Intellectual Property in the New Technological Age: 2019 - Chapters 1 and 2

176 Pages Posted: 8 Jul 2019 Last revised: 18 Aug 2019

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 8, 2019

Abstract

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 2019 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. Other recent developments address nonsolicitation agreements, the inevitable disclosure doctrine, and the enforceability of noncompetition agreements

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. IPNTA significantly expands 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 Healthcare v. Teva Pharmaceuticals USA, Inc., 139 S.Ct. 698 (2019)

● Updated Section 101 notes to reflect substantial new developments (Berkheimer, Aatrix, Vanda) and legislative reform efforts

● 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

● Note on Amgen Inc. v. Sandoz Inc., 923 F.3d 1023, 1029 (Fed. Cir. 2019) (doctrine of equivalents)

● Administrative Patent Review: Updated statistics on IPRs

● 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. IPNTA2019 integrates the complex provisions of the Music Modernization Act of 2018.

● Originality: New problem on copyrightability of jokes based on lawsuit by comedy writer Alex Kaseberg against Conan O’Brien

● Update on copyright duration (1923 works now in the public domain)

● Note on cord cutting and Locast, a nonprofit local broadcasting service

● Update on DMCA exemptions

● New fair use problem based on Dr. Seuss Enterprises v. ComicMix

● Integration of new cases: Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, 139 S. Ct. 881 (2019) (registration must be made prior to filing suit); Revision Comm’n for General Assembly of Georgia v. Public.Resource.Org, Inc., 906 F.3d 1229 (11th Cir. 2018) (holding that “the People are the constructive authors of . . . official legal promulgations of government,” meaning that the works are intrinsically public domain material and, therefore, uncopyrightable), cert. granted, Georgia, et al. v. Public.Resource.Org, Inc. (2019)); Disney Enterprises, Inc. v. VidAngel, Inc., 869 F.3d 848 (9th Cir. 2017) (Family Entertainment and Copyright Act of 2005 is not a defense to anticirumvention provisions); Capitol Records, LLC v. ReDigi, Inc., 910 F.3d 649 (2d Cir. 2018) (rejecting digital exhaustion); BWP Media USA Inc. v. Polyvore, Inc., 922 F.3d 42 (2d Cir. 2019) (exploring the volition requirement); Rimini Street, Inc. v. Oracle USA, Inc., 139 S.Ct. 873 (2019) (scope of costs recoverable under Section 505)

Trademarks: IPNTA2019 integrates important cases on federal registrability of disparaging marks, merchandising rights, likelihood of confusion on the Internet, and remedies.

● False Advertising: added MillerCoors, LLC v. Anheuser-Busch Companies, LLC, United States District Court, Western District of Wisconsin, 2019 WL 2250644 (2019)

● New problem based on Dr. Seuss Enterprises v. ComicMix (protectability)

● Integration of new cases: Iancu v. Brunetti, S. Ct. (June 24, 2019) (holding that FUCT, while vulgar, is registrable); Moldex-Metric, Inc. v. McKeon Prods., 891 F.3d 878 (9th Cir. 2018) (holding that aesthetic functionality must consider the availability of alternative designs); Beyonce Knowles-Carter v. Feyonce, Inc., 347 F. Supp. 3d 217 (S.D.N.Y. 2018) (denied summary judgment that “Feyonce” merchandise marketed to fiancés would confuse consumers into thinking it was sponsored by the musician Beyonce); Gordon v. Drape Creative, Inc., 909 F.3d 257 (9th Cir. 2018) (application of the Rogers test).

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: 2019 - Chapters 1 and 2 (July 8, 2019). Available at SSRN: https://ssrn.com/abstract=3415161 or http://dx.doi.org/10.2139/ssrn.3415161

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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