Boston University School of Law

In This Issue

Welcome from Dean Maureen A. O’Rourke

Boston University School of Law is home to a strong and vibrant intellectual property law community that includes experts in all three of the core fields of IP law: patent, copyright and trademark. Our IP faculty includes noted scholars Stacey Dogan, Wendy Gordon, Mike Meurer and me. Our faculty members publish internationally and appear as keynote speakers and presenters at conferences worldwide. In addition to our core IP faculty, other scholars at BU, such as Keith Hylton and Kevin Outterson, are writing on related issues, and we have a talented group of adjunct professors who are practitioners in IP law and bring a real-world perspective to our program.

IP Law Professors

Left to right: IP Law Professors Stacey Dogan, Wendy Gordon and Mike Meurer

This newsletter is designed to update you about the activities of our IP law community. You will learn about our scholarly activities, new course offerings, and the various ways in which our faculty members are engaged in IP issues. You will also read stories about BU Law alumni who have gone on to prominent careers in related fields.

On Sept. 30 and Oct. 1, BU Law will host the conference “Innovation and Patent Harmonization: Does One Size Fit All?” The conference will consider legal and empirical economics scholarship on patent harmonization and innovation, as well as legal practitioners’ experience in the field. Participants will explore the effect of harmonization both in countries with advanced intellectual property industries, like the U.S., and in those with developing IP industries, like China. I hope you will join us for the conference.

BU Law's IP program draws the globe’s brightest students, who eagerly engage in an exploration of intellectual property law issues. Accomplished scholars themselves, our graduates have published books and journal articles, received faculty appointments and pursued careers in private practice as IP specialists.

I hope this overview of our IP program will give you a sense of the dynamic intellectual property community at BU Law.

Maureen A. O’Rourke
Dean
Professor of Law
Michaels Faculty Research Scholar

Faculty News

Dogan concludes term as editor of leading journal

Professor Dogan

Professor Dogan

Professor of Law Stacey Dogan is wrapping up a three-year term as co-editor-in-chief of the Journal of the Copyright Society of the U.S.A., a leading source of articles on the latest developments in foreign and domestic copyright law.

During her tenure, Dogan and co-editor F. Jay Dougherty worked to enhance the stature of the journal among both academics and practitioners, with projects including a major feature issue on fair use. She and Dougherty also reached out to the international community, adding several international members to the Board of Editors and increasing the journal’s treatment of comparative and international copyright issues.

In the Classroom

Dogan is teaching Intellectual Property and the Internet this year, a seminar exploring ways in which the Internet has challenged intellectual property theory and law. The course will examine copyright and trademark issues, with an emphasis on the role and potential liabilities of intermediaries, such as YouTube, file-sharing services and online service providers.

Dogan also will teach Unfair Competition and Trademark Law this fall at the law school and will co-teach a course on research methodologies to undergraduates in the Boston University Honors College, a program for highly motivated and talented BU undergraduates. The latter course will introduce students to the scholarly process across a diverse set of disciplines; Dogan will focus on theoretical questions raised by the right of publicity.

Works in Progress

Dogan’s current projects include:

  • A paper on the economics of comparative advertising with Professor of Law Michael J. Meurer
  • An article exploring product design protection with Professor of Law Wendy J. Gordon
  • A chapter on the right of publicity to be included in an upcoming book titled Intellectual Property at the Edge: The Contested Contours of IP (edited by Rochelle C. Dreyfuss and Jane C. Ginsburg), to be published by Cambridge University Press

IP Speakers Series

Dogan continues to play a leading role in the Intellectual Property Speaker Series, which brings leading scholars and practitioners to BU Law to share their most recent research and insights with students and faculty. Dogan is helping to organize a slate of speakers for the coming academic year. See the calendar at the end of this newsletter for information about upcoming speakers.

Gordon introduces new course: Harms and Benefits

Professor Gordon

Professor Gordon

Professor of Law Wendy J. Gordon, who last spring received BU's highest faculty honor, the William Fairfield Warren Distinguished Professorship, will teach a new seminar this year. The seminar, called Harms and Benefits, will explore legal, philosophic and behavioral issues related to harms and benefits in areas such as torts, copyright and restitution.

“The common law has more commonly been interested in preventing harm whereas IP law is more interested in rewarding the creation of benefits,” said Gordon. “We’ll look at these patterns and ask, ‘What do they teach us about what we call intellectual property law today?’”

Works in Progress

Gordon has several works in progress, including:

  • An examination of foregone license fees and the extent to which those fees would make it difficult for a defendant to succeed under the fair use doctrine. Her analysis will build on her previous commentary on the issue and ensuing interpretations—and misinterpretations—of her theories on market failure and fair use. “Some people believe there should be no fair use at all when markets are possible. A lot of my work and other people’s work is to combat that misunderstanding. This piece grows out of that debate,” she said. She presented an early draft at a symposium on Justice Stephen G. Breyer’s "The Uneasy Case for Copyright,” held at George Washington University School of Law.
  • An exploration of the mirror relationship between copyright law and tort law, responding, in part, to commentators on her previous work that showed the parallels between copyright and negligence law. Gordon presented a working paper on the topic, titled "Copyright and Tort as Mirror Images: On Not Mistaking for the Right Hand What the Left Hand Is Doing," at the 2011 Works-in-Progress Intellectual Property Colloquium, hosted by BU Law in February.
  • An article, with fellow BU Law Professor Stacey Dogan, exploring the intersection where patent, copyright, trademark and the public domain come together—namely, those doctrines that determine how and whether copyright and trademark law can be used to forbid copying of designs that are useful or functional. Gordon made a presentation on the project to the Association of American Law Schools Section on Intellectual Property in January 2010, and Dogan and Gordon presented the project at the BU 2011 Works-in-Progress Intellectual Property Colloquium.

Academic Presentations

Gordon has spoken at a number of conferences, symposia and workshops over the past year, including events at American University, McGill University, University of Pennsylvania, University of Illinois, and George Washington University. Celebrating the Philip S. Beck Professorship, she also delivered a public lecture at BU, “Changing Views of Copyright Theory: One Scholar’s Evolution.”

In coming months she will participate in a symposium on "The New Private Law" at Harvard Law School and deliver a paper at UCLA.

Hylton completing new book on IP law

Professor Hylton

Professor Hylton

Professor of Law Keith N. Hylton is finishing work on a forthcoming book on intellectual property law titled Laws of Creation: Property Rights in the World of Ideas (with former BU Law School Dean Ronald A. Cass, to be published by Harvard University Press).

“The book surveys IP laws and states in a very simple way the economic case for IP and specifically responds to the prominent critiques of IP laws that have emerged in recent years,” said Hylton.

Antitrust Law Journal

Hylton has been named a contributing editor to the Antitrust Law Journal, a peer-reviewed law review published three times each year by the American Bar Association Section of Antitrust Law. One of Hylton’s recent articles, "Optimal Antitrust Enforcement, Dynamic Competition, and Changing Economic Conditions," was published in the journal last year (77 Antitrust Law Journal 247 (2010)).

Works in Progress

Among Hylton’s pending and recently published writings are:

  • "American and European Monopolization Law: A Doctrinal and Empirical Comparison," with Haizhen Lin, in Competition Policy and Patent Law under Uncertainty: Regulating Innovation, G. A. Manne & J. D. Wright, eds., Cambridge University Press (forthcoming).
  • "Brown Shoe Versus the Horizontal Merger Guidelines," 39 Review of Industrial Organization 95 (2011).
  • "The Economics of Nuisance Law," in Research Handbook on the Economics of Property Law 323, K. Ayotte & H. E. Smith, eds., Edward Elgar Publishing (2011).
  • "Property Rules and Defensive Conduct in Tort Law Theory," 4:1 art. 5 Journal of Tort Law 1 (2011).
  • "The Economics of Injunctive and Reverse Settlements," with Sungjoon Cho, 12 American Law and Economics Review 181 (2010).

Meurer pursues research into “notice externalities”

Professor Meurer

Professor Meurer

Professor of Law Michael J. Meurer has teamed with Peter S. Menell, law professor at UC Berkeley Law, to explore the issue of property rights and patents and other intellectual property, in a work-in-progress titled “Notice Externalities.”

“Peter and I observed that property rights work better when property owners make an effort to communicate boundary information to the world. When boundaries are clear and owners publicize the scope of their property, that helps other parties to find them and determine if and how they want to use the property,” said Meurer. “Patent owners, however, often hide the existence and ownership of their patents. Furthermore, many inventors deliberately choose fuzzy boundaries for their patent rights. These choices impose hidden costs on other innovators.”

Meurer and Menell are studying how the law can be designed to address this issue and how much responsibility the government and private property owners should assume.

Updating Patent Failure Research

Patent Failure book cover

Meurer and James Bessen are updating the research presented in Patent Failure.

Meurer and fellow faculty member James E. Bessen, lecturer of law, received a grant from the Coalition for Patent Fairness to update research presented in their book Patent Failure: How Judges, Bureaucrats, and Lawyers Put Innovators at Risk (Princeton University Press, 2008). The new research, which will analyze the costs and benefits of the patent system to large, innovative U.S. firms, got underway this summer and is expected to take about 18 months.

Intellectual Property Licenses

Meurer and Dean Maureen A. O’Rourke are investigating the terms of intellectual property licenses and developing a theory that explains why contractual freedom should sometimes be limited. Read more about this research here.

Conference Series

Meurer continues to attract leading intellectual property law scholars to campus in a series of conferences funded by the Ewing Marion Kauffman Foundation. This fall, he and Bessen are organizing the conference “Innovation and Patent Harmonization: Does One Size Fit All?”, which will examine legal and empirical economics scholarship and legal practitioners’ experiences with patent harmonization and innovation.

Meurer also organized the 8th annual Works-in-Progress Intellectual Property Colloquium, hosted by BU Law in February. The event brought together IP scholars from across the country and around the world for presentations on the most recent thinking in IP law.

In the Classroom

This summer Meurer taught in the law school’s new Executive LL.M. in International Business Law program, addressing the IP law component of the curriculum. The program combines onsite modules taught by BU Law faculty with long-distance learning components, allowing foreign and U.S. lawyers to study international business law without having to leave their practice for an extended period.

Meurer will be on sabbatical this fall, and will resume teaching Patent Law and Intellectual Property in January.

O’Rourke developing theory of enforceability for the terms of IP licenses

Professor O'Rourke

Dean O'Rourke

Dean Maureen A. O’Rourke and Professor of Law Michael J. Meurer are analyzing the terms of intellectual property licenses and developing a theory that explains why contractual freedom should sometimes be limited.

Starting with the assumption that most license terms should be enforced because they are chosen by the contracting parties to maximize their joint benefit, O’Rourke and Meurer identify occasions when courts restrict the freedom of contracting parties by prohibiting or penalizing certain license terms. The theory explaining why contractual freedom should sometimes be limited is based on the notion that licensees are sometimes collectively harmed when certain license terms become standard across an industry even though the same terms would not cause much harm if they were only sporadically included in industry licenses. Since licensees often have trouble organizing a collective bargaining position, the law steps in by discouraging or precluding certain license terms.

In the Classroom and In Print

O’Rourke will teach Intellectual Property this fall, as she did last spring. She also is working on updating her casebook with Professors Cohen, Loren and Okediji, Copyright in a Global Information Economy.

Among the articles that O’Rourke has recently published are:

  • "Defending Disclosure in Software Licensing," with Robert A. Hillman, 78 University of Chicago Law Review 95 (2011)
  • "Rethinking Consideration in the Electronic Age," with Robert A. Hillman, 61 Hastings Law Journal (2009-10)

Outterson joins leading health economics blog

Professor Outterson

Professor Outterson

In November 2010, Associate Professor of Law Kevin Outterson joined a leading health economics blog, The Incidental Economist, where he comments on a variety of topics, including the role of patents and incentives in developing new antibiotics. The blog is widely followed, with nearly 900,000 page views in the past year, ranking it 15th for traffic among blogs edited by law professors.

“Many times there are things you want to say that don’t rise to the level of an 80-page law review article,” Outterson said. “With the blog, I can give a very clear 500-word description about an important topic and be done in an hour.”

Outterson and his co-bloggers deliver research-oriented commentary related to health care reform. “When something hits the news, we want to be able to amplify the peer-reviewed research and describe it to people who aren’t experts in a clear, relevant and concise way,” he said. “We’re talking to policy experts, congressional staff and reporters.”

Antibiotic Incentives Policy Paper

Outterson co-authored “Improving Antibiotic Markets for Long Term Sustainability” in the Yale Journal of Health Policy, Law & Ethics, Vol. 11, Winter 2011, with Harvard Professor Aaron S. Kesselheim. The article reviews proposals for encouraging pharmaceutical development, including the extension of the effective patent life for new antibiotics, and proposes as an alternative a two-prong, prize-based strategy for antibiotics.

Major Antibiotic Resistance Conference at BU Law, Oct. 3-4, 2011

BU Law will co-host a major antibiotic resistance conference, sponsored by the Center for Communicable Disease Dynamics at the Harvard School of Public Health. The conference is titled “Antimicrobial Resistance: Biology, Population Dynamics and Policy Options.” Outterson will lead a session on incentivizing development of new antibiotics while promoting conservation.

Socially Responsible Licensing

Outterson is working with Dr. Ashley Stevens, senior research associate of the Institute for Technology Entrepreneurship and Commercialization in the BU School of Management, and Boston University’s British partner, the University of Warwick, to present a conference on “Socially Responsible Licensing: Achieving Social Equity through Voluntary Licensing.” The conference will address the issue of how innovation can be brought to the developing world within the framework of the existing international intellectual property regime in health care, agriculture and cleantech. The conference, which will be opened by Robert A. Brown, president of Boston University, and Professor Nigel Thrift, vice-chancellor of the University of Warwick, will be held at the University of Warwick’s Conference Center, Nov. 18–20, 2011. For more information visit srltvl.org.

Academic Presentations

In recent months, Outterson has presented on antibiotic incentives at:

  • The Globalization of Health Care: Legal and Ethical Challenges, Harvard Law School
  • The World Health Organization Consultative Expert Working Group on R&D, Geneva, Switzerland
  • Yale Health Law Society Meeting, Yale Law School
  • Vaccine Development Class, Massachusetts Institute of Technology

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Updates on Adjunct Faculty

Beck drafts non-compete bill pending before MA State Legislature

Russell Beck

Russell Beck

Lecturer in Law Russell Beck, who in his private commercial litigation practice focuses on trade secrets and restrictive covenants, is the principal drafter of a non-compete bill that will be taken up by a joint committee of the Massachusetts State Legislature this fall.

Beck is working with state representatives in an attempt to craft a bill that is acceptable to both employers and employees. “Our goal is to codify and clarify existing law and to make enforcement and defense of non-competes more predictable so employees know what they’re bound by and employers know what they can expect,” said Beck.

Academic Developments

Beck will be chairing a conference on intellectual property law basics through Massachusetts Continuing Legal Education in November, and is on the steering committee for the Boston Bar Association’s annual meeting.

Meanwhile, he is developing a casebook that will provide students with context and analysis for his BU Law course Trade Secrets and Restrictive Covenants.

One-Year Anniversary of New Firm

Beck’s firm—Beck Reed Riden LLP, a Boston-based firm specializing in commercial litigation, employment and labor law—recently marked its one-year anniversary. A substantial portion of Beck’s litigation work involves trade secrets and restrictive covenants.

Bessen influencing IP policy recommendations in UK

James E. Bessen

James E. Bessen

Lecturer in Law James E. Bessen’s writings and commentary have influenced important intellectual property policy recommendations in the UK. The recommendations appeared in the report “Digital Opportunity: A Review of Intellectual Property and Growth,” released by the UK Intellectual Property Office in May 2011.

The report, which examined how the UK’s intellectual property framework supports growth and innovation, cited Bessen’s book Patent Failure: How Judges, Bureaucrats, and Lawyers Put Innovators at Risk (with BU Law Professor Michael J. Meurer, Princeton University Press, 2008). It also cited a paper Bessen co-authored with Nobel Prize winner Eric S. Maskin. The commission conducting the review met with Bessen at length. Of the 10 recommendations made by the commission, two closely follow policy recommendations contained in Patent Failure and discussed by Bessen during his interview.

International Comparison of Patent Values

Bessen and Meurer are working together to organize the conference “Innovation and Patent Harmonization: Does One Size Fit All?”, which will be hosted at BU Law on Friday, September 30 and Saturday, October 1, 2011. At the conference, Bessen will present a paper titled “International Comparison of Patent Values,” which looks at the value of patents for the same inventions in different countries.

“It’s surprising it hasn’t been done before,” said Bessen. “For example, we find that a patent on an invention taken out in Germany will be almost as valuable as a patent on the same invention taken out in the U.S., despite the fact that the U.S. economy is four times as big as Germany’s.”

Research Projects: Patent Trolls, Software Patents, Chinese Patent Law and Lessons from the 19th Century

Bessen is involved in a number of current research projects, involving:

  • Patent trolls: Bessen is studying the economic impact of the surge in lawsuits by non-practicing entities, or patent trolls, who acquire patents with no intention of developing a technology with them but instead use them as leverage for lawsuits. Bessen and a student are developing an estimate of the amount of wealth lost due to patent trolls, “and it is a surprisingly large number,” Bessen said. “The litigation is a serious problem.”
  • Software patents: Bessen’s recent working paper “A Generation of Software Patents” has generated a good deal of comment within the software community. The report looks at the patenting behavior of the software industry since the 1990s and finds that most software firms do not obtain patents and that litigation continues to increase.
  • Chinese patent law: Bessen has been collaborating with scholars at Beihang University in China who are researching the value of Chinese patents. He has delivered a series of presentations on empirical methods for evaluating the patent system, although the exchange has been mutually beneficial. “China is having an explosion in patenting,” Bessen said. “It will likely issue many more patents than the U.S. does this year,” partly as a result of government subsidies encouraging patent applications. “It’s very interesting to ask how valuable these patents really are,” he said.
  • 19th-century technology: Bessen is looking to the 19th century for answers to 21st-century questions. “Was Mechanization De-Skilling? The Origins of Task-Biased Technical Change” is a working paper that examines whether 19th-century technology reduced demand for skilled workers in contrast to modern technology. Separately, he is researching knowledge-sharing among 19th-century inventors, working with Alessandro Nuvolari, associate professor of economic history at Sant’Anna School of Advanced Studies, Pisa, Italy.

Updating Patent Failure

With a grant from the Coalition for Patent Fairness, Bessen and Meurer are updating research they originally presented in their book Patent Failure: How Judges, Bureaucrats, and Lawyers Put Innovators at Risk. The new research, which will analyze the costs and benefits of the patent system to innovative U.S. firms, got underway this summer.

Neeff studies IP rights in the virtual world

Russell Beck

Jerrold G. Neeff

Jerrold G. Neeff, lecturer in law, is researching the under-explored realm of intellectual property rights in the virtual world, where a great deal of uncertainty exists over whether and how copyright and trademark laws apply to the sale of virtual properties.

The questions have taken on greater urgency with the increasing popularity of virtual world sites, such as Second Life, which enables users to socialize, participate in activities, and create and trade virtual property.

“For example, if someone is selling a virtual Barbie in the virtual world, does Mattel have a right to stop them?” asked Neeff. “There’s really been only one or two cases along these lines. It’s a very interesting, evolving area of law.”

In the Classroom

This fall, Neeff will teach Entertainment Law, a popular course, particularly among international students pursuing an LL.M. degree in Intellectual Property Law or American Law. Such students often make up half the class.

In the Court

Outside of school, as principal with the Bostonian Law Group, Neeff is involved in litigation between two major television networks, one of which alleges that the other violated a copyright on a popular television program.

Plotkin publishing textbook series

Russell Beck

Robert Plotkin

Lecturer in Law Robert Plotkin, who teaches Software and the Law, is wrapping up work on a high school book series examining computers and the Internet and their impact on society.

The six-volume set, titled Computers, Internet, and Society (Facts on File, 2011), covers topics such as communication, creativity, privacy, security and ethics, as well as legal issues such as plagiarism, copyright and patent infringement, and fair use. The first of the six books will be published this fall.

New England IP Law Conference

Plotkin was on the faculty for MCLE New England’s 14th Annual New England Intellectual Property Law Conference in June, presenting on recent developments in patent prosecution.

Trends in Mobile Device Technology

In his private practice, Plotkin specializes in intellectual property protection for computer technology. He notes a growing interest among investors and entrepreneurs in technologies related to cell phones and other mobile devices. “Any technology for mapping or that uses a GPS is hot right now. Also very hot is anything that would let you do powerful computing in a low-cost, low-power way on handheld devices,” he said.

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Alumni Newsmakers

Jay Fialkov (’81) at the leading edge of new media at WGBH

Patent Failure book cover

Jay Fialkov

If you’ve ever been riveted by a documentary on Frontline or American Experience, enjoyed a period drama on Masterpiece or seen science brought to life on Nova, then you’re familiar with the work of Jay Fialkov and his colleagues, who handle legal and business affairs for WGBH, the leading producer of public television programming in the U.S.

As deputy general counsel at WGBH, where he is part of a seven-lawyer team that he calls “the best entertainment law practice in Boston,” Fialkov thrives in the kind of creative environment that has inspired his career.

“I’m happiest when I spend my time helping talented, creative people produce what they want to produce,” he said.

Fialkov’s journey to WGBH began in the mid-1980s. After stints as a judicial clerk and as a corporate associate of a Boston law firm, he began his own entertainment law practice at a time when the Boston music scene was booming. His clients included Phish, Maurice Starr (who managed and produced New Kids on the Block), George Thorogood, Mark Wahlberg, the estate of bluesman Robert Johnson, Rick Danko of The Band, Homestead Records, Rounder Records and Rykodisc.

Fialkov also founded and co-owned the Giant/Rockville record labels, which released albums by Uncle Tupelo, an influential rock band whose offshoots include Wilco and Son Volt. He enjoyed his share of David-and-Goliath moments and experienced the literal high point of his private practice when Disney whisked him and his family on its corporate jet to Super Bowl XXV, where New Kids on the Block were the halftime entertainment.

In the mid-1990s, having fulfilled his ambition of building a successful entertainment law practice, Fialkov joined WGBH in what proved to be a prescient move. Within a couple of years, MP3 players, Napster and downloaded music would “virtually blow up the music business as I had experienced it during the high times.”

At WGBH, Fialkov handles legal and business affairs for a wide range of projects that present a host of legal issues, including negotiating contracts, securing rights to content for documentary series (such as Frontline and American Experience) and arranging deals to distribute WGBH’s properties in all forms of media. His colleagues include fellow BU Law graduates Jeff Garmel (’77) and Eric Brass (’79), whom Fialkov describes as "great guys and great lawyers."

Fialkov also is called on to help solve problems that may arise during and following production of a program and to deal with sometimes-troublesome copyright and intellectual property questions, such as those concerning the "fair use" of copyrighted content.

“The media environment has gotten very complicated,” he said. “New technologies have generated new methods for distributing content, and audiences increasingly demand access to content anywhere, anytime, anyhow, on demand. Our people here live on the cutting edge of taking advantage of new media so we can distribute our programs as widely as possible. It’s made the job continually interesting.”

In addition to his work at WGBH, Fialkov is a professor at Berklee College of Music and coaches youth and high school basketball, which he has done for more than 20 years.

Fialkov and his wife, Claire, a psychologist and professor at the Massachusetts School of Professional Psychology, have two adult children: David, a recent law school graduate who works as an associate at the D.C.-based firm Steptoe & Johnson, and Emma, who is in New York studying for a Ph.D. in counseling psychology.

Jay and Claire live in Needham, just outside of Boston, in a home with one very big reminder of Fialkov’s music-business past—a library of 10,000 vinyl records.

As head of online game developer, Kern (’95) prepares for big unveiling

Russell Beck

Mark Kern

For Mark Kern, work is all fun and games.

As CEO and chief creative officer of start-up Red 5 Studios, a California-based online game developer, Kern is busily preparing to unveil his company’s first title, Firefall, a team-based action shooting game set 200 years in the future.

Already, nearly 200,000 players have signed up for Firefall’s beta release, partly because, in the world of online gaming, Kern’s reputation precedes him. More than 12 million gamers worldwide know him as the man who led the team that developed World of Warcraft, an extremely popular, award-winning game from Blizzard Entertainment.

Firefall, which goes into beta late this year, is gaining attention not only because of its compelling story line and stunning graphics but also because of Kern’s business decision to make it free to play. “I was really worried, particularly in this economic environment, about people’s abilities to try new games and pay for games. It was really important to me to find another way,” he said. And he did—in Asia, some of the most popular games are free to play but charge fees for optional enhancements, a model Firefall has adopted.

Those who know Kern well are not surprised at his career choice. A gamer since he was a child (he recounts that his parents were constantly telling him to turn off the computer games and do his homework), he built a network of developer friends through AOL and other online communities in high school and college. During the summer after his first year at BU Law, one of those acquaintances recruited him to help develop a new game that had received a then-outrageous amount of venture capital—$120,000.

“I would literally wake up, crawl to the computer, do art and code, go back to bed, rinse and repeat,” he said. “That summer, I made less than minimum wage.” But Kern, who comes from a family of entrepreneurs, was hooked. “I was working on games the whole time I was in law school. By my third year I was working on my own company.”

While that company developed a couple of games that attracted attention, it ran low on funds before it could gain its footing, so Kern cut a deal to move it to Blizzard Entertainment, where he stayed for eight years and eventually led the development of World of Warcraft.

In 2005, the entrepreneurial bug bit again. Encouraged by his wife, Imelda, Kern launched Red 5 Studios, recruiting some of the top creative talent in online gaming to join him.

In many ways, it has been a typical start-up story—sketching out grand plans on the kitchen table of his California home and “doing VC pitches with pamphlets hand-glued in my garage.”

But unlike many start-ups, Red 5 Studios has raised more than $60 million from venture capitalists and weathered the recession intact. Today, the company has 50 employees, good trade press notices, and a buzz among gamers who are anxiously awaiting Firefall’s release.

Even though Kern did not pursue a career in law, he says his experience at BU contributed to his success by preparing him to think creatively and critically—and, he notes proudly, by equipping him with the skill to write Blizzard Entertainment’s terms of use. Those terms have been upheld in court on more than one occasion.

When he’s not building the next blockbuster online game, Kern enjoys collecting antique firearms, gunsmithing and playing strategy games.

And he spends lots of time on the opposite end of his childhood conversations, telling his two sons, ages 6 and 4, to—you guessed it—turn off the computer games.

Yoon (LL.M. ’11) studies international enforcement of non-compete agreements

Will Yoon, who earned an LL.M. in Intellectual Property Law in May 2011, completed a thesis that examined international enforcement of non-competition agreements, a topic of increasing interest both to companies worldwide and Yoon personally.

In his former life as a practicing attorney in Tokyo who worked on cross-border commercial transactions, Yoon became acutely aware of the need to protect company trade secrets and to manage cross-border transfers of information.

Yoon said globalization, immigration reform, the rise of China as an economic powerhouse and similar issues are giving new urgency to the issue of protecting intellectual property.

“A large portion of U.S. engineering and science graduate students come from overseas, and there are a lot of contractors—for example, software programmers—who come from overseas. Traditionally, they stayed in Boston or Silicon Valley, but now there’s a fear that the lure of working back home may be too powerful and that when they leave they may be taking knowledge with them,” he said.

Yoon’s thesis looked at enforcement mechanisms, impediments to enforcement, and the economic impact of non-compete agreements.

Inspired in part by the entrepreneurial high-tech culture that he experienced in Boston, Yoon—whose engineering background fuels his interest in technological innovation—is currently pursuing a start-up idea of his own. He hopes to create a group-focused social network that integrates collaboration and productivity tools for “power moms” and others juggling the many demands of modern life. “I’m motivated by my frustration with existing social networks that are great for sharing pictures online of what you had for breakfast but aren’t much of an improvement over e-mail in terms of providing tools to schedule and organize your offline social life,” he said.

“BU’s IP program was outstanding,” he added from his home in Toronto. “The faculty has a tremendous amount of experience, especially if you’re interested in the technology and innovation spaces, and there are a lot of opportunities to take entrepreneurship-focused business school classes. It really was exactly what I was looking for.”

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IP Conferences and Speakers at BU Law

Introducing students to the perspectives and expertise of leading scholars and practitioners has always been a hallmark of the BU Law IP program. The presentations of guest speakers and the dialogue that ensues enrich students’ experiences and equip them with a deeper understanding of the subject matter.

“Few other schools offer such a rich set of conference and guest speaker presentations—presentations that give students valuable opportunities to meet and learn from prominent IP scholars and practitioners,” said Professor Michael J. Meurer, who plays an important role in attracting leading IP law scholars to campus for conferences.

IP Conference This Fall

This year, the law school will continue its IP conference series, which is funded by a four-year, $400,000 grant from the Ewing Marion Kauffman Foundation. On Sept. 30 and Oct. 1, BU Law will sponsor “Innovation and Patent Harmonization: Does One Size Fit All?” The workshop will examine legal and empirical economics scholarship and legal practitioner experience on patent harmonization and innovation. Speakers will cover the effect of harmonization in both advanced countries and developing nations, with a particular focus on China, where government policy and rapid growth in patenting raise important issues.

WIPIP

BU Law also hosted the 8th annual Works-in-Progress Intellectual Property (WIPIP) Colloquium in February. The event provided IP scholars from across the country and around the world with an opportunity to present their works-in-progress and get early feedback from their colleagues. The conference included approximately 45 presentations.

IP Speaker Series

In addition to conferences, BU Law’s IP Speaker Series brings a robust roster of leading IP law thinkers to campus to interact with students and faculty in workshop settings. Recent speakers include:

  • Glynn Lunney, McGlinchey Stafford Professor of Law, Tulane University Law School
  • James E. Bessen, BU lecturer of law, and director and founder, Research on Innovation
  • Jay Kogan, vice president, Business & Legal Affairs, and deputy general counsel, DC Comics

“We try to bring in a number of speakers every year, and the subject matter ranges from intellectual property practice to scholarly presentations,” said Professor Stacey Dogan, who organizes the IP Speakers Series.

Planning is underway to bring another lineup of leading speakers to campus in the current academic year.

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About the IP Law Curriculum at BU Law

BU Law recognizes the importance that intellectual property law plays in our society. The School offers an IP Law concentration in the J.D. program, dual degree programs involving IP Law, an IP focus within the Legislation Clinic and a highly selective Master of Laws Degree in Intellectual Property Law. BU Law also annually publishes professional articles and student-written notes on the topic in the Journal of Science & Technology Law.

J.D. Concentration in Intellectual Property Law

At BU Law, the Intellectual Property Law concentration brings together expertise in three core areas: patent, copyright and trademark. Intellectual property law is one of the most challenging and high-profile areas of the law. Our internationally known faculty of scholars and wide-ranging curriculum equip students to address complex intellectual property issues at an advanced level. BU Law’s strong relationships with the legal community and the technology industries in Greater Boston give students additional exposure to top practitioners in the field.

IP Faculty

Full-time IP professors:

  • Stacey L. Dogan, Law Alumni Scholar and Professor of Law
  • Wendy J. Gordon, William Fairfield Warren Distinguished Professor and Professor of Law
  • Keith N. Hylton, Honorable Paul J. Liacos Professor of Law and Professor of Law
  • Michael J. Meurer, Abraham and Lillian Benton Scholar and Professor of Law
  • Maureen A. O’Rourke, School of Law Dean, Michaels Faculty Research Scholar and Professor of Law
  • Kevin Outterson, Associate Professor of Law and Associate Professor of Health Law, Bioethics and Human Rights

Other faculty:

  • Michael S. Baram, Professor of Law Emeritus
  • Russell Beck, Lecturer in Law and Founding Partner at Beck Reed Riden LLP
  • James E. Bessen, Lecturer in Law and Director and Founder at Research on Innovation
  • Jeffrey P. Donohue, Lecturer in Law and Corporate Counsel at Novartis Institutes for BioMedical Research
  • Lisa N. Geller, Lecturer in Law
  • Frances H. Miller, Professor of Law Emerita
  • Jerrold G. Neeff, Lecturer in Law and Principal at The Bostonian Law Group
  • Robert Plotkin, Lecturer in Law and Attorney, Robert Plotkin, P.C.
  • Lior Zemer, Visiting Assistant Professor at BU Law and Lecturer in Law at the Radzyner School of Law, Interdisciplinary Centre, Herzliya, Israel

Selected IP Courses for 2011–2012

  • Copyright Law
  • Entertainment Law
  • Food, Drug and Cosmetic Law
  • Harms and Benefits (seminar)
  • Intellectual Property
  • Intellectual Property and the Internet (seminar)
  • International Intellectual Property (seminar)
  • Licensing Law and Practice
  • Law and Ethics of Medical Research (seminar)
  • Patent Law
  • Patent Prosecution (seminar)
  • Unfair Competition and Trademark Law

IP Law Opportunities

The Legislation Policy & Drafting Clinic allows students to work with clients to provide legislative solutions to issues related to intellectual property. Participants learn client interviewing, fact investigation, legal research, drafting and revision. The end product is a draft bill with extensive accompanying documentation. A board of student editors and faculty advisers guides students through the stages of drafting the bill and writing the supporting memoranda. In the process, the clinic exposes students to issues surrounding the evolving IP field, including problems of privacy, copyright and fair use, patent protection, interstate and international jurisdiction and free speech.

The Journal of Science & Technology Law publishes scholarship on the interaction between science, technology and the law. This includes the fields of biotechnology law, computer and communications law, intellectual property, technology transfer, and business law for technology-based companies. The Journal annually publishes professional articles and student-written notes in two hard-copy volumes and condenses the material onto a CD-ROM. In addition, each volume is available online at www.bujstl.org. Some of the most recent articles published include “Privacy and Security in the Implementation of Health Information Technology (Electronic Health Records): U.S. and EU Compared” and “Alternative Intellectual Property for Genomics and the Activity of Technology Transfer Offices: Emerging Directions in Research.”

IP Speaker Series

The Intellectual Property Speaker Series is an important element of BU Law’s comprehensive IP program. The speaker series gives students and faculty the opportunity to interact with leading thinkers from around the world in an exciting workshop setting. Past topics include: “Software Patents,” “Trademarks and Consumer Search Costs on the Internet,” “IP Law and the Boundaries of the Firm,” and “Patents and Growth: Empirical Evidence from the States.”

Dual Degrees

J.D./M.B.A. in Law & Management
The joint J.D./M.B.A. in Law and Management is a great option for those interested in combining management and law courses with IP-related subjects, such as IP licensing or the strategic management of an IP portfolio. The J.D./M.B.A. program can be completed in as little as four years.

J.D./M.S. in Law and Mass Communication
The growth of new communication technologies has created a need for lawyers with specialized training in the technological, marketing and legal sectors. In response, the School of Law and the College of Communication offer a unique program that allows students to acquire a law degree and a master’s degree in mass communication in three and a half years. Class topics offered through this dual degree opportunity include broadband communications and the Internet.

LL.M. in Intellectual Property Law

The LL.M. in Intellectual Property Law Program is a two-semester, full-time program designed for domestic and foreign-trained lawyers who seek the credential of a specialized degree in intellectual property law. Students pursue a range of IP and IP-related classes offered through BU Law’s J.D. curriculum. Our world-renowned intellectual property faculty, the breadth of curricular choices in such emerging topics as the Internet and biotechnology, and a graduate student body representing more than 30 nations—with backgrounds in technology, engineering, biotechnology, publishing, the arts and entertainment—create a truly invigorating learning environment for advanced study.

Upcoming IP Law Events

2011

  • 30 Sep Innovation and Patent Harmonization: Does One Size Fit All?This workshop, organized by BU Law's Michael Meurer and James Bessen, will consider legal and empirical economics scholarship on patent harmonization and innovation, as well as legal practitioners’ experience in the field. The workshop will be held at BU Law from September 30 to October 1. More Details
  • 3 Oct Antimicrobial Resistance: Biology, Population Dynamics and Policy OptionsThis symposium, organized by Harvard’s Center for Communicable Disease Dynamics and hosted at BU Law on October 3rd and 4th, will explore the biology and population dynamics of antimicrobial resistance. BU Law’s Kevin Outterson will lead a session on incentivizing development of new antibiotics while promoting conservation. More Details
  • 18 Nov Jessica Silbey, Suffolk University Law SchoolProfessor Silbey will be speaking from 10:15 to 11:45 a.m. in room 920B. This workshop is presented as part of the IP Speaker Series.
  • 18 Nov Socially Responsible Licensing: Achieving Social Equity through Voluntary Licensing (at the University of Warwick)This conference, organized by BU and its British partner, the University of Warwick, will address how innovation can be brought to the developing world within the framework of the existing world intellectual property regime. The conference will be held at the University of Warwick from November 18 to 20. More Details

2012

  • 23 Mar Dan Burk, UC Irvine School of LawThis workshop is presented as part of the IP Speaker Series.
  • 3 Apr Michael Madison, University of Pittsburgh School of LawThis workshop is presented as part of the IP Speaker Series.

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