JIPEL Vol. 8 – No. 1

JIPEL Vol. 8, No. 1 – Fall 2018

The NYU Journal of Intellectual Property and Entertainment Law is proud to present Volume 8 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.

Legal journals are sometimes criticized as disconnected from the real world or labeled sounding chambers for academics. Like many of our favorite publications, our fall issue stands in stark contrast to this characterization. In what follows, you will find four discussions of real, pressing legal issues and practical legal solutions.

First, Professor Charles Tait Graves analyzes a striking disparity between the law of invention assignment contracts and the work for hire doctrine under the Copyright Act. To illustrate the divergence of the two areas of law, Professor Graves provides readers with a comprehensive legal background, a survey of the cases that have considered the conflict, and an enlightening discussion of the policy implications at play when the areas overlap. This article is the first of a three-part series in which Professor Graves calling attention to under-analyzed areas of intellectual property law that impact employee mobility.

Next, Professor Nicholas P. Terry invites readers to consider the future of healthcare given Amazon, Berkshire Hathaway, and JPMorgan Chase & Co.’s recently announced joint venture. Professor Terry begins with a case study of the expressed intentions and the past habits of a key member of the venture, Amazon. He then uses lessons from the case study to project a likely future of the healthcare venture before launching into a discussion of the possibilities of the venture, giving color to what some have hailed as the digital revolution of healthcare. Professor Terry concludes with an important discussion of existing regulatory structures as well as how hybrid healthcare should be regulated in the future.

Diving back into the world of copyright and authorship, Jennifer Yamin provides a critical analysis of how courts have applied the Aalmuhammed joint authorship test in the entertainment industry. Via an analysis of cases using the authorship test applied to screenplays, songs, and music videos, Ms. Yamin demonstrates the shortcomings of using the Aalmuhammed framework as a one-size-fits-all test. Ms. Yamin concludes by providing a starting point for reforming our evaluation of joint authorship.

Finally, Brette Trost reminds readers of the importance of intellectual property law. Using the 2016 Christopher Correa Major League Baseball scandal as a tangible example, Ms. Trost provides a riveting analysis of how the Economic Espionage Act can be used to prevent trade secret theft in professional sports. She further provides a compelling argument for why the Economic Espionage Act (that is, trade secret theft), rather than the Computer Fraud and Abuse Act, is the appropriate avenue for prosecuting behavior such as Correa’s, especially given the fluid nature of the talent pool in major league sports.

I hope that you find this issue both captivating and didactic, yet far from an academic sounding chamber. On behalf of the 2018-2019 JIPEL editorial board, thank you for reading.


Philip Simon
NYU Journal of Intellectual Property & Entertainment Law

Is the Copyright Act Inconsistent with the Law of Employee Invention Assignment Contracts?

Is the Copyright Act Inconsistent with the Law of Employee  Invention Assignment Contracts?

Charles Tait Graves*

Download a PDF version of this article here

There is a latent conflict between the law of employee invention assignment contracts and the Copyright Act’s work for hire doctrine. Countless employees sign contracts specifying that, in most cases, the employer will own trade secrets and patentable inventions, as well as copyrightable works. When employees create in the workplace, these rules are largely uncontroversial. But when employees create something outside the workplace for a new venture, there can be a conflict between these two areas of intellectual property law. The work for hire doctrine is more favorable to employee-ownership than the law of invention assignment contracts. As a perhaps surprising result, where an employee’s outside-the-workplace creation might constitute both a trade secret and a copyrightable work, these two ownership tests can point in opposite directions. Further, when an employee prevails as to copyright ownership, there are good reasons why that result precludes an employer’s conflicting claim to trade secret ownership in the same work. This friction on the boundaries of two areas of intellectual property law has important policy ramifications for employees who create intellectual property on the side, while planning for their next job. **

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Analyzing Aalmuhammed v. Lee in the Context of Entertainment Industry Employment

Analyzing <i>Aalmuhammed v. Lee </i>in the Context of Entertainment Industry Employment

By: Jennifer Yamin*

Download a PDF version of this article here

In Aalmuhammed v. Lee, the Ninth Circuit established a test for determining whether an individual contributor to a work may qualify as a joint author. The test identified three main factors: 1) the author must superintend the work by exercising control; 2) the putative co-authors must make objective manifestations of a shared intent to be co-authors; and 3) the audience appeal of the work must turn on both contributions and the share of each in its success cannot be appraised. Applying these factors, the court concluded that authorship rights could not be granted to a film consultant hired to assist in the creation of the film Malcolm X despite his sizable contributions to the final product.

By analyzing the unique interplay between intellectual property rights and entertainment industry employment law, this Note explores the harmful effects of the Aalmuhammed test on employment and unions across all types of entertainment works. The Note argues that the Ninth Circuit’s test hinders, rather than furthers Congress’s explicit constitutional duty to promote the growth of the arts. In doing so, the test establishes a dangerous precedent that is incompatible with the modern operation of the entertainment industry and paradoxically is detrimental to the very people it intends to protect: creators. The Note concludes that the Aalmuhammed test should no longer serve as the standard courts rely on to determine authorship rights and offers various proposals for reform.

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“Prime Health” and the Regulation of Hybrid Healthcare*

<p>“Prime Health” and the Regulation of Hybrid Healthcare<a name="_authorref1" href="#_author1">*</a></p>

By: Nicolas P. Terry**

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This article examines the possible constructs behind the announcement that Amazon, Berkshire Hathaway, and JPMorgan Chase & Co. are jointly building a new healthcare entity for their employees. In this article, I provide context by discussing and comparing the healthcare ambitions of the three largest information technology companies before arguing that various forms of hybrid entities will increase their footprint in healthcare data and delivery. The core of this discussion is a thought experiment about the nature of what I term “Prime Health.” That analysis is based initially on observations about Amazon’s existing culture and business model of Amazon. Thereafter I examine both what Prime Health could and should be. I argue that it will likely go beyond the pedestrian model of a very large self-funded group insurance plan; will disintermediate traditional healthcare insurers; and attempt to bring consumers and healthcare providers together into some type of online marketplace—an updated, privatized version of managed competition. In the final parts of the article I delve into the regulatory environment that hybrid healthcare generally, and Prime Health in particular, will face. This analysis includes federal device and data protection laws, a few idiosyncratic state laws, and a brief discussion of the problems inherent in the limited regulation of hybrid healthcare entities.

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Using the Economic Espionage Act to Protect Trade Secrets in Baseball

Using the Economic Espionage Act to Protect Trade Secrets in Baseball

By: Brette Trost*

Download a PDF version of this article here

In 2016, Christopher Correa, a former employee of the St. Louis Cardinals, was sentenced to forty-six months in prison for violating the Computer Fraud and Abuse Act when he accessed a Houston Astros database without authorization. However, these were not the only charges Correa could have faced. This note uses the Correa case to illustrate how the Economic Espionage Act can be used to prevent trade secret theft in Major League Baseball. More specifically, this note asserts that the sabermetric data systems used by MLB teams to evaluate and track players are legally protectable trade secrets. Furthermore, due to the fluid nature of the baseball analytics talent pool and barriers to civil prosecution inherent in baseball’s structure, the Economic Espionage Act presents the best way to combat the misappropriation of this information. The note goes on to distinguish between teams’ off-field and on-field tactics and discusses how, if at all, this framework should apply to the collection and use of biometric data.

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