Introduction to Intellectual Property final examination spring 1999 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.
Part I
[80 points — 20 questions total]
Multiple choice. Please choose the most correct concluding phrase or statement for each question. Be sure to enter the corresponding letters in spaces providedon the answer sheet.
A. Patents
Answer any 5 of 7.
1. Alex Cumen invented a new kind of light bulb. It uses half as much energy as older bulbs only if filaments are made of a new (bright blue) material. If Cumen chooses not to reveal the filament composition, his biggest patentability hurdle would be:
A. 35 U.S.C. § 101.
B. 35 U.S.C. § 102.
C. 35 U.S.C. § 103.
D. 35 U.S.C. § 112.
2. If Cumen’s (Q. 1) bulbs are similar to, but not the same as, some prior art bulbs, his biggest patentability hurdle (filament composition aside) would be:
A. 35 U.S.C. § 101.
B. 35 U.S.C. § 102(b).
C. 35 U.S.C. § 103(a).
D. 35 U.S.C. § 271(c).
3. If he offered his bulb for sale before filing, Cumen must consider (Q. 1):
A. 35 U.S.C. § 100(b).
B. 35 U.S.C. § 102(b).
C. 35 U.S.C. § 103(b).
D. 35 U.S.C. § 112 ¶6.
4. Cumen (Q. 1) filed a patent application. After an examiner cited close prior art, a patent issued with claims limited to bulbs having filaments 2–8 cm long. Lito bulbs, except for having 1.5 cm filaments, infringe Cumen’s claims. Lito bulbs:
A. clearly infringe under the doctrine of equivalents.
B. clearly do not infringe because Cumen’s process claims are overbroad.
C. are unlikely to infringe.
D. will infringe unless Lito can show that Cumen’s claim limitations were added to evade prior art.
5. Assume that Cumen does not practice his patent (Q. 4). To have the best chance of avoiding an injunction against the sale of literally-infringing bulbs, Lito should:
A. patent an improved Cumen bulb.
B. prove that Cumen’s inaction is economically motivated.
C. pay PTO-set royalties into a fund to be distributed to patentees.
D. prove a compelling public interest in having Cumen bulbs available now.
6. Assume that Cumen has begun selling his (Acumen) bulbs, but he assigned exclusive rights (Q. 4) to the outdoor lighting market to Optik. If Myrtle uses an Acumen bulb on her porch (outside), Optik’s rights are most clearly infringed:
A. if the Acumen package said “for indoor use only.”
B. if the Acumen package did not say “for indoor use only.”
C. if the Acumen package said “great lo-energy porch bulbs”.
D. None of the above; consumers can do whatever they please with Acumen bulbs.
7. Professor Pen has invented a revolutionary new test of writing ability to be administered and scored by computer. Given the subject matter, she must closely consider cases interpreting:
A. 35 U.S.C. § 100.
B. 35 U.S.C. § 101.
C. 35 U.S.C. § 102(b).
D. 35 U.S.C. § 112 ¶1.
B. Copyright
Answer any 5 of 7.
1. Fibb tells stories. He commits none to paper before they are told and retold.
A. Federal copyright law governs only after Fibb’s registration certificates issue.
B. Federal copyright law governs only after Fibb records a story on tape.
C. When a story is begun, Fibb is protected by federal copyright.
D. State law affords Fibb no legal rights in his stories.
2. Clay’s mostly one-of a kind, kiln-fired, works range from plates and mugs to sculpture.
A. Photographs of Clay’s plates and mugs would infringe her copyrights.
B. Those who commission works by her presumptively hold the copyrights.
C. Clay’s unique works need not be separately registered.
D. All statements above are correct.
3. Fred forwarded Mary’s Goober-L email message to Nerda who is not on the list.
A. Fred probably has an implied license (in-fact) to copy.
B. Fred’s liability is unlikely to differ if Mary had sent her email only to him.
C. 17 U.S.C. § 107(3) probably confers an implied license (in-fact) for such copying.
D. Fred’s liability is unlikely to differ if Mary had said that the firm he owns makes really good peanut butter.
4. FPLC course materials were copied by Whizzo for 3¢ per page, versus 8¢ internally.
A. It is widely held that a copier’s motivation is irrelevant.
B. Whizzo might infringe even if no one at FPLC were liable.
C. Courts will not entertain suits for such copying unless faculty and students are joined.
D. It is unfair to copy complete judicial opinions no matter who does it.
5. The Virtual Museum commissioned Lyer to design and construct a solid edifice. Virtual rejected several proposals, and Lyer adopted several minor suggestions before the structure arose near Main Street.
A. Virtual is unlikely to hold whatever copyright this work enjoys.
B. Virtual is a joint author of this work for hire.
C. Buildings are not copyrightable subject matter.
D. Unauthorized building photographs would infringe any copyright Virtual might hold.
6. Lance sends stories to The Herald. Lance learns of acceptance when he gets checks. For a fee, Herald allows Lexis-Nexis to put its full content online. Lance sued Herald.
A. Herald is liable because Lexis-Nexis infringes.
B. Herald is liable as a direct infringer.
C. Checks do not transfer copyright in freelance stories to Herald.
D. All statement above are correct.
7. After much effort, Skolar collected, translated and re-published several medieval curses and spells. Neomerlin later found an unique, ornamental wand made by Smith. Some ancient spells are etched thereon in modern English, but Smith’s wand has no other writing. Because the spells are the same as his translations, Skolar sued Neomerlin for selling copies of Smith’s wand.
A. Smith’s omitting notice would cut off any copyright Skolar might have.
B. Any award Skolar may get will be smaller because Smith omitted copyright notice.
C. Neomerlin’s copying presents a good basis for NET Act criminal liability.
D. Because Skolar was not the author of the curses and spells, he has no copyright.
C. Trademarks
Answer any 5 of 7.
1. Assume that Cumen’s patent (Q. A.4) has expired. If Beta now sells what would once have been infringing bulbs, Cumen should easily be able to:
A. require Beta to distinguish its bulbs from Cumen’s.
B. stop Beta from calling its wares “acumen” bulbs.
C. stop Beta from using bright blue bulb filaments.
D. All statement above are correct.
2. Since Feb. 1, 1997 Hillbilly [HB] waiters have worn straw hats and overalls. Also, for example, its tables look like hay bales. HB also sells a (partly) possum burger as a Hillbilly.
A. HB must get PTO registration before bringing any federal infringement actions.
B. Hillbillyis a strong mark for restaurant services and all HB food items.
C. HB need not prove secondary meaning to stop close costume and decor imitation.
D. HB can stop imitators to the point of foreclosing other Appalachian-style restaurants.
3. HB (Q. 2) also sells Moonshine beverage. While “moonshine” usually means “illegal whiskey,” nothing stronger than low-alcohol beer is legal at HB’s current locations.
A. Moonshine could become a strong trademark because it is misdescriptive.
B. If HB’s Moonshine beverage is reverse engineered, other firms selling that product cannot use HB’s mark in any way.
C. No one other than HB can sell “ Moonshine flavored” ice cream.
D. Its Moonshinebeverage must be sold in more than one state before HB can get federal registration.
4. As business began to pick up, HB (Qs. 2&3) learned that Appalachian Bakers (AB) had filed an intent to use application for Moonshine in the PTO on Jan. 1, 1997. If AB has not used:
A. HB, given first actual use, has rights superior to AB’s.
B. AB is infringing HB’s common law trademark.
C. HB’s prior use offers a good foundation for opposing AB’s registration.
D. AB’s rights may be limited to the class of goods on which it intends to use the mark.
5. AB (Q. 4) proves to have long sold Hillbilly bread, so HB and AB resolved their dispute by agreeing to avoid each other’s markets. AB then registered Moonshine for dinner rolls. Lately, White Street Cafe (WSC) began to sell Hillbilly bagels and offer Moonshine specials on all baked goods and sandwiches unsold at closing. AB sued.
A. WSC will lose if it rejected a lawyer’s suggestion for a full trademark search.
B. WSC will win if its lawyer approved its marks after a comprehensive search.
C. AB’s and HB’s marks are weaker than they would be if used by only one firm.
D. AB and HB could each stop WSC from using Hillbillyand Moonshine as described.
6. In 1970, Appalachian Bakers (AB) got a PTO registration for Hillbilly bread. It has sold only in the East. BHB, Inc. a local bakery in Beverly Hills, CA later began selling Hillbillybread.
A. Regardless of why BHB began using Hillbilly, AB can surely get an accounting.
B. Details of AB’s relief may turn on when BHB began using Hillbilly.
C. The extent of AB’s rights may turn on how much later BHB began using Hillbilly.
D. Details of AB’s relief is unrelated to whether it now wants to sell in California.
7. In March 1999, HB’s (Q. 2) service mark was registered with the PTO. It then opened a sandwich shop in southern California. BHB, Inc., has sold Hillbilly bread through grocers since 1972. If BHB now sues based on a 1973 California state trademark registration, it can
A. probably stop HB from operating anywhere in California.
B. certainly stop HB from operating anywhere BHB has sold Hillbilly bread.
C. probably not get the right to sell sandwiches retail.
D. get the right to sell both sandwiches and bread retail until HB proves actual consumer confusion.
D. Miscellaneous
Answer any 5 of 7.
1. After much work, Pen, who has taken no formal measures to protect her rights, developed a diagnostic writing test. At her RiteApwebsite, people pay $100.00 to receive a prompt, comprehensive appraisal of their writing skills by email.
A. Potential copiers’ need to have her scoring sheets is vital to weighing Pen’s IP options.
B. Public access to her scoring sheets is unimportant in weighing Pen’s IP options.
C. She could sue copyright infringers immediately.
D. Patents offer Pen the best hope for long-term, cheap protection from copycats.
2. Professor Quill offers a test like Pen’s (Q. 1) as WriteApfor $75.00. Identical appraisals are made 99% of the time, almost as quickly. If Pen sues, she can:
A. immediately register <http://www.riteap.com>, even if Quill registered it first.
B. easily prevent Quill from using any critical information from her website.
C. easily prevent Quill from making any use of the term, RiteAp, however spelled.
D. easily prevent Quill from making unwarranted claims of equivalence.
3. While her suit was pending against Quill (Q. 2), Pen threatened companies hosting and otherwise supporting Quill’s website. She accused them of direct and contributory infringement of several IP rights. If she later loses her suit against Quill, he is most apt to recover for injuries suffered if:
A. key IP theories advanced by Pen’s attorneys were rejected by the court.
B. he could prove that Pen’s assertions, later proven false, were recklessly made.
C. material facts alleged by Pen were indeed false.
D. any facts alleged by Pen were indeed false.
4. Assume that Pen’s web designer inadvertently linked the main RiteAp page to ones containing her scoring sheets (Q. 1). Nib uses data lifted from those pages.
A. By copying those sheets Nib infringed her common law copyright(s).
B. Nib improperly obtained Pen’s trade secret(s).
C. Information Nib lifted did not contain any trade secrets.
D. Nib illegally misappropriated Pen’s commercially useful information.
5. For his promise to pay royalties equal to 5% of gross income, Pen transferred her business and associated IP (Q. 1) to Sad. Unfortunately, only a short time later Sad finds that others can sell the same service at lower prices. If Sad cannot stop his competitors:
A. Pen is liable under an implied warranty of exclusivity.
B. Sad must pay as promised.
C. Sad need not pay royalties if others indeed offer the same thing for less.
D. Sad need not pay royalties if others indeed offer something better for less.
6. Terpsichore performs her intricate sword-swallowing act only for live audiences. Strong measures to avoid its being recorded worked until Sam brought his microcam. He later registered copyright in a tape of her act and began to sell it via his website. Terpsichore is unhappy.
A. Sam probably violated Terpsichore’s common law right of publicity.
B. Sam is probably liable for disclosing Terpsichore’s trade secrets.
C. Sam has a First Amendment right to distribute his tape.
D. Sam may continue selling tapes if his copyright is valid.
7. Max is a famous model with a plain anchor tattooed on his left hand. George has a similar tattoo on his right hand. Gerbil ads say “Babies raised on Gerbil foods are the model of health.” They also show George, including tattoo, in such a way that he looks like Max. Max could most straight-forwardly halt these ads by claiming that they:
A. infringe his common law trademark in an anchor tattoo.
B. violate his rights under 15 U.S.C. § 1125(a)(1)(B).
C. violate his rights under 15 U.S.C. § 1125(a)(1)(A).
D. infringe copyright in his body as a living sculpture.
Part II
[20 points]
Answer any 20 of 24.
Matching. Please enter on the answer sheet letters corresponding to thebest definitions for numbered terms. [Related terms are generally grouped. No definition applies more than once.]
1. Derivative [L] 13. Domain names [G]
2. Mathematical algorithm [M] 14. Trade dress [C]
3. Unclean hands [S] 15. Ex parte examination [P]
4. Indirect copying doctrine [D] 16. Concurrent use proceeding [B]
5. Invalidity and non-infringement [I] 17. Patent pending [X]
6. Doctrine of merger [A] 18. Objective originality [R]
7. Compulsory license [O] 19. Subjective originality [H]
8. Statutory damages [W] 20. Affidavit of continued use [Q]
9. Legal monopoly [F] 21. Maintenance fees [K]
10. Commerce clause [V] 22. Prompt registration [E]
11. Patent & copyright clause [N] 23. Ten years [J]
12. Misappropriation [T] 24. Fourteen years [U]
A. May disqualify otherwise copyrightable expression as subject matter.B. A way multiple parties might share a PTO trademark registration.
C. Source indicators that need not contain letters or words.
D. A basis for permitting what amounts to copyright protection for “useful” works.
E. Needed to obtain important copyright remedies.
F. Essentially a synonym for most “intellectual property”.
G. Registered by NSI.
H. Level of novelty required for valid copyrights.
I. Fundamental defenses to most, if not all, IP actions.
J. The term limit of a new form of intellectual property.
K. Needed to keep issued patents alive.
L. The copyright equivalent to an improvement patent.
M. Said to constitute unpatentable subject matter
N. Restricts federal power to grant rights unlimited in time.
O. A defense conditioned only on royalty payment.
P. Procedure required before some federal IP rights or remedies exist.
Q. Needed to keep trademark registrations alive.
R. Level of novelty sometimes required for outside submitters to enforce rights in “ideas”.
S. A defense that turns on a plaintiff’s conduct.
T. A cause of action severely restricted by § 301 of the Copyright Act.
U. The design patent term limit.
V. The most likely basis for any federal trade secret law.
W. A remedy unavailable for infringement of most kinds of IP.
X. Unwarranted use of these words is explicitly forbidden by statute.
Top of page
