Education

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

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, 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 Tulane Law Review (twice), the Georgia Law Review (twice), 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 (thrice), the Loyola Chicago Law Journal, the Albany Law Review, the Chicago-Kent Intellectual Property Journal, 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 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); 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).

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.  She has been selected as a Fulbright Scholar for the spring semester of 2009 and she will develop a new Intellectual Property law major at Vietnam National University Faculty of Law in Hanoi. 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 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

Dynamic Federalism and Patent Law, __Indiana Law Journal __ (forthcoming 2009).

Laws on Intellectual Property (Vietnam National University Press, forthcoming 2009).

The Other Famous Marks Doctrine, 17 Iowa's Transnational Law and Contemporary Problems Journal 757 (2008) (Inivted Symposium on TRADEMARK DILUTION LAW).

Selling It First, Stealing It Later:  The Trouble with Trademarks in Corporate Transactions in Bankruptcy, 44 Gonzaga Law Review (2008) (Lead Article) (Invited Symposium in INTELLECTUAL PROPERTY AND BANKRUPTCY).

Justice Scalia's Renegade Jurisdiction:  Lessons for Patent Law Reform, 83 Tulane Law Review 111 (2008).

Acquiring Innovation, 57 American University Law Review 775 (Lead Article) (2008) (with Professor Jeff Maine).

JUSTICE SCALIA’S RENEGADE JURISDICTION: LESSONS FOR PATENT LAW REFORM ___ Tulane Law Review __ (2008) (forthcoming).

SELLING IT FIRST, STEALING IT LATER: The Trouble with Trademarks in Corporate Transactions, __Gonzaga Law Review 1 (2008) (Invited Symposium Issue on Bankruptcy and Intellectual Property to Celebrate the Inauguration of the Center for Commercial Law at Gonzaga) (Lead Article).

ACQUIRING INNOVATION, 57 American University Law Review 775(2008) (co-authored with Professor Jeffrey A. Maine).

COLLATERALIZING INTELLECTUAL PROPERTY, 42 Georgia Law Review 1 (2007) (Lead Article).

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

Scholarship:  Strategies for Success, AALS Pre-tenured Minority Law Professors Conference, June 17-18, 2009, Washington, D.C.

Comments on the Legislative Guide for Intellectual Property Financing Law, United Nations Commission on International Trade Law, Vienna, Austria, June 4-5, 2009.

Intellectual Property Assets:  Management, Exploitation and Financing, Faculty of Economics and Law, HCMC, May 25-26, 2009.

Globalization in Higher Education:  Localizing Opportunities and Challenges, Fulbright & VNU-HCMC Symposium, May 18, 2009.

A U.S. Perspective on Higher Education as Service in Cross-border Education, at the VNU-HCMC Conference on Higher Education as Service, March 27, 2009.

Right of Publicity:  From Barack Obama to Trinh Cong Son, VNU, Hanoi, May 11, 2009.

Intellectual Property Assets in Corporate Transactions, Faculty of Law, VNU, April 25, 2009.

The Financial Crisis:  A Commercial Law Professor's Perspective, Faculty of Law, Hanoi, March 26, 2009. 

Justice Scalia’s Renegade Jurisdiction: Lessons for Patent Reform, Intellectual Property Conference, October 3-4, 2008, Tulane Law School.

Selling It First, Stealing it Back Later: Cost to Trademarks in Corporate Transactions in Bankruptcy, Intellectual Property Scholars Conference, Stanford University School of Law, August 7-8 (2008).

Scholarship: Strategies for Success, AALS Workshop for New Law Teacher, June 25-26, 2008, Washington, D.C.

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).