20. US Supreme Court Case: Suparb Kerdseng
Copyright
First-sale doctrine
The first-sale doctrine authorizes an owner of a
copyrighted work to sell that work without the
permission of the copyright owner
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21. John Wiley & Sons, Inc. v. Kirtsaeng
Kirtsaeng is from Thailand and came to the U.S. in 1997
to pursue an undergraduate degree in mathematics at
Cornell University. He later attended a university in
California and earned a Ph.D. in 2009.
During his time in the U.S., Kirtsaeng received
shipments of textbooks that his family purchased in
Thailand. Kirtsaeng sold these textbooks on commercial
websites such as eBay.com and used the profits to
reimburse his family and to pay for his education.
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22. John Wiley & Sons, Inc. v. Kirtsaeng
Kirtsaeng sold $900,000 worth of books
published abroad by Wiley and others and made
about $100,000 in profit. The international
editions of the textbooks were essentially the
same as the more costly American editions.
A jury in New York awarded Wiley $600,000
after deciding Kirtsaeng sold copies of eight
Wiley textbooks without permission.
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23. John Wiley & Sons, Inc. v. Kirtsaeng
Wiley alleges that Kirtsaeng’s importation and
distribution of the textbooks is a copyright
infringement under 17 U.S.C. § 501. John Wiley
& Sons, 654 F.3d at 213-14. Kirtsaeng asserts
he did not violate the Copyright Act because §
109(a), the first-sale doctrine, allows resale of
textbooks without permission from the copyright
owner. Wiley alleges that § 109(a) does not
apply to goods manufactured in foreign
countries.
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24. John Wiley & Sons, Inc. v. Kirtsaeng
Supreme Court, March 2013
Justice Stephen Breyer said in his opinion
for the court that once goods are sold
lawfully, whether in the U.S. or elsewhere,
publishers and manufacturers lose the
protection of U.S. copyright law.
"We hold that the `first sale' doctrine
applies to copies of a copyrighted work
lawfully made abroad," Breyer said.
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26. Authors of a copyrighted work
Copyright is a valuable asset, providing
exclusive control over the copying, distribution,
performance and display of a work as well as
over derivative works.
As such it calls for careful management. When
publishing a work, the author will sign an
agreement with the publisher; that agreement
will define which rights the author will continue to
hold and which rights are transferred to the
publisher.
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27. MIT Open Access Policy
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“MIT is committed to disseminating the fruits of its
research and scholarship as widely as possible.”
Harvard University’s Faculty of Arts and
Sciences, Harvard Law School, and the Harvard
Kennedy School, as well as Stanford School of
Education, have similar policies.
Each Faculty member grants to the MIT
nonexclusive permission to make available his or
her scholarly articles and to exercise the
copyright in those articles for the purpose of open
dissemination.
28. MIT Open Access Policy
28
It applies to “scholarly articles.” Using terms from
the Budapest Open Access Initiative, scholarly
articles are articles that describe the fruits of
research and that authors give to the world for
the sake of inquiry and knowledge without
expectation of payment. Such articles are
typically presented in peer-reviewed scholarly
journals and conference proceedings.
29. MIT Open Access Policy
29
The web makes it possible for faculty to share
their articles widely, openly, and freely
What if a journal publisher refuses to publish my
article because of the prior permission given to
MIT under the policy?
You have a number of options.
One is to try to persuade the publisher that it should accept MIT’s
non-exclusive license
Another is to seek a different publisher.
A third is to consult with the Program Manager about taking steps
to address the publisher’s specific concerns.
A fourth is to obtain a waiver for the article under the policy (see
more below under Opting Out.)
30. MIT Open Access Policy
30
MIT has chosen to distribute articles under its Open Access Policy
using one of the standard Creative Commons licenses: the
Attribution-Noncommercial-Share Alike license.
This particular CC license means that you are free to share (copy,
distribute and transmit the work) and remix (adapt) the work under the
some conditions
- Attribution: You must attribute the work in the manner specified
by the author or licensor (but not in any way that suggest that they
endorse you or your use of the work)
- Noncommercial: You may not use this work for commercial
purposes
- Share Alike: If you alter, transform, or build upon this work, you
may distribute the resulting work only under the same or similar license
to this one.
31. Key Terms of a
Creative Commons license
Attribution = you must attribute the author and/or
licensor in the manner they require.
Non-Commercial = you may not use the work in a
manner primarily directed toward commercial advantage
or private monetary compensation.
No Derivatives = you may only make verbatim copies of
the work, you may not adapt or change it.
Share Alike = you may only make derivative works if
you license them under the same Creative Commons
license terms.
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36. Why do we obtain IPR?
IPR is a bridge for leading research
achievements by universities to new products
launched to society
IPR gives incentives to researchers to put their
research achievements into commercial use,
while publishing achievements in academic
journals
37. From Invention to Technology
Licensing: Cycle of Intellectual Creation
Invention
Disclosure
Evaluate the
Invention
Patent
Application
Marketing
Licensing
Royalty
Management
University,
Researchers,
R&D budget
University University/TLO TLO/Patent Agent
TLO
TLO acting as
A mentor
TLO/CompanyTLO
Univ. based
startups
University
38. Services that TLO offers
Facilitating invention disclosures
Technology assessment and valuation
Patent Application (could be outsourced), Patent
Maintenance and Patent Management
Commercialization Planning/ Marketing
Licensing
Post Licensing Management
Business Development
39. State of the art: Facilitating
Invention Disclosures
Educate researchers on key issues regarding
tech. transfer
Streamline systems and procedures for
disclosure: electronic invention reporting is
essential
Institutional policies must be available and up-to-
date
40. State of the art : Technology
assessment
Personnel are key to success- must have
scientific/ technical and business credentials
Must understand criteria for various
commercialization pathways/ barriers
Basic knowledge of IP law and strategy are key
41. State of the art: IP Management
Establish Basic IP Framework: IP policy,
employment contract, nondisclosure agreement
Determining rights to the invention based on
technical feasibility, patentablility, and
marketability
Post registration management- patent
maintenance, monitoring patent infringement
42. State of the art: Marketing
Increase technology exposure through several
channels such as techno-mart, cyber homepage
and trade show
Enhance value of individual technologies
through bundling
Firms that express interest in technology are
frequently asked to sign confidentiality
agreements
43. State of the art: Licensing
Assessing the firm’s product lines, production
and marketing capabilities, financial status to
secure the successful commercialization
License types include exclusive license, non-
exclusive license and sole license
License agreement typically include the
provisions of a license payment, patent
management expenses, technical assistance
fees, definition of specific patent rights licensed,
commercialization milestones, and license term
44. State of the art: Business Development
and Strategic Alliances
Partner with existing company to develop and
market products based on technology
Create, develop business plan, recruit
management, and raise venture capital
Alliances are important locally, nationally and
globally
Growing number of research collaborations lead
to jointly owned IP: must be able to manage
within different situations, environments
45. TLO’s Staff and their work (1)
Staff Number Main work
Director 1 TLO management, Plan
strategy and systems for
tech. Transfer, Establish
IP policy, Manage budget
Licensing
Specialist
1+ Evaluate invention,
Market research and
evaluation, Marketing,
Negotiating license,
Customer management
Information
Specialist
1+ Investigate prior art,
Collect market and
business information
46. TLO Staff and Their work(2)
Staff Number Main Work
General Affairs
Manager
1 PR, General services inside
and outside, Contract
Management
Accounting
Manager
1 IP maintenance, Licensing
fee management, Payment
to outside, Revenue sharing
management
Administrative
staff
1+ Database input,
Correspondence, Other
office administrative work
47. TLO’s Key Success Factors
Inventor’s enthusiasm and deep interest for
commercialization
Licensee’s strong enthusiasm for new business
Open-minded attitude of inventors and licensees
(e.g., acquaintance)
Reliance on technology transfer specialists