A Closer Look at the “Eye” Test: The British Influence on Early American Design Patent Infringement Law

By Mark D. Janis

from Volume 13 (2022-2023)

Download this Article in PDF format from the Jerome Hall Law Library’s Digital Repository.


The Supreme Court has asserted that “[t]he Patent Clause in our Constitution ‘was written against the backdrop’ of the English system.” That notion has a long lineage. In 1818, the author of an anonymous “Note on the Patent Laws,” widely assumed to be Justice Story, claimed that “[t]he patent acts of the United States are, in a great degree, founded on the principles and usages which have grown out of the English statute on the same subject.”

But these generalizations significantly overstate—and oversimplify—the influence of British law on the nascent American jurisprudence of patents. Early American jurists felt no reluctance about borrowing from British law, but they felt no evident obligation to do so, either. Faced with a paucity (or utter absence) of American precedents, judges in early American patent cases pretty well did whatever they pleased, sometimes relying on British decisions to fill in gaps in American law, sometimes distinguishing British from American law, and sometimes citing nothing at all.

Thus, when the Supreme Court penned its first opinion on design patent infringement in the December 1871 term—Gorham v. White—it was not entirely surprising that the Court’s lone reference to authority was to a single case from the British courts, the Holdsworth case. Still, the Court’s reliance on Holdsworth is remarkable, for reasons I explore in this article.

Part I briefly recounts the British lineage of American design patent law. Part II shows the ways in which the Court relied on the British Holdsworth case in deciding Gorham. Part III takes a closer look at Holdsworth’s influence on British design law, and compares that story to the story of the evolution of American rules for design patent infringement.

Direct to Consumer or Direct to All: Home DNA Tests and Lack of Privacy Regulations in the United States

By: Karen J. Kukla

From Volume 13 (2023-2024)

Download this Article in PDF format from the Jerome Hall Law Library’s Digital Repository.


Although the U.S. has some measures of privacy protection for genetic data, the lack of a comprehensive approach to protecting direct-to-consumer genetic testing results in privacy violations for both consumers and their relatives. This essay explores the critical need for the U.S. government to address these privacy violations and argues that the U.S. should approach the problem and strategize a solution similar to the European Union’s (EU) General Data Protection Regulation (GDPR). Part I identifies current United States law, both federal and state regulations that address DTC-GT and genetic privacy. Part II examines the lack of regulation surrounding current DTC-GT companies and the potential to abuse individuals’ privacy. Finally, Part III explores various solutions to resolve genetic privacy issues in the U.S. and advocates for the federal government to adopt a comprehensive regulatory framework like the EU or California.

Taxation of Intellectual Property Litigation

By Chitra A. Ram

from Volume 13 (2023-2024)

Download this Article in PDF format from the Jerome Hall Law Library’s Digital Repository.


In the field of intellectual property law, few attorneys consider the tax implications of legal proceedings prior to undertaking litigation. In studying the interdisciplinary space between intellectual property law, litigation, and taxation practices, this Article hopes to further expand existing research on the scope and incentives behind intellectual property protection in the United States, the policies underlying the system of federal income taxation adopted by the United States, and the precedents upheld by courts in deciding matters at the nexus of intellectual property litigation costs, expenses, and taxation.

Protection and Prevention: The Shortcomings of U.S. Copyright Law in Combatting Cultural Appropriation in the Fashion Industry

By Luke E. Steffe

from Volume 12 (2022-2023)

Download this Article in PDF format from the Jerome Hall Law Library’s Digital Repository.


American fashion represents an eclectic patchwork of diverse experiences and ideas; however, drawing upon Indigenous communities’ cultural identities and sacred traditions can easily cross the line between inspiration and appropriation. In reality, designs derived from culturally significant symbols, which have been stolen from Indigenous communities and stripped of their meaning, flood the American market. From runway shows to sports teams’ mascots to undergarment designs, these manifestations of cultural appropriation occur legally under the existing U.S. copyright regime, and adaptations to the current, Westernized system of intellectual property (IP) rights must integrate Indigenous perceptions of communal ownership with respect to their intellectual property. Copyright protection empowers native communities with both a sword and a shield, allowing for the protection and enforcement of their sacred art forms. By expanding current notions of authorship, copyright protection can extend to traditional designs and protect them from constant appropriation, and quite frankly, stealing by fashion labels. Moreover, granting a valid copyright to Indigenous designs in fashion must be accompanied by the explicit recognition of moral rights to provide comprehensive protection. In the United States, a suit for copyright infringement relies on the existence of a valid copyright; thus, the current law denying these protections to Native American and Alaskan Native communities leaves them without legal remedy when faced with the appropriation of their intellectual property. This Note proceeds in three Parts. Part One discusses Indigenous designs in fashion as a classification of Traditional Cultural Expressions (TCEs). Part Two analyzes the legal framework of U.S. copyright law as it stands and offers insight into the discrepancies between Western and Indigenous notions of intellectual property rights. Finally, Part Three suggests two legislative adaptations to account for these discrepancies and provide for the protection of Indigenous fashion designs, and all classes of TCEs, drawing upon international solutions to this issue.

Encouraging Public Access to Pharmaceuticals Through Modified Protection of Clinical Trial Data

By Scott Michael Nolan II

from Volume 12 (2022-2023)

Download this Article in PDF format from the Jerome Hall Law Library’s Digital Repository.


Part I of this Article investigates the development of pharmaceuticals and clinical trial data with a focus on patent and data protection. Part II evaluates the effects of protection and the challenges it poses to widespread public pharmaceutical access. Part III discusses two scholarly approaches to the public access issue that focus on clinical data protection and their associated challenges. In light of these scholarly works, Part IV suggests a new approach to clinical trial data protection that aims to improve public pharmaceutical access while maintaining the incentives to invent for drug developers.

Fair Use Failing the First Amendment? How the Parody and Satire Dichotomy May Be Stunting Political Discourse

By: Megan Lynn Wheeler

from Volume 12 (2022-2023)

Download this Article in PDF format from the Jerome Hall Law Library’s Digital Repository.


The First Amendment, in certain circumstances, is used as a defense to “protect[] satire and parody as a form of free speech and expression.”2 When it comes to jokes, “[q]uestions . . . have arisen in case law [pertaining to satire typically] concerning libel, emotional distress and copyright infringement.”3 Further, in a right of publicity claim, “[t]he First Amendment clearly protects all but the most intrusive coverage of news, or details of a person’s private life, such as are reported in the tabloid press or talk shows.”4 This demonstrates that humor and satire have a close relationship with the First Amendment jurisprudence and that the First Amendment provides strong protection for dissident voices pertaining to public officials and figures so long as they are not overtly “intrusive.”5 While First Amendment almost whole-heartedly urges for freedom of robust debate and discord over public concern, copyright creates a property interest in speech and expression, particularly as it pertains to the expressive works of public figures. As a result, “copyright laws grant a copyright owner the right to suppress or abridge another person’s freedom of speech when that person seeks to express copyrighted material.”6 This Note will evaluate how the stark differences of approaches between the doctrines may be most at odds in the expressions of parody and satire as they are now regulated by copyright law’s First Amendment “fair use” “safety valve” (which results in overlooking entirely the First Amendment issues) and suggest that the Supreme Court overrule, or Congress pass an amendment to, the common law parody-satire distinction to carve out an exception for parody and satire to be evaluated at a First Amendment standard of scrutiny.

This analysis will evaluate first, how satire is a utilitarian form of public and political expression recognized by the First Amendment; second, how the First Amendment defense operates in protecting comedic, humorous, and satiric forms of public comment; and, finally, how the First Amendment protection has been increasingly eclipsed by the intellectual property doctrines of copyright (and trademark) in litigation pertaining to such satirical works. Then, I will illustrate First Amendment protection analysis for satirical works through a survey of cases where the intellectual property doctrines certainly take legal priority over serious First Amendment concerns, and contrast those with cases that allow infringement or some form of copying that has little to no First Amendment value.

Volume 13



Nicole Scelta

Editorial Team

Publishing Editor: Stephanie Kaplan 

Executive Managing Editor: Qizuan (Vanessa) Wang

Executive Content Editor: Shunyo A. Morgan 

Executive Audio Editor: Caroline McCord

Managing Editors: Jacob Boesch & Graham Christian 

Content Editors: Robert Kesling & Ahsan Sohail 

Audio Editors: Taylor Nunley & Amy Qi 

Notes Editors: Karen Kukla & Sydney Schnur

Business Editor: Margaret Melchi

Articles Editors: Srija Dutta, Andy Eddington, Ben Gillard, Yiming Gu, Karlie Hinton, Arathi Kumar, Hunter Schmittou, Tianyuan Shu, Amelia Statham-Taylor, Jenna Sur, Jackson Wahlbom, Tanner Wilburn

Faculty Advisor and Primary Contact: Professor Michael Mattioli
Faculty Advisor: Professor Mark Janis


Volume 13, Issue 1:

Taxation of Intellectual Property Litigation by Chitra A. Ram

Direct to Consumer or Direct to All: Home DNA Tests and Lack of Privacy Regulations in the United States by Karen J. Kukla

A Closer Look at the “Eye” Test: The British Influence on Early American Design Patent Infringement Law by Mark D. Janis

What’s Not Natural Phenomena? Let’s Consider a Three-Step Innovative Concept Test for Composition of Matter by Sydney Hancock

Fire of Genius, Season Six

Check out our most recent episodes

Fire of Genius, Volume 13 (Season Six)

Volume 13, Episode 1: The Game of A-C Privilege as an In-House Patent Attorney

Volume 13, Episode 2: Is ChatGPT the Next Lawyer?

Volume 13, Episode 3: A Discussion of Competition vs. Data Privacy Law in the EU

Volume 13, Episode 4: IP Lessons From Barbenheimer

Volume 13, Episode 5: Is IP Law Failing Independent Fashion Designers and Small Businesses

Volume 13, Episode 6: Trends in Right to Repair

Volume 13, Episode 7: Misleading Patent Signals

Please use the following link to read Professor Reilly’s recently published paper: https://papers.ssrn.com/sol3/papers.cfm?abstract_id=4625076.

Volume 13, Episode 8: The Writer’s Strike

Volume 13, Episode 9: The Broader Social Impacts of Innovation

Volume 13, Episode 10: An Updated Discussion on Jack Daniels’ Win at the Supreme Court

Volume 13, Episode 11: Do NIL Bills Really Protect College Athletes’ Rights?

Volume 13, Episode 12: The Sticky Legal issues Around Trademarking Candy Shapes

Volume 13, Episode 13: Limitations on Extraterritorial Trademark Infringement Recovery

Volume 13, Episode 14: Redefining Expression in Ink – Copyright Law & Tattoos

Volume 13, Episode 15: The Latest on NIL with the Attack on NCAA Recruiting Guidelines

Volume 13, Episode 16: Trademarks and Brain Scans

Volume 13, Episode 17: The Unified Patent Court: A New Era for EU Patents

Volume 13, Episode 18: A Survey of AI Regulation