FINAL EXAMINATION

 

INTELLECTUAL PROPERTY

 

P.N. Davis

 

Tuesday, December 7, 2009

1:30 - 4:30 PM

 

THIS IS A THREE (3) HOUR EXAMINATION.

THIS EXAMINATION CONTAINS SIX (6) PAGES.

THIS EXAMINATION CONTAINS FIVE (5) QUESTIONS. 

I = 30 min.     II = 45 min.     III = 30 min.     IV = 45 min.     V = 30 min.

FILL IN YOUR EXAMINATION NUMBER ON THE BLUEBOOK STICKER.

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YOU MAY BRING IN YOUR STATUTORY SUPPLEMENT, BUT NOTHING ELSE. 

You may write/print anything in the margins and on the blank pages of the supplement.  You may add tabs to the supplement.  You may not cover up any printing in the supplement.

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Instructions:

1.  These questions will be graded on the basis of the times indicated with each questions.  The indicated time for the questions total 3 hours.  You will be given 3 hours to write the examination.  Budget your time carefully or you may not finish.

2.  Be sure to state a result whenever a question asks for one.  Merely stating the arguments on both sides of a legal issue will result in only partial credit because you will not have completed the analysis required by that type of question.

3.  If you find it necessary to make factual assumptions in order to answer a question, be sure to state the assumption.

4.  Do not assume additional facts for the purpose of avoiding a legal issue or making its resolution easier.

5.  Comment briefly on each legal issue reasonably raised by the questions and on each reason for your answer, even when you decide that one legal issue or reason controls the result.

6.  The difference between triumph and disaster may lie in a careful reading of the questions.


I.

(30 minutes)

 

            On the Tonight Show, Jay Leno often has a segment called “Truth in Labelling.”  In this segment, he displays a well-known product box with its trademark and trade dress (in color).  Leno always says these products are good ones, but then says the “government” requires a change in the product name to describe what the product really is.   He then turns the box around to show his proposed product name with tradedress similar to the original (in similar colors).  Consider the following examples:

            Product Name                                                             Proposed Substitute Product Name

            Bigfoot pizza                                                               Big Gut pizza

            Fruit Loops breakfast cereal                                       Shoe Insoles breakfast cereal

            Carnation Instant Breakfast                                        Vacuum Cleaner Dust breakfast food

            Colt 45 beer                                                                 Janet Reno’s* Secret Love Potion beer

            Cheez Whiz cheese spread                                           Goat Phlem cheese spread

            Slice lemon-lime soda                                     Slime soda**

 

            The owners of the product trademarks object to Leno’s proposed tradenames and implied characterizations and bring suit against Leno and NBC (the network on which the program appears).  They seek an injunction against such future comparisons and damages for the past ones.  Should the court grant the requested relief?  Limit your analysis to the above comparisons.  Discuss all relevant issues of federal law.  State a result.

 

Notes:  *.         Janet Reno was U.S. Attorney-General in the Clinton Administration.

            **.       Proposed tradename refers to the “dead zone” in Lake Erie during the 1970's before adequate water pollution control technologies were put in place.


II.

(45 minutes)

 

            Some enterprising university students have taken copious notes of various professors’ lectures and made them available online as a “mill” for a fee.  These notes were taken in the ordinary way, except for a few students who can use shorthand; the lectures were not surreptitiously recorded.

A.

            Professors at the University of Transylvania (in the U.S.) Bring suit against their university’s  students engaging in that activity, seeking an injunction.

            Should the court grant the requested relief?  Discuss all relevant issues.  State a result.

 

B.

            Can the students obtain a copyright for the lectures notes posted on line?  Discuss all relevant issues.  State a result.

 

C.

            Can the students sell copies of these online lecture notes?  Discuss all relevant issues.  State a result.


III.

(30 minutes)

 

            Ralph Coleman is owner of the ‘445 patent directed to systems that allow a computer user to access and search a database residing on a remote computer.  He began working as a staff scientist at the Sloan Computer Laboratory at the University of Transylvania (in the U.S.), where he studied how an individual computer workstation user could obtain services from a remote computer.  On October 27, 1990, while working with Karen Houston, a colleague at the Laboratory, Coleman successfully tested the remote database object system.  The first prototype of this system was configured to access databases on the University’s mainframe computer from a remote workstation.  A local starter portion of the remote database object system prototype was created for installation on users’ personal computers to allow the display of an icon by which the user could access the remote databases.  Coleman demonstrated this system prototype to two computer technicians employed by his Laboratory.  In 1991, Coleman and Houston adapted the remote database object system prototype to access offsite databases, in this case, on the University of Missouri’s mainframe computer.  He demonstrated the system to IT personnel at both the University of Transylvania and the University of Missouri.  This 1991 demonstration convinced the observers that Coleman had invented a viable remote database object system.

            Coleman’s patent application filing date was February 8, 1993.  The claims recited all of the elements of Coleman’s invention which were present in the prototype system on October 27, 1990, and no others.  The examiner determined that the remote database object system was novel, nonobvious, and useful.  A patent was granted to Coleman in due course.

            On March 8, 2000, Coleman filed a patent infringement suit against Microsoft, America Online and Netscape.  They defended on grounds that Coleman’s patent was invalid.

            Should the court declare the ‘445 patent invalid?  Discuss all relevant legal issues.  State a result.


IV.

Short Answer Questions

(15 minutes each – 45 minutes total)

 

A.

            Patent licensee, The Tool Company, brought an patent infringement suit against the P.D. Company.  The Tool Company manufactures a patent drill with a carbide tip.  The drill has a specially designed shape that makes drilling metals easier.  The carbide tip of the drill gives it a much longer life than a steel tip, because it is harder.  (Carbide tips have been used on drills for many decades.)  The shank of the drill is made of medium carbon steel.  The carbide tip is attached by brazing it to the steel shank with an acetylene torch producing heat of 1300 degrees Fahrenheit.  This melts the brazing metal and causes it to attach to both the steel shank and the carbide tip.  (At room temperature, the tip will never separate from the drill shank.)  [This brazing process is an old art and could be thought off as high temperature gluing.]

            Purchaser of the drill, Allison Motors, arranged with P.D. Company to replace the carbide tip of several drills manufactured by The Tool Company when their tips wore out from use.

            In its suit, The Tool Company argued that the entire drill was worn out when the carbide tip was worn out and should be replaced in its entirety.  P.D. Company argued that (1) only the carbide tip was worn out, (2) the drill shank could be reused, and (3) it was customary to replace worn-out carbide tips of unpatented drills.  Replacement of the tip is done the same way the drill is originally manufactured, by melting the brazing material with a torch and brazing on a new tip.  Once the tip is attached, it is machined to the shape specified in The Tool Company’s data sheet.

            The Tool Company’s patent refers to the entire drill in its claim, to-wit:

A drill comprising a pair of cutting edges extending from the center of rotation of the drill symmetrically with respect to the center and curved outwardly away from the direction of rotation of the drill with a greater curvature in the center portion than in the outer peripheral portion of the drill when seen in a bottom view.  The cutting edge is formed, close to its starting end, with a rake face having a rake angle approximately to zero to enable the starting end portion of the edge to cut a workpiece with greater ease.

            Should the court declare the patent infringed, or not?  Discuss all relevant legal issues.  State a result.


B.

 

            Onondaga Clothing, a manufacturer of leather jackets, is displaying a large advertising billboard on a building at Times Square in New York City depicting President Barack Obama in an Onondaga  leather jacket.

            The billboard photograph was a composite of a male model wearing the jacket with a photograph of Obama’s head superimposed.

            The President demands that Onondaga take down the billboard photograph.  Can he enforce this demand?  Discuss all relevant legal issues.  State a result..

 

C.

            In 1996, Charles Brown wrote a manuscript for a novel in which the protaganist bragged about murdering his father while a teenager, taking advantage of the juvenile justice system, and benefitting from his father’s estate.  Brown’s novel was never published.  In a child custody suit against Brown brought by his second wife (now divorced), the wife’s law firm introduced that manuscript as evidence of admissions against interest, considering its autobiographical flavor.  It excerpted portions of the manuscript in its brief.  The copy of the manuscript was obtained from Brown’s first wife.

            Recently, Brown brought a copyright infringement suit against the law firm..  Should the court find infringement, or not?  Discuss all relevant issues.


V.

(30 minutes)

 

            Briefly define the following terms:

 

            (1)        staple item of commerce

            (2)        obviousness

            (3)        contributory infringement

            (4)        use in commerce

            (5)        process

            (6)        misappropriation

            (7)        incontestability

            (8)        trade secret

            (9)        originality

            (10)      concurrent use