The John Marshall Review of Intellectual Property Law

THE JOHN MARSHALL REVIEW OF INTELLECTUAL PROPERTY LAW

Current Topic Inspirations – v. 8/13/2008

IMPORTANT: Please view the latest version number when considering what appears below. If it is too old, someone might be writing on the idea. Check with the Candidacy Editor. Also, please read “How Do I Choose My RIPL Topic?!” located at students.jmls.edu/RIPLfor further help.

Patents

Falling retention of Patent Examiners at U.S. Patent & Trademark Office

Steve Lash, Attrition Rate Adds to Patent Backlog: Report, Chicago Daily Law Bulletin, Oct. 12, 2007, at 1.

In re Seagate, 497 F.3d 1360 (Fed. Cir. 2007)

Stephen P. Swinton & Adam A. Welland, ‘Seagate’ Clarifies Key Waiver Issue, The National Law Journal, Oct. 29, 2007, at S1.

Patent Pools

Mark E. Miller & David S. Almeling, DOJ, FTA Redefines Antitrust Rules on Patent Pools, The National Law Journal, Oct. 29, 2007, at S3.

“Rocket Dockets”

Marcia Coyle, East Texas Now Busiest Patent Litigation Venue, The National Law Journal, Nov. 12, 2007, at 6.

Patentability

Lewis R. Clayton, Two Patentability Rulings, The National Law Journal, Nov. 12, 2007, at 20.

Young v. Lumenis, 492 F.3d 1336 (Fed. Cir. 2007) (surgical procedures)

Bias Against Patents?

Gina Passarella, Recent Patent Rulings Raise Concerns, The National Law Journal, Oct. 8, 2007, at 13.

Lawyer Disclosures in Patent Applications

McKesson Info. Sols. v. Bridge Med. Inc., No. 06-1517 (Fed. Cir. 2007).

Dayco Prods. v. Total Containment, 329 F.3d 1358 (Fed. Cir. 2003).

File Sharing

Rachel Aviv, File Sharers Fight Copyright Constraints, Chicago Daily Law Bulletin, Oct. 12, 2007, at 2.

Miles Raymer, The Pirate’s Code, Chicago Reader, Nov. 15, 2007, at 47.

Joshua Freed, Win or Lose, Music Industry ‘Will Keep Suing,’Chicago Daily Law Bulletin, Oct. 4, 2007, at 2.

Joshua Freed, Music Biz Hopes Verdict Catches On, Chicago Daily Law Bulletin, Oct. 5, 2007, at 1.

Internet Radio Equality Act, H.R. 2060, 110th Cong. (2007).

Privilege of Republishing

Greenberg v. Nat’l Geo. Soc., 497 F.3d 1213 (11th Cir. 2007).

Period of Protection & Economics

Mark Helprin, The Great American Copyright, Chicago Daily Law Bulletin, May 22, 2007, at 6.

The Design Piracy Prohibition Act

Hope Calder-Katz, Pirates of the Runway, CBA Record, May 2007, at 44.

The Design Piracy Prohibition Act, H.R. 5055, 109th Cong. (2006).

Fair Use

Lynn B. Bayard & Darren W. Johnson, 9th Circuit Finds ‘Thumbnail’ Photos Display Fair Use, The National Law Journal, Oct. 29, 2007, at S2.

Perfect 10 Inc. v. Amazon.com Inc., 487 F.3d 701 (9th Cir. 2007).

Trademarks

Famous Marks & Secondary Meaning:

The topic of “famous marks” is an area within Intellectual Property that has been significantly under published. This is especially true within the context of international mark protection.

One of the possible questions to address is: what level of protection should a foreign mark holder be provided within the United States? Furthermore, there exists a question of which secondary meaning standard should be applied when determining if a mark is sufficiently famous under the “famous marks” doctrine.

One problem that can be addressed is whether the standard set by the Anti-Dilution Act should be applied as an alternative to the secondary meaning standard. Or, should a straight forward secondary meaning standard analysis established by case law be applied.

Furthermore, a recent development within this area is that WIPO (World Intellectual Property Organization) has suggested a secondary meaning analysis with can be used to determine if a mark is sufficiently famous.

One of the most interesting things about the model statute released by WIPO is that the factors they use for determining if a secondary meaning exists are almost exactly the same factors which are espoused in the Anti-Dilution Act.

Among other things, this article could analyze which approach should be used in a “famous marks” case. The writer could also undertake a benefit analysis of which approach would be most appropriate for the protection of famous marks.

Cases, Treatises, & Statutes:

Empresa Cubana Del Tabaco v. Cullbro Corp., 399 F.3d 462 (2d Cir. 2005).

McCarthy on Trademarks: Famous Marks

15 U.S.C. § 1125(c) (2006).

Bruce J. Goldner & Kenneth A. Plevan, Circuit Split on Famous Marks, The National Law Journal, Oct. 29, 2007, at S1.

Non-Traditional Trademarks: Sounds, Smells, Tastes, etc.

In re N.V. Organon, 79 U.S.P.Q.2d 1639 (TTAB 2006).

In re Owens Corning Fiberglass, 774 F.2d 1116 (Fed. Cir. 1985).

In re Deere, 7 U.S.P.Q.2d 1401 (TTAB 1988).

JCW v. Novelty, 482 F.3d 910 (7th Cir. 2007) (punitive damages in trademark infringement claims)

Intellectual Property Generally

National Intellectual Property Law Enforcement Coordination Council (NIPLECC)

Pamela A. MacLean, Leadership Lacking in IP Enforcement, The National Law Journal, Apr. 30, 2007, at 9.

Foreign Enforcement of Intellectual Property Rights

Mary O’Connor, Negotiating the Maze of IP Protection, The National Law Journal, Apr. 9, 2007, at 13.

Peter K. Yu, WTO Process is Limited, The National Law Journal, Oct. 29, 2007, at 23.

John B. Pegram, Global Patent Law Harmonization Gets Bogged Down, The National Law Journal, Oct. 29, 2007, at S8.

Small Business Integration of Intellectual Property Protection

Jenny B. Davis, Mixing IP with Mmmmmm, ABA Journal, May 2007, at 15.