INTRODUCTION TO INTELLECTUAL PROPERTY LAW

Fall Semester 2005

Professor Susanna Frederick Fischer

ASSIGNMENTS

The Casebook abbreviated as “CB” is Robert P. Merges, Peter S. Menell,

and Mark Lemley, Intellectual Property in the New Technological Age (3rd

edition (2003). It is on sale at the CUA bookstore. You must also purchase

the accompanying case and statutory supplement. You also need to check

the online updates at:

http://www.law.berkeley.edu/institutes/bclt/pubs/ipnta/index.html

Please write out answers to all problems in the assigned pages. We will go

over many of these in class. I may require you to hand in your written

answers in class. They will count towards your participation grade (See

Academic Rule V.4). At the end of the units on Trade Secrets, Patents,

Copyrights, and Trademarks, there will be a graded quiz to make sure

that you have mastered that unit’s material.

Week One

UNIT I: INTRODUCTION (Overview of IP, Philosophical Perspectives)

CLASS 1: MONDAY AUGUST 22

Overview of Intellectual Property - CB pp. 19 (starting at B) -26

CLASS 2: WEDNESDAY AUGUST 24

Philosophical Perspectives – CB pp. 1-19 (up to B)

Week Two

UNIT II: TRADE SECRETS (Subject Matter, Misappropriation, Remedies)

CLASS 3: MONDAY AUGUST 29

Introduction to Trade Secrets, Subject Matter – CB pp. 27-54 (up to C)

CLASS 4: WEDNESDAY AUGUST 31

Trade Secrets Misappropriation Generally – CB pp. 54 (starting from C) –72 (up to 4)

Week Three

NO CLASS: MONDAY SEPTEMBER 5 – Labor Day

CLASS 5: WEDNESDAY SEPTEMBER 7

Trade Secrets Misappropriation in the Departing Employee Context, Agreements to Keep Secret, Remedies for Trade Secretes Misappropriation – CB pp. 72 (starting at 4) -104

Week Four

UNIT III: PATENTS (Patentable Subject Matter, Requirements for Patentability, Describing and Enabling the Invention, Patent Infringement, Defenses, Remedies)

CLASS 6: MONDAY SEPTEMBER 12

Introduction to Patents, Patentable Subject Matter – CB pp. 105-135, 307-317

CLASS 7: WEDNESDAY SEPTEMBER 14

Repeat Assignment for Class 6

Week Five

CLASS 8: MONDAY SEPTEMBER 19

Patentability of Software, The Utility Requirement – CB pp. 136-47 (up to 3), 932(starting at D)-949 (up to 2)

CLASS 9: WEDNESDAY SEPTEMBER 21

The Novelty Requirement, Priority and Statutory Bars – CB pp. 146 (starting at 3)-172 (up to 4) Note: There is an error on page 167 of the Third Edition of the book. The text states that the section 102(g) reasonable diligence standard is "measured from a time just prior to the second conceiver's reduction to practice." This is incorrect. The standard is actually measured from a time just prior to the second conceiver's conception date

Week Six

CLASS 10: MONDAY SEPTEMBER 26

Non-obviousness, Describing and Enabling the Invention – CB pp. 172 (starting at 4)-214, Supplement pp. 3-11

CLASS 11: WEDNESDAY SEPTEMBER 28

Repeat assignment for Class 10

Week Seven

CLASS 12: MONDAY OCTOBER 3

Repeat assignment for Class 10

CLASS 13: WEDNESDAY OCTOBER 5

Patent Infringement – CB pp. 215-230 (up to 3), 312 (starting at d)-313 (up to 2, Supplement pp. 11-15

Week Eight

NO CLASS: MONDAY OCTOBER 10 – Columbus Day

CLASS 14: TUESDAY OCTOBER 11 (Administrative Monday)

Patent Infringement/Doctrine of Equivalents - CB pp. 230 (starting at 3)-266

(up to 5)

Contributory Infringement and Inducement – CB pp. 269-274

UNIT IV: COPYRIGHTS (Copyright Requirements, Copyrightable Subject Matter, Ownership, Duration, Infringement, Defenses to Infringement, Remedies)

CLASS 15: WEDNESDAY OCTOBER 12

Defenses to Patent Infringement and Remedies for Patent Infringement – CB pp. 274 (starting at D)-291(up to E), 297-307(up to G), skim Supplement pp. 15-37

Week Nine

CLASS 16: MONDAY OCTOBER 17

Introduction to Copyright, Requirements, Copyrightable Subject Matter I – CB pp. 319-354 (up to b)

CLASS 17: WEDNESDAY OCTOBER 19

Copyrightable Subject Matter II, Ownership of Copyrights – CB pp. 354 (starting at b)-395 (up to 2), 399 (starting at 3)-402 (up to E)

Week Ten

CLASS 18: MONDAY OCTOBER 24

Duration of Copyright, Copyright Infringement – CB pp. 395(starting at 2)-399 (up to 3), [on pp. 397-398, delete note 3, renumber note 4 as note 3, and insert as note 4 Supplement at p. 39], 402(starting at E)-416 (up to Steinberg), 424-427 (up to Anderson), 436-445(up to 6)

CLASS 19: WEDNESDAY OCTOBER 26

Repeat assignment for Monday October 24.

Week Eleven

CLASS 20: MONDAY OCTOBER 31 – Happy Halloween! A prize will be awarded to the most original costume relating to intellectual property.

Defenses to Copyright Infringement pp. 450-467, 481-496, Remedies for Copyright Infringement – CB pp. 521(starting at I)-528

CLASS 21: WEDNESDAY NOVEMBER 2

Contributory and Vicarious Copyright Infringement, Digital Copyright Infringement – CB pp. 445-450, 496 (starting at G) –517(up to H), Supplement pp. 40-70

Week Twelve

UNIT V: TRADEMARKS

CLASS 22: MONDAY NOVEMBER 7

Introduction to Trademark, What Can Be Protected As a Trademark, Distinctiveness – CB pp. 529-559 (up to (b)), Supplement pp. 71-79

CLASS 23: WEDNESDAY NOVEMBER 9

Distinctiveness of Trade Dress and Product Configuration, Establishment of Trademark Rights: Priority, Trademark Office Procedures, Incontestability – CB pp. 565 (starting at Wal-Mart v. Samara)-593 (up to i), 605 (starting at c)-613

Week Thirteen

CLASS 24: MONDAY NOVEMBER 14

Trademark Infringement: Likelihood of Confusion, Dilution - CB pp. 614

643 (up to 3), Supplement pp. 81-98

WEDNESDAY NOVEMBER 16: Trademark Infringement: Licensing

and franchising, Domain Names and Cybersquatting,

Contributory Infringement, False Advertising – CB pp. 643 (starting at 3)

675 (up to E)

Week Fourteen

CLASS 26: MONDAY NOVEMBER 21

Defenses to Trademark Infringement, Remedies – CB pp. 675 (starting at

E)-721, 726(starting at G)-738

CLASS 27: WEDNESDAY NOVEMBER 23: No class - Thanksgiving

Holiday

Week Fifteen

UNIT VI: STATE LAW

CLASS 28: MONDAY DECEMBER 1

State Intellectual Property: Misappropriation, Right of Publicity, Preemption,

- CB pp. 739-752 (up to 2) 789(starting at 4)-804, 831-54