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Quarterly Journal 41-3

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Table of Contents

Social Network Analysis of Trade Secrets and Patents as Social Relations Members Only

David W. Opderbeck

This article employs the empirical tools of social network analysis to examine the “property as social relations” approach to intellectual property. Social network analysis seeks to describe and model society and culture based on the connections between agents in a network. A “property as social relations” perspective suggests that property rights emerge out of and help construct social relationships. But things become murky when this perspective is applied to basic intellectual property problems. One problem is the relationship between trade secrets and patents. In trade secret law, the social aspects of information have long been recognized. This intuition is confirmed by social network analysis. In fact, a notion of “social rivalry” permeates trade secret law. By contrast, in patent law, information continues to be viewed almost exclusively as a non-rivalrous economic commodity. Social network analysis demonstrates that the “social” qualities of an innovation are largely stripped away when the innovation moves from the trade secret domain to the patent domain. It is unclear, however, whether a “property as social relations” approach to patents would achieve the sorts of results its advocates hope would obtain.

Collateralizing IP Licenses: Present Deficiencies and Proposals for Reform Members only

Peter Picht

This Article argues that the use of IP license collateral at all stages of a secured transaction is unnecessarily impeded by elements of the present legal framework. This Article proposes reforms to remove impediments in all stages of the secured transaction. The attachment stage would benefit from reforming the treatment of “non-attachment” clauses and revising the approach to parties’ duties. The perfection stage would benefit from reformation of “grace periods” and improvement of the filing requirements for perfection. The foreclosure stage would benefit from a better defined scope of foreclosure, imposition of a duty of care upon the creditor’s handling of the license collateral during foreclosure, and reduction of the difficulties to foreclose on a trademark license. These reforms are based on two guiding principles: (1) furthering the use of protected subject matter by fostering the use of IP license collateral; and (2) protecting an established licensing relationship. These reforms would help cure deficiencies in the present legal framework, and would encourage use of IP licenses as collateral.

Getting to Functional: Limiting the Applicability of the Trademark Aesthetic Functionality Doctrine Members only

Allison Midei

Trademark law facilitates a balance between the right of producers to identify their products and internalize the benefits of their established good will and the right of the public to compete through imitation. Current aesthetic functionality jurisprudence threatens to disrupt this balance. The doctrine has caused some courts and commentators to favor competitors too heavily, and others to favor producers to an inappropriate extent. The result is either under-protection of trademarks and confusion as to source, or inhibition of competition. Recent cases have come close to endorsing an aesthetic functionality jurisprudence that would eviscerate trademark protection for successful marks, and the Supreme Court has offered little guidance in this area. This Article argues that aesthetic functionality should be limited to cases where product-design trade dress or a single-color mark is at issue, or, conversely, that aesthetic functionality should be unavailable as a defense where product-packaging trade dress or a trademark is at issue. Adherence to these guidelines for the availability of aesthetic functionality as a defense to trademark infringement would achieve the proper balance between the opposing rights of the producer and the competitor, and would effectively reduce consumer confusion.

Student Notes

Cookie Monsters: Locally Stored Objects, User Privacy, and Section 1201 of the DMCA members only

Joseph Newman

Whether we use laptops, smartphones, or another means to connect to the Internet, our 21st-century devices are constantly acquiring and storing data about us. How do sites such as “remember” us each time we log in? One of the most common methods involves “cookies,” small text files that are stored on a user’s device and are read by a host’s server. While most cookies utilized in the course of browsing are benign, some advertisers use cookies and similar mechanisms surreptitiously and unreasonably to invade user privacy, even when the user has affirmatively voiced a desire to be left alone. Worse still, “Locally Stored Objects” such as the “zombie cookie” make it harder for concerned users to manage cookies stored on their computers.  This Note argues that circumventing a user’s attempts to prevent access to their browser cookies violates section 1201(a)(1)(A) of the Digital Millennium Copyright Act. First, an Internet user’s record of sites visited and stored preferences (“clickstream data”) is a compilation that may be protected under the current copyright regime. Second, the use of deceptive LSOs and zombie cookies in order to bypass the technological barriers protecting user data may constitute a violation of section 1201.

Just About Equivalent: A Comparative Analysis of the Doctrines of Equivalents in the United States and International Jurisdictions Shows That the Varying Doctrines Are Strikingly Similar members only

Aaron Bowling

In today’s international marketplace, successful businesses increasingly realize the possibilities and importance of global expansion. Yet, as business expands into foreign lands, adequate protection of proprietary information in foreign jurisdictions remains a concern. In the patent arena, one area of particular uncertainty is the doctrine of equivalents. While the necessity for the doctrine of equivalents is almost universally recognized, the proper parameters of the doctrine and its appropriate application are widely debated. This Note compares and contrasts the doctrines applied in the United States, the United Kingdom, Germany, and Japan. Each of these jurisdictions balances the interests of the patentee and the public differently, and each accordingly protects the patentee from non-literal infringement in a slightly different manner. This Note analyzes each doctrine in detail, identifying factors that distinguish each doctrine from its counterparts, yet pointing out the similarities that persist amongst them all.