BLS Library Blog

This summer, attorney and BLS Library volunteer Grace Pickering worked with BLS librarians to substantially revise Researching Copyright Law and to create Researching Trademark & Unfair Competition Law. 

The home pages of these two guides feature introductory sources in guide boxes Copyright 101 and Trademarks 101. The home pages also highlight sources (examples: podcasts, hearings, case trackers and books) on selected hot topics. Moreover, these guides feature: casebooks, study aids and legal encyclopedia entries; treatises and practice guides; current awareness sources to help law students choose paper topics; sources of scholarly articles; starting points in Bloomberg Law, Lexis+ and Westlaw Precision; and WIPO’s resources. 

Tip: Both guides link to key BLS subscription sources like: The Fashion Law (TFL) and Law360.com > topic: Intellectual Property. (In BLS Library’s SARA catalog records, click: ACCESS ONLINE VERSION.) BLS students: remote access to these sources requires implementation of the BLS proxy server instructions for one web browser. BLS librarians recommend the instructions for Firefox. 

Tip: BLS librarians are happy to support your paper topic research–feel free to email us at: askthelibrary@brooklaw.edu or to text us at: (718) 734-2432.

Thank you, Grace Pickering, for your hard work! 

Note: If you are an MLIS student who wishes to learn about BLS Library’s fellowship program, please contact Associate Librarian for Public Services/Adjunct Professor Kathleen Darvil at: kathleen.darvil@brooklaw.edu.

On April 28, 2015, Register of Copyrights Maria A. Pallante announced the launch of the U.S. Copyright Office’s Fair Use Index, designed to provide the public with searchable summaries of major fair use decisions. The Index was undertaken in support of the 2013 Joint Strategic Plan on Intellectual Property Enforcement prepared by the U.S. Intellectual Property Enforcement Coordinator within the Executive Office of the President.

Copyright and Fair Use are challenging areas of law with so many nuances and changes that make it difficult to know whether the use of an image or video is allowed or not and under what circumstances something can be used. The legal doctrine of Fair use promotes freedom of expression by permitting the unlicensed use of copyright-protected works in certain circumstances. Section 107 of the Copyright Act provides the statutory framework for determining whether something is a fair use and identifies certain types of uses—such as criticism, comment, news reporting, teaching, scholarship, and research—as examples of activities that may qualify as fair use.

Hopefully the Fair Use Index will help make the issue a little bit clearer. Users can search cases that deal exclusively with Fair Use and quickly see whether Fair Use was found or not. Users can narrow a search by jurisdiction and, importantly, by format (text, audio, computer, etc.) The Index is searchable by court and subject matter and provides a helpful starting point for those wishing to better understand how the federal courts have applied the fair use doctrine to particular categories of works or types of use, for example, music, internet/digitization, or parody.

The Index has been added to Brooklyn Law Library’s catalog and is available at this link.

Listen to this episode on BrooklynWorks.

In this interview. Brooklyn Law School’s Associate Professor of Law Christopher Beauchamp speaks about his first book, Invented by Law: Alexander Graham Bell and the Patent That Changed America (Call# KF 3116.B43 2015). Published by Harvard University Press, the book explores questions of ownership and legal power raised by the invention of the telephone, and tells of a forgotten history with wide relevance for today’s patent crisis. Using the  invention of the telephone in 1876 as one of the great touchstones of American technological achievement, Beauchamp sheds new light on that history, and examines the legal battles that raged over Bell’s telephone patent, perhaps the most consequential patent right ever granted. Prof. Beauchamp shows that the telephone was as much a creation of American law as of scientific innovation.

On March 7, 1876, the U.S. Patent & Trademark Office approved Alexander Graham Bell’s patent for Improvement of Telegraphy (No. 174,465) in an unusually fast approval process, with three applications hand-delivered by Bell’s lawyer on February 14, mere hours before a competing application was submitted by engineer Elisha Gray. Bell’s legal maneuvering strongly suggested that an unknown informant within the PTO was assisting efforts to beat Gray to the telephone patent. Subsequent litigation reached the U.S. Supreme Court twice in 1888, first with The Telephone Cases (126 U.S. 1), and then with United States v. American Bell Telephone Corp. (128 U.S. 315). Prof. Beauchamp untangles these lawsuits and analyzes their aftermath in a way that should appeal to both intellectual property experts and novices.

Reconstructing the world of nineteenth-century patent law, replete with inventors, capitalists, and charlatans, where rival claimants and political maneuvering loomed large in the contests that erupted over new technologies, the book challenges the popular myth of Bell as the telephone’s sole inventor, exposing that story’s origins in the arguments advanced by Bell’s lawyers. More than anyone else, it was the courts that anointed Bell father of the telephone, granting him a patent monopoly that decisively shaped the American telecommunications industry for a century to come. Prof. Beauchamp investigates the sources of Bell’s legal primacy in the United States, and looks across the Atlantic to Britain to consider how another legal system handled the same technology in very different ways.

An article Politicians and Pundits Make Some Noise About Patent Reform explains that the Senate is set to vote on the America Invents Act (which passed in the House by a vote of 304-107 in June), the first major revision of American patent law in more than 60 years. In March of this year, the Senate approved its version of the Patent Reform Act by a vote of 95-5. With few differences, the bills alter a wide range of current law and practices before the U.S. Patent and Trademark Office (USPTO) including a change in fundamental entitlement to a patent to a “first to file” system; codified limitations on potential recoverable damages for infringement and the procedure in which such damages must be assessed; codification of the requirements for establishing willful infringement; and new restrictions on the venue in which patent infringement actions may be filed.

Until now, the US has maintained an inventor-friendly patent system to favor whoever files for an application first. The proposed legislation changes US law from a patent system favoring the first-to-invent to one favoring first-to-file. This change is an attempt to harmonize U.S. law with the rest of the world by doing away with the granting of a patent to the first inventor. In March, Senator Diane Feinstein unsuccessfully introduced an amendment to the Patent Reform Act of 2011 to preserve the current first to invent process, protect small inventors and help preserve America’s patent leadership. Her remarks which conclude by saying “If it ain’t broke, don’t fix it.” are here.

Proponents of the bill, large mult-national companies and President Obama, say the measure could create high-paying jobs and protect US businesses’ advantage in high-tech and other industries. Many inventors and small businesses worry that the bill would give big companies an unfair advantage. In a blog post, The Prevent American Invention Act, at Foreign Policy, Clyde Prestowitz writes that America’s penchant for invention is due in large part to its patent system, which grants the original inventor patent rights even if another person or corporation files for the patent first. He explains “This is very helpful to individual inventors and small companies because it gives them time to test the viability and commercial potential of their inventions. It also protects them from those big corporations or others who might hear of their invention and rush to be first to patent it.”

In addition to favoring big corporations who can file patents as soon as they hear about a new invention, Prestowitz says that the bill would also give foreign inventors an advantage over Americans. “A German inventor files for a patent in Europe and then, under a bi-lateral treaty, a bit later for the same patent in the United States. Shortly afterward, an American files for a U.S. patent on a similar (not identical) invention. Under the proposed new legislation, the German application would be considered prior art that would block issuance of a U.S. patent to the American applicant. But the reverse situation would not block issuance of a European patent to the German applicant.”

For more on the pending legislation, see the Congressional Research Service Report Patent Reform in the 112th Congress: Innovation Issues and the authoritative insider’s perspective on the benefits and drawbacks of proposed U.S. patent reforms Understanding Patent Reform Implications: Leading Lawyers on Defining Key Issues, Interpreting Current Proposed Legislation, and Projecting Future Developments (Call #KF3114 .U534 2009) available at the Brooklyn Law School Library.

Listen to this episode on BrooklynWorks.

In this podcast, Serge Krimnus, Brooklyn Law School Class of 2010, talks about his career in patent law. He also discusses his article, The Doctrine of Foreign Equivalents at Death’s Door, 12 N.C. J.L. & Tech. 159 (2010), which he wrote with guidance from BLS Professor of Law Derek Bambauer. This semester, Brooklyn Law School offers a course in Patent Prosecution which Adjunct Assistant Professor of Law Serge Krimnus teaches. Serge talks about his work as a Patent Agent for The Farrell Law Firm located in Melville, New York. He also offers suggestions for students considering a career in patent prosecution.

Listen to this episode on BrooklynWorks. 

This podcast features BLS student Kiran Nasir Gore, Class of 2009, who won first place in the 2008 Hon. William C. Conner Intellectual Property Writing Competition sponsored by the New York Intellectual Property Law Association. Kiram discusses her note, “Trademark Battles in a Barbie Cyber World: Trademark Protection of Website Domain Names and the Anticybersquatting Consumer Protection Act”.

The note discusses the tension between Mattel’s intellectual property rights and the public’s right to invoke the imagery of the iconic Barbie doll and examines the recent dispute between Mattel and a pornographic website using the Barbie name. “Barbie has become an American icon and taken on additional meanings and status at a societal level, attracting the attention of artists, writers, academics, and commentators in a way that is beyond the scope of Mattel’s trademark property rights,” Gore says. The note is scheduled for publication in the winter 2009 issue of the COMM/ENT, Hastings Communication and Entertainment Law Journal, Volume 28, No. 2.

Gore is currently a Notes and Comments Editor of the Brooklyn Law Review.