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One of the more common meanings of the word “authority” is “an expert on a subject” (Random House College Dictionary 91, revised ed. 1979). And, according to Black’s Law Dictionary, a secondary authority is “authority that explains the law but does not itself establish it, such as a treatise, annotation, or law-review article” (Black’s Law Dictionary 129, 7th ed. 1999). In other words, everything but the law. In this article, I will provide an overview of all sources that provide explanations of intellectual property law. (Not really — just seeing if you are paying attention.) In “Intellectual Property Update” ( Legal Information Alert, vol. 19, no. 8, p. 1, September 2000), I focused on what I consider to be the Big Five electronic sources for U.S. patents, trademarks, and copyright registrations. This article will again focus on the “biggies” — the staid, traditional, non-electronic sources (yes, that means books) for U.S. intellectual property law. For you technophiles, electronic versions of these sources are included, but to a much lesser extent. A short, annotated list of worthwhile Internet resources is also included in an appendix. Rather than just list the leading works on U.S. intellectual property law and providing my opinions on their user-friendliness, I will take a peek at the human side of these massive undertakings. Some of these men (yes, they are all men) have had their work quoted extensively by courts across the country. Who are the experts behind these secondary authorities? They are professors, practitioners, and papas — and we will find out all about them. U.S. PATENT LAW You pose the query, “patent law practice materials?” in any law library and resoundingly, the answer will thunder back “Chisum.” (Picture this Hollywood movie scene — young, eager, newly graduated associate anxiously enters the law library; modestly dressed, older woman with obligatory hair in bun, glasses perched on the nose, quietly guides young associate down the labyrinthine stacks of the hallowed law library until they reach the aisle — call numbers KF 2900-KF 3200 — A beam of light shines directly on two shelves holding a set of golden, glowing books -� “Chisum!” — a chorus of angelic voices — can’t you just see it?!) ‘CHISUM ON PATENTS’ With 15 volumes, “Chisum on Patents: A Treatise on the Law of Patentability, Validity, and Infringement,” provides at least two shelves worth of valuable and comprehensive overview and interpretation of U.S. patent law. Topics range from Eligible Subject Matter to U.S. Patent and Trademark Office (PTO) Procedure to Patent Litigation. The organization of the material is very logical and makes finding information rather easy just using the table of contents. When needed, however, the indexing is comprehensive (replete with “see” and “see also” references) and yields valuable assistance in locating a specific point of law. The treatise is liberally sprinkled with appropriate caselaw, giving ready support for arguments. Appendixes contain various patent statutes, and the last three volumes provide a topical outline with abstracts. Although a looseleaf treatise, “Chisum on Patents” is updated infrequently. It was last updated in December 2000. For those who prefer the electronic version, Matthew Bender produces “Chisum” on its Authority CD, using the Folio Views run-time engine. The CD version is very useful when searching for that needle-in-a-haystack (“Find me that case that dealt with a patent for copper rivets”) or when you have a cite to a specific section and need to find and print it. Additionally, when the material is loaded onto a tower, there is never a worry that pages will go missing (as will happen with looseleaf publications). This version, however, is only updated annually. Both the hard copy and the CD versions are published by Matthew Bender. The author of this magnificent creation is Professor Donald S. Chisum of Santa Clara University, Santa Clara, Calif., and of counsel at Morrison & Foerster. His law school Web page is at www.scu.edu. There is also a detailed professional biography on Lexis-Nexis at bookstore.lexis.com(but this one does not have his picture). With his amazing credentials, it is interesting to note that his name does not appear as a registered agent or attorney with the PTO. ‘WALKER ON PATENTS’ A lesser-known set is Lipscomb’s “Walker on Patents,” 3d ed. Published by West Group, this is a 10-volume set with pocket-part supplementation. The latest update was in November 2000. Topics range from History (of U.S. patent law) to the Patent Application to Appellate Procedure. It is not as robust a treatise as “Chisum,” but it does provide brief, easy-to-read, and understandable explanations. One caveat about “Walker,” however: I have been told by a practicing IP partner (whom I respect very much) that he tends not to use “Walker” as he prefers the reliability of “Chisum.” Personally, I find that at times “Walker” cuts to the chase in crisper, clearer language than “Chisum,” so, as a neophyte, I use it, but with caution. At any rate, “Lipscomb” is Ernest Bainbridge Lipscomb, III, a partner at Atlanta-based Alston & Bird, and a registered patent attorney at the PTO. A brief professional biography can be found at www.alston.com. (Unfortunately, I was not able to find out who “Walker” is, so if anyone knows, please let me know.) THE THIRD MOST VALUABLE “Patent Office Rules and Practice” by Lester Horwitz is a third “must” for an IP collection. This 11-volume treatise with pocket-part supplementation covers topics ranging from the Patent Office to Disclosure to Reexamination. Forms, however, are what makes Horwitz so valuable and differentiates it from the others. Three full volumes of just about every conceivable IP practice forms are provided. Horwitz was a partner at Ladas & Parry, an international IP firm. He served on the American Bar Association’s Intellectual Property Committee 103 and is a registered attorney with the PTO. He is currently enjoying retirement — traveling and visiting with his grandchildren. His son, Ethan Horwitz, is a member of the prestigious intellectual property law firm of Darby & Darby and has co-authored an IP practice guide on patent litigation with Dad, as well as authoring some IP practice tomes himself. (And, as far as I could find out, they aren’t related to the other renowned Horwitz, Jerome Lester Horwitz — a.k.a. Curly Howard, of the Three Stooges.) U.S. TRADEMARK LAW “McCarthy on Trademarks and Unfair Competition,” 4th ed., is to U.S. trademark law what “Chisum” is to U.S. patent law. In its six looseleaf volumes, topics range from Basic Principles of Unfair Competition to Trademark and Trade Dress Formats to Assignment and Licensing. It is updated only on an “as-needed” basis, according to the publisher West Group. The author, J. Thomas McCarthy, is of counsel at Morrison & Foerster in San Francisco and is also a professor of law at San Francisco University. His biography is posted on his firm’s Web site at www.mofo.com. Interestingly, he was not found on a search of the PTO roster, either. A CD version of “McCarthy” is also available, with quarterly updates. In the electronic version, “McCarthy” is joined by James E. Hawes, founding partner of the Laguna Beach law firm of Levin & Hawes. West Group has Hawes’ professional biography posted at store.westgroup.com. “Trademark Protection and Practice” by Jerome Gilson is a more voluminous treatment of U.S. trademark law. At 10 volumes, Gilson’s set covers topics from Establishing Trademark Rights to Foreign Trademarks. Three of the 10 volumes cover analysis of the law, and four volumes contain the legislative histories of major trademark legislation — the Lanham Act, in particular. Anyone doing legal research knows that what the legislators had in mind when passing laws can be valuable ammunition for bolstering an argument. Gilson is head of the Trademark Practice Group at Brinks Hofer Gilson & Lione ( www.brinkshofer.com). And he is also a dad, joined in his endeavor of trademark law analysis by his daughter, Anne Gilson Lalonde, an attorney. U.S. COPYRIGHT LAW “Nimmer on Copyrights: A Treatise on the Law of Literary, Musical and Artistic Property, and the Production of Ideas” is in the same league as “Chisum” and “McCarthy.” This 10-volume set, published by Matthew Bender, contains everything you ever wanted to know about copyrights — from constitutional aspects to derivative works to enforcement. It is updated about every four to six months, with the latest update dated September 2000. Interestingly, this work is a father and son effort. Started by Melville B. Nimmer, former dean of the Copyright Bar, it was taken over by his son David Nimmer when the senior Nimmer became ill several years ago. David Nimmer is of counsel at Irell & Manella in Los Angeles, irell.com/attorneys. A rival publication put out by BNA is “Copyright Law and Practice” by William F. Patry. Published in 1994, the three-volume set is updated by 1998 and 2000 paperback cumulative supplements. The entire set is actually an update to Patry’s “Latman’s The Copyright Law,” 6th ed. Patry is of counsel in the intellectual property department of Skadden, Arps, Slate, Meagher & Flom. He has been a professor of law at Cardozo Law School and Yeshiva University in New York, and has served as counsel to the Subcommittee on Intellectual Property and Judicial Administration of the Judiciary Committee in the U.S. House of Representatives. His professional biography can be viewed on Skadden’s Web site at www.skadden.com. TRADE SECRETS The lesser-known intellectual property, trade secrets, is nevertheless an important area of intellectual property law. Roger M. Milgrim is the editor of the most comprehensive treatise in this area � “Milgrim on Trade Secrets.” Published by Matthew Bender, it is a four-volume looseleaf set, updated twice a year. Topics covered include Public Policy, Historical Development, Establishment, Termination, Remedies, Ownership, Taxation, and Licensing. Milgrim is a partner at Paul, Hastings, Janofsky and Walker ( www.paulhastings.com) and an adjunct professor of law at New York University School of Law. LICENSING/ASSIGNMENTS Milgrim is also editor of “Milgrim on Licensing.” It is also a four-volume looseleaf treatise. Matthew Bender is the publisher, and it is updated once every four months or so. The latest update is dated November 2000. It covers the major topic areas — Legal Characteristics of Industrial Property Pertinent to Licensing, Trade Regulation Pertinent to Technology and Trademark Licensing, Considerations About Pre-license Disclosure, Procedures, License Structure and Negotiation, and, Licensing Provisions, Alternatives; Technical and Negotiating Commentary. “Lindey on Entertainment, Publishing and the Arts: Agreements and the Law,” 2d ed. is a lesser-known treatise. Published by West Group, it is a six-volume looseleaf set that is updated infrequently. The latest update is October 2000. According to Lindey, the treatise is intended to cover the “whole spectrum of intellectual property and mass communications.” As such, books, plays, computer programs, and movies are covered. Forms are also included. Sadly, Lindey died in 1981, after more than 50 years as an intellectual property practitioner. The editing was taken over by Michael Landau, a professor of law at Georgia State University College of Law. Landau teaches copyrights, trademarks, art and entertainment law, computer law, and antitrust ( law.gsu.edu). CONCLUSION The above secondary sources are, arguably, a good core collection for an IP section. There are many others out there, some may be even better, but the above are ones I find myself turning to time and time again. The law is complex, and few take the time or initiative to pass on their knowledge of a specific area in the form of a secondary source. When researching a point of law, I find it comforting to know that I may be in the dark, but Chisum, Lipscomb, the Horwitzes, McCarthy, Gilson and Lalonde, the Nimmers, Patry, Milgrim, Lindey, and Landau are all there to guide me. I thank them for their efforts. WEB SITES As promised, good Web sources for secondary IP information follow: SUBSCRIPTION � www.indexmaster.com — searchable compilation of indices and tables of contents from law treatises; subscription price based on number of attorneys � www.lexis.com — you can’t beat Lexis’ coverage of secondary IP sources (especially now since they own Matthew Bender!) � www.westlaw.com — just thought I’d give Lexis’ competition equal time (although coverage is not as good for treatises but even better for law reviews) FREE � www.patentcafe.com — leading IP portal; provides plenty of links � www.findlaw.com — recently acquired by West Group (so not sure how long it will be “free”); provides links from legal subject area labeled IP � www.kuesterlaw.com/index.html — award-winning Web site by Jeffrey R. Kuester of Thomas, Kayden, Horstemeyer & Risley � www.ladas.com — law firm of Ladas & Parry offers some information on IP Alyson B. Danowski is the senior legal assistant for the Intellectual Property Group, Collier Shannon Scott in Washington, D.C. She can be reached at [email protected]

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