An Introduction to Intellectual Property

Professor Steven Wilf
University of Connecticut School of Law
Spring 2003

Office Hours: W, 3:30-5:00
Hosmer 303
(860) 570-5381
swilf@law.uconn.edu

Overview:

Intellectual property law is concerned with the legal regulation of mental products. It affects such diverse subjects as the visual and performing arts, new plant varieties, electronic databases, advertising, insulin producing bacteria, and video games. This course seeks to mix practice-directed material with public policy concerns. It will approach intellectual property as a regulatory system, balancing incentives to foster human creativity while at the same time seeking not to unduly restrict its diffusion. Since intellectual property is such a dynamic, rapidly changing area of law, many of the cases and statutes discussed are of quite recent vintage. In order for the course material not to become obsolete within just a few years, the organizing focus of the course is conceptual (upon the core doctrines of intellectual property and how they are interconnected) and upon directly confronting the question of legal change itself-how are intellectual property regimes evolving? What new judicial and legislative developments are in the works? And how should we respond?

Course Topics:

Origins of Intellectual Property Law
Trade Secrets
Trademark
Rights of Publicity & Moral Rights
Copyright
Patent
International Protection and the Future of Intellectual Property Law

Although each individual intellectual property regime has its own subject matter requirements and standards for infringement, they share certain essential features. Each provides limited property rights vested in intangible mental products in exchange for eventual public dissemination. Some topics have been excluded, such as the intersection between intellectual property and antitrust, patent drafting and litigation, and (for the most part) remedies. These are addressed in advanced courses. The following five regimes receive a more comprehensive treatment in the class:

Trade Secrets: protects concrete information of economic value which is the subject of reasonable efforts under the circumstances to maintain secrecy. This protection is most commonly provided under state law regimes, and does not require any formalities.

Trademark: provides for the protection of any word, symbol, or device adopted and used to identify goods and distinguish them from others. As established under the Federal Lanham Act, trademark protection may attach through use, although registration affords procedural and remedial advantages.

Rights of Publicity: grants an individual exclusive control over commercial use of his or her identity, including name, likeness, and performing style. These are protected as common law rights or through state statutes.

Copyright: grants holder exclusive right to reproduce, distribute, perform, display, or license his or her work. These rights arise automatically when an original work is fixed in a concrete medium of expression. As defined under the amended Copyright Act of 1976, the scope of copyright protection is limited in time and through such additional limitations as fair use.

Patent: confers rights upon any new and useful process, machine, manufacture, or composition of nature. According to the Patent Act, a patent may be obtained only through filing a timely application with the U.S. Patent and Trademark Office, which will determine if the invention falls within the subject mater of patent, meets its three requirements-utility, novelty, and non-obviousness as a over the prior art, and includes an enabling description.

Course Requirements:

The course requirements include thoughtful participation in class discussion and completion of a three-hour final exam. The exam is quasi-open book. It will be graded for the quality of the legal writing and argument as well as for knowledge of the subject.

We will be analyzing four types of materials. Two of these types are assigned readings: (1) intellectual property statutes, which may be examined in the statutory supplement; and (2) cases found in the casebook and course packet (those cases in the course packet are marked with an * in the syllabus). The remaining two types of materials will be presented through a lecture and discussion format, and do not require prior reading: (3) recently passed and proposed statutory material (described in the text boxes in the syllabus); and (4) what may be called shadow cases, cases which extend or limit the cases we will be reading, and which will be presented orally in class. Towards the end of the semester, I will distribute a list of citations for the shadow cases in order for students to clarify any points discussed in class or to pursue a particular personal interest. Students are expected to do the assigned reading in advance, and will be called upon to answer questions. Attendance is required.

Cases & Assignments:

Week One: Origins and Rationale for Intellectual Property Laws

Cases:

International News Service v. Associated Press (1918)
Sears, Roebuck & Co. v. Stiffel Co. (1964)
Compco Corp. v. Day-Brite Lighting Inc. (1964)
Bonito Boats, Inc. v. Thunder Craft Boats, Inc. (1989)

Statutes:

Week Two: Trade Secret Law
Standards of Common Law Protection

Cases:

Metallurgical Industries, Inc. v. Fourtek, Inc. (1986)
E.I. duPont deNemours & Co., Inc. v. Christopher (1970)
Rockwell Graphic Systems, Inc. v. Dev Industries, Inc. (1991)

Statutes:

Restatement of Torts
Uniform Trade Secrets Act (1985) §§ 1, 5, and 7
Restatement (Third) of Unfair Competition, §§ 38, 39, 40, 41, 42, 43, 44, 45, 46, 47, 48, 49

Employment Relation and Contract Considerations

Cases:

Pepsico, Inc. v. Redmond (1995)
Reed, Roberts Associates, Inc. v. Strauman (1976)
Warner-Lambert Pharmaceutical Co. v. John J. Reynolds, Inc. (1959)
Eden Hannon & Co. v. Sumitomo Trust & Banking Co. (1990)
Kewanee Oil v. Bicron Corp. (1974)
ProCD, Inc. v. Zeidenberg (1996)

Statutes:

Economic Espionage Act (1996)
Discussion of proposed Uniform Computer Information Transactions Act (UCITA)
(Additional Trade Secret statutes)

Week Three through Week Six: Trademark Law
Introduction: Distinctiveness & Type of Marks

Cases:

Kellogg Co. v. National Biscuit Co. (1983)
Shaw v. Time-Life Records (1975)
Zatarains, Inc. v. Oak Grove Smokehouse, Inc. (1983)
Car-Freshner Corp. v. S.C. Johnson & Son, Inc. (1995)
Genesee Brewing Co., Inc. v. Stroh Brewing Co. (1997)
In re Seats, Inc. (1985)
In re Nantucket, Inc. (1982)
Taylor Wine Co., Inc. v. Bully Hill Vineyards, Inc. (1978)
Levitt Corp. v. Levitt (1979)

Statutes:

Lanham Act (1946), §§ 2, 3, 4, 43, 45
Discussion of Lanham Act § 1052(f), as amended, per NAFTA Implementation Act of 1993

Subject Matter and Trade Dress

Cases:

Qualitex Co. v. Jacobson Products Co., Inc. (1995)
In re Morton-Norwich Products, Inc. (1982)
Wallace International Silversmiths, Inc. v. Godinger Silver Art Co., Inc. (1990)
Romm Art Creations Ltd. v. Simcha International Inc. (1992)
Two Pesos, Inc. v. Taco Cabana, Inc. (1992)
Wal-Mart Stores, Inc. v. Samara Brothers, Inc. (2000)
Moseley v. V Secret Catalogue, Inc. (2003)
Traffix Devices, Inc. v. Marketing Displays, Inc. (2001)

Statutes:

Discussion of the proposed Trade Dress Protection Act, proposed Lanham Act § 1825(c) as shall be amended

Competing Marks: Incontestability, Good Faith Use, and Problems of Priority

Cases:

In re Old Glory Condom Corp. (1993)
Park 'N Fly, Inc. v. Dollar Park and Fly, Inc. (1985)
Blue Bell, Inc. v. Farah Manufacturing Co, Inc. (1975)
Warnervision Entertainment, Inc. v. Empire of Carolina, Inc (1996)
Hanover Star Milling v. Metcalf
Burger King of Florida, Inc. v. Hoots (1968)
Dawn Donut Co., Inc. v. Hart Food Stores, Inc. (1959)
Application of Beatrice Foods (1970)

Statutes:

Lanham Act (1946), §§ 1, 15

Test for Infringement

Cases:

Yocum v. Covington
Libman Co., v. Vining Industries, Inc. (1995)
Lang v. Retirement Living Publishing Co. (1991)
International Order of Job's Daughters v. Lindeburg and Co. (1980)
Mead Data Central, Inc. v. Toyota Motor Sales, U.S.A., Inc. (1989)
Panavision International, L.P. v. Toeppen (1998)
Mattel Inc. v. Barbie-Club.com (2002)
Playboy Enterprises, Inc. v. Netscape Communications Corp. (1999)

Statutes:

Lanham Act (1946), § 32
(Additional Trademark statutes)

Week Seven: Rights of Publicity and Moral Rights

Cases:

Martin Luther King, Jr. Center for Social Change, Inc. v. American Heritage Products, Inc. (1982)
Zacchini v. Scripps-Howard Broadcasting Co. (1977)
Cardtoons v. Major League Baseball Players Association (1996)
White v. Samsung Electronics America, Inc. (1993)
Gilliam v. American Broadcasting Co., Inc. (1976)

Statutes:

Lanham Act (1946), § 43
Berne Convention, Article 6bis (1971)
Discussion of proposals for Federal Rights of Publicity Legislation
Discussion of the Visual Artists Rights Act (1990), (and as incorporated in) § 106a of the Copyright Act (1976) as amended
(Additional Rights of Publicity statutes)

Week Eight through Week Eleven: Copyright Law
Subject Matter Requirement

Cases:

Baker v. Selden (1879)
Morrissey v. Procter & Gamble Co. (1967)
Burrow-Giles Lithographic Co. v. Sarony (1884)
Bleistein v. Donaldson Lithographing Co. (1903)
Baltimore Orioles v. Major League Baseball (1986)
Mazer v. Stein (1954)
Carol Barnhardt v. Economy Cover Corp. (1984)

Statutes:

Copyright Act (1976), § 102
Discussion of Architectural Works Protection Act (1990), § 120 of the Copyright Act (1976), as amended

Exclusive Rights and Infringement

Cases:

Lewis Galoob Toys, Inc. v. Nintendo of America, Inc. (1992)
Nichols v. Universal City Studios
Sheldon v. Metro-Goldwyn Pictures Corp. (1938)
Arnstein v. Porter (1946)
Gaste v. Kaiserman (1988)
Hoehling v. Universal City Studios, Inc. (1980)
Greenberg v. National Geographic Society (2001)

Statutes:

Means of Protection: Databases, New Technologies and Compulsory Licensing

Cases:

Feist Publications, Inc. v. Rural Telephone Service Co., Inc. (1991)
Lotus Development Corp. v. Borland International Inc. (1995)
Computer Associates International Inc. v. Altai, Inc. (1992)
A & M Records, Inc. v. Napster, Inc. (2001)

Statutes:

Copyright Act (1976), § 103
WIPO Copyright Treaty of 1996, Article 5 (compilations of data)
Discussion of the proposed Collections of Information Anti-Piracy Act
Discussion of the Audio Home Recording Act, Copyright Act (1976), § 115
Discussion of the Digital Millennium Copyright Act (1998)

Fair Use, Copyright Extension Act, and the Public Domain

Cases:

Sony Corp. v. Universal City Studios, Inc. (1984) (The Betamax Case)
American Geophysical Union v. Texaco, Inc. (1994)
Harper & Row, Publishers, Inc. v. Nation Enterprises (1985)
Campbell a.k.a. Luke Skyywalker v. Acuff-Rose Music, Inc. (1994)
Suntrust Bank v. Houghton Mifflin Co. (2001)

Statutes:

Week Twelve through Week Thirteen: Patent and Industrial Design Law
Subject Matter of Utility Patents

Statutory Subject Matter Limitations

Cases:

Funk Brothers Seed Co. v. Kalo Inoculant Co. (1948)
Diamond, Commissioner of Patents and Trademarks v. Chakrabarty (1980)
Diamond, Commissioner of Patents and Trademarks v. Diehr (1981)
State Street Bank and Trust Co. v. Signature Financial Group, Inc. (1996)
NetZero v. Juno

Statutes:

Patent Act, § 101
Discussion: Plant Patent Act (1930) and Plant Variety Protection Act (1970)

Other Statutory Requirements: Utility

Cases:

Brenner v. Manson (1966)
Graham v. John Deere Co. (1966)
United States v. Adams (1966)
In re Deuel (1995)

Statutes:

Patent Act (1985), §§ 101, 102, 103
Discussion of the Biotechnological Process Patents Act (1995)
(Additional Patent statutes)

Exclusive Rights, Infringement, and Patent as an Administrative Law System

Cases:

Dawson Chemical Co. v. Rohm & Haas Co. (1980)
Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co. (1997)
Met-Coil Systems Corp. v. Korners Unlimited, Inc. (1986)

Statutes:

Discussion of the American Inventors Protection Act (1999)

Week Fourteen: International Protection, and the Future of Intellectual Property Law
International Protection and Choice of Law Issues

Cases:

Tommaso Buti; Fashion World Co. v. Impressa Perosa (1998)
Itar-Tass Russian News Agency v. Russian Kurier, Inc. (1998)

Statutes:

Berne Convention
Paris Convention for the Protection of Industrial Property
(Additional International statutes)

The Future of Intellectual Property Law

Cases:

International News Service v. Associated Press (1918)
Sears, Roebuck & Co. v. Stiffel Co. (1964)
Compco Corp. v. Day-Brite Lighting Inc. (1964)
Bonito Boats, Inc. v. Thunder Craft Boats, Inc. (1989)

Supplemental "Shadow" Cases:

Class lectures and discussions will often refer to cases relevant to the topics of this course, but not assigned as course reading.

An updated list of supplemental cases, including complete references and brief summaries is provided. Click here for a complete list of supplemental cases. This list will be updated frequently to reflect class discussions and your suggestions. Please suggest cases to add to the list!

Final Exam:

A three-hour final exam will be given for this course. Students may elect to take their exam on computer using the Examinator software (according to the Registrar's guidelines). Information on this option will be provided in class.