Introduction to Intellectual Property
Professor Uché Ewelukwa
Fall 2010
I. COURSE DESCRIPTION AND OBJECTIVES
A. Course Description
This is an overview course covering the basics of intellectual property law (IP
law). It introduces students to four major areas of intellectual property: trade secrets,
trademark, copyright, and patent. This course aims to give students entering a general
business or civil litigation practice an overview of the various intellectual property
doctrines. The course is designed both for those who are interested in pursuing IP as a
career, and those who are looking only for a basic knowledge of the subject. There are no
prerequisites, and a scientific background is not required.
B. Goals of the Course
A. To meet the needs of generalists as well as those who intend to specialize.
B. To consider both the basic components of IP: (1) the use of copyright,
patents and related laws to prevent others from copying and (2) the use of
trademarks and related laws to prevent others from making source and
other harmful misrepresentation.
C. To consider IP law from two basic perspectives – both proactively and
reactively. First, parties need to know whether and how they can stop
others from engaging in certain activities. Also, parties need to know
when they can ignore others’ objections, e.g., to copying.
II. COURSE REQUIREMENTS
A. Text and required Materials
Robert Merges, Peter Menell, and Mark Lemley, INTELLECTUAL PROPERTY IN THE NEW
TECHNOLOGICAL AGE (5th ed. 2010) [hereinafter MML]
Robert Merges, Peter Menell and Mark Lemley, INTELLECTUAL PROPERTY IN THE NEW
TECHNOLOGICAL AGE: CASE AND STATUTORY SUPPLEMENT (2009).
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Intellectual Property Law Coursepacks (CP) [Available periodically from Administrative
Secretary, Bridget Young.1
Handouts (distributed periodically in-class).
B. Scheduled Class Times
The class will meet Mondays, Tuesdays, and Thursdays from 9:10 am to 10:10 am in
Room 103. Please arrive on time.
C. Class Participation and Attendance
Class sessions are a mixture of class discussion based on the reading assignment, analysis
of hypotheticals, lecture, and debate on assigned cases. You should always come to
class with your Case and Statutory Supplement.
Students are expected to attend and participate in all sessions of the class. I will feel free
to call on you to contribute even if you have not raised your hand.
Students with disabilities may request academic adjustments as provided within federal
law. All such requests should be made by first contacting the Center for Students with
Disabilities. Additional information about the process may also be obtained from
Associate Dean Miller. Contact information for the Center is as follows:
ARKU 104
Fayetteville, AR 72701
(479) 575-3104 (voice)
(479) 575-3346 (TTY)
[email protected]
Web: http://www.uark.edu/ua/csd/
D. Assignment
Although most of the assignments involve reading assigned course materials,
occasionally, students will be required to engage in real life practicals and to turn in
written reports of their findings. In the past, for example, students were asked to
interview local merchants who are owners or users of trademarks and service marks.
E. Grading
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[email protected] or (479) 575-5318
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The grade for the class will be based on a final 24-hour take-home examination.
The examination will be administered December 13, 2010, through December 17,
2010. In addition, very high-quality participation will result in a half-grade
increase (e.g. from B to B+, from B+ to A-, etc.). A student’s participation is
considered high-quality if he or she points out key insights from assigned
readings, and adds additional insights and perspectives that extend beyond the
assigned readings to issues under discussion. More than five absences (late
arrivals will count as absence) without the prior permission of the instructor
will result in a half-grade decrease.
F. Office Hours
My office is located in Room 318. My scheduled office hours are on Thursdays from
3:00 p.m. to 5:00 p.m. In addition, you may feel free to stop by at any other time in my
office, or to call to schedule an appointment. I am usually in my office Monday through
Thursday from 8:00 am to 4:00 pm, except when I am in class. My office phone number
is (479) 575-5283. You may also reach me via e-mail at [email protected]
G. Career and Study Abroad Advice
Any time you need advice for a summer program, an LL.M. program, or want to talk
about careers in intellectual property law, come and see me!
H. Inclement Weather
This class will NOT meet if Fayetteville Public Schools are closed because of
inclement weather.
F. When determining whether or not material will be covered on the exam please
note the following two classifications:

SKIM = Optional reading, may be discussed in class, may be covered on exam.

SKIP = Optional reading, will NOT be on exam.
III. USEFUL INTELLECTUAL PROPERTY-RELATED WEBSITES
A. United States Patent and Trademark Office: http://www.uspto.gov/
B. United States Copyright Office: http://www.copyright.gov/
C. National Inventors Hall of Fame: http://www.invent.org/
D. IP Newsflash: http://www.ipnewsflash.com/
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E. International Trademark Association: http://www.inta.org/
F. World Intellectual Property Organization: http://www.wipo.int/portal/index.html.en
G. World Trade Organization/ Agreement on Trade-Related Aspects of Intellectual
Property: http://www.wto.org/english/tratop_e/trips_e/trips_e.htm
H. The UK Patent Office: http://www.patent.gov.uk/
I. European Patent Office: http://www.european-patent-office.org/index.en.php
IV. SYLLABUS
The syllabus below provides a rough and working outline of the course. The
syllabus sets forth the reading assignments from the course's primary text, Robert
Merges, Peter Menell, and Mark Lemley, Intellectual Property in the New
Technological Age (5th ed. 2010). Where a case or other materials refer to a state or
federal statute, you are responsible for locating (in the Casebook Supplement) and
reading the section(s) of the statute to which the text refers. Except where otherwise
indicated, assignment of a case includes all “Comments and Questions” and the
“Problems” that follow it.
This syllabus is subject to change as the semester progresses. I reserve the right to
make changes, delete certain readings and add others, as the course progresses. I may
therefore be selecting additional and/or substitute readings, with plenty of time to read
and prepare for class, on various issues as the course progresses, and as our collective
interests evolve. I will periodically be distributing supplementary assignments in the form
of handouts in class.
[Page Numbers Are In Brackets After Each Major Section. Please read all the cases that
appear in the assigned reading even if not specifically listed below.]
Make-up classes: Professor Uche will be away November 18 (attending the biennial
conference of the International Economic Law Interest Group of the American
Society of International Law (ASIL)) and November 22 -29 (attending the 5th annual
trade conference organized by the Trade Policy Training Center in Tanzania,
Africa). As a class, we will have to discuss the best may to make-up the classes that
will be missed.
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Introduction
Aug. 23:
A. Theoretical Underpinning of Intellectual Property Law; Philosophical
Perspectives [MML 1-14]; Merill Mattews, Jr. and Tom Giovanetti, Why Intellectual
Property is Important, July 8, 2002; Steven E. Levingston, Dangers of over-zealous
intellectual property cops, The Washington Post, February 24, 2010,
http://voices.washingtonpost.com/shortstack/2010/02/dangers_of_overzealous_intell.html
Natural Rights Perspective; John Locke,
Two Treatises on Government; Problem;
Personhood Perspective; Margaret Jane
Radin, Property and Personhood;
Utilitarian/Economic Perspective; Problem
B. Overview of Intellectual Property [21-31]
Trade Secret; Patent; Copyright;
Trademark/Trade Dress; Problem.
I.
TRADE SECRET
Aug. 24:
A. Introduction [33-39]; Problems 1-2 and 1-3
History; Overview of Trade Secret
Protection; The Uniform Trade Secret Act;
Theory of Trade Secrets;
B. Subject Matter [39-49]; Problem 2-1, 2-2, 2-3, 2-4, 2-5]
Defining Trade Secrets; Metallurgical
Industries Inc. v. Fourtek, Inc. Problem.
Aug. 26
C. Reasonable Efforts to Maintain Secrecy [49-58]
What counts as reasonable effort to protect
secrecy? Rockwell Graphic Systems, Inc. v.
DEV Industries, Inc.; Electro-Craft Corp. v.
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Controlled Motion, Inc., Problems 2-6, 2-7
and 2-8.
D. Disclosure of Trade Secrets [58-65]
Data General Corp. v. Digital Computer
E. Misappropriation of Trade Secrets [66-70]
Improper Means; E.I. du Pont de Nemours
& Co. v. Rolfe; Problem 2-8.
August 30 [70-75; 78-83; 85-91; 91-100 (skim); 100-104]
Breach of Confidential Relationship. Smith
v. Dravo Corp. Problems 2-9, 2-10. Reverse
Engineering. Kadant, Inc. v. Seeley
Machine, Inc. Problem 2-12 and 2-13. The
Special Case of Departing Employees. Note
on Trailer Clauses.. Non-compete
Agreements. SKIM; Edwards v. Arthur
Andersen LLP.; Comprehensive
Technologies Intl. v. Software Artisans.,
Inc.; Inevitable Disclosure of Trade Secrets.
August 31
F. Agreement to Keep Secret [107-111]
Problem 2-15; Warner-Lambert
Pharmaceutical co. v. John J. Reynolds, Inc.
G. Trade Secret Protection on Arkansas [CP 1-14]
The Arkansas Trade Secret Act (ATSA). Saforo & Associates, Inc. v.
Porocel.; Cardinal Freight Carriers, Inc. v. J.B. Hunt Transport
Servs.; City Slickers, Inc. v. Douglas; Mark Lemley, Beyond Trade
Secrets: Protecting Business Information in Arkansas
I. TRADEMARK
September 2
A. Introduction [733-736; 740-764]
Background; A Brief Overview of
Trademark Theory; The Basic Economics of
Trademarks and Advertising; What can be
Protected as a Trademark?
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15 U.S.C. § 1127, 1053, 1054
B. What Can be Protected as a Trademark?
Qualitex Co. v. Jacobson Products Co.;
15 U.S.C. § 1127, 1052.
C. Categories of Marks
Service, Certification and Collective Marks
15 U.S.C. § 1053, 1054
D. Establishment of Rights
1. Distinctiveness
Classification and Requirements; Zatarain’s,
Inc. v. Oak Grove Smokehouse, Inc.
Sept. 6: No Class. Labor Day
Sept. 7
2. Priority [777-788; 793-796;]
Zazu Designs v. L’Oreal; Note on
Geographic Limitations; Note on Secondary
Meaning in the Making; Problems 5-3 and
5-4; Assignment.
15 U.S.C. §1063, 1064, 1065, 1068
3. Trademark Office Procedures [796-800]
The Registration Process; Principal vs.
Supplemental Register; Use Application v.
Intent-to-Use Application; Problem 5-5
15 U.S.C. § 1051, 1057, 1058, 1059.
Sept. 9:
3. Trademark Office Procedures (Contd.) [801-810]; CP [20-43]
Geographic Markets. In re Nantucket, Inc.;
Lanham Act § 2(a); Marks Which are
"Primarily Merely a Surname; Opposition;
Cancellation; Concurrent Registration.
Problem 5-6.
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15 U.S.C. § 1052, § 1062-1068
4. Incontestability [810-816]
Park ‘N Fly, Inc. v. Dollar Park and Fly, Inc.
Sept. 13:
E. Infringement: What Rights are Encompassed by Ownership?
1. Likelihood of Consumer Confusion [824-838]
AMF Inc. v. Sleekcraft Boats; Note on
Other Types of Confusion; Problems 5-7; 58.
15 U.S.C. § 1114, 1125(a).
2. Dilution [838-852]
The New Federal Regime; H.R. Rep. 104374; Basic Principles; Louis Vuitton
Malletier S.A. v. Haute Diggity Dog, LLC.
15 U.S.C. § 1125(c)(1).
Sept. 14: In-Class Presentation of Assignment
Sept. 16:
F. Defenses: Losing Protection
1. Genericness [890-897]
The Murphy Door Bed Co. v. Interior Sleep
Systems. Problem 5-11.
2. Functionality [900-910]
TrafFix Devices, Inc. v. Marketing Displays,
Inc.; Restatement (Third) of Unfair
Competition § 17; Problem 5-12, 5-13.
Sept. 20:
3. Abandonment 911-918; 919-923; 925-929
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Major League Baseball Properties v. Sed
Non Olet Denarius; Dawn Donut Company,
Inc. v. Hart’s Food Stores, Inc.
4. Fair Use
KP Permanent Make-up, Inc. v. Lasting
Impression I, Inc. Problems 5-14 and 5-15.
Sept. 21
4. Nominative Use [929-940]
Mattel, Inc. v. MCA Records; Problems 516, 5-17, 5-18]
III. COPYRIGHT
A. Introduction [411-419]
Brief History of Copyright Protection
Overview of Copyright Regime
Philosophical Perspectives on Copyright
Protection; Registration Forms.
17 U.S.C. § 101, 401-412, 708
Sept. 23
B. Requirements
Introduction; 17 U.S.C. § 102, 103, 105
1. Originality and Fixation [420-432]
H.R. Rep. No. 94-1476 (1976); Feist
Publications v. Rural Telephone Service;
Problems 4-1, 4-2.
2. Formalities [435-440]
Notice; Publication; Problem; Registration;
Deposit; Note on Restoration of Foreign
Works.
C. Exclusions
1. Idea and Facts vs. Expression; The Merger Doctrine [441-446]
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17 U.S.C. § 102(b); Baker v. Selden.
Problem 4-4
Oct. 4:
Idea and Facts vs. Expression (contd.) [448-462]
Lotus Development Corp. v. Boland International;
Morrissey v. Proctor & Gamble
2. Government Works [473-478]
D. The Domain and Scope of Copyright Protection
1. Subject Matter of Copyright [478-487]; Problems 4-14, 4-15, and 4-16
17 U.S.C. § 101, 102 & 103.
Oct. 5
E. Ownership & Duration
1. Initial Ownership [487- 506]
Works for Hire; Community for Creative
Non-Violence v. Reid; Joint Works;
Aalmuhammed v. Lee; Collective Works;
Problems 4-17, 4-18, 4-19, 4-20
17 U.S.C. § 101, 201-202
Oct. 7 [508-537]
2. Duration and Renewal [508-516]
Problems 4-21; 4-22; 4-23
17 U.S.C. § 302-05
E. Exclusive Rights
17 U.S.C. § 106, 106A, 501(a) & (b), 113(d)
1. Reproduction [518-537]
Copying; Arnstein v. Porter; Problem;
Improper Appropriation; Nichols v.
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Universal Pictures Corp.; Problems 4-25, 426, 4-27, 4-28.
Oct. 11:
Reproduction [539-556]
Computer Associates International v. Altai, Inc.
Problems 4-29 and 4-30.
Oct. 12
2. Derivative Works [557-567]
Anderson v. Stallone; Problems 4-31, 4-32,
4-33
3. Public Performance and Display Rights [571-577];
Problems 4-35, 4-36, 4-37
Oct. 14:
F. Defenses
1. Fair Use [592-611; 611-619]
17 U.S.C. § 107; Harper & Row Publishers
v. Nation Enterprises; Sony Corp. of
America v. Universal City Studios; Problem
4-39; 4-40; 4-41; 4-42.
Oct. 18 [622-633; 635-641]
Parodies. Campbell v. Acuff-Rose Music,
Inc.; Problems 4-43, 4-44, 4-45; Bill
Graham Archives v. Dorling Kindersley Ltd.
Oct. 19 [641-665]
Blanch v. Koons; Sega Enterprises Ltd. v.
Accolade, Inc. Problems 4-46; 4-47.
H. Remedies [722-732]
Problems 4-51, 4-52, 4-53, and 4-54
IV. PATENTS
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Oct. 21:
A. Introduction [130-146] CP [140-179]
An Overview of Patent Law;
Notes on the Procedures for Obtaining a Patent;
Theories of Patent Law.
B. The Elements of Patentability
1. Patentable Subject Matter
Diamond v. Chakrabarty;
Parke-Davis & Co. v. H.K. Mulford Co.;
Bilski v. Kappos (handout to be distributed). Problems 3-2, 3-3,
3-4.
Oct. 25: [166-171, 178-185; 185-190]
2. Utility
Patent law’s definition of utility. Brenner v. Manson;
Juicy Whip, Inc. v. Orange Bang, Inc. Problem 3-5.
3. Disclosure Doctrines
Enablement Requirement. The Incandescent Lamp Patent.
Problem 3-6
October 26. [195-200; 209-214; 216-225]
4. Novelty and Statutory Bars
The Nature of Novelty; Rosaire v. National Lead Co.
Problems 3-8.
Statutory Bars: Publications; In re Hall
Statutory Bars: Public Use;
Egbert v. Lippmann; Problem 3-9
October 28 & Nov. 1 [226-234; 235-246; 247-267]
The Experimental Use Exception;
City of Elizabeth v. Pavement Company
Priority Rule and the First to Invent
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Griffith v. Kanamaru.
5. Nonobviousness
Graham v. John Deere Co.; Combining
References. KSR International Co. v. Teleflex Inc.
Nov. 2
C. Infringement
1. Literal Infringement [294-299]
Larami Corp. v. Amron
2. The Doctrine of Equivalents [300-327]
Warner-Jenkinson Company, Inc. v. Hilton
Festo Corp. v. Shoketsu Kinzoku Kogyo
Subject Matter Disclosed but Not Claimed;
Johnson & Johnson Associates Inc. v. R.E. Services
Problem 3-12.
Nov. 4
3. Contributory Infringement; Joint Infringement [334-342]
C.R. Bard, Inc. v. Advanced Cardiovascular
Systems, Inc.; Note on Inducement; Problem 3-13.
D. Defenses [343-346]; [347-352]
1. The “Experimental Use” Defense [343-346]
Madey v. Duke University; Merck KGaA v. Integra Life Sciences I Ltd.
2. Inequitable Conduct [347-352]
Kingsdown Medical Consultants, Ltd.
v. Hollister Inc.
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Nov. 4: [353-359; 377-392; 393-398]
3. Exhaustion of Patent Rights
Quanta Computer, Inc. v. LG Electronics, Inc. Problem 3-14
F. Remedies & Conclusion
1. Injunctions
eBay, Inc. v. MercExchange, LLC
2. Damages: Reasonable Royalty and Lost Profits
3. Willful Infringement
In re Seagate Technology, LLC.
V. Integrated Workshop I: Industrial Designs and Intellectual Property
Nov. 8: Trademark and Design [764-774]
Two Pesos, Inc.v Taco Cabana, Inc.; Wal-Mart Stores, Inc. V. Samara
Brothers, Inc. What is a trade dress? Are trade dress protected? Is
secondary meaning required to protect trade dress?
Nov. 9: Copyrights and Designs [463-473]; Photocopied materials (TBD)
The Useful Article Doctrine. Challenges to Using Copyright to Protect
Designs. Bandir International, Inc. v. Cascade Pacific Lumber Co.
Nov. 11, 15, 16: Design Patents
Photocopied Materials (TBD)
VI. Integrated Workshop II. Intellectual Property and International Law
Workshop seeks to seeks to explore and enhance the understanding of (1)intellectual
property protection in multiple jurisdictions and cultures, (2) multilateral treaties that
provide for the protection of intellectual property, (3) the problem of piracy in developing
countries and challenges to IP enforcement.
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Dates: Nov. 18 & 29
Reading Assignment: TBD
VII. Integrated Workshop III: Intellectual Property, Entertainment and
Sports Law
Workshop seeks to seeks to explore and enhance the understanding of (1) principals and
information in the fields of intellectual property, entertainment and sports law, (2) some
of the means by which rights in these fields can be protected, (3) some state and federal
relative to these fields, and (4) protection of the rights of individuals and businesses in
these fields.
Dates: November 30 and December 2.
Reading Assignment: TBD
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syllabus: intellectual property law (7555-00)