Past JLTP Abstracts - Volume 2001 Issue 1


The Authority of Law in Times of Cyberspace

Viktor Mayer-Schönberger


As the Internet grows ever more pervasive, the debate continues over what ought to be the proper relationship between existing law and this new virtual realm called “cyberspace.” In this Article, Professor Mayer-Schönberger examines the question from a postmodern perspective and presents his arguments in a unique format comprised of a four-act play to better convey the emotional aspects of the debate and its potential for variable outcomes. The acts are set around only two characters: “authority of law,” which represents “the law” and all its attendant social processes, and “cyberspace,” which represents both the physical and communicative structures of that realm. Each of the four acts represents a different view of the relationship between “the law” and “cyberspace.”

Act One depicts a struggle between law and cyberspace that arises from the view that cyberspace is either a sleazy, ruleless place in need of cleaning up, or an extension of the real world. In both cases, law must triumph and subjugate cyberspace so that safety is restored or to prevent unfairness from the uneven application of rules between the real and virtual worlds. The characters again do battle in Act Two, but this time cyberspace is the victor, vanquishing law and replacing it with a regulatory framework dictated by the information infrastructure. In Act Three, law and cyberspace coexist, not by cooperating, but by de-coupling from each other. Both retain authority in its own area, with cyberspace existing outside the law, either lawless or open for self-regulation. The last act, Act Four, represents the author’s view of the true nature of the relationship between the two characters. For the first time, we see law and cyberspace engage in communicative behavior, and the ensuing dialogue reinforces, yet also displaces, law. Law is reinforced through implementation in a new realm, but it is displaced through lack of individual accountability and participation, erosion of individual and social memory, and disruption of the status quo. Thus, the author sees law being subtly undermined and transformed by the interaction with cyberspace.

The Primary Function of Patents

Nuno Pires de Carvalho


Society currently relies upon the reward and prospect doctrines to provide practical, economic justifications for the (essentially international) patent system. However, the author argues that patents do not operate primarily as rewards because they have no intrinsic value and do not automatically confer a competitive advantage. The author also argues that patents do not operate primarily as tools to prospect the market because practical considerations dictate that research funds be directed to make inventions to meet existing demands. Finding both doctrines lacking because they address only secondary features, Mr. Pires de Carvalho proposes an alternate theory that more satisfactorily explains the primary function of a patent system. He argues, under a metering function doctrine, that patents function primarily to measure the social value of an invention and are, therefore, relatively and socially more advantageous than the two competing systems, trade secrets and public subsidies. In sum, the metering function of patents permits inventors to put a price on technology and society to measure the appropriateness of that price.

After demonstrating the superiority of the meter function theory, the author expands further upon the details of its operation. Accurate metering is accomplished only by subjecting a patented invention to the forces of a competitive market. Competition is encouraged by the reduced transaction costs and increased certainty that result from quantification (disclosure of the technology in the patent claims) and qualification (predetermination of the patent term) of patent rights. Next, the author tests the reliability of the meter theory by applying it to two areas of patent law, patentable subject matter and patent misuse. Examining the question of the patentability of controversial technologies like biotechnology, computer software, and business ideas, Mr. Pires de Carvalho concludes that any technology that has been developed to the point of practical application should be patentable so that those inventions can be more accurately evaluated. The author then refutes the misconception that patents automatically confer monopoly power and rebuts the purportedly anti-competitive effects of certain patentee conduct. Finally, the author demonstrates that compulsory licenses do not necessarily promote competition and should be granted only in exceptional circumstances.

On Treating Past as Prologue

Lawrence M. Sung


Over the years, the Federal Circuit has drawn much criticism for its jurisprudence regarding biotechnology cases because of seeming incongruities between its decisions and scientific realities. In this Article, Dr. Lawrence Sung undertakes to abate that criticism by surveying some of those cases and explaining the reasoning behind the court’s decisions. Dr. Sung contends that the court was often bound by procedural guidelines and substantive legal precedent to reach the conclusions it did. It is the author’s hope that better understanding of these cases will increase confidence in the Federal Circuit’s jurisprudence and aid in predicting future outcomes so that conduct can be ordered accordingly.

Dr. Sung begins by pointing out the common failure to appreciate the inevitable temporal distortion that occurs between filing a patent application and interpreting the patent’s claims and how that distortion, coupled with rapid evolutions in biotechnology, can result in an apparent shift in legal rights. Specifically, the author examines the impact upon issues such as claim interpretation, utility, obviousness, written description, and enablement. The author then moves to examine how the deterioration over time of evidence of invention and inventorship can affect the outcome of invalidity challenges and inequitable conduct charges. Dr. Sung concludes with a review of patent interference proceedings and infringement actions that illustrate how biotechnology inventions have been treated by the United States Patent and Trademark Office and the courts. Unfortunately, the small number of biotechnology cases, their widely differing facts, and the rapid development of the field does not facilitate the identification of a trend that would permit one to predict with reasonable accuracy the outcome of the application of the patent laws to future biotechnology cases.


Improving ICANN in Ten Easy Steps: Ten Suggestions for ICANN to Improve 
its Anti-Cybersquatting Arbitration System

Robert A. Badgley


With the ICANN domain name dispute resolution regime in place for just over a year, practitioner Robert Badgley critiques its operation and identifies a number of early problems which have permitted different arbitration panels to reach contrary conclusions on the same issue. Badgley then offers ten steps that ICANN should undertake to cure these problems, with the overriding theme being to eliminate ambiguity and facilitate establishment of a uniform body of ICANN “precedent” for cybersquatting disputes.

Establishing the context for his analysis, the author first examines the ICANN “statute” governing cybersquatting disputes and the ICANN rules of procedure governing the arbitration system. The analysis defines “cybersquatting” and describes the power and function of ICANN arbitrators. Next, Badgley identifies and suggests resolutions for five procedural problems involving issues, such as, what should be the consequence of the failure to respond to a complaint, and what sanctions should be available for a complainant who engages in reverse domain name highjacking. Finally, the author surveys substantive problems with the ICANN “statute.” He identifies and recommends solutions to problems, such as, the need to clarify the analysis of the “identical or confusingly similar” element of an ICANN claim, how that analysis should be applied to “gripe sites,” and the inherent problem of proving a negative under the “rights or legitimate interests” element.


Putting the Meat Back in Meta-tags!

Joseph T. Kucala, Jr.


With Nowhere Else to Hide Can the First Amendment Protect Databases?

Joseph A. Saltie


Innovation and Access: The Role of Compulsory Licensing in the Development and Distribution of HIV/AIDS Drugs

Theodore C. Bailey