Tag Archives: 2006

September 26 / All Articles, Other Intellectual Property

Transcript Of 2006 Telecommunications Federalism Conference: Intro And Opening Remarks



Presents its




Introduction by The Honorable David M. McIntosh And Opening Remarks by The Honorable John M. Engler


The Honorable David M. McIntosh, Mayer Brown Rowe & Maw, and former Member, United States House of Representatives

The Honorable John M. Engler, President, National Association of Manufacturers, and former Governor of Michigan


September 26 / All Articles, Other Intellectual Property

Transcript Of 2006 Telecommunications Federalism Conference: Role of Public Utilities Commissions



Presents its




The Role of Public Utilities Commissions



The Honorable Kathleen Q. Abernathy, Akin Gump Strauss Hauer & Feld LLP, and former Commissioner, Federal Communications Commission

The Honorable Larry S. Landis, Indiana Utility Regulatory Commission

The Honorable Connie Murray, Missouri Public Service Commission

The Honorable Gregory E. Sopkin, Chairman, Colorado Public Utilities Commission

Mr. Randolph J. May, Senior Fellow and Director of Communications Policy Studies, The Progress & Freedom Foundation, Moderator

November 7 / All Articles, Patent

Remembering The Public’s Interest In The Patent System – A Post-Grant Opposition Designed To Benefit The Public

Patents are supposed to benefit the public. The Constitution implicitly expresses this intent [1] and the Supreme Court has so interpreted it. [2] Yet the current patent system falls miserably short of realizing this purpose in several critical respects. One glaring example of the system’s failure is the absence of a timely, inexpensive mechanism for invalidating the high number of bad patents being issued. As a result of this void, the public is suffering and the need for reform is dire.


The first step in any significant patent reform proposal should be consideration of the constitutional basis for granting patents. Article I, Section 8, Clause 8 states that Congress shall have the power “to promote the progress of useful arts … by securing for limited times to inventors the exclusive right to their discoveries.” [3] Implicit in this clause is an emphasis on a system having limited scope designed to benefit the public — not on an overly expansive system preoccupied with the rights of inventors, corporations or other entities. Thomas Jefferson, the chief architect of the original patent system, [4] espoused this view by resolutely stating that patents are for “the benefit of the public” and unequivocally rejecting the theory that inventors have natural rights in their inventions. [5] And the Supreme Court recognized that Congress’ power to adopt a patent system is not a blanket one, but is instead limited by the Constitutional intent of promoting society’s welfare. It stated, “Congress … may not overreach the restraints imposed by the stated constitutional purpose. Nor may it enlarge the patent monopoly [system] without regard to the … advancement or social benefit gained thereby.” [6] Thus, Congress may adopt a patent system to promote innovation useful to the public, but the system must not exceed its public-centered constitutional aim.


So how is the current patent system exceeding this constitutional restraint? It is allowing too many bad patents to prevail, without offering an inexpensive and timely mechanism for invalidation. Therefore, by virtue of omission, it is “overreach the restraints imposed by …  constitutional purpose,” ignoring the “social benefit” gained by granting patents, and overlooking the fundamental fact that patents are for the “benefit of the public.” [7]


The problems associated with the existence of bad patents and the need for an effective, inexpensive vehicle for challenging them are nothing new. Over the past twenty-five years, several laws were proposed and passed intending to remedy these ills. [8] Most recently, Congress introduced a bill aimed at curbing the adverse effects of bad patents, [9] and prominent policy organizations [10] and commentators [11] advocated for, inter alia, the adoption of a new post-grant opposition as an antidote to the poison of bad patents. While these recent developments are certainly promising, without due attention given to the “advancement or social benefit gained thereby,” such measures may fall upon deaf ears or fail to reform the patent system in a manner that furthers the constitutional mandate of promoting the public welfare. [12]


Part II of this paper briefly explains the meaning of bad patents and then summarizes past legislative attempts to design an administrative review procedure for correcting them. Part III discusses the provisions of an administrative post-grant opposition procedure contained in a patent reform bill recently introduced in Congress. Part IV provides a public welfare rationale for adopting a new administrative post-grant opposition highlighting the adverse public effects of granting bad patents. Part V argues for the addition of specific provisions to the current bill that better serve the constitutional purpose of advancing the public’s welfare….


Eric Williams *

November 7 / All Articles, Copyright

Shooting The Messenger: ISP Liability For Contributory Copyright Infringement

Internet Service Providers (ISPs) [1] are an essential component of the internet: they enable users and content providers to connect with one another online. [2] In enacting the Digital Millennium Copyright Act (DMCA), the purpose of which was to strengthen copyright protections in the digital realm, Congress recognized both the important role played by ISPs and the danger of copyright infringement liability for ISPs under existing case law. In response to this concern, Congress included the Online Copyright Infringement Liability Limitation Act (OCILLA) safe harbor provisions [3] to shield innocent ISPs from liability for contributory copyright infringement.


Recent trends in judicial enforcement of contributory copyright infringement claims against ISPs and judicial interpretation of the DMCA safe harbor provisions, however, undermine the balance sought by Congress in the DMCA by imposing excessive liability upon ISPs. [4] The danger of this trend is that such enforcement will have a significant chilling effect on ISP investment in the internet, which fosters both the growth of e-commerce and the ability of a larger segment of the population to participate in the internet community– both of which ultimately benefit the holders of intellectual property rights.


Shielding ISPs from liability for contributory copyright infringement in accord with the DMCA safe harbor provisions does not leave copyright holders without the means to prevent infringement in the digital realm. The DMCA offers numerous options for copyright holders in cyberspace that are not available in “real space,” such as the technological self-help anti-circumvention provisions of 17 U.S.C. § 1201, [5] the subpoena provisions of 17 U.S.C. § 512(h) [6] that enable copyright holders to locate and bring suit against direct infringers, and the notice and takedown provisions of 17 U.S.C. § 512(b)-(d). [7]


Parts II and III of this note discuss the law of contributory copyright infringement and the safe harbor provisions of the DMCA, respectively. Part IV discusses recent judicial enforcement of contributory copyright infringement claims against ISPs and the interpretation and application of the DMCA safe harbor provisions in those cases. Part V discusses the policy implications of such decisions and argues for a more faithful judicial adherence to the congressional mandate….


David Ludwig*


October 4 / All Articles, Copyright

Are Auteurs Really All That Special?

Ever since 1954, when film critic Francois Truffaut “asserted that the worst of Jean Renoir’s movies would always be more interesting than the best of Jean Delannoy’s,” the director has come to be seen as the auteur of the films she directs. This idea, while fine for film critics, has unnecessarily crept into the law. Directors currently enjoy a unique status under UK law due in part to the idea that they are the sole creative auteur of a film. This article questions this special status and suggests some changes within the framework of existing EU directives in order to bring the rights granted to those who work on a film more in line with those who work on other creative works.


1.0 Introduction


Ever since 1954, when film critic François Truffaut asserted that the worst of Jean Renoir’s movies would always be more interesting than the best of Jean Delannoy’s, [1] the director has come to be seen as the author, or, in French, the auteur, of the films she directs. This view of the director-as-author is known as Auteur Theory. This theory posits that, within the confines of the industrial process of filmmaking, a director can leave a specific stamp–her own distinctive style–on a film. [2]


This article examines the special position of film directors in the United Kingdom under the Copyright, Designs and Patents Act 1988 (CDPA). To a certain degree, UK law accepts Auteur Theory–the idea of the director-as-author. This places the director in a unique position. In the first section, this article will set out the exact contours of the director’s rights described in the CDPA by looking at authorship, copyright term length, and moral rights. This section establishes that directors receive authorship when other contributors do not; receive a greater-than-average copyright term; and receive moral rights to the exclusion of any other contributor.


After establishing the director’s position under UK law, this article then analyzes the rationale behind these three unique rights. Two ideas are presented as the basis for the different laws for directors in the CDPA–the difference between creation and creativity, and the practical needs of film production. Using these two ideas, I then critique the special position of the director, and offer two changes to the CDPA. This article proposes that the copyright term should be brought in line with other terms by granting authorship to other creative contributors, and that these other contributors should also receive moral rights….


Jordan S. Hatcher *

January 10 / All Articles, Trademark

“Fair Use” Trumps Likelihood Of Confusion In Trademark Law The Supreme Court Rules In KP Permanent v. Lasting Impression

In KP Permanent Make-Up, Inc., v. Lasting Impression I, Inc., the U.S. Supreme Court held that a defendant asserting the affirmative defense of fair use in response to a claim of trademark infringement does not have to shoulder the burden of proving there was no likelihood of confusion as a result of their fair use. [1] The Supreme Court granted KP Permanent’s petition for certiorari in this matter to resolve a split among six of the federal courts of appeal. [2]


This article will first consider both the common law and statutory history underlying the fair use doctrine of trademark law. The article will then consider the KP Permanent case and its procedural history, taking into account the shortcomings of the Supreme Court’s holding, not only with respect to the decision, but also to the possible ripple effects of that decision. Finally, a test will be suggested that would offer some protection for business owners of incontestable descriptive marks whose rights have been somewhat diminished after KP Permanent.


Michael Fuller *