May 16, 2017 (subject to minor revisions prior to first class)
HARVARD UNIVERSITY
SUMMER SCHOOL 2017
INTELLECTUAL PROPERTY
Government S-1130
Allan A. Ryan
INTRODUCTION AND SYLLABUS
Monday and Wednesday, 6.30 to 9.30 p.m.
Room: Harvard Hall 104
Course home page: https://canvas.harvard.edu/courses/26793
Section meetings Tuesdays, 5.15 to 6.15 PM Boston time, location TBD; livestreamed
Music, science, art, literature, technology, advertising, entertainment: this course
examines intellectual property and the legal and social means that have
developed over time to encourage and control it. The objective is to introduce the
basics of intellectual property, to examine how it operates, and to enable students
who have little or no hands-on experience to deal intelligently with the
conflicting legal, social and political forces that will shape its future.
Traditionally, intellectual property is defined as the creative works – books,
music, art, inventions and discoveries, software, brand names, and the like -- that
are protected by copyright, trademarks and patents. We will look at each of those
legal structures, together with related areas such as licensing and trade secrets.
We will also consider how concepts of intellectual property are being shaped by
the digital environment, and examine the political and legal issues created by the
growing globalization of intellectual property. We will look at how changes in
the music industry have been influenced by IP law, examine the influence of IP
on universities (and vice versa), and conclude with a look at IP’s future.
Throughout, we will consider the social utility of intellectual property, asking
questions such as, what are, or should be, the acceptable boundaries of copying,
imitation, parody, and sampling that draw on protected works? How do
opposing political and economic interests shape the development of IP law?
Does our IP structure protect too much? Too little? The wrong things?
1
The course develops in two broad stages: the first, prior to the midterm exam,
examines the basic principles of intellectual property: the nuts and bolts of
copyright, patents, trade secrets and trademarks. After the midterm, we look at
how IP operates in the real world, considering topics such as licensing of
technology; publisher-author book contracts; the legal regime of music; the IP of
design and fashion; the influence of Google; and the future of the US patent
system.
The focus is primarily on U.S. law and practice, including the international
regime of treaties and practice in which the U.S. operates. This is not a “how-to”
course; we will not emphasize the mechanics of applications or the specialized
procedures of the government’s patent and copyright offices. Because a study of
intellectual property is necessarily an inquiry into what the law allows and
forbids, and how the law interacts with social and economic interests, much of
our focus will be on broad legal issues. No prior knowledge of IP law is required.
Class and sections: Harvard Summer School is a highly concentrated academic
environment, covering a full semester’s study in six weeks. Therefore, class
attendance is required. The class meets twice a week for three hours in a
lecture/discussion format. There will also be a weekly section that is mandatory
for students taking the course for undergraduate credit and optional for those
taking it for graduate credit. Noncredit students (auditors) do not take the
exams and do not receive a grade. They are welcome to attend sections.
Distance students: This course is offered in the Summer School’s distanceeducation program. Class sessions will be streamed, and then posted on the
course website within 24 hours. Distance students will be able to participate in
section meetings. All registered students can access the lectures and sections on
video, and distance students are welcome to attend class in Cambridge at any
time.
Exams and course grades: Students taking the course for graduate or
undergraduate credit will have a midterm exam (one hour) and a final exam
(three hours). See syllabus below for dates. Examinations will be available online
during a 24-hour window; each student will take the exam at their convenience
during that period.
In addition to the two exams, graduate students will submit a brief (5-6 pages)
critical analysis of two scholarly works of their choice in this field. See appendix
of this syllabus for details.
For undergraduates, the course grade is based on the final exam (60%), the
midterm (30%), and participation in section (10%). For graduate students, the
2
course grade is based on the final exam (60%), and the midterm exam (30%), and
the critical analysis (10%).
The instructor: Allan A. Ryan is Director of Intellectual Property for Harvard
Business School Publishing, the publisher of Harvard Business Review, the books
of the Harvard Business Review Press, Harvard Business School Cases, and
digital e-learning materials. From 1985 to 2001, he was University Attorney in the
Office of General Counsel at Harvard, specializing in intellectual property,
cultural property, and litigation. A graduate of Dartmouth College and the
University of Minnesota Law School, he was a law clerk for Justice Byron R.
White of the United States Supreme Court and practiced law in Washington
before coming to Harvard. He is a member of the Massachusetts Bar, the
Intellectual Property Section of the Boston Bar Association, and the Copyright
and International Copyright Protection Committees of the Association of
American Publishers.
Office hours: Mondays and Wednesdays, 5.30 to 6.30 (prior to class). Because my
office is in Boston, please e-mail me at ryan5@fas.harvard.edu if you would like
to meet during these hours and we’ll arrange a convenient spot on campus.
The teaching assistant is Daniel Dardani, B.A., University of Rochester
(Physics/Political Science), a Technology Licensing Officer at the Massachusetts
Institute of Technology, expert in licensing inventions and commercializing
university technologies in the fields of computer science, software, algorithms,
digital imaging and photography, video games, wireless, mobile and information
technologies. You can email him at ddardani@mit.edu
Useful websites
www.copyright.gov: The United States Copyright Office, a branch of the Library
of Congress. A very good introduction to U.S. copyright law and practice, and
links to primary sources.
www.uspto.gov: The United States Patent and Trademark Office. Introduction to
patent and trademark issues, and search engine for patents and registered
trademarks.
www.google.com/ Search “patents” on Google, which will take you to “Google
Patents,” and you can search by keyword or patent number. It’s a better search
engine than the USPTO’s.
www.wipo.int: The World Intellectual Property Organization. Broad-based
international organization. The WIPO website has helpful introductions to many
IP issues and links to treaties and other primary sources.
3
www4.law.cornell.edu/uscode/17/ : The Copyright Act of the United States
(Title 17, United States Code). Useful if you need to find a particular section of
the Copyright Act.
www4.law.cornell.edu/uscode/35/ : United States Patent Law (Title 35, United
States Code).
Accessibility issues
The Summer School is committed to providing an accessible academic
community. The Accessibility Office offers a variety of accommodations and
services to students with documented disabilities. Please visit
www.summer.harvard.edu/resources-policies/accessibility-services
for more information.
Academic integrity and other course policies
You are responsible for understanding Harvard Summer School policies on
academic integrity (www.summer.harvard.edu/policies/studentresponsibilities) and how to use sources responsibly. Not knowing the rules,
misunderstanding the rules, running out of time, submitting the wrong draft, or
being overwhelmed with multiple demands are not acceptable excuses. To
support your learning about academic citation rules, please visit the Resources to
Support Academic Integrity (http://www.summer.harvard.edu/resourcespolicies/resources-support-academic-integrity) where you will find links to the
Harvard Guide to Using Sources and two online 15-minute tutorials to test your
knowledge of academic citation policy. The tutorials are anonymous openlearning tools.
SYLLABUS
Required Texts:
Dan Hunter, Intellectual Property (Oxford University Press, 2012) ISBN: 978-0-19534060-0 A broad introduction to the basics of IP and the issues we will consider
in this course.
Cases and related readings. We will discuss particular issues in the context of actual
cases decided by courts, all of which will be found in the readings folders on the
course website (https://canvas.harvard.edu/courses/26793)
4
Robert Gorman, Copyright Law, Federal Judicial Center (2d edition, 2006). A
free, full-length legal treatise on copyright, written for federal judges, but in a
readable, non-technical format. A good reference work. At www.fjc.gov, click on
“Publications and Videos,” and enter Gorman as author. (Though the treatise is
marked as “superseded” by a 2012 for-sale edition, this one is still a good
discussion of the basics of copyright.)
Readings and class discussions are segmented by week, not by individual
classes. After the first week, please do all the week’s readings prior to the
Monday class meeting.
Materials in italics below will be found in the reading folders on the course home
page, unless there is a link to the reading’s website.
Week of June 19
Introduction to intellectual property.
Readings: Hunter, Preface and Introduction
Introduction to the study of cases
Congressional Research Service, Intellectual Property Rights
and International Trade (2015), pp. 6-9
The basics of copyright
Readings: Hunter, Ch. 2
Cases: Feist Publications v. Rural Telephone Service
Hobbs v. John
Olem Shoe Corp. v. Washington Shoe
Bikrams Yoga v. Evolation Yoga
Colon-Lorenzana v. South American Restaurants Corp.
PhantomAlert Inc. v. Google Inc.
The limits of copyright, and the rights of copyright owners
Gorman, pp. 99-102, 106-110, 116-119, 121-126, 127-128
Cases: Aalmuhammad v. Lee
Garcia v. Google
The rights of everyone else: Fair Use
Gorman, pp. 139-56
Cases: Harper & Row v. The Nation
Campbell v. Acuff-Rose Music
Authors Guild v. Google
Readings: Zahr K. Said, Foreword in the Digital Age, and
Campbell v. Acuff-Rose at 21, Washington Law Review (2015)
https://ssrn.com/abstract=2628461, pp. 579-582 (further reading optional)
5
Non-literal infringement of copyright
Gorman, Ch. 2
Cases: Nichols v. Universal Pictures
Funky Films v. Time Warner
LaPine v. Seinfeld
Steinberg v. Columbia Pictures I
DC Comics v. Towle
First sale doctrine and digital media
Gorman: 119-121
Cases: Capitol Records v. ReDigi
Infringement
Gorman, 102-106
Remedies for Infringement
Money damages
Injunctions
Week of June 26
Patent. Its historical development. Its doctrinal bases. The scope of its
protection. Comparison to copyright. The patent process in the US.
Find Google Patent Search and download the PDF of US Patent 5,941,785,
which we will discuss in class. (The PDF is the actual patent.)
Readings: Hunter, ch. 3, pp. 81-105 (n.b., the section on priority on pp. 9798 is out of date. The US adopted a first-to-file priority in 2011); pp. 108-16 (top 2
lines).
The importance of claims
Readings: Larami Super Soaker
Cases: Larami v. TTMP
The meaning of utility
Cases: Juicy Whip v. Orange Bang (consult Patent 5575405)
Patentability of genetics and software
Readings: Sherkow and Greely, The History of Patenting Genetic
Material (2015), pp. 161-69, 171-82. Read for an understanding of the
development of this area; not necessary to understand the science in detail
6
Mayo Collaborative v Prometheus: www.scotusblog.com/2012/03/opinionrecap-freeing-doctors-to-practice
Myriad Genetics: www.scotusblog.com/2013/06/opinion-recap-no-patenton-natural-gene-work/
Alice Corp. v. CLS Bank: www.scotusblog.com/2014/06/symposiumbusiness-methods-as-abstract-ideas-explaining-the-opacity-of-alice-and-bilski/
Week of July 3
Trademarks. Historical development and doctrinal bases. Scope of
protection. Statutory and regulatory regime in the US.
Readings: Hunter, ch. 4
Z Burger
Cases: AMF v. Sleekcraft Boats
Midwestern Pet Foods v. Societe des Produits Nestle
Elliott v. Google
Murphy Door Bed Co. v. Interior Sleep Systems
Playboy Enterprises v. Welles
Zatarains v. Oak Grove Smokehouse
Supplemental reading on Trademark Confusion
Coach v. Goodfellow
Readings: Franklyn and Hyman, Trademarks as Search Engine Keywords,
Harvard Journal of Law and Technology (2013), pp. 481-88, 492-504, 540-42
http://jolt.law.harvard.edu/articles/pdf/v26/26HarvJLTech481.pdf
Week of July 10
The midterm exam is available online for 24 hours, beginning at 12.00
noon Boston time Monday, July 10. The exam is one hour. Log on during the
window at your convenience.
Note: All students (except noncredit students) take the exam online. If
you are not in the Eastern US time zone, remember to adjust the time for the
zone you’re in.
Trade Secrets.
Readings: Hunter, ch. 5
Trade Secrets v. Patents at a Glance (2015)
Cases: Altavion, Inc. v. Konica Minolta Systems Laboratory
Airwatch LLC v. Mobile Iron
Rockwell v. DEV Industries
Dupont v. Christopher
U.S. v. Howley
7
The Defend Trade Secrets Act of 2016
“Congress Just Passed Tough New Trade Secret Protection
Legislation,” Fortune, April 28, 2016
http://fortune.com/2016/04/28/congress-trade-secret-legislation/
Noncompete Agreements
“To Compete Better, States are Trying to Curb Noncompete Pacts,”
NY Times, June 29, 2016
https://www.nytimes.com/2016/06/29/technology/to-competebetter-states-are-trying-to-curb-noncompete-pacts.html
Lobel, “Companies Compete but Won’t Let Their Workers Do the
Same,” NY Times, May 4, 2017,
https://www.nytimes.com/2017/05/04/opinion/noncompeteagreements-workers.html?_r=0
Williams-Alvarez, “When Trade Secrets Walk Out the Door,”
Corporate Counsel, May 2017
Licensing of intellectual property
The Big Business of Licensing
No Matter the Score, Nike Always Wins (Bloomberg 2015)
Moonshiner and University Battle over ‘Kentucky’ (NYT,
2016)
Harvard Business Review Assignment of Copyright
Harvard Business Review International Magazine License
HBR Press’s Book Publishing Contract
Harvard ManageMentor® License Agreement
MIT’s HDTV License Template
The international regime of IP protection. Berne, Paris and other elementary Treaties.
International cooperation and reciprocity for copyright, patents, trademarks.
World Trade Organization and TRIPS (Trade-related Aspects of Intellectual
Property) Treaty.
Readings: Text on International Issues, pp. 749-54, 756-57, 760-64
Global IP Issues: The Case of China
US Trade Representative, 2017 Special 301 Report
(https://ustr.gov/sites/default/files/301/2017%20Special%20301
%20Report%20FINAL.PDF, pp. 1-2, 7-8 (introduction); 28-37
(China)
8
“New Balance Court Ruling in China Is Rare Win Against
Piracy,” NY Times, April 27, 2017
https://www.nytimes.com/2017/04/27/business/new-balancechina-trademark.html
Week of July 17
Technology transfer from academia to industry.
“The Bayh Dole Act at 25,” pp. 1-11, 17-25
www.bayhdolecentral.com/BayhDole25_WhitePaper.pdf
Licensing Reading Folder:
Lita Nelson, “US Perspective on Technology Transfer”
Music and the business of music
Readings:
Gorman, chapter 6, pp. 110-16, 121-27 [See “Optional” Texts above,
to download the Gorman text.]
Cases and Readings (in the Music folder):
“The Music Copyright Enforcers,” NY Times, August 8, 2010
http://www.nytimes.com/2010/08/08/magazine/08music-t.html
A&M Records v. Napster
MGM v. Grokster
Newton v. Diamond
Robert Glasper, “How sampling connects genres,” NPR 2016 (video)
http://www.npr.org/event/music/524393926/jazz-is-the-mother-of-hip-hophow-sampling-connects-genres
Bridgeport Music v. Dimension Films
VMG Salsoul v. Madonna Ciccone
Flo and Eddie v. Sirius, Inc.
Peters v. Kanye West
Artists’ termination rights:
“Record Industry Braces for Artists’ Battles Over Song
Rights,” New York Times, August 15. 2011
http://www.nytimes.com/2011/08/16/arts/music/springsteen-and-otherssoon-eligible-to-recover-song-rights.html
“Village People Singer Wins a Legal Battle in Fight to
Reclaim Song Rights,” New York Times, May 8, 2012
https://artsbeat.blogs.nytimes.com/2012/05/08/village-people-singer-wins-alegal-battle-in-fight-to-reclaim-song-rights/?_r=0
9
“A Copyright Victory, 35 Years Later,” New York Times,
September 11, 2013 http://www.nytimes.com/2013/09/11/arts/music/acopyright-victory-35-years-later.html
Week of July 24 (final class meeting is July 26)
The marriage of patent, copyright and trademarks: protection of design and
fashion.
Designs: Hunter, ch. 3 portions dealing with design patents
Cases: Sturdza v. United Arab Emirates
Brandir v. Cascade Pacific (copyright)
Star Athletica v. Varsity Brands (Denniston’s intro)
Star Athletica v. Varsity Brands (Supreme Court’s 2017 decision)
Wal-Mart v. Samara Brothers (trademark)
Traffix Devices v. Marketing Displays (product design)
Apple v. Samsung (explanation; read for general principles of design
patents)
Samsung v. Apple (Supreme Court’s 2016 decision)
Fashion:
Reed, From Runway to Replica: Intellectual Property Strategies for
Protecting Fashion Designs (2016)
Jackson, “Some Designers Say…” (2011)
Patent Trolls and Patent Reform:
“Has Patent, Will Sue: An Alert to Corporate America,” NY Times,
July 14, 2013 http://www.nytimes.com/2013/07/14/business/has-patent-willsue-an-alert-to-corporate-america.html
Federal Trade Commission, Patent Assertion Entity Activity: An
FTC Study (October 2016), p. 1-6, 8-9
https://www.ftc.gov/system/files/documents/reports/patent-assertionentity-activity-ftcstudy/p131203_patent_assertion_entity_activity_an_ftc_study_0.pdf
In Final Readings Folder:
A Question of Utility, The Economist, August 8, 2015
Innovation – Time to Fix Patents, The Economist (editorial), August 8 2015
Week of July 31
Final Examination: The final examination will be online this week for a 24-hour
window, tentatively Monday July 31 at 12.00 noon Boston time, but subject to
confirmation.
Students enrolled for graduate credit, see paper assignment on the following page.
10
HARVARD UNIVERSITY
SUMMER SCHOOL 2017
INTELLECTUAL PROPERTY
Government S-1130
Allan A. Ryan
REQUIREMENT FOR GRADUATE CREDIT
Students taking this course for graduate credit must submit a short paper (5 to 6
pages, double spaced) on a scholarly subject. I suggest the following procedure.
The Social Science Research Network maintains an archive of over 5000 scholarly
articles on intellectual property subjects, many of which have been published in
recognized journals. The site is
http://papers.ssrn.com/sol3/JELJOUR_Results.cfm?form_name=journalbrowse
&journal_id=2774340
Select two articles dealing with an issue or subject that interests you, and analyze
the approaches, perspectives, ideas, theses or other aspects of the two articles.
Include your own original critique as part of the discussion. I’m aware that for
many of you this course has been your first in-depth exposure to intellectual
property, and in a paper as short as this I don’t expect the original research or
considered analysis of a master’s thesis. But your paper should demonstrate an
understanding of the issues and your thoughtful response.
If you have independent experience in IP (for example, employment in an IPrelated field), and if you wish to submit a paper different from that outlined
above, see or email me with your idea and I’ll be glad to approve it if it is
feasible. Please do not proceed on that route without my advance approval,
however.
The paper will count for 10% of your course grade. Please submit it to me by
email to two addresses: ryan5@fas.harvard.edu and aar4@comcast.net on or
before 5.00 p.m. Boston time, Sunday, July 30. (The final exam is July 31, subject
to confirmation.) Use the subject line “IP Graduate Paper.”
11