Welcome to IPNTA.com, online home of Intellectual Property in the New Technological Age. This website supports professors and students interested in learning more about Intellectual Property in the New Technological Age, co-authored by Peter Menell, Mark Lemley, and Robert Merges.

2018 Editions Now Available

We are pleased to announce publication of Intellectual Property in the New Technological Age: 2018 (Volume I: Perspectives, Trade Secrets & Patents and Volume II: Copyrights, Trademarks & State IP Protections). It covers the Supreme Court's IP cases from the current Term and other recent developments (e.g., Star Athletica (useful article doctrine), Tam (disparaging marks), trends in IPRs and Federal Circuit review of PTAB cases, Helsinn v. Teva (interpreting the new prior art section of the AIA), secondary factors under section 103). The format and coverage follows IPNTA2016 and IPNTA2017. In addition, we will continue to offer Intellectual Property Statutes. The pricing for these volumes remains the same as the 2016 and 2017 editions: $25 for Volume I, $30 for Volume II, and $28 for IP Statutes.  During our first year of self-publishing, students saved over $1 million compared to traditional publisher pricing.

History of Intellectual Property in the New Technological Age

We began collaborating on this project in 1993. The first six editions of the book were published by Little, Brown & Co., which was acquired by Aspen Law & Business, which was acquired by Wolters Kluwer.  The book enjoyed steady growth as the intellectual property field developed.  Yet as advances in digital technology reshaped the world around us—from Internet search to online publishing—we, and our adopters and students, saw relatively little change in our publishing market. Prices continued to rise each year. Publishing schedules remained rigid. The publishing of our book seemed suspended in time. Most frustratingly, our students were paying over $250 for a book that generated just $15 in total royalties. This pattern conflicted with the logic of our book and scholarship. Advances in digital technology and competition should have been driving prices down, not up. Our frustration grew.

These issues came to a head in September 2014. When our publisher indicated that we missed the deadline for getting our book into the summer 2015 catalog, we dusted off our original publishing contract from December 1993. In checking the revision clause, we recognized that we held copyright in the work and retained the right to prepare derivative works.

Once we realized that we had the right to self-publish future editions, we faced a choice: stay with a leading publisher or take on the start-up costs and day-to-day operations of self-publishing. Peter had been writing about disintermediation in the media industries and strongly believed the time was ripe to branch out on our own. He posed a simple question: how would we view this choice ten years down the road? A quick review of self-publishing options indicated that we could substantially reduce the cost of our book while providing students with more convenient access—both digital versions and print-on-demand. We hoped to reduce the cost of IPNTA by 75-90%— depending on whether students choose an eBook or print book— from the 6th edition price point. We could also move to annual editions and take control over the production pipeline. This would ensure that our book was always current. Although striking out on our own involved some risk and additional tasks, failing to take this path would perpetuate an obsolete and unjustifiably costly burden on students at a time when they can ill afford it. We decided to take the plunge.

After reviewing options, we decided to begin our self-publishing experiment with Amazon. (We retain copyright ownership and hence flexibility to try other platforms as the marketplace evolves, an important lesson from various media markets.) Amazon’s publishing platform imposes size limits that required us to divide our book into two volumes: Volume I covering Philosophical Perspectives, Trade Secrets, and Patent Law; Volume II covering Copyright Law, Trademark Law, and Other State IP Law Protections. The volumes are available as eBooks and on-demand publishing on Amazon.com. This has the virtues of reducing the weight of what students need to carry around on a daily basis and creating more modular teaching options. Students can order the volumes at the Clause 8 Publishing eStore:

In addition, Chapters 1 and 2 are also available on SSRN so that students can sample the book before committing to the class.

Here is the full Table of Contents (with internal pagination):

Intellectual Property in the New Technological Age

Which brings us to what we hope is a New Publishing Age for all manner of academic publishing. In addition to releasing IPNTA2--- (we plan to designate new editions by publication year rather than volume number), we launched Clause 8 Publishing, a new publishing venture to “promote Progress” in intellectual property education (and possibly more). We plan to introduce a series of complementary products, enhancements, supplementary texts, multimedia, and other resources for adopters and students—at low cost and with easy accessibility. You will be able to learn about these resources at IPNTA.com and Clause8Publishing.com.

Peter has managed the transition of our book to a self-publishing model and will be taking the lead on establishing this platform. Those interested in adopting our book (or anything else about the project) should contact him at pmenell@law.berkeley.edu.

In retrospect, the subject matter covered by our original edition—philosophical perspectives on intangible resources, promoting progress in technology and creative expression, and competition policy—set us on the path to DIY/New Age publishing. Copyright law seeks to harness market forces to encourage creative expression and widespread dissemination. It builds bridges between creators and those who value their work. Digital technology and the Internet enhance these powerful forces by lowering the costs of creation and providing the virtual dissemination bridges. We feel fortunate to have liberated our book and very much look forward to working with law professors and students in building a more productive marketplace and community for IP teaching materials.

New Features of IPNTA

Rapid advances in digital and life sciences technology continue to spur the evolution of intellectual property law. As professors and practitioners in this field know all too well, Congress and the courts continue to develop intellectual property law and jurisprudence at a rapid pace. For that reason, we have significantly augmented and revised our text.

The 2018 Edition reflects the following principal developments:

Trade Secret Law: Congress passed the Defend Trade Secrets Act of 2016, one of the most momentous changes in the history of trade secret protection. The new law opens up the federal courts to trade secret cases, provides for ex parte seizures of misappropriated trade secrets in “extraordinary circumstances,” and establishes immunity for whistleblowers.

Patent Law: The past several years have witnessed some of the most significant developments in U.S. patent history—from the establishment of the new administrative review proceedings at the Patent Office to important shifts in patent-eligibility, claim indefiniteness, enhanced damages, and equitable remedies at the Supreme Court and means-plus-function claim interpretation and infringement doctrine at the Federal Circuit. We have restructured the patent chapter to illuminate these areas. We have also significantly expanded coverage of design patents in response to the growing importance of this form of protection.

  • Updated Section 102 discussion with time line illustrations explaining first-to-invent (1952 Act) and first-to-file (AIA) regimes; added note on corroboration of invention dates; update on Helsinn (Supreme Court grant of certiorari)

  • Updated Section 101 notes to reflect substantial new developments (Berkheimer, Aatrix, Vanda)

  • New section on Reassessing Patent Eligibility featuring Judge Lourie's concurrence in denial of rehearing en banc in Berkheimer.

  • Administrative Patent Review: Updated statistics on IPRs

  • Defenses and Remedies: Integrated materials relating to the Supreme Court’s 2017 laches and exhaustion decisions; note on lost foreign profits (WesternGeco LLC v. ION Geophysical Corp., S. Ct. (2018)) .

  • Design Patent: Updated note on apportioning damages to reflect remand of Samsung Electronics Co. v. Apple Inc.

Copyright Law: The Supreme Court issued important decisions addressing the useful article doctrine, the public performance right and the first sale doctrine. The past few years also witnessed important developments in the Online Service Provider safe harbor, fair use, and state protection for pre-1972 sound recordings. We have also integrated the digital copyright materials into a unified treatment of copyright law and substantially revamped the fair use section to reflect the broadening landscape of this important doctrine.

  • Originality: adds new problem based on the Statue of Liberty stamp

  • State and Common Law Copyrights: updates on state law protection (or lack thereof) for pre-1972 sound recordings and proposed music modernization legislation

  • integrates new cases into notes

  • Naruto v. David John Slater, 888 F.3d 418 (9th Cir. 2018) (Monkie selfie)

  • Rentmeester v. Nike, Inc., 883 F.3d 1111 (9th Cir. 2018) (Jordan "Jumpman" logo)

  • Williams v. Gaye, 885 F.3d 1150 (9th Cir. 2018) (Blurred Lines)

  • VMG Salsoul, LLC v. Ciccone, 824 F.3d 871, 880-87 (9th Cir. 2016) (rejecting the 6th Circuit’s statutory interpretation and holding the de minimis doctrine applies across the classes of copyrightable works)

  • Flo & Eddie, Inc. v. Sirius XM Radio, Inc., 229 So.3d 305 (Fla. S. Ct. 2017)

  • Oracle Corp. v. Google LLC, 886 F.3d 1179 (Fed. Cir. 2018)

  • Cariou v. Prince, 714 F.3d 694 (2d Cir. 2013) (illustrations added)

  • Mavrix Photographs, LLC v. LiveJournal, Inc., 853 F.3d 1020 (9th Cir. 2017) (DMCA "at the direction of the user")

  • Ventura Content, Ltd. v. Motherless, Inc., 885 F.3d 597 (9th Cir. 2018) (DMCA "at the direction of the user")

Trademark Law: We have integrated important cases on genericide, federal registrability of disparaging marks, merchandising rights, likelihood of confusion on the Internet, and remedies.

  • Infringement and Dilution: (Fun) new problem based on "The Lord of the Dings" surfboard repair shop, autobody shop, and dent repair franchise

  • integrates new developments and cases into notes

  • Play-Doh registering a mark for the smell of its dough

  • In re Brunetti, 877 F.3d 1330 (Fed. Cir. 2017) (holding that FUCT, while vulgar, is registrable)

  • San Diego Comic Convention v. Dan Farr Productions, 2017 WL 3732081 (S.D. Cal. Aug. 30, 2017) (concluding that there was no category of marks “generic ab initio” and that defendants had not proven that the term “comic-con” had become generic)

  • adidas Am. v. Skechers USA, 890 F.3d 747 (9th Cir. 2018) (injunctive relief)

  • Trader Joe’s Co. v. Hallatt, 835 F.3d 960 (9th Cir. 2016) (applying US trademark law against a Canadian infringer where effects were felt in the US)

Other State IP Protections: We have updated material on the right of publicity, an active and growing area. We have also reorganized the chapter and focused it on IP regimes.

  • Idea Submissions: added note on breach of implied contract claim not subject to Anti-SLAPP suit based on Jordan-Benel v. Universal City Studios, Inc., 859 F.3d 1184 (9th Cir. 2017)

  • Right of Publicity: added note addressing docudramas based on de Havilland v. FX Networks, 21 Cal. App. 5th 845, 230 Cal. Rptr. 3d 625 (Cal. Ct. App. 2018)

Complimentary Digital Examination Copies for Law Professors Considering IPNTA

As part of our new distribution model, we seek to vastly simplify access to our materials for professors and students. We also want to develop easy and direct lines of communication.

Digital Inspection Copy: Professors interested in downloading a digital examination copy can click on the links below to obtain the entirety of the Table of Contents, Chapter I, and Chapter II, and more limited versions of Chapters III –VI (every fifth page removed).

We are offering these incomplete versions to speed access through a publicly accessible website for the many professors who want to get a feel for the new edition in a way that will not risk full copies becoming freely available. Our goal is to create a viable market for fairly priced and easily (even if not freely) available copies of IPNTA.

Full Examination Copy: We appreciate that some professors considering our book will want to gain access to a full inspection copy and we are committed to making that available. We are pleased to provide a full complimentary examination digital copy of a nearly final draft of IPNTA2018 to law professors (full-time and adjunct) considering continuing with or adopting IPNTA2018 during the coming academic year. All that you need to do is go to our Examination Copy Registration page and fill out the form.  We will verify the information and send out the password for accessing the nearly final examination digital copy as soon as possible.

Full Digital Final Copy and Teacher’s Manual: We will, of course, provide a final digital copy of IPTNA and Teacher’s Manual to all professors who adopt IPNTA.  When you have made your decision, please register your interest on the Adoption Registration page. We will send you a password for access to a Final Copy Download. We plan to mail the Teacher's Manual to adopters later this summer.

Free Student Access to Early Chapters: The Front Matter, Chapter I, and Chapter II are available for download by your students through SSRN. In this way, they can test out the class for a few sessions without having to purchase the book.

Privacy Notice: We will not share the information you provide us on the registration forms to any third party. We will use that information solely to manage distribution of IPNTA and related teaching materials.

Anyone who has questions or concerns should feel free to contact Peter Menell at pmenell@law.berkeley.edu.

Peter S. Menell

Mark A. Lemley

Robert P. Merges