This course covers trademark, patent and copyright, as well as a number of sui generis intellectual property rights. It begins with an introduction to some of the theoretical and practical problems which an intellectual property regime must attempt to resolve; during this section, the basic ideas of information economics and of the First Amendment analysis of intellectual property rights will be examined through a number of case-studies. The class will then turn to the law of trademark, patent and copyright, with a particular emphasis on copyright, developing the basic doctrinal frameworks and discussing the advantages and disadvantages of each. We will focus in particular on a number of areas that where the theoretical tools developed at the beginning of the class can be applied to actual problems involving a full panoply of intellectual property rights; these areas include intellectual property on the Internet, intellectual property and world trade -- including a case study on pharmaceuticals -- innovation, monopoly and the software industry, and database rights and free speech. There is also a unit on the effect of copyright on appropriationist art, sampling and "culture-jamming." The overall theme of the course is that intellectual property is the legal form of the information age and thus that it is important not only for its enormous (and increasing) role in commercial life and legal practice, but also for its effects on technical innovation, democratic debate, cultural formation and international politics. The class will make fairly extensive use of the Net, for both discussion and research. There will be a couple of short practice exercises during the course of the semester. The final exam will be a 10-12 page take-home.
Dreyfus and Kwall, Intellectual Property: Cases and Materials on Trademark, Copyright and Patent Law (Foundation Press; 1996). (Dreyfuss) Goldstein, Kitch & Perlman, Unfair Competition, trademark, copyright and patent: selected statutes and international agreements (Foundation; must be 1999 edition) (Statutes); James Boyle, Shamans, Software and Spleens: Law and the Construction of the Information Society paperback (Harvard University Press; 1997). (Shamans) Photocopied Materials (Materials).
For most weeks of the term, a group of students in the class is identified as being primarily responsible for certain material -- generally a set of problems based on the reading material for that week. The problems are to be found either in the textbook, Dreyfuss, or marked as "supplementary problems" in this syllabus. At other times, these problems will be assigned for the whole class to analyze. (These problems are marked "Everyone") When a group is assigned, the group members are expected to be ready to answer questions and -- in some cases -- to lead discussion about the problems, as if they were a team of lawyers who had been assigned the problem and asked to advise a client. They need do no research beyond the assigned material. Groups are free to meet beforehand and allocate particular responsibility for certain facets of the problem to particular people in the group, however, all Group members should be ready to discuss all aspects of the problem. Three caveats are in order;
Please be sure to bring the all the relevant material to class each day. On most days, we have statutory material, cases and assigned supplementary reading. The good news is that the material is fascinating (at least to my biased eye) the bad news is that it is both extensive and expensive.
Over the course of the semester, please read all of Shamans, Software and Spleens. I have marked the relevant pages next to the material for the particular classes, but by the end of the semester, you should have read the whole thing and be ready to criticise it at length.
The class's web page can be found at http://james-boyle.com -- visit it and click around.
I am always happy to chat about the class, the assignments or life in
its rich fullness. I hope that by the time class starts we will have a
Web board and a listserv to discuss the materials, but in addition you
can reach me at 432-6084, in my office (location currently unknown) and
-- perhaps most reliably of all -- by e-mail firstname.lastname@example.org At the
beginning of the term, I will also post office hours, and you can just
Chan up to but not including Cremin
Cremin up to but not including Fischer
Fischer up to but not including Harlan
Harlan up to but not including Johnson
Johnson up to but not including Kim
Kim up to but not including Messing
Messing up to but not including Paxton
Paxton up to but not including Sahni
Sahni up to but not including Vander Jagt
Vander Jagt to ZZZ
If, because of some unavoidable conflict, you believe you are
going to have to miss your group assignment - please clear it with
me first and then arrange with my secretary, Barbara Mianzo 432-4939 (rm
249), to be transferred into another group.
Introduction to the Constitutional Dimensions of, and Limits on, Intellectual Property
Supplementary Problem 2: Citing the need to avoid "political confusion among voters," and to "reward the Democratic Party for their ingenuity and labor in giving the word 'Democrat' a uniquely positive connotation," the Congress grants to the Democratic National Committee a permanent right to the word "democrat" (upper or lower case). The "Democrat Protection Act" -- or DPA -- forbids any person, without the consent of the Democratic National Committee, to use the word 'democrat' or 'democratic' in any commercial (or non-profit fund-raising) activity. The right is protected by the remedies provided in the Act of July 5, 1946 (60 Stat. 427; popularly known as the Trademark Act of 1946 [Lanham Act] ) [15 U.S.C. § 1051 et seq.] but without the requirement that the DNC show the likelihood of confusion. The DNC has announced its intention of emphasising the "New Democrat" shift to the center by denying usage of the word 'democrat' to both "left and right-wing extremists." Having been denied usage, the Democratic Socialists, Committee for a Well-Armed Democratic Citizenry, Gay Democrats PAC, and the "luncheon meat" Span, (whose proposed new slogan is "the Democrat of Luncheon Meats") all challenge the law. Is the DPA constitutional? Are the actions of the DNC constitutional?
Review reading from last class particularly Texas v. Johnson and read Shamans, 25-34, 144-150
Supplementary Problem 3: Would Representative Torricelli's Bill granting the United States a copyright to the flag of the United States and providing criminal penalties for the destruction of the flag [HR 2723, Materials page 119] be constitutional? Can you imagine other attempts to achieve the same ends through different intellectual property concepts?
General: what should be the components of a constitutional theory which explained 1.) The general contours of the Congressional power to create, extend and define intellectual property rights? 2.) The limits (if any) that the First Amendment puts on intellectual property rights and remedies?
Schiapparelli Searle, Remington Products, Senate Report 100-515, Trademark Law Revision Act, Heileman Brewing
Group 2 -- Principal Problem A "Antimonopoly" (Dreyfuss p. 25).
General Issues: Why do we have this "homestead law for the language" as Felix Cohen called it? Is the "value" that it purports to protect, actually value that it creates? How is it different from copyright, patent, trade secret, misappropriation?
Dial-a-Mattress, Qualitex, In Re Old Glory Condom
Everyone -- Principal Problem B -- The Case of the Defecating Dog (Dreyfuss, p. 46).
Bad dogs and patriotic condoms.
Lois Sportswear, Two Pesos, Ferrari, Avon Products
Group 3 -- Principal Problem A, Dreyfuss p.76
Trade Dress and Beyond. A Federal law of unfair competition? What are the justifications for the expansion of trademark protection?
Supplementary Problem 4 a.: You are in-house counsel to the Colgate Palmolive Corporation, makers of Ajax scouring powder. Your boss surfs the Web and has found that there is a non-profit site with the domain name ajax.org, a site devoted to "the free exchange of information, ideas, and cool pictures of Bill Gates dressed up like Hitler." Without consulting you, he sent a letter demanding that the organisation cease using the domain name ajax.org, as this was interfering with Colgate Palmolive's trademark. You have received the following response, (also posted on the Ajax.org website under the title Colgate-Palmolive Blows Goats, http://www.ajax.org/ajax/colpal/co10.html ) which your boss, somewhat non-plussed, has turned over to you.
"Ahoy to Ye My Dearest Swabbie ___,
As an attorney, I'm sure you don't understand anything of the INTERNIC hierarchical structure. The top-level domain "org" was created for the establishment of free and non-profit organizations, of which the AJAX organization is one. The "com" domain is reserved for commercial ventures such as your corporation. Furthermore, I hope you understand that the word "Ajax" is the name of a historical/mythological figure, and as such is not a unique trademark such as "Cheerios" or "Pepsi".
I also suggest that you examine the website and note well that no remark in regard to your firm is made, no logo of your firm is used, and no claim of relation between myself or any of my hardy maties and your firm or any of its products has been drawn.
In addition to this, I suggest that you dig up Sophocles and Ovid and sue them, since they have written poems and plays bearing the same name. I also suggest you take a look at your local phone book and harrass the owners of Ajax Roofing, Ajax Air Filter and Supply, Ajax Air Freight, Ajax Chemical Toilets, Ajax Private Investigations, Ajax Technical Authoring, Ajax Grocery,and the Ajax Hotel in Limassol, Cypress as well as EMI International (the producers of the film "Flash Gordon" in which a character named AJAX GENERAL and a spaceship called AJAX WARSHIP are used), the pop/techno musical group "Ajax", and the US Army and McDonnell Douglas (for their missile designation "AJAX"). I also think there's a Cheech and Chong movie where a woman snorts a nose full of Ajax... that might be a great defamation suit for you. Universal Pictures and C&C; Brown Productions have a lot more money than I do...."What should you do?
Supplementary Problem 4 b.) Are the anti-dilution provisions of section 1125 c.) facially constitutional? If Greenpeace makes a profitable series of Snow ornaments, which when shaken, cause a minature oil tanker bearing the Exxon logo to break open and emit a cloud of oil, do they violate 1125 c.)? What about a CD parodying Pepsi commercials which has a yin yang symbol similar to the familiar Pepsi logo, characteristic Pepsi fonts and the title "Dispepsi"?
See also http://www.law.georgetown.edu/piet/internic/trademarks/dilut1.html
Feist, Copyright and the Invention of Authorship
The history of copyright protection. Originality and the idea of authorship. Originality as a constitutional requirement. The economics of information and of innovation.
Group 5: Principal Problem Dreyfuss, p 244-5 Stryker and another Brick
in the Wall?
Everyone: Owning the Law: Are West I and West II correctly decided? Cf. West v. Mead Data Central in Dreyfuss 283-4. What impact should the doctrine of merger have on this case and on the Principal Problem? Would it be constitutional to pass a "database statute" that gave compilers of facts a property right in "unoriginal" collections?
Supplementary Problem 5: Your are the Supreme Court, going back into
conference to see if you can break the 4-4 tie in your review of Lotus
v. Borland. The question is, how should the case be decided and on
what theory? Pay particular attention to issues of merger and separability,
the special problems raised by computer program interfaces, the light that
economic analysis can shed on the problem and the points raised in Judge
Boudin's concurrence. Feel free to split into a majority and dissent,
if you wish. Come to class ready to explain your reasoning to us
-- your colleagues on the expanded court -- and to persuade us to join
Sony v Universal, Princeton Document Services I & II
Group7: Supplementary Problem 6
Supplementary Problem 6: You represent the Yorkside copy shop and the faculty of the Yale Law School; both are being sued for copyright infringement by the Harvard Law Review. The law school faculty have a single institutional subscription to the Harvard Law Review. When the most recent issue arrives, it is sent to the Yorkside, where the table of contents for each issue is copied and circulated to the faculty. Faculty mark off on the table of contents any article they are interested in seeing. Yorkside receives these orders and then sends a photocopy of that article directly to the professor's office through campus mail. The Yale faculty has a large appetite for law review articles and this convenient procedure merely whets it; while no-one asks for copies of the entire review, individual articles will often be copied for twenty or thirty professors. Typically, Professors pile these photocopies up in large, unstable piles in their offices. Eventually, they go through a batch, discarding most, annotating some and writing indignant rebuttals to others, rebuttals that may be published themselves, thus completing the cycle. Like most law journals, the Harvard Law Review is believed by its critics to have all of the central features of a vanity press -- that is to say, a press that does not pay its authors, takes their copyrights, makes editorial changes to the work submitted, (in this case, adding useful footnotes that substantiate disputed points, such as the correlation of poverty with the absence of wealth) and finally charges the authors for copies of their own work -- known as "reprints" -- which the authors then give away for free, apparently believing that they will be read. The Law Review claims copyright over both the individual articles and to each issue as a whole. Despite the fact that its editorial labor and authorial content are effectively "free," Harvard Law Review currently runs at a loss, like most law reviews, and is partially subsidised by its host institution, a university near Boston. It makes money by selling subscriptions at very high rates to institutional subscribers and at lower, but still expensive, rates to individual lawyers. It also makes a fairly substantial amount of money from "permission fees" paid by those who wish to include an article or a fragment of an article in a casebook or reader. Finally, it receives a small sum of money annually from Eastlaw, an online research service, for providing Eastlaw with a complete, fully searchable database of its articles. All of the Yale faculty have free subscriptions to Eastlaw and could, if they wished, print any article directly from the database -- though without the law review's attractive textual features, such as footnotes at the bottom of the page. Harvard Law Review does not currently have any service to license individual photocopies of individual articles though such a scheme might be technically possible -- perhaps by direct download of a facsimile version from the Web -- but the editor in chief claims that she may "look into it," depending on the outcome of this litigation. The proprietor of Yorkside is very upset; he assumed that "anything done by a bunch of lawyers to their own books must be legal." The Yale faculty is also upset and have turned to you for legal advice; they claim that this kind of copying happens all the time behind the veil of ignorance, that it is a Pareto superior allocation of entitlements and, in the alternative, that it is fair use under section 107 of the Copyright Act.
Campbell v Acuff-Rose, Harper v Row, New Era Publications, Hustler v. Moral Majority
Group 8: Supplementary Problem 7 & 8.
Supplementary Problem 7: Go to http://www.negativland.com/audio.html and listen to both the A Capella and Radio Mix versions of U2/Negativland: The Forbidden Single. Is this a fair use of U2's "I still haven't found what I am looking for"? You might also want to look at Negativland's material on Intellectual Property, appropriationist art and sampling -- to be found at http://www.negativland.com/intprop.html
Supplementary Problem 8: You represent the New York Times. One of its reporters has just found Special Prosecutor Ken Darkstarr's diary. Darkstarr, in his famous and characteristically Biblical writing style, describes in apocalyptic and profanity-laden terms his envy of the President's hair, wife and status, his distaste for the President's morals and his belief that "extremity in the pursuit of scoundrels is no vice." Darkstarr is well-known because his investigations actually led to impeachment of the President by a lame-duck Congress; a Senate trial is currently underway. The reporter has planned an article, accompanied by a two page special pull-out, reproducing several thousand words of the diary verbatim in small print (in the style of the Unabomber manifesto.) Alternatively, the reporter has planned an article which intersperses the bland and regretful wording of the Official Darkstarr Report sent to Congress with the profane fulminations of the Darkstarr diary -- to ludicrous effect, it has to be said. Darkstarr's lawyers will move for an injunction to prevent publication. The reporter wants your advice on the construction of the article. How would your answer be different if the excerpts came from a purloined copy of Darkstarr's much-anticipated forthcoming autobiography; "Bill of Attainder"? In either case, would an injunction against publication have to meet the standards for a prior restraint?
INS v. AP (again), Motorola, Dow Jones (again)
Group 9: Supplementary Problem 9 Framing and Pre-emption.
Supplementary Problem 9
You have recently acquired a new client, HotNews.com, based in Manhattan. HotNews is a company whose sole product is an extremely popular site on the World Wide Web and whose sole revenue comes from advertisers who wish to place their messages on its site. The site is so popular because it offers, in the words of the HotNews slogan, "Your one-stop choice for Web News." HotNews does not gather news of its own. Instead it uses a process called "framing" to offer visitors to its page simultaneous access to the websites of a variety of news sources on the Web, including The New York Times, The Washington Post, and Sports Illustrated. A visitor to the Hotnews page sees a screen divided into a number of partitions, like the frames of a picture (hence the name.) Inside each of these frames will be shown the front page of a particular news-site, such as the New York Times, carefully identified as such. Since Hotnews is, in effect, showing the newspapers' own sites, the viewer will see the familiar mastheads of each paper or magazine.
Describing the operation of their service to interested journalists, the HotNews management have been insistent that HotNews merely offers a set of useful instructions to the computers of its users; it is the users' computer that then fetches the different news sites and displays them side-by-side on the users' screen. In effect, the Hotnews website tells the visitor's web-browsing program "Divide your screen up into three frames. In number one, fetch and display http://www.nytimes.com, in number 2 fetch and display http://www.washingtonpost.com and in number 3, fetch and display http://www.sportsillustrated.com. In the spaces between and around these three frames, show HotNews' advertisements." The Hotnews site's most important feature is called deep-linking. Each day, Hotnews' news analysts identify all the stories on a particular topic from different newspapers. Thus, for example, all the stories on impeachment or the search for the missing mass in the universe, would be indexed -- whatever their source. The index would "deep link" the viewer directly to the story -- bypassing the task of navigating through the newspaper's own screens and menus, and in the process avoiding some of the newspaper's advertising. What is more, the resultant stories would each be displayed in the "frame" for that publication. Thus a viewer could compare coverage given by the Post and Times to the same story; articles would appear literally side by side. Visitors to HotNews can then click through the various screens and stories in the different sites, all without ever moving out of the HotNews frames. HotNews claims that this is a significant convenience to its customers, and the number of people using the site (more than one million per day) seems to bear this claim out.
The New York Times and other featured newspapers and magazines do not see the process in such a benevolent light. Their reason is that the HotNews frames fit over, and replace, the banner advertisements carried at the top of their pages. Thus, a person viewing the New York Times at the HotNews site sees exactly the page they would get were they to go directly to http://www.nytimes.com, with one crucial exception: the advertisements at the tops and sides of the page will be those that HotNews has been paid to display, not those that the New York Times has been paid to display. The New York Times and the other likely plaintiffs are upset about this because it upsets their sole source of revenue from Web-based news services. These news sites do not charge subscription fees; they generate revenue only by displaying advertising, and perhaps, more speculatively, by encouraging some individuals to subscribe to the paper version of the publication. At present Web journalism is not a huge money-maker. The majority of the news organizations' revenues comes from selling advertising in, and copies of, the paper version of their stories. Executives at the various newspapers believe, however, that web advertising will one day make up a much larger proportion of their revenue. What's more, a small portion of the content on their sites, is not found in the print version of the paper. For example, PsiberTimes, a New York Times report on Internet related news, is only produced online. In a recent editorial, PsiberTimes referred to HotNews as "a bunch of thieves, whose freeloading will kill Web news." In the face of comments like these, HotNews has come to believe it will soon be sued and has turned to you for legal advice.
Your mission: Using the materials for today's assignment, you need to research whether the news organizations have a cause of action for "hot news misappropriation" against HotNews.com under New York State law, and whether that cause of action can be stated in such a way as to avoid pre-emption by Federal copyright law. Another associate tells you that there is also some possibility that the New York Times might have an action under state trademark law against Hotnews for the mere display of the newspapers' front page -- including its distinctive logo, typefaces etc -- within the Hotnews frames. Assuming for the sake of an argument such a claim might otherwise succeed, would it be pre-empted by Federal copyright law?
Diamond v. Chakrabarty (again)
In Re Allapat, In re Grams, Diamond v. Chakrabarty (again)
Group 9: Principal Problem, "I'm so happy I'm a Gamma" Biotech, Dreyfuss p. 575
Group 10: Dreyfuss p 612, p 575. Return to Principal Problem from last class: Does Beta's cDNA pass the utility test?
Brenner v. Manson, Moratorium on Animal Patents
Gayler v. Wilder, Coffin v. Ogden, Scripps v. Genentech
What are the differences between the requirement of novelty (and, later, non-obviousness and originality) described here in the context of patents and the requirement of originality explained in the copyright context in Feist. Are there constitutional differences?
Graham v. John Deere, Sakraida v. Ag Pro, Stratoflex v. Aeroquip, In Re Dillon, In Re Bell
Group 11 Principal Problem C.) Dreyfuss, p 650 -- Drug patents
How should the international system of intellectual property be designed? What are the distributional effects of the current system? The effects on development? The effects on research? Is the current process of international IP development the extension of a neutral, technocratic regime to a world sorely in need of it, or a slanted intellectual property system that locks-in the gains of the developed world? How should IP deal with folklore, traditional cultivars and medical traditions, sacred images?
Boyle, A Politics of Intellectual Property: Environmentalism for the Public Domain, Rose, The Comedy of the Commons, Heller, the Tragedy of the Anti-Commons
END -- Remaining class time will be used as a safety reserve for extra discussion, current developments and review