Quarterly Journal 47-4 Volume 47, Issue 4 January 2020

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The AIPLA Quarterly Journal, a publication of the American Intellectual Property Law Association, is housed at the George Washington University Law School and is edited and managed by an Editorial Board of intellectual property experts and a staff of law students under the direction of the Editor-in-Chief, Professor Joan Schaffner.

The Quarterly Journal is dedicated to presenting materials relating to intellectual property matters and is published four times per year. Editorial Board members (all of whom are lawyers) are selected based upon demonstrated interest and experience, and student staff members are selected from the students of the GWU Law School.

Reece-100 QJ 47.4 - Distinctiveness of Marks Suffering Genericide: A Survey of Genericide Cases

Brian M.Z. Reece

Distinctiveness of Marks Suffering Genericide: A Survey of Genericide Cases

Genericide occurs when a trademark becomes the generic term for a product, rather than serving to identify the source of the product. Genericide claims typically arise in the course of trademark infringement litigation, when it is raised as a counter-claim to infringement. As is typical with other types of litigation, genericide claims are often decided at summary judgment.

The “primary significance” test, created by the Supreme Court and codified by statute, provides the inquiry for courts to apply when addressing possible genericide. I surveyed over 60 cases with genericide claims as the first step in building a database of all cases with genericide claims. I looked at the distinctiveness and strength of the marks in each case. My goal was to determine if fanciful marks may be more susceptible to genericide claims than arbitrary or even suggestive marks.

My research did not reveal any clear trend. In every scenario, however, a business using a fanciful mark in connection with a novel product would be wise to also develop and market a generic name for the product.

Thomas-100 QJ 47.4 - Modding the Implied License Doctrine: An Estoppel License Framework for Video Game Mods

Andrew F. Thomas

Modding the Implied License Doctrine: An Estoppel License Framework for Video Game Mods

Video game modifications have ignited radical innovation within the video game industry by being the basis for some of the most popular games. Many developers have encouraged user-created modification by also providing the resources for players to create. However, under current copyright law, video game modifications are a derivative work of the original game, so video game developers have the right to prevent users from publishing their creations.

Video game developers retain control over user-created modifications either by applying their statutory rights or through restrictive End User License Agreements. The control exerted by developers is contrary to the developers own actions which seem to be granting an implied license to create.

This article will examine if there is an implied license under the doctrine or whether the doctrine could be modified to justify video game modifications.

Reinke-100 QJ 47.4 - The Incorporation Test: Putting the Public Display Right Back Online

Daniel Reinke

The Incorporation Test: Putting the Public Display Right Back Online

At times, courts have struggled to apply the Copyright Act to cases involving the Internet.  This is understandable given the fact that the most recent version of the Copyright Act was passed in 1976 and the Internet would not even exist, at least not in its current form, until later.

One such area where courts have had issues is in applying the public display right to the issue of inline linking. In short, web designers use inline links to cause images, or other materials, stored on other websites’ servers to seamlessly appear on their own website. 

Some courts, including the Ninth Circuit in the 2008 case Perfect 10, Inc. v. Amazon.com, have said that this is not infringement of the public display right as the linker does not have physical possession of the copyrighted material. This is known as the server test. 

This note argues that the server test is not the best approach to tackling the question of infringement of the public display right. Rather, the incorporation test, which was rejected by the Ninth Circuit but has been adopted by a handful of district courts, is a better approach as it better conforms with the language and structure of the Copyright Act as well as recent Supreme Court precedent.

Furthermore, although linking is important to the health of the Internet, adopting the incorporation test will not seriously chill linking like some commenters fear, as the incorporation test is rather narrow in its scope and, furthermore, linkers can still rely on many already extant protections in the Copyright Act such as fair use and DMCA safe harbors.

Tian-100 QJ 47.4 - Patents in the New Tax Regime: Revising the Capital Gains Carve-Out

Vivian Tian

Patents in the New Tax Regime: Revising the Capital Gains Carve-Out

The Tax Cuts and Jobs Act of 2017 has had tax implications for just about every practice area, including intellectual property law. In particular, the new Section 1221 of the Internal Revenue Code explicitly removes capital gain treatment from self-created intellectual property. Although this provision may be interpreted to have little effect in the context of the preexisting Section 1235, under which certain patent transfers are taxed at capital gain rates, Congress likely intended for it to have a significant effect. As such, the new provision creates an adverse situation for patent inventors and investors.

This paper proposes that Congress create a carve-out for patents analogous to what musical intellectual property currently has in Section 1221(b)(3). In the alternative, Congress should create an equitable solution for self-created intellectual property by removing the Section 1221(b)(3) carve-out while simultaneously reducing the current tax code’s complexity.

Zou-100 QJ 47.4 - Fixing the Hatch-Waxman Imbalance: A Proposed Solution to the Problem Created by Inter Partes Review

Winston Zou

Fixing the Hatch-Waxman Imbalance: A Proposed Solution to the Problem Created by Inter Partes Review

The Hatch-Waxman Act, enacted by Congress in 1984, significantly changed the landscape of the pharmaceutical drug market.

By giving generic manufacturers a faster pathway to market entry while providing brand name drug companies with additional periods of market exclusivity on their patented drugs, Congress struck a balance between the competing interests of both parties.

Recently, the enactment of the America Invents Act, along with the corresponding initiation of inter partes review, has disrupted this Hatch-Waxman balance of interests by providing generic manufacturers a faster pathway to market entry.

This Note will review currently proposed solutions to the issue while recommending its solution.

Knobbe Martens

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