Professor of Law
Tel: 214-768-4037
Fax:
Email:
xnguyen@mail.smu.edu
Homepage:
Bio
Professor Xuan-Thao Nguyen focuses on the interdisciplinary of intellectual property, the Internet, 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); Casebook, INTELLECTUAL PROPERTY AND INFORMATION LICENSING: Theories and Practice (Aspen, forthcoming 2007-2008); INTELLECTUAL PROPERTY TAXATION (BNA 2003); and Casebook, INTELLECTUAL PROPERTY TAXATION: Problems and Materials (Carolina Academic Press, 2004). Professor Nguyen’s articles are published in the U.C. Davis Law Review (twice), the Georgia Law Review, the Hasting Law Journal, the Wake Forest Law Review, the North Carolina Law Review, the Washington & Lee Law Review, the George Mason Law Review , the American University Law Review (twice), the Loyola Chicago Law Journal, the Albany Law Review, the Chicago-Kent Intellectual Property Journal, the Tulane Law Review and the Loyola Chicago Consumer Law Review. Professor Nguyen also published in the Licensing Journal (Aspen Publishers) and Internet Law & Business. Her scholarships have been cited by the Federal Circuit, the Third Circuit, the Ninth Circuit, among others, in 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); and Pharmacia Corp. v. Alcon Laboratories, Inc., 201 F.Supp.2d 335 (D.N.J. 2002); EMSL Analytical, Inc. v. Testamerica Analytical Testing Corp., 2006 WL 892718 (D.N.J. April 4, 2006). For a comprehensive list of her scholarship, please click on the link RECENT PUBLICATIONS AND PRESENTATIONS. Professor Nguyen is a frequent speaker at national and international conferences. She also serves as expert witness in litigation matters. She was the first American law professor to lecture at the Vietnam National University Faculty of Law in Hanoi. She provides technical expertise to the Vietnamese government, law schools and bar associations. 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 in the United States Patent and Trademark Office. She is an active member of the International Trademark Association and has served as a planning committee member for the INTA annual conferences in the last six years. She organizes and chairs the SMU Annual Symposium on Emerging Intellectual Property Issues. Professor Nguyen teaches Secured Transactions, Payment Systems, The Internet/Law of Electronic Commerce, Intellectual Property and International Intellectual Property at SMU Dedman School of Law.
Primary Articles
|
|
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).
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).
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); and Pharmacia Corp. v. Alcon Laboratories, Inc. , 201 F.Supp.2d 335 (N.J.D.C. 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 January 2007) (1,534 pages) (co-author with Robert Gomulkiewicz & Danielle Conway-Jones).
Casebook, Intellectual Property and Information Licensing: Theories and Practice (forthcoming 2006-2007).
Treatise, Intellectual Property Taxation (co-author with Professor Jeff Maine) (BNA December 2003)
2005 Supplement to Intellectual Property Taxation (co-author with Professor Jeff Maine) (BNA 2005) (660 pages).
2006 Supplement to Intellectual Property Taxation (co-author with Professor Jeff Maine) (BNA 2006).
Casebook, Intellectual Property Taxation: Problems and Materials (co-author with Professor Jeff Maine) (Carolina Academic Press, 2004).
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.
|
|
|
Speeches/Presentations
|
|
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, 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
On Holding and Giving Intellectual Property, John Marshall Law School’s IP and Taxation Conference, December 1, 2006.
Patent Ownership and Its Influence on Law Reform, University of Washington School of Law, November 13, 2006.
Trademark Taxation Issues in Mergers and Acquisitions: Lessons from Life Saver Acquisition, November 10, INTA’s Leadership Meeting, Phoenix, AZ.
From Negotiable Instruments to Starbuck Affinity Card: The Changing Role of Payment Systems in the Financial Market, Shanghai University of Finance and Economics, School of Law. October 17, 2006.
The U.S. Constitution and Intellectual Property Law, Vietnam National University Faculty of Law. October 23, 2006.
New Development in U.S. Internet and E-commerce Law, Bangkok University School of Law. October 27, 2006.
Collateralizing Creativity, Center for Technology & Information Research, University of Florida, School of Law, October 4, 2006.
Beyond Patent Prosecutions, High Technology Summit, University of Washington School of Law, July 20-21, 2006.
Intellectual Property Assets: Speculative Ownership? From Torts Reform to Patent Reform? October 13, 2006 SMU Corporate Counsel Symposium.
Internet & the Law, CASA Lecture, November 9, 2006.
Surfing the Internet & IP Law, Spencer-Grimes Seminar Lecture, November 11, 2006.
Intellectual Property Law Panel, ABA Appellate Judge Training Institute (on the panel with Judge Pauline Newman and Professor Shubha Ghosh), November 11, 2006.
Panelist, A Critique of the Creative Commons. University of Texas School of Law's Faculty Workshop on Open Source Movement, May 2, 2006.
TRIPS and TRADE: A Tale of Sardine, Catfish, Contents and Tax. Michigan State University School of Law's International Intellectual Property Law Symposium, April 7-8, 2006.
Patent Politics: Blame It on Marshall, Texas, How Patent Law Reforms Focus on the Wrong Venue. ABA's Annual Intellectual Property Conference, April 5-6, 2006.
Conflicts and Challenges of the Intellectual Property Collateral in International Law for Secured Transactions, Vanderbilt U. School of Law Roundtable, March 24-25, 2006.
It is a Different World: Intellectual Property, Security Interest and Bankruptcy. Texas Bar Intellectual Property Conference, March 2-3, 2006.
U.S. v. UK approaches in Trademark Licenses in Bankruptcy. INTA's Emerging Trademark Law Symposium, February 3-4, 2006.
|
|
|
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).
|
|
|
Curriculum Vitae
Education
B.A., Oberlin College
J.D., Northeastern University School of Law
Phone: 214-768-4037
|