Quarterly Journal 49-2
In This Section
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.
Agnes Beatrice Gambill
Kari Kammel, Jay Kennedy, Daniel Cermak, and Minelli Manoukian
RESPONSIBILITY FOR THE SALE OF TRADEMARK COUNTERFEITS ONLINE: STRIKING A BALANCE IN SECONDARY LIABILITY WHILE PROTECTING CONSUMERS
This paper provides a comprehensive analysis of the current state of the legal framework secondary trademark liability for the sale of counterfeit goods by third parties from a legal perspective and through the perspective of the opportunity or crime triangle used by social scientists. This issue continues to grow as technology rapidly expands and as e-commerce explodes and the current legal framework designed to protect consumers and trademark owners fails since it was crafted for a brick-and-mortar environment.
Jan Schmitz and Fabian Hoffmann
SEP ROYALTY RATE CALCULATION ON THE BASIS OF THE PRESENT VALUE ADDED (PVA): A MODEL AND ITS APPLICATION IN THE GERMAN LEGAL ORDER
The most common method for standard essential patent (SEP) valuation and determining a fair, reasonable, and non-discriminative (FRAND) royalty rate is based on comparable license agreements. This method is relatively simple to apply but has several disadvantages. First, license agreements are often not comparable on important points. Second, they are often based on a selection by the submitting party, who has an interest in selecting only favorable license agreements for comparison. And third, those selected agreements might not have resulted from a fair negotiation, because of possible market power by either of the two sides.
In this Article, we therefore suggest how the present value added (PVA) methodology can be used to calculate the FRAND value of specific SEP technologies, avoiding biases that are intrinsically linked to the comparable licensing approach. The PVA approach can also serve as valuation methodology for the whole standard in the context of the Top-Down approach. To illustrate the approach, we present a simple interperiodical valuation model.
To derive a FRAND royalty rate, we then suggest how the PVA created can be apportioned between the SEP holders and the implementer. The second contribution of this Article is therefore the normative discussion of the apportionment of the PVA.
Finally, we show how the PVA methodology can be practically applied by running a hypothetical example of a full FRAND royalty estimation. The German legal framework has been chosen, since it is the European jurisdiction where an increasingly large number of legal disputes related to SEPs are adjudicated.
PARASITES OR BOOSTERS OF HUMAN CREATIVITY?: A MODEL TO SOLVE COPYRIGHT ISSUES OF TRAINING DATASETS OF ARTIFICIAL INTELLIGENCE BEFORE ALPHAART DEFEATS HUMAN ARTISTS
Artificial intelligence (“AI”) is becoming more sophisticated and widespread, as it is considered the source of wealth for companies and governments across the world. This trend is also evident in the creative industry where AI has advanced to the point where it generates high quality musical and visual works that appeal to the masses. With such evolution of AI technology, there is a growing concern that AI may become a threat to human creators: if AI successfully produces more popular creative content than human creators do, AI may outcompete human creators in the job market and eventually undermine their incentive to create. In order for an AI system to generate creative content, however, it must be fed with similar or identical types of creative content that may be under copyright protection. This Note explains that such use without authorization may amount to copyright infringement, but currently it is difficult to enforce the rights of copyright holders due to the opacity of data used in training creative AI, that is, AI that produces creative works. This Note then examines the current legislative developments regarding the copyright issues of AI systems and discusses how the tensions between copyright owners and technology industry stakeholders have been alleviated. Finally, this Note calls for a model that increases data transparency and balances interests of both human creators and AI developers, and proposes the Good Data Model—which consists of (1) a data certification program, (2) a license scheme for collecting online content, and (3) a suspicious AI reporting system—as a solution that helps build a healthy ecosystem where creative AI and human creators co-exist peacefully and achieve super-creativity together.
A NEW INTERNATIONAL PATENT COURT: THE EXTRATERRITORIAL SOLUTION TO THE EXTRATERRITORIAL PROBLEM OF WESTERNGECO
Patent law is territorial by nature, as each country decides for itself which inventions are patentable, and the scope of protections offered to them. Even so, attempts to harmonize patent laws on an international level have served to bring greater unity across a wide range of the laws from validity to priority dates. In light of this growing trend in our increasingly global marketplace, this Note recommends the creation of an international patent court, organized through the United Nations in order to achieve as broad of international coverage as possible. The jurisdictional scope of this court would be narrowly tailored, however, as a response to the decision of the Supreme Court of the United States in WesternGeco v. ION Geophysical, which allowed for the award of foreign damages resulting from domestic infringement. Skeptics of this decision have warned that it may prompt foreign nations to extend their patent protections so as to cover activities in the United States and elsewhere, thereby ignoring the traditional territorial borders of patent laws. This Note examines the relevant case law behind this issue, as well as existing international agreements representative of harmonizing efforts. The goal is to design a court capable of resolving these cross-border issues on an international basis should they arise, while keeping its objectives narrow enough to encourage compromise, cooperation, and participation among the world’s many different patent systems.
2022 Virtual PCT Seminar
July 11 to August 1, 2022This live multi-day webinar offers a deeper “nuts and bolts” introduction to the Patent Cooperation Treaty. Learn about recent updates and frequently performed tasks, tools and resources, strategies, and best practices. The Webinar is focused primarily on the important PCT work carried out by paralegals, paralegal managers, and legal staff. Because attorneys are ultimately responsible for instructing staff and the work they perform, the Webinar welcomes and encourages attorney attendance. Webinar materials and discussions have proven to be helpful to all attendees, including attorneys, paralegals, patent agents, portfolio managers, and administrative assistants.
2022 PCT Seminar Web Series
July 11 to August 1, 2022 | This is a Non-CLE EventThis live multi-day webinar series offers a deeper “nuts and bolts” introduction to the Patent Cooperation Treaty. Learn about recent updates and frequently performed tasks, tools and resources, strategies, and best practices. Perfect for Paralegals, docketing specialists, and other legal staff. Become an AIPLA member and save on the registration fee.
AIPLA CLE Webinar: Daubert-Proofing Your Survey: Best Practices for Survey Evidence in Trademark Infringement and False Advertising Litigation
July 14, 2022 12:30 PM to 2:00 PM | 90 Minutes of CLEThis webinar will focus on the best practices for surveys in trademark infringement and false advertising litigation. We will review the court-approved methodologies for the various types of surveys often used in trademark infringement and false advertising litigation. We will then present the recent case law discussing survey evidence, the pitfalls that often lead to a survey being excluded or accorded little weight, and the best practices for increasing the likelihood that surveys will be admitted and used persuasively to help prove your case. This webinar is a must not just for trademark litigators but also in-house counsel who want to make sure that the expense of a survey is well justified.
AIPLA Ethics Webinar: Trending Ethical Issues for Virtual (and Remote) Practitioners: Where You Can Practice and What You Should Consider
July 19, 2022 12:30 PM to 2:00 PM | 90 Minutes EthicsA spinoff of the a live program at the recent AIPLA 2022 Spring Meeting, this program discusses the UPL issues related to remote practice (including the status of the rules nationwide) as well as the ethical considerations when working remotely. Hear from both the practitioner perspective and the academic perspective from two presenters who were both formerly attorney regulators. They will discuss your obligations when “working from home” and how best to comply with them.
2022 AIPLA Corporate Practice Institute
August 23 to 24, 2022 | Up to 360 minutesAIPLA is hosting a two-day Virtual Corporate Practice Institute with limited unique sponsorship opportunities for our exhibitors. The Institute is designed for Corporate in-house counsel, including attorneys and patent agents. The program will run from 12 noon to 5:30 and include 3 one-hour CLE sessions and a one-hour networking session each day. Registration coming soon!