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Quarterly Journal Volume 39, Number 1

All documents are in PDF format*

Judge Richard Linn
Roy J. Epstein, PhD & Paul Malherbe, PhD
In this Article, we discuss implications of a series of recent decisions by the Federal Circuit for economically coherent analyses of reasonable royalty patent damages.  Most notably, the January 2011 decision in Uniloc, USA, Inc. v. Microsoft Corp. declared the "25 percent rule of thumb" to be inadmissible.  But the 2009 Lucent Technologies, Inc. v. Gateway, Inc. decision already signaled a reinvigorated gatekeeper role for the judiciary in damages questions.  These developments affect the assessment of comparability of benchmark licenses, use of the entire market value rule, comparisons of lump-sum versus running royalties, potential use of royalty databases as damages benchmarks, and other issues.  We also discuss application of the Georgia-Pacific factors when no benchmark license is available.  We illustrate our analysis using the publicly available record in i4i Ltd. Partnership v. Microsoft Corp.
Greg Raburn
Can a merchant break into your home and reclaim a book you, not knowing it was stolen property, had innocently purchased?  No, but it seems that merchants can and have entered their customers' electronic readers and deleted digital e-books at will.  In 2009, discovered that it had inadvertently sold infringing works by George Orwell to users of its Kindle device.  To rectify its error, Amazon remotely deleted the e-book files from the devices of customers who had already purchased the works and refunded their money.  Two customers filed a class action lawsuit alleging, among other things, trespass to chattels and violations of the Computer Fraud and Abuse Act.  This Note examines the applicability of these legal theories to the actions taken by, whether and how the first sale doctrine applies to purchases of digitized print media, and also addresses the liability faced by distributors who provide a forum whereby third-party sellers can potentially offer infringing works to the unsuspecting public.  This Note ultimately concludes that customer expectations and conflicting language in the license agreement present with significant contract interpretation issues, that deleting files without first obtaining customer permission opens up a distributor to serious liability under the Computer Fraud and Abuse Act, and that the first sale doctrine should be amended to cover digitized print media.  With the advent of digital e-readers and the growing ubiquitousness of digitized print and other media, this Note seeks to fill a void in the literature on this emerging issue.
Xiyin Tang
Much has been written about the paradoxes postmodernism (specifically in art production) has introduced in contemporary copyright law—that is, postmodernism's emphasis on deconstruction, mechanization, and willful appropriation in its treatment of artistic subject and work. This Article will attempt to reconcile the postmodern paradox with the Enlightenment-based, Progress-centric ideals of the Copyright Clause by situating postmodernism's ahistoricism on a broader historical timeline and positing reasons for the paradigm shift in accord with the greater function of art. I argue that in denying or affirming the legal legitimacy of the new art form, contemporary copyright law runs counter to the constitutional prerogative to promote, rather than halt, the progress of the Sciences, and that greater legal leniency towards the new form of production does not have to, as many fear, result in the end of copyright law as we know it. Rather, it merely involves resituating old, Romantic ideals of forward progress and transformation within the new intellectual paradoxes of the remix, digital age. The fair use doctrine, I suggest, is one viable place in which—by merely reimagining the Romantic notions we now take for granted as truth—we can begin to bring legal analysis in line with contemporary art production, rather than vice versa. 
Emily L. DeStefano
The Lanham Act provides, "any person who believes that he would be damaged by the registration of a mark" may file for opposition or cancellation of the mark.  Recognizing that the statute creates a broad class of persons who may oppose registration of a trademark, the TTAB and reviewing courts apply additional judicially-created standing requirements, requiring an opposer to allege a real interest in the proceeding and a reasonable belief that he may be damaged by the mark’s registration.  As illustrated in the seminal case Ritchie v. Simpson, these requirements do little to limit who may challenge registration of trademarks, especially when it comes to challenges based on section 2(a)’s prohibition against "scandalous" and "immoral" marks.  The lax standing requirements leave trademark owners perpetually vulnerable to frivolous opposition or cancellation proceedings, a consequence that undermines one important purpose of the Lanham Act: to protect the commercial interests of the trademark owner.  This note proposes that the TTAB and reviewing courts revise their interpretation of the Lanham Act's standing requirement for challenging the federal registration of a mark that allegedly violates section 2(a).  To establish standing in opposition and cancellation proceedings on section 2(a) "scandalous" or "immoral" grounds, I propose that the third-party challenger have a real interest in the mark, beyond that of the general public, which is at least of comparable weight to the trademark owner's interest in registration of said mark.  Establishing a real interest in the mark would require a challenger to allege a reason the PTO should deny registration of the mark because of the challenger's objectively perceivable connection to the mark in question.  Requiring the interest to be "beyond that of the general public" is simply a restriction against bringing suit to vindicate rights of the public generally where the challenger has no personal interest in the mark.  Finally, the courts should balance the challenger's alleged interest in the mark with the applicant's interest in retaining the mark, and grant standing only to those challengers whose interest is at least of comparable value to that of the applicant.  This requirement will encourage an examination of the potential damages at stake—the challenger's alleged damage in having the mark registered versus the trademark applicant's actual damage from the loss or rejection of his mark.  Adopting these requirements will effectively limit the class of persons who may challenge registration of trademarks on section 2(a) "scandalous" and "immoral" grounds, thereby protecting trademark owners from wasting time, money, and energy to defend their marks against meritless claims.
Jose M. Recio
In recent years, the patent litigation sphere has witnessed the rise of the Non-Practicing Entity (NPE).  NPEs are patent holders that generate revenues by licensing their patented inventions to manufacturers, rather than practicing the inventions themselves.  An NPE can include both per se beneficial inventive entities, such as universities and small innovators, and entities that some believe only contribute marginally to the United States economy.  In the patent litigation sphere, NPEs secure licenses by leveraging injunctions obtained from federal courts and from the International Trade Commission.  Efforts by NPEs to block patent-infringing imports from foreign nations have raised concerns as to whether the International Trade Commission should permit those efforts.  The eBay decision has heightened such concerns by possibly making it more difficult for NPEs to obtain injunctions in federal courts, thereby making the International Trade Commission an NPE’s primary litigation ground.  This Note proposes a solution to ensure that some beneficial inventive entities, such as universities and patent owners who employ inventors within the United States, are guaranteed access to the International Trade Commission.

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