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Lewis & Clark Law Review

Volume 4 / Number 1 / Spring 2000

This page contains the abstracts, as well as links to the complete document on, for the Articles and Essays of the Spring 2000 Issue, which was dedicated to the annual business law forum.





Separating Marketing Innovation From Actual Invention: A Proposal for a New, Improved, Lighter, and Better-Tasting Form of Patent Protection
Ann Bartow
This Article suggests that commercial entities sometimes obtain patents for reason unrelated to securing profitable technological monopolies. Patents, especially those with narrow scopes that are easily designed around, may be obtained to disadvantage competitors or to make the patent holder appear innovative, rather than to fence off an invention for commercial exploitation. Patents obtained for non-traditional reasons — denoted “leverage” and “keeping up appearances” patents in this Article — may represent highly inefficient uses of both public and private resources. To solve some of these efficiency problems, the author proposes creating a second-tier “Origination Patent” option, which would offer patentees more secure patent protection for a shorter period of time.

The Trouble With Trespass
Dan L. Burk
Courts wrestling with disputes about access to computer networks have embraced an archaic cause of action: trespass to chattels. Unfortunately, the courts had to mangle the traditional elements of the action to allow the facts of the cases to fit into the legal box. Courts have found damage to the chattel, for example, in the cost of resisting access. The analysis used in the Internet trespass to chattels cases potentially describes every access to all digital media. In lieu of the common law trespass to chattels cause of action, the author proposes a new theory of digital nuisance as a mechanism for balancing competing interests.

The Changing Nature of Derivative Works in the Face of New Technologies
Lydia Pallas Loren
Copyright law permits copyright owners to control the creation of derivative works. This Article explores whether works that digitally reference preexisting copyrighted digital material without reproducing any portion of the preexisting material constitute derivative works. Such referencing works include HTML documents with links, HTML documents that “frame” linked-to material, and software programs that work in conjunction with other software programs to create a new experience for the end users of those programs. The statutory definition of “derivative work” provides little real guidance for determining if these new types of works should be encompassed within the copyright owner’s right to control the creation of derivative works. This Article articulates the policy justifications for the derivative work right and argues that these policy justifications do not provide a basis for extending the derivative work right to encompass these new types of works. Additionally, this Article sets out tests that should be applied to determine whether these new types of digital works are derivative works.




Looking Forward, Legislating Backward?
Andy Johnson-Laird
The steady advance of technology has created a variety of challenges for intellectual property law and for those lawyers who practice it. This Essay discusses several of the most interesting technical issues that will confront intellectual property practitioners in the coming years. These technical issues will affect legal disputes relating to computer programs and computer-based evidence in all areas of intellectual property law. This Essay attempts to give the practitioner insight into the technical considerations shaping those legal disputes.

Reconceiving Patents in the Age of Venture Capital
Mark A. Lemleyr
The past decade has seen unprecedented growth in patent issuance and litigation. IN the midst of great changes in the ways technology is financed, the author questions the classical model of patent incentive, which justifies patents on the basis of the encouragement they offer to engage in research and development. The author sees a need for additional research into the real causes of innovation and offers starting points for this type of study. Patents are being used in a number of innovative ways, such as cross licensing, as well as functioning as a financing tools. The author argues that these uses should become the new focus of academic patent research, rather than the atypical enforcement of patents through litigation. The author also suggests exploring patent law policy changes more in line with the new uses of patents, among them methods of limiting patent litigation, accelerating the patenting process, and encouraging informal patent use.

The DNS Wars: Trademarks and the Internet Domain Name System
Jessica Litman
This Essay describes what happened when the first-come, first-served Internet domain name registration policy collided with the trade-mark law. When trademark owners discovered that domain names incorporating their trademarks had been registered by others — even where there was no plausible likelihood of consumer confusion — they felt that their interests had been invaded. Trademark owners demanded that the domain name system allow trademark owners to both oust non-trademark owners of domain names incorporating their marks, and prevent any subsequent registration of any domain name incorporating their marks in any top level domain. In response to those demands, trademark owners have been given significant new weapons to make it easier for them to take domain names away from the people who have registered them. It seems likely that this development will reinforce the assumption that domain name space is and should be an extension of trademark space, and assumption that is both unwarranted and unwise. It also brings us perilously close to conceding that ownership of a trademark gives one the exclusive right to use the work on the Internet.

Evaluating Mistakes in Intellectual Property Law: Configuring the System to Account for Imperfection
Maureen A. O’Rourke
In this Essay, the author argues that in assessing the performance of the intellectual property laws, it is useful to conceive of intellectual property law as a system comprised of both interacting decision-makers and other sets of law. Those decision-makers include Congress, the PTO, and courts, and the other relevant laws include antitrust and contract. The author reviews the major intellectual property statutes, illustrating ways in which different institutions may be situated to correct the errors of another and how antitrust and contract also can work to correct errors in the scope of protection. The Essay concludes by arguing that the real challenge for the future is to formulate a consistent theoretical paradigm to guide institutions in decision-making and reduce the probability and costs of mistakes.

Lewis & Clark Law Review

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