Trademark & Branding Law syllabus (PRIOR YEAR SPRING 2016)

SYLLABUS (NOT CURRENT YEAR, THIS IS FROM SPRING 2016)
Professor Ira Steven Nathenson

St. Thomas University School of Law

Trademark & Branding Law, Spring 2016

Email: inathenson@stu.edu
Phone: 305-474-2454
Homepage: http://www.nathenson.org/
Course website: http://nathenson.org/courses/trademark/
Class time: Tue. & Thur. 2:00-3:15PM, room 215
Office hours: Tues. 8AM-10AM, Wed. 3:30-5:30PM, Thurs. 4:30-6:30PM, and by appointment.

ABOUT TRADEMARK & BRANDING LAW

This course qualifies for skills credits.

Brand names such as COCA-COLA, NIKE, and APPLE are much more than trademarks: they are icons of modern culture.  The core of brand-name law is trademark law, the law governing fair and unfair competition regarding the words and symbols used by businesses for their goods and services. But in an information age, the law of brand names touches far more than hornbook trademark law, including social media branding practices that recruit consumers as soldiers in the corporate branding machine; disruptive technology that makes brand enforcement difficult; and cultural norms that treat brand names as symbols of social status and commentary, such as “this watch is the Mercedes of watches,” or the parodic song “Barbie Girl.” Any attorney who advises businesses in connection with product naming, marketing, or digital outreach should therefore have a solid grounding in the law of trademarks and branding. Accordingly, this course covers major topics in domestic trademark law, such as subject-matter, distinctiveness, genericness, the likelihood of confusion test, dilution, cybersquatting, false advertising, and enforcement. It also pays close attention to the interplay of technology and law. Finally, the course extends beyond book learning to employ realistic practice exercises that tie lawyering skills to the readings. Examples may include developing a brand, brand-name clearance, preparing a trademark registration, and enforcement. A PDF copy of this syllabus may be found by using the link on the bottom of this page.

REQUIRED BOOKS

Casebooks and materials are all freely available on the internet.

  1. Course Website: Site at http://nathenson.org/courses/trademark/. This website is your source for assignments, project information, and other materials. Details on the course website are provided below.
  2. Casebook: Barton Beebe, Trademark Law: An Open-Source Casebook (v.2.0, July 20, 2015), available at http://tmcasebook.org/.
  3. Statute Book: Statutory Supplement: Selected Statutes & Treaties For James Boyle & Jennifer Jenkins, Intellectual Property: Law & The Information Society—Cases And Materials (2015), available at http://web.law.duke.edu/cspd/pdf/IPStatutes2015.pdf.

COURSE WEBSITE; ASSIGNMENTS

Assignments and course-related materials will be posted to the course website at http://www.nathenson.org/courses/trademark.  In addition, selected course-related announcements and materials may be sent to your official St. Thomas Law email account.

GRADING

As a skills course, your grade will be based on experiential projects (75% of grade) and class participation (25%).  For class participation, your score will look at a number of factors, including: regularity and quality of preparation and discussion; contributions as a discussion leader; and regular and timely class attendance.  There is no curve and there is no final examination.

PARTICIPATION & PROFESSIONALISM

Class attendance.

“Regular class attendance” means, among other things, that you are in your seat and ready to start work on time. I cannot emphasize enough how important it is for you to be in your seat and ready to start on time. Because we will be doing practice-oriented projects, class will often begin with important announcements and project guidance. If you are late, you will miss out on that information. Along similar lines, do not exit the classroom without good cause. If you leave class early without permission, you may be counted absent and may be denied reentry. All of these considerations may be factored into your class participation score.

Participation as a class member.

Every class member should be fully prepared to discuss the materials assigned for each class even if they are not a discussion leader. Class members should work during class with the professor and discussion leaders to discuss and explore the assigned materials. If you want, you can email me prior to class with supplemental materials you find that you think might be useful to share with the group. If we do not complete an assignment on one day, we will usually pick up on that assignment in the next class, so you should still be prepared to discuss those materials. Even when there is overlap, you should always prepare any new assigned materials as well. Your participation as a class member counts as part of your class participation score.

Participation as a discussion leader.

For every class, there will be two or three discussion leaders. Your participation as a discussion leader counts as part of your class participation score. [Jan. 30: a handout with further guidance can be found here.]

Each discussion leader should:

  • Present assigned materials, including statutes cited within the readings.
  • Lead group discussion.
  • Prepare and present discussion questions based on the assigned materials.
  • Call on members of the group to pose questions and to help answer questions.
  • As appropriate, bring in additional materials for the group. (Email me such materials ahead of time so that we can project them on screen.)

Further information about discussion leaders:

  • Discussion leaders will be assigned in advance. Names will be posted to the course website.
  • If a discussion leader is absent, late, or unprepared to present on an assigned day, their class participation score will be negatively impacted and they may be required to assume additional discussion leader duties later in the semester.

Non-plagiarism.

We will discuss matters regarding your individual projects in class, and you may discuss ideas and the law with your Trademark & Branding Law classmates. However, any work product you hand in must be your own work. In limited circumstances, I will allow you to work from and adapt forms and other pre-existing materials. I will let you know in writing when you may use pre-existing materials. Except in the limited circumstance when I permit you to use pre-existing materials, any work product you hand in must be written and created solely by you. Any violation of this policy will be dealt with harshly and may in addition constitute a violation of the St. Thomas Law Honor Code.

LEARNING METHODOLOGY: SKILLS+

This is a skills course, but the real goal is to treat it as much more than a skills course. It is intended to be one that integrates your learning—this means learning and not teaching—of trademark/branding doctrine, theory, practice skills, and professional values. So instead of learning doctrine in one class, ethics in another class, and skills in yet another class, we will use them together to better learn trademark/branding law and to become a better lawyer.

LEARNING OUTCOMES, METHODOLOGIES, AND ASSESSMENT

Learning outcomes refers to skills, concepts, and other matters you will learn in our course. Learning methodologies are the techniques we will use to learn these matters. As a skills course with multiple projects, assessment is primarily formative, i.e., feedback that occurs while the topic is still being studied. This contrasts heavily with traditional doctrinal courses where assessment is primarily summative, i.e., feedback that occurs at the end of a course.

 Learning Outcomes (the goal)

Learning Methodologies (the means)
Trademark & branding law and theory: Examples include distinctiveness, functionality, genericness, likelihood of confusion, dilution, and defenses such as fair use; transactional issues such as ownership, registration, assignment and licensing; and digital brand-name issues such as cybersquatting, UDRP domain name dispute resolution, keyword and metatag infringement. Reading, briefing, marking up, and discussing trademark cases and statutes, and group discussion.  Doctrine will also be learned through practice-oriented skills projects such as trademark clearance, drafting registration applications, enforcement actions, and transactional activities.  There is also a final examination.
Integrating law and theory with practice skills and professional values: Developing basic practitioner proficiency in tasks common to trademark/brand-name lawyering and tying professional values into practice. The skills projects are designed to integrate the teaching of the four components of lawyering: doctrine, theory, practice skills and professional values.  For information on the MacCrate Report’s recommendation for integrated teaching of these components, see here.

COMPUTERS, TABLETS, PHONES

For the past several years, laptops and electronic devices have been barred from use in my classes. However, this semester, as an experiment, such devices will be permitted for class-related purposes.   The reason devices will be permitted is because I want to incorporate online resources into our class discussions. However:

  • Class purposes only. Your use of electronic devices should be limited to class purposes only. Do not allow yourself to be distracted by eBay, email, Instagram, Facebook, or other shiny diversions: I teach from a tablet that I use as an electronic whiteboard, I walk around the entire classroom constantly, and I will call you out for misusing technology.
  • Quiet zone. Mute devices so that they do not make any sound. Focus on class discussion.
  • Note taking. I would strongly encourage you to take notes by hand even if you use a laptop because handwriting slows you down and forces you to develop your critical listening skills.
  • No recording. Although electronics are permitted, recording of the class by audio or video is prohibited unless approved in advance in writing by me, and will be permitted only for exceptional reasons or required accommodations.

Draft posted Jan. 1, 2016 (v. 0.9.1); draft revised Jan. 2, 2016 (v. 0.9.2); adding room (v. 0.9.3); Jan. 30, 2016 adding guidance link (v. 1.1)