Intellectual Property

Professor Grimmelmann

New York Law School

Spring 2012

About the Course

Overview

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.

Readings

The caasebook for the class is Lydia Pallas Loren and Joseph Scott Miller. Intellectual Property Law: Cases and Materials (version 2.2 2011). The book is published online as a PDF download by Semaphore Press. You will need to obtain a copy from their website. I highly recommend printing out a copy and bringing the day’s pages with you to class.

One of the reasons I chose this casebook (although hardly the only one) is Semaphore Press’s fairer business model. By publishing online, they are able to keep costs much lower: the suggested price is $30, instead of the $150 or more you might pay for a comparable casebook from a major publisher. Instead of getting a heavy, bound book, you receive a PDF that you can read on your computer, tablet, or smartphone. You can print out as much, or as little, as you need. If the copy you printed is damaged, you can print the missing pages again, as often as you need.

There’s an important bargain here. The success of this business model depends on you. We’re trusting you not to buy one copy and share it with all your friends. We’re also asking you to pay the suggested price. If you think this bargain is a fair one, please help Semaphore help bring casebook prices down by doing your part.

There will also be course supplement, distributed in parts via Blackboard. There may also occasionally be late-breaking readings, which will be announced in class or via email, and will also be distributed via Blackboard.

Class Format

We meet 6:00 t0 7:15 PM in room W400.

Our coverage this semester will be strongly problem-oriented. Here’s how it will work. Each topic is divided into two parts: some “readings,” mostly from the casebook, and some “problems,” mostly from the course supplement. I will lecture on the readings in the second half of one class; we will then discuss the problems in the first half of the following class. This gives you a chance to use what you’ve learned from the leture when working on the problems.

Of course, this means that each 75-minute class session will be split between two topics. We’ll discuss problems from one topic in the first half, and then move on to a lecture on the next topic in the second half. The “problem” part of each class will be highly interactive; I will cold-call, divide you into groups, ask you to vote by show of hands, etc. The “lecture” part of each class will be straight lecture: I will not be cold-calling or asking for volunteers. Of course, questions are always welcome and I will answer as many as we have time for.

You are responsible for keeping track of where we are and doing the appropriate readings. I will annotate the syllabus with dates as we progress, so you can keep track of the readings, slides, and videos. You are welcome to use whatever system works for you, but I recommend the following routine:

• For the first class, read the assigned portion of the casebook. Read for comprehension, not memorization. Don’t attempt to outline or brief the cases yet.
• Following the first class’s lecture, revisit the readings and makewhatever casebrief or outline you usually do. Then do the problems, consulting the readings as necessary to prepare a sketch of an answer that you will be comfortable defending in class. Once you have completed the problems, go on to do the readings from the next topic.

Expectations

Here’s what I expect from you in class:

• Please arrive promptly. I promise that we will end on time, but that means we start on time.
• Be prepared to discuss the day’s problems, and have done the day’s readings.
• If you must miss a class session, email me beforehand, and put the words “IP Absence” in your subject line.
• During problem discussions, I’ll call extensively on students, mostly at random. I’ll do everything I can to make the experience supportive and unthreatening.
• Questions are always welcome. I’ll answer as many questions as time constraints permit. If something seems unclear to you, it’s 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 express disagreement in a friendly and professional manner.

Recording

I will attempt to videotape each class and make the recording available through Blackboard, typically within 24 hours.

Discussion

There’s a course discussion board on Blackboard. Participation is optional but encouraged. I will read the board actively and engage with anything you would like to discuss. Here are a few thoughts about interesting topics:

• Recent news stories and an explanation of how they relate to the course.
• Answers to questions posed in the casebook.
• Your opinion on whether cases we read were correctly decided.
• Connections between different cases or parts of the course.
• Links to recent opinions and a summary of the case.
• Personal experiences.

It’s more important to be thoughtful and respectful than it is to be right. An informal tone is fine, but keep it professional. You shouldn’t post anything that you would be embarrassed to have your employer read.

Grading

There will be a take-home open-book final exam; you will have all of exam period for it. Tentatively, it will have three essay questions and be subject to a strict twelve-page limit. You’re responsible for anything in the readings or discussed in class, with the emphasis on what has been discussed in class.

The exam counts for 100% of your course grade, except that I may adjust it by one third up or down for class participation. I consider good class participation to be anything that helps your classmates learn. Asking me for an adjustment is the best way not to get one.

Course Web Page

This syllabus is at http://james.grimmelmann.net/courses/ip2012S. As the semester progresses, I’ll post updates to it here.

Contact

Office: Room SE941, 9th Floor, 40 Worth Street
Phone: (212) 431-2864
Email: james.grimmelmann (at nyls)
Office Hours: Tuesdays, 9:00 to 11:00 AM

Assignments

1. Introduction: Misappropriation
   • Readings: Casebook 1-I (January 18). For this class only, we will discuss one of the cases from the readings: Theflyonthewall. Do you find the District Court or Second Circuit’s reasoning more convincing? Be prepared to give policy arguments in favor of your position.
2. Trade Secret
   • Readings: Casebook 2.I.A and 2.II.A (January 23). Note that there is no problem assignment for this day: class on the 23rd will consist solely of lecture.
   • Problems: Flaming Moe’s, Doll, Locksmith (January 25)
3. Patent Introduction and Claims
   • Readings: Casebook 3.I (January 25)
   • Problems: Worm Patent I (January 30)
4. The Patent Application
   • Readings: Casebook 3.II.B and 3.III (January 30)
   • Problems: Worm Patent II, Kiosk, Plastic-Sorting (February 1)
5. Subject Matter and Utility
   • Readings: Casebook 3.IV (February 1)
   • Problems: Genetic Testing, Sunblock (February 6)
6. Novelty
   • Readings: Casebook 3.V.A through 3.V.C, 35 U.S.C. § 102 (as amended by the America Invents Act) (February 6)
   • Problems: Worm Patent III, Pleistocene Park (February 8)
7. Nonobviousness
   • Readings: Casebook 3.VI (February 8)
   • Problems: Worm Patent IV, KSR (February 13)
8. Infringement
   • Readings: Casebook 3.VII. Skim Festo and Johnson and Johnson, but read Freedman Seating as usual. (February 13)
   • Problems: Worm Patent V, Super Soaker (February 15)
9. Copyright Indroduction and Originality
   • Readings: Casebook 4.I (February 15)
   • Problems: Kevin Garnett, Arrows, Model Car (February 20)
10. Idea/Expression
    • Readings: Casebook 4.II (February 20)
    • Problems: Games, Sweepstakes Rules, Case Briefs (February 22)
11. Ownership
    • Readings: Casebook 4.III (February 22)
    • Problems: Exquisite Corpse, Photoshoot (February 27)
12. Exclusive Rights
    • Readings: Casebook 4.IV.B; MAI v. Peak and UMG v. Augusto (in supplement) (February 27)
    • Problems: Casebook Sample, DVR in the Cloud (February 29)
13. Proving Infringement * Readings: Casebook: 4-IV-A; listen to the songs from Three Boys (February 29) * Problems: New Yorker, Seinfeld Aptitude Test, Bee Gees (March 5)
14. Fair Use
    • Readings: Casebook 4.V and Sony from 4.VI (March 5)
    • Problems: Infringement Revisited, Fair Use Lightning Round (March 7)
15. Secondary Liability
    • Readings: Casebook 4.VII (March 7)
    • Problems: Law School Library, Pirate’s Cove (March 19)
16. Transactions: Stanford v. Roche (in supplement); Effects Associates and Rosetta Books (on Blackboard) (March 19)
    • Problem: SSRN (March 21)
17. Remedies
    • Readings: Casebook 4.VIII (March 21)
    • Problem: Noon Heartache (March 26)
18. Trademark Introduction and Distinctiveness
    • Readings: Casebook 5.I (March 26)
    • Problems: Drug Stamps, Local Businesses (March 28)
19. Trade Dress
    • Readings: Casebook 5.II (March 28)
    • Problems: Beach Towel, Apple Store (April 2)
20. Priority and Licensing
    • Readings: Galt House, King-Seeley, Electro-Source, and Barcamerica (in supplement) (April 2)
    • Problems: McJobs, Mongols (April 4)
21. Infringement
    • Readings: Casebook 5.III (April 4)
    • Problems: Wine, Boats (April 9)
22. Dilution
    • Readings: Casebook 5.IV (April 9)
    • April 11: Beth Noveck Guest Lecture
    • Problems: Visa, Fashion, Dilution Lightning Round (April 16)
23. Defenses
    • Readings: Casebook 5.V (April 16)
    • April 18: Beth Noveck Guest Lecture
    • Problems: Trademark Defenses Lightning Round (April 23)
24. Right of Publicity
    • Readings: Casebook 6.III (April 23)
25. Free Expression Limits
    • Readings: Casebook 6.IV (April 25)
    • Problem: Magic Trick Illusion (to be distributed on Blackboard) (April 25)
26. Exam Preparation
    • Readings: John H. Langbein, Writing Law Examinations (April 30)
    • Problems: 2010 Final Exam (April 30)
27. Review session (optional) (May 2)
    • Send in questions in advance, or bring them with you

Final Exam

• Final Exam
• Final Exam Memo