Introduction to Intellectual Property
Final Examination
Professor Field -- Spring 2000
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 that four times as much credit is awarded for questions in Part I as for questions in Part II; please allocate your time accordingly.
Part I: Multiple choice
[80 points — 20 questions total]
Choose the most correct concluding phrase or statement; please be sure to enter its letter in the corresponding numbered space on the answer sheet .
A. Patents
Answer only 5 of 7.
1. Dopey (D) holds an improvement patent but makes only unimproved widgets. If Baggit (B) clearly infringes D’s patent, B’s best defense against an injunction is that:
A. D’s patent covers an immoral invention.
B. Patentees who do not use must be denied relief.
C. B pays reasonable royalties, even if his checks are returned by D.
D. D’s improved widget meets an important public need.
2. Gertz (G) has a better way to make methanol by using sky hooks. The market is enormous, but he expects even better methods soon to be available. In deciding whether to seek a patent, G’s least important consideration is that:
A. It will be hard to detect infringement.
B. His invention may become uneconomical before any patent issues.
C. It will be difficult, but not impossible, to satisfy § 103.
D. Trade secrecy is an option.
3. If G (Q.2) files but restricts the scope of his claims during prosecution:
A. Additional fees will certainly be required.
B. This may make it harder to prevail over non-literal infringers.
C. His patent will have a considerably briefer term than otherwise.
D. This will make it harder to get his patent.
4. If G (Q2) is the first to make sky hooks as well as discover their utility in making methanol, he may claim:
A. sky hooks in combination with whatever other apparatus he uses — but processes are unpatentable.
B. methanol, as well as his new process for making it.
C. sky hooks, and implicitly all ways to make and use them.
D. sky hooks, but only if they are machines or articles of manufacture.
5. Assume that G (Q2) also uses a computer and his invention might be regarded as a “method of doing business”. Based on the most recent decisions we read:
A. no patent is available because G’s invention spans one class of improper subject matter.
B. no patent is available because G’s invention spans two classes of improper subject matter.
C. he will face more “subject matter” problems in the U.S. than in the U.K.
D. he will face fewer “subject matter” problems in the U.S. than in the U.K.
6. The PTO Board of Appeals has rejected G’s (Q2) claims for lack of operability. G’s least effective strategy for prevailing is to:
A. seek review in the U.S. District Court for the District of Columbia.
B. seek review in the Court of Appeals for the Federal Circuit.
C. show that his invention was used commercially over a year before filing.
D. All of the above are equally [un]attractive.
7. Tarbox (T) assigned his basic ‘007 patent to Belcher (B). B believes that T infringes the claims of ‘007. T’s best defense is:
A. His assignment contained no warranties.
B. Everything he is doing is taught in an expired patent.
C. Everything he is doing is covered by his improvement patent ‘999.
D. Inventors always retain non-exclusive rights following patent assignments.
B. Copyright
Answer only 5 of 7.
1. Peters (P) is the official reporter for the Jynx state Supreme Court (JSC). Wheaties (W) recently put JSC opinions on his web site.
A. P probably has exclusive rights to publish JSC opinions under Jinx state law.
B. W cannot include any annotations P may have made.
C. P has no rights in annotations he commingles with JSC opinions.
D. If W purchased the reports, the first-sale doctrine allows his use of them on the web.
2. Zucchini (Z) sells belly-dancing, weight-reduction videotapes. Lotus’ (L) new act at X’s Bar is very similar to Z’s. If Z sues for copyright infringement under § 106(4), L’s best defense is that:
A. Belly dancing lacks the “artistry” needed for copyright.
B. L’s jiggling belly cannot constitute a fixed, tangible copy of Z’s work.
C. L lacked direct and indirect access to Z’s work.
D. Z’s tapes are useful (for weight-loss); hence they are uncopyrightable.
3. Newshawk (N) deceived Jumbo Foods. This led to a job that gave her access to employee-only areas. She then videotaped various unsavory practices for a TV exposé.
A. Such tapes have been found not to be works for hire.
B. Tapes made in “employee-only” areas are clearly works for hire.
C. Jumbo must register the tapes to have any copyright.
D. Jumbo could not prevail in copyright if the tapes lack copyright notice.
4. Bert’s (B) poster featured Jim’s (J) sculpture. After Wein (W) copied B’s poster, J sued W.
A. W will prevail; he did not copy J’s work.
B. Recovery may be reduced if B gave W permission to copy.
C. W must prevail if he had B’s permission.
D. Recovery is doubtful because posters cannot infringe three-dimensional works.
5. George (G) took a photo of Harriet standing in front of Mary’s (M) mural. Later M took a similar photo of Charles (C) in front of the same mural.
A. M is less likely to have infringed G’s rights than he is to have infringed hers.
B. M has no rights against G if her mural is visible from a public place.
C. It is inconceivable that a photo of a man could infringe one of a woman.
D. For M to prevail against G, her co-author, C, must joined the suit.
6. Scalpel (S) penned ten verses sharply critical of The Herald, a newspaper (H) . H used two of S’s verses in a nasty riposte. S now claims copyright infringement.
A. H’s “commercial” use is per se unfair if it is a for-profit entity.
B. H’s use is unfair if S consequently lost public favor and her sales have dropped.
C. H’s use is unfair if one verse could have made the point.
D. Each of the prior statements is correct.
7. Gentile (G) sells a poster with a photo of the gem-like Zircon (Z) building. Beam (B) was Z’s architect. Z and B have no written agreements concerning copyright.
A. B has no rights because his was a “work for hire” under § 101.
B. G cannot infringe if his photo was taken from a public place.
C. G cannot infringe because buildings constitute “useful articles”.
D. Z holds copyright by virtue of §§ 202 and 204(a).
C. Trademarks
Answer only 5 of 7.
1. The first federal trademark statute was struck down partly because the Supreme Court:
A. regarded Congress’s powers narrowly.
B. as it emphasized, [found] trademarks [to] last forever.
C. trademarks require creative effort.
D. regarded trademarks as monopolies.
2. Stratford Cosmetics (SC) has been in business since 1966 and holds several federal registrations . Stratford Books (SB) has operated in Chicago since 1936 and holds a state registration. Two years ago, SB registered Stratford.com as a domain name. After the firms got into a dispute, SC registered StratfordBooks.com.
A. SB has no rights to the domain name because it lacks federal registration.
B. SB can probably recover from SC for trademark misuse.
C. SC’s domain name registration does not infringe SB trademark rights.
D. SB can reciprocate by using its state registration to keep SC out of Illinois.
3. SB (Q2) recently applied to the PTO to register Stratford for book retailing.
A. SB’s success is apt to turn on 15 U.S. C. § 1052(d).
B. SC has little ability to interfere until SB’s mark is published for opposition.
C. SB cannot register in the PTO because it is not in interstate commerce.
D. SB’s success is apt to turn on 15 U.S. C. § 1052(e).
4. Bozo (B) filed a federal intent-to-use application for Froots pizza in late 1994 and obtained registration in June 1997. Denver (D) began selling Froots sandwiches in early 1995.
A. Whether pizza and sandwiches share trademark classification is irrelevant to B’s rights.
B. D retains any rights it had before B’s registration issued.
C. D would have prevailed had it protested when B’s mark was published for opposition.
D. On these facts, B seems to have had the upper hand in 1997.
5. See Q4. Assume that B ignored D until March 2000, when D opened a Froots Sandwiches a block from B’s sole shop. In May 1999 (the only other relevant date), D had 25 shops in 5 states.
A. B has no basis for challenging D’s new shop.
B. D should win if a lawyer approved its mark after a comprehensive search.
C. B is unlikely to succeed in closing any of D’s old shops.
D. D has no basis to challenge a new Froots Pizza being close to one of its older shops.
6. See Q5. Assume that B and D settled their dispute. B gave D a royalty-free license to use Froots on sandwiches and agreed not to sell sandwiches. D agreed not to sell pizza.
A. Aside from honoring their promises, B and D can now basically ignore each other.
B. B now has better chances to stop a stranger’s sale of Froots pastries.
C. Simply agreeing to avoid one-another’s goods would have been better for B.
D. Simply agreeing to avoid one-another’s goods would have been better for D.
7. Biotic’s (B) patent prevents others from selling a Whizzel game. Its slogan is: “No other game resembles Whizzel — guaranteed for life!” When its patent expires, B can insist that competitors who sell whizzel-like games:
A. coin another name for them.
B. make up a different set of rules.
C. take reasonable measures to minimize possible source confusion.
D. offers guarantees equal to B’s.
D. Miscellaneous
Answer only 5 of 7.
1. When Murgatoid (M) sued Gerbil (G) for using M’s trade secrets, various papers were filed under seal. M later sued Foobert (F) for using the same secrets. F’s attorney found unsealed court documents from the G suit that disclosed M’s secrets. He then moved to dismiss; his best argument is that:
A. The secrecy requirement is absolute.
B. F did not obtain M’s secrets improperly.
C. M’s trade secret action is preempted by federal patent law.
D. The secrecy requirement is relative.
2. Synoptic (S) believed that Whazzit (W) was infringing its patents for very expensive production equipment. After filing an infringement action, S informed W’s customers. W eventually won the suit but lost several customers in the meantime. W then sued for disparagement and related torts.
A. W will win because S gave its customers false information.
B. To win, S must prove that its communications were in good faith.
C. S should win regardless of its confidence that W’s goods were infringing.
D. W’s communication is apt to be privileged under both state and federal law. [Here, W should have read "S". Thus, B was the best, but not entirely correct, answer.]
3. Uppy (U) suggested that Procter Mills (PM) insert a hollow plastic bubble in its soap bars, e.g., to make them float. PM returned U’s submission because it was not the subject of a patent or a pending application. Two years later PM introduced “Air Ball, the soap that floats.” U sued.
A. U would probably win if he had copyrighted the idea.
B. PM should win if U’s idea had long been well known among soap manufacturers.
C. PM should win if the new product entry was a total flop in the marketplace.
D. U will win because PM introduced the same product that he had suggested.
4. Assume that, U (Q3) filed a patent application, and then PM agreed to pay 5% of gross receipts during the term of any patent but otherwise only 2%. No patent issued, and, after 23 years, PM refuses to pay because others are freely using U’s idea.
A. PM needn’t pay; it has already paid royalties long beyond the term of any patent.
B. PM needn’t pay; the idea now lacks novelty.
C. PM must pay the agreed royalty, but it need not make the product.
D. PM must both make the product and pay the agreed royalty.
5. An Apex (A) poster says, below a photo of Michael Jordan (MJ): “Do something most stars haven’t; enjoy Apex raisins.”
A. MJ is likely to prevail under § 43(a).
B. MJ’s rights of publicity are likely to be violated.
C. MJ is likely to prevail under § 43(c).
D. MJ’s right not to be disparaged seems to be violated.
6. U.S. News and World Report (USNWR) publishes school rankings, listing most schools beyond the 1st tier in alphabetical order. Non-profit Aardvark Academy (AA) appears 1st in a list of bottom tier schools. Now, an ad reads “Aardvark, at the very top of a U.S. News ranking!”
A. AA’s ad can be enjoined under § 43(a) even if literally true.
B. Such ads enjoy no First Amendment protection.
C. AA’s ad is clearly protected under § 43(c)(4).
D. Ads by non-profit firms are protected non-commercial speech.
7. See Q6. Because of a USNWR miscalculation, non-profit Jinx Academy (JA) fell from 1st to 5th tier. Among other consequences predating a published correction, JA’s president was fired and a donor withdrew a major pending gift.
A. USNWR would enjoy no privileges in an action for disparagement.
B. As a non-profit, JA is not “in commerce” for purposes of the Lanham Act.
C. Despite boosting its own sales, USNWR’s rankings constitute non-commercial speech.
D. To prevail, JA need only show that the initial ranking presented a false opinion.
Part II: Matching
[20 points]
Answer only 20 of 24
Related terms are grouped. Lettered definitions match only one term. Please enter the best letter on the answer sheet.
[V] 1. A “staple” [G] 13. Domain name
[M] 2. Mathematical algorithm [C] 14. Trade dress
[S] 3. Unclean hands [W] 15. Statutory damages
[O] 4. Fair use [B] 16. Accounting
[I] 5. Invalidity [X] 17. Damages
[A] 6. Doctrine of merger [R] 18. Rights to use
[D] 7. Infringement search [H] 19. A right to exclude
[P] 8. Ex parte examination [T] 20. Free riding
[U] 9. Preemption [K] 21. Maintenance fees
[L] 10. Commerce clause [E] 22. Prompt registration
[N] 11. Patent & copyright clause [J] 23. Renewals
[Q] 12. Mousetrap myth [F] 24. Restatement (3d) Unfair Competition
A. Broadens the impact of 17 U.S. C. § 102(b).
B. Awards are based on defendants’ incomes.
C. May be inherently distinctive if not a product configuration.
D. Reduces the risk that patent or trademark infringement will be seen as willful.
E. Required in the U.S. before important copyright remedies are available.
F. Addresses non-statutory, IP-related torts.
G. A potential service mark.
H. The key attribute of virtually all “intellectual property”.
I. Usually asserted by patent, copyright and trademark defendants.
J. Needed to keep trademark registrations in force.
K. Needed to keep patents in force.
L. Art. I § 8, cl. 3.
M. Apt to be unpatentable for lack of utility.
N. Art. I § 8 cl. 8.
O. About half of the 1976 Copyright Act addressed this topic.
P. Needed to have any patent rights.
Q. May encourage inventors to obtain economically worthless patents.
R. Not an attribute of “intellectual property”.
S. Closely related, if not identical, to the “misuse” defense.
T. Taking, not necessarily tortious, advantage of another’s efforts.
U. Explicitly addressed in Titles 15 and 17, but not 35, of the U.S. Code.
V. Essentially what the Betamax was found to be.
W. Awards are based on the degree to which defendants misbehaved.
X. Awards are usually based on plaintiffs’ incomes.
Top of page
Index to Field's Other IP Exams