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Quarterly Journal 43-2/3

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Table of Contents

Europe’s Landmark Decisions on Stem Cell Patents: For Inventors, Hope or Mere Illusion? A Guide for Overseas Inventors, Entrepreneurs, and IP Professionals Members Only

Vincenzo Senatore and Christopher Thomas Scott

The study of human embryonic stem cells (hESCs), despite their potential therapeutic usefulness, has raised numerous ethical, legal and political concerns because the derivation of the stem cell lines requires the destruction of human embryos. An alternative method for deriving pluripotent cell lines from human parthenotes raises questions about whether these lines are captured by extant legal definitions of the human embryo in the European Union. This paper analyzes the 2012 decision of the German Federal Supreme Court (Bundesgerichtshof or BGH) in the Oliver Brüstle case, a ruling that allows the derivation of hESCs using methods that do not destroy embryos. We also discuss a recent decision of the Court of Justice of the European Union (CJEU). In the context of parthenogenesis, the court has been ruled that the term "capable of commencing the process of development of a human being" must be understood as meaning that, in order to be classified as a ‘human embryo’, a non-fertilized human ovum must necessarily have the inherent capacity to develop into a human being. We discuss this in light of the recent European Patent Office (EPO) decision, which, unlike the BGH decision, has revoked the corresponding Brüstle’s European patent. We conclude by arguing that the BGH and the CJEU rulings offer hope to overseas inventors of hESC technologies seeking protection for their intellectual property in Europe.

Considering Trademark and Speech Rights Through the Lens of Regulating Tobacco Members Only

Christine Haight Farley and Kavita DeVaney

Many tobacco company trademarks, such as MARLBORO, are extremely valuable.  But valuable trademarks are often vulnerable both to copyists and to parodists.  Tobacco trademarks face the additional vulnerability of onerous public health regulations, which can limit their appearance and use.  When tobacco companies challenge these health regulations they do so on the grounds that the regulations violate their First Amendment speech rights.  The law applied in these challenges is well developed, clear, and predictable.  When tobacco companies challenge unauthorized third-party uses of their marks, the speech rights involved are dealt with in a strikingly different manner.  Under trademark law, there is an assortment of approaches to protecting speech, which make it difficult to predict outcomes.  How can the non-false use of a trademark be so robustly protected as speech in one case and so slackly protected in the other?  Juxtaposing these areas of law through the litigation strategies of one industry reveals curious presuppositions about speech in both laws.

Corporate Cybersecurity Realism: Managing Trade Secrets in a World Where Breaches Occur​​ Members Only

John Villasenor

Cybersecurity intrusions aimed at extracting trade secrets are an unfortunate feature of the 21st century business landscape. In response, many companies have made cybersecurity a top priority, and their networks and systems have become much more secure as a result.

However, while improving security is a critical goal, it should not be the only goal. Companies also need to give attention to what might be called the corporate cybersecurity elephant in the room: How does the inevitability that their networks will sometimes be compromised impact best practices for handling trade secrets despite those breaches? This paper aims to provide some answers to that question.

As discussed herein, companies should 1) “segment” not only their networks but also the trade secret information on those networks, thereby limiting the impact of any single cybersecurity breach, 2) avoid overreliance on NDAs, since over-disclosure can lead to increased exposure to cyber-enabled trade secret theft, 3) act more quickly on patentable inventions in light of recent changes to U.S. patent law that can increase the incentives driving trade secret theft, 4) ensure that cybersecurity considerations are be part of patent/trade secret decisions, and 5) be aware of—and, as appropriate, take advantage of—new changes to U.S. patent law the increase the potential benefits of early commercial use of trade secrets.

As content owners increasingly choose to use Internet service providers’ private copyright enforcement mechanisms to deal with infringing uses over sending a traditional DMCA takedown notice, flaws in the designs of the private enforcement mechanisms yield problematic results. This Note examines YouTube’s Content ID as a case study of an automated copyright enforcement process that requires no affirmative action from a copyright holder to initiate, to identify and propose solutions to the various problems that can arise when Internet service providers implement similar enforcement mechanisms.

Charles Mitchell

In Gunn v. Minton, the Supreme Court established a virtually per se rule that patent legal malpractice claims do not “arise under” federal patent law, because the purely hypothetical and retrospective patent law issues they raise are not “substantial” federal issues important to the federal system as a whole and because there is an especially strong state interest in regulating the legal profession. But, by calling into doubt two decades of Federal Circuit precedent holding that substantive patent questions, such as infringement, validity, and enforceability, are “substantial” federal issues, Gunn also created significant uncertainty regarding whether other state law claims that turn on these substantive patent questions and involve extant, as opposed to merely hypothetical, federal patent rights “arise under” the patent laws. This note explores this undesirable post-Gunn jurisdictional uncertainty, and argues that both efficiency considerations and Congress’s clearly expressed intent favor continuing to recognize exclusive federal jurisdiction, with exclusive appellate jurisdiction in the Federal Circuit, over other state law claims, such as breach of contract and business disparagement claims, that necessarily raise actually disputed and substantive patent questions involving extant federal patent rights. 

The existing body of case law applying copyright to appropriation art is inconsistent, featuring disagreements within and among the United States courts of appeals that have created confusion over the proper standard for evaluating this new form of contemporary art. Cases involving art create unique problems for fact finders who, in the absence of a clear framework, may be more prone to relying on engrained biases toward artists working in a movement they may not understand. The recent decision in Cariou v. Prince illustrates this concern, highlighting issues inherent in a fair use analysis and the prevalence of judicial bias in appropriation art cases. For example, the analysis of “transformativeness” within the first fair use prong often rests on the continued use of reductive categories of parody and satire that require varying degrees of critical commentary on either the underlying work or society at large to reach a determination. Many appropriation artworks represent neither parody nor satire and evince little physical difference from the underlying work. In these less straightforward cases, courts would benefit from a fuller evidentiary record supplemented by the testimony of experts in the art and art history fields. This note argues that expert testimony is essential to art cases that evaluate transformativeness, because the best way to understand what appropriation artists like Richard Prince do when they “appropriate” other copyrighted works is to attempt to situate the work within the broader art historical and critical context. This note does not argue that transformative use need be found every time. Allowing parties to introduce evidence from art experts on contemporary customs and historical tradition and context may promote better understanding of the artistic process and the prevalence of borrowing, copying, and appropriation in art.