, the Bayh-Dole Act should be revised to allow contractors to secure the ownership of inventions from these nontraditional employees as long as their inventions resulted from federally funded research activities.



The Sine Qua Non of Copyright is Uniqueness, not Originality

Citation: 20 Tex. Intell. Prop. L.J. 327 (2012)

Author: Samson Vermont

About: Visiting Associate Professor of Law, U. Miami School of Law, svermont@law.miami.edu. For helpful comments, I am grateful to David Nimmer, Justin Hughes, Thomas Byron, Mark Lemley, TJ Chiang, Matt Sag, Rebecca Tushnet, Doug Lichtman, Michael Froomkin, and to participants at the Intellectual Property Scholars Conference, Depaul U. School of Law (Aug. 11, 2011). For helpful comments on an earlier, embryonic version, thanks goes to participants at the Works-In-Progress in Intellectual Property Colloquium, Boston U. School of Law (Feb. 12, 2011), and to participants at the Internal Speaker Series, U. Miami School of Law (Jan. 26, 2011).

Abstract: The 1976 Copyright Act limits copyright to “original works of authorship.” The Supreme Court tells us that originality is the sine qua non of copyright and that it has two components: independent creation by the author and a modicum of creativity. I argue that uniqueness is the true sine qua non of copyright and that the two components are rough heuristics for uniqueness. When we focus directly on uniqueness, many puzzles melt away. More melt away when we supplement uniqueness with a dominance principle, which limits protection for a work whose social value is due largely to inputs from parties other than the work’s author.


Issue 3 – Spring 2012


Are Intellectual Property Policies Subject to Collective Bargaining?

Citation: 20 Tex. Intell. Prop. L.J. 389 (2012)

Author: Michael W. Klein, J.D., Ph.D. & Joy Blanchard, Ph.D.

About: Michael W. Klein is the Executive Director of the New Jersey Association of State Colleges & Universities. Joy Blanchard is an Assistant Professor of Higher Education at Florida International University.

Abstract: To help explain the New Jersey and Kansas cases, this case study analyzes the current state of labor law and intellectual property law, specifically copyright law and patent law. It then summarizes the intellectual property policies adopted by Rutgers University and the Kansas Board of Regents, and explores the court cases involving those policies. Finally, this paper suggests areas of future research on the topic of collective bargaining and intellectual property rights.


Copyright Convergence in the Andean Community of Nations

Citation: 20 Tex. Intell. Prop. L.J. 429 (2012)

Author: Alberto J. Cerda Silva

About: Alberto J. Cerda Silva, Professor of Law and Technology at the University of Chile Law School, acerda@uchile.cl. An earlier version of this article was presented at the “Trade and Integration in the Americas” course by Professors Mario A. Umaña, Cesar Parga, and José Rivas-Campo at Georgetown University Law Center, Spring 2011. The author thanks Professors Cesar Parga, Rebecca Tushnet, and Michelle Ueland for their comments, suggestions, and feedback on earlier drafts of this article@uchile.cl. An earlier version of this article was presented at the “Trade and Integration in the Americas” course by Professors Mario A. Umaña, Cesar Parga, and José Rivas-Campo at Georgetown University Law Center, Spring 2011. The author thanks Professors Cesar Parga, Rebecca Tushnet, and Michelle Ueland for their comments, suggestions, and feedback on earlier drafts of this article.

Abstract: The Andean Community, initially known as the Andean Pact, is an integration process in the Americas that started in 1969 with the signing of the Cartagena Agreement by Bolivia, Colombia, Chile, Ecuador, and Peru. In 1973, Venezuela also joined. Through the 1970s and ‘80s, besides the creation of communitarian institutions, there was insignificant progress in regional economic integration within the Andean Community. In part, this was due to the pervasive dictatorships in the region and the incompatibility of domestic economic measures adopted by some countries including Chile, which dropped the initiative in 1976.

Starting in the early ‘90s, once democratic governments returned to the region and overcame the economic crisis, the process of integration within the Andean Community was revitalized. In those years, several measures contributed to the creation of a free trade area. These included reduced tariffs, the harmonization of custom procedures, and the liberalized trade in goods, transport, and telecommunications, contributed to the creation of a free trade area. Additionally, as part of this intensification, the Andean Community adopted common regulations in areas like foreign investment, communitarian enterprises, and industrial and intellectual property. In fact, in 1993, the Andean Community adopted Decision 351, which set forth the common regime on copyright and neighboring rights.


Patent Secrecy Orders: Fairness Issues in Application of Invention of Secrecy Act

Citation: 20 Tex. Intell. Prop. L.J. 471 (2012)

Author: James Maune

About: James Maune, University of San Diego School of Law, JD 2013; University of Tennessee, MSAviation Systems Engineering 2001; Rensselaer Polytechnic Institute, Troy NY, BS Physics 1992; Retired from active duty on July 31, 2012 (20 years commissioned serviceas Naval Aviator); Registered Patent Agent with United States Patent and Trademark Office.

Abstract: This Comment will discuss fairness issues in the imposition of invention secrecy orders. Part II will briefly discuss the government’s interest in promoting patent rights. Part III will discuss governmental procedures for the imposition of secrecy orders. Part IV discusses the current remedies available to the inventor for the government’s imposition of secrecy orders. Part V proposes changes to the current system and discusses the cost of these changes. Although recognizing the difficulties inherent in addressing this problem, this Comment will suggest changes that would balance the benefits of secrecy orders with their costs to the inventor, the government, and society.


The Challenge of Protecting Industrial Design in a Global Economy

Citation: 20 Tex. Intell. Prop. L.J. 495 (2012)

Author: Susanna Monseau

About: NA

Abstract: This paper discusses the growing importance of industrial design to the global economy and reviews the development of legal protection for industrial design since the early twentieth century in order to put forward three arguments. First, the rise in counterfeiting and design piracy is detrimental to both designers and consumers and requires a legislative response from Congress. Second, a review of international design laws shows some clear areas of agreement emerging in international agreements on the legal principles that should govern the protection of industrial design. Third, a U.S. design protection law can be constructed in the way that will fit comfortably within existing U.S. legal principles and be consistent with the obligations of the U.S. under international design laws.

Part I of the paper evaluates the growing evidence of the importance of industrial design to the global economy. It identifies counterfeiting as the greatest threat for innovative design-intensive industries, which leads to the argument that to provide protection for designers against counterfeiters there is a need for short-term legal protection from copying. Part II focuses on the history and development of the various concepts underpinning legal protections for industrial design. It briefly traces the chronology of international efforts to define and protect industrial design and considers in more depth the relatively recent EU attempts to harmonize design laws in Europe, especially the adoption of the unregistered design right. It demonstrates that there is, in fact, a slowly developing international consensus on several aspects of legal protection for industrial design. Part III explores the unsatisfactory and piecemeal manner in which protection for industrial design is currently provided by U.S. law. It explains the shortcomings of each type of legal protection and briefly addresses some of the problems with the fashion lobby’s various fashion design law proposals. Part IV of the article proposes that the U.S. provide an unregistered limited protection against copying for all market-entry industrial design following the principles of protection found in international law, and especially in key aspects of the European unregistered design right. The paper argues that this new law would benefit society, consumers and designers.