Syllabus

Class 1 (August 22): Introduction (PDF)

Reading:

Casebook (CB) 1-4, 6-13 (including INS v. AP)
John Locke, Second Treatise of Government (excerpt)
Larry Lessig, Privacy as Property (excerpt)
Samuel Warren & Louis Brandeis, The Right to Privacy (excerpt)

Questions to Consider:

What are the rationales for protecting various forms of intellectual property? Can you support and criticize each? Which rationale is most powerful? Why?
What does it mean to "own" something that is intangible?
What are "excludable" and "rivalrous" goods?

Practice Problem: NONE.

Trade Secrets

Class 2 (August 24): Trade Secrets (PDF)

CB 29-41 (including Amoco Productions, CDI Energy) (NOT including Samuelson)
CB 42-45 (Cemen Tech)

Questions to Consider:

What is a "trade secret? What are the elements/requirements of trade secrecy?
Why do we protect trade secrets? Do they burden or benefit the public?
Are "trade secrets" synonymous with "secrets"? What happens when you tell someone, like your business partner?

Practice Problem: NONE.

Class 3 (August 29): Misappropriation (PDF)

Reading:

CB 59-64 (including duPont v. Christopher)
CB 74-78 (Omega Optical, Stampede Tool)

Questions to Consider:

What are the elements of a claim of trade secret misappropriation?
Is this a broad claim? Or does it apply in only limited circumstances?
How does digital/internet technology impact the misappropriation claim?

Practice Problem: NONE.

Patents

Class 4 (August 31): Applying for a Patent (PDF)

CB 111-125 (much of this includes a patent, with pictures)
Thorner v. Sony Comp. Entertainment Am. LLC
Martek Biosciences v. Nutrinova
CB 148-150 (A and B, but not "C: The Best Mode Requirement")

Questions to Consider:

What is the process for applying for a patent?
Why do we make it so difficult for people to obtain patents?
What is the "patent law deal"? What is the chief goal of the patenting process? Is it to provide a temporary monopoly over knowledge or to keep knowledge available for others? How does the patent regime achieve its chief goal?

Practice Problem: NONE.

Class 5 (Sept. 5): Patentable Subject Matter (PDF)

Reading:

CB 150-162 (including discussion of Diehr, Chakrabarty, Bilski, and full Mayo case)

Questions to Consider:

What does the phrase "anything under the sun made by man" mean?
Are computer processes patentable? Why or why not?
What is the rule for determining if processes, in general, are patentable?
What do patentable processes have in common? What do non- patentable processes have in common?
What are the rationales for not permitting patenting of "naturally occurring phenomena"?

Practice Problems: Oil From the Sky and What Subject problems

Class 6 (Sept. 7): Utility (PDF)

CB 172-178 (including discussion of Brenner and full Juicy Whip case)
"The Cost of Living," New York Magazine

Questions to Consider:

What does it mean for an invention to be "useful"?
How "useful" does an invention have to be for it to be patentable?
Can something that is useful as a tool of deception be patented?

Practice Problem: None.

Class 7 (Sept. 12): Novelty (PDF)

Reading:

CB 178-204, 210-212 (including Titanium Metals, In re Klopfenstein, Beachcombers, WL Gore, Pfaff)

Questions to Consider:

Define the "novelty" requirement.
How do we determine if something is new?
How, if at all, does the novelty requirement continue to specify the "patent law deal"?
What is the rationale behind the "public use" bar? Can you justify the decision in Beachcombers?
Who is the PHOSITA? What does it mean to be "skilled in the art"?

Practice Problem: None.

Class 8 (Sept. 14): Non-Obviousness (PDF)

CB 212-229 (including KSR v. Teleflex)
Ortho-McNeil Pharmaceutical v. Mylan Labs

Questions to Consider:

As you read the definition of "obviousness," think of examples of things that you think are obvious.
What is the rationale for the non-obviousness requirement?
What is the relationship between the requirements? How is non-obviousness different from novelty?
What does the non-obviousness requirement teach us about the person "skilled in the art"?

Practice Problems: Radiate This and Aca-Scuse Me? What Was That? problems

Class 9 (Sept. 19): Infringement, Equivalents, and Estoppel (PDF)

Reading:

CB 237-240 (NOT including Nassau Precision)
CB 246-257 (including Festo)

Questions to Consider:

What does it mean for an invention to be "equivalent" to prior art?
How does the doctrine of equivalents and prosecution history estoppel work together?
What is the rationale for the two doctrines?
Do you think that these doctrines are necessary or do they create problematic uncertainty?

Practice Problem: NONE

Class 10 (Sept. 26): Applications IRL

Guest Lecture: Errol Taylor, Partner and Chair, Biopharma Patent Litigation Practice Group, Milbank, Tweed, Hadley & McCloy LLP

Reading:

Practice Patent Prompt

Copyrights

Class 11 (Sept. 28): Copyright: Originality (PDF)

Reading:

CB 297-311 (including Bleistein and Feist)
Cartoon Network v. CSC Holdings

Questions to Consider:

What part of the Constitution authorizes Congress to pass copyright laws?
What is the dominant rationale for copyright law? Is it the same as patent law?
What are the requirements of copyrightability?
How has technology complicated the requirements of copyrightability?

Practice Problem: None.

Class 12 (Oct. 3): Ideas versus Expression & the Design of Useful Articles (PDF)

CB 314-326 (including Baker v. Selden and Brandir)
Star Athletica v. Varsity Brands

Questions to Consider:

What is the difference between the book and the forms in Baker v. Selden?
Why do we not copyright ideas?
What are some examples of different expressions with the same idea?
What is "conceptual separability" and why do we have the doctrine in copyright law? How, if at all, does it square with the rationale and purpose of copyright law in the first place?
How do we determine when something is "useful"?

Practice Problems: Yummers, Facts Schmacts, Breakfast Anyone, and Versace Models problems

Class 13 (Oct. 5): Ownership (PDF)

Reading:

CB 337-347 (including CCNV v. Reid)
Thomson v. Larson
Skim CB 348-354 (Note: This includes a long discussion on copyright duration and renewals. Please skim that, but all the information you need is here.)

Questions to Consider:

How do we determine who holds a copyright?
When multiple people are involved in the creation of a work, who holds the copyright? What does one contributor have to do in order to be a joint copyright holder? What do all contributors have to do for there to be joint ownership?
What is a "work made for hire"?
What are the factors we consider when determining if a work is a "work made for hire"?

Practice Problem: None.

Class 14 (Oct. 10): Infringement (PDF)

Three Boys Music Corp. v. Bolton
CB 355-365 (including Einstein Moomjy)

Questions to Consider:

Think of specific examples of copying in the popular press over the last several years?
Define the concept of "subconscious copying"? What do you need to prove in order to show that someone subconsciously copied your work? Do you agree with this doctrine?
What is the holding in Einstein Moomjy?
When does copying not violate the Copyright Act?

Practice Problem: Ode to Copyright problem

Class 15 (Oct. 12): Secondary Liability (PDF)

Reading:

CB 367-375
CB 428-33 (including Fonovisa)
Sony Facts
CB 434-437 (including Sony)
A&M Records v. Napster
CB 437-448 (including Grokster)

Questions to Consider:

What are the traditional types of secondary liability? What are the differences between the two?
Why do we have this kind of doctrine? Where does it come from?
Describe the original Napster technology. How was Grokster's technology different?
What does Grokster say about Sony?
Did Grokster introduce a new type of secondary liability?

Practice Problem: Derivative Investment problem

Class 16 (Oct. 17): Fair Use (PDF)

Reading:

CB 392-407 (including Campbell)
Harper & Row Publishers v. Nation Enterprises
CB 418-422 (Sony)
CB 407-410 (Perfect 10 v. Amazon)

Questions to Consider:

What are the four fair use factors? How do they work together?
Focus on the first factor: What does an infringer need to show on Factor 1?
Fair use is part of almost every copyright litigation. Why do you think that is?
What does it mean that fair use is an affirmative defense?
Consider Factor 3. When is it okay to take a lot of material?
Is sampling ever/always/sometimes fair use?
Consider all the factors together. Given the purpose of fair use and copyright law, in general, which factor do you think is the most important? Which factor do you think should be the most important? Be prepared to explain why?

Practice Problem: None.

Class 18 (Oct. 24): In-Class, Practice Based Activity on Fair Use

Questions to Consider:

There is ongoing disagreement among the circuits about the fair use test. Why do you think the Supreme Court has not taken a case to clarify the standard recently?
What is appropriation art? Should it be protected as an original work?
Do you agree with the court's decision in Cariou? Can you tell the difference between the 25 images that were fair use as a matter of law and the 5 images that weren't?
What are the courts in Cariou and Keinitz disagreeing about?

Practice Problem: None.

Class 19 (Oct. 26): Aereo & Section 512 (PDF)

Reading:

Questions to Consider:

Describe the differences between the Second Circuit and Supreme Court opinions in Aereo?
With which court do you agree? Why?
Can you think of reasons (other than a direct interpretation of the black letter law) why the Supreme Court would decide Aereo the way it did?
Where does Section 512 fit into Copyright Law, generally?
Who is helped by Section 512? What kind of content creators benefit the most? Why?
What is the practical effect of Lenz? Why do you think copyright holders were so up in arms about this decision?

Practice: Copyright Prompt

Trademarks

Class 20 (Oct. 31): Trademarks Introduction (PDF)

Reading:

CB 463-466 (DO NOT read Cococare)
Zatarain's v. Oak Grove Smokehouse
CB 476 (Starting at Note 4)-487 (including Top Tobacco)

Questions to Consider:

What is the Constitutional authorization for the Lanham Act?
Trademark law is not about misuse. What problem does trademark law address?
What are the different types of marks? Can you think of examples for each from the real world?

Practice Problem: None.

Class 21 (Nov. 2): Distinctiveness (PDF)

CB 487-504 (including Qualitex, Two Pesos, WalMart)

Questions to Consider:

Can you trademark color? Why or why not? Are there colors that are distinctive?
Can you trademark a smell? Why or why not? Are there smells that are distinctive?
Can you trademark the look of a place of business?
Define distinctiveness.
What is genericity? When does a mark become "generic"?

Practice Problems: Of Mice and Marks and Rapid Dave problems

Class 22 & 23 (Nov. 7 & 9): Confusion (PDF)

Reading:

CB 512-529 (including Kellogg, Experience Hendrix)
CB 529-539 (including King of the Mountain)

Questions to Consider:

What are the confusion factors?
Why do courts sometimes consider only a few of the 8 factors? Are certain factors more important?
What kind of evidence do you need to prove that a defendant's mark is "confusing"?
What is the effect of trademark registration on confusion cases?

Practice Problems: Not a Toy and The Sincerest Form of Flattery problems

Class 24 (Nov. 14): Dilution

Reading:

CB 547-569 (including Starbucks, University of Texas v. KST)

Questions to Consider:

How is dilution different from confusion?
What are the two types of dilution? Why do we have them?
What kinds of brands/claims are most likely able to make out successful dilution claims?
Why are dilution claims hard to win?
What is "niche fame"? What are some examples of truly famous brands?

Practice Problem: None.

Class 25 (Nov. 16): Defenses

CB 570-578 (including Chanel, KP Permanent Make-Up)
CB 589-599 (Louis Vuitton)

Questions to Consider:

What are the defenses to trademark infringement?
What is the difference between "nominative fair use" and "descriptive fair use"?
Given Chanel, what is the right way to do comparative advertising?
Compare and contrast the rules related to parody in trademark and copyright law.

Practice Problem: Diluted Beer problem

Class 26 (Nov. 21): Trademarks and Free Speech

Reading:

In re Tam

Questions to Consider:

Why did the Lanham Act include the ban on offensive marks in the first place?
Do you agree with the Court's decision? Why or why not? Give specific reasons.
Can you describe the Court's interpretation of the First Amendment in this context?
Is there a difference between using a mark and registration of a mark with respect to the First Amendment?
What impact with Tam have on the Redskins?

Practice Problem: None.

Class 27 (Nov. 28): In-Class Activities

Reading: None.

Review

Class 28 (Nov. 30): Review

Reading: None.

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