Andrew Beckerman-Rodau

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What Should be Patentable? – A Proposal for Determining the Existence of Statutory Subject Matter Under 35 U.S.C. Section 101

The recent Supreme Court decision in the Myriad case, like past decisions, did not announce a clear rule that can be extrapolated from the decision and applied in other technology areas. Consequently, the determination of what subject matter is patent-eligible continues to be unclear. Patent law specifically identifies four broad categories of subject matter—process, machine, manufacture, or composition of matter—that are patent-eligible.

Associated Press Continues its Fight Against News Aggregators

AP’s common law misappropriation claim has its origins in a remarkably similar suit AP brought against a competing news service almost a century ago. In INS v. AP the Supreme Court, in 1918, enjoined INS, a competing news service, from free-riding on the work product of AP. The misappropriation action was based on INS re-distributing information to its customers which AP had previously released into the public domain. INS was enjoined from using the information for a limited time period while it was hot news (i.e. while it had commercial value as news). The Supreme Court’s decision was based on two rationales: (1) preventing unacceptable conduct in the form of a commercial enterprise free-riding on the investment of time and money by a competitor; and (2) avoiding the resulting ruinous competition that could result from a commercial enterprise free-riding on the efforts of a competitor.

The Expansion of Overlapping Intellectual Property Rights

Intellectual property law is premised on incentivizing innovative and creative activities by providing limited property rights for the fruits of such activities in order to increase the storehouse of creative and innovative knowledge for the betterment of society. Excessive overlapping protection undermines the careful balance individually developed under each body of intellectual property law. Expansion of the subject matter protected under either patent, copyright, or trademark law should only occur if it does not undermine the careful balances struck under each of the other bodies of intellectual property law. Being mindful of the balance between protection and public interest can prevent unintended over-protection of intellectual property that would work to skew the balance in favor of rights to creators and innovators at the expense of the public.

Salinger v. Colting: Second Circuit Vacates Preliminary Injunction Citing eBay v. MercExchange

Last summer J.D. Salinger sued the author/publisher of the book entitled “60 Years Later Coming Through the Rye” for copyright infringement. Salinger claimed that the book was a sequel to his famous book entitled “Catcher in the Rye” and therefore it was an infringing derivative work. The Second Circuit agreed with the district court that Salinger is likely to ultimately prevail in his lawsuit because the book is probably an infringing work which is not protected by the fair use exception to copyright infringement. However, the Second Circuit remanded because it held that the test used by the district court to decide whether to issue a preliminary injunction was no longer the proper test to use in light of the 2006 Supreme Court decision in eBay v. MercExchange, 547 U.S. 388.