Howard University School of Law

Licensing

LAW 775

Syllabus

Fall 2017

Prof. Steven D. Jamar

Houston Hall 402
202-806-8017
stevenjamar@gmail.com

Please note that during the semester this syllabus is subject to change to meet the students' needs as perceived by the professor during the semester.

last updated 18 April  2017

Where: 

When:  TTh 11:10 pm - 12:25 pm

Howard University Statement of ADA Procedures

Howard University is committed to providing an educational environment that is accessible to all students. In accordance with this policy, students in need of accommodations due to a disability should contact the HUSL Office of the Dean of Students(202-806-8006), for verification and determination of reasonable accommodations as soon as possible after admission to the Law School and at the beginning of each semester as needed.

Table of Contents

Course Overview

This course addresses the substantive law of licensing primarily in an intellectual property context.  It also teaches the substantive law of trade secrets. The three primary methods of instruction are readings, lecture, and lawyering skills exercises. The lawyering exercises relate to transactional lawyering skills of analyzing, negotiating, and drafting licensing agreements.  Ethical and social justice dimensions of licensing will also be addressed.

Class time will split between (1) learning legal doctrine relating to licensing and trade secrets, (2) introducing and practicing skills, and (3) reflecting on skills assignments after they are completed.

Most of the graded assignments are to be done outside of class. Because there is a relatively heavy load of outside assignments, the class will not meet twice each week every week.  The exact schedule with respect to which sessions will be omitted has not yet been set.  They will occur primarily after week 6.

The basic model of lawyering being followed in this course is plan, do, reflect. Not only is this a good habit to develop, but it is a skill in itself and is graded as such as part of the class participation component of the grade. The idea of lawyering as problem-solving is also an integral part of the course.

Required Books and Materials

Substantive Licensing & Trade Secret Law:  Gomulkiewicz, Nguyen, & Conway, Licensing Intellectual Property:  Law and Application (3rd edition Wolters Kluwer 2014) ISBN 9780735568495 (I recommend renting this book or buying it as inexpensively as possible; you will probably not want to keep it though it is good for this course)

Lawyering skills -- Stefan H. Krieger & Richard K. Neumann, Essential Lawyering Skills: Interviewing, Counseling, Negotiation, and Persuasive Fact Analysis (5th ed. Wolters Kluwer 2015) ISBN 9781454830986 (Any edition will do; I recommend buying used versions of this book to keep.)

Uniform Trade Secrets Act (State) (1985)
Defend Trade Secrets Act (Federal) (2016)

Professor Contact Information

Office:

402 Houston Hall

Phone:

202-806-8017

Email:

stevenjamar@gmail.com (I will typically respond to email within 24 hours.)

Office Hours:

The times listed below may change. I will post up-to-date general office hours online at http://sdjlaw.org

Mon.

10:30 - 1:00

Tues.

1:00 - 2:00

Thur.

1:00 - 2:00


Occasionally I will not be able to keep these office hours because of other commitments.

Some hours will be set aside for Licensing course students only.

If you need to see me at another time, please contact me so we can make an appointment.

I am often in my office at times not posted as office hours and during those times I am generally able to meet with students.

Grade Components

1.

Drafting 1

10 pts.

2.

Negotiation 1

10 pts.

3.

Cease & Desist Letter

10 pts.

4.

Negotiation 2

15 pts

5.

Drafting 2

15 pts.

6.

Trade Secrets Quiz

10 pts.

7.

LIcensing Quiz

10 pts.

8.

Course Reflective Journal

10 pts.

9.

Class Participation Generally

10 pts.

Course Requirements

Writing Formalities

1. All submitted writings are to be typed, single-spaced, with standard margins and fonts. You may use additional formatting for documents, e.g., lists, numbered paragraphs, tables, and so on, as appropriate to the assignment.

2. Cover page: Please note that each document (if only one is assigned) or set of documents (if more than one is assigned for that project) is to have a cover page which includes the following information in the upper left hand corner:

3.    Text for the memorandum about the assignment may begin on the cover page below the material noted immediately above.  However, all documents themselves are to start on a separate page.  For example, the reflective memo for the first assignment can start on the cover page, but the text of the drafting assignment proper is to start on a new page.

4.    For team assignments, each person is to hand in a separate copy of the assignment.  For such assignments the document itself should be the same for each member of the team, but the cover memo should be done independently.

1. Drafting 1 (10 pts)

You are to draft a trade secret license agreement based on information from a hypothetical client provided to you by the professor. A copy of the cover memo and the  license prepared by you is to be handed in as specified in the assignment -- generally one week after the assignment is delivered to you.
Be sure to comply with the writing formalities requirements.
The cover memo should explain what why you included provisions you included in general and should reflect on the challenges the assignment presented, particularly any unexpected ones. In explaining why provisions were included or left out, detailed explanations are not required for most ordinary provisions, but less standard provisions or revisions to standard provisions should have longer explanations.

2. Negotiation 1 (10 pts)

The first negotiation involves only two parties.  You are to negotiate with the other side and jointly draft an agreement reflecting the substance and key provisions of the agreement.  Additional guidance will be provided in the assignment packet and in classroom instruction.

You are to prepare one document: the license agreement.

You are to hand in the license agreement and a reflective memo concerning it. Be sure to comply with the writing formalities requirements.

3. Cease and Desist Letter (10 pts)

You represent a client who has grounds to believe someone is unlawfully using its trade secrets.  Write a cease and desist letter to the putative wrongdoer.

You are to prepare one document:  the cease and desist letter

You are to hand in the cease and desist letter and a reflective memo concerning it.  Be sure to comply with the writing formalities requirements.

4 & 5. Negotiation 2 and Drafting 2 (15 pts each)

This is the main assignment for the course.  You are to negotiate and draft a license agreement.  The emphasis should be on drafting and on crafting the particular language of the agreement.  Agreeing on the basic substance of the agreement should not be too difficult, but there are some matters for which some creativity may be required. Most of the negotiation will probably concern the specific language of the license agreement itself.

Be sure to allow plenty of time to negotiate and draft the agreement.  Most students seriously underestimate how hard it will be and how long it will take to reach an agreement and commit it to writing.

Prepare and turn in for this assignment:

1. A memo to the file in preparation for the negotiation.  This memorandum should discuss your initial planning for the negotiation with particular attention to matters of the needs and interests of the parties, the power aspects of the negotiation, and tactics you plan to employ at the start of the negotiations.

2. A memo to the file after the first round of negotiations in which you reflect on your preparation and on the process of the negotation.  What went as expected?  What did not?  What did you learn?  What are your plans for the next round of negotiation?

3. The license agreement.

4. Reflective memorandum on the drafting process.

5.  A cover memo that briefly considers in just a few paragraphs what you learned from this assignment.

Be sure to comply with the writing formalities requirements.

6. Trade Secrets Quiz (10 pts)

There will be an in-class quiz on trade secret law.

7. Licensing Quiz (10 pts)

There will be an in-class quiz on licensing law.

8. Course Reflective Journal (10 pts)

Throughout the course you should have been keeping a journal at least weekly that reflects on the substance of the material, the skills exercises and assignments, lawyering aspects of the course, and your responses to them.

Be sure to comply with the writing formalities requirements.

9. Class attendance and participation (10 pts)

Class participation is important because skills are not only introduced in class, but they are practiced and time is taken for the extremely important task of reflection on what is being learned. You will be graded on the quantity and quality of your participation, including the quality of your preparation for class exercises and class discussion.

The law school attendance policy will be enforced. If you miss 25% or more of the scheduled class sessions, starting from the first day of scheduled classes, you will receive an "F" for the course unless you formally withdraw from the course before the last day to drop a course as set by the law school academic calendar. Under the law school policy, attendance means being present at the start of class and throughout the class period. Tardy students and students who leave class early may be counted as absent.

SCHEDULE

Week 1 Introduction

Licensing IP: Gomulkiewiicz  pp. 1-22; 23-29 (CC license)

Skills: Kreiger pp. 3-51 (Lawyering & problem solving)

Long-term Assignment:  Reflective Journals (at least weekly entries; due the last week of class)

Weeks 2 Licensing–Substance

Licensing IP: Gomulkiewiicz  pp. 36-45 (Vernor v. Autodesk); 47-48 (SOS v. Payday);48-57 (MDY v. Blizzard; Blizzard v. Jung); 57-60 (Broadcast Music v CBS); 60-65 (Video Pipeline)

Exercises: Gomulkiewiicz  pp. 65-68 – especially Problems 1, 2, 6, and 11.

Skills: Kreiger pp. 51-77 (Communication Skills and Multicultural Lawyering)

Weeks 3 Licensing–Substance

Licensing IP: Gomulkiewiicz  Ch. 2, pp. 69-101

Week 4 Drafting 

Skills: Gomulkiewiicz  Ch. 3 Drafting Licenses, pp. 103-116

Exercise: Handout for drafting

Graded Assignment:  Drafting Assignment 1 (due in one week)

Weeks 5 Trade Secrets – UTSA and State Law

Uniform Trade Secrets Act (State) (1985)
Gomulkiewiicz Ch. 5; pp. 295-353 (Trade Secret substance and Trade Secret Licensing)

Hand in:  Drafting Assignment 1

Weeks 6 Negotiation – Interests, Power, Positions

Skills: Kreiger Chs. 23-25 pp. 301-355 (Interests, Power, Positions; Planning; Strategies (including BATNA))

Exercise: Handout for negotiation planning

Graded Assignment:  Negotiation Assignment 1 (due in two weeks)

Week 7 Trade Secrets – Federal Law

Defend Trade Secrets Act (Federal) (2016)

Exercise:  Contrast UTSA and Federal Trade Secret Law

Week 8 Negotiation  -- Style, Strategies, Tactics

Skills:  Krieger Chs. 26-28 pp. 355-393

Graded Assignment:  Cease and Desist Letter (due in 1 week)

Hand in:  Negotiation Assignment 1

Week 9 Other IP Licensing

Licensing IP:  Recommended:  Gomulkiewiicz Ch. pp.  119-181 (Trademarks); 181-227 (Right of Publicity); 353-391)(Copyrights)

Hand in:  Cease and Desist Letter

Graded Assignment:  Negotiation 2 and Drafting 2 (due in 3 weeks)

Week 10 Licensing in Business Contexts

Gomulkiewiicz  Ch. 9; pp. 393-486 (Software)(recommended:  pp. 531-585 (Multimedia))

Week 11 Trade Secrets Review and Quiz

Trade Secrets Quiz in class

Week 12 Licensing Review and Quiz

Licensing Quiz in class

Hand in:  Negotiation 2 and Drafting 2

Week 13 Non-IP Licensing

Week 14 Wrap up/Reflection

Hand in:  Reflective Journals