Intellectual Property

Fall 2007 Course Syllabus

Date: August 13, 2007

 

Professor Kevin D. Ashley

Office: Room 525 Law Building, 3900 Forbes Avenue                                                                                                                 Phone: (412) 648-1495

   Room 519 Learning Research and Development Center, 3939 O'Hara Street                                                                             (412) 624-7496,

Email: ashley@pitt.edu

Secretary: Ms. Patty Blake                                                                                                                                                       Phone: (412) 648-1333

Office: Room 514B Law Building                                                                                                                                                 Email: pblake@pitt.edu

 

Course description and rationale: Intellectual property is an increasingly significant topic in the Information Age. It 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 law and some of the problems of international protection of intellectual property.

 

The purpose of this course is to provide students a general introduction to and survey of intellectual property law. It 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.

 

Credit hours and meeting times: Three credits.  Tues., Wed., Fri. 11:50 AM – 12:40 PM; Room 107, Law Building

 

TWEN Course Website: There is a TWEN website for this course, Intellectual Property 5260, at lawschool.westlaw.com. You will need to use your Westlaw password to access the site. Beside the syllabus, the website will contain materials for distribution and a discussion board.

 

Required texts:

  • The course text is Copyright, Patent, Trademark and Related State Doctrines: Cases and Materials on the Law of Intellectual Property, Paul Goldstein, 2004, Revised Fifth 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 this 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 morning at 10:45 AM. 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 twelve problem scenarios. The texts of the twelve problems are 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 count for approximately 25% of the final grade. A final exam will focus primarily on the second two thirds of the course material (i.e., federal intellectual property law) but may cover relevant state intellectual property law, as well. The final exam will count for approximately 75% of the final grade.

 

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 no more than three double-spaced or 1.5-spaced typed pages. The exam will be distributed for pick-up at the Registrar’s Window on Friday, September 28, 2007 from noon to 3:00pm. By 3:00 pm on Monday, October 1, 2007, you must return a physical copy to the Registrar’s Window and submit an electronic copy via a website called the SWoRD program. The SWoRD program will distribute anonymous copies of each student’s answer to a small set of (about five) other students in the class for peer-review. As a result, each student will receive reviews from about five peers, and will also review answers of about five other students. For each exam to review, the peer reviewer will write a brief commentary evaluating the exam according to three criteria. 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. It is scheduled for pick-up on Monday, December 17 and Tuesday, December 18, 2007. The examination must be returned 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 School of Law’s attendance policy will be enforced in this class. Attendance records will be based on a daily sign-in sheet.

 

Disabilities requiring accommodation: If you have a disability for which you are or may be requesting accommodation, you should contact the Office of Student Affairs in the Law School as soon as possible in the semester. That office will refer you to the Office of Disability Resources and Services (DRS), 216 William Pitt Union, (412) 648-7890 / (412) 383-7355 (TTY). DRS will verify your disability and determine reasonable accommodations for this course.

          Due to the anonymous grading policy, students should not discuss exam accommodations with professors. The Office of Student Affairs 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.

Date

Reading Assignment

Topic

8/28, T

 

Course Introduction

8/29, W

Prob. 1 

 

Prob. 1 Ace Breweries

 

8/31, F

pp. 1 – 35

 

 

Part 1: Intellectual Property Law in Context

I. The Sources and Limits of Intellectual Property Law

Eldred v. Ashcroft, p. 1

II. The Nature and Functions of Intellectual Property Law

9/4, T

pp. 36 – 61

Prob. 2

Part 2: State Intellectual Property Law

I. Rights In Undeveloped Ideas

A. Theories of Protection

Sellers v. American Broadcasting Co., p. 36

Masline v. N.Y., N.H. & H.R., p. 56

Nadel v. Play-By-Play Toys & Novelties, Inc. p. 49

Lueddecke v. Chevrolet Motor Co., p. 43

Prob. 2 Abacus Corp.

9/5, W

pp. 61 - 68

Prob. 3

Prob. 2 Abacus Corp.

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

Aronson v. Quick Point Pencil, p. 61

Prob. 3 Cutrate Corp.

9/7, F

pp. 68 – 92 

Prob. 3 Cutrate Corp.

II. Unfair Competition

A.Theory of Protection

1. Passing Off and Secondary Meaning 

William R. Warner v. Ely Lilly & Co., p. 69

Charcoal Steak House of Charlotte v. Staley, p. 72 

Galt House v. Home Supply Co., p. 74 

2. Zone of Expansion 

The Sample, Inc. v. Porrath, p. 76

3. Dilution 

Mead Data Central v. Toyota Motor Sales, p. 83

 

9/11, T

pp. 92 - 118

4. Misappropriation 

Board of Trade of City of Chicago v. Dow Jones p. 92

B. Limits of Protection

1. Personal Interests: Rights in Names 

David B. Findlay, Inc. v. Findlay p. 101 

2. Economic Interests: The Place of Unfair Competition in the Competitive Plan 

Crescent Tool v. Kilborn & Bishop, p. 107 

Sears, Roebuck v. Stiffel, p. 109 

Compco v. Day-Brite Lighting, p. 112

9/12, W

Prob. 4

Prob. 4 Yogurt Corp. of America

9/14, F

pp. 119 - 134

Prob. 5A

III. Trade Secrets

A. Theory of Protection

Metallurgical Industries Inc. v. Fourtek, Inc., p. 119

Prob. 5A Dante Dressers

9/18, T

pp. 135 – 162 

E.I.duPont deNemours v. Christopher, p. 135

B. Limits of Protection 

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

Reed Roberts v. Strauman, p. 155 

Pepsico v. Redmond, p. 145

9/19, W

pp. 162 – 177 

Prob. 5B

Prob. 5B Dante Dressers

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

Kewanee Oil v. Bicron, p. 162

9/21, F

pp. 178 - 215

IV. Right of Publicity

A. Theory of Protection

Carson v. Here’s Johnny Portable Toilets, p. 178 

White v. Samsung Electronics America, p. 187 

B. Limits of Protection

Comedy III Productions, Inc. v. Gary Saderup, Inc. p. 202

9/25, T

Prob. 6

Prob. 6 Acme Pictures

9/26, W

pp. 216 - 219

pp. 220 - 241

Part 3. Federal Law of Intellectual Property

Note: Jurisdiction and Courts

I. Trademark Law http://www4.law.cornell.edu/uscode/15/ch22.html

A. Requirements for Protection

1. Use and Use in Commerce 

Blue Bell v. Farah Mfg., p. 225 

WarnerVision Entertainment, Inc. v. Empire of Carolina, Inc., p. 230

Lucent Information Management, Inc. v. Lucent Techonologies, Inc., p. 235

Trademark Abandonment, p. 238

9/28, F

pp. 241 – 267
Prob. 7A 

2. Distinctiveness and Related Statutory Standards: 15 USCA 1052

King-Seeley Thermos v. Aladdin Industries, p. 241 

In re NAD, Inc. p. 253 

Prob. 7A Servo Company of America
Application of Sun Oil Co., p. 256 

In re Loew’s Theatres, p. 259

In re Budge Manufacturing, p. 250

9/28-10/1

 

Take home Mid-term exam

10/2, T

pp. 267 – 299

 

3. Statutory Subject Matter

Prob. 7A Servo Company of America
Qualitex v. Jacobson Products, p. 281

In re Advertising & Marketing Development, Inc. p. 267

Midwest Plastic Fabricators, Inc. v. Underwriters Laboratories, Inc., p. 272

Supplemental Register, Administrative Procedures, Incontestability

10/3, W

pp. 299 – 322
Prob. 7B 

C. Rights and Remedies 1. Rights

a. Geographic Boundaries

United Drug v. Rectanus, p. 299

Dawn Donut v. Hart’s Food Stores, p. 300 

Prob. 7B Servo Co. of America
b. Product and Service Boundaries

Moseley v. V Secret Catalogue, Inc., p. 310

10/5, F

pp. 322 – 337,

347 - 375

 

2. Limitations on Rights

New Kids on the Block v. News America Publishing, Inc., p. 322

3. Remedies (omitted)

4. Secondary Liability

Hard Rock Café Licensing v. Concession Services, p. 347

D. Infringement

Pickle-Rite v. Chicago Pickle, p. 355 

McGregor-Doniger v. Drizzle, p. 361

Indianapolis Colts, Inc. v. Metropolitan Baltimore Football Club Ltd., p. 370

10/9, T

pp. 376 – 393

Prob. 8

E. Federal Unfair Competition Law: Lanham Act Sec. 43(a) 

Two Pesos v. Taco Cabana, p. 376 

Prob. 8 Gasco

10/10, W

pp. 394 – 415

II. Patent Law
http://www4.law.cornell.edu/uscode/35/

A. Requirements For Protection

1. Statutory Subject Matter 

Diamond v. Chakrabarty, p. 397

State Street Bank & Trust Co. v. Signature Financial Group, Inc., p. 403

10/12, F

pp. 415 – 442

2. Statutory Standards

a. Section 102: Novelty and the Statutory Bars 

Application of Borst, p. 415

Pfaff v. Wells Electronics, p. 418 

TP Laboratories v. Professional Positioners, p. 424 

10/16, T

pp. 442 - 487 

b. Section 103: Nonobviousness 

Graham v. John Deere, p. 442

Stratoflex v. Aeroquip, p. 450

In re Deuel, p. 461

c. Sections 102 and 103 in Concert: What is Prior Art? 

Hazeltine Research v. Brenner, p. 468 

Application of Foster, p. 471

d. Utility 

Lowell v. Lewis, p. 476 

Brenner v. Manson, p. 477

e. Inventorship

10/17, W

p. 487 – 492 

Prob. 9A

p. 509, n.2

pp. 511 - 513

f. Enabling Disclosure

W.L. Gore & Assoc. v. Garlock, Inc., p. 487 (skim)

Prob. 9A John Elroy     

Publication of patent applications

Fraud on patent office

10/19, F

pp. 513 -  533 

pp. 550 – 569

 

C. Rights and Remedies 1. Rights

Paper Converting Machine v. Magna-Graphics, p. 513 

Wilbur-Ellis v. Kuther, p. 522 

Dawson Chem. v. Rohm & Haas, p. 528

D. Infringement 

Eibel Process v. Minn. & Ont. Paper, p. 551

Graver Tank v. Linde Air Products, p. 551 

Warner-Jenkinson v. Hilton Davis Chemical, p. 558

10/23, T

pp. 569 – 584

Prob. 9B

D. Infringement

Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd. p. 569

Prob. 9B John Elroy

10/24, W

Prob. 9B

Prob. 9B John Elroy

 10/26, F

 Prob. 10

Prob. 10 Ardmore Corp.

10/30, T

pp. 585 - 604

III. Copyright Law
http://www4.law.cornell.edu/uscode/17/

A. Requirements for Protection

1. Formalities a. Notice 

Hasbro Bradley v. Sparkle Toys, p. 587

10/31, W

pp. 604 – 623

2. Statutory Subject Matter

Copyright Law Revision, H.R. Rep. No. 94-1476, p. 604

Baker v. Selden, p. 608

Sheldon v. Metro-Goldwyn Pictures, p. 618 

3. Original Expression a. The Originality Standard 

Bleistein v. Donaldson Lithographing, p. 618

11/2, F

pp. 623 – 637

b. The Originality Standard Applied

Feist Publications v. Rural Telephone Service, p. 623 

Miller v. Universal City Studios, p. 633 

11/6, T

pp. 637 – 656

B. Ownership 1. Works For Hire and Joint Works

Copyright Law Revision, H.R. Rep. No. 94-1476, p. 637 

Community for Creative Non-Violence v. Reid, p. 639 

Erickson v. Trinity Theatre, Inc., p. 646

11/7, W

pp. 656 – 674

2. Transfer and Term

 New York Times Co., Inc. v. Tasini, p. 656

Copyright Law Revision, H.R. Rep. No. 94-1476, p. 665

11/9, F

pp. 674 – 685 

C. Rights and Remedies 1. Rights

a. The Statutory Rights

Copyright Law Revision, H.R. Rep. No. 94-1476, p. 674

Mirage Editions v. Albuquerque A.R.T., p. 679

Lee v. A.R.T. Co., p. 681

11/13, T

pp. 685-701

 Columbia Pictures Industries v. Redd Horne, p. 685 

 Russell v. Price, p. 691

 b. Secondary Liability

 Fonovisa v. Cherry Auction, p. 695

11/14, W

pp. 701 -  733

c. Fair Use

Harper & Row, Publishers v. Nation Enterprises, p. 702 

Campbell v. Acuff-Rose Music, p. 714

11/16, F

pp. 733 - 754

d. Exclusive Rights and New Technologies

Sony Corp. of America v. Universal City Studios, p. 734 

11/20, T

pp. 767 – 796

D. Infringement

Arnstein v. Porter, p. 767

Nichols v. Universal Pictures Corp., p. 770

Selle v. Gibb, p. 776

Steinberg v. Columbia Pictures Industries, p. 784
Gross v. Seligman, p. 792

11/21-11/23

No class

Thanksgiving Holiday

11/27, T

pp. 796 – 816

E. Rights Beyond Copyright: Moral Right

Gilliam v. American Broadcasting Companies, Inc., p. 796
Dastart Corp. v. Twentieth Century Fox Film Corp., p. 805

11/28, W

pp. 816 - 825

 Preemption of State Law

11/30, F

Problems 11a, b, 12

Problems 11a,b Giles Naylor

Problem 12 Cooking for Runners

12/4, T

Problems 11a, b, 12

         "                   "

12/5, W

 

To be announced