JIPEL Vol. 7, No. 1 – Fall 2017

The NYU Journal of Intellectual Property and Entertainment Law is proud to present Volume 7 Issue 1 of the Journal. While PDFs of the individual articles may be found accompanying their respective posts, you may view and download a PDF of the complete issue here

From Mailroom to Courtroom: The Legality of Unpaid Internships In Entertainment After Glatt v. Fox Searchlight Inc.

From Mailroom to Courtroom: The Legality of Unpaid Internships In Entertainment After Glatt v. Fox Searchlight Inc.
In Glatt v. Fox Searchlight Pictures Inc., the Second Circuit established a new test — the “primary beneficiary&r dquo; test — for determining when unpaid internships may be provided by employers. In doing so, the Second Circuit rejected a strict “all–or–nothing“ six–factor test from the Department of Labor, and held that unpaid internships do not offend the Fair Labor Standards Act so long as the intern, and not the employer, is the “primary beneficiary” of the employment relationship. This Note primarily argues that the “primary beneficiary” test is superior to the rigid test proposed by the Department of Labor. This is because the “primary beneficiary” test provides a practical, flexible, and well– approach in analyzing the totality of the employee–intern relationship, thereby allowing employers to continue to provide meaningful unpaid opportunities while providing adequate safeguards from exploitation. In making this conclusion, this Note analyzes the problem through the lens of the entertainment industry, where unpaid internships are often a prerequisite to finding fulltime employment.

What Young Innovative Companies Want: Formulating Bottom-Up Patent Policy for the Internet of Things

What Young Innovative Companies Want: Formulating Bottom-Up  Patent Policy for the Internet of Things
The potential anticompetitive sequences of standard essential patents have been identified by the European Commission as a key area of policy formulation for the Internet of Things. Throughout the process of policy formulation, the input of young innovative companies may require additional consideration as illustrated by the series of thirty-one in-depth interviews undertaken with key figures in young innovative companies (YICs) across Europe. The information gathered shows that that the way the E.C. conceptualized the policy issues at stake is not wrong, but may be incomplete. While it is important to promote a better understanding of what the FRAND promise entails, young innovative companies showed a remarkable disconnect to the patent system as a whole. They not only lacked intellectual property awareness, but many also thought that the Internet of Things could be helped by open source software, rather than a standard essential patents regime. Against this background, this study strongly encouraged the European Commission to better integrate young innovative companies in the process of patent policy formulation. The fair, reasonable and non-discriminatory (FRAND) guideline the Commission issued at the end of November 2017, reflected the findings of this study by recognizing the need to raise FRAND awareness among YICs and SMEs (Small and Medium Sized Companies). Keywords: Internet of Things, patents, standards, FRAND, European Union policy, competition, young innovative companies, governance, patent policy

An Empirical Study of University Patent Activity

An Empirical Study of University Patent Activity
Since 1980, a series of legislative acts and judicial decisions have affected the ownership, scope, and duration of patents. These changes have coincided with historic increases in patent activity among academic institutions. This article presents an empirical study of how changes to patent policy precipitated responses by academic institutions, using spline regression functions to model their patent activity. We find that academic institutions typically reduced patent activity immediately before changes to the patent system, and increased patent activity immediately afterward. This is especially true among research universities. In other words, academic institutions responded to patent incentives in a strategic manner, consistent with firm behavior, by reacting to the preferences of internal coalitions to capture unrealized economic value in intellectual property. University patent activity, as a response to patent law changes, carries important economic and normative implications. The patent system uses private economic incentives to promote innovation, but academic institutions are charitable organizations intended to promote the public good. This study demonstrates that patent incentives may have encouraged academic institutions to invest in patentable innovation—in ways that potentially limit access to innovation—in order to internalize private economic value.

Patent Working Requirements and Complex Products

Patent Working Requirements and Complex Products
Patent working requirements exist throughout the world to ensure that the exclusive rights granted through patents result in an economic benefit to the granting jurisdiction. In India, if a patent is not locally worked within three years of its issuance, any person may request a compulsory license, and if the patent is not adequately worked within two years of the grant of such a compulsory license, it may be revoked. The potency of Indiaís patent working requirement was demonstrated by the 2012 issuance of a compulsory license for Bayerís patented drug Nexavar. In order to provide the public with information about patent working, India requires every patentee to file an annual statement on ìForm 27î describing the working of each of its issued Indian patents. We conducted the first comprehensive and systematic study of all Forms 27 filed in India with respect to a key industry sector: mobile devices. We obtained from public online records 4,916 valid Forms 27, corresponding to 3,126 mobile device patents. These represented only 20.1% of all Forms 27 that should have been filed and corresponded to only 72.5% of all mobile device patents for which Forms 27 should have been filed. Forms 27 were missing for almost all patentees, and even among Forms 27 that were obtained, almost none contained useful information regarding the working of the subject patents or fully complying with the informational requirements of the Indian Patent Rules. Patentees adopted drastically different positions regarding the definition of patent working, while several significant patentees claimed that they or their patent portfolios were simply too large to enable the reporting of required information. Many patentees simply omitted required descriptive information from their Forms 27 without explanation. It is likely that a combination of factors have led to this high degree of non-compliance, namely technical and administrative failures of the Indian Patent Office, and inadvertent or deliberate omissions by patent holders. However, it is also likely that there are more fundamental issues concerning the very notion of working requirements with respect to complex, multi-patent products. In effect, products that embody dozens of technical standards and thousands of patents may not necessarily be amenable to individual-level reporting of working, or even working requirements themselves. We hope that this study will contribute to the ongoing global conversation regarding the most appropriate means for collecting and disseminating information regarding the working of patents.

Fitting Marrakesh into a Consequentialist Copyright Framework

Fitting Marrakesh into a Consequentialist Copyright Framework
The Marrakesh Treaty to Facilitate Access to Published Works by Visually Impaired Persons and Persons with Print Disabilities entered into force on September 30, 2016. The treaty aims to alleviate what has been described as the “book famine,” and has been lauded as a significant achievement in advancing the rights of and promoting equal opportunity for the visually disabled. Contracting states are required to implement copyright limitations and exceptions to facilitate access to copyrighted material for the global print-disabled community. This note will argue that, notwithstanding the treaty’s strong rights-based underpinnings, the treaty aligns comfortably with U.S. consequentialist copyright justifications. This note will also demonstrate the limitations of other copyright justificatory theories while discussing their incompatibility with the treaty’s philosophy.

Tomato, Tamatie? Revising the Doctrine of Foreign Equivalents in American Trademark Law

Tomato, Tamatie? Revising the Doctrine of Foreign Equivalents in American Trademark Law
The growing specter of globalization impacts industries from communication to transportation, resulting in an unparalleled proliferation of cultural diffusion unmatched throughout history. Naturally, this cultural diffusion has familiarized American consumers with foreign brands and foreign languages despite the obvious English dominance domestically, resulting in a trademark quagmire. Under the current American doctrine of foreign equivalents, trademark examiners and courts translate non-English words into English to determine whether they meet the general United States Patent & Trademark Office (USPTO) registration requirements. However, by treating English and non-English words alike, the pool of source-identifying marks is unnecessarily restricted. This note argues that a clear rule-like form that relaxes restrictions of registering descriptive foreign language marks through offering ‘descriptive’ foreign-language a presumption of eligibility for protection would mitigate inconsistent application of the doctrine. Such a rule would also limit costs on consumers and producers that are caused by restricting the range of available marks and inhibiting creative and communicative branding.

Through the Looking Glass: Photography and the Idea/Expression Dichotomy

Through the Looking Glass: Photography and the Idea/Expression Dichotomy
Copyright law has always expressed an idea/expression dichotomy, where copyright protection extends not to an idea of a work but only to work’s expression of that idea. Alas, this distinction walks a fine line with regard to non-textual and visual works. In particular, courts are prone to inconsistent outcomes and a violation of the fundamental precepts of copyright law because courts often succumb to shortcomings in grasping aesthetic theories of originality, realism, and ideas idiosyncratic to visual works. However, this dilemma may be solved within the existing framework of copyright law. This note argues that the solution should start by focusing less on visual works’ subject matter, but rather elements of the work, such as the originality and realism of the expression that clarify the author’s creativity. Moreover, the concept of an “idea” should be defined broadly as the residual locus of uncopyrightable elements in a work, rather than a cohesive concept that attempts to definitively pin down the “idea” behind that individual work. Taking this two-pronged solution would thus both recognize visual and photographic work’s unique niche within copyright as well as align these forms of art with copyright’s law’s ultimate objective of authorship protection.

A Framework for Assessing Technology Hubs in Africa

A Framework for Assessing Technology Hubs in Africa
This article explains the importance of technology hubs as drivers of innovation, social change, and economic opportunity within and beyond the African continent. It includes a thorough review and synthesis of findings from multi-disciplinary literature, and integrates insights from qualitative data gathered via interviews and fieldwork. It identifies three archetypes of hubs—clusters, companies, and countries—and discusses examples of each archetype using Kenya as a case study. The article then discusses potential collaboration, conflicts, and competition among these archetypes of hubs, and concludes with recommendations for future researchers.