Intellectual Property in the New Technological Age: 2018 - Chapters 1 and 2

Intellectual Property in the New Technological Age: 2018 - Chapters 1 and 2, Clause 8 Publishing, 2018

UC Berkeley Public Law Research Paper

Stanford Public Law Working Paper

177 Pages Posted: 25 Jul 2018

See all articles by Peter S. Menell

Peter S. Menell

University of California, Berkeley - School of Law

Mark A. Lemley

Stanford Law School

Robert P. Merges

University of California, Berkeley - School of Law

Date Written: July 16, 2018


Rapid advances in digital and life sciences technology continue to spur the evolution of intellectual property law. As professors and practitioners in this field know all too well, Congress and the courts continue to develop intellectual property law and jurisprudence at a rapid pace. For that reason, we have significantly augmented and revised Intellectual Property in the New Technological Age.

The 2018 Edition reflects the following principal developments:

Trade Secrets: Congress passed the Defend Trade Secrets Act of 2016, one of the most momentous changes in the history of trade secret protection. The new law opens up the federal courts to trade secret cases, provides for ex parte seizures of misappropriated trade secrets in “extraordinary circumstances,” and establishes immunity for whistleblowers.

Patents: The past several years have witnessed some of the most significant developments in U.S. patent history — from the establishment of the new administrative review proceedings at the Patent Office to important shifts in patent-eligibility, claim indefiniteness, enhanced damages, and equitable remedies at the Supreme Court and means-plus-function claim interpretation and infringement doctrine at the Federal Circuit. We have restructured the patent chapter to illuminate these areas. We have also significantly expanded coverage of design patents in response to the growing importance of this form of protection. ● Updated Section 102 discussion with time line illustrations explaining first-to-invent (1952 Act) and first-to-file (AIA) regimes; added note on corroboration of invention dates; update on Helsinn (Supreme Court grant of certiorari) ● Updated Section 101 notes to reflect substantial new developments (Berkheimer, Aatrix, Vanda) ● New section on Reassessing Patent Eligibility featuring Judge Lourie's concurrence in denial of rehearing en banc in Berkheimer. ● Administrative Patent Review: Updated statistics on IPRs ● Defenses and Remedies: Integrated materials relating to the Supreme Court’s 2017 laches and exhaustion decisions; note on lost foreign profits (WesternGeco LLC v. ION Geophysical Corp., S. Ct. (2018)) . ● Design Patent: Updated note on apportioning damages to reflect remand of Samsung Electronics Co. v. Apple Inc.

Copyrights:The Supreme Court issued important decisions addressing the useful article doctrine, public performance right and the first sale doctrine. The past few years also witnessed important developments in the Online Service Provider safe harbor, fair use, and state protection for pre-1972 sound recordings. We have also integrated the digital copyright materials into a unified treatment of copyright law and substantially revamped the fair use section to reflect the broadening landscape of this important doctrine. ● Originality: adds new problem based on the Statue of Liberty stamp State and Common Law Copyrights: updates on state law protection (or lack thereof) for pre-1972 sound recordings and proposed music modernization legislation integrates new cases into notes ● Naruto v. David John Slater, 888 F.3d 418 (9th Cir. 2018) (Monkie selfie) ● Rentmeester v. Nike, Inc., 883 F.3d 1111 (9th Cir. 2018) (Jordan "Jumpman" logo) ● Williams v. Gaye, 885 F.3d 1150 (9th Cir. 2018) (Blurred Lines) ● VMG Salsoul, LLC v. Ciccone, 824 F.3d 871, 880-87 (9th Cir. 2016) (rejecting the 6th Circuit’s statutory interpretation and holding the de minimis doctrine applies across the classes of copyrightable works) ● Flo & Eddie, Inc. v. Sirius XM Radio, Inc., 229 So.3d 305 (Fla. S. Ct. 2017) ● Oracle Corp. v. Google LLC, 886 F.3d 1179 (Fed. Cir. 2018) ● Cariou v. Prince, 714 F.3d 694 (2d Cir. 2013) (illustrations added) ● Mavrix Photographs, LLC v. LiveJournal, Inc., 853 F.3d 1020 (9th Cir. 2017) (DMCA "at the direction of the user") ● Ventura Content, Ltd. v. Motherless, Inc., 885 F.3d 597 (9th Cir. 2018) (DMCA "at the direction of the user")

Trademarks: We have integrated important cases on federal registrability of disparaging marks, merchandising rights, likelihood of confusion on the Internet, and remedies. ● Infringement and Dilution: (Fun) new problem based on "The Lord of the Dings" surfboard repair shop, autobody shop, and dent repair franchise ● integrates new developments and cases into notes ● Play-Doh registering a mark for the smell of its dough ● In re Brunetti, 877 F.3d 1330 (Fed. Cir. 2017) (holding that FUCT, while vulgar, is registrable) ● San Diego Comic Convention v. Dan Farr Productions, 2017 WL 3732081 (S.D. Cal. Aug. 30, 2017) (concluding that there was no category of marks “generic ab initio” and that defendants had not proven that the term “comic-con” had become generic) ● adidas Am. v. Skechers USA, 890 F.3d 747 (9th Cir. 2018) (injunctive relief) ● Trader Joe’s Co. v. Hallatt, 835 F.3d 960 (9th Cir. 2016) (applying US trademark law against a Canadian infringer where effects were felt in the US)

Other State Protections: We have updated material on the right of publicity, an active and growing area. We have also reorganized the chapter and focused it on IP regimes. ● Idea Submissions: added note on breach of implied contract claim not subject to Anti-SLAPP suit based on Jordan-Benel v. Universal City Studios, Inc., 859 F.3d 1184 (9th Cir. 2017) ● Right of Publicity: added note addressing docudramas based on de Havilland v. FX Networks, 21 Cal. App. 5th 845, 230 Cal. Rptr. 3d 625 (Cal. Ct. App. 2018)

Keywords: Intellectual Property, Trade Secret, Patent, Copyright, Trademark, Misappropriation, Right of Publicity

Suggested Citation

Menell, Peter S. and Lemley, Mark A. and Merges, Robert P., Intellectual Property in the New Technological Age: 2018 - Chapters 1 and 2 (July 16, 2018). Intellectual Property in the New Technological Age: 2018 - Chapters 1 and 2, Clause 8 Publishing, 2018, UC Berkeley Public Law Research Paper, Stanford Public Law Working Paper, Available at SSRN:

Peter S. Menell (Contact Author)

University of California, Berkeley - School of Law ( email )

215 Boalt Hall
Berkeley, CA 94720-7200
United States

Mark A. Lemley

Stanford Law School ( email )

559 Nathan Abbott Way
Stanford, CA 94305-8610
United States

Robert P. Merges

University of California, Berkeley - School of Law ( email )

215 Boalt Hall
Berkeley, CA 94720-7200
United States
510-643-6199 (Phone)
510-643-6171 (Fax)

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