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Professor of Law


Email: xnguyen@mail.smu.edu

Phone: 214-768-4037

Education:

B.A., Oberlin College
J.D., Northeastern University School of Law

Professor Xuan-Thao Nguyen focuses on the interdisciplinary aspects of intellectual property, licensing, e-commerce, commercial law and taxation in her teaching and scholarship. She has co-authored several treatises and casebooks, including: Treatise, INTELLECTUAL PROPERTY AND INFORMATION LICENSING LAW (BNA 2007) (1,534 pages); 2010 Supplement to INTELLECTUAL PROPERTY LICENSING (BNA, 404 pages); Casebook, INTELLECTUAL PROPERTY AND INFORMATION LICENSING: Theories and Practice (Aspen, 2008) (2nd Edition 700 pages); Treatise, INTELLECTUAL PROPERTY TAXATION (BNA 2003 (783 pages)); 2010 Supplement to INTELLECTUAL PROPERTY TAXATION (BNA, 618 pages); and Casebook, INTELLECTUAL PROPERTY TAXATION: Problems and Materials (Carolina Academic Press, 2004) (487 pages).
 
Professor Nguyen has published 28 law review articles in the areas of intellectual property, secured financing, bankruptcy and taxation. Her articles have appeared in journals, including the North Carolina Law Review, the Indiana Law Journal, the U.C. Davis Law Review (twice), the Hastings Law Journal, the Tulane Law Review (twice), the Georgia Law Review (twice), the Wake Forrest Law Review, the American University Law Review (thrice), the Washington & Lee Law Review, the Cardozo Law Review, the Brooklyn Law Review, the Buffalo Law Review, the SMU Law Review, the George Mason Law Review, the St. Louis Law Journal, the Loyola Chicago Law Journal, the Albany Law Review, the Gonzaga Law Review (invited for Symposium Issue on Intellectual Property and Bankruptcy); the Chicago-Kent Intellectual Property Journal, and the Loyola Chicago Consumer Law Review. Her articles have been cited by the Federal Circuit, the Third Circuit, the Ninth Circuit and various federal district courts: In re Steelbuilding.com, 415 F.3d 1293 (Fed. Cir. 2005); Interstellar Starship Services, Ltd. v. Epix, Inc., 304 F.3d 936 (9th Cir. 2002); Times Mirror Magazines, Inc. v. Las Vegas Sports News, 212 F.3d 157, 175 (3d Cir. 2000); In re Interstate Bakeries Corp., 2010 WL 2332142, *7 (Bank.W.D.Mo. June 4, 2010); Ligotti v. Garofalo, 562 F.Supp.2d 204 ( D.N.H. 2008); Blue Nile, Inc. v. Ice.com, Inc., 478 F.Supp.2d 1240 (W.D.Wash. 2007); EMSL Analytical, Inc. v. Testamerica Analytical Testing Corp., 2006 WL 892718 (D.N.J. April 4, 2006); Pharmacia Corp. v. Alcon Laboratories, Inc., 201 F.Supp.2d 335 (D.N.J. 2002).

Professor Nguyen is a frequent speaker at national and international conferences. She also serves as an expert witness in litigation matters. She was the first American law professor to lecture at Vietnam National University Faculty of Law in Hanoi. She provides technical expertise to the Vietnamese government, law schools and bar associations. She was a Senior Fulbright Scholar in 2009 at VNU Faculty of Law; she developed a new Intellectual Property law curriculum and trained law teachers in pedagogical methods while at the Faculty of Law. She organizes and chairs the SMU Dedman School of Law’s Annual Symposium on Emerging Intellectual Property Issues. Since 2009 Professor Nguyen co-organizes with Professor Peter Raad the annual Games:Business:Law Summit.  In October 2011, Professor Nguyen organized the China IP Now Symposium wherein Chinese judges, law professors and lawyers convened to discuss the latest IP developments and innovations in China. Professor Nguyen teaches Secured Transactions, Payment Systems, The Internet/Law of Electronic Commerce, Intellectual Property, Licensing Intellectual Property, and International Intellectual Property at SMU Dedman School of Law. Prior to entering academia, she practiced law at Fried, Frank, Harris, Shriver & Jacobson (New York City) and Pryor, Cashman, Sherman & Flynn (New York City). Professor Nguyen is registered to practice with the United States Patent and Trademark Office.

Primary Articles

Apologies as Intellectual Property Remedies, __ CONNECTICUT LAW REVIEW __ (forthcoming 2012).

Taxing Facebook Code: Debugging the Tax Code and Software, __ BUFFALO LAW REVIEW __ (co-author with Professor Jeff Maine) (Lead Article)(forthcoming 2012).

Fame Law: Requiring Proof of National Fame in Trademark Law, 33 CARDOZO LAW REVIEW 89 (2011).

The History of Intellectual Property Taxation: Promoting Innovations and Other Intellectual Property Goals, 64 SMU LAW REVIEW 795 (2011) (Symposium Issue on Intellectual Property)(with Professor Jeffrey A. Maine) (SSRN's Top Ten download list for Intellectual Property Law papers, August 13, 2011).

The China We Hardly Know–Revealing the New China's Intellectual Property Regime, 55 ST. LOUIS UNIVERSITY LAW JOURNAL 773 (Lead Article) (2011).

The Unequal Tax Treatment of Intellectual Property, 130 TAX NOTES 931 (2011) (with Professor Jeffrey A. Maine).

Equaity and Efficiency in Intellectual Property Taxation, 76 BROOKLYN LAW REVIEW 1 (2010) (Lead Article) (with Professor Jeffrey A. Maine).

Dynamic Federalism and Patent Law Reform, 85 INDIANA LAW JOURNAL 449  (2010).

Justice Scalia's Renegade Jurisdiction: Lessons for Patent Law Reform, 83 TULANE LAW REVIEW 111 (2008).

Selling It First, Stealing It Later:  The Trouble with Trademarks in Corporate Transactions in Bankruptcy, 44 GONZAGA LAW REVIEW 1 (2008) (Lead Article) (Invited Symposium Issue on INTELLECTUAL PROPERTY AND BANKRUPTCY); cited in In re Interstate Bakeries Corp., 2010 WL 2332142, *7 (Bank.W.D.Mo. June 4, 2010).

Acquiring Innovation, 57 AMERICAN UNIVERSITY LAW REVIEW 775 (Lead Article) (2008) (with Professor Jeff Maine).

The Other Famous Marks Doctrine, 17 IOWA’S TRANSNATIONAL LAW AND CONTEMPORARY PROBLEMS JOURNAL 757 (2008) (Invited Symposium Issue on TRADEMARK DILUTION LAW).

Collateralizing Intellectual Property, 42 GEORGIA LAW REVIEW 1 (Lead Article) (Fall 2007).  The article was republished in UCLA Entertainment Law Journal (2008, Symposium Issue).

Giving Intellectual Property, 39 U.C. DAVIS LAW REVIEW 1693 (Lead Article) (2006) (with Professor Jeff Maine)

Holding Intellectual Property, 39 GEORGIA LAW REVIEW 1155 (Lead Article) (2005).  The article was selected and featured in the TaxProf blog on August 25, 2005 hosted by Professor Paul L. Caron.  The article was republished in State Tax Notes.

Taxing the New Intellectual Property Right, 56 HASTINGS LAW JOURNAL 1 (Lead Article) (with Professor Jeff Maine) (November, 2004), cited in In re Steelbuilding.com, 415 F.3d 1293 (Fed. Cir. 2005); Ligotti v. Garofalo, 562 F.Supp.2d 204, 219 (D.N.H.,2008).

Nationalizing Trademarks: A New International Trademark Jurisprudence? 39 WAKE FOREST LAW REVIEW 729 (Lead Article) (Winter, 2004; published Jan. 2005), selected by West Publishing as one of the best IP articles in 2004 and republished in the West’s IP Anthology 2004.

Bankrupting Trademarks, 37 U.C. DAVIS LAW REVIEW 1267 (2004).

Collateralizing Internet Privacy, 78 TULANE LAW REVIEW 553 (2004) (Lead Article).

Digital Trademark Right: The Troubling New Extraterritorial Reach of National Law, 81 NORTH CAROLINA LAW REVIEW 483 (2003).

Commercial Law Collides With Cyberspace: The Trouble With Perfection – Insecurity Interests in the New Corporate Asset, 59 WASHINGTON AND LEE LAW REVIEW 37 (2002).

Cyberproperty and Judicial Dissonance: The Trouble with Domain Name Classification, 10 GEORGE MASON LAW REVIEW 183 (Spring 2002) (Lead Article).

Shifting the Paradigm in E-Commerce: Move Over Inherently Distinctive Trademarks, The E-brand, I-brand and Generic Domain Names Ascending to Power? 50 AMERICAN UNIVERSITY LAW REVIEW 937 (Symposium Issue, 2001).  This law review article was cited by the Ninth Circuit Court of Appeals in Interstellar Starship Services, Ltd v. Epix, Inc., 304 F.3d 936 (9th Cir. 2002).

Should it be a Free for All? The Challenge of Extending Trade Dress Protection to the Look and Feel of Web Sites, 49 AMERICAN UNIVERSITY LAW REVIEW 1233 (2001), cited in Blue Nile, Inc. v. Ice.com, Inc., 478 F.Supp.2d 1240 (W.D.Wash 2007).

Blame it on the Cybersquatters: How Congress Partially Ends the Circus Among the Circuits With the Anticybersquatting Consumer Protection Act? 32 LOYOLA CHICAGO UNIVERSITY LAW REVIEW 777 (May, 2001) (Lead article).

A Circus Among the Circuits:  Would the Truly Famous and Diluted Performer Please Stand Up? The Federal Trademark Dilution Act and Its Challenges, 1 CHICAGO-KENT J. INTELL. PROP. 158 (2000).

The New Wild West: Measuring and Proving Fame and Dilution Under the Federal Trademark Dilution Act, 63 ALBANY LAW REVIEW 201 (1999).  This Article was cited by the United States Court of Appeals for the Third Circuit in a case of first impression, Times Mirror Magazines, Inc. v. Las Vegas Sports News, 212 F.3d 157, 175 (3d Cir. 2000); EMSL Analytical, Inc. v. Testamerica Analytical Testing Corp., 2006 WL 892718 (D.N.J., April 4, 2006); Pharmacia Corp. v. Alcon Laboratories, Inc., 201 F.Supp.2d 335 (D.N.J. 2002).

Using Creativity to Fight a $60 Billion Consumer Problem – Counterfeit Goods, 10 LOYOLA CHICAGO CONSUMER LAW REVIEW 88 (1998) (co-author with Maxim H. Waldbaum).



Books

Treatise, INTELLECTUAL PROPERTY, SOFTWARE AND INFORMATION LICENSING: LAW AND PRACTICE (BNA 2007) (1,534 pages) (co-author with Robert Gomulkiewicz & Danielle Conway).
 
Treatise, INTELLECTUAL PROPERTY TAXATION (co-author with Professor Jeff Maine) (BNA December 2003) (783 pages).
 
2010 Supplement to INTELLECTUAL PROPERTY TAXATION (co-author with Professor Jeff Maine) (BNA) (618 pages).
 
2010 Supplement to INTELLECTUAL PROPERTY, SOFTWARE AND INFORMATION LICENSING: LAW AND PRACTICE (co-author with Robert Gomulkiewicz & Danielle Conway) (BNA) (404 pages).
 
Casebook, LICENSING INTELLECTUAL PROPERTY: LAW AND APPLICATIONS (ASPEN 2008) (co-author with Robert Gomulkiewicz & Danielle Conway)  (609 pages)
 
Casebook, LICENSING INTELLECTUAL PROPERTY: LAW AND APPLICATIONS (Second Edition ASPEN 2010) (co-author with Robert Gomulkiewicz & Danielle Conway)  (700 pages)
 
Casebook, INTELLECTUAL PROPERTY TAXATION: PROBLEMS AND MATERIALS (co-author with Professor Jeff Maine) (Carolina Academic Press, 2004)(487 pages).
 
Intellectual Property Financing: The Intersection of Intellectual Property and Secured Transactions, in INTELLECTUAL PROPERTY AND INFORMATION WEALTH: Issues and Practices in the Digital Age, Vol. 2 Patents & Trade Secrets (edited by Peter K. Yu and published by Praeger Publishers).

Patent Donations and Tax Policy in INTELLECTUAL PROPERTY AND INFORMATION WEALTH: Issues and Practices in the Digital Age, Vol. 2 Patents & Trade Secrets (edited by Peter K. Yu and published by Praeger Publishers). Co-author with Professor Jeffrey A. Maine.

Taxing Trademarks and Domain Names in INTELLECTUAL PROPERTY AND INFORMATION WEALTH: Issues and Practices in the Digital Age, Vol. 2 Patents & Trade Secrets, Vol. 3 Trademark and Unfair Competition Law (edited by Peter K. Yu and published by Praeger Publishers) Co-author with Professor Jeffrey A. Maine. China’s IP Now Introduction, SMU Dedman School Symposium, October 11, 2011.
 
 

Speeches/Presentations

China’s IP Now Introduction, SMU Dedman School Symposium, October 11, 2011.
 
Scholarship Panel, AALS New Law Teachers Conference, June 24, 2011.
 
Apologies as Intellectual Properties: Comparing China and US Approaches , La Trobe University Faculty of Law Third International Annual Conference on Innovation and Communications Law ( Re-envisioning progress: Pluralistic visions of intellectual property in a globalized, digitized era), Melbourne, Australian, May 29-31, 2011.
 
Intellectual Property and Licensing, Hanoi Law University, May 19, 2011.
 
Legal Education in Higher Education, Hanoi Law University, May 19, 2011.
 
Understanding the Development of IP Law: A US Perspective, Vietnam Judicial Academy, May 17, 2011.
 
What Can Congress Learn from Chinese Trademark Law for its Apology For Slavery? Howard University School of Law Civil Rights and Intellectual Property Symposium, June 9, 2011.
 
TRIPS and Vietnam—A Developing Country Perspective, TRIPS Symposium, Thomas Jefferson School of Law, San Diego, April 8-9, 2011.
 
IP Panelist, Intellectual Property: Thinking Out of the Box, National Vietnamese American Lawyers Association Conference, April 1-3, 2011, Washington, D.C.
 
Moderating a Panel of Judges on the History and the Development of the Eastern District of Texas for Patent Cases. Judges T. John Ward, David Folsom and Leonard Davis. SMU Dedman School of Law February 18, 2011.
 
Organized and Developed the Program for Advanced Legal Training at SMU for the Vietnam Ministry of Justice, February 28 to March 11, 2011. 
 
Presented International Topics related to Advanced Legal Training to the Vietnam Ministry of Justice, March 1, 2011, SMU Dedman School of Law.
 
Organized the Program for the SMU Intellectual Property Symposium on the EDTX and Patents schedule for Friday, February 18, 2011.
 
Apologies as IP Remedies: Comparing China and U.S. Approaches, Boston University School of Law Intellectual Property Symposium, February 11-12, 2011.
 
Moderating: Privacy and Online Games Panel, Games:Business:Law Summit, SMU Law School, SMU Guildhall, and Center for American International Law, January 26-27, 2011.
 
Understanding Licensing Models & Law in Business and Finance, Vietnam National University, University of Economics and Law, December 28, 2010.
 
Licensing Information:  The Intersection of Intellectual Property, Contract and Privacy Laws, East China University of Politics and Law, Shanghai, China, December 22, 2010.
 
Monetizing Intellectual Property, Fudan University School of Law, December 23, 2010.
 
University as Center for Innovation Production: A Closer Examination of US Law and University-Created IP Assets, Southwest University of Politics and Law, Chongqing, China, December 21, 2010
 
Bankruptcy, Secured Financing and the Quest for Innovation, Shanghai University of Finance and Economics, School of Law, Shanghai, China, December 20, 2010.
 
Apologizing China: Apologies as Remedies in Chinese Intellectual Property Law, University of Washington School of Law, December 6, 2010.
 
Viewing Justice Through Trademark Cases, Third National POC Legal Scholarship Conference, Seton Hall Law School, September 9-11, 2010.
 
Equity and Efficiency in Intellectual Property Taxation, Intellectual Property Scholars Conference, Stanford Law School, August 12-13, 2010.
 
Scholarship: Strategies for Success; AALS Workshop for Pre-tenured Minority Law Teachers, June 16-17, 2010.
 
Commentator, Google v. China: Clash of the Titans, University of Hawaii, Richardson School of Law, March 17, 2010, IP Conference Week.
 
The New China We Hardly Know, University of Hawaii, Richardson School of Law, March 16, 2010, IP Conference Week.
 
The Evolving Development of Intellectual Property Licensing Law, Southwest University of Politics and Law, Chongqing, China, March 10, 2010
 
A Piece of Financial Reform:  The New Credit Card Law of 2010, Shanghai University of Finance and Economics School of Law, Shanghai, China, March 11, 2010.
 
Sale versus License: Licensing Trademarks and Goodwill, East China University of Politics and Law, Shanghai, China, November 25, 2009.
 
Licensing and Leveraging Intellectual Property Rights, Southwest University of Politics and Law, Chongqing, China, November 24, 2009.
 
The Laws in Licensing Law, Fudan University School of Law, Shanghai, China, November 22, 2009.
 
Examining the Financial Meltdown From Your Law School’s Courses on Contracts, Payments Systems, and Secured Transactions, Shanghai University of Finance and Economics School of Law, Shanghai, China, November 21, 2009.
 
China as Owners of Intellectual Property: An Emerging View of the New China, University of Washington, School of Law, October 19, 2009.
 
Shifting the Intellectual Property Paradigm: Stronger in China and Weaker in the United States? Intellectual Property Symposium, Seton Hall, September 4-5, 2009.
 
Comments on United Nations’ UNCTRAL Model Legislative Guide on Security Interest in Intellectual Property Assets, Experts Meetings at UNCITRAL, Vienna, Austria, June 4-5, 2009.
 
A U.S. Perspective on Cross-border Education Programs, Program on Higher Education as Service in Cross-border Economy, Center for Educational Testing, Quality, and Assurance; VNU – Ho Chi Minh City, May 14-16, 20009.
 
From Barack Obama, to My Tam and Trinh Cong Son: Right of Publicity, Faculty of Law, VNU, May 9, 2009.
 
Intellectual Property Assets in Corporate Transactions, Faculty of Law, VNU, April 25, 2009.
 
The Economic Crisis: A Commercial Law Professor’s Perspective, Economic Law Department, Faculty of Law, VNU, March 27, 2009.
 
Globalization in Higher Education: Localizing and Addressing Challenges, Program on Globalization in Higher Education, Center for Educational Testing, Quality, and Assurance; VNU – Ho Chi Minh City, March 28, 20009.
 
Valuation of Intellectual Property and Financing, Faculty of Law, VNU, April 25, 2009.
 
The Death of Perpetual, Exclusive and Royalty-Free Intellectual Property Licenses?  Vanderbilt School of Law Symposium on Law and Business, October 30-31, 2008.
 
Justice Scalia’s Renegade Jurisdiction.  Tulane Law School Intellectual Property Conference, October 3-4, 2008.
 
Intellectual Property Litigation in China:  An Empirical Study, Center for American and International Law’s Intellectual Property Annual Conference, Plano, Texas, Nov. 10, 2008.
 
Selling It First, Stealing It Back Later:  Trademarks in Corporate Transaction, Stanford Law School Intellectual Property Scholars Conference, August 6-8, 2008.
 
Trade Dress Protection: “Look and Feel” of Websites, Howard University School of Law Intellectual Property Law & Social Justice Conference, March 6-7, 2008. The presentation was reported and discussed in BNA US Law Week, Volume 76, Number 36, Tuesday, March 25, 2008.
 
What is It Worth? Evaluation of Trademark Damages and Valuation of Trademarks, ABA-ALI, New Orleans, February 28-29 (2008).
 
Intellectual Property and Bankruptcy, ABA Midyear Meeting, Los Angeles, February 9 (2008).
 
Intellectual Property and Tax Planning, ABA Midyear Meeting, Los Angeles, February 9 (2008).
 
The Intersection of Payment Systems and UCC-9, Fudan University School of Law, Shanghai, December 12, 2007.
 
UCC-9 and Bankruptcy Law, Shanghai University of Finance and Economics School of Law, December 13, 2007.
 
Intellectual Property Licensing and Financing, East China University of Politics and Law, Intellectual Property School, December 14, 2007.
 
Asking for a Cup of Columbian Coffee: The Bitter Taste of Geographical Indications Protection, University of Washington School of Law, November 13, 2007.
 
Trademark Law and Pedagogy, INTA Leadership Meeting, Orlando, November 9, 2007 (with panelist Professor Elizabeth Rowe, University of Florida, School of Law).
 
Searching for Fame? Symposium on Trademark Dilution Law, Santa Clara University School of Law, October 5, 2007 Santa Clara, CA.
 
IP Taxation: U.S. Perspectives, ALI- ABA Conference on Cross-Border Business Transactions: Intellectual Property and Related Issues, October 18-19, 2007 Toronto, Canada.
 
Intellectual Property in Secured Financing, ABA-ALI on the New Commercial Law, Boston, MA, June 1-2, 2007.
 
Online Privacy, ABA-ALI Internet Law for the Practical Lawyers, Washington, D.C., May 10-11, 2007.
 
The New Trademark Dilution Law: Is Fame Still the Name of the Game in Domestic and International Trademark Rights? Howard Law School IP Conference, March 1-2, 2007.
 
The Future of Patent Cases, Symposium on Emerging Intellectual Property Issues, SMU Dedman School of Law, February 26, 2007.
 
Collateralizing Patents: Debtor’s and Third Party’s Rights, Intellectual Property Symposium at Commission on Drafting Legislative Guide for Secured Transactions, UNCITRAL, Vienna, January 18-19, 2007.
 
Of Computers, Licensing and Bankruptcy, AALS Annual Meeting January 4, 2007, Washington, D.C.

Other

Security Interest in Intellectual Property and Licenses and the Revised Article 9, 23 The Licensing Journal 9 (Aspen Publisher, May 2003).
 
Current International Issues Relating to E-commerce: Standard Contractual Clauses for Data Transfer to Third Countries, Digital Copyright Directive & Proposed Directive on Online Privacy in the European Union, in Practising Law Institute’s Second Annual Seminar on UNDERSTANDING ELECTRONIC CONTRACTING: The Impact of Regulations, New Law & New Agreements (May, 2002) . This article was re-printed in Internet Law & Business (July 2002 Issue) .

European Directives Relating to E-commerce, in Practising Law Institute’s Understanding Electronic Contracting, UCITA, E-Signature, Federal, State and Foreign Regulation Course Book (May, 2001). This article was re-printed in Internet Law & Business (June 2001 Issue).

Intellectual Property Issues for On-line Financial Services: Trademark Issues in the World Wide West, Practising Law Institute’s New Strategies for Financial Institutions in the E-Commerce Economy Course Book (September 2000).