Defining Boundaries: IP Law Addresses Exterritoriality, Lexicography & Human Touch

“Yes, the law is about words…,” says Ben Chiriboga in writing about the essential skills that lawyers must have.  And Ken White noted more recently that “the entire project of the law is about words meaning specific things.”  But our problem often is that the law, or lawyers, frequently use unfamiliar or exotic terms that others claim have no more understood meaning than a reference to a “vermicious kind,” and those or other lawyers may overuse a word that they do not seem to actually comprehend.  Indeed, understanding and enforcing the rule of law is itself commonly about defining an undefined concept.

Intellectual property law is all the more a refuge for wordsmiths, linguists, and logophiles, as three recent IP-related matters can help illustrate.  One is the case of Abitron Austria GMBH v. Hetronic International Inc., recently argued before the United States Supreme Court, and which presented the question of whether one could understand the language of the Lanham Act to apply outside the United States in some manner, i.e. does it have extraterritoriality and how do we define “commerce”?  The second is Finjan LLC v. Eset, LLC, a Federal Circuit decision on which Eset is now seeking Supreme Court review; Finjan raises the question of whether a court must accept a patentee’s own expressly-defined claim terms when reviewing a patent.  Finally, a third intriguing development is the US Copyright Office’s March 16, 2023 guidance on works containing material generated by artificial intelligence, which raises the question of what words like “author” and phrases like “human creativity” mean. 

Let’s look at them in turn. …