New York Law School
About the Course
This is a survey course in intellectual property law. You’ll learn the basic doctrines of the three major federal IP regimes—patent, copyright, and trademark—along with a taste of related state law, primarily trade secret. You’ll also learn the main theories underlying IP policy and encounter major debates about where IP law ought to go.
We meet Tuesdays and Thursdays, 7:50-9:05 in room A700
Here’s what I expect from you in class:
- Please arrive promptly prepared to discuss the day’s assigned readings.
- I will call extensively on students, mostly at random. I will do everything I can to make the experience supportive and unthreatening.
- Bring your casebook and statutory supplement with you to class.
- If you must miss a class session, please try to let me know beforehand.
- It is always okay to interrupt me with a question. If something seems unclear to you, it is likely that others are also wondering the same thing.
- In class discussions, you should be respectful of and courteous towards your classmates. One of the skills you are learning as law students is how to be friendly and professional while disagreeing.
You will need:
- Robert P. Merges et al., Intellectual Property in the New Technological Age (revised 4th ed. 2007), ISBN-13: 978-0-7355-6989-8
- Intellectual Property in the New Technological Age Statutory Supplement (Robert P. Merges et al. eds 2007), ISBN-13: 978-0-7355-6371-1
Note that we will be using the revised fourth edition. If you get the plain old fourth edition, you’ll need to print out your own copies of the newest cases. The third and earlier editions are too old; don’t use one of them. You can use this conversion chart to go back and forth between the fourth edition and the revised fourth edition.
We’ll spend class time discussing some of the most interesting and hlpful problems from the casebook. Where the syllabus specifically asssigns a problem, you should come to class ready to comment intelligently on how you would answer it and why.
There will be a 3-hour open-book final exam subject to the usual NYLS examination policies. You are responsible for anything in the readings or discussed in class, with the emphasis on what has been discussed in class.
I may adjust your grade by one third up or down for class participation. I consider good class participation to be anything that helps your classmates learn. NYLS has a blind-grading policy: I won’t know who wrote which exam until after I submit your grades.
Course Web Page
This syllabus is at http://james.grimmelmann.net/courses/ip2008/. As the semester progresses, I’ll post updates to it here.
Office: Room 706D, 40 Worth St.
Phone: (212) 431-2864
Email: jgrimmelmann (at nyls)
Please put “IP course” somewhere in the subject line of any course-related email to me so that I can give it proper attention quickly.
January 15: Course Logistics, Theory, History
Part I: Trade Secret and Idea Submission (4 classes)
January 17: Trade Secrets
- Casebook 33-62 (overview, Metallurgical Industries, Rockwell, EEC (notes))
- Problems 2-1, 2-2, 2-4, 2-5
January 22: No class (legislative Monday)
January 24: Misappropriation
- Casebook 62-80 (duPont, Dravo, Kadant)
- Problems 2-7, 2-11
January 29: Confidential Relationships
- Casebook 80-100 (Wexler, CTI (notes), Redmond (notes))
- Problems 2-13, 2-14
January 31: Contract, Idea Submissions
- Casebook 101-04 (Warner-Lambert)
- Casebook 882-901 (Nadel, Desny)
- Problems 2-8, 2-9, 6-2
Part II : Patent (7 classes)
February 5: Overview
- Casebeook 117-27 (overview)
- Casebook 158-63 (procedure)
- 35 U.S.C. §§100,101
- U.S. Pat. No. 4,656,917
- U.S. Pat. No. 1,285,802
February 7: Statutory Subject Matter, Utiliy
- Casebook 127-44 (Chakrabarty, Parke-Davis)
- Casebook 144-58 (Brenner, Fisher, Juicy Whip (notes)
February 12: Disclosure, Novelty
- Reread the Note on Patenting “Abstract Ideas” at 139-40 in the casebook
- Casebook 163-69 (Incandescent Lamp), 174-79 (Gentry), 182-83 (best mode)
- 4th edition: 159-170, 174-80, 183-84
- Casebook 185-95 (Rosaire, Hall)
- 35 U.S.C. §§102(a), 112-14
February 14: Statutory Bars, Priority
- Casebook 195-211 (Egbert, City of Elizabeth, Griffith)
- 35 U.S.C. §102
February 19: Nonobviousness
- Casebook 212-37 (Graham, KSR)
- 4th edition: 214-26; print and read KSR, 127 S. Ct. 1727
- 35 U.S.C. §103
February 21: Claim Construction, Literal Infringement
- Casebook 250-74 (Markman (notes), Phillips, Larami)
- 35 U.S.C. §§154, 271
February 26: Infringement by Equivalents, Secondary Liability
- Casebook 274-79 (Graver Tank (notes), Warner-Jenkinson (notes), Hughes Aircraft (notes))
- Casebook 311-15 (C.R. Bard, Water Technologies (notes))
Part III: Copyright (7 classes)
February 28: Introduction, Requirements
- Casebook 383-411 (overview, Feist, formalities)
- Problem 4-1
- 17 U.S.C. §§101-03
March 4: Subject Matter
- Casebook 411-36 (Baker, Morrisey, Brandir)
- 17 U.S.C §105
March 6: Ownership, Duration
- Casebook 446-68 (CCNV, Aalmuhammad, Eldred (notes))
- 17 U.S.C. §201
March 11: The Reproduction Right
- Casebook 474-500 (Arnstein, Nichols, Steinberg)
- 17 U.S.C. §106
March 13: Other Exclusive Rights, Fair Use
Class will not meet today. Instead, please listen to the audio version of the day’s lecture.
- Casebook 500-35 (Stallone, Harper & Row)
- 17 U.S.C. §107, 109(a), 202
March 25: Fair Use Cnt’d
- Casebook 536-69 (Sony, Texaco, Campbell)
March 27: Secondary Liability, Digital Copyright
- Casebook 569-80 (Sony)
- Casebook 594-615 (Grokster, Kelly)
April 1: Right of Publicity
- Casebook 901-31 (Midler, White, Saderup)
- Problem 6-3
Part IV: Trademark (7 classes)
April 3: Introduction, Distinctiveness, Priority
- Casebook 633-42 (introduction)
- Casebook 650-64 (Zatarain’s)
- Ryan Haggerty, Drug Dealers Pushing “Brand Loyalty”
- 15 U.S.C. §1127
April 8: Subject Matter, Trade Dress and Product Configuration
- Casebook 642-50 (Qualitex)
- Casebook 664-76 (Two Pesos, Samara)
- Problem 5-1
- 15 U.S.C. § 1053, 1054
April 10: Registration
- Casebook 695-715 (Old Glory (notes), Nantucket, Garan (notes), Basile (notes), Park ‘N Fly)
- 15 U.S.C. §§1051, 1052, 1056, 1057, 1063, 1064, 1065, 1115
April 15: Infringement
- Casebook 715-37 (1-800-Contacts, Sleekcraft)
- Problems 5-6, 5-7
- 15 U.S.C. §§1114(1), 1125(a)
April 17: Dilution, Merchandising, False Advertising
- Casebook 737-58 (Nabisco)
- Casebook 778-87 (Johnson & Johnson)
- Problem 5-9
- 15 U.S.C. §1125(a),(c)
April 22: Cybersquatting, Genericide
- Casebook 759-78 (Zuccarini, PETA) (skim material on UDRP)
- Casebook 787-98 (Murphy Door Bed)
- 15 U.S.C. § 1125(d)
April 24: Other Defenses
- Casebook 798-833 (TrafFix, Sed Non Olet Denarius, Dawn Donut, Mattel)
- 4th edition: 780-815
- Skim the section on abandonment; we won’t discuss SNOD in class.
- Problems 5-12, 5-16
April 29: Remedies
- Casebook 348-56 (eBay)
- Casebook 625-30 (Sheldon)
- Casebook 838-44 (Lindy Pen)
- Problem 4-39