Intellectual Property Law Certification

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The Copyright Office plans to offer a reduced fee for applicants who file electronically (similar to the procedure used by the USPTO for trademark applicants), to encourage them to file electronically.

How does the Copyright Office plan to encourage applicants to file copyright applications electronically with the Copyright Office?

No copyright owner has the time or resources to keep track of each time his or her musical work is publicly performed to enforce his or her copyright rights. Thus, these organizations assist artists by granting licenses and then collecting fees for them and remitting the fees to them.

How do performing rights societies help copyright owners?

A patent assignment is a transfer of all patent rights and must be in writing. A license is merely a transfer of less than the entire ownership interest. It is merely a permission to use the patent.

How does a patent assignment differ from a patent license?

The USTR places countries on its "watch lists," which can lead to trade restrictions and sanctions. Once a country is placed on a watch list, an investigation is conducted to determine whether tariffs or trade restrictions should be imposed on the offending country.

How does the U.S. Trade Representative work to protect against piracy of copyrighted works in foreign countries?

These individuals and entities are entitled to "small entity status," meaning that they are given a 50% reduction on most patent fees.

How does the USPTO encourage small businesses, individual inventors, and universities in securing patent rights?

U.S. law provides that a person may not file a patent application in another country for an invention made in the United States unless the Commission for Patents grants a license allowing the foreign filing or until 6 months from the filing date of the U.S. application for the invention. This allows the USPTO to review applications that might affect matters of national security.

How does the United States ensure that national security is not impaired by the filing of patents for security-related inventions in foreign countries?

Moral rights last for the author's life. For works created jointly, they last until the death of the last surviving author.

How long do an artist's moral rights endure?

It generally takes the Office 12-16 weeks to issue a copyright registration. The Office does not conduct a substantive examination of the application; thus, it can issue registrations quickly.

How long does it take the Copyright Office to issue a registration? How can the Copyright Office work so efficiently? Discuss.

Olivia can bring a proceeding before the International Trade Commission to block infringing goods from entering the United States. The advantage is that the proceeding is less expensive and far more expeditious than a court proceeding. The disadvantage is that money damages are not available.

How might Olivia ensure that goods that violate her copyright are not imported into the country from China if she does not wish to sue the infringer? Discuss the advantages and disadvantages of Olivia's alternative to litigation.

Trademarks provide assurances that goods are of a certain quality and consistency and they assist consumers in making decisions about the purchase of goods.

Identify the two functions of a trademark.

Marks are registered on the Principal or Supplemental Registers.

Identify the two registers on which marks are registered at the USPTO.

misappropriation

If CBS News uses news information gathered by CNN without CNN's permission, such constitutes _____________ under the International News Service v. Associated Press case.

If George violated his duty of candor to the USPTO when he obtained his patent, the resulting patent issued to George may be unenforceable, and George may be precluded from suing for infringement.

If NBC News uses a photograph of Angelina Jolie to illustrate or support a news story about the Cannes Film Festival, Ms. Jolie's right of publicity is violated.

European Patent Organization.

If Scott wishes patent protection in several European countries, he should consider seeking protection under the ________________.

The applicant has three years, or until June 10, 2019.

If a Notice of Allowance for an intent-to-use application is issued on June 10, 2016, what is the maximum length of time that the applicant has to commence use of the mark (give the date).

If a copyright application is made for materials that may include trade secrets, the Copyright Office provides special relief from the deposit requirements, so that claimants are not required to disclose their confidential trade secrets.

de minimis

If a defendant asserts that what was taken of a copyrighted work is so small that its use should be excused, such is called the __________ defense.

If a design is functional rather than ornamental it cannot be patented.

Uruguay Round Agreements Act.

If a foreign work lost U.S. copyright protection because it failed to include a copyright notice at the time that such notice was required in the United States, the copyright protection for such work has automatically been restored under the __________________.

notice of allowance

If the USPTO determines that an applicant is entitled to a patent, it will send a __________ to the applicant, specifying the sum to be paid to have the patent issued.

divisional application

If the USPTO determines that an application covers more than one invention, the USPTO will create a _____________ to cover the additional invention.

Office Action

If the USPTO objects to a trademark application or finds defects in the application, it will issue a[n] ______ to the applicant, explaining such objections.

Office Action

If the USPTO objects to any part of a patent application it will issue a(n) ___________ setting forth its objections.

compulsory licensing.

If the federal government were to force a pharmaceutical company to allow another to make its patented drug for a public health benefit (in an exercise of power similar to the government's eminent domain power), such is called __________________.

False

If there is any change in a mark after it is registered, the USPTO will not accept a Declaration of Use for the mark and will insist that a new trademark application be filed for this new mark.

True

If there is doubt whether there is a likelihood of confusion between a mark in an application and a prior mark, doubt is resolved against the newcomer.

If two inventions are independently created, the first one to secure a patent for the invention may exclude the other from making, using, or selling the invention.

If two works are strikingly similar, courts may infer that the alleged infringer had access to the work.

If you find an article of interest on the Internet, you may make as many copies of it as you like because once something is posted on the Internet, it is free for all to use.

In Europe, computer software may not be patented.

Injunction

In an infringement action, a court might issue a[n] ______ to compel the defendant to cease use of an infringing mark.

In an infringement action, generally ownership of a copyright is more easily proved than copying.

the rule of doubt

In an infringement action, if courts have a difficult time determining if infringement has occurred, they will rely on ______ and resolve the matter in favor of the senior user of a mark and against the newcomer.

In an infringement action, infringement can be found when the goods or services offered under the two marks are not identical but are rather related in some way.

Graham

In determining whether an invention is nonobvious, under the __________ case, one may consider some secondary considerations, which are nontechnical and objective, such as whether there was a long-felt need for the invention or whether others have requested licenses to use it.

rule of doubt.

In general, if the Copyright Office is unsure whether a work should be registered, it will generally do so, resolving doubts in favor of the applicant, under its ___________.

In order for courts to determine whether matter qualifies as a trade secret, the information must be disclosed in open court.

progressive encroachment or infringement

In some instances, a trademark owner might allow a low level of use of a mark by another and then when the other either changes the appearance or use of the mark, the trademark owner may then object to the use. This type of infringement is often called ______.

In the United States, works are protected under copyright law as soon as they are registered with the Copyright Office.

A museum has inadvertently displayed a famous painting in such a way that it has been slightly faded by sunlight. Such is a violation of the artist's right of integrity.

Fair use.

A news reporter stands in front of a copyrighted painting in the course of reporting a news story that is broadcast on the nightly news on thefts of major art works. Such a use is permissible and is referred to as what?

A parody performed on Saturday Night Live of the latest Die Hard movie is permissible and is not copyright infringement.

Common Law

A party who is using a trademark without having registered it is said to have ______ rights to the mark.

A party with a Web site that is accessible throughout the United States can be sued anywhere in the United States merely by maintaining this Web site.

A patent application may be made by either an individual or a company.

A patent granted by the USPTO guarantees its owner the right to sell the patented invention.

A patent granted by the USPTO to Intel is as effective in Mexico as it is in the United States.

Because their works are protected under federal law from infringement, are given a long period of protection, and are provided protection from the time of their creation, artists are encouraged to create new works of art, literature, music, sculpture, and so forth. If their works could not be vigorously protected, artists would not bother creating new forms of expression.

How does copyright law stimulate and encourage the arts?

No, the work is not protected under copyright law because mere statistics are facts, which cannot be appropriated by one party to the exclusion of others. If the statistics are accompanied by text and explanation, such may be protected.

Cal has written a book that complies statistics of Major League Baseball teams. Is this work protected under copyright law? Discuss.

Certain foreign works that fell into the public domain (generally because their authors failed to comply with the prior U.S. requirement of including a copyright notice on a work) have had their copyrights in their works restored.

Certain transfers of copyrighted works may be terminated and the rights in the works returned to the original creator of the work.

False

Certification marks are used by their owners to indicate that goods are of a certain quality or from a certain region.

In this case, although only a part of the work has been taken, the court will examine not only the quantity of the work taken but also its characteristics and the nature of the work itself. The critical elements of The Da Vinci Code have been misappropriated. Moreover, the novel is highly creative and creative works are afforded more protection than more factual works. The part taken appears to be the "heart" of The Da Vinci Code (its critical plot elements), and the names of the characters are identical. In this case, infringement should be found.

Dale has been accused of infringing the wellknown book The Da Vinci Code. Dale has responded by stating that any resemblance between the two works is coincidental. The author of The Da Vinci Code has pointed out that Dale's book focuses on the death of an older gentleman in an art museum, that it involves a "secret society" within the church, and that the secret at the heart of Dale's book is that Jesus fathered a child, all elements that are present in The Da Vinci Code. Moreover, the names of the characters are the same in both works. Discuss whether infringement has occurred when only a part of The Da Vinci Code has been taken.

Joint Work

Dan composes music for a song and immediately gives it to Don to write the lyrics. Such a work is known as a ___________.

Although the registration for the mark will be cancelled if the registration is not renewed, its owner may continue to use the mark and retains all common law rights in the mark.

Discuss the effect on a mark if no renewal documents are filed to maintain it.

Federal courts have exclusive jurisdiction of copyright claims.

True

Fees for filing a trademark application using paper are more expensive than using the USPTO's electronic system to file an application.

Felice has established a Web site on which she routinely criticizes retailers such as Macy's and Target. Their trademarks are displayed, but the purpose of the site is to voice criticism of those companies. Felice has likely engaged in trademark infringement.

Filing a copyright application is fairly easy and straightforward.

reduction

Filing a patent application with the USPTO constitutes constructive __________ to practice.

Filing a patent application with the USPTO is deemed to be a request to file an application in a foreign country.

Filing of a PCT application is considered to automatically designate all PCT contracting countries.

False

For a trademark to be valid, it must be registered with the USPTO.

False

For any form of intellectual property to be protectable, it must be registered with the appropriate government agency.

For small businesses and individual inventors, most patent fees are reduced by 25 percent.

True

For some companies, the value of their intellectual property assets far outweigh their tangible assets.

For trademark infringement to be found, there must be at least one instance of actual confusion between the two marks.

Direct infringement occurs when one makes, uses, sells, or imports another's patented invention. Indirect infringement occurs when one induces or encourages another to infringe, Liability can be imposed for direct infringement without regard to the infringer's intent; however, liability for indirect infringement requires that the defendant know that infringement will occur because of his or her conduct.

Fully distinguish between direct and indirect patent infringement.

Prior to the 1998 decision in State Street, business methods were not patentable. After State Street, a business method such as the one described is patentable as long as it produces a useful, tangible, and concrete result. In this case, the new business method appears to satisfy these requirements.

Gary has developed a new method for conducting stock trading over the Internet. Is this patentable? Fully discuss under both the older view and the more modern approach.

Generally, USPTO findings as to registrability of marks can be set aside only when those findings are arbitrary, capricious, or an abuse of discretion.

Generally, hyperlinking to another's home page on the Internet is permissible.

Generally, if an employee is hired for the specific purpose of creating a certain invention, the resulting invention is owned by the company and not the employee.

Generally, marks that are "strong" are given greater protection than descriptive or "weak" marks in infringement actions.

Generally, parties such as employers and employees are free to agree which of them will own works created by the employee.

Generally, the more creative a work is, the more protection it is afforded under copyright law.

Generally, the single most important factor in determining likelihood of confusion between two marks is the similarity of the marks.

Generally, an IP audit is a routine, recurring review of a client's IP assets and is done for the purpose of monitoring the validity of those assets and protecting them. A due diligence review is usually performed when a client is entering into some significant transaction (such as borrowing money, selling assets, going public, merging into another company, etc.) and is done for the purpose of ensuring that the representations made in the transaction documents relating to ownership of IP assets are true, that the IP assets claimed as owned are, in fact, owned by the company, to ensure that a seller owns the assets it claims to own, that a borrower owns the assets it claims to own, etc., to ensure that each party to a transaction gets "what it has bargained for."

Generally, what is the difference between an "intellectual property audit" and a "due diligence review."

Generally, works created by employees in the scope of their employment are owned by the employer.

Georgia has one year after she has offered her invention for sale to file a patent application. Otherwise she will be barred due to the on sale bar. She has a one-year grace period to file her application.

Georgia started selling her invention over the Internet on April 1. When may Georgia file a patent application for her invention? Why? Discuss.

"2007 Kathleen Dixon" is an appropriate copyright notice.

Give a copyright notice for a book written by Kathleen Dixon in 2007.

Although literary characters are generally not protectable under copyright law, in this case, the character is specifically portrayed through the series of Die Hard movies, thus likely elevating the character for copyright protection against a similar action hero with his characteristics.

Is the character in the Die Hard movies, John McClane, protectable under copyright law? Discuss.

It is a copyright violation for you to edit a copyrighted movie to remove offending profanity before showing it to your children.

It is acceptable for you to circumvent a computer program that is encrypted if your purpose is to study it, test it, or locate flaws in it.

True

It is fairly easy to obtain a copyright registration.

Protection arises upon creation of the work in 2003 and will last for the artist's life and 70 years after his death.

Kyle Turner creates a painting in 2003. When does copyright protection arise and how long will it last?

invent

The United States is different from nearly all other countries because it follows the principle that the first to _____________ rather than the first to file has patent rights.

The United States is similar to most other countries in the world in that it follows a "first to file" patent system.

exhaustion or first sale

The ______ theory/doctrine generally allows a consumer who has purchased a trademarked item to resell it without committing an act of infringement.

on sale

The _______ bar requires that an inventor act promptly to secure patent protection once an invention is sold or offered for sale.

droit de suite

The ____________ doctrine allows authors of works of fine art to share in the later appreciation of the value of their works.

NET Act

The ____________ enhances criminal penalties for copyright infringement even if the infringer does not profit from the transaction.

Madrid Protocol

The ____________ is an international treaty that allows a trademark owner to seek registration in any of the more than 70 countries that are members by filing a single application.

Patent Cooperation

The _____________ Treaty provides a centralized way of filing, searching, and examining patent applications in several countries simultaneously.

Berne Convention

The _____________ establishes certain minimum levels of copyright protection to which all member nations must adhere.

Semiconductor Chip Protection Act

The ________________________ protects mask works from infringement.

specification

The part of a patent application that describes the invention and the manner and process of making and using it is called the _______________.

biopiracy

The patenting of the plant products of indigenous peoples is sometimes called _________.

national

The phase in which a patent applicant prosecutes an "international" patent in various countries is typically referred to as the _____________ phase.

Cybersquatting

The practice of registering a well-known trademark as a domain name and then misusing the domain name or "ransoming" it back to its true owner is referred to as _____________.

The primary treaty to which most nations adhere relating to copyright protection is the Paris Convention.

The problem of illegal downloading of songs from the Internet has largely been solved.

Prosecution

The process of moving a trademark application through the USPTO, from filing until registration, is called

prosecution

The process of preparing, filing, and shepherding a patent application through the USPTO is called ___________.

The results of a test that show that a certain process does not work may qualify as a trade secret.

moral rights.

The right of artists to protect their honor and reputation is called ________________.

The right of publicity typically ends upon the death of the individual.

The ringtone on your cell phone may be protected by copyright.

The rules and practices relating to patent applications for citizens of foreign nations are far different from those relating to U.S. citizens.

Two works must be identical for copyright infringement to be found.

foreign associates or associates.

U.S. law firms that work with foreign attorneys and other professionals in other countries generally refer to these attorneys as ________________.

Under TRIPs, failure to use a trademark for five years results in a presumption of abandonment.

Under TRIPs, nonuse of a trademark for __________ years creates a presumption that the mark has been abandoned

The USPTO wishes to encourage applicants to use its electronic systems, so it provides discounts for applicants who do so.

Why are fees for trademark applications that are filed electronically lower than those for paper applications?

The USPTO believes that the owners of marks are in the best position to evaluate whether conflicts might coexist and therefore if they believe that no confusion would result from coexistence of the marks, the USPTO should affirm their position.

Why does the USPTO generally accept a consent agreement between the owners of two marks by which they agree that their marks can coexist?

Assignments must recite that the trademark being assigned is assigned with its business goodwill. If a mark has not been used, it cannot have any goodwill. The purpose of the prohibition against assignment of marks not yet in use is to prevent the sale or trafficking of ITU applications.

Why are intent-to-use trademark applications seldom assignable?

The public needs access to government works; thus, these works are not protected under copyright. They should be free for all to use, copy, distribute, etc.

Why are our federal statutes not subject to copyright protection?

Patents cannot be granted unless an invention is novel and nonobvious. The only way to tell whether such bars to protection exist is to conduct a search of the prior art.

Why are searches commonly performed before patent applications are filed?

Most companies do not object to hyperlinking because linking allows more individuals to visit their sites and thus increases commercial use.

Why do most companies have no objection to the practice of others' hyperlinking to their Web sites?

It is not possible to uncover every potentially conflicting mark. Professional search firms have experienced searchers and extensive databases and thus can produce far more thorough results than most attorneys and paralegals can.

Why do most trademark professionals use the services of professional search firms?

License agreements are viewed as private agreements between the parties. They do not change ownership of the mark, and there is no effect on the chain of title to the mark. Thus, there is no reason to record these agreements with the USPTO.

Why do parties to license agreements typically not record the agreements with the USPTO?

Fan fiction violates the author's right to prepare derivative works based on their original characters. Some authors allow fan fiction because it enhances interest in their original works and encourages further sales of their works.

Why do some authors allow or fail to prohibit fan fiction? What copyright right of the author is violated by fan fiction?

Even token use of a mark is sufficient to secure a trademark registration.

Every client must have an annual intellectual property audit conducted.

Every requirement imposed on U.S. trademark applicants is also imposed on applicants who base their U.S. applications on foreign applications or registrations.

False

Every trademark search should cover not only all U.S. sources but international sources as well.

False

Examination of a trademark application is a highly predictable stage of the trademark application process.

One should use the mark in interstate commerce. Applications must be based on actual use of the mark (more than token use). Alternatively, one may file a trademark application based on a bonafide intent to use the mark.

Explain how you would acquire trademark rights in a mark such that you could file a trademark application for it.

An ITU application allows one to file a trademark application for a mark without having actually used the mark. Using a mark (in advertising, etc.) can be expensive. Then, if the USPTO refuses an application, one would have incurred the expense in using the mark and not received a registration. Thus, the ITU application allows one to file a trademark application relatively inexpensively. If the USPTO refuses registration, the applicant will not have expended a great deal of money in using or marketing the mark and can select another mark and try again.

Explain the benefit of an intent-to-use application.

Utility, design, plant

Identify the three types of patents.

A claim by ABC Co. that its cleaning pads work with SWIFFER products is acceptable, so long as the statement is true.

The three types of patents are utility, design, and plant patents.

Identify the three different types of patents.

A claim by Neutrogena that its new line of skin care products will produce "dramatic and visible results" is likely actionable.

Courts can order that works that infringe another's copyright can be destroyed.

puffing

A claim that one's product is the "chewiest, most chocolate-y cookie in the world" will not constitute false advertising because it is ______________.

A utility patent application must include at least one claim.

A violation of the right of publicity lies only if the use is "commercial."

A voluntary transfer of copyright ownership must be in writing.

A work submitted for copyright registration must be published.

An invention must be useful or "work" to be patentable.

30 Days

A Notice of Opposition or a Request for Extension of Time to Oppose a Mark must be filed with the Trademark Trial and Appeal Board within ______ of publication of the mark in the Official Gazette.

A PCT Application is filed in each country in which patent protection is desired.

A PCT applicant must enter the national phase and begin prosecuting his or her patent application in individual countries _________ months after the date the application was filed.

A blender may be copyrighted.

A buyer of a computer program such as Microsoft Office may make as many copies of it as he or she wishes.

The two registrations likely would not block an application for CLARA'S CHICKEN COOP. The meanings of "Chicken Hutch" and "Chicken House" are nearly synonymous with "Chicken Coop" and the two registrations are weak when used in connection with restaurant services as they are either suggestive of such services or possibly descriptive of such services. When numerous similar marks coexist, consumers become adept at distinguishing among the marks. In this case, consumers could likely distinguish among the names "Clara," "Chris," and "Clark." If the two registrations can coexist with each other, there should be room for CLARA'S CHICKEN COOP.

A client wishes to use CLARA'S CHICKEN COOP for restaurant services. A search discloses registrations for CHRIS'S CHICKEN HUTCH and CLARK'S CHICKEN HOUSE, both for restaurant services. Discuss whether you think these two registrations might "block" an application for CLARA'S CHICKEN COOP.

patent troll.

A company that does not practice or commercialize a patent but merely buys one for the purpose of pursuing potential infringers to obtain money through infringement claims is typically called a __________.

A copyright notice for a video game may appear on the box or "jewel case" for it.

orphan work.

A copyright work for which no owner can be found is referred to as a[n] ____________.

Yes, this conduct can violate Jolie's right to publicity. Statutes protect not only a person's picture, but also their "likeness," which might be shown by drawings, cartoons, or look-alikes. If the drawing clearly identifies Angelina Jolie (and not simply a "generic" type woman with full lips), and Jolie is able to prove this, her right of publicity (and possibly other rights) has been violated because her likeness is being used without permission for commercial uses.

A cosmetics company has been using a pen and ink drawing of a woman with long, dark hair and full lips to advertise its lip glosses. Angelina Jolie has complained that such use is a violation of her right to publicity. The company has alleged that because it is not using a picture of Ms. Jolie, there is no actionable conduct. Discuss whether the company's conduct can constitute a violation of Ms. Jolie's right to publicity.

Yes. A court can compel one to disclose information in the course of litigation. The court can fashion certain protection orders to protect the information. For example, the information might be disclosed only in the judge's chambers and not in open court.

A court is requiring Ted to disclose certain information about his employer's hiring practices. Ted had previously signed a nondisclosure agreement, agreeing not to disclose this information. Must Ted disclose the information? Discuss.

A court will always award reasonable attorneys' fees to the prevailing party in a patent infringement case

The term of its protection is 14 years from the date of grant, which is thus June 1, 2018.

A design patent was issued to Frank on June 1, 2004. Frank applied for the patent on December 1, 2002. What is the term of its protection?

parent

A divisional application created to cover a separate invention retains the filing date of its ________ application.

A domain name registrar can be held liable for registering a domain name that infringes that of another because registrars have a duty to investigate before registering domain names.

orphan drug.

A drug that is used to treat a disease that affects a relatively small group of people is given quasi-patent protection even though it may lack novelty and is referred to as a[n] _________.

True

A generic term such as "BUTTER" (used in connection with butter) can never be registered as a trademark.

A genetically altered oyster may be patented.

Grace Period

A grace period is a period after a document is due in which the document may be filed late (nearly always accompanied by a late fee or surcharge).

blue penciling.

A judge has decided that ABC Company's noncompetition clause is too restrictive and has decided to modify it so that it is enforceable. The process of reforming the clause is called __________.

A live speech is protectable under copyright law.

A patent is enforceable and effective only after it has been issued by the USPTO.

A patent license may be for the term of a patent or for a more limited time period

A patent owner must prove that every claim in his or her patent has been infringed in order to prevail in an infringement action.

pioneer patent

A patent that represents a significant breakthrough in the art is called a ____________, and it is given broad protection against infringement.

False

A pending intent-to-use application may be assigned to another so long as there is valuable consideration.

injunctive relief.

A plaintiff who desires that a court order the defendant to cease use of copyrighted material would seek ___________.

A provisional patent application is less formal than a full utility patent application.

Yes. This work can be deemed a work made for hire (and thus owned by the publishing company as the commissioning party) if three conditions are met:• It is specially ordered or commissioned (which appears to be the case in this situation);• The work falls into one of the nine specially enumerated categories of 17 U.S.C. 101 (which it does, because it is an instructional text); and• The parties agree in writing that the work is one made for hire. Thus, in this case, it is critical whether the parties agree in writing that the work is one made for hire. If they so agree in writing, then the publishing company will own the copyright. If there is no writing, then Tina owns the copyright.

A publishing company engages Tina, an independent contractor, to write a student textbook. Does it make a difference with regard to copyright ownership in the work if the agreement regarding copyright ownership is oral or is in writing? Discuss fully.

True

A single color can be registered as a trademark.

True

A specimen showing use of the mark is not required to renew a trademark registration.

gray market goods

A synonymous term for "parallel imports" is ______.

bully

A trademark ______ is a trademark owner that uses its trademark rights to harass and intimidate another business beyond what the law might be reasonably interpreted to allow.

False

A trademark application that identifies "all goods in I.C. 16" would be acceptable.

False

A trademark owner has an absolute right to prohibit any and all uses of its marks.

True

A trademark search can provide information as to how the USPTO handled and reviewed trademark applications for marks similar to that being searched.

False

A trademark search will uncover every possibly conflicting mark.

A trademark that is extremely well known in the Pacific region of the United States can be diluted, even if the mark is not well known in other parts of the country.

The new work probably does not infringe, unless its characters and settings are highly similar to or borrow from Bridget Jones's Diary. The idea of a single woman and her relationships is not particularly original and is probably no more an infringement of Bridget Jones's Diary than it is of the old sitcom That Girl. Such a common idea cannot be exclusively appropriated by one party.

A writer has written a new novel about a single 30-year old woman living on her own in London and her friendships and relationships. Does this work infringe the copyright in Bridget Jones's Diary? Discuss.

defensive patenting.

ABC Co. has obtained a patent for a new and useful business process, not because it desires to use the process but merely because it is concerned someone else might patent it and then preclude ABC from using it. Such a practice by ABC in obtaining a patent is called ______________.

Yes. It appears that the information is valuable, and although it is known outside the company, it is disclosed only to those who have a need to know it. Secrecy need not be absolute. It's acceptable that senior executives and these vendors know the information.

ABC Co. owns several proprietary processes, which are critical to its survival. Senior company executives know the information as well as a few vendors who need to know the information to provide services to ABC. Does this information qualify as a trade secret?

ABC should make sure the BlackBerry devices are properly "cleaned" or "swiped." They undoubtedly have valuable information stored in them, and ABC needs to ensure this information is not disclosed.

ABC Co. provides BlackBerrys to its senior managers. Last week, the company bought new BlackBerrys for the managers. What should ABC do with regard to the old BlackBerrys?

No. Once a first sale occurs, even abroad, the owner of the work (in this case, LMN) can resell the item anywhere without the permission of the copyright holder. Under Quality King Distributors, Inc. v. L'anza Research International, the first sale by ABC is said to exhaust its rights.

ABC Inc. has placed copyright notices on its games manufactured in the United States. The games are then sold to LMN Co. and exported for exclusive sale by LMN outside the United States. The games were then imported back into the United States by LMN without ABC's permission. ABC has alleged that such importation violates its exclusive right to distribute the games. Have ABC's copyright rights been violated? Discuss and identify the principle that governs your answer.

Yes. Patents are property, and thus they can be used to secure an obligation. In the event of a default, the patents may be seized by the bank.

ABC Inc. needs to borrow quite a bit of money from a bank. The bank is insisting that the debt be secured by various assets of ABC. May ABC pledge IP assets, specifically patents, as security? Discuss. What will happen to the assets if ABC fails to repay the bank its money?

NAPA VALLEY DREAM is impermissible because it implies that the wine is from the famous winemaking region of California's Napa Valley. Under TRIPs, such is impermissible. The mark OAK BARREL RED should be permissible (assuming it is not deceptive and is really aged in oak barrels).

ABC Inc. plans to offer two wines produced in the State of Washington and offered under the marks NAPA VALLEY DREAM and OAK BARREL RED. Are these marks permissible? Discuss. What international agreement governs your answer?

An inventor may lose his or her rights to file a patent application by delaying in filing an application for an invention.

Courts require trademark owners to scour the Internet to find offending uses of their trademarks.

ABC should block out portions of the computer program (its source code). The Copyright Office allows this in cases in which programs contain trade secrets. If an applicant does not wish to deposit even blocked-out portions of source code, it can submit object code with a written confirmation that the material does contain copyrightable material. Under the rule of doubt, the Copyright Office will register the work. If questions later arise as to copyrightability, a court will determine such.

ABC Inc. wishes to file a copyright registration for the computer program it has developed; however, ABC is concerned that others might see the computer program's features if ABC deposits it with the Copyright Office. The program is critically important to ABC's business; if it is discovered by a competitor, ABC will likely be forced out of business. What should ABC do?

If ABC's Web site is passive and allows no interactivity in New Mexico, it cannot be subject to personal jurisdiction in New Mexico. It is a passive Web site only. However, if ABC is actively conducting business and entering into contracts with New Mexico residents (as would be the case if they could order through the Web site), then ABC would be subject to jurisdiction in New Mexico and could be sued there.

ABC Inc.'s Web site is available all throughout the United States. Viewers may read about ABC's interior decorating services and see sample decorating projects. May ABC Inc., a Delaware corporation doing business only through its store in Delaware, be sued in New Mexico? Would your answer be different if ABC allowed consumers in New Mexico to order household items through its Web site? Discuss.

The effective filing date is April 1. Under the Paris Convention, the application is given a priority filing date that relates back to the earlier filing date.

ABC Inc., a U.S. corporation, has filed an application for its trademark in the USPTO on April 1. If ABC files an application for the mark in France on July 1 of the same year, what is its effective filing date in France? Why? What treaty governs your answer?

The effective filing date is November 1. Under the Paris Convention, the application must be filed within six months in order to secure the earlier U.S. filing date. In this case, the application was filed in France seven months after the U.S. filing date.

ABC Inc., a U.S. corporation, has filed an application for its trademark with the USPTO on April 1. If ABC files an application for the mark on November 1 of the same year, what is its effective filing date in France? Why?

Yes, the claim constitutes false advertising. The claim is literally false. When medical or scientific claims are made, they must be objectively true. This claim purports to provide test results; thus, such a claim must be true.

ABC Inc., a pharmaceutical company, has claimed in its recent advertisements that "nine out of ten doctors recommend" its new drug, when actually only a small percentage of doctors recommend its drug. Does ABC's claim constitute false advertising? Discuss.

No. The examination of applications at the USPTO of applications based on foreign registrations is the same as that for U.S.-based applications. Thus, if the mark is descriptive, the application will be rejected by the USPTO, even though the mark has achieved registration in other countries.

ABC Inc., an Italian corporation, obtained a trademark for its pasta products in Italy. Is the United States obligated to register the trademark in the United States? Discuss.

No. To prevail in a trade dress action the plaintiff must show that its trade dress is nonfunctional. The facts clearly show that ABC's kitchen plans are functional because they help ABC achieve superior results. If the "plans'" are in writing, they may constitute copyrightable expression, and perhaps XYZ can be sued for copyright infringement.

ABC Inc., which owns numerous restaurants in the United States, has noticed that its competitor, XYZ, has "copied" ABC's kitchen layout, food preparation centers, and kitchen plans. ABC adopted the kitchen layout after several years of experimenting with different plans, and the layout helps ABC serve food more efficiently and effectively. Is ABC likely to prevail in an action against XYZ for infringement of trade dress?

No. Reduced consumer demand does not excuse nonuse. This is exactly the type of mark the USPTO wants to eliminate. It is not in use and there is no excuse for such other than the fact that the product offered under the mark has fallen out of favor with the public.

ABC has not used its mark for a few years because consumers prefer a different product offered by a competitor of ABC. Discuss whether this is excusable nonuse such that the USPTO would accept a Declaration of Use/Nonuse for the mark.

False

Abandonment of a mark causes a loss of all rights to a trademark.

The work is copyrightable. Although facts are ordinarily not copyrightable, in this case, the author has selected certain factual items and grouped them together in a new presentation. Such a work is protectable as a compilation.

Adam has gathered together a list of weather statistics from the past 20 years and put them into an interesting arrangement, showing weather patterns of large U.S. cities. Is this work copyrightable? Why? Discuss.

True

Advertising materials and brochures are not acceptable specimens to show use of a mark for wallets.

After an assignment of a patent is made, it must be recorded with the USPTO.

affidavit of incontestability

After five years of continuous use of a mark, its owner may file a[n] ______ to preclude various challenges to the mark.

Claire should file a reissue patent to enlarge the claims. However, Claire must do this within 2 years after the original patent is granted.

After her patent issued, Claire discovered that she could have claimed more than she did in her patent application. What should she do to enlarge her claims? When should Claire do this?

performing rights society.

An organization that issues licenses to others to allow them to play copyrighted music and remits license fees to the copyright owners (for example, ASCAP and BMI) is called a ___________.

An owner of Microsoft Office may make a backup copy of the program.

The extra wording is mere "surplusage." It has no legal effect and provides no extra rights to Al beyond what the Copyright Act already provides. Such additional matter is usually merely added for the comfort of the copyright owner.

Al Gregory, a copyright owner, displays the following copyright notice with his recently published poem: " 2007 Al Gregory, All rights reserved." What is the effect of the "extra" language in the copyright notice?

The information has been innocently obtained by ABC. Thus, it will not have liability for obtaining the information. However, it cannot use the information after Alex's notification.

Alex inadvertently faxed a confidential document to ABC Co., his company's chief competitor, rather than to one of the company's other offices. Alex immediately notified the recipient that the fax had been sent in error and demanded its return. Does ABC have any liability for obtaining the information or if it uses the information after Alex's notification?

All PCT applications are published 18 months after they are filed.

All business methods are patentable.

False

All forms of intellectual property have a fixed period of duration

An application for a patent must be signed by all inventors.

20 years after filing

An application for a utility patent was filed on September 1, 2015, and was granted on June 1, 2016. When will the patent expire?

compulsory license.

An arrangement by which license fees are set by statute, allowing one to distribute a copyrighted sound recording so long as the statutorily set fee is paid to the Copyright office is called a ___________.

Under the fair use doctrine, certain uses of copyrighted material are permissible because it benefits the public and promotes the arts and sciences. Quoting excerpts from copyrighted materials in a review or criticism of the work is explicitly recognized by the Copyright Office as a fair use. However, in this case, one would have to consider the amount "taken" because the facts state that the mount taken was "extensive." Moreover, Smith's novel is creative and the more creative a work is, the higher is its level of protection. Additionally, many courts believe that the most important factor in analyzing cases under the fair use defense is the effect of the use on the market for the copyrighted work. In this case, if The New Yorker's use diminishes the potential market for Smith's book, the use is likely not a fair use. Moreover, The New Yorker's use is for commercial purposes, which although such will not defeat a fair use defense, it certainly is less likely to be permitted than use for a noncommercial purpose. This is a close case, and more facts are probably needed in order to determine the amount taken. In general, however, because literary reviews must use the original work, it would be difficult for Smith to prove infringement.

An article in The New Yorker magazine quotes extensively from Smith's recent novel (without his permission) in order to review Smith's novel. Is such use permissible? Smith contends that so much of his works were discussed that no one will want to buy his novel now. Discuss whether you think copyright infringement has occurred, and identify the name of the principle that governs your answer.

An assignment of a copyright must convey all rights because ownership rights in a copyrighted work are not divisible.

An assignment of patent rights may be oral or in writing to be effective.

Under the work made for hire doctrine, IBM will own the copyright because it was created by its employee (assuming it was created in the scope of employment). Copyright in works made for hire endure for 95 years from publication of the work or 120 years from creation, whichever is shorter.

An employee creates a logo for IB

An infringer must infringe the entire bundle of copyright rights (the right to reproduce, perform, distribute, etc.) in order to be liable for copyright infringement.

True

An intent-to-use applicant must file a specimen when the Statement of Use is filed

True

An intent-to-use application cannot proceed to registration until actual use of the mark in commerce has been shown.

Any coauthor may grant a nonexclusive license to another party to use a work that was jointly created.

False

Any mark that cannot be registered on the Principal Register can be registered on the Supplemental Register.

True

Any member of the public may view any documents filed in connection with anyone's trademark application.

False

Any trademark applicant may use the registration symbol (®) once an application for the mark is filed.

Goodwill

Any trademark assignment must recite that the ______ symbolized by the mark is assigned with it.

Any trademark registration issued by the USPTO must be preceded by actual use of the mark that is the subject of the registration, whether the applicant is a U.S. citizen or is basing its application on a foreign registration.

Apex can preregister the film and sue for infringement while the film is still being prepared for commercial release.

Apex Film Studios, Inc. is concerned that its planned summer blockbuster film will be pirated. What might Apex do while the film is in production to protect the film from being infringed?

Applicants for copyright registration use the same type of form no matter what type of work registration is sought for.

6 Months

Applicants usually have ______ to respond to substantive defects in or objections made to a trademark application by the USPTO.

Yes. Once the U.S. registration is issued, actual use must occur thereafter so that the owner can verify use between the fifth and sixth year after registration and every ten years, and the owner must satisfy renewal requirements as well.

Are U.S. trademark registrations that are based on foreign registrations subject to U.S. requirements relating to maintenance of trademark registrations? Discuss.

No. Merely making suggestions or giving directions to one creating a work is not sufficient to make one a joint author.

As Dan composes music at home on his piano, his wife occasionally makes suggestions and comments, some of which Dan follows. Is the resulting work a joint work? Discuss.

The dissatisfied party may appeal to the Court of Appeals for the Federal Circuit or may initiate a civil action in federal district court, which will consider the issues de novo.

Assume a party is dissatisfied with the decision of the TTAB in a cancellation proceeding. What two avenues of recourse are available? Be specific.

Mark may not grant an exclusive license without Jack's permission (although he may grant a nonexclusive license without such permission). Because each author has an equal undivided interest in the copyright tothe work as a tenant in common, Mark may prepare a derivative work based on the original without Jack's permission.

Assume that Mark and Jack are coauthors of an article. May Mark grant Rita an exclusive license to use the work without Jack's permission? May Mark prepare a derivative work based on the original work without Jack's permission? Discuss.

The date is February 1, 2016, the date of filing of the application. When an ITU application achieves registration, its date of first use is considered to be the date of the application's filing. This filing date constitutes "constructive use" of the mark.

Assume that Paul files an intent-to-use application with the USPTO on February 1, 2016. Paul uses the mark on August 1, 2016, and obtains a registration for the mark on November 1, 2016. For purposes of determining priority of use in a later dispute with another person or entity, what date is used for Paul's mark? Discuss.

The registration is cancelled as to any goods for which the mark is not in use. Thus, there is no longer any registration for the mark in I.C. 3.

Assume that a mark is registered in I.C. 1, 2, and 3. The Declaration of Use for the mark shows use in I.C. 1 and 2. What happens with respect to the mark for I.C. 3?

An affidavit/declaration of use must be filed between years five and six after registration (in this case, between December 1, 2021, and December 1, 2022), and every ten years thereafter. A renewal must be filed every ten years (in this case, between December 1, 2025 and December 1, 2026 for the first renewal document).

Assume that a trademark is registered December 1, 2016. Identify the names of all documents and give all dates to maintain the registration in force.

The report might recommend that the client sell or license this mark to produce revenue if the client does not intend to use the mark. Alternatively, the report should recommend that the client immediately begin using in the mark (in more than some token fashion) because failure to use a mark for three years leads to a presumption of abandonment.

Assume that an IP audit discloses that a client has not used one of its registered trademarks in more than two years. What might the audit report recommend to the client with regard to this mark? Why?

For the use-based application, a registration will issue several weeks after the notice of allowance is issued. For intent-to-use applications, however, the applicant must now show actual use of the mark; the applicant must file a statement of use or a request for extension of time to file a statement of use within six months of June 1, 2016 (or by December 1, 2016). Thereafter, the applicant must continue either to show use of the mark or file additional requests for extensions of time to file a statement of use every six months. In no event may the statement of use be filed later than June 1, 2019.

Assume that notices of allowance are issued for both a use-based application and an intent-to-use application on June 1, 2016. Describe the next steps that occur for each type of application.

The applicant can assert that the mark has been in continuous use in commerce for five years (which results in a presumption of acquired distinctiveness); the applicant can allege that the mark has acquired distinctiveness through significant sales and use such that consumers associate the mark with the applicant.

Assume the USPTO has refused registration of a mark on the basis that it is descriptive. In what ways might the applicant demonstrate that the mark has acquired descriptiveness? Discuss.

derivative work.

Author John Grisham has granted another permission to make a movie from his most recent novel. The resulting film is called a ______________.

Because patents are unlike other forms of property, they cannot be sold or licensed.

Before a copyright infringement suit is brought for works of U.S. origin, the work must be registered with the Copyright Office.

Before a patent application is filed, under federal law, a search must be conducted.

Yes. Under the Family Entertainment and Copyright Act, members of private households are allowed to filter out profanity, violence, and sexual content from movies.

Beth Anderson has purchased a movie in DVD form. She is concerned about profanity and violence in the movie. May she filter out this material? Discuss.

Bill will sign the application. The Patent Act requires that applications be made by the actual inventor. Simultaneously with filing the application, it will be assigned to Microsoft, which will then have rights to the patented invention.

Bill is an employee of Microsoft Corp. While on the job (and pursuant to Microsoft's contract with him), Bill invents a new type of computer mouse. The parties have agreed that any inventions made by Bill are owned by Microsoft. Who will sign the patent application for the new invention? Why? How might the other party obtain rights in the patent application?

ABC is not liable for selling the screw because it is a common or staple article that can be used for purposes other than in the invention. However, if ABC sells the copper wire (a component in the patented invention that has no substantial use apart from use in Brenda's patent), then ABC will be liable for infringement if it knows the same will be used for infringement.

Brenda's patented invention uses several components, including a common type of screw and a very rare piece of copper wire that is used solely in Brenda's patented item. ABC Co. is selling both the screw and the copper wire to Frank, who has infringed Brenda's patent. Describe the liability of ABC, if any, for patent infringement.

An affidavit of incontestability reduces the challenges that can be made to a trademark registration. Generally, a mark that is incontestable cannot be attacked unless it has become generic, has been abandoned, is being used to misrepresent the source of goods or services, is functional, or was procured by fraud.

Briefly describe the advantage to a registrant of filing an affidavit of incontestability.

Applicants typically perform a preliminary or "knockout" search to determine if there is a mark that directly conflicts with the desired mark. If there is no such direct conflict, applicants then perform a full or comprehensive search that reviews USPTO records, state records, and Internet usages to ensure that no infringement will occur.

Briefly describe the two types of trademark searches conducted before an application is filed with the USPTO.

Laches is a defense that asserts that the plaintiff delayed an unreasonable period of time to bring the action and this delay has prejudiced the defendant (who, for example, during the period of delay expended significant time and money in promoting the mark.) An acquiescence defense asserts that words or conduct on the plaintiff's part amounted to an assurance to the defendant that the plaintiff would not assert its trademark rights against the defendant.

Briefly describe what a defendant is asserting if it raises the defenses of laches and estoppel.

Because Christine cannot bring an action for patent infringement (because the designs are not patented), she should bring an action under Section 43 for several causes of action. Christine may allege passing off (because Patricia is selling her jewelry as that of Christine), possibly false advertising (if Patricia makes false or misleading statements about the nature of the goods), trademark infringement (if she is using Christine's marks, even though the marks might not have been federally registered), and for infringement of trade dress (if the overall product image deceives consumers).

Christine has designed several distinctive pieces of jewelry. These are not protected as design patents. She recently discovered that Patricia is selling jewelry that is nearly identical to that of Christine and that the jewelry is sold as that of Christine, using Christine's trademark (although Christine has not registered her trademark with the USPTO). What causes of action might Christine allege against Patricia? Why?

Clients are seldom involved in intellectual property audits.

No. If a trade secret is acquired through proper means (such as independent invention), there is no misappropriation of trade secrets.

Coca-Cola Co. has been protecting its famous Coke recipe as a trade secret for many years. If Lee, a chemist, independently discovers the recipe, will Lee have any liability for misappropriation of the trade secret? Discuss.

The live performance is not protected under copyright law because it is not fixed. The recording and transmission of the comedy routine by HBO is fixed; thus, it is protected under copyright law.

Comedian Ellen DeGeneres has performed a comedy routine live in a nightclub. Two weeks later she performs this routine for HBO, which records the routine. Which, if any, of the performances is protected under copyright law. Why? Discuss.

lterary

Computer programs are registered as copyrights using form TX because they are viewed as _________ works by the Copyright Office.

Computer programs cannot be registered with the Copyright Office because they are useful articles.

Computer software is protectable under both patent and copyright law.

Copyright owners have numerous rights to ensure their works are fully protected from unauthorized copying, reproduction, performance, distribution, and the like.

Counterfeiting is a form of trademark infringement.

Counterfeiting of goods is a form of passing off.

priority countries

Countries that do not provide adequate protection for intellectual property rights are designated as _____________ by the U.S. Trade Representative.

No. The work is not a joint work because at the time it was initially prepared by Dan, there was no intent that separate contributions be merged into a unitary whole. At the time Dan composed the music, he intended it to be complete. Thus, it cannot be a joint work. The parties' intention governs, and here there was no intention for the two contributions to be inseparable or interdependent parts of a whole.

Dan composes music for an instrumental piece of music. Several years later, Dan asks Mary to write lyrics for the piece. Is the resulting piece a joint work? Fully discuss.

This practice is called "cybersquatting." Acme is not liable because federal law has established a "safe harbor" for registrars; thus, Acme is not liable for merely registering an infringing domain name absent a showing of bad faith intent to profit from such registration. Victims of cybersquatting may pursue any of the following remedies:• An action for trademark infringement (although it may be difficult to show use in commerce and a likelihood of confusion);• An action under the Federal Trademark Dilution Act may be initiated (assuming Starbucks can show tarnishment or dilution, which seems unlikely in this case);• A civil suit under the Anticybersquatting Consumer Protection Act (which seems likely because bad faith is so apparent in this case); or• A quasi-arbitration proceeding under ICANN's dispute resolution process (which is quick and effective but which will not produce any damages for Starbucks, although it is effective if Starbucks merely wants the offending domain name canceled).

Dan recently registered the domain name www.starbucks.com with Acme Registrars. Dan has no relationship with Starbucks and has written Starbucks a letter offering to sell the domain name to it for $40,000. What is this practice called and what can Starbucks do to protect its STARBUCKS mark? Is Acme liable? Discuss.

Although mere listings of ingredients or contents of recipes are not protected, when those recipes are combined with substantial literary expression (such as the entertaining ideas), the work is likely protected by copyright (at least as to the entertaining ideas).

Dana has authored a cookbook with numerous recipes and ideas for entertaining using the recipes. Is the cookbook protected under copyright law? Discuss.

No. The statute of limitations for copyright infringement is three years.

Dana has known for quite a while that Cal infringed Dana's copyrighted poem four years ago. May Dana bring an action for copyright infringement? Discuss.

Generally, when parties don't agree as to invention ownership, the employee retains ownership rights, subject to a shop right in favor of the employer. Thus, ABC could make and use the invention (royalty free) in its business whether or not Dave remains employed by ABC (assuming Dave inventedthe item during the course and scope of his employment). Dave will be able to apply for a patent and can grant other licenses or even sell the invention. If, however, Dave was specifically hired to invent the brake pad, ABC will own the rights to the invention.

Dave is employed by ABC Inc. The parties have not agreed who will own any inventions Dave makes during employment. While employed by ABC, Dave creates a new type of brake pad for the company. Who owns the rights to this invention? Discuss fully.

When goods are inexpensive, consumers don't exercise a great deal of care when buying such goods and thus confusion is more likely. Consumers might simply grab a can of soda or candy bar on impulse without paying a great deal of attention to it and thus confusion with these goods is more likely than when expensive goods are offered under a mark. Consumers will exercise more care and discretion when buying expensive goods and thoughtfully consider the item before making a purchase. Thus, confusion is less likely than where the goods are inexpensive.

Define progressive encroachment or infringement

Delta Dental and Delta Airlines can share the same Internet address of www.delta.com.

Deposit materials (for example, a copy of a novel) must accompany applications for copyright registrations.

A patent owner may bring a proceeding before the International Trade Commission to block the infringing device from entry into the United States.

Describe an increasingly popular alternative to suing for patent infringement in federal court to prevent importation of a patented item.

It is highly unlikely one could obtain a registration for the color green for a plant fertilizer. The color would be functional because the green color would likely blend into the color of plants and would thus be desired by consumers. On the other hand, the color magenta would likely be registrable. There is no need to have this color available to other competitors and it does not appear that it would be desirable to consumers; thus, magenta should be registrable for the plant fertilizer.

Describe whether you would be able to obtain a trademark registration for the color green or the color magenta for a plant fertilizer.

Design patents are the most common type of patent.

A trademark is used in connection with the offering of goods; a service mark is used in connection with the offering of services.

Differentiate between a trademark and a service mark.

reverse engineering.

Disassembling a computer program to understand its functional elements is called _____________.

• If material is protected under patent law, it must be disclosed in the patent document so that others can use the information once the patent expires. However, the advantage is that the material is exclusively protected against anyone else making, using, or selling it during the term of the patent. However, the term of protection is only 20 years from the filing date of the application.• If it is protected as a trade secret, it does not have to be disclosed (in fact, it can't be disclosed), and its protection can last forever. However, if someone else independently discovers the information, ABC cannot prevent him or her from using it.

Discuss the advantages and disadvantages to ABC Co. in protecting the same information under patent law or trade secrets law.

• Nearly all other countries grant patents to the "first to file" an application; in the United States, the patent is granted to the "first to invent," which causes numerous disputes over priority of invention.• In most foreign countries, publication of an invention before a patent application is filed for it will be an absolute bar to the right to a patent, while in the United States, the one-year grace period applies, so that the inventor has one year after publication to file the patent application.• Mot foreign countries require that the invention be manufactured in that country within a certain period of time (usually three years after grant of the patent) or the patent will be void, while in the United States, there is no requirement that the invention ever be manufactured, used, or sold.

Discuss two ways in which the patent laws of most foreign countries differ from those of the United States.

The clause relating to flight attendants should be enforceable. It is limited to a reasonable period of time (six months), it serves an important purpose (it protects United's valuable interest in training its flight attendants), and is reasonable in scope because it is limited to competitor airlines.• The clause relating to mechanics is overbroad because it relates to all transportation companies. Thus, a mechanic could be forbidden from working for Mayflower Moving Co. or FedEx, industries that are unrelated to United. Moreover, two years is a very long time for an individual not to be able to practice his or her profession.• The clause relating to the pilots should be enforceable. United has a significant investment in its pilots. Preventing them from working for competitors for one year is reasonable, particularly because the scope of the covenant is quite tailored— these pilots can go to work for other airlines if those airlines don't fly the same routes as United. This seems reasonable in duration, scope, and area.

Discuss whether United Airlines can enforce the following clauses:• A clause prohibiting all flight attendants from working for any competitor airline for six months after leaving employment with United.• A clause prohibiting all mechanics from working for any transportation company for two years after leaving employment with United.• A clause prohibiting its pilots for working as a pilot for any airline competitor that flies the same routes as United does for one year.

No. An application for this mark would likely be rejected as being deceptive. Consumers would believe that the products offered under the mark were leather, when in actuality they are plastic.??

Discuss whether you would be able to obtain a registration for LEATHERTOTE for suitcases made of plastic.

No. Under TRIPS, one cannot get a registration for wine or spirits that do not originate in the place identified in the mark.

Discuss whether you would be able to obtain a trademark registration for SHENANDOAH VALLEY CABERNET if the product is not from that area.

Copyright law prohibits public performances of others' works. Thus, Twain cannot sing the song publicly at a concert; a small family gathering is not a public performance and is thus permissible.

Discuss why Shania Twain cannot sing another's song at one of her concerts but may sing the song at a family birthday party.

Dolls, toys, and games are copyrightable.

A PCT patent will expire 20 year from its filing date; in this case, it will expire on August 1, 2024.

Doug's PCT patent was filed on August 1, 2004, and was granted in Japan on July 14, 2006. When will the patent expire?

The examiner or USPTO will declare an interference to determine priority of invention.

During the course of examining James's patent application, the examiner discovers that another party's pending application conflicts with James's. What will the examiner do?

With regard to the omitted or surrendered claim, under the doctrine of prosecution history estoppel (or file wrapper estoppel), Pete is precluded from alleging infringement of his original Claim 3. Pete cannot recapture the matter he omitted or "gave up" during prosecution of his application. Pete cannot assert a position now that is inconsistent with one he took earlier. If Pete narrowed his claim, under Festo, he will be held to give up protection for any matter that was foreseeable by those skilled in the art covered by the patent. If Pete could not have foreseen that changing his description in Claim 3 would limit coverage, he will still be able to sue Ivy for making an equivalent product.

During the patent prosecution process, Pete amended his application to omit Claim 3. Pete has now discovered that Ivy has infringed his patent by making an equivalent product. Specifically, Pete believes Ivy has infringed Pete's original Claim 3. What effect does Pete's conduct during prosecution have on any infringement action? Discuss fully and identify the name of the principle that governs your answer. Would your answer be different if Pete merely narrowed his Claim 3 and now believes Ivy has infringed the current Claim 3 as presently written? Discuss.

Ed has the right to repair the camera to prolong it use, so the repair work was probably acceptable. However, Ed's other activities that produce a substantially different camera or new item constitute infringement. Ed has reconstructed the patented item, which is an infringement.

Ed has purchased a digital camera, the patent for which is owned by ABC Co. Ed has made several repairs to the camera and has also made several improvements to it that have produced a substantially different camera. Has Ed infringed ABC's patent? Discuss.

Employers may require their employees to agree not to compete against them forever.

Some of the ideas advanced include the following: providing additional USPTO staffing and resources to make sure that "bad" patents are weeded out; giving competitors the right to submit arguments against and challenge patent applications (which would help overworked examiners); and encouraging patent owners to band together to share strategies and prior art to "bust" the patent trolls. Other proposals include tightening the standard for nonobviousness and allowing experts to assist the USPTO in evaluating patent applications.

Give two ideas that have been advanced that might attempt to weed out "junk" patents and discourage patent trolls.

No. Experimental use does not trigger the one-year limitation period. An inventor is allowed to perfect an invention to ascertain whether it will work. Such experimental use is not "in use" under the terms of the Patent Act.

Hal is experimenting and tinkering with his invention to make sure it works correctly. Will such use trigger the limitation period for Hal to file a patent application for this invention? Discuss.

Ideas and methods are not copyrightable; thus, using such terms would suggest a lack of copyrightable material.

Hal plans to file an application for copyright registration. Why should Hal avoid using terms such as "method" or "idea" in his description of the nature of his authorship?

Proving copying generally requires that a plaintiff show that there is substantial similarity between the two works and that the defendant had access to the work. In this case, the works are strikingly similar. Thus, substantial similarity is shown. Also, a court may infer access not only because the works are so similar but also because Harry has visited Jill's studio where he could have viewed the work in question.

Harry has often visited Jill's art studio where Jill displays her copyrighted works of art. Jill discovered that Harry has sculpted a work that is strikingly similar to one of Jill's sculptures that she has displayed in her studio. Harry is alleging that he independently created the work and thus there is no infringement. Discuss.

False

Hashtags can never be registered as trademarks.

Fielding retains copyright rights in the original work. Grant's copyright in the derivative work extends only to the newly created characters and does not affect or extend the nature, scope, or duration of Fielding's original work.

Helen Fielding has granted permission to Steven Grant to make a television series based on her novel Bridget Jones's Diary. The series will introduce two new characters created by Grant. Describe HelenFielding's copyright rights and those of Steven Grant.

Helen can file a Petition to Make Special to accelerate the examination process. These petitions are available for certain types of applications and applicants.

Helen is filing an application for an invention that will assist in conserving energy. How can Helen ensure that the application is handled more expeditiously than other patent applications?

Hillary should ask the USPTO to issue a "Certificate of Correction" to correct the patent. Mistakes made by the USPTO will be corrected without charge.

Hillary noticed that her patent certificate misspelled her name. What should she do?

The Copyright Act provides that libraries are not liable for such unauthorized copying by their patrons so long as a notice is placed on the equipment warning that the making of copies may be subject to copyright law.

How can a public library avoid liability for copyright infringement by its patrons who might want to photocopy copyrighted books or articles?

The IP audit may disclose IP assets the company is not using. These can then be sold or licensed to others (for fees). Similarly, the audit may discover IP assets the client did not know it possessed. Again, these can be sold or licensed to others to produce revenue for a company.

How can the results of an IP audit be used to help a client achieve a stream of revenue from its assets?

A patent troll is a company that acquires a patent (often from bankrupt companies) and then begins searching around or "trolling" for infringers of the patent. When the patent troll is unable to secure a quick settlement or licensing agreement, it initiates patent litigation, often threatening to obtain an injunction and shut down a legitimate business. Injunctions may be sought and granted even though the trolls have no market share or customers to lose.

How do patent trolls operate?

In return for fully disclosing the invention in the patent application, the inventor receives an exclusive period of time to exploit the invention. Then after the patent expires, any member of the public may use or sell the invention (thus benefiting the public).

How do patents promote the public good as well as their inventors' interests?

It must be valuable; it must not be publicly known; and it must be the subject of reasonable efforts to maintain its secrecy.

Identify the three requirements that information must satisfy in order to qualify as a trade secret.

If a new case or law clarifies or amends trademark, copyright, patent, or trade secret laws, such might affect a company's assets. For example, when the Federal Circuit held in 1998 that a business method could be patentable if it provided a useful, concrete, and tangible result, it became important for companies to identify if they owned such patentable business methods.

How might an audit be "triggered" by some change in the law?

The applicant or attorney would view the application through PAIR (Patent Application Information Retrieval) System. The "private" side of PAIR allows attorneys, agents, and inventors to securely access the USPTO database and track the status of an application. A member of the public would use the "public" side of PAIR, but would not be able to view the application until it is published (18 months after it is filed).

How would a patent applicant or his attorney check the status of a newly filed patent application? How would a member of the public check the status of a pending application? Discuss.

The USPTO is simply understaffed. Allowing experts to advise the USPTO on pending applications and provide feedback to the USPTO would help examiners discover existing prior art that may not have been discovered by the applicant or the examiner. This will help ensure that "bad" patents aren't issued.

How would allowing third parties to submit prior art to the USPTO assist in eliminating "junk" patents?

Presently, the United States follows a "first to invent" system. This produces many disputes and much litigation over who was the first to invent an item, with attendant disputes over reduction to practice and conception of an invention. If the United States changes to a first to file system, a filing date provides a date certain upon which inventorship rights can be determined.

How would changing the U.S. patent system to a "first to file" one eliminate or reduce interferences and reduce litigation over priority of invention?

One would use the USPTO's website and its Trademark Status and Document Retrieval (TSDR) system to view documents and status or one can call the USPTO's telephone status number and hear a recording about the status of the mark.

How would one go about monitoring the progress of a trademark application at the USPTO?

Ed will file the application. Federal law states that the inventor must file the application (although it will likely be simultaneously assigned to IBM).

IBM employs Ed to invent a new invention. IBM will own all rights to the invention. Who will file the patent application? Why?

ADIDAS ORANGE JUICE and CARTIER SHAMPOO are examples of dilution by blurring because the uses whittle away these established and famous trademarks' selling power through unauthorized use upon dissimilar products. The use of the DR PEPPER can for drug paraphernalia and PornRUs for adult videos is tarnishment of the marks because these uses harm the reputation of the famous marks DR PEPPER and TOYSRUS—the famous marks are being portrayed in an unsavory or embarrassing way.

Identify and discuss the form of dilution for the following marks: ADIDAS ORANGE JUICE, the use of a can similar to that of DR PEPPER for drug paraphernalia, CARTIER SHAMPOO, and PornRUs for adult videos.

• The most significant advantage is time. The PCT applicant has a total of 30 months to determine whether it wishes to pursue the application in individual countries. This allows the applicant time to reflect on whether protection is desired in those countries and to gather funds to prosecute the application during the national phase.• Moreover, the highly authoritative international search report and written opinion provide an indication to the inventor whether a patent is likely to be granted in the various countries.• The time and costs involved in the national phase are likely to be significantly reduced because much of the searching and examination work required has already been required in Chapters I and II.• Finally, the PCT allows for a single application with a single set of fees in the applicant's own language.

Identify at least three most advantages afforded to a patent applicant by the PCT.

Nationwide constructive use effective from the filing date of the application (meaning that the public is assumed to have notice that the registrant has nationwide priority in the use of its mark as of this date);• Nationwide notice to the public of an owner's claim to a mark, thereby precluding a later user from claiming it used a mark in good faith in a remote territory and should be able to continue use;• The ability to bar importation of goods bearing infringing trademarks (assuming the registration is deposited with the U.S. Customs and Border Protection);• The right under the Paris Convention to obtain a registration in various foreign countries based upon the U.S. registration;• The right to bring an action in federal court for trademark infringement and recover lost profits, damages, costs, and possibly triple damages and attorneys' fees;• Incontestable status of the registration after five years of continuous use subsequent to the registration (meaning that the mark is immune to certain challenges), assuming appropriate documents are filed;• The right to use the registration symbol (®) with the mark;• A possible basis to claim priority to an Internet domain name; and• Prima facie (literally, "on its face") evidence of the validity of the mark and of the registration, the registrant's ownership of the mark, and the registrant's exclusive right to use the mark in connection with the identified goods and services.

Identify at least two benefits to obtaining a trademark registration.

• Digital music services offer access to movies and songs legally on a fee basis. These services reduce piracy.• New technologies help identify infringement. For example, "fingerprinting technologies" identify copyrighted materials so they can be removed from Internet sites.• Labels and companies are entering into licensing arrangements with Internet sites so that users can use content.• Content providers continue to educate the public about piracy and its costs.• Content providers are stepping up their enforcement efforts and initiating litigation to deter infringers.• Legislation is introduced in Congress to increase penalties and ensure content is protected.

Identify at least two ways that record labels, movie companies, and other owners of content attempt to reduce piracy:

TRIPs requires all members of the World Trade Organization to provide certain minimum standards of protection for trademarks, copyrights, patents, and trade secrets and requires countries to provide effective enforcement of these rights.

Identify the chief rationale underlying TRIPs.

trademarks, service marks, certification marks, and collective marks

Identify the four different types of trademarks.

Registration establishes a public record of the claim of copyright;• Before an infringement suit may be filed in courts, registration is necessary for works of U.S. origin;• If made before or within 5 years of publication, registration constitutes prima facie evidence of the validity of the copyright and the facts stated in the certificate;• If made within certain time limits, it allows a plaintiff to recover statutory damages and attorneys' fees in court actions for copyright infringement; and• It allows the owner to record the registration with Customs and Border Protection for protection against the importation of infringing copies.

Identify three benefits of securing a copyright registration.

In addition to the fair use defense, the following defenses are often asserted in copyright infringement cases:• Invalidity of copyright• Fraud on the copyright office• Estoppel• Misuse or unclean hands• Improper copyright notice (for pre-Berne works)• Statute of limitations or laches• De minimis defense

Identify three defenses to copyright infringement.

If a work is one made for hire, it is owned by the employer or commissioning party rather than the one who created the work.• Its duration is 95 years from publication or 120 years from creation, whichever is shorter (rather than 70 years from the copyright owner's death);• It if is one made for hire, rights to the copyright cannot be captured (any transfer of the work cannot be terminated); and• There are no moral rights in one made for hire because they are not defined as works of "visual arts."

Identify three effects if a work is deemed one made for hire.

The following are not protected under copyright law: useful articles; ideas, methods, or systems; blank forms, titles, short phrases, common property; listings of recipe ingredients; public domain works,; U.S. government works, facts; computing and measuring devices; "undeveloped" characters; scenes a faire.

Identify three exclusions from copyright protection.

The following are excluded from patent protection: products of nature, laws of nature/scientific principles, printed matter, atomic weapons, mental steps, nonuseful business methods.

Identify three exclusions from patent protection.

There are several exceptions:• Face-to-face teaching;• Religious services;• Promotion of records;• Certain live, nonprofit performances;• Performances by veterans and fraternal organizations;• Performances at agricultural and horticultural fairs;• Performances at small commercial establishments;• Transmissions for handicapped persons; and• Homestyle exemptions (which allow one to receive a transmission in public).

Identify three types of performances that, by statutory exception, do not violate a copyright owner's right to publicly perform his or her work.

• Under the WIPO Copyright Treaty, the United States was required to amend its copyright laws to protect against the unlawful circumvention of technologies used by copyright owners to prevent electronic theft of their works. (The passage in the United States of the Digital Millennium Copyright Act was a direct result of the WIPO Copyright Treaty.)• This treaty also expressly provides that computer programs are protected by copyright as literary works and that authors' rights of distribution extend to electronic distribution.• This treaty also requires adhering nations to provide remedies against anyone who removes or alters electronics rights management information.• Member countries must provide adequate legal protection against the circumvention of security or encryption devices used by authors to protect their works.• The WIPO Performance Treaty provides similar protection to sound recordings.

Identify two changes to U.S. copyright law as a result of the WIPO Treaties (either the WIPO Copyright Treaty or the WIPO Performances and Phonograms Treaty)

While a registration on the Principal Register is prima facie (literally, "at first sight" or "on its face") evidence of the registrant's exclusive right to use of the mark, registration on the Supplemental Register has no such evidentiary effect.· A registration on the Principal Register is constructive notice of a claim of ownership so as to eliminate a defense of good faith in an infringement suit, but a Supplemental Registration has no such effect.· While a registration on the Principal Register may become incontestable after five years of registration, a Supplemental Registration may never achieve that status. · Registration on the Supplemental Register cannot be used to stop importations of infringing or counterfeit goods into the United States. On the other hand, registration on the Supplemental Register does afford some protections: · An action for infringement of the mark can be brought in federal court. · The registration will be on file with the USPTO and can be cited by the USPTO against another's subsequent application to register a confusingly similar mark.· The registration will be located through standard searches of USPTO records, thus possibly deterring others from using or applying for a similar mark. The registrant is entitled to use the registration symbol (®).

Identify two distinctions between registration on the two registers of the USPTO

BARBIE (for pornographic magazines) TarnishmentAPPLE (for publishing services) Blurring BIC (for pasta) Blurring

Identify whether the following uses constitute blurring or tarnishment.BARBIE (for pornographic magazines) APPLE (for publishing services) BIC (for pasta)

Trade Secret

Identify which field of intellectual property law would protect the following: A company's valuable customer list

Patent

Identify which field of intellectual property law would protect the following: A new camera

Identify which field of intellectual property law would protect the following: The new Star Wars film

Identify which field of intellectual property law would protect the following: The novel The Nightingale

Trademark

Identify which field of intellectual property law would protect the following: The slogan "Eat Fresh" used by Subway

Trademark

Identify which field of intellectual property law would protect the following: The word "BIC" used for pens

In this case, perhaps a search just of the USPTO records and a Google-type Internet search might be sufficient just to ensure that no other mark would be directly infringed by use of the mark for such a short period of time. (Of course, is there is an identical mark in use, ABC cannot use an infringing mark even for a short period of time.)

If ABC Inc. intends to use a mark for a two-week back-to-school sale, what type of search should be conducted? Discuss.

The law firm should establish a deposit account, against which fees can be charged. The firm will replenish the account periodically. (This is the same principle as deposit accounts used for trademark fees.)

If a law firm files a significant number of patent applications each year, what should it do to ensure it doesn't have to continually send checks or money orders to the USPTO to cover various filing fees?

False

If a mark has been in continuous use for three years, such shows that the mark has acquired distinctiveness.

If a party's trademark is infringed, the only possible cause of action is for trademark infringement.

If a pharmaceutical company claims that its product is endorsed by more than 75% of physicians, such a claim must be supported by evidence demonstrating such.

Even though the registration may be cancelled, the mark itself may still be in use. Thus, the mark that is the subject of the search could infringe this conflicting mark. Rights to marks in the United States arise from use and not from registration. Thus, even though the registration for the mark is cancelled, the mark itself still would retain priority over any junior users.

If a search discloses a cancelled registration for a conflicting mark, why should this cancelled mark be investigated?

True

If a trademark application is abandoned due to an applicant's failure to respond to an office action, the application may usually be revived if the delay in responding to the office action was unintentional.

False

If a trademark is assigned, the assignment must be recorded at the USPTO.

True

If a trademark is not in use, its owner may present evidence to the USPTO that its nonuse was excusable.

False

If a trademark owner does not file an affidavit of incontestability for its mark after five years of use, the registration for the mark will be cancelled.

True

If a trademark owner files a petition in bankruptcy, its trademarks are generally considered the property of the bankrupt estate and may be sold to satisfy the bankrupt trademark owner's debts.

The potential applicant can investigate to see if the mark is still in use. If not, the potential applicant can file a petition to cancel the mark on the basis that it has been abandoned. The potential applicant can approach the owner of the conflicting mark for consent to use the mark or to negotiate for a license to use the desired mark. The potential applicant can revise the mark to make it distinguishable from the conflicting mark.

If a trademark search by a potential trademark applicant discloses a possibly conflicting mark, what avenues can be followed by the potential applicant?

The employer or commissioning party and not the employee or actual person who created the work.

If a work is determined to be one made for hire, the author is considered to be whom?

If a work originates in any member nation of the Berne Convention, it is entitled to copyright protection in all other member nations.

literal infringement

If an accused invention falls within the exact and specific language used in a patent claim, there is ____________ because the accused invention is the same as that protected by the patent grant.

A disclaimer is an acknowledgement by an applicant that it has no right to use the word "Cleaner" apart from the mark as shown. The applicant is acknowledging it has no trademark rights in the word "Cleaner."

If an applicant disclaims the word "cleaner" in a trademark application for WONDER WINDOW CLEANER, what does this mean?

special handling

If an applicant for copyright registration needs a copyright registration issued quickly, perhaps because it is involved in litigation, it can request _____________ from the Copyright Office to "speed up" the process.

shop right

If an employee invents an item during the course and scope of employment and the parties have not agreed who will own the item, the employer will generally be granted a _____________ to continue to use the invention, royalty-free.

If an employer instructs an employee to make Jackie's patented item, the employer may be liable to patent infringement.

restriction requirement

If an inventor claims both a new type of pen and a new type of bread warmer in one patent application, the examiner will issue a ________________, requiring the applicant to limit the application to one invention.

True

If color is not claimed as a feature of the mark in a trademark application, the mark may be displayed in any color.

If confidential information is disclosed to an employee in the course of employment, the employee is subject to an implied duty to maintain the information in secret.

If information is known outside a company, it cannot qualify as a trade secret.

If one PCT country refuses to grant a patent for an invention, in an "all or nothing" approach, all other countries will likewise refuse to issue the patent.

Concurrent Use

If parties use their marks in different geographical areas, a ______ proceeding may be initiated to determine in which geographical area each party will use its mark.

If properly protected, trade secrets may last forever.

secrecy order.

If the Commissioner of Patents refuses to allow a patent applicant permission to file an application in a foreign country, such is often called a _________________.

If the Copyright Office refuses to issue a registration, the applicant may eventually seek judicial review of this refusal.

U.S. applicants can never secure a registration from the USPTO without first showing use of the mark. Section 44(e) of the Lanham Act allows those who have secured registrations in a Paris Convention country to use their foreign registrations as a basis for securing a U.S. registration even if the mark has not been used in the United States or anywhere in the world.

In what way do foreign applicants receive more favorable treatment than U.S. trademark applicants?

In the United States, license agreements are viewed as private agreements between parties and are not filed or recorded with the USPTO; in many foreign countries, these "registered user agreements" are filed with the foreign trademark office.

In what way does licensing a trademark in foreign countries differ from licensing a trademark in the United States?

Recently enacted legislation requires the invention promoters to disclose in writing how many inventions they evaluate positively and how many they evaluate negatively and their customers' success in receiving net financial profit and licenses as a result of the promoters' services. Moreover, customers injured by promoters may bring civil actions to recover statutory damages and may file complaints with the USPTO about invention promoters, which complaints are available for the public to see on the USPTO's Web site.

In what way does recent legislation help individual inventors who might be taken advantage of by invention promotion companies or invention developers?

A trademark owner may file a complaint with the International Trade Commission alleging an act of trademark infringement. The ITC will conduct an investigation and determine if Section 337 of the Tariff Act has been violated. If so, the ITC will issue an exclusion order which bars the products bearing the offending mark from entry into the United States. ITC proceedings have become popular because they are far less expensive and more expeditious than infringement trials in court.

In what way is a proceeding with the International Trade Commission an alternative to trademark infringement litigation?

The UDRP establishes an administrative procedure for efficient and inexpensive resolution of cybersquatting. The process is relatively inexpensive and a decision will be rendered in about two months. Typically, the rulings have been pro-trademark owners. The disadvantage is that the only remedy available is cancellation of the offending domain name. Neither money damages nor injunctive relief can be obtained.

In what ways is resolving domain name disputes through ICANN's Uniform Domain Name Dispute Resolution Policy advantageous to domain name owners? What disadvantage does this dispute resolution process offer?

Individuals who file many copyright applications throughout the year can establish a deposit account with the ____________ against which fees can be charged.

Internet "gripe" sites that mention another's trademark are generally permissible so long as consumer confusion is not caused by use of the mark.

The new light bulb is not protectable under copyright law because it is a useful article.

Is a new type of light bulb protectable under copyright law? Why or why not?

It is necessary to search the records of the Copyright Office before one may file an application for copyright registration.

It is permissible to take the ideas of another (but not the expression of those ideas).

It is unlawful for you to attempt to circumvent a measure that is intended to protect a digital work. For example, if Madonna's latest CD is encrypted so that it cannot be copied, it is wrong for you to attempt to circumvent that protection device.

It takes as long for the Copyright Office to issue a copyright registration as it does for the USPTO to issue a trademark registration, namely, about 13 months.

Jack should consider licensing the patented technology to both companies. Each can be licensed to use the patented technology within a defined geographic area. Each can then pay Jack a royalty (either a lump sum or a percentage amount based on sales arising from the patented technology). In this way, Jack will achieve revenue yet still retain ownership rights.

Jack is the owner of a patent. A company in the eastern region of the United States and a company in the western region of the United States wish to use Jack's patented technology. What might Jack consider doing to produce revenue from his patent yet still retain ownership of the patent?

If litigation is planned, James can review the deposit materials (assuming they are available—the Copyright Office does not maintain all materials). If James is merely curious about Carol's deposit materials, he cannot obtain them (unless Carol consents). One may review deposit materials only if the copyright owner consents, a litigation statement is filed with the Copyright Office, or a court order issues for such.

James believes that Carol is infringing James's copyright in his game. James would like to review the deposit material deposited by Carol with the Copyright Office when she applied for copyright registration. May James obtain the deposit materials? What if James was merely curious as to what materials Carol had deposited—could James review Carol's deposit materials in this instance? Discuss.

Both Janet and Tess have standing. Both parties' rights have been infringed. Tess's rights of reproduction have been infringed and because royalties to Janet will be reduced due to David's infringement, Janet's rights are also affected.

Janet has transferred, in writing, the right to reproduce her copyrighted work to Tess. Tess pays royalties to Janet for this privilege. David is infringing the work by making unauthorized copies of the work. Who has the right to initiate an action against David? Discuss.

Jennifer Aniston might initiate an action for violation of her right of publicity for the first use because her likeness is being used for an unauthorized commercial purpose. The conduct might also constitute false advertising and unfair competition. In the second instance, no action will lie because the use is not commercial. The use of her picture for news reporting is permissible.

Jennifer Aniston recently discovered a picture of herself carrying a COACH bag in an advertisement by Coach, which ad stated, "Buy COACH—it's Jennifer Aniston's favorite!" What type of action might Jennifer Aniston initiate to stop this unauthorized conduct? What if the picture were used in a news story about the trend of celebrities to carry large, expensive handbags? Discuss.

The failure to include a copyright notice for the 1975 work is fatal. Works published before 1/1/78 are governed by the 1909 Copyright Act. Under that act, if a work was published without a notice of copyright, all copyright protection for the work was permanently lost in the United States. As to the 1990 work, after March 1, 1989 (the date of adherence to the Berne Convention by the United States), use of a copyright notice is optional. Thus, failure to include a copyright notice for the 1990 novel does not affect its copyrightability.

Jill's first novel was published in 1975 and did not have a copyright notice. Jill's second novel was published in 1990 and also failed to include a copyright notice. Discuss the effects of the failure to include a copyright notice for both works.

Jim has an idea for a new type of computer mouse. This idea is copyrightable.

right of integrity.

Joan, a famous artist, has the right to be known as the painter of her work The Camellias. This right is known as the right of attribution. Joan's right to ensure that The Camellias is not mutilated is known as the ______________.

No. Although the parties do not need to make the same contribution to an invention, merely giving suggestions or making minor contributions does not make one a joint inventor.

John has given Jeff a few ideas about how to improve his invention. Does such make John a joint inventor with Jeff? Discuss.

Copyright protection lasts for the author's life plus 70 years and runs through the end of the calendar year in which the rights would expire. Thus, copyright protection lasts until December 31, 2070.

June, the author and copyright owner of a 1995 novel called Living Large died on January 15, 2000. Give the exact date that copyright protection for the work expires.

It might not qualify for trade secret status. If information can be easily reproduced or reverse-engineered, it might not qualify for trade secret protection. We would likely need to know additional facts about the measures the company takes to protect the information, the extent to which those inside and outside the company know the information, etc., to determine whether the material qualifies for trade secret status.

LMN Co. owns an important, although basic, computer software program. This program can be easily reverse-engineered by nearly anyone with a basic understanding of software. Does the material qualify for trade secret status? Discuss.

The term of the patent is 20 years from the filing date of the application. Thus, the patent will expire on June 1, 2025.

Lance filed his utility patent application on June 1, 2005. The patent was granted on July 1, 2007. When will the patent expire?

False

Law firms can predict with near certainty that a trademark application will be successful at the USPTO.

Yes. The article may serve a useful purpose and still be patentable if its primary purpose is not functional.

Lee invents a new type of pedal for a piano. The pedal assists in producing better sound, but Lee has engraved it with various entwining leaves and trees. Is this patentable as a design patent?

LexisNexis's collection of federal cases in its database is not copyrightable because these cases are in the public domain.

Trademarks, copyrights, patents, and trade secrets

List the four fields that comprise intellectual property.

Liz may sue for infringement to enjoin further acts of infringement by Bill, but monetary damages cannot be awarded for infringing acts committed more than six years before litigation is begun.

Liz would like to sue Bill for patent infringement for acts that occurred seven years ago. May she? Discuss, and discuss what remedies, if any, Liz may obtain.

In the United States, generally the fist to conceive the invention and to reduce it to practice (either actually or constructively) will be held to be the prior inventor. Conception refers to the formation in themind of the inventor of a definite and permanent idea of the complete invention. Actual reduction occurs when the invention is made in physical form; constructive reduction occurs when an application for the patent is filed with the USPTO.

Lyle and Joanna are in a dispute as to which one of them was the first to invent a new case for cell phones. What factors are considered in determining priority of invention?

actual reduction

Making an invention in physical form or testing it or a prototype constitutes _____________ to practice.

disparagement

Making false statements about another company or its products is actionable as product disparagement, trade libel, or commercial _______________.

In this case, the use of the word "Beach" is common in the locality, thus making it weak. In such a case, when numerous similar marks coexist, consumers become adept at distinguishing marks from each other. In this case, the marks can be distinguished on the basis of their noncommon elements (the words "Bungalow" and "Resort"). Thus, it is unlikely that the marks are likely to cause confusion.

Many businesses in California use the mark "BEACH" in their marks. Discuss whether you think the mark BEACH BUNGALOW is likely to be confused with BEACH RESORT if both marks are used for hotel services in southern California.

Under the Uruguay Round Agreements Act, Ramon's copyright is automatically restored and remains protectable for the term it would have enjoyed had it not entered the public domain. This right is not provided to U.S. domestic works.

Many years ago, Ramon, a citizen of Spain, failed to comply with previous U.S. laws that required copyright owners to include a notice of copyright on his work. Sam, a citizen of the United States, made the same error. Under the Uruguay Round Agreements Act, how will the copyrights of these two individuals be treated?

Because the work is a joint work, the copyright lasts until 70 years after the last surviving coauthor's death.

Mark and Jack are the coauthors of a biography about President Clinton. How long does the copyright in the book endure?

Yes. Copyright rights are divisible, meaning they can be subdivided, with one party obtaining some rights and other parties obtaining other rights. Granting rights to others is a way for copyright owners to exploit their works to the fullest extent.

May a novelist grant one party the right to reproduce the novel, another the right to distribute, and yet another the right to create a film based on the novel? Discuss.

Letter of Protest

Members of the public who wish to comment on a pending application or bring to the USPTO's attention any matter that reflects on the registrability of a mark may file a ______ with the USPTO.

Most U.S. law firms rely on their foreign associates to conduct searches of foreign records when their clients desire trademark protection in foreign countries.

Most oppositions and cancellation proceedings proceed to trial rather than being settled.

No. Under the Berne treaty, Congress eliminated any requirement for a copyright notice to be used with a work (although its use is recommended).

Must Sarah, a journalist, include a copyright notice on the pieces she writes? Discuss.

No. Under the doctrine of equivalents, infringement exists if the accused invention performs substantially the same function as the patented invention in substantially the same way to reach substantially the same result.

Must an accused invention infringe every claim of a patent in order to infringe? Discuss.

Nearly all patent applications include drawings of the invention.

To close a loophole in patent law (which had previously held that such an act could not constitute patent infringement because the assembly and use abroad had not occurred in the United States), Congress added a section to the Patent Act to clarify that one such as Nick who exports all or substantially all of a patented items in such a manner as to actively induce combination of the components outside the United States in a manner that would infringe the patent if such acts were done within the United States is liable for infringement. Because Nick's acts would constitute infringement in the United States, they infringe, even though the acts are occurring outside the United States.

Nick has exported all 40 pieces of Cal's patented invention for assembly abroad into an article that infringes Cal's patent. Is such a violation of the Patent Act? Discuss.

No discovery is allowed in either opposition or cancellation actions.

The answer depends upon the size of the restaurant. If the restaurant is quite small (less than 3,750 square feet), it cannot play the radio unless it obtains a license (or certain requirements regarding the number of speakers in the restaurant are followed).

No. The homestyle exemption allows public reception of a transmission on a single receiving apparatus.

Nonprofit entities may claim trade secret protection for their economically valuable information.

3 Years

Nonuse of a mark for __________ is prima facie evidence of abandonment.

Novel processes are patentable.

protest

Olivia, a member of the public, is opposed to a patent application filed by Matt. She believes that the granting of a patent to Matt would be improper. Olivia may file a __________ with the USPTO with information showing such.

Yes. Preregistration is not a substitute for regular registration but is simply an indication of an intent to register a work once it is completed or published. If a work has been preregistered, the copyright owner must register the work within one month after the owner becomes aware of infringement and no later than three months after first publication in order to be able to sue for infringement in federal court.

Once MGM Studios preregisters a film with the Copyright Office, must it file a "standard" copyright registration for the work? Discuss.

False

Once a corporation is given permission by a secretary of state to use that corporate name, it will be able to obtain a trademark registration for that name.

Once a court determines that patent infringement has occurred, it will always order an injunction to ensure that infringement ceases.

Once a first sale is made of a patented item, the buyer may resell the item without committing infringement.

a registrant

Once a mark is registered at the USPTO, its owner is called

Once a patent application is filed, an inventor may begin using the term "patented" on the invention.

Once a writer such as Dan Brown has sold a novel, the buyer or new owner may thereafter sell, lend, or dispose of it.

one

Once an invention is in public use or offered for sale or sold, the inventor has ____ year(s) to file a patent application for it.

Once issued, a U.S. trademark registration exists independently of its underlying foreign application or registration and is thus subject to all provisions of the Lanham Act that apply to other registrations, such as trademark maintenance requirements.

the U.S. Customs and Border Protection Service

One advantage of securing a federal trademark registration is that the owner may record the registration with ______ to block importation of infringing goods.

True

One may use the USPTO databases to determine if a mark has been the subject of proceedings at the Trademark Trial and Appeal Board.

continuation in part application

One type of continuing application is the _________________, which includes some matters in common with its original or parent application but also adds new matter not disclosed in the earlier parent, usually because an improvement to the invention was developed after the parent application was filed.

Online service providers such as eBay can never be held liable for copyright infringement, generally because it is their users or customers who might violate another's copyright, not the online service provider.

Online song distribution companies (such as Apple's iTunes) must obtain copyright permission before allowing customers to download songs from their sites.

Only U.S. citizens may apply for trademark registration with the USPTO.

Only an attorney may file a copyright application.

Only celebrities may protect their identities through the right of publicity.

True

Only marks registered on the Principal Register can become incontestable.

False

Only one form of intellectual property is available for any one item

Only one person may own a copyright in a work.

Only serious literary works are protected under copyright law; thus, vile or offensive material is not protectable.

Only the author of a copyrighted work may authorize another to prepare another work based on it or derived from it.

Only the owner of a famous mark may initiate an action for trademark dilution.

Oppositions and cancellations are both handled by the Trademark Trial and Appeal Board.

False

Paralegals can sign a letter to a client analyzing the results of a trademark search and recommending options for a client.

Paralegals may be registered patent agents.

True

Paralegals often conduct preliminary trademark searches.

Parties may contractually agree that in the event of a dispute over a patent they will arbitrate rather than litigate the matter.

duty of candor.

Patent applicants must fully disclose to the USPTO any information that is relevant to their claimed inventions. This is known as the ___________.

Patent applications are maintained in strict confidence until the day that they issue.

Patent rights arise as soon as an invention is created.

Patent searching is usually complex and typically requires the assistance of an expert searcher or professional.

Patents are governed both by federal and state law.

The sunflower is not patentable because products of nature cannot be patented. Plants discovered in the wild cannot be patented. However, asexually reproduced plants can be patented; thus, the rose that was produced by asexual means (by grafting) can be patented.

Paul discovers a new type of sunflower in the wild. He also creates a new variety of rose (with a new, distinctive scent) by grafting it. Is either of these items patentable as plant patents? Discuss.

Paul should submit two copies of the best edition of his novel. Paul should submit two hardbound copies of the book.

Paul is applying for a copyright registration for his latest novel. What deposit materials should Paul submit to the Copyright Office?

Royalties

Periodic fees paid by licensees to use another party's trademarks are called

Persons and companies can be held liable for the copyright infringement of others.

Pete has the right to terminate the transfer to Sean beginning in 2035. If Pete is not alive at that time, his termination rights may be exercised by his surviving spouse, children, etc., according to a fairly complicated formula set forth in the Copyright Act.

Pete transferred all of his copyright rights in his book to Sean in 2000. What rights, if any, does Pete have several years from now to obtain his copyright rights back from Sean? What happens if Pete dies in 2020? Discuss fully.

Yes. A transfer of copyright ownership other than a transfer by operation of law must be in writing, to protect Pete from inadvertently transferring his copyrights. The transfer of all rights requires a writing; a nonexclusive transfer would not require a writing.

Pete would like to transfer all of his copyright rights in his book to another. Must this transfer be in writing? Discuss.

No. An invention can only be patented if it is useful, and this invention does not work. Thus, it cannot be patented.

Phil has invented a new type of automobile engine. The engine is nearing completion but at this point it doesn't work. May Phil obtain a patent for his invention? Why or why not?

Phil should file for a statutory invention registration. This is an invention registration; it has the defensive attributes of a patent but not the enforceable attributes of a patent. An SIR is usually filed to prevent someone else from obtaining a patent on his or her invention. Upon publication of the SIR, Phil waives all patent rights to the invention.

Phil is concerned that Ken is going to obtain a patent for Phil's invention, although Phil is not that interested in going to the time and trouble to obtain a patent himself and desires to place the invention in the public domain. What may Phil do to ensure that Ken cannot obtain a patent for the invention?

Preregistration is a new Copyright Office procedure that allows works (such as movies) that have a history of pre-release infringement to be preregistered so that a copyright owner may sue for infringement even before a work is commercially released.

Present U.S. copyright law does not draw any distinction between published and unpublished works.

Under the Paris Convention, if a citizen of a member country files an application in another member country within six months of the original filing date of the application, the filing date in the second country is considered to be the date of filing of the first country (the "priority filing date"), allowing the applicant to achieve priority over an intervening user/filer.

Rachel files a trademark application in the United States on November 15, 2016. What is the advantage to Rachel of filing her trademark application in Germany by May 15, 2017?

Reading another's poem aloud during a small family reunion is a public performance and would constitute copyright infringement.

Reading another's poem aloud on the Today show is a performance of the poem and may constitute copyright infringement if permission for such performance has not been granted.

When XYZ attempts to submit any documents to the USPTO regarding its mark (declaration of use, affidavit of incontestability, renewal, etc.), the USPTO will not recognize this entity as the owner of the mark because its records would not reflect that XYZ was the owner. XYZ should notify the USPTO of changes in the chain of title of ownership of the mark so it will accept documents from this entity/owner.

Registrant ABC Inc. changes its corporate name to XYZ Corp. Why should the USPTO be informed of this name change?

Registration of a copyright is a prerequisite for initiating an action for copyright infringement.

No. One cannot obtain a patent if one is not the first inventor. Moreover, this invention is "known . . . in this country" and thus under Section 102(a) of the Patent Act, it is not patentable. It is not novel.

Rita would like to obtain a patent for a new bottle top. She first saw the bottle top at a trade show. May Rita obtain a patent? Why or why not?

continuation application.

Ron filed a utility patent application with several claims. The USPTO has rejected some claims in the application, and Ron wishes to proceed with the allowed claims and pursue the rejected claims in a separate application called a ________________.

Unsolicited submissions present difficult questions. Some courts would allow NBC to use the idea (based on the concept that Sal should've sought protection for the idea). Other courts would hold that an implied contract exists and would hold that NBC has impliedly agreed that it will compensate Sal if the idea is used. Other courts would hold that if NBC used the idea, it'd be unjustly enriched if it did not compensate Sal in some reasonable amount. Other courts would consider industry practice and custom and rule accordingly.

Sal has a wonderful idea for a new television reality show. He has described the show in writing in detail and has sent his description to NBC. May NBC use the idea without compensating Sal? Discuss.

Yes. Parties do not need to physically work together or at the same time or to make the same type or amount of contribution to be joint inventors. Each is clearly making a significant contribution; such is sufficient.

Sam and Sally live in different states. They routinely consult with each other via telephone regarding an invention they are working on. Sam has contributed about 35% of the work and Sally has contributed the rest. May the parties be joint inventors? Discuss.

Such is permissible. Section 117 of the Copyright Act authorizes some modifications to a computer program for a purchaser's own use under the theory that having for it a computer program, the consumer may create new variations for play for personal enjoyment.

Sam, a video gamer, purchased a copyrighted video game. He would like to change the game to speed it up to make it more challenging for him. Is such permissible or is it an unlawful derivative work? Discuss.

claims

Separate paragraphs that distinctly claim the subject matter that the applicant regards as the invention are called _________.

Showing the film The Passion of the Christ at your local church is permissible under certain statutory exceptions that allow public performances for religious organizations.

inevitable disclosure

Some courts have issued injunctions prohibiting individuals from going to work for their former employer's competitors on the basis that the employees will undoubtedly disclose information to the new employer. This injunction prevents the ________________ of this information.

Some inventions, such as computer programs, are protectable under both copyright and patent laws.

generic, descriptive, suggestive, arbitrary, and coined/fanciful marks

Some trademarks are stronger than others. Identify the five categories of marks, beginning with the weakest and ending with the strongest.

The jury determines whether infringement has occurred; but the issue of claims construction is determined by the trial judge and not by the jury.

Specifically identity the different roles of the jury and the judge in an infringement action.

Stan should consider seeking statutory damages. The statutory damages are provided for by the Copyright Act and are set by statute. Stan may seek such damages rather than actual damages and profits can be made at any time prior to final judgment and is usually made in cases such as this in which the plaintiff will have difficulty proving actual damages.

Stan anticipates that he will have great difficulty proving actual damages at trial for copyright infringement of his songs. What alternative might Stan consider in such a case?

Sue can request an ex parte reexamination of the patent. If a substantial question is raised, the USPTO will order reexamination of the patent so the question of an invention's patentability may be resolved.

Sue has been accused of infringing Hal's patent. Sue believes that Hal's patent never should have been granted in the first place because (based on the prior art) it was obvious. What should Sue do in order to secure a determination of the patentability of Hal's invention (without resorting to litigation)?

No. Internet gripe sites are generally protected under the First Amendment as a form of free speech. As long as Sue does not cause consumer confusion and visitors to the site know at a glance that it is a "gripe site" rather than Macy's own site, the use of Macy's in the web address and on the Web site is permissible.

Sue has been unhappy with her shopping experience at Macy's. She has set up an Internet site called www.boycottmacys.com and asks viewers to submit their complaints about Macy's. Is the use of "Macy's" in the domain name and on the site trademark infringement? Discuss.

Tara may bring an action for copyright infringement because one need not register a copyright to gain copyright protection. Protection is afforded from the time the work is created, but before filing suit Tara should register the work. The action would be brought in federal court (in the appropriate U.S. District Court) because the federal courts have exclusive jurisdiction over copyright infringement matters.

Tara has discovered that written materials she has prepared for a business seminar have been reproduced and distributed without her permission. Tara has not sought copyright registration for these materials. May Tara bring an action for copyright infringement? If so, in which court would Tara file the action? Discuss.

The losing party in a patent infringement case may appeal to the decision to the Court of Appeals for the Federal Circuit. Thereafter, the matter may be appealed to the U.S. Supreme Court if the Court, in its discretion, grants certiorari and decides to take the case.

Ted has just lost a patent infringement case. Does he have any further avenues to pursue? Discuss.

This act of "phishing" is an act of trademark infringement because it is unauthorized use of another's trademark in a manner that is likely to cause consumer confusion (because bank customers will think the emails are from the bank).

Ted has recently begun placing Bank of America's name and logo on his Web site and sending out emails with the bank's name and logo, informing the bank's customers that there is a problem with their account and asking for their social security numbers so that the problem can be corrected. What is this practice called? Is it actionable as trademark infringement? Discuss

The Community Trademark System is used primarily by countries in South America.

best edition

The Copyright Act requires that copies or phonorecords deposited with the Office be the __________ of the work, meaning of high quality.

The Copyright Office performs an in-depth and substantive examination of applications for copyright.

False

The French term "pain" (meaning "bread") would be registrable for bread.

collective work

The New Yorker Magazine has recently published an issue entitled "The Best Short Stories of 2007." Such a work is copyrightable as a _____________.

royalty

The Patent Act provides that upon finding infringement, a court shall award a claimant damages adequate to compensate for infringement, but in no event less than a reasonable __________ for the use made of the invention by the infringer.

False

The U.S. Trademark Act requires that trademark applicants perform a trademark search before applying for federal registration for a mark.

The USPTO performs only a cursory examination of patent applications.

The Uniform Name Dispute Resolution Policy is administered through WIPO.

The United States follows the "first to invent" rule rather than the "first to file" rule that most other countries follow with regard to patent law.

phishing

The act of using the Internet to obtain sensitive financial information, such as bank account numbers, is called

U.S. Copyright Office.

The agency responsible for registering copyrights in the United States is the ______________.

A Cancellation

The appropriate TTAB proceeding to challenge a mark registered on the Supplemental Register is _______.

idea-expression dichotomy.

The concept that ideas are not generally protected under copyright law but the expression of those ideas is protected is generally called the _______________.

The copyright registration process is far simpler than either the trademark or patent registration process.

The duration of copyright for works made for hire is the same as that for other copyrighted works.

FTC acts.

The federal agency that regulates deceptive and unfair acts in commerce is the FTC and state statutes that prohibit deceptive and unfair trade practices are called little __________.

The US Trademark Act/Lanham Act

The federal statute that governs trademarks is called

The first inventor defense is available only in actions relating to business method patents.

The first sale doctrine does not apply to certain computer programs; thus, most computer programs are leased rather than sold.

The invention must be useful, novel, and nonobvious.

What are the requirements for patentability for a utility patent?

Examining Attorneys

The individuals at the USPTO who examine trademark applications and determine if marks should be registered are

INTA

The international association made up of trademark practitioners from around the world is __________.

The length of protection for a mask work is the same as that for any copyrighted work.

The claims are unlikely to constitute false advertising. Courts generally require in cases involving implicit falsity that an "appreciable" or "substantial" number of consumers be misled by a claim. In this case, the commercial was released nationwide and was thus likely viewed by millions of individuals. If only four consumers were misled, this is probably insufficient to show false advertising.

The maker of Cheerio's recently released a new television commercial on a national basis making certain claims about the sugar content in the cereal. The claims were not literally false, but four consumers claim they were misled by the commercial. Can the claims constitute false advertising? Discuss.

No. Under the 1996 recent amendments to the Federal Trademark Dilution Act, fame in a "niche" market is not sufficient. To be diluted, a mark must be famous, meaning that it must be widely recognized to the general public. Prior to these amendments, fame in a limited market was sufficient. For example, in a 1997 case, the Third Circuit Court of Appeals held that the mark WAWA (used for convenience stores in five mid-Atlantic states) deserved protection against dilution.

The mark LOLO is used in the southwest region of the United States, where it is quite well known. May it be the subject of dilution? Discuss.

True

The maximum period of time to file an opposition to a mark in a trademark application is 180 days from the date of publication in the Official Gazette.

Manual of Patent Examining Procedure.

The name of the manual that USPTO examiners heavily rely upon in examining patent applications is __________________.

Digital Millennium Copyright Act.

The name of the statute or act that protects digital works and imposes penalties on those who circumvent technological protection measures is the ___________.

The Paris Convention

The name of the treaty that provides a right of priority for trademark applications is

The only persons who may initiate actions for trademark infringement in federal court are those that have federal trademark registrations.

The only remedy for one whose trademark is "hijacked" by another who uses it as a domain name is to bring a civil lawsuit.

The only time a client needs an intellectual property audit conducted is when it intends to sell its business assets to another.

Trade Dress

The overall look and concept of a product is called its

No. Use of a person's name, identity, or likeness for purposes of satire, commentary, or parody is protected under the First Amendment as a "fair use." Thus, the comedy sketches are permissible.

The show "Saturday Night Live" has been performing a series of comedy sketches making fun of the conduct of celebrity "bad girls," such as Paris Hilton and Britney Spears. Does such constitute a violation of the right of publicity of those individuals? Discuss.

Such use is likely not copyright infringement. It is likely a protected parody, which is a productive form of social commentary and expression.

The singer Pink has recently released a new CD in which she bitingly comments on the bad behavior of celebrities such as Britney Spears and Lindsey Lohan, using several lines from their songs. Is such use copyright infringement? Discuss.

True

The terms "trademark" and "service mark" are synonymous.

The title to the book "Principles of Corporate Law" is copyrightable.

Blurring, Being Tarnished

The two ways in which a mark can be diluted are by ______ and by ______.

Goodwill

The value inherent in achieving consumer loyalty to a product or service offered under a mark through consistent loyalty of goods and services offered under a mark is called ______.

Theft of trade secrets may constitute criminal conduct.

There is no statute of limitations for bringing an action for trademark infringement.

There is no such thing as an "international copyright."

Tim likely owns the copyright. Tim appears to be an independent contractor or freelancer rather than an employee, primarily because he works from home and because after the particular engagement terminates, Tim will no longer have any relationship with ABC. For ABC to own the copyright, it should've had Tim sign an agreement indicating such and assignment all copyright in the finished product to ABC. Also, if ABC hired Tim as an employee, under the work for hire doctrine, ABC would've owned the work created for it by its employee.

Tim has been engaged by ABC Inc. to create a new software program for ABC. Tim will work primarily from home. The engagement will last for six months, after which Tim's relationship with ABC will terminate and Tim will look for other work with other similar companies. The parties have no written agreement. Who owns the copyright in the software program that is created? Fully discuss the factors that lead to your conclusion. Is there anything the other party could have done to ensure he/it owned the copyright in the software program?

No. Such a small change is obvious. Small changes in size of inventions are not patentable because they are obvious. A distinct improvement, however, would be patentable. If Tim were allowed to get a patent on the new "invention," such would have the effect of extending the term of the patent and delaying its entry into the public domain.

Tim has invented a television and received a patent for it two years ago. Tim has now reduced the size of the screen by 1/8 inch. Is this new invention patentable? Discuss why or why not.

Tom has discovered a new type of plant while on a nature walk. The plant may be patented.

To be joint inventors, persons must physically work together.

False

To be protected under copyright law, a literary work must have serious and artistic merit.

To be protected under copyright law, a work must be the "only one of its kind."

Information Disclosure Statement

To comply with their duty to inform the USPTO of all matters that relate to the patentability of their inventions, patent applicants must file a(n) __________________ with the USPTO listing and identifying material information.

To create a joint work, two people must work together on a routine basis.

To file a trademark application, one must show actual use of a mark.

To initiate an opposition, a party must show actual damage has occurred.

To maintain any patent in force, maintenance fees are due throughout the term of the patent.

double patenting

To overcome an objection against ____________, an inventor often inserts a terminal disclaimer into his or her patent application, agreeing that the term of the second invention will terminate upon expiration of the patent for the first invention.

Ownership of the copyright and copying or some other impermissible invasion of one of the exclusive rights afforded to copyright owners.

To prevail in a copyright infringement action, a plaintiff must prove what two things?

To prevail in a dilution action, the plaintiff must prove actual dilution.

To prevail under the Anticybersquatting Consumer Protection Act, a plaintiff must show that the defendant registered the plaintiff's trademark as a domain name in bad faith.

To represent patent applicants before the USPTO, an attorney must pass a patent bar exam.

deposit account

To simplify making payments to the USPTO, many applicants establish a ______ with the USPTO, against which funds due to the USPTO may be drawn.

Trade secrets are governed by federal law.

False

Trade secrets are protected by various state laws rather than federal law.

Trade secrets must be registered with the USPTO to be protected.

True

Trademark applicants have a duty to inquire about the status of their trademark applications.

One

Trademark applicants must provide ______ specimen(s) showing how the mark is seen by the public.

Trademark applications filed with the USPTO and based on foreign registrations are published in the Official Gazette.

True

Trademark license agreements may be written or oral.

True

Trademarks may consist of words, slogans, logos, and even sounds.

Transfers of copyrights must be recorded with the Copyright Office.

first sale doctrine or exhaustion doctrine

Under the _________ doctrine or __________ doctrine, once a patent owner unconditionally sells a patented item, the buyer has the right to sell it or use it as desired.

Paris Convention

Under the _______________, once a utility patent application is filed in the United States, a patent applicant has 12 months to file an application for the invention in a Paris member country and capture the earlier filing date.

equivalents

Under the doctrine of _________, if an accused invention performs substantially the same function in substantially the same way to reach the same result as a patented invention, it will infringe the patent.

expression

Under the merger doctrine, if there are only a few ways of expressing or explaining a topic, only literal or exact copying the work will infringe, because the underlying idea is said to combine with the __________ of the idea.

Unless two marks are identical, there can be no trademark infringement.

False

Use of a copyright notice has never been required in the United States.

Val should file a supplementary copyright registration to correct this error. The supplementary registration, when issued, will be on file with the original registration.

Val has recently noticed that her copyright registration spelled her name as "Valery Smith" rather than as "Valerie Smith." What should Val do to ensure the Copyright Office records and her registration is accurate?

The museum and gazebo (and the drawings or blueprints for them) are protectable under copyright law because they are "buildings," meaning permanent types of structures. The tent is not protectable because it is not a "building." Standard features of these buildings (doors, windows, etc.) are not protected under copyright law.

Valerie, an architect, has designed a new museum, a garden gazebo, and a tent for weddings and other parties. Valerie also created all technical drawings and blueprints for these works. Which of these works, if any, are protectable under copyright law? Why or why not?

Vessel hulls are protectable and their designs may be registered with the Copyright Office.

Yes. Although the parties agreed that Vic would not contest the validity of the patent, he may do so in an infringement action because the policy favoring the negation of invalid patents outweighs contract law policy.

Vic is licensing the use of Taylor's patented technology. The license states that Vic may not challenge the validity of the patent. Taylor has sued Vic for patent infringement. May Vic assert that Taylor's patent is invalid?

The clause is quite broad. As stated, the editors would be precluded from going to work for any other fashion magazine in any capacity (even in the accounting department, for example). Thus, its scope is very broad. Moreover, it is not restricted geographically to any one region, and it is quite long in duration.

Vogue Magazine uses a noncompetition agreement prohibiting senior fashion editors who leave Vogue from going to work for any competitor fashion magazine for two years. Discuss whether this clause is enforceable.

WIPO administers several intellectual property law treaties.

A letter that affirmatively alleges that infringement is occurring will allow Jean to initiate a declaratory relief action (asking a court to declare the parties' respective rights in the dispute) in a court of her choosing. Thus, Walt might be forced to defend an action in a venue that is inconvenient to Walt. Thus, his letter should be carefully crafted to merely identify the patent and invite Jean to discuss the matter with him.

Walter believes that Jean is infringing his patent. He would like to send Jean a cease and desist letter. What is the danger to Walt in sending a letter that alleges that Jean is infringing his patent?

compilation or "automated database".

Westlaw can obtain a copyright license for its database of federal court cases because although these cases are in the public domain, Westlaw's unique arrangement of the cases qualifies for protection as a ___________ or ___________.

The application will be subject to accelerated examination under a new USPTO program. These applicants will be given a final decision within 12 months on whether their application will be granted or denied.

What advantage is there to a patent applicant who searches and submits relevant prior art to the USPTO (rather than waiting for the examiner to do so), limits claims to three independent claims, and complies with other requirements?

The item must be an article of manufacture, it must be new, it must be original, and it must be ornamental.

What are the four requirements that must be met for a design to be patentable?

An arrangement by which a mark is assigned without the business goodwill that the mark symbolizes is called an assignment in gross. Such an assignment is ineffective to transfer trademark rights, and the new owner who begins using the mark cannot claim the original owner's use date for purposes of establishing priority in the mark.

What does it mean to say a trademark has been assigned "in gross"? What is the effect of such an assignment?

Under the DMCA, these ISPs are not liable for copyright infringement by the acts of their customers if they provide adequate "takedown procedures" and remove infringing materials upon receiving a takedown notice from a copyright owner.

What does it mean to say that Internet service providers (such as Google or eBay) have a "safe harbor" under the DMCA?

A field is said to be "crowded" when numerous similar or identical marks coexist for identical or related goods and services. When this occurs, marks are considered "weak" and entitled to a narrower scope of protection. When numerous similar marks coexist, consumers become adept at distinguishing among marks and unless there is a direct conflict (identical mark for identical services/goods), marks can coexist without causing consumer confusion.

What does it mean to say that a field is "crowded" with marks?

A trademark license is naked when the mark is assigned without any quality control obligations imposed on the licensee. Licensors must monitor use of their marks. If goods offered under a trademark vary in quality and consistency from place to place, the trademark for the goods no longer serves its basic function as a quality indicator. The effect of a naked license is that the licensor will lose its rights in the mark.

What does it mean to say that a trademark license is "naked," and what is the effect of a naked license?

"National treatment" means that each member nation of a treaty must treat nationals of other member countries as it does its own for purposes of IP protection.

What does it mean to say that certain treaties are based on the principle of "national treatment"?

This test focuses on whether the accused work is so similar to the copyrighted work that an ordinary reasonable person or lay observer would recognize that the copyrighted work was appropriated by thedefendant. For computer programs, because they are so complicated, the test is refined to some degree and expert testimony is often sued to prove or disprove substantial similarity.

What does it mean to say that courts often use the "ordinary observer test" in determining copyright infringement? Discuss also whether this test is used for complicated works, such as computer programs.

It means, literally, "one of a kind," and refers to the fact that vessel hull design protection draws concepts from both copyright and patent law but affords a new type of IP protection.

What does it mean to say that protection of the designs of vessel hulls is "sui generis"?

If a CTM application is refused in just one member country, the CTM application fails in its entirely. Thus, it either proceeds to registration in all countries or none of them (unless the CTM application is converted into a separately filed application in desired countries).

What does it mean to say that the European Community Trademark system is an "all or nothing" system?

National treatment or reciprocity means that foreign trademark owners may obtain in member countries the same protection for their marks as can citizens of those member countries.

What does it mean to say that the Paris Convention is based on the principle of national treatment or reciprocity?

There are two separate rights: the right protecting the notes and lyrics (this is the musical work) and the right protecting what one hears, such as the performer singing and the entire production and recordation of sound (which is the sound recording).

What does it mean to say that there are two separate copyright rights in music?

"Originality" means that the work must be independently created and not merely a copy of another work or a minimal variation of another work. It must also possess a modicum of creativity. It does not mean that it must be the only one of its kind or the first one created.

What does it mean to say that to be copyrightable, a work must be "original"?

The term refers to technologies designed to protect digital works (such as music and DVDs) from unauthorized copying and reproduction.

What does the term "digital rights management" refer to?

It means "between parties" and refers to proceedings between parties relating to rights, use, and ownership of trademarks.

What does the term "inter partes" mean?

Prior art is the generally available public knowledge relating to the invention for which a patent is sought and which was available prior to invention. One must review the scope and content of the prior art in the pertinent field to determine whether an invention is obvious.

What does the term "prior art" mean in patent law?

The World Trade Organization was created to implement the URA and to handle trade matters.

What international organization was created to implement the Uruguay Round Agreements and to serve as a forum to handle trade disputes and monitor national trade policies?

A Markman hearing is a hearing by a judge to determine and interpret patent claims, including terms of art used within those claims. Briefs may be submitted and witnesses will testify at this hearing outside the presence of the jury.

What is a "Markman" hearing?

A submarine patent was one that lurked below public view, often for several years. Because prior U.S. law provided that patent terms did not start until a patent was granted, such a view encourage inventors to drag their feet and delay the time upon which patent protection started. To harmonize U.S. law with that of most foreign nations, the term of a utility patent was thus changed to 20 years from the date of filing of a patent application, thus encouraging applicants to act quickly to secure protection and eliminating the problem of the submarine patents.

What is a "submarine" patent, and how did changes in U.S. law effectively eliminate submarine patents?

The United States abolished its requirement that a work had to include a copyright notice in order to have copyright rights.

What was the most significant change that the United States made to its copyright laws in 1989 in order to fulfill its obligations under the Berne Convention?

Inventors should maintain laboratory notebooks that include entries and sketches. It's best to have these entries witnessed, if possible. Documents including telephone bills, email correspondence, copying charges, and receipts or expenses and supplies should all be kept because this will show which inventors worked on which claims and when an invention was reduced to actual practice.

What is a good way for inventors to be able to prove when they invented something? What type of evidence should inventors retain in order to prove such or to prove which inventors worked on which claims?

No profits and no damages may be recovered in an infringement action unless the defendant had notice of the trademark registration—thus, a registrant should always use the registration symbol (®) to afford such notice.

What is the advantage in an infringement action to a trademark owner of using a trademark registration symbol (®) in connection with its goods or services?

Descriptive marks cannot be registered without a showing of secondary meaning. Suggestive marks can be registered without a showing of secondary meaning.

What is the biggest difference between descriptive and suggestive marks (with respect to obtaining a trademark registration for such marks)?

The danger is that these weather forecasters would then be able to prohibit others from using the information, which would harm the public, which needs access to this vital information.

What is the danger of allowing weather forecasters to claim copyright protection for their databases of weather statistics?

The danger is that the mark STARBUCKS could become generic by this use as a noun. The mark should be used as an adjective.

What is the danger to a trademark owner if consumers use the mark as follows: "I'll be getting a Starbucks this afternoon after work."

Chapter I is mandatory and Chapter II is optional. During Chapter I, the application is subjected to an international search and the results of the search are set forth in an "international search report." Also, a preliminary opinion is given as the patentability of the invention. In Chapter II, the applicant requests or demands an international preliminary examination and a preliminary report on patentability is given which is then communicated to various national offices.

What is the difference between Chapters I and II in the PCT process? Discuss.

A provisional application is less formal than a full utility application and is usually filed to secure a filing date to preserve patent rights; it need not include any claims, and the inventor must file a regular utility patent application within 12 months of filing the provisional application. The provisional application allows an inventor to delay the start of the 20-year term of patent protection and allows the inventor to assess the commercial potential of the invention without going to the time and effort of filing a full utility application. However, it will not be examined by the USPTO.

What is the difference between a provisional patent application and a full utility patent application?

An exclusive license grants rights to only one party to use the mark (or possibly rights are granted for only one geographic area). In a nonexclusive license situation, several parties may use the mark.

What is the difference between an exclusive and a nonexclusive license?

Independent claims describe the invention in a broad and general manner. They stand by themselves and do not refer to any other claims. Dependent claims are more narrowly stated and refer back to or incorporate all elements of the more broadly stated independent claims.

What is the difference between an independent claim and a dependent claim?

The primary difference between these two proceedings is their timing. Oppositions are initiated to stop registration of a mark; cancellations are initiated after a mark has registered and seek to cancel existing registrations.

What is the difference between oppositions and cancellations?

There is no statutory or common law duty to perform a trademark search before filing an application for a trademark. A failure to conduct a search, however, might suggest improper intent and thus tend to suggest infringement and affect an award of damages.

What is the effect in a later infringement action of a failure to conduct a trademark search?

Before an infringement suit may be filed in courts, registration is necessary for works of U.S. origin.

What is the most significant benefit of securing a copyright registration?

The on sale bar is intended to encourage prompt action by inventors, so that inventions are patented for their term and then enter the public domain as quickly as possible.

What is the policy underlying the on sale bar? What behavior does it encourage?

In false advertising, one makes false or deceptive representations about one's own goods or services; making false representations about the nature of another's goods or services is product disparagement.

What is the primary difference between false advertising and product disparagement?

The purpose is to provide notice to the public so that anyone who believes he/she will be damaged by registration of the mark can oppose it.

What is the purpose of publication of a trademark in the Official Gazette?

The purpose of publication is merely to provide information about patents. Publication of trademarks is done to give notice to the public so that those who believe they may be harmed by registration of a trademark may oppose its registration. This is not the case for patents.

What is the purpose of publication of patents in the Official Gazette? How does this differ from publication of trademark applications in the Official Gazette?

The test is whether the junior user's mark is likely to cause confusion or mistake or to deceive.

What is the standard or test that is used to determine if one mark infringes another?

Trade secrets are governed by cases and state statutes (many of which are based on the Uniform Trade Secrets Act), and the Restatement.

What laws govern trade secrets?

The Patent Law Treaty aims at reducing burdensome requirements for patent applicants so that procedures are more uniform throughout the world.

What treaty aims at harmonizing patent formalities and burdensome requirements in the patent application process throughout the world?

When a court determines whether patent infringement has occurred, the court will examine the abstract of the patent and compare it to the accused invention.

contributory copyright infringement.

When a photocopy shop allows users to photocopy books, the photocopy shop is liable for what?

License

When a trademark owner allows another to use its marks, such an arrangement is called a ______.

compilation

When an author gathers together ordinarily uncopyrightable matter, such as facts, and presents them in a creative arrangement, such a work is called a ______________.

trademark

When an inferior shoemaker affixes the famous JIMMY CHOO trademark to its shoes, passing off or palming off and ___________ infringement has/have occurred.

double patenting.

When an inventor attempts to obtain more than one patent for the same invention, it will be barred by the USPTO under the principle of _______________.

Maintenance fees are due for utility patents at 3, 7, and 11 years after the patent is granted.

When are maintenance fees due to maintain a utility patent in force?

When computer programs are submitted to the Copyright Office for registration, the entire program must be submitted as a deposit, even though it may include trade secrets material.

When delivering the nightly news in a story relating to Harry Potter, newscaster Katie Couric reads several lines from the latest Harry Potter novel. Such is not copyright infringement.

Until 2000, all patent applications were maintained in strict confidence until they were actually issued or granted. Now, all utility patent applications are published 18 months after their filing (unless the applicant alleges there will be no equivalent foreign filing).

When might a member of the public first find out about a pending patent application? How does this differ from prior USPTO practice?

When one purchases a CD, such as a CD of songs by the group Nickelback, one acquires all rights that previously belonged to the group, leaving the group with no copyright rights.

patent pool.

When several companies agree to contribute their patents to a common preserve and share any revenue derived when others license use of the patents, such a preserve is often called a ___________.

A party would pledge its trademarks as collateral to obtain a loan. A lender might require security for money it lends and might require the borrower to pledge trademarks as collateral so that in the event of a default, the lender can seize/own these valuable assets.

When would a party pledge its trademarks as collateral?

To avoid the first sale doctrine (which would allow an owner or purchaser to sell the item to another), makers of software implemented the practice of licensing their programs. Such a license is called a shrink wrap license because it comes into existence upon opening the plastic wrap on the package.

When you "buy" a copy of Turbo Tax, a well-known software program, you have actually only licensed the program rather than purchased it outright? Why? Why does the maker license it to you rather than sell it to you? What type of license is this called?

click wrap

When you "buy" a software program from Microsoft online, and you click the "I agree" button, a _________ license has been created.

No. The homestyle exemption allows public reception of a transmission on a single receiving apparatus.

When you play your radio at the beach, is this a copyright violation of the artists' right to perform their works publicly? Discuss.

There are several acceptable places for a copyright notice for a computer program: • With or near the title or at the end of the work;• On visually perceptible printouts;• At the user's terminal at sign-on;• On continuous display on the terminal; or• On a label securely affixed to the copy or to its container.

Where should a copyright notice for Microsoft's most recent computer program be placed?

Computer programs are technical and the issues are often highly complex and unfamiliar. Thus, experts are needed.

Why are experts often used in infringement cases relating to computer programs when other infringement cases rely on the "ordinary observer" test?

The USPTO wants to make sure that inventors do not apply piecemeal for patents in an effort to extend the term during which others may not make, use, or sell, the invention. An applicant may be able to enter a terminal disclaimer, agreeing that the term of the second patent will not extend beyond the termof the first and that both will simultaneously terminate. A terminal disclaimer will remedy a refusal based on double patenting only if the refusal alleges that the second invention is an obvious variation of the first. If the subject matter is identical, the applicant must cancel one set of claims.

Why does the USPTO prohibit double patenting, and what might an applicant do if his or her application is rejected on this basis?

An invention that is a commercial success is nonobvious because acceptance by the marketplace tends to show that an invention is significant and nonobvious. If the invention were obvious, someone else would've already attempted to commercialize it for financial gain.

Why does widespread commercial success of an invention show that it is nonobvious?

Section 43 prohibits a wide variety of false and misleading commercial practices and allows for actions to be brought in federal court. It protects unregistered trademarks and other intellectual property rights.

Why is Section 43 of the Lanham Act often referred to as a national "unfair competition" statute?

The drafting of claims is important for two reasons: First, drafting a claim in an application is done to demonstrate patentability of an invention by distinguishing the invention from prior art. If the invention is later infringed, the claims are again examined to determine whether infringement as occurred. Thus, the language used in drafting claims is critical both to obtaining and protecting a patent.

Why is claims drafting such an important part of patent law?

Enforcement is difficult because these goods are often sold by street vendors, who simply move their carts or wares to a new location. Newer enforcement efforts focus on those in the supply chain, such as landlords and credit-card companies.

Why is enforcement of laws prohibiting counterfeiting difficult?

A standard trademark infringement case requires a plaintiff to prove that the defendant wrongfully used the mark in commerce. In many cases, a cybersquatter has not used the mark in commerce but is rather simply "sitting" on the mark, hoping to sell it back to its owner. ACPA, however, allows recovery if the defendant either wrongfully used or registered the mark.

Why is it often difficult for a trademark owner to bring an action for trademark infringement against one who has used the Internet to "hijack" its trademark?

Obtaining a patent doesn't give you the right to do anything yourself; it merely gives you a right to exclude others from making, selling, or using your patented invention.

Why is it sometimes said that patents are "exclusionary rights"?

If the assignment is not recorded within three months from its date, it is void as against a subsequent purchaser who acquired the patent without notice (unless the assignment is recorded prior to the subsequent purchase). Moreover, if a patent application is pending, the assignee needs to be "of record" so he or she can take action regarding the pending application.

Why is recording a patent assignment with the USPTO recommended?

It may take several years for a song, painting, or film to achieve its true value. Thus, authors need a long period of time of protection to allow their works to achieve their greatest value.

Why is the period of copyright protection so long?

Special statutory exemptions exist for face-to-face teaching, which allow certain teaching activities and specifically state that they are not public performances that would violate the copyright owner's rights. Such encourages the arts and the public interest.

Why may students in a college drama class perform a copyrighted play?

The vast majority of Microsoft's assets are intangible (software, know-how, the knowledge of its employees, etc,) whereas the majority of the other company's assets are likely tangible (tools, plants, equipment, etc.). Intangible assets are legally "fragile," meaning that they can be lost if they are not adequately protected. Thus, Microsoft needs to know what it owns so that it can adequately protect it.

Why might an IP audit be more critical for a company such as Microsoft Corp. than a company that repairs farm equipment?

Competitors' materials should be reviewed to ensure that competitors are not infringing a company's IP assets. A competitor may begin using a trademark that is confusingly similar to that of a company, it may disparage the products of the company, it may engage in deceptive advertising, it may infringe the company's copyrights and patents. Such conduct will be more readily uncovered if a company "keeps an eye on" its competitors. If companies do not protect their valuable IP rights, they may lose them because in many cases, allowing others to use IP assets may constitute a waiver of those rights.

Why might an IP audit report inform a client that the client should review its competitors' advertisements, marketing materials, etc.?

As a "trade off" for getting an exclusive period within which to make, use, or sell the invention, the patentee must describe it in full. When the patent ultimately expires, competitors will then be able to compete with the former patentee on an equal footing because they will know how to make and use the invention.

Why must a patent application describe how the invention is made such that others may be able to make or use it?

Although copyright registration is not required, it affords the following advantages:• It establishes a public record of the copyright claim;• Before an infringement suit may be filed in court, registration is necessary for works of U.S. origin;• If made at certain times, registration will establish prima facie evidence in court of the validity of the copyright and of the facts stated in the certificate;• If made at certain times, statutory damages and attorneys' fees will be available in infringement actions; and• Registration allows the owner to record the registration with Customs and Border Protection to protect against the importation of infringing works.

Why should a musician seek copyright registration of his or her works? Give two reasons.

The letter constitutes notice of patent, and continuing infringement after receiving actual notice of a patent owner's rights may give rise to a finding of willful infringement and resulting punitive damages.

Why should a party who receives a cease and desist letter relating to alleged patent infringement never ignore it?

An award of punitive damages can only be made upon a showing of willful infringement or bad faith by the defendant. One's duty of due care to avoid infringing another's patent can be satisfied by showing that one obtained advice of counsel that the underlying patent was invalid. Thus, good faith reliance on counsel can be used to defend against a claim of willful infringement.

Why should one accused of patent infringement secure advice of counsel? In what way might this help the defendant in patent infringement litigation?

Recording an assignment is not required by law, but it will clarify the records of the USPTO, allow the new owner to take actions with respect to the mark, ensure that documents and notices are sent to the proper owner, ensure that postregistration documents filed by the new owner are accepted, and provide public notice so that later purchasers are bound by it.

Why should one record an assignment at the USPTO?

The right of publicity is an economic right and thus can pass as property to one's heirs, just as other property rights can. Moreover, celebrities spend a great deal of time and money "cultivating" their personas, and it would be unfair for another to reap reward from using the celebrity's persona for commercial gain.

Why should the heirs of celebrities be able to sue for violation of their deceased relatives' publicity rights? Discuss.

They were liable for copyright infringement because they distributed devices with the object of promoting their use to infringe others' copyrights. Nearly all of the use of the services involved copyright infringement. The services were thus contributorily or secondarily liable because they induced others to infringe and fostered infringement.

Why were the music file-sharing services Grokster and StreamCast held liable for copyright infringement in 2005 when they were not actually downloading songs illegally?

No. This description is too indefinite and over broad. In reading it, a reader cannot tell with specificity exactly what goods are offered under the mark due to the use of the word "including."

Will the USPTO accept the following identification of goods: "Women's clothing, including slacks"? Discuss.

The software programs probably do not qualify for trade secret status. Although they are valuable, the company is not taking even minimal measures to protect the information. Everyone in the company has access to the information and the software programs aren't even kept under lock and key, which is the most basic type of protection that can be afforded.

XYZ Co. owns several critically valuable software programs. The programs are available on the company's intranet, and disks containing the software programs are typically left in unlocked desk drawers in the company's supply room. Discuss whether the computer programs qualify as trade secrets.

The agreement should include the following: • Clauses verifying that XYZ owns all inventions or materials created by employees;• Clauses prohibiting employees from disclosing or using the confidential information or trade secrets;• Clauses prohibiting employees from soliciting or encouraging other employees from leaving XYZ's business; and• Clauses precluding senior employees from competing against the employer both during and after employment (these must be reasonable).

XYZ Co. would like to ensure that its trade secrets and employees are fully protected from "poaching." It would thus like to draft a written agreement that senior employees would be required to sign. What provisions should the agreement include? Discuss.

Ordinarily, three years of nonuse of a mark constitutes abandonment of the mark. However, if one sale every three years is typical in the industry for these expensive goods, then such use as is customary in the yacht business might well be sufficient.

XYZ is a yacht maker and has not sold a yacht under its mark SAILSHIP in three years (which is often typical in this industry). Would such nonuse of the mark be an abandonment of the mark? Discuss.

You are entitled to make a backup copy of Turbo Tax, the computer program that helps you calculate your taxes.

Under the Protocol, the owner of a mark that is registered or applied for with the USPTO can file a single trademark application in a single language with a single set of fees with the USPTO designating which of the more than 70 countries in which protection is desired. It's a "one stop shopping"approach to achieving registration in numerous foreign countries. If the application is refused in one country, such does not affect the registration in other countries (unlike the "all of nothing" approach of CTM applications).

hat is the advantage of the Madrid Protocol for trademark owners?

WIPO

is an international organization that promotes intellectual property throughout the world and administers numerous treaties relating to intellectual property law.

Intellectual Property Law Certification

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