Suffolk University Law School Intellectual Property

MGM v. Grokster: Judicial Actvisim or a Good Decision?

Andrew Beckerman Rodau — Thu, 07 Sep 2006 06:16:10 PDT

The Supreme Court decision in MGM v. Grokster is the latest skirmish in the copyright wars. After Grokster content owners can sue companies for distributing software that enables third parties to engage in copyright infringement. Grokster enunciates a secondary liability theory which provides for liability for inducing copyright infringement when a company distributes a product with the clear intent that third parties will use it to engage in direct infringement. This theory, although not statutorily recognized in the Copyright Act, is engrafted onto the Act by the Court. Despite arguments that such action is judicial activism inducement liability has clear roots in unfair competition law which recognizes that it is improper to intentionally induce a third party to engage in illegal conduct. Hence, the focus of inducement theory is the culpable conduct of the inducer. Grokster recognized the conflicting goals which had to be balanced: protecting intellectual property to promote creative activities; and, the importance of not impeding creative and innovative conduct. Limiting liability to intentional inducement strikes a proper balance because no underlying policy consideration supports allowing such conduct. Finally, this article examines the implications of Grokster by analyzing whether the sale of iPods and digital video recorders would support an inducement claim.

Ethical Risks From the Use of Techhnology

Andrew Beckerman-Rodau — Fri, 17 Mar 2006 08:13:57 PST

The pervasive use of modern technology has resulted in law firms increasingly creating and maintaining files, litigation materials, confidential client information and other data in digital form. This form of data is easy to update, transfer and search. Hence, it can save time and increase efficiency while minimizing errors. Nevertheless, certain risks accompany use of digital data. For example, client data must be maintained in confidence. It must be preserved so that it can be recovered in the future if it is needed. Also, it must be preserved such that it can be produced with reasonable assurance it is in its original unmodified form. These risks create the potential for an attorney to run afoul of rules of professional conduct. To avoid this, an attorney today must be both cognizant of these risks and take reasonable steps to minimize such risks. This article will identify these risks, identify the applicable rules of professional conduct and suggest reasonable actions an attorney must take to avoid violating these rules.

Monitoring Employee E-Mail And Internet Usage: Avoiding The Omniscient Electronic Sweatshops: Insights From Europe.

Michael Rustad et al. — Wed, 30 Mar 2005 12:16:23 PST

Much has been written about the widespread abusive practice of e-mail and Internet surveillance by employers in the American workplace. At present, U.S. employees in the private workplace have no constitutional, common law or statutory protection against abusive e-mail monitoring practices. In effect, American workers wave goodbye to their right to privacy as soon as they log onto their workplace computer because U.S. courts have formalistically applied a property rights regime to electronic surveillance of e-mail and Internet usage. This article uses the device of a hypothetical multi-national company to compare the diametrically opposed U.S. property-rights approach with the human rights approach to the European law of monitoring employees’ e-mail and Internet usage. Part I of this article reviews the case law and statutory developments for e-mail eavesdropping in the U.S. workplace.

At present, American employers can lawfully intercept, search, and read any messages stored in workplace computers because courts have ruled that employees have no expectation of privacy in workplace electronic communications. Part II examines the European human rights tradition that accords workers a privacy expectation in the workplace. We explain the evolution of the human rights approach as a function of a wider social movement of worker’s co-determination in Europe. This part of the article next examines statutory and caselaw development from the Council of Europe and the European Union, as well as case studies of e-mail privacy rights in the United Kingdom and France, representing the common law and civil law traditions.

In Part III, we propose that Congress enact the Electronic Monitoring Act of 2005, which is a proposed statute that will harmonize U.S. workplace monitoring law with European law. The model statute will provide U.S. workers with one-time written (?) supplemented by electronic notice of employer monitoring each time an employee boots up her computer. In addition, we propose civil remedies for non-compliance with the statute. The long-term impact of this model statute will be to appropriately balance the employers’ need to monitor with employee privacy. The long-term impact of the statute in the global economy will be to give American companies a competitive edge in cross-border transactions and reduce their liability costs. Our proposed Federal Electronic Monitoring Act is only the first step to harmonizing U.S. employment law with the rights that European employees have in an increasingly borderless global economy.

Are Ideas Within The Traditional Definition of Property? A Jurisprudential Analysis

Andrew Beckerman-Rodau — Tue, 18 Jan 2005 10:35:55 PST

The differences between ideas and realty/tangible objects raise the question of whether ideas fit within the traditional concepts that comprise property law. To answer this question, this article will first attempt to provide a generic definition of property. The underlying policy reasons for the protection of intellectual property, including ideas, will be identified. In light of this definition and the underlying policies, the protection of ideas under state common law, trade secret law, and patent law will be examined. The article will conclude that common law idea protection, trade secret law, and patent law are all property based regimes predicated on the recognition of property rights in ideas.

The Choice Between Patent Protection and Trade Secret Protection: A Legal and Business Decision

Andrew Beckerman-Rodau — Tue, 18 Jan 2005 10:26:45 PST

Intellectual property (1) has always been utilized by enterprises. (2) However, modern businesses have substantially increased reliance on intellectual property. (3) To some extent this is a consequence of the explosion of technological innovation that has occurred over the past few decades. (4) Additionally, it is also attributable to the expansion of intellectual property protection. (5) For example, copyright protection was initially intended to protect printed matter. (6) Today, copyright protection extends to virtually any original work of authorship, (7) which can include, among other things, books, (8) software, (9) music, (10) pantomimes, (11) choreography, (12) motion pictures, (13) photographs, (14) maps, (15) three- dimensional objects (16) and buildings. (17) Trademark law traditionally covered words or logos used to create a mental association in the minds of consumers. (18) Modern trademarks can be virtually anything that creates such a mental association recognizable by consumers. (19) This can include slogans, (20) three-dimensional objects, (21) product packaging, (22) trade dress, (23) containers, (24) buildings, (25) sounds, (26) smells, (27) The overall color of a product (28) or an object that is a three-dimensional version of a trademark. (29) Patent law has been extended to computer software, (30) non-human life-forms, (31) methods of doing business (32) and new varieties of plants. (33) It has even been used to cover such mundane things as novel methods of lifting a box (34) and putting a golf ball. (35) Trade secret law traditionally protected secret processes used to manufacture products. (36) However, modern trade secret law provides protection for virtually anything maintained in secret by a business enterprise that gives it a competitive advantage in the marketplace. (37) This can include ideas, (38) manufacturing processes, (39) manufacturing drawings, (40) software, (41) customer lists, (42) marketing data (43) and pure information. (44)

One consequence of the expanding domain of intellectual property protection has been the creation of increasing overlaps among the various bodies of intellectual property law. (45) A non-functional three-dimensional object is potentially protectible under copyright (46) and under trademark law. (47) Additionally, design patent protection (48) may also be applicable. (49) Software may be protected via copyright, patent and/or trade secret law. (50) Recently, the Supreme Court held that a sexually reproduced plant could be protectible under both the Plant Variety Protection Act and under utility patent law; (51) and an asexually reproduced plant could be protectible under the Plant Patent Act and utility patent law. (52) Likewise, new technological innovations may be protectible under trade secret law or patent law. However, unlike other areas of intellectual property law a new innovation, typically, must be protected either under patent or trade secret law, but not under both. (53)

Patent and trade secret law can be viewed as alternative bodies of law for protecting certain types of inventions. (54) Consequently, an inventor will often have to make a choice or election between the type of protection to rely on. (55) This election must be based on considering both the legal consequences that flow from the choice and the relevant business considerations that must be factored into the choice. (56)

Part I of this article will discuss the scope of patentable subject matter; Part II will discuss the scope of subject matter protectible via trade secret law. Part III will then address the legal and business considerations related to choosing between reliance on patent or trade secret law when the relevant subject matter is potentially protectible by either body of law.

Patent Law - Balancing Profit Maximization and Public Access to Technology

Andrew Beckerman-Rodau — Fri, 08 Aug 2003 12:00:18 PDT

Patents are a subset of the larger field of law known as intellectual property law. At its most basic level, intellectual property is the broad term applied to the things that "spring" from a person's mind. These can include, among other things, new drugs, new methods of doing business, computer software, a trademark or logo used to sell a product, a song, a play or a new financial product.

Trade Secrets - The New Risks to Trade Secrets Posted by Computerization

Andrew Beckerman-Rodau — Fri, 08 Aug 2003 10:49:40 PDT

Business enterprises have always relied on intellectual property to further economic goals.¹ Well-known trademarks have been critical to the success of many consumer product companies that have spent years inculcating the public with an association between their products and a specific trademark.² Entire industries, such as publishing, music, and software, rely on intellectual property rights afforde by copyright law³ to protect their investments. Patents⁴ provide protection for much of the research and development activities conducted by commercial enterprises. Trade secret law⁵ is utilized both as an alternative to patent protection and to protect commercial information that is outside the scope of patent protection.