Assigned Reading

These Markup Abbreviations will be used throughout the semester to provide feedback on all your written work in this course.  Please read them through at your leisure before the second class to get an idea of the standards that will apply to your written work.

These Grading Criteria will be used for most of the writing assignments in this course.  You may wish to review them, as well as the writing hints that follow, before each writing project.

Please follow this procedure exactly for each assignment, so that your work can be graded on time and anonymously.

Week 1

Monday, January 14:  Coursebook (Licensing of Intellectual Property in the Digital Age, Second Edition), Preface and pages 3-27, On-Line Problem Supplement, Introductory Note and Problem 1.  If necessary, bone up on aspects of intellectual property that you don't recall or find fuzzy.  For this purpose you can use your notes and outlines from classes taken previously (if any) or the Nutshell book recommended (but not required) in the Course Description.  

Read Problem 1 for background and future work, and keep it in mind as we discuss the readings and the exercises for this first week.   Be sure to read it carefully, several times!  You will need a solid grasp of the facts, as we'll be working with them all semester.  We will finish up this problem and you'll submit answers after we've covered trademarks.

Class discussion will focus on strategic considerations in licensing, Exercises 1-4 on pages 21-22, a strategic comparison of the various fields of intellectual property outlined on pages 23-27, and relevant aspects of Problem 1.

Note: for the work this week, as for work in this course in general, you are welcome—and indeed encouraged—to cooperate in study groups, including a single group consisting of the class as a whole.  The only caveat is that you should all write your own papers independently.  And of course you will be on your own in solving problems when called upon in class.  Collaborating on "thinking through" problems, however, is strongly encouraged.  It's what many of you will do in practice, unless you work as true sole practitioners (a rapidly vanishing breed).

Wednesday, January 16 :  Jay Dratler, Jr., Licensing of Intellectual Property Ch. 1A.01 (Law Journal Press 1994 & Supps.), as distributed by e-mail; On-Line Problem Supplement, Exercise A: Problems in Licensing Scope and Strategy and Problem 1.

Put on your business and economic hats.  Then, based on your reading and business knowledge, experience and intuition (if any), work the problems in Exercise A, individually or (preferably) in study groups.

Be sure to make notes on your analysis and conclusions.  We will spend the entire class session on the problems.  Thirty percent of your grade will be based on your class performance, which includes your in-class problem solving.  If we have time, we will apply some of our learning to preliminary analysis of what each side in Problem 1 would desire and expect to receive.

Week 2

Monday, January 21:  Martin Luther King, Jr. Day: NO CLASS.

Wednesday, January 23:  Coursebook (Licensing of Intellectual Property in the Digital Age, Second Edition), pages 80-95.  As you prepare for class, work through the trademark distinctiveness problems on pages 94-95 (Note 4) and record your answers and the steps in your reasoning.

As you read the material from the casebook, consider the following questions.  What are the legal and practical differences: (1) between patents and copyrights; (2) between patents and trademarks, and (3) between copyrights and trademarks?  What things best fall under each of the three regimes?  Are there any gray areas or overlaps?  If so, what things fall into the gray or overlapping areas, and how do you decide which form of protection to use for them?  Suppose a client asked you these questions; how would you reply succinctly, simply and accurately?  

Week 3

Review your notes from the first week's discussions and reread (or skim) Jay Dratler, Jr., Licensing of Intellectual Property Ch. 1A.01 (Law Journal Press 1994 & Supps.), as distributed by e-mail and assigned for the first Wednesday.  Then work the problems at the end of Chapter 1, pages 18-22, which we will discuss in class.

For your first writing assignment, ignore the last paragraph of Problem 1, and consider instead the following message that you have received by e-mail from Contair's CEO:

"I'm meeting with my top management and investors next Monday, and we all are concerned about the company's future.  The proposed Bevi's deal looks good to me.  I see it as a way to keep the company going in its original business: making the world's most luxurious sports cars.  Some investors, however, are getting nervous.  I think they might like to sell the company or its assets."

"We've never done any licensing deals before, and I don't know much about trademarks.  Although I think I understand what a trademark license to Bevi's or a sale of the business would involve, I'm not sure I've covered all the bases, especially any legal or practical pitfalls we might encounter.  I'm also not sure what Bevi's will ask for or what's reasonable for us to give."

"So could you write me a short memo on these subjects?  Please give us your best advice on what Bevi's will ask for and where the licensing deal (if made) is likely to end up.  Also, compare the benefits and risks of the Bevi's licensing deal with a sale of the company or its assets and make a recommendation.  Please write a very short memo, no more than 600 words, to be used as a springboard for discussion in our meeting next Monday."

We will begin class by discussing this problem in depth.  You should come to class with a first draft of the memo (which may be a little overlength for later "pruning.")  You will not submit your paper today; instead, you will use what you gain from class discussion to rethink, revise and improve your first draft.  Please write a final draft of the requested memo and submit it as described in Submitting Your Papers, by 1:00 P.M. EDT on Monday, February 4.  Before beginning this assignment, you should review the Grading Criteria and Writing Hints and keep both in mind as you write.

Wednesday, January 30: Coursebook (Licensing of Intellectual Property in the Digital Age, Second Edition), all of Chapter 3 (Intellectual Property Audits).

Class discussion will focus entirely on intellectual property audits, which will be the subject of your next writing assignment.  Review the facts relating to Contair in Problem 1.  What would you do to perform an IP audit for Contair?  What personnel would you interview, what records would you review, what (if any) experts would you hire, and how would you organize your work?  What potential conflicts of interest might you find, and how would you avoid or reduce them?  What do you think the audit would cost and how long would it take?  What might you expect to find in an audit that you don't already know?  How valuable would that information be to Contair and in what ways?  to you as Contair's adviser?

How would you "sell" the audit to Contair's President and Board of Directors, i.e., how would you convince them that doing the audit, and paying for it, would be in Contair's best interest?  How would you answer questions, should any arise, about possible conflicts of interest, especially regarding your fee? 

Week 4

Monday, February 4:  Coursebook (Licensing of Intellectual Property in the Digital Age, Second Edition), pages 124-179: all of Chapter 4 (Negotiating the License).  Work Problem 4 (Nondisclosure Agreement and Evaluating Alternative Deals, esp. Parts 2 and 3) and the following problems:

1.  You represent A, a small start-up research boutique that focuses on veterinary biotechnology.  One of A’s scientists has made an important and startling research discovery.  Her new technology has broad application to both human and animal health care and might even lead to a cure for cancer.  The discoverer has described her results generally at scientific workshops but always withheld details and key steps.  Already five biotechnology firms and two major pharmaceutical manufacturers have made inquiries, asking for more information and seeking licenses of the new technology.

Preliminary search results suggest that the new technology is patentable and could enjoy a strong patent.  A has asked you for advice on IP protection and licensing.  Outline a general protection and licensing strategy and optional alternatives, along with the risks, advantages and disadvantages of each.

2.  B, an individual computer programmer, has developed a new algorithm for compressing images.  The algorithm makes it possible to record full-resolution images (such as photographs) using one-fourth the storage space that previously was possible.  With reduced file sizes, image transmission can be accomplished in one-fourth the time required previously, with no loss in image quality.  B has written a computer program to implement his algorithm; the program quickly compresses image files stored in most currently popular formats, including JPG and GIF.

Without making the algorithm or his computer code available to anyone, B has developed a Website that allows users to “test” his algorithm and program by uploading images for compression and decompressing the results.  B believes that it would be very difficult, if not impossible, for anyone to discover his algorithm by “reverse engineering,” i.e., by studying a compressed image file and comparing it to the original image file.

B has received inquiries from Microsoft, Google, Yahoo, Oracle and several smaller companies in the computer industry.  Advise B on a strategy for protecting his IP and licensing it for maximum revenue in the long term.

3.  C, an elderly garage inventor, has developed and improvement for lawn mowers.  His improvement prevents jamming, chipping and dulling of cutting blades.  It works so well that it allows lawn mowers to run though beds of gravel for up to ten minutes without reducing their cutting power.

Only three firms in the United States make lawn mowers.  C has sent notices of his discovery (without disclosing details) to each of them, and each has responded with enthusiastic interest.  What type of IP protection would you recommend for C?  What licensing term do you think would be most central to his licensing strategy, and what sort of strategy (with respect to that term and related terms) should C follow?

We will spend the class session discussing the foregoing problems and beginning discussion of Problem 4, Part 2.  (Problem 4 will also be the subject of written exercises, to be submitted later, after further discussion.  So be sure to study it carefully.)  

Wednesday, February 6:  Work Problem 2 (Convincing Contair to Conduct an IP Audit) and Problem 3 (Guiding Contair Through an Acquisition).  Problem 2 will be the subject of your next written assignment, while Problem 3 will be for class discussion only.  But we will discuss both problems in class, in order.  To the extent time permits, we will also introduce the subject of nondisclosure agreements (NDAs), focusing on the meaning of the Tridair case (pages 141-143) and the likely substance of an NDA in the factual context of the Problems at the end of Chapter 4 (Notes 1 through 8, pages 171-173).  At the end of the session, we will choose teams for mock negotiation of the points mentioned in Part 2 and 3 of Problem 4.  (Please remind me in case I forget.)

For your second writing assignment, prepare the memo in Problem 2: Convincing Contair to Conduct an IP Audit, and submit it as described in Submitting Your Papers, by 1:00 P.M. EDT on Monday, February 11.  Again, you should review the Grading Criteria and Writing Hints before beginning this assignment.  You also should review quickly your performance on the first assignment, so that you can focus on any relevant areas for improvement of your writing (particularly organization) identified in the first markup.  Please observe the 500-word length limit strictly, and proof your paper for typos, missing words and other mechanical errors before submitting it.

Week 5

Monday, February 11:  Coursebook (Licensing of Intellectual Property in the Digital Age, Second Edition), pages 181-240: all of Chapter 5 (Valuation of Intellectual Property), including Appendices A and B at the end.  Unless you have had recent courses or experience in accounting or economics, you should read Part I (Introduction) first quickly, then read Appendices A and B, then read Part I again slowly.

Also, please review your marked-up paper for Assignment 1, which should be returned by 9:00 a.m. on this day.  Make notes of any questions or difficulties you had in preparing it.

In class we will introduce the concept of valuing IP, discuss its importance in business, and discuss some key methods of valuing IP.  Then we will spend the remained of the time discussing your performance on Assignment 1.  Please come prepared to re-assess your work and receive constructive criticism.

Wednesday, February 13:  After completing our discussion of NDAs (if necessary), we will spend about fifteen minutes in mock negotiation of the points that you have identified in Part 2 of Problem 4.  In our your mock negotiations and the discussion to follow, we will try to "put it all together" and see how estimates of valuation intimately interact with price, scope and other terms of a licensing agreement.

To provide a concrete basis for discussing these issues, we will focus on two problems involving Contair.  The first will be the proposed license from Contair to GNN of Contair's production technology, which is discussed in Parts 1 and 2 of Problem 4.  Second, as time permits, we will discuss the alternatives for exploiting the VRS technology (license to GNN, or license to or joint venture with Assist), discussed in Parts 3 - 5 of Problem 4.  Be sure to commit the facts and key issues of all these problems to memory.

As you think about the problems and the art and science of valuation, consider the following questions.  In each proposed deal, what legal and business issues (if any) could be resolved without valuing the IP in question?   If you were Contair's CEO, would you want to discuss "price" terms (including valuation) first, or after only discussing scope and other legal terms?

Which would be the best way for negotiations to begin?  Which would be best from the standpoint of efficiency, i.e., not wasting executive time and lawyers' fees?  Which would be best from the standpoint of psychology, i.e., establishing an atmosphere of cooperation and trust?  Are the answers to these questions necessarily the same?

How do you deal with uncertainty in valuation?  For example, if a prospective business partner (GNN or Assist) proposes a result or method of valuation that would make the deal untenable for Contair, what do you do?  Do you: (1) walk out, (2) refute the result or method with detailed criticism and analysis, (3) propose an alternative method of valuation with a different result, (4) try to negotiate "nonprice" terms, such as scope, that would increase the value of the deal to Contair, (5) talk about other things for a while to establish better rapport, (6) terminate the discussions with a promise to "keep in touch," or (7) take some other approach?

Is this a decision to be made solely by you as counsel?  If not, what role should you play in it?  Might any ethical issues arise in this delicate preliminary stage of negotiations, in which both parties are trying to "take the measure" of each other, and, at the same time, determine whether each proposed deal has enough economic potential to make further discussion worth while?

For a brief written assignment (which will be weighted less than other assignments), please draft an NDA responsive to Part 1 of Problem 4 (of no more than 500 words), plus answers to Part 4 of Problem 4 (of no more than 200 words), for a total of no more than 700 words, and submit them as described in Submitting Your Papers, by 1:00 P.M. EDT on Monday, February 18.  In drafting the NDA, you can and should refer to forms that you find on the Web or in the library, including nondisclosure provisions in the sample agreements appended to my licensing treatise.  The world limit is deliberately short, in order to encourage you to think about what standard provisions are most important in the context of the current problem and to condense the standard terms to their essence.  You will not be able to include all the words and all the provisions in the standard forms, so try to make every word count.

Week 6

Monday, February 18:  Coursebook (Licensing of Intellectual Property in the Digital Age, Second Edition), (1) reread or skim Chapter 5, pages 181-193 (Valuation of Intellectual Property): Introduction and Hagelin article through (II)(2) (Industry Standards); (2) carefully reread Problem 4; (3) read Problem 5.

We will spend most of the time discussing how the money terms of the proposed license interact with its scope.  At the end of the session, we will reserve some time for discussing your memos on the IP audit.  That discussion will focus on persuasive writing, how business issues interact with legal issues in licensing, and the lawyer's role in advising (or not advising) clients on business matters.

Wednesday, February 20:    Coursebook (Licensing of Intellectual Property in the Digital Age, Second Edition), Chapter 6 (Copyright: Multimedia and Entertainment Licensing), pages 241-262, up to (but not including) "Notes and Questions."

As this assignment suggests, this will involve a "two track" learning experience.  Our first track will continue work on several aspects of the Contair problems that we have already read, applying concepts to which you already have been introduced.  At the same time, we will move ahead (slowly) in digesting new concepts of multimedia licensing and the "clearance" of copyright and other rights that could interfere with the use of multimedia works.  Although this experience may seem somewhat schizophrenic at times, it is not unlike the practice of law, in which you seldom, if ever, work on a single case at one time.

Your written assignment for this week will consist of Problem 5: a memo evaluating and comparing the proposed VRS deals with GNN and Assist and recommending which to pursue, at least initially.  However, in writing this memo, consider the following additional facts:

At your suggestion, Contair's CEO has hired a strategic business consultant to do some research and come up with some numbers.  The consultant has prepared the data and analysis presented in Part 1 of Problem 5, and you and the CEO have had a couple of days to digest them.  By telephone, the CEO has asked you to write a memo outlining the major benefits and risks of each deal, comparing the two, and recommending which to pursue, at least initially.  In that telephone conversation, the CEO explained that, although he's quite familiar with the auto industry and "not bad at numbers," he would like some help "putting together the big picture on paper for the Board."  He especially would like your advice on benefits and risks that involve legal matters, such as Assist's pending patent.

Week 7

Monday, February 25:  Coursebook (Licensing of Intellectual Property in the Digital Age, Second Edition), remainder of Chapter 6 (Copyright: Multimedia and Entertainment Licensing); Problem 6 and Exercise 2.

Before working these two problems, please review the definitions of "collective work," "compilation," "derivative work," "joint work," "performance," "publicly," and "work made for hire" in Section 101 of the Copyright Act of 1976, and then read the following additional sections through carefully, at least twice: Sections 103 and 201.  If you have taken Copyright Law or Introduction to Intellectual Property, please review your notes from that course relating to ownership of copyright.  If not, try to read up on those subjects in a treatise or the Nutshell book recommended (but not required) in the Course Description.   Then please work through these two problems, preferably in groups, taking careful notes on each step in your reasoning.  Although you will not be asked to submit your answers in writing, you may be called on to discuss these problems in class.

Our class will begin with an in-depth discussion of your performance on Assignment 3, the Nondisclosure Agreement (NDA) and related advice.  Since this is our first drafting exercise, we will focus on techniques and tips for drafting contracts, common pitfalls, and the differences between contract drafting the other forms of legal writing.  We will devote the rest of the class to multimedia licensing, copyright clearance, and the two new problems.

Wednesday, February 27:  Coursebook (Licensing of Intellectual Property in the Digital Age, Second Edition), Chapter 7 (Key Provisions in License Agreements and Special Types of License Agreements), up to, but not including, Section II(F) (Delivery of Tangible Property).

We will begin the class by completing our discussion of multimedia licensing, copyright clearance, and Problem 6 and Exercise 2 from Monday.  We will then spend the rest of the session discussing the following written exercise, which is based upon Part 3 of Problem 5:

Contair's CEO calls to inform you that he has set up a meeting with the chief of GNN's division that will be responsible for performing any deal with Contair.  Contair's CEO says that, at his request, the meeting will be very small and no lawyers will be present, so as "not to slow things down."  In fact, he expects only a few people to attend the meeting.  On Contair's side, he, Kuruma, and Contair's head of marketing and sales will be there; on GNN's side, GNN's division chief, a marketing executive, and a few R & D people will appear.  The purpose of the meeting will be to discuss GNN's proposed royalty terms, including the definition of "Net Sales" and the four proposals (a) through (d), as well as Contair's desire for a market-share-increase royalty.

Toward the end of your telephone conversation, Contair's CEO instructs you as follows:

"I know what I want us to get out of this deal, but I'm not sure I understand all the implications of what GNN has proposed.  Also, I'd like some help in presenting our views and our request for a market-share-increase royalty in the most persuasive way.  You're good with words, so why don't you write me a memo containing points to make with the folks from GNN?  Please write it as if the GNN people were the audience.  I won't actually read it aloud to the people from GNN at the meeting, but I'll circulate it to everyone from our side so we all know what the game plan is and can use it for our talking points. "

After further discussion, you understand that your memo should contain: (1) a simple and straightforward explanation of what, if anything, Contair dislikes or objects to on each point, (2) a reasonable counterproposal (or, in the case of the market share increase, proposal), complete with key snippets of language where appropriate, (3) cogent and persuasive, but very brief, arguments for Contair's proposals, and (4) a reasonable but advantageous"fallback" position for each of Contair's counterproposals or proposal that you think GNN is unlikely to accept.  As you sign off, the CEO reminds you, "Please keep it short and simple and don't sweat the details; just give me the high points that will directly affect Contair's 'bottom line.'"

As you think about the assignment you have been given, it occurs to you that this may be a good chance to make another subtle pitch for interest-based bargaining.  You recognize, however, that you cannot be overt in making that pitch, both because you might incur the CEO's wrath and because your memo has to be so short.

Week 8

Week 9

Monday, March 10:  Jay Dratler, Jr., Licensing of Intellectual Property Ch. 3.02 - 3.04, 3.06 (Law Journal Press 1994 & Supps.), as distributed by e-mail (not on-line version); work all problems in Exercise B.

This class will deal with the subject of implied licenses.  We will spend the entire session working the problems in Exercise B.  At the end of the session, we will review your performance on Assignment 5.

Wednesday, March12:  Coursebook (Licensing of Intellectual Property in the Digital Age, Second Edition), Chapter 8 (Contract Law Issues in Intellectual Property Licensing), up to (but not including), Part IV(C) (Licensing Agreement Prohibitions and Preemption), page 387.  In class, we will conduct a thorough review of your performance on Assignment 5, discussing the contract terms and other issues in Part 3 of Problem 5.  We will then discuss the reading material, including some principal cases, and, if time permits, the Uniform Electronic Transactions Act.

Your next graded assignment will involve the "Special UETA Problems" in Note 9 on pages 385-386.  You will present oral arguments based on these problems in teams of two students each.  To encourage teamwork, the members of each team will receive a single, common grade.  The oral arguments will take place after Spring Break, in class on Monday, March 24.  Here are the ground rules:

1.  Each team will argue one side of a single problem, but no team will know in advance which side of which problem it is assigned to argue.  Thus, each team will have to prepare both sides of each problem.  Only two of the four problems will be assigned for oral presentation, so each team will argue twice.

2.  Teams and individual advocates may use the blackboard in the course of their presentations but may not write material on the board in advance.  Teams may use any notes or written aids they wish for themselves, but the judge will accept nothing in writing.

3.  Teams will have complete discretion with regard to the order and manner of their presentations.  For example, any team may: (a) choose a single individual to present the entire argument; (b) split up each problem among the members by issue or otherwise; (c) have the entire team present as a "committee of the whole," or (d) have one individual present, with the other(s) held in "reserve" to be called on when needed.  The method of presentation is entirely up to each team.  The judge may remain silent or may ask questions.

4.  Each team will have a total of ten minutes to present its case and may reserve up to three of the ten minutes for rebuttal.  As is customary in court, the team representing the putative "plaintiff" will present first (Patty in Problem a, Polly (for a declaratory judgment of nonliability) in Problem b, Amazing.com (to recover payment) in Problem c, and Penelope (to rescind the transaction and to make any other claims) in Problem d).  For those problems that contain factual variations, limit your arguments to the following variations only:


(a)  No variation.


(b)  Assume variant (b): "Polly regularly uses the bank's website for 'on-line banking.'"


(c)  Assume the first variant only, i.e., that Amazing.com's website allowed Duncan to print out the order but nothing else.  Do not address the remaining variants, including the possibility that Duncan might be acting as a purchasing agent for a corporation.


(d)  Do not address the variant implied in the last question.

(Of course you might want to consider the excluded variants and questions in preparing your arguments, but do not consider them as part of the facts of your case.)

5.  Which team will argue which side of which problem will not be assigned until the oral argument begins.

Week 10

Monday, March 24:   Prepare for oral arguments on the UETA problems in the groups assigned, as described above. We will spend the entire class on your oral arguments.

Wednesday, March 26:   Coursebook (Licensing of Intellectual Property in the Digital Age, Second Edition), remainder of Chapter 8, Part IV(C) (Licensing Agreement Prohibitions and Preemption), page 387, to end.

In class today, we will discuss the reading material and its implication for practical licensing.  Then we will spend the rest of the class reviewing your oral arguments of Monday.

 
You also may wish to begin gathering forms for end-user software license agreements from the Web or from your own collections, to see what types of terms are commonly included in end-user software license agreements and how they are drafted.  (There is no harm in consulting forms, as long as you use them only as aids to your own thinking and original drafting; problems occur when lawyers use forms without reflecting on each term.)

For your sixth writing assignment (called "Assignment 7" because the oral arguments on the UETA Problems were Assignment 6), please draft an end-user software license agreement as described in Problem 10.  Your license agreement must total no more than 750 words, and the paragraph of advice must total no more than an additional 250 words, for a strict overall limit of 1000 words for the entire assignment.  Please submit the assignment as described in Submitting Your Papers, by 1:00 P.M. EST on Monday, March 31.  Again, you may wish to review the Grading Criteria and Writing Hints before beginning this assignment.  You should also review your performance on earlier assignments—particularly the third and fifth—so that you can focus on any relevant areas for improving your writing, as well as on nuances of contract drafting.  Please be sure to think about your "organizational matrix," to observe the length limits strictly, and to proof your paper for missing words before submitting it.

In completing this assignment, you are permitted and indeed encouraged to look at forms.  For example, you might obtain forms from the library, the Web, or software products that you use.  You will likely find, however, that the forms provide only a starting point for your drafting.  Among other things, you will have to: (1) pick the terms to include in your license and draft any not appearing in the forms; (2) modify or redraft them for this application and to meet the word limit; (3) put the terms together into a complete and coherent legal document with a good logical and business "flow"; and (4) insure consistency throughout the document in, inter alia, the use of legal terminology and the names used to describe the parties.  As you do all this, you should also consider that your agreement will be used with a wide variety of individual consumers.  What style, tone, and level of abstraction are appropriate for such an agreement?

Last but not least, you should consider (although not necessarily discuss) the six legal regimes that are or may be applicable to the license: (1) federal copyright law; (2) UETA; (3) Article 2 of the Uniform Commercial Code (which some state courts apply to software licenses, notwithstanding the intangible character of software); (4) the common law of any state whose law may be applicable (including the law of torts and contracts); (5) any special statutory provisions or strong public policies of any state whose law may be applicable; and (6) even foreign law for consumers residing abroad.

You also should consider the following questions: Which of these legal regimes is likely to be more favorable to Contair?  to the consumer?  What, if any, difference does it make that Contair will probably market its VRS-Home software in every state and possibly foreign countries?  that items (4) and (5), and to a minor extent UCC Article 2, may vary from state to state?  Is there a tradeoff between certainty and a favorable legal regime?  Or can Contair pick and choose the legal regime it wants, for example, by "opting in" or "opting out" of UETA and other general laws?  Can Contair "opt in" or "opt out" of federal copyright law?

Week 11

Monday, March 31:  Coursebook (Licensing of Intellectual Property in the Digital Age, Second Edition), Chapter 9 (Antitrust Issues in Licensing), Pages 425-472.

We will discuss this material in detail in class.  Be sure you understand the business circumstances in each case and why the Court ruled as it did.  We will spend the entire class session discussing the four cases and the distinction between "horizontal" and "vertical" relationships.

Are licensing relationships normally horizontal or vertical?  Can you tell without knowing something about the nature of the license?

Wednesday, April 2:   Jay Dratler, Jr., Licensing of Intellectual Property (Law Journal Press 1994 & Supps.): (1) Sections 5.01, 5.02[1], 5.02[2][a] (excluding subsection [iv] on “exit” agreements) (on-line version); (2) Chapter 5, Sections 5.02[2][b] (introduction) and [ii][A], [iii] (on-line version); (3) Chapter 5, Section 5.03 (e-mailed version) and Section 5.02[2][b][ii][C] (e-mailed version); and (4) Chapter 7, Section 7.06 (on-line version); work Exercise 3, preferably in groups.

We will spend the class session continuing our discussion of antitrust law and its application to licensing.  In the process, we will "set up" the problems.  That is, we will discuss the main points of approach to solving each of the problems in abstract and general terms, without actually answering the questions posed.

Your eighth and final assignment will involve written analysis of the four problems in Exercise 3.  You will have plenty of time to work on these exercises: the deadline for submitting your papers is 1:00 P.M. EST on Monday, April 28.  The word limit is 750 words for the entire assignment.   As usual, please submit your paper as described in Submitting Your Papers.  Also as usual, you may wish to review the Grading Criteria and Writing Hints before beginning this assignment.  You should also review your performance on earlier assignments so that you can focus on any relevant areas for improving your writing (particularly organization) identified in the markups.

For this assignment in particular, please be sure to think about organization, the "matrix" of rules and rules of thumb for antitrust analysis, the 1995 Licensing Guidelines and examples therein (which you will read for next Monday), and the practical effect of the behavior described on competition and business in the real world.  You may, if you wish, cite cases that we have studied or relevant sections or examples from the 1995 Licensing Guidelines.  You will not get credit for citing other materials, although looking at other materials may help you understand the problems and write good answers.  Finally, please observe the word limit strictly, and proof your paper for missing words before submitting it.

Week 12

Week 13

Monday, April 14:  Coursebook (Licensing of Intellectual Property in the Digital Age, Second Edition), Chapter 13 (Bankruptcy and Security Interests in Licensing), in its entirety.  Also, please work Problem 14, preferably in groups, for class discussion.

In class we will continue with our discussion of Chapter 10 and Problem 13, as necessary.  Then we will explore the issue of bankruptcy and protecting licensees against their licensors' bankruptcy.

Wednesday, April 16:  Coursebook (Licensing of Intellectual Property in the Digital Age, Second Edition), Chapter 12 (Tax Implications in Licensing Intellectual Property), pages 649-679.

In class we will continue with our discussion of Chapter 13 and Problem 14, as necessary.  Then we will begin a survey of the cases and tax issues presented in Chapter 12.

Week 14