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Abstract:
The PDF is a 13 mb file containing a conventional 470 pp. casebook. It contains a relatively complete table of cases but no index - the latter being unnecessary when the file can be searched digitally. Use of Roger E. Schecter's comprehensive statutory supplement (West) or equivalent is suggested.

Organization and contents are informed by over thirty years experience with the subject matter and with students at all levels of technical and legal sophistication. This book has been used twice annually in 3-semester-hour survey courses since 1999. Except for a few years when it was published by Carolina Academic Press, it has been revised each semester.

The book flags common themes and critical distinctions among IP components and attempts to present the most important and durable aspects of the law. Pursuit of that objective has been facilitated by ongoing discussions with colleagues, current and former students and others similarly engaged.

Besides patents, copyrights, trade secrets and trademarks, brief attention is given to domain names and rights of publicity. Remedies are considered pervasively. Preemption and speech issues are treated separately as well as pervasively.

The book is intended to serve the needs of legal specialists as well as generalists. Over long spans, much that is truly fundamental has been constant, and many current IP debates still center on issues raised in the 1800s and earlier.

Paperback copies with a three-color cover may be purchased for less than $20.00 from a Concord, NH publisher (email author for details). The PDF can also be printed elsewhere for royalty-free, non profit use. In either case, please advise the author of its use.

intellectual property, casebook, patents, copyrights, trade secrets, trademarks, domain names, rights of publicity, commercial speech, preemption

Abstract:
The U.S. patent system has been the subject of three recent, generally critical, studies. One, particularly uncomplimentary, primarily faults a changed source of funds for patent examination and creation of a court that, aside from the Supreme Court, has exclusive jurisdiction to consider patent appeals, both administrative and judicial. This paper explains why neither criticism is well taken. It also analyzes reactions of the U.S. Congress and Supreme Court to allegedly new problems caused by so-called patent thickets and patent trolls.

innovation, patent critics, patent reform, invalid patents, patent examination cost, patent litigation cost, patent courts, comparative roles of judge and juror, patent infringement, patent remedies, patent thicket, patent troll, doctrine of equivalents, obviousness

Abstract:
The Agency Practice Act, 5 U.S.C. § 500(b), provides that any lawyer in good standing in a state bar may practice before any federal agency. Sec. 500(e), however, provides that the Patent and Trademark Office may impose additional requirements upon those who prosecute patent applications.

The accompanying file contains: (1) my petition to the PTO that requests notice and comment rulemaking to address specific technical qualifications attorneys need to sit for the so-called patent bar, (2) a declaration pointing out that current criteria for admission of lawyers holding computer science degrees are irrational, and (3) the PTO response denying the petition. Building on these documents and prior related research, I intend to prepare an artice for publication.

patent attorney, agency practice act, patent bar, rulemaking petition, law and technology, law and science

Abstract:
In June 2004, the Lancome opinion from the Netherlands held that perfume compositions are copyrightable. The thesis of this paper is that the Dutch Court's approach runs afoul of basic copyright principles. Protecting scents instead would be relatively novel, but hardly radical, and necessary adaptations to copyright law would be modest. The paper nevertheless concludes that, lacking evidence of need, judges should not be quick to expand copyright law and should await legislative action.

[This paper was subsequently published at 45 Idea 19 (2004); an English translation of the Dutch opinion by Annemarie Field, my Dutch daughter-in-law, follows at 31.]

Copyright, patent, trade secret, perfume, Dutch

Abstract:
This working draft updates an article intended to identify pitfalls for those who are basically uninformed about intellectual Property and provides strategies for avoiding infringement. Clients ultimately decide how much risk they can tolerate and how much protection they can afford.

First, however, they must alterted to risks and apprised of options. The article is intended to facilitate a comparison of alternatives for recouping investments in developing and marketing (not necessarily new) goods and services in a way that is impossible in detailed treatments of individual IP topics. Also, its scope in relation to its size dictates careful attention to the most important and durable aspects of the law.

It should facilitate a comparison of alternatives for recouping investments in developing and marketing (not necessarily new) goods and services in most cases - in a way that is impossible in detailed treatments of individual IP topics. Also, its scope in relation to its size dictates careful attention to the most important and durable aspects of the law.

copyright, patent, trademark, trade secret, comparative IP options, IP risk, property

Abstract:
This comment notes that, although general law school rankings have been widely criticized, little has been said about specialty rankings. It therefore explores largely-ignored implications inherent in US News’ evolving methodology for determining specialty rankings. After examining criteria intended to determine such rankings as well as those expected to also affect the results, the paper also points out factors that may contribute to unwarranted influence on, for example, professors otherwise well informed about shortcomings in specialty and general rankings.

law school rankings, specialty rankings, IP rank

Abstract:
This paper considers the availability of relief for sovereign use of intellectual property (IP), primarily in federal courts.

The first, and much shorter, part of the paper considers statutes designed to redress IP infringement by the U.S. government. Despite occasional complexities, their application is usually straight forward.

The second part of the paper addresses infringement by state governments and explains how the Eleventh Amendment limits relief in federal courts. It also explains how exclusive federal jurisdiction may limit the capacity to seek relief in state judicial or administrative proceedings.

Some may find it ironic that injunctive relief, rarely available against the federal government, is generally available to halt state infringement. Conversely, compensation usually available from the federal government, is difficult to impossible to obtain against state governments is federal courts.

Another contrast is that federal contractors are apt to share governmental immunity whereas state contractors do not.

The ultimate conclusion is that IP owners seem able to obtain all the relief for governmental uses that they need, if not all that they desire, in federal courts.

intellectual property, federal sovereign immunity, exclusive federal jurisdiction, state sovereign immunity, eleventh amendment, ex parte young

Abstract:
The PDF is 13.8 mb file containing the 11th revision of a relatively conventional 498 pp. casebook intended for use in a 3-semester-hour survey course. A previous edition was published by Carolina Academic Press, but the author now holds the copyright.

Agencies that regulate technology or oversee intellectual property receive above-average attention, but, focusing on judicial review, the book explores key issues regardless of agencies' tasks. The Patent and Trademark Office, of expanding global importance, receives closest attention and offers rich opportunities for exploring both traditional and non-traditional topics. One of the latter is the agency's unique capacity to regulate practitioners. Organization and contents are informed by over thirty years experience teaching administrative process as well as intellectual property.

This book may be reproduced for royalty-free, non profit use. The author is happy to provide the current syllabus, prior exams and a three-color cover. An appendix includes the APA, FOIA and relevant provisions from Titles 15, 17, 28 and 35. of the U.S. Code. There is also a relatively complete table of cases but no index.

administrative law, administrative process, judicial review, Patent and Trademark Office, Copyright Office, casebook

Abstract:
This paper introduces ways to serve the commercial need to optimize protection for intangible firm capital or assets by taking advantage of options provided by copyrights, patents, trademarks, and trade secrets. Although published in Corporate Counsel's Quarterly in 2002, its guidance remains current.

intellectual assets, intellectual capital, knowledge assets, knowledge officers, patents, copyrights, trade secrets, trademarks

Abstract:
The article urges that judicial deference to the Copyright Office's validity determinations (positive or negative) should be influenced less by the three jurisdictional contexts (one collateral, two direct) in which they may be challenged than by evident support for its position and whether that support is legal or factual. Minimally, I hope to initiate an overdue discussion of such matters.

copyright examination, copyright registration, judicial review, administrative process, due process

Abstract:
Interactions between the Patent and Trademark Office [PTO] and the courts are more complex than for most agencies because agency decisions may be challenged collaterally as well as directly. Having patents upheld on collateral review is the ultimate concern to patentees, but patents must first be obtained.

This paper focuses on direct challenges to PTO refusals to grant - primarily in the U.S. Court of Appeals for the Federal Circuit - since the Supreme Court's landmark Zurko decison.. It argues that, with the exception of its Lee decision, the Federal Circuit has tended to focus unduly on the record, ignoring Zurko's directive to review the PTO as an agency, not a court - and to review the reasoning in its opinions, not its decisons.

Patent and Trademark Office, Federal Circuit, patents, statutory, non-statutory, and collateral review, agency reasoning, APA §§ 706(2)(A) and (E)

Abstract:
This comment briefly explores the constitutionality of appointments to two adjudicatory boards within the U.S. Patent and Trademark Office as well as appointments to the Copyright Royalty Board (CRB). It offers alternative bases for finding that the PTO appointments satisfy the dictates of Freytag v. Commissioner, IRS. It also explains why appointments to the CRB clearly satisfy Freytag.

It further discusses recent amendments to the Patent and Lanham Acts that (1) alter authority for future appointments, (2) permit ratification of prior appointments and (3) purport to make any challenge to decisions of suspect appointees subject to the de facto officer doctrine.

Besides expressing skepticism about the effectiveness of the third legislative initiative, it concludes that prior decisions of suspect appointees are more likely than not to be upheld.

administrative appointments, Freytag, copyright, patent, trademark, BPAI. TTAB, CRB, de facto officer doctrine

Abstract:
This comment considers the importance of building prosecution records adequate to rebut arguments that may later be advanced by infringers to invalidate patent claims for obviousness. This is difficult when patentees face prior art that, for whatever reason, was unlikely to have been discovered, much less distinguished, during prosecution. Unless challenges can be rebutted with evidence of unexpected results developed during prosecution, allegalions of unexpected results may be rejected as in the classic Graham case.

Yet the recent KSR case demonstrates that it may be nearly as difficult to distinguish art readily available to both applicants and examiners but not considered during prosecution.

Prosecution history, obviousness, unexpected results, examiner competence

Abstract:
As many had hoped, Tafas v. Dudas, 2008 WL 859467 (E.D.Va.) finds rules promulgated by the U.S. Patent and Trademark Office (PTO) void under the Administrative Procedure Act. Tafas correctly rejects a PTO argument that 35 U.S.C. 2(b)(2)(B) confers general authority to make binding substantive rules, quoting a Supreme Court observation that "Congress... does not... hide elephants in mouseholes." But Tafas goes too far. This comment explains why the court, having rejected that possibility, has found a larger animal in a smaller hole.

patent and trademark office, PTO, administrative process, rulemaking authority

Abstract:
This comment, based on one published in 27 IDEA 153 (1987), addresses a topic of continuing interest. Featuring Bose Corp v. Consumers Union, 466 U.S. 485 (1984) and Dennison Mfg. v. Panduit Corp., 475 U.S. 809 (1986), it urges reconsideration of the standards of review applied in patent litigation. In particular it argues that the characterization of criteria for patent validity as posing issues of fact or law is inconsistent and flies in the face of process traditions.

Apparently to justify more intense review than otherwise appropriate, the Federal Circuit singles out nonobviousness determinations. The paper doesn't quarrel with the intensity of review, but argues that denominating what seem to be issues of fact as ones of law isn't helpful. It therefore argues for application of a doctrine that allows expanded review (function) without unduly confusing terminology (form). The paper also argues for further analysis of all factors affecting patent validity - some treated as ordinary issues of fact.

law-fact dichotomy, standards of review, patent validity, constitutional fact

Abstract:
This paper explores two situations where custom may have been misperceived as trumping copyright law. The first part considers why lawyers can copy many practice-related documents without permission and explains why those reasons do not apply to other documents that cannot be so freely copied. The second part considers how schools' customary disinterest in owning copyright in academic employees' works has inappropriately influenced the outcome of unrelated litigation. In both parts, the paper argues that careful attention should be given to reasons for customary behavior before determining its effect on the law.

The paper was also reprinted in IDEA: The Intellectual Property Law Review (an anthology of articles said to be among the best of those recently published).

intellectual property, copyright, custom and law

Abstract:
The Copyright Office, incapable in fact of determining the originality of most works, generally makes no attempt when registration is sought. Moreover, most works easily pass the test set out in the well-known Feist case.

Despite that, the Office singles out some types of work and commonly refuses registration for lack of originality. Courts, with one notable exception, have upheld its decisions.

Types of works in issue, however, often signal an agenda driven by subject matter, not originality. This paper argues that, until courts press harder, the Office will continue to hide the ball and fail better to articulate its criteria for selecting works found to warrant enhanced scrutiny.

Administrative Procedure, judicial review, Copyright Office, copyright originality, copyright registration, refusals to register copyright

Abstract:
This comment explores Davis v. Blige, 505 F.3d 90 (2d Cir. 2007), and Sybersound Records, Inc. v. UAV Corp., 517 F.3d 1137 (9th Cir. 2008), cases that address the rights of transferees from copyright cotenants, but from opposite perspectives. Blige does not permit defendant to evade liability by a retrospective transfer, but it casts no doubt on the capacity of transferees, exclusive or not, to sue on the same basis as original owners. Sybersound, however, refuses suit by a transferee without denying that right to the original owner andcontrasts starkly. That transferees do not stand in the shoes of their transferors for purposes of enforcement is a radical proposition that should be rejected.

co-owner, cotenant, copyright, F.R.C.Pro. 19, joinder, retrospective transfers

Abstract:
Congress intended juries to have no role in awarding copyright statutory damages. John, G. Roberts, Jr., however, prevailed in arguing on certiorari that a $8.8 million non-jury award ran afoul of the Seventh Amendment. Some, including the defendant, might expect such a ruling, absent amendment, to spell the end of the provision in question. Yet, as recounted in this brief comment, the provision in issue was nevertheless found to support a subsequent jury award of $31.68 million.

Statutory reformation, statutory damages, Seventh Amendment

Abstract:
Reversing Tafas v. Dudas, 541 F.Supp.2d 805 (E.D.Va. 2008), a panel of the Federal Circuit in Tafas v. Doll, 2009 WL 723353 (Fed. Cir. 2009), finds challenged rules within the rulemaking authority of the U.S. Patent and Trademark Office (PTO). It therfore remands for consideration of a host of issues that the district court had not needed to reach.

This comment focuses on one question to be considered on remand: whether the PTO must use notice and comment rule making to promulgate procedural rules. It argues that the statute does not warrant imposing such an unusual duty. Moreover, it argues that the issue need not be addressed insofar as rules in question were in fact promulgated after notice and extensive (if largely unfavorable) public comment.

patent and trademark office, PTO, administrative process, rulemaking authority

Abstract:
In situations where some parties infringe intellectual property (IP) rights only if others do, the former can be thought of as secondary and the latter as primary infringers. This comment considers situations where threats directed to parties such as purchasers of allegedly infringing gooods, despite being strategically advantageous to IP owners, can be unfair.

All parties, of course, wish to know of potential liability. Primary infringers obligated to evaluate threats suffer no more than than the expense and annoyance of litigation. But the stakes are raised when threats are aimed at purchasers who lack incentives, for example, to conduct independent inquiries or to credit suppliers' assurances of noninfringement. The potential for unfairness is exacerbated because primary infringers, even when they prevail, are unlikely to recover for lost sales.

This comment, building on an earlier one by the senior author, suggests, for example, that district courts need to better document harm generated by false implications in literally true statements. It also suggests that the Federal Circuit should be more willing to halt practices that may confer the sort of leverage eschewed in eBay.

patent litigation, rights to petition, commercial speech, secondary infringers

Abstract:
This comment briefly explores potentially dual protection for logos. Although authorship confers no trademark rights, it may generate copyright interests despite the intent of artists and clients. Logos created by full-time employees pose no problem. Ones created by free lance designers, however, pose a risk, if remote, of termination. Whether that generates a serious threat to the independence of freelance artists remains to be seen, but it can be reduced if not elimated by artists who choose to be employees of their own businesses.

copyright, logos, freelance artists, works for hire

Abstract:
Particularly since eBay, patentees who threaten alleged secondary infringers may accomplish more than would be possible by filing suit against primary infringers. Beginning in 1998, the Federal Circuit has found various essentially identical local causes of action, as well as actions under Sec. 43(a) of the Lanham Act to be subject to a federal privilege. Recent opinions confirm that anyone may be threatened with suit unless allegations of infringement are "objectively baseless."

Yet it seems that such contact should be forbidden at least until suit has been filed against the primary infringer. Patentees whose suits cannot pass muster under F. R. Civ. Pro. 11 should be barred from contacting secondary infringers whose stakes are too small to credit rebutting legal opinions offered by primary infringers, much less seek independent opinions.

patent litigation, commercial speech, secondary infringers, F.R.C.Pro 11, privilege, patent preemption

Abstract:
As the Court in Quanta recently confirms, patent and copyright owners have limited rights following voluntary transfers of protected goods. Moreover, as discussed at length by the Second Circuit in Platt & Munk Co. v. Republic Graphics, Inc., patent owners' rights have long been similarly affected by involuntary transfers. Platt & Munk finds lack of equivalent copyright rulings remarkable but does not allow lack of direct precedent to stand in the way of finding that involuntary transferees of copyright-protected goods have the same rights as voluntary transferees.

This comment considers the Fourth Circuit's opinions in Christopher Phelps & Assoc., LLC v. Galloway. The court initially went one step further, holding, "under the first sale doctrine, an infringer is entitled to sell, or otherwise dispose of any copy that the court does not order destroyed or otherwise disposed of, without further obligation, once he satisfies the judgment that remedied the infringement, even if the copy was originally pirated." But those remarks wre colored, perhaps more than usual, by the subject of the dispute - defendant's million-dollar house constructed according to unauthorized copies of plaintiff's plans.

That opinion was withdrawn along with most references to the first-sale doctrine, but more emphasis was placed on eBay. Thus, concern about encumbering property unrelated to the infringement, including real estate, nevertheless warranted continued refusal to enjoin sale or lease of the house.llion-dollar house constructed according to unauthorized copies of plaintiff's plans.

copyright, architectural works, injunctions, first sale doctrine

Abstract:
Many, disappointed with traditional ways to assess and manage health, safety and environmental risks, have sought alternatives that might better serve democratic values and truth. Arthur Kantrowitz proposed one in 1967. Named the "Science Court" by the media, it sought to air opposing viewpoints publicly before an independent, neutral and technically competent panel of scientists.

The idea has received considerable attention over the years, but some see it as too opaque and elitist. Ironically, others may view it as too transparent. Beyond that, as proposed it might have been too time-consuming and expensive, and few scientists would have welcomed a suggestion for cross-examination. Yet its key features still offer promise for resolving difficult policy disputes and might be usefully integrated with notions since leading to the creation and endorsement of advisory science boards.

science court, technical risk management, advisory science board

Abstract:
This comment argues that it is to the advantage of academic authors and institutions that employ them to assign copyright to journals that publish their work. It also argues that copyright is best left with those journals. On the flip side, it argues that at least some journals unduly limit the post-publication rights of academic authors and their employers. Failure to allow free reproduction of articles for distribution to authors' students and failure to permit authors to post copies of papers on campus websites sparks an increasingly hostile backlash for little apparent return to anyone.

copyright, authors' and employers' rights, publishers' rights