Introduction to Intellectual Property key to final examination spring 1996
Part I
Short essay questions; 50%
Facts Professor Ignatz Quibble teaches psychology at Virtual Ivy College. He, a few other faculty, the administration and the web server are actually located on Nantucket Island.
After years of highly original research, motivated in part by never doing particularly well on traditional intelligence tests, Quibble devised a test to measure people's "right-lobe" intelligence quotient (or RLIQ). Being naturally secretive, however, he published nothing.
Early work showed that, besides himself, some other people also scored well, e.g., those who compose accordion music, author computer-assisted instruction and sculpt linguini. Later, he found that his test was even better than the LSAT in predicting law school success.
Quibble then decided to remotely administer his test by computer and promote it as, e.g., an alternative to the LSAT. Yet, before doing so, he wanted to minimize the risk that others could free ride on his work. Just then, the blinking, Java-embellished web page of Oui, SUE! (OS!) caught his eye. Quibble made inquiry and was assured that the firm's attorneys were indeed in full command of the smoking-hot intellectual property field.
Soon thereafter, Quibble was the proud owner of a document indicating that "RLIQ" was a registered trademark in the Commonwealth of Massachusetts. A few months later and a remarkably few thousand dollars poorer, he had yet another document said to indicate that his test had survived the intense scrutiny of the Copyright Office.
Imagine Quibble's chagrin when, shortly after his test began to generate significant income, Dr. Royce Sisters downloaded it from Quibble's website and also began to measure people's "RLIQ" -- for a much lower fee. OS! filed a complaint with only copyright and trademark infringement counts. Sisters very quickly got summary judgment on all.
Feeling that OS! might not be all that was represented, Quibble wasted no time in moving his IP work to the firm where you are a new associate. He hopes to stop Sisters and, if nothing else, to recover for legal malpractice. By talking to him, you learn that: (1) a change in the wording of any question (much less all of them) would negate his test's utility, and (2) Sisters has no access to the data Quibble laboriously collected and needs to score tests properly.
Questions 1. [5 pts.] What would have been the most appropriate basis for awarding Sisters summary judgment on the copyright count(s)?
The best answer, notwithstanding cases cited in note 126 of the article, is that the expression and the "idea" are inseparable -- see the last paragraph. Points were awarded for recognizing that ideas aren't protected.
2. [5 pts.] What would have been the most appropriate basis for awarding Sisters summary judgment on the trademark count(s)?
The best answers were that RLIQ is generic or, if not because it is an acronym, it is at least descriptive without evidence of secondary meaning/ distinctiveness.
3. [10 pts.] (6 pts.) If Sisters has the audacity to apply for federal trademark registration for "RLIQ", how could Quibble learn this, and how could he best prevent it? (4 pts.) What does Quibble need for effective trademark protection?
The best answer to the first part is that applications are available shortly after filing, giving rise to the possibility of a letter of protest. Less attractive possibilities are opposition or filing an action under 43(a) (the latter assuming secondary meaning can be shown). The best answer to the second part is that Quibble needs a better mark. Many people suggested that he should register federally without considering that a descriptive, much less generic mark, won't be registered and that, being in interstate commerce by his web presence, federal registration adds little to what he already has at common law.
4. [5 pts.] What is apt to be the most important protection Quibble has for his work product? What, if anything, must he do to keep it?
The only reasonable answer is trade secret (see facts, last paragraph).... Some people suggested copyright or trademark which is pretty strange since he already lost on that. Others suggested patents, but aside from difficulties addressed in Q. 6, the question says "has", not "may get".
5. [10 pts.] Consider, e.g., the airline shuttle case we discussed. Assuming that he is not barred by res judicata, how would relief of that nature help Quibble to deal effectively with Sisters' competition? Be sure to name and indicate the state or federal source of that cause of action.
The best answer is that, although his mark is unprotectable (at least now) he could get an injunction against quality misrepresentation under 43(a) as Eastern did against NYA because, without the secret scoring data, Sisters cannot accurately measure people's RLIQ.
6. [15 pts.] [For this question, assume that an attorney is obligated to do what a reasonably informed and prudent attorney would do under the circumstances. Also, of course, if Quibble suffers no harm caused by OS! failing to meet a duty, he recovers nothing.]
One failure of OS! was to seek (or advise concerning) patent protection. (6 pts.) Had a patent been sought, which (of those we considered) case would best support his application? What would pose his most serious (not necessarily legal) problem? (4 pts.) What could interfere with seeking patent protection now? (5 pts.) What is the likelihood that Quibble could recover for legal malpractice on this or any other basis (the topic of question 5 aside)?
The best answer to the first part is that Chakrabary holds that "anything under the sun... is patentable." The difficulty is that the PTO has no examiners to evaluate such inventions and would fight tooth and nail against the test's being proper subject matter. The only answer for the second part is the 102 time bar. The last part was open ended and not worth many points. So, it didn't have a "best" answer. Some people got credit for pointing out that Quibble was egregiously overcharged for the copyright registration. Others said that he was probably SOL because, with a combination of 43(a) and trade secret protection, he was as well -- possibly better -- off than he would be with a patent, if he could get one. Some said failure to register the trademark federally but failed to provide any credible basis.
Back to IP Final Index Part II
25/30 multiple choice questions -- 50%
Correct answer in italics
1. In the context of contributory infringement, a "staple" is
a. something used to fasten several pieces of paper together2. 15 U.S.C. SS 1125(a)b. a product with at least one significant non-infringing use
c. a product with no significant non-infringing use
d. a product with many uses
a. adds little of substance to the common law3. Constitutional preemption under the patent and copyright clause allowsb. is generally interpreted to permit consumer suits
c. may be used to redress misrepresentations of sponsorship
d. does not, itself, allow common law trademark cases to be enforced in federal court
a. States to forbid imitation of functional product configurations4. Outside submittersb. Congress to authorize state protection of covered subject matter
c. Proper subject matter to be protected by states for only limited times
d. All of the above.
a. are rarely rejected out of hand5. In contrast with the scope of protection, validityb. are clearly better off if they copyright their ideas prior to submission
c. may find their rights tied to the objective novelty of their submission
a. is a common defense with respect to possible infringement of incontestable marks6. Of these, the strongest trademark wouldb. is much more likely to be raised as a copyright infringement defense
c. is much less likely to be raised as a copyright infringement defense
a. misdescribe the product, e.g., Apple (computer)7. In contrast with damagesb. suggest a favorable aspect of the product, e.g., Whopper (sandwich)
c. indicate the surname of the founder of the company, e.g., Ford (auto)
d. indicate, e.g., the town where a product is made, e.g. Waltham (watch)
a. attorney fees are not awarded in copyright cases8. Congress has the least power to reverse the case involvingb. an award of profits is based on the plaintiff's losses
c. an award of profits is based on the defendant's income
d. injunctions are freely granted against street persons who picket law offices
a. statuettes made into lamps9. Trade secret protectionb. explosion proof safes
c. pole lamps
a. is essentially cost free after the trade secret comes into existence10. To prevail against alleged infringers, plaintiffs must show copying inb. requires that the secret be registered with some state official
c. requires that the secret be registered with the U.S. PTO
d. could easily cost more than copyright protection
a. Trademark cases11. Of the following types of cases, the one that least resembles a "property" dispute isb. Trade secret cases
c. Utility patent cases
d. Design patent cases
a. patent infringement12. The most important part of a valid patent is itsb. trademark dilution
c. false advertising
d. slander of title
a. claims13. Whether that to which one asserts rights has any novelty is least important inb. abstract
c. drawings
d. specification
a. source misrepresentation cases14. An alleged infringer's awareness of another's earlier efforts is most important inb. outside submission cases
c. copyright cases
d. patent cases
a. patent cases15. Whether one is, or soon plans to be, in business is most importantin consideringb. copyright cases
c. trademark cases
a. copyrights16. Long and substantially exclusive use of "Journal of Law and Technology"b. plant patents
c. design patents
d. trademark registration
a. was inadequate to support registration17. Before filing U.S. patent applications, the matter of least concern to informed inventors is whether the inventionb. resulted in prompt registration of the mark
c. was not considered with regard to registration
a. has been offered for sale in the U.S.18. A patent applicant may best overcome an obviousness challenge by showingb. can be practiced in secret
c. has commercial value
d. has been sold abroad
a. utilityd. results unexpected from the prior artb. operability
c. novelty over the prior art
19. The outcome of the Betamax case was strongly influenced by matters addressed in
a. 35 U.S.C. SS 27120. The difference between "commercial" and "non-commercial" speech is most apt to play a role in a suit protestingb. 17 U.S.C. SS 113
c. 15 U.S.C. SS 1125
d. 5 U.S.C. SS 500
a. false advertising21. Copyright fair use is least useful ifb. trademark parody
c. induced breach of contract
d. contributory patent infringement
a. the copied work was fiction22. As a supplement to trade dress protection for a container configuration, design patentsb. the copier fails to attribute
c. the copier is a teacher
d. the copy is a parody
a. may be less valuable than a copyright on the container23. From a historical perspective, as discussed in class [regarding trademarks],b. should be combined with utility patents if possible
c. may enhance the long-term scope of protection
d. may limit the long-term scope of protection
a. SS 1127 clearly requires that users be in commerce24. Copyright is most affected by whether an otherwise qualifying workb. the PTO has required that users be in commerce
c. SS 1127 clearly requires only that users affect commerce
d. the PTO has required only that users affect commerce
a. shows proper notice25. As we discussed, the ratios of research cost to marketing and to development costs have, respectively, been estimated atb. is examined as specified in 17 U.S.C. SS 410(a)
c. is fixed by, or under the authority of, its author
d. is registered with the Patent Office within one month of publication
a. 1:100 and 1:1026. In Baker v. Selden, by "art" the court meantb. 10:1 and 100:1
c. 1:3 and 1:2
d. 1:2 and 1:3
a. the way plaintiff described how to use his bookkeeping scheme27. Rights of publicityb. plaintiff's forms for recording financial data
c. plaintiff's bookkeeping scheme itself
d. plaintiff's graphs and charts
a. invariably survive a celebrity's death28. When considering injunctions against "commercial" speech, courtsb. never involve interests akin to misrepresentation of sponsorship
c. may involve interests that could be enforced through copyright
d. as creatures of state law, must be limited in time to avoid federal preemption
a. find intent to mislead a critical prerequisite29. Firms are most apt to be liable in tort forb. regard what is "heard" as less important than what is "said"
c. regard what is "heard" as more important than what is "said"
d. afford the media considerable protection in their reporting of news
a. hiring away a competitor's employees30. After a trademark is registered with the PTO,b. breaching contracts to which they are a party
c. encouraging prospective customers to disregard agreements with suppliers
d. telling a competitor's customers that they intend to sue for patent infringement
a. its validity is incontestable after five yearsb. it expires if the registration is not maintained
c. one need do no more than renew periodically
d. certificates of continuing use must be filed periodically
