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Advanced Intellectual Property
Rutgers University, Newark School of Law
Kettle, John R.

Advanced IP

Lots of writing assignments with exam at the end.

Starts with the idea
Copyright, Trademark, Patent, Trade Secret, Right of Publicity
Defending fair use

17 USCA 107

First determine if the use falls under the fair use provisions of the statute.

Then:

Purpose and nature of the use
Nature of copyrighted work
Amount used
Effect of use on potential market of work (most heavily weighed)

Use for profit does not make it unfair (2 Live Crew)

Qualitative taking outweighs quantitative taking

Garnering a client

Conflicts Check – May be representing a party that has interests adverse or potentially adverse to a client.

Think about when relations are imputed.

(Money up front)3

Every licensed lawyer is required to handle pro bono (criminal) cases.

Why an engagement letter? Defines scope of representation and responsibilities of all parties. This should be amended (and likely re-countersigned) as the scope of the engagement changes.

Engagement Letter

Play to Play (L.L.C., S-Corp, Partnership?)
123 Washington Street
Anytown, NJ 07111
Joseph Cash
Wilma Smith – (not programmers and they have day jobs)

Based in Newark, satellite in NYC (Can a NJ Lawyer advise about NY formation?)

Need the names of the parties and all those who will be part of the business.
Ask for an initial fee for consultation, and offer to waive it if the client accepts your services.

WMFH Agreement will be between Play to Play and another party; there will need to be another conflicts check.

Be careful how much information you reveal during initial engagement otherwise you could be giving free advice.

So what is the nature of the business? Video game development and distribution (hottest part of entertainment business)

Business formation
Trademark
Copyright
Employment law
Vendor Agreements
Right of Publicity agreements

List the hourly rate
Retainer ($10-15,000)
Reimbursable expenses
Use of assistants

Work Made For Hire Agreement
(201(b), must fit into one of the 9 categories listed in 101)

First video game is Band of Killers (first form a rock band, there will be a battle of the bands, etc.) Joe and Wilma want to engage a programmer to build this. They would also like to include celebrities in this.

Contractor is company called:

(50 Employees)
Programmers’ Unlimited
123 Lotus Drive
Anytown, NJ 07111

Music, graphics, code, story, characters, all need to belong to Joseph and Wilma.
As employees, copyright, etc., would all vest in Joe and Wilma, but this is a separate firm.

Protection
Who came up with the idea?
Novel, concrete form, used by defendant, expectation of payment

Theories of recovery: Contract, implied contract, unjust enrichment, breach of confidentiality

No need to register, but you should within 90 days or prior to infringement in order to obtain statutory damages.

Place copyright notice in order to protect against innocent infringers, needed for all material produced before March 1, 1989 (Bern convention). Prior works still need it.

For WMFH 120 years from creation or 95 from publ

to the Company.

Name of company: Play to Play, L.L.C.

Interesting question: If everything is in the public domain, who would publish?

Another question: Why life plus 70? Where did the 70 come from? Kettle figures that there must be some sort of supporting economic analysis.

Kettle figures that there must be some sort of supporting economic analysis.

You can go to customs with your certificate of trademark registration and have items infringing upon your trademark impounded.

Be careful when registering a trademark; do not list items that you are not currently distributing. When you appear at customs, they will only impound items that exactly match what is on the certificate of registration.

A mention was made of why you would want to federally register a trademark.

Interesting distinction about why one may have a registered trademark or a plain TM on two different packages of snack foods made by the same company. If a trademark is in wide use, perhaps there is no need. Also, it may be that only potato chips were registered by Frito-Lay.

Next assignment: Programmers’ Unlimited says no work made for hire agreements. Now prepare a collaboration/joint authorship agreement between Play to Play and Programmers’ Unlimited, Inc.