The European Union “Software Patents” Directive: What Is It? Why Is It? Where Are We Now?

By: Robert Bray

This paper has been adapted from a presentation given by the author at Duke University School of Law’s “Hot Topics in Intellectual Property Law Symposium” on April 1, 2005. It first presents an overview of the EU “Software Patents” Directive and many of the amendments that have been proposed and adopted. It then suggests a number of ways in which Europe can lead the world in developing a system that balances the interests of patent protection and open-source software.

Cite: 2005 Duke L. & Tech. Rev. 0011

Posted in International

Google Library: Beyond Fair Use?

By: Elisabeth Hanratty

Last December Google announced the formation of partnerships with select major libraries to begin digitizing and storing the libraries’ collections online. Google aims to provide individuals with the ability to search the full text of these books from anywhere using the Google search engine. This project will greatly increase access to those works in the public domain, but what about the books still under copyright protection? This iBrief examines the copyright implications of this ambitious project and concludes that the project, as described, does infringe the rights of copyright holders. It further concludes that while such infringement is unlikely to be found to be a fair use, it may ultimately be in the copyright holders’ best interests to acquiesce to Google’s infringement.

Cite: 2005 Duke L. & Tech. Rev. 0010

Posted in Copyrights & Trademarks

Troll or No Troll? Policing Patent Usage With an Open Post-Grant Review

By: David G. Barker

In December 2004, a mystery business, JGR Acquisitions Inc., purchased the patent portfolio of bankrupt Commerce One at auction. Commerce One had not previously enforced the acquired patents and many companies were using the patented technologies at the time of the auction. Patent watchdog groups argued that JGR–a potential patent troll formed solely to purchase Commerce One’s patents–should not be able to use the patents as a vehicle to extract licensing fees and that the patents should lapse into the public domain. Under current law, however, there is no provision for patents to be invalidated merely because they are used in a manner that discourages innovation. This iBrief argues that in order to keep patent trolls from stifling innovation and to protect legitimate patent holders, the Patent and Trademark Office should require an open post-grant review whenever patents are renewed or sold.

Cite: 2005 Duke L. & Tech. Rev. 0009

Posted in Patents & Technology

The Dormant Commerce Clause and State Regulation of the Internet: Are Laws Protecting Minors From Sexual Predators Constitutionally Different Than Those Protecting Minors From Sexually Explicit Materials?

By: Chin Pann

Several states have enacted statutes to protect minors from harmful or obscene materials disseminated over the Internet, as well as from pedophiles seeking to use the Internet to lure them into sexual conduct. State and federal courts have diverged in their analysis of the Dormant Commerce Clause’s impact on state regulation in these areas. While state courts have held that the Dormant Commerce Clause does not invalidate state luring statutes, federal courts have been consistent in finding state dissemination statutes unconstitutional. This iBrief summarizes recent state and federal jurisprudence in this area and concludes that state courts have not been successful in distinguishing state luring statutes from federal case law on state dissemination statutes. Therefore, state courts have prematurely aborted the Dormant Commerce Clause examination.

Cite: 2005 Duke L. & Tech. Rev. 0008

Posted in CyberCrime

Television: Peer-To-Peer’s Next Challenger

By: D. Branch Furtado

The entertainment industry has obsessed over the threat of peer-to-peer file sharing since the introduction of Napster in 1999. The sharing of television content may present a compelling case for fair use under the long-standing “Betamax” decision. Some argue that television sharing is fundamentally different than the distribution of music or movies since television is often distributed for free over public airwaves. However, a determination of fair use is unlikely because of the fundamental differences between recording a program and downloading it, recent regulation to suppress unauthorized content distribution and shifts in the television market brought on by new technology.

Cite: 2005 Duke L. & Tech. Rev. 0007

Posted in Copyrights & Trademarks

Plugging the “Phishing” Hole: Legislation Versus Technology

By: Robert Louis B. Stevenson

This iBrief analyzes the Anti-Phishing Act of 2005, legislation aimed at curbing the problem of “phishing.” Phishing is the sending of fraudulent emails which appear to be from legitimate businesses and thereby fooling the recipients into divulging personal information such as credit card numbers. While this legislation may provide some assistance in the fight against phishing, it is limited by the global nature of the Internet and the ease with which phishers can hide and avoid judgments. This iBrief therefore concludes that although the Anti-Phishing Act can play a supporting role in the battle, technological solutions are the most effective means of reducing or eliminating phishing attacks.

Cite: 2005 Duke L. & Tech. Rev. 0006

Posted in CyberCrime

Willful Infringement and the Evidentiary Value of Opinion Letters After Knorr–Bremse v. Dana

By: Joshua Stowell

Recently, the Federal Circuit in Knorr-Bremse v. Dana overruled almost twenty years of precedent by striking down the adverse inference doctrine, which had created a negative presumption against any alleged patent infringer for failing to obtain and disclose a patent opinion letter at trial. The decision, while strongly supported by numerous intellectual property and business associations, has created uncertainty for patent attorneys regarding the use of opinion letters in litigation and the acceptable methods for proving willful infringement. This iBrief addresses two specific questions left unanswered by the decision. It concludes that (1) Federal Circuit precedent strongly suggests that the plaintiff may inform the fact-finder that the alleged infringer failed to consult legal counsel, and (2) willful infringement findings can probably be avoided even absent an opinion from counsel, as long as the alleged infringer makes a showing of good faith intent to avoid infringement.

Cite: 2005 Duke L. & Tech. Rev. 0005

Posted in Patents & Technology

Taking Biologics for Granted? Takings, Trade Secrets, and Off-Patent Biological Products

By: Andrew Wasson

Biologics are complex medicines which are often genetically engineered, and which are sure to play an important role in curing some of humankind’s worst diseases. Not surprisingly, generic companies want a part of the biologic market. The FDA believes that it has the authority to approve off-patent versions of biologics that were originally regulated under the Food, Drug & Cosmetic Act, but in order to effectively do so the FDA would have to rely on findings based on data produced by the brand name companies. This iBrief examines whether the FDA’s reliance on previous findings would give rise to a valid claim under the Takings Clause of the U.S. Constitution. In the end, it concludes that the FDA’s proposed action likely would not constitute a taking.

Cite: 2005 Duke L. & Tech. Rev. 0004

Posted in Health & Biotechnology

Disclosure of Clinical Trial Data: Why Exemption 4 of the Freedom of Information Act Should Be Restored

By: Janene Boyce

Clinical trial data generated during the FDA drug approval process can be very valuable. While patients and doctors desperately need this information to make informed choices about medical treatment, drug sponsors strive to keep this resource secret to ensure their ability to profit from their own research. In the wake of the controversy over antidepressant use in children, both the public and Congress have called for the disclosure of all clinical trial data. However, rather than taking an all-or-nothing approach that could harm the development of new drugs, this iBrief argues that Congress should address the issue of trial data disclosure by restoring the proper balance to Exemption 4 of the Freedom of Information Act.

Cite: 2005 Duke L. & Tech. Rev. 0003

Posted in Health & Biotechnology

Patent Damage Strategies and the Enterprise License: Constructive Notice, Actual Notice, No Notice

By: James W. Soong

For the patent owner, early provision of patent notice can help maximize recoverable infringement damages during subsequent litigation. This iBrief recognizes a growing trend of infringement suits predicated on patented enterprise software technology, and analyzes application of patent notice principles against industry convention. This iBrief examines the licensing paradigm of enterprise software and questions whether mechanical compliance with the marking statute should qualify as constructive notice. Borrowing from analogous Federal Circuit principles, this iBrief concludes by proposing alternate notice theories that would empower patentees to seek increased remedies consistent with industry reality, case law, and fundamental statutory purpose.

Cite: 2005 Duke L. & Tech. Rev. 0002

Posted in Patents & Technology

Regulating Innovative Medicine: Fitting Square Pegs in Round Holes

By: Mark Lavender

Increasingly, innovative medical products are creating a quandary for the Food and Drug Administration (“FDA”) because they often transcend the FDA’s traditional categorical approach to regulating medical products. In a recent attempt to simplify this process, the FDA has proposed a new rule for regulating “combination products.” This iBrief discusses the FDA’s current approach and analyzes the possible affects of the proposed regulation. Because of the many shortcomings of both systems, this iBrief concludes that the FDA should instead stop assigning center jurisdiction based on a product’s “primary mode of action,” and give the Office of Combination Products internal agency jurisdiction over combination products. This alternative approach would increase consistency and efficiency while maintaining the FDA’s high standards for medical product safety and efficacy.

Cite: 2005 Duke L. & Tech. Rev. 0001

Posted in Health & Biotechnology

Canning Spam: Consumer Protection or a Lid on Free Speech?

By: Grant C. Yang

The United States Congress recently passed the first federal legislation to curb the influx of spam. However, the Controlling the Assault of Non-Solicited Pornography and Marketing Act (“CAN-SPAM Act”) left some measures to be enacted by the Federal Trade Commission (“FTC”), and some consumers are calling for the Act to have a broader reach and for the creation of a Do-Not-E-Mail registry. Conversely, the FTC decided to delay the creation of a registry and opted to assist in the development of a new technological authentication system. This iBrief looks at the current state of spam and explains that it is too early to tell whether the effects of the CAN-SPAM Act warrant new anti-spam measures. In addition, it points out that it is questionable whether the FTC’s current authentication approach will be effective, and, thus, considers the possible First Amendment challenges to a Do-Not-Call registry as well as other possible anti-spam solutions. In the end, this iBrief postulates that the most effective option might be for the FTC to implement both a Do-Not-Email registry and an authentication system.

Cite: 2004 Duke L. & Tech. Rev. 0016

Posted in eCommerce

1984 Is Still Fiction: Electronic Monitoring in the Workplace and U.S. Privacy Law

By: Christopher Pearson Fazekas

Electronic monitoring in the workplace has been the subject of relentless public criticism. Privacy advocates argue that technological advancements have given overbearing employers powerful tools to abuse employee dignity in the name of productivity and that new legislation should bolster workplace privacy rights. This iBrief contends that current U.S. legal doctrine governing electronic monitoring in the workplace is fair given the nature and purpose of the workplace, and potential employer liability for employee misconduct.

Cite: 2004 Duke L. & Tech. Rev. 0015

Posted in eCommerce

Crossed Signals in a Wireless World: The Seventh Circuit’s Misapplication of the Complete Preemption Doctrine

By: Matthew J. Kleiman

As the number of wireless telephone users continues to proliferate, so does the number of lawsuits against wireless service providers. While consumers seek to utilize various consumer-friendly state law causes of action, the wireless industry continues to push for a uniform federal regulatory regime. Ambiguous language in the Federal Communications Act of 1934 (“FCA”) and disagreement among the federal circuits has led to much confusion over whether state law claims affecting wireless rates and market entry are removable to federal court by way of “complete preemption.” This iBrief argues that FCA’s preemption power is limited by its savings clause, failure to establish a comprehensive regulatory scheme, and provision of a significant role for state regulation. Accordingly, the Seventh Circuit erred in Bastien v. AT&T Wireless Services, Inc. when it concluded that the FCA completely preempts certain state law claims against wireless service providers and thereby requires their removal to federal court.

Cite: 2004 Duke L. & Tech. Rev. 0014

Posted in Media & Communications

The Trade of Cross-Border Gambling and Betting: The WTO Dispute Between Antigua and the United States

By: James D. Thayer

The first ecommerce dispute to come before the World Trade Organization (“WTO”) was billed to be one of David and Goliath proportion. The tiny twin-island nation-state of Antigua and Barbuda challenged the United States’ ban on cross-border Internet gambling and betting. As a result of the dispute, the WTO issued a private final report against the United States finding that the ban violates the United States’ commitments under the WTO. Shortly before the public release of the final report, both parties petitioned the WTO to indefinitely postpone its release so that the parties could engage in private negotiations. The final report is said to uphold the Panel’s interim report that found against the United States by, among other things, rejecting the United States’ claim that its ban on cross-border Internet gambling and betting does not violate its WTO obligations because the ban protects public morals. On October 28, 2004, the United States announced that the negotiations had broken down, and that it planned to appeal the Panel’s decision to the WTO Appellate Body. This iBrief sets forth the basic background of the dispute and argues that the Appellate Body will have to make at least three controversial findings to uphold the Panel’s ruling.

Cite: 2004 Duke L. & Tech. Rev. 0013

Posted in International

Privacy, Free Speech & the Garden Grove Cyber Café Experiment

By: Brett Stohs

In response to gang violence at local “cyber cafés,” the City Council of Garden Grove, California, passed an ordinance requiring cyber cafés to install video surveillance systems. The constitutionality of the provision was subsequently challenged, and a California Court of Appeal determined that the video surveillance requirement did not violate free speech or privacy protections under either the federal or California Constitutions. This decision was immediately challenged, by commentators and a dissenting judge, as opening the door to Orwellian-type, government intrusions into individuals’ personal lives. This iBrief analyzes the appellate court’s decision and concludes that not only did the majority reach the correct conclusion, but that there is no merit to the dissent’s Orwellian fears.

Cite: 2004 Duke L. & Tech. Rev. 0012

Posted in eCommerce

The Medicare Prescription Drug, Improvement, & Modernization Act of 2003: Are We Playing the Lottery With Healthcare Reform?

By: Melissa Ganz

With millions of Americans unable to cope with the rising costs of prescription drugs, and many even forced to go without health insurance, the mounting pressure on Congress to enact major healthcare reform culminated in the Medicare Prescription Drug, Improvement, & Modernization Act of 2003. This iBrief examines this legislation, and concludes that it provides elusive benefits for seniors and merely creates a windfall for the pharmaceutical and insurance industries.

Cite: 2004 Duke L. & Tech. Rev. 0011

Posted in Health & Biotechnology

Protecting the Next Small Thing: Nanotechnology and the Reverse Doctrine of Equivalents

By: Andrew Wasson

If even a fraction of the predictions about nanotechnology are realized, our society will be a dramatically different and better place than it is today. Yet, due to the infancy of the field, it is still unclear how traditional patent doctrine will be applied to nanotechnology. As it stands, the creators of nanoscale versions of traditional products might face infringement claims from traditional patent holders. The reverse doctrine of equivalents serves as a possible mechanism to equitably excuse the literal infringement of traditional patents by nanotech inventors in a way that encourages the progress of science.

Cite: 2004 Duke L. & Tech. Rev. 0010

Posted in Patents & Technology

A Manifesto on WIPO and the Future of Intellectual Property

By: James Boyle

In this Manifesto, Professor Boyle claims that there are systematic errors in contemporary intellectual property policy and that WIPO has an important role in helping to correct them.

Cite: 2004 Duke L. & Tech. Rev. 0009

Posted in International

Virtual Shareholder Meetings

By: Elizabeth Boros

Electronic communication impacts how widely-held corporations conduct shareholder meetings. For example, technology has facilitated such options as electronic proxy voting, remote electronic voting, and “virtual meetings.” This iBrief examines the idea of “virtual meetings” and argues that they should not entirely replace physical meetings unless an electronic solution can be devised which replicates the face-to-face accountability of management to retail shareholders.

Cite: 2004 Duke L. & Tech. Rev. 0008

Posted in eCommerce

Restoring a Public Interest Vision of Law in the Age of the Internet

By: Marc Rotenberg

In November 2003, Mr. Marc Rotenberg, Executive Director of the Electronic Privacy Information Center, lectured at Duke Law School on the importance of protecting individual privacy. In his remarks, Mr. Rotenberg recounted the successful campaign against the government’s Clipper Chip proposal. He argued that successful public interest advocacy in the Internet age requires the participation of experts from many fields, public engagement, and a willingness to avoid a simple “balancing” analysis. He further concluded that privacy may be one of the defining issues of a free society in the twenty-first century.

Cite: 2004 Duke L. & Tech. Rev. 0007

Posted in eCommerce

Wireless Local Number Portability: New Rules Will Have Broad Effects

By: Stephen M. Kessing

After a delay of over seven years, wireless local number portability rules (“WLNP”) finally went into effect on November 24, 2003. These rules, promulgated by the Federal Communications Commission, allow wireless subscribers to change service providers within a given location while retaining the same phone number. The rules also allow consumers to transfer a land-based telephone number to a cellular provider. These new choices will likely have a significant impact on the wireless industry and increase competition in an already intense playing field. This iBrief provides a summary of the new rules, looks at the history and litigation, and predicts how increasing wireless options will benefit consumers and promote competition in local telephony.

Cite: 2004 Duke L. & Tech. Rev. 0006

Posted in Media & Communications

Where Do High Tech Commercial Innovations Come From?

By: Lewis Branscomb

On February 19, 2004, Dr. Lewis Branscomb gave the Meredith and Kip Frey Lecture in Intellectual Property at Duke Law School. In his speech, Dr. Branscomb discussed various models for turning basic scientific inventions into high-tech innovations and highlighted the roles that universities, private investors, and intellectual property law play in each model. Dr. Branscomb concluded that this intermediary process is the most important step in getting high-tech innovations to market.

Cite: 2004 Duke L. & Tech. Rev. 0005

Posted in Patents & Technology

Should Juries Hear Complex Patent Cases?

By: Jennifer F. Miller

A debate has arisen within the legal community over the existence and constitutionality of a so-called “complexity exception” to the Seventh Amendment. This exception would give a judge the discretion to deny a jury trial in a civil case if he or she feels that the issue is too complex for a jury to decide properly. This iBrief discusses the constitutionality of the complexity exception and the arguments for and against its implementation, with particular emphasis on the application of the exception to patent infringement cases. The iBrief then postulates that, while a blanket exception for patent infringement cases may not be the solution, at a minimum some restructuring of the adjudication process needs to occur in order to ensure that judicial holdings are more than a mere roll of the dice.

Cite: 2004 Duke L. & Tech. Rev. 0004

Posted in Patents & Technology

UK’s Implementation of the Anti-Circumvention Provisions of the EU Copyright Directive: An Analysis

By: Aashit Shah

The debate surrounding utilization of technological protection measures to secure copyrighted works in the digital arena has raised many an eyebrow in the past few years. Technological protection measures are broadly bifurcated into two categories: access control measures such as cryptography, passwords and digital signatures that secure the access to information and protected content, and copy control measures such as the serial copy management system for audio digital taping devices and content scrambling systems for DVDs that prevent third parties from exploiting the exclusive rights of the copyright owners. Copyright owners have been wary of the digital environment to exploit and distribute their works and therefore employ technological protection measures, whereas consumers and proponents of “free speech” favor the free and unrestricted access, use and dissemination of copyrighted works digitally.

Cite: 2004 Duke L. & Tech. Rev. 0003

Posted in Copyrights & Trademarks