Introduction to Intellectual Property final examination spring 1998 key
Instructions
- This is a three-hour, open-book exam. You may consult any written materials, but do not discuss your exam with others.
- Put your exam number and answers on the sheet provided. Do not answer more questions than indicated. If the instructions say that only 5 of 7 questions are to be answered, only the first 5 will count.
- Note differences in the amount of credit awarded for questions in Parts I and II.
[80 points -- 20 questions total]
Multiple choice. Please enter the letter corresponding to the ending that most accurately concludes each question in space provided on the answer sheet. [Key -- correct in bold.]
A. Patents
Answer any 5 of 7.
1. Dr. Wow invented a new process for making potato chips. The chips are the same, but her process uses only half as much energy and generates less waste than existing, similar processes. Wow gets such results only if her kettles are made from copper. She described her process in the Journal of Irreproducible Results. If Wow later applies for a patent on that process, her publication could create a problem under:
A. § 101.
B. § 102. [possible statutory bar beccause of publication]
C. § 103.
D. § 112.
2. Wow's energy and waste (Q. 1) improvements are most relevant to patentability under:
A. § 101.
B. § 102.
C. § 103. [some people chose A, but I can't imagine why; utility is otherwise taken care of]
D. § 112.
3. Snarf uses a process that falls within Wow's (Q. 1) issued claims. If Wow's application did not mention that a copper kettle is needed, Snarf can defend because her claims:
A. would be invalid for reasons discussed in O'Reilly v. Morse.
B. would be invalid for failure to meet the requirements of § 101.
C. would be invalid because of obviousness.
D. would be invalid for reasons discussed in Flick-Reedy Corp. v. Hydro-Line Mfg. Co.
4. Wow (Q. 1) sold her issued patent to ChipDoodle; it is upset to find Wow now infringing that patent. Of these, the case offering the best, if remote, possibility of a defense is:
A. Keeler v. Standard Folding-Bed Co.
B. Brenner v. Manson.
C. Scott Paper Co. v. Marcalus Mfg. Co., Inc. [The only case we discussed where an assignor was practicing the assigned invention. Also, the other cases don't seem remotely relevant to the facts.]
D. In re Morton-Norwich Products, Inc.
5. Wow's (Q. 1) drawings show spherical kettles. Yow uses cylindrical kettles and insists that her shape-unrestricted claims are too broad. The case most useful to resolve this dispute is:
A. Funk Bros. Seed Co. v. Kalo Innoculant Co.
B. Warner-Jenckinson Co., Inc. v. Hilton Davis Chemical Co.
C. Flick-Reedy Corp. v. Hydro-Line Mfg. Co.
D. O'Reilly v. Morse. [Of the choices, the only case where the majority discusses scope related to disclosure.]
6. Wow licensed her (Q. 1) patent to Chippo only in certain areas, reserving the rest to herself. Wow's patent has one process claim. If Elvin buys Chippo chips and sells them in her territory:
A. Elvin's acts do not infringe her claim. [His product does not infringe a process claim.]
B. Elvin's acts are apt to fall within the doctrine of equivalents.
C. Elvin is liable because her patent rights have not been exhausted. [On the contrary!]
D. Chippo is a contributory infringer under § 271(b).
7. Wow's licenses (Q. 6) also require potatoes to be bought from her. Merton, a chip potato wholesaler, infringes her patent. Based on her licenses, Merton's best defense is that she:
A. is misusing her patent. [Can't get much closer to Morton Salt than this!]
B. has exhausted her rights under the patent.
C. has an invalid patent if it fails to list her sources of potatoes.
D. all of the above.
Answer any 5 of 7.
1. Wilco's engineering drawings are very similar to Roger's. Yet, Wilco doesn't infringe:
A. because engineering drawings are useful.
B. if his drawings are based on products sold by Roger.
C. if Roger omitted copyright notice from his drawings.
D. if Wilco credits Roger as his inspiration.
2. Wood's stoves, ornamented with Alpine scenes, are imitated by Cole. In an action for copyright infringement, Wood's ability to prevail will be most affected by whether:
A. Wood has registered copyright for the Alpine scenes.
B. Cole's scenes are substantially similar to Wood's. [This is true even if Wood has not registered. One can always register, but it would do no good if this were not true!]
C. Wood's stoves are protected by design patents.
D. stoves are "useful articles".
3. Stein's book of choreographic notation is based on Metz's. Stein's book is most apt to infringe if:
A. it has a very similar organization.
B. it closely imitates Stein's notational scheme.
C. it uses very similar illustrations. [This possibility least involves § 102(b).]
D. Metz's notational scheme is novel and much better than anyone else's.
4. In the mid-1800s Virgil composed many songs. They have been passed on by locals who cannot read, much less write, music. Joanne, a folk singer, "discovered" them while utterly lost in the backwoods. His music is featured on her new CD, "Virgil of Lost Crick".
A. Joanne and Virgil are joint authors of the songs on her CD.
B. Copyright in Virgil 's songs expired as soon as Joanne recorded them.
C. Joanne's versions of Virgil's songs can be registered as derivatives under § 115(a)(2).
D. Joanne is likely to be a copyright infringer. [All evidence suggests the songs have never been fixed. No evidence suggests that she had permission from anyone with authority to grant it.]
5. Highet asked Loew to create a cover illustration for the first issue of his magazine. Loew delivered. Highet wrote him a check, the sole document regarding the transaction, that says "for painting". Loew's illustration proved popular; he kept a copy and sells it as posters.
A. Loew has no rights because his work was commissioned.
B. Loew retains rights in light of §§ 204(a) and 101 (transfer of... ownership). [The "writing" makes no reference to copyright.]
C. Loew retains no rights in light of § 202.
D. Loew retains no rights for reasons given in A and C.
6. Governor's autobiography is slated for publication in June. Challenger got a copy of the manuscript and published an unflattering newspaper review in which he quotes three poorly crafted, egotistical sentences. The newspaper's liability is most apt to turn on the fact that:
A. Governor's work is still unpublished. [See § 107!]
B. newspapers are published at a profit (hence "commercial").
C. people will be deterred from buying the book because of the unfavorable review.
D. criticism is favored.
7. Dr. Warf, who teaches at a small, private college, required his students to compile a detailed description of a fictional location featured in novels by famous author, Don Quail. Students were later allowed to post the product of their combined efforts on the college web site.
A. There can be no infringement of Quail's rights because facts are not copyrightable. [These aren't "facts".]
B. Warf is liable, if at all, as a direct infringer.
C. The college is immune from liability.
D. If fair use is exceeded, the students and college are apt to be liable for, e.g., Quails's costs and attorney's fees. [The other choices aren't plausible, and you can be fairly confident that copyright will be timely registered in works of a "famous" novelist.]
C. Trademarks
Answer any 5 of 7.
1. Gimmix, Inc. sells novelty items. Its design and utility patents on a unique and popular toy recently expired. It owns Widget as a federally registered trademark for toys but uses it on only its unique toy. Oddzoff has copied that toy and now sells it as an Oddzoff-brand widget.
A. Oddzoff is a tradename only, not a trademark. [Used both ways.]
B. Without federal registration, Gimmix would have no Lanham Act cause of action. [§ 43(a).]
C. Even if the term is generic, Oddzoff needs to distinguish its "widget". [See, e.g., the Singer cases; Eastern Air Lines.]
D. Oddzoff has every right to copy Gimmix's unpatented packaging.
2. Assume that Gimmix, Inc. (Q.1) referred to its toy as a "widget" in its patent applications. Also assume that it has since sold its toys only as "Widget" bildos.
A. Merely because Gimmix used the term in its patents, anyone can sell widgets. [See B.]
B. Whether others can sell widgets depends on what consumers now call such toys. [What was said in the patent application is not as significant as what has happened since and what consumers regard as the generic term.]
C. Because Gimmix design patent has expired, anyone can copy its toy exactly. [Not necessarily and certainly not aspects unprotected by the patent.]
D. Others cannot copy functional aspects of Gimmix's toy.
3. Assume that Gimmix's toys (Q.1) are building-blocks, commonly called "bildos". Literally truthful advertising that represents another brand as:
A. compatible with Widget bildos would violate 43(c).
B. equal to Widget bildos would violate 43(c).
C. superior to Widget bildos is potentially actionable under 43(a). [The question isn't whether the statement is true, but whether it's understood correctly.]
D. superior to Widget bildos is not potentially actionable under 43(a).
4. Gyro owns "Buttons" -- a sandwich shop near a NH racetrack that draws thousands of out-of-state visitors. Buttons has been registered in the NH Secretary of State's office.
A. Gyro has rights superior to those who later register Buttons in the PTO. [For what? Where?]
B. Gyro has rights superior to some who may later use Buttons in his area. [No doubts about this one.]
C. Gyro has rights superior to those who earlier used Buttons in NH.
D. Not being in interstate commerce, Gyro cannot yet register federally.
5. Assume that Solomon filed a federal intent to use application for "Buttons" for restaurants a few weeks earlier but had not used the mark when Gyro's shop (Q. 4) opened.
A. Until Solomon's pending mark was officially published, Gyro had no way to learn of it. [False, as harped on in class.]
B. Because Gyro used first, he could have prevented Solomon's registration. [We covered two cases on point.]
C. Because Gyro used first, his rights are superior to Solomon's. [Same cases as B.]
D. None of the above.
6. Now assume that Solomon's registration (Q.5) issued after he opened a gourmet restaurant at Lake Taho, California. Five years later; Solomon hasn't grown, but Gyro has twenty sandwich shops in four states. Along the way, Gyro learned of Solomon; his (twelve) newer sites are called "Buttons and Bows" (B&B). Two years after a B&B opened in Reno, Solomon learned of it.
A. Solomon is not clearly entitled to have Gyro drop all uses of "Buttons". [Particularly in connection with "bows". E.g., McGregor-Donigle.]
B. Solomon has abandoned all his rights outside of the Tahoe area. [Dawn.]
C. Reno is close to Tahoe, and Gyro's use of B&B there should be enjoined. [Even though it took two years to learn of B&B?!]
D. Solomon is entitled to have all of Gyro's uses of "Buttons" halted immediately. [Dawn.]
7. Alpha's "Wipa" tissue was revered among connoisseurs, but it dropped that line of business; its official abandonment of "Wipa" occurred on 1/1/98. By mid-December `97, Beta and Gamma were each selling Wipa tissues at discount stores. Their sales continue.
A. Alpha's trademark is presently infringed.
B. It would be difficult to see how either Beta or Gamma could have unclean hands.
C. Alpha seems clearly without a cause of action under 43(a). [Although it has abandoned the trademarks, there is continuing likelihood of confusion as to source or sponsorship. Discussed in the context of Manhattan.]
D. There is precedent to allow both Beta and Gamma to use "Wipa" on the same goods. [Manhattan.]
D. Miscellaneous
Answer any 5 of 7.
1. Archie Tect designed Gyro's sandwich shops. Art Kritic hates their design and arranged several unflattering photographs on a poster called, "Tasteless America". Gyro and Tect sued:
A. The poster appears to be exempt from suit under 43(c).
B. The poster would clearly infringe any copyright in the shop design.
C. Such shop designs clearly do not qualify for trademark protection.
D. The poster appears to be actionable under 43(c).
2. Frobish built a new ethanol production facility near Whazzit's tall grain elevator. Whazzit and his friends went to the top and watched almost every day. After the plant was finished, Whazzit took pictures and sold them to a Frobish competitor. Information derived from the pictures:
A. can't be used if Frobish took reasonable efforts to preserve secrecy.
B. can't be used because Whazzit used extraordinary means to discover Frobish's secrets.
C. can't be used because the competitor did not independently discover it.
D. probably can be used. [This case is easily distinguished from duPont. The pictures weren't taken until after the plant was constructed. Even then it was not covered.]
3. Fred invented an aluminum alloy that, unlike prior compositions, holds an edge. He mailed disclosures to several manufacturers. All but two returned them. Hikers took an assignment of Fred's invention; Trekkers began to practice the invention without paying anything. If Hikers sues:
A. it should lose because of Fred's unrestricted disclosures. [Everything else is clearly false.]
B. it should lose because trade secrets are preempted by federal patent law.
C. it should lose because Fred's idea lacked adequate novelty at the time of submission.
D. it would most likely win on a copyright theory.
4. Myrtle filed a patent application on a can opener. While it was pending, she got Apex to agree to a 6% royalty on gross sales during the term of any patent that might issue and 3% otherwise. No patent issued. For several years, the product said "patent pending" but doesn't now. As others have copied it, Apex's profit margin has dropped. It wants out of the deal.
A. The contract is void because the obligation to pay exceeds the patent term.
B. The contract is void because Myrtle otherwise misused her patent rights.
C. The contract is unenforceable for lack of consideration.
D. Whether the contract is enforceable is a matter of state law. [Quickpoint.]
5. Stocks, Inc. collects and disseminates securities information through a copyrighted newsletter. Subscribers must agree to keep all information in confidence. Also, covers say "Readers agree to keep all information herein confidential!" Ryders, a competitor, pays people to hang around Wall St. delis until they find an abandoned copy. Key data is then extracted and published in a much cheaper Ryders newsletter. Stocks could most likely win against Ryders:
A. for copyright infringement.
B. for inducing breaches of confidence.
C. in the 2d Circuit, on a hot news misappropriation theory. [Seems to fit all the conditions set out in Motorola.]
D. in the 7th Circuit, for Ryders' breaching the agreement on its newsletter cover. [Explicitly rejected in ProCD where the user did not purcase the item.]
6. Crooner is a professional singer. Apex tried to get him to endorse its products. When that failed, a sound-alike was hired to sing a licensed derivative jingle based on the song for which he is most famous.
A. This seems to violate Crooner's trademark. [That would mean that no other singer could record the song. A stretch at best.]
B. Under California law, Crooner probably has a poor right of publicity claim.
C. Crooner seems to have a good cause of action under 15 U.S.C. § 1125(a). [Doesn't say he would win, but chances are good. See Vanna While -- also regarding B.]
D. This seems to violate Crooner's copyright. [Pretty clear he has none.]
7. Filbert holds patents on expensive construction equipment. It sued Rosebud for infringement. When Rosebud failed to get summary judgment, Filbert ran paid announcements in the trade press explaining why Rosebud's products infringe. Some of Rosebud's best customers switched to Filbert. Ultimately, Filbert lost the patent infringement suit, and Rosebud sued under defamation, trade libel, disparagement and other theories. Based on cases we read, Filbert is:
A. liable because the harmful facts it stated were later proven false.
B. liable only for its false, harmful opinions.
C. liable only if shown to know that any harmful statements were actually false. [also liable for reckless disregard.]
D. liable only if it did not reasonably believe all of its harmful statements to be true. [E.g., Kemart.]
Part II
[20 points]
Answer any 20 of 24.
Matching. Please enter letters corresponding to the best definitions for numbered terms on the answer sheet. [Related terms are grouped. No definition is used more than once.] [Best match in brackets.]
[V] 1. Contracts implied in fact or law [T] 13. Treble damages [L] 2. Cancellation [N] 14. Statutory damages [R] 3. Bona fide intent to use [Q] 15. Right to use [M] 4. Preemption [F] 16. Right to exclude [J] 5. Expression [C] 17. Right of publicity [P] 6. Reverse engineering [U] 18. False advertising [G] 7. Common law privilege [O] 19. The act of fixing [B] 8. Derivative work [H] 20. The Federal Circuit [X] 9. Ornamental works [K] 21. CCPA [W] 10. Useful works [A] 22. Commerce [S] 11. Domain names [E] 23. Science [D] 12. Unclean hands [I] 24. Useful artsA. Defined in the Lanham Act. -- nothing else close.
B. Defined in 17 U.S.C. -- The only thing that matches 8.
C. Protected, as such, only by state law. -- 1 might be plausible except for "protected" instead of "enforced."
D. Basis for denying an injunction. -- nothing else close.
E. Constitutionally promoted by copyrights. -- nothing else close.
F. A characteristic of patents, trademarks and copyrights. -- nothing else close.
G. May afford more protection for speech than the First Amendment. -- nothing else close.
H. Has no jurisdiction over appeals from the Copyright Office. -- nothing else close.
I. Constitutionally promoted by patents. -- nothing else close.
J. Protected by copyright. -- 8 is plausible, but this is the only thing that matches 5.
K. Had jurisdiction to review decisions of the BPAI. -- nothing else close.
L. A proceeding involving a registered mark. -- nothing else close.
M. Explicitly addressed in the Copyright and Trademark Acts. -- nothing else close.
N. Remedy giving rise to a compelling need for the fair use defense. -- nothing else close.
O. Determines whether state and federal law applies to, e.g., music or choreography. -- 4 is plausible, but this is the only thing that matches 19.
P. Constitutionally permissible way to obtain another's trade secret. -- nothing else close.
Q. Conferred by neither patents nor copyrights. -- nothing else close.
R. Replaces token use for securing rights before making large marketing investments. -- nothing else close.
S. Registered by neither the PTO nor the Copyright Office. -- 1 and 17 are remotely plausible, but they have clear matches.
T. Remedy for patent or federal trademark infringement. -- nothing else close.
U. Actionable by competitors under the Lanham Act. -- nothing else close.
V. Often important in preserving trade secrets.-- nothing else close
W. Protected, if at all, under 35 U.S.C. or by trade secrets. -- nothing else close.
X. Statutory subject matter for design patents. -- nothing else close.
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