Law 5260
Fall 2018
Course Syllabus; version 1.2
Date: September 21, 2018
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
Email: ashley@pitt.edu
Secretary:
Ms. Patty Blake
Office: Room 514B Law Building
Phone: (412) 648-1333
Email: pblake@pitt.edu
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 foundational course for the Intellectual Property
& Innovation Law Area of Concentration.
Credit hours and
meeting times: Three credits. Tues.,
Thurs. 3:30 PM – 4:45 PM; Room G20, Law Building
TWEN
Course Website: There is a TWEN website for this course, Intellectual
Property 5260, at lawschool.westlaw.com. 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:
·
The course text is Copyright,
Patent, Trademark and Related State Doctrines: Cases and Materials on the Law
of Intellectual Property, Paul Goldstein and R. Anthony Reese, 2017, Eighth
Edition, University Casebook Series, Foundation Press.
·
Students will also need a late edition
of a statutory supplement like Unfair Competition, Trademark, Copyright and
Patent: Selected Statutes and International Agreements, Foundation Press.
Links are provided below to the Cornell University Law School Legal Information
Institute versions of the relevant federal statutes, but it is also useful to
have a booklet covering the relevant state and federal laws.
·
Professor Ashley will distribute a
Problem Set via the Materials link of the TWEN course website and other
materials through a Course Materials link.
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 5, 2018 from noon to
3:00pm. By noon on Monday, October 8, 2018, 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, 2018 and Tuesday, December 19, 2018. 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 http://law.pitt.edu/pp/attendance).
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 or live stream them.
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 Deasy; deasy@pitt.edu)
and the University Office of DisabilityResources
and Services (http://www.drs.pitt.edu),
140 William Pitt Union, (412) 648-7890/(412) 624-3346 (fax), 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 ensure that
any testing accommodations are provided through DRS. A comprehensive
description of the services of DRS can be obtained at www.drs.pitt.edu.
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.
Date |
Reading Assignment |
Topic |
8/28, 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 |
8/30, 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 |
9/4, 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 |
9/6, Th |
pp. 78 – 95 Prob. 5A pp. 95-124 |
III. Trade Secrets 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 Defend Trade Secrets Act of 2016 -- https://www.law.cornell.edu/uscode/text/18/1836 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 |
9/11, 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 |
9/13, Th |
pp. 167 - 190 |
Part 3. Federal Law of Intellectual Property Note: Jurisdiction and Courts pp. 167-170 I.
Trademark Law http://www4.law.cornell.edu/uscode/15/ch22.html 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 |
9/18, 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 |
9/20, 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 |
9/25, T |
pp. 273 – 340 |
b. Product and Service Boundaries Mead Data Central v. Toyota Motor Sales, p. 274 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 |
9/27, Th |
NO
CLASS |
|
10/2, T |
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 |
10/4, Th |
pp. 405 – 434 Prob. 8 |
E. Federal Unfair Competition Law: Lanham Act Sec. 1125(a) 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- 10/8 |
|
Take home mid-term exam: Download Fri. 10/5 from noon to 3:00 pm; Upload by noon Mon. 10/8 |
10/9, 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 |
10/11, 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 |
10/16, 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 |
10/18, 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 |
10/23, T |
Prob. 9B Prob. 10 |
Prob. 9B John Elroy Prob. 10 Ardmore Corp. |
10/25, Th |
pp. 713-727 |
III. Copyright Law A. Requirements for Protection 1. Formalities a. Notice and Publication |
10/30, 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 |
11/1, 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 |
11/6, 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 |
11/8, 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 |
11/13, 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 |
11/15, Th |
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) |
11/20 T |
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 |
11/22 |
NO CLASS |
Thanksgiving Holiday |
11/27 Th |
Problems 11a, b, 12 |
Problems 11a,b Giles Naylor Problem 12 Cooking for Runners |
11/29, Th |
“ “ |
“ “ |
12/4, T |
|
Friday
Schedule; No
Class |
12/6, Th |
NO
CLASS |
|
12/17 or 12/18 |
|
24 hour take home
final exam: Download Mon. or Tue. from noon to 3:00 pm;
Upload within 24 hours |