Intellectual Property

Law 5260


Fall 2017 Course Syllabus; version 1.2

Date: August 22, 2017                                                               


Professor Kevin D. Ashley

Office: Room 525 Law Building, 3900 Forbes Avenue                                           

Room 519 Learning Research and Development Center, 3939 O'Hara Street                                                                                                    

Phone: (412) 648-1495; (412) 624-7496



Secretary: Ms. Patty Blake

Office: Room 514B Law Building

Phone: (412) 648-1333                               



Course description and rationale: The purpose of this course is to provide students a general introduction to and survey of intellectual property law. Intellectual property is designed to encourage the production of certain forms of information by granting property rights to the producers, enabling them to appropriate the value of the information they produce. This course surveys state intellectual property law (i.e., rights in undeveloped ideas, unfair competition, trade secrets, and right of publicity) and federal intellectual property law, including trademark, patent, and copyright law.) We examine some of the ramifications of recent technological developments on intellectual property.


This course is appropriate both for students who may not plan to take other courses in intellectual property in law school as well as students who do. It is a required course for the Certificate in Intellectual Property and Technology Law, which is being phased out, and a foundational course for the new Intellectual Property & Innovation Law Area of Concentration.


Credit hours and meeting times: Three credits. Tues., Thurs. 3:30 PM – 4:45 PM; Room 107, Law Building


TWEN Course Website: There is a TWEN website for this course, Intellectual Property 5260, at In order to access the site, you will need to use your Westlaw password. Beside the syllabus, the website will contain materials for distribution.


Required texts:




Email distribution list: When you first access the TWEN course website, your email address will be added to the distribution list on the TWEN page. There will be a test of the email distribution list during the first week in class. Students are responsible for double-checking that they are receiving class emails.


Office hours: Prof. Ashley will usually be available in his office, Room 525, every class-day before and after class. Students may also set up appointments via email to meet with him at other times.


Course objectives: Upon successfully completing this course, students will understand:


(1) the differences between protecting property interests in ideas and information as opposed to in goods or real estate.


(2) the state intellectual property law that serves as a backdrop for federal intellectual property protection.


(3) the differences between federal copyright, patent, and trademark protection.


(4) the constitutional and statutory sources of federal intellectual property law.


(5) the relationship between state and federal intellectual property law, and the extent to which federal IP law preempts state IP law.


(6) basic information about how to obtain, license, and enforce copyright, patent, and trademark protection.


(7) how to apply legal knowledge about intellectual property law to analyze concrete problem situations.


(8) how to analyze problems that may involve more than one kind of (state and federal) intellectual property law and to determine which law best protects what interests.


(9) the public policies at stake in the federal and state systems of intellectual property law, how well these policies are being served and the tradeoffs among them, and how these policies might be better served.


Problem scenarios: Two major goals of this course are to help students to apply the legal knowledge they learn about intellectual property law to analyze concrete problem situations, and to become accustomed to explaining their analyses orally. To that end, throughout the semester, the class will focus on a series of problem scenarios. The texts of the problems will be available on the TWEN course website (subject to a password that will be provided in class). The problems are designed to explore legal issues raised by a particular area of IP law under discussion in concrete fact situations. Often, a problem also illustrates how different areas of IP law apply to different aspects of the same fact situation, or illustrate how these different areas of IP law conflict (e.g., as a matter of federal preemption of state law.)

All students should carefully read and think through the problems before the date on which they are to be discussed in class. Prof. Ashley will lead the discussion of the first few problems until panels have been assigned. Student panels will lead the discussions of all of the subsequent problems. After the seating chart is constructed, the class will be broken down into panels, and a list of panel participants and their email addresses will be posted on the TWEN course website. As the semester progresses, a few days before each problem is scheduled to be discussed, Prof. Ashley will assign the problem to a panel for discussion. He will appoint two panel leaders to organize and lead the discussion. In consultation with the panel (either after class, via email, or via the Discussion board on the TWEN course website), the leaders should assign issues to panel members for discussion, and panel members should consider and coordinate what they will say.


At various points in the semester, Prof. Ashley will place multiple copies of his answers to the problems discussed so far at the Reserve Desk.


Evaluation: There will be two examinations. A midterm exam will cover the first third of the course material (i.e., state intellectual property law and part of federal trademark law). A final exam will cover all of the course material. The percentage weights of the exams will be announced.


Mid-term exam: The mid-term exam will be a modified open-book, take-home examination. It will comprise one essay-type question, and students will be limited to writing a limited number of double-spaced or 1.5-spaced typed pages. The exam will be distributed for download on Friday, October 6, 2017 from noon to 3:00pm. By noon on Monday, October 9, 2017, students must upload their answers. Students will also need to submit an electronic copy via a peer-review website by the later deadline indicated on that website. Instructions will be provided.


The peer-review website will distribute anonymous copies of each student’s answer to a small set of other students in the class for peer-reviewing. As a result, each student will receive reviews from peers, and will also review answers of some other students. For each exam to review, the peer reviewer will write a brief commentary evaluating the exam according to Review Criteria that will be available in the Course Materials link of the TWEN course website. The criteria focus on applying the legal knowledge learned about intellectual property law to analyzing concrete problem situations. The peer-review commentaries will be sent to the original authors and to Prof. Ashley. Meanwhile, Prof. Ashley will grade the mid-term answers independently of any student peer-reviews and preserving anonymity of authors.


The purpose of the mid-term exam and peer-review exercise is to focus students on the importance and meaning of applying legal knowledge to analyzing concrete problems. In addition, students will receive more exam feedback -- from the instructor and from peer-reviewers -- than is typical in a law school course.


A lack of good-faith participation in the peer-reviewing process as evidenced by a failure to provide thoughtful and constructive peer reviews may result in a lower grade on the mid-term.


Final exam: The final exam will be a modified open-book, take-home examination. The exam will be distributed for download on Monday, December 18, 2017 and Tuesday, December 19, 2017. Students must upload their answers within 24 hours. Answers must be typewritten and must comply with specified constraints on number of pages, minimum fonts, and margins.


Classroom participation is also very important in this course. In addition to the panels for discussing problems, Prof. Ashley may assign particular students responsibility for being prepared to discuss individual readings.


Attendance: The American Bar Association and the School of Law require regular and punctual class attendance (see At the beginning of class, Prof. Ashley will circulate an attendance sheet. It is your responsibility to ensure that you have signed the attendance sheet before leaving class. Under the attendance policy, if you do not sign the attendance sheet before leaving class, you will be marked absent even if you were actually present in class. Regular attendance is defined as attendance at not less than 80% of the classes for the semester.  Failure to satisfy these attendance requirements will result in your being certified out of the course with a grade of “U” (Unsatisfactory).


No recording policy: Please do NOT make audio or video recordings of the course classroom sessions.


Disabilities requiring accommodation: If you have a disability for which you are or may be requesting accommodation, you should contact both the office of the Associate Dean of Students in the Law School (Dean Kevin and the University Office of Disability Resources and Services (, 216 William Pitt Union, (412) 6487890/(412) 3837355 (TTY), as early as possible in the semester.  DRS will verify your disability and determine reasonable accommodations for this course. The Associate Dean of Students will oversee the implementation of accommodations. Due to the anonymous grading policy, students should not discuss exam accommodations with professors. The Associate Dean of Students and the Registrar will insure that any testing accommodations are provided through the DRS.

Schedule of Classes, Readings
and Selected General Topics: A general (and tentative) schedule of reading assignments follows. More specific assignments for upcoming classes will be announced in advance during class. You should be prepared to discuss in class all of the reading assigned, including the author’s notes and the relevant statutory provisions. We will move through the material at whatever pace seems appropriate for adequate understanding. While we will cover most of the material listed below, it is highly likely that some material will be cut later in the semester; updates to the syllabus will be posted from time to time.


Reading Assignment


8/29, T

Prob. 1 

pp. 1 – 35

Course Introduction

Prob. 1 Ace Breweries

Part 1: Intellectual Property Law in Context

I. The Sources and Limits of Intellectual Property Law

U.S. Constitution, Article I, Section 8

Golan v. Holder, p. 1

II. The Nature and Functions of Intellectual Property Law

8/31, Th


pp. 37-44,

notes 1-4, pp. 58-61,

p. 50-58


Part 2: State Intellectual Property Law

I. Rights In Undeveloped Ideas

A. Theories of Protection

Sellers v. American Broadcasting Co., p. 37

Notes, pp. 42-44

Masline v. N.Y., N.H. & H.R., p. 59 n. 2,

Nadel v. Play-By-Play Toys & Novelties, Inc. p. 50

9/5, T

pp. 44-50, 61-65

Prob. 2

Prob. 3

pp. 66-77

Lueddecke v. Chevrolet Motor Co., p. 44

Notes, pp. 58-64

B. Limits of Protection: The Place of Ideas in the Competitive Plan

pp. 64-65

Prob. 2 Abacus Corp.

Prob. 3 Cutrate Corp.

II. Unfair Competition

B. Theories of Protection

1. Misrepresentation

2. Misappropriation 

Board of Trade of City of Chicago v. Dow Jones, p. 68

Notes, p. 74-77

9/7, Th


pp. 78 – 95

Prob. 5A

pp. 95-124


III. Trade Secrets

Federal Defend Trade Secrets Act (DTSA):

A. Theory of Protection

Metallurgical Industries Inc. v. Fourtek, Inc., p. 78

Notes, pp. 89-95

Prob. 5A Dante Dressers

E.I. duPont deNemours v. Christopher, p. 95

Notes, pp. 100-106

B. Limits of Protection 

1. Personal Interests: Restraints on Post-Employment Competition. 

Wexler v. Greenberg, p. 106

Pepsico v. Redmond, p. 106-117 

Reed Roberts v. Strauman, p. 117-120;

Notes, p. 120-124

9/12, T


Prob. 5B

pp. 124 – 166

Prob. 6

2. Economic Interests: The Place of Trade Secrets in the Competitive Plan pp. 124

Prob. 5B Dante Dressers

IV. Right of Publicity

A. Theory of Protection

Carson v. Here’s Johnny Portable Toilets, p. 124 

White v. Samsung Electronics America, p. 135 

Notes, p. 143-149

B. Limits of Protection

Comedy III Productions, Inc. v. Gary Saderup, Inc. p. 149

CBC Distribution, p. 161

Notes, p. 162-166

Prob. 6 Acme Pictures

9/14, Th

pp. 167 - 190


Part 3. Federal Law of Intellectual Property

Note: Jurisdiction and Courts pp. 167-170

I. Trademark Law

A. Theories of Protection

William R. Warner v. Ely Lilly & Co., p. 174

A. Requirements for Protection

1. Use and Use in Commerce 

Blue Bell v. Farah Mfg., p. 181 

WarnerVision Entertainment, Inc. v. Empire of Carolina, Inc., p. 187

Notes, p. 190-194

9/19, T

pp. 194-239

Prob. 7A

2. Distinctiveness and Related Statutory Standards: 15 USCA 1052

Security Center v. First Nat’l Security Centers, p. 195

King-Seeley Thermos v. Aladdin Industries, p. 203

Notes, p. 207-212

Note: Trademark Abandonment, p. 212-214

In re Budge Manufacturing, p. 214

Notes, p. 218-221

In re NAD, Inc. p. 221

Notes, p. 224-226

Prob. 7A Servo Company of America

Application of Sun Oil Co., p. 226

In re California Innovations, p. 229

Notes, p. 236-239

9/21, Th

pp. 239–273

Prob. 7B 

3. Statutory Subject Matter

a. Types of Marks

b. Content

Qualitex v. Jacobson Products, p. 242

Notes, pp. 249-253

Administrative Procedures, Incontestability, Supplemental Register, Madrid System, pp. 253-261

D. Rights and Remedies 1. Rights

a. Geographic Boundaries

United Drug v. Rectanus, p. 261

Dawn Donut v. Hart’s Food Stores, p. 262

Notes, p. 270-273

Prob. 7B Servo Co. of America

9/26, T

pp. 273 – 340

b. Product and Service Boundaries

Mead Data Central v. Toyota Motor Sales, p. 274

Lanham Act Sec. 1125(c), Dilution by blurring; dilution by tarnishment

Notes, p. 281-284

Moseley v. V Secret Catalogue, Inc., p. 284

Starbucks v. Wolfe’s Borough Coffee, p. 285

Notes, p. 299-301

2. Limitations on Rights

New Kids on the Block v. News America Publishing, Inc., p. 301

Notes, p. 308-311

Louis Vuitton Malletier v. Haute Diggity Dog, p. 311

Notes, pp. 320-322

Mattel v. MCA Records, p. 322

Louis Vuitton Malletier v. Haute Diggity Dog, p. 330

Notes, pp. 335-337

Note: Domain Names, p. 337-340

9/28, Th

pp. 352-405

3. Remedies (OMIT: p. 340-352)

4. Secondary Liability

Tiffany (NJ) Inc. v. eBay Inc., p. 352

Note, p. 364-365

E. Infringement

Pickle-Rite v. Chicago Pickle, p. 366 

Virgin Enterprises Ltd. v. Nawab, p. 372

Indianapolis Colts, Inc. v. Metropolitan Baltimore Football Club Ltd., p. 383

Multi Time Machine, Inc. v. Amazon.Com, Inc., p. 386

Notes, p. 401-405

10/3, T

pp. 405 – 434

Prob. 8

E. Federal Unfair Competition Law: Lanham Act Sec. 1125(a), False designations of origin, false descriptions

Two Pesos v. Taco Cabana, p. 405

Notes, p. 416-417

Wal-Mart Stores v. Samara Brothers, p. 417

Notes, p. 423-424

TrafFix Devices v. Marketing Displays, p. 424

Notes, pp. 430-434

Prob. 8 Gasco

10/5, Th





Take home mid-term exam: Download Fri. 10/6 from noon to 3:00 pm; Upload by noon Mon. 10/9

10/10, T

pp. 435 – 481

II. Patent Law

A. Requirements for Protection

1. Statutory Subject Matter 

Diamond v. Chakrabarty, p. 439

Notes, 446-448

Bilski v. Kappos, p. 448

Notes, pp. 457-460

Mayo Collaborative Services v. Prometheus Laboratories, p. 460

Notes, p. 472-474

2. Statutory Standards

a. Section 102: Novelty and the Statutory Bars 

Application of Borst, p. 475

Notes, 478-481

10/12, Th

pp. 482 – 548

Pfaff v. Wells Electronics, p. 482 

TP Laboratories v. Professional Positioners, p. 488 

Notes, pp. 497-501

b. Section 102(g): Priority

Paulik v. Rizkalla, p. 501

Notes, pp. 505-508

c. Section 103: Nonobviousness 

Graham v. John Deere, p. 508

Stratoflex v. Aeroquip, p. 517

Notes, pp. 527-533

KSR Int’l v. Teleflex, p. 533

Notes, pp. 546-548

10/17, T

pp. 556-566

Prob. 9A

d. (Omit pp. 548-556)

e. Utility 

Lowell v. Lewis, p. 556 

Brenner v. Manson, p. 557

Notes, pp. 563-566

(OMIT: p. 566-594)

Prob. 9A John Elroy     

10/19, Th

pp. 594 – 618

pp. 638 - 673

C. Rights and Remedies

1. Rights

Paper Converting Machine v. Magna-Graphics, p. 594

Wilbur-Ellis v. Kuther, p. 604

Notes, pp. 605-618

2. Remedies (OMIT: pp. 618-637)

D. Infringement 

Eibel Process v. Minn. & Ont. Paper, p. 638

Graver Tank v. Linde Air Products, p. 639 

Warner-Jenkinson v. Hilton Davis Chemical, p. 646

Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd. p. 658

Notes, pp. 668-673

10/24, T

Prob. 9B

Prob. 10

Prob. 9B John Elroy

Prob. 10 Ardmore Corp.

10/26, Th

pp. 713-727

III. Copyright Law

A. Requirements for Protection

1. Formalities a. Notice and Publication

10/31, T

pp. 727-746

2. Statutory Subject Matter

Notes, pp. 731-734

Baker v. Selden, p. 734

Notes, pp. 739-741

3. Original Expression a. The Originality Standard 

Sheldon v. Metro-Goldwyn Pictures, p. 741

Bleistein v. Donaldson Lithographing, p. 742

11/2, Th

pp. 746 – 772

Feist Publications v. Rural Telephone Service, p. 746

Notes, pp. 755-760 

B. Ownership 1. Works For Hire and Joint Works

Community for Creative Non-Violence v. Reid, p. 762 

Notes, pp. 771-772

11/7, T

pp. 772 – 803

Erickson v. Trinity Theatre, Inc., p. 772

Notes, pp. 780-782

2. Transfers of Ownership

 New York Times Co., Inc. v. Tasini, p. 783

Notes, pp. 792-795

3. Term

pp. 795-799

4. Termination of Transfers

pp. 799-803

11/9, Th

pp. 803 – 854

C. Rights and Remedies 1. Rights

a. The Statutory Rights and Limitations

Section 106. Exclusive Rights in Copyrighted Works, p. 803

Notes, pp. 808-809

Cartoon Network LP, LLLP v. CSC Holdings, Inc., p. 810-819

Notes, pp. 819-820

Mirage Editions v. Albuquerque A.R.T., p. 820

Lee v. A.R.T. Co., p. 823

Notes, pp. 826-827

UMG Recordings, Inc. v. Augusto, p. 827

Notes, pp. 833-835

Cartoon Network LP, LLLP v. CSC Holdings, Inc., p. 835

American Broadcasting Companies, Inc. v. Aereo, Inc., p. 843

Notes, pp. 851-854

11/14, 16, T, Th


11/21, T

pp. 854 – 889

b. Fair Use

Campbell v. Acuff-Rose Music, p. 854

Bill Graham Archives v. Dorling Kindersley Ltd., p. 867

Notes, pp. 874-882

c. Secondary Liability

Fonovisa v. Cherry Auction, p. 872

Notes, pp. 888-889



 Thanksgiving Holiday

11/28, T

pp. 889 – 923

d. Exclusive Rights and New Technologies

Sony Corp. of America v. Universal City Studios, p. 891

Notes, pp. 904-910

Metro-Goldwyn-Mayer Studios v. Grokster, p. 910

Notes, pp. 923

2. Remedies (OMIT: p. 924-944)

11/30 Th

pp. 944 – 963

pp. 998-1007

D. Infringement

Nichols v. Universal Pictures Corp., p. 947

Notes, pp. 952

Selle v. Gibb, p. 953

Notes, pp. 961-963

F. Preemption of State Law, Section 301, pp. 998-1007

12/5, T


Friday Schedule; No Class

12/7, Th

Problems 11a, b, 12

Problems 11a,b Giles Naylor

Problem 12 Cooking for Runners

12/18 or 12/19


24 hour take home final exam: Download Mon. or Tue. from noon to 3:00 pm; Upload within 24 hours