The Role of the Subconscious in Intellectual Property Law

Human behavior stems from a fascinating tangle of conscious and subconscious impulses. Issues resulting from this combination can become relevant in a wide variety of legal contexts, including choosing where to place a burden or whom to hold liable. These nuances are particularly important in intellectual property, as much of it stems from the human mind as it interacts with the natural world as well as previous creations. This piece will consider how Intellectual Property law handles subconscious impulses on the part of participants in the system. Looking at examples from Copyright, Trade Secret, and Patent law, this Article argues that although such impulses may be treated differently in different areas of Intellectual Property law, the variations can be understood in the context of the moral stance adopted in the doctrinal area. Where the connection between the moral stance of the doctrine and the approach taken by the doctrine is muddled, it may signal a doctrine in disarray and suggest the need for reformulation. Connecting this thread throughout the various areas of Intellectual Property law may lead to more equitable and effective doctrinal choices. At the very least, it has the virtue of packaging the doctrinal choices in more palatable form for those who inhabit the world of intellectual property rights. Continue reading

The Exportability of the Principles of Software: Lost in Translation?*

The American Law Institute approval of The Principles of Software Contracts is a significant milestone in the history of software law. The project began in 2004 because of the flaws of the Uniform Computer Information Transactions Act concerning this issue, problems strengthened by the widely held perception that the law at the time was “undeveloped, confused, and conflicting.” Software licensing is presently America’s third largest industry and has suffered from the mechanical extension of the law of sales to software over the last forty years, much like courts imported “horse and buggy law” to resolve problems posed by the automobile. Thankfully, the Principles achieve the objective of bringing common sense to the common law of software contracts. However, the project is heavily centered on the United States with limited exportability to the European Union in its current form. This piece looks at the path of software contracting law over the past twenty years, the Principles of Software Contracts itself, and its exportability to the rest of the world, particularly the European Union.

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Shifting the Burden: Proving Infringement and Damages in Patent Cases Involving Inconsistent Manufacturing Techniques

The law is clear that it is the plaintiff-patentee’s burden to prove both infringement and damages. It is unclear, however, in cases involving inconsistent manufacturing techniques, what level of evidence is required to meet this burden and when, if at all, such burden should pass to the defendant-infringer to provide rebuttal evidence. One consideration in this analysis is when findings of infringement can extend to the entire product line. Another matter considered in this paper is how the court deals with the confusion of goods and the commingling of records. This Article examines the various patent doctrines that may have some bearing on these issues, analyzes the relevant and analogous statutory law and case law, and, ultimately, proposes suggestions as to how to handle cases of this nature.

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A Brief History of the Commercial Speech Doctrine (With Some Implications for Tobacco Regulation)

The passage of the Family Smoking Prevention and Tobacco Control Act of 2009 delegated substantial new responsibility to the U.S. Food & Drug Administration. Charged with implementation of the Act, the Food & Drug Administration issued a call for public comment on what approaches to take. The University of California, Hastings College of the Law hosted a symposium on the topic in August 2009, at which Professor Ashutosh Bhagwat gave commentary on the areas of tobacco advertising and marketing. This essay is based upon Professor Bhagwat’s remarks at this event. Tracing the Supreme Court’s jurisprudence of the commercial speech doctrine since 1976, Professor Bhagwat discusses where the Court may be headed in the future and what the implications might be for potential restrictions on tobacco advertising.

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State and Local Policy as a Tool to Complement and Supplement the FDA Law

With the recent passage of the Family Smoking Prevention and Tobacco Control Act of 2009, the U.S. Food and Drug Administration now has the authority to regulate tobacco sales, marketing, and use. Though this law is a beneficial step, some gaps remain. There are significant merits to state and local governments enacting local laws to fill these gaps. State and local governments can also effectively partner with the Food and Drug Administration in enforcing various provisions of the law. There are a great deal of local policy options available to state and local governments. This Article provides both recommendations and questions about how to effectively enforce Food and Drug Administration law.

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At first glance, the Federal Circuit’s categorical rejection of the “useful, concrete, and tangible result” test announced in State Street in favor of the machine-or-transformation test for patent-eligible subject matter could be seen as the death knell for business method and software patents.  If the Court upholds Bilski, software patents issued in the past 20 years, as well as many business method patents, might be invalidated.  However, this might not be the case.  Gene Quinn, a patent attorney and the founder of observes that, “[i]n fact, based on what is going on at the USPTO one could make a convincing argument that it is actually getting easier to obtain patents that relate to software and computer related processes.

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In affirming the ITC’s holding as to Princo’s first tying claim, the court found that a reasonably broad reading of the Lagadec patent (Sony’s digital method) would support a finding of infringement where anyone practiced the Phillips analog method, currently used as the industry standard.  Under the broad construction, since neither patent could be practiced without infringing the other, the court found the Lagadec patent to be essential to the patent pool.  However, the Federal Circuit vacated and remanded Princo’s claim of patent misuse.  The court found persuasive Princo’s argument that Phillips and Sony violated anti-trust law by agreeing not to compete, and remanded the issue to the ITC to determine whether  there was in fact such an agreement and whether the Lagadec method could realistically compete with the Orange Book standard.

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