Issue 1 – Fall 2019
To Promote Innovation, Congress Should Abolish the Supreme Court Created Exceptions to 35 U.S. Code Sec. 101
Citation: 28 Tex. Intell. Prop. L. J. 1 (2019)
Author: Shahrokh Falati
About: A member of the Faculty at Albany Law School in New York.
Recent Supreme Court decisions have caused havoc in the Biotechnology and Software industries in the U.S. by vastly increasing the number of U.S. patents being invalidated based on the patent eligible subject matter requirements of 35 U.S.C. §101. As a result, the spotlight on 35 U.S.C. §101 is increasing and there are discussions amongst the patent bar for how best to address the unintended consequences. I here argue that Congress should abolish the Supreme Court-promulgated, non-statutory exceptions to 35 U.S.C. §101, in toto, because they: 1) run directly in conflict with the express statutory language of 35 U.S.C. §101 and its Congressional intent; 2) have been extremely difficult to implement in practice by the U.S. Patent and Trademark Office, the District courts and the Court of Appeals for the Federal Circuit; 3) offer no significant benefit that outweighs the havoc and harm caused to public and private innovation-driven industries; 4) run in direct contrast to the laws of other industrialized nations on this narrow legal issue; and 5) otherwise greatly discourage current and future innovators from developing and commercializing their new discoveries and technologies in America.
A Research Tool Is Not Law: A Response to Code Revision Commission v. Public.Resource.Org, Inc.
Citation: 28 Tex. Intell. Prop. L. J. 53 (2019)
Author: Caroline L. Osborne
About: Associate Professor of Law and Director of the William J. Farmer, Jr. Law Library, West Virginia University College of Law
Abstract: This article explores how the recent Eleventh Circuit decision, Code Revision Commission v. Public.Resource.Org, Inc., should be treated on appeal to the Supreme Court. The Court of Appeals held that a state could not claim copyright in the state’s statutes nor in the value-added materials the commercial publisher included in a state’s codification of its laws.
This article considers questions of what is law, who is the author, and the legislative process in which all states’ laws are made. This article concludes that the democratic foundation of state legislatures requires recognition of the electorate as owners and authors of the law but distinguishes research tools created by commercial publishers in a work for hire arrangement dictated by statute as a delegation a step too far to constitute law or “law like” for denial of copyright protection.
The question of copyrightability of value-added annotations to the law is currently pending review by the Supreme Court. This article examines the copyrightability of value-added content, considering the factors of author, authority, and process in the context of the creation of such content and concludes that this information, when assembled and selected by publishers, even when presented as part of a code with official status is copyrightable.
Fixing Copyright Registration for Online Video Creators: The Case for Group Registration of Published Videos
Citation: 28 Tex. Intell. Prop. L. J. 87 (2019)
Author: Art Neill and Erika Lee
Art Neill is the Executive Director of New Media Rights Program and an Adjunct Professor teaching Internet & Social Media Law and Internet & Media Law Clinic at California Western School of Law. He is also a Forbes Contributor for Small Business & Entrepreneurs.
Erika Lee is a Staff Attorney at California Western School of Law’s New Media Rights Program.
Abstract: Since the Copyright Act of 1976, there’s been enormous growth in the volume of video content produced, and the options for video distribution. The 1976 Act was created in a world where movie and TV studios produced the only commercially viable video content, in the form of films and television shows, and distributed through a limited number of theatres and networks. Today the public creates video content in vast quantities, and much of it is used in commercial endeavors from YouTube channels to social media influencers. Yet copyright registration of published video content has changed little since the Copyright Act of 1976. Since the 1976 Act, while the Copyright Office adapted its regulations to permit group registration of other published media including serials, newspapers, newsletters in the 1990s, with photographs added in 2002, published video remains untouched.
This article will consider the history of published group registration since the Copyright Act of 1976, and argue that future modernization efforts should include group registration of video. The article addresses key problems with the current prohibition on group registration of published videos and suggests the way creators currently make videos can be analogized with the works currently acceptable for group registration post-publication.
A Tale of Two Mice: Insights on the Divergent Treatment of Patent-Eligible Subject Matter in the United States and the European Union
Citation: 28 Tex. Intell. Prop. L. J. 99 (2019)
Author: Rebecca A. Lindhorst
About: Associate Patent Attorney at Sterne, Kessler, Goldstein & Fox
The Foreign Equivalents Doctrine… in English?
Citation: 28 Tex. Intell. Prop. L.J. 129 (2019)
Author: Alan Montera
About: Associate, McAndrews, Held & Malloy, Ltd.; JD, Chicago-Kent College of Law.
Issue 2 – Spring 2020
Copyright and Dissent
Citation: 28 Tex. Intell. Prop. L. J. 157 (2020)
Author: Tomer S. Stein
About: Associate at Latham & Watkins LLP.
Abstract: This Essay brings to the fore the hitherto unnoticed feature of copyright: Copyright incentivizes dissent and protects marginalized authors. Absent copyright protection that allows authors to recoup their risks and costs, producers of unpopular works that deviate from the mainstream would have no incentives to pursue their socially valuable endeavors, unlike authors who reap reputational gains from catering to popular opinion. This insight has the potential for changing the terms, as well as the conclusions, of the ongoing debate over the desirability of copyright protections. Specifically, I demonstrate that the dissent-protecting rationale both coherently explains and aligns with all justificatory accounts of copyright law. Furthermore, I uncover an important, yet underappreciated, alignment between copyright and the First Amendment protection of speech: both copyright and the First Amendment are engines of speech that would have otherwise been silenced.
The Last Laugh: A Case Study in Copyright of Comedy and the Virtual Identity Standard
Citation: 28 Tex. Intell. Prop. L. J. 183 (2020)
Author: Matthew L. Pangle
About: J.D., 2020, University of Richmond School of Law
Comedy is in the midst of a golden age. Never before has comedy been so diverse, full of depth, and accessible. Performers today can sell out arenas, tour hundreds of cities, and attract millions of fans, just like the rock stars of years past. Many comedians consider their material their craft; legendary comedian Dave Chappelle even elevates comedy to the status of art, comparing the punchlines of comedy to the brushstrokes of Rembrandt. New forms and mediums of expression allow more of those punchlines. But the gift of more voices comes with a vice: more voices are talking about the same things. Crowded expression is bound to overlap and figuring out who said what is often complicated. Comedians have traditionally relied on the social norms within their industry to police overlap. But with comedy’s resurgence over popular platforms like Netflix and Twitter and the emerging force of intellectual property law, copyright protection is becoming more prevalent in policing infringement of comedians’ material. As copyright doctrine in the realm of joke appropriation continues to develop, the relationship between law and already existing societal norms becomes more complicated. A recent case, Kaseberg v. Conaco, LLC, offers a glimpse into that increasingly intertwined relationship through the lens of fact-based jokes. While the case ultimately settled, it leaves behind the virtual identity standard, a new analysis to judge appropriation of jokes that could signal an upheaval of the heavily-relied upon social norms in the comedy industry. Ultimately, this article argues that the virtual identity standard is the correct standard to judge infringement of those fact-based jokes and yields positive implications for the comedy industry. Furthermore, social norms within comedy act as the infrastructure that informs comedians of proper protocol and policy; virtual identity does not disturb that, but rather is a viable method of last resort for comedians. Finally, while virtual identity requires a higher bar for plaintiff-comedians claiming infringement of fact-based jokes, it ultimately incentivizes creativity among joke creators and facilitates open expression of comedy.
Part I explores the background of copyright protection and infringement in general. Part II discusses how copyright doctrine has typically treated jokes, lays out the social norm framework within the comedy industry, and explains how Twitter fits into both the copyright and comedy framework. Part III introduces Kaseberg v. Conaco, LLC, a recently-settled case that focused on the intersection of copyright and comedy through the lens of fact-based jokes. Part IV then analyzes the virtual identity standard and its applicability in copyright infringement cases, including a discussion and prediction of its applicability to the facts of Kaseberg. Part V analyzes copyright doctrine’s new foothold in the comedy industry on the already-existing social norms of comedy. Finally, Part VI addresses the consequences and concerns of using a virtual identity standard to police infringement of fact-based jokes. Ultimately, the virtual identity standard nestles in the background of the comedy landscape, incentivizing more varied comedic expression, improving public accessibility to comedy, and giving legal reinforcement to the societal norms already present within the comedy industry.
Berkheimer: An Overcorrection in the Law of Patentable Subject Matter
Citation: 28 Tex. Intell. Prop. L. J. 211 (2020)
Author: Grant E. Gibson
About: J.D., The University of Texas School of Law, May 2020.
For a patent to be valid, various patentability requirements must be met. Patentable subject matter is a patentability doctrine that has had revived importance over recent years. Under this doctrine, a patent must claim a patentable invention. If a patent fulfills this requirement, it is patent eligible, and it cannot be invalidated under the patentable-subject-matter doctrine.
The way that courts interpret the patentable-subject-matter doctrine is critical to the determination of whether a patent meets the requirement. Over the years though, courts have changed their interpretation of this doctrine. Most recently, the Supreme Court has weighed in on the patentable-subject-matter issue, and in a string of cases, it has renewed the importance of the doctrine in patent law.
The Supreme Court revived the importance of the patentable-subject-matter issue when it created a two-part framework for use in analysis of the issue. The law surrounding this two-part framework has created procedural standards unique to the issue. Specifically, summary-judgment standards specific to the patentable-subject-matter context have been promulgated by the Supreme Court and the Federal Circuit. Over the years, these special standards have proven to be very defendant friendly.
In February of 2018, the Federal Circuit, issued an opinion, Berkheimer v. HP Inc., which attempted to remove some of the special summary-judgment standards for patentable subject matter, and attempted to better align the doctrine with other patentability doctrines. The Federal Circuit did successfully remove some summary-judgment standards specific to patentable subject matter. The Federal Circuit though did not stop there. It also created new summary-judgment standards specific to patentable subject matter, standards that arguably are plaintiff biased. In light of this additional step, which appears be an attempt to remedy the defendant-friendly bias of the doctrine, the Berkheimer decision appears to be an overcorrection in the law of patentable subject matter.
This article will start with an analysis of how courts apply summary-judgment in general, and in the context of patentable-subject-matter. An analysis of the summary-judgment standards applied to patentable subject matter will follow. This analysis will show that in this context, both before and after the Berkheimer decision, courts apply special summary-judgment standards. Furthermore, this article will present an analysis of the Berkheimer decision, and the changes that it enacted. This analysis will show that the case, in fact, promulgates an overcorrection of the doctrine of patentable subject matter. Finally, this article will end by discussing how the Berkheimer overcorrection can be fixed by simply cabining it to the specific case without disturbing the correction promoted by the case.
Patent Wars: The Attack of Blockchain
Citation: 28 Tex. Intell. Prop. L. J. 241 (2020)
Author: Austin Paalz
About: J.D. 2020, Emory University School of Law.
Blockchain has rapidly become one of the most popular technologies that companies are scrambling to integrate into their businesses. The accelerated development of blockchain has created a race to obtain patents incorporating the technology. Fortune 500 companies including Goldman Sachs, Bank of America, and Mastercard are at the forefront of the sprint to patent blockchain. However, blockchain is not limited to high profile companies. Recent studies have shown as many as 80% of executives are using or considering the use of blockchain technology to improve their business models. Despite the increase in patent applications involving blockchain, it is unlikely that these applications are even capable of being patented.
Over the past fifty years the courts have been tasked with the role of crafting a subject matter eligibility test, specifically for patent claims directed at abstract ideas. Most recently, the Supreme Court has laid out the test in Alice Corp. Proprietary Ltd. v. CLS Bank International. The first step in the test focuses on whether the claim is directed at a patent ineligible concept. If it is, then the test proceeds to the second step which analyzes whether there is a sufficiently inventive concept in the claim that makes the patent ineligible concept innovative and eligible to be patented. Alice Corp. held that an application directed at a patent ineligible concept is not sufficiently inventive simply because of its use of software or a computer to enhance the application. The use of software is not sufficiently inventive because software focuses on providing a method of implementing an abstract idea rather than improving the process.
This Comment analyses the subject matter eligibility test for patent claims, specifically software-based claims, outlined in Alice Corp., and compares software to blockchain. Focusing on the striking similarities between software and blockchain, this Comment analyzes why blockchain claims, like software claims, are generally patent ineligible technology. Finally, this Comment argues that blockchain claims are not only patent ineligible subject matter but allowing the technology to be patented will lead to less innovation. Patenting blockchain could lead to many unintended consequences such as stifling the growth of the technology.
How the Wolf of Wall Street Shaped the Internet: A Review of Section 230 of the Communications Decency Actology Patents
Citation: 28 Tex. Intell. Prop. L. J. 275 (2020)
Author: George Fishback
About: J.D., The University of Texas School of Law
Abstract: In the mid 90’s with the internet just beginning to show its true potential, a court decision threatened to stifle it. Not long after, Congress passed Section 230, which removed publisher liability from internet service websites for the content published by their users. Instead of disincentivizing websites from allowing user content, Section 230 promoted websites to grow without fear the of liability for content beyond their control. Today, mainly among conservatives who view that social media companies have too much say in regulating speech regulation, there is a call to reform and do away with Section 230. Wherever you come down on that answer, there is a fundamental misunderstanding about what Section 230 is supposed to do. Section 230 was not constructed to create a neutral field for political thought. Instead, it was created to safeguard the internet and allow it to grow. This paper, however, will not be analyzing that misinterpretation. Instead, it will use that misinterpretation as a jumping off point to examine what Section 230 is and how it came to be. Finally, this paper will conclude by discussing the possible alternatives.
Issue 3 – 2020
AI & Intellectual Property: Towards an Articulated Public Domain
Citation: 28 Tex. Intell. Prop. L. J. 297 (2020)
Author: Mauritz Kop
About: Mauritz Kop is a Stanford Law School TTLF Fellow, Founder of MusicaJuridica and strategic intellectual property lawyer at AIRecht in Amsterdam, The Netherlands.
This article seeks to clarify the relation between AI and IP in the information society. It aims to critically examine our intellectual property framework at the dawn of the Fourth Industrial Revolution. In that context, it contends that human authorship & inventorship remains the normative organ point of intellectual property law. Additionally, it argues that extending copyrights hinders innovation, cultural diversity, and even fundamental freedoms. Adding extra layers to the existing rainbow of IP rights is not a good solution to balance the societal impact of technological progress. Legislative gaps can be remedied by contracts and generous application of fair use and the three-step-test. Finally, parts of the Roman multi-layered property paradigm can be relevant for AI. Building upon this framework, section VIII of the article includes a proposal for a new public domain model for AI Creations and Inventions that crossed the autonomy threshold: Res Publicae ex Machina (Public Property from the Machine).
The Idea Exclusions in Intellectual Property Law
Citation: 28 Tex. Intell. Prop. L. J. 343 (2020)
Author: Lateef Mtima
About: Professor of Law, Howard University School and Founder and Director, Institute for Intellectual Property and Social Justice.
Bridging the International Gap in the Protection of Folklore: Analysis of the Ghanaian Approach Against Comparative Experiences from Selected African Countries
Citation: 28 Tex. Intell. Prop. L. J. 393 (2020)
Author: D. A. Agyei
Part I provides an overview of the international recognition of folklore as an asset worthy of preservation and protection. It shows that the debate over whether folklore is a type of asset that belongs to the ‘public domain’ is at the heart of the international discussions over the issue. Part I challenges this view by arguing that folklore is not work in the public domain and must be protected internationally.
Part II comparatively discusses the ways Ghana, Nigeria, Kenya, and South Africa protect folklore under their domestic legislation and how effective their approaches have been.
Part III discusses the Swakopmund Protocol on the Protection of Traditional Knowledge and Expressions of Folklore, and how it seeks to achieve effective national and regional protection of folklore. This is followed by recommendations and a guide to the approach that Ghana and other African countries can take in protecting folklore widely beyond their jurisdiction.
The Damaging Myth of Patent Exhaustion
Citation: 28 Tex. Intell. Prop. L. J. 443 (2020)
Author: Sean M. O’Connor
About: Professor of Law, George Mason University, Antonin Scalia Law School; J.D., Stanford Law School; M.A. (philosophy), Arizona State University; B.A. (history), University of Massachusetts, Boston.
Patent exhaustion enjoys a reputation as a well-established doctrine of “over 160 years” with a further “impeccable historic pedigree” reaching back to Lord Coke’s seventeenth century property writings. The doctrine allows purchasers of patented goods to use those items according to common expectations without obtaining a further license. Its impact is both widespread and hotly debated in our technology-based economy where innovative product distribution models are constantly introduced. But the doctrine’s historical reputation is not well deserved. In fact, the modern account of the doctrine’s origin is both thin and demonstrably wrong—it is based on selective quotes from Coke’s annotation of a real property treatise and Chief Justice Taney’s dicta from a mid-nineteenth century opinion, both of which are taken out of context and do not support any sweeping rule of exhaustion. The Supreme Court’s recent embrace of that modern account is not merely bad history; it also misses the serious implications that the revisionist history could have for central contract and property law mechanisms, including conditions precedent and subsequent. Either patentees have powerful work-arounds for a purported bright line exhaustion rule through the contractual clauses that maintain reversionary interests, or the common law of property and contract have suffered serious collateral damage in service of a historical myth. This Article introduces extensive original research on the history both of the rule against restraints on alienation of property and of “patent exhaustion” to argue that—contrary to the dominant modern account—certain restrictions on the use of purchased (patented) goods based on conditional transfers of property title have been carefully preserved by courts.
Where are the Women? The Gender Gap within Intellectual Property
Citation: 28 Tex. Intell. Prop. L.J. 510 (2020)
Author: Alexandra Porter
About: J.D., The University of Texas School of Law