LibGuides: Intellectual Property Research Guide: U.S. IP In Depth Secondary Sources

📖 In-Depth IP Secondary Sources

For deeper analysis and practical guidance, this section features:

Leading treatises
Practitioner-oriented guides and handbooks
Law review articles and scholarly commentary

These sources are ideal for research papers, seminar projects, or gaining a nuanced understanding of complex IP issues.

Intellectual Property Counseling and Litigation by Lester Horwitz; Ethan Horwitz (Eds.)
This comprehensive practice guide to client counseling and dispute resolution is regularly updated to reflect the developing law. It describes the relationship between intellectual property law and other business law, international aspects of licensing and patent and trademark protection, and litigation procedure and strategy.
Milgrim on Licensing
This treatise combines forms and practical guidance, covering licensing transactions in every substantive area of intellectual property.

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Milgrim on Licensing offers a complete guide to the intellectual property transaction. The publication covers licensing in all substantive areas of intellectual property, and provides practical guidance on drafting individuals clauses and complete agreements. Coverage includes: * Licensing characteristics of patents, trade secrets, trademarks and copyrights * Licensing of multiple intellectual property * Antitrust considerations * Effects of NAFTA on licensing * Drafting and sample contract clauses

Intellectual Property: Valuation, exploitation, and infringement damages by Russell L. Parr
Call Number: 5th Stacks ; KF2979 .S647 2018

ISBN: 9781119356219

Publication Date: 2018-04-17

The thoroughly revised fifth edition of Intellectual Property offers an accessible guide that simplifies the process of attaching a dollar value to a wide variety of intellectual properties and intangible assets such as patents, trademarks, copyrights, trade secrets, favorable contracts, licenses, and joint ventures. Comprehensive in scope, the text explores the relationship between intellectual property and intangible assets and the business enterprise in which they are exploited. This new book contains the tools needed for evaluating the investment aspects of licensing and joint venture decisions and the author discusses the legal, tax, and accounting practices and procedures related to such arrangements. In addition, the book provides analytical models that can be used to determine reasonable royalty rates for licensing, equity splits in joint venture arrangements and intellectual property infringement damages. The updated fifth edition contains information on the most recent thinking in the field and includes real world examples that clearly illustrate theoretical topics. The book's hypothetical case studies cover many of the nuances of valuation, licensing, and damages analysis. Most of the chapters in this book have been revised to reflect the accelerating importance of intellectual property for value creation. The text is designed to make the information easier to access by defining four major sections: Introduction, Valuation, Exploitation, and Infringement Damages. In today's marketplace 85% of the value of major corporations of all types is comprised of intellectual property and intangible assets. The updated fifth edition addresses the fact that intellectual property has become a critical factor to business decision-making. Quantifying the value of intellectual property is fundamental to activities such as licensing, acquisition, joint ventures, divestitures, restructurings, and acquisitions
Intellectual Property and Technology Due Diligence by Lacy Kolo
Call Number: 5th Stacks ; KF2979 .K65 2018

ISBN: 9781641051248

Publication Date: 2021-01-21

Tailored toward IP attorneys, this volume guides the practitioner through the review of all aspects of intellectual property and technology, including assessing risks and benefits associated with the IP and determining their impacts on transactions and the businesses involved.
Intellectual Property in Consumer Electronics, Software and Technology Startups by Gerald B. Halt; John C. Donch; Amber R. Stiles; Fesnak Robert
Call Number: 5th Stacks ; KF2979 .I4318 2014

ISBN: 9781461479116

Publication Date: 2013-09-15

Geared toward startups and high tech companies, this book guides practitioners through the process of procuring, utilizing, and monetizing IP rights. Learn what to consider during the creative phases of a product's lifespan, from initial research and development through post-production.

U.S. IP Law Books published by the American Bar Association. Section of Intellectual Property Law

In-depth Secondary Sources on Copyright Law

Nimmer on Copyright by Melville B. Nimmer
Call Number: Online

Publication Date: Updated regularly.

Cited in more court opinions than any other treatise on the subject of U.S. copyright law, Nimmer on Copyright provides comprehensive insights into copyright protection in the digital age as well as exhaustive discussions of traditional issues. This definitive work on copyright law is a rich resource for the expert, as well as the practitioner just beginning to explore the arena. Nimmer on Copyright has appeal both to the domestic and international audience. Accompanying the emergence of global communications, U.S. copyright issues are being faced by foreign parties and lawyers, as protected works are easily being transmitted from foreign locales into this country. Nimmer on Copyright is an easy-to-follow treatise containing: * In-depth, comprehensive insights into copyright protection in the digital age as well as exhaustive discussions of traditional copyright issues * Extensive analysis covering specific media such as printed works; plays and motion pictures; music; artistic property; and digital technological developments such as copyright protection systems and the Internet * Interpretation of all provisions of the Copyright Act, and thorough coverage of the Digital Millennium Copyright Act * Outstanding litigation forms provided by top intellectual property litigators * State-of-the-art transactional forms with side-by-side commentary written by leading copyright law practitioners * Text of all relevant statutes, regulations, treaties and legislative histories.
Patry on Copyright by William F. Patry
Call Number: Online

Publication Date: Updated regularly.

This multi-volume work is a one-stop shop for the law related to copyright. Patry on Copyright provides an encyclopedic analysis of copyright, placing court opinions and statutes in their real-world context. This treatise is frequently cited as an authority on copyright by state and federal courts across the country, including the U.S. Supreme Court. In addition to enumerating a complete legislative and statutory history for relevant provisions, on pertinent litigation issues, a circuit-by-circuit breakdown is provided. The extensive discussion of remedial, jurisdictional, choice of law, and international issues is unparalleled in other legal work. This database contains:

Over 5,500 pages of analysis providing you with the largest multi-volume treatise on copyright ever published.
Comprehensive coverage of U.S. copyright law, including the latest court decisions, relevant statutes, regulations, treaties and legislative histories.
Sandra Day O'Connor's foreword discussing a number of copyright decisions, including Harper & Row, where she cited author's work.
Patry on Fair Use by William F. Patry
Call Number: Online

Publication Date: Updated regularly

The author provides an encyclopedic analysis of copyright, placing court opinions and statutes in their real-world context. In addition to enumerating a complete legislative and statutory history for relevant provisions, on pertinent litigation issues, a circuit-by-circuit breakdown is provided. The extensive discussion of remedial, jurisdictional, choice of law, and international issues is unparalleled in other legal work.
Lindey on Entertainment, Publishing and the Arts by Alexander Lindey and Michael Landau
Call Number: Online

Lindey on Entertainment, Publishing, and the Arts, 3d, updated two times yearly, provides expert coverage of entertainment law, mass communications, and the arts. Includes state-of-the-art forms and detailed guidance for drafting agreements.

Author(s): Michael Landau, Alexander Lindey
Latest Developments:
Updated section discussing several new cases concerning proof of infringement. Among the cases includes Sony Music Entertainment v. Cox Communications, Inc. The court in Sony, decided the issue was a matter for the jury where evidence was presented that alleged the internet service provider knew of specific copyright infringement occurring on its network yet continued to provide services. (see § 7:32)
New section discussing the Rogers exception after Jack Daniel's - Vans, Inc. v. MSCF Product Studio, Inc. This new section describes the eight-factor test to assess the likelihood of confusion, factors for when the Landham Act should not apply to artistic works, and first amendment issues concerning parodies of trademarks. The detailed discussion of Vans provided by the author concludes with the author's opinion on whether the Supreme Court will take the likely appeal. (see § 11:12)
New section discussing Lindke v. Freed, where the Supreme Court set the standard for determining whether a social media site is private or official speech. The standard provides factors to consider when determining if a public official engaged in a state action when they prevent comments on their social media page. (see § 15:39)
Legal Notices

In-depth Secondary Sources on Trade Dress & Unfair Competition

Callmann on Unfair Competition, Trademarks, and Monopolies by Louis Altman and Malla Pollack
Call Number: Research Alcove KF 1609 .C33

ISBN: 9780420992000

Publication Date: Regularly updated.
Legal Publication: Callmann Coverage
Available: In the library research alcove and on Westlaw (UC Law SF students, faculty, and staff only).
Callmann on Unfair Competition, Trademarks, and Monopolies provides a comprehensive analysis of the law of unfair competition as it relates to:
1. Core Topics: Trademarks, Trade Secrets, and Monopolies
The analysis covers the law of unfair competition as it relates to:
Trademarks (registrability and infringement)
Passing-off
Trade secrets
Misappropriations
Price discrimination
Predatory pricing
Monopolies
And more
2. Other Areas of Coverage
Coverage also includes suggestions for protection against unfair competition related to the acquisition, transfer, and abandonment of rights in a mark. Other topics include:
Government and business competition
Interference with a competitor's contractual rights and bargaining possibilities
Interference by trade boycott and marketing restrictions
Unlawful exploitation of a competitor's effort
Confusing similarity
Patent misuse
Covenants not to compete
And more
Trade Dress: Evolution, strategy, and practice by Darius C. Gambino; William L. Bartow
Call Number: 5th Stacks ; KF3180 .G36 2013

ISBN: 9780199840663

Publication Date: 2012-11-09

In Trade Dress, Darius Gambino and William Bartow analyze the evolution of trade dress, its major types, and efforts at enforcement in the federal courts, while providing practical suggestions on how best to utilize trade dress rights in protecting a client's intellectual property.
U.S. Trade Dress Law: A Primer for the New Millennium by Glenn Mitchel, et. al, eds.
ISBN: 9780892046487

Publication Date: 2002

Contents
Historical development of trade dress law in the United States -- Inherent distinctiveness -- Secondary meaning -- Functionality -- Likelihood of confusion -- Dilution -- Protection of single colors and other nontraditional trademarks -- Other approaches to protection of trade dress.
McCarthy on Copyright and Unfair Competition by J. Thomas McCarthy
Call Number: 4th Floor Research Alcove ; KF3180 .M2922

Publication Date: Regularly updated.

More Lexis Treatises on Unfair Competition
Includes:
Business Torts and Unfair Competition Handbook
California Antitrust and Unfair Competition Law, Revised Edition

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California Business Litigation
California Business Litigation (CEB)
California Intellectual Property Laws
California White Collar Crime and Business Litigation
False Advertising and the Lanham Act
Intellectual Property Law: Commercial, Creative, and Industrial Property
Matthew Bender Practice Guide: California Unfair Competition and Business Torts
North Carolina Unfair Business Practice
Patent Law Perspectives
Trademark and Unfair Competition Deskbook
Trademark and Unfair Competition Law: Cases and Materials (CAP)
White, New York Business Entities
Wilcox, California Employment Law
More Westlaw Treatises on Unfair Competition
Includes:
Callmann on Unfair Competition, Trademarks and Monopolies (4th Edition)
Federal Unfair Competition: Lanham Act 43(a)

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McCarthy on Trademarks & Unfair Competition
Unfair Competition and the ITC

In-depth Secondary Sources on Patent Law

Chisum on Patents by Donald S. Chisum
Call Number: Online

ISBN: 9780820515250

Publication Date: 1978-01-01

This comprehensive treatise examines the principles and tenets of patent law. This link takes you to the treatise on Lexis+. Access on Lexis+ is restricted to UC Law SF community members. The treatise is available in print in the Research Alcove in the library.
Moy's Walker on Patents by Carl R. Moy, et al.
Call Number: KF3114 .M69 2003

A seven volume treatise on Patent Law, this is available in the library Research Alcove and on Westlaw.
Patent Law Fundamentals by John Gladstone Mills, et al.
This practice guide provides in-depth information on current patent law. It is continuously updated. It is available on Westlaw for those with login credentials (UC Law SF students, faculty, and staff only).
Patent Law Coverage
> Patent Law Perspectives: In-Depth Coverage
> Guidance on Patent Law and Practice
in-depth information on current patent law and practice. This title offers guidance on how-to:
Research any patent issue and formulate strategies
Prepare a patent application, with an emphasis on claim drafting
Prosecute an application before the Patent and Trademark Office
Understand interference proceedings in the PTO
Identify the differences in patent law between the U.S. and other countries
> Features of this Publication
Features of this publication include:
Synopses of recent decisions by the PTO's Board of Patent Appeals and Interferences and the U.S. Court of Appeals for the Federal Circuit
Analysis of changes in the rules of practice before the PTO
Coverage of U.S. government patents and government-contracted inventions
In-depth discussion of international patent law
Summary of other areas of intellectual property
A table of cases and table of statutes
> Latest Developments
New features and recent developments include:
New USPTO post grant procedures and initiatives for Director Review (DR) including: 1. Expanding the process to permit parties to request DR of PTAB decisions on institution in AIA proceedings; 2. Providing updated guidance as to what types of issues the Director will consider in DR, with additional guidance on, such as the initiation of DR at the sole discretion of the Director (sua sponte DR), remands to PTAB for further proceedings, and sanction authority of the Director; 3. Providing the Director the option to delegate review to a new independent panel called the Delegated Rehearing Panel (DRP); and 4. Creating a new Appeals Review Panel (ARP), which may be convened by the Director sua sponte, to review PTAB ex parte, reexamination, or reissue appeal decisions. § 15B:3.10.I
New Discussion of the Replacement of the PTAB Precedential Opinion Panel (POP) with the Director Review (DR) and Appeals Review Panel (APR). § 15B:6.10
New discussion of the Motions to Amend (MTA) program and the Rules of Practice to Allocate the Burdens of Persuasion on Motions to Amend in Trial Proceedings Before the Patent Trial and Appeal Board. § 15B:25
New treatment of the U.S. Supreme Court's decision in United States v. Smith holding that the Venue, Vicinage, & Double Jeopardy clauses of the U.S. Constitution do not prevent the retrial in the proper venue of a trade secret misappropriation case reversed on appeal for improper venue. § 4:22.40
New treatment of the U.S. Supreme Court's decision in Abitron Austria GmbH v. Hetronic International, Inc. holding that the owner of a U.S. trademark may only recover damages for the unauthorized domestic use in commerce of that mark. § 5:119
This release also includes new treatments of relevant cases from the U.S. Court of Appeals for the Federal Circuit as well as discussion of related Circuit Court and District Court decisions, including cases decided in 2022 and 2023. This release also discusses the recent case of Thaler v. Perlmutter, decided on August 18, 2023, holding that copyright protection is not available under the U.S. Copyright Statute for works generated or created by Artificial Intelligence (AI); and this decision concerning the protection of AI generated works will have no doubt far reaching effects on the ownership of artistic works, including perhaps the "writers' strike" in the Hollywood movie industry.

Manual of Patent Examining Procedure
The U.S. Patent and Trademark Office publishes the Manual for attorneys, agents, and patent examiners. It compiles and explains all of the laws and regulations that the USPTO follows when examining patent applications.
Patent Law: A Primer and Overview of Emerging Issues
This 2017 report by the Congressional Research Service summarizes the current state of patent law in light of recent Supreme Court decisions, and it describes several areas in which the law is likely to continue to develop at a rapid pace.
Patents and Prescription Drug Importation
This 2016 Congressional Research Service Report discusses the exhaustion doctrine in the context of bills intended to allow parallel importation or re-importation of medicines into the U.S.