• Archive for September, 2012

    SCIPR Highlights, Part 3

    by  • September 26, 2012 • Faculty Workshops/ Conferences • 0 Comments

    On Thursday, September 13, Chicago-Kent hosted the 2012 Supreme Court Intellectual Property Review (SCIPR), a conference highlighting intellectual property cases from the U.S. Supreme Court’s 2011 Term and previewing significant IP cases in the upcoming 2012 Term. Two Chicago-Kent faculty members, Lori Andrews and Carolyn Shapiro, participated in panels at the conference. Visit the conference’s home page for the conference schedule, panelist biographies, and audio transcripts of the featured Supreme Court cases. See the prior posts “SCIPR Highlights, Part 1” and “SCIPR Highlights, Part 2” for more on the conference. The following summary outlines the colloquy on New Initiatives of the Copyright Office.

    The Honorable Maria Pallante, the 12th Register of Copyrights and Director of the US Copyright Office, took part in a colloquy titled “New Initiatives of the Copyright Office.” Pallante highlighted several of the Copyright Office’s current projects and objectives, many of which can be read in her article, “Priorities and Special Projects of the United States Copyright Office: October 2011-October 2013,” which can be read online at www.copyright.gov. The colloquy was moderated by Bart Lazar, a partner at Seyfarth Shaw LLP and Chicago-Kent alumnus.

    SCIPR Highlights, Part 2

    by  • September 26, 2012 • Faculty Scholarship, Faculty Workshops/ Conferences • 0 Comments

    On Thursday, September 13, Chicago-Kent hosted the 2012 Supreme Court Intellectual Property Review (SCIPR), a conference highlighting intellectual property cases from the U.S. Supreme Court’s 2011 Term and previewing significant IP cases in the upcoming 2012 Term. Two Chicago-Kent faculty members, Lori Andrews and Carolyn Shapiro, participated in panels at the conference. Visit the conference’s home page for the conference schedule, panelist biographies, and audio transcripts of the featured Supreme Court cases. See the posts “SCIPR Highlights, Part 1” and “SCIPR Highlights, Part 3” for more on the conference. The following summary outlines the panel on the  Preview of the 2012 Supreme Court Term.

    Professor Carolyn Shapiro, Director of the Institute on the Supreme Court of the United States at Chicago-Kent, moderated a panel featuring Thomas Goldstein, James Dabney, Matthew McGill, and Aaron Panner that discussed the granted and to-watch IP cert. petitions in the upcoming Supreme Court Term, which starts October 1st. The panel focused on two cases: Already, LLC v. Nike and Kirtsaeng v. John Wiley & Sons, Inc. The questions presented in each case are as follows (from SCOTUSblog):

    Already v. NikeWhether a federal district court is divested of Article III jurisdiction over a party’s challenge to the validity of a federally registered trademark if the registrant promises not to assert its mark against the party’s then-existing commercial activities.

    Kirtsaeng v. John WileyHow do § 602(a)(1) of the Copyright Act, which prohibits the importation of a work without the authority of the copyright’s owner, and § 109(a) of the Copyright Act, which allows the owner of a copy “lawfully made under this title” to sell or otherwise dispose of the copy without the copyright owner’s permission, apply to a copy that was made and legally acquired abroad and then imported into the United States?

    Dabney, counsel to Already LLC, noted that the larger question in the Already v. Nike case is whether or not one party can moot out another party’s claim. McGill, counsel to John Wiley & Sons, explained the conflict in the Kirtsaeng case over the ambiguity of the “first-sale doctrine” (set forth in § 109) and its interpretation—the first-sale doctrine does not explicitly address issues of foreign-made products. The Court will thus debate whether or not Kirtsaeng is liable for copyright infringement based on its interpretation of the first-sale doctrine’s relationship to imported foreign-made products.

    Other cert. petitions to watch:
    Bowman v. Monsanto Co.
    Byrne v. Wood, Herron & Evans, LLP
    GlaxoSmithKline v. Classen Immunotherapies, Inc.
    Libertarian Party of Washington State v. Washington State Grange
    Washington State Democratic Central Committee v. Washington State Grange
    Merck & Co., Inc. v. Louisiana Wholesale Drug Co., Inc.
    Retractable Technologies, Inc. v. Becton, Dickinson and Co.
    R.J. Reynolds Tobacco Co. v. Star Scientific, Inc.
    Sigmapharm, Inc. v. Mutual Pharmaceutical Co., Inc.

    Carolyn Shapiro has worked on many Supreme Court cases and has focused much of her academic scholarship on the Court. Her publications can be read on SSRN and Bepress.

    For more on the Supreme Court’s 2012 Term, which begins Monday, October 1st, visit SCOTUSblog.

    SCIPR Highlights, Part 1

    by  • September 25, 2012 • Faculty Scholarship, Faculty Workshops/ Conferences • 0 Comments

    On Thursday, September 13, Chicago-Kent hosted the 2012 Supreme Court Intellectual Property Review (SCIPR), a conference highlighting intellectual property cases from the U.S. Supreme Court’s 2011 Term and previewing significant IP cases in the upcoming 2012 Term. Two Chicago-Kent faculty members, Lori Andrews and Carolyn Shapiro, participated in panels at the conference. Visit the conference’s home page for the conference schedule, panelist biographies, and audio transcripts of the featured Supreme Court cases. See the posts “SCIPR Highlights, Part 2” and “SCIPR Highlights, Part 3” for more on the conference.

    The following summary, prepared with the assistance of Lori Andrews, outlines the panel on Mayo Collaborative Services v. Prometheus Laboraties, Inc.

    Lori Andrews joined panelists Arti Rai, the Honorable Paul S. Grewal, Jon Singer, and moderator Nabeela Rasheed in a panel analyzing the implications of the Sumpreme Court’s decision in Mayo v. Prometheus Laboratories.

    The Court held that claims in two of Prometheus Laboratories’ patents, which covered a way of determining the optimal dosage for a certain drug, were invalid because they claimed a law of nature, rather than an invention. Prometheus’ patented approach consisted of instructing physicians to administer the drug to a patient, determine the patient’s bodily response to the drug (the resulting metabolite level), and recognize that a metabolite level outside a given range would be ineffective in treatment. The Court found that Prometheus’ patent claims were actually claims on a “law of nature”—the relationship between the concentration of metabolites in a patient’s blood and the drug’s effectiveness. In support of its holding, the Court cited over 150 years of Supreme Court precedent that stated “laws of nature” cannot be the subject of a patent.

    The panel discussed the many questions raised by the case, including its most pressing: what constitutes a “law of nature,” and how are we equipped to judge one as such? Professor Lori Andrews offered clarification on this abstract point, differentiating between the legitimate patent of a drug—a synthetic human invention—and the illegitimate patent of a reaction to the drug—a law of nature. Andrews explained that merely discovering nature’s handiwork is not sufficient for a patent. Even though the U.S. Constitution protects “discoveries” in the patent clause, that term was used at the time to mean what we consider “inventions” today—something made by man.

    Andrews and others also critiqued the actions of the Patent Office, calling to attention its poor job of applying the traditional standards of patentability to patents like Prometheus’ claimed methods. The panel also noted the lack of “safety valves” in the patent system—unlike in the copyright system—and suggested ideas that could possibly prevent this type of issue from reoccurring in patent law.

    Professor Andrews has written and presented extensively on the subject of intellectual property and technology, especially health technology. She directs the Institute for Science, Law & Technology at Chicago-Kent. Read more of her work on SSRNBepress, and her website, the Social Network Constitution.

    For more background on the Mayo v. Prometheus case, see Lyle Dennison’s opinion recap on SCOTUSblog.

    The “Market” for Justice

    by  • September 21, 2012 • Faculty Commentary, Faculty Scholarship • 0 Comments

    In the following reflection, Professor César Rosado Marzán discusses his current paper on Chilean judges and recent debates about law school. For more of Professor Rosado Marzán’s schoalrship, visit his SSRN and Bepress pages.

    Some say that globalization and workers’ rights are incompatible. If this is so, then I have to grapple with a fact that I have found in my scholarly research: Chile’s labor judges are today more responsive to workers claims than ever before. Yes, Chile, land of Milton Friedman’s Chicago Boys, has a new crop of young, dynamic labor judges that take their protective role of workers extremely seriously. How come?

    Globalization has spurred at least two strands of parallel ideologies. The first is market fundamentalism – free markets will make us all freer and richer and hence better off. We know this one.

    The second one has been a commitment towards individual rights and liberties, including human rights. Wisconsin law professor Alexandra Huneeus has described how the newer crop of Chilean judges damned the culprits of human rights abuses of the Pinochet dictatorship with particular vehemence to cleanse the judiciary of its own past collaboration with the dictatorship.

    In my fieldwork, I observed similar behaviors among labor judges. These judges make clear to lawbreaking employers the penalties that they will incur if found liable in court, pushing employers to settle workers claims in court so that workers can leave the courtroom feeling that justice was served.

    The sociological reality of Chile’s pioneering judges is fascinating: Having studied in law schools still fettered by old habits, they learned human rights law in study circles that met in private homes and cafés. They devoured law review articles, many times published in other countries, books and anything that they could get their hands on to expand their legal knowledge.

    The labor judges, having also received less than subpar training in labor law, the antithesis of Pinochet’s Chile, also set up their own courses by inviting younger law professors, sometimes trained internationally, to give classes to them. These classes normally start after the judges have had full, grueling days of hearings and writing opinions. These judges take their new roles very seriously. There is scarcely a minute to waste.

    So does globalization threaten workers’ rights? To the extent governments pass laws to relax regulations and unfetter markets, yes. But to the extent workers challenge such policies and take claims to progressive judges, then not quite. Globalization is a contentious, dynamic process with many contradictions.

    This brings me back to law school in the United States. For some years there have been discussions about a crisis in legal education. That law school is too expensive. That students have too much debt. That students can’t find jobs. Is there a crisis? Sure there is. Does this mean law schools are about to close down or that we must turn into some sort of trade school, kill research and tenured professorships? No. (more…)

    Perritt on Internet Technology, Entertainment, and IP Law

    by  • September 20, 2012 • Faculty Commentary, Faculty Scholarship • 0 Comments

    At a recent “faculty research slam” event, faculty members shared excerpts and ideas from current works-in-progress and recent projects. The following summary by Professor Henry Perritt discusses recent scholarship interests and upcoming articles, most of which concern Internet-centered technology developments and their implications for the marketplace, the entertainment industry, and intellectual property law. To read more of Professor Perritt’s scholarship, visit his SSRN and Bepress pages.

    By Henry H. Perritt, Jr.


    Ronald Coase’s 1937 article, “The Nature of the Firm,” observed that rational economic actors decide whether to “make or buy” depending on whether the transaction costs of assembling factors of production inside a firm’s boundaries are less than the transaction costs of assembling them in the external marketplace. Michael Heller’s 1998 Harvard Law Review article, “The Tragedy of the Anticommons,” observed that fragmented ownership of goods and services increases transaction costs for those who want to combine.

    In a series of law review articles — Henry H. Perritt, Jr., New Business Models For Music, 18 Vill. Sports & Ent. L.J. 63 (2011); Henry H. Perritt, Jr., Technologies of Storytelling: New Models for Movies, 10 Va. Sports & Ent. L.J. 106 (2010); Henry H. Perritt, Jr., Cut in Tiny Pieces: Ensuring that Fragmented Ownership Does Not Chill Creativity, 14 Vand. J. Ent. & Tech. L. 1 (2011); The Internet at 20: Evolution of a Constitution for Cyberspace, 20 Wm. & Mary Bill Rts. J. 1115 (2012); Henry H. Perritt, Jr., Competitive Entertainment: Implications of the NFL Lockout Litigation for Sports, Theatre, Music, and Video Entertainment, ___ Hastings Comm. Ent. L. J. ___ (in press); and Henry H. Perritt, Jr., Crowd Sourcing Indie Movies (forthcoming) — I argue that Internet-centered technology developments are reducing the size of economically sustainable units of production in the entertainment industries, broadly defined, thereby reducing barriers to entry and allowing almost anyone with a creative bent to access global markets. The result, however, is greatly increased transaction costs, both for consumers who want to find entertainment that appeals to them, but also for other creators who want to combine what’s available into new creative works. (more…)

    Krent on Retroactive Application of Reduced Punishments

    by  • September 19, 2012 • Faculty Commentary, Faculty Scholarship • 0 Comments

    At a recent “faculty research slam” event, faculty members shared excerpts and ideas from current works-in-progress and recent projects. The following abstract is from an in-progress article by Dean Harold Krent on the implications of the retroactive application of reduced punishments for crack cocaine offenders, a subject addressed in the Supreme Court’s recent decision in Dorsey v. United States. The title of the work-in-progress is “Retroactivity, Presumptions, and Crack Sentencing Reform.” To read more of Dean Krent’s scholarship, visit his SSRN and Bepress pages.

    This essay argues that the strong presumption against retroactive application of reduced punishments articulated in the Supreme Court’s recent decision in Dorsey v. United States is neither historically grounded nor constitutionally compelled. Although not dispositive in Dorsey, the presumption may prove pernicious in future cases, whether in dealing with marijuana decriminalization or lessened punishment for computer hacking, and in no way should signal to Congress that future changes should apply prospectively only.

    Although the Court reached the right result in applying the reduction in punishment for crack offenses to offenders whose sentences had not been finalized, the Court inordinately relied on the general savings statute enacted in 1871. Congress enacted that statute not to prevent retroactive decriminalization or diminution in punishment, but to avoid the consequence of abatement of pending prosecutions and penalties that, at common law, followed from alteration of a criminal statute. Congress wished to avoid the bizarre consequence of offenders walking free merely because Congress recodified a law or evenincreased the punishment for an offense without specifying that prosecutions could continue under the former enactment. In today’s world, the savings statute should be understood more as a default in the face of congressional silence – once it is clear that Congress considered the temporal scope of its action, the presumption disappears. (more…)

    Nahmod on Post-Iqbal Pleading Decisions

    by  • September 17, 2012 • Faculty Scholarship • 0 Comments

    Professor Sheldon Nahmod recently blogged about two circuit court decisions within the last year that have applied Ashcroft v. Iqbal (2009), a case articulating a plausability standard for pleading in federal courts. The post is Nahmod’s second on the same subject.

    The two posts can be read at Professor Nahmod’s blog, Nahmod Law.

    9-7-12 post: Two Recent Post-Iqbal Pleading Decisions in the Circiuts

    5-13-11 post: Post-Iqbal Pleading in Federal Courts: Three Recent Circuit Decisions