Intellectual Property

Professor Grimmelmann

New York Law School

Spring 2012

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.


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:


Here’s what I expect from you in class:


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


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:

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.


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 As the semester progresses, I’ll post updates to it here.


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


  1. Introduction: Misappropriation
  2. Trade Secret
  3. Patent Introduction and Claims
  4. The Patent Application
  5. Subject Matter and Utility
  6. Novelty
  7. Nonobviousness
  8. Infringement
  9. Copyright Indroduction and Originality
  10. Idea/Expression
  11. Ownership
  12. Exclusive Rights
  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
  15. Secondary Liability
  16. Transactions: Stanford v. Roche (in supplement); Effects Associates and Rosetta Books (on Blackboard) (March 19)
  17. Remedies
  18. Trademark Introduction and Distinctiveness
  19. Trade Dress
  20. Priority and Licensing
  21. Infringement
  22. Dilution
  23. Defenses
  24. Right of Publicity
  25. Free Expression Limits
  26. Exam Preparation
  27. Review session (optional) (May 2)

Final Exam