Survey of Intellectual Property final examination fall 1988
Instructions
This is a three-hour, open-book exam; you may consult the book and any other material. Yet, your examination must be your own work; do not discuss it with other students. Put your exam number on each item you turn in (and please do not put your name on any part of the examination).
There are two kinds of questions, essay and true/false. Write your answers to the essay questions in blue books but please use only one side of the page and observe margins. You may keep the sheets with the essay questions if you wish. However, please put your true/false answers on the sheets with the questions (in the space provided) and give those pages to the proctor.
Relative question weights are given; you should apportion your time accordingly and resist spending too much time on any particular question. Also, please try to avoid answering questions which have not been asked, and take plenty of time to read the facts carefully -- missing a critical fact can cause you to waste a lot of time.
Part I
[70 points total]
Basic Facts
In 1986, Scotty Harris, an attorney, invented a device for saving water. It consists of a slotted washer to be inserted into the rotating ball joint of a more-or-less standard shower head (see very crude drawing, below). After the washer is inserted, the water will stop flowing if the shower head is pushed to the extreme left or right.
Harris had no interest in becoming a manufacturer, but she went to see a patent attorney -- having heard that she might get rich. A prior art search revealed that others had earlier used slotted washers of the same dimensions to turn a shower head into an on/off valve. However, no one had ever used a washer made from "PP-37," the material which she had used to make washers for herself and a few friends.
Harris did not know much about PP-37. She had just happened to have a sample sheet (which was earlier obtained in the context of a product liability suit) when she got the washer idea, so she used it. All she knew was that PP-37 was made in small batches for the sole use of 
and that it was exceptionally good for her purposes.
Further investigation revealed that one of ' catalogs showed a replacement part for a medical device which turned out to be just the right size and configuration for Harris' use. Her patent attorney explained that getting a useful patent under those circumstances would not be easy.
Questions
1. [5 points] One problem involved the circumstances under which her invention had been used by her friends. Please explain why that was so.
2. [5 points] Another problem was posed by her not knowing the composition of PP-37. Please explain why Harris might need such information.
3. [5 points] A third problem concerned the relative merits of her invention as compared to similar products already on the market. Why was that a problem and what would have had to be shown to overcome it?
Supplemental Facts
A last problem was that Harris would have considerable difficulty in enforcing a patent if she managed to get one. The only thing that Harris' patent attorney could think of to claim was an article of manufacture consisting of a combination of usual shower head parts and a proper sized, convex perforated washer constructed of PP-37.
Her attorney said that, being limited to such a claim, it would be impossible to stop someone from selling anything except a whole shower head containing her washer and that it would be impossible, for example, to prevent (who had no great love for Harris) from selling the washer to home owners who might then insert the washer into their own shower heads.
Questions
4. [5 points] Home owners who bought a washer and inserted it into their shower heads would seem to be infringers of a combination patent to Harris. If so, what's the problem?
5. [5 points] Why wouldn't be a contributory infringer just by selling appropriate washers in a hardware store? What difference might it make if it put the washers on a card with detailed instructions for infringing the Harris combination?
Supplemental Facts
Ms. Harris decided not to pursue a patent herself and managed to find an interested company (Bathroom Originals) to which she conveyed all right, title and interest in her invention on condition that they pay a small royalty for each washer they sold. They did not pursue the patent angle at all and contracted with to purchase the washers -- some of which they are selling as part of an entire shower head and some of which they sell, with instructions, on a card for home owner installation under the name "Shower Miser." In all cases, they claim that their product is made with the "miracle plastic PP-37."
Recently, Bathroom Originals has discovered that Clever Copies is selling an apparently identical washer on a card under the name "Shower Myzer." [Except for the slight name change, the card is an exact duplicate of Bathroom Originals' card, including the price and the claim that the product is made with "miracle plastic PP-37."] You have the honor of being even more recently retained by Bathroom Originals.
Questions
6. [15 points] Assuming that no major procedural events have been omitted from the facts, what causes of action are now available against Clever Copies (under state or federal law)? What additional facts, if any, would be needed to prevail?
7. [5 points] What difference, if any, would it make if, given these facts, your client had earlier registered the mark "Shower Miser" with the PTO?
8. [10 points] Under what circumstances, if any, would your client be able to enjoin Clever Copies from selling the washers themselves? Please explain. If they were not able to do so, will they be able to get out of paying the royalty to Harris?
9. [15 points] If Bathroom Originals had registered copyright in the text and artwork on their card at the time they first began to sell the washers, in what way, if any, would they be better off than they are now? Given that they did not do so, are they precluded from ever bringing a copyright infringement action against Clever Copies? In any event, what would a copyright action accomplish over the long run?
Part II
[30 points total]
Instructions
Answer any (but only) 15 of the following 20 questions by writing "true" or "false" in the blank provided on the left. [Be sure to turn these pages in with your exam.]
1. The word,"science," in the patent and copyright clause of the Constitution refers to human endeavors which Congress has the power to promote through the copyright law.
2. Companies which fail to have employed inventors sign, e.g., confidentiality agreements, have no basis for preventing them from taking trade secrets to competitors.
3. Refusal of a court to issue an injunction, e.g., because of unclean hands is essentially the same thing as giving the defendant a "compulsory license."
4. In a §43(a) action, the defendant will ordinarily prevail if it did not intend to deceive consumers as to the quality of its goods.
5. Regardless of whether importing an unpatented product made abroad by a patented process technically infringes that patent, the patentee may nevertheless be able to keep it out of the U.S.
6. One way for inventors to hedge their bets with regard to grace periods is to file under the PTO's document disclosure program.
7. One who deliberately breaches a contract is usually liable in tort.
8. An example of a "mere aggregation" is a ferrule for joining a pencil and eraser.
9. Regardless of whether a work is created in the course of employment, the author(s) must be identified, and copyright registration must be filed in the name(s) of said author(s).
10.Regardless of whether an invention is made in the course of employment, the inventor(s) must be ascertained, and the patent application must be filed in the name(s) of said inventor(s).
11. Trademarks expire after 20 years.
12. The "right of publicity," to the extent that it is recognized, is uniformly inheritable via will or intestate succession.
13. The surname of your course instructor is "Fields."
14. Cost-effective forums for reviewing the accuracy of a competitor's claims are provided by U.S. television networks.
15. Dicta indicates that what might otherwise qualify as "fair use" may not qualify in the absence of properly crediting a source.
16. At least with regard to commercial speech, what is "heard" is likely to be more important than what is "said."
17. The stronger a service or trademark, the easier it is for an owner to stop others from using similar marks in ways which do not directly compete.
18. We read one case in which an outside submitter who based a complaint on copyright did better than the typical person who complains of an unsolicited idea's being used without compensation.
19. False "commercial" speech may be enjoined without running afoul of the Constitution.
20. Recovery in tort for intentional interference with commercial expectancies can easily be gotten against competitors who are overly aggressive.
