International IP

Spring 2024

International IP Class Meeting Time: Mon, Tue, and Wed 10:30-11:50 am the week of April 22

Office Hours in WH 211C: Wed, April 24 1:30-4:00 pm (in person), and other days or times by appointment on Zoom or by phone between April 24-29

Course Description

This course examines international protection of intellectual property. We will discuss international treaties, trade agreement provisions, and dispute resolution systems relating to copyright and neighboring rights, patents, trademarks, and geographical indications. The course will also cover acquisition and enforcement of intellectual property rights in foreign markets.

Required Materials

International Intellectual Property Law and Policy (3d ed. forthcoming 2024) by Graeme Dinwoodie, Rochelle Dreyfuss, William Hennessy, Shira Perlmutter, and Graeme Austin; additional materials posted in the Files folder in Canvas or included in links below; and certain provisions of the Paris Convention, Berne Convention, TRIPS Agreement, and other treaties and trade agreements covering intellectual property law.

Reading Assignments

Overview and Introduction (Chapter 1)

1/8: Pages 1-30 of Chapter 1 and the World Intellectual Property Organization's webpage What is Intellectual Property?

International Law and Institutions (Chapter 2)

1/10: Pages 1-29 of Chapter 2

1/15: MLK holiday - no class

1/17: Pages 29-47

Trademark and Unfair Competition Law (Chapter 3); Geographical Indications Law (Chapter 4)

1/22: Pages 1-25 of Chapter 3

1/24: Pages 10-44

1/29: Class and office hours cancelled; I will schedule a makeup class later

1/31: Guest lecture by Kayla Jimenez - Review (1) USPTO's Trademark FAQs about the Madrid Protocol ("Basics" and "International Application" sections): https://www.uspto.gov/learning-and-resources/trademark-faqs#type-madrid-protocol_1630; (2) USPTO's Trademark Basics from "What is a trademark?" to "Common Problems": https://www.uspto.gov/trademarks/basics/what-trademark

2/5: Pages 44-84; Articles 4, 6, & 6quinquies of the Paris Convention

2/7: Pages 74-110; Paris Conv. Art. 6bis & TRIPS Art. 16

2/12: Pages 110-148; Paris Conv. Art. 10bis

2/14: Pages 149-179; TRIPS Art. 15-21 [Note: we will skip pages 180-205 Section 3.06]

2/19: Pages 206-242

2/21: Pages 235-277

2/21 at 10 pm: Essay answer to practice International Intellectual Property exam question due to me via email no later than 10 pm

2/26: Pages 267-277 of Chapter 3; Pages 1-18 of Chapter 4 (Geographical Indications)

2/28: Pages 18-34 of Chapter 4; feta tasting

3/4 and 3/6: No class due to spring break

Patent and Trade Secret Law (Chapter 5)

3/11: Pages 1-32 of Chapter 5; Paris Conv. Arts. 2, 4, 4bis, 4ter, 4quater, 5; TRIPS Arts. 1-4, 7-8, 27-34 [skips cases relating to patentability of living things and genetic material, and exceptions for experimental use of a patented invention]

3/13: Pages 66-77, 90-107 [skips (B) Investor State Dispute Settlement section]

3/18: Guest lecture by Matt Bresnahan on the Patent Cooperation Treaty: (1) Understanding the Basics of Patenting (posted in Files/Additional course materials folder on Canvas); (2) PCT-The International System, WIPO website; (3) PCT FAQs, WIPO website

3/20: Pages 102-139; Review and be prepared to discuss the hypo based on the 2005 Intl IP exam (posted in Files/Practice Exams & Hypos folder on Canvas)

3/25: Pages 1-24, 46-47, 56-61 of Chapter 6 [note: we will skip several pages of chapter 6]; TRIPS Articles 9-14; skim Berne Convention; review patent law hypo assigned on 3/20

3/27: Pages 11-24, 46-47, 56-61, 69-70, 94-99 of Chapter 6

4/1: USD holiday

4/3: Class cancelled - makeup on 4/24 at 10:30 am in our regular classroom

4/8: Guest lecture by Joe Reid about patent litigation at the U.S. International Trade Commission

4/10: Pages 69-70, 94-99, & 103-130 of Chapter 6; read these articles: (1) Isaiah Portiz, AI's Thorny Copyright Questions Create International Patchwork, Bloomberg (Dec. 27, 2023); (2) Lisa Oratz, Jordan Hameen, & Sean West, Human Authorship Requirement Continues to Pose Difficulties for AI-Generated Works (Feb. 29, 2024); (3) Carlo Scollo Lavizzari, Is AI's Copyright World Flat, or Will AI Flatten the Copyright World? IPWatchdog (Jan. 22, 2024); skim these materials: (1) Letter from Associate Register of Copyrights to Lindberg re Zarya of the Dawn (Feb. 23, 2023); (2) Memorandum Opinion in Thaler v. Perlmutter, No. CV 22-1564 (D.D.C. Aug. 18, 2023) (info about the case is here); (3) Opinion and Judgment in Li v. Liu (China: Beijing Internet Court Nov. 27, 2023) (info about the case is here); (3) Judgment and Opinion in Shanghai Character License Administrative Co v. AI Company (China: Guangzhou Internet Court Feb. 8, 2024) (info about the case is here). Note: you can find information about other litigation involving AI by searching GW's AI Litigation Database

Optional reading: Matt Sag, Copyright Safety for Generative AI, 61 Houston Law Review (forthcoming 2024), Matt Sag, Fairness and Fair Use in Generative AI, Fordham Law Review (forthcoming 2024), and posts by Matt Sag about copyright and AI on his website.

Private International Law (Chapter 9)

4/11-4/14 (before our 4/15 class): Makeup assignment for 1/29 cancelled class - listen to the oral argument held on 3/21/23 at the U.S. Supreme Court in Abitron v. Hetronic after you read the briefs filed by the parties: (1) Petitioner Abitron's Brief and (2) Respondent Hetronic's Brief.

Optional reading: (a) Abitron's Reply Brief, (b) U.S. Government's Brief, and (c) amicus briefs filed in the case after Abitron filed its brief on 12/19/22.

4/15: Pages 1-25 of Chapter 9; Skim the WTO case from 4/10 (I will lecture about it) and be prepared to discuss whether the training of AI-computer programs and/or use of them to create new works is copyright infringement or fair use.

4/17: Pages 5-49 of Chapter 9

Optional reading - blog posts about the Abitron decision: (1) Chon and Farley: https://blog.ericgoldman.org/archives/2023/07/trademark-extraterritoriality-abitron-v-hetronic-doesnt-go-the-distance-guest-blog-post.htm; (2) Dodge: https://tlblog.org/supreme-court-holds-that-trademark-statute-applies-only-to-domestic-conduct/; (3) Silberman and Dreyfuss: https://tlblog.org/what-is-a-domestic-application-of-the-lanham-act/; (4) Holbrook and Garg: https://tlblog.org/abitron-eliminates-circuit-tests-but-causes-more-confusion/

4/22 (Mon): Pages 49-68, 83, and 112-121 of Chapter 9

4/23 (Tue): Review materials for two hypos we will discuss in class: (1) Review the draft of the No FAKES Act proposed by Senator Chris Coons and other members of the U.S. Senate and be prepared to discuss whether this bill that aims to protect the voice and likeness of actors, singers, performers, and individuals from AI-generated replicas raises any international intellectual property law issues that Congress should consider. (2) Read the copyright hypo about fan fiction from the 2020 exam (posted in the Files/Practice Exams & Hypos folder on Canvas).

Optional reading/viewing: Professor Jennifer Rothman's written testimony and oral testimony before the House's Judiciary Subcommittee on Courts, Intellectual Property, and the Internet on Feb. 2, 2024 about the No FAKES Act and House's proposed No AI FRAUD Act bill, and whether Congress should adopt a new federal right of publicity; I also recommend her blog posts about federal and state bills targeting sexually explicit deepfakes and deceptive impersonation, and the information she provides about state laws protecting the rights of publicity and privacy on Rothman's Roadmap to the Right of Publicity blog; Cal. Civ. Code § 3344 and § 3344.1 (California's statutory right of publicity law).

4/23 at 10 pm: Essay answer to second practice International Intellectual Property exam question due to me via email no later than 10 pm on Tuesday evening

4/24 (Wed): Review answer to second practice exam.