Intellectual Property Law





Tues/Thurs, 12:30-2:00 PM

110 South Hall


Fall, 2004

















Mr. Larry Downes


311 South Hall


Office Hours:  Thursdays, 3:00-5:00 or by appointment


Off-campus Office Phone:  (510) 526-9547






Intellectual Property Law




There is no ancient and abstract principle of right and wrong, which can safely be deduced as a guide to regulate the relations of railways and monopolies among our people, because railways and monopolies are products of forces unknown in former times.  The character of competition has changed, and the law must change to meet it, or collapse.


Brooks Adams, "Nature of Law:  Methods and Aims of Legal Education" (1906)



The Congress shall have power…to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.


U.S. Constitution, Article I, Section 8, Clause 8





Course Description


The intersection of law and technology has always been accident-prone.  The slow, evolutionary pace of law regularly collides with the ever-accelerating introduction of new technologies, which have a natural tendency to cause disruption in social, economic, and political relations. 


As the world hurtles toward an information-based economy, the tension between the two has reached a breaking point.


This course introduces one of today’s flashpoints for this difficult relationship:  the law of intellectual property.  Or perhaps, we might conclude, the “law” of “intellectual” “property,” for each element of what was once a sleepy legal backwater has become a topic of fierce debate, not all of it cordial, and not all of it involving legal academics.  Today, intellectual property law is the subject of demonstrations, acts of sabotage, mass civil disobedience, bitterly fought Supreme Court cases, intense lobbying, litigation, and legislating.  By and large it is digital technology that has ignited these political flames.


The course has two objectives: 


(1) Positivist – Introduce as objectively as possible the main features of the law of intellectual property, including trade secrets, copyrights, patents, trademarks, and licensing.  The particular emphasis in each of these areas will be the rapidly evolving (some would say mutating) jurisprudence of each of these sub-fields of IP law as they relate to digital technology.  The goal here will be to make you fluent in the language of IP law conversations, which will, I hope, serve you in your future professional and academic work.


(2) Normative – Explore some of the major issues that consume IP’s interested parties today, and try to reach some conclusion as to how these problems ought to be resolved, both in the macro (methodology, organizing principle) and micro sense (individual issues).



Course Textbook


The text for this course is Mark A. Lemley, Peter S. Menell, Robert P. Merges, and Pamela Samuelson, Software and Internet Law (2d ed. 2003 Aspen Publishers).  We will supplement the text with more detailed readings and with “current events” as they arise in the course of the semester. The book has its own website for updates, see, of which we will also make use.



Grades and Assignments


Grades will be based on a midterm exam and a final paper, as well as class participation and attendance:


  • Midterm exam – Short essay exam on the key concepts introduced during the first half of the course.  30% of grade.


§         Final paper - 50% of grade.  The final paper will give you the opportunity to explore a current problem in IP law using the tools provided during the class.  More details on the paper will be available in the second week of class.


§        Class Participation/Instructor Discretion – 20% of grade.





Other Resources


I encourage you to begin immediately to track developments in IP law that are directly relevant to class.  There are many excellent sources to do so, including:



The Wall Street Journal – You can register for daily headlines on technology stories. There is an IP law related story nearly every day.


The New York Times – Another source for daily news.


CNET – CNET’s daily newsletters also have IP law stories nearly every day.


Electronic Frontier Foundation – A vast collection of new materials and archives of law and technology issues, including IP problems.


The Center for Democracy and Policy – Another Law and Technology action group.


Lessig’s Blog – Professor Lessig of Stanford’s blog (with guest stars) covers a wide range of IP law problems related to digital technology.


Creative Commons – A non-profit corporation established to try easing many of the problems we will explore in class.


The Berkman Center for Internet and Society – Harvard Law School’s Internet Law Project


Stanford Law School Center for Internet and Society – Stanford University’s Internet Law Project






Rules of the Road


I expect the following basic rules are agreed among us:


  1. You and I will come to class and will not come late or leave early.  You will let me know by email or voicemail if you will not be in class or need to arrive late or leave early.


  1. You and I will read the material assigned for each class.  You don’t need to completely understand each reading but you need to be able to turn any confusion into a question.


  1. You and I will participate in class discussion.  It is the quality, not the quantity, of participation that matters to me.  I will not force people to speak in class, but if the same few people tend to be the only volunteers I expect you to accept conscription gracefully.


  1. You and I will respect each other by turning off our cell phones and pagers throughout class.  No exceptions.  We will also show respect if not love for each other in agreeing or disagreeing on content of our comments and opinions.


5.      You and I will respect each other by eating and drinking in class only if absolutely necessary and in a civilized way that our families would not be ashamed to watch.


6.      You and I will discuss any problems with the course or course materials as soon as we become aware of them.  Problems can be raised in class or in private as is most appropriate.


Detailed Syllabus



Date                                               Topic                                    Reading


Aug. 31            Introduction – Frontiers, Economics, and Other Frauds                See note.[1]


Sept. 2             The Eldred Decision                                                                    See note.[2]




PART I           TRADE SECRETS                                                                                                                           


Sept. 7             Secrecy and Disclosure                                                                       1-20


Sept. 9             Misappropriation and Reverse Engineering                                         20-31





Sept. 14           Copyright for Computer Software                                                     33-38


Sept. 16           Altai Test for Infringement                                                                 39-58


Sept. 21           Functional Elements and Protocols                                                     58-76


Sept. 23           Displays and User Interface                                                               76-94


Sept. 28           Copies and Derivative Works                                                          94-108


Sept. 30           Fair Use                                                                                        109-122


Oct. 5              Reverse Engineering                                                                      122-139



Oct. 7              Copyright Misuse                                                                          139-148





III.                   PATENT AND TRADEMARK


Oct. 12            Algorithms                                                                                    149-181


Oct. 14            Business Methods                                                                         181-188


Oct. 19            Examination and Validity                                                               188-213


Oct. 21            Infringement; Design Patent for Software                                       213-229                 

Oct. 26            Trademark for Programs                                                               229-236


Oct. 28            Compatibility, Standardization, Lockouts                                       236-260


Nov. 2             MID-TERM EXAM (In Class)                                                             




IV.                   LICENSING


Nov. 4             License vs. Sale                                                                            299-317


Nov. 9             Implications of License v. Sale                                                       317-324


Nov. 11           NO CLASS – VETERAN’S DAY                                                           


Nov. 16           Enforcement of “X”wrap Licenses                                                 325-355


Nov. 18           Self-Help and Warranties                                                              355-363


Nov. 23           Contract-IP Boundary Issues                                                        363-375




Nov. 30           Open Source Licensing and Consulting Agreements                       375-385

V.                    IP IN CYBERSPACE CURRENT EVENTS[3]


Dec. 2, 7, 9      Trademark/Domain Name Disputes:  Cybersquatting


                        Copyright Infringement in Cyberspace

                                                                                                                                                Vicarious Liability:  “Service” Providers


                        Copyright and Technical Protection Systems




[1] Over the first two weeks of classes, please skim the original first chapter of the text, available on the book’s website at  Depending on your background, some or all of the material in the first chapter will provide excellent background in the technology, the economics of networks, and/or the basis of IP law.


[2] Reading for this class is Eldred v. Ashcroft, 537 U.S. 186 (2003). Available in PDF form for free (Why free?  Why PDF?) at  I would like you to read the entire document, including the two dissenting opinions.  I realize this is a large assignment, and if your time is limited focus on the dissents by Justice Stevens and Justice Breyer.

[3] Tentative.  We may substitute some/all of these topics for more current issues depending on class interest and current events.