Category: Volume 13, Issue 1

Volume 13, Issue 1

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

By Mark D. Janis

from Volume 13 (2023-2024)

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

Abstract

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.

Abstract

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.

Abstract

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.