Intellectual Property

Fall 2009 Course Syllabus; version 1.2

Date: October 5, 2009

 

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: 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.  Wed., Thur. 10:30 AM – 11:45 AM; Room G12, 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 and a course password to be distributed in class. Beside the syllabus, the website will contain materials for distribution and a discussion board.

 

Required texts:

 

  • 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 morning at 9:45 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 fifteen 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 quarter of the course material (i.e., state intellectual property law and part of federal trademark law) and count for approximately 25% of the final grade. A final exam will cover all of the course material and 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 four double-spaced or 1.5-spaced typed pages. The exam will be distributed for pick-up at the Registrar’s Window on Friday, October 2, 2009 from noon to 3:00pm. By noon on Monday, October 5, 2009, students must return a physical copy to the Registrar’s Window. Students will also need to submit an electronic copy via a peer-review website by the later deadline indicated on that website. See instructions here.

 

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 are now 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. It is scheduled for pick-up on Monday, December 14 and Tuesday, December 15, 2009. 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

8/26, W

 Prob. 1 

Course Introduction

Prob. 1 Ace Breweries

8/27, Th

Prob. 1 

pp. 1 – 35

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

Eldred v. Ashcroft, p. 1

II. The Nature and Functions of Intellectual Property Law

9/2, W

pp. 36 – 64

Prob. 2

 

Part 2: State Intellectual Property Law

I. Rights In Undeveloped Ideas

A. Theories of Protection

Sellers v. American Broadcasting Co., p. 36

Notes, pp. 41-43

Masline v. N.Y., N.H. & H.R., p. 58

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

Lueddecke v. Chevrolet Motor Co., p. 43

Notes, pp. 57-63

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

pp. 63-64

Prob. 2 Abacus Corp.

9/3, Th

 

Prob. 3

pp. 65 – 93 

 

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

Prob. 3 Cutrate Corp..

II. Unfair Competition

A.Theory of Protection

1. Misrepresentation

2. Misappropriation 

Board of Trade of City of Chicago v. Dow Jones, p. 67

Notes, p. 73-76

III. Trade Secrets

A. Theory of Protection

Metallurgical Industries Inc. v. Fourtek, Inc., p. 77

Notes, pp. 88-93

9/9, W

 

Prob. 5A

pp. 94 – 122 

Prob. 5B

Prob. 5A Dante Dressers

E.I.duPont deNemours v. Christopher, p. 94

Notes, pp. 98-104

B. Limits of Protection 

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

Wexler v. Greenberg, p. 104

Reed Roberts v. Strauman, p. 114-117 

Pepsico v. Redmond, p. 105-114;

Notes, p. 117-121

2. Economic Interests: The Place of Trade Secrets in the Competitive Plan pp. 121-122

Prob. 5B Dante Dressers

9/10, Th

 pp. 123 – 162

Prob. 6

 

IV. Right of Publicity

A. Theory of Protection

Carson v. Here’s Johnny Portable Toilets, p. 123 

White v. Samsung Electronics America, p. 132 

Notes, p. 140-146

B. Limits of Protection

Comedy III Productions, Inc. v. Gary Saderup, Inc. p. 146

CBC Distribution, p. 157

Notes, p. 159-162

Prob. 6 Acme Pictures

9/16, W

Prob. 6

pp. 163 - 190

 

Part 3. Federal Law of Intellectual Property

Note: Jurisdiction and Courts

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

A. Theories of Protection

William R. Warner v. Ely Lilly & Co., p. 170

A. Requirements for Protection

1. Use and Use in Commerce 

Blue Bell v. Farah Mfg., p. 177 

WarnerVision Entertainment, Inc. v. Empire of Carolina, Inc., p. 182

Notes, p. 186-190

9/17, Th

pp. 190-232

Prob. 7A

2. Distinctiveness and Related Statutory Standards: 15 USCA 1052

Security Center v. First Nat’l Security Centers, p. 190

King-Seeley Thermos v. Aladdin Industries, p. 197

Notes, p. 201-206

Note: Trademark Abandonment, p. 206-208

In re Budge Manufacturing, p. 209

In re NAD, Inc. p. 214

Prob. 7A Servo Company of America

Application of Sun Oil Co., p. 219

In re California Innovations, p. 222

Notes, p. 229-232

9/23, W

pp. 233–278

Prob. 7B 

3. Statutory Subject Matter

In re Advertising & Marketing Development, Inc. p. 233

Midwest Plastic Fabricators, Inc. v. Underwriters Laboratories, Inc., p. 237

Qualitex v. Jacobson Products, p. 246

Notes, pp. 254-257

Administrative Procedures, Incontestability, Supplemental Register

pp. 257-265

D. Rights and Remedies 1. Rights

a. Geographic Boundaries

United Drug v. Rectanus, p. 265

Dawn Donut v. Hart’s Food Stores, p. 266

Notes, p. 273-277 

Prob. 7B Servo Co. of America

9/24, Th

pp. 278 – 297

b. Product and Service Boundaries

Mead Data Central v. Toyota Motor Sales, p. 278

Notes, p. 284-287

Moseley v. V Secret Catalogue, Inc., p. 287

Notes, p. 295-297

9/30, W

pp. 297 - 345

 



2. Limitations on Rights

KP Permanent Make-Up v. Lasting Impression I, p. 297

New Kids on the Block v. News America Publishing, Inc., p. 302

Notes, p. 308-313

Mattel v. MCA Records, p. 313

Note: Domain Names, p. 322-326

3. Remedies (omitted)4. Secondary Liability

Hard Rock Café Licensing v. Concession Services, p. 337

Note, p. 343-345

10/1, Th

pp. 345 – 395

Prob. 8

E. Infringement

Pickle-Rite v. Chicago Pickle, p. 345 

McGregor-Doniger v. Drizzle, p. 351

Indianapolis Colts, Inc. v. Metropolitan Baltimore Football Club Ltd., p. 360

Notes, p. 364-367

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

Two Pesos v. Taco Cabana, p. 367

Wal-Mart Stores v. Samara Brothers, p. 377

TrafFix Devices v. Marketing Displays, p. 383

Notes, pp. 389-395 

Prob. 8 Gasco

10/2-10/5

 

Take home Mid-term exam: Pick-up 10/2; Return 10/5

10/7, W

pp. 396 – 428

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

A. Requirements For Protection

1. Statutory Subject Matter 

Diamond v. Chakrabarty, p. 400

Notes, 406-408

State Street Bank & Trust Co. v. Signature Financial Group, Inc., p. 408

Ex Parte Lundgren, p. 415

Notes, pp. 418-423

2. Statutory Standards

a. Section 102: Novelty and the Statutory Bars 

Application of Borst, p. 423

Notes, 426-428

10/8, Th

pp. 428 – 493

Pfaff v. Wells Electronics, p. 428 

TP Laboratories v. Professional Positioners, p. 434 

Notes, pp. 442-448

b. Section 102(g): Priority

Paulik v. Rizkalla, p. 448

Notes, pp. 451-454

c. Section 103: Nonobviousness 

Graham v. John Deere, p. 455

Stratoflex v. Aeroquip, p. 463

Notes, pp. 473-479

KSR Int’l v. Teleflex, p. 479

Notes, pp. 492-493

10/14, W

pp. 493 – 511

pp. 511-534 (skim)

pp. 534-535

Prob. 9A

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

Hazeltine Research v. Brenner, p. 493 

Application of Foster, p. 496

Notes, pp. 499-501

e. Utility 

Lowell v. Lewis, p. 501 

Brenner v. Manson, p. 502

Notes, pp. 508-511

f. Inventorship

pp. 511-513 (skim)

g. Enabling Disclosure

W.L. Gore & Assoc. v. Garlock, Inc., p. 514-518 (skim)

Prob. 9A John Elroy     

Administrative Procedures

pp. 519-534 (skim)

Note: Fraud and Inequitable Conduct in the Patent and Trademark Office

pp. 534-535

10/15, Th

pp. 535 – 558

pp. 576 - 610

C. Rights and Remedies

1. Rights

Paper Converting Machine v. Magna-Graphics, p. 536 

Wilbur-Ellis v. Kuther, p. 545

Notes, pp. 546-558 

2. Remedies (omit)

D. Infringement 

Eibel Process v. Minn. & Ont. Paper, p. 577

Graver Tank v. Linde Air Products, p. 578 

Warner-Jenkinson v. Hilton Davis Chemical, p. 584

Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd. p. 595

Notes, pp. 604-610

10/21, W

Prob. 9B

Prob. 10

Prob. 9B John Elroy

Prob. 10 Ardmore Corp.

10/22, Th

pp. 610 - 647

E. Preemption

1.Unfair Competition and Trademark Law

Sears, Roebuck v. Stiffel, p. 610

Compco v. Day-Brite Lighting, p. 613

Notes, pp. 616-618

2. Trade Secret Law

Kewanee Oil v. Bicron, p. 618

Notes, pp. 630-631

3. Undeveloped Ideas

Aronson v. Quick Point Pencil, p. 632

4. Industrial Design

Bonito Boats v. Thunder Craft Boats, p. 638

10/28, W

pp. 648-679

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

A. Requirements for Protection

1. Formalities a. Notice and Publication

2. Statutory Subject Matter

Baker v. Selden, p. 668

Notes, pp. 672-674

3. Original Expression a. The Originality Standard 

Sheldon v. Metro-Goldwyn Pictures, p. 674 

Bleistein v. Donaldson Lithographing, p. 675

10/29, Th

pp. 679 – 703

Feist Publications v. Rural Telephone Service, p. 679

Notes, pp. 688-693 

B. Ownership 1. Works For Hire and Joint Works

Community for Creative Non-Violence v. Reid, p. 695 

11/4, W

pp. 704 - 732

Erickson v. Trinity Theatre, Inc., p. 704

Notes, pp. 711-713

2. Transfers of Ownership

 New York Times Co., Inc. v. Tasini, p. 714

3. Term

pp. 725-729

4. Termination of Transfers

pp. 729-732

11/5, Th

pp. 732 - 754

C. Rights and Remedies 1. Rights

a. The Statutory Rights and Limitations

Mirage Editions v. Albuquerque A.R.T., p. 739

Lee v. A.R.T. Co., p. 741

Notes, pp. 745-746Columbia Pictures Industries v. Redd Horne, p. 747 

Notes, pp. 751-754

11/11, W

pp. 754 - 792

b. Fair Use

Harper & Row, Publishers v. Nation Enterprises, p. 754

Campbell v. Acuff-Rose Music, p. 764

Notes, pp. 777-784

c. Secondary Liability

Fonovisa v. Cherry Auction, p. 784

11/12, Th

pp. 792-824

d. Exclusive Rights and New Technologies

Sony Corp. of America v. Universal City Studios, p. 792

Notes, pp. 805-810Metro-Goldwyn-Mayer Studios v. Grokster, p. 810

Notes, pp. 823-824

2. Remedies (omit)

11/18, W

pp. 843 - 869

D. Infringement

Arnstein v. Porter, p. 843

Nichols v. Universal Pictures Corp., p. 846

Selle v. Gibb, p. 851

Steinberg v. Columbia Pictures Industries, p. 859
Gross v. Seligman, p. 867

Note, p. 869

11/19, Th

pp. 870 - 891

E. Rights Beyond Copyright: Moral Right

Gilliam v. American Broadcasting Companies, Inc., p. 871
Dastart Corp. v. Twentieth Century Fox Film Corp., p. 880

Notes, pp. 888-891

11/25-11/27

No class

Thanksgiving Holiday

12/2, W

pp. 891 – 902

Problems 11a, b

F. Preemption of State Law, Section 301

pp. 891-902

Problems 11a,b Giles Naylor

12/3, Th

Problem 12

Problem 12 Cooking for Runners