Walter H. & Dorothy B.Diamond International Taxation Program

Law of Intellectual Property (3 cr. Summer only) : IP 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) and Professor Alan Story (Kent Law School).

Welcome to International Property Law (LWLLM 108), a course being taught exclusively for the Law School LLM on Taxation. The two course instructors are George Summerfield, an attorney with the firm of Stadheim & Grear in Chicago, Illinois, U.S.A., and specializing in intellectual property litigation, and Alan Story who teaches intellectual property law at Kent Law School in Canterbury, Kent, U.K. .(Bios). Alan will be teaching Part One and George teaching Part Two.

A complimentary document, the Course Calendar, gives the week-by-week schedule for Part One and the Overall Course; the detailed schedule of modules for Part Two will be available later.

This two-part course is comprised of fourteen modules 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.

The course will commence on Monday, 11 June and will end on Friday, 7 Sept.

After six weeks (that is, when Part One is completed), there will be a one-week mid-course break starting on Saturday 21 July. Part Two will commence on Monday , 30 July and continue for six weeks. The final examination in the course will be held during the week of 10-14 Sept.

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.

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

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 2000.”

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 trademark.”

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 Taxation. You 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. If you need further assistance with these skills, please contact Professor Byrnes at: wbyrnes@stu.edu

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 in Iowa:

“Class participation. My basic pedagogical philosophy is that ‘knowledge’
is the fruit of the effervescence of discussion and dialogue between people
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:

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;

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. To help you to do this, we have created a special link on the International IP course site entitled “researching IP link.” . 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 “discussion board.”

Part One 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.

Module One 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 themes ( IP rights as territorial and international) and common differences (registration in most jurisdictions is not required for copyright protection, but it is for patent protection.)

With Module Two, we start the first of three modules examining copyright; the focus will be on copyright law and doctrine of the United Kingdom…with an occasional foray into U.S. copyright law. This module will be concerned primarily with two issues:

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.”

Module 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. )

Module Six concentrates on several key issues of substantive U.S. 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.

Module Seven concludes Part One by examining two other image-related rights.

passing off and 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 mark infringement. 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 secrets. Although 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.

Module 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 models. There 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 inventive.

Module Ten 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, etc. 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.

Module 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 considered. We will also look at the requirements for equitable remedies, such as injunctive relief, in those jurisdictions in which such remedies are available.

Module 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 agreements. Finally, we will compare trade secrets to patent protection to analyze when each is the better form of protection to utilize.

Module Thirteen 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 assets.

Module Fourteen will examine a number of issues related to intellectual property and taxation. Full details will be available later in the course.

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 study guide 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 materials. You are not 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.

4) The other starting point for each module is the class “discussion board” and you should check in regularly as both a participant and reader.

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 procedural issues 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.

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;

b) 25% of the final grade will be based on the module assignments and their timely submission;

As explained above, your participation in the cyber classroom, through regular inputs on the discussion board, is a key part of this course…as it is in other course offered on the STU LLM in Taxation. While the instructors understand that all (or most) of you have other work and family-related responsibilities that require your attention, sometimes for long periods of time, we also appreciate that not joining in the discussion board is equivalent, in the regular classroom, to crouching low behind your desk or “hiding” behind a book. In neither the online nor regular classroom environment is this a good practice.

We therefore expect that in each of the 14 modules you will make one at least one

informed 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.

Again, as with other STU online courses, this course will have periodic assignments based on all or some of the modules in the two parts of the course. These assignments may take various forms: small multiple-choice tests; working through the answer to a hypothetical problem; a brief essay (one-two pages) on a point of law or a policy issue; an online research assignment. A total of 25 marks will be awarded for these module assignments.

The instructor will provide feedback and comments on your assignments. The process of receiving feedback can be improved if, when you think it appropriate or necessary, you add your own question(s) at the end of the assignments as to what area/issues you would particularly like feedback on.

It is important that the module assignments be submitted in a timely fashion, that is, by the pre-announced deadline. On the one hand, we are attempting to develop your knowledge and appreciation of intellectual property in a sequential fashion and want to ensure that the entire class is moving forward ---of course, not all at exactly the same pace --- but at least that all of us are moving. Submitting an assignment three weeks late prevents this. On the other hand, nothing gets an instructor into a “grumpier” mood than marking an assignment that is submitted three weeks late. Of course, work or family-related deadlines or assignment may, on occasion, mean that you have to submit an course assignment a few days late. The solution: if you are going to miss the submission deadline, please inform the instructor before that deadline.

The timing and type of these assignments will be clearly set down by the two instructors before they start their respective parts of the course.

The exam, to be written during the week of 10-14 September, will be a “take home” exam worth 50% of the final grade. Full details available later. Submitting your exams answer(s) by the deadline is especially important so that the course mark can be submitted promptly to the STU administration and so that you can receive your grades as promptly as possible.

George Summerfield

George Summerfield, J.D. (Wayne State University, Detroit, Michigan), B.A. (King’s College, Wilkes-Barre, Pennsylvania) is an attorney with the firm of Stadheim & Grear in Chicago, Illinois, where his primary area of practice is intellectual property litigation. From 1988-1991, George was a Staff Attorney with the Office of Unfair Import Investigations of the U.S. International Trade Commission in Washington, D.C., where he litigated matters involving unfair importation under 19 U.S.C. § 1337. After leaving the Commission to enter private practice, George spent a brief period of time with the Legal Department of the Romanian Patent and Trademark Office assisting in the preparation of Romania’s patent law. Since then, he has provided comments on draft intellectual property laws for numerous countries throughout Eastern Europe in association with the Central and Eastern European Law Initiative of the American Bar Association. He has lectured around the world on intellectual property matters.

Alan Story

Alan Story, LLB (Osgoode Hall Law School, York University, Toronto, Canada), and LLM (Cornell Law School, Ithaca, New York, U.S.A.) teaches Intellectual Property at the undergraduate and graduate levels at Kent Law School in Canterbury, Kent, UK. A Canadian, he was an investigative and political journalist in the 1980s with The Toronto Star in Nova Scotia and Toronto, Canada before making a career change a decade ago. Prior to joining Kent Law School in August 1999, Alan taught Intellectual Property, Information Technology Law, Property, and Trusts & Equity at the University of Hull Law School from 1995-98. His previous academic work on U.S. labour law, compensation for banned handguns, and Cuba’s expropriation of U.S. property has been published in the Berkeley Journal of Labor and Employment Law, the Modern Law Review and the Journal of Political Philosophy. His handguns article was awarded the Lord Wedderburn Prize (1999) as the best article by a younger legal scholar in the Modern Law Review in 1998. More recently he has written articles on who owns intellectual property rights to Princess Diana, on biopiracy, on copyright and economic questions arising from the UK Higher Education Copying Accord . He is now starting research for a book on the economics and politics of intellectual property.

Overview of “International Intellectual Property” and

(A) Introduction to International Intellectual Property Top

(C ) Overview of the course and its fourteen modules Top

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.

A couple of final words about approaching your study of the course modules:

George Summerfield

Alan Story