John Marshall Law Professor’s Book Cited by Both Sides in Supreme Court Briefs Over Spider-Man Toy Royalties

Lawyers for both sides in a case under consideration by the United States Supreme Court have cited a book by a professor at The John Marshall Law School in Chicago. Professor Daryl Lim’s book, Patent Misuse and Antitrust: Empirical, Doctrinal and Policy Perspectives, has been used in briefs about a dispute over royalties from a superhero toy.

  • Share on TwitterShare on FacebookShare on Google+Share on LinkedInEmail a friendRepost This

(PRWEB) June 20, 2014

Lawyers for both sides in a case under consideration by the United States Supreme Court have cited a book by a professor at The John Marshall Law School in Chicago. Professor Daryl Lim’s book, Patent Misuse and Antitrust: Empirical, Doctrinal and Policy Perspectives, has been used in briefs about a dispute over royalties from a superhero toy.

At issue in Kimble v. Marvel Enterprises, Inc. (Case No. 13-720), is the legal precedent Brulotte v. Thys Co.(Case # 379 U.S. 29) , a 50-year-old Supreme Court ruling, which refused to enforce a patent license term requiring that royalty payments be made beyond the life of the patent.

Inventor and patent owner Stephen Kimble is attempting to collect royalty payments from Marvel over a Spider-Man toy he created, despite the fact that the patent upon which the royalty was based has expired. The United States Court of Appeals for the Ninth Circuit sided with comic book giant Marvel, on the basis of Brulotte.

Citing Lim’s book, Kimble argues that Brulotte should be overturned, saying that the precedent’s long existence does not necessarily make it relevant or correct, and that its basis is outdated from today’s economic marketplace. Marvel cites Lim’s book, saying that the Brulotte decision tempered concerns over possible patent misuse with “the need to allow parties to contract freely.”

The Supreme Court recently called for the views of the Solicitor General on the issue. The court will vote later this year whether to grant Kimble’s petition.

Lim’s book provides a combination of empirical, doctrinal and policy perspectives on the doctrine of patent misuse. The book has been commended for its "excellent use of historical narratives," "powerful empirical orientation," and for being "timely" and "comprehensive" as well as for being "a very good read.”

Lim is a graduate of Stanford Law School. At John Marshall, he teaches courses in intellectual property law and antitrust law. His articles have appeared in four of the top eight IP law reviews in the U.S., as well as in peer-reviewed journals and books in Europe and Asia. He was cited in a 2013 World Intellectual Property Organization Report on patents and the public domain. He is also a peer reviewer for The Yale Law Journal.

In 2014, Professor Lim was awarded The John Marshall Law School’s Faculty Scholarly Achievement Award, an honor bestowed for "significant contributions to legal scholarship."


Contact

  • Marilyn Thomas
    The John Marshall Law School

    Email