Course Description

This course in licensing is unusual in seven respects.  Please consider these points carefully in deciding whether or not to enroll.


1. Capstone skills course.  For most intellectual property (IP) students, this course should be one of the last IP courses that you take in law school.  It builds upon, and often assumes, a rounded knowledge of IP as well as other legal disciplines.  Often it uses that knowledge as a springboard for discussing principles of business and economics relevant to the practice of IP and licensing law.

Because this course is given only every second year, not all students will be able to take it at the best possible time.  If you take this course early, you should understand that the learning curve will be steep and the workload substantial.  If you have any doubt about your ability to handle the course, please contact me during the first week of classes.

To a great extent, this course is also a "skills" course.  That does not mean that you will learn no substance.  On the contrary, you will be expected to assimilate and/or review a prodigious amount of IP, contract, antitrust and other relevant law, as well as related principles of business and economics.  Yet one of the pre-eminent goals of this course will be to set you on the path toward applying "book learning" in legal practice.

This practical focus means that EVERYTHING you write (and, in oral exercises) say matters in this course.  Grammar, spelling and punctuation count.  (In real life, you do not want to send a major client a letter filled with grammatical errors and typos.)  More important, you will be advised and graded on such things as clarity, brevity, effective communication, tact, and good client relations—all of which are much more important in real life than in typical law-school exams.  You will be rewarded for "hitting the nail on the head" and not "beating around the bush" in giving legal advice.  Putting all these "soft" factors togther with substance that you may be just in the process of learning will require a great deal of thought before you ever put pen to paper.

Some of you will find this broad focus intimidating, frustrating, and even annoying.  You may believe that the grading is "subjective."  But I hope you will learn (if you haven't already) that getting the legal substance right is only half a lawyer's job.  Substantively "accurate" advice may have little value if it is impractical or incomplete, fails to provide a balanced picture of risks and options, misleads the client, makes the client uneasy without solving her problem, or implies that the client is an idiot.

For those who have had little or no practice experience, this course will try to teach you how to avoid these common pitfalls.  Those of you who have practiced law or have had practical experience in business will probably have an inevitable advantage.  If you fall in that category, you may find there are few communication skills that I can teach you.  Yet experienced business persons often find it hard to make the transition from business to law, for there is a great gulf between making your own decisions and advising someone else how to do so.  Because many of you will have had practical business experience, the different "mindset" and approaches required of lawyers, as distinguished from engineers and business persons, will be a recurring theme in this course.


2.  Advanced course; prerequisites.  This is an advanced course.  Generally speaking, you should not take this course unless you have taken, or are planning to take concurrently, the basic course in intellectual property (Introduction to Intellectual Property), as well as one or more of the following: (1) the core course in patent law (Patent Law and Policy), (2) the core course in copyright law (Copyright Law), and/or (3) the core course in trademarks (Trademarks and Unfair Competition).  If you have not taken (and are not taking concurrently) one or more of these courses or their equivalents at other schools, please contact me before making a final decision whether or not to enroll in this course.


3.  Interdisciplinary course.  This course is interdisciplinary.  In addition to law, it touches on business, economics, and (to a limited extent) some rudimentary, practical features of engineering and scientific research.  You will not have to understand these fields (particularly technology) at anywhere near the depth or level of detail that someone practicing in them would require.  But you should strive to acquire a very general understanding of methods and modes of thinking, as might a lawyer or high-level business executive supervising others in these fields.

The difficulty is not so much learning new substance.  Most lawyers and law students are good at that.  The problem is more a matter of mind set.  Do you remember how hard it was to learn to "think like a lawyer" during your first year?  Unless you already have some acquaintance with these other fields, you may experience something like the same frustration in learning to think a bit like a businessperson, technology marketer, economist, and engineering or research executive.  The upside is that, if you plan to practice business law related to licensing or intellectual property, these skills will give you a competitive advantage over lawyers who do not have them.

Through our readings, classroom discussion, and exercises, I try to put everyone on the same, level playing field, despite inevitable differences in background and experience.  Yet students with strong backgrounds in business and economics may have an advantage that is difficult to overcome.

If you have had undergraduate or other courses or personal experience in these fields, you will undoubtedly draw on it.  If you have had no such training or experience, you will have to learn and grow in nonlegal fields in order to enjoy this course and succeed in it.  Some students have found this feature of the course liberating; others have found it frustrating. You should assess realistically your background, interests, and tolerance for learning in unfamiliar fields before enrolling in this course.


4.  Graded exercises.  There will be no final examination in this course.  Your grade will be based on two things: (1) your attendance and class performance (weighted 30%), and (2) your composite grade on a series of graded, written problems and exercises throughout the semester (weighted 70%).  (The relative weights of individual exercises will be announced as the semester proceeds.)

Although I try to preserve anonymity in grading the written exercises, inevitably I am not as successful in doing so as I would be in maintaining anonymity for a single written examination.  In a series of written exercises and class discussions, I may become familiar with your writing style, analytical "personality," or other peculiarities of your work that make maintaining anonymity practically impossible.  In addition, there is necessarily some subjectivity in assigning a performance grade.

Each of your graded excercises will receive a grade of 1, 2, or 3, with 1 being the highest.  (This is as fine a distinction as I believe I can fairly and reliably make.)  The majority of the grades will be 2s and 3s, particularly at the beginning of the course.  Therefore, some of you may find that you receive low grades on the first few papers.

If this happens to you, please don't despair.  The things taught in this course are taught in few other courses in law school, and you may find that your grades get better with time.  You should be aware, however, that you are "shooting at a moving target," as everyone else in the class is constantly improving, too.  Yet however the individual exercises are graded, the final grade for the course will be based upon the class "curve," not any abstract or absolute standard, and will be reasonable in light of the difficulty of the course and your performance in it.


5.  Practical writing skills.  An important subsidiary goal of this course is to improve your practical writing skills.  The exercises that you write will often be in the form of memoranda or letters to a client or an opposing party.  Some of the most important will involve drafting license agreements and explaining your choice of contractual language.  Your grade will be based in part on abstract substance, i.e., getting the right points in one form or another.  But it will also be based on all the other things that matter in real life: clarity, organization, completeness, brevity, simplicity, tone, "writing to your audience," coherence, internal consistency, style, citation form, grammar, spelling, and punctuation.

Your exercises will be marked up with regard to all these points.  When returned so marked up, your work may look as if someone had bled all over it.  Some students find this fact discouraging and frustrating; some find it a painful but valuable learning experience.  No one enjoys criticism, but you should be prepared for it and be prepared to grow from it.


6.  Preparation and class participation.  The nature of this course requires a high and sustained level of preparation for class.  Much if not most of your learning will occur in the classroom.  Some sessions will be typical Socratic discussions.  Others will be roundtable discussions of the type that might occur in a conference of lawyers working on a case, or in a meeting with a client's executive and/or engineering and research staff.  Some sessions may involve mock trials, mock negotiations, or "meetings" with potential business partners or legal adversaries of your "client."

All class sessions will require sustained and alert attention, willing participation, and diligent preparation.  This is not a course for "back benchers" or for students who like to coast all semester and go into high gear only two weeks before the term's end.  The upside is that, once you have submitted the final written exercise (typically in the penultimate or final week), you can turn your attention to examinations and papers in other courses.


7.  Alternate-year course. This course is offered only once every second year.  Ideally, you should take this course in your final year of law school, but you may not have the chance to do so.  Day students will have only one chance to take this course, in their second or third year, depending on when it is offered.

This course covers much of the law and some of the business and economics of licensing intellectual property.  It differs, however, from most law-school courses in de-emphasizing the Socratic method of teaching.  Instead, it uses a problem-solving approach that attempts to simulate—as much as one can in a classroom—what you might encounter in actual law practice.  The pedagogic approach is still based upon background readings and the case method, but the classroom experience will take as much from business-school methods as from traditional law-school methods of teaching.  In short, you will learn by doing, as you apply your developing skills and what you have learned from the reading to problems that simulate the "real world."

Intellectual property is a broad field, including patents, trade secrets, copyrights, semiconductor chip protection, trademarks, trade dress, Internet domain names, and rights of publicity.  As a result, licensing of intellectual property takes many different forms in different types of businesses.  Research and manufacturing businesses typically license technology, such as patents and trade secrets.  They also may license copyrights (for example, in computer programs) and protected semiconductor chip designs.  Multimedia businesses often involve simultaneous licensing of multiple copyrighted properties, and virtually every business has a trademark or trade name that might (or must) be licensed.

We will try to discuss most, if not all, major types of businesses and their licensing practices.  No single course, however, can cover all the nuances of law and practice affecting all of the industries that may involve licensing.  We will take as our paradigm a manufacturing business whose assets include "hard" technology (patentable inventions and trade secrets) as well as "soft" IP, including copyrights, trademarks and trade names.

The course begins with a brief survey of the business goals and risks of licensing and the strategy involved in determining the "scope" of a license.  The overview of intellectual property, which used to occupy much of the course's first two weeks, has been eliminated to make space for more discusison of licensing and better coordination of the readings and written exercises.  This is one more reason that you should be sure you have suffiicent background in IP before undertaking this course.

The course then covers practical procedures and skills to be used in serving clients' needs, including intellectual property audits, negotiating strategy, intellectual property valuation, and special problems of multimedia licensing.  Next it raises important legal issues in drafting and finalizing licenses, including general terms and conditions, ambiguities, contractual limitations, implied licensing, and contract enforcement.  Finally—to the extent time permits—it will cover areas of special concern, such as antitrust restrictions and bankruptcy.

The basic text for our course will be Licensing Intellectual Property in the Information Age (2d ed. Carolina Academic Press 2005) , by myself and five co-authors (Kenneth L. Port, Terence P. McElwee, Faye M. Hammersley, Charles R. McManis,, and Barbara A. Wrigley).  WE WILL BE USING THE SECOND EDITION OF THIS TEXT, WHICH IS A VERY DIFFERENT BOOK FROM THE FIRST EDITION.  Your assignments for each class will be posted on this Website.

In addition to the coursebook, you should have a compendmium of intellectual property statutes.  You may use one that you have bought for a course taken previously or concurrently.  My favorite is Paul Goldstein and Edmund W. Kitch, Unfair Competition, Trademark, Copyright and Patent: Selected Statutes and International Agreements (2007 ed., Foundation Press).  Yet there are several equivalent commercial publications.  The best of these books contains not only the federal patent, copyright and trademark statutes and the Uniform Trade Secrets Act—to which we will frequently refer—but also the black letter of the Restatement of Unfair Competition and important treaties and international agreements in the field of IP.

Although not required, there is another book that you may wish to purchase and read, preferably in the first week of two of the course.  This is the West Nutshell book on intellectual property, Miller and Davis, Intellectual Property—Patents, Trademarks, Copyrights in a Nutshell (West Nutshell Series, 4th ed. 2007).  If the bookstore does not have it, you can order this book on line from West or Amazon.com.  If you have any doubt about your familiarity with basic IP, you should read this book on the first or second Saturday of the semester.