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Law of Intellectual Property
is an extremely complex field with many branches and sub-branches.
A course on international intellectual property that
lasts a mere 16 weeks can hardly cover all of the branches
of intellectual property nor the particulars of all of the
branches in a wide range of countries and jurisdictions.
Continued learning through the E-commerce courses,
this course provides the type of overview that will, at
a minimum, introduce the key concepts, hint at some of the
complexities of this diverse field, allow you to use intellectual
property more productively and profitably in your business
life…and perhaps avoid an infringement action. This
course has the following main objectives:
a) to familiarize you with the basic concepts and
themes of intellectual property law in both the national
and international arenas. b) to canvass the central questions
of substantive intellectual property law, especially copyright,
trade mark, and patent law, and introduce some of the more
important procedural issues relating to the protection of
intellectual property; c) to assist you in recognizing when
your company or organization is (or may be) facing an intellectual
property dispute and how to better understand the stakes
of such a dispute; d)
to appreciate the increased role of intellectual
property in the contemporary business and political environment;
and e) to understand some of the taxation implications of
intellectual property assets and their use.
This course is taught by George Summerfield, partner
at Stadheim and Grear (Chicago).
of “International Intellectual Property” and
Syllabus of The Fourteen Modules
Welcome to International
Property Law (LWLLM 108), a course being taught exclusively
for the Graudate Law School LLM on Taxation.
Outline of the Course Below
(a) a brief introduction
some initial assumptions
that the instructors are making about the students, including
your own role.
of the fourteen modules
explanation of course
assignments, examination, and overall grading
details of the instructors
This two-part course is comprised of
that will be taught over a period of 12 weeks in two six-week parts,
each with seven modules. Hence, you will be responsible
for one module per week, with two modules being taught
in one particular week.
IP is an extremely complex field with many branches and sub-branches.
Obviously in a course on international intellectual property
that lasts a mere 12 weeks,
we can hardly cover all of the branches of intellectual
property nor the particulars of all of the branches in a
wide range of countries and jurisdictions. This
course is definitely an appetiser, not the entrée.
We will attempt to provide the type of overview that will,
at a minimum, introduce the key concepts, hint at some of
the complexities of this diverse field, allow you to use
intellectual property more productively and profitably in
your business life…and perhaps avoid an infringement
action. On detailed legal matters, you should seek the advice
of an experienced intellectual property lawyer.
(B) Some Initial Assumptions We Are Making ….
The two instructors are making the following assumptions about all students in the course:
a) that you have some
level of interest in the field of intellectual property
law. It is, without doubt, one of the most dynamic and
expanding areas of contemporary
legal practice and has a wide number of business (and taxation)
For example, one recent study found that between 1980 and 1997,
U.S. companies saw their revenues from intellectual property
soar from less than $US3 billion to $90 billion. The US
copyright industries (including
movies, TV, home video, music, publishing and computer
software) ---but yet still only one field of intellectual
property----are “America’s greatest trade prize”,
Jack Valenti, President of the Motion Picture Association
of America, recently stated. Valenti explained, that “
we (U.S. copyright industries) bring in more revenues than
aircraft, more than agriculture and auto parts. What is
more astonishing and more valuable is that the Copyright
Industries have a surplus
balance of trade with every single country in the world.
No other American business enterprise can make that statement;
particularly in view of a $400 Billion trade deficit in
As for trade marks, here are the first few sentences from an
article in The Trademark Reporter. “Perhaps
you would like to have acquired the Coca-Cola Company in
1986. If so, would you have been willing to pay billions
of dollars for something you could not touch, feel, grasp,
weight or measure for a mere intangible, a simple name?
On May 8 of that year, the COKE beverage was 100 years old.
What would the company have been worth? Wall Street’s
estimate was $14 billion; yet, the company’s hard
assets, its real and personal property, were valued at only
$7 billion. The other $7 billion was the value of the COCA-COLA
Yet, as the debates over Napster, the Human Genome Project,
the patenting of anti-HIV drugs and the patenting of plants
--- known as “biopiracy” to its critics ---
reveal, intellectual property is also an area of law that
resonates with a wide number of policy, economic, and ethical
issues, many being debated across the globe ---- and likely
in your own countries----as this course is being taught.
b) that you have successfully
mastered (or previously knew) the range of research, “Blackboard”, e-mail and internet navigation skills
introduced in earlier courses, and, in particular, in
Professor William Byrnes course in Principles of International
also should be familiar with the use of legal databases;
the two most important ones for this course are Westlaw
and Lexis. From the first week
of this course, these skills will be required.
c) that you appreciate that your own direct participation in the course is required both for you
--- and for your fellow students --- to get the most out
of the 14 modules and the overall course. Slightly paraphrasing
(for the online classroom environment) from a course syllabus
written by Andrew Herman, a sociologist from Drake University
My basic pedagogical philosophy is that ‘knowledge’
is the fruit of the effervescence of discussion and dialogue
who are willing to be changed, however slightly, by what
they hear and
speak. For this change of heart and mind called "learning"
to take place,
you must actively participate in class. Although I will
take the lead in
providing initial reading materials and study guides that
give details and in-depth explanations for the various topics,
as well as giving form to the online discussions,
the success of this course for you individually and
the class as a whole depends on your willingness and desire
to be responsible for your own education by being prepared
for and participating in the online classroom.”
Applying this specifically to “International Intellectual Property”
means that after you have read and made notes on the study
guide ( including the “leading questions” provided
by the instructor) and the text materials, you should go
to the class discussion board and:
1) make a contribution to one of the existing discussion threads;
2) ask a question
based on the materials you have read; remember that if you
are having a problem understanding a concept or are confused
about how it is being applied in a particular situation
or case, there is at least a 50/50 chance that your fellow
students will have a same question or confusion;
3) start a new discussion
In addition to improving the course for everyone, including
the instructors, the level and quality of your participation
is a key part of the final grade that you will receive;
for further details, see (E) Course Assignments,
Exam and Overall Grading
d) that you own or have ready access to a good law dictionary. There is a problem, of course, in that law
dictionaries tend to be based on the laws of one particular
jurisdiction. To our knowledge, there is no accessible (i.e.
affordable) multi-jurisdictional law dictionary. The law
dictionary we would recommend is Black’s Law Dictionary (West Publishing Co.)
e) that you may be interested, at various moments in the course,
in delving into and researching
the subject of intellectual property law in more detail
than is possible in this 12 week summer course. .We hope
that you find it useful as a starting point. If you come
across further good intellectual property sites, we encourage
you to let your fellow students know of them on the class
(C ) Overview of the course and its fourteen modules
of the course will focus on copyright law, trade mark law,
passing off and the right of publicity. Part
Two examines patents, trade secrets, intellectual property
litigation and remedies; the last module in Part Two, taught
by Prof. W. Byrnes will look at some taxation issues that
arise with intellectual property transactions and uses.
provides an overall
introduction to the field of intellectual property.
Although we will not be able to examine all of the various
sub-disciplines or sub-fields of this diverse area of law,
it is a good idea --- right from the start of the
course--- to get an appreciation of the scope of the field,
its various components and some of the common
IP rights as territorial and international) and common
differences (registration in most jurisdictions is not
required for copyright protection, but it is for patent
With Module Two,
we start the first of three modules examining copyright; the focus will be on copyright law and doctrine of the
an occasional foray into U.S. copyright law. This module
will be concerned primarily with two issues:
a) what types of expressions/works/ products are protected
b) what are the essential requirements for “a work”
--- to use the copyright term-of- art --- to be protected
by copyright law?
After looking briefly at the question of duration/term
of copyright, Module
Three moves into the question of the rights of the owner
of copyright --- that is, the rights holder--- and what is infringement (the unauthorised use) of a copyright-protected work.
This topic raise a number of complex issues. We will
be looking at a couple of them, such as whether song B has,
in fact, been copied from Song A and how can this be if
the composer of song B says he has never listened to Song
A. No, this is not “The X-Files do Copyright”,
it is a matter of “subconscious copying.”
Four carries on with infringement and looks at possible
defences to copyright infringement and “permitted
acts” --- as they are called in the UK ---- in
relation to a copyright-protected work. You will find out
that the law does not treat copyright as it does other types
of personal property; for example, if you use, without permission,
a small portion of someone else’s copyright-protected
work, you may have NOT have committed an offence; it may
simply be a matter of “fair dealing” (or “fair
use” as it is called in the United States.)
The first part of Module
Five starts off with a short “once-over”
look at the international protection of IP with a brief
look at the Agreement
on Trade Related Aspects of Intellectual Property Rights
( or the “TRIPS”
agreement as it is commonly called.)
We also briefly consider the Berne
Convention, the most important
IP conventions dealing with the international ( essentially
reciprocal ) protection of copyright . The second part of
this module begins our examination of the first of the three
image rights that we will be looking at: trade
marks ( or, because our focus will be on U.S. law, perhaps
we should spell it trademark. )
concentrates on several key issues of
trademark law, including the statutory and doctrinal
requirements for the registration of a trademark --- what types of words or symbols
can be registered and what cannot
be--- the use of marks
for goods and services in trade,
and the different forms of trade mark infringement.
Seven concludes Part One by examining two other image-related
the “right of publicity”. Passing
off ( a.k.a. “palming off” or common-law “unfair
competition” or several other related phrases) can
be defined as a misrepresentation
in the course in the trade by which one trader damages the
goodwill of another, usually, by passing off his/her goods
or services as those of another trader.
In some aspects, it can be seen as similar to trade
Our final topic (and rather a fun one!) is the “right
of publicity” which is “the right of an individual,
especially a public figure or celebrity, to control commercial
value and exploitation of his name or picture or likeness
or to prevent others from unfairly
appropriating that value for their commercial benefit.” (Black’s)
Most countries of the world do not recognise a “right
of publicity” but it is recognised in most U.S. states…and
it is worth examining as one of the IP rights of lesser
importance than, for example, copyright and patents.
In Part Two of the course, attention will shift to the subject
of patents, with a relatively brief discussion of trade
the goal is to provide a sampling of patent law from around
the world, the focus will be upon patent law in the United
States, the United Kingdom, and Canada.
Eight will provide an introduction to patents.
Although the students will have had a brief exposure
to patents in the first module of Part One of the course,
the purpose of this module is provide a more detailed explanation
of patent rights around the world.
We will look at the policy considerations involved
in granting a legal monopoly to useful technology.
We will also discuss the trend around the world to
grant patents in new areas, such as life forms and business
will also be an analysis of the different parts of the patent,
such as the claims, and their legal significance.
In Module Nine,
we will move on to the requirements for patentability.
The general topics will be the novelty, non-obviousness,
and usefulness of a patented invention.
We will look at how those issues are evaluated by
nations around the world in determining whether to grant
patent protection to particular inventions.
We will also examine what constitutes “prior
art” to an invention – in other words, the technology
that came before the invention, and against which the invention
is compared to determine whether the invention is truly
will concentrate on the issue of patent infringement. We will examine comparing a patent claim to a thing accused
of infringement. We
will also look at specific acts that constitute infringement
around the world, such as making, using, selling, importing,
There will be a brief discussion of the defenses
to a charge of infringement, although that issue will have
been dealt with to a great extent in Module Two.
Finally, we will consider the practical realities
of litigating a patent infringement suit.
Eleven will deal with the remedies available for patent infringement.
The general categories of remedies to be discussed
will be lost profits, reasonable royalties, permanent and
preliminary injunctive relief, and punitive damages.
We will examine how different courts have calculated
heads of damages – the accountancy used, and the evidence
will also look at the requirements for equitable remedies,
such as injunctive relief, in those jurisdictions in which
such remedies are available.
Twelve will look at the issue of trade secrets.
There will be a discussion of how trade secrets are
established, how trade secret rights are violated, and the
remedies available in the case of such a violation.
We will examine private forms of trade secret protection,
such as non-disclosure agreements and post-employment non-competition
we will compare trade secrets to patent protection to analyze
when each is the better form of protection to utilize.
will look at intellectual asset management.
The focus will be upon licensing intellectual property
rights in and out for the purpose of maximizing the value
of an intellectual property portfolio.
We will compare different kinds of licenses and their
terms. We will
also discuss when and how a company should create intellectual
Fourteen will examine a number of issues related to intellectual property
and taxation. Full details will be available later in the
A couple of final words about approaching your study
of the course modules:
1) Each of the modules will
be composed of two sets of materials: the
and the text materials. It is recommended that you always
begin each module
by looking first at the study guide.
2) In addition to the “required
readings”, most of the text materials for each module
also contain “supplementary readings”, sometimes
as hypertext links and sometimes as actual supplementary
responsible for these “supplementary materials”
for examination purposes.
3) In the same vein, the instructor
may post or send out a news item or clipping related to
intellectual property issues; you will not
be responsible for these clippings for examination purposes.
(D) The Course Objectives
This course has the following main objectives:
a) to familiarise you with the basic concepts and themes of intellectual property law in both the
national and international arenas.
b) to canvass the central questions of substantive intellectual property law, especially copyright, trade
mark, and patent law, and introduce some of the more important
relating to the protection of intellectual property.
c) to assist you in
recognising when your company or organisation is (or
may be) facing an
intellectual property dispute and how to better understand
the stakes of such a dispute.
d) to appreciate
the increased role
of intellectual property in the contemporary
business and political environment.
e) to understand some of the taxation implications of intellectual property assets and their use.
(E) Course Assignments, Exam and Overall Grading
Here is how the course will be assessed and the grades awarded:
a) 25 % of the final
grade will be the “participation
grade”, derived from demonstrated preparation
for the 14 modules, submission of informed questions, comments
and responses to other students’ comments and questions;
of the final grade will be based on the module
assignments and their timely submission;
c) 50% of the final
grade will be based on the final
and substantial “ intervention” on the discussion board. The “intervention”
can take the form of a question, a response to the
question of the instructor or another student, or the starting
of a new line of questions or debate. You will get one
point each week for each such response. In addition,
you can earn up to 11
bonus points over the 12 weeks of the course for particularly
insightful and helpful comments, questions and responses.
The maximum participation mark is 25.
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