UHLC Nota Bene

The ABA Business Law Section's Intellectual Property Committee has recently published the fourth edition of Intellectual Property Deskbook for Business Lawyer: A Transactions-Based Guide to Intellectual Property Law , edited by Sharon K. Sandeen and Marilyn C. Maloney. This book containing twenty-three chapters is designed as a reference for attorneys who need to quick information regarding intellectual property issues. Chapter 5 explores licensing intellectual property and chapter 6 looks at IP representations and warranties. The book covers intellectual property issues that arise in specific areas such as probate and estate planning, real property transactions, academic and research institutions, employment law, launching an online business, bankruptcy, antitrust law, open-source software, software financing, franchising, advertising, and transactions involving music. insurance and intellectual property litigation, Electronic Data Security, and IP and the open source movement, a...

Nearly a decade after the surge in popularity of peer to peer sharing services Lawrence Lessig wrote Remix. Remix explored the issues surrounding the crackdown on such platforms by asking questions such as what are we willing to sacrifice to win a “war” on piracy. What if adaptation could sidestep a “war” altogether? The law is notoriously slow to adapt to new technology. But art and creator based content is growing and changing at an increasing pace. Lessig uses Remix to explore where the war on piracy is failing new and exciting art forms that he labels collateral damage. The challenge to strike a balance between protecting the artist and encourage innovation is not new. The book relates the anecdote of John Phillip Sousa (of Stars and Stripes Forever fame) lobbying Congress to stop what he called a form of piracy. The new technology of the phonograph had not yet been accounted for in the copyright law and while he was able to control the reproduction and public performances of ...

Intellectual Property (IP) has become a major revenue source for colleges and universities. Trademarks, patents, and even trade secrets and copyrights are increasingly used as a money making opportunities for institutes of higher learning. In his book, The Branding of the American Mind, Jacob Rooksby argues that developing this new revenue source creates a tension between the university’s promotion of the public good and the private rights that intellectual property is designed to protect. The first chapter explores the tension starting with the Harvard OncoMouse. A mouse that Harvard sought to patent because it was unusually susceptible to cancers, making it ideal for medical testing. The second chapter is a broad overview of IP law as a whole. The remainder of the book explores the central thesis of the book, the tension between advancing the public good and protecting intellectual property rights, through each of the main areas of intellectual property (trademarks, copyright...

The U.S. District Court for the District of Columbia recently granted summary judgment to plaintiffs in a copyright and trademark infringement case involving technical standards that were incorporated by reference into law.  The case,  American Society for Testing and Materials, d/b/a ASTM International v. Public.Resource.Org, Inc . , is of possible interest to legal researchers given its implications for the accessibility of legal documents. In this case, the defendant was a website dedicated to providing the public with access to free copies of federal, state and local government codes.  Some of the federal codes hosted by the defendant incorporated voluntary industry standards and best practices into federal law by reference, as is permitted under 5 U.S.C. § 552(a)(1)(E) .   The defendant hosted free copies of these standards on its website along with the federal codes, and was sued by the organizations that drafted and publis...

The ABA's Business Law Section has recently published A Practical Guide to Software Licensing for Licensees and Licensors , 6th ed. by H. Ward Classen. This book looks at the issues that both the licensor and licensee will likely encounter during the course of software licensing negotiations. In particular, the author covers the negotiating and contract process, terminology of a license grant, types of licenses, ancillary clauses, boilerplate clauses, software development agreements, confidentially provisions, trade secret information, and escrow agreements. Security and privacy, free and open source software, dispute resolution, and best practices for contract drafting are also among the topics discussed. There are select model forms available and a glossary and technology acronyms list are among the materials in the appendices. The library now has this under call number KF3024.C6 C56 2016 on the new titles shelf located across from the reference desk.

The United States Copyright Office has released a 5-year strategic plan for 2016-2020.  Of particular interest to legal researchers is the Office's plans to deploy a public search engine to allow for online patent research, and well as its plans to digitize older (pre-1978) copyrights and place them online in a searchable format.  The Office's plans include the development of metadata standards for the new patent research system, but specific details about these standards are not yet available.

Earlier this month, Google launched a new version of its Google Patents search engine. Like the previous version, the new Google Patents combines patent records from the United States Patent and Trademark Office (USPTO), European Patent Office (EPO), World Intellectual Property Organization (WIPO), Deutsches Patent- und Markenamt (DPMA), Canadian Intellectual Property Office (CIPO), and China's State Intellectual Property Office (SIPO). What’s different about the new Google Patents is that it uses a machine classification model to integrate Google Scholar’s non-patent materials, which are classified under the Cooperative Patent Classification System. This makes it easier to search for prior art across a wide range of sources, including books and technical journals. The new Google Patents also incorporates Google Translate to allow users to search foreign patent documents using English keywords. For more information, see “About the new Google Patents” on the Google Help page....

Yesterday, the U.S. Copyright Office announced the launch of its new Fair Use Index . Designed to provide the public with searchable summaries of major fair use decisions, the index can be searched by jurisdiction or subject matter. For example, searching the database for 5 th Circuit decisions regarding fair use in satire or parody returns the result of Dall. Cowboys Cheerleaders, Inc. v. Scoreboard Posters, Inc., 600 F.2d 1184 (5th Cir. 1979). The index does not link to the full text of the cases, rather a case brief that explains the basic facts, issue, holding, and outcome. Though the database would be more helpful to practitioners if it linked to the full-text of the cases, it is easy to use and provides information to the public that is easy to understand. Anyone who is interested in learn the basics of how the fair use exception operates in copyright law will find it worth a look. 

Carolina Academic Press has recently published Mastering Art Law by Herbert Lazerow . Art law, as the book points out, is not a cohesive topic like Contracts or Torts but instead focuses on the legal issues faced by the art industry. The author explores the issues of freedom of expression, copyright, publicity and privacy rights, defamation trademarks, title, authenticity of the work, moral rights to a work of art, and tax matters. There is a chapter covering museum law and the author discusses issues pertaining to artifacts as well as restricting international movement of artwork. Each chapter features a "roadmap" section that summarizes what you will learn after reading the chapter and each chapter is concluded with a "checkpoints" section that summarizes the main points. There is an extensive table of cases, table  of constitutions, statutes, regulations, rulings, and treatises, and table of secondary sources. The law library currently has this title , which i...

This year more and more materials have migrated from Westlaw Classic to their permanent home in WestlawNext, including  intellectual property materials. According to Product Specialist Ryan Kaatz, by the end of the year, all intellectual property materials, including patents will have fully crossed-over to WestlawNext. IP Tools are now available in WestlawNext and include the claims history of patents (showing all versions of the patent during the prosecution process) and a references cited section that allows users to quickly view all prior art cited in the patent application. Additionally, Asia Pacific and European patent materials have also migrated to WestlawNext. One thing users should note is the method of accessing WestlawNext patent materials. On the WestlawNext home screen, the All Content tab separates materials included in general search of content through the search bar, and content that must be searched separately. There is a vertical line separating these material...

In February of 2013, Judge Jed Rackoff of New York's Southern District dismissed an attorney's copyright infringement case against Westlaw and LexisNexis. The plaintiff alleged that the online research services improperly made use of his copyrighted briefs by uploading the briefs to their systems for use by other subscribers. Judge Rackoff granted the defendants' motion for summary judgement, ending the case, but only this week was the Memorandum & Order explaining the ruling released. You can read the opinion in its entirety here , the case is White v. West Publishing, No. 02-1340 (S.D.N.Y. July 3, 2014). The opinion finds that the defendants' use of the briefs was permissible fair use under section 107 of the Copyright Act (17 U.S.C. 107), based on the four factors outlined in the statute section. The court found that three of the four factors weighed in favor of fair use, and the remaining factor was neutral. Here's an overview of the court's findings: ...

The United States Patent Office cancelled the Washington Redskins’ name trademark registrations today on the grounds that the team’s name is disparaging to Native Americans. For those interested in examining the legal aspects of this case, the decision to cancel these six trademarks is Blackhorse v. Pro-Football, Inc. , Cancellation Number 92046185.   The trademark was found to be in violation of 15 U.S.C. § 1052(a) . For those interested in researching trademark law generally, the following resources may be useful: The United States Patent Office offers a Trademark Electronic Search System (TESS) as well as a database for Trademark Status and Document Retrieval for those researching U.S. patents. Google also offers a search tool for U.S. patents. The World Intellectual Property Organization provides a database of international Patent Cooperation Treaty applications. HG.org maintains an introduction and guide to researching trademark law, along with lin...

As discussed in my last post, in the 2015 legislative session Texas may consider using state consumer protection law to combat patent trolls. Attorneys General of Vermont and Nebraska, for example, have separately taken action against patent trolls by suing under state consumer protection laws. More recently, Vermont enacted legislation that is specifically aimed to combat patent trolls. But do states have the power to regulate patents at all? And is that the best avenue for relief from patent trolls? Let’s look at some different perspectives: Federal Patent Law & States Due to federal law, states cannot enact their own patent laws. Federal courts have original jurisdiction over civil actions relating to patent and patent infringement (28 U.S.C.A. § 1338). The Vermont law states that a person “shall not make a bad faith assertion of patent infringement.” ( Vt. Stat. Ann. tit. 9, § 4197 (West 2013).   If a patent asserter (i.e. patent troll) is accused of assertin...

In preparation for the 83rd Texas legislative session, both House and Senate committees have been directed to study potential solutions to the growing problem of patent troll litigation. Patent trolls (also known as “patent assertion entities”) are companies that acquire broadly-written patents, often for routine activities like transmitting audio or video online. These entities have no intent to use the patents themselves; their sole source of income is settlements and legal fees related to its patents. The entities send out thousands of letters to potential infringers, demanding exorbitant fees for a license to engage in the patented activity, and threatening suit if the recipient fails to pay for a license. The alleged infringing businesses are forced, even if the allegations are baseless, to either pay the license fee or face costly and uncertain litigation. Much of this litigation takes place in the Eastern District of Texas courts, where plaintiffs are awarded damages or injunc...

Superman, the Man of Steel, was born in 1938, and has been involved in copyright litigation almost as long.   Mr. Mxyzptlk himself could not have created as convoluted a history of a copyright dispute as the one that involved the rights to the Superman property.  The Superman character was the brain-child of Jerome Siegel and Joe Shuster. Their idea, an alien comes to Earth and has super-powers was a new one at the time.   These two Brainiacs sold the exclusive world-wide rights to Superman to Detective Comics (“DC”) for $130.00 and took employment with DC. Superman debuted in the comic-book format in Action Comics #1. He was an instant hit. Siegel and Shuster filed their first lawsuit against DC in 1947 alleging that DC was not paying them their fair share of the profits that DC was reaping from the superhero. After trial the “official referee” found that DC had paid valuable consideration for the rights to Superman and the agreement was valid. Soon after th...