TIPLJ: Volume 5

Issue 1 – Fall 1996


Trademarks in Russia: Making and Protecting Your Mark

Citation: 5 Tex. Intell. Prop. L.J. 1 (1996)

Author: Cynthia Vuille Stewart

About: Law Clerk, The Hon. Diana Gribbon Motz, U.S. Court of Appeals for the Fourth Circuit; J.D., Stanford Law School, 1996, M.A., The Paul H. Nitze School of Advanced International Studies, The Johns Hopkins University, 1996.

Abstract: Counterfeit Barbie dolls manufactured in China flaunt their fashions on the shelves of Moscow kiosks. Reebok estimates that there are as many imitation Reebok products as real ones sold throughout Russia. The piracy rate for Levi’s jeans in Russia is over fifty percent. Companies from the United States and other countries have faced innumerable problems when confronted with protecting their intellectual property in Russia and trademarks are no exception.

Trademark protection in Russia is fraught with difficulties. Although Russia has adopted a modern and comprehensive legal regime to protect intellectual property, no law is meaningful absent enforcement. The Russian government must take steps to improve protection of trademarks, both to accelerate participation in the world economy and to ensure that Russian consumers get what they expect in the marketplace. Allowing consumer confusion will ultimately lead to consumer distrust of the choices offered by a free market economy and could lend popular support to regressive political forces. Enforcing trademarks encourages consumers to invest in higher quality goods because they have confidence in what they are buying. Until the government takes action, companies doing business in Russia must be creative in their efforts to defend their names against the onslaught of those who are seeking quick profits. A market with millions of under-served consumers depends on it.


A Comparison of the PTO’s Computer-Implemented Guidelines with the Current Case Law

Citation: 5 Tex. Intell. Prop. L.J. 27 (1996)

Author: Ruben Bains

About: J.D. candidate, The University of Texas School of Law, May 1997.

Abstract: Patentability of software inventions that include mathematical algorithms has been a controversial topic for many years. Nevertheless, more and more software patents are granted each year, and the numbers continue to grow. The need for patent protection for software inventions has emerged primarily because of inadequacies offered by the traditional methods of protection: copyright and trade secret laws. Patentability of software inventions that include mathematical algorithms has been a controversial topic for many years. Nevertheless, more and more software patents are granted each year, and the numbers continue to grow. The need for patent protection for software inventions has emerged primarily because of inadequacies offered by the traditional methods of protection: copyright and trade secret laws. As the popularity of patenting software inventions has emerged, several courts, including the United States Supreme Court, as well as the Patent and Trademark Office (PTO), have struggled with defining a standard procedure for determining the patentability of computer-related inventions. Recent court decisions have not only been inconsistent with earlier court decisions, but also in conflict with positions taken by the PTO. The courts’ inconsistent scrutiny regarding the patentability of software has left many in the field of intellectual property law frustrated and confused.

In order to clarify what it considers to be the present law, the PTO, on June 2, 1995, presented a set of guidelines fo computer-implemented inventions. Since then, the PTO has released a final version of these guidelines along with a legal analysis (the Guidelines). These Guidelines are intended to be used by patent examiners in determining whether an applicant’s computer invention is deserving of a patent. Given the significance of the Guidelines, it is necessary that those interested in seeking to obtain a patent for a computer-related invention have a clear understanding of the Guidelines. The purpose of this paper is to compare the PTO’s new stance regarding the computer-related inventions with the current case law.

In most respects, the Guidelines are consistent with current case law in that they require the invention to first meet the statutory subject requirement of Section 101, then the requirements of Section 112, and finally the requirements set forth in Sections 102 and 103. The Guidelines have characteristics that are representative of both the “expansive” view and the “middle” view in determining the patentability of computer-related inventions. The existence of the “middle” view perspective is apparent when the Guidelines attempt to classify the claimed invention as a machine, article of manufacture, or a process, as prescribed by Section 101. The Guidelines reflect the “expansive” view in that they allow processes that recite algorithms to be statutory so long as they have a practical utility. Whether this attempt to reconcile the views will be embraced by the courts will determine the ultimate success of the Guidelines.


Publish and Perish: Patentability Aspects of Peer Review Misconduct

Citation: 5 Tex. Intell. Prop. L.J. 47 (1996)

Author: Edwin S. Flores Troy, Ph.D.

About: Ph.D., Molecular Immunology, Washington University in St. Louis (1993); J.D. candidate, The University of Texas School of Law, Dec. 1996.

Abstract: The trust vested in the system of academic peer review is misplaced, and until inventors and patent prosecutors realize the potential danger to the patentability of the invention sought, submitting a manuscript or a grant proposal to a peer review panel may be a hazardous endeavor.

To determine whether an invention may be patentable, most patent prosecutors cope daily with the publication and public disclosure dates of inventors’ confidential information. When dealing with inventors in the academic environment, it is alarmingly common for patent counsel to receive notice from the inventor that the data underlying the patent application being drafted is “in press” with a publication being mailed to subscribers within months, days or even hours. Faced with a short time frame to prepare the application, the most immediate concern is over the quality of the patent application. In addition to concern over quality control, patent counsel is also concerned with the date that the publication is available to the public, the potential of interference in a highly competitive area, and perhaps, in the future, a first-to-file system. Patent counsel, however, will also have to deal with the misplaced trust reposed by inventors in the peer review system.

The peer review system requires that scientists divulge confidential information to their peers in order to evaluate the merit of the research. Peer review is used prior to publishing a scientist’s findings, to further the scientist’s research efforts and career, and to secure grant funds. The peer review system’s design, however, permits and perhaps even encourages an inventor’s peers, especially in highly competitive fields, to use the information to their scientific and pecuniary advantage. One important way that the peer review system is flawed is through its reliance on the perfunctory confidentiality agreements that peer reviewers are asked to sign. Even if scientists sign confidentiality agreements, a breach of such an agreement will not salvage an inventor’s right to a patent.

What remedy does an inventor have against the alleged peer malfeasor other than charges of plagiarism or fraud? What is the likelihood that a patent will issue to the true inventor, and who has the upper hand if a conflict arises? Under current patent doctrine, the invention date is the date of conception and reduction to practice given due diligence. Without due diligence, the invention date is constructively the date that a complete application is filed with the Patent and Trademark Office once the application date is perfected. What happens to the patentability of an invention when a direct competitor, a former student, or a peer in a position to use or pass on the valuable information acts contrary to the “gentleman’s agreement” that permeates scientific peer review today? What happens to the patentability of an invention when a peer reviewer, upon being exposed to the information, directs one of his or her students to use the knowledge to advance his or her research and career?


The Vicarious Liability of Trade Show Organizers for the Copyright Infringements of Exhibitor

Citation: 5 Tex. Intell. Prop. L.J. 81 (1996)

Author: Tilman E. Self III

About: J.D. candidate, University of Georgia School of Law, May 1997.

Abstract: Cases involving the third party liability of trade show organizers or flea market owners are very recent, few in number, and follow a similar fact pattern. In each case, the owners of certain copyrights have sued a trade show organizer or the owner of a flea market for the copyright infringements committed by someone at the defendant’s show. In each case, vendors paid a flat fee for their space or booth and the organizer received an admission fee from customers.

In the absence of express statutory language or precedent, courts have been forced to look to traditional tests of third party liability and have attempted to adapt them to the trade show situation. Predictably, the results have been contradictory and conflicting. Trade show organizers can be liable for either direct or indirect copyright infringement. In indirect liability cases, one is being charged with the infringement committed by another. This Note will explore the two types of third party liability, vicarious liability and contributory infringement.

The Polygram and Fonovisa decisions have greatly relaxed the vicarious liability standard of copyright infringement so that virtually all trade show organizers can now be held liable for infringing acts committed by vendors at their trade shows. This Note highlights the inconsistencies between the courts on the subject, as well as the potential dangers of such holdings. Moreover, this Note offers as a solution a requirement that copyright holders prove a substantial and continuous relationship between the trade show organizer and exhibitor. It also justifies a requirement that the copyright holder prove the flea market owner or trade show organizer received a direct financial benefit, not an indirect benefit from the “overall ambiance” of the infringement. Through the application of these suggestions, courts will insure that copyright holders remain responsible for the enforcement and protection of their copyrights as well as guarantee that only deserving premises owners who have actively participated in infringing activities are punished.


Recent Developments in Patent Law

Citation: 5 Tex. Intell. Prop. L.J. 107 (1996)

Author: Ted D. Lee & Michael Caywood

About: The authors are attorneys at Gunn, Lee & Miller, San Antonio, Texas.

Abstract: This Article reviews patent decisions reported in the Bureau of National Affairs’ United States Patents Quarterly Second Series from March through August 1996. While this Article is not intended to be a comprehensive reporting of all patent cases issued during the relevant time period, it does cover significant cases decided by the Court of Appeals for the Federal Circuit and the Markman v. Westview Instruments, Inc. decision by the United States Supreme Court. While the authors will attempt to give an unbiased reporting of the recent developments, any comment on cases necessarily involves making a determination as to what is significant or insignificant.

The Patent Bar has long awaited the Supreme Court’s ruling in Markman v. Westview Instruments, Inc. This is probably the most significant patent decision since Graham v. John Deere because it reduces the jury’s role in patent infringement cases. The Markman decision may, in the future, counteract two trends that have developed in patent law since the creation of the Court of Appeals for the Federal Circuit in 1982. First, there is the increasing trend to request jury trials in patent cases. Second, there is a trend for juries to give patent owners large damage awards. The Markman decision will likely affect both of these trends.


Recent Developments in Copyright Law

Citation: 5 Tex. Intell. Prop. L.J. 131 (1996)

Author: Susan B. Bruning & Kara L. Dunham

About: Susan B. Bruning: P.C., Dallas, Texas. Kara L Dunham: J.D., Texas Weslyan School of Law, Dallas, Texas; M.C.L., Tulane Law School, New Orleans, Louisiana.

Abstract: Selected cases from Volumes 38 and 39 of the Bureau of National Affairs, United States Patents Quarterly Second Series.


Recent Developments in Trademark La

Citation: 5 Tex. Intell. Prop. L.J. 155 (1996)

Author: Mark Thurmon

About: Arnold, White & Durkee, Austin, Texas.

Abstract: This Article summarizes recent significant and interesting developments in trademark law, specifically, issues of sovereign immunity, likelihood of confusion, use of a mark, trade dress, false advertising, bad faith infringement, and laches.


Issue 2 – Winter 1997


Understanding the Economic Espionage Act of 1996

Citation: 5 Tex. Intell. Prop. L.J. 177 (1997)

Author: James H.A. Pooley, Mark A. Lemley & Peter J. Toren

About: James Pooley, Principal, Fish & Richardson P.C., Menlo Park, California. Mark Lemley, Assistant Professor, University of Texas School of Law; of counsel, Fish & Richardson P.C., Austin, Texas. Peter J. Toren, Attorney, Computer Crime and Intellectual Property Section, Criminal Division, United States Department of Justice.

Abstract: A significant gap has existed in trade secrets law for many years. Given the increasing importance of trade secrets in the Information Age, one would expect to see strong and effective criminal laws protecting the investment of industry in research and development. Instead, only a minority of states have specifically criminalized the theft of trade secrets, under widely varying standards. Moreover, the specialized resources necessary to investigate and prosecute this sort of crime have generally not been available at the local level. Federal law has not provided an effective remedy either, since the depression-era statute covering interstate transportation of stolen goods has been held inapplicable to “intangible” intellectual property.


The Effect of Fogerty v. Fantasy on the Award of Attorney’s Fees in Copyright Disputes

Citation: 5 Tex. Intell. Prop. L.J. 231 (1997)

Author: Douglas Y’Barbo

About: Douglas Y’Barbo, Fulbright & Jaworski, L.L.P., Houston, Texas; J.D. University of Chicago; M.S. Massachusetts Institute of Technology. The author gratefully acknowledges the excellent editorial assistance of Sarah Welch and Amy Werner.

Abstract: This Article addresses two important questions. First, what effect has the recent Supreme Court’s decision in Fogerty v. Fantasy, Inc. had on the standard used in awarding attorney’s fees in copyright disputes? Second, are the standards used by the lower courts after Fogerty faithful applications of the Fogerty holding?

While the current application of Fogerty by the trial courts is not the best reading, it is certainly a fail-safe one. Trial courts, perhaps reluctant to be reversed on appeal, simply apply the entire text of Fogerty in a mechanical fashion without regard to their respective circuit’s background rules, or without bothering to distinguish holding from dicta. Fogerty cited the Lieb factors with approval, so the trial courts apply them. No other “rule” is expressly mentioned, so the courts do not apply any. Obviously then, the Fifth Circuit needs to resolve this issue. And the way it should resolve this problem is by directing the trial courts to apply the pre-Fogerty standard, as this approach was entirely consonant with the Supreme Court’s position in Fogerty.


The “Regards as His Invention” Requirement of Section 112, Paragraph 2 of the Patent Act: Ensuring That the Inventor Claims What He Regards as His Invention

Citation: 5 Tex. Intell. Prop. L.J. 257 (1997)

Author: Herbert J. Hammond

About: Thompson & Knight, P.C., Dallas, TX.

Abstract: Section 112, paragraph 2 of the Patent Act provides that “[t]he specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.” The failure to particularly point out and distinctly claim the invention is frequently a basis for attacking and occasionally invalidating a patent claim. But paragraph 2 provides another, less obvious, basis for rejecting and invalidating patent claims. When the record reflects a discrepancy between what the applicant has claimed and what he regards as his invention, this paragraph has been used by the Patent and Trademark Office (PTO) to reject claims, and by the courts to invalidate them.

This Article addresses the requirement in Section 112, paragraph 2 that the applicant claim what he “regards as his invention.” Part II discusses the requirement’s historical origin. Part III explains the manner in which the “regards as his invention” requirement has been applied by the PTO and the courts. Finally, Part IV offers practical advice to the practitioner on how to avoid the potentially disastrous consequences of claiming something other than what the inventor genuinely regards as his invention.

The requirement in Section 112, paragraph 2 that patent claims particularly point out and distinctly indicate “what the applicant regards as his invention” is not widely appreciated as a basis for claim rejection or invalidation. Patent solicitors and litigators alike need to appreciate the consequences of a discrepancy between what the claims cover and what the applicant believes he invented. Such insight can be crucial in both defending and challenging patent claims.


Recent Developments in Trademark Law

Citation: 5 Tex. Intell. Prop. L.J. 273 (1997)

Author: Dana Wilson Easley

About: Strasburger & Price, L.L.P., Dallas, Texas.

Abstract: This Article reviews selected noteworthy trademark decisions reported in the United States Patents Quarterly Second Series, for the months of September, October, and November of 1996.


Recent Copyright Case Law Developments

Citation: 5 Tex. Intell. Prop. L.J. 293 (1997)

Author: Jeff A. McDaniel

About: Conley, Rose & Tayon, P.C., Austin, Texas. Contributors: Darryl J. Adams, Lila B. Glaser, Eric A. Stephenson, and Joseph T. Van Leeuwen, all with Conley, Rose & Tayon, P.C., Austin, Texas.

Abstract: A group of interesting, closely-watched copyright cases were decided during the last half of 1996. In a surprise to many practitioners, the Seventh Circuit held that shrink-wrap license agreements are enforceable, casting doubt on a series of district court decisions where the opposite conclusion had been reached. The Eighth Circuit joined a growing minority of federal appellate courts that have held that defendants in copyright infringement actions are entitled to a trial by jury even though only statutory damages are demanded by the plaintiff. These and other selected copyright cases reported in Volumes 39 and 40 of the United States Patents Quarterly Second Series are summarized below.


Recent Developments in Patent Law

Citation: 5 Tex. Intell. Prop. L.J. 319 (1997)

Author: Wayne E. Webb, Jr., Michael P. Adams, Joseph W. King, Jr. & J. Scott Denko

About: Webb: Fulbright & Jaworski, L.L.P., Austin, Texas. Adams: Skjerven, Morrill, MacPherson, Franklin & Friel L.L.P., Austin, Texas. King: Fulbright & Jaworski, L.L.P., Austin, Texas. Denko: Fulbright & Jaworski, L.L.P., Austin, Texas.

Abstract: The purpose of this Article is to review selected patent decisions of the Court of Appeals for the Federal Circuit reported during September, October, and November of 1996. This Article is not intended to provide a comprehensive reference of all such patent decisions, but instead represents those decisions the authors believe are the most significant, interesting, or noteworthy. These decisions are organized by subject matter to facilitate the readers’ review.


Issue 3 – Spring 1997


Sound Recordings Need Sound Protection

Citation: 5 Tex. Intell. Prop. L.J. 333 (1997)

Author: Edward T. Saadi

About: A.B. 1993, J.D. 1996, Georgetown University. Mr. Saadi was admitted to the State Bar of California in 1996. During law school he interned for the Walt Disney Company. He still prefers his albums on vinyl.

Abstract: Current American copyright law deems sound recordings unworthy of full protection, and American moral rights law elevates economic considerations over artistic concerns. Repealing Section 114(b) of the copyright code and passing federal legislation granting greater moral rights protection to recording artists would reverse this unfortunate state of affairs. Recording artists would then acquire the needed tools for protection of their works against plagiarism and mutilation. But perhaps more importantly, Congress would recognize the value of sound recordings as a modern art form and a national treasure. Sound recordings would then truly be soundly protected.


The Supreme Court Provides Clarity to the Illusive Doctrine of Equivalents—Hilton Davis Reversed

Citation: 5 Tex. Intell. Prop. L.J. 363 (1997)

Author: Brooke Quist

About: J.D. Candidate, The University of Texas School of Law, May 1997.

Abstract: It was hoped by many, if not all, that the Federal Circuit in Hilton Davis would clarify the status of the doctrine of equivalents, explain when the doctrine should be applied, and identify the factors that can be taken into consideration. When the Federal Circuit addressed these issues, however, it was argued by many that the majority, concurring, and three dissenting opinions created more confusion than they cleared up. Thankfully, the Supreme Court not only granted certiorari, but also produced an unambiguous holding, based on both precedent and common sense, that offers the promise of finally resolving the confusion that has surrounded this controversial doctrine. The Court’s Hilton Davis opinion should provide a doctrine of equivalents that is governed by clear objective factors, and will not intrude upon the boundaries of claim limitations or their definitional and notice-serving functions.

To summarize, the Supreme Court first reassured that the doctrine of equivalents had survived revisions of the 1952 Patent Act, including Section 112, paragraph 6. It next reconciled two lines of authority regarding the doctrine of equivalents and claim limitations by holding that the doctrine is to be applied to each individual element of a claim, rather than to the entire accused product or process as a whole. Further, the Court held that although the reasons for claim language changes during patent prosecution are relevant to application of prosecution history estoppel, the proper rule is to place the burden on the patent-holder to prove the reason for such an amendment. Thus, the Court established a rebuttable presumption that the amendment was made to avoid the prior art.


Copyright and Trademark: Are They Too Substantially Similar For Literary Works?

Citation: 5 Tex. Intell. Prop. L.J. 389 (1997)

Author: Jim Jubinsky

About: J.D. Candidate, The University of Texas School of Law, May 1997.

Abstract: By utilizing the Lanham Act in literary or creative contexts, the plaintiff gets two bites at the same apple—copyright and trademark. The plaintiff may be able to protect works that have fallen into the public domain, or may be able to limit the defenses that the defendant can utilize, such as independent creation or fair use. The copyright law is sufficiently broad to provide appropriate remedies to plaintiffs who author literary or creative works and who suffer injury as a result of misappropriation. There is no need for the expansion of trademark law that occurred in Waldman. The Waldman decision makes many copyright claims into trademark claims, and the smart attorney would always bootstrap both claims. The Second Circuit’s opinion needlessly complicates matters by punishing plagiarists and copyists under trademark law when copyright law provides appropriate remedies.


Recent Developments in Copyright Law

Citation: 5 Tex. Intell. Prop. L.J. 405 (1997)

Author: Mark D. Perdue, Max Ciccarelli & Barry J. Bumgardner

About: The authors are affiliated with Felsman, Bradley, Gunter & Dillon, L.L.P.

Abstract: This Article reviews selected copyright cases as reported in the United States Patents Quarterly Second Series, Volume 40, Number 5 through Volume 41, Number 4. Probably the most significant case reported during the period examined was the Sixth Circuit’s decision in Princeton University Press v. Michigan Document Services, which is discussed in Section IV.A.1 of this Article. In this en banc decision, the Sixth Circuit found no fair use when a copyshop copied educational material. The cases reviewed in this Article, including Princeton University, are arranged according to the primary issue addressed by the court in the reported decision.


Recent Developments in Trademark Law

Citation: 5 Tex. Intell. Prop. L.J. 441 (1997)

Author: M. Craig Tyler

About: Vinson & Elkins L.L.P., Houston, Texas.

Abstract: This Article provides a summary of several notable cases appearing in the December 1996 through the February 1997 volumes of the United States Patents Quarterly Second Series. Two cases regarding procedural matters were selected. The first is from the Fourth Circuit and involves federal question jurisdiction. The other decision is from the Second Circuit and concerns the issue of standing under the Lanham Act. This Article also summarizes three cases relating to infringement and dilution issues. The first is from the First Circuit and involves likelihood of confusion. The other two cases are from California district courts and involve the new Federal Dilution Act. In addition, this Article includes three cases from the Trademark Trial and Appeal Board (TTAB) concerning registration issues. The Article also covers a trade dress case from the Eleventh Circuit and a recently withdrawn opinion from the Fifth Circuit regarding trade secrets. Finally, the Article summarizes a Second Circuit opinion involving collateral estoppel. In all, eleven cases are summarized.


Recent Developments in Patent Law

Citation: 5 Tex. Intell. Prop. L.J. 463 (1997)

Author: G. Scott Thomas & Gary J. Sertich

About: Mr. Thomas and Mr. Sertich are associated with the law firm of Arnold, White & Durkee in Austin, Texas. The authors gratefully acknowledge the critical review of this Article by Amber L. Hatfield, also of Arnold, White & Durkee.

Abstract: This Article reviews selected noteworthy patent cases reported in United States Patents Quarterly Second Series, Volume 40, Number 9 (December 2, 1996) through Volume 41, Number 6 (February 10, 1997). The analysis provided for each case is not intended to be an exhaustive analysis of the issues presented in the case. Instead, the analysis reflects the authors’ beliefs as to the important aspects of each case.

During this period, a number of cases have been decided which shed light on how district courts and the Court of Appeals for the Federal Circuit will deal with the issue of claim construction after the Supreme Court’s decision in Markman v. Westview Instruments, Inc. Several cases illustrate that the judges of the Federal Circuit do not necessarily agree on several important issues in patent law. In particular, recent cases indicate that clear disagreements exist over the treatment of “means-plus-function” elements in a claim, the standard of review for a district court’s claim construction, and whether public use and experimental use are issues of law or issues of fact.